K’s Law Extracts from recently published decisions of the Boards of Appeal of the EPO
by Oliver Randl k-slaw.blogspot.com compiled by Bastian Best bastianbest.com
4 March 2014
This ebook is a compilation of the blog posts published by Oliver Randl on K’s law1 between 14 Sep 2009 and 7 Jan 2014. The ebook was established by Bastian Best2. It includes all of the 1,387 posts in reverse chronological order. An index can be found at the end of this book for ease of navigation. Happy case law reading!
1 2
http://k-slaw.blogspot.com/ http://bastianbest.com/
K’s Law – The ebook
Farewell
Farewell 7 Jan 2014
As announced some time ago, I will become a member of the Boards of appeal in 2014, which means that I cannot be a case law blogger any more. I had the intention of continuing the blog for some more weeks, but as it turns out, I have run out of noteworthy decisions, which has never happened since 2009, when this blog took off. I take this as a sign that the time has come to terminate the proceedings. I know some colleagues who have the intention of pursuing the work; I hope these projects will be reduced to practice and, if so, I shall be happy to provide links. This blog, however, will go silent. What has been published so far will remain online, as requested by some of you. Let me just thank those of you whose comments have made this blog a more interesting place. Thanks to patagonia, Myshkin, MaxDrei, Roufousse T. Fairfly, Manolis, Raoul, George Brock-Nannestad, DrZ, ExaMinus, Rimbaud - to mention just a few dear contributors - as well as to those who preferred to stay anonymous. My thanks also go to Laurent Teyssèdre, the father of EPC case law blogging, whose blog was quite an inspiration to me. All the best oliver
Board deliberation (in a composition pursuant to A 21(4)(a) EPC) 3 | 3398
T 434/12 – New Lines Of Attack
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T 434/12 – New Lines Of Attack 6 Jan 2014
In this opposition appeal case, on the second day of the oral proceedings (OPs) before the board the patent proprietor submitted the following request: “we herewith request adjournment of the OPs scheduled for 17 and 18 September 2013 in view of the new lines of attack brought by the opponents under A 100(c) for the first time during the OPs of 17 September 2013, …” The Board refused to grant the adjournment: [1.3] The appellant-patentee’s request for adjournment of the OPs in view of several “new lines of attack” against claim 6 of the main request […] was refused by the board at the OPs. The present inter partes appeal proceedings lie from an interlocutory decision of the Opposition Division (OD) maintaining the patent in amended form on the basis of an auxiliary request which is identical to auxiliary request 8 filed with the patentee’s grounds of appeal. The patentee and four of the five opponents lodged appeals against the first-instance decision. Therefore, the situation of reformatio in peius does not arise in relation to the examination by the board of any of the sets of claims on file. Moreover, A 100(c) is within the framework of the present appeal proceedings and all the sets of claims on the basis of which the appellant-patentee has requested maintenance of the patent contain amended claims. Additionally, as is evident from the facts and submissions, the patent as granted contains a multitude of independent claims. It is undeniable that one of the main duties of the board is to review the first-instance decision as to its merits, but the fact that the OD decided to conduct the OPs on the 13-14 September 2011 in a certain way for reasons of economy and efficiency of the proceedings, and thus decided to focus on one single independent claim (claim 1 for the main request), or one single ground of opposition (novelty for the method claims 6 and 7 of auxiliary request 2) in order to find out whether or not a set of claims failed, does not restrict the framework of the present inter partes appeal proceedings to those claims or those reasons which were specifically discussed at the OPs before the OD. Moreover, independent claim 6 of the main request derives from granted claim 31 which was amended in the course of opposition proceedings. Therefore, the board has the power and the duty (A 114(1)) to assess whether or not independent claim 6 of the main request fails pursuant to grounds under A 100(c), in conjunction with A 123(2) and A 76(1), since a patent should not be maintained in amended form on the basis of unallowable amendments. Maintaining a patent in appeal proceedings on the basis of unallowable amendments introduced during opposition and/or opposition appeal proceedings would be contrary to the spirit and purpose of the EPC (Article 23 RPBA). Thus, a literal interpretation of Article 13(1) RPBA should be avoided in the present case. Additionally, the appellant-patentee itself cited page 11 of the parent application as filed as the basis for claim 6 of the main request. Therefore, the board must investigate first those cited passages of page 11 before being able to conclude whether or not they represent an allowable basis for the amendments. In doing so the board is not restricted to the reasoning submitted by the parties in writing before the OPs. The OPs may serve to clarify some additional aspects related to the arguments submitted in writing in relation to A 123(2) and A 76(1). This preserves the parties’ right to be heard (A 113(1)). Under the circumstances depicted above, artificially restricting the discussion about the allowability of amendments would have deprived the OPs of their meaning, and adjourning the OPs would have made the proceedings interminable. After all, the filing date of the application from which the patent in suit derives is 5 December 1991. The fact that the appellants-opponents presented orally a more detailed reasoning in relation to A 123(2) and A 76(1) than their reasoning in writing can be easily explained by the high number of independent claims in the main request and the fact that the OD focused only on claim 1, ignoring the other claims. The so-called “new lines of attack” correspond to the necessary discussion of added matter which directly arises when undertaking a comparison between the wording of independent claim 6 of the main request and inter alia 4 | 3398
T 434/12 – New Lines Of Attack
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the text on page 11 of the parent application as filed, cited by the appellant-patentee as being its allowable basis under A 76(1). Therefore, the board is convinced that it was to be expected that in the course of the OPs before the board the features and expressions appearing on page 11 of the parent application as filed would have to be compared with the expressions in independent claim 6 of the main request, and thus the appellant-patentee should have been prepared accordingly. However, the board does not consider that the appellant-patentee has committed an abuse of proceedings by filing the auxiliary requests in the course of the OPs before the board. The question which in fact arises in this inter partes appeal case relates to an evaluation of the fairness of the proceedings. The fact that there was a detailed discussion during the OPs before the board in relation to claim 6 of the main request was taken into account when assessing whether the filing of auxiliary requests was justified in the course of the OPs. In the end the patent was revoked. Should you wish to download the whole decision, click here. The file wrapper can be found here.
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T 2165/10 – In The Archives
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T 2165/10 – In The Archives 3 Jan 2014
This is an appeal against the decision of an Opposition Division (OD) to reject an opposition. The crucial matter was whether late-filed evidence relating to an alleged prior use should be admitted: [1.1] The documents E1-E10, which relate to an alleged public prior use, were filed by the [opponent] with its letter of 8 April 2010, well after expiry of the nine month opposition period ending 5 December 2008. By applying the criteria of prima facie relevance, they were not admitted in the proceedings by the OD […]. [1.2] The Board shares the OD’s conclusion that E1-E10 were filed late without any good reason for doing so. There was indeed no change in the file during the opposition proceedings, such as a patent proprietor’s new request, which could have justified the late filing. Furthermore, the Board considers that the OD applied the principle of prima facie relevance correctly in a reasonable manner when exercising its discretional power (G 7/93 [2.6]). Consequently, the Board does not see any reason to overturn that decision. [1.3] The reasons mentioned by the [opponent] for the late submission of E1-E10 are that the public prior use took place more than 20 years ago in a foreign country. Since the legal time limit for keeping documents had long elapsed, many of the relevant documents had been destroyed. This made it a huge burden to retrieve the necessary pieces of evidence, so that the [opponent] could only file them as complete as possible after the opposition time limit. With respect to its letter dated 24 April 2008 sent to the respondent, in which it refers to the public prior use, the [opponent] argues that the documents in its possession at that time were considered not enough to constitute a complete chain of evidence, so that it did not wish to provide it in that incomplete form to the OD. The Board, however, shares the respondent’s view that the [opponent] should have included an indication of the alleged public prior use in its notice of opposition and indicated/filed all evidence in its possession at that time, i.e. the drawings and pictures as annexed to its letter to the respondent dated 24 April 2008. Any further evidence, like the commercial documentation, could have been indicated to be filed later, indicating the difficulties in retrieving such documents in the archives, abroad and/or with third parties. [1.4] The Board is of the opinion that the prima facie relevance test was also exercised correctly in that the OD considered that the evidence E1-E10 does not disclose a number of the claimed features (novelty) and does not deal with the problem of the contested patent of avoiding jamming of the overwrapping machine when pairing the packets with the respective sheets of packing material […]. Since there is a document (D4) that does relate to this problem, the Board can also not find fault in the OD’s reasoning to find the prior use less relevant as starting point. It also dealt with the relevance of the prior use as a teaching which could possibly lead the skilled person to the invention […] and found it also insufficient in that respect. Thus, the OD dealt with all aspects of relevance of the prior use when not admitting it. It is, therefore, not part of the opposition proceedings and, as a consequence, not as such part of the appeal proceedings (A 114(2)). [1.5] The late filing of the evidence relating to the alleged public prior use could have been “repaired” on appeal if the OD had not applied its discretion correctly. This is, however, not the case here as discussed above. [1.6] The [opponent] accepts in the appeal proceedings that the guide in the alleged public prior use is located downstream, i.e. not upstream, from the cross station and now argues that this is not a “substantial” difference which could justify an inventive step. The skilled person using his common general knowledge would immediately think of positioning the guide on the other side if needed. It cites T 1/81, which establishes that inverting process steps cannot support inventive step and implies that a geometrical inversion can neither justify this. Similarly, it cites T 39/82, T 142/84, T 332/90, T 485/91 and T 25/97 for supporting that a new application of a known measure cannot lead to an inventive step if the problem does not change. The above cannot lead to the Board to exceptionally admit the evidence relating to the alleged public prior use of its own motion in the appeal proceedings. 6 | 3398
T 2165/10 – In The Archives
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In assessing whether it qualifies as closest prior art, also the function of the guide has to be taken into account. In the alleged public prior use machine it has no function whatsoever with respect to the transparent packing material nor to guide the cigarette packs to that packing material. It guides the wrapped packs to the revolver 08.01, which is a different problem. Even if the above mentioned case law would establish the principles attributed to it by the [opponent], the present alleged public prior use would prima facie not fulfil them. The evidence related to the alleged public prior use is therefore not admitted in the appeal proceedings. A witness hearing on this matter is thus also not necessary. Should you wish to download the whole decision, click here. The file wrapper can be found here.
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T 59/08 – More On Sufficiency
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T 59/08 – More On Sufficiency 2 Jan 2014
This is a revocation appeal. The independent claims on file read: 1. A multimodal polyethylene composition for pipes, which multimodal polyethylene has a density of 0.930-0.965 g/cm3 and an MFR5 of 0.2-1.2 g/10 min, characterised in that the multimodal polyethylene has an Mn of 8000-15000, an Mw of 180-330 x 103, and an Mw/Mn of 20-35, said multimodal polyethylene comprising a low molecular weight (LMW) ethylene homopolymer fraction and a high molecular weight (HMW) ethylene copolymer fraction, said HMW fraction having a lower molecular weight limit of 3500, and a weight ratio of the LMW fraction to the HMW fraction of (35-55) : (65-45). 12. A pipe characterised in that it is a pressure pipe comprising the multimodal polymer composition according to any one of the preceding claims, which pipe withstands a pressure of 8.0 MPa gauge during 50 years at 20°C (MRS8.0). [2] The question to be answered when assessing sufficiency of disclosure is whether the invention as defined in the claims can be performed by a person skilled in the art throughout the whole area(s) claimed without undue burden, taking into account the information given in the patent in suit and using common general knowledge. [2.1] The invention of which the sufficiency of disclosure has to be judged is the object defined in present claim 1 by the combination of the following features: (i) a multimodal polyethylene composition suitable for pipes, the multimodal polyethylene having (ii) a density of 0.930-0.965 g/cm3, (iii) a MFR5 of 0.2-1.2 g/10 min, (iv) a Mn of 8000-15000, a Mw of 180?330 x 103 and a Mw/Mn of 20-35, and comprising (v) a low molecular weight (LMW) ethylene homopolymer fraction and a high molecular weight (HMW) ethylene copolymer fraction in a weight ratio of the LMW fraction to the HMW fraction of (35-55) : (65-45) (vi) said HMW ethylene copolymer fraction having a lower molecular weight limit of 3500. [2.2] The contested decision nor the parties on appeal addressed the question whether the present patent specification disclosed a technical concept fit for generalisation and whether it made available to the skilled person, with his common general knowledge, compositions suitable for pipes meeting the combination of parameters defined in claim 1, as well as the pipes according to claim 12. The questions addressed were rather which meaning should be attributed to the feature “lower limit of the high molecular weight (HMW) ethylene copolymer fraction” and whether, in the absence of any mention in the patent with respect to the measurement methods for determining Mn, Mw and the lower limit of the high molecular weight (HMW) ethylene copolymer fraction, the skilled person would know which measurement method was to be employed. [2.3] Following the normal rule of claim construction according to which terms used in a claim should be given their ordinary meaning in the context of the claim in which they appear, the lower molecular weight limit of the HMW ethylene copolymer fraction defined in claim 1 designates the lowest molecular weight of any of the molecules of the HMW fraction. This view is supported by the statement provided in the specification on page 3, lines 9-12 and was not disputed any longer during the oral proceedings.
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T 59/08 – More On Sufficiency
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[2.4] In the absence in the claim of any indication of a method for determining M n, Mw and the lower limit of the high molecular weight (HMW) ethylene copolymer fraction, the claim has to be read as allowing any method of measurement, including any setting, that can be said to be standard in the art concerned; in other words, any ordinary method within the context of the present claim. In this respect, the parties do not dispute that different methods (for example GPC), including different settings, would be available to determine values for those parameters, nor that the choice of the measurement method for determining said parameters has an influence on the values obtained. [2.5] The notions of “true value” and closeness to that “true value” in relation to M w and Mn parameters, to which the [patent proprietor] referred, are however not only vague, but also not reflected by the information provided in the patent in suit. If a patent proprietor wishes to argue that a parameter range in a claim should be read in a special way or needs to be measured in a particular manner because several possibilities are available, then for that argument to be accepted it is necessary to limit the claim to this method of measurement by way of amendment, provided that this can be done meeting the requirements of A 123(2). It is not enough to argue that the claim should be read in a particular way when the wording of the claim does not require this. For lack of information to that effect, it is not apparent that the skilled person would try to determine the “true value” of Mw and Mn, as it is at least equally credible that he would choose any standard method meeting his needs in the context of the technical circumstances of the case, i.e. also taking into account the convenience and reproducibility of that method. [2.6] Therefore, the present claims should be read as to encompass any composition or pipe that meets the defined values of Mw, Mn and “lower limit of the high molecular weight (HMW) ethylene copolymer fraction” using any method that can be considered to be standard in the art in the technical context of the present claims as the method of measurement for those parameters. [2.7] Such a reading of the claim may on the one hand result in a larger number of compositions or pipes meeting the claimed values than when one specific method were used, and therefore in less difficulty to obtain compositions or pipes as defined by the claims, i.e. in less stringent requirements for assessing sufficiency of disclosure of the claimed combination of features. In that case it may on the other hand require stronger arguments in favour of novelty and inventive step, in particular if the claimed values were held to distinguish the claimed subject-matter from the prior art and to be considered essential for providing a technical effect vis-à-vis the prior art. [3] The [opponents’] argument that the conventional methods for determining M w and Mn led to different values out of which a lack of guidance resulted for the skilled person wishing to obtain the result defined in the patent specification […], namely to obtain a pressure pipe with a desired combination of good processability and good strength, cannot be accepted as an argument pertaining to sufficiency of disclosure of the invention, as those results or effects are not features of the present claims. This follows from the consideration that - in accordance with R 43(1) – the invention in the European patent application is defined by the subject-matter of a claim, i.e. the specific combination of features present in the claim, as is reminded in opinion G 2/98 [2] of the Enlarged Board of Appeal. Whether the result defined in the present patent specification […], is achieved or not, may, however, become relevant under the requirement of inventive step, for assessing the technical problem which can be held to be successfully solved by the combination of features claimed. [4] The uncertainty about which method the skilled person would select to determine M n, Mw and the lower limit of the high molecular weight (HMW) ethylene copolymer fraction, which was the central issue addressed by the parties both in opposition and in appeal proceedings, is in the present case not adequate to make a case against sufficiency of disclosure. The argument that the choice of the measurement method for determining M n, Mw and the lower limit of the high molecular weight (HMW) ethylene copolymer fraction had an influence on the values obtained and that therefore the skilled person would not know whether he had obtained something falling within the ambit of the claims – as it was argued by the [opponents] as well as in the decision under appeal – boils down to the argument that the boundaries of the claims are not clearly defined, which is a matter of A 84, not sufficiency of disclosure. Such an objection under A 84 cannot be successful as it would not arise out of any amendment made in opposition or appeal proceedings. [5] For assessing the requirement for sufficiency of disclosure the question should be answered whether the skilled person, following the teaching provided in the patent specification […], and also taking into account his 9 | 3398
T 59/08 – More On Sufficiency
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general knowledge, would be able to obtain without undue burden multimodal polyethylene compositions meeting all criteria defined in claim 1 of the patent in suit […] and the pipe according to claim 12. [5.1] In this respect, points raised before the opposition division […], which in particular relate to the process conditions that are needed to obtain the combination of technical features defined in the claims, and which appear to be essential to assess the sufficiency of the disclosure, should also be considered. [5.2] However, none of those issues was decided by Opposition Division, nor argued by the parties before the Board. [6] Under those circumstances, as the essential issues to be addressed in respect of sufficiency of disclosure have not been dealt with in the contested decision, the Board exercises its discretion under A 111(1) to remit the case to the first instance for further prosecution. Should you wish to download the whole decision, click here. The file wrapper can be found here.
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T 163/13 – Let’s Be Reasonable
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T 163/13 – Let’s Be Reasonable 1 Jan 2014
As you know, the EPO has quite strict rules regarding corrections. In particular, corrections will not be allowed unless it is immediately evident to the skilled person that an error has occurred and how it should be corrected. Sometimes, as in the present case, opponents push this reasoning too far. The patent proprietor wished to amend its claims by introducing a temperature (72°F) which it said was disclosed in paragraph [0035] of the patent. However, this paragraph only contained a reference to a value 72EF:
[1.2.2] [The opponent] admits that a skilled reader will realise that “72EF” in paragraph [0035] of the description is an obvious error, but contests that “72°F (22.2°C)” now introduced in claim 1 of auxiliary request 1 is the only possible correction. It considers that instead of the temperature the correction could for instance concern the pressure or any other parameter the skilled person could think of in the technical field of testing moisture ingress of containers. Therefore, the correction would not be admissible as it clearly contravenes Rule 139 and Article 123(2) EPC. The Board, however, shares [the patent proprietor’s] view that the only possible correction having a technical meaning in the present context is the temperature as it is an essential parameter for such a test. This appears clearly for instance from D10, 1st page, top of right-hand column […]. Consequently, the skilled person will immediately consider that “F” means “Fahrenheit” and make the correction accordingly. Hence, the correction complies with R 139 and A 123(2). Should you wish to download the whole decision, click here. The file wrapper can be found here.
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T 1937/10 – Just A Question Of Strength
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T 1937/10 – Just A Question Of Strength 31 Dez 2013
This decision – on an appeal against the rejection of an opposition as inadmissible – reminds us that one has to distinguish between inadmissibility and unallowability. [1.1] The notice of opposition is founded on the sole objection of lack of novelty against claim 1 of the contested patent, relying only on an alleged public prior use (D1 to D3) and a prior disclosure of that same device (D1, D3, D4). The inadmissibility of the opposition is based on the ground of insufficient substantiation, in particular with regard to the question of what has been actually disclosed […]. [1.2] The relevant requirements concerning substantiation of the opposition are set out in R 76(2)(c), according to which the notice of opposition shall contain a statement of the extent to which the European patent is opposed and of the grounds on which the opposition is based, as well as an indication of the facts and evidence presented in support of these grounds. [1.3] It is clear from the EPO Form 2300 dated 28 November 2007 filed by the [opponent] that the opposition was filed against the patent as a whole (extent) and based on the grounds of A 100(a), namely lack of novelty and lack of inventive step (grounds). This is further confirmed by the notice of opposition itself. The first two conditions of R 76(2)(c) are therefore clearly fulfilled. [1.4] With respect to the last condition (facts and evidence), according to the established case law the notice of opposition must indicate the “when”, “what” and under “what circumstances”, in particular “to whom”, the alleged public prior use was made available (T 522/94 [headnote IV, 10, 12, 20 to 25]; T 328/87 [3.3]). [1.5] In the present case, the [opponent] cited documents D1 to D5 with its notice of opposition. D5 was merely cited for dependent claims, it is therefore not relevant for this decision. It indicated that a relevant device, as in D1, was made public to the attendees of a public seminar, i.e. to members of the public not bound by secrecy, held in Kemi, Finland on 23-34 March 1995 (circumstances and when). It filed D2 in this respect, constituted of a cover page, a programme page and a one page description of an AQS300 device with a picture and a drawing of this device. The [opponent] argued in its notice of opposition that D1 discloses all the features of claim 1 except the features of the characterising portion. The latter features are alleged to be comprised in the device shown at the said seminar (what). D2 and D3 were filed as evidence to support this fact. The same device was the subject of a prior disclosure in the article D4, showing the same picture as in D2. The photos D3 were filed as supporting evidence for this device as well. In the light of these “what”, “when” and “what circumstances”, the [opponent] concluded that novelty of the subject-matter of claim 1 was not given. [1.6] As indicated in T 597/07 [2.5] of the reasons, according to the established case law, “it is not required for an opposition to be admissible that the arguments brought in support are conclusive or that the opponent’s statements are true. What is required is that the patentee and the opposition division are put in a position of understanding clearly the nature of the objections and the evidence and arguments in support”. It is further referred, for instance, to T 1022/99 [2.2] of the reasons, indicating that the facts - what, when, what circumstances of the alleged public prior use - must be indicated within the opposition period, while the evidence can be brought later in the proceedings as long as it is indicated. http://www.epo.org/law-practice/case-law-appeals/pdf/t991022fu1.pdf [1.7] Therefore, a distinction must be made between examining admissibility of the opposition and its substantive merit (see Case Law, 7th edition 2013, chapter IV.D.3.3.3).
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T 1937/10 – Just A Question Of Strength
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This distinction, contrary to the [patent proprietor’s] opinion, was not made in the impugned decision which appears to be focused only on assessing whether the [opponent’s] case of alleged prior use was conclusive and convincing. [1.8] The [patent proprietor] holds the view that T 597/07 requires that the nature of the evidence is clearly understandable at the time when the opposition is filed and considers this element to be missing in the present case. It argues that it is not unambiguously established that D2 and D3 are prior art documents. In particular, it is not clear whether page 3 of D2 actually belongs to D2 itself as there is no direct link between said page 3 and the first two pages (cover and programme of the seminar). With respect to D3, the pictures might have been taken on any device at any time and their link to the other documents D1, D2 or D4 merely relies on [opponent’s] allegations. Even though the pictures look similar, the link between D2 and D4 is also missing and cannot be unambiguously established. Similarly, the link between D1 and D4 is unclear as there is no mention in D1 of the machine AQS300 of D4. In fact, the notice of opposition merely alleges that D1 to D4 refer to the same device, without giving any evidence, however, how these documents are actually interrelated. The opposition relies on allegations without even indicating how these allegations could be proven. Consequently, further investigations would be needed for the [patent proprietor] or the opposition division to clarify and understand the nature of evidence. That makes the opposition inadmissible. [1.9] The Board cannot share the [patent proprietor’s] view for the reasons given during the oral proceedings and recited below. The decision T 597/07 does not refer to the “nature of evidence” but rather to the evidence as such. The sentence quoted under point [1.6] above is to be understood as that the patentee and the opposition division are put in a position of understanding clearly:
the nature of the objections and the evidence and arguments
in support, i.e. meaning that the “nature” only relates to the objections, not to the evidence itself as argued by the [patent proprietor]. Furthermore, D1 (its translation D1a), D2, D3 and D4 (for its introductory part that has been translated and its pictures) are understandable documents, D1 and D4 being indisputable prior art documents as admitted by the [patent proprietor]. What the evidence is alleged to be proving is explained by the [opponent] in the notice of opposition (see also point [1.5] above), in particular with respect to the sole alleged distinguishing feature of the characterising part of claim 1 over D1. This characterising part reads as follows: “at least some of said upper log-receiving surfaces (16) or of said leading edge regions (18) comprise a plurality of projections projecting therefrom, said projections comprising an outermost contact region for contacting logs being transferred between said spaced locations, said contact regions being configured as a peak” In the notice of opposition the [opponent] argued that this feature could be seen in the picture contained in D2, which was further alleged to be clarified by the photos of D3, alleged to have been taken on the same device as shown in D2. The same argument was brought forward regarding the identical picture in D4, relating to the allegedly same installation as discussed at the seminar (D2). The relationship between these documents is therefore sufficiently discussed. When reading the notice of opposition, the nature of the objections (lack of novelty), the evidence (D1 to D4) and the arguments (interrelation between D1-D4) in support, i.e. the case the opponent tries to make, is therefore clearly understandable for the Board. Whether the device of D1 was actually the same as presented at the seminar (D2) or was actually the same as discussed in D4, i.e. whether the [opponent’s] statements in the notice of opposition are proven or not, does not 13 | 3398
T 1937/10 – Just A Question Of Strength
K’s Law – The ebook
relate to the admissibility of the opposition but rather to its substantive merit. The same applies to the question whether D2 is the complete document and whether the photos of D3 relate to the device of D2 or D4 as it was alleged. An opposition can indeed be found admissible on the basis of the statements, documents or copies thereof indicated in/filed with the notice of opposition which, later in the opposition proceedings, may eventually be considered incomplete, insufficient or simply wrong. This, however, does not put the admissibility of the opposition into question. It only relates to the strength of the case. Doubting whether documents cited in the notice of opposition are actually what they are alleged to be, as in the present case by the [patent proprietor] and the impugned decision, is an issue of merit of the opponent’s case, not of its admissibility. [1.10] In view of the above, the Board considers that the notice of opposition meets the requirements of R 76(2)(c). Consequently, the opposition is admissible. The Board then remitted the case for further prosecution. Should you wish to download the whole decision, click here. The file wrapper can be found here.
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T 2041/09 – Grain Sizes
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T 2041/09 – Grain Sizes 30 Dez 2013
Claim 1 on file read : Fireproof product made of a mix of additives, at least one binder and an admixture (Zusatz), characterised in that the admixture consists in synthetic TiO 2-containing particulate materials having an average grain size d50 from 0.2 to 2000 µm. (my emphasis) *** Translation of the German original *** [3.1] In the impugned decision the Examining Division (ED) established that the subject-matter of the then pending claims 1 to 6 was not novel over the disclosure of documents D1 and D2. [3.1.1] Documents D1 and D2 disclose TiO2-containing additives consisting of residues of the TiO2 production, a binder (e.g. a cement) and one or several components selected from inter alia SiO2 and Al2O3 […]. The TiO2containing additives are powder mixtures having a grain size of 50 to 5000 µm […]. However, documents D1 and D2 do not disclose any grain size distribution. Particles having a grain size of 50 to 5000 µm do not necessarily have an average grain size for 0.2 to 2000 µm because they could, e.g. consist of particles > 2000 µm only. [3.1.2] Thus documents D1 and D2 do not disclose TiO2-containing particulate materials having an average grain size from 0.2 to 2000 µm, so that these documents do not destroy the novelty of the subject-matter of claim 1. [3.2] In the course of the examining proceedings there were additional objections of lack of novelty of the subject-matter of the then pending claims over documents D3 and D4. [3.2.1] Document D3 discloses TiO2-containing additives consisting of inter alia residues of TiO2-pigment production and Fe2O3. The product does have a grain size of 100% <2 mm (i.e. necessarily an average grain size of up to 2000 µm) […], but it does not contain any binder. [3.2.2] Document D4 discloses a fireproof material containing inter alia Al2O3, SiO2, FeO, TiO2, and boric acid […]. This document discloses all the components of the fireproof product according to claim 1 of the application under consideration, but it does not disclose any grain size for the products. [3.2.3] Thus documents D3 and D4 do not disclose all the features of claim 1, so that they do not destroy the novelty of the subject-matter of claim 1. [3.3] To sum up, the feature according to which the average grain size of the synthetic TiO 2-containing particulate materials is between 0.2 to 2000 µm, as required by claim 1, cannot be directly and unambiguously derived from any of documents D1, D2, and D4, so that these documents do not destroy the novelty of the subject-matter of claim 1. Document D3 does not disclose that the product contains a binder, so that this document does not destroy the novelty of the claimed subject-matter either. [3.4] The statement of the ED according to which there is no technical effect obtained over the whole claimed range is not relevant for the assessment of novelty, because novelty and inventive step are two distinct patentability requirements. A technical effect that occurs in a claimed range does not establish the novelty of a numerical range that is novel in itself but only confirms the novelty of this claimed numerical range, which has already been established. The question of whether there is a technical effect or not, however, remains to be answered in the context of inventive step (see T 1233/05 [4.4]; T 230/07 [4.1.6]) [3.4] Thus, for the above reasons the Board comes to the conclusion that the subject-matter of claim 1 is novel over documents D1 to D4. The Board then remitted the case for further prosecution. Should you wish to download the whole decision (in German), click here.
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The file wrapper can be found here.
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J 14/12 – Debit (Dis)order
K’s Law – The ebook
J 14/12 – Debit (Dis)order 27 Dez 2013
This decision deals with a request for the reimbursement of certain fees for a divisional application. On filing the divisional application on EPO Form 1001E, no mode of payment was specified under point 42 “Payment” of that form. An “Internal fee calculation sheet”, which is automatically generated by default by the online filing system using the data entered in EPO Form 1001E, was attached to the form in which the filing fee, the fee for a European search and the renewal fees for the 3rd to 10th years were listed by the applicant. On October 20, 2010, the EPO received the following request:
On the basis of this request the Receiving Section (RS) gave the instruction to debit the filing fee and the search fee. No renewal fees for the 3rd to 12th years were paid by the applicant, or debited from the representative’s account on the basis of his request of 20 October 2010, within four months after the filing date. After having been informed accordingly by the EPO, the applicant’s representative, on March 14, 2011, paid the renewal fees for the 3rd to 12th years and the additional fees of 50% relating to all of those renewal fees. Together with these fees, the filing fee and the search fee were paid a second time; this second payment was later refunded by the EPO. With a letter dated March 18, 2011, the appellant requested, as a main request, that the additional fees for the 3rd to 12th years be refunded, and, as an auxiliary request, that the additional fees relating to the renewal fees for the 3rd to 10th years be refunded. It took the view that the respective renewal fees for the 3 rd to 12th years were paid in time. After having realized the omission in EPO form 1001E, the appellant, with its letter of 20 October 2010, had requested that the fees which fell due in relation to the filing of the divisional application be debited. This authorization constituted a timely payment of all fees listed on the “Internal fee calculation sheet” of the EPO, including the fees for the 3rd to 10th years. The same applied for the 11th to 12th years following decisions T 170/83 [6], and T 152/82 [8-9]. The RS rejected both the main and the auxiliary request. The Board partially allowed the appeal: [2] Under A 86(1), first and second sentences, renewal fees for the European patent application shall be paid to the EPO in accordance with the Implementing Regulations. These fees shall be due in respect of the third year and each subsequent year, calculated from the date of filing of the application. R 51(3), first sentence, provides that renewal fees already due in respect of an earlier application at the date on which a divisional application is filed shall also be paid for the divisional application and shall be due on its filing. On 1 October 2010, the filing date of the divisional application, renewal fees for the earlier application with the filing date of 2 September 1999 had fallen due for the 3rd to 12th years (2000 - 2011). [3] These fees and any renewal fee due within four months of filing the divisional application may be paid within that period without an additional fee (R 51(3), second sentence). As R 51(2) also provides, in case a renewal fee is not paid in due time, the fee may still be paid within six months of the due date, provided that an additional fee is also paid within that period. Consequently, payment of the renewal fees that fell due for the present divisional application could be made until 1 February 2011 without an additional fee and until 1 April 2011 with an additional fee of 50% of the belated renewal fee (Article 2(1) Rules relating to Fees of 20 October 1977 as adopted by the decision of the Administrative Council of the European Patent Organization of 7 December 2006 and as[last]amended by the decision of the Administrative Council of 9 December 2008, Supplement to OJ EPO
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2/2009 (RFees) and Schedule of fees and expenses of the EPO (applicable as from 1 April 2010), 1 A.5, see Supplement 1 to OJ EPO 3/2010). [4] On 20 October 2010 the applicant’s representative wrote a letter to the EPO which included the following wording: “It is kindly asked to debit the fees which fell due for payment with the filing of the abovementioned divisional application from deposit account No. 28000610.” [5] This mode of payment is not provided for in Article 5(1) RFees 2008. [6] Under Article 5(2) RFees 2008 the President of the EPO may allow other methods of paying fees than those set out in paragraph 1. In the Arrangements for deposit accounts (ADA) and their annexes (valid as from 1 April 2009), Supplement to OJ EPO 3/2009, the President of the EPO made available debiting procedures in respect of fees (pt 6.1 ADA). Debiting occurs in principle on the basis of a debit order signed by the account holder and may be a debit order for individual fees that may be filed on paper, preferably on EPO form 1010 (pt. 6.2 ADA). The debit order must be clear, unambiguous and unconditional. It must contain the particulars necessary to identify the purpose of the payment, including the amount of each fee or expense concerned, and must indicate the number of the account which is to be debited. Provided there are sufficient funds in the deposit account to cover the total fee payments indicated for the application referred to in the order or, in the case of an order containing a list of applications for each application referred to, this date is considered to be the date on which payment is made (pt 6.3 ADA). [7] When read in conjunction with the “Internal fee calculation sheet”, the debit order received on 21 October 2010, in which it was asked to debit the fees which fell due for an explicitly mentioned divisional application, was clear, unambiguous and unconditional as regards the 3 rd to 10th renewal fees. The debit order also indicated the number of the account which was to be debited. In the Board’s judgment, in the case at hand, the purpose and amount of each of these fees were clearly derivable from the “Internal fee calculation sheet”, including the renewal fees for the 3rd to 10th years. By debiting the filing fee and the fee for a European search the EPO showed that it heeded the debit order in combination with the “Internal fee calculation sheet”, filed as an attachment to the application, irrespective of whether it was obliged to do so or whether the “Internal fee calculation sheet” was uploaded to the electronic file. Consequently, 21 October 2010 is to be considered as the date on which the payment for the renewal fees for the 3 rd to 10th year was made and, in relation to these years, no additional fee fell due. Payments of fees made without a legal basis are to be reimbursed. [8] As to the renewal fees for the 11th and 12th years, the purpose and the amount of each of these fees were neither stated in the debit order nor were they contained in the “Internal fee calculation sheet”. As a consequence, the conditions for a valid debit order set out in the ADA as mentioned above were not fulfilled. A valid payment was effected on 14 March 2011 only, i.e. within the six-month time-limit provided for in R 51(3). Consequently, in respect of the renewal fees for the 11 th and 12th years, the additional fees fell due and cannot be reimbursed. [9] No different conclusion can be drawn from the decisions of the Board of Appeal in cases T 170/83 or T 152/82. Decision T 170/83 dealt with a case in which the purpose (payment of the opposition fee) was clear. The same applies in relation to decision T 152/82 in which the purpose of the payment (appeal fee) was explicitly indicated. [10] Consequently, the appellant’s main request is not allowable, but the auxiliary request can be allowed. [11] The conditions for reimbursement of the appeal fee are not met in the present case. Under R 103(1)(a) the appeal fee shall be reimbursed where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation. The Board cannot identify any procedural deficiencies. In the present decision, the Board is taking a view on the question of interpretation of the applicant’s debit order that differs from that of the RS. However, the fact that the Board has come to a different conclusion from the department of first instance does not by itself mean that the latter committed a substantial procedural violation (see for example decisions T 87/88; T 538/89, T 182/92) but is rather a matter of judgment, which does not amount to a procedural violation (see for example decision T 182/92 [7] and Case Law of the Boards of Appeal of the EPO, 7 th edition 2013, IV.E.8.3.5). Consequently, the request for reimbursement of the appeal fee must be refused. Should you wish to download the whole decision, just click here. The file wrapper can be found here. 18 | 3398
T 816/09 – Untechnical Measurements
K’s Law – The ebook
T 816/09 – Untechnical Measurements 26 Dez 2013
This is an examination appeal. Claim 1 on file read: 1. A system for operating a virally marketed facility, comprising:a processor;a memory coupled to the processor;a user interface coupled to the processor;wherein the processor is to:
measure virality of the facility based on a conversion rate and a propagation rate; determine potential options for increasing virality; and execute potential options for increasing virality.
The Examining Divison (ED) considered that the problem addressed was of a business nature, namely how to enhance the profit of a virally marketed business facility. The solution proposed was to measure the effectiveness of the viral marketing campaign by tracking the results (number of invitations, number of registrations) and to pursue only business options that increased the virality and profitability of the campaign. No technical problem other than the implementation of the business model on a computer system appeared from the application. The implementation did not go beyond notorious technical functions associated with any business/administrative task on a computer system. Thus the ED refused the application for lack of inventive step. The Board came to the same conclusion: [3] In the light of A 52(1)(2)(3), A 56 EPC 1973 requires a non-obvious technical contribution (see e.g. T 641/00 [headnote 1]; T 1784/06). [4] The Board does not consider the problems put forward by the appellant to have a technical character. Viral marketing utilises human social behaviour to (self-)propagate information which effectively advertises a facility (such as a website). It is a marketing person’s choice to consider high propagation and conversion rates of an advertisement as indicators of success of a marketing campaign and to call those rates the virality of the marketed facility. It is the marketing person that seeks to increase the marketing success as judged by his/her definition of virality. [5] The Board does not consider that any “measurement of any property is an inherently technical task” […]. It will crucially depend on what is “measured”, and whether or not the measurement involves technical means. For example, the description mentions […] that the ultimate “measure” of success is revenue, which is a financial concept. At paragraph 0047, the virality of a website is measured by evaluating public discussion, which could simply be achieved by interviews (mental acts). [6] Thus, the technically skilled person comes into play only at the implementation level. However, counting click rates to measure the popularity or virality of a website does not require an inventive step. This finding is implicitly acknowledged by the application which leaves technical implementation details to the skilled reader. Trying out whether a variation of a website increases or decreases its popularity does not imply any non-obvious technical consideration, either. [7] The virality of a website (or other facility) might conceivably be increased by providing it with innovative technical features. However, claim 1 does not define the nature of the “options” to be executed. Hence, no technical contribution can be derived from the “options for increasing virality”. This view is confirmed by the options defined in claim 2, such as providing additional commercial aspects of the facility […]. 19 | 3398
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[8] Therefore, the Board judges that the system for operating a virally marketed facility according to claim 1 and the corresponding apparatus according to claim 7 do not involve an inventive step. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1674/12 – Christmas With Nespresso
K’s Law – The ebook
T 1674/12 – Christmas With Nespresso 25 Dez 2013
In this decision on a Nespresso ® patent – which has excited Tufty the cat some time ago (see here) – Board 3.2.04 in a five-man composition inter alia had to deal with a whole bunch of partiality objections raised by the four opponents after a somewhat chaotic series of oral proceedings (OPs) before the Opposition Division (OD). To make a long story short, OPs had been summoned for September 8, 2011, but the OD decided to continue on September 9, although several opponents objected to this and were absent on that day. However, at the beginning of the OPs on September 9, the OD made only one statement and then decided to adjourn the OPs after the patent proprietor had requested it to do so. The OPs were resumed on April 18, 2012. The decision also contains an interesting paragraph on a statement that the EPO spokesman made after the decision of the OD. *** Translation of the French original *** [2.1] Opponents 1 and 3 have essentially required [the Board] to set aside the impugned decision and to remit the case to the first instance in order for it to be dealt with by an OD in a different composition. They have alleged a series of procedural violations which they considered to be substantial, in particular a bias of the OD resulting from seven particular points seen in combination and which were presented both in writing and orally. Moreover, the continuation of the opposition proceedings after an appeal had been filed constituted a substantial procedural violation in itself. [2.2] The first point intended to demonstrate the bias of the OD concerns the fact that the date for OPs was fixed three months after the end of the time limit for filing an opposition (and, more generally, the alleged acceleration and deceleration of the proceedings in line with the instructions of the patent proprietor). When this time limit had expired on February 12, 2011, four oppositions had been filed by opponents 1 to 4. The patent proprietor has commented on these oppositions on March 29, has referred to a series of infringement proceedings and has asked for an acceleration of the proceedings, i.e. for OPs to be held before September 23, 2011, because a hearing by a Dutch tribunal was to be held on that day. The OD has allowed this request. In view of the fact that the patent proprietor has given reasons for his request for accelerated proceedings by providing evidence that the national infringement proceedings had indeed been opened (incidentally, their existence has not been contested by the opponents), the Board cannot see why it would have been wrong to summon [the parties] to OPs to be held on September 8, 2011. The assertion according to which the OD submitted to the instructions of the patent proprietor and has accelerated and then slowed down the proceedings has not been proven. First, the acts of the patent proprietor do not attest that it undertook efforts in order to slow down the proceedings. It has to be noted that the efforts undertaken in order to stay the national proceedings (and not the opposition proceedings) until there was a final result of the opposition proceedings are in line with the request for acceleration. The patent proprietor has only once requested a stay of the proceedings, during the OPs held on September 9, 2011, under very special circumstances where the adjournment of the proceedings was indeed the only correct procedural solution, even if this fact has only been acknowledged (reconnu) at a later time (see below). Moreover, the patent proprietor has consistently requested accelerated proceedings. On the other hand, the fact that the OD has not allowed the request of opponent 1 for a stay of the proceedings and has not cancelled the OPs foreseen on April 18, 2012, after opponent 1 had filed the statement of grounds in appeal case T 112/12 does not justify the suspicion of partiality on behalf of the OD. As explained below, this appeal had no suspensive effect. The letter of opponent 1 dated April 13, 2012, i.e. five days before the OPs to which [the parties] had already been summoned, only informed the OD on the filing of the statement of grounds but did not draw the attention of the OD to any new fact that could have an impact on the OPs, such as the stay of national proceedings. Under these circumstances, the OD was not entitled to deal with the appeal and the arguments and facts presented together with the statement of grounds in appeal case T 111/12 were not part of the opposition proceedings. Moreover, a stay of national proceedings is no good reason for staying the opposition proceedings before the EPO. Quite to the contrary, what is desirable is for the proceedings to come to an end quickly, and all the more so because the OPs of April 18, 2012, were only the continuation of OPs that had been interrupted. 21 | 3398
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To sum up, the OD has conducted the proceedings in a way that is not only formally lawful but also reasonable. [2.3] The second point which [the opponents] invoke concerns the assertion according to which the opponents had been limited in their liberty of expression during the OPs of September 23, 2011, by the chairman of the OD who had told the parties that they had to stick to presenting their own arguments and should not develop arguments that had already been presented by the other parties. This objection is difficult to evaluate because the minutes do not mention this instruction and the parties do not agree with each other as to whether such an instruction has indeed been given. According to the patent proprietor, the chairman of the OD has simply expressed the fact that it was not useful to repeat what the parties had presented in writing because the members of the division were fully aware of [those arguments]. Instructions of that kind on behalf of a chairman of the OD are not uncommon in such a situation and appear to be justified in view of the number of parties and the complexity of the file. What is decisive in the eyes of the Board […] is that the minutes do not comprise any indication that the opponents had had the impression of being unable to present their arguments and had protested, for instance by requesting this fact to be mentioned in the minutes. Quite to the contrary, the fact that the OPs could not be terminated on the first day makes the Board think that the parties have not been limited in the way in which they presented their case. As a consequence, the Board comes to the conclusion that it has not been established that the opponents had been limited in the way in which they presented their case. [2.4] The third point which [the opponents] invoke concerns the question of whether the OD has helped the patent proprietor in drafting new claims in the course of the OPs. According to the minutes […] the OD has concluded that certain amendments did not extend the [claimed] subject-matter beyond the contents of the application as filed, but has identified an essential feature that was not found in claim 1 anymore. Based on this opponent 1 concludes that the division had suggested a particular wording of the claim. First of all, it has to be noted that in a situation where a great number of amendments has been discussed as to [their compliance with] A 123(2) it is absolutely normal [for the OD] to state which are the amendments that do not comply with the requirements of this article. Otherwise, the patent proprietor would have to file a great number of requests in advance in order to consider all possible combinations. Moreover, apparently the patent proprietor has not drafted a new claim after this indication. [The Board] has the impression that then auxiliary request 2, which had been on file before, was discussed. It is true that new auxiliary requests have been filed during the second OPs held on April 18, 2012. The Board cannot see how the OD could have helped the patent proprietor in drafting these claims either. It has simply announced during the OPs held on September 9, 2011, that it believed that the claim to priority was not valid. Even if the OPs of September 8, 2011, had been correctly adjourned, this conclusion would have had to be communicated to the parties in writing, well before the continuation of the proceedings on April 18, 2012. Consequently the patent proprietor had not been favoured by the division as a consequence of having already been informed on September 9, 2011. [2.5] The fourth point which [the opponents] invoke was the fact that one of the members of the OD (other than its chairman) had participated in the grant of a patent for a divisional application of the impugned patent (EP 2181629). The communication concerning the grant of this patent has been issued on July 29, 2011, shortly after the summons to OPs and before the OPs to be held on September 8. The opponents express the opinion that the first examiner of the OD at least has shown partiality, by granting a patent for a divisional application without waiting for the decision regarding the prior patent, although he was aware of the objections raised against the prior patent. In this respect one has to consider that it is admissible for a member of an Examining Division (ED) to participate in opposition proceedings concerning the same patent, provided that he does not chair the OD, see A 19(2), and the opponents have acknowledged this fact. This regulation differs from the one applicable to members of the Boards of appeal, A 24(1). In view of the fact that an examiner who has participated in grant proceedings for a patent may, under the provisions of the EPC, be member of the OD and decide on the validity of the same patent, it can hardly be criticised that a member of an OD has participated in the examination of another patent, even if the latter is related (apparenté). Such participation cannot justify that the member be excluded or suspected of partiality. Considering the fact that the examination file wrappers are open to public inspection, an examiner who participates in the examination of a divisional application cannot be said to be in
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possession of any particular piece of information that is not available to everyone and which could somehow justify any bias whatsoever. The assertion of opponents 1 and 3 according to which the first examiner has proven biased is based on the fact that they consider that the examiner ought not take a decision regarding a divisional application before the outcome of the opposition against the prior patent on which it is based is known, but that he should above all take it into account when deciding the fate of the divisional application. In this respect [the Board] wishes to remind [the opponents of the fact] that the decision to grant a patent is taken by the ED and not by the first examiner alone. The Board acknowledges that a way of proceeding as suggested by the opponents appears to be, as such, perfectly reasonable and perhaps even preferable if the conditions and the organization of the treatment of the files by the ED allow to [proceed in that way]. However, to require the ED to mandatorily wait for the outcome of another case that is dealt with by another division, even if the file is related, would jeopardise the independence of the ED. This makes it very clear that the decision of the examiner to proceed with the divisional application cannot be considered as a sure sign of partiality. [2.6] The fifth point concerns the continuation of the OPs on September 9, 2011, although the summons only mentioned September 8, and the opponents 1 and 3 had expressed their disagreement. This very Board (in a different composition) has decided in another case (T 2534/10) that OPs could not be continued the day after without there having been summons respecting the minimum time limit of two months (R 115). Thus the continuation of the OPs the day after constitutes a procedural violation, irrespective of whether the opponents 1 and 3 had protested against this decision or not. In order to continue the proceedings on September 9, an explicit agreement of all the parties would have been required. The above-mentioned decision of the Board has also made clear that a remittal was necessary only if this error had had an impact on the final decision, and has ordered the OD to resume the proceedings, but only from the point at which the error had occurred. According to this decision, the proceedings had to be remitted only for resuming the procedural acts that had been made on the second day, for which there had not been summons. This notwithstanding, the Board wishes to remind [the opponents] that decision T 2534/10 has been taken on April 23, 2012, and that the reasons for the decision have been notified on July 31, 2012, i.e. after the OPs held on September 9, 2011. The OD was not necessarily aware of the fact that it committed a procedural violation, even if the opponents had invoked such an argument. It follows that the behaviour of the OD cannot be considered to have been biased for this reason. [The Board] also has to remind [the opponents] that their arguments regarding a possible procedural violation, although they had been raised at once, could only have been considered during an interruption of the OPs, i.e. in the evening of September 8, during the night from September 8 to September 9 or before the opening of the OPs on the next day. Under these circumstances, the fact that the OD finally acceded to the requests of the opponents without any excessive delays and adjourned the OPs, as explained above, cannot establish a bias of the OD. According to the minutes, the OPs of September 9 have been opened and the OD has announced that the priority (D1) could not be validly claimed because of the feature “characteristic position of the axis in the housing”. Then the patent proprietor requested an adjournment of the OPs, which has been granted. The OPs were resumed on April 18, 2012, after summons in due form and respecting the time limits had been issued. Assuming the minutes to be correct, no procedural act involving the parties has taken place on September 9. The conclusion regarding the deliberation of the OD could also have been notified in writing. This decision was not contrary to the requests (pretentions) of the opponents either because the OD has decided in their favour. The parties have been informed of this decision both through the communication of the minutes and by the chairman of the OD who has repeated the announcement of the decision as soon as the OPs of April 18 were opened. Even if the proceedings had not been continued on September 9, the outcome of the deliberation of the OD would, as usual, have been communicated [to the parties] by sending the minutes or together with the summons to the new OPs. In other words, the proceedings would have been essentially the same if the OD had adjourned the OPs in the evening of September 8, 2011, without continuing them on the next day. Opponent 1 has admitted that the continuation of the proceedings on September 9 had not adversely affected it, but it found strange that the proceedings had been continued despite the protests of two of the opponents and adjourned at once at the request of the patent proprietor. The opponents 1 and 3 thought that this again showed the bias of the OD. However, by adjourning the OPs the OD has also decided in favour of the requests of the opponents 1 and 3 without any excessive delay and has satisfied the procedural requirements by summoning to new OPs respecting the time limit laid down in R 115. [2.7] The sixth point concerns the contents of the minutes of the OPs of September 8 and, more particularly, of September 9. In particular, based on the testimony of opponent 2, opponent 3 has pointed out that the patent proprietor had filed and then withdrawn a request during the OPs of September 9, without this having been mentioned in the minutes. Opponents 1 and 3, which were absent on September 9, therefore, wonder what has 23 | 3398
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really happened on that day. As a matter of fact, some parties have requested a correction of the minutes: the patent proprietor in its letters dated November 14 and December 14, opponent 2 in its letter dated December 1, and opponent 3 in its letter dated November 9, 2011. According to the opponents, on September 9, the patent proprietor had filed an auxiliary request 9. The patent proprietor has contested this allegation. The OD has refused to correct the minutes and has justified its position in a letter dated January 10, 2012. In view of these contradictory statements, the Board is unable to decide whether the minutes are indeed defective or incomplete. The subsequent proceedings at least appear not to imply this and the way in which the OPs of April 18, 2012, took place also appears to be coherent with the events as recorded in the minutes of September 8-9, 2011. It follows that the Board has no objective reason to conclude that the events of September 9 differ from what is recorded in the minutes. [2.8] The seventh point concerns a declaration on behalf of the press relations department (service de presse) of the EPO, which has been published in different media and languages after the OPs had been terminated. On April 19, 2012, the Reuters agency, for instance, has published an article containing the following text: “The EPO confirmed it has upheld a Nestle patent issued in 2010 concerning the way Nespresso capsules fit its machines, with minor modifications, spokesman Rainer Osterwalder said, adding the ruling could be appealed. “The patent may stand but in an amended form”, Osterwalder said. “The essential part of the invention has not been touched by the limitations.” Obviously, the EPO is not entitled to issue speculations on what constitutes the essential part of the invention. But even letting aside the question of whether the press relations department has been correctly cited, such a declaration obviously is to be imputed (reste le fait) to the press relations department and not to the OD. To deduce any bias whatsoever of the OD during the proceedings from a declaration that another department of the EPO has made after the closing of the OPs would presuppose that this declaration has been issued by the OD itself, which has not been confirmed. [2.9] Opponents 1 and 3 have pointed out during the OPs before the Board of appeal that even if the different points mentioned, when considered separately, would not justify a bias on behalf of the OD, they nevertheless showed, when considered together, that the patent proprietor had been systematically favoured. Objectively, the OD has made every effort to deal quickly with a very complicated case. Its desire to continue the OPs on September 9 was wrong, but it has renounced, either because it realised its error or because a corresponding request had been filed by the patent proprietor. The adjournment of the OPs was a legal necessity and corresponded to what opponents 1 and 3 had requested on the previous evening. It is regrettable that a badly drafted press release had been issued after the OPs, but it cannot be imputed to the OD. As the outcome of opposition and appeal proceeding hardly ever satisfies all parties, it is all the more important to convince the parties that they have been treated in an impartial manner. This being said, according to the case law of the EPO, it is not sufficient for establishing a bias that one of the parties may have a subjective impression [of partiality], but one has to include an objective observer (see T 190/03 [9] and T 281/03 [9]). Even though the Board considers that the reasons invoked [by the opponents], when considered together, do not objectively establish a bias, it regrets that two of the opponents have had this impression. [2.10] It follows that the Board cannot objectively establish any bias in the behaviour of the OD or any substantial procedural violation. In view of the arguments filed, the request for a remittal is unfounded. [2.11] During the written proceedings, but not during the OPs, opponent 3 has submitted that the impugned decision was insufficiently reasoned. It refers in particular to page 35 of the decision, where [the OD] allegedly assessed the existence of an inventive step without defining the problem on which the invention was based. This appears to be wrong because the problem to be solved in view of D7 is defined on page 34. The OD then summarises the arguments of the opponents and explains the differences with respect to the prior art. It is only then that the division notes that the person skilled in the field of D7 would not have combined with asymmetric capsules. Therefore, the Board cannot see in which respect the reasoning of this decision is incomplete or missing. That the opponent did not find this reasoning persuasive is another matter. It follows that the ground invoked [by opponent 3] cannot justify a remittal either. [2.12] Finally, opponent 1 considered that the continuation of the OPs in April 2012 constituted a substantial procedural violation because on January 12, 2012, it had filed an appeal against the communication of the OD dated January 10, 2012. In this communication the OD had refused to modify the minutes (see point [2.7] above) 24 | 3398
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and presented a summary of the OPs of September 9. Moreover, the OD had announced that the proceedings were to be continued and that there would be summons to new OPs. Before that, opponent 1 had requested, in letters dated December 1 and 8, 2011, that the proceedings would be resumed before an OD in different composition, that the minutes be corrected and that [the OD] would at least issue an appealable decision. Opponent 1 considers the communication dated January 10 to constitute an intermediate decision by which the division dismissed its requests, or at least a refusal to issue an appealable decision. According to [opponent 1], the appeal filed on January 12 (T 112/12) should have led to a stay of the proceedings in any case. Consequently, the continuation of the proceedings constituted a substantial procedural violation. [2.13] As appeal T 112/12 has been withdrawn, the Board does not have to consider the question whether appeal T 112/12 may still have potential legal effects that can be examined within the framework of another appeal. Thus the Board will limit itself to commenting on the suspensive effect of the appeal as defined in A 106(1), second sentence. It follows from the fact that A 106(1) contains, side by side, two sentences one of which defines decisions that can be appealed, and the other what the effect of an appeal is, that this suspensive effect only applies to appeals as defined in the first sentence, i.e. appeals filed against the decisions listed in the first sentence, which comprise decisions of the OD. For these decisions A 106(2) stipulates that only a decision that terminates proceedings as regards one of the parties can be appealed, unless the decision allows a separate appeal. The communication of the OD dated January 10, 2012, has not terminated proceedings, nor did it mention the possibility of a separate appeal. The question whether it is possible to file an appeal outside the conditions laid down in A 106 is irrelevant, because the appeal T 112/12, for which the question could have arisen, has been withdrawn. In any case, for such an appeal A 106 does not provide any suspensive effect. According to the spirit of A 106 the suspensive effect concerns decisions that terminate proceedings before an instance in order to avoid that the impugned decision might have legal effects (first sentence of A 106(2)), or, alternatively, it concerns decisions for which the instance that makes the decision can itself provide the possibility of filing an appeal (second sentence of A 106(2)). This second sentence clearly stipulates that the instance that makes the decision remains in charge (maître) of the proceedings until it takes a decision that terminates these proceedings or allows a separate appeal. Otherwise, the parties would be free to hinder the competent department from dealing with the files in an efficient way. According to A 106, in such a procedural situation, the OD has to take a decision on whether or not it will allow a separate appeal. The parties are not entitled to this option. If, as in the present case, the OD has not expressly allowed a separate appeal, and a party files an appeal, then the OD is entitled to note that this appeal does not satisfy any of the conditions of A 106(2), and in particular, of the conditions of the second sentence of this provision, because its decision did not offer the possibility of a separate appeal, and to pursue the proceedings. If it was not entitled to do so, then the purpose of A 106, which is to allow the decisionmaking instance to bring the proceedings to an end, could not be reached. However, the purpose of the limitation of the possibility to file an appeal to decisions which terminate proceedings as regards one of the parties and decisions that allow a separate appeal would be circumvented if any appeal against any procedural act made during examination or during an opposition had a suspensive effect. The Board notes that if an appeal concerns a case that is not foreseen by A 106(1) and (2) (that is to say, an appeal against a procedural act that is not mentioned in A 106(1) and (2), or a decision of the OD that does not allow a separate appeal), this appeal does not have a suspensive effect irrespective of whether the appeal is admissible (recevable) or not. The Board wishes to emphasise that this finding is not in contradiction with decision J 28/03, because decision J 28/03 obviously has not considered the procedural situation from which the question that is presently before the Board has arisen. [2.14] In the present case [the opponents] cannot invoke any suspensive effect irrespective of whether appeal T 112/12 is admissible or not. This is not an appeal against one of the decisions mentioned in A 106 (1) and (2), for which [the EPC] provides a suspensive effect. Thus the OD was entitled to note this fact and to exercise its discretionary power such as to pursue the proceedings. The Board does not see how the decision to pursue the proceedings can be seen to be based on an erroneous assessment. Therefore, opponent 1’s request for a remittal of the present case cannot be allowed. Its request to refer this question to the Enlarged Board of appeal has been withdrawn during the OPs before the Board. Incidentally, this request could not have been granted because the decision of the Board is directly based on the interpretation of the EPC by the Board and because the Board is not aware of any divergent decision on that topic. [2.15] As the case is not remitted, it would not make sense to decide on the composition of the OD. Finally the patent was revoked because the request on file did not comply with the requirements of A 123(2).
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Having had a glimpse of the courtroom atmosphere in this case, I am sure you will find Christmas dinner with aunt Aglaé relatively enjoyable. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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J 17/12 – Entry Denied
K’s Law – The ebook
J 17/12 – Entry Denied 24 Dez 2013
This decision deals with the question whether a transfer of a European patent application should be recorded in the register although the proceedings for grant have been suspended under R 14. If you just want a short summary of the Board’s answer, here it is: No. If you want to know why, please read on. The application under consideration was filed by Mr Fein in 2006. In 2008, there was a transfer to Reprise Pharmaceutics. On February 7, 2011, a communication under R 71(3) was issued. On March 28, 2011, Ferring instituted entitlement proceedings in the District Court of The Hague. The proceedings were stayed. On April 20, Reprise filed a request to record the transfer of the application from Reprise to Allergan. Allergan requested that the proceedings be resumed. The Legal Division (LD) recorded the transfer but refused to resume the proceedings. Both parties appealed the decision. Transfer of the application [2.1] Ferring’s first argument is that once the EPO knew that Reprise’s title to the application had been put in doubt by virtue of the national entitlement proceedings, it should not have accepted on the evidence supplied by Reprise that the application had been transferred to Allergan. [2.2] The LD rejected this argument and the Board agrees. The general principle under the EPC is that an application for a European patent, as an object of property, is subject to national law and may be transferred (see A 74 and 71). The Board has no reason to doubt that the present application was, as an object of property, transferable to Allergan and that it was indeed transferred, subject no doubt to whatever claims Ferring might establish under national law.
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Recording of the transfer in the register: the relevant provisions [3.1] R 22(1) provides that the transfer of a European patent application shall be recorded in the European Patent Register at the request of an interested party upon production of documents providing evidence of such transfer. R 22(2) provides that such a request may be rejected only if R 22(1) has not been complied with. Subject to Ferring’s argument in point [2.1], above, it is not disputed that the evidence filed by Reprise satisfied the formal requirements of the rule. [3.2] As to R 14(1), this provides that if the relevant conditions are satisfied (which they were in this case) “the proceedings for grant shall be stayed”. Allergan argues that the recording of a transfer of a patent application in the register is not part of the proceedings for grant. The LD agreed. [3.3] There are certainly no express provisions of the EPC indicating that R 22(1) and (2) should be put on hold in circumstances where proceedings for grant have been stayed under R 14(1). This is in contrast, for example, to R 15, which expressly provides that in the period during which proceedings for grant are stayed neither the European patent application nor the designation of any Contracting State may be withdrawn. Recording of the transfer during a stay: the case law [4.1] So far as the Board and the parties are aware, there is no decision of the Boards of Appeal directly on the point. In the two related cases, J 38/92 and J 39/92, the Legal Board made the general statement that a stay of the grant proceedings has the effect that during the suspension neither the EPO nor the parties can validly perform any legal acts. On the contrary, the grant proceedings remain unaltered in the legal state existing at the point in time of the stay. Taken by itself this general statement might be taken to cover the present case and rule out Allergan’s arguments. [4.2] It is, however, necessary to have regard to what the facts of those two cases were. A third party had brought national proceedings against the applicant, as a result of which it had obtained a decision of the national court that the two applications were to be transferred back to the third party, and belonged to it (die Patentanmeldung auf die dritte Partei “zurückzuübertragen ist und ihr zusteht.”) The third party had not meanwhile applied for a stay of the grant proceedings but rather, only after obtaining the decision of the national court and then relying on this as evidence, filed a request for transfer of the applications to it. The request was granted but on appeal the Board decided this way of proceeding was wrong: a request under R 20(1) EPC 1973 (now R 22(1)) must be based on evidence of a transfer document, and such evidence was missing. The Board went on to conclude that the request should have been dealt with as a request under A 61(1)(a) by the third party to prosecute the application as its own and that the EPO should have stayed the grant proceedings under R 13(1) with effect from the date of the request. The Board then added the comment cited above, namely that the stay of the grant proceedings meant that neither the EPO nor the parties could validly perform any legal acts and that the grant proceedings remain unaltered in legal state existing at the point in time of stay (“Die Aussetzung des Erteilungsverfahrens hat die Wirkung, daß in dem ausgesetzten Verfahren weder das Europäische Patentamt noch die Parteien wirksam Rechtsakte vornehmen können. Das Erteilungsverfahren verbleibt vielmehr unverändert in dem Rechtsstadium, in dem es sich zum Zeitpunkt der Aussetzung befand.“) See point [2.5] of the reasons in both cases. This was relevant in the particular circumstance of J 38/92 because meanwhile (i.e., after the grant proceedings should have been stayed) the mention of the grant to the original applicant had been published in the Official Journal. The Board thus made it clear this act of the Office had had no legal effect. See points [2.5] and [2(b)] of the reasons and the order, respectively. The factual position was not the same in J 39/92 (where the comment appears in identical terms): in this case there appear to have been no acts by the EPO or the parties which the Board needed to make clear were invalid. The remark therefore appears to have been an obiter dictum. [4.3] In the light of these facts, the present Board therefore considers that the above general statement cannot be taken as necessarily applying to the facts of the present case. The mention of the grant in the Official Journal, which was the relevant act of the EPO in J 38/92, was undoubtedly a step in the proceedings for grant. It cannot be said with a similar level of certainty that the same is true of the registration of the transfer of the application. [4.4] Ferring relied on the decision in J 20/05. In that case, the issue was whether an applicant was entitled to file a divisional application at a time when proceedings for grant of the parent application had been stayed. Ferring pointed to the fact that the Board there held that the entitlement to file a divisional application was a procedural right that derived from the applicant’s status as applicant under the earlier application, and thus it had to be examined whether the applicant was entitled to file the divisional application by virtue of being the applicant in the earlier parent application. The Board held that since the rights in respect of a divisional application could only be derived from the parent application, the disputed right of the applicant to file the parent application could 28 | 3398
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not form a sufficient basis for a right to file a divisional application. Ferring argued, applying this reasoning, that when the request to record the transfer of the application was filed by Reprise, there was doubt about who was the person lawfully entitled. [4.5] While this decision could no doubt support Ferring’s position, the Legal Board there made the point, citing J 2/01, that the entitlement to file a divisional application is a procedural right that derives from the applicant’s status as applicant under the earlier application (point [2] of the reasons). The point was repeated in J 9/12 [3]. The present Board cannot be confident that a right to have a transfer of an application registered following a request under R 22(1), which may be filed by any interested party, is such a procedural right. The Board therefore prefers to approach the question applying more general principles, as set out below. Stay of proceedings: the general principles. [5.1] The purpose of R 14(1) is to protect the third party’s interests during entitlement proceedings, at least provisionally (J 7/96 [2.3]; J 15/06 [7]; J 20/05 [3]). [5.2] Whether or not the recording of a transfer literally constitutes part of the “proceedings for grant” (and thus falls within the express wording of R 14(1)), the decision in J 20/05 demonstrates that the effect of a stay under R 14(1) is not limited to a stay of “proceedings for grant”, understood literally: other acts may also be excluded by a stay if they are inconsistent with the objective of protecting the third party’s rights. Rule 14 EPC 1973 can prevent, as lex specialis, other acts, e.g., as in J 20/05, the filing of a divisional application (see also G 1/09 [3.2.5], and J 9/12 [3,5]). In J 20/05 the filing of a divisional application was held to be excluded because of the need to protect the third party’s rights in the parent application. The Board said: “... the appellant’s argument that it is not forbidden by R 13(1) to file a divisional application during suspension of the parent application proceedings cannot succeed. Even if the filing of a divisional application during suspension of the parent application proceedings is not expressly excluded by R 13 EPC [1973], R 13 is stated in general terms and it is consistent with its objective of protecting the third party claimant’s rights that the filing of a divisional application during suspension should be prevented. It would be inconsistent with and contrary to the fundamental objective of the provisions on suspension, on the one hand to suspend the parent application proceedings because of the national entitlement proceedings, but on the other to allow the filing of a divisional application by the applicant whose entitlement is challenged.” See point [3] of the reasons, and also J 9/12 [5]. Registration of transfer during a stay: the Board’s conclusions [6.1] The question is thus whether the registration of a transfer of an application is inconsistent with the fundamental objective of the suspension of the proceedings, which is to protect the third party claimant’s rights in the application. [6.2] The core provision of the EPC so far as entitlement proceedings are concerned is A 61(1), which provides various remedies if “by a final decision it is adjudged that a person other than the applicant is entitled to the grant of the European patent”. In this respect it seems to the Board that if the EPO is to be required to act on such a decision, it needs to be a decision which establishes that the third party rather than “the applicant” is entitled to the grant. The Board considers that “the applicant” here can only mean the person entered on the register as applicant. The Board considers that a decision establishing that the third party rather than the former applicant, or indeed some other person, was entitled to the grant would not be sufficient for this purpose. It seems to the Board that if Allergan was correctly registered as the applicant, it was indeed necessary for Ferring to bring proceedings against Allergan, with all the increased costs which that involved. There would then also be nothing to prevent the application being subsequently transferred and registered in the name of another applicant. It follows that if the registered applicant can be freely changed while proceedings for grant are stayed, the third party’s attempts to obtain the remedies available under A 61(1) could be repeatedly frustrated. [6.3] The LD originally took the view that following the registration of Allergan as applicant it was necessary for Ferring to bring proceedings against Allergan […]. In its decision, however, the LD changed its view: “… it is not necessary to institute separate entitlement proceedings before a competent court against the now registered applicant after a transfer of the application has taken place from the then registered applicant to the actual registered applicant.” […]. However, the Division does not appear to have taken into account in this context the significance of the reference to the “applicant” in A 61(1). The statement was also in fact made by way of 29 | 3398
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introduction to the point that the entitlement proceedings had been brought against the person who was at the time registered as applicant (Reprise) and this was sufficient to entitle Ferring to a stay of the grant proceedings. As to this point, the LD was clearly correct. [6.4] Allergan argued that the Board’s reading of A 61(1) is not correct: a final decision which establishes that Ferring is entitled to the grant will necessarily mean that no one else is entitled. It would in effect be a decision in rem. The Board disagrees with this argument. It would mean that a decision against a straw-defendant would oblige the EPO to implement the machinery of A 61. It is not even necessary to go to such an extreme example; it is not difficult to imagine non-collusive national proceedings in which a judgement on entitlement was obtained against some person other than the applicant. [6.5] Allergan did not in fact argue in the alternative that a final decision obtained against a person who once was the applicant would, so far as the EPO is concerned in the application of A 61(1), be binding against a transferee from this applicant and who had since been registered as applicant. The Board considers that Allergan was correct not to do so. The effect of a final decision on any successors in title to the applicant would be a matter of national law. Rather, Allergan argued that if a transfer of the application was registered during the national entitlement proceedings, or even after a final decision was obtained, the third party could simply institute fresh entitlement proceedings and obtain a decision against that new applicant. It seems to the Board that this is the opposite of protecting the interests of the third party, given the expense and delay involved, and taking into account the fact that such proceedings would have to be brought in whatever was the appropriate jurisdiction according the Protocol on Recognition. A similar point arose in J 20/05, where it was argued, in the context of a divisional application being filed during suspension of the parent grant proceedings, that a third party could simply bring entitlement proceedings in respect of such divisional application, and apply to stay grant proceedings on that divisional application. The Board said: “It has to be noted that it is not possible for the claimant third party to apply to the EPO for an automatic and immediate suspension of the divisional application proceedings by way of an extension of the suspension of the parent application proceedings. On the contrary, in order to have the divisional application proceedings suspended the third party would first have to bring (“open”) new national proceedings against the applicant in which it sought a judgment that it is entitled to the grant of a patent on the divisional application. The third party would then have to provide evidence that it had brought such proceedings and finally the matter would have to be decided by the EPO. All this would clearly put an additional heavy and undue burden on the third party and would be contrary to the objective of the suspension of the parent application proceedings, which is to protect its interests.” See also J 9/12 [7]. [6.6] Allergan argued that it was important in the public interest that the register should reflect the true position so that, for example, if someone wished to acquire a licence in this case they would know that they should apply to Allergan and not Reprise. The Legal division also considered this informational role of the register to be an important factor. However, quite apart from the fact that anyone wishing to obtain a licence would presumably be re-directed by Reprise to Allergan, there is nothing to stop the filing, during the suspension of grant proceedings, of a request to transfer the application. The effect of a stay in the light of the Board’s decision will simply be that no action will be taken on the request during the suspension. While the fact of the transfer may not be apparent from the register, it will be apparent from an inspection of the public file, as will the decision to stay the grant proceedings itself. The public will therefore be sufficiently informed. [6.7] The Board can accept that when it comes to implementing the mechanism of R 14 and R 15 it seems appropriate to consider the interests of the person who prima facie has the real interest in the application (here Allergan) rather than the interests of someone who prima facie no longer has any real interest in the application (here Reprise). However, for the reasons given below (point [8.4]), the Board considers that on such a request it would be appropriate to consider all the relevant circumstances, including the fact that the application had been transferred to a party with commercial interests in pursuing the remedies under A 61(1). [6.8] Hence, the Board concludes, on the one hand, that the registration of Allergan as applicant while the grant proceedings were stayed failed to protect Ferring’s legitimate interests under A 61(1) as a third party and, on the other, that there are no sufficient practical or procedural objections against the suspension of any action to be taken on the request to register the transfer while proceedings are suspended. Registration of transfer: referral of a question to the Enlarged Board of Appeal (EBA)
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[7.1] In the light of the Board’s conclusion that the registration of Allergan as applicant should be reversed, Allergan requested that a question be referred to the EBA as follows: “Can a transfer of a patent application be registered during a suspension of proceedings under R 14?” [7.2] Allergan argued that a point of law of fundamental importance within the meaning of A 112(1) arises. Whether or not this is the case, the Board sees no need to refer the question. The Board has been able to come to a conclusion applying what it considers to be the established principles. It is also not in any doubt about the result and is not aware of any legal view-points expressed either in national case law or in legal commentaries which might cast doubt on the conclusion reached (see J 5/81 [11]). The procedural consequence of reversal of registration [8.1] The consequence of the Board’s decision that the registration of Allergan as applicant must be reversed now has to be considered. The LD, having decided that Allergan had been correctly registered as applicant, went on to deal with the competing requests arising out of the suspension of the grant proceedings, in the end reaching a decision not to make any order in this respect. This second part of the decision was also the subject of both appeals. In its communication sent to the parties on 15 July 2013 in preparation for the oral proceedings (OPs), the Board pointed out that if the decision on registration was wrong it would mean that the wrong parties had been before the LD and now the Board in these appeal proceedings. [8.2] Neither party filed any response to this observation. However, during the OPs before the Board, and after the Board had announced its conclusion that the registration of Allergan as applicant had to be reversed, Allergan for the first time advanced a submission that the appeal proceedings could then and there be continued because even though Allergan was now known not to be the applicant, it was entitled under R 14(3) as an interested party to request continuation of the grant proceedings. As to the absence of Reprise from the proceedings, Allergan’s representatives said that they also represented Reprise, so that there was no obstacle to the appeal being continued on this basis. [8.3] As to this point, the Board makes the following observations: (a) The essential purpose of appeal proceedings is to decide whether the decision under appeal was correct. In the present case the essential issues decided by the LD and the issues which then became the subject matter in the appeal proceedings were whether the registration of Allergan as applicant should be reversed, and whether the grant proceedings should be resumed on the request of the applicant and, if so, when. Whether grant proceedings should be resumed on the application of another party, being the transferee of the application, was never an issue in the first instance proceedings. Nor until the afternoon of the OPs before the Board was it raised in the appeal proceedings. (b) In reality, Allergan’s argument amounted to a request for the Board to exercise its discretion to allow Allergan to amend its case at a very late stage of the appeal proceedings by reconstituting the entire proceedings and continuing with the appeal on that basis (see Articles 13(1) and (3) RPBA). (c) This request was a response to a state of affairs that had been a clear possibility for over three years, namely from 3 August 2011, the date when Ferring first filed its request to reverse the registration of Allergan as applicant […]. However, Allergan at no time took any steps to guard against this possibility by filing auxiliary requests on behalf of Reprise in the proceedings before the LD or in the appeal proceedings. That it is open to a party to guard against such procedural uncertainties is demonstrated by G 2/04: “... it is an accepted principle in proceedings before the EPO that a party may file auxiliary requests. When used appropriately, such requests do not impede the course of proceedings. Rather, they make clear at an early stage what the fallback positions of a party are and give the adversary and the deciding body the opportunity to be prepared as soon as the respective request becomes relevant. This is the case when the preceding preferred request turns out not to be allowed by the deciding body.” (Point [3.2] of the Reasons) “If, when filing an appeal, there is a justifiable legal uncertainty as to how the law is to be interpreted in respect of the question of who the correct party to the proceedings is, it is legitimate that the appeal is filed in the name of the person whom the person acting considers, according to his interpretation, to be the correct party, and at the same time, as an auxiliary request, in the name of a different person who might, according to another possible interpretation, also be considered the correct party to the proceedings.” (Point II of the Order)
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(d) The Board would not wish to allow purely formal procedural requirements to get in the way of dealing with the substantive issues. However, the correct constitution of proceedings is not a matter of pure formality. It is important that the correct persons are parties to the proceedings so that they are bound by the decision as a matter of res judicata and can, for example, if appropriate, be made the subject of an order to pay costs. Even though Allergan’s representatives stated that they had power of attorney to act also on behalf of Reprise, no formal application in the name of Reprise to join the proceedings was made. In T 1178/04 [46] the decision was reached that the wrong parties were present in the appeal proceedings (a transfer of the opposition status was held by the Board to have been invalid), with the result that the Board felt compelled to remit the case. In T 1982/09, the factual situation was similar in that the Board decided that the opponent status had not been validly transferred but the Board nevertheless felt able to continue the appeal proceedings. But there the representative had reacted appropriately at an earlier stage of the appeal proceedings to this possibility and both parties wanted the Board to go on and decide the substantive issues. The correct opponent was “deemed to have acquired the appellant status” from the wrong opponent as a consequence of the Board having decided that the opponent status was not validly transferred (point 2.2 of the reasons). That is not the position here. (e) All these considerations point away from allowing Allergan’s request. [8.4] The Board is in any event not convinced by the central plank of the Allergan’s argument based on the construction of R 14(3). This states: “Upon staying the proceedings for grant, or thereafter, the EPO may set a date on which it intends to resume the proceedings for grant, regardless of the stage reached in the national proceedings instituted under paragraph 1. It shall communicate this date to the third party, the applicant and any other party. …” Allergan argues that since this rule refers to “the third party, the applicant and any other party” (“Beteiligte” in the German version of the rule), it must mean that any person may apply for a resumption of the grant proceedings. As to this, the opening wording of the rule (“Upon staying the proceedings for grant, or thereafter, the EPO may set a date on which it intends to resume the proceedings for grant …”) is in fact perfectly general, and indeed appears to contemplate that the EPO may act on its motion (as happened in T 146/82. The Board is not sure who is intended by the reference to “any other party” (see also the reference to “the applicant and any other party” in R 14(2)). In this the Board was not helped by the fact that Allergan’s submission came out of the blue. But it is not necessary to reach any conclusion because it does not follow from this statement about the parties who must be informed about the date of resumption of the grant proceedings that any person has the right to apply for such resumption, and certainly not in the absence of the applicant as party. It also does not mean, as Allergan argued, that the interests of a party such as Allergan (a contractual transferee of the application) will never be taken into account when considering whether to resume grant proceedings: the Board sees no reason why it should not be relevant for the EPO to take such interests into account if it becomes appropriate to weigh up the various interests. (In this respect it should be noted that Ferring reserved the right to argue that it is never appropriate to weigh up the competing interests). [8.5] For all of these reasons, therefore, and even on the assumption that Allergan’s amendment to its case were to be admitted […], the Board refused to continue the appeal proceedings with the hearing of Allergan’s request, as a “third party”, for immediate resumption of the grant proceedings. Referral of further questions to the EBA [9.1] In reaction to the Board’s indication that it did not intend to continue with the appeal proceedings by hearing Allergan’s request to resume the grant proceedings, Allergan filed a request to refer two further questions to the EBA, as follows: “Can a party other than the applicant (Beteiligter) make a R 14(3) request? If the answer to question 2 is no, then if a patent application is transferred during stay of proceedings for grant how are the interests of a good faith recipient of the patent application to be heard by the EPO?” [9.2] It was said that answers to these questions were needed because a point of law of fundamental importance arose. As to the first question, the issue has arisen not only in the context of the exercise by the Board of its discretion as to the handling of the appeal proceedings but also in the particular and unusual circumstances of the case. As already pointed out, these have arisen partly because the precautionary step of filing auxiliary requests in the name of Reprise was never taken. The Board does not need the answer to such a question in order to deal with this procedural situation. The same answer can be given in relation to the second question which Allergan asks to be referred, which essentially is a rhetorical question in support of its argument on the first question. As 32 | 3398
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stated above (point [8.4], at the end), the refusal to register a transferee as applicant while the proceedings are stayed does not mean that the economic interests of the transferee cannot be taken into account. It is also no undue burden for the transferor to make the transferee’s interests heard while the grant proceedings are stayed. The Board would also point out that (a) it is not the purpose of a reference under A 112(1) for the EBA to give answers to open procedural questions framed in this way and (b) the question is in any event hypothetical since the status of Allergan as “a good faith recipient of the patent application” (whatever this may mean) is not established and is clearly a matter of dispute so far as Ferring is concerned. Order […] The registration of Allergan as applicant is ordered to be reversed. […] Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 158/12 – No Switching
K’s Law – The ebook
T 158/12 – No Switching 23 Dez 2013
Board member Gianciotto is about to draw the Article 12(4) RPBA sword ... This is an examination appeal. Board 3.2.06 had to deal with the question of whether the applicant could be allowed to switch from one invention to the other. [2.1] Claim 1 corresponds to originally filed claim 8 which formed part of the second invention during search. Claim 1 with this exact wording was withdrawn during the examination proceedings after having been submitted with the applicant’s response of 6 May 2011. [2.2] According to Article 12(4) RPBA, the Board can hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings. In order to decide how to exercise this discretionary power, the Board reviewed the course of the examination proceedings. [2.3] When entering the European phase of the proceedings, the appellant chose to base the prosecution of the application on the first invention and submitted (with letter of 25 March 2009) amended claims 1 to 10 wherein claim 1 further specified the oxygen storage component. The system of claim 8 was defined as comprising the article according to claim 1 and an on-board diagnostic system. That it was the applicant’s own volition to pursue the first invention was emphasized by the arguments submitted therewith that the inventive concept related to the use of a sufficient amount of an oxygen storage component having a pre-selected deactivation temperature range that coincided with a deactivation temperature range at which the hydrocarbon conversion of the precious metal component decreased below a pre-selected value, which concept underlies the first invention. Thus, the appellant deliberately chose the first invention to be the subject of examination.
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T 158/12 – No Switching
K’s Law – The ebook
[2.4] For this reason, the Board concludes that the first invention was chosen voluntarily for being the subject of examination and therefore, a claim directed to the second invention is not to be examined in this application. Since the main request relates to the second invention, the request is therefore not admissible. [2.5] The appellant’s view was that there was no Article or Rule in the EPC which would prevent the applicant from changing from one invention to another – if they were searched – during examination. [2.6] Contrary to such view, the Board considers that the Articles and Rules present in the EPC however form a statutory system which however, read together, clearly leads to this conclusion:
A 82 requires the European patent application to relate to one invention only or to a group of inventions so linked as to form a single general inventive concept. → This is a basic principle underlying the EPC.
R 137(2) gives the applicant a right to amend the application once of its own volition after receipt of the first communication. According to R 137(3), no further amendment may be made without the consent of the Examining Division (ED). → In such a way an application which includes various (groups of) inventions can be pursued on the basis of the desired (group of) invention.
A 76 states the possibility to file divisional applications. → In such a way the further (groups of) inventions can be pursued.
A 94(1) states that the request for examination of the European patent application shall not be deemed to be filed until “the” examination fee has been paid. → It is only possible to pay one fee for the examination.
[2.7] Hence, there is no provision which would allow the payment of multiple examination fees for a patent application. This is also in line with the possibilities to
either argue in the examination proceedings that unity exists – which should be done in reply to the first communication to the ED; or to file divisional applications which allow the principle of one invention – one examination (and one examination fee for one examination proceedings) to be maintained.
Thus, it is clear that only one examination is to be carried out in respect of one application – and in respect of one examination fee being paid. [2.8] Accordingly, after having chosen one invention (or one group of inventions) to be the subject of examination, this choice cannot be altered once examination of that invention has commenced. [2.9] This systematic approach based on the statutory provisions of the EPC is, contrary to the appellant’s view, confirmed in G 2/92. It is true that opinion G 2/92 primarily concerns the non-payment of further search fees and states in its Headnote that “an applicant who fails to pay the further search fees for a non-unitary application … cannot pursue that application for the subject-matter in respect of which no search fees have been paid. Such an applicant must file a divisional application in respect of such subject-matter if he wishes to seek protection for it.” The opinion is based on the principle “that in order to proceed to grant a European patent application is required to contain claims relating to one invention only” (Reasons, item 2). However, the Enlarged Board’s opinion goes on further and additionally considers the examination stage and sets out (Reasons, item 2, second paragraph) that “At the examination stage, having regard to the requirement of unity of invention and the fact that only one examination fee can be paid for each application, clearly only one invention in each application is to be examined for conformity with the patentability and other requirements of the EPC.”
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T 158/12 – No Switching
K’s Law – The ebook
[2.10] Thus, although the appellant cited G 2/92 to support its view that this opinion exclusively concerned the prohibition of pursuing a non-unitary application in respect of subject-matter in respect of which no search fees had been paid and did not concern the examination procedure and subject-matter for which the search fees have been paid, the scope of G 2/92 extends – as explained supra – beyond the search stage in highlighting the principle of one fee for one procedural step also at the examining stage. Hence, the appellant’s view that the examination of an application could be based on more than one invention is not supported by this opinion of the Enlarged Board of Appeal. [2.11] Further, the appellant was also of the view that the subject-matter defined in claims 1 and 8 as originally filed anyway concerned a single inventive concept since one independent claim (claim 8) encompassed the other (claim 1) based on the premise that claim 8 as filed inherently had all the features of claim 1, in particular since the deactivation was allegedly present as a material characteristic. Additionally, according to the appellant, claims 1 and 8 as originally filed afforded alternative solutions to the problem of the invention which might not be covered by a single claim in accordance with R 43(2)(c), and therefore did not contravene the provisions of unity (A 82). [2.12] Such view cannot be accepted however, since when assessing the inventive concept underlying the subject-matter of claim 1 as originally filed, it is related to a diesel engine exhaust treatment article and a selected oxygen storage component defined in relation to a precious metal component. Claim 8 on the other hand is related to an exhaust system, not just the exhaust treatment article, and does not specify any particular characteristics of the components as in claim 1, and in fact not even a precious metal component. Likewise, claim 8 requires a pair of lambda sensors, whereas claim 1 puts no such restriction on the system. It is thus evident that one claim does not encompass the other. This was indeed why two search fees were requested and paid. [2.13] The appellant further argued that it was unable to maintain the (present) main request during examination, because the ED had stated the application would then be “immediately” refused. Reference was made to the communication of 1 June 2011. [2.14] The Board disagrees. Although the ED stated in the above referenced communication (which was issued in preparation of the oral proceedings) that “In the absence of any valid claims, the applicant has to count on an immediate refusal” as a consequence of pursuing the second invention, the ultimate refusal of a request – based on a reasoned decision – provides an appropriate basis for an appeal. [2.15] There were anyway several possibilities of defending such a request in the first instance proceedings in both its written phase and also during the oral proceedings. The likelihood of receiving a refusal may indeed have been high, but the applicant’s withdrawal of the request prevented the ED from taking a decision on that request. The request could have been filed as an auxiliary request for example. [2.16] For these reasons, the main request is not admitted into the proceedings as it should have been presented in the first instance proceedings such that it became the subject of a decision. Due to these reasons, the Board exercised its discretion under Article 12(4) RPBA not to admit the request into the proceedings. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2235/12 – Taken By Surprise
K’s Law – The ebook
T 2235/12 – Taken By Surprise 20 Dez 2013
[3] In reply to the citation by the Examining Division (ED) of two new documents on 13 March 2012, the appellant submitted in the fax of 14 March 2012, i.e. one day prior to the oral proceedings (OPs) before the ED, that “in view of the very late citation of new references” it was “simply impossible to study the newly cited prior art D4 and D5 and get appropriate instructions from the US-client (via a US-law firm) within this extremely short time of one working day”. The appellant therefore requested to “set a new date for the hearing”, “to give all parties … sufficient time to review newly cited documents and discuss/prepare proper amendments”, see statement of grounds and letter of 14 March 2012. [3.1] Given these facts, the board considers it necessary to examine whether the appellant’s right to be heard was violated because the subject of the proceedings had changed shortly before the date set for the OPs and whether the ED should have cancelled these proceedings and fixed a new date for them. [3.2] Under A 113(1) EPC 1973, decisions may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. The applicant therefore has the right to react to objections raised by the ED. This can be done by providing comments or by amending requests in order to take into account the objection raised by the division. [3.3] R 71a(1) EPC 1973 (corresponding to R 116(1)) specifies that, when issuing the summons to OPs, the EPO shall draw attention to the points which in its opinion need to be discussed for the purposes of the decision to be taken. At the same time a final date for making written submissions in preparation for the OPs shall be fixed. New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed (see also German and French versions of R 116(1): “soweit sie nicht wegen einer Änderung des dem Verfahren zugrunde liegenden Sachverhalts zuzulassen sind”, “à moins qu’il ne convienne de les admettre en raison d’un changement intervenu dans les faits de la cause.”) This provision has to be interpreted in the light of A 113(1) EPC 1973 so as to give the applicant an opportunity to submit comments or, if necessary, make amendments to its requests in view of the points to which the EPO drew attention. This principle is also reflected in the Guidelines for Examination, E-III 8.6, in the version of April 2010, stating that the parties “should always be given the opportunity to submit amendments intended to overcome objections raised by the Division which depart from a previously notified opinion.” [3.4] In the present case […] the ED summoned to OPs indicating that claims 1 and 15 lacked clarity and that the subject-matter of these claims lacked novelty in view of D3. Following the submission of amended claims a telephone consultation took place, the results of which were communicated to the appellant and read as follows: “The first examiner informed the representative that the current claim 1 lacked clarity concerning the the (sic) definition of the building blocks of the sensing system. The first examiner asked the representative to submit an improved version of claim 1, in order to overcome that deficiency.” The appellant could therefore conclude that the objection with respect to lack of novelty in view of D3 had been overcome and that only clarity would have to be discussed in the OPs. As a consequence, the appellant submitted amended claims asserting that they were “clarified as proposed by the Examiner” and expressed the view that it should be possible to cancel the OPs. Two days before the OPs the ED informed the appellant that the date for OPs was maintained, introduced two additional documents D4 and D5 into the procedure, and objected that the subject-matter of claim 1 was not new in view of D4. The next day, the appellant requested postponement of the OPs in view of this new objection. The board notes that the new objection was not related to any of the points which had been indicated in the summons. In particular, a discussion of novelty based on D4 could not be expected after amendments had been filed and discussed in the telephone interview. Hence, the subject of the OPs had changed. [3.5] Under these circumstances, the appellant should have been given an adequate opportunity to react to the new objection either by submitting comments or by amending its requests. 37 | 3398
T 2235/12 – Taken By Surprise
K’s Law – The ebook
[3.6] The ED’s argument that the appellant had sufficient time for a thorough consideration of D4 and D5 and that the appellant could not possibly be surprised by this decision is not convincing. The representative was given one working day to get acquainted with D4 and D5, contact its client and – if necessary – provide amendments overcoming the objections. The board accepts the argument of the appellant’s representative that it was impossible in view of the short timeframe to get appropriate instructions from the client. [3.7] The board notes that the appellant’s representative deliberately chose not to attend the OPs on 15 March 2012. He also repeatedly expressed in writing the wish to avoid OPs. Procedural economy and legal certainty for third parties require that an applicant should not be allowed to prevent an ED from carrying out the examination in an efficient manner, for instance by delaying the decision or postponing the OPs (see also R 71(2) EPC 1973 corresponding to R 115(2)). However, the circumstances of the present case are exceptional, because two days before the date of the OPs the ED changed essential facts of the case on which it had relied in the summons to OPs. Attending the OPs would not have changed the fact that, in the present case, the timeframe of one working day was too short for the appellant to get appropriate instructions and to prepare for OPs which now had a new focus. [3.8] Hence, rejecting the appellant’s request for a postponement of the OPs infringed the appellant’s right to be heard. Had the appellant been given sufficient time to react to the new objection, the ED, in dealing with the appellant’s arguments, could have explained the reasons why it was of the opinion that the different references to D4 did not constitute a conflation of prior-art embodiments with the embodiments of the invention and why the schematic drawing of figure 4 in D4 did disclose the arrangement of the components on a common substrate. This exchange of arguments could have avoided the necessity to file an appeal, or would have permitted the board to examine the case in full knowledge of the first instance’s view on the contentious issues. [3.9] As a result the board considers reimbursement of the appeal fee to be equitable by reason of a substantial procedural violation (R 67 EPC 1973). Should you wish to download the whole decision, just click here. The file wrapper can be found here. This decision has also been presented on Le blog du droit européen des brevets (here).
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T 1939/11 – Liquidation
K’s Law – The ebook
T 1939/11 – Liquidation 19 Dez 2013
This opposition appeal contains an interesting passage on the party status of the opponents. [2] An appeal was filed by the joint opponents DF3 SAS and Cosucra Groupe Warcoing. The respondent requested that a decision on the party status of DF3 SAS be taken. As is shown by D68, a copy of a judgement of the Tribunal de Commerce d’Amiens, insolvency proceedings (procédure de Liquidation Judiciare [sic] Normale) were opened against DF3 SAS. According to D68, these proceedings have been pending until 25 October 2013, ie until after the oral proceedings before the present board and until after the decision announced therein. An action taken against the property of an opponent, here une procédure de Liquidation Judiciare [re-sic] Normale under French law against DF3 SAS, does not take away the opponent’s party status (T 696/02 [7.2]) and does not entail an interruption of the proceedings, R 142 covering applicants or patent proprietors only. Therefore DF3 SAS could validly claim the status of an appellant until the announcement of the present decision. I have presented another decision dealing with insolvency some years ago (here). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2532/11 – An Insufficient Link
K’s Law – The ebook
T 2532/11 – An Insufficient Link 18 Dez 2013
This is a revocation appeal. Rather than dealing with the decision as such, the patent proprietor chose to file a statement of grounds consisting of several requests and an explanation why they were thought to be novel and inventive. The Board was not satisfied: The statement of grounds of appeal The legal framework [2.1.1] For an appeal to be admissible, it has to comply with the requirements of A 108, R 99(2) and R 101(1). A 108, third sentence, requires that: “Within four months of notification of the decision, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations.” R 99(2) provides that “In the statement of grounds of appeal the appellants shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended and the facts and evidence on which the appeal is based”. R 101(1) provides that “If the appeal does not comply with A 106 to A 108, R 97 or R 99, paragraph 1(b) or (c) or paragraph 2, the Board of Appeal shall reject it as inadmissible”. [2.1.2] As to the content of the statement of grounds, Article 12(2) RPBA requires that: “The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld and should specify expressly all the facts, arguments and evidence relied on.” The case law [2.2.1] The case law of the Boards of Appeal has consistently considered it to be incumbent on an appellant, in order to meet the admissibility requirements, to explain in detail why it considers the decision under appeal to be wrong, be it entirely or in part, thus imposing a direct and clear link between the contested decision and the grounds for appeal. [2.2.2] In decisions G 9/91 and G 10/91 [18] the Enlarged Board of Appeal (EBA) held that “The purpose of the appeal procedure is mainly to give the losing party the possibility of challenging the decision of the Opposition Division on its merits”. In the French version: “… de contester le bien-fondé de la décision.” In the German version: “ … die Entscheidung sachlich anzufechten.” The same wording was used in decisions G 4/93 [5] and G 1/99 [6.1]. It is thus clear that the appeal proceedings aim at contesting a decision. [2.2.3] In decision G 1/99 [6.1] the EBA further pointed out that: “Indeed, issues outside the subject-matter of the decision under appeal are not part of the appeal.” and that “… within the limits of what in the subject-matter of the decision under 40 | 3398
T 2532/11 – An Insufficient Link
K’s Law – The ebook
appeal adversely affects it, it is the appellant who in the notice of appeal determines the extent to which amendment or cancellation of the decision under appeal is requested.” (emphasis added by the board). [2.2.4] It follows from this that the appeal proceedings are confined to the subject-matter of the first instance proceedings and therefore that the statement of grounds of appeal should at least discuss this subject-matter. The need for the above-mentioned link (see point [2.2.1]) is thus not only confirmed but also clarified in terms of its closeness. [2.2.5] The case law further defines the content of the statement of grounds of appeal in such a way that it must specify the legal or factual reasons why the impugned decision should be set aside. The arguments must be clearly and concisely presented to enable the board (and the other party) to understand immediately why the decision is alleged to be incorrect, and on which facts the appellant bases its arguments, without first having to make investigations on their own (see in particular the decisions T 220/83, T 213/85, T 145/88, T 169/89 and T 1581/08. [2.2.6] Moreover, it is also established case law that grounds sufficient for the admissibility of an appeal must be analysed in detail vis-à-vis the main reasons given for the contested decision (see T 213/85; T 169/89; T 45/92 and T 570/07). [2.3] The present case in view of the cited case law [2.3.1] In the present case, the appellants submitted on 27 December 2011 a document entitled “Statement of Grounds of Appeal”. It can however be clearly seen that these submissions do not contain any reference to the impugned decision, let alone any explanation as to why this decision should be wrong and thus be set aside. [2.3.2] The board understands from the content of said statement that the appellants do not contest the finding of the Opposition Division (OD) as to:
the lack of novelty of the main request over D1d; the lack of novelty of the third auxiliary request over D4; the lack of compliance with R 80 of the second and fourth auxiliary requests; the reasons for the late-filing of the first auxiliary request.
[2.3.3] Thus, none of the main grounds for revocation of the patent presented in the impugned decision was addressed in the statement of grounds of appeal. Therefore, by applying the above cited case law, it should be concluded that the appeal has to be rejected as inadmissible for lack of compliance with the above-mentioned provisions of the EPC. Newly filed requests [2.4.1] The question arises whether newly filed requests can be seen as implicitgrounds of appeal, or in other words, whether there is a link between the decision and the grounds. [2.4.2] A statement of grounds of appeal supported by amended claims may define, at least implicitly, the extent to which the appellant wishes the decision under appeal to be set aside. The issue however is whether the grounds are understandable and sufficiently linked to the contested decision in order to form an admissible appeal. [2.4.3] The board is aware of a substantial body of case law where the sufficiency of the grounds was examined for the question of admissibility in relation to the filing of new claims. There are several decisions in which a relatively lenient position was adopted towards the appellants, in the sense that the appeals were deemed to be admissible if the competent board was able to infer from the particulars of the case the presumed intentions of the appellant and the probable reasons underlying its actions, see in particular decisions T 162/97 [1.1.2]; T 574/91[1.2]; T 729/90 [1.2]; T 563/91 [1.2]. 41 | 3398
T 2532/11 – An Insufficient Link
K’s Law – The ebook
In an even broader interpretation, it was held that an appeal was sufficiently substantiated and that the requirements of A 108, third sentence were satisfied, even though the board did not state any specific reasons why the contested decision was wrong. The reasoning was that
there was a change in the subject of the proceedings due to the filing of new claims together with the statement of grounds; and that the statement of grounds set out in detail why the raised grounds for opposition did not prejudice the maintenance of the patent as amended on the basis of these new claims (cf. in particular T 717/01 [2]; T 934/02 [2], referring to J xx/87[1.4] and T 105/87).
[2.4.4] In the board’s view, it is certainly arguable that appeals should be decided primarily on their substance, and that parties should be given the possibility to argue their case without overly strict formal requirements. However, procedural principles have to be considered. The principle of free disposition [2.5.1] Even assuming that laborious sequences of exercises would tell the reader what the appellant’s case against the decision might be, such conjecture is exactly what the statement of appeal is designed to prevent: the purpose of the statement of grounds, together with the notice of appeal is to define the scope of the appeal. This definition lies within the discretion of the appellants as a part of the principle of free disposition. [2.5.2] Without prejudice to provisions of A 114, which are of limited application in opposition proceedings, the board of appeal has the duty to assess whether the appeal is well-founded within the frame of the case as presented by the appellants but it cannot guess what the arguments are, let alone, provide arguments in lieu of the appellants. The power of the board of appeal [2.6.1] Conversely, the principle of free disposition does not extend to such a point that it should allow the appellants to build a new case, disconnected from the case as it stood during the first instance proceedings, so as to render the decision under appeal purposeless. The EPC’s provisions do not give the appellants the power to set aside the decision under appeal of its own volition, which would obviously be the case if it had the opportunity to modify its requests beyond the subject-matter of the first instance proceedings. In other words, the power conferred by A 21(1) to the boards of appeal to review decisions shall not be transferred to the appellants. In the same way, decision T 240/04 [16.3] already stated as regards new claims not sufficiently connected to the subject-matter of the one previously filed: “In einer solchen Situation den neuen Antrag zuzulassen würde einem Patentinhaber praktisch die Möglichkeit geben, nach Belieben eine Zurückverweisung an die Erstinstanz zu erzwingen. Dies würde den Einsprechenden benachteiligen und wäre auch nicht verfahrensökonomisch.“ Although the present issue relates to the admissibility of the appeal and not to the admissibility of new requests, the obligation to contest the decision of the first instance remains. Whether the appeal is only supported by new sets of claims or the decision under review has not been contested in the appeal proceedings, the end effect is the same: the board and the respondent in the first place are facing a new case which leads to the issue of remittal, in order to ensure a double degree of jurisdiction. [2.6.2] In regard of all these considerations above, the present board is of the opinion that a direct link must be maintained between the decision under appeal and the statement of grounds of appeal. The appellant cannot escape its obligation to explain why it does not agree with the decision, be it only in part. The appellant is not correct in its view, because the very nature of appeal proceedings is and remains the contestation of a decision. This does not mean that the appellant shall be denied the right to file amended claims, but it must provide arguments in order to explain what is/are the issue(s) in the decision it considers to be erroneous and provide arguments and evidence to support its view. The amendments made to the claims in order to remove the grounds of the decision under appeal constitute an implicit acceptance of the decision and therefore cannot be regarded as grounds for appeal in the sense of A 108, second sentence EPC.
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T 2532/11 – An Insufficient Link
K’s Law – The ebook
The requests of the present case [2.7.1] In the present case, as the appellant confirmed in its latest submissions, the reasons for filing a modified main request and five auxiliary requests were based on the assumption that the decision of the OD was right in its findings that the opposed patent as granted and as modified in the course of first instance proceedings was not novel over D1 and D4, or as regards auxiliary requests 1, 2 and 4, that these requests were not formally admissible. The aim of the present appeal is thus to gain an opportunity to get the patent maintained in amended form through new claims making the revoked patent compliant with the reasons given by the OD, or through the introduction of new features thus forming different embodiments of the alleged invention which were never discussed before regarding their compliance with the requirements of the EPC. [2.7.2] Accordingly, even when considering the issue of admissibility in the light of the less strict case law, the board considers that the statement of grounds of appeal in the present case does not comply with the above mentioned legal provisions of the EPC. [2.7.3] Consequently, the appeal must be rejected as inadmissible. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1510/09 – Possible Origin
K’s Law – The ebook
T 1510/09 – Possible Origin 17 Dez 2013
In this revocation appeal claim 1 of the auxiliary request was directed at “screw caps that can be manufactured (susceptible d’être fabriquée) by injection” of a certain polyethylene composition. The opponent raised a clarity objection. *** Translation of the French original *** [8] The expression “that can be obtained by” (susceptible d’être obtenue par) is common in claim drafting. Its purpose is to remove any ambiguity regarding the nature of the object that is to be protected. The expression “that can” (susceptible) means that the object necessarily has to have all the features resulting from that specific method without limiting the protection to the products obtained by such a method only. Thus the objection under A 84 is unfounded. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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K’s Law – The ebook
Changes Ahead
Changes Ahead 16 Dez 2013
As some of you already know, I have very recently been appointed technical member of a Board of appeal. This is both a great honour and an enormous pleasure to me. I wish to thank all of you who have sent their congratulations by e-mail or via the blog. Obviously, this appointment means that I can no longer be an EPC case law blogger. Does this mean that the blog will come to an end? Not necessarily. Perhaps some reader(s) would like to continue the work. If so, please let me now by sending me an e-mail (oliver.randl[@]gmail.com). I have three remarks in this respect: First, I think it would be more reasonable to have a team of bloggers rather than a single person. A onedecision-per-day blog is a heavy workload. I am quite a bête de somme and I think that more reasonable people would want to carry a lighter burden. Secondly, I have to warn you that this work is relatively unrewarding. You will have trouble (the blog even brought me before the disciplinary instances of the epi once) and not much gratification other than some new friends all over Europe (some of which will remain pseudonymous) and the certainty that wherever you go in patent circles some nice fellow will come and tell you that (s)he enjoys the blog. So if you want to do this work, it should be out of love for the case law and the desire to be of service. Thirdly, I would recommend that rather than pursuing K’s Law you start your own blog. This would free you from all the constraints that come from an existing structure. For instance, you might want to abandon the graphical design and have a bright background rather than a black one; this would involve a tremendous amount of work on K’s Law if you intended to maintain the previous 1300+ posts, which would become more or less unreadable on a bright background. So I think it would be wiser to start a new blog and send me the URL, so that I can inform the K’s Law readers about the new offer. If no one comes forward, then the blog will indeed become inactive in a few weeks. All in all, it was quite a pleasure to serve you. I hope that the blog will have made some of you discover the joys of studying the case law. Keep readin’. Cheers oliver
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T 2091/11 – Considering The Context
K’s Law – The ebook
T 2091/11 – Considering The Context 16 Dez 2013
This is an examination appeal. The Examining Division (ED) refused the application on the grounds of lack of clarity and insufficient disclosure. Claim 1 of the main request read:
Method of setting Reverse Link Channel Quality Indicator (CQI) Reporting Modes in an access terminal in a wireless communication system, characterized by:
determining a value for CQIReportingMode; and setting reporting modes of the access terminal based on CQIReportingMode value.
In what follows the Board deals with the clarity objection: [2.1.1] The ED held that the application did not meet the requirements of A 84, since the term “CQIReportingMode” used in claim 1 was vague and ambiguous and did not allow the skilled person to understand the limitations that this term introduced in the scope of the claims. This also applied to the terms “Single Code Word CQI Reporting Mode”, “Multiple Code Word CQI Reporting Mode”, and “Single Input and Single Output (SISO) CQI Reporting Mode” used in the dependent claims […]. [2.1.2] The board cannot agree with this finding. It is established case law of the Boards of Appeal that the meaning of the features of a claim should be clear for the person skilled in the art from the wording of the claim alone (see e.g. G 1/04 [6.2]). In this regard, it is worth noting that a patent application (and thus also its claims) is addressed to a skilled reader and that therefore its context has to be taken into account when assessing the clarity of its claims. The present application is addressed to a skilled reader in the field of wireless communication systems […]. From the wording of the claims alone, the reader skilled in that field would understand that
channel quality indicators (CQIs) related to the reverse link of a wireless communication system are to be reported by an access terminal (see preamble of claims 1, 3, and 5); the modes of the access terminal for such reporting are to be set in the access terminal (see preamble of claims 1, 3, and 5); the setting is done based on a particular value for the respective reporting mode, called “CQIReportingMode” (see characterising portion of claims 1, 3, and 5); the possible reporting modes are modes which are called “Single Code Word CQI Reporting Mode”, “Multiple Code Word CQI Reporting Mode”, and “Single Input and Single Output (SISO) CQI Reporting Mode” (see claims 2, 4, and 6).
The board takes the view that the objected term “CQIReportingMode” may only be interpreted by the skilled reader as a mode for reporting channel quality information. That was also the interpretation “guessed” by the ED in the first-instance proceedings […]. But in the end, for whatever reasons, it was not taken into account in the clarity analysis. Hence, the board concludes that the expression “CQIReportingMode” is neither too vague and ambiguous nor renders the limitations of the claimed scope unclear. [2.1.3] Consequently, the subject-matter of the claims, i.e. the matter for which protection is sought, is considered to be sufficiently clear for assessing novelty and inventive step, as implicitly confirmed by the 46 | 3398
T 2091/11 – Considering The Context
K’s Law – The ebook
novelty analysis performed by the ED […], and for establishing the scope of protection sought. For these reasons, the board holds that the present claims are clear within the meaning of A 84. […] [2.3] In conclusion, the grounds for refusal […] are considered to be overcome with regard to the main request. Consequently, the decision under appeal is to be set aside. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1451/10 – Combinations
K’s Law – The ebook
T 1451/10 – Combinations 13 Dez 2013
In T 1511/07 we read: [2.1] According to Claim 1 the weight ratio of the citric and lactic acids to calcium hydroxide is from 1:1 to 5:1. This ratio defines a new sub-range which emerges from a combination of the lower value of the broadest range of from 1:1 to 10:1 with the upper value of the especially preferred range of from 2.5:1 to 5:1 as disclosed in the last two lines at page 3 of the application as filed (represented by the WO-publication). This range was combined with the especially preferred range of 1:2 to 2:1 for the weight ratio of citric to lactic acid disclosed at page 3, lines 30/31 of the WO-publication. Although the selection of explicitly disclosed borderline values defining several (sub)ranges, in order to form a new (narrower) sub range, is not contestable under A 123(2) when the ranges belong to the same list, the combination of an individual range from this list with another individual range emerging from a second list of ranges and relating to a different feature is not considered to be disclosed in the application as filed, unless there is a clear pointer to such a combination. There is, however, no indication in the WO-publication which unambiguously points to the combination of the weight ratio of 1:1 to 5:1 for the citric and lactic acids to the alkaline calcium source with the weight ratio of 1:2 to 2:1 for the citric to lactic acid. The amendment to Claim 1 is therefore an inadmissible combination from two lists and contravenes A 123(2). In the present case, the amendment under consideration was somewhat similar but the outcome was not the same. Claim 1 of the main request (claim 1 as granted ; the amendments with respect to claim 1 as filed are highlighted): A precipitated silica characterized by BET: 350 - 550 m²/g DBP number: 320350 - 400 g/100 g D50: 5 - 15 µm, and tamped density: 20 - 9070 g/l. The opponent raised an objection under A 123(2) and cited T 1511/07.
*** Translation of the German original *** [2.1] Claim 1 of the main request has been amended in a twofold way with respect to claim 1 as originally disclosed: The range of the DBP values was limited from 320-400 g/100g to 350-400 g/100g; simultaneously the range of the tamped density was limited from 20-90 g/l to 20-70 g/l. The DBP value of 350 g/100g and the tamped density value of 70 g/l are disclosed on page 2, lines 13-15 of the originally filed documents, where preferred ranges for the DBP value (350-380 g/100g) and for the tamped density (60-70 g/l) are cited. Thus, in the claim as amended what is claimed is a combination of a general range with the end point of a preferred range. Each of these amendments as such is allowable (see T 1197/03 [3.1] and T 925/98 [2]). However, there is no reference in the originally filed documents to the combination of the ranges that have been amended as above. Thus, the situation appears to correspond to [the situation] that had been found to be inadmissible in view of A 123(2) in T 1511/07 [2.1, last paragraph].
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T 1451/10 – Combinations
K’s Law – The ebook
However, the Board is of the opinion that decision T 1511/07 cannot be applied to the present case, for the following reasons. The application […] on which [this decision] was concerned a metastable complex that was formed by an interaction between calcium hydroxide and a mixture of citric and lactic acid. This originally claimed subject-matter was not characterised by any parameters such as proportions or mixing ratios (Mengenanteile oder Mischungsverhältnisse) of the components. In view of these circumstances the Board in T 1511/07 considered that the amendment of the claim consisting in the introduction of two preferred ranges for the mixing ratios of the lactic and citric acid with respect to each other and with respect to the calcium source […] was admissible, but not the […] combination of two limited ranges of mixing ratios which had not been referred to in the original application. In the present case, however, the claimed subject-matter was already characterised by four parameter ranges, two of which have remained unamended and two of which were limited. Thus there was no new characterisation of subject-matter by means of parameter ranges derived from the application, the combination of which was not found in the original application. […] [2.3] There manifestly is no extension of the scope of protection. [2.4] Thus the main request […] fulfils the requirements of A 123(2) and (3). Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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Interpretational Spotlight: “Half Dried”
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Interpretational Spotlight: “Half Dried” 12 Dez 2013
In this revocation appeal, claim 1 of the main request before the Board read: A production process of a hydrophilic crosslinked polymer, comprising the steps of polymerizing an aqueous solution including a hydrophilic monomer and a crosslinking agent to obtain a hydrogel crosslinked polymer, and drying the hydrogel crosslinked polymer, thus obtaining the hydrophilic polymer, with the step of drying the hydrogel crosslinked polymer comprising the steps of: (i) carrying out a first-step drying of hydrogel crosslinked polymer obtained by the polymerization in a static state to obtain a half-dried product, until it becomes possible to disintegrate an aggregate of the particulate hydrogel crosslinked polymer; then (ii) disintegrating the half-dried product obtained by the first-step drying into a particle size of 20 mm or less; and then (iii)carrying out a second-step drying of the half-dried product having a particle size of 20 mm or less in a stirred state and/or a fluidized state. The Board dealt with the question whether this claim was based on an inadmissible extension: [2] Claim 1 of the main request corresponds to claim 1 as granted, which, apart from the insertion of the term “half-dried”, resulted from a rewording of claim 1 as originally filed. It is not disputed that any difference in meaning between claim 1 as granted and claim 1 as originally filed could only result from the definition that the product resulting from drying step (i) is a “half-dried” product. It is also not disputed that the term “half-dried product” as such is only disclosed in the examples of the application as filed, the details of which are not given in claim 1 as granted. Hence, the question to be answered is whether the introduction of the term “half-dried product” into claim 1 results in technical information that could not be directly and unambiguously derived from the application as filed. In particular whether the introduction of the term “half-dried” amounts to an undue generalization of the disclosure of the examples of the application as filed, as found by the Opposition Division and argued by the [opponents]. [3] Normally, terms used in a claim should be given their ordinary meaning in the context of that claim; in case of unclarity, the disclosure of the patent may be taken into account, ruling out interpretations that are illogical or do not make technical sense. The wording “half-dried” by its nature does not provide an exact quantitative definition of the proportion of water removed after the first drying step, in particular it does not indicate that exactly 50 % of the water has been removed. It rather expresses the general idea that the first drying step leads to a product which is semi-, partly, not fully dried. [4] From the context of claim 1, according to which the boundary between the first drying step (i) and the disintegration step (ii) is defined as the point at which it is possible to disintegrate the aggregate of the hydrogel crosslinked polymer resulting from drying step (i), it is also clear that the above indicated meaning of “halfdried” does not provide any precise restriction on the claimed subject-matter with regard to the proportion of water removed during the first drying step. This view is supported by the disclosure of the invention in the paragraph bridging pages 4 and 5, on page 5, lines 25-27 and in the first paragraph of page 7 of the application as filed. [5] It can be accepted that the amount of water removed until aggregates have formed and can be disintegrated may depend on many factors, in particular on the chemical nature of the polymer and its structure, and therefore will not necessarily be exactly 50% of the water originally present. This is consistent with the information provided in the first full paragraph of page 5 of the original application, according to which the water content of the hydrogel crosslinked polymer subjected to the first drying step usually has a water content in the range of 5080 wt%. It can also be deduced from the information given in the paragraph bridging pages 5 and 6 of the 50 | 3398
Interpretational Spotlight: “Half Dried”
K’s Law – The ebook
application as filed, where it is indicated that hydrogel crosslinked polymers obtained in the course of the first drying step should not have a water content higher than 25 wt.%, as it would result in a difficult disintegration of the polymer particles. [6] The above indicated interpretation of the term “half-dried” is also consistent with the use, on page 5, line 10 of the application as filed, of the expression “in the midway of drying” which describes the point in time in the process of drying when aggregates are formed. It is also in line with the use of that term in the various examples and comparative examples of the application as filed for describing different situations, corresponding to various proportions of water removed after the first drying step, which are all much higher than 50%. [7] It follows from the above that the term “half-dried product” as used in the examples of the application as filed merely expresses the general idea that the first drying step leads to a product that is semi-, partly, or not fully dried, or, in other words, still contains some noteworthy amount of water, and that it is not associated with any specific water content of the polymer. [8] The [opponents’] argument that comparative example 1 of the patent in suit would now fall within the ambit of claim 1, as the term half-dried also allows content of water after the first drying step as high as 20,9 wt%, fails to convince. In view of the use of the same expression “half-dried product” in the examples and comparative example 1 of the application as filed, and the indication in the various passages on pages 5 and 6 cited above of the amounts of water usually present in the hydrogel crosslinked polymer before and after the first drying step, it is already apparent that the very use of the expression “half-dried” in the application as filed is not decisive in determining whether an embodiment falls within the ambit of original claim 1 or not. The decisive point is the formation of aggregates that may be disintegrated, which information was present both in the original claims as well as in the claims as granted, and which is therefore not open to clarity objections as raised by the [opponents]. The method described in comparative example 1 does not qualify as an embodiment of either claim 1 as filed or claim 1 as granted by virtue of the fact that the “half-dried” polymer was not disintegrated and dried according to steps ii) and iii) of present claim 1. [9] It follows from the above that the result of the introduction of the term “half-dried” in claim 1 as originally filed is not a claim 1 as granted that comprises technical information not directly and unambiguously derivable from the application as filed. It does not change the meaning of the claim and it does not allow scope for any interpretation extending beyond the teaching of the application as filed. Decisions T 792/94 and T 1067/02 cited by the [opponents], which concern a situation where the meaning of the claim could be held to have been changed by insertion of an ambiguous feature, are therefore of no relevance for the present case. [10] Hence, the Board comes to the conclusion that the subject-matter of claim 1 as granted, i.e. claim 1 of the present main request, does not extend beyond the content of the application as filed. Should you wish to download the whole decision (T 860/09), just click here. The file wrapper can be found here.
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T 1487/09 – Disruptive Forces
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T 1487/09 – Disruptive Forces 11 Dez 2013
This is an examination appeal. Claim 29 of the main request read: A method of imparting disruptive forces onto a target surface (57), comprising: using a moisture output to dynamically place a first layer of moisture in form of fluid particles and/or mist above a plurality of points of the target surface so that different parts of the first layer of moisture are simultaneously disposed over different ones of the plurality of points; and automatically scanning electromagnetic energy via a scanner relative to the moisture output being attached to a scanning housing of the scanner, the electromagnetic energy being scanned by a motor assembly for scanning an optical fiber of an electromagnetic energy output or by reflectors and focusing optics or dynamically controlled deflectors for scanning collimated or non collimated electromagnetic energy above a plurality of points of the target surface; whereby at least portions of the electromagnetic energy above the plurality of points are at least partly absorbed by the moisture above the plurality of points. The Board found this claim to be unpatentable under A 53(c): [2.1] Independent claim 29 seeks protection for a method for imparting disruptive forces onto a target surface. Although the claim does not explicitly mention the nature of the target surface, the disclosure of the patent application as a whole makes clear that said target surface may include hard and soft tissues which are part of the human or animal body. As some examples of such tissues, inner vital organs of the body such as the heart, the liver, the kidney and the brain are given […]. It follows that the method according to claim 29 encompasses embodiments in which disruptive forces are imparted on such vital organs. Therefore, these embodiments are associated with an invasive step involving a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise. Moreover, paragraphs [0057], [0061] and [0063] for example, explicitly refer to preferred embodiments which involve the delivery of medication to a patient. For these reasons, in accordance with decision G 1/07 [order 1 and 2a; point 4.1], the Board considers that such embodiments are excluded from patentability as methods for treatment of the human or animal body by surgery and therapy pursuant to A 53(c). A claim which comprises a step encompassing such embodiments cannot be left to encompass them. [2.2] As regards the appellant’s argument that claim 29 does not include any feature that constitutes a method step for treatment of a human body by surgery, the Board notes that it is not decisive whether such features are explicitly defined in the claim, as long as the subject-matter of the claim encompasses embodiments which constitute such method steps. In order to establish whether said embodiments are encompassed in the claimed method, not only the wording of the claim is of importance. Rather, the description and the figures are also to be considered. As a matter of fact, the usual practice is that particular embodiments of a claimed invention are only disclosed in detail in the description and drawings. [2.3] Hence, the main request cannot be allowed as it does not comply with A 53(c). The applicant then introduced a disclaimer the wording of which was inspired by G 1/07. Claim 29 of the first auxiliary request read:
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T 1487/09 – Disruptive Forces
K’s Law – The ebook
A method of imparting disruptive forces onto a target surface (57), with the exception of such uses that comprise or encompass an invasive step representing a substantial physical intervention on the body of a human or an animal which requires professional medical expertise to be carried out and which entail a substantial health risk even when carried out with the required professional care and expertise, comprising: using a moisture output to dynamically place a first layer of moisture in form of fluid particles and/or mist above a plurality of points of the target surface so that different parts of the first layer of moisture are simultaneously disposed over different ones of the plurality of points; and automatically scanning electromagnetic energy via a scanner relative to the moisture output being attached to a scanning housing of the scanner and formed as a mist disk, the electromagnetic energy being scanned by a motor assembly for scanning an optical fiber of an electromagnetic energy output or by reflectors and focusing optics or dynamically controlled deflectors for scanning collimated or non collimated electromagnetic energy above a plurality of points of the target surface; whereby at least portions of the electromagnetic energy above the plurality of points are at least partly absorbed by the moisture above the plurality of points. (my emphasis) The Board objected a lack of clarity: [3.1] Compared to claim 29 of the main request, claim 29 of auxiliary request I comprises a disclaimer aiming at excluding uses that “comprise or encompass an invasive step representing a substantial physical intervention on the body of a human or an animal which requires professional medical expertise to be carried out and which entail a substantial health risk even when carried out with the required professional care and expertise.” [3.2] However, the uses excluded are not explicitly defined, but rather must be derived from a condition which is to be fulfilled. Whether this condition is fulfilled or not would have to be established by the reader of the claim. In particular, it would be left to the reader’s own evaluation to establish whether a particular use potentially falling within the scope of the claim was thus excluded. This evaluation contains several subjective aspects, such as establishing whether the physical intervention and the health risk are to be considered “substantial”. Leaving room for such an assessment by the reader inevitably introduces uncertainty as to the matter for which protection is sought. Hence a lack of clarity arises, which is in breach of A 84. Moreover, it is not clear how suitable the wording of the disclaimer is for excluding the embodiments relating to therapy as described in paragraphs [0057], [0061] and [0063]. [3.3] The Board can follow the appellant’s arguments regarding the introduction of a disclaimer in view of decision G 1/03. In particular, it is accepted that in the present case introducing a disclaimer for excluding subject-matter which would not be patentable under A 53(c) may not contravene A123(2). However, as also affirmed in said decision G 1/03 [3] and in decision G 1/07 [point 2b of the order], all the requirements of the EPC have to be considered when examining said disclaimer, in particular those of A 84. The fact that the wording chosen for the disclaimer is the same as the one used in decision G 1/07 for describing a surgical method does not mean that the claim fulfils the clarity requirements of A 84. In decision G 1/07 said wording is used in the general context of the explanation that if a method in which maintaining the life and health of a subject is important and which comprises or encompasses an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise, then said method is of surgical character for the purposes of A 53(c). Consequently, an acceptable disclaimer would have to exclude all methods fulfilling this condition. However, why this is the case for a specific method should objectively be clear from the wording of the disclaimer. In the present case, simply introducing the condition in the disclaimer does not enable the reader to objectively assess whether said condition is fulfilled or not. As a matter of fact, the difficulty often involved in this assessment is also explicitly mentioned in decision G 1/07 itself: under point [3.4.2.6] of the Reasons it is stated that “in many situations it will not be an easy task to determine whether or not an invasive step constituting a substantial physical intervention on the body comprised or encompassed by a claim requires professional medical skills to be carried
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T 1487/09 – Disruptive Forces
K’s Law – The ebook
out and involves a substantial health risk even when carried out with the required care and expertise [ and ...] such a criterion could be expected to be handled on a case-by-case basis [...].” A similar situation may occur when a disclaimer aiming at establishing novelty over subject-matter of a conflicting application under A 54(3) is to be introduced. If the disclaimer merely comprised general wording mentioning the conflicting application (e.g. “except what is already known from European application No. [...]”), without explicitly and precisely excluding the features anticipated by the conflicting application, then a lack of clarity could also arise. As regards the reference to the filed application allegedly making clear that the claimed method was not intended to encompass uses on “problematic” soft tissues of a human or animal body, the Board is firstly of the opinion that, in general, the claims should be clear in themselves. Moreover, no clear distinction between “problematic” or non-problematic tissues can be found in the filed application. As a result, not even the content of the application as a whole gives assistance in interpreting the disclaimer. [3.4] Hence, auxiliary request I cannot be allowed as it does not comply with A 84. The applicant finally overcame the objections by filing a request containing only apparatus claims. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2134/12 – Just Keep It
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T 2134/12 – Just Keep It 10 Dez 2013
In this case the Examining Division (ED) granted interlocutory revision and then sent the case to the Board of appeal for a decision on reimbursement of the appeal fee. So far so good. There was only one problem – the appellant had never asked to be reimbursed. *** Translation of the German original *** [1] Pursuant to R 103(2) the department whose decision is impugned shall order the reimbursement if it revises its decision and considers reimbursement equitable by reason of a substantial procedural violation. In all other cases, matters of reimbursement shall be decided by the Board of appeal. [2] R 103(2) codifies the case law of the Legal Board of appeal (J 32/95) in respect of R 67 EPC 1973 (see explanations to the Implementing Regulations, Special edition n°1, OJ EPO 1999, 713). This case law has been confirmed by the Enlarged Board of appeal in its decision G 3/03. Accordingly, the first instance department which revises its decision has to examine whether the conditions for a reimbursement of the appeal fee have been satisfied, irrespective of whether the appellant has indeed made such a request. If the department reaches the conclusion that the conditions for a reimbursement have not been satisfied, it cannot order the reimbursement of the appeal fee and it does not have to deal with the question of reimbursement of the appeal fee in its decision pursuant to A 109(1). According to the case law the appellant is not adversely affected by such a decision (G 3/03 [3]). If reimbursement has been requested, then the department considering that the conditions for reimbursement have not been satisfied is not entitled to dismiss the request. Rather, it has to remit the request to the Boards of appeal (G 3/03 [3.4, 4]). [3] In the present case neither the notice of appeal dated July 11, 2012, nor the statement of grounds of appeal dated August 8, 2012, contain a request for reimbursement of the appeal fee. Nor does the file contain anything indicating that such a request was made at a later stage. According to the case law cited above the ED, therefore, should not have remitted the case to the Board in order to have a decision on the reimbursement of the appeal fee. Pursuant to R 103(2) the ED was indeed obliged to examine whether it considered the requirements for a reimbursement of the appeal fee to have been met. As the ED denied this and as there had not been any request for reimbursement, there was no need for a corresponding statement in the communication dated October 5, 2012. However, the deficient statement in the communication cannot be understood to be a decision refusing [reimbursement], because the ED was not entitled to decide [on that matter]. Once the decision had been revised by the ED, and as a consequence of the fact that no request for reimbursement had been filed together with the appeal, there was no pending matter (verfahrensanhängiger Gegenstand) on which the Board had to take a separate decision (cf. T 242/05 [2.1-3]). The decision having been revised on July 11, 2012, the appeal proceedings were no longer pending (T 242/05 [2.3]). Consequently the remittal to the Board which had been ordered by the ED on October 1, 2012, in order to have a decision on the reimbursement of the appeal fee is not based on a procedural matter (Verfahrensgegenstand) which could have been entrusted to the Board. In view of these facts the Board has to order a remittal of the case to the remitting ED (see in this context T 242/05 [2.3-4] and T 1703/12 [3,4]; although in the present case the ED does not have to decide on the admissibility of a request for reimbursement of the appeal fee that had been filed after the revision of the appealed decision, the termination of the grant proceedings is within the competence of the ED). […] The case is remitted to the first instance. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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R 15/13 – An Angry Man
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R 15/13 – An Angry Man 9 Dez 2013
This petition for review deals with one of those cases where emotions run high during the oral proceedings (OPs). The professional representative of the patent proprietor, whose patent had been revoked by Board 3.5.03 (case T 2198/10), had the very bad idea of using very strong language in the petition. In the course of the proceedings, the patent proprietor dissociated itself from the “inappropriate or defamatory comments” made in the petition. The representative then apologised in a letter and confirmed the apology in the OPs before the Enlarged Board (EBA). The petition was found to be clearly unallowable. The decision contains an interesting paragraph dealing with the emotional style of the petition, and possible consequences as to its admissibility. [4] It appears to the EBA that the petition was filed within two months of notification of the decision in question, that the petitioner was adversely affected thereby, that the prescribed fee has been paid in time, and that the petition complies with R 107(1)(b). [5] As regards R 106, the EBA notes that the petitioner argued, as regards the alleged fundamental procedural violations to which it ultimately confined its case, that it could not make an objection under R 106 because it only knew of the violations on reading the written decision. That argument is called into question by the petitioner's own letter of 15 April 2013 […] in which Dr. V. makes allegations about the reasons for the decision (and the partiality of the Board of Appeal) even before the written decision was issued. However, since the petition is in any event clearly unallowable, this matter need not be decided. [6] The petition was written in a highly emotive style and included a large volume of derogatory language, much of which (for example, “fabricating the decision”, “partiality”, “stolen patent”, “jealousy and outright bad faith”, “aggressive and corrupt”, and “fraud”) was excessive and without apparent basis in the petition. The EBA considered accordingly whether the petition was “in a reasoned statement” as required by A 112a(4). However, in view of Dr. V’s apology (in his representative’s letter of 18 September 2013) for his use of such language and the actual withdrawal of the offensive allegations at the commencement of the OPs, the EBA did not pursue this further. [7] Accordingly, the EBA does not find that the petition is clearly inadmissible. When you have to let off steam, don’t do it in a petition. Buy a punching ball, the use of which will not leave traces in the patent register and in the minds of the judges. And you will not have to apologise afterwards. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 215/11 – Propagation Of Error
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T 215/11 – Propagation Of Error 6 Dez 2013
In this case the Opposition Division had revoked the patent under consideration on the ground of insufficiency of disclosure. The case is interesting because page 6 of the application as filed (which was also present in the Druckexemplar) was omitted in the patent as published; this missing page was decisive for the question of sufficiency. The patent proprietor requested the reinsertion of the page; the opponent objected and pointed out that this would lead to a violation of A 123(3). The Board accepted the reinsertion. What makes the decision particularly spicy is that after having announced its decision, the Board discovered that the Druckexemplar indeed contained the page, which obviously changes the legal situation. [2.1] The [patent proprietor] had requested reinstatement initially as a correction of the decision to grant under R 140, then as an amendment to the patent under A 123 in view of G 1/10 [13]. The Board held this amendment to be a fair attempt to overcome the objection of insufficiency of disclosure raised by the respondent during the opposition procedure, R 80 EPC 1973. That objection had been based on the absence in the patent specification of information appearing on page 6 of the description as filed. Taking into account the fact that in principle amendments of the specification may affect the scope of the patent, A 69, the Board examined the scope of protection of the patent with and without the missing page and found that the restored additional information from page 6 as filed, lines 1 to 10, would at most result in a narrower interpretation of claim 1 as regards the required data collected by or held in, respectively, the second computer. It furthermore found that this same data was also mentioned in the context of the second computers under paragraph [0005] of the patent. That said, it is simply not apparent to the Board why the re-insertion of the missing page would create any new subject-matter which the skilled person would not have considered to fall under the scope of protection when interpreting the patent in its unamended form. Therefore, the Board concluded that the reinstatement of missing description page 6 did not extend the scope of protection contrary to A 123(3). [2.2] The Board notes, by way of obiter dictum, that following the announcement of the decision during the oral proceedings (OPs) the Board has become aware that missing page 6 was in fact originally included in the text of the description on which the examining division based its decision to grant: see the “Druckexemplar” attached to the communication under R 51(4) EPC 1973, dated 14 September 2000. Page 6 was thus erroneously omitted from the “Druckexemplar” by the EPO upon publication of the specification of the European patent. The correct procedure for dealing with errors of this kind is outlined in EPC Guidelines, H-VI 3 (September 2013), where it is also stated that errors of this kind can be corrected at any time, and the Board sees no reason to disagree. Correction is then effected by way of a corrigendum or reprint of the entire specification, see EPC Guidelines C-V 10 (September 2013), last paragraph. As indicated there only the text on which the decision to grant the patent is based is decisive, i.e. that text is legally binding as regards existence and scope of the patent. As the Druckexemplar did in fact include page 6, and this was the legally binding text, the objections raised by the respondent-opponent under A 100(b) and A 123(3), based solely on the missing page 6, the appellant proprietor’s requests for correction under R 140 or amendment, as well as the ensuing discussion during the OPs before the Board concerning A 123(3)) and the Board’s finding above were from a substantive point of view legally unfounded (not having considered the totality of the relevant facts) and obviously unnecessary. However, notwithstanding this deficiency, that final decision by the Board has not lead to a different outcome of the appeal than if a corrigendum had been issued, nor has it resulted in any adverse effect or some other unwarranted loss of rights of either party. 57 | 3398
T 215/11 – Propagation Of Error
K’s Law – The ebook
Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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K’s Law – The ebook
T 1404/10 - Equilibrium
T 1404/10 - Equilibrium 5 Dez 2013
In this decision (on an appeal against the rejection of an opposition) Board 3.2.01 also had to deal with a request for apportionment of costs. The reason was that during the oral proceedings held on April 26, 2013, the patent proprietor questioned the identity of the opponent. As a consequence the OPs had been adjourned. *** Translation of the German original *** [7.1] The [opponent] requested that the [patent proprietor] should bear the hotel and travel costs for the head of the opponent’s […] patent department, which had been incurred as a consequence of the OPs being summoned afresh. [7.2] In the present case the [patent proprietor] waited until the OPs before it expressed its doubts regarding the identity of the […] opponent, which made it necessary to summon new OPs. The [patent proprietor] admitted that it was already aware of the transfer of the relevant business four days before the date on which the OPs were to be held. On the other hand, the [opponent] admitted that it had forgotten to declare the transfer of the business. However, a transfer of the party status in the course of the proceedings can only be effective when the Board has been requested before the Board to register the legal succession and when the corresponding evidence has been filed (see T 19/97 [5]) – something that could only be done by the [opponent]. [7.3] Pursuant to A 104(1) EPC 1973 each party to the opposition proceedings shall meet the costs it has incurred unless a different apportionment of costs is ordered “for reasons of equity”. According to the case law of the Boards of appeal the requirement of equity is met when the behaviour of a party does not comply with the due care it may be expected to show. The Board is of the opinion that in the present case – as explained under point [7.2] above – both parties were partly responsible for the situation where a new date for OPs had to be fixed. In particular, the Board cannot see any intentional abuse of proceedings, so that there are no reasons of equity that make it necessary to order a different apportionment of costs under A 104(1) EPC 1973 in favour of the [opponent]. Therefore, the request for apportionment of costs is not granted. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1440/09 – Unaware
K’s Law – The ebook
T 1440/09 – Unaware 4 Dez 2013
In this examination appeal the applicant contested the public availability of document D1. [2.1] The appellant did not contest that D1 had been on the internet before the earliest priority date of the present application (19 October 2005) at the URL indicated in the European search report. Moreover, the appellant did not contest that D1 is a contribution submitted to the Joint Video Team (JVT) for its 15th meeting in Busan, KR, which took place from 16 - 22 April 2005, several months before the above earliest priority date. Furthermore, the board notes that none of the documents on file indicates that contributions to JVT meetings are to be kept confidential even after the meeting in question. [2.2] The appellant however argued that D1 may have been confidential at the priority date of the present application, in view of the “JVT Patent Disclosure Form” which indicated that the submitter of D1 was “not aware of having any granted, pending, or planned patents associated with the technical content of the Recommendation | Standard or Contribution” (emphasis by the board) and in view of the fact that the present application had been filed by the submitter after the submission of D1 to JVT. This argument seems to be based on the understanding that one purpose of the “JVT Patent Disclosure Form” was to protect the submitter from its contribution to the JVT meeting being held against its own later patent application. [2.3] The “JVT Patent Disclosure Form” on pages 9 to 12 of D1 is a standard, preprinted form appended to the submitter’s contribution. It provides the JVT with information about the patent status of techniques used in or proposed for incorporation in a recommendation or standard. JVT requires that all technical contributions be accompanied by this form. The intent is that the JVT experts should know in advance of any patent issues with particular proposals or techniques, so that these may be addressed well before final approval. The information is maintained in a “living list” by JVT during the progress of their work, on a best effort basis. The form is not a binding legal document; it is provided to JVT for information only […]. The patent issues may concern patents of the submitting organisation or person […] or of a third party […]. [2.4] The standard, preprinted “JVT Patent Disclosure Form” does not comprise any explicit indication that the technical contribution of the paper it accompanies should be kept confidential. [2.4.1] Furthermore, in the case of D1 it is not even clear if an initially blank “JVT Patent Disclosure Form” has been completed at all, since the details concerning the submitting organisation are missing on page 10 of D1. The only box of the “JVT Patent Disclosure Form” which has apparently been ticked by the submitter is point 2.2, according to which the submitter (namely the patent holder of the granted, pending, or planned patents) is prepared to grant a licence under certain circumstances. However, any corresponding information as to the patent number(s) or status, and the inventor(s)/assignee(s) of the granted, pending, or planned patents is missing. Nor did the appellant contend that a corresponding disclosure form existed which had been filled in with information from which the appellant derived its argument of confidentiality. Thus there is no indication that the “JVT Patent Disclosure Form” in D1 relates to any specific patent application or patent or in particular to the present patent application. [2.5] The mere fact that the submitter of contribution D1 might have ticked the box that it was “not aware of any granted, pending or planned patents associated with the technical content of the Recommendation | Standard or Contribution” in point 2.0 of the “JVT Patent Disclosure Form” does not imply that the contribution D1 was to be kept confidential by any person to whom it was available. [2.6] In view of the above the appellant’s arguments did not convince the board, and thus the board finds that D1 constitutes prior art under A 54(2) EPC 1973 for the present application. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 239/11 – How To Deal With The Absence ...
K’s Law – The ebook
T 239/11 – How To Deal With The Absence ... 3 Dez 2013
This decision on an examination appeal is not very exciting but it offers us the opportunity of seeing a case where the Board applied G 2/10 after having construed the claims to comprise a disclaimer. Claim 1 of the main request on file read: A multi-zonal monofocal intraocular lens (60) having an optic (62) with two discrete concentric optical zones (70, 72) centered on the optical axis (OA), the zones adapted to focus incoming light rays to form an image from an object, comprising: a first lens surface (68a); and a second lens surface (68b) disposed opposite the first lens surface; the first lens surface (68a) comprising: a first zone (70) overlapping the optical axis of the lens for producing an image when the intraocular lens is centered on the optical axis of the human eye; and a second zone (72) concentric about the first zone, wherein the first zone comprises a spherical surface and the second zone comprises an aspherical surface, the zones being configured to focus light entering the zones from a distant point source to substantially a single point such that the light substantially falls within the range of the depthof-focus of a spherical lens having an equivalent focal length. [2.1] Claim 1 of all pending requests defines a multi-zonal monofocal IOL having a first lens surface comprising a first zone with a spherical surface and a second zone with an aspherical surface. The application as originally filed does not comprise any claim relating to a multi-zonal monofocal IOL of this type.
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As pointed out by the appellant, a basis for such an IOL could be found almost literally in paragraph [0068] under item 12 in combination with item 19. In this paragraph, the second zone of the IOL is defined as being “adapted to compensate for optical aberrations in the image resulting from implanted intraocular lens decentration of greater than at least about 0.1 mm” (Feature A). However, claim 1 according to the Main Request or according to the First or Second Auxiliary Requests (second alternative) does not comprise this feature. Thus it needs to be established, whether a multi-zonal monofocal IOL comprising two zones, whereby the second zone does not have the properties of Feature A can be derived directly and unambiguously, using common general knowledge, from the application as filed (G 2/10 [4.5.1]). [2.2] The only disclosure in the application as filed relating explicitly to an IOL with a first lens surface comprising only two zones is in paragraph [0068] (items 12 to 19) and in paragraphs [0017] and [0018]. [2.2.1] Paragraph [0068], items 12 to 19 discloses an IOL comprising Feature A and nothing suggests to the skilled person that the first surrounding zone may in fact not have the properties of Feature A. Moreover, paragraph [0017] (last sentence) clearly states that the first surrounding zone (which corresponds to the “second zone”) “is” adapted to compensate for aberrations resulting from IOL decentration, i.e. that it has to show the properties of Feature A. It is true that the first sentence of paragraph [0018] – which refers to the same aspects of the invention as paragraph [0017] – states that the first surrounding zone “may be” configured to compensate for aberrations resulting from IOL decentration. However, since the two sentences contradict each other, the first sentence of paragraph [0018] cannot be considered clear and unambiguous information that Feature A was only facultative in the inventive IOL. The situation remains the same when considering the second sentence of paragraph [0018]. The appellant argued that in the present context the word “also” had the meaning of “alternatively” rather than of “in addition to”. Therefore, the IOL could be adapted to either compensate for lens decentration or tilt. Even accepting this interpretation, the second sentence of paragraph [0018] remains in contradiction with the last sentence of paragraph [0017] which requires the IOL to be adapted to compensate for lens decentration. Due to this contradiction, these paragraphs do not disclose clearly and unambiguously that Feature A is a facultative property of the first surrounding zone. [2.2.2] Furthermore, if – as in the Main Request – Feature A is omitted, the second zone is only defined as “comprising an aspherical surface”, “concentric about the first zone”, “the zones being configured to focus light entering the zones from a distant point source to substantially a single point such that the light substantially falls within the range of the depth-of-focus of a spherical lens having an equivalent focal length.” These remaining features do not define a lens “less sensitive to non-optimal states such as decentration and tilt of the IOL”. In fact, the remaining functional definition is nothing more than the definition of a “monofocal lens” as given in paragraph [0030] of the description. The aspheric design of the second zone alone does not necessarily result in a lens “less sensitive to nonoptimal states such as decentration and tilt of the IOL”. For example the TECNIS Z9000 monofocal lens – which has an aspheric surface – is explicitly disclosed as particularly “sensitive” to slight errors in decentration or tilt of the lens, especially in lowlight conditions” (paragraph [0013]). Consequently the omission of Feature A means that the very feature indispensable for providing a lens “less sensitive to non-optimal states such as decentration and tilt of the IOL” (paragraph [0014]) is absent from claim 1 of the Main Request. [2.3] The appellant has further pointed to several passages in the description to demonstrate that the correction for non-optimal states achieved by the inventive IOL was not restricted to decentration but in fact may address every non-optimal state of implantation, including in particular errors in tilt. However, none of these disclosures is made in the context of a lens with a first lens surface comprising only two zones. [2.3.1] Paragraphs [0042] and [0043] relate to an IOL having an intermediate zone “at least designed to help correct aberrations of the IOL when it is decentered, tilted or otherwise in a non-optimal state” (paragraph [0042], second sentence). Since the term “intermediate zone” inherently implies the existence of adjacent inner and outer zones, the IOL referred to in paragraph [0042] has to be a lens with a first lens surface comprising three zones. To put it 62 | 3398
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K’s Law – The ebook
differently: an “intermediate zone” inevitably has a clearly recognizable structural relationship with its neighbouring zones. Furthermore, paragraph [0042] explicitly discusses the design and function of the inner and outer zones in relation to the intermediate zone. While the intermediate zone has the function to correct aberrations when the IOL is in a nonoptimal state, it is the outer zone which is designed to minimise the spherical aberrations natural to spherical monofocal IOLs (paragraph [0042], last sentence). In view of the problem posed in paragraph [0014], which formulates a need for a correction for the spherical aberrations as well as for a reduction of the sensitivity to non-optimal states, the intermediate and the outer zones in fact coact to solve the problem posed. Consequently, there is also a clearly recognisable functional relationship between the intermediate zone and the inner and outer zones. This stresses again the fact that paragraphs [0042] and [0043] relate to an IOL with a first lens surface comprising three zones and hence do not disclose an IOL with a first lens zone comprising two zones only, with a second zone adapted to correct for a non-optimal state without correcting for lens decentration. It also shows that it is not justified to extract the feature of an intermediate zone being adapted to compensate for a non-optimal state other then lens decentration from its originally disclosed context, i.e. by omitting the third zone from the disclosed three zone IOL. Consequently, said extracted feature cannot replace feature A in the disclosure of paragraphs [0068] (items 12 to 19), [0017] and [0018]. The subject-matter defined in claim 1 of the First and Second Auxiliary Requests thus amounts to an intermediate generalization. The appellant argued that the second zone claimed could comprise a first, inner part adapted to correct for aberrations resulting from non-optimal states and a second, outer part adapted to correct for spherical aberrations, such a lens solving the problem posed without a third outer zone being required. However, such an interpretation of the claim language is not in line with the use of the word “zone” throughout the application: a zone is defined by its predominant function; thus an outer part of the second zone having a different predominant functionality would be called a third zone (which is missing from the claim). [2.3.2] Nor can the above analysis be changed by taking into account the third sentence in paragraph [0050], which states that there are “preferably at least three zones (i>=3) to achieve enhanced performance for a 6 mm diameter pupil size”. The appellant reasoned that the feature “preferably at least three”, in the context of a multi-zonal lens (i.e. a lens having at least two zones), implicitly disclosed a lens having two zones. Firstly, this reasoning could only apply to the particular situation in which enhanced performance for a 6 mm diameter pupil size is to be achieved. However, the independent claims of the pending requests are not restricted to this particular situation. Secondly, paragraph [0050] refers to the lens shown in Figure 5A (see the first sentence of paragraph [0050]), which is a multi-zonal lens having three zones. The person skilled in the art has no reason to give the term “preferably” so much weight as to omit one of the zones shown in Figure 5A. This is even more so since – as discussed above – the third zone is “designed to minimize the spherical aberrations natural to spherical monofocal IOLs”, i.e. it addresses the first part of the problem underlaying the invention (see paragraph [0014]). Moreover, since the three zones are in close functional and structural relationship, omitting one of them would require a modification of the other features to compensate for the change. [2.3.3] Paragraph [0013] discusses problems arising in the TECNIS prior art IOL, not the IOL of the present invention, and thus cannot be the basis for amending the claim. [2.3.4] Paragraphs [0014], [0032] (first sentence) and [0066] (first sentence) define the problem to be solved by the present invention in general, not wether it is solved by a particular two or three zone IOL. Because of Feature A, the two zone lens is less sensitive to decentration and outperforms the prior art IOLs in a decentered implant position, thus solving the problem posed by the invention. However, paragraphs [0014], [0032] and [0066] do not clearly and unambiguously disclose a two zone IOL which is less sensitive to and provides enhanced performance in a non-optimal state different from decentration. As shown above, being sensitive to and providing enhanced performance for such a non-optimal state (thus also solving the problem posed) is only disclosed in the context of an IOL having three zones. [2.3.5] The first sentence of paragraph [0015] relates to a multi-zonal IOL adapted to reduce aberrations over a range of decentration. Apart from being only a general disclosure, i.e. without any link to a particular two zone or three zone lens design, the only non-optimal state explicitly addressed is “lens decentration”. The same 63 | 3398
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arguments set out under point [2.2.1] above with respect to paragraphs [0017] and [0018] apply to the second sentence of paragraph [0015]. [2.3.6] Paragraphs [0053] and [0054] as well as Figures 6A and 6B illustrate the IOL performance of the multizonal monofocal lens shown in Table 1, i.e. of a three zone IOL. Figure 7 compares the efficiency of three lenses in a Monte Carlo simulation of a clinical population. The very same identifiers as in Figures 6A and 6B have been assigned to these three lenses. It has thus to be concluded from the context that the multi-zonal lens used in the Monte Carlo simulation is the same as the one which was discussed in paragraphs [0053] and [0054], i.e. the IOL shown in Table 1. The randomly selected “over 100 different eyes” used in the Monte Carlo simulation may have had varying conditions of corneal aberrations, IOL decentration and IOL tilt, the efficiency of the IOL defined in Table 1 being determined for each of these eyes and then averaged. However, the only conclusion that can be drawn is that the IOL of Table 1 is not only efficient when decentred by 0.5 mm but also for “averaged” clinical conditions. This does not warrant the conclusion that Feature A may be missing in the lens of Table 1. On the contrary, Figure 6B shows that the multi-zonal lens tested is indeed adapted to compensate for lens decentration of 0.5 mm. Moreover, there is clearly no unambiguous disclosure that paragraph [0055] related to a two zone IOL design. [2.3.7] Paragraphs [0060] to [0065] all relate to methods of designing a three zone lens: paragraph [0059], first sentence, refers to the provision of an optical model of a lens comprising an inner zone, an intermediate zone, an outer zone and zonal design parameters, i.e. the very zonal design parameters to which the sentence in paragraph [0060] refers. Analogous reasoning applies to the disclosure in paragraphs [0019] and [0020], both relating to the same aspect of the invention. [2.4] Therefore, an IOL comprising only two zones and having a second zone which does not have the properties of Feature A presents the skilled person with new technical information which cannot be derived directly and unambiguously, using the common general knowledge, from the application as originally filed. Hence claim 1 according to the Main Request and according to the First and Second Auxiliary Requests do not comply with the requirements of A 123(2). If I understand the situation correctly, the reference to G 2/10 is not really necessary (and perhaps somewhat misleading, because there is no explicit disclaimer) ; the mere application of the “gold standard” would have been enough, I guess. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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R 6/12 – Make Yourself Heard
K’s Law – The ebook
R 6/12 – Make Yourself Heard 2 Dez 2013
In its petition for review the opponent argued that Board 3.2.03 had violated its right to be heard in opposition case T 928/10. The petitioner explained that it had requested a hearing of the witnesses Namensen and Karlsson in its statement of grounds of appeal. In its reply to the summons to oral proceedings (OPs), it had asked for them to be heard as experts – if they were not to be heard as witnesses – on the plausibility of the technical effects invoked by the patent proprietor. During the OPs the petitioner had asked to be allowed to state the reasons for this request. The chairman had replied that this question would be discussed later and had asked the witnesses to wait outside. After the Board had found that the fifth auxiliary request satisfied the requirements of A 123 and A 84, it invited the parties to comment on inventive step. Then the discussions were closed, so that the petitioner had no opportunity to discuss the question of whether the witnesses should be heard.
The Enlarged Board (EBA) explained that the petitioner should have acted differently. *** Translation of the French original *** [1.3.2] Regarding the first alleged procedural violation (according to which the Board of appeal (BoA) has not ordered the hearing of the witnesses and/or experts, Messrs Namensen and Karlsson), it should be noted that the petitioner has acknowledged that the Board, immediately after the discussion of the requirements of A 84 and A 123 related to the fifth auxiliary request and after the chairman of the BoA had announced that this request satisfied those requirements from a formal point of view, has invited the parties to present their arguments concerning the inventive step involved in the subject-matter of this request. Then the chairman has declared that the discussions were closed and the BoA has deliberated. Thus, it was up to the petitioner to indicate, during the discussion of inventive step, that it was necessary to hear Messrs Namensen and Karlssons (sic) as witnesses or as experts, in order to complete its case in this regard. When the chairman of the Board closed the discussions on the fifth auxiliary request, at the latest (NB: “the closure of the discussions” has to be distinguished from “the end of the OPs”), the petitioner should have realised that its corresponding request had been dismissed (expressly or implicitly) by the BoA. Thus the petitioner should have reacted during the discussion of inventive step, between the closure of the discussion and the closure of the OPs at the latest, in order to raise the grievance (soulever le grief) under consideration. [1.3.3] In the course of the OPs before the EBA, the petitioner has explained that it could not have raised an objection pursuant to R 106 because the BoA had already taken a negative decision. It had not been possible to interrupt the chairman of the Board when he announced the decision, which occurred immediately after the reopening of the proceedings, after the final deliberation. This argument is not persuasive because a party that requests a BoA to take a decision in its favour has to participate actively in the proceedings (see R 4/08 (NB: this should read R 2/08) [9.10]) First, the petitioner has admitted, during the OPs before the EBA, that it had not repeated its former request for a hearing of the witnesses/experts before the decision had been announced at the end of the OPs. Moreover, the moment at which the petitioner could have intervened was when the chairman of the Board announced the closure of the discussions for deliberation, i.e. well before the chairman announced the decision. It is at this moment that it should have requested the re-opening of the discussion if it had the intention to require [the BoA] to examine its request for a hearing of the witnesses or experts, respectively, or if it needed these persons to be admitted into the OPs so that they could assist it in its submissions regarding inventive step. Consequently, the petitioner has had the opportunity and, what is more, the duty of drawing the attention of the BoA to these facts and [should have pointed out] that it considered the fact that the Board did not proceed with those requests to be a procedural violation pursuant to A 112a (see R 17/11 [19]). Moreover, the petitioner had been informed via the communication of the BoA dated August 2, 2011 […], which made the petitioner understand that the Board, “in application of Article 12(4) RPBA considers inadmissible the 65 | 3398
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K’s Law – The ebook
new facts, evidence and requests filed with the statement of grounds of appeal, i.e. in particular the declarations and requests for a hearing of additional witnesses (Messrs Karlsson, Larsson, Namensen and Nielsson or Nielsen or Nielssen or Nilsson)”. Thus, the assertion of the petitioner according to which it had been surprised by the fact that the BoA did not order the hearing of the witnesses or experts, respectively, is considered not to be well-founded. To sum up, because it had forgotten to raise the objection of the alleged procedural violation before the BoA had announced its final decision and had declared the OPs closed, the petitioner has not fulfilled the requirement expressed in R 106. Consequently, in application of R 109(2)(a), the petition for review is clearly inadmissible in view of R 106 as far as the first alleged procedural violation is concerned. Should
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T 2075/11 – It’s The Economy, Stupid
K’s Law – The ebook
T 2075/11 – It’s The Economy, Stupid 29 Nov 2013
As far as I can see, there is no clear answer in the case law to the question whether a patent proprietor can revert to the patent as granted in opposition appeal proceedings if it has not requested maintenance as granted before the Opposition Division (OD). In decisions such as T 105/09 and T 755/00 the patent proprietor has been allowed to do so, provided that this behaviour was not the expression of an abuse of procedure. However, nowadays, some (perhaps most) Boards see things differently, as the present decision in a revocation appeal case illustrates. *** Translation of the German original *** [2.2] It is true that pursuant to Article 12(1) RPBA appeal proceedings shall be based on the notice of appeal and the statement of grounds of appeal, but pursuant to paragraph (4) of the same article the Board has the power to hold inadmissible requests which could have been presented in the first instance proceedings, although they comply with the requirements of paragraph (1). There is no doubt that in the present case the claims as granted could have been part of the first instance proceedings. However, the patent proprietor has limited itself during the opposition proceedings and has not pursued the granted version, so that the first instance could not decide on the granted version. [2.3] The factual situation underlying decision T 933/04 cited by the [opponent] is essentially the same as in the present case: the appellant (patent proprietor) also abandoned the granted version during the opposition proceedings and pursued a limited version in order to circumvent an objection of the OD, but during the appeal proceedings it wanted to revert to the granted version. The Board was of the opinion that the patent proprietor had abandoned its right to have a reasoned decision of the OD on the patent as granted. As a consequence, it did not admit the request to maintain the patent as granted. [2.4] Even if the Board would not asses the corresponding behaviour of the [patent proprietor] in the present case as an abandonment of the granted version, the admission of this request that has only been filed during the appeal proceedings contravenes procedural economy. As a matter of fact, if it admitted the request, the Board would have to decide on this request for the first time, which is not in line with its role as a reviewing body (Überprüfungsinstanz), or to remit the case, which would considerably delay the proceedings and increase the costs incurred by the adverse party. As Article 12(4) RPBA has precisely the purpose of avoiding such situations, the Board has not admitted the sole request of the [patent proprietor]. [2.5] The [patent proprietor] has explained that its procedural behaviour during the first instance proceedings had the purpose of accelerating the proceedings because, in view of the opinion of the OD expressed in the summons it thought that it was not appropriate to defend the granted version. However, the Board cannot see how this behavior could accelerate the proceedings. Quite to the contrary, the fact that there is no decision on this request delays the entire first and second instance proceedings. This argument, therefore, cannot prompt the Board to exercise its discretion in another way. [3] As there is no request that is both admissible and agreed upon by the [patent proprietor] (A 113(2)), the appeal has to be dismissed. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here. 67 | 3398
J 2/12 – When Wrong Means Missing
K’s Law – The ebook
J 2/12 – When Wrong Means Missing 28 Nov 2013
This decisions presents us with a complex procedural situation, and a quite liberal interpretation of R 56. The appeal was filed against the decision of the Receiving Section (RS) refusing various requests of the applicant under R 56. The application had been filed on April 18, 2008 with a description, 13 claims and 10 sheets of drawings numbered 1/11 to 10/11, comprising Figures 1 to 10 respectively. The application claimed priority from a Japanese application. On June 23, 2008 the EPO issued a communication under R 56(1) and A 90(1), in which it informed the applicant that “Figure 11”, which was mentioned and described on page 13 of the description, was missing. The applicant was invited to file the missing Figure 11 within two months. With a letter dated June 30, 2008 the applicant filed a set of drawing sheets numbered 1/11 - 11/11, comprising Figures 1 to 11 respectively, as “replacement drawings”. Figures 1 to 10 were different drawings to those submitted with the application, and sheet 11/11 showed a Figure 11. The applicant requested that the date of filing of the application remain April 18, 2008. It noted the newly filed drawings were identical to those filed with the Japanese application, from which priority was claimed. By letter dated August 11, 2008 the applicant requested that an additional priority claim (to a U.S. application) be added. The applicant enclosed a certified copy of this document which contained 11 drawing sheets numbered 1/11 to 11/11 comprising Figures 1 to 11 respectively. On August 22, 2008 this request was granted and confirmed to the applicant. In a further letter, the applicant stated that as a result of an error in the representative’s office the drawings as originally filed were not the drawings intended to be filed. The correct drawings were those filed with the letter of June 30, 2008. For the purposes of R 56(3) the applicant relied on the US priority application instead of the Japanese priority application for its main request, and on the latter application as an auxiliary measure. The applicant stated that the drawings filed on 30 June 2008 were completely contained in the US priority application. In its decision, the RS dismissed all requests. It noted that the references to Figure 11 in the application should be deemed not to have been made. No matter which of the two priority applications were taken into consideration, the newly filed drawings could not be accepted. R 56(3) could not be used to correct errors in the original application by the filing of a new set of drawings. Rather, the rule was applicable in cases where an application was completed by the filing of missing parts, in particular if they have been omitted. What was the verdict of the Legal Board? For those who have little time, here is the headnote: Where (a) the description as filed with an application includes references to numbered drawings and (b) drawings with corresponding numbering are also filed with the application, different drawings may nevertheless be filed later under R 56 as “missing drawings” if it can be established without having to apply technical knowledge that the drawings originally filed with the application are not the drawings referred to in the description and that the later-filed drawings are the drawings referred to in the description (see point [9]). For the others, please read on: [2] The question arising in this case concerns what are to be considered as “drawings referred to in the description [that] appear to be missing” or as “missing drawings”. The answer has in particular a decisive impact on cases in which the application claims priority from an earlier application in which the allegedly missing drawings are completely contained. Under R 56(3), the application date may then remain unaltered and does not have to be re-dated to the date when the correct drawings were subsequently filed.
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K’s Law – The ebook
[3] (a) R 56 reads in its relevant parts: “(1) If the examination under Article 90, paragraph 1, reveals that parts of the description, or drawings referred to in the description or in the claims, appear to be missing, the EPO shall invite the applicant to file the missing parts within two months. (…) (2) If missing parts of the description or missing drawings are filed later than the date of filing, but within two months of the date of filing or, if a communication is issued under paragraph 1, within two months of that communication, the application shall be re-dated to the date on which the missing parts of the description or missing drawings were filed. (…) (3) If the missing parts of the description or missing drawings are filed within the period under paragraph 2, and the application claims priority of an earlier application, the date of filing shall, provided that the missing parts of the description or the missing drawings are completely contained in the earlier application, remain the date on which the requirements laid down in Rule 40, paragraph 1, were fulfilled, where the applicant so requests and files, within the period under paragraph 2; …”. (b) A 90(1) provides that the EPO shall examine, in accordance with the Implementing Regulations to the EPC, whether the application satisfies the requirements for the accordance of a date of filing. The particular requirements are found in R 40 and R 42. [4] R 56(1), first sentence, refers to drawings referred to in the description or in the claims which appear to be missing. Hence, where a drawing referred to in the description is missing in the application documents as filed, R 56 is applicable and the missing drawing can be filed later in accordance with the procedure laid down in R 56. [5] In the present case the RS appreciated that Figure 11, referred to in the description, was missing. The [applicant] then not only filed the missing Figure 11 as the RS had invited it to do, but it also filed a new set of drawings consisting of sheets 1/11 to 10/11, these sheets comprising Figures 1 to 10 respectively. These drawings were to take the place of the sheets with Figures 1 to 10 filed before. [6] It has been decided by the Legal Board of Appeal that while it is not expressly stipulated in R 56 that an applicant may file on his own motion missing parts of the description or missing drawings, an applicant may nevertheless do so (decision J 27/10 [4]). Thus, the [applicant] was entitled to file on its motion matter that it considered to be missing. [7] The references to “missing” drawings appearing in each of paragraphs (1) to (3) of R 56 must be interpreted consistently with each other to give a meaningful effect to the rule as a whole (see also J 27/10 [10]). In this respect the Board considers that the “missing drawings” which are referred to in R 56(2) and (3) are the same as the “drawings referred to in the description or in the claims [which] appear to be missing” referred to in R 56(1). There are thus two questions which need to be answered: (1) Does an examination of the application reveal that “drawings referred to in the description” appear to be missing? (2) Were the drawings which the [applicant] filed on 30 June 2008 (the) “missing drawings”? [8] As to the first question, in the simple case where drawings are referred to in the description but no drawings are filed, the answer will clearly be yes. The same is true where, as in the present case, the description referred to Figures 1 to 11, but no Figure 11 was filed: Figure 11 was clearly missing (see also J 15/12). In the Board’s view, however, there are other situations in which drawings referred to in the description can be said to be missing within the meaning of R 56. So, for example, in the present case the description referred inter alia to Figure 1, which in the Brief Description of the Drawings was said to illustrate an “overall configuration of a tandem-type color image forming apparatus according to the exemplary embodiment of the present invention.” In the Detailed Description of the Embodiments, Figure 1 was further said to illustrate such an apparatus according to the first embodiment of the invention, this embodiment then being described in detail by reference to this drawing. This was done by reference to numerous named and numbered features which were apparently to be found in the drawing. Figure 1 as originally filed, however, while it relates to something called an “Image Processing Apparatus”, contains named and numbered features, none of which are to be found in the description. Similarly, none of the numerous named and numbered features referred to in the relevant passages in the description are to be found in the drawing. It is immediately apparent that the drawing originally filed as Figure 1 is not the Figure 1 referred to in the description. There is simply no correspondence between the description and the drawing at all. Therefore Figure 1 referred to in the description is not Figure 1 as originally filed; the drawing is missing. The same is also true, mutatis mutandis, for each of Figures 2 to 10.
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J 2/12 – When Wrong Means Missing
K’s Law – The ebook
[9] The Board takes full account of the fact that, as was correctly pointed out in the impugned decision, the RS is not expected to carry out any substantial examination which requires explicitly technical knowledge. The RS will not normally do anything more than check that the number of drawings filed corresponds to the number of drawings referred to in the description (as apparently happened in the present case). However, once one’s attention has been drawn to the point it is immediately apparent that the Figures 1 to 10 referred to in the description are not the Figures 1 to 10 as originally filed. As explained above, to appreciate this, one does not need to have any notion of what a tandem-type colour image forming apparatus might be or to understand what the relevant passages of the description are talking about or what the drawings originally filed in fact illustrate. In other cases it may be that such a conclusion cannot be reached so readily but the Board does not have to consider where in general the dividing line should be drawn in such cases. This is because in the present case it is not in doubt that drawings referred to in the description were missing. [10] The Board therefore concludes that “drawings referred to in the description appear to be missing” from the application as filed (R 56). The Board therefore disagrees with the conclusion of the RS that R 56 is not in any circumstances applicable where the “wrong” drawings are filed as opposed to where an incomplete set of drawings is filed […]. The RS pointed out that R 40 and R 56 were designed to implement Article 5 PLT so that it was helpful to consider the intentions of the drafters of this latter provision, as to be found in the explanatory notes prepared by WIPO’s Standing Committee on the Law of Patents (SPC/1/4, Geneva, 5th session, 1998). There it was stated that the provisions concerning missing matter from the application would apply, in particular, where a sheet of the description or drawings is unintentionally omitted. The Board agrees but the cited situation is clearly not intended to be exhaustive as regards the application of R 56. The Board also disagrees with the RS’s conclusion from this statement that if an application “contains a set of (wrong) drawings, it is not absent of or lacking any drawings”, certainly to the extent that this was meant to be an exhaustive statement about the application of R 56 in this context. The RS also concluded that what the [applicant] was attempting to do was essentially to amend or correct the application under R 137 or R 139 respectively, something that is not permissible via R 56. The effect of the application of R 56 will in one sense always be to amend or correct the application but this is not the relevant issue. The issue is whether drawings referred to in the description were missing. [11] This conclusion is also consistent with the existing case law of the Boards of Appeal. In J 27/10, the applicant’s case was that although the drawings originally filed were the correct drawings, the description as originally filed was the “wrong” one. The applicant’s request under R 56 to substitute it with the “right” description was refused on the basis that R 56 did not allow some, or all, of the description that was originally filed in order to obtain a filing dated to be amended, replaced or deleted: see point [12] of the reasons. The decision was thus concerned with whether “parts of the description … appear[ed] to be missing” within the meaning of R 56(1) and not with when drawings referred to in the description could properly be considered as missing. In J 15/12, citing J 27/10 but now in the context of missing drawings, it was again said that an interpretation of R 56 that some, or all, of the application documents that were originally filed in order to obtain a filing date could be amended, replaced or deleted would be incorrect. The present decision does not bring these statements into doubt: the effect of the Board’s decision will not be to amend, replace or delete the drawings filed with the original application, since these drawings will remain part of the application. [12] As to the second question, the evidence necessary to establish that the drawings which the applicant has filed under R 56(2) or (3) are in fact (the) missing drawings will depend on the circumstances. In the present case: (a) It is apparent by simply reading and without the need for any technical knowledge that the drawings consisting of Figures 1 to 11 filed with the letter dated 30 June 2008, together with their named and numbered features, correspond to what is explained in the description, and vice versa. (b) Further, the Board has compared these later-filed drawings with those in the US priority document. Both consist of identical Figures 1 to 11 with the identical reference numbers. Also the wording of each application, including the descriptions of the figures, is for all intents and purposes identical. (c) These considerations established to the satisfaction of the Board that the drawings filed by the [applicant] with the letter dated 30 June 2008 were the drawings referred to in the description. [13] As to the further requirements of R 56(3), the RS accepted that the US priority application could be used for the purposes of R 56 […]. Consequently, the further Japanese priority application need not be taken into consideration separately for the purpose of this appeal.
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K’s Law – The ebook
[14] As a result, the Board concludes that Figures 1 to 11 filed with the letter dated 30 June 2008 are to be treated as missing drawings under R 56(3) and (2). Consequently, pursuant to R 56(3) the date of filing remains 18 April 2008, i.e. the date on which the requirements of R 40(1) were fulfilled. The incomplete application documents filed originally are to be completed by the missing drawings. The drawings with Figures 1 to 11 filed with the letter dated 30 June 2008 must be added to the text of the application. Therefore, the EPO will also have to provide for a publication of the drawing sheets with Figures 1 to 11. […] The case is remitted to the RS for further prosecution. Certainly a very generous interpretation of R 56 ... Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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J 6/13 – Favourable Prospects
K’s Law – The ebook
J 6/13 – Favourable Prospects 27 Nov 2013
This appeal was filed against the decision of the Examining Division (ED) to refuse the withdrawal of a withdrawal. On November 9, 2011, the representative communicated to the Office that
The Office sent a confirmation of the withdrawal to the European representative on November 18, 2011. On the same day, the withdrawal was published in the European register. On November 30, the representative was informed that 75% of the examination fee would be refunded, and on December 21? 2011, the withdrawal was published in the European Bulletin. With letter dated 9 March 2012, a request for correction of the withdrawal of the application under Rule 139 EPC was received. The representative stated that the previous letter was sent in error, as the applicant at no time intended to withdraw the application. Instructions by the applicant to the representative had simply been not to incur any further costs at that point in time. On August 16, 2012, the ED issued a decision refusing the request for correction. The decision pointed out that the withdrawal had been communicated to the public by way of the register, and even after possible inspection of the complete file a third party could not have suspected that the withdrawal was erroneous. The applicant filed an appeal. It argued that although clear and unambiguous, the withdrawal was erroneous and had not been intended. There was every reason to believe that a person reading the complete file of the present application would have had a strong suspicion that the withdrawal of the present application was made in error. The reason for this was “that the IPER was extremely favourable in that all the claims were considered to be novel, inventive and industrially applicable. [A person inspecting the file] would see that the supplementary European Search Report cited no additional documents and that the Search Report explicitly acknowledged that the application meets the requirements of the EPC”, that the “letter of 25 July 2011 confirm[ed] that the Applicant wished to proceed with the application”, and that it would be “unlikely for the application to be abandoned for financial reasons”. As a result, “even the publication of withdrawal of this case would not be enough for third parties to be certain that the application was validly and irrevocably withdrawn.” Unsurprisingly, the Board dismissed the appeal. [2] It is undisputed that the applicant’s letter of 9 November 2011 was an unambiguous withdrawal of the application. [3] According to decision J 19/03 [5], “[T]he jurisprudence of the Boards of Appeal took as a starting point that, as a general rule, an applicant is bound by its procedural acts notified to the EPO provided that the procedural statement was unambiguous and unconditional (cf. J 11/87 [3.3, 3.6]; J 27/94 [8)) and is not allowed to reverse these acts so that they can be considered as never filed (J 10/87 [12]; J 4/97 [2]). On the other hand, the Boards of Appeal considered that R 88 acknowledges as a further legal value the desirability of having regard to true as opposed to ostensible party intentions in legal proceedings (T 824/00 [6]) in appropriate circumstances.” [4] For the particular position of requesting the retraction of a withdrawal after publication in the patent register, decision J 12/03 [7], sets out 72 | 3398
J 6/13 – Favourable Prospects
K’s Law – The ebook
“that a request for retraction of a letter of withdrawal of a patent application is no longer possible if the withdrawal has been mentioned in the European Register of Patents at the time the retraction is applied for if, in the circumstances of the case, even after a file inspection there would not have been any reason for a third party to suspect, at the time of the official notification to the public, that the withdrawal could be erroneous and later retracted” (citing with approval decision J 25/03).” While the applicant has argued that any reason for doubt would suffice the above conditions, the Board disagrees. On a proper reading of the above sentence, the words “not … any reason” cannot be construed to mean that the Board was of the view that in the absence of “not any reason”, just any reason would do. The cited sentence first of all means that there can be no retraction of a withdrawal if there is no reason for third parties to assume that the withdrawal was erroneous. That was the situation the Board was faced with in decision J 12/03. Yet, the cited sentence does not allow an interpretation whereby any reason whatsoever, serious or not, would be sufficient for a retraction of the withdrawal. As will be set out below, the Board holds that in the interest of legal certainty for third parties, and taking into account the public function of the register, a third party upon file inspection must have had good reason to suspect that the withdrawal was made in error in order to allow a retraction thereof. [5] The Board must thus determine whether in the current case, such good reason was present. According to the appellant, the extremely favourable position of the application and the prospect of a communication under R 71(3) was such a good reason. [6] In this respect, there are two decisions dealing with the erroneous withdrawal of a promising-looking application. In J 12/03 [9], the applicant immediately prior to withdrawing the application had paid the annuities. The Board found this an insufficient reason for doubting the applicant’s intentions, as “a decision to give up an application despite recent payment of a renewal fee is not illogical or unrealistic. The decision to abandon the application can be influenced by many different circumstances. It can e.g. have become necessary to avoid conflicts with other competitors.” In the second decision, J 18/10 [4], the supplementary search report for the application was extremely favourable, and the EPO had written a letter to the applicant requesting to confirm whether the applicant wished to proceed. Thereupon, the applicant had withdrawn the application. Also in this case, “… the appellant argued that a third party inspecting the file after the withdrawal would have suspected that the withdrawal was made in error, in view of the positive elements present in the file and the normal expectation that the examination would terminate with the grant of a patent. The Board cannot follow that line of argument. Even in a case of the application being in a very favourable position in examination proceedings, it remains possible and consistent that, for other reasons, the applicant decides not to proceed further with its application. It is also possible that the applicant is interested in having its application withdrawn immediately instead of having it simply deemed to be withdrawn later.” The appellant in response essentially argued that in neither of the two cited cases did the application look as promising as in the current case where the contradiction between the state of the file and the withdrawal was so striking that a third party should have noticed. [7] It may very well be that in the current case, the application most likely would have proceeded to grant. Yet the question is whether this really matters in determining whether third parties would have perceived a withdrawal as being erroneous. Based on the two decisions J 12/03 and J 18/10, the Board takes the view that the prospects of the application, however promising, are insufficient to infer an obvious or even potential contradiction with a subsequent withdrawal. Patent applications may be withdrawn due to considerations of business strategy, investor preference, shift in portfolios, agreements with competitors, etc. Due to financial considerations, most granted European patents are validated only in a limited number of countries. This is due not to contradictory behaviour or oversight, but to business strategy and optimal allocation of limited resources. These considerations may come into play at any time, even after the recent payment of annuities, or after the communication of a positive search report. The favourable prospects of the application in this case would thus not lead a third party to the conclusion that the withdrawal was possibly made in error. They did not lead the representative who handled the case and who communicated the withdrawal to this conclusion, either.
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J 6/13 – Favourable Prospects
K’s Law – The ebook
[8] If the Board were to adopt the appellant’s approach that any reason to suspect an error should lead a third party to the conclusion that the withdrawal was unintentional and that a correction might be requested, the public function of the register under A 127 and the purpose of the file being public after publication of the application would be seriously compromised. Competitors, instead of relying on the register and the contents of the file for their decisions how to pursue or not to pursue certain strategies would have to engage in a guessing game of what the true intentions of the applicant might be. If no good reason for suspecting an error was required, competitors would have to scrutinise the whole file in order to detect any possible contradiction without actually being able to verify whether any kind of potentially inconsistent behaviour was based on error or not. In other words, legal certainty would unacceptably suffer, a result that cannot be reconciled with current case law, e.g. decision J 25/03 [11]. […] The appeal is dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 677/11 – Filling In The Blanks
K’s Law – The ebook
T 677/11 – Filling In The Blanks 26 Nov 2013
This is a revocation appeal in a case where there were no less than four opponents. Claims 1 and 2 of auxiliary request 2 read: 1. Use of an enzyme resistant sugar polymer, wherein the enzyme resistant sugar polymer is polydextrose, for manufacturing an appetite suppressing medicine, which comprises a food intake suppressing amount of said enzyme resistant sugar polymer. 2. Non-therapeutic use of an enzyme resistant sugar polymer, wherein the enzyme resistant sugar polymer is polydextrose, for suppressing the appetite of a mammal. (my emphasis) In what follows, the Board tries to understand what exactly “appetite suppression” is supposed to mean. [3.1] The subject-matter of claims 1 and 2 of auxiliary requests 2 and 3 is directed to the appetite suppressing effect of an enzyme resistant sugar polymer, namely polydextrose (PDX). Since the claims do not explicitly require that the appetite suppressing effect be on satiation, on satiety or on both, it is necessary to define the meaning of the terms “appetite suppressing medicine” as used in claim 1 and “for suppressing the appetite” as used in claim 2. In the following these terms will be examined together by reference to the term “appetite suppression”. The interpretation of this term - be it narrow and concerning the combined effect on satiation and satiety, or be it broad and concerning each of them independently or in combination – has been at the core of the dispute between the [patent proprietor] and the [opponents]. Regarding the definition of the terms “satiation” and “satiety”, reference is made to E63-Exh1, the affidavit of Prof. Blundell, an eminent expert in the field of nutrition: “9. Satiation develops during the course of eating and eventually brings the period of eating to a close. Accordingly, satiation can be defined by the measured size of the eating episode.” (emphasis added) “10. Satiety is the state in which further eating is inhibited and follows the end of an eating episode. I am aware that a procedure used to assess the action of a food on satiety is the preload strategy, where precisely prepared foods are consumed in a “preload”. Effects on later food consumption are then measured over varying periods of time by visual analogue scales, and sometimes by additional eating tests, if appropriate.” (emphasis added) These definitions confirm what the two terms were generally considered to mean in this field at the priority date of the patent in suit […]. Interpretation of the term in the light of the patent itself [3.2.1] The [opponents] have pointed out that the patent specification does not contain any explicit narrow definition of the disputed term and the [patent proprietor] has not contested this fact during the oral proceedings. The board acknowledges that the patent uses interchangeably a number of terms related to appetite suppression without attaching particular meaning to any one of them and without any consistency or precision. Terms employed include: suppress appetite, reduce appetite, control appetite, control food intake, reduce food intake, suppress food intake, provide a feeling of fullness, control hunger, provide fullness sensation, suppress hunger, reduce hunger, induce fullness, appetite is depressed, curb the appetite, decrease the intake of food, provide feeling of satiation, give a significant calorie reduction, reduce caloric intake. All these terms are neither necessarily correlated nor necessarily combined. Therefore there is no basis in the patent for a narrow construction of the term “appetite suppressing” requiring an obligatory cumulative effect on satiation and satiety as alleged by the [patent proprietor].
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K’s Law – The ebook
[3.2.2] In fact the contrary is true. The patent specification […] provides ample evidence that the term “appetite suppression” as used in the claims means a suppression of hunger (satiety induction) or induced fullness (induction of satiation). Paragraph [0035]: “By taking the satiety agent, … before a meal or snack for a sufficient time for the satiety agent to be effective in suppressing hunger and/or inducing fullness, the animal, e.g. mammal, will be ingesting less food between meals and/or during meals” (lines 15-17); “...as the satiety agent … will act to curb the appetite” (lines 22-23); “Typically, then the satiety agent, … will be taken sometime in a period prior to a meal or at the time a usual meal is eaten, and this will serve to decrease the intake of food at a meal or may even eliminate the meal altogether, as the satiety agent, e.g. polydextrose, … may provide a sufficient feeling of satiation to eliminate some normally eaten meals or snacks” (lines 2327). Paragraph [0052]: “… it was possible to determine the satiating effect (i.e. suppression of hunger, or increase in fullness)”. Paragraph [0070]: “Furthermore, the sugar polymer, including the hydrogenated polymer, either alone or in combination, act with xylitol or other sugar alcohol in synergism to control the appetite of the animal and/or provide fullness”. Thus the patent itself discloses that either an effect on satiation or an effect on satiety or both is to be considered as being an effect on appetite suppression. Interpretation of the term in the light of the common general knowledge of the person skilled in the art at the priority date of the patent in suit [3.3.1] The [patent proprietor] did not dispute that the patent in suit allowed the term “appetite suppression” to be broadly interpreted. Rather, it argued that it was in the “mental furniture” of the average skilled person that when using the term “appetite suppression” he understood that both satiety and satiation must be affected. In other words, despite the broad meaning given to the term “appetite suppression” in the patent in suit, the skilled person would nevertheless give it a narrow interpretation. Thus the interpretation of the term “appetite suppression” boils down to the question of what interpretation the average skilled person in the art would have given to this term at the priority date of the patent in suit, which is incontestably 9 April 2001. Regarding the average skilled person in the art, the board concurs with the [patent proprietor] that he should be the practitioner in the field of nutrition of mammals, in particular humans. Regarding the question as to whether Prof. Blundell should be considered as the average skilled person in the art, the board considers that Prof. Blundell is an eminent specialist with an extraordinary technical knowledge in this field and cannot represent the average skilled person. According to his curriculum vitae […] he has spent many years working in the field of nutrition and has extensively studied the effects of various foodstuffs on human appetite. Thus the statements in his affidavit (E63): “19. It is my opinion that it is not satisfactory to assume that because a particular food has an effect on satiety it necessarily also has an effect on satiation. As a consequence and in the absence of an inevitable link between the two both must be independently affected in order to exert an effect on appetite control.” “21. In summary, it is my opinion that the understanding of a claim about appetite suppression requires an affect on both the satiety and satiation of a subject.” cannot be considered to represent the general technical knowledge of the average practitioner at the priority date of the patent in suit. Furthermore, E63 expresses a personal opinion on the date of 19 May 2011, i.e. ten years after the priority date of the patent in suit. [3.3.2] Thus the board agrees with the [opponents] that the skilled person trying to assign a meaning to the term “appetite suppression” would start from the natural meaning to the term “appetite”, which is to be found in E61 (a dictionary). According to E61 the term “appetite” as used in everyday language expresses “the desire or wish 76 | 3398
T 677/11 – Filling In The Blanks
K’s Law – The ebook
for food”. Naturally “appetite suppression” can only mean suppression of this desire, whatever the mechanism involved is, irrespective of the extent and duration of appetite suppression. This is the literal and clear meaning of the claims for the skilled person and there is no reason to deviate from this definition, in particular as the patent specification does not attribute a different meaning to the term “appetite”. On this basis the term “appetite suppression” would be understood by the skilled person as “the suppression of the desire or wish for food”, regardless how this effect is achieved, be it by acting on satiation or satiety or even on both. It has not been disputed that two different mechanisms were known at the priority date of the patent which influence the appetite of a subject, namely satiation and satiety which, whilst closely related, can operate independently of each other […]. Nevertheless, an appetite suppressing effect of a compound could be evaluated by measuring of either its satiation effect or its satiety effect, with the combination of both satiation and satiety being the most effective alternative. Indeed the prior art uses interchangeably a plethora of different terms to designate the same concept: reduction of satiation, satiety, food intake suppression, satiating effect, satiation, energy intake suppression, and appetite suppression. The interchangeable use of “satiety” and “satiation” indicates that the interpretation of the term “appetite suppression” as only a combination of both satiation and satiety, as alleged by the [patent proprietor], was not well established in the state of the art at the priority date of the patent in suit. For illustration, reference is made to the following documents:
E1 […] discloses the use of carbohydrates for suppressing appetite, whereas only the low decrease of the insulin peak was monitored, thus revealing an effect on satiety (i.e. less hunger between meals and less snacking); E2 discloses a method to retard the food’s digestion resulting in glucose being released into the bloodstream at a slower rate over a long period of time […] providing a feeling of prolonged satiety and helping to prevent snacking between meals […] and finally leading to the suppression of appetite […]. E32 […] discloses real appetite-suppressant compositions and recites under the title “Satiety” that “Perception of satiety (hunger, satiety, fullness, desire to eat, appetite estimation of how much one could eat, and thirst) was scored on anchored 100 mm visual analogue scales at day 4 during baseline and day 11 during each intervention period. … To characterize the development of satiation during a meal, questions on hunger, satiety and pleasantness of taste were answered on 100 mm visual analogue scales every 2 min during dinner consumed on the same day.” (emphasis added); E35 (column 1, lines 58-62) mentions that “… the [xanthan] gum per se taken well before meals and without food will act to suppress the appetite, perhaps through a bulking phenomenon which possibly causes a signal of satiety, diminishing the desire for further food intake.” (emphasis added); E64 discloses that Quorn® (a high protein, dietary fibre combination) has an appetite suppressing effect by having a strong impact on late satiety […]. E65 […] discloses that the modulation of appetite involves quite a variety of alternative possibilities (enhancing satiety and or inhibiting hunger or altering food selection) which do not have to be present in a cumulative way.
[3.3.3] Certainly, the state of the art at the priority date of the patent in suit discloses also the cumulative effect of satiation and satiety for the control of appetite. Reference is made to E63-Exh5 […], and the affidavit of Prof. Blundell […] confirms this fact. Nevertheless, the cumulative effect concerns the “optimum situation” for the suppression of appetite. The patent in suit […] incidentally defines the “effective” appetite suppression as a 20 to 30% reduction of food intake, although the highest exemplified reduction in food intake is only 16.8% […]. The fact that there is an optimum situation does not cast doubt on the fact that the state of the art cited above discloses also a less ideal suppression of appetite by affecting either satiation or satiety. The technical evidence of the patent in suit discloses […] values for food intake reduction such as 7.2%, 9.9%, 16.8% and 10.9%, which are much lower than the effectively reduced appetite suppression of 20-30% […]. [3.4] The board thus concurs with the [opponents] that the [patent proprietor’s] narrow interpretation of the term “appetite suppression” to require both satiety and satiation is an assertion made “a posteriori”, that is, in view of the [opponents’] various objections during the opposition and appeal proceedings before the EPO. The [patent proprietor] cannot be permitted to fill in the blanks after the priority date and provide now, when the granted patent is challenged, a new and completely unsupported interpretation of the patent language and maintain that this narrow interpretation is the only interpretation that the person skilled in the art would contemplate upon reading the patent.
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T 677/11 – Filling In The Blanks
K’s Law – The ebook
[3.5] In summary, the contested term has to be interpreted as deriving from the control of satiation or satiety or both. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 521/10 – A Problematic Incorporation
K’s Law – The ebook
T 521/10 – A Problematic Incorporation 25 Nov 2013
A reminder on the conditions for incorporation by reference … [3] Claim 1 was amended and is now directed to the embodiment disclosed on page 27, line 16 onwards of the published application, i.e. the A1 publication. This is the case for all requests. The enabling disclosure for this embodiment, in particular for the first part of feature b) and feature c) of claim 1, relies on the content of patent applications WO 00/46680 ([INC1]), US 09/378184 (INC2) and US 09/378220 (INC3) incorporated by reference. There is no explicit disclosure of how exactly a pixel array is mapped to a geometric surface and how an image is generated of the program and a video clip by binding the mapped pixel array to the geometric surface. [3.1] The reference to [INC1] was not present in the priority document of the present application. The board notes that [INC1] was only filed on 2 February 2000, which is later than the claimed priority date of 16 January 2000 for the present application. As far as the subject-matter of claim 1 is based on the disclosure of [INC1], the priority is not validly claimed and the effective filing date of claim 1 is consequently 12 January 2001. Since [INC1] was published on 10 August 2000 it is pertinent prior art against the present application for subjectmatter having the filing date as its effective date which is the case for claim 1. [3.2] Incorporated applications [INC2] and [INC3] do not fulfil the requirements set out in T 737/90 [3] and Case Law, 7th ed. 2013, II. C. 3.2, pp. 307 and 308 (see also Singer/Stauder, The EPC, Commentary, 3rd edition, A 83, No. 34). In order to be validly incorporated according to this case law each document must fulfil the following: (i) a copy of the document was available to the Office on or before the date of filing of the application; and (ii) the document was made available to the public no later than on the date of publication of the application under A 93. Neither of the two documents was available to the public on the date of filing of the present application. The only publication available to the EPO originating from [INC2] and [INC3] is […] a continuation-in-part application published on 7 November 2002, i.e. later than the publication date 19 July 2001 of the present application. […] [3.4] In the annex to the summons to oral proceedings the appellant was invited to provide evidence that the above mentioned requirements were fulfilled for [INC2] and [INC3] […](e.g. by having been publicly accessible in the application dossier before the date of publication of the present application and therefore having been made public by analogy with A 128(4))). However, the appellant did not react to this invitation. No arguments or facts contradicting the board’s reasoning were presented with regard to the aforementioned problems concerning the disclosure and effective filing date. The board takes this as meaning that the appellant accepts the board’s reasoning. [3.5] For this reason the board concludes that only [INC1] has been validly incorporated by reference and the subject-matter of claim 1 of all requests, for the reasons given above, only has the filing date of the present application as its effective date, with [INC1] being prior art relevant to claim 1. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1020/13 – One For All
K’s Law – The ebook
T 1020/13 – One For All 22 Nov 2013
This is an examination appeal. On November 29, 2011, the Examining Division (ED) had issued a communication in which it raised objections under A 84 against the claims filed on June 13, 2011. In response to this communication the applicant filed a new set of claims on May 19, 2012. The ED then refused the application and justified this refusal by explaining that claim 1 on file did not comply with the requirements of A 84 (because the claimed tool was defined via an object that was not part of the tool). The applicant requested a reimbursement of the appeal fee because its right to be heard had been violated. In the following extract Board 3.2.06 deals with the admissibility of the appeal. *** Translation of the German original *** [1] The notice of appeal, which was received on April 14, 2013, and which, according to the appellant, contained the whole statement setting out the grounds of appeal, contains a request for reimbursement of the appeal fee based on a violation of the right to be heard (A 113(1)) by the ED. The appellant is of the opinion that its right to be heard had been violated inter alia because it had been refused an opportunity to comment on the arguments of the ED regarding the features that had been added to claim 1 of May 19, 2012, in view of the clarity objection pursuant to A 84, which was decisive for the refusal […]. The reasons invoked by the appellant made directly clear to the Board what [the appellant] believed to be a procedural violation. If, based on these reasons, the violation of the right to be heard invoked [by the appellant] would have to be confirmed, then, as a rule, the Board would have to set aside the decision and remit the case to the first instance, in application of Article 11 RPBA. Thus the appeal is sufficiently substantiated (begründet), at least in respect of this alleged substantial procedural violation. When a substantial procedural violation is invoked in the statement of grounds of appeal and sufficiently substantiated, then it is irrelevant (unerheblich) for the decision on the admissibility of the appeal whether the appeal is also sufficiently substantiated in regard of the main grounds (tragende Gründe) of the decision (in this case, in regard of A 84). As the Board considers all other admissibility requirements to have been complied with, the appeal is admissible. The Board finally found that the appellant’s right to be heard had not been violated and remitted the case to the ED for further processing on the basis of the third auxiliary request. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 109/11 – Speed-Dating Is Dangerous
K’s Law – The ebook
T 109/11 – Speed-Dating Is Dangerous 21 Nov 2013
This decision also contains some interesting paragraphs on how oppositions have to be substantiated, in particular when non-patent documents are cited. *** Translation of the German original *** [10] According to the established case law of the Boards of appeal, the requirement that [the opponent has] to provide an indication of the relevant facts and evidence (R 55(c) EPC 1973, last half sentence) is only met if the relevant facts and evidence are indicated so that they allow the Opposition Division (OD) and the patent proprietor to correctly understand the grounds for opposition that are invoked and their validity (Stichhaltigkeit) without further investigations, so that they can comment on them (cf. T 2/89 and T 328/87). The requirement “indication of the facts and evidence presented in support of the grounds” has to be understood to mean all facts on which the opponent bases the request to revoke the patent. In other words, the justification (Begründung) of the opposition has to present the circumstances that are relevant for the assessment of the ground for opposition that is invoked. Which circumstances are relevant depends on the individual case and follows from the overall context (cf. T 222/85). It is not possible to remedy deficiencies after the expiration of the time limit for filing an opposition if the justification of the opposition is insufficient (see T 522/94). In order to meet the requirements of R 55(c) EPC 1973, last half sentence, it is sufficient if one ground for opposition is sufficiently substantiated. One single substantiated objection, such as for example the objection of lack of novelty based on one of the documents, is sufficient to reach this goal. [11] In the present case the opponent has cited the grounds for opposition “lack of novelty” and “lack of inventive step” as well as the ground for opposition pursuant to A 100(c) EPC 1973 in the opposition form, but in the justification only the ground for opposition “lack of inventive step” was explained in more detail: document A1 (JP 58224226 A (Abstract)) was discussed in combination with documents A3 and A5. Point 3.2 of the notice of opposition also cites document A8 (DE 196 01 517 A1), but only in combination with the above mentioned documents, i.e. in connection with A1 and A3 and A1 and A5, respectively. Thus the indication of the facts and evidence presented in support of this ground within the meaning of R 55(c) EPC 1973 is limited to the objection of lack of inventive step. The opposition form does not contain any explanations regarding the grounds for opposition “lack of novelty” and A 100(c) EPC 1973. However, this does not have any influence on the admissibility of the opposition, because the notion of inadmissibility pursuant to R 56 EPC 1973 only refers to the opposition as a whole. If the requirements regarding admissibility are met for at least one ground for opposition, the opposition is admissible as a whole (see T 212/97). [12] The explanations of the [opponent] regarding substantiation essentially consists in the following chain of arguments: (a) R 55 EPC 1973 does not provide that documents cited against [the opposed patent] have to be dated or that their date (Zeitrang) has to be indicated; (b) even if there was a requirement regarding [their] date, the dates provided on the opposition form met this requirement; (c) the above mentioned dates are to be understood as print dates – regarding these dates one had to assume a prior publication (Vorveröffentlichung) of documents A3 and A5; (d) the question of whether there had indeed been a prior publication was only to be examined when the allowability of the opposition was examined. [13] As far as the first objection is concerned, it has to be noted that the facts and evidence presented in support of the ground for opposition within the meaning of R 55(c) EPC 1973 have to be provided for each ground for opposition. The ground for opposition “inventive step” in any case requires the indication of the relevant prior art on which the assessment of the inventive step is to be based in the opposition proceedings. In the present case the ground for opposition “inventive step” is based on a combination of documents A1 and A3, A1 and A5 as well as document A8 which is cited in the context of combinations of A1 and A3 and A1 and A5, respectively.
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As a rule there is no need for explanations regarding the fact that patent documents have been published at a certain date, i.e. have to be considered as prior art, because the documents themselves provide a reliable (gesichert) publication date. In the present case, this applies to documents A1 and A8 because they are classical patent documents. However, if documents that do not disclose a reliable publication date are cited, it is necessary to discuss in detail the question of whether they belong to the prior art, i.e. the question of the date and circumstances of their publication, which is fundamental for the ground for opposition “inventive step”. In the present case, the documents A3 and A5 are not patent documents which themselves provide a reliable publication date, but assembly instructions (A3) and a company brochure (A5). As a rule, such documents do not contain a date of publication but at best an encoded print date or a date related to the prior art taken into account in the document, or the editorial deadline (Redaktionsschluss). In such documents, which are not classical patent publications, the requirement of substantiation is, as a rule, only met if [the opponent] cites concrete facts from which one can derive that they have been made available to the public before the priority date (cf. Podbielski, in: Singer/Stauder, EPÜ, 6th edition, A 99, marginal number 87, which cites further authorities). Thus the presentation of the facts has to be such that it can be understood without further ado when and under which circumstances the alleged prior publication has occurred. Therefore, the first objection of the [opponent] cannot succeed. [14] Regarding the second objection of the [opponent], the following should be noted: In the case under consideration the documents A3 and A5 have been designated as “Company brochure assembly instructions CERAPUR (Ju 1336/1) February 1996” (A3) and “Company brochure Vaillant Thermoblock Klassik Heating Value VC/VCW 196 E-C, August 1998” (A5).
There were no further explanations regarding the above mentioned dates and the circumstances of a possible prior publication within the time limit for filing an opposition. Thus the question arises whether the [opponent] has met its duty of substantiation as to when and how the cited documents A3 and A5 have been made available to the public. In this context it has to be noted that the [opponent] has dated these documents in the opposition form, i.e. “February 1996” for A3 and “August 1998” for A5 – but that it has not pointed out whether these dates were to be understood as print or publication dates. Moreover, it is to be noted that there are no explanations in the notice of opposition as to whether these dates were taken from the documents themselves or from which pieces of information, possibly contained in the documents, they were derived. The Board is of the opinion that the dates are not disclosed in the documents themselves. As explained in the decision of the OD, document A3 contains several combinations of letters and numbers that can be interpreted as indications of date. First, on the right upper corner of the cover sheet there is the indication:
Moreover, on the right upper corner of the cover sheet there is the indication:
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And on the last page (page 34) in the middle of the right margin there is the indication “11/95”:
The notice of opposition only contains the date “February 1996” without any further discussion of or reference to the information contained in A3. It is only in its letter dated September 30, 2005, i.e. after expiration of the time limit for filing an opposition, that the opponent has explained that the indication “JU 1336/1, 6 720 603 928 (2.96) PC - Pf” referred to the print date. For the sake of completeness, it also has to be mentioned that in the course of the oral proceedings on May 17, 2013, the [opponent] has explained, in view of the indication on the cover sheet (“29.09.95”) that this was the date of clearance (Freigabe). The fact that a document that was allegedly printed in the year 1996 contains a clearance date of 1995 remains unexplained. In any case, it cannot be the clearance of the present document A3, which was said to have been printed in 1996. [15] As far as A5 is concerned, it has to be noted that this document also contains several combinations of figures and letters that can be interpreted as indications of date. First, the upper right corner of the cover sheet and the bottom of the right margin of the last page both contain the indication
And the bottom of the right margin of the last page contains the indication “subject to change A/0898 87 6108”:
In its letter dated September 30, 2005, i.e. after expiration after the time limit for filing an opposition, the opponent has explained that the latter indication allowed to derive a print date of “August 1998”. [16] In view of what has been said above, the Board of appeal (BoA) reaches the conclusion that because of the ambiguity of the letter-number combinations in documents A3 and A5 the dates provided in the opposition form cannot be unambiguously derived from the documents themselves. Moreover, even when taking account of the contents of documents A3 and A5 it was not apparent whether the opponent wanted these dates to be understood as print or publication dates. For this reason alone it would have been necessary to discuss in more detail the question of the dates of the above mentioned documents within the time limit for filing an opposition. Moreover, it should be noted that – even if the later submissions of the [opponent] are considered – the dates contained in the opposition form are only print dates. Thus, even the submissions of the [opponent] lead to the conclusion that the question of the date, which is relevant for the requirement of substantiation, and of the circumstances of the alleged prior publications has not been discussed (thematisiert) at all within the time limit for filing an 83 | 3398
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opposition. Thus the BoA is of the opinion that for the above mentioned reasons alone there is a lack of substantiation resulting in the inadmissibility of the opposition. [17] For the sake of completeness, however, the [Board] wishes to make the following comment on the third objection of the [opponent] (see point [12] above). The [opponent] is of the opinion that the dates mentioned in the notice of opposition are to be understood as print dates, and consequently one has to assume a prior publication of documents A3 and A5, and the opposition is sufficiently substantiated. First it has to be noted that, as mentioned above, the BoA does not endorse this approach, be it only because the dates provided in the opposition form were not unambiguously to be understood as print dates. But even if one assumes that the indication “JU 1336/1, 6 720 603 928 (2.96) PC - Pf” refers to the date on which A3 was printed – as alleged by the [opponent] – this does not say anything about the date of publication, which is decisive for the determination of the prior art. The BoA is of the opinion that in this context it also has to be taken into account that document A3 provides assembly instructions. Usually assembly and installation instructions are not properly “published” but are made available to the public together with the product that is to be assembled or installed (cf. T 511/02). The corresponding information cannot be deduced from A3 itself, nor does the notice of opposition provide any indication on possible sales of the product or a distribution of the assembly instructions related to such sales. [18] As regards A5, it has to be noted that it apparently is a company brochure of the [opponent]. It is true indeed that, as a rule, a brochure that is directed at clients may be assumed to be distributed to potential customers shortly after the print date, so that the indication of the print date may be sufficient under certain circumstances (see T 597/07 and T 782/04). However, in the present case the BoA is of the opinion that it is necessary to take account of the fact that the opposition form only contains the indication “August 1998” without any further explanation whether the opponent understands this date to be a date of print, of publication or an editorial deadline. Moreover, there is no indication as to whether this date was derived from information contained in the document itself. This, however, appears to be required in the present case because, as mentioned above, A5 contains several letter-number combinations which might serve as a basis for dating the document. However, even if the indication “subject to change A/0898 87 6108” on the last page of A5 is used and interpreted as a date, this date cannot be readily understood to be a print date. Rather, the indication “subject to change” suggests that this was intended to establish the editorial deadline or the prior art taken into account in the brochure. The Board is of the opinion that in the present case it also has to be taken into account that the patent under consideration claims a priority date of March 14, 1999, i.e. a date which is only about 8 to 9 months after the above mentioned date (“August 1998”). If one assumes that “August 1998” designates the prior art taken into account in the brochure or the editorial deadline, then one may not simply assume that [the document] has been published before the priority date because usually there is quite some time between the editorial deadline and the printing (Drucklegung) and a subsequent publication, which itself may be quite some time before the distribution of the brochures, irrespective of the configurations mentioned by the OD, where the distribution of printed brochures does not take place at all, for technical or economic reasons (deficiency of the product, lack of compliance with technical standards, infringements, etc.). In this context the [patent proprietor] has pointed out that it is not unusual that printed brochures are not published in cases where the technology develops quickly or where there is a deficiency of the product which leads to the production of distribution of the products being stopped. [19] The date and the circumstances of the publication are decisive for the assessment of whether the documents A3 and A5 belong to the prior art and, therefore, whether they can be cited against the patent at all. Thus a presentation of the corresponding facts would have been necessary for the justification of the ground for opposition “inventive step” in the present case. For the above mentioned reasons the BoA is of the opinion that the indications of dates contained in the opposition form, which have not been explained at all, do not comply with the requirement of substantiation expressed in R 55(c) EPC 1973, all the more so as the documents do not provide any indications helping to understand the dates given in the opposition form. [20] In the statement of grounds of appeal the [opponent] also pointed out that it was not relevant for the admissibility whether the indications regarding the publication of the documents were proven; [the opponent expressed the opinion] that this was related to the allowability of the opposition but not to be dealt with when its admissibility was examined. [21] In this context it has to be emphasized that it is necessary to distinguish between the requirement of substantiation and the question of whether an assertion regarding facts (Tatsachenvortrag) is considered to have been proven. When substantiation is to be examined, all that has to be examined is whether the relevant facts and evidence are indicated so that they allow the Opposition Division (OD) and the patent proprietor to correctly understand the grounds for opposition that are invoked and their validity (Stichhaltigkeit) without further investigations and whether they are enabled to comment on them (cf. T 2/89 and T 328/87 . The BoA has carried out the examination accordingly; it had to examine whether the factual assertion regarding the date and the 84 | 3398
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circumstances of the publication of A3 and A5 was sufficient. There was a need for such an assertion because the documents cited are not patent documents which themselves provide a reliable publication date. The mere indication of dates without any further explanation of whether these date are publication dates at all and without any explanation regarding the basis for the dating cannot constitute a sufficient assertion of facts, all the more as the documents do not unambiguously disclose these dates. Moreover, it has to be taken into account that dates that may be contained in such documents usually refer to an editorial deadline or a print date but not the date of publication. Therefore, in view of the nature of the documents, the dates provided on the opposition form needed further explanation, which means that the factual assertions did not comply with the requirement of substantiation in this respect. Thus, what matters is not whether the dates provided were to be considered to have been proven, but only whether the submissions were sufficiently substantiated regarding the date and the circumstances of the publication of documents A3 and A5. [22] As the requirement of substantiation has to be met within the time limit for filing an opposition and any deficiency of justification cannot be remedied after expiration of this time limit (see above, point [10]), neither the submissions of the [opponent] dated September 30, 2005, which contain further explanations regarding the publication of documents A3 and A5, nor the declaration in lieu of oath of Dr. Hocker, which has been filed during the oral proceedings before the OD, on November 15, 2010, can be taken into account when the substantiation [of the grounds for opposition] is examined. Also, the argument presented in the statement of grounds of appeal, according to which the documents A3 and A5 had only been filed in order to provide evidence for the general knowledge of the skilled person and accordingly, the attacks contained in the opposition are based on A1 in combination with the general knowledge of the skilled person, is not persuasive. When discussing the ground of inventive step, the notice of opposition expressly indicates that the skilled person, based on document A1, would consider the teaching contained in documents A3 and A5 in order to reach the subjectmatter of claim 1 of the patent-in-suit […]. Thus the BoA cannot endorse the argument of the [opponent] according to which the documents A3 and A5 have only been introduced as evidence for the common technical knowledge. [23] As already explained by the OD in […] its decision, the objections against inventive step which have been raised in the notice of opposition expressly rely on a combination of A1 and A3 or A5, respectively. Even if it was possible to object [to inventive step] based on document A1 in combination with the general knowledge of the skilled person, as first argued by the [opponent] during the oral proceedings before the OD […] and repeated in the statement of grounds of appeal, this does not mean that such an objection, which has only been raised after expiration of the time limit for filing an opposition can remedy the original lack of substantiation of the opposition. As mentioned above, the requirement of substantiation has to be met within the time limit for filing an opposition. Subsequent attempts of remedying deficiencies are not to be taken into account when this question is examined. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 109/11 – Just Words
K’s Law – The ebook
T 109/11 – Just Words 20 Nov 2013
In this appeal against the decision of the Opposition Division (OD) to reject the opposition, the Board had to deal with a situation where the impugned decision was based on a wrong legal basis. *** Translation of the German original *** [2] In the present case the notice of opposition has been filed before the entry into force of the revised EPC, i.e. on August 24, 2005. Thus the assessment of the admissibility of the opposition has to be based on the legal provisions of the EPC 1973, because the admissibility of a procedural act has to be assessed on the basis of the law that is applicable at the time of the act (cf. J 10/07, T 1366/04, T 1279/05). Therefore, in the present case the relevant provision for answering the question whether the opposition is admissible is R 55(c) EPC 1973. [3] The OD, however, has not carried out the assessment of admissibility according to the provisions of the EPC 1973 but has based it on R 76(2) EPC 2000 […] and has rejected the opposition pursuant to R 77(1) EPC 2000. Therefore, the [opponent] has asked [the Board] to set aside the impugned decision, which is based on the EPC 2000, because the wrong legal provisions have been applied. Moreover, it has filed an auxiliary request for a referral to the Enlarged Board of appeal in case the OD did not set aside the decision for the above mentioned reason. [4] The Board is of the opinion that the request of the [opponent] is founded in this respect because the decision is based on the revised EPC, i.e. it is based on a legal basis that is not applicable to the question of whether the opposition under consideration is admissible. Therefore, the impugned decision in any case suffers from a formal deficiency that has to lead to the decision being set aside. The appeal has to be allowed in this respect, i.e. the impugned decision has to be set aside. Consequently, there is no need to decide on the request of the [opponent] for a referral to the EBA, which was only filed in case the decision was not set aside […]. [5] The impugned decision having been set aside, the question remains whether it is appropriate to remit the case for further processing by the first instance, as requested by the [opponent], or whether the Board should make use of its power to act within the competence of the first instance department, i.e. to decide itself on the case (cf. A 111(1)). [6] In this context it has to be taken into account that the decision of the OD was to be set aside because of a formal deficiency, i.e. the application of the wrong legal basis. However, the fact that the DO has wrongfully based [its decision] on the provisions of the revised EPC does not necessarily mean that the decision is […] mistaken on substantive grounds (sachlich fehlerhaft). As a matter of fact, many legal provisions of the EPC 1973 and of its Implementing Regulations have been maintained unamended as to their content or have only undergone editorial changes. The Board is of the opinion that a remittal to the first instance for a fresh assessment of the admissibility of the opposition would only be justified if the criteria for assessing the substantiation of an opposition were different under the revised EPC as compared to the EPC 1973. [7] Pursuant to A 99(1), first sentence, EPC 1973 the opposition has to be substantiated within the time limit for filing an opposition. According to R 55(c) EPC 1973 the notice of opposition has to contain: (a) a statement of the extent to which the European patent is opposed, and (b) of the grounds of which the opposition is based, as well as (c) an indication of the facts and evidence (Tatsachen und Beweismittel) presented in support of these grounds. If the opposition does not meet these requirements, it has to be rejected as inadmissible pursuant to R 56(1) EPC 1973, regardless of the stage of the proceedings (T 289/91). In the present case there is no doubt that requirements (a) and (b) have been met. Therefore, in the first instance proceedings the question of admissibility focused on the discussion of requirement (c), but on the basis of R 76(2)(c) EPC 2000. [8] First of all it has to be noted that the German wording of R 76(2)(c) EPC 2000 is not different from that of R 55(c) EPC 1973. Both provisions provide in the last half sentence, which is decisive for the present case, that the “facts and evidence presented in support of these grounds” have to be indicated. However, there have been changes of the wording of this half sentence in its English and French version. The English version of the EPC 86 | 3398
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1973 required [the opponent] to indicate “facts, evidence and arguments”. In the corresponding wording of the revised EPC the term “arguments” was deleted, apparently to bring it in line with the German version. The French version of the EPC 1973 provided that [the opponent] had to indicate “the facts and justification (les faits et justifications)”. The French version of the revised EPC, however, replaces the term “justification” by “evidence” (les preuves), apparently in order to align the wording with the German “Beweismittel” and the English “evidence”. In view of these amendments and the fact that the wording of the German version has remained unamended, the Board has reached the conclusion that the amendments of the French and English versions apparently serve the purpose of harmonisation of the different language versions but that the requirement of substantiation, according to which the “facts and evidence presented in support” [of the grounds for opposition], which is enshrined in R 55(c) EPC 1973, last half sentence, has remained the same as to its substance (inhaltlich unberührt). Thus the fact that the OD has wrongfully based its decision on R 76(2)(c) EPC 2000 should not have affected the decision as to its substance. [9] As the first instance discussions have already been based and centred on the legal requirements which are decisive for the question of substantiation, the Board considers it to be appropriate not to remit the case to the first instance and to decide on the case itself. We
will
have
more
on
this
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decision
tomorrow.
T 1915/09 – Not Too Fresh
K’s Law – The ebook
T 1915/09 – Not Too Fresh 19 Nov 2013
In this case the opponent filed an appeal against the decision to maintain the opposed patent in amended form. The patent proprietor requested the Board to hold the appeal inadmissible because it was based on fresh documents (D6 to D13). The opponent argued that these documents had been found in a search that had become necessary because the Opposition Division had revised the objective technical problem. [1.1] An appeal shall be rejected as inadmissible if it does not comply with A 106 to A 108, R 97 or R 99 (1) and (2) and if any of such deficiencies has not been remedied within the relevant time periods specified in R 101. [1.2] The [patent proprietor] considered the statement setting out the grounds for appeal to be insufficient […]. Hence, it claims that the appeal does not comply with R 99(2) which requires that the statement setting out the grounds for appeal “shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based”. [1.3] The statement setting out the grounds for appeal indicates in detail why the [opponent] considered that the subject-matter of the claims intended to be maintained by the opposition division lacked an inventive step in view of document D1 alone or its combination with, inter alia, document D6 […]. Thereby, said statement gave detailed reasons why the decision under appeal should be set aside and indicated the facts and evidence in support of the respective arguments. R 99(2) does not exclude that such evidence is submitted for the first time in appeal proceedings nor does it require that this evidence is admitted into the proceedings (see T 389/95 [1,3]). Therefore, the fact that the [opponent] relied inter alia on documents D6 to D13 in its statement setting out the grounds for appeal does not contravene the requirements of R 99(2). [1.4] The [patent proprietor] did not claim that the appeal suffered from any other deficiency under R 101 nor is the board aware of such a deficiency. Hence, the appeal is admissible. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1422/12 – Change Of Character
K’s Law – The ebook
T 1422/12 – Change Of Character 18 Nov 2013
This is an examination appeal. Claim 1 of the request on file read: A crystalline form of Tigecycline characterized by a powder XRD pattern having peaks at 6.8, 9.5, 9.8, 12.1, 12.6, 18.1, 20.2, 21.6, 23.3, and 26.8 ± 0.2 degrees 2-theta. The Board made a noteworthy statement on the choice of the objective technical problem: [2.1] The sole issue arising from this appeal is the inventiveness of the subject-matter of the claims of the main request on file. [2.2] The Board considers, in agreement with the Examining Division (ED) and the appellant, that the closest prior art is document D2, more particularly, the product of Example 8 thereof, which is a solid form of tigecycline. According to the appellant […], repetition of Example 8 of document D2 resulted in amorphous tigecycline. A further repetition of the process of Example 8 performed by the appellant, the experimental details of which were provided in Annex B of letter dated 8 March 2013, confirmed said conclusion. With regard to the appellant’s submission to the ED in the letter dated 22 March 2010 that a repetition of the procedure of this example resulted in a crystalline form of tigecycline, the appellant subsequently provided the full experimental protocol which resulted in this assertion, namely Annex A accompanying its letter dated 8 March 2013. Said procedure was, however, not a true repetition of the prior art, since the requirements that the pH of the mixture obtained [… in] Example 8 of document D2 was adjusted to 7.2 to 7.4 and that the solution was stirred in a chill room overnight […], were not fulfilled. This divergence from the prior art procedure could have influenced the nature of the final product, such that this “repetition” is to be disregarded when assessing the nature of the product of Example 8 of document D2. Further confirmation that the product of Example 8 of document D2 is amorphous is also provided in the form of the declaration D5 submitted by one of the inventors cited in document D1 before the USPTO. The Board is thus convinced that the tigecycline product of Example 8 of document D2 is an amorphous material. [2.3] In view of this state of the art, the appellant submitted that the problem underlying the present application is the provision of tigecycline which is more stable with respect to epimerisation. [2.3.1] In the decision under appeal, the ED did not accept the formulation of the technical problem as the provision of tigecycline in more thermodynamically stable form, since there was no indication in the application as filed that this was indeed the problem which the invention attempted to solve. The reference in paragraph [0010] of the application to the chemical and physical stability of crystalline solids was very general and belonged merely to the background of the invention and thus could not form a basis for formulating the problem. [2.3.2] According to the well established case law of the Boards of Appeal, the technical problem has to be determined on the basis of objectively established facts, since for the determination of the objective technical problem, only the effect actually achieved vis-à-vis the closest prior art should be taken into account (see T 13/84 [headnote 1; 10-11] and T 39/93 [5.3.1-4]). In this connection, any effects may be taken into account, so long as they concern the same field of use and do not change the character of the invention (see T 440/91 [4.12]). [2.3.3] In the present case, it is indicated in the application in suit […] that the present invention relates to crystalline forms of tigecycline, tigecycline being a tetracycline antibiotic already marketed as lyophilised powder or cake for intravenous injection, namely in the amorphous form. The section concerning the background of the invention […] relates to improving the performance characteristics of pharmaceutical products, including tigecycline. The formulation of the technical problem to be solved as the provision of tigecycline which is more stable with respect to epimerisation, said reduction in epimerisation resulting in improved biological activity, thus falls within the framework of the invention as disclosed in the application in suit, namely the performance characteristics of the antibiotic, tigecycline, regardless of whether these characteristics are relevant to handling, 89 | 3398
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storage or formulation and/or to its pharmaceutical properties. That the more specific problem of improved stability with respect to epimerisation is not mentioned in the application as originally filed is irrelevant (see T 39/93 [5.3.5]), since improvement of stability by avoidance of epimerisation, and, as a consequence, improved biological activity, is clearly recognisable by the skilled person as a desirable effect for a tetracycline antibiotic. As a consequence, the Board does not agree with the conclusions of the ED regarding the formulation of the technical problem and thus allows the definition given under point [2.3] above. The Board finally issued an order to grant a patent. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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K’s Law – The ebook
Take Five
Take Five 16 Nov 2013
The latest poll has shown that most readers (57%) want five posts per week, followed at some distance by three posts per week (almost 14%) and six posts per week (13%). So
let’s
keep
the
Bring it on, Dave
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five
post
rhythm.
T 1735/09 – Well-Rounded
K’s Law – The ebook
T 1735/09 – Well-Rounded 15 Nov 2013
A little reminder on rounding and novelty … Claim 1 on file read: A process for the oxidation of a C2 to C4 alkane to produce the corresponding alkene and carboxylic acid which process comprises contacting in an oxidation reaction zone, said alkane, molecular oxygen-containing gas, and the corresponding alkene and water, in the presence of at least one catalyst active for the oxidation of the alkane to the corresponding alkene and carboxylic acid, to produce a product stream comprising alkene, carboxylic acid and water, wherein in said process the molar ratio of alkene to carboxylic acid produced in said oxidation reaction zone is adjusted or maintained at a pre-determined value by controlling the concentrations of the alkene and water in said oxidation reaction zone and optionally by also controlling one or more of the pressure, temperature and residence time of the oxidation reaction zone and in which the alkane is ethane, the corresponding alkene is ethylene, the corresponding carboxylic acid is acetic acid and wherein ethylene and water are fed into the oxidation reaction zone in a ratio or 1 to 0.1 - 10 by weight, the molar ratio of ethylene to acetic acid produced is in the range 0.8 : 1 to 1.4 :1 and the product stream from the oxidation reaction zone also comprises carbon oxides in an amount of less than 15 mol%. (my emphasis) [3] It has not been challenged by the [patent proprietor] that example 3 of document D5 […] discloses a process for the oxidation of ethane to a mixture of ethene and acetic acid over a catalyst containing Mo, V, Nb and Au […] wherein ethylene and water are fed to the reaction zone in a relative ratio of 1:2 by weight ([…] 5% v/v ethylene and 10% v/v water). The molar ratio of ethylene to acetic acid obtained is 1.42:1 (results from dividing the selectivity of ethylene, 55.8 mol% by the selectivity of AcOH, 39.3 mol% as disclosed in table 2 of D5), and hence falls within the claimed range, since 1.42 shall read 1.4 when rounded to a significant figure less (see decision T 871/08 [2.3]). The amount of carbon oxides in the product stream is 4.8 mol%, and thus less than 15 mol% as required by claim 1. NB: In T 871/08 [2.3] we read: [2.3] The [patent proprietor] argued that the claimed subject-matter was novel, because the value 2.996 was lower than the lower limit of 3:1 defined in claim 1 at issue. This argumentation is not accepted by the board. When comparing a value from the state of the art (in the present case the value “2.996”) - with those claimed (here the range of values of “from 3:1 to 9:1”), the state of the art value has to be given the same accuracy as the one claimed. In the case at issue, the values in the claims have been quoted without any digit after the comma, which means that for comparison purposes, the value 2.996 has to be rounded up to 3, which thus falls into the range of the claimed values. This judgement is in agreement with the jurisprudence of the boards of appeal (in particular T 1186/05 [3.6.1-5]; T 708/05 [3]). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2473/12 – Straitjacket Confirmed
K’s Law – The ebook
T 2473/12 – Straitjacket Confirmed 14 Nov 2013
In this examination appeal case Board 3.3.09 had a lot to say on R 164 (a new version of which, as you know, will enter into force on November 1, 2014). The PCT application had been filed with the Japanese Patent Office (JPO). The international search report (ISR) covered the subject-matter of all claims. On entering the European phase, however, the Search Division considered that the claims as filed (which were the same as those filed with the PCT application) were nonunitary. In accordance with R 164(1) EPC, the supplementary European search report (SESR) was therefore drawn up only for those parts of the application which related to the invention first mentioned in the claims, namely claims 1-4 (completely) and claim 13 (partially). The appellant was invited in the search report to restrict the application to the claims covered by the European search report and was informed that the excised matter might be made the subject of one or more divisional applications. Following a communication under R 70(2) the appellant consented to the application being proceeded with and subsequently filed amended claims. These claims were not, however, suitably restricted: claims 1 to 4 as originally filed were deleted and the claims were restricted essentially to claims 5 to 13 as originally filed. The applicant argued that it was entitled to do this because these claims had been searched completely in the international phase: R 164(2) allowed an applicant to restrict its application to any invention covered either by the supplementary search report or the ISR. The ED (ED) finally refused the application on the basis of this set of claims. General considerations [2.1] The appeal is concerned with the proper interpretation and application of R 164(2). In its current version R 164 as a whole states: “(1) Where the EPO considers that the application documents which are to serve as the basis for the supplementary European search do not meet the requirements for unity of invention, a SESR shall be drawn up on those parts of the application which relate to the invention, or the group of inventions within the meaning of A 82, first mentioned in the claims. (2) Where the ED finds that the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention, or protection is sought for an invention not covered by the ISR or, as the case may be, by the supplementary ISR or SESR, it shall invite the applicant to limit the application to one invention covered by the ISR, the supplementary ISR or the SESR.” [2.2] In the present case, the decision to refuse the application was made under A 97(2) according to the state of the file. The claims which formed the subject matter of the appellant’s only request consisted essentially of claims 5 to 13 as filed on entry into the European phase. Although these claims had been covered by the search report drawn up by the JPO they were not covered by the SESR. This is because the EPO, unlike the JPO, considered the application to be non-unitary and so had applied R 164(1). The reason for the ED’s subsequent refusal of the application was essentially that the applicant was not entitled to pursue an application based on subject matter not covered by the SESR. [2.3] Following filing of the amended set of claims on 26 February 2012, it was not in dispute that the application as amended met the requirements of unity. In T 1981/12 [catchword, point 1] the Board considered, in somewhat similar circumstances, that the correct basis for the refusal of the application was that the applicant was not entitled to pursue an application based on subject matter not searched by the EPO. This is the same approach as the ED took in the present case and the Board agrees with it. The appellant does not in fact dispute that this principle is correct but argues that in circumstances such as the present: (1) Under R 164(2) an applicant can choose to limit the application either to an invention covered by the ISR or to one covered by the SESR and have the corresponding claims examined for patentability.
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K’s Law – The ebook
(2) If it chooses to limit the application to an invention covered only by the ISR then the EPO must carry out a further search, at no expense to the applicant. The construction of R 164(2) [3.1] The appellant argues that the rule should be applied as it stands: the rule clearly says that where the application documents in the European phase do not meet the requirements of unity, the applicant is to be invited (and is thus entitled) to limit the application to one invention covered either by the ISR or by the SESR. This is precisely what the applicant chose to do. It is argued that there is no room or justification for reading the rule in some other way. [3.2] In fact, as already pointed out, lack of unity was no longer an issue in the examination proceedings because at the outset the appellant had filed amended claims which were indisputably unitary. The applicable part of R 164(2) was therefore: “Where ... protection is sought for an invention not covered by the ISR or, as the case may be, by the ... or SESR, [the ED] shall invite the applicant to limit the application to one invention covered by the ISR ... or the SESR.” The appellant’s argument nevertheless remains essentially that set out in point 3.1, above: protection is being sought for an invention covered by the ISR; there is therefore no room for any further objection. [3.3] The Board concedes that the rule can be read in this way. But the construction of a written enactment must be purposive and not literal; a provision must be construed according to the ordinary meaning of the words used, in context and in the light of its object and purpose: G 2/08. Not all possible literal readings will necessarily be correct. In T 1981/12 the Board considered in detail the background of the rule. The Board noted that the drafting of the rule was less than ideal, not least because in its current version it attempted to deal with three situations at the same time. Nevertheless the Board construed the rule, in a situation where the EPO was not the ISA, as excluding the possibility of an applicant being entitled to choose to limit its application to an invention covered only by the ISR ([catchword, point 2]). The reasoning of that Board is not repeated but the present Board agrees with it. [3.4] The appellant criticises the reasoning in T 1981/12 as arguing from back to front: the decision starts from the conclusion that the EPO will not examine claims not covered by an EPO search report, therefore R 164(2) must be construed as effectively excluding the possibility of claims searched only by an ISA other than the EPO playing any role in the European phase, except as part of a divisional application. The appellant in effect argues that the rule does not have to be construed bound up in such a straightjacket. The wording of the rule can be given its literal meaning without contravening the “no search - no examination” principle once it is appreciated that the EPO should simply carry out a further supplementary European search. The ties of the straightjacket are thereby undone. [3.5] The argument is beguiling but the Board cannot accept it. In reality, it is concerned with the second argument of the appellant, relating to the actual intentions of the legislator and whether an applicant is entitled to a further search, and the Board deals with it in that context. The present discussion is concerned only with the interpretation of the rule as it stands when read in context. For the same reasons as the Board in T 1981/12 the present Board concludes that the ordinary construction of R 164(2) when read in context is that, in the present factual circumstances, where protection is sought for an invention not covered by a SESR, the applicant is to be invited to limit the application to the one invention covered by the SESR. The consequence of the applicant not doing so is that the application will inevitably be refused, being based on unsearched subject matter. The intention of the legislator: CA/PL 17/06 [4.1] The Board nevertheless concedes that the literal wording of the rule is ambiguous and therefore it is appropriate to look at the travaux préparatoires to the rule, particularly if this helps to establish its intent and purpose. [4.2] The principal relevant material is CA/PL 17/06. This concerned the original version of R 164, before it was amended to take account of supplementary ISRs. The document states:
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K’s Law – The ebook
“1. Many practical problems have arisen within the framework of current R 112. The rule does not address all possible scenarios, e.g. not the situation where non-unity is only introduced by amendments filed on entry into the European phase. Also the case where after amendment on entry into the European phase the application is unitary, but nevertheless relates to an invention not searched, is not covered. Especially in the situation where there is no supplementary [European] search and R 112 has to be applied by the ED, there is no straightforward procedure. Applicants consider a R 112 communication as a first communication by the ED and respond by e.g. contesting the findings or filing further amendments. This causes considerable delays. 2. The EPO believes that the principle should be that examination should only be carried out on inventions covered either by the ISR or by the supplementary [European] search report, in line with G 2/92. Under the proposal, the procedure will be simplified and the opportunity to have multiple inventions searched within the framework of one application will be limited to the international phase. On entry into the European phase, non-unitary subject matter should be deleted. 3. The proposal does not involve any loss of rights for the applicant. The result is just that the applicant will have to use the appropriate way of having any further inventions searched and examined by filing divisional applications. This will bring the Euro-PCT procedure in line with the Euro-direct procedure.” (Word in square brackets added by the Board) [4.3] The significance of CA/PL 17/06 in the interpretation of R 164(2) was also considered by the Board in T 1981/12 [7-8]. It was concluded that it did not give any great assistance in interpreting the rule. The Board agrees with the general conclusions expressed there and does not repeat them here. As regards the appellant’s particular arguments, the Board does not agree that CA/PL 17/06 makes it clear that the Euro-PCT application may be pursued on the basis of either the subject matter covered by the ISR or the SESR. The critical wording (“The EPO believes that the principle should be that examination should only be carried out on inventions covered either by the ISR or by the supplementary [European] search report ...”) is simply a compression of the wording in the rule and to the extent that the rule is ambiguous or difficult to construe, the same ambiguity or difficulty of construction is present in CA/PL 17/06. [4.4] As to the statement that the new rule would “bring the Euro-PCT procedure in line with the Euro-direct procedure”, the present Board can accept, as did the Board in T 1981/12, that this is puzzling. The aspects of the two procedures which it seems are to be brought into line are those whereby: (a) a Euro-direct applicant can have non-unitary subject matter searched on payment of further search fees (R 64(1)) and (b) a PCT applicant can, in the international phase, have non-unitary subject matter searched on payment of further search fees (Article 17(3)(a) PCT). It must be borne in mind, however, that this passage comes immediately after the statement that “The result is just that the applicant will have to use the appropriate way of having any further inventions searched and examined by filing divisional applications” (the Board’s emphasis). Moreover, the framers of this document appear to have been concentrating on dealing with the problems which had arisen under R 112 EPC 1973 (see point 1 of the document, quoted above) and in this context the remarks about bringing the Euro-PCT procedure into line with the Euro-direct procedure are perfectly comprehensible (for an explanation of this rule, see T 1981/12 [7.4(b)]). The Board can accept, as submitted by the appellant, that it may have been overlooked that the EPO may take a different view on unity than the ISA and that this situation was therefore not considered. However, the Board does not know for certain and has to take the rule as it finds it. The Board cannot itself legislate for a different version of the rule which may operate more fairly for the applicant. The Paris Convention (PC) [5.1] The appellant relies on Article 2 of the PC, headed “National Treatment for Nationals of Countries of the Union”, which article provides: “(1) Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention. Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with.” In this context a “national” is to be understood as applying to a purely legal entity but recognised as a “national” where application of the PC is sought, for example a company such as the appellant which is incorporated under the laws of Japan or has its principal place of business there. See Bodenhausen, “Guide to the Application of the PC”, page 28.
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K’s Law – The ebook
[5.2] The appellant points out (correctly) that a national of a contracting state to the EPC (“a Euro-applicant”) would have been entitled, either via a Euro-direct application or via a Euro-PCT application, to have all claims searched by the EPO as part of a single application and would not have been forced, as the appellant has been, to file a divisional application if it wishes to achieve this result. The appellant argues that this means it is put to much greater cost, delay and loss of rights (because of the delay) than a Euro-applicant if the appellant wishes to obtain the same protection. The appellant says that the effect of the construction given to R 164(2) by the ED is that the appellant, as a Japanese national, does not have the same advantages or the same protection under the EPC as Euro-applicants. It argues that this differential treatment is an infringement of its rights within Article 2(1) PC, for which it does not have the same legal remedy as a Euro-applicant. It says that the only way to resolve this contradiction is to apply the literal wording of R 164(2) (as in point [3.1] above). [5.3] The EPO is not a party to the PC and is thus not directly or formally bound by it: G 2/98 [4], J 15/80 [5]. Further, Article 2(1) PC is not one of the provisions of the PC which is expressly implemented by the EPC (compare the provisions on priority, to which effect is given by A 87 to 89). Nevertheless the EPC constitutes, according to its preamble, a special agreement within the meaning of Article 19 PC, this article providing that the countries of the Union reserve the right to make separately between themselves special agreements for the protection of industrial property, in so far as these agreements do not contravene the provisions of the PC. In the light of this the Board will assume, without deciding, that the EPC should if possible be construed so as not to contravene Article 2(1) PC. [5.4] It is not necessary for the Board to reach any conclusion as to whether the matter of which the appellant complains falls within the ambit of the expressions “the same protection” or the “same legal remedy” in Article 2(1) PC. This is because the Board does not accept the appellant’s core submission that it is exposed to any differential treatment under the EPC by reason of its nationality. Thus the different treatment in question arises because the ISR in this case was drawn up by an office other than the EPO, a matter over which the EPO has no control. The reasons for this different treatment are set out in detail in T 1981/12 and are not repeated here but briefly it is because a search drawn up by an office other than the EPO is not considered sufficient to enable the EPO to examine an application for patentability. There is nothing in the PC (or indeed in the PCT) which requires a national patent office to accept searches drawn up by other national patent offices as a basis for its own examination. The different procedural position in which the appellant finds itself, in particular requiring it to file a divisional application if it wishes to pursue subject matter not covered by the SESR, is in effect the EPO’s answer to how to deal with this particular situation. While the Board accepts that the reason why the search was drawn up by the JPO rather than the EPO is to do with the appellant’s nationality, this factor was not itself relevant in the application of R 164 to the present application. [5.5] In J 6/05 [8.3] it was pointed out that the restrictions in the EPC on the language of filing may favour some applicants over others but that such restrictions did not amount to a legally critical discrimination. The point is not precisely the same as in the present case but illustrates that not all adverse effects arising out of national characteristics amount to differential national treatment under Article 2(1) PC. [5.6] The appellant’s further submissions on the PC in its letter dated 8 October 2013 were filed after the debate had been closed, and are thus inadmissible. The Board has nevertheless taken note of them ex officio but they do not cause the Board to change its conclusions on this point. Entitlement to a (further) search [6] The argument of the appellant that in the present case the EPO should simply carry out a further search at no expense to the applicant was also considered by the Board in T 1981/12 [9] and rejected. The present Board again agrees with that conclusion: R 164(1) and CA/PL 17/06 make it clear that this is not an option. Moreover, the argument of the appellant, beguiling as it is, is not without further serious objections. In essence it requires the Board to fill in the gaps in the rule which the appellant argues exist because the present situation was overlooked. No doubt in the present case the matter would be straightforward: the further search report would only be required to cover one additional invention. But it is not fanciful to consider that there may be cases where the finding of lack of unity by the EPO would result in there being 10, 100 or even more separate inventions, each of which the applicant could require the EPO to search at no cost to the applicant. It cannot be presumed that this is what the legislator intended. Further, if the submission were correct, it is not clear in what circumstances the EPO would be required to draw up a search to cover the further inventions: would this have to be done automatically as part of the SESR or only on request, by way of an additional SESR? These types of consideration illustrate the dangers of the Board in going further in construing a rule than is justified and in effect purporting to legislate itself. 96 | 3398
T 2473/12 – Straitjacket Confirmed
K’s Law – The ebook
Contrary to legal principles before the EPO [7.1] The appellant says that it was unaware that an objection of lack of unity might be raised on entering the European phase. It argues that it would be an undue burden and contrary to the principle of good faith if the applicant were forced to incur the costs of a divisional application in circumstances such as the present. [7.2] The short answer to this is that nothing which the EPO did in its communications with the appellant could have led the appellant to believe that R 164(2) had the meaning for which the appellant argues. Quite the contrary. The appellant did not identify any other relevant principle of good faith which might be relevant and the Board knows of none. [8] The appeal must therefore be dismissed. The Board notes that R 164 has now been changed but this cannot affect the decision in the present case. See CA/D 17/13, Article 3. [9] Since the appeal is to be dismissed the request for reimbursement of the appeal fee must also be refused (R 103(1)(a)). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2003/08 – Fading Memories
K’s Law – The ebook
T 2003/08 – Fading Memories 13 Nov 2013
In this case the Board also had to deal with an alleged oral disclosure. This part is interesting because it shows the type of evidence gathered in witness hearings and what the Board makes of it. Oral disclosure Request not to hear the witnesses Dr Wallukat and Dr Kunze [30] By an interlocutory decision in accordance with A 117 and R 117 the board decided that it was necessary to hear Dr Wallukat and Dr Kunze as witnesses. [31] The witnesses were summoned in accordance with R 118. In accordance with the second half-sentence of R 118(2)(c) Dr Wallukat and Dr Kunze were invited to confirm within two months of receipt of the summons that they were prepared to appear before the board. Neither of the two witnesses replied, either within the given time limit or at all. Yet, both witnesses were present on the day for which they were summoned. The appellantpatentee requested the board to refrain from hearing them. [32] The failure to react to the invitation in the summonses does not have any influence on the board’s view that the witness-evidence of Dr Wallukat and Dr Kunze was necessary in the present case and therefore is no reason for the board to change its interlocutory decision. [33] R 120(1) indicates as the consequence of a failure to reply to the summons that “if no reply is received within the period specified in the summons, the EPO may, in accordance with A 131(2), request the competent court to hear the person concerned.” However, in the event Dr Wallukat and Dr Kunze were present on the date indicated in the summonses and the board could hear them as witnesses so that it was not necessary to take any other such step. [34] The appellant-patentee submitted that the missing replies had put it in a disadvantageous situation because it was uncertain whether or not the witnesses would attend and because, if they did not attend, it nevertheless had to be prepared for them to attend. The board has therefore considered whether the appellant-patentee’s right to be heard was violated by the fact that, despite the missing replies, the witnesses would be heard on the date for which they were summoned. When asked by the chairman of the board at the oral proceedings whether or not the appellant-patentee’s representative was prepared for both eventualities, i.e. for both the presence and absence of the witnesses, the appellant-patentee’s representative confirmed that he was. Also the appellant-patentee had not asked for a break for preparation or even for an adjournment of the hearing. Thus, the appellant-patentee was prepared to hear the witnesses and therefore its right to be heard would not be violated, if the witnesses were in fact heard. [35] The appellant-patentee also submitted that the appellant-opponent had played a procedural game by withholding the information that the witnesses would attend. However, although it is often a party – here the appellant-opponent – who offers a witness, the witness is not the party itself. This is illustrated, for example, by the fact that the summons for the witness hearing can be sent to the witness directly (as in the present case) and not necessarily to the representative of the party in question. Thus, the appellant-opponent is not responsible for the actions of a witness. It is of course desirable that a party, or its representative, who wishes a witness to be heard, takes all practical steps to ensure the attendance of that witness. That does not mean however, that, if a witness does not itself comply with a request directed to it, the party or representative is indulging in “procedural games”. [36] Therefore, the board decided to refuse the appellant-patentee’s request not to hear the witnesses. This decision was taken in the particular circumstances of the present case and should not be taken to mean that in other cases the failure to meet the time limit of R 118(c) will always remain without consequences. Evaluation of evidence: documents E1, E2, E3 and E24; oral testimony of Dr Wallukat and Dr Kunze 98 | 3398
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K’s Law – The ebook
Documents E1, E2 and E3 [37] In the context of the alleged oral disclosure of the subject-matter of claim 1 by Dr Wallukat the board observes that, in contrast to a written document the contents of which are fixed and can be read again and again, an oral presentation is ephemeral. Therefore, the standard of proof for ascertaining the contents of an oral disclosure is high. What has been said, or to use the terms of A 54(2), what has been “made available to the public” has to be put beyond reasonable doubt. In the often-cited decision in case T 1212/97 [4] the board expressed the view that “written notes made at the lecture by at least two members of the audience can usually be regarded as sufficient” for that purpose. [38] However, a fact also alluded to by the board in case T 1212/97 [4] is that the amount of evidence necessary to establish the content of an oral presentation beyond reasonable doubt is to be judged on a case to case basis, i.e. it depends on the quality of the evidence in each case. In the present board’s view decision T 1212/97 cannot therefore be interpreted as setting an absolute standard for the amount of evidence necessary to prove the contents of an oral disclosure. [39] In the present case the Opposition Division (OD) found that the evidence available to it – documents E1, E2, E3 – did not prove beyond reasonable doubt that the subject-matter of claim 1 was made available during Dr Wallukat’s lecture. [39.1] Document E3, an article published in a book (according to the bibliographic data on page 3 of document E3: Proceedings of the International Symposium on “The Role of Immune Mechanisms in Cardiovascular Disease”), disclosed all the features of claim 1, but was published after the priority date. There was no supplementary evidence to establish that the relevant contents of document E3 had in fact been made available to the public at the lecture. Document E24, aimed at proving that document E3 had been written shortly after the conference, was not admitted by the OD into the proceedings due to its late filing and lack of prima facie relevance. This document was re-filed in appeal proceedings and the board has – by agreement between the parties – admitted it into the proceedings […]. [39.2] Documents E1 and E2 are each a so-called “Eidesstattliche Versicherung” (i.e. a declaration made in lieu of an oath, hereinafter “declaration”), declaration E1 being that of the lecturer himself, Dr Wallukat, and declaration E2 that of a member of the audience, Dr Kunze. Neither of the two declarations was supported by contemporary notes. The OD therefore concluded that these declarations did not satisfy the criteria in decision T 1212/97 for establishing the contents of an oral disclosure beyond reasonable doubt. Further, the objectivity of the contents of declaration E2 could be questioned in view of a later professional cooperation of Dr Kunze and Dr Wallukat. Moreover, in view of the nature of the written evidence E1 and E2 the OD declined in the light of decision T 1212/97 to hear Dr Wallukat and Dr Kunze as witnesses because their oral testimony would not make good the “deficiencies” of their declarations. [40] The board shares the OD’s view on the evidential quality of document E3. It cannot automatically be assumed that a written publication, although it appears in a book referred to as “proceedings” of a conference, identically reproduces the lectures. [41] As the OD, but for different reasons, the board comes to the conclusion that documents E1 and E2 per se are not of a quality to put the contents of an oral disclosure beyond reasonable doubt. First, the long lapse of time between the event to be recalled and the writing of the declarations – around 10 years – together with the absence of contemporary notes sheds prima facie doubt on the correctness of the recollection of Dr Wallukat and Dr Kunze, as does the possibility that their recollection was tainted by the contents of document E3, later publications or information gained from their subsequent professional relationship. Second, relations with the appellant-opponent’s company could possibly have influenced Dr Wallukat’s and Dr Kunze’s objectivity. [42] As noted above […], the board is not convinced that decision T 1212/97 is the last word on the quantum of proof for prior disclosures during lectures. The board considers that there may be circumstances where evidence from the lecturer and only one member of the audience is convincing enough to reach the standard of proof - i.e. beyond reasonable doubt. Oral testimony of Dr Wallukat and Dr Kunze
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K’s Law – The ebook
[43] The board felt that its reservations concerning declarations E1 and E2 and document E3 could possibly be dispelled by hearing the authors of declarations E1 and E2 themselves. In contrast to the OD the board therefore considered it appropriate to hear Dr Wallukat and Dr Kunze as witnesses because their testimony could affect the outcome of the proceedings. [44] The following is a selection of statements made by Dr Wallukat and Dr Kunze during their testimonies. […] General details about the conference [44.1] Dr Wallukat remembered who the organizer was, that he had been invited by him, the venue and date of the conference, that many American colleagues participated, that he had seen Dr Kunze in the auditorium during his lecture and that he had not presented a poster […]. Also Dr Kunze recalled who the organizer was, the venue and date, that the conference “came quickly” – it took place six weeks after the announcement, that he had heard about it, but that he had additionally received an invitation, and that he went there for two days as evidenced from parking tickets […]. Both Dr Wallukat and Dr Kunze could not remember whether poster sessions took place during the conference […], whether Dr Wallukat’s lecture was held in the morning or in the afternoon […] and who introduced the speakers […]. The lecture Circumstances [44.2.1] Whereas Dr Kunze remembered that the lecture room was the great ballroom of the hotel in which the conference was held, Dr Wallukat only remembered that it was one of the bigger lecture rooms of this hotel […]. Dr Kunze remembered Dr Wallukat’s presentation, but could not remember any other presentation without recourse to document E3 […]. Both Dr Wallukat and Dr Kunze agree in their recollection that during Dr Wallukat’s presentation the room was not really full […]. Slides [44.2.2] Dr Wallukat said that he had shown slides of all the figures disclosed in document E3 plus those in an envelope which he brought with him to the witness hearing plus possibly two or three more […]. Dr Kunze said that Dr Wallukat had shown 8 to 10 slides which were all in Dr Wallukat’s envelope […]. Contents of the lecture [44.2.3] Dr Wallukat said that the data presented at the lecture were “brand new”. Dr Kunze said that he did not need to make notes because he knew what was said. Dr Wallukat stated that the gist of his lecture was that he and Dr Müller had noticed that the relevant antibodies decreased in the course of the healing process in a patient with myocarditis and that at the same time the patient’s heart function improved […]. Dr Kunze said that during the lecture Dr Wallukat reported on a patient with myocarditis, by whom in the course of the healing process, the antibodies disappeared […] and that this had given him the idea to reduce antibodies in patients suffering from DCM – for which there was no cure […] and that the take-home message was: if you reduce the antibodies, then this improves the function of the heart and its anatomy […]. Patient identification [44.2.4] Dr Kunze stated that Dr Wallukat had identified the myocarditis-patient by initials […], whereas Dr Wallukat said that he had not identified the patient by any means […]. Extent of the reduction of immunoglobulin [44.2.5] Dr Wallukat stated that he had not disclosed during the lecture any details of the extent to which the immunglobulin portion in the patient’s blood was reduced. 100 | 3398
T 2003/08 – Fading Memories
K’s Law – The ebook
Dr Kunze said that Dr Wallukat had disclosed that the level of immunoglobulins was decreased to the extent of 80%. That this was a good value had not been known at the time […]. Discussion after the lecture [44.2.6] Dr Wallukat was not sure about the intensity of the discussion immediately after his lecture and whether the “bridge-to-transplant” issue had been discussed […]. He recalled that in later personal conversations at the symposium other participants, in particular Prof. Maisch, had expressed appreciation of the new method presented by him […]. Dr Kunze appeared not to be sure that there had been a discussion immediately after Dr Wallukat’s presentation ([…] “Frage: Aber nach den Vorträgen gibt es eine Fragerunde. Antwort: Ja, das ist dann normalerweise die Podiumsrunde ...”), but he remembered that he participated as listener at the “Podiumsrunde” where the participants expressed surprise about the new treatment […]. Dr Kunze also said that the “bridge-to-tranplant” issue had been mentioned at the “Podiumsrunde” (war “auf dem Podium”) […]. Collaboration between Dr Wallukat and Dr Kunze before the lecture [44.3] Dr Wallukat said that he had not worked directly with Dr Kunze on aspects of DCM in the days, weeks or months preceding the presentation and that Dr Kunze had not been involved in the studies that led to the data presented at the presentation […]. They only cooperated later in the context of the firm “Affina” where they tried to develop new adsorbers, also with the aim of using them for the treatment of DCM […]. Dr Kunze said that he had often had discussions with Dr Wallukat about DCM or immunoaphereses before his presentation […] and that he himself, Dr Wallukat and Dr Müller had together determined the regimen to reduce the level of immunoglobulins by 80% […]. Dr Kunze said that after the presentation the collaboration was intensified. He said that he and Dr Wallukat developed new adsorbers in the context of the firm “Affina” which had been founded in 1999 […]. Declarations E1 and E2 [44.4] Dr Wallukat and Dr Kunze both stated that they had written the declarations themselves […], but neither of them spontaneously recalled when exactly this happened […]. Dr Wallukat said that he had not used anything to refresh his memory when he wrote the declaration. Dr Kunze said that he had used document E3 and his memory; moreover, he knew the publications of Dr Wallukat and Dr Borda and he could of course not at the time of his oral testimony distinguish precisely between what he knew in 1995 and the knowledge he had acquired later […]. Conformity of the contents of document E3 with those of the lecture [44.5] Dr Wallukat and Dr Kunze both remembered that Figure 3 of document E3 had been shown as a slide at the lecture. Dr Wallukat could not remember whether he had shown a slide with the data of Table 1 of document E3 […] whereas Dr Kunze said that such a slide had been presented […]. Dr Wallukat remembered that he had said more during the lecture than what was disclosed in document E3, in particular that he had shown slides with data of patients treated at the “Charité” hospital […]. Dr Kunze said that the contents of document E3 were an accurate reproduction of what Dr Wallukat had said […] and that the only point that was additionally mentioned in the lecture was how to measure the antibodies […]. Relationship to the appellant-opponent […] Dr Kunze said that he had been working for the last five years as medical advisor for the appellantopponent’s company […] and Dr Wallukat said that he never had any relations with this company […]. [45] The board appreciates that both witnesses were honest and open in their testimony and appeared genuinely to be trying to assist the board. The board draws the following conclusions after hearing the oral testimony:
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It appears that any relation of Dr Wallukat and Dr Kunze to the appellant-opponent at the time of writing the declarations, i.e. the party in whose support the declarations were made, can be excluded, so that any influence on their evidence for that reason can be eliminated.
It is accepted that attention plays a key role in storing information in the human brain. This is why, for example, emotionally charged events are better and longer remembered. The board did however not gain the impression that the lecture was perceived by Dr Wallukat as an outstanding and therefore easily memorisable event. For example, Dr Wallukat could not remember the lecture room, or the time of the day when he gave the lecture.
Both Dr Wallukat and Dr Kunze do not have a recollection of all details of the conference and the lecture. It would in fact be surprising if they had – human memory fades with the passage of time. In many aspects the witnesses have recollections, but they are diverging – the extent of their collaboration in the period before and shortly after the lecture, the information that was disclosed (or not) during the lecture and the identity of the contents of the lecture and document E3 are particularly noteworthy. The board cannot exclude that the divergence in recollection is due to mixing up knowledge from the lecture and knowledge gained from later collaboration and joint publications. In other aspects Dr Wallukat’s and Dr Kunze’s recollection is uniform, in particular about Dr Wallukat’s disclosure at the lecture that patients with DCM had been treated by immunoapheresis. The board is not sure whether the recollection of details falling in this category is spontaneous, i.e. whether it has been made independently of written information, such as for example the declarations or document E3.
[46] In toto, the oral testimony of Dr Wallukat and Dr Kunze could not dispel the board’s doubts that, during Dr Wallukat’s presentation, what is stated in declarations E1 and E2 as having been said was in fact actually said, that a slide with the contents of Figure 3 of document E3 was actually shown, or even that the complete contents of document E3 were actually disclosed. Document E24 [47] As to the post-published document E3 as evidence of what was said during Dr Wallukat’s lecture, document E24 does not add anything to prove how much of the contents of document E3 was made available at the lecture. Document E24 appears to be a standard letter sent to all speakers at the conference (otherwise the writers would not have expressed the hope that Dr Wallukat, who lives in Berlin as they must have known, had “einen angenehmen Aufenthalt in Berlin”). Document E24 does not contain anything from which it could be concluded that the document had to be an accurate reproduction of the lecture. The indication of the maximum amount of pages and figures suggests that shortening may be necessary, but it does not indicate that nothing of relevance can be added. [48] Taking together all the evidence before it, the board is not in a position to conclude that it has been established beyond reasonable doubt that Dr Wallukat disclosed during his lecture subject-matter falling within claim 1. Hence, the novelty-objection based on the oral disclosure fails for this reason. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2003/08 – It’s A Substance
K’s Law – The ebook
T 2003/08 – It’s A Substance 12 Nov 2013
This opposition appeal contains quite a lot of interesting material. I have, therefore, decided to split it in two posts. Claim 1 of the second auxiliary request read: 1. Use of a specific ligand for human immunoglobulin in the manufacture of a column having said ligand coupled thereto for the treatment of a patient suffering from dilated cardiomyopathy, said treatment comprising passing plasma of the patient over the column under conditions which effect the binding of said specific ligand to immunoglobulin in the patient's plasma, thereby removing a significant portion of the immunoglobulin from the patient's plasma, and reinfusing the plasma to the patient. In what follows Board 3.3.04 examines whether this claim is to be interpreted as a claim to a second medical use in the sense of G 5/83: Interpretation of claim 1 [6] In seven parallel decisions of 5 December 1984, all with corresponding texts in the different official languages of the EPO and of which decisions G 1/83, G 5/83 and G 6/83 were published in the Official Journal of the EPO, the Enlarged Board (EBA) decided that a claim in the form of a “use of a substance or composition for the manufacture of a medicament for a specified new and inventive therapeutic application” was the appropriate form of protection for inventions pertaining to a second or further new and inventive use in the medical domain (see point [23] of the reasons). This type of claim is known as a “second medical use claim” or “Swiss-type claim”. (Hereinafter reference will be made to G 5/83, published in English, the language of the present proceedings.) [7] It is not disputed by the parties, and the board agrees, that claim 1 of auxiliary request 2 […] has the format of a second medical use claim as envisaged by G 5/83. It is furthermore uncontested that the specific ligands for immunoglobulin referred to in claim 1 and a process for their generation were known in the art, as were the ligands when bound to a column and the manufacture of such a column. By way of example reference is made to the Therasorb-Ig column disclosed in document E10 which is in fact the column used in the examples of the present patent. Hence, the present invention is of the type considered in G 5/83, i.e. one where the feature in claim 1 relating to the treatment of DCM patients is decisive for the patentability of the claimed invention. [8] The appellant-opponent has argued that claim 1 does not fulfil one prerequisite to qualify as a second medical use-claim in accordance with G 5/83, namely that a “medicament” is used in the treatment. Indeed the means used in the treatment were a “column”, which is not a “medicament”, but a “device”. Therefore, despite it being drafted in the format of a second medical use claim, claim 1 should not be interpreted as such and therefore the treatment-feature should be neglected when assessing novelty. [9] Accordingly it needs to be decided whether or not claim 1 is to be construed as a second medical use claim. In the decision under appeal this question was answered in the affirmative […]. The board comes to the same conclusion, although for different reasons which are set out below. [10] The board considers it helpful in this context to highlight the reasons that led the EBA in G 5/83 to allow patent protection for further uses in the medical domain. [10.1] At the time when G 5/83 was taken A 54(5) EPC 1973 provided patent protection for inventions pertaining to the first use in the medical domain of a known substance or composition in the form of a purposelimited product claim. A 54(5) EPC 1973 stipulated: “[...] shall not exclude the patentability of any substance or composition, comprised in the state of the art, for use in a method referred to in A 52, paragraph 4, provided that its use for any method referred to in that paragraph is not comprised in the state of the art”. [10.2] In G 5/83 [22] the EBA stated however that it “does not deduce from the special provision of A 54(5) EPC [1973] that there was any intention to exclude second (and further) medical indications from patent 103 | 3398
T 2003/08 – It’s A Substance
K’s Law – The ebook
protection other than by a purpose-limited product claim”. Thus, the EBA considered that protection for further “medical” uses should be possible by analogy to the protection provided by A 54(5) EPC 1973 for first “medical” uses. [10.3] The EBA considered that the adequate form of protection for these inventions would be a claim to a “use” or a “method”, but that this form of protection would be “in direct conflict with the provisions of A 52(4) EPC [1973]” (points [12-13] of the Reasons). A 52(4) EPC 1973, to which the new A 53(c) EPC 2000 in substance corresponds (see for example G 1/04 [10]), stipulates: “Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body shall not be regarded as inventions which are susceptible of industrial application within the meaning of paragraph 1. This provision shall not apply to products, in particular substances or compositions, for use in any of these methods.” However, […] the EBA in G 5/83 [23] found it “legitimate” to allow claims which are directed to the “use of a substance or composition for the manufacture of a medicament for a specified new and inventive therapeutic application”. [11] Accordingly, this board judges that the expression “for the manufacture of a medicament” was considered by the EBA as a way to remove from the exclusion from patentability for lack of industrial applicability the sort of claim that the EBA in substance intended to allow, namely the use of a substance or composition for any of the methods recited in A 52(4) EPC 1973. [12] It can be taken from the distinction made in the second sentence of A 52(4) EPC 1973 […] that the meaning of the term “products” is not identical to the meaning of the terms “substances or compositions”. Rather, according to the wording of A 52(4) EPC 1973 “substances or compositions” are cited as a subgroup of the larger group of “products”. Thus, (i) in view of the fact that A 54(5) EPC 1973 relates to “substances and compositions” only, (ii) in view of the link made in A 54(5) EPC 1973 to A 52(4) EPC 1973 and (iii) in view of the connection established by the EBA to A 54(5) EPC 1973 […], this board concludes that the EBA intended to allow the special form of protection only for those uses in the medical domain which concern products which qualify as “substances or compositions”. [13] Moreover, again in view of the link made by the EBA to A 54(5) EPC 1973 […], the present board is convinced that the term “therapeutic application” in the wording of the claim allowed by the EBA is to be interpreted as referring to any of the methods referred to in A 52(4) EPC 1973. In fact, the EBA states in point [21] of the Reasons: “It is clearly understood that the application of this special approach to the derivation of novelty can only be applied to claims to the use of substances or compositions intended for use in a method referred to in A 52(4) EPC [1973]”. [14] It follows from the observations and considerations in points 10 to 12 above, that in the light of G 5/83 it is therefore of pivotal importance to establish whether or not the means used in the treatment of DCM according to the present claims constitute a “substance or composition”, rather than to establish whether or not it constitutes a “medicament”. [15] In G 5/83 the EBA does not give an explicit definition of what is encompassed by the terms “substance” or “composition”. Yet, in view of the claims at stake in the referring decision T 17/81 – they were essentially directed to the use of 1,4-dihydro-2,6-dimethyl-4-(3’-nitrophenyl)-pyridin-3-ß-methoxyethylester-5isopropylester to treat pathologically decreased cerebral functions – this board deduces from the gist of G 5/83 as a whole, and in particular from the specific reference to “chemical substance or composition” in point [10] of the Reasons […] that in the context of G 5/83 “substance” or “composition” refers at least to products which qualify as “chemical” entities or compositions of “chemical” entities. [16] A “device”, as for example a stent or a catheter, would not normally be denoted as a chemical entity. Therefore, G 5/83 ([…] and A 54(5) EPC 2000, which according to the EBA in G 2/08 [5.9 ff.] is considered to fill the lacuna in the EPC 1973 which had been filled in a praetorian way by the EBA with G 5/83 and the case law based on that decision) has consistently been interpreted by the boards as not providing for the patentability of uses in any of the methods recited in A 52(4) EPC 1973 (or A 53(c) EPC 2000) involving means that are a “device” (see for example T 1314/05 [3.2]; T 213/07 [3]; T 1099/09 [3.2-3; 7.2], where the relevant claims related to the use of a “device” in a treatment by therapy; or T 775/97 [2.6, second paragraph], where the relevant claim related to the use of a “device” in a treatment by surgery).
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K’s Law – The ebook
[17] In the present board’s view, it also emerges from the whole reasoning of G 5/83 that it is the “substance” or “composition” which is responsible for the “medical” - in the case of a treatment by therapy the “therapeutic” – effect, i.e. that the “substance” or “composition” is the active agent in the medical use. Reference is made in particular to the statement in G 5/83 [23]: “For these reasons, the EBA considers that it is legitimate in principle to allow claims … even in a case in which the process of manufacture as such does not differ from known processes using the same active ingredient.” (emphasis added). A similar view on the interpretation of G 5/83 as regards this aspect was expressed in decision T 1099/09 [4.3]. [18] Consequently, in accordance with the reasoning in G 5/83 and in view of the claim at issue here which relates to the treatment of patients by therapy, the board considers that it is decisive for determining whether or not a “substance” or “composition” is used in a treatment to establish (a) the means by which the therapeutic effect is achieved and (b) whether that which achieves the therapeutic effect is a chemical entity or composition of chemical entities. [19] In the present case the therapeutic effect on which the treatment according to claim 1 is based is the removal of immunoglobulin from the plasma of patients suffering from DCM. This effect is achieved by the “specific ligand for human immunoglobulin” which is undisputedly a chemical entity. The “column” serves as a carrier for the ligand and is not instrumental in achieving the therapeutic effect. In fact, the ligand could also bind immunoglobulin, if it was not bound to the column, i.e. if it was free in solution. Accordingly, the board judges that the means used for the treatment in accordance with claim 1 is to be considered as a “substance” or “composition” in the sense of G 5/83. [20] Several decisions were considered in the context of the issue raised by the appellant-opponent’s argument. [20.1] In T 138/95 [2,4] a claim to the “Use of a polypeptide selected from growth factors and cytokines for the manufacture of a device for delivering to the blood stream of a patient a therapeutic dose of the peptide by systemic delivery by pulmonary adsorption [...]” was considered by the board without any observations or comments as a second medical use claim within the meaning of G 5/83 […]. In T 138/02 [2.5-7] the claim under consideration was to the “Use of a material comprising a porous water insoluble carrier and a compound covalently immobilized onto said carrier, [...] for the manufacture of an adsorbent for the treatment of a disease selected from the group consisting of [...] by removing at least one cytokine selected from the group [...] from body fluid [...].” (emphasis added). The board concluded that this claim was not directed to a second medical use in line with G 5/83, because the means actually used in the treatment after the manufacture were not a “medicament”. The board defined “medicament” as characterized by “it be administered to a patient’s body in order to treat a disease”. Thus, in both those decisions the relevant claims related to the use of “means” for a treatment by therapy and it was decisive for the interpretation of the claim – as for example in T 213/07 and T 1099/09 – whether or not the “means” were to be considered as a “substance” or “composition”. The board notes that in none of decisions T 138/95, T 138/02 and T 213/07 was it decided whether or not the means used in the claimed treatment were “substances or compositions” within the meaning of G 5/83. Therefore, the board considers that these decisions do not help to elucidate the issue at stake here. In this board’s view, T 1099/09 [3.4, 4.3] supports its view on the present issue. [20.2] T 227/91 and T 775/97 were cited by the appellant-opponent because they give a definition of the term “medicament” with which the subject matter of claim 1 would – in the appellant-opponent’s view – not comply. In the first of those decisions, T 227/91, the board dealt with the following claim: “1. [...] Use, in the manufacture of a laser surgical instrument for intercepting an incident laser beam having a particular wavelength after the laser beam has energised a desired surgical target site but before the laser beam energises material adjacent to the surgical target site, of: substrate means (16) adapted to transmit energy received from said laser beam away from said surgical target site, said substrate means having a high thermal conductivity and an exterior surface; and coating means (18) adapted to absorb laser energy at said wavelength, said coating means covering substantially the entirety of the exterior surface of the substrate means, having a high absorptivity for energy at that wavelength and having a thickness in excess of one quarter of the wavelength of the laser beam; characterized by said coating means having a thickness substantially equal to 0.1 (a.t)0.5, where a = thermal diffusivity of the coating means t = effective pulse time of the laser beam.” (emphasis added). In T 775/97 the following claim was at issue:
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K’s Law – The ebook
“29. Use of a mutually connected first tube (160A) and first tubular member (166A) and a mutually connected second tube (160B) and second tubular member (166B), as defined in any one of claims 1 to 26, for the manufacture of a device for use in a surgical method in which the tubular members and tubes are intraluminally delivered in the first diameter condition of the tubular members into a body passageway (152) to be repaired, to be disposed therein substantially even and on the same level as each other, and the tubular members are subsequently expanded and deformed, by the application from the interior of the tubular members of a radially outwardly extending force, from the first diameter to the second, expanded and deformed, diameter with portions of the first and second tubular members being in a substantially flat adjacent relationship, whereby the adjacent portions are substantially flattened towards each other to substantially close off and substantially remove any gaps that may otherwise be present within the body passageway between the tubular members; to form a bilateral passageway in the body passageway to repair the body passageway.” (emphasis added). The board notes that in neither of these decisions did the board express any doubt that the means used in the treatment were a “device” and did not decide on the issue of whether what was used was a “substance” or “composition” within the meaning of G 5/83. Furthermore, as already observed in point [14] above, the board considers that in order to decide whether or not a claim complies with the requirements set out in G 5/83 an assessment of whether or not a “medicament” is used is not in fact needed. Instead it is necessary to decide whether or not a “substance” or “composition” within the meaning of G 5/83 is used. However, even if it was necessary to decide whether or not a “medicament” was used, the board notes that in T 227/91, T 775/97 and also in T 138/02 different boards even had different views on the essential characteristics of a “medicament” which demonstrates in this board’s view that it would be undesirable to take any one of those definitions as being generally applicable. [20.3] The appellant-opponent has furthermore relied on decision T 144/04 where the claim at issue was directed to “A method for the extracorporal removal of lipids selected from cholesterol, triglycerides and other lipids from animal plasma, serum or other suitable blood fractions, said method comprising: providing plasma, serum or other suitable blood fractions, mixing with an extraction solvent (mixture) which extracts the said lipids from the fraction, wherein the extraction solvent is removed from the delipidated fraction by mixing the delipidated fraction with an adsorbent specific for the extraction solvent.” (emphasis added). The appellant-opponent has argued that this claim related to a treatment-method very similar to that of present claim 1, i.e. the extracorporal removal of unwanted blood components, and that the board held that the claimed method was not a method of treatment by therapy in the sense of A 52(4) EPC [1973] because it was carried out extracorporally, i.e. not “on” the body. By analogy, it was argued that the column used extracorporally according to the present claim 1 could not be considered as a “medicament”. The board notes first, that the claim at issue in decision T 144/04 was not a second medical use claim, but a claim to a method and that the relevant issue was whether or not the claimed method of treatment by therapy fell within the ambit of subject-matter excluded under A 52(4) EPC 1973, i.e. whether or not the treatment by therapy was to be considered as such a treatment in the sense of A 52(4) EPC 1973 (see also T 329/94 and T 789/96 where the same issue was considered). Therefore, T 144/04 is prima facie not relevant for the specific issue arising here in relation to a second medical use claim, namely if the used “means” are a “substance” or “composition” in the sense of G 5/83. Moreover, the board in decision T 144/04 gave no opinion – explicit or implicit – on what is considered to be a “medicament”, whether in a general sense or in the sense of G 5/83. [20.4] For the present board a question which could rather arise from T 144/04 or T 329/94 and T 789/96 and in the light of G 5/83 is whether or not the feature in present claim 1 relating to the treatment “said treatment comprising passing plasma of the patient over the column under conditions which effect the binding of said specific ligand to immunoglobulin in the patient’s plasma, thereby removing a significant portion of the immunoglobulin from the patient’s plasma, and reinfusing the plasma to the patient” is to be considered as a “method referred to in A 52(4) EPC [1973]”. Decision T 144/04 held that the claimed method was not a method according to A 52(4) EPC 1973 because the removal of the lipids took place “extracorporally”, i.e. the blood when it was treated was “unlinked” to the patient’s body, see (i) the steps in claim 1 of decision T 144/04 of mixing plasma, serum or other suitable blood fractions with an extraction solvent and of mixing the delipidated fraction with an adsorbant, and see (ii) in point 2 of the Reasons (a) the originally present feature that the removal of lipids happens in a discontinuous flow
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K’s Law – The ebook
system and (b) the disclosure in the application that it was an object to provide a method whereby a patient’s plasma or serum can be treated remote from a patient. In the present case the treatment referred to in claim 1 is a so-called immunoapheresis which achieves the therapeutic effect extracorporally, i.e. the unwanted components in the plasma, immunoglobulins, are removed spatially separated from the patient’s body. Yet here the patient’s plasma, the patient’s body and the means achieving the therapeutic effect, i.e. the ligand bound to the column are linked in a continuous circuit. Therefore, the treatment in the present case is different from the treatment dealt with in decision T 144/04. Hence, the board sees no reason based on decision T 144/04 not to consider the treatment defined in claim 1 as a treatment by therapy in accordance with A 53(c) (or A 52(4) EPC 1973). The treatment-feature therefore does not preclude the interpretation of claim 1 as a second medical use claim. Other decisions also support the board’s view in this respect. In T 1075/06 the board decided that the claimed blood processing method for the removal of certain blood components which that board qualified as “blood component therapy” or “therapeutic plasma exchange” was a method of treatment of the human body by therapy and thus refused the claim pursuant to A 53(c). In T 1695/07 the board considered a blood manipulation process involving the continuous removal of blood from a patient, its subsequent flowing through a circulating line of an extracorporal circuit and its re-delivery to the patient as a method of treatment of the human body by surgery. The claim was therefore excepted from patentability pursuant to A 53(c). [21] In view of the considerations above, the board judges that claim 1 and its dependent claims 2 to 8 are to be interpreted as claims to a second medical use in the sense of G 5/83. Accordingly, the indication of the purpose “for the treatment of a patient suffering from dilated cardiomyopathy [...]” is not merely descriptive and needs consideration when assessing the patentability (here in particular the novelty and inventive step) of the claimed subject-matter. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2063/12 – Clear In Itself
K’s Law – The ebook
T 2063/12 – Clear In Itself 11 Nov 2013
Claim 1 of the main request before the Board read: 1. A cement dispersant, comprising a water-soluble polymer (P) as a main component, said water-soluble polymer (P) having a weight-average molecular weight of 30,000 to 150,000 and being constituted by a polymer (P1) part and a polymer (P2) part,
wherein: R1and R2, being identical with or different from each other, represent a hydrogen atom or a methyl group; R3O, being identical with or different from each other, represents an oxyalkylene group having 2 to 4 carbon atoms; "a" represents a molar-number-average degree of addition polymerization of the oxyalkylene group and is a number of 20 to 200; and R4represents a hydrogen atom or a hydrocarbon group having 1 to 3 carbon atoms; and a carboxylic constitutional unit (II) of the following general formula (2):
wherein R5and R7, being identical with or different from each other, represent a hydrogen atom or a methyl group; and M1 represents a hydrogen atom, a monovalent metal, a divalent metal, ammonium, or an organic amine;
wherein the mass ratio between the constitutional units constituting the polycarboxylic polymer (P-1) is in the range of constitutional unit (I) / constitutional unit (II) / constitutional unit (V) = (50 to 99)/(50 to l)/(0 to 49), the total of the constitutional units being 100 mass%, wherein said constitutional unit (V) is derived from a monomer (e), which is copolymerizable with at least one of the other monomers; said cement dispersant displaying an area proportion in the range of 13 to 60% wherein the area proportion is defined by a measurement process including the following steps (1) to (9) of: (1) measuring a weight-average molecular weight of the water-soluble polymer (P) by gel permeation chromatography (GPC); (2) detecting a height (H) of the top peak of the resultant GPC chart; (3) representing a value of a weight-average molecular weight indicating a height (1/2H) of 1/2 of the height of the top peak on the higher molecular weight side of the top peak by MA; (4) measuring an area (A0) of a higher molecular weight side portion than the weight-average molecular weight MA of the resultant GPC chart; (5) representing a value of a weight-average molecular weight indicating a height (1/2H) of 1/2 of the height of the top peak on the lower molecular weight side of the top peak by MB; (6) measuring an area (B0) of a lower molecular weight side portion than the weight-average molecular weight MB of the resultant GPC chart; (7) defining an area ratio A of the higher molecular weight side portion as A = (A 0 x 100)/(A0 + B0); (8) defining an area ratio B of the lower molecular weight side portion as B = (B 0 x 100)/(A0 + B0); and 108 | 3398
T 2063/12 – Clear In Itself
(9) defining a value (A - B), given by weight side portion from the area ratio area proportion (%)." (9) defining a value (A - B), given by weight side portion from the area ratio area proportion (%).
K’s Law – The ebook
subtracting the area ratio B of the lower molecular A of the higher molecular weight side portion, as the subtracting the area ratio B of the lower molecular A of the higher molecular weight side portion, as the
The Board found this claim to lack clarity: [1.1] Claim 1 relates to a cement dispersant that displays an area proportion in the range of 13 to 60%. The measurement process for determining the area proportion is given in claim 1 and is based on gel permeation chromatography (GPC). It is known to the skilled person that the outcome of such GPC measurements is highly dependent on the sample concentration, calibration standard, eluent and column used (see for example T 541/09 [4.3.2]). This means that different results will be obtained dependent on the measurement conditions used. No GPC measurement conditions are indicated in claim 1. This implies that the area proportion defined in claim 1 may vary dependent on how the GPC is run. Therefore the scope of claim 1 is not clearly defined. It is true that some indications concerning the GPC measurement conditions are given on page 28 of the description, but said conditions are not part of claim 1. However, according to A 84, the claims must define the matter for which protection is sought. A consequence thereof is that the claims must be clear in themselves when read by the person skilled in the art, without any reference to the content of the description (see T 2/80 [2]; T 1129/97 [2.1.2]; T 2006/09 [4]). Therefore, it cannot be argued that said measurement conditions are implicitly the ones that should always be used when trying to determine the area proportion of the dispersant according to claim 1. The Board concludes that claim 1 of the main request is not clearly defined. The requirements of A 84 are not fulfilled. Said request must fail. I really dislike this approach. Claim drafters have to satisfy all requirements of A 84, i.e. not only clarity but also concision. Providing a lengthy description of measurement conditions in a claim may often result in a lack of concision. Moreover, the skilled person is perfectly capable of looking up details on measurement conditions in the description. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2557/12 – Not Quite Perverse
K’s Law – The ebook
T 2557/12 – Not Quite Perverse 8 Nov 2013
One more decision dealing with an Examining Division (ED) ignoring a request for oral proceedings (OPs) … The applicant had replied to a communication sent by the ED; at the end of its letter, there was the following statement:
The ED nevertheless refused the application without OPs; the decision contained the following paragraph:
The Board found this refusal to hold OPs to constitute a substantial procedural violation: [3.1] In the [applicant’s] view, the phrase “In the case of the Examining division would decide to reject the application, an oral proceeding would be requested pursuant to article 116 EPC.” concluding the applicant’s reply to the ED’s communication constituted a valid request for OPs. Thus, by refusing the application without summoning to OPs, the ED committed substantial procedural violations in the following respects : (i) the ED’s decision was based on a perverse and illogical interpretation of a request, and contravened the principle of legitimate expectations; (ii) the decision violated the applicant’s fundamental right to be heard; (iii) the ED ignored the EPO’ obligation to warn applicants if errors or omissions would lead to a loss of rights; (iv) the case law relied on by the ED was not relevant to the present case. [3.2] In the contested decision, the ED noted that the applicant had not requested OPs pursuant to A 116 […] because the cited phrase, due to the use of the subjunctive form “would be requested”, did not constitute a request for OPs. Reference was made in this respect to decisions T 528/96 and T 299/86. Consequently, instead of issuing a further communication or a summons to OPs, the ED issued its decision to refuse the application. [3.3] In the Board’s view, the ED’s interpretation is not altogether unreasonable and thus cannot be qualified as “perverse” or “illogic”. After all, the [applicant] itself takes into consideration the possibility of “errors and omissions” […]. Moreover, as a matter of principle, it lies in a party’s responsibility to file its requests in an unambiguous manner. In this context, it is added that, up to the decision taken, there is no action apparent on the part of the ED which could have nurtured any legitimate expectations on the applicant’s side as to a positive outcome of the examination proceedings. [3.4] On the other hand, the ED’s categorical position that there was no valid request for OPs is not tenable. Notwithstanding its inherent ambiguity due to the use of the subjunctive formulation, the phrase in question leaves little doubt about the applicant’s intention to avoid an immediate refusal of its application. In this situation, any risk of procedural deviance could have been easily avoided if the ED had sought respective clarification from the applicant before issuing its decision.
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T 2557/12 – Not Quite Perverse
K’s Law – The ebook
In fact, in the Board’s understanding the phrase in question should be considered more likely as a request for OPs than not. [3.5] The ED saw analogies in its interpretation to the factual situations underlying decisions T 528/96 and T 299/86. The Board disagrees because the statements made in these cases could not reasonably be interpreted as actual requests for OPs. In case T 528/96 a patentee had stated in its response to the opposition “Should the opposition division feel that further information is required, the patentee will be pleased to respond in due course, either in writing or during the oral hearing”. The then deciding board did not consider the reference in this statement to an “oral hearing” to constitute a formal request for OPs according to A 116 (T 528/96 [2]). In case T 299/86 the deciding board held in its interlocutory decision […] that the phrase “I reserve my right to request OPs under A 116” is not in itself an actual request for OPs since a clear distinction has to made between actually “making a request for OPs” and “reserving the right to make a request for OPs” (T 299/86 [4]). [3.6] Instead, given the circumstances of the present case, the Board sees considerable similarities to the facts underlying case T 1136/10, where an applicant had stated “… should the Examiner feel disposed to reject the application at any time, we would request OPs, purely as a precautionary measure, so as to avoid such a rejection”. [3.7] In view of the above observations, the Board has come to the conclusion that the phrase concluding the applicant’s letter of 7 April 2010 should have been understood as a valid request for OPs in case the ED considered a rejection of the application. Ignoring this request constitutes a substantial procedural violation on the part of the ED since it deprived the applicant of its right to OPs (A 116) and of its right to be heard (A 113(1)). Therefore, the Board complies with the [applicant’s] main request by setting the decision under appeal aside and remitting the case to the ED for OPs under A 116 to take place. Moreover, it is equitable that the appeal fee should be reimbursed pursuant to R 103(1)(a). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 972/10 – Oops! I Paid It Again
K’s Law – The ebook
T 972/10 – Oops! I Paid It Again 7 Nov 2013
This is a revocation appeal. The Opposition Division (OD) had posted the decision revoking the opposed patent on March 11, 2010. The patent proprietor filed an appeal and paid the appeal fee on April 30, 2011. It then filed a written submission entitled “correction of appeal” on May 4, and paid two further appeal fees (on May 3 and May 5).
*** Translation of the German original *** [1.1] On April 30, 2010, the [patent proprietor] filed a notice of appeal dated April 28, 2010, in which it requested that the decision of the OD dated March 11, 2010, to revoke European patent n° 1 281 918 be set aside and that “said patent [be] revoked in its entirety”. [1.2] A subsequent written submission dated May 4, 2010, received on May 6, 2010, is entitled as “correction of appeal” and contains the request that the impugned decision be set aside and, under point 2, that “said patent [be] maintained in its entirety”. This request also corresponds to the request made in the statement of grounds of appeal dated July 6, 2010, which was received on July 8, 2010. [1.2] The Board understands the sequence of written submissions such that the only purpose of the written submission of the [patent proprietor] of May 4/6, 2010, was to replace the request which had been formulated in the first notice of appeal but which was obviously erroneous (because it was directed at the revocation of the patent which had been revoked by the OD in the impugned decision) […] and not to file a second appeal. [1.4] As a consequence, the Board is of the opinion that there is only one appeal by the patent proprietor, whose main request has been corrected within the time limit for filing an appeal pursuant to A 108, first sentence. [1.5] Insofar as the appellant has paid the appeal fee several times (according to the file, there have been payments of 1180 € on April 30, May 3, and May 5), there have been excess payments which have no cause in law and, consequently, have to be reimbursed. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 2319/11 – Spirit Of 69
K’s Law – The ebook
T 2319/11 – Spirit Of 69 6 Nov 2013
This is an examination appeal. Claim 1 of the main request on file read: A spiral-link belt, comprising:
a belt body formed of a series of cross-machine direction (CD) spiral coils (201, 202, 204, 206) linked by pintles (203, 205, 207) in the CD to form an endless loop; and
a plurality of CD drive bars integrated into said belt body;
wherein each CD drive bar is formed of a first spiral coil (204) attached to a second spiral coil (202) in the belt body and of a third spiral coil (206) attached to a fourth spiral coil in the belt body; the first (204) and third (206) spiral coils being linked together out of the plane of the belt body. (my emphasis) There was some discussion on the interpretation of the expression “linked together”. According to the applicant, the expression was ambiguous so that the description had to be used in order to interpret it in accordance with A 69(1). The criteria used by a judge in litigation cases should be applied and the Board was compelled to do the same by the provision of A 69 and its protocol in the EPC. Therefore, claim 1 was to be seen as being limited to the embodiments of the description (first and third coils attached using one pintle as in figure 2 or using only two additional spiral coils as in figure 3). Since these specific embodiments were not disclosed in D1, novelty had to be acknowledged. This argument was doomed to fail: [1.1] Document D1 discloses a spiral-link belt (“Förderband” (1)), comprising:
a belt body formed of a series of cross-machine direction (CD) (“quer zur Förderrichtung P”) spiral coils (“Drahtwendeln” (3)) linked by pintles (“Verbindungsstäbe”, “Verbindgungsstücke”, “Verbindungsdrähte” (4)) in the CD to form an endless loop; and a plurality of CD drive bars (“Mitnahmerippen” (2)) integrated into said belt body;
wherein each CD drive bar is formed of a first spiral coil (“Drahtwendel” (5)) attached to a second spiral coil (“Drahtwendel” (3)) in the belt body and a third spiral coil (“Drahtwendel” (5)) attached to a fourth spiral coil (“Drahtwendel” (3)) in the belt body; the first and third spiral coils (“Drahtwendeln” (5)) being linked together out of the plane of the belt body (column 3, lines 14-31; claims 1, 3; figures 5-8). Therefore, all features of claim 1 are disclosed for the belt of D1 and, hence, its subject-matter lacks novelty over D1 (A 54(1)). [1.2] The Board is of the opinion that the expression “linked together” used in claim 1 leaves open how the first and third spiral coils are to be connected. As exemplified for instance by figure 3 of the application, the connection can be performed via other spiral coils, two in that case, so the connection does not need to be direct. Contrary to the appellant’s opinion, claim 1 cannot be regarded as being limited to the embodiments of the description (first and third coils attached to each other using one pintle as in figure 2 or using only two additional spiral coils as in figure 3). Indeed, as a general principle, when performing substantive examination, the terms used in the claims are considered with their broadest meaning in accordance with the understanding of the person skilled in the art; the specific embodiments discussed in the description not necessarily being foreseen to limit the claims. Therefore, 113 | 3398
T 2319/11 – Spirit Of 69
K’s Law – The ebook
the applicant’s arguments with respect to the scope of claim 1 being limited by the two embodiments of the description in application of A 69 and its protocol are not convincing. Consequently, the embodiments of D1 in which the connection of the first and third spiral coils is performed via three (figures 5-6) or four (figures 7-8) additional spiral coils fall completely within the terminology of claim 1 of the main request. [1.3] Contrary to the appellant’s statements, the Board has never expressed the opinion that the expression “linked together” is ambiguous or unclear. The Board merely considers the expression as being broad such that, as discussed under point 1.2 above, it encompasses other options, including the disclosure of D1. Furthermore, in case of an ambiguity or a lack of clarity resulting from an expression in a claim, in examination proceedings this issue has to be raised and solved before grant entirely under the provision of A 84. The scope of protection conferred by a patent is indeed determined by the claims and, hence, the latter should be clear when the patent is proposed for grant. This is all the more true since lack of clarity is not a ground of opposition. Consequently, if the expression “linked together” would have been regarded by the Board as being ambiguous, as suggested by the appellant, claim 1 would in any case have had to be amended for clarification in order to fulfil the requirements of A 84. This alleged objection of ambiguity has not been raised, neither in the impugned decision, nor by the Board, which has instead chosen to interpret the expression in its broadest normal meaning, as would the skilled person do. [1.4] All the decisions cited by the appellant with respect to the application of A 69(1) relate to opposition proceedings dealing with lack of clarity objections and/or different interpretations of feature(s) by the parties (T 488/97 [2.2.1]; T 23/86 [2]; T 16/87 [6]; T 476/89 [2]). In such cases, the Board agrees that it may indeed be necessary to use the description and/or drawings for determining what is the subject-matter claimed, so that substantive comparison with the prior art can follow. This, however, does not apply to the present examination case. As a consequence, contrary to the appellant’s opinion, the criteria established by A 69 and its protocol and applied by a national court in litigation cases do not apply to substantive examination before grant. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 996/12 – Procedural Meltdown
K’s Law – The ebook
T 996/12 – Procedural Meltdown 5 Nov 2013
This is an examination appeal. The Examining Division (ED) objected to the claims as filed under A 84 and A 56. The applicant filed new sets of clams. Together with its objections regarding this claims, the ED summoned the applicant to oral proceedings (OPs) to be held on November 30, 2011. On October 31, 2011, the applicant filed a new set of claims to “form the sole request at the start of the OPs”. There was a video-conference on November 15 in the course of which the ED decided to allow the request. On November 23, however, the applicant withdrew its request for OPs and submitted a “redrafted main request”. This is when things seriously screwed up. The ED then sent (by fax) a communication informing the applicant that a refusal was to be expected. This communication also contained the following paragraph:
The applicant then informed the ED that it would not attend the OPs. The OPs were cancelled and the impugned decision was issued on December 29. The decision was based on the request filed on October 31. The Board of appeal found that the applicant’s right to be heard had been violated: Fundamental deficiencies [3] The appellant contests the decision of the ED essentially for both procedural and substantive matters. The latter objections become relevant only if the first were to be held unfounded. Thus, the alleged infringement of the appellant’s procedural rights will be considered first. The appellant’s submissions and arguments in this context involve four different aspects, which are to some extent interrelated with each other, i.e. (1) that the ED infringed the principle of party disposition by taking its decision on the (former) request submitted by the appellant on 31 October 2011 (A 113(2)),
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K’s Law – The ebook
(2) that the ED gave no substantive reasons for its opinion expressed in its letter of 25/30 November 2011 regarding the patentability of the set of claims filed on 31 October 2011 and of claim 1 filed on 23 November 2011, (3) that the ED, before taking a decision on the admissibility of the last amendments, failed to give the appellant an opportunity to reply to its opinion that the latter set of claims was of an unacceptable “diverging sort” (A 113(1)), and (4) that, in this last respect, the ED exercised its discretion according to R 137(3) not only unreasonably, but also applying the wrong principles. [4] In consideration of the first aspect, it needs to be noted that the appellant has filed its last version of claim 1 with its letter of 23 November 2011. This claim was presented as “new main claim” and “redrafted main request” that the appellant considered to meet all objections made by the ED in its communication of 26 May 2011. Furthermore, the appellant expressly requested the “grant of a patent on the basis of the redrafted main claim filed with this letter” with a description to be adapted later. It is reasonable to interpret this letter and request as the clear intention of the appellant to have only this new main request examined by the ED. In other words the appellant agreed only to the text submitted with this letter. Unlike the situation where an applicant submits one or more auxiliary requests, submitting a new main request (possibly followed by other - new - main requests in the course of the proceedings) automatically leads to the replacement and - in legal terms - withdrawal of (any) previous main request(s). This notion is a direct result of the fundamental procedural principle of party disposition (ne ultra petita) that is guaranteed by A 113(2) (see Benkard-Günzel/Beckedorf, EPÜ, 2nd edition 2012, vor Art. 106-112, n° 25 et seq.). Consequently, the earlier request with the set of claims filed on 31 October 2011 was no longer valid but - at least as regards claim 1 - was replaced by the subsequent request of 23 November 2011. As a result, the previous agreement of the appellant with that earlier text was conclusively withdrawn. The fact that the ED did not agree to the last amendment of claim 1 of the main request as filed with the appellant’s letter of 23 November 2011 but held it to be inadmissible for various procedural and substantive reasons (as set out both in its communication of 25/30 November 2011 and in the addendum to the decision under appeal) could not and did not “revive” or “re-establish” the finally withdrawn previous main request(s). The conclusion of the ED as to the inadmissibility of the main request of 23 November 2011 merely could have led to a state of the examining proceedings where no valid text agreed to by the appellant was present to take a decision on and, therefore, to a refusal of the application under A 97(2) for this particular reason alone (see T 647/93; T 946/96; T 237/96; T 690/09). By contrast, the ED based its decision explicitly on the earlier set of claims that was submitted on 31 October 2011, irrespective of the subsequent (automatic) withdrawal by the appellant when filing a new main request on 23 November 2011. Hence, the ED examined and decided upon a request that was (no longer) part of the proceedings and, thus, upon a text to which the appellant (no longer) agreed to in the sense of A 113(2). The provision of A 113(2) marks a fundamental procedural principle and is of such prime importance that any infringement of it must be considered to be a substantial procedural violation (see T 1854/08 [2.1]; T 690/09 [8]). [5] In addition to this infringement of A 113(2), the decision under appeal suffers from a further procedural defect in view of A 113(1) and the appellant’s right to be heard. By a first facsimile letter of 25 November 2011 (i.e. the pre-sent communication dated 30 November 2011) the appellant was informed that its submission of 23 November 2011 was late filed and moreover deemed by the ED to be inadmissible for procedural (R 137(3)) and substantive (A 84, A 123(2) and A 54) reasons. This fax contained the form 2001, setting a time limit of four months to reply. This form, with its time limit, was invalidated by a second fax of 25 November 2011, which otherwise contained the same communication. In both faxes the date of the OPs was maintained.
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T 996/12 – Procedural Meltdown
K’s Law – The ebook
After the applicant’s announcement, dated 28 November 2011, that it would not attend these OPs the appellant was informed by fax of 29 November 2011 that the OPs were cancelled and that the proceedings were continued in writing. However, by cancelling the time limit the appellant was not given any opportunity to present its comments to overcome the negative position expressed in said communications against the claims filed with letter of 31 October 2011. Moreover, the appellant had to gather from both communications that ended with the observation by the ED that a refusal of the application under A 97(2) was to be expected, that it was no longer possible to convince the ED of the contrary. This follows from also the fact that the refusal to admit the newly filed request was not presented as a provisional opinion of the ED to prepare a discussion but as a decision which could not be overturned. This is all the more so in view of the statement […] that “no further amendment may be made prior to the OPs” which were, however, afterwards cancelled. The only conclusion one can take from the above is that the proceedings were continued in writing but that the appellant had no right to react to the substantive and procedural issues raised by the ED. This contravenes A 113(1) that clearly provides that the decisions of the EPO may only be based on grounds on which the parties concerned have had an opportunity to present their comments. [6] Since the infringement of A 113(1) and (2) in itself already justifies that the decision under appeal is set aside the Board just briefly adds some summary observations concerning the appellant’s further objections. [6.1] The objection under A 113(1) that the ED gave no substantive reasons for its opinion expressed in its faxes of 25 November 2011 regarding the patentability of the set of claims filed on 31 October 2011 and of claim 1 filed on 23 November 2011 is more an objection under R 111(2) (insufficient reasoning) than a question of the right to be heard. Further, it is not well-founded. The reasons given in these communications are to be read together with the various earlier communications to which the ED expressly refers. The appellant could derive from those communications straightforwardly what kind of objections the ED had against the various versions of the requests, and the appellant obviously reacted to it by submitting an amended version of claim 1 as a new main request with its letter of 23 November 2011. [6.2] The appellant’s further objection that the ED exercised its discretion wrongly as to the inadmissibility of the last amendments of 23 November 2011, is also not well-founded. R 137(2) gives the applicant a right to amend the application once on its own volition after receipt of the first communication (here the first communication dated 17 November 2005). R 137(3), last sentence, EPC provides that no further amendment may be made without the consent of the ED. According to the case law of the Boards of Appeal, an ED has discretion to allow amendments until issue of a decision to grant (see G 7/93 [2.2-3]). After the first amendment, filed with letter of 15 May 2006, the appellant had another two opportunities to file further amendments, with letters of 2 January 2009 and 31 October 2011, the latter in time to comply with the ultimate date set for the OPs on 30 November 2011. Then, only one week before the OPs another amendment was filed. If a request for amendment is refused, the ED must inform the applicant of the reasons for not admitting the amendments in order to satisfy the right to be heard according to A 113(1). This the ED did with its faxes of 25 November 2011. In general terms, the way in which the ED should exercise its discretion to allow an amendment of an application will depend upon the circumstances of each individual case and on the stage of the pre-grant procedure which the application has reached (see G 7/93; T 690/09 [2]; T 309/09 [6.1]). A Board of Appeal reviews this exercise of discretion not in the form of how it would have decided in the case, but whether it was exercised according to the wrong principles, without taking into account the right principles or in an unreasonable way. In this respect, the Board has to take recourse to the Guidelines for Examination, version April 2010, chapter CVI, 4.7 and E-III, 8.6. The Board notes in the first place that the applicable Guidelines do not support the concept of converging claim sets being a requirement for allowing amendments or conversely, a diverging claim set not being acceptable.
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K’s Law – The ebook
This appears to be acknowledged by the decision appealed, since the ED refers to two Board of Appeal decisions, T 1685/07 and T 745/03, for this concept. This criterion is acknowledged in appeal proceedings (e.g. T 1685/07 [6 et seq.]; T 745/03 [2.2]; see BenkardGünzel/Beckedorf, Art. 110, n° 102). Apart from the fact that these decisions particularly apply to the situation where a patent proprietor submits a plurality of auxiliary requests in addition to a main request in opposition appeal proceedings, it needs to be stressed that its underlining justification is to be found in the efficiency of these appeal proceedings, the latter being of a judicial nature in contrast to the purely administrative character of the proceedings before e.g. the ED or the Opposition Division. This fundamental distinction eo ipso makes the unqualified application of this criterion by the so-called first instance of the EPO questionable. However, the other criteria applied in the impugned decision do show that the ED exercised its discretion correctly: (a) the amended claim was clearly filed late (one week before the OPs instead of one month), see Guidelines EIII, 8.6, second and third paragraphs, the subject of the proceedings not having changed, (b) the amended claim did not overcome the existing objections and gave rise to new objections, see Guidelines E-III, 8.6, fifth paragraph, and C-VI, 4.7, fourth paragraph, (c) the appellant has had a fair number of opportunities (three in total), see Guidelines, C-VI, 4.7, fifth paragraph, (d) procedural economy was at stake, Guidelines C-VI, 4.7, sixth paragraph, where the claim was not only considered to go back to the start of the examination proceedings, but even beyond that by not having the limitations of original claim 1. Remittal of the case to the ED and reimbursement of the appeal fee [7] Notwithstanding the appellant’s request that the case only be remitted to the ED if the Board considers that the subject-matter of claim 1 cannot form the basis for the grant of the European patent, the Board, in exercising its discretion under A 111(1), 2nd sentence EPC and Article 11 RPBA, finds that the fundamental deficiencies apparent in the examination proceedings, including the decision under appeal, are of such gravity that the case is to be directly remitted to the ED for further prosecution without the Board dealing with the substance of the case. [8] Under the circumstances of the present case, the Board considers the requirements of R 103(1)(a) to be met and, accordingly, the appeal fee shall be reimbursed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1297/11 – Mind Your Words
K’s Law – The ebook
T 1297/11 – Mind Your Words 4 Nov 2013
Admissibility of the ground of lack of novelty [2.1] In its notice of opposition, the opponent requested revocation of the patent as a whole under A 100(a) for lack of novelty and inventive step. [2.2] It is stated in the minutes of the oral proceedings (OPs) before the opposition division (OD) that, at the start of the OPs, the OD asked the opponent “whether he would be further pursuing the novelty objection raised in the Notice of Opposition” and that “the Opponent replied that he was dropping his novelty objection, preferring to move immediately to the question of the presence of inventive step” […]. [2.3] The board considers that, by way of this declaration, the opponent expressly renounced its challenge to the patent on the ground of lack of novelty. The ground of lack of novelty is thus a fresh ground of opposition which cannot be considered in the appeal proceedings, since the proprietor […] objected to its re-introduction (see G 10/91). [2.4] The OD also understood this declaration to mean that the ground of lack of novelty was withdrawn, since the appealed decision is silent with respect to novelty. In fact, the OD held that the parties agreed that the subject-matter of claim 1 differed from A2 only in that the longitudinal was supported by the projections […]. [2.5] [The opponent] did not contest the correctness of the minutes but rather the above interpretation of its declaration. [The opponent] argued that its declaration just meant that, to shorten the OPs, the opponent had preferred to move directly to the question of inventive step and not to argue against novelty orally, whereby the opponent had reserved its right to present its novelty objection if need be. Thus, according to [the opponent], the above declaration was a conditional withdrawal of its novelty objection and not a binding withdrawal. In fact, the declaration being open to interpretation, the OD should have clarified whether or not the opponent abandoned the ground of lack of novelty. This argument is not convincing. On its ordinary and plain reading the above declaration by the opponent made it clear that the opponent dropped, i.e. abandoned, its objection of lack of novelty. Thus, no further clarification was required by the OD. Should you wish to download the whole decision, click here. The file wrapper can be found here.
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K’s Law – The ebook
A Polleriori
A Polleriori 2 Nov 2013
I wanted to thank all of you who have taken part in the recent poll concerning the professional profile of the readers of this blog. 240 persons have participated this time, which is less than in May 2012, where I had almost 300 answers. This notwithstanding, I do not have the impression that the number of readers has diminished; the number of pageviews (whatever that is) is still increasing. I would estimate that the blog has about 300 regular readers, which is quite considerable for such a niche site (NB: not to be confounded with nice shite). There are almost 500 e-mail subscribers, but I would not be surprised if quite a few of them did not actually read what they receive. Here is the outcome of the poll, together with the results of the 2012 poll:
as well as a (condensed) pie chart:
The overall situation is similar to what we had in 2012. Private practice, industry and the EPO have slightly increased their share. The most noteworthy difference appears to be the fact that there are less trainees on the blog. Is this because the EQE has higher pass rates now and the number of trainees decreases? Anyway, I always tell trainees that they should study the law rather than case law niceties, the knowledge of which will not help them in the exam. 120 | 3398
K’s Law – The ebook
A Polleriori
I have recently met several colleagues who told me they were readers of the blog. A few of them made me understand that there were too many posts. I have, therefore, launched another poll in order to know what the general feeling is. Please let me know how many posts you would like to have every week. Thanks.
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T 754/09 – Another Brick In The Wall
K’s Law – The ebook
T 754/09 – Another Brick In The Wall 1 Nov 2013
The application under consideration concerned a method for submitting a report on a business activity after receipt of a complaint. The decision adds another brick to the impressive wall of “technical or not” decisions. [5.3] The method of claim 1 (final two paragraphs) enables a proof that the user has transmitted specific data: (a) the receiver of the complaint data (i.e. the second server) feeds back a confirmation code to the source of the data; (b) the user’s authorship is verified by checking that the confirmation code works as a key to decrypt an encrypted version of the complaint data. Providing confirmation feedback from the receiver to the sender is a general aspect of usual acknowledgements of receipt. The application presents confirmations in the form of a decryption key or in the form of a code or number as largely equivalent means of proof […]. Decryption is a mathematical method which serves a technical purpose in a technical system where cryptography is used for data security. However, in claim 1, the decryption operation is used for proving the authorship of a document, which is a nontechnical, legal problem. Therefore, the intrinsically non-technical, mathematical method of decryption cannot derive a technical character from the problem solved (T 1227/05 [3.1]). Thus, providing and using the decryption key for fulfilling a legal verification task does not enter into the examination for an inventive step. It is not always easy for outsiders like me to understand the borderline between what is considered technical and what is not. Moreover, the Boards appear not to agree with each other. In T 1326/06, for instance (reported and translated here), Board 3.5.06 had found that “methods for encrypting/decrypting or signing electronic messages have to be considered to be technical methods, even if they are essentially based on mathematical methods.” Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 15/10 – Fishy
K’s Law – The ebook
T 15/10 – Fishy 31 Okt 2013
Patents are fun, not least because of the surprising things that may be claimed. Claims 1 and 14 of the only request on file read: 1. A method of testing an avian for its predisposition for fishy taint in eggs comprising analyzing the nucleic acid of a sample comprising the gene encoding FMO3 or a corresponding mRNA for a nucleotide polymorphism which is linked to said predisposition, wherein a difference from the wild-type FMO3 sequence is indicative of fishy taint, said difference being the presence of a serine codon in a position corresponding to position 329 of chicken FMO3 as shown in SEQ ID NO: 25 or in a homologous position of other avian FMO3 (poly)peptides. 14. A method for selecting an avian or part of an avian, including their semen or eggs, comprising the steps of: (a) testing for a predisposition for fishy taint in eggs comprising the steps of the method of anyone of claims 1 to 13; (b) selecting the avian based on the information derived from said testing; and (c) optionally, using said information for further breeding considerations. Board 3.3.08 had to deal with an A 53(b) objection: [2] The [opponent] has raised an objection under A 53(b) in its letter 24 September 2013 sent in reply to the Board’s communication pursuant Rule 15(1) RPBA. The objection is raised against claim 14, which the [opponent] argued to be directed to an essentially biological process for the production of animals. [3] This objection has not been mentioned in the statement setting out the grounds of appeal, but the Board notes that the opposition was originally filed inter alia on the ground that the subject-matter of the patent was not patentable under A 53(b) […]. [4] The [opponent] has explained that it decided to raise the objection in view of the conclusion reached by the Enlarged Board of Appeal (EBA) in consolidated decisions G 2/07 and G 1/08 (see supra) with regard to the term “essentially biological” within the meaning of A 53(b). These decisions have been issued on 9 December 2010, ie. after the date of filing of the statement of grounds. [5] Using the discretionary power conferred to it by Article 12(4) RPBA the Board, considering that this explanation justifies the late raising of the objection under A 53(b) in the appeal procedure, decides to admit the objection. [6] The [opponent] argues that it applies the conclusion reached by the EBA in decisions G 2/07 and G 1/08 (with regard to processes for the production in plants) to processes for the production of animals. It considers that the process of claim 14 qualified as a non-microbiological process for the production of animals that is excluded from patentability for being “essential biological” because it contains a step of crossing the whole genomes of animals and a step of selecting of animals. [7] The first question to be answered by the Board, before embarking on any further interpretation of the teaching of decisions G 2/07 and G 1/08, is whether claim 14 is actually directed to a process for the production of animals including a step of crossing the whole genomes of animals and a step of selecting of animals. [8] Claim 14, which is expressis verbis directed to a method for selecting an avian (or part of an avian), comprises two compulsory steps (a) and (b) which can be supplemented by a third step (c). Step (a) refers to testing the avian or part thereof for predisposition for fishy taint in eggs. It is carried out using the method of claim 1 or claims dependent thereon. Step (b) concerns selecting the avian based on the conclusions drawn from the results of step (a) and step (c) concerns the use of these conclusions for further breeding considerations which may be breeding management considerations such as the propagation, culling and feeding of animals […] or the exclusion of animals with a predisposition to produce eggs with fishy smell from breeding programs […]. 123 | 3398
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K’s Law – The ebook
[9] This analysis clearly shows that claim 14 is not at all directed to a method of production of animals, let alone to a method comprising a step of crossing the whole genomes of animals. It features a method which provides information useful to manage animals depending on their predisposition to produce eggs with fishy odour or to pass on to the offspring specific alleles or variants of a gene responsible for developing such a phenotype […]. [10] The [opponent’s] argument is therefore not convincing and, consequently, claim 14 meets the requirements of A 53(b). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2051/10 – No Mistake
K’s Law – The ebook
T 2051/10 – No Mistake 30 Okt 2013
In this case the patent proprietor filed amended claims directed at a rinse aid (Klarspülmitel) in which one particular hydrocarbon radical was “optionally” substituted by hydroxyl groups. This amendment was said to be a correction; the Druckexemplar was filed as supporting evidence. The Board did not endorse this approach. *** Translation of the German original *** [2] The [patent proprietor] has invoked an erroneous discrepancy of the wording of claim 1 as granted with respect to the text of the Druckexemplar and has requested a “correction” of this discrepancy without indicating any corresponding legal basis. The requested “correction” has already been carried out in claim 1 according to the main request and the auxiliary requests 1 to 3 and 5. [2.1] However, neither R 139 nor R 140 allow for a “correction” of the granted patent as desired by the [patent proprietor] (see G 1/10 [order, as well as point 1 and points 10 and 11 of the reasons in connection with point VII.2 of the summary of facts and submissions]. This notwithstanding, the Board notes the following in respect of the corresponding submissions of the [patent proprietor]: [2.1.1] According to claim 1 of the Druckexemplar sent together with the communication pursuant to R 71(3) dated December 14, 2007, including pages 27 to 29 (claims) dated November 19, 2007, the radical R² is only “optionally” substituted by 1 to 5 hydroxyl groups. [2.1.2] In response to said communication the applicant has, of its own motion, filed, in a letter dated March 17, 2008, new claims in the three official languages. Claim 1 (in all official languages) was inter alia amended, with respect to the version contained in the Druckexemplar, in that the radical R² now is - mandatorily - substituted “by 1, 2, 3, 4 or 5 hydroxyl groups”. [2.1.3] In a short communication of the Examining Division dated April 9, 2008, the Office informed the applicant that its request had been granted and that the documents had been amended by replacing [the pages on file] by the amended pages. [2.1.4] Thus [the Board] does not understand why the patent specification EP 1 509 588 B1 is said to contain an “error”. [2.2] Therefore, in what follows the Board treats even the requests claim 1 of which contains the amendment which has been referred to as “correction” by the [patent proprietor] as “normal requests” for an amendment pursuant to A 123(1) (cf. G 1/10 [13]). Obviously, all the “corrected” requests where then dismissed based on a violation of A 123(3). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 584/09 - A Waste Of Time?
T 584/09 - A Waste Of Time? 29 Okt 2013
A kind colleague has informed me that Board 3.3.01 has now issued its final decision in case T 584/09. In this case the opponent filed an appeal after the Opposition Division had maintained the patent in amended form. In its first decision, dated February 3, 2011, Board 3.3.01 revoked the patent. The Enlarged Board of appeal (EBA), in its decision R 21/11, set aside the decision because the deciding Board had not been aware of a request (to admit expert opinion D27) and, therefore, had ignored it. The EBA dismissed the request to have the case decided by the Board in a new composition, but as the former chairman had retired, the remaining former members recused themselves and the Board accepted this in its second decision of March 1, 2013. In its third decision, dated June 10, 2013, the Technical Board now again revoked the patent. This time document D27 was admitted, but it appears not to have played any role in the decision. So this is another case where a petition for review is successful but in the end, it is not really worth the time and effort: außer Spesen nichts gewesen. What do we learn from this? In my opinion, before you file a petition for review, you should consider not only (a) if there are any good reasons for the EBA to allow the petition (which is rare), but also (b) if so, if this is likely to lead to a different outcome. I Should
guess you
not wish
many to
download
cases
will
pass
the
whole
decision
The file wrapper can be found here.
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this (in
two
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stage just
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T 2509/11 – It’s Up To The Director
K’s Law – The ebook
T 2509/11 – It’s Up To The Director 28 Okt 2013
This is another examination appeal where the Board found a decision “based on the current state of the file” to be insufficiently reasoned. There is an interesting final remark on the composition of the Examining Division (ED). [3] It is established jurisprudence of the Boards of Appeal that for a decision to be reasoned it must contain a logical sequence of arguments and that all facts, evidence and arguments essential to the decision must be discussed in detail (see for instance T 278/00 [2-4]; T 1997/08 [4]). [4] The Boards of Appeal have consistently decided further that a request for a decision based on the current state of the file does not mean that the party gives up its right to a reasoned decision (see T 1356/05 [15]; T 1309/05 [3.7]). It simply means that the party does not wish to further comment on the case. [5] It follows from the above that, if a decision is to be reasoned by reference to one or more previous communications, the requirement of R 111(2) is only met if the referenced communications themselves fulfil the above mentioned requirements. The decisive reasons for refusal must be clear to the appellant and to the Board of Appeal from the reference. This applies, in particular, if reference is made to more than one preceding communication, dealing with different issues and/or having as basis different sets of claims. A complete chain of reasoning has to be directly derivable from the referenced communications and it must not be left to the Board and the appellant to speculate as to which part of an incomplete reasoning given in preceding communications might be essential to the decision to refuse the application (see T 963/02 [2.1]). [6] With its fax of 8 November 2010 the applicant withdrew its auxiliary request for oral proceedings (OPs) and requested an appealable decision according to the state of the file […]. The decision to refuse the application is of a standard form and as such neither specifies the grounds upon which it is based, nor contains any facts, evidence or arguments that justify the refusal of the application. It contains solely a reference to three communications, namely those of 10 September 2008, 10 March 2009 and 28 July 2009 issued in the course of the examination of the application, each of these communications having as basis different sets of claims […]. [7] The above has the consequence that, in order for the Board to be in the position of reviewing the decision under appeal, it would have to examine each of the cited communications for the facts, evidence and arguments that might support the refusal of the application and would have to piece the relevant parts together to arrive at the reasoning applicable to the present main and first auxiliary requests. [8] As far as it concerns independent claims 1 and 9 according to the main request refused by the ED the Board finds as follows. [8.1] According to the second and third communication […] the subject-matters of independent claims 1 and 9 according to the main request distinguish themselves from the carton disclosed in D2 by the “gusset panel feature” and the “diamond corner panel feature”. The fourth communication merely confirms the previous two communications. Neither communication clearly sets out what feature it actually considers distinguishing as the “gusset panel feature”, nor which features constitute the “diamond corner panels feature” that is distinguishing. [8.2] The Board notes that the Guidelines for Examination in the EPO applicable at that time (versions December 2007 and April 2009), see C-IV, 11.7, first paragraph state that “in order to assess inventive step in an objective and predictable manner, the examiner should normally apply the so-called “problem-and-solution approach””. In this approach it is required to establish the closest prior art, the difference(s) of the claimed invention over this closest prior art and the objective problem to be solved. The latter means the aim and the task of modifying or adapting the closest prior art to provide the technical effects that this (these) difference(s) provide(s) over the closest prior art. When several distinct differentiating features dealing eventually with different technical problems are recognised it has to be assessed whether a synergistic effect exists between said differentiating features. If this is not the case also that aspect should be reasoned. [8.3] No such “problem-and-solution-approach” can be deduced from these two communications. They do not properly cite the distinguishing features, nor the effects obtained thereby. Further, as regards the “gusset panel 127 | 3398
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feature” the ED does not provide any (documentary) basis for its allegation that the skilled person would obviously provide them for obtaining a liquid-tight bottom, nor does it refute the hindsight-argument of the appellant. As regards the “diamond corner panels feature” it only provides the information and the statement that the skilled person would provide such for a better contact between the container walls and the bottles. None of the communications discusses the possible relationship between these two features, none deals with the appellant’s argument that there is a combinatory (synergistic) effect of these two features. [8.4] As a result the Board can only establish that what it can “piece together” from the communications falls definitely short of a proper reasoning on lack of inventive step where two distinguishing technical features are concerned. [9] As far as it concerns the independent claims 1 and 8 according to the auxiliary request refused by the ED the Board finds as follows. [9.1] Again, the distinguishing features are not properly defined, in particular the further feature that the “liquidtight bottom receptacle is formed from a continuous section of folded material of a blank and comprises a portion of the carton having an upper border below which no glued seams are formed” is nowhere mentioned. [9.2] Again, no “problem-and-solution-approach” is presented. This counts in particular for the additional feature of the absence of glued seams below an upper border in the liquid-tight bottom of the carton. [9.3] As a result, also this falls short of a proper reasoning on lack of inventive step where two (or even three) distinguishing features are established. [10] The impugned decision is therefore at odds with the well established principle that, for a decision to be reasoned within the meaning of R 111(2), it must be self-contained, i.e. it must include all and each of the facts, evidence and arguments that are essential to the decision, and provide a chain of reasoning that is complete. [11] In the Board’s judgment, this de facto absence of reasoning in the appealed decision amounts to a substantial procedural violation. Such a procedural violation requires that the decision under appeal be set aside and the case remitted to the department of first instance in application of A 111(1) and Article 11 RPBA. [12] Although the appellant has not requested reimbursement of the appeal fee, the Board considers it in the present case to be equitable that the appeal fee be reimbursed, R 103(1)(a). Further prosecution [13.1] The Board takes note of the appellant’s argument that the statement in the last sentence of the ED’s fourth communication that OPs are deemed to be time consuming while not leading to grant “makes the responsible examiner appear prejudiced with regard to arguments to be discussed during the hearing and thus suspected of partiality”. [13.2] In the last sentence of its fifth communication the ED invites the applicant to file independent claims “with an independent claim distinguished from the prior art”. This invitation does not appear to be helpful in view of the fact that the appellant, by then, had filed independent claims which – as acknowledged by the ED – were already distinguished from the prior art by two, if not three, different features. [13.3] In view of the above and with respect to the applicant’s request dated 3 December 2009 to exclude the primary examiner from the further proceedings the Board wishes to make reference to decision T 71/99. In point [4] of the reasons it is observed that it follows from A 10(2) (a) and (i) that the organisation of the (examining and opposition) divisions is under the responsibility of the President of the office, who in practice delegates this power to the director via the responsible vice-president and principal director. Therefore, it is the responsible director who should consider whether the appellant’s request for a change in composition may be justified in view of the procedural history of the present case and the remarks made in the communications with respect to the chances of success for the application when holding OPs: “The applicant has the choice of a decision according to the state of the file as an alternative to OPs, which are deemed to be time consuming on both sides while not leading to grant”. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1735/08 – In Its Own Time
K’s Law – The ebook
T 1735/08 – In Its Own Time 25 Okt 2013
This decision deals with the following request for correction of the minutes of the oral proceedings (OPs) before the Board of appeal, filed on July 12, 2012:
The Board explained that it did not see any reason to correct the minutes. The opponent replied as follows, on September 19, 2012:
Here is what the Board had to say on that matter: *** Translation of the German original *** [1] Contrary to the opinion of the respondent/opponent 3, as far as the contents of minutes of OPs are concerned, the relevant legal basis is exclusively R 124(1). Accordingly the minutes shall inter alia contain the legally relevant (rechtserheblich ; NB: R 124 in its English version has only “relevant”) statements made by the parties. [2] In the present context, the decisions of the Board, the operative part (Tenor) of which is incorporated into the minutes of the OPs, and the reasons of which are to be provided later on, are also [considered to be] legally relevant. However, in application of R 124(1) it is not required, nor is it customary in proceedings before the Board of appeal of the EPO, to introduce into the minutes that the Board has expressed a provisional opinion on [compliance with] the patentability requirements before announcing the decision. [3] When, as here, the decision orders the impugned decision to be set aside and the case to be remitted to the first instance for further processing, the indication of the set of claims and the reasons, why the Board is of the opinion that this set of claims, which forms the basis for the further decision of the first instance, does indeed comply with certain requirements governing patents (Patentierungs-voraussetzungen) (such as A 123(2) in the present case), are not given in the order of the decision or in the minutes of the proceedings but in the reasons for the decision. This way of proceeding corresponds to the requirement that the operative part of the decision (Entscheidungsformel) be concise. 129 | 3398
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K’s Law – The ebook
[4] Moreover, the operative part given in the minutes exactly corresponds to the text […] read out by the chairman of the Board during the OPs after the factual debate had been closed. [5] Insofar as the respondent/opponent 3, in its letter dated September 19, 2012, justifying the request for correction of the minutes, refers to a passage annexed to the summons to OPs and dated March 20, 2012, this [submission] cannot be successful because, as clearly and unambiguously stated at the beginning of the communication, this is a provisional and non-binding opinion the purpose of which is to prepare the OPs. […] The request for correction of the minutes of the OPs is dismissed. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1518/11 – Too Late
K’s Law – The ebook
T 1518/11 – Too Late 24 Okt 2013
In this examination appeal the appellant withdrew the appeal … too late. [2.1] After the board had announced its decision to dismiss the appeal against the refusal of the application in suit and closed the oral proceedings (OPs), the appellant stated by letter dated 23 August 2013 that the appeal was withdrawn. However, since the decision had been announced at the OPs held on 13 August 2013 and thereby became effective on that day, the appeal proceedings are terminated (T 843/91 [10]). Given that by virtue of the board’s decision the refusal became final and no appeal lies from decisions of the boards, the appellant’s submission made after the announcement of the board’s decision is without any legal effect. [2.2] Furthermore, a statement of withdrawal of appeal made by the (sole) appellant after the final decision of the board has been announced at OPs does not relieve the board of its duty to issue and notify to the appellant the decision in writing setting out the reasons for the decision (T 1033/04 [3]). The booklet “Overview of the appeal proceedings according to the EPC” by Meinders, Beckedorf and Weiss – which I find very useful – has an interesting passage on withdrawals in the course of appeal proceedings (p. 48): “… Another situation which may make withdrawing the appeal an interesting option for an appealing applicant/patent proprietor is when the Board has issued a summons with a preliminary opinion making clear that the appeal has little chance of success. If they are the sole appellant, withdrawing the appeal at that stage will lead to immediate termination of the appeal proceedings (except where a decision on the apportionment of costs in oppositionappeal proceedings is necessary), with no written reasoned decision being issued. Thus, negative effects elsewhere for family members of the application or patent may be avoided. This is the principle of party disposition in appeal, i.e. the party determines whether, what and to what extent it is appealed and how the appeal proceedings are pursued. Such a situation may even arise as late as at oral proceedings before the Board. However, in that case the withdrawal of the appeal must take place before the Board has announced the decision. In written proceedings, such a withdrawal has to take place before the Board has delivered its decision to the internal post, i.e. the party should enquire with the Registry of the Board about the status of the case.” (my emphasis) Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 500/11 – You May Pick It
K’s Law – The ebook
T 500/11 – You May Pick It 23 Okt 2013
Claim 1 of the auxiliary request before the Board read: 1. Method for the production of trichlorosiliane by reaction of silicon with HCl gas at a temperature between 250° and 1100°C, and an absolute pressure of 0.5 – 30 atm in a fluidized bed reactor, in a stirred bed reactor or in a solid bed reactor, characterised in that the silicon supplied to the reactor contains between 550 and 10 000 ppm chromium. (my emphasis) Claim 1 as granted (and of the main request) was identical, only the lower limit of the chromium content was different (50 ppm). However, the Board had found this claim to lack novelty over document D1, which disclosed a range of 5 to 200 ppm. In what follows, the Board examines compliance of the auxiliary request with A 123(2): [3.1] The amendment in claim 1 at issue corresponds to the restriction of the range “between 50 to 10000 ppm of chromium” by the lower end value of 550 ppm. It is uncontested that there is a literal basis for this specific value in example 3 of the patent in suit, however not in combination with the other features of amended claim 1 under dispute. [3.2] [The opponent] argued that the amendment consisted of an inadmissible intermediate generalisation in the sense of T 962/98, because the feature 550 ppm Cr was inextricably linked to the other features of the process according to example 3 – namely the type of reactor, the pressure and temperature, the particle size and the contact time – and thus this specific value could not be arbitrarily extracted from its context. [The opponent] referred also in this respect to paragraph [0003] of the patent which disclosed that the “selectivity and reactivity will depend strongly on the process temperature when silicon and HCl is reacted”. This would make clear that the temperature was a feature which was inextricably linked to the selectivity to TCS. [3.3] The question to be answered now is whether the feature “550 ppm Cr” is inextricably linked to the other features defined in Example 3 of the patent in suit. The board observes in this respect that there is no doubt that not only the concentration of chromium has an influence on the selectivity of TCS but also other parameters too, such as e.g. the particle size, the pressure, the temperature, and the contact time in the reactor. All these features however are parameters which may be varied individually and each of these variations would necessarily lead to a different result on the selectivity to TCS. If the feature “550 ppm chromium” was inextricably linked to specific other parameters of Example 3, this would mean that the selectivity to TCS would only be achieved in the definite combination of “550 ppm chromium” with the specific other parameters of example 3. This however is manifestly not the case here. Moreover, according to paragraph [0020] of the patent in suit, the addition of chromium to silicon is described very generally as improving the selectivity to TCS in the reaction of silicon with gaseous HCl. It follows from the above considerations that the different parameters, and in particular those in Example 4, can be varied independently one from another and that there is no reciprocal relationship, which would imply that the concentration of chromium is part of an entanglement in which a variation of the other parameters is not allowed. [3.4] The question at issue was already addressed in several decisions, in particular in T 273/10 or T 962/98, to which the board refers in the following paragraphs. [3.4.1] According to T 962/98 [2.5], an intermediate generalisation would be admissible if the skilled person could recognise without any doubt from the application as filed that the characteristics taken from a working example were not closely related to the other characteristics of the working example and applied directly and unambiguously to the more general context. [3.4.2] In decision T 273/10 [14.2-3], a claim amended by inclusion of a bundle of features extracted from a specific embodiment had been found allowable because the bundle of features proposed as an amendment 132 | 3398
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comprised all the features essential for the performance of the invention. Further, according to T 273/10, those features of the embodiment which did not contribute to solving the problem underlying the invention did not have to be part of the claimed subject-matter resulting from the amendment. [3.4.3] In the case at issue, as explained in point [3.3] above the aim of the invention – namely increasing the selectivity to TCS – is merely achieved by addition of selected amounts of chromium to silicon and thus this feature is not “closely related to the other characteristics of the working example and applies directly and unambiguously to the more general context” as required in T 962/98. [3.4.4] The present decision is also in line with decision T 273/10 since the proposed amendment comprises the feature essential for the performance of the invention, namely a certain amount of chromium, and moreover those features of the embodiment which do not contribute to solve the problem underlying the invention are not part of the claimed subject-matter resulting from the amendment. [3.5] It follows from the above considerations that the gain of selectivity is solely due to the presence of chromium in the silicon feedstock, and that the picking out of the value 550 ppm from the working example 3 is therefore plainly acceptable in the case at issue, with the consequence that claim 1 of this request meets the requirements of A 123(2). Dependent claims 2 to 6, which have a basis in the corresponding dependent claims 2 to 6 of the application as filed, also meet the requirements of A 123(2). I for one am not very comfortable with the fact that isolated values taken from examples may become boundaries of claimed ranges, which I consider to be a completely new teaching, but there seems to be some consensus that this is alright. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 518/10 – Three In A Row
K’s Law – The ebook
T 518/10 – Three In A Row 22 Okt 2013
This decision is interesting on several counts; you might want to have a look at the discussion of the burden of proof regarding sufficiency of disclosure (point [7] of the reasons). In what follows, you will find two passages concerning the patent proprietor’s request for a postponement of the oral proceedings (OPs) as well as a related A 106 objection. Request for postponement of OPs [2.1] With letter of 21 February 2013, the [patent proprietor’s] representative requested postponement of OPs scheduled for 9 April 2013 for the reasons that he was summoned to three OPs before different boards on three consecutive days preventing him from adequately preparing each case. As a further and more serious reason, the representative referred to an explosion at the production plant of the [patent proprietor], which had restricted the contact with his client thereby making it almost impossible to adequately deal with the present case. [2.2] Both [opponents] objected to a postponement arguing that the [patent proprietor’s] representative had already been aware of the three hearings on three consecutive days by mid-December 2012. Furthermore, they submitted that, judging from the various activities of the [patent proprietor] in other patent matters, the [patent proprietor] was obviously not prevented by the explosion in dealing with those matters. The [opponents] believed that the [patent proprietor’s] request was a deliberate attempt to postpone a decision, “which could harm there global legal and public relation position”. [2.3] According to Article 15(2) RPBA, the board has the discretion to exceptionally allow a change of date for OPs. Examples for circumstances that can be taken into account in exercising this discretion are given in the notice of the Vice-President of DG3 dated 16 July 2007 concerning OPs (OJ EPO 1/2013, Supplement, pages 68 to 69, hereinafter “the Notice”). Furthermore, in addition to the [patent proprietor’s] interest, the board has also to take into account the internal organisational burden of the board and the interest of other parties concerned, such as the [opponents] in the present case or parties in other appeals, since any postponement of a hearing in a specific case may cause delay in other proceedings. [2.4] Article 15(2) RPBA and point 2 of the Notice state that the request to fix another date shall be filed as soon as possible after the grounds preventing the party concerned from attending OPs have arisen. The board observes that the [patent proprietor’s] representative became aware of the fact that he was summoned to OPs on three consecutive days in December (date of acknowledgement of receipt of the third summons in the appeal T 1902/09 is 20 December 2012). Accordingly, if he was of the opinion that this situation adversely affected his professional duties to his clients, he could and should have filed a request for postponement immediately. No satisfactory reason was provided as to why the representative had waited two month to file the request. Furthermore, since the summons in T 1902/09 was received after the summons in the present case, a request for postponement should have been made for the former. [2.5] According to point 2.3 of the Notice, every request for fixing another date for OPs should contain a statement why another representative cannot substitute for the representative prevented from attending (which was strictly speaking not the case here, since there was no actual clash of dates). The board notes that the [patent proprietor] has signed a general authorisation to Elkington and Fife LLP, and the representative has not provided convincing reasons as to why no other representative of Elkington and Fife LLP could substitute for the representative. [2.6] The board also did not see sufficient reasons as to why the explosion in the [patent proprietor’s] firm impeded OPs from taking place on the scheduled day. It was appreciated that patent matters might not be amongst the most pressing issues after such a tragic event. However, the explosion occurred at the beginning of November 2012 and, according to the representative’s submission, on 3 December 2012, Mr Huart, the General Counsel of the [patent proprietor], was informed of the 134 | 3398
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summons to OPs for the beginning of April. If there had been concerns that this date would pose a problem for the [patent proprietor], a request for postponement of OPs should have been filed immediately. Furthermore, the representative had apparently established contact with his client on 20 February 2013, and no clear and convincing reasons were provided as to why adequate preparation for the OPs as scheduled would not be possible with still six weeks to go, in particular since the board’s communication sent with the summons had not changed the relevant legal and technical framework and it could therefore be legitimately expected that the [patent proprietor] had previously made its complete case as required by Article 12(2) RPBA. [2.7] For the aforementioned reasons, the board was not satisfied that the [patent proprietor’s] interest for a postponement should, exceptionally, outweigh the interests of other parties and the public. Accordingly, the request for postponement was refused and the date of the OPs maintained. […] Objection under R 106 and A 112a(2)c) [8.1] At the end of the OPs, the [patent proprietor] raised an objection under R 106 alleging that its right to be heard under A 113(1) had been violated. It argued that, by refusing its request for postponement of the OPs and not admitting documents E55, E56 and E60 into the appeal proceedings, the board had denied the [patent proprietor] an adequate opportunity to prepare OPs and to properly present its case. [8.2] The board notes at the outset that the objection pursuant to R 106 was raised by the [patent proprietor] towards the end of OPs after the board had informed the parties of its negative opinion regarding sufficiency of disclosure of the subject-matter claimed in claim 1 of auxiliary request 3. The objection, however, pertained to alleged procedural defects that had arisen in the proceedings several hours (the refusal to admit documents E55, E56 and E60 into the appeal proceedings) and even several weeks before (the maintenance of the date of OPs by communication of 6 March 2013). The board is aware that R 106 lays down an admissibility requirement for a petition of review the examination of which is within the jurisdiction of the Enlarged Board of Appeal. Nevertheless, the point in time at which an objection is raised affects the alternatives of responses available to the board concerned. As the Enlarged Board has consistently held, the requirement pursuant to R 106 to raise an objection should enable the board confronted with the objection to react immediately and appropriately by either removing the cause of the objection or, as provided in R 106, by dismissing it (R 4/08 [2.1]; R 14/11 [2.5-6] with further references). With respect to the issue of postponement of OPs, the board had no other option than to dismiss the objection, since at the end of a full day of OPs the board was unable to revert to its communication of 6 March 2013 to maintain the date of the OPs. The [patent proprietor] should have raised any objection against this communication immediately after notification of said communication (see R 3/08 [1.4]; R 9/09 [1.5]). As regards the refusal to admit documents E55, E56 and E60 into the appeal proceedings, the board informed the parties before lunch of its conclusion on this issue. At that point in time, the [patent proprietor] should have been aware of any possible impairment of its capability to fully argue its case for auxiliary request 3 with regard to the issue of sufficiency of disclosure. By adopting a wait-and-see attitude, the [patent proprietor] constrained the board’s possibilities to react to the objection raised subsequently under R 106. However, these preliminary considerations were not decisive for dismissing the objection. The board’s reasons are as follows: [8.3] The decision to change the date of OPs is within the authority and discretion of the board (Article 15(2) RPBA). It may or may not be exercised in the favour of the party requesting it, based on the circumstances of the case and the reasons provided by said party. In the present case, the board, in view of the arguments that were submitted by the parties, was not satisfied that a change of date was justified and, informing the parties of its reasons by fax and post on 6 March 2013, refused the [patent proprietor’s] request […]. In particular, the board noted that the explosion at the [patent proprietor’s] factory had already occurred one month before it had received the summons and that no satisfactory reasons had been provided as to why the request was filed only one and a half month before OPs were scheduled to take place. The board moreover observed that the [patent proprietor’s] representative had failed to provide clear reasons as to why the remaining time was not sufficient to prepare for the OPs. The [patent proprietor] in its subsequent letter dated 8 March 2013 did not contest the board’s refusal of the request for postponement of the OPs and made no attempt to sustain or supplement its request for postponement by filing additional arguments or documents. Neither in the [patent proprietor’s] letter of 8 March 2013 nor 135 | 3398
T 518/10 – Three In A Row
K’s Law – The ebook
during OPs did it raise, much less substantiate, objections that the board had exercised its discretion according to the wrong principles, or without taking into account the right principles or in an unreasonable way. Furthermore, the [patent proprietor] was aware of the issues under dispute since the beginning of the appeal procedure. It had ample opportunity to provide all the necessary facts, evidence and arguments at a much earlier stage of the proceedings, but decided not to do so. The board is therefore of the opinion that its discretionary decision not to change the date of the OPs, did not violate the [patent proprietor’s] right to be heard under A 113(1). For the sake of completeness, the board notes that the [patent proprietor] had an adequate opportunity to submit arguments regarding the issue of postponement. There was thus also no denial of the right to be heard in arriving at the decision. [8.4] Concerning documents E55, E56 and E60, the board notes that the question of their admission was discussed at the OPs. During this discussion, the [patent proprietor] was not limited in its pleadings and was able to fully present all its arguments as to why it considered their admission into the appeal proceedings justified. This was not contested by the [patent proprietor]. Its objection was rather directed to the fact that the board did not exercise its discretion in the [patent proprietor’s] favour. The board notes that, in inter partes proceedings, each party has an obligation to take an active part in the proceedings and to provide facts, evidence and arguments to support its case as early and as completely as possible (R 13/11 [18]; R 2/08 [9.10]; R 12/12 [6]). As set out in point 4.2 above, any amendment to a party’s case after it has filed its grounds of appeal or reply is not a matter of right, but lies within the discretionary power of the boards of appeal, which is exercised with due considerations of the relevant circumstances of the case (Article 13(1) RPBA). In the board’s opinion, Article 13 RPBA is not in contradiction with a party’s right to be heard according to A 113(1), even when amendments to a party’s case are not taken into consideration. It is at the discretion of the boards, in the interest of a fair and reliable conduct of the proceedings as well as procedural economy, not to take into account submissions of a party, which has failed in its obligation to properly advance the proceedings, provided that the party concerned has been given adequate opportunity to present its case, yet for reasons for which it alone is responsible, has not made adequate use of this opportunity. Furthermore, the admission of a late-filed submission of a party should not lead to the opposing party being at a disadvantage in exercising its right to present its case in the time available. In the present case the [patent proprietor] was aware of possible deficiencies in its case right from the beginning of the appeal proceedings. It had reasons and adequate opportunity to present the necessary evidence at a much earlier stage of the proceedings, but decided not to do so, to the disadvantage of the [opponents], who were confronted very late in the proceedings for the first time with an attempt to overcome an issue, which was already decisive for the decision under appeal and which was again addressed in the [opponents’] replies. Furthermore, the board notes that an objection that the board had exercised its discretion arbitrarily has not been advanced, let alone substantiated by the [patent proprietor]. Since the [patent proprietor] had adequate opportunity to comment on all relevant points related to the question of admission of documents E55, E56 or E60 before the board decided on their admission into the appeal proceedings, the board is of the opinion that the [patent proprietor’s] right to be heard had not been violated. [8.5] The objection under R 106 was therefore dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 184/11 – Advertising It Is
K’s Law – The ebook
T 184/11 – Advertising It Is 21 Okt 2013
The present appeal was filed by the patent proprietor after the Opposition Division (OD) had maintained the opposed patent in amended form. One of the issues discussed by the Board was the public availability of one of the documents which the OD had considered to be part of the prior art pursuant to A 54(2). *** Translation of the German original *** [3.1] The [patent proprietor] held the view that document MF1 was not an advertising booklet (Werbebroschüre) but a product data sheet, so that, according to the case law of the Boards of appeal (T 278/09 and T 804/05) one could not assume that document had been broadly distributed (allgemein verteilt).
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T 184/11 – Advertising It Is
K’s Law – The ebook
According to the case law of the Boards of appeal it is not sufficient to merely weigh the probability of the public availability of an allegedly novelty-destroying product data sheet, the public availability of which is only based on assumptions (see T 278/09 [1.3.1]). Thus at first it has to be clarified whether document MF1, which had been filed in its original form (and not sealed in stiff foil) during the appeal proceedings, is an advertising brochure or a product data sheet. [3.2] The Board is of the opinion that a product data sheet provides information on newly developed or improved products rather than on the marketing of a product; therefore, its information content is different from what is found in an advertising brochure (cf. also T 278/09 [1.3.1]). The [Board] agrees with the [opponent] in that document MF1 does not contain any detailed technical data such as the indication of dimensions, distances and gaps allowing the installation of or the conversion to an automatic fifth wheel, but only technical information of a general nature. Like the [opponent], the Board understands the indication “ECHANGE SEMI = 1 Minute!” on the front sheet of MF1 to be a clear further indication that the document MF1 merely contains advertising information for potential customers. This is also corroborated by the images and the indication of the contact details of the Serma company. Thus the Board, very much like the OD, comes to the conclusion that document MF1 is an advertising brochure. [3.3] As the present situation concerns an advertising brochure, the OD was justified in applying decision T 804/05 which also dealt with the public avaiability of an advertising brochure. In this decision (see point [2] of the reasons) decision T 743/89 was considered to be relevant for deciding when the advertising brochure was made available to the public. As far as the standard of proof for the assessment of evidence is concerned, T 743/89 applied decision T 381/87, in which the competent Board had decided that in relation to an issue of fact when a document was first made available to the public, [the EPO] had to decide what was “more likely than not” to have happened having regard to the available evidence, on the balance of probabilities, and that this was the normal standard of proof in proceedings of this nature (see point [4.4] of the reasons). Therefore the Board is of the opinion that in the present case the OD, based on decision T 804/05, in the end has applied the principles of decision T 381/87 and thus applied the balance of probabilities. In decision T 750/94, which has also been cited by the [patent proprietor], there is also a reference to decision T 381/87, followed by this statement: “When an issue of fact is being examined and decided by the EPO on the balance of probabilities, the more serious the issue the more convincing must the evidence be to support it. If a decision upon such an issue may result in refusal or revocation of a European patent, for example in a case concerning alleged prior publication or prior use, the available evidence in relation to that issue must be very critically and strictly examined. A European patent should not be refused or revoked unless the grounds for refusal or revocation (that is, the legal and factual reasons) are fully and properly proved.” (see headnote 1 and point [4] of the reasons). There is no indication in the reasons of the impugned decision that the OD has not critically and strictly examined the available evidence. For the above reasons [the Board] cannot endorse [the assertion of] the [patent proprietor] according to which the OD has not applied the principles developed in the case law of the Boards of appeal in its decision. [3.4] The OD also provided reasons why, based on the indications contained in the advertising brochure, the original of which had been submitted to it, it has reached the understanding that this brochure had to be considered to have been made available to the public before October 16, 1996. The Board shares its opinion that in particular the additional indication “A PARTIR DU 16 OCTOBRE 1996 FUTUR NUMERO: INDICATIF (04)” [as of October 16, 1996, future [telephone] number: dialling code (04)] it was possible to assume that the advertising brochure was distributed before October 16, 1996, or at least shortly after that date and, therefore, long before the priority date of the patent in suit (May 14, 2004). Moreover, the indication “Réf. 10 95” on the left margin of MF1 appears to be the date of printing rather than a product number, because October 1995 is one year before the above date of October 16, 1996, which means that a printing date “October 1995” fits into the timing and is, in the opinion of the Board, very likely. As document MF1 makes clear that this advertising brochure was made available to the public before the priority date of the patent in suit, the evidence MF4 to MF7. This is all the more true because there is nothing in this evidence which would contradict the above conclusion of the Board. Therefore, it was not necessary to hear the witness, which had been offered. [3.5] For the above reasons the Board sees no good reason to criticize the decision of the OD according to which document MF1 was part of the state of the art within the meaning of A 54(2) EPC 1973.
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T 184/11 – Advertising It Is
K’s Law – The ebook
Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 184/11 – A Sleeping Beauty
K’s Law – The ebook
T 184/11 – A Sleeping Beauty 18 Okt 2013
The present appeal was filed by the patent proprietor after the Opposition Division had maintained the opposed patent in amended form. The opposition had been filed by Fontaine International Europe Ltd. (“Fontaine”). On April 8, 2013, the representative of the opponent requested the transfer of the opponent and respondent status to the parent company of Fontaine, a company called The Marmon Group Ltd (“TMGL”) as of December 31, 2010. Several letters were filed as evidence for the transfer. On April 18, 2013, the representative filed further evidence for the transfer, including an excerpt from a commercial register. Oral proceedings (OPs) were held on May 14, 2013. During the OPs, the representative of the opponent filed further evidence for the transfer. The decision has quite a lot to offer, so I have decided it to present it in two posts. Today we will have a look at the discussion of the transfer of the opponent status. *** Translation of the German original *** [2.1] The status as an opponent cannot be freely transferred. (G 2/04). The procedural position of the opponent can, as implicitly acknowledged in R 60(2) EPC 1973 and R 84(2), be transferred to the heirs, and accordingly the access of the universal legal successor to the opponent status is admissible (G 4/88 [4]). An opposition pending before the EPO may also “be transferred or assigned to a third party as part of the opponent’s business assets together with the assets in the interests of which the opposition was filed” (G 4/88 [order]). Therefore, from a legal point of view (rechtsgeschäftlich) a transfer of the party status in pending opposition or opposition appeal proceedings is only admissible if [the party status] is transferred together with the business assets (Geschäftsbetrieb) or the part of the company in the interests of which the appeal was filed (T 659/92; see also Case Law, 6th edition, 2010, VII.C.5.1). Contrary to the case of universal legal succession, however, the previous party to the proceedings remains entitled and legally obligated as long as the evidence concerning a legal transfer of the party status has not been provided and no corresponding request has been filed with the EPO, because the transfer of party status is only effective when it is requested and proven (see T 870/92 [3.1], which has been confirmed in many later decisions, such as T 956/03 cited by the [patent proprietor]; cf. T 1421/05 [3.3]; T 1137/97 [4] and T 1032/10 [1-3]). [2.2] In the present case the [opponent] was able to prove, by means of pages 1 to 4 extracted from the commercial register held by the state-owned office Companies House (B6) that at the time of the OPs before the Board of appeal the Fontaine company was being liquidated but had not yet been dissolved. As also argued by the [opponent], according to the applicable U.K. law, the Fontaine company, which was being liquidated was still existing as a legal person (“dormant company”). Thus the Fontaine company was still party [to the proceedings] at that time. Nor is there any indication that the professional representative could not represent the Fontaine company any more, because her authorisation had not been withdrawn by the Fontaine company or by a liquidator. [2.3] It is clear from the letter dated December 20, 2010, and the transfer agreement dated December 31, 2010, that the Fontaine company has transferred its business assets concerning the manufacture and sale of parts for the truck industry in Europe to TMGL immediately after its close of business on December 31, 2010. The Board is of the opinion that the “Excluded Assets” mentioned on page 3 of the agreement (B3) only comprise the share capital which the seller Fontaine held in the company Big D Fifthwheels & Landing Legs Ltd., and do not call into question the transfer of the above mentioned business assets. As the present case concerns plug-in coupling systems for connecting wires between a towing vehicle and a trailer, it can also be said that the opposition was filed in the interests of these business assets.
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T 184/11 – A Sleeping Beauty
K’s Law – The ebook
[2.4] The letters dated December 20, 2010, (B1) and January 19, 2011, (B2) as well as the extract from the commercial register held by the state-owned office Companies House (B4) prove that the company TMGL exists as an independent legal person. [2.5] It can also be seen from the letter dated January 19, 2011 (B2) that MHT Europe is not an independent legal person but only a commercial department of the TMGL company (“a trading division of TMGL”). This is also confirmed by page 5 of the extract from the commercial register held by the state-owned office Companies House (B6) because there is no company “MHT-Europe” mentioned in the alphabetic list of registered companies. A similar statement can be made for Fontaine Fifth Wheel and MHT (which is the abbreviation of “MARMONHIGHWAYTECHNOLOGIES”, as can be seen from the 2-page Internet printout B7) because there is no registration of those names on pages 1-3 and 5, respectively, of the extracts from the commercial register held by the state-owned office Companies House (B6). [2.6] For the above reasons the Board reaches the conclusion that the full evidence for a legal transfer of the opposition together with the business assets of the opponent and respondent Fontaine to TMGL as of October 31, 2010, has only been filed during the OPs before the Board of appeal and that, as a consequence, the request for a transfer of the party status of the opponent and respondent could only be allowed at that moment. Even though the request for a transfer of the party status and the documents serving as evidence were only filed at a very late stage of the appeal proceedings, the Board did not see any good reason not to take account of the request and the corresponding evidence. In particular, the Board could not endorse the opinion of the [patent proprietor] according to which decision T 956/03 had to be applied by analogy in such a way that in case of a transfer occurring before the expiry of the time limit for filing an appeal the evidence also had to be provided before the expiry of the time limit for filing an appeal. In decision T 956/03 the Board followed the established case law according to which a transfer cannot be acknowledged before the day on which appropriate evidence for the transfer has been filed (see T 956/03 [4] as well as point [2.1] above) and expressed [the opinion] that this was desirable for the sake of legal security in order to ensure that the identity of an opponent was known. In case T 956/03 the Board also had to decide on the admissibility of the appeal filed by one of the appellants which had claimed to be the legal successor of one of the opponents of the first instance proceedings without having filed corresponding evidence within the time limit for filing an appeal. The principle established in decision T 956/03 [7], according to which the entitlement of the [person] under consideration to replace the opponent also had to be established by filing the required evidence before the expiry of the time limit for filing an appeal if the transfer had taken place before the expiry of the time limit for filing an appeal, has to be seen in the light of that factual situation. The present case does not concern the question of whether the appeal filed by an alleged legal successor is admissible. Rather, the opponent who had taken part in the first instance proceedings at first acted as a respondent and the request for a transfer of the party status was only filed in the course of the appeal proceedings. As a consequence, the Board is of the opinion that an analogous application of the above mentioned principle to the present case is not justified. This is also in line with the case law of the Boards of appeal according to which the party status of the opponent in appeal proceedings can also be transferred to a third party after the expiry of the time limit for filing an appeal, independently of whether the opponent is the appellant or the respondent (see also T 670/95 [2]), as long as this does not make the admissibility of the appeal questionable. [2.7] Ultimately the opponent and respondent status has been transferred as of May 14, 2013, from the Fontaine company to TMGL, with whom the appeal proceedings were continued. These findings were communicated to the parties during the OPs held on May 14, 2013, subsequent to the corresponding discussion and the deliberation of the Board. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2289/09 – Unclear Yet Relevant
K’s Law – The ebook
T 2289/09 – Unclear Yet Relevant 17 Okt 2013
Claim 1 of the main request before the Board read: An apparatus (1) for a sorting system comprising an activating member (2), a fastening bracket (3), and a discharge arm (4) which at an end part (5) is pivotally connected with the fastening bracket (3) at a side (6) of a conveyor (7), where said discharge arm (4) by means of said activating member (2) is adapted for being swung between a passive position (9) approximately parallel to said side (6) of the conveyor (7) and a number of active angular positions (8) in relation to the conveying direction (A) of the conveyor (7), the activating member (2) being constituted by an electrically driven stepping motor or servomotor having a control unit being adapted for determining a pattern of motion and/or speed profile of the discharge arm (4), and that said control unit is a adapted for receiving at least one control signal from a number of sensors (16) being adapted for determining the lateral and longitudinal position of an item (11) on the conveyor (7), and which are operatively connected with the activating member (2), wherein said control unit is pre-programmed and adapted for utilizing said control signal from the sensors (16) for determining a pattern of motion and/or a speed profiler (correctly: speed profile) of the discharge arm (4) for causing the discharge arm (4) to lead the items (11) selectively to a predetermined discharge position among a number of discharge positions (B, C, D) along said side (6) of the conveyor (7). [1.3] In addition to the features of claim 1 as maintained present claim 1 comprises the group of features defining that (g) said control unit is pre-programmed and adapted for utilizing said control signal from the sensors (16) for determining a pattern of motion and/or a speed profile of the discharge arm (4) for causing the discharge arm (4) to lead the items (11) selectively to a predetermined discharge position among a number of discharge positions (B, C, D) along said side (6) of the conveyor (7). [1.4] Concerning the understanding of the group of features (g) it is common ground that these features encompass three alternatives concerning the control unit which is pre-programmed and adapted for utilizing the control signal from the sensors for determining (g1) a pattern of motion of the discharge arm (g2) a speed profile of the discharge arm and (g3) a pattern of motion and a speed profile of the discharge arm (combination of alternatives (g1) and (g2)) for causing the discharge arm to lead the items selectively to a predetermined discharge position among a number of discharge positions along the side of the conveyor. [1.5] Concerning the understanding of the alternatives (g2) and (g3) in the context of the group of features (g) and the combination of features (a) to (f) the meaning of the expression “speed profile” remained unclear, as asserted by the [opponent]. [1.5.1] The explanation given by the [patent proprietor] that the expression “speed profile” is linked to the speed and relative distance of adjacent items on the conveyor in conveying direction and the effect this has on the control of the discharging arm […] is, as indicated by the Board during the oral proceedings, in contradiction to the group of features (g) referring explicitly but also exclusively to a “speed profile of the discharge arm”. [1.5.2] The r[patent proprietor’s] explanation is, as likewise indicated by the Board during the oral proceedings, furthermore without any support in the disclosure of the patent in suit as will be discussed in the following concerning the compliance of the group of features (g) with the requirements of A 123(2). Admissibility of amendments in claim 1
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T 2289/09 – Unclear Yet Relevant
K’s Law – The ebook
[2.1] Although, as indicated above, the alternatives (g2) and (g3) remain without a clearly derivable meaning where is concerns the speed profile it has not been disputed that their introduction into claim 1 adds information to the teaching of this claim. The group of features (g) encompassing these alternatives thus cannot be ignored when examining these amendments under A 123(2). […] The patent was finally revoked because of non-compliance with A 123(2). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1212/11 – How To Treat Unsolved Problems
K’s Law – The ebook
T 1212/11 – How To Treat Unsolved Problems 16 Okt 2013
In this opposition appeal case, claim 1 before the Board read: 1. A process for producing metal powders comprising the steps of:
providing a hydride powder of a first metal being selected from the group consisting of tantalum, niobium and alloys of said metals with each other or one or both of them with other metals, the hydride having an oxygen content of under 300 ppm; mixing said metal hydride with a metal having a higher affinity for oxygen, and heating the mixture; removing the metal having a higher affinity for oxygen from the metal, to form a powder of the first metal having an oxygen content of less than 100 ppm.
The Opposition Division (OD) had dismissed the opponent’s inventive step attack, which was based on a combination of documents D1 and D3, and then pursued:
The Board found the way in which the OD had assessed inventive step to be unsatisfactory, because the lack of inventive step was asserted without referring to any concrete prior art document: [3.1] [The opponent] submitted that the alleged inventive effect of producing a powder with an oxygen content of less than 100 ppm cannot be achieved simply by following the steps defined in claim 1, and that it has not been shown that the effect is obtained for all the alloys covered by the claim, hence the requirements of A 56 have not been met. It was argued that, although the basic process steps are defined in claim 1, many specific details, such as quantities, particle sizes, temperatures, times etc., which influence the oxygen content, are not present. In particular, Examples 1 and 2 of the patent specification show that, despite following the steps defined in the claim, an oxygen content of below 100 ppm is not obtained. Even Example 3, which results in 75 ppm oxygen, fails to give details of the hydride starting material, which would be important for the desired effect. [3.1.1] The board agrees that there are many parameters that influence the final oxygen content of the powder. Examples 1 and 2, which are not cited as examples of the invention, show that an oxygen content above 100 ppm is obtained when lower temperatures and shorter times are employed. This, however, does not mean that the technical effect underlying the invention is not achieved. Example 3 demonstrates that when heating takes place at a sufficiently high temperature and for a sufficient length of time, the claimed process leads to a powder having the required oxygen content.
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T 1212/11 – How To Treat Unsolved Problems
K’s Law – The ebook
[3.1.2] It may or may not be the case that there is insufficient information, such as details about the tantalum hydride starting material or about other process parameters, for the skilled person to achieve the required oxygen content, but this relates to sufficiency of disclosure (A 83), which is not an issue in these proceedings. [3.1.3] [The patent proprietor] has shown that the decision under appeal regarding the ground according to A 76 is wrong. In addition, [the patent proprietor] can rely on Example 3 as demonstrating that the inventive effect is plausible, particularly as the skilled person is aware that the properties of tantalum and niobium are similar, as evidenced by D9, page 1, first four lines. Consequently, it was for [the opponent] to put forward reasons as to why the invention could not be worked over the entire scope of the claim. However, that the required effect cannot be achieved for all metals and alloys falling within the scope of the claim has not been substantiated. Hence the board sees no reason to conclude that the invention cannot be worked over the entire scope of the claim. [3.2] The OD agreed with the above submission of [the opponent] that the claimed subject-matter does not meet the requirements of A 56. It reasoned […] that the claimed process was inventive over the disclosures of D1 and D3 but, citing T 939/92 (“the Agrevo decision”), concluded that the technical problem of reducing the oxygen content to below 100 ppm had not been solved over the whole ambit of the claim. [3.2.1] As submitted by [the patent proprietor], the reasoning of the OD is incorrect. As set out in T 87/08 [6.3], T 306/09 [4] and T 2375/10 [2], the requirement of inventive step, as defined in A 56, is based on the “state of the art”. Hence the mere statement that the technical problem is not solved over the whole scope of the claim without reference to prior art amounts to insufficient reasoning for a lack of inventive step. If the conclusion was that the objective problem had not been solved, then the problem should have been re-defined and inventive step assessed on the basis of the re-defined problem. [3.2.2] T 87/08, T 306/09 and T 2375/10 are consistent with T 939/92 which, despite saying that there was a lack of technical effect, analysed inventive step in light of prior art (points [2.5-6]). In T 939/92 the claim concerned a group of chemical compounds and, on the basis of the prior art, the problem to be solved was to provide alternative compounds having herbicidal activity; since the claim included compounds not having his property, it extended to compounds that were not inventive. [3.2.3] In T 87/08, T 306/09 and T 2375/10 the opposition or examining divisions gave no analysis whatsoever of inventive step based on the prior art, but merely stated that the purported effect was not achieved over the scope of the claim. This is not quite the same situation as in the present case, where the OD considered the prior art before it, and concluded that the claimed process was inventive [...] but then went on decide that the claimed process nevertheless did not meet the requirements of A 56. [3.3] So, in assessing inventive step correctly, the prior art must be taken into account, which in the present case means taking D1 into consideration. As with the contested patent, D1 relates to the production of powders of tantalum, niobium and their alloys having low oxygen contents (column 1, lines 16 to 18). This is the same objective as the disputed patent, hence D1 is a suitable starting point for determining inventive step. [3.3.1] According to the process of D1, metal powders are heated in the presence of an oxygen-active metal, i.e. a metal having a higher affinity for oxygen; this results in a powder having less than 300 ppm oxygen […]. [3.3.2] The process of claim 1 differs in that a metal hydride containing a lower amount of oxygen is used as the starting powder, and in that the resulting powder has a lower oxygen content (less than 100 ppm). [3.3.3] [The opponent] argued that the first step in the claimed process is the reduction of the hydride to metal, which then reacts at a higher temperature with the metal having a higher affinity for oxygen, hence is indistinguishable from the process of D1. This may well be the case, but as argued by [the patent proprietor], a different starting material is used in the claimed process, and this has a different structure and morphology which, on the face of it, has an effect, namely it results in a lower oxygen content. [3.3.4] Irrespective of the magnitude of the specific oxygen contents of the powders of the patent and D1, the oxygen content is defined in claim 1 as being less than 100 ppm, whereas the lowest oxygen content achieved by the process of D1 is 135 ppm […]. The problem to be solved starting from D1 is thus not merely to provide an alternative process, as argued by [the opponent], but to reduce the oxygen content yet further to below 100 ppm.
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T 1212/11 – How To Treat Unsolved Problems
K’s Law – The ebook
[3.3.5] According to [the opponent], this results in a powder having worse properties than that of D1. However, [the patent proprietor] has argued convincingly that the purpose of the invention is to produce a powder with a very low oxygen content, and this is itself desirable, irrespective of the fact that may have some disadvantages. [3.3.6] [The opponent] submitted that the solution to the problem can be found in D3, which discloses a process for reducing the oxygen content of tantalum and niobium powders. [… I]t is said that any tantalum or niobium (columbium) containing material can be treated. Although Examples 1 to 10 and 12 all concern metallic tantalum, Example 11 discloses a process in which tantalum hydride is used as the starting material. The tantalum hydride powder is heated in hydrogen gas, and the water vapour formed by the reaction of hydrogen with the oxygen in the powder is then “gettered” by a more oxygen-active metal than tantalum, in this example, zirconium. However, the oxygen content is not reduced to less than 100 ppm by the process; it is 1140 ppm in the hydride starting powder and present in a comparable amount in the tantalum powder end product […]. Unlike D3, the process of D1 does not involve heating a hydride powder in a hydrogen atmosphere, so the board agrees with the OD that D1 and D3 concern different processes and it is unreasonable to combine the teachings. Consequently, tantalum hydride is not an obvious alternative to tantalum metal as a starting material for the process of D1. Even if D1 and D3 were to be combined, there is no indication that use of a hydride starting powder results in an oxygen content below 100 ppm. [3.4] Consequently, the subject-matter of claim 1 is not obvious in light of D1 and D3. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 704/11 – Issues Of Complexity
K’s Law – The ebook
T 704/11 – Issues Of Complexity 15 Okt 2013
I found this case interesting because of the refusal to admit the patent proprietor’s auxiliary request. One of the arguments of the Board was that the disclaimer raised complex issues involving G 1/03 and G 2/10: [3.1] The [patent proprietor] submitted this request during oral proceedings (OPs), following the debate concerning the relevance of document D14, as a precaution against a possible adverse decision on novelty. Questioned by the Board, the [patent proprietor] provided no further justification for this course of action. [3.2] In this respect, the Board remarks that i) it was known to the [patent proprietor] since the receipt of the statement of the grounds of appeal of 31 May 2011 that the Appellant maintained his novelty objection based on the disclosure of D14, which objection had already been raised during the proceedings before the first instance; and ii) the [patent proprietor] submitted amended claims (first auxiliary request at issue) with its reply to the statement of the grounds of appeal, which claims were supposed to overcome another objection maintained by the Appellant, i.e. the objection raised under A 123(3), but it refrained from filing amended claims as an attempt to overcome the novelty objection based on D14, also maintained by the Appellant. Therefore, there is no justification for the filing of an auxiliary request addressing the novelty objection at such a late stage of the proceedings. [3.3] Moreover, the amendment to claim 1 is not based on any of the dependent claims already considered during the opposition and appeal proceedings till the day of the OPs. Instead, the amendment consists in the insertion of a proviso (a so-called disclaimer) supposed to exclude the only potentially novelty-destroying subject-matter disclosed in example II/composition III of D14. 3.4 Hence, neither the Board nor the Appellant could foresee that the [patent proprietor] would consider proposing this type of amendment for the first time at the OPs before the Board. [3.5] Furthermore, the insertion into claim 1 of a disclaimer not disclosed as such in the application as filed raises further issues of some complexity. In particular, this type of amendment cannot be considered to clearly comply, at first sight, with all the requirements of the EPC since it has to be evaluated, for example, whether it meets the criteria identified in the Order (points 2.2 and 2.4) of decision G 1/03 and to which extent some of the findings in decision G 2/10 (last two paragraphs of the Reasons) have a bearing on the assessment of the compliance of the proposed amendment with the requirements of A 123(2). [3.6] Therefore, the Board decided not to admit the second auxiliary request into the proceedings (A 114(2) EPC 1973 and Articles 13(1) and (3) RPBA). I take this for another indirect confirmation that as a result of G 2/10 we are in quite a difficult situation regarding disclaimers. The discussion of a recent decision (here) has shown that even among people having a keen interest in case law matters we are far from having a common understanding of where we stand. And apparently even some Boards feel that evaluating the bearing of G 2/10 on G 1/03 is not a straightforward task. Let us hope that the Enlarged Board will have an opportunity to dispel the fog in the near future. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 389/11 – Blessed Are The Pure
K’s Law – The ebook
T 389/11 – Blessed Are The Pure 14 Okt 2013
This examination appeal case is interesting because the Board found the claimed product of higher purity to be both novel and inventive. Product-by-process claim 1 before the Board read: 1. A metal powder obtainable by a process for producing metal powders comprising the steps of:
providing a hydride powder of a first metal being selected from the group consisting of tantalum, niobium and alloys of said metals with each other or one or both of them with other metals, the hydride having an oxygen content of under 300 ppm; mixing said metal hydride with a metal having a higher affinity for oxygen and heating the mixture; removing the metal having a higher affinity for oxygen from the metal, to form a powder of the first metal with an oxygen content of less than 100 ppm.
[3.1] [… C]laim 1 has been drafted as a product by process claim in order to comply with A 76(1). It is, however, well established that a product per se must be novel and inventive, and is not rendered so merely because it is made by a new and inventive process (see Case Law, 6th Edition, II.B.6.2 [II.A.7.2 in the 7th edition]). For a process feature to have any relevance in a product claim it must result in a discernible physical characteristic in the product. In the present case, claim 1 defines a powder of tantalum, niobium and their alloys with an oxygen content of less than 100 ppm. These are the features of the product of claim 1, hence it is necessary to determine if such a product is disclosed in the prior art. 148 | 3398
T 389/11 – Blessed Are The Pure
K’s Law – The ebook
[3.2] The Examining Division (ED) held that the claimed powder lacks novelty over D1, which concerns powders of tantalum, niobium or their alloys having an oxygen content of less than 300 ppm. In reaching its decision, the ED argued that the claimed oxygen content (less than 100 ppm) is a sub-range of that disclosed in D1 (less than 300 ppm). Since the criteria for novelty of a sub-range (i.e. sufficiently narrow, sufficiently far removed from prior art values and a purposive selection, as set out in T 279/89) were not met, the claimed subject-matter lacked novelty. [3.3] The problem addressed by the present invention is to reduce as far as possible the oxygen content in the metal, as it is seen to be an impurity element. The approach to cases dealing with the purity of a material is set out in T 803/01 (see in particular points [4.6.3] and [5.3]), and is summarised in section I.C.4.1.4 of the Case Law (6th Edition) [now I.C.5.1.4]. To establish novelty and inventive step, it must be shown that prior art techniques have failed to achieve the claimed degree of purity. Thus, the assessment of novelty and inventive step of the product is inextricably linked to the purification process. [3.4] The process defined in claim 1 (an example of which is given in Example 3 in the description) differs from that of D1 principally in that a metal hydride having an oxygen content of under 300 ppm is used as the starting material, rather than a metal powder having an oxygen content of less than 1000 ppm, as disclosed in D1 […]. The process of D1 is said to result in a product having an oxygen content preferably between about 100 and about 300 ppm […]. The ED emphasised […] that the value “about 100 ppm”, being an end point of a range, is specifically disclosed and cannot be distinguished from the upper value of the range defined in claim 1 (100 ppm). However, the examples in D1 give oxygen contents of 155, 140, 135, 130 ppm for tantalum and 175 ppm for niobium; these are clearly above the level of 100 ppm. The skilled person reading D1 would thus not reach the conclusion that the process of D1 results in a product having an oxygen level below 100 ppm. The claimed powder is therefore novel. [3.5] Starting from D1, the problem to be solved is to reduce the oxygen content yet further. The proposed solution of starting with a hydride instead of a metal leads to a material having an oxygen content of less than 100 ppm, as demonstrated in Example 3 of the application. [3.6] Document D2 discloses a process for reducing the oxygen content in tantalum and/or niobium (columbium) materials. Although Examples 1 to 10 and 12 all concern metallic tantalum as the starting material, Example 11 starts from tantalum hydride. The hydride powder is heated in hydrogen gas, and the water vapour formed by the reaction of hydrogen with the oxygen in the powder is then “gettered” by a more oxygen-active metal than tantalum, in this example, zirconium. However, the oxygen content is not reduced to less than 100 ppm by the process; it is 1140 ppm in the hydride starting powder and is present in a comparable amount in the tantalum powder end product […]. Whereas the process of D1 involves heating metal powder with a metal having a higher affinity for oxygen, the process of D2 involves heating a hydride powder in a hydrogen atmosphere, as described above. D1 and D2 thus concern different processes and it is unreasonable to combine the teachings of these documents. Consequently, tantalum hydride is not an obvious alternative to tantalum metal as a starting material for the process of D1. In addition, even if D1 and D2 were to be combined, there is no indication in D2 that use of a hydride starting powder results in an oxygen content below 100 ppm. [3.7] The subject-matter of claim 1 is not obvious in light of D1 and D2. There is no indication in the available prior art that a powder of tantalum, niobium and their alloys can be produced with an oxygen content of less than 100 ppm. The metal powder of claim 1 is thus novel and has an inventive step. Should you wish to download the whole decision, just click here. The
file
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here.
Today I would like to pose my readers a question: It is established case law (I believe) that “in general, a document disclosing a chemical compound and its manufacture makes available this compound to the public in the sense of A 54 in all grades of purity as desired by a person skilled in the art”. I would agree with that statement if “available ... to the public in the sense of A 54” was replaced by “obvious to the skilled person in the sense of A 56”. The statement as it stands somewhat hurts my understanding of novelty. I find it hard to 149 | 3398
T 389/11 – Blessed Are The Pure
K’s Law – The ebook
accept that all degrees of purity are actually disclosed, although I would be willing to endorse that obtaining a specific degree of purity would be obvious to the skilled person, unless there are specific circumstances that require inventiveness to reach certain degrees of purity. Where is the error in my reasoning?
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K’s Law – The ebook
Publish Or Perish (ctd.)
Publish Or Perish (ctd.) 12 Okt 2013
Want to know how active DG3 has been during the first three quarters of 2013? Well, here are the updated figures:
What is shown here is the number of decisions published on the DG3 web page during the first three quarters of the year, for the period 2008 to 2013. You can see that in 2013 the number of decisions was almost identical to what we had in 2012. The situation appears to be pretty stable. The rate at which the decisions have been published has become very smooth, as can be seen from the following graph, which shows the number of decisions published per day between January 2012 and now.
The publication rate has become so smooth that you can see periods that might correspond to days when the person in charge has taken a day off. I think I will not bother my readers with these figures in the future. By the way, I have launched a poll regarding the professional profile of the readers of this blog. It would be great if you could take part.
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R 11/12 – What A Week!
K’s Law – The ebook
R 11/12 – What A Week! 11 Okt 2013
In this decision the Enlarged Board had to deal with a request for a postponement of oral proceedings (OPs) based on a nice accumulation of not so good reasons. [1.1] As the reasons for requesting postponement of the OPs scheduled for 19 July 2013 the petitioner had indicated that Mr P., one of the petitioner’s representatives who had attended the OPs before the board, would only return on 16 July 2013 from a long-planned private trip. Thereafter he would face severe jet-lag. Due to a planned birthday party on the 20th he would have to travel to his country cottage on the 18th since he would have friends staying overnight to celebrate with him on the 20th. They also had opera tickets for that day. [1.2] As the Enlarged Board communicated to the petitioner via its Registrar, no serious reasons which would have justified the fixing of a new date for OPs could be seen in the reasons advanced. The petitioner’s attention was drawn to the Notice of the Vice-President of DG3 of the EPO dated 16 July 2007 concerning OPs before the boards of appeal (see Special Edition No. 3, OJ EPO 2007, 115). That Notice mentions as an example of a serious reason holidays which have been firmly booked before the notification of the summons to OPs. However, Mr P.’s holiday already ended on 16 July 2013. Mr P.’s planned birthday party on 20 July could not be regarded as being a serious reason which would have justified the postponing of the OPs to a later date. In the interest of legal certainty petitions for review should be dealt with expeditiously (R 18/09 [21]). Postponement of OPs before the Enlarged Board is likely to lead to considerable delay, due to the commitments of the members of the Enlarged Board. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2177/12 – You Got What You Wanted
K’s Law – The ebook
T 2177/12 – You Got What You Wanted 10 Okt 2013
As the present decision shows, a patent proprietor does not necessarily have the right to appeal the decision revoking its patent. During the opposition proceedings, the patent proprietor had filed the following letter:
The Opposition Division (OD) then revoked the patent. The patent proprietor then appears to have made up its mind, because it filed an appeal against the decision revoking the patent. Unsuccessfully. Although some of the arguments presented by the appellant were quite creative, the Board found the appeal to be inadmissible. Admissibility of the appeal [1.1] The first sentence of A 107 reads as follows: “Any party to proceedings adversely affected by a decision may appeal.” It follows from this sentence that the appeal proceedings are open only to a party which was adversely affected by the impugned decision. There is ample jurisprudence of the boards of appeal on the question of whether or not a party is adversely affected by a decision. In this respect the present Board agrees with the findings of e.g. T 961/00 [1]. “According to the established jurisprudence of the Boards of Appeal a party is only considered to be adversely affected by a decision if the decision does not accede to its requests (Benkard, EPÜ, EPÜ, Munich 2002, Article 107, Note 13 and the decisions cited therein, Case Law, 4th edition 2001, VII.-D, 7.3.2, and the decisions cited therein).”
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T 2177/12 – You Got What You Wanted
K’s Law – The ebook
“There is therefore an adverse effect if the result of the decision as defined by its order does not come up to the party’s request (T 244/85 [3], T 114/82, T 115/82, Benkard-EPÜ, loc. cit.). Conversely, there is no adverse effect when the decision is consistent with what the party in question has requested (T 506/91 [2.8]).” [1.2] In the present case there was no explicit final request in the opposition proceedings. In its letter of 27 July 2012 […] the proprietor, in the first sentence, expressly disapproved of the text of the granted patent. In the second sentence, it stated that it did not request maintenance of the patent, and it further indicated that there was no text agreed to by the proprietor. In the last sentence, it drew the attention of the OD to decision T 655/01, which it said set out what had become the standard practice in these circumstances. The proprietor disapproved of the text of the granted patent. In other words, it withdrew the approval given for grant of a patent in the text proposed in the communication according to R 71(3) EPC of 16 August 2010. This declaration can objectively only be interpreted as meaning that it did not wish the patent to be maintained as granted. By indicating in the second sentence that it did not request the maintenance of the patent and, further, that there was no agreed text, it not only confirmed that it did not wish the patent to be maintained as granted, but also that it did not want the patent maintained in any form, i.e in any amended form. T 655/01 concerns a case in which the proprietor, after receiving the summons to oral proceedings in the appeal proceedings, informed the board that it no longer approved the text of the patent as granted and that it considered the proceedings as terminated. The board then concluded, in application of the principle expressed in numerous decisions, that the patent had to be revoked (point [6] of the reasons). In the present case, by citing this decision at the end of its letter and indicating that this was the standard practice, the proprietor invited the OD to follow that standard practice, i.e. to revoke the patent. Thus, in the opinion of the Board, when the proprietor, in the same short letter, declares its disapproval of the text of the granted patent, specifically indicates that it is not requesting maintenance of the patent and cites a decision in which, in a similar case, the patent was revoked, this can, on the basis of an objective and bona fide reading, only mean that the proprietor wished the patent to be revoked. Nothing else can objectively be derived from the proprietor’s statement. Hence the order of the impugned decision of the OD to revoke the patent corresponds exactly to the wish of the proprietor, so that the Board cannot see how it could possibly be adversely affected by the decision. [1.3] The Board would also like to emphasise that it agrees with the established practice of revoking the patent pursuant to A 113(2) in such procedural situations. As a matter of fact, when a proprietor disapproves of the text in which the patent was granted and does not submit any amended text, this can only mean that it wishes to prevent any text whatsoever of the patent from being maintained. In the absence of any other legal mechanism in the EPC, and since the patent cannot be maintained against the will of its proprietor, revocation on the basis of A 113(2) is the most appropriate way to terminate the proceedings in the interest of legal certainty and without affecting the proprietor. [1.4] The appellant argued that its letter had to be read as meaning that it wanted closure of the opposition proceedings, not revocation, so that the OD did not accede to its request and consequently it was adversely affected. It also argued that the last but one paragraph of its letter, drawing attention to A 113(2) and in which it was pointed to the fact that there was no agreed text on the basis of which the division could examine the opposition, was an indication that it wanted the file to be closed. As explained above, the Board considers that from a bona fide reading of the letter it can only be concluded that the proprietor wanted revocation. The Board considers more specifically that even if whatever doubts as to the intention of the proprietor might have been present after having read only the first sentence, in which the proprietor disapproved of the text as granted, these were in any case dissipated by the statement that maintenance of the patent was not requested, by the absence of any proposal for an amended text, and by the citation of a decision in which the patent had been revoked in a similar case. If the proprietor wanted closure of the opposition proceedings or anything else, it should have made that clearer in its letter. The proprietor cannot expect the OD to apply a procedure different from that usual in such procedural situations, if this has not only not been requested, but in addition, as in the present case, case law is cited which supports the usual procedure.
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T 2177/12 – You Got What You Wanted
K’s Law – The ebook
Additionally, even if the proprietor’s letter were to be interpreted as a request for closing the opposition proceedings, the Board fails to see how revocation would have adversely affected the appellant. The appellant submitted that there were possible legal consequences, but failed to indicate what these might be. Nor did it dispute that its disapproval of the text of the granted patent had an ex-tunc effect, as does revocation (A 68), so that in both cases the patent would have been legally deemed non-existent from the outset. The appellant also submitted that it made a difference for the public, because revocation gave the impression that the patent had been revoked as not in conformity with the EPC, whereas closure of the proceedings did not. The Board does not share this view, because it is clearly apparent from the reasons for the decision under appeal […] that the patent was revoked because the proprietor stated that it no longer approved the text in which the patent had been granted. The public could therefore see that the conformity with the EPC had not been examined. In a different line of argument, the appellant also submitted that its letter dated 27 July 2012 did not contradict its request to have the oppositions rejected. In the Board’s opinion, since rejection of an opposition means maintenance of the patent, such rejection was made impossible by the proprietor’s disapproval of the text of the granted patent. Moreover, T 329/88 cited by the appellant concerns a different situation, namely one in which the opponentappellant did not wish to continue the appeal proceedings after the patent had lapsed in all Contracting States. The Board applied R 60(1) EPC 1973 (relating to the opposition proceedings) mutatis mutandis and closed the proceedings. In the present case there is no opponent-appellant. [1.5] Furthermore, the appellant argued that the OD could not interpret its letter as a request for revocation because A 105a(2) EPC formally forbade it, and in any case it would be against the case law forbidding the filing of an opposition by the proprietor. A 105a is part of the set of articles defining the limitation and revocation proceedings introduced in the EPC 2000. These proceedings are open to a proprietor wishing to limit its patent or have it revoked in the absence of opposition proceedings. In such a case the proprietor has to file a request and pay a fee (Article 105a(1)) and the Examining Division will then examine its request (R 91). Article 105a(2) thus forbids the filing of a limitation or revocation request under these specific proceedings (which are subject to payment of the corresponding fee) when opposition proceedings are pending. This is only logical, firstly in order to avoid having two different instances competent simultaneously, and possibly reaching diverging conclusions, and because the proprietor can limit or even request the revocation of its patent during opposition proceedings. Thus, A 105a(2) does not prevent the proprietor from filing a request for revocation during opposition proceedings, nor does it prevent the OD from dealing with such requests. Finally, limitation or revocation proceedings are specific proceedings which require formal acts (request, fee, etc.) and are clearly distinct from opposition proceedings as in the present case. In G 9/93 […] the Enlarged Board of Appeal (EBA) decided that a European patent could not be opposed by its own proprietor. However, this clearly only limits the proprietor’s right to file an opposition but, again, does not prevent the proprietor from filing a request for revocation of its own patent during opposition proceedings initiated by another party. [1.6] The appellant argued that the OD could not revoke the patent under A 101(3)(b), because this article was limited to cases in which the OD revoked a patent when, after examining amendments, it concluded that at least one ground for opposition prejudiced the maintenance of the patent. In the present case, there was no amended text to examine. Even if the appellant were right, the Board fails to see how the OD mentioning this article of the EPC would adversely affect the appellant, as this would not have avoided revocation under A 113(2). Nor has the appellant presented any argument, apart from those already set above, as to why this might be the case. [1.7] For the reasons set out above, the Board considers that the appellant was not adversely affected by the impugned decision, so that the appeal does not fulfil the requirement of A 107 and is to be rejected as inadmissible pursuant to R 101(1). The Board then dismissed the request for a referral to the EBA and, more interestingly, rejected the request for an apportionment of costs.
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T 2177/12 – You Got What You Wanted
K’s Law – The ebook
Apportionment of costs [3] The [opponents] argued that the filing of this appeal was an abuse of procedure by the appellant which justified apportionment of costs pursuant to Article 16(1)(e) RPBA. More particularly they submitted that the request for maintenance of the patent as granted was an abuse because it contradicted the final request of the proprietor in the opposition proceedings. The Board does not share this view. If a party is of the opinion that the first instance did not accede to its request, it may consider that it was adversely affected by the decision and may consequently decide to file an appeal. This is no more than its legitimate right to avail itself of the appeal procedure provided for in the EPC. When a proprietor, after revocation of its patent, files an appeal, the revocation decision is suspended and any opponents-respondents have to deal with the appellant’s submissions and possibly file replies if they wish to defend the impugned decision. Nothing different has happened in the present case. Thus, in the present case the Board cannot see any abuse of procedure in a party filing an appeal after disapproving of the text of the patent as granted and obtaining a revocation decision. Therefore, the requests for apportionment of costs are rejected. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1961/09 – A Silent Intervention
K’s Law – The ebook
T 1961/09 – A Silent Intervention 9 Okt 2013
Both the patent proprietor and one of the opponents filed an appeal against the maintenance of the opposed patent in amended form. There were third party observations supporting the revocation of the patent, both during the first instance and the appeal proceedings. During first oral proceedings (OPs) held on October 24, 2012, the status of the opponent as appellant was discussed. The proceedings were then continued in writing. On June 20, 2013, less than a week before the second OPs, there was a third party intervention. The decision has some interesting passages on the admissibility of one of the appeals and on how to deal with a third party intervention. Admissibility of [opponent I’s] appeal [1.1] It is not in doubt that the notice of opposition was filed by Kennametal Inc., a US corporation whose address was stated in the notice to be P.O. Box 231, Latrobe, PA 15650-0231, USA. The notice of opposition was filed on behalf of Kennametal Inc. by Prinz & Partner acting by its authorised representative. The details of the opponent and its representative were duly entered in the register. At the OPs before the Opposition Division (OD), Opponent I, Kennametal Inc., is recorded in the minutes as appearing by this same representative. The decision, refusing the proprietor’s main request but allowing its first auxiliary request, was made against Kennametal Inc. and notified to Prinz & Partner as its representative. [1.2] A notice of appeal was then filed on Prinz & Partner’s headed notepaper as follows: “Patent Owner: Iscar Ltd Opponent I: Kennametal Technologies GmbH In response to the Interlocutory Decision of 22 July 2009 we herewith appeal the above decision and request its revocation as well as the (sic) revocation of EP 1 572 407 ...” The reference number for the case (K 1959 EP) was the same as that which had been used in the opposition proceedings. [1.3] The fact that the address of the appellant was not stated in the notice of appeal (cf. R 99(1)(a)) was not noticed by the Office, nor did it apparently occur to anyone that anything might be amiss with the name of the appellant in the notice of appeal until the day before the first hearing before the Board, on 24 October 2012 […]. Evidence was subsequently filed on behalf of Kennametal Inc. with a view to establishing that the reference to Kennametal Technologies was the result of a mistake […]. The evidence was that although Kennametal Technologies was a company within the Kennametal group, there had been no transfer of the opposition from Kennametal Inc. to Kennametal Technologies. A statement was provided by Mr H. Prokop, who in 2008 was working for Kennametal Technologies and involved in matters relating to inventions in the Kennametal group. He stated that in 2008 he was contacted by the head of the patent department of Kennametal Inc. and was informed that he should become more involved and should assist the patent attorneys in Germany in the event that technical issues arose. He declares he informed Prinz and Partner that he would now be more involved in opposition proceedings and that they should contact him if assistance was required. A statement was also provided by Ms J. Edenbeck, an employee of Prinz & Partner, to the effect that she was contacted by Mr Prokop, who said that he had been appointed by Kennametal Inc. to act as primary contact for technical issues in patent matters. In her statement she first says that this contact was a “couple of years ago” (the statement is dated 17 May 2013) but subsequently says, on the basis of the firm’s file in the opposition proceedings, that she believes the call was made in 2008. She then says: “I apparently inadvertently changed in our file K 1959 EP the name of the opponent to ‘Kennametal Technologies GmbH’ rather than adding them as an additional contact”.
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T 1961/09 – A Silent Intervention
K’s Law – The ebook
[1.4] The public file shows that thereafter and until 23 October 2012 […] all communications in this matter from Prinz & Partner referred to Kennametal Technologies as Opponent I. Meanwhile, however, in its communications with the parties, the Office continued to identify Opponent I as being Kennametal Inc. (see e.g. point [1.1], above) and the proprietor also continued to identify Kennametal Inc. as opponent in its submissions. [1.5] Instructions were given by Kennametal Inc. (and not Kennametal Technologies) to Prinz & Partner on 1 October 2009 to file an appeal […]. As to the notice of appeal itself, Mr J. Strass, the European patent attorney who signed the notice on behalf of Prinz & Partner, says that on 1 October 2009 he was asked, by a paralegal working for the attorney within the firm whose file it was, to sign the notice of appeal, this attorney being out of the office. He checked in the firm’s database that the name of the opponent and the other details in the notice were the same as those recorded in the database, and then signed it. [1.6] The evidence of what happened is not perfect in all its details and the Board is conscious that the onus is on the opponent to establish the facts alleged to the satisfaction of the Board, taking into account in particular the fact that the proprietor is not in any real position to challenge the evidence. Nevertheless, the evidence is credible and there is no real reason to doubt it. The Board accepts it. [1.7] R 101(2) (and its predecessor R 65(2) EPC 1973) has been used in the past as a basis for correction of errors in a notice of appeal. The rule states: “If the Board of Appeal notes that the appeal does not comply with R 99, paragraph 1(a), it shall communicate this to the appellant and shall invite him to remedy the deficiencies noted within a period to be specified. If the deficiencies are not remedied in due time, the Board of Appeal shall reject the appeal as inadmissible.” [1.8] This rule was applied in T 97/98 to correct a notice of appeal in circumstances very similar to those in the present case. An opposition had been filed by, and the decision of the opposition division given against, Fresenius Medical Care Deutschland GmbH but in the notice of appeal a different legal entity, namely Fresenius AG, was indicated as “opponent” and thus as appellant. The appeal was filed by the same representative who had represented the opponent before the OD. It was explained that Fresenius Medical Care Deutschland GmbH and Fresenius AG were separate legal entities within the same group of companies. There was no question of any transfer of the opposition; the indication of Fresenius AG in the notice of appeal simply constituted an error. The Board held (point [1.3] of the Reasons) that correction was possible, saying: “It is the position of the board that there is a deficiency in the indication of the name and address of the appellant within the meaning of R 65(2) not only when no such express indications at all have been made in the notice of appeal but also when incorrect indications have been made. What is required under R 64(a) and R 65(2) EPC is that there was indeed a deficiency, i.e. that the indication was wrong, so that its correction does not reflect a later change of mind as to whom the appellant should be, but on the contrary only expresses what was intended when filing the appeal. It must be shown that it was the true intention to file the appeal in the name of the person, who is, according to the request, to be substituted. Furthermore, R 64(a) and R 65(2) EPC 1973 cannot be construed as forming an exception to the basic principle that – the requirements for an admissible appeal having to be met on expiry of the time limit for filing the appeal – the appellant must be identifiable at that point in time. It must then be possible to determine whether or not the appeal was filed by a person entitled to appeal in accordance with A 107. However … it is sufficient therefore that it is possible to derive from the information in the appeal with a sufficient degree of probability, where necessary with the help of other information on file, e.g. as they appear in the impugned decision, by whom the appeal should be considered to have been filed ...” The Board then considered the evidence filed by the appellant and concluded that “the overall factual picture of all these elements sufficiently supports the conclusion that the indication ‘Fresenius AG’ in the appeal constituted a genuine error and did not reflect the wish to file the appeal in the name of ‘Fresenius AG’ but that it was the intention of the representative to appeal in the name of the opponent.” Returning to its earlier statement about the requirements of R 64(a) and R 65(2) EPC 1973, the Board then continued: “As regards the question of what could be derived from the appeal the Board is satisfied that a person not knowing all the details considered here, presented later to the Board, could have 158 | 3398
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derived from reading the appeal with the help of the indications in the impugned decision that the party on behalf of which the appeal was intended to be filed was the opponent, i.e. Fresenius Medical Care Deutschland GmbH, since this was the sole opponent, represented before the opposition division by the representative who had filed the appeal. Furthermore, there were no indications on file that a transfer of rights might have taken place in the meantime. Thus, in the present case it could be inferred by a third person from the circumstances of the appeal with a sufficient degree of probability that the opponent should be the appellant.” [1.9] The reasoning and facts in that decision fit the facts of the present case. The evidence filed and summarised in points [1.1] to [1.5] above shows to the Board’s satisfaction that it was not the intention to file an appeal by Kennametal Technologies but by the opponent, Kennametal Inc.. As to what would have been apparent on inspecting the file, two notices of appeal were filed. One was unmistakably from the proprietor. As to the other, the only other party remaining in the proceedings and thus the only other party entitled to file an appeal was the opponent. On the face of this notice of appeal it is apparent that something is wrong: Opponent I is stated to be Kennametal Technologies and yet Opponent I can be seen from the file to be Kennametal Inc.. Further reading of the file would then have revealed that the confusing references to the opponent’s name as Kennametal Technologies by the opponent’s representative had started in early 2009 but that despite this neither the Office nor the proprietor had been under misapprehension about who in fact was the party acting as the opponent. For example, the party present as opponent at the OPs before the OD on 2 July 2009 and against whom the decision was given was clearly understood by everyone to be Kennametal Inc.. [1.10] The proprietor in its submissions argued strongly that the evidence filed by Mr Strass established that the intention was in fact to file an appeal by Kennametal Technologies since, according to Mr Strass’ own evidence, after checking against the information in Prinz & Partner’s files that the opponent’s name was correct, he consciously signed the notice on behalf of Kennametal Technologies. However, the Board considers that this is part of the explanation for the mistake and must be looked at against the wider factual background. The evidence as a whole establishes that it was the intention to file a notice of appeal on behalf the entity that was the opponent. [1.11] The Board was also pressed by the proprietor to await the outcome of the reference to the Enlarged Board (EBA) in G 1/12 or least to refer a separate question of its own. The facts in T 445/08, the referring decision in G 1/12, were very different. There, the patent had been granted to Zenon Environmental Inc. but, following a subsequent transfer, the entry in the register was altered to record Zenon Technology Partnership as proprietor. The opposition division subsequently revoked the patent, correctly identifying Zenon Technology Partnership, a US company, as the proprietor. A notice of appeal was then filed headed: “European Patent No 1140330 (99955620.2-062) Zenon Technology Partnership The notice then stated: “We hereby give Notice of Appeal against the decision of the Examination Division (sic) dated 28th December 2007, to refuse the above patent application (sic). Cancellation of the Decision in its entirety is requested so that the patent may be maintained with claims as presently on file ... The name, address and nationality of the Appellant is: ZENON ENVIRONMENTAL INC 845 Harrington Court Burlington Ontario L7N 3P3 Canada Zenon Environmental Inc is a Canadian corporation ...”
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The proprietor’s attorney filed evidence that it was always the intention to file the appeal in the name of the patentee, Zenon Technology Partnership, and the mention of Zenon Environmental Inc. as appellant was a simple error. [1.12] The Board observed that the notice of appeal on its face complied with the requirements of R 99(1)(a) and R 41(2)(c) EPC and that the named appellant was a real company and was fully identified. The Board considered that R 101(2) could only justify corrections of deficiencies that were directed to completing the appellant’s identity where this was not fully provided in the notice of appeal and where the appellant was already identifiable from the notice of appeal. It is clear that the Board considered that prima facie there were no “deficiencies” in the notice as such. The Board noted, however, that some decisions of the Boards of Appeal had introduced the subjective notion of “true intention” and that uncertainty existed about whether and, if so, when it was possible to have recourse to the true intention of a party to assess whether there was a remediable deficiency under Rule 101(2) in conjunction with R 99(1)(a). (As an aside, the present Board observes that this point was clearly highly relevant since if the notice of appeal were to be corrected it was necessary to have recourse to evidence of the subjective intention of the representative who had filed the notice of appeal.) In the event the Board in T 445/08 referred a number of questions to the EBA, the first of which is in the following terms: “When a notice of appeal, in compliance with R 99(1)(a), contains the name and the address of the appellant as provided in Rule 41(2)(c) EPC and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is a request for substituting this other legal or natural person admissible as a remedy to “deficiencies” provided by R 101(2)?” [1.13] The question is drawn in fairly wide terms. Technically it does not cover the present case because in the present case the address of the appellant was not given in the notice of appeal, contrary to R 99(1). However the Board does not think that this is a material distinction. More significantly, however, the question referred also does not deal with the present case because here, in contrast to the situation in T 445/08, the notice of appeal cannot be said to contain the name of the appellant in compliance with R 99(1(a), as provided in R 41(2)(c). Thus, in the present case, there is ambiguity on the face of the notice as to whether the appellant is Opponent I or Kennametal Technologies. The referring Board in T 445/08 was not concerned with this kind of case and the questions referred were not intended to deal with it. [1.14] The Board has therefore not found it necessary to await the outcome of the EBA’s decision, as requested by the proprietor. Unlike the position in T 445/08, it is clear to the Board that there is objectively a deficiency in the notice of appeal. Not only this, there is no real doubt about how it should be corrected. See point [1.9], above. In this, it is not necessary to have recourse to any evidence filed as to what the subjective intention of the opponent’s representative was (although such evidence was filed). The matter can be decided on an objective basis. The present Board does not consider that the Board in T 445/08 intended to bring into doubt the jurisdiction to correct an error in the notice of appeal in such circumstances as those in T 97/98. [1.15] As to the question which the proprietor requested to be referred to the EBA, this is as follows: “If the answer to question 1, 3, or 4 referred to the EBA of Appeal by T 445/08 (G 1/12) is yes, does the point of time at which the error occurred have any influence, particularly if it did not occur at the time of lodging the appeal, and more particularly, if it occurred way back in the first instance, and if so, what is the influence?” Question 1 is already set out above. Questions 3 and 4 were as follows: “(3) If the answer to the first question is no, may the appellant’s intention nevertheless play a role and justify the application of R 139? (4) If the answer to questions (1) and (3) is no, are there any possibilities other than restitutio in integrum (when applicable)?” The point which the proprietor wishes to make is that in the present case the relevant mistake was made in 2008, i.e. when the incorrect information was entered in Prinz & Partner’s computer records, not when the notice of appeal was filed on 1 October 2009. However, the Board considers that the relevant mistake was made when the notice of appeal was filed, stemming from a mistake made earlier in the day when drafting and checking the notice. The explanation for the mistake lies in the earlier mistake made in 2008. The Board cannot, however, see that the timing of the mistake or of its cause has any bearing on the issue and does not consider it necessary to refer a question to the EBA for any of the reasons given in A 112(1).
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[1.16] As the decision in T 445/08 points out, there is some uncertainty in the case law as to whether there is jurisdiction under R 139 to correct an error in a notice of appeal. The third question referred to the EBA in G 1/12 concerns this issue. In the circumstances there is no need for the Board to consider the matter further, except to say that assuming that there is such jurisdiction and given the Board’s conclusions on the mistake in this case, the order for correction is also made under this rule. The intervention by the intervener and the further conduct of the proceedings. [2.1] The notice of intervention satisfies the requirements of A 105 and the Implementing Regulations. This was also not disputed by the proprietor when given an opportunity to do so, even though the proprietor had initially requested that the intervention be held inadmissible. The Board thus concluded that the intervention is admissible. [2.2] As already noted […], at the OPs of 26 June 2013 the Board was faced with the problem of how the proceedings should be continued given the very late stage at which the intervention occurred and the new issues which had thereby been raised. The proprietor objected to the proceedings being continued on that day because it had not had sufficient opportunity to react to the new position. The Board was also not in a position to deal with these issues and, indeed, where an intervener raises a new ground of opposition (as the present intervention did) it should normally be remitted to the OD. See G 1/94 [13]. Nevertheless, and after the matter had been discussed with the parties, the Board decided that the OPs should be continued, at least with a discussion of the novelty objection raised by the opponent in respect of claim 1 of the main request. This was made possible because the intervener agreed that it would not make any submissions on this issue. This meant that the issue could be discussed without causing any unfairness to the proprietor, because the discussion would be limited to an issue already in the proceedings before the notice of intervention was filed. Proceeding in this way was also fair to the opponent, who had a legitimate interest in seeing the proceedings concluded without further delay. For these reasons, the Board therefore decided as a first step to continue with the OPs by hearing the opponent’s novelty objection against claim 1 of the main request. As had been agreed, the intervener did not make any submissions on this issue. [2.3] After this issue had been dealt with and the objection found to be prejudicial to the allowability of the main request, the proprietor then requested that the case be remitted for further consideration of the new issues. The Board decided not to remit the case but to continue the proceedings by hearing the opponent’s clarity objections against the auxiliary requests then on file (A 84). This was again possible because the intervener agreed that it would withdraw all its own clarity objections to the proprietor’s auxiliary requests then on file. The Board was therefore in a position to hear the arguments of the opponent and the proprietor on these issues of clarity without the intervener adding any further objections. Although the proprietor argued that the Board might already have been influenced by having read the written submissions of the intervener on clarity, the clarity objection of the opponent had itself however not been modified by the intervener’s submission and the proprietor and the opponent were not in any way, as a result of any comments by the intervener, presented with any new case in that particular regard (nor was it argued that the proprietor had been presented with a new case in this sense). The proprietor’s further argument in favour of remittal, that the way it would have to argue against the clarity objection of the opponent might then be affected by the intervener, was also not convincing, since the way in which the proprietor might wish to argue against a clarity objection due to the presence of the intervener was not related to the clarity objection itself but rather to possible tactical considerations outside the framework of the appeal. As you might have guessed, the patent was finally revoked: the main request was found to lack novelty and the final auxiliary requests were not admitted into the proceedings. NB: The Board also provided headnotes: 1. Where there is objectively a deficiency in the notice of appeal indicating a genuine error as regards the identity of the appellant and there is objective evidence in the file indicating with a sufficient degree of probability who the appellant should be, then the notice of appeal may be corrected under R 101(2) (see point [1.9] of the Reasons). The reference to the EBA in G 1/12 by the Board in T 445/08 does not bring into doubt the jurisdiction to correct an error in the notice of appeal in circumstances such as those in T 97/98 (see point [1.14] of the Reasons). 2. While an intervention under A 105 shortly before OPs in an appeal, raising new issues, will normally require the OPs to be adjourned if not the remittal of the case altogether (G 1/94), the OPs may be continued if and so far as this can be done without unfairness to the other parties, in particular the proprietor (see points [2.2-2.3] of the Reasons). 161 | 3398
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Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 852/09 – Mene Mene Tekel
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T 852/09 – Mene Mene Tekel 8 Okt 2013
Today’s lesson on how not to draft patent applications deals with sufficiency of disclosure. The Examining Division (ED) had found the subject-matter to be insufficiently disclosed. Claim 1 on file before the ED and the Board read: 1. Use of an enhancer which preferentially enhances the enzymatic reactions between LIPG polypeptide and LDL cholesterol relative to the enzymatic reactions between LIPG polypeptide and HDL cholesterol and apolipoprotein AI in the manufacture of a composition for lowering the level of LDL cholesterol in a patient. The decision in first instance [5] In its decision the ED held that the application did not define any “enhancers” as recited in claim 1. The subject-matter of claim 1 was therefore purely speculative and defined as a mere statement of the result to be achieved. Although large compound libraries could be screened for the desired enhancer activity this did not provide the skilled person with immediate or testable knowledge of the compound or compound family which could fall within the ambit of the claim. In particular, enhancers of LIPG enzymatic activity could act at any of the numerous undefined levels of the extremely complex signalling pathways controlling the LIPG activity and have no structural or direct functional properties in common. Accordingly, undue experimentation was required to screen large compound libraries randomly, contrary to the requirements of disclosure (A 83). Claim construction [6] Claim 1 is directed to the use of an “enhancer” in the manufacture of a composition for lowering the level of LDL cholesterol in a patient. It is stated further that the enhancer “preferentially enhances the enzymatic reactions between LIPG polypeptide and LDL cholesterol relative to the enzymatic reactions between LIPG 163 | 3398
T 852/09 – Mene Mene Tekel
K’s Law – The ebook
polypeptide and HDL cholesterol and apolipoprotein AI” (emphasis added by the board). For the purpose of claim construction, the latter feature therefore constitutes merely an optional feature and has no bearing on the definition of the subject-matter and scope. [7] The application as originally filed defines an “enhancer” as “a molecule which increases the expression of the LIPG polypeptide or which increases the enzymatic activity of the LIPG polypeptide” […]. In line with established case law of the boards of appeal, a patent application, being a legal document, may be its own dictionary and may define technical terms and determine how a skilled person has to interpret a specific term when used in the description or claims (see e.g. decisions T 500/01 [6] and T 61/03 [4.2]). The board therefore construes the meaning of the term “enhancer” of claim 1 to comply with the functional aspect of the definition contained in the description. [8] The board notes however, that the enhancer of claim 1 is not defined by any specific structural features, but merely by this functional feature and the capability to lower the level of LDL cholesterol in a patient. Consequently, claim 1 concerns all chemical compounds which increase the expression of the LIPG polypeptide or which increases the enzymatic activity of the LIPG polypeptide and can lower the level of LDL cholesterol in a patient without any restrictions to compound classes or chemical structure. [9] The board can concur with the appellants that the application describes a number of assay methods which can be used to identify enhancers and inhibitors (modulators) of LIPG activity as recited in the claimed composition. The appellants argued accordingly that the skilled person was able to employ these methods to identify inhibitors and/or enhancers of LIPG activity as claimed. [10] The board notes however, that the appellants have not denied the fact noted by the ED that the application as originally filed does not concretely identify any enhancer having the functionality as required by the claim. Furthermore, although the application does contain theoretical examples how enhancers which increase the expression of the LIPG polypeptide or which increase the enzymatic activity of the LIPG polypeptide could be identified, the application as filed does not contain any guidance for the skilled person which would allow her/him an educated guess as to for example a particular chemical structural class to which the enhancers recited in claim 1 belong. In addition, the application does not teach any guidance how to effectively select such compounds which also comply with the functional feature of lowering the level of LDL cholesterol in a patient. [11] Accordingly, in a search for enhancers recited in claim 1, the skilled person would have to test a virtually unlimited amount of chemical compounds of various chemical structures. The board judges therefore that the application as filed does not provide the skilled person at the relevant date of the application with any guidance enabling her/him, without undue experimentation, to identify the enhancers as defined in claim 1. [12] Therefore, similar to the findings and observations of the there competent board in decision T 1063/06 [5-6] the board in the present case judges that since the enhancers to be used are characterised in functional terms only and claim 1 merely represents for the skilled person an invitation to perform a research programme, it cannot carry out the invention within the entire scope claimed without undue burden (see also T 155/08 [6]). [13] In view of the above considerations, the board comes to the same conclusion as the ED, that the requirements of A 83 are not met with respect to claim 1. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 116/12 – Dangerous Copy & Paste
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T 116/12 – Dangerous Copy & Paste 7 Okt 2013
This is an examination appeal concerning a Euro-PCT. The invention concerned a method for impregnating textiles in a household washing machine. One of the claimed features was that the lye container is filled with water such that the ratio of the weight of the dry textiles and the weight of the water is greater than 1:8. (NB: This feature has been corrected during the international phase; the application as filed had “less than 1:8”.) The EPO had acted as IPEA. The IPER contained the following statement (English translation): “… The present application does not fulfil the requirements of Article 33(1) PCT because the subject-matter of claim 1 is not novel within the meaning of Article 33(2) PCT. In D1 the ratio of the weight of the textiles and the weight of the water is disclosed to be between 1:100 and 1:1. It is asserted that the claimed float with a ratio of 1:8 is a purposeful selection of a short float. 1:100 would be too long and 1:1 would not be feasible. The claimed selection is not a selection invention because not all of the requirements for such an invention are fulfilled. The selected sub-range has to be narrow (i), (ii) has to be sufficiently far removed from concrete examples disclosed in the prior art and the boundary values and must not be an arbitrary specimen (iii) [The subject-matter of claim 1] is not a selection invention because requirement (iii) is not satisfied. …” In its communication pursuant to A 96(2) [EPC 1973] the Examining Division (ED) just referred to the IPER objections. In its reply the applicant discussed the objection in detail. The ED then refused the application. Paragraph 8 of the reasons contained the following passage (English translation): “In D1 the ratio of the weight of the textiles and the weight of the water is disclosed to be between 1:100 and 1:1. In particular, D1 explicitly discloses a possible value of the ratio of the weight of the textiles and the weight of the water of 1:1. This explicit value clearly is within the range given in claim 1 of the application under consideration, according to which the ratio of the weight of the dry textiles and the weight of the water should be greater than 1:8. Even though D1 […] only discloses one single example with a textile/water ratio of 1:25, there is no indication that the invention cannot be carried out over the whole range mentioned in D1 (1:100 to 1:1) It is asserted that the claimed float with a ratio of 1:8 is a purposeful selection of a short float. 1:100 would be too long and 1:1 would not be feasible. The claimed selection is not a selection invention because not all of the requirements for such an invention are fulfilled. The selected sub-range has to be narrow (i), (ii) has to be sufficiently far removed from concrete examples disclosed in the prior art and the boundary values and must not be an arbitrary specimen (iii) [The subject-matter of claim 1] is not a selection invention because requirement (iii) is not satisfied. A ratio of greater than 1:8 from a range from 1:1 to 1:100 is not narrow. As a matter of fact, one of the boundary values disclosed in D1 is within the claimed partial range. …” The applicant filed an appeal. The ED granted interlocutory revision but did not order reimbursement of the appeal fee. Therefore, this question had to be dealt with by the Board: *** Translation of the German original ***
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[2] The appeal fee is to be reimbursed if such reimbursement is equitable by reason of a substantial procedural violation (R 103(1)(a)). The appellant considered the denial of the right to be heard in regard of the criteria (i),(ii), and (iii), which the impugned decision considered not to have been met, to constitute such [a substantial procedural violation]. [3] As far as criteria (i) and (ii) are concerned, the ED has never revealed prior to its decision that it might consider these criteria not to be met. Nor could the appellant expect that it would, because the IPER, to which the ED has sweepingly referred in its (only) communication pursuant to A 96(2) EPC [1973], only questioned criterion (iii). The mere listing of criteria (i) and (ii) is not tantamount to granting the right to be heard within the meaning of A 113(1), nor can the remarks on these two criteria in the reply to the communication – regardless of their content – under these circumstances constitute comments to the grounds on which the impugned decision is based. [4] Regarding criterion (iii), it is true that the arguments the appellant had made in its reply to the communication have been taken into account in the summary of its arguments in favour of the position that this criterion had been met (point 8 of the reasons for the decision, first passage until “1:100 would be too long and 1:1 would not be feasible.”), but not in the justification of the adverse conclusion of the ED. The way in which this justification is worded (point 8, from “The claimed selection is …”) is essentially identical to the corresponding passage of the IPER […]. Thus there is no indication whatsoever that the counterarguments of the appellant regarding criterion (iii), which were filed with the reply to the communication […], have been taken into account by the ED. [5] However, A 113(1) is violated when facts and arguments in the submissions of the appellant which are of central importance for the defence of its case and which could plead against the decision are completely ignored in the decision (T 763/04). This concerns in particular assertions made in reply to a communication, so that, as a rule, one has to assume that the right to be heard has been violated when – as in the present case – the reasons for the decision of the ED boil down to a repetition of the reasons given before the decision was issued (T 1997/08). [6] Consequently, as far as the essential reasons for the impugned decision – i.e. that not all the criteria for the existence of a selection invention had been fulfilled – are concerned, the right to be heard within the meaning of A 113(1) has not been granted, neither for criteria (i) and (ii) […] nor for criterion (iii) […]. This procedural violation is so substantial that the requested reimbursement of the appeal fee is equitable. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 560/12 – Just A Drawing
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T 560/12 – Just A Drawing 4 Okt 2013
Another decision on what can be extracted from drawings. Claim 1 of the main request read: Flow meter for gas and fluid of the type where the fluid or gas flow via the centre is taken to a larger diameter and put by blades in rotation where a ball is brought in a circular movement wherein the fluid or gas flows via a blade section (3) where blades (5) are placed in the part of the blade section (3) that the gas or fluid flow leads to a larger diameter and to a measuring chamber (7) that has the form of a ring where the ball (12) moves and where the blade section (3) is axial connected to the measuring chamber (7) and the outlet openings (10) are radial connected with the in central position being outlet (14), characterised by that in the part of the blade section (3) that the gas or fluid flow leads to a larger diameter the outer wall substantially has a conical inner surface. [1.1] Claim 1 contains subject-matter which extends beyond the content of the application as filed, contrary to the requirement of A 123(2). Present claim 1 is based on originally filed claim 1, wherein, inter alia, the feature “... in the part of the blade section (3) that the gas or fluid flow leads to a larger diameter the outer wall substantially has a conical inner surface” has been added to the claim. The original description contains neither the explicit wording of, nor a clear hint towards the amended feature of an “outer wall of the blade section substantially having a conical inner surface”. The original description merely discloses that the “blade section (3) guides the fluid or gas flow to a larger diameter around core (4)” […] and that “the measuring chamber is bordered by the outer wall (8) of blade section, the conical side wall (9) and the core (4)” […]. The description is not only silent about the shape of the inner surface of the outer wall of blade section and of its potential technical relevance, but does not even mention such an inner surface at all. The only passages in the description mentioning a conical shape are related to the conical side wall (9) bordering the measuring chamber and the conical flow conduction part (15) of the core (4). However, both of these items represent different kinds of walls as compared to the outer wall of the blade section. Neither these passages mentioning conical shapes, nor any other passages of the original description, imply that the inner surface of the outer wall of the blade section is conical. The only support for the feature at issue in the original application documents is to be found in figure 1 in which the inner surface of the outer wall of the blade section is shown with a conical shape at its upper part, followed by a cylindrical portion at its lower part.
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K’s Law – The ebook
However, in the board’s view, since the description does not contain any pointer at all towards a substantially conical inner surface of the blade section’s outer wall, the skilled person could not directly and unambiguously recognize such conical shape as being effectively a technical feature of the flow meter shown in figure 1 which is the deliberate result of the technical considerations directed to the solution of the technical problem involved, rather than an accidental expression of the draughtsman’s artistic freedom (see e.g. T 1011/07 [1.4]). [1.2] The applicant provided the following arguments in favour of compliance of the amendment with the requirement of A 123(2). [1.2.1] According to the applicant the original drawing is a real and exact drawing of the flow meter, not a schematic drawing. Therefore, it is possible to measure from the drawing the exact length and shape of the constituting parts of the flow meter. The board cannot agree, be it only because the original description does not indicate that the drawing is meant to reproduce the claimed device in all details and true to scale. In addition, even if the figures of the application had been explicitly identified as exact constructional drawings of the flow meter to be patented, numerous pieces of information relating to various aspects of the drawings could be derived therefrom. Amongst all of these various aspects of the drawings, and in the absence of any credible support in the description, the substantially conical shape of the inner surface of the outer wall cannot be considered to have been unambiguously disclosed as a particular technical feature of the invention. [1.2.2] The applicant argued that the skilled person would learn from the original description […] that the problem with conventional flow meters relates to the high flow resistance and that the solution to this problem requires the widening of the flow passage. By comparing the drawing of the flow meter of D1, figure 3,
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with that of the present invention, figure 1, the skilled person would immediately realize that the invention corresponds to the feature defined in the characterizing portion of present claim 1, i.e. that the inner surface of the outer wall of the blade section has a conical shape, contrary to what is shown in figure 3 of D1. This argument is not found convincing. The application as filed refers to document DE 100643093 as the sole prior art document. D1 is cited in the subsequent international search report but not in the application as filed. Therefore, D1 is not part of the content of the application as filed and may not even be taken into consideration as material which is incorporated into the specification from a referenced document. There is also no apparent reason why the skilled person would effectively consult D1 as part of the general knowledge when assessing the content of the application as filed. But even assuming, for sake of discussion, that the skilled person would consult D1, he would realize from the comparison of the drawings that the two devices differ in many respects, but not necessarily with respect to the inner surface of the outer wall of the blade section, since both devices have at least a portion with a conical shape. Moreover, there appears to be no clear link between the solution of a wide flow passage and the exact physical shape of the inner surface of the outer wall of the blade section. As the original description does not point to the technical relevance of the shape of the inner surface of the blade section’s outer wall, there is no straightforward reason for the skilled person to focus on this aspect of the drawing. [1.2.3] The applicant also referred to the decision T 748/91 in which the board came to the conclusion that size ratios can be inferred from a schematic drawing. By analogy, the feature at issue in the present case should also be considered adequately disclosed in the drawings. The board cannot follow this argument because, in the case underlying T 748/91, it was clear for the skilled person that the relative thicknesses of the layers were correctly represented in the drawings and that the whole disclosure of the original application was directed towards the technical relevance of the size ratio of the layer thicknesses (see T 748/91 [2.1.1]). In the present case, however, it is not apparent from the original application that the drawings are an exact representation of the shape of the inner surface of the blade section’s outer wall. Moreover, the technical relevance of this feature is not mentioned at all in the original application documents. The case law cited by the applicant is not applicable, accordingly Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1469/10 – A Matter Of Trust
K’s Law – The ebook
T 1469/10 – A Matter Of Trust 3 Okt 2013
In this opposition appeal case the Board among other things had to decide on whether certain documents qualified as A 54(2) prior art. [2.3.1] The [patent proprietor] contended […] that documents D1, D3, and D14 might not be considered as prior art under A 54(2), as the evidence on file (such as the minutes of the respective 3GPP meetings, printouts of the 3GPP’s FTP directories, and printouts of email distributions) was insufficient to justify the conclusion that the respective publication dates of those documents was ahead of the filing date of the patent. In particular, the “last modified date” field indicated in the FTP directories did not provide any evidential value as to the actual publication date of the documents, contrary to the finding in the decision under appeal in relation to D1 and D3 […]. [2.3.2] As regards the publication dates of 3GPP meeting contributions in general, the board notes that the corresponding FAQ page of the official 3GPP web site (http://www.3gpp.org/FAQ#outil_sommaire_63) says: “Meeting contributions (‘TDocs’) are uploaded to the public file server shortly before, or during, or shortly after the meeting at which they were discussed (or intended to be discussed). The timestamp of the file can be relied upon as a precise indication of the moment of upload. TDocs created very shortly before or during a meeting may not be uploaded until after the meeting, but will have been made available locally to the participants during the meeting. The timestamp of the Word (or whatever) file within the containing Zip file is a good indication of the earliest moment that the document could have been available. However, some authors will circulate draft or final copies of their TDocs on the relevant group’s email exploder some days or even weeks prior to this time. This would be revealed by an examination of the exploder’s archive.” From this, the board understands that the respective dates (“timestamps”) indicated on the 3GPP document lists reliably correspond to the dates on which a certain document was uploaded to the 3GPP file server and thus was available on the server to be accessed by the public. Further, in case of doubt, the email distributions may be checked to reveal the actual publication date. Therefore, the board holds that the publication dates indicated on documents D1, D3, and D14 published by the ETSI 3GPP organisation, which is regarded as a reputable standardisation body having clear and reliable rules for their publications (see the cited FAQ page information above), can be considered to have a high probative value and thus may serve as prima-facie evidence that those documents and their contents were published on the date indicated. [2.3.3] Accordingly, the board regards the above documents as having been published before the filing date of the patent in suit and thus as representing state of the art under A 54(2). It is also noted that the above reasoning, which had been communicated as preliminary opinion of the board in its communication under Article 15(1) RPBA (cf. point V above), was not contested by any party at the oral proceedings (OPs) before the board. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 480/11 – Not Just An Expert
K’s Law – The ebook
T 480/11 – Not Just An Expert 2 Okt 2013
In this revocation appeal case, the patent proprietor – in the course of the oral proceedings (OPs) – requested the Board to hear an expert. [4.1] Claim 1 of new auxiliary request 2 differs from the claim 1 of auxiliary request 1 in that the cell is now restricted to the species Lactococcus lactis […]. [4.2] During the discussion of the admissibility of new auxiliary request 2, the [patent proprietor] requested that Mr Johansen be allowed to speak about “their experience of repeating the claimed invention with other strains of Lactococcus lactis and their observed success rate in providing Lactococcus strains fulfilling the requirements of claim 1 of the newly presented auxiliary request 2”. [4.3] The board is aware that the [patent proprietor] referred to Mr Johansen as a technical expert in its letter of 13 June 2013 and requested that Mr Johansen be allowed to provide comments on any technical issue relating to the claimed invention that might come up during the hearing. However, the subject on which Mr Johansen intended to speak according to the [patent proprietor’s] request as specified during the OPs was not simply a technical issue but in fact an event in the past, namely the performance of experiments and the results obtained thereby, which had taken place at the [patent proprietor’s] laboratory. So the [patent proprietor’s] request was actually directed to hearing Mr Johansen as a witness rather than as a technical expert. [4.4] The [patent proprietor] argued that the proprietor had made a statement during the opposition proceedings similar to the one which Mr Johansen was going to present in appeal. The [patent proprietor] referred to the passage of the Opposition Division’s decision in the second part of the fifth paragraph on page 8 of the decision, which reads as follows “... P argued that the majority of the strain produced by Chr. Hansen and tested in the laboratory produced cytochrome d, and although some trial and error might be necessary to select the suitable strains, no undue burden was left to the skilled person as the results obtained – with producing and non-producing strains – were repeatable.” The proprietor’s statement referred to in the OD’s decision that the majority of strains produce cytochrome d had been challenged by the [opponent] in its response to the statement of grounds of appeal (letter of 9 September 2011). In this letter the [opponent] had specifically stated that “[H]owever, none of the other strains/species tested produced cytochrome d. Notably, even the other strain of Lactococcus lactis tested, namely strain HP, did NOT produce cytochrome d.” So at the latest upon receipt of this letter, the [patent proprietor] must have been aware that its statement during the opposition proceedings may not be sufficient to prove that the majority of strains lead to the required cytochrome d amount, and that thus more evidence would be required as regards the success rate obtained with these strains. Nevertheless, the [patent proprietor] chose to wait until the latest possible point in time during the present appeal proceedings to offer further evidence in the form of a “witness statement”. If the witness had been allowed to speak, the [opponent] would have had to be given sufficient opportunity to challenge the witness statement and it would have been necessary to adjourn the OPs. Therefore, the board decided not to allow the [patent proprietor’s] request to hear Mr Johansen, pursuant to Article 13(3) RPBA. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1192/09 – What He Would Not Do
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T 1192/09 – What He Would Not Do 1 Okt 2013
This is a revocation appeal. Claim 1 of the main request before the Board read: Magnetic thin film interference device, showing a viewing-angle dependent color appearance, comprising a multi-layer stack including at least one light-reflecting reflector layer (3, 3’) selected from the group consisting of aluminum, aluminum alloy, chromium, silver and gold, at least one light-transmitting dielectric layer (2, 2’), at least one light absorbing absorber layer (1, 1’) and one magnetic layer (4) of magnetic material, said magnetic layer being separated from a dielectric layer by a reflector layer, wherein one of said dielectric layer being deposited on one side of said absorber layer, one of said reflector layer selected from the group consisting of aluminum, aluminum alloy, chromium, silver and gold being deposited on said dielectric layer, and said magnetic layer being deposited on said reflector layer. The Board found this claim to be novel and then examined its inventive step: [3.1] The board agrees with the opposition division (OD) that the magnetic thin film interference device of D8 represents the closest prior art available. The starting point for the development described in D8 is a thin film structure having only optical properties, e.g. chromaticity and angular colour shifting effects. It essentially comprises a semi-transparent first layer, an intermediate and transparent dielectric layer and a highly reflecting non-magnetic metal layer such as aluminium. In order to improve the security of the device, D8 proposes to add magnetic properties to the conventional thin film structure by exchanging the highly reflecting non-magnetic metal layer for a metal layer having magnetic and reflecting properties (see claim 1 and figures of D8). [3.2] The claimed device differs from the thin film interference device of D8 in that (i) a magnetic layer of magnetic material is deposited on a reflector layer and (ii) the reflector layer is selected from the group consisting of aluminum, aluminum alloy, chromium, silver and gold. [3.3] The technical effect of features (i) and (ii) is that, by virtue of the device comprising two distinct layers and of the reflector layer being made of one of the highly reflective materials set out in the claim, the device enables its magnetic and reflective properties to be adjusted independently of each other, without degrading its optical properties in comparison to devices having no magnetic feature […]. The invention thus solves the problem of improving the security level of the device known from D8 in that “different varieties of security-OVP [optically variable pigments] can be produced, all having exactly the same color appearance and color shifting properties, but different magnetic properties”, as indicated in the original description, page 9, first paragraph, whilst simultaneously improving its optical properties. [3.4] The board in this respect first notes that neither D8 nor any other available prior art deals with the problem of raising the security level of thin film interference devices by hiding different magnetic properties behind a same visual appearance of the devices. The achievement of this particular technical effect, as confirmed by experimental data filed by the patentee with a letter of 28 July 2011, and its importance for the claimed device have not been contested. [3.5] The board further notes that the solution as claimed, i.e. adding a reflective layer on top of the magnetic layer, goes against the general teaching in D8 for the following reasons:
D8 […] teaches the abandonment of the highly reflecting but non-magnetic aluminium layer. Reintroducing a highly reflecting metal layer which this time must be non-magnetic in order to solve the 172 | 3398
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problem of decoupling magnetic and optical properties thus constitutes an exact reversal of the original teaching of D8, which the skilled person would not undertake without good reason or the expectation of substantial advantages, for which there is no evidence. On the contrary, the arrangement proposed in D8, a cobalt nickel alloy layer replacing an aluminium layer, was explicitly “found satisfactory” […] and said to achieve “highly reflecting properties” […].
An objective of the invention of D8 is to provide a device “which can be readily manufactured” […]. Adding an additional layer to a device always increases manufacturing complexity and, hence, goes against the declared objective of straightforwardness.
[3.6] Accordingly, in the board’s view, the skilled person would not readily envisage the addition of a separate reflecting layer to the structure of D8, because he would not realise that it would be beneficial in terms of the security level of the device. [3.7] For these reasons, the board cannot endorse the approach of the OD which also started from D8 as closest prior art and considered the claimed subject-matter to be an obvious solution to the more broadly formulated technical problem of optimising the optical properties of the known device, the resulting improvements in terms of security being considered as mere bonus effects which did not confer an inventive step on the claimed subjectmatter […]. Even though degraded optical performance is mentioned in the original application […] as being one of two problems with the closest prior art of D8, this broad formulation of the objective technical problem, which in effect conceals the substantial contribution of increased security, is not considered appropriate in the present case. Indeed, the technical effect of the differing feature (i) goes beyond the mere improvement of the optical performance. The board concurs with the view expressed in T 1019/99 [3.3] according to which “the correct procedure for formulating the problem is to choose a problem based on the technical effect of exactly those features distinguishing the claim from the prior art that is as specific as possible without containing elements or pointers to the solution”. In this respect, the provision of two separate magnetic and reflecting layers makes it possible not only to enhance optical performance but also to achieve the more specific effect of enhancing optical properties independently of the magnetic properties. [3.8] In addition, even starting from this broader problem statement, in the board’s view it would not be obvious to the skilled person to arrive at the claimed subject-matter, because, as convincingly submitted by the patentee, other ways of improving the optical performance of the device of D8 were available which would not go against the overall teaching of D8 […], such as optimising the materials, thicknesses or deposition conditions and/or techniques of the various layers of D8. For instance, in his statement of grounds of appeal, the patentee demonstrated credibly that at least the two following additional approaches for increasing the reflectivity of the reflector layer were well known in the art:
Approach A) Optimising the deposition conditions of the chosen magnetic material. Approach B) Choosing a different magnetic material with higher reflectivity.
Especially approach B) allows for a substantial increase of the reflectivity (0.3) of the magnetic material in D8, i.e. Ni-Co alloy, by replacing it, for instance, by an Ni-Fe alloy having a reflectivity of 0.6. Neither the former opponent nor the board sees any reason to challenge the technical sensibleness of the alternative approaches A) and B). Therefore, the board agrees with the patentee’s statement in his notice of appeal that “the skilled person would have to choose from a variety of known approaches and the OD’s assumption of a one-way street situation is not correct”. Furthermore, both approaches A) and B) have the advantage over the approach used in the patent that no additional layer is required, which is consistent with the declared goal of D8 of a straightforward manufacturing process. This advantage of ease of producibility is all the more relevant because the corresponding improvement of chromaticity appears to be limited. It is not evident that the mere increase of the initial reflectivity of 0.3 of the 173 | 3398
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Ni-Co alloy layer would represent a sufficient incentive for the skilled person to increase the manufacturing costs by adding an additional, highly reflecting layer. The board is of the view that only the awareness of the additional technical effect of increasing the security level by hiding magnetic properties behind the same visual appearance of the devices would have led the skilled person to consent to the higher manufacturing costs caused by the additional reflecting layer. Thus, in order to arrive at the claimed additional reflector layer, the skilled person would have to select, out of at least three possible approaches, that particular approach which appears to be the one least consistent with the declared goal of ease of manufacturing. [3.9] In the board’s view, the actual developments in the relevant technical field, as evidenced by the documents on file, provide additional support in favour of an inventive step. It is noted in this respect that D8 was published about 12 years before the filing date of the present patent. The recommendation made therein to provide a layer having both highly reflective and magnetic properties not only was not called into question until the effective filing date of the present patent but was even confirmed in document D1 published just two months before that date. Then, less than two months after the effective filing date of the present patent, an application was filed for a magnetic thin film interference device which gave rise to European patent D10, of which the designated inventors are in part the same as those of documents D8 and D1. D10 discloses the same multilayer set-up as claimed (see e.g. figures 13 and 14 of D10) and acknowledges that it presents a significant improvement in terms of achieved chroma and brightness together with the provision of a covert magnetic security feature (see paragraph [0023] of D10). The facts that the very inventors of D8 did not propose the claimed structure, with its uncontested advantages, until 12 years after the publication of D8, and that this structure was later praised in D10 and made the subject of a granted European patent is considered by the board as an additional indication of the non-obviousness of the concept which forms the basis of the claimed invention. [3.10] In view of the above findings, the board comes to the conclusion that the subject-matter of claim 1 according to the main request on file fulfils the requirements of A 56 EPC 1973. [3.11] The same conclusion applies to the subject-matter of the remaining independent claims 5 and 10 for corresponding reasons and also to the dependent claims 2-4, 6-9 and 11 which recite the limitations of the claims on which they depend. [4] For the above reasons the board is satisfied that the patent as amended according to the present main request and the invention to which it relates meet the requirements of the EPC and gives a ruling pursuant to A 101(3)(a). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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R 1/13 – The Premise
K’s Law – The ebook
R 1/13 – The Premise 30 Sep 2013
This is a petition for review of decision T 808/11 of Board of Appeal (BoA) 3.5.03, which had dismissed the patent proprietor’s appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form. During the oral proceedings (OPs), the Board had raised a clarity objection, in response to which the patent proprietor filed new auxiliary requests. There was a discussion in respect of the new requests at the end of which the chairman stated that amended claim 1 appeared to be clear. After a deliberation, the Board announced that the new requests were not admitted due to a prima facie lack of clarity, dismissed the appeal and terminated the proceedings. The patent proprietor filed a petition for review. It argued that its right to be heard had been violated, for the following reasons:
The amendments corresponded to a late objection and should have been admitted. The right to be heard under A 113 enshrines the possibility of a full reaction to overcome any late raised objection. This right can be safeguarded only by allowing a full discussion on the merits of new requests. Such a thorough discussion can in turn only be achieved by admitting new requests filed in response to the late objection. A prima facie assessment based on a cursory review made to establish whether a new request is likely to overcome an objection, such as that carried out in this case, is not adequate. A 113 overrules Article 13(1) RPBA. The fundamental right to a thorough discussion of new requests filed in response to late objections cannot be overruled by an assessment as to the likelihood of a new request overcoming the late objection, nor can the submission of such requests be considered to be late. According to consolidated EPO jurisprudence, prima facie examination is a legal assessment made available to Divisions and Boards for excluding those late filed submissions, e.g. new claims or fresh prior art, which may represent an abuse of the procedure. Responding to a late objection by filing new requests cannot represent a procedural abuse but rather follows from the legitimate right to respond to new issues. Assuming that the Board did have a discretion under Article 13(1) RPBA not to admit new requests in response to new objections, it exercised that discretion in an unduly restrictive manner. Considering the belatedness of the objection, neither the complexity of the subject-matter, nor the state of the proceedings, nor procedural economy could justify the adverse exercise of discretion.
The Enlarged Board (EBA) was not impressed: [8] A 113(1) provides: “(1) The decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments.” [9] The only violation of that provision alleged by the petitioner is the decision of the BoA not to admit the new requests into the appeal proceedings. However the EBA cannot find any suggestion in the petition of a denial of the petitioner’s opportunity to present its comments on the admissibility of those requests. Indeed, the petitioner refers to and relies on the discussion of the admissibility of those requests which took place during the OPs. Further, the petition itself, all of the five declarations filed therewith, the petitioner’s request to amend the minutes, the respondent’s observations on that request, and the Board’s communication responding to that request all refer to such a discussion. Further still, while the minutes of the OPs do not actually mention the discussion on that subject they do, by reference to the filing of the new requests with annexed copies and by reciting the formal requests of the petitioner, provide further confirmation that a discussion of the new requests took place. The same is true of the BoA’s written decision which refers to the filing of the new requests and the appellant’s view thereon. [10] The EBA’s case law makes clear that it is sufficient for the purposes of A 113(1) that a reason for a decision under review corresponds to an argument which has been put forward by another party so that the petitioner was 175 | 3398
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aware of it and thus was not taken by surprise. In such circumstances and in the absence of any contention or indication that a BoA has refused to hear the petitioner, it cannot be established that the petitioner had no opportunity to comment within the meaning of A 113(1) (see R 4/08 [3.3]). [11] In decision R 4/08, the petitioner was the opponent and the decision related to that opponent’s alleged lack of opportunity to comment on the admissibility of the patent proprietor’s new requests. The principle in that decision must apply with at least as much – if not more – force when, as in this case, the petitioner is the patent proprietor and the issue is the admissibility of the petitioner’s own requests. It is not merely undisputed fact but also part of the case advanced by the petitioner that it knew the objection (lack of clarity) to its previous request, that it filed its new requests to overcome that objection, that it argued its case for admissibility of those requests, and that the Board decided not to admit the requests because they were prima facie not clear and thus did not overcome the objection. Far from showing a denial of an opportunity to comment, the petition confirms that the opportunity occurred. [12] The petitioner’s view of A 113(1) […] appears to be at variance with the case law (see point [10] above) and the EBA does not agree with the petitioner’s various arguments based on its view of the law. The petitioner refers to A 113 but quite clearly intends only A 113(1). Its arguments, four in number, are to the effect that the BoA did not consider the new requests sufficiently or was obliged to admit the new requests or exercised its discretion incorrectly and each argument is said to demonstrate a violation of A 113. That is inconsistent with the petitioner’s statement in the petition […]: “The present petition is filed under A 112a(2)(c) on the grounds that a fundamental violation of A 113 occurred in the appeal proceedings of case T 808/11. The negatively affecting decision, hereinafter also “the decision”, violates A 113 in having not admitted the new third and fourth auxiliary requests (also “the new requests”) into the proceedings and in having dismissed the appeal immediately after announcing the non-admittance.” It is evident that the decision of the BoA is the only alleged violation of A 113 and that the petitioner’s arguments do not each demonstrate a separate violation but are intended to provide reasons why the decision is said to be a violation. The EBA considers each of the four arguments in points [13] to [17] below. [13.1] The petitioner’s first argument is that A 113 enshrines the possibility of a full reaction to overcome any late-raised objection, a right that can only be safeguarded by allowing a full discussion on the merits of new requests filed in response to a late objection which in turn can only be achieved by admitting such new requests. A prima facie assessment to establish whether a new request is likely to overcome an objection is not adequate to satisfy this supposed right to a thorough discussion under A 113 of all the points at issue. As support for this proposition, the petitioner cited a passage from decision R 3/10 [2.10]. [13.2] This argument is based on the false premise that “A 113 enshrines the possibility of a full reaction to overcome any late raised objection”. In fact A 113(1) does no such thing. It simply provides that decisions shall not be based on matters on which parties have not been heard or, to be precise, on which parties concerned have not had an opportunity to comment. The decision in question here was whether or not to admit the petitioner’s new requests and, as already explained (see point [9] above), the petitioner had and used the opportunity to comment on that issue. [13.3] The petitioner’s suggestion that the right to be heard carries with it, in the case of requests filed in response to late objections, a right to a full discussion which transcends the requirement of admissibility is simply incorrect. A late objection may lead to more latitude in the filing of requests in response but there is no certainty of admissibility, let alone of a more thorough discussion if admissibility is achieved. If the petitioner was correct, any request filed in response to a late objection would be admissible even if it clearly had no prospect of overcoming the objection. The requirement of admissibility for late-filed requests serves several purposes – inter alia to ensure the requests offer a prospect of success – and the requirement is not suspended for latecomers, however understandable the lateness of filing their requests may be. If that were not the case, Article 13 RPBA would have little or no purpose (as the petitioner’s second argument tacitly recognizes - see point [14.2] below). [13.4] In decision R 9/11 [3.2.2] the EBA held that Article 13(2) RPBA, which gives parties a right to comment on new submissions filed by others, does not give those parties automatic admissibility of their new requests; it follows that there can be no such right of automatic admissibility for those making the new submissions. The petitioner submitted […] that R 9/11 was distinguishable from the present case and, in as much as the facts are different, that is correct but that does not mean that the legal significance of the earlier case is to be ignored (see 176 | 3398
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R 11/08 [11]). The procedure for new requests is in fact well summarized in the warning to the appellant in the BoA’s communication […]: “If amended claims are filed by the appellant, it will be necessary at the OPs to discuss their admissibility and, if these claims are held admissible, to discuss the question of whether or not the amendments, the claims and their subject-matter comply with the requirements of the EPC...” The EBA also notes that, in the opposition proceedings, the petitioner filed an amended first auxiliary request during the OPs which was held inadmissible for several reasons, apparently after the OD had conducted the usual admissibility appraisal without (so far as the OD’s decision and the minutes of the OPs show) any objection on the part of the petitioner. [13.5] The petitioner’s only support for its argument was a one-sentence passage it cited from the EBA’s decision R 3/10 which, with an insertion added by the petitioner, reads: “This right [the right to be heard] would be undermined if it were made dependent on an evaluation as to whether the party’s standpoint is likely to be justified”. The complete passage from which that sentence is taken reads as follows: “It is the very essence of the right to be heard that the party is given a full opportunity to defend its case and to persuade the deciding body that its position is the correct one. This right would be undermined if it were made dependent on an evaluation as to whether the party’s standpoint is likely to be justified”. Thus, in the case of the admissibility of its new requests, the petitioner had to be given a full opportunity to defend its case for admissibility and to persuade the BoA that its position was correct. As already observed (see point [9] above), that is what happened in the present case. In its proper context, the second sentence means no more than that a party should not be denied an opportunity to be heard because he may ultimately succeed or fail. That also happened in the present case in which the petitioner was heard on the admissibility of the new requests even though it ultimately lost (although it would appear from the petitioner’s own view of the chairman’s remark that the Board’s evaluation while hearing the petitioner was that it was likely to succeed). The passage from R 3/10 is entirely consistent with the EBA’s other jurisprudence on the right to be heard (see points [10] to [11] above). [14.1] The petitioner’s second argument is that A 113 overrules Article 13(1) RPBA since the fundamental right to a thorough discussion of new requests filed in response to late-raised objections can neither be overruled by an assessment as to the likelihood of a new request overcoming that objection nor be considered late-filed, so the Board has no discretion in respect of the admissibility of such requests. [14.2] This argument is no more than a necessary corollary of the previous argument which, as already observed (see point [13.3] above) would mean that Article 13 RPBA has little or no purpose. It is therefore an argument which the petitioner had to make to be consistent. However, the reasons for rejecting the argument are also consistent with those for rejecting the previous argument – it starts from the same false premise of a “right to a thorough discussion” and, once that false premise is dispelled, the argument cannot take matters any further. [15] The petitioner’s third argument is that, according to consolidated EPO jurisprudence (an expression the petition does not explain), prima facie examination is a legal assessment for excluding those late filed submissions which represent an abuse of the procedure. Since in the present case, the petitioner was responding with new requests to a late objection, the new requests were not an abuse of procedure so a prima facie assessment resulting in non-admissibility was also a fundamental violation of the right to respond fully to new issues and represents a fundamental violation of A 113. Again, this argument supposes that the petitioner’s fallacious view that A 113 provides a “right of full response” which would avoid any requirement of admissibility is correct. The argument is also circuitous and self-serving – it pre-supposes that an admissibility assessment is only required for submissions which represent (undefined) abuses of procedure, then asserts that the petitioner’s new requests were not an abuse of procedure, and thus absolves those requests from the need for an admissibility assessment. [16.1] The petitioner’s fourth and final argument was that, despite the previous arguments and assuming that the Board did have a discretion under Article 13(1) RPBA not to admit new requests in response to late objections, the Board exercised that discretion in an unduly restrictive manner. Thus, by reference to the provisions of that Article, the new requests could not be considered late and did not introduce any complexity as they attempted to overcome the objection; the state of the proceedings could not apply since the petitioner was responding to a new objection to terms which had been on file since the beginning of the appeal procedure; and procedural economy 177 | 3398
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could not justify the adverse exercise of discretion since that would outweigh the right of the petitioner to defend its case. Thus the Board’s exercise of its discretion under Article 13(1) RPBA offended the more fundamental rights enshrined in A 113. [16.2] Yet again this argument supposes “more fundamental rights enshrined in A 113” than can be read into that Article and, additionally, that those rights alleged to flow from A 113 override Article 13 RPBA. It is a combination of the three earlier arguments presented as an assessment by reference to the three criteria – complexity of new subject-matter, the state of the proceedings, and procedural economy – mentioned in Article 13(1) RPBA. The petitioner however overlooks that Article 13(1) RPBA states that the Board’s discretion shall be exercised in view of inter alia those criteria. Thus other considerations relevant to the admissibility issue in question can, and in practice are, taken into account. In the case of a new request with amended claims, one wellestablished criterion is whether the claims are likely to overcome the objection or objections in response to which the request has been filed. [16.3] While the exercise of its discretion by the Board in this particular case is a substantive issue with which the EBA cannot interfere in petition proceedings (see for example R 9/11 [3.2.1]), it seems highly probable that in arriving at the decision under review the BoA did use the criterion of whether the claims were likely to overcome the objection in question. That is not only suggested by the reference in the respondent’s letter of 12 November 2012 to a detailed discussion on admissibility which ranged across clarity, support, added matter, novelty and inventive step […], but is endorsed by the petitioner itself which referred to that reference as an acknowledgment that a substantial amount of the argument at the OPs was about the admissibility of the new requests […], and is also confirmed by the decision under review which states in terms […] that the new requests were inadmissible because they were not clear within the meaning of A 84. [17] For the reasons in points 9 to 16 above, and apart from the fact that the petition itself shows that the petitioner had an opportunity to comment on the admissibility of the new requests, the EBA cannot accept that the petitioner’s arguments demonstrate any violation of A 113. In further support of that conclusion the EBA notes, as it did in its preliminary opinion, that the petition offers no explanation as to why, when the petitioner had the opportunity to discuss admissibility of the new requests before the BoA, it made no reference to the arguments on which it now relies to show a violation of A 113. If, when it filed the new requests, the petitioner believed that the requests were automatically admissible and that the Board had no alternative but to proceed directly to a consideration of their allowability, it is to say the least strange that it did not make that submission to the BoA. The petitioner’s only answer to this is that it did not do so because of the chairman’s comment, or more precisely the interpretation the petitioner placed upon that comment. However, the petitioner and its representative were responsible for the conduct of their case and it was for them to submit the necessary arguments to support their case on their own initiative and at the appropriate time (see R 2/08 [8.5, 9.10] and R 13/11 [18]). That they did not say to the BoA when, as the case they now make in the petition proceedings makes clear, they had the opportunity to do so, that the Board was obliged to admit the new requests can only mean either that they did not at the time believe in (or perhaps even think of) those arguments and/or that they chose not to make the submission. [18] All its previous arguments being wholly unconvincing, the only remaining argument deployed by the petitioner to support a denial of opportunity to comment is that the petitioner was surprised by the decision not to admit its new requests because of the remark by the chairman of the Board that the requests appeared to be clear. The petitioner submitted, though not in the petition, that it took that remark as a ruling on admissibility and that the legal basis for that is Article 15(4) RPBA […]. The EBA also finds this argument unconvincing for three reasons – the very nature of the remark, the purported legal basis of the argument, and its own jurisprudence on “surprise” arguments. [19.1] As regards the nature of the chairman’s remark, the EBA notes that it was no more than a remark by one member of the BoA during the discussion on the admissibility of the petitioner’s new requests. Prior to the petition – in the petitioner’s request to amend the minutes of the OPs – and in the declarations filed with the petition, it is only referred to as an “indication” or “expression” by just the chairman. In the petition however it is elevated to the status of an indication or opinion of the whole Board, for example: “the positive indication given by the Board” […], “the Board acknowledges that the positive opinion was given” […] and “the Board gave an indication” […], and this is used to suggest there was a “sudden change of opinion of the Board” […]. The petitioner then proceeds to suggest that it was mislead by alleging that “correctly relying on this positive indication given by the Board, [it] had no doubts that at least admissibility of the new requests was accepted” […] and that it “could reasonably assume that any further submissions or requests were superfluous and thus refrained, in order to behave according to indications of the Board and to avoid an unnecessary lengthening of the OPs, from presenting further arguments” […]. 178 | 3398
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At the OPs before the EBA, the petitioner went still further […] and called the remark a “ruling” on the admissibility of the requests which meant that the clarity objection had been overcome. It also submitted that it was “made to rely” on the chairman’s indication […] as if it was compelled to accept it without question. [19.2] The EBA sees no merit in such re-interpretation of a remark made by one member of the Board into first an opinion of the whole Board and subsequently into a ruling of the Board. The petitioner and its representatives must have known at the time that the remark was that of one member only and any additional significance they gave it had nothing to do with the proceedings. To seek subsequently to elevate the remark into something more in order to support a petition for review is not merely unconvincing but implausible. The submission that the chairman’s remark prompted the petitioner’s representative to take instructions from the petitioner on a possible remittal of the case to the OD carries no weight - the fact that the petitioner or its representative chose to take any steps on the basis of their inherently implausible interpretation of the remark cannot make that interpretation any less implausible. [19.3] The very wording of the petitioner’s argument reveals its weakness. It claims that the positive indication of the chairman’s remark meant there was no expectation that the Board would conclude that the new requests would not be admitted so no objection could have been raised by the petitioner […]. Such an argument is logically flawed: the expectation of one (desired) result does not preclude arguing against another (undesired) result. The petitioner’s various submissions on this theme all suffer from this “would/could” weakness, for example: “Based on the Board’s positive indication, the petitioner could reasonably assume that any further submissions or requests were superfluous and thus it refrained from presenting further arguments” […]; “the chairman had given an indication that the new requests were clear so the petitioner had no reason to make and was not induced to make further submissions” […]; and “No objection was raised under R 106 because, on the basis of that positive indication, there was no reason to expect that a procedural violation would occur” […]. It is apparent that the petitioner conducted its case in reliance on its own assumptions. It was of course entitled to do that – as already observed (see point [17] above), the petitioner and its representative were responsible for the conduct of their case and it was for them to submit the necessary arguments to support their case on their own initiative and at the appropriate time (see R 2/08 [8.5, 9.10]). It follows that only the petitioner and its representative can be responsible if such assumptions prove incorrect and the petition for review procedure is not a remedy for the consequences. [20] As regards the legal basis for the argument, the EBA observes first that the petitioner did ultimately acknowledge the weakness of the argument when, in reply to a question asked during the OPs, it agreed that the chairman of the Board had not actually said that the new requests were admissible. It thus became plain beyond doubt that the petitioner’s argument was based only on the interpretation it had chosen to give to the remark. The EBA also has no hesitation in dismissing the petitioner’s argument that Article 15(4) RPBA has the effect that, if a chairman gives an indication, a party has to rely on it. Article 15(4) RPBA reads: “The Chairman presides over the OPs and ensures their fair, orderly and efficient conduct.” Those words simply cannot be interpreted to mean that a remark or indication by the chairman has to be relied on by a party without question, let alone that it has the status of a ruling or the removal of a previous objection. If the chairman could make remarks with any such effect during OPs and before the parties have concluded their submissions, that would in itself amount to a violation of A 113(1). It would also contradict Articles 15(5), 15(6) and 19(1) RPBA. [21] Lastly the EBA observes that this line of argument is contrary to its established case law which has consistently held that, while surprise may be an understandable subjective reaction of a party which expects to but does not succeed, it cannot affect an objective review of the decision - so if the petitioner knew the issues which might be raised and had an opportunity to comment thereon, its subsequent surprise is of no relevance (see R 12/09 [13]; R 15/10 [11] ; R 13/11 [18]; and in particular R 6/11 [5.3], in which as in the present case the petitioner’s belief that the Board would decide in its favour was held to be immaterial to the fulfillment of requirements pursuant to A 113(1)).
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[22] The petition does not show that any denial of opportunity to comment occurred and thus no violation of A 113 has been established. Therefore it is not necessary to consider the petitioner’s arguments that the alleged violation was fundamental. It follows from the absence of any violation of A 113 that the petition is clearly unallowable. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1981/12 – Possibly Unfair 27 Sep 2013
This is a noteworthy decision on search-related matters. The application under consideration was filed as a PCT application with the USPTO in 2005. In the international search report (ISR) and the international examination report issued by USPTO the claims were variously considered to lack either novelty or inventive step; however, no objection of lack of unity was raised, so that all claims were searched. The application then entered the European phase with an amended set of claims. In the supplementary European search report (ESR) dated 8 February 2011 the applicant was informed that the application lacked unity a posteriori in the light of D1. Only the first invention (corresponding to claims 1-4, 7, and 12) had been searched. The applicant was invited to limit its application to that subject-matter. The applicant amended its claim 1 by combining claim 1 and 6 as filed on entry into the European phase. It argued that there was no lack of unity and that all claims had been searched as part of the ISR, which is all that was required under R 164(2). After some discussion the Examining Division (ED) refused the application. The applicant filed an appeal. It argued that the ED had committed two substantial procedural violations: the decision was not sufficiently reasoned and there was no reference to its submissions based on the amendment to R 164. The decision is somewhat lengthy. If you wish to content yourself with the headnotes provided by the Board, here they are: 1. Claims whose subject matter has not been covered by a search report drawn up by the EPO will not be examined by the EPO for novelty or inventive step (points [5.3-4]) 2. Where subject matter is covered by a search report drawn up by an ISA other than the EPO in the international phase but is not covered by the supplementary search report drawn up by the EPO in the European phase in the application of R 164(1), the subject matter is not to be regarded as covered by a search report for the purposes of R 164(2) (points [6-8]). 3. Where on entering the European phase the application documents are considered by the EPO not to meet the requirements of unity, with the result that a supplementary ESR is drawn up on only those parts of the application which relate to the invention first mentioned in the claims (R 164(1)), the applicant is not entitled to have a further search report drawn up to cover the other invention or inventions (point [9]). If you want the whole thing (and I think you should), here we go: Extent of the supplementary European search [3.1] Before turning to the main issue in the appeal it is convenient to deal with one of the appellant’s subsidiary arguments. This was that the Guidelines for Examination were not followed by the EPO when conducting the search. It was argued that even if the claims were non-unitary, all claims should nevertheless have been searched since the Guidelines provided that: “Although lack of unity may arise a posteriori as well as a priori, it should be remembered that lack of unity is not a ground for revocation in later proceedings. Therefore, although the objection should certainly be made and amendment insisted upon in clear cases, it should neither be raised nor persisted in on the basis of a narrow, literal or academic approach. This is particularly so where the possible lack of unity does not necessitate a further search. …”. (Citing the earlier version of the Guidelines at C-III, 7.7; for the current version, see the Guidelines, B-VII, 2.2). 181 | 3398
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[3.2] However, the actions of the Search Division (SD) are not subject to appeal: see A 106(1) and T 2495/11 [2.1-2]. If an applicant considers that the view taken by the SD on lack of unity is wrong and the ED takes the same view as the SD, an applicant can challenge this, if necessary by way of an appeal. If this challenge succeeds, then a further search will be carried out without a further search fee being charged. See G 2/92 [2], J 3/09 [3.5.2] and T 2495/11 [2.1-2]. In the present case, however, the ED’s view on lack of unity was not challenged before either the ED or the Board. The argument is therefore rejected. The R 164(2) point: introduction [4.1] It is doubtful that R 137(5) could be an appropriate basis for refusing an application based on these requests. The rule provides: “Amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept. …”. [4.2] It has been pointed out that R 137(5) (previously R 86(4) EPC 1973) only has the status of an administrative provision in the context of search and grant procedures: see T 708/00 [6]. An amendment which does not comply with the rule is therefore inadmissible: T 442/95 [6]. If the applicant’s only request for grant is based on such amended claims there will be no admissible request for grant and the application will be refused. [4.3] More to the point, however, is the fact that in the present case the amended claims, even if they may relate to “unsearched subject-matter” (a matter hotly disputed by the appellant), had not been combined with the originally claimed invention to form a single general inventive concept: they were part of the original claimed subject matter on entry into the European phase. [4.4] The underlying purpose of the rule is explained in CA/12/94 Rev. 1 of 17 October 1994, “Amendment of the EPC, the Implementing Regulations (IR) and the Rules relating to Fees”, pages 16 and 17, and the Notice of 1 June 1995 published in OJ EPO 1995, pages 409 and particularly 420, 421 concerning the introduction of the R 86(4) EPC 1973 (which subsequently became R 137(5)). These documents and also subsequent decisions of the Boards of Appeal point out that the purpose of the rule is to stop applicants switching to unsearched subject matter in the reply to the first communication from the examiner (thereby getting several searches and examinations for the price of one). The rule is thus intended to prevent amendments of the application which circumvent the principle that a search fee must always be paid for an invention presented for examination (T 274/03 [4]). It therefore provides the means to stop applicants, in reply to the first communication, dropping existing claims, replacing them by switching to unsearched and non-unitary subject-matter extracted from the description, i.e., claiming different subject-matter in sequence rather than simultaneously (T 274/03 [4], T 915/03 [3], T 1285/11 [2]). The rule therefore does not apply where a lack of unity arises within a group of simultaneously claimed inventions (T 915/03 [3]). [4.5] Of course these statements must be read in the context of the facts of the particular cases. Nevertheless, in the present case the amended claims did not take matter from the description but rather were based on the claims as filed on entry into the European phase. In the words of T 264/09 [4.2], the claims have not been amended “such that” they relate to unsearched subject-matter which does not combine with the originally claimed invention to form a single general inventive concept. Further it is part of the appellant’s complaint that it was not given the opportunity to pay further search fees following the SD’s search report. Indeed, the problem does not arise as the result of the amendments which the applicant made after entry into the European phase but because of an objection of lack of unity which was first raised at a point when, if the ED is correct, the appellant no longer had the opportunity to have non-unitary subject matter searched and where, in the further prosecution of the application, the appellant no longer had the opportunity to choose which inventions to pursue. It could only pursue the invention first mentioned in the claims filed on entry into the European phase. All other inventions could only be pursued by way of one or more divisional applications. [4.6] The same problem would arise on a simplified version of the facts of the present case where, for example, on entry into the European phase, two non-unitary inventions were claimed and in examination the applicant wished to restrict the application to the second and unsearched invention claimed. [4.7] The Board also considers that R 164(2), however interpreted, cannot by itself be a basis for refusal of the application (and indeed the ED did not base its refusal on the rule). The rule is merely a procedural provision which gives an applicant the opportunity, by amending the claims, to deal with particular objections raised by the 182 | 3398
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ED; it does not expressly purport to deal with the requirements of search or patentability. The rule does not say (and does not need to say) what the consequence will be of an applicant not taking the opportunity to restrict the claims. In this respect the rule appears to operate in a different way from R 64(1), under which if the applicant does not pay further search fees and the SD’s view on lack of unity is upheld by the ED, unsearched subject matter may not be pursued in that application: see G 2/02 [this should read G 2/92] and the further explanation of the operation of the rule in T 631/97. Nevertheless, if the applicant does nothing and the objection of lack of unity is upheld the consequence will be that the application will be refused under A 82. [4.8] It appears to the Board that the correct approach is that if the claims of the relevant request are non-unitary, and the applicant declines to limit the claims to a single invention, then the application should simply be refused under A 97(2) on the grounds that the claims of the request do not meet the requirements of the EPC, namely A 82. In this light the essence of the appellant’s complaint is that by virtue of R 164(2) the ED should have regarded all subject matter covered by the ISR as searched. While it may have been correct, given the ED’s view on unity, for the appellant to have been invited to limit its claims, the appellant argues that such invitation should not have been limited to the claims relating to the single invention covered by the supplementary ESR. The appellant says that it should have been invited, and was entitled to choose which invention it wanted to pursue in the examination proceedings, including an invention covered only by the US Patent Office’s search in the international phase. The context of R 164(2) [5.1] Before dealing with the appellant’s interpretation of R 164(2), some points of general importance need to be made regarding the context in which the rule operates. [5.2] An application for a European patent will be refused only if the application or the invention to which it relates does not meet the requirements of the EPC (A 97(2)). Generally under the EPC, it is not expressed to be a ground for refusal of an application that claims have not been searched. In the present context, the ground for refusal of an application will usually be lack of unity (see point [4.8], above) or, alternatively, that there is no admissible request for grant of the patent (see point [4.2], above). [5.3] Nevertheless it is a fundamental assumption under the EPC system that examination of an application will only be conducted on the basis of claims which have been appropriately searched (i.e., with due regard to the description and any drawings: A 92). Without an appropriate search the Office does not have the necessary materials to determine whether the application meets the requirements of novelty and inventive step. As it is put in the current version of the Guidelines for Examination, Part B-II, 2: “The objective of the search is to discover the state of the art which is relevant for the purpose of determining whether, and if so to what extent, the claimed invention for which protection is sought is new and involves an inventive step.” In G 2/92 [2], the Enlarged Board said: “… the invention which is to be examined for patentability must be an invention in respect of which a search fee has been paid prior to the drawing up the ESR. … Part IV of the EPC … envisages that an application progresses after filing from the SD to the ED…. An object of R 46 [EPC 1973] is to implement this procedure by ensuring that an appropriate extent of search is completed in respect of each individual application before each application is examined by the ED. … … the payment by the applicant of further search fees in respect of each further invention ensures that after receipt of the ESR, the applicant may put forward in the claims of that application, by way of amendment under R 86(2), whichever further invention he chooses for subsequent examination by the ED, provided the respective fee has been paid so that the ESR has been drawn up with reference to such invention.” (emphasis added by the Board). The general principle was underlined in T 1242/04 [8.2]): “The search is an essential element of the grant procedure, being designed to identify prior art relevant to the application. The intention is to make it possible to determine, on the basis of the documents mentioned in the search report, whether and to what extent the invention is patentable (see R 44(1)). Knowledge of the prior art forms the basis for examination of the application by the ED. It is also important for applicants, giving them a basis for deciding 183 | 3398
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whether to continue prosecuting their applications and have them examined. Lastly, it is also important for the public and especially for competitors, enabling them to gain an idea of the scope of any protection that might be granted. For that reason the legislator has also stipulated that the results of the duly performed search must be published together with the European patent application eighteen months after the date of filing or priority (see A 93(2)).” There are narrow exceptions to this principle (see e.g. T 1242/04) but these are not relevant for present purposes. [5.4] In the case of a Euro-PCT application, the ISR under Article 18 PCT takes the place of the ESR (A 153(6)). Nevertheless it remains a fundamental principle that a supplementary ESR must generally be drawn up in respect of such an application (A 153(7)). Only where the Administrative Council (AC) has so decided may the supplementary ESR be dispensed with (A 153(7)). Currently, the decision of the AC of 28 October 2009, CA/D 11/09 (OJ EPO 2009, 594) provides for such an exception where the ISR or a supplementary ISR was drawn up by the EPO. Historically there were other exceptions, for example where the ISR was drawn up by the Austrian, Swedish or Spanish Patent Offices: see the Decision of the AC of 17 May 1979 (OJ EPO 1979, 422). These provisions can be traced back to A 177 EPC 1973 and the Decision of the AC of 21 December 1978, CA/D 18/78 (OJ EPO 1979, 4 & 50). There are a number of historical reasons for this dilution of the principle in A 153(6), including no doubt that other ISAs do not necessarily search in all the three languages in which the EPO searches. See also “The Granting of European Patents” by M. Van Empel (Leyden: Sijthoff, 1975), p.289: “… it is in fact hard to predict the quality of the ISRs which will be drawn up by the various International Searching Authorities (ISAs). This quality may vary from one ISA to another, and even within the same authority it may vary according to time and to area of technology. … PCT Member States are, therefore, left free to have the ISR checked on the national level once again and have it supplemented where necessary or desirable.” The travaux préparatoires to the EPC show that it was the hope that a supplementary national search would only be necessary during the initial stages of the PCT. See, e.g., BR/12 e/69, paragraph 69, BR/218/72, paragraphs 160, 162, 165, However, this hope has not yet been fulfilled. The interpretation of R 164 [6.1] The rule is contained in Part IX of the IR, implementing Part X of the EPC, which concerns international applications under the PCT, in particular those for which the EPO is the designated or elected office (Euro-PCT applications). [6.2] The current version of R 164(1) states: “(1) Where the EPO considers that the application documents which are to serve as the basis for the supplementary European search do not meet the requirements for unity of invention, a supplementary ESR shall be drawn up on those parts of the application which relate to the invention, or the group of inventions within the meaning of A 82, first mentioned in the claims.” The rule is obviously not concerned with Euro-PCT applications for which no supplementary ESR has to be drawn up, i.e., with cases where the EPO was the ISA (see point [5.4], above). For those applications for which a supplementary ESR has to be drawn up, the rule operates independently of and additionally to whatever may have happened as regards unity of invention in the international phase pursuant to Article 17(3)(a) and Rule 40 PCT. In the present case a supplementary ESR was drawn up in accordance with the rule. [6.3] R 164(2) in its current version states: “(2) Where the ED finds that the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention, or protection is sought for an invention not covered by the ISR or, as the case may be, by the supplementary ISR or supplementary ESR, it shall invite the applicant to limit the application to one invention covered by the ISR, the supplementary ISR or the supplementary ESR.” [6.4] The drafting of R 164(2) is not ideal. To understand it, it is easier to start form the version of the rule as originally enacted (Decision of the AC of 7 December 2006: OJ EPO 2007, Special Edition No. 1, p. 89). This provided that: “(2) Where the ED finds that the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention, or protection is sought for an invention not covered by the ISR or, as the case may be, by the supplementary
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search report, it shall invite the applicant to limit the application to one invention covered by the ISR or the supplementary ESR.” It is not in any dispute that the expression “the supplementary search report” means “the supplementary ESR”. This is made explicit in the current version of the rule. [6.5] Part of the difficulty is that the rule attempts at one and the same time to deal with three different and potentially overlapping situations arising in examination proceedings. Thus it deals with cases where the ED finds that: (a) The application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention; or (b) Protection is sought for an invention not covered by the ISR; or, as the case may be, (c) Protection is sought for an invention not covered by the supplementary ESR. Thus, unlike R 164(1), the rule covers not only the case where there is a supplementary ESR (as in the present case, because the EPO was not the ISA) but also the case where there is no such report (because the EPO was the ISA). The expression “as the case may be” appears to be intended to deal with these two alternative possibilities; the Board disagrees with the appellant’s submission that it can be regarded as extraneous. When any of these different situations arises the ED is to invite the applicant to limit the application to one invention. Obviously the rule must be read applying a certain amount of common sense. Thus, if protection is sought for an invention not covered by the ISR, but which was covered by the supplementary ESR (because, for example, the SD of the EPO takes a different view on unity from the ISA) it makes no sense to read the rule as requiring the application to be limited to one invention covered by the ISR. [6.6] The appellant was not very specific as to precisely how the rule should be applied in the present case. One way of putting it would be that the application documents for the European grant procedure were found not to meet the requirements of unity the applicant should have been invited to limit the application to one invention covered either by the ISR or the supplementary ESR; the second possible way is that given that protection was being sought for an invention not covered by the supplementary ESR, the applicant should have been invited to limit the application to one invention covered either by the ISR or the supplementary ESR. [6.7] The Board can accept that linguistically these are possible interpretations of the rule. However, the Board does not consider that either is correct. It would mean that in both cases the rule had introduced an exception to the principle, discussed in point [5.4] above, that an application which has not been appropriately searched by the EPO will not be examined by the EPO. Such an exception could only have been introduced by the AC in exercise of its powers under A 153(7). In the exercise of such powers the AC is normally careful to recite the power itself, e.g., “Having regard to the EPC, and in particular A 153(7) thereof …”. See, e.g., CA/D 11/09 (OJ EPO 2009, 594), referred to in point [5.4], above. Of course the AC also has power under A 33(1)(c) to amend the IR, and A 164(2) was part of the amendments to the IR made by the AC on 7 December 2006 in exercise of that power. However, in making these amendments the AC was again careful to recite the power under which the amendments were being made, i.e. “Having regard to the EPC, and in particular A 33(1)(b) thereof …”. See Decision CA/D 20/09 (OJ EPO 2007, Special Edition No. 1, page 89). This decision makes no reference to the power under A 153(7) and, given the significance of the power, it would be surprising, to say the least, if the AC were to have purported to have exercised it, sub silentio and without consultation. The Board has already noted that R 164(2) is merely procedural in nature (see point [4.7], above) and again it would be surprising if its effect was to alter what is to be regarded as searched subject matter, an issue which goes to the ability of the EPO to examine an application for patentable subject matter. [6.8] The Board considers that applying common sense the correct interpretation of the rule, taking the three different (and potentially overlapping) situations referred to in point [6.5] above in turn, is that:
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(a) If the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention, the applicant is to be invited, in the case where there is no supplementary ESR, to limit the application to one invention covered by the ISR; If, on the other hand, in such a case there is also a supplementary ESR, the applicant is to be invited to limit the application to one invention covered by that report. (b) If, where there is no supplementary ESR, protection is sought for an invention not covered by the ISR, the applicant is to be invited to limit the application to one invention covered by that report. (c) If, where there is a supplementary ESR, protection is sought for an invention not covered by that report, the applicant is to be invited to limit the application to one invention covered by that report. This interpretation maintains the principle that an application which has not been appropriately searched by the EPO will not be examined by the EPO. A 164(2): the travaux préparatoires [7.1] The argument of the appellant is not merely that its interpretation of the rule is the natural and therefore the correct reading of the rule, but also that the travaux préparatoires to the rule lead one to the same conclusion. [7.2] To understand the travaux préparatoires and the effect of R 164 fully it is first necessary to consider the position as it was before the EPC 2000 came into force. [7.3] So far as concerned a Euro-direct application, R 46(1) EPC 1973 (equivalent to R 64(1)) provided: “If the SD considers that the European patent application does not comply with the requirement of unity of invention, it shall draw up a partial ESR on those parts of the European patent application which relate to the invention, or the group of inventions within the meaning of A 82, first mentioned in the claims. It shall inform the applicant that if the ESR is to cover the other inventions, a further search fee must be paid, for each invention involved, within a period to be fixed by the SD which must not be shorter than two weeks and must not exceed six weeks. The SD shall draw up the ESR for those parts of the European patent application which relate to inventions in respect of which search fees have been paid.” [7.4] As regards Euro-PCT applications, there were various possibilities on entering the European phase. For the purposes of the present case it is only necessary to consider two of them: (a) If no objection of lack of unity had been raised in the international phase but, a supplementary European search being required, such an objection was raised by the SD on entering the European phase, R 46(1) EPC 1973 would have been applied. See the Guidelines for Examination, June 2005 version, C-III, 7.11.2. Thus a search report would have been drawn up on those parts of the application which related to the invention first mentioned in the claims and the applicant would have been told, in effect, that if further search fees were paid the other inventions would also be searched. (Indeed this was generally the position where a supplementary ESR was required, whatever had happened in the international phase). (b) Where lack of unity was raised in the international phase by the ISA, the applicant would have had the opportunity to pay further search fees and have all matter searched there (Article 17(3)(a) PCT). If the applicant did not do so, then, if no supplementary European search was required, the position was governed by R 112 EPC 1973: “If only a part of the international application has been searched by the ISA because that Authority considered that the application did not comply with the requirement of unity of invention, and the applicant did not pay all additional fees according to Article 17, paragraph 3(a), of the Cooperation Treaty within the prescribed time limit, the EPO shall consider whether the application complies with the requirement of unity of invention. If the EPO considers that this is not the case, it shall inform the applicant that a ESR can be obtained in respect of those parts of the international application which have not been searched if a search fee is paid for each invention involved … The SD shall draw up a ESR for those parts of the international application which relate to inventions in respect of which search fees have been paid. R 46, paragraph 2, shall apply mutatis mutandis.” Although the rule did not expressly say so, it clearly only applied in a case where no supplementary search report was required (for example because the EPO was the ISA) and this is how the rule was interpreted by the Office: 186 | 3398
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see the Guidelines for Examination, June 2005 version, Part E-IX, 5.7. The rule was needed since otherwise in these circumstances there was no route whereby non-searched subject matter could be searched on entering the European phase. [7.5] R 112 EPC 1973 was considered not to operate very satisfactorily. Some of these reasons why are set out in the travaux préparatoires to the original version of the rule, the only relevant document of which the Board is aware being CA/PL 17/06 (See OJ EPO 2007, Special Edition 5, page 256). This states as follows: “1. Many practical problems have arisen within the framework of current R 112 EPC. The rule does not address all possible scenarios, e.g. not the situation where non-unity is only introduced by amendments filed on entry into the European phase. Also the case where after amendment on entry into the European phase the application is unitary, but nevertheless relates to an invention not searched, is not covered. Especially in the situation where there is no supplementary [European] search and R 112 has to be applied by the ED, there is no straightforward procedure. Applicants consider a R 112 communication as a first communication by the ED and respond by e.g. contesting the findings or filing further amendments. This causes considerable delays.” (word in square brackets added by the Board) [7.6] While this statement refers to the problems with R 112 EPC 1973, it should be noted that R 164 is in fact concerned with a much broader range of circumstances (see points [6.2] and [6.5], above). As regards the new R 164, CA/PL 17/06 continues: “2. The EPO believes that the principle should be that examination should only be carried out on inventions covered either by the ISR or by the supplementary [European] search report, in line with G 2/92. Under the proposal, the procedure will be simplified and the opportunity to have multiple inventions searched within the framework of one application will be limited to the international phase. On entry into the European phase, non-unitary subject matter should be deleted. 3. The proposal does not involve any loss of rights for the applicant. The result is just that the applicant will have to use the appropriate way of having any further inventions searched and examined by filing divisional applications. This will bring the Euro-PCT procedure in line with the Euro-direct procedure.” (word in square brackets added by the Board) [7.7] As with R 164(2) itself, the statement in point 2 (“examination should only be carried out on inventions covered either by the ISR or by the supplementary [European] search report”) is dealing with two situations at the same time, i.e., both with the case where there is a supplementary ESR and where there is not. The Board does not consider that it is possible to obtain from this very compressed form of wording any very clear guidance as to the construction of the rule in addition to what can be understood from reading the rule by itself. The rule is already expressed in a compressed form and this further summary does not take the matter any further. [7.8] As to the reference in CA/PL 17/06 to G 2/92, this seems inappropriate since G 2/92 was not concerned with Euro-PCT applications or thus with international or supplementary ESRs but only with the search in European proceedings. In this the Board agrees with the statement in Singer/Stauder (Teschemacher) “The EPC”, Sixth Edition, A 82, point 31, n.73. [7.9] To the extent that the statement in CA/PL 17/06 can be taken as confirming that examination should only be carried out in respect of inventions which have been the subject of a search by the EPO, whether the international search or the supplementary European search, this is at least consistent with G 2/92. [7.10] The appellant relies heavily on the statement in CA/PL 17/06: “The EPO believes that the principle should be that examination should only be carried out on inventions covered either by the ISR or by the supplementary [European] search report …” (emphasis added by the appellant). The appellant argues that when compared with the wording of the rule itself (“it shall invite the applicant to limit the application to one invention covered by the ISR or the supplementary [European] search report”) it is made clear that the invitation must be made in respect of either report, so that an applicant can in effect choose which search is to be the relevant one. The Board does not agree. The additional word “either” in CA/PL 17/06 does not add anything to the meaning. Certainly, to the extent that the text of R 164(2) is ambiguous, the word does not it makes it unambiguous in the sense for which the appellant argues. [7.11] The appellant also argues that since CA/PL 17/06 states that the new rule will not involve any loss of rights (as compared to those under EPC 1973) the appellant must be permitted to pursue claims covered by the ISR. However, this statement in CA/PL 17/06 is immediately followed by the explanation of what is to be
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understood by it: an applicant will be able to have any further inventions searched and examined by filing one or more divisional applications. The Board accepts that the rule change means that the appellant’s position is procedurally less advantageous than it would have been under the EPC 1973 (see points [7.3] and [7.4], above). There has therefore been a loss of procedural rights and such loss may have potentially serious financial consequences for applicants. Nevertheless the framers of the rule and of CA/PL 17/06 appear to have considered that provided there was no loss of the right to have separate inventions searched and examined, albeit only by way of a divisional application, this was sufficient to avoid any loss of rights. CA/PL 17/06 does not promise any more than this, and certainly not that an applicant’s procedural rights will remain the same as before. [7.12] The appellant further relies on the statement in CA/PL 17/06 that the new rule will bring “the Euro-PCT procedure in line with the Euro-direct procedure” and argues that the implication is that an applicant should have a single opportunity to pay additional search fees for a Euro-PCT application, i.e., during the international search phase. While the Board can accept that this statement is puzzling, the fact is that the Euro-PCT procedure is not the same as the Euro-direct procedure. These words must also be read together with the preceding statement that there will be no loss of rights because of the possibility of filing divisional applications. [7.13] The appellant also relies on the statement in CA/PL 17/06 that the practice under the new rule will be in line with G 2/92. It is argued that effect of the G 2/92 is that in order to be barred from pursuing subject matter that has not been searched, an applicant should have failed to pay a relevant search fee. If an applicant has not been asked or had the opportunity to pay a search fee in respect of particular subject matter then it cannot be regarded as unsearched. This is to turn G 2/92 on its head. G 2/92 was concerned with the case where an applicant has been invited by the SD to pay further search fees under R 46(1) EPC 1973 (now R 64(1)) but had declined to do so. In these circumstances the Enlarged Board decided that the applicant could not pursue subject matter in respect of which no search fees had been paid and must file a divisional application if protection for such subject matter was wanted (see the Headnote). It does not follow from this that subject matter in respect of which no search fees have been requested can somehow be regarded as searched. Whether an applicant should be given the opportunity to pay further search fees is a separate issue (see point [9], below). The amendment to R 164(2) [8.1] The appellant further relies on the amendment to R 164(2) which came into effect on 1 April 2010. This amendment was one of a number of changes to the EPC following the introduction of the availability from the EPO of supplementary ISRs (“SISRs”) pursuant to Rule 45bis PCT. The changes enable applicants to request a search during the international phase from as many participating ISAs as they wish so as to minimise the risk of new prior art being uncovered after entry into the national phase. It enables them, for example, to take account of particular expertise certain ISAs may have in certain languages: see CA/56/09, point 4. As part of the implementation of the change, the AC decided, again with specific reference to its powers under A 153(7) (see point 6.7, above), that a supplementary ESR should be dispensed with not only where the ISR has been drawn up by the EPO but also where an SISR has been drawn up by the EPO. See Decision CA/D 11/09 of 28 October 2009 (OJ EPO 2009, 594). The reason is self-evident: as with an ISR, where the EPO has drawn up an SISR such a search is sufficient for the purposes of examination in the European phase. [8.2] As part of these changes, the text of R 164(2) was amended as set out at point 6.3, above: see the decision of the AC CA/D 20/09 of 27 October 2009 (OJ EPO 2009, 582). The amendment was necessary because the supplementary ESR was now to be dispensed with in the circumstances described above: see CA/166/09, point 5. The expression “as the case may be” in the Board’s view again reflects the fact that now there may or may not be either an SISR or an supplementary ESR; it will depend on the circumstances. [8.3] It is argued by the appellant that if the effect of the original wording of R 164(2) is that the supplementary ESR had the ability to supersede the ISR, then it must be the case that any SISR would supersede the ISR, something which cannot be correct, and would require the EPO to consider any SISR ahead of even a European ISR. The wording “as the case may be” can only mean that subsequent search reports may be taken into consideration in cases where they exist and not they supersede the ISR in some way. [8.4] The Board does not agree. Although the amendment makes the rule yet more complicated since it now deals with the further possibility of there being an SISR drawn up by the EPO, it cannot be taken to have made a fundamental departure from the way in which the previous version of the rule operated or to affect the underlying general principle that in the European phase only applications which have been appropriately searched by the EPO will be examined for patentability. As explained above, the rule change was made in the
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context of the exercise of the AC’s powers under A 153(7), i.e., dispensing with the need for a supplementary European search where an international search (of whichever kind) has been drawn up by the EPO. [8.5] Indeed, the travaux préparatoires to the rule change not only confirm this but also confirm the Board’s interpretation of the original rule. Thus the proposal for the change in the rule (CA/166/09) states, at point 8: “In the case of a lack of unity of invention, an SISR will only be established for the invention first mentioned in the claims (Rule 45bis.6(a)(i) PCT). There is no opportunity for the applicant to have further inventions searched against the payment of additional search fees. In line with the principle that the EPO will only examine inventions it has searched, a consequential amendment to R 164(2) is necessary, obliging the applicant to limit his application to the invention covered by the SISR.” (emphasis added by the Board) Indeed, on the basis of the appellant’s arguments, it is hard to understand it was said that the obligation was to limit the application to the invention covered by the SISR, rather than to the ISR or the SISR. [8.6] Generally, the Board cannot agree with those aspects of the appellant’s arguments here and elsewhere […] which are concerned with whether the ISR should be “ignored”, with further proceedings to be based only the supplementary ESR, or whether the supplementary search report “supersedes” the ISR or an SISR. Where a supplementary ESR is required, all search reports are potentially equally relevant for the purposes of examination in the European phase. A right to a further search [9.1] The appellant argues in the alternative that if its construction of R 164(1) is wrong then it must be entitled to a invitation from the EPO to pay a further search fee and thus to have the EPO search the claims not covered by the (first) supplementary ESR. Otherwise, it is argued, it will have suffered a loss of rights, contrary to what is said in CA/PL 17/06. This right to a further search is said to be available under R 64(1). [9.2] The Board has already noted that this statement about no loss of rights was made in the context of it also being said that an applicant can always pursue unsearched matter by way of one or more divisional applications. [9.3] Additional searches may sometimes be necessary during examination or opposition proceedings (see the Guidelines for Examination B-II, 4.2) but R 164(1) has ruled out the possibility of such further search in the present circumstances, in contrast to the position under R 64(1). CA/PL 17/06 makes the position clear when it states, in point 2: “Under the proposal, the procedure will be simplified and the opportunity to have multiple inventions searched within the framework of one application will be limited to the international phase. On entry into the European phase, non-unitary subject matter should be deleted.” (emphasis added by the Board) The Board therefore rejects this argument. R 164: possible conflict with the PCT and articles of the EPC [10.1] The interpretation given to R 164 by the Board means that applicants who file a PCT application with an office other than the EPO may be at a procedural disadvantage in the European phase compared with applicants who file the international application with the EPO (and Euro-direct applicants). This disadvantage arises not out of R 164(2) but rather out of the application of R 164(1), which, the Board has held in point [9.3], above, prevents claims relating to more than one invention being searched in the European phase. Although the appellant did not advance any such argument, the Board has nevertheless considered whether, in the appellant’s favour and having regard to A 164(2), R 164 is compatible with the EPC or the PCT. [10.2] The following provisions appear relevant: (a) A 150(2) This article provides that international applications filed under the PCT may be the subject of proceedings before the EPO. In such proceedings, the provisions of the PCT and its Regulations are to be applied, supplemented by the provisions of the EPC. In case of conflict, the provisions of the PCT or its Regulations are to prevail. These provisions are the same as those in A 150(2) EPC 1973.
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(b) A 153(2) This article provides that an international application for which the EPO is a designated or elected Office, and which has been accorded an international date of filing (a Euro-PCT application), shall be equivalent to a regular European application. The article replaces A 150(3) EPC 1973, according to which an international application, for which the EPO acts as designated Office or elected Office, was to be deemed to be a European patent application. As part of the travaux préparatoires to A 153(2) it was explained that the new article “governed, in addition to Article 11(3) PCT, the conditions under which an international application has the effect of a European application, and clarifies the principle deriving from Article 150(3) EPC 1973.” (See OJ EPO, 2007, Special edition No. 4, and MR/2/00). Article 11(3) PCT provides that: “Subject to A 64(4), any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) [which concern the essentially formal requirements for being accorded a filing date] and accorded an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.” The principle deriving from A 150(3) EPC 1973 was explained in Singer/Stauder (Busse)”The EPC”, Third (English) Edition (2003), Volume 2, Article 150, note 20, as follows: “The provision set out in [A 150(3) EPC 1973] is primarily directed towards the treatment of the international application after the end of the international phase. The application must then be examined for patentability on the same way as a European application.” (emphasis by the Board (sic)). (c) A 153(5) This article provides that a Euro-PCT application is to be treated as a European patent application and shall be considered as comprised in the state of the art under A 54, paragraph 3, if the conditions laid down in paragraph 3 or 4 and in the IR are fulfilled. This Article was new in the EPC 2000 and was explained in the travaux préparatoires (See OJ EPO, 2007, Special edition No. 4, page 186, and Preparatory Document MR/2/00) as follows: “New A 153(5) clarifies the conditions for entry into the European phase, referring expressly to new paragraphs 3 and 4 and to the IR, where these conditions are specified (see R 159 EPC 2000). This is now combined with the stipulation, taken from A 158(1), second sentence, EPC 1973, that a Euro-PCT application shall only be considered as comprised in the state of the art under A 54(3) EPC if the conditions in question are fulfilled.” In Visser “The Annotated EPC”, H. Tell, 20th Edition, (2012), the author states: “Since the Travaux Préparatoires EPC 2000 state that this provision gives the conditions for entry into the European phase and those for considering a Euro-PCT application as a European prior right, it must be concluded that the word ‘treated’ refers to ‘processed’ and ‘examined’ in the sense of Article 23 PCT. Since this processing and examining is independent of the publication of the Euro-PCT dealt with by A 153(3) and (4), the reference to these two paragraphs in A 153(5) should pertain to the conditions for the European right only. The conditions for entry into the European phase are provided in R 159(1).” In Singer/Stauder (Hesper) “The EPC”, Sixth Edition (2012), Volume 2, Article 153, notes 191 and 192, the following comment is made (the Board’s own translation of the German text): “191. The meaning of the first part of A 153(5) “The Euro-PCT application shall be treated as a European patent application … if the conditions laid down in the IR are fulfilled” is unclear. In any event no meaning should be read into this passage which is not in accord with the principle embodied in Article 11(3) PCT in connection with A 153(2), whereby a Euro-PCT application [sic - an international application?] is equivalent to a Euro-PCT application as from the filing date of the international application. 192. The sense of this requirement can be better understood if it is borne in mind that no substantive alteration of the provisions in Art. 158 EPC 1973 was intended and that the reference to the IR replaces the two requirements for entry into the European phase laid down in Art. 158(2) EPC 1973 - the payment of the national fee and the filing of a translation according to Arts 22 and 39 PCT. As a result of its [i.e. Art. 158 EPC 1973’s] replacement by Art 158(2) EPC (2000) without any incorporation of further conditions into the IR, the special status and the original role of the actions envisaged by Arts 22 and 39 PCT for the
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commencement of the European phase is no longer apparent in the EPC system.” (Comment in italics by the Board.) (d) Article 27(1) PCT This article provides that: “No national law shall require compliance with requirements relating to the form or contents of the international application different from or additional to those which are provided for in this Treaty and the Regulations.” [10.3] The Board does not consider that it can be extracted from any of these provisions that all Euro-PCT applicants must have identical procedural rights, whether identical to those of all other Euro-PCT applicants or Euro-direct applicants. The provisions are concerned primarily to specify the formal requirements for a PCT application to be accepted into the national phase, to provide that the filing date of such an application is to be that of the international application and that such applications are all examined for patentability on the same basis. Whether this is done in the application itself or by way of divisional applications does not appear to be dictated by the PCT. Legal texts [11.1] So far as the Board is aware, no commentator has expressed an opinion differing from the above conclusions of the Board. [11.2] In “Problems arising from R 164” by E. A. Kennington, epi information, 1/2009, p.6, the author anticipates precisely the present case and reaches the same conclusions, albeit adding that the rule is discriminatory and arbitrary in its effects and should be rewritten. [11.3] Singer/Stauder (Teschemacher) “The EPC”, Sixth Edition, A 82, point 31 (the Board’s own translation): “… if the SD considers that the application is non-unitary, then in accordance with R 164(1) it will draw up the supplementary ESR only in respect of the invention first mentioned in the claims. The consequences for the substantive examination are the same as for a partial search report under R 64 … While the possibility still exists, at least in the international phase, for applications for which the EPO is responsible as the ISA to obtain a search by the EPO of actual or alleged non-unitary parts through the payment of additional fees, for applications for which a supplementary search report is necessary, such a possibility is completely lost. The principal stated in the explanation to the new rule that a substantive examination should only be carried out in relation to inventions which are covered either by the ISR or the supplementary ESR, treats two different situations in the same way. The ISR drawn up by an ISA other than the EPO is neither actually nor legally a sufficient basis for proceedings before the EPO.” Conclusions on main and first auxiliary requests [12.1] The Board can accept that the position in which the appellant finds itself was apparently not taken into account when R 164 was implemented and that it operates in a way which was probably not foreseen and may be thought to be unfair. Although this is of little comfort to the appellant, the Board notes that there is a proposal to amend the rule on the agenda of the AC for October 2013, which would appear inter alia to deal with the problem which the appellant has encountered, even though the proposal is not directed primarily at the point in the present case: For the text of the new rule and explanation, see CA/PL 9/13, dated 30 August 2013. [12.2] In conclusion, neither the main nor the first auxiliary request is allowable. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 726/10 – For Information Only 26 Sep 2013
In this case the Board found that the Examining Division (ED) should have granted interlocutory revision. The appellant had filed a new claim together with its statement of grounds of appeal (amendments with respect to claim 1 as refused – for lack of novelty – are highlighted): An in-line humidifier A system 10 for humidifying a gas for infusion into a patient eye comprising: a gas source 12; an in-line humidifier 20 comprising a housing 22 having an inlet and outlet connection 26a, 26b in communication with an interior of the housing 22 through which is flowed a gas in one direction extending between the inlet connection 26a to the outlet connection 26b;, and a humidifier section 24 disposed within the housing 22, the humidifier section 24 including a material that can releasably retain liquid therein; a gas inflow instrument 4; and tubing 16 extending (a) between the gas source 12 and inlet connection 26a and (b) between the outlet connection 26b and gas inflow instrument 4, wherein the humidifier section 24 is disposed within the housing 22 so the gas entering through the inlet connection 26a flows through the humidifying section 24 in one direction, wherein the gas source 12, tubing 16, in-line humidifier, and gas inflow instrument 4 are configured and arranged such that gas only flows in one direction from the gas source 12, through the tubing 16, into the in-line humidifier 20 via inlet connection 26a, through the humidifier section 24, out of the in-line humidifier 20 via the outlet connection 26b, through the tubing 16 and out of the gas inflow instrument 4 into the eye, whereby the flowing gas can be humidified by the material, and so the humidified gas exits the housing 22 via the outlet connection 26b and is delivered to the eye, where the flowing gas is selectively humidified as it flows through the in-line humidifier 20 by at least some of the liquid releasably retained within the material, and wherein the gas is supplied to the eye via the gas inflow instrument 4 at a pressure between 0 and 100 mm Hg. [2] According to A 109(1) “[i]f the department whose decision is contested considers the appeal to be admissible and well founded, it shall rectify its decision”. [3] According to the established case law of the boards of appeal, an appeal is to be considered well founded if the objections on which the refusal of the application was based are overcome by the main request of the appeal. Other possible irregularities do not preclude rectification of the decision, since an applicant should have the right of examination in two instances (for example T 139/87, T 47/90, T 794/95).
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[4] Claim 1 of the request which formed the basis for the impugned decision has been amended such that present claim 1 is now directed to a system for humidifying gas for infusion into a patient eye comprising a gas source, as defined in former claim 5. Moreover, present claim 1 comprises further additional features. In particular, a gas inflow instrument is now also defined as allowing the gas to be supplied to the eye via the gas inflow instrument at a pressure between 0 and 100 mm Hg. [5] As the appellant correctly remarks, claim 5 was not objected to in the impugned decision. [6] The decision under appeal explains that document D1 discloses an in-line humidifier for humidifying a gas. More particularly, however, document D1 concerns a system for connection to the respiratory tract of a patient comprising a filtering device in the form of a so-called heat and moisture exchanger connected to a tracheal tube on one side and to a mechanical breathing device, such as a respirator, on the other side. According to D1, “heat and moisture exchangers operate in such a way that the moisture of the air exhaled by the patient is accumulated and stored in an air-permeable material and thereafter partly evaporates during inhalation and is returned to the patient in the air inhaled”. The aim of the invention of document D1 is, in particular, “to provide [such] a filtering device which [...] takes up a small volume while still having good bacteria-filtering and heat/moisture exchanging qualities”. From the disclosure of document D1 it cannot be derived how the system of document D1 could be suitable for humidifying gas for infusion into a patient eye. This aspect is not addressed in the impugned decision either. The quantity of air circulating in the heat and moisture exchanger of document D1 (several litres every respiration, corresponding to the patient’s lung capacity) does not seem to be comparable to the quantity suitable for infusion into an eye. Additionally, from a reading of document D1 the Board cannot establish the disclosure of a gas inflow instrument out of which gas flows into the eye at a pressure between 0 and 100 mm Hg. [7] Hence, at least due to the amendments mentioned above, the novelty objection over document D1, on which the impugned decision is based, does not apply to the subject-matter of claim 1. [8] In an obiter dictum in the impugned decision and in the preceding written procedure, the ED held that the term “selectively”, which is still present in claim 1 as now on file, lacked clarity. Moreover, it was held that claims 6 to 8, the features of which are now present in claims 1, 5 and 6, did not fulfil the requirements of R 43. However, the impugned decision is not based on grounds of which objections of non-compliance with A 84 and R 43 form part. [9] As already found in decision T 1640/06, objections that do not form part of the grounds for a refusal of an application, in particular objections in obiter dicta, can be meant as voluntary information to an applicant on the preliminary opinion of the ED. This could assist the applicant if it came to subsequently considering said objections in detail. For this reason, it is in particular not necessary that the applicant is given an opportunity to present comments according to A 113(1) on said objections, nor that said objections are considered in oral proceedings according to A 116, in order for the ED to arrive at a final decision. Accordingly, the Board is of the opinion that the question whether or not the claims filed with the statement setting out the grounds of appeal take into account the remarks made in the obiter dictum is irrelevant for deciding whether interlocutory revision should be granted or not. [10] Hence, the ED should have considered the appeal to be admissible and well founded in view of the reasons forming the basis of the impugned decision and should have rectified said decision in accordance with A 109(1). [11] In accordance with A 111(1), it is left to the Board to decide whether to exercise the competence of the department which was responsible for the decision appealed or to remit the case to that department for further prosecution. In this evaluation, the right of a party to two instances has to be considered. In view thereof, the Board decides to remit the case to the department of first instance for further prosecution. [12] The ED should examine whether the present request fulfils all the requirements of the EPC. In particular, since the amendments involve a substantial shift of the subject-matter of the independent claim, other documents dealing with the administration of air under pressure into the interior of a patient’s eye might have to be analysed in more detail. Should you wish to download the whole decision, just click here.
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The file wrapper can be found here. NB: This decision has also been discussed and commented on Le blog du droit européen des brevets (here).
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T 2303/10 – Only One Choice
K’s Law – The ebook
T 2303/10 – Only One Choice 25 Sep 2013
This examination appeal deals with the correction of an error. Claim 1 before the Board of appeal read (in English translation): Objective lens having a housing (102; 202; 302; 402), an iris diaphragm (110; 210; 310; 410), and a plurality of lens groups (I, II, III, IV), wherein, for focusing said objective lens (100; 200; 300; 400) while minimizing a variation of an image angle, at least two lens groups (III/IV; II/III) are adapted to be moved relative to said housing (102; 202; 302; 402), one lens group (III; II) being arranged in front of said iris diaphragm (110; 210; 310; 410), and the second lens group (IV; III) being arranged at least partially behind said iris diaphragm (110; 210; 310; 410), characterized in that in the objective lens the condition f’(e) = f’(∞)/(1-f’(e)*β(e)/APF) is fulfilled with a maximum deviation of less than 10%, wherein f’(e) is the focal length of said objective lens when a distance e to an object is set; f’(∞) is the focal length of said objective lens when a distance ∞ to an object is set; β(e) is the imaging scale of said objective lens when a distance e to an object is set; and APF is the distance between the exit pupil and the focal point. (my emphasis) *** Translation of the German original *** [2.1] Claim 1 on file is identical to claim 1 on which the decision was based. It is directed at an objective lens that fulfils the condition f’(e) = f’(∞)/(1-f’(e)*β(e)/APF) with a maximum deviation of less than 10%. The original disclosure of said condition is found in claim 2 and on page 16 of the application as filed. There the function (Größe) β(e) is defined as “the imaging scale of said objective lens when a distance ∞ to an object is set”. During the examining proceedings the appellant has amended the original definition of the function β(e) in the description and in the claim such that β(e) is defined to be the imaging scale of said objective lens when a distance e to an object is set”. It has argued that this amendment is a correction within the meaning of R 139. The Examining Division (ED) has justified the refusal of the application by pointing out that the amendment of the definition of the imaging scale β(e) was not allowable within the meaning of R 139 and thus constituted a violation of A 123(2). [2.2] It can be seen from the documents as filed that – in view of the fact that the function “f’(e)” is defined to be “the focal length of said objective lens when a distance e to an object is set” and the function “f’(∞)” is defined as “the focal length of said objective lens when a distance ∞ to an object is set” – the original definition of the function “β(e)” as “the imaging scale of said objective lens when a distance ∞ to an object is set” lacks consistency between the argument “e” of the function “β(e)” and the definition the latter as a function of the objet distance ∞. Thus, as the ED has correctly established in its decision, the original definition of the function β(e) is erroneous. However, in regard of the correction of the obvious mistake, the ED in the impugned decision expressed the opinion that the skilled person would have had doubts whether in the original definition of the function β(e) “∞” had to be replaced by “e” or whether the function β(e) had to be replaced by β(∞) in the equation and in the definition of the function, so that the amendment was not allowable within the meaning of R 139. However, the fact that the equation expressing the condition also uses the function “β(e)” and not “β(∞)” already pleads against a correction replacing “β(e)” by “β(∞)”. As the appellant has pointed out in its statement of grounds of appeal, the fact that the imaging scale β(e) of the objective lens is equal to zero when the object distance e = ∞ (as follows from the relationship β(e) = f’(e)/(e-f’(e)), which is well known to the skilled person of the relevant field) so that the equation of the claimed condition would be reduced to f’(e) = f’(∞), which clearly contrasts with the purpose of the invention and the claimed subject-matter, also pleads against such a 195 | 3398
T 2303/10 – Only One Choice
K’s Law – The ebook
correction. As a matter of fact, the claimed objective lens uses a movable lens group for focusing the objective lens and the claimed condition presupposes variable values of the focal length f’(e) of the objective lens as a function of the object distance. Moreover, […] the description discloses different values of both the imaging scale β(e) and the focal length f’(e) of the objective lens for each of the embodiments. It can be seen that these values are a characteristic feature (Kenngröße) of the objective lens for different object distances (and not, as assumed by the ED, a characteristic feature of the individual lens group of the objective) and represent a functionality depending on the object distance “e”. Thus it is clear to the skilled person that a correction replacing “β(e)” by “β(∞)” in the claimed condition would be totally inconsistent with the disclosure of the application. In contrast the second alternative mentioned by the ED, i.e. the correction of the definition of the function β(e) as the imaging scale of said objective lens when a distance e (rather than a distance ∞) to an object is set, is technically meaningful and completely in line with the disclosure of the application as filed. Thus the skilled person of the relevant field (i.e. a skilled person working in the field of optical design, and in particular in the field of objective lens design) would directly and unambiguously realise that the original definition of the function β(e) is erroneous in regard of the object distance ∞ and that “β(e)” can only mean the imaging scale of the objective lens when a distance “e” to an object is set – in agreement with the notation that is usual in this field. [2.3] The Board comes to the conclusion that the amendment criticised by the ED is an allowable correction of an obvious clerical error within the meaning of R 139 and that the amended [subject-matter] does not go beyond the subject-matter disclosed in the application as filed within the meaning of A 123(2) (G 3/89). Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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R 4/13 – Afterthoughts
K’s Law – The ebook
R 4/13 – Afterthoughts 24 Sep 2013
This is a petition of review concerning case T 810/09 where Board 3.2.06 dismissed the appeal of the patent proprietor against the revocation of its patent. The petition was not successful, but the decision contains some noteworthy statements. The second complaint concerned an alleged violation of the right to be heard due to the fact that the “essentiality test” had not been considered: [3.1] The file shows that the petitioner raised this issue in its grounds of appeal and that the Technical Board in its communication expressed its preliminary view that the test was not applicable in the circumstances of the case. It is not disputed that the point was then discussed during the oral proceedings (OPs) and that during the discussion the Board indicated its disagreement with the petitioner’s submission. In the OPs before the Enlarged Board (EBA) the petitioner said that the Technical Board had indeed made its view very clear that the “essentiality test” was not applicable. Further, it is not suggested in the petition that the petitioner did not know during the OPs that the Technical Board had come to the conclusion that the subject matter of the petitioner’s main request infringed A 123(2) and was not allowable and thus that the petitioner’s submission had not been accepted. [3.2] No objection under R 106 was however raised by the petitioner. In the petition it was said that the petitioner was not able to present its arguments pointing to a procedural defect and a violation of the right to be heard because the Office’s September 2012 presentation on Amendments was not then available to the petitioner. [3.3] In its communication the EBA said it did not understand what the procedural defect was alleged to have been or how the petitioner’s right to be heard was said to have been violated. The petition did not appear to substantiate any reason why the complaint which the petitioner was now making could not have been raised during the OPs before the Technical Board. The presentation said to have been issued by the EPO appeared to be irrelevant in this respect. [3.4] In OPs before the EBA the petitioner in effect said that its right to be heard was infringed because the petitioner was not in a position to answer the Technical Board’s assertion that the essentiality test was not applicable. If the petitioner had had the Office’s presentation it might have been able to persuade the Technical Board otherwise. [3.5] The petitioner, however, was not only in a position to answer the Technical Board’s view on the essentiality test but actually did so. The petitioner did not raise an objection under R 106 when the Board said the request was not allowable. It is always the case that a party may come across materials after a decision has been taken that could possibly have helped its case. But this has nothing to do with the right to be heard. [3.6] As regards any complaint of a violation of the right to be heard in respect of this complaint, the petition is therefore clearly inadmissible. [3.7] In the petition this complaint is headed “Fundamental procedural defect and violation of the right to be heard due to non-consideration of the so-called ‘essentiality test’” (underlining added by the Board). In the body of the petition under this complaint reference is also made to a “procedural defect and a violation of the right to be heard” (underlining added by the Board). To the extent that this complaint was intended to embrace a fundamental procedural defect under A 112a(2)(d), no such complaint was substantiated in the petition or explained subsequently (see also point 2.1, above). It was not alleged that any objection under R 106 was made in respect of this complaint or that the petitioner was unable to raise such an objection. [3.8] As regards this complaint as a whole, therefore, it is clearly inadmissible. The third complaint was that the right to be heard had been violated because a group of auxiliary requests had not been admitted. 197 | 3398
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[4.1] In the petition it was said that the reasoning given by the Technical Board for admitting these requests was virtually identical to the argument presented by Opponent 2 during the OPs. The petitioner nevertheless said that during the OPs the Technical Board did not “argue[] accordingly, but judged subject matter of claim 1 to contravene the requirements of A 123(3) as it was not prima facie clear whether the amendment broadened the scope of protection or not. Accordingly, the arguments presented in the written decision have not been presented or acknowledged by the Board of appeal during OPs.” Further arguments were advanced as to why the right to be heard had been infringed […]. [4.2] In its communication the EBA remarked that this complaint appeared to be partly based on something which the petitioner said it only learnt when it received the written reasons for the Board’s decision. The EBA said that it would therefore provisionally assume in the petitioner’s favour that the requirements of R 106 were satisfied. The EBA, however, went on to say that it again failed to understand the legal basis of the complaint. The petitioner did not allege that it was not given the opportunity to argue why this group of requests was admissible. Indeed the petitioner itself said that the written reasons given by the Board corresponded to the arguments of Opponent 2. It followed that the petitioner knew what the possible arguments against these requests were and had the opportunity to respond. [4.3] During the OPs before the EBA the petitioner said that the Technical Board appeared to be uncertain that the objection was valid and so far as the petitioner was concerned the objection was technical nonsense anyway (it is not necessary to go into the petitioner’s explanation of why this was so). In effect the petitioner argued that if it had known the Board was going to take Opponent 2’s arguments seriously it would have wanted to make further submissions. [4.4] The petitioner had heard Opponent 2’s submissions and had made its own in answer. The Board then decided against the petitioner. This can only have been because the Board did not agree with the petitioner. If the petitioner thought it needed to make further submissions it should have asked for the debate to be reopened. It did not do so. If it thought nevertheless that its right to be heard had in some way been infringed it could have raised an objection under R 106. It did not do so. To the extent that the petitioner was not told of the Board’s reasons for refusing these requests at the OPs, the case law of the EBA has repeatedly emphasised that it is not an aspect of the right to be heard under A 113(1) that a party is entitled to know in advance of the reasons why a board intends to reject a request (see e.g., decision R 12/09 [11]). This fact could therefore not constitute an infringement of the right to be heard. Even if the petitioner only learnt that the Technical Board had agreed with Opponent 2’s arguments when it received the written reasons, the petitioner accepts that these reasons fully accorded with Opponent 2’s arguments, being arguments which the petitioner had had the opportunity to answer and had in fact answered. As the EBA has said many times, the fact that the petitioner considers the Technical Board’s reasons are wrong is wholly irrelevant. See, e.g., decision R 2/08 [8.2]. [4.5] As regards this complaint, therefore, and whichever way the matter is looked at, even if the petition were not clearly inadmissible it is clearly unallowable. Complaint # 4 also concerned the non-admission of requests [5.1] In respect of this complaint the petitioner raised an objection under R 106 which corresponds to the objection now raised. The Technical Board dismissed the objection for reasons set out at point 11 of its written decision. As regards this complaint, therefore, the petition is admissible. [5.2] The Technical Board refused to admit these requests relying on the discretion referred to in Article 12(4) RPBA. The opening words of this article state: “(4) Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, ...” [5.3] In the petition it was said that these requests were different from the second auxiliary request withdrawn before the Opposition Division (OD) and it was pure speculation to say, as the Technical Board did, that they could have been presented during those proceedings. [5.4] It is correct that these requests did not correspond exactly to the second auxiliary request which was withdrawn before the OD. However, they are clearly based on this request and contain the crucial combination of two features that the splines are flush with the outer peripheral surface of the axle body and do not extend radially outwardly relative to the outer peripheral surface of the axle body. The Technical Board also took account of this point […]. However, it is not necessary to go into the issue further since in reality it is not 198 | 3398
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disputed that auxiliary requests III.2 and III.3 could have been presented before the OD. In cases where the discretion not to admit requests is exercised by a Board in reliance on this part of Article 12(4) RPBA it is inevitably a matter of speculation whether and in what circumstances the party would have filed such requests. Such speculation is however irrelevant as regards the existence and exercise of the discretion and the Technical Board quite correctly did not enter into such speculation. In reality it is not therefore in dispute that the Technical Board had jurisdiction not to admit the requests. [5.5] The point about the admittance of these requests had been raised in the Technical Board’s communication and the petitioner was heard on it at the OPs. The EBA has repeatedly pointed out that in such circumstances a petition for review cannot be used as a means of reviewing the way in which a judicial body such as a Board of Appeal has exercised its discretion in relation to a procedural matter: see decision R 10/09 [2.2] and decision R 11/11 [8]. [5.6] In the course of the OPs before the EBA the petitioner also emphasised that these requests, with the additional features added to those of the second auxiliary request withdrawn before the OD, solved all the objections by the Board to its previous requests. However, it was not suggested that the petitioner did not present or was prevented from making this argument to the Technical Board. To the extent that it was a relevant consideration therefore the petitioner had the opportunity to be heard on the point. [5.7] As regards this complaint, therefore, it is clearly unallowable. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1539/09 – Going Mental
K’s Law – The ebook
T 1539/09 – Going Mental 23 Sep 2013
This is an examination appeal. Claim 1 of the main request before the Board read (in English translation, based on the parallel U.S. application): Computer-supported method of producing and/or executing programme code (software code), with at least one visualisation surface for the representation of establishable objects, by way of which information is inputted and outputted when executing the programme code, wherein objects of the visualisation surface are writingly and readingly accessed by means of the produced programme code, wherein programme components of the category run and function are provided for selection, characterised in that the components category run comprises the run (9), start (8,13), event (11) and end (10, 17) components and wherein the components category function comprises the function component (12) and instructions for the interconnection of programme components are predetermined, which regulate the call-up of the programme components and the serial or simultaneous execution thereof,
such that programme components of the category run are always serially interconnected, thereby establishing that execution thereof takes place chronologically, so that during the execution of the programme only one run component is executed at a time; such that in the case of a branching the execution of the programme course is guided to one of a plurality of different run components by the establishment of a condition; such that the start of a run is effected by a start component and the start component is designed such that it calls up a run component or an end component and that the end component forms the conclusion of a run;
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such that the component type event (11) of the category run is called up by events which occur in the execution of the programme and in turn can call up a run component or a function component, and such that the function component is called up by a component type of the category run and tasks which are implemented parallel with the calling-up component are carried out by the function component, wherein the function component itself cannot call up a programme component,
wherein a symbol (8-13) is allocated to each of the selected programme components and represented on a structure diagram representing the execution of the programme, wherein the symbols (8-13) are further automatically connected to each other by means of lines representing serial and parallel execution, taking account of the predetermined rules, thereby representing the programme structure and the execution of the programme. Paragraph 4 of the decision has something to say on the contribution of programming to the solution of a technical problem: *** Translation of the German original *** [4] The invention is directed at a graphical programming language and environment designed to make a user capable of generating programme code without particular know-how and without having to learn a great deal. The Board is of the opinion that the effect consisting in reducing the mental effort of the user in programming is not a technical effect. This is all the more true as [this effect] is sought for all programmes, i.e. irrespective of the purpose which the programme is to serve. [4.1] When programming – i.e. formulating programme code, “encoding” – a programmer has to choose the formulations that lead to the desired result from among the repertoire of a programming language. In this context the programming language defines, on the one hand which formulations are “well-shaped” (“wohlgeformt”) and, therefore, admissible at all (syntax), and, on the other hand, which “behaviour” (“Verhalten”) is attributed (zugeschrieben) to a programme (operational semantics). In particular cases the choice of the programming language can have an influence on how easily (and sometimes, if at all) the solution of a problem can be formulated as a programme. [4.2] However, the Board is of the opinion that the action of programming is essentially a mental process – comparable to the verbalisation of a thought or the formulation of a mathematical fact in a calculation – which, to quote the Enlarged Board of appeal (G 3/08 [13.5.1]), lacks “further technical effects”. This holds true at least when and to the extent that, as in the present case, the action of programming does not serve in a causal way the realisation of a technical effect within the framework of a concrete application or environment. [4.3] Therefore, the Board comes to the conclusion that the definition and provision (Bereitstellung) of a programming language or of means related to a programming language per se does not contribute to the solution of a technical problem. NB: The Board also provided a headnote: The action of programming – that is to say, formulating programme code – is a mental process, at least to the extent that it does not serve in a causal way the realisation of a technical effect within the framework of a concrete application or environment. Therefore, the definition and provision of a programming language per se does not contribute to the solution of a technical problem, even if the choice of the means of expression related to the programming language serves to reduce the mental effort of the programmer. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1248/11 – Mixed-Up
K’s Law – The ebook
T 1248/11 – Mixed-Up 20 Sep 2013
Both the patent proprietor and the opponent filed an appeal after the Opposition Division had maintained the patent-in-suit in amended form. Claim 1 of the main request before the Board read: 1. A mixer (100, 200, 300, 400, 500, 600) for producing a paste by mixing components, comprising a housing (110, 210, 310, 410, 510, 610) having a longitudinal axis, a rear end (111, 211, 311, 411, 511) and a front end (112, 212, 312, 412, 512) provided with a discharge opening (113, 213, 313, 413, 513); and a mixing chamber (120, 220, 320, 420, 520) formed in said housing and having an entry side (121) facing said rear end of said housing; characterized in that said mixer is adapted such that the initial amount of at least one of said components entering said mixing chamber or the initial amount of mixture being prepared in said mixing chamber is diverted from said discharge opening, and the subsequent content of said mixing chamber is extrudable from said discharge opening; and wherein said mixer comprises a reservoir (140, 240, 340, 440, 540, 640) for storing said initial amount. The Board found this subject-matter to be insufficiently disclosed. I found the decision interesting because it discusses sufficiency of disclosure of subject-matter defined via its function. Requirements for sufficiency of disclosure [1.1] It is established jurisprudence of the boards of appeal that the requirements for sufficiency of disclosure are met only if the invention as defined in the claims can be performed by a person skilled in the art in the whole area claimed without undue burden, using common general knowledge and having regard to further information given in the patent in suit (see T 435/91 [2.2.1]). [1.2] That principle applies to any invention irrespective of the way the claims are defined, be it by way of a structural or a functional feature. The peculiarity of the functional definition of a technical feature resides in the fact that it is defined by means of its effect. That mode of definition comprises an indefinite and innumerable host of possible alternatives of diverse structure, which is acceptable as long as all these alternatives achieve the desired result and are available to the skilled person. This reflects the general principle in law whereby the protection sought must match the technical contribution made by the disclosed invention to the state of the art. Therefore, it has to be established whether or not the patent in suit discloses a technical concept fit for generalisation which makes available to the skilled person the host of variants encompassed by the functional definition of a technical feature as claimed (see T 1063/06 [5]). In other words, if, in the patent in suit, gaps in information and/or a lack of guidance can be identified, there is insufficiency of disclosure. Information regarding technical details [1.3] Claim 1 relates to a mixer for producing a paste by mixing components. Neither the paste nor the components are further defined in claim 1. A paste is not a well-defined expression for a solid dispersion in a liquid that has a viscous consistency. The mixer should make it possible to produce a paste (of any type) by mixing components (of any type). As admitted by the parties, it is known to the skilled person that a paste itself can vary considerably in viscosity. The components used for producing the paste can vary even more.
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[1.4] Claim 1, which is directed to a mixer, i.e. an apparatus, is characterised by process features that define the “result to be achieved” (functional definition): “said mixer is adapted such that the initial amount of at least one of said components entering said mixing chamber or the initial amount of mixture being prepared in said mixing chamber is diverted from said discharge opening, and the subsequent content of said mixing chamber is extrudable from said discharge opening; and wherein said mixer comprises a reservoir for storing said initial amount”. [1.5] In the present case, it has to be analyzed whether the skilled person would be enabled to construct the different variants of mixers falling within the scope of claim 1, depending on the type of paste that is to be obtained and on the components that are to be used for producing the paste. This means that, for specific components, the mixer has to be constructed such that the desired result can be achieved. The skilled person would understand that this result is achieved if the “initial amount” of either the mixture or a component that has entered the mixing chamber is diverted and stored in a reservoir such that the subsequent amount can pass by and exit the mixer prior to the “initial amount”. [1.6] Since neither the paste that is produced nor the components that are used for its production are defined, many different variants of mixers may have to be constructed to ensure that for each type of component the desired result is obtained. To obtain this result, the mixer must contain some structural features that ensure that
the “initial amount” enters the reservoir and the subsequent amount does not mix with the “initial amount” present in the reservoir and does not displace the “initial amount” present in the reservoir.
Gaps in information regarding the initial amount [1.7] The skilled person would have to know first what is understood by the “initial amount”. The patent in suit teaches that the “initial amount” that should not be dispensed is such that it allows the subsequent amount to have the desired quality (see for example column 2, lines 33 and 34: “desired ratio of first and second components”; column 3, lines 8 and 9: “avoided that a mixture has an undesirable mixing ratio”; column 3, lines 25 and 26: “prevented from using the first amount of mixture potentially having an undesirable mixing ratio”). As admitted by [the patent proprietor], the “initial amount” is thus indirectly defined via the quality of the “subsequent amount”. The skilled person would have to analyse the paste exiting the mixer and to decide whether it is up to his expectations. Such an analysis seems to be within the competence of the skilled person, since it is standard practice in the field to analyse the quality of products. [1.8] However, to be able to analyse only the “subsequent amount”, the skilled person would have to ensure that the “initial amount” is indeed stored away and does not exit together with the “subsequent amount”. This can only be achieved if the “subsequent amount” does not displace the “initial amount” from the reservoir and does not mix with the “initial amount”. Gaps in information regarding the components, the reservoir, the mixer and the mixing process. [1.9] As admitted by [the patent proprietor] during the oral proceedings, this displacement mentioned above under item [1.8] depends on the viscosities of the different components, on the size of the reservoir and on the diameter of the reservoir. It is the Board’s opinion that other factors such as the size and form of the mixer itself, the openings, the position and inclination of the reservoir, the time and speed of mixing, and the quantity of the “subsequent amount” will also impact on the storage of the “initial amount”. In fact, the construction of the mixer itself influences the fluid dynamics inside the mixer and mixing chamber and this has to be taken into consideration in the construction of a reservoir for the “initial amount”. [1.10] The patent in suit is completely silent on the type of reservoir to be chosen for mixing specific components that might range from almost aqueous to very viscous or even powdery. The patent in suit only discloses that the paste to be obtained could be a dental impression mass […], but fails to give any indication on the viscosity of such masses or on the components used for making such masses. The skilled person would know 203 | 3398
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that there is a large variety among dental impression masses both in viscosity and in composition, as acknowledged by [the patent proprietor] during oral proceedings. Furthermore, claim 1 is not limited to a mixer for such dental impression masses. [1.11] The patent in suit contains many figures that describe different embodiments. There is not a single indication what components were mixed in the illustrated embodiments, what viscosities they are suitable for, what mixing speed and time were appropriate and what the real dimensions of the mixing chamber and the reservoir were. Thus, the skilled person could not deduce from the patent that a specific embodiment is perfectly suitable for use with a specific type of component and/or mixture. He could not recognise that the depicted reservoirs (figures 1 to 11) always store the “initial amount” independently of the type of components introduced into the mixer. No suitable evidence to fill the gaps in information [1.12] [The patent proprietor] provided with its letter of 24 June 2013 an experimental set-up that was supposed to provide evidence that the “initial amount” is indeed stored in the reservoir and not displaced, by the “subsequent amount”. Said experiment was conducted with a mixer as shown in the figure on page 1 of the appendix to said letter. Such a mixer is not illustrated in the patent in suit and cannot be considered as a mixer according to figure 9 of the patent in suit, since its form is tapered and it has several discharge openings, contrary to the mixer of figure 9. Thus, the fact that neither the dimensions of the mixer used in the experimental set-up nor the dimensions of the mixer according to figure 9 are given is no longer of relevance. [1.13] The mixer used in the experimental set-up cannot be designated without any doubt as a mixer according to claim 1 of the patent in suit, since the orange base material was prefilled in the reservoir and did not enter the mixing chamber as required by claim 1. Furthermore, the “initial amount” was assumed to be the amount filling the reservoir so that the skilled person would have to have already gained knowledge from somewhere about the amount that needed to be discarded (stored away). The mixer was prefilled with a specific orange base component having a high viscosity while a hardenable paste with a lower viscosity was forced to flow through the mixing chamber. In fact, it seems that the paste (blue/violet) was not produced by mixing components in the mixer, but already entered the mixer as such (blue/violet). In that very specific set-up, most of the so-called “initial amount” was not displaced from the reservoir while the “subsequent amount” exited through the discharge opening. All the skilled person would learn from said experiment is that under specific conditions an “initial amount” already prefilled in the reservoir is not substantially displaced by the “subsequent amount”. However, there is no information about how the skilled person would arrive at these specific conditions. The skilled person would not know whether said mixer is a mixer for producing a paste by mixing components, since the components are not mixed in the mixer. In addition, said experiment does not fulfil the following condition: “adapted such that the initial amount of at least one of said components entering said mixing chamber or the initial amount of mixture being prepared in said mixing chamber is diverted from said discharge opening, and the subsequent content of said mixing chamber is extrudable from said discharge opening”. Actually, the “initial amount” of the first component did not enter the mixing chamber and was not diverted into the reservoir. [1.14] The experimental set-up shown in this example is not taught in the patent in suit, since neither such a specific mixer nor the specific components used are disclosed. [1.15] The experimental set-up seems to be based on specific knowledge of [the patent proprietor] for which there is no evidence that it belongs to the skilled person’s general knowledge. [1.16] The Board is not convinced that the same result would be achieved with the mixer shown in the experimental set-up if the first component was rather fluid and had a lower viscosity than the second component. In such a case the mixture would at least partially displace the “initial amount” from the reservoir so that the “initial amount” would not really be stored. The same would happen if the mixture formed in the mixing chamber was a fluid paste with rather low viscosity. In addition, it is not sure that the same observations would be made if the reservoir was not prefilled, but empty, and the “initial amount” first needed to be captured. The Board is convinced that there are many possible mixtures or combinations of components for which it cannot easily be ensured that the subsequent amount exits through the discharge opening before the “initial amount”. 204 | 3398
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Research programme to fill the gaps in information [1.17] The skilled person trying to construct the mixer according to claim 1 would thus be confronted with the following major tasks
ensuring that the reservoir is such that the “initial amount” is correctly chosen and captured ensuring that the “initial amount” present in the reservoir is not displaced by the “subsequent amount”.
[1.18] These two tasks may require different, possibly opposing, characteristics of the reservoir, since a large “initial amount” requires a large reservoir while the content can be displaced more easily from a large and wide reservoir. On the other hand, it may be difficult to fill deep and narrow reservoirs, especially if the viscosity of the component or the mixture is high. [1.19] The Board is of the opinion that the skilled person would be at a complete loss as to how to solve the tasks identified above, since the patent in suit does not mention at all any of the parameters relevant for the solution to each task (e.g. viscosity, size and form of reservoir, size of mixing chamber, position of the reservoir within the chamber, flow rate and speed etc.). [1.20] What the skilled person would probably need to do would be to start with the components and take a mixer that is available. As admitted by [the patent proprietor], if the mixing of the components did not give the desired result since either the “initial amount” was not chosen such that the subsequent amount had the desired quality and/or the “initial amount” was not correctly stored, then the skilled person would have to start adapting the mixer and repeat the whole procedure again until the desired result was obtained. Alternatively he could change the components and try again with the mixer at hand. The patent in suit is silent as to which direction to take to ensure that success is guaranteed after a few tries. It seems up to the skilled person to establish for which type of components and paste produced the illustrated mixers could be of use. [1.21] The prior art is not of help either to the skilled person trying to solve the tasks identified in [1.17] above. As explained by [the patent proprietor], the present invention relates to a new concept that helps to ensure that the mixed paste exiting the mixer has the desired quality, wherein the mixture or one component present in the mixing chamber is diverted afterwards to a reservoir. In contrast, the prior art tries to obtain the desired quality by ensuring that the correct mixture enters the mixing chamber, so that no reservoir is foreseen after the mixing chamber. This is illustrated for example by D1 to D7. Therefore, these documents teach a different set-up and cannot be used when trying to construct a mixer according to the new concept. They do not provide any information on the “initial amount” and do not disclose a reservoir according to the present invention so that the skilled person could not find any guidance there on how to ensure that the “initial amount” entering a reservoir is definitely stored there. The prior art indicates that certain types of mixers are especially suitable for components having specific viscosities […]. However, there is no hint for the skilled person that would lead him to success in the present case; he is rather given the confirmation that viscosity of the components is also an important parameter to consider. [1.22] Consequently, to carry out the claimed invention (i.e. to construct the mixer according to claim 1), the skilled person, in each single case for the many variants falling within the scope of claim 1, would be faced with the problem of determining the suitable mixer features that might allow him to make sure that the “initial amount” is stored such that the subsequent amount exits the mixer and has the desired quality. However, neither the common general knowledge nor the patent in suit provides him with any information that would guide him in a systematic and reliable way towards the required construction that would allow the desired paste to be obtained when starting from specific components. Thus, the skilled person would not have at his disposal any guidance leading necessarily and directly to success through the evaluation of failures that may occur, so that he could only establish by trial and error in each single case whether or not particular features (e.g. size, shape and position of the reservoir) will ensure that the “initial amount” is stored in the reservoir and the subsequent amount exits the mixer. That constitutes an undue burden. [1.23] In line with T 1358/07 [6.3], the functional definition of the mixer according to the present invention is thus no more than an invitation to perform a research programme in order to find a suitably configured mixer with reservoirs. [1.24] The objection under A 100(b) is therefore justified for claim 1 of the patent in suit. The main request is not acceptable.
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K’s Law – The ebook
Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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R 17/13 – La Fleur Au Fusil
K’s Law – The ebook
R 17/13 – La Fleur Au Fusil 19 Sep 2013
Petitions for review rarely succeed, so you would not expect petitioners to go before the Enlarged Board (EBA) light-heartedly and without having a good case to present. Well, sometimes, they do not come up to this expectation; as the present case illustrates, there are some people who do not mind losing 2760 €. [7.1] The petitioner’s actual complaints are that petitioner had not appreciated that it needed to file amended claims if the patent was to be saved and the Board should have realised this and invited the petitioner to do so. [7.2] The EBA does not consider that the Technical Board was wrong not to have invited the petitioner to file amended claims, not least because the proceedings were inter partes and the Board was correct to remain strictly neutral. Nor does the EBA consider that the petitioner had any reasonable cause not to have been aware that it needed to file an auxiliary request if it wanted the patent to be maintained in amended form in the event of its main request not being allowed. The Board in its communication had made clear what were the issues in the appeal and to an extent had expressed a view on them. The petitioner says that it did not appear at the oral proceedings because the opponent had said that it was not intending to appear and because the petitioner agreed with what was said in the communication. But the communication gave no indication that the petitioner’s main request was likely to be allowed. To the extent that the communication can be read as indicating what could be considered to be disclosed in the application as filed it was for the petitioner to take this up if it chose to do so, not the Board. The appeal was not, as the petitioner suggests, dismissed because the petitioner had not filed amended requests but because none of the requests which the petitioner had filed were found to be allowable. The Board’s statement that the petitioner had “dispensed” with submitting a revised set of claims simply reflects the fact that the petitioner had not done so. [7.3] The EBA does not have to go into these issues further, however, because these complaints do not in any event establish a basis for a petition under any of the grounds in A 112a. NB: “la fleur au fusil” (litt. “with a flower in the (rifle) barrel”) is a French idiom expressing light-heartedness or naivety. Should you wish to download the whole decision, just click here.
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R 17/13 – La Fleur Au Fusil
K’s Law – The ebook
The file wrapper can be found here.
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T 1012/09 – Daily Life
K’s Law – The ebook
T 1012/09 – Daily Life 18 Sep 2013
This is an examination appeal. Claim 1 of the main request before the Board read: An automated method of removing embedding media from a biological sample, the method comprising the steps of: - heating the biological sample containing embedding media to a temperature in excess of the melting point of the embedding media to form a liquefied embedding media; and - applying a liquid including DI water and a surfactant to the biological sample to separate the liquefied embedding media from the biological sample. The Board did not approve the inventive step reasoning of the Examining Division (ED): Inventive step based on D1 [1.1] The international search report and the supplementary European search report cite a large number of prior art documents, most of them being categorized as “particularly relevant” in those search reports. During the examination proceedings, however, only D1 was used for the assessment of patentability of the claimed subjectmatter. [1.2] D1 discloses an automated method in the sense that this method allows “compatibility with automated use” […]. The method of D1 is provided for removing wax, such as paraffin, from wax-embedded biological samples […] comprising the steps of - contacting the wax-embedded specimen with a dewaxing composition by using temperature-controlled baths, wherein the temperatures range from 5°C to 50°C […] and wherein the dewaxing composition comprises a surfactant diluted with water […]; and - contacting the dewaxed specimen immediately after dewaxing with an aqueous washing composition comprising a detergent to remove residual dewaxing composition […].
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T 1012/09 – Daily Life
K’s Law – The ebook
There is no explicit disclosure in D1 that the embedding wax is heated to a temperature in excess of its melting point so as to form a liquefied embedding media, nor can the board see any indication in D1 that heating the dewaxing composition at 50°C in D1 would inherently imply that the embedding wax was heated to a temperature in excess of its melting point. Such an indication was not suggested in the decision under appeal either. Therefore, the claimed method is novel over the disclosure of D1 and differs from the method of D1 in that it comprises the steps of (i) heating the sample to a temperature in excess of the melting point of the embedding media to form a liquefied embedding media, (ii) applying a liquid to the sample to separate the liquefied embedding media from the sample, (iii) wherein the liquid includes deionised water. [1.3] According to the decision of the ED, “the difference between the characterising features of D1 and the subject matter of present claim 1 consists in the use of a liquid including DI water and a surfactant for removing the molten embedding medium” and the technical problem to be solved “is seen in the need for providing a method of removing embedding media from a biological sample suitable for compact environmentally friendly automats especially in a high throughput system”. Then the ED states that “the skilled person would first of all try to avoid the use of organic solvents, since this would eliminate the need for hoods. Thus the person is automatically led to aqueous compositions” In view of the fact that D1 teaches that the compositions used can contain a predetermined amount of water and surfactants, and that D1 further discloses post-dewaxing washes with such compositions, the ED concludes that “Dl is considered to provide a variety of hints towards the use of an aqueous based composition with surfactants for removing embedding media in general and paraffin in particular, and consequently towards the solution provided by claim 1. Therefore Dl renders the solution provided by claim 1 obvious to one skilled in the art.” [1.4] The board is unable to follow the chain of arguments of the ED for at least the following reasons: [1.4.1] The claimed heating step, as actually worded in present claim 1 and including the forming of “liquefied embedding media”, is entirely missing in the chain of argumentation. In this respect, D1 merely teaches that the dewaxing process can be conveniently carried out at room temperature or, for a more precise control of the processing time, in temperature-controlled baths in the range from 5°C to 50°C, more preferably in the range from about 25°C to about 40°C (see D1, page 11, lines 19 to 24). In the board’s view, the skilled person would not derive from that recommendation in D1 any suggestion that the wax should be effectively liquefied, which in accordance with the indications in the present application requires temperatures in excess of 50°C and up to 130°C […]. [1.4.2] Whilst it might be accepted that organic solvents are generally known to be undesirable, it is not apparent to the board why the skilled person would obviously eliminate the use of organic solvents included in all the dewaxing compositions of D1 and instead liquefy the embedded media before washing it out with a liquid including DI water and a surfactant. As correctly mentioned by the ED, washes with water and a surfactant are disclosed in D1, but they are recommended there only for washing out the residual dewaxing composition from the dewaxed specimen […], not for separating the liquefied embedding media from the biological sample, as claimed. [1.4.3] The decision under appeal also refers to daily life experience of the skilled person in relation to the removal of wax-like or fatty materials from surfaces, which he would carry out by applying hot water. For a complete removal, the skilled person would add soap so as to dissolve or emulsify the fatty or wax-like material. It is not apparent from the appealed decision which specific daily life experience the ED had in mind. However, would it be the everyday situation mentioned in the communication dated 13 December 2007, annexed to the summons to oral proceedings, dealing with the cleaning of fatty pans, ...
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T 1012/09 – Daily Life
K’s Law – The ebook
... then the board doubts that the analogy put forward by the ED would be relevant at all. Indeed, D1 relates to the removal of waxes like paraffins from delicate histological preparations of biological tissue specimens, which is hardly comparable to the removal of fat from household articles made of heat-resistant non-biological material. Further prosecution [2.1] Since the board is not convinced by the argumentation of lack of inventive step with respect to D1 as used in the refusal, the appealed decision must be set aside. […] The case is remitted to the department of first instance for further prosecution. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 50/12 – Please Mister Postman
K’s Law – The ebook
T 50/12 – Please Mister Postman 17 Sep 2013
This examination appeal would have gone unnoticed by me if Laurent Teyssèdre had not discussed it on his blog (here). The Examining Division (ED) had refused the application on July 7, 2011. In principle the time limit for filing an appeal expired on September 19, 2011. The appeal was filed on September 20. The appellant filed a statement of grounds of appeal as well as an auxiliary request for re-establishment. The core argument of the appellant was that the actual day of delivery was not July 19 (the date on the advice of delivery) but on July 20. The mailman was said to have made a clerical mistake by putting the wrong date on the advice of delivery. The Board found the appeal to be inadmissible: The legal frame [1] A 108 provides that the notice of appeal shall be filed at the EPO within a time limit of two months of notification of the contested decision. Under R 101(1), if the appeal does not comply with, in particular A 106 to A 108, the board of appeal must reject the appeal as inadmissible. In the present case, considering the date mentioned on the advice of delivery, the appeal was lodged one day after the expiry of said time limit and it should therefore be held inadmissible. Establishing the date of delivery [2] By producing the advice of delivery, the EPO fulfilled its duty under R 126(2) to assess the actual date of delivery to the addressee. Hence, the burden of proof now lies with the appellant. If the appellant intends to establish that the date mentioned on the advice of delivery is erroneous, it has to bring convincing evidence, which is not the case at present. The appellant’s submission that the starting point of the time limit should be fixed on 20 July 2011 due to a mistake made by the mailman in Italy, who erroneously affixed the stamp of the previous day, does not convince the board. To this end the appellant submitted two documents. The appellant’s representative produced a written statement (first document), signed by the gatehouse responsible for its building, asserting that said letter with advice of delivery arrived on 20 July 2011 and that no such letter was delivered at all on 19 July 2011. It also produced a copy of the EPO Form 2936 (second document) indicating “Received on 20.7.2011” with the signature of the authorised recipient, M. Paolo G., also the representative of the appellant. As to the first document – the written statement of the caretaker – this cannot be placed on the same level, as regards its reliability, as the act of a postman who is a civil servant and exercises his duty under oath. This statement therefore does not convince the board. 212 | 3398
T 50/12 – Please Mister Postman
K’s Law – The ebook
As to the second document, i.e. EPO Form 2936, this acknowledgement of receipt was introduced by the EPO a long time ago in order to avoid difficulties linked with the fact that advices of delivery were not returned to the EPO or not completed. The parties were thus given the possibility to date and sign this form and to return it immediately (emphasis added by the board) to the EPO through Epoline, by fax or by post, as explained in the Notice from the EPO dated 10 June 2010 and published in OJ EPO 7/10, 377, in particular point 4. In the present case, the acknowledgement of receipt constituted by Form 2936 was not returned to the EPO immediately after the date of notification, but later on, namely on 16 November 2011, together with the statement of grounds of appeal and the request for re-establishment of rights, namely on 16 November 2011. This delay deprives the second document of any probative value. It is obvious that in such circumstances the date mentioned on this document may be the one chosen by the addressee to suit his convenience and therefore amounts to self-made evidence. In passing, reference is made to an “Enclosure of prepared acknowledgement of receipt” presented by the EPO in its Official Journal EPO 7/94, 325, [NB: this should read 7/84, 325] according to which, in its point 4 the recipient was “asked to acknowledge receipt and return the acknowledgement by return of post”. In summary, there is no convincing evidence that the date of delivery is erroneous. The contestation of the delivery itself [3] In its statement of grounds of appeal (last but one paragraph), the appellant wrote: “… the mistake about the effective date of receiving of the communication of refusal (written on the receipt as 19/07/2011, but actually received by us on 20/07/2011) has probably to be ascribed to the Italian Mail Service, which writes on the receipt the date on which the mail has been given to the Mailman for delivery. However, the Mailmen delivered the mail to our gatehouse service in our building on the following day, namely 20/07/2011, as our gatehouse responsible is confirming in writing....” By the attached testimony, the gatehouse asserted that the person in the gatehouse received no registered letter coming from the EPO on 19 July 2011 but that said letter arrived on 20 July 2011 for which he signed the advice of delivery. From the above it appears clearly that the advice of delivery dated 19 July 2011 reached the appropriate destination and was signed by the caretaker. In his letter dated 12 June 2012, the representative put forward the new argument that the one who signed the advice of delivery was unknown, suggesting that it could have been the mailman himself, and concluded that said letter did not reach its addressee. Since the EPO had failed to establish the real date of notification, the EPO should admit that the notification was effective on 20 July 2011 as alleged. In the board’s view, firstly it must be born in mind that a party cannot deviate completely from an earlier statement in a later one contradicting the first. This derives from the obligation of fairness in the course of the proceedings, an obligation which is not restricted to the EPO or to the boards, but also applies to the parties, among them and vis-à-vis the deciding body. Apart from that point, a simple comparison between the signature of the advice of delivery and the assessment of the caretaker dated 14 November 2011 confirms beyond all reasonable doubt that the latter was the signatory. The appellant did not formally deny that said caretaker was entitled to receive and sign registered letters on its behalf. The testimony of the caretaker is evidence at least that such was the common practice. Therefore, the board concludes that the notification reached the representative of the appellant on the date mentioned on the advice of delivery, i.e. on 19 July 2011. The provisions of R 126(2) have thus been complied with. The advice of delivery is the evidence of the receipt of the notification, which amounts to tautology. This is in fact the only evidence that the EPO can bring. According to R 126(4), to the extent that notification by post is not covered by R 126(1) to (3), the law of the State in which the notification is made shall apply. However, in the present case, the provisions of R 126(1) to (3) apply. Thus, the provisions of R 126(4) under which the law of the State in which the notification is made are not applicable in the present case.
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T 50/12 – Please Mister Postman
K’s Law – The ebook
Turning back to the contestation of the date of delivery itself, the burden of proof lies on the appellant. The appellant denies the date put on the advice of delivery and it is therefore up to him to provide evidence that this date was wrong, or at least to make the occurrence of a mistake highly plausible, which is not the case at present. As already explained above (point [2.1]) the board cannot accept the statement of the caretaker as conclusive enough. The expression “in the event of any dispute” used in R 126(2), second sentence, does not mean that where the ten-day fiction does not apply, which is the case at present, the parties should be allowed to raise any kind of objection. The dispute, if any, has to be founded on facts which are likely to cast doubt on the reliability of the date of delivery given. Otherwise, it would mean that the addressee, even in the presence of an advice of delivery, could choose the date of receipt at its own convenience, which would deprive the time limit set out in A 108 of its very substance. It can be derived from the above that the appeal was late-filed and is thus inadmissible. Request for re-establishment of rights Admissibility [4.1] The request for re-establishment of rights, which complies with the time limit laid down by R 136(1), is admissible. Allowability [4.2] Under A 122(1), the applicant for a European patent must have his rights re-established upon request when he was unable to observe a time limit vis-à-vis the EPO in spite of all due care required by the circumstances having been taken. In the present case, the appellant’s representative explains that he was not able to comply with the two-month time limit laid down by A 108 to file an appeal due to the fact that the contested decision dated 7 July 2011 was notified to him on 20 July 2011, and not on 19 July 2011 as indicated on the advice of delivery. Assuming, for the sake of argument, that the contested decision might actually have been notified on 20 July 2011 instead of 19 July 2011, or that the representative believed that such was the case, the board considers that this did not prevent the representative from filing an appeal within the applicable time limit. A representative who is facing the possibility of filing an appeal, is concerned firstly with the time limit within which this act has to be done. Hence, he has to consider the documents assessing the starting point, which is the date of the decision plus 10 days or, if later, the date on which the letter was delivered to him (R 126(2)). In this second case, which is the present situation, he necessarily considers the advice of delivery and thus can assess that the indicated starting point, even if erroneous, is the 19 July 2011. The representative is then aware of the mistake and knows that in order to avoid any concern relating to the admissibility of the appeal, he has to file the appeal on 19 September 2011 at the latest. Under the present circumstances, the board tends to consider that waiting until after the end of the time limit as it stands from the file does not indicate the exercise of all due care. On the contrary, the appeal has unnecessarily and in full knowledge been put at risk. This is all the more true given that no real cause of non-compliance with the time limit resulting from the date put on the acknowledgement of receipt has been put forward. Thus, the request for re-establishment of rights is not allowable and, consequently, the appeal remains inadmissible. Should you wish to download the whole decision, just click here. The file wrapper can be found here. You can listen to The Marvelettes here.
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R 2/13 – Terra Incognita
K’s Law – The ebook
R 2/13 – Terra Incognita 16 Sep 2013
This is a petition for review of the case T 1676/11 where Board of appeal (BoA) 3.3.10 dismissed an appeal against the refusal of an application by the Examining Division (ED). I find the decision interesting because the Enlarged Board (EBA) had something to say on the role of the BoA in ex parte cases. Allowability of the petition for review The first fundamental violation of A 113 [2.1] The two aspects of this ground revolved, as became apparent during the oral proceedings (OPs) before the EBA, around the alleged new line of argumentation introduced by the BoA in its decision. The petitioner’s complaint in this respect is based on the premise that in ex parte cases the BoA is under an obligation to make the appellant aware of the Board’s reasons and arguments (emphasis added by the EBA) and thereby perform the role usually incumbent upon the opposing party in inter partes cases. For the reasons below the EBA does not agree with the petitioner. [2.1.1] First of all the EBA cannot find in the file any factual support for the assertion that the petitioner had always argued in line with the same understanding of the skilled person as the ED and that, by distinguishing between the skilled person defined as the manufacturer of medical devices, and the authors of D3 who were surgeons, the Board, all of a sudden, brought an unpredictable change of the case. Even though the Board did not take the same approach as the department of first instance, as may happen in any appeal proceedings, nothing in the decision of the ED or in the petitioner’s submissions points to an implicit consensus about the skilled person being the authors of D3. On the contrary, the ED’s combination of D3 and D5, which belongs to a different classification (containers), when considering the Group c) features of the claimed invention, which precisely address the problem of contamination, rather points to a broader notion of the skilled person than the surgeon […].
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R 2/13 – Terra Incognita
K’s Law – The ebook
As to the petitioner, he never made clear when mentioning the authors of D3 that they were to be considered the skilled person; he referred to the skilled person in general as well and did not specify that the authors of D3 were to be regarded as the skilled person with a view to disqualifying D5 as the closest prior art […]. [2.1.2] Against this background of the undefined skilled person the BoA had to consider the assertion that, because D3 itself solved the problem of contamination raised by its first embodiment, it would preclude any further consideration of this first embodiment by the skilled person. To that end, the Board […] evaluated the teaching of D3 against its general background, namely its origin and its purpose, and, in order to assess inventive step, through the eyes of the relevant skilled person; this being the case the EBA does not accept the alleged contradiction with the established case law, regarding the pointer in the closest prior art […]. In fact in the current case, where neither the ED nor the petitioner had specifically identified the skilled person, the Board did so, this definition being the missing intellectual link required to properly deal with the contention that D3 would deter the relevant skilled person from taking D3 [I guess this shiould read D5] into account. In this respect the petitioner acknowledged during the hearing before the EBA that it was not the definition of the skilled person (the manufacturer of medical devices in the field of manufacturing the medical devices) which was odd, but the teaching drawn by the Board from D3. Thus, by defining the skilled person the Board merely dealt with the argumentation that D3 taught away from the first embodiment the petitioner had put forward without however giving any further explanation as to who the skilled person was and why he/she was taught away. Under such circumstances, defining who was, and who was not the skilled person was merely an intellectual sequence in the articulation of the reasoning only based on an interpretation of D3 at variance with the petitioner’s own interpretation, which was discussed at length, and on the notion of the skilled person inherent in the debate of inventive step. The petitioner who had not elaborated on this point, cannot now claim that it was unpredictable that the Board took the further step of identifying the skilled person when assessing inventive step. It follows from the above that it is the petitioner’s personal and subjective view that the Board put forward an unpredictable line of argumentation or entered “uncharted territory” or that, by merely defining the skilled person the Board suddenly deviated from the facts, grounds or evidence discussed as part of the debate or that this definition was so creative that it would objectively amount to bringing in a new fact. To require that the Board should have made the petitioner aware of the particular steps in its reasoning goes too far, as has been reiterated many times in the case law (see, for examples R 18/09 [14,15 and 18]; R 10/10 [2.4]). [2.1.3] Coming now to the alleged obligation of the Boards to make the parties aware of the “reasons and arguments” crucial for the decision, the EBA considers that in fact the present petitioner’s complaints lie on a confusion in the terminology (between the meaning of “arguments” or “reasons”, “grounds, facts and evidence”), and on a debatable conception of the role of the BoA in ex parte cases proceedings, which is anyway of no assistance regarding the definition of the respect of the right to be heard (see infra). Reasons and Arguments (a) Even though the term “arguments” is not the appropriate terminology when talking about the reasons for decisions, and even though the principles set out in G 4/92 as to the distinction between “arguments” “grounds” and “reasons” are rather concerned with the parties’ obligations, these principles nevertheless apply mutatis mutandis in the present case. In G 4/92 [10], the EBA stated: “As regards new arguments, the requirements of A 113(1) have been satisfied even if a party who has chosen not to appear consequently did not have the opportunity to comment on them during OPs, insofar as such new arguments do not change the grounds on which the decision is based. In principle, new arguments do not constitute new grounds or evidence, but are reasons based on the facts and evidence which have already been put forward”. (i) Without endorsing the petitioner’s stance upon the role of the BoA (see infra), the EBA observes that an analogy can be made between the definition given in G 4/92 of the arguments brought forward by a party and reasoning in the decisions of the BoA, which, like arguments, consist of logical steps such as analysis, comparison and deduction based on the legal grounds and factual evidence such as discussed. (ii) In the case at hand the BoA dealt with the petitioner’s submissions regarding the issue of the skilled person and dismissed his interpretation of D3 in a way which did not introduce any change in the factual and legal framework of the debate, in the same way as “arguments” can be put forward by a party in the absence of the other party, as stated in G 4/92. 216 | 3398
R 2/13 – Terra Incognita
K’s Law – The ebook
(iii) Furthermore this analysis is in line with the analysis made in T 1621/09 cited by the petitioner, despite the fact that the BoA there came to different findings due to the circumstances of that case: the introduction of a new “argument” by the party was in fact based on a different part of a document (slides six and thirteen referred to for the first time during the OPs) and thus amounted to putting forward an “alternative case” in the absence of the other party. Role of the Boards in Appeal proceedings (b) As to the role of the BoA, the analogy the petitioner seeks to draw between a board in ex parte cases and the opposing party in adversarial inter partes cases has no legal basis or legitimacy if only because the boards are the deciding body and it is a well-established principle that one cannot be judge and party. (c) Anyway, this assertion and the parallel with the application of Article 13 RPBA in the event of an amendment of the case lead to a moot point because the EBA agrees with the petitioner on the principle that the parties have a right to comment upon the points which will be decisive for the decision. However, the view that this right also extends to all the sequences of reasoning (the “arguments” in the sense of G 4/92 see supra) is based on a misunderstanding of the terminology used (see 2.1.3 a) supra). Analysis of the case law cited [2.1.4] The petitioner contends that, in the present case, the BoA deviated from the standard of the right to be heard as applied in the case law of the BoA and cited in this respect several decisions. (a) The EBA firstly notices that the cases cited by the petitioner underscore the fact that the departments of first instance are subject to specific obligations, under A 94(3) and R 71(2) for the ED, and A 101(1) and R 81(3) EPC for the opposition division, which result in the corresponding power of the boards to check whether these obligations were correctly performed. (i) This is precisely what happened in T 951/92 cited by the petitioner: the Board found that the ED had not acted in compliance with A 96 and A 97, R 51(3) EPC 1973 (A 94(3); R 71(2) EPC 2000), which require that any communication under A 94(3) EPC shall contain a reasoned statement covering, where appropriate, all the grounds against the grant of the European patent. The legal basis was the same in T 778/98, which was alleged to be similar to the case at hand, even though the Board there did not expressly quote the relevant provisions of the EPC mentioned above. (ii) Of course, the fact that in the appeal procedure there is not the same obligation to send preliminary communications which gives the right to be heard at first instance a specific procedural framework, does not mean that less weight is attached to the right to be heard on appeal. The fact is that the decisions the petitioner cited do not give a comprehensive account of the whole case law about how the right to be heard is commonly applied and do not reflect the overall picture. (iii) It would, therefore, serve no purpose to thoroughly analyse all the decisions cited. It is sufficient to note that the BoA, when checking whether the right to be heard has been infringed, do not restrict themselves to the application of the legal provisions mentioned above, but take an overview of the case. Decisions referring to R 116 (former R 71a) take a less formal approach to the right to be heard than those cited by the petitioner: for instance in T 462/06 [4.3 and 4.5, last §], the Board made clear that there was a point in time where the applicant no longer had a right to feedback before the OPs and that what was presented as new arguments was in fact the assessment by the ED of an example discussed during the OPs (similarly T 343/08 [4-5]). In T 682/89 which concerned opposition appeal proceedings, the Board came to the conclusion that the requirement of R 116 (former R 71a) does not mean that all lines of arguments or a detailed reasoning for the decision should already be set out in the communication. These decisions are in the same line as the decision under the present petition. (b) The EBA will turn now to the differences in nature between an appeal procedure and a petition for review procedure. The petition for review was established as a remedy for a fundamental violation of A 113 or fundamental procedural defects in decisions that had become res judicata, which is applicable only as defined in A 112a and R 104 (see, for instance R 18/11 [2]), unlike the appeal procedure, which empowers the BoA to review the merits of the decision under appeal.
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R 2/13 – Terra Incognita
K’s Law – The ebook
Generally speaking, a simple flaw in the reasoning in a decision does not necessarily correspond to a violation of the right to be heard which can be challenged by a petition, while a BoA has full competence to review such a flaw. There are cases where the borderline between a purely substantive mistake in the reasoning and a violation of the right to be heard is difficult to define and the diversity of the factual circumstances of all the various cases dooms any attempt at general delimitation to failure. Having said that, the right to petition on the ground of a fundamental procedural violation under A 112a (2)(c) does not cover cases where examining the alleged violation would amount to a review of the substantive merit of the reasoning: this is in fact what is left to the EBA in the present case now as it has confirmed that the reasoning was based only on facts which were part of the debate. The cases where the petition for review was allowed [2.1.5] The petitioner also made an analogy with the circumstances in cases R 23/10 [I guess this should read R 3/10] and R 21/11, these being cases where the petition was allowed. [2.1.6] This argument fails for the reasons given above and it is not necessary to repeat them here: The BoA did consider the petitioner’s arguments and did not use in its decision anything other than the facts and evidence the petitioner had an opportunity to discuss. The absence of reasons with respect to the process claim [2.2] The petitioner submitted that he had argued that there were other conceivable ways of preparing the haemostatic paste, the argument that D3 “taught away” also being valid with respect to the claimed process. Instead of taking account of all these arguments the Board, in point 27 of the decision, stated that the process steps of claim 1 merely reflect the obvious steps for using the non-inventive device of the second auxiliary request. The EBA, however, can only confirm that the BoA gave a reason why the process claim was not inventive over the prior art. That this reason is not sufficient is the petitioner’s subjective opinion. Apart from the fact that the sufficiency of reasoning is not on the list of fundamental defects (A 112a and R 104), it is established case law that, provided that the reasons given enable the parties concerned to understand whether the decision was justified (or not), the deciding body is under no obligation to address each and every argument presented by the party concerned (R 19/10 [6.2-3]; R 13/12 [2.2]; R 6/11 [11.3-4]). If the Board has found one line of reasoning that rendered the process obvious it no longer had to address all the other alternative lines of reasoning which might have supported inventive step. [3] The upshot of the above is that the petition for review has to be rejected as clearly unallowable. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1836/10 – You Can’t Exclude The Absent
K’s Law – The ebook
T 1836/10 – You Can’t Exclude The Absent 13 Sep 2013
This is an examination appeal. Claim 1 of the main request before the Board read (in English translation): Method for obtaining pluripotent embryonic stem cells in an embryo-preserving (embryonenerhaltend) way, wherein (a) a channel is opened in the zona pelucida of fixed blastocysts; (b) a suitable instrument for mobilising cells is led through the trophectoderm until the inner cell mass and some stem cells of the inner cell mass are mobilised by means of this instrument; and (c) the mobilised stem cells are aspirated; wherein the viability of the blastocysts is not affected by the performance of steps (a)-(c), provided that the cells obtained are not used for industrial or commercial purposes if the blastocyst is a human blastocyst. (my emphasis) *** Translation of the German original *** [3] When refusing the application, the Examining Division (ED) based [its decision] on A 53(a) in connection with R 28(c) according to which uses of human embryos for industrial or commercial purposes are excluded from patentability. The ED stated that the application inter alia mentions human embryos as starting material for carrying out the claimed method. Thus the subject-matter of the claims encompassed the commercial use of human embryos without any apparent direct benefit for the embryo itself, which is excluded from patentability. According to the ED, the fact that in the claimed method – unlike in other methods known from the prior art – the embryo was not destroyed was irrelevant for this assessment. [4] By introducing the “negative” feature “… provided that the cells obtained are not used for industrial or commercial purposes if the blastocyst is a human blastocyst” the appellant tries to take account of the objection under A 53(a) in connection with R 28(c). It is undisputed that the added negative feature cannot be derived from the application as filed. However, the appellant bases the amendment of claim 1 on decisions G 1/03 and G 2/03 of the Enlarged Board (EBA), according to which the introduction of an undisclosed negative feature, a so-called “disclaimer”, into a claim may be allowable if the disclaimer excludes (ausklammert) subject-matter which, under A 52 to A 57, is excluded from patentability for non-technical reasons (see G 1/03 [2.4]). [5] When it is to be decided whether in the present case the introduction of the disclaimer into claim 1 is allowable in view of A 123(2), it is relevant whether the added disclaimer limits the scope of the claims of the patent by excluding subject-matter which, under A 53(a) in connection with R 28(c), is excluded from patentability. In order to answer this question it is necessary to interpret the subject-matter of claim 1 before the introduction of the disclaimer and the subject-matter defined by the disclaimer. Interpretation of claim 1 without the disclaimer [6] If the disclaimer is ignored, claim 1 is directed to a method for obtaining pluripotent embryonic stem cells characterised by the method steps (a) to (c), wherein the viability of the blastocysts is not affected by the performance of those steps […]. The starting material for obtaining embryonic stem cells used in the method are blastocysts, i.e. embryos that are about 4 to 7 days old, that already expose some differentiation into an inner cell mass, from which the fetus develops later on, and the trophectoderm, from which extra-embryonic tissues develop […]. The blastocysts may have their origin in a domesticated animal or a primate, e.g. a human being […].
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T 1836/10 – You Can’t Exclude The Absent
K’s Law – The ebook
[7] According to the invention the pluripotent embryonic stem cells are aspirated from the inner cell mass of the blastocysts by means of a suitable instrument. [The operator] penetrates into the inner cell mass of the blastocysts, mobilises stem cells and then aspirates them According to the claim the stem cells are to be obtained in an “embryo-preserving” way, i.e. any damage of the blastocyst embryo is to be avoided in order not to affect its viability. [8] The “product” of the claimed method are pluripotent embryonic stem cells. The claim does not – explicitly or implicitly – disclose for which purposes these stem cells are to be used later on. In paragraph [0018] of the application as published it is explained that the stem cells obtained according to the invention may be used in pharmaceutics and medicine or veterinary medicine, respectively. The replacement or regeneration of a damaged or missing tissue or organ of a human or animal patient is mentioned as a preferred use. However, as the disclosed possible future uses of the stem cells obtained are not to be considered as an additional method step or as a further technical feature of the claimed method, but only as “subjective intentions”, the use of the product of the method, i.e. of the embryonic stem cells , is not relevant for the definition of the claimed subject-matter (see the explanations of the EBA regarding A 64(2) in decision G 2/88 [5, second paragraph]). Interpretation of the disclaimer [9] In case the blastocyst used for obtaining the embryonic stem cells according to the claim is a human blastocyst, the disclaimer that has been introduced into claim 1 excludes that the stem cells obtained are used for industrial or commercial purposes. Thus the disclaimer excludes a future use […] of the stem cells. As explained above, this use cannot be considered to be a step of the claimed method because the latter is terminated when the stem cells are obtained. [10] As the disclaimer tries to exclude from claim 1 something that is not encompassed by this claim, the claimed subject-matter is not limited by the introduction of the disclaimer at all. As far as the claim without the disclaimer is concerned, the Board is of the opinion – as was the ED – that it encompasses subject-matter that violates A 53(a) in connection with R 28(c) because the use of human embryos as a starting material in a method for obtaining embryonic stem cells that is to be used commercially, constitutes a “use … for industrial or commercial purposes” within the meaning of R 28(c) (see also the judgment of the CJEU of October 18, 2011, in case C-34/10 on the interpretation of Article 6(2)(c) of Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions, in particular point 3 of the order) “3. Article 6(2)(c) of Directive 98/44 excludes an invention from patentability where the technical teaching which is the subject-matter of the patent application requires the prior destruction of human embryos or their use as base material, whatever the stage at which that takes place and even if the description of the technical teaching claimed does not refer to the use of human embryos.” [11] In its decisions G 1/03 and G 2/03 the EBA has explained that an applicant may not arbitrarily amend its claims and that a disclaimer that may be required ought not to exclude more that is necessary to exclude the subject-matter that is excluded from patentability for non-technical reasons. Otherwise a disclaimer is to be considered unallowable in view of A 123(2). The Board is of the opinion that this applies mutatis mutandis to a disclaimer trying to exclude subject-matter that is not encompassed by the claim at all. The amendment of claim by means of such a disclaimer does not serve the intended purpose and is, therefore, unallowable in view of A 123(2). Moreover the claim amended by the introduction of the disclaimer does not comply with the requirement of clarity pursuant to A 84. [12] Consequently, the Board is of the opinion that the amendment of claim 1 violates A 123(2). Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 926/09 – Confusion
K’s Law – The ebook
T 926/09 – Confusion 12 Sep 2013
[1] The request for grant of a European patent for this divisional application was received on 23 November 2004. The request indicated the number of claims as 12, but only 8 claims were filed along with it. [1.1] The Receiving Section (RS) noted this mismatch and, with letter of 28 December 2004, invited the appellant to comment. The appellant explained that it had been its intention to file 12 claims and submitted anew the 12 claims which it believed had been originally filed (see telefax of 5 January 2005). [1.2] The appellant also suggested a possible confusion with another of its applications, European patent application 04078195.7. The latter application was filed on the same day as the present one, also as a divisional application of the same earlier application, and along with 12 claims although the request for grant mentioned 8 claims. [1.3] The RS appears to have accepted the appellant’s arguments that there had been a confusion and summarized in a letter dated 25 January 2005 as the “situation” that EP 04078194.0 has 12 claims and EP 04078195.7 has 8 claims. The letter gave no reasons as to why or on what legal basis the new situation was accepted. [1.4] In both cases, search and examination were based on the claims filed on 5 January 2005. Application no. 04078195.7 has meanwhile proceeded to grant. [1.5] In the present case the 12 claims submitted on 5 January 2005 were filed before receipt of the European search report, and hence in breach of the prohibition under R 86(1) EPC 1973. Therefore it would seem that, whatever the cause of the confusion, the search and the entire examination procedure was based on a set of claims the admissibility of which was questionable. [1.6] This question may however be left open since the appellant was entitled to rely on the communication by the RS according to the generally accepted principle of good faith and the protection of the legitimate expectations of parties before the EPO. Therefore the board treats the 12 claims filed with letter of 5 January 2005 as originally filed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 926/12 – The Point Of No Return
K’s Law – The ebook
T 926/12 – The Point Of No Return 11 Sep 2013
In this revocation appeal the Board had to decide on the admissibility of the main request (and several other requests). The relevant facts are mentioned in the decision. *** Translation of the German original *** [1] During the oral proceedings (OPs) the patent proprietor declared that, in view of the fact that the Board had invoked the rules of procedure and refused to admit its “main request” and its “auxiliary requests 1 to 8” of May 29, 2013, […], it wanted to revert to its request of December 4, 2008, which it had submitted before the OD and have it considered as its main request. […] However, the fax of the patent proprietor which [the EPO] had received on May 29, 2013, contains the following statement: “… referring to the present summons for [OPs to be held on] July 4, 2013, and the annex to the summons to OPs [the patent proprietor] files a new main request and eight auxiliary requests and simultaneously abandons (unter gleichzeitigem Verzicht) the requests filed so far.” The request filed before the OD is encompassed by the expression “the requests filed so far”. “Abandonment” (Verzicht) means the irrevocable renunciation (endgültige Aufgabe) of a right. Whoever uses the word “abandonment” has to accept the consequences. At any rate, this is true for a professional representative such as the representative of the patent proprietor. A declaration of abandonment of a request has a dual – i.e. substantial and procedural – nature. It is immediately successful in both respects. From the point of view of procedural law it is equivalent to the withdrawal (Rücknahme) of a request. However, unlike a withdrawn request, which can in principle be re-introduced into the proceedings – if the competent division or Board admits it - a request that has been abandoned cannot be filed afresh. This is due to the substantial aspect of the abandonment: the declaration of abandonment results in an immediate loss of the abandoned object. During the OPs the patent proprietor confirmed the declaration of abandonment and the fact that it was a procedural statement. However, it was of the opinion that the declaration of abandonment, which had been filed together with the requests referred to as “main request” and “auxiliary requests 1 to 8” in its letter of May 29, 2013, was not to be admitted into the proceedings because the requests had not been admitted either. This opinion ignores the nature of a declaration of abandonment, which has an immediate effect. Therefore, the declaration of abandonment cannot be the object of an admission by the Board. This holds true, even if the [opponents] give their approval to a treatment of the abandoned request. The abandonment is not a “request” (Antrag) within the meaning of Article 12(4) RPBA and not a “case” (Vorbringen) within the meaning of Article 13(1) RPBA. The present Boards considers these views to be in agreement with the case law of the Boards of appeal, which distinguishes between an amendment or withdrawal of a request on the one hand and an abandonment of a request on the other hand. See e.g. T 828/93 [2] and T 922/08 [2.1]. This distinction clearly is based on the assumption that an abandonment has the consequence that a request cannot be treated in the proceedings any more. Accordingly, the Board was hindered from admitting the request filed before the OD into the appeal proceedings, regardless of the fact that the opponent approved its admission. So be careful which words you use in your written submissions. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here. 222 | 3398
T 1427/10 – No Video
K’s Law – The ebook
T 1427/10 – No Video 10 Sep 2013
Today’s post, which concerns an examination appeal, might qualify as the shortest post on this blog. It is more of a reminder, really. [2] The [applicant’s] request that oral proceedings be held by videoconference is rejected since the boards of appeal do not at present have the facilities and procedures for holding public oral proceedings by videoconference (following T 37/08, T 1266/07 and T 663/10). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1039/09 – Origen Disavowed
K’s Law – The ebook
T 1039/09 – Origen Disavowed 9 Sep 2013
In his commentary on Romans, Origen asserts that “ipsa etiam novitas innovanda est” (“novelty itself also is to be renewed”). The appellant in the present examination appeal appears to have been inspired by the Church Father. It tried to establish the novelty of a method on the basis of a new use. Well, this is a renewed attempt, rather than a new one, as we will see. Claim 1 of the main request before the Board read: 1. A method for the purpose of producing bovine milk having a reduced level of saturated fatty acids relative to the level of unsaturated fatty acids by: (a) determining which cows of a herd produce milk containing only beta-casein having a proline at position 67, where the herd comprises cows that produce milk containing betacasein having a proline at position 67 and cows that produce milk containing beta-casein having a histidine at position 67, by genotyping and/or phenotyping bovine cows on the basis of the amino acid located at position 67; (b) selecting cows that have DNA encoding only beta-casein having a proline residue at position 67 or that produce milk containing only beta-casein having a proline at position 67; and (c) milking the selected cows to give milk having a reduced level of saturated fatty acids relative to the level of unsaturated fatty acids compared with milk obtained from the herd. Here is what the Board had to say on novelty: [2] Claim 1 is directed to a method for the purpose of producing bovine milk having a reduced level of saturated fatty acids relative to the level of unsaturated fatty acids. [3] According to established case law of the Boards of Appeal (Case Law, 6th edition 2010, section I.C.5.3.1) a claimed invention lacks novelty unless it includes at least one essential technical feature which distinguishes it from the state of the art. Therefore, when deciding upon the novelty of the subject-matter of claim 1, its technical features have to be determined first. [4] In accordance with decision G 2/88 [2.5], the technical features of a claim directed to a physical activity (e.g. method, process, use) are the physical steps which define such activity. The method of claim 1 comprises three steps (a) to (c) […] as follows: in step (a) cows are geno- or phenotyped on the basis of the amino acid located at position 67 of beta-casein to determine which cows of a herd produce milk containing only beta-casein having a proline at position 67; in step (b) the cows that have DNA encoding only beta-casein having a proline residue at position 67 or that produce milk containing only beta-casein having a proline at position 67 are selected and in step (c) the selected cows are milked. [5] Document D3 discloses […] a method for producing milk which comprises identification of cows homozygous for the beta-casein variant A1 and A2 genes (beta-casein AlAl and A2A2 phenotype cows) by polyacrylamide gel electrophoresis (PAGE) of milk samples from individual cows which corresponds to step (a) of claim 1. From a total of 3183 cows located on 25 large farms in the Manawatu and Waikato regions of New Zealand, approximately 400 cows were selected and placed on a single farm as a mixed herd such that the betacasein AlAl and A2A2 phenotype cows in this herd were subjected to identical farm management and feeding practices which corresponds to step (b) of claim 1. Finally, milk supplied from either beta-casein AlAl or A2A2 phenotype cows was collected separately, in accordance with step (c) of claim 1. Document D3 also discloses (see claims 1-9) a method of producing bovine milk comprising the steps of testing milk from identified cows for the presence of variants of beta-casein (which corresponds to step (a) of claim 1) and selecting those cows whose milk contains the A2 (or A3, D or E) variant and does not contain any A1 variant (which corresponds to step (b) 224 | 3398
T 1039/09 – Origen Disavowed
K’s Law – The ebook
of claim 1), and milking separately the A2 variant milk producing cows and recovering and maintaining their milk separately from milk from any other source (which corresponds to step (c) of claim 1). The beta-casein A2, A3, D and E variants contain a proline at position 67 whereas in the beta-casein variants A1, B, C and F proline67 is substituted by a histidine (see page 13, lines 24 to 27). Accordingly document D3 discloses methods of producing milk which comprise the three physical steps (a) to (c) specified in present claim 1. [6] That the physical steps of the claimed method are the same as in the prior art is not disputed by the appellant. However it was submitted that in the present case the purpose of the method, namely producing bovine milk having a reduced level of saturated fatty acids relative to the level of unsaturated fatty acids, was also a technical feature to be taken into account in the assessment of the novelty of claim 1. [7] In a first line of argumentation the appellant relied on decision T 848/93 and submitted that it was established case law that a method claim was limited by the purpose of the method. [8] The board notes that in the case underlying decision T 848/93 a method was claimed which differed from the method disclosed in the prior art only in its use (remelting instead of vapour phase soldering). The then competent board considered that the intended use feature was a functional technical feature which limited the claim (see points [3.1-2] of the reasons). While the claim underlying decision T 848/93 related to the new use of a method to achieve a particular effect, the claim at issue in the present case relates to a known method for a particular purpose, namely the production of a product, wherein the product is the necessary result of the known method and indistinguishable from the product obtained in the prior art. In the board’s judgement decision T 848/93 […] is for this reason alone not relevant to the present case and cannot be relied on to justify the view that the purpose of the claimed method should be considered a limiting technical feature of claim 1. [9] In a second line of argumentation the appellant submitted that document D3 did not disclose the technical effect of reducing saturated fatty acid levels. Therefore, following the reasoning of decision G 2/88 [10] the purpose limitation was a technical feature providing novelty. [10] The board notes that decision G 2/88 [10.3] has held “with respect to a claim to a new use of a known compound such new use may reflect a newly discovered technical effect described in the patent. The attaining of such a technical effect should then be considered as a functional technical feature of the claim (e.g. the achievement in a particular context of that technical effect). If that technical feature has not been previously made available to the public by any of the means as set out in A 54(2), then the claimed invention is novel, even though such technical effect may have inherently taken place in the course of carrying out what has previously been made available to the public.” Headnote III decision G 2/88 reads “A claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under A 54(1) provided that such technical feature has not previously been made available to the public.” (Emphasis added). [11] Unlike the case underlying decision G 2/88 the claim under consideration in the present case is not directed to a new use of a known compound for a particular purpose but to a known method for the purpose of producing a product and so the question arises whether the principles developed in decision G 2/88 can be applied to the present situation at all. In this context it is of relevance that decision G 2/88 [5.1] distinguishes clearly between claims directed to the use of a product to achieve an effect (this being the normal subject of a use claim) and claims directed to a process of manufacture of a product. Decision G 2/88 is however silent on the issue of whether the purpose can be considered a functional technical feature of a claim directed to a process for producing a product characterised by process steps, wherein the purpose of carrying out said process steps is indicated in the claim. [12] The appellant took the view that the principles developed in decision G 2/88 could be applied to the present case and relied in this context on decision T 1092/01 [17]. It submitted that in decision T 1092/01 [14] the present board noted that it was the information content of any prior art document that was critical, and not what might inherently have occurred if a method described in the prior art had been carried out. In the present case, although saturated fatty acid levels would have been reduced when the selection method was applied in the methods of document D3, this was completely unrecognised and was in no way discernable by the skilled person from the teachings of document D3 and was therefore not disclosed in the sense of A 54(2). Moreover, in its
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T 1039/09 – Origen Disavowed
K’s Law – The ebook
view decision G 1/92 was not relevant because the claim under consideration was directed to a method and not to a product. [13] The board agrees with the notion that it is the information content of the (any) prior art document that is critical. In the present case it is uncontested that document D3 makes available a milk which is indistinguishable from the milk obtained according to the method of claim 1. Moreover, as also pointed out by the appellant, the fatty acid composition of the milk could be analysed and quantified very simply using standard chemical tests and is a readily identifiable property. [14] Decision G 1/92 is of course relevant to the present situation because the issue to be decided is what has been made available to the public by document D3. In accordance with decision G 1/92 [headnote 1] the chemical composition of a product belongs to the state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition. [15] Applied to the facts at hand this means that the chemical composition of the milk produced in document D3 and thus also its fatty acid composition was available to the public from document D3, even though it is not explicitly disclosed in document D3. Therefore, and regardless of whether or not the principles of decision G 2/88 can be applied to the claim under consideration at all, in the board’s judgement the hitherto undetected saturated fatty acid composition of the milk obtained by the process known from document D3 can in any case not be considered a functional technical feature in the sense of decision G 2/88 that would establish the novelty of the method of claim 1 over document D3 because it has previously been made available to the public. [16] As regards decision T 1092/01 it is noted that this board (in a different composition) had held that the rationale of decision G 2/88 was applicable to a claim directed to a known process with which a previously unknown technical effect (conversion of lutein to its isomeric form zeaxanthin) was achieved. The board considered that the relevant question to be answered was whether the skilled person would use the claimed process for a purpose different from that for which the processes of the prior art were used. In the board’s judgement, in view of its starting material and its procedural steps, the claimed process could only serve the same final purpose of production of pigments for food industry. The disclosure of the purpose did not open the way to a new activity and occurred inherently when carrying out the process of the prior art. Hence the board concluded that the statement of such an effect could not confer novelty to the claimed process (see points [18-21] of the reasons). [17] Similarly, in the board’s judgement the skilled person would not in the present case use the process for any purpose other than the production of its inevitable product, namely milk containing only beta-casein having a proline at position 67 and therefore also having a reduced level of saturated fatty acids relative to the level of unsaturated fatty acids. [18] The board notes that, according to more recent case law of the Boards of Appeal, the criteria set out in decision G 2/88 may only be applied to claims directed to the use of a substance for achieving an effect and cannot be extended to claims to a process for producing a product characterised by process steps, wherein the purpose of carrying out such process steps is indicated in the claim (see Case Law, 6th edition 2010, section I.C.5.3.1.e and f; and decisions T 1343/04 [2]; T 1179/07 [2.1.3]; T 304/08 [3.3.2-3], T 2215/08 [2.4.1]). [19] The final argument of the appellant, namely that in the light of the present invention new and commercially significant uses for the milk have emerged, is quite irrelevant to the subject-matter claimed which does not relate to the use of the milk but to its production. [20] The board concludes from the above that the relevant technical features for the purpose of assessment of the novelty of the method of claim 1 are its physical steps and that document D3 which discloses these physical steps anticipates the subject-matter of claim 1 of the main request. Should you wish to download the whole decision, just click here. The file wrapper can be found here. NB: T 1179/07 was one of the first decisions reported by this blog, almost four years ago (here).
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T 493/09 – No Change Intended
K’s Law – The ebook
T 493/09 – No Change Intended 6 Sep 2013
In this case the Opposition Division (OD) maintained the opposed patent in amended form. The opponents filed an appeal. One of the opponents submitted that the OD had violated its right to be heard by not allowing it to present arguments at oral proceedings (OPs) under A 84 with regard to a particular feature. A 101(3)(b) did not allow the unamended parts of a patent amended during opposition proceedings not to meet the requirements of the Convention. Decision T 1459/05 supported the view that features, present in the claims as granted might be subject to a revocation for formal reasons, i.e. in respect of A 84, if the claims have been amended. It has often been tried to have the Boards examine the clarity of unamended claims, but in most cases this was unsuccessful. The present attempt is innovative because it invokes A 101(3)(b), which is a provision that has been introduced with the EPC 2000. The Board was not persuaded: [1] [Opponent 2] submitted that it followed from A 101(3)(b) that after amendment during opposition proceedings all parts of a patent - and thus also parts which had not been amended – had to meet the requirements of the Convention including A 84. Therefore the OD had violated its right to be heard by not allowing it to present arguments at OPs under A 84 with regard to the feature “steady state”. [2] A 101(3)(b) stipulates that if the OD is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during the opposition proceedings, the patent and the invention to which it relates do not meet the requirements of this convention, it shall revoke the patent. [3] A 101(3)(b) has no counterpart in the EPC 1973, but is a new Article introduced with the EPC 2000 to add a clarifying point, see Special Edition No. 4 OJ EPO 2007. It is stated with regard to A 101(3)(b) on page 110 that “New A 101(3)(b) adds a clarifying point. If the proprietor of the patent requests amendments during the opposition proceedings, the OD examines whether, with reference to all the provision of the EPC, the substantive requirements for maintaining the patent are met. If the examination shows that they are, the patent is maintained as amended. If these requirements are not met, the patent is revoked. A 102(1) EPC 1973 provided for revocation of the patent only if the grounds for opposition prejudiced its maintenance. This meant that, strictly speaking, A 102(1) EPC 1973 did not provide the legal basis for revoking the patent if the patent as amended did not meet, for example, the requirements of A 84 or A 123(3) or R 27 or R 29 EPC 1973. In such cases it has been the practice of the EPO to revoke the patent under A 102(3) EPC 1973, even though this provision does not expressly so provide. For the purpose of clarification, new A 101(3)(b) expressly provides for the revocation of the patent as amended.” (Emphasis added). [4] Thus, A 101(3)(b) was not formulated to provide for a complete examination of the claims of a patent in opposition proceedings once claims are amended, as alleged by [opponent 2]. Rather it was the intention of the legislator to provide with A 101(3)(b) a legal basis for revoking a patent if a specific amendment introduced into the patent during opposition proceedings did not meet the requirements of the EPC. This legal basis was missing in the EPC 1973. It was not the intention of the legislator to change the established principles laid down in the case law with regard to the examination of A 84 in opposition proceedings. These principles remain valid even after the entry into force of the revised EPC. [5] In accordance with established case law, when amendments were made to a patent during opposition proceedings, A 102(3) EPC 1973 required them to be examined to ascertain if the EPC 1973, including A 84, was contravened as a result. However, A 102(3) EPC 1973 did not allow objections to be based upon A 84 1973 if they did not arise out of the amendment made. It was held that it would seem somewhat absurd if making a minor amendment were to enable objections outside A 100 EPC 1973 to be raised which had no connection with the amendment itself (Case Law, 6th edition 2010, VII.D.4.2; see in particular decision T 301/87 [headnote 1, 3.6-8]). 227 | 3398
T 493/09 – No Change Intended
K’s Law – The ebook
[6] In the present case, the feature “steady state” has not been added or amended during opposition proceedings but was already present in claim 1 as granted […]. Moreover, the amendments made to claim 1 during the opposition proceedings have not changed the context in which the feature “steady state” is used. Therefore objections as to lack of clarity against the feature “steady state” are inadmissible because they represent an attempt to raise an objection under A 84 – which is not a ground of opposition – against claim 1 as granted (cf. T 853/02 [3.1.1]). [7] In the board’s judgement therefore the OD had no power to examine the clarity of the feature “steady state” in claim 1 and [opponent 2] had no right to raise an objection under A 84 against this feature. Accordingly, the OD did not violate [opponent 2’s] right to be heard when it decided not to hear it on the issue of clarity of the feature “steady state” and [opponent 2’s] request for reimbursement of the appeal fee is rejected. [8] [Opponent 2] also submitted that in line with decision T 1459/05 features, which were already present in the claims as granted, might be subject to a revocation for formal reasons, i.e. in respect of A 84, if the claims had been amended. [9] The board notes that also in decision T 1459/05 [4.3.1] it was held that A 101(3)(a) does not permit an objection under A 84 that does not relate directly to an amendment made in opposition proceedings. In the case underlying decision T 1459/05 claim 1 as granted had been combined with its dependent claim 4 and the amendment considered under A 84 was the feature added to claim 1. As set out above, in the present case the term “steady state” was present in claim 1 as granted and has not been added or amended during opposition proceedings. The board concludes therefore that decision T 1459/05 is not relevant to the present case. NB: T 1459/05 has been criticised several times by the Boards themselves, see e.g. T 1855/07 or T 59/10, but I fear that unless the EBA clarifies the situation, this discussion will be recurrent. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 309/10 – Inside The Librarian’s Mind
K’s Law – The ebook
T 309/10 – Inside The Librarian’s Mind 5 Sep 2013
This is an examination appeal. Claim 1 of the main request read: A document repository system allowing electronic storing and referencing of documents comprising: a storage device; a network interface; a processor coupled to the storage device, said processor adapted to: process a symbol to generate a master symbol (115) including applying a set of normalisation rules to the symbol; assign a parent identifier (110) to the master symbol (115), wherein the parent identifier (110) is assignable to a plurality of master symbols (115); store the parent identifier (110) and the master symbol (115) in a master symbol database wherein the master symbol is linked to the parent identifier (110); store at least one document wherein the at least one document is linked to the parent identifier comprising the steps of: generating a document identifier; storing the document identifier and the parent identifier (110) so that the parent identifier is linked to the document identifier in a relational database; and storing the document and the document identifier so that the document identifier is linked to the document; receive an input symbol which contains symbol segments (120); process the input symbol to generate a normalized symbol including: applying a set of normalisation rules to the input symbol; and searching a normalization table database (417) of sets of symbols each set relating to a master symbol using the symbol segments to return corresponding master symbol segments (1527); search the master symbol database using the normalized symbol to find a matching master symbol and a parent identifier linked to the matching master symbol; search an information element database to find a document linked to the parent identifier; and retrieve the document linked to the parent identifier. [11] In the system defined by claim 1, the processor is adapted to carry out the steps of the core method, set out above. 229 | 3398
T 309/10 – Inside The Librarian’s Mind
K’s Law – The ebook
[12] The invention defined in claim 1 does not involve an inventive step (A 56 EPC 1973) if, when faced with the technical problem of implementing the core method, the provision of a storage device, a network interface, and a suitably adapted processor would have been obvious. Here, “suitably adapted” means that the table of master symbols, the table linking document identifiers and parent identifiers, and the database of documents must be electronically stored; and it must be the processor that carries out the steps, including normalisation. [13] In the Board’s view, any computer implementation must make use of storage, and whatever carries out the method steps, which the skilled person seeks to implement, can be called a processor. Thus, inevitably, there would be storage, and all the steps of the core method would be performed by a processor, which must be adapted to perform them. [14] The only options open to the skilled person would be the provision of a network interface, and the choice of storing the tables and database in electronic or magnetic storage (the claim does not specify the form of storage, but it can be taken, implicitly, as normal computer storage). In the Board’s view, in choosing to implement the core method on a general purpose computer, both of those optional features would have been provided. Since general purpose computers were known for their ability to store and process data reliably and quickly, their use would have been obvious. [15] The appellant has argued that the invention makes the retrieval of relevant documents easier and more accurate. That argument bears on the non-technical problem of librarianship. The same advantage accrues to any library, regardless of its technological substrate; regardless, indeed, of whether or not there is a technological substrate at all. The Board does consider that retrieval and accuracy might, in some circumstances, be technical issues. The Board in T 654/10 evidently considered them to be so in that case. However, the Board, in the present case, has reasons (set out above) for considering them to be non-technical in this case. [16] The argument that a librarian would not, or could not, maintain the information required in his head, so that the invention does not amount to the automation of a mental act is not apposite; nor would it be sufficient to change the result if it were. The claimed repository need not be large. According to the claim, it is sufficient to have one master symbol, one parent identifier, and one document. In such a case, it would be entirely possible to perform the method mentally. Naturally, even the problem of librarianship would then be trivial. A librarian would normally have to deal with more than can easily be done without some assistance. He might, for example, as librarians often have done, use a card index to store associations between master symbols and parent identifiers. The method, however, remains the same, independently of any technical substrate used for storing information, whether it be pencil and paper, cardboard and ink, or digital storage. [17] The further argument that implementation using a computer system would allow the repository to grow larger than without cannot change the Board’s assessment that using computers for what they are good at storing and processing large amounts of data quickly - was an obvious measure. [18] The argument that the invention cannot be seen as an automation of a known method, because the method, in this case, was not known, fails because the novelty of non-technical methods is irrelevant (cf. T 641/00 [headnote 2]). [19] In conclusion, the main request cannot be allowed, because the subject matter defined by claim 1 does not involve an inventive step (A 56 EPC 1973). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2018/08 – Keeping Off The Grass
K’s Law – The ebook
T 2018/08 – Keeping Off The Grass 4 Sep 2013
I may be wrong but I think there is some tension between G 1/03 and G 2/10. So I am very interested in cases such as the present one where the Boards examine compliance with both decisions. Claim 1 of the main request on file read: Method for isolating essentially pure group 1, 2, 3, 10 and 13 grass allergens, characterised in that an aqueous extract of Graminae pollen other than Phleum pratense is prepared, and the soluble constituents are subjected to hydrophobic interaction chromatography, a gel filtration step and, if desired, cation exchanger chromatography. (my emphasis) In what follows, Board 3.3.04 examines compliance with A 123(2): *** Translation of the German original *** Substantial law [2] The Board notes that the present main request is based on the first auxiliary request which had been filed during the oral proceedings before the Opposition Division (OD) on February 7, 2008. This request differs from the claims as granted in that a disclaimer (“other than Phleum pratense” (“ausgenommen Phleum pratense”)) has been introduced into claim 1 and in that a new claim 8 has been added, which claim describes a three-step method for isolating grass allergens without the use of a disclaimer. A 123(2) [3] The Board notes that neither the OD nor [the opponent] have raised the objection of inadmissible extension against the claims of the main request. The Board does not see any reason for reaching a different conclusion because the introduction of the disclaimer into claim 1 and the addition of claim 8 comply with the requirements of A 123(2) and the decisions G 1/03 and G 2/10. In claim 1 the disclaimer (“other than Phleum pratense”) serves the purpose of delimiting the subject-matter with respect to D8, which is state of the art pursuant to A 54(3)(4) EPC 1973. This document discloses an identical two-step method for isolating allergens from Phleum pratense (Timothy-grass), consisting of a hydrophobic interaction chromatography (HIC) and a gel filtration step […]. According to decision G 1/03 the introduction of a disclaimer that has not been disclosed in the application as filed can be allowable if it delimits a claim with respect to a state of the art pursuant to A 54(3)(4) EPC 1973, provided that the disclaimer does not exclude more than is necessary to re-establish novelty over this document and is clear and concise in order to comply with the requirements of A 84 (see decision G 1/03 [headnotes, 3]). The Board considers these requirements to have been complied with when the disclaimer “other than Phleum pratense” was introduced into claim 1. Therefore, the introduction of claim 8 is also admissible from the point of view of substantial law because it overcomes an objection of inadmissible extension and because a three-step method for isolating allergens from Graminae is not known from document D8, which means that there is no need to introduce a disclaimer for this method. Moreover, decision G 2/10 requires the subject-matter remaining in the claim after the introduction of the disclaimer to be, explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed in order to satisfy the requirements of A 123(2) (see G 2/10 [headnote]). The application as filed discloses a purification method for isolating allergens from grass pollen, true grasses (Graminae) being particularly preferred […]. The family of true grasses comprises many grass types and is not limited to Phleum pratense, which was known to the skilled person on the priority date. For instance, in addition to Phleum pratense the description explicitly mentions pollen of the true grass types Lolium perenne, Dactylis glomerata, Festuca pratensis, Holcus lanatus, Poa pratensis, and Secale cereale as preferred raw material for purifying the claimed allergens […]. Thus claim 1 as amended by the introduction of the disclaimer still encompasses subject-matter allowing the invention to be carried out (der die Erfindung und ihre Ausführung ermöglicht). Moreover, the application does not provide any hint that the skilled person would have considered that the subject-matter remaining in the claim did not belong to the invention. From this the Board concludes that to the skilled person the subject-matter remaining in the claim was disclosed in the
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K’s Law – The ebook
application as filed and that, as a consequence, the requirements of A 123(2) in the light of decisions G 1/03 and G 2/10 are satisfied. I am not sure that this is how G 2/10 wanted things to be handled. What do you think? Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1351/10 – No Excuse
K’s Law – The ebook
T 1351/10 – No Excuse 3 Sep 2013
[2] The main request under consideration was filed as the [patent proprietor’s] fourth auxiliary request with letter of 4 February 2013, i.e. one month before the oral proceedings (OPs) before the board. It is identical to the main request underlying the decision of the opposition division (OD) […]. [2.1] According to Article 13(1) RPBA […] any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy. [2.2] The [patent proprietor] argued that in August 2010, some days before the end of the time limit for filing the statement of grounds of appeal, the professional representative in this case was changed. It was not possible at that time to review the case carefully and to submit correct requests. Use had to be made of what the representative’s predecessor had prepared. [2.3] However, a change of professional representative is not an objective excuse for not filing appropriate requests along with the statement of grounds of appeal, and in particular for not maintaining the main request underlying the decision under appeal. In fact, this rather presupposes a deliberate choice by the [patent proprietor]. In any case, a change of representative at the time of filing the statement of grounds of appeal certainly cannot justify the filing of the main request only one month before the date of OPs before the board. [2.4] Moreover, in its letter dated 4 February 2013, the [patent proprietor] only stated with regard to the fourth auxiliary request: “It is requested that the patent be maintained in amended form with the same claim 1 submitted during the opposition procedure with letter of December 18, 2008 of the previous patent representative, and with dependent claims 2-5 of the patent as granted”. No arguments in support of the inventiveness of the subject-matter of claim 1 – which would challenge the decision of the OD in respect of the main request – were given. [2.5] In the board’s view it would not serve the purpose of procedural economy in these appeal proceedings to allow the [patent proprietor] to defend its main request underlying the decision under appeal for the first time in OPs before the board. Moreover it would go against the principle of fair proceedings to admit the main request into the proceedings, since the [patent proprietor’s] conduct led the [opponent] to believe that the main request underlying the decision of the opposition proceedings would no longer be the subject of discussion, and, also due to the lack of any written arguments in support of the fourth auxiliary request in the [patent proprietor’s] letter of 4 February 2013, the [opponent]might well have been surprised by the [patent proprietor’s] arguments. [2.6] Thus, the board, exercising its discretion under Article 13(1) RPBA, did not admit the main request into the proceedings. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1795/10 – Over-Formalistic
K’s Law – The ebook
T 1795/10 – Over-Formalistic 2 Sep 2013
This revocation appeal contains some interesting passages one of which concerns the admissibility of the opposition: [1.1] Mr K. filed the opposition under the letter head of his firm and signed as patent attorney. The [patent proprietor] claimed that it was to be assumed that Mr K. was acting on behalf of an undisclosed client. The name of the opponent, however, was indispensable for a valid opposition. The [patent proprietor] further stressed that Mr K. had failed to indicate his nationality and his place of residence, his place of business not being sufficient under R 76(2)(a) and R 41(2)(c). [1.2] In decision G 3/97, the Enlarged Board of Appeal stated: “An opposition is not inadmissible purely because the person named as opponent according to R 55(a) [EPC 1973 = Rule 76(2)(a) EPC 2000] is acting on behalf of a third party. Such an opposition is, however, inadmissible if the involvement of the opponent is to be regarded as circumventing the law by abuse of process. […]. However, a circumvention of the law by abuse of process does not arise purely because:
a professional representative is acting in his own name on behalf of a client; an opponent with either a residence or principal place of business in one of the EPC contracting states is acting on behalf of a third party who does not meet this requirement.”
Thus, the mere fact that the opposition was filed by a patent attorney, even if he might be representing a third party, does not necessarily mean that there has been a circumvention of the law by abuse of process which might render the opposition inadmissible. [1.3] Following a failure to comply with R 76(2)(a) and R 41(2)(c), R 77(2) gives the opposition division (OD) the authority to invite the opponent to remedy the deficiencies and – if the opponent fails to do so within a specified time period – to reject the opposition as inadmissible. However, since the OD issued no such invitation there is no basis for holding the opposition inadmissible. R 77(1) (rejection without invitation to remedy the deficiencies) applies only to non-compliance with the provisions of A 99(1) or R 76(2)(c). Therefore, even if there was a deficiency under R 76(2)(a) regarding the opponent’s identity (nationality and place of residence), this would not render the opposition inadmissible. The opponent also objected that the amendments did not comply with R 80 (according to which the amendments have to be occasioned by a ground for opposition under A 100). The Board disagreed: [3.2] In the board’s view, the amendments to claim 1 satisfy the requirements of R 80, because the amendment consisting of the insertion of the sentence “the lithium-metal composite oxide is synthesized from … in dehumidified air” was filed with the aim of overcoming the OD’s conclusions as to lack of novelty. Thus, this particular amendment was occasioned by a ground for opposition under A 100(a), as required by R 80. That the [patent proprietor] also took the opportunity to delete the word “having” from the sentence “having a Karl Fischer moisture content of 0.2 wt % or less when heated to 180°C” cannot be seen as an infringement to R 80 because claim 1 already includes an amendment occasioned by a ground for opposition. Of course, when amending its claims, the proprietor should not use this as an opportunity to tidy them up, but it would be over234 | 3398
T 1795/10 – Over-Formalistic
K’s Law – The ebook
formalistic to reject a claim - with the consequence of the revocation of the patent - simply because a further minor and/or linguistic amendment was carried out. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1340/10 – Last Minute
K’s Law – The ebook
T 1340/10 – Last Minute 30 Aug 2013
In this case the opponents appealed against the decision of the Opposition Division (OD) – dated April 19, 2010 – to maintain the opposed patent in amended form. At the opening of the oral proceedings, which took place on May 22, 2013, the patent proprietor requested the board to remit the case to the first instance because the contested decision contained severe procedural deficiencies. It pointed out that the decision contained no statement as regards the opposition ground under A 100(b). The appellants contested both the admissibility and allowability of the late-filed auxiliary request. They further requested that the case not be remitted to the first instance, in view of the duration of the proceedings. What did the Board do with this request? [1.1] Under the provisions of R 111(2), appealable decisions must be reasoned. The ground underlying this requirement is closely linked to the principle of the right to be heard laid down by A 113, which means that the parties are able to determine whether their arguments have been duly considered even if not accepted. This requirement is also clearly related to the provisions of A 108 insofar as the reasoning developed by the deciding body constitutes the basis for the grounds of appeal. [1.2] In the present case, it is manifest that the contested decision does not contain any decision, let alone any reasoning, relating to the ground for opposition based on A 83 raised by the opponents. [1.3] The appellants objected to the admissibility of this request on the grounds that it was filed late and by a party which had not appealed. However, as a matter of principle, a substantial procedural violation, due to its very nature, may be raised at any stage of the appeal proceedings. Although the respondent waited until the last minute to introduce this objection, the procedural mistake is so obvious that the appellants cannot claim to be surprised. Obviously, the representatives were aware of this deficiency in the contested decision (see e.g. statement of grounds of appeal from opponent 2; page 3, point 3).
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T 1340/10 – Last Minute
K’s Law – The ebook
[1.4] It is well-established case law that a party may, during appeal proceedings, file any kind of request aiming at the maintenance of the result obtained at the first-instance stage (cf. Enlarged Board of Appeal decisions G 9/92 [12] and G 4/93 [1]). An objection based on a severe procedural violation is thus not excluded. The request is therefore admissible. [1.5] As to its allowability, as already stated above, the lack of any reasoning, let alone an explicit decision, relating to the objection based on A 100(b) cannot be disputed. The minutes of the oral proceedings shows that a debate took place on this issue, contrary to the respondent’s initial assertions. The lack of substantiation amounts to a substantial procedural violation which justifies that the decision be invalidated. [1.6] The board is not satisfied that the other grounds cited as procedural violations are such as to affect the validity of the contested decision. It is established case law of the boards of appeal that reasoning which is not sufficiently developed and thus not convincing enough cannot be regarded as a substantial procedural violation. The same applies to a mistaken evaluation of a piece of evidence or to a wrong conclusion drawn on the basis of the documents on file. This is also true where an error would not have led to a different outcome of the proceedings (see in particular T 144/94 [4]; T 12/03 [4.5]; T 17/97 [8.2]). [1.7] As to the request for remittal to the first instance, under the provisions of Article 11 RPBA the board must remit the case to the department of first instance if fundamental deficiencies are apparent, unless special reasons present themselves for doing otherwise. In the present case, considering that the application was filed on 5 October 2001 and that the opposition proceedings started on 4 October 2007, the board is of the opinion that a remittal is not appropriate because the length of the procedure demands that a final decision be reached without delay. Moreover, the board notes that, as regards the procedural violation, the respondent could have raised its concerns at the beginning of the appeal phase, which could have led to speedier prosecution. Therefore, the request for remittal is rejected. The patent was finally revoked. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1599/09 – Pump It Up
K’s Law – The ebook
T 1599/09 – Pump It Up 29 Aug 2013
This is another examination appeal. The Examining Division (ED) had refused the application as contrary to A 53(c). Claims 1 and 10 of the main request before the Board read: 1. A method of controlling the enabling of an enteral feeding pump for which a feeding set having an interlock device is adapted to be inserted into a recess of the enteral feeding pump, said method comprising: inserting the interlock device into the recess of the enteral feeding pump; emitting electromagnetic radiation in a direction for striking the inserted interlock device; and detecting at least a portion of the electromagnetic radiation striking the interlock device when the interlock device is properly inserted in the pump recess; such that operation of the enteral feeding pump to pump nutrient liquid in the feeding set in response to the detected electromagnetic radiation is enabled. 10. The method as set forth in claim 1, wherein emitting electromagnetic radiation comprises operating a first electromagnetic radiation source and wherein detecting the electromagnetic radiation striking the interlock device comprises operating a first electromagnetic radiation detector, and further comprising disabling operation of the enteral feeding pump in response to the first detector detecting electromagnetic radiation emitted by a source other than the first source. The Board came to the same conclusion as the ED: [2] Claim 1 […] comprises the feature “operation of the enteral feeding pump to pump nutrient liquid in the feeding set in response to the detected electromagnetic radiation is enabled”. Besides encompassing numerous embodiments where the pump is merely put in a state where it is permitted to operate […], this feature also encompasses embodiments where the pump is actually operated. This becomes evident from the description of the sixth embodiment of Figure 11 […] where it is stated […] that “the controller 77 will sense a “SET LOADED” condition and initiate operation of the pump” [emphasis added]. Further on, it is stated that “[d]uring operation of the pump, ... the safety interlock status is continuously monitored and if the status changes from “SET LOADED” TO “FAULT”, the controller will stop operating the pump” [emphasis added]. Similarly, in the description of the fifth embodiment of Figure 9, […] it is stated […] that the IR detector 239 “sends a signal to the controller to disable operation of the pump” [emphasis added]. Disabling operation of the pump is also part of dependent claims 10 and 12. In the Board’s view, this means that the pump, being in a state where it pumps fluid, is directly set into a state where it does not pump any more, i.e. it is switched off. It is not disclosed in this context that there are any intermediate steps between these two states. With regard to the output filtering 1418 referred to by the appellant, it is explicitly mentioned […] that such output filtering can be omitted. Accordingly, in view of dependent claims 10 and 12 and the cited passages of the description, claim 1 encompasses embodiments where the enteral feeding pump is actually operating to pump nutrient liquid. From the beginning of paragraph [0035] it becomes clear that the feeding set 5 (comprising the safety interlock device mentioned in claim 1) comprises tubing providing a fluid pathway between a source of fluid and a patient, i.e. the nutrient liquid in the source of fluid and in the tubing is in direct connection to the patient. Accordingly, the operation of the pump results in nutrient liquid being pumped into the patient. It follows that there is a functional interaction with the patient, having a direct effect on his or her treatment. In this respect, the present situation is different from that considered in the decisions T 245/87, T 329/94 and T 238/06, referred to by the appellant. Enteral feeding is used to provide nutrition to patients who cannot obtain nutrition by mouth or are unable to swallow safely. Such patients are suffering from an incapacity or disease. Even though enteral feeding does not cure the underlying cause, it clearly alleviates and lessens the symptoms thereof. It further prevents malnourishment. According to the established case law of the EPO (“Case Law”, 6th edition 2010, I.B.4.4.1, first two paragraphs), the meaning of the term “therapy” is not restricted to curing a disease and removing its causes. It also includes in particular symptomatic and prophylactic therapy. Accordingly, enteral feeding is 238 | 3398
T 1599/09 – Pump It Up
K’s Law – The ebook
considered to fall under the meaning of the term “therapy”. The question of whether or not the nutrition fluid also comprises medicine as mentioned at the beginning of paragraph [0002] dealing with the background of the invention can thus be left aside. The appellant’s argument that the patient can operate the enteral feeding pump himself, without a medical practitioner being involved, is not decisive with respect to the exception clause of A 53(c). In G 1/04 [6.3], it is clearly stated that “whether or not a method is a diagnostic method within the meaning of A 52(4) EPC [1973] should neither depend on the participation of a medical or veterinary practitioner, by being present or by bearing the responsibility, nor on the fact that all method steps can also, or only, be practised by medicinal or nonmedicinal support staff, the patient himself or herself or an automated system”. This finding is also applicable to therapeutic methods. It is noted that many forms of medicaments, e.g. in the form of tablets or pills, can be administered by the patient himself. As stated at the beginning of G 1/07 [4.1], “[i]t is established in the jurisprudence of the boards of appeal that a claim encompassing an embodiment which is excluded from patentability under now A 53(c), then A 52(4) 1973, cannot be left unamended”. Since claim 1 of the main and the first auxiliary requests encompasses embodiments falling under the exception clause of A 53(c) as explained above, these requests cannot be allowed. The Board refused to refer certain questions to the Enlarged Board and then considered the third auxiliary request claim 1 of which read: 1. A method of controlling the enabling of an enteral feeding pump for which a feeding set having an interlock device is adapted to be inserted into a recess of the enteral feeding pump, said method comprising: inserting the interlock device into the recess of the enteral feeding pump; emitting electromagnetic radiation in a direction for striking an the inserted interlock device inserted into the recess of the enteral feeding pump; and detecting at least a portion of the electromagnetic radiation striking the interlock device when the interlock device is properly inserted in the pump recess; such that operation of the enteral feeding pump to pump nutrient liquid in the feeding set in response to the detected electromagnetic radiation is enabled wherein the method does not include the step of controlling the operation of the enteral feeding pump to pump nutrient liquid. (amendments with respect to claim 1 of the main request are highlighted) The Board considered the A 53(c) objection to have been overcome by this amendment: [4] […] Since embodiments in which the pump is actually operated, thus being in functional interaction with the patient, are no longer encompassed, the claimed subject-matter does not fall under the exception clause of A 53(c). Since the fulfilment of the further requirements of the EPC has not yet been examined, the Board finds it appropriate to remit the case to the ED for the continuation of the examination procedure (A 111(1)). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 270/11 – Trademark Trouble Et Al
K’s Law – The ebook
T 270/11 – Trademark Trouble Et Al 28 Aug 2013
This is an examination appeal. *** Translation of the German original *** The Board first dealt with the main request, claim 1 of which read: Cosmetic preparation comprising a combination of (a) a copolymer based on the monomers N-vinylpyrrolidon (VP), N-vinylimidazole (VI), methacrylamide (MAM) and quaternised N-vinylimidazole (QVI); (b) at least one non-ionic polymer; (c) cetyltrimethylammonium chloride (cetrimonium chloride; CAS 112-02-7). [2.1] The Examining Division (ED) noted in the impugned decision that the subject-matter of claims 1 and 9 lacked novelty over the disclosure of documents D2, which belonged to the state of the art pursuant to A 54(3). [2.2] The Board endorses this argument and the conclusion of the ED. Document D2 […] discloses examples of “Styling Mousse 3” and “Styling Mousse 4”, respectively, i.e. SM24, SM25, SM26, SM29, SM30, SM31, SM32, SM35, SM36, SM37, SM40, SM41, SM42, and SM43, each of which comprises a copolymer based on the monomers N-vinylpyrrolidon (VP), N-vinylimidazole (VI), methacrylamide (MAM) and quaternised Nvinylimidazole (QVI), i.e. the copolymers S2, S3, S4, S7, S8, S9, and S10, as well as a non-ionic polymer, i.e. hydroxyethyl cellulose, and cetyltrimethylammonium chloride. Thus all the features of claims 1 and 9 of the main request are disclosed in document D2. [2.3] The appellant argued that the subject-matter of claim 1 was novel because the composition of preparations such as “Styling Mousse 4” was not disclosed directly and unambiguously in document D2 because it contained the product Dow Corning 949®Cationic the composition of which was not unambiguous. An ambiguous prior art document could not destroy the novelty [of the claimed subject-matter]. The Board does not find this argument persuasive because the exact composition of the product Dow Corning 949®Cationic in the examples “Styling Mousse 3” and “Styling Mousse 4” of document D2 is not relevant for the question of whether present claim 1 is novel. The respective examples clearly contain all three components (a), (b), and (c) of the claimed preparations. As present claim 1 is “open”, i.e. may contain components other than (a), (b), and (c), it is irrelevant what the respective examples of document D2 may contain in addition to that. [2.4] Thus document D2 discloses all the features of claims 1 and 9 of the main request. Therefore, the Board comes to the conclusion, for the above reasons, that the subject-matter of claim 1 lacks novelty within the meaning of A 54(3). The Board then discussed auxiliary request 1, claim 1 of which contained a disclaimer: Cosmetic preparation comprising a combination of (a) a copolymer based on the monomers N-vinylpyrrolidon (VP), N-vinylimidazole (VI), methacrylamide (MAM) and quaternised N-vinylimidazole (QVI); (b) at least one non-ionic polymer; 240 | 3398
T 270/11 – Trademark Trouble Et Al
K’s Law – The ebook
(c) cetyltrimethylammonium chloride (cetrimonium chloride; CAS 112-02-7), with the exception of recipes containing: 2.00% by weight of cetrimonium chloride; 7.00% by weight of Polyquaternium-46; 0.1-1% by weight of a copolymer based on the monomers N-vinylpyrrolidon (VP), Nvinylimidazole (VI), methacrylamide (MAM) and quaternised N-vinylimidazole (QVI) in a ratio of (60/5/30/5), (55/5/35/5), (55/8/29/8), or (55/10/29/6); 0.20% by weight of ceteareth-25; 0.50% by weight of panthenol; 0.05% by weight of Benzophenon-4; 0.20 % by weight of Dow Corning 949®Cationic; 15.00 % by weight of ethanol (96%); 0.20 % by weight of hydroxyethyl cellulose; 6,00 % by weight of propane/butane; ad 100 % by weight of water; which are adjusted to a pH of 5 to 6 by adding lactic or phosphoric acid. (my emphasis) Clarity of the claims (A 84) [3.1] The ED noted in the impugned decision that the subject-matter of claim 1 was not clear, because of the use of the trademark “Dow Corning 949®Cationic” in the disclaimer. [3.2] A 84 in connection with R 43(1) requires the claims to be clear and to define the matter for which protection is sought in terms of the technical features of the invention. This requirement ensures that the public is not left in the dark as to which subject-matter is encompassed by the claims, and which is not. The Board is of the opinion that it follows from this principle of legal security that claims are to be considered as lacking clarity within the meaning of A 84 if they do not allow to draw that distinction (see T 337/95 [2.2-5]). Claims that contain an unclear technical feature, however, cause confusion as to the subject-matter that is actually encompassed by the claims. Because of this lack of legal security such claims, therefore, are unclear within the meaning of A 84. This is all the more true if the unclear feature is essential for distinguishing the claimed subject-matter from the state of the art (see T 728/98 [headnote 1]). [3.3] In the present case claim 1 contains the trademark “Dow Corning 949®Cationic” in a disclaimer that has been introduced in order to restore novelty over prior art pursuant to A 54(3), i.e. document D2 […]. According to the established case law of the Boards of appeal, however, the use of a trademark is to be considered as unclear because it is not certain that the meaning of the trademark will remain unchanged until the expiration of the patent (see interlocutory decision T 762/90 [4.1.1]). As in the present case [the appellant] has not filed any evidence to the contrary, the Board endorses the argumentation of the ED according to which the trademark “Dow Corning 949®Cationic” corresponds to a blend that could be varied at any time. Thus this trademark has no clear-cut meaning, nor does the subject-matter of claim 1. [3.4] The Board is not persuaded by the submissions of the appellant in favour of the clarity of claim 1, for the following reasons: [3.4.1] The appellant referred to decision T 623/91 in which a composition referring to a trademark was excluded by means of a disclaimer without infringing A 84. However, in the case underlying the cited decision [the patent proprietor] had provided evidence (see point [2.1] of the reasons) that in all likelihood a case of a change of the ranges of the corresponding chemical composition would lead to a change of the trademark. In the present case, however, the appellant has never submitted such an argument, and the Board has no reason to assume that the meaning of the trademark Dow Corning 949®Cationic would remain the same until the expiration of the patent. [3.4.2] The appellant also submitted that the use of this trademark in claim 1 of the auxiliary request should nevertheless be allowed because otherwise it was not possible to exclude the novelty destroying compositions of document 2 by means of a disclaimer. However, there is no right to the use of a disclaimer in a claim. A disclaimer may be allowable if it inter alia serves to re-establish novelty by distinguishing a claim over a prior art document under A 54(3), but it must meet the requirements of clarity and conciseness of A 84 (see G 1/03 [headnotes II.1 and II.4]). Among other things, this means that a disclaimer is not allowable if the necessary limitation can be expressed in simpler terms in positive, originally disclosed features in accordance with R 43(1), first sentence (see G 1/03 [3, penultimate 241 | 3398
T 270/11 – Trademark Trouble Et Al
K’s Law – The ebook
paragraph]). In the present case novelty can indeed be re-established by positive features (see e.g. claim 1 of auxiliary request 2, point [4] below). [3.5] As for the above reasons the technical feature “Dow Corning 949®Cationic” lacks clarity, this expression causes confusion as to which subject-matter is actually encompassed by the claims, and which is not. Because of this lack of legal security claim 1 does not comply with the requirement of clarity pursuant to A 84. Thus auxiliary request 1 of the appellant cannot be allowed. So the Board finally discussed the second auxiliary request, claim 1 of which read: Cosmetic preparation comprising a combination of (a) a copolymer based on the monomers N-vinylpyrrolidon (VP), N-vinylimidazole (VI), methacrylamide (MAM) and quaternised N-vinylimidazole (QVI); (b) at least one non-ionic polymer chosen from: the group of homopolymers of vinylpyrrolidon or vinylcaprolactam, the group of copolymers of vinylpyrrolidon and vinyl acetate, the group of terpolymers of vinylpyrrolidon, vinyl acetate and propionate, the group of polyvinyl caprolactam, polyvinylamids, the group of copolymers of vinylpyrrolidon and dimethylaminoethyl methacrylate, the group of terpolymers of vinyl-caprolactam, vinylpyrrolidon and dimethylaminoethyl methacrylate, the group of terpolymers of vinylpyrrolidon, vinylimidazole and Methacrylamide or the group of terpolymers of vinylpyrrolidon, vinylimidazole and vinyl caprolactam; (c) cetyltrimethylammonium chloride (cetrimonium chloride; CAS 112-02-7). (my emphasis) Novelty [4] The Board does not see any reason to diverge from the positive decision of the first instance as to the novelty of the subject-matter of auxiliary request 2. As a consequence of the listing of the non-ionic polymers (b) the subject-matter of auxiliary request 2 is novel over the disclosure of document D2 because this document does not disclose these particular polymers (b) in combination with the copolymer (a) and cetyltrimethylammonium chloride (c). The subject-matter of auxiliary request 2 is novel over the disclosure of document D1 because the latter does not disclose cetyltrimethylammonium chloride. Inventive step and remittal [5.1] When assessing inventive step the ED used the problem-solution approach. At first, this approach consists in determining the closest prior art and the objective technical problem with respect to the latter, which is solved over the entire scope of claim 1. When doing so, it is necessary to assess the technical results or effects, respectively, which are obtained by the claimed invention over the determined closest prior art (see e.g. T 1/80 and T 248/85 and Case Law, 6th edition, 2010, Section I.D.2(c)). [5.2] However, the ED refused to take into account the comparative trials of the appellant for the formulation of the objective technical problem because they concerned a teaching that could not be derived from the original application, i.e. that the use of cetyltrimethylammonium chloride was related to improved foam properties. Moreover, it was not possible to derive from the original application that cetyltrimethylammonium chloride was “an essential feature” of the claimed preparation, in particular because other embodiments had been described as “advantageous according to the invention” (“erfindungsgemäß vorteilhaft”). [5.3] However, the problem-solution approach does not require the application to describe which feature is responsible for precisely which advantage or technical effect, respectively (see e.g. T 818/93 [5.2, 4th paragraph]). In order to comply with the requirement of inventive step all that is needed is that for the skilled person the claimed subject-matter results from the state of the art in a way that is not obvious (naheliegend) (A 56). It is common practice to incorporate features taken from the dependent claims or from the description into an independent claim in order to make its subject-matter patentable and to use the effects and advantages related to those features as a basis for a (re)formulation of the technical objective (see e.g. T 39/93 [5]). There is no provision according to which the part of the originally claimed subject-matter which is considered to be patentable at the end of the examination has to be particularly highlighted (hervorgehoben) or described as an essential feature of the invention. (NB: I think it is clear what the Board intended to convey in the last sentence, but as it stands it is weird.) [5.4] In the present application all disclosed embodiments are said to be according to the invention. In response to the objections raised by the ED it became necessary to limit the claimed subject-matter to a particular embodiment, i.e. preparations containing cetyltrimethylammonium chloride, in order to re-establish novelty and inventive step. Whether this limited embodiment is particularly highlighted as such in the application and 242 | 3398
T 270/11 – Trademark Trouble Et Al
K’s Law – The ebook
whether other embodiments have been disclosed to be “advantageous according to the invention” is irrelevant for the assessment of its inventive step. [5.5] Before the ED the appellant formulated the technical objective with respect to the closest prior art to be the definition of cosmetic preparations having a more stable foam with smaller bubbles. This objective is mentioned almost literally in the original application […]. As evidence for the successful solution of this problem by the preparations according to the claims containing cetyltrimethylammonium chloride the appellant has referred the first instance to comparative trials, which the ED has not taken into account. However, in order to determine the objective technical problem, it is necessary to assess the technical results or effects, respectively, which are obtained by the claimed invention over the determined closest prior art (see point [5.1] above). [5.6] Thus [the Board] notes that the first instance has not yet completely examined [the application] on the basis of the principles developed by the Board, i.e. by determining the objective technical problem and its solution. As a consequence of this incorrect application of the problem-solution-approach the inventive step analysis is based on an error, i.e. the comparative trials D3 as well as V1 and V2 filed on September 7, 2007, and September 24, 2010, have not been taken into account in the determination of the objective technical problem over document D1. As a consequence it is necessary to remit the case to the first instance for further examination. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 734/12 – Speeding Up
K’s Law – The ebook
T 734/12 – Speeding Up 27 Aug 2013
In this decision the Board made some interesting statements on the patent proprietor’s request for accelerated proceedings. The request was based on three arguments: the possibility of remittal; the suggestion that the decision under appeal which turned on novelty related to an important point of law the resolution of which might take additional time; and the commercial and medical importance of the patented and approved treatment for which the appellant needed certainty as soon as possible, this being emphasized by the opponents’ plans to copy the patent proprietor’s approved indication and dosing regimen using their biosimilars. [2] In the board’s opinion the reasons advanced by the [patent proprietor] for accelerating the appeal proceedings […] did not in themselves justify acceleration. As regards possible remittal, many appeals arise from decisions on one point only and thus include the issue whether or not to remit if successful. As regards a possibly important point of law, the board was not satisfied that there was such a point but, even if there was, it did not accept that this would necessarily require additional time, there being already a considerable case law on the question which criteria define a new patient subgroup. [3] As regards the [patent proprietor’s] commercial significance argument, many if not all patentees consider their patents to be of commercial significance and, if that were a criterion for acceleration, it would be impossible for the board to decide which are of such importance as to merit acceleration and which not. That is doubtless one reason why acceleration has been acknowledged as appropriate when infringement proceedings are threatened or pending. The [patent proprietor] however alleged only planned copying by use of biosimilars and not that any of the opponents had infringed or were about to infringe, let alone that infringement proceedings were pending or even contemplated. [4] However, it was clear to the board that there was a substantial measure of agreement between the parties on an early resolution of the issues […]: of the four parties, three agreed to acceleration and the fourth did not object. Such agreement is not only relatively rare but must be seen against the background of the current length of the board’s list of cases. While it gives the board no pleasure to say so, four years is currently the average time taken to dispose of pending appeals and parties filing new appeals are now being warned routinely by the board that they may expect their appeals to occupy four years. If in a minority of cases, both or most or all parties are agreed that their case should be expedited, then the board should be willing to do so. If this means that such a minority of cases thereby overtake the majority of cases where there is no such agreement, and that the list of pending cases is thereby divided into two lists of expedited non-expedited cases, then that will be a proper reflection of party disposition. Further, the public has an interest in the early resolution of disputes as to the existence or extent of a patent monopoly and it is logical to assume that a dispute in which all the parties agree to an early resolution are those which may affect the public most. [5] Thus the board considered that in all the circumstances of the case the interests of the parties and of the public would best be served by an expedited procedure and by dealing with all outstanding issues in the present appeal proceedings. Accordingly oral proceedings were appointed for an early date in the board’s schedule and, since not all parties had presented written submissions on all outstanding issues, the board made directions intended to bring all the parties’ submissions into the same state of preparedness […]. NB: This decision also has some paragraphs that might be of interest to colleagues interested in novelty in the medical realm (new patient group; points [22-29] of the reasons). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1670/07 – We Don’t Buy It
K’s Law – The ebook
T 1670/07 – We Don’t Buy It 26 Aug 2013
This is an examination appeal. Claim 1 of the main request before the Board read: A method of facilitating shopping with a mobile wireless communications device (12) to obtain a plurality of purchased goods and/or services from a group of vendors (14) located at a shopping location (16) comprising: communicating from the mobile wireless communications device with at least one server (18) a selection of two or more goods and/or services to be purchased by a user of the mobile wireless communications device on or before the user shops at the shopping location; the at least one server, in response to information stored therein regarding vendors located at the shopping location and the goods and/or services offered by the vendors and the selection of the plurality of goods and/or services to be purchased by the user, causing at least an identification of the vendors from which available ones of the two or more goods and/or services may be purchased and the available ones of the two or more goods and/or services to be transmitted to the mobile wireless communications device; and the mobile wireless communications device providing to the user an identification of the available ones of the goods and/or services to be purchased and an itinerary (120) of the user setting forth at least a choice of an order in which the user visits the identified vendors to obtain the goods and/or services to be purchased wherein the itinerary is a function of at least one profile of the user. The Board found this claim to lack inventive step. The decision is interesting because the Board identifies three fallacies related to cases where inventions mix technical and non-technical features. [4] It is common ground that claim 1 of the main request differs from D1 in that the user can obtain goods from a plurality of vendors located at the shopping location and in that the user is provided with an itinerary with the choice of an order to visit the identified vendors, the itinerary being a function of a profile of the user. 245 | 3398
T 1670/07 – We Don’t Buy It
K’s Law – The ebook
[5] The examining division considered that obtaining goods from a plurality of vendors was not technical and was not relevant for assessing inventive step […]. The problem was seen to be how to provide a technical means to optimise an itinerary […]. By including the feature of the itinerary in the problem, it appears that the division must have considered that it did not contribute to inventive step, i.e. was also non-technical. The solution of the provision of the choice of an order of visiting vendors and making the itinerary a function of a user profile were considered to be obvious […]. [6] However, the Board goes further than the examining division and does not consider that the features of providing a choice of an order of visiting vendors and making the itinerary a function of the user profile have any technical effect either. In the Board’s view, the overall effect of the method, namely to produce an ordered list of shops, is not technical. [7] The appellant considers that the selection of a group of vendors at a shopping location contributes to the technical character of the invention. Decision G 1/04 is referred to as noting that a non-technical feature may interact with technical elements so as to produce a technical effect. This decision refers to T 603/89 as the basis for this statement. [8] This decision in turn cites T 26/86 as an example where the mix of technical (X-ray apparatus) and nontechnical features (computer program) as a whole produces a technical effect (extending of the life of an X-ray tube). It also gives the counterexample of T 158/88 where the technical features (displaying characters on a screen) and non-technical features (processing data according to the specific selection criteria) produce an effect (replacing data representing a specific character form by data representing the same character in a different form) that differs only in the information displayed, and is not technical. In T 603/89 itself, the technical features (physical marker that is placed on keyboard of an instrument) and non-technical features (displaying numbers and notes) produce an effect (improvement of a teaching method) that is an improvement of a method for performing a mental act and thus also not technical. [9] In the present case, the appellant argues that the alleged non-technical feature of the information regarding the group of vendors “interacts with technical elements, in the form of the server 18, to produce a technical effect in the selection of vendors and the transmission of processed information regarding that selection to the mobile wireless communications device”. However, in the Board’s view, this is an instance of the well-known argument that could be termed the “technical leakage fallacy”, in which the intrinsic technical nature of the implementation leaks back into the intrinsically non-technical nature of the problem. In this case, the “selection of vendors” is not a technical effect and the mere “interaction” with technical elements is not enough to make the whole process technical as required by the jurisprudence. Similarly, the transmission of the selection is no more than the dissemination of information, which is in itself also not technical. These effects are more like those in T 158/88 and T 603/89 than in T 26/86. Technical considerations only come into play once the relevant features are implemented. [10] The appellant also argued that the difference of identifying a group of vendors rather than a single vendor as in D1 implied a problem of logistics, which was not a business method. However, the Board considers that a logistic or navigation system that actually involves navigation to a particular place might have some technical element, but the present invention does not as it does not involve any physical elements, but simply indicates possible choices. Moreover, in the Board’s view, producing an itinerary is not technical as it involves only standard human behavioural concepts such as going to the bank and then going to the supermarket. The appellant replied that the physical act of going to the locations conferred technical character on these thoughts. [11] Here again, the Board sees something of a well-known argument that could be termed the “broken technical chain fallacy” after decision T 1741/08. This decision dealt with the fairly common situation that arises in connection with graphic user interfaces (GUIs) where a technical effect might result from the user’s reaction to information. The decision essentially concluded (see point [2.1.6]) that a chain of effects from providing information to its use in a technical process is broken by the intervention of a user. In other words, the possible final technical effect brought about by the action of a user cannot be used to establish an overall technical effect because it is conditional on the mental activities of the user. This applies to the present case because any possible technical effect depends on the user’s reaction to the itinerary. [12] The appellant also argued that according to T 362/90, providing a status indication about the state of a system was a technical effect. It is true that T 115/85 states that giving visual indications automatically about conditions prevailing in an apparatus or system is basically a technical problem. In that case the system was the input/output device of a text processor. T 362/90 cites this decision in support of the technical character of a simultaneous optical display of a current and ideal gear selection based on conditions in a gearbox. In the 246 | 3398
T 1670/07 – We Don’t Buy It
K’s Law – The ebook
Board’s view, the display of an optimal shopping itinerary is different because there is no comparable technical system since shopping is intrinsically non-technical. The availability of goods in a shop and information on shopping lists are not comparable with the status of a technical system. Furthermore, although the system of the invention has a server and a mobile device that are undoubtably (sic) technical, the invention is not displaying information about the status of these devices themselves, but only non-technical information that they process. [13] In summary, therefore, the Board is of the opinion that a technical effect may arise from either the provision of data about a technical process, regardless of the presence of a user or its subsequent use, or from the provision of data (including data that on its own is excluded, e.g. produced by means of an algorithm) that is applied directly in a technical process. In the Board’s view, neither applies to the present case. [14] Thus, in the Board’s view, the appellant’s formulation of the problem as “the provision of a technique which has greater flexibility and can provide results tailored to a user’s preferences” is not a technical problem and is also far too general because it does not correctly take into account non-technical aspects. In the Board’s view, the problem is the much more specific one of how to modify the prior art to implement the non-technical aspects, in this case how to plan a shopping trip (itinerary) that includes orders from different vendors. [15] Concerning the implementation, the Board first notes that it is essentially only claimed in functional terms and that there are no details of how it is actually done. The only technical features of the solution are the hardware elements themselves and the specification of which elements perform the various steps. The elements of a mobile wireless communications device and a server are conventional and moreover known from D1. The only assignment of function that is specified is that the server determines the vendors as function of the orders and the location. Since D1 determines the vendor for a single order at the server, it would be obvious to consider determining multiple vendors in the case of multiple orders. [16] At the oral proceedings, the appellant stressed that the system of D1 only identified one facility whereas the invention identified a group of vendors and gave navigation information about how to visit them. If the system of D1 were to be used to order several items, it would only return information on a single vendor that could supply all the items. There might be no single vendor capable of doing this, or the vendor might be a long way away from the customer. The invention would be able to find more than one vendor that together could fulfil the order. Thus the invention solved the problem of reducing the number of failed attempts to fulfil an order. In the Board’s view, this is another example of a standard argument, which could be termed the “non-technical prejudice fallacy”. The argument essentially invokes non-technical aspects as a reason for not modifying the prior art, whereas these features cannot in fact contribute to inventive step. The question is not whether the skilled person would consider providing these features because that has already been decided in formulating the technical problem. The question is simply how it would be done. As mentioned above, in this case, the “how” comprises conventional hardware carrying out the tasks in an obvious way. In particular, there is no technical reason why the skilled person would not have considered modifying the various parts of the system of D1, at least to the extent claimed, to solve the problem posed. [17] It follows from the above, that in the Board’s view, the appellant’s analysis of why the repeated selection of vendors according to D1 is not equivalent to the claimed solution is moot. [18] Accordingly the Board judges that claim 1 of the main request does not involve an inventive step (A 56 EPC 1973). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1395/09 – Clean/r Shaven
K’s Law – The ebook
T 1395/09 – Clean/r Shaven 23 Aug 2013
Claim 1 as maintained by the Opposition Division (OD) read: 1. A safety razor comprising a blade unit (2) having at least one blade (4) with a sharp cutting edge, a handle (1) on which the blade unit is carried, an electrical device (24,26), and a control device (16) for controlling operation of the electrical device, [characterized in that] the control device (16) [is] being responsive to a water detecting arrangement whereby the electrical device is actuated for cleaning the blade unit when a person using the razor immerses the blade unit (2) into a body of water [for cleaning the blade unit], the water detecting arrangement comprising a pair of electrodes, at least one of which is provided on the blade unit, characterized in that the electrodes are spaced apart from each other so that, in normal use of the razor, the electrodes will not be bridged by shaving foam collected on the blade unit in the course of shaving. The Board raised a clarity objection, much to the dismay of the patent proprietor: [1] Claim 1 of the main request (i.e. claim 1 of the patent as maintained by the OD […]) comprises the functional definition of the spacing of the pair of electrodes: “the electrodes are spaced apart from each other so that, in normal use of the razor, the electrodes will not be bridged by shaving foam collected on the blade unit in the course of shaving”. This defines a result to be achieved. [1.1] In its communication annexed to the summons to oral proceedings (OPs) the Board remarked that, since this feature, which had been introduced during the opposition proceedings into claim 1, was taken from the description of the patent in suit, the issue of clarity of the wording of claim 1 as maintained has to be examined […]. [1.2] The [patent proprietor] argued at the OPs that the Board, particularly in the light of G 9/91 [18], would not be entitled to examine ex-officio this amendment since the [opponent] did not raise any corresponding clarity objection in the entire proceedings, let alone in its statement of grounds of appeal. These arguments cannot hold for the following reasons. [1.3] First of all, the quoted decision G 9/91 concerns the extent and power of examination in opposition cases by the OD and the Boards of Appeal and the principle of examination by the EPO of its own motion as laid down in A 114(1) with respect to grounds of opposition. This is clear from the quoted point 18 of its reasons which states “Although A 114(1) formally covers also the appeal procedure; it is therefore justified to apply this provision generally in a more restrictive manner in such procedure than in opposition procedure. In particular with regard to fresh grounds for opposition, for the above reasons the Enlarged Board considers that such grounds may in principle not be introduced at the appeal stage” (emphasis added by the Board). [1.3.1] As admitted by the [patent proprietor] at the OPs clarity does not represent a ground of opposition as specified in A 100(a) to 100(c). Nonetheless as soon as amendments are made in the claims or the specification during the opposition and/or appeal proceedings the verification that all requirements of the EPC are met has to be carried out. This view is supported by G 9/91 [19] wherein it is further stated that “In order to avoid any misunderstanding, it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of A 123(2) and (3))” (emphasis added by the Board). This conclusion is fully in line with the longstanding case law (see Case Law, 6th edition 2010, section VII.D.4.2; see e.g. T 227/88; T 472/88 and T 922/94). Where the OD, in the impugned decision, has not even discussed the issue of clarity, it is up to the Board to do so.
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T 1395/09 – Clean/r Shaven
K’s Law – The ebook
[1.3.2] The [patent proprietor] argued also on the basis of the statement of the EBA in G 9/91 that the appeal procedure is more a judicial procedure for principally reviewing the decisions of the first instance and by its nature less investigative on the part of the Board. As the opponent had not objected to the clarity of this claim in the opposition proceedings, nor in the statement of grounds of appeal, the Board overstepped its competence in itself raising the issue. However, in the present case the [opponent] raised objections under A 83 in its statement of grounds of appeal […] in that the patent did not define what is meant by the term “normal use of the razor” (one of the amended features objected to by the Board) nor what is “the amount of shaving foam collected on the blade unit in the course of shaving” (the other amended feature objected to by the Board). These objections had already been raised during the opposition proceedings […] and have been discussed at the OPs. Since the issue is in the proceedings and is related to amended features in the claim, the Board considers it perfectly in order for it to address it on its own motion as an issue of clarity of claim 1 of the patent as maintained, even on the premise advanced by the [patent proprietor]. In this respect it does not matter whether the issue was raised under A 83 or A 84. [1.4] As far as the amendments are concerned, the Board remains of the opinion that claim 1 as maintained does not comply with A 84, for defining a result to be achieved “… the electrodes are spaced apart from each other so that, in normal use of the razor, the electrodes will not be bridged …”. This result is influenced by the unspecified shaving foam, its amount, the hardness of the water used for shaving, etc. Further, it includes the vague and unspecified term “in normal use of the razor”; it is not clear what that feature means in practice and what limitations are implied by “a normal use”. [1.5] The [patent proprietor’s] arguments to the contrary cannot hold for the following reasons. In the present case, as convincingly argued by the [opponent], it is actually possible to more precisely define the subject-matter claimed (see e.g. claim 1 of the first auxiliary request) without unduly restricting the claim. Further, it is considered to be impossible to determine the distance between the pair of electrodes by experimentation without undue burden for the person skilled in the art. This is due to the fact that the result of such experiments, i.e. whether or not the electrodes are bridged when varying the distance between them, is primarily dependent on the electrical conductivity of the used, but unspecified shaving foam and its unspecified components as well as the amount thereof and the hardness of the water used. The patent in suit is absolutely silent in this respect and gives no guidance at all. Hence the quoted conditions for allowing this functional definition are considered not to be met in the present case. [1.6] The Board therefore considers that claim 1 of the main request contravenes A 84. The main request is therefore not allowable. NB: This decision has more to offer. If you are interested in how G 1/99 (defining exceptions to the principle prohibiting reformatio in peius) is to be applied, you might want to have a look at point [2.2] et seq. of the reasons (and in particular point [2.3.2]). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1119/09 – Mere Instructions
K’s Law – The ebook
T 1119/09 – Mere Instructions 22 Aug 2013
This is an examination appeal. Claim 1 of the main request on file read (in English translation): 1. Apparatus for controlling or regulating a system based on a basic object model which represents the functionality of a runtime system and/or of the system to be controlled or to be regulated, comprising a data processing device for processing a first object type having a predetermined data structure which is part of the basic object model, and which can be instantiated for objects, characterised in that the first object type comprises a type data field (DV) and in that the data processing device allows to store additional allocation information of the object type relating to an additional tool which is not part of the basic object model, in the type data field. Board 3.5.05 dismissed all requests for lack of clarity. It nevertheless discussed the underlying technical contribution and inventive step. *** Translation of the German original *** [6] The application emphasises that the object oriented software is to be used for controlling industrial processes but nevertheless leaves the nature of the system to be controlled as well as the kind of programme control essentially undefined. [6.1] As a matter of fact, the Board is of the opinion that the structure of the claimed control apparatus, which comprises a runtime and an engineering system, is independent of the system to be controlled and of the precise way in which the control is performed. Moreover, this partition does not depend on whether the runtime or engineering system us used for developing an industrial control or another application, such as e.g. a company software. Rather, this partition is typical for programme development contexts of all kinds, as they were known well before the priority date of the present application. [6.2] The appellant argued that it was specific for industrial control systems that they have to be developed during operation. Thus the claimed extension by an additional tool that had not been foreseen from the very beginning, such as an editor, was an integral part of such a control system and, therefore, had to be considered to be technical. [6.3] The Board does not see any reason to doubt that the development of an industrial control during operation can be necessary, although it should be noted that the independent claims of all requests do not state when, with respect to the run time of the control system, the allocation to an new additional tool or editor is to be performed. However, the development during operation is not specific to industrial controls but is also relevant and commonplace for other applications such as, for instance, in the banking and insurance industries. More importantly, the Board is of the opinion that the precise moment of use of the claimed invention does not change the fact that the allocation of objects to a new tool, which is an aspect of programme development, has to be allocated to the engineering system and not to the runtime system or the system that is to be modelled. [6.4] Thus the Board comes to the conclusion that the claimed invention does not solve any specific problem belonging to the field of industrial control and, therefore, does not make any technical contribution to this field. [6.5] Thus the indication in the claim of an unspecific application “for controlling or regulating” as such is not sufficient for establishing the presence of an inventive step. [7] As against a known industrial control such as the one disclosed in the application […] claim 1 of the main and first auxiliary requests provides an apparatus by means of which an “additional tool which is not part of the basic object model” can be allocated to an object type or at least to individual object instances.
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T 1119/09 – Mere Instructions
K’s Law – The ebook
[7.1] The application describes this mechanism as an alternative to a so-called conventional intervention on the original object model, which required the introduction of new object types […]. The new allocation of an “additional tool” to given objects was said to change the overall behaviour of the control system. However, this change does not depend on whether the allocation is done in the conventional way – which is said to be relatively laborious (aufwändig, sic) […] or according to the invention. Consequently, the effect related to the claimed allocation mechanism does, in particular, not depend on whether the new “additional tool” is an editor or another application, and on whether it is allocated to a “technological object type” or another object type. [7.2] The decision to allow (or enforce, as the case may be) the access to certain objects by means of certain tools determines how the software developer has to proceed when creating software. The Board is of the opinion that such decisions qualify as instructions to the software developer which as such do not have any technical effect (see also T 354/07 [4, last two paragraphs]). [7.3] Thus at best the means by which the desired allocation is implemented in a given system – in the present case the provision of a type data field of the object type (main request) and its optional use for generating an object instance (auxiliary request) - can make a technical contribution. [7.4] However, the appellant did not submit that these means did make a technical contribution of any kind, nor which contribution this could be, but only based the presence of a technical contribution on the field of application, i.e. industrial control. As explained above, the Board is of the opinion that the claimed subjectmatter does not make any technical contribution in this field, and that the limitation to this field of application as such cannot justify the presence of an inventive step. Moreover, the Board cannot see any apparent technical contribution made by said means. [7.5] Thus the Board has no reason to deviate from its provisional opinion expressed in the annex to the summons, according to which the main and auxiliary requests did not involve any inventive step, A 56 EPC 1973. The Board adds that none of the additional features according to the auxiliary requests 2 to 5 filed during the oral proceedings allows to overcome this objection. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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J 13/12 – It’s Time To Get Ahead
K’s Law – The ebook
J 13/12 – It’s Time To Get Ahead 21 Aug 2013
This decision deals with an appeal against the decision of the Legal Division (LD) to resume proceedings that had been stayed. The patent application was about to be granted (communication pursuant to R 71(3) issued on February 20, 2009) when the LD stayed the proceedings as of April 16, 2009, because the Doosan Lentjes company had started entitlement proceedings against the applicant, the Hamon Enviroserv company before the Düsseldorf district court. On June 21, 2011, this court dismissed the complaint. The plaintiff filed an appeal before the Düsseldorf appellate court. The LD then announced that the proceedings would be resumed in view of the length of the proceedings and the fact that the application was about to be granted. The Doosan Lentjes company filed an appeal against this decision. The Board found the appeal to be admissible and then examined its allowability: *** Translation of the German original *** [3] The appellant essentially bases its appeal on the fact that in its decision on the resumption of the stayed proceedings the LD had not sufficiently considered and weighed all the relevant objective circumstances and the interests of the parties but had only followed the judgment of the Düsseldorf district court, which had dismissed the complaint. Based on this the appeal would be allowable if the LD had wrongly exercised its discretion, and, therefore, committed a legal error, by fixing July 1, 2012, as the date on which the grant proceedings – which had been stayed since April 16, 2009 – were to be resumed pursuant to R 14(3) […] or if the factual circumstances have changed with respect to those on which the impugned decision was based such that they now allowed for and required a different assessment of the question of whether the grant proceedings were to be resumed or further stayed pursuant to R 14(1) […]. Has the decision been based on a wrongful exercise of discretion? [3.1.1] First of all it should be noted that the extent to which the Boards of appeal can review discretional decisions of the administrative instance is limited. Insofar as the appellant contests the way in which the LD has exercised its discretion when taking the impugned decision, the case law of the Boards of appeal, which has in principle been confirmed by the Enlarged Board of appeal (G 7/93), has established that it is not the function of a Board of appeal to review afresh the factual situation of the case as if it were in the place of the organ of the administrative instance which has taken the impugned decision, in order to decide whether or not it would have exercised such discretion in the same way. If an administrative organ is required under the EPC to exercise its discretion in certain circumstances it should have a certain degree of freedom when exercising that discretion, without interference from the Board of appeal. A Board of appeal should only overrule the way in which the administrative instance has exercised its discretion if it comes to the conclusion either that the latter has not exercised its discretion in accordance with the right principles or in an unreasonable way, and has thus exceeded the proper limits of its discretion. [3.1.2] As can be seen from the impugned decision, the LD has taken account of both the provisions that are relevant for its decision – in particular A 61 and R 14 – and the relevant case law, in particular G 3/92 and J 33/03; it has realized that it has a discretional power and has weighed the interests of the parties. Thus it is clear that [the LD] did not wrongly exercise its discretion by not making use of its discretional powers.
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[3.1.3] As to an exercise of discretion in accordance with wrong principles, it is necessary to first define the legal framework: [3.1.4] A 61(1) in connection with R 16 governs the procedural rights of a person other than the applicant (a socalled third party) to whom a final decision of a national court has allocated the right to the grant of a European patent in place of the applicant; it offers this person the possibility of carrying out certain required actions related to the application. Insofar as the European patent has not yet been granted (R 16(1)(b)) this third party may, no later than three months after the decision recognising its entitlement has become final (R 16(1)(a)), in respect of Contacting States designated in the EP application in which the decision has been taken or recognised or must be recognised on the basis of the Protocol on Recognition: (a) prosecute the EP application as its own application in place of the applicant (A 61(1)(a)); (b) file a new EP application in respect of the same invention (A 61(1)(b)); or (c) request that the EP application be refused (A 61(1)(c)). [3.1.5] R 14 provides for a stay of the proceedings during the period in which the third party seeks a judicial decision confirming that it is entitled to the grant of the European patent; its purpose is to safeguard the rights of the third party for the duration of the proceedings by which the third party asserts its claims. R 15, which provides that from the date on which a third party provides evidence that it has instituted national proceedings by which the third party asserts its claims and up to the date on which the proceedings for grant are resumed, neither the European patent application nor the designation of any Contracting State may be withdrawn, has the same purpose. [3.1.6] Pursuant to R 14(1), first sentence, if a third party provides evidence that it has instituted proceedings against the applicant seeking a decision within the meaning of A 61(1) the proceedings for grant shall be stayed unless the third party communicates to the EPO in writing its consent to the continuation of such proceedings. [3.1.7] In the present case the grant proceedings were stayed by a communication of the LD dated April 22, 2009, with retroactive effect as of April 16, 2009, as a consequence of the indication of the appellant dated March 24, 2009, and its further written submission dated April 16, 2009. [3.1.8] The fact that the LD did not determine a date on which the examination proceedings were to be resumed when it decided to stay the proceedings does not as such allow to draw conclusions as to the further proceedings. This is because pursuant to R 14(3) the grant proceedings may be resumed even if the EPO had not fixed a date for the proceedings to be resumed in its decision to stay, and before a final decision has been issued in the national entitlement proceedings. [3.1.9] R 14 has to be considered in the context of the EPC as a whole and in particular in connection with A 61, which it further implements, and R 15. As the Board had already explained in its decisions J 7/96 [2.2] and J 8/96 [2.2], these provisions form part of a system of legal process which is provided under the EPC for determining the right to a European patent application when this is in dispute, and for implementing this determination. It is clear from the travaux préparatoires of the EPC that it was considered important to provide such a system in which disputes as to entitlement could be settled by a final decision of a national court but then implemented centrally by the EPO with respect to all the designated States (see document IV/2498/1/61-D, page 17 et seq). The terms of these provisions must be interpreted in this context and in the light of the object and purpose of this system (cf. G 3/92 [1]). [3.1.10] As the Board has decided in its decision J 33/03 [2.1], contrary to the decision to stay the proceedings according to Rule 14(1), it is in the discretion of the Office to decide whether the proceedings are to be continued under R 14(3). When exercising discretion within the framework of R 14(3) the EPO, i.e. the LD and, pursuant to A 111(1), second sentence, also the Board acting within the framework of the competence of the LD, has to weigh the interests of the applicant on the one hand and the third party who has instituted national entitlement proceedings against the applicant on the other hand. In this context the EPO has to consider in particular the purpose of A 61, which is directed at a “well-balanced and fair resolution of conflicting interests” (G 3/92 [8.4]). The Guidelines for Examination, which are internal Guidelines issued by the administration, may be used as a complement. [3.1.11] According to the Guidelines developed for the application of R 14(3) in concrete cases, the Guidelines for Examination A IV-2.3:
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“If a date is set for the resumption of the proceedings for grant, it should be chosen with due consideration for the interests of the third party who only becomes a party to the proceedings after a judgement has been given in his favour, on the basis of the probable duration of the court proceedings so as to enable them to be concluded within that period of time. If, by the date set, the court has not given a judgement, the proceedings for grant must at all events be further stayed if the judgement is expected in the near future. However, the proceedings for grant should be resumed if it is evident that delaying tactics are being employed by the third party or if the proceedings in the court of first instance have concluded with a judgement in favour of the applicant and the legal procedure is extended by the filing of an appeal.” [3.1.12] These internal administrative provisions do not support the appellant’s allegations concerning the conditions for resuming the grant proceedings and in particular do not support the legal consequences it seeks to obtain. Rather, the LD has appreciated all relevant circumstances of the case in a way that does not allow to conclude that it has wrongly exercised its discretion. [3.1.13] In particular, it is not wrong, but it rather follows from the internal administrative provisions of the EPO (Guidelines for Examination) that the LD has not issued a separate communication setting a date for the grant proceedings to be resumed before the order to resume the grant proceedings. The LD was entitled to do so for the first time in the impugned decision. [3.1.14] Nor can it be derived from the Guidelines for Examination that the LD has to wait for a final decision in the entitlement proceedings, possibly after all possible remedies have been exhausted (first instance, appeal, and review proceedings) or at least for the end of the appeal proceedings, before it can fix a date for the resumption of the grant proceedings, and in any case before the proceedings are actually resumed. [3.1.15] It is part of the circumstances that the LD has to take into account (and which it has indeed taken into account) that a third party may indeed only exercise its procedural rights pursuant to A 61(1) if there has been a decision to its favour in national proceedings according to which the applicant was not entitled to a patent application, but this does not necessarily mean that the grant proceedings relating to the patent application of the person that was not entitled has to be stayed or remain stayed until that date. Rather, the rights of the third party are not only protected by possibility for it to prosecute said European patent application as its own application in place of the applicant who lacked entitlement (A 61(1)(a)) but also by the possibility to file a new European patent application in respect of the same invention (A 61(1)(b)). The admission of this new application is not limited to the case where the former, irregular application is still pending before the EPO (cf. G 3/92 [headnote]) in case the application has been withdrawn or is deemed to have been withdrawn. Moreover, even after the Examining Division has decided to grant a patent application filed by an applicant who was not entitled, the entitled third party can exercise its right pursuant to A 61(1)(a) until the formal end of the grant proceedings pursuant to A 97(3) and A 98 and prosecute the European patent application as its own application in place of the applicant who lacked entitlement (cf. J 7/96 [9], J 8/96 [9]). Insofar as the pursuit of the grant proceedings curtails the procedural rights of the third party, it puts an end to the strong legal position of the third party. However, in the present case possible serious consequences for the appellant are due to the fact that it has instituted entitlement proceedings and filed the request for a stay of the proceedings only at a very late stage of the grant proceedings, i.e. after the communication pursuant to R 71(3) to the applicant, although it was aware of the [existence of the] application. As a matter of fact the third party that prosecutes the EP application as its own application pursuant to A 61(1)(a) takes on the application in the procedural stage in which it was at the time when the proceedings were stayed. This also applies to the impending loss of right to file divisional applications according to the presently applicable provisions for divisionals, which was mentioned in this context by the appellant. Thus the fact that this circumstance was not taken into account cannot constitute a wrongful exercise of discretion. [3.1.16] Nor can such a wrongful exercise of discretion be constituted by the consideration of the LD that the entitlement proceedings were unsuccessful for the appellant, at least at first instance. The Guidelines for Examination precisely refer to the case where the judgement is in favour of the applicant – and to the detriment of the third party – who then files an appeal as an example for a situation where the stayed proceedings are continued. [3.1.17] Insofar as the appellant asserts that the decision of the Düsseldorf district court to dismiss its complaint was mistaken and that it was likely to succeed in the appeal which it had filed, these submissions cannot be taken
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into account in the grant proceedings in general and in particular in the present appeal proceedings (cf. J 33/03 [2.2]; Benkard-Melullis, EPÜ, 2nd edition, 2012, A 61, marginal number 21). Only the national courts have jurisdiction to decide claims, against the applicant, to the right to the grant of a European patent (Article 1(1) of the Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent (Protocol on Recognition)). Moreover, neither the LD nor the Board can decide to which party the European patent application might belong or which outcome of the national entitlement proceedings is more likely. Thus the only aspect that can be taken into account when weighing the interests (and which was indeed taken into account by the LD) is that the entitlement proceedings instituted by the appellant against the respondent has not led to a final decision yet but is still pending as an appeal, which – in view of the previous procedural behaviour of the parties – might be followed by review proceedings before the Federal Supreme Court (Bundesgerichtshof). At least a reasoned judgement of a competent German court that has been issued after inter partes proceedings (im streitigen Verfahren) militates against the claims (Klagebegehren) of the appellant. It is not foreseeable that the appellant will finally succeed in the entitlement proceedings, nor is it foreseeable when there will be a final decision on the entitlement proceedings (before the appellant court or possibly even in review proceedings). Thus a prolongation of the stay of the grant proceedings according to the main request (as well as the first auxiliary request) of the appellant would lead to an indefinite delay of the grant proceedings and thus to a disproportionate disadvantage for the appellant. [3.1.18] Finally the LD was entitled to – and even had to – take into account that the grant proceedings had been stayed for more than three and a half years (cf. J 10/02 [4.1] where the importance of the duration of the stay was underlined). This fact alone affects the interests of the respondent in a speedy treatment of its application in a significant way; a further stay of the grant proceedings would correspond to a disproportionate burden for the respondent that cannot be justified by the interests of the appellant. [3.1.19] Insofar as the appellant has asserted that the fact that the examination proceedings were quite advanced, as can be seen from the fact that there had already been a communication pursuant to R 71(3), and that, as a consequence, a grant of the patent could be expected very soon, would hinder it from asserting its rights, this aspect has also been explicitly considered by the LD (point 8 of the impugned decision). [3.1.20] Thus the Board of appeal is unable to find any error committed by the LD in the exercise of its discretion when it issued the impugned decision. [3.2] As to new circumstances which could now justify a different assessment of the question of whether the proceedings were to be stayed by the Board of appeal, the appellant essentially refers to a change of the provisions governing divisional applications as well as to the fact that once the patent was granted, it could only assert its claim to entitlement under more difficult circumstances in each state designated by the patent. [3.2.1] However, the Board of appeal cannot see – although it has asked [the appellant] in its summons to oral proceedings – how the legal position of the appellant could have changed to its detriment since the impugned decision has been issued; as a matter of fact only if and to the extent that this was the case the Board of appeal could take a decision that was not limited to the review of discretional decisions. Rather these circumstances are circumstances that already existed at the time of the impugned decision which, therefore, were already addressed by the discretional decision, which, as mentioned above, was free from error. [3.2.2] Nor can the Board of appeal discern any new circumstances which have arisen after the impugned decision was issued and which would justify or require a prolongation of the stay of the grant proceedings pursuant to R 14. Both parties have confirmed that the appeal proceedings before the Düsseldorf appellate court were pending and that one could not expect a judgement, let alone a final decision, in the entitlement proceedings in the near future. The investigations of the Public Prosecutor (staatsanwaltschaftliche Ermittlungen) as such do not provide sufficient indications that would allow to draw the conclusion that the position of the respondent was unlawful, all the more as the EPO and the Boards of appeal have no jurisdiction for assessing the chances of success of the national lawsuit and the investigations of the Public Prosecutor. Finally, the Board of appeal has no jurisdiction for assessing the pieces of circumstantial evidence cited by the appellant, which it believed were sufficient for establishing an unlawful behaviour of the respondent and its entitlement […]. Only the national authorities (court, public prosecutors) have jurisdiction in this regard.
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[3.2.3] Moreover, the discretionary considerations mentioned by the LD and taken into account by it still apply; the Board of appeal, considering all relevant circumstances and the interests of the parties both from a factual and a legal point of view, comes to the conclusion that the stay of the grant proceedings should not be prolonged and that the proceedings should be resumed. […] The appeal is dismissed. […] The grant proceedings are to be resumed as soon as this decision is announced (June 17, 2013). It
is
interesting
to
see
how
important
the
Guidelines
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become
in
this
context,
isn’t
it?
T 1979/11 – Exceptionally Broad
K’s Law – The ebook
T 1979/11 – Exceptionally Broad 20 Aug 2013
In this case only the opponent appealed against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. In what follows the Board discusses the admissibility of the main request and confirms one exception from the principle prohibiting reformatio in peius. [2.1] Claim 1 of the main request as found allowable by the OD referred to a process for the preparation of methionine granules wherein the granules are characterised by a certain bulk density and a certain particle size distribution […]. Claim 1 of the present main request differs from this claim in that the particle size characteristic of the granules has been deleted […]. Claim 1 of the present main request is thus broader than claim 1 of the main request as allowed by the OD. In the appellant’s view, due to this broadening, the present main request violates the principle of the prohibition of reformatio in peius. The appellant therefore requested that this request should not be admitted into the proceedings. The board acknowledges that the broadening of a claim effected by a proprietor/respondent in appeal proceedings is generally contrary to the principle of the prohibition of reformatio in peius. However, in the present case, the broadening of claim 1 by the deletion of the particle size characteristic is a reaction of the respondent to the appellant’s objection under A 83. This objection had not been made during the opposition proceedings but has been raised for the first time in the statement of grounds of appeal […]. As outlined in G 1/99 [12-14], it would not be equitable to allow the appellant/opponent to present a new attack and at the same time to deprive the proprietor/respondent of a means of defence. Even though G 1/99 specifically addressed a reaction of the proprietor to an error of judgement by the OD concerning the allowability of an amendment, the equity approach as outlined by the Enlarged Board of Appeal is not limited to the situation specifically dealt with in G 1/99. On the contrary, it covers, in addition to an error of judgement by the OD, other situations involving a change of the factual and/or legal basis on which limitations have been made by the proprietor prior to the appeal by the opponent as the sole appellant (T 1843/09 [2.4.3-4]). Hence, the present situation, in which the broadening of the claims results from a reaction of the respondent to an objection raised by the appellant for the first time in the appeal proceedings, justifies a deviation from the principle of the prohibition of reformatio in peius. This principle thus does not speak against the admittance of the main request into the proceedings. [2.2] The only further argument made by the appellant as regards the admissibility of the main request was that no reasons for the filing of this request were given and hence the appellant was not able to properly react to this request. However, the respondent has merely deleted the particle size characteristic which had been objected to by the appellant and by the board in its preliminary opinion. It was thus self-evident that the reason why this amendment was made was to overcome the appellant’s and the board’s objections. [2.3] The board therefore decided to admit the main request into the proceedings. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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J 18/12 – Penniless
K’s Law – The ebook
J 18/12 – Penniless 19 Aug 2013
This decision concerns the fate of an international application that should have entered the European phase on December 6, 2011. As the applicant did not take any action, the EPO issued a communication of loss of rights on January 13, 2012. By letter dated March 2, 2012, the applicant requested interruption of the proceedings under R 142(1)(b) EPC. The applicant submitted that a County Court Judgment by the Northampton County Court (“the CCJ”) had been issued on August 11, 2008 – erroneously – against the applicant, which judgment the applicant had not been aware of. This circumstance only surfaced much later when the applicant company had applied for a bank loan, which had been refused due to the company’s adverse credit rating, this latter being the direct consequence of the CCJ. The applicant, not having been able to raise sufficient funds, had not been able either to enter the regional phase before the EPO. The Legal Division (LD) of the EPO refused to interrupt the proceedings. It held that neither the CCJ nor the refusal of the loan application could be considered to be an action against the property of the applicant. Further, it had not been shown that the applicant had been prevented by legal reasons from acting, in the sense that it had not been shown that the applicant had been in a situation in which it had been factually and legally impossible for it to continue the proceedings. The applicant filed an appeal. It argued that all the conditions for an interruption as established by the case law of the Boards of Appeal were given. Though the fee payment would not have been legally impossible, the appellant actually had been unable to pay, and this actual inability to pay had been a direct consequence of the CCJ, clearly a legal action against the appellant company. Evidence was presented that the inability to pay had not been limited to the EPO fees, but to all other financial obligations of the company, so that it had indeed been factually and legally impossible to continue the proceedings before the EPO. The applicant further submitted that the present case was highly exceptional in that the legal action had been erroneously issued against the appellant company, due to similar company names. In this manner the applicant was a victim of a miscarriage of justice. The EPO had a wide discretion in establishing whether an interruption occurred. This exceptional circumstance had to be given weight, given its disastrous and unjust effect on the applicant. Interruption of proceedings [2] R 142(1)(b) provides that: Proceedings before the EPO shall be interrupted … in the event of the applicant (condition A), as a result of some action taken against his property (condition C), being prevented by legal reasons (condition B) from continuing the proceedings. [3] An examination of the question of interruption based on these three conditions A, B and C was developed by the Legal Board in its decisions J 9/94 and J 10/94. These criteria are helpful whenever the applicability of the rule is not immediately apparent. The cases underlying decisions J 9/94 and J 10/94 concerned a situation in which the action – an order by a French Court to freeze the accounts of the appellant company – at least formally did not affect the legal capacity of the appellant. Otherwise the freezing of the accounts resulted de facto in the insolvency of the appellant company. To that extent, there are certain similarities to the case before the Board. Given that the appellant also argues along these lines, the present Board finds the examination of these three conditions to be a suitable approach in determining whether the interruption of the proceedings should be established in the present case. [4] The three conditions A,B and C were also examined by the LD following the ratio decidendi of the aforementioned decisions J 9/94 and J 10/94. The LD concluded that neither condition B nor C was met, and that therefore the proceedings were not to be interrupted under R 142(1)(b). [5] The Board essentially concurs with the opinion of the LD that neither condition B nor condition C is met in the present case, i.e. the chain of events presented by the appellant cannot be subsumed under the conditions required by R 142(1)(b) in order to establish that the proceedings were interrupted.
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[6] The present case hinges on the question whether the factual and legal impossibility of continuing the proceedings, i.e. that the party was prevented from continuing, can be considered to be the result of the legal action (condition C). The appellant contends that this is the case, because the CCJ was undoubtedly the cause of the adverse credit rating, which then directly resulted in the appellant company being left without any financial means. [7] This Board holds that the correct interpretation of R 142(1)(b) requires there to be a close relationship between the action taken against the property of the applicant and the condition that this action should be the cause of the applicant being prevented by legal reasons from continuing the proceedings (in the English wording of the Rule: “as a result of some action …”). This requirement of causality between conditions B and C is normally fulfilled only if the “action” is a legal action (which does not appear to be disputed in the present case), and it is directed against the property of the applicant (Vermögen, biens) as a whole, i.e. against the totality of the applicant’s assets (such as a company going into receivership, etc.). Put differently, the legal action is not just any action having some, even serious, effect on the financial situation of the applicant, but must be one with a legal effect which directly and immediately prevents the applicant from proceeding, effectively causing a situation which is comparable to the legal incapacity or death of natural persons (R 142(1)(a)). Typically, the fact that the legal action is directed against the totality of the assets will be clear from the legal effect of the legal action, such as the legal effect of a court order, or an order issued by some other legal authority. [8] In the present case, it is clear that the legal action, the CCJ, was not at all directed against the totality of the assets of the appellant, but merely ordered the payment of a specified amount (GBP 520.72, for an only partially paid invoice of a public utility company and related costs). It did not have any other legal effects. The fact that the CCJ was erroneously issued against the appellant company is immaterial for this finding. Likewise, the separate decisions of two banks to refuse the opening of a credit line cannot be regarded as an action with a legal effect, even if their other related effects may well have had a bearing, even a significant one, on (the future fate of) the property of the appellant. The refusal of a loan application does not alter the legal situation of the appellant. At most, it makes clear that for it as a potential client no legal effects, such as contractual obligations of the client towards the bank, came into existence. In particular, it has no legal effect on the (existing) property of the customer. Nor is the legal character of such a loan application refusal established by the fact that a bank may offer a possibility of “appealing” the decision […], such an “appeal” apparently resulting in a further internal review by the bank, but not in genuine legal proceedings. [9] Thus the LD was correct in finding that neither the CCJ nor the rejection of the loan application could be considered to be an “action” falling under R 142(1)(b), in the sense that neither of these actions can be considered an action taken against the property of the applicant. In the absence of such an action, R 142(1)(b) cannot be applied. [10] Contrary to the opinion of the appellant, neither the LD nor the Board of Appeal has any discretion in the application of R 142(1)(b), but is rather obliged to interpret the rule on an objective basis and to apply it to the facts before it. Accordingly, there is no room to compensate the appellant for injustice suffered by means of a generous application of this rule, however exceptional its situation may be. [11] Under these circumstances, the question whether the applicant was prevented by “legal reasons” from continuing the proceedings, i.e. whether its difficult financial situation indeed amounted to legal and factual impossibility per se and whether this was sufficiently proven, need not be answered. Even if this were to be accepted for the benefit of the appellant, such legal impossibility would not have been caused by the presumed “action” as required by R 142(1)(b), but by the fact that from the outset the appellant did not have the financial means to continue the proceedings. Reimbursement of the appeal fee [12] In his response to the communication of the Board […], the representative submitted that either the LD was wrong to refuse the request for interruption, which then amounted to a substantial procedural violation, or, if the LD was correct, this effectively meant that the European patent application never came into existence, so that the appeal fee could not have been validly paid. [13] Neither of these arguments can justify a reimbursement of the appeal fee. Reimbursement is primarily granted if the appeal is allowed (R 103(1)(a)), and this is not the case here. Furthermore, no special circumstances are apparent to the Board which could support the reimbursement even though the appeal is not allowed.
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J 18/12 – Penniless
K’s Law – The ebook
The final non-existence of the European patent application in a substantive sense is not relevant, and does not mean in itself that the appeal proceedings did not come into existence either (as opposed to the legal fiction of non-existence when an appeal is deemed not to have been filed, see A 108, second sentence). In fact, this situation regularly arises in proceedings before the EPO, e.g. where a decision of the Receiving Section not to accord a filing date is appealed. [14] Accordingly, the request for the reimbursement of the appeal fee cannot be allowed. […] The appeal is dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 208/11 – Just Pondering
K’s Law – The ebook
T 208/11 – Just Pondering 16 Aug 2013
This decision deals with an allegedly late-filed ground for opposition. *** Translation of the German original *** [2.1] According to its own statements, the [opponent] has raised the ground for opposition pursuant to A 100(c) for the first time during the oral proceedings (OPs) before the Opposition Division (OD). However, this submission is not mentioned in the impugned decision or in the minutes of the OPs. The [opponent] has requested a correction of the minutes, but the OD has dismissed this request in its communication dated December 14, 2010. This communication shows that the OD was of the opinion that the [opponent] had neither made a “formal” request nor submitted detailed arguments supporting [the ground for opposition] and that it was for that reason that it decided to dismiss the request. [2.2] According to the declaration in lieu of oath by Dr A. (D33), who had accompanied the professional representative to the OPs, “the request was dismissed by the chairman and the introduction of the ground for opposition into the proceedings was not admitted”. The representative of the [patent proprietor], who had also taken part in the OPs, has not contested that the [opponent] had raised the new ground for opposition. He only declared that he could not recall the details of the discussion. [2.3] In view of this situation, considering the facts and the evidence, the Board of appeal has come to the conclusion that the ground for opposition pursuant to A 100(c) has been raised during the OPs but that the OD has exercised its discretional power pursuant to A 114(2) and decided not to admit this objection. [2.4] The argument of the [patent proprietor] according to which it was not possible to introduce new grounds for opposition after the expiry of the time limit for filing an opposition is not in line with the established case law of the Boards of appeal (see G 9/91 [16]), according to which under certain circumstances the OD may, in application of A 114(1), consider a ground for opposition raised by the opponent after the expiry of the time limit for filing an opposition or even introduce a new ground of its own motion. It is true that in the present case the OD has not made use of this possibility, but this does not alter the fact that the new ground for opposition pursuant to A 100(c) was adduced during the opposition proceedings and, therefore, does not constitute a new ground that had been put forth for the first time during the appeal proceedings (cf. T 986/93 [2.4]). [2.5] In its decision G 9/91 mentioned above the Enlarged Board of appeal has defined the conditions for an examination of grounds for opposition invoked after expiry of the time limit for filing an opposition by stating that there had to be prima facie relevant reasons for the grounds for opposition to be relevant and [that those reasons] would make it impossible to maintain the patent in its entirety or partly. In the present case the amendment concerns a feature that is not disclosed in the original application as filed. The [opponent] has provided credible reasons […] that there is no support for this amendment in the application. The Board is of the opinion that the ground for opposition pursuant to A 100(c) to be prima facie very relevant. The Board may take into account a ground for opposition which the OD has not admitted in application of A 114(2) if [the Board] is of the opinion that the OD has exercised its discretion wrongly (cf. T 986/93 [2.4] and T 620/08 [3.4]). In the present case neither the impugned decision nor the minutes of the OPs before the OD contain indications regarding the new ground for opposition or its dismissal, so that it is not clear according to which criteria the OD has exercised its discretion. The communication […] dismissing the requested correction of the minutes only refers to formal criteria such as a corresponding request or a lack of substantiation. It does not mention factual criteria that led to the dismissal of the new ground. Apparently the OD has not examined the question as to whether the new ground is to be considered prima facie relevant or not. Thus the decision of the OD not to take into account the new ground was not taken in a correct way. In view of these circumstances and the fact that the Board considers the new ground for opposition to be prima facie very relevant, this ground is taken account of in the proceedings. For the sake of efficient proceedings and with the approval of the parties the Board has decided to decide itself on this ground within the framework of its powers under A 111(1). 261 | 3398
T 208/11 – Just Pondering
K’s Law – The ebook
As you might have guessed, the requests were found not to comply with A 100(c) / A 123(2) and the appeal was dismissed. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1331/12 – Another Slot Machine
K’s Law – The ebook
T 1331/12 – Another Slot Machine 15 Aug 2013
Gaming and gaming rules are a rich source of Board of appeal case law. Claim 1 of the main request before the Board read as follows: A slot machine system, comprising: (a) a client apparatus (20) operable to communicate a bet regarding a spin of the reels of a slot machine; and (b) a controller apparatus (40) communicably coupled to the client apparatus (20) and operable to determine values for said reels and to determine the output of a bet based upon said values; characterised in that the controller apparatus (40) is operable to: (i) determine a first value for a first reel of the slot machine based at least in part upon the value of a digit of a first financial market indicator, in which said value of said digit is the value thereof that occurs at the moment when a predetermined period of time has passed after receiving the bet; (ii) determine a second value for a second reel of the slot machine; (iii) determine a third value for a third reel of the slot machine; and
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T 1331/12 – Another Slot Machine
K’s Law – The ebook
(iv) determine the outcome of the bet based at least in part upon the first value, the second value, and the third value. (my emphasis) Background [2.1] The present invention concerns a slot machine system which allows a user to play a betting game by placing a bet on a spin of reels of a slot machine. The idea of placing a bet on a spin of reels of a slot machine concerns a game rule. Thus the system of claim 1 includes aspects of schemes, rules or methods for playing games, which are per se excluded from patentability under A 52(2)(c). However, the claimed system also includes technical aspects, in particular the client apparatus and controller apparatus comprised in the slot machine system. The claimed system therefore possesses overall technical character (following T 258/03), even if it is “mixed” (with both technical and non-technical aspects). [2.2] In dealing with such “mixed” inventions, the Board adopts the approach as set out in T 1543/06 [2.1-9], which is based foremost on T 641/00. Thus, only those features that contribute to technical character are to be taken into account when assessing inventive step. That requirement cannot rely on excluded (non-technical) subject matter alone however original it may be. The mere technical implementation of something excluded cannot therefore form the basis for inventive step. A consideration of the particular manner of implementation must focus on any further technical advantages or effects associated with the specific features of implementation over and above the effects and advantages inherent in the excluded subject-matter. In the present case it is necessary to consider what claimed aspects are non-technical, how they have been technically implemented, and whether such implementation is inventive over the prior art. [2.3] “Game rules” form part of “……a regulatory framework agreed between [or with] players and concerning conduct, conventions and conditions that are meaningful only in a gaming context. It is important to note that it is normally so perceived by the players involved, and as serving the explicit purpose of playing a game. As such an agreed framework it is a purely abstract, mental construct, though the means for carrying out the game play in accordance with such a set may well be technical in nature”. See T 336/07 [3.3.1]. As noted in T 12/08 [4.6], game rules “form the abstract formal structure of a game describing the interplay between player actions and the choices offered within the game.” A set of game rules thus determines inter alia how game-play evolves from beginning to end in response to player actions and decisions and the goals to be achieved to conclude game-play. Inventive step [3.1] It is undisputed that a notorious slot machine system comprising a client apparatus and a controller apparatus, whereby the controller apparatus is communicably coupled to the client apparatus, can be considered as the closest prior art. For the skilled person, a game system developer with software engineering skills, such a notorious system thus represents a good starting point for assessing inventive step. [3.2] With respect to such a notorious prior art system, the system of claim 1 differs only in the way in which the first value for the first reel of the slot machine is determined, as defined in feature (i) of the claim according to the main request concerning the determination of the first reel value based on a future financial market indicator. Claim 1 of the auxiliary request differs by the further specification that the time at which the future indicator is determined is identified in the bet. The further features (ii) to (iv) of the characterizing part of either version of claim 1 - determining spin reel values for second and third reels, determining the bet outcome on the basis of the three values - are standard if not implicit features of a notorious client controller slot machine system. Naturally such systems determine reel values and bet outcomes. None of these features, including the specific number of reel values, is of any particular significance, either in their own right or in relation to feature (i), nor has this been argued. Features (ii) to (iv), if novel, are thus obvious. [3.3] In accordance with the application as published, one of the objects of the invention is to increase player appeal by providing a new playing experience to the user […]. This is achieved because, from the player’s perspective, he is not playing a conventional slot machine game but one which involves betting on a digit of a financial market indicator at a point of time in the future he determines by placing his bet. He does so knowingly by specifying, when he places his bet, “the period of time used to determine the appropriate financial market indicator”, as well as “a particular digit of [the] … indicator” and “one or more financial instruments used to determine [the] … indicator” as bet parameters […]. He may also specify the relevant financial market indices, e.g. DJIA, S&P 500 or NASDAQ […]. He thus knowingly bets against a financial market indicator (or rather digit thereof) at a time in the future that he chooses via the intermediary of a (simulated) spin reel of a slot 264 | 3398
T 1331/12 – Another Slot Machine
K’s Law – The ebook
machine. In the Board’s view this constitutes a new betting scheme or game. A set of betting rules and conventions of this new betting game can be formulated as follows:
place a bet by indicating a particular digit of a selected financial market indicator and a period of time (after the bet is placed) when the indicator should be determined determine the value of the financial market indicator at the time indicated in the bet and display it as the value of the first spin reel of the slot machine determine the outcome of the bet based on this value.
Adopting the approach outlined above, inventive step can reside only in the way these betting rules are implemented. The technical aspects of the feature (i) reflect the implementation of the game rules, namely that they are implemented by operating the controller apparatus. The objective technical problem can therefore be formulated as how to implement the above game rules on a notorious slot machine game system comprising a client apparatus and a controller apparatus. [3.4] The Board holds that it would be obvious for the skilled person to use the controller apparatus available in the notorious slot machine system to implement the above game rules. Indeed, in an electronic gaming system such as a notorious slot machine with client and controller, it is standard that the controller – usually in the form of a programmable central processor – regulates game play, ensuring game inputs and outputs are as dictated by the game rules. In this case, the game rules and conventions dictate that the specified digit of the selected financial market indicator is determined at expiry of the chosen period of time and that the value is then displayed on the spin reel and this is exactly what the controller is configured to do. It is then obvious that the skilled person, tasked with implementing the new betting game on a notorious slot machine, would assign that particular task to the controller. The Board adds that the claim offers no further details as to how the implementation is carried out. Feature (i) is thus also obvious for the skilled person. As it is unrelated to the features (ii) to (iv) also held to be obvious, if novel, the Board concludes that the claimed subject matter lacks an inventive step and thus fails to meet the requirements of A 52(1) in combination with A 56. [3.5] The fact that this new betting system may be less susceptible to tampering than a slot machine system using a random number generator to generate the spin reel numbers is immaterial. This effect can neither form the basis for formulating the objective technical problem addressed by the invention, nor does it represent a further technical effect in the sense of T 1543/06 [2.8]. In particular, the claimed system is less susceptible to tampering because it changes the betting scheme so that bets are not placed against randomly generated numbers but against a future financial market indicator. This is not a technical effect that results from the particular way in which the game rule is implemented, it is rather a direct and inevitable consequence of the betting game having been changed. The rules are changed and the random number generator can be dispensed with. The claimed invention therefore does not address the problem of tampering in random number generators in an inherently technical way – for example by modifying its mechanism to be less susceptible to tampering. Rather, it offers a non-technical gaming solution which effectively circumvents the technical problem by changing the rules, thereby obviating the need for the random number generator, similar to T 258/03 [5.7]. However ingenious this gaming idea may be, it cannot contribute to inventive step in the sense of A 56. That requirement is a technical requirement to be assessed from the point of view of the skilled person in the relevant technical field. Here that is the software engineer or designer specialising in gaming software who is tasked by the games designer with implementing the new game. From his point of view the way the game rules are implemented in claim 1 of either request, namely by having the game controller carry out the tasks of the betting authority in such a betting scheme, is obvious. For the same reasons the Board does not consider the claimed invention to offer an alternative “simulated randomizing device” to the random number generators commonly used in client controller based slot machine systems. This argument might have held if the betting scheme operated by the system remained the same, i.e. the player placed the same bet as before. This is not the case, as the bet parameters above indicate. It is thus the betting scheme which has changed, necessitating a different operation of the controller. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1069/11 – A New Use
K’s Law – The ebook
T 1069/11 – A New Use 14 Aug 2013
In this examination appeal case, the Board dismissed the main request because there were too many independent claims, in violation of the requirements of R 43(2). Claim 1 of the first auxiliary request read: 1. Stent for use in prevention of restenoses of a wall (3) of a blood vessel having atheromatous plaque consisting of a multilayer braided framework (13) wherein the framework, devoid of any cover layer, comprises a plurality of stabilized layers (14, 15, 16) of biocompatible metal wires (17), which are interlaced, forming a lattice, a plurality of wires (17) of a given layer (14, 15, 16) being integrated in the lattice of at least one of the adjacent layers; characterized in that: the mechanical characteristics of the stent are so that, when deployed in the vessel, an outermost layer (14) is able to rest against the vessel wall (3) and the other layers are able to extending [sic] substantially along cylindrical surfaces distinct from the outermost layer (14), so as to form a multi-layer mat so designed that the combined effect of the various layers locally affects the haemodynamic of a flow of blood passing along said mat, the flow of blood being deviated towards an inner face of an innermost layer and and [sic] provoking a drop of the pressure exerted on the vessel wall, thus preventing the growth of plaques on said vessel wall and promoting the growth of a new layer of endothelial cells. The Board found this claim to lack novelty: [3.1] D1 discloses a stent consisting of a multilayer braided framework (6) wherein the framework, devoid of any cover layer, comprises a plurality of stabilised layers (8, 10, 12) of biocompatible metal wires (14), which are interlaced, forming a lattice, a plurality of wires of a given layer being integrated in the lattice of at least one of the adjacent layers (abstract). [3.2] It is true that D1 does not disclose that, once the stent is deployed in the vessel, its outermost layer rests against the vessel wall and the other layers extend substantially along cylindrical surfaces distinct from the outermost layer, so as to form a multi-layer mat so designed that the combined effect of the various layers locally affects the haemodynamic of a flow of blood passing along said mat, the flow of blood being deviated towards an inner face of an innermost layer and provoking a drop of the pressure exerted on the vessel wall, thus preventing the growth of plaques on said vessel wall and promoting the growth of a new layer of endothelial cells. [3.2.1] However, claim 1 is directed to a stent as such. Therefore, these features, which relate to the stent while in use, must be construed as meaning merely that the stent is suitable for realising them once deployed. [3.2.2] The appellant submitted that they are the result of mechanical characteristics of the claimed stent which are not disclosed in D1. However, it could not indicate which specific mechanical characteristic or characteristics distinguished it from the prior-art stent. [3.2.3] Nor does the application in suit give any indication as to what this characteristic or these characteristics may be. On the contrary, a comparison of Figure 3 and paragraphs [0028] to [0030] of the application in suit and Figure 2 and paragraphs [0017] to [0019] of D1 reveals that the geometry, materials and materials treatment of the stent disclosed as a preferred embodiment in the present application are the same as those of the stent disclosed in D1.
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T 1069/11 – A New Use
K’s Law – The ebook
As a matter of fact, the applicant itself acknowledged that the claimed invention is based on the discovery of a completely different field of application of the same structure known from D1 […]. [3.2.4] Since no difference in terms of mechanical characteristics can be seen between the stent of claim 1 and the stent known from D1, the latter stent must necessarily be intrinsically suitable for satisfying the requirements set out in the characterising portion of claim 1 of auxiliary request 1. [3.3] The appellant submitted that novelty of the subject-matter of claim 1 should be acknowledged also on the basis of its medical indication, i.e. the fact that the stent is “for use in prevention of restenoses of a wall of a blood vessel having atheromatous plaque”. [3.3.1] The only provisions of the EPC which foresee that the novelty of a product can be acknowledged on the basis of its medical indication are A 54(4) and (5). According to A 54(4), it is possible to acknowledge the novelty of a “… substance or composition, comprised in the state of the art, for use in a method referred to in A 53(c), provided that its use for any such method is not comprised in the state of the art” (emphasis added). According to A 54(5), it is also possible to acknowledge the novelty of a “… substance or composition referred to in paragraph 4 for any specific use in a method referred to in A 53(c), provided that such use is not comprised in the state of the art” (emphasis added). A 53(c), to which both A 54(5) and A 54(5) refer, provides that European patents are not to be granted in respect of “methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods” (emphasis added). [3.3.2] It can thus be seen from the text of those articles that there is an explicit difference between the wording chosen by the legislator for A 53(c) and the wording of A 54(5) and (5). First of all, as a consequence of the use of the expression “in particular”, A 53(c) in itself indicates that products are not limited to substances or compositions. Moreover, whereas A 53(c) mentions products, in particular substances or compositions, A 54(5) and A 54(5) only mention substances or compositions.
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T 1069/11 – A New Use
K’s Law – The ebook
The legislator has thus made a distinction between products that can qualify as substances or compositions, and which are patentable within the framework of A 54(5) and (5), and other products, which do not fall under the exceptions provided by those provisions (see also T 1099/09 [3.3]). [3.3.3] This finding is not at variance with decision G 2/08, which deals with the patentability of substances and compositions that are already known as medicaments (see questions referred to the Enlarged Board of Appeal under I.1.2 of the Summary of Facts and Submissions and the corresponding answers in the Order) and does not consider the patentability of products which do not qualify as substances or compositions. [3.3.4] Nor does the passage of the travaux préparatoires of the EPC 1973 cited by the appellant (BR/ 219 e/72 ico/PA/gc, §30, second paragraph) suggest a different interpretation of the provisions of A 54(5) and (5). It is true that that passage states that the patentability of medical equipment should not be prejudged. However, it does not stipulate that said patentability can be acknowledged on the basis of the medical indication of those devices. [3.3.5] Accordingly, the novelty of the product of claim 1 can be acknowledged on the basis of its medical indication only if that product qualifies as a substance or a composition. However, the claimed product is a stent consisting of a multilayer braided framework devoid of any cover layer. Accordingly it is a finished product having a certain shape and certain dimensions and which does not comprise any active ingredient. Hence, the claimed stent does not qualify as a substance or a composition. [3.3.6] Decision T 227/91 does not contain any hint to the contrary. That decision is concerned with Swiss-type claims and, though it states that medicaments are expended in the process of use and have only a once-and-forall utility (point [5.2] of the Reasons), fails to define all the conditions necessary for a product to qualify as a medicament, let alone a substance or a composition. [3.4] Therefore, the provisions of A 54(5) and (5) do not apply to the claimed stent. Accordingly, its novelty cannot be acknowledged on the basis of its medical indication (use in the prevention of restenoses in a blood vessel having atheromatous plaque) either. [3.5] Therefore, the subject-matter of claim 1 of auxiliary request 1 lacks novelty with respect to D1. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 738/10 – A Missing Verb
K’s Law – The ebook
T 738/10 – A Missing Verb 13 Aug 2013
This appeal was filed after the Opposition Division had rejected the opposition against the patent under consideration. Claim 1 of the main request (identical to claim 1 as granted) read: A process for preparing a 3-functionalized propylsilane by addition of an allyl compound of the general formula H2C=CH-CH2X where X is selected from the group consisting of Cl, Br, I, F, CN, SCN, SH, SR, OH, NRR 1 and OR and R and R1 are each independently (C1-C6)-alkyl or (C3-C7)-aryl, onto a silane of the formula R2R3R4SiH where R2, R3 and R4 are each independently selected from the group consisting of hydrogen, halogen, (C1-C6)alkyl, (C1-C6)-haloalkyl, (C3-C6)-allyl, (C1-C4)-alkoxy, phenyl, aryl and aralkyl, at a reaction temperature in the range from 0°C to 200°C and at a pressure in the range from 200 m bar to 10 bar in the presence of a catalyst, characterized in that the catalyst is a supported multi-element catalyst [? – the verb is missing from the German claim] an activated carbon, coke or graphite support, platinum and at least one further element selected from the group consisting of titanium, zirconium, hafnium, vanadium, chromium, molybdenum, tungsten, manganese, rhenium, iron, ruthenium, osmium, cobalt, rhodium, iridium, nickel, copper, silver, gold, cobalt, zinc, aluminium, gallium, indium, tin, lead, antimony, bismuth, samarium and sulphur. Board 3.3.01 had to examine compliance with A 100(c): *** Translation of the German original *** [3.1] According to the communication of grant dated October 11, 2004, the verb “containing” is absent from the specification of the patent in suit. The OD has expressed the opinion that, considering the entire text of the claim as well as paragraph [0009] of the patent in suit, the missing verb was to be read as “containing”. Moreover, it has referred to passages in the application as filed which provide support for the claims of the patent in suit, including the verb “containing”. [3.2] The [opponent] has criticised this opinion of the OD concerning the addition of the verb “containing” as a violation of A 100(c). It referred to the written submission of the [patent proprietor] dated June 3, 2003, and pointed out in this respect that the [patent proprietor] itself had declared during the examination proceedings (Erteilungsphase) that claim 1 as maintained found its support in original claims 1 and 2. According to original claim 2 the further elements were limited to the elements cited in this claim. Further elements were excluded. This limitation corresponded to the intention of the [patent proprietor] on which third parties could rely, and which ought not to be ignored. [3.3] The Board shares the opinion of the OD as to how claim should be read, in particular in view of paragraph [0009] of the patent in suit which has the very same wording as claim 1 as granted, plus the missing verb, which, according to the Druckexemplar is the verb “containing”. The way in which claim 1 is drafted also requires a verb such as “containing” rather than “being” or “consisting” at the end of the characterising part. [3.4] Claim 1 is supported by claim 1 as filed in connection with page 4, lines 5 to 17 and page 5, first paragraph, of the original description.
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T 738/10 – A Missing Verb
K’s Law – The ebook
Original claim 1 refers to a process characterised by the presence of a supported multi-element catalyst one element of which is platinum. This claim does not contain any further limitation. In comparison claim 1 as granted is limited to a supported multi-element catalyst containing certain supports, platinum and at least one further element from a list of elements […]. The definition of the catalyst is found in page 4, lines 5 t 6 of the original description: “The catalyst of the process according to the invention contains a support, platinum and at least one further element.” (emphasis by the Board) The possible identity of the “further elements” at least one of which is contained is disclosed on page 5, first paragraph, of the original application. “As further elements … can be applied. … The elements in addition to platinum can be applied alone (einzeln) or in any combination.” This paragraph does not teach that further elements are excluded, be it only because the verb “can” is used. The limitation regarding the support material has its basis on page 4, lines 7 to 17 of the original description. [3.5] Moreover, the Board notes that in its letter of June 3, 2003, the [patent proprietor] not only refers to the original claims 1 and 2 but also to the original description. It is true that the page number is missing, but the reference to the line number makes it clear that the reference has to be to the above mentioned passage on page 4 (lines 5 to 6) of the description. Moreover, the set of claims enclosed with the letter, according to which the catalyst [is a catalyst] “containing at least one further element selected from the group of …” shows that the [patent proprietor] did not at all intend to limit the claims in the way suggested by the [opponent]. [3.6] Thus the Board comes to the conclusion that the subject-matter of the patent in suit does not extend beyond the [subject-matter disclosed in] the original application documents and, therefore, that the ground for opposition based on A 100(c) does not make it impossible to maintain the patent in suit. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1526/09 – Crystal Clear?
K’s Law – The ebook
T 1526/09 – Crystal Clear? 12 Aug 2013
This is a revocation appeal. The independent claims of the main request (patent as granted) read: 1. Crystalline compound of formula:
having a crystal habit such that the ratio between the length and the width of the crystals is between 1:1 and 10:1 and the chargeability of which, measured by tribogeneration, ranges between 0 and -10 nanocoulombs/g. 4. Process for preparing a compound according to any one of Claims 1 to 3, characterized in that a crystalline suspension of a compound of formula (I) is subjected to at least one sonication episode and at least one temperature oscillation episode. 5. Process for preparing a compound according to any one of Claims 1 to 3, characterized in that a crystalline suspension of irbesartan of acicular habit form A is subjected to at least one sonication episode and at least one temperature oscillation episode. 28. Pharmaceutical composition containing a compound according to any one of Claims 1 to 3 and pharmaceutically acceptable excipients. In what follows, Board 3.3.01 examines whether this subject-matter was sufficiently disclosed: *** Translation of the French original *** [2.1] The [opponents] were of the opinion that the patent in suit did not provide the skilled person with all the information necessary for measuring the following parameters in a precise and repeatable way:
ratio between the length and the width of the crystals; and the chargeability measured by tribogeneration.
On the one hand, the patent does not define what the length and the width of the three-dimensional crystal structure stand for. Moreover, document D16 shows that the chargeability values measured by tribogeneration depend on the measurement conditions. Whereas a value of -6.20 nC/g is obtained in a plastic box, -9.73 nC/g are measured on the same sample when a metal box is used. The patent in suit does not provide sufficiently precise measurement conditions […] nor does it cite the chargeability values obtained for the compounds of the examples. These two parameters are the only features used by the [patent proprietor] for delimiting the subject-matter of claim 1 of the main request with respect to the prior art. The [opponents] concluded that in view of decision T 593/09 the grounds pursuant to A 100(b) make it impossible to maintain the patent.
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T 1526/09 – Crystal Clear?
K’s Law – The ebook
[2.2] The catchword of decision T 593/09 (which has been distributed by [opponent 1] during the oral proceedings before the Board) stipulates that where a claim contains an ill-defined parameter and where, as a consequence, the skilled person would not know whether he was working within or outside of the scope of the claim, this, by itself, is not a reason to deny sufficiency of disclosure. Nor is such a lack of clear definition necessarily a matter for objection under A 84 only. What is decisive for establishing insufficiency is whether the parameter, in the specific case, is so ill-defined that the skilled person is not able to identify in the patent as a whole the technical measures necessary to solve the problem facing [the skilled person] (cf. point [4.1.4] of the Reasons) Ratio between the length and the width of the crystals [2.3.1] The patent in suit does not explicitly disclose how this parameter is to be determined […]. The [opponents] submitted that the length and the width of the crystal were not defined because a crystal has a threedimensional shape. However, the [patent proprietor] has argued that it was clear for the skilled person that this ratio had been determined using a microscope producing a two-dimensional image of the crystals. [2.3.2] The size of the crystals that is explicitly disclosed in the patent in suit is indicated as follows: Average length: 30 μm Average width: 5 μm […] In view of these dimensions, it is clear that a microscope is used for determining the ratio between the length and the width of the crystals. What is seen with a microscope is a two-dimensional projection of the crystals; consequently, it is the side of greatest length of the crystal that defines its length and the other side defines its width. [2.3.3] As a consequence, the skilled person does not encounter any difficulty when establishing a definition for the length and the width of the crystals. This conclusion is in line with […] the impugned decision (which also refers to documents D5 and D6). The patent, therefore, describes how to determine the ratio between the length and the width of the crystals in a manner that is sufficient for the skilled person. Chargeability measured by tribogeneration [2.4.1] The patent in suit discloses the following method for measuring the chargeability: “The chargeability of the powder is measured by tribogeneration: the powder is subjected to a strong vibration during which it becomes charged on itself, and is then transferred into a Faraday cage connected to a very sensitive electrometer.” […] [2.4.2] As explained above (point [2.1]), document D16 shows that the chargeability depends on the material of the container in which the sample is subjected to a strong vibration. As the definition of this parameter in the patent does not mention this material, the parameter is ill-defined. [2.4.3] According to decision T 593/09 it, therefore, remains to be examined whether this ill-defined parameter hinders the skilled person from identifying in the patent as a whole the measures necessary to solve the problem (cf. point [2.2]). Regardless of the problem to be solved, it is necessary to prepare the compound as defined in claim 1. As a consequence, it is decisive for the sufficiency of disclosure of the invention to determine whether the skilled person can prepare this compound although one parameter is ill-defined. The preparation of the compound implies “that a crystalline suspension of a compound of formula (I) is subjected to at least one sonication episode and at least one temperature oscillation episode” […]. This means that the measures to be taken for solving the problem facing the skilled person are the sonication and temperature oscillation episodes […].
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T 1526/09 – Crystal Clear?
K’s Law – The ebook
The sonication effect is disclosed in […] the patent in suit as follows: “It appears that the sonication episode limits the growth according to the length of the needles by breaking them and modifies the nature of the crystal surfaces such that the zones capable of accumulating the electrostatic charges are reduced.” […] It follows from this paragraph that this treatment results in a reduction of the chargeability of the crystals. If this treatment, which is disclosed in the patent in suit, allows the skilled person to prepare the compound according to claim 1 without undue inventive effort, then the patent discloses the invention in a sufficient manner. It is true indeed that the examples of the patent in suit do not indicate the chargeability of the products obtained, but this does not mean that these products do not have the required chargeability. In an inter partes appeal each party has the duty of proving the facts which it invokes. If the [opponents] were of the opinion that the products of the examples of the patent in suit did not have the required chargeability, it was up to them to prove it, which they have not done. [2.4.4] It should be noted that in the case underlying appeal T 593/09 the parameter that was ill-defined was a certain crystallisation temperature of a starting substance and that the Board has considered that this temperature was essential for solving the problem facing [the skilled person] (see point [2.3] of the Reasons). The Board was of the opinion that because of this deficient definition the skilled person trying to carry out the invention had no guidance for determining how to choose the starting substance without having to determine in each case whether the product solved the problem with which he was faced (see point [3.6] of the Reasons). Thus the parameter under consideration was essential for preparing the product. In the present case, the reduced chargeability is an advantageous property of the product obtained with the process disclosed in the patent in suit […]. The vague definition of the chargeability affects the clarity of the subject-matter of the claims but does not hinder the skilled person from preparing the claimed product. A lack of clarity is not a ground for opposition pursuant to A 100 and cannot be objected to the maintenance of the patent as such if it was already present in the claim as granted, as is the case for the present main request. However, such a lack of clarity can be taken into account when the subject-matter of such a claim is examined as to its novelty and inventive step. [2.5] As a consequence, the reasons invoked based on A 100(b) are not sufficient for establishing that the patent cannot be maintained on the basis of the main request. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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T 1026/10 – Decay
K’s Law – The ebook
T 1026/10 – Decay 9 Aug 2013
Another
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Claim 1 of the fourth auxiliary request before the Board read (in English translation): Security document comprising a composition capable of anti-Stokes fluorescence as a security feature, wherein the composition comprises a gadolinium oxysulfide matrix material made from a composition of the formula (Gd(1-x-y))2O2S:YbxTmy, wherein
x and y fulfil the requirements: 0.20 ≤ x ≤ 0.60 and 0.0001 ≤ y ≤ 0.05; Ytterbium (Yb) acts as absorbing ion, for absorbing electromagnetic radiation; Thulium (Tm) acts as an emitting ion, for emitting electromagnetic radiation the wavelength of which is shorter than the wavelength of the absorbed radiation (antiStokes luminescence); the concentrations of the absorbing and emitting ions are chosen such that proportionate quenching of the anti-Stokes luminescence is achieved (concentration quenching), in order to ensure that the increase and decrease times are sufficiently low as to be suitable for high-speed detection with read-out speeds between 3 and 6 m/s.
This claim was found to be unclear: *** Translation of the German original *** [3] Claim 1 of the fourth auxiliary request is directed at a security document comprising the anti-Stokes fluorescence composition (Gd (1-x-y))2O2S:YbxTmy as a security feature, wherein x and y, i.e. the concentrations of the absorbing and emitting ions, are chosen within the domains 0.20 ≤ x ≤ 0.60 and 0.0001 ≤ y ≤ 0.05 “such that proportionate quenching of the anti-Stokes luminescence is achieved (concentration quenching), in order to ensure that the increase and decrease times are sufficiently low as to be suitable for high-speed detection with read-out speeds between 3 and 6 m/s”. [3.1] A 84 in connection with R 43(1) establishes the requirement that the claims have to be clear and define the matter for which protection is sought in terms of the technical features of the invention. This requirement ensures that the public is not left in any doubt as to which subject-matter is covered by a particular patent and which is not. The Board is of the opinion that it follows from this principle of legal certainty that claims are not to be considered clear within the meaning of A 84 if they do not allow to draw that distinction (see T 337/95 [2.2-5]). However, claims comprising an unclear technical feature generate doubts as to what is precisely encompassed by the subject-matter of the claims. Because of this lack of legal certainty such claims are not clear within the meaning of A 84. [3.2] In the present case the fluorescent material is partly defined by means of the result to be obtained: x and y have to be chosen within certain domains such that (a) such that proportionate quenching of the anti-Stokes luminescence is achieved, in order to (b) ensure that the increase and decrease times are sufficiently low (c) as to be suitable for high-speed detection with read-out speeds between 3 and 6 m/s. Thus x and y – and, therefore, the fluorescent material itself – are defined by a cascade of inter-dependent parameters. [3.3] The upper limits for the increase and/or decrease times that have to be guaranteed according to (b) are not made unambiguous by the indication that they have to be “low”, because the expression “low” is a relative one and does not have an unambiguous reference point in the filed of fluorescent materials (see T 337/95 [2.8]).
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T 1026/10 – Decay
K’s Law – The ebook
Moreover, the description of the application under consideration does not give any values for suitable increase and decrease times, let alone a possible upper limit. [3.4] Said increase and decrease times mentioned in claim 1 are, however, further defined by the requirement that they have to allow for high-speed detection with read-out speeds between 3 and 6 m/s. [3.5] The unambiguous characterisation of a product in a claim by means of a parameter requires the parameter to be clearly and reliably determinable. Therefore, the knowledge of the method and the conditions for determining the parameter is required for the parameter to be unambiguously defined (see T 412/02 [5.8-9]). In order for the subject-matter for which protection is sought to be well defined, the claim as such has to disclose to the skilled person reading it how the parameter is to be determined. In principle, this means that the method of determination and the measurement conditions that could have an influence of the value of the parameter have to be indicated in the claim, either explicitly or, where absolutely necessary, by means of references to the description pursuant to R 43(6). Such an indication is superfluous only if it can be shown that the skilled person would immediately know which method and which conditions are to be applied. [3.6] In the present case the concentrations of x and y are to be chosen such that the resulting fluorescent material can be detected at “high-speed”, i.e. with read-out speeds between 3 and 6 m/s. Neither the claim nor the description of the original application discloses how the detection is to be performed. Thus the skilled person does not know precisely what is to be measured, nor which measurement method is to be used, under which conditions and with which device, respectively, let alone which measurement value would be considered to be “detectable” at all. Moreover, the application under consideration does not contain any example for a claimed fluorescent material, i.e. it does not mention any concrete values for x and y. [3.7] Consequently, as neither the method of determination nor the measurement conditions that could have an influence on the detectability of the fluorescent material by means of “high-speed detection” are indicated in the claim or in the description, it is not possible to unambiguously characterise the claimed fluorescent material by means of x and y values. [3.8] The appellants pointed out that the skilled person knew which method and which conditions were to be used, i.e. the high-speed methods that are commonly used for checking security documents. Those methods used the detectors that are customary in this industry. However, it is undisputed that there are several high-speed detection methods and that different parameters/conditions have an influence on the “detectability”. Thus, whether a given fluorescent material is considered to be detectable or not inter alia depends on whether the luminescence that is to be measured is in the visible or in the invisible range […], what the size of the security feature is, how much fluorescent material is used in the security feature, as well as on the properties of the printing ink into which the fluorescent material is incorporated. Moreover, it is undisputed that the skilled person can use different detectors. Whether a given fluorescent material is considered to be detectable or not also depends from the detection threshold […] and the power of the exciting light, etc. Moreover, [the application] does not give any lower limit for what is considered to be detectable. [3.9] The appellants argued, on the basis of graph D14 […] that at a given constant concentration of Thallium (y) the skilled person could determine suitable limits for the Ytterbium concentration (x). In graph D14 the working domain suitable for high-speed detection for a fluorescent material having a y value of 0.0007 was indicated by means of a yellow surface.
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T 1026/10 – Decay
K’s Law – The ebook
However, the expression “high-speed detection” still remains undefined. It is not clear why of all things those specific limits for the increase and decrease times allow for high-speed detection. Thus the chosen boundaries for the working domain are purely arbitrary. [3.10] As for the reasons given above the technical feature “the concentrations of the absorbing and emitting ions are chosen such that proportionate quenching of the anti-Stokes luminescence is achieved (concentration quenching), in order to ensure that the increase and decrease times are sufficiently low as to be suitable for highspeed detection with read-out speeds between 3 and 6 m/s” is unclear and the skilled person is not enabled to determine its precise meaning, this expression generates a lack of clarity as to what exactly is encompassed by the subject-matter for which protection is sought, and what is not. Thus claim 1 of auxiliary request 4 does not comply with the requirement of clarity pursuant to A 84. [3.11] As the subject-matter of claim 1 of auxiliary request 4 is the most narrow and as the wording of the contested feature […] is more precise than in the other requests (for instance, in the main request and in auxiliary requests 1 and 3 “high-speed detection” is not defined via a concrete read-out speed, and the main request does not give any quantitative values for x and y […]), the main request and auxiliary requests 1 to 3 share the fate of auxiliary request 4. [3.12] Thus all of the requests of the appellants violate A 84 and, therefore, cannot be allowed. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 428/09 – On Purpose
K’s Law – The ebook
T 428/09 – On Purpose 8 Aug 2013
This is a revocation appeal. Claim 1 of the main request before the Board (and claim 1 as granted) read (in English translation): Process for recovering clear solutions containing cell contents from biological samples in a high throughput process, comprising the steps of (a) preparing a plurality of protein-containing solutions which contain insoluble ingredients in separate chambers of a multi-chamber filtration unit, (b) removing insoluble ingredients by filtering the solutions through the multi-chamber filtration unit with the application of a pressure differential, cross contamination of adjacent chambers being prevented by the addition of an antifoam to the cell lysates and/or by the use of a transfer unit between the outlet end of the multichamber filtration unit and the inlet end of the collecting containers, and (c) collecting the individual filtrates separately in collecting containers. In what follows, the Board examines the novelty of this claim. *** Translation of the German original *** [1] Claim 1 of the main request is directed at a process for recovering clear solutions containing cell contents from biological samples in a high throughput process, comprising three steps (a), (b), and (c). Step (b) mentions the addition of an antifoam as one alternative for preventing the cross contamination of adjacent chambers. According to claim 2 the antifoam is selected from primary, secondary or tertiary C1-6 alcohols. The specification mentions ethanol as preferred antifoam […]. [2] In the impugned decision the Opposition Division (OD) had come to the conclusion that e.g. Example 11 of document D14 deleted the novelty of the subject-matter of claim 1 […]. [3] Document D14 concerns a process for isolating cell contents such as nucleic acids from natural sources by removing the digested natural sources such as cells or cell debris by filtration […]. In a preferred embodiment of the process according to the invention, multiple samples are processed simultaneously and passed through appropriate devices advantageously adapted to microtitration systems. […] Figure 7 shows a preferred embodiment of the device according to the invention, which may be present in the form of microtitration strips. In Figures 8 and 9 corresponding configurations, each having different adsorption materials, are described […]. It is also disclosed […] that up to 96 samples may be processed at the same time when the design of the filtration device according to the invention is in microtiter format. [4] Example 11 of document D14 discloses […] a process for the preparation of genomic DNA from liver tissue that is performed in a multi-chamber filtration unit […]. First the liver tissue is comminuted and the cells are lysed at 50°C for 2 hours by addition of proteinase K. Then ethanol is added and the filtration device is attached on top of a vacuum chamber, and the cell lysate is sucked through the device. The filter cake, together with cell fragments, is discarded and the filtrate is sucked through the silica gel extraction column to achieve adsorption of DNA. Subsequently the extraction column is washed to remove RNA and proteins. Finally, the DNA is eluted and is collected in tubes. Thus the Board is of the opinion that document D14 discloses a process for recovering liver tissue solutions containing DNA in a high throughput process, comprising the three process steps of the process according to claim 1 of the impugned patent. [5] The [patent proprietor] points out that document D14 does not disclose a high throughput process or the preparation of a plurality of protein-containing solutions because Example 11 only discloses the treatment of a single sample and because there was no figure corresponding to figure 9. [6] The Board cannot endorse this argument. It is true that none of the devices shown in the figures of document D14 is marked as “figure 9”. However, both the device shown on sheet 7/8 and the one shown on sheet 8/8 are marked as “figure 8”. As the devices shown on sheet 7/8 and 8/8 are different and as the description of document 277 | 3398
T 428/09 – On Purpose
K’s Law – The ebook
D14 discloses more than one that there is a device according to figure 8 and a device according to figure 9 […] the skilled person would have understood that one of the two devices marked as figure 8 was indeed the device according to figure 9. According to […] D14, the devices shown in figures 8 and 9 differ in respect of the adsorption materials. As […] the device shown in figure 9 has both an anion exchanger layer (10) and a silica gel layer (11), there is no doubt for the skilled person that the device shown on sheet 8/8 of D14, which contains both layers, corresponds to figure 9. This understanding is confirmed by the European patent specification (D1) corresponding to document D14, where the corresponding figure is marked as figure 9 […].
[7] The device according to figure 9 of document D14 comprises eight columns in which the cell lysates are processed in parallel […]. Thus the Board is of the opinion that Example 11 discloses both a high throughput process and the preparation of a plurality of solutions according to step (a). [8] According to the established case law of the Boards of appeal, it is not justified, when the novelty of a claim is to be assessed, to read into the claims features that are only disclosed in the description (Case Law, 6 th edition, 2010, II.B.5). Thus the parallel treatment of at least 24, preferably at least 48 and most preferably 96 samples or more […], which is disclosed in the description of the impugned patent, does not limit claim 1. Moreover, the general teaching of document D14 is clearly directed at the parallel treatment of several samples in devices that are adapted to microtitration systems […]. According to the established case law of the Boards of appeal the technical teaching of examples can be combined with the teaching offered elsewhere in the same document (such as in the description of a patent document) provided that the example under consideration is in line with the general technical teaching that is disclosed in the document (Case Law, 6th edition, I.C.2.2). Thus the skilled person would have directly and unambiguously derived from the general description of document D14 in connection with the process disclosed in Example 11 and the device shown in sheet 8/8 that the process may be performed using up to 96 filtration units in parallel. [9] Claim 1 only requires the preparation of a plurality of protein-containing solutions and does not specify that they have to be different. Thus the parallel treatment of one sample disclosed in document D14 is covered by claim 1. Moreover, the treatment of aliquots is explicitly mentioned in the impugned patent […]. [10] The [patent proprietor] also submitted that Example 11 did not disclose step (a) of the process according to claim 1 because the treatment with proteinase K led to proteins being “completely digested”. [11] The Board is of the opinion that the solutions prepared in Example 11 of document D4, which are obtained by lysing rat liver tissue, contain proteins, not least because of the presence of proteinase K (a protein) that is used for cell lysis. Moreover, claim 1 only requires the solutions prepared in step (a) to contain protein. Claim 1 does not exclude the degradation (Abbau) of the proteins in a subsequent step because the claim is directed at a process comprising the steps (a), (b), and (c). [12] The argument of the [patent proprietor] according to which document D14 does not contain any reference to a clear solution is not persuasive either. The Board notes that the impugned patent uses the expressions “clear solution” and “filtrate” synonymously for referring to a solution which is substantially free from insoluble matter such as cell debris for example […]. Example 11 of document D14 explicitly discloses the removal of cell debris by filtration and the preparation of a DNA containing filtrate and, thus, the recovery of a clear solution containing cell contents. 278 | 3398
T 428/09 – On Purpose
K’s Law – The ebook
[13] Thus the only difference with respect to the process according to document D14 is that according to step (b) of claim 1, the addition of ethanol has the purpose of preventing the cross contamination of adjacent chambers, whereas in the process according to document D14, ethanol is added in order to adjust the sample to the adsorption conditions on glass. [14] According to the established case law of the Boards of appeal, the technical features of a process claim are the physical steps defining the process (cf. G 6/88 [2.5]). The physical step of adding ethanol in step (b) of claim 1 of the impugned patent is identical to the physical step of adding ethanol in Example 11 of document D14. When [ethanol is added], the purpose of preventing cross contamination of adjacent chambers, which is based on the antifoam effect of ethanol, is obtained regardless of whether the addition of ethanol to the cell lysates was performed in view of this or a different purpose. Thus the Board is of the opinion that the purpose for which ethanol is added in step (b) of the process according to claim 1 cannot constitute a feature that establishes novelty. [15] The [patent proprietor] points out that according to decision T 848/93 the use feature in step (b) of claim 1 should indeed be considered as a functional feature of the process that could establish novelty. [16] In decision T 848/93 the claim under consideration was directed at a process for remelting galvanic layers on printed circuit boards. It was the use of the process (remelting instead of vapour phase soldering) that was different from the prior art. The competent Board came to the conclusion that in line with decisions G 2/88 and G 6/88 of the Enlarged Board the process feature of remelting galvanic layers constituted a functional technical feature establishing novelty (see [3.1-4] of the Reasons). [17] However, the Board is of the opinion that the considerations of T 848/93 are not applicable to the present case because what is being discussed is not whether the use of the process can establish novelty but whether the use of a single process step [can have this effect]. [18] Moreover, according to more recent case law of the Boards of appeal, the indication of purpose in a process claim directed at the manufacture of a product does not constitute a limiting feature within the meaning of decisions G 2/88 or G 6/88 (see Case law, 6th edition, I.C.5.3.[1] e and f, as well as, e.g. T 1049/99 [8.4.4-8.5]; T 1343/04 [2]; T 1179/07 [2.1.3]; T 304/08 [3.3.2-3]). [19] For the reasons given above, the Board comes to the conclusion that claim 1 does not comply with the requirements of A 54. The impugned decision is not to be criticised in this respect. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2430/09 – Error Of Judgement
K’s Law – The ebook
T 2430/09 – Error Of Judgement 7 Aug 2013
In this case the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. The Board found claim 1 of the request on file not to comply with the requirements of A 84 and decided to revoke the patent; it then considered whether the appeal fee should be reimbursed. [4] The Board considers that a reimbursement of the appeal fee in accordance with R 67 EPC 1973 is not equitable by reason of a substantial procedural violation in the present case because an error of judgement has occurred in first-instance proceedings which, however, is not a procedural violation within the meaning of said provision (see also “Case Law”, 6th edition 2010, VII.E.17.4.5). The OD referred to decision T 1002/92 and found the opponent’s objections based on R 80 and A 123(3) EPC to be inadmissible since both objections had not been substantiated. In appeal proceedings, the [opponent] has not disputed that its objections under R 80 and A 123(3) had not been substantiated in first-instance proceedings. Nor has the [opponent] contended that it had been hindered by the OD from substantiating its objections during the oral proceedings (OPs) before the OD. In decision T 1002/92 [3.3], the Board of Appeal held that, “following the principles set out in Opinion G 10/91, as regards proceedings before the ODs, late-filed facts, evidence and related arguments, which go beyond the “indication of the facts, evidence and arguments” presented in the notice of opposition pursuant to R 55(c) in support of the grounds of opposition on which the opposition is based, should only exceptionally be admitted into the proceedings by the OD, if prima facie, there are clear reasons to suspect that such late-filed material would prejudice the maintenance of the European patent” (emphasis added). Decision T 1002/92 [3.1] further states: “indication of the facts, evidence and arguments” in support of the stated grounds of opposition is often referred to as the “substantiation” of the grounds of opposition”. It is clear from the impugned decision […] and the minutes of the OPs before the OD […] that the OD applied the afore-mentioned principles developed in decision T 1002/92 to the objections under R 80 and A 123(3) raised by the opponent against the amended claims filed by the Patentee. In the board’s view, the OD erred when it applied the principles developed in decision T 1002/92. As regards the first-instance proceedings, it is clear from the reasoning in decision T 1002/92 that these principles concern the admissibility of late-filed facts, evidence and related arguments in support of a ground for opposition under A 100 EPC 1973 which go beyond the facts, evidence and arguments submitted in the notice of opposition in support of a ground for opposition under A 100 EPC 1973 (see in particular point [3.2], second paragraph, of the Reasons). In the present case, however, the opponent’s objections were not raised in support of a ground for opposition under A 100 EPC 1973 but under R 80 and A 123(3) against the amended claims filed by the patentee. Thus the principles developed in decision T 1002/92 did not apply to the case which the OD had to decide. However, as stated above, such an error of judgement does not amount to a procedural violation within the meaning of R 67 EPC 1973. [5] According to the decisions cited by the [opponent], the OD should have considered the opponent’s new objections. Arguments have to be considered, whenever they were brought forward in first-instance proceedings (see decisions T 92/92, T 604/01, T 861/93 and T 131/01. In decision T 604/01, the board held that objections under A 123(2) and (3) which the opponent raised during the opposition proceedings but did not further explain until OPs could not be excluded under R 71a(1) EPC 1973 because these objections were a matter of argument. Further, pursuant to A 101(3)(a), taking into consideration the amendments made by the patentee, the patent and the invention to which it relates must meet the requirements of the EPC. Thus in case of amendments of the claims of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with e.g. the provisions of A 123(2) and (3) (see G 280 | 3398
T 2430/09 – Error Of Judgement
K’s Law – The ebook
9/91 [19]). Therefore, even if the opponent did not substantiate its submissions of lack of compliance with R 80 and A 123(3) EPC, the OD should not have decided that these new objections, filed with letter of 28 January 2008, were not admitted to the opposition proceedings. However, it is clear from the impugned decision that the OD considered the patent as amended to fulfil the requirements of R 80 and A 123(3) EPC. Under these circumstances it is evident that the OD has examined the issue of R 80 and A 123(3) EPC ex officio. [6] From the foregoing it follows that due to its error of judgement, the OD decided not to admit the opponent’s objections into the opposition proceedings. Hence a reimbursement of the appeal fee is not equitable in the present case. Thus the [opponent’s] request for a reimbursement of the appeal fee must be refused. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 964/12 – Technical It Is
K’s Law – The ebook
T 964/12 – Technical It Is 6 Aug 2013
This is one of those cases where the Boards disagree with an Examining Division (ED) refusing an application subsequent to a no-search declaration. Claim 1 of the main request before the Board read: 1. A computer implemented data processing method of processing an order, the method comprising the steps of:
providing a transport layer (503, 542) for transmitting a first message (515) from an order capturing application (505; 605) to an order fulfillment application (620; 625), wherein the transport layer is provided by an integration engine (503) and an integration directory (415; 542), capturing an order by means of the order capturing application (505; 605), generating the first message by the order capturing application (505; 605), the message body of the first message carrying an order document and an indication of a receiving organizational entity, transmitting the first message (515) from the order capturing application to the integration engine (503), determining by a logical routing framework (530) of the integration engine (503) the logical name of an order fulfillment coordination engine (603) from the indication of the receiving organizational entity using a routing model directory (540) comprised in the central integration directory (415; 542), storing by the integration engine (503) the logical name in the header of the first message, converting by a mapping framework (545) of the integration engine (503) in the message body (525) the format of the order document to the format of the order fulfillment coordination engine (603) using a mapping directory (547) comprised in the central integration directory (415; 542), determining by a physical address resolution framework (559) of the integration engine (503) the physical address of the order fulfillment coordination engine (603) 282 | 3398
T 964/12 – Technical It Is
K’s Law – The ebook
from the logical name stored in the header of the first message, wherein the determination of the physical address is performed using a service directory (548) comprised in the central integration directory (415; 542) storing by the integration engine (503) the physical address in the header (520) of the first message (515), sending the first message (515) from the integration engine (503) to the order fulfillment coordination engine (603) using the physical address, processing the order document by the order fulfillment coordination engine (603) to provide at least a second message, the second message carrying an order fulfillment document (615) and an indication of the order fulfillment application (620, 625), and transmitting the second message from the order fulfillment coordination engine to the order fulfillment application (620; 625) by means of the transport layer.
[2] The ED refused the application because they considered the subject-matter of claims 1 and 7 to be excluded from patentability and that of claim 6 to lack novelty. The essential reasoning was for all claims that the invention comprised no, or merely notorious, technical features. The Board will therefore examine whether that reasoning was correct. This is also necessary in order to determine whether an additional search must be carried out since no search has as yet been performed. [3] The jurisprudence has laid out the following principles for determining when an additional search should be carried out. In decision T 1242/04 [9] it is pointed out that the search is an essential element of the grant procedure, being designed to identify prior art relevant to the application. The intention is to make it possible to determine, on the basis of the documents mentioned in the search report, whether and to what extent the invention is patentable. Knowledge of the prior art forms the basis for examination of the application by the ED. However, if no search report has been drawn up it is not necessary to carry out an additional search in the documented prior art where the objection is based on “notorious knowledge” (Cf. T 1924/07 [10]). The term “notorious” means prior art which is so well known that its existence at the date of priority cannot be reasonably disputed. It may also imply that technical detail is not significant (cf. T 1411/08 [4.1-2]). [4] In the present case the Board concurs with the appellant’s view […] that the method and system claims define technical features and technical aspects which cannot be ignored in examining the patentability of the invention. The skilled person would infer from the application that the claims are not solely related to a business method mixed with abstract ideas how to exchange messages between business people, somehow using purely nontechnical computer programs and bypassing any technical means whatsoever, but that the claimed invention is a technical information system for processing data. Such insights are easily inferred from the various references to computer systems in the introductory Summary […] and the disclosed embodiments of the invention which are implemented using the integration platform Exchange Infrastructure of SAP that “provides an infrastructure that has a middleware which allows technical integration of SAP as well as non SAP systems by using open standards” […]. The (order) fulfillment coordination engine, an essential feature in the claims, “can be implemented with SAP’s Exchange Infrastructure” […]. The exchange infrastructure includes an integration server 425 and an integration directory 415 ([…]. [… T]he application indicates that “integration server 503 and integration directory 542 provide a transport layer for transmitting of message 515 from the sending application 505 to the receiving application 557” (underlining added). The integration server and the integration directory are implemented by the SAP Exchange Infrastructure as shown in figure 9. Hence, the integration server, the integration directory, and the transport layer are technical components of the computer system. Also the features relating to routing messages through the transport layer, converting data formats and resolving addresses are technical, or at least have technical aspects related to computer-implemented processes. [5] The collection of these features cannot reasonably be said to fit the narrow definition of “notorious prior art”. An additional search must therefore be carried out. [6] It also follows from the above analysis that the objections made in the decision under appeal against claims 1, 6 and 7 are not valid. The skilled person – a computer scientist – would not interpret the features discussed above 283 | 3398
T 964/12 – Technical It Is
K’s Law – The ebook
in a way that neither takes into consideration that the invention is computer-implemented, nor has support in the description. [7] The decision under appeal therefore has to be set aside. The appellant’s main request for grant of a patent is refused since no search has been carried out, but its auxiliary request for remittal is granted. The ED should perform the additional search on the basis of the claims filed with the statement setting out the grounds of appeal dated 23 March 2012, taking due regard to the description and drawings (cf. A 92). […] The case is remitted to the department of first instance for further prosecution. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1955/09 – Indirectly
K’s Law – The ebook
T 1955/09 – Indirectly 5 Aug 2013
Another decision dealing with novelty in the medical realm … Claim 1 of the request refused by the Examining Division (ED) read: 1. The use of a peptidic compound for the manufacture of a medicament for the prophylactic or therapeutic treatment of a bacterial or fungal infection of a mammal by killing said bacteria or fungi, wherein the compound comprises an amino acid sequence X1KEFX2RIVX3RIKX4FLRX5LVX6, wherein X1 represents the N-terminal part; X2 is K or E; X3 is Q or E; X4 is D or R; X5 is N or E; X6 represents the C-terminal part; wherein one or more of the amino acids of the core sequence are optionally derivatized, and wherein (a) the N-terminal part is acetylated, and/or (b) the C-terminal part is amidated, and/or (c) the amino acid sequence is different from X1KEFX2RIVX3RIKX4FLRX5LVX6. (emphasis added) Contrary to the ED, the Board found this claim to be novel: [2] Claim 1 refers to a therapeutic application in the form allowed by the Enlarged Board of Appeal (EBA) in decision G 5/83, i.e. in the form of the use of a substance or composition for the manufacture of a medicament for a defined therapeutic application. The board considers that this claim form is also allowable when taking into consideration the findings of the EBA in its decision G 2/08 [7.1.4 ; order, last paragraph]. 3. The ED denied the novelty of the subject-matter of claim 1 over the disclosure in document D1, a document relevant under A 54(3). Document D1 disclosed the use of the same peptidic compounds for the “diagnosis/prevention/therapy of a disease or condition involving, or resulting from, a fungal or bacterial infection, or the exposure to a fungal or bacterial toxin”, whereby the infection was of the upper airways or the respiratory system. The feature “by killing said bacteria or fungi” of claim 1 had no limiting effect on the scope of the claim. Furthermore, the presence of bacterial/fungal cells and the secretion of toxins by these cells were concomitant events and the application did not identify a new distinguishable sub-group of patients unlike the situation underlying decision T 836/01. [4] Document D1 is concerned with the use of the peptidic compounds “for the diagnosis, prevention or therapy of a disease or a condition involving, or resulting from, a fungal or bacterial infection or the exposure to a fungal or bacterial toxin” […]. The underlying action of the peptidic compounds in these uses is their “affinity for toxins and especially for fungal and bacterial toxins such as lipopolysaccharide (LPS) or lipoteichoic (LTA)” and their ability to “inhibit or neutralize such toxins” […]. [5] The board notes that the appellants have not denied that document D1 concerns the same compounds as those defined in claim 1 and furthermore, that the ED has not argued that document D1 discloses antibiotic activity of these compounds. The attained therapeutic effect of the use of the compounds defined in claim 1, namely the killing of bacteria or fungi, is not described in document D1. [6] The attaining of a new technical effect is considered as a functional technical feature of a claim referring to the new use of a known substance. If that technical feature has not been previously made available to the public, then the claimed invention is novel, even though such technical effect may have inherently taken place in the course of carrying out what has previously been made available to the public (see decisions of the EBA G 2/88 and G 6/88 [9]).
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T 1955/09 – Indirectly
K’s Law – The ebook
[7] This principle has been followed in a large body of case law of the boards on claims relating to second or further medical uses of a known substance, inter alia in decisions T 290/86, T 542/96, T 509/04 and T 1229/03, which all acknowledged novelty in the case at issue or in decisions T 254/93; T 486/01 and T 384/03 which all denied novelty in the case at issue. [8] Since document D1 and claim 1 are both concerned with the same peptidic compounds for treating the same disease, it needs therefore to be decided whether the use now claimed represents a further and different therapeutic use from the disclosure in document D1. [9] Document D1 disclosed the use of peptidic compounds for the purpose of inhibiting or neutralizing toxins produced by bacteria or fungi. Document D1 thus teaches a direct effect of the compounds on the toxins produced. This is in clear contrast to the technical effect relied on by the claimed invention, namely the indirect influence of the peptidic compounds on the production of the toxins via their antibiotic action against the toxin producing bacteria or fungi. [10] The conclusion cannot be drawn that the technical effect relied upon by the claimed invention, i.e. the antibiotic effect, is a mere explanation of how the compounds inhibit or neutralize toxins. Rather, this effect identifies a new clinical situation, namely one in which it could be preferable to target the infection itself, not merely the toxins produced by the bacteria or fungi causing the infection […]. [11] The board notes that the above reasoning is analogous to the reasoning in two further decisions, i.e. T 836/01 and T 1642/06, on claims relating to second or further medical uses of a known substance and which acknowledged novelty in the case at issue based on the differentiation of a direct and indirect effect. [12] In view of the foregoing, the board is satisfied that the subject-matter of claim 1 at issue fulfils the requirements of A 54(1) and A 54(3) vis-à-vis the disclosure in document D1. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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Interpretative Spotlight: “Certified”
K’s Law – The ebook
Interpretative Spotlight: “Certified” 2 Aug 2013
This is a revocation appeal. Claim 1 of the main request before Board 3.3.04 read: 1. Use of a cross-linked matrix for promoting meningeal tissue growth to replace a damaged meningeal tissue, said matrix comprising: certified collagen prepared by a process certified to provide physiologically compatible collagen which is free of effective amounts of active viruses and prions, and pores having a diameter of 10-500 micrometers that permit growing meningeal tissue to infiltrate said matrix, said matrix being substantially free of non-collagenous proteins and adapted to contact said damaged meningeal tissue to promote meningeal tissue growth through said matrix, and to be resorbed, wherein said certified process comprises:
cleaning extraneous matter from a native source of Type I collagen; washing said cleaned collagen containing material; comminuting said washed collagen containing material; digesting said comminuted collagen containing material with a proteolytic enzyme to substantially remove elastin and non-collagenous impurities which can cause antigenic activity and to swell said collagen; inactivating said proteolytic enzyme; washing said enzymatically digested collagen containing material to substantially remove excess enzyme and non-collagenous protein impurities; alkalinizing said collagen containing material to a pH of about 13 to about 14, at a temperature of about 25ºC to about 30ºC for a period of about 35 to about 48 hours, to substantially remove contaminating glycoproteins and lipids; neutralizing said alkalinized collagen containing material with an acid; washing said neutralized collagen containing material; acidifying said washed and neutralized collagen containing material to a pH of about 2 to about 3 to further swell said material, wherein said acidifying does not employ an acid that causes substantial cross-linking of collagen; homogenizing said acidified collagen containing material; filtering said homogenized collagen containing material to remove unswollen, noncollagenous material from collagen fibers; and collecting said filtered collagen fibers for use in said matrix,
in the manufacture of a medicament for promoting meningeal tissue growth to replace a damaged meningeal tissue. (my emphasis) The interpretation of the term “certified” was decisive for the outcome of the appeal: [5] It is not disputed by the [patent proprietor] that the application as filed does not contain the term “certified”, neither to qualify “collagen” nor to qualify a “process of preparation” therefor. [6] The pivotal question in the present appeal is therefore what the technical information embodied in this feature in the context of claim 1 of both requests is and whether this technical information is clearly and unambiguously derivable from the application as filed, account being taken of matter which is implicit to a skilled person in what is expressly mentioned therein.
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Interpretative Spotlight: “Certified”
K’s Law – The ebook
[7] The [patent proprietor] has referred to the dictionary definition of “certified” contained in document D27 which states: “certified (...) a. Made certain; assured; certainly informed; attested by certificate; furnished with a certificate. (...)”. The board is satisfied that the above dictionary definition reflects the common understanding of the term “certified” and also reflects the understanding of the person skilled in the relevant technical field. [8] The [patent proprietor] argued that, in the context of the description of the patent and the invention claimed, the skilled person would understand the term “certified” to have the meaning “assured”. [9] The board notes that the appropriate reference, in the context of A 123(2), is to the application as filed. The passages referred to in the patent are however identical to the corresponding passages in the application as filed. Therefore, for the sake of the [patent proprietor’s] argument in the present case, the board considers the reference to the patent as equivalent to a reference to the application as filed. [10] It was argued by the [patent proprietor] that, whereas previously used collagen sponges posed health hazards, the invention ensured the elimination of such health hazards and assured the safety of the product […]. The patent provided a dural graft with suitable safety margin to allow for a mass-marketable product enabling commercial scale use. The patent […] stated that: “(...) the method for producing the product of the present invention makes use of steps that are recognized as the most effective for inactivating viral and prion contamination. This gives the product a very high safety level while eliminating the inflammatory response. That is, the method for producing the product of the invention provides a product that is substantially free of viruses and prions without being physiologically incompatible” (emphasis added by the board). The subsequent disclosure […] of the patent provided detailed information on two different processes for obtaining such collagen that was assured to be physiologically compatible and substantially free of viruses and prions. Accordingly, it was clear and unambiguous to the skilled person that following the steps of these methods was an assured way to achieve the desired result of obtaining a very high safety level collagen sponge with respect to physical compatibility and inactivation of viruses and prions without there necessarily being any actual certificate to that effect. The patent did furthermore not disclose an additional limitation requiring that some governing body issue a certificate. [11] The board agrees with the [patent proprietor] that the methods as disclosed in the application as filed (and the patent) may “assure” the skilled person that the collagen produced conforms certain safety (e.g. substantially free of viruses and prions) and physiological (e.g. free of inflammatory response) criteria […]. However, it has not been contested by the [patent proprietor] that the technical field of pharmaceutical products and their production methods - also in the field of neural surgery - is highly regulated and that these products and methods are subject to a multitude of prescribed “good manufacturing practices” and certification schemes ensuring technical compliance. The board therefore considers that a skilled person when confronted with the feature “certified” in the context of the claimed invention would, rather than interpreting the term in the restrictive manner advocated by the [patent proprietor], also consider the two meanings disclosed in document D27 involving a certificate (“attested by certificate” and “furnished with a certificate”). [12] It is for the present decision irrelevant what the precise nature of a certification is. However, it is evident, as the respondent has argued that a variety of additional parameters can be considered for certification such as those mentioned in […] the patent, i.e. degree of purity, amount of endotoxins, fat content, hydroxyproline content or ash content or e.g. concerning the nitrogen content, the amide content, the amino acid analysis, the particular amino acid content (such as glycine or hydroxylysine content), the heavy metal content, the source of the collagen, the age of the source, the content of non-collagenous proteins etc. [13] The board concludes that, in the context of claim 1 and with reference to point 7, above, the feature “certified” conveys in itself technical information to the skilled person, including the reference to a certificate, which goes beyond what results from operating the “recognized” methods referred to in the description and which information is not derivable in a clear and unambiguous manner from the application as filed. [14] In the present circumstances, the board follows the rationale of decision T 1082/02 [3.8] [sic, this should read T 1018/02] that “[a]lthough a claim must not be interpreted in a way which is illogical or does not make any sense, the description cannot be used to give a different meaning to a claim feature which in itself imparts a clear credible technical teaching to the skilled reader. This also applies if the feature has not been initially disclosed in the form appearing in the claim.”.
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Interpretative Spotlight: “Certified”
K’s Law – The ebook
[15] Accordingly, the term “certified” introduces into the claims information which the skilled person could not derive directly and unambiguously from the application as filed. Hence, the amendment constitutes added matter (A 123(2) EPC; A 100(c) EPC). [16] The [patent proprietor] has furthermore argued, with reference to A 69, that a skilled person should try, with synthetical propensity, i.e. “building up rather than tearing down”, to arrive at an interpretation of the claim which was technically sensible and took into account the whole disclosure of the patent (see Case Law of the Boards of Appeal, 6th Edition, Section II.B.5.1). The board agrees that the claims must be interpreted by a “mind willing to understand” and not by “a mind desirous of misunderstanding”. However, this is understood to mean only that technically illogical interpretations should be excluded (see e.g. T 190/99 and T 1408/04). The board furthermore considers that a “mind willing to understand” does not require that a broad term needs to be interpreted more narrowly, but instead that a broad term should be understood to include all technically logical meanings, which for the present case includes those set out in points [12] and [13], above. [17] In view of the foregoing finding also the [patent proprietor’s] argument that the addition of the term “certified”, as properly construed, did not provide a technical contribution to the invention because it merely referred to a limitation that was otherwise expressly set forth in the claims, i.e. that a process be utilized to ensure physiological compatibility and substantial inactivation of viruses and prions, must fail. [18] In view of the foregoing considerations the board decided that claim 1 of both the main request and auxiliary request 1 do not comply with the requirements of A 123(2) EPC (A 100(c) EPC). Should you wish to download the whole decision (T 1582/08), just click here. The file wrapper can be found here. Z 3.3.04, Spotlight, Claim Interpretation, A 123(2)
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T 1932/09 – Speculation?
K’s Law – The ebook
T 1932/09 – Speculation? 1 Aug 2013
One of the more unpleasant experiences of an in-house patent attorney is to be confronted with prior art filed by individual inventors the subject-matter of which cannot possibly work and has never been reduced to practice, but which nevertheless affects the patentability of the invention you have to protect. It is not easy to prove that something does not work, and you certainly have to provide good evidence, as the present decision illustrates. Claim 1 of the main request on file read: 1. A swallowable capsule (10) for in vivo imaging of the gastrointestinal tract, said capsule (10) comprising an optical window (21), the capsule comprising: at least one CMOS imaging camera (24); two illumination sources (23) for illuminating a gastrointestinal tract site; an optical system (22) co-planar with said illumination sources (23) for imaging the gastrointestinal tract site onto the CMOS imaging camera (24), the optical system (22) being separated from the optical window (21), the CMOS imaging camera (24) imaging the site via the optical window (21) and via the optical system (22), and the illumination sources (23) being disposed on either side of said optical system (22) and illuminating the site directly via the optical window (21) and not via the optical system (22); and a transmitter (26) for transmitting an output of the CMOS imaging camera (24). [2.1] Document D7 is considered as the closest prior art. D7 discloses a swallowable capsule for in vivo imaging of the gastrointestinal tract […] comprising an imaging sensor […], two light sources […], a focussing lens […] for imaging the gastrointestinal tract site onto the imaging sensor […], and a transmitter […] for transmitting an output of the imaging sensor […]. […] [2.2] Consequently, the swallowable capsule of claim 1 of the main and first to third auxiliary requests differs from that of D7 in that the capsule comprises a CMOS imaging camera. [2.3] Hence, when attempting to reduce the capsule of D7 to practice the skilled person needs to solve the objective technical problem of finding a suitable imaging photodiode sensor for endoscopic imaging. [2.4] Document D2 discloses a large variety of endoscopic imaging devices […] utilising as an imaging sensor a photodiode-based CMOS imaging chip, or CMOS imaging camera […]. D2 explains that such an imaging camera has the benefit of being very compact and having low power requirements […]. These are in fact the same technical effects which the application aims to achieve by using a CMOS imaging camera […]. [2.5] Hence, the skilled person faced with the problem of reducing to practice the capsule of D7 would readily consider the teaching of D2 and thus devise the imaging sensor of D7 (in particular in its embodiment as a linear array) as a CMOS imaging camera. Thereby, the skilled person would arrive at the claimed subject-matter without exercise of an inventive step. [2.6] In its first line of argument, the [applicant] argued that D7 did not provide the skilled person with an enabling disclosure, so that D7 should not be considered as the closest prior art. [2.6.1] According to A 54(2), “the state of the art” comprises “everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application”. It is established jurisprudence (see e.g. T 230/01 [5.2] and decisions cited therein) that a document normally forms part of the state of the art, even if its disclosure is deficient, unless it can unequivocally be proven that the disclosure of the document is not enabling, or that the literal disclosure of the document is manifestly erroneous 290 | 3398
T 1932/09 – Speculation?
K’s Law – The ebook
and does not represent the intended technical reality. Such a non-enabling or erroneous disclosure should then not be considered part of the state of the art. [2.6.2] At the oral proceedings (OPs) the [applicant] no longer disputed that it was physically possible to construct the device disclosed in D7, but it was alleged that D7 contained insufficient information to render the device workable for imaging the intestine. In this respect, the [applicant] mainly contended that it was impossible to control the rotation of the capsule with an external magnetic field and to determine its rotational and translational positions in a sufficiently precise way to create a meaningful image. The Board finds however that document D7 in fact basically discloses how the capsule is rotationally and axially moved in an external magnetic field controlled by three orthogonal coils […], and it also discloses how the position of the capsule is determined using three orthogonal dipoles in the capsule […]. Therefore, in the Board’s view, the alleged insufficient precision or quality of the produced image as perceived by the [applicant] falls short of unequivocally proving the alleged speculative nature of D7. The Board considers moreover that since the illumination sources in D7 are provided precisely for illuminating the site of the intestinal wall being imaged, the [applicant’s] allegation that the device in practice only produced completely dark image points is unconvincing. In the absence of any further convincing argument or evidence, the Board could also not accept the [applicant’s] initial allegation that the skilled person would not know how to construct the capsule with a freely rotatable inner housing within the outer shell H as disclosed in D7 […]. At the OPs the [applicant] did indeed accept that it was physically possible to construct the device disclosed in D7 (but not with the necessary image precision, as discussed above). [2.6.3] The Board consequently finds that the [applicant’s] submissions do not contain sufficient evidence to unequivocally prove that D7 is indeed speculative, i.e. not enabling. It is thus not incumbent on the EPO to prove the contrary of what the [applicant] has merely alleged. The Board thus reaches the conclusion that document D7 is to be taken into consideration as the closest prior art. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 578/10 – Customary
K’s Law – The ebook
T 578/10 – Customary 31 Jul 2013
In this case the Board had to review the conclusion of the Opposition Division (OD) that the alleged prior use had not been made available to the public. This alleged prior public use was part of the “Colorado project” in which Porsche and Volkswagen jointly developed their all-terrain vehicles Cayenne and Touareg. In the framework of this project the Autoliv company had transferred data to the J&S company (i.e. the opponent), which used the data to modify an all-metal deflector (Ganzmetallumlenker) for a seat-belt so that it would fit into a VW Touareg. *** Translation of the German original *** [4] The [opponent] has attacked the auxiliary request on the ground of lack of novelty over the alleged prior public use E6. [4.1] The public availability (Offenkundigkeit) of the prior use (E6) cited by the [opponent] during the opposition proceedings has not been proven. Thus E6 is not state of the art within the meaning of A 54(2). [4.2] The [opponent] explains that there was no implicit secrecy agreement because such an agreement was only concluded for strategically important projects. The Board does not follow this reasoning and essentially endorses the opinion of the OD according to which the Colorado Project K40 all-metal deflector (cf. E6) was a development partnership of the companies VW, Porsche, Autoliv and J&S. It is part of the customs of the automotive industry that such developments that refer to concrete vehicle projects are subject to an implicit [duty to observe] secrecy. Thus the question of whether the declaration of secrecy made by the collaborators of the Autoliv company when they entered the VW premises also obliged these collaborators to secrecy with respect to the objects presented by J&S on the VW premises. Also, the Board is of the opinion that the extent of such a project as such does not allow to draw conclusions on the question that is to be answered here, i.e. public availability. Therefore, the statement of the [opponent] according to which the project “All-metal deflector Colorado” corresponded to a mere adaptation of an existing deflection fitting by J&S without any strategic importance, is not decisive. [4.3] The [opponent] further explains that the cover and the adaptor as shown on page 13 of E6 had not been part of the Colorado project; the project only concerned the all-metal deflector. J&S had developed the cover and the adaptor as an add-on, without order or payment. Thus this part of the presentation of March 20, 2003, could not be covered by any [duty to observe] secrecy. VW, Porsche and Autoliv were potential customers of J&S for the one-part cover and the adaptor. The Board does not follow this reasoning. There are no clear indications that allow to see that subsequent to the presentation of pages 1 to 12 of E6 by J&S on March 20, 2003, the implicit duty to observe secrecy […] had come to an end. Page 13 is part of the assembled document (Konvolut) “Implementation Study All-Metal Deflector in the Colorado Set K40” the pages of which are consecutively numbered, which, according to the [opponent] had been presented on the VW premises on March 20, 2003. The objects shown on page 13 are vehicle specific, too, and [their development] was triggered by the Colorado project for an all-metal deflector. The Board is of the opinion that the arguments of the [opponent], according to which there was neither an order nor a payment for this project, do not constitute criteria for the existence or absence of a duty to observe secrecy. Even if it was true that there was no order for the one-part implementation of the cover and the adaptor, such an over-achievement (Übererfüllung) of an order is customary in order to convince a client of the high motivation and performance of the contractor. This does not mean, however, that there was no duty to observe secrecy for this part, and there is no indication that the nature oft he presentation had changed between the projection of page 12 and the projection of page 13 of E6. Moreover, the Board is of the opinion that it is not relevant whether the draft on page 13 was finally realized. At the time of the presentation page 13 of E6 still was an integral part of the project for which J&S had been awarded a contract.
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T 578/10 – Customary
K’s Law – The ebook
[4.4] Furthermore, the Board is of the opinion that the argument of the [opponent] according to which the very fact that Autoliv had filed an application for IP rights (Schutzrecht) for a similar object subsequent to the presentation of the all-metal deflector on March 20, 2003, proved that the presentation could not have been confidential, does not prove anything. It is customary to keep [information] confidential until an application for IP rights has been filed. Also, the decision T 292/93 invoked by the [opponent] is not relevant. The facts of that case concern a demonstration for potential customers on the premises of a company affiliated with the opponent. Both the opponent and the company affiliated to it were interested in presenting the object disputed in T 292/93 to potential customers. In the present case, however, the presentation of March 20, 2003, was part of a common vehicle project. For the above reasons the Board is of the opinion that there was no prior public use, because the presentation according to E6 has not been made publicly available. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 862/10 – Look At Me
K’s Law – The ebook
T 862/10 – Look At Me 30 Jul 2013
This is an examination appeal. Claim 1 of the main request read : A
notification
system
(120),
comprising:
an information display object (160) that presents summarized notifications (124); and an information controller (130) that receives attentional inputs associated with a user to dynamically generate the information display object (160) on one or more display screens (150, 170) in order to facilitate user processing of the summarized notifications (124); wherein the information controller is configured to control positioning of the information display object by dynamically moving the display object closer to the user’s focus of visual attention if a notification is determined to be urgent, and wherein the user’s focus of visual attention is determined by at least one of determining the current cursor position, determining the place of an active cursor, using at least one head or gaze tracking component, using an attention model and determining the user’s activity or other input about focus of visual attention including gaze and pose information. The Board found this request to lack inventive step : Interpretation of claim 1 [3.1] During the oral proceedings (OPs), the appellant argued that the expression “dynamically moving the display object” implies a smooth movement, not a “jump”. However, the board considers that there is a priori no reason for such an interpretation and that, in fact, the description of the present application explicitly includes both possibilities of mapping a location either smoothly or in a step-function manner, i.e. by “jumping” in a noncontinuous manner; […]. According to the board, the broader interpretation given in this description passage is the one that should apply. Difference with the closest prior art [3.2] The board considers, and the appellant has never disputed, that D1 represents the closest prior art for the subject-matter of claim 1. D1 discloses a notification system […], comprising an information display object that presents summarised notifications […] and an information controller […] that receives attentional inputs associated with a user […] to dynamically generate the information display object on one or more display screens in order to facilitate user processing of the summarised notifications […]. This means that the following features distinguish the subject-matter of claim 1 from the disclosure of D1: (1) The information controller is configured to control positioning of the information display object by dynamically moving the display object closer to the user’s focus of visual attention if a notification is determined to be urgent. (2) The user’s focus of visual attention is determined by at least one of determining the current cursor position, determining the place of an active cursor, using at least one head or gaze tracking component, using an attention model and determining the user’s activity or other input about focus of visual attention including gaze and pose information. Inventive step, A 56 EPC 1973
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T 862/10 – Look At Me
K’s Law – The ebook
[3.3.1] Looking first at the distinguishing feature (1), it is noted that it is largely similar to what was recognised in the appealed decision as distinguishing the subject-matter of claim 1 of the refused main request from the disclosure of D1. In the appealed decision […], that feature was simply dismissed as non-technical and it was therefore concluded that there was no inventive step. The board however considers that feature (1) needs to be analysed in more detail. The display of an object near the centre of visual attention of a user (within the “foveal vision”), so that it is more-or-less guaranteed to be seen immediately, or its display simply within the visual field of the user, so that it can be seen, may well be seen as technical effects as compared to arbitrary placement on the screen or on one of a plurality of screens. Thus measures to assess where the user is looking and to place a display object in the light of that assessment do qualify as contributing to a technical effect. However, the board notes that in the case of one screen it is a matter of experience that the whole screen is normally within the field of vision of the user. Further, displaying a value assigned to an object by means of its relative positioning, or by moving it on the screen, is clearly a presentation of information. Reference is made to T 1143/06, as well as to T 1741/08, from this board in a different composition, which discusses the case law in this area, including the case cited by the appellant in the grounds of appeal, T 643/00. The particular effects of the claimed invention put forward by the appellant, “minimising information overload and distraction”, can not be considered technical in nature according to the case law, being determined by psychological factors and typical to the question of how to present information in a particular context. Overall the board judges that determining (or attempting to determine) a user’s visual focus of attention as a point on a screen and displaying objects in positions relative to that point can be considered to have a technical effect, but that the particular choice of where to display an object dependent on a value assigned to that object (its “urgency”) cannot be. Thus for the question of inventive step the critical question is whether it would be obvious for the skilled person to adapt the notification system of D1 to take account of the visual focus of attention of the user when placing a notification on the screen. In D1, the choice of when and how to display messages is based on their priority and on the state of the user (see abstract) and may use a different size and either a central or a peripheral location on a screen for a document or alerting window […]. In D1, the “attentional focus” of a user indicates the activity or computer application on which the user is focused. It determines whether the user is “amenable to receiving notification alerts”, in other words whether the user can be disturbed. In D1 the focus of attention can also be the focus of visual attention, viz. when the user is focusing on some application […], which will necessarily be at a particular position on the screen. Given that D1 already clearly considers the question of how to present notifications in such a way that high priority messages attract attention, a skilled person will normally be tempted to continue along the same line, i.e. to ensure that urgent messages will receive even more attention. One way of grabbing the user’s attention which will naturally come to mind is to place the urgent information in the user’s focus of attention (visual or otherwise). Such attention grabbing is in fact part of human nature. For example, when a mother wants to attract the attention of her child which has totally immersed itself in a television programme, she may decide to stand in front of the television, i.e. in the child’s “focus of visual attention”. The system of D1 already contains the necessary means to determine the user’s focus of visual attention (viz. the application on which the user is focusing at a given moment; […]) and it will be a matter of trivial implementation for the skilled person to use these means to determine the user’s focus of visual attention and to place an urgent message, e.g. from the periphery, at that focus of visual attention. Although it is not necessary to discuss the further issue of changing the position of messages according to their urgency, as argued above, the board also notes that in as much as D1 discloses placing non-urgent messages at the edge of a screen and urgent messages at the centre, it is also considered obvious to move a message to a position central to the focus of visual attention if its priority/urgency is increased. As regards the expression “dynamically moving the display object”, the board considers that this expression covers a “jump” from one place to another, according to the interpretation that should be given to the word “dynamic” following [3.1] above. In the remainder of this section, however, the board assumes, for the sake of argument, that the expression is somehow changed to reflect the meaning given to it by the appellant during the OPs, i.e. that it implies a continuous movement. The board already judged above that choosing the location of the display object in function of the urgency of the message is non-technical and hence does not contribute to the presence of an inventive step. The only matter left to consider is therefore whether some effect may be caused by the continuous nature of the movement itself, even if, as was argued by the appellant during the OPs, any such effect would only be a side-effect. Leaving aside the normal physical changes that would occur as a consequence of the inherent technical nature of a computer display, e.g. changes in the intensity of various pixels, the only effect that could possibly be caused by a continuous movement of the display object is to attract the attention of the person looking at the display and 295 | 3398
T 862/10 – Look At Me
K’s Law – The ebook
present information to him or her that a certain message is urgent. It may also imply a kind of time limit for reacting (before the object reaches the focus of attention). However this is also only a presentation of information; the application does not include any disclosure of any technical consequences of reacting or not within this implied time limit. In other words, continuously moving the display object can serve no other objective purpose than that of presenting information as such. It therefore produces no further technical effect (i.e. no technical effect apart from the normal physical changes which inherently take place in a computer display) and does not contribute to the presence of an inventive step. [3.3.2] Feature (2) includes several alternatives: the user’s focus of visual attention is determined by any of a number of parameters, including “other input about visual attention”. This means that it clearly also includes the possibility of determining the user’s focus of visual attention by establishing which application is currently receiving the focus of the user. This possibility is however made obvious by D1, as already covered by the reasoning given in [3.3.1] above. [3.3.3] The subject-matter of claim 1 of the main request is therefore not inventive (A 56 EPC 1973). [3.4] For this reason, the main request is not allowable. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2284/09 – Not A Repository
K’s Law – The ebook
T 2284/09 – Not A Repository 29 Jul 2013
This is an appeal filed after the Opposition Division had revoked the opposed patent. Claim 1 of the main request was identical to claim 1 as granted and read (the amendments with respect to claim 1 as filed are marked): Process for the preparation of an odour-lean polyether polyol from an unneutralised polyether polyol starting product which is obtained by reacting a starting compound having a plurality of active hydrogen atoms with one or more alkylene oxides, which process comprises consists of the steps of: (a) contacting the neutralised or unneutralised polyether polyol product with an excess an acid having between 0.001 and 0.5 mole of free acid per kg of polyether polyol which acid has a pKa of less than 5, preferably of less than 3 at a temperature of 80 to 130°C under hydrolysis conditions, (b) contacting the reaction mixture with water at a temperature of 80 to 130°Cunder hydrolysis conditions, and (c) recovering the odour-lean polyether polyol. Claim 1 of the second auxiliary request read (amendments with respect to claim 1 of the main request are marked): Process for the preparation of an odour-lean polyether polyol from an unneutralised polyether polyol starting product which is obtained by reacting a starting compound having a plurality of active hydrogen atoms with one or more alkylene oxides, which process consists of the steps of: (a) contacting the unneutralised polyether polyol product with such amount of acide that the amount of free acid will be between 0.001 and 0.5 mole of free acid per kg of polyether polyol which acid has a pKa of less than 5, at a temperature of 80 to 130°C, (b) contacting the reaction mixture of step (a) with water at a temperature of 80 to 130°, wherein such amount of water is added that a two-phase system can be formed, and (c) recovering the odour-lean polyether polyol. The Board found the main request not to comply with the requirements of A 123(2): [2.1] Claim 1 as granted specifies in step (a) contacting the unneutralised polyether polyol with a defined, fixed amount of free acid, namely between 0.001 and 0.5 mole/kg of polyether polyol. Claim 1 of the application as filed specifies in part (a) contacting the neutralised or unneutralised polyether polyol with an excess of acid. No numeric quantities of acid are given in any of the claims of the application as filed. According to page 4 lines 10-30, in particular lines 16-23 of the application as filed with respect to the term “excess” it is stated: “In practice the term “excess” in relation to the acid added in step (a) refers to such amount of acid that the amount of free acid will be between 0.001 and 0.5 mole acid per kg polyether polyol, preferably between 0.005 and 0.2 mole acid per kg polyether polyol. The expression “free acid” as used herein refers to the acid which has not reacted with any component present in the reaction medium”. The indicated passage continues to explain that in the case of unneutralised polyether polyol, i.e. that which is defined in claim 1 of the main request, the acid added would initially react with the potassium ions from the 297 | 3398
T 2284/09 – Not A Repository
K’s Law – The ebook
initiator present in the polymer. Only after these potassium ions were neutralised would any acid added remain present as “free acid”. Thus from the indicated passage of the application as filed it emerges that the term “excess acid” is employed to denote the total amount of acid added whereby the definition of said amount is a combination of two quantities defined in different terms:
an amount necessary to neutralise the unneutralised polyether polyol and an extra amount so that the amount of acid remaining after neutralisation is from 0.001 to 0.5 moles of acid per kg of polymer.
The first amount of acid is thus defined in functional or relative terms, namely the amount of acid needed to neutralise the potassium ions remaining from the initiator. The second amount of acid is defined in absolute or quantitative terms and is the amount of acid above (in excess of) the amount required for neutralisation, i.e. the further amount required in order to yield a given acid content (“free acid”) in the neutralised polyether polyol. The amount of “free acid” - which is between 0.001 and 0.5 mole/kg - is thus the amount over and above the quantity of acid necessary to effect neutralisation of the potassium. From the above it emerges that, contrary to the arguments of the appellant, the terms “excess” and “free acid” as employed in the original application are neither synonymous nor interchangeable. [2.2] In contrast to the disclosure and definition of the application as filed as discussed in the preceding section, claim 1 of the patent as granted requires the addition to the unneutralised polyether polyol of a defined, fixed amount of “free” acid i.e. between 0.001 and 0.5 mole/kg independently of any functional or relative terms i.e. regardless of whether neutralisation is effected or whether the maximum amount of acid permitted is sufficient to accomplish neutralisation of the polyether polyol. In the light of the considerations set out in section [2.1] above, with respect to the amount of acid to be added, as denoted in the application as filed by the differing meanings of the terms “free” and “excess” acid, it emerges that there is no disclosure in the application as filed of a process whereby a single, numerically fixed amount of acid is added to the unneutralised polyether polyol. From the difference in wording of claim 1 of the main request as compared to the disclosure of the application as originally filed it emerges that the absence of the functional or relative limitation of the application as filed from the definition of the amount of acid to be added has the consequence that claim 1 of the main request defines a fundamentally different process from that specified in the application as originally filed. [2.3] The arguments of the appellant that the skilled person would consult the description in order to ascertain what the claim is intended to specify presupposes that there is a reason to consult the description, e.g. some prima facie unclarity or inconsistency in the claim. This is however not the case. On the contrary, the claim of the patent as granted provides a coherent, cogent technical teaching and does not as it stands present the reader with any aspect that would indicate a need for interpretation or clarification. Nor has the appellant explained in what manner the wording of the claim would be deficient and therefore in need of interpretation. [2.4] The conclusion is that claim 1 of the main request does not meet the requirements of A 123(2). The main request is refused. The first auxiliary request was dismissed on the same grounds. The Board then dealt with the second auxiliary request: A 123(2) [4] Claim 1 employs the wording of page 4 lines 10-30 of the application as filed with respect to the definition of the amount of acid. Consequently the requirements of A 123(2) are satisfied. A 123(3) [5.1] As explained with respect to the main request (section [2.1], above), according to the patent as granted it was required to add a defined, absolute, amount of free acid, namely between 0.001 and 0.5 moles of acid per kg of polyether polyol.
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T 2284/09 – Not A Repository
K’s Law – The ebook
According to claim 1 of the second auxiliary request however, and as explained in section 2.1 above, the amount of acid to be added is made up of two quantities, namely that required to effect neutralisation and an extra amount (defined in absolute terms) in order to provide the amount of acid remaining in the polyether polyol after neutralisation. Thus the amount of acid which claim 1 of the second auxiliary request requires is increased, compared to the amount of acid required by granted claim 1, by the amount needed to effect neutralisation. Consequently claim 1 of the second auxiliary request confers protection on a process involving addition of a different, greater amount of acid than the claim of the patent as granted. The effect of this amendment of the wording of part (a) of claim 1 is therefore, to enlarge the scope of protection conferred by the claim as compared to the patent as granted. This contravenes A 123(3). [5.2] The appellant has relied upon decision T 108/91 according to which, in the case of inconsistency between the claim and the totality of the disclosure it is permissible to refer to the description and, pursuant to A 69(1), to rely on the disclosure of the description to amend the claim. The findings of T 108/91 however are not applicable in the present case since, as explained with respect to the main request, there is no inconsistency between the claim of the granted patent and the description. In particular the examples of the patent fall within the scope of the claim as granted whereas in the case underlying T 108/91 all the examples were outside the scope of the claim. Furthermore decision G 1/93 of the Enlarged Board of Appeal (EBA), which decision refers inter alia to T 108/91, ruled that in the case of a non-disclosed limitation being introduced during examination proceedings (as is the case here), it is not permissible to remove it when so doing would extend the scope of protection. In G 1/93 the role of A 69(1) is also considered and it is concluded that the description is to be used for assessing in particular sufficiency of disclosure and in determining the scope of protection conferred by the claims. However there is no finding in G 1/93 that supports the position of the appellant that the description may be used as a repository from which amendments to the claims can be derived even if such amendments would contravene A 123(3). Accordingly there is no basis in the EPC or in the case law of the EBA to support the position and approach of the appellant in relying on the description in order to render permissible an amendment to the claims of the patent as granted that results in change of the scope of protection. The second auxiliary request is refused. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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K’s Law – The ebook
Summer Time
Summer Time 27 Jul 2013
Dear all, I am off the Internet for about three weeks. I have scheduled posts so that the addicts among you will not have to suffer. However, I will not be able to react to comments, and messages sent to my mail address will remain unanswered for some time. Obviously, as I had to schedule in advance, my forthcoming posts will not deal with the (doubtlessy earthshaking) decisions published during my Internet abstinence period. You might want to have a look at Le blog du droit européen des brevets for fresher stuff. Please be well-behaved during my absence. Cheers oliver
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K’s Law – The ebook
Summer Time
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T 2165/08 – Risky Business
K’s Law – The ebook
T 2165/08 – Risky Business 26 Jul 2013
This decision on a revocation appeal contains (among other things) an interesting discussion of apportionment of costs. [45] A 104(1) provides that: “Each party to the opposition proceedings shall bear the costs it has incurred, unless the Opposition Division (OD), for reasons of equity, orders, in accordance with the Implementing Regulations, a different apportionment of costs.” That provision applies equally to opposition appeal proceedings by virtue of A 111(1). In such proceedings, Article 16(1) RPBA also applies and this provides that: “(1) Subject to A 104(1), the Board may on request order a party to pay some or all of another party’s costs which shall, without limiting the Board’s discretion, include those incurred by any (a) amendment pursuant to Article 13 to a party’s case as filed pursuant to Article 12(1); (b) extension of a time limit; (c) acts or omissions prejudicing the timely and efficient conduct of oral proceedings (OPs); (d) failure to comply with a direction of the Board; (e) abuse of procedure.” To decide on an apportionment of costs therefore, the board must (i) receive a request therefore, (ii) be satisfied that there are reasons of equity to depart from the usual régime that each party bears its own costs, and (iii) be satisfied that the costs in question were incurred in one of the five ways listed in Article 16(1) RPBA although, as the words “without limiting the Board’s discretion” make clear, the list is not exhaustive. [46] As regards (i), the [opponent] made a request for apportionment of costs in its letter dated 22 February 2013 and maintained it during the OPs. As regards (ii), the board considers that “for reasons of equity” indicates that some circumstances of the case call for an apportionment different from the normal régime and, as indicated by the case-law (see generally “Case Law”, 6th edition 2010, pages 740 to 763), this means costs should be awarded against a party which can be held to have caused another party unnecessary expense that could have been avoided with normal care or by compliance with prescribed or established procedures. As regards (iii), this clearly requires an examination of each apportionment request in the circumstances of the particular case. As a practical matter, (ii) and (iii) will usually need to be considered together. [47] In the present case the [opponent] seeks an apportionment of costs because the [patent proprietor] filed its auxiliary requests 1 to 3 and document D51 on 6 February 2013 – one month before the OPs – and document D52 on 12 February 2013 – which was even closer to the OPs. The [opponent] says this caused it unnecessary work, and thus consequentially unnecessary additional costs, which would have been avoided if the requests and evidence in question had been filed, as they should have been, with the statement of grounds of appeal. The [patent proprietor] says the new requests and documents were filed as a response to the board’s preliminary opinion of 30 January 2013. [48] In this respect the facts as shown by the file are against the [patent proprietor]. As regards the requests, in its preliminary opinion the board raised no arguments or issues which were not already dealt with in the opposition proceedings so the requests filed on 6 February 2013 could, and to comply with Article 12(2) RPBA should, have been filed with the statement of grounds of appeal dated 17 December 2008. In fact the [patent proprietor] then filed a main and four auxiliary requests which were all unchanged from requests filed before the opposition division. It seems clear that the [patent proprietor] made a conscious decision, when substantiating its appeal, to pursue the requests which did not succeed at first instance and not to file any additional requests. In doing so it took the double risk that, if it changed its mind later and filed further requests in addition or in substitution, such requests might not only be inadmissible (see Article 13 RPBA) but that, depending on the circumstances, the [opponent] might seek an apportionment of costs. Inevitably, the later in time that such further requests are filed, the greater both those risks become.
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T 2165/08 – Risky Business
K’s Law – The ebook
[49] In the event, the [patent proprietor] filed the requests one month before the OPs, in an appeal which had then been pending for four years, and both risks materialised. As regards admissibility of the late-filed requests, the [patent proprietor] was relatively fortunate – the [opponent] did not object to the new main request which had been presaged by the previous auxiliary request 4 and the board has found the new auxiliary request 3 admissible; but as regards the other late-filed requests, there is no plausible or adequate explanation for the late filing. It is clear that, if they had been filed with the grounds of appeal, the [opponent’s] representative could have considered them with the other requests filed then, taken its client’s instructions on them then, and dealt with them together with the other requests in the reply. By filing them much later, the [patent proprietor] made the [opponent] repeat that process just for the additional requests which will inevitably have lead to additional and avoidable costs. To have caused that was inequitable behaviour (see point [46] above). The costs in question have been incurred by an amendment to the [patent proprietor’s] case, and thus fall within Article 16(1)(a) RPBA. Although it is unnecessary to decide the point, the board can see it could also be argued that in all the circumstances the late filing just before the OPs of new requests replacing those on file from the outset of the appeal was an abuse of procedure within Article 16(1)(e) RPBA. [50] Turning to the late-filed documents D51 and D52, the [patent proprietor] argued that these supported its case on inventive step. The [patent proprietor] also suggested […] that document D51 was filed “in view of the board’s preliminary comments regarding inventive step” and […] that document D52 was filed “in view of the [opponent’s] submissions filed with letter of 26 May 2009”. The [opponent] argued that the relevance of the documents had not been established and that no explanation for their late production had been offered. [51] The [patent proprietor’s] reliance on the board’s preliminary opinion leads to the same observation as in respect of the late-filed requests (see point [48] above): the board’s preliminary opinion raised no arguments or issues not already dealt with in the opposition proceedings so document D51 could, and to comply with Article 12(2) RPBA should, have been filed with the statement of grounds of appeal dated 17 December 2008. As regards the [patent proprietor’s] assertion that D52 was filed in response to the [opponent’s] reply of 26 May 2009, nearly four years earlier, this is in effect an admission of extremely late filing unaccompanied by any explanation why the document was not filed sooner. In the case of both documents there is no explanation why this evidence is so important that it should be admitted at the very last stage of the appeal proceedings. With respect to the [patent proprietor], the mere assertion that the documents support its case is otiose – it is axiomatic that any party considers that any item of evidence it filed supports its case just as it is self-evident that no party would file an item of evidence which did not support its case. NB: Rare word of the day: otiose (meaning ‘futile’, ‘pointless’ …). [52] It is clearly necessary for any party filing evidence in appeal proceedings after it has filed its grounds of appeal or reply to explain why it is doing so, if only because of the requirements of Article 13 RPBA and, at the risk of stating the obvious, that necessity is even greater when OPs have been appointed (see Article 13(3) RPBA). Thus, to file new documentary evidence one month before, or less than one month before, appointed OPs with no credible explanation why the evidence was not filed earlier is to run the same double risk of inadmissibility and costs mentioned above in relation to late-filed requests (see point [48]). In the present case the [patent proprietor] actually underlined the inadequacy of its explanation by stating, in respect of document D51 in its letter of 6 February 2013, “The implications of this post-filed evidence will be explained during the oral hearing”. No such comment was made of document D52 in the [patent proprietor’s] later letter of 12 February 2013 but, equally, no explanation beyond a reference to the [opponent’s] reply of 26 May 2009 was offered. [53] The board has no hesitation in finding this behaviour inequitable. The last-minute production of new evidence is not only discouraged by the rules of procedure (see Article 13(3) RPBA) but also inevitably causes additional work and cost for the party faced with it. In the present case, the absence of explanation, both of the evidence itself and of its late production, makes matters worse. It would always be unacceptable for a party to produce evidence without any explanation – unless conceivably its relevance is self-evident – why the evidence supports that party’s case. To produce evidence at the virtual end of the proceedings accompanied only by a statement that the explanation will be provided even later was not only discourteous but a clear, and apparently deliberate, attempt to frustrate the [opponent’s] preparation for the OPs. That was both an act prejudicing the efficient conduct of OPs and an abuse of procedure. In the board’s opinion, an apportionment of costs is appropriate under each of the provisions of Article 16(1)(a), (c) and (e) RPBA. [54] The [patent proprietor’s] remaining argument against any apportionment of costs, that it would create a precedent by limiting the procedural options of parties, is unsustainable. There is no question of this case being a precedent in the sense of being the first of its kind (see again “Case Law”, 6th edition 2010, pages 740 to 763). 303 | 3398
T 2165/08 – Risky Business
K’s Law – The ebook
Further, there is no question of inhibiting the future conduct of parties by limiting their procedural options which will remain exactly the same as before. Equally, in the future as before, parties must exercise their procedural options in such a manner that their conduct is not inequitable, otherwise they may incur orders for apportionment of costs. If the [patent proprietor’s] argument were correct, any party could behave as it wished without fear of any sanction in costs. That cannot be correct. The provisions of the law as to costs, like the provisions as to procedure generally, are designed to ensure fair procedural behaviour and the use of such provisions to sanction improper use of procedure should have no effect on the proper use of procedure by others in future. [55] Therefore, the board has decided for reasons of equity to order an apportionment of costs so that the [patent proprietor] pays the [opponent’s] costs incurred by auxiliary requests 1 and 2 and document D51 filed with the [patent proprietor’s] letter of 6 February 2013 and document D52 filed with the [patent proprietor’s] faxed letter of 12 February 2013. Such costs will be limited as required by R 88(1) and Rule 16(2) RPBA. Assessment of Costs [56] Before the close of the OPs, the board and the parties discussed the procedure for fixing costs once an apportionment has been ordered. In this respect, the following is added for the parties’ information. R 88 reads: “(1) The apportionment of costs shall be dealt with in the decision on the opposition. Such apportionment shall only take into consideration the expenses necessary to assure proper protection of the rights involved. The costs shall include the remuneration of the representatives of the parties. (2) The OD shall, on request, fix the amount of costs to be paid under a final decision apportioning them. A bill of costs, with supporting evidence, shall be attached to the request. Costs may be fixed once their credibility is established. (3) A request for a decision by the OD may be filed within one month of the communication on the fixing of costs under paragraph 2. The request shall be filed in writing and state the grounds on which it is based. It shall not be deemed to be filed until the prescribed fee has been paid. (4) The OD shall decide on the request under paragraph 3 without OPs.” This rule superseded R 63 EPC 1973 and references to the “registry” of the OD no longer appear. In the board’s opinion, references in R 88 to “the OD” must, for the purposes of costs to be assessed following an order in opposition appeal proceedings, be read as references to the board of appeal. It appears to the board that, since the apportionment has been dealt with in the present decision (see R 88(1)), a request to fix the costs, accompanied by a bill of costs and supporting evidence should be filed with the board, and the prescribed fee paid, by the [opponent] within one month of the deemed date of receipt of the communication notifying this decision. R 88(4) provides that there shall be no OPs. However, the board envisages offering the [patent proprietor] one month to comment on the request, bill of costs and supporting evidence before making a decision on the amount of costs. This is one more decision where the Board repeatedly cites certain pages of the Case Law Book (“pages 740 to 763”). I am not a big fan of citing “the Book” because the reader willing to check the reasoning of the Board has to read many pages, and filter out the relevant information. (Dare I say that such a citation is often otiose?) I for one would appreciate if the Boards cited the relevant decisions reported in the Book. Anyway, citing the Book by indicating page numbers is even worse because the three language versions of the Book obviously do not have the same information on the same pages. For instance, pages 740 to 763 of the English version correspond to pages 835 to 860 of the French version. Citing the relevant paragraphs is clearly more userfriendly. In the present case, “pages 740 to 763” corresponds to the entire chapter VII.C.7 dealing with apportionment of costs. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1814/11 – More On Synergy
K’s Law – The ebook
T 1814/11 – More On Synergy 25 Jul 2013
The patent proprietor filed an appeal against the decision of the Opposition Division to revoke its patent. Claim 1 as granted read: A fungicidal mixture, comprising (1) 2-[2-(1-chlorocyclopropyl)-3-(2-chlorophenyl)-2-hydroxypropyl]-2,4 triazole-3-thione (prothioconazole) of the formula I or its salts or adducts
dihydro-[1,2,4]-
and (3) picoxystrobin of the formula Ill
or its salts or adducts in a synergistically effective amount. The Board had to examine whether this subject-matter involved an inventive step. *** Translation of the German original ***
Problem [2.2] In view of document D1 the problem to be solved is to provide an alternative synergistically effective fungicidal mixture based on prothioconazole. Solution [3.1] The proposed solution consists in the composition of prothioconazole and picoxystrobin claimed in claim 1. [3.2] Considering the results presented in Tables 3 and 4 of the opposed patent, the Board assumes that the above mentioned problem was indeed solved. [3.3] However, the skilled person starting from document D1 and trying to solve the problem defined in point [2.2] did not have any good reason to mix prothioconazole with picoxystrobin as mentioned in document D1. It is true that document D2 discloses that picoxystrobin has some advantageous properties […] with respect to 305 | 3398
T 1814/11 – More On Synergy
K’s Law – The ebook
other strobilurins such as e.g. azoxystrobin and kresoxim-methyl known from document D1, but the document does not mention mixtures containing picoxystrobin and having a synergistic effect at all. Moreover, synergistic effects are unpredictable, i.e. when, as in document D1, a combination of two specific compounds has a synergistic effect, this does not mean that such synergy may also be expected when one of them is modified as to its structure. This can also be seen from the fact that document D1 discloses specific fungicides as constituents for the mixture (Mischungspartner) and not classes of fungicides. Thus the combination of prothioconazole and picoxystrobin as a synergistic mixture is not obvious for the skilled person from the teaching of documents D1 and D2. Documents D3 and D4, which have been disclosed in due time, concern a great number of fungicide mixtures containing picoxystrobin and one further active component, among which azoles […]. These mixtures are said to possibly possess a synergistic effect […]. However, these documents do not contain any further indications or examples in this respect. Moreover, prothioconazole is not among the listed active substances. Thus there is no indication for the skilled person that there could be a synergistic effect when prothioconazole and picoxystrobin are mixed. [3.4] The [opponent] expressed the opinion that in view of the commercial success of several strobilurins […] and the improved properties of picoxystrobin with respect to the commercial strobilurins […] there was a clear indication for the skilled person to combine prothioconazole and picoxystrobin with reasonable chances of success. This argument would be correct if the problem to be solved was merely to provide alternative fungicide mixtures. This is not the case here (see point [2.2]). The fact that picoxystrobin has properties that are improved over azoxystrobin and kresoxim-methyl […] does not allow to deduce that it also has a synergistic effect in a mixture with prothioconazole. Document D2 discloses experimental results relating to the activity of picoxystrobin in comparison with other known strobilurin derivates such as azoxystrobin and kresoxim-methyl, which are mentioned in document D1. Although the latter have a synergistic effect with prothioconazole […] this does not allow to draw the conclusion that picoxystrobin, despite its advantageous properties, will also have a synergistic effect when combined with prothioconazole. [3.5] The [opponent] further argued that it was obvious for the skilled person to use compounds of the same class, i.e. strobilurins, and to obtain the claimed mixture by applying the principle of trial-and-error. The Board does not fond this argument persuasive. Fungicidal compounds belonging to the same class do, as a rule, possess similar modes of action (Wirkmechanismen) and/or possibly similar chemical structures. However, this does not mean that when certain fungicidal compounds of the same class have a synergistic effect when combined with a certain fungicidal compound, all or most compounds of this class also have a synergistic effect with this particular fungicidal compound. As a rule, synergy is not predictable […] and, therefore, cannot be ascribed to any mode of action and/or structure. In the present case, starting from document D1 and without any knowledge of the invention, the principle of trial-and-error invoked by the [opponent] would boil down to testing mixtures of different fungicidal compounds with prothioconazole, without it being predictable for the skilled person whether a mixture would indeed have a synergistic effect. [3.6] The [opponent] has also stressed that according to the teaching of document D2 […] picoxystrobin was to be used in combination with other fungicides in different cross-resistant groups for controlling cereal diseases. This would be an incentive for the skilled person to combine picoxystrobin with other fungicides having a different mode of action. However, the passage cited by the [opponent] refers to particular cross-resistant groups (i.e. combinations of strobilurins with Famoxadone and Fenamidone). Moreover, as stressed by the [patent proprietor] [this passage] refers to the resistance of certain pathogens to strobilurins in this context. At best the skilled person can understand this to mean that a combination of strobilurins with a fungicide could be advisable if they are to be used against these particular pathogens. The skilled person does not find in this paragraph an incentive to use picoxystrobin for solving the problem mentioned in point [2.2]. [3.7] Thus the subject-matter of claim 1 involves an inventive step. […] The patent is maintained unamended.
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T 1814/11 – More On Synergy
K’s Law – The ebook
Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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J 20/12 – Withdrawn And Not Pending
K’s Law – The ebook
J 20/12 – Withdrawn And Not Pending 24 Jul 2013
Here is another decision of the Legal Board concerning a decision of the Receiving Section (RS) not to treat an application as a divisional application. The applicant boldly tried to apply G 1/09 to a withdrawal. The parent application had been unconditionally withdrawn on January 19, 2009, but on February 26, 2009, the appellant filed a request to correct this withdrawal on the grounds that an error had been made: it had intended to withdraw an entirely unrelated application. This request was ultimately denied by the Legal Board of Appeal (decision J 1/11), essentially because by the time the request for correction had been filed notice of the withdrawal had already been recorded in the European Patent Register (on February 6, 2009). Meanwhile, on March 10, 2009, that is, after the parent application had been withdrawn but while proceedings for correction of the withdrawal were pending, the appellant filed the divisional application to the withdrawn parent application. On October 27, 2011, the appellant was informed by the RS that the divisional application was not being processed as the parent application had been withdrawn. This view was confirmed by the decision of the RS of May 29, 2012, in which it was stated that, according to R 36(1) EPC, an applicant could only file a divisional application “relating to any pending earlier European patent application”. In the case at issue, the parent application was no longer pending as it had been unconditionally withdrawn. The applicant argued that when an application is erroneously withdrawn (as was said to be the case for the parent application) R 139 allows for the correction of errors. As at the time of the filing of the divisional application it had not been finally established whether the request for correction would be allowed or not, the parent application should have been considered as still “pending”. In support of its view, the appellant relied on decision G 1/09, as in the present case not all legal remedies had been exhausted when the divisional application was filed. In contrast thereto, decision J 4/11 could not apply, as that decision dealt with a case where the application was “deemed to be withdrawn” rather than withdrawn by the appellant. [1] The Board agrees with the appellant that the starting point of the legal analysis should be decision G 1/09. According to this decision, point [1] of the Reasons: “… the amended version of R 36 which entered into force on 1 April 2010 is still based on the principle that a divisional application may be filed ‘relating to any pending earlier European patent application’.” Point [3.1] of Reasons goes on to state that: “It is common ground that the EPC does not contain a definition of the notion ‘pending European patent application’. In particular, the EPC does not define the points in time at which the pending status of an application begins and ends in all possible situations. An interpretation of the expression ‘pending European patent application’ is therefore necessary.” As to this, according to point [3.2.4]: “… a ‘pending (earlier) European patent application’ in the specific context of R 25 EPC 1973 is a patent application in a status in which substantive rights deriving therefrom under the EPC are (still) in existence.” Point [4.2.1] then goes on to state that: “A 67(4) EPC 1973 clearly indicates until when such substantive rights deriving from a European patent application are in existence if a patent is not granted. In particular, it provides that the European patent application shall be deemed never to have had the effects of provisional protection when it has been withdrawn, deemed to be withdrawn or ‘finally refused’. … Substantive rights of the appellant under A 67 EPC 1973 may therefore continue to exist after refusal of the application until the decision to refuse becomes final (rechtskräftig, passée en force de chose jugée). Third parties using the invention before the decision to refuse has become final incur the risk of becoming liable under national law based on A 67 EPC 1973.” And, further, in point [4.2.3]:
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“A 67(4) … is a self-contained provision indicating the point in time at which substantive rights conferred by a European patent application and therefore its pending status must end. [4.2.4] From the above the Enlarged Board of Appeal (EBA) concludes that under the EPC a patent application which has been refused by the Examining Division (ED) is thereafter still pending within the meaning of R 25 EPC 1973 until the expiry of the period for filing an appeal and, on the day after, is no longer pending if no appeal is filed. The same conclusion applies to R 36(1) EPC 2000 both in its former and its current version.” [2] The subject matter of decision G 1/09 was a divisional application filed after a decision refusing the parent application had been rendered, but before the appeal period had expired. According to decision G 1/09, such a decision only became final after the appeal period had expired without an appeal having been filed. The reason for this could be found in the wording of A 67(4), which refers to an application that has been “finally refused”. Only after the expiry of the appeal period could it be said that the application was finally refused. The EBA did not deal with the other two alternatives of the above provision, namely an application that had been withdrawn or was deemed to be withdrawn. [3] Decision J 4/11 dealt with the case of a divisional application filed after the parent application was deemed to be withdrawn due to non-payment of the renewal fees. The Board in accordance with the above distinction made in A 67(4) noted that in such a case the withdrawal took place automatically on the occurrence of the relevant event (non-payment) and no decision of the Office was necessary to give effect to the withdrawal. Therefore, the case could be distinguished from the one in decision G 1/09 in that no adverse decision had been rendered. In such a case, the application was held to be no longer pending as of the date of the deemed withdrawal. [4] In the present case the Board is faced with the third kind of situation referred to in A 67(4), namely where the application is voluntarily withdrawn. The present case can therefore be distinguished from those in G 1/09 and J 4/11 but the principles established by those cases can nevertheless be applied to the present case. [5.1] As to the position immediately after the application was withdrawn and before any request for correction under R 139 was filed, the effect of the filing of the withdrawal was that the application was thereupon withdrawn. Such withdrawal took place without any action on the part of the Office. Prima facie, therefore, the application was thereafter no longer pending. [5.2] In writing, the appellant argued that the effect of a request under R 139 was that the withdrawal was thereupon ex post facto rendered only provisional […], so that the application was then still pending until a final decision on the request. [5.3] The logical consequence of this argument would be that an application would potentially remain pending ad infinitum after it was withdrawn, because there is no time limit placed on the right to make an application under R 139. The appellant did not maintain this position at the oral proceedings, but rather refined its argument by saying that an application should be considered pending at least in those cases where a request for correction was filed and where such request was not completely without merits. This was said to be true for the present case by virtue of what the appellant asserted to be the somewhat conflicting case law relating to correction under R 139. It was said that the application for correction was certainly not completely without merits because until the decision of the Board of Appeal on the request (decision J 1/11) it was not clear that rectification was no longer possible where the notice of withdrawal had been recorded in the European Patent Register, as opposed to its being published in the European Patent Bulletin […]. The appellant did not take a position on the status of an application before any such request is filed or where no request for correction is filed at all. [5.4] The Board would first remark that the argument appears to be without any legal foundation. It also does not deal with the position before a request for correction is made, nor where no such request for rectification is made at all, and so leaves these situations entirely open. Further, the distinction made is also wholly unworkable: there is no objective standard by which it can be judged whether a request for correction is “not completely without merits.” [5.5] Turning rather to the substance of the point, as already noted, the decision G 1/09 links the question of whether an application is pending with the existence of “substantive rights” in the patent application. [5.6] Decision J 4/11 dealt in detail with the issue of “substantive rights” in this context: “[5] The question is thus whether substantive rights deriving from the grandparent application were still in existence when the parent application was filed. The EBA did not give any 309 | 3398
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definition of the expression “substantive rights” in this context. The Board nevertheless extracts the following points from the EBA’s reasons: (a) “Substantive rights” in this context include the provisional protection conferred after publication of the application by virtue of A 67(1), which in turn refers to the protection conferred by A 64. See point [4.2.1] of the Reasons. The combined effect of these two articles is to provisionally confer on an applicant the same rights in the designated Contracting States as would be conferred by a national patent granted in those States. The Board will refer to these rights as the A 64 rights. (b) The EBA did not expressly say (and did not need to say) whether there might be other relevant types of substantive rights. (c) A patent application involves two different aspects. On the one hand a patent application is an object of property as set out in A 71 to A 74, conferring on the applicant, inter alia, the provisional A 64 rights. On the other hand it involves procedural rights which the applicant is entitled to exercise by virtue of A 60(3) EPC 1973. The expression “European patent application” may therefore stand for substantive rights as well as for procedural rights of the applicant. See point [3.2.1] of the Reasons. Since R 25(1) EPC 1973 (see now R 36(1)) refers to “any pending patent application” and not to pending proceedings before the EPO, it is not relevant for the purposes of R 25(1) EPC 1973 whether proceedings are pending before the EPO. Pending proceedings cannot be equated with a pending application. See points [3.2.2] and [4.2.5] of the Reasons. (d) A 67(4) provides for the point in time when the A 64 rights must end and thereafter are no longer still in existence. This is when, in the words of A 67(4), the application has “been withdrawn, deemed to be withdrawn or finally refused.” […] The prima facie effect of a deemed withdrawal on the A 64 rights [8] A 67(4) provides that a European patent application shall be deemed never to have had the effects set out in A 67(1) and (2) when it has been (a) withdrawn, (b) deemed to be withdrawn or (c) finally refused. The EBA in G 1/09 was concerned with the case of the refusal of an application by the ED: for the purposes of A 67(4), at what point in time is an application to be considered as “finally refused” where no appeal is filed against the decision refusing the application? The Board concluded that this is when the time limit for filing an appeal against a decision refusing the application expires, since it is at this point that the decision to refuse the application becomes final. The retroactive effect of a decision dismissing the appeal does not alter the pending status of the application. See points [4.2.1-2] of the Reasons. Up until this point a substantive right under the application therefore still subsists. This was sufficient to answer the question which had been referred to the EBA. [9] The present Board is concerned with a different case, namely a deemed withdrawal of an application. [10] A 67(4) provides that an application is deemed never to have had the effects provided for under A 67(1) and (2) when it is deemed to be withdrawn. The EBA took the position (point [4.2.3] of the Reasons) that A 67(4) is a self-contained provision indicating the point in time at which “substantive rights conferred by a European patent application and therefore its pending status must end.” […] [11] As to the point in time when this deemed withdrawal took place, A 86(3) EPC 1973 (see now A 86(1)) simply provides that if the renewal fee (and any additional fee) is not paid in due time, the application shall be deemed to be withdrawn. Although the applicant must be informed of the loss of rights (R 69(1) EPC 1973, see now R 112(1)) the withdrawal takes place at that point in time as a matter of law without any decision of the Office. As explained in G 1/90 [6], in such a case the loss of rights occurs on expiry of the time limit that has not been observed. See also G 4/98 [3.3]. [12] Prima facie, therefore, the A 64 rights under the grandparent application were no longer subsisting when the time for payment of renewal fee expired, which was before the date when parent application was filed. 310 | 3398
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The effect of the possibility (and the fact) of the filing of a request to grant re-establishment of rights [13] If the Board were to accept the appellant’s arguments, which are based on an analogy with the situation of “final refusal” of an application, it would follow that an application would remain pending after it had been deemed to be withdrawn for as long as the period for making a request to grant re-establishment of rights continued to run. Further, if and when such a request was made, the application would remain pending at least until the date when the request for re-establishment was finally determined. [14] By way, first, of a general remark, the wording in A 67(4) appears to the Board to have been chosen with care, particular the positioning of the word “finally”. In the case of a refusal of an application, the filing of an appeal will have the effect of suspending the effect of the order refusing the application (A 106(1)). It is logical therefore to speak of the “final” refusal of an application in this context, since the effect of the refusal of the application by the ED is suspended in the event of an appeal. In such a case the suspensive effect of an appeal is ended in the event of a decision dismissing the appeal, from which point the appealed decision retrospectively takes full effect. At the point of dismissal of the appeal, the application can be said to be finally refused and the decision of ED is made final. [15] On the other hand, in a case where an application is deemed to be withdrawn under A 86(3) EPC 1973 for non-payment of a renewal fee it does not appear to the Board to be logical to speak of the “final” deemed withdrawal of the application. As already noted, the point in time when the application is deemed to be withdrawn is the point when the due time for payment of the renewal fee expires; the loss of rights occurs on the expiry of the time limit that has not been observed and, as such, is final in itself.” [5.7] Thus far, the Board sees no difference between the case of an application deemed to be withdrawn due to the non-payment of fees and an application that has been voluntarily withdrawn by a communication from the applicant. In neither case is the withdrawal the result of a decision taken by the Office. In the case of a withdrawal, the Office simply complies with the instructions given by the applicant. It has to do so. Compliance with the applicant’s instructions does not amount to a decision that adversely affects the applicant, and consequently the latter cannot appeal against the action of the Office in carrying out the instructions. The applicant could only do so if the Office were to decide not to comply with its request. As with an application which has been deemed to be withdrawn (as in J 4/11), A 64 does not speak of a “final” withdrawal of an application, nor is it logical to do so. Consequently, the Board concludes that the rights conferred on the parent application according to A 67(4) prima facie came to an end at the moment of withdrawal of the application. [5.8] The Board in J 4/11 went on to consider whether this result might be any different in the light of any special provisions under the EPC that somehow altered the result as provided for in A 67(4), in particular by providing that the filing of a request for re-establishment had the effect of reviving the application. It concluded that there were no such provisions and that a failed request for re-establishment also did not have such an effect. It is not in dispute that there are no provisions in the EPC expressly providing that the filing of a request for correction of a withdrawal has suspensive effect on the withdrawal. [5.9] What the appellant in effect appeared to argue was that the possibility of requesting correction could be regarded as a substantive right in relation to the application that had been mistakenly withdrawn, since it meant that the appellant still had a right of redress and thus the withdrawal was not final. The issue of what amounted to a right of redress in this context was considered by the Board in J 4/11: “[17] In G 1/09 [4.2.2] the EBA, when dealing with the issue of when an application should be considered to be (finally) refused, referred to and relied on the jurisprudence of Contracting States, pursuant to which “decisions do not become final until the expiry of the respective period for seeking ordinary means of legal redress.” In effect, the appellant argues that the right to seek re-establishment is a right of redress, so that while the period for seeking such redress against the deemed withdrawal of the application was still running, the deemed withdrawal was not a final withdrawal. The Board considers that this is not a correct analysis. First, the argument overlooks the distinction, already discussed, between a refusal, which requires a decision by the Office which is then challengeable by way of an appeal, and a deemed withdrawal, which takes place automatically by operation of law. The above statements by the EBA in G 1/09 were made in the express context of a decision by a 311 | 3398
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department of first instance refusing an application: see point [4.2.2] of the reasons. Second, the Board considers that the concept of redress is appropriate only in the context of correcting a wrong. Thus while it is appropriate to speak of seeking redress against an allegedly wrong decision of the Office refusing an application, it is not appropriate to speak of seeking redress against the deemed withdrawal of an application. A person requesting re-establishment of rights does not seek correction of a wrong, i.e. allege that the deemed withdrawal was wrong as a matter of law. Rather he requests that he should be excused the consequences of the withdrawal in the particular circumstances of the case. In contrast, the procedure under R 69 EPC 1973 (now R 112) by which a person can challenge a notice of loss of rights […] is a process for seeking ordinary means of legal redress against an alleged wrong of the Office. This conclusion appears to be fully be consistent with the position under French, German and Swiss national law, as summarised in D1, points 4.1 to 4.3.” [5.10] The Board thus came to the conclusion that the possibility of re-establishment of rights did not alter the finding that an application which has been “deemed to be withdrawn” under A 67(4) was no longer pending as of the time it was deemed to be withdrawn. The Board considers that for the same reasons the possibility of making a request for correction is not a means of legal redress and that a withdrawn application cannot be considered as still pending merely where a request for correction has been filed. First, whereas a refusal requires a decision by the Office which is then challengeable by way of an appeal, a withdrawal takes place by virtue of the act of the applicant. Second, a person requesting rectification of a withdrawal does not seek correction of a wrong, i.e. allege that the withdrawal was wrong as a matter of law. Rather he requests that he should be relieved from the consequences of the mistaken withdrawal in the particular circumstances of the case. [5.11] In conclusion, from the wording of A 67(4) (“withdrawn” in contrast to “finally refused”), and the further clarification given in decision J 4/11 as cited above, it can be concluded that an application is no longer pending as from the moment after it has been withdrawn. This is not altered by the possibility of filing a request for correction under R 139, nor by the actual filing of such a request. In other words, an application is not pending because a correction of a withdrawal under R 139 has been requested. [5.12] The mere possibility that a filed request for correction might be successful does not lead to a different conclusion. Any result of a potential decision to grant correction comes only into effect as from the time of such decision and for the future. In J 3/01 the Board said: “… the so-called retrospective effect of a correction under R 88 EPC [1973] does not cancel previous procedural events, but only causes the document corrected to be considered from the time of correction and for the future as filed ab initio in the corrected version. Correction under R 88 EPC [1973] does not reverse the effect of decisions already taken on the basis of the uncorrected document and does not re-open a procedural phase already terminated … In other words, a procedural loss of right only indirectly caused by the incorrect document will not be remedied by a later correction of the document pursuant to R 88 EPC [1973]. This principle also characterises the functional and essential difference between a correction under R 88 EPC [1973] on the one hand and restitutio in integrum pursuant to A 122 on the other hand.” Also decision J 6/02 emphasises that R 139 only concerns errors in documents and that correction under the rule does not allow previous procedural effects to be set aside. Rather, it only causes the document corrected to be considered from the time of correction and for the future as filed ab initio in the corrected version, as is set out in great detail in point [15] of the Reasons: “[15] When regarding a request for correction under R 88 the Board has furthermore to consider the limited function of this Rule in the system of legal remedies provided for in the EPC (see above point 4, functional restriction). As already mentioned above, R 88 concerns the correction of errors in documents filed with the EPO. According to the first sentence a correction is limited to linguistic errors, errors of transcription and mistakes in any documents filed with the EPO. Therefore a correction under R 88 is a procedural means available to rectify misleading information caused by such an error. The established case law of the Boards of appeal also allows correction under R 88 of the content of a document filed with the EPO even if the correction leads to an amendment or to a revocation of the procedural declaration or act relative to this document, whereby rights of the party concerned can arise or a waiver of rights can be rescinded.
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But such a correction cannot have any effect on the procedural situation that has already ensued in direct or indirect consequence of a written error by failure to meet a time limit during the pending proceedings. In the present case, appellant’s request for correction is aimed at cancelling the legal effect under R 108(2) i.e. at reversing the legal effect that the designation of France was deemed to be withdrawn since there was no designation fee dedicated to France and no additional fee was paid within the period of grace under R 85(a) by 20 December 2000. To cancel procedural effects after failure to meet a time limit would be to apply R 88 beyond its clear and unambiguous wording (cf. J 25/01) and would violate the scope of application of A 122 which stipulates specific requirements for grant of re-establishment of rights. This conclusion is confirmed by A 122(5) which strictly forbids re-establishment of rights after failure to meet the time limit under inter alia A 79(2). A 122 provides for a re-establishment of rights where the applicant or proprietor of a European patent was unable to observe a time limit vis-à-vis the EPO and in consequence a loss of rights occurred. If the requirements of this provision are met – other than by a correction under R 88 – the procedural effect is cancelled, and the former procedural situation reinstated, so that the applicant’s rights are re- established. Thus, such a request for restitutio in integrum is the appropriate means to restore the procedural situation before the failure to meet a time limit. But according to A 122(5) restitutio in integrum is excluded after failure to meet a time limit under A 79 or R 104(1)(b) in conjunction with R 85a (see G 3/91). In other words, the remedy of restitutio in integrum is not available to redeem the applicant’s loss of rights that has occurred as a consequence of the failure to pay the designation fee for France at the end of the period of grace under R 85a(2) on 20 December 2000. The strict provisions of A 122(5) must not be circumvented by the so-called retroactive effect of a correction under R 88(1). The conclusion that the so-called retroactive effect of a correction under R 88 does not set aside the previous procedural effects, but only causes the document corrected to be considered from the time of correction and for future as filed ab initio in the corrected version is already stated in the Board’s decision J 3/01 [10]. Furthermore in decision J 27/96 the Board stated that a correction by the addition of a designation does not mean – despite its ab initio effect – that the applicant is reinstated into the procedural phase where designations can be made and fees paid, meaning that the whole procedure of that phase becomes available to the applicant again. The Legal Board stressed that a correction of a mistake is an isolated procedural measure and not a case of re- establishment into a defined procedural phase as a whole. The same conclusion was reached by the Legal Board in its decision J 21/84 (see also T 152/85).” In the present case no correction has been granted. Hence the request for correction had no effect whatsoever on the status of the withdrawn parent application. [5.13] It is not necessary for the Board to decide what the position would have been if the request for correction pertaining to the parent application had been allowed. [5.14] Contrary to the view taken by the appellant, it is immaterial in this respect whether the withdrawal was intended to apply to a different application, or whether the representative misinterpreted the appellant’s instructions in some other way. The Board cannot see any provision or case law that would support the appellant’s point of view in this respect. Nor did the appellant cite any. A document such as a withdrawal must be construed objectively and its effect cannot vary according to the subjective intentions of its author. [6] In the absence of a pending parent application, the appellant was not entitled to file a divisional application. The decision under appeal was therefore correct in arriving at this result, and accordingly the appeal must be dismissed. Should you wish to download the whole decision, just click here. This decision having been anonymised, I cannot provide a link to the file wrapper.
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J 9/12 – When We Stay You Freeze 23 Jul 2013
This is an appeal against the decision of the Receiving Section (RS) refusing to treat an application as a divisional application. On May 26, 2010, a third party had requested a stay of proceedings concerning the parent application, a few days after the Examining Division had issued a decision to grant. On June 8, 2010, the applicant filed a divisional application. The mention of the grant of the parent application was published in the Bulletin. On June 10, 2010, the Legal Division informed the parties that the proceedings for grant had been stayed as from May 26, 2010, and that the mention of grant would be corrected in due course. On November 30, 2010, the RS informed the applicant that the application in suit could not be treated as a divisional, due to the stay of proceedings. The applicant contested these findings and requested a decision. It then filed a decision against this decision. The arguments of the applicant can be summarised as follows: (a) The filing of a divisional application was not a procedural act in the proceedings for grant concerning the parent application. There was thus no basis in the EPC for refusing to process the application in suit as a divisional application on the grounds that the grant proceedings relating to the parent application had been stayed. (b) Notwithstanding decision J 20/05, the purpose of a stay of the grant proceedings - namely to protect the rights of a person who claimed an entitlement - did not justify the legal consequence of refusing to process the application in suit as a divisional application after staying the proceedings in respect of the parent application. The rights of a third party claiming entitlement to the invention could also be preserved by just extending ex officio the stay of the proceedings with regard to the parent application to the newly filed divisional application. Decision J 20/05 should thus be reconsidered. (c) The decision to grant a patent for the parent application had indicated that the mention of grant would be published on 9 .... The last opportunity to file a divisional application was thus 8 .... At that time, the public was not aware of the stay of the proceedings for grant concerning the parent application. A correction of the decision to grant was published in the European Patent Bulletin only later. The requirements of A 76 and R 36 had been fulfilled on the date of receipt of the divisional application and the subsequent stay of the proceedings for grant concerning the parent application had no impact on the validity of the divisional application. The Board dismissed the appeal: Legal basis [2] The RS held that an applicant may not validly perform any procedural acts while the proceedings are stayed pursuant to R 14(1), and that this included the filing of a divisional application under R 36. The [applicant] objected to this finding, and argued that there was no legal basis for extending the effects of a stay of the grant proceedings concerning the parent application to the filing of a divisional application. [3] It is established jurisprudence with regard to A 76 and R 25 EPC 1973 that it is the entitlement acquired by virtue of the parent application that gives the right to file a divisional application. This means that the rights derivable for the divisional application from the earlier application correspond to, but are also limited to, the rights existing in respect of the parent application at the filing date of the divisional application. The entitlement to file a divisional application according to A 76 and R 25 EPC 1973 is thus a procedural right that derives from the applicant’s status as applicant under the earlier application (J 2/01 [5.1, 6]; J 20/05 [2]). Therefore, as well as 314 | 3398
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examining the other formal requirements for the filing of a divisional application, the RS has also to examine whether the applicant is entitled to file the divisional application by virtue of being the applicant in the earlier application (J 20/05 [2]). As a consequence, R 13 EPC 1973 was found to prevent, as lex specialis, the filing of a divisional application if the proceedings for grant concerning the pending earlier application had been stayed (J 20/05 [headnote, 3]; see also G 1/09 [3.2.5], confirming this finding). [4] The principles set out in this jurisprudence are still pertinent under the revised law. R 13(1) EPC 1973 was streamlined and its wording aligned with the revised EPC. It was not changed in substance. R 36(1) as adopted by decision of the Administrative Council of the European Patent Organisation of 7 December 2006 (Special edition No. 1, OJ EPO 2007, 89) and the amended versions which entered into force on 1 April and 26 October 2010 (see decisions of the Administrative Council of 25 March 2009, OJ EPO 2009, 296, and of 26 October 2010, OJ EPO 2010, 568) continue to be based on the principle that a divisional application may be filed “relating to any pending earlier European patent application”. Therefore, the right to file a divisional application still follows from the entitlement acquired by virtue of the parent application. [5] The board sees no reason to depart from the finding of decision J 20/05 [headnote, 3], confirmed by decision G 1/09 [3.2.5], that R 14 prevents the filing of a divisional application if the proceedings for grant concerning the earlier application are stayed. Even if the filing of a divisional application during stay of the proceedings for grant regarding an earlier application is not expressly excluded by the EPC, it is consistent with the purpose of R 14 and R 36. Since the rights in respect of a divisional application can be derived only from the earlier patent application, such patent application cannot form a sufficient basis for a right to file a divisional application if the right of the applicant to the grant of a European patent in respect of the earlier application is disputed and the proceedings for grant stayed under R 14(1). Furthermore, to allow the filing of a divisional application by an applicant whose entitlement is challenged would be inconsistent with and contrary to the fundamental objective of R 14(1), which is to preserve any potential rights a third party may have to the grant of a patent for the earlier application in dispute. No automatic extension of the stay to any divisional application [6] The [applicant] argued that the rights of a third party claiming entitlement to the invention for which protection is sought in an earlier application could also be preserved by extending ex officio the stay of the proceedings in regard to the earlier application to any subsequently filed divisional application. Decision J 20/05 should be reconsidered in this respect. [7] The board cannot agree. Up to the grant of a European patent, the applicant alone has the status of party to proceedings before the EPO. A person other than the applicant is not a party to the proceedings for grant (A 115, second sentence, despite the use of the term “third party”). He may acquire party status in these proceedings in limited instances only, where the EPC provides for a right of a person other than the applicant to submit requests in respect of a patent application. R 14, which is based on A 61, is one such example. As decision J 20/05 [6] pointed out, it is not possible for a person seeking a decision within the meaning of A 61 to apply to the EPO under R 14(1) for an automatic and immediate suspension of proceedings regarding any divisional application deriving from an earlier application by way of an extension of the stay of the proceedings regarding the earlier application. The EPO is entitled to stay the proceedings for grant under R 14(1) only if there is clear and unambiguous proof that the claimant’s request in the proceedings before the national court is for judgment that he is entitled to the grant of the European patent application which is to be suspended, and not for any other application, however related it may be. Moreover, only proceedings for grant may be stayed which concern European patent applications pending at the date of filing of the request for stay. Furthermore, proceedings for grant cannot be stayed before the publication of the European patent application. Therefore, R 14(1) cannot be regarded as conferring on the departments of the EPO the power to extend ex officio a stay of the grant proceedings concerning an earlier application to any divisional application proceedings filed thereafter. The EPC thus leaves no room for the alternative interpretation put forward by the [applicant]. In conclusion, the board agrees with the findings of decision J 20/05 that, in order to preserve the rights of a third party claiming entitlement to the invention for which protection is sought in an earlier application, and to prevent the applicant from prejudicing the third party’s possible rights, a European patent application which is filed under R 36 while the proceedings for grant of the earlier patent application are stayed may not be processed as a divisional application. Immediate effect of the stay of proceedings for grant [8] There remains the [applicant’s] argument that the requirements of A 76 and R 36 had been fulfilled on 8 June 2010, the date of receipt by the EPO of European patent application […] in suit, and that the subsequent 315 | 3398
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K’s Law – The ebook
communication ordering the stay of the proceedings concerning the parent application had no impact on the validity of the divisional application. The [applicant] thereby contests the lawfulness of a stay of the proceedings for grant under R 14(1) which is communicated after the date of publication of the mention of grant of the patent for an earlier application and affects a divisional application filed in the interval between the filing of a request for a stay of proceedings and the communication of the stay to the parties involved. [9] The board notes that the [applicant] has neither objected to the communication from the Legal Division of 10 June 2010 nor requested an appealable decision. The board has thus no power to review the order for the stay of the proceedings for grant concerning the parent application. The further issue addressed by the [applicant] requires an answer in this decision only in as far as it raises the question of whether a stay of proceedings for grant communicated after the publication of the mention to grant is to be regarded as automatically null and void. [10] The contested decision of the RS relied on decisions J 28/94 [3.1], J 7/96 [headnote, 2.1, 3, 8, 11]) and J 10/02 [3.1] to justify the stay of the proceedings for grant concerning the parent application as from the receipt of the allowable request for a stay on 26 May 2010. However, these decisions do not explicitly deal with the situation where a divisional application is filed before the date of publication of the mention of grant and a stay in regard to the parent application is communicated thereafter. [11] The jurisprudence of the Legal Board of Appeal is nevertheless consistent in that a request for stay of the proceedings under R 14(1) may be filed up to the day before the date of the mention of grant of the European patent in the European Patent Bulletin (with regard to R 13(1) EPC 1973 see J 7/96 [headnote, 2.1, 3]; J 36/97 [3]). A stay of proceedings under R 14(1) takes immediate effect as from the date on which an allowable request is filed, i.e. as from the date the EPO is provided with satisfactory evidence that national proceedings have been instituted against the applicant seeking a decision within the meaning of A 61(1) (with regard to R 13(1) EPC 1973 see J 28/94 [2.1, 3.1]; J 7/96 [2.1]; [2]; J 10/02 [3.1]). Furthermore, the EPO is responsible for the grant proceedings up to the date of the publication of the mention of grant of the patent. This competence includes the publication of any necessary correction of a publication of the mention of grant (J 15/06 [11]). As a consequence, the publication of the mention of grant does not take away the competence of the Legal Division to issue a communication and, if requested, a decision ordering a stay of the grant proceedings, provided that an allowable request is filed before publication (see J 15/06 [14] with reference to decisions J 33/95 and J 36/97). It would moreover be contrary to the purpose of R 14(1) if procedural acts taken in the interim period between the filing of a request for stay and the decision of the Legal Division on this request were to produce legal effect irrespective of the final decision on the stay of the proceedings (see J 7/96 [8]). For the above reasons, the board cannot accept the argument that a stay of proceedings for grant communicated after the publication of the mention of grant is to be regarded as automatically null and void. [12] In the present case, an allowable request for a stay of the grant proceedings concerning the parent application was received on 26 May 2010. As from that date, the grant proceedings had to be stayed without the EPO having to take a formal decision. The publication of the mention of grant of a patent for the parent application on 9 ... did not take away the competence of the Legal Division to separately issue a communication on the order of the stay as from 26 May 2010. The application in suit, i.e. European patent application No. […] was received by the EPO on 8 ..., i.e. after the effective date of the stay of the grant proceedings concerning the parent application. R 14(1) together with R 36(1) thus prevented the valid filing of the application in suit as a divisional application of the parent application. As a consequence, the appeal must fail. Should you wish to download the whole decision, just click here. As the decision was anonymised, I cannot provide a link to the file wrapper.
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T 1883/11 – Sentenced To Death
K’s Law – The ebook
T 1883/11 – Sentenced To Death 22 Jul 2013
This is an appeal by the patent proprietor against the maintenance of its patent on the basis of the first auxiliary request. In a first appeal decision on the same patent (T 894/05), the Board had remitted the case to the first instance with the order to maintain the patent in amended form. Claim 1 of the allowed request read: A refrigerant composition which comprises: (a) 46% by weight based on the weight of the composition of pentafluoroethane, (b) 50% by weight based on the weight of the composition of 1,1,1,2-tetrafluoroethane and (c) 4% by weight based on the weight of the composition of n-butane. Upon remittal, the patent proprietor filed two sets of amended pages of the description as a main request and an auxiliary request, respectively. In the decision now under appeal, the Opposition Division (OD) found that the amended description according to the main request did not comply with A 84, since the sentence “It is clear that similar comments apply to the composition R125 - 46.5%, R134A - 50% and R600 - 3.5%” had not been deleted. The description was thus not properly adapted to the limitations carried out in the amended claims. The amended description according to auxiliary request 1 differed from the description according to the main request only in that said sentence was deleted. [2] In order to meet the requirement of A 84 that the claims have to be supported by the description, the adaptation of the description to amended claims must be performed carefully in order to avoid inconsistencies between the claims and the description which could render the scope of the claims unclear. Any disclosure in the description inconsistent with the amended subject-matter should normally be excised. Reference to embodiments no longer covered by amended claims must be deleted, unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended subject-matter. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated (see T 1808/06). [3] In the present case, the dispute between the parties concerns only the question of whether or not the sentence “It is clear that similar comments apply to the composition R125 - 46.5%, R134A - 50% and R600 - 3.5%” on page 4, lines 6 to 7 of the description of the patent in suit may be retained, namely whether or not it is consistent with the amended claims found by the Board to meet the requirements of the EPC. [4] Claim 1 as remitted to the OD relates to a refrigerant composition comprising by weight (a) 46% pentafluoroethane (R125), (b) 50% 1,1,1,2-tetrafluoroethane (R134A) and (c) 4% n-butane (R600). [5] The Appellant argued that retention of the contested sentence was justified because the composition “R125 46.5%, R134A - 50% and R600 - 3.5%” defined in the contested sentence fell under amended claim 1, since the skilled person would not understand amended claim 1 as relating to a single specific composition only, but rather as extending to ranges of plus or minus 0.5% in relation to each of the three specifically defined amounts of 46, 50 and 4%, for R125, R134A and R600, respectively. [5.1] However, the Board, holds that the composition R125 - 46.5%, R134A - 50%, R600 - 3.5% does not fall under the subject-matter of claim 1 of the patent in suit, since claim 1 defines a refrigerant composition defined in terms of specific percentage weight amounts, namely 46, 50 and 4%, the description of the patent in suit not providing the skilled person with any reason to understand these specific percentage weight amounts as extending to plus or minus 0.5%. On the contrary, the patent in suit, when defining the percentage weight amounts of the components of the refrigerant compositions described therein, quite clearly differentiates between values which differ by 0.5%. The sentence in question is an example therefor, as it compares a composition comprising 46.5% of R125, 50% of R134A and 3.5% of R600 with the composition of Example 1 comprising 46% of R125, 50% of R134A and 4% of R600, these two compositions also being distinguished in the table on page 4, lines 10 to 16 of the application as filed. Comparative Examples 2 and 3 on page 4 of the patent in suit, wherein the amounts of R125 and R600a differ by 0.5%, further illustrate the fact that the patent in suit distinguishes between percentage weight amounts of components of refrigerant compositions differing by 0.5%. Contrary to the argumentation of 317 | 3398
T 1883/11 – Sentenced To Death
K’s Law – The ebook
the Appellant, claim 1 does indeed relate to a specific composition, as supported by the description wherein the amounts of 46% of R125 and 4% of R600 in claim 1 find support in the application as filed as one of the “specific formulations” (emphasis added) described on page 4, lines 10 to 16 and in the particular formulation of Example 1, only, there being no suggestion in the patent specification that these amounts are approximate values, let alone that they extend to plus or minus 0.5%. [5.2] The Board is thus not convinced by the Appellant’s arguments and as a consequence holds that retention of the contested sentence on page 4 of the patent in suit leads to unclarity of the subject-matter claimed, as it could suggest to the reader, contrary to the facts of the case, that the claims embrace said composition. [6] By virtue of this sentence on page 4, lines 6 to 7 of the patent specification, the amended version of the specification according to the main request on which the contested decision was based cannot be allowed. […] The appeal is dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1343/09 – No Refund
K’s Law – The ebook
T 1343/09 – No Refund 19 Jul 2013
In case you had doubts, Wunderwaffe Article 12(4) RPBA can also be used against a request for reimbursement of search fees. *** Translation of the German original *** [4.1] Pursuant to R 64(2) a request for reimbursement of a further search fee has to be filed during the examination of the European patent application. According to the minutes of the oral proceedings held on January 28, 2009, before the Examining Division (ED), this has not been done. Point 5 of the minutes states: “After a short deliberation the Chairman asked whether the applicant intended to maintain the request for reimbursement of the additional search fees that had been paid …. The representative answered in the negative.” Thus the ED has correctly stated in its decision that there was no corresponding request on file. [4.2] Although the Board, pursuant to Article 12(4) RPBA, shall take into account everything presented [by the applicant] together with the appeal and the statement of grounds of appeal, the same provision entitles the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings. This is all the more true for requests that have been withdrawn during the first instance proceedings (cf. T 361/08 [13]). The admission of a request for reimbursement of further search fees that had been paid would lead to the Board dealing with the corresponding questions for the first time in appeal proceedings or remitting the case to the first instance (A 111(1)). However, admitting the present request, which had at first been withdrawn, at such a late stage would go against the duty of procedural economy in appeal proceedings. Moreover, the appellant has not given any reasons justifying its request. The question of whether the request before the Board was filed in due time within the meaning of R 64(2) may remain unanswered. Thus the Board, duly exercising its discretion, does not admit the request for reimbursement of further search fees that had been paid into the proceedings. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 2305/11 – Mind The Gap
K’s Law – The ebook
T 2305/11 – Mind The Gap 18 Jul 2013
This is an examination appeal. Claim 1 of the main request before the Board read (in English translation): Extraction process for the recovery of soluble substances from plant or animal organic raw materials under high pressure, in which raw-material-specific oils and fats have a maximum solubility pressure, of 1000 bar at most, wherein
supercritical CO2 is used as a solvent; one or more high-pressure vessels are filled with the organic material, sealed and then submitted to a pressure of more than 800 bar, subsequently the supercritical CO2 is passed at least once through the filled high-pressure vessel in an extraction stage, without admixing any additional entrainer to the supercritical CO2 and subsequently the laden supercritical CO2 is completely or partly supplied to a separating stage in which natural substances or substance mixtures are separated or separated of each other while decreasing the pressure,
characterized in that the pressure in the extraction stage exceeds the maximum solubility pressure of the rawmaterial-specific oil or fat in the supercritical gas by at least 10%, the respective rawmaterial-specific oil or fat acting as entrainer. The Board found the invention to be insufficiently disclosed: *** Translation of the German original *** Essential feature 320 | 3398
T 2305/11 – Mind The Gap
K’s Law – The ebook
[2.1] The claimed extraction process comprises the essential and characterising feature that the the pressure in the extraction stage exceeds the so-called “maximum solubility pressure of 1000 bar at most” of the rawmaterial-specific oil or fat in the supercritical gas (CO2) by at least 10%. According to the present application, said “maximum solubility pressure of 1000 bar at most” is to be understood as the pressure at which, at a given temperature, the solubility of the raw-material-specific oils or fats reaches a maximum value in the supercritical CO2, in a pressure range of up to 1000 bar […]. Thus, in order to be able to carry out the claimed process, it is necessary to know this “maximum solubility pressure of 1000 bar at most”, or to be able to determine it. Otherwise, as the pressure in the extraction stage of the process according to the application has to be at least 10% higher than said “maximum solubility pressure”, it would not be clear at which pressure the extraction step is to be carried out. Information gaps [2.2] The application does not make any concrete statement on how to determine the “maximum solubility pressure of 1000 bar at most”. However, the Board accepts, in favour of the [applicant], that the skilled person knows appropriate methods. For instance, D5 (figure 35) discloses the measurement of the pressure dependence of solubility by means of phase equilibrium devices. However, as will be discussed in what follows, the Board considers the fact that the application does not disclose that in many cases no “maximum solubility pressure of 1000 bar at most” is found and how one has to proceed in those cases to constitute a decisive information gap. Assessment of the state of knowledge [2.3.1] Figure 2 of D1 shows the dependence of the solubility of triglycerides in supercritical CO2. There is no discernable maximum solubility for pressures up to 1000 bar and above. This has not been contested during the oral proceedings (OPs).
[2.3.2] D5 discloses details regarding the phase behaviour of soy oil in CO 2 at different temperatures in a range of pressures between 100 and 600 bar, and in the supercritical region until 1000 bar and above. For temperatures above about 60°C the maximum solubility already exceeds 1000 bar (see figure 37).
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T 2305/11 – Mind The Gap
K’s Law – The ebook
The solubility maxima of the curves in figure 40 of D5 concern the solubility of Jojoba oil in compressed CO 2 and lie below 1000 bar for the supercritical phase domains and temperatures of between 20 and 60°C […]. However, D5 warns that an extrapolation of the results obtained for soy oil is only possible for comparable oils from the oleic acid – linoleic acid group […]. Thus the Board is of the opinion that the existence of individual solubility maxima below 1000 bar for certain oils such as Jojoba oil cannot support the enablement of the claimed process for all raw-material-specific oils or fats.
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T 2305/11 – Mind The Gap
K’s Law – The ebook
What matters […] is that studies of the solubility behaviour of trigycerides during the extraction of the vegetable oil from the vegetable raw material in CO2 have shown that there is no solubility maximum in the region of up to 1000 bar between 40°C and 80°C. The [applicant] has not contested this fact. [2.3.3] Finally, the [applicant] itself has admitted […] during the OPs that there is no solubility maximum in the region of up to 1000 bar for some oils that are to be extracted. [2.3.4] In view of this evidence, the Board considers the statement in paragraph [0005] of the description, according to which “the boundary of 1000 bar disclosed in WO-A-2006/05 537 and EP 1 424 385 B1 … [is] identical with the physically determined region where the solubility maximum of raw-materialspecific natural oils is found in supercritical CO2” to be a mere assertion that is not supported by the facts. The documents D6, D7, and D8 filed by the [applicant] do not support this alleged factual situation either because none of these documents discloses a solubility maximum in the region of up to 1000 bar. Moreover, D8 concerns the extraction of xanthohumol from hop and D7 the decaffeination of tea; there is no extraction of vegetable oil or fat in these cases, contrary to the present application. D6 was disclosed on January 22, 2009, and does not belong to the state of the art for this reason alone. [2.3.5] The [applicant] has not submitted that these were only isolated cases which fell outside the performance of the process according to the invention because there was no solubility maximum, and that the skilled person could determine these isolated cases without undue experimental effort. The application does not explain for which oils and fats one would not expect to find a solubility maximum in the region of up to 1000 bar when the extraction is performed with supercritical CO2. Other passages of the disclosure [2.4] The application can also contain references allowing the skilled person to carry out the invention; in such a case the invention would be sufficiently disclosed. During the OPs the [applicant] asserted that the examples of the application […] concerning the extraction of sweet paprika, spicy paprika and tomato powder had been carried out after such a solubility maximum had been determined, but it was unable to provide plausible indications regarding the pressure values obtained; at least there are no such indications in the application. Thus it is impossible to check whether the examples are covered by the wording of claim 1. [2.5] To sum up, the [applicant] was unable to respond to the objection of the Board as to how the invention was to be carried out when there was no solubility maximum in the region of up to 1000 bar, and in particular which pressure was to be used in the extraction stage. The description does not provide the skilled person with any useful guidance. [The applicant] has not shown how said information gaps and the lack of guidance can be filled or overcome with common technical knowledge, respectively. Conclusion [2.6] As a consequence, the claimed invention is not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. This deficiency concerns the claims of both the main and the auxiliary requests, which do not differ in regard of the critical feature. Thus the application does not comply with the provisions of A 83. […] The appeal is dismissed. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1919/11 – Taxus Chinensis
K’s Law – The ebook
T 1919/11 – Taxus Chinensis 17 Jul 2013
In this case Board 3.3.02 had to deal with an appeal against the refusal of a divisional application on the ground that it extended beyond the content of the earlier application [2.1] The subject-matter of claim 1 of the main request relates to a method for producing taxanes …
in cell culture of Taxus chinensis comprising: (a) cultivating in suspension culture … (b) recovering one or more taxanes from said cells or said medium of said cell culture, or both, wherein the nutrient media contain (i) silver at a concentration of at least 1 µM to less than 200 µM in the form of a silver-containing compound, or a silver complex, or a silver ion, and (ii) an enhancement agent selected from:a) ... …; and b) an auxin.
Subject-matter [underlined] characterises issues particularly discussed during the oral proceedings under A 76(1) EPC 1973. 324 | 3398
T 1919/11 – Taxus Chinensis
K’s Law – The ebook
[2.2] The question is whether these three features in the context of the whole subject-matter of claim 1 of the main request represent added subject-matter with respect to the parent application as originally filed. [2.2.1] The subject-matter of claim 1 of the main request relates to Taxus chinensis only. In contrast, under the heading “Summary of the invention”, […] of the description as originally filed for the parent application (synonymously used for “earlier application”; references relate to WO 1997/044476), it is set out that “the inventors have discovered that taxol, baccatin III, and other taxol-like compounds, or taxanes, can be produced in very high yield from all known Taxus species, e.g., brevifolia, canadensis, cuspidata, baccata, globosa, floridana, wallichiana, media and chinensis. Further, by the methods of this invention it is possible to obtain taxol, baccatin III, and other taxanes in a much shorter time frame than previously reported.” This subject-matter is described in the text of the parent application as comprising “one embodiment” […] and “another embodiment” […], the latter being selected as the subject-matter of the current divisional application […]: “In another embodiment, this invention provides a method for producing taxanes in high yields in cell culture of a Taxus species by cultivating cells of a Taxus species in suspension culture … the nutrient media containing silver … along with at least one enhancement agent …”. Page 8, lines 3 to 11, states: “Preferably, cells cultured according to the method of this invention are cells of Taxus species, and the species may be T. brevifolia, T. canadensis, T. chinensis, T. cuspidata, T. baccata, T. globosa, T. floridana, T. wallichiana, or T. media. Preferably, the cells of a Taxus species used in the method of this invention are cells which produce taxol above background by ELISA in callus culture or suspension culture in medium that contains no enhancement agents. More preferably, the cells of a Taxus species used in the method of this invention are cells which produce taxanes in suspension culture at an average volumetric productivity of 10mg/L in a medium containing silver thiosulfate, methyl jasmonate and auxin.” In addition to this summarising text relating to a plurality of Taxus species, any particular mention of Taxus chinensis is followed by an endorsement that Taxus chinensis may be the best in many issues, but that the important subject-matter of the application equally is the teaching to use any member of the list of Taxus species for producing taxanes: So, the text […] reading “In particular, the inventors found that the species, Taxus chinensis, is capable of rapid growth and of producing extremely high levels of taxol, baccatin III, and taxanes within a short period of time. With the species Taxus chinensis, the inventors have been able to manipulate cells to yield taxol, baccatin III, and taxanes in amounts far in excess of the amounts obtained from tissue cultures of the other Taxus species.” is followed by “Particular modifications of culture conditions (i.e., media composition and operating modes) have been discovered to enhance the yield of various taxanes from cell culture of all species of Taxus.” […]. On page 5, line 30 to page 6, line 2, “While the yield of taxanes from plant cell culture of T. chinensis is particularly enhanced by use of one or more of these conditions,” is followed by “yield of taxanes for all Taxus species has been found to benefit from use of these conditions.” […]. Finally, […] “In particular, the inventors have identified the species Taxus chinensis as capable of producing significant quantities of taxol, baccatin III, and taxanes at high volumetric productivities.” is followed by the generalising text 325 | 3398
T 1919/11 – Taxus Chinensis
K’s Law – The ebook
“It has been found by the inventors that specific taxane content varies with plant species, and within plant species from tissue source and specific trees. Selecting a high yielding source and culture for taxane production is an important first step towards providing sufficient quantities of taxanes for therapeutic use.” […]. Consequently, some of the examples relate to different Taxus species and some use Taxus chinensis as a model substance to show particular effects of the cultivation conditions. On this basis, there is no direct and unambiguous disclosure that the subject-matter of the overall content of the application relates to nothing else than a method using Taxus chinensis. [2.2.2] The subject-matter of claim 1 of the main request relates to silver at a concentration of at least 1µM to less than 200µM. Original claim 9 of the parent application contains the feature of silver content at a concentration of 900µM or less. In the description [...] it is stated in two separate consecutive sentences that “When silver is incorporated in the medium, it will be added at a concentration of less than 900 µM, preferably less than 500 µM, and more preferably less than 200 µM.” and “When silver is incorporated in the medium, it will be added at a concentration of at least 10 nM, preferably 100 nM, more preferably 1 µM, and typically at 10 µM.” This present situation is not comparable with that in T 1107/06 [48] and dealt with in the settled jurisprudence of the boards of appeal, where – starting from a general and a preferred range – “a combination of the preferred disclosed narrower range and one of the part-ranges lying within the disclosed overall range on either side of the narrower range” is considered to be originally disclosed. A general range, which means a lower limit which is unequivocally combined with an upper limit and a preferred disclosed narrower range – equally consisting of a lower limit which is unequivocally combined with an upper limit – are simply missing. Even a kind of parallel structure in indicating the upper and lower limits (less/at least, preferred or more preferred) implies no unequivocal correlation between a particular upper limit and a particular lower limit because there is no teaching that such an arrangement was intended. Therefore, in the present case, one of the upper limits mentioned in the first sentence in the description of the parent application as originally filed (as cited above) and one of the lower limits mentioned in the second sentence are arbitrarily combined, which does not represent a direct and unambiguous disclosure. [2.2.3] The subject-matter of claim 1 of the main request relates to an enhancement agent selected from: ... and b) an auxin. Since the auxin-related growth regulator mentioned in claim 9 of the parent application as originally filed as “an enhancement agent selected from: a) jasmonic acid or an ester of jasmonic acid; and b) an auxin-related growth regulator” is defined in the corresponding part of the description as including “auxins, compounds with auxin-like activity, and auxin antagonists” [...], the selection of auxin only under component b) is arbitrary. 2.2.4 Regarding the three particularly discussed features
restriction to a method using Taxus chinensis together with the application of silver at a particular concentration of at least 1µM to less than 200µM and the restriction of auxin-related growth regulators to auxin,
the board comes to the conclusion that the skilled person was not in a position to derive in a direct and unambiguous way, from the parent application as originally filed, that these features were present in the particular combination now claimed. The selections are arbitrary and thus their present combination represents information not originally disclosed and, as such, added subject-matter. Should you wish to download the whole decision, just click here. 326 | 3398
T 1919/11 – Taxus Chinensis
K’s Law – The ebook
The file wrapper can be found here.
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T 414/12 – ¡No pasarán!
K’s Law – The ebook
T 414/12 – ¡No pasarán! 16 Jul 2013
In this case Board 3.2.04 came to the conclusion that the claimed electronic gaming apparatus did not involve an inventive step. The applicant requested the following questions to be referred to the Enlarged Board of appeal (EBA): 1. When a claim relating to an electronic gaming apparatus defines as an integer a game rule which provides a further technical effect (which may be known) in the sense of decision T 1173/97, which technical effect is an inherent result of implementing the rule in the apparatus, should that integer be taken into account in assessing inventive step? 2. If the answer to Question 1 is positive, would the answer be different if there is also, as a result of the rule, a nontechnical or cognitive effect on a person playing a game on the apparatus? 3. If the answer to Question 2 is negative, would the answer be different if the application presents the nontechnical or cognitive effect as the, or one of the purposes of the invention? The Board dismissed this request: [4] A 112 provides for the possibility of referring questions of law to the EBA “in order to ensure uniform application of the law or if a point of law of fundamental importance arises” (paragraph (1)). In the present case the [applicant] has asked for referral of questions concerning the particular approach to be adopted by the Boards in considering how to assess inventive step in regard of electronic gaming apparatus that implements a game rule providing a further technical effect. The approach adopted by the present Board […] builds upon existing case law regarding implementation of game rules, which in turn is based upon various decisions of the Boards concerning the assessment of inventive step for “mixed” inventions involving computer programmes which are per se excluded from patentability under the same provision as rules and methods for playing games, A 52(2)(c). The decisions and their underlying approaches have become well-established case law and are consistently and uniformly followed by the Boards. Most recently the EBA in G 3/08 [7] held these decisions to constitute a “legitimate development of case law” and that there was no divergence between them. Nor has the [applicant] provided any compelling evidence that this might not be so. Moreover, the particular questions raised by the [applicant] are specific to a very limited field of subject-matter and – in contrast to, say, the questions addressed in G 3/08 relating to computer implemented inventions – are of small relevance outside that field. In the Board’s estimation the questions posed are therefore also not of fundamental importance. Finally, the differing results arrived at by the [applicant] and the Board in assessing inventive step of the claimed invention appear not to be the result of differing views as to whether further technical effects inherent in the implementation of a game rule should be taken into account when assessing inventive step (to which the questions pertain), but rather lie in differing assessments as to what aspects of the claim are technical and what aspects are non-technical game rules as such. The questions posed have in essence been answered by the Board, thus an answer from the EBA is not necessary for reaching a decision on the appeal in hand (A 112(1)a EPC, first sentence). In the light of the above, the Board concludes that there is no justification for referring the questions posed to the EBA. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2259/09 – Iconoclasm
K’s Law – The ebook
T 2259/09 – Iconoclasm 15 Jul 2013
This is a revocation appeal. The Opposition Division (OD) had revoked the patent on the basis that the patent as amended according to the auxiliary requests did not meet the requirement of A 123(3). In particular, due to the deletion of the complete set of drawings from the granted patent, the protection conferred by the patent had been extended. [3.1] Whilst the patent as granted comprises a set of Figures 1 to 29, in the amended patent according to the main request (request set A) all drawings have been deleted to comply with the requirements of A 123(2), the description has been correspondingly adapted by deleting all reference to the drawings, and all reference signs have been deleted from the description and the claims, pursuant to R 46(2)(i). [3.2] With the deletion of the drawings from the patent specification, technical information is undoubtedly lost. Whilst this loss of information may also introduce some uncertainties about certain details of the preferred embodiments depicted in the drawings, it cannot be concluded, as in the impugned decision, that it automatically broadens the protection conferred by the patent. The OD had argued that according to A 69(1), although the extent of the protection conferred by the European patent was determined by the claims, the description and drawings were to be used to interpret the claims, in
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T 2259/09 – Iconoclasm
K’s Law – The ebook
particular to resolve ambiguities in the claims. Hence, amendments to the description and drawings generally had an impact on the extent of protection conferred by the European patent. [3.3] In the present case, the claims are not limited to any of the details, dimensions or features specifically depicted in the (deleted) drawings (such as those mentioned under point 3.2.6 of the impugned decision). Moreover, under A 69(1), reference to the drawings of a patent specification may be helpful or even necessary if an ambiguity exists in the granted claim. However, in the present case, as the appellant points out, the impugned decision has not identified any such ambiguity; nor can the Board see any. None of the specific features of claim 1 of the granted patent has a different or broader meaning without the drawings than with the drawings. Nor does deleting the drawings create any potential additional ambiguity beyond that which may have been present in claim 1 of the patent as granted. [3.4] Consequently, the Board comes to the conclusion that the deletion of the drawings does not extend the scope of the protection conferred by the main request, which request therefore fulfils the provisions of A 123(3). The Board then remitted the case to the first instance. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2573/11 – Limits Of The Three-Day-Rule
K’s Law – The ebook
T 2573/11 – Limits Of The Three-Day-Rule 12 Jul 2013
On July 5, 2011, the Examining Division (ED) posted a communication under R 71(3) EPC, informing the applicant that the main request on file did not comply with A 84 but that it intended to grant a patent on the basis of the first auxiliary request (with claim 9 amended by the ED). On November 4, 2011, the applicant filed electronically a letter which reads as follows: “In response to the Communication under R 71(3) dated 5 July 2011, we enclose French and German translations of the claims. Please deduct the due fees, including particularly the grant and printing fees, from our deposit account number …. We look forward to receiving notification of the decision to grant.” On November 11, 2011, at 15:33 hours, the applicant filed electronically a further letter in reply to the EPO communication under R 71(3) dated 5 July 2011, together with an amended set of claims 1 to 12 and French and German translations thereof. In this letter the applicant stated that the letter dated November 4, 2011, and the French and German translations attached thereto were withdrawn and under R 71(4) also requested voluntary amendments of the claims under R 137(3) and gave explanations regarding these amendments. The letter further reads on page 1, fourth paragraph: “Please deduct the due fees, including particularly the grant and printing fees, from our deposit account number …. The applicant approves the text for grant as amended.” The decision to grant a European patent was posted on November 17, 2011. The footer of this automatically created decision to grant reads: “EPO Form 2006A 12.07 (11/11/11)” and “to EPO postal service: 11/11/11” (emphasis added). The footer of the attached “Note relating to the decision to grant a European patent” (EPO Form 2006R) reads: “EPA/EPO/OEB Form 2006R 12.07” and “08162496.7 (11.11.11) (emphasis added). By a communication (EPO Form 2085) dated November 21, 2011, the applicant was informed that the request for amendment of November 11, 2011 had been received on November 11, 2011, but had reached the ED only after the decision to grant the European patent had been handed over to the EPO internal postal service and that, as the EPO was bound by its decision, the requested amendments could no longer be considered. Additionally, the applicant’s attention was drawn to the possibility of appeal against the decision to grant. The applicant availed itself of this possibility. The applicant inter alia pointed out that, according to G 12/91, the date on which proceedings before the ED were completed was three working days before the date (November 17, 2011) stamped on the decision, i.e. in the present case November 14, 2011. The date on which proceedings before the ED were completed was after the date (November 11, 2011) on which the applicant requested amendments to be considered by the ED. Therefore the ED should have considered the requested amendments and the applicant had a legitimate expectation that they would be considered. [2] The appellant argues that, pursuant to R 71(4) (and R 71(5), if necessary), the ED should have taken account of the amendments filed with the EPO at 15:33 hours on 11 November 2011, since at that point in time the ED had not yet completed the decision-making process following written proceedings. The essential question therefore is when exactly the proceedings before the decision-making department of first instance had been completed in the present case. [3] In its decision G 12/91, the Enlarged Board of Appeal (EBA) decided that the decision-making process following written proceedings is completed on the date the decision to be notified is handed over to the EPO postal service by the decision-taking department’s formalities section (see Order and Headnote). The EBA based its decision on the fact that, when a decision is handed over by the formalities section to the EPO postal service for notification, it is taken from the file and is therefore removed from the power of the department that issued it, 331 | 3398
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and that this moment marked the completion of proceedings before the decision-making department (G 12/91 [9.3]).It further held that once proceedings have been completed the decision-making department can no longer amend its decision but must disregard any fresh matter the parties may submit to the EPO thereafter (G 12/91 [9.3]). According to established jurisprudence this finding applies to decisions of opposition divisions (OD) and ED (see e.g. T 556/95, T 798/95, T 394/96 and T 355/03). [4] It follows from the above that, for determining the completion of proceedings before the decision-making department, it has to be established when the decision was handed over by the formalities section to the EPO postal service for notification. [5] The appellant submitted that, in accordance with established case law (G 12/91 [9.1]; T 556/95 [6]; T 394/96 [4]) as well as with established EPO practice, the date of termination of proceedings was three days prior to the date of actual despatch of the decision which was stamped in the box marked “Datum/Date” at the upper righthand side of the decision, irrespective of the date appearing in the box marked “to EPO postal service” appearing in the footer of the decision. [6] The board, however, is of the view that, if it is clearly indicated in the decision on which date the formalities section handed the decision over to the EPO postal service, this date is directly brought to the knowledge of the parties and is thus the date on which written proceedings before the decision-making department are completed. This conclusion is in line with the findings in decision G 12/91 for the following reasons. [7] According to the facts underlying the referral decision in case G 12/91, it was not indicated in the decision of the first-instance department on which date the formalities section had handed over the decision to the EPO postal service (see G 12/91 [II]). At that time, this date was never indicated in the EPO decisions despatched to the parties or otherwise discernible for the parties. Only the date on which the decision was to be despatched was stamped on the decision. [8] This conclusion is supported by several text passages of decision G 12/91: - Point [VI] of the Summary of Facts and Submissions: This section concerns the reply of the President of the EPO who had been asked by the EBA to outline EPO practice at that time with regard to decisions following written proceedings before the OD. According to the submissions of the President of the EPO, at that time only two dates were important with regard to the taking of a decision of an OD. The first date was the date on which the decision was signed by the members of the OD; this was indicated in the original copy of the decision (Form 2339), which was kept on file. This date was usually not communicated to the parties, unless a party questioned whether the composition of the OD was correct. The second date was the date on which the decision was to be despatched and which was entered in the decision notified to the parties. This date was of more importance to the parties because it indicated at what point in time the EPO had posted the decision, the point which under R 78(3) EPC 1973 was decisive for calculating time limits. To ensure that the date entered in the decision was indeed the date the decision was actually posted, decisions were systematically post-dated by three days. This practice was established by DG 2 Staff Notice 1/88III dated 22 February 1988. If the decision could not be despatched on that date as intended, the EPO postal service returned it to the OD’s formalities officer for the date to be changed accordingly. - points [9] and [9.1] of the Reasons which read: “[9] This only leaves date 4.(c), the date on which the date-stamped, post-dated decision is handed over to the EPO postal service by the formalities section. [9.1] At first sight, the fact that it is not directly brought to the knowledge of the parties would seem to militate against choosing this date. On the other hand it is a date the parties can ascertain very easily, because, as the President of the EPO explained, it is always three days prior to the date stamped. Internal EPO instructions make clear that a period of three days always elapses between the date-stamping of a decision and its despatch. If, for whatever reason, the EPO postal service is unable to despatch the decision on the date stamped, it returns the decision to the formalities section where it is given a new date, which again pre-dates the date of actual despatch by three days. This practice ensures that the date of despatch is always stamped on the decision three days before it is actually despatched. This date is therefore very easy to ascertain, both for the EPO and the parties. It thus fulfils the need for strict legal certainty which the handing down of a decision must ensure.” (emphasis added by the board) - point [9.3] of the Reasons which reads: 332 | 3398
T 2573/11 – Limits Of The Three-Day-Rule
K’s Law – The ebook
“… Seeing that it is important for the parties to know at which point in time the decisionmaking process following written proceedings is completed, this point in time should be clearly indicated in the decision. The formalities section should also keep a register of the dates on which decisions are handed over to the EPO postal service to enable these dates to be ascertained at any time.” (emphasis added by the board) [9] The EPO followed the first of the above recommendations of the EBA and added the following text to the decision forms of the first-instance departments: “to EPO postal service: …”. This text was added at least as from 7 February 1995, as can be seen from the first-instance decision underlying case T 556/95. [10] In the present case, the wording of the footer of the decision to grant posted on 17 November 2011 reads “EPO Form 2006A 12.07 (11/11/11)” and “to EPO postal service: 11/11/11” (emphasis added by the board) and thus clearly indicates that this decision was handed over to the EPO postal service on Friday, 11 November 2011. That on this date the appealed decision was handed over to the EPO postal service is also clear from the footer of the “Note relating to the decision to grant a European patent (EPO Form 2006A) which reads: “08162496.7 (11.11.11)” (emphasis added by the board). [11] On the basis of these facts and the board’s view given above (see in particular point [6] above), the board concludes that in the present case the decision-making process following written proceedings was completed on Friday, 11 November 2011. [12] However, since the applicant filed electronically its letter containing a request under R 71(4) at 15:33 hours on Friday, 11 November 2011 […] and thus on the same date on which the decision was handed over to the EPO postal service, the question arises whether the chronological order of events on that date could lead to the conclusion that the decision-making process following written proceedings had not yet been completed in the present case when said letter was received by the EPO. [13] The order of decision G 12/91 (loc. cit.) reads: “The decision-making process following written proceedings is completed on the date the decision to be notified is handed over to the EPO postal service by the decision-taking department’s formalities section.” (emphasis added by the board) According to this wording the smallest time unit is the date (German version: der Tag; French version: la date) as such and not an hour or the chronological order of events on a specific date. This would mean that the applicant’s request under R 71(4) should have been filed with the EPO at the latest one day before 11 November 2011, i.e. the date on which the decision-making process was completed, in order to be considered by the ED. [14] But one could also argue in favour of the appellant that the chronological order of events on 11 November 2011 must be taken into account, in view of the finding of the EBA in point [9.3] of its decision G 12/91 which reads: “When a decision is handed over by the formalities section to the EPO postal service for notification, it is taken from the file and is therefore removed from the power of the department that issued it. This moment marks the completion of proceedings before the decision-making department. Once proceedings have been completed the decision-making department can no longer amend its decision. It must disregard any fresh matter the parties may submit to the EPO thereafter.” (emphasis added by the board) [15] However, even if the chronological order of events on 11 November 2011 were taken into account in the present case, the applicant’s letter was filed after the decision was handed over to the EPO internal postal service. According to the published official opening hours of the EPO’s Munich site, which are the only relevant opening hours because the ED in the present case was located in Munich, the applicant’s letter was filed after the end of the official working time and thus after the completion of the proceedings before the ED. This is also confirmed by the communication (EPO Form 2085) dated 21 November 2011, informing the applicant that the request for amendment of 11 November 2011 was received on 11 November 2011, but reached the ED only after the decision to grant the European patent had been handed over to the EPO internal postal service. [16] Since the applicant’s letter dated 11 November 2011 was filed after the completion of the proceedings before the ED, the ED was not competent to consider this letter even if, as submitted by the appellant, it contained a request under R 71(4) (see G 12/91 [9.3]; T 798/95 [6]; and T 355/03 [2]).
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T 2573/11 – Limits Of The Three-Day-Rule
K’s Law – The ebook
[17] It follows from the above that, in the present case, the fact that the applicant’s letter dated 11 November 2011 was not considered by the ED does not give rise to a fundamental deficiency in the first-instance proceedings within the meaning of Article 11 RPBA. Nor does it constitute a substantial procedural violation within the meaning of R 103(1)(a). [18] In view of the above, the appeal must be dismissed and the appeal fee cannot be reimbursed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 83/05 – Broccoli Forever!
K’s Law – The ebook
T 83/05 – Broccoli Forever! 11 Jul 2013
EBA member Fiona suddenly felt that a broccoli would cast a shadow on her holidays The present case was the one who gave rise to the “Broccoli” decision G 2/07 of the EBA of appeal (EBA) on how the expression “essentially biological” was to be understood. When summoned to oral proceedings (OPs), the patent proprietor replaced all its requests on file. The new requests did not contain method claims. Claim 1 of the main request read: 1. An edible Brassica plant produced according to a method for the production of Brassica oleracea with elevated levels of 4-methylsulfinylbutyl glucosinolates, or 3-methylsulfinylpropyl glucosinolates, or both, which comprises: a) crossing wild Brassica oleracea species selected from the group consisting of Brassica villosa and Brassica drepanensis with broccoli double haploid breeding lines; b) selecting hybrids with levels of 4-methylsulfinylbutyl glucosinolates, or 3methylsulfinylpropyl glucosinolates, or both, elevated above that initially found in broccoli double haploid breeding lines; c) backcrossing and selecting plants with the genetic combination encoding the expression of elevated levels of 4-methylsulfinylbutyl glucosinolates, or 3-methylsulfinylpropyl glucosinolates, or both; and d) selecting a broccoli line with elevated levels of 4-methylsulfinylbutyl glucosinolates, or 3methylsulfinylpropyl glucosinlates [sic], or both, capable of causing a strong induction of phase II enzymes, wherein molecular markers are used in steps (b) and (c) to select hybrids 335 | 3398
T 83/05 – Broccoli Forever!
K’s Law – The ebook
with genetic combination encoding expression of elevated levels of 4-methylsulfinylbutyl glucosinolates, or 3-methylsulfinylpropyl glucosinolates, or both, capable of causing a strong induction of phase II enzymes. On November 8, 2011, second OPs took place in the “Tomato” case T 1242/06. While, similarly to the present case, the patent proprietor in case T 1242/06 also took the EBA decision into account by deleting all process claims, the opponent nevertheless maintained that the proprietor’s requests, which now only contained product claims, still did not comply with the requirements of A 53(b). This led to another referral to the EBA. Third-party observations were received in the present case on November 1, 2011. One of the opponents asked the Board to stay the proceedings in order to wait for the questions to be referred to the EBA and whether the EBA would “accept” them. The patent proprietor then pointed out that the new submission of the opponent seemed to introduce a fresh ground of opposition into the appeal proceedings, i.e. an objection under A 53(b) against product claims. If the EBA should find that the second referral in case T 1242/06 inadmissible, the patent proprietor would oppose the admission of this new ground into the proceedings. Otherwise, however, it would agree to it. On May 31, 2012, the board in case T 1242/06 handed down a second interlocutory decision in which it referred the following questions of law to the EBA: 1. Can the exclusion of essentially biological processes for the production of plants in A 53(b) have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit? 2. In particular, is a claim directed to plants or plant material other than a plant variety allowable even if the only method available at the filing date for generating the claimed subjectmatter is an essentially biological process for the production of plants disclosed in the patent application? 3. Is it of relevance in the context of questions 1 and 2 that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under A 53(b)? The referral is pending as case G 2/12. When invited to clarify its requests, the patent proprietor gave its unconditional consent to the examination of the objection raised under A 53(b) against the product claims of its requests. It requested that this objection be admitted into the proceedings and that the board refer anew questions of law to the EBA, some of which were identical to those asked in case G 2/12. After some hesitation, the Board decided to admit the new objection under A 53(b) and then pursued: A 53(b) – substantive aspects [13] In the area of plant breeding, A 53(b) provides for two exceptions from patentability. It prohibits the patenting of, on the one hand, plant varieties and, on the other hand, essentially biological processes for the production of plants. [14] In the second interlocutory decision in case T 1242/06 the present board, in a different composition, considered both of these exceptions when assessing the patentability of product claims directed to certain tomato fruits. While the board found the exclusion of plant varieties not to be applicable, it considered that the process exclusion in A 53(b) might well have an impact on the allowability of the claimed products and decided to refer further questions of law concerning this latter issue to the EBA. [15] In the present case, the subject-matter of claim 1 of the [patent proprietor’s] main request […] is defined as an edible Brassica plant produced according to a certain method for the production of Brassica oleracea with elevated levels of certain glucosinolates. The method features of this product-by-process claim include steps of crossing and selecting plants. Claims 2 and 3 which are directed to an edible portion and the seed of a broccoli plant contain identical method features. Claims 4 and 5 of the main request […] define the claimed broccoli plant or inflorescence inter alia by the product-by-process feature of crossing broccoli double haploid breeding lines with Brassica villosa or Brassica drepanensis.
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K’s Law – The ebook
[16] For the same reasons as set out in great detail in the second interlocutory decision in case T 1242/06 [2539], the board considers that the plants or parts of plants claimed in the present case do not fall under the exclusion of plant varieties as stipulated in A 53(b) and defined by R 26(4). Apart from the fact that these plants and parts of plants are, in view of the process features of the claims […], defined as the result of crossing specific plant species, they are not further defined by a multitude of characteristics resulting from a given genotype or combination of genotypes (see decision G 1/98 [3.1]), but, directly or indirectly, only by a particular trait, i.e. an increased level of specific glucosinolates. A single trait is, however, in general not sufficient to define a plant variety without providing, apart from an indication of the species, further adequate information about the actual genotype of the plant grouping. The exclusion of plant varieties does therefore not apply in the present case. None of the [opponents] has argued otherwise. [17] There is nevertheless, similarly to case T 1242/06, a second issue which needs to be addressed, namely the question as to whether the process exclusion contained in A 53(b) has a negative impact on the allowability of the [patent proprietor’s] product claims. In the board’s view, at least the method steps referred to in claims 1 to 3 of the main request for the definition of the claimed plants and plant parts […] have to be regarded as essentially biological processes for the production of plants and would fall, if claimed as such, under the process exclusion of A 53(b). These claims therefore cover plants and plants parts which are produced by an excluded process. The board is fully aware that according to the established case law the subject-matter of a product-by-process claim is not limited to products actually produced by the relevant process but also extends to products which are structurally identical to such products and which are produced by a different process (see decisions G 1/98 [4]; T 219/83 [10]). However, neither the patent application as originally filed nor the patent appears to disclose any method for the production of the claimed plants and plants parts which does not include steps of crossing and selection. [18] In view of the principle of absolute product protection (see decision G 2/88 [5]), a claim to a product provides the patent proprietor with protection that generally encompasses the protection provided by a patent claim for the process of making the product (see decision G 2/06 [25]). If the product claims were allowed in the present case, any act of making the claimed Brassica and broccoli plants or plant parts would in principle fall under the prerogative of the patent proprietor. This would have the consequence that the proprietor could prevent others from carrying out the breeding method taught in the description of the patent and referred to in the claims, although this method might be regarded as an essentially biological process for the production of plants and excluded per se from patentability under A 53(b). [19] When confronted with a similar situation in case T 1242/06, this board in a different composition expressed serious concerns about the allowability of product claims directed to plant material obtained by means of an essentially biological breeding process. It considered that such claims might de facto frustrate the legislator’s intentions in framing the process exclusion and make the circumvention of the exclusion in many cases a matter of skilful claim drafting, thereby diminishing the consistency and persuasiveness of the legislative framework of the EPC as regards patentable subject-matter. In view of these concerns, the board considered it necessary to refer further questions of law to the EBA. [20] The board in its present composition fully endorses the detailed analysis of the relevant issues in the second referral decision in case T 1242/06. Points [40] to [66] of the reasons of that decision are therefore expressly incorporated into the present decision and form part of it. The board is aware of the comments made by the President of the EPO and by several amici curiae in the pending referral G 2/12. However, since none of the parties in the present proceedings has relied on these comments in detail or requested that they be considered at this stage, i.e. in the context of a further referral decision, the board believes it neither necessary nor appropriate to expand on the analysis above. Referral under A 112(1) [21] The answer to the above question as to whether the process exclusion contained in A 53(b) has a negative impact on the allowability of the [patent proprietor’s] product claims is decisive for the present appeal. It would be clearly inappropriate for the board to decide this issue on its own before the EBA has responded to the referred questions in case G 2/12. The board can therefore either stay the proceedings or refer again questions of law to the EBA. In view of the following considerations the board opts for the second alternative. [22] All the parties explicitly requested a further referral. Such a referral will provide them with the opportunity to address the EBA on a very important legal issue which is decisive for the outcome of the present case. They may thus put forward their own arguments and emphasise supplementary aspects, thereby enriching the basis on which the EBA will take its decision. Furthermore, in view of the [patent proprietor’s] pending claim requests, the present case contains relevant additional aspects which can be integrated into the referral by formulating 337 | 3398
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K’s Law – The ebook
supplementary questions of law (see points [24] to [28] below). Finally, recent developments in case T 1242/06 and in the pending referral G 2/12, i.e. the withdrawal of its opposition by [the opponent] and the repeated requests by the proprietor for termination of the proceedings, raise the possibility that that case may end without a decision on the merits. This strongly speaks against a stay of the proceedings in the present case. [23] All the parties were of the opinion that the same questions as were referred in the second interlocutory decision in case T 1242/06 should be reiterated in the present referral decision. The board agrees in principle. It considers that, for the reasons set out above […], an answer to these questions is required according to A 112(1). A slight modification of question 1 is, however, necessary in order to reflect the fact that in the present case the proprietor’s claims are directed to plants and certain plant parts (seed, edible portion, inflorescence) but not to fruits. [24] The parties have furthermore requested the referral of additional questions of law in order to allow the EBA to address the decisive issue in a comprehensive manner. In the board’s view, the present case does indeed present additional aspects which should be taken into account in formulating the questions to be referred. However, this does not mean that all the additional questions proposed by parties can or need to be referred to the EBA under A 112(1). [25] Two of the questions proposed by the parties […] address the issue that all the [patent proprietor’s] claims define the products by process features. This circumstance can be of importance when answering the question whether and to what extent the process exclusion in A 53(b) has a negative impact on the allowability of product claims. The board therefore considers it appropriate to incorporate the issue into question 2 of the present referral. [26] Question 4 filed by the [patent proprietor] […] raises the further issue of the possibility of a specific kind of disclaimer should the process exclusion affect the allowability of product claims. This issue is of importance in the context of the claims of the [patent proprietor’s] auxiliary request I, which all contain disclaimer clauses such as “wherein the claim does not encompass an essentially biological process for producing [the plant, the portion of a plant, the seed of the plant or the inflorescence]”. [27] The board does not understand the disclaimer clauses in the [patent proprietor’s] auxiliary request I as intended to be a usual disclaimer, i.e. to exclude part of the subject-matter defined in the claim (see the definition provided in decision G 1/03 [2]. The wording of the clauses indicates that the [patent proprietor] does not intend to disclaim all plants or plant parts that are produced by an essentially biological process. Rather the [patent proprietor] appears to seek to waive a part of the prerogatives of the owner of a product patent which encompass the right to prohibit others from producing the claimed product in any manner. The possible effect of the [patent proprietor’s] proposed disclaimer is that producing the claimed product by an essentially biological process could no longer be prohibited. [28] It is doubtful whether European patent law allows such a disclaimer or waiver. The board is not aware of case law dealing with this specific issue. When the EBA considered possible conflicts between the requirements of A 123(2) and (3) in its decision G 1/93, it considered that there was no basis for the so-called “footnote solution” which had been used in German case law and consisted in a statement that an undisclosed feature remaining in the claim represented an inadmissible extension from which no rights could be derived (see point [6] of the reasons). The provisions of the EPC did not envisage or allow a statement to be included in the description of a particular patent, qualifying the rights which may be derived from the presence of a particular technical feature in a claim of that patent. These conclusions, albeit made in a context different from the present one, might be interpreted as pointing to a general unallowability of disclaimers or waivers of rights derived from a European patent. The board nevertheless sees some justification in the [patent proprietor’s] argument that the proposed disclaimer/waiver could solve the conflict between the patentability of plants (other than plant varieties) and the exclusion of essentially biological processes for the production of plants. The board has therefore decided to formulate a corresponding question of law in the present referral. [29] None of the other questions proposed by the parties will be referred to the EBA. […] The following questions are referred to the EBA for decision: 1. Can the exclusion of essentially biological processes for the production of plants in A 53(b) have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts? 2. In particular: 338 | 3398
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(a) Is a product-by-process claim directed to plants or plant material other than a plant variety allowable if its process features define an essentially biological process for the production of plants? (b) Is a claim directed to plants or plant material other than a plant variety allowable even if the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application? 3. Is it of relevance in the context of questions 1 and 2 that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under A 53(b)? 4. If a claim directed to plants or plant material other than a plant variety is considered not allowable because the plant product claim encompasses the generation of the claimed product by means of a process excluded from patentability under A 53(b), is it possible to waive the protection for such generation by “disclaiming” the excluded process? NB: This referral is pending as G 2/13. You can download the whole decision here or consult the file wrapper here.
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T 2102/12 – Unorthodox
K’s Law – The ebook
T 2102/12 – Unorthodox 10 Jul 2013
This is an examination appeal. Claim 1 of the main request on file before Board 3.2.02 read: 1. A method for determining and displaying information of an operator indicated distance using a medical robotic system (100), the claimed method being performed contemporaneously with an unclaimed surgical procedure in which a tool (600, 800, 1200) is being robotically manipulated by a slave manipulator (200) in response to operator manipulation of an input device (108, 109), the claimed method comprising: capturing images indicating movement of the tool (600, 800, 1200); sensing joint positions of the slave manipulator (200); determining a distance moved by the tool (600, 800, 1200) using the sensed joint positions and forward kinematics of the slave manipulator (200); and displaying the captured images and information of the distance on a monitor (104) of the medical robotic system (100) so as to indicate movement of the tool (600, 800, 1200) and visually associate the information of the distance with the movement of the tool (600, 800, 1200). (my emphasis) The Board found this request not to be allowable under A 84: [2.1] The application relates to medical robotic systems (such as the da Vinci® Surgical System from the applicant) which allow to robotically move a tool on an articulated arm in response to the surgeon’s manipulation of an input device […]. As indicated in […] the description, the expression “tools” used in the application denotes surgical instruments. More specifically, the invention is essentially directed to the determination of the distance moved by the surgical tool using sensed data from the robotic manipulation or movement of the tool by the surgeon and to display information of the moved distance on a monitor of the medical robotic system […]. [2.2] Claim 1 of the main and first to third auxiliary requests defines a method for determining and displaying information of an operator indicated distance moved by a tool using a medical robotic system. However, rather than defining in the claims (i.e. claiming) the matter for which protection is sought as stipulated by A 84, the method of claim 1 of the main and first to third auxiliary requests is claimed in terms of “claimed” method steps and “unclaimed” method steps. [2.3] The appellant explained that it was seeking to protect, in an admittedly “unorthodox” way, a method performed by a device for determining and displaying distance information, the claimed method being performed contemporaneously and in parallel with a non-claimed, or “unclaimed”, surgical process. This was expressed in claim 1 of the main and first to third auxiliary requests by specifying “the claimed method being performed contemporaneously with an unclaimed surgical procedure in which a tool is being robotically manipulated by a slave manipulator in response to operator manipulation of an input device” (emphasis added). [2.4] In the present case, the so-called “claimed” method includes the steps of determining the distance moved by the surgical tool using sensed data from the robotic manipulation or movement of the tool, while the so-called “unclaimed” surgical procedure includes precisely that same robotic manipulation (performed by the surgeon). Hence, these two “types” of method steps are inextricably interrelated, whereby their separation into “claimed” and “unclaimed” claim features is artificial and ambiguous. This inextricable relationship becomes particularly apparent in the example of Figure 10 […]. According to this example, a surgical tool is moved by the surgeon to a first position allowing a force sensor on the tool to make contact with an anatomic structure which starts the measurement of the coordinates of that first position, the tool being then moved to a second position at which, after renewed contact of the anatomic structure by the force sensor, the coordinates of the second position are measured, the system’s processor then determining the distance moved by the tool from the measured coordinates of the two positions. This example makes it clear that the movement of the tool by the surgeon on the one hand, and the determination of the distance moved by the tool using the sensed joint positions on the other, are intertwined and inextricably related. 340 | 3398
T 2102/12 – Unorthodox
K’s Law – The ebook
Thus, contrary to the appellant’s view, claiming the measurement of the movement of the tool while “unclaiming” the movement itself renders the subject-matter for which protection is sought unclear. Consequently, the appellant’s intention to eliminate from the presently claimed method the contemporaneously performed surgical process fails for lack of compliance with the requirements of A 84. As mentioned in G 1/07 [4.3.1], the question of whether or not a surgical step can be omitted has to be assessed under A 84 and depends on whether the claimed invention is fully and completely defined by the features of the claim without that step, which is not the case here as explained above. The presently claimed method of intertwined non-surgical (“claimed”) and surgical (“unclaimed”) steps is not comparable to that underlying T 836/08. [2.5] For the above reasons, claim 1 of the main and first to third auxiliary requests is not allowable under A 84. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 408/12 – Yes We Can
K’s Law – The ebook
T 408/12 – Yes We Can 9 Jul 2013
This is an examination appeal. Claim 1 on file read: Pressurized metal can, such as an aerosol can, having a bottom comprising a panel connected with a panel radius R4 to a countersink having a panel wall angle A2, a foot wall angle A1, and a countersink radius R3, which countersink is connected to a foot having a foot radius R2 and the foot is connected to a can body wall, which panel has a substantially non-concave form, wherein:
the foot wall angle A1 is in the range of about 0° to 45°; the panel wall angle A2 is in the range of about 0° - 45°; the foot radius R2 is in the range of about 0.5 to 1,5 mm; the countersink radius R3 is in the range of about 0,5 to 1,5 mm; the panel radius R4 is in the range of about 1,0 to 1,5 mm; the unit depth H1 is in the range of about 5 - 15 mm; the panel depth H2 is in the range of about 2 - 10 mm; and the center panel radius R5 is larger than about 20 mm
wherein the can has a diameter in the range of about 20 - 80 mm, a bottom wall thickness in the range of about 0,2 - 0,7 mm, and having a pressure resistance up to about 15 bar. The Board found this claim to lack inventive step over D1: Consideration of D1 as prior art in the examination of inventive step [4.1] The appellant objected to D1 being considered as prior art in connection with the can of claim 1 and to the understanding by the Board of the disclosure given for the bottom according to the first embodiment. [4.2] Its objection concerning the consideration of D1 as prior art is based on the argument that the can according to claim 1 and the cans disclosed in D1 belong to substantially different technical fields due to differences concerning their capacities to sustain loads and their intended uses. [4.3] The Board cannot follow these arguments for the following reasons: Differences concerning the intended uses of the cans according to claim 1 and D1 cannot be taken into account since in claim 1 the “aerosol can” is not an obligatory feature but is referred to only as an example; D1 only refers to a pressurized container of the conventional “beer can” type […]. The argument concerning different capacities of the cans according to claim 1 and D1 are based on the assumption that the can according to claim 1 has to be able to withstand high internal pressures […] whereas the cans according to D1 need to withstand only external forces. The Board is of the opinion as indicated during the oral proceedings (OPs), that in both cases the cans have to withstand internal pressures as well as external forces since these are loads normally to be carried by pressurized cans. In this respect besides the pressure referred to in the application in suit […] its axial load resistance with respect to a vertical load is also referred to […]. In D1 it is stated that the cans have to sustain compressive forces […]; all cans configured according to figure 2 (i.e. cans according to the first embodiment as referred to above) have to withstand axial loads […].
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T 408/12 – Yes We Can
K’s Law – The ebook
As indicated by the Board during the OPs it also needs to be taken into consideration that for cans according to claim 1 as well as cans according to D1 the aim is for an improved load carrying capacity via the manner in which the bottom is designed […]. Moreover, as likewise indicated by the Board during the OPs, it is to be expected that since the can as defined by claim 1 of the application in suit and the one according to the first embodiment of D1 have the same structure as can be derived from the following […] they also have corresponding load carrying capacities with respect to external and internal loads. The Board thus considers D1 as prior art to be considered in relation to the can according to claim 1. [4.4] Having been informed during the OPs that D1 is not considered as lying in a technical field which is substantially different from that of the can of the application is suit and that therefore the first embodiment of D1 can be considered as prior art in the examination of inventive step, the appellant argued that the bead 60, provided on the bottom of the can, cannot be understood as constituting a countersink as defined in claim 1. This objection was essentially based on three arguments. [4.4.1] According to the first argument the bead […] is only optionally provided. In the normal situation in which no such a bead is provided (the second embodiment) the countersink is constituted by a foot wall 32, a panel wall 36 and a section joining these two walls which has a radius 64. These elements together constitute the countersink and do not lose this capacity merely by adding an optional element to the bottom at the radius 64 such as the bead. [4.4.2] According to the second argument even if a bead is provided at the container bottom shown in figure 2 it cannot be considered as constituting a countersink as defined by claim 1, since such a bead is not connected to the panel via a panel radius and does not have a panel wall angle, nor a foot wall angle, nor a countersink radius. Moreover, since according to D1 “the bead 60 subtends an arc 62 of greater than 100° and preferably on the order of 180°” […] it has to be assumed that for the preferred angle of 180° the bead is non-existent as it is flattened due to this large angle. In that case it lacks a countersink radius. The appellant referred in this respect also to the criticality of the values for these parameters of the countersink with respect to the pressure resistance as explained in D3. [4.4.3] According to the third argument the countersink according to claim 1 significantly contributes to the bottom having the defined pressure resistance of up to about 15 bar whereas for the optional bead according to the first embodiment of D1 no such effect is disclosed. This becomes even more evident considering the second and third embodiment of D1, for which it is apparent that a bead is not foreseen, not even optionally. [4.5] Concerning these arguments the Board is of the following opinion as expressed during the OPs. [4.5.1] As referred to above D1 discloses clearly a first and a second embodiment in connection with figure 2 and a third one according to figure 8: each of these three embodiments has its own particular structure of the bottom for the can. In the first embodiment the bottom comprises a bead which is not the case for the second or the third embodiment. Despite the optional nature of the bead the disclosure of the first embodiment needs to be 343 | 3398
T 408/12 – Yes We Can
K’s Law – The ebook
taken into consideration independently of the second and the third embodiment, the bottoms of which do not comprise a bead. [4.5.2] With respect to the second argument it needs to be taken into account that as defined by claim 4 of the application in suit and figure 2, the claimed bottom can comprise a panel outer ring having a length L1 and a panel outer ring slope A3 in the range of about 2 - 35°. […]. The appellant failed to give a convincing reason why an element connected outwardly of the (inner) substantially non-concave panel, namely the outer ring, is an element different from the third frustoconical portion 36 disclosed in the first embodiment of D1 […] which is arranged in exactly the same manner with respect to the (inner) panel 34 of substantially non-concave form […]. Since, in view of the Board, the panel outer ring 36 of the first embodiment of D1 is to be considered as part of the panel it cannot, corresponding to the definitions given in claim 1, be considered part of the countersink. Consequently, the latter is formed by the bead 60. Rounded portions (necessary due to manufacturing / tooling constraints) connect this bead / countersink to the foot on the one hand and the panel wall given by the panel outer ring (as defined by claim 4) on the other. This countersink has a countersink radius R3 having a value lying within the range of about 0.5 to 1.5 mm as defined by claim 1 […]. This applies also taking the argument of the appellant into account that “the bead 60 subtends an arc 62 of greater than 100° and preferably on the order of 180°”. For the Board, this statement of D1 cannot be understood as indicating that for larger angles of extension of the bead the latter loses its shape of a section of a circle. For 180° it simply means that the shape of the bead is half a circle, just as shown in figure 2 by the interrupted lines. [4.5.3] Concerning the third argument that the countersink according to claim 1 significantly contributes to the bottom having the defined pressure resistance of up to about 15 bar, whereas for the optional bead according to the first embodiment of D1 no such effect is disclosed: no convincing reason has been given why the claimed countersink on the one hand and the bead of the first embodiment on the other would be different. They have – qualitatively – the same structure and are arranged in the same manner in the bottom, they therefore should have the same effect with respect to the pressure resistance of the can. This is all the more so since the influence of the bead on the pressure resistance is explicitly referred to in D1 […]. Consideration of the second and third embodiment cannot alter this assessment since admittedly according to these embodiments a bead is not even optionally foreseen. [4.5.4] The explanations given in D3 with respect to the criticality of the countersink on the one hand and the nature of the bead of the first embodiment on the other hand, cannot alter the above assessment either since they start from the premise that the bead cannot be equated with the countersink of claim 1, to which premise the Board, however, cannot subscribe. [4.6] To complete the analysis of the disclosure of the first embodiment of D1, it discloses further the following remaining parameters of claim 1, starting form the center of the bottom
the center panel radius the panel radius between the panel outer ring 36 and the bead 60 the countersink radius of the bead 60 (see also point [4.5.2] and [7.3.2] below) the foot radius at bottom bead 28 the panel wall angle between the vertical and the inward wall of bead 60 the panel wall angle between the vertical and the outward wall of bead 60 the unit depth and the panel depth.
That these parameters are present in this embodiment is corroborated by D3, annex 2, where this first embodiment is called the “figure 2A bottom”. Consideration of the can according to the first embodiment of D1 as closest prior art [5] The can according to the first embodiment […] with its bottom having a bead 60 is the one having more features in common with the can of claim 1 than the second or third embodiment. As pointed out in point 4.3 above, it also serves the same purpose: withstanding internal and external loads. This embodiment satisfies thus the conditions which, in line with the well-established approach followed by the boards of appeal, have to be considered in establishing the closest prior art for the examination of inventive step.
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T 408/12 – Yes We Can
K’s Law – The ebook
In this respect the argument of the appellant that according to the disclosure of D1 the third embodiment has further advantages as compared to the second embodiment need not be considered since even if it holds true it is based on a comparison between the embodiments disclosed in D1 and not on one in which each of these embodiments is compared with the can defined by claim 1. It is in any case clear that a comparison of the can according to the third embodiment […] shows less agreement with the subject-matter of claim 1 than it is the case for the first embodiment […]. Features distinguishing the can of claim 1 from the one according to the first embodiment of D1 [6.1] As indicated above […] the can according to the first embodiment of D1 comprises, in accordance with the can defined by claim 1, a bottom having a panel, a countersink in the form of bead 60 and a foot, these elements having together the same parameters as in claim 1. [6.2] Consequently, in line with the “ADDITIONAL COMMENTS” of the decision under appeal the Board is […] of the opinion that the can according to claim 1 is distinguished from the one according to the first embodiment by the value ranges defined for the parameters associated with the elements constituting the bottom. [6.3] According to these value ranges
the foot wall angle A1 is in the range of about 0° to 45°; the panel wall angle A2 is in the range of about 0° - 45°; the foot radius R2 is in the range of about 0.5 to 1,5 mm; the countersink radius R3 is in the range of about 0,5 to 1,5 mm; the panel radius R4 is in the range of about 1,0 to 1,5 mm; the unit depth H1 is in the range of about 5 - 15 mm; the panel depth H2 is in the range of about 2 - 10 mm; and the center panel radius R5 is larger than about 20 mm wherein the can has a diameter in the range of about 20 - 80 mm, a bottom wall thickness in the range of about 0,2 - 0,7 mm, and having a pressure resistance up to about 15 bar. Obviousness
[7.1] The effect of the distinguishing features can thus be seen in the provision of concrete numerical values for the parameters defining the bottom. [7.2] The problem which can be formulated from this effect would be to provide numerical values for the parameters disclosed for the bottom of the can according to the first embodiment, i.e. how to reduce this can bottom to practice. [7.3] Examining whether the solution to this problem as provided by the can as defined by claim 1 is obvious means: will the skilled person arrive at values falling in these ranges when reducing the can according to the first embodiment into practice. In this respect the disclosure of D1 is of concern. [7.3.1] Concerning the disclosure given to a skilled person by the first embodiment of D1, with respect to numerical values for the parameters in question, the following distinction was indicated by the Board during the OPs: in the examination of novelty, the disclosure of D1 to be considered is limited to what is directly and unambiguously disclosed in the document; the situation is different concerning the disclosure which is to be considered in the examination of inventive step. In the latter case the disclosure needs to be evaluated taking into account not only the direct and unambiguous disclosure, but also quantitative values the skilled person would derive for the relevant parameters from figure 2 and the associated description in an attempt to reduce the can according to the first embodiment into practice. [7.3.2] Following this approach, referred to already in the impugned decision […], the skilled person would arrive at the values for the parameters which correspond between claim 1 and the description and figure 2 […]. Figure 2 is considered as a schematic section of the lower part of the can concerned showing the elements constituting the bottom and thus also their defining parameters (angles, radiuses and heights) in correct proportion:
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T 408/12 – Yes We Can
K’s Law – The ebook
foot wall angle (between the outer and wall of bead 60 and the vertical): approximately 10° (thus in the range given for A1 of about 0° to 45°); panel wall angle (between the inward wall of bead 60 and the vertical): approximately 15° (thus in the range given for A2 of about 0° - 45°); foot radius: in the range for R2 of about 0.5 to 1,5 mm; countersink (bead) radius 60: in the range of 0.030 to 0.187 inch (0,762 to 4,75 mm) as given in column 7, lines 39 - 42 of D1 (thus with values in the range for R3 of about 0,5 to 1,5 mm); panel radius: in the range for R4 of about 1,0 to 1,5 mm; unit depth: in the range for H1 of about 5 - 15 mm; panel depth: in the range for H2 of about 2 - 10 mm; and center panel radius: corresponding to R5 larger than about 20 mm.
[7.3.3] Concerning the above values being derivable from the first embodiment of D1 it has not been disputed that the value ranges given for the radii come in any case within regular design practice taking e.g. into account that certain minimal values for the radii have to be observed due to manufacturing requirements / tooling constraints. Concerning the height dimensions H1 and H2 likewise it has not been disputed that the values derivable from D1 for the first embodiment lie within the value ranges defined in claim 1. [7.3.4] The can according to the first embodiment furthermore has, since it is of the conventional beer can type […], a diameter in the range as defined by claim 1 of about 20 - 80 mm. For the bottom wall thickness a value of about 0.0145 inch (0,37 mm) is referred to in D1 […] which lies in the range defined in claim 1 of about 0,2 0,7 mm. [7.3.5] Due to the correspondence between the bottom as defined by claim 1 and the one according to the first embodiment of D1 as discussed above it must be that the can according to D1 has a pressure resistance which is similar to the one referred to in claim 1 as “up to about 15 bar”, otherwise the claimed can would not fulfil that condition over the whole extent of the claimed ranges. [7.4] Since it is apparent that for the can according to the first embodiment the parameter values obtainable from D1 by its reduction to practice are not singular ones but vary accordingly around the indicted values and since it has neither been argued nor proven that the value ranges defined in claim 1 lead – in combination – to another particular effect, the can according to claim 1 does not involve an inventive step over the one of the first embodiment of D1 (A 56). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 612/09 – Range Roving
K’s Law – The ebook
T 612/09 – Range Roving 8 Jul 2013
This is an appeal against the revocation of the patent under consideration by the Opposition Division (OD). The Board found the main request on file not to comply with the requirements of A 123(2) and then examined the auxiliary request claim 1 of which read (the amendments with respect to claim 49 as filed are underlined): 1. Use of daptomycin for the manufacture of a medicament for treating a bacterial infection in a human patient in need thereof, wherein a dose for said treating is 3 to 10 mg/kg of daptomycin, wherein said dose is repeatedly administered in a dosage interval of once every 24 hours. Amendments (A 100(c) and A 123(2)) [8] Claim 1 of this request likewise concerns a dosage regime for treating a bacterial infection with the antibiotic daptomycin and differs from claim 1 of the main request in that the alternative “or once every 48 hours” is deleted. The decision under appeal dealt with the same claim 1 which is at issue here. [9] Claim 1 includes the feature “wherein said dose is repeatedly administered” which was present in claim 1 as granted and objected to by [opponent 2] under A 123(2) (A 100(c)). The board shares the OD’s view that the introduction of this feature into claim 1 does not contravene A 123(2). Claim 49 as filed discloses that daptomycin is used “at a dosage interval of once every 24 hours” […]. The board considers that from the indication of a “dosage interval” and of “once every 24 hours” the skilled person would understand directly and unambiguously that the dose of daptomycin is administered more than once, in other words, repeatedly. The board is not persuaded by [opponent 2’s] argument that “repeatedly once every 24 hours” can also mean “that a drug is administered once every 24 hours for one week, then the intake of the drug is interrupted for one week followed by another week of taking the drug once every 24 hours. In other words the intake of the drug at a dosage interval of once every 24 hours can be conducted repeatedly, i.e. with intermissions.” First of all the board notes that claim 1 reads: “wherein said dose is repeatedly administered in a dosage interval of once every 24 hours” and does not read “repeatedly once every 24 hours”. Neither the wording of claim 1 nor the skilled person’s common understanding regarding the administration of antibiotics warrant the interpretation advocated by [opponent 2]. The introduction of the feature “wherein said dose is repeatedly administered” therefore does not result in new technical information which was not present in the application as filed. [10] According to the decision under appeal claim 1 however contravened A 123(2) because the dose range from “3 to 10 mg/kg of daptomycin” could not be derived directly and unambiguously from the application as filed. The OD held that the principles developed in decisions T 2/81 and T 201/83 were not applicable to the present case […]. The board comes to a different conclusion than the decision under appeal for the reasons set out below. [11] Firstly, the board agrees with the [patent proprietor] that the principles developed in decision T 2/81 are of relevance to the present case. In the case underlying decision T 2/81 the application disclosed a range “from 1 ppb to 10 ppm, preferably from 0.05 to 5 ppm”. The question before the then competent board was whether the range from 0.05 to 10 ppm could be regarded as disclosed. The board held (see decision T 2/81 [3]) as follows: “The end-points are specifically named, and the two part-ranges of the general [range] lying outside the preferred range would be unequivocally and immediately apparent to the person skilled in the art. The simple sub-combination of these part-ranges of the concentration values as claimed would not merit novelty as “selection”, so that the restriction does not represent any new subject-matter within the meaning of A 123(2).” As pointed out by the [patent proprietor], the board reached the claimed range of 0.05 to 10 ppm in two steps. In the first step, it considered that the two part-ranges of the general range lying outside the preferred range (i.e. 1 ppb to 0.05 ppm and 5 ppm to 10 ppm) would be unequivocally and immediately apparent to the person skilled in the art. It then considered that no new matter was introduced by combining the preferred range (0.05 to 5 ppm) with the upper part-range (5 ppm to 10 ppm). According to T 2/81 [headnote 2]:
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T 612/09 – Range Roving
K’s Law – The ebook
“The disclosure of a quantitative range of values (e.g. for concentrations or temperatures) together with an included preferred narrower range also directly discloses the two possible part-ranges lying within the overall range on either side of the narrower range. Hence a simple combination of the preferred narrower range and one of these part-ranges is also unequivocally derivable and is supported by the disclosure.” [12] The [opponents] submitted that the principles developed in decision T 2/81 were not applicable to situations where the range resulted from the combination of the lower limit of the general range with the lower limit of the preferred range, thus excluding the preferred range (see decision T 1170/02 [4.3]). [13] However, the board agrees with the [patent proprietor] that only the first step of the analysis carried out in decision T 2/81 is necessary to arrive directly and unambiguously at the range of 3 to 10 mg/kg of daptomycin. In the present case, claim 49 as filed discloses the use of daptomycin for the manufacture of a medicament for treating a bacterial infection in a patient in need thereof, wherein a dose for such use is 3 to 75 mg/kg of daptomycin at a dosage interval of once every 24 hours. According to dependent claim 52 as filed the dose is 10 to 25 mg/kg. Applying the principles of decision T 2/81 to the present case, the two part-ranges lying within the overall range on either side of the narrower range and hence also directly and unambiguously disclosed to the person skilled in the art are i) a dose of 3 to 10 mg/kg of daptomycin and ii) a dose of 25 to 75 mg/kg of daptomycin. Claim 49 in combination with claim 52 as filed thus disclose the following four ranges of daptomycin doses - 3 to 75 mg/kg, 10 to 25 mg/kg, 3 to 10 mg/kg and 25 to 75 mg/kg - at a dosage interval of once every 24 hours for treating a bacterial infection in a patient in need thereof. The board notes that this finding is in line with earlier case law, see e.g. decision T 727/00 [1.1.3, 1.1.4 and 2.1.2]. [14] Claim 1 under consideration is directed to a dosage regime based on one of these four ranges for treating a human patient. The [opponents] submitted that the range of 3 to 10 mg/kg daptomycin was not directly and unambiguously disclosed in combination with human patients. [15] [… T]he relevant question to be addressed is whether or not restricting the dosage regime to human patients results in the skilled person being presented with technical information which is not clearly and unambiguously set out in the application as filed. The present invention addresses the problem of skeletal muscle toxicity at high doses of daptomycin […] and discloses that once-daily dosing can minimize daptomycin muscle toxicity, while potentially optimizing its antimicrobial efficacy […]. The disclosed methods can be used for human patients in clinical applications and in veterinary applications […]. The skilled person learns from the application as filed […] that in a preferred embodiment daptomycin is administered to a human patient in a dose of 3 to 12 mg/kg every 24 to 48 hours and in an even more preferred embodiment, daptomycin is administered at a dose of 3, 4, 5, 6, 7, 8, 9, 10 or 12 mg/kg once every 24 hours. Furthermore, according to example 4 daptomycin is administered to human subjects at a dose of 4 mg/kg every 24 hours or at a dose of 6 mg/kg every 24 hours without any signs of muscle toxicity. The application as filed therefore points the skilled person to the use of a dose of 3 to 10 mg/kg of daptomycin for the treatment of a bacterial infection in human patients. The board concludes therefrom that the subject-matter of claim 1 does not present the skilled person with technical information which could not be derived clearly and unambiguously from the application as filed. [16] Secondly, the board agrees with the [patent proprietor] that also the line of reasoning developed in decision T 201/83 is of relevance to the present case. According to T 201/83 [12] “(…) an amendment of a concentration range in a claim for a mixture, such as an alloy, is allowable on the basis of a particular value described in a specific example, provided the skilled man could have readily recognised this value as not so closely associated with the other features of the example as to determine the effect of that embodiment of the invention as a whole in a unique manner and to a significant degree”. [17] In the case underlying decision T 201/83 the fact that the value was disclosed in an example was insofar of relevance as the board had first to establish that the value disclosed in the context of an example could be considered separately from the other features disclosed in the example. This board cannot however derive from decision T 201/83 the requirement that the value on which a sub-range is to be based has necessarily to be disclosed in an example. Rather it appears that what is required is that for the skilled person the value has to be recognisable as a singularity, as in decision T 201/83 within or at the end of a range of possibilities which may mark an end-point for a particular sub-range (cf. decision T 201/83 [8-9]). [18] In the present case […] the description as filed discloses that: “In a more preferred embodiment, daptomycin is administered to a human patient in a dose of 3 to 12 mg/kg every 24 to 48 hours.”
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T 612/09 – Range Roving
K’s Law – The ebook
Furthermore, […] the application as filed discloses that “In an even more preferred embodiment, daptomycin is administered in a dose of 3, 4, 5, 6, 7, 8, 9, 10, 11 or 12 mg/kg once every 24 hours.” The board considers that this latter disclosure makes the dose of 10 mg/kg of daptomycin every 24 hours recognisable as a point within several possibilities. Therefore, in view of the observations above […] it can be used as the end-point to define a sub-range. From the following paragraph […] it is moreover clear that the dosage regime applies to the treatment of a bacterial infection. [19] The [opponents] assert that the extraction of the value 10 mg/kg of daptomycin would correspond to a qualitative choice. However, a qualitative choice would require a selection from a variety of several possibilities wherein the selected possibility is qualitatively distinct from the other possibilities. In the present case the dose range of 3 to 12 mg/kg of daptomycin, each of the doses of the list of doses of 3, 4, 5, 6, 7, 8, 9, 10, 11 or 12 mg/kg of daptomycin and hence also the dose of 10 mg/kg of daptomycin have been disclosed in connection with a dosing interval of 24 hours for the treatment of a bacterial infection in humans. Thus the range to be amended, i.e. 3 to 12 mg/kg of daptomycin, the value used for restricting the original range, i.e. 10 mg/kg of daptomycin, and the amended range, i.e. 3 to 10 mg/kg of daptomycin are all qualitatively identical. Therefore the restriction of the dose range from 3 to 12 mg/kg of daptomycin every 24 to 48 hours to 3 to 10 mg/kg of daptomycin every 24 hours is in the present case to be considered as a quantitative rather than a qualitative limitation of a dose range, i.e. it is a limitation that is directly and unambiguously derivable from the application as filed and that does not represent the skilled person with new technical information. Thus, the board concludes that […] the description as filed also provides a basis for claim 1 of the auxiliary request. [20] For the reasons indicated above […] the board decides that the auxiliary request complies with the requirements of A 123(2) (A 100(c)). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1142/09 – Fresh Indeed
K’s Law – The ebook
T 1142/09 – Fresh Indeed 5 Jul 2013
In this appeal against the rejection of an opposition, Board 3.3.05 had to deal with a late filed ground for opposition: lack of inventive step. I found the decision interesting because it limits/qualifies to some extent the application of the principle set out in T 131/01. *** Translation of the German original *** [1.5.1] The ground for opposition that the claims lacked inventive step was raised after the [expiration of] the nine-month time limit for filing an opposition and submitted when document D2 was filed on February 10, 2009. The [opponent] only submitted arguments concerning the lack of novelty with respect to D2. It added the remark that in view of the same facts and reasons the subject-matter of the patent did not involve an inventive step. The Opposition Division (OD) considered the ground for opposition that the claims lacked inventive step not to have been substantiated and, therefore, did not introduce it into the proceedings. It has to be examined whether the decision of the OD not to introduce the fresh ground for opposition [that the claims lacked] inventive step into the proceedings was correct. According to T 1002/92 the examination of the prima facie relevance of a fresh ground for opposition presupposes that “facts and evidence” supporting this ground are submitted. “The mere stating of a fresh ground without any indication of the fresh facts, evidence and argument supporting it would obviously be inadmissible, either within or after expiry of the opposition period.” (see T 1002/92 [3.2]) In the present case [the opponent] did not submit any arguments regarding inventive step because, according to the [opponent], this would be self-contradictory in a situation where there had been a novelty objection based on the same document. T 131/01 is based on a similar case: both novelty and inventive step had been mentioned as grounds for opposition within the nine-month time limit for filing an opposition, but only the objection of [lack of] novelty had been substantiated. In this case the Board of appeal reached the conclusion that the examination of inventive step presupposed novelty, which was indeed contested by the opponent, and that in such a case it was not necessary to explain the objection of lack of inventive step in detail. If this objection is later on raised in detail, this did not amount to a fresh ground for opposition (see T 131/01 [3.1]). However, the present situation is different. Here even the substantiation of the objection of [lack of] novelty was quite scanty, and, therefore, it is quite questionable whether the condition established in T 222/85 – according to which the contents of such notice have to be sufficient for the opponent’s case to be properly understood on an objective basis [headnote 2] – is satisfied. As in the present case – contrary to the case underlying T 131/01 – novelty has not been discussed in detail, the skilled person cannot understand which features could be relevant for inventive step in case the novelty objection was not successful. The discussion of novelty in the letter dated February 10, 2009, does not contain any indications regarding the claims that are understood not to be novel, nor does it contain an analysis of the features of the claims. It is not explained (thematisiert) at all why and where the amounts indicated in the method according to claim 1 of the opposed patent or the parameters indicated in claim 7 of the opposed patent are (allegedly) disclosed in combination with the other features in D2. Thus the skilled person does not know to which claim the objection refers and which features are disclosed where. Also, the supplementary written submission of February 10, 2009, does not explain differences with respect to the opposed patent, which is another difference with respect to the case underlying T 131/01 (see also T 131/01 [3.2]). In order for a ground for opposition to be considered to be substantiated, the OD and the patent proprietor also have to be able to review the ground for opposition that has been invoked without further investigations (see T 350 | 3398
T 1142/09 – Fresh Indeed
K’s Law – The ebook
453/87 [2.2]). This condition is not fulfilled in the present case for the ground for opposition that the claims lack inventive step. To sum up, [the Board] notes that the letter dated February 10, 2009 is not suitable for allowing [the Board and the patent proprietor] to understand the argument of the [opponent] regarding inventive step. Thus the ground for opposition [that the claims lack] inventive step is to be considered unsubstantiated and, in line with T 1002/92, the prima facie relevance of the patent document D2 does not have to be examined. The decision of the OD in this respect is correct. The OD has decided to introduce D2 into the proceedings because this document was considered to be more relevant for the question of novelty than D1. However, this does not mean that D2 was considered to be prima facie relevant in all respects (insgesamt). Thus the ground for opposition [according to which the claims lack] inventive step is a fresh ground for opposition. As the patent proprietor has not given its approval for the examination of the ground for opposition [that the claims lack] inventive step, this ground cannot be examined (see G 10/91 [18]). Thus lack of novelty was the sole ground for opposition to be examined. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 22/09 – Resurrection
K’s Law – The ebook
T 22/09 – Resurrection 4 Jul 2013
We have a new referral to the Enlarged Board of appeal (EBA), pending under the reference G 1/13. In this case an opposition had been filed on November 2, 2004, in the name of Formalities Bureau Limited, a company governed by the law of the United Kingdom. The opponent was represented by Peter Charles Bawden of Bawden & Associates. The Opposition Division (OD) maintained the opposed patent in amended form. On December 29, 2008, Mr Bawden, acting on behalf of the opponent, filed an appeal. On August 27, 2012 the patent proprietor filed written observations in response to submissions of the opponent. It raised an objection of inadmissibility against the appeal on the ground that there was a discrepancy in the manner in which the appellant had been identified in the notice of appeal and in the statement of grounds of appeal. The [patent proprietor] pointed out that the notice of appeal had been filed in the name of the original opponent, namely: Formalities Bureau Ltd. 4 The Gate House 2 High Street Harpenden Herts AL5 2TH The statement of grounds of appeal, however, had been filed by a different entity, namely: Formalities Bureau Bawden & Associates 4 The Gate House 2 High Street Harpenden Hertfordshire AL5 2TH United Kingdom. 352 | 3398
T 22/09 – Resurrection
K’s Law – The ebook
The patent proprietor argued that in accordance with the case law of the Boards of Appeal (BoA) (e.g. T 298/97) both the notice of appeal and the statement of grounds of appeal had to be filed by the same party, namely the party adversely affected by the decision appealed against, in order for the appeal to be admissible. In written observations filed on September 4, 2012, the patent proprietor raised a further objection of inadmissibility based on its discovery, made the day before that the company in whose name the opposition had been filed (Formalities Bureau Limited) had ceased to exist in the year 2005, i.e. three years before the OD issued the decision under appeal. As evidence, an internet printout from Companies House (the UK register of companies) was produced, showing that Formalities Bureau Limited had been dissolved on October 4, 2005. Mr Bawden submitted written observations on behalf of the appellant on 8 October 2012. He provided details of an application to the Chancery Division of the High Court of Justice to restore Formalities Bureau Limited to the register of companies under section 1029 of the UK Companies Act 2006. He also supplied copies of the relevant UK legislation and a legal opinion by a UK solicitor concerning the procedure for restoring a dissolved company to the register and the prospects of success for the application to restore Formalities Bureau Limited to the register. On December 7, 2012, Mr Bawden informed the BoA that the Court had approved the application to restore Formalities Bureau Limited to the register of companies. On December 17, 2012, he provided the BoA with a copy of a “General Form of Judgment or Order”, dated December 5, 2012, by which the Chancery Division of the High Court of Justice ordered the restoration of Formalities Bureau Limited to the register of companies. Point 3 of the order required a copy thereof to be delivered to the Registrar of Companies and stated that, pursuant to the Companies Act 2006, the company was “thereupon to be deemed to have continued in existence as if its name had not been struck off” . The BoA found the situation to require a referral to the EBA: The alleged doubt about the identity of the appellant [1] The BoA does not agree with the [patent proprietor’s] contention that there is a lack of clarity concerning the identity of the appellant. It is clear from the documents on file that the notice of appeal and the statement of grounds of appeal were filed on behalf of the company in whose name the opposition had been filed namely Formalities Bureau Limited. The omission of the word “Limited” in the name of the company appears to have been accidental. The words “Bawden & Associates” were added as part of the address, not as part of the name of the appellant. That is clear from the fact that those words were placed on the next line. The legal consequences of the dissolution of Formalities Bureau Limited and its retroactive restoration to the UK register of companies [2] Locus standi to oppose a European patent is defined in extremely broad terms. Under A 99(1) “any person” may file a notice of opposition within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin. The opponent does not have to have any special interest in challenging the patent: G 1/84 and T 798/93. An opposition may be filed by a “straw man”, that is to say a party acting on behalf of another person: G 3/97 and G 4/97. [3] The term “person” in A 99(1) may refer either to a natural person or to an artificial legal person such as a limited company. When an opposition is filed by a company, that company must not only exist at the moment when the opposition is filed but must continue to exist throughout the opposition proceedings and, in the event of an appeal, throughout the appeal proceedings. In case T 525/94 it was held that an appeal filed in the name of a company that had been dissolved was inadmissible. In case T 353/95 the appeal proceedings were terminated without a decision on the substance because the appellant company, although in existence at the time when the appeal was filed, had been dissolved while the proceedings were still pending. [4] In the present case the opposition was filed in the name of Formalities Bureau Limited. That company existed at the time when the opposition was filed but it had ceased to exist by the time the OD issued its decision maintaining the patent in amended form. The company had in fact been dissolved over three years earlier. In case T 353/95 the BoA stated that “Only an existing natural or legal person can be a party to opposition parties”. Hence, following the dissolution of the sole opponent the opposition proceedings could have been terminated. It would, however, also have been open to the OD to continue the proceedings of its own motion under R 60(2) EPC 1973 (now R 84(2)). Moreover, since the appellant did not legally exist at the time when the appeal was filed in its name, or at any point during the two-month period referred to in A 108 for filing the notice of appeal, 353 | 3398
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the appeal could have been rejected as inadmissible under R 101(1) on the ground that it did not comply with A 107. That article provides that an appeal may be filed by any party to proceedings adversely affected by a decision. Having ceased to exist, the company could not have been a party to the proceedings, still less a party adversely affected by the decision of the OD. [5] The question that arises in the special circumstances of the present case is whether the resurrection of the opponent company as a result of its restoration – with retroactive effect – to the UK register of companies is capable of curing the defects alluded to in paragraphs 3 and 4 above. [6] In principle the question whether a company exists is to be determined by the law under which it was created. Formalities Bureau Limited was created under the law of the United Kingdom. According to section 1032(I) of the UK Companies Act 2006, the “general effect of an order by the court for restoration [of a dissolved company] to the register is that the company is earned to have continued in existence as if it had not been dissolved or struck off the register” . Point 3 of the order made by the Chancery Division of the High Court of Justice on 5 December 2012 expressly recognizes the retroactive effect of the restoration of Formalities Bureau Limited to the register of companies […]. Moreover, it is clear from the terms of the order that the purpose of restoring the company to the UK register of companies was to allow it to continue to participate in the present appeal proceedings. [7] The [patent proprietor] argues in essence that, since the opposition had lapsed by the time the decision under appeal was issued and the appeal was inadmissible when it was filed, those fundamental defects cannot be overcome by recourse to a legal fiction provided for in national law whereby a dissolved company is deemed to have continued to exist throughout the relevant period as though the dissolution had never occurred. According to the [patent proprietor], the recognition of such a retroactive effect by the EPO would subvert the system of legal remedies and time limits provided for in the EPC. [8] The BoA is not persuaded by the [patent proprietor’s] argument based on A 121 and A 122. Both those provisions are concerned with the situation that occurs when a party to proceedings fails to observe a time limit vis-a-vis the EPO. That is not what has happened in the present case, so it is difficult to see what relevance those articles have. [9] However, the [patent proprietor’s] general argument along the lines that it would be wrong to allow a peculiar feature of UK company law to trump the EPC is not so easily dismissed. The fact is that, although the opposition was admissible when it was filed, the opposition proceedings could have been terminated at any point between 4 October 2005 (on which date the opponent company was dissolved) and 29 October 2008 (the date of the decision under appeal) on the ground that the sole opponent had ceased to exist. Moreover, the appeal was inadmissible at the time when it was filed because the appellant did not at that moment exist. Can those defects be cured retroactively by virtue of a provision of national law which restores a company to the register seven years after its dissolution and deems the company never to have been dissolved? There is no clear answer to that question in the EPC or in the case law of the EPO BoA. It involves a point of law of fundamental importance, within the meaning of A 112(1), inasmuch as it concerns the system of remedies provided for in the EPC, the acquisition and retention of the status of party to proceedings before the EPO and the relationship between the EPC and national law. A decision on that question is obviously necessary since the BoA cannot determine whether there is a proper basis for the continuation of the opposition proceedings by the restored company and whether the appeal is admissible without an answer to the question. It is therefore appropriate to refer the question to the EBA under A 112(1)(a). [10] If the defects alluded to in paragraphs 3 and 4 above cannot be cured retroactively as a result of the restoration of the opponent company to the UK register of companies under section 1032(1) of the Companies Act 2006, it will be necessary to decide whether that has the consequence that the decision of the OD automatically ceases to have effect and that the opposed patent is maintained as granted. It is appropriate to refer that question also to the EBA. The question of the parties obligation to keep the EPO informed about certain matters [11] The [patent proprietor] has not explained the relevance of the question which it asks the BoA to refer to the EBA concerning the parties’ obligation to keep the EPO informed about certain matters. In particular, the [patent proprietor] has not indicated what specific consequences would, in its view, follow in the present case from a failure to comply with such an obligation (were the existence thereof established). The BoA does not therefore consider it necessary to refer that question to the EBA. Order 354 | 3398
T 22/09 – Resurrection
K’s Law – The ebook
For these reasons it is decided that: The following questions are referred to the EBA: 1. Where an opposition is filed by a company which is dissolved before the OD issues a decision maintaining the opposed patent in amended form, but that company is subsequently restored to the register of companies under a provision of the national law governing the company, by virtue of which the company is deemed to have continued in existence as if it had not been dissolved, must the EPO recognize the retroactive effect of that provision of national law and allow the opposition proceedings to be continued by the restored company? 2. Where an appeal is filed in the name of the dissolved company against the decision maintaining the patent in amended form, and the restoration of the company to the register of companies, with retroactive effect as described in question 1, takes place after the filing of the appeal and after the expiry of the time limit for filing the appeal under A 108, must the BoA treat the appeal as admissible? 3. If either of questions 1 and 2 is answered in the negative, does that mean that the decision of the OD maintaining the opposed patent in amended form automatically ceases to have effect, with the result that the patent is to be maintained as granted? You can download the decision here. The file wrapper can be found here.
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T 2382/10 – The Substitute
K’s Law – The ebook
T 2382/10 – The Substitute 3 Jul 2013
Changes of parties during proceedings before the EPO can give rise to tricky questions regarding the admissibility of appeals. Universal succession is a special case always to be kept in mind, because the applicable rules differ from the rules concerning other transfers. On March 8, 2010, the patent proprietor, A. Friedr. Flender AG, merged with Siemens AG. Its patent was revoked by the Opposition Division on September 29, 2010. On November 29, 2010, Siemens filed the appeal. The opponent contested the admissibility of the appeal. In vain: *** Translation of the German original *** [1.1] The [opponent] contests that Siemens AG is entitled to file an appeal. [1.2] As a consequence of the entry of the merger into the register of the seat of the receiving legal entity (übernehmender Rechtsträger) – in the present case, Siemens AG having its seat in Munich – the Flender AG does not exist any more as a legal person and its assets including the patent rights have been transferred to 356 | 3398
T 2382/10 – The Substitute
K’s Law – The ebook
Siemens AG (§ 20(1), n° 1 and 2 of the German Transformation Act). This is a universal succession in which a legal entity completely merges with another legal entity. The commercial register shows that as a consequence of the entry of the merger all rights existing at the date of the entry into the commercial register have been transferred to the other legal entity and that the transferring legal entity did not exist anymore as of that date. Thus on November 29, 2010, only Siemens AG could dispose of the impugned patent and file an appeal. [1.3] As the transfer of the patent had not yet been entered into the European Patent Register (EPR) on the date on which the appeal was filed, the EPR still listed Flender AG as the patent proprietor. However, this entry does not change the fact that Flender AG did not exist at that date and that Siemens AG could dispose of the patent. Another party can replace the original applicant not only if it has been entered into the EPR, but also when there is unambiguous evidence that the right to the patent has been transferred (wenn ein eindeutiger Nachweis des Übergangs des Rechts auf das Patent vorliegt) (J 26/95). As the excerpt of the commercial register constitutes unambiguous evidence that the rights regarding the patent have been transferred to Siemens AG before the date of filing of the appeal and that Flender AG did not exist anymore at that date, Siemens AG is entitled to replace it in the proceedings. [1.4] The legal situation is based on the facts at the time of filing of the appeal. As a consequence, it is irrelevant that the evidence regarding the merger has been submitted after the appeal had been filed. The present case differs from the case underlying decision T 428/08 in several respects. In that case the receiving company was the opponent and the transfer of the company was the consequence of a legal transaction (Rechtsgeschäft). However, in such a case other standards have to be applied than in a case of universal succession of the patent proprietor. This is even acknowledged in T 428/08 [7]. [1.5] Thus the entitlement of Siemens AG to file an appeal is not questionable and the appeal is admissible. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1077/10 – Seamless
K’s Law – The ebook
T 1077/10 – Seamless 2 Jul 2013
Both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division to maintain the patent in amended form. Claim 1 as granted read: Glove (1 ), in particular a pilot’s glove, having a lining (2) comprising at least one outer layer (3) made up of several material blanks (4) with a glove outer surface, which outer layer (3) of the lining (2) has no joining point at least on a volar zone (20) and preferably a distal zone (18) in the fingertip region (17) of one or more glove finger(s) (12 to 16), characterised in that the material blanks (4) are made up of at least an inner hand part (7), a top hand part (8), several finger side parts (9) and optionally a thumb part (11) and the inner hand part (7) is joined to the other material blanks (4) to form the at least one glove finger (12 to 16) along an individual, continuously extending join line (5).
In the following passage the Board discusses the novelty of this claim: *** Translation of the German original *** [1.1] D3 discloses a glove (1) having a lining comprising at least one outer layer made up of several material blanks (6,7,8) with a glove outer surface (see the figures), which outer layer of the lining has no joining point at least on a volar zone and preferably a distal zone in the fingertip region of one or more glove fingers (at least the middle and the ring finger; see figures and p. 3, l. 24-25), wherein the material blanks (6,7,8) are made up of at least an inner hand part (4,6), a top hand part (3,7), several finger side parts (8) and the inner hand part (6) is joined to the other material blanks (7,8) to form the at least one glove finger (2) along an individual, continuously extending join line (9,10) (see the figures).
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T 1077/10 – Seamless
K’s Law – The ebook
[1.2] The patent proprietor argued that the expression “continuously extending join line” (“kontinuierliche Verbindungslinie”) had a functional meaning insofar as the connection along the line was continuous. The Board does not see any reason requiring this feature to be interpreted in a functional way. The patent discloses in its paragraph [0028] that seams may continuously join two material blanks along a join line. Thus the seams form a join line that is to be considered as continuously extending if it joins the inner hand part and the further material blanks without interruption. Thus the feature “continuously extending join line” is to be understood as a structural feature of claim 1 and – contrary to the opinion of the patent proprietor – not as a functional feature. Figure 3 of D3, where the course (Verlauf) of the seam 9,10 joins the inner hand part 6 and the further material blanks 7,8 without interruption, precisely discloses such a join line. [1.3] The patent proprietor further argued that the extraction (Heranziehung) of features from figures of the state of the art was not suitable in the present case to challenge the novelty of claimed subject-matter. It invoked decisions T 896/92, T 241/88, T 204/83, T 161/82, and T 272/92. However, the figures of D3 contain a clear and unambiguous disclosure of several claimed features, in particular the course of the join line and the form (Ausbildung) of the material sheets in the fingertip region, at least as far as these features are explicitly mentioned in the description, e.g. on page 3, lines 24-25: “The palmar 6, dorsal 7 and lateral 8 panels are sewn in a way that the extremity of each finger is without seams.” Thus D3 discloses a 359 | 3398
T 1077/10 – Seamless
K’s Law – The ebook
course of the seams, which is depicted in the figures and which is such that there the purpose of having no seams in the fingertip region is achieved. The decisions invoked by the patent proprietor all concern the situation where the content of the disclosure was to be assessed on the basis of the figures only, which is not the case here. [1.4] As D3 discloses all the features of claim 1, the subject-matter of this claim is not novel (A 54). Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 977/09 – Excessive Speed
K’s Law – The ebook
T 977/09 – Excessive Speed 1 Jul 2013
The present decision shows that examples of patent applications should be drafted with care. Errors may prove fatal to the patent as a whole, as the patent proprietor had to learn in this case. Claim 1 of the main request read: A process for the production of microspheres containing pancreatic lipase or mixtures thereof with other pancreatic enzymes, one or more hydrophilic low melting polymers, and optionally excipients for pharmaceutical use, said microspheres having diameter comprised between 10 µm and 1500 µm and enzymatic title equal to or higher than 90% of the title of the solid mixture of their components, characterised in that a solid mixture formed by said lipase or mixtures thereof with other pancreatic enzymes, one or more hydrophilic low melting polymers, and optional excipients, is heated to a temperature equal to or higher than the melting temperature of said hydrophilic low melting polymer, in stirring condition, where said hydrophilic low melting polymer has a melting point between 20°C and 90°C. Board 3.3.02 found this claim to be insufficiently disclosed: [4.1] An invention is in principle sufficiently disclosed if at least one way is clearly indicated enabling the skilled person to carry out the invention over essentially the whole claimed range. The skilled person, trying to rework the invention defined in the main request, would first direct his attention to the examples, in which the invention is described in its most concrete form. The patent in suit contains four examples, of which examples 1 and 2 are reference examples and therefore irrelevant for the present invention. Example 3 describes the preparation of pancreatin pellets using PEG 400 (polyethylene glycol) as hydrophilic low melting polymer. In view of the fact that according to document D12 PEG 400 has a melting point of 4 to 6°C, which was not contested by the respondent, example 3 is also not encompassed by the invention defined by the main request, which requires a hydrophilic low melting polymer having a melting point between 20°C and 90°C. Regarding the respondent’s argument that the reference to PEG 400 was an obvious error which the skilled person, knowing the melting point of PEG 400, would have immediately recognised as such and, as a consequence, would have understood PEG 4000 instead, the board notes that claim 1 as granted does not contain any lower limit regarding the melting point of the low melting hydrophilic polymer. The skilled person did therefore not have any reason to assume that example 3 was defective. He would rather have concluded that it was representative of the invention according to claim 1 as granted, but no longer relevant for the invention now defined in the main request. Therefore, he would have dismissed example 3 and turned his attention to example 4 in which PEG 4000 is used as low melting hydrophilic polymer. The appellant argued that it was not possible to prepare pancreatin pellets by following the instructions given in example 4. The fact that the maximum rotation speed of the mixer-granulator Zanchetta Rotolab P-50 […] was limited to 315 rpm, so that the required 900 rpm […] was not obtainable, was offered as the principal reason for this failure. Reference was made to document D23. The respondent counter-argued that example 4 involved two different mixers, namely a high-energy mixergranulator Zanchetta Rotolab with a maximum rotation speed of 1150 rpm, mentioned in paragraph [0044] of the contested patent, and a mixer-granulator Zanchetta Rotolab P-50 depicted in paragraph [0045] of the contested patent. Paragraphs [0044] and [0045] related to two separate procedures involving two different mixers. As a consequence, the appellant, having erroneously used the mixer-granulator Zanchetta Rotolab P-50 for both procedures, had not correctly reworked example 4, so that document D23 was completely irrelevant. However, the fact that paragraphs [0044] and [0045] relate to two separate procedures involving two different mixer-granulators is a piece of information which the skilled person is not able to extract from the wording of example 4. Paragraph [0044] describes the preparation of pancreatin pellets involving the steps of placing pancreatin and PEG 4000 in the tank of a high-energy mixer-granulator Zanchetta Rotolab, processing the mixture under the specific conditions described therein and finally unloading the pellets thus obtained. Then, at the beginning of paragraph [0045], example 4 continues with the wording “Using the described process, with a mixer-granulator Zanchetta Rotolab P-50 spherical pellets are obtained which are afterwards coated with a 361 | 3398
T 977/09 – Excessive Speed
K’s Law – The ebook
gastroresistant membrane formed by HP-55, triethylcitrate and talc.” The skilled person, reading example 4 as a whole, would necessarily assume that the same mixer-granulator is used, in the sense that the high-energy mixergranulator Zanchetta Rotolab according paragraph [0044] is a generic denomination of the apparatus which is then specifically defined as mixer-granulator Zanchetta Rotolab P-50 in paragraph [0045]. Confronted with the problem that the mixer-granulator Zanchetta Rotolab P-50 does not allow a rotation speed of 900 rpm, he would conclude that example 4 was not enabling, as either said rotation speed of 900 rpm or the designation of the mixer-granulator Zanchetta Rotolab P-50 was incorrect. Sufficiency of disclosure must be assessed on the basis of the patent as a whole. As a consequence, the absence of enabling examples does not necessarily mean that the claimed invention is not sufficiently disclosed. If, however, as in the present case, where the process in question involves the processing of an instable enzyme under relatively harsh conditions (high rotational speed, elevated temperatures) without any significant loss of its activity, the claimed invention is of a complex nature, then the skilled person is in need of clear and precise instructions. These are lacking, on account of the deficiencies in examples 3 and 4 mentioned above. Trying to carry out the invention only on the basis of the general teaching of the description would, taking into account the technical complexity of the present case, amount to an undue burden. As a consequence, the requirements of A 83 are not met. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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Looking Back On 2012 – Final Remarks
K’s Law – The ebook
Looking Back On 2012 – Final Remarks 29 Jun 2013
Here are some final bits and pieces regarding the activity of the Boards of Appeal in 2012, completing my first post on examination appeals (here) and the second one on opposition appeals (here). I shall give these elements in alphabetic order: Delays A reader asked me whether I had information on the average delay between the first and second instance decisions. As a matter of fact, I had not extracted the date of the first instance decision, and I found the idea of looking them up (for more than 1400 decisions) disheartening. So I developed a small algorithm (based on a reasonable subset) that allows me to compute the date of decision from the appeal number allocated to it (taking into account the particularity of examination appeals, where the allocation occurs at a later date, because the first instance will check whether interlocutory revision can be granted). I have checked the algorithm on a considerable number of cases and found it to work quite well: the computed dates appear to be accurate within two to four weeks, which is sufficient for my purposes. Here is what I found; the graph shows the number of decisions taken in 2012 as a function of the number of years that separate the first and second instance decision, for both examination and opposition appeals.
I do not think that calculating an average delay for examination appeals makes much sense, because there is a broad spread between 1 and 5 years having its maximum close to 4 years. I obtain a more Gaussian shape for opposition appeals, centered about almost 3 years. Anyway, three years appears to be the time appellants will have to wait on average for an appeal decision. For some cases, the treatment is much faster; also, there are almost no cases where the appeal decision is taken more than six years after the first instance decision. As of now, I do extract the date of the first instance decision, so if this blog still exists in a year’s time, I should be able to provide even more precise data for 2013. 363 | 3398
Looking Back On 2012 – Final Remarks
K’s Law – The ebook
Disciplinary Board All 2012 decisions were published after my first two posts, which explains that they are absent from the overall graph presented in my first post. There appear to have been ten decisions in 2012, all of which related to the EQE. Five of them were filed by would-be candidates who had not been admitted, another five by unsuccessful candidates. None of the appeals was successful.
Enlarged Board decisions (pursuant to A 112) There was only one decision: G 1/10 dealing with corrections under R 140.
Legal Board of Appeal There were 11 decisions in 2012, dealing with a great variety of legal questions.
Re-establishment (J 5/11, J 6/11, J 13/11, J 16/11) Admissibility of an appeal (J 9/11, J 10/11) Stay of proceedings (J 6/10, J 7/10) Refund of the examination fee (J 9/10) Refusal of an application by the Receiving Section (J 7/11) Recording of co-applicants (J 4/10)
Petitions for review There appear to have been 16 decisions in 2012:
1 petition has been successful (R 21/11); 2 petitions have overcome the first hurdle but were then dismissed as being unallowable (R 9/11, R 13/11); 3 petitions have been dismissed as clearly inadmissible (R 14/11, R 3/12, R 5/12); 2 petitions have been dismissed as being partly clearly inadmissible and partly clearly unallowable (R 17/11, R 4/12); 7 petitions were found to be clearly unallowable (R 4/11, R 16/11, R 18/11, R 19/11, R 20/11, R 2/12, R 13/12); and in one interlocutory decision the Enlarged Board rejected an objection of partiality (R 2/12).
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Looking Back On 2012 – Final Remarks
K’s Law – The ebook
There was one case where the petition was deemed not to have been filed (R 12/11) and no decision was taken. In
four
cases
the
decision
was
said
to
have
been
unanimous.
Seasonality The dates of the decisions mostly correspond to the dates of oral proceedings (OPs) before the Board. It is therefore possible to study the seasonality of OPs:
There was no pronounced summer break; July 2012 was even one of the most active months of the year and even August was far from dead. May was the most heavily burdened month. The last two facts alone would provide proof to an alien studying the EPO that the Boards of appeal are not situated in France.
Weekly Activity
OPs appear to be held mostly on Tuesdays and Thursdays (assuming that most OPs do not exceed one day). 365 | 3398
Looking Back On 2012 – Final Remarks
K’s Law – The ebook
NB: I found one decision taken on a Sunday (T 1309/11), but there is little if any doubt that this is an error. *** As June comes to its end, let me add my usual end-of-quarter statistics. The productivity of DG3 during the first two quarters of 2013 was higher than in 2011 and 2012 and comparable to what we had in 2008 to 2010:
The publication of the decisions has finally become much smoother than what we had seen in previous years, as the comparison between quarter 2 of 2012 (left) and quarter 2 of 2013 (right) shows. What is plotted here is the number of decisions published on the DG3 website as a function of the date of publication.
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T 433/11 – Cistus Et Al
K’s Law – The ebook
T 433/11 – Cistus Et Al 28 Jun 2013
Both the patent proprietor and the opponents filed an appeal after the Opposition Division had maintained the patent in amended form. The decision contains some interesting bits and bites. Among other things, the novelty of claim 1 of the main request was discussed. This claim read: Use of Cistus for producing a composition having an antiviral activity directed against rhinoviruses for inhibiting the infectiousness of rhinoviruses for the prophylaxis and/or treatment of common cold diseases, wherein the common cold disease comprises a primary infection, caused by rhinoviruses. (additions with respect to claim 1 as granted are underlined) *** Translation of the German original *** [19] The Board is of the opinion that in view of the wording of present claim 1 the feature distinguishing the present claim from claim 1 as granted – “having an antiviral activity directed against rhinoviruses for inhibiting the infectiousness of rhinoviruses” – is an inherent property of compositions made from Cistus plants. The partial feature “for inhibiting the infectiousness of rhinoviruses”, when associated with the feature “for the prophylaxis and/or treatment of common cold diseases”, further indicates how the antiviral activity is obtained in the prophylaxis and treatment. However, in view of the way in which it is used in the claim, the feature “having an antiviral activity directed against rhinoviruses for inhibiting the infectiousness of rhinoviruses” does not have any effect on the definition of the common cold diseases that are to be treated. The explicit indication of this inherent property of the substance does not change the definition of the substance, and the indication of the mode of action (Wirkmechanismus) does not provide a more precise definition of the moment of administration during the prophylaxis or treatment. Thus the Board comes to the conclusion that the scope of protection of present claim 1 is the identical to the scope of protection of claim 1 as granted. […] [28] Claim 1 concerns a so-called second medical indication, in which the use of a known product for the therapeutic treatment of a particular disease is claimed. Based on the Board’s interpretation of the claims (see point [19] above) it follows that claim 1 claims as an embodiment the “use of Cistus for producing a composition for the treatment of common cold diseases, wherein the common cold disease comprises a primary infection, caused by rhinoviruses”. [29] Document D1 states […] under the heading “Viruses challenge the immune system”: “Sometimes the agents succeed in penetrating the natural “protective barrier”. A cold (Schnupfen) is above all caused by rhinoviruses that penetrate into the nasal mucosa. They then integrate the body’s own cells and have them produce and emit viruses. Thereby the surrounding tissue is damaged and the nasal mucosa becomes inflamed. The body reacts by increasing the production of mucus. Once the nose is congested, nose drops based on Cystus® can provide help because the polyphenols contained therein reduce the swelling and inhibit the inflammation. You can produce them by simply mixing 100 ml of Cystus® brew with 1 g of sea salt and fill the mixture into a dropper bottle from your pharmacy. […] Thus you can reach all nasal passages and you will soon be able to breathe deeply again. The inflammation of the nasal mucosa is often felt “further downwards” via a sore throat. Gurgling with Cystus® brew provides relief (also in case of purulent tonsillitis) […]. (emphasis by the Board). [30] This extracts shows that document D1 discloses the use of nose drops made from Cytsus® (sic) brew for treating (symptoms such as a cold or sore throat) of common cold diseases, wherein the common cold diseases include diseases due to a primary infection caused by rhinoviruses. [31] Document D1 describes the treatment of common cold diseases by means of a medicament made from a substance called Cystus®. The document does not explicitly indicate how this substance was produced or which ingredients it contains. During the oral proceedings (OPs) the [patent proprietor] has not contested that the Cystus® products disclosed in document D1 are compositions containing constituents of plants of the genus Cistus. Thus the Board considers it to be established that document D1 discloses to the skilled person medicaments containing constituents of plants of the genus Cistus, and that any other interpretation of the expression Cystus® would go against the common understanding of the skilled person. 367 | 3398
T 433/11 – Cistus Et Al
K’s Law – The ebook
[32] Thus the Board is of the opinion that the skilled person knew, from document D1, both the composition defined in claim 1 as well as the therapeutic treatment of the disease mentioned therein by means of this composition. Thus document D1 discloses an embodiment within the scope of claim 1. [33] The Board is of the opinion that the technical circumstances of the present case are clearly different from those underlying decision T 509/04. The case dealt with in decision T 509/04 concerned the “attainment of a therapeutic effect, promoting normal muscle growth in patients suffering from cerebral palsy”, which had not been disclosed in the published state of the art. In the present case, however, the treatment of patients suffering from common cold diseases caused by rhinoviruses is known from document D1. Therefore, the Board is of the opinion that the principles regarding novelty established in decision T 509/04 do not apply in the present case. [34] The Board is also of the opinion that decision T 836/01 cannot be used for establishing novelty either. In this case the novelty of the claimed medical use was justified by the fact that the group of patients that received the treatment was different (distinct subgroup) from the one known from the state of the art, and thus novel. However, in the present case the group of patients or patient population that is to be treated is explicitly disclosed in document D1. Thus T 836/01 is irrelevant for the present case, too. [35] The Board is of the opinion that the present case rather compares to the situation dealt with in decision T 254/93, which was later followed by the Boards in decisions T 669/01 and T 486/01. In decision T 254/93 it was decided that the mere explanation of an effect obtained when using a compound in a known composition, even if the effect was not known to be due to this compound in the known composition, cannot confer novelty to a known process if the skilled person was already aware of the occurrence of the desired effect (see headnote 2 and point [4.8] of the reasons). [36] Thus the subject-matter of claim 1 does not comply with the requirements of A 54; the main request is to be dismissed. The Board then dealt with the request for oral submissions by the chief executive (Geschäftsführer) of opponent 1: [37] During the OPs, when the novelty of the main request was discussed […], [opponent 1] asked for its chief executive Dr. S. to be allowed to make submissions concerning document D1. [38] The representative of [opponent 1] has made a corresponding statement during the OPs and has also confirmed in its letter […] in which he requested the minutes of the OPs to be corrected accordingly […] that Dr. S. wanted to make submissions in his quality as chief executive of [opponent 1]. However, as this request was only filed in the context of the discussion of novelty, the Board could only interpret this request to mean that Dr. S. wanted to make submissions from his point of view as a skilled person. [39] The Board has dismissed this request after having heard all parties. The representative of [opponent 1] then objected that this dismissal violated its right to be heard. [40] Irrespective of whether an employee of a party is entitled to complement the explanations of the professional representative authorized by this party in the course of OPs or whether the presence of this employee and the subject of the submissions he wants to make orally have to be announced, it appears to be appropriate indeed to give a chief executive of a party (in the present case, a Geschäftsführer of a German company, but also a person in a corresponding position in a non-German company) the opportunity to make submissions for this party because this person is de facto or at least apparently (depending on the rules laid down in the founding statutes (Gründungsstatut)) entitled to speak in the name of the company. [41] However, the Board is of the opinion that in view of the request to be dealt with in the present case the central question is not the question of whether there is an authorisation to represent but the question of whether the request is admissible. [42] It is irrelevant in this context whether Dr. S. wanted to make his submissions as a skilled person or as chief executive, or both. What matters is that his explanations would necessarily have contained facts (i.e. evidence or arguments) that had not been submitted before by [opponent 1] or its authorised representative. Otherwise there would not have been any reason to request that Dr. S. be authorised to make submissions. As a matter of fact, the Board is of the opinion that this request, is to be understood as a request for the admission of new facts and/or arguments that has been filed at a very late stage of the proceedings, i.e. during the OPs.
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T 433/11 – Cistus Et Al
K’s Law – The ebook
[43] However, it is within the discretion of the Board to admit new facts and arguments that have been submitted after the filing of the complete case of a party, and in particular after summons to OPs (see A 114(2) together with Article 13(1) and (3) RPBA […]). [44] In a case that is as disputed as the present case – with pending proceedings before national courts of justice – in which the parties already had had the opportunity to make written submissions, the admission of new facts and arguments in favour of a party would very likely have caused the adverse party to request the admission of new counter-facts and counter-arguments, thereby delaying the proceedings or even requiring the OPs to be postponed. In this context it also has to be mentioned that [opponent 1] had in its letter dated September 19, 2011, filed a request for acceleration of the proceedings before the Board because of pending infringement proceedings and none of the other parties had objected to this request, which the Board has granted by summoning OPs at short notice (the original date for the OPs was February 29, 2012). [45] Under these circumstances the Board has exercised its discretion and decided not to allow Dr. S. to make [oral] submissions. [46] The Board does not agree with [opponent 1] that the refusal of submissions by Dr. S. has violated its right to be heard. Both [opponent 1] and all other parties to the proceedings were offered the possibility to comment on all issues that were discussed during the OPs, including the issue which Dr. S. wanted to comment, i.e. the novelty of the main request in view of document D1. [47] Within the framework of the EPC the right to be heard enshrined in A 113(1) does not mean that the parties to the proceedings may without limitation express their opinion on all possible issues at any stage of the proceedings, because the right to be heard is, as far as the moment during the proceedings is concerned, limited by the possibility not to consider late filed submissions, which is enshrined in A 114(2) (see also Articles 13(1) and (3), which result from it). [48] Finally, the Board notes that [opponent 1] was not adversely affected, even in case its right to be heard had been violated in any way, because its submission – even without the explanations by Dr. S. – have been successful in the end: the Board has indeed decided that document D1 destroys the novelty of the main request […]. The Board finally maintained the patent on the basis of the first auxiliary request. There is a noteworthy paragraph on the adaptation of the description that remained to be done: [78] [Opponents 1 and 2] requested the description to be adapted during the OPs before the Board because the pending national infringement proceedings required the presentation of the final version of the impugned patent. However, the Board was of the opinion that precisely because the impugned patent is the object of national lawsuits it is necessary to be particularly careful when adapting the description. However, the Board considers this could not have been done at the end of the OPs towards 19:30 in view of the great length of the proceedings. Thus the Board has dismissed the request of [opponents 1 and 2] and has remitted the case for adaptation of the description, which, incidentally, is not unusual. Refusing the chief executive of the opponent to make a statement under the pretense that he would intervene in the quality of a skilled person does not sound right to me. As the Board admits, when the manager speaks, the party speaks, and the party should never be refused the right to comment, even in the case where it has chosen to be represented by a patent attorney. I think the Board should not speculate on what the party would say and which consequences this could have; if the submissions are inappropriate, the Board can stop the party, just as it would stop the representative. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 2149/11 – No Need To Repeat
K’s Law – The ebook
T 2149/11 – No Need To Repeat 27 Jun 2013
Claim 1 of the patent as maintained by the Examining Division read (in English translation; the amendments with respect to the claim as granted are underlined): Method for manufacturing a clutch cage of a double clutch (1), characterized by the following method steps:
rolling a toothing system (20) into a sheet metal strip (21 ) by means of two rolls (28,29) arranged on both sides of the sheet metal strip (21), wherein the two rolls (28, 29) have an outer contour (Aussenkonturierung) generating the toothing system (20); separating a toothed strip (22) from the rolled sheet metal strip (21 ); rolling up the toothed strip (22) to form a drum (23); and joining the butt ends of the drum (23).
The opponent contested the novelty of this claim, but the Board did not agree: *** Translation of the German original *** [2.1] E1 concerns a method for manufacturing a toothed hollow-cylindrical part, e.g. a sprocket (Zahnkranz) […]. The method comprises : rolling a toothing system into a sheet metal strip by means of two rolls arranged on both sides of the sheet metal strip; separating a toothed strip from the rolled sheet metal strip; rolling up the toothed strip to form a drum; and joining the butt ends of the drum. [2.2] This document does not mention the manufacture of a clutch cage of a double clutch, but the [opponent] is of the opinion that this feature only concerns the use of the method and cannot establish the novelty of claim 1. However, [the Board] cannot share this opinion. [2.2.1] A claim that is directed at the manufacture of a product concerns an activity comprising one or several method steps the final result of which is precisely this product and which do not only have to be suitable for its manufacture. Thus the step of manufacturing this product is part of the claimed activity, even if the wording of the claim does not repeat this manufacturing step in the list of the method steps. Within the framework of a method for manufacturing a product the manufacture of this very product indeed is a technical feature that can establish the novelty of the claimed method. The decisions invoked by the [opponent] do not support a different understanding. Quite to the contrary, it clearly follows from G 2/88 [2.5] that the technical features of a claim to an activity are the physical steps which define such activity. None of decisions T 1179/07, T 304/08 and T 1343/04 took the view that the novelty of a claim directed at the manufacture of a product could not be acknowledged on the basis of this manufacture. [2.2.2] Thus, as already stated by the Opposition Division […], the manufacture of a clutch cage of a double clutch alone distinguishes the claimed method from the method according to E1. […] [2.4] Claim 1 is, therefore, novel. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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J 4/13 – Late Payment Due To Premature Delivery
K’s Law – The ebook
J 4/13 – Late Payment Due To Premature Delivery 26 Jun 2013
This decision deals with a request for re-establishment into the time limit for filing the renewal fee for the third year, which had fallen due on November 30, 2007. The factual situation was as follows: Renewal fee payments had to be made by the representative. An employee, Mrs Ariane C., was in charge of these operations. On her return from her holidays, in August 2007, she had informed her employer that she was pregnant and that she envisaged taking a maternity leave after the birth, which was expected to take place in December. After a premature delivery on October 14, 2007, she took her maternity leave and finally resigned on February 8, 2008. As her intentions were not clear before her resignation, it was difficult to find an adequate replacement strategy. Mrs Valérie T., who had been in charge of the secretarial work for over ten years, fell seriously ill in February 2008. Her sickness finally led to her being made redundant on July 11, 2008. She was replaced by Jean-Louis B., who worked under the supervision of the representative. The professional representative also invoked the fact that another IP law firm (Célanie) had been asked to help with the monitoring of time limits. A list of all the due dates was to be established under the supervision of a competent patent engineer of this law firm. Unfortunately, this patent engineer was unable to warn the professional representative on the November 30 time limit, probably because the list was established in chronological order. The EPO expressed reservations on the admissibility and allowability of the request and invited the representative to comment on the objections within two months. As no response was received, the request for reestablishment was refused on October 30, 2009. The letter was received on November 3, 2009. On March 17, i.e. well after the time limit for filing an appeal, the representative filed an appeal against this decision. He explained that it was during a meeting of the representatives of the applicant that he had learnt about the decision refusing re-establishment. As the acknowledgement of receipt had not been signed by a person entitled to do so, the appeal was filed in time. As an auxiliary request, he filed a request for reestablishment into the time limit for filing an appeal. Here is how the Legal Board of appeal (LBA) handled this case: *** Translation of the French original *** Admissibility of the appeal [1.1] The impugned decision is dated October 30, 2009. Pursuant to R 126(1), first sentence, it has been notified by means of a registered letter on November 3, 2009. Assuming a regular notification, the time limit for filing an appeal expired on January 10, 2010 (i.e. Ocober 30, 2009 + 10 days + 2 months, R 126(2) in connection with A 108, first and second sentences). The notice of appeal (completed by the statement of grounds for appeal) was received at the EPO on March 17, 2010, i.e. well beyond the legal two-month time limit. The same holds true for the appeal fee, which has been paid on March 18, 2010. Thus in principle the appeal is deemed not to have been filed (A 108, first and second sentence). [1.2] In his notice of appeal, the representative explains that the acknowledgement of receipt had been signed by Mrs M., an employee of the Delpharm company, and not of the Gefib law firm, to which the decision of refusal had been sent and which was located in the same building as the Delpharm company. Mrs M. was not entitled to sign acknowledgements of receipt on behalf of the Gefib law firm but had to send the postman to the Gefib law firm where the registered letter was to be received. A corresponding declaration on behalf of Mrs M. was filed. 371 | 3398
J 4/13 – Late Payment Due To Premature Delivery
K’s Law – The ebook
[1.3] In view of the explanations and the declaration under consideration, [the Board] has to accept that the notification was deficient. [1.4] Pursuant to R 125(4) “the document shall be deemed to have been notified on the date established by the EPO as the date of receipt”. Thus the LBA has to establish when the decision to refuse the request for restitution in integrum was actually received by its addressee. As the acknowledgement of receipt, which normally establishes this proof, is not regular, [the Board] comes to the conclusion that Mr B., who is the professional representative to whom the communication was to be sent (R 130(1)), was informed of the letter on February 4, 2010, as he had admitted (cf. notice of appeal […]). [1.5] As the notice of appeal was received on March 17, 2010, and the appeal fee paid on March 18, 2010, the appeal has been filed within the two-month time limit under A 108, first and second sentence. As the statement of grounds of appeal was annexed to the notice of appeal and received on the very same day, the statement has, therefore, been received within the four-month time limit stipulated in A 108, third sentence. [1.6] Thus the appeal is admissible. Request for restitutio in integrum Admissibility of the request for restitutio in integrum Date of the removal of the cause for non-compliance (R 136(1), first sentence) [2.1.1] According to the established case law of the Boards of appeal (see e.g. J 7/82 and T 428/98), the cause of non-compliance is removed on the date on which the person in charge of the patent application (in the present case: the duly authorised professional representative) realizes that the time limit has not been met. In the present case, this is the receipt of the communication of loss of rights dated July 4, 2008, which has made the professional representative pay the taxes that had fallen due, i.e. complete the “omitted act”. This means that the dates that could possibly trigger the two-month time limit under R 136(1), first sentence, are on or after July 5-6, 2008 – the date on which the communication of loss of rights was received – and before or on July 21, 2008, the date on which the due taxes were paid, i.e. the date on which the “omitted act” was completed. [2.1.2] As the professional representative has filed a request for restitutio in integrum together with the corresponding grounds and paid the fee for restitutio in integrum on August 26, 2008, the two-month time limit mentioned above has been respected, irrespective of which hypothesis is retained. [2.1.3] Thus the request for restitutio in integrum is admissible (A 122(2), first sentence, in connection with R 136(1) and R 136(2), second sentence). [2.1.4] In addition to that, although this is not decisive here, the Board wishes to emphasize that the fact that the EPO sends a communication pursuant to R 51(2) and establishes its date of receipt cannot constitute, as such, the date of “removal of the cause for non-compliance”. The latter date is established based on the factual elements of the case under consideration. The removal of non-compliance is a factual question that has to be decided on a case-by-case basis (see the decisions cited above, point [2.1.1]). On the other hand, contrary to what has been asserted by the professional representative, the pure and simple application of the fictitious delay of notification (the 10-days-rule), in the present case, to the communication of the loss of rights for calculating the two-month time limit pursuant to R 136(1), first sentence, is legally wrong and would go against the established case law of the Boards of appeal. Allowability of the request for for restitutio in integrum Requirement of due care [3.1.1] According to A 122(1), the applicant or, as the case may be, its professional representative has to show that it was unable to observe a time limit vis-à-vis the EPO in spite of all due care required by the circumstances having been taken. [3.1.2] According to the established case law of the Boards of appeal, the facts of each case have to be examined as a whole, as they were before the expiration of the time limit, in the present case between November 2007 and June 2008. In other words, what is to be examined in order to determine whether “all due care required by the circumstances” is exclusively the circumstances as they were during that period. 372 | 3398
J 4/13 – Late Payment Due To Premature Delivery
K’s Law – The ebook
[3.1.3] Following the absence and the departure of Mrs Ariane C., the law firm of the professional representative has implemented three levels of supervision of time limits: (a) The replacement of Mrs Ariane C. by Mr B. the younger; (b) the use, under these particular circumstances, of the additional help of an outside IP law firm, the Célanie law firm; (c) the supervision of the time limits by the Benech law firm, which had remained in direct contact with the applicant. [3.1.4] Concerning point (a): The replacement of Mrs Ariane C. by a person that was “equally qualified”, i.e. Mr. B the younger, was said to be one of the measures establishing that all due care required by the circumstances had been taken. However, [the applicant] has not indicated or proven the date of replacement. It appears that it occurred quite some time after the time limit had been missed. In this context the Board notes that no evidence has been filed for the asserted facts, such as declarations or affidavits of the persons concerned and material elements. [3.1.5] Concerning point (b): The role of the Célanie law firm in the supervision of the time limits is unclear. It is not sufficient to just mention another law firm and to supply a CV of its manager. Point 16 of the statement of grounds of appeal mentions a competent patent engineer who had failed in his task. No declaration on his behalf concerning the proceedings he had supervised was filed. Generally speaking, as already indicated above, all the facts have to be justified by means of declarations or affidavits of the persons concerned. No such documents have been filed, even after the Board had expressly asked for such documents in its communication. [3.1.6] Concerning point (c), it is true indeed that the Benech law firm has informed the Gefip law firm of the renewal fee to be paid before November 30, 2007. However, this warning has not had any effect, for reasons that have not been set forth. [3.1.7] Finally, in point 14 of the statement of grounds of appeal it is said that the professional representative has done some supervision work, but no explanation or evidence whatsoever has been provided as to the concrete mode of supervision. The “isolated mistake” [3.2.1] According to the appeal, Mrs T. had been performing her duties as an assistant for ten years. In the present case, she has not carried out the task that had been entrusted to her, i.e. filing the cheque at the bank. This was said to be an isolated mistake made by an assistant. This mistake was explained by the fact that she had fallen ill in Feburary 2008 and had been made redundant in July 2008. It was asserted that the instability and weakness caused by her sickness probably led her to make that mistake, which she had never made before. [3.2.2] However, Mrs T. was said to have received the instruction to pay the taxes as soon as the communication was received on January 8, 2008. She has fallen ill in February 2008, i.e. one month after her “isolated mistake”. The Board cannot help but note a lack of coherence of the facts. On the other hand, point 19 of the statement of grounds of appeal asserts in regard of the deposit of the cheque at the bank that “the enclosed slip had already been filled in” and that “[t]he other payments entrusted in January … had been made”. These assertions are not supported by any evidence although the Board has expressly asked for the corresponding documents to be filed. [4] In view of the above, the Board can only conclude that the request for restitutio in integrum is not allowable (A 122(1), together with R 136(2), first sentence). Thus the appeal has to be dismissed. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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T 149/11 – Slavery
K’s Law – The ebook
T 149/11 – Slavery 25 Jun 2013
This is an appeal against the rejection of the opposition against the patent under consideration. Independent claim 13 of the main request (as granted) read as follows: 13. Device for processing a slaughtering object, such as a slaughtered animal or part thereof, in a slaughter line of a slaughterhouse, the device comprising: at least one conveyor with carriers, each for the purpose of carrying the slaughtering object, an identification being assigned to each carrier or associated slaughtering object; means for performing at least one processing step on the slaughtered object; at least one observer positioned along the slaughter line for the purpose of performing one or more observations on the slaughtering object; an input station (11b) for the observer to input data relating to at least one observation on the slaughtering object; a data-processing system (5) for processing the data input by means of the input station (11b), in order to determine a test result for the slaughtering object, which test result comprises an approval or rejection, and for storing the test result in conjunction with the corresponding identification; at least one automatic discharging device (6a; 13a, 18a, 22; 26a), which is disposed downstream of the observer along the slaughter line and has at least a first discharge for removing the slaughtering object, if the said object has been approved, and has a second discharge for removing the slaughtering object, if the said object has been rejected; 374 | 3398
T 149/11 – Slavery
K’s Law – The ebook
an identification reading system (12a), which interacts with the discharging device (6a; 13a, 18a, 22; 26a), for reading out the identification belonging to the slaughtering object supplied to the discharging device or the associated carrier; the choice of the first or the second discharge of the discharging device by the data-processing system (5) being controlled on the basis of the test result stored therein and belonging to the identification read out by the identification reading system (12a), characterized by means returning the slaughtered object removed via the second discharge to an upstream point in the slaughter process for repeating at least part of the processing step on the slaughtering object. (my emphasis) The Board found this claim to be excluded from patentability under A 53(a): [2.1] Pursuant to A 53(a), a patent cannot be granted in respect of inventions the commercial exploitation of which would be contrary to public order. However, a commercial exploitation shall not be deemed to be contrary to public order merely because it is prohibited by law or regulation in some or all of the Contracting States. Thus it needs to be examined if an exploitation of the claimed invention - i.e. not the invention itself - would be contrary to public order (“ordre public”) per se., i.e. apart from any special legislation restricting its commercial exploitation. [2.2] Claims 13 and 14 of the main request contain the following feature: - at least one observer positioned along the slaughter line for the purpose of performing one or more observations on the slaughtering object. [2.3] According to the patentee, it should be obvious that the observer as such is not part of the claim. Applying the general rules on the interpretation of claims, the Board is not convinced by this position. In general, claims must be read with a mind willing to understand, and in a manner that does not render the claims illogical or devoid of technical sense. The patentee does not dispute that the above feature is clear in itself and gives the claim a clear technical meaning. He argues, though, that while the observer is necessary to carry out this nonautomatic embodiment of the invention that underlies claims 13 and 14, the observer cannot reasonably be considered part of the invention as defined in those claims. In the opinion of the Board, if an observer should not be part of the claimed invention, the claim should and could have been worded correspondingly. Given the clear wording of the claim, and the fact that such wording makes technical sense, the Board finds that the claim must be interpreted as including at least one observer. [2.4] According to the [opponent], by including the observer as an integral part of the invention defined in these claims, its commercial exploitation contravenes basic human right and is thus contrary to “ordre public”, so that the claimed invention is subject to the exception of A 53(a). [2.5] The Board considers that “ordre public” must be seen in particular as defined by norms that safeguard fundamental values and rights such as the inviolability of human dignity and the right of life and physical integrity. See also Singer/Stauder, Europäisches Patentübereinkommen, 6th ed. 2013, Art. 53 note 7, opining that human and civil rights, such as those guaranteed by international treaties and national constitutions, are to be regarded as the principal foundations of the legal order of the contracting states, and as such also the foundations of “ordre public”. Fundamental rights and freedoms that underpin “ordre public” are codified in Articles 4 and 5 of the European Convention on Human Rights (Convention for the Protection of Human Rights and Fundamental Freedoms, Rome 1950), according to which no one should be held in slavery, and everyone has the right to liberty and shall be deprived thereof only under certain circumstances. This corresponds to the human right of integrity, the prohibition of slavery and the right to liberty under the Charter of Fundamental Rights of the European Union (Official Journal of the European Communities C 364/1 of 18 December 2000), Articles 3 to 6. Since patents are instruments of private property and as such freely transferable, a patent for an invention that includes one or more human beings among its features gives rise to serious concerns as to these fundamental rights and freedoms of the particular human beings that would be the subject of such a patent when commercialized, however far-fetched such an interpretation may seem. These serious concerns regarding human 375 | 3398
T 149/11 – Slavery
K’s Law – The ebook
liberty and the prohibition of slavery lead the Board to conclude that claims 13 and 14 of the main request contravene A 53(a). [2.6] The Board emphasises that it is not relevant for this finding whether for the time being there exists any serious reality of infringing the human rights of the claimed observer, either as being treated as an “object of private property” or is some other manner. The prohibition of patenting with reference to the “ordre public” is neither intended nor suitable for effectively restricting acts seen as being contrary to “ordre public” (or morality). Rather, it is a question of principle, which seeks to safeguard the public trust in the patent system as a whole. This public trust would erode if the broader public outside of the patent profession would perceive that a morally unacceptable condition – here the ownership of a human being – somehow acquires official approval through the seal of the granted patent document (see also Singer/Stauder, Europäisches Patentübereinkommen, 6th ed. 2013, Art. 53 note 13). For this reason, it is not relevant that the proprietor is unlikely ever to enforce the disputed claim in the sense of its immediate wording, e.g. by demanding the delivery up (or possibly even destruction) of the claimed device, including the observer. It is sufficient that the immediate wording could potentially lead the broader public to believe that such a claim indeed covers a human being with all its legal consequences. The Board also makes reference to R 28 and 29, the legislative history of which equally illustrates that a possible interference with fundamental human rights may well support an unequivocal and strict exclusion from patenting of such “sensible” subject-matter. [2.7] Accordingly, the main request must fail. Since claims 11 and 12 of auxiliary request 4, and claims 13 and 14 of auxiliary requests 5 and 6 likewise comprise an observer they must also fail for the same reasons. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 744/11 – Three Minutes
K’s Law – The ebook
T 744/11 – Three Minutes 24 Jun 2013
This is an examination appeal. The statement setting out the grounds of appeal was received in electronic form three minutes after expiry of the four-month time limit for filing the grounds of appeal. The registrar of the Board informed the appellant of the late receipt of the statement setting out the grounds of appeal. The appellant responded by requesting the Board to decide under R 112(2) that the statement of grounds of appeal was filed within the relevant time limit or, in the alternative, to grant re-establishment of rights under A 122 in respect of the non-observance of the time limit for filing the statement of grounds of appeal. [1.1] The decision refusing the European patent application was notified by registered letter on 17 November 2010 and thus was deemed to have been received 10 days later on 27 November 2010 (R 126(2)). The fourmonth time limit for filing the statement of grounds of appeal, under A 108, would have expired on 27 March 2011. However, this day was a Sunday, so the time limit expired at midnight on the following day (R 134(1)). The appellant filed his statement of grounds electronically. The receipt for this document was generated at 00.03 hours on 29 March 2011, i.e. three minutes after the expiry of the time limit for filing the grounds of appeal. This should normally result in the appeal being rejected as inadmissible (R 101(1)). [1.2] The representative of the appellant argued that his office was based in Cambridge and that, since the clocks in the United Kingdom were one hour behind Central European Time (CET), he had sent the statement of grounds on 28 March 2011, which was within the time limit fixed by A108. According to Article 9(3) of the “Decision of the President of the EPO dated 26 February 2009 concerning the electronic filing of documents” (OJ 3/2009, 182) the date of receipt accorded to documents electronically filed within the EPO under R 2 should be the date on which they were received at the EPO. This wording was broad and covered, at the very least, the 377 | 3398
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K’s Law – The ebook
date in any EPC state on which the documents were received at the EPO. The time marked on the receipt was 00.03 Central European Time (CET) 29 March 2011. The United Kingdom, however, was situated in a time zone one hour behind CET, and so the time and date when the document was received at the EPO was 23.03 British Summer Time (BST) on the 28 March 2011. The Board cannot accept this argument for the simple reason that the relevant time for the purpose of the law is the time at the EPO (i.e. the time at Munich or The Hague) and not the time in the United Kingdom. Therefore, the appellant missed the time limit for filing the grounds of appeal (A 108) which normally results in the appeal being rejected as inadmissible (R 101(1)) and, thus, in the loss of a means of redress. [1.3] According to A 122(1), the applicant for a European patent who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the EPO shall, upon application, have his rights re-established if the non-observance in question has the direct consequence, by virtue of the EPC, of causing the loss of a means of redress. [1.3.1] The Board considers the appellant’s request for re-establishment of rights as regards the time limit for filing the notice appeal allowable (A 122(4)), in particular because the appellant has shown that the nonobservance of the time limit was not caused by lack of due care but rather by a justifiable human error of the representative. However, it is not necessary to go into more details because the appeal, though admissible, is not allowable for the reasons set out herein below. […] The requests on file were found to lack clarity and the appeal was dismissed. Re-establishment is not always obtained that easily, is it? Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 613/10 – Gimme More
K’s Law – The ebook
T 613/10 – Gimme More 21 Jun 2013
In this case Board 3.4.03 had to deal with the admissibility of an opposition. The notice of opposition was filed on January 23, 2008. It consisted in filled-in form 2300 plus two pages containing a list of twenty further prior art documents and a statement which part of each of those documents was most relevant. The
time
limit
for
filing
an
opposition
(TFO)
expired
on
January
25
(Friday).
A detailed explanation of the opponent’s case was received only on January 28 (Monday). The Opposition Division (OD) rejected the opposition as inadmissible because the notice of opposition was insufficient. The Board came to the same conclusion as the OD. The decision is somewhat lengthy and not the most exciting read ever. If you just want a take-away summary, here is a translation of the headnotes: 1. When the admissibility of an opposition is to be examined, the circumstances of the individual case have to be considered, in particular if the requirements of R 76(2)(c) have not been clearly and unambiguously fulfilled. Among these circumstances there is the technical difficulty of the factual situation regarding the impugned patent and the cited prior art, as well as the number of claims of the impugned patent and the number of documents cited against it, even though in principle in opposition proceedings there is no limitation to a certain number of attacks or documents cited (point [13] of the reasons). 2. It is not incumbent on the patent proprietor to elaborate its own reasoning (Begründung) based on the existing indications in the notice of opposition if they are insufficient (point [17] of the reasons). If you want the whole thing, please carry on: *** Translation of the German original *** [3] Within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin, any person may give notice to the EPO of opposition to that patent by filing a written reasoned statement (A 99(1), first sentence, and R 76(1)). Pursuant to A 99(1), first sentence, and R 76(2)(c) the notice of opposition has to contain the following: (a) a statement of the extent to which the EP is opposed and (b) of the grounds on which the opposition is based, as well as (c) an indication of the facts and evidence presented in support of these grounds. [4] For the opposition to be admissible the requirements of R 76(2)(c) have to be satisfied at the expiration of the nine-month TFO. Submissions that are filed before the EPO after the expiration of the TFO can, therefore, not be taken into account when the compliance with the above mentioned requirements is examined. Thus the written submission filed on January 28, 2008, i.e. after the expiration of the TFO, which inter alia contains 11 pages under the heading “Factual submissions and reasons” […] cannot be considered for this examination. The fact that – as explained by the [opponent] – the Opposition Division (OD) was in possession of the complete reasons for the opposition when it took up its work is irrelevant for this examination, too. The only thing that matters in the present case is the contents of the four-page form ‘Notice of opposition to a European Patent’ that was filed within the nine-month TFO, including two additional sheets […]. [5] By ticking [the appropriate boxes] in the ‘Notice of opposition’ form, which was filed on January 23, 2008, the opponent declared that it filed an opposition against the patent as a whole and that it raised objections pursuant to A 100(a) EPC 1973, i.e. lack of novelty and lack of inventive step.
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[6] Moreover, the form ‘Notice of opposition’ and the two additional sheets belonging to it cited 26 documents, which were only filed after the expiration of the TFO. According to the wording of R 76(2)(c) it is sufficient to indicate the evidence within the nine-month TFO. However, the cited evidence does not have to be filed within the TFO; according to the established case law, it can still be filed at a later time (see e.g. T 328/87 [3.3.2]). Thus, when the admissibility of the opposition is to be examined, neither the content of the evidence (T 426/08 [5.1.3]) nor the conclusiveness (“Schlüssigkeit”) of the notice of opposition, i.e. that the submission, if correct, would make the request allowable, can be relevant. This question only arises when the evidence is assessed, i.e. when [the Board] establishes whether the evidence indeed proves the asserted facts. This belongs to the examination of the allowability of the opposition, which may, pursuant to A 101(1), only be envisaged when it is established that the opposition is admissible. [7] What is disputed here is whether in the present case the requirement of indicating the facts presented in support of the grounds pursuant to R 76(2)(c) has been complied with, i.e. whether the opposition is sufficiently substantiated. [8] For the opposition to be admissible it is sufficient if at the moment of expiration of the nine-month TFO there is a substantiated submission on behalf of the opponent for one of the grounds for opposition it invokes. The question of whether a notice of opposition complies with the minimum requirements for sufficiently substantiated grounds for opposition pursuant to A 99(1), first sentence, and R 76(2)(c), can only be decided in view of the overall context of the case under consideration (because several relevant factors, such as the difficulty of the questions to be decided, differ from one case to the other) (T 222/85 [4]). Thus, depending on the individual case, the requirement of sufficient substantiation pursuant to R 76(2)(c) is satisfied only if the relevant “facts and evidence” are indicated to an extent that is sufficient to ensure that both the patent proprietor and the OD know what the opposition is about (T 222/85 [4]). For this objective to be attained, the submissions on the grounds for opposition have to be understandable for both the patent proprietor and the OD without further investigations (T 2/89 [5]). Consequently, the OD and the patent proprietor have to be able to clearly understand the objection and the corresponding evidence (T 204/91 [5]) and must be able to review at least one of the invoked grounds for opposition without further investigation (T 453/87 [2.2]). Whether this is indeed the case has to be determined objectively from the point of view of the skilled person of the domain concerned by the patent. [9] According to the established case law for an opposition to be admissible it is also necessary to point out the technical interrelationships (Zusammenhänge) between the prior art cited against [the patent] and the subjectmatter claimed in the patent and to explain the conclusions drawn from them by the opponent (e.g. T 861/93 [56] and T 28/93 [4.1]). The kind of documents cited against the patent and the complexity of the claimed subjectmatter determine the detail that is required for these technical assessments in each individual case. When the documents are short and the technical facts are simple, then it may not be necessary to cite concrete passages and to provide a comparison of features if the skilled person can directly understand the factual situation on his own, e.g. by reading the document. In this context all relevant circumstances have to be taken into account (see e.g. T 302/93 [2.4 et seq.] and T 1069/96 [2.3.3]). [10] In the present case the notice of opposition consisted of only the four-page form and two additional sheets listing as evidence documents D1 to D26. For 25 of those documents (there are no indications for D25) particularly relevant passages or figures, respectively, are indicated, without there being any reference to one of the 26 claims of the impugned patent […]. The notice of opposition does not explain which of the documents concern which of the two grounds for opposition (lack of novelty and lack of inventive step). Nor has [the opponent] compared any of the cited passages or figures with the features of the subject-matter of one of the 26 claims, or established any technical interrelationships between the document and the corresponding claim of the impugned patent. [11] It is relevant for the question of whether the present opposition is admissible whether these few indications in the form ‘Notice of opposition’ and the two additional sheets were sufficient for enabling the OD and the patent proprietor to understand without any further investigations what the opposition was about. In particular, it matters whether the indications enabled the OD and the patent proprietor to understand the submissions of the opponent at least in view of one of the 26 claims of the impugned patent, for at least one of the grounds of opposition, without any further investigations. [12] The [opponent] is of the opinion that the number of claims of the impugned patent or of the documents cited against it is not relevant for the question of admissibility of the opposition. It, therefore, was of the opinion that it was not relevant that the impugned patent comprised 26 claims and that 26 documents had been cited in the ‘Notice of opposition’ form, because this number did not establish an abuse of procedure and because the
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documents were simple and easy to understand. Moreover, an opposition was not limited to a certain number of attacks or prior art documents. [13] The Board cannot endorse this opinion. Even though the case law has established that the substantiation of an opposition is sufficient if the indications regarding one of the documents cited against the patent enable the OD and the patent proprietor to review the validity (Stichhaltigkeit) of one of the grounds for opposition that are invoked, the circumstances of the individual case are indeed to be considered when the admissibility of an opposition is discussed, in particular if, as in the present case, the requirements of R 76(2)(c) have not been clearly and unambiguously fulfilled. Among these circumstances there is the technical difficulty of the factual situation regarding the impugned patent and the cited prior art, as well as the number of claims of the impugned patent and the number of documents cited against it, even though in principle in opposition proceedings there is no limitation to a certain number of attacks or documents cited. It also has to be taken into account that the ‘Notice of opposition’ form and the two additional sheets do not indicate which subject-matter of the 26 claims of the impugned patent and which of the two grounds for opposition that are invoked are concerned by the respective passages and/or figures of the 26 prior art documents. [14] Taking into account these circumstances, the Board has come to the conclusion that the OD and the patent proprietor were not directly enabled to understand which claimed subject-matter of the impugned patent was to be attacked […] along which of the two grounds for opposition, and based on which text passages or figures of the 26 cited prior art documents, and that they, therefore, had to conduct their proper investigations. [15] The opposition was directed at the impugned patent as a whole (see [5] above). As there were no further indications regarding specific claims of the impugned patent, the Board adopts the view of the OD according to which the subject-matter of all 26 claims of the impugned patent was attacked and not only, as stated by the [opponent], both independent claims 1 and 17. This conclusion is in line with the decision of the Enlarged Board of Appeal (EBA) G 9/91 [8], in which the EBA established that a limitation of an opposition to a certain part (subject-matter) of the patent is rather unusual in practice and that, as a rule, the patent is attacked as a whole. Because of this conclusion the Board is does not find persuasive the argument of the [opponent] according to which it was self-evident that only the independent claims mattered in an opposition. Thus all 26 documents cited against the patent, including the text passages and figures that were indicated as particularly relevant, referred to the subject-matter of all 26 claims of the impugned patent and both grounds for opposition (lack of novelty and lack of inventive step), because both grounds were invoked without any concrete reference to any of the claims or any document cited against them. Thus each of the documents cited could in theory be considered to be novelty-destructive for the subject-matter of each of the 26 claims, which alone amounts to 676 possible attacks. And even if at first only the two independent claims of the impugned patent had to be considered for the examination of novelty, each of the 26 documents cited against the patent could be allocated to each of these two independent claims, which already amounts to 52 possible attacks. As to inventive step, the number of possible attacks was much higher because combinations of the above-mentioned documents cited against the patent were to be considered in the context of inventive step, even though no combinations were mentioned in the ‘Notice of opposition’ form and the additional sheets. Therefore the Board agrees with the [patent proprietor] that the present opposition confronted the patent proprietor and the OD with a very considerable number of combinations and, for this reason alone, would in any case have required proper investigations on behalf of the patent proprietor and the OD. Thus it was not necessary to answer the question whether the content of the 26 documents cited against the patent in the ‘Notice of opposition’ form could at all be considered in the examination of the sufficient substantiation of the opposition (because these documents had only been filed after the TFO had expired). [16] But even if the Board assumed, in favour of the [opponent], that there was a clearly discernable intention to contest the novelty of the subject-matter of claims 1 and 17 based on document D4 and the relevant text passages and figures cited in this context, this could not lead to the opposition being considered admissible because even in novelty attacks it is, as a rule, necessary to point out the technical interrelationships between the individual features of the subject-matter claimed in the impugned patent and the state of the art resulting from a document, as well as the conclusions drawn from them (see above, point [9]). In the present case it was indeed necessary to point out a technical interrelationship because, as convincingly argued by the [patent proprietor] in view of the subject-matter of claims 1 and 17, the corresponding technical situation was not simple and intrinsically directly understandable for the skilled person, so that he could not see or review the relevance of the cited passages of 381 | 3398
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document D4 for the subject-matter of claims 1 and 17 of the impugned patent, even if the content of this document, which had been filed after the expiration of the TFO, could have been taken into account. The same holds true for document D1. [17] The [opponent] put forth several arguments why both the OD and the patent proprietor could have reviewed the present opposition without further ado under the present circumstances, but the Board cannot endorse these arguments. It is true indeed that the effort generated by the examination of an opposition for the OD of the EPO is not relevant for the examination of the opposition. This notwithstanding, according to the established case law, for an opposition to be admissible the OD must be able to understand (verstehen und nachvollziehen) the submissions establishing the reasons (Begründung) for the opposition, which have been filed until the expiration of the TFO, without further ado (see above, point [8]). Moreover, neither the law nor the case law establish a duty for the patent proprietor to successively “work off” (abarbeiten) the documents that have been cited in an opposition without an indication of facts presented in support of the opposition in order to establish which of the text passages and/or figures of those documents, which have been cited as being particularly relevant, could be, say, destructive of the novelty of the independent claims of its patent. Rather, the opponent has to provide reasons for its opposition and the content of the notice of opposition has to satisfy certain legal requirements for the opposition to be admissible (see point [3] above). It is not incumbent on the patent proprietor to elaborate its own reasoning (Begründung) based on the existing indications in the notice of opposition if they are insufficient. The above mentioned requirement for reasons only concerns oppositions, but not search reports established by the EPO. Therefore, oppositions and search report are not comparable. The European search report mentions those documents, available to the EPO at the time of drawing up the report, which may be taken into consideration in deciding whether the invention to which the EP application relates is new and involves an inventive step (R 61(1)). Incidentally, these documents are cited together with the claims to which they refer and, as the case may be, the relevant parts of each document are identified (R 61(2)). However, the search report as such does not have to contain reasons like those that are required for an opposition. [18] The [opponent] also considers that, similar to case T 302/93, the indications provided in the notice of opposition were sufficient for the opposition to be admissible. The present situation was equivalent to the one underlying decision T 302/93 because the ‘Notice of opposition’ form and the two additional sheets indicated the relevant text passages of the cited documents without giving explicit information on the particular relevance of the text passages cited and on the precise ground for opposition or patent claim to which the relevant passage was intended to refer. As in cas T 302/93 the cited passages for one of the documents cited against the patent, i.e. document D4, were sufficient for enabling to enable the OD and the patent proprietor to establish the link between those passages, the invoked ground of novelty and claim 1 of the impugned patent. Thus the present opposition was as admissible as the one underlying decision T 302/93. However, the Board shares the opinion of the OD and of the [patent proprietor] according to which the present factual situation is not equivalent to the one underlying case T 302/93. As explained by the [patent proprietor], in the opposition proceedings on which decision T 302/93 is based [the opponent] had already stated in the notice of opposition that the documents D1 and D3 cited with their relevant passages referred to claims 1 – 6 and claim 1, respectively. The [opponent] is correct in stating that in case T 302/93 also there was no explicit indication for document D1 as to which ground for opposition was invoked and to which claim precisely the indicated relevant passage referred, and that the Board nevertheless based its reasoning in decision T 302/93 on the assumption that this passage self-evidently referred to the subject-matter of independent claim 1 and its lack of novelty. However, in the present case the [opponent] has not cited any claim of the impugned patent as being concerned by the cited passages of the 25 documents of the notice of opposition and, therefore, in contrast to case T 302/93, has not established any connection whatsoever between at least one of the documents cited against the patent and at least one of its claims. The Board considers this to be an essential difference between the present case and case T 302/93. Another significant difference results from the fact that in case T 302/93 the patent as granted comprised only 9 claims (against 26 claims in the present case) and that the notice of opposition cited only 8 documents against the patent (whereas there are 26 documents cited in the present case), because, as explained under point [13] above, the number of documents cited against the patent and the number of claims of the impugned patent is relevant for the question of admissibility.
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[19] The Board also considers the factual situation underlying case T 1069/96 not to be comparable with the one underlying the present case. In case T 1069/96 what was filed was not the ‘Notice of opposition’ form but a writ of opposition (Einspruchsschriftsatz) comprising short indications of the facts and evidence, and the opposition was essentially based on an alleged prior public use. There was no explanation whatsoever in this writ of opposition in which of the evidence filed for establishing the alleged prior use the individual features of the subject-matter of the impugned patent were disclosed. As the case underlying decision T 1069/96 was not complicated as to its technical substance, the Board was of the opinion that the average skilled person was able to establish the subject-matter of the alleged prior use to the extent needed for a comparison of this allegedly used subject-matter with the subject-matter of the impugned patent during the subsequent substantive examination (see point [2.3.4.2] of the reasons). The present factual situation differs from the one underlying decision T 1069/96 in that the extent of the cited prior art is much greater than the one cited in case T 1069/96. Moreover, the Board is not of the opinion that that the present technical situation is so simple that the opponent could refrain from pointing out a technical interrelationship and explaining its relevant conclusions (see above, point [16]). [20] For the above reasons the opposition filed within the nine-month TFO does not contain a sufficient indication of the facts invoked as reasons (Begründung) for the opposition, for both grounds for opposition (lack of novelty and lack of inventive step). Thus none of the grounds for opposition invoked have been substantiated and the requirements of R 76(2)(c) have not been complied with in the present case. Therefore, the OD rightly dismissed the opposition as inadmissible pursuant to R 77(1). […] The appeal is dismissed. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1439/09 – Disregarded Statements
K’s Law – The ebook
T 1439/09 – Disregarded Statements 20 Jun 2013
In this case Board 3.3.08 confirmed decision T 146/07 where anonymous third party observations had been found not to be admissible. [1.6] Anonymous, unsigned third party observations were filed during the appeal proceedings. [1.7] In decision T 146/09 (sic), this board, in a different composition, held that the identification of a third party in the context of third party submissions in opposition proceedings was particularly important in order to allow the competent organ of the EPO to verify whether the observations were indeed filed by a third party rather than by a party to the proceedings. Otherwise, a party might be tempted to submit late observations and/or documents by means of anonymous third party observations in order to avoid negative procedural consequences such as apportionment of costs. Moreover, unsigned submissions by a party to the proceedings were deemed not to have been filed if, after a communication according to R 50(3) has been sent out by the EPO, they are not signed in due time. Since unsigned anonymous third party observations did not allow the EPO to send out such an invitation, they necessarily remained unsigned. As a consequence, they were deemed not to have been filed. [1.8] In the present case, the board sees no need to depart from this line of reasoning. Therefore, the anonymous observations filed under A 115 are deemed not to have been filed and are disregarded by the board. Should you wish to download the whole decision, just click here. The
file
wrapper
can
be
found
here.
NB: T 146/07 was discussed on this blog (here). You might also want to have a look at T 1336/09, which deals with ex parte proceedings.
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D 2/10 – Saved By The Bell
K’s Law – The ebook
D 2/10 – Saved By The Bell 19 Jun 2013
The present decision might be of interest for patent attorneys because it delves into some little known provisions of the regulations on discipline. Two patent attorneys of a Swedish law firm were dealing with the European patent application; only one of them (Mr C.) was entitled to act before the EPO, whereas the other (Mr G) was only a Swedish patent attorney. Mr C. signed all the documents, but in fact Mr G. was handling the prosecution. In a letter dated May 19, 2003, the applicant instructed Mr G. to file a divisional. For some reason Mr G. failed to do so. The mistake was discovered after the publication of the grant of the patent based on what should have been the parent application. A request for re-establishment was refused. The applicant filed a complaint before epi on March 24, 2009. Apparently, there had already been a complaint (filed on February 21, 2008) that had been erroneously withdrawn by the complainant. The complaint was forwarded to the chairman and the secretary of the Disciplinary Committee (DC) on the same day, but it took almost 6 months before the President of the epi and the President of the EPO were invited to comment (on September 9, 2009). The DC dismissed the complaint as inadmissible and closed the disciplinary proceedings. The President of the epi then filed the appeal. The Disciplinary Board dismissed the appeal, for the following reasons: Legal basis Regulation on discipline for professional representatives (RDR) [3.1] Article 1 RDR General professional obligations (1) A professional representative shall exercise his profession conscientiously and in a manner appropriate to its dignity. In particular, he shall not knowingly make any false or misleading statement. (2) A professional representative shall conduct himself in such a manner as not to prejudice the necessary confidence in his profession. Article 26 RDR Period of limitation (1) Proceedings in respect of a failure to comply with professional obligations shall be barred after a period of five years. The period of limitation shall begin on the date of such failure. (2) The period of limitation shall be interrupted by any procedural step taken in respect of such failure by a disciplinary body or one of its members against the professional representative concerned. Each interruption shall cause the period of limitation to begin again. Additional Rules of Procedure of the DC of the epi (RPDC, OJ EPO 1980, 177, amended in OJ EPO 2007, 552) [3.2] Article 7(4), (5) RPDC Complaints (4) The Registrar shall: a) register each complaint together with the date of receipt; 385 | 3398
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b) immediately send copies of the complaint to the Chairman and the Secretary of the Disciplinary Committee, to the President of the Council of the Institute and the President of the European Patent Office; c) notify the Chairman of the Disciplinary Board of the European Patent Office of the receipt of a complaint and of the date of receipt. (5) The Chairman of the Disciplinary Committee shall without delay nominate a Chamber and assign the complaint to that Chamber. Article 8(1) RPDC Procedure following receipt of a Complaint Unless a complaint is summarily dismissed on the ground mentioned in Article 18 hereof, the Chamber concerned shall, without delay, send a copy of the complaint, together with a reference to where these Rules of Procedure are published, to the professional representative concerned, who shall be given a period of two months after receipt by him of the copy of the complaint to present a written defence, which shall be addressed to the rapporteur. Article 18 RPDC Procedure following summary dismissal of a Complaint If a complaint is summarily dismissed by a Chamber on the ground that it clearly discloses no facts upon which an allegation of breach of the Rules of Professional Conduct could be made against the professional representative concerned so that it is, therefore, not necessary to call upon him to present a defence, then: a) the complainant shall be informed accordingly by letter; b) the persons mentioned in Article 7, paragraph 4 hereof shall be sent copies of the said letter and of the decision; c) the professional representative concerned shall be sent a copy of the said letter, a copy of the complaint and a copy of the decision. Relevant standard for the imposition of disciplinary measures [4] The appeal would be allowable if the professional representative concerned had failed to comply with his professional obligations according to Article 1 RDR and if the proceedings in respect of this failure were not barred due to the period of limitation according to Article 26(1) RDR. According to decision D 5/86 an infringement of the rules of professional conduct must be established to the satisfaction of the disciplinary body before it can impose a disciplinary measure. Absolute certainty is not required, but a degree of probability which in human experience verges on certainty. A disciplinary measure cannot be imposed if there is reasonable doubt as to whether the infringement has occurred (cf. Case Law, 6th edition 2010, p. 942 et seq.). Non-compliance with the standards of professional conduct [5] The issue of the current appeal is whether or not the Defendant as a European professional representative and member of epi bears any responsibility for the failure of Mr G. to file a divisional patent application as it was requested by the applicant. According to the facts established by the DC the Defendant acted as the only European professional representative for the applicant, but the handling of the case within the P C AB was assigned to Mr G. Although it is neither uncommon nor prohibited under the RDR and the epi Code of Conduct (OJ EPO 2003, 523) for a professional representative to engage and even delegate some of his tasks to a person not qualified as a European professional representative or not even qualified as a patent attorney on the national level, this does not mean that a European professional representative could relieve himself of his professional duties vis-à-vis his clients and epi. Since Mr G. was not a qualified European professional representative and thus could not act vis-à-vis the EPO, the Defendant retained at least part of the mandate entrusted to him by the applicant. In relation to the EPO, i.e. for any official acts, in particular filing applications and procedural requests, the Defendant was the only 386 | 3398
D 2/10 – Saved By The Bell
K’s Law – The ebook
responsible European patent attorney and Mr G, regardless of his qualification as Swedish Patent Attorney, acted as his assistant. As a result, the Defendant remained ultimately responsible for the case vis-à-vis the applicant as the only European professional representative. His continuing responsibility necessitated some degree of supervision over the acting Swedish patent attorney Mr G. It could be open to discussion whether the Defendant indeed acted in accordance with his supervising duties by restricting his contribution to the (main) patent application to merely signing all official documents prepared solely by Mr G. without any further involvement in the internal management of the prosecution of the patent application. However, this issue does not need to be discussed in detail because the Defendant’s alleged failure to comply with his professional duties can no longer be a subject of disciplinary proceedings for formal reasons. Period of limitation [6.1] Article 26(1) RDR provides for a period of limitation of five years beginning on the date of the failure to comply with professional obligations. The alleged failure in question, to supervise Mr G. in the handling of the main application, was not punctual and isolated but rather of a continuous nature. However, it culminated in the failure to file a European divisional patent application in due time. The filing would have been possible until the grant of the main patent application of which the professional representative concerned was notified by the EPO with letter of 1 April 2004, published in the European Patent Bulletin 04/20 of 12 May 2004. This date marks the (last) date of the alleged failure. However, one could consider “extending” said failure until the applicant had been informed of the fact that its instruction to file a European divisional patent application had not been observed. This was done by Mr G. with letter of 7 June 2004. Since the failure to file a European divisional application in due time was remediless – it was, in particular, not open for a request for re-establishment of rights (the respective request dated 14 April 2005 was finally rejected as inadmissible by the Receiving Section with its decision of 8 March 2006, application no. 05008230.4) –, the failure was “completed” at the latest on the date of receipt of the letter sent by Mr G. to the applicant, i.e. a couple of days after 7 June 2004. Assuming that the delivery of said letter took no longer than ten days, the period of limitation ended on 17 June 2009. After that date any proceedings are barred in respect of the alleged failure by the Defendant to supervise Mr G. who was not a qualified European professional representative but who, nevertheless, was assigned to handle the main application and failed to observe the applicant’s instruction to file a divisional application in due time. [6.2] According to Article 26(2) RDR the period of limitation shall be interrupted by any procedural step taken in respect of such failure by a disciplinary body or one of its members against the professional representative concerned. Each interruption shall cause the period of limitation to begin again. [6.2.1] The Appellant is right in that Article 26 RDR as well as any other provision in the RDR does not give an explicit definition of what is meant by the legal term “any procedural step”. However, according to the constant practice of the Disciplinary Board of Appeal, the interpretation of a provision that contains undefined legal terms follows the basic rules of interpretation: a) the literal meaning of the provision and its legal terms (semantic interpretation) as a starting point as well as the limit of any interpretation, b) the meaning of the provision and its legal terms within its legal context (systematic interpretation), c) the objective purpose of the provision and its legal terms (teleological interpretation) taking into consideration all the interests involved, and, if necessary d) intentions of the historic legislator (historical interpretation). [6.2.2] Applying this methodical approach the Board finds that already the wording of Article 26(2) RDR gives a first indication as to what kind of procedural step is needed to effect an interruption. Article 26(2) RDR provides that the period of limitation shall be interrupted by any procedural step taken in respect of such failure by a disciplinary body or one of its members against the professional representative concerned.
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K’s Law – The ebook
It follows from this wording already that not any and every procedural step taken suffices for triggering an interruption but only a (specific) procedural step taken against the professional representative concerned. This means that only a procedural step directed against the professional representative concerned can be qualified as being of an interrupting nature. In other words, mere internal procedural steps to administer disciplinary proceedings are excluded from the wording of Article 26(2) RDR. [6.2.3] In addition, taking into consideration the context of Article 26 RDR one needs to look at other provisions with regard to disciplinary proceedings. In this context, Articles 7(4) and (5), 8(1) and 18 RPDC are of particular significance. These articles describe the first relevant procedural steps to be taken by the DC after a complaint has been filed. Once the internal administration of a new complaint has been completed by the registrar (Article 7(4) RPDC) and once the members of the DC chamber have been nominated (Article 7(5) RPDC), the DC chamber summarily assesses the case as to whether it discloses facts upon which an allegation of breach of the Rules of Professional Conduct could be made against the professional representative concerned. If the chamber cannot establish sufficient facts in that respect, it dismisses the complaint and informs the professional representative of its decision (Article 18 lit. c) RPDC). If, on the other hand, the chamber can establish sufficient facts, it then informs the professional representative concerned of the complaint and invites him to submit his defence (Article 8(1) RPDC). Article 7(4) lit. b) RPDC clearly provides for copies of any new complaint being forwarded to the President of epi and the President of the EPO. Likewise, according to Article 7(4) lit. c) RPDC the Chairman of the Disciplinary Board of the EPO needs to be notified of the complaint. It follows from these provisions that, contrary to what the Appellant submitted, the proceedings of the DC are not – and must not be – secret or confidential in a sense that the professional representative concerned might not necessarily be contacted by the DC (cf. Articles 8(1) and 18 lit. c) RPDC) and that third parties to the proceedings (like the President of epi and the President of the EPO) are not made aware of the fact that a complaint has been filed (Articles 7(4) lit. b) and 18 lit. b) RPDC). As a consequence, the disciplinary proceedings involve both internal procedural arrangements (e.g. registration of each new complaint together with the date of receipt, notifying the chairman of the DC of the receipt of a complaint and of the date of receipt, nomination of the members of the DC chamber) and external procedural steps (e.g. notifying the President of epi and the President of the EPO, informing the professional representative concerned of the complaint), only the latter being either taken directly vis-à-vis the professional representative concerned or somehow noticeable to third parties. Mere internal procedural arrangements, e.g. internal letters or preparatory acts of the DC, do not cause an interruption of the period of limitation. Thus, the legal term “procedural step taken … against the professional representative concerned” within the meaning of Article 26(2) RDR is to be interpreted as being distinct from any internal procedural arrangement. [6.2.4] Further, bearing in mind that the nature of disciplinary proceedings and its potential consequences (cf. Article 4(1) RDR) are similar to criminal proceedings the legal term needs to be construed in a restrictive way. The purpose of a period of limitation is to restrict the possibility of “punishment” for a failure to comply with the rules of professional conduct committed a long time ago. Such an “ancient” infringement of rules should not give rise to disciplinary proceedings for reasons of legal certainty. Thus and like in criminal procedural law, the main reason for a period of limitation is to find a balance between the interest of the injured party on the one hand and the interest of the alleged offender on the other hand demanding the former to quickly bring his charges so that the proceedings can commence and allowing the latter to get on with his life and not have legal battles from his past come up unexpectedly. [6.2.5] As a consequence, the period of limitation can only be interrupted by procedural steps that are either taken directly vis-à-vis the professional representative concerned or that are somehow noticeable to third parties. Mere internal procedural arrangements, e.g. internal letters or preparatory acts of the DC, do not cause an interruption of the period of limitation. [6.2.6] Furthermore, this interpretation of Article 26 RDR and the Board’s opinion concerning what kind of procedural steps is suitable for causing an interruption of the period of limitation is consistent with the respective legal concepts in Contracting States of the EPC, particularly in Germany and France. § 78c(1) German Criminal Code (“Strafgesetzbuch”) contains a list of procedural measures leading to an interruption of the period of limitation. All these provide for either a direct involvement of the accused or a 388 | 3398
D 2/10 – Saved By The Bell
K’s Law – The ebook
formal decision taken by a judge or public prosecutor. This (high) standard applies in principle to periods of limitations for regulatory offences according to § 33(1) German Regulatory Offences Act (“Gesetz über Ordnungswidrigkeiten”) and for disciplinary proceedings against lawyers pursuant to § 115(1) German Federal Lawyers’ Act (“Bundesrechtsanwaltsordnung”). A similar concept is known in the French law (cf. Article 7 Code de procédure pénale), according to which only an official investigation or prosecution step might trigger an interruption of the period of limitation. [6.3] According to the facts as presented in the file, the complaint was (finally) received by the registrar of the epi DC on 2 April 2009. However, concerning the subsequent proceedings before the DC the facts available to the Disciplinary Board of Appeal show only that the complaint was forwarded to the chairman and the secretary of the DC by internal letter on the same day and by external letter to the President of the epi and the EPO as well as to the members of the chamber on 9 September 2009. The letter of 2 April 2009, as a mere internal action and like other internal arrangement (e.g. registration of the notice of complaint in the database, allocation of a case etc.), could not and did not interrupt the period of limitation according to Article 26(2) RDR. The external letter of 9 September 2009, however, came too late to interrupt the period of limitation that, by then, had already expired. By communication of 16 May 2011 issued by the rapporteur of the Disciplinary Board of Appeal, the secretariat of the DC was invited to submit a copy of the complete file of the DC in case CD 3/09 with documents and information about what the DC, its chairman, rapporteur, secretary and/or registrar initiated, prepared, inquired or decided between 2 April 2009 and 9 September 2009. However, no reply and no copy of the file were submitted. The Appellant’s remark that there would be no evidence of receipt of this communication at the secretariat and the office of the DC chairman is inexplicable for the Board because the communication had been sent by facsimile with a confirming transmission report and by post, and the rapporteur had called the epi office and was told that no reply to the communication would be sent. Apart from this, the communication was sent by the Board’s registrar by e-mail on 20 September 2011 upon a respective request from the Appellant and its receipt was confirmed by the Appellant by e-mail on 22 September 2011, but the Appellant’s letter of 6 October 2011 contained nothing pertaining to the Board’s request. With no further information available, the Disciplinary Board of Appeal has to take its decision according to the state of the file as submitted at the beginning of the proceedings before the Board with the additional submissions by the Appellant in these proceedings. This information shows that the DC only took internal procedural arrangements before 9 September 2009 when, for the first time but too late for triggering an interruption of the period of limitation, letters according to Article 7(4) lit. b) RPDC were sent. [6.4] The Appellant referred in its letter of 6 October 2011 to an earlier complaint against the Defendant, filed on 21 February 2008 (case CD 1/08). This complaint was referred to in the (new) complaint dated 2 April 2009. However, there the complainant noted that the earlier complaint would have been considered withdrawn by the DC. No further information as to its content and, in particular, as to the proceedings in respect of that earlier complaint is on file. Contrary to the assumption by the Appellant, the Disciplinary Board of Appeal has no copy of the earlier complaint nor does it have the letter from the epi registrar to both the chairman and secretaries of the DC. Again, regardless of the rapporteur’s communication of 16 May 2011, the secretariat of the DC submitted no additional information in this respect. In respect of the Appellant’s submission that the filing of that earlier complaint on 21 February 2008 led to an interruption of the period of limitation pursuant to Article 26(2) RDR, the Board refers to the preceding paragraphs. The mere receipt of the complaint and its registration according to Article 7(4) lit. a) RPDC could not constitute an interruption. The same is true with regard to any letter sent by the registrar on 7 March 2008 to the chairman and secretary of the DC allocating the complaint to the DC chamber (Article 7(4) lit. b), 1st part RPDC). Such a letter was also of a purely internal nature and not comparable to an official notification sent to the President of epi and the President of the EPO according to Article 7(4) lit. b), 2nd part RPDC or to a notification of the Chairman of the Disciplinary Board of the EPO according to Article 7(4) lit. c) RPDC). 389 | 3398
D 2/10 – Saved By The Bell
K’s Law – The ebook
[6.5] The Board has no explanation why the proceedings before the DC were delayed and, in particular, why the registrar did not follow the procedural steps foreseen in Article 7(4) RPDC immediately upon receiving the complaint on 2 April 2009 that would have included procedural steps being taken against the Defendant noticeable to third parties, i.e. the President of the epi and the President of the EPO, and that would have interrupted the period of limitation. Further, the Board cannot understand why the file of the DC in this case, a copy of which was submitted to the Board, does not contain any information or documents about when and how the procedure pursuant to Articles 8 and 18 RPDC was followed. [6.6] Since there is no other cause or reason apparent for an interruption of the period of limitation according to Article 26(2) RDR the fragmentary facts submitted by the Appellant and the DC on file show that the period of limitation clearly ended long before a procedural step according to Article 26(2) RDR was taken that might have led to an interruption of the period of limitation. […] The appeal is dismissed. Should you wish to download the whole decision, just click here.
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T 108/09 – De Novo
K’s Law – The ebook
T 108/09 – De Novo 18 Jun 2013
In this opposition appeal case Board 3.3.02 had to decide on the novelty of claim 1 as granted, which read: 1. Use of fulvestrant in the preparation of a medicament for the treatment of a patient with breast cancer who previously has been treated with an aromatase inhibitor and tamoxifen and has failed with such previous treatment. (my emphasis) [2.3.1] Document D2 discloses the use of fulvestrant (ICI 182,780) for the second-line treatment of breast cancer after tamoxifen failure […]. It therefore has to be determined whether or not the change from second-line treatment to third-line treatment, expressed in claim 1 as granted by the feature “who previously has been treated with an aromatase inhibitor and tamoxifen and has failed with such previous treatment”, can establish novelty. In this context, it is noted that, as was correctly pointed out in the decision under appeal, this feature does not relate to the presentation of information (A 52(2)(d)) by merely describing the medical history of the patient but constitutes a technical feature. This can be deduced from document D2, according to which tamoxifen cannot cure breast cancer, as drug resistance will develop […], which means that physiological changes in the tumour occur in the course of tamoxifen administration. As a consequence, this feature has to be taken into consideration for the evaluation of novelty and inventive step. According to decision G 2/08, A 54(5) does not exclude a medicament already known to be used in the treatment of an illness from being patented for use in a different treatment by therapy of the same illness. This finding applies mutatis mutandis to the Swiss-type claims of the patent in suit (see G 2/08 [order]). G 2/08 [5.10.7] also refers to “well-established case law” which includes decisions T 19/86, T 893/90 and T 233/96, all of which pertain to a novel group of subjects treated and were relied on by the appellant-opponent. Although decision T 233/96, by taking into consideration the jurisprudence created by T 19/86 and T 893/90, attempts to define general criteria which must be met for a particular group of subjects to establish novelty and/or inventive step in a Swiss-type claim (see T 233/96 [8.7]), this board concludes that these three decisions relate to three different situations which have to be distinguished from one another. (a) In decision T 19/86, a new group of subjects (sero-positive piglets) was vaccinated against the same disease (Aujeszky’s disease) against which vaccination had already been disclosed for sero-negative piglets. This means that in this case the group of subjects to be treated does indeed constitute the distinguishing feature over the prior art. (b) Decision T 893/90 concerns the use of a composition for controlling bleeding in non-hemophilic mammals as compared to the use of the same composition for controlling bleeding in hemophilic subjects. Here, unlike T 19/86 where the disease according to the claims is identical to the disease defined in the prior art, the group of subjects (non-hemophilic mammals) serve to further define the disease or pathological symptoms to be treated (bleeding) and the disease or pathological symptom thus defined (non-hemophilic bleeding) is different from the disease of the prior art (hemophilic bleeding). As a consequence, T 893/90 concerns the classical case in which the disease to be treated constitutes the distinguishing feature of a Swiss-type claim over the prior art. (c) Decision T 233/96 is of no importance to the present case. It concerns a diagnostic method for detecting the presence, or assessing the severity, of vascular disease of coronary arteries, for which novelty was denied as no functional relationship existed between the incapability of a patient to exercise adequately (group of subjects) and the pharmacological effect achieved by administration of the active agent in the diagnosis of various types of coronary disease (see point [8.8]). In the light of these decisions, and in particular in the light of decision T 893/90, the board considers it appropriate to evaluate whether the breast cancer of claim 1 as granted is identical to the breast cancer according to document D2. In the first paragraph of point [2.3.1], it has already been concluded that tamoxifen resistance leads to physiological changes in the tumour, which means that the tumour can be distinguished from the same tumour before tamoxifen resistance set in. It would stand to reason that the same development would be observed with the aromatase inhibitor. Resistance would set in after a certain period of time, leading to physiological changes in the tumour. However, the appellant-opponent contested this, pointing out that in some 391 | 3398
T 108/09 – De Novo
K’s Law – The ebook
cases there was de novo resistance to aromatase inhibitors. Reference was made to document D10, which concerns a phase II clinical study of the clinical benefit of fulvestrant in post-menopausal women with advanced breast cancer. This study included in group B […] patients who did not respond to aromatase inhibitor treatment and were therefore de novo resistant […]. De novo resistance means that the tumour does not change during treatment with an aromatase inhibitor. In view of the existence of de novo resistance to aromatase inhibitors, it might be argued that the group of patients treated in document D2 inevitably included patients with de novo resistance to aromatase inhibitors. For these patients, fulvestrant would inadvertently be used as a third-line agent, so that there was lack of novelty with respect to this particular patient group. However, the board cannot agree with that argumentation. The fact that document D10 mentions patients with de novo resistance to aromatase inhibitors does not mean that this kind of resistance is ubiquitous. As a consequence, document D2, which does not mention de novo resistance to aromatase inhibitors, does not implicitly disclose third-line treatment involving fulvestrant, so that the tumours of document D2, being only resistant to tamoxifen, can be distinguished from the tumours of claim 1 as granted, which are additionally resistant to an aromatase inhibitor. This distinction means that two different diseases or two subsets of a disease (tumour) are concerned, which in analogy to the findings in point 2.3.1 (b) above establishes novelty. The subject-matter of claim 1 as granted is therefore novel over document D2. [2.3.2] The reasoning of paragraph [2.3.1] above also applies to the novelty of claim 1 as granted vis-à-vis document D3, which also discloses the use of fulvestrant (ICI 182,780) for the second-line treatment of breast cancer after tamoxifen failure […]. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 637/09 – No Reason To Doubt
K’s Law – The ebook
T 637/09 – No Reason To Doubt 17 Jun 2013
In this case the patent proprietor questioned the authorisation of one of the professional representatives of the opponent: [1] With letter dated 2 November 2012, the [opponent] informed the board and the [patent proprietor] that Mr S., a professional representative, would represent the [opponent] jointly with Mr M., the professional representative already acting on behalf of the [opponent]. Mr S.’s entitlement to act as a representative for the [opponent] was contested by the [patent proprietor] at the beginning of the oral proceedings. The [patent proprietor] argued that the authorisation dated 2 November 2012 did not indicate the signatory’s name and entitlement to sign contrary to the requirements set out on the reverse side of EPO Form 1003. As can be inferred from R 152(10), a party may be jointly represented by several representatives. The question to be decided is whether the communication of Mr S.’s appointment by letter dated 2 November 2012 together with a copy of an authorisation signed by two employees of the [opponent] entitled Mr S. to act as joint representative for the [opponent] in the present appeal proceedings. Professional representatives who identify themselves as such are required pursuant to R 152(1) together with Article 1 of the Decision of the President of the EPO dated 12 July 2007 on the filing of authorisations (OJ EPO 2007, Special edition No. 3, 128; hereinafter “decision”) to file a signed authorisation in particular cases only. On the one hand, the filing of a signed authorisation (original and one copy) is required in the event of a change of representative involving professional representatives who are not members of the same association (Article 1(2) of the decision). On the other hand, the EPO may require an authorisation to be produced if the circumstances of a particular case necessitate this, particularly in case of doubt as to the professional representative’s entitlement to act (Article 1(3) of the decision). The appointment of Mr S. as joint representative is not a change of representative within the meaning of Article 1(2) of the decision. Thus, in order to represent the [opponent], Mr S. was not required to file a signed authorisation on the basis of Article 1(2) of the decision. The [patent proprietor], however, argued that no indication of the signatories’ names and of their entitlement to sign was given in the authorisation dated 2 November 2012 appointing Mr S. It was therefore doubtful whether the signatories were entitled to sign the authorisation, either by law or in accordance with the articles of association or equivalent of the [opponent]. An authorisation bearing the signature of persons not entitled to sign was not valid. In view of documents D66 to D68 submitted by the [opponent] on 4 December 2012, the board had however no reason to believe that the signatories of the authorisation dated 2 November 2012 were not empowered to appoint Mr S. as representative for the [opponent]. Consequently, the board also had no reason to doubt Mr S.’s entitlement to act for the [opponent]. The circumstances of the particular case thus did not necessitate the production of a (further) authorisation in accordance with Article 1(3) of the Decision of the President of the EPO dated 12 July 2007. The board thus concluded that Mr S. was duly authorised to represent the [opponent] in addition to Mr M. The [patent proprietor] also referred to the communication on matters concerning representation before the EPO (OJ EPO 4/1978, 281) cited on the reverse side of EPO Form 1003. Leaving aside the question of whether this communication is still applicable in view of Article 7(1), second sentence, of the Revision Act of 29 November 2000 and the decisions of the Administrative Council of 28 June 2001 (OJ EPO 2007, Special edition No. 1, 197) and 7 December 2006 (OJ EPO 2007, Special edition No. 1, 89), it certainly does not impose stricter requirements on professional representatives regarding the communication of their appointment in proceedings before the EPO than the decision referred to above. Should you wish to download the whole decision, just click here. The file wrapper can be found here. 393 | 3398
T 1703/12 – Nothing Left
K’s Law – The ebook
T 1703/12 – Nothing Left 14 Jun 2013
In this case an applicant (and the Examining Division) had to learn that a request for reimbursement of the appeal fee will not be examined by the Boards if it is made after interlocutory revision has been granted - which confirms earlier case law. [1] According to G 3/03, in the event of interlocutory revision under A 109(1), the department of first instance whose decision has been appealed is not competent to refuse a request of the appellant for reimbursement of the appeal fee, but has to submit this request to the board of appeal. This holds true if the request for reimbursement of the appeal fee was filed before the examining division granted interlocutory revision. [2] In G 3/03 the Enlarged Board further stated that R 67 EPC 1973 (now R 103(1)(a)) provided that, in the event of interlocutory revision, reimbursement of the appeal fee should be ordered by the department of the first instance whose decision has been impugned, “if such reimbursement was equitable by reason of a substantial procedural violation”. From the wording of this provision it followed that the department of the first instance had to examine whether the requirements for reimbursement of the appeal fee were met, regardless of whether or not the appellant had actually submitted such a request. If the department of the first instance came to the conclusion that these requirements were not met, it could not order reimbursement of the appeal fee. In the absence of a request for reimbursement of the appeal fee, the decision of the department of the first instance granting interlocutory revision pursuant to A 109(1) would make no mention of the issue of reimbursement of the appeal fee, and the appellant would not be adversely affected by the decision (point [3] of the reasons). In case of interlocutory revision and reimbursement of the appeal fee not being contentious, the appeal was not remitted to, and thus would not be pending before, a board of appeal, the decision under appeal having been set aside and the appeal allowed by the department of the first instance (point [2] of the reasons). [3] In the present case, the request for reimbursement of the appeal fee was only filed after interlocutory revision had been granted. At that time the appeal procedure was no longer pending, because the appeal had been fully dealt with and the appellant was not adversely affected. As a consequence, the request was submitted in the 394 | 3398
T 1703/12 – Nothing Left
K’s Law – The ebook
absence of a pending appeal and cannot, hence, constitute an ancillary issue to be dealt with in appeal proceedings. The reimbursement of the appeal fee is linked to the appeal procedure and cannot be separated from it. [4] That being so, in the case at hand no appeal exists from a decision of a department of first instance for which the boards of appeal are responsible pursuant to A 21(1) and the Board is not empowered to decide on the request for reimbursement. Since no appeal procedure is pending, the Board can only remit the case to the department of first instance (following decisions T 21/02 and T 242/05). […] The case is remitted to the department of first instance for further prosecution. NB: Note that in T 242/05 the Board had added (my translation from the French): “… Thus the first instance is fully competent for deciding that such a request is inadmissible. Consequently, the first instance should decide, and refrain from submitting this kind of case to the Boards, which is useless.” (my emphasis) Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 555/08 – Things Assistants Can’t Do
K’s Law – The ebook
T 555/08 – Things Assistants Can’t Do 13 Jun 2013
“Cathy, I want you to write me an inspiring, dynamic speech that bears my unmistakable stamp of genius.” In this examination appeal case Board 3.5.05 had to decide on a request for re-establishment into the time limit for paying the renewal fee for the 13th year (1420 €) which had fallen due during pending appeal proceedings. The applicant, who was not represented, had entrusted the administrative matters related to his patent applications to Mrs Elke Z., the manager of the company that commercialised his inventions. Mrs Z. intended to pay the renewal fee (which fell due on March 31, 2011) on January 31, 2011, and had her bank manager fill in a form transferring 850 € from her private account to the EPO (she had found in the booklet ‘National Law relating to the EPC’ that 850 € was the amount to be paid for Germany). However, the bank manager had filled in the form such that the money was transferred to the business account of her company, possibly because he thought that the transfer to the EPO would then be made from the business account. Mrs Z. thought that the money had been transferred to the EPO and did not take any further steps. When the applicant received the communication that the fee had not been paid, he called Mrs Z., who confirmed that the payment had indeed been made. He was satisfied with this information and did not take any further steps; he only realised that something had gone wrong when he received the notification of loss of rights. Unsurprisingly, the Board did not grant re-establishment. The decision is interesting because it applies the extensive case law on assistants of patent attorneys to assistants of unrepresented inventors. *** Translation of the German original *** [3.1] Against the background of the factual situation that has been presented in the course of the written proceedings and discussed in detail during the oral proceedings, it has to be decided, in application of A 122(1), whether the applicant/appellant has missed the time limit for paying the renewal fee for the 13 th year “in spite of all due care required by the circumstances having been taken”. [3.2] According to the wording of this provision and the established case law of the Boards of appeal a request for re-establishment can only be granted if the requesting party was unable to observe the time limit in spite of all due care required by the circumstances having been taken. For the purposes of A 122(1) the circumstances of the individual case have to be considered in their entirety. The duty of due care has to be assessed in the light of the situation as it was before the expiration of the time limit. “All due care” means the standard of care that the notional reasonably competent applicant or appellant, respectively, would have employed under the relevant circumstances (cf. T 30/90 [3]). [3.3] When the applicant is not represented by a professional representative during the entire examination proceedings and is sole responsible for the payment of renewal fees, lower standards for the duty of due care are indeed to be applied, but there still is a duty of due care regarding the proceedings. Such an applicant, who does not use the services of a professional representative, has to be prepared, within the limits of his possibilities, to carry out the acts required in the course of the grant proceedings in a regular manner and in due time. He cannot as a rule (generell) invoke his ignorance of the law nor may he refrain from taking reasonable (zumutbar) measures for keeping time limits (J 5/94 [3.1]; J 15/08 [3.2.1]; J 8/09 [4.2]). [3.4] A system for monitoring pending time limits is part of the reasonable measures for keeping time limits. It is irrelevant in this context whether this system is on paper or electronic (e.g. by means of special software or an Excel sheet) (cf. T 1962/08 [5.2.4(a)]).
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T 555/08 – Things Assistants Can’t Do
K’s Law – The ebook
[3.5] According to the established case law of the Boards of appeal due care regarding missed time limits is considered to have been taken when the failure to keep the time limit was caused either by extraordinary circumstances such as e.g. illness (no such circumstances have been invoked in the present case) or resulted from an “isolated mistake within an otherwise satisfactory system” (cf. J 2/86 [headnote; 4]) [3.6] In the present case the appellant has entrusted the payment of the renewal fees and the remaining administrative work related to the patent application to his business partner, Mrs Z. An applicant or a representative is not required to carry out all the actions he has to perform vis-à-vis the EPO himself. If an applicant or representative entrusts such actions to an assistant (Hilfsperson) he will not be held accountable for a failure of this assistant only if he himself has complied with a set of particular requirements. He must have carefully chosen the assistant, instructed him/her properly in view of the tasks to be performed and must have exercised reasonable supervision of his/her work (J 16/82 [5]). The expression “assistant” within the meaning of the case law does not refer to the hierarchical position of this person with respect to the applicant or representative but only to the fact that this person carries out certain tasks for the applicant or representative in the context of actions to be performed vis-à-vis the EPO. Thus, as far as the failure to meet the time limit is concerned, Mrs Z. is to be considered as an assistant. When assistants are used, the duty of due care primarily concerns the applicant unless a professional representative acts in his name. When the assistant makes a mistake, it has to be examined whether this mistake is due to insufficient selection, instruction and/or supervision by the applicant. [3.7] In view of the monitoring of the time limits for paying renewal fees the Board notes that the applicant did not monitor time limits over the relevant period. He had entrusted this task to Mrs Z., to whom he had given a list in 2007 or 2008. This list inter alia indicated the filing date and the dates on which fees had been paid for each patent application; it did not indicate the amounts to be paid or the due dates of the fees to be paid in the future […]. The appellant has not claimed that these due dates or time limits had been documented or monitored in another way. [3.8] The Board is of the opinion that it is questionable whether the monitoring of time limits as a whole can be entrusted to an assistant without there being a violation of the duty of due care, but this question may remain unanswered. In any case the duty of due care can only be said to have been complied with if the chosen assistant is sufficiently qualified in view of this task and when it is certain that he/she disposes of any information needed for reliably keeping the time limit. [3.9] Based on the list she had received, Mrs Z. could only have ensured reliable monitoring of the time limits and payment of fees if she had known the relevant provisions of the EPC and the RRF and extracted the missing pieces of information from the European Patent Register. Although Mrs Z. had already correctly performed other duties regarding patent applications of the appellant, he could not rely on the fact that his business partner was sufficiently qualified for retrieving herself the required pieces of information regarding the amounts and due dates of future renewal fees. He would have had to give these pieces of information – which the applicant is expected to know (see above, point [3.3]) – in appropriate form to Mrs Z. The fact that this was not done means that Mrs Z. acting as an assistant was not sufficiently familiar or instructed with her task. [3.10] As the entire correspondence of the EPO was sent to the appellant, he would have had to ensure that it was systematically and as soon as possible transferred to Mrs Z. Arranging for the incoming mail to be transferred does not constitute an unacceptable (unzumutbar) technical or economic problem, even for an individual applicant who is not represented (cf. J 27/01 [3.3.2]). A mere sporadic and personal transmission of incoming correspondence […] does not allow an assistant to establish a uniform and updated filing system (Ablage). However, such a filing system would be necessary for having an overview over actions that have been carried out and actions that are to be performed in the future. Thus the omission to systematically and rapidly transmit the correspondence constitutes a further lack of instruction of the assistant. [3.11] The fact that the communication dated May 4, 2011, concerning the renewal fee for the 13 th year was not transmitted to Mrs Z. right away […] was not an isolated mistake but corresponded to the usual practice. The communication inter alia contained the indication of the amount of the renewal fee (1420 €) and the additional fee to be paid in case of late payment (710 €). If she had disposed of the communication, Mrs Z. could easily have seen that the amount she thought she had transferred to the EPO (850 € […]) was not sufficient and that it was at least necessary to clarify the situation. She might have contacted the competent formalities agent of the EPO by phone, because the number was mentioned on the communication of May 4, 2011. Thus the loss of rights could very likely have been avoided had the assistant been instructed completely and in due time, including timely transmission of the communication of May 4, 2011.
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T 555/08 – Things Assistants Can’t Do
K’s Law – The ebook
[3.12] Once he had received the communication of May 4, 2011, the appellant asked Mrs Z. on the status of the payment of the renewal fees. When she explained that the corresponding renewal fee had been paid, he did not take any further steps until he received the communication of loss of rights […]. In particular, he did not enquire at the EPO. [3.13] The appellant was satisfied with Mrs Z.’s explanation on the phone that contradicted the contents of the communication of May 4, 2011, which he had before his eyes. In particular, the communication indicated that the renewal fee of 1420 € had not been paid on the due date of March 31, 2011, and that a loss of rights could still be avoided by a payment of 2130 € until the expiry of the sixth month after the due date. He could have quickly established that there had not been a correct payment by asking [Mrs Z.] questions on the transfer and the transferred amount. [3.14] In a situation where oral assertions of an assistant are uncritically accepted as correct although there must have been doubts regarding this assertion, the standard of due care required in view of A 122(1) has not been complied with (cf. T 602/94 [3]). The omission to question or to check, respectively, has to be seen in the context of the requirement to supervise assistants. In particular when there are signs for a possible mistake, it would have to be checked whether the assistant carries out the duties entrusted to him/her correctly. The appellant could have been expected to check, and indeed should have checked Mrs Z.’s assertion (e.g. by calling the number given on the communication). [3.15] Even if the Board assumes in favour of the appellant that he was entitled to entrust all actions regarding the payment of renewal fees (including the monitoring of time limits) to Mrs Z. acting as an assistant, without violating the duty of due care resulting from A 122(1), the duty of due care was violated by the way in which Mrs Z. was used. She was not sufficiently instructed so as to be able to carry out her task (points [3.9] to [3.11]) and once the communication of the EPO regarding the failure to pay the renewal fee had been received, she was not sufficiently supervised (points [3.12] to [3.14] above). [3.16] The fact that the transfer ordered by Mrs Z. had been made to her business account and not to the EPO […] is irrelevant under these circumstances. If the 850 € had reached the EPO, the communication of May 4, 2011, would still have been sent and the loss of rights would have occurred in the same way. The fact that only 850 € (instead of the required renewal fee of 1420 €) had been transferred is due to the fact that the appellant had insufficiently instructed Mrs Z. [3.17] Thus the Board comes to the conclusion that the appellant has not exercised all due care required by the circumstances in dealing with the payment of the renewal fee. Consequently, the requirements of A 122(1) have not been satisfied and the request for re-establishment cannot be allowed. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1033/10 – Plenty Of Lost Occasions
K’s Law – The ebook
T 1033/10 – Plenty Of Lost Occasions 12 Jun 2013
This is a revocation appeal. The claims on file were directed at a holding and sealing material for a catalytic converter. Board 3.2.06 found the main request and several late filed auxiliary requests not to be prima facie allowable because the limitation of the claimed subject-matter to a mat material and the expression “function of a binder” raised clarity problems – and refused to introduce them into the proceedings. It then examined a series of auxiliary requests filed during the oral proceedings (OPs) and referred to as auxiliary requests “14.40 h”: [5.1] The subject-matter of claim 1 of the “First auxiliary request 14.40 h” differs from claim 1 of the first auxiliary request in that the wording “having the function of a binder” is deleted and is replaced by the feature that the organic component “acts as a binder for the holding and sealing mat material so as to suppress scattering of fibers from the holding and sealing mat material”. The same amendment is made in claim 1 of the “Third and Fifth auxiliary requests 14.40 h” respectively. [5.2] Thus, these are the first requests including a claim 1 which take into account the objections to clarity (and disclosure) with regard to the previously defined feature of the organic component “having the function of a binder”. [5.3] When applying the […] principles according to Article 13(1) RPBA, the discretion to admit such a request has to be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. [5.4] The complexity of the amendment is not found to be an issue which by itself would have led the Board not to admit the request in the present case. [5.5] In the Board’s judgement, the state of the proceedings and the need for procedural economy taken together however imply a requirement on a party to present appropriate requests as soon as possible if such requests are to be admitted and considered. [5.6] In the present case, there had been plenty of occasions for the [patent proprietor] to amend the claims in reply to the clarity objections. [5.6.1] First, it should be observed that during the OPs before the department of first instance, an objection to lack of clarity was discussed concerning the wording of claim 1 in relation to the terminology “to suppress scattering of fibres from the holding and sealing mat material” which was linked to the suppression of volume of the mat […], and where the term “suppression” was not a clear term since it was not quantified with respect to either scattering of fibers or volume of mat material […]. Moreover, the further objection was discussed that the binding function of the organic component lacked clarity since it was not defined how to identify a material as a binder […]. Additionally […], the patent proprietor was of the view that holding individual fibres together would not be the same as binding, since binding also had to have the function of suppressing the volume, which view indicates an awareness of the [patent proprietor] concerning the link between these features. [5.6.2] In its letter of 14 January 2011 in reply to the statement of grounds of appeal, the [opponent] set out that the originally filed application did not “provide a basis for a function as a binder per se but rather as a binder so as to suppress scattering of fibers and further by suppressing the volume to some extent”. This paragraph […] when read in isolation could perhaps be considered as referring to A 123(2) alone. However, the function of the binder was also challenged with regard to A 84 […], in particular with regard to the nature of the organic component and as to how this organic component had to differ from the organic component provided in D1 as a sizing agent […]. Thus the fact that an objection to lack of clarity was being made was also evident. [5.6.3] In the communication sent as an annex to the summons to OPs before the Board, item 1.2.3 addressed the lack of clarity concerning the feature of the organic component “having the function of a binder” in the following manner: 399 | 3398
T 1033/10 – Plenty Of Lost Occasions
K’s Law – The ebook
“Further, it may be a matter of discussion as to whether the claim is clear in view of the added feature. The added feature appears namely to be unspecific in regard to what the function of “binding” implies (and possibly even “what” is bound). It may further be added that such an organic component as already in the claim inherently has a variety of properties which cannot seemingly be separated one from the other (such as sizing, binding, altering handle-ability etc). Hence, a lack of clarity seems to be present (A 84).” The basis for the disclosure of such feature was addressed in item 1.2.2. [5.6.4] At the start of the OPs before the Board of Appeal, the Chairman of the Board referred again to a lack of clarity with regard to the feature “organic component having the function of a binder” and pointed to the corresponding paragraphs in the communication of the Board, adding that the Board had not altered its opinion despite the [patent proprietor’s] submissions of 19 February 2013. [5.6.5] In spite of all these opportunities to address this issue, the [patent proprietor] chose only to argue with regard to the objection of lack of clarity and did not file an auxiliary request aimed at overcoming the objections raised in this respect. [5.7] Since the [opponent] had already raised objections against clarity of the terminology concerned, which were then confirmed and specifically pointed out in the Board’s communication containing its provisional opinion, with the [patent proprietor’s] written response to the Board’s opinion on 19 February 2013 an auxiliary request addressing this issue could have been filed, if it were the [patent proprietor’s] intention to overcome the objection by way of a request. Admittedly there may be cases where filing a request in response to the Board’s opinion may also be found to be an inappropriate amendment to a party’s case, but that issue does not need to be considered here as this did not occur. [5.8] Although the [patent proprietor] argued that it had understood the objection as regards lack of clarity only as a result of the debate during OPs, this does not justify filing a request at that stage of proceedings to deal with the objection, which is precisely what the [patent proprietor] did by filing the “First, Third and Fifth auxiliary requests 14.40 h”. [5.9] Whilst it may be credible that an objection (made by a party and/or by the Board) might not be fully understood in a particular case, it is then, at the very least, incumbent on the party having difficulties with understanding an objection to indicate this at the earliest possible stage and make appropriate effort to have the objection clarified. A lack of understanding alone cannot justify postponing an amendment to a party’s case until a later stage in the proceedings. [5.10] In the present case, an indication of a lack of understanding of the objection cannot be gleaned from the [patent proprietor’s] written response, nor was any difficulty in understanding the objection raised by the [patent proprietor] at the start of OPs. [5.11] Several previous opportunities to file a request amended to overcome the objection to lack of clarity had been waived by the [patent proprietor]. Requests were instead only submitted which included (in claim 1) the unchanged feature responsible for the clarity objection. [5.12] Accordingly, the filing of the First, Third and Fifth auxiliary requests 14.40h at this late stage in the proceedings is contrary to the need for procedural economy. Accordingly, the Board exercised its discretion under Article 13(1) RPBA not to admit these requests. [5.13] Since the requests were already not admitted for the aforegoing reason, it is not necessary for the purposes of this decision to consider the further objections of the [opponent] made against these requests. […] The appeal is dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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R 18/11 – Loss Of Control
K’s Law – The ebook
R 18/11 – Loss Of Control 11 Jun 2013
This petition for review concerns decision T 7/07 (reported on this blog), in which Board of appeal 3.3.02 had revoked the opposed patent after the Opposition Division had rejected the opposition. The Enlarged Board (EBA) found the petition not to be allowable. [2] […] The EBA cannot share the view that in the proceedings before the board the petitioner was deprived of its right to be heard. Even after hearing the petitioner […] it sees no reason to change its provisional assessment of the case as set out in the annex to the summons. In taking its decision the EBA must bear in mind that review proceedings under A 112a(2)(c) and (d) are confined to procedural defects so fundamental as to be intolerable for the legal system and overriding the principle that proceedings which have led to a final decision should not be reopened in the interest of legal certainty and that substantive issues are excluded (consistent case law since R 1/08 [2.1] and the travaux préparatoires there cited). [2.1] The EBA continues to take the view that the decision objected to could have been formulated more clearly. However, the flaws do not constitute the fundamental procedural defect of denying a party the right to be heard (A 112a(2)(c)), as is clear from an analysis of the passages in point [3.3] of the decision cited by the petitioner in support of its allegation that its right to be heard was infringed. [2.1.1] In said point [3.3] (first paragraph) the board begins by stating that the petitioner had not contested that clinical trials had been carried out before the priority date, and that the participants had not entered into confidentiality agreements and had been informed about all the active agents of the trial products, albeit not about the micronisation feature. The board continues by setting out (second paragraph) the criteria which, under established board of appeal case law, give rise to prior public use. According to the decision, these criteria are entirely consistent with what the petitioner indisputably conceded in the proceedings before the board. What this part of the decision may lack – an omission which however is made good at the end of point [3.3] – is a final conclusion that the facts not disputed by the petitioner already fulfil the criteria for public prior use under the boards’ case law (see point [2.1.3] below). [2.1.2] In the next section of point [3.3] (fourth and fifth paragraphs) the board discusses the argument that decisions T 152/03 and T 906/01, cited by the petitioner in the appeal proceedings, had found that clinical trials were not public. But the board dismisses it because the trials underlying those decisions were conducted on clinic premises and involved devices implanted into a small number of patients. Under such circumstances, the trial devices could be assumed to have remained secret. Trials of that kind differed from the one in dispute in which a large number of participants without confidentiality agreements were given products to take home and did not return all the unused ones at the end. [2.1.3] The board then sums up as follows: “Therefore, it appears that after having handed out the drugs the respondent effectively lost control over them as the participants in the clinical trial were in no way barred from disposing of the drugs as they wanted”. Point [3.3] ends by concluding that handing out the drugs to the participants made them publicly available. [2.2] The EBA does not agree with the petitioner that the English formulation “Therefore, it appears” expresses a mere “assumption”. In its submission of 10 March 2009 […], the petitioner itself uses the phrase to make a firm assertion: “As it appears from page 21 to 22 of D43, the proprietor entered into confidentiality agreements …”. Here, the petitioner is not making a mere assumption, but stating what it regards as an incontrovertible fact. Even though the EBA concedes that “it appears” could also be read as meaning “it is assumed”, the interpretation “it is apparent” in the given context as analysed above is objectively the more likely one. [2.3] Nor is the EBA convinced by the petitioner’s objection that its right to be heard was infringed because the board’s decision created new criteria for public availability – “loss of control” and “free disposal” – on which it had no opportunity to comment during the proceedings. The second paragraph of the decision’s point [3.3] begins “It is established board of appeal case law…”, leaving the reader in no doubt about the principles 401 | 3398
R 18/11 – Loss Of Control
K’s Law – The ebook
applicable under that case law on public prior use, namely “… that if a single member of the public … has the theoretical possibility to access particular information, this information is considered as being available to the public within the meaning of A 54(2)”. It does not mention “loss of control” and “free disposal”. It does however make clear, to those familiar with board of appeal practice, that the criterion cited in the decision (point [3.3], second paragraph) as established case law, namely that even the theoretical possibility of access is novelty-destroying for an invention, sets higher confidentiality requirements than criteria such as “loss of control” and “free disposal”. The EBA regards these two concepts as sub-categories of the “theoretical possibility to access” which suffices under the boards’ consistent case law, and therefore does not consider them to be unexpected criteria on which the petitioner was unable to comment. [2.4] It is true that the decision’s point [3.3] might have been more clearly structured. However, as shown above, these deficiencies did not constitute an infringement – let alone a “fundamental” one – of the petitioner’s right to be heard. [2.4.1] After all, the petitioner was legally represented. In the appeal proceedings it should therefore have been familiar with the boards’ established case law on the legal criteria for public prior use, including its implications for the pharmaceuticals field. Public prior use of the petitioner’s invention was a crucial issue in the appeal proceedings, in the light of the trials conducted in the United States, the US court judgment and the exchange of submissions. It was therefore a pressing task for the petitioner to address the issue in a comprehensive manner, and to raise any open questions itself. In view of the impartiality required of the boards in inter partes opposition appeal proceedings, it could not expect much in the way of helpful hints from the board. [2.4.2] Under the boards’ established case law, there can be no doubt that an invention which reaches a third party without a confidentiality agreement has become public. As explained above, “loss of control” and “free disposal” are just ways of describing that. These formulations were therefore not decisive for the board’s decision. [2.5] Consequently, there is no basis for assuming that the petitioner did not have sufficient opportunity to comment exhaustively on all aspects of public prior use which were relevant for the decision. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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J 16/11 – Indian Wrestling
K’s Law – The ebook
J 16/11 – Indian Wrestling 10 Jun 2013
In this case the applicant fell into the trap which has been fatal to many unrepresented applicants: he did not pay the renewal fee for the third year in due time. The fee was due on March 31, 2008. On May 20, 2008, the EPO sent to the then designated representative (Mr S.) a letter by which it informed the applicant that the fee for the third year had not been paid by the due date, but could still be validly paid up to the last day of the sixth calendar month following the due date, provided that the surcharge was also paid. The renewal fee was not paid within the time limit. On November 6, 2008, the EPO issued a notification to the applicant’s representative stating that the application was deemed to be withdrawn. On December 19, 2008, the EPO was informed that Mr L. had been appointed as the new European representative, replacing Mr S., who had resigned. On January 8, 2009, the representative filed a request for re-establishment. The grounds for re-establishment can be summarised as follows:
At the beginning of 2008 the applicant had no prospective licensee any more for European countries so that he did not consider paying the renewal fee for the third year. later on the applicant, then travelling for his business in India, found new perspectives for the invention and intended to pay the renewal fee with the surcharge on his return. instead of staying two weeks in India as originally planned, the applicant worked there for about four months. Back in his office on 20 September 2008, the applicant had to face a lot of tasks and for some unclear reasons he did not come across the notice of his U.S. attorneys informing him about the possibility of late payment with a surcharge until 30 September 2008. the applicant was thus not aware of the imminence of the deadline which was missed. the European representative sent to the U.S. agent several reminders relating to the deadline for payment of the renewal fee for the third year and relating to the possibility of late payment with surcharge. the former U.S. attorney, who had meanwhile left the company, had marked the patent application abandoned and the staff member who took over the case did not see any reason to follow up the final deadline. the non-compliance with the time limit was noticed on 12 November 2008, when the notification of loss of right was received.
On August 10, 2011, the Receiving Section refused the request for re-establishment The
applicant
then
filed
its
appeal.
It the proceedings before the Board the applicant was offered the opportunity to provide some additional information. When doing so, the applicant contradicted its prior arguments to some extent. Small wonder that the Board dismissed the appeal: [3.1] The decision under appeal considered that the reference point for examining the circumstances under which the applicant was expected to exercise all due care was the time limit of R 51(2), i.e. in the present case the final loss of rights that occurred when the renewal fee and the additional fee were not paid by 30 September 2008. The Board shares this view and will thus examine the case on this basis.
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J 16/11 – Indian Wrestling
K’s Law – The ebook
[3.2] Under the provisions of R 136(2), first sentence, the request for re-establishment of rights must state the grounds on which it is based and must set out the facts on which it relies. This means in particular that the request must firstly define the factual context in which the mistake occurred and secondly adduce convincing evidence in support of the alleged cause of non-compliance. [3.3] The Boards of Appeal have consistently ruled that facts pleaded for the first time during the appeal proceedings should not in principle be taken into consideration(see J 18/98 [4], T 257/07 [1.2]). [3.4] In the present case, the board by its communication informed the appellant that the evidence currently on file did not seem convincing enough for the contested decision to be reversed and, exceptionally, gave the appellant an opportunity to improve its case at this late stage of the proceedings. [3.5] However, in its rejoinder the representative of the appellant, instead of filing evidence as suggested by the board, produced a “sworn statement” written by the appellant himself. In this the appellant gave a significantly different version of the facts as compared to what was the case so far and to a large extent in contradiction with the previously described circumstances. [3.6] In this new statement and the accompanying letter of the representative, the appellant abandoned the stance taken hitherto, namely that he instructed his US attorney not to pursue the application because of a lack of commercial perspectives. He also stated – for the first time in the proceedings – that he did not receive from his US representative the reminder dated 18 December 2007 asking for instructions as to the payment of the renewal fee, nor any of the subsequent reminders, so that he had no reason at all to contact his US representative. The reasons for marking the file as abandoned by the US representative were attributed to a “possible misunderstanding”, the details of which were not known. The appellant furthermore indicated different dates relating to his trips to India, namely May and June 2007 and from 14 January to 12 February 2008, but these details were now held to be irrelevant, given that the cause of the error was seen in the fact that the appellant was not informed of any of the deadlines. [3.7] The divergence that exists between the chain of events as explained in the grounds of appeal (and also in the request for re-establishment of rights) on the one hand and the version of the events as explained in the last submissions on the other hand is of such an extent that the board is not in a position to establish which version corresponds to the actual situation which led to the loss of the patent. This immediately raises the question whether the last submissions of the appellant are admissible at all, i.e. whether these facts and evidence are to be examined at all by the board (A 114(2)). [3.8] Given that the new submissions do not complement the already existing facts, but present a new situation, the board holds that these facts and evidence must be disregarded pursuant to A 114(2). These facts clearly do not fulfil the requirements of R 136(2), in that they were not presented in the request for re-establishment of rights. They are also inadmissible pursuant to Article 13(3) RPBA, given that they raise issues which the board cannot be reasonably expected to deal with, such as the questions of due care in the circumstances leading to the alleged misunderstanding between the appellant and his US agents, or the reminders lost between the appellant and his US agents. The board adds that quite apart from the mentioned specific legal provisions under the EPC, bringing completely new and contradicting facts at such a late stage of the proceedings clearly goes against the general duty of fairness and good faith in the proceedings – whether towards the court(here the board) or the other party –, such a general duty being a generally recognised principle of procedural law in the contracting States (A 125). [3.9] First of all, the board notes that once the last sworn statement of the appellant and the accompanying explanations given it its letter of 7 November 2012 […] are completely disregarded – given the scale of the contradictions it brings in the party’s case – it does not improve the appellant’s case. From this it follows that the doubts of the board remain, due to the lack of reliable evidence on file as explained in the communication of the board […]. In this manner the board finds that it remains unproven that the appellant and his agents did take all due care as required by the circumstances. In particular, it remains unproven that the appellant was indeed unable to contact his US agents in order to inform them of his intent to keep the patent. [3.10] Secondly, if the board were to admit formally in the proceedings the last submissions of the appellant, and would accept, for the benefit of the appellant, that all its submissions in fact relate to the same set circumstances, then it would again be bound to conclude that A 122 was not complied with. In the absence of any solid factual basis for the examination of the case, the board can only observe that far from filling the gaps in the account of the facts previously submitted, the last explanations given by the applicant have created a wide discrepancy between the successive versions of these facts so that it has became impossible to determine which (exceptional) circumstances the appellant and/or its representatives had to overcome in order to avoid the loss of rights. As a 404 | 3398
J 16/11 – Indian Wrestling
K’s Law – The ebook
consequence, the Board is unable to determine whether the requirement of “all due care required by the circumstances” was met (emphasis by the Board), simply because the circumstances themselves remain unclear. [3.11] When the factual circumstances surrounding the failure to observe a time limit are not established as in the present case, the board cannot examine who, among the applicant and his representatives, bears the responsibility for the mistake or ascertain where the mistake originated from. In such a situation, it is obviously impossible to determine what the appropriate behaviour should have been in order to avoid the loss of rights. Therefore, the request for re-establishment of rights must fail even if the board were minded to examine the last submission of the appellant on its merits. [3.12] Finally, for the sake of completeness and once more for the benefit of the appellant, if the board were to look away from the fact that the last submission amounts to a completely new case, and were minded to take into consideration solely the last version of the events given by the appellant in his sworn statement and the accompanying letter of the representative, the Board would not come to a different conclusion on the appeal. Briefly, according to this last version of events the appellant had no personal action to undertake but relied on his US patent attorney who bore the responsibility for paying the renewal fee together with the European patent attorney. The file contains evidence as to the fact that the European patent attorney sent the appropriate reminders regularly and on time. The question that arises at that point would be why the US patent attorney did not pay the fee in due time on behalf of his client or send him reminder(s), or why none of these reminders were received. This question cannot be answered with a minimum degree of certainty, essentially because it was not part of the debate in the greater part of the proceedings. These focused instead on the notion that it was the applicant who had decided to let the application lapse and changed his mind later, after he had found new business perspectives. Thus in the absence of any reliable and credible explanation, the board can only come to the conclusion that there is no apparent reason which could possibly excuse the non-observance of the time limit. Given the fact that the appellant did not attend the oral proceedings, these questions could also not be answered during the oral proceedings. [3.13] Since the appellant has not convincingly shown that he took all due care required by the circumstances the application for re-establishment of rights was rightly rejected. […] The appeal is dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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J 28/10 – The Doorman
K’s Law – The ebook
J 28/10 – The Doorman 7 Jun 2013
In this case the applicant did not reply in due time to a communication pursuant to A 94(3). A notification of loss of rights was issued on December 21, 2009. This triggered a time limit for further processing: 21/12/09 + 10d (R 126(2)) = 31/12/09 + 2m (R 135(1); R 131(4)) = 28/2/10 (Sunday) → 1/3/10 (R 134(1)) The representative filed a request for further processing on March 3, 2010; the corresponding fee was paid and the response to the communication filed. On March 22, the EPO informed the applicant that the request had not been filed in due time because the time limit had expired on March 1, 2010. As there was no response, the EPO issued a decision that the request for further processing was deemed not to have been filed, that the application was deemed to be withdrawn with effect from November 24, 2009, and that all fees paid after November 23, 2009 would be refunded once the decision became final. The applicant filed an appeal and submitted that the communication of March 22 was never received by the office of the appellant’s representative who thus has never had the opportunity to reply to the communication. The appellant’s representative gave further details as to the process in practice at his office concerning incoming mail as follows:
The representative’s office was located in a large building in a business-park. Incoming mail for the law firm was not delivered to the office door of the law firm but left at the doorman’s desk located at the entrance of the building. For the case of certified letters, the postman provided a list of them to the doorman and, “depending on the practice of the day”, either the doorman signed said list confirming the reception, or a secretary of the firm fetched the mail from the doorman. In any case the representative’s office never got a copy of the list for cross-checking purposes.
It could happen that the above process lead to letters being distributed to the wrong recipients. It could therefore not be excluded that a certified letter addressed to the representative’s law firm was received at the doorman’s desk, signed by him and then passed to the wrong recipient.
The Board dismissed the appeal: [2] The issue raised by the appeal is that of the proof of reception of a communication from the EPO by an addressee with regard to the requirements specified in R 126 (2). [3] In the present case the communication of the Formalities Officer acting on behalf of the Examining Division (ED) informing the appellant’s representative that the request for further processing has not been filed in due time bears the date of 22 March 2010. This communication was sent by registered letter. According to R 126(2) this communication is deemed to have been delivered to the addressee on the tenth day following its posting, unless the letter failed to reach the addressee or reached him at a later date. In the event of any dispute, it is incumbent on the EPO to establish that the letter reached its destination. In any case, the probative value of the evidence provided by the EPO should, if necessary, be balanced against the probative value of submissions and evidence by the appellant (applicant). [3.1] As submitted by the appellant’s representative, a specific system for the reception of registered letters was implemented and accepted by the representative. This system involved the delivery of registered letters to the desk of the doorman of the business-park building in which the representative has his office.
406 | 3398
J 28/10 – The Doorman
K’s Law – The ebook
The doorman is the employee of a security company, this company having a contractual relation with the company that administrates the business-park where the representative rents office space. These letters are subsequently distributed either by the doorman or fetched by a secretary from the representative’s office. [3.2] It results from the postal investigation carried out by the EPO before issuing the appealed decision that the communication of 22 March 2010 was delivered on 23 March 2010 and that the confirmation of receipt was signed by an identified recipient, i.e. Mr. Bodo T. The same recipient is again mentioned on the advice of delivery of 8 July 2010 which concerns the notification of the appealed decision. This leads to the conclusion that a letter which is delivered to Mr. T. should be deemed delivered by the postman to an authorized recipient, acting within the mail reception process implemented at the representative’s office and accepted by him. [4] The processing of outgoing and incoming postal or electronic mail is a key point in the organization of a law office. It is a vital component of any office system that has to deal with time-limits that have legal consequences. [4.1] It is an established fact that the appellant’s representative was fully aware of and accepted the system for the reception and distribution of postal mail in place at the business-park in which it rented office space. The questions for consideration are, first, whether the above described system for the reception of postal mail is to be considered as a system falling under the organisational arrangements put in place, accepted and authorised by the representative, and second, whether this system enables the representative to know if mail has been received (see T 1535/10 [1.5.2]). [4.2] It is not contested by the appellant’s representative that a third party, i.e. an employee of a security company hired by the park administration receives and accepts registered letters from the post administration on behalf of the representative’s law office, even without any explicit authorisation to that effect. By the course of conduct of renting office space subject to this system of postal receipt, the representative has implicitly consented to such an arrangement. Furthermore, it was confirmed that no special procedures are in place with regard to the forwarding of these letters to an employee of the representative or to the representative himself. Apart from mere considerations of the distance of the representative’s office from the doorman’s desk, there was no specific hindrance preventing the representative or any of its employees from having knowledge of incoming postal mail. It therefore has to be concluded that the representative was fully aware of the details and functioning of this system of reception and distribution of postal mail, including any risk associated with this system. By using a service external to his office for receiving and dispatching postal mail as explained above, the representative accepted that this external service would be treated as if it were his own in matters relating to the delivery of communications subject to deadlines. [5] In the Board’s opinion the situation of the present case is different to the one dealt with in decisions J 9/05 and J 18/05. In these cases the only evidence provided by the ED was a letter from the Deutsche Post referring to the information received from the foreign postal service, according to which the letter was delivered to an authorised recipient, who, however, was not specified. Thus, there was no evidence that the registered letter was delivered to an authorized recipient and it was even not possible to determine to which recipient the letter was notified since the information retrieved from the postal services lacked detail and was extremely vague. [6] It follows from the above that the communication of 22 March 2010 shall be deemed as delivered to the addressee on the tenth day following its posting (R 126(2)) without any response being given by the appellant’s representative in due time. Hence, the Board judges that there is no reason to deviate from the decision under appeal. […] The appeal is dismissed. Should you wish to download the whole decision, just click here.
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J 28/10 – The Doorman
K’s Law – The ebook
The file wrapper can be found here.
408 | 3398
J 10/11 – File In A Cupboard
K’s Law – The ebook
J 10/11 – File In A Cupboard 6 Jun 2013
In this decision the Legal Board dealt with a refusal of an Examining Division (ED) to refund a fee paid for further processing. On April 14, 2008, the ED had issued a Communication pursuant to A 94(3) and invited the applicant to respond within a period of six months (i.e. on or before October 24, 2008). Because of an internal coding error, the ED issued a communication noting a loss of rights on September 25, 2008. Upon request of the applicant, the ED cancelled this communication. On October 24, 2008, the appellant requested an extension of the six-month period by two months. This request was refused on November 5 on the ground that the request did not give sufficient reasons. On November 28, 2008, a communication noting a loss of rights was issued. The applicant requested further processing on December 3, 2008, as well as a refund of the corresponding fee. It expressed the opinion that the request should have been granted, in view of the special circumstances (first erroneous noting of loss of rights). When the ED refused this refund, the applicant filed an appeal. The Legal Board found the appeal to be inadmissible. The legal framework [2.1] One of the conditions of admissibility of the appeal is that the statement of grounds of appeal satisfies the provisions of A 108, third sentence, and R 99(2). Otherwise, the appeal must be rejected as inadmissible under R 101(1). According to A 108, third sentence, “[w]ithin four months of notification of the decision, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations.” Pursuant to R 99(2), “[i]n the statement of grounds of appeal the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based.” If the appellant submits that the decision under appeal is incorrect, then the statement setting out the grounds of appeal must enable the board to understand immediately why the decision is alleged to be incorrect and on what facts the appellant bases its arguments, without first having to make investigations of its own (cf. T 220/83 [4] and T 177/97 [1]; affirmed by numerous decisions, and in particular recently by T 573/09 [1.1]). Whether the requirements of A 108, third sentence, in conjunction with R 99(2) are met has to be decided on the basis of the statement of grounds of appeal and of the reasons given in the contested decision (see, e.g., J 22/86 [2]; T 162/97 [1.1.2]). Exceptionally, it has been acknowledged that “the requirement for admissibility [laid down in A 108, third sentence, EPC 1973] may be regarded as satisfied if it is immediately apparent upon reading the decision under appeal and the written statement [of grounds] that the decision should be set aside” (see J 22/86 [headnote I]). The reasons given in the decision impugned [2.2] In order to determine whether it is possible for the board to understand immediately why the decision by the ED rejecting a refund of the fee for further processing is alleged to be incorrect and should therefore be set aside, the board notes that the ED provided the following reasons for its confirmation of the refusal of the appellant’s request for extension of the six-month period: (i) No reasons were given in that request why exceptionally an extension should be allowed. 409 | 3398
J 10/11 – File In A Cupboard
K’s Law – The ebook
(ii) The EPO’s unintentional erroneous first noting of loss of rights could not be regarded as exceptional circumstances justifying such extension. This is because the appellant had been afforded a period of six months for filing a response to the examination report. The appellant’s representative should have known that, in accordance with point 1.6 of Part E, Chapter VIII of the EPO Guidelines, sufficient grounds had to be given for a request for extension of time, acceptance of which would lead to a total period set exceeding six months. The ED concluded from the above reasons that the request for reimbursement of the fee for further processing had to be rejected. The content of the statement of grounds Re reason (i) [2.3.1] In the statement of grounds, the appellant did not allege that it had filed any reasons together with its request for extension according to which such extension should exceptionally be allowed. Re reason (ii) above [2.3.2] The ED […] found that “the unintentional mistake made by the EPO [i.e. the first noting of loss of rights having been issued in consequence of the erroneous coding of a four month time-limit ] … can not [sic] be regarded as exceptional circumstances” (making a reply in the six-month period impossible). The appellant, in the brief statement of grounds comprising little more than one page, has not made it clear why this finding is allegedly incorrect. In the fourth paragraph of the statement of grounds, referring to the above-quoted portion of the decision impugned, the appellant argued as follows: “This statement is clearly erroneous as most time limits are entered correctly into the EPO computer system”. The appellant thus asserted that there were exceptional circumstances being the erroneous coding of the six-month time limit as a four-month period that caused the first noting of loss of rights that was later cancelled. In this context the appellant also mentioned that it took a reminder to make the EPO act more than two years from its mistakes. Both facts ran counter to its legitimate expectations. However, the appellant has made no submissions as to why those allegedly exceptional circumstances made it impossible for the appellant to file a timely reply, i.e. what was the causal relationship between the reasons given in the statement of grounds of appeal and the asserted invalidity of the findings of the decision impugned. Such submissions would have been necessary because a causal relationship is not obvious in the present case. The ED’s communication of 14 April 2008 unambiguously invited the appellant to reply within a period of six months that expired on 24 October 2008, i.e. the date when the appellant filed its request for extension that included no reasons. It is not clear what impact the erroneous loss-of-rights communication by the EPO of 25 September 2008 according to which the time limit had expired two months earlier (than 24 October 2008) could have had on the appellant’s ability to reply within the six-month period. This is even less so as it had been the appellant itself that had spotted the error and informed the EPO thereof by its letter dated 10 October 2008, further to which the EPO, on 15 October 2008, cancelled the noting of loss of rights. In the letter of 10 October 2008 the appellant expressly referred to the “due date of October 24 next”. An alleged or apparent relationship (connection) between the grounds of appeal and the findings of the decision impugned, however, would have been required. Otherwise the board is not in a position to understand immediately why the decision is alleged to be incorrect as required by the case law set out above […]. If no causal relationship in the above sense were required, then any submission, even if not having any connection with the reasons on which the decision impugned is based, would be acceptable. This would render the provisions of A 108, sentence 3, moot. It is true that, taking into account that the furnishing of a statement of grounds is a condition of the admissibility of the appeal and not of its being well-founded, the grounds do not have to be conclusive in themselves, i.e. justify the setting aside of the decision impugned. The grounds must however enable the board to assess whether or not the decision is incorrect. Re reason related to the term “under the circumstances” [2.3.3] For the first time in the oral proceedings (OPs) the appellant claimed that the portion of the grounds reading that the
410 | 3398
J 10/11 – File In A Cupboard
K’s Law – The ebook
Applicant and the undersigned [its representative] were in good faith under the impression that an extension of two months would be available under the circumstances (emphasis added) explained why the decision under appeal was incorrect. The appellant argued that this portion expressed the legitimate expectation to the effect that any first extension of a time limit set for filing observations to a communication pursuant to A 94(3) would be granted. During years of practice a first extension of such time limit had always been granted, even in case of an initial time-limit of six months and notwithstanding the wording of the pertinent part of the EPO Guidelines. However, the board is unable to attribute such a content to the text of the one sentence quoted above, which gives no specific indications as to the nature of the “circumstances” and immediately follows the paragraph referring to the erroneous initial coding of the time limit by the EPO. Nor can any indication to this effect be derived from the remainder of the statement of grounds, which nowhere refers to any constant EPO practice to grant a first extension of a six-month time limit in the absence of any reasons given to this end. [2.4] Whether it is immediately apparent that the decision cannot be upheld The board cannot discern that this is an exceptional case in the sense of the last paragraph of point [2.1] above. It is not immediately apparent upon reading the decision under appeal and the written statement of grounds that the decision should be set aside. The erroneous loss-of-rights communication [2.4.1] In the decision under appeal, the ED […] referred to the appellant’s letter of 3 December 2008 in which the appellant explained that there was not sufficient time to file a response due to a mistake made by the EPO, i.e. the noting of a loss of rights in error. In that one-page letter […] the appellant’s representative argued that he only received the EPO’s letter cancelling the (first) noting of loss of rights on 20 October 2008 and “needed more time than four days to handle this file” (emphasis added). The board is unable to understand this explanation. There is nothing on file suggesting that the representative was unaware at any point in time that he had a period of six months, and not four days, “to handle this file”. On the contrary, as referred to […] above, in its response of 10 October 2008 to the erroneous loss-of-rights communication the appellant itself expressly referred to the “due date of 24 October next” and asked for cancellation of the communication. This makes it crystal clear that the appellant was aware of the six-month time limit and that the loss-of-rights communication had no impact on the appellant’s ability or inability to respond within the time limit set. But even if the appellant’s explanations in this regard made subsequent to the statement of grounds of 15 July 2011 in its letter of 8 May 2012 could be taken into account, the board would still be unable to detect any respective serious mistake in the first-instance proceedings. In that letter the appellant’s representative argued that, under the standard work flow in a firm of patent attorneys, the patent attorney took up the file of an overseas applicant again as soon as the time limit for reply to a communication by the EPO approached. If no instructions were received from the applicant, the patent attorney drafted a reply for the applicant’s approval, if possible. Otherwise, the patent attorney requested further information from the applicant and an extension of time of two months from the EPO. As to the present case, the representative stated that it was only after the communication of 25 September 2008 noting a loss of rights (“After this had been redressed …” […]) had been cancelled with a letter of 15 October 2008 received on 20 October 2008 that he started studying the case (and concluded that further information was needed from the applicant). However, as the board had said at point 5 in its communication annexed to the summons to OPs of 20 September 2012, … it is the rationale of allowing a longer than four-month original time limit expressed in the Guidelines at point 1.2 that it must be “clear that in the circumstances a four-month time limit cannot be adhered to. … a six-month time limit might be justified if for example the subjectmatter of the application … or the objections raised are exceptionally complicated.” This means that the representative is afforded two more months for dedicating time to working on the case and not for leaving the file in the cupboard and waiting until the time limit “approaches” to then contact the applicant if necessary. (Emphasis added) With respect to the appellant’s request that the board withdraw the reasoning “under 5 of the preliminary opinion”, the board notes that there is no legal basis for a board of appeal to withdraw statements of fact or conclusions of law of the kind made provisionally under point 5 of the communication annexed to the summons. 411 | 3398
J 10/11 – File In A Cupboard
K’s Law – The ebook
The above-quoted statement by the board, being the gist of point 5 of that communication, is a general one and cannot be considered as suggesting that in the case under appeal no contact between the representative and the applicant had taken place at earlier stages of the prosecution of the present application. The board repeats that the appellant had six months and not four days “to handle this file”. Hence the board could not detect any obvious serious mistake as far as the period allowed for the appellant to respond to the communication of 14 April 2008, on which the ED’s communications were based, is concerned. Delay in issuing the decision impugned [2.4.2] The appellant also relied on the fact that the EPO issued its decision only subsequent to a reminder after more than two years’ time. However, this cannot have any bearing on the question of whether the content of the decision was influenced by an obvious procedural mistake. Conclusion [2.5] In the light of the foregoing considerations, the board has arrived at the conclusion that the statement of grounds of appeal does not comply with the provisions of A 108 and R 99(2). It follows that the appeal must be rejected as inadmissible under A 101(1). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
412 | 3398
R 15/12 – Error Of Logic
K’s Law – The ebook
R 15/12 – Error Of Logic 5 Jun 2013
This petition for review was filed after Board 3.2.04 had revoked the opposed patent (claiming a dry-cooking fryer) in decision T 1572/11. I found the discussion of “adverse effect 2” instructive: *** Translation of the French original *** [3] The letters of the petitioner […] as well as its declarations made during the oral proceedings (OPs) before the Enlarged Board (EBA) make clear that, although the petitioner considers that the ‘adverse effect 1’ as such would justify setting aside the decision, its main complaint is directed at the alleged incoherence between the decisions of the Technical Board in regard of the main request and the third auxiliary request. Even if one or the other could possibly be justified (which the petitioner contested), they could not both be. […] [9] According to the petitioner, the reasons invoked by the Board for dismissing the third request for lack of novelty are not consistent with the reasons for dismissing the main request. Consequently, one of these requests has to be admissible. It was only when reading the written decision that the petitioner could realise and understand that it had lost an opportunity to defend its case. [10] As far as ‘adverse effect 2’ is concerned, the EBA can accept that it complies with R 106. [11] Notwithstanding its assertions, the petitioner tries to challenge the correctness (bien-fondé) of the decision. Incidentally, this can be seen from the petition where the petitioner states that: “the decision of the Board of appeal is affected by another substantial procedural violation because the written decision contains a clear logical fallacy …” […] “Moreover, the Board attributes two distinct functions to the same technical means within a few pages of the decision …” […] “This blatant contradiction affects the very heart of the decision, which suffers from a substantial procedural violation within the meaning of A 113, because the reasoning that led the Board to declare claim 1 of the patent as granted to lack novelty would have had to lead it to find claim 1 of the third auxiliary request to be novel, or vice versa.” (emphasis by the Board) [12] Although the petitioner tries to establish that what it considers to be a contradiction is a violation of its right to be heard within the meaning of A 113(1) […], its complaint really boils down to finding the decision to be erroneous (either in regard of the main request or in regard of the third auxiliary request). In this context it has to be noted that the arguments related to novelty have been dealt with in detail during the written proceedings and the OPs, as well as in the reasons given by the Board […]. Moreover, the novelty of the claimed subject-matter has to be examined for each request. When doing so, it is sufficient [for the claim to be found to lack novelty] that one interpretation of the prior art destroys the novelty of the subject-matter under consideration, even if the interpretation is prima facie different in both cases. […] [13] As far as […] ‘adverse effect 2’ is concerned, the petition for review is clearly unallowable. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
413 | 3398
T 783/10 – Excellent
K’s Law – The ebook
T 783/10 – Excellent 4 Jun 2013
In this appeal the Board examined the inventive step of claim 1 of the main request, which read: 1. Use of an oil-soluble dimercaptothiadiazole compound or derivative thereof as a copper corrosion inhibitor in a tractor hydraulic fluid when in contact with a copper-containing metal wherein the oil-soluble dimercaptothiadiazole compound or derivative thereof is employed in an amount of from 0.01 to 0.2 weight percent, based on the weight of the tractor hydraulic fluid, to protect the copper-containing metal against loss of copper when the tractor hydraulic fluid contains at least 0.25 weight percent water, and wherein the oil-soluble dimercaptothiadiazole compound or derivative thereof has the formula
wherein R1 and R2 are hydrogen or hydrocarbyl, n is 0 or 1, x is 1 or 2, y is 1 or 2 and z is 1 or 2. The Board found document D7 to be the closest prior art and then pursued: [3.3] As the next step according to the problem-solution approach, it is necessary to determine the problem which the claimed invention addresses and successfully solves in the light of the closest prior art. [3.3.1] The [patent proprietor] defined the problem to be solved in view of document D7 as lying in the provision of a tractor hydraulic fluid with excellent protection against the loss of copper in the presence of at least 0.25 weight percent of water. [3.3.2] The board regards this definition of the problem to be unclear, since the term “excellent” could be interpreted in a relative or absolute sense. Indeed, during the course of the proceedings the [patent proprietor] employed this term in each of these senses. Thus, on the one hand, in the patent in suit, the following is stated ([…], emphasis added): “It has now been discovered that when an oil-soluble dimercaptothiadiazole compound or derivative thereof is employed in functional fluids that contain water, copper containing metals in contact with the functional fluid are protected from copper loss. This discovery was quite surprising since other compounds known to be copper passivators or copper corrosion inhibitors do not perform nearly as well as the dimercaptothiadiazole compounds or derivatives thereof of this invention.” Moreover, the patent in suit designates the results pertaining to “Nalco VX 2326” as being a comparative example […], and the [patent proprietor] also argued in written appeal proceedings that this was to be seen as a fair comparison in the sense of decision T 197/86 […]. On the other hand, the [patent proprietor] argued with reference to […] document D29, that the results obtained for the present DMTD derivatives in the JDQ 84 test were below an “absolute” threshold value of 53 ppm disclosed therein, and should therefore be regarded as being “excellent”.
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T 783/10 – Excellent
K’s Law – The ebook
Before each of these uses of the term “excellent” are discussed in more detail below, in points [3.3.4] and [3.3.5], the experimental results relied on by the parties will be outlined under point [3.3.3]. [3.3.3] The following table summarises the data provided for additives according to present formula (I). In all these examples, n is 0, and x and y are 2.
In addition, data was provided for further copper corrosion inhibitors, which is summarised in the following table […].
The data reproduced above were obtained in the JDQ 84 test, according to which a hydraulic pump is operated with a functional fluid contaminated with 1% water, and flow rates and copper levels measured at specified intervals […]. For the sake of completeness, the board wishes to note that, in the patent in suit, the remaining components of the formulations used in the examples are identified in terms of function rather than precise structure […]. Consequently, although indicated as being “formulated according to the formulation of Example 1 of the patent”, the compositions used by the [opponent] in Annexes J, K and I are likely to differ from those employed in the patent in suit in more respects than only the copper corrosion inhibitor. This may explain the different results obtained by the [patent proprietor] and the [opponent] for the compound wherein R 1/R2 are C18. Similarly, under point 17 of its statement of grounds of appeal, the [patent proprietor] indicated that the formulations used in Annexes F and G differed with respect to several components from those used in the patent in suit. 415 | 3398
T 783/10 – Excellent
K’s Law – The ebook
Consequently, it must be concluded that entries may only be reliably compared within the three sets of data (i.e. that provided in the patent in suit, and by the [patent proprietor] and [opponent], respectively). [3.3.4] In so far as “excellent protection against the loss of copper” implies an improvement over the closest prior art […], the board is not convinced that the data outlined under point [3.3.3] provide adequate experimental support that this has successfully been achieved. It is the established case law of the boards of appeal that, in order to be relevant, comparative tests have to meet certain criteria. These include the proper choice of the structurally closest comparative compound to be taken from the closest state of the art (T 181/82 [5]). As outlined above […], document D7 relates to the field of tractor fluids and specifically discloses corresponding functional fluids in Table II comprising a DMTD additive, namely, “DMTD/formaldehyde/heptyl phenol”. Such an additive would clearly have greater structural resemblance to those claimed than the benzotriazole additives reproduced above in the second table of point [3.3.3]. The [patent proprietor] asserted that the exact structure of said DMTD derivative was unclear, but did not provide any evidence that the skilled person would not be able to obtain this product based on the information provided in […] document D7, in combination with common general knowledge, if required. Therefore, in the absence of any evidence to the contrary, the board regards the examples of document D7 to represent an appropriate starting point for assessing inventive step. However, no comparative tests were provided with respect to these examples. It is additionally noted that document D7 specifically discloses further DMTD-based metal passivator components B-5, as outlined above in point [3.2] (cf. formula (XXIV), R’ = isopropyl, hexyl, decyl). The [patent proprietor] argued in this context that there was no example in document D7 of specific functional fluids containing these compounds. However, it is noted that present claim 1 is also completely open as to the nature of the further components in the tractor hydraulic fluid. There was therefore nothing to prevent the [patent proprietor] from designing comparative tests within the meaning of decision T 197/86, such as to demonstrate that any effect had its origin in the distinguishing feature of the invention. In any case, Comparative Example A provided in the patent in suit is not considered to be pertinent since the compound identified above as “Nalco VX 2326” is neither specifically disclosed in document D7, nor does it accurately reflect the disclosure therein with respect to the structurally closest DMTD-based corrosion inhibitors, as explained in the previous two paragraphs. This comparative example cannot therefore be used to support any improvement with respect to the closest prior art. Finally, the additional data submitted by the [opponent] demonstrate that compounds falling within present formula (I) are no more effective than the metal passivator according to document D7, tolytriazole […]. Consequently, the data provided, as summarised under point [3.3.3], cannot support the superiority of the additives according to present formula (I) with respect to the closest prior art. [3.3.5] In a second line of argument, the [patent proprietor] submitted that “excellent protection against the loss of copper” should be seen as defining a result lying below a particular threshold value in the JDQ 84 test […]. However, in this case, the concept of “excellence” can have no other purpose than as a criterion for assessing the suitability of an additive for use as a corrosion inhibitor in a tractor hydraulic fluid contaminated with water. The [patent proprietor] cited document D29 as disclosing that copper levels of 53 ppm are “not uncommon for a good fluid in this test”. However, this statement is made within the specific context of comparative tests between borated and non-borated calcium sulfonate additives. It cannot be concluded therefrom that values below the level of 53 ppm are by definition “unexpectedly good” regardless of context. Therefore, the board considers that the inclusion of “excellence” as an absolute concept in the definition of the problem is redundant and, as such, can only lead to confusion as to its meaning. [3.3.6] Consequently, the problem as defined above by the [patent proprietor] […] requires reformulation. In the light of document D7 and in view of the fact that the present claims relate to a use rather than a composition, the problem to be solved can be defined as lying in the provision of an alternative method for protecting tractor hydraulic fluids against copper corrosion. The solution as defined in claim 1 relates to the use of a DMTD derivative of formula (I) in an amount of from 0.01 to 0.2 weight percent in the presence of at least 0.25 weight percent water. 416 | 3398
T 783/10 – Excellent
K’s Law – The ebook
Having regard to the data reproduced above in the first table of point 3.3.3, the board is satisfied that this problem has been solved. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1682/09 – A Prior Public Lease
K’s Law – The ebook
T 1682/09 – A Prior Public Lease 3 Jun 2013
What about another decision on an alleged prior public use? The claims under consideration were directed at a weighing and packing system. [3.1] The [opponent’s] allegation of public prior use V1 relates to an assembly of the weighing system Multipond Wägeautomat MP 1401-B, Nr. M 695 of the associated companies Multipond and Atoma and of the packing system SBM VBMS 250, Nr. 4908 of the company Aquarius […]. The assembly was allegedly delivered on 30 May 1994 […] and mounted on 9 August 1994 […] at the premises of the company Sonnentau Gebr. Winkelmann KG (Visselhövede, Niedersachsen, Germany). In its decision the Opposition Division (OD) found that the pieces of evidence V1 […] submitted by the [opponent] in support of its allegation of prior use and the results of the hearing of the witnesses F. Hofer and M. Hormann […] were sufficient to prove the relevant facts of the alleged public prior use and that the mentioned assembly comprised all but one of the features of the weighing and packing system defined in claim 1 of the then auxiliary request (and now the only claim request before the Board). The only missing claimed feature related to the weighing driving section and the weighing control means being mutually connected through a LAN, the corresponding connection in the assembly of prior use V1 being implemented by means of a VME bus […].
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T 1682/09 – A Prior Public Lease
K’s Law – The ebook
3.2 The [patent proprietor] has contested the OD’s conclusion that the alleged prior use V1 has been sufficiently proven. In particular, the [patent proprietor] has submitted that there is no independent evidence corroborating the alleged facts, that the [opponent] has failed to submit a copy of the original of the instruction manual of the assembly, and that the prior use was based on a leasing agreement and not on the selling of the system. [3.2.1] In the present case all the written evidence relating to prior use V1 […] originates from the [opponent] (Multipond Wägetechnik GmbH), i.e. one of the companies involved in the alleged prior use, and the witnesses that were heard by the OD were also employees of the [opponent]. The evidence relied upon by the OD is therefore based exclusively on evidence originating from the [opponent] itself and, as submitted by the [patent proprietor], there is no independent corroborating evidence on file of the pertinent facts of the alleged prior use. However, while corroborating evidence from an independent source can certainly constitute strong evidence in support of an allegation of prior use, the mere absence of such independent evidence does not constitute a sufficient reason for dismissing an allegation of prior use. The [patent proprietor] referred in this respect to the case considered in decision T 1210/05 [2.5.4, 2.5.5, 2.6 and 2.8] in which the evidence submitted in support of an alleged prior disclosure was considered, in the absence of independent evidence, not sufficient to conclude that the disclosure constituted prior art. In the circumstances of the case underlying the mentioned decision, however, the allegation relating to the relevant technical content of the prior disclosure was based on a copy of a poster allegedly displayed in a congress (point [2.2]) and, for the rest, exclusively on the testimony of the person who allegedly displayed the poster (points [2.5.3-5]). In contrast, in the present case the alleged prior use is based on a series of pieces of documentary evidence S1 to S34 including copies of invoices and confirmation orders, delivery records, assembly reports, documents countersigned by the customers, constructional drawings, etc. which already substantiate the alleged facts, and the declarations of the witnesses merely confirm or corroborate in the OD’s view the relevant facts shown in the documentary evidence. In addition, the [patent proprietor] has failed to identify, among the allegations accepted by the OD as having been proven, any specific relevant fact that would only have found support on the witnesses’ declarations. The circumstances of the case in decision T 1210/05 are therefore different from, and not comparable with those of the present case. The [patent proprietor] has also made reference to the comments of decision T 1210/05 [2.5.8] relating to the capacity of a witness to recollect past events. It is, however, noted that these comments were made in the context of an assessment which, unlike in the present case, depended critically on the probative value of the witness’ declaration (points [2.2, 2.5.1 and 2.5.5]). They are therefore not readily applicable to the present case, at least not to the extent of justifying disregarding the witnesses’ declarations which, as submitted by the [opponent], were not only based on their own recollection of the events, but also on personal logs and installation notes made at that time and shown to the OD during the hearing of the witnesses. [3.2.2] As regards the [patent proprietor’s] submissions that no copy of the instruction manual of the assembly has been filed as evidence by the [opponent], the Board notes that the documentary evidence V1 contains, in addition to constructional drawings […], also copies of brochures and excerpts specifying the technical characteristics of the delivered system […] and that the mere absence of a copy of the instruction manual, or the like, originally handed over to the company Sonnentau – which went bankrupt in the meantime – is not detrimental to the probative value of the evidence on file. [3.2.3] The [patent proprietor] has also pointed out that the public character of the alleged prior use V1 has not been proven because the assembly was not sold, but only leased to the company Sonnentau […]. Nonetheless, according to the established case law the selling of an apparatus is, in the absence of any special circumstance, sufficient to render the apparatus sold available to the public. The Board does not see in what respect the mere fact that the assembly under consideration was leased and not sold may affect, in the circumstances of the present case, the public availability of the assembly. In particular, as the assembly was only leased, it was not owned by the company Sonnentau, but this circumstance did not appear to impose restrictions to the public availability of the features of the assembly; more particularly, the prior use involved the mounting of the assembly at the premises of the company Sonnentau and also – as submitted by the [opponent] – the subsequent conventional start-up, training and maintenance procedures of the assembly at the same premises. Thus, the features of the assembly were rendered available to the company Sonnentau which, in the absence of any special reason for concluding otherwise, constituted at that time a member of the public. In addition, in view of the documentary evidence and the witnesses’ declarations, no secrecy agreement was to be expected in the circumstances of the case, and the [patent proprietor] has failed to identify any special circumstance surrounding the prior use that would indicate that the assembly could have been leased under some form of express or implied confidentiality.
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T 1682/09 – A Prior Public Lease
K’s Law – The ebook
[3.3] The [patent proprietor] has also submitted that the alleged prior use originates from the [opponent] itself and that for this reason the burden of proof to be applied in the assessment of the alleged prior use is beyond any reasonable doubt or “up-to-the-hilt”. However, apart from the specific submissions already addressed in the previous paragraphs and considered not persuasive by the Board, the [patent proprietor] has failed to identify any particular deficiency in the reasoning of the OD – such as gaps in the line of argument developed by the OD, or inconsistencies in the available evidence, or contradictions between the written evidence and the witnesses’ declarations – that would be at variance with the standard of proof referred to above. In addition, in the Board’s opinion there is no manifest ground for challenging the reasoning and the conclusion of the OD in respect of prior use V1. [3.4] Having regard to the above, the Board sees no reason for overturning the OD’s finding that the relevant facts of the alleged public prior use V1 have been sufficiently proven. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2336/10 – Don’t Agonize, Organize
K’s Law – The ebook
T 2336/10 – Don’t Agonize, Organize 31 Mai 2013
In this case the Board dealt with a request for re-establishment into the time limit for filing a statement of ground of appeal. The representative and his contact at the opponent company, Mr Z., usually communicated by e-mail. The decision to maintain the opposed patent in amended form was issued on September 15, 2010. The time limits for filing an appeal and the statement of grounds of appeal were noted and checked by two paralegals. The representative informed the opponent of the notification of the decision. Mr. Z answered that that unless instructions to the contrary were issued by November 15, 2010, it was to be assumed that no appeal should be filed. The representative instructed his assistant, Mrs R., that no action should be taken in the absence of instructions from Mr Z. Mrs R. entered a corresponding annotation into the computerized time limit monitoring system. On November 11, 2010, an employee of the opponent (not Mr Z.) sent an e-mail containing relevant technical information about the case. The representative informed the opponent by e-mail of 15 November 2010 that the information received was technically relevant and stated that unless instructions to the contrary were received from the opponent an appeal should be filed. Mrs R. then amended the annotation concerning the time limit for filing the notice of appeal so that it provided for the filing of an appeal on November 23, 2010, unless instructions to the contrary were received from Mr Z. However, she failed to alter the annotation concerning the time limit for filing the statement of grounds of appeal. On November 23, 2010, the notice of appeal was filed and the appeal fee paid. The corresponding time limit was cancelled by Mr S., who works in the Chief Clerk's Office of the representatives. 421 | 3398
T 2336/10 – Don’t Agonize, Organize
K’s Law – The ebook
Later, when sorting through the time limits, Mrs R. relied on the annotation concerning the time limit for filing the statement of grounds of appeal and assumed that if the case was to be proceeded with there would be an email to that effect from Mr Z. She therefore searched for such an e-mail from Mr Z. but could not find any e-mail with instructions to file a statement of grounds of appeal. She did not find the e-mail of November 11, 2010, because it is not normal for individual members of the opponent association to have direct contact with the opponent's representatives. She therefore assumed that in accordance with the instructions contained in Mr Z.'s e-mail of 27 October 2010 the opponent did not wish to pursue the proceedings any further. On 24 January 2011, when Mr S. asked Mrs R. about the time limit that was due to expire the following day, she again went through all e-mails from Mr Z. and informed Mr S. that there were no e-mails with the corresponding instructions from Mr Z. Mr S. then checked the representative's central register of e-mails and likewise failed to find an e-mail from Mr Z. with the corresponding instructions. On 25 January 2011 he therefore deleted the time limit for filing the statement of grounds of appeal. So no statement of grounds of appeal was filed in due time. Will the Board grant re-establishment? [4] An applicant for re-establishment of rights must, according to the wording of A 122(1), demonstrate that “all due care required by the circumstances” was taken. The duty to exercise all due care applies first and foremost to the applicant for re-establishment and then, by virtue of the delegation implicit in his appointment, to the professional representative authorized to represent the applicant before the EPO: J 3/93 [2.1]. [5] Where a loss of rights results from some error in a party’s failure to implement its intention to comply with a time limit, it is sufficient to show that the failure is due to exceptional circumstances or that it results from an isolated mistake within a normally satisfactory monitoring system: see Case Law, 6th edition, 2010, section VI.E.7.3.1, final paragraph. [6] The appellant’s representative has sought to demonstrate that his firm operates a normally satisfactory system for monitoring time limits and that the failure to file a statement of grounds of appeal by 25 January 2011 in the present case was due to an isolated mistake. [7] The explanations provided by the appellant’s representative are not, however, convincing. The failure to file a statement of grounds of appeal does not seem to have been due to an isolated mistake but rather to a basic error in the system used by the appellant’s representative for monitoring time limits; that error lies in the failure to distinguish between, and treat differently, the two time limits referred to in A 108. The difference between those two time limits is, however, obvious and of great significance. The two-month time limit laid down in the first sentence of A 108 concerns the filing of a notice of appeal. The decision as to whether to file a notice of appeal normally calls for a certain amount of reflection. The potential appellant and his representative, if he has one, will have to weigh up the prospects of success, the likely expense and the possible availability of alternative strategies. The four-month time limit laid down in the third sentence of A 108 concerns the filing of a statement of grounds of appeal, which is an entirely different matter. Once a notice of appeal has been filed, and the appeal fee paid, within the two-month time limit, the necessity of filing a statement of grounds of appeal within the four-month time limit is self-evident. Neither the appellant nor his representative need agonize or reflect deeply about whether to go through with that procedural step. It is something that in the normal course of events has to be done. In exceptional circumstances the appellant may of course decide to withdraw the appeal without filing a statement of grounds of appeal and before the time limit for doing so has expired, thus qualifying for the reimbursement of the appeal fee under R 103(1)(b). However, simply allowing the four-month time limit to go by without either filing a statement of grounds or withdrawing the appeal is not a rational choice; it is something to be avoided without exception since it renders the appeal inadmissible and deprives the appellant of the possibility of recovering the appeal fee. [8] In the light of the observations made in the previous paragraph it is clear that the system for monitoring time limits operated by the appellant’s representative was inadequate inasmuch as it entailed a danger that, having filed a notice of appeal and paid the appeal fee within the two-month time limit, he might omit to file the statement of grounds of appeal within the four-month time limit or to take advantage of the possibility of a reimbursement of the appeal fee under R 103(1)(b). The appellant’s representative was content to operate a system under which an assistant – admittedly a well-trained, experienced and competent assistant – was allowed to record time limits and make annotations without making the necessary distinction between the two time limits laid down in A 108.
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T 2336/10 – Don’t Agonize, Organize
K’s Law – The ebook
[9] Following notification of the decision under appeal, a colleague of the appellant’s representative recorded the relevant time limits (25 November 2010 and 25 January 2011) in the computer-operated system for monitoring time limits. Initially an annotation was entered into the system to the effect that no action should be taken in the absence of instructions from Mr Z. The same annotation was made for both the time limits. At a later stage “technically relevant information” was received and the representative decided that an appeal should be filed unless his client issued instructions to the contrary. His assistant amended the annotation concerning the twomonth time limit for filing the notice of appeal but did not amend the annotation concerning the four-month time limit for filing the statement of grounds of appeal. That was clearly not the best way to proceed and in a wellorganized firm of professional representatives one would not expect matters to be arranged in such a way. [10] Once the representative had reached the conclusion that an appeal should be filed unless instructions to the contrary were to be received, it was necessary to import into the computer-operated system for monitoring time limits some means of ensuring that the notice of appeal would be filed and the appeal fee paid by 25 November 2010 and that the statement of grounds of appeal would be filed by 25 January 2011. [11] It is in any event necessary to operate a system which ensures that, once a notice of appeal has been filed, a statement of grounds of appeal will in the normal course of events be prepared and filed within the relevant time limit (unless, exceptionally, a decision is taken to abandon the appeal and obtain a reimbursement of the appeal fee). It makes no sense to have, in a computer-operated (or manual) system for monitoring time limits, an annotation to the effect that a statement of grounds of appeal should only be filed if specific instructions are received from the client. The only logical annotation, regarding the four-month time limit laid down in the third sentence of A 108, is an annotation to the effect that, in the event of the notice of appeal having been filed and the fee paid, a statement of grounds of appeal must be filed before the period expires, unless instructions to withdraw the appeal are received. [12] Notwithstanding the unfortunate annotation that was entered in the computer-operated system, and the failure to amend it after it became apparent that an appeal was likely to be filed, it should still have been possible to avoid missing the time limit for filing the statement of grounds of appeal if due care had been exercised in the days and weeks preceding the expiry of the time limit on 25 January 2011. The explanations provided by the appellant’s representative about the checks performed in January 2011 do not lead the Board to believe that all due care required by the circumstances was exercised. [13] Clearly the people within the representative’s firm who were responsible for monitoring time limits were aware that the time limit was about to expire but they did not take certain steps, the necessity of which ought to have been apparent to experienced staff familiar with EPO procedures. The crucial error was to focus on searching for an email from a specific individual (Mr Z.) and to persist in the mistaken belief that nothing needed to be done in the absence of explicit instructions to file a statement of grounds of appeal. For reasons explained above, the first and most obvious step to be taken, when it is clear that the time limit for filing a statement of grounds of appeal is about to expire, is to ascertain whether the corresponding notice of appeal was filed and the appeal fee paid. If that had been done in the present case it would have been obvious to properly trained and experienced staff that a statement of grounds of appeal had to be prepared and filed by 25 January 2011 in the absence of a clear instruction to the contrary. [14] Simply to delete the time limit from the monitoring system without taking the necessary action was not an option, because that entailed losing not only the right to pursue the appeal but also the possibility of recovering the appeal fee. Searching for explicit instructions to file a statement of grounds of appeal is misconceived, since it involves reversing what ought to be the normal rule of sound practice (i.e. to file such a statement in the absence of instructions to the contrary). That error was compounded by searching exclusively for an incoming email from a single individual (Mr Z.) within the opponent association. In fact if the search had been widened so as to include outgoing e-mails to that single individual the time limit would probably not have been missed. Annex 5 to the application for re-establishment of rights reproduces an e-mail of 15 November 2010 in which the opponent’s representative informed Mr Z. that, having checked the documents (presumably the documents supplied in an e-mail of 11 November 2010 by an unnamed person within the opponent association other than Mr Z.), he had formed the view that a large part of the arguments used by the Opposition Division in the decision under appeal could be overcome and that he would be filing an appeal unless instructions to the contrary were received by 20 November 2010. It is difficult to understand why that e-mail did not come to light when the persons responsible for monitoring time limits within the representative’s firm carried out various checks and searches in January 2011 before deleting the time limit from the computer-operated system. Moreover, that email was sent in reply to an e-mail of 12 November 2010 in which Mr Z. had expressly answered “yes” to the question whether an appeal should be filed but had asked the representative to check the relevant documents once more. Thus, even if only incoming e-mails from Mr Z. were being searched for in January 2011, it should have been clear that a statement of grounds of appeal had to be filed. 423 | 3398
T 2336/10 – Don’t Agonize, Organize
K’s Law – The ebook
[15] It is well established that a professional representative may entrust routine tasks such as noting time limits to an assistant, provided that (i) a suitable person is chosen for that purpose, (ii) he or she is given proper instructions and (iii) the representative exercises reasonable supervision over the work of the assistant: J 5/80 [7]. In the present case it is questionable whether proper instructions were given to the assistants entrusted with monitoring time limits or whether a reasonable amount of supervision was exercised. In particular, the representative does not appear to have issued proper instructions as regards the correct way to deal with the time limit for filing a statement of grounds of appeal. An assistant to whom that task is entrusted must be instructed to work on the assumption that, once the notice of appeal has been filed and the appeal fee paid, a statement of grounds of appeal will in principle have to be filed within the four-month time limit laid down in A 108. It is not logical to allow the assistant to proceed on the assumption that a statement of grounds of appeal should be filed only if specific instructions to do so are received. It is also important to ensure that the assistant is aware of the need to take positive action – such as checking with the representative or contacting the client directly – before deciding that no statement of grounds of appeal need be filed and deleting the relevant time limit from the system; a properly instructed assistant would be aware that purely passive steps, such as searching incoming e-mails, are not sufficient. [16] Nor is there any evidence that the representative exercised reasonable supervision over the work of the assistant to whom the monitoring of time limits had been delegated. The representative has argued that the two members of staff in question (Mrs S. and Mr R.) are subject to constant supervision and training and that one of them cross-checked the work of the other in the present case. However, few details are given about specific measures of supervision and there is nothing to suggest that the supervisory action taken in this case could have prevented the missing of the time limit or made it less likely. The supervisor and the person being supervised both started from the incorrect premises that no statement of grounds of appeal needed to be filed in the absence of explicit instructions to that effect and that the purely passive step of searching for an e-mail from a single individual with the necessary instructions was sufficient. In the circumstances it would not be unreasonable to conclude that a little more direct involvement of the representative in person was called for. [17] In conclusion, the facts and evidence submitted in support of the application for re-establishment of rights do not indicate that all the due care required by the circumstances was taken either by the appellant or by the appellant’s representative. [18] It follows that the appellant’s rights cannot be re-established in respect of the failure to meet the time limit for filing the statement of grounds of appeal. Consequently, the appeal must be dismissed as inadmissible. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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R 15/11 – E Silentio Decreti
K’s Law – The ebook
R 15/11 – E Silentio Decreti 30 Mai 2013
Here is what I believe to be the fourth successful petition for review (after R 7/09, R 3/10 and R 21/11). The Enlarged Board (EBA) dealt with decision T 832/09 where Board of appeal (BoA) 3.2.02 had dismissed the applicant’s appeal against the refusal of its application. The sole auxiliary request was dismissed for lack of clarity. The petitioner pointed out that this clarity objection had never been raised; the petitioner had become aware of it only when the final decision was announced. The EBA found no evidence to the contrary. [2.1] As set out more in detail below (point [4], “Allowability”) there is nothing in the file of the appeal proceedings in question which supports the conclusion that the petitioner was or should have been aware during the appeal proceedings that compliance of the sole auxiliary request with A 84 was at issue. [2.2] According to the petitioner […], the chairman, just before announcing the decision on the appeal, made a negative statement as to the compliance of the auxiliary request with A 84, but refused to give the petitioner’s representative the floor when he immediately tried to intervene and to address this requirement […] which, according to the petitioner, had never been discussed before or during the oral proceedings (OPs). [2.3] In the circumstances of the present case it is immaterial for the purposes of R 106 whether or not these submissions give a true account of the conduct of the final stage of the OPs before the BoA. If they do, the total and final refusal to hear the petitioner effectively hindered the petitioner from exercising its right to be heard and, at the same time, prevented its representative from raising a relevant objection under R 106 (either directly or in reaction to the refusal to comment on the new objection). If for whatever reason the petitioner’s submissions regarding the final stage of the OPs in question were not taken into account by the EBA, then there would be no indication at all that the petitioner could possibly have been aware before notification of the decision under review that it would be based, within the meaning of A 113(1), on the lack of clarity in respect of the auxiliary request.
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R 15/11 – E Silentio Decreti
K’s Law – The ebook
[3] Thus, on either view, the relevant objection could not be raised by the petitioner during the appeal proceedings. It follows that R 106 is satisfied. Allowability [4] There is no explicit or implicit indication in the file of the appeal procedure from which it can be derived that in respect of the auxiliary request a possible lack of clarity (A 84) was at any time discussed with the petitioner or that at least an objection was raised in this respect. [4.1] The petitioner is correct in saying that the statement in the communication accompanying the summons concerning a potential discussion of inter alia A 84 […] did not amount to a specific objection under that provision regarding the auxiliary request. It expressed, at best, a conditional and quite general intention of the BoA when drafting the communication. It cannot help establish whether or not the petitioner was then actually given the opportunity to comment on that requirement within the meaning of A 113(1). [4.2] The reasoning in point [3], last paragraph of the decision under review […] is equally inconclusive in this respect, also insofar as it refers to explanations given by the petitioner during the OPs, both orally and in the form of additional written notes. There is nothing in this paragraph or elsewhere in the Reasons including, in particular, the Facts and Submissions, which indicate or imply that at any time during the OPs the petitioner was aware or could have been aware that compliance with A 84 was at issue. The reference in point 3, second paragraph to the ‘‘crucial paragraphs of the description referred to by the [petitioner]” […] are in this respect too vague in the face of the petitioner’s assertion about this […]. The written notes referred to in the decision are not further identified by the Board and the notes produced by the petitioner bear out what is said in the petition […] above, i.e., they do not concern the crucial passage in the claim found to be unclear. [4.3] Neither do the petitioner’s submissions, in particular its account of the final stage of the OPs before the BoA […] in any way that the right to be heard was granted in respect of the critical ground for the decision in question- on the contrary, see point [2.3] above. [5] The EBA does not have the power or ability to investigate further whether or not there might be other facts or indications which would suggest that at any time the petitioner was indeed aware or could have been aware that the BoA had doubts as to the compliance with A 84, an awareness which would have been the minimum prerequisite for an opportunity to comment on that ground within the meaning of A 113(1). In the absence of any such indication it is clearly not for the party which alleges a breach of its right under that provision to prove the negative (negativa non sunt probanda). Nor can the EBA, in the absence of any such indications, re-construct the detailed course of the entire appeal proceedings, in particular of the OPs, in a case where the decision of the BoA has been challenged under A 112a(2)(c). Any relevant document on file, in particular the parties’ written submissions, any communication under A 15(1) RPBA, the minutes of the OPs or the facts and submissions and/or the reasons for the decision pursuant to A 111 may serve the purpose of establishing what took place, it being the usual practice of the BoA to include the relevant information in the facts and submissions and/or the reasons for the decision (rather than in the minutes of the OPs). It is for the BoA to draft its own texts in a way that enables the reader, taking into account all documents on file, to conclude that the right to be heard within the meaning of A 113(1) was respected with regard to the grounds on which the decision of the BoA is based. [6] No such conclusion regarding non-compliance of the auxiliary request with A 84, on which ground the appeal was eventually dismissed, is present in the reasons for the decision under review, in particular not in point [3], last paragraph (point [4.2], above). Had the clarity issue been raised earlier and in a manner enabling the petitioner to comment on it, one would expect that this would be indicated by the BoA or otherwise reflected in the written reasons for the decision under review, e.g. by dealing with the party’s reaction – normally counterarguments or amended requests, or both - in the Summary of the facts and submissions and/or in the Reasons for the decision. [7] Under these circumstances the EBA is not in a position to establish that the petitioner’s right to be heard has been respected. So it has to be assumed that a violation of the petitioner’s rights under A 113(1) occurred which qualifies as fundamental within the meaning of A 112a(2)(c) because it concerned the ground on which the appeal was eventually dismissed by the decision under review. Request for replacement of the members of the BoA under R 108(3) [8] What the petitioner’s argumentation in support of that request […] boils down to is, in effect, that the replacement of all members of the BoA should be an automatic (“routine”) measure whenever the violation of the petitioner’s rights which led to the setting aside of the decision of the BoA was a mistake of the BoA itself 426 | 3398
R 15/11 – E Silentio Decreti
K’s Law – The ebook
(and not, as e.g. in case R 21/11, due to circumstances outside the Board’s control), such a mistake bringing a suspicion of partiality upon each member of the responsible board. [9] However, such a narrow understanding of the EBA’s discretion to replace or not to replace Board members cannot be derived from the wording of R 108(3), second sentence, nor does it properly reflect its purpose. R 108(3), second sentence stipulates quite generally that the EBA may order the replacement of board members who participated in the decision set aside. Hence, even if the decision of the Board was flawed by a fundamental procedural deficiency within the meaning of A 112a, the replacement of board members still lies in the discretion of the EBA. This means that replacement does not ensue automatically from the fact of a deficiency within the meaning of A 112a having occurred. On the contrary, the rule is that the proceedings are re-opened before the BoA responsible under the business distribution scheme (see Revision of the EPC (EPC 2000), Synoptic presentation EPC 1973/2000 - Part II: The Implementing Regulations, OJ EPO Special edition 5/2007, 166). This serves the interest of procedural economy, since the board members who are familiar with the case will normally most efficiently deal with the case again. More importantly, however, the principle relied on in decision R 21/11, namely that the replacement of members of the BoA should not be ordered without good reason, is not merely a matter of procedural economy. As the business distribution scheme of any court, the BDSBA (see Supplement to OJ EPO 1/2013, 12 for the current version) and the adherence to it is an important element of an independent, reliable and efficient judicial system which meets the standards set by, inter alia, Article 6 ECHR. Any change of a Board’s composition without good reason would be contrary to the evident purpose of the BDSBA - and, thus, also detrimental precisely to “the public’s confidence in the judicial character of appeal proceedings” which the petitioner referred to - and must, therefore, remain restricted to situations where for objective or clearly established subjective reasons an individual member can or should no longer participate in the case. This is not only reflected in the above cited wording of R 108(3), second sentence: “The EBA may order ...” but also in the wording “... that members [not: the members] ... shall be replaced” in R 108(3) and in Article 4(1) of the BDSBA: “If a member designated ...”. [10] Just as a decision under A 24(4), an order under R 108(3) causes a change of the composition of the BoA as originally determined pursuant to Articles 2 and 3 BDSBA. In decision G 1/05 [8], the EBA underlined the importance of Board members’ discharging their duty to sit in the cases allocated to them in the particular composition as determined by the provisions applicable thereto, viz, the right of the parties to a hearing before a judge or court in the particular composition as determined by those provisions. This means not only that Board members cannot withdraw from the proceedings at will, but also that the provisions on business distribution must apply for a case re-opened before the board, unless there is a compelling reason for proceeding otherwise. It is therefore appropriate , when exercising the power of discretion conveyed by R 108(3), second sentence, to consider the criteria and standards that have been developed for the replacement of members of the BoA following an objection of suspected partiality pursuant to A 24(3) and (4). Actually, it is the allegation of suspected partiality on which the petitioner’s request to replace (also) the rapporteur is based. [11] It is commonly recognised in the jurisprudence of the Boards of Appeal and elsewhere that the suspicion of partiality must be justified on an objective basis and that purely subjective impressions or vague suspicions are not enough (G 1/05 [20]). The question whether or not an objection on the ground of suspected partiality is justified can only be decided in the light of the particular circumstances of each individual case (G 5/91). Such a suspicion is not objectively justified for the sole reason that a position on the matter was adopted in a prior decision of a BoA in which the board member concerned had participated (G 1/05, see also J 15/04). [12] In the present case there is nothing concrete in support of a reasonable suspicion of partiality regarding the rapporteur. In particular, it appears that the omission to grant the petitioner an opportunity to present its comments on the question of clarity was a mere oversight to which the rapporteur did not (actively) contribute. Under these circumstances the rapporteur’s ability to approach the petitioner’s submissions during the re-opened appeal proceedings with an open, unbiased mind is not in doubt, so that the EBA does not see a reason for exercising its power under R 108(3) in the way as requested by the petitioner. [13] This conclusion is not affected by the petitioner’s reference to decision T 584/09 in which the replacement was decided under A 24(4) by the BoA following statements pursuant to A 24(2) that the two members concerned did not want to participate in the further proceedings in order to avoid suspicion of partiality. In contrast, the present request for replacement (of the one remaining member) is to be decided on by the EBA under R 108(3) and in the absence of any objective basis for a suspicion of partiality. It is, however, completely open how, in the re-opened proceedings, the BoA, in the event of a statement by the member concerned pursuant A 24(2) or an objection by the party pursuant to A 24(3), would decide on the question of replacing that member.
427 | 3398
R 15/11 – E Silentio Decreti
K’s Law – The ebook
[14] The order to reimburse the fee for the petition is based on R 111. Order For these reasons it is decided that: 1. The decision under review is set aside and the proceedings before BoA 3.2.02 are reopened. 2. The request that the members of the BoA who participated in the decision under review be replaced is rejected. 3. Reimbursement of the fee for the petition for review is ordered. Should The
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T 1407/08 – Only A Product
K’s Law – The ebook
T 1407/08 – Only A Product 29 Mai 2013
In this revocation appeal Board 3.2.02 inter alia examined claim 1 of the fourth auxiliary request as to its compliance with A 53(c). The claim read: An aortic graft for treatment of abdominal aortic aneurysms, the graft comprising a tubular hollow material for intraluminal insertion in the aorta, the aorta having an upper proximal aortic neck and a lower distal aortic portion forming an iliac bifurcation dividing into two iliac arteries, the graft characterized by: a compliant graft main portion (13, 33, 59) made entirely of a knitted compliant flexible fabric material and having a generally cylindrical shape with an upper end (18, 39, 60) for secure attachment to the aortic proximal neck (5), and a lower free end (20, 41, 42, 61, 75, 76) constructed so as to wholly reside at a position inside the aneurysm above the iliac bifurcation (3, 4), the upper end of the main portion being stented with a balloon expandable stent fixed only at the upper end thereof for anchoring to the aorta neck, and the lower free end of the main portion having a thread (65, 74) for restricting a diameter of a lower edge of the compliant graft main portion to a predetermined maximum value, and at least one compliant graft iliac portion (14, 34, 35) entirely made of compliant flexible fabric material and having a generally elongated cylindrical shape with a lower end (24, 47, 53) for secure attachment to one of the iliac arteries, and an upper end (23, 46, 52) for secure attachment in fluid communication to the lower end (20, 41, 42, 61, 75, 76) of the graft main portion, the graft iliac portion also having one balloon expandable stent attached at the upper (23) end and one balloon expandable stent attached at the lower (24) end thereof, wherein in an expanded state, said upper end of the graft iliac portion has a diameter larger than said predetermined maximum value of the diameter of the lower edge of the graft main portion. [4] The respondent considered that claim 1 was a so-called product-by-process claim and that it fell under the exception of A 53(c) because the process used to manufacture the product claimed was executed on the patient, i.e. was of a surgical nature. It is clear that in the present case the aortic graft will effectively only be in its final assembled state in the human body. This is however of no relevance for the allowability of the product claim under A 53(c). The Board points out that according to established case law, a so-called product-by-process claim must be considered to be nothing else but a product claim in which a particular way of defining the product is chosen, namely by describing steps of its manufacturing process. The use of such a way of defining the product is not to be understood as implying that something different from a product is meant to be defined or protected. In other words, it is only a way of defining a product, but the manufacturing steps are not protected and do not fall under the scope or ambit of the claim (T 219/83 [10]; T 748/98 [2]; T 248/85 [6.4]). In the present case this means that even if the final aortic graft is normally obtained after assembly in the body of the patient during surgery, the surgical steps of introducing the different parts or portions of the graft into the body and assembling them while in the body do not fall under the scope of the claim and therefore cannot lead to an objection under A 53(c). The claim does not define any method falling under the exception of A 53(c), it defines a product which, according to established case law (T 1695/07, T 1798/08), does not fall under the exception clause. For the sake of completeness the Board notes that it may also be possible to assemble the different parts of the claimed graft in an artificial aorta, should it become necessary to test whether a product falls under the scope of the claim or not. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 766/11 – Covered By The Clause
K’s Law – The ebook
T 766/11 – Covered By The Clause 28 Mai 2013
In this appeal against the rejection of an opposition Board 3.2.03 dealt with an alleged prior public use. Claim 1 of the opposed patent read: Control and/or regulating device for a support roller stand (2) of a continuous casting device (1) for metals, particularly for steel materials (3), wherein the support roller stand consists of several successive roller segments (8), which are respectively adjustable in regulated manner relative to one another by means of paired piston-cylinder units (13) by way of a lower frame (11) carrying the support rollers (10) and an opposite upper frame (12), for conveying, straightening and/orforimproving the internal quality and for changing the thickness of the metals, wherein on the upper frame (12) of the roller segment (8) the signals of position transmitters of the hydraulic cylinder units (13) are respectively conducted to a terminal box (21) and wherein a cable packet (23) is led from the terminal box (21) via a detachable rnedia coupling (22) to a stationary works stand (17), characterised in that for each roller segment (8) a separate axis regulator (18) with a connected valve station (26) is arranged on the stationary works stand (17) and that signals from all axis regulators (18) are respectively conducted by way of a field bus module (20) to a common memory-programmable control (19) in a control space (25) of the continuous casting 20 device (1). *** Translation of the German original *** [3.1.1] The prior public use is a modernisation project of the VAI company for the continuous slab casting plant (Brammenstranggießanlage) (CSCP) of the Wuhan Iron & Steel Group Corporation (China). A copy of the agreement was filed as document O1. It is undisputed that VAI has installed a plant having the claimed features. What is disputed is whether this casting plant and in particular the positioning of the axis regulators had been made available to the public. [3.1.2] The [opponent] pointed out that there had not been any obligation of secrecy or confidentiality concerning the continuous slab casting plant. The subject-matter of claim 1 had been made available as a consequence of the sale of the casting plant and/or a factory visit (Werksbesichtigung) during a seminar on continuous casting in China. The agreement contains a secrecy clause (Article 15 on page 25) concerning the “know how and related technical documentation” for a period of 5 years following the conclusion of the agreement (December 21, 2000). This period overlaps the priority date of the impugned patent (November 9, 2004); thus the question of secrecy is relevant for determining whether the control systems of the CSCP belong to the prior art (A 54(2)). The [opponent] argued that the know-how according to Article 2.3 of the agreement referred to the manufacture of the product concerned by the agreement (Vertragsprodukt), i.e. the slabs, and not to the CSCP itself. However, the Board is of the opinion that the obligation of secrecy is not to be interpreted so narrowly, for the following reasons: First of all, the subject-matter of the agreement is defined in Article 2 and encompasses not only the components of the CSCP but also the know-how and the technical documentation (see point 2.1 of the contract). Both are defined in point 1.22 of the contract (“Technical Documentation means the technical indices, specifications, drawings and documents (including the licensed patent and know-how) related to design, inspection, Erection, Cold Test, Commissioning, Performance Test, operation and maintenance of Contract Plant, …”) and thus concerns, as usual, information that the skilled person cannot derive from the apparent structure of the plant without further ado. Article 15 mentions that the know-how and the technical documentation are to be kept secret; this comprises at least the technical information and indications that are not apparent. The control of the individual roller segments typically are part of this. [3.1.3] Moreover, the [opponent] referred to D23 and D24 and argued that this technology was not covered by the secrecy clause of the contract. D23 and D24 disclose “SMART” roller segments developed by VAI as well as 430 | 3398
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the “ASTC” control system. According to these disclosures each roller segment has a distinct axis regulator that is connected to a master-control system located in a control room of the CSCP. D23 and D24 are scientific articles which the [opponent] has filed in order to prove that VAI had no interest in keeping the SMART segment technology and the ASTC control system secret. It is, therefore, clear that the SMART segment and the ASTC technologies were available to the public during the five years of the secrecy obligation. However, the conclusion that the part of the subject-matter of the agreement that concerned control was not to be covered by the secrecy clause of the Article would be mere speculation. Rather, the agreement has to be interpreted according to the wording of the agreement, without referring to any further documents that are not cited in the agreement. Article 15 of the agreement, however, clearly states that the technical documentation and the know-how are to be treated as confidential, and, as explained above, this includes the control of the roller segments. [3.1.4] The [opponent] finally referred to D22 where “know-how” was defined as follows: “Information that enables a person to accomplish a particular task or to operate a particular device or process.” It was of the opinion that this meant that “know-how” only concerned the operation of the CSCP, i.e. the manufacture of slabs. However, the Board is of the opinion that the “operation of the CSCP” inter alia comprised information regarding the control of the plant and was not limited to the final product. Moreover, Article 15 of the agreement expressly refers not only to know-how but also to the relevant technical documentation. Factory visit [3.2.1] There was a factory visit of the CSCP 3 of the Wuhan Iron & Steel Corporation during a seminar on continuous casting in Wuhan, China. [3.2.2] The [patent proprietor] has argued that a CSCP is a very large and complex device having a many components. In view of the great number of components the Board is not persuaded that a visitor who did not know the subject-matter claimed in the impugned patent would have realized without any further explanation which structural elements, let alone the control modules disclosed in D23 and D24, were hidden behind the boxes. [3.2.3] The [opponent] submitted that during the visit questions regarding the control of the plant could have been asked and would have been answered. According to the case law of the Boards of appeal it is sufficient for [information] to be publicly available that there was a theoretical possibility to take note of this information. It is irrelevant whether there was any reason to search for such information or for requesting it, as well as whether a member of the public indeed did take notice of it (Case Law of the Boards of appeal, point I.C.1.8). In T 947/99 the alleged prior public use concerned the visit of an ice-cream factory. There was no proof that a feature of the manufacturing process was explicitly explained to the visitors. This notwithstanding the Board decided that information concerning the process had nevertheless been made available to the public because (i) the visitors were not subject to a secrecy or confidentiality obligation; (ii) the information concerned a generally known process step; and (iii) if a visitor had requested information on details of the manufacturing process he would have obtained the relevant piece of information (see point [10.6] of the reasons). However, the present case differs from case T 947/99. As a matter of fact, if someone asked questions on the control of the casting plant in the course of the visit, he would not have received such information because this information was confidential according to Article 15 of the agreement. [3.2.4] The [opponent] has offered the testimony of Mr. S. on this issue. The only reason for this offer of proof, however, was that Mr. S. had been present at the factory visit as an employee of the [opponent’s] (VAI’s) distribution and that he could have asked questions and received answers on behalf of VAI during the visit. Thus the [opponent] has not made any submission concerning the proper evidence that could establish the prior public use it invokes. Also, the alleged possibility of asking questions and receiving answers corresponds to a 431 | 3398
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merely hypothetical consideration of the [opponent]. The [opponent] has not asserted that questions regarding the technical construction and the mode of operation of the casting plant had indeed been asked and answered in detail. Thus the Board found itself in a situation where it lacked a substantiated submission on behalf of the [opponent] as to what the witness could declare and why this was relevant for the technical aspects that were relevant for taking a decision in the present appeal proceedings. Moreover, the [opponent] only based its argumentation on a theoretical possibility, which, in the absence of any substantiated submission, could not establish a basis for the taking of evidence by hearing the witness. Thus the Board has decided not to invite the witness to the oral proceedings and not to hear him. Summary [3.3] The sales agreement concerning the modernisation of the CSCP of the Wuhan Iron & Steel company contains a secrecy clause regarding the know-how and the technical documentation of the casting plant. The case law of the Boards of appeal has developed a narrow concept of novelty, i.e. the features of the invention have to be derived clearly, directly and unambiguously from the prior art. In the present case, for the reasons mentioned above, the secrecy clause of the agreement was not limited to the sole manufacture of slabs but also comprised technical details that typically include the controls and their arrangement. In the course of the factory visit [the skilled person] could not realise where the control was installed and in particular whether the axis regulators were installed in the boxes that were arranged laterally. Although the participants to the factory visit were not only shown the casting plant but also had the possibility of asking questions, the details of the casting plant according to the sales agreement were covered by a secrecy agreement, which means that it is not established that a control system as defined in claim 1 was available to the public. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 553/11 – Absurd
K’s Law – The ebook
T 553/11 – Absurd 27 Mai 2013
In this appeal against the rejection of the opposition sufficiency of disclosure was the dominating issue. Main request (claims as granted) [2.1] Claim 1 refers to a pulverised water-absorbent resin powder which is characterised inter alia by having:
a bulk density of not lower than 0.74 g/ml; an average particle diameter of 150 to 600 μm; a content of fine powders not higher than 10 wt%; and a water absorption capacity of not lower than 23 g/g […].
[2.1.1] According to the opposed patent, such a powder is obtained by a process which has the steps of first pulverising the particles and then grinding them, and it is this grinding step that is needed in order to obtain powders according to claim 1 having the required bulk density […]. More specifically, by way of the grinding step, the surfaces of the particles are smoothened by eliminating angular and pointed portions […] and as a result of the particle surfaces becoming smoothened (“rounded”), the required bulk density is obtained: “Because the polymer particles become more rounded into a uniform shape by the grinding according to the present invention, the bulk density of the ground polymer is higher than that of the unground polymer, and is preferably not lower than 0.72 g/ml, … still more preferably 0.74~0.90 g/ml …” […]. [2.1.2] Independent product claim 1 does not however contain the feature of the particle surfaces being ground and thus smoothened. This claim therefore also covers non-smoothened particles having – inter alia – a bulk density not lower than 0.74 g/ml. [2.1.3] As was not disputed by the [patent proprietor], there is no teaching in the patent as to how to prepare such non-smoothened particles; nor does such a teaching form part of the skilled person’s common general knowledge. Therefore, on the basis of the patent and common general knowledge, the skilled person is not able to prepare non-smoothened particles according to claim 1 having the required bulk density. This part of the invention is thus insufficiently disclosed. [2.2] The [patent proprietor] argued during the oral proceedings (OPs) that by virtue of the parameters present in claim 1, i.e. the bulk density, the average particle diameter, the content of fine particles, and the water absorption capacity, the powders of claim 1 were inherently restricted to those with smoothened particle surfaces. No insufficiency with regard to powders having non-smoothened particle surfaces could therefore arise, since such powders would not be covered by claim 1. The board does not agree with the [patent proprietor’s] argument. Firstly, such an inherent restriction is not derivable from the opposed patent in the context of the bulk density. All that the patent discloses in this respect is that the inventive process contains the step of grinding and that by virtue of the resulting smoothened particle surfaces, a bulk density as required by claim 1 is obtained […]. This disclosure does however not permit the reverse conclusion to be drawn, namely that all powders having the required bulk density inherently have smoothened particle surfaces. In fact, the only evidence available in this respect points to the opposite conclusion, namely that particles with the bulk density of claim 1 do not necessarily have smoothened surfaces. More specifically, D13 (example 4) discloses polymer particles with a bulk density within the range required by claim 1 (0.79 g/ml) that are “rocklike” and thus have a surface as shown in figure 2 of D13. As is apparent from this figure, this surface is nonsmoothened.
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Secondly, no reasons were provided by the [patent proprietor] why the further parameters of claim 1, i.e. the average particle diameter, the content of fine particles and the water absorption capacity, inherently restrict the claimed powders to those having smoothened particle surfaces. There is thus no reason to believe that the parameters of claim 1 inherently restrict the claimed powder such that its particles have smoothened surfaces. [2.3] According to a second line of argument put forward by the [patent proprietor], claim 1 was inherently restricted to particles having been ground and thus having smoothened surfaces since it was essential according to the description of the patent that the pulverized particles were subjected to a grinding step in order to obtain the bulk density of claim 1. This argument in fact is different from the [patent proprietor’s] first argument […] in that it is now the description of the opposed patent rather than the parameters in the claim which is said to restrict the claim to powders with smoothened particle surfaces. [2.3.1] The board acknowledges that it can be deduced from the description of the opposed patent that the process disclosed in the patent only allows for the preparation of powders with smoothened particle surfaces […]. It is also true that according to the description, it is thus not possible to prepare powders via this process that have non-smoothened particle surfaces having a bulk density of not less than 0.72 g/ml. [2.3.2] The [patent proprietor’s] conclusion from this, namely that these powders are therefore excluded from claim 1, cannot however be accepted. This argument could only succeed if one were to accept that the description of the patent in this case restricts the scope of the claim on to its normal and ordinary reading. [2.3.3] There is however no legal basis for such an approach. More specifically, the relevant legal provisions in the EPC dealing with this issue are A 84 and A 69 (and its protocol), the latter provisions in particular being intended to assist the patent proprietor in contending for an interpretation of a claim that is less rather than more restricted than its wording warrants. Therefore, if in proceedings before the EPO the proprietor wishes to argue for a narrow scope of a claim, this should be on the basis of the ordinary wording of the claim, and not on the basis of something appearing only in the description (T 1404/05 [3.4,3.6]). See also T 681/01 [2.1.1], where the board emphasized that the normal rule of claim construction is that the terms used in a claim should be given their ordinary meaning in the context of the claim in which they appear. The description may not be used to rewrite the claim and redefine the technical features required by the claim in a way not warranted by the wording of the claim itself. In particular the description cannot be relied on to exclude subject-matter from the claim which the ordinary meaning of the terms used would include as part of what is claimed. [2.3.4] The [patent proprietor’s] argument that the description inherently restricts claim 1 to powders with smoothened particle surfaces is also not accepted for the following further reason: The [patent proprietor’s] argument implies that embodiments covered by the scope of claim 1, namely powders with non-smoothened particle surfaces having inter alia a density of not less than 0.72 g/ml, are excluded from the claim because it can be deduced from the description that these powders cannot be prepared by the process disclosed in the 434 | 3398
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description. This would lead to the absurd situation that because it can be deduced from the description that a claim is not enabled, the claim cannot be attacked under A 83 or A 100(b). [2.3.5] In summary, embodiments that are covered by the scope of a claim on its ordinary reading are not to be regarded as excluded merely because it can be deduced from the description that they are not workable. [2.4] Therefore, claim 1 in the present case covers powders with non-smoothened particle surfaces. As the skilled person would not be able to obtain such powders on the basis of the teaching in the patent or his common general knowledge, this part of the invention is insufficiently disclosed. Hence, the ground of opposition under A 100(b) prejudices the maintenance of the patent as granted. The main request thus is not allowable. [2.5] In view of this, the [opponent’s] further insufficiency objections against the main request need not be dealt with as far as the main request is concerned. First auxiliary request […] [4.1] Independent process claim 1 refers to a production process for a pulverised water-absorbent resin powder, which comprises the steps of:
obtaining crosslinked polymer particles by way of an aqueous solution polymerisation step, pulverising the crosslinked polymer, grinding the resultant crosslinked polymer particles until the bulk density thereof increases to not lower than 0.72 g/ml, and surface cross-linking the ground particles.
[4.2] The insufficiency objection discussed with regard to the main request, namely that granted claim 1 covers insufficiently disclosed powders with non-smoothened particle surfaces, is no longer applicable to the first auxiliary request as the only independent claim (claim 1) is now directed to a process which requires grinding and thus smoothening of the polymer particles. [4.3] However, the other insufficiency objections raised in the context of the main request still apply to the first auxiliary request and therefore will be discussed in the following. [4.4] More particularly, the [opponent] raised a further insufficiency objection against the main request on the basis of D2. According to the [opponent], the experiments described in this document show that carrying out the process steps as defined in claim 1 (claim 10 of the main request), in particular the grinding step, is not sufficient to obtain the bulk density required by the present claims. A further technical measure is thus necessary in order to achieve the required bulk density. As no teaching is present in the patent as regards this technical measure, the skilled person would not know how to obtain the required bulk density and thus the invention as defined in claim 1 is insufficiently disclosed. [4.4.1] D2 describes experiments in which the [opponent] attempted to repeat example 1 of the opposed patent. In these experiments, acrylate polymers were prepared using various temperature profiles during polymerisation […]. In two different experiments using two different pulverisers, the polymers were then pulverised, ground and classified (isolation of the 212-850 mym fraction) in a way similar to that in example 1 of the opposed patent […]. The obtained fractions were subsequently surface crosslinked. The bulk densities of the obtained samples are shown in the table on page 12 of D2. As can be seen from this table, none of the pulverised and ground samples (denoted Ex1_1, Ex1_2, Ex1_3, Ex1_4, Ex2_1, Ex2_2, Ex2_3 and Ex2_4) has a bulk density equal to or above 0.72 g/ml as required by claim 1 of the first auxiliary request. Consequently, even though in the experiments of D2 the process steps of claim 1 were carried out, the bulk densities were not as required by this claim. It therefore seems to be credible to the board that the steps of claim 1 as such are not sufficient to obtain the required bulk density. [4.4.2] In the board’s view, however, this does not establish insufficiency of disclosure. In the present case, it is self-evident that in order to obtain the required bulk density by the steps of claim 1, the bulk density of the starting material before grinding must not be too low, since grinding can increase the bulk density only to a certain extent. The skilled person trying to work the invention would therefore approach the task appreciating 435 | 3398
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that the bulk density of the pulverised particles before grinding must be sufficiently high so as to obtain the required bulk density after grinding. It can be deduced from the opposed patent that bulk densities before grinding in the range of e.g. 0.64 g/ml to 0.68 g/ml are suitable in this respect (see comparative examples 1 to 7, where bulk density values of non-ground samples are reported). D2 does not contain any information as regards the bulk densities of the particles before the grinding step and it was acknowledged by the [opponent] during the OPs before the board that in fact these values may have been below the values used in the opposed patent. Hence, D2 does not establish that the skilled person carrying out the process as defined by claim 1, when appropriately construed, would be unable to obtain the required bulk density. [4.5] The [opponent] raised a further insufficiency objection in view of D3. This document describes experiments where two commercially available samples were ground but where only bulk densities below the lower limit of claim 1 were obtained. According to the [opponent], in the same way as with D2, these experiments proved that the process steps of claim 1, in particular grinding, were not sufficient to obtain the bulk densities required by this claim. The [patent proprietor] stated on page 5 of its letter of 17 November 2011 that the commercial polymers used in D3 had already been surface crosslinked before they were used by the [opponent] in its experiments. This statement was reiterated during the OPs before the board and the [opponent] did not dispute it, either in the written or during the OPs. Under these circumstances, the board can only accept that in the experiments described in D3 the surface crosslinking step was applied before the polymers were ground. These experiments thus differ from the process of claim 1 in that surface crosslinking is carried out before grinding while claim 1 requires the opposite, ie surface crosslinking subsequent to grinding. Therefore, contrary to the [opponent’s] assertion, D3 does not demonstrate that the process steps of claim 1 are not sufficient to obtain a bulk density as required by this claim. [4.6] The [opponent] finally argued with regard to the main request that claim 1 contained an open-ended range for the water absorption capacity (“not lower than 23 (g/g)”) and thus covered powders with non-achievably high water absorption capacities. [4.6.1] The only claim of the first auxiliary request containing such an open-ended range is dependent claim 6. [4.6.2] This claim, by way of its dependency on claim 1, contains the further feature that the bulk density of the ground particles is not lower than 0.72 g/ml. The lower the bulk density of a powder, the looser are the particles of the powder packed and the greater are the free spaces remaining between these particles, which in turn means the more can water penetrate into and thus be absorbed by the powder. In other words, with decreasing bulk density, water absorption capacity increases. Consequently, the lower limit of the bulk density of 0.72 g/ml implies an upper limit for the water absorption capacity. The [opponent’s] assertion that claim 6 lacks any upper limit for the water absorption capacity is thus not valid and, accordingly, no insufficiency arises in this respect. This is in line with the conclusion in T 487/89 [3.5] that if a claim which contains an open-ended range seeks to embrace values which should be as high as can be attained above a specified minimum level, while at the same time complying with the other parameters of the claim, then such open-ended parameters are normally unobjectionable under A 83 (see also T 129/88 [2.1.4] and T 773/06 [2.1]). [4.6.3] The [opponent] referred in this respect to decision T 1008/02 and argued that according to this decision, a missing upper limit for the water absorption capacity leads to insufficiency of disclosure. This decision concerned a case where the relevant claim did not contain an upper limit for an absorbency under load. The present board acknowledges that absorbency under load is related to the water absorption capacity as referred to in present claim 6. However, contrary to the present claim 6, the claim in T 1008/02 [II] did not contain any lower limit for the bulk density and thus, contrary to the present case, there was no further parameter which provided an implicit upper limit for the absorbency under load. The decision is thus not relevant to the present case. [4.6.4] The [opponent] finally argued that in the examples of the opposed patent, water absorption capacity decreased with decreasing bulk density, contrary to the above consideration […]. This is however not correct. More specifically, in none of the examples using the same type of polymer does water absorption capacity (whether under load or under no load) decrease when the bulk density decreases (examples 1 to 10).
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[4.7] In view of the above, the invention as defined by the claims of the first auxiliary request is sufficiently disclosed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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K’s Law – The ebook
Looking Back On 2012 (Part 2)
Looking Back On 2012 (Part 2) 25 Mai 2013
Although the comments in response to my review of the examination appeals in 2012 (here) were mostly critical, the post was quite popular, which I interpret to mean that the topic is not without interest. So let us now have a look at opposition appeals. The corresponding data are more complex and, therefore, more difficult to present than the outcome of examination appeals. The following data are extracted from 757 decisions issued between January 10 and December 20, 2012. Needless to say, there may be 2012 decisions that have not yet been published. My extra-sensorial capacities being what they are, I have not been able to take them into account. English was the most common language of the proceedings (62%; to be compared with 78% for examination appeals) but the share of German was not negligible (almost 29%) and French took a 9% share. That German is more often used than in examination proceedings might be a consequence of bifurcation of patent infringement proceedings in Germany.
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Looking Back On 2012 (Part 2)
In principle, there are three possible outcomes to oppositions. The opposition can be rejected, the patent can be maintained in amended form or even revoked. When we consider opposition appeals, we have to deal with a situation that is more complicated than for examination appeals because almost all examination appeals have their origin in a refusal of the application, whereas first instance opposition proceedings have three possible outcomes. Depending on who files the appeal, the range of action of the Board of appeal may be limited, because of the prohibition of reformatio in peius. Let us first consider what the origin of the 757 opposition appeals was:
Most appeals resulted from a decision maintaining the opposed patent in amended form (43%). Revocation appeals were second (almost 36%). Almost 21% of the appeals had their origin in a rejection of the opposition. The single other case was related to a correction. Before we go into details, let me present you the overall outcome for oppositions that went before the Boards of appeal. If we consider only the 669 cases where the Boards took a final decision on the outcome of the opposition (leaving aside remittals for further prosecution, lapses of the patent and decisions on more exotic cases), we obtain the following graph.
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Looking Back On 2012 (Part 2)
In opposition cases that went through first and second instance, the most frequent outcome in 2012 was the revocation of the patent (more than 52%). The patent survived without amendments in only 13% of the cases. Please note, however, that this graph does not show the overall fate of oppositions because, obviously, my results do not take account of oppositions that were terminated after the first instance decision (i.e. where no appeal was filed). If we add the cases where the Boards remitted to the first instance (but leave aside the more exotic cases), we obtain the following graph (750 cases):
I have undertaken a comparison of the Technical Boards of appeal on this basis. Please note that this is only a snapshot and that the numbers of decisions per Board (indicated in brackets) are too low for allowing to draw statistically significant conclusions.
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Looking Back On 2012 (Part 2)
(click to enlarge) Although there were considerable differences between the Boards, the situation varied not too much as a function of the technical field to which the Boards belong (although mechanics have revoked less).
Let us now delve into more detail. For obvious reasons, I will limit myself to global observations; the numbers of decisions per Board are too small to allow for reasonable comparisons between Boards. First, I have had a closer look at first instance rejections of the opposition. In such cases only the opponent is adversely affected but all the options are available to the Board. As can be seen from the graph, in the 158 cases on which a decision was taken in 2012 the Boards either confirmed the rejection (i.e. dismissed the appeal; 40%) or revoked the patent (41%); maintenance in amended form was relatively rare (14%).
A possible reason could be that many patents do not have strong fall-back positions: when the claims as granted fall, the patent falls. When the OD had revoked the opposed patent (269 cases on which a decision was taken in 2012) the Boards confirmed the revocation in a majority of cases (55%).
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Looking Back On 2012 (Part 2)
The second most frequent outcome was a remittal to the first instance for further processing (23%), followed by maintenance in amended form (almost 17%). The rejection of the opposition after a first-instance revocation was relatively rare (4.5%). Perhaps the most interesting cases are the ones where the OD maintained the patent in amended form. As the prohibition of reformatio in peius applies to some of these cases it is necessary to have an even closer look. First of all, one may ask oneself whether it was the opponents or the proprietors (or both) that appealed against such decisions. As the following graph shows, it was more often the opponents that were unhappy with the outcome of the first instance proceedings.
This might be an indication that the OD merit their reputation of being proprietor-friendly. Be that as it may, let us now have a look of what the outcome of such appeals was. In cases where both the proprietor and the opponent file appeals, there is no prohibition of reformatio in peius, and the Board has all the options. It turns out that in 2012 the Board revoked the patent in almost half of the 103 cases (47%); further amendments was the second most frequent outcome (32%) whereas a dismissal of the appeal (leaving the patent as amended by the OD) and rejection were less frequently observed (10% and 7%, respectively). In 4 cases the Board remitted the case to the OD for further processing.
442 | 3398
K’s Law – The ebook
Looking Back On 2012 (Part 2)
That
revocation
was
so
frequent
in
this
situation
came
as
a
surprise
to
me.
In cases where only the patent proprietor appeals, the prohibition of reformatio in peius hinders the Boards from revoking the patent. There were only 29 such cases in 2012. The outcome was as follows:
It turns out that in a majority of cases (almost 60%) the appeal was dismissed; rejection and further amendments each occurred in almost 20% of the cases. Finally, in cases where only the opponent appeals, the prohibition of reformatio in peius hinders the Boards from rejecting the opposition. There were 194 such cases in 2012. The following graph shows the overall result:
In almost half of the cases (46%), the opponent obtained the revocation of the patent; in 22% of the cases the patent proprietor could save the patent by means of further amendments. The appeal was dismissed in about 28% of the cases. All in all, the opponents improved their situation in about two thirds of the cases. NB: I have tried to be very careful, but as such a survey involves big amounts of data, I cannot guarantee that the above figures are free of error. If you spot a mistake, please let me know. 443 | 3398
T 2126/08 – Less Likely
K’s Law – The ebook
T 2126/08 – Less Likely 24 Mai 2013
In this examination appeal case Board 3.3.04 had to deal with a request for correction. Claim 1 of the application as filed read: 1. An isolated variant hepatitis B surface antigen comprising an amino acid sequence wherein mutations from hepatitis B wild type ayw2 strain appear as follows: at position 103 isoleucine is present instead of methionine, at position 118 lysine is present instead of threonine, at position 120 glutamine is present instead of proline, at position 170 serine is present instead of leucine, and at position 213 serine is present instead of leucine. (my emphasis) In the request refused by the Examining Division (ED), “170” had been amended to read “175”. The ED found this claim to violate A 123(2), and the Board confirmed its analysis: [1] The statement of the grounds of appeal is identical to the submissions of 17 March 2005 before the ED. Accordingly, the statement of grounds includes a section entitled “Correction of obvious errors (R 139)”. The board therefore considers that the amendment to claim 1 under consideration entails a request for correction of an obvious error in the present appeal procedure also. [2] R 139 (former R 88 EPC 1973) provides in its second sentence that a correction of errors in documents filed with the EPO which concerns the description, claims or drawings can only be allowed if the correction is obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as correction. In its opinion G 3/89 [5], the Enlarged Board of Appeal (EBA) considered that, for a correction under R 88, second sentence EPC 1973, that concerns the disclosure of a European application or a European patent to be allowed, the respective parts of the disclosure for which a correction is requested must, either on the date of filing or following an amendment under A 123 EPC 1973 (unchanged as to substance in EPC 2000), contain such an obvious error that a skilled person would be in no doubt that the information concerned could not be meant to read as such. Furthermore, the skilled person must be in a position objectively and unambiguously to recognise the incorrect information using common general knowledge. If, on the other hand, it is doubtful whether that information is incorrectly defined, then a correction is ruled out (points [2] and [3] of the reasons). [3] The opinion G 3/89 of the EBA, supra, held furthermore that any correction under R 88 EPC 1973 (corresponding to R 139) is of a strict declaratory nature and thus has not to infringe the prohibition of extension of subject-matter under A 123(2) (see Headnote 2). Accordingly the decision of the ED in the present case also had the effect of refusing the correction under R 139 as referred to in the statement of the grounds for appeal. [4] The amendment/correction under consideration is the change of the wording “at position 170 serine is present instead of leucine” in claim 1 to the wording “at position 175 serine is present instead of leucine” (and a corresponding change on page 8, in line 17, of the application as filed; emphasis added by the board). [5] In its decision, the ED acknowledged that it was evident to a skilled person that an error existed. However, the amendment/correction as now contained in claim 1 was not the only possible correction as a person skilled in the art would have to decide between the correction of “170 L (TTA) –> S (TCA)” to “175 L (TTA) –> S (TCA)” or to “170 F (TTC) –> S (TCA)”, i.e. between a correction of the position of the mutation or the correction of the amino acid at position 170 and of the corresponding codon. It found that it was therefore not immediately evident what the correction should be and refused the correction pursuant to A 139. [6] As can be taken from opinion G 3/89 of the EBA, supra, the conditions an error has to fulfil to benefit from a correction are that it must be obvious that an error has occurred and it must be immediately evident what the correction should be. [7] The board considers that it may have been obvious to the person skilled in the art that an error occurred when consulting the sequence of ayw2 which was known from GenBank Accession No. X02496 and wherein the
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T 2126/08 – Less Likely
K’s Law – The ebook
amino acid residue 170 is phenylalanine (F), encoded by the codon TTC. The first condition may therefore be fulfilled. [8] However, the board considers that the second condition is not fulfilled because, as demonstrated by the ED in its decision (see point [5], above), more than one possible correction becomes immediately evident to the skilled person when considering the error. [9] The appellant has submitted in essence two lines of argument in favour of the position that the proposed amendment/correction was the only correction which was immediately evident. [9.1] A first line of argument was that the second possible correction/amendment referred to in point [5], above, wherein both the amino acid residue and the codon encoding had to be altered, was far less likely to occur in nature as a single mutation underlying the correction/amendment under consideration as it required the substitution of two consecutive bases rather than the substitution of a single base. The other four amino acid changes between LBN and the known ayw2 subtype referred to in claim 1 were also the result of a single base substitution. This second possible correction would therefore not result from a mind willing to understand as it was not “technically sensible” (see decision T 190/99). [9.2] A second line of argument was that there were only three leucine (L) residues encoded by a TTA codon between positions 32 and 226 of the amino acid sequence of the prior art isolate ayw2, i.e. at positions 175, 213 and 216. Since the five amino acid mutations in the new LBN strain were listed in a numerical order (see page 8, lines 14-20 of the aplication as filed), the correct residue number for the leucine (L) encoded by TTA between residue 120 and residue 213 could therefore clearly only be 175. That the reference to Leucine (L) was intentional by the drafter of the application was clear to a skilled person seeing that claim 1 as originally filed also referred, as did the passage on page 8 of the application as filed, to Leucine. [9.3] The board cannot accept either of these lines of argument. Indeed, it is first noted that the appellant has not denied that the second possible correction/amendment referred to by the ED would not be considered by the skilled person, but has rather argued that it would be based on a mutation which would be “less likely to occur in nature”. Furthermore and secondly, the appellant has not argued that when reading the application as filed, the skilled person would have received the technical information that the five amino acid differences were due to point mutations. The board therefore concludes that, because a double mutation would not be precluded for a skilled person addressing the error, the same skilled person would take both possible corrections/amendments into consideration without thereby frustrating the principles established in decision T 190/99 that when considering a claim the skilled person should rule out interpretations which are illogical or which do not make technical sense and a patent should be construed by a mind willing to understand, not a mind desirous of misunderstanding. [10] In view of the above considerations, the board considers that the correction of the error in claim 1 as originally filed was not immediately evident to a person skilled in the art. Thus, the correction proposed by the appellant, and set out in the claims, does not meet the requirements of R 139. [11] The decision of the ED is therefore correct in the point under appeal. […] The appeal is dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1659/09 – Not Selected
K’s Law – The ebook
T 1659/09 – Not Selected 23 Mai 2013
In this examination appeal Claim 1 of the main request before the Board read: An electroluminescent device comprising:
a first charge-carrier injecting layer for injecting positive charge carriers and a second charge-carrier injecting layer for injecting negative charge carriers, at least one of the charge-carrier injecting layers being patterned so as to comprise spacedapart charge-injecting regions; an organic light-emitting layer located between the first and second charge-carrier injecting layers; and an unpatterned conductive polymer layer located between the organic light-emitting layer and the patterned charge-carrier injecting layer, the resistance of the conductive polymer layer being sufficiently low to allow charge carriers to flow through it from the charge-injecting regions to generate light in the organic lightemitting layer and the sheet resistance of the conductive polymer layer being greater than 106 Ohms/square so as to resist lateral spreading of charge carriers beyond the charge-injecting regions.
Claim 1 of the first auxiliary request had an additional disclaimer: …excluding electroluminescent devices wherein the unpatterned conductive polymer layer comprises polyaniline emeraldine salt. The Board found these requests unallowable: Main request Novelty, inventive step [2.1] Since document D3 is pre-published prior art in accordance with A 54(2) EPC 1973, as opposed to document D2 which is considered as comprised in the state of the art in accordance with A 54(3) EPC and Article 54(4) EPC 1973, it is considered expedient to consider document D3 first. Novelty [2.2] Document D3 relates to an organic electroluminescence device, which can be easily fabricated and used as a large area light emitting device for various displays. The device comprises a light emitting layer and a charge transport layer disposed between a pair of electrodes, the charge transport layer comprising a conducting polymer […]. In particular, document D3 discloses, in the terms of claim 1, an electroluminescent device comprising: a first charge-carrier injecting layer for injecting positive charge carriers and a second charge-carrier injecting layer for injecting negative charge carriers (2, 4); an organic light-emitting layer (3) located between the first and second charge-carrier injecting layers; and an unpatterned conductive polymer layer (5) located between the organic light-emitting layer and charge-carrier injecting layer (2). Moreover, according to D3, when the light emitted is to be taken out from the conducting polymer side of the EL device, the electrical conductivity of the conductive polymer is preferably 0.1 S/cm or less […].
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T 1659/09 – Not Selected
K’s Law – The ebook
The thickness of the conductive polymer layer is for instance 100 Å. In fact, as can be seen from the specific examples in table 1, the best results are obtained with a conductive polymer layer of polyaniline with a thickness of 100 Å (example 11) […]. The sheet resistance of a conductive polymer layer having a thickness t of 100 Å and an electrical conductivity σ of 0.1 S/cm or less, using Rs = 1/ σ t is 107 Ohm/square or more. Accordingly, the conductive polymer layer according to example 11 has a “sheet resistance [...] being greater than 106 Ohms/square” as per claim 1. The appellant argued that D3 provided no direct and unambiguous disclosure of a conductive polymer layer having a sheet resistance of greater than 10 6 Ohms/square. It was clear that there was no explicit disclosure of this sheet resistance in D3. Following the EPO Guidelines for Examination Part G, Chapter VI, section 6, “an objection of lack of novelty of this kind should be raised by the examiner only where there can be no reasonable doubt as to the practical effect of the prior teaching”. However, there was reasonable doubt as to the practical effect of the disclosure of D3. In order to provide a novelty-destroying disclosure the skilled person would have needed to have combined one particular value of the layer thickness with a particular value for electrical conductivity of the layer from separate passages of the disclosure and in a further step combine these parameters using the above equation to arrive at a value for the sheet resistance. For an implicit disclosure to be novelty destroying the skilled person had to inevitably arrive at a result falling within the terms of the claim. Even if the skilled person had considered combining the disclosed range of conductivity with a value for layer thickness in order to arrive at a value for sheet resistance the skilled person would not have inevitably arrived at a value of greater than 10 6 Ohms/square. For example, instead of taking the value of 100 Å as proposed by the Board the skilled person could equally have taken a value of 1 μm, leading to a sheet resistance of 105 Ohms/square for a conductivity of 0.1 S/cm, or 10 μm, leading to a sheet resistance of 104 Ohms/square, outside of the claimed range. Reference was also made to decisions T 793/93 and T 204/00 as cited in the Case Law, 6th edition, 2010, page 560. The board, however, cannot agree with the above arguments. According to document D3, the electrical conductivity of the conductive polymer layer is 0.1 S/cm or less […]. In particular, it is disclosed in D3 that “it is known that the conducting polymer of the general formula (2) has an increased electrical conductivity when doped with impurities such as sulfuric acid, iodine, iron (II) chloride, etc. It is also known that, in the state in which the electrical conductivity is increased as described above, absorbance in a visible wavelength region is also increased and optical transmittance is greatly reduced to lose transparency. Therefore, the doping is not preferably carried out when a light emitted is to be taken out from the conducting polymer side of the EL device. Since the absorption spectrum correlates with the electrical conductivity, the electrical conductivity is preferably 0.1 S/cm or less”. Conductivity values outside the range of 0.1 S/cm or less are in fact not disclosed in D3 and only this range is claimed in D3. As to the thickness of the conductive polymer layer, document D3 discloses, with respect to the embodiment of figure 2 of relevance in the present case, “for example, 50 angstroms to 10 micrometers and preferably 100 angstroms to 1 micrometer to increase a current density so as to increase a light emitting efficiency” […]. Moreover, as pointed out above, a number of specific examples are provided […] in which example 11 with a layer thickness of 100 Å is indicated to provide the best results in terms of the uniformity of the emitted light. Accordingly, a conductive polymer layer having a thickness of 100 Å and a conductivity of 0.1 S/cm or less is an embodiment of document D3. It is noted that, contrary to what the appellant’s arguments would appear to suggest, in D3 no selection from two or more lists of a certain length has to be made in order to arrive at the specific combination of thickness and 447 | 3398
T 1659/09 – Not Selected
K’s Law – The ebook
conductivity, leading to the sheet resistance value claimed (i.e. a selection according to the “two-lists principle”). In fact, for a thickness of e.g. 100 Å as discussed above, the entire range of disclosed conductivities of 0.1 S/cm or less results in a sheet resistance falling within the claimed range. Accordingly, for the conductivity there is no selection from a list. Even for the thickness of the layer, it is doubtful whether a selection from a list in the sense of the above two-lists principle is present, as in D3 the specific thickness of 100 Å is highlighted as producing a device with the best light-emitting properties (table 1, caption). Neither can it be held that in a further step the skilled person would have to “combine” these parameters using an equation to arrive at a value for the sheet resistance. What is required in the present case in order to arrive at the claimed value for the sheet resistance, is the mere conversion, using a standard equation, of the physical quantities (electrical conductivity and thickness) used in D3 to define the physical properties of the conductive polymer layer into the physical quantity (sheet resistance) used in claim 1 of the present application. Furthermore, it is noted that both the “practical effect of the prior teaching”, as mentioned in the Guidelines for Examination in the EPO, and in the decisions T 793/93 and T 204/00 referred to by the appellant, relate to the case where it cannot be determined with certainty that the outcome of a prior art teaching, for instance a manufacturing process, leads to e.g. a particular parameter value falling within the terms of the claim, as not all conditions are specified. This has, however, no bearing on the present case, as no uncertainty exists as to what might or might not be the result of carrying out the prior art teaching. In fact, the thicknesses and conductivities of the conductive polymer layer are unambiguously specified in D3, and with that the resulting sheet resistance of the layer. Moreover, the appellant’s argument that other thickness disclosed in D3, in combination with a conductivity of 0.1 S/cm, would provide sheet resistances falling outside the claimed range is of no relevance, as for lack of novelty it is not a prerequisite that all embodiments of the prior art fall within the claimed subject-matter. In document D3, however, neither of the first and second charge-carrier injecting layers (2, 4) is “patterned so as to comprise spaced-apart charge-injecting regions” as defined in claim 1. Accordingly, the subject-matter of claim 1 of the main request is new over document D3 (A 54(1) EPC 1973). Inventive step [2.3] As discussed above, the subject-matter of claim 1 differs from document D3 in that at least one of the charge-carrier injecting layers is patterned so as to comprise spaced-apart charge-injecting regions. The effect of hereof is that the electroluminescent device can produce a patterned image. In view of the above, the objective problem to be solved relative to D3 is to make the organic electroluminescent device of D3 suitable for displaying a patterned image. However, as also acknowledged by the appellant, patterning is common in organic electroluminescent devices. Moreover, it would be obvious to a person skilled in the art working in the field at issue of electroluminescent devices, to pattern at least one of the charge-carrier injecting layers so that it comprises spaced-apart chargeinjecting regions providing the desired patterned image. The appellant argued that document D3 did not provide a patterned charge-carrier injecting layer and was not concerned with resisting lateral spreading of charge carriers beyond charge-carrier injecting regions and blurring of the display image. Thus, the skilled person would not have been motivated to consider the sheet resistance of the polymer layer, and would therefore not be taught to combine the parameters of conductivity and layer thickness in the manner suggested by the board. In fact, document D3 was concerned with the uniformity of the display [...]. Accordingly, it was not a suitable starting point for an assessment of inventive step. It is however noted that also with a patterned charge-carrier injecting layer, applying the teaching of document D3 regarding the conductive polymer layer, i.e. providing a layer of 100 Å with a conductivity of 0.1 S/cm or less, results in a conductive polymer layer with a sheet resistance within the claimed range and which, consequentially, adequately resists lateral spreading of charge carriers beyond charge-carrier injecting regions and prevents blurring of the display image. Moreover, it is noted that the uniformity of the light emission of the organic electroluminescence display device, the light emitting efficiency and luminance addressed in D3 are equally important properties for a display device providing a patterned image. Since in D3 the conductive polymer layer, in particular its conductivity and thickness, is selected so as to optimise these properties, it would
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T 1659/09 – Not Selected
K’s Law – The ebook
be obvious to the skilled person to use the same conductive polymer layer for a display device providing a patterned image. The subject-matter of claim 1 according to the main request, thus, lacks an inventive step in the sense of A 56 EPC 1973. Accordingly, the appellant’s main request is not allowable. First auxiliary request [3] Claim 1 according to the first auxiliary request includes with respect to claim 1 of the main request the following addition: “excluding electroluminescent devices wherein the unpatterned conductive polymer layer comprises polyaniline emeraldine salt”. The above addition to claim 1 is an undisclosed disclaimer intended to confer novelty over D2, which is considered as comprised in the state of the art under A 54(3) EPC and A 54(4) EPC 1973. However, according to G 1/03 [order 2.3] “a disclaimer which is or becomes relevant for the assessment of inventive step [...] adds subject-matter contrary to A 123(2)”. Since in the present case the subject-matter of claim 1, disregarding the disclaimer, lacks an inventive step for the reasons given above for the main request, the disclaimer becomes relevant for the assessment of inventive step of the subject-matter of claim 1 according to the first auxiliary request and thus, in accordance with G 1/03 above, adds subject-matter contrary to A 123(2). Accordingly, the appellant’s first auxiliary request is not allowable. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
449 | 3398
T 535/10 – Do Not Cross Tracks
K’s Law – The ebook
T 535/10 – Do Not Cross Tracks 22 Mai 2013
Claim 1 of the patent as granted read: A mirror (1) comprising a first transparent glass plate (4) at least partly provided on the rear side with a reflecting coating (2) as well as at least one integrated electrical means (6), wherein
the first glass plate (4) comprises transparent and/or half-reflecting portions (8), the first glass plate (4) is bonded to a second glass plate (10) with the aid of a transparent adhesive layer (12) in the form of a laminated glass pane, and electrical means (6) are mounted on an electrically conducting coating (14) of the second glass plate (10) in portions opposite the transparent and/or half-reflecting portions (8) of the first glass plate (4).
In what follows the Board examines whether this claim involves an inventive step: *** Translation of the German original *** [5.1] D1 […] discloses a mirror comprising a first transparent glass plate (2) provided on the rear side with a reflecting coating as well as integrated electrical means (7-10), wherein the first glass pate (2) is bonded to a second glass plate (1) with the aid of a transparent adhesive layer (5,6) in the form of a laminated glass pane and the electrical means (7-12) are mounted on an electrically conducting coating of the second glass plate (1). The mirror according to claim 1 differs from the one known from D1 in that
the first glass plate comprises transparent and/or half-reflecting portions, the adhesive layer bonding the two glass plates is transparent,
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T 535/10 – Do Not Cross Tracks
K’s Law – The ebook
the electrical means are mounted in portions opposite the transparent and/or half-reflecting portions of the first glass plate
The [patent proprietor] has submitted that in D1 the coating was at the same time the electrical means and that, consequently, there was no electrical means within the meaning of claim 1 on the coating. However, the electrical means comprises not only the coating itself but also collectors that are distinct from the coating, such that even on the coating there are collectors and electrical means, respectively. [5.2] Starting from D1 as closest prior art the problem underlying the invention can be considered to be the design of a mirror suitable for use in a damp room (Feuchtraumnutzung) that can possess various integrated electric functions […]. [5.3] The [opponent] has referred to D11, D12, or D13 for solving this problem. D11 […] discloses a rear-view mirror wherein a monitor (6) in the form of an LCD display is arranged behind a reflector (Spiegelscheibe) (4) that is half-silvered in this zone. D12 […] discloses a a rear-view mirror wherein a camera (14), in particular a CCD-camera, that is arranged behind a reflector (4) that is half-silvered in this zone […]. D13 […] discloses an interior rear-view mirror for a vehicle comprising half-silvered zones in which symbols can be made apparent by illumination by means of illuminating means (Leuchtmittel) […]. The illuminating means can be LEDs (72-78) that are mounted in a housing that is glued onto the back of the mirror opposite the half-silvered zones […]. [5.4] First of all the Board notes that the skilled person has no reason to combine these teachings, which all concern rear-view mirrors for vehicles, with the teaching of D1 concerning mirrors that are mainly used in damp rooms […]. Moreover, as is well-known, the electrical devices that are disclosed in D11 to D13 have a depth such that they cannot be integrated between two glass plates; therefore, a skilled person would not consider the incorporation of the electrical means known from these documents between the two glass plates of a mirror according to D1. [5.5] The [opponent] has expressed the opinion that the skilled person knew from D16 […] that electrical means, and in particular illuminating means that implement LEDs, may have such small overall size (Baugröße) that they may very well be incorporated between two glass plates. However, the overall size of LEDs is not comparable to that of an LCD display or a CCD-camera. Thus a combination of D1 and D11 or D12 can be ruled out, even taking account of D16, because of the required overall size. [5.6] Moreover, D13 does not disclose a second glass plate that is bonded to a first glass plate in the form of a laminated glass pane and that comprises an electrically conductive coating on which the electrical means are mounted. Even if the skilled person understood from D16 that LED illuminating means may be made much more flat than what is shown in D13, this does not alter the fact that D13 teaches to provide the illuminating means behind the mirror plate and only opposite the symbols that are to be illuminated. However, if the skilled person proceeded according to D16 when providing an LED module between the two glass plates of D1, then he would provide the LEDs together with the conductive layer on the front glass rail (vordere Glasbahn) 2, as disclosed in D16 […]. The teaching of D13 would not lead him to mount the electrical means directly on the second rear glass plate of D1, which already comprises an electrically heatable layer. Even if the skilled person tried to combine D1 and D13, the resulting combination would not lead in an obvious way to the claimed subject-matter, even taking account of D16. [5.7] The [opponent] also explained that a combination of D13 with D16 would make the claimed subject-matter obvious. First of all, it has to be noted that the claimed subject-matter is a mirror for use in a damp room. D13 does not disclose such a mirror. Thus the Board is of the opinion that D13 is not a suitable starting point for the claimed invention.
451 | 3398
T 535/10 – Do Not Cross Tracks
K’s Law – The ebook
It is true that D16 […] discloses that the first glass substrate, which carries the LEDs, may be protected by a second substrate, which might also be made of glass. The document does not disclose how the second substrate is deposited onto the first. Neither document suggests connecting the substrates by means of a transparent adhesive layer in the form of a laminated glass pane. Moreover, [the Board] does not understand why the skilled person wishing to replace the illuminating means known from D13 by an LED module as known from D16, would provide a carrier substrate for the LEDs that would be greater than the housing for the illuminating means shown in D13. In this context, the [opponent] has explained that the skilled person would proceed in this way in order to make the mirror suitable for use in a damp room. However, this argument cannot be endorsed. There is no reason to make an interior rear-view mirror suitable for use in a damp room. This would lead to rebuilding said mirror for a completely different use. Such a way of proceeding cannot be obvious. Although the skilled person is completely free in the choice of a starting point, he is later bound by this choice. If a skilled person choses a specific interior rear-view mirror for a car as starting point, he can pursue its development, but the normal outcome of this development will in the end still be a rear-view mirror for a car and not a mirror suitable for use in a damp room (see T 570/91 [4.4]). A conscious choice, i.e. a choice made in full awareness of the advantages and drawbacks of the different species (Gattungen), not only determines the subject-matter serving as starting point but also the framework of the development, i.e. a development within this species. In the course of the development a change from the consciously chosen species to another, which was known before but which had not been chosen, is unlikely and, as a rule, not obvious (T 817/94). The [opponent] has also explained that the claimed subject-matter was obvious over a combination of D16 with D13. However, as already explained above, a document belonging to another species (here: an LED module) normally cannot be considered as a realistic starting point for creating a mirror (T 870/96). [5.8] Moreover, [the opponent] based an attack on a combination of D5 and D8. D5 […] discloses a mirror comprising a transparent glass plate (12) partly provided on the rear side with a reflecting coating (14) as well as at least one integrated electrical means (30), wherein the glass plate (12) comprises transparent portions and the electrical means (switch and lamp) are mounted on an electrically conducting coating (30) on the back of the first glass plate in the transparent portions. These means are fixed onto the glass plate with through-holes (22, 24) and protrude from the glass plate. D8 […] discloses a surface display (Flächendisplay) for illuminating background surfaces. This document does not disclose that the transparent conductor plate (Leiterplatte) (12) should be a mirror, nor that it is a glass plate. The housing (10) is filled with sealing compound (Vergussmasse) made of transparent materials. It is the conductor plate (12) that carries the electrical means. There is no second glass plate. Neither document shows two glass plates that are bonded in the form of a laminated glass pane or that the electrical means are mounted on an electrically conducting coating of the second glass plate in portions opposite the transparent and/or half-reflecting portions of the first glass plate. Thus the combination of both documents cannot have these features either and cannot, therefore, lead to the claimed subject-matter in an obvious way. [5.9] As none of the attacks submitted [by the opponent] lead to the subject-matter of claim 1 in an obvious way, [the Board found] the opponent’s assertion that the subject-matter of claim 1 did not involve an inventive step unpersuasive. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 724/08 – Hard To Find – So What?
K’s Law – The ebook
T 724/08 – Hard To Find – So What? 21 Mai 2013
In this case the Board inter alia discussed the admissibility of documents filed together with the statements of ground of appeal. *** Translation of the German original *** [3.1] The main purpose of inter partes appeal proceedings is to offer the losing party the opportunity to contest the decision of the Opposition Division (OD) that adversely affects it and to have the correctness of this decision reviewed in proceedings that are completely separate from and independent of the first instance proceedings (see e.g. T 34/90, G 9/91 and G 10/91 [18]). As the nature of appeal proceedings is that of proceedings before an administrative court (G 7/91 and G 8/91) the decision of the Board of appeal shall in principle be based on the disputed matter (Streitstoff) of the first instance. As far as new submissions of a party in appeal proceedings are concerned, this principle means that the admission of such submissions is not ruled out but depends on the fulfilment of certain requirements (see e.g. T 356/08 [2.1.1]; T 1685/07 [6.4]; Brigitte Günzel “The treatment of late submissions in proceedings before the boards of appeal of the EPO”, OJ EPO, Special edition 2/2007, 30). An opponent whose opposition has not been successful in the first instance may file new prior art documents during the appeal proceedings, but it has no entitlement to these submissions being admitted into the appeal proceedings. Rather, the admission of new submissions depends on whether certain requirements have been fulfilled and is within the discretion of the Board. [3.2] These principles are expressed in Articles 12(4) and 13 RPBA. As the [opponent] has filed documents D10/10a and D11/11a together with its statement of grounds of appeal, Article 12(4) is the relevant provision in the present case. [3.3] Pursuant to Article 12(4) RPBA, without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under Article 12(1) RPBA shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in Article 12(2) RPBA. Accordingly, in application of Article 12(4) RPBA, the Board is entitled, in the present case, not to admit into the proceedings documents D10/10a and D11/11a, which the [opponent] has cited for the first time in the statement of grounds of appeal, if this evidence could have been filed in the course of the first instance proceedings. [3.4] In its statement of grounds of appeal the [opponent] has for the first time based its objection of lack of inventive step of the claims of the patent as maintained by the OD inter alia on documents D10/10a and D11/11a. The claims of the patent as maintained correspond to the second auxiliary request filed during the OPs before the OD. The amendment with respect to the impugned patent as granted consists in the combination of claims 1 and 3 as granted to claim 1 as amended and the corresponding renumbering of the claims as granted. Thus the Board is of the opinion that the patent as maintained in amended form by the OD does not contain any amendments that raise new aspects with respect to the impugned patent as granted. It is, therefore, not clear to the Board to which extent the submission of documents D10/10a and D11/11a could be a reaction of the [opponent] to this second auxiliary request. Rather, the [opponent] has made the objection of lack of novelty already when filing its opposition, and, therefore, these documents could have been filed in the course of the first instance proceedings or even – as argued by the [patent proprietor] – within the time limit for filing an opposition. It is not relevant in this context whether the [opponent] has indeed received these Japanese patents and the corresponding “Patent Abstracts of Japan”, respectively, at a later time or whether these documents were indeed hard to find, because this cannot [change the situation] to the detriment of procedural economy and the principle of fairness with respect to the other party. Just as a patent proprietor is required to file amended claims during the first instance opposition proceedings, an opponent has to submit objections to claims as granted during the first instance. If it does submit such objections only when filing the statement of grounds of appeal, as in the present case, then it takes the risk of the Board making use of its discretion pursuant to Article 12(4) RPBA not to admit these submissions into the appeal proceedings.
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T 724/08 – Hard To Find – So What?
K’s Law – The ebook
When exercising this discretion, the Board can make the admission of a submission of a prior art document into the appeal proceedings dependent on whether this prior art document is prima facie relevant. However, the Board does not have to do so; otherwise an opponent could always file a (highly) relevant prior art document together with the statement of grounds of appeal without further ado and rely on its admission into the appeal proceedings, because of its relevance. In the present case the Board left aside the question of the relevance of documents D10/10a and D11/11a, which had been discussed by the parties, because, for reasons of procedural economy and also [of fairness] with respect to [the patent proprietor], it did not consider it to be justified to admit these documents - which have been found accidentally and which had not been specifically (gezielt) searched at an earlier stage of the proceedings - into the appeal proceedings, regardless of their relevance. [3.5] For the above reasons documents D10/10a and D11/11a have not been admitted into the proceedings, in application of Article 12(4) RPBA. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 2373/11 – All Too Literal
K’s Law – The ebook
T 2373/11 – All Too Literal 20 Mai 2013
This is an appeal of an applicant whose application had been refused by the Examining Division (ED). The applicant explained that he had been deprived of oral proceedings (OPs). *** Translation of the German original *** Violation of the right to OPs [2.1] According to the established case law of the Boards of appeal, in examination proceedings the ED has to grant a request for OPs pursuant to A 116 on behalf of an applicant before it can issue a decision that adversely affects the latter, such as a decision to refuse [its application]. In view of the wording of A 116 the ED has no margin of discretion at all. This obligation that is derived from the fundamental procedural principle of the right to be heard has also found an expression in A 112a(2)(d) in connection with R 104(a), in the context of substantial procedural violations. [2.2] In its response dated August 20, 2009, the [applicant] had filed a request for a “hearing” (“Anhörung”) in case the ED intended to refuse the present application […]. According to the impugned decision the ED was, however, of the opinion that a request for a hearing could not be considered to be a request for OPs pursuant to A 116 and that [the applicant] was not legally entitled to an oral hearing under the EPC […]. [2.3] In this context, however, the impugned decision does not indicate anywhere how the term “hearing” would have to be concretely interpreted, i.e. what the ED understood the request for a hearing to actually mean. In particular, it is not clear from the decision whether the request for a hearing was considered to be a request for an informal personal or telephone interview, which the ED, as a rule, is not obliged to grant (see the Guidelines of April 2010, C-VI, 6.2; C-VII 2.1 as of June 2012). [2.4] According to the relevant case law, a request for a “hearing” can on the one hand be understood to be equivalent to a request for “OPs” within the meaning of A 116(1) (cf. T 417/00 [2.3]; T 1829/10 [2.4]) and, on the other hand, can be a request for OPs or an informal interview (cf. T 917/93 [3]). Therefore, the Board can accept that it was not unambiguously clear to the ED, when it was faced with a request for a “hearing” considered literally and at first sight - that this was beyond doubt a request for OPs. [2.5] It is true indeed that the applicant would have been well-advised to make its request in an unambiguous way (e.g. by expressly using the expression “OPs” and/or [a reference to] A 116). However, as the relevant procedural right is so fundamental, the ED would have had to ask the applicant for a clarification if there was the slightest doubt that what had been requested was indeed OPs or not (cf. T 19/87 [5]; T 668/89 [3]; T 417/00 [2.3] T 1829/10 [2.4]). In the present case this was not done. [2.6] Rather, the communication of the ED dated July 13, 2010, made the applicant believe that summons to OPs were to be expected as the next procedural step, unless the claims were substantially amended in view of the objections that had been raised […]. NB: The communication contained the following statement: “As the objections of the ED have already been explained in detail and discussed during the international phase, the next proedural step will be the summons to OPs unless the claims are substantially amended in view of the objections that have been raised.” Thus the applicant was right in assuming that its request for OPs had been understood as a request for OPs and that there was no further need for clarification as to the request for a hearing. Thus the applicant was surprised by the fact that there were no summons to OPs before the final decision on the case was issued, all the more as the amendments to the claims the applicant had filed in response to the above communication only comprised “linguistic adjustments” and did not correspond to substantial amendments […]. Under these circumstances the ED should have summoned OPs or at least clarified [the situation] before taking the decision to refuse [the application]. The refusal without prior summons to OPs or clarification constitutes a procedural violation. 455 | 3398
T 2373/11 – All Too Literal
K’s Law – The ebook
[2.7] In view of the question whether the case was to be remitted and the appeal fee reimbursed, it is necessary, according to the established case law of the Boards of appeal, to distinguish between a “substantial procedural violation”, which objectively affects the whole proceedings (cf. J 7/83 [12]) and a subjective “error of judgment” (Fehleinschätzung) of the first instance (see, e.g. T 19/87 [5]). The Board is of the opinion that, in principle, an “error of judgment” occurs only when the first instance, despite its desire to assess a case subjectively “correctly” and despite all due care, reaches a decision on a request that is objectively “wrong”. However, this is not what has happened here. As a matter of fact, the ED, when interpreting the request for a “hearing”, has limited itself to a literal interpretation instead of trying to understand this – apparently not completely unambiguous – request. Moreover, the subjective interpretation of the term “hearing” has not even be justified (see point [2.3] above). The ED only explained that there was no legal right to a hearing under the EPC. If this logic was to be followed, for instance, “auxiliary requests” of a party could be ignored because they are never mentioned expressis verbis in the EPC and, therefore, would have to be considered inadmissible. Thus the ED has not made a serious effort to assess the facts in a manner that is as objective as possible. Moreover, the ED did not strive to clarify the factual situation in regard of all the doubts it might have had, e.g. by means of a telephone call (cf. point [2.5] above). Thus the Board is of the opinion that [the ED] has not exercised all due care and has accepted the case to remain pending for several years because of an all too literal interpretation instead of obtaining a final first instance decision on this case by means of OPs – which can, as a rule, be carried out within a day. Moreover, by conditionally announcing OPs, it has raised wrong expectations in the applicant and, consequently, has objectively mislead it, thereby violating the generally accepted prohibition of “venire contra factum proprium”. [2.8] Therefore, the Board is of the opinion that [the ED] has objectively violated the inalienable right of the applicant to OPs, which is anchored in A 116(1). This amounts to an infringement of a procedural principle of the EPC and, therefore, to a procedural violation. As this procedural violation has deprived the applicant of the opportunity to overthrow the negative opinion of the ED by filing new arguments and/or requests during OPs terminating the examination proceedings, and therefore to have a decisive influence on the first instance decision, this has to be considered to be a substantial procedural violation. [2.9] Thus the impugned decision has to be set aside, for the reasons given above. The Board decided to remit the case to the ED. It then dealt with the request for reimbursement of the appeal fee: [4] As the appeal has to be allowed and as the first instance has committed a substantial procedural violation (see points [2.8-9] above), the question of whether the appeal fee has to be reimbursed requires the assessment, in application of R 103(1)(a), whether such a reimbursement is equitable, i.e. if there is a causal link between the substantial procedural violation and the need to file an appeal. In this context it has to be noted that during the examination proceedings the applicant has not behaved in a way that would raise suspicions as to whether it intended to delay the proceedings or to commit a procedural abuse. Rather, it has responded to the communications of the ED in due time by filing amended claims and counterarguments […]. Moreover, during OPs the applicant would have had a very last opportunity of avoiding a refusal by filing further amendments or counter-arguments. As the ED has deprived it of this very last opportunity by not summoning it to OPs, it had to file an appeal against the decision to refuse [its application] in order to safeguard its right to OPs and to avoid a final refusal of the application, respectively. Thus the Board is of the opinion that there is a causal link between the substantial procedural violation committed [by the ED] and the filing of the appeal and the payment of the appeal fee, respectively. Therefore, it is also equitable to reimburse the appeal fee pursuant to R 103(1)(a) in this case. NB: The Board has provided a headnote: In case an organ of the EPO has doubts whether a party has required OPs (e.g. when a “hearing” has been requested), it has to clarify the situation in order not to commit a substantial procedural violation (see points [2.4-7]) Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1125/10 – Passivity Breeds Doom
K’s Law – The ebook
T 1125/10 – Passivity Breeds Doom 17 Mai 2013
This is a revocation appeal. When summoning the parties to oral proceedings (OPs), on October 16, 2009, the Opposition Division (OD) expressed its provisional opinion according to which the prior art on file did not destroy the novelty and inventive step of the claim of the opposed patent. The proprietor informed the OD on December 12, that it would not attend the OPs. On February 12, 2010, the opponent cited new documents E6 and E7. The OPs were held on March 4, in the absence of the patent proprietor. At the end, the OD revoked the patent. The patent proprietor filed an appeal as well as new requests taking into account E6 and E7. It finally decided not to attend the OPs before the Board. The Board found these requests to be inadmissible. *** Translation of the French original *** [1.1] Claims 1 of the main request and of auxiliary requests 1 to 3 have been amended by introducing the subject-matter of claims 5, 7, and 8 of the patent as granted (which correspond to original claims 5, 7, and 8). During the appeal proceedings [the patent proprietor] has presented no argument whatsoever in support of the inventiveness of claim 1 of the patent as granted. The [patent proprietor] does not contest that the decision of the first instance to revoke the patent on the ground of lack of inventive step of said claim was correct. [1.2] In such a case where the patent proprietor requests the Board of appeal to examine new requests, the question arises whether these requests could have been filed in the course of the first instance proceedings, and 457 | 3398
T 1125/10 – Passivity Breeds Doom
K’s Law – The ebook
their admission into the proceedings is within the discretion of the Board of appeal, which is entitled “to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings” (Article 12(4) RPBA). [1.3] This discretionary power has to be exercised in view of the purpose of appeal proceedings, which are distinct from and independent of the first instance proceedings and aim at delivering a judicial decision on the validity (bien-fondé) of a decision issued beforehand by the first instance department. Thus the appeal gives the losing party the possibility to contest the first instance decision (G 9/91) and aims at removing the “adverse effect” (“grief”) by modifying or setting aside the impugned decision. As a consequence, a party cannot decide to present its case only before the second instance department. This would be tantamount to “forum shopping” and would jeopardize the normal distribution of functions between the first instance departments and the Boards of appeal (cf. T 1067/08 [7.2, 8.1]). Also, a party cannot compel [a Board] to remit the case to the first instance as it likes (T 240/04 [16.1-2]). Filing requests that could have been filed in the course of the first instance proceedings is also contrary to the principle according to which no party may take advantage of its own negligence (nemo auditur turpitudinem propriam allegans – T 1705/07 [8.7]) [1.4] The following particular elements of this case are relevant in this regard: [1.4.1] E6 and E7 have a publication date before the priority date of the opposed patent and, therefore, belong to the state of the art according to A 54(2). The passages cited by the opponent immediately reveal that the content of these two disclosures had the potential to overturn the provisional opinion of the OD because of the light they shed on the information contained in D1 in regard of the “dual phase” steels, even in case the documents had been cited for the first time during the OPs. [1.4.2] The amendments of claims 1 consisting in a combination of the independent claim with one or several dependent claims were possible and appropriate during the opposition proceedings. The amendments are not surprising and do not give rise to particular problems. Such amendments can be made during an interruption of 10 to 15 minutes, which is a normal reaction during OPs before the OD. [1.4.3] Unlike the situation dealt with in decision G 4/92, the [patent proprietor] was aware of the fact that two new documents were introduced by the opponent […] and of its arguments (at least) three days before the date on which the OPs were to be held. Thus, the [patent proprietor] had several options other than the filing of the requests comprising the amendments referred to above and in particular in point [1.4.2], such as:
requesting [the Board] not to admit the late-filed documents; requesting a postponement of the OPs; and reconsidering its decision not to attend the OPs.
[1.5] It has chosen none of these options. Even the statement of grounds of appeal did not contain any argument whatsoever related to this lack of reaction. As a matter of fact, the sole argument of the [patent proprietor] was that it believed that the OD should have postponed the OPs in order to allow the patent proprietor to react to the new documents and to their potential effect on the final decision, as three days clearly was much too short a time for preparing OPs in a proper way. [1.6] However, the question to be answered is not so much whether there is a minimum time limit, nor how much time the [patent proprietor] would have needed for preparing the OPs under consideration, which it did not even intend to attend. As far as the discretionary power of the Board to hold inadmissible requests that have been presented for the first time during the appeal proceedings is concerned, the relevant question is whether the fact that the new requests have not already been examined by the first instance department is not due to the latter (here, the OD) but to the party concerned (here, the [patent proprietor]), whose behaviour has de facto hindered [the OD] from examining those requests (as has been stated in case T 1067/08 [8.1]). [1.7] As for the OD, it has acted correctly; [the Board] cannot see any procedural violation. Under the circumstances [of the case], the only possible interpretation of the lack of reaction of the [patent proprietor] was that it was aware of [the situation], relied on the submissions that were on file and left it to the OD to decide according to its discretionary power. The [patent proprietor] knew, or should have known, that its passivity made the opponent and the OD understand that it would not contribute any more to the remaining proceedings. Moreover, the fact that it was very easy to check that the late-filed documents were quite suitable for establishing that a “dual-phase steel” as the one of D1 contained aluminium, that the OD had good reason to accept the documents E6 and E7 that had been filed after the time limit fixed pursuant to R 116(1) and to maintain the OPs
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T 1125/10 – Passivity Breeds Doom
K’s Law – The ebook
and that it had no reason to postpone the OPs. Quite to the contrary, as things stood, the public and the parties could expect a decision to be taken without any further delay. [1.8] As to the admissibility of the new requests filed before the Board of appeal, it clearly follows from the above that it was the sheer passivity of the [patent proprietor] in the presence of new and clearly relevant documents that caused the OD not to take a reasoned decision on the subject-matter of the claims as amended in response to these documents, and that, as a consequence, the Board of appeal is in a position where it either would be the first and last instance to decide, or had to remit the case to the first instance, despite the fact that the [patent proprietor] again did not attend the proceedings. Moreover, a discussion of and a decision on the requests in the appeal proceedings would offer the [patent proprietor] the possibility of remedying an omission for which it is responsible, for its sole benefit and to the detriment of the interest of the [opponent] and the public to have an immediate decision on the case. [1.9] Consequently, the admission of the requests would be contrary to the purpose of appeal proceedings and the principles that govern it (see [1.2] above). Thus the Board of appeal makes use of its power to hold them inadmissible. [1.10] As a consequence, there is not text submitted or agreed upon by the patent proprietor within the meaning of A 113(2). […] The appeal is dismissed. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here. NB: This case has already been presented on Le blog du droit européen des brevets (here).
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T 42/10 – Not Amused
K’s Law – The ebook
T 42/10 – Not Amused 16 Mai 2013
This is an examination appeal. Claim 1 of the main request read: A computer-implemented method of determining an indication of the relative skill (205) of at least a first player and a second player of a game based on the outcome of one or more such games involving those players said method comprising the steps of: (i) arranging a processor (204) to, for each player, set statistics (200) describing a probability distribution associated with skill of that player to default values; (ii) at the processor (204) receiving information about the outcome (201) of one of the games; (iii) arranging the processor (204) to form and store a factor graph comprising variable nodes and factor nodes, the factor nodes having associated calculation rules, said graph being formed using the received information about the outcome, and arranging the processor (204) to instantiate at least some of the variable nodes with the statistics; and arranging the processor to form and store the factor graph such that it comprises a plurality of first groups of nodes, each first group being associated with a particular player and comprising nodes linked in series; and (iv) arranging the processor (204) to update the statistics associated with each player by applying message passing to the factor graph using the calculation rules; (v) arranging the processor to repeat the process of updating the statistics as further game outcomes are received The Board found this claim to lack inventive step. The decision has some interesting statements on technicality and contains a brief discussion of Gale’s application, a 1991 decision of the Court of Appeal of England and Wales. [2.1] Claim 1 according to the main request defines a method that, based on outcomes of games, calculates indications of the skills of the players, by passing messages between nodes of a factor graph. It is necessary to determine in how far the features of the claim have technical character and so could contribute to inventive step. [2.2] The [applicant], relying on T 619/02 [2.4.1], argues that the method of assessing player performance is technical by virtue of being a method of measuring. [2.3] The board notes that T 619/02 does not say that all methods of measuring are technical. It must therefore be assessed whether the measurement can be accepted as technical in the present case. [2.4] The term “measurement” is rather broad. It encompasses finding the spectrum of the hydrogen atom, or the salinity of sea water; but also whether one political party is more or less popular than another. In T 619/02, the measurement was of reactions to odours, and it was found to be non-technical. The [applicant] seeks to distinguish the present case, arguing that the reasons for rejecting the method in T 619/02 do not apply to the present case, because there are no psychological assessments involved. [2.5] In the Board’s view, the lack of psychological assessments cannot, alone, be determinative. What is needed is a technical problem and a technical solution to it, i.e. a technical effect. However, judging the skill of a game player does not seem to involve a physical change at all, still less a technical effect. [2.6] In this context, the [applicant] argues that the measurement of player performance might involve the measurement of hand-eye coordination or of reaction times. However, the claimed method does not measure reaction times, or use it to deduce information on performance. Nor does it take the information on performance 460 | 3398
T 42/10 – Not Amused
K’s Law – The ebook
and deduce anything about reaction times. The reaction time is never known. The same goes for hand-eye coordination. In fact, the claimed method is in no way limited to games in which reaction time or hand-eye coordination are important. It applies to chess as much as to football, and to poker as much as to pinball. [2.7] The Board, therefore, sees clear reasons for considering the measurement of performance in games as nontechnical. [2.8] The [applicant’s] second argument is based on T 717/05 [5.9], in which it is stated that “amusement is the psychological purpose of a gaming apparatus and is the relevant objective technical problem to the extent that the enhanced amusement is achieved by technical features of the claim.” [2.9] In T 717/05, the deciding Board did indeed hold that the step of monitoring outcomes of games was a technical feature, but only in combination with the step of displaying them (paragraph [5.6] with paragraph [4.5]). The displaying step was necessary, since it permitted the player to be informed about the development of the game, thus addressing the problem of maintaining interest (paragraph [5.1]). The present claim, however, does not require the players’ scores to be displayed, but only to be calculated. For this reason alone, T 717/05 does not appear to be relevant. A more basic reason is that the Board has strong doubts that amusement, even if achieved by technical (in particular, computing and displaying) means, really is a technical problem. If it were, any dull computer game could be regarded a posing a technical problem that could be solved by any less dull game. The difficulties involved in such a view are evident (the skilled person need not be skilled in a technical art; the effect would be subjective), and the decision has been largely ignored in the jurisprudence of the Boards of Appeal. T 528/07, expressly declined to follow the approach taken in T 717/05. [2.10] The [applicant’s] third argument is that factor graphs, and the associated message passing algorithm, are technical. They address the technical problem of speeding up computation. [2.11] In its full generality, speed of computation is a mathematical problem. It may be the case that a computer has a particular processor that is particularly good, or particularly poor, at some (class of) operations. Recasting a mathematical method so as to take advantage of what the processor does quickly, or to avoid what it does slowly, might involve technical considerations. In such a case, the recast method, when performed on that particular processor, might not be “just” mathematical but also be technical. However, not all recasting of mathematical methods in order to increase speed are technical. In the days when people looked up trigonometric functions in tables, recasting a method so as to reduce the number of times the tables had to be consulted might speed up computation, but nothing technical was happening. [2.12] The [applicant] has not provided any evidence that there really is an increase in speed of computation. There is no analysis of the complexity of any prior art method of performing the same sort of calculation, and there is none of the complexity using factor graphs. Nor has the [applicant] provided any evidence for its assertion that the increase in speed would only be obtained on a computer, whereas calculations by hand would be slower. However, the Board also considers that, even if the increase in speed were established, it would not be an increase which solved a technical problem, and that is enough to reject the argument. According to the application […], it does not matter what sort of technical apparatus is used to perform the calculations. What matters is only the ability to carry out the necessary steps. It follows from that, that any improvement in speed is inherent in the method of calculation. It does not result from exploiting ability or avoiding some lack in the computer. At best, if the [applicant] is correct, and there is an increase in speed which only occurs on computers, it is a matter of abstract computer science. [2.13] During oral proceedings before the board, Re Gale’s Application was briefly discussed, and the Board finds it useful to comment on it. [2.13.1] Mr Gale had found an algorithm for calculating square roots, which he had implemented as a computer program. The court was concerned with the question of whether that was excluded under Section 1(2) of the Patents Act 1977. That provision gives effect, in UK law, to A 52(2). Lord Justice Nicholls delivered the lead judgment. He found that the program did not “embody a technical process which [existed] outside the computer,” and that although the computer “will be a better computer when programmed with Mr Gale’s instructions,” it did not “solve a ‘technical’ problem lying within the computer.” [2.13.2] The Board’s approach to assessing questions of what is and what is not technical about a computerimplemented method, in this case, asks the same questions as Nicholls LJ in Re Gale’s Application. The first is: what does the method as a whole do, and does it produce an overall technical result? The second is: if there is no overall technical result, does the method at least have a technical effect within the computer? If both questions are answered in the negative, no technical problem has been solved and there can be no inventive step. 461 | 3398
T 42/10 – Not Amused
K’s Law – The ebook
[2.14] The Board’s view regarding technicality can be summarized as follows. [2.14.1] The overall aim of keeping players interested is not technical. [2.14.2] The intermediary aim of assessing and comparing playing performance is not technical. [2.14.3] The representation of performance by probability distributions, and the updating of them, are mathematical methods. [2.14.4] The use of factor graphs with message passing is a matter of mathematics or abstract computer science. [2.15] Given the Board’s conclusions regarding technicality, the only technical feature defined in this claim is the (computer) processor. The subject matter of claim 1, therefore, does not involve an inventive step if it would have been obvious to the skilled person, who has the task of implementing the method, to use a computer processor. [2.16] It is not disputed that suitable computer processors were well known at the filing date (10 February 2006). The skilled person would have been aware that they would be able to carry out the mathematical operations involved in forming a factor graph and passing messages between nodes. Indeed, the method involves the collection of data, possibly large amounts of data, and the carrying out of calculations on it. That is just what computer processors were designed to be good at. It would, then, have been obvious to use them. [2.17] The [applicant’s] argument that online Bayesian learning was not (well) known at the filing date does not affect the conclusion, even if correct. That is because the Bayesian learning is already part of the non-technical method the skilled person is required to automate. [2.18] The [applicant’s] other argument, that there is a reduction in network traffic also fails to affect the Board’s conclusion. Firstly, there is no evidence of a reduction. Secondly, if there is an effect on network traffic, it is an effect that is obtained in any technical implementation that uses a communication network at all, rather than one that belongs to some particular (claimed) such implementation but not to others. [2.19] The main request, therefore, cannot be allowed, because the method defined in claim 1 does not involve an inventive step. Should you wish to download the whole decision, just click here. The file wrapper can be found here. NB: There is a parallel case, T 1281/10.
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T 99/09 – Not Quite Invisible
K’s Law – The ebook
T 99/09 – Not Quite Invisible 15 Mai 2013
This is a revocation appeal. Claim 1 of the main request was identical to claim 1 as granted and read: Immediate release fenofibrate composition with a dissolution of at least 10% in 5 minutes, 20% in 10 minutes, 50% in 20 minutes and 75% in 30 minutes, as measured in accordance with the rotating blade method at 75 rpm according to the European Pharmacopoeia, in a dissolution medium consisting of water with 2% by weight of polysorbate 80 or 0.025M of sodium lauryl sulphate. (my emphasis) The Board found this claim to extend beyond the content of the application as filed. *** Translation of the French original *** [5.1.1] Claim 1 of the main request is identical to claim 1 of the patent as granted. This claim refers to an “immediate release” pharmaceutical fenofibrate composition having a certain in vitro dissolution profile. The application as filed did not contain this claim. It turns out that the expression “immediate release” is disclosed in the application as filed only in exclusive association with other structural or functional features:
first, in claim 1 as filed in correlation with other features, i.e. the presence of a “inert hydrosoluble carrier”, “a fenofibrate active ingredient in a micronized form having a particle size less than or equal to 20 µm”, and an in vitro dissolution profile such that it has “a dissolution of at least 10% in 5 minutes, 20% in 10 minutes, 50% in 20 minutes and 75% in 30 minutes, as measured using the rotating blade method at 75 rpm according to the European Pharmacopoeia, in a dissolution medium constituted by water with 2% by weight polysorbate 80 or 0.025M sodium lauryl sulphate”;
then, in paragraph [0015] of the application as published […], in correlation with an “inert hydrosoluble carrier” coated with a layer containing “fenofibrate in a micronized form having a particle size less than 20 µm” and a “hydrophilic polymer”.
Thus the expression “immediate release” is never disclosed in isolation but always in association with certain technical features, in this instance always with at least an “inert hydrosoluble carrier” and “fenofibrate in a micronized form having a particle size less than or equal to 20 µm”. These technical features are absent from the subject-matter of claim 1 of the main request, which, therefore, constitutes a generalisation with respect to the cited passages. The application as filed does not provide any basis for such a generalisation, in this instance for any “immediate release” composition whatsoever having the claimed dissolution profile. Thus a fenofibrate composition according to claim 1 of the main request cannot be directly and unambiguously derived from the application as filed. [5.1.2] According to the [patent proprietor] paragraph [0017] of the application as published […] provides a basis for claim 1 of the main request. This paragraph discloses that the invention also provides a composition comprising fenofibrate having the claimed dissolution profile. [According to the patent proprietor,] the expression “immediate release”, therefore, had to be interpreted as an invisible limitation because the dissolution profile necessarily implied immediate release.
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K’s Law – The ebook
The Board agrees that paragraph [0017] of the application as published […] may serve as a basis for a composition claim that is exclusively based on the dissolution profile. However, this paragraph does not disclose that it is an immediate release composition. Moreover, it is not possible to combine the functional feature of paragraph [0017] of the application as published […] with other structural or functional features isolated from the description when the latter are disclosed exclusively in association with other functional or technical features. This would be tantamount to being able to create a great number of compositions that have no basis whatsoever in the application as filed. Incidentally, the Board cannot agree that the “immediate release” feature is synonymous with the claimed dissolution profile. As a matter of fact, this expression has a technical meaning that is common in the field of galenical pharmacology and allows to categorise the kind of composition to which it applies. In this instance, “immediate release” implies the release of a great quantity of active agent over a very short span of time, or even instantaneously, from a structured galenic formulation after its administration to a patient. This expression allows to distinguish the claimed compositions from compositions which allow to have a “delayed release” or an “extended release” of the active substance, and, therefore, implicitly implies the existence of a galenic formulation that allows immediate or instantaneous release. Although the expression is vague, the “immediate release” feature, therefore, has to be considered to be a functional feature expressing the fact that all the parameters of the fenofibrate composition have to be chosen such that the active substance is released immediately. Incidentally, immediate release does not necessarily imply that the active substance dissolves quickly, because the speed of dissolution depends on the degree of solubility of the active substance. As a matter of fact, the in vitro dissolution profile that is disclosed in paragraph [0017] of the application as published […] defines the speed of dissolution of the fenofibrate and not its speed of release from a galenical formulation; this speed of release depends on the dissolution medium used for the measurement and of the degree of solubility of the active substance. The dissolution profile disclosed in this passage does not necessarily imply the existence of a particular galenic formulation because a pharmaceutical composition containing only fenofibrate, without any limitation as to the galenic formulation of the fenofibrate and/or the presence of excipients, may have this dissolution speed. Thus the dissolution profile cannot be considered to be a synonym of the release mode. Therefore, the expression “immediate release” provides a technical contribution to the claimed subject-matter and cannot be considered to be “invisible”. [5.1.3] As a consequence, claim 1 of the request extends beyond the content of the application as filed (A 100(c)). Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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T 2245/10 – Contradiction
K’s Law – The ebook
T 2245/10 – Contradiction 14 Mai 2013
In this case the Board spent quite some time on the definition of the problem solved and reminds us of some limits to re-formulation. Object of the invention [2.1] The present invention concerns the provision of a composition for administering a taxane to patients suffering from a proliferative disease, in particular malignant melanoma, wherein the toxicity of the taxane should be reduced […]. Closest prior art [2.2.1] At the oral proceedings before the board, the [applicant] initially defined document D15, which discloses the use of DTIC for treating malignant melanoma, as closest prior art. In contrast thereto, the examining division started from document D3, which discloses the use of protein coated taxane particles such as CapxolR (protein coated paclitaxel), which are identical to the particles according to the present invention, for the treatment of diseases such as prostate cancer, orchidectomy, pancreatic cancer and brain tumour […]. [2.2.2] The board, however, notes that in the present case a document should be selected as closest prior art which discloses the use of a taxane for the treatment of malignant melanoma. As a consequence, document D5 constitutes the closest prior art. Document D5 concerns a study in which 25 patients with metastatic melanoma who were previously untreated received Taxol, which contains paclitaxel as active agent […] at a starting dose of 250 mg/m² delivered as a continuous intravenous infusion over 24 hours, at 3-week intervals […]. In contrast to the protein coated taxane particles of the present invention, Taxol according to document D5 was a conventional formulation in which the active agent was stabilised by Cremaphore. As was correctly pointed out by the [applicant] […], the results did 465 | 3398
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not live up to the high expectations of the physicians carrying out this study because of a response rate of below 20% despite a very favourable patient population […]. The authors of document D5 did, however, not conclude therefrom that treatment of such melanoma with Taxol should be discontinued. On the contrary: taking into account the “paucity of other drugs with similar or better activity against melanoma” […], it was recommended to use a Taxol dose of 200 mg/m² as a single agent for the treatment of patients with metastatic melanoma […]. This statement was followed by the conclusions that “Taxol is an interesting drug which, besides showing activity against melanoma, has also shown activity against refractory carcinoma of the ovary” and that “there is considerable potential for Taxol to be a drug with good future”. As a consequence, document D5 qualifies as closest prior art. Problem to be solved [2.3.1] When formulating the problem to be solved with regard to document D5, it has to be evaluated what further effects, if any, are achieved by the selection of protein coated taxane in addition to the reduced toxicity. One direct consequence of the reduced toxicity consists in the possibility to administer higher taxane doses. According to […] the application, the dose administered is “typically larger than doses administered as part of conventional formulation”. This teaching is confirmed by example 27 which concerns a phase I clinical study in which 17 patients suffering from metastatic malignant melanoma are treated with CapxolR. In this study the maximum single dose administered was 375 mg/m², which is much higher than the approved dose of 175 mg/m² for paclitaxel, when administered as Taxol […], and higher than the dose of 250 mg/m², administered in the study according to document D5. However, this aspect cannot be taken into consideration for the definition of the problem to be solved, as claim 1 of the main request does not define the concentration of the taxane to be administered to the patient. As a consequence, the problem to be solved would have to be defined as provision of a taxane composition for treating melanoma, which is characterised by less unwanted side effects. [2.3.2] The [applicant], making reference to post-published document D11 alleged an increased drug efficacy as a further effect that had to be taken into consideration for the assessment of inventive step. In document D11 previously treated patients and CN patients were treated with 100 mg/m² and 150 mg/m² Abraxane (= protein coated paclitaxel corresponding to CapxolR), yielding an overall response of 38% for pretreated patients of 49% for CN patients. This was much higher than the response rates in document D5, which had been achieved with 250 mg/m² of Taxol. It could not be predicted that the same or even lower doses of taxanes would lead to such a significant increase in efficacy of the therapy, in particular with regard to the previously treated patients, who usually showed limited response. Similar results were shown in documents D9 and D10 for docetaxel as active agent. As a consequence, the problem to be solved with regard to document D5 concerned the provision of a less toxic and more efficient taxane composition for treating melanoma. [2.3.3] In this context, the question arises whether this aspect is encompassed by the technical teaching of the original application, which in a primary aspect is concerned with methods for the in vivo delivery of substantially water insoluble pharmacologically active agents in general as well as the provision of dispersible colloidal systems containing water insoluble pharmacologically active agents […]. The treatment of melanoma is a marginal point of the broad and general teaching of the original application and is first mentioned on page 36, where the treatment of proliferative diseases such as psoriasis, multiple sclerosis, vascular restinosis […] or cancers such as malignant melanoma […] can be treated with suitable pharmacologically active agents including taxanes such as paclitaxel or docetaxel […]. It is important to note that this passage also contains the information that the protein coated particles of the present invention reduce myelosuppression and neurotoxicity […], so that the dose of suitable pharmacologically active agent administered to the patient is “typically larger than doses administered as part of conventional formulations” […], which means that this aspect of the original teaching, i.e. treatment of melanoma by administration of protein coated taxane, is linked to the administration of higher than the usual doses. This teaching is put into practice in example 27, which is the only example relevant for the treatment of melanoma by administering protein coated taxane. The board notes in this context that examples 28 and 29, though also mentioning treatment of melanoma, are not relevant for the following reasons: example 28 primarily concerns intra-arterial administration of CapxolR for the treatment of liver tumours and/or solid tumours with local-regional involvement […]. Although the long list of patients suffering from various types of cancers includes patients suffering from melanoma […], these patients do not figure in the list of patients for which a response to the treatment had been observed […]. As a consequence, example 28 is not relevant for the subjectmatter claimed in the main request. Example 29 is not relevant, as it relates to a combination therapy of CapxolR with IL-2. Example 27 concerns a phase I clinical study in which 17 patients exhibiting advanced matastases were treated with CapxolR (containing the taxane paclitaxel). Six patients were suffering from malignant melanoma, the 466 | 3398
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remaining 11 subjects from breast cancer. Starting from an initial dose level of 135 mg/m², the subsequent doses were increased to the next higher paclitaxel single dose level if there were no significant adverse effects in the subject. The maximum single dose administered in this study was 375 mg/m², for which no significant adverse effects were noted. Administration of paclitaxel as protein coated particle at single dose levels as high as from 500 mg/m² or 2000 mg/m² and beyond are contemplated in example 1. [2.3.4] To summarise: the teaching of the original application, which is put into practice in example 27, tells the skilled person to use as high as possible doses of protein coated taxane for the treatment of melanoma. These doses are higher than the doses used for the administration of taxane in conventional galenic forms. [2.3.5] The board notes that redefinition of the problem to be solved is usually permissible, it is even necessary in cases in which prior art is found which is closer to the claimed invention than the prior art cited in the application as filed. Usually, it is also possible to base such a newly defined problem on post-published evidence provided that it is linked to and in line with the original technical teaching. Such a redefinition is, however, not acceptable in cases where the teaching of post-published evidence is used for defining a new technical problem which is in contradiction to the original teaching of the application as filed (T 155/85 [12] and T 115/89 [4, 4th §]). This being the case in view of the fact that the original teaching does not foresee the use of conventional taxane doses for the treatment of melanoma, the problem to be solved concerns, as previously indicated, the provision of a taxane composition for treating melanoma, which is characterised by less unwanted side effects. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1273/09 – No Mere Disbelief
K’s Law – The ebook
T 1273/09 – No Mere Disbelief 13 Mai 2013
In the present decision Board 3.3.04 had to decide on an application in the field of homeopathic drugs. The applicant had filed the appeal after the Examining Division (ED) had refused the application under consideration for lack of novelty and insufficiency of description. Claim 1 before the Board read: 1. A mixture of homeopathic dilutions C12 + C30 + C200 of polyclonal rabbit antibodies against the C-terminal fragment of the angiotensin II receptor for use in treating hypertension. The Board found the invention to be insufficiently disclosed: [2] The only claim of the main request is a claim for a so-called second medical use and reads: “Mixture of homeopathic dilutions C12 + C30 + C200 of polyclonal rabbit antibodies against the C-terminal fragment of the angiotensin II receptor for use in treating hypertension.” [2.1] According to the terminology of homeopathic medicine a homeopathic dilution “C” means that one part of a “mother” solution of a substance – here: a solution of polyclonal rabbit antibodies against the C-terminal fragment of the angiotensin II receptor – is added to ninety-nine parts of a diluent, i.e. normally water or alcohol, and subsequently vigorously shaken. One part of this diluted solution is then further diluted in ninety-nine parts of diluent and shaken and so on. For a “C12” dilution twelve dilution steps are performed, thirty are performed for the “C30” dilution and two- hundred for the “C200” dilution. In homeopathic terminology this process of serial dilutions is called “potenisation”. [2.2] According to homeopathic theory the higher the dilution of a substance is, the stronger its healing effect. Hence, a C200 dilution of a “mother” solution is considered to be more effective than its C12 dilution. Thus, according to homeopathic theory the mixture referred to in claim 1 comprises dilutions of different therapeutic strength. [2.3] It is generally accepted that homeopathic dilutions which are C12 and higher statistically do not contain a single molecule of the substance of the “mother” solution. It was confirmed by the appellants at the oral proceedings that this also applies to the three dilutions of the mixture referred to in the claim, i.e. none of them statistically contains a single antibody molecule. [2.4] According to homeopathic theory the absence of a tangible molecule does not mean that the diluted solution is inactive. Homeopaths consider that by the potenisation process “information” of the substance in the “mother” solution is progressively transferred to the diluent. Also the appellants submitted that due to a “release” of the activity of the original substance to the diluent during the multiple dilutions, the diluent of the dilutions referred to in claim 1 has properties which the undiluted diluent does not have. The appellants contended also that the way in which the diluent stores and transmits the “information” is not known. [2.5] For the sake of the argument the board accepts in favour of the appellants that the mixture referred to in claim 1 contains an active “principle”, yet of unknown nature. [3] Treatments according to homeopathic medicine are carried out according to the principle “similia similibus curentur” (“like cures the like”). This means that, if an undiluted substance causes particular symptoms in a healthy individual, the same substance, yet given as a homeopathic dilution, can cure these very same symptoms in a sick individual. This approach is different from that relied on for treatments according to “conventional” (allopathic) medicine. [3.1] In the present case the substance in the solution to be diluted according to homeopathic technology is “antibodies against the C-terminal fragment of the angiotensin II receptor”. [3.2] It is generally known that the effects mediated by the angiotensin receptor II include vasoconstriction, aldosterone synthesis and secretion, increased vasopressin secretion, cardiac hypertrophy, augmentation of 468 | 3398
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peripheral noradrenergic activity, vascular smooth muscle cells proliferation, decreased renal blood flow, renal renin inhibition, renal tubular sodium reuptake, modulation of central sympathetic nervous system activity, cardiac contractility, central osmocontrol and extracellular matrix formation. Antibodies binding to the angiotensin receptor II and in particular its C-terminal fragment can block the activation of the receptor. The blockage causes vasodilation, reduces secretion of vasopressin, and reduces production and secretion of aldosterone, amongst other actions. These combined effects reduce the blood pressure. Therefore, angiotensin II receptor-binding antibodies have been suggested in the framework of “conventional” medical treatments as agents for the reduction of blood pressure, i.e. for the treatment of hypertension […]. [3.3] Since the “undiluted” antibodies against the C-terminal fragment of the angiotensin II receptor lower the blood pressure, the mixture referred to in claim 1, were it to be applied in accordance with homeopathic principles, would have to be used for treating patients suffering from hypotension. However, claim 1 requires that the homeopathic mixture is used for treating hypertension. Thus, it is applied in accordance with conventional medical principles. This is also admitted by the appellants who state that the treatment is “grounded on conclusive medicine principles”. [4] Hence, in the light of the observations in points [2] to [3.3] the board considers that the claimed invention would be perceived as “unusual” (i) from a conventional medical practitioner’s point of view because the mixture defined in claim 1 does not achieve the therapeutic effect on the basis of a tangible substance, but on the basis of an unknown “active principle” and (ii) also from a homeopath’s point of view because, although being a mixture of homeopathic dilutions, it is not applied in accordance with homeopathic theory. In fact, the claimed invention combines concepts of homeopathic and conventional medicine. There is no document in these proceedings published before the priority date of the application disclosing a treatment relying on this “chimeric” approach. [5] A 83 stipulates that a European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. As established by the case law of the Boards of Appeal an invention is considered to be sufficiently disclosed in accordance with the provisions of A 83, if the disclosure allows it to be performed without undue burden (Case Law, 6th edition 2010, II.A.4.2). This has been interpreted by the case law in relation to claims to a second medical use to mean that the skilled person must not only be able to produce the compounds referred to in the claim but that it must also be put in a position by the disclosure in the application in combination with, or by, the common general knowledge to achieve the claimed treatment, i.e. the therapeutical effect, in a reliable and reproducible manner (Case Law of the Boards of Appeal, 6th edition 2010, II.A.4.2, 7th paragraph). [6] The EPC does not lay down the prerequisites which the disclosure in an application must satisfy to fulfil the requirements of A 83. Therefore, as the Boards of Appeal have repeatedly held, whether or not the disclosure is sufficient, is a matter to be decided on the circumstances of each individual case. Ultimately, the disclosure must be such that in its light the ED or – as the case may be – the board is satisfied that the skilled person can carry out the claimed invention without undue burden (see Case Law, 6th edition 2010, II.A.5.1.1, 4th and 5th paragraph; II.A.7, last paragraph). [7] Therefore, since in relation to a claim to a second medical use it is required that the disclosure puts the skilled person in the position to achieve the therapeutical effect in a reliable and reproducible manner (see point [5] above), it follows from the observations in point [6] above that – unless this is not already derivable from the prior art – the application must provide suitable evidence in this respect. To this end, any kind of experimental data have been accepted by the Boards. It has also been repeatedly emphasized that “it is not always necessary that results of applying the claimed composition in clinical trials, or at least to animals are reported” (see for example decision T 609/02 [9]). [8] As observed above in point [4], in the present case the “chimeric” approach disclosed in the present application was not part of the common general knowledge at the priority date of the application. Therefore, whether or not the skilled person is in a position to achieve the claimed treatment of hypertension in a reliable and reproducible manner has to be judged on the disclosure in the application alone. Since the description contains nothing which would allow the skilled person to verify the success of the claimed treatment, the examples are particularly relevant. 469 | 3398
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K’s Law – The ebook
[9] Examples 1 to 3, 4 to 6 and 8 relate to the treatment of hypertension: [9.1] Examples 1 to 3 disclose experiments with “ISIAH rats with hereditary arterial hypertension”. Example 1 discloses the results of an experiment with 10 animals to which polyclonal rabbit antibodies against the C-terminal fragment of the human angiotensin II receptor in a mixture of homeopathic dilutions of C12 + C30 + C200 were administered. Example 2 discloses the results of an experiment with 10 rats to which monoclonal antibodies to angiotensin II in a mixture of homeopathic dilutions of C12 + C30 + C200 were administered. Example 3 discloses the administration to an unknown number of rats of polyclonal mouse antibodies to angiotensin I in a mixture of homeopathic dilutions of D6 + C12 + C200. [9.2] Examples 4 to 6 and 8 each disclose the results of the treatment of one human being suffering from hypertension for different reasons. To them
polyclonal rabbit antibodies against the C-terminal fragment of the human angiotensin II receptor in a mixture of homeopathic dilutions of C12 + C30 + C200 (Example 4); a combination of monoclonal antibodies to angiotensin II receptor in a mixture of homeopathic dilutions of C12 + C30 + C200 and monoclonal antibodies against angiotensin II in a mixture of homeopathic dilutions of D12 + C30 + LM2 (Example 5); a combination of polyclonal rabbit antibodies against the angiotensin II receptor in a mixture of homeopathic dilutions of C12 + C30 + C200 and monoclonal antibodies against adrenocorticotropin in a mixture of homeopathic dilutions of C12 + C30 + C200 (Example 6); and a combination of monoclonal antibodies against tumour necrosis factor alpha in a mixture of homeopathic dilutions of C12 + C30 + C200 and antibodies against tumour necrosis factor alpha receptor in a mixture of homeopathic dilutions D12 + LM10) (Example 8),
respectively, was or were administered. [10] In Examples 2 and 3 mixtures of homeopathic dilutions of compounds are tested which are not derived from solutions of polyclonal rabbit antibodies against the C-terminal fragment of the human angiotensin II receptor. In Examples 5, 6 and 8 combinations of mixtures are used, some of which do not even include the mixture according to claim 1. None of these examples relates therefore to embodiments of claim 1 and they are consequently not relevant with regard to the present issue. Thus, only Examples 1 and 4 are relevant. [11] Example 1 discloses a study with rats. The result is summarized as follows: “The data in the table show that the medication exerts a hypotensive effect”. Example 4 reads as follows: “Patient D., 50 years old, presented with a 10-year history of essential hypertension. On clinical and instrumental examination, he was diagnosed with “essential hypertension with primary heart involvement, 2nd degree, myocardial hypertrophy of the left ventricle”. He was administered polyclonal rabbit antibodies against the C-terminal fragment of the angiotensin II receptor (a mixture of homeopathic dilutions C12 + C30 + C200), 1 tablet BID. The blood pressure stabilized at 130-135 / 85 mm Hg within 7 days of the start of treatment. After 2 months of treatment, electrocardiography revealed a decrease in the myocardial hypertrophy and overload of the left ventricle.” [11.1] The board notes that neither of these two Examples 1 and 4 includes tests where substances serving as negative controls are applied. Moreover, Example 4 fails, for example, to indicate the initial blood pressure or which measures had been taken to exclude that the hypotensive effect could be due to other reasons, for example other treatments, intake of particular food, increased sport activity, etc. [12] The board has serious doubts that the claimed treatment of hypertension can be reliably and reproducibly achieved by the mixture referred to in claim 1 for the reasons summarized in point [4] above, namely, (i) because on the standards of “conventional” medicine and science it is unconceivable that a homeopathic medicament 470 | 3398
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which does not contain any active substance achieves specific therapeutic effects and (ii) because on the standards of homeopathic medicine it is unconceivable that a homeopathic medicament that is not applied according to homeopathic principles achieves specific therapeutic effects. When balancing these factual circumstances against the quality (see point [11.1] above) and quantity (see points [9.1-2] above) of the relevant evidence in the application, i.e. Examples 1 and 4, the board comes to the conclusion that the level of evidence is not sufficient to satisfy it that the skilled person can reliably and reproducibly achieve the claimed therapeutic effect. Therefore, the board cannot come to the conclusion that the disclosure in the application – and this is the only source of information in the present case (see point [4] above) – puts the skilled person in the position to achieve the claimed treatment of hypertension in a reliable and reproducible manner. Hence, the disclosure of the invention in the application is considered to be insufficient. [12.1] The board observes that the reason for this conclusion is not, as suggested by the appellants’ submission […], a mere, unsubstantiated “disbelief”. Rather, the conclusion is drawn by taking into account the quality and quantity of available evidence which is considered to be inappropriate in the light of the character of the present invention. [13] The present board’s conclusion is in harmony with rulings of Boards of Appeal in a number of cases which it considers to be similar to the present case insofar as in those cases also the boards had serious doubts that the skilled person could achieve the suggested effect of the claimed invention on the basis of the disclosure in the application or the common general knowledge because, for example, the invention was conceptually new, went against prevailing opinion or established theories, was in an unexplored field or appeared to go against natural laws and therefore have called for a particularly conclusive disclosure of the invention (see for example decisions T 541/96 [5-8]; T 442/97 [3.2, 3.14-15]; T 792/00 [3, 4, 7, 11]; T 397/02 [12, 16, 18]; T 1111/02 [8,12]; T 58/05 [2.3-4]; T 1785/06 [3.4.1-3]; T 1842/06 [3.1-5.4.4]; T 1329/07 [2.2.1-5]; T 491/08 [6-12]; T 2281/09 [2.1, 2.4, 2.8-9]; T 1685/10 [3.1-8]). [14] Sufficiency of disclosure must be satisfied at the effective date of the patent, i.e. on the basis of the information in the patent application together with, or on the basis of, the common general knowledge then available to the skilled person. Therefore, the disclosure in post-published documents can only be taken into account for the question of sufficiency of disclosure if it was used to back up the positive findings in relation to the disclosure in a patent application (see for example decision T 609/02 [8]). Thus, in view of the board’s conclusion in point [12] above, none of documents D7 to D11 can therefore be taken into account here. [15] The application does not fulfil the requirements of A 83. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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K’s Law – The ebook
Looking Back On 2012 (Part 1)
Looking Back On 2012 (Part 1) 11 Mai 2013
I guess most of the decisions taken by the Boards of appeal in 2012 have been published by now. Let us have a look at what the output was. I have collected and analysed 1410 decisions issued between January 2 and December 20, 2012: my survey encompasses 755 decisions on opposition appeals, 629 on examination appeals, 16 on petitions for review, 9 decisions of the Legal Board and one “G” decision of the Enlarged Board.
In this post, I will only consider the 629 examination appeals. I intend to present the opposition cases later on. Unsurprisingly, English was clearly the dominant language in examination appeals: it was the language of the proceedings in more than 78% of the cases. Far behind, German took an 18% share. French decisions are almost a quantité négligeable.
In principle, there are three possible outcomes to examination appeals. The Boards can order the grant of a patent, dismiss the appeal, or remit the case for further prosecution. There are a few other cases, e.g. when a Board only decides on reimbursement of the appeal fee or on re-establishment, but these cases made up less than 0.5 per cent of the examination appeals in 2012. As you can see from the following graph, in a majority of cases (about 57%), the appeal was dismissed. An order to grant was issued in about 23% of the cases and about one case in five was remitted for further prosecution. 472 | 3398
K’s Law – The ebook
Looking Back On 2012 (Part 1)
The outcome was not the same for the three languages – but before you get excited, please note that this may be an artefact due to the low numbers: there were only 20 French and 116 German cases, as compared to 493 English cases, so the statistical error is considerable.
(click to enlarge) This time I undertook to directly compare the different Boards of appeal. The number of decisions taken into account for each Board is given in brackets. As there are 27 Technical Boards, the average number of examination appeals issued by a Board in 2012 was 23, but the differences between the Boards are considerable: I have found only 4 examination appeals for Board 3.3.06, whereas Board 3.5.06 appears to have issued 54 examination appeal decisions in 2012. Such low numbers make comparisons doubtful, but still one can see that the overall outcome of the appeals differed greatly between the Boards. Some frequently ordered grants whereas others mostly (or even always) dismissed examination appeals. Also, the part of remittals varied greatly.
(click to enlarge) I also found it interesting to compare the outcome as a function of the technical domain: 473 | 3398
K’s Law – The ebook
Looking Back On 2012 (Part 1)
(click to enlarge) NB: I have tried to be very careful, but as such a survey involves big amounts of data, I cannot guarantee that the above figures are free of error. If you spot a mistake, please let me know.
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T 2422/10 – No Translation Needed
K’s Law – The ebook
T 2422/10 – No Translation Needed 10 Mai 2013
In this case the Board refused a request of simultaneous interpretation from German to the language of the proceedings (English) during the oral proceedings (OPs). [1.1] According to R 4(1) “any party to OPs before the EPO may use an official language of the EPO other than the language of the proceedings, if such party gives notice to the EPO at least one month before the date of such OPs or provides for interpretation into the language of the proceedings.” The appellant’s letter of 25 January 2013 with the indication of the use of German was filed in time and, consequently, the appellant was allowed to use this language during the OPs. However, the respondent’s request of the same day for interpretation from German into English, although filed in due time, is to be rejected. [1.2] It could be argued – as does the respondent – that if one party to proceedings before the EPO uses an official language different from the language of the proceedings, there shall be an interpretation from that other language into the language of the proceedings for the party/parties using the language of the proceedings. However, this general rule needs to be set against the principle of efficiency of the proceedings and the duty of all services of the EPO, including the Boards of Appeal, to observe the finances of the EPO. It is precisely for this purpose that R 4(5) states: “The EPO shall, if necessary, provide at its own expense interpretation into the language of the proceedings, or, where appropriate, into its other official languages, unless such interpretation is the responsibility of one of the parties.” It is the Board’s opinion that this wording of R 4(5) allows the Board to assess the necessity of such an interpretation. See in this respect T 131/07 [8.4] acknowledging such discretion [1.3] The respondent’s professional representative is German and has submitted all substantive submissions in German (see the reply to the statement of grounds of appeal and the reply to the Board’s preliminary opinion). It is therefore evident that this representative is quite capable of understanding any oral submissions of the appellant’s professional representative at the OPs made in German without the need for interpretation. This was also admitted by the respondent’s representative at the beginning of the OPs. In this respect the request for interpretation for the benefit of the representative is refused. [1.4] A request for interpretation to the benefit of an accompanying person would not justify the arrangement of interpretation at the expenses of the EPO either because it is the Board’s opinion that accompanying persons do not by themselves have an automatic right to interpretation. This may for instance be dependent on whether the Board intends to let them address the Board, see in this respect T 131/07. [1.4.1] As set out in its communication of 5 February 2013, the Board itself does not see a need to hear the accompanying person at the OPs. [1.4.2] Decision G 4/95 sets out the conditions under which an accompanying person may be allowed to make oral submissions. In point (3)(a) of the order it is stated that “Such oral submissions cannot be made as a matter of right, but only with the permission of and under the discretion of the EPO.” The Board, therefore, has a discretional power to allow or not such submissions. [1.4.3] The accompanying person for the respondent was announced as a technical expert to speak on “novelty and inventive step”. However (as indicated in the Board’s communication of 5 February 2013), these topics constitute the entire substantive issues of the case. These are, however, to be presented by the appointed professional representative in the context of European patent law. The accompanying person is, however, not presented as qualified in the latter or under training to become qualified. 475 | 3398
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K’s Law – The ebook
Points (1) and (2) of the order of G 4/95 state that an accompanying person “may be allowed to make oral submissions on specific legal or technical issues on behalf of that party, otherwise than under A 117, in addition to the complete presentation of the party’s case by the professional representative.” The Board understands this to mean that the topic on which the accompanying person will speak should be specific and should be an addition to the case as presented by the professional representative of the party. Both conditions are not fulfilled in the present case, the Board therefore does not see any need to allow oral submissions of the person accompanying the respondent’s representative. See in this respect T 774/05 [5]. [1.4.4] The above being as it is, the Board does not see the need to provide for simultaneous interpretation from German to English for the accompanying person. In this respect it concurs with T 418/07 [6], that providing interpretation to suit merely the convenience of a party is not a sufficient reason. [1.5] The respondent’s representative raised the question what would have happened if a colleague representative, not understanding German, would have attended the OPs instead of him. It is, however, not the function of the Boards of Appeal to give rulings in their decisions on hypothetical situations or on questions not relevant to the case. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 642/12 – 20% Off
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T 642/12 – 20% Off 9 Mai 2013
This appeal was filed by the patent proprietor, a Swiss company, after the Opposition Division (OD) had revoked its patent. The time limit for filing an appeal and paying the appeal fee expired on 15 March 2012. A Dutch language document, dated March 6, 2012 and described in the Epoline transmission cover page as “Notice of appeal” was filed and received in the EPO on March 7, 2012, together with an English language document identified in its heading as “translation of the enclosed Notice of Appeal in Dutch”. The Epoline transmission further contained a debit order for EUR 944, designated as “Fee for appeal”. This amount corresponded to 80% of the full appeal fee. EPO Form 3204, informing the parties of the file number and the commencement of proceedings before the Boards of Appeal (BoA) was posted March 27, 2012 to the appellant and the respondents. One of the opponents pointed out that the appellant as a Swiss company was not entitled to use Dutch language and therefore was also not entitled to a fee reduction pursuant to Rule 6(3). As a consequence, the appeal should be rejected as inadmissible. The BoA agreed: [1] The admissibility of the appeal and indeed its existence turns on the questions whether the appeal fee was paid in time, and whether there was a valid notice of appeal in an admissible language. As explained below, the Board found that the appeal fee was not paid in time, so that there was no need to decide on the issue of the language of the notice of appeal and whether its use would lead to the appeal being deemed not to have been filed. [2] Pursuant to A 108, second sentence, the notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid. Article 8 RRF, first sentence stipulates that the time limit for payment shall in principle be deemed to have been observed only if the full amount of the fee has been paid in due time. In the present case, the time limit for filing the notice of appeal and thereby the time limit for paying the appeal fee expired on 15 March 2012. A reduced appeal fee pursuant to R 6(3) was paid on 7 March 2012, and a full appeal fee was paid on 27 April 2012 […]. The appellant does not dispute that the filing of the notice of appeal in Dutch language did not entitle it to benefit from the fee reduction. Instead it is contended that the EPO must accept the late payment of the full appeal fee, either through the application of the principle of the protection of legitimate expectations or through a re-establishment of rights under A 122, or to accept the partial payment and to overlook the missing 20% through the application of Article 8 RRF, last sentence. The Board examines these three lines of argument in turn. Protection of legitimate expectations [3] The Board concurs with the appellant that this principle, also referred to as principle of good faith, is applicable in the proceedings before the EPO, and also in appeal proceedings. Its application requires the EPO to warn the relevant party of any loss of rights if such a warning can be expected in all good faith (G 2/97 [4.1]). In the present case it has to be examined if there existed a legitimate expectation of the appellant that it would be warned in time by the EPO of the deficiency, the only partially paid appeal fee. [4] The appellant submits that this legitimate expectation existed, because the error was easily identifiable and there was also enough time to warn the appellant sufficiently early for the appellant to have been able correct the error still within the time limit. This legitimate expectation was further corroborated by the file history, showing that the EPO indeed processed the appeal sufficiently swiftly, and it could also be inferred that the error ought to have been discovered already at that time. Form 2701 processed on 8 March 2012 clearly showed that the payment of the appeal fee was to be examined immediately. 477 | 3398
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[5] The Board concurs with the appellant that the error was not very difficult to discover. Nevertheless the error was a deficiency of a formality the examination of which is entrusted to the Registrar of the competent BoA, see Article 2(1) of the Decision of the Presidium of the BoA dated 12 November 2007 concerning the transfer of functions to the Registrars of the BoA, Supplement to OJ EPO 1/2013 (sic), pp. 65-67. Furthermore, even if it can be accepted that the error would not have been difficult to discover for an experienced Registrar in the course of checking the notice of appeal for the necessary legal preconditions, it is not the type of error which he or she could be expected to discover at first glance at the notice of appeal. Even if it might be a simple error, it is not so apparent or glaring that it would have been highly improbable to overlook it. The Board therefore needs to examine if the appellant had a realistic expectation almost beyond doubt that the Registrar of the Boards on proper examination of the appeal would have found the error before the expiry of the time limit of A 108. [6] The Board concurs with the appellant to the extent that there was indeed a potential possibility to discover the error in good time. The file shows that the appeal was received in the morning hours on 7 March 2012, and the applicable time limit of A 108, first sentence, expired on 15 March 2012. This means that seven working days were available to warn the appellant and to pay the appeal fee. Given that the appellant regularly used its debit account with the EPO, in theory it could have been sufficient if he received the warning on the very last day. [7] However, the Board does not accept that this potential possibility automatically translates into a legitimate expectation of the appellant. First of all, there was no formal legal obligation on the Office to issue a warning within this time, and therefore there could also not be a legitimate expectation, i.e. a justified belief of the appellant that the absence of a warning confirmed the valid filing of an appeal to such a degree of certainty which is equal to the certainty of an acquired right, here the acquired legal position as appellant. As the Enlarged Board (EBA) put it “To take the principle of good faith that far would imply, in practice, that the BoA would have to systematically assume the responsibilities of the parties to proceedings before them, a proposition for which there is no legal justification in the EPC or in general principles of law”, see G 2/97 [4.2]. In other words, the fact that no warning was issued by the Office before 15 March 2012 could not be construed as a positive and legally binding recognition of a valid appeal. On the other hand, if a warning could be expected merely as a courtesy service from the EPO, its omission again does not create legitimate expectations, see G 2/97 [5.1]. [8] As stated above, an overlooking of the error by the Registrar could also not be realistically excluded. This means that there could be no serious expectation, whether legitimate or not, that a warning will be issued under any circumstances. Therefore it can also not be stated that the high probability of the discovery of the error in combination with the expectation of a warning as a courtesy service could have justified the firm belief of the appellant that without such a warning the file was in order. Given all the facts of this case, such a presumption contradicts common experience. [9] Contrary to the belief of the appellant, it could also not base any legitimate expectation concerning the validity of the appeal on the fact that the appeal had been received and processed in the EPO, as may be inferred from EPO Form 2701 […]. A notice of appeal is forwarded as a matter of standard procedure first to the Formalities Officer of the department of first instance concerned (a directorate within DG1) for a first peremptory examination of the notice of appeal. This standard procedure was also observed in the present case. The Form 2701 completed on 8 March 2012 was thus not processed by the Registry of the BoA, but by the Formalities Officer of the OD, and it merely contained an indication that the case was to be referred to the Registry of the BoA. Though the form includes a check-box for appeal fee payment, the form itself states that this check is to be performed only in ex parte cases (where interlocutory revision by the Examining Division under A 109 is possible […]). If the Formalities Officer finds that the appeal involves several parties, such as in opposition proceedings, the case must be referred to the BoA without delay […]. Thus the only information that can be derived from this document was the fact that the Formalities Officer forwarded the case to the BoA on 8 March 2012. In no way can it be seen to objectively establish a basis for the firm belief of the appellant that the appeal was already thoroughly examined for compliance with all the usual formal requirements. [10] The Board adds that not even the communication of the file number to the appellant on 27 April 2012 […] could have potentially established the legitimate expectation that everything was in order with the appeal, see also G 2/97 [5.2].
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[11] The appellant submitted that the case law also supports its position on the applicability of the principle of good faith. However, this is not accepted by the Board. Most of the case law cited by the appellant (T 128/87, T 14/89, J 13/90) is also discussed in G 2/97. From this it becomes clear that the EBA took note of the case law at that time but in fact did not approve of an unlimited application of this principle, but rather followed the ratio decidendi of J 12/94, see G 2/97 [4.2]. Concerning T 14/89, the EBA expressly stated that no generally applicable principles are derivable from that decision (see G 2/97 [3.4]). Decision T 923/95, though preceding the decision G 2/97 of the EBA, is not mentioned specifically. This decision found the principle of good faith to be applicable in circumstances not completely dissimilar to the present case, in effect putting a strict obligation on the EPO to examine the correctness of fee payments immediately. Yet, this Board holds that the approach endorsed by T 923/95 is no longer tenable because it plainly contradicts the findings of G 2/97. The Board is also not aware of any decision which have followed T 923/95. [12] For the reasons above, the Board holds that timely payment of the appeal fee can not be recognised on the basis of the principle of the protection of legitimate expectations. The Board then dismissed the request for re-establishment and then went on to discuss whether the missing 20% of the appeal fee could be considered to be a “small amount” within the meaning of the RRF. [19] Pursuant to Article 8 RRF, last sentence, the EPO may, where this is considered justified, overlook any small amounts lacking without prejudice to the rights of the person making the payment. The appellant contends that in the present case, it would be justified to overlook the missing 20% of the appeal fee, and to accept the effective payment of the 80% as a valid payment of the full appeal fee. This would be justified under the circumstances, given the fact that the appellant actually was entitled to a fee reduction. It only would have had to file the notice of appeal in Italian, and it indeed intended to do so. [20] The Board is not persuaded by this argument. First of all, the Board considers that the 20% fee reduction set by Article 14(1) RRF can not be considered as small for the purposes of Article 8 RRF. This latter foresees that lacking small amounts can be overlooked, i.e. ignored (unberücksichtigt bleiben, ne pas tenu compte), implying that they also need not be paid later. This would dictate that “small amounts lacking” (geringfügige Fehlbeträge, parties minimes non encore payées) are rather to be read as “insignificant or negligible amounts”, e.g. differences caused by unexpected bank transfer costs, currency exchange rates or the like, see also T 905/90 [10]. This does not seem to apply to the difference corresponding to a fee reduction as foreseen by R 6(3). This rule is an implementing rule of A 14(4). This latter provides for the possibility of filing documents which have to be filed within a time limit in an admissible non-EPO language, nevertheless with the obligation of filing a translation within a time limit. The presumption underlying R 6(3) is that the appellant in fact needs to file the document in an admissible non-EPO language because of the upcoming time limit and as a consequence, is forced to prepare a translation as well. R 6(3) of course also extends to certain acts not necessarily tied to time limits, such as filing of patent applications and requests under A 105(a), but in fact these acts are also regularly done under time pressure. Put differently, the fee reduction foreseen by R 6(3) intends to alleviate the burden on those applicants who are themselves unable to communicate with the EPO in an official language, and therefore must resort to the use of translations. Thus the legislator presumed that a fee reduction of 20% is not merely a symbolic one, but will effectively alleviate the burden of having to prepare translations, and therefore it appears to the Board that the legislator could not have intended this fee reduction to be considered small (geringfügig, minime) in the sense of negligible or insignificant. Therefore, the Board holds that Article 8 RRF, last sentence is not applicable in the present case for this reason alone. [21] Secondly, quite apart from the issue of the “small amount” discussed above, the Board is of the opinion that overlooking the missing amount would also not be justified in the circumstances of the case, because it is not at all apparent that the appellant would have been entitled to the fee reduction under R 6(3). This entitlement arises only if a person referred to in A 14(4), i.e. a person who is either resident or national of a contracting state using an non-EPO language, effectively uses the admissible non-EPO language, even if minimally. This intention may not jump out at the reader from the present wording of R 6(3), but was quite clear in the wording of R 6(3) 1973: “A reduction ... shall be allowed ... a [party] ... who avails himself of the options provided in A 14, paragraphs 2 and 4 [EPC 1973]”. The option mentioned here is of course the possibility of the filing of the relevant documents in an admissible non-EPO language, and the subsequent filing of a translation, see also G 6/91 [21]. [22] In the present case, it is not apparent that the appellant ever intended to file the notice of appeal in Italian. This possibility was not put forward by the appellant until the oral proceedings. On the contrary, when the appellant was informed of the insufficiency of the payment, it immediately proceeded to pay the full amount, and apparently relied on the English translation of the notice of appeal. A notice of appeal in Italian has never been 479 | 3398
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filed, not even in the oral proceedings. This does not demonstrate to the Board any intent, much less a need on the part of the appellant to use Italian when corresponding with the Office. The fact that it might in theory have been able to avail itself of the possibility of filing in Italian is immaterial, as he did not do so nor showed any serious intent of doing so and was therefore not entitled to a fee reduction. [23] The Board is well aware of the widespread practice of filing documents with the EPO in admissible nonEPO languages simultaneously with their translation merely for the sake of obtaining a fee reduction, but actually without any pressing need to proceed in this manner. This practice has in fact been upheld by the findings of G 6/91 […], which established the minimum requirements for this procedure. However, as the present case also illustrates, this practice should be pursued with caution, because the possibility of a fatal error is not negligible. To this extent the Board concurs with the argument of the appellant that in this manner the regular practice of claiming a fee reduction may prove to be a double-edged sword. On the other hand, it appears to the Board that such fatal errors would be less likely to occur if parties would only resort to using a non-EPO language, i.e. typically their own working language, when there are indeed serious grounds to do so. This again confirms the Board in its view that relying on Article 8 RRF, last sentence is not justified (der Billigkeit entspricht, paraît justifié), i.e. not equitable in cases as the present one. [24] The Board is also aware of decision T 290/90 also cited in the Case Law of the BoA, Sixth Edition 2010, Chapter VI.F.4. This decision held that the overlooking of the missing 20% (there of the opposition fee) was justified having regard to the fact, inter alia, that this missing amount was in fact paid shortly after the expiry of the time limit. To this extent the present case is similar, as the missing fraction of the fee was paid immediately when the appellant realised the error […]. However, the present Board does not follow T 290/90. Firstly, while T 290/90 discussed criteria for a justification of overlooking a missing amount, and held that the applicability of Article 9(1) RRF - corresponding to the presently applicable Article 8 RRF - must be decided on an objective basis having regard to all the relevant circumstances of the case, in fact it did not give any specific reasons why it considered 20% to be small, see point [4(b)] of the Reasons. Secondly, the reasons given for overlooking the missing small amount appears to concentrate solely on the issue of justification, irrespective of the amount missing and whether it is small or not. Following this line of reasoning it would not matter how large the shortfall is, as long as the full amount is paid soon after expiry of the time limit. The Board does not believe that this is what was intended when the legislator decided to limit justifiably overlooked missing amounts to small amounts. Similarly, the further criteria considered by T 290/90, such as the desirability of the opponent being able to pursue his case given the fact that all other requirements apart from the fee payment were complied with (see point [4(a)] of the Reasons), also appear unsuitable for explaining why Article 8 RRF foresees a different legal treatment of small missing amounts as compared with “significant” (in the sense of not small) missing amounts. Following the criteria considered by T 290/90, the determination whether an amount is “small” would in the end depend on the criteria used for determining whether the circumstances could justify the overlooking. As a result, the “small” qualifier would not be determined on the basis of objective, but subjective criteria, in fact also contrary to the apparent intentions of T 290/90 [headnote 4]. To that extent, the “small” qualifier would lose its meaning, seemingly against the intent and purpose of the final sentence Article 8 RRF, which expressly singles out “small amounts” for special treatment. The Board also dismissed the request for a referral to the EBA and decided to reimburse the partial appeal fee because the appeal was deemed not to have been filed. NB: The Board has provided headnotes: 1. In case of an inter partes appeal case, completion of EPO Form 2701 by the Formalities Officer of the department of first instance does not establish the legitimate expectation that formal requirements of the appeal, such as the payment of the appeal fee, has already been checked by the EPO (point [9] of the Reasons) 2. A potential possibility of discovering the error is not sufficient to establish the legitimate expectation that a Registrar of the BoA will warn an appellant within seven working days before the expiry of the time limit that a reduced appeal fee was relied on in error and therefore the appeal fee is deemed not to have been paid (points [6-8] of the Reasons) 3. “Small amounts lacking” in Art. 8 RRF are to be read as “insignificant or negligible” amounts. The legislator presumed that a fee reduction of 20% pursuant to R 6(3) is not merely a symbolic one, but will effectively alleviate the burden of having to prepare translations. Therefore the legislator could not have intended this fee reduction to be considered small in the sense of negligible or insignificant (point [20] of the Reasons). Should you wish to download the whole decision, just click here. 480 | 3398
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The file wrapper can be found here.
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D 9/09 – More Trouble With Marks
K’s Law – The ebook
D 9/09 – More Trouble With Marks 8 Mai 2013
Normally I do not present decisions of the Disciplinary Board, but I found this one quite entertaining. The appeal was filed by a candidate who had failed the EQE 2009 after having been awarded the following marks: A: 49; B: 55; C: 39; D: 57. *** Translation of the German original *** [2.1] The appellant pointed out that the (fictitious) client’s letter on which paper A was based clearly and unambiguously indicated that the client did not desire to obtain patent protection for the process using the arsenical acid solution, which had no economic value. As the candidate had no reason not to respect the wishes of the client, it was not justified to deduce marks if this process variant was not claimed. [2.1.1] Against this, it can be argued that it is possible to be of the opinion – and this opinion is generally held – that a professional representative is not required and should not limit himself to slavishly implement the indications of his client (which in practice are not meant to be limitations for the patent protection to be obtained) – irrespective of the fact that the text of the client’s letter (which is fictitious, but inspired by real life) does not contain unambiguous or express indications; it does not contain indications regarding the extent of the desired patent protection at all. Rather, the client consults a representative for the very reason that the applicant cannot or does not wish to assess which options he has and what the corresponding expectations of success are. 482 | 3398
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In the situation underlying the exam paper this would mean that even subject-matter in which the client is presently not interested is incorporated into the application, be it only “as a precaution”, in order not to generate additional costs but to offer the applicant more options regarding methods, use (possibly via licences) and development. Thus there is no contradiction in a legally relevant sense when – quite in line with the “fit-topractice” criterion (see Rule 4 IPREQE) – the copies of the candidates are also assessed according to this point of view. The instructions to candidates also unambiguously indicate that the candidates are expected “to draft an independent claim (or claims) which offers the applicant the broadest possible protection and at the same time has a good chance of succeeding before the EPO”. [2.1.2] In his second submission the appellant has explained that, as a consequence of the fact that it was not possible to consult the (fictitious) client, there was an irremediable (unaufklärbar) contradiction between the fact that the candidate was expected to accept the facts given in the paper (Instructions to candidates I.3) – in the present case, the fact that the client did not desire patent protection for the arsenical solution – and the fact that this was to be ignored and a claim that was as broad as possible was to be drafted. It is to be noted in this context that this assertion does not correspond to the content of the client’s letter because it does not contain any indications on the scope of the patent protection to be obtained […]. Consequently, there is no contradiction with the instructions that the drafted claims should provide maximum protection, nor is there a contradiction with the matter of course that the wording proposed by the candidate should correspond to a “useful” claim. [2.1.3] Thus the examination question was not contradictory in the sense that the Board could treat it as an obviously erroneous (cf. D 13/02, which the candidate has invoked). [2.2] The appellant also explained that the evaluation scheme used for the process claim to be drafted in paper A was unfair and violated the principle of fair treatment. The evaluation scheme used, according to which the candidate did not receive marks for certain partial performances (Teilleistungen) but marks were deduced from the maximum number of marks when certain partial performances had not been provided, had the consequence, on the one hand, that in the end the candidates who had provided such a partial performance received (i.e. were not deducted) significantly less – about >1.5 times less – marks than they would have lost if they had not provided the very same partial performance. On the other hand, this scheme led to the absurd result of negative marks. However, as they were not allocated – in extreme cases (only) 0 marks were awarded –, the candidates were unequally treated, which violated Article 16 REQE: better candidates having a positive overall number of marks lose marks if there were (further) mistakes, whereas worse candidates who already had 0 marks and who made the very same mistake would not lose any marks. In practice, the appellant had been deduced more marks for missing partial performances than other candidates. Sanctioning the very same mistake by deducing varying amounts of marks was hardly in line with the requirement of uniform marking, or justified in view of the “fit-topractice” criterion. The latter was not applied at all; but [what was applied was] “a very clear evaluation scheme” allocating a well-defined number of marks (and well-defined deductions of marks) for each individual aspect of the claims to be drafted, each individual aspect being independent of the other individual aspects”. [2.2.1] The fact that the (theoretical) overall amount of deductions under Article 16 REQE that are allocated to individual “mistakes” can be greater than the maximum amount of marks that are available, together with the fact that 0 is the minimum number of marks (i.e. there are no negative marks) is not objectionable from a legal (and substantial) point of view. Irrespective of the fact that the appropriateness of a deduction of marks, in case a partial aspect of the examination question was not solved or solved in a way that was not optimal, is an issue related to marking (Bewertungsfrage) for which the Board is not competent, it is not required by logic, nor can it be deduced from the “fit-to-practice” criterion, that the allocation of 0 marks is only admissible if each and every partial aspect was awarded 0 marks (cf. D 8/07 [5] and many other decisions regarding the EQE 2007, according to which it is not in line with Rule 4(2) and (3) IPREQE to treat a copy that is to be allocated marks as if it was a list of independent individual questions, as in a Multiple-Choice-System). It is common, even outside the EQE, not to award negative marks, and this practice is appropriate because deficiencies in the solution of a (partial) problem do not necessarily impair the performances in other (partial) problems that are distinct in respect to substance. [2.2.2] Moreover, and very generally speaking, it is simply not true that according to the Examiner’s Report a rigid marking scheme had been applied, according to which each (possible) variant of features had been considered in complete isolation and a fixed amount of marks was awarded or deduced for it or for its absence, respectively. The opposite is true, as is apparent to any competent or unbiased reader of the Report without further ado; therefore, this does not need to be explained in detail here. [2.3] As far as paper C is concerned, the applicant pointed out that the way in which the problem regarding the priority claim of the opposed patent was presented was defective and misleading, because the (fictitious) client’s
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letter stated: “We have further noticed that the claim to priority was filed for the present patent in July 2007 for the first time.” The terminology was wrong because one could not “file” a claim to priority. The applicant [explained that] as a consequence, he had lost precious time when trying to solve the dilemma with which he was faced, i.e. that according to the “Instructions for candidates” he had to accept the facts given in the paper and to limit himself to these facts. The EQE should not evaluate candidates according to their tolerance with respect to wrong terminology (which many applicants had not even noticed in the heat of the action). A correct assessment of the candidates in view of their fitness-to-practice required a correct terminology to be used in the questions and solutions. It was not appropriate to require the candidates to perform textual exegesis. [2.3.1] It is undisputed that it is part of the essential capacities of a professional representative to be able to understand his clients even when they do not express themselves in a way that is in line with the EPC – which they cannot realistically be expected to do. As rightly explained by the appellant, “utmost precision of speech” can be expected from a professional representative in his work (and, of course, from the competent bodies of the EPO) but not from clients. However, when drafting the (fictitious) letter of a client, the expression “claim to priority … filed”, which is not an expression used by specialists (fachterminologisch) but close to reality and which apparently was found appropriate for this very reason, was chosen. NB: A nice way of saying that even drafters of EQE papers do not always use utmost precision of speech. [2.3.2] This does not mean that some sort of “textual exegesis”, i.e. an interpretation of an abstract norm, is required. The way in which the problem was formulated did not trigger, let alone compel the appellant to approach the client’s letter accordingly. The Board does not understand the assertion that other candidates had overlooked this “discrepancy” and were, as a consequence, unjustifiably favoured with respect to the appellant, who was more thorough. Rather, it has to be assumed that these other candidates from the outset based their reasoning on the correct meaning of this expression in the context of the examination question, simply because under the given circumstances the expression “claim to priority … filed” in the client’s letter was neither misleading nor wrong. Such an “advantage”, however, cannot be interpreted to constitute a legal discrimination of the appellant. [2.3.3] It is certainly true that, as pointed out by the appellant in his second submission, a candidate may expect the problems with which he is confronted to be free of errors. It may also be true that the deliberate introduction of errors into the problem would be problematic, both from a legal and a substantial point of view. However, as explained above, there was no substantial error in the problem. Whether and to what extent a given expression of the problem corresponds to the purpose of the EQE is not a legal question. How “close to reality” and, more generally, how exam problems are to be drafted in order to ensure an assessment of each of the many candidates regarding their “fitness-to-practice” that is as reliable as possible, taking due account of the legal framework and the requirement to limit the efforts of the candidates and the examining bodies to a reasonable extent, is a demanding optimisation task that is exclusively entrusted to the Examination Board. [2.4] As to paper C of the exam the appellant pointed out that his response regarding the late submission of the claim to priority (“A deficiency pursuant to R 38(2) cannot be remedied, so that the priority claim pursuant to A 91(1)(d) and A 91(3) is invalid.”) may not “correspond to the practice of the EPO under the EPC 1973” but followed directly from the EPC and its Implementing Regulation. In this regard the Board has to limit itself to the statement that, as a matter of principle, it cannot review the allocation of marks in a case where a candidate wishes to base his future activity as representative on his personal interpretation of the EPC, which deliberately contradicts the case law and the practice of the EPO. I love it! [2.5] The appellant also invoked a serious violation of the principle of protection of legitimate expectations. Within the framework of the EQE 2009 the Examination Board had without prior announcement considered invalid a criterion for determining the closest prior art, which is a central aspect of paper C, which it had established for the EQE 2007 and implemented in a way that was very visible to the public (mit großer Öffentlichkeitswirksamkeit), including corresponding instructions to tutors, i.e. that (a) a document the subjectmatter of which was not suitable for the purpose of the invention, because of its particular properties, per definitionem could not qualify as closest prior art for inventive step attacks. This follows from passage (b) “In order to identify the closest prior art document it was necessary to take into account the whole teaching of documents including negative statements.” in the Examiners’ Report to paper C of the EQE 2007. As a reaction to what happened around paper C of 2007 the preparatory courses for the EQE teach that a document containing a negative statement as to its suitability for the purpose of the invention cannot qualify as closest prior art. The 484 | 3398
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candidates could expect this guiding sentence (Orientierungssatz) to be valid until it was obsolete as a consequence of changes of law or case law. Accordingly, the assessment of paper C of 2007 [NB: this should read 2009] should not have been based on Annex 2 as closest prior art because this document discloses an object (a wooden table comprising a plate that must not be heated to temperatures above 50°C), which clearly makes it unsuitable for the purpose of the invention (heating food to temperatures of 60-65°C). Thus the solution provided by the Examination Board was based on a technically or legally wrong basis. [2.5.1] It is true indeed that the Board has to examine any alleged violation of the principle of protection of legitimate expectations, which is a violation of higher-ranking law, and has to avenge it, if such a violation is confirmed. However, the facts and arguments submitted by the appellant do not allow to draw such a conclusion. [2.5.2] Irrespective of the fact that it does not necessarily follow from the passage (b), above, which, incidentally, is preceded by the sentence “It is established case law …” (Examiners’ Report 2007, point 2 of the general remarks), that a document containing a negative statement regarding the suitability of its subject-matter for the purpose of the invention cannot possibly qualify as closest prior art in the EQE, there is no evidence whatsoever for the assertion according to which such a guiding sentence was taught in the preparatory courses for the EQE 2009 in a misleading way, for which the Examination Board was responsible. [2.5.3] Moreover, papers C 2007 and 2009 are based on (fictitious) factual situations that are not related to each other, both regarding the impugned patent and the prior art. Thus the solutions to these problems are to be obtained and marked independently of each other, it being noted that the factual correctness of the “model” solution that underlies the evaluation has to be assessed on the basis of the EPC, the case law of the Boards of appeal and the practice of the EPO, but not on the basis of (assumed) guiding sentences of the Examination Board. A candidate ought to know this. [2.5.4] Thus there is no legal or factual basis for assuming a situation of legitimate expectations as alleged by the appellant. [2.6] The Board cannot endorse the argumentation of the appellant according to which a candidate should not be held accountable (via a reduced number of marks) for using […] a reasoning based on a document (here: Annex 3) as closest prior art, which reasoning has been qualified as “generally not convincing” in the Examiner’s Report. In the end this argumentation boils down to saying that a candidate could never be held accountable for a performance that has been found to be insufficient. Only the Examination Board could be held accountable because whenever a problem was not solved or badly solved, it bore the responsibility because it had (badly) “designed” the problem or provided improper or even wrong criteria for its solution. Apparently the appellant has misunderstood the decisions related to the EQE 2007 (such as D 7/07) dealing with a global addition of marks (pauschale Punktevergabe) by the Examination Board, whereby the Board – in line with the corresponding case law, see D 3/00 and D 7/05) intended to appropriately reward the candidate, in particular when the problem-solution approach was correctly formulated, even though the candidate had chosen what it considered to be the wrong document for assessing inventive step. [2.7] In his second submission […] the appellant has submitted that and why the solution proposed by the Examination Board in respect of the closest prior art to be chosen (i.e. Annex 2) was simply and objectively wrong. Examination proceedings which, as far as the object of the exam is concerned, are based on technically wrong premises, are in conflict with the principles of legal security and fairness and cannot meet the purpose of the EQE, i.e. the assessment whether the candidate is “fit to-practice”. Thus the case law according to which a factual review of the examination proceedings cannot be part of the tasks of the Board of appeal, could only refer to the appropriateness of the marking but not to the definition of the “correct” answers by the Examination Board according to which the marks were allocated. [2.7.1] This assertion is neither logical nor in line with the established case law, according to which decisions of the Examination Boards can only be reviewed in regard to violations of the law. The question of whether a certain document rightfully constitutes the closest prior art for the purposes of the “problem-solution-approach” certainly does not qualify as such. The appellant has not provided evidence that the assessment was based on a clearly wrong technical or legal basis, i.e. a basis that contradicts the laws of logic and is apparent even without any fresh factual or legal assessment of the copy of the appellant (cf. D 9/00, D 6/04). Rather, he has provided arguments supporting his opinion that the approach presented as model solution, on which the marking of paper C was based, was wrong as to its substance. 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of Annex 2 (and in particular whether the relevant statements in this document would deter the skilled person from considering the solution according to the invention […]). The appellant has made the choice, based on his technical knowledge and on the pieces of information at his disposal, and of his (not necessarily uniquely correct) understanding of them, to use Annex 3 as a basis for attacking the patent (paper C of the exam). Even on a conceptual level, one cannot accuse the Examination Board of having committed a legal error because it (as well as the interested public and supposedly most of the candidates) had found another document to be the closest prior art and thus as more suitable. [2.7.2] Moreover, had there been an obvious error as defined above, which was apparent without reviewing afresh the copy – such as a model solution that was self-contradictory or drafted in a misleading way (regarding the paper itself, see D 13/0 (sic)) – one might have expected that not only the appellant but also other candidates and/or the Examination Board and/or Examiners would have noted such an error and that there would have been discussions on that topic. However, the appellant has not asserted anything in this regard and the Board has not heard of such by other means either. [3] The appellant is not entitled to have access to the instructions to the Examiners as well as their notes and annotations concerning the individual papers (request 3), at least when the marking sheets satisfied the legal minimum requirements (D 7/05 [12] and D 13/02 cited therein, etc.). [3.1] The appellant referred to D 7/05 and argued that the minimum requirements had not been fulfilled because for 93 of the marks available in paper C there was only an allocation to the categories “Use of information” and “Argumentation”, without there being an allocation of the marks awarded to the individual attacks and their various aspects. However, this is not required in application of the criteria set forth in D 7/05, it being observed that this decision was based on a specific indefiniteness of the marking sheet (which is not the case here), i.e. the 55 marks available for paper D II were allocated to four categories designated by “A”, “B”, “C”, and “D”, so that even considering the disposition of the paper as well as the “Possible Solution” in the Compendium … an outsider could not find out to which element of the candidate’s answer to part II of paper D the number of marks in categories A, B, C, and D had been allocated (point [10] of the reasons). This deficiency of the then marking sheet for paper D was remedied by expressly allocating each of the - still (only) four – groups of marks to one of the four examination questions. Moreover, paper C in the application form (Bewerbungsbogen; I guess this should read Bewertungsbogen, i.e. marking sheet; I have corrected the rest of the paragraph accordingly) of which each of the three groups of marks are allocated to a well-defined aspect, differs from paper D, not only in its volume and duration of the paper but also and in particular in its structure. Whereas paper D, in spite of the unitary factual situation (einheitlicher Sachverhalt), consists in distinct legal questions each of which has its proper answer, paper C requires a coherent train of thought (Gedankenführung), the development of a purposeful, factual “global strategy” that is adapted to factual and legal requirements, in the evaluation of which according to the “fit-to-practice” criterion the rating of the individual parts of the answer cannot be made without considering the overall context of the copy (D 3/00 [3]) and even answers that deviate from the what was expected but which nevertheless are arguable and ably justified have to be marked in a fair way (D 7/05 [headnote 2]). In this context the allocation of marks in the marking sheets for paper C according to the three criteria mentioned therein – which, incidentally, is well-proven and has never been seriously challenged – is appropriate and quite instructive for the candidate. Thus it simply is not true that these marking sheets are “de facto useless for understanding the decision on the outcome of the examination” and, therefore, do not contain any details on the marking within the meaning of Rule 6(1) IPREQE. As far as the possibility of understanding (Nachvollziehbarkeit) of the marking is concerned, one must not forget that it is to be ensured not only via the indications in the marking sheets but also in connection with the documents published in the Compendium. Last, but not least, the fact that this was also the case for paper C of the EQE 2009 is confirmed by the explanations provided in the statement of grounds of appeal wherein the appellant explains in great detail, based on the “Examiners’ Report Paper C 2009”, why he thinks that he should have been allocated a greater amount of marks (which is sometimes indicated with great precision) for certain aspects of the answer, even in paper C […]. [3.2] Thus the “documents and marking schemes which actually formed the basis for the evaluation of the candidate” are already accessible to the appellant: first of all, his copy; the “marking scheme” is provided in the “Examiners’ Report”. As far as internal notes regarding the evaluation of the attack against claim 1 in paper C are concerned, one may expect that they exist. However, their mere existence does not legally entitle [the appellant] to have them made accessible [to him] (see point [3] above), apart from the fact that this would be tantamount to obtaining a “fishing expedition” (Einholung eines Erkundungsbeweises), which is not acceptable even according to general rules of proceedings. If there is no evidence that legal principles have been violated in the marking (which the Examination Board itself had acknowledged in view of the marking of paper C of the
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EQE 2007, see point [2.6] above) this could only serve the review of the appropriateness or correctness of the marking, which cannot be the object of appeal proceedings (D 20/96, D 6/02). […] The appeal is dismissed. Should
you
wish
to
download
the
whole
decision
(in
German),
just
click
here.
NB: There is also a second decision in this case because the appellant requested a correction of the decision (here).
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T 245/10 – Be Active
K’s Law – The ebook
T 245/10 – Be Active 7 Mai 2013
This is an appeal against a revocation. One of the disputed issues was whether the Board should admit comparative trials filed exactly one month before the oral proceedings (OPs). *** Translation of the French original *** [3.1] According to the RPBA, in cases where there is more than one party, appeal proceedings shall be based on statement of grounds of appeal and the reply to it, which has to be provided within four months of notification of the grounds of appeal. The statement of grounds of appeal and the reply have to contain the parties’ complete case (Article 12(1) and (2) RPBA). Any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy (Article 13(1) RPBA). The latter principle especially applies to the period following the summons to OPs because amendments sought to be made after this date are not admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the OPs (Article 13(3) RPBA). These provisions codify the established case law of the Boards of appeal regarding the admissibility of late filed experimental data. As to the exercise of the discretionary power to admit or to dismiss evidence that has not been filed in due time, the criteria established by the case law require the late filing of experimental data not to be due to a tactical abuse of procedure and to respect the equity of the proceedings, and that their admission into the proceedings respects the right to be heard of the other party (T 270/90 [2.2]). [3.2] In the present case the comparative trials carried out by the [opponent] have been filed on September 17, 2012, i.e. about two years after the expiration of the time limit for filing a response to the statement of grounds of appeal, more than two months after the summons to OPs and only one month before the date on which the OPs were to be held. [3.2.1] Thus it is undisputable that the [opponent’s] report on comparative trials is late-filed. Pursuant to Article 13(1) RPBA the admission of these trials into the appeal proceedings is within the discretion of the Board. Thus the Board first has to examine whether there is a justification for the late filing and whether this new evidence can reasonably be expected to be dealt with without adjournment of the OPs. [3.2.2] The new trials of the [opponent] are intended to show that the selectivity of the coloration that is obtained by means of the claimed compositions is less pronounced that the one obtained with the composition according to document D3. According to the [opponent] these trials were relevant and constituted a response to the line of argument based on the improvement of selectivity which had been presented for the first time during the appeal proceedings. Therefore, they should be admitted into the proceedings. However, this line of argument of the [patent proprietor] has been presented in the statement of grounds of appeal dated February 18, 2010, and, therefore, cannot justify the late filing of the trials on September 17, 2012. The [patent proprietor] has contested the validity of the results presented in these trials and requested to be offered the possibility of carrying out counter-trials, which, according to the [patent proprietor] were necessary for providing an appropriate response. As the trials carried out by the [opponent] have been filed only one month before OPs, their admission into the proceedings would have the consequence of [necessitating the] postponement of the OPs in order to allow the [patent proprietor] to carry out the counter-trials, i.e. a situation which Article 13(3) RPBA seeks to prohibit. As a consequence, the Board decides not to admit the comparative trials filed on September 17, 2012, into the appeal proceedings (A 114(2)). 488 | 3398
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[3.2.3] According to the [opponent], the [patent proprietor] could not have been surprised by these comparative trials because they had been announced in the response to the statement of grounds of appeal dated September 15, 2010, and the one-month period was sufficient to produce counter-trials. The [patent proprietor] dismissed this argument by pointing out that much more than one month was needed to perform comparative trials. It is true that the [opponent] had announced, in its letter dated September 15, 2010, that it would comment on the comparative trials filed together with the statement of grounds of appeal and/or present counter-trials in case the Board found the trials of the [patent proprietor] to be admissible (see point 3.1 of the letter). However, if a party to the proceedings desires to obtain a decision in its favour, it has to be active in the proceedings and file the evidence and arguments which it considers useful for supporting its case, of its own motion and in due time. In the present case, the [opponent] has made the deliberate choice to delay the filing of the trials. However, a decision of the Board on the admissibility of the trials of the [patent proprietor] could not be taken before the OPs because they had been requested by both parties and because, as a consequence, this decision could not be taken outside the OPs. By acting in this way, the [opponent] has taken the risk of jeopardising the admissibility of its own trials into the proceedings because normally a decision has to be taken at the end of the OPs as chopping up (saucissonnage) the case into several OPs only for discussing the admissibility of late filed evidence would be inappropriate in view of the need for procedural economy (Article 15(6) RPBA). Nor would it be reasonable to expect the [patent proprietor] to carry out new comparative trials one month before the date of the OPs before the Board, as such trials inter alia require the preparation of cosmetic compositions, their use in coloration trials, the evaluation of the results obtained as well as their impact on the patentability of the claims (see T 2415/09 [3.4]). According to the [opponent] the case law of the Board of appeals, and in particular the decisions T 235/04, T 334/02, T 421/02, and T 1098/05, establish that one month is sufficient for carrying out comparative trials. However, the cited decisions do not support this argument because they do not deal at all with the time required for carrying out comparative trials. It is true that in the underlying cases, comparative trials filed about one month before the OPs had been admitted into the proceedings. However, it had been possible to deal with this new evidence in the OPs because there is no indication in these decisions that the adverse parties had requested a postponement of the OPs in order to carry out counter-trials. Therefore, this argument of the [opponent] has to be dismissed. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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T 432/10 – You Can’t Ignore It
K’s Law – The ebook
T 432/10 – You Can’t Ignore It 6 Mai 2013
This is a decision on an appeal filed by the opponent against the maintenance of the opposed patent in amended form. Claim 1 of the request found allowable by the Opposition Division (OD) read: 1. A non-therapeutic process for improving the glucose metabolism of a companion animal comprising the steps of: feeding said animal a diet containing from 1-11 weight percent of supplemental total dietary fiber, said supplemental total dietary fiber consisting of a blend of beet pulp, fructooligosaccharides and gum talha or gum arabic; and maintaining said animal on said diet for a sufficient period of time to allow said blend to ferment in the gastrointestinal tract of said animal. The opponent argued that the diet defined in the claims included a one-time administration of the dietary fiber. As it was not possible to obtain the desired beneficial effect after such a short duration, the claimed invention was not sufficiently disclosed. The Board agreed: [2] The invention defined in claim 1 of the sole request concerns a non-therapeutic process for improving the glucose metabolism of a companion animal involving a diet in which a certain blend of dietary fibres is fed to a companion animal. The duration of the diet is defined as follows: maintaining said animal on said diet for a sufficient period of time to allow said blend to ferment in its gastrointestinal tract. This instruction is per se very clear: the diet has to be maintained until the blend of dietary fibres is fermented. As fermentation already occurs after the first administration of the fibre blend, the diet is reduced to a one-time administration: the fibre blend is orally administered, passes through the stomach and enters the intestine, where it is fermented. Then the diet is terminated. Such a one-time administration is in direct contradiction to the term “diet” which implies that a certain schedule concerning the administration of food is followed over a period of time that clearly surpasses a one-time administration. As a consequence, the claimed invention is contradictory in itself, so that the skilled person, trying to put into practice the invention defined in claim 1, is at a complete loss as to what he should do. The OD argued that the feature “maintaining said animal on said diet for a sufficient period of time to allow said blend to ferment in the gastrointestinal tract of said animal” did not set a definite time limit for the use of the composition. That would be the only logical way to remove the contradiction. The board, however, concludes that this interpretation would be contrary to the interest of legal certainty, as it would mean that a feature that is perfectly understandable per se would have to be deliberately ignored in order to make the invention workable. Such a step has to be distinguished from a situation concerning clarity, in which an unclear term figuring in a claim is interpreted in the light of the description. There, the unclear feature is not simply ignored. On the contrary, by studying the description, every precaution is taken in order to read it correctly. In the present case, however, the mental deletion of the feature in question would mean switching from the unworkable and thus insufficiently disclosed invention defined in claim 1 to a different invention that is workable but not claimed. The evaluation of sufficiency of disclosure takes account of the entire information to be found in the patent, including claims, description, examples and figures. The board, however, wishes to emphasise that the invention as defined in the claims constitutes the basis of the evaluation. If, as in the present case, the skilled person, taking into account the entire teaching of the patent, is not able to rework an invention which is defined in the claims in a completely comprehensible manner, then the invention is insufficiently disclosed. As a consequence, the requirements of A 83 EPC 1973 are not met. The Board then revoked the patent. NB: The Board also drafted a headnote:
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There is insufficiency of disclosure if the skilled person, taking into account the entire teaching of the patent, is not able to rework an invention which is defined in the claims in a completely clear and comprehensible manner, unless he disregards a meaningful feature thereof. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 248/12 – In Gold We Trust
K’s Law – The ebook
T 248/12 – In Gold We Trust 3 Mai 2013
In this opposition appeal case the Board examined whether auxiliary request 2 complied with A 123(2). Claim 11 of this request read: A tyre removal machine comprising a base from which there upwardly project rotary means for supporting the wheel rim (6), and a column carrying at least one tool arranged to interact with the tyre bead, wherein said tool undergoes movements parallel to the axis of rotation of the wheel rim, characterised in that the rotary means supporting the wheel rim (6) undergo translating movements arranged to position the flange of the wheel rim (6) in a fixed zero position relative to the direction of movement of said tool, said rotary means for supporting the wheel rim (6) comprising a shaft (16), wherein the tyre removal machine comprises a programmed electronic processor configured for being fed with the wheel rim dimensions and for causing said shaft (16) to translate until it reaches said zero position in which bead release discs (286) and (306) lie just outside the flange on the wheel rim. The opponent criticised the lack of convergence of this claim and pointed out that A 123(2) was violated because of several intermediate generalisations. [3.1] The opponent argued that this request should not be admitted (citing T 1685/07), as the subject-matter of claim 11 of the respective auxiliary requests 2 and 3 was non-converging. [3.1.1] The Board notes that the claims of the present auxiliary requests 2 and 3 filed with letter of 5 February 2013 are however identical to requests filed with the grounds of appeal. In contrast in the case T 1685/07 [6.7], the non-converging claims in different requests did not correspond to requests filed with the grounds of appeal, rather these were filed in response to the summons to oral proceedings so the reasons for the Board’s use of its discretion in that case do not apply here. [3.1.2] Also, the subject-matter of claim 11 of these requests cannot immediately be regarded as being divergent between the second to the third auxiliary request merely because “rotary means” has been removed at one location in the claim in the third auxiliary request. In terms of any divergence compared to the first auxiliary request, at least in as far as claim 11 is concerned, this is rather academic since claim 11 was the same in the main request and auxiliary request 1. The matter of divergence is also not by itself decisive. [3.1.3] Whilst the Board has discretion under Article 12(4) RPBA not to admit requests into proceedings which could have been presented in the first instance proceedings, this question can be left aside in the present case since, as can be understood from the conclusions infra, the requests are anyway not allowable. [3.2] With respect to the basis in the originally filed application of the feature “rotary means for supporting the wheel rim comprises a shaft” (referred to hereafter as the first feature), the Board notes that such wording is not to be found in the application as filed. “Rotary support means” are mentioned in paragraphs [0012] and [0016] although without detailing their structure. The only part of the application detailing the composition of the rotary means is in claim 8 which, however, discloses the rotary means as comprising a combination of more features than simply a shaft: for example, an upper plate, a pawl means and a statement that the shaft is hollow. It thus follows that the rotary means is described, in its sole disclosure, as comprising significantly more than simply a shaft. The Board thus concludes that the extraction of this single feature from a sole disclosure in the patent application disclosing the shaft in combination with other features has no basis. [3.2.1] Claim 8 is indeed dependent on claim 7 which itself is dependent on claim 1 (not claim 11). However, whilst dependent claims relate to preferred features with respect to an independent claim from which they depend, dependency alone does not necessarily provide an unrestricted resource to extract individual features from these claims (here dependent claims 7 or 8) for combination with those of another claim. The features in claim 8 are disclosed in combination and, due to dependency of claim 8 on claim 7, also in further combination with those in claim 7. This disclosure cannot therefore per se provide a basis for extracting individual features, such as the shaft, from claim 8 for combination with the subject-matter in claim 11. At least when having regard
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to the claims, no direct and unambiguous basis is given for the isolation of merely one or some of those features from the specific combination in which they are disclosed. [3.2.2] The proprietor also argued that the shaft is disclosed elsewhere in the application as possessing supporting and rotating functions and thus clearly is what is intended within the expression “rotary means” in claim 11 and in claim 1. The Board concludes however that whilst the shaft is indeed indicated to carry out supporting […] and rotating […] functions, there is neither an explicit nor an implicit link between the rotary means and the shaft alone anywhere in the application as filed. Solely in claim 8 is any link between the rotary means and the shaft established, and there it is in combination with a plurality of other features. [3.2.3] The reference to paragraph [0025] itself as providing a basis for extracting only the shaft 16 as the constitutive part of the rotary means is also not convincing since paragraph [0025] specifically refers to what is shown in the Figures, and indeed specifically describes a shell 3 surrounding the shaft 16. For a skilled person, it is also evident when reading paragraph [0025] in conjunction with the Figures that the shell 3 surrounding the shaft 16 has the function of supporting the shaft 16 as a journal. At least these structural elements are thus clearly functionally and structurally disclosed in combination in that part of the description. It is also clear from the Figures and the related description that the shaft is functionally and structurally arranged as a hollow shaft to coact with still further features. [3.2.4] The Board thus concludes that the text passages referred to by the opponent provide no basis in the application as originally filed for isolating this first feature from the context in which it is disclosed and then combining this with other features defined in claim 11. Nor can the Board immediately see any other disclosure which would provide basis for such introduction in the form chosen. [3.2.5] The opponent’s further argument, concerning the idea that the skilled person is not presented with any additional technically relevant information and the ability of a skilled person to extract only the technically relevant information from the application as filed, is dealt with infra in relation to the further feature added to claim 11. [3.3] Concerning the basis in the application as originally filed for the added feature “wherein the tyre removal machine comprises a programmed electronic processor....” (referred to hereafter as the second feature) the Board finds that the tyre removal machine is only disclosed as comprising a programmed electronic processor in combination with further features which have not been included in claim 11 of this request. [3.3.1] Paragraph [0054] of the application introduces the programmed electronic processor as coordinating the movement of “certain aforedescribed devices”. It is thus already evident at the outset that any one of the paragraphs following paragraph [0054] cannot, unless derivable in another way, be viewed in isolation. In the subsequent paragraphs until paragraph [0062], the operation of the processor with certain of these devices is described. It is to be noted that these following paragraphs essentially concern the operation of the tyre bead removal machine, whereby the processor is disclosed only in relation to the method steps included in the machine operation. The programmed electronic processor is thus disclosed only in combination with the assorted devices mentioned in the operating method disclosed in paragraphs [0056] to [0062], and introduction of the processor into claim 11 isolated out of this particular context is thus an inadmissible intermediate generalisation of the disclosure in the application as originally filed. [3.3.2] In this regard, the terminology “inadmissible intermediate generalisation” (see also T 1408/04) is to be understood to refer, as an abbreviated form used by practitioners, to an undisclosed combination of selected features lying between an original broad disclosure (in this case, claim 11 as filed) and a more limited specific disclosure (in this case, the specific details of a processor disclosed as being used as an integral part of a method in which several assorted devices are operated in a specific order). [3.3.3] The proprietor argued that the function of the processor had first to be understood, whereupon a skilled reader would then extract those features of technical relevance for this function and introduce them into the claim. Only if the skilled person were then presented with additional technical relevant information would an objection then allegedly arise. [3.3.4] The Board however finds this argument non-persuasive, as explained below. [3.3.5] In the decision of the Enlarged Board of Appeal G 2/10 [4.3] the following was stated when referring to earlier decisions G 3/89 and G 11/91:
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K’s Law – The ebook
“it follows that any amendment to the parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in A 123(2) and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed”. [3.3.6] The foregoing is referred to further on in G 2/10 [4.3] as “the gold standard”. The Board can see no reason why the Board should depart from the “gold standard” in the present case. [3.3.7] In as far as the proprietor makes reference to recent case law of the Boards of Appeal to support its case, the Board notes that case T 1906/11 [4.2] indeed mentions the terminology intermediate generalisation (“Zwischen-verallgemeinerung”) as being irrelevant and takes up the issue of whether the skilled person is presented with additional technical relevant information as being the decisive factor. [3.3.8] The Board (in the present case) can agree with that decision in so far as it is irrelevant whether an amendment is specifically referred to as an “intermediate generalisation” or not, since it is the specific amendment which has been made which must be considered. In the present case however (see the definition in item [3.3.2] above) the Board refers to “inadmissible intermediate generalisation” as appropriate jargon when considering the particular nature of the amendment and its relationship to the content of the application as filed. [3.3.9] In respect of the “technical relevance” of the added information, case T 1906/11 cannot be understood by this Board to define a new standard for judging amendments with respect to A 123(2) since this would be at odds with the “gold standard”. In other words, the standard whereby an amendment must be directly and unambiguously derivable, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the application as filed, remains a pre-requisite for judging any amendment with respect to the requirement of A 123(2). [3.3.10] Hence, the “relevance”, as such, of the technical information is not of importance for deciding upon the issue of A 123(2), rather simply whether this technical information received by the skilled person is new having regard to the content of the originally filed application. Indeed, in G 2/10 [4.4.2, 3rd paragraph] it is stated that “the Enlarged Board (in G 1/10) replied by stating that any amendment to a claim is presumed to have a technical meaning otherwise it would be useless to have it in the claim”. [3.3.11] In the present case before the Board, the programmed electronic processor is indeed disclosed in combination with a plurality of further technical features […] such that extraction of the processor alone from these paragraphs and insertion into claim 11 presents the skilled person with new technical information in the form of a new combination of features which is not directly and unambiguously derivable from the application as originally filed. [3.3.12] The proprietor further argued that paragraph [0054] mentions that only certain of the aforedescribed devices are coordinated by the programmed electronic processor and the skilled person would thus extract only necessary technical features for inclusion in the claim. The Board can concur with the proprietor insofar as the processor is described as coordinating the movement of certain devices. However, as regards the disclosure of the processor in paragraph [0054] onwards, this is disclosed in a structural and functional interrelation with the other features in these paragraphs such as, for example, the locking means 4 which secure the wheel rim 6 to the support plate 17 (see Fig. 3). Without the locking means securing the wheel rim, the tyre removal machine would not be successful in releasing the tyre bead and thus there is a functional interrelation between the locking means and the processor, the latter controlling the relative movement between the shaft supporting the wheel rim and the bead release discs. A disclosure of a tyre removal machine as in granted claim 11 in combination with – only – features of a programmed electronic processor is simply not part of the application as originally filed. [3.3.13] It also cannot be accepted by the Board that when a skilled person applies common general knowledge, he would then arrive at the combination of features in claim 11 of this request. Nothing has been filed by the proprietor to support this argument, nor is any such information derivable from the application as filed. The proprietor’s argument that a skilled person would realise what elements were technically relevant to the invention when adding certain further structural features into the claim is entirely subjective when considering the content of the application as filed which does not disclose such elements (here namely the programmed
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T 248/12 – In Gold We Trust
K’s Law – The ebook
electronic processor, and the rotary means comprising a shaft) in anything but a specific form in a specific context. [3.4] It thus follows that the introduction into claim 11 of both the first and second features identified above results in the skilled person being presented with a new combination of features (i.e. new technical information) which he would not derive directly and unambiguously, using common general knowledge, from the application as filed. Claim 11 thus contravenes A 123(2) and auxiliary request 2 is therefore not allowable. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1713/11 – Back To Basics
K’s Law – The ebook
T 1713/11 – Back To Basics 2 Mai 2013
This is an appeal against the revocation of the opposed patent. In this case the opposition had been withdrawn on July 16, 2010, about two years of the beginning of the proceedings (August 6, 2008) but about a year before (on October 7, 2009) the withdrawal a third party (JDC) had declared its intervention. The intervention was based on a “Privatanklage” raised against the intervener on behalf of Street Surfing LLC before the Landesgericht für Strafsachen Wien on 7 July 2009. This “Privatanklage” (which under Austrian law is a request or complaint for instituting criminal proceedings) alleged a wilful infringement of European patent 1 511 541 of which Street Surfing LLC was the exclusive licensee for Austria. The Landesgericht Wien dismissed the “Privatanklage” on 5 August 2009 as manifestly flawed. The Opposition Division (OD) considered that the intervention by JDC was admissible and that the subjectmatter of claim 1 as granted could not be carried out and added unallowable subject-matter. Furthermore none of the auxiliary requests were found to overcome the objections based on A 123. The OD, therefore, revoked the patent. The decision contains an interesting discussion of the admissibility of the intervention by JDC: [2.1] A number of arguments have been raised by the patentee both in opposition and on appeal why the above intervention by JDC should be held inadmissible, namely:
Intervention under A 105 should be limited to civil proceedings, and criminal proceedings under Austrian law did not provide for injunctive relief or damages; Proceedings should be pending at the time the intervention was raised; The “Privatanklage” was rejected a limine and therefore deemed never to have existed or “instituted”; Neither “Privatanklage” nor dismissal thereof were officially communicated to the intervener; Abuse of process due to ownership interests of JDC in Street Surfing LLC (or vice versa).
The patentee in this respect remarks that the Austrian proceedings “were incorrectly filed as criminal proceedings and were procedurally flawed, lacking the requisite evidence and basis and being directed to an association rather than a natural person”, and for its view of inadmissibility further relies upon the travaux préparatoires and a statement of the Austrian law firm Schwarz Schönherr. During oral proceedings, the patentee further advanced the argument that proceedings according to A 105 required a two-party procedure in order to avoid conflicting decisions. Thus, two parties should be involved. This was clear from decisions T 305/08 and T 452/05. In the case at issue, no proceedings were instituted because the judge dismissed the case without involvement or notification of the other party. Thus, there was no date for calculating the time period under R 89(1), and consequently these proceedings would not be eligible for triggering an intervention. In the absence of an official notification, no intervention could be made. [2.2] A 105 establishes a link between national laws of the Member States and the EPC in that it allows a party to intervene in ongoing opposition proceedings after expiry of the opposition period if faced with an infringement action or allegation of infringement which can only be instituted in a national jurisdiction under national law. As the EPC must accommodate for different national proceedings in its Member States, current and future, it can give no specific definition of what constitutes proceedings for infringement but can only refer to infringement in the broadest of terms. Furthermore, it is clear that intervention was conceived as a procedurally exceptional situation, which is justified only by a substantial legitimate interest of the assumed infringer to enter the opposition proceedings. This substantial legitimate interest does not arise from the fulfilment of special procedural provisions, but from the fact of actually having been confronted with infringement proceedings (or at least having been called upon to cease an alleged infringement seriously enough so as to justify a counteraction). Given this exceptional nature of the intervention, it does not appear likely that there would have been a legislative intent to create an elaborate and intricate system of procedural provisions for the admissibility of interventions, and therefore the Board should also refrain from creating such a system through its jurisprudence. Rather, it appears preferable to concentrate on the examination of the substantive conditions for admitting an 496 | 3398
T 1713/11 – Back To Basics
K’s Law – The ebook
intervention, namely whether the action of the proprietor reaches the level which is sufficient to establish a substantive legitimate interest to intervene. The fulfilment of the requirements of R 89(1) should be examined similarly, concentrating on the legislative intent instead of creating further procedural preconditions. [2.3] A 105(1) draws up two scenarios: First, “proceedings for infringement of the same patent have been instituted against” the intervener, and, second, “the proprietor of the patent has requested that [the intervener] cease alleged infringement of the patent and that [the intervener] has instituted court proceedings for a ruling that he is not infringing the patent.” In the first case, the right to intervene rests upon “proceedings for infringement”, in the second case, on proceedings for ascertaining non-infringement. The first option is more broadly worded. It does not require “court” proceedings, or a request by the patentee to cease and desist the allegedly infringing behaviour. But it does require the patentee to take the first step. [2.4] As the patentee rightly points out, not any step will do. The patentee in this respect particularly points to the decision T 305/08. Here, the Board held that nullity proceedings concerning the patent at issue are not proceedings that could lead to the determination whether the patent was infringed, and would thus not qualify. The Board found the same also for saisie-contrefaçonproceedings, and in this respect held the following: “[1.3.5] As regards the fact that a “saisie-contrefaçon” (seizure procedure) in Zaragoza/Spain had been instituted earlier, it is stated in A1 […] that this procedure does not constitute infringement proceedings. In order to find the correct definition of infringement proceedings in the sense of A 105 reliance has to be placed on the specific national law. The respondent provided no evidence which could lead to a contrary interpretation under Spanish national law than that given in A1. [1.3.6] OT2 is an order regarding the findings of a seizure procedure according to a Court resolution of 29 December 2006 […] providing conclusions as to the patent of the present appeal […] stating that “we cannot determine if there exists hints of a potential violation as the information is not sufficient...”. In accordance with Article 130 of the Spanish Patents Act […], it is evident that the procedure does not simply continue as though an infringement action has been brought, but that a new procedure must commence. In as far as concerns Article 130 of the Spanish Patents Act […] a judge must indeed order the opening of a separate file in cases where “the Judge considers that it is not presumable that the devices inspected serve to execute the violation of the patent.” The case relating to OT2 is therefore also not proceedings which correspond to A 105(1)(a) or (b).” [2.4.1] The Board however fails to see how decision T 305/08 could assist the patentee. Decision T 305/08 aims to distinguish proceedings for infringement from other proceedings that may concern the patent at issue but are not aimed at ascertaining whether there is infringement or not. To this end, the present board would agree with T 305/08that the “saisie contrefaçon” is such a procedure. In countries where the saisieexists, it is not a procedure for ascertaining infringement, but for preserving evidence: “As a preliminary measure prior to an infringement action, the saisie contrefaçon … allows for a surprise inspection and...does not depend on the likelihood of success in the main action … the applicant may proceed with a request for saisie even on the basis of a patent that takes no effect in France...This is completely consistent with the saisie-contrefaçon being a provisional measure meant to preserve evidence....” (L. Petit, The Enforcement of Patent Rights in France, in: Heath/Petit, Patent Enforcement Worldwide, IIC Studies 23, Hart Publishing 2005, 152/153). The same holds true for the Italian descrizione: “The “description” is an order granted by the President of the competent court authorising the plaintiff … to inspect and describe the allegedly infringing products/processes … The aim and use of this procedure is to collect official evidence of infringement for the purpose of using it in the trial” (G. Casucci, The Enforcement of Patent Rights in Italy, in: Heath/Petit, Patent Enforcement Worldwide, IIC Studies 23, Hart Publishing 2005, 196/197). The decision T 305/08 points to the same situation for Spain. [2.4.2] The patentee could have further pointed to decision T 223/11. Here, the patentee had instigated proceedings before the National Authority of Medicines and Health Products and the Ministry of the Economy and Innovation in Portugal in order to prevent the defendants from issuing a marketing authorisation to the intervener. While the Board appreciated that a ruling in this case could have adverse commercial effects on the marketing position of the intervener, it found that in making a ruling on this issue, the Lisbon Administrative Court did not have to rule on the issue of infringement: “Although the present board appreciates that these proceedings can obstruct the intervener’s possibilities of (future) market entry with an allegedly infringing product, it is neither the patent proprietor’s claim nor the court’s assessment that the intervener is in fact infringing the patent. The court is rather assessing that the granting of the marketing authorisation opens up the possibility for a future infringement. 497 | 3398
T 1713/11 – Back To Basics
K’s Law – The ebook
It is internationally a widely accepted principle that the submission of a request for a marketing authorisation for a pharmaceutical product by a generic company does not constitute patent infringement (the so-called Bolar exemption). The EU Council and the EU Commission have for instance adopted the following common position: “The Council and the Commission consider that the submission and subsequent evaluation of an application for a marketing authorisation as well as the granting of an authorisation are considered as administrative acts and as such do not infringe patent protection” (Official Journal of the European Union 2003, C 297 E/66, footnote 1). The principle behind the Bolar exemption is that generic companies should be in a position to take the necessary preparatory measures in order to be able to enter the market without delay once patent protection expires. The Portuguese legislator has in the meantime codified this principle in law No. 62/2011 of 12 December 2011. This law entered into force after the judgement of the Administrative Court was rendered. However, this circumstance does not mean that prior to the promulgation of the new law the proceedings instigated by the patent proprietor, no matter how obstructive these may have been to a future market entry of the intervener’s product, can be considered as equivalent to infringement proceedings. The present board thereby notes that according to the judgement of the Administrative Court, one of the intervener’s arguments, in line with the Bolar exemption, was that it “has the right to undertake the preliminary and preparatory steps so as to be in a position to sell the medicinal products the day after the industrial property rights held by the Plaintiff lapse”. It can therefore not even be established by the board that the intervener had the actual intention of bringing its product onto the market while the patent was still in force. Thus, as the proceedings before the Lisbon Administrative Circuit Court cannot be considered to be infringement proceedings, the intervention is inadmissible.” (reasons [2] of the decision) The Board in the above case therefore examined whether the proceedings in substance amounted to infringement proceedings, and denied this, because the question of infringement was not determinative on the outcome of the case. [2.5] It is not apparent to the Board why the definition of “proceedings for infringement” should be limited to civil proceedings, to proceedings that allow for certain remedies to be claimed, or two party proceedings. This is all the less so, given that A 105 has to be read onto national infringement proceedings of all Member States with often widely different national systems of ascertaining infringement of patents. It would therefore seem inappropriate to give A 105 a particular interpretation that might be tailored to national infringement proceedings in some Member States, but not in others. On an international level, the WTO/TRIPS Agreement ratified by all EPC Member States in Part III (Arts. 41 - 61) lists civil (Arts. 44 - 47), administrative (Art. 49) and criminal (Art. 61) proceedings in order to ascertain infringement, and mentions a wide variety of possible remedies. Apart from injunctive relief (Art. 44), there are damages (Art. 45) and “other remedies” (Art. 46). Remedies specified in cases of criminal enforcement are imprisonment and/or monetary fines. Mention of criminal procedures against infringement in Art. 61 TRIPS is thus indicative of the fact that this is one recognised way of enforcement (optional in the case of patents, but listed nonetheless). The patentee’s argument made in this respect that A 105 required proceedings between two parties (which criminal proceedings often are not) in order to avoid conflicting decisions (presumably between the national courts and the EPO) is not supported by the text of the provision. This argument is also difficult to sustain in light of the fact that if this had indeed been the intention behind the provision, then why does it mention only “proceedings for infringement” but not “proceedings for invalidation”? After all, national proceedings for invalidation on the one hand and opposition/appeal proceedings under the EPC on the other may well lead to conflicting results. Apart from that, infringement proceedings are meant to ascertain the question of infringement and not necessarily validity of the patent, which is what is investigated in opposition/appeal proceedings before the EPO. [2.6] It therefore seems to the Board that as long as a patentee (or any other party entitled to do so) initiates proceedings meant to establish whether a third party is commercially active in an area that falls within the patentee’s right to exclude, such proceedings are “proceedings for infringement” in the sense of A 105. In the case at issue, the licensee of the patent at issue on 7 July 2009 raised a criminal complaint against the intervener alleging wilful infringement of the patent at issue. It is clear that in the course of these proceedings, the issue of whether the patent was infringed must be determined. Sec. 159 Austrian Patent Act that is the basis for criminal 498 | 3398
T 1713/11 – Back To Basics
K’s Law – The ebook
enforcement of patent infringement starts with the words: “Wer ein Patent verletzt....” (whoever infringes a patent). Thus, the criminal proceedings at issue were “proceedings for infringement” according to A 105. [2.7] The patentee further argues that in order for a party to intervene under A 105, the proceedings for infringement must still be pending at the time the intervention is declared. The patentee in this respect relies on decisions G 4/91 and G 1/94 of the Enlarged Board of Appeal. These decisions for good reason require pending opposition proceedings for an intervention. But why “the same must be true vice versa for infringement proceedings”, as is argued by the patentee, is not apparent. While opposition proceedings before the EPO cannot be “reopened” due to the advent of an intervener, the Board sees no good reasons to require infringement proceedings still to be pending at the time of intervention. It is sufficient that the patentee has made its move in claiming that there is infringement and that such infringement will be sanctioned. If the Board were to agree with the patentee’s line of argument, it would mean that the possibility of intervention was not only limited by the three-months period as stipulated by the provision itself, but by an additional condition, namely the pendency of such proceedings. The Board sees no cogent reasons why this should be so, quite apart from the fact that the wording of A 105(1) or R 89(1) also does not suggest this in any way. [2.8] Finally, the patentee argues that in order to intervene, the infringement proceedings must have been officially communicated to the intervener, which was not the case here. In fact, the patentee’s arguments seem to be two-fold: First, as long as there was no communication of the proceedings to the accused, proceedings have not been “instituted”, and second, absence of such communication does not entitle a party to intervene in the first place. [2.9] In support of its first argument, the patentee mentions two points. First, that the terminology used for an Austrian “Privatanklage” does not correspond to the term “erhoben” in the German language version of the EPC. Given the fact that A 105 must be applied to the national legal systems of all Member States (with a corresponding multitude of languages and legal terminology), and must read on civil, criminal and administrative proceedings, and on interim and ordinary proceedings alike, the Board does not find this argument convincing. Second, that proceedings have only been “instituted” once they have been communicated to the intervening party. Here again, one must refrain from determining rules that may be suitable for some countries or for some kinds of proceedings, but not for others. Rather, the Board should be satisfied that the person bringing these proceedings has done everything for the proceedings to take their course. For example, while in some countries it may be necessary in civil proceedings that the plaintiff serves the writ to the defendant, in other countries, the court will do so. In criminal and administrative proceedings, the authorities may act ex officio upon a complaint. Equalling the instituting of proceedings with a service of the writ to the defendant (or accused) is therefore not a necessary given. Neither is it a necessary consequence of the intervener’s obligation to provide proof of the infringement proceedings, see below [2.10]. [2.10] In support of its second argument, the patentee relies upon decision T 452/05 (“Senseo”, by the present Board in a different composition). The relevant passage of this decision reads as follows: “[1.2] A 105 requires an intervention to be made within “three months of the date on which the infringement proceedings were instituted”. In this case, three dates could possibly have triggered the three months period: 29 November 2004, when the request for an interim injunction was made, 29 December 2004, when the request was granted, or 17 January 2005, when the injunctive order was served upon the opponent 6. In the board’s view, only the date when the order was served upon the opponent 6, i.e. 17 January 2005, should be the decisive point in time, as only from that date onwards could the opponent provide evidence of the proceedings that entitled it to intervene.” Thus, the Board in “Senseo” was concerned with how the three-months period should be calculated, not the question of whether an intervention was possible despite the lack of an official communication to the intervener. To the extent that A 105 requires proof of infringement proceedings having been instituted, such proof must be available to the intervener. In the absence of an official notification, the EPO cannot assume that the intervener has obtained knowledge of the proceedings, let alone require proof of such proceedings. But should the intervener have obtained knowledge of such proceedings despite a lack of communication, the Board sees no reason why the intervener should then not be entitled to intervene. Clearly, a party entering proceedings later is undesirable from a procedural point of view.
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T 1713/11 – Back To Basics
K’s Law – The ebook
Thus there is an overriding general interest that once an intervention becomes possible, it should then also be filed as soon as possible, in order to prevent any further delays of the opposition proceedings. This is exactly the purpose of the time limit of R 89(1) (see also T 296/93 [2.3], also referring to the “travaux preparatoires”). It is another matter that the time limit can only start to run once the alleged infringer has actually become aware of the institution of the infringement proceedings. An interpretation, according to which the intervener must under all circumstances wait for the time limit of R 89(1) to start, would squarely contradict the very purpose of this rule. That the actual starting of a time limit for performing a procedural act is in itself no procedural prerequisite of the given procedural act is not unknown to the EPC. Decision T 389/86 allowed the filing of an appeal even before the appellant had officially received the decision of the OD. Official notification that infringement proceedings have been instituted is thus no requirement for an admissible intervention. [2.10.1] In the case at issue, the criminal complaint was dated 7 July 2009. The intervention was notified to the EPO on 7 October 2009, and the opposition fee paid on the same day. Regardless of when the three-months period for the intervention should start - possibly influenced by the fact that the criminal complaint was not notified to the intervener - R 89(1) has been complied with, because the intervention was filed within, i.e. before the expiry of three months of the date on which the infringement proceedings were instituted. The fact that this three-months time limit may not yet have started to run at the time when the intervention was filed, because the intervener had not been officially notified, is immaterial to this finding. [2.11] Allegations that the criminal proceedings were instituted by the patentee’s licensee entitled to enforce the patent in Austria as an abuse of process and due to some sort of collusion between the licensee and the intervener were no longer upheld during oral proceedings. Already in the annex to the summons, the Board had given its preliminary view that it thought these allegations were insufficiently proven. [2.12] The Board therefore comes to the conclusion that the intervention by JDC is admissible and that the decision of the OD was correct in this respect. The appeal was finally dismissed. NB: The Board also provided take-away headnotes: 1. Intervention is conceived as a procedurally exceptional situation which is justified only by a substantial legitimate interest of the presumed infringer to enter the opposition proceedings. On deciding admissibility of an intervention it is preferable to concentrate on whether the action of the proprietor reaches the level sufficient to establish a substantive legitimate interest to intervene (reasons [2.2] and [2.6]).
2. As long as a patent proprietor or any other party entitled to do so initiates proceedings meant to establish whether a third party is commercially active in an area that falls within the patent proprietors right to exclude, such proceedings are "proceedings for infringement" in the sense of A 105. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2559/11 – Double Standard
K’s Law – The ebook
T 2559/11 – Double Standard 1 Mai 2013
As most people do not like to work on May Day, our post of the day shall be brief. [7.5] The board has, in principle, some sympathy for the appellant’s argument that a remittal should not be ordered if a final decision was unlikely to be reached until after expiry of the patent (cf. e.g. T 249/93 [2.2]). However, this argument weighs less in the present case of a divisional application which was filed 5 years after the priority date. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2060/09 – Single Entity
K’s Law – The ebook
T 2060/09 – Single Entity 30 Apr 2013
In this decision the Board had to delve into interpretative questions. Claim 1 of the main request on file read: A hermetically sealed, molded thermoplastic dispensing container which comprises: a nozzle (16, 116, 216) unitary with the container (10, 110, 210) and defining a dispensing aperture (18); a removable closure unitary with the nozzle (16, 116, 216) and occluding the aperture (18); said nozzle (16, 116, 216) being adapted to receive the hub (36) of a dispensing assembly (34) in a mating relationship; the hub including an inner surface (38) defining a cavity (40); characterized by a resilient and compressible annular bead (26, 126, 226) extending outwardly about the periphery of the nozzle (16, 116, 216), unitary therewith and spaced from the aperture (18) and being sized such that the diameter thereof in the region of engagement is greater than the diameter of the cavity (40) defined in said hub (36) whereby said bead (26, 126, 226) is compressed when the hub (36) is received over said bead (26, 126, 226) and said bead (26, 126, 226) exerts a sealing force against the inner surface (38) of the hub (36) in the region of engagement between the hub (36) and the bead (26, 126, 226) to provide a liquid seal between the hub (36) and the nozzle (26, 126, 226) in the region of engagement. The question arose whether the features of the hub were to be taken into account for the novelty assessment. Subject-matter of claim 1 [2.1] According to [the opponent] claim 1 defines a dispensing container comprising a nozzle. The features relating to a hub are not to be considered as forming part of the subject-matter of this claim and thus have to be disregarded. [2.2] [The patent proprietor] agreed to the Board’s opinion of the annex that claim 1 is related to a container and is supposed to describe features of this container. Concerning the features of claim 1 relating to the hub which was referred to in this claim as a second entity it expressed the view, referring to decisions T 455/92 and T 194/99, that these features should also be taken into account since they contribute to the definition of the container itself. [2.3] The Board does not find the arguments of [the patent proprietor] convincing and consequently does not see any reason to deviate from its opinion […]. Claim 1 is thus directed to a single entity, namely a dispensing container. The features in this claim relating to the second entity […], namely the dispensing assembly comprising a hub, do not form part of the subject-matter defined by claim 1. This assessment of the subject-matter of claim 1 is not in conflict with the decisions T 455/92 and T 194/99 cited by [the patent proprietor]. According to T 455/92 [2.2-3] the length and overall breadth of a covering for a pressed product has been considered sufficiently defined by its intended use and the size such pressed products normally have. According to T 194/99 it is, in principle, “possible in a claim for a first entity to define certain characteristics of that entity as a function of characteristics of a second entity employed when using the first entity …”. It is further indicated that “A prerequisite is, however, that the second entity and its relevant characteristics as such, not their exact values, are unambiguously identified in the claim” (reasons, point [3]).
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T 2060/09 – Single Entity
K’s Law – The ebook
In the present case neither the hub as second entity nor its cooperation with the container (first entity) are unambiguously defined since the feature of claim 1 relating to the relationship of the nozzle with the hub defines only that the nozzle is adapted to receive the hub in a mating relationship. This feature thus does not give a basis for certain characteristics of the container or its nozzle being defined as a function of the hub as second entity. The feature defining that the hub has a cavity does not help either since it likewise does not lead to the mating relationship between the nozzle and the hub being further defined. [2.4] Since the features relating to the hub do not form part of the subject-matter of claim 1 either directly or indirectly, since they do not contribute to the definition of the container, the subject-matter of this claim concerns, as indicated in the annex (i) a hermetically sealed, molded thermoplastic dispensing container which comprises (ii) a nozzle unitary with the container and defining a dispensing aperture (iii) a removable closure unitary with the nozzle occluding the aperture (iv) a resilient and compressible annular bead which is provided extending outwardly about the periphery of the nozzle unitary therewith and spaced from the aperture. The properties of the bead defined by feature (iv) appear to be the result of the material for / and the manufacturing process of the container as defined by feature (i). Disclosure of document D4 [3.1] D4 discloses, as indicated in the annex […], with respect to the molded thermoplastic dispensing container of claim 1, a hermetically sealed, molded thermoplastic dispensing container 4 […] which comprises a nozzle 12 unitary with the container and defining a dispensing aperture […], a removable closure 6 unitary with the nozzle occluding the aperture […] and an annular bead 10 which is provided extending outwardly about the periphery of the nozzle unitary therewith and spaced from the aperture […]. [3.2] [The patent proprietor] objects to the annular bead 10 being considered as resilient and compressible (feature (iv)). The argument based on “the conditions prevailing when the container is used together with a dispensing assembly” […] cannot be considered since, as indicated above, a dispensing assembly does not form part of the subject-matter of claim 1 and claim 1 furthermore is not directed to a use of such a combination. The Board considers the argument that resiliency and compressibility concern two different requirements […] as holding true per se. Since, however, only these properties of the bead are referred to in claim 1 (feature (iv)) without further definition as to the resiliency on the one hand and the compressibility on the other, while also the shape and dimensions of the bead remain undefined, and its material is only referred to as thermoplastic, the material properties referred to by feature (iv) cannot be given any particular meaning. Since the bead according to D4 is of – qualitatively similar shape and size and of the same material […] allowing its elastic radial deformation […] its material properties cannot be seen as different from the ones according to feature (iv). Novelty [4.1] Based on the above understanding of the subject-matter of claim 1 and of the disclosure of D4, the finding of lack of novelty in the impugned decision […] with respect to D4, is […] correct. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1954/08 – Mere Maths
K’s Law – The ebook
T 1954/08 – Mere Maths 29 Apr 2013
This is an examination appeal. Claim 1 of the third auxiliary request on file read: 1. A computer-implemented method of predicting outcomes of marketing campaigns, the method comprising: determining a response probability for each of a plurality of customers, the customers being intended targets of a marketing campaign; determining a response value for each of the customers that indicates a predicted value of a response to the marketing campaign by the customer; and predicting an outcome of the marketing campaign using the response probability and the response value, wherein the marketing campaign comprises at least first and second campaign steps, and wherein predicting the outcome of the marketing campaign further comprises: using the response probabilities for the plurality of customers to predict a number of responses to be received if the first campaign step were performed toward the plurality of customers; selecting a target group (168) of customers from the plurality of customers using the response probabilities, where a customer is included in the target group if a randomly generated number is less than the customer’s response probability, the target group (168) being substantially equal to the predicted number of responses; and predicting an outcome of performing the second campaign step toward the target group (168); and wherein at least one campaign step (206) in the marketing campaign comprises a plurality of alternative campaign elements (207, 208, 209), further comprising assigning the customers to the campaign elements (207, 25 208, 209) using an optimizing algorithm, and wherein the optimizing algorithm assigns and reassigns the customers to the campaign elements (207, 208, 209) while evaluating the predicted outcome of the marketing campaign, but does not reassign a customer to a campaign element to which the customer has previously been assigned, and where each assignment of a customer to a campaign element is recorded in a binary map, such that the optimizing algorithm provides a best goal value for the marketing campaign, where the customer reassignments are recorded in a list after finding the most recent best goal value, where the optimizing algorithm is terminated after a user-defined number of customer reassignments does not improve the most recent best goal value, and where upon said termination, the assignment of customers to campaign elements corresponding to the best goal value is determined by reversing all the assignments made since finding the most recent best goal value.
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T 1954/08 – Mere Maths
K’s Law – The ebook
[5] In the light of A 52(1)(2)(3), an inventive step according to A 56 EPC 1973 requires a non-obvious technical contribution (T 641/00 [headnote 1]; T 1784/06). The use of computers for automation purposes is technical but commonplace. A mathematical algorithm may become a technical means, i.e. it may go beyond a mere mathematical contribution, if it serves a technical purpose (T 1227/05 [3.1-2]). [6] However, anticipating a maximum revenue or profit value […] of a marketing campaign is a commercial rather than a technical purpose. Therefore, the iterative mathematical algorithm of claim 1 remains a mere mathematical contribution which does not enter into the examination for an inventive step. [6.1] The appellant argues that the choice of algorithm is based on technical considerations as it takes account of technical (e.g. memory) limitations of computers and diverges from a human approach. [6.2] In decision T 1227/05 [3.2.5] it was held that (the sole) processing speed was not a suitable criterion for distinguishing between technical and non-technical method steps since it was always possible to conceive of a slower algorithm than the one claimed. Similarly, the sole amount of memory a computer-implemented algorithm requires is equally unsuitable for determining whether or not a method step contributes to the solution of a technical problem since it is always possible to imagine an algorithm demanding more memory. Furthermore, whether or not an algorithm is similar to what a human being would do may play a role for the examination for inventive step, but this examination presupposes that the technicality of the feature has been established. [6.3] The appellant further argues that the choice of algorithm is not part of the requirements supplied to the skilled person by the business manager, and concludes that the choice of algorithm is tied to a particular manner of (computer-)implementation. The Board agrees that the mathematical algorithm is not provided by the business manager who is only interested in an economic forecast on which he can base his decision for a marketing campaign. However, the Board does not agree with the appellant’s conclusion that the algorithm is provided by the implementing programmer. In the absence of a technical overall effect and purpose, the algorithm is provided by a mathematician for mathematical and ultimately commercial purposes. Mathematical definitions do not become technical by defining commercial relationships. For example, response probabilities and response values of customers are based on past customer behaviour […]. [6.4] As to the implementation of the algorithm, no internal function of the computer requires a non-obvious consideration to track and reverse incremental changes in the form of reassignments. [6.4.1] The random number mentioned in claim 1 solves no problem other than splitting a large list of customers into two partial lists, without achieving any external technical effect or implying any technical consideration of the internal functioning of a computer. On the implementation level, random number generators are well-known. The application implicitly confirms that finding as it is silent on any technical detail of generating random numbers. [6.4.2] A binary map of flags settable for each possible customer-activity assignment […] does not diverge fundamentally from a human’s approach when testing a multiplicity of assignments: a human would obviously mark (i.e. flag) tested assignments so as to test other assignments next. Nor does the mathematical or commercial meaning of the flagged information imply any non-obvious technical modification of general computer functions. [7] The step that “the optimising algorithm is terminated after a user-defined number of customer reassignments does not improve the most recent best goal value” is considered next. As mentioned above, the innovative potential of the algorithmic scheme can be left aside since it does not serve any technical purpose and, thus, does not contribute to the technical character of the claimed method and cannot enter into the examination for an inventive step.
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T 1954/08 – Mere Maths
K’s Law – The ebook
Said lack of a technical purpose is not altered by defining a mathematical criterion for terminating the algorithm. [8] The Board concludes that the method according to claim 1 of the third auxiliary request does not involve an inventive step over a general computerised method for processing data according to any existing mathematical algorithm and, thus, does not meet the requirements of A 56 EPC 1973. [9] A fortiori, the broader versions of claim 1 (main request, first and second auxiliary requests) also lack an inventive step. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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K’s Law – The ebook
The Memorandum
The Memorandum 27 Apr 2013
In a recent post (here) I presented T 1222/11. This decision mentions a Memorandum, which appears not to be available online. A kind colleague has now provided me with a copy of this Memorandum. You can download it here.
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T 1507/06 – Adding Zero?
K’s Law – The ebook
T 1507/06 – Adding Zero? 26 Apr 2013
This is an appeal against the rejection of an opposition. Claim 1 of the patent as granted read: A method of producing mineral wool, wherein fibres are produced starting from a viscous mineral melt which contains silicon and metal oxides, the fibres then being further processed to form a non-woven wool material, characterised in that added to the mineral melt is a spent aluminium silicate catalyst material which contains at least 40% by weight of aluminium oxide and at least 40% by weight of silicon oxide, as well as magnesium oxide with a proportion of up to 5% by weight and sodium and/or potassium oxide with a proportion of up to 5% by weight. (my emphasis) The opponent argued that the components magnesium oxide and sodium and/or potassium oxide were optional because there was no lower limit for these components. They were unessential and could not establish novelty over the prior art. Thus claim 1 lacked novelty over example 2 of document D1. In what follows the Board explains the correct interpretation of claim 1. *** Translation of the German original *** [1.3.1] Claim 1 of the impugned patent concerns a method of producing mineral wool, characterised in that added to the mineral melt is a spent aluminium silicate catalyst material which contains at least 40% by weight of aluminium oxide and at least 40% by weight of silicon oxide, as well as magnesium oxide with a proportion of up to 5% by weight and sodium and/or potassium oxide with a proportion of up to 5% by weight. The Board of appeal is of the opinion that a skilled person would interpret claim 1 such that magnesium oxide and sodium and/or potassium oxide may be added to the melt either as part of the catalyst material or independently of the catalyst material. This broad interpretation follows from the fact that the conjunction “as well as” (“sowie”) is preceded by a comma, as a consequence of which the skilled person understands that a spent aluminium silicate catalyst material and magnesium oxide with a proportion of up to 5% by weight and sodium and/or potassium oxide with a proportion of up to 5% by weight are added to the melt. Although claim 1 does not have a lower limit for the amount of magnesium oxide and sodium and/or potassium oxide, the wording of claim 1 makes it clear for the skilled person that both magnesium oxide and sodium and/or potassium oxide have to be present. As a matter of fact, claim 1 indicates that an aluminium silicate catalyst material as well as magnesium oxide and sodium and/or potassium oxide are added. This means that the addition of magnesium oxide and sodium and/or potassium oxide constitutes a process step and that it would not make technical sense if nothing was added in this process step. Thus claim 1 establishes that magnesium oxide and sodium and/or potassium oxide have to be added. It also indicates the maximum amount, the % by weight of which have to refer to the mineral melt because the oxides are not necessarily part of the catalyst material. The fact that magnesium oxide and sodium and/or potassium oxide have to be added to the melt is also in line with the description, paragraphs [0013] and [0014] of which indicate that the catalyst material that is added according to the invention contains up to 5% by weight of magnesium oxide 5% by weight of sodium and/or potassium oxide. Magnesium oxide is added in order to reduce the crystallisation tendency whereas sodium and/or potassium oxide should be added in order to decrease the melting point. The way in which the claim is drafted does not exclude that in case of need alkali earth oxides be added, if the melt viscosity is to be reduced, as mentioned in paragraph [0010] of the patent specification. Moreover, wording claims such that they indicate maximum amounts is standard practice in claim drafting (also see T 988/07 [2.1.2]). Thus the Board comes to the conclusion that claim 1 is to be interpreted such that both magnesium oxide and sodium and/or potassium oxide have to be added to the mineral melt in some way.
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T 1507/06 – Adding Zero?
K’s Law – The ebook
The appeal was finally dismissed. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1949/09 – Unwelcome Guests
K’s Law – The ebook
T 1949/09 – Unwelcome Guests 25 Apr 2013
This appeal against the revocation of the opposed patent reminds us of how the Boards deal with late filed documents. Preliminary procedural remarks in respect of the late filed material [2] Pursuant to A 114(2) the EPO may disregard facts and evidence not submitted in due time by the parties. As far as the appeal procedure is concerned, the Rules of Procedure of the Boards of Appeal (RPBA) give the general directions as to the way in which the Boards of Appeal have to exercise their power to admit or disregard the material filed at different stages of the appeal proceedings. [2.1] Article 12 delineates the basis of the appeal proceedings, providing that the appeal file should contain one comprehensive submission from each party. The purpose of this provision is that the exchange of the grounds and the reply should effect a defined and controlled initial phase of proceedings providing a moment in time fixed by the rules when a party’s case is deemed to be complete, any further material submitted being, in the terms of Article 13 RPBA, an amendment to the party’s case. [2.2] It is commonplace that amendments to a party’s case filed in response to new objections raised by the other party or by the Board, are deemed to be filed in due time within the meaning of A 114(2) itself. [2.3] As to the other amendments (which cannot be deemed to be filed in due time), it is in the Board’s discretion to evaluate their admissibility in the light of several criteria, the most common being listed in Article 13(1) RPBA: the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. [2.4] Finally, after oral proceedings (OPs) have been arranged, an additional criterion has to be taken into account: the other party and the Board should be capable of dealing with the new issue without any adjournment of the OPs (Article 13(3) RPBA). [2.5] These principles apply in the following paragraphs. Admissibility of the declaration of the inventor [3] The declaration filed with letter of 12 September 2012 includes some tests performed to assay the mechanical strength of some catalysts (section 3 of the declaration) and a review of the content of document D6 (section 4 of the declaration). [3.1] In the light of the preliminary remarks, the Board notices that the tests included in the declaration cannot be deemed to be filed in due time, because they cannot be seen as a reaction to a new situation which was not already present at the time in which the grounds of appeal were filed, as the lack of experimental tests which would confirm an advantage of the specific catalyst was already a crucial point of the decision […], or at the latest after the [opponent] filed the letter of reply to the statement of grounds, in which a clear position was taken on the tests filed with that statement. [3.2] The only justification put forward for the late filing, namely the time needed to have the tests authorised and performed, cannot justify their filing almost three years after the grounds of appeal, more than two years after the reply of the [opponent] and only 15 days before the convened OPs, all the more as the [patent proprietor] never informed the Board of any difficulty in providing further evidence, nor requested additional time to prepare such evidence. [3.3] Apart from the unjustified late filing, the tests raise a number of questions about their significance, which could not be answered without an adjournment of the proceedings, including in particular the question whether the values of the mechanical strength depend only on the differences between the production method in D1 and in the opposed patent (in particular co-precipitation of chromium and aluminium hydroxides and formation of a catalyst in amorphous form) or on other parameters of the compared catalysts which do not appear in the claims 510 | 3398
T 1949/09 – Unwelcome Guests
K’s Law – The ebook
(e.g. their particle size distribution) or on other features of the method of production which are present in other examples of D1, but do not form part of the tests (e.g. the presence of a calcination step as in examples 8 to 10 of D1). [3.4] Finally, Article 15(3) RPBA, which provides that the Board is not obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party, does not go so far as to nullify A 113(1). On that basis, the [opponent], which chose not to attend the OPs, can rely on the procedural provisions mentioned above, namely that the decision would be made on the basis of the written case in the meaning of Article 12 RPBA and that no significant amendment of the case would be admitted which would go beyond what is foreseen by Article 13 RPBA (see also T 1621/09 [41-44]). [3.5] For these reasons, the Board on application of the RPBA does not admit the tests included in the declaration filed with letter of 12 September 2012 into the proceedings […]. [3.6] On the contrary, the review of the content of document D6, which is based on the documents itself and on arguments which were already in the proceedings, does not pose any problem with regard to admissibility and is therefore admitted into the proceedings. Admissibility of D7 to D11 [4] The contention that documents D7 to D11 were ipso facto part of the appeal proceedings only because they were mentioned in the description cannot be followed by the Board for the following reasons. [4.1] First of all, such a contention is inconsistent with Article 12 RPBA: to be part of the proceedings and play an active role for a new argumentation the documents should have been singled out in the written submissions as being of possible relevance at some point in time. Having been introduced at the OPs before the Board without any previous indication, they are late filed and subject to a discretionary decision on their admissibility. [4.2] This approach is consistent with the case law (Case Law of, 6 th edition 2010, VII.C.1.7), according to which a document considered during the examination procedure is not automatically scrutinised in opposition or opposition appeal proceedings, even it is quoted and acknowledged in the contested patent. Only the document cited and acknowledged in the description of the contested patent as the closest prior art and on the basis of which the technical problem in the description was formulated remains an exception and forms directly part of the opposition or opposition appeal proceedings. [4.3] Documents D7 to D11, although cited in the specification of the patent in suit, had been merely acknowledged as conventional background art therein […] and were not considered in the patent as essential or as the closest prior art and the starting point of the claimed invention. [4.4] The [patent proprietor] did not provide any justification of their late filing and did not present any of those documents as more relevant than the documents on file, as, in its arguments, D1 remained the closest prior art and none of D7 to D11 was relevant for the analysis of the obviousness of the solution (they were only used as supporting evidence for the acknowledgement of an effect). [4.5] Moreover, the [opponent] absent at the OPs […] and relying on the rules of procedure, could not have expected a new line of argumentation based on these documents and never announced in the written phase of the proceedings, which could have changed the analysis of the case and its counterarguments. [4.6] Therefore, pursuant to Article 13(1) and (3) RPBA the Board considers it appropriate not to admit documents D7 to D11 into the proceedings. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1131/12 – Late & Too Late
K’s Law – The ebook
T 1131/12 – Late & Too Late 24 Apr 2013
This appeal was against the decision of the Examining Division (ED) to refuse the European application under consideration. In a first communication dated August 27, 2002, the ED inter alia raised an objection of lack of inventive step over documents D1 and D2. In a second communication dated June 28, 2004, an objection was raised that “essential features” were missing from claim 1 and that the feature of the amplifying circuit lacked clarity (A 84). In a third communication dated June 29, 2006, the previous objection of missing “essential features” was withdrawn and a further objection of lack of clarity as regards the expressions “binary signal” and “binary digital signal” was raised. The applicant amended the claims in response to each of the three communications. Two requests for accelerated examination were filed, on February 23, 2009, and June 7, 2011. On October 24, 2011 (!) the ED refused the application on the grounds that claim 1 lacked clarity (A 84) due to the expression “binary digital” and that the subject-matter of claim 1 lacked an inventive step (A 56). The applicant filed an appeal against this decision. In the notice of appeal the appellant requested that the decision be cancelled. In the statement of grounds the appellant requested that a patent be granted on the basis of a set of claims accompanying the statement of grounds. The board issued a summons to oral proceedings (OPs). In a letter filed on January 31, 2013 the appellant contended that the ED had committed a “breach of the principle of legitimate expectations” and expressed doubts as to whether its right to be heard had been correctly exercised by the ED. The appellant argued that although an objection of lack of inventive step had been raised by the ED in its first communication of 27 August 2002, the two subsequent communications were silent on inventive step. The fact that the main reason in the decision to reject the application was lack of inventive step was surprising for the appellant. [1.1] In the letter of 31 January 2013 the appellant requested a remittal to the department of first instance on two grounds: firstly that there was a “breach of the principle of legitimate expectations” in that the ED failed to point out in its second and third communications that the inventive step objection raised in the first communication was still considered relevant; and secondly that the right to be heard was not “correctly exercised”. No reasoning accompanied the second ground. [1.2] It is sufficient here, with respect to the conduct of the first instance proceedings, to note that from the file history as well as from the grounds advanced by the appellant no fundamental deficiency, in the sense of an objective deficiency only ascribable to the ED and having a direct causal link with the outcome of the decision under appeal, could be detected which would justify an immediate remittal to the first instance as provided by Article 11 RPBA. The board wishes to emphasise that, although a delay of five years between a last communication and the written decision is wholly unacceptable, all the more so as a clear request for accelerated proceedings was made and ignored, action only being taken after the request was repeated, there is no causal link between this excessive delay and the outcome of the ED’s decision. [1.3] As to the grounds as raised by the appellant […], the appellant raised the issue of “legitimate expectations” only a week before the OPs and the issue of a violation of the right to be heard only during the OPs themselves; the board considers that a finding of a substantial procedural violation is not appropriate for the following reasons. 512 | 3398
T 1131/12 – Late & Too Late
K’s Law – The ebook
[1.4] The board sees no reason to disregard Article 12(2) RPBA according to which the statement of grounds of appeal shall contain the party’s complete case. From this it follows that a party appealing a decision for the reason that it did not have an opportunity to comment on grounds on which the impugned decision is based is obliged to argue this ground of appeal in the statement of grounds. This applies all the more in ex parte proceedings since a further effect of such a complaint being raised late, i.e. later than filing the statement of grounds, is that the ED was prevented from considering the complaint within the scope of A 109, when deciding whether it would rectify its decision. The appellant’s argument that the ED in the present case would in any case have refused an interlocutory revision is merely speculative and therefore not convincing. [1.5] Since the board cannot detect any fundamental deficiency as noted at point [1.2] supra, the request for reimbursement of the appeal fee filed and substantiated shortly before the OPs […] is refused pursuant to Article 12(1)(a) and (2) RPBA. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2526/11 – Seriously?
K’s Law – The ebook
T 2526/11 – Seriously? 23 Apr 2013
In this case the Board had to deal with a request for remittal to the first instance: [2.1] According to Article 11 RPBA the board remits the case to the department of the first instance if fundamental deficiencies are apparent in first-instance proceedings. During the oral proceedings (OPs) before the board on 9 January 2013, and hence at a very late stage of the appeal proceedings, the representative of the appellant contended for the first time that its right to be heard had been violated by refusing its request to postpone the OPs of 26 September 2011 (Monday) before the Opposition Division (OD). The reason given for the postponement was a lecture to be given at a conference on 23/24 September 2011 in Carolina (US). As announced by fax dated 26 August 2011, the representative did not attend the OPs before the OD. [2.2] When exercising its discretion in deciding whether or not to postpone OPs, the OD has to take into account the particular circumstances of the case. Given this discretion of the OD the principal task of the board of appeal is to consider whether the OD exercised its discretion in a reasonable way. [2.3] In order to safeguard a party’s right to be heard pursuant to A 113(1) not only must the party be granted the procedural possibility of presenting comments but also the EPO has to take into due account the arguments and submissions of the party. These requirements were met by the procedure applied by the OD when dealing with the said request for postponement. [2.4] With communication dated 27 May 2011 the OD replied to the request for postponement filed with the applicant’s fax of 4 May 2011, explaining that the request could not be granted because the fact that the representative was to speak at a conference did not fall under the exceptional reasons for which the change of date of OPs was allowed according to the case law of the boards of appeal. The OD quoted the pertinent pages of the 5th edition of the Case Law of the Boards of Appeal. It repeated its refusal of the request for postponement with communication of 8 September 2011, now referring to the current (6th) edition of the case law book, the appellant having complained that it had cited an old edition. [2.5] In the decision under appeal the OD reiterated the objection made in its previous communications and summarised the issue of postponement, explaining why the reasoning of the appellant could not be followed. It held that the fact that the representative had to travel over the weekend in order to attend OPs scheduled for a Monday was not a sufficient reason to change the date of the OPs. Furthermore, it explained why decisions T 1102/03 and T 1505/06, cited by appellant, did not support the appellant’s request for postponement. In this context the OD pointed out that the journey to the US had not been firmly booked, as confirmed by the representative in the OPs before the present board on 9 January 2013, and that the conference took place three days before the OPs scheduled before the OD. [2.6] Hence, the OD did indeed take into account the arguments of the appellant when it exercised its discretion and decided on the request for postponement. It follows from the foregoing that it did not refuse the request for postponement merely by citing as outdated edition of the Case Law book, as the appellant has alleged. [2.7] Admittedly, the reasoning given by the OD for refusing the request is relatively brief and could indeed in some respects have been more detailed and comprehensive. However, the absence of possibly more detailed reasoning is certainly not a fundamental (emphasis by the board) deficiency requiring a remittal pursuant to Article 11 RPBA. Lastly, the reasons provided by the OD in its communications of 27 May 2011 and 8 September 2011 and in the decision under appeal are sufficiently clear and comprehensible to show that the arguments put forward by the appellant in support of its request had been taken into due account by the OD when exercising its discretion. [2.8] The board points out that the reason given for postponement, namely a speech to be held by the representative at a conference, is actually clearly and unambiguously not a serious substantive reason for a postponement, as is clear from the case law of the boards of appeal. That case law is also reflected in the Guidelines for Examination (Part E-III 7, 2010 (sic)) and in the Notice from the EPO dated 18 December 2008 concerning OPs before the EPO (OJ EPO 2009, 68). The Guidelines are issued by the President of the EPO in accordance with Article 10(2)(a) EPC. Although the Guidelines are not legally binding, the examining staff may 514 | 3398
T 2526/11 – Seriously?
K’s Law – The ebook
depart from them only in exceptional cases and, as a general rule, parties can expect the EPO to act in accordance with the Guidelines. [2.9] It is correct that the list of serious reasons justifying a change of the date of OPs in the Guidelines is not exhaustive. However, these reasons clearly all involve special circumstances (e.g. pre-existing OPs, serious illness, or death within the family) or unavoidable commitments such as military service or other obligatory performance of civic duty. Business trips and holidays must have already been firmly booked in order to qualify as serious reasons for a postponement of OPs. It has been explicitly confirmed by the appellant’s representative that his trip to the US had not been firmly booked prior to the notification of the summons to OPs on 26 September 2011. Furthermore it is obvious that a speech at a conference is not one of the serious reasons listed in the notice of the EPO referred to in the Guidelines. Rather, in T 699/06 [6] the board stated that such a commitment – to speak at a conference – was additional to the normal professional responsibilities of a representative. A representative who undertook such a commitment did so in the knowledge that this would make him unavailable to his clients, and unavailable to appear at any OPs, on the dates in question. Therefore, as a reason for changing the date of OPs, it was a reason which by definition resulted from excessive work pressure – excessive if only because it was a commitment which the representative was not obliged to undertake but which, having undertaken it, made him unavailable. Excessive work pressure was specifically mentioned in the notice from the EPO of 18 December 2008 as a non-acceptable reason (see paragraph 2.4 of the notice). With this legal situation in mind it is in principle irrelevant whether the representative had sufficient time to prepare and attend the OPs once the conference in the US was over. [2.10] The decisions of the boards of appeal cited by the appellant during the opposition proceedings related to circumstances explicitly acknowledged as serious reasons for postponement of OPs, namely serious illness (T 1505/06) and pre-booked holidays (T 1102/03). These decisions therefore cannot support the present request for postponement. [2.11] The appellant has failed to show – either in its written submissions or orally at the OPs before the board on 9 January 2013 – why its request for postponement might nevertheless qualify as a serious reason exceptionally allowing the requested change of date. It follows from the foregoing that its contention in the statement of grounds of appeal of 24 February 2012 that the decision regarding postponement had no basis in the EPC has to be considered as a mere allegation which lacks the necessary substantiation. [2.12] In the statement of grounds of appeal the appellant further contends that the reasoning given in the decision under appeal, namely that having to travel at weekends could not be regarded as sufficient reason not to attend OPs, was not the reasoning of the appellant, since representatives could of course be expected to travel at weekends in order to attend OPs. Rather, the correct reasoning was that it was physically impossible to get from the conference in the US in time for the OPs in Munich given the time difference. Apart from that what has already been said above (point [2.9]), this submission, however, was put forwarded (sic) for the first time in the statement of grounds of appeal, whereas the letters of the appellant filed during the opposition proceedings are silent about it. So too are the minutes of the OPs before OD, due to the fact that the appellant did not attend them. Hence, this submission could not have been taken into account by the OD when taking its discretionary decision on the request for postponement and thus cannot be a basis for a contending that the division infringed the appellant’s right to be heard. [2.13] In consequence, the decision of the OD not to postpone the OPs scheduled for 26 September 2011 is fully justified and based on a reasonable exercise of its discretion. In this context it has also be taken into account that the request of the appellant’s representative for postponement filed on 4 May 2011 was already its third request to change the date fixed for OPs, following two previous requests which had already been granted, the second of which was due to a lecture to be held by the appellant’s representative at a conference. [2.14] The request for postponement having been properly refused and the appellant duly summoned by communication dated 18 April 2011 for OPs on 26 September 2011, the appellant had ample time to prepare for these OPs. As long as a request for postponement of OPs has not been granted, the requesting party cannot simply assume that it will be. The party has to consider the possibility of a refusal of the request and has to prepare the case accordingly to minimise the risk of time pressure (T 1102/03[3.2]). The right to be heard had thus been granted by the OD. By choosing not to attend OPs, as announced with letter dated 26 August 2011, the appellant deliberately did not avail himself of his right to be heard and must therefore bear any adverse consequences. Hence, the request to remit the case to the first instance is to be refused. Should you wish to download the whole decision, just click here. 515 | 3398
T 2526/11 – Seriously?
K’s Law – The ebook
The file wrapper can be found here. NB: This case has been commented on Le blog du droit européen des brevets (here).
516 | 3398
R 12/12 – When In Doubt, Ask The Board
K’s Law – The ebook
R 12/12 – When In Doubt, Ask The Board 22 Apr 2013
This petition was filed by the patent proprietor. Board 3.2.07 had revoked the opposed patent after the Opposition Division had rejected the opposition (decision T 321/10). The Enlarged Board (EBA) found the petition not to be clearly inadmissible and then discussed whether it was clearly unallowable: *** Translation of the German original *** [2] The EBA agrees with the petitioner that the common technical knowledge in a given field has to be determined on a case-by-case basis in view of the corresponding facts and evidence, that such facts and evidence are, as a rule, found in encyclopaedias, manuals, and dictionaries, and that – as is the case for all facts or evidence – the party that does not invoke them has to be offered the opportunity to comment on them. This also holds true when – as happens from time to time – the new facts are not introduced into the proceedings by one of the parties but by the Board of appeal (BoA). In such a case each party must be offered the opportunity to present comments. Irrespective on how the facts were introduced, A 113(1) requires [the EPO] to offer the opportunity to present comments on facts forming the evidence or arguments on which a decision is based. If this opportunity is not offered, then the decision may not be based on those facts, and if this has happened, it can be set aside under A 112a(2)(c). [3] In the present case it has to be established whether the petitioner has had the opportunity to comment on the facts on which the BoA has based its decision according to which auxiliary request II of the petitioner lacked inventive step […]. The only statements in this part of the decision which are criticized by the petitioner refer to what the petitioner calls “common technical knowledge” (“allgemeines Fachwissen”). (The decision only refers to “what a skilled person would do” (“fachmännisches Handeln”), but the EBA will consider, for the purposes of the review proceedings, that these two expressions are interchangeable […]. In contrast to citations from the decision that is to be reviewed the EBA will refer to “common technical knowledge”, as does the petitioner.) [4] The minutes of the oral proceedings (Ops) before the BoA state, in general terms, that the “common technical knowledge” had been discussed in regard of the inventive step of all requests of the petitioner […]. Moreover, the impugned decision contains […] a summary of the submissions of the parties as well as arguments that are clearly related to the question whether the auxiliary requests involve an inventive step […]. Thus the decision makes clear that both parties have presented comments on “common technical knowledge” in regard of the inventive step involved in auxiliary request II. The petitioner also agreed with the EBA that such a discussion had taken place […]. [5] Therefore, the only difference between the minutes of the OPs and the written decision of the BoA on the one hand and the petition for review on the other hand, consists in the assertion of the petitioner that the BoA had not specified, during the OPs, what its indication of “common technical knowledge” was supposed to mean but had left it to the imagination of the parties. The petitioner also explains that it did not know what “common technical knowledge” was supposed to mean and could only assert that there was none. When reading the written decision, it had understood what the BoA had thought of when referring to “common technical knowledge” […]. For the purpose of the present decision, the EBA will assume, in favour of the petitioner, that the petitioner’s presentation of this discussion is correct and that the BoA has introduced the expression “common technical knowledge” without specifying what it was supposed to mean. [6] The EBA is of the opinion that it cannot be correct that a party can or should accept such an indication that undisclosed facts are taken into account by the BoA or by another party, without these facts having been disclosed or commented upon. Obviously, the situation would have been completely different without this indication, but if the petitioner, as it has asserted, has heard of potential new facts that had not or only partially been disclosed, then it would have had to ask the BoA for explanations. Missing the opportunity to do so and then filing a petition for review is tantamount to acting on the way which the EBA in its decision R 21/11 [5] has found to be potentially unfair (“unbillig”). It is up to a party requesting a decision in its favour to actively participate in the proceedings and to do so in due time and of its own motion (see R 2/08 [8.5, 9.10]). 517 | 3398
R 12/12 – When In Doubt, Ask The Board
K’s Law – The ebook
[7] These principles of the case law regarding petitions for review are not to be limited to the proper submissions of a party but also apply to statements on the submissions of another party or on arguments of the BoA. Thus the EBA noted in R 3/10 [2.11]: “The purpose of OPs is to allow each party to make an oral presentation of its arguments, to allow the BoA to ask each party questions, to allow the parties to respond to such questions and to allow the BoA and the parties to discuss issues, including controversial and perhaps crucial issues. The value of OPs is that matters may as a result be clarified and the BoA may ultimately be satisfied that a party’s position is the right one, although it was not so satisfied by the written submissions alone.” (emphasis by the EBA) According to the submissions of the petitioner, in the present case the BoA has asked the parties to answer questions and the petitioner – or its representative – has decided to only partially answer these questions and not to request the required clarification. It had had the opportunity to comment, but it did not make use of it in the way it could have. Under these circumstances one cannot find the right to be heard to have been violated. [8] This conclusion of the EBA is based on the very arguments of the petitioner itself. The EBA is of the opinion that these arguments are self-contradictory and that the part of the decision that is criticised by the petitioner is based on facts that have been discussed by the parties. [9] The petitioner explains that it had only understood from the written decision what “common technical knowledge” on which the BoA had based its decision was supposed to mean, i.e. the element which was presented as a fact in the decision, according to which the added feature (g) did not concern some specific action but rather some standard practice, and that the BoA, therefore, considered that it was part of the “common technical knowledge” that a material of higher quality would only be used to the extent to which it was required, depending on the particular application, and that if this purpose had been met and if this material of higher quality obviously was not required any more in order to meet a further purpose, then using an appropriate less expensive medium was part of what the skilled person would do […]. Although the petitioner asserts that these statements had only appeared in the written decision, they clearly reflect the submissions of the parties. [10] Thus the appellant had declared, in the course of the OPs before the BoA […] that the problem of keeping the consumption of disinfecting gas as small as possible was a problem the skilled person encountered very commonly and that the solution of this problem according to said feature, when starting from the method according to D1 was obvious in view of what the skilled person would do. [11] In the course of this discussion the petitioner declared […] that the method according to auxiliary request II further differed from the method disclosed in D1 by feature (g), which allowed to advantageously reduce the consumption of the – high quality – disinfecting medium by subsequently using a merely disinfected and/or sterile medium, and, as there was no indication whatsoever for this measure in the state of the art on file, that one had to consider that this feature, in combination with the other features of the corresponding claims, led to a method involving an inventive step. It was not possible to consider the specific measure according to feature (g) to be part of what the skilled person would do. [12] It follows from a mere comparison of these arguments of both parties and the subsequent decision of the BoA that the arguments of the parties have covered the same issues as the decision of the BoA, i.e. that feature (g) had the effect of reducing the need to use the disinfecting (and more expensive) gas by using another (and less expensive) gas for shaping the bags, as well as the question of whether this was obvious for the skilled person because of his “general technical knowledge” (argument of the appellant) or not (argument of the petitioner). Moreover, the decision of the BoA, and in particular the passage criticised by the petitioner […] appears to be based on the arguments of the parties, to which the BoA refers […] before it comes to the conclusion that feature (g) does not require any specific action and that it is part of the “common technical knowledge” to use a second, less expensive gas for shaping the bags. [13] For this reason also the EBA cannot see any indication that the decision is based on facts which the petitioner had not had an opportunity to comment upon. Quite to the contrary, the decision is clearly based on the arguments of the parties and the “common technical knowledge” which the petitioner allegedly only discovered in the decision was nothing but the conclusion of the BoA after it had heard the parties on the issue whether the skilled person would try to reduce the cost of the process, if possible. The only reason for the petitioner to be dissatisfied is that its argument was not successful.
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R 12/12 – When In Doubt, Ask The Board
K’s Law – The ebook
[14] Irrespective of whether it considers only the arguments of the petitioner or, more objectively, all available information on the proceedings before the BoA, the EBA comes to the conclusion that the right to be heard has not been violated. Thus the petition has to be dismissed as clearly unallowable. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 454/08 – A Fake Swiss
K’s Law – The ebook
T 454/08 – A Fake Swiss 19 Apr 2013
Swiss-type claims are a dying species, but from time to time we still have decisions dealing with them. Claim 1 of the main request before the Board read (in English translation): Use of an active substance in the form of microcrystals or microgranules comprising a coating that masks their taste and a mixture of excipients, wherein the mixture of excipients comprises one or more disintegrating agents and one or more swelling agents or soluble agents, for the manufacture of a rapidly disintegratable multiparticulate tablet, wherein said tablet is intended for oral administration in the buccal cavity on the tongue, and wherein its disintegration speed is such that it disintegrates in less than 60 seconds, in order to provide with the saliva present a suspension easy to be swallowed. In what follows, the Board examines the novelty of this claim and shows us that travelling with a fake Swiss passport is a dangerous activity. *** Translation of the French original *** [4] Claim 1 of the main request is essentially directed at:
the use of an active substance in the form of microcrystals or microgranules comprising a coating that masks their taste and a mixture of excipients … for the manufacture of a rapidly disintegratable multiparticulate tablet … said tablet is intended for oral administration in the buccal cavity on the tongue … its disintegration speed is such that it disintegrates in less than 60 seconds, in order to provide with the saliva present a suspension easy to be swallowed.
Interpretation of claim 1 [4.1.1] According to decision G 6/83, a European patent may be granted with claims directed to the use of a substance or composition for the manufacture of a medicament for a specified new and inventive therapeutic application. Decision G 6/83 allowed the reformulation of claims for therapeutic methods referred to in A 52(4) EPC 1973 as so-called Swiss-type claims. Thus the use of a composition for manufacturing a medicament to be used within the framework of a therapeutic or surgical activity is patentable for the implementation of any specific use in a given therapeutic method, within the framework of a further medical indication, provided that the other requirements of the EPC, and in particular novelty and inventive step, are satisfied. However, if a claim drafted in the form of a Swiss-type claim does not refer to an implementation of any therapeutic method or de facto refers to a non-therapeutic use, then the feature defining the implementation is of purely illustrative character and cannot serve to establish novelty over the state of the art. As a matter of fact, this particular approach to novelty only applies to claims directed at the use of a substance or composition for a method within the meaning of A 52(4) EPC 1973 (now A 53(c)). Claim 1 of the main request is drafted according to the model proposed by decision G 6/83, i.e. the use of a substance for the manufacture of a composition intended for a specific use. However, none of the terms of claim 1, i.e. “active substance”, “multiparticulate tablet” and “intended for oral administration in the buccal cavity on the tongue” implies the implementation in any therapeutic method within the meaning of A 53(c).
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T 454/08 – A Fake Swiss
K’s Law – The ebook
As a matter of fact, the expressions “active substance”, “multiparticulate tablet” and “intended for oral administration in the buccal cavity on the tongue” cannot be considered to be limited to the therapeutic domain. In particular, one cannot assert that a “oral administration in the buccal cavity on the tongue” refers to a therapeutic use. Moreover, claim 1 does not contain any additional feature related to any implementation in a therapeutic method. The particular approach to novelty created by decision G 6/83, therefore, does not apply to claim 1 of the main request, the subject-matter of which is equivalent to a process claim, i.e. “process for manufacturing a rapidly disintegratable multiparticulate tablet by using an active substance in the form of microcrystals or microgranules comprising a coating that masks their taste and a mixture of excipients …”. The step where the tablet is administered, wherein “said tablet is intended for oral administration in the buccal cavity on the tongue” has to be understood as a feature that is illustrative of the tablet and not as a limiting feature concerning a specific way of administration. [4.1.2] Moreover, the subject-matter of the claim comprises a functional feature defining the multiparticulate tablet, i.e. “its disintegration speed is such that it disintegrates in less than 60 seconds, in order to provide with the saliva present a suspension easy to be swallowed”. This functional feature does not allow to define the subject-matter of claim 1 in a clear and unambiguous way. As a matter of fact, claim 1 does not contain any indication concerning the measuring method used for the measurement of the disintegration speed. In particular, claim 1 only defines the degree of disintegration via its capacity to form a suspension that can be swallowed easily. This capacity is a subjective concept. The level of disintegration can vary between a mere reduction of the size of the multiparticulate tablet and the achievement of a suspension of small particles. This variability has an impact on the claimed disintegration time, which makes it ambiguous. The relevance of the state of the art has to be evaluated taking into account this ambiguity. Document 4(3) [4.2] Document 4(3) refers to pharmaceutical compositions for oral administration, comprising a medicament that is coated by a polymer which is soluble at pH values above 5 and an acid component intended to reduce or avoid the dissolution of the coating in the buccal cavity […]. It is the polymer coating, which is protected from dissolution by the acid component, that masks the taste […]. The compound can be a tablet that quickly disintegrates in the mouth […]. The tablets of example 1 comprise cellulose and reticulated polyvinylpyrrolidone. They disintegrate in the mouth in less than 30 seconds (see example 1). Thus document 4(3) anticipates all the features of the subject-matter of claim 1 of the main request. Document 2(3) [4.3] Document 2(3) concerns tablets that are to be dispersed in water in order to be then swallowed in the form of a suspension […]. These tablets are made up of coated microparticles that are dispersed in at least one swelling agent and a disintegrating agent […]. Examples 1 and 3 comprise coated microparticles that are associated with guar gum, cellulose and reticulated polyvinylpyrrolidone. The amounts of excipients and the final hardness of the tablets obtained in document 2(3) are identical or very similar to the amounts and the hardness obtained with the tablets of the preferred embodiment of the impugned patent […]. The speed of disintegration obtained with the tablets of document 2(3) is 1 minute in water. The skilled person can only conclude that these tablets have physical properties that are equivalent to those of the impugned patent and necessarily would have the same disintegration properties if they were administered in the mouth. Incidentally, although these tablets are intended for a different use, they are appropriate and suitable “for oral administration in the buccal cavity on the tongue”. Thus the subject-matter of claim 1 of the main request is not novel over the disclosure of document 2(3). Document 2(2)
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T 454/08 – A Fake Swiss
K’s Law – The ebook
[4.4] Document 2(2) concerns a tablet that quickly disintegrates into several granules in the stomach […]. The granules are made up of an active substance that is coated with a mixture of acrylic polymers and ethyl cellulose (Eudragit® E30D and Aquacoat® ECD), which polymers are well known for masking the taste […] and which are also used in the impugned patent. These coated granules are blended with cellulose and reticulated polyvinylpyrrolidone, which are also cited among the preferred excipients of the embodiments of the impugned patent. These tablets are appropriate and suitable “for oral administration in the buccal cavity on the tongue”. These tablets disintegrate in 37°C water in less than one minute […]. Although the disintegration time is measured in vitro, one may expect that the disintegration time is of the same order when it is measured in vivo, in presence of saliva. The skilled person can only conclude that these tablets have physical properties that are equivalent to those of the impugned patent and necessarily would have the same disintegration properties if they were administered in the mouth. Thus document 2(2) destroys the novelty of claim 1 of the main request. Document 4(6) [4.5] Document 4(6) discloses tablets comprising pellets that are coated with a protective polymer. These tablets may be brought in contact with a small quantity of water […] and may be absorbed as they are or in drinkable form that is obtained using the liquid used for disintegrating the tablet […]. The tablet of example 1 discloses pellets coated with Eudragit® E30D and contains starch and reticulated polyvinylpyrrolidone as excipients. The quantities of excipients and the final hardness of the tablet are equivalent to the tablets of the impugned patent. One can only conclude that the tablet of document 4(6) is suitable for buccal administration on the tongue and that implicitly the disintegration speed would be identical to the embodiments of the present invention. Thus claim 1 of the main request is not novel over document 4(6). Additional arguments of the [patent proprietor] [4.6] (a) The [patent proprietor] was of the opinion that claim 1 of the main request was drafted as a second therapeutic use related to a specific way of administration. Claim 1 of the main request has to be read in the light of the description, which makes it clear that the active substance can only be a therapeutic substance. As a matter of fact, the description uses expressions related to therapy such as “practitioner” […], “therapeutic substance” […], “medicament” […], therapeutic protection […] all along. Also, the examples contain therapeutic substances. Thus the skilled person cannot interpret the expression “active substance” in claim 1 to mean anything but a “therapeutic substance”. Consequently, the oral administration is to be considered as a feature to be taken into account for assessing novelty. However, this reasoning cannot be endorsed. Not only should it not be necessary to consult the description in order to interpret the subject-matter of a claim, but these expressions, in particular “active substance”, “therapeutic substance” or “medicament” are not sufficient for de facto implying a therapeutic method. A therapeutic use is not related to the nature of a substance that in itself possesses therapeutic properties, but it is related to the effective involvement of said substance in any therapeutic method within the meaning of A 53(c). As a matter of fact, one cannot exclude that a substance having therapeutic properties may be used in methods that are not methods within the meaning of A 53(c). (b) According to the [patent proprietor], the claimed tablet has to have particular properties, i.e. it has to have satisfy conditions related to the disintegration time and masking of taste. In particular, the criterion according to which it has to disintegrate in less than 60 seconds has to be taken into account when novelty is assessed. The Board does not contest that the criterion of disintegration is a fundamental feature of the multiparticulate tablet according to the invention and agrees that it should be taken into account for the assessment of the novelty of claim 1. However, the ambiguity and the subjective nature of this functional feature does not allow for a restrictive interpretation. In particular, the interpretation of the disintegration level allows for many different ways of measuring the corresponding disintegration time. This variability has to be taken into account when comparing [the claimed subject-matter] with the state of the art (cf. point [4.1.2] above). The [patent proprietor] has provided Annexes 2 and 4 containing measurements of the disintegration time of the tablet according to example 3 of document 2(3) and a comparison between example 1 of document 4(6) and example 1 of the impugned patent. As far as Annex 2 is concerned, there is no explanation whatsoever in regard of the way in which the time of disintegration in the mouth is measured. Annex 4 advocates complete disintegration of the tablet, which is a particular method that is not mentioned in claim 1 or in the text of the description of the impugned patent. Thus these Annexes cannot be considered to be relevant for establishing an objective comparison with the state of the art. Conclusions 522 | 3398
T 454/08 – A Fake Swiss
K’s Law – The ebook
[4.7] It follows [from the above] that the subject-matter of claim 1 of the main request is not novel (A 54). Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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R 9/11 – Don’t Wait Too Long
K’s Law – The ebook
R 9/11 – Don’t Wait Too Long 18 Apr 2013
Here is a recent decision on a petition for review. This petition had successfully passed the first stage examination (R 109(2)(a)), which does not happen very often; most petitions are rejected as clearly inadmissible or unallowable. The petition concerned decision T 642/08, in which Board of Appeal 3.3.09 (referred to as “the Board”) maintained the opposed patent in amended form. The Opposition Division had maintained the patent in amended form, which triggered an appeal by the opponent. Oral proceedings before the Board were held on March 15, 2011. In an annex to the summons to OPs issued on December 1, 2010, the Board indicated that the only issue to be discussed at those proceedings appeared to be inventive step. In this context, D4 appeared to be the closest prior art. On February 15, 2011, the opponent submitted additional arguments concerning lack of inventive step, and filed new document D24; it argued that claim 1 lacked inventive step in view of the combination of D4 with D24. At the OPs the Board admitted document D24 and found the main request to lack inventive step in view of D4 in combination with D24. The proprietor then withdrew the auxiliary request on file and submitted auxiliary requests A, B and C, the admissibility of which was then discussed. After deliberation, the Board informed the parties that only auxiliary request C would be admitted into the proceedings. The proprietor then requested the following written statement to be included in the minutes of the OPs: “Respondent is of the opinion that the fact that D24 is admitted so late (1 month prior to OPs) in the proceedings followed by the subsequent denial of the admissibility of late filed claims is in violation of the right to be heard (R 113) [sic] and R 112 [sic]. The board also failed to ask why we believed that the Auxiliary Request A and B would overcome any of the objections. It is considered and submitted as a procedural violation of the right to be heard.” Before the Enlarged Board of appeal (EBA), the patent proprietor argued as follows: After the Board had decided to admit document D24 into the proceedings, the patent proprietor had not been given the opportunity to address the arguments raised by the opponent and the Board against admitting newly filed auxiliary requests A and B. The Board, before closing the debate on the admissibility of the new requests, had failed to allow the petitioner to address at least once the arguments put forward by the Board and the opponent which had not been raised during the written proceedings. These new auxiliary requests had been meant and submitted as a proper reaction to the new situation on the file. Also, the discussion had not addressed the issue of inventive step. From the chronology of this discussion it followed that the petitioner had only explained the amendments in the requests and where the basis for the amendments was to be found. The Board had indicated that it would be rather unwilling to accept product-by-process claims and that these did not overcome the objections raised against the main request. The opponent had argued on the merits of these requests. No further discussion had taken place. After the Board’s decision not to admit auxiliary requests A and B, the petitioner had immediately filed an objection. The Board had failed to ask it why it thought that the auxiliary requests overcame the objections. Thus, a severe violation of A 113 had occurred. This violation was also linked to the fact that the Board had not invited the petitioner to comment on the auxiliary requests as regards the prima facie issue of inventive step … The Board found the petition to be admissible and then examined its substance: The grounds of the petition - scope of the petition [2.1] The petition alleges fundamental procedural defects on two grounds, namely A 112a(2)(c) and (d).
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R 9/11 – Don’t Wait Too Long
K’s Law – The ebook
[2.2] The petitioner complains that, at the OPs on 15 March 2011, its right to be heard was denied in three ways: (a) firstly, the Board decided on the admissibility of newly filed auxiliary requests A and B without giving the petitioner an opportunity to comment on objections raised by the Board and the [opponent] […]; (b) secondly, the Board decided to admit document D24 and rejected claims filed in response to that late document, thereby effectively depriving the petitioner of a reasonable opportunity to respond adequately to the introduction of the new document […]; (c) thirdly, the Board violated the right to fair proceedings by first allowing D24 to be filed late filing and then refusing new claims filed by the petitioner, thereby demonstrating bias which was contrary to the principle of fair proceedings […]. [2.3] As regards complaint (c), an alleged violation of the principle of procedural fairness is not as such a ground for a petition for review. Consequently, complaint (c) can only be seen in terms of a violation of A 113 and hence A 112a(2)(c) EPC. The petitioner agreed with this at the OPs on 7 December 2012. Thus, the only remaining ground for the petition is that, at the OPs before the Board on 15 March 2011, a fundamental violation of A 113 occurred. Allowability of the petition for review [3.1] Complaint (a): At the OPs on 15 March 2011, the Board decided on the admissibility of newly filed auxiliary requests A and B without giving the petitioner an opportunity to comment on the objections raised by the Board and the [opponent]. [3.1.1] The petition invokes the ground of A 112a(2)(c). In the petitioner’s submissions and according to its handwritten statement, the Board decided on the appeal in violation of A 113 in a manner that gave the petitioner no opportunity to present its comments. [3.1.2] The facts of the case show that, after admitting document D24 into the proceedings, the Board discussed extensively with the parties the subject-matter of claim 1 of the main request on its merits with regard to inventive step in view of D4 in combination with D24 […]. The Board concluded that the main request was not allowable. After the Board’s conclusion on the non-patentability of claim 1 of the main request, the petitioner filed new auxiliary requests A, B and C and withdrew the previous auxiliary request. Claim 1 of auxiliary request A corresponds to claim 1 of the main request, to which the feature of dependent claim 14 has been added. Claim 15 (process claim) is identical to claim 15 of the main request; claim 16 (product-by-process claim) of auxiliary request A corresponds to claim 1 of the main request, to which the following wording has been added: “… wherein the multilayer film is obtainable by a method as defined in claim 15”. Claim 1 of auxiliary request B corresponds to claim 16 of auxiliary request A, i.e. claim 1 of the main request, to which the following wording has been added: “… wherein the multilayer film is obtainable by a method as defined in claim 15”. Claims 2 to 15 correspond to claims 2 to 15 of the main request. [3.1.3] The issue of the admissibility of the newly filed auxiliary requests was then examined. It is not contested by the petitioner that first of all the Board chairman invited the petitioner to explain the differences in, and the support for, the auxiliary requests. In the petition […] it is further indicated that the “[p]atentee also briefly referred to the experimental section and [0060] of the patent to emphasise that the subject matter of claim 1 of this request is associated with beneficial properties, namely that the material suffers from little if any shrinking after printing.” Then, after the explanations of the petitioner, the [opponent] and the Board gave their comments as to why the new auxiliary requests did not overcome the objections raised with respect to the main request.
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R 9/11 – Don’t Wait Too Long
K’s Law – The ebook
The statement of Mr de Lang, who was the authorised patent attorney for the petitioner, indicates that “the Opponent … inter alia criticised the new requests for lack of inventive step.” This is also confirmed by the petition, which states that the [opponent] “… not only addressed the differences and support issues, but he also argued on the merits of these requests” (see page 4, fourth paragraph). At this stage the Board also emphasised the feature formulated as a product-by-process and newly added to claim 16 of auxiliary request A and claim 1 of auxiliary request B. The petition stresses that the Board indicated that it “… would be rather unwilling to accept product-by-process claims, as one could not verify whether or not these claims truly make a contribution to inventive step” (see page 4, fifth paragraph). [3.1.4] The EBA concludes from the petitioner’s own submissions and statements that before the closure of the debate a discussion was held on the admissibility of the new auxiliary requests and various objections were raised […] by the Board chairman and also by the [opponent]. The petitioner, however, did not comment on these objections. It would seem that from these two objections alone, made by the [opponent] and the Board before the closure of the debate, it was apparent that the two new auxiliary requests A and B could not be admitted into the proceedings, which would also explain […] why no argument was put forward by the petitioner to counter them. Along the same lines, reference is made to the explanations of the [opponent] […] (“… it was not prima facie apparent how the introduction of the process feature into the product claim could overcome the inventive step raised against the main request, the proprietor’s representative chose not to respond to that question, and tried to shift the discussion to a consideration of Claim 1 of Auxiliary Request A and an advantage regarding printability as demonstrated by the examples of the patent in suit”). [3.1.5] In any event, there is no doubt that the petitioner had the opportunity to state its case in respect of the admissibility of the auxiliary requests and, in particular, to address the merits of process claim 15 and productby-process claim 16 of auxiliary request A as well as product-by-process claim 1 of auxiliary request B. Nor has it been alleged that it was prevented from doing so. [3.1.6] It is part of the responsibility of any party (here: the petitioner) to state its case and to choose which line of argumentation and which particular arguments it wishes to put to the Board. This procedural responsibility cannot be placed on the Board; a party cannot just wait to be explicitly asked whether it wishes to expand on its previous submissions. Hence, at the latest when the chairman is closing the debate on a specific issue, a party must not just passively follow the other party’s submissions and the Board’s remarks but must actively take the initiative to ensure that the Board continues the debate on the admissibility of a request, or it must amend the request in response to the Board’s remarks. Since the closure of the debate normally marks the point in the proceedings when the Board intends to start its deliberation on a specific issue, and thereafter potentially take a decision on it, a party wishing to present further submissions on that issue must intervene at that moment, without waiting to be asked. Because the petitioner did not do so in this case, the chairman was justified in closing the debate on the admissibility of the new auxiliary requests. The petitioner could not expect the Board, which has to stay neutral in inter partes proceedings, to prompt the petitioner to make further submissions or ask for further explanations. No violation of A 113(1) was therefore committed by the Board in this connection. [3.1.7] Moreover, if there are doubts or expectations as to what is going to be deliberated, it is up to the party to verify this before the OPs are interrupted for deliberation. Any party is expected actively to participate in the OPs and safeguard its interests. In this respect the EBA refers to its decision R 17/11 [19], in which it stressed that in appeal proceedings it is incumbent upon a party to make sure that the points it wishes to raise are actually raised in the proceedings. If it considers that an issue is going to be overlooked, it should raise it. In that sense, the petitioner had the opportunity to raise the points it considered necessary before the Board interrupted the proceedings for deliberation. The Board was therefore not at fault in deciding to deliberate on the admissibility of the auxiliary requests and in pronouncing its conclusion after deliberation. The petitioner’s right to be heard has thus not been violated (A 113(1)).
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R 9/11 – Don’t Wait Too Long
K’s Law – The ebook
[3.2] Complaints (b) and (c): the admission of D24, the non-admission of auxiliary requests A and B, and the application of the principle of fair proceedings [3.2.1] The admissibility of requests filed at a late stage in the appeal proceedings is subject to Article 13(1) RPBA, which provides that any amendment to a party’s case after it has filed its grounds of appeal or reply - and a new set of claims with a new feature is clearly such an amendment - is admissible not as of right but at the Board’s discretion. That discretion is to be exercised in view inter alia of three criteria, namely the complexity of the new subject-matter, the current state of the proceedings, and the need for procedural economy. The concept of “complexity” in Article 13(1) RPBA is not merely confined to the technical content of a proposed amendment to a party’s case. It also extends to any procedural complexity the amendment would entail. This provision also applies when a new document has been admitted into the proceedings, even if this occurs during OPs. This discretionary power is exercised under the conditions set out above. It is for the Board to exercise this power, taking account of the particular circumstances of each case. Since both the decision to admit or not to admit a late-filed document and the decision to admit or not to admit a late-filed request are primarily discretionary decisions of the competent Board, they can only be reviewed to the extent that the way in which a Board exercised its discretion constituted a fundamental violation of A 113. Whether the decision was right or wrong and whether the members of the EBA would have reached the same decision is – as with all discretionary decisions – not the relevant criterion. [3.2.2] In this respect, the petitioner argues that the Board did not take into consideration the fact that document D24 was late filed when deciding not to admit auxiliary requests A and B. The petitioner is of the opinion that the auxiliary requests were not late filed within the meaning of A 114(2). The petitioner further maintains that Article 13(2) RPBA, providing that other parties are entitled to submit their observations on any amendment not held inadmissible by the Board ex officio, was to be read as giving the petitioner a right to file new requests in reaction to the late-filed but admitted document D24. However, apart from the fact that not only the document’s admissibility had been discussed with the parties but also its disclosure in view of the patent in suit had been extensively disputed by both parties, the petitioner’s right according to Article 13(2) RPBA does not inevitably extend to having all auxiliary requests – without any further examination of their prima facie allowability – automatically admitted into the proceedings. [3.2.3] Hence, the petitioner can succeed only if it can be demonstrated that the Board declined to admit auxiliary requests A and B into the proceedings arbitrarily or on grounds that were not relevant to the exercise of its discretion, thereby unlawfully depriving the petitioner of its right to have these requests admitted and discussed in full. However, the EBA sees no evidence of that on file. The arguments used for admitting D24 and not admitting requests A and B, as mentioned in points [3], [3.1] and [5.1-3] of the reasons, are within the scope of Article 13(1) and (3) RPBA. Furthermore they were mentioned during the OPs and the petitioner was not denied the opportunity to comment on them, as the EBA has shown under point 3.1 above. In consequence, the EBA is not convinced that there was a “biased distribution contrary to the principle of fair proceedings” or that the petitioner’s right to be heard has been fundamentally violated. [4] For the above reasons, the petition is unallowable. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 808/09 – Sweet Death
K’s Law – The ebook
T 808/09 – Sweet Death 17 Apr 2013
When sloppy drafting meets thoughtless amendments, the outcome may be deadly. The appeal was against the decision of the Opposition Division (OD) to revoke the patent for lack of novelty. Claim 1 of the main request before the Board read: A cartridge (1) for use in a beverage preparation machine, the cartridge containing one or more beverage ingredients (200) and being formed from substantially air- and waterimpermeable materials, wherein the one or more beverage ingredients is a liquid chocolate ingredient, characterised in that the liquid chocolate ingredient has a viscosity between 70 and 3900 mPas at ambient temperature. (my emphasis) The viscosity feature was introduced at the suggestion of the Examining Divison (ED). The patent proprietor explained that it had accepted this amendment in good faith with a view to expediting allowance of the application. The Board found this claim to lack sufficiency of disclosure. [2.1] Concerning the issue of sufficiency of disclosure the Board has to criticise the rather short reasoning given in point 2 of the reasons of the impugned decision: “The OD is of the opinion that the skilled person trying to reproduce a cartridge of claim 1 would use a standard method for measuring the viscosity, which would e.g. be disclosed by the hand book of the device to be used, and thus obtain a cartridge according to claim 1”. This reasoning is considered to be insufficient with respect to the plurality of different arguments as well as the evidence D1, D24 and D25 submitted by the two opponents 01 and 02 in support of their objection of insufficiency. None of these find any treatment in the impugned decision. It is also not apparent, neither from the decision nor from the minutes of the oral proceedings (OPs), why the OD changed its provisional negative opinion with respect to the viscosity feature as communicated to the parties, into the positive opinion expressed in the decision. Indeed, the impugned decision is silent with respect to document D25, which has been timely submitted during the opposition procedure by opponent 02 and which both the appellant and respondent 01 confirmed as having been discussed at the OPs before the OD. By the same token four other documents submitted during the opposition proceedings […] have not been mentioned in the impugned decision either. [2.2] Taking proper account of the user’s manual D1 and the declaration D25 the Board reaches the opposite conclusion, for the following reasons. Main request [2.3] Product claim 1 of the main request comprises the feature of a “liquid chocolate ingredient having a viscosity of between 70 and 3900 mPas at ambient temperature”. It is, however, evident that the patent in suit provides insufficient information to enable the person skilled in the art to carry out the invention with respect to this feature of the viscosity. [2.4] In the first place, the patent in suit does not contain a single working example executed with a liquid chocolate concentrate within the scope of the claims as granted; they concerned exclusively ground coffee extract.
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T 808/09 – Sweet Death
K’s Law – The ebook
[2.4.1] Further, the patent description and particularly the passages quoted by the appellant […] are silent on how the viscosity of between 70 and 3900 mPas is to be determined and which device and which parameters necessary for measuring the viscosity of the liquid chocolate concentrate have to be used: Paragraphs [0011] to [0014] only specify certain total solids content values of the liquid chocolate concentrates, which may contain a high solids content of cocoa solids and which may be a gel (i.e. thixotropic). The dilution ratio of between 2 to 1 and 10 to 1 of said liquid chocolate concentrate […] is not helpful either. The presence of the concentrate to be diluted is a prerequisite for said dilution. The viscosity difference between 1700 and 3900 mPas at ambient temperature and between 5000 and 10000 mPas at 0°C of an embodiment with a solids content of 67 Brix ± 3 mentioned in paragraph [0069] only leads to a huge difference in viscosity of 3300-6100 mPas at different temperatures but likewise does not enable the person skilled in the art to formulate such a liquid chocolate concentrate. [2.4.2] The patent also does not contain any description how such liquid chocolate ingredients or concentrates should be prepared – there exists no formulation which cocoa solids and which other components need to be blended to achieve a composition having the high total solids content as e.g. specified in paragraphs [0011] to [0014] or [0069] – which at the same time also has a viscosity in the range of 70-3900 mPas at ambient temperature. It could be any combination of ingredients known from the prior art […] but the specification does not help in this respect and therefore places an undue burden on the person skilled in the art. [2.4.3] It belongs to the common general knowledge of the person skilled in the art that liquid chocolate concentrates are typically both shear-thinning and thixotropic so that their viscosity is dependent on the temperature, applied shear rate as well as the shear time. This means that there is a time-dependent change in viscosity: the longer the fluid undergoes shear stress the lower is its viscosity […]. As a consequence of these properties a single viscosity value for such a concentrate, without any indication of the shear rate and of the measurement time, is meaningless and not enabling a determination of its viscosity. [2.4.4] D1 does not disclose such a standard method for liquid chocolate concentrates. This fact was also admitted by the appellant at the OPs. D1 only discloses information necessary to make meaningful viscosity measurements, with the emphasis on Brookfield viscometers (see page 7, chapter “3.1 Why You Should Read This Chapter”). It states that it is necessary to record the viscometer model, spindle (or accessory), rotational speed, container size or dimensions, sample temperature, sample preparation procedure (if any), and whether or not the spindle guard was used to ensure reproducibility of the test results (see page 8, chapter “3.3.1 Recordkeeping”; and page 16, chapter “4.7.3 Measuring Conditions”). The patent in suit does not mention any of these parameters. Thus D1 teaches the person skilled in the art the essential parameters which have to be considered when performing a viscosity measurement but it is silent which device components and which specific parameters have to be selected when in particular the viscosity of a liquid chocolate concentrate is to be measured. [2.4.5] The reasoning of the OD in its decision to the contrary cannot hold since there is firstly no indication in the patent in suit concerning the device to be used - there exist several manufacturers of viscometers and the Brookfield viscometer mentioned in D1 is only one of them, […] so that the person skilled in the art cannot consult the corresponding viscometer manual for the viscosity measurement […]. Secondly there exists no standard method for measuring the viscosity of such thixotropic suspensions as stated in the decision. The declaration D25 states that there exists no standard method with a standard shear rate or standard measuring time for such concentrated dispersions […]. However, the appellant did not discharge its burden of proof for the existence of such a standard method for shear-thinning and/or thixotropic liquid chocolate concentrates (see Case Law, 6th edition 2010, sections VI.H.5.1.1 and VI.H.5.2). This deficiency has been mentioned in the Board’s communication annexed to the summons to OPs; when asked at the OPs by the Board the appellant admitted that it had no evidence for the existence of a standard method for measuring the viscosity of such liquid chocolate concentrates. [2.4.6] The appellant’s further arguments cannot hold for the following reasons. The arguments concerning the case history of the incorporation of the viscosity feature during the examination proceedings are not relevant for the issue of sufficiency of disclosure.
529 | 3398
T 808/09 – Sweet Death
K’s Law – The ebook
Furthermore, as correctly argued by respondent 01 the responsibility for this amendment remains with the appellant. The further argument that the Examining Division considered that the disclosure was reproducible without undue burden is not particularly relevant for the appeal proceedings since this issue was actually raised in the opposition proceedings by opponents 01 and 02 who submitted in this context amongst others the documents D1 and D25. The fact that the OD reached the conclusion that A 83 is complied with, is likewise not considered to be particularly relevant, in view of the extremely short reasoning given (see point [2.1] above) which does not take account of any of the opponents’ arguments and evidence. The argument that the combined knowledge of D1 and the specification of the patent in suit would enable the person skilled in the art to carry out the invention cannot hold either since the patent does not give the information to use one of the Brookfield viscometers mentioned in D1. The argument that the declaration D25 would not be relevant as it focuses only on the claims while A 83 requires to take account of the entire specification cannot hold since there is no difference between the subject-matter of claims 1, 2 and 4-12 as discussed in D25 and the disclosure of paragraphs [0011] to [0015] of the patent in suit. The additional viscosity range at 0°C for an embodiment with a specific total solids content according to paragraph [0069] of the patent does not resolve the sufficiency problem either […]. Likewise the argument concerning the missing “hard data” that the invention does not work or that the claimed viscosities cannot be determined cannot hold since the patent in suit already fails at the prior requirement of not disclosing the method, apparatus and the parameters for determination of the viscosity, in particular for the claimed liquid chocolate suspension. In any case, the appellant did not produce any counter-evidence against the experiments carried out by opponent 02 demonstrating the effect of the shear rate on the viscosity of 13 different liquid chocolate concentrates belonging to the prior art which viscosities were measured at shear rates of 100 s -1 and 1000 s-1. This comparison clearly shows the effect of different shear rates on the measured viscosity. The absence of any reference to viscosity measurements in D8 or D9, which do not explain in explicit detail how these viscosities were measured, cannot alter this conclusion. While not wishing to enter into a detailed discussion of these documents the Board notes that D8, though a granted patent, is not granted according to the EPC and D9 is a mere application, not a granted European patent. [2.5] Taking account of the above the Board considers that the patent in suit fails to enable the measurement of the essential parameter of the invention, i.e. the viscosity of the liquid chocolate ingredient. Considering this fact and in line with the longstanding jurisprudence of the Boards of Appeal (see Case Law, 6th edition 2010, section II.A.1 to II.A.7; compare e.g. T 805/93 (dealing with viscosity measurement at “room temperature”) and T 83/01 and T 1250/01 (both concerning the measurement of an essential parameter, i.e. a specific mean diameter or the Sears number, respectively)), the Board concludes that claim 1 of the main request does not comply with A 83. The main request is therefore not allowable. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 902/07 – The Narrow Path
K’s Law – The ebook
T 902/07 – The Narrow Path 16 Apr 2013
The present decision - which is from 2010 but has been published only now - has something to say on what “the same invention” means in the realm of biotech. [2] Documents D1 and D8 are scientific publications dated 19 January 1996 and 12 March 1996, respectively. Document D9 is a European patent application published on 23 July 1997 claiming inter alia priority from US 08/639,501 (document D10), filed on 29 April 1996. Thus, the publication dates of documents D1 and D8 and the priority date of document D9 lie between the filing dates of the second priority document P2 and the third priority document P3 of the patent in suit. It is undisputed that the disclosure in documents D1, D8 and D9, if it belonged to the state of the art under A 54(2) or A 54(3), would be detrimental to the novelty of the subject-matter of claim 2 of the main request (and all identically formulated claims in [the patent proprietors’] auxiliary requests). Documents D1, D8 and D9 would not belong to the state of the art under A 54(2) and A 54(3), if the claims were entitled to claim priority from P1 or P2, the first and second priority documents. [3] The complete BRCA2 coding sequence is not depicted in any of the three priority documents, but only in the application as filed (figure 7). It encodes 3418 amino acids. P1 and P2, respectively, contain partial BRCA2 sequences while P3 does not contain any coding sequence at all. The partial sequence of P1 as depicted in figures 1 to 3 (corresponding to figures 1 to 3 of the patent) encodes 544 amino acids (about 16% of the complete sequence). The partial sequence of P2 shown in figures 4 and 5 (corresponding to figures 4 and 5 of the patent) encodes 2329 amino acids (about 68% of the complete sequence). [4] The Enlarged Board of Appeal (EBA) in the opinion G 2/98 came to the conclusion that the requirement for claiming priority in respect of “the same invention”, referred to in A 87(1), means that priority of a previous application in respect of a claim in a European patent application in accordance with A 88 is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole. When examining whether a narrow or strict interpretation of the concept of “the same invention” referred to in A 87(1) should be applied, the EBA considered that a narrow and strict interpretation of the concept of “the same invention”, equating it with the concept of “the same subject-matter” referred to in A 87(4), was entirely consistent with Articles 4F and 4H of the Paris Convention (points [2] to [5] of the reasons). This followed from the very aim and object of the right of priority: the protection from novelty destroying disclosures during a period of twelve months from the date of filing of the first application is satisfied only in case of the filing of a subsequent application relating to the same invention. In point [8.3] of the reasons the EBA considered an issue that had been raised in decision T 73/88 which, in order to assess whether a claim in a later European patent application was in respect of the same invention as the priority application pursuant to A 87(1), made a distinction between technical features which are related to the function and effect of the invention and technical features which are not. This approach was said to be problematic because there are no suitable and clear, objective criteria for making such a distinction; it could thus give rise to arbitrariness. Different deciding bodies might thus arrive at different results when assessing these facts and circumstances. Furthermore, as pointed out in the referral of the President of the EPO giving rise to the opinion, it had to be borne in mind that the assessment by these different deciding bodies of whether or not certain technical features were related to the function and effect of the claimed invention might completely change in the course of proceedings. This was the case, in particular, if new prior art was to be considered, with the possible consequence that the validity of a hitherto acknowledged right of priority could be put in jeopardy. Such dependence would, however, be at variance with the requirement of legal certainty. Finally in point [9] of the reasons the EBA stated: 531 | 3398
T 902/07 – The Narrow Path
K’s Law – The ebook
“... an extensive or broad interpretation of the concept of “the same invention” referred to in A 87(1), making a distinction between technical features which are related to the function and effect of the invention and technical features which are not, with the possible consequence that a claimed invention is considered to remain the same even though a feature is modified or deleted, or a further feature is added (cf. point [8.3] supra), is inappropriate and prejudicial to a proper exercise of priority rights. Rather, according to that analysis, a narrow or strict interpretation of the concept of “the same invention”, equating it to the concept of “the same subject-matter” referred to in A 87(4) (cf. point [2] supra), is necessary to ensure a proper exercise of priority rights ...”. [5] In application of G 2/98, the Boards of Appeal, in a number of decisions, have defined the concept of “the same invention” in the field of biotechnology and especially in connection with inventions referring to nucleotide sequences. A summary of this case law of the Boards of Appeal is given in decision T 1213/05 [22-25] of this Board in a different composition. [6] [The patent proprietors] have argued that this case law of the Boards of Appeal did not apply in the present case since, contrary to the technical situation underlying those decisions, the claimed nucleotide sequence was not defined by sequence information but by a process for obtaining it. The essence of the present invention was to be seen in the identification of the BRCA2 gene, whose identity had been confirmed by partial sequencing as disclosed in priority documents P1 and P2. Starting from this disclosure sequencing the rest of the gene (about 32% of the entire gene sequence not disclosed in document P2) was a matter of routine work that could have been done by a person skilled in the art without undue burden. [7] In fact the [the patent proprietors] seek to distinguish between technical features which are related to the function and effect of the invention (and which according to [the patent proprietors] are disclosed in P1 and P2) and technical features which are not. This is exactly the approach which the EBA found to be inappropriate and prejudicial to a proper exercise of priority rights (G 2/98 [9]). Documents P1 and P2 disclose partial sequences of the BRCA2 gene only. They do not refer to “the same invention”, in the sense of “the same subject-matter” referred to in A 87(4), as the patent, which discloses in figure 7 the complete BRCA2 coding sequence (see G 2/98 [2-5]). [8] Yet further, the Board notes that claim 2 of [the patent proprietors’] main request is not directed to a method for identifying a gene, which according to [the patent proprietors] is the essence of the invention, but to “an isolated nucleic acid molecule consisting of the full length coding sequence or complete BRCA2 gene”. [9] [The patent proprietors] referred to decision T 932/92 (NB: this should read T 923/92) wherein, as they argued, it was decided that a claim to a DNA isolate defined by a process for its production was entitled to claim priority from a priority document containing sequencing errors. [10] In that earlier decision the Board decided that a claim referring to a process comprising the preparation of a protein which was defined by its function and by an amino acid sequence 1 to 527 as depicted in Figure 5, did not enjoy priority from the first and second priority documents which contained a Figure 5 that differed from Figure 5 of the patent in suit in respect of three amino acid positions 175, 178 and 191. It enjoyed priority only from the third priority document which disclosed the correct sequence (see T 923/92 [3-17]). However, in point [46], the Board decided that claim 1 of subsidiary request 3 was entitled to claim priority from the first priority document. This claim was formulated such that it referred to a DNA isolate obtainable by probing a cDNA library with one or more of three defined hybridisation probes, isolating strongly hybridising clones and using them to produce a DNA sequence having a restriction pattern shown in figure 4 “for the putative mature tissue plasminogen activator sequence” encoding a polypeptide of 527 amino acids. The claim defined the N-terminal and C-terminal amino acid of the protein and specified the human t-Pa activator function. [11] The first priority document disclosed the used starting material and hybridisation probes and it contained figure 4 in identical form as the patent. The nucleotides corresponding to amino acid residues 30 to 67, which were responsible for binding of the hybridisation probes, were identical in figure 5 of P1 and of the patent. Figure 5 of the first priority document and of the patent disclosed a polypeptide of 527 amino acids whose Nterminal and C-terminal amino acid were identical.
532 | 3398
T 902/07 – The Narrow Path
K’s Law – The ebook
[12] The claim which was found to be entitled to claim priority from the first priority document in decision T 923/92 was formulated differently than claim 2 of the main request in the present case, which is directed to “an isolated nucleic acid molecule consisting of the full length coding sequence or complete BRCA2 gene”. Also the disclosure in the priority documents in that case was different than in the present case. Therefore, the passages of decision T 923/92 relied on by [the patent proprietors] do not apply in the present case. [13] The issue of entitlement to priority has been dealt with in G 2/98, five years after the publication of decision T 923/92. The case law of the Boards of Appeal with regard to the entitlement to priority of a claim referring to a nucleic acid sequence is uniform and definite. The arguments presented by [the patent proprietors], therefore, have not persuaded the Board that there is anything in the present case which could justify a deviation from this case law. Accordingly, the Board arrives at the decision that the subject-matter of claim 2 of [the patent proprietors’] main request is not entitled to claim priority from P1 or P2. Consequently, the claimed subject-matter lacked novelty and the patent was revoked. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1032/10 – With And Without Paper
K’s Law – The ebook
T 1032/10 – With And Without Paper 15 Apr 2013
This decision is a good and handy reminder of the rules governing the transfer of the opponent status by mergers and universal succession, as established and confirmed by the case law. The appeal was filed against the rejection of an opposition filed by “Claudius Peters Technologies GmbH” (CPT). The patent proprietor objected to the admissibility of the appeal. It pointed out that a demerger agreement (Abspaltungsvertrag) between the companies “Claudius Peters Group GmbH” (CPG) and “Claudius Peters Project GmbH” (CPP) the relevant assets had been transferred from CPT to CPP before the date of filing of the appeal (May 14, 2010). Moreover, there was a settlement agreement that hindered the appellant from pursuing the opposition. The opponent argued that the CPT had existed until March 29, 2012, the day of its merger with “Claudius Peters Aerospace GmbH” (CPA), which had become its legal successor. After the filing of the appeal, the opponent status was transferred from CPT to CPA and then to “Piller Holding GmbH” (PH). The Board found the appeal to be admissible. *** Translation of the German original* *** [1.2.1] According to A 107 any party to proceedings adversely affected by a decision may appeal. [1.2.1] All persons who have been explicitly referred to as parties to the proceedings for the relevant part of the proceedings, as well as all persons the legal interests of which are affected by the decision qualify as parties to the first instance proceedings (Ausgangsverfahren) in the framework of which the impugned decision has been taken (T 811/90; J 28/94; J 33/95 [4]). In practice, the parties to the proceedings are at first the parties in regard of which the deciding organ intended to take the decision, i.e. the parties that are mentioned in the caption of the decision (see Günzel/Beckedorf in: Benkard, EPÜ, 2 nd edition, A 107, marginal number 4 et seq.). What is decisive for the procedural position as party within the meaning of A 107, first sentence, is the legal situation at the moment at which the impugned decision was taken (T 631/94). [1.2.3] CPT, which had filed an opposition against the patent-in-suit on January 18, 2008, and which was mentioned as party to the proceedings in the caption of the impugned decision of the Opposition Division (OD) dated March 5, 2010, was a party to the opposition proceedings preceding the present appeal proceedings. [1.2.4] Insofar as the [patent proprietor] points out that the appellant had lost its entitlement to appeal as a consequence of the demerger agreement (document Z1) after the impugned decision had been issued, but shortly before the appeal was filed, the admissibility objection of the [patent proprietor] based on this argument cannot succeed. Just as a change of party on behalf of the applicant or patent proprietor pursuant to R 22 and R 85 is a direct consequence of a transfer (Umschreibung) of the patent in the Patent Register, an (original) opponent who was adversely affected by the decision of the administrative department of the EPO (here: the OD) can file an appeal and act in the appeal proceedings, irrespective of the substantive situation, as long as the transfer of the opponent status has not been brought to bear and established in the proceedings (see Günzel/Beckedorf, op.cit., A 107, marginal number 29). [1.2.5] The decisions G 4/88 and G 2/04 have made decisive statements on the conditions for a change of opponent or appellant in analogy to R 22 and R 85. Accordingly, from a legal point of view, the status as an opponent in pending opposition or appeal proceedings cannot be freely transferred. The transfer is only admissible if it occurs at the same time as the transfer of the 534 | 3398
T 1032/10 – With And Without Paper
K’s Law – The ebook
business or the part of the company in the interests of which the opposition was filed (cf. T 724/05 [1 et seq.]; T 1206/06 [2]; T 1877/08 [1.2 et seq.]). A change of party is only effective when the legal succession has been requested and established before the EPO via the submission of official documents. As long as the transfer has not been established, the former party remains entitled and bound, because the change of the party status only occurs when it is asserted and established (T 870/92 [3.1]; T 1137/97 [4]; T 413/02 [3]; T 593/04 [1.1]; T 229/03 [3]; T 163/05 [1.5]; T 85/03 [1]; T 6/05 [1.6.1-4]; T 1421/05 [3.3]). A mere statement regarding the transfer of the opponent status is not sufficient (T 670/95 [2]; T 229/03 [5]). Irrespective of the fact that the parties do not agree on what belongs to the “operative business” (“operativer Geschäftsbetrieb”) which, according to document Z1, has been demerged from CPT and transferred to CPP and in particular whether this was the business in the interests of which the opposition was filed, and that the documents on file in the appeal proceedings do not allow to draw an unambiguous conclusion in this respect, what is decisive in the present situation is that there was no request for a change of party in favour of CPP on behalf of the appellant. There is no need for an approval of the adverse party (here the [patent proprietor]) to the change of party, and a missing (mandatory) request of the appellant cannot be replaced by a corresponding submission on behalf of the respondent. [1.2.6] Thus CPT was entitled to file an appeal in its quality as opponent and party to the opposition proceedings within the meaning of A 107. Legal succession [2] In contrast to the legal transfer of an opposition together with a business, or part of it, respectively, an opposition can be transferred by universal succession, e.g. as a consequence of a merger of the opponent with another company. In such a case the opposition is transferred automatically, irrespective of the date on which the required evidence is filed (T 6/05 [1.7]; T 425/05; in detail: T 1421/05 [1 et seq. and headnotes 1 to 4]). When a transfer of the opposition due to an (at first merely) alleged legal transfer together with the business in the framework of which the opposition had been filed, there is the possibility that the opposition remains with the original opponent or is transferred to the transferee, of which both the Board before which the appeal is pending and the other parties to the proceedings can only be certain after the corresponding evidence has been filed. In the case of a legal universal succession, however, there can only be one single entitled person (Berechtigter) because the transferee automatically and exclusively takes the legal position of the former opponent. Thus there cannot be any legal uncertainty regarding the identity of the person that holds the legal position of the opponent. This is what justifies an exception from the otherwise strict requirements for the legal transfer of an opposition and the application, mutatis mutandis, of the principles that govern the transfer of a patent to the transfer of an opposition by legal universal succession (see : Günzel/Beckedorf, op.cit., A 107, marginal number 32). [2.2] In the present case the appellant has established by documents Z2 and Z3 that the original opponent and appellant CPT has merged with CPA as a consequence of the merger agreement dated February 29, 2012, as well as the consent of the shareholders’ meeting held on the same day and the shareholders’ meeting of the transferee on March 1, 2012, and that [CPT] has ceased to exist as soon as the merger had become effective, i.e. on March 29, 2012. Thus CPA has taken over all legal positions of CPT in its quality as the universal legal successor of the latter. Document Z4 further proves that CPA, as a consequence of the decision on its shareholders’ meeting of May 21, 2012, has become PH. [2.3] In view of this unambiguous legal succession from the original opponent CPT to CPA and the change of the latter to PH, the Board cannot see any indication for an abuse of proceedings within the meaning of decision G 3/97 on behalf of the appellant, as alleged by the [patent proprietor]. The same holds true for the […] settlement agreement into which the [patent proprietor] and CPP have entered (document Z5). Even if CPG was controlling CPT between November 13, 2008 and January 3, 2011 […] (document Z5), the settlement agreement does not bind CPT and its legal successors – at least as far as the present appeal proceedings are concerned. [3] As a consequence, CPT was entitled to file the appeal under A 107, which is admissible.
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T 1032/10 – With And Without Paper
K’s Law – The ebook
The transfer of the opponent/appellant status to CPA, which has later become PH, is established ; the appeal proceedings are pursued with PH. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1676/08 – Too Big Not To Fail
K’s Law – The ebook
T 1676/08 – Too Big Not To Fail 12 Apr 2013
This very long – 123 pages – decision contains lots of interesting procedural aspects (it’s one of those decisions where the appellants are desperate enough to invoke Article 6 of the Human Rights Convention, which is never a good sign) and is well worth skimming through. The patent proprietor had filed an appeal after the Opposition Division (OD) had maintained its patent in amended form. The patent-in-suit was based on a divisional application; the patent proprietor apparently had chosen to have a patent delivered for a preferred embodiment and to cover the more general teaching by means of a divisional application. However, the OD had found claim 1 as granted to violate A 76. In the following extract the Board answers the question of whether the main request (i.e. the patent as granted) did indeed extend beyond the content of the corresponding parent application. Claim 1 of this request read: A controlled release oxycodone formulation for oral administration to human patients, comprising: (a) oxycodone salt in an amount equivalent to 10 mg to 160 mg of the oxycodone hydrochloride salt, and (b) a controlled release dosage matrix, other than an acrylic resin matrix selected so that the formulation provides pH-independent dissolution characteristics, (c) wherein said formulation provides, at steady state after repeated administration at 12-hour intervals, a mean maximum plasma concentration of oxycodone of 6 to 240 ng/ml at 2 to 4.5 hours after administration and a mean minimum plasma concentration of oxycodone of 3 to 120 ng/ml at 10 to 14 hours after administration. In the discussion of the compliance of this claim with A 76 we once more meet our good old friend G 2/10. [8.1] In its interlocutory decision the OD reached a conclusion on the issue of A 100(c) EPC 1973 for the set of claims as granted. Consequently, the assessment of the grounds pursuant to A 100(c) EPC 1973 is part of the legal framework of the present appeal proceedings. [8.2] According to A 100(c) EPC 1973, opposition may be filed on the grounds that: “the subject-matter of the European patent extends beyond the content of the application as filed, or, if the patent was granted as a divisional application or on a new application filed under Article 61, beyond the content of the earlier application as filed” (emphasis added). The application underlying the patent in suit was filed as a divisional application of an earlier European application which was based on the international application published as WO 93/10765 (parent application P4). Decision G 1/05 [3.6] states: “Thus in opposition proceedings under A 100(c) it is a ground of revocation that the subjectmatter of the European patent granted on a divisional application extends beyond the content of the earlier application as filed. A 100 does not state that it is a ground of revocation that the patent was granted on a divisional application whose subject-matter as filed extended beyond the content of the earlier application as filed. A 100 exhaustively sets out all the grounds of revocation that can be relied on, so the lack of any such ground of revocation suggests that the significant factor is the subject-matter at the time of grant and not whether the subject-matter of the divisional application as filed met the requirement of not extending beyond the content of the earlier application as filed.” [8.3] The principles set out in decision G 2/10 with regard to the requirements to be met in order for amendments by the introduction of disclaimers for disclosed subject-matter to be allowable under A 123(2) also apply with regard to the requirements for divisional applications under A 76(1) (see decision G 2/10 [4.6]). They therefore also apply to the examination under A 100(c) EPC 1973 in the present case. In decision G 2/10 the question referred to the Enlarged Board of Appeal is answered as follows: “1a. An amendment to a claim by the introduction of a disclaimer disclaiming from it subjectmatter disclosed in the application as filed infringes Article 123(2) EPC if the subject-matter 537 | 3398
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remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed. 1b. Determining whether or not that is the case requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after the amendment.” In accordance with decision G 2/10, the disclosure of the parent application as filed has to be evaluated in comparison with the subject-matter remaining in the claim after the amendment. [8.4] Claim 1 of the main request is identical to claim 1 as granted. The [patent proprietors] submitted that the disclaimer in claim 1 of the main request excluded subject-matter disclosed and claimed in the granted patent deriving from the parent application and referred to paragraph [0007] of the patent in suit (P1). Irrespective of whether or not this is the case, the following has to be considered. Such a procedural situation (which concerns the prosecution in a divisional application of the general teaching, whereas in the parent application the protection of a preferred embodiment is pursued) is reflected in decision G 2/10 [4.5.5, third paragraph]: “The applicant may, for example, be interested in obtaining a first quicker protection for a preferred embodiment and pursue the general teaching in a divisional application. Whether or not and, if so, under what circumstances, in such a case a disclaimer would be necessary in order to avoid the so-called prohibition on double protection is a different matter. It is sufficient to say that such procedural behaviour is not abusive and even legitimate.” [8.5] In order to assess what is the subject-matter claimed in claim 1 of the main request, the claim’s construction has first to be investigated. [8.5.1] In accordance with Article 7(1), second sentence, of the Revision Act of 29 November 2000 and the decision of the Administrative Council of 28 June 2001 (Special edition No. 1, OJ EPO 2007, 197), revised A 54(4) is applicable, since the mention of the grant of the patent in suit was published in European Patent Bulletin before the entry into force of the revised EPC. Oxycodone (as well as some oxycodone formulations) was known as a pharmaceutical drug before the effective date of filing of the patent in suit. Therefore, in accordance with A 54(4), claim 1 of the main request, which relates to “a controlled release oxycodone formulation for oral administration to human patients”, is a product claim in which the condition “for oral administration to human patients” merely expresses the suitability of the formulation for oral administration. [8.5.2] Claim 1 of the main request relates to a controlled release formulation comprising oxycodone salt and a controlled release dosage matrix. The oxycodone salt is present in an amount equivalent to 10 mg to 160 mg of the oxycodone hydrochloride salt. The objective reading of the claim is that the oxycodone salt is included in the controlled release dosage matrix. Moreover, the condition appearing in the definition of the controlled release dosage matrix “selected so that the formulation provides pH-independent dissolution characteristics” serves to define the controlled release dosage matrix as one that allows the formulation to release amounts of oxycodone (active compound) in a pHindependent manner. According to the wording in claim 1 of the main request, said condition must also apply to the matrix excluded from the claim by means of the disclaimer. Additionally, the expression “other than an acrylic resin matrix” excludes from the controlled resin matrices those which incorporate acrylic resins as suitable materials. Therefore, the controlled release dosage matrix in the formulation according to claim 1 is any controlled release matrix which is not an acrylic resin matrix, and which allows the formulation to release oxycodone amounts without pH-dependent dose dumping. [8.5.3] Additionally, claim 1 defines the formulation as providing, at steady state after repeated administration at 12-hour intervals, a mean maximum plasma concentration of oxycodone of 6 to 240 ng/ml at 2 to 4.5 hours after administration and a mean minimum plasma concentration of oxycodone of 3 to 120 ng/ml at 10 to 14 hours after administration.
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These functional definitions require that the controlled release formulation comprising oxycodone salt in the lowest amount (i.e. an amount equivalent to 10 mg of oxycodone hydrochloride salt) be able to achieve (when administered at 12-hour intervals) at least the lowest values for the mean maximum plasma concentration and the mean minimum plasma concentration of the stated pharmacokinetic plasma profile at steady state conditions. By analogy, the controlled release formulation comprising oxycodone salt in the highest amount (i.e. an amount equivalent to 160 mg of oxycodone hydrochloride salt) must be able to achieve (when administered at 12-hour intervals) the highest values for the mean maximum plasma concentration and the mean minimum plasma concentration of the stated pharmacokinetic plasma profile at steady state conditions. Moreover, formulations comprising oxycodone salt within the range defined (i.e. amounts equivalent to 10 mg to 160 mg of oxycodone hydrochloride salt) and a controlled release dosage matrix, other than an acrylic resin matrix, must provide a pharmacokinetic plasma profile within the ranges defined in the claim (when administered at 12-hour intervals). [8.5.4] From the foregoing it follows that claim 1 of the main request conveys that the particular pharmacokinetic plasma profiles at steady state, characterised by identifiable Cmax and Cmin at particular times, are attainable by means of any controlled release dosage matrix (as far as it does not cause pH-dependent dose dumping), without occurrence of acrylic resins. [8.6] It has to be investigated whether or not the parent application (P4) discloses the product claimed in claim 1 of the main request and whether the subject-matter in said claim included technical information which is directly and unambiguously derivable from the parent application. [8.6.1] The parent application (P4) discloses the general principle that “administering an oral solid controlled release dosage formulation comprising up to about 160 mg of oxycodone or a salt thereof … providing a mean maximum plasma concentration of oxycodone up to about 240 ng/ml from a mean of up to about 2 to about 4.5 hours after administration, and a mean minimum plasma concentration up to about 120 ng/ml from a mean of about 10 to about 14 hours after repeated “q12h” (i.e. every 12 hours) administration through steady-state conditions” reduces the range in daily dosages required to control pain in substantially all patients […]. However, the disclosure of this general principle does not suffice as a basis for the product claimed in claim 1 of the main request. [8.6.2] The generic disclosure […] of the parent application P4 relates in general terms to “controlled release oxycodone formulations comprising up to about 160 mg oxycodone or a salt thereof, said formulations providing a mean maximum plasma concentration of oxycodone up to about 240 ng/ml from a mean of about 2 to about 4.5 hours after administration, and a mean minimum plasma concentration up to about 120 ng/ml from about 10 to about 14 hours after repeated q12h administration through steady-state conditions”. This disclosure does not suffice either as an allowable basis for the product claimed in claim 1 as granted. In particular, the basis for the lowest value of oxycodone salt “in an amount equivalent to 10 mg of the oxycodone hydrochloride salt”, the lowest mean maximum plasma concentration of oxycodone of 6 ng/ml, and the lowest mean minimum plasma concentration of oxycodone of 3 ng/ml are lacking. [8.6.3] The parent application P4 discloses controlled release formulations comprising a matrix. The matrix is defined in the parent application as “any matrix that affords in vitro dissolution rates of oxycodone within the narrow ranges required and that releases the oxycodone in a pH independent manner” […]. However, claim 1 of the main request does not require the controlled release dosage matrix to afford a particular in vitro dissolution rate. As a consequence, the definition of the matrix defined in claim 1 of the main request is broader in this respect than the definition given [… in] the parent application. [8.6.4] The parent application P4 discloses generically the “materials” which are “suitable for inclusion” in a controlled release matrix by giving different broadly defined generic options […]. However, the particular options given for materials to be included in the matrix do not amount to a generic disclosure encompassing any thinkable controlled release matrix capable of achieving the plasma profile given in claim 1 of the main request. The list of suitable materials which may be included in a controlled release matrix appearing [… in] the parent application does not represent a complete and fully elaborated list of constituents covering each and every kind of controlled release matrices. Furthermore, the parent application does not disclose that the plasma profile defined in claim 1 of the main request is the immediate and direct result of any controlled release matrix just because it contains any of the materials listed on pages 9 and 10. Moreover, […] some particular suitable matrices are disclosed which, however, do not cover any possible suitable controlled release matrix of claim 1. Thus, it cannot be derived from the content of the parent application that any controlled release matrix is able to provide the pharmacokinetic plasma profile required by claim 1 of the main request, or that any controlled release matrix can achieve the plasma profile without the occurrence of an acrylic resin.
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[8.6.5] The parent application P4 discloses controlled release matrices comprising hydrophilic polymers other than acrylic resins, namely it discloses suitable matrices comprising at least one water-soluble hydroxyalkyl cellulose and at least one C12-C36 aliphatic alcohol […]. However, this particular subgroup is not a sufficient basis for the generic definition in claim 1 of the main request. Moreover, the constitution of the “suitable matrix” in this particular embodiment only confirms that the “suitable materials” listed […] do not represent singularised subgroups of a “suitable matrix” but generic options for materials to be selected and included in order that a “suitable matrix” is built. [8.6.6] Additionally, claim 5 of the parent application P4 explicitly requires a suitable pharmaceutical diluent to be present in the solid oral dosage form. Apart from the fact that this feature is lacking in claim 1 of the main request, claim 5 of the parent application does not give in its paragraph (b) any exhaustive list of all possible constituents forming a controlled release matrix. Moreover, claim 5 of the parent application does not teach that each and every constitution of the controlled release matrix is able to attain the pharmacokinetic plasma profile defined in claim 1 of the main request, or that said profile can be achieved by any combination of materials without the occurrence of acrylic resins. The fact that claim 6 of the parent application P4 explicitly refers to a controlled release composition of claim 5, “wherein said controlled release matrix comprises an acrylic resin” (emphasis added) merely emphasises that controlled release matrices comprising an acrylic resin are preferred, but says nothing about the nature and effect of controlled release matrices without the occurrence of acrylic resins. [8.6.7] For the above reasons, the board concludes that the subject-matter of claim 1 of the main request remaining after the introduction of the disclaimer extends beyond the content of the parent application P4. [8.7] Turning now to the [patent proprietors’] arguments: [8.7.1] The person skilled in the art is the notional skilled person working in the technical field at the effective date of filing. The notional skilled person is not represented by a particular scientific expert or specialist with almost twenty years of accumulated expertise and knowledge after the date of filing of the parent application. Additionally, if an application requires additional technical information to interpret terms differently from an objective reading of them in the technical field, then the application as filed has to include explanations and/or citations of prior-art references to clarify those aspects. In the absence of such explanations and references in the parent application as filed, the terms and definitions employed are to be given their objective and generally accepted meaning. Nothing other than this has been done in the present case. Moreover, as regards the [patent proprietors’] allegation that the pharmacokinetic plasma profile makes it possible for the person skilled in the art to identify a controlled release formulation as one according to the parent application P4, it has to be said that this is not the question to be answered for the assessment of added subject-matter. The question to be answered in the present case is whether the product claimed in claim 1 of the main request presents the skilled person with technical information which is not directly and unambiguously derivable from the parent application. As shown by the analysis above, the product claimed in claim 1 of the main request presents the skilled person with new technical information relating to the constitution of the controlled release matrix suitable for attaining the particular pharmacokinetic plasma profile defined in the claim. [8.7.2] The [patent proprietors] also submitted that according to decision G 2/10 [4.5.4, fourth paragraph] the remaining subject-matter and the remaining general teaching will normally not be modified by excluding from protection, by means of a disclaimer, a group initially disclosed in the application as filed. However, decision G 2/10 also states in the same paragraph that a situation may arise in which the disclaimer has the effect of confining the subject-matter remaining in the claim to a subgroup of the originally claimed subject-matter which could not be regarded as disclosed in the application as filed even taking into account what the skilled person would have considered as implicitly disclosed. In the present case there is an essential difference between what the [patent proprietors] subjectively consider has been disclosed in their parent application P4 and the objective assessment of what has actually been, be it explicitly or implicitly, directly and unambiguously disclosed. The board considers that the concept of implicit disclosure has to be applied with great care. Therefore, subject-matter is implicitly disclosed to the skilled person in an application as filed if this subject-matter is necessarily derivable from said application. [8.7.3] The [patent proprietors] made use in their submissions of the expressions “technical contribution”, “technical information” and “technical teaching” as if they referred to the same concepts. However, when 540 | 3398
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examining the subject-matter remaining after introduction of the disclaimer in the present case in the light of the principles set out in decision G 2/10, it has to be assessed whether the subject-matter claimed presents the skilled person with new technical information not directly and unambiguously derivable from the parent application as filed. On the other hand, the test relating to the technical contribution provided by a claim vis-à-vis the prior art does not apply to the present case, since the disclaimer was not introduced in view of any particular prior-art document. Moreover, the technical teaching in the patent in suit, which derives from the divisional application, is per se different from that in the parent application P4. This is due to the fact that the content of the divisional application as filed was restricted in comparison to the parent application P4. The fact that the content of a patent deriving from a divisional application is limited in relation to the parent application does not necessarily mean that there is a problem under A 100(c) EPC 1973. However, if the limitations cause the “singling out” of intermediate generalisations (such as particular subgroups of elements) involving new technical information, then there is added subject-matter within the meaning of A 100(c) EPC 1973. Furthermore, the [patent proprietors] argued that the disclosure of a certain pharmacokinetic profile in the parent application P4 means that the parent application inevitably singles out each and every constituent and combination of constituents for the formulation. However, for the application of A 123(2) EPC, A 76(1) EPC 1973, or A 100(c) EPC 1973, the disclosure test does not relate to alternatives which are not directly and unambiguously derivable from the application as filed. [8.7.4] Additionally, the [patent proprietors] cited the High Court’s decision D40 and the subsequent decision of the Court of Appeal D40a in support of their argument that the subject-matter claimed in claim 1 of the main request does not contain added subject-matter. All the national decisions cited by the [patent proprietors] predate the referral decision T 1068/07 and decision G 2/10. Decision G 2/10 leaves no doubt that it has to be investigated in each individual case whether the subjectmatter remaining in the claim after the introduction of a disclaimer includes technical information which is not directly and unambiguously derivable from the parent application as filed. As regards the passages cited by the [patent proprietors] in said national decisions, it has to be stressed that the High Court in its decision D40 and the Court of Appeal in its decision D40a did not assess whether the subjectmatter remaining in the claim after the introduction of the disclaimer was disclosed in the parent application as filed. The same applies in relation to the decision of the District Court of The Hague (D78a). [8.7.5] The [patent proprietors] also cited decisions T 142/94 and T 1024/96. Decision T 142/94 deals with the assessment of the requirements of inventive step in relation to a claim relating to a solid controlled release dosage form characterised inter alia by means of in vitro release profile and in vivo release profile. Therefore, decision T 142/94 is not relevant for the examination under A 100(c) EPC 1973. Decision T 1024/96 deals with the assessment of clarity of functional features under A 84 EPC 1973. However, claim 1 of the present main request is identical to claim 1 as granted. Therefore, A 84 EPC 1973 is not at issue (T 23/86). Decision T 1024/96 is thus not relevant for the present case either. Finally, it has to be pointed out that, in contrast to the circumstances of the decisions cited by the [patent proprietors], the product of claim 1 of the main request is not characterised by the in vitro dissolution rate. [8.7.6] The [patent proprietors] also referred to their written submissions made in document D70. In document D70 the [patent proprietors] referred to decision T 1139/00, and submitted that by analogy to said decision claim 1 as granted had to be considered as allowable since the disclaimer excluded subject-matter disclosed in the parent application as filed. However, even if it is established that the disclaimer excludes subject-matter disclosed in the parent application as filed, the analysis to be made according to decision G 2/10 is whether the subject-matter remaining after introduction of the disclaimer is directly and unambiguously disclosed in the parent application as filed. Decision T 1139/00 was issued long before decision G 2/10, and thus only cites decisions G 1/03 and G 1/93. However, decision G 2/10 [4.3, last paragraph] makes it clear that neither decision G 1/93 nor decision G 1/03 intended to modify the general definition of the requirements of A 123(2). This finding is undoubtedly also applicable in the context of A 100(c) EPC 1973 (see point [8.3] above). [8.7.7] The [patent proprietors] also cited decision T 1107/06 to support their arguments in favour of the allowability of a claim with a disclaimer for excluding subject-matter disclosed in the application as filed. However, decision T 1107/06 predates decision G 2/10, which stipulates that the investigation as to whether the subject-matter remaining in a claim after the introduction of a disclaimer is disclosed in the parent application as
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filed has to be decided in each case individually, after an objective investigation of the disclosure in the parent application as filed. [8.8] For the above reasons, the main request fails under A 100(c) EPC 1973 since the subject-matter of claim 1 extends beyond the content of the parent application as filed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1222/11 – Getting Your Priorities Right
K’s Law – The ebook
T 1222/11 – Getting Your Priorities Right 11 Apr 2013
Can a loss of priority lead to a violation of A 123(2)? Yes, it can, as illustrated in this examination appeal. The Examining Division (ED) had found that the main request did not comply with the requirements of A 123(2) and that the auxiliary request lacked inventive step. Claim 1 of this request read: 1. A leave-on hair cosmetic composition, comprising the following components (A), (B) and (C): (A) malic acid or a salt thereof; (B) at least one organic solvent selected from benzylacohol or 2-benzyloxyethanol; and (C) a set polymer, selected from polyvinylpyrrolidone polymer compounds, acidic vinyl ether polymer compounds, acidic polyvinyl acetate polymer compounds, acidic acrylic polymer compounds, amphoteric acrylic polymer compounds, basic acrylic polymer compounds and chitin/chitosan derivatives wherein the cosmetic composition has a pH of from 2 to 5 at 25°C when diluted to 20 times the weight with water and has a buffering capacity of 0.001 gram equivalent/L or greater but less than 0.05 gram equivalent/L, wherein the following compositions are excluded:
This was also the main request before the Board. The decision presents us with a noteworthy domino effect leading from a loss of priority to an unallowable disclaimer and thus to a violation of A 123(2). The Board also offers us some interesting – and possibly controversial – findings on how to understand certain statements of G 2/98. Not an easy read, though. 543 | 3398
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Amendments [2] Compared to claim 1 as originally filed, claim 1 of the main request has been amended by (i) restricting the definition of component (A) from “an organic C2-8 dicarboxylic acid or salt thereof” to malic acid or a salt thereof, (ii) restricting the definition of component (B) from “at least one or more of an organic solvent selected from the group consisting of aromatic alcohols, N-alkylpyrrolidones, alkylene carbonates, polypropylene glycols, lactones and cyclic ketones, wherein the organic solvent has a Clog P of from -2 to 3” to at least one organic solvent selected from benzylalcohol or 2-benzyloxyethanol, (iii) making mandatory the use of a set polymer selected from polyvinylpyrrolidone polymer compounds, acidic vinyl ether polymer compounds, acidic polyvinyl acetate polymer compounds, acidic acrylic polymer compounds, amphoteric acrylic polymer compounds, basic acrylic polymer compounds and chitin/chitosan derivatives, (iv) restricting the upper value of the buffering capacity of the composition to 0.05 gram equivalent/L and (v) disclaiming six particular compositions. [3] It is not disputed that the six disclaimers contained in Claim 1 are “undisclosed disclaimers” within the meaning of G 1/03, i.e. concern subject-matters which are not disclosed as such in the application as originally filed (see G 2/10 [3]). They have the purpose of restoring novelty over D4b, which is an earlier application by the present applicants, published in the Japanese language between the priority date claimed and the filing date of the present application. A translation in English of D4b, which entered the European phase, was published in accordance with A 158(3) as D4 (EP-A-1 570 832). The passages of D4b indicated in the present decision refer to the corresponding passages in the latter publication D4. Disclosure of D4b and comparison with the present application [4] Claim 1 of D4b is directed to leave-on hair cosmetic compositions comprising malic acid or a salt thereof, lactic acid or a salt thereof and an organic solvent selected from the group consisting of aromatic alcohols, Nalkylpyrrolidones, alkylene carbonates, polypropylene glycol, lactones and cyclic ketones, wherein the organic solvent has a Clog P of from -2 to 3. The compositions are described to provide set retention, sleekness and smoothness to the hair […]. [4.1] D4b discloses in particular six specific leave-on hair cosmetic compositions […] on the basis of which the present disclaimers have been formulated. They comprise malic acid, lactic acid, 2-Benzyloxyethanol, a set polymer, namely either a polyvinylpyrrolidone polymer […] or an amphoteric acrylic polymer […]. Their pH is 3.7 and has been adjusted with an aqueous solution of sodium hydroxide. [4.2] In line with the disclosure of these exemplified compositions, D4b teaches, like the present application as filed […], that the preferred ingredients for the organic solvent include benzyl alcohol, benzyloxyethanol, propylene carbonate, and polypropylene glycol (number average molecular weight: 300 to 500, especially 400) […]. The use of a set polymer is considered to be optional both in D4b […] and in the application as filed […], the lists of set polymers exemplified in D4b and in the application as filed being identical, including the classes of set polymers defined in claim 1 of the present requests. D4b also discloses that it is preferred, in order to achieve the objective of D4b with respect to sleekness of hair and styling ease, that the pH measured at 25°C of the cosmetic solution diluted 20-fold in water is in a range of from 2.5 to 4.5, more preferably in a range of from 3 to 4.2 […], i.e. within the pH range defined in claim 1 of the present request. Hence, the technical information in the application as filed regarding the use of the preferred organic solvent, of the set polymer and of a pH range does not differ from that provided in D4b, with the consequence that any pointer to be found in the application as filed to the combination of features defined in the first part of present claim 1 in terms of positive features with the exception of buffering capacity is also to be found in D4b. [4.3] As to the buffering capacity defined in present claim 1, this parameter results from the presence of a buffering agent such as compound (A), i.e. the organic C2-8 dicarboxylic acid or salt thereof […], in particular malic acid, in an amount preferably from 0.5 wt.% to 10 wt.% […], i.e. the same amount as taught in D4b […]. Moreover, lactic acid is known as a conventional buffering agent and is used according to […] D4b in an amount preferably lying within the range from 0.5 to 10 wt.-%. The present application confirms with Example 5 that the mere presence of malic acid in an amount of 4 wt.% and lactic acid in an amount of 1 wt.%, i.e. the respective amounts of those acids used in Example Product 10 and Example Product 6 of D4b, now disclaimed, brings about a buffering capacity of 0.006 gram equivalent/L, i.e. within the range broadly defined in present claim 1. Thus, in view of the above, it is concluded that Example Product 10 and Example Product 6 of D4 exhibit the buffering capacity required by present claim 1. Also, a strong presumption has been established that Example Products 11 to 14 which contain equal amounts of malic and lactic acids, i.e. 5 wt.% in total, like Example 5 of the present application, also meet the parametric definition of buffering capacity as defined in claim 1 of the 544 | 3398
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main request. The applicants, although they argued that D4b remained completely silent in regard to buffering capacity, did not argue that said parameter constituted a distinguishing feature. In view of the strong presumption established above that these specific embodiments also fulfil this parametric condition, and the absence of evidence to the contrary, let alone any denial by the appellants that it is so, the Board concludes that the above six examples of D4b fall within the definition of the composition defined in positive terms in the first part of claim 1. [5] It follows also from the above that the disclosure of D4b overlaps with the definition of the compositions defined in positive terms in present claim 1 (i.e. in the absence of the disclaimers), D4b giving direct and unambiguous pointers, at least through the disclosure of six exemplified compositions, corresponding to the compositions presently disclaimed, to apply the technical teaching of D4b in that area of overlap. The use of six disclaimers for the main request, which correspond to six compositions falling within the area of overlap between the present application and D4b raises the issue of whether these disclaimers could in any event succeed in restoring novelty. It is however more appropriate in the present case, as the same question also arises for the First and Second Auxiliary Requests, which contain a more broadly defined disclaimer also solely based on the disclosure of D4b, to first examine whether a disclaimer based on the sole disclosure of D4b and not on the application as filed might be allowable having regard to the requirements set out in decisions G 1/03 and G 2/10. As the present disclaimers have the purpose of restoring novelty over D4b, it is necessary in view of the criteria developed in decision G 1/03 for allowability of disclaimers introduced to restore novelty to determine whether D4b published between the priority date claimed and the filing date represents state of the art pursuant to A 54(3) or a disclosure pursuant to A 54(2). [6] In the context of assessing whether D4b is state of the art pursuant to A 54(3) or A 54(2), the question arises whether the combination of features defined in positive terms in amended claim 1, i.e. before the introduction of the disclaimers, or in other words in the absence thereof, enjoys the priority claimed. In this respect reference is also made to decision G 1/03 [4], according to which the introduction during the prosecution of a European patent application of an allowable disclaimer does not change the identity of the invention within the meaning of A 87(1). Priority [7] The text of the present application as filed corresponds to the translation in English of the Japanese patent application 2004053708, on the basis of which priority is presently claimed. According to A 87(1), a requirement for enjoying a right of priority for filing a European patent application is that the application for a patent, a utility model or a utility certificate on the basis of which the priority is claimed must be the first application in respect of the same invention. According to A 87(4), the definition of a first application extends also to a subsequent application in respect of the same subject-matter as the previous first application and filed in or for the same State, provided that at the date of filing of the subsequent application, the previous first application has been withdrawn, abandoned or refused without having become open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of priority. [8] The purpose of the provisions of A 87(4) is to allow applicants to replace a previous application by a subsequent application and still benefit from a right of priority. The reasons may be that the previous application which has been filed did not describe the invention properly or might need to be supplemented by additional embodiments resulting from further research developments. Patent applicants may in particular wish to combine the originally disclosed subject-matter of the first filing with further additional related embodiments developed during the priority period within one and the same application, while claiming and enjoying priority from the embodiments disclosed in the first filing (see T 15/01 [38]). [9] If Japanese patent application 2004053708, on the basis of which priority is presently claimed and the earlier PCT application PCT/JP2003/014791 filed on 20 November 2003 related to the same invention, the later Japanese patent application could not represent such a subsequent application being considered as the first application within the meaning of A 87(4) replacing the earlier PCT application for the benefit of a right of priority for said invention, as the above earlier application was published as D4b and entered the European phase (see point [3] above). The question therefore arises whether or not the subject-matter of claim 1 of the Main request in the absence of any disclaimer, which subject-matter is also disclosed in Japanese patent application 2004053708 on the basis of which priority is presently claimed, is in respect of the same invention as already disclosed in D4b. [9.1] In view of opinion G 2/98 [2-6.8], a narrow or strict interpretation of the concept of “the same invention” referred to in A 87(1), equating it with the concept of “the same subject-matter” referred to in A 87(4), is perfectly consistent with the relevant provisions of both the Paris Convention and the EPC. 545 | 3398
T 1222/11 – Getting Your Priorities Right
K’s Law – The ebook
[9.2] It follows from the above that the combination of features defined in positive terms in the first part of present claim 1 of the main request cannot be distinguished from the disclosure of the earlier application D4b. Example Products 10 to 14 and Example Product 6 of D4b constitute prior disclosures of the combination of features defined in positive terms in the first part of present claim 1 of the main request and therefore cannot be held to relate to a different subject-matter, i.e. a different invention. In view of the above, the subject-matter defined in amended claim 1 in positive terms (i.e. without any disclaimer) is not entitled to priority as far as far it concerns the subject-matter already disclosed in D4b. [9.3] The appellants’ argument that the presently claimed invention differs from that of D4b, as it does not require the presence of lactic acid, fails to convince in view of the meaning of “invention” equating with “subject-matter”, which subject-matter, in the absence of the present disclaimers, cannot be distinguished from that disclosed in D4b. [9.4] The appellants’ further argument that the claimed invention or claimed subject-matter in D4b does not provide any basis for claiming, as in present claim 1, the use of malic acid without any restriction to its combined use with lactic acid does not mean that D4b and the present application do not contain a common subject-matter or invention, but only means that the disclosure of D4b does not extend to the use of malic acid without any lactic acid. In other words, the present subject-matter can be seen as the invention of D4b supplemented with additional subject-matter relating to the use of malic acid without lactic acid, whereas the appellants did not make use of the provisions of A 87(4) in order to claim on the basis of the present priority document a first filing in respect of the subject-matter defined in the present claims, or take advantage of the possibility to file a separate application disclosing these additional embodiments, possibly to benefit from a priority right for the additional embodiments in a later application. [10] Consequently, in view of the ruling in opinion G 2/98, that the concept of “the same invention” referred to in A 87(1) may be equated with the concept of “the same subject-matter”, it must be concluded for this reason alone that the appellants cannot benefit from the priority claimed for the combination of features defined in positive terms in amended claim 1, in so far as it covers subject-matter disclosed in D4b, in particular in so far as it covers the six compositions disclosed in D4b which the appellants are seeking to disclaim. Additional remarks in relation to priority [11] According to opinions G 3/93 [4] and G 2/98 [3] A 87 to A 89 provide a complete, self-contained code of rules of law on the subject of claiming priority for the purpose of filing a European patent application and are clearly intended not to contravene the basic principles concerning priority laid down in the Paris Convention. Therefore, although the following considerations are not part of the reasons for denying priority for present claim 1 in so far as it covers compositions already disclosed in D4b (see points [7] to [10] above), the Board nevertheless considers it useful to explain why the reasons given above for denying priority for present claim 1, in so far as it covers compositions disclosed by D4b, although present claim 1 is not specific as to the presence or absence of lactic acid, are coherent with the principles of claiming multiple priorities and claiming partial priority, which are enshrined in Article 4F of the Paris Convention and reflected in the corresponding provisions of the EPC, namely A 88(2) and (3) (see G 2/98 [6.1] and T 15/01 [31-33]). [11.1] It follows from opinion G 2/98 [6.3-4] that the legislative intent underlying A 88(2), second sentence, concerning the possibility of claiming multiple priorities for any one claim is expressed in Memorandum C drawn up by FICPI (M/48/I, Section C) (hereafter “Memorandum”) for the Munich Diplomatic Conference in 1973. According to the Memorandum, when evaluating whether there is any justification for claiming multiple priorities for one and the same claim of an application, a distinction has to be made between (i) “AND”-claims and (ii) “OR”-claims (see point [6.5]). [11.2] As regards the “AND”-claim situation, the Memorandum stated (see G 2/98 [6.6]) that where a first priority document discloses a feature A, and a second priority document discloses a feature B for use together with feature A, “then a claim directed to A+B cannot enjoy a partial priority from the first priority date, because the invention A+B was disclosed only at the date of the second priority document”. [11.3] Concerning the “OR”-claim situation it is stated in the Memorandum, according to G 2/98 [6.7], that where a first priority document discloses a feature A, and a second priority document discloses a feature B for use as an alternative to feature A, then a claim directed to A or B can enjoy the first priority for part A of the claim and the second priority for part B of the claim (for the definition of the “OR”-claim situation given in the Memorandum, see point [11.5.4] below). It is also added in the penultimate sentence of opinion G 2/98 [6.7] that the Memorandum suggests that these two priorities may also be claimed for a claim directed to C, if the feature 546 | 3398
T 1222/11 – Getting Your Priorities Right
K’s Law – The ebook
C, either in the form of a generic term or formula, or otherwise, encompasses feature A as well as feature B, the last sentence of point [6.7] of the Reasons reading “The use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with A 88(2), second sentence, EPC is perfectly acceptable under A 87(1) and A 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters.” [11.4] The Board is aware of decisions T 1877/08 [2.4], T 476/09 [5.6], T 1443/05 [4.2.6] and T 1127/00 [6] according to which the condition “provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters” set out in G 2/98 [6.7] was seen as characterising the manner in which the subject-matter of the “OR”-claim must be defined. In decisions T 1877/08 and T 476/09, the claim of the application defined larger numerical ranges than those defined in the priority document. A partial priority was denied for the compositions disclosed in the priority document, which were encompassed by the composition of the application, on the ground that the claimed ranges represented a continuum of numerical values, from which no separable alternative embodiments, i.e. elements in the sense of A 88(3), could be identified. In T 1127/00, partial priority for a claim directed to a generic formula which was broader that the generic formula defined in the priority document was not upheld. The claim covered a great number of alternative compounds which were not, as such, spelled out in the claim and which did not represent a limited number of clearly defined alternative subject-matters in the form of an “OR”-claim, which could be split up into groups of different priorities. The fact that these compounds might be intellectually envisaged to fall within the scope of the claim was not considered to make up for a clear and unambiguous presence of these alternatives, individualized as such. Claim 1 could not enjoy the partial priority from a priority document, but could only be entitled to the priority date of the document where the said generic formula was for the first time disclosed. [11.5] The present Board is however of the opinion as explained below that the condition “provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters” should be given, when read in its proper context, a different meaning than that attributed to it by the respective Boards in the above mentioned decisions T 1877/08, T 476/09, T 1443/05 and T 1127/00. As a preliminary remark, this condition cannot be meant to set out the manner in which the subject-matter of the “OR”-claim must be defined, i.e. to give “rise to the claiming of a limited number of clearly defined alternative subject-matters” as this would, at least in relation to generic terms, be at variance with the disclosure test based on the principle of an unambiguous and direct disclosure set out in opinion G 3/89. Furthermore, and more importantly: [11.5.1] A 88(3), which is referred to in the last sentence of point [6.7], reads “If one or more priorities are claimed in respect of a European patent application, the right of priority shall cover only those elements of the European patent application which are included in the application or applications whose priority is claimed”. In the context of opinion G 2/98 [6.7] concerning exclusively the question of the claiming of multiple priorities for one and the same “OR”-claim, the reference to A 88(3) in the last sentence of point [6.7] of the Reasons means therefore that the Enlarged Board (EBA) indicates under which conditions the assessment required by A 88(3), as to which elements of the “OR”-claim are covered by any of the multiple priority claims, can be made when the “OR”-claim is drafted using a generic term or formula. [11.5.2] Furthermore, it has to be borne in mind that the assessment required by A 88(3), as to which elements (alternatives) of the “OR”-claim are covered by any of the multiple priority claims can be achieved only by a comparison of the claimed subject-matter of that “OR”-claim with the disclosure of the multiple priority documents. Therefore, in the context of assessing which elements of the “OR”-claim are covered by any of the multiple priority documents, the words “gives rise to the claiming of a limited number of clearly defined alternative subject-matters” refer to the ability to conceptually identify by said comparison a limited number of clearly defined alternative subject-matters to which the multiple rights of priority claimed can be attributed or not. [11.5.3] That this comparison should give rise to a limited number of clearly defined alternative subject-matters is obviously necessary in order to identify which parts of the claims benefit from the effect of the priority right defined in A 89. For the avoidance of doubt, the Board wishes to add that it is not the task of the EPO to determine ex officio to which parts of an “OR”-claim can be attributed the right(s) of priority claimed. In view of an intermediate prior art which appears relevant for assessing the patentability of a particular “OR”-claim, the
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T 1222/11 – Getting Your Priorities Right
K’s Law – The ebook
burden of proof that said particular claim benefits from a partial priority or partial priorities, if the latter is prima facie not immediately obvious, is on the person alleging the existence of said partial priority. [11.5.4] Furthermore, the above analysis of the last sentence of G 2/98 [6.7] holds good in the light of the Memorandum, which according to the EBA proved the intent of the legislator concerning the question of multiple priorities. As to “OR”-claims, which are spelled out in this manner in the Memorandum, those are defined as claims which are “too broad to be supported by the disclosure of the first priority document” (the passages relating to the Memorandum […] are quotations from the latter). According to page 2 of the Memorandum, “It is of course immaterial whether the word “or” actually occurs in the claim, or is implied through the use of a generic term, or otherwise”. The Memorandum goes on to provide three typical examples of “situations of the “OR”-type”. [11.5.5] According to the first example entitled “Broadening of chemical formulae”, “A first priority document discloses a relatively narrow chemical formula supported by representative examples. A second priority document discloses a broader chemical formula which within its scope includes the narrower chemical formula, and which is supported by additional examples justifying the broader formula. If multiple priorities for one and the same claim are allowed, it will suffice to draw up a single claim directed to the broad formula. This claim will then enjoy priority from the first priority date to the extent that the compound in question comes within the scope of the narrow formula, and the second priority for the rest of its scope. If multiple priorities for one and the same claim are not allowed, the applicant would have to draw up two parallel claims, one directed to the narrow formula and enjoying the first priority, and another directed to compounds coming within the broad formula, but not within the narrow formula. The latter claim would then enjoy the second priority.” This example which is not specified to relate to a claim directed to a limited number of clearly defined alternative subject-matters confirms, through the use of the terms “within the scope” and “for the rest of its scope” and the identification of the parts of the claim enjoying the respective rights of priority, that the attribution of the partial priorities to the different parts of the claim has to be made by a comparison of the subject-matter of the claim with the disclosure of the priority documents. The clearly defined alternative subjectmatters are in this example the narrow formula and the rest of the scope of the claim. [11.5.6] According to the second example of the Memorandum entitled “Broadening of range (temperature, pressure, concentration, etc.)” “a first priority document discloses a temperature range of 15-20°C and a second priority document discloses a temperature range of 10-25°C. If multiple priorities for one and the same claim are allowed, it will suffice in the European patent application to draw up a claim directed to the temperature range 10-25°C. If multiple priorities for one and the same claim are not allowed, the applicant will have to draw up two parallel claims, one directed to the temperature range 15-20°C and enjoying the first priority, and another claim directed to the temperature ranges l0-15° or 20-25°C, which claim will then enjoy the priority of the second priority document which was the first one to disclose these temperature ranges”. It follows from this second example, that the claim defining a temperature range of 10-25°C enjoys the first priority for the temperature range 15-20°C, although the latter is neither explicitly nor implicitly disclosed in the claim. The clearly defined alternative subject-matters are in this example the three above mentioned temperature ranges. [11.5.7] That the different dates of priority should be attributed through a comparison between the claimed subject-matter and the subject-matter of the priority documents and that partial priority is not reserved only to claims which define on their own “a limited number of clearly defined alternative subject-matters” is also illustrated by the third example of the Memorandum. In this third Example, the first priority document discloses a method of coating the inner wall of a pipe and the second priority document discloses the use of the same method for coating the inner wall of bottles or any other hollow bodies. According to the Memorandum, “If multiple priorities for one and the same claim are allowed, it will suffice in the European patent application to draw up a claim to a method for coating the inner wall of hollow bodies. If multiple priorities for one and the same claim are not allowed, the applicant will have to draw up two parallel claims, one directed to a method of coating the inner wall of pipes, which claim will enjoy the first priority, and a second claim directed to a method of coating the inner wall of hollow bodies not being pipes, which claim would enjoy the second priority.” 548 | 3398
T 1222/11 – Getting Your Priorities Right
K’s Law – The ebook
The identifiable alternatives resulting from the comparison between the claimed subject-matter and the priority documents are in this case the method of coating the inner wall of pipes and the method of coating the inner wall of hollow bodies not being pipes. [11.5.8] Thus the Memorandum, which was considered by the EBA to express the legislative intent underlying the possibility of claiming multiple priorities for any one claim as defined in A 88(2), second sentence, confirms through the situations exemplified therein the significance to be attributed to the condition referred to in opinion G 2/98 [6.7], as indicated in point [11.5.2] above, namely the ability to conceptually identify a limited number of clearly defined alternative subject-matters by a comparison of the subject-matter of that “OR”-claim with the disclosure of the multiple priority documents, so as to determine which parts of the “OR”-claim or alternative subject-matters are covered by the rights of priority claimed. [11.6] Bearing in mind the above conclusion concerning assessment of partial priority for an “OR”-claim (claim too broad to be supported by the disclosure of the first priority document, as defined in the Memorandum) when multiple priorities are claimed, there is no reason why the assessment of partial priority for an “OR”-claim should be different depending on whether a single priority or multiple priorities are claimed, nor is there any provision in the EPC which would support a different view. A 88(3) does not make any difference in this respect. Referring to any of the examples given in the Memorandum, for the part of the subject-matter claimed corresponding to the subject-matter disclosed in the first priority document, there is no reason why the validity of the priority disclosing a first subject-matter should be made dependent on the existence of a later second priority document disclosing a subject-matter broader in scope and encompassing the earlier disclosure. Hence, the condition referred to in opinion G2/98 [6.7] must be considered to be applicable also when assessing partial priority in relation to a single priority document, i.e. the comparison of the claimed subject-matter of that “OR”claim with the disclosure of the priority document must give rise to a limited number of clearly defined alternative subject-matters, so that it is possible to determine which subject-matters are covered by the priority claimed and which are not. [11.7] According to the conclusion of opinion G 2/98, “The requirement for claiming priority of “the same invention”, referred to in A 87(1), means that priority of a previous application in respect of a claim in a European patent application in accordance with A 88 is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole”. For the sake of avoiding any misunderstanding, it is pointed out that applying the principle of partial priority in the context of “OR”-claims as defined in the Memorandum, i.e. claims too broad to be supported by the disclosure of the first priority document, does not contradict the conclusion reached in opinion G 2/98, because that conclusion is not given in respect of “OR”-claims, as implicitly follows from the Reasons for opinion G 2/98, in particular point [6.7] (see point [11.3] above), and the wording of the conclusion itself. [11.8] It is therefore concluded that in so far as a subject-matter disclosed in a priority document and encompassed by an “OR”-claim of a European application (i.e. a claim of a European application which compared to the disclosure of the subject-matter in the priority document has been broadened) is concerned, the decision on whether priority can be acknowledged for this subject-matter, i.e. for this embodiment covered by the “OR”-claim, is independent of whether said subject-matter or embodiment disclosed in the priority document is identified in the “OR”-claim of the European application as a separate alternative embodiment. The above conclusion, however, also implies in view of the necessary coherence of rules of law on the subject of claiming priority defined in the EPC, that when an application on the basis of which a priority date is claimed encompasses a narrower subject-matter already disclosed by the same applicant in an earlier application, the decision on whether the claim to priority on the basis of the later application is valid does not depend on whether the narrower subject-matter disclosed in the earlier application is identified in said later application. The latter situation is precisely the one underlying the case under appeal. Allowability of the disclaimers [12] As the claimed priority for the combination of features defined in positive terms in amended claim 1, i.e. before the introduction of the disclaimers, does not hold at least with respect to the six compositions already disclosed in application D4b, as follows from above points [7] to [10], the publication of those embodiments of D4b before the filing date of the present application constitutes prior art pursuant to A 54(2). As the anticipatory disclosure of D4b also concerns according to its claim 1 leave-on hair compositions, it does not constitute an accidental anticipation within the meaning of G 1/03 with the consequence that the six disclaimers introduced, which are based solely on the disclosure of document D4b, are not allowable under A 123(2). 549 | 3398
T 1222/11 – Getting Your Priorities Right
K’s Law – The ebook
[13] The main request is therefore rejected. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2086/11 – More Mean Misery
K’s Law – The ebook
T 2086/11 – More Mean Misery 10 Apr 2013
This is an appeal against the refusal of the application under consideration by the Examining Division, which had found the claims on file to lack clarity. Claim 1 before the Board read: 1. An aluminum flake pigment characterized in that the mean particle size of aluminum flake particles contained in said aluminum flake pigment is in the range of 3 to 20 µm and among the aluminum flake particles contained in said aluminum flake pigment, the aluminum flake particles having major axes (D) of not more than 10 µm have a mean aspect ratio in the range of 8 to 20, calculated from individual aspect ratios (D/thickness of each particle) of at least 50 aluminum flake particles having major axes (D) of not more than 10 µm. (my emphasis) The Board confirmed that this claim was not clear: [1.1.1] It is established jurisprudence of the Boards of Appeal of the EPO that, in order to ensure legal certainty, a claim must clearly define the matter for which protection is sought in terms of the technical features of the invention; the clarity of the technical features contained in the claim thus serves the purpose of ensuring that the public is not left in any doubt as to which subject-matter is covered by a particular claim and which is not (see Case Law, 6th edition, 2010, II.B.1.1.1, first two full paragraphs on page 253 as well as T 728/98 [3.1]). [1.1.2] The parameter “mean aspect ratio”, contained in the wording of claim 1, represents, in the present case, the mean of the individual aspect ratios, defined as the ratio of the major axis to thickness, of 50 aluminium flake particles having major axes of not more than 10 µm The method for measuring said mean aspect ratio is described in paragraphs 61 to 63 of the application. According to this method of measurement a paint plate containing aluminium flake pigments, obtained as described in paragraphs 54 to 56, is cut into 1.5 cm square in order to prepare an observation sample. The aluminium flake particles are then observed in a section of the paint film of the sample by means of a digital HD microscope, the individual aspect ratios of 50 flake particles observed on the screen are measured and the mean of these 50 individual aspect ratios is calculated. It is undisputed that the observed sample, which contains flake particles with a mean diameter of 3 to 20 µm, can contain thousands of aluminium flake particles having a major axis of not more than 10 µm. It is also undisputed that the measurement contains necessarily an error (as remarked in paragraph 63 of the application itself) since the flake particles are observed on a screen and the observation of the major axis and thickness of the two-dimensional image of the individual particles depends on their orientation in the observed plate; therefore, it is not possible for an operator to assess with certainty if the observed particle is really showing its major axis and thickness or not. As explained by the Appellant and in the application (paragraph 63), the measurement has been repeated 50 times by taking 50 different particles in order to reduce the experimental error. However, since the investigated sample contains thousands of particles having a major axis of not more than 10 µm and the method described in the application does not give any precise indication upon how to select such 50 particles, one operator, by selecting at random one group of 50 particles, would measure perhaps a mean aspect ratio according to claim 1 whilst another operator, by selecting for the same sample a different group of 50 particles, could find a value of mean aspect ratio outside the claim. The Board remarks also that claim 1 requires a mean diameter for all aluminium flake particles of from 3 to 20 µm, i.e. that 50% of the particles are above the mean diameter and 50% below, but it does not contain any further requirement with regard to the homogeneity of the overall particle size distribution or of the particle thickness. Hence, an observed sample could contain, for example, 1000 particles with a size below 10 µm but with very different thickness.
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T 2086/11 – More Mean Misery
K’s Law – The ebook
Therefore, the average aspect ratio measured on a random selected group of only 50 particles, which would represent 2% of 1000 particles, cannot represent anyway a statistically significant indication of the real mean aspect ratio of the total group of particles contained in the tested flake pigment. Therefore, the parameter chosen in claim 1 is by itself insufficient to characterize the claimed product in a reliable way so that a skilled person would know if the product tested falls or not within the extent of the claim. The Board thus concludes that the parameter “mean aspect ratio” is unclear and that claim 1 does not comply with the requirements of A 84 EPC 1973. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 71/09 – Colours Of The Vine
K’s Law – The ebook
T 71/09 – Colours Of The Vine 9 Apr 2013
The present decision reminds us that whenever an opponent invokes its own prior public use, the applicable standard of proof is very strict. *** Translation of the French original *** [5] The [opponent] has invoked a prior public use that is said to destroy both the novelty of and the inventive step involved in the claimed subject-matter. This prior use belongs to its own activities because the underlying facts concern the sale of the “Weinlaub 6-89” product by the [opponent]. [5.1] According to the established case law of the Boards of appeal, a finding that a use forms part of the state of the art for the purpose of A 54(2) should only be made if the available evidence, when subjected to a strict and careful evaluation, allows to establish that it has occurred (T 750/94 [4]). Consequently, before it can be asserted that a use is part of the state of the art, the Board has to ascertain that the evidence on file allows to establish with a degree of certainty that is close to absolute conviction – or, in other words, beyond all reasonable doubt – that this prior use has indeed occurred before the priority date of the impugned patent (T 97/94 [5.1]). [5.2] The alleged prior use consists in the marketing of the “Weinlaub 6-89” product before the priority date of the patent-in-suit. This product is found in a catalogue dated May 1996 (page 8 of document V1). The product bears the reference 46364 and is not associated to a production batch (lot de fabrication).
[5.3] The [opponent] asserts that the product proposed in the catalogue corresponds to the production batch of October 26, 1995, which is mentioned in document V3 dated November 2, 1995.
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T 71/09 – Colours Of The Vine
K’s Law – The ebook
This document provides details on a series of compounds of the “Igora Soft line extension” product line, which includes the product “Weinlaub” of nuance 6-89 the composition of which is referred to by number 99185 and its cream formulation by number 75855. According to this document, the product contains a blend of powders of colour AB as well as a blend of powder of colour C, both of which are simply identified by the same number 11008. Consequently, even considering that the production batch disclosed in document V3 has indeed been proposed for sale by means of catalogue V1, document V3 alone does not establish which are the oxidation colorants present in the product “Weinlaub” of nuance 6-89 because the colorants used for the preparation of the product are codified, i.e. via a colour blend 99185 or by a blend of powders of colour AB and C. The [opponent] refers to a production batch of coloured powder bearing the number 199185 and dated November 10, 1995 (document V5).
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T 71/09 – Colours Of The Vine
K’s Law – The ebook
This blend of coloured powder has been produced after the “Weinlaub 6-89” product according to document V3 had been manufactured (2 November 1995). Thus the colour blend of document V5 could not have been used for the preparation of the production batch of the “Weinlaub 6-89” product according to document V3. Document V4 concerns a production batch of the product “Igora Soft 6-89” dated February 5, 1998, which is later than the catalogue V1 dated May 1996. As a consequence, it cannot establish the composition of the product “Weinlaub” of nuance 6-89 as proposed in the catalogue of May 1996. The [opponent] has tried to support the public prior use by asserting that all the compositions of the blends of colours referred to by the same number are identical and that, therefore, a composition identical to the one disclosed in document V5 had been used for the manufacture of the “Weinlaub 6-89” product. According to the established case law of the Boards of appeal of the EPO, each party to the proceedings bears the burden of proof for the facts it asserts; if a fact that is relevant to the decision is not proven, the decision is taken to the detriment of the party that was not able to administer the proof incumbent on it. In the present case the [opponent], who alone is in possession of the evidence, asserts, without providing any evidence whatsoever, that the “Weinlaub” product of nuance 6-89 referred to in catalogue V1 is the same than the one obtained in the production batch of document V3 dated November 2, 1995, and that all the recipes for the coloured power numbered 99185 have the same composition, irrespective of their manufacturing date. Moreover, document P9 – which consists of copies of packages of products of the “Igora Royal” product line – shows that the products marketed as the same nuance may have differing colorant compositions. For instance, products 1 and 2 have not the same colorant composition although they are both referred to as “Igora Royal of nuance 4-68”. As a matter of fact, the composition of product 1 comprises o-aminophenol, HC red 3, and 4amino 3-nitrophenol, whereas product 2 does not. Conversely, 4-amino-2-hydroxytoluene is only found in product 2.
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T 71/09 – Colours Of The Vine
K’s Law – The ebook
Consequently, the Board considers that the documents filed by the [opponent] are not sufficient for establishing beyond all reasonable doubt that the composition of the product “Weinlaub” of nuance 6-89 referred to in the catalogue dated May 1996 is the same as the one disclosed in documents V4 and V5. Thus the composition of the product “Weinlaub” of nuance 6-89 has not been established. Consequently, the alleged prior use has not been sufficiently proven and cannot be part of the state of the art (A 54(2)). Under these circumstances, it is not necessary to answer the question on which the parties did not agree, i.e. whether the mere fact that this product was referred to in a catalogue, without there being any proof for a sale, is equivalent to making the composition of the product available to the public. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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T 1843/11 – Whatever Order You Like
K’s Law – The ebook
T 1843/11 – Whatever Order You Like 8 Apr 2013
In this appeal against the revocation of the opposed patent the [patent proprietor] invoked several substantial procedural violations: Wet tensile strength [5.1] The opposed patent is directed to fibrous nonwoven web materials to be used as premoistened wipes. These web materials are characterised by inter alia a basis weight in the range of about 30 to about 90 gsm and “a wet tensile strength (for 55 gsm basis weight) in the machine direction of at least about 160 gms/25 mm” (claim 1). Due to this wet tensile strength, the web material’s serviceability and resistance to sheet material breakage during manufacturing operations, as well as its handling on automated equipment, is improved and the finished material is able to resist tearing or puncturing during dispensing and use […]. [5.2] The Opposition Division (OD) revoked the patent for lack of sufficiency of disclosure as the skilled person was considered not to know how to determine the parameter “wet tensile strength (for 55 gsm basis weight)” in claim 1 and thus was not able to tell whether he was working within the forbidden area of the claims or not. [5.3] In the statement of grounds of appeal […], the proprietor […] complained that a substantial procedural violation had been committed by the OD as its decision neither acknowledged nor gave any reasons as to the following argument (in the following: “wet tensile strength argument”): “...the skilled person did know whether he or she was working within the forbidden area of the claims because the skilled person simply had to prepare a sheet of basis weight 55 gsm for a given composition and measure the wet tensile strength. If the wet tensile strength of this particular sheet composition satisfied the criteria in claim 1, then a sheet having any basis weight within the claimed range for this specific sheet composition must fall within the scope of claim 1.” [5.4] In the following, it will be examined whether the [patent proprietor’s] complaint is justified. In this respect, it has first to be decided whether it is credible that the wet tensile strength argument was indeed made by the [patent proprietor] during the first instance opposition proceedings. [5.4.1] The [patent proprietor] had complained in its letter of 15 August 2011, i.e. after issuance of the OD’s decision and prior to the present appeal, that despite the above wet tensile strength argument having been made during the oral proceedings (OPs), it had been omitted from the OD’s decision and the minutes. The [patent proprietor] requested accordingly that the minutes be corrected. [5.4.2] The OD refused this request as follows: “The Proprietor’s request for correction of the minutes of the OPs which took place on the 24 th May 2011 is rejected. The OD considers that the requirements of R 124(1) of those containing the essentials of the OPs and the relevant statements made by the parties are fulfilled.” This statement is not responsive to the [patent proprietor’s] complaint and in particular does not dispute in any way that the wet tensile strength argument was made during the OPs. [5.4.3] For its part, the [opponent] has not, at any time during the opposition or appeal proceedings, disputed that the wet tensile strength argument was made during the OPs before the OD. [5.4.4] Finally, apart from having been made during the OPs, the wet tensile strength argument in fact was also made during the written opposition proceedings, namely in the [patent proprietor’s] letter of 21 April 2011 […]. More particularly, in this letter, the [patent proprietor] argued as follows: “In any case, to establish whether or not a nonwoven web material falls within the scope of claim 1 the skilled person only has to take the fibrous composition of its web and prepare a similar web material with a basis weight of 55 gsm and then measure its wet tensile strength.
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T 1843/11 – Whatever Order You Like
K’s Law – The ebook
This process involves no inventive skill and does not represent an undue burden on the skilled person.” [5.4.5] In view of the above, it is credible to the board that the [patent proprietor’s] wet tensile strength argument was advanced twice during the opposition proceedings, namely in the written proceedings (letter of 21 April 2011) and then again during the OPs. [5.5] In view of the above, it has to be examined whether the OD’s decision is indeed silent about the [patent proprietor’s] wet tensile strength argument. The only argument of the [patent proprietor] addressed in the OD’s decision is the argument that a linear relationship between the basis weight and the wet tensile strength exists such that with the value for e.g. a 30 gsm basis weight, the value for a 55 gsm basis weight can be obtained by linear extrapolation […]. This argument is not related to the [patent proprietor’s] wet tensile strength argument. More particularly, while the argument dealt with by the OD implies that the wet tensile strength at a basis weight of 55 gsm can be obtained mathematically by a linear extrapolation, the [patent proprietor’s] wet tensile strength argument in fact meant that a sample with a basis weight of 55 gsm must actually be prepared in order to obtain this wet tensile strength. Hence, despite the wet tensile strength argument having been raised in the written and oral opposition proceedings, the OD did not address it at all in its decision. [5.6] It remains to be decided whether this constituted a substantial procedural violation. [5.6.1] According to R 111(2), decisions of the EPO which are open to appeal shall be reasoned. Although the OD is not required to address each and every argument of a party (R 19/10 [6.2] and R 17/11 [4]), the important question is whether the party concerned can objectively understand whether the decision was justified or not. In this respect, the decision should contain at least some motivation on crucial points of dispute, in order to give the party concerned a fair idea of why its submissions were not considered convincing and to enable it to base its grounds of appeal on relevant issues (T 70/02 [7]). The points to be addressed are in particular arguments which may militate against or cast doubt on the decision in question (T 246/08 [2.2]). [5.6.2] As will be seen, the present decision of the board acknowledges sufficiency of disclosure on the basis of the [patent proprietor’s] wet tensile strength argument […]. This argument is thus clearly crucial to the point decided upon by the OD. [5.6.3] The fact that no reasons were given in the decision of the OD why the [patent proprietor’s] wet tensile strength argument was not an answer to the objection under A 83 therefore amounts to a substantial procedural violation. [5.6.4] The [opponent] argued in this respect that the [patent proprietor] was given ample opportunity to make submissions as regards sufficiency of disclosure in writing before the OPs and that the [patent proprietor] made additional submissions on this point during the OPs itself. The decision was therefore not based on a ground or evidence on which the [patent proprietor] had not had an opportunity to present its comments, and there was therefore no violation of A 113(1). However, as stated in T 763/04 [4.4], “A 113(1) is not a formal provision, but rather one of substance. Hence it is not sufficient to observe A 113(1) merely formally by granting the applicant the procedural possibility for presenting comments, as this was the case here. This procedural step falls short of its legislative purpose and remains a pure formality, if there is no trace in the file that such comments were indeed read and discussed on the merits, beyond a mere acknowledgement of their existence. In summary, A 113(1) requires not merely that a party be given an opportunity to voice comments, but more importantly it requires that the deciding instance demonstrably hears and considers these comments.” Consequently, the fact that the [patent proprietor] in the present case was given the opportunity to (and in fact did) put forward the wet tensile strength argument is not sufficient for the requirements of A 113(1) to be met. 558 | 3398
T 1843/11 – Whatever Order You Like
K’s Law – The ebook
What is additionally important is that the OD demonstrably heard and considered this argument and, as has been set out above […], this condition has not been met in the present case. [5.7] Thus a substantial procedural violation has occurred as regards the omission of the wet tensile strength argument from the OD’s decision. Therefore, there is no need to elaborate on the [patent proprietor’s] further objection that this argument had also been omitted from the minutes of the OPs before the OD. Added matter [6.1] The [patent proprietor] argued that a further substantial procedural violation had occurred since the parties had not been given the opportunity to present arguments in respect of added subject-matter (A 100(c) and A 123(2)) during the OPs. However, A 113(1) in this respect merely requires that a decision has to be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. Since in the present case, the OD did not base its decision on added subject-matter, there was no need to offer the parties an opportunity to address this issue. The requirements of A 113(1) were thus not violated in this respect. [6.2] The [patent proprietor] additionally argued that it was highly inefficient and illogical to make a decision on sufficiency of disclosure without first making a decision on whether the requests were allowable under A 123(2) […]. The board is however not aware of any provision in the EPC (and none has been cited by the [patent proprietor]) that stipulates that the various patentability requirements or grounds of opposition have to be dealt with in a particular order in opposition proceedings. Therefore the order chosen by the OD, even if it were to be considered as inefficient or illogical, cannot amount to a substantial procedural violation. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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K’s Law – The ebook
Publish Or Perish (ctd.)
Publish Or Perish (ctd.) 6 Apr 2013
At the end of each quarter, I have a look at the number of decisions that have been published on the DG3 website. Of course, it is way too early to assert anything, but there might be a slight upward trend in the number of decisions:
Number of decisions published on the DG3 website during the first quarter, for the years 2008 to 2013 The rhythm of publication was more smooth in 2013:
Number of decisions published per day between January 1 and March 31, 2013 than it was in 2012:
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K’s Law – The ebook
Publish Or Perish (ctd.)
Number of decisions published per day between January 1 and March 31, 2012 Apropos rhythm of publication, you might be aware that there was a poll on whether this blog should have weekend (i.e. Saturday evening) posts. The number of participants was small, which probably means that most of my readers do not really care. About two thirds of those who participated thought that five posts per week were more than enough, about one third liked the weekend posts. As you might have realized, the weekend posts were somewhat different from the rest, because I never published ‘important’ decisions on weekends; I rather presented decisions dealing with interpretative issues (“Interpretative Spotlight”), reviews of old decisions (“Oldies But Goldies”) and decisions that I found to be unspectacular but still interesting. I sort of liked these posts but I understand that some readers, especially those having an e-mail subscription, were annoyed by them. In view of the outcome of the poll, I will, as a rule, not publish weekend posts any more. A reduction of the overall number of posts also allows me to take account of the (admittedly subjective) finding that, for whatever reason, there appear to be less “interesting” decisions as the overall number of decisions increases. (As a physicist, I would believe this has something to do with the law of conservation of energy.) Posts of more statistical character (such as the present one) will still be published on weekends. A last point perhaps. This week was special because there was the famous April fool’s post on fee reductions for applications filed in Latin. Very unexpectedly (to me), this post was an enormous success and immediately became the second most popular post ever. The fact that two fellow bloggers referred to it on their blogs certainly contributed to this hype. I have to admit that I am somewhat embarrassed by the craze because what was intended to be a joke for case law freaks (if I may say so) has reached people well beyond that sphere, who may or may not be able to appreciate it, which leaves me with mixed feelings. I hope that nobody was offended and, to end on a Latin note, that I have not become a persona non grata in the Isar Building. In which case I might as well pursue my career ... in Latin America. Valete!
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T 1698/08 – On Self-Depreciation
K’s Law – The ebook
T 1698/08 – On Self-Depreciation 5 Apr 2013
This appeal was filed by the opponent after its opposition had been rejected. The patent proprietor questioned the authorisation of the opponent’s previous and current representatives and the admissibility of the appeal. It requested the Board not to admit certain documents filed by the opponent, among which there was an extract from the Zurich Commercial Register. In what follows, the Board deals with the admission of this document: [1.5] Although the [patent proprietor] – until the announcement of the admissibility of the appeal – had not objected to the admission of the documents filed with the [opponent’s] letter of 27 November 2012, the day before the oral proceedings, after this announcement it objected to the admission of this extract as it states at the end “Die obenstehenden Informationen erfolgen ohne Gewähr und haben keinerlei Rechtswirkung”, which in its opinion had the consequence that the extract could not be considered as a means of evidence in the sense of A 117(1). A 117(1)(c) lists “production of documents” as a valid means of giving evidence, whereby it is to be noted that the list in A 117(1) is not exhaustive, as can be deduced from the words “shall include”. A refusal to admit such a piece of evidence can therefore not be based on A 117(1). While it has been accepted in the jurisprudence of the boards of appeal that EPO departments have some discretion in admitting evidence, e.g. where the evidence is unnecessary or of no relevance (cf. T 142/97 [2.2]), the main legal basis for refusing the admission of evidence are the provisions dealing with the late filing of evidence (A 114(2) EPC, A 12(4) and 13 RPBA). The present piece of evidence cannot be considered as having been filed late, as it was filed in direct response to arguments the [patent proprietor] had raised for the first time in its letter of 15 November 2012. There is also no other reason for the board to exercise its discretion to refuse to admit the evidence, as it can neither be said that it is irrelevant nor that it is unnecessary. A refusal to admit can in any case not be based on statements in the document with respect to the accuracy of the facts it contains. Such statements relate to the probative value of a document. Based on the principle of free evaluation of evidence (G 3/97 [5]), the board is free in assessing to what extent the information in a document is credible, whereby such statement may play a role. The board has been in a position to establish that the appeal is admissible without relying on the data in the document in question (extract from the Zurich Commercial Register), but has at the same time found no indication in the document that would cast any doubts on the finding of admissibility. It has also found no indication that would lead to doubts as to Mr Peter Geistlich’s authority to sign the authorisation for Mr Barry. This document rather confirms all the findings by the board as far as based on the evidence filed by the [patent proprietor] himself, and the board is convinced that its content is credible at least to that extent. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 790/10 – Dead End
K’s Law – The ebook
T 790/10 – Dead End 4 Apr 2013
Some time ago, we have seen T 51/08 (here) where the Board made clear that claims that have been found not to comply with the EPC in a final decision cannot be revived by means of a divisional application. The present decision confirms this approach: The principle of res judicata [1] The present board agrees with the findings regarding the principle of res judicata set out in T 51/08 [3] in the context of a parent and its divisional application. Thus subject-matter on which a final decision has been taken by a board of appeal in the parent application cannot be pursued in a divisional application. The decision in the parent application [2] The application in suit’s parent application 01 947 493.1 was refused by its respective examining division which held that that application contained subject-matter which extends beyond the content of 01 947 493.1 as filed (A 123(2)). This decision was maintained on appeal in particular with respect to the feature of the return pipe line which returns lubricant from the part to be lubricated for which there was no direct and unambiguous disclosure in the parent application 01 947 493.1 as filed (published as WO-A-01/98703) (T 1005/07 [1]). The divisional application in suit [3.1] One issue of added subject-matter concerns the feature “a return pipe line (5) configured to return lubricant from at least one part to be lubricated” of claim 1 (main and auxiliary request) with respect to European patent application 01 947 493.1, the parent of the divisional application in suit. This issue was raised by the board in the annex to the summons to oral proceedings. Main request [3.2.1] The subject-matter of claim 1 according to the main request differs from the subject-matter of claim 1 according main request in the parent application in the addition of the feature “the intermediate tank (1) being configured to condition the lubricant before recirculation” after the first mention of “an intermediate tank (1)” and in that the reference signs have been renumbered. The changes in the reference signs are not of substantive significance. The addition of the feature “the intermediate tank (1) being configured to condition the lubricant before recirculation” independent of, and does not affect, the feature of “a return pipe line (5) configured to return lubricant from at least one part to be lubricated”. Thus, insofar as the feature of a return pipe line configured to return lubricant from the part to be lubricated of claim 1 according to the main request of the present appeal is concerned, the facts are the same as to those for claim 1 according to the main request of the parent application in appeal case T 1005/07. [3.2.2] As already noted above, in appeal case T 1005/07 it was finally decided that the feature of “a return pipe line configured to return lubricant from at least one part to be lubricated” constitutes added subject-matter which extends beyond the content of European patent application 01 947 493.1 as filed. Therefore, the present board is prevented from deciding on it a second time. Furthermore, additional evidence provided by the appellant in the context of this appeal and concerning the use of return pipe lines in prior art cannot overcome a deficiency in the direct and unambiguous disclosure of such a feature as part of the invention in the parent application 01 947 493.1 as filed. [3.2.3] Thus, the issue of added subject-matter concerning the feature of a return pipe line configured to return lubricant from the part to be lubricated, as set out in T 1005/07 [1], renders the present main request unallowable under A 76(1) EPC 1973. 563 | 3398
T 790/10 – Dead End
K’s Law – The ebook
Auxiliary request [3.3] Claim 1 according to the auxiliary request differs from claim 1 of the main request in that the text “the intermediate tank (1) being configured to condition the lubricant before recirculation” has been deleted. This means that claim 1 according to the auxiliary request is, apart from changes in the reference sign numbering scheme, identical to claim 1 according to the main request decided in decision T 1005/07. Therefore, the subjectmatter of claim 1 of the auxiliary request is the same as that of claim 1 according to the main request decided in decision T 1005/07. Since a final judgement was already handed down on this subject-matter in that decision, the present board is prevented from deciding on it a second time. Again, additional evidence provided by the appellant in the context of this appeal and concerning the use of return pipe lines in prior art cannot overcome a deficiency in the direct and unambiguous disclosure of such a feature as part of the invention in the parent application as filed. Thus, the issue of added subject-matter concerning the feature of a return pipe line configured to return lubricant from the part to be lubricated, as set out in point 1 of T 1005/07, renders the present auxiliary request unallowable under A 76(1) EPC 1973. […] The appeal is dismissed. Should you wish to download the whole decision, just click here. The
file
wrapper
can
Also interesting in this context: T 2112/09.
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be
found
here.
T 228/09 – Abroad
K’s Law – The ebook
T 228/09 – Abroad 3 Apr 2013
This is another opposition appeal case where the Board of appeal refused to postpone oral proceedings (OPs). *** Translation of the French original *** [IV] By fax received on September 26, 2012, the professional representative of the appellant has requested the Board to postpone the OPs to be held on September 28, 2012, because he, the only European patent attorney of the law firm, had to travel abroad at the end of the day because of an unforeseen infringement case. [V] The Board has not granted this request, for the following reasons: Article 2 of the “Notice of the Vice-President of DG 3 of the EPO dated 16 July 2007 concerning OPs before the boards of appeal of the EPO” (OJ EPO, special edition 3/2007, 115) indicated that OPs appointed by the EPO will be cancelled and another date fixed only if the party concerned can advance serious reasons which justify the fixing of a new date. Such a request shall be accompanied by a sufficiently substantiated written statement indicating these reasons. Article 2.2 gives examples of grounds which, as a rule, are not acceptable:
a summons to OPs before the EPO or a national court notified after the summons in the relevant proceedings, excessive work pressure.
In the present case, the professional representative of the appellant […] has simply declared in his fax that an unforeseen infringement case required him to travel abroad at the end of the day and that he could not be in Munich on Friday morning. Moreover, being the sole European patent attorney of his law firm, he was unable to send somebody to replace him. The fax dated September 26 does not give any detailed information on the circumstances of the case that obliged the professional representative to travel abroad, or on the travel itself. Thus the Board is not able to examine the seriousness of the reasons invoked. Moreover, in view of Article 2.2 of the Notice mentioned above, the Board is of the opinion that an unforeseen infringement case could not, as a rule, constitute a valid reason justifying a postponement. Finally, in the absence of explanations, the Boarder is surprised by the assertion that the professional representative is the sole European patent attorney of his law firm because the letterhead of the stationery of the law firm which has been used for the fax dated September 26 refers to “Professional representatives before the EPO”.
Thus the Board has informed the parties by means of a fax sent on September 27, 2012, that the request to postpone the OPs was dismissed and that the OPs were maintained on September 28, 2012. [VI] Thus the OPs before the Board were held on September 28, 2012, in the absence of the appellant. … and the appeal was dismissed. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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K’s Law – The ebook
T 2619/11 - The Logician And The Engineer
T 2619/11 - The Logician And The Engineer 2 Apr 2013
This is another examination appeal. The claims were directed at a plasma torch for spectrochemical analysis. On August 18, 2009, the Examining Division (ED) issued a communication pursuant to A 94(3) according to which most claims lacked novelty. In response, the applicant amended the claims (February 24, 2010). A first telephone consultation took place on March 15, 2010, wherein the Examiner suggested certain further amendments of claim 1. On May 27, 2010, the applicant filed amended claims; the amendments, however, did not correspond to what the Examiner had suggested. There was a second telephone consultation on June 9, 2010. The Examiner pointed out that claim 1 on file was now novel but still not inventive. In response to this consultation the applicant filed amended claims on July 12, 2010. It is not clear from the file whether there was yet another telephone consultation, but on September 8, 2010, filed further amendments. In its letter the applicant mentions a request to delete dependent claims 2, 3, and 4 and provides arguments why the examiner should reconsider this request. Claims 1 to 4 on file read: 1. A plasma torch (40) for introducing a sample into a plasma (17) produced in the torch for spectrochemical analysis of the sample, wherein the plasma torch is for 5 aerosol samples having relatively high salt concentrations, the plasma torch including a tube (25) for conveying a flow of a gas carrying the aerosol sample to a plasma (17) produced in the torch by an electromagnetic field, the tube (25) having an inlet (31) and an outlet (39) of smaller size than the inlet, and being shaped to deliver a substantially laminar flow of the aerosol-laden gas at the outlet for penetrating the plasma, wherein the tube (25) is tapered (27) along substantially its whole length such that its cross-sectional area gradually and smoothly reduces towards its outlet along said substantially whole length, the arrangement being such that the tube (25) is resistant to obstruction by salts deposited by the aerosol sample containing relatively high salt concentrations. (my emphasis) 2. A torch (40) as claimed in claim 1 wherein the tube (25) is tapered (27) along its length for a distance that is at least five times the internal diameter of the inlet of the tube. 3. A torch (40) as claimed in claim 2 wherein the tube (25) is tapered (27) along its length for a distance that is from five to ten times the internal diameter of the inlet tube. 4. A torch (40) as claimed in any one of claims 1 to 3 wherein the tube (25) includes a parallel walled portion (29) extending to the outlet (39), wherein the tapered portion (27) of the tube smoothly blends into the parallel walled portion. There was another (fourth?!) telephone consultation on October 13, 2010, wherein the Examiner insisted on the necessity to delete claims 2 to 4 in view of the amendment of claim 1. On May 16, 2011, the Examiner called the applicant’s representative and informed him that the case was essentially suitable for issue of an intention to grant subject to deletion of claims 2 to 4. A communication pursuant to A 94(3) with a one-month time limit was sent shortly afterwards. The applicant responded by refusing to delete claims 2 to 4. The request for oral proceedings was withdrawn and an appealable decision was requested.
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K’s Law – The ebook
T 2619/11 - The Logician And The Engineer
The application was then refused on the ground of A 123(2); the applicant filed an appeal. The Board did not agree with the ED: Amendments [2.1] In the view of the board, in the present case the focus of the decision is disproportionally directed to the structure of the claims as filed to the detriment of what is really disclosed to the skilled person by the documents as filed. This led to the ED identifying three separate alternatives pertaining to the tapering of the tube disclosed in the present application, which led to assumptions upon which the subsequent reasoning is based and which the board does not consider to stand up to close scrutiny. [2.2] Firstly, as submitted by the appellant, a tube tapered along at least a substantial portion (designated (i) by the division) includes a tube tapered along substantially its whole length (designated (ii) by the division). Therefore no alternative is involved. Similarly, a tube tapered along at least a substantial portion (designated (i) by the division) includes a tube tapered over its entire length (designated (iii) by the division). [2.3] Secondly, the stance of the division with respect to the tube being tapered over its entire length (designated (iii)) is somewhat contradictory because after stating it was an alternative, the division went on to consider a reference to entire length as not to be a particular embodiment, but to be a possibility. The consequence of this shift in position is to cast doubt on the division’s own argument about subject matter extending beyond the application as filed in a combination of pending claim 1 with claim 2, 3 or 4 because all the features concerned the described embodiment variation. [2.4] In considering the reference in the passage on page 6 of the specification concerning the “entire length” feature to offer no basis for the “substantially the whole length” feature, the division can, nevertheless, be considered to reaffirm its view that “substantially its whole length” and “entire length” are alternatives. [2.5] In the present context, “entire” and “whole” have virtually the same meaning, in fact the first definition given in the online “Oxford English Dictionary” (“OED”) of “entire” is “whole; with no parts excepted”. It therefore seems the division would have had the same “no basis” difficulty with “substantially its entire”, i.e. any difference seen by the division would rest on the originally disclosed word “substantially”, to which the online OED gives one meaning as “in all essential characters or features; in essentials, to all intents and purposes, in the main”. It is quite common practice in patent claim drafting to use the word “substantially” in the sense of the OED definition in order to soften strict mathematical boundaries. [2.6] Turning to the disclosure in detail, the board is mindful that the application is directed to a technical audience rather than to a philologist or logician, for which audience an attempt to derive information from the structure of dependent claims leads to an artificial result.
A reading of the passage concerned in lines 2 to 6 on page 6 reveals that it follows a passage about a design according to Figure 3, worded as follows: “This led to the design of a tube 25 as shown in Figure 3, which has a tapered portion 27 of greatly increased length compared to section 23 of tube 10 of Fig. 2. The tube 25 is substantially constantly tapered along at least a substantial portion of its length such that its cross-sectional area gradually and smoothly reduces between its inlet 37 and its outlet 39 along said at least a substantial portion of its length. Tube 25 includes a narrow parallel sided portion 29 similar to portion 22 of tube 10 of Fig. 2.” the page 6 passage itself amounting to one sentence, which is worded as follows: “It is probable, but not yet experimentally verified, that the tapered portion 27 could extend over the entire length of tube 25, the taper at the outlet end 39 approximating the narrow 567 | 3398
K’s Law – The ebook
T 2619/11 - The Logician And The Engineer
parallel-sided portion 29, such that the flow of sample aerosol laden gas within tube 25 at outlet 39 is substantially laminar.” [2.7] What is striking about this sentence is that it uses the definite article in referring to “the tune (sic) 25” and “the tapered portion 27” and uses the verb form “could extend”. This tells the skilled person directly and unambiguously that starting from the length shown for the tube 27 in Figure 3, the tapered portion could extend over the entire length of the tube, i.e. fully consistent with “at least a substantial portion”. This can be contrasted with the embodiment of Figure 3 as opposed to that of prior art Figure 2, where different reference numerals are used for corresponding parts (25 instead of 10, 27 instead of 23 and 29 instead of 22), and where, moreover, the indefinite article is first used with items 25, 27 and 29. A variation of and not an alternative to the items of embodiment described in relation to Figure 3 is therefore directly and unambiguously described in relation to “entire length”. Moreover, the sentence also makes clear that the parallel sided portion is approximated at the outlet end for laminar flow, in other words in view of the approximately parallel sides, the “taper” tends away from being a taper at the end. [2.8] What is directly and unambiguously disclosed to the skilled person is thus that the tapered portion of the tube with the features of Figure 3 could extend over the entire length of the tube, there being an approximated parallel wall portion thereof at the outlet end. In the view of the board, this tallies with the feature of originally filed claim 6 pertaining to tapering of the tube along substantially its whole length, just as the skilled person would understand it and in accordance with the OED definition mentioned in point [2.5] above. [2.9] Similarly in relation to claims 2 and 3, since “substantially the whole length” is included in “at least a substantial portion” and not an alternative thereto, and because “over its entire length” is a variation of a described embodiment, the subject matter of these claims shows no inconsistency in relation either to the original claims or the statement of invention, nor did the ED object against the description of Figure 3 as such in this context. [2.10] In view of the foregoing, the board does not consider the assumptions made by the ED correct and therefore concluded that present claims 2, 3 and 4 do not include subject matter extending beyond the disclosure of the application documents as filed. So far as the additional comments of the ED in relation to claims 5 and 6 are concerned, a corresponding argument applies. [2.11] Since there is a disclosure of “tapered over its entire length” directly and unambiguously referring to a variation of but not alternative to the embodiment of Figure 3 as set out in section [2.7] above, contrary to the view of the ED, the board has not identified any reason in the content of decision T 1150/00 which could affect its view. A similar situation exists in relation to decisions T 296/96, T 147/99 and T 172/02. Further Procedure [3.1] The position of the ED was that the case was essentially suitable for issue of an intention to grant subject to deletion of claims 2 to 4. The board has, however, reached the conclusion that it is not necessary to delete claims 2 to 4, thus removing the sole objection of the ED. As editorial improvements to the description are not sufficient reason to depart from the position of the ED and the board sees no other reason thus to do, other than its disapproval of the necessity of the deletion, the appeal succeeds. Consequently, the oral proceedings requested on an auxiliary basis are not necessary. […] The case is remitted to the department of first instance with the order to grant a patent […]. Should you wish to download the whole decision, just click here. The file wrapper can be found here. NB: This decision was also commented on Le blog du droit européen des brevets (here).
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J 43/11 – When In Rome, Do As The Romans Did
K’s Law – The ebook
J 43/11 – When In Rome, Do As The Romans Did 1 Apr 2013
The present case is an appeal against a decision of the Receiving Section (RS) that there was a loss of rights after the applicant had paid only 80% of the filing fee. The decision is interesting because the Board adopts a somewhat liberal interpretation of R 6. There are also some noteworthy obiter dicta. The applicant, a German monk living in Rome, had filed an application for a wake-up device on July 9, 2010. The filing was in Latin; a German translation was filed in due time. The applicant paid only 80% of the filing fee and referred to R 6(3). On July 16, 2010, the RS informed the applicant that the filing fee had not been paid in full and that the requirements of R 6(3) were not fulfilled. The applicant was informed that the missing amount could still be paid until August 9; otherwise, the application would be deemed withdrawn. In a letter dated July 20, 2010, the applicant explained that he was entitled to a fee reduction under R 6(3). He also declared that he “categorically excluded” the payment of the allegedly missing amount. On December 21, 2010, the RS sent a communication of loss of rights under R 112(1). The representative of the applicant then requested an appealable decision under R 112(2). This decision was taken on March 24, 2011. The applicant filed an appeal.
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J 43/11 – When In Rome, Do As The Romans Did
K’s Law – The ebook
He explained that Latin was indeed an official language in Italy. This could already be seen from the fact that he regularly celebrated offices (“Hochämter”) in Latin in the Contarelli Chapel in Rome. The narrow interpretation of the expression “official language” (Amtssprache) by the RS was inadmissible and had no legal basis in the EPC. The applicant cited a document stating that Latin was the official language of the catholic Church and and pointed out that in a profoundly catholic (erzkatholisch) country such as Italy Latin should be considered to be one of the official languages. In this context, the applicant also explained that his broad interpretation of the expression “official language” was possible in all three official languages of the EPC. Finally, the applicant referred to reports on the imminent accession of the Vatican to the EPC and pointed out that it would not be equitable to deprive an applicant who had his place of business in the Vatican, of the advantages related to the use of its official language. He also cited a press release of the EPO wherein the Office expressed the wish to have members of the Sanctum Officium appointed as Examiners in the near future. Here is the verdict of the Legal Board of appeal: *** Translation of the German original *** [2] The interpretation of R 6(3) together with A 14(4) is decisive for the present appeal. [3] A 14(4) provides that persons having their residence or principal place of business within a Contracting State having a language other than English, French or German as an official language may file documents which have to be filed within a time limit in an official language of that State. If such a person files a European patent application, then, in application of R 6(3), the filing fee shall be reduced in accordance with the Rules relating to Fees (RRF). Article 14(1) RRF provides that the reduction laid down in R 6(3) shall be 20% of the filing fee. [4] If amount due as filing fee is not paid in full within one month of filing the European patent application (R 38(1)) then the application is deemed to be withdrawn in application of A 78(2). Pursuant to Article 8 RRF the Office may, where this is considered justified, overlook any small amounts lacking without prejudice to the rights of the person making the payment. However, as stated in T 905/90 [10], this Article was designed to prevent a loss of rights “where an inadvertent error of some kind had led to a slight, small insignificant or trifling underpayment of an amount due in respect of the relevant proceedings. It was never really intended to provide a remedy where a party had deliberately paid a reduced fee, and what is more, in an amount specifically provided for by the law …” (emphasis by the Board). Thus Article 8 RRF cannot find application in the present case. [5] Therefore, what is decisive in the present case is whether the appellant was entitled to a fee reduction, i.e. whether Latin is to be considered as an official language within the meaning of Article 14(4). If it is not, then the RS was right in declaring that the application was deemed to be withdrawn. [6] The arguments invoked by the appellant […] are not persuasive, for the following reasons. [6.1] The interpretation of the expression “official language” proposed by the appellant does not resist close scrutiny. [6.1.1] The fact that the applicant celebrates offices in Latin in Italy does not result in this language being an official language within the meaning of the EPC. “Official language” designates a language of an office, whether the patent office (A 14(1)) or the offices of a Contracting State (A 14(4)). Duden’s lexicon defines “official language” (Amtssprache) as “an official language of a state, a language of legislation” as well as “a language which is accepted in international organisations and which is relevant for drafting agreements, publications etc.”. [6.1.2] The Board does not contest that Latin is the official language of the Catholic Church. However, as the Catholic Church is not a Contracting State to the EPC until further notice, this fact is completely irrelevant to the legal situation under consideration. [6.1.3] That the expression “official language” used in A 14(4) is not to be understood in a religious sense also follows from the overall context (Gesamtzusammenhang) of the EPC. 570 | 3398
J 43/11 – When In Rome, Do As The Romans Did
K’s Law – The ebook
As a matter of fact, the EPC constitutes, according to the first paragraph of its Preamble, a means for strengthening the “co-operation between the States of Europe in respect of the protection of inventions” (emphasis by the Board) and aims at obtaining “such protection … in those States by a single procedure for the grant of patents and by the establishment of certain standard rules governing patents so granted” (Preamble, second paragraph). These efforts concern the field of intellectual property, which is completely alien to the religious sphere. In its decision G 1/83 the Enlarged Board of appeal (EBA) has found that the principles of interpretation set out in The Vienna Convention on the Law of Treaties, concluded on 23 May 1969 (reprinted, in part, in OJ EPO 1984, 192) should be applied to the EPC. In particular, the EBA has explained that the Convention must be interpreted in good faith and that,( unless it is established that the Contracting States intended that a special meaning should be given to a term, the terms of the treaty shall be given their ordinary meaning in their context and in the light of the object and purpose of the EPC (point [5] of the Reasons). Therefore, it is clear that it is not admissible to refer to special meanings that may be used in the context of religious activities when interpreting certain expressions of the provisions of a Convention in respect of the protection of inventions. Thus the Board feels compelled to dismiss the interpretation of the expression “official language” in A 14(4) as “language of a religious office” because it is alien (wesensfremd) to the EPC. As a consequence, this argument of the appellant cannot succeed. [6.2] As to the accession of the Vatican to the EPC, the Board has not been officially informed although it has heard corresponding rumours. However, this question is not relevant for the decision to be taken because it has not been disputed that on the day of filing the Vatican had not been a Contracting State to the EPC. And even if it had been, this would not have altered the legal situation because the applicant has his residence in Italy and, as he admitted, did not have the nationality of the Vatican. The Board is of the opinion that A 14(4) has to be interpreted in such a way that “residence” refers to “natural persons” and “principal place of business” to “legal persons”. But even if this interpretation is incorrect, it appears to be impossible to refer to the priestly activities of the applicant on the territory of the Vatican in order to justify the existence of a place of business in the Vatican. [6.3] Thus the applicant is only entitled to a fee reduction if the application was filed in one of the official languages of the Federal Republic of Germany (in view of his German nationality) or the Italian Republic (in view of his residence) that is not an official language of the EPO. However, Latin is not an official language of Germany or Italy (see the booklet “National Law relating to the EPC” (15 th edition, pages 69 and 71). [6.4] The Board of appeal wishes to add, as an obiter dictum, that the use of former inquisitors of the Sanctum Officium could indeed be beneficial to the EPO. As interrogation specialists the members of this office have a worldwide reputation and are surpassed only by the U.S. Central Intelligence Agency (C.I.A.) and its subsidiaries in the Middle East. Thus it would be advantageous to use these competences in oral proceedings. The Legal Board of appeal would most certainly be interested in making use of those talents within the framework of the application of A 117 and in particular in hearing the parties (A 117(1)(a)), requesting information (A 117(1)(b)) and hearing witnesses (A 117(1)(d)). Moreover, the fact that these examiners have professed vows of obedience, celibacy and poverty has to be welcomed in view of the plans of the EPO to increase its productivity while reducing costs. However, this does not alter the fact that the question of the accession of the Vatican to the EPC and the advantages this might bring to the EPO is irrelevant to the present appeal. [7] Although the arguments of the appellant have to be dismissed, the Board has come to the conclusion that it is equitable to grant a fee reduction in the present case, for the following reasons. [7.1] Latin may well be a “dead” language, but it has lived on in the so-called Romance languages, and in particular in the Italian language. Thus it is not absurd to consider Latin as “Ancient Italian” (“Altitalienisch”) very much like the language of the small city states of ancient Greece is referred to as “Ancient Greek” (“Altgriechisch”) or the language of the Torah as “Ancient Hebrew” (“Althebräisch”).
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J 43/11 – When In Rome, Do As The Romans Did
K’s Law – The ebook
[7.2] The EPC does not distinguish between different forms of a language as they may arise in the course of time, nor would this be appropriate. The reader of examination reports issued by the EPO will see that some Examiners use classical French which Bossuet or Chateaubriand would have approved of, whereas others have a vocabulary and knowledge of grammar corresponding to the Paris suburbs of the 21 st century. The same observation can be made in regard of the case law of the Boards of appeal: some decisions, in particular of the Legal Board of appeal, are drafted in medieval German without anybody seeing the need for a translation. [7.3] An applicant having its residence or principal place of business in Greece and who filed an application in Ancient Greek would not encounter any difficulty when requesting a reduction of the filing fee. In case the present efforts to make Israel accede to the EPC were successful, a person having its residence or principal place of business in the Holy Land would have the same opportunity, all the more as the Office would not be able to distinguish an application filed in Ivrit (Modern Hebrew) from an application filed in Ancient Hebrew. [7.4] Thus the Board finds it equitable for an applicant having its residence or principal place of business in Italy and who files an application in “Ancient Italian”, i.e. in Latin, to be offered the possibility of a fee reduction. [7.5] The question of whether an applicant having its residence or principal place of business in a country the official language of which is another Romance language would also be entitled to a fee reduction when filing in Latin does not have to be answered here. [7.6] Finally, the Board would like to point out – even though this is not decisive here – that Latin has a special status within the language system of the EPO. This can be seen in particular in the case law of the Boards of appeal, which frequently cite Latin maxims without feeling compelled to offer translations. The person familiar with the jurisprudence of the Boards of appeal may have the impression, and rightfully so, that Latin, although not cited among the official languages in A 14(1) is something like an “unofficial official language” and that there are unwritten rules governing its use. [8] In view of the above arguments the Board comes to the conclusion that the applicant was entitled to a fee reduction within the meaning of R 6(3). Thus the decision of the RS is to be set aside and the case is to be remitted to the RS for further prosecution. NB: The Board dismissed the request for reimbursement of the appeal fee. Should you wish to download the whole decision (in German), just click here. Unfortunately, as the decision has been anonymised, I cannot provide a link to the file wrapper. Addendum of April 2: This post is not to be taken seriously (see the date)
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T 712/10 – Diapers, Dots, And Dreadful Draps
K’s Law – The ebook
T 712/10 – Diapers, Dots, And Dreadful Draps 30 Mrz 2013
The decision on this appeal against the revocation of the opposed patent by the Opposition Division contains two interesting passages. Claim 1 of the main request before the Board read: A disposable absorbent article in the form of a diaper having an absorbent structure comprising an absorbent core (3) which is coated with absorbent sheets (3A, 3B) to thereby form the absorbent structure and disposed between a liquid pervious sheet (1) and a liquid impervious sheet (2), wherein the absorbent sheets (3A, 3B), laterally extend beyond the side edges of the absorbent core (3) to thereby form extended peripheral side portions in the opposite leg portions of the diaper wherein the liquid impervious sheet (2) has the shape of a rectangle with a width being larger than that of the absorbent structure and a back sheet (30), which has the shape of an hourglass, is provided so as to cover externally the liquid impervious sheet (2), wherein the liquid pervious sheet (1) has the shape of rectangle with a width being larger than that of the absorbent structure so as to laterally extend beyond the side edges of the absorbent structure with a short distance, and is fixed to the liquid impervious sheet (2), and at least one standing cuff (B) comprising a double standing sheet which has a free portion thereof standing toward the wearer’s leg by means of a stretching force of stretching members (5) in a used condition, wherein an internal side of the double standing sheet initiates at the proximal edge fixed to the side edge of the liquid pervious sheet (1) and is fixed to the liquid impervious sheet (2) along its extended peripheral side portion in the laterally outboard portion with respect to the proximal edge and the proximal edge where the internal side of the double standing sheet is fixed to the liquid pervious sheet 1, defines a base line from which each standing cuff B stands such that said free portion has a base line for standing in a side flap being outboard with respect to the side edge of said absorbent core, wherein the free portion includes a standing portion (10) which stands from the base line toward the longitudinal centerline of said article and a contacting portion (20) which folds back halfway outwardly; wherein said stretching members (5) extend in said contacting portion (20), in the vicinity of the fold and in said standing portion (10), respectively; and said standing cuff (B) stands toward said wearer’s leg by means of a stretching force of said stretching members (5) in a used condition, while the extended peripheral side portion of the absorbent sheets (3A, 3B) and the absorbent core (3) are deformed and lifted such that said side flap between said side edge of said absorbent core (3) and said base line for standing is deformed and a deep pocket space is formed in the diaper. The Board found this claim not to comply with A 123(2): [2.1] The feature of claim 1 “wherein said stretching members (5) extend in said contacting portion (20), in the vicinity of the fold and in said standing portion (10), respectively;” (specified as “feature (iii)” in the following text) results, in particular with regard to the wording “in the vicinity of the fold”, in subject-matter which does not meet the requirement of A 123(2). [2.2] Objection had been made already to this feature in the decision under appeal (point 2.1.4.3) as contravening the requirement of A 123(2).
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T 712/10 – Diapers, Dots, And Dreadful Draps
K’s Law – The ebook
[2.3] The appellant was of the view that although there was no literal disclosure of such wording, the drawings shown in Figures 1 to 3, which refer to the first and second embodiments, clearly disclosed such feature and claim 1 defined the essential features of these embodiments. In particular, it considered the black dot in the double standing sheet (in Figure 2) close to the position separating the standing portion (10) from the surface contacting portion (20) as representing the stretching member which extended in the vicinity of the fold. Additionally, paragraphs [0068] and [0076] (A-publication) should be interpreted in such a way that they confirmed this disclosure. [2.4] When scrutinizing the disclosure in the above cited Figures and paragraphs, there is no clear and unambiguous disclosure with regard to a stretching member “in the vicinity of the fold” as claimed, for the reasons given infra. [2.4.1] The wording of paragraph [0068] (A-publication) does not refer to a stretching member in the vicinity of the fold but to a plurality of stretching members as extending in the vicinity of the side edge of the surfacecontacting portion 20 and is worded as follows: “In the more preferable aspect, the stretching members 5, 5 ... extend in the vicinity of the base line for the standing portion 10, in the vicinity of the distal edge of the double standing sheet, and in the vicinity of the side edge of the surface-contacting portion 20. In addition, a plurality of stretching members 5, 5 ... preferably extend in the vicinity of the side edge of the surfacecontacting portion 20 as shown. Additionally, in order to improve the standing ability of the standing portion 10, a plurality of stretching members 5, 5... may further extend on the standing portion 10. In the Figure are shown six stretching members in total.” [2.4.2] When considering Figure 2 for the presence of such stretching members, the surface-contacting portion 20 is shown as being provided with two stretching members, one of which is positioned in the (outer or distal) side edge of the surface-contacting portion, which edge represents the upper end of the free portion when standing; and the other stretching member is positioned slightly inboard of this edge. Both stretching members are identified via the reference numeral 5. No further stretching member is shown as being located on (or within) the surface-contacting portion.
[2.4.3] In Figure 2 there are two further stretching members identified via the reference numeral 5. However, these stretching members are within the standing portion 10 of the free portion and are located at the base end and in the middle between the base end and the distal end of the standing portion, respectively. Hence, these stretching members cannot represent stretching members extending in the vicinity of the side edge of the surface-contacting portion such as set out in paragraph [0068]. [2.4.4] Additionally, there are two further numerically unreferenced black dots within the standing portion 10, one of which is close to the edge which joins the surface contacting portion 20 to the standing portion 10. However, on the one hand this black dot cannot be clearly and unambiguously identified as a stretching member because it is not indicated with the corresponding reference number, and on the other hand, it is not clear whether it is this fold which is to be considered. There are two folds possible in the double-layered standing sheet: one fold concerns the folding in relation to the surface-contacting portion, the other fold concerns the folding of the fixed portion in relation to the free portion when fitting the article. Since there is one stretching 574 | 3398
T 712/10 – Diapers, Dots, And Dreadful Draps
K’s Law – The ebook
member 5 exactly at this latter position for folding/upstanding of the cuff – at the base end –, no clear and unambiguous disclosure is present with regard to which fold is concerned. [2.4.5] The further reference to the disclosure in paragraph [0076] is also not unambiguous. This paragraph refers to the second embodiment, shown in Figure 4, which is said to differ from the first embodiment in that the stretching member is present in the vicinity of the edge where the surface-contacting portion (20) folds back halfway. Hence, this reference cannot clarify the description provided in paragraph [0068] either - on the contrary, it highlights that in the first embodiment no such stretching member should be present at that location. It may be noted also that the claim defines “stretching members” in the vicinity of the fold, whereas, even when considering Figure 2, a single stretching member (if this is the “black dot” mentioned earlier) is present on the end part of the standing portion 10 close to the joining fold. [2.5] Accordingly, the main request is not allowable under A 123(2) at least because there is no clear and unambiguous disclosure in the application as filed for the feature “wherein said stretching members (5) extend in said contacting portion (20), in the vicinity of the fold and in said standing portion (10), respectively;” in combination with the further features in claim 1 concerning the claimed embodiment. [2.6] Moreover, the features of paragraphs [0062] and [0066] of the application as filed (A-publication) which are also disclosed in combination with the embodiment which the appellant claims are omitted. These features concern in part the standing cuff which is made double by folding the inside of the standing sheet inwardly so as to be shorter than the outside and the fixation of the standing cuff in the front and back ends of the diaper body. These features are also related in particular to the functions of “volume” and “sealing” which were emphasized by the appellant as being essential for the invention. Accordingly, these features are disclosed in a functional and structural relation to the claimed embodiment whereby, via their omission, the requirement of A 123(2) is not met since an unallowable intermediate generalisation of the content of the application as filed has occurred. Hence, the main request is not allowable at least for the foregoing reasons. The appellant also requested the Board to refer the following questions to the Enlarged Board of appeal (EBA): 1. Is the drastic consequence of G 1/93 (the so-called A 123(2)/123(3) trap) still valid, although no contracting state of the EPC and no other country in the world followed that approach? 2. If a European patent as granted contains subject-matter which extends beyond the content of the application as filed and also limits the scope of protection conferred by the claims, is it possible during the opposition proceedings to maintain the patent in view of paragraphs 2 and 3 of A 123 while no rights can be derived from features that relate to said subject matter in the sense that said features must not be considered to delimit the subject matter over prior art but restrict the scope? 3. Is there a difference in answering questions 1 and 2, if an amendment which leads to the drastic consequence that a feature cannot be deleted because of A 123(3) but extends beyond application as filed has been carried out during the international phase of a PCT application which then entered the regional phase in Europe or if that amendment has been carried out during the granting proceedings before the EPO? 4. If questions 1 and 2 are answered in the negative, does there exist another possibility of escaping the so-called A 123(2)/123(3) EPC trap? The Board refused to refer the questions to the EBA: [8.1] The conditions in A 112(1) for referring a question to the EBA are either that a reference is necessary to ensure a uniform application of the law or that a point of law of fundamental importance arises. Neither of these questions is met in regard to the questions […] which the appellant requested to have referred. [8.2] Concerning the alleged non-uniform application of law, this requirement in general refers to non-uniform application of the law by the Boards of Appeal: the EBA does not have the power to ensure uniform application of the law between the Boards of Appeal and national courts. A lack of uniformity between the law as applied by the Boards of Appeal and national courts could in theory bring to the fore a point of law of fundamental importance, something which is considered in the next paragraph. As to non-uniform application of the law by the Boards of Appeal, the appellant did not in fact suggest that the principles laid down in G 1/93 have not been consistently applied by the Boards of Appeal.
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T 712/10 – Diapers, Dots, And Dreadful Draps
K’s Law – The ebook
[8.3] As to whether a point of law of fundamental importance arises, no such issue is apparent. The relevant issues have already been decided by the EBA in G 1/93 and it has not been shown that any legal or technical developments have occurred in the interim making it desirable in the public interest to have the issues reviewed again by the EBA: T 82/93. The appellant did not provide evidence that the contracting states of the EPO had not followed the principles of G 1/93 concerning the relation between A 123(2) and (3). The separate footnote solution applied in Germany does not support a trend in Europe but rather represents an isolated approach which in fact was held not allowable in G 1/93. [8.4] By question 2 it appears to the Board that the appellant asks a question which is in fact not related to the facts of the present case. The point is that the omitted features do make a technical contribution to the claimed subject matter since they concern the structures which give rise to the specific configuration of the article […]. The question is therefore not relevant because its premise (“while no rights can be derived from features that relate to said subject matter in the sense that said features must not be considered to delimit the subject matter over prior art but restrict the scope”) does not apply. [8.5] As to question 3, irrespective of when the amendments leading to such a situation were made, the requirements of A 123(2)/123(3) have to be met as set out in G 1/93. The issue of the amendments being made during the international phase of the application does therefore not alter the applicable case law. It is also noted that when entering the European regional phase, the applicant was not required to proceed with any amendments it had made in the international phase. [8.6] Thus, when addressing the four questions posed by the appellant, there is no evidence for the allegation in question 1 that no contracting state of the EPC and no other country follows the approach of the EPC. The subject-matter of question 2 does not arise in the current case. Question 3 can be answered by the present Board to the effect that an application is not restricted to an amendment made at the international phase. Finally, question 4 has already been answered in item 2 of decision G 1/93. [8.7] The request for referral of a question to the EBA is thus refused. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 196/10 – From Paris With Love
K’s Law – The ebook
T 196/10 – From Paris With Love 29 Mrz 2013
This is an appeal by the patent proprietor against the revocation of its patent by the Opposition Division. In its opposition, opponent 1 had inter alia questioned the validity of the patent because it had been filed as a divisional application at the French patent office (INPI), although A 76 required divisional applications to be filed at the EPO. The OD had endorsed this approach and had considered that the divisional did not benefit of the filing date of the parent application and, as a consequence, was lacking novelty over the parent application. The Board disagreed: *** Translation of the French original ***
Status of the application on which the patent-in-suit is based Divisional application and place of filing [1.1] A 75 EPC 1973, which applies in the present case, reads: A European patent application may be filed: (a) at the EPO at Munich, or its branch at The Hague, or (b) if the law of the Contracting State so permits, at the central industrial property office or other competent authority of that State. An application filed in this way shall have the same effect as if it had been filed on the same date at the EPO. (2) … (3) No Contracting State may provide for or allow the filing of European divisional applications with an authority referred to in paragraph (1)(b). Pursuant to A 75(3) EPC 1973 divisional applications must be filed at the EPO. The Contracting States are not entitled to allow or require divisional applications to be filed with their national authorities. If a divisional application is sent to a national authority, the latter does not have to transmit it to the EPO. However, if it does, in application of the principles of good cooperation between administrative authorities, then this application shall have as date of receipt the date on which it reaches the EPO. In other words, it is only when the EPO recieves the documents that are to constitute a divisional application that they are treated as a filing of a divisional application. Incidentally, this finding is laid down in the Guidelines for Examination in the EPO, part A, chapter IV, point 1.3.1. The travaux préparatoires for the EPC 1973 show that it was only in the course of the intergovernmental conference for establishing a European patent system in November 1971 that the decision was taken to expressly provide in the text of the EPC that divisional applications were to be filed at the EPO only and to exclude, as a consequence, filings with the national authorities (“The group, after deliberation, has chosen a solution consisting in providing that divisional applications may only be filed at the EPO and that no state may provide for or allow such filings with the central industrial property office.”) Considerations related to the examination of the parent application with respect to national provisions regarding the maintenance of secrecy (mise au secret), the transmission of the parent application and the divisional application to the EPO, and the possible legal effect of a divisional being filed with a national authority (the application and its parent application would have been deemed to be withdrawn in case they were not transmitted, A 77(5) EPC 1973) led the legislator to prohibit the filing of divisional applications with the national authorities, for the sake of clarity. See document BR/144/71 dated December 16, 1971, point 18.
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T 196/10 – From Paris With Love
K’s Law – The ebook
[1.2] In the present case, the patent application on which the patent was based has been filed, as shown by form 1001, at the INPI on March 21, 2000 (stamp on form 1001.6), and has been transmitted by the INPI to the EPO, where it was received on March 30, 2000 (stamp on box 3 of form 1000.1). The fact that the box is ticked in section 35 of form 1001 clearly indicates that the the European patent application is a divisional application; the number indicated in this section (n° 96 401 179.5) is the number of the parent application. The priority claimed in section 25 of form 1001 is the priority of the parent application. The Contracting States designated in section 32 of form 1001 are the same as those designated by the parent application. Moreover, the applicant is the same (see sections 7 to 9 of form 1001).
[1.3] Considering all these pieces of information the only objective conclusion possible is that the patent application on which the patent-in-suit is based is a divisional application which has been erroneously filed with a national authority – first mistake – and to which that authority, here the INPI, has allocated a number [as if it was] a patent application filed under A 75(1)(b) EPC 1973 […] – second mistake –, which allocation has not been expressly corrected or nullified by means of a communication of the Receiving Section (RS) – third mistake. [1.4] However, it is clear from the file that the RS, which has exclusive competence to allocate a filing date (cf. J 18/86), has, upon receipt of the European patent application, on March 30, 2000, allocated the filing date of the earlier application, i.e. June 3, 1996, to it and has indicated on the first sheet of the application as published (A1 document) that the application was a divisional application. [1.5] The Board of appeal agrees with the assertion of […] opponent 1 that the date (“21-03-2000”) indicated as filing date under the heading “Remarks” of the publication EP 1 026 438 A1 is incorrect – fourth mistake. The correct date was March 30, 2000, i.e. the date on which the divisional application was received at the EPO. However, the Board is of the opinion that this is nothing more than an erroneous date. Howally [NB: the French has “toutefin”, which appears to be a contraction of “toutefois” and “enfin”, which might be best rendered by a contraction of “however” and “finally”], it is clear from the cover sheet of the application as published that the RS has treated this application as a divisional application. Divisional application and pending earlier application – R 25 EPC 1973 [1.6] For a divisional application to be treated as such it is necessary for it to have been filed at a moment when the earlier application was still pending. The present situation is governed by R 25 EPC 1973, which reads: “R 25 EPC 1973 Provisions for European divisional applications (1) The applicant may file a divisional application relating to any pending earlier European patent application.” The communication pursuant to R 51(4) EPC 1973 for the earlier application n° 96 401 179.5 is dated March 30, 2001; the mention of the grant has been published on October 17, 2001. The transmission of the documents by the INPI has shifted the date of receipt at the EPO from March 21, 2000 (date of receipt at the INPI, stamp on form 1001.6) to March 30, 2000. Thus the earlier application was still pending on March 30, 2000, when the divisional application was received at the EPO. The Board notes that this point is not contested by […] opponent 1 […]. [1.7] Consequently, the Board can only conclude, as did the RS, that the present application satisfies the requirements of A 76(1), first sentence, EPC 1973, together with R 25(1) EPC 1973. Thus the patent application on which the patent-in-suit is based is a divisional application. It is deemed to have been filed on the date of filing of the earlier application and has the benefit of the right to priority in respect of the subject-matter that does not extend beyond the content of the earlier application as filed (A 76(1), second sentence, EPC 1973). As the patent is deemed to have been filed on the date of filing of the earlier application, that application (document D14, EP-A-0 747 796) does not form part of the state of the art for the patent-in-suit. 578 | 3398
T 196/10 – From Paris With Love
K’s Law – The ebook
In view of the above the decision of the OD has to be set aside. [1.8] Incidentally, the Board wishes to emphasise that an application that has been filed as a divisional application can be treated as such or not. If it is not treated as such, there cannot be grant proceedings. The legislator has not provided the possibility of a posteriori allocating the date of receipt of the divisional application as date of filing of a new application, cf. G 1/05 [11.1] and T 600/08 [2.3]. Even if the RS, when examining the application in view of formal requirements, or even the Examining Division, when carrying out the substantial examination, had erroneously treated the application under consideration as a divisional application and a patent had been granted, the OD is only competent for examining the validity (bien-fondé) of the grant of the European patent within the very strict framework of the grounds for opposition a restrictive list of which is provided by A 100 EPC 1973. Reimbursement of the appeal fee – R 67 EPC 1973 (applicable here) The Board of appeal is of the opinion that the decision issued by the OD is insufficiently reasoned and, therefore, does not satisfy the requirements of R 68(2) EPC 1973, which applies in the present case. The OD only cited some applicable legal provisions without taking account of all the objective facts of the present case. For instance, it has not considered the possible error on behalf of the applicant when it filed the patent application with the national authority, the context of the transmission by the INPI of the patent application under consideration as divisional application, the clear and unambiguous indications of all of the elements of form 1001 and in particular of section 35 concerning the explicit reference to the earlier application. A sufficiently reasoned decision taking account of all the facts of the case would have allowed the appellant and the Board to understand why the OD had decided not to treat the application under consideration as a divisional application. The absence of sufficient reasons as required by R 68(2) EPC 1973 constitutes a substantial procedural violation justifying – the other requirements of R 67 EPC 1973, which is applicable here, being fulfilled – that the appeal fee be reimbursed, the impugned decision set aside and the case remitted to the first instance (A 111(1) EPC 1973). Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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T 395/12 – Simply Wrong
K’s Law – The ebook
T 395/12 – Simply Wrong 28 Mrz 2013
This is an examination appeal. The statement of grounds of appeal was rather minimalist with regard to the impugned decision of the Examining Division (ED):
The following pages of the statement of grounds of appeal essentially reproduced a letter dated June 15, 2007, which had been filed during the examination proceedings. The Board found this appeal to be inadmissible: [1.1] In the present case, the applicant’s only statement that directly addresses the decision under appeal was that the ED was “wrong” […]. There is no explanation why it should have been wrong, though. [1.2] This as such is not contested by the appellant. Yet the appellant invites the board to look at the grounds of appeal as a document in its own right, without a comparison with statements previously made in examination. Both the nature of the appeal proceedings and previous case law speak against such an approach. Decisions T 213/85 and T 95/10 clarify that the appeal procedure is not a mere continuation of the examination procedure (in accordance with decisions G 10/91, G 9/92 and G 4/93, but separate therefrom. Where the applicant in the grounds of appeal repeats its arguments set out during the examination phase without taking into account the decision under appeal, it mistakes the function of the boards of appeal, as the boards of appeal are not a second go of the examination procedure, but are meant to review decisions made by the EDs. Such a review is carried out based on the objections raised against the decision in the grounds of appeal. The grounds of appeal must therefore by definition relate to the reasons on which the decision under appeal is based and cannot be looked at in isolation from the appealed decision and the procedure leading to such decision. According to the decision T 1045/02 [1], “grounds sufficient to make an appeal admissible must therefore at least implicitly deal with the fundamental reasons in the decision under appeal and must explain in an objective manner why the decision under appeal is considered wrong.” (translation by the board). [1.3] As a fallback position, the appellant has argued that the case at issue cannot be likened to cases where the grounds of appeal merely made reference to statements presented in earlier phases of the procedure. It is true that the inadmissibility of an appeal in decisions such as T 220/83 and T 1045/02 was also based on the fact that a mere reference was made to previous statements. The grounds of appeal in this case do not merely make reference to the letter of 15 June 2007, but cite this letter almost in its entirety. Rather than “grounds by reference”, one could call this “grounds by cut-and-paste”, and the board fails to see how this mechanical exercise adds more to the case than a phrase such as “reference is made to the letter of 15 June 2007 in its entirety” would have done. It has not been argued that the cited passages represent a creative selection that would give these statements a new meaning and could thereby be regarded as a response to the decision under appeal. As far as the arguments on A 56 are concerned, there is an almost literal identity between the grounds of appeal and the letter of 15 June 2007. Decision T 65/96 does not help the appellant’s position, because in 580 | 3398
T 395/12 – Simply Wrong
K’s Law – The ebook
addition to the reference to previous statements, three specific points made in the decision under appeal were contested. [1.4] A further argument advanced by the appellant rests upon a passage in the decision T 644/97 [1] according to which an appellant cannot be compelled to come up with new arguments (“Indeed, a requirement that new arguments must be submitted to render an appeal admissible would imply that the appealed decision, as issued, had necessarily been correct”). In this decision, the board based the admissibility of the appeal on a number of reasons. Apart from the one mentioned above, the admissibility was for the first time contested in oral proceedings, and “a relevant objection [had] already [been] substantiated in the Statement of Grounds of Appeal” […]. Apart from that, the fact that the appellant is not required to come up with new arguments does not mean that the decision under appeal should not be addressed at all. [1.5] Decision T 934/02 [2] found an appeal to be sufficiently substantiated even in the absence of arguments dealing with the contested decision if two criteria were met: “(i) The subject of the proceedings has changed e.g. due to the filing of a new set of amended claims together with the statement of grounds, and (ii) The reasons for the decision are no longer relevant in view of the change in the subject of the proceedings, (cf. in particular J xx/87 [1.4] and T 105/87).” This rather broad statement is qualified in two further decisions. According to decision T 1045/02, merely filing new claims makes the appeal admissible only in exceptional cases, and according to decision T 1276/05, new claims filed in lieu of any other grounds must be accompanied by an explanation why these requests overcome the objections raised in the decision under appeal, unless this is obvious. In the present case, six auxiliary requests with new claims have been filed with the grounds of appeal. According to the appellant, this was sufficient to change the case and make the appeal admissible. [1.6] All six auxiliary requests are combinations of independent and dependent claims, and all these combinations were addressed in the appealed decision and held to lack inventive step. Thus, the decision under appeal still remains relevant for these auxiliary requests. In addition, while the appellant has indicated the basis for the new auxiliary requests, there is no explanation why the ED was wrong in considering these combinations not inventive. The appeal thus does not become admissible by the filing of the auxiliary requests. [1.7] Finally, the appeal must also be considered inadmissible because the grounds fail to deal with all the reasons the ED has advanced for refusing the application. According to the decisions T 213/85 [4] and T 1045/02, the grounds of appeal must deal with all those reasons on which the decision under appeal is based: “According to the Board, the minimum requirements for an admissible appeal have not been met if only one of several reasons for refusal are addressed ...” (T 1045/02 [4]; translation by the board). This position is consistent with the requirement of Article 12(2) RPBA according to which “The statement of grounds of appeal and the reply shall contain a party’s complete case”. In the case at issue, the summons of 1 June 2011 which served as the reasoning for the decision according to the state of the file, raised new objections with respect to A 84 for the newly added passages in claim 1 […]. Since these objections were not pertinent and therefore not raised for the previous versions of the claim, the letter of 15 June 2007 and the grounds of appeal that are an almost verbatim copy of this letter do not deal with this objection. As the decision under appeal held that claims 1 and 10 were not clear, A 84 must be considered as one of the reasons the refusal of the application is based upon. Already the failure to address this ground of refusal makes the appeal insufficiently reasoned and inadmissible. [1.8] Summarising, the grounds of appeal consist of an almost verbatim copy of the appellant’s letter of 15 June 2007 that predates the summons and cannot take into account the division’s subsequent arguments and objections to the amended claims, be it for grounds that have already been raised (lack of inventive step), be it for grounds that became relevant only for the amended claims (lack of clarity). Nor can the above letter furnish arguments to the ED’s comments regarding the amended claims filed with that letter. The auxiliary requests filed with the grounds of appeal are combinations of dependent and independent claims, all of which were addressed in the decision under appeal and can therefore not be considered to be a change of case vis-à-vis the decision under appeal. The appeal is therefore insufficiently reasoned and does not comply with the requirements of A 108. It must therefore be dismissed as inadmissible. 581 | 3398
T 395/12 – Simply Wrong
K’s Law – The ebook
So make sure your statement of grounds of appeal contains at least a reasoned statement or two why the impugned decision was wrong. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2254/11 – Insufficient Funds
K’s Law – The ebook
T 2254/11 – Insufficient Funds 27 Mrz 2013
Can a wannabe-opponent who did not pay the opposition fee in due time, because of its failure to pay the administrative fee under Article 6 ADA in due time, be re-established in the time limit for paying the fee? That is the question the Board had to answer in the present case. The problem arose because the opposition fee was to be paid from the deposit account of the ‘opponent’, but the account was not sufficiently funded (similarities to a recent D2 paper are merely fortuitous). The debit order (705 €) arrived on November 9, 2010, one day before the end of the 9-month time limit for filing an opposition. On November 16 the EPO invited the opponent to replenish its account and to file a debit order for the corresponding administrative fee (211.5 €). The opponent omitted to pay this fee, which triggered a notification of loss or rights under R 112(1). The opponent objected to this finding (invoking Article 7 RRF) and filed auxiliary requests for further processing and for re-establishment (why choose when there are so many wonderful remedies, let the EPO pick whatever they like!). The Opposition Division (OD) confirmed the loss of rights, explained that further processing was not available and dismissed the request for re-establishment. The opponent then filed an appeal. When the Board expressed its provisional opinion that the request could not be granted, the appellant pointed out that all three requirements established by the EBA in G 1/86 were fulfilled: (1) when A 122 was drafted, there were no deposit accounts and the corresponding provisions did not exist yet; (2) the patent proprietor had been informed that an opposition had been filed; (3) the strict standards that apply to a missing statement of grounds of appeal should not be applied to the payment of a penalty (Säumnisgebühr). Here is what the Board had to say: *** Translation of the German original *** [3] Even the appellant admits that the possibility for an opponent to request re-establishment in view of an opposition fee that has been paid after the expiration of the time limit cannot be derived from A 122. However, it refers to decision G 1/86 where the Enlarged Board (EBA) has provided a broad interpretation of the wording of A 122 [allowing] an opponent who has missed the time for filing the statement of grounds of appeal [to request re-establishment] (cf. the communication of the EPO in OJ EPO 2003, 419). Having considered the history and the purpose of the provision, the EBA has come to the conclusion that re-establishment could be envisaged when the time limit was not a time limit for making proceedings pending (Frist zur Anhängigmachung) but for pursuing them (time limit for filing the statement of grounds of appeal). [4] The case G 1/86 to which the appellant has referred concerns the possibility of re-establishment into the time limit for filing the statement of grounds of appeal in inter partes proceedings before the Board of appeal, which are similar to court proceedings. Based on the principle of equal treatment that applies in this case, G 1/86 had decided that an interpretation of A 122 contra legem was necessary. Decision T 702/89 has declined to extend these principles to the time limit for filing an opposition, for the following reasons: “[3] Concerning the request for re-establishment of rights [3.1] The requirements relating to admissibility of a request under A 122 filed by the opponent were set out in part in above-mentioned decision G 1/86 of the EBA. The Board shares the Appellant’s opinion that this decision represented a step forward as far as the opponent’s rights were concerned in that it enabled him to benefit from the provisions of A 122 in the event of late filing of the statement of grounds of appeal, whereas previously this would appear to have been limited to the applicant and patent proprietor.
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T 2254/11 – Insufficient Funds
K’s Law – The ebook
However, the EBA’s reasons for this decision were based on an analysis of the differences between the rights which can legitimately be invoked by the opponent and the applicant or patent proprietor, depending on whether the legal process has begun or not (cf. point [9] of the decision). This process begins in appeal proceedings when the appeal has been filed and the appropriate fee paid (cf. point [8], second sub-paragraph). For the same reasons as those given by the EBA, the present Board maintains that, in accordance with A 99(1), the legal process begins in opposition proceedings when the notice of opposition is filed and the appropriate fee is paid. Continuing with its analysis, the EBA decided that, since the legal process had given rise to the appeal, the opponent should be granted the same rights under A 122 as the applicant or patent proprietor in respect of the filing of the statement of grounds of appeal and the other time limits provided for in the appeal procedure, because failure to observe the procedural time limits may involve the opponent too in a loss of rights (cf. point [10] of the Reasons). On the other hand, on the question of time limits connected with the initiation of the legal process, the EBA pointed out that, in the course of the preparatory work on the EPC, a majority of the Working Party which had looked into the scope of re-establishment of rights had considered that re-establishment should not apply to the opponent because he had other means of availing himself of his rights, in particular by bringing an action for revocation before the national courts. Clearly, under similar circumstances where it was not possible to observe the time limits connected with the initiation of the legal process, an applicant or patent proprietor wishing to appeal against a decision to refuse him a patent or to revoke it would irrevocably have lost his rights were re-establishment not possible. It is true that in the above-mentioned decision the matter was only referred to the EBA once the statement of grounds of appeal had been filed. This naturally prompted it to base its reply on an analysis of the circumstances specific to the appeal proceedings (cf. inter alia points [5] to [11] of the Reasons). However, when the ad hoc Working Party held that the opponent should not be entitled to have his rights re-established because he had other means of availing himself of those rights, it did not intend such exclusion to apply only to the specific case of non-observance of the time limits for appeal but to all cases of failure to observe time limits before the EPO. The same generalisation is accordingly found in A 122, which does not apply only to appeal proceedings. [3.2] Consequently, the request for re-establishment of rights by the opponent, who has failed to observe the nine-month time limit under A 99(1) for filing the notice of opposition and paying the appropriate fee, must be rejected as inadmissible, notwithstanding any arguments put forward to explain the reasons for not complying with the time limit, which are a matter for consideration in connection with an assessment of the merits and not the admissibility of the request.” [5] The appellant now submits that the considerations that have led the EBA to a broader reading of A 122(1) were fulfilled in the present case […]. However, decision G 1/86 [6] expressly states that “the wording of A 122(1), the historical documentation relating to the Convention and a comparison of the national laws of Members States suggest that opponents may not have their rights re-established in respect of time limits of appeals”. The further considerations of the EBA exclusively concern the particularities of the time limit for filing the statement of grounds of appeal, which the EBA distinguishes from the time limit for filing the appeal (and the corresponding payment of the appeal fee). Thus the decision is based on a situation “where the appeal has already been filed, i.e. […] the opponent has validly made known his intention of having the OD’s decision set aside” (point [9] of the reasons). Therefore, [the EBA] considered a case where “the legal process has already begun” as stated in decision T 702/89. [6] This is not the case here, because there is one single (nine-month) time limit in opposition proceedings, within which the opposition fee has to be paid and the notice of opposition has to be filed. Therefore, in contrast to the time limit for filing the statement of grounds of appeal, and in a way that is analogous to the time limit for filing an appeal, the relevant question is whether a legally valid opposition has been filed at all. In this context, decision T 702/89 unambiguously states “that, in accordance with A 99(1), the legal process begins in opposition proceedings when the notice of opposition is filed and the appropriate fee is paid” […].
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T 2254/11 – Insufficient Funds
K’s Law – The ebook
Thus the situation underlying G 1/86 is different from the present situation in several respects. First, there already was a validly filed opposition [in G 1/86], and secondly, the considerations [of the EBA] refer to the particularities of appeal proceedings rather than to opposition proceedings, where there is no distinction between the time limit for filing the opposition and the time limit for filing the statement of grounds. Both A 122(1) and the decisions G 1/86 and T 702/89 clearly indicate that re-establishment into the time limit for filing an opposition is out of the question. [7] This outcome is appropriate (sachgerecht) not only because in opposition proceedings there is one single time limit for filing the opposition and the corresponding statement of grounds but also because the considerations underlying A 122(1), i.e. that a competitor who has not filed an opposition still can avail himself of national revocation proceedings, applies even more to opposition proceedings than to appeal proceedings. [8] Based on the factual situations underlying G 1/86 and T 702/89, the Board draws the general conclusion that re-establishment, which is a special legal remedy that, in principle, is only available to the applicant and patent proprietor, is, in application of the principle of equal treatment, exceptionally available to all parties to inter partes proceedings when the proceedings have been validly commenced (eingeleitet) and are pending. In the present case, however, the opposition proceedings have not been validly commenced yet. The failure to pay the administrative fee pursuant to Article 6.6 ADA in due time has triggered the legal consequence provided in Article 6.7 ADA in connection with Article 7(2) RRF, i.e. the payment is considered to have been made on the date on which the deposit account was duly replenished. It is undisputed that this happened after the expiration of the 9-month time limit for filing an opposition. In application of A 99(1) the opposition shall be deemed not to have been filed. Thus there are no pending opposition proceedings. As a consequence, a party that has failed to pay the opposition fee in due time, even if this is the consequence of the failure to meet the time limit for paying the administrative fee for replenishing the deposit account, cannot avail itself of the possibility of requesting reestablishment. [9] The arguments of the appellant […] cannot alter this fact. Although the ADA did not exist at the time when A 122 was drafted (which is the first argument invoked by the appellant), these provisions provide particular rules in favour of the person ordering the payment (Zahlungsgeber) in case the deposit account is insufficiently funded. Thus these provisions contain their proper rules dealing with belatedness (Verspätungsregelungen). Now turning to the third argument of the appellant, these rules are to be considered as a whole and cannot be divided into more or less important acts. The law does not state whether the lack of a statement of grounds of appeal is more or less important than the failure to pay a penalty (Säumnisgebühr). Finally, the provisional communication by the Office regarding the filing of an opposition cannot alter the fact that the latter is inadmissible, even if the patent proprietor relied on this information. Otherwise the patent proprietor could not invoke the inadmissibility of the opposition, just because the Office had informed it on the filing of an opposition. If this was the case, the provisional communication on the filing of an opposition would be legally relevant to an extent that by far exceeds its mere informative character. This cannot be accepted. [9] The appellant’s request that the decision be set aside and that re-establishment into the time limit for paying the administrative fee of 211.5 € be granted is to be dismissed. […] The appeal is dismissed. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1483/10 – Back To China
K’s Law – The ebook
T 1483/10 – Back To China 26 Mrz 2013
[2.1] A 14(2) allows for a European patent application to be filed in any language and then to be translated into one of the official languages. Throughout the proceedings before the EPO, such translation may be brought into conformity with the application as filed. [2.2] According to A 153(2), an international application for which the EPO is a designated or elected Office, shall be equivalent to a regular European application (Euro-PCT application). Under A 153(5) Euro-PCT applications shall be treated as European applications. It is also a general principle that such applications must be treated as favourably as those made in a contracting state (see T 700/05 [4.1.1], also T 353/03). Hence, by analogy, A 14(2) must also allow the translation into English of a PCT application originally filed in Chinese to be brought into conformity with the original Chinese text of the application throughout the proceedings before EPO. [2.3] The certified translation provided by the appellant with its letter of 17 January 2013 shows that the use of the term “astigmatism plate” was the result of a translation error and the correct term should have been “lightscattering plate”. Accordingly, the replacement of the term “astigmatism plate” by “light scattering plate” in claim 1 is an allowable correction made under Article 14(2) EPC and does not infringe A 123(2). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1677/11 – Bad Timing
K’s Law – The ebook
T 1677/11 – Bad Timing 25 Mrz 2013
Objections under A 24 other than self-recusations are hardly ever successful. Most of the time the Boards find the allegations of partiality to be unpersuasive. In the present case, where the whole Board (!) was being objected to, the objection was rejected on another ground. [3] Partiality objections were raised by [opponents] 1, 3, 4 and 6 against all board members under A 24(3) EPC. It was argued that, since the substantively identical parallel appeal case T 1760/11 had been decided by a board in identical composition one week previously, the present board would not bring an open mind to the present appeal. As a first step, it is to be decided by the present board whether the said objections are admissible (cf. decision T 1028/96 [1]). According to A 24(3), second sentence, “an objection shall not be admissible if, while being aware of a reason for objection, the party has taken a procedural step”. The principle underlying this provision is that an objection should be “raised immediately after the party concerned has become aware of the reason for the objection”, since “otherwise, the system could be open to abuse” (see decision G 5/91 [4]). In the present case, the statement of grounds of appeal dated 22 November 2011 already contained a reference to the parallel appeal concerning to the closely related patent EP 1 020 461 […]. In addition, present [opponents] 3, 4 and 6 were also [opponents] in the corresponding appeal case T 1760/11 (as [opponents] 2, 7 and 13, respectively), and although [opponent] 1 was not a party in appeal T 1760/11, its representative was the same as that acting for [opponent] 6. Therefore, [opponents] 1, 3, 4 and 6 would have been aware of the closely related parallel appeal T 1760/11 right from the beginning of the present appeal proceedings. A communication of the board was sent on 19 December 2011 granting the request for accelerated processing of the appeal, and informing the parties that the board then envisaged issuing an invitation to oral proceedings (OPs) by August 2012 to attend OPs from 27 to 29 November 2012 [...]. On the same day, an identically worded communication was sent out in appeal case T 1760/11, except that the date foreseen for OPs was stated to be 13 to 15 November 2012. Both communications were signed by the same rapporteur. At this stage in the proceeding, present [opponents] 1, 3, 4 and 6 would therefore have been aware that the boards had been constituted in both cases, that the rapporteur was the same, and that appeal T 1760/11 was likely to be decided prior to the present appeal. Moreover, the information would have been readily available by online file inspection (entry from 20 October 2011) that the boards were identical in both cases, as foreseen in Article 7 of the business distribution scheme, which stipulates that, where appeals pending before the board are closely linked, in particular by involving similar legal or factual questions, the chairman may order that the board decides in the same composition (see Supplement to OJ EPO 1/2012, 12 to 25). Replies to the statement of grounds of appeal were inter alia received from [opponents] 1, 3 and 6, but not from [opponent] 4 […]. However, it is to be noted that [opponent] 4 did file a response in case T 1760/11 (as [opponent] 7), as did [opponents] 3 and 6 (as [opponents] 2, and 13, respectively). No concerns were voiced by said parties in either case with respect to the identical compositions of the boards. Thereafter, summons were sent out on 6 July 2012 to attend OPs on 27 to 29 November 2012, as previously announced. Corresponding summons were sent out on the same day in appeal case T 1760/11 to attend OPs on 13 to 16 November 2012. The board’s composition appearing on the these summons was identical in both cases and had not changed with respect to that previously available by online file inspection. These summons therefore provided confirmation to the parties that the boards were to be identically constituted in both cases and that OPs for T 1760/11 would take place two weeks prior to those for T 1677/11. Again no concerns were voiced by any of the parties in this respect, and the representatives of present [opponents] 1, 3, 4 and 6 all attended the OPs in case T 1760/11 from 13 to 16 November 2012.
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T 1677/11 – Bad Timing
K’s Law – The ebook
It was only after an adverse decision in that case had been announced that said [opponents] raised their objections of suspected partiality in the present case. However, as outlined above, the reasons for said objections, namely, the close link between the cases and the identical compositions of the boards, had been known to the parties long before the date of the first OPs. Therefore, regardless of whether the [opponents], notably [opponent] 4, took a specific procedural step in the present appeal proceedings, it is undoubtedly the case that they did not submit their objection immediately after becoming aware of the reasons therefore. Moreover, in view of the fact that the objections raised are linked to both appeals, attendance of OPs for T 1760/11 must be regarded as a procedural step within the factual context of the present case, in the sense of A 24(3). Consequently, in view of their timing, the objections under A 24(3) are rejected as inadmissible. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 487/12 – Likely? So what?
K’s Law – The ebook
T 487/12 – Likely? So what? 23 Mrz 2013
This is an appeal of a patent proprietor whose patent had been revoked. The decision contains an interesting passage on compliance of the main request with the requirements of A 123(2). The application as filed had 15 claims, whereby claims 1, 2 and 3 read as follows: 1. A copolymer of ethylene and an alpha olefin having 3 to 10 carbon atoms, said polymer having (a) a density in the range 0.900 to 0.940 (b) an apparent Mw/Mn of 2 - 3.4 (c) I21/I2 from 16 to 24 (d) activation energy of flow (Ea) from 28 to 45 kJ/mol (e) a ratio Ea(HMW)/Ea(LMW)>1.1, and (f) a ratio g’(HMW)/g’(LMW) from 0.85 to 0.95. 2. A copolymer according to claim 1 having an apparent Mw/Mn in the range 2 to 3 and I 21/I2 from 18 to 24. 3. A copolymer according to claim 2 having an apparent Mw/Mn in the range 2.5 to 3, an activation energy of flow from 30 to 35 KJ/mol, and a ratio Ea(HMW)/Ea(LMW) >1.2. The patent was granted with a set of 10 claims, whereby claim 1 read as follows, amendments compared to claim 1 as originally filed being underlined: A copolymer of ethylene and an alpha olefin having 3 to 10 carbon atoms, said polymer having (a) a density in the range 0.900 to 0.940 (b) an apparent Mw/Mn of 2.5 - 3.0 (c) I21/I2 from 16 to 24 (d) activation energy of flow (Ea) from 30 to 35 kJ/mol (e) a ratio Ea(HMW)/Ea(LMW)>1.2, and (f) a ratio g’(HMW)/g’(LMW) from 0.85 to 0.95 wherein g’ represents the ratio of the measured intrinsic viscosity divided by the intrinsic viscosity of a linear polymer having the same molecular weight, HMW = high molecular weight species, and LMW = low molecular weight species. According to the patent proprietor, the values of five of the six parameters of claim 1, i.e. parameters (a), (b), (d), (e) and (f) were disclosed at page 3, lines 11-17, of the application as filed. Parameters (a) and (f) were the same throughout the application. The value ranges for the parameter (b), (d) and (e) were within the broadest ranges disclosed for said parameters, i.e. represented preferred ranges. The claimed range of 16-24 for parameter (c) corresponded to the broadest disclosure of this parameter in the application as filed. The combination of the broadest range of parameter (c) with the - in some cases preferred - values of the remaining five parameters was inherently disclosed in the application as filed. Furthermore from examples 1, 4, and 5 it was seen that the values for parameter (e) were 1.55, 1.29 and 1.34, all of which were within the claimed range. Similarly from examples 1-3 it would be seen that parameter (f) had the values 0.912, 0.915 and 0.912. Examples 4 and 5 disclosed all the parameters of claim 1 apart from parameter (f). As the value of parameter (f) reported in examples 1-3 was consistently in the middle of the claimed range it was highly likely that the value of parameter (f) in examples 4 and 5 was also within the claimed range. Consequently the skilled reader could derive the subject-matter of claim 1 from a full reading of the application as filed. The Board won’t allow such reasonings: A 123(2)
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T 487/12 – Likely? So what?
K’s Law – The ebook
[2.1] The preamble and features (a), (c) and (f) of claim 1 are disclosed in originally filed claim 1 and at page 2, line 28 - page 3, line 3 of the description of the application as filed. The definitions of g’, HMW and LMW are disclosed at page 4, lines 5-20. [2.2] The specified values of features (b), (d) and (e) of present claim 1 are disclosed in originally filed claim 3. However in the application as originally filed claim 3 is dependent not on claim 1 but on claim 2 which specifies a value of feature (b) of 2 to 3 and a value of feature (c) of 18 to 24 […]. [2.3] Consequently the ranges for features (b), (d) and (e) specified in operative claim 1 are originally disclosed only in combination with a range of feature (c) of from 18-24, not however with the broader range of 16-24 as now specified in claim 1. [2.4] The description of the application as filed does not provide any basis for the presently claimed subject matter since in the passage starting at page 2, line 27, and concluding at page 3, line 17, the subject matter of each of claims 1, 2 and 3 is explicitly set out as closed sets of six features. Thus the description and the claims of the application as filed are consistent with each other in that only certain combinations of values for features (a)-(f) are permitted. There is no statement, express or implied, that the various ranges of values for features (a)-(f) can be freely combined independently of each other. In other words, according to the disclosure of the application as originally filed there is no indication that the ranges of values of the six features (a)-(f) are not interdependent. Operative claim 1 therefore discloses a combination of values which is not disclosed as such in the description or claims of the application as filed. [2.5] Recourse to the examples does not lead to any other conclusion. The examples each represent a single point disclosure, i.e. a specific combination of values for each of the six parameters mentioned in present claim 1. Since, in view of the considerations set out in section [2.4] above, only certain combinations of the features (a)(f) are permitted, it has to be concluded that individual parameters from the examples may not be isolated and generalised. Further, none of the examples discloses all of the six features specified in the claims, meaning that it is not even established that any of the examples actually fall within the scope of the claims. Considerations, as advanced by the [patent proprietor], of the likelihood or probability of certain parameters being within the scope of the claims are not appropriate when considering the question of compliance with the requirements of A 123(2), as held for example in decision T 383/88 [2.2.2]. The main request therefore does not meet the requirements of A 123(2) and has to be refused. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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J 7/12 – Last Minute Risks
K’s Law – The ebook
J 7/12 – Last Minute Risks 22 Mrz 2013
This is an appeal against the refusal of the Examining Division (ED) to grant re-establishment. The applicant’s PCT application (earliest priority: November 2005) had entered the European phase in May 2008. In a letter dated January 7, 2010, the EPO informed the applicant’s representative that the renewal fee for the fourth year, which had fallen due on November 30, 2009, had not been paid and that it still could be paid within six months of the due date, provided that an additional fee was also paid within that period (i.e. on or before May 31, 2010, “de ultimo ad ultimo”). A communication of loss of rights was sent to the representative on July 8, 2010. On July 28, 2010, the applicant filed a request for re-establishment. The representative explained that the applicant had requested him to pay the fee by fax, on May 31, 2010. The order was received at 5 o’clock p.m. but there was a fax problem causing the fax not to be printed out. The problem was discovered on June 1 only because the office staff was surprised to see that apparently no faxes had been received during the night. The ED considered that the requirement of all due care had not been complied with and refused reestablishment. The applicant then filed an appeal. Readers familiar with re-establishment case law will not be surprised that the appeal was not successful. *** Translation of the German original *** [3] As explained in great detail in the communication [NB: annexed to the summons to oral proceedings before the Board] a request for re-establishment can be granted when an applicant, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the EPO (A 122(1)). According to the established case law the duty of due care enshrined in A 122 concerns both the applicant and the representative (J 3/93 [2.1]; T 381/93 [6]; J 17/03 [5]; J 1/07 [4.1,7]; cf. Case Law, 6th edition, 2010, VI.E.7.3.1), the due care required on behalf of the representative depending on the relationship between him and his client (J 19/04 [9]; J 1/07 [4.1]). [4] As correctly stated in the impugned decision, the representative has clearly and in due time informed the applicant of the fee being due. The reminder sent by the representative on April 9, 2010, contained all the information that was needed; it also bore the indication “final time limit”. It clearly follows from the letter that the representative could only pay the renewal fees if he was instructed to do so by the applicant. The representative received the required funds together with the corresponding instructions. It follows that the applicant alone had the duty to take all due care required by the circumstances for the time limit for paying the fees to be met. However, the fact that the representative did not make any mistake does not protect his client from the consequences of its own errors or negligence (J 3/93; T 381/93; J 16/93; J 17/03). [5] The argument that the applicant could not have known which time limits [, if not met,] would result in the irrevocable loss of the application is not sufficient for establishing that all due care had been taken. This ignorance rather proves the need to be more careful and, therefore, to act much earlier than on the last day of the additional period (Nachfrist). According to the established case law of the Boards of appeal, ignorance or wrong interpretation of a provision of the EPC cannot justify re-establishment. Incidentally, this principle also applies to individual applicants that are not represented (J 2/02). 591 | 3398
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[6] Moreover, as mentioned during the oral proceedings, anybody who puts himself in a situation where he cannot be sure that the required action can be taken in due time takes the risk that his legal request (Rechtsbegehr) will be unsuccessful (cf. J 16/92). In the present case the order to pay (Zahlungsanweisung) has only been transmitted in the late afternoon of the last day for paying the renewal fee and the additional fee. By acting in this way, the [applicant] (almost) completely exhausted the additional period. Such action is per se acceptable, but it creates a risk that is to be borne (also) by the [applicant], namely that errors may occur during the receipt and execution of its instructions. Under these circumstances the [applicant] would have had to enquire of the professional representative or his clerk whether the instructions had been received and had been (or would be) carried out in due time (T 1289/10; J 16/92). This requirement does not amount to an unduly high standard for due care on behalf of the applicant, as extensively argued by the [applicant] - both orally and in writing. Rather, it only corresponds to the due care that is required in the applicant’s own interest and reflects the concrete circumstances. The requirement to enquire (Erkundigungsobliegenheit) thus results from both the fact that the applicant, by exhausting (Ausreizen) the time limit has created the particular risk that delays in transmission may lead to a failure to miss the time limit, and from the fact that – in contrast to last-minute transmissions directly to the Office – the instructions of the applicant to its representative still lie in the sphere of the applicant and that the interposition (Zwischenschaltung) of the representative naturally generates further transmission risks. [7] For the above reasons the requirements of A 122(1) and R 136 have not been met and, consequently, the appeal has to be dismissed. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 584/09 – Merry Swapping
K’s Law – The ebook
T 584/09 – Merry Swapping 21 Mrz 2013
Some time ago, I dedicated a post to the successful petition for review R 21/11 and mentioned that Board of appeal (BoA) 3.3.01 had changed its composition of its own motion because the former chairman would retire in early 2013. This retirement had a domino effect, as the present decision shows: the two remaining members of the Board recused themselves. The original decision had been taken by P. Ranguis (chairman), G. Seufert and D. Rogers. The petitioner had asked the Enlarged Board (EBA) to order a change of composition, but this request was refused. P. Ranguis retired on March 1, 2013. G. Seufert and D. Rogers then recused themselves in order to avoid the appearance of partiality. The following decision on their exclusion was taken by the Board in the following decision: C.M. Radke (chairman), J.-B. Ousset (rapporteur) and C.-P. Brandt. *** Translation of the German original *** [1] Pursuant to A 24(1) members of the Boards of appeal may not take part in a case in which they have any personal interest, or if they have previously been involved as representatives of one of the parties, or if they participated in the decision under appeal. If, for one of the reasons mentioned in paragraph 1, or for any other reason, a member of a BoA considers that he should not take part in any appeal, he shall inform the Board accordingly (A 24(2)). [2] Apparently the self-recusations that are to be examined here are not based on a reason for exclusion pursuant to A 24(1). In particular the decision of the BoA of February 3, 2011, is not a decision of the previous instance within the meaning of this provision [NB: contrary to the English version of A 24(1), the German version refers to a previous instance (Vorinstanz)]. However, the reason given [by the self-recusing members], i.e. [the wish] to avoid the appearance of partiality based on the necessity to answer the same questions once more, may qualify as “any other reason” within the meaning of A 24(2). [3] Pursuant to A 24(4), first sentence, the BoA shall decide as to the action to be taken in such cases. As the opponent has correctly stated […], a self-recusation, therefore, does not automatically result in the Board member concerned being excluded from the proceedings. Such an exclusion can only result from a decision of the Board in its composition pursuant to A 24(4), second sentence, on whether the replacement of the Board member is justified. In its present composition the Board is entitled to decide whether the technically competent member (G. Seufert) and the legally competent member (D. Rogers), who originally were in charge of the appeal proceedings, are excluded from participating in the appeal proceedings that are to be resumed. [4] In principle the requirement of fair and impartial proceedings does not prohibit members of the BoA from deciding again on the submissions of parties. This can happen, for instance, when a case is remitted to the first instance and the same Board composed of the very same members who had taken the first decision is competent for deciding on the appeal against the subsequent first instance decision (cf. J 15/04 [8]). [5] However, there is a general legal principle that nobody may decide on a case in which one of the parties may have good reasons to suspect him/her to be biased. A 24(2) serves this principle as it requires a Board member who believes that (s)he cannot take part in the proceedings for such a reason to inform the Board. This avoids situations where the circumstances underlying the self-recusation become public at a later stage of the proceedings and shed doubt on the process leading to the decision or even the decision itself. As a consequence, it is of paramount importance that after a decision of a BoA pursuant to A 24(4) on the self-recusation of a Board member neither the public nor any party may consider that there is a serious possibility or even a mere appearance of partiality (cf. J 15/04 [13]). 593 | 3398
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[6] It is true that neither during the petition for review proceedings under A 112a nor subsequent to the communication by the Board dated December 14, 2012, the petitioner has provided any concrete indications (Anhaltspunkte) clearly suggesting or actually justifying that there may be reasons to fear partiality of the original Board members, nor does the Board see any such indications. This notwithstanding, having pondered the particular circumstances of the present case, for the following reasons (see point [7]) and in view of the general principle explained above (see point [5]) the Board considers the self-recusations under consideration to be justified. [7] As a matter of fact, when, as in the present case, members of the BoA justify a self-recusation by invoking a reason which as such could possibly justify an exclusion based on a partiality concern (Besorgnis der Befangenheit), then this reason should, as a rule, be respected by the decision on the replacement of these members because one has to assume that these members know best whether a partiality concern might arise (cf. J 15/04 [13]). In the present case this conclusion is further suggested by the fact that the petitioner in the petition for review proceedings did indeed request to replace the members involved in the decision of February 3, 2011, because otherwise they would have to decide on the same questions once more. [8] Thus the Board comes to the conclusion that, considering the requirement of impartiality in proceedings before the BoA that underlies A 24, and in view of the fact that their members, who have a judicial function, have to avoid even the appearance of possible partiality, it is justified to replace the original technically and legally competent members of Board 3.3.01 in the proceedings that are to be resumed in the present case because of their declaration of self-recusation. [9] This outcome does not contradict decision R 21/11 of the EBA in which the EBA refused the request to replace the members of the BoA who had participated in the decision that has been set aside, because in this respect the factual situation has changed in a decisive manner subsequent to the decision of the EBA. The EBA based its decision on the assumption that in principle the members of the BoA who had participated in the decision of February 3, 2011, which has been set aside, were also available for the proceedings that were to be resumed, and this was the only reasonable assumption at the time of the decision. Moreover, the EBA has also established that within the framework of the request to maintain the impugned patent the only question to be decided was whether in case of an admission of the second Mehlhorn expert opinion into the appeal proceedings this additional evidence would make a difference (R 21/11 [30]). As this request had not been dealt with before, there was no need to decide a second time on the same questions. [10] The opponent could only have invoked legitimate expectations created by the decision of the EBA concerning the composition of the BoA if the facts underlying the decision of the EBA had remained unchanged, which is not the case, be it only because a change of chairman had become necessary afterwards. [11] As a matter of fact the EBA has expressly pointed out that a replacement of the former members would mean that a Board in a new composition would have to repeat the appeal proceedings in order to reach a final decision (R 21/11 [30]). However, this is precisely the situation created by the retirement of the chairman P. Ranguis on March 1, 2013. The change of chairman as such already requires the appeal proceedings to be repeated, even if the originally appointed legally and technically competent members remained in the proceedings. These members then would have to decide once again on the same questions in the present appeal proceedings, which was to be avoided by means of the self-recusations. [12] Insofar, and contrary to the opinion of the opponent […], it is irrelevant which reasons (retirement, partiality concerns) require the BoA member to be replaced. What matters is that before taking a final decision on the appeal the member must be able to form an opinion based on his/her proper perception, study (Kenntniserlangung) of the factual situation and assessment of all relevant questions. This presupposes that it may be necessary to discuss and assess afresh all questions that are relevant for the decision on the appeal, even though they have been dealt with and decided by a Board in different composition in the course of the preceding appeal proceedings. This also encompasses the participation in oral proceedings at the end of which the final decision of the newly composed BoA on the appeal as a whole is taken and announced. [13] The Board is unable to endorse the opinion of the opponent according to which the principle of res judicata (i.e. of legal effect and legal binding) would hinder the BoA, when resuming the proceedings, in a partially or completely new composition, to decide once more on the questions that have already been dealt with and decided during the preceding appeal proceedings. The reasons are of a legal nature. [14] It is true that a petition for review pursuant to A 112a is an extraordinary legal remedy and has no suspensive effect (A 112a(3)), i.e. the filing of the petition as such does not have any effect on the legal force of the impugned decision. This being said, it follows from A 112a(5) in connection with R 108(3) that if the 594 | 3398
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petition succeeds, the EBA sets aside the decision and re-opens proceedings before the BoA. It may then order that the composition of the members be modified. [15] The wording of these provisions does not express the idea that in a situation where the decision of the BoA is set aside the BoA […] is bound by the factual or legal statements that have been made in the preceding decision, which has been set aside. This is fully in line with the unambiguous and explicit will of the legislator as expressed when the provisions governing petitions for review under A 112a. Accordingly, if the petition is allowed, the decision of the EBA setting aside the decision of the BoA and re-opening the proceedings overturns the “res judicata effect”, i.e. the formal legal force of the decision of the BoA (OJ EPO, Special edition 4/2007, on A 112a, p. 126-131, and in particular points 10, 17, and 19, and expressly referring to A 112a(5) in connection with R 108(3)). Moreover it is expressly stated in this context that consequently the result of the second appeal proceedings may be the same as in the first appeal proceedings, or different (ibid., point 19). The legal fact (Rechtstatsache) that in a case where the petition is allowed, the decision of the BoA is set aside and the appeal proceedings are re-opened pursuant to A 112a(5) in connection with R 108(3), the res judicata effect of the first decision of the BoA is broken or overturned by means of a “cassatory” decision and that, as a consequence, the reversal of the decision in the second appeal proceedings is possible, has also been expressly confirmed in the legal literature (see Günzel, GRUR 2009, 269, 270; Messerli, GRUR 2001, 979, 981; Joos/Schmitz in Singer/Stauder, EPÜ, 6th edition, A 112a, marginal numbers 5 and 20). The EBA in its decision R 21/11 manifestly and without further ado based its reasoning on this fact when it declared that “replacing the previous members would mean that a BoA in new composition would have to carry out afresh the whole appeal proceedings … in order to come to a final decision” (R 21/11 [30]). This statement would not make any sense if one had to assume as a res judicata effect for the second appeal proceedings. [16] For the above reasons the Board cannot endorse the opinion of the opponent acoording to which the principle of legal security would require a limitation of the BoA’s entitlement to take decisions, within the framework of the re-opened proceedings, to the so far unanswered question whether the second Mehlhorn expert opinion was to be admitted and, if so, whether it was relevant, and, therefore, excluded the possibility for the BoA to decide the questions that had already been dealt with once more, and possibly differently. [17] Thus in the end there are no decisive reasons not to replace the original technically competent member G. Seufert and the original legally competent member D. Rogers by a deputy. [18] The BoA, therefore, comes to the conclusion that Ms. G. Seufert and Mr. D. Rogers are to be replaced by Mr. J.-B. Ousset and Mr. C.-P. Brandt, respectively. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here. NB: If you have an opinion on whether there should be Saturday evening posts, please take part in the poll on the blog.
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J 15/12 – To Miss, Or Not To Miss, …
K’s Law – The ebook
J 15/12 – To Miss, Or Not To Miss, … 20 Mrz 2013
… that is the question. This is an appeal against the decision of the Receiving Section (RS) to refuse the applicant’s request for a replacement of drawings under R 56(3). The application under consideration was filed on June 25, 2010, claiming the priority of a GB patent application. The request for grant of a European patent was accompanied by 15 claims, 13 description pages and one sheet of drawings labelled “Fig 1A.” and “Fig 1B.”. In the description reference is made to Figures 1, 2, 3 and 4, respectively. On June 29, 2010, the applicant filed two sheets of drawings consisting of Figures 1, 2, 3 and 4 and stated that the drawings filed with the application were incorrect and did not correspond to the specification. On August 5, 2010, the applicant filed a letter stating the following:
The RS was of the opinion that R 56 allows the filing of missing drawings, but not their replacement, without losing the earlier filing date. Figs. 2, 3 and 4 were obviously missing drawings, whereas Fig. 1 was not an obviously missing drawing, since it was present in the application documents as filed on the date of filing. As a consequence, the RS refused to accept Fig. 1 as a missing drawing within the meaning of R 56. It also decided that for the publication of the European patent application according to Article 93 EPC, the documents as originally filed would be used together with Figures 2, 3 and 4 filed on June 29 and August 5,2010. The applicant filed an appeal against this decision. [2] R 56 reads in relevant parts: “(1) If the examination under A 90(1) reveals that parts of the description, or drawings referred to in the description or in the claims, appear to be missing, the EPO shall invite the applicant to file the missing parts within two months. … (2) If missing parts of the description or missing drawings are filed later than the date of filing, but within two months of the date of filing or, if a communication is issued under paragraph 1, within two months of that communication, the application shall be re-dated to the date on which the missing parts of the description or missing drawings were filed. The EPO shall inform the applicant accordingly. (3) If the missing parts of the description or missing drawings are filed within the period under paragraph 2, and the application claims priority of an earlier application, the date of filing shall, provided that the missing parts of the description or the missing drawings are completely contained in the earlier application, remain the date on which the requirements laid down in R 40(1) were fulfilled, where the applicant so requests and files, within the period under paragraph 2: (a) a copy of the earlier application, unless such copy is available to the EPO under R 53(2); ...” [3] In the present case in the description as filed reference is made to Figures 1, 2, 3 and 4 […]. However, no drawing labelled “Fig.1” was part of the application received on 25 June 2010. Drawing Fig. 1 together with 596 | 3398
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drawings Figs. 2, 3 and 4 were filed by the applicant under R 56(2) of its own volition and were received on 29 June 2010, and a copy of the earlier application, which contained Figs. 1, 2 3 and 4, was received on 5 August 2010; both dates are within the time limit of two months from the filing date (25 June 2010). Consequently, pursuant to R 56(3) the date of filing remains 25 June 2010, i.e. the date on which the requirements of R 40(1) were fulfilled. The incomplete application documents filed originally are to be completed by the missing parts, which must be added to the text of the application filed originally. [4] The RS correctly states that R 56 does not allow any replacement of drawings. An interpretation of R 56 that some, or all, of the application documents that were originally filed in order to obtain a filing date could be amended, replaced or deleted would indeed be incorrect (see decision J 27/10 [8-18]). However, the filing of drawing Fig. 1 does not replace any Fig. 1 filed earlier in a legal sense. R 56(1), first sentence, refers to drawings referred to in the description or in the claims, which appear to be missing. Hence, where a drawing referred to in the description is missing in the application documents as filed. R 56 is applicable and the said drawing can be filed later in accordance with the procedure laid down in R 56. As set out above, no drawing labelled “Fig.1” was part of the application received on 25 June 2010. The drawings “Fig.1A” and “Fig.1B” are not a “Fig. 1” as stated in the decision under appeal and therefore the later filing of “Fig. 1” is not a replacement of the aforementioned figures but constitutes the filing of a figure referred to in the description but missing from the application documents as filed. [5] The Board therefore concludes that Fig. 1 has to be treated as a missing drawing in accordance with R 56(3) and (2). Fig. 1 must be added to the application documents already filed, with no ensuing change of the original filing date of 25 June 2010. Consequently, the EPO will also have to provide for a publication of drawing Fig. 1. I understand this to mean that if the originally filed figures had been labelled “Fig. 1”, then they could not have been replaced by the ‘new’ “Fig.1”. Also, although the decision is silent on this matter, I would think that the Figures 1A and 1B still are part of the application as filed and can only be deleted via an amendment. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1906/11 – What Really Counts
K’s Law – The ebook
T 1906/11 – What Really Counts 19 Mrz 2013
Both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division to maintain the patent in amended form. Claim 1 of the patent as maintained read (amendments with respect to claim 1 as granted are highlighted): Scale (1) having a supporting plate (4) for receiving a mass to be weighed and having an electrical switching device (16, 24) for choosing or selecting a function of the scale (1), characterized in that the switching device (16, 24) has a capacitive proximity switch having an electrode (18, 28, 38, 44) which is arranged on the supporting plate (4) for monitoring the ambient capacitance of the electrode (18, 28, 38, 44), wherein the electrode (18, 38, 44) is located under the supporting plate and wherein the choice or selection of a function performed with the electrical switching device consists in switching on the scale. The Board dismissed the main request of the patent proprietor for lack of inventive step and then examined the claims of the patent as maintained by the OD. The part on compliance with A 123(2) is not without interest. *** Translation of the German original *** [4.2.1] The opponents have criticised that the feature that has been added to claim 1, according to which “the electrode is located under the supporting plate”, represented an inadmissible intermediate generalization, because this feature meant that any unspecified electrode could be located under the supporting plate. There was no corresponding disclosure in the original patent application, where the only electrode said to be located under the supporting plate was an electrically conductive printed layer. [4.2.2] The discussion between the parties concerning the opponent’s attack under A 123(2) mainly concentrated on the question whether the amendment of claim was an intermediate generalization within the meaning of e.g. T 1067/97, which had been cited by the opponent. However, the Board is of the opinion that this question is irrelevant in the present context. Whether an amendment qualifies as “intermediate generalization” or rather as “omission of an originally disclosed feature” or “multiple selection from two groups of alternative features” does not allow to draw a conclusion on whether this amendment is admissible under A 123(2). The only relevant question is whether the skilled person who is confronted with the amended version of the application or the patent, as compared to the skilled person who was only aware of the originally disclosed version, would find additional, technically relevant pieces of information in the amended version. Only when it is possible to find such additional, technically relevant pieces of information can there be a violation of the requirements of A 123(2). [4.2.3] The Board agrees with the opponents insofar as present claim 1 as amended, which now defines an electrode that is not specified any further to be located under the supporting plate, clearly teaches the skilled person to locate an electrode of any kind (Beschaffenheit) under the supporting plate. [4.2.4] As to the nature and location of the electrode, the following hints are found in the original application (paragraphs refer to the application as published): “In principle there are no limitations with respect to the design (Ausbildung) of the electrode. However, it is particularly advantageous for the electrode to have an electrically conductive printed layer on or under the supporting plate” (cf. paragraph [0007]) “According to another advantageous development (Weiterbildung) of the invention the electrode comprises a sputtered layer that is electrically conductive in at least part of its area, on or under the supporting plate” (cf. paragraph [0008]).
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“… it is suitable if the electrode comprises an electrically conductive metal element mounted on the support plate.” (cf. paragraph [0010]). Moreover, the figures show two embodiments: The first embodiment, shown in Figures 1 and 2, comprises an electrode 18 that consists in an electrically conductive printed layer 32 provided under the support plate (cf. paragraph [0015]), as well as a second electrode 28 consisting in a sputtered layer (cf. paragraph [0016]), which according o the figure is provided on the upper surface of the support plate.
The second embodiment, represented in Figure 3, has an electrode that consists in a metal element glued to the bottom of the support plate (cf. paragraph [0017]).
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K’s Law – The ebook
Thus the original documents as filed disclose, in various places of the description and the drawings, electrodes that are arranged under the support plate and which consist in an electrically conductive printed layer, an electrically conductive sputtered layer, or a metal element that is glued [onto the support plate]. Considering this plurality of variants that are said to be advantageous embodiments, the skilled person would understand that in principle there is no limitation regarding the design of the electrode on the bottom surface of the support plate, and that the electrode can be of any kind, respectively. This fact is also expressly stated in paragraph [0007] of the description. The fact that claim 2 as originally filed referred to a design of the electrode that was apparently considered to be particularly advantageous – i.e. a printed layer – cannot be understood to delimit the whole disclosure, as the opponents believe. [4.2.5] From the above comparison between the technical teaching which the skilled person receives from claim 1 as amended on the one hand and from the documents as originally filed on the other hand, and their agreement, [the Board] has to conclude that the technical teaching introduced by the amendment and which allegedly was an addition [to the original disclosure], was already present in the application [as filed], which means that there is no violation of the requirements of A 123(2). Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1849/12 – Bad News For Early Birds
K’s Law – The ebook
T 1849/12 – Bad News For Early Birds 18 Mrz 2013
The present case is somewhat unusual. It raises the question whether an applicant has the right to have its application granted before the expiry of the 18-months-period. The treatment of the admissibility of the appeal is also quite interesting. The application under consideration was filed on July 21, 2011. On May 7, 2012, the applicant’s representative had a telephone interview with the Examiner. The Examiner appears to have told the representative that in principle there was no obstacle to grant the patent but that he could not do so before having carried out a “topping-up” search in order to detect A 54(3) prior art, in conformity with the Guidelines (C-IV 7.1). On June 28, 2012, the applicant’s representative repeated the request for an early grant. He pointed out that there was no legal basis in the EPC for refusing a request for an early grant. It was up to the applicant to bear the risk of there being undetected A 54(3) prior art. The representative also invoked a recent article by M. Wilming in epi Information 1/2011, p. 31. He requested an appealable decision and explained that in the absence of such a decision the applicant might file an appeal anyway. On July 17, the ED sent a communication wherein it explained that the Guidelines were in line with the EPC and that there was no legal basis for an appealable decision. The applicant then filed an appeal. How did the Board react? *** Translation of the German original (available here) *** Competence and composition of the Board of appeal [1.1] First it has to be examined to which Board of appeal the EPC refers the present case. [1.2] The impugned communication deals both with the main request of the applicant to allow the patent to be granted as soon as possible, by immediately issuing a R 71(3) communication, and with the auxiliary request to issue an appealable decision in case the ED was not willing to grant the patent without delay […]. Thus the communication directly concerns the moment at which the ED decides to grant the European patent, i.e. the decision to grant (cf. G 8/95 [4-5]). Therefore, the Board is of the opinion that the impugned communication of the ED concerns the grant of a European patent within the meaning of A 21(3)(a) and that the Technical Board of appeal in its composition pursuant to A 21(3)(a) is competent to decide on the present appeal. [1.3] In view of the particular nature of the case the Board in the above composition has considered it to be necessary to decide on the appeal in a composition pursuant to A 21(3)(b) (Article 9 RPBA). Admissibility of the appeal On the qualification of the impugned decision as a decision [2.1.1] Pursuant to A 106(1) decisions of the departments referred to in this provision are appealable. In the present case, however, the appeal is not directed against a formal decision but against what the ED has referred to as “communication”. As the term “decision” is not defined in the EPC, the question arises whether the impugned communication, notwithstanding its designation, qualifies as an appealable decision. It has been established in the case law of the Boards of appeal that the answer to this question does not primarily depend on the form or the title of the document, but on its content, which has to be assessed in its procedural context. In particular, a document such as the impugned communication in the present case does qualify as a decision when it finally settles the relevant factual situation with respect to a party. 601 | 3398
T 1849/12 – Bad News For Early Birds
K’s Law – The ebook
[2.1.2] In view of its contents, the appellant considers the communication of the ED dated July 17, 2012, to be an appealable decision because it satisfies all the features of an appealable decision cited in decision T 1181/04 [2.4] […]. The Board cannot endorse this point of view. At least two of the four criteria are not satisfied in the present case. The first instance novelty assessment expressly had not been terminated yet, in view of A 54(3) prior art, and thus the factual examination had not yet been terminated, so that the subsequent proceedings did not depend on the decision of the applicant alone. Moreover, the factual situation of the case underlying decision T 1181/04 significantly differs from the present situation in that the ED already had issued a communication pursuant to A 51(4) EPC 1973 (nowadays, R 71(3)), which, under the circumstances of the case and for the reasons mentioned above qualified as a decision. In the present case, however, the ED had refused to (immediately) issue a communication pursuant to R 71(3). Therefore the question whether (and if so, which of) the cited criteria can be used for the assessment of the admissibility of the appeal, in terms of double relevant facts in civil proceedings, can be left unanswered. [2.1.3] However, the Board shares the opinion of the appellant that its request for a R 71(3) communication being issued immediately has been dealt with conclusively in the impugned communication and has been refused in a final manner by the ED. This is because, within the framework of the examining proceedings, the ED has made a final and legally binding statement on the request of the appellant, which, as to its content, has the nature of a decision within the meaning of A 106(1). As this decision has resulted in the refusal of the request of the appellant to have the patent and the rights under A 64 related to it granted soon, [the appellant] is also adversely affected. Admission of the separate appeal [2.2.1] Pursuant to A 106(2), a decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows a separate appeal. The EPC does not contain an explicit provision [that allows to determine] in which cases a separate appeal against so-called interlocutory decisions has to be allowed. Rather, the legislator has given the deciding department discretion to decide [on that matter], according to its duties (Travaux préparatoires to the EPC 1973, Report on the second session of the Coordination Committee, May 15-19, 1972, document BR/209/72, point 67). It is undisputed that a first instance department which, in application of the EPC, has to take discretionary decisions has a margin of discretion which the Board of appeal has to respect. The Board may only should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion cf. G 7/93 [2.5-6]). [2.2.2] The impugned communication of the ED, which is to be qualified as a decision, does not terminate the examination proceedings with respect to the appellant. The ED has expressly refused the auxiliary request of the appellant for an appealable decision and has justified this by referring to the lack of an appropriate legal basis. When doing so, it apparently has not sufficiently taken account of the fact that the request of the appellant, to allow the patent to be granted soon, by immediately issuing a R 71(3) communication, could not have been granted in a meaningful way in case a successful appeal had been filed after the final decision on the grant. Thereby it has adversely affected [the appellant] by issuing its communication, in a way that cannot be remedied by means of an appeal after the final decision. [2.2.3] Nor could the appellant avail itself of another legal remedy provided by the EPC against the impugned communication. Under these circumstances, the ED should have allowed a separate appeal because only an appeal could offer the appellant an opportunity to remedy the adverse effect within the framework of a judicial examination of the refusal of its request. This is all the more so because the EPC does not provide for an appeal against inaction of the EPO (cf. J 26/87). [2.2.4] Thus the Board comes to the conclusion that the ED, when refusing the request that an appealable decision be issued has insufficiently taken account of an essential aspect and has exercised its discretion in an erroneous way. Therefore, the communication of the ED is to be considered to be separately appealable.
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T 1849/12 – Bad News For Early Birds
K’s Law – The ebook
[2.3] As the appeal satisfies all the other requirements of A 106 to A 108 and R 97 and R 99, it is admissible. Allowability of the appeal [3.1] A 97(1) regulates the grant of a European patent as follows: “If the ED is of the opinion that the EP application and the invention to which it relates meet the requirements of this Convention, it shall decide to grant a EP […].” Thus the grant of a patent presupposes that the ED has reached the opinion that the requirements of the EPC are met. In the present case, however, the ED has expressed in the impugned communication dated July 17, 2012 (point 1) that it was not yet of the opinion that the application under consideration satisfied all the requirements of the EPC, including the requirement of novelty with respect to A 54(3) prior art. Thus it did not have the possibility and the right to proffer the possibility of a grant by issuing a communication under R 71(3). In contrast to the opinion of the appellant, the ED has no margin of discretion in this respect. Whether the appellant renounces the novelty assessment with respect to A 54(3) prior art and is ready to bear the risk that may result from it, i.e. that the resulting patent is not legally valid, is irrelevant in this context, because this would mean that the applicant had the right to choose whether its application should be examined before grant – and if so, in regard of which requirements. However, there is no support for [this approach] in the EPC. Rather, the EPC provides for a mandatory examination with respect to all the requirements of the EPC before a patent can be granted. It is only when the ED is of the opinion that all requirements that are to be examined are fulfilled that it may arrange for a grant. In this context, it has to be noted that the EPO has to guarantee the interests of both the applicant and the public and that the public must be able to rely on the fact that it actually does. The fact that it often happens that prior art that has not been taken account of during examination proceedings, for various reasons, is cited in opposition proceedings does not alter this duty. The very fact that the opportunity to file an opposition against a granted patent is offered to any person emphasises the interest of the public that only valid rights be maintained and shows that the applicant cannot decide on the requirements of the EPC that are to be used in the examination of its application. Moreover the requirement of novelty with respect to A 54(3) prior art is not of secondary importance, as the applicant appears to believe. Rather, the requirement of lack of novelty with respect to A 54(3) prior art constitutes both a ground for opposition pursuant to A 100(a) and a ground for revocation pursuant to A 138(1)(a). [3.2] The argument of the appellant based on A 93(2), which expressly stipulates that the EP application shall be published at the same time as the specification of the EP when the decision to grant the patent becomes effective before the expiry of the 18-month period of eighteen months from the date of filing, cannot succeed either. As a matter of fact, A 93(2) only regulates the possibility of granting a patent before the expiration of the 18 months. Even if the relevant Travaux préparatoires, the decision T 276/99 cited by the appellant or the Guidelines A-VI 1.1 are taken into account, this provision does not state that the applicant is entitled to having the patent granted at a time and under conditions of its choice. Therefore, the grant of a patent before the expiration of said period is not excluded, provided the ED has reached the conviction that the application satisfies all the requirements of the EPC. However, as this was not the case here, the possibility of granting a patent before the expiration of the 18-month period, which is mentioned in A 93(2), is out of the question. In this context the Board does not see any contradiction between the provisions of A 93(2) and A 97(1). [3.3] Finally, the appellant points out that to a large extent the EPO was already aware of the unpublished prior rights pursuant to A 54(3) before the 18-month period had expired. As far as PCT applications were concerned, 18 months after their filing or priority date, respectively, it was not established whether they would enter into the European phase within 31 month after their filing or priority date, respectively, and, therefore, become prior art at all. It was only at that later date that a translation was available, without which the contents of PCT applications of e.g. Japanese or Chinese origin – and, as a consequence, their relevance for the novelty assessment – could not be determined. The Board cannot endorse this point of view. According to A 153(5), in connection with R 165, international applications filed under the PCT constitute potential A 54(3) prior art. If the EPO is not in charge of their treatment during the international phase, then they are only available to the Office after their publication, because the EPO acting as Designated Office does not make use of the possibility of systematic early transmission under Article 13(1) PCT. Thus it is only 18 months after the filing or priority date, respectively, that the ED can have a complete picture of potential prior rights. If under these circumstances it reaches the conviction that the subject-matter of the claims to be examined is novel, then it may issue a R 71(3) 603 | 3398
T 1849/12 – Bad News For Early Birds
K’s Law – The ebook
communication, without there being any need to wait for a complete translation or an effective entry of the prior international applications into the European phase. To this extent the practice of the EPO not to proffer the possibility of a grant earlier than 18 months after the filing or priority date, respectively is quite understandable under said circumstances. [4] Moreover, the Board wishes to point out that according to A 99(1) the nine-month time limit for filing an opposition is triggered by the publication of the mention of the grant of the EP in the EP Bulletin. If this moment was situated well before the end of the 18-month period pursuant to A 93(1), then the prior art pursuant to A 54(3) that is relevant for the granted patent would not be completely available to the public at the time of grant. Potentially novelty-destructive prior art would only emerge during the time limit for filing an opposition although it might be relevant in view of the ground for opposition pursuant to A 100(a). This would significantly complicate the assessment of the validity of the patent by third parties, and, consequently, their decision whether an opposition should be filed. In the worst case scenario the time limit for filing an appeal could expire before all A 54(3) prior rights were publicly available, which would constitute a considerable systematic disadvantage and would run counter to the intentions of the legislator regarding opposition proceedings, which have been mentioned under point [3.1]. […] The appeal is dismissed. NB: The Board has also prepared take-away headnotes: When the ED refuses a request that is limited in time (zeitlich gebunden) then it has to allow for a separate appeal if this is the only way to remedy any adverse effect (see point [2.2]). The decision whether the requirements of the EPC are fulfilled and whether the patent may be granted lies exclusively with the competent ED (see point [3.1]). I find this decision quite stimulating. I personally agree with the legal conclusions of the Board, but I also find the applicant's criticism of the Guidelines to be justified: for some mysterious reason, A 93(2) appears to envisage the possibility of a grant before the 18-month time limit, whereas the Guidelines seem to prohibit it. This has a slight ultra vires flavour. Should you wish to download the whole decision (in German) or have a look at the file wrapper, just click here.
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T 1413/08 – There Are Alternatives
K’s Law – The ebook
T 1413/08 – There Are Alternatives 16 Mrz 2013
Claims 1 and 2 on file in this examination appeal case read (in English translation): 1. A replaceable liquid filter, particularly for the lubricating oil of an internal combustion engine, comprising a substantially cup-shaped housing (12) with a concentrically disposed outlet opening (17) for the filtered liquid and at least one inlet opening (16) for liquid to be filtered, and a filter element (18) disposed in a sealing manner between the inlet opening (16) and the outlet opening (17), wherein the housing (12) is connected to a top plate (14), and the top plate (14) is connected to an end plate (13), characterised in that the top plate (14) encloses a displacement space (24) which is disposed in a feed chamber in a part which mates with the replaceable liquid filter, so that the inlet opening (16) in the top plate (14) is disposed in the area of the displacement space (24), wherein a backflow check valve (26) is disposed in the area of the displacement space (24), such that liquid cannot leak from the replaceable liquid filter (10) when the filter is detached. 2. A replaceable liquid filter, particularly for the lubricating oil of an internal combustion engine, comprising a substantially cup-shaped housing (12) with a concentrically disposed outlet opening (17) for the filtered liquid and at least one inlet opening (16) for liquid to be filtered, and a filter element (18) disposed in a sealing manner between the inlet opening (16) and the outlet opening (17), wherein the housing (12) is connected to a top plate (14), and the top plate (14) is connected to an end plate (13), characterised in that a volume contour (35), preferably made of metal, is connected to the end plate (13) and the top plate (14), which comprises the inlet opening (16) on the one hand and extends into the cylinder head (11) on the other hand, thereby forming a displacement space (24), wherein a backflow check valve (26) is disposed in the area of the displacement space (24), such that liquid cannot leak from the replaceable liquid filter (10) when the filter is detached from the cylinder head (11). (my emphasis) The Board inter alia had to decide whether it was justified to have two independent product claims. *** Translation of the German original *** [4] The Board is of the opinion that the subject-matter of independent product claims 1 and 2 define alternative solutions for the problem defined under point [3.3] [i.e. to provide a replaceable liquid filter where the amount of liquid that is released when the filter is disassembled is reduced]. As in particular the characterising apparatus parts according to these alternative solutions are different and do not correspond to each other, apart from their suitability to solve the problem, the Board can accept that it is inappropriate to cover the alternatives by a single claim. Thus the situation corresponds to one of the exceptions provided in R 43(2)(c) according to which the European patent application may contain more than one independent claim of the same category. Moreover, the inventions according to claim 1 or 2 have the technical relationship that is required by R 44. It is expressed in the corresponding particular technical features which characterise the subject-matter of claims 1 and 2, respectively and which define a contribution which the respective claimed invention makes over the prior art. Thus the requirement of unity of invention is fulfilled (A 82). Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1785/10 – Worthy Of Trust
K’s Law – The ebook
T 1785/10 – Worthy Of Trust 15 Mrz 2013
In this case the Board had to decide whether technical drawing D8 had been made available to the public before the effective date of the opposed patent.
Click to enlarge *** Translation of the German original *** Request for a hearing of witnesses [2.1] In a letter dated November 5, 2012, the [opponent] requested that the witnesses Arne Hermsen and Olaf Brockmann be heard. These witnesses had already been proposed in the notice of opposition dated November 13, 2008, but the Opposition Division had not heard them. The Board is of the opinion that – because of the circumstances of the alleged disclosure, in particular of D8, without any obligation to maintain secrecy – it is appropriate to hear the witnesses under A 117(1)(d). [2.2] During the oral proceedings (OPs) before the Board, the [patent proprietor] requested the Board not to hear the witnesses. However, all the arguments presented by the [patent proprietor] in this context did not concern the question of whether a hearing would make sense, but the assessment of the written evidence already before the Board. [2.3] Thus the Board decided to hear the witnesses Arne Hermsen and Olaf Brockmann on the assertion of the [opponent] according to which documents D8 and D9 had been made available to representatives of the Seondo company in May 1996 without there having been any obligation to maintain secrecy. The status of document D8 as prior art [3.1] During the OPs held on December 8, 2012, the Board has heard the witnesses Hermsen and Brockmann, both of which are employees of the [opponent]. The witnesses have described the circumstances under which the documents which are referred to as D8 and D9 in these proceedings were made available to representatives of the Korean company Seondo in early 1996. [3.2] It all began with a round trip to various countries of Southeast Asia of the chief marketing director of the [opponent], Dr Voss, towards the end of 1995. The purpose of this trip was to establish new commercial contacts in order to strengthen the then rather weak commercial relationships to companies in these regions. It is in this context that a contact to the Korean company Seondo was established. This company was then dealing with a 606 | 3398
T 1785/10 – Worthy Of Trust
K’s Law – The ebook
project of the state-owned Korean energy supplier KEPCO (Korea Electric Power Corporation). This project concerned the installation of 25.8 kV switchboards. In January 1996 there was a first meeting with representatives of the Seondo company, in the course of which the technical options that the [opponent] could offer were presented, i.e. purely cast resin insulated transformers, which were part of the standard production, as well as metal-encased transformers, none of which satisfied Seondo. The [opponent] was asked to prepare a proposal that was in line with the needs of Seondo and that would also be approved by KEPCO. This is what happened; finally drawing D9 was sent as a proposal solution to Korea. In March Seondo then asked [the opponent] to present this design with a primary circuit fuse (primärseitige Sicherung), which resulted in drawing EKM-Ps-96/08 being sent to Korea. However, Seondo sent the feed-back that KEPCO would not approve this solution because the device was too voluminous. There was a further meeting in May where a solution was sought in collaboration with Seondo, because the [opponent] was very much interested in concluding a deal. During this conversation the drawing referred to as D8 (drawing EKM-Ps-96/08 with handwritten remarks) was used as a basis for the discussions with Seondo. Finally a different technical solution was found and then also approved by KEPCO; however, only few of the corresponding devices were ordered and delivered. There was no concern of secrecy or confidentiality during the whole negotiations; the representatives of the [opponent] had not even considered this [issue]. [3.3] The Board is of the opinion that this factual situation is established on the basis of the testimonies of the witnesses Hermsen and Brockmann. Their statements corresponded to each other as to the core issues insofar as the factual situation was the same. The witnesses are consistent and plausibly describe the attempts of the [opponent] to gain a foothold on the Asian market, to adapt the existing offer and to tailor it to the needs of potential customers. In this context the approval of the product by the state-owned energy supplier KEPCO was always an underlying matter of concern. The statements are also consistent with the contents of the few documents on file regarding this context, i.e. D10, D11, D12, and D15. [3.4] The arguments of the [patent proprietor] directed against the trustworthiness of the witness statements are not suitable for raising doubt on the trustworthiness of the witnesses or the credibility of their assertions. [3.4.1] The [patent proprietor] first pointed out that the events mentioned by the witnesses had occurred more than 16 years earlier and expressed doubts that somebody could actually remember events belonging to the professional sphere so long after they had occurred. In this context the witness Hermsen has declared that this project had been his first big project in Southeast Asia, that he had put a great amount of time and energy into it and that it finally had ended in a disappointing manner because only few devices had been sold. The Board finds this declaration to be plausible. It is understandable that somebody would remember a big project at the beginning of his professional career which has had such an outcome, even after many years. [3.4.2] The Board does not consider the alleged disagreement between the date 27.02.96 mentioned on D8 and the assertions of the witnesses to be a contradiction. Rather, this date confirms that the drawing EKM-Ps-96/08 was made by the technicians of the [opponent] on the company’s own initiative and not as a reaction to the invitation on behalf of Seondo (see also D12) received in March 1996. That this date is correct is also confirmed in D16. [3.4.3] The Board does not attach much importance to the alleged disagreement regarding the handwritten remark on document D10. This is a minor issue that can hardly be clarified any more and that does not raise doubts regarding the declarations of the witnesses. [3.4.4] Nor does the Board attach any importance to the fact that the [opponent] later filed an application (D7) which also contains the solution shown in D8. The witness Brockmann has declared in this context that he did not know the reasons [for this filing]; it was not part of his duties to decide on what would be the object of patent applications. In this context the Board notes that one can imagine many reasons why something that is not patentable from the start would be the object of a patent application, even if the applicant is well aware of the situation. However, such considerations are merely speculative and are not suitable for raising doubts regarding the statements of the witnesses. [3.5] Thus the Board holds that the factual situation was such that the existence of a secrecy agreement was rather unlikely. This is because the present situation does not correspond to a collaboration between two companies in view of the development of a new product but to sales negotiations the first purpose of which was to tailor a product so that it would fit the expectations of the customer. The main issue was to create the basis for doing business at all. In this context the Board notes that a secrecy agreement, if such an agreement had been desired, would only have made sense if KEPCO had been included as well, because KEPCO had to examine and approve the design. However, it would have been very difficult, if not impossible, to include this [organism].
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T 1785/10 – Worthy Of Trust
K’s Law – The ebook
[3.6] If, according to the declarations of the witnesses, there was no explicit secrecy agreement, and if, considering the circumstances, such an agreement was not to be expected, then there is even less reason to assume a “tacit” secrecy agreement. The fact that D8 and D9 mention the DIN34 (cf. D17) cannot alter this conclusion. Thus the Board holds that documents D8 and D9 were part of the state of the art at the priority date. The claimed subject-matter was then found to lack novelty and the patent was revoked. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 366/11 – Wrong Order
K’s Law – The ebook
T 366/11 – Wrong Order 14 Mrz 2013
The parties to opposition proceedings often file documents and requests just one month before oral proceedings (OPs), the common time limit set for such submissions. The Opposition Division (OD) has to take great care when deciding on the admissibility of these submissions, as the present decision shows. The opposition had been filed against the patent as a whole based among others on A 100(a) in combination with A 54 and A 56 in view of inter alia document D1. In an annex to summons to OPs issued on 2 June 2010, the OD communicated its preliminary opinion that the cited prior art appeared prejudicial to both novelty and inventive step. Prior to the OPs the opponent, with two letters received on 5 and 9 October 2010 respectively, filed new documents D6 to D9 as further evidence of lack of novelty against the granted claims. Almost at the same time, with letter received 7 October 2010, the patentee submitted new main and auxiliary requests directed at amendments to the granted claims. OPs before the OD took place on 8 November 2010. The admissibility of the new documents D6 to D9 and the admissibility of the new requests were discussed. The OD decided not to admit the new documents but to admit the new requests. It subsequently held that the patent could be maintained in amended form according to the main request. The opponent filed an appeal. Substantial procedural violation [3.1] In the case at hand, the appellant-opponent in the lead-up to OPs before the OD filed new documents D6 to D9 in two submissions on 5 and 8 October 2010. Both were filed on or before the deadline for filing submission set in the summons. In the accompanying letters the [opponent] cited these documents in new attacks against the granted claims then on file. [3.1.1] Almost concurrently the respondent proprietor on 7 October 2010 filed new main and auxiliary requests. Whereas granted claim 1 was directed at a ventilation unit with a fan with cup-shaped central body and connected blades and at least one through window in the annular walls of the central body for channelling out condensate, the new requests added features of an external frame with an annular wall, a central sleeve and connecting ribs, with the annular wall of the fan central body extending from its base wall to the central frame of the sleeve, and of the condensate being channelled out due to centrifugal force when the fan rotates. [3.1.2] At the OPs, the OD chose to first discuss admissibility of D6 to D9, deciding not to admit them. The division reasoned, see its written decision, reasons 2, first paragraph, that these documents were “prima facie not more relevant than documents D1-D5”. In the following paragraphs it then summarized each document’s contents in relation to the features of granted claim 1, in particular the central features of openings in the annular wall of the fan’s central body. D6 and D7 were not found to have this feature, while D8 and D9 were not seen to relate to a ventilation unit but were in a different technical field. No mention is made of any of the features added to claim 1 of the new main or auxiliary requests. Clearly, the division assessed prima facie relevance of D6 to D9 in relation to the granted claim 1 then still on file. [3.1.3] Subsequently, it discussed admissibility of the new requests and decided to admit them, as recorded in sections 4 and 5 of the minutes. This would have been unobjectionable but for the fact that the appellantopponent had expressly stated at the OPs that he was now citing D6 to D9 against the new requests: point 4.1 of the minutes records: “OPP argues that D6-D9 are admissible due to the newly filed main request and auxiliary requests from PRO, where new subject-matter has been introduced into the claims from the description.... “ and again at point 4.5: “OPP repeats that new features were introduced ....”.
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T 366/11 – Wrong Order
K’s Law – The ebook
[3.1.4] After the new requests had been admitted and the discussion had moved on to inventive step, the appellant opponent made a further attempt to introduce D6 to D9: the minutes duly record at section 9.6 : “OPP ... also considers that novelty of claim 1 is not fulfilled in view of documents D6 and D9 and requests that this statement is minuted”. The OD denied this attempt stating, point 9.7 of the minutes: “CH reminds the OPP that documents D6-D9 are not part of the file and hence no novelty objections on the basis of D6-D9 had been validly brought in the opposition procedure”. [3.2] D6 to D9 may thus have been originally cited against the granted claims, it is clear from the above that at the first instance OPs the appellant-opponent decided to cite these documents in response to the new requests, which he had received shortly before the proceedings. He did so in particular as he believed these documents to be more pertinent than those already on file for the features added to claim 1 in the new requests, as is clear from the minutes […]. [3.3] The Board notes that the amendments made to claim 1 in the new main and auxiliary requests are by no means trivial or insignificant. More importantly, the appellant-opponent could not reasonably have foreseen them. [3.3.1] As stated, the new main and auxiliary requests added new features to claim 1 that pertain to an external frame with annular wall, central sleeve and connecting ribs, the relative position of the fan central body and the external frame, as well as condensate being channelled out due to centrifugal force when the fan rotates. As indicated in the accompanying letter of 7 October 2010 […] the respondent-proprietor included these features to better distinguish the claimed ventilation unit from that of D1 cited in the opposition grounds. He was reacting to the provisional finding of the OD in […] the annex to the summons […], that the ventilation unit of D1 appeared to fall within the terms of granted claim 1, taking away novelty. The new features were thus intended to establish novelty. They were thus clearly substantial amendments to the claimed subject-matter. [3.3.2] However, rather than being based on dependent claims, which together with the independent claims define the exclusive rights that are the object of an opposition, they derive from the description. […] As the description is not the main focus of an opposition, and it moreover contains a wealth of detail it is difficult if not impossible for an opponent to foresee amendments deriving from the description. Nor was there any hint in the annex to the summons of the OD that exactly those parts of the description, or those specific features should play a role in the discussion on novelty vis-à-vis D1. Section 3 […] identifies as central to novelty the question of how to interpret the features in granted claim 1 of the base and annular wall of the fan central body. There is no suggestion, let alone mention, of the external frame or its role in the unit. In conclusion the amendments could not reasonably have been foreseen. [3.4] Confronted with amendments filed shortly before OPs that were significant and could not reasonably have been foreseen by the opponent, the OD had the discretion to take two possible courses of action. The first was to not admit the amendments, exactly because the opponent could not have reasonably foreseen the amendments, and continue the proceedings on the basis of the claims then on file, namely the granted claims. It chose not to follow this route but to rather admit the requests. In this case, however, the principles of equal treatment and the right to be heard required that the OD should then afford the appellant opponent a fair opportunity of responding in an appropriate manner to what were objectively speaking, unforeseeable amendments. Here, according to established jurisprudence and best practice as summarized above, an appropriate response could mean adducing new evidence. This indeed is how the opponent responded, when he stated at the OPs that he wished to cite D6 to D9 against the new requests. [3.5] The appellant opponent cited D6 to D9 in particular because he considered these documents to disclose all or some of the added features. A cursory examination of these documents confirms this view. They are all indisputably concerned with electrically driven cooling fan units. [3.5.1] Figures 1 and 2 of D6 show a fan 10 with a cup-shaped hub 12 having a base 13 and an annular wall 14 set within an external frame with annular wall 44, central sleeve 52 and connecting ribs 48. The central hub 12 moreover has what appear to be openings 26 where base and walls meet, similar to the placement of the windows 25 in figures 2 and 4 of the contested patent. That the teaching of D6 might be so deficient as not to be realizable is not immediately apparent to the Board from the cursory inspection necessary to determine whether its citation is an appropriate response. 610 | 3398
T 366/11 – Wrong Order
K’s Law – The ebook
[3.5.2] D7, see figures 5 and 6, also shows a frame 10 surrounding bladed fan 16. [3.5.3] The passages of D8 cited by the appellant opponent in the accompanying letter of 9 October 2010, page 1, lines 12 and 13, and figure 1, page 2, lines 69 to 92, 116 and 117 refer to the use of centrifugal force to expel water in a motor that can be used for a fan. [3.5.4] D9, finally, shows a similar arrangement of an electric motor with surrounding fan unit 10 with airing holes at 10, see also cited passage in column 2, lines 41 and 42. [3.5.5] Upon cursory inspection the Board thus finds D6 to D9 to be relevant to the added features. It considers their citation to thus constitute an appropriate response to the amendments. [3.5.6] In this regard it is irrelevant that D6 and D9 had originally been cited against the granted claims and before the appellant opponent could have known of the amendments. Once the amendments had been admitted it was his prerogative under the principle of equal treatment and the right to be heard to adduce evidence of his choice in formulating an appropriate response. That he should choose to rely on the same documents he had belatedly submitted against the granted claims, as these by chance also happened to be relevant to the added features, cannot change this fact. [3.6] As the appellant-opponent’s citation of D6 to D9 is seen to constitute an appropriate response to substantial amendments to claim 1 that were not reasonably foreseeable, the OD’s final refusal during the discussion of inventive step of the amended claim 1 […] to consider these documents deprived the appellant-opponent of the opportunity to respond in an appropriate manner to the amendments. This refusal severely limited his ability to react to these unforeseeable amendments. In a manner of speaking the appellant-opponent was made to fight with his hands tied behind his back. This violated both the principle of equal treatment of parties and the appellant-opponent’s right to be heard. This violation of fundamental procedural principles is a substantial procedural violation that has seriously flawed the procedure and prejudiced its outcome. It justifies a remittal to the first instance and the reimbursement of the appeal fee, Article 11 RPBA and R 103(1)(a). [3.7] The Board adds that an OD, naturally, must have some discretion in the way it conducts OPs, this in particular if it wishes to hear the parties on all decisive issues in as efficient a manner as possible. It is therefore not wrong in principle to decide the admissibility of new documents prior to discussing the admissibility of new claims. This would be the case, for example, if new documents are cited exclusively against the claims then on file (say, the granted claims) or, alternatively, if the amendments do not result in significant changes in the claimed subject-matter. In that case admissibility could be decided on the basis of the documents’ prima facie relevance to the claimed subject-matter in accordance with well-established practice. Nor can this approach be faulted if the amendments in question are then subsequently not admitted. [3.8] In the present case, however, in order to safeguard the appellant-opponent’s rights, once he had cited D6 to D9 also against the proposed substantial amendments the OD should have first discussed the admissibility of the amendments. Only once that issue had been decided, would it have been clear in which context – that of the granted or the amended claims – admissibility of the documents could be discussed. Here the Board notes that documents that have limited relevance to an initial set of claims may acquire new relevance as a result of subsequent amendments to those claims. A document’s relevance is thus not an absolute; (for the purpose of admissibility) it should normally be decided relative to the amended claims against which it is cited. Further procedure [4] To expedite the procedure and given the prima facie relevance of D6, D8 and D9 to the amended claims of the main request that the OD admitted into the proceedings and ultimately held allowable, the Board exercises the powers of the first instance under A111(1) and admits these documents into the proceedings. The appellantopponent no longer requests admission of D7 and this document can be disregarded. Further prosecution of the case should consider all outstanding issues raised by the appellant-opponent in view of the prior art of D6, D8 and D9, in particular novelty and inventive step, as well as any issues that may arise in connection with amendments made. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 947/09 – Late Objections
K’s Law – The ebook
T 947/09 – Late Objections 13 Mrz 2013
In case you had doubts – Article 12(4) RPBA also applies to late filed objections, as the present decision illustrates [1] In the “Notice of opposition”, the opponent/appellant raised an objection under A 100(b) concerning the plasmid shown in Figure 2B and described in Example 2 of the patent-in-suit. A further objection concerned the subject-matter of claim 6 ([…]. Both objections were addressed by the opposition division (OD) in its communication annexed to the summons to oral proceedings (OPs) […]. In its reply to this communication, the opponent/appellant referred only to A 100(a) EPC/A 56 EPC and no comments were made on A 100(b). According to the “Minutes of the OPs before the OD” (hereinafter the “Minutes”), the parties had no comments under A 100(b) in addition to those filed in writing […]. As regards A 100(b), the OD in the decision under appeal gave only reasons for the opponent/appellant’s objections raised in the “Notice of opposition”. The decision of the OD on these objections was not contested in the appellant’s grounds of appeal and thus, it is not part of the present appeal proceedings. [2] In the statement of grounds of appeal, the appellant raised a new objection under A 100(b) based on an alleged lack of guidance of the patent-in-suit for performing the invention over the whole range claimed […]. Although this objection is new under A 100(b), it is related to an objection originally raised under A 100(a)/A 56, namely that it was not plausible that the technical problem had been solved over the entire breadth of the claims […]. No reasons were given for justifying the introduction of this objection in appeal proceedings under A 100(b) and/or for explaining why it could not have been submitted in an earlier stage of the proceedings. [3] In its communication pursuant to Article 15(1) RPBA, the board – with reference to the function of an appeal proceedings as established in the case law (cf. “Case Law of the Boards of Appeal of the EPO”, 6 th edition 2010, VII.E.1, page 821) – questioned whether the appellant’s objection was admissible under A 100(b) and referred to the discretion conferred on the board by Article 12(4) RPBA. In reply to this communication, the appellant maintained the new objection under A 100(b) and referred to the case law in support of its admissibility. At the OPs before the board, the appellant referred to its written submissions and made no further submissions on this issue. [4] The subject-matter of claim 1 is directed to a product, i.e. a nucleic acid molecule, defined by several structural elements which are either present or absent […]. The claim does not mention a technical effect or functional feature of said nucleic acid molecule. The board fails to see any technical problem or difficulty for a skilled person to achieve the defined nucleic acid molecule and there is no evidence on file to the contrary. According to decision G 1/03 [2.5.2] “... if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step ...”. Thus, as regards the subject-matter of claim 1, appellant’s objection is relevant only under the requirements of A 100(a)/A 56. [5] The subject-matter of claim 13 is directed to a method of obtaining non-infectious, non-replicating, immunogenic HIV-like particles. It is required that the constitutive expression of the nucleic acid molecule of any of claims 1 to 10 (comprised in an expression vector of claims 11 or 12) in mammalian cells results in a stable production of these non-infectious, non-replicating, immunogenic HIV-like particles […]. Thus, in line with decision G 1/03 [2.5.2] which states that “... (i)f an effect is expressed in a claim, there is lack of sufficiency of disclosure ...”, the appellant’s objection as regards the subject-matter of claim 13 could be relevant under the requirements of A 100(b). However, in view of the late filing of this objection […] and of the prosecution history of the present case and, more importantly, of this particular objection during the first instance proceedings, the board, exercising its discretion under Article 12(4) RPBA, refrains to deal with this objection here and finds it more appropriate to consider it under the requirements of A 100(a)/A 56 […]. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1018/10 – Partially Rounded
K’s Law – The ebook
T 1018/10 – Partially Rounded 12 Mrz 2013
Claim 1 of the patent as maintained by the Opposition Division read (in English translation): Implant (6) for the inter-vertebral space (25) with A) an essentially cuboid shaped body (7) with different diameters (D1, D2) between the lateral surfaces (14, 15) as well as between an upper surface (16) and a lower surface (17); whereby B) the lateral surfaces (14, 15) between which the smallest diameter (D1) extends are mostly parallel and flat; and with C) a device (8) for grasping by a tool (9), characterized in that D) the implant (6) presents a chamfered lenticular profile in the longitudinal section of its largest diameter (D2); whereby E) the upper surface (16) and the lower surface (17) between which the largest diameter (D2) extends are destined to contact an adjacent vertebral body each F) the implant (6) has a partially rounded section perpendicular to its longitudinal axis (35); and G) the implant (6) is provided with a through hole (18) having the shape of an oblong groove with parallel walls (19,20). (my emphasis)
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T 1018/10 – Partially Rounded
K’s Law – The ebook
The opponent objected that the claim was not clear because the longitudinal axis was not defined and could be, for instance, the longitudinal axis of the backbone. Moreover, the claim did not clearly state where the section was rounded. This difficulty could not be overcome by considering the description because in column 8, lines 35 to 37 it was disclosed that there was a “rounded side … on the upper edge of the front axial end” only , whereas Figures 10 and 11 disclosed that the rounded parts extended along one or two edges, respectively.
In addition to that, it was not clear what was meant by “partially rounded section” because this wording encompassed both the embodiments according to figures 2 to 6, where all edges of the section were rounded, as well as the embodiments of figures 10 to 13, where only some of the edges were strongly rounded. Finally, the combination of features F and G generated another lack of clarity with respect to the expressions “longitudinal axis” (Längsachse) and “oblong groove” (längliche Rille). An opening that extended parallel to the longitudinal axis contradicted the embodiments shown in the figures. *** Translation of the German original *** [3] Feature F of claim 1 requires the implant to have “a partially rounded section perpendicular to its longitudinal axis”. According to feature A the implant is an essentially cuboid shaped body. In a cuboid having, according to feature A, different lateral lengths, the longitudinal axis is well defined as the axis that is parallel to the edge of greatest length. The interpretation according to which the longitudinal axis is the longitudinal axis of the backbone is absurd and has to be dismissed, be it only because this would not be technically meaningful in connection with feature A. The passage regarding the position of the partially rounded section on column 8, lines 35 to 37, to which the [opponent] has referred, is clearly erroneous because both figure 10, to which this passage refers, and the rest of the description show that the rounded parts are not only on the upper edge of the front axial end but extend along the whole length of the edge of the cuboid. Thus, in the light of the description, feature F is to be understood in such a way that each section is to be partially rounded. It is true indeed that the wording of claim 1 requires a section (ein Querschnitt; the German ‘ein’ is ambiguous and could be translated by both ‘a’ and ‘one’) to be partially rounded, so that, from a purely grammatical point of view, the feature could be understood in the way proposed by the [opponent], i.e. that there is only one section with rounded parts. However, a patent has to be interpreted with the willingness to understand, and not with the willingness to misunderstand, so that technically unreasonable interpretations are excluded. However, the interpretation proposed by the [opponent] does not make any technical sense, so that feature F can only be interpreted in such a way that the rounded part(s) extend along the whole length of the implant, as also disclosed in the earlier application. Also, in the light of the description, the expression “partially rounded section” can only be interpreted to mean that it either encompasses a section all edges of which are slightly rounded and/or a section where some of the edges are more strongly rounded. Thus feature F encompasses both the embodiment according to figures 3 to 6, as well as the embodiments according to figures 10 to 12. The fact that a claim can be interpreted in a broad way does not make it unclear. 614 | 3398
T 1018/10 – Partially Rounded
K’s Law – The ebook
Finally, it is clear from the entire wording of the claim that the adjective “oblong” (länglich) referring to the through hole of the implant in feature G is unrelated to the longitudinal axis (Längsachse) of the implant F but only describes the shape of the hole. Thus claim 1 fulfills the requirements of A 84 EPC (1973). Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1486/11 – You Should Have Noticed
K’s Law – The ebook
T 1486/11 – You Should Have Noticed 11 Mrz 2013
This is an appeal against the decision of the Examining Division, dated February 28, 2011, to refuse the application under consideration. A notice of appeal was received by letter dated March 23, 2011. The statement of grounds of appeal was filed by a letter dated May 19, 2011. Under cover of the same letter was an authorisation to debit the appeal fee from the representative’s account. A communication noting a loss of rights pursuant to R 112(1) was issued on July 21, 2011, stating that the appeal fee had been paid out of time and that the appeal was accordingly deemed not to have been filed (A 108, second sentence,). The appellant then filed a request for re-establishment of rights under A 122 and paid the corresponding fee. The appellant did not contest that the appeal fee was paid late but argued that this was attributable to a defective smart card which was used in the on-line filing process to authorise and to debit fees from the attorney’s deposit account at the EPO. When the representative’s secretary later (March 24, 2011) filed the notice of appeal by facsimile, she had unfortunately omitted also to file an order to debit the appeal fee from the account at the EPO. Such an oversight, which constituted a single mistake in a well-functioning system, could only be attributed to the “human factor”. The representative had become aware of the omitted payment only after his return from his summer holiday, on August 15, 2011, when a communication from the EPO dated July 25, 2011 in respect of the loss of rights, first came to his attention. Therefore, the request for re-establishment of rights was filed in good time. [1] The late filing of the appeal fee was not disputed by the appellant. As regards the failure to meet the time limit for filing a request for re-establishment of rights, the following is to be noted: [1.1] The payment of the appeal fee had to be made on 7 April 2011, but was only made on 19 May 2011 along with the filing of the statement of grounds of appeal. It follows that the payment of the appeal fee was out of time and that the appellant must have been aware of the belated payment. This was not contested by the appellant. [1.2] The communication noting the loss of rights was dated 21 July 2011. The appellant received this communication on 25 July 2011. [1.3] R 136(1) defines inter alia a general period for requesting re-establishment, which is two months from the removal of the cause of non-compliance with the period. The two-month period of R 136(1) is triggered by the removal of the cause of non-compliance, i.e. by the event which causes the party to become aware that a loss of rights had occurred. [1.4] R 136(1) lays down that a request for re-establishment must include the filing of a written request and the payment of a fee. R 136(2) adds the requirement of completion of the omitted act. In the present case, the omitted act (i.e. non-payment of the appeal fee) was already completed on 19 May 2011 by payment of the appeal fee. [1.5] It follows that in this case the two-month limit for the request for re- establishment expired on 19 July 2011 (19 May 2011 + 2 months). 616 | 3398
T 1486/11 – You Should Have Noticed
K’s Law – The ebook
[1.6] Apparently, the appellant considered the starting point of the two-month period pursuant to R 136(1), first sentence, to be either the day on which the representative personally took note of the content of the communication from the EPO concerning the loss of rights (15 August 2011) or, in any event, the date on which this communication arrived at his office (25 July 2011). However, the start of the two-month period is the moment at which the appellant – exercising the due care stipulated by A 122(1) – was no longer prevented from performing the payment of the appeal fee (see M. Singer / D. Stauder (Editors), “Europäisches Patentübereinkommen: Kommentar”, 3 rd edition, published by Carl Heymanns KG, Köln, Germany, A 122, note 107). In the present case, the payment of the appeal fee was made on 19 May 2011. Had all due care been exercised, this payment could not have been made without its belatedness being noticed. [1.7] Accordingly, the two-month time limit for filing a request for re-establishment of rights expired on 19 July 2011 (19 May 2011 + 2 months). The period for paying the fee for re-establishment of rights expired on the same date. [1.8] Since both the payment of the fee for re-establishment of rights and the request for re-establishment of rights were only made on 15 September 2011, both acts were performed after the expiry of the prescribed time period. The request for re -establishment of rights is therefore deemed not to have been filed (R 136(1), last sentence). [2] It follows from point 1.8 above that the loss of rights pursuant to R 112(1), as communicated to the appellant by official letter dated 21 July 2011, cannot be remedied by way of restitutio in integrum. Consequently, pursuant to A 108, second sentence, the appeal is also deemed not to have been filed. [3] As the appeal had not been validly filed, the appeal fee and the fee for re-establishment of rights have to be reimbursed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2359/09 – Baring The Teeth
K’s Law – The ebook
T 2359/09 – Baring The Teeth 9 Mrz 2013
Claim 1 of the main request before the Board read (the amendments with respect to claim 1 as filed are marked): Apparatus for displacing objects (10) which can be picked up, comprising: - a fork-like member (2) provided with mutually adjacent teeth (3) and only one flexible carrier (4) arranged on each tooth (3), said flexible carriers (4) being drivable in longitudinal direction of the teeth (3) and being adapted for picking up the objects between the teeth (3), - transporting means connected to this the fork-like member (2), - moving means for moving the fork-like member (2) vertically, and - control means for controlling the transporting and moving means, characterized in that at least one pair of mutually adjacent teeth of the fork-like member is equipped with one flexible carrier arranged on each tooth and drivable in longitudinal direction of the tooth the fork-like member (2) comprises at least three teeth (3) each having the flexible carrier (4) arranged on a horizontal side thereof.
In what follows, the Board examines whether the requirements of A 123(2) are fulfilled: [2.1] The patent is concerned with lifting objects, in particular pots, to then put them down with a different spacing […]. This is achieved basically using a fork-lift with a fork-like member that has a flexible carrier such as a belt or a chain on each tooth and driven along its length. The application as filed included claims to the apparatus and its method of operation. Original claim 1 identified the fork-like member, means for moving it vertically and transporting means both under control of a control means. The characterizing part of the claim stated that “at least one pair of mutually 618 | 3398
T 2359/09 – Baring The Teeth
K’s Law – The ebook
adjacent teeth of the fork-like member is equipped with one flexible carrier arranged on each tooth and drivable in longitudinal direction of the tooth”. In the proceedings leading up to grant claim 1 was amended to include the new requirement of the carriers “being adapted for picking up the objects between the teeth”. The characterizing part further includes new requirements that the fork-like member comprises “at least three teeth”, “each having the flexible carrier arranged on a horizontal side thereof”. [2.2] These features have no literal basis in the application as filed as acknowledged by the RespondentProprietor. Rather, they are said to derive from figure 2 of the application as filed. This figure would show the “basic minimum unit” embodying the invention. Figure 2 is shown below.
According to as filed description page 2, lines 24 to 26, this figure is a “cross-section of three teeth”. Further page 5, lines 19 to 22, states: “objects for moving are for instance flower pots 10 with the edge 11 which can be picked up between teeth 3, wherein the edges 11 support on carriers 4 as shown in figure 2”. The Board notes there is no reference sign 11 in figure 2, but it easily infers that these “edges 11” refer to the edges of the rims of the pots 10, by which they are shown resting on the carrier 4. Figure 2 considered in conjunction with the accompanying text is seen to show 3 adjacent teeth with two pots between each pair of adjacent teeth. The carrier 4, shown hatched, extends across the full width of the top and bottom of the cross-section of each of the three teeth 3. The rims of the pots rest on the edges of the carrier 4 on the top of the teeth and are supported thereby. [2.3] When the Board compares the features said to be added to claim 1 from figure 2 with what is actually shown in figure 2 considered in conjunction with the corresponding passages it notes that not all features shown have been included in claim 1, and if they have been they are phrased in much broader terms. Thus, claim 1 does not require the teeth to be adjacent. Rather than stating that the carrier runs over top and bottom of the tooth it is “arranged on a horizontal side”, while the fact that the carrier on the top of the tooth extends over its entire width of the tooth so as to support the pot by its rim is replaced by the carrier “being adapted for picking up objects between the teeth”. Additionally, that there should be at least three teeth, where figure 2 shows exactly three can have no basis in the figure itself. [2.4] The Board is unable to find a basis in the application as filed for these omissions and generalizations of features of figure 2, nor for the added requirement of at least three teeth. [2.4.1] It is well-established in jurisprudence that the inclusion in a claim of some but not all features from a given context is only justified in the absence of any clearly recognizable functional or structural relationship among the features, see e.g. Case Law of the Boards of Appeal of the EPO, 6th edition, 2010, section III.A.2, 619 | 3398
T 2359/09 – Baring The Teeth
K’s Law – The ebook
and decisions T 1067/97, T 25/03, T 1408/04 cited therein. This applies not only to features isolated from a given context in the description but also when taken from figures, see T 191/93. [2.4.2] Applying this approach to the present case the Board finds that in figure 2 the fact that the three teeth are adjacent is clearly functionally important in that it allows the pots to be picked up between them. Similarly, the carriers in figure 2 are only seen to fulfil their function of carrying the pots if they extend across the width of the individual teeth so that the pot rims can rest on them. Finally, if the Board reads figure 2 in conjunction with figure 1 as would the skilled person, it finds that the carrier’s longitudinal movement is due to the fact that it runs around the tooth over its top and bottom surfaces as shown by the hatched areas on the top and bottom of the cross-section of the tooth 3 in figure 2. The Board concludes that these various features are closely linked together in terms of function and structure. The features are thus taught together, in close combination. Introducing only selected ones but not others represents a new teaching which encompasses new embodiments that the skilled person would not have considered when reading the original disclosure. These include, for example, fork-like members with the three teeth separated by teeth without a carrier, or a with a carrier not on its horizontal side; members with teeth bearing carriers that do not extend across the width of the tooth; or members with teeth that have carriers arranged only on the top or the bottom on the tooth. [2.4.3] It is not enough to state, as does granted claim 1, that the carrier is on a “horizontal side” of the tooth, or that it is “adapted for picking up objects between the teeth”. Leaving aside what is exactly meant by “horizontal” in this context, the former formulation allows for the carrier to be arranged on only one side, which can be either top or bottom of the tooth, while the latter does not limit in any way the particular features of the carrier that allow it to support the objects. Both formulations are much broader than is justified by figure 2 alone. Nor is there any basis for such a broad formulation in any other part of the original disclosure. Figures 1 and 3 show the carrier in belt form running around the length of the teeth, on top and bottom and matching its width. Figure 4 illustrates in cross-section a single tooth with chain-like carrier again extending both on top and bottom. How the objects are supported is unclear. [2.4.4] Finally, the original application teaches “at least one pair” of teeth, see claim 1, and gives specific examples of eight, six and three teeth (figures 1, 5A and 2 respectively). There is no indication anywhere that three would represent a technically significant minimum for the number of teeth, either in relation to the application’s original idea or in any other context. The original idea was to have on each tooth one carrier drivable along it, which would allow variation of the distance between pots adjusting the speed of the carrier, see the bridging paragraph of as filed description pages 1 and 2. Apart from the requirement that there should be a minimum of two teeth to be able to pick up a pot, whether there are three, six or eight teeth plays no role. By specifying three as a minimum in granted claim 1 that number acquires a significance it did not have in the original teaching, thus also adding information. [2.5] The Respondent-Proprietor relying on T 404/03 has argued that claim 1 incorporates only the essential features of the “basic minimum unit” which the skilled person will recognize in figure 2. [2.5.1] T 404/03 [10-11] considers the broader application of the essentiality test, developed in T 331/87 for assessing the omission of a feature from an independent claim, to the generalization or isolation of a feature disclosed in a specific context in dependent claims or description. This three point test is concerned with what the skilled person perceives as essential and what not in a claimed constellation of features. This is the main criterion proposed there for deciding whether omission of a feature does not add subject-matter. [2.5.2] The above argument based on the essentiality test presumes first and foremost that the skilled person perceives figure 2 in the totality of the original disclosure as embodying the essence of the invention. The Board is however unable to find any indication in the application as filed that figure 2 might be special in any way over and above the other figures. Its sole purpose is to illustrate one aspect among others of the application’s teaching, namely how pots, the particular objects of interest, can be supported on the carrier via their rims. Page 4, lines 24 to 26, identifies the figure as nothing more than a “cross-section .... of an embodiment” of the invention. That invention is stated in claim 1 as filed and is also outlined in the paragraph bridging pages 1 and 2 as the idea of having one carrier arranged on each tooth and drivable along the tooth, which would allow the distance between objects to be varied in response to variation of the carrier speed, see also as filed claim 12. It differs markedly from the one given in granted claim 1 which gives the number of teeth and the horizontal placement of the carrier centre stage. [2.5.3] Even assuming that the skilled person had read figure 2 as special, the Board is unconvinced that he would have been able to distinguish between features that are and ones that are not essential. All the features shown therein appear to contribute equally to the way the pots are picked up, and no one feature is given greater
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T 2359/09 – Baring The Teeth
K’s Law – The ebook
significance over any other. Nor is this evident anywhere in the text of the description or when considering figure 2 together with the other figures. [2.6] In the light of the above the Board concludes that claim 1 as granted extends beyond the content of the application as filed, contrary to A 100(c). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 134/11 – Intermediate Is Alright
K’s Law – The ebook
T 134/11 – Intermediate Is Alright 8 Mrz 2013
In this case the opponent argued that the appeal was inadmissible as the notice of appeal does not meet the requirements of R 99(1)(b) and (c). In particular it was not possible to appeal against any decision to refuse the claims as granted since the claims as granted were not the subject of the decision. The opponent also argued that the main request should not be admitted into the proceedings pursuant to Article 12(4) RPBA and in line with decisions T 144/09 and T 936/09. This request could have been filed in the first instance opposition proceedings. More specifically, the restriction of this request was a reaction to an objection raised already before the Opposition Division (OD). By filing the main request only at the appeal case, the [patent proprietor] tried to re-open the case and this amounted to an abuse of procedure. The Board did not agree: Admissibility of the appeal [1.1] The [opponent] challenged the admissibility of the appeal on the ground that the notice of appeal did not meet the requirements of R 99(1)(b) and (c). [1.2] R 99(1)(b) requires the notice of appeal to contain “an indication of the decision impugned”. In the present case, the notice of appeal identifies the impugned decision by giving its date (“we herewith lodge an appeal against the decision dated November 17, 2010”) and the number of the European patent in respect of which the decision was issued. The requirements of R 99(1)(b) are thus met. R 99(1)(c) requires the notice of appeal to contain “a request defining the subject of the appeal”. In the present case, the notice of appeal contains the request for “Reversal of the decision and maintaining the patent as granted”. Therefore, the requirements of R 99(1)(c) are met as well. [1.3] The [opponent] basically argued that the decision of the OD did not address the claims as granted because the claims were amended during the course of the opposition proceedings with the proprietor filing an amended main request on 30 August 2010. Therefore, it was not possible to appeal against any decision to refuse the claims as granted since the claims as granted were not the subject of the decision. It is true that the request contained in the notice of appeal for maintenance of the patent as granted is broader than and hence different from the main request before the OD. It is also correct that under certain circumstances, this may render such a request inadmissible. However, R 99(1)(c) does not require the request defining the subject of the appeal to be admissible in order for the appeal itself to be admissible. Hence, even if the request contained in the present notice of appeal were to be indeed inadmissible, this would not entail the inadmissibility of the entire appeal. [1.4] Inadmissibility does not ensue either because an adverse effect within the meaning of A 107 is lacking. A party is adversely affected within the meaning of this Article if the decision fails to meet that party’s wishes (T 244/85 [3]). The relevant issue in this respect is the difference between the formally submitted requests and the order of the appealed decision (T 434/00 [3]). In the present case, the [patent proprietor’s] main request was rejected by the OD and the patent was maintained on the basis of the first auxiliary request then pending before the OD. Hence, the OD did not accede to the proprietor’s main request and the proprietor is thus adversely affected. [1.5] Consequently, the appeal is admissible. The claimed subject-matter The only independent claim of the main request is claim 1, which reads as follows: 1. Chewing gum comprising at least one biodegradable polymer and chewing gum ingredients, said chewing gum ingredients being chosen from the groups of softeners, sweeteners, flavoring 622 | 3398
T 134/11 – Intermediate Is Alright
K’s Law – The ebook
agents, active ingredients, fillers, mixtures thereof and said chewing gum containing less than 1.0 wt% water of the chewing gum, wherein the at least one biodegradable polymer comprises at least 5% of the chewing gum polymers. Admissibility of the main request [3.1] The present main request is no longer broader than the main request before the OD. The question whether any request broader than the main request before the OD is admissible (see point [1.3] above) has thus become irrelevant. [3.2] The [opponent], however, requested that the main request should not be admitted into the proceedings pursuant to Article 12(4) RPBA, because it could have already been filed in the first instance opposition proceedings. More specifically, the introduction of a lower limit with regard to the amount of biodegradable polymer in this request (“at least 5%”) was a reaction to the objection raised already in the first instance proceedings that the effects aimed at in the opposed patent were not achievable for low amounts of biodegradable polymer. By introducing the lower limit into the main request only now, the [patent proprietor] tried to re-open the case, which amounted to an abuse of procedure. [3.3] According to Article 12(4) RPBA, it is in the discretionary power of the board to hold (or not to hold) inadmissible a request which could have been presented in the first instance proceedings. Consequently, the mere fact that a request could have been filed in the first instance proceedings as such does not lead automatically to the inadmissibility of this request (as in this case there would be no discretionary power of the board). On the contrary, normally such a request is inadmissible only in exceptional circumstances. For example, such circumstances may arise where, by the filing of a request only at the appeal stage, a decision by the OD on certain issues is avoided and the decision is shifted to the second instance (this is referred to as “forum shopping” in decision T 1067/08). [3.3.1] In the present case, the OD rejected the proprietor’s main request, which covered any amount of biodegradable polymer, and allowed the first auxiliary request, which required the chewing gum polymers to consist essentially of biodegradable polymers (“substantially free of non-biodegradable polymers”). The present main request, in which the amount of biodegradable polymers has to be at least 5% of the chewing gum polymers, thus constitutes an “intermediate request” in the sense that the amount of biodegradable polymers is between those covered by the main and first auxiliary requests before the OD. [3.3.2] There is no reason to consider the filing of this intermediate request to be an abuse of procedure as alleged by the [opponent]. First of all, as explained by the [patent proprietor], the objection that the effects aimed at in the opposed patent could not be achieved with low amounts of biodegradable polymer was raised for the first time during the oral proceedings (OPs) before the OD (this was not disputed by the [opponent]). As further explained by the [patent proprietor], in reaction to this objection, it had relied on the first auxiliary request submitted prior to the OPs rather than drafting a new request in the form of the present “intermediate” main request, as there was little time available during the OPs. It is thus credible that it was not the [patent proprietor’s] intention to avoid any decision of the OD on the present main request. Furthermore, the effect of filing the present main request is not that the case is re-opened in the sense that new issues arise which were not previously dealt with by the OD. In fact, as is clear from the main request before the OD, the [patent proprietor] aimed throughout the entire opposition proceedings at claims that were less restricted in terms of the amount of biodegradable polymer than the first auxiliary request allowed by the OD. Therefore, the fact that the present main request is less restricted in terms of this amount does not raise any new issues but represents merely a continuation of the approach chosen by the [patent proprietor] all through the first instance opposition proceedings. Therefore, it cannot be argued that by means of filing this request only in the appeal a decision of the OD on certain issues has been avoided such that forum shopping between instances has occurred. [3.4] The main request thus is admissible. [3.5] Contrary to the [opponent’s] view, this finding is not at variance with the decisions T 144/09 and T 936/09. The reason for not admitting certain requests in these decisions was essentially that the proprietor had not filed any request in the first instance opposition proceedings which could have overcome the OD’s objection and in 623 | 3398
T 134/11 – Intermediate Is Alright
K’s Law – The ebook
fact had done so only in the appeal. This is clearly different from the present case, where the first auxiliary request was filed during first instance opposition proceedings and overcame the OD’s objection. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1157/09 – Before, During, After
K’s Law – The ebook
T 1157/09 – Before, During, After 7 Mrz 2013
Raphael’s Madonna of the Goldfinch before, during and after restoration This is an appeal against the revocation of the opposed patent by the Opposition Division (OD). The decision contains an interesting reasoning on the admissibility of the main request: [1] The main request was filed during oral proceedings (OPs). It was originally filed as auxiliary request VI with the grounds of appeal and later renumbered as auxiliary request II […]. After deletion of dependent claim 4 which comprised an embodiment no longer falling within the scope of amended claim 1, it became the main request. [2] The [patent proprietor] and both [opponents] present at the OPs confirmed that the request […] had been submitted during OPs before the OD but was not admitted into the procedure. Although this is not mentioned in the minutes of the OPs, the board sees no reason to challenge this statement. [3] Thus, the question arises whether the request should be admitted in appeal proceedings under the provisions of Article 12(4) RPBA which give the board the power to hold inadmissible requests which were not admitted in the first instance proceedings. [4] The admission of late filed requests in opposition proceedings is at the discretion of the OD (A 114(2) , and the [patent proprietor] submitted that the OD had not exercised its discretion properly. [5] It is established jurisprudence that “[a] board of appeal should only overrule the way in which a department of first instance has exercised its discretion if the board concludes it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way” (Case law, 6 th edition, VII.E.6.6). [6] In the present case however, neither the minutes of the OPs before the OD nor the decision under appeal make any mention of such a request, and the board finds itself in a situation where, due to the absence of any evidence why the OD did not admit the respective request, it is not in a position to assess the basis on which the OD had exercised its discretion. Under these circumstances, the board, exercising its discretion under Article 12(4) RPBA, decided to admit the main request. The Board also discussed compliance with A 123(2) of claim 1 of the main request, which read: 1. A process for making a vaccine for administration to humans or animals comprising: (a) replication of influenza viruses in cell culture, in which MDCK 33016 cells (DSM ACC 2219) are cultured in cell culture in suspension in serum-free medium, the cells are infected with influenza viruses and after infection are cultured at a temperature in the range from 30ºC to 36ºC for virus replication, wherein a protease is added to the cultured cells before or during infection with influenza viruses; (b) formulation of the replicated influenza viruses to give the vaccine. [9] The [opponents] objected to the combination of features in part (a) of claim 1. They argued that the combination of only two of the three points in time specified in original claim 11 with the features of original claim 1 violated the provisions of A 123(2). [10] Claim 11 as originally filed read: “11. The process as claimed in one of claims 1 to 10, in which a protease is added to the cultured cells before, during or after infection with influenza viruses.” 625 | 3398
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K’s Law – The ebook
In the [opponents’] view, claim 11 stated in essence that the point in time of adding the protease did not matter, and the combination of only two out of three possible points in time of adding the protease with the features of claim 1 represented a selection which was not derivable from the application as filed and which resulted in the addition of technical information. [11] In point 1.2.1 of its decision, the OD stated that “The presence of an alleged technical effect resulting from such a selection has no relevance when assessing A 123(2)”. The board does not agree with this statement. Any amendment to the parts of a European patent application or of a European patent is subject to the mandatory prohibition on extension laid down in A 123(2) and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the application documents as filed (cf. G 2/10 [4.3, 1st paragraph]). The test for an amendment to a claim, also for an amendment by limitation, is that after the amendment the skilled person may not be presented with new technical information (cf. G 2/10 [4.5.1]). Whether an amendment of the type in question meets the requirements of A 123(2) depends therefore on the facts of the case and includes an assessment whether the amendment results in new technical effects. [12] Regarding claim 1 of the main request, no argument has been put forward by any of the parties that the selection of two out of the three points in time for adding the protease provided any technical teaching going beyond the application as filed. Since claim 11 as filed directly referred to claim 1 and disclosed three individual points in time for adding the protease, no technical information is added by limiting present claim 1 to two out of the three points in time for adding the protease. [13] Thus, the features of part (a) of claim 1, i.e. replicating the virus in cell culture at a temperature from 30 to 36 degrees C and adding a protease to the cultured cells before or during infection with influenza virus, are based on original claim 11 via its reference to original claim 1. Furthermore, according to the general part of the description as originally filed (page 6, lines 12 to 16), the use of cells growing in suspension, in particular in serum free medium is a preferred embodiment allowing particularly simple and efficient virus replication. The patent application as filed also discloses an MDCK derived cell line, MDCK 33016, adapted to growth in suspension in serum free medium, which is “particularly preferably used in the process according to the invention” (cf. page 5, lines 31 to 38). [14] Dependent claims 2 to 7 are based on originally filed claims 2 and 3, and 12 to 15, and the general parts of the description, respectively (page 4, lines 33 to 36; page 7, lines 14 to 17; page 7, lines 27 to 28). [15] The board is therefore satisfied that the requirements of A 123(2) are met. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1985/11 – Acknowledgement
K’s Law – The ebook
T 1985/11 – Acknowledgement 6 Mrz 2013
The present appeal was filed after the Examining Division had refused the application under consideration. No statement of grounds of appeal was filed within the four-month time limit under A 108. The Office informed the applicant on September 19, 2011, that the appeal would be rejected as inadmissible because there was no statement of grounds. The communication was received at the private practice on September 20, 2011, and signed by attorney-at-law Dr. A. The applicant filed a request for re-establishment on November 29, 2011. The EPO informed the applicant that this request was late-filed because the cause of non-compliance within the meaning of R 136(1) had been removed on September 20. The applicant argued that the paralegals of the private practice had asked Dr. A to sign the acknowledgement of receipt and had entered the communication into the electronic file . Dr. A had read the file only on November 16. Therefore, it was this date that had to be taken into account when calculating the time limits under R 136(1). The Board disagreed: *** Translation of the German original *** [1] An applicant who, in spite of all due care required by the circumstances having been taken, was unable to observe the time limit for filing the statement of grounds of appeal may have his rights re-established upon request. One of the conditions is that the request of re-establishment of rights is filed within two months of the removal of the cause of non-compliance (R 136(1)). [2] According to the established case law the cause of non-compliance is removed on the day on which the competent person (i.e. the applicant or the professional representative) becomes aware or should have become aware that the time limit had been missed. The date of removal of the cause of non-compliance is a question of fact. When the applicant or the professional representative is informed by means of a communication of the EPO that a time limit has been missed, then the cause of non-compliance is removed by the receipt of the communication. The legal fiction of receipt under R 126(2) does not apply (see Case Law, 6th edition, p. 495 ff.). [3] The Board is of the opinion that in the present case the professional representative was informed at the latest by the communication of the EPO dated September 19, 2011, that the time limit fof filing the statement of grounds of appeal had been missed. [4] In the present case the professional representative argues that the communication was indeed received in his private practice on September 20, 2011, and that the person in charge did sign the acknowledgement of receipt, but that he had not read the communication because his assistants had entered the communication into the electronic file at once and had not submitted the communication to him. As the determination of the date of the removal of the cause of non-compliance was a question of fact, the removal of the cause of non-compliance could not have taken place on that day. [5] The Board cannot endorse this argumentation. Even if the removal of the cause of non-compliance is a question of fact, this does not mean that only the actual appropriation (Kenntnisnahme) of the content of the communication is relevant. Rather, it has to be determined when the representative should have become aware of the content of the communication if he had exercised all due care. See e.g. J 24/97 [2.2] and T 1026/06 [4], and the references cited therein. [6] The Board is of the opinion that this date is September 20, 2011, i.e. the day on which the professional representative signed the acknowledgement of receipt. The fact that the professional representative considered it not to be necessary to read or to request the document the receipt of which he acknowledged is not relevant. If the Board followed the representative’s argument, then the representative himself would be in control of 627 | 3398
T 1985/11 – Acknowledgement
K’s Law – The ebook
determining the date of removal of the cause of non-compliance. However, this interpretation contradicts the very purpose of A 122 (cf. T 1561/05 [2.1.3-4]). [7] As the request for re-establishment into the time limit for filing the statement of grounds of appeal has not been filed within two months of the removal of the cause of non-compliance, it is inadmissible. Consequently, the statement of grounds of appeal has to be considered to be late filed. As a consequence, the appeal against the decision of the Examining Division posted on January 21? 2011, is also inadmissible. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1009/12 – No Effect At All
K’s Law – The ebook
T 1009/12 – No Effect At All 5 Mrz 2013
This is an examination appeal. Claim 1 of the auxiliary request read: 1. A process for plating silver onto a surface, wherein the silver is immersion plated from a composition comprises: a) a soluble source of silver ions; b) an acid; c) an imidazole of the following formula:
wherein R1, R2, R3 and R4 are independently selected from the group consisting of substituted or unsubstituted alkyl groups, substituted or unsubstituted aryl groups, halogen, nitro groups and hydrogen; and d) an oxidant selected from nitro aromatic compounds. In what follows the Board discusses whether this claim involves an inventive step: [2.1] The Board comes to the conclusion that process claim 1 of the […] auxiliary request lacks inventive step over the teaching of the uncontested closest prior art D1 for the reasons that follow. [2.2] The English abstract of the Japanese application D1 discloses a process for forming a silver plating on the surface of copper or copper alloy by contacting the surface with an aqueous immersion plating solution. This solution according to D1 has a pH of 3.0 to 4.5 and contains 0.01 to 1.0 %, more preferably 0.05 to 0.5 % silver nitrate (this percentage “%” is interpreted as meaning “wt.%” so that these ranges correspond to 0.1-10 g/l and preferably 0.5-5.0 g/l silver nitrate; thus corresponding to 0.06-6.3 g/l or preferably 0.32-3.2 g/l Ag**(+)-ions), 2-alkylimidazole (see below) as an alkyl imidazole compound in combination with an organic acid, e.g. acetic acid (preferably in the form of the salt). The treating liquid is usually kept at 20-60°C and is brought into contact with the copper or copper alloy for 30 seconds to 5 minutes to form the silver film (see English abstract of D1). [2.2.1] The aqueous immersion plating silver solution of D1 is thus a simple aqueous composition containing silver nitrate, an organic acid (or salt thereof) and e.g. a 2-alkylimidazole. Taking account of the structural formula of the imidazole given in D1, which comprises the two substituents R**(2) and R**(4), and the imidazole description in the English abstract it is clear that the imidazole can be substituted by alkyl groups in the imidazole positions 2 and 4, i.e. R**(4) or R**(2) can be hydrogen:
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T 1009/12 – No Effect At All
K’s Law – The ebook
[2.2.2] The composition described in the English abstract of D1 does not contain any surfactant or chelating agent. [2.3] The process for plating silver onto a surface according to claim 1 of the first auxiliary request - wherein the silver is immersion plated from a composition which comprises a soluble source of silver ions, an acid, an imidazole of the given formula with either R1, R2 and R4 being selected from hydrogen and R3 being selected from substituted or unsubstituted alkyl groups, or R1, R3 and R4 being selected from hydrogen and R2 being selected from substituted or unsubstituted alkyl groups, or with R1 and R4 being selected from hydrogen and R2 and R3 being selected from substituted or unsubstituted alkyl groups (see points VII and 2.2.1 above) - is thus distinguished from the process according to D1 only by an oxidant being selected from nitro aromatic compounds. [2.3.1] The divisional application as originally filed is silent with respect to any effect of this distinguishing feature […], and in the parent application it is presented only as an optional feature of the composition […], also without any effect. [2.3.2] According to the examples I to III of the divisional application the silver plating solution consisted of the four components silver nitrate (1 g/l), methane sulfonic acid (20 ml (70%)/l), 3,5-dinitrohydroxy benzoic acid (1 g/l), l-histidine (1 g/l) and water and copper was plated with it at 100°F (= 37.8°C) for 5 minutes (see examples I-III). This imidazole compound “L-histidine” (IUPAC name) used in the examples I-III can also be designated “2Amino-3-(1H-imidazol-4-yl) propanoic acid”, and thus represents an imidazole of the claimed specific formula wherein R1, R2 and R4 are hydrogen and R3 is a substituted alkyl group, i.e. -CH2-CH(NH2)-COOH. [2.3.3] On the other hand, process claim 1 defines a process for plating silver onto a surface which uses a composition which “comprises” the four specified components in unspecified amounts. According to this open definition the presence of a very small amount of e.g. 5 ppm of said oxidant is sufficient to meet the condition of claim 1 of the first auxiliary request. However, the Board considers that such a low concentration will not cause any effect in view of the common general knowledge of a chemist and the intended purpose of an oxidant. Particularly in the light of the most general range of the oxidant of from 0.1-25 g/l (corresponding to 100-25000 ppm) disclosed in the present application […] it is not reasonable to expect any effect of the nitro aromatic compound in such a low concentration. Therefore claim 1, which does not specify any concentration ranges of the four components at all, is considered to cover embodiments where the mere presence of the nitro aromatic oxidant compound will not produce any effect at all. The appellant’s arguments to the contrary cannot hold for the following reasons. [2.4] First of all, the appellant argued that the skilled person would comprehend the claims as encompassing only effective amounts of the specified components to achieve the technical effects including immersion silver plating as disclosed in the application; he would construe the claims by “building up” and not by “tearing down”, to arrive at an interpretation of the claims which is technically sensible and takes account of A 69 (T 190/99 [2.4]). However, taking account of A 69 cannot be accepted since that decision relates to an opposition case where an interpretation of the claim which is technically sensible takes into account the whole disclosure of the patent (A 630 | 3398
T 1009/12 – No Effect At All
K’s Law – The ebook
69) and therefore does not apply to the present examination case. In such a case, like the present one, the claims have to make sense as they stand. Since none of the independent claims of both requests defines “an effective amount of the oxidant” it is evident that the scope of these claims is not restricted to effective amounts but, to the contrary, encompasses ineffective amounts of said nitro aromatic oxidant. In this context it is further considered that the immersion silver plating composition per se used according to process claim 1 – as described on page 6, second and third paragraphs of the parent application as originally filed (the oxidant was an optional component of the immersion silver plating composition of the parent application; see point [2.3.1] above) – even without the nitro aromatic oxidant provides brighter, smoother and more cohesive silver deposits than baths not containing imidazoles. The same conclusion would be valid for a bath according to process claim 1 which comprises an ineffective amount of e.g. 5 ppm of the nitro aromatic oxidant. Therefore also the appellant’s argument that an effective amount of the oxidant is necessary to obtain a bright silver deposit cannot hold. [2.5] The appellant’s arguments that the experiments of D2 would represent acceptable comparative examples with respect to D1 and would prove an effect of the nitro aromatic oxidant – i.e. to decrease the plating rate and to brighten and improve the silver deposit – cannot hold either. [2.5.1] Regarding the declaration D2 of Ms Toscano, the Board considers unusual that it is neither dated nor that it states that the described experiments have been made in agreement with the present application and/or in agreement with the closest state of the art D1. In substance, D2 discloses the examples A, B and C. Example B repeats example A with the difference that no imidazole was present in the plating composition. Example C repeats example A with the difference that no dinitrosalicylic acid (i.e. the nitro aromatic oxidant) was present (see D2, paragraph 3). The immersion silver plating bath of example A does not specify the silver ion concentration nor that it is aqueous. It comprises besides 10 g/l imidazole (since not further specified it has to be interpreted that all substituents R1, R2, R3 and R4 are hydrogen), 11.3 g/l of hydroxyethylenediaminetetraacetic acid (HEDTA), 5 g/l Chemeen T-15, 5 g/l Igepal Co-730, 0.75 g/l of 3,5-dinitrosalicylic acid (which is the trivial name for the compound “3,5-dinitrohydroxy benzoic acid” disclosed in the present application as the preferred oxidant) and said bath has a pH of 2 adjusted with nitric acid. The copper parts are plated in the bath for 6 minutes at 35°C (see D2, page 1, point 3A). D2 does not contain any explanation of Ms Toscano why said chelating agent HEDTA and said two surfactants (Chemeen and Igepal) have been added to the immersion silver plating solution. They clearly do not figure in the plating solution of D1. [2.5.2] Although the definition “comprising” of claim 1 does not exclude such additional components the present application is absolutely silent with respect to an optional addition of such a chelating agent like HEDTA, or of surfactants such as said Chemeen T-15 or Igepal Co-730 (compare point 2.3.1 above), let alone that such components should be added in such considerable amounts. From a comparison with the components of the composition, temperature and treatment time of example A and the composition and corresponding parameters of examples I-III of the present application (see point [2.3.2] above) it is evident that more than 7 parameters (additional components HEDTA and surfactants, different imidazole in a 10-times higher concentration, lower concentration of nitro aromatic oxidant, longer treatment time and somewhat higher temperature) are modified. [2.5.3] D1 is likewise silent with respect to the addition of the chelating agent HEDTA and surfactants (compare points [2.2.2] and [2.2.3] above) as admitted by the appellant at the oral proceedings. From a comparison between the components of the composition, temperature and treatment time of example A and the composition and corresponding parameters of the abstract of D1 it is evident that at least 3 parameters (additional components HEDTA and surfactants, different imidazole and longer treatment time) are modified. [2.5.4] Taking account of these modifications, both in comparison with the parent application and the closest prior art D1, it is evident that the experiments A, B and C according to D2 do not represent comparative tests as required by the established jurisprudence to demonstrate an alleged effect. According to this established jurisprudence, if comparative tests are chosen to demonstrate an inventive step on the basis of an improved (or surprising) effect, the nature of the comparison with the closest state of the art must be such that the alleged advantage or effect is convincingly shown to have its origin in the distinguishing feature 631 | 3398
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of the invention compared with the closest state of the art (see Case Law, 6 th edition 2010, section I.D.9.9; see T 197/86 [6]; T 234/03; T 378/03). The appellant argued by reference to T 35/85, mentioned in the same section of the “Case Law of the Boards of Appeal”, that it should benefit from the qualification that decision applied to this “established jurisprudence”. Its variants lay close to the invention so that the advantageous effect attributable to the distinguishing feature was more clearly demonstrated. This cannot be accepted since the comparison remains executed with more than one parameter different from either the examples of the present application or the comparison of the abstract of D1. The decisions cited in that part all have in common that it is only the distinguishing feature which is different in the “closest variant” as allowed by the cited decisions. Having, 7 respectively, 3 parameters different can hardly qualify as a “closer variant”. [2.5.5] Since D2 cannot be accepted as a comparative test the alleged effect of the nitro aromatic oxidant vis-àvis the closest prior art D1 has not been proven and all the appellant’s arguments based thereon, including the problem to be solved, need not be considered. [2.6] Furthermore, even if these experiments A, B and C according to the declaration D2 would be considered, they do not prove that a technical effect may be achieved “across the breadth of the claim” as alleged by the appellant. [2.6.1] D2 discloses a single example, i.e. example A which composition comprises all four components specified in claim 1, made with a concentration of 0.75 g/l (corresponding to 750 ppm) of the preferred oxidant, i.e. 3,5-dinitrosalicylic acid (which is the trivial name for the compound “3,5-dinitrohydroxybenzoic acid” disclosed in the present application). This concentration is thus within the preferred range of from 0.5-2 g/l (corresponding to 500-2000 ppm) specified in the first paragraph at page 7 of present application as originally filed. An example containing 750 ppm of the nitro aromatic oxidant represents, however, no proof at all that a non-de minimis concentration of 5 ppm thereof would be effective. [2.6.2] The declaration D2 of Ms Toscano is totally silent with respect to a minimum threshold concentration of the nitro aromatic oxidant. The appellant’s argument that Ms Toscano does not see a minimum threshold as necessary cannot hold since one of her conclusions based on the three experiments A, B and C as drawn in the fourth bullet point of paragraph 4, quoted by the appellant in support, merely and non-specifically states “In optimizing an immersion silver plating bath, the presence and concentration of these additives can be manipulated in various ways to achieve good results”. This non-statement with respect to a minimum threshold concentration, however, does not allow to conclusively derive that such a minimum threshold does not exist, particularly when considering her conclusions in the first and second bullet points of paragraph 4 that neither imidazole nor organic nitro compounds are necessary to achieve an acceptable silver plate. [2.7] According to the established case law, features which do not contribute to the solution of the problem set in the description are not considered in assessing the inventive step of a combination of features (see Case Law, 6 th edition 2010, section I.D.8.4, in particular T 206/91 [5.5]). Since process claim 1 includes silver plating compositions including unspecified, therefore also ineffective concentrations of the nitro aromatic oxidant (see points [2.3.3] and [2.4] above) this feature can only be considered as an arbitrary feature, because it is not credible that it contributes to the solution of the underlying technical problem. The Board therefore does not further consider it. Moreover, in a case like the present one it considers that for the same reason the formulation of a less ambitious problem, i.e. to provide an alternative solution with the same effect, based on this alleged distinguishing feature cannot hold either. Since there are no further distinguishing features it is not feasible to identify the technical problem to be solved. Therefore, since no technical problem can be identified which is solved by the subject-matter of process claim 1, the Board considers that claim 1 of the first auxiliary request lacks inventive step (A 56). The first auxiliary request is therefore not allowable. Should you wish to download the whole decision, just click here. 632 | 3398
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K’s Law – The ebook
The file wrapper can be found here. NB: This decision has also been presented on Le blog du droit européen des brevets.
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T 2050/07 – Just Ignore It
K’s Law – The ebook
T 2050/07 – Just Ignore It 4 Mrz 2013
Claim 1 on file in this examination appeal read: 1. A method of analyzing a DNA sample that contains genetic material from at least two individuals to determine a probability distribution of genotype likelihood or weight in the sample, comprising the steps: (a) amplifying the DNA sample to produce an amplification product comprising DNA fragments, wherein each allele at a locus is amplified to generate relative amounts of DNA fragments of the alleles that are proportional to the relative amounts of template DNA from the alleles in the DNA sample, and wherein the amplification product produces a signal comprising signal peaks from each allele the amounts of which are proportional to the relative amounts of the alleles; (b) detecting signal peak amounts in the signal and quantifying the amounts using quantifying means that include a computing device with memory to produce DNA length and concentration estimates from the sample; (c) resolving the estimates into one or more component genotypes using automated resolving means, said resolution into one or more genotypes including solving the coupled linear equations d = G.w+e for the relevant loci (i), individuals (j) and alleles (k), in which d is a column vector which describes the peak quantitation data of a DNA sample from the signal, G is a matrix that represents the genotypes in the DNA sample, with a column j giving the alleles for individual j, w is a weight column vector that represents relative proportions of template DNA in the sample and e is an error vector, wherein the solution includes calculation of data variance sigma² from the linear model d = G.w+e together with the global minimal solution Pd = Gw0, where Pd is the perpendicular projection point which is the closest point to d in mixture space C(G) and w0 is the minimum weight vector, using linear regression methods, and calculating a probability distribution of the data assuming a normal distribution and that the error is unbiased, so that E(e) = 0, but has a dispersion D[e] = sigma²V in which V is the covariance matrix of the data; and (d) determining, using the probability distribution of the data, a probability distribution of genotype likelihood or weight in the DNA sample. The discussion of novelty (over A 54(3) document D6) is interesting. When considering a virtual objection that might be raised, the Board answers a question which, as I vividly remember, troubled some colleagues and myself when we prepared for the EQE: can non-technical features establish novelty? [6] In the decision of the examining division, novelty of claim 1 of the set of claims filed with the letter of 15 February 2007 was denied in view of document D6 which describes a method of analysing a DNA mixture sample that contains genetic material from at least two individuals. [7] Document D6 is a European patent application filed by the present appellant and published on 29 August 2001, i.e. after the priority date of the application at issue (2 February 2001). Furthermore, it has a priority date of 15 February 2000, the validity of which has not been challenged by the appellant. Therefore, its content is considered as comprised in the state of the art pursuant to A 54(3). [8] Both the method according to claim 1 and the method of document D6 involve (i) an amplification step wherein as a result of the DNA amplification a signal is produced which comprises signal peaks, (ii) a step of detecting the peak amounts in the signal, (iii) a step of quantifying the amounts to produce DNA length and concentration estimates, and (iv) a resolution step which involves a mathematical method basically consisting in representing the estimates in a linear equation, deriving a solution from the linear equation, and resolving the DNA mixture into its components. The methods differ essentially in that in the method according to claim 1, (i) the linear matrix equation ‘p = G x w’ used in document D6 to represent the linear effect of the concentration estimates – where p is a column vector which describes the peak quantitation data of a DNA sample from the signal, G is a matrix that represents the genotypes in the DNA sample and w is a weight column vector that represents relative proportions of template DNA in the sample - has been amended to include an error vector 634 | 3398
T 2050/07 – Just Ignore It
K’s Law – The ebook
which models measurement error (see paragraph [0186] of the published patent application) and reads ‘d = G.w + e’, and (ii) the solution includes calculation of data variance sigma² from the linear model ‘d = G.w + e’ together with the global minimal solution ‘Pd = Gw0’. [9] The argument could be made that the distinguishing features described above are of non-technical nature as being a mathematical method or a method for performing mental activities, and that, in view of the established case law according to which features that do not contribute to the technical character of an invention and do not interact with the technical subject-matter of the claim for solving a technical problem, have to be ignored when assessing inventive step, such features should equally be ignored when assessing novelty. The Board therefore examines whether or not the distinguishing features in the present case make a technical contribution. [10] Both the distinguishing features (i) and (ii) aim at ascertaining the reliability of the claimed method for analyzing DNA samples containing genetic material from two or more individuals and for determining the genotypes involved. By providing estimates of the error ‘e’, estimates of the variances and standard deviations can be computed from the data using the global minimal solution ‘Pd = Gw0’ and these values can be used to estimate probabilities. This results in a quantitative estimate of the quality of the solution […]. Thus, the distinguishing features constitute a means for improving the confidence of the genotype estimate of the quantitative method analysis of document D6 […]. The board therefore considers that the distinguishing features contribute to the technical character of the claimed invention. [11] In decision T 784/06, the present Board in a different composition had to assess the inventive activity of a five-step method of determining the genotype of a locus within genetic material obtained from a biological sample. The method as claimed was regarded as a mix of technical features (step A) and non-technical features relying on the performance of mental activities based on the application of mathematical methods (steps B to E), the latter features being argued by the patentee to be core features of the invention. It was found that the disclosure of the invention was of such a general nature that it deprived the skilled person of the information he/she needed to understand how to proceed from the first reaction value collected in step A through steps B, C and D to the determination on a probabilistic basis of the genotype of step E. Thus, the Board came to the conclusion that the technical activity of step A did not interact with the mental activities of steps B to E to lead to a tangible technical result and therefore had to be ignored in the assessment of inventive step. [12] The Board considers that the present case clearly differs from the case underlying decision T 784/06. In contrast to the vagueness of the disclosure of the invention in appeal case T 784/06, the description of the present patent application makes it sufficiently clear how the distinguishing features (i) and (ii) of the method of claim 1 should be implemented and how they interact with the remaining steps of the claimed method in order to provide a common technical result, namely a genotype estimate with an improved confidence compared to the quantitative method analysis known from the prior art. [13] The above consideration leads the Board to consider that the distinguishing features have to be taken into account when assessing novelty of claim 1 and, therefore, it concludes that the method of claim 1 is new. As claims 2 to 21 are dependent on claim 1, the request as a whole complies with the requirements of A 54. The Board then remitted the case for examination of inventive step. I have to admit that I do not find the analogy reasoning of point [9] particularly persuasive. What is true for inventive step does not have to apply to novelty. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
635 | 3398
T 316/10 – Simply Suppressing
K’s Law – The ebook
T 316/10 – Simply Suppressing 2 Mrz 2013
Both parties appealed against the decision of the Opposition Division to maintain the patent in amended form. Claim 1 of the patent as granted read: 1. A process for the production of olefins comprising passing a synthetic naphtha to a steam cracker wherein at least a portion of the synthetic naphtha is converted to olefins characterised in that the synthetic naphtha is a combined synthetic naphtha produced from a process comprising a) contacting a synthesis gas stream at an elevated temperature and pressure with a FischerTropsch catalyst in a Fischer-Tropsch reactor to generate a hydrocarbon product stream b) separating the hydrocarbon product stream to provide at least one lighter fraction and at least one heavier fraction c) subjecting at least a portion of the heavier fraction to hydrocracking and/or hydroisomerisation in a hydroprocessing reactor to produce an upgraded hydrocarbon product stream d) combining the lighter fraction with the upgraded hydrocarbon product stream to produce a combined hydrocarbon stream and e) fractionating at least a portion of the combined hydrocarbon stream to produce the combined synthetic naphtha stream. The Board found this claim to lack inventive step: [2.1] The Board concurs with the finding of the OD, undisputed by the proprietor, that the assessment of inventive step may reasonably be made starting from the prior art disclosed in document D1 which mentions, inter alia, that the naphtha obtained from the Sasol process illustrated in Figure 4 of this citation is an excellent feed for the production of olefins via steam cracking (see document D1, page 6, point 3, the passage reading “In addition, the process also delivers a significant fraction of naphtha, an excellent feed for the production of olefins via steam cracking”; and at page 11, last paragraph, the passage reading: “The Sasol SPD naphtha is an excellent feed for the production of lower olefins, in particular ethylene, by steam cracking”).
[2.2] The Board notes that the processes of Figure 5 only differ from the prior art of departure in that the Lfraction is not hydrocracked, but combined as such with the UHP-stream (i.e. with the hydrocracked H-fraction). [2.3] The opponent has argued that according to undisputedly previously existing common general knowledge (that a high content of olefins in the naphtha stream undergoing steam cracking resulted in large amounts of 636 | 3398
T 316/10 – Simply Suppressing
K’s Law – The ebook
coking and, thus, was detrimental to the yield in olefins) even the most preferred processes of Figure 5 could produce substantially worse yields in olefins in comparison to the prior art, when the L-fractions generated in these processes have high olefin contents. Hence, the only problem credibly solved over the whole ambit of granted claim 1 would be that of providing in general further olefins production processes possibly simpler than the prior art, regardless as to whether these further processes achieve or not the excellent yields of the Sasol process. The proprietor has rejected such argument by stating that the experimental data reported in the examples of patent-in-suit would instead prove false this common general knowledge, demonstrating that good yields in ethylene could even be obtained by steam cracking L-fractions as such (i.e. L-fractions rich in olefins). Hence, according to the proprietor’s line of argument, the technical problem solved over the whole ambit of the granted claim was rather that - also acknowledged by the OD (for the then pending Auxiliary Request 5) - of providing a simpler olefins production process whose yields in olefins were excellent, i.e. comparable to those of the process of document D1. [2.4] The Board finds unconvincing the reasoning of the proprietor because the examples in the patent provide experimental data that (beside not being in accordance with granted claim 1) are based on a single L-fraction only containing about 10% by weight of olefins (see in the patent-in-suit the Table at page 6 entitled “Straight Synthetic Naphtha”). Instead, as noted by the opponent […] and undisputed by the proprietor, granted claim 1 does not limit in any way the amount of olefins possibly present in the L-fraction. In particular, the granted claim sets no limitation for the kind of FT-process taking place in step “(a)” and, thus, embraces the possibility of using, for instance, the same FT-process used in document D1, that results in L-fractions possibly containing up to 35% by weight olefins. Thus, the experimental data provided with the examples in the patent-in-suit are insufficient at rendering credible that e.g. also the claimed processes in which the L-fractions contain much more than 10% by weight of olefins are nevertheless steam cracked to olefins without substantial coking and, thus, with excellent yields. Hence, the Board concludes that the technical problem credibly solved over the whole range of granted claim 1 (and thus also by the processes of Figure 5 in which the generated L-fractions substantially more than 10% by weight olefins) can only be that identified by the opponent, i.e. that of providing in general further olefins production processes simpler than the prior art, regardless as to whether these further processes produce yields in olefins comparable or worse than those produced in the prior art of departure. [2.5] In the opinion of the Board, a person skilled in the art who is aiming at further olefins production processes that are simpler than that of document D1 but who does not attribute any particular relevance to the (normally implicit) aim of also retaining the convenience of the prior art of departure in terms of yields in the final product, would consider obvious to solve the posed problem by suppressing any of the steps of the prior art of departure that are not absolutely essential in order to obtain some olefins in the final product. Such person would thus attempt to identify any such suppressible steps among all the process steps used in document D1 that are not essential for the production of olefins, including those that are explicitly or implicitly identified in this citation as essential for the achievement of low coking and high yields or of other advantages. The Board notes that document D1 not only undisputedly teaches to such skilled person that the intermediate separate hydrocracking steps of both fractions are only needed for upgrading the naphtha - i.e. that the hydrocracking steps are only mandatory if one aims at the formation of an “essentially paraffinic” naphtha […] that allows to minimize the coking during steam cracking and, thus, to maximizing the yields in olefins – but even implicitly disclose at least the possibility to by-pass the intermediate hydrocracking of the L-fraction, as apparent from the dotted lines in Figure 4. The Board concludes that no inventive ingenuity is required to the skilled person for arbitrarily selecting the solution to the posed technical problem consisting in suppressing the intermediate hydrocracking of the Lfraction, i.e. a simplification of the prior art of departure that is not only obvious per se but even suggested by the dotted lines in Figure 4. In solving the posed technical problem in such an obvious manner the skilled person arrives at variants of the processes of Figure 5 that are also manifestly encompassed by granted claim 1.
637 | 3398
T 316/10 – Simply Suppressing
K’s Law – The ebook
The Board concludes, therefore, that this claim embraces processes for the production of olefins that are obvious in view of document D1. Accordingly, the Main Request is found to violate A 56 EPC (1973) and is refused. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
638 | 3398
T 154/10 – Totus Pro Parte
K’s Law – The ebook
T 154/10 – Totus Pro Parte 1 Mrz 2013
This is an appeal by the opponent against the maintenance of the opposed patent in amended form. Claim 1 as granted referred to a braking system but claim 1 of the patent as maintained by the Opposition Division was directed to a railway vehicle: A braking control system with anti-slip and anti-lock functions for the wheels, for a railway or tramway vehicle provided with a pneumatic braking system including brake control apparatus (BCA) to which is connectable a plurality of electro-pneumatic valve units (G1-G4) for control of the brake cylinders (BC1-BC4) associated with the wheels/axles (1-4) of the vehicle, and a braking control system (A,B; BCA; G1-G4; S11-S42) with anti-slip and anti-lock functions for the wheels; the said valve units (G1-G4) being controllable by control means (A, B) in such a way as to allow, selectively, application of a braking pressure to the associated brake cylinders (BC1-BC4), holding of this pressure, and release of the pressure of the said brake cylinders (BC1-BC4); the system being characterised in that each axle (1-4) of the vehicle has associated therewith at least one first and respectively one second angular speed sensor (S1, S2; ...; S41, S42) are associatable with each axle (1-4) of the vehicle independent from one another; the said electro-pneumatic valve units (G1-G4) include respective solenoid control valves (12-15) with first and second independent control inletsinput units (G11, G12); and the control means (A, B) comprise first and second independent electronic control units (A, B); the first speed sensors (S11,...; S41) of each axle (1-4) and the first control input units (G11,...; G41) of the said valve units (G1-G4) being connected only to the respective first and control unit (A); the second speed sensors (S11, S12; ... ; S41, S42) of each axle (1-4), as well as to the respective first and the second control inlet input units (G11, G12; ... ; G41, G42) of the said valve units (G1-G4), and being connected only to the second control unit (B); said control
639 | 3398
T 154/10 – Totus Pro Parte
K’s Law – The ebook
units (A,B) being predisposed to transmit from one to the other a respective state signal or vital signal (L1; L2) indicative of its operating condition; the first unit (A) being arranged to perform a wheel anti-slip procedure; the second unit (B) being arranged to perform a wheel anti-lock procedure when the state signal (L1) transmitted to it from the first unit (A) indicates that this latter is functioning normally and to perform both the wheel anti-lock procedure and an anti-slip procedure when the state signal (L1) transmitted to it from first unit (A) is indicative of a malfunction or breakdown condition of this latter. (deletions and additions with respect to claim 1 as granted are highlighted) The opponent raised objections under A 123. Admissibility of the amendments under A 123(2) [2] The Board does not agree with the [opponent] when it contends that the application as originally filed did not provide any basis for the amendment of the claimed subject-matter to a “railway vehicle” and that this amendment represented an undisclosed selection from a list of various types of vehicles (including also tramway vehicle). The application as originally filed EP-A-1 577 185 (hereinafter referred to as D0) clearly disclose that the braking control system of the invention may be incorporated in a railway vehicle or a tramway vehicle […]. Moreover, […] D0 specifically disclose[s] a railway or tramway vehicle into which the claimed braking system is incorporated. Since the application as originally filed discloses both the incorporation of the claimed braking system in a tramway vehicle or, alternatively, in a railway vehicle, there is a basis for limiting the claim to the combination of a railway vehicle and the braking control system of claim 1 as granted. [3] Concerning the question of the connection between the control units A,B and the speed sensors, it is true that figure 1 as originally filed contains some inconsistencies (S11 associated with letter B in the bottom left-hand corner of the figure is shown associated with control unit A in the top left portion of the figure).
However, in the whole context of the original disclosure […], there is no ambiguity as to the fact that the first speed sensors of each axle 1-4 and the first control input units of each valve units G1-G4 are connected only to the first of the control units and the second speed sensors of each axle 1-4 and the second control input units of each said valve units G1-G4 are connected only to the second of the control units. For the person skilled in the art, it is obvious that a mere erroneous permutation has occurred when indexing the sensors of the first and of the third axles of figure 1.
640 | 3398
T 154/10 – Totus Pro Parte
K’s Law – The ebook
[4] As a matter of English language and from a pure semantic point of view, it might be criticized that, in feature (i), the expression “connected only to the first (respectively second) control unit” could be interpreted as meaning “connected only to the first (respectively second) control unit and not connected to any further element”. However, the Board agrees with the general principle of interpretation as set out in T 190/99, according to which, when considering a claim, the skilled person should rule out interpretations which are illogical or which do not make technical sense. He should try, with synthetical propensity, i.e. building up rather than tearing down, to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure. It is obvious to the skilled person that the respective sensors and control input units may have other connections, for example to the ground or to an electrical supply or even mechanical connections as mentioned by the [opponent]. However, in the present case, the “connections” are to be interpreted in the technical context of the claimed subject-matter with due consideration of the other technical features of the claim and of their technical significance. Before introducing feature (i), the claim specifies that the electro-pneumatic valve units G1-G4 include respective solenoid valves with first and second control input units. The expression “control input units” indicates here that these two units input the control signals to the electro-pneumatic valve units […]. The person skilled in the art knows that the control of the braking is performed through control signals which are transmitted in accordance with the anti-slip and anti-lock control procedure performed by the control means […] whereby the control means have been specified in the claim as comprising first and second independent control units. Therefore the features “the first speed sensors of each axle and the first control input units of the said valve units being connected only to the first control unit” and “the second speed sensors and the second control input units of the said valve units being connected only to the second control unit” have to be interpreted in the context of the possible connections that the respective two sensors and two control input units may have with the first and second control units A and B only […]. The person skilled in the art would not consider connections which are totally irrelevant from this context. Therefore the wording “connected only to” does not introduce subject-matter that extend beyond the content of the application as originally filed. Admissibility of the amendments under A 123(3) [5] For the [opponent], modifying claim 1 such that it is now directed to “a railway vehicle” while claim 1 as granted is directed to “a braking control system” amounted to an extension of the protection conferred which contravened A 123(3). [5.1] The Board does not agree. When deciding whether a claim has been amended in such a way as to extend the protection conferred, the determination of the extent of protection has to be carried out in accordance with A 69(1) by interpretation of the terms of the claim. National laws of the Contracting States in relation to the infringement or, for example, the question whether the financial value of a railway vehicle is greater than that of a braking control system, need not to be taken into account in this respect (See G 2/88 [3.3]). [5.2] Considering the question of the protection conferred by a claim directed to a physical entity, it is a general principle established by the jurisprudence of the Boards of Appeal that a patent which claims a physical entity per se confers absolute protection upon such entity, namely protection not only for such physical entity but also for all uses or all physical activities of such entity, for instance the integration into a larger entity (see G 2/88 [5]; T 514/06 [ 5.1.1-2]). [5.3] In the present case, claim 1 as granted was directed to a braking control system for a railway. This conferred an absolute protection on any claimed braking control system, including those which may be installed and have not yet been installed and those which have been installed in a railway vehicle, this being the vehicle for which they undoubtedly have been specifically conceived […]. [5.4] Therefore the scope of claim 1 as granted already included the incorporation of the granted braking control system into a railway vehicle and the amended formulation “a railway vehicle… and a braking control system” is in effect a claim to a braking control system when incorporated in the railway vehicle. The change of the claimed subject-matter from “a braking control system” to “a railway vehicle… and a braking control system” confers less protection and is actually a limitation of the scope of protection initially conferred by the patent as granted since it is now required that the braking control system is incorporated in a railway vehicle (see also T 514/06 [5.1.1-2]).
641 | 3398
T 154/10 – Totus Pro Parte
K’s Law – The ebook
The decision T 1898/07 which was cited by the [opponent] refers to a change of the claimed subject-matter from “a liquid composition” to “a package kit containing a syringe pre-filled with liquid composition”. This situation differs drastically from the present one, because, as explained in T 1898/07 [22], the liquid composition could not be seen as a feature of the package per se. Claim 1 has therefore not been amended in such a way as to extend the protection conferred. I very much prefer this approach to what we have seen, for instance, in T 867/05 (here). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
642 | 3398
T 567/10 – Half A Loaf Is Better Than None
K’s Law – The ebook
T 567/10 – Half A Loaf Is Better Than None 28 Feb 2013
What can be done during appeal proceedings when a claim of the opposed patent lacks novelty but novelty is not a ground for opposition, and the patent proprietor objects to it being introduced? The
headnote
of
G
7/95
says
that
“in a case where a patent has been opposed under A 100(a) on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon A 52(1), A 54 is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee. However, the allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding upon the ground of lack of inventive step”. This decision presents us with such a case. Claim 1 as granted (and maintained by the Opposition Division) read: A sealed package (1) for pourable food products, having at least one removable portion (4), and a closable opening device (2) in turn comprising a frame (5) defining a pour opening (6) and fixed to said package (1) about said removable portion (4), a cap (7) fitted to said frame (5) to close said pour opening (6) and movable to free the pour opening (6), and pull-off opening means (8) housed in said frame (5) and comprising a rigid plate (9) attached to said removable portion (4) and extractable from the frame (5), by pulling action, together with at least part of said removable portion (4); characterized by also comprising a pull-tab (16) of sheet material interposed between said removable portion (4) and said plate (9) and attached to both. [1.2.1] All figures of D1 show an opening device 1 applied on a packaging container 2 of the type which is manufactured from a continuous laminated web material, with a core of paper or paperboard to which thermoplastic layers and possibly aluminium are laminated […]. [1.2.2] In […] D1 it is further stated that “[o]n the upper side of the packaging container 2, a hole 3 or a hole indication has been made. This hole 3 or hole indication is normally covered from beneath by a thermoplastic strip for purposes of realising a liquid-tight package. At the same time, the outer side of the package is provided with a corresponding outer strip 4. Normally, these work stages are already carried out on production of the packaging material and the packaging material is delivered ready to the filling machines, provided with the above described hole 3 with each respective covering strip”. [1.2.3] The above-mentioned passage of D1 defines that when the packaging material is delivered to the filling machines the hole 3 is already provided with an inner thermoplastic strip covering said hole 3 from the inside and with an outer strip 4 covering said hole 3 from the outside. This means that the two strips have to be fixed to each other so that when pull is exerted on the outer strip 4 in order to unseal the hole 3 said outer strip 4 detaches from the outside of the packaging material removing at the same time the thermoplastic strip covering the hole 3 on the inside. Otherwise an additional tearing action for the lower thermoplastic strip would be needed for freeing the hole 3, which is nowhere described in D1 and would not make any sense. [1.2.4] The outer strip 4 further has a free unsealed portion 5 which is attached to the surface area 11 of the heel 10, see column 3, lines 8 to 11 and column 4, lines 10 to 30. Through this attachment the inner thermoplastic strip covering the hole 3 on the inside is connected via the free unsealed portion 5 and the outer strip 4 to the surface area 11 of the heel 10. In the closed stage shown in figure 9 the surface area 11 of the heel 10 is positioned within the space defined by the pouring element/frame 7.
643 | 3398
T 567/10 – Half A Loaf Is Better Than None
K’s Law – The ebook
In the nearly complete opening stage shown in figures 11 and 12 the heel 10 is extracted from the element/frame 7 with the main portion of the strip 4, obviously together with the main portion of the inner thermoplastic strip attached to it.
[1.2.5] Accordingly, D1 discloses in its embodiment shown in figures 8 to 12 (using the terminology of claim 1 of the patent in suit) a sealed package (packaging container 2 and opening arrangement 1) for pourable food products, having at least one removable portion (the thermoplastic strip covering the hole 3 from the inside), and a closable opening device (1) in turn comprising a frame (7) defining a pour opening and fixed to said package about said removable portion, a cap (9) fitted to said frame to close said pour opening and movable to free the pour opening, and pull-off opening means (10) housed in said frame and comprising a rigid plate (11) attached to said removable portion and extractable from the frame by pulling action, together with at least part of said removable portion, and also comprising a pull-tab (4,5) of sheet material interposed between said removable portion and said plate and attached to both. 644 | 3398
T 567/10 – Half A Loaf Is Better Than None
K’s Law – The ebook
[1.2.6] The Board cannot follow the [patent proprietor’s] arguments, that since a) in claim 1 of the main request the pull-off opening means is listed as an element of the opening device in addition to the frame and the cap, b) the whole disclosure of the patent in suit only refers to solutions having the pull-off opening means separate from the cap, and c) the description does not contain any information hinting that the cap and the rigid plate of the pull-off opening means could be incorporated into one single structural element, the person skilled in the art would not understand the subject-matter of claim 1 of the main request to be also encompassing a solution having the rigid plate as an integral part of the cap, for the following reasons. [1.2.7] Neither claim 1 of the main request nor the description of the patent in suit excludes the pull-off opening means being part of the cap. Moreover, the fact that in claim 1 the pull-off opening means, the frame and the cap are listed as three distinct elements does not exclude that these elements may be interconnected with each other or even that they may be integral with each other. Only the specific embodiment depicted in the figures shows specific pull-off opening means 8 being non-integral with the cap. This, however, cannot have a limiting effect as far as it concerns the pull-off opening means claimed in claim 1. [1.2.8] Since according to point [1.2.5] above the sealed package according to the embodiment of D1 shown in its figures 8 to 12 discloses all the features of the sealed package of claim 1, the sealed package according to claim 1 cannot involve an inventive step. [1.2.9] The Board has to take recourse to the above unusual formulation since the original opposition was only based on the ground of opposition of lack of inventive step based on D1 with application of the teaching of D2 being obvious. In application of decision G 7/95 [7.2], the Board had to decide the question whether D1 is disclosing or not all the features of claim 1 as a question of inventive step, since the [patent proprietor] did not give its consent to the introduction of the ground of lack of novelty, raised by the [opponent] for the first time on appeal. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1544/08 – A Colourful Decision
K’s Law – The ebook
T 1544/08 – A Colourful Decision 27 Feb 2013
This is an appeal of the opponent against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. In its statement of grounds of appeal, the opponent requested the Board to admit document A3, which the OD had refused to admit. About two months before the oral proceedings (OPs) before the Board, it also requested the admission of document D12. The board decided not to admit these documents into the proceedings: [2.1] In the decision under appeal the OD decided not to admit the document A3 into the procedure, this document having been filed by the […] opponent only in his letter of 10th March 2008 (in reply to the summons to OPs). [2.1.1] The reason for this decision was that the document was not prima facie relevant, in particular because the element 11a as depicted in Fig. 1 of that document was part of the bus bar 11, so could not be considered to correspond to the conductive band of the claims of the patent in suit, and because this had the consequence that the region between that part of the bus bar and the coating layer 15 could not be considered to correspond to the data transmission window of the claims of the patent in suit. [2.1.2] During the appeal procedure the [opponent] has merely repeated that in his opinion the element 11a of A3 could be considered as a conductive band within the meaning of the patent, and that the document should be admitted into the procedure because it is prima facie relevant, in particular because it was cited in the patent in suit. [2.1.3] The board does not consider that the fact that a document is mentioned in the patent in suit means that it can automatically be considered to be prima facie relevant. Given that the remainder of the [opponent’s] comments in this context are only repetitions of his submissions before the OD, the board sees no reason to go against the decision of the division not to admit document A3 into the procedure. Therefore the objections of lack of novelty and lack of inventive step raised by the [opponent] on the basis of this document during the procedure before the OD and maintained in the appeal procedure are of no relevance for the present decision. [2.2] With his letter of 14th September 2012 the [opponent] filed, in support of his objection under A 100(b), modelling results to which he gave the document number D12. The [patent proprietor] requested that this document not be admitted into the procedure. [2.2.1] In his letter of 14th September 2012 the [opponent] stated that the results presented in this document had been produced on 18th January 2010, but that they had not been filed at that stage of the procedure because of concerns that they might provide technical information which would have been of use to competitors. In the meantime these concerns had become less significant, in which respect the [opponent] referred to the commercialisation by them of a product under the name “ClimaCoat” from December 2011. [2.2.2] The board is of the opinion that a purely commercial consideration as indicated above cannot represent a valid reason for not complying with the requirement of Article 12(2) RPBA that the grounds of appeal should contain the [opponent’s] complete case. The board notes also that the filing of these modelling results only slightly more than two months before the OPs, and not (for instance) sooner after the start of commercialisation of the [opponent’s] product, gave the [patent proprietor] little time to carry out modelling in response to these submissions. The board also agrees with the [patent proprietor] that it should have been possible for the [opponent] to select parameters for the modelling which were unrelated to their product so as to avoid the competition issues. The board therefore considers it appropriate to make use of its discretion under Article 13(1) and (3) RPBA to not admit document D12 into the procedure. The Board then dismissed the objection that the invention was insufficiently disclosed and went on to discuss compliance with A 100(c) and A 123(2): 646 | 3398
T 1544/08 – A Colourful Decision
K’s Law – The ebook
[4.1] The [opponent] has objected that the figures of the patent as granted have no basis in the application as originally filed, and has also objected to the amendment to the scale of Fig. 1 which was carried out by the [patent proprietor] (proprietor) during the procedure before the OD (i.e. in the amended figure filed with the letter of 18th March 2008). [4.2] The figures of the patent as granted were filed by the then applicant with letter of 14th January 2004, in response to an objection raised by the examiner relating to the quality of the figures then on file. In order to examine whether these figures meet the requirements of A 123(2), it is first necessary to establish which figures they should be compared with. In this context the board notes that in addition to the figures as granted, in which the different temperature ranges are indicated in black and white by different patterns of shading, hatching etc., a number of other versions of the figures are presently on file: (a) the figures of the published international application WO 00/72635, which are also in black and white, but in which the temperatures ranges are indicated by different shades of grey; (b) a set of colour figures which were filed with the proprietor’s response to the grounds of opposition (letter dated 31st March 2006); and (c) a further set of colour figures filed with the [patent proprietor’s] letter of 18th March 2009. [4.3] The [opponent] has disputed that the figures were originally filed in colour. In this context the board notes that the letter from the EPO formalities officer which accompanied the [patent proprietor’s] submission of 18th March 2009 indicates that the colour figures annexed to that letter were as originally filed, that the board’s own internal enquiries have confirmed that this was the case, and that the description of the application relating to Fig. 1 states that it is in colour (see page 2, lines 11 and 12). The board therefore sees no reason to doubt the [patent proprietor’s] statements that the figures were originally filed in colour, in particular the statement in section I.2 of the proprietor’s letter of 31st March 2006 confirming that the colour drawings filed with that letter were a copy of the drawings as filed. As noted by the [patent proprietor], this letter was signed by Guy Farmer, one of the European Patent Attorneys who also signed the cover letter of the original international application […]. [4.3.1] The [opponent’s] argument that the word “colour” in the application could refer to shades of grey in a black and white figure is not found convincing, because in the view of the board that does not represent the normal meaning of this word. Concerning the apparent discrepancy between the date on the figures filed with the [patent proprietor’s] letter of 18th March 2009 and the filing date of the application, see paragraph [4.5.1(ii)] below. [4.3.2] The [opponent] has also argued that since the objection to the quality of the drawings in section VII. 2 of the International Preliminary Examination Report (IPER) stated that they were “too dark”, this had to be understood as meaning that they were in black and white, not in colour. The board understands however that this reflects the internal practice of the EPO to provide the examiner not with the original documents of the application, but instead with a black and white copy. Thus, the expression “too dark” used by the examiner could be understood as meaning that the black and white copy of the figures in his file was of such limited contrast that the different areas in those figures could not be distinguished from one another. [4.3.3] Hence, taking into account the evidence on file as indicated in paragraph 4.3 above, the board concludes that the use of the expression “too dark” in the IPER is not evidence that the originally filed figures were in black and white. [4.4] The [opponent] has moreover argued that even if the figures were originally filed by the then applicant in colour, these cannot form the basis for the comparison required under A 123(2) for two reasons. [4.4.1] The [opponent] has firstly argued that the colour figures could not be considered as being the originally filed figures of the application because the filing of colour figures is not allowed under either the PCT or the EPC. In this respect he has referred to an excerpt from the PCT Newsletter of March 2011 […] and to the Guidelines for Examination in the EPO, sections A-X, 1.2 and 7.1 (this numbering reflecting the version of the Guidelines which was in force at the time of filing the application, not the current version, in which these provisions appear essentially unchanged in chapter A-IX). [4.4.2] The board does not find this argumentation convincing, because according to both the PCT and the EPC the filing of colour figures in the original application is merely a formal deficiency which can be remedied on invitation. Specifically, under the PCT this is a formal deficiency under Article 14(1)(a)(v) in combination with 647 | 3398
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Rule 11.13(a), which can be remedied upon invitation under Article 14(1)(b). Similarly under EPC 1973 (as in force at the time of filing of the original application and of the replacement figures) this was a formal deficiency under R 32(2)(a) in combination with R 40, which could be remedied upon invitation under R 41. [4.4.3] The second reason given by the [opponent] as to why the colour figures should not form the basis of the comparison required under A 123(2) is based on the argument that no information concerning colour figures is available to the public. Specifically the [opponent] has noted that the European Patent Register and the electronic file to which it is linked contain only black and white figures, and contain no indication that the figures were originally filed in colour, let alone information as to what the content of those figures was. On this basis the [opponent] argued that the rights of third parties can only be satisfied if it is assumed that the originally filed figures are those available to the public, i.e. the black and white figures of the published application. [4.4.4] However, the board cannot agree with this conclusion, because A 123(2) refers explicitly to “the content of the application as filed”, an expression which leaves no room for interpretation. Thus, if the figures of the originally filed application were in colour, it is these figures which must be used as the basis for determining whether subsequently filed figures contain added subject-matter within the meaning of that Article. [4.5] The board thus concludes that in order to assess whether the redrawn figures as in the [patent proprietor’s] main request contain added subject-matter within the meaning of A 123(2) it is necessary to compare their content with that of the (colour) figures as originally filed. However, owing to the exceptional circumstances of the present case, no original copy of those figures is available to the board. It is therefore necessary to establish what evidence concerning their content is available. [4.5.1] Before considering that evidence in detail, the board considers it to be useful to establish the relevant procedures on filing of a PCT application, since this is pertinent to the provenance of the different sets of figures listed as (a), (b) and (c) in paragraph 4.2 above (which designations will be used in the remainder of this discussion). The regulations covering the filing of a PCT application at the date of the filing required that three copies of the application documents be filed. That this was done in the present case is apparent from the copy of the covering letter dated 27th April 2000 filed by the [patent proprietor] […]. These three copies are then processed as follows: (i) one is retained by the PCT Receiving Office, in this case the EPO. Enquiries carried out both by the [patent proprietor] and by the board with the relevant section of the EPO have established that this copy is no longer available. (ii) the second copy of the application is forwarded to the International Search Authority (ISA), in this case also the EPO. The board is satisfied on the basis of its internal enquiries that the copy of the figures which was sent by the EPO formalities officer to the [patent proprietor] with letter dated 5th March 2009, a copy of which was then filed by the [patent proprietor] with his letter of 18th March 2009, is a copy of that set of figures. The board is also satisfied that the date stamped on those figures (29th May 2000) is the date on which they were received, as part of the “search copy” by the section of the EPO acting as ISA from the section of the EPO acting as Receiving Office, thus explaining the discrepancy between this date and the recorded filing date of the application (1st May 2000), and that both this date stamp and the file number on these figures were applied by the EPO. (iii) the third copy is forwarded to the International Bureau (IB), and therefore it can be assumed that this copy formed the basis of international publication WO 00/72635. [4.5.2] It is thus apparent that each of the three sets of figures identified in paragraph 4.2 above is a copy of figures related to the originally filed figures, the set (a) in the international publication being a black and white copy of the figures forwarded to the IB, the set (b) filed by the [patent proprietor] (proprietor) with his letter of 31st March 2006 being a copy derived from the figures used for the original filing, and the set (c) filed by the [opponent] with his letter of 18th March 2009 being a copy derived from the figures forwarded to the ISA. Given that any copying process can be assumed to result in a loss of information to a greater or lesser extent, the board considers it to be appropriate to compare these three sets of figures to discover whether it can be determined consistently that one of these sets contains the most information, and that the other two sets contain only information contained in that one set, on which basis it would then be logical to assume that the originally filed figures contained at least the information in that one set. [4.5.3] Such a comparison was carried out in detail during the OPs before the board. The result of this comparison is that sets (a) and (c) contain different, and not completely overlapping amounts of information, but that all of the information in each of these two sets is present in set (b). For example, considering the areas with 648 | 3398
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temperature between 10 and 20°C in the bottom corners of Fig. 1, these can be seen very clearly in set (b), reasonably clearly in set (a), and barely at all in set (c). On the other hand the area with temperature between 20 and 30°C at the top of the same figure, which can also be seen very clearly in set (b), can also be seen reasonably clearly in set (c) but is barely discernible in set (a). On this basis it could be concluded that set (b) contains the most information. A similar conclusion can be reached on the basis of the boundaries at 30°C and 40°C towards the top corners of Fig. 2, the former of which can be seen in set (a), the latter in set (c), and both in set (b). Consideration of the other figures did not lead to any information being identified which was present in either or both of sets (a) and (c) but which was not present in set (b). The board thus concludes that in order to assess whether the redrawn figures in the patent as maintained by the OD contain subject-matter extending beyond the content of the patent as filed, it would suffice if it could be determined that these figures contain no information extending beyond the content of the figures designated as set (b). The board also notes that this conclusion is not rendered invalid by the possibility that some teaching in that set of figures cannot be unambiguously derived from either set (a) or set (c), since it cannot be excluded that certain information has been lost during the copying process for both of these sets. [4.5.4] No difference in teaching between the figures designated as set (b) and the figures of the patent as maintained by the OD (i.e. the patent according to the [patent proprietor’s] main request) has been identified. The only difference in appearance is in the scale of Fig. 1, which was amended during the procedure before the OD (amended figure filed with proprietor’s letter of 11th March 2008). From a comparison of the amended figure with the colour figure of set (b) it is clear that the only difference is the omission from the scale of those blocks corresponding to temperature ranges which do not appear in the depicted modelling results. This omission thus does not result in any change to the technical teaching of the figure. Therefore the board concludes that the figures of the patent according to the [patent proprietor’s] main request do not contravene A 123(2). [4.5.5] The [opponent] has argued that the OD committed an error in deciding to allow the amendment to the scale of Fig. 1 as a correction under R 139. The board agrees that the OD should not have allowed this amendment under that rule, since the figures referred to in the decision to grant form an integral part of that decision. However, the board also considers that this erroneous choice of the legal basis has no substantive impact on the final decision taken by the OD because, as indicated above, the modification of the scale of the figure does not contravene A 123(2). Moreover, the board regards it as an amendment which is admissible in opposition proceedings pursuant to R 80. The Board also found the remaining A 123(2) objections not to be persuasive and decided that the main request could be allowed. It then dealt with objections under R 106 filed by the opponent: [10.1] During the course of the OPs of 16th November 2012 the [opponent] filed two objections under R 106 […]. [10.2] According to the [opponent’s] first objection under R 106 the board had committed a substantial procedural violation in “deciding” that the figures of the application as originally filed were those filed by the [patent proprietor] (then opponent) with the letter of 31 st March 2006. [10.2.1] As a preliminary point, the board emphasises that no “decision” as such was taken by the board concerning that specific question, contrary to the assumption obviously underlying the [opponent’s] objection. Rather, the board expressed its opinion without even having closed the debate on this issue. [10.2.2] The board understands the objection in the sense that the essence of the [opponent’s] objection to the procedure lies in the assertion that the [opponent] was taken by surprise by the board’s “decision”. In this respect, the board considers it important to note that the question as to whether the figures of the application as originally filed were in colour or black and white had been discussed extensively in the parties’ written submissions during the appeal procedure, and that the board itself had pointed out in the communication accompanying the summons to OPs […] that clarification of this issue was necessary before a decision could be reached on the [opponent’s] objections under A 100(c). Thus, the fact that there was a need to reach a conclusion on this topic during the OPs must have been clear to the parties. [10.2.3] When discussing this objection under R 106 during the OPs it became apparent to the board that a misunderstanding had arisen, in particular with respect to the fact that the opinion expressed by the board before the filing of the objection was not that these figures were those originally filed, but rather that these were considered as providing the most reliable evidence regarding the content of the originally filed figures. Therefore, in order to remedy this obvious misunderstanding, during the OPs the board further explained the previously expressed opinion, and in particular the general purpose of the assessment of the evidence on file. In view of these considerations, the board gave the parties a further opportunity to discuss the issue of what was the 649 | 3398
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content of the originally filed drawings and to present their evaluation of the evidence on file. The subsequent discussion dealt in particular with the topics summarised in paragraphs [4.5.2-3] above. Following this discussion the board indicated that it considered that the procedural objections raised by the [opponent] in his first objection under R 106 had been overcome. [10.3] According to the [opponent’s] second objection under R 106 the board had committed a substantial procedural violation in deciding on the issue of sufficiency of disclosure before deciding on the question as to which figures constituted those of the application as filed. [10.3.1] The board decided to dismiss this objection, because the decision concerning sufficiency of disclosure within the meaning of A 100(b) concerned the patent, not the application, so that the only figures which were of relevance to that decision were those of the patent as granted and Fig. 1 as amended during the procedure before the OD. The question as to which figures were filed as part of the original application was relevant for the ground of opposition under A 100(c), but not for the question of sufficiency of disclosure of the patent, so that the fact that the decision on the latter question was reached only after that on the former cannot constitute a fundamental procedural defect within the meaning of A 112a. [10.3.2] In addition, the board notes that it came to the conclusion that the figures of the [patent proprietor’s] main request do not contravene A 123(2) (see point [4.5.4] above), so that the question as to the order in which these two grounds were discussed could not in any case have had any impact on the issue of sufficiency of disclosure. [10.3.3] The board notes also that at the beginning of the OPs of 16th November 2012 both parties had agreed to the suggestion of the board to discuss the issue of sufficiency of disclosure before the other substantive issues. NB: The Board provided the following headnotes: 1. In some circumstances it can be appropriate to respond to an objection raised under R 106 during OPs before a board of appeal by (re-)opening the discussion of the issue in question (see point [10.2] of the reasons). 2. The wish to avoid giving commercially valuable information to competitors is not necessarily a valid reason for not complying with the requirement of Article 12(2) RPBA (see point [2.2] of the reasons). 3. If drawings are originally filed in colour at the date of filing of an application, then the technical content of these original colour drawings should be determined taking into account the available evidence when establishing the content of the application as filed for the purpose of examining compliance of amendments with A 123(2) (see points [4.4-5] of the reasons). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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J 3/12 – Carte Blanche
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J 3/12 – Carte Blanche 26 Feb 2013
The Euro-PCT application under consideration entered the European phase on September 11, 2006. The renewal fee for the third year which fell due on March 31, 2007, was not paid. On May 4, 2007, a notice drawing attention to A 86(2) EPC 1973 was sent to the appointed European representative. On November 12, 2007, a communication under R 69(1) EPC 1973 was issued informing the applicant that the application was deemed to be withdrawn under A 86(3) EPC 1973. On January 14, 2008, a request for re-establishment of rights was filed. On the same day the fee for reestablishment as well as the renewal fee for the third year together with the additional fee were paid. The applicant submitted that Microsoft Corporation had acquired the applicant company shortly before entering the regional phase before the EPO. It only became aware of the non-payment of the renewal fee by the communication of 12 November 2007. The European representative did not pay the renewal fee on entry into the European phase because at that time the fee had not yet become due and because, as a standing rule, any annuity fees on behalf of Microsoft were paid by CPA. It was difficult to establish what exactly prevented this application from being communicated in the proper way to CPA to secure timely payment for the annuity fee for the third year. At least, part of the reason was due to severe problems with a third party software tool, called Anaqua, that was used for communicating new cases for annuity payment from Microsoft to CPA. Investigations had shown that the present case had never been included in any of the lists communicated to CPA for annuity payment. The EPO reminder of 4 May 2007 had been forwarded to the responsible US law firm which forwarded this letter to the in-house Microsoft patent team. It was difficult to trace what exactly prevented a detailed review of the case. It appeared that the annuity reminder was uploaded by the US law firm into Anaqua but the annuity reminder was, for unknown reasons, not brought to the attention of the responsible person for handling annuity payments, Ms Sharon Rydberg at Microsoft. On May 9, 2008, the Receiving Section issued a communication informing the applicant that no details had been presented to show that a normally satisfactory system was in place and that all due care had been observed. By reply dated July 17, 2008, the applicant maintained that it had fully relied on the proper working of the internal data base Anaqua. It had only recently turned out that certain data in this system was incorrect. It was not possible to fully understand or know the reasons why. The applicant had to fully rely on the mentioned software tools, as the workload could not be managed otherwise. The applicant had built up a very large, worldwide patent portfolio in a very short period of time. Thus, from the beginning, the applicant relied on software tools to manage the workload which was overwhelming due to the high speed with which the portfolio increased worldwide. Once software tools were used, one had to rely on its correct operation, otherwise there was no sense in introducing them. By decision dated September 2, 2011 (!), the Receiving Section refused the request for re-establishment. The decision was mainly based on the fact that it had not been sufficiently demonstrated that there was a normally satisfactory system in place for paying the renewal fee. The applicant filed an appeal. The Board found the appeal to be admissible and A 122 and R 136 EPC 2000 to be applicable. The request for re-establishment was found admissible, too. The Board then examined its allowability: [4] According to A 122(1), an applicant can have his rights re-established, if in spite of all due care required by the circumstances having been taken, he was unable to observe the time limit. Under the established case law of the Boards of Appeal, an isolated mistake within a normally satisfactory system is excusable. To this end, the applicant or his representative must plausibly show that there was a normally effective system in place for monitoring time limits and that the non-observance of the time limit was due to an isolated mistake. [5] In the present case, the appellant has not explained how the Anaqua software system which was used to administer all patent data and which calculated the due dates for the renewal fees worked. No details were given about which data was entered into the system, by whom or on which basis Anaqua performed the calculation of 651 | 3398
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the due dates. It was neither made clear which data was transmitted to CPA nor how Anaqua worked at all. Thus, on the basis of the individual circumstances the Board is not in the position to judge whether the system was satisfactory. Nor can it judge whether, in the given situation, an isolated mistake was made, or whether the mistake was immanent to the system. The applicant conceded that the data in Anaqua was wrong but did not explain why. Thus, the individual circumstances remain in the dark. [6] The appellant argued that it was not necessary to present and prove the individual circumstances and details as to why the individual mistake happened, if it exists another way to convincingly demonstrate that there was a satisfactory system in place. In a situation as present, where a huge amount of data is to be administered which can only reasonably be done by the use of software tools, it was sufficient to show that a system was in place which generally worked properly. The fact that very few mistakes occurred, taking into account the amount of data managed, was sufficient proof that a satisfactory system was implemented. The Board cannot share this view. According to the established case law of the Boards of Appeal, the circumstances of each case must be looked at as a whole. The obligation to exercise due care must be considered in the light of the situation as it stood before the time limit expired. The steps the party took to comply with the time limit are to be assessed solely on the basis of the circumstances applying at that time (see references in Case Law, 6th edition 2010, VI.E.7.3.1). If a request for re-establishment is based on an isolated mistake the appellant must plausibly show that there was a normally satisfactory system established at the relevant time in the office in question (Case Law, 6th edition 2010, VI.E.7.3.3 a), J 13/07 [5.1]). From this it follows that the individual circumstances of the case must be assessed, i.e. how Anaqua worked and how it was handled in 2007 with Microsoft in order to ensure timely payment of the renewal fee. It is not sufficient to refer in general terms to Anaqua as being a well established software without giving the details as to how it works and how it was handled in the specific case, because otherwise it cannot be judged whether it was an isolated mistake, or a general failure of the system. A system should be organised in such a way that no mistakes happen and only when it is demonstrated that the mistake was an isolated one re-establishment can be allowed. It cannot be accepted that it is sufficient to argue that a proper system has been installed once and further not to have to demonstrate how it was handled on the mere assumption that a few mistakes would be acceptable. This would go against what all due care requires. To this regard, the details how the system worked must be submitted and proven. This encompasses the data entry. The best software system is of no use if incorrect data are entered at the beginning. In the present case, the mistake resulted from wrong data in Anaqua. If an applicant relies on a database system he must make sure that it is fed with the correct data. The more an applicant relies on a software system for monitoring procedural aspects concerning his patent applications or portfolio, the more he must make sure that the data on which the system performs its calculations is correct. In the present case, it has not been shown at all that there was a satisfactory procedure in place for entering and cross checking the relevant data. Thus, the monitoring system has not been sufficiently described, nor has any evidence been furnished. Moreover, it seems that it was not just an isolated mistake which happened, as is shown by cases J 4/12 and J 23/10 which have the same underlying facts. [7] If the appellant’s argument were accepted this would mean giving a “carte blanche” to applicants who administer a large amount of patent applications and who apply generally accepted systems. It would not be clear where the limits of all due care lie, because it would be difficult to draw a line how many mistakes could be accepted without loss of rights. This would not be in line with the wording of A 122(1) which stipulates that all due care required by the circumstances has to be shown. This means in the individual situation, not just in general. [8] The Board cannot see how the jurisprudence, cited by the appellant, concerning the proof of prior use of mass products or public availability of commercial brochures could be applied here. It might well be that the monitoring of time limits of a huge patent portfolio is somehow a mass business, nevertheless A 122(1) requires that the individual circumstances of the case have to be explained and proven. The principle of balance of probabilities only affects the standard of proof but does not release the applicant from his obligation to submit the necessary facts. [9] Moreover, even after expiry of the due date, the appellant could still have paid the renewal fee together with an additional fee. Once a reminder to this regard is received, all due care requires that the applicant checks whether the non-payment was intentional or not. It cannot be assumed that everything is correct, simply because the software normally works correctly. These reminders serve as a safety-net if a mistake happens. Apparently, the EPO reminder was uploaded into Anaqua by the US attorney, but nothing happened. As admitted by the appellant this was Ms Rydberg’s fault, since she did not perform her duties correctly. Again, no details were 652 | 3398
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presented as to why and thus it has not been established that all due care in respect of the additional period has been observed. Thus, re-establishment of rights must already fail for this reason. […] The appeal is dismissed. Should you wish to download the whole decision, just click here. There is also a parallel decision: J 4/12. The file wrapper can be found here.
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T 459/09 – Freeze! Or I’ll Shoot
K’s Law – The ebook
T 459/09 – Freeze! Or I’ll Shoot 25 Feb 2013
To say it in patent language: as soon as you amend, your claims come under full A 84 scrutiny, even if you are only combining granted claims. There have been decisions of that kind in the past, but the present decision appears to be more reckless than what we have seen so far. The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke the patent. Before discussing the allowability of some requests admitted under Article 13 RPBA, the Board had to examine whether it was competent to examine the clarity of claims that only combined claims as granted. [4.1.1] The appellant disputed that clarity issues could be dealt with in opposition appeal proceedings in cases such as the present one, in which the changes made to the claims of the main request and the first auxiliary request only consisted in the combination of claims 1 and 14 of the patent as granted. In particular, the appellant argued that since the requirement of clarity was not a ground of opposition, none of the claims of a patent as granted could be attacked under A 84 with the notice of opposition. For this reason, non-compliance with A 84 could not be objected to either in later stages of the proceedings with respect to a combination of claims of the patent as granted. [4.1.2] It is generally accepted that the list of grounds for opposition according to A 100 is exhaustive. This means that objections under A 84 cannot be raised against a granted patent even though they are manifest. [4.1.3] The situation is different in case of the maintenance of a patent in amended form. A 101(3) requires that if an OD (or a Board of appeal (A 111(1), second sentence, first alternative)) is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during opposition proceedings, “the patent and the invention to which it relates meet the requirements of the EPC”, it shall decide to maintain the patent as amended, provided that the conditions laid down in the Implementing Regulations are fulfilled. If the patent and the invention to which it relates do not meet the requirements of the EPC, it shall revoke the patent. This Article apparently establishes a deviation from the framework of A 100 in that the power to examine a patent in amended form is not restricted to the grounds for opposition. In decision G 9/91 [19], the Enlarged Board of Appeal confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, «such amendments are to be fully examined as to their compatibility with the requirements of the EPC». [4.1.4] However, according to the jurisprudence of the boards of appeal, there are limits to the competence accorded by A 101(3) as regards the examination of an amended patent. For example, A 101(3) would not justify objections to be based upon A 84, if such objections did not arise out of the amendments made (see T 301/87 [headnote 1; 3.7]). Along this line, an objection of lack of clarity should not be raised for instance with respect to an unclear feature comprised in an independent claim of a patent as granted, if this claim is amended by way of addition of a new, clear feature, provided that both features are unrelated. Boards of appeal have also perceived a limit in the particular case in which an independent claim of a granted patent is amended simply by combining it with an associated dependent claim. In particular, in T 1855/07 [2], referring to existing jurisprudence (see T 367/96; T 301/87; T 472/88; T 362/02 (NB: this should read T 326/02); T 381/02), the board held that the power to examine clarity under A 84 failed when the amendment merely consisted in the literal inclusion of dependent claims into the associated independent claim of a patent as granted (“satzbauliche Eingliederung”). The board noted that the jurisprudence to which it referred made a distinction between substantial amendments, which under A 101(3) (A 102(3) EPC 654 | 3398
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1973) were to be fully examined as to their compatibility with the requirements of the EPC, and merely formal amendments arising from simple linguistic combinations of granted claims, for which the framework of A 100 applied. [4.1.5] However, the jurisprudence of the boards of appeal comprises also examples in which combinations of claims of a granted patent were considered to constitute substantial amendments, which justified an examination under A 84. In T 1459/05 [4.3] the board decided not to adopt the existing jurisprudence, according to which there was no power to examine matters of clarity under A 84 when the amendment consisted of a combination of claims as granted. The board found that an exception had to be made in the case before it because the assessment of the resulting claimed subject-matter decisively depended on the technical significance of the sole added feature in that any difference from the prior art could only be defined on the basis of that feature. However, its technical significance was so unclear for the skilled person that any such difference was not apparent or at least could not be identified with a reasonable degree of certainty. The board held that it had to be able to exercise its discretion and to deviate, exceptionally and on a case-by-case basis, from the practice of ruling out any power of examination under A 84 in the case of amendments consisting of a combination of claims as granted. In particular, such discretion had to be exercised where a strict application of the approach which excluded the raising of an objection on the grounds of lack of clarity would lead to a situation in which a further examination of the amended patent, e.g. in relation to novelty and inventive step, would be impeded or might not even lead to a meaningful result. In T 1440/08 [4] the board also held that it had the power to examine an amendment under A 84 in line with other decisions of the existing jurisprudence (see T 472/88; T 420/00; T 681/00), in particular when the combination of granted claims led to an inconsistency between two features of the amended claim 1. Irrespective of the fact that the clarity problem had already affected the claims of the patent as granted, it was the change of perspective on the invention due to the amendment by which the clarity problem became apparent. [4.1.6] In view of the foregoing, the present Board holds that clarity of an amended independent claim should, in principle, be examined, even if the amendment only consists in a mere literal combination of claims of the patent as granted. Any other approach would indeed entail the risk of unduly restricting the mandate for examination of an amended patent which A 101(3) imposes on an OD having to deal with an amended patent. In fact, the wording of A 101(3) qualifies neither the nature nor the scope of the amendments. After amendment of any kind, the OD may no longer decide to reject the opposition, as would have been possible, had, for example, a clarity objection been raised as the sole ground for opposition. Instead, the OD may only decide either to maintain the patent in amended form or to revoke the patent. Their decision is taken on the basis of whether the patent and the invention to which it relates meet the requirements of the EPC. A 101(3) indeed defines in absolute terms that the requirements of the EPC shall be considered when amendments are made by the proprietor of the patent during opposition proceedings. Therefore, the term “amendments” in A 101(3) should not be construed narrowly and, irrespective of the manner in which the patent is modified, the amended patent should be subjected to an examination to ensure compliance with all requirements of the EPC. This approach is in agreement with G 9/91 […]. [4.1.7] In this context, the Board notes that an amendment consisting of the incorporation of a technically meaningful feature in an independent claim of a granted patent does indeed represent an attempt to overcome an objection within the framework of A 100 against the patent as granted, the amendment having to be occasioned by a ground for opposition (R 80). It follows that such an amendment is of a substantial nature and will normally have an effect on the substantive examination, such as for example on the assessment of novelty and inventive step. In the Board’s opinion, any amendment that can be qualified as being of a substantial nature in the above sense would in principle justify an unrestricted exercise of the examination power derivable from A 101(3), irrespective of the kind of amendment performed. Specifically, it is immaterial whether the amendment arises from the combination of a feature from the description with an independent claim, or from the literal combination of claims of the granted patent. The amended patent would thus normally be examined pursuant to A 101(3) so as to establish whether it meets all the requirements of the EPC. A deviation from this rule may, however, not be excluded in particular cases. This has to be judged on a case-by-case basis.
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T 459/09 – Freeze! Or I’ll Shoot
K’s Law – The ebook
[4.1.8] In the present case, with regard to the appellant’s main request, first auxiliary request and third auxiliary request, the introduction of the additional feature of dependent claim 14 into claim 1 of the patent as granted highlights the significance of a specific technical concept, i.e. the capability of the interlaced antenna array for operation in three specific bands. This amendment is of a substantial nature. In view of the foregoing, the Boards holds that it has the power to examine whether the amended patent meets the requirements of A 84 EPC 1973. The Board has also provided headnotes: I. An amendment consisting of the incorporation of a technically meaningful feature in an independent claim of a granted patent does indeed represent an attempt to overcome an objection within the framework of A 100 against the patent as granted, the amendment having to be occasioned by a ground for opposition (R 80). It follows that such an amendment is of a substantial nature and will normally have an effect on the substantive examination, such as for example on the assessment of novelty and inventive step. II. Any amendment that can be qualified as being of a substantial nature in the above sense would in principle justify an unrestricted exercise of the examination power derivable from A 101(3), irrespective of the kind of amendment performed. Specifically, it is immaterial whether the amendment arises from the combination of a feature from the description with an independent claim, or from the literal combination of claims of the granted patent. III. The amended patent would thus normally be examined pursuant to A 101(3) so as to establish whether it meets all the requirements of the EPC. A deviation from this rule may, however, not be excluded in particular cases. This has to be judged on a case-by-case basis (see [4.1.7]). In my understanding, until now an A 84 assessment of mere combinations of granted claims was only accepted in exceptional cases, whereas the present decision turns the tables and tells us that only in exceptional cases such an assessment should not be carried out. Now that we have so clear a statement that appears to contradict earlier case law (possibly relegated to point III of the headnotes), perhaps would it be a good idea to ask the Enlarged Board to clarify the situation once and for all, for the sake of legal security. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 713/08 – Too Select
K’s Law – The ebook
T 713/08 – Too Select 23 Feb 2013
The present examination appeal decision is not surprising at all, but it nicely demonstrates the – rather strict – way in which A 123(2) is applied by the EPO nowadays. Claims 1, 12, 13, 26, and 27 as filed read (my emphasis): 1. A method for modulating the activity of at least one neurotrophin and/or a pro-neurotrophin in a cell or an organism, such as an animal, comprising administering to said animal a sufficient amount of an agent capable of (i) binding to a receptor of the Vpsl0p-domain receptor family and/or (ii) interfering with binding between a receptor of the Vpsl0p-domain receptor family and a neurotrophin and/or proneurotrophin and/or (iii) modulating the expression of a receptor of the Vpsl0p-domain receptor family. 12. The method according to any of the preceding claims, wherein the agent is selected from proteins, peptides, polypeptides, antibodies, antisense RNA, antisense-DNA or organic molecules, SiRNA. 13. The method according to any of the preceding claims, wherein the agent is capable of inhibiting binding of said neurotrophin or said pro-neurotrophin to the receptor. 26. A method for treating a disease or disorder in an individual, comprising administering to said individual a sufficient amount of an agent as defined in any of the claims 1-25. 27. The method according to claim 26, wherein the disease or disorder is selected from one or more of the following diseases or disorders: inflammatory pain, diseases or disorders of pancreas, kidney disorders, lung disorders, cardiovascular disorders, various types of tumours, psychiatric disorders or neuronal disorders. Claim 1 of the main request before the Board read: Use of an agent capable of inhibiting the binding of a proneurotrophin to a Vpsl0p-domain receptor by binding to an extracellular part of the receptor, an intracellular part of the receptor, or a segment of the transmembrane part of the receptor in the manufacture of a medicament for treating and/or preventing neurological diseases and disorders in an animal. The Board found this claim not to comply with the requirements of A 123(2): [7] In accordance with established case law of the Boards of Appeal, the relevant question to be decided in assessing whether an amendment adds subject-matter extending beyond the content of the application as filed is whether the proposed amendment is directly and unambiguously derivable from the patent application as filed. [8] In a primary line of argumentation the appellant has referred to a combination of various claims as originally filed which when taken in combination supported claim 1. However, the board notes that when combining the various embodiments of the claims […] it transpires that the specific subject-matter of claim 1 can only be derived therefrom when making a variety of specific selections from the lists of embodiments which are the subject of these claims. By way of example the board refers to claim 12 as filed in which antibodies are listed among other candidate inhibitory binding compounds; to claim 13 as filed, in which a choice has to be made between pro-neurotrophin and neurotrophin and to claim 27 as filed where neuronal diseases are merely one of the numerous diseases listed to be treated. [9] Accordingly, the claims as originally filed cannot provide a basis for claim 1 to comply with the requirements of A 123(2). As the Board found that the description did not provide such a basis either, the request was dismissed. Should you wish to download the whole decision, just click here. 657 | 3398
T 713/08 – Too Select
K’s Law – The ebook
The file wrapper can be found here.
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K’s Law – The ebook
To All The EQE Candidates ...
To All The EQE Candidates ... 23 Feb 2013
... reading this blog, the best of luck!
I shall be invigilating in Rome this year, so if you happen to take the exam there, don’t be shy, say buongiorno.
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T 1138/11 – What Silence Does Not Mean
K’s Law – The ebook
T 1138/11 – What Silence Does Not Mean 22 Feb 2013
This decision contains some interesting paragraphs on the admissibility of a third party intervention. [1.1] With letters of 10 and 15 August 2012 Bericap GmbH&Co. KG filed an intervention referring to proceedings before the “Landgericht Düsseldorf” which it had initiated against [the patent proprietor] for a ruling that it is not infringing the patent in suit […]. [1.2] The intervener’s submissions in respect of the patentability of the patent in suit and its claims need not be dealt with because the intervention has been found inadmissible by the Board for the following reasons. [1.3] The formal requirements for the filing of an intervention of the assumed infringer set out in R 89, including the payment of the opposition fee, are fulfilled. [1.4] According to A 105, any third party may, in accordance with the Implementing Regulations (R 89), intervene in opposition proceedings after the opposition period has expired, if the third party proves that (a) proceedings for infringement of the same patent have been instituted against him, or (b) following a request of the proprietor of the patent to cease alleged infringement, the third party has instituted proceedings for a ruling that he is not infringing the patent. [1.5] As decided by the Enlarged Board of Appeal (EBA) in case G 1/94, an assumed infringer of a European patent may also intervene in appeal proceedings and may base its intervention on any ground of opposition specified in A 100. However, this decision of the EBA is silent in respect of the requirements of A 105 that need to be satisfied by the intervener. [1.6] Since [the patent proprietor] has not instituted proceedings for infringement of the patent in suit against the intervener, the requirements set out in A 105(1)(a) are clearly not fulfilled. [1.7] For an intervention to be admissible according to A 105(1)(b) there need to be (national) proceedings instituted by the intervener against the patent proprietor for a ruling that it is not infringing the patent. [1.7.1] As discussed with the parties at the oral proceedings (OPs), the intervener has not sufficiently submitted nor proven that the proceedings before the District Court of Düsseldorf have actually been formally instituted. For the question of whether and when a law suit has been instituted, the national procedural rules apply (Benkard/Schäfers, EPC, 2nd edition 2012, Article 105, para. 15). In this respect §§ 261(1) and 167 of the German Code of Civil Procedure are relevant: § 261(1) ZPO: Pending suit By the complaint being brought, the dispute shall become pending. § 167 ZPO: Retroactive effect of the service If service is made in order to comply with a deadline, or to have the period of limitations begin anew, or to have it extended pursuant to section 204 of the Civil Code (Bürgerliches Gesetzbuch, BGB), the receipt of the corresponding application or declaration by the court shall already have this effect provided service is made in the near future. [1.7.2] The intervener has only proven that it has filed a law suit according to § 261(1) ZPO for a ruling that it is not infringing the patent in suit and that the competent chamber of the District Court of Düsseldorf has ordered
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T 1138/11 – What Silence Does Not Mean
K’s Law – The ebook
the service of the writ to [the patent proprietor]. However, there is no evidence that the service has actually been executed. [1.7.3] The Board does not concur with the intervener on its interpretation of § 167 ZPO. According to its clear wording, this provision is applicable to a case when a law suit is filed close to a deadline or a period of limitation. If the service of the writ is then executed after that deadline or period of limitation, it provides that – under certain conditions – the later service is given a retroactive effect (ex tunc) to the date of the filing of the law suit. The intervener’s argument that the pendency of the current appeal proceedings are to be deemed as a deadline according to § 167 ZPO is legally without substance. The intervener misconceives not just the wording of that provision but also its object. First, § 167 ZPO serves a specific purpose in a particular stage of civil proceedings before German courts that cannot be “transferred” to the distinctive procedural situation before a Board of Appeal as an international court competent for a different jurisdiction. Second, the condition for the retroactive effect, i.e. the actual service of the writ, has undisputedly not (yet) been fulfilled, as it is still pending. For reasons of pure logic, without the proven service of the writ there is no room for a retroactive effect of it. [1.8] Even if the proceedings before the District Court of Düsseldorf were to be considered as legally instituted proceedings, the further requirement provided for in A 105(1)(b), i.e. that prior to the institution of these proceedings the patent proprietor has issued a request to the intervener to cease alleged patent infringement, is not met. [1.8.1] It is an undisputed fact that [the patent proprietor] has not requested the intervener to cease alleged infringement before the intervener filed the above mentioned proceedings before the District Court of Düsseldorf. [1.8.2] The Board does not follow the intervener’s argument that this requirement is to be determined according to the relevant national law, i.e. German law. [1.8.3] As discussed with the parties during the OPs, this requirement is an essential legal feature in A 105(1)(b) itself with no explicit or implicit reference to the national laws of the EPC contracting states; A 125 is evidently of no relevance in the current context. Since the laws in the contracting states vary to quite an extent from one to another, this requirement needs to be applied in a harmonized manner for all contracting states. Such a harmonization can only be secured by way of an autonomous interpretation of the provisions and legal terms of the EPC by the Board. [1.8.4] Even if there were circumstances recognized by the German civil law courts in which a prior written warning (“Abmahnschreiben”) could be dispensed with before commencing a law suit for a declaration of noninfringement of a patent, and even if the EPO and the Boards of Appeal might in their findings consider the practice of the national institution competent for a ruling that the intervener is not infringing the patent, it is for the EPO and the Boards of Appeal alone to decide whether or not a request referred to in A 105(1)(b) has actually been issued (cf. Günzel in Singer/Stauder, EPÜ, 5th edition 2010, Article 105, para. 3). The cited decision of the German Federal Court of Justice (BGH XII ZR 20/94) speaks certainly not in favour of the intervener. It concerns the issue of the admissibility of a negative declaration for the defence of a claim for matrimonial maintenance issued for the past and therefore concerns quite a different area of law and a very particular procedural situation, both not comparable with the present case. [1.8.5] Apart from this, the following has to be taken into account. An intervention of a third party is treated as an opposition and this party is thus granted the status of an opponent, as an exception to the 9-month time limit for filing a notice of opposition A 99(1)). It follows from this that A 105 is to be interpreted in a restrictive manner.
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T 1138/11 – What Silence Does Not Mean
K’s Law – The ebook
[1.8.6] Consequently, it is an essential requirement for the admissibility of this intervention that [the] patent proprietor has requested the intervener to cease alleged infringement before the intervener filed the above mentioned proceedings against [the patent proprietor]. A mere warning letter from the patent proprietor, the threat of an infringement action or a warning addressed to a third party associated with the assumed infringer, or a letter addressed to the assumed infringer that the patent proprietor reserves its right to commence legal proceedings in the future cannot be qualified as the request required by A 105(1)(b). It is rather for the intervener to establish that a request to cease an alleged infringement was addressed to him (see: T 392/97 [2.2 et seq.]; T 887/04 [2.1 et seq.]; Benkard/Schäfers, EPÜ, 2 nd edition 2012, A 105, para. 15; Günzel in Singer/Stauder, EPÜ, 5th edition 2010, Article 105, para. 3). [1.8.7] The intervener’s letters to [the patent proprietor] and the latter’s replies […] cannot be qualified as a surrogate alternative for such a request. With its letters of 26 June 2012 […] and of 5 July 2012 […], the intervener had explicitly requested [the patent proprietor] to confirm that it would not infringe the patent in suit “with regard to the import, sale, offer for sale and/or other forms of use of the Bericap AV3-closure in Germany” and that [the patent proprietor] would refrain from initiating any legal actions based i.a. on the patent in suit against the intervener. This request can be understood as an enquiry that [the patent proprietor] should otherwise state that it requested the intervener to cease such an infringement. However, the decisive point in this context is that these letters were sent by the intervener to [the patent proprietor] and not vice versa and, hence, cannot qualify as a request of a patent proprietor to an assumed infringer within the meaning of A 105(1)(b). In its letter of 26 July 2012 […], [the patent proprietor] explicitly refused to issue any statement at all. Even if one could presume an economic and also a legal interest of the intervener in having a clear legal situation in respect of the patent in suit before preparing the introduction of its product on the German market, this interest eo ipso is neither sufficient to replace the prescribed request to cease infringement, nor can it force [the patent proprietor] to either issue such a request or to clear the product release intended by the intervener. [1.8.8] The Board to the contrary follows the argument of [the patent proprietor] that it was under no legal obligation to react in whatever way. With its letters the intervener merely confronted [the patent proprietor] with a hypothetical product. There are simply no proceedings between [the patent proprietor] and the intervener. The patent dispute in Turkey about the so-called Bericap AV3-closure assembly is between [the patent proprietor] and [the opponent], the latter being legally independent from the intervener according to its own submission. The proceedings in Turkey also do not have any effect on patent-related issues in Germany. The intervener’s indication that it intended to place i.a. that assembly on the German market, also cannot qualify as such. As a consequence, there was no need nor obligation for [the patent proprietor] to express itself on an abstract question of infringement and/or to issue a request to cease such a hypothetical infringement. Accordingly, the fact that [the patent proprietor] did not comply with the intervener’s request cannot be judged as a substitute for the request to cease infringement as required in A 105(1)(b). [1.9] Therefore the intervention is to be rejected as inadmissible. [1.10] As far as the intervener has paid not just the opposition fee in accordance with R 89(2), 2 nd sentence EPC but also an appeal fee, the latter was paid without legal basis (G 3/04 [11]). Consequently, the appeal fee is to be reimbursed ex officio. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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R 1/12 – There Are Limits
K’s Law – The ebook
R 1/12 – There Are Limits 21 Feb 2013
As any human interaction, oral proceedings (OPs) before a Board of appeal (BoA) can go dead wrong. The present petition for review shows that, as a rule, petitions for review will not allow to remedy such situations, unless the petitioner has extensively made use of the double-edged sword of R 106. There are also some very clear and fundamental statements as to what the right to be heard really encompasses. The patent proprietor had filed the petition after BoA 3.2.08 in decision T 467/09 had dismissed its appeal against the revocation of its patent by the Opposition Division. The petitioner pointed out that its right to be heard had been violated. Among other things, the chairman had interrupted its attempt to illustrate the meaning of a claim feature by citing passages of the patent and told it to “Stop reading the description to me!” (“Hören Sie auf, mir die Beschreibung vorzulesen !”). Moreover, the petitioner had made the following oral request when resuming the proceedings after a pause: “The applicants (sic) declare that they do not agree with the decision of the BoA according to which the novelty of claim 1 on file is only based on the feature “plastics” and that, when inventive step was discussed, [the appellants] were not allowed to explain the synergy between the individual features of the claim on file in the context of a combination invention, and that [they] consider this to be a violation of the right to be heard.” According to the petitioner, the oral request that this objection be cited in the minutes had been refused by the chairman without any justification “while the whole BoA laughed out loud” (unter lautem Gelächter der gesamten Beschwerdekammer). What will the Enlarged Board (EBA) do with such a mess? *** Translation of the German original *** Admissibility of the request – R 106 [1] Among all the events which, in the eyes of the petitioner, justify, alone or in combination, a violation of the right to be heard, only one – i.e. the non-admission of submissions regarding the synergy of the features in claim 1 as filed during the OPs – corresponds as to its content to a complaint that has been formally expressed before the BoA, regardless of whether it was worded according to its assertion or according to the version that is recorded in the (corrected) minutes. [2] The petitioners did not assert, and their presentation of the facts of the case does not support the assumption that they, or their representative, respectively, had raised an objection within the meaning of R 106 in view of the further alleged misconduct of the BoA, and in particular, the chairman, which had led to a “fundamental” violation of the right to be heard. Nor did they assert or is it apparent that they or their representative, respectively, had been hindered from raising an objection within the meaning of R 106 against the further conduct of the proceedings by the chairman and the behaviour of the members of the BoA before the decision was issued. [2.1] It is clear that the persons taking part on behalf of the petitioner, and in particular the representative, found the way in which the chairman conducted the proceedings problematic, and that the course of the proceedings and even more so their outcome were unsatisfying to them. However, the right to be heard does not mean – not least also under the national law of their home country and country of their seat, respectively – the right to filing submissions that are unlimited as to duration and content. Rather, the deciding body has to decide on which grounds it wishes to base the decision and which facts, evidence, and arguments it considers relevant for the decision (entscheidungserheblich). It is only in respect of these [issues] that the parties to the proceedings have to be granted the right to be heard (A 113(1)) by being given the opportunity to comment, it being understood that the extent of this opportunity has to be sufficient (taking into account the written submissions). [2.2] Insofar as the petitioner had the intention to assert a substantial procedural violation of the right to be heard based on these [events], they would have had to raise formal and specific objections during the OPs (R 4/08, R 663 | 3398
R 1/12 – There Are Limits
K’s Law – The ebook
7/08), and indeed could have done so. The same holds true for the further criticism expressed by the petitioner […]. However, for whatever reason, the petitioners have omitted to raise objections within the meaning of A 112a(2)(c). [2.3] The formal objection, which was confirmed in the decision of the BoA via the request for correction of the minutes […], clearly and exclusively refers to the (asserted) non-admission of submissions regarding the synergy of individual claim features in the course of the OPs. Considering the moment at which it was raised, it cannot possibly have referred to the subsequent conduct of the proceedings and the compliance of the appeal proceedings as a whole with A 113(1). [2.4] The fact that a specific submission of the petitioner regarding inventive step had not been perceived and understood (sinnerfassend wahrgenommen) and taken into account in the reasons for the decision […] could qualify as a circumstance that the petitioner could only have realized when it had received the decision to be reviewed. Therefore, a corresponding objection could not have been raised during the appeal proceedings. [3] Thus the present request for review under A 112a is clearly inadmissible to the extent to which it does not refer to the objection that has been incorporated into the minutes […]. [4] As far as this objection is concerned, it may be doubted, in view of the order and the reasons for the decision for correcting the minutes, whether the further requirement under R 106 was fulfilled, i.e. that the “objection … was … dismissed by the BoA”. However, it view of the following considerations this does not have to be examined any further. Allowability of the request [5] Considering the objection against the non-admission of submissions on the synergy between individual features of the claim filed during the OPs: [5.1] For the right to be heard to have been granted, it is not decisive whether a party had the opportunity to comment on all factual and legal questions it considers important. Rather, the right to comment within the meaning of A 113(1) refers to the grounds on which the decision is based. The latter are determined by the deciding body. Possible mistakes made by the deciding body concern the correctness of the decision as to its substance, but they do not constitute a violation of A 113(1), very much like the limitation or the refusal of the possibility to comment on factual or legal questions that are not essential to the (main) grounds on which the decision is based. Quite to the contrary, a fair, economical and appropriate conduct of the proceedings almost requires the chairman to prevent statements that get out of hand (ausufernd), that are not relevant (any more) or that are repetitive, on behalf of any party. This also holds true for comments as to the substance [of the case]. An example that often occurs in practice is the submission of further comments as to the relevance of a claim feature within the framework of the discussion of inventive step, if this question has already been exhaustively discussed when novelty was examined. The fact that parties have their own view on which submissions are necessary or useful (in view of a successful course of the proceedings) is natural and legitimate. However, the fact that the chairman does not comply with them at all, or only partially, or not at once, does not per se lead to a violation of the right to be heard. What has to be ensured, in order for the right to be heard to be granted, is that [the parties] have an appropriate opportunity to comment on the grounds on which the decision is subsequently based, and only on them. [5.2] In the decision to be reviewed [the BoA] denied the existence of an inventive step in view of the closest prior art and the problem to be solved that results from it […]. When doing so, the BoA has not limited itself to give its reasons […] but has also explained why it could not endorse the arguments of the petitioners, in particular on the synergetic interaction between the claim features […]. The BoA rightly refers to the request for correction of the minutes […], i.e. the statement repeated in the decision on the appeal “The core of the claimed invention consists in …” […]. Moreover, […] the reasons for the decision deal with the argument of the appellant as to why the inventive step was based on a “synergetic interaction between the plastics of the bending rail (Biegeschiene) and the other features of the invention”. [5.3] Such a thorough discussion of the arguments of the petitioners is not a requirement for the right to be heard within the meaning of A 113(2) to have been granted, but it constitutes (further) evidence for it. This also holds true for the wording of the objection raised during the Ops, as asserted by the petitioner (synergy between the individual features “within the meaning of a combination invention, in the context of the discussion of inventive step”), which is more narrow as to its content.
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R 1/12 – There Are Limits
K’s Law – The ebook
[5.4] Thus [the EBA] notes that the objection against the non-admission of submissions, which, according to the minutes of the proceedings, has been raised by the petitioners long before the end of the OPs, has not led to a violation of the petitioners’ right to be heard (within the meaning of A 113(1)) on the grounds of which the decision to be reviewed was based. [6] The further objection mentioned above […] is not allowable either. In case the BoA had not “perceived and understood” (sinnerfassend wahrgenommen) a specific submission of the petitioners on inventive step and had not taken it into account in the reasons for the decision, this does not amount to a violation of the right to be heard but may affect the correctness of the decision as to its content. […] To the extent to which the petition for review is not dismissed as clearly inadmissible, it is dismissed as clearly unallowable. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1663/12 – A Drop-Dead Appeal
K’s Law – The ebook
T 1663/12 – A Drop-Dead Appeal 20 Feb 2013
In the present case the patent proprietor filed a request for re-establishment into the time limit for filing a notice of appeal. The factual situation was as follows (sorry for the length, but I find the modus operandi interesting): Mr Adrian F. had worked for 26 years in the law firm representing the appellant but had retired from the partnership on June 30, 2011. As a number of significant cases that he was handling were still pending at the time of his retirement, he continued to deal with these cases, as a consultant of the law firm. Since he did not visit the offices of the law firm daily, but on a regularly basis, a system was put in place that ensured that a partner was kept informed of what was happening on a case and that all information was passed promptly to Adrian F. The latter still had access to documents saved on the server and to the email system of the law firm and, on a daily basis, got the so-called prompt list showing all due dates which had been registered in the firm’s software (Inprotech). Copies of his outgoing emails were printed and passed to a partner. All documents and due dates were electronically registered and checked by the Records Department. The appellant explained that the failure to file the notice of appeal had been caused by a docketing mistake in the law firm during sorting of the incoming mail. Incoming mail was typically received between 11 am and 1 pm. All incoming mail was sorted initially by Mr Duncan H., a senior member of the Records Department, with the assistance of another senior member, Mr Andrew S. when there was a particularly large amount of mail to be sorted. The mail was stamped, identified and mail involving a “drop-dead” deadline (such as revocation decisions) was singled out; all other mail was put into the relevant mail baskets. Any delivery card and acknowledgment sheet would be detached and pinned to the back of the communication. As soon as all the mail had been sorted, the front page of all the “drop-dead” communications that had been separated out from the rest of the incoming mail was photocopied and the copies were given to the Manager of the Records Department, Ms Tricia L. In this way she was kept informed of all the “drop-dead” communications. She went through these on the next working day, after the communications had been processed by the Records Department, and checked that the deadlines had been correctly docketed in Inprotech. After the copy of the first page of the “drop-dead” communication had been made, a tick was placed on the bottom left hand corner of the original communication to confirm that the copy of the front page had been given to Tricia L. The original “drop-dead” communication was then put into the mail basket of the appropriate section of the Records Department. “Drop-dead” communications would therefore always be on top of the rest of the mail in the relevant mail basket. The basket of sorted mail was then given to the head of the relevant Records section (i.e. the team leader). In the case of European patent applications and patent opposition cases, Andrew S. was the team leader. He reviewed all the mail to check for anything requiring immediate processing because of an immediate deadline e.g. filing instructions where there was an imminent deadline. Such urgent mail was processed first (involving entry of details into the database and passing urgently to a partner for action). Revocation decisions did not fall into the category of urgent mail requiring immediate attention. After urgent mail had been separated by the team leader, the remaining mail was passed to one of the experienced clerks in the relevant section to be processed on the following working day. The first step in the processing involved checking that the reference was correct and, if not, marking it up with the correct reference. This was done on each item of mail. The responsible clerks in relation to EPO communications were Mr Richard W. and Mr Elliott G. Having completed their checks, they then passed the mail to another clerk, Ms Grace B., who was responsible for retrieving the relevant file. The file with the mail attached to it was then passed to another clerk, Ms Medinat N., for further processing, including input of any due dates into Inprotech. If the file was not in the central filing system in the Records Department (e.g. if it was 666 | 3398
T 1663/12 – A Drop-Dead Appeal
K’s Law – The ebook
in the room of one of the attorneys), the mail was passed back to Richard W. and Elliott G. without the file. They were responsible for the further processing of mail in such cases. When Richard W. or Elliott G. were processing a revocation decision, they needed to arrange for the physical file to be retrieved from the relevant attorney so that the revocation decision could be processed appropriately (including applying a sticker to the front of the file indicating that the case was in appeal proceedings). In order for the file to be retrieved, one of them would mark the top right hand corner of the decision with a tick and the initials of the person who had the file and then pass the communication to Grace B. so that she could retrieve the file from this person. Once Grace B. had retrieved the file, it was passed to Medinat N. for processing of the revocation decision. Inprotech automatically calculated the deadlines for filing the notice of appeal and the statement of grounds (plus the 10 days) when the date of the revocation decision was entered. Medinat N. would then mark up the front of the communication in red with any relevant due date so that it was immediately apparent to the relevant partner/attorney. Where the communication was a revocation decision, Medinat N. would also place a sticker on the front of the physical file indicating that the case was in appeal proceedings. Once Medinat N. had completed her processing work, she would initial the receipt stamp that the mail sorters had placed on the communication and it was then passed to the responsible partner with the file, clipped to the front of the file or bound to the front of the file with an elastic band. In the case of revocation decisions, the delivery card and acknowledgment sheet were clipped to the top of the communication so that the responsible partner could immediately sign, date and return these to the Records Department for sending back to the EPO. After the mail has been processed and due dates docketed in Inprotech, Tricia L. went through the copies she had been given of the “drop-dead” communications and checked for each case that deadlines had been correctly docketed. Inprotech generated daily prompt lists for all attorneys and trainees (i.e. fee earners), showing the due dates for the cases for which that attorney was responsible. In the case of due dates for filing a notice of appeal from a revocation decision, the due date would start to appear on the prompt list from the day after the decision was entered into Inprotech (i.e. about two months in advance of the due date). The prompt lists were emailed to the attorneys every morning. Andrew L.’s prompt lists were emailed to all the partners every Monday. The communications under consideration were received on 8 May 2012, i.e. the first working day after a public holiday in the UK. There was therefore a particularly large volume of mail on that day and as a result Andrew S. assisted Duncan H. with sorting the mail. The minutes were received on 8 May 2012 and had been duly stamped with the receipt stamp when it was processed as incoming mail. The reference on it had been corrected by Elliott G. to show the correct opposition file reference, the receipt stamp had been initialled by Richard W. and Dr Paul H.’s initials had been marked at the top right hand corner of the page, by Richard W., to indicate that Paul H. was the responsible partner. No due date was marked on the front of the minutes in red, or was docketed in Inprotech, as no due date is associated with minutes. There were no markings on the revocation decision, which indicated that it has not been seen during the mail sorting or by the Records Department and has not been processed at all. In consequence, no due date was docketed in Inprotech. The patent proprietor believed that the revocation decision must have been stapled to the back of the minutes, and that the stapling was done in such a way that it was not readily apparent that there were two separate communications - the second being a “drop-dead” communication. The revocation decision must have remained stapled to the back of the minutes when the minutes were subsequently processed by Richard W. Paul H., who was handling the prosecution work for the divisional patent application of the patent under consideration, did not recall whether he noticed the revocation decision. He signed and dated the delivery card and acknowledgment letter with the date that was stamped on the minutes but did not review the documents that were being acknowledged. After dealing with the acknowledgments, he passed the file to the secretary Ms Sandra W. with instructions to email the EPO communication to Adrian F. In order to do so, Sandra W. needed to scan it and, therefore, to remove any staples so that the document could go through the paper feed tray. In doing this she would have seen there were two documents and sent them as two separate, named attachments. For unknown reasons, Adrian F. did not look at the attachments to the email. On May 16, he received an email from Ms Melanie B., an employee of the patent proprietor, informing him that she had found the decision on-line and sought confirmation of the due dates. She attached a copy of the decision and other documents from the EPO website. Adrian F. replied on the next day; he explained the deadlines (July 12 and September 12, respectively) and announced a draft statement of grounds for the end of July. When 667 | 3398
T 1663/12 – A Drop-Dead Appeal
K’s Law – The ebook
Melanie B. explained that this was too late, Adrian F. concentrated to the statement of grounds, rather than on the filing of the notice of appeal. He did not notice that the deadline for filing the notice of appeal was not on his prompt list. It was in the course of email exchanges with his client on July 16 to try to fix a time for discussion of the EPO appeal, that Adrian F. suddenly realised that the notice of appeal had not been filed. It is hardly surprising that the Board rejected the request for re-establishment: Admissibility of the appeal [3] Pursuant to A 108, first sentence, a notice of appeal must be filed within two months after the date of notification of the decision appealed, and pursuant to the second sentence of this provision no appeal is deemed to have been filed until the fee for appeal has been paid. In the present case, the time limit for filing a notice of appeal and paying the appeal fee expired on 12 July 2012 (R 126(2) and R 131(2) and (4)). The notice of appeal together with the debit order for the appeal fee were indisputably received on 19 July 2012. Therefore, the appeal should be deemed not to have been filed according to A 108, second sentence, unless the appellant’s application for re-establishment can be allowed. Appellant’s request for re-establishment of rights [4] The request for re-establishment of rights complies with the formal requirements of A 122(1) in conjunction with R 136(1) and (2). The cause of non-compliance was removed in the evening of 16 July 2012 when the appellant’s representative realised that he had not arranged for the notice of appeal to be filed. The request for reestablishment together with the debit order for the required fees was filed on 25 July 2012 and, therefore, within the prescribed two-month time limit. Jurisprudence on the requirement of “all due care” [5] In accordance with A 122(1), an applicant has his rights re-established upon request if he was unable to observe a time limit vis-à-vis the EPO “in spite of all due care required by the circumstances having been taken”. Where the applicant has authorised a professional representative to represent it before the EPO, the “all due care” requirement applies to the professional representative (see e.g. decision J 3/93 [2-2.1]). It is the established case law of the Boards of Appeal that in a large firm this “all due care” requirement is only fulfilled if the noncompliance with the time limit results from an isolated mistake within a normally satisfactory system for monitoring time limits (see e.g. decision T 428/98 [3.3]) and if at least one independent cross-check is built into the system (decision T 1726/08 [13]). The systems used for the monitoring of time limits may include the use of specialised computer systems or software. However, whether any system fulfils the requirement of “all due care” depends on the individual circumstances of each case (see e.g. decision T 902/05 [6]). If the representative has entrusted to an assistant the performance of routine tasks such as noting time limits, the same strict standards of all due care are not expected of the assistant as are expected of the applicant or his representative. A culpable error on the part of the assistant made in the course of carrying out routine tasks is not to be imputed to the representative if the latter has himself shown that he exercised the necessary due care in dealing with his assistant. In this respect, it is incumbent upon the representative to choose for the work a suitable person, properly instructed in the tasks to be performed, and to exercise reasonable supervision over the work (see e.g. decision T 1465/07 [18]). “All due care” under the circumstances of the present case [6] Applying the foregoing principles to the present case, the Board is not satisfied that the appellant’s monitoring system was sufficient to meet the requirement of “all due care” under A 122(1) as applied by the Boards of Appeal. In particular, the Board does not share the appellant’s opinion that a combination of exceptional circumstances led to the result that the time monitoring system of its large firm failed in an excusable way. Rather, the Board assesses these “exceptional” circumstances as an indication that [the law firm’s] time monitoring system lacked reliability under the circumstances of the present case. [7] Although there is no proof that the revocation decision had been stapled to the back of the minutes, the Board accepts in favour of the appellant that this indeed happened at the EPO. However, this may be undesirable but it is not a faulty handling of the outgoing mail because it is common practice to staple items of outgoing mail together and any recipient of an official letter must be aware of this practice and is not freed from his duty to read all the sheets of a document.
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T 1663/12 – A Drop-Dead Appeal
K’s Law – The ebook
[8] In the following the Board will discuss and assess the decisive processing steps as described by the appellant with regard to the requirement of “all due care”. [9] The fact that the revocation decision passed through so many hands without being identified as such indicates that these persons were not sufficiently instructed that mail must be read completely and thoroughly, or that no effective cross-check was performed. [10] In the present case, the first mistake happened when the clerk [Andrew S.] assisted [Duncan H.] with sorting the incoming mail and neither of them identified the revocation decision possibly stapled to the back of the minutes. [11] Consequently, [Andrew S.] was not able to carry out an independent cross-check of this first sorting when acting as team leader of the Records Department, because the Board cannot exclude the possibility that it was he who made the first mistake. [12] [Tricia L.] could not perform any cross-check because she did not get the copy of the cover sheet of the revocation decision. [13] Even if the experienced clerks [Richard W.] and [Elliott G.] were only concerned with checking the correct reference numbers of the documents, they should have flicked through all the pages to do their job properly and could then have identified the revocation decision. [14] The appellant claimed that [Medinat N.] would have been entrusted with crosschecking the first mail sorting, and referred to the statement in [Paul H.’s] declaration that: “The file with the mail attached to it is then passed to another experienced clerk, [Medinat N.], for further processing, including input of any due dates into Inprotech”. The Board is not convinced that [Medinat N.] receipted the file in the present case because [Richard W.] initialled the receipt stamp on the minutes instead of [Medinat N.] But even if [Medinat N.] did indeed perform this cross-check, that would be a further clerk who failed to read the documents completely and thoroughly. The failing of several clerks is an indication that they were not sufficiently instructed in performing their tasks, and not regularly supervised. In this regard the Board agrees with the [opponents] that [Adrian F.’s] and [Paul H.’s] declarations are not properly substantiated. It is not sufficient to declare that a clerk is one of the most senior and experienced clerks, or familiar with revocation decision, without showing in detail how his dayto-day work is supervised. [15] In the Board’s view the series of failures continued when [Paul H.], one of the appellant’s representatives, got the paper file and signed the delivery card and acknowledgment letter with the date that was stamped on the minutes, but without reviewing the documents that were being acknowledged. The appellant explained this failure by the fact that the documents had to be communicated as soon as possible to [Adrian F.], the attorney responsible for managing this case. The Board does not agree with this view. The signing of an acknowledgment letter is a highly important legal action in the patent application procedure and must not be performed without reviewing the documents received. That was the reason why this task was correctly allocated by [the law firm] to an attorney and not to an experienced clerk. The appellant rejected the Board’s preliminary opinion that the cause of the mishandling of the revocation decision also had to be seen in the shared responsibility between [Paul H.] and [Adrian F.] because of [Adrian F.’s] pre-agreed overall responsibility to manage the case. However, signing the acknowledgment letter and reviewing the documents to identify their nature cannot be separated. A correct processing of the documents would have required that either [Paul H.] or [Adrian F.] both signed and identified the documents. [16] A further failure happened when ]Adrian F.] got [Sandra W.’s] email indicating that [the law firm] had received two documents, the minutes and the revocation decision of the present case, and did not open and read the attached documents and did not carry out his own checks to ensure that the dates had been properly docketed. It is undisputable that [Adrian F.] would have noticed the missing ticks and due date markers on the cover sheet of the revocation decision if he had read the scanned documents. In his declaration [Adrian F.] stated inter alia that: “I make a point of checking due dates on EPO communications by the Records Department. This almost invariably happens in the context of reporting the communication to the client. In the present case, I did check the deadline for appeal, but I did so in the context of responding to [Melanie B.’s] email. I therefore had in front of me the copy of the Decision, which she had provided, rather than the copy attached to [Sandra W.’s] email. That meant that I did not see the absence of due date markings by the Records Department on the Decision.”
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T 1663/12 – A Drop-Dead Appeal
K’s Law – The ebook
The Board holds that it is a serious mistake not to work on the basis of [the law firm’s] own documents and it is not in accordance with the proper discharge of a professional representative’s duty to make decisions without proofreading one’s own documents. In addition, [Adrian F.] was not entitled to rely on [Sandra W.’s] statement in the email of 25 July 2012 that the minutes and the revocation decision were attached to the email without checking the documents and at least verifying the correct receipt stamp date, because this date could have triggered a later time limit for filing an appeal (R 126(2)). This handling of incoming mail is not a mere isolated error but a systematically flawed way of processing a case. [17] Furthermore, on 16 May 2012, [Adrian F.] was explicitly instructed by his client to file an appeal but he delayed the preparation of the notice of appeal due to other tasks, without checking whether the due date had been properly recorded either by consulting up in Inprotech or at least by reviewing the electronic documents of [the law firm]. Filing an appeal is a highly critical legal act, and it does not correspond to “all due care” for the responsible attorney only to rely on a normally satisfactory functioning of a system, without making sure that he would be reminded of the date if necessary (see similar decision T 439/06 [8,10]). [18] Lastly, the [opponents] were right to point out that the appellant cannot argue that the time monitoring system of [the law firm] worked reliably for many years, because [Adrian F.] left the partnership in June 2011 and no longer visited its offices on a daily basis. Contrary to the appellant’s submissions, the Board holds that this organisational change weakened the existing time monitoring system in such a way that it failed in the present case (see point [15] above). [19] The appellant further argued that in assessing the requirement of “all due care” under A 122(1) it should be borne in mind that the notice of appeal was filed only a short time after the due date and that the public should have been aware that an appeal would be filed. The present Board does not share the appellant’s opinion that the principle of proportionality can be applied when assessing the requirement of “all due care” under A 122(1). Rather, it takes the view that the requirement of “all due care” means that only circumstances which happened before the time limit expired can be considered or, in other words, the obligation to exercise “all due care” must be assessed in the light of the situation as it stood before the time limit expired (see decisions T 1465/07 [16], and T 439/06 [15]). [20] In considering the requirement of “all due care” under A 122(1), the Boards have ruled in numerous decisions that the circumstances of each case must be looked at as a whole (see e.g. decision T 1465/07 [18]). In the present case, looking at the whole series of failures and mistakes which took place, the Board sees no basis to argue that the failure to meet the appeal time limit could be considered an isolated mistake in a well-functioning time monitoring system. Final conclusions [21] As, therefore, the circumstances of the present case do not satisfy the requirement of “all due care” pursuant to A 122(1), the request for re-establishment must be refused. Consequently, both the notice of appeal and the payment of the appeal fee were belated and the appeal is deemed not to have been filed pursuant to A 108, first sentence, EPC. Furthermore, as there is no appeal in existence, the appeal fee must be reimbursed (J 21/80 [4], T 493/08 [7]). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1760/08 – An Obvious Regime
K’s Law – The ebook
T 1760/08 – An Obvious Regime 19 Feb 2013
As you certainly know, G 2/08 has opened the door to dosage regime patents by finding that “where it is already known to use a medicament to treat an illness, A 54(5) does not exclude that this medicament be patented for use in a different treatment by therapy of the same illness”. However, the Enlarged Board (EBA) also added that patentability was “subject to compliance with the other provisions of the EPC, in particular novelty and inventive step”, and this might prove fatal to many dosage regime claims, as it did in the present case. The patent proprietor filed an appeal against the revocation of the opposed patent by the Opposition Division (OD). Claim 1 of the sole request before the Board read: Use of valaciclovir or a pharmaceutically acceptable salt thereof in the manufacture of a medicament for oral administration for the suppression of recurrent genital herpes in a human host and for administration to said human host at a once daily dose of 500 mg of the valaciclovir or the salt thereof. (additions to claim 1 as granted are underlined). A 123, A 83, A 84 and A 54 [2] The board has no reason to disagree with the findings of the OD with respect to A 123(2) and A 54. Claim 1 of the request as amended with regard to claim 1 as granted has its basis in the application as filed in original claim 1, redrafted in second medical use format. Oral administration is disclosed as a preferred embodiment [… in] the application as originally filed and all parts of the description are directed to oral dosage forms, in particular all examples and every specific disclosure in the overall text. The 500 mg dosage is disclosed as one of three embodiments in original claim 2 and on page 3, line 1. The claim thus fulfils A 123(2). The OD’s point of view with respect to the claimed dosage regimen is in line with the decision of the EBA G 2/08. Therefore, the board also does not deviate from the OD’s conclusion on novelty. By introducing of the amendments with regard to claim 1 as granted, the scope of the claim is narrowed. The requirements of A 123(3) are fulfilled. Claim 1 of the request, relating to well-defined features such as a dosage of 500 mg or once daily administration, is clear and concise. Based on these features, it can be carried out by the person skilled in the art. Claim 1 of the request thus fulfils the requirements of A 84 and A 83. A 56 [3.1] The subject-matter of claim 1 of the patent in suit relates to the (a) use of valaciclovir in the manufacture of a medicament (b) for oral administration (c) for the suppression of recurrent genital herpes in a human host (d) at a once daily dose (e) of 500 mg. [3.2] Document D5 represents the closest state of the art. The disclosure of this document relates to the (a) use of aciclovir in the manufacture of a medicament […], 671 | 3398
T 1760/08 – An Obvious Regime
K’s Law – The ebook
(b) for oral administration […] (c) for the suppression of recurrent genital herpes in a human host […] (d) at a twice or four times daily dose […], and discloses
that there is another active compound that can replace aciclovir […] because of its improved pharmacokinetic profile, with the result that for treatment of herpes zoster and genital herpes advances were achieved “with simpler thrice daily (zoster) and twice daily (genital herpes) oral regimes compared with the five times daily dose frequency recommended for oral aciclovir, and without compromise to the excellent safety profile which characterizes acyclovir” […] and
that for treatment of herpes zoster instead of 800 mg aciclovir five times daily, 1000 mg valaciclovir was administered thrice daily […] and for treatment of acute genital herpes instead of 200 mg aciclovir five times daily, 1000 or 500 mg valaciclovir twice daily was used […].
[3.3] There is no evidence on the file of the patent in suit that the use of valaciclovir for administration to a human host at a once daily dose of 500 mg according to amended claim 1 in suit exhibits an unexpected improvement over any dosage to be derived from the better bioavailability of valaciclovir. The dosage can be derived from the above-mentioned parallels and the recommended twice or four times daily administration of aciclovir for suppression of genital herpes given that, after oral administration, valaciclovir is readily absorbed and then undergoes almost complete (99%) hydrolysis to aciclovir […] such that the active substance after administration of valaciclovir is aciclovir anyhow. Example 12 consequently indicates that administration of valaciclovir in a dosage of 250, 500 or 1000 mg once daily shows better results with a rising amount of the compound. 500 mg is an arbitrary choice from these alternatives. [3.4] In the absence of evidence indicating a particular effect of the dosage of 500 mg, the problem to be solved has to be defined as the provision of an alternative use of valaciclovir for the preparation of a medicament for oral administration for the suppression of recurrent genital herpes in a human host. [3.5] With regard to example 12 of the patent in suit, the board is satisfied that this problem is solved by the use of valaciclovir according to claim 1 of the main request. [3.6] In line with the overall aim of document D5 of reducing the frequency of administration […], it is outlined in context with suppression that it was “well recognised in medicine that, for prophylaxis, once daily regimens are optimal and ensure better compliance” […] and that the higher bioavailability of aciclovir from valaciclovir ensures that plasma aciclovir levels exceed the in vitro IC50 for clinical HSV (herpes simplex virus) strains with once- or twice daily dosing regimens […]. Thus, based on the recommended twice or four times daily administration of aciclovir for suppression of genital herpes from the state of the art, only a “frequency” of once daily administration of valaciclovir is to be derived for this suppression therapy from document D5. The dose, as the single remaining feature of claim 1 of the request on file, can be determined from routine experiments without any inventive effort. [3.7] Consequently, the board concludes that the subject-matter of claim 1 of the main request does not involve an inventive step (Article 56 EPC). [4] Under these circumstances, the additional arguments of the appellant cannot hold. As set out under point [3] of this decision, the teaching of document D5 establishes that valaciclovir would also allow reduction of administration frequency in suppression of herpes genitalis, given that figure 3 sets out “simulated plasma aciclovir concentration profiles following multiple oral doses of valaciclovir or acyclovir” taken from document D8. Therefore, the overall consequence of document D5 remains the same in view of the considerations on plasma levels of aciclovir according to document D8.
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T 1760/08 – An Obvious Regime
K’s Law – The ebook
Even document D16 casts no doubt on the conclusions from the content of document D5, because it relates to aciclovir therapy (while document D5 starts from the new opportunities arising from the superior characteristics of valaciclovir) and because, even there, a once daily therapy for suppression of herpes genitalis was not excluded but was set out as a possibility in particular circumstances […]. […] The appeal is dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 107/09 – Truth On This Side Of The Ocean …
K’s Law – The ebook
T 107/09 – Truth On This Side Of The Ocean … 18 Feb 2013
In his Pensées, Blaise Pascal noted: “On what shall man found the order of the world which he would govern? Shall it be on the caprice of each individual? What confusion! Shall it be on justice? Man is ignorant of it. Certainly had he known it, he would not have established this maxim, the most general of all that obtain among men, that each should follow the custom of his own country. The glory of true equity would have brought all nations under subjection, and legislators would not have taken as their model the fancies and caprice of Persians and Germans instead of this unchanging justice. We should have seen it set up in all the States on earth and in all times; whereas we see neither justice nor injustice which does not change its nature with change in climate. Three degrees of latitude reverse all jurisprudence; a meridian decides the truth. Fundamental laws change after a few years of possession; right has its epochs; the entry of Saturn into the Lion marks to us the origin of such and such a crime. A strange justice that is bounded by a river! Truth on this side of the Pyrenees, error on the other side.” The present decision shows that Pascal’s observation also holds true in patent law. The Board had to decide on an appeal by the patent proprietors against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. One of the core questions before the Board was whether the claims were entitled to the priority. NB: All legal provisions refer to the EPC 1973. [6] The assessment of inventive step hinges on the question whether or not document D3 constitutes prior art pursuant to A 54(2). In the decision under appeal it was held that it does, because the subject-matter of claim 1 cannot claim priority from the US application No. 835,799 […]. The board also comes to the conclusion that the subject-matter of claim 1 cannot claim priority from the US application No. 835,799, but by a line of reasoning which differs from that of the OD. [7] A 87(1), inter alia, stipulates that the right to priority for the purpose of filing a European patent application can only be enjoyed insofar as the earlier application and the later European application disclose the “same invention”. [8] In its decision G 2/93 [5] and particularly in decision G 2/98 [9] the Enlarged Board of Appeal (EBA) held that the expression the “same invention” means the “same subject-matter”. In G 2/98 [9] the EBA established further that – in agreement with the standard applied for determining the disclosure content of documents in the context of novelty and amendments in a European patent application or patent – “subject-matter” is considered as “disclosed” in an earlier application if the skilled person can derive it directly and unambiguously, using common general knowledge, from the earlier application as a whole. [9] Furthermore, following the principle that a document must contain an “enabling” disclosure for it to be considered to be detrimental to the novelty of claimed subject-matter, it was also established by the case law that the requirement in A 87(1) that there be the “same invention” implies that the earlier application must disclose the invention claimed in the later European application in such a way that a skilled person can carry it out (see for example Case Law of the Boards of Appeal, 6 th edition 2010, V.B.3).
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T 107/09 – Truth On This Side Of The Ocean …
K’s Law – The ebook
[10] It follows from the considerations in points [8] and [9] above that for the purposes of determining the right to priority from an earlier application for a later European application, the assessment of the disclosure content of the earlier application is made in accordance with the EPC and its interpretation by the case law (see for example also EPÜ: Münchner Gemeinschaftskommentar, eds.: Beier, Haertel, Schricker; 15 th edition, April 1991, Art. 53, Moufang, R., marginal note 151). [11] Present claim 1 relates to “[a] soluble ligand which comprises at least a binding portion of an immunoglobulin molecule, in which the immunoglobulin molecule is capable of competitively inhibiting the binding of monoclonal antibody MR1 as produced by a hybridoma cell line deposited with the ATCC and assigned accession number HB 11048, to CD40CR molecule, [...].” [12] The patent at issue discloses that for the generation of the immunoglobulin molecules, the binding portions of which are then to be used for generating the soluble ligands according to claim 1, the immunization is carried out with D1.6 cells, i.e. I-Ad-restricted, rabbit Ig-speific Th1 cells (paragraphs [0076] and [0087]). These cells have embedded in their membrane the CD40CR. Thus, the immunization results in immunoglobulins (antibodies) binding to membrane components of D1.6 cells including any immunoglobulins binding to the CD40CR, i.e. it results not in just those which are “capable of competitively inhibiting the binding of monoclonal antibody MR1 as produced by hybridoma cell line deposited with the ATCC and assigned accession number HB 11048”. [13] Thus, in order to reproduce the invention characterized in claim 1, the antibody MR1 is indispensable for the skilled person to be able to select from all of the produced immunoglobulins those having the property of being “capable of competitively inhibiting the binding of monoclonal antibody MR1 as produced by hybridoma cell line deposited with the ATCC and assigned accession number HB 11048.” [14] As to the question of whether or not the US application No. 835,799 provides an enabling disclosure for the subject-matter of claim 1, the appellants neither argue that this US application discloses itself a process by which a hybridoma cell line with the properties of the hybridoma cell line deposited with the ATCC and assigned accession number HB 11048 could be made, nor that such a process belonged to the common general knowledge, nor that the antibody MR1 or the hybridoma cell line “HB 11048” were publicly available at the date of filing the US application No. 835,799. Thus, the “written” disclosure in the US application No. 835,799, even if supplemented by common general knowledge, would not enable the skilled person to carry out the invention characterized in claim 1. [15] For inventions which use biological material and where a mere written description is not sufficient to enable a person skilled in the art to carry out the invention, the EPC foresees in R 28 that this deficiency can be made good by a valid deposit of the biological material at a recognized depositary institution. [16] However, R 28 is concerned with the requirement of sufficiency of disclosure in relation to a European patent application. It is stipulated in R 28(1): “If an invention involves the use of or concerns biological material which is not available to the public and which cannot be described in the European patent application in such a manner as to enable the invention [...].” (emphasis added). Thus – and this is also a view taken in the legal literature (see for example EPÜ: Münchner Gemeinschaftskommentar, eds.: Beier, Haertel, Schricker; 15 th edition, April 1991, Art. 53, Moufang, R., marginal note 151) – there are no explicit provisions in the EPC as to when a deposit of biological material has to be made in relation to an earlier application in order to ensure that a later European patent application can enjoy the right to priority from that earlier application. [17] However, the EBA has held that the requirement of sufficiency of disclosure must be complied with at the date of filing of the European application or – in relation to an earlier application from which priority is claimed – at the date of filing of that earlier application (see decision G 2/93 [10] and decision G 1/03 [2.5.3]). In its decision G 1/03 [2.5.3] the EBA states: “The same must apply if sufficiency of disclosure is at stake. When an application for a patent is filed, the process of making the invention has to be completed. The requirement of sufficiency of disclosure ensures that a patent is only granted if there is a corresponding 675 | 3398
T 107/09 – Truth On This Side Of The Ocean …
K’s Law – The ebook
contribution to the state of the art. Such a contribution is not present as long as the person skilled in the art is not able to carry out the invention. Therefore, the decisive date for fulfilling the requirement has to be the date of filing or priority, as the case may be. Deficiencies in this respect cannot be remedied during the proceedings before the EPO.” (emphasis added). [18] Thus, the board judges that if the deposit of biological material is necessary for the requirement of sufficiency of disclosure to be fulfilled for a “priority application”, the deposit of this material must have been made no later than the date of filing of that earlier application. [19] The above cited case law is reflected in the “Notice of the European Patent Office dated 18 July 1986 concerning European patent applications and European patents in which reference is made to microorganisms” (OJ 1986, 269). It is stated in point 8: “Where a European patent application claims the priority of a previous application in accordance with A 87 to 89, the general conditions covering disclosure of the invention in the previous application apply to the micro-organism. In particular, if an invention, in order to be sufficiently disclosed, requires the deposit of a micro-organism culture to supplement the written description, the culture must have been deposited not later than the date of filing of the previous application. The depositary institution and the legal statute under which the microorganism is deposited must comply with the requirements of the country in which the previous application has been filed. The previous application must also refer to this deposit in a manner enabling it to be identified.” (emphasis added). [19.1] The position taken in this “Notice” from the year 1986 was later confirmed in relation to the EPC 2000 by a “Notice” of 7 July 2010 concerning the same subject (“Notice from the European Patent Office dated 7 July 2010 concerning inventions which involve the use of or concern biological material”, (OJ 2010, 498); see point 1.4). [20] The view that, if a later European application claims the right of priority from an earlier application, the deposit of biological material has to have been made not later than the filing date of the earlier application is also endorsed in the legal literature (see for example EPÜ: Münchner Gemeinschaftskommentar, eds.: Beier, Haertel, Schricker; 15th edition, April 1991, Art. 53, Moufang, R., marginal note 150). [21] In the present case – and this is undisputed – the hybridoma cell line producing the antibody MR1 has been deposited with the ATCC on 22 May 1992, i.e. only after the filing date of the US application No. 835,799. [22] The appellants argue that it should be sufficient for ensuring a valid right to priority that the deposit of biological material is made at latest at the date of filing of the later European patent application in view of R 28(1) which explicitly refers to the “date of filing of the application”. [22.1] However, the appellants’ reference to R 28 does not convince the board because this Rule lays down the requirements for a valid deposit in relation to European patent applications (see point [16] above). [23] In a further line of argument the appellants refer, on the one hand, to A 87(2) stating that “every filing that is equivalent to a regular national filing [...] shall be recognized as giving rise to a right of priority” and, on the other hand, to case law in relation to US patent applications – “In re Lundak”, 773F.2d 1216 (Fed. Cir. 1985) – according to which “[t]he enablement requirement of §112, first paragraph does not require such assured access to a microorganism deposit as of the filing date; what is required is assurance of the access (...) prior to or during pendency of the application, so that, upon issuance of a U.S. patent on the application, the public will, in fact, receive something in return for the patent grant”. The appellants therefore argue that, since a deposit in relation to a US application is not necessary at its date of filing, but must only be made at the latest before the grant of the corresponding patent, the US application No. 835,799 at issue here complies with the requirements of US patent law. It must therefore be considered as a regular national filing and thus, in accordance with A87(2), must give a right to priority. [23.1] However, what A 87(2) and the complementing A 87(3) – which reads “[b]y a regular national filing is meant any filing that is sufficient to establish the date on which the application was filed, whatever may be the outcome of the application” – merely set out is that the date of filing of an application that may give rise to a right to priority under the EPC is accorded in accordance with national law for the purposes of A 87(1). It cannot be inferred from these provisions that the standards of national law are applied in relation to other requirements of a potential priority application, for example, in relation to criteria for determining the disclosure content of such an application. As observed in point [10] above, whether an earlier application and a subsequent European 676 | 3398
T 107/09 – Truth On This Side Of The Ocean …
K’s Law – The ebook
application disclose the “same invention” is assessed in accordance with the EPC and not, in respect of the earlier application, in accordance with the law of the state in which this earlier application is filed. Therefore, the reference to A 87(2) does not convince the board either. [23.2] In the light of the citation from the decision of the Federal Circuit “In re Lundak” (see point [22] above) the board accepts that, when it comes to the point in time when a deposit of biological material has to be made in order to fulfil the sufficiency-requirement according to the EPC and the enablement-requirement according to US patent law, the provisions according to the EPC were stricter than those of the US law. [24] It is thus undeniable that in a situation where a deposit of biological material was necessary for a disclosure in an earlier application to be accepted as being “sufficient”, this had the consequence depicted by the appellants, namely that an applicant who filed an application at the US patent office had, already when drafting the US application, to take account of the requirements to be complied with in countries or regions that were eligible for filing subsequent applications claiming the priority of the first application. That may be inconvenient for applicants for European patents claiming priority from US applications, but it is the consequence of the distinct provisions of the two legal regimes. [24.1] The board notes however that it was and is not uncommon when drafting potential priority applications that differences in the patent laws of different countries and/or their interpretation have to be taken into account. Another such example appears to be the different interpretation of the disclosure content of “closed ranges” of numerical parameters according to German and European patent law practice (although this may be harmonised if the principles developed by the German Federal Supreme Court in its decision “Olanzapin” (BGH X ZR 89/07) should be applied to “closed ranges”). While according to the present German jurisprudence the indication of a closed range by a start and an end point is considered as disclosing all intermediate points within this range (see Patentgesetz mit EPÜ, ed.: Schulte, R.; 8th edition, 2008; § 3, marginal note 104 and the decisions referred to therein by reference to foot note 232), this is not necessarily considered to be so according to the case law in relation to the EPC (see for example the decisions cited in Case Law, 6 th edition 2010, I.C.4.2). If this difference is not taken into account when drafting and filing a German application, this may have the consequence that a later European application claiming only an intermediate point or intermediate part of the complete range disclosed in the earlier German application may not be allowed to rely on that earlier application for claiming priority. [25] To sum up, the board comes to the conclusion that, due to the failure to deposit the hybridoma cell line producing the antibody MR1 no later than the filing date of the US application No. 835,799 (see point [21] above), this US application does not provide a disclosure which is sufficient for the skilled person to carry out the invention claimed in present claim 1. Therefore, the requirement of the “same invention” according to A 87(1) cannot be considered as being fulfilled (see point [9] above). Hence, claim 1 cannot enjoy the right of priority from the US application No. 835,799. [26] In decision T 542/95 the opponent had objected to the right of priority based on the argument that a deposited hybridoma, that was referred to in the claims and that would be essential for carrying out the invention, had not been deposited at the priority date. The board dealing with that case acknowledged the claim to priority because the remaining features in the claim characterized the subject-matter in a unique manner such that feature relating to the hybridoma could “now be regarded as a mere surplus definition”. Thus, the circumstances of that case are different from those in the present one insofar as in the present case the hybridoma is considered as essential for carrying out the invention (see points [11] to [13] above). [27] It follows from the foregoing observations that the relevant date for determining the state of the art pursuant to A 54(2) is the filing date of the European application. Hence, document D3 constitutes prior art in accordance with A 54(2). The Board then found the claim to correspond to an arbitrary selection and, consequently, to lack inventive step. The appeal was dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 340/10 – Add, Don’t Replace
K’s Law – The ebook
T 340/10 – Add, Don’t Replace 16 Feb 2013
In this appeal against the revocation of the opposed patent the Board – as so often – found late filed requests to be inadmissible: *** Translation of the German original *** [1.3] In the present case the Opposition Division (OD) had informed the [patent proprietor] before the oral proceedings (OPs) that it agreed with the opinion of the opponent according to which the main request of October 14, 2009, as well as the auxiliary request filed on the same day (and having the same claim 1) was not novel over document D1 […]. The [patent proprietor] then replaced both requests by a new main and auxiliary request […]. The decision of the OD to revoke the patent was taken on the basis of the requests that had been filed during the OPs […]. [1.4] In the course of the OPs the [patent proprietor] could not have any doubt that the main and auxiliary request of October 14, 2009, would be dismissed on the ground of lack of novelty. In this situation it has taken the decision to remove these requests from the proceedings, which has had the effect that the OD did not have to decide on the novelty of the requests of October 14, 2009. The fact that the [patent proprietor] has again filed the main request which it had removed from the proceedings via an intentional procedural act clearly contradicts its earlier behaviour. The Board is of the opinion that there would have to be good reasons for admitting this request of which the opponent could rightly expect that it would not be pursued. [1.5] In its statement of grounds of appeal, the [patent proprietor] argues that the decision of the OD to revoke the patent was justified by the lack of novelty of the main and auxiliary request of October 14, 2009. This is also what the [patent proprietor] has set forth during the OPs. [1.6] The Board does not agree. The decision of the OD to revoke the patent is clearly based on the fact that the requests filed during the OPs held on December 15, 2009 as main and auxiliary request violate A 123(2) […]. It is true that the OD explains in the “Reasons for the decision” that the requests of October 14, 2009, lack novelty. However, the Board is of the opinion that these indications are not part of the decision because these requests had been withdrawn and, as a consequence, the OD did not have to decide on these requests. The OD was aware of this because in the impugned decision it refers to the fact that the requests of October 14, 2009, had been withdrawn by the [patent proprietor] and the request that were now on file (nunmehr geltend) and on which the decision is based were the requests that had been filed during the OPs on December 15, 2009 […]. It clearly follows from both the minutes and the impugned decision that the OD has not made an interlocutory decision on the novelty of the main and auxiliary request of October 14, 2009 […]. [1.7] Moreover, the [patent proprietor] argued that the withdrawal of the requests of October 14, 2009, was due to an error. The new requests had been filed in view of the decision of the OD regarding lack of novelty and had to be understood as auxiliary requests. The filing of the new requests did not express the intention to remove the requests of October 14, 2009, from the proceedings. In this context the [patent proprietor] again referred to the fact that there had been a decision of the OD on the novelty of the requests of October 14, 2009, as could be seen from the minutes […]. [1.8] The Board is not persuaded by the arguments of the [patent proprietor]. [1.8.1] First, it has to be noted that, contrary to the opinion of the [patent proprietor], the minutes do not show either that the OD has decided on the requests of October 14, 2009. [1.8.2] Point 1 of the minutes reflects the requests of the parties. The [patent proprietor] had requested that the patent be maintained in amended form on the basis of one of the requests of October 14, 2009. According to point 2 of the minutes these requests were discussed and the opponent invoked a lack of novelty. Point 3 of the minutes shows that after deliberation the OD has merely indicated to the [patent proprietor] that it agreed with the opponent as far as novelty was concerned. Moreover, it is stated that the [patent proprietor] was given some time to draft new requests. 678 | 3398
T 340/10 – Add, Don’t Replace
K’s Law – The ebook
[1.8.3] Point 4 of the minutes makes clear that the [patent proprietor] has filed new requests in response to this conclusion and that the OD has admitted these requests into the proceedings. The requests are added to the minutes. The [patent proprietor] clearly has labelled them as “main request” and “auxiliary request”. The OD has understood them to be the requests now on file, which is logically consistent.
Under these circumstances the Board cannot see any objectively understandable (objektiv nachvollziehbar) reasons why these requests should have been considered to be additional auxiliary requests, contrary to their clear labelling. Moreover, the [patent proprietor] never requested the minutes to be corrected, nor has it ever pointed out that its filing of the requests on December 15, 2009, had been misinterpreted. Moreover, the [patent proprietor] was represented by a professional representative, who may be expected to have performed procedural acts (here: the filing of a new main and auxiliary request) that correspond to his intentions and to be fully aware of the consequences of his way of proceeding. The Board is of the opinion that the retrospective argument that this was a mistake cannot justify the admission of the main request into the proceedings. [1.9] Thus the Board has exercised its discretion by not admitting the main request of the [patent proprietor] into the proceedings. I would say that in view of Article 12(4) RPBA and the case law of the Boards, it is much wiser to add auxiliary requests and request the OD to take decisions on the preceding requests rather than replacing requests which the OD has stated not to be patentable, but on which it has not taken a formal decision yet. You might be inclined to avoid adverse decisions by withdrawing requests, but this inclination may prove fatal when you arrive before the Board of appeal. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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J 8/11 – An Artful Sequence
K’s Law – The ebook
J 8/11 – An Artful Sequence 15 Feb 2013
The present appeal concerns a decision of the Receiving Section (RS) of the EPO, dispatched on 22 December 2010, refusing the applicant’s requests that the invitation to remedy deficiencies pursuant to R 30(3) be withdrawn and the late furnishing fee refunded. The application under consideration was filed on February 17, 2010, without a sequence listing. Its claim 1 was directed to a diagnostic method comprising, inter alia, the step of determining in a sample the amount of at least one biomarker selected from the biomarkers shown in Table 1 of the application. Table 1 listed 27 proteins with their names and database accession numbers. Page 3, lines 22 to 31 of the description contained the following passages: “The term ‘biomarker’ as used herein refers to a polypeptide as shown in Table 1 or a fragment or variant of such a polypeptide being associated to the presence or absence of pancreatic cancer to the same extent as the well known polypeptides recited in Table 1. The polypeptide biomarkers listed in Table 1, preferably, encompass the polypeptides referred to by public Uni Prot Accession numbers as well as variants of said polypeptides having essentially the same immunological and/or biological properties. Variants include polypeptides differ [sic] in their amino acid sequence due to the presence of conservative amino acid substitutions. Preferably, such variants have an amino acid sequence being at least 70%, at least 80%, at least 90%, at least 95%, at least 98% or at least 99% identical to the amino acid sequences of the aforementioned specific polypeptides.” On July 1, 2010, the RS sent out an invitation to remedy deficiencies pursuant to R 30(3). It was indicated that the application as filed contained a sequence listing which did not comply with the relevant rules since it did not include all the sequences disclosed in the application. In an annex to this invitation, it was pointed out, on the one hand, that where the application referred to sequences which belonged to the prior art and could be found in generally accessible databases, it was not necessary to include such sequences in the sequence listing, and, on the other hand, that where prior-art sequences were mentioned in claims or constituted essential features of the invention, they should be given in the sequence listing. The applicant was invited to remedy the deficiency indicated and to pay the late furnishing fee. In its response, the applicant submitted a sequence listing and paid the late furnishing fee. However it requested that the invitation according to R 30(3) be withdrawn and the late furnishing fee be refunded, and submitted legal arguments in support of these requests. Following a communication by the RS giving reasons why the applicant’s requests could not be accepted, the applicant submitted further arguments and conditionally requested an appealable decision. The RS then dispatched the decision from which the present appeal lies. Admissibility of the appeal [1] The appealed decision did not terminate the procedure up to grant concerning the present patent application. Pursuant to A 106(2), it is therefore an admissibility requirement for the present appeal that the decision allowed a separate appeal. The board considers that the formulation “This decision is open to appeal” has to be interpreted as, at least implicitly, allowing a separate appeal. Thus the appeal is considered admissible. Applicable legal provisions [2] The present appeal concerns a formal requirement which is laid down in R 30 and which, if applicable, has to be complied with at the filing date. Accordingly, the appeal has to be assessed on the basis of the legal provisions which were in force at the filing date of the present application, i.e. on 17 February 2010 (for details see J 7/11 [2]). Thus, apart from R 30 itself, the Decision of the President of the EPO dated 12 July 2007 concerning the filing of sequence listings (OJ EPO 2007, special edition No. 3, C.1, p. 26) is of relevance. Interpretation of R 30(1)
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J 8/11 – An Artful Sequence
K’s Law – The ebook
[3] According to R 30(1), the filing of a sequence listing is required if nucleotide or amino acid sequences are disclosed in a European patent application. A corresponding requirement can be found in Rules 5.2(a) and 13ter.1(a) PCT which use the substantially identical wording “Where the international application contains disclosure of one or more nucleotide and/or amino acid sequences”. [4] The crucial issue in the present appeal is the interpretation of the term “disclosed” in R 30(1), namely the question whether a patent application which relates to the use of polypeptides well known in the prior art and which identifies these polypeptides by their common names and by database accession numbers concerning specific representative sequences has to be regarded as “disclosing” amino acid sequences. [5] In ascertaining the meaning of “disclosed” in R 30(1), it appears necessary to consider in more detail the legislative reasons for and the development of the requirement of filing sequence listings. [6] Already before the introduction of R 27a EPC 1973 (the predecessor provision of R 30) into the Implementing Regulations, the EPO published a Notice dated 15 November 1989 (Supplement to OJ EPO 12/1989) in which it strongly recommended that from 1 April 1990 patent applications containing nucleic acid and amino acid sequences should use a set of standard symbols and representation methods. In point 3 of the Notice, it was stated: “Paragraph 1.1 explains what inventions are affected by the rules. Patent applications containing disclosures of nucleotide or amino acid sequences in which the applicant wishes to represent the sequence itself should include these representations in conformity with the standards.” (emphasis added) At that time it was also well-established in the context of R 28 EPC 1973 (corresponding to R 31 EPC 2000) that a patent applicant who supplemented his written description by the deposit of micro-organisms or other biological material such as plasmids and viruses was not obliged to provide further written information concerning genetic sequences of this material. Such an obligation would have been irreconcilable with the very purpose of the deposit system, i.e. to make it possible to supplement the written description in cases where the biological material could not be described in such a manner as to enable the invention to be carried out by a skilled person. It was furthermore recognised that no deposit was necessary where the biological material was already publicly available, e.g. by means of a previous deposit (see R 28(1) EPC 1973). [7] By decision of the Administrative Council of the EPO of 5 June 1992 (OJ EPO 1992, 342) the Implementing Regulations of the EPC were amended inter alia by the insertion of a new R 27a which for the first time made sequence listings mandatory for European applications relating to nucleotide and amino acid sequences. New R 27a(1) provided that the description had to contain a sequence listing if nucleotide or amino acid sequences were disclosed in the European patent application. [8] The above decision was taken on the basis of Administrative Council document CA/7/92 dated 3 April 1992 which was drawn up by the President of the EPO. This document contained the following passages in points I.2 and 4 of its Part 1 (Explanatory Memorandum): “The President’s decision will make it clear that the sequence listing must contain only those sequences which form part of the claimed invention and not those which are mentioned in the description as belonging to the state of the art. [...] If, however, nucleotides or amino acids were originally included in the description only in the form of words, it would be inappropriate to request the applicant to file a sequence listing subsequently as this would inevitably result in new technical information being introduced [emphasis added]. This may well be the case if the applicant has not yet sequenced the nucleotides or amino acids. R 27a does not then apply, because the application does not contain any sequences, despite the fact that the invention refers to nucleotides or amino acids.” [9] The details of the sequence listing requirement were then laid down in the Decision of the President of the EPO dated 11 December 1992 concerning the representation of nucleotide and amino acid sequences in patent applications and the filing of sequence listings (Supplement No. 2 to OJ EPO 12/1992, p. 1). Its Article 1 stated: “If the subject-matter of the invention disclosed in a European patent application is nucleotide or amino acid sequences (in German: “Hat die in einer europäischen Patentanmeldung offenbarte Erfindung Nucleotid- oder Aminosäuresequenzen zum Gegenstand”) [emphasis added], the description shall contain a sequence listing complying with the WIPO Standard ST.23 reproduced in Annex I.”
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J 8/11 – An Artful Sequence
K’s Law – The ebook
[10] The EPO furthermore published a Notice dated 11 December 1992 (Supplement No. 2 to OJ EPO 12/1992, p. 3) which was intended to supplement the decisions of the Administrative Council and the President of the EPO and to clarify the new rules and the EPC and PCT procedures. In this Notice (see its Section I) the legislative goal of the new provisions was explained as follows: “The new provisions are intended to ensure that nucleotide and amino acid sequences are presented in a standardised form in European and international applications and to permit systematic EDP-based searches so that the quality of European and international search reports can continue to be guaranteed in the future. Finally, they will make it possible to set up, in cooperation with the United States Patent and Trademark Office (USPTO) and the Japanese Patent Office (JPO), an international patent sequence database which be accessible to the public.” [11] The circumstances in which a sequence listing had to be filed were explained in point II.1.2 of the Notice as follows: “A sequence listing need only be filed for those sequences matching the definition given in WIPO Standard ST.23 paragraph 3(iii) and relating to the invention disclosed in the application. A sequence listing is not required if the description refers to sequences which belong to the prior art. In this case, however, the sequence must be identified adequately - where applicable, by stating the database accession number - so that it can be found easily.” [emphasis added] [12] It can be deduced from these explanations that at the time when new R 27a was inserted into the Implementing Regulations and entered into force (on 1 January 1993) the EPO took the view that it was not the legislator’s intention to make sequence listings mandatory in situations where the description merely referred to prior-art sequences, e.g. by indicating their common names and database accession numbers. The term “disclosed” in R 27a was thus interpreted in a narrow manner in line with the explanatory memorandum in CA/7/92 (see point [8] above) and the established principles concerning the deposit of biological material, according to which no deposit is necessary where the biological material is already publicly available (e.g. by means of a previous deposit), and no genetic sequence information has to be provided when a deposit is made (see point [6] above). [13] In 1998 both the Decision of the President and the Notice from the EPO were replaced by amended versions (see Supplement No. 2 to OJ EPO 1998/11). However, the above-cited passages in Article 1 of the Decision and point II.1.2 of the Notice were not changed in substance. [14] After the revision of the EPC 2000 the Implementing Regulations were amended and R 27a 1973 became new R 30 EPC 2000. Although amendments were made to the content of the rule, its paragraph (1) remained unchanged apart from the addition of a comma (see OJ EPO 2007, special edition No. 5, p. 45). The travaux préparatoires (see documents CA/PL PV 30 Nos. 88-93 and CA/PL PV 31 Nos. 21-23) do not contain any indication that the legislator intended this paragraph to be understood differently from before. The new Decision of the President dated 12 July 2007 concerning the filing of sequence listings (supra) uses in its Article 1(1) a wording (“If nucleotide or amino acid sequences are disclosed in a European patent application”) that mirrors the wording of R 30(1). [15] However, in its updated Notice of 12 July 2007 concerning the filing of sequence listings (which replaced the 1998 version), the EPO interpreted R 30(1) not exactly in the same way as it had done before. The relevant passage (see point I.1.2 of the Notice) now read: “Where the description refers to sequences which belong to the prior art and can be found in publicly accessible sequence databases, it will not be necessary to include such sequences in the sequence listing. [...] Where the claim(s) refer(s) to prior art sequences or where sequences constitute essential features of the invention or are required for the prior art search, those sequences should be incorporated in the sequence listing.” Thus, with respect to prior-art sequences referred to in the application, the 2007 version of the Notice makes a significant distinction. It considers that in certain circumstances a sequence listing is required, in others not. [16] However, the wording of R 30(1) does not provide any basis for distinguishing different situations with respect to prior-art sequences referred to in patent applications. No such basis can be found in Article 1(1) of the Decision of the President dated 17 July 2007 either, which in any case could not change the meaning of R 30(1) as the higher-ranking legal norm.
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J 8/11 – An Artful Sequence
K’s Law – The ebook
[17] Furthermore, two of the criteria used as a basis for the distinction (i.e. “constitute essential features of the invention” and “required for the prior art search”) seem to require a technical evaluation of the application. However, as rightly observed by the appellant, such a technical examination does not fall within the competence of the RS (see decisions J 4/85, J 33/89, and J 7/97). Rather, the RS is restricted to a merely formal examination of the sequence listing requirements (see J 7/11 [9.2, 15]). [18] Hence, only a narrow interpretation of the term “disclosed”, in line with the established practice and jurisprudence allowing references to publicly available deposits of biological material, reflects the intention of the legislator at the time when R 27a EPC 1973, the predecessor of R 30 EPC, was inserted into the Implementing Regulations (see points [6-14] above). This means that prior-art sequences do not require the filing of a sequence listing. [19] It follows from the above that the RS was wrong to apply R 30 in the present case. Thus the decision under appeal has to be set aside, the invitation to remedy deficiencies under R 30(3) withdrawn, and the late furnishing fee refunded. Substantial procedural violation [20] The appellant did not submit any arguments in support of its request for reimbursement of the appeal fee. According to R 103(1)(a), such a reimbursement can be ordered only if is equitable by reason of a substantial procedural violation. In the present case the board fails to see any major procedural deficiency in the proceedings before the RS. In particular it appears that the right to be heard (A 113(1)) was respected and that the decision was fully reasoned (R 111(2)). [21] The appellant argued before the RS that the invitation under R 30(3) had incorrectly stated that a sequence listing had been submitted which did not comply with the relevant rules and that the invitation had to be withdrawn for that reason alone. However, it seems that this erroneous statement did not mislead the appellant since the objection raised by the RS could be and was correctly understood in view of the further explanations contained in the annex to the invitation […]. [22] Therefore the appellant’s request for reimbursement of the appeal fee cannot be allowed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
683 | 3398
T 1500/10 – Not Just A Right
K’s Law – The ebook
T 1500/10 – Not Just A Right 14 Feb 2013
This is an examination appeal. During the examination proceedings, the Examining Division (ED) objected in a first communication dated 29 September 2008 to the claims on file. The objections concerned lack of unity, lack of clarity, unallowable amendments, lack of novelty and of inventive step. The applicant amended the claims. Objections against the new claims were raised in a communication dated 12 February 2009. After the applicant filed new claims, the ED summoned it to oral proceedings (OPs) and sent, annexed to the summons, a communication dated 4 September 2009. In this communication, the ED raised objections under A 84 and A 123(2) to the claims then on file. On 21 September 2009 and again on 7 December 2009, the applicant’s representative contacted the examiner by telephone and inquired whether the outstanding objections could be discussed over the phone. The examiner indicated on both occasions that a discussion over the phone prior to the appointed OPs was not considered appropriate. With a letter dated 10 December 2009 the appellant submitted a revised set of claims and stated that there was a misunderstanding on the part of the ED and that it was not possible for it to understand where the misunderstanding lay. In the last paragraph of the letter it requested cancellation of the OPs and continuation of the proceedings in writing. The reason was that “... the applicant does not consider it beneficial to attend the forthcoming OPs”. During a telephone conversation on 1st January 2010, the examiner again explained to the representative that the ED needed to discuss in OPs, and not just in an informal telephone conversation, whether the recently filed claims really satisfied the requirements of clarity, added subject-matter and, subject to a clear claim formulation, of novelty and inventive step. Despite this explanation, the representative informed the ED by letter dated 8 January 2010 that he would not attend the OPs scheduled for 12 January 2010. Instead he requested that a decision under R 111(2) be issued on the basis of the submissions filed so far. At the end of the OPs, held in the absence of the applicant, the ED issued the decision under appeal. The application was refused because claim 1 did not fulfil the requirements of A 84 and A 123(2) EPC. The appellant requested that the decision be set aside and that the appeal fees be reimbursed. The Board found the main request on file to comply with both A 123 and A 84 and then dealt with the request for reimbursement: [3.1] In the present case, the Board considers that the conduct of the applicant in the first instance proceedings was such that it is not equitable to reimburse the appeal fee even if it were assumed in its favour that a substantial procedural violation occurred. [3.2] The reimbursement of the appeal fee under R 103(1)(a) is subject to three conditions: i. the Board of Appeal considers the appeal to be allowable; ii. a substantial procedural violation occurred during the proceedings before the first instance department; iii. the reimbursement is equitable.
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T 1500/10 – Not Just A Right
K’s Law – The ebook
[3.3] According to the jurisprudence of the Boards of Appeal, the conduct of the appellant can render the reimbursement of the appeal fee not equitable (cf. condition iii) even if a substantial procedural violation occurred, in particular if the appellant made no use of opportunities given to it to participate in the initial proceedings (cf. decisions cited in Case Law, 6th edition, 2010, VII.E.17.3.2). [3.4] It is generally recognised that the purpose of OPs is to settle as far as possible all outstanding questions relevant to the decision and to speed up the procedure (see Visser, The Annoted EPC, 19th edition, A 116, point 1; Benkard, EPÜ, 2nd edition, A 116 note 2; Singer-Stauder EPÜ Kommentar 5th edition, A 116 note 2; and also the “Notice from the EPO concerning non-attendance at OPs before the ED”, published in OJ EPO 2008, 471). Accordingly, A 116(1) foresees that OPs shall take place not only at the request of a party but also at the instance of the EPO if it considers this to be expedient. This provision and the use of the word “shall” in it has three important procedural consequences: i. It follows from this provision that the parties have not only a right to OPs when they request them but also a duty to participate in OPs, where this is considered expedient by the Office in order to assist the Office to bring the proceedings to a close. ii. It also follows that parties do not have a right to a solely written procedure. iii. It further follows that under the EPC OPs are in themselves a procedural opportunity for a party to present comments and for the Office to present objections, even if these were not communicated beforehand. Whether in such a case a party who duly attends the OPs has the right to an interruption or even to a postponement of the OPs to answer these new objections will depend on the particular case. However, this is not the issue in the present case because the party did not attend the OPs. The consequence of the non-observation of the duty to attend the OPs when they take place at the instance of the Office is set out on the one hand in R 115(2), according to which if a party duly summoned to OPs before the EPO does not appear as summoned, the proceedings may continue without that party, and on the other hand in the “Notice from the EPO concerning non-attendance at OPs before the ED”, published in OJ EPO 2008, 471, which also makes it clear that a duly summoned party who chooses not to attend OPs has to expect that a decision will be taken at the OPs even if it has submitted amended claims on which no communication was issued. In fact, this Notice, together with R 115(2), make it clear that the OPs are themselves an opportunity for the applicant to present its comments, in accordance with A 113(1). They confirm that, if a party decides not to attend the OPs without a serious reason, it chooses not to make use of the opportunity to comment at the OPs on any of the objections raised during them and, as explained above, it has no right to make additional written submissions. [3.5] As is apparent from the file, the ED repeatedly explained to the applicant that it considered the OPs to be necessary in order to clarify all the problems of the claims on file. It also appears from the file that it was clear to the appellant that the ED had difficulty in understanding the case submitted by it and considered OPs necessary to clarify the matter (see the letter of the appellant dated 10 December 2009). It was clear to the appellant that the OPs were appointed not only at its request but also because the ED considered it expedient. Thus, the applicant had an obligation to attend the OPs as explained above under point [3.4]. [3.6] Despite this clear situation, the applicant did not attend the OPs and did not give any serious reasons for not attending. In fact, the only reason for not attending was given in its letter dated 8 January 2010 which states that “... the applicant does not consider it beneficial to attend the forthcoming OPs.” It confirmed in the appeal proceedings that this was its only reason for not attending OPs. Serious reasons which could justify non-attendance at OPs are the same reasons that could justify postponement and have been exemplified in the Notice of the Vice-President of DG3 of the EPO dated 16 July 2007 concerning OPs before the Boards of Appeal (OJ EPO 2007, Special edition No. 3, 115). Although this Notice is directed to OPs before the Boards of Appeal, the criteria set out therein are generally valid for all departments of 685 | 3398
T 1500/10 – Not Just A Right
K’s Law – The ebook
the Office. From the examples given in this Notice, it can be seen that serious reasons are personal or social circumstances which prevent the party or its representative from personally attending the OPs. The Board does not consider the reason submitted by the appellant to be a personal or social circumstance which would have prevented it or its representative from personally attending the OPs. [3.7] The appellant was very well aware of the consequences of its conduct. In its statement setting out the grounds of appeal it submitted: “As it turns out, the applicant’s fears as to what might occur at the OPs were fully realised …”. Therefore, it cannot be said that in view of the objections previously raised it was taken by surprise. The appellant submits that its conduct was correct, because it had asked for a discussion of the case over the phone and this was refused. However, a telephone conversation with one examiner cannot be considered to be a replacement for OPs because it does not allow the case to be concluded since the other members of the ED are not present. [3.8] The appellant also appears to believe that it is up to the party to decide whether the proceedings should be conducted only in writing or over the telephone or in OPs, and the Office has to adapt itself to its wishes. As explained above, although the parties have a right to OPs when they request them, this does not mean that they have the right to decide in which way the proceedings as a whole are to be conducted. [3.9] It follows that the appellant not only consciously did not make use of a procedural opportunity given to it to present its comments but also acted in a way which was contrary to its procedural duty to assist the Office in bringing the case to a close. This amounts to a conduct which contributed – as did the conduct of the ED – to the procedural situation which arose in the OPs and to the alleged procedural violation. Furthermore, it cannot be ruled out that the appeal could have been avoided if the applicant had attended the OPs before the first instance. [3.10] G 4/92 was cited by the appellant. This opinion of the Enlarged Board of Appeal, which did not deal with the question of the equitableness of the reimbursement of the appeal fee, concerned inter partes cases and a theoretical situation in which,
first, one party files new facts or evidence for the first time during OPs,
second, these facts or evidence are admitted by the opposition division although the late filing constitutes an abuse of procedure, and
third, the other party does not attend the OPs although it should be noted that the reasons for the nonattendance were not dealt with by the Enlarged Board.
In fact, the duty to hear the absent party was the consequence of the late filed submissions being admitted (see points [7] and [8] of the Opinion). Thus, the procedural situation under consideration in G 4/92 is a very specific one and, according to this Board, this opinion cannot form the basis for a general modification of the duty established in A 116(1). Decision T 197/88, also cited by the appellant, is not applicable because in the present case the ED did give the applicant an opportunity to present comments. Decision T 951/92 is not relevant because it did not deal with the question of whether the reimbursement of the appeal fee was equitable. [3.11] For the above reasons the reimbursement of the appeal fee is not equitable. […] The case is remitted to the department of first instance with the order to proceed with substantive examination of the application on the basis of claims 1 to 5, filed at the OPs of 24 October 2012. Should you wish to download the whole decision, just click here. The file wrapper can be found here. NB: This decision has also been commented on Le blog du droit européen des brevets (here) 686 | 3398
J 6/12 – What Goes Up Must Come Down
K’s Law – The ebook
J 6/12 – What Goes Up Must Come Down 13 Feb 2013
The applicant filed an appeal against the decision of the Examining Division (ED) not to reimburse ten claims fees. On July 21, 2008, the ED issued a R 71(3) communication for the ECT application. As the version on which this communication was based contained 36 claims, the applicant was invited to pay claims fees for 21 claims. On December 1, 2008, the applicant filed an amended set of claims containing 26 claims. On December 16, 2008, the applicant was informed that the EPO had debited another 2000 euros (claims fees for the ten excess claims) from its account. On January 7, 2009, the ED informed the applicant that it accepted the amendments. The decision to grant was taken on January 21, 2009, based on the amended claims. On January 27, 2009, the applicant was told that the claims fees had fallen due when the communication pursuant to R 71(3) was delivered; a subsequent reduction of the number of claims did not reduce the number of claims fees to be paid. The applicant replied that as an increase of the number of claims required the payment of more claims fees, the reduction of their number had to have the converse effect. The Office maintained its opinion and referred to the Guidelines, A XI-5.2.3. In its response the applicant argued that R 71(6) (in its then applicable version) did not refer to R 71(3) but referred to “the text intended for grant”. A reduction of the number of claims, therefore, had to entail a fee reduction. The form concerning the “amendment or correction of the Druckexemplar” also supported this understanding. The formalities agent of the ED was not persuaded. A communication dated November 13, 2009, contained the following statement (in English translation): “… At the grant stage the fees to be paid for further claims are calculated on the basis of the application in the text intended for grant. This refers in particular to the text proposed in the communication pursuant to R 71(3) if the latter contains further claims for which no fee had been paid. Amendments filed in response to this communication or corrections leading to a higher number of claims are also taken into account in application of amended R 71(6). However, a reduction of the number of claims at this stage has no effect on the claims fees to be paid.” The ED also argued that this understanding was supported by the use of “and” instead of “or” in R 71(6) in its then applicable version: “(6) If the European patent application in the text intended for grant comprises more than fifteen claims, the ED shall invite the applicant to pay claims fees in respect of each additional claim within the period under paragraph 3, and, where applicable, paragraph 5, unless the said fees have already been paid under R 45 or R 162.” The “and” showed “that the issuing of the R 71(3) communication was the decisive moment for fixing the fees to be paid at the grant stage and that there was no new calculation of claims fees when subsequent amendments or corrections led to a reduction of the number of claims.” According to the ED, the claims fees were intended to compensate for the additional work generated by the great number of claims. As the claims on file at the R 71(3) stage or filed under R 71(5) had been the object of examination, the payment of the fees at that stage was justified.
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J 6/12 – What Goes Up Must Come Down
K’s Law – The ebook
R 71(1) did not distinguish between the stages under R 71(3) and 71(5) either; if the claims fees were not paid, the application was deemed to be withdrawn. Moreover, there was no provision in the EPC in application of which the claims fees had to be reimbursed after the number of claims had been reduced after receipt of the R 71(3) communication. The applicant filed a response in which it objected to the arguments of the ED. An appealable decision was issued on November 10, 2011. The applicant filed an appeal. Here is the verdict of the Board: *** Translation of the German original *** [2] The appellant does not contest that R 71(6), which is applicable in the version that entered into force together with the revised EPC in December 2007, constitutes the legal basis for the invitation to pay claims fees. The EPC 1973 already contained an almost identical provision: R 51(7). The changes introduced with the version of R 71 which entered into force together with the revised EPC that are relevant for the present case concern the introduction, into R 71(6), of the legal basis for the invitation to pay additional claims fees when new claims are filed in response to a communication pursuant to R 71(5) (Special edition n° 5, OJ EPO 2007, 122). [3] According to the wording of this provision it is the “text intended for grant” that constitutes the basis for charging additional claims fees. The same expression is also used in paragraph 3 of this rule for defining the content of the communication concerning the ED’s intention to grant. [4] Therefore, the question arises whether this expression has the same content in both paragraphs, so that – as argued in the impugned decision – the “text intended for grant” is fixed (steht fest) when the communication pursuant to R 71(3) is drafted. [5] R 71(3) deals with the stage where the ED has terminated the examination of the European patent application; it defines the necessary steps that have to be taken before the grant can be decided and becomes legally effective. The list contains the communication of the “text in which [the ED] intends to grant it” and the invitation to pay the fee for grant and publishing as well as to file a translation of the claims in the two official languages of the EPO other than the language of the proceedings. From this point in time on, two scenarios are possible: (a) the applicant approves the proposed version and fulfils all the requirements of R 71(3), or (b) it requests amendments under R 71(4). In case (a) the proposed version, which the applicant has approved, defines the content of the decision to grant. As a consequence, it also constitutes the “text intended for grant”, so that, if it contains more than 15 claims, claims fees fall due and have to be paid in application of R 71(6). In case (b), however, the ED has to deal with the filed amendments and may have to establish a new communication (Prüfungsbescheid) (R 71(5)). Thus the “text intended for grant” will only be fixed (feststehen) after the ED has approved the amendments or the applicant has approved the further/new propositions of the ED, respectively. Only then is it possible to establish how many claims the “text intended for grant” actually contains in order to determine the corresponding amount of claims fees to be paid. This is what happened in the present case in the communication of January 7, 2009, in which the applicant was informed that the “request for amendment … pursuant to R 71(4) dated December 1, 2008” had been granted. [6] In this context it should be noted that R 71(6) only explicitly refers to R 71(3) in view of the period in which the fees are to be paid. As there is no referral whatsoever concerning the “text intended for grant”, and in view of the general formulation [the Board] can only note that the wording of the provision as such does not justify the conclusion that the “text intended for grant” is always the text which was communicated to the applicant under R 71(3). As explained above under point [5], the proceedings can evolve in different directions.
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J 6/12 – What Goes Up Must Come Down
K’s Law – The ebook
[7] This conclusion is supported by the practice described in the impugned decision. If it always was the version fixed by the communication pursuant to R 71(3) that defined the “text intended for grant”, then the ED could not really ask for the payment of additional fees if the amendments introduced under R 71(4) or (5) led to a higher number of claims. However, that is not the practice described in the impugned decision. Thus [the ED] indirectly admits that the “text intended for grant” can also be fixed at a later stage. Therefore, the opinion expressed in the impugned decision is not coherent. According to this opinion, more fees are due when the number of claims increases but reimbursement is refused when their number decreases. [8] It follows from these considerations that the arguments of the ED do not resist scrutiny and that it cannot justify its negative decision. [9] The next argument cited in the impugned decision defines the claims fees to be a compensation for the examination work caused by the greater number of claims. [10] Claims fees were introduced by the legislator in order to keep the number of claims within reasonable limits. In its decision J 9/84 [4] the Legal Board of appeal explained that the main purpose of R 31 EPC [1973] was “to induce the applicant to limit the protection sought to a certain number of claims, in the first instance for the purposes of the European search”. The Board found itself unable to endorse the opinion that the fees were a financial compensation to the EPO in respect of extra work (in the substantial examination) caused by the number of claims (cf. Teschemacher, A 84, patent claims, in: Münchner Gemeinschaftskommentar, 7 th delivery, 1985, marginal number 132 ff.: “Moreover the fees constitute a certain equivalent for the additional administrative effort related to the examination of applications containing a greater number of claims.”, see also T 937/09). [11] This approach is also supported by the original structure of the system, where it was foreseen that in case of a lack of approval to the text intended for grant, the communication pursuant to R 51(4) was deemed not to have been issued and the examination was continued (R 51 EPC 1973 in its version in force until 1987). Also, in its version in force as of September 1, 1987, R 51 EPC 1973 provided that [the EPO] should invite [the applicant] to pay all fees only after any proposed amendment had been considered (R 51(6) and (7) in its version in force as of September 1, 1987). [12] The consequence of this is that if it had been the intention [of the legislator] to compensate for the increased examination work at all, this compensation would depend on the claims that were on file already at the beginning of the proceedings. This is also in line with the overall concept of the fee structure according to the EPC according to which in principle fees have to be paid in advance, in view of the requested service. If the legislative purpose behind the claims fees was to cover the extra examination work, then the payment of these fees would have been provided in the course of the examination proceedings and triggered by the filing of the claims, before they were examined by the ED. [13] The amendment of R 51 EPC 1973 that entered into force on July 1, 2002, mainly served the purpose of accelerating this last stage of the proceedings and the possibility of granting the patent directly. The express provision contained in the amended rule according to which the fees for grant and publishing as well as any claims fees paid have to be refunded if the patent is not granted, is due to the merger of two procedural steps into one. As a matter of fact, in the system in force after the amendment the applicant had to fulfil all the requirements that had to be fulfilled in two steps before within one single time limit that could not be extended. However, the amendment has not changed the core requirement according to which there has to be a text approved by the applicant in order for a patent to be granted. If the applicant files amendments leading to a reduced number of claims in response to the communication pursuant to R 71(3), then these claims form the basis for calculating the claims fees to be paid, just as they form the basis for the grant of the European patent. [14] As to the version of the provision that has entered into force together with the revised EPC, which is to be applied in the present case, the only explanation provided for the changes is that “if in response to a communication under R 51(5) EPC 1973, new claims were submitted and their number exceeded the number previously on file, a legal basis for requesting additional claims fees was missing in the EPC 1973. R 71(6) EPC 2000 now provides a legal basis (Special edition n° 5, OJ EPO 2007, 122; emphasis by the Board). These explanations do not concern the above considerations (point [13]). On the one hand there is nothing on increased examination expenses and their financial compensation; on the other hand the express wording stipulates that the number of claims filed under R 71(5) is to be compared with the original number of claims in order to determine whether the invitation to pay additional claims fees is justified. The conclusion that in proceedings under R 71(5) the amended claims determine the amount of the claims fees is, therefore, inevitable.
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J 6/12 – What Goes Up Must Come Down
K’s Law – The ebook
[15] Finally the argument according to which there is no provision on which to base the requested reimbursement does not lead to a different outcome. It is indeed generally acknowledged that an express legal basis is needed not only for invitations to pay fees but also for reimbursing them. However, this only holds true if there has been a cause in law (Rechtsgrund) for the fee payment, i.e. if the fees had fallen due. In the present case, however, according to the wording of R 71(6) the [EPO] may invite [the applicant] to pay claims fees only on the basis of the “text intended for grant”. However, as explained above, this text is not fixed yet when the communication pursuant to R 71(3) is drafted, but only once the ED has approved the filed amendments. Fees the [applicant] has been invited to pay at that earlier stage have not yet fallen due to the extent to which the applicant has reduced the number of claims in response to the communication pursuant to R 71(3). The EPO may not keep fees that have been paid without there being a cause in law, and which are not to be considered to be negligible amounts (Bagatellbeträge). [16] For the above reasons the impugned decision cannot be maintained. It has to be set aside and the controversial claims fees have to be reimbursed. […] The reimbursement of ten claims fees is ordered. NB: The Board has provided a handy headnote: If amendments under R 71(4) are requested, the “text intended for grant” is only fixed once the ED has approved the amendments or the applicant has approved further/new propositions by the ED, respectively. It is only then that the [EPO] can determine the number of claims which the “text intended for grant” contains and, consequently, the number of claims fees that fall due. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1306/08 – Let Us Distinguish
K’s Law – The ebook
T 1306/08 – Let Us Distinguish 12 Feb 2013
[3.1] The respondent argued that A 100(c) had not been cited as a ground for opposition and, making reference to decision G 9/91, concluded that the board was not competent to examine whether or not the amendments are in accordance with the requirements of A 123(2). The board wishes to emphasise that, in so far as subject-matter of the European patent extending beyond the content of the application as filed is concerned, a distinction has to be made between the ground for opposition according to A 100(c), which concerns amendments made in the pre-grant phase, and amendments made in the course of opposition or appeal proceedings. Regarding the latter alternative, decision G 9/91 [19] notes: “In order to avoid any misunderstanding, it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of A 123(2) and (3)).” As the objections raised by the appellant concern subject-matter amended in the course of the opposition and appeal proceedings, the board concludes that it is competent to examine them. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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K’s Law – The ebook
R 2/12 - A Case For An R
R 2/12 - A Case For An R 11 Feb 2013
In this petition for review the question arose whether the petitioner had indeed raised a R 106 objection. Board of appeal (BoA) 3.2.07 had dismissed several auxiliary requests. The representative expressed his surprise and said he had felt misled and that the refusal of the auxiliary requests was a matter for an “R-case”. The representative pointed out that here was no other possible interpretation of this remark than as an objection under R 106. There had to be a willingness on the part of the judge to understand what a party meant. In addition, there was no rule in the EPC from which it could be concluded that the minutes of oral proceedings (OPs) were complete and that an objection had not been raised if it was not mentioned in the minutes. Indeed, the way in which the minutes were drafted, i.e., without their being read out at the end of the hearing, left the parties without any possibility to know their contents until the minutes were sent to parties. A party had no means to ensure that the BoA had understood it correctly. You might have guessed that these arguments were not successful. [1.2.1] A fair trial and fairness towards the parties imply legal certainty, which, in turn, implies predictability of the application of legal provisions. Regarding the fundamental principles underlying the petition for review it must be borne in mind that this procedure has been intended to be an exceptional means of redress against a decision which has become res judicata, so as to remedy intolerable deficiencies occurring in individual appeal proceedings (Preparatory document CA/PL 17/00, point II: “Main features of the Petition for Review”). In this respect the objection under R 106 has been considered, right from the entry into force of the petition for review procedure, to be an important procedural act, the significance of which must be immediately clear for the BoA, because it is also a means for rectification of the procedural defect, precisely to avoid the need to challenge a decision which is res judicata (see as examples R 4/08 [2]; R 17/10 [2] and R 1/10 [6]). In the case in suit there is no trace or evidence of the statements allegedly made by the petitioner's representative during the OPs. The BoA rejected the request for correction of the minutes aimed at inserting the sentences claimed to have been pronounced and three opponents confirmed that they did not hear such remarks. But even if for the sake of argument the Enlarged Board assumed that the representative mentioned that he felt misled and believed that it was a case for an “R-decision”, the subsequent disagreement about what was said or what was not said, and how what was said should have been interpreted, demonstrates how much the formal requirement of an objection under R 106 is justified. In any event, the remarks, if made, were not in a form that the BoA could recognise them immediately and without doubt as an objection under R 106 (see R 4/08 [2.1]). As a consequence, and bearing in mind the function of the petition for review, the petitioner's argument that in the course of OPs the dismissal of an objection by the Board may be expressed informally, for instance by a mere gesture from the Board's chairperson, without any record in the minutes of the attempt to object and the dismissal of the objection, are not relevant. Just as unconvincing are the arguments that there is no legal presumption that the minutes are complete or that the parties have no means to check what the minutes contain: Not only when the chairperson confirms the final requests before closing the debate, but at any time when the Board is about to deliberate, (the risk of a final decision after deliberation being always present), it is the duty of a party to check whether its objection to a fundamental procedural defect occurring during the OPs has been recognised by the Board and will be dealt with. Even if the objection was raised earlier during the OPs, it is not, contrary to what the petitioner contended during the OPs before the Enlarged Board, comparable to an intermediate request, something which is not always reflected in the minutes: As stated in R 4/08 [2.1], an objection under R 106 is additional to and distinct from other statements. The point is not that the minutes do not reflect the whole OPs; the point is that, if a party is really convinced that a violation of its right to be heard has occurred during the OPs the subsequent objection must be clearly raised as such, and not as a mere aside, so that it will oblige the BoA to react, and require this to 692 | 3398
K’s Law – The ebook
R 2/12 - A Case For An R
be recorded in the minutes in accordance with R 124, at least at a party's request. Failing that, if the procedural defect was apparent during the OPs, as in the present case, there is no way to escape from the conclusion of inadmissibility under R 106. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1382/09 – At The Printers
K’s Law – The ebook
T 1382/09 – At The Printers 9 Feb 2013
This opposition appeal decision contains a statement on the availability to the public of a printed document. The patent proprietor pointed out that documents A2, A5, F2, F4, and F7 showed that the skilled person was able to measure the pH value under certain conditions. *** Translation of the French original *** [4.2.1] The [patent proprietor] referred to document A2
page 17 of which teaches how to use a LiCl solution in ethanol as an alternative electrolyte in electrodes to be used in non-acqueous media, and page 36 of which discloses an electrode containing such an electrolyte.
Document A2 is a catalogue of the Metrohm company that is dated on its page 2 as follows:
Even if one may presume that this document had been printed in February 1999, there is no indication that this catalogue or the above mentioned electrode have been made available to the public before the date of filing of the patent-in-suit, i.e. March 20, 1999. Therefore, document A2 cannot support the argument of the patent proprietor. Although it does not explicitly say so, the Board appears to consider that there was an implicit confidentiality agreement between the print office and the Metrohm company. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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T 748/09 – Gold Governs The Globe
K’s Law – The ebook
T 748/09 – Gold Governs The Globe 8 Feb 2013
When G 2/10 was issued by the Enlarged Board of appeal (EBA), I was not quite certain whether it was brilliant or trivial, and to be honest, I still do not know for sure. Be that as it may, we now see decisions where G 2/10 appears to overtake G 1/03 - which puzzles your humble servant. In the present case, both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division to maintain the patent in amended form. The appeal of the opponent was found admissible although it was filed in the wrong name, without an address and a statement explaining to which extent the decision was contested. However, the substantive arguments of the opponent were found not to be persuasive and its appeal was found unallowable. The Board then examined the allowability of the appeal of the patent proprietor: [2.2.1] Claim 2 of the new main request contains the wording “with the proviso that a metal alloy consisting essentially of 50 - 98.9 % Nb, 0.5 - 5 % Zr and 0.6 - 49.5 % Ta is excluded”. The amendment to claim 1 aims at excluding the alloy compositions disclosed in Table 1 of document D1, which represents prior art in the sense of A 54(3). The amendment therefore constitutes the introduction of an “undisclosed disclaimer”. [2.2.2] In decision G 2/10, the EBA considered that in decision G 1/03 the EBA did not provide an exhaustive treatment of the conditions when an “undisclosed disclaimer” violates A 123(2) and when it does not (G 2/10, page 34, first paragraph). Moreover, the EBA held that the gist of the questions referred to the EBA in cases G 1/03 and G 3/03 (sic) to which the EBA had to give an answer, was to establish whether, and if so, under which circumstances undisclosed disclaimers could be considered allowable at all, as a matter of principle, despite of the absence of a basis in the application as filed. It is this question and no more the EBA had answered in answer 2. The wording the EBA chose in the starting line of answer 2, reading “a disclaimer may be allowable”, indicates that with the criteria set up in answer 2 the EBA did indeed not intend to give a complete definition of when an undisclosed disclaimer violates A 123(2) and when it does not. The EBA further stated that neither decision G 1/93 nor decision G 1/03 intended to modify the general definition of the requirements of A 123(2) established in opinion G 3/89 and decision G 11/91, which definition has become the generally accepted “gold” standard for assessing any amendment for its compliance with A 123(2). Consequently, the principle that any amendment to an application or a patent, and in particular to a claim, must fulfil the requirements of A 123(2) also applies to an amendment limiting the claim by disclaiming disclosed or undisclosed subject-matter. Therefore, as is the case for any other amendment, the test for an amendment to a claim by disclaiming subject-matter disclosed as part of invention in the application as filed, or subject-matter disclosed in a document representing prior art in the sense of A 54(3), respectively, must be that after the amendment the skilled person may not be presented with new technical information. Put another way, the point of reference for assessing an amended claim for its compliance with A 123(2), including amendments by introducing an undisclosed disclaimer, is the subject-matter which the claim contains after the amendment. Hence, the test to be applied is whether the skilled person would, using common general knowledge, regard the remaining claimed subject-matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed. This opinion corresponds to the one given in T 2464/10. [2.2.3] The “remaining subject-matter test” applied to claim 2 of the new main request Following the principles laid down in decision G 2/10 with respect to the “gold standard”, the remarks in this decision must be interpreted as an instruction to the Board to apply the further test developed therein, in addition to the principles set out in decision G 1/03, in order to carry out a full assessment of whether an “undisclosed” disclaimer meets the requirements of A 123(2). The elemental limitations imposed by the disclaimer of claim 2 serves the purpose of excluding the Nb-Zr-Ta alloy compositions, which are disclosed in document D1, from the claimed Ta-alloys and - in consequence thereof - of establishing novelty vis-à-vis D1 which constitutes prior art in the sense of A 54(3). However, by 695 | 3398
T 748/09 – Gold Governs The Globe
K’s Law – The ebook
introducing into claim 2 the compositional restrictions, which are exclusively based on document D1 rather than on the technical disclosure of the application, the skilled person is confronted with new subject-matter that he cannot derive clearly and unambiguously from the application as originally filed. To give an example, it is noted that the upper limit of less than 50% niobium now featuring in claim 1 is not disclosed anywhere in the application as filed and neither are the limits of less than 0.5% Zr and more than 5% Zr. It follows from the above considerations, that the disclaimer of claim 2 of the auxiliary request 1 does not satisfy the requirements of A 123(2). Hence claim 2 of the new main request is not allowable. [2.2.4] The appeal is, therefore, not allowable. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1843/09 – More Exceptions
K’s Law – The ebook
T 1843/09 – More Exceptions 7 Feb 2013
This decision contains interesting paragraphs both on reformatio in peius and disclaimers. On March 11, 2003, the Opposition Division (OD) had maintained the patent in amended form. The opponent filed an appeal. In a first decision (T 724/03) the Board held that the disclaimer allowed by the OD did not contravene A 123. It also found document D23 to be highly relevant and introduced it into the proceedings before it remitted the case to the OD for further prosecution. The patent proprietor filed several new requests. On April 22, 2009, the OD (OD) again maintained the patent in amended form. It argued that the principle of prohibition of reformatio in peius was not violated by the patent proprietor’s requests filed in the continued opposition proceedings, because (i) this principle applied only to requests on which a decision was taken in appeal proceedings and (ii) the position of the appellant had in fact been improved by the admission of the highly relevant documents D19 and D23 into the proceedings. The remittal of the case to the OD with the order to consider the late filed documents D19 and D23 amounted to a new factual basis due to the high relevance of D19 in combination with D23 for the novelty of the claimed subject-matter. Under R 80 the proprietor was entitled to react to a new factual situation by making “appropriate and necessary amendments” occasioned by grounds of opposition. So the fact that the scope of protection sought was broader than under the claims maintained in the first interlocutory decision was immaterial to the present case, even though it did not fall under the exceptions from the prohibition of reformatio in peius as defined in G 1/99. The opponent filed an appeal. Here is the verdict of the Board: Admissibility of the amendments in view of decisions G 9/92, G 4/93 and G 1/99 principle of and exceptions from the prohibition of reformatio in peius [2.1] It is evident and undisputed that the deletion of feature (f) in the claims according to the main request as held allowable by the second decision of the OD – the one now under review – resulted in a broadening of the protection sought by the proprietor as compared to its main request held allowable by the first decision of the OD against which only the opponent had lodged an appeal (T 724/03). [2.2] The OD and the parties have expressed themselves extensively and in disagreement on the question of whether or not the proprietor’s requests directed to the broader claims are admissible in view of the principle of the prohibition of reformatio in peius (henceforth also “PRP”) as established in the (identical) decisions G 9/92 and G 4/93 (for simplicity only the second one will be quoted hereafter), namely that “If the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, the patent proprietor is primarily restricted during the appeal proceedings to defending the patent in the form it was maintained by the OD in its interlocutory decision.” (Headnote 2). This dispute was clearly due to the fact that the circumstances in the case at hand differ in several respects from those specifically dealt with in G 4/93 and, as to exceptions from the principle, in G 1/99. [2.3] In the present case the Board of Appeal in its decision T 724/03 limited itself to admitting documents D19 and D23 into the proceedings and to remitting the case to the OD for further prosecution (point 2 of the order). As the Board did not itself review the decision under appeal in the light of these newly admitted documents the PRP was not an issue during these first appeal proceedings.
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T 1843/09 – More Exceptions
K’s Law – The ebook
[2.3.1] As pointed out in G 1/99 [9.2] the PRP was established in G 4/93 not as a principle of procedural law generally recognised in the Contracting States (A 125), but as a consequence of the principle of ne ultra petita, more specifically “it is the appellant who in the notice of appeal determines the extent to which amendment or cancellation of the decision is requested” in the subsequent appeal proceedings (G 1/99 [6.4]). The fact that the proprietor could not (for lack of adverse effect) or did not appeal against a decision of the OD cannot be altered later (just like the scope of protection conferred by the patent as granted). The ensuing procedural limitation on the proprietor’s liberty to change by way of amendments the scope of protection sought prevails until the final settlement of the opposition case (just like the limitation pursuant to A 123(3)) and, therefore, also in any proceedings, including further appeal proceedings, subsequent to a remittal under A 111. Otherwise the PRP would not serve its purpose, namely to avoid a situation whereby the opponent and sole appellant would be put “in a worse situation than if he had not appealed” (G 1/99 [headnote]), or, in procedural terms, whereby the opponent would eventually be adversely affected by its own appeal (G 4/93 [9]: “The aim of an appeal is to eliminate an ‘adverse effect’ (A 107, first sentence).”). For this reason the OD was wrong to hold that the PRP applied only to requests on whose allowability a decision had been taken by the Board of Appeal […]. [2.3.2] The reasoning of G 4/93 also does not imply that, as the opponent argued […], the PRP prevails only on condition that the factual situation at the time of the first instance decision is the same as on appeal by the opponent. The legal basis for the PRP (ne ultra petita - see above) is not related in any way to the facts underlying the decision which the proprietor did not appeal against, or to the reasons for not doing so (see decision T 138/04 as to the deletion of a term introduced at the suggestion of the OD). Again, otherwise the PRP would not serve its purpose as explained above (which purpose does, however, not exclude the possibility that a change of the relevant facts may justify an exception from the principle - see below). [2.3.3] It follows for the case at hand that the principle of the prohibition of reformatio in peius had to be taken into account in the continued opposition proceedings and, as both parties now seem to agree, it applies also in the present (second) appeal proceedings, the claims setting the framework for reformatio in peius being those according to the main request as held allowable by the OD in its (first) interlocutory decision announced on 11 March 2003. [2.4] A further feature of the case at hand concerns the circumstances which may justify exceptions from the principle of the PRP in accordance with decision G 1/99. [2.4.1] In the situation specifically dealt with in G 1/99 [headnote, 13-14] the decision under appeal had to be set aside and the patent had to be revoked by the board of appeal as “a direct consequence of an inadmissible amendment held allowable by the OD in its interlocutory decision”, the critical amendment consisting in the addition of a particular limiting feature during the opposition procedure, which did not, however, comply with (e.g. A 123(2) of) the EPC. The Enlarged Board (EBA) held that “it would be inequitable for the patent proprietor not to be given a fair opportunity to mitigate the consequences of errors of judgment made by the OD. Therefore, the patent proprietor may be allowed to file requests in order to overcome this deficiency” (point [14] of the reasons), if necessary even by deletion of the inadmissible amendment/the critical feature (point [15] of the reasons, last alternative). [2.4.2] In contrast thereto, no error of judgement by the OD was established by the Board of appeal in T 724/03, which set aside the decision under appeal because the factual basis of the opposition had changed by the admission of D19 into the proceedings, a document which the board found to represent highly relevant state of the art in view of D23, a corroborating document first filed by the opponent during the (first) appeal proceedings. [2.4.3] As to the possibility of exceptions from the PRP as such, the EBA considered in G 1/99 [11-12] that the undifferentiated application of the PRP “could lead, in certain specific circumstances, to inequitable consequences. … Indeed, objections raised in first instance may be supported by new facts and new objections may be raised in appeal proceedings with the consequence that the basis on which limitations have been made may still change and it would not be equitable to allow the opponent/appellant or the Board to present new attacks and to deprive the proprietor/respondent of a means of defence.” 698 | 3398
T 1843/09 – More Exceptions
K’s Law – The ebook
[2.4.4] By this the EBA made it clear that exceptions from the PRP are to be allowed as a matter of equity in order to protect the non-appealing proprietor against procedural discrimination in circumstances where the PRP would impair the legitimate defence of its patent. That means that exceptions from the PRP are not limited to the situation specifically dealt with in G 1/99, i.e. an error of judgment by the OD concerning an amendment introduced into the version of the patent as maintained by the decision under appeal. Rather, the equity approach as taken by the EBA covers, beyond an error of judgment by the OD, any change of the factual and/or legal basis on which limitations have been made by the proprietor prior to the appeal by the opponent as the sole appellant, provided the proprietor would be prevented by the PRP from adequately defending its patent against new facts and objections introduced into the proceedings at the appeal stage. [2.4.5] Under the circumstances prevailing in the opposition proceedings before the OD took its first interlocutory decision on 11 March 2003, it was a perfectly appropriate and legitimate line of defence for the proprietor to file a main request with claims containing the priority-destroying feature (f) in order to cope – successfully, as the OD held – with D15, a document which was in the proceedings already, and to ignore D19. As long as this late filed document, even if it represented state of the art within the meaning of A 54(2) for claims which did not enjoy the (earliest) priority, was not admitted into the proceedings, it could not have any bearing on the decision on the opposition against the patent in dispute. By the same token, in the event that D19 were to be admitted into the proceeding, the proprietor would be entitled to file an auxiliary request from whose claims feature (f) had been deleted so that D19 – a highly relevant document, as it turned out later, when taking into account the corroborating document D23 filed by the opponent in the (first) appeal proceedings – could not be cited against such a version of the patent in dispute. The filing of an auxiliary request with claims necessarily broader in scope than those according to the main request did not, in the given circumstances, constitute an abuse of the proceedings by the proprietor, in particular not a circumvention of the PRP. It is immaterial in this context that D19 was filed only shortly before the (first) oral proceedings before the OD, a fact relied on by the proprietor […] and as to whether the latter was better placed to judge the relevance of D19, since it was the proprietor’s own document, as maintained by the opponent […]. [2.4.6] Where the filing of broader claims as an auxiliary request would have been a legitimate means of defence in proceedings before the OD as department of first instance, it would be inequitable to deprive the proprietor of that means of defence by applying the PRP if in later appeal proceedings the conditions for filing the broader auxiliary/alternative request are eventually met – in the present case following the admission of the highly relevant D19 into the proceedings. Otherwise, the proprietor would be discriminated against and the opponent would benefit from the PRP beyond its purpose in the – certainly rare, but, as the present case demonstrates, not impossible – situation where a limitation of the claims is not the appropriate response to new facts and new objections (as in the present case “owing to the D19/D23 interaction in conjunction with the complex priority situation”, as the proprietor put it […]. It is also to be borne in mind that the principle of ne ultra petita as developed in G 4/93 and relied on in G 1/99 is exclusively a matter of the scope of protection sought or (implicitly) no longer sought by the proprietor. This cannot reasonably be the sole relevant criteria for assuming an implied waiver also of the priority right by the non-appealing proprietor where the filing of broader claims was both intended and appropriate to keep the (earliest) priority right in the case of the later admission of a specific intermediate document into the proceedings. [2.4.7] It is true that in the case at hand the opponent’s situation was worsened by the deletion of the fatal feature (f), and that it was the proprietor’s choice to maintain claims containing the priority-destroying feature (f) as its main request. But arguing, as the opponent did […], that the proprietor is bound by its own decision at that time because it does not deserve protection from itself, is begging the question. The decisive question is whether or not the proprietor deserves protection, as a matter of equity, in view of a later change of the factual basis of the decision on the opposition (a change which in the present case was brought by the opponent by filing the corroborating document D23 in support of its appeal against the first interlocutory decision of the OD). [2.4.8] On the other hand, it is not sufficient for granting an exception from the PRP that, as the proprietor argued […], it defended its patent in good faith at first instance and did not appeal in view of the factual and legal situation at the time of the decision of the OD, and it could not be expected to foretell the filing of D23 and the subsequent shift in the substance of the opposition. All this was not different from the standard situation where the sole or main request was found to be allowable and the patent can later be defended in appeal proceedings by the standard means of defence, that is by narrowing the protection sought in response to new facts or objections. [2.4.9] The present case is not of that standard type, rather the relevant circumstances were such that the deletion of the critical priority-destroying feature (f) was exceptionally justifiable while also respecting the rule that such an exception should only be construed narrowly (G 1/99 [15]). There is nothing in that point or elsewhere in G 1/99 from which it can be derived that the three types of amendments and their order set out therein (point [15] 699 | 3398
T 1843/09 – More Exceptions
K’s Law – The ebook
and headnote, second paragraph) have to be considered as the sole equitable and, therefore, admissible amendments, also where no error of judgement by the OD was present. Whether at all, to what extent and in what form any such exception may be granted has to be decided along these lines in each individual case with an aim to re-conciliate the adequate protection of the rights and interests of the sole appellant/opponent with the legitimate defence of the patent by the (non-appealing) proprietor. The proprietor thus correctly argued that the decision G 1/99 provides guidance for the exercise of the relevant discretionary power beyond the facts underlying the referring decision […]. Added matter by disclaimer - main request [3] Claim 1 of the main request […] excludes a film of comparative example 4 of EP-A 0 546 184 (D15) via a disclaimer in order to restore novelty over the disclosure in this document. [3.1] The board notes that these claims are entitled to the earliest priority date of 12 August 1992. D15 claims three priorities from 1991 and was published on 15 October 1992, i.e. after the above earliest priority date. It therefore constitutes prior art according to A 54(3). This was not contested by the parties. The requirement set out in G 1/03 [order 2.1] that a disclaimer may be allowable in order to restore novelty by delimiting a claim against state of the art under A 54(3) is therefore fulfilled. [3.2] The opponent argues that the disclaimer contravened A 123(2) because the wording of the disclaimer that the claimed film “is other than a film of Comparative Example 4 of EP-A 0546184” did not represent a technical feature. The board does not accept this argument. Although it is true that technical information cannot directly be extracted from the wording of the disclaimer in claim 1 as such, it should be noted that the disclaimer does not merely cite a published patent document, but clearly refers to a specific disclosure in D15, namely a single film described in comparative example 4. Table 4 of D15, characterises this film unambiguously by a number of technical features. The skilled person is therefore able to determine simply by reading the comparative example in D15 which technical embodiment should be excluded from the scope of the claim. The disclaimer in claim 1 therefore represents a negative technical feature in the sense of G 1/03 [2] and therefore complies with A 123(2). Finally the patent was revoked because the requests on file were found to lack inventive step. I guess people having to use disclaimers will find this way of disclaiming attractive because it can avoid much trouble (no need to describe exactly what is disclosed in the example, no translation problems ...). Before jumping on this bandwagon it might, however, be wise to wait for decisions that confirm this approach. Concerning the exceptions from PRP, there is also T 1009/05 [2], where Board 3.5.04 had a somewhat relaxed approach (reported on this blog). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 378/11 – Such As
K’s Law – The ebook
T 378/11 – Such As 6 Feb 2013
This is an appeal filed by the opponents after the Opposition Division had maintained the opposed patent in amended form. The Board inter alia discussed clarity and sufficiency of disclosure of the main request, claim 1 of which read: 1. A package comprising a detergent composition enclosed by a water-soluble or waterdispersible packaging material, wherein the detergent composition comprises a carrier fluid selected from hydrophobic oils such as paraffin oil, vegetable oils (e.g.olive oil/sunflower oil) and silicone oil and encapsulated phthalimidoperhexanoic acid (PAP) in granular form, wherein the PAP has a particle size of from 10-500 µm, more preferably 10-300 µm, more preferably 200-300 µm (e.g.about 250 µm). (my emphasis) A 84 EPC 1973 [4.1] The [opponents] objected that expressions like “e.g.” and “such as” used in Claim 1 would render the meaning of the claim unclear. [4.2] In the present case the Board cannot share the [opponents’] view. The objected passage reading “the detergent composition comprises a carrier fluid selected from hydrophobic oils such as paraffin oil, vegetable oils (e.g. olive oil/sunflower oil) and silicone oil and encapsulated phthalimidoperhexanoic acid (PAP)...” describes that the detergent composition comprises a hydrophobic carrier oil and encapsulated PAP. The various compounds listed are merely examples of the hydrophobic oils; olive oil and sunflower oil are specific examples of vegetable oils. Thus, the wording per se is considered to be clear. [4.3] In addition, in the present case the mention of a limited number of examples representing preferred embodiments of one ingredient of the detergent composition is not considered to infringe the requirement of conciseness either. [4.4] Thus, the requirement of A 84 EPC 1973 is considered to be met by Claim 1 of the main request. A 83 EPC 1973 [5.1] Claim 1 of the main request refers to “a particle size of from 10-500 µm, more preferably 10-300 µm (e.g. about 250 µm)”. According to the [opponents] the skilled person does not know what the size refers to, i.e. whether the ranges refer to absolute dimensions or to mean values. Furthermore, if the latter case were to be assumed, it would not be sufficiently disclosed whether the number average particle size, the weight average particle size or similar parameters were to be used. Given this alleged lack of sufficient disclosure the skilled person was considered not to be in a position to re-work the teaching of the patent-in-suit. [5.2] Although Claim 1 refers to ranges, also a discrete value (“about 250 µm”) is cited. Being aware that particles of exactly one specific particle size are practically not feasible on an industrial scale, it can only be concluded that the values disclosed in Claim 1 refer to the average particle size. [5.3] This point of view is supported by the examples on file. Examples 1-4 refer to particle sizes of 200, 250 and 500 µm. Starting from these tests carried out with specific average particle sizes it is concluded that a particle size range between 200 and 500 µm gives best bleaching cleaning results (paragraph [0087]). Tablet Example 1 even refers explicitly to the averageparticle size of 250 µm and the Comparative Example 1 relates to an averageparticle size of greater than 750 µm, as distinguished from the corresponding absolute particle sizes ranging between 300-1100 µm.
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T 378/11 – Such As
K’s Law – The ebook
The conclusion to be drawn from these examples is, that the particle sizes defined in the patent-in-suit refer, unless otherwise indicated, to averageparticle sizes. [5.4] The [opponents] furthermore argued, that even if the Board would come to the conclusion that average particle sizes were meant, no indication as to the kind of average particle size were given (number or weight average particle size). However, no proof has been submitted by the [opponents], that the lack of indication as to the precise kind of average particle size hinders the skilled person from carrying out the present invention. [5.5] Even when considering the Annexes 1 and 2 of [opponent 1’s] letter of 31 August 2012 as an adequate determination of the various mean particle sizes, they only show that these mean values differ. On the contrary, it is also shown that at least some of these values fall within the range presently claimed. Thus, the skilled person could select those kinds of mean values falling within the range 10-500 µm in order to prepare a composition according to the present invention. Whether or not the use of two kinds of mean values leads to different results is a matter of clarity, rather than sufficiency of disclosure. However, the Board has no authority to determine clarity of the feature in question, as this feature was already present in the set of claims as granted. [5.6] Thus, the requirement of A 83 EPC 1973 is considered to be met. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 162/09 – A Troublesome Screen
K’s Law – The ebook
T 162/09 – A Troublesome Screen 5 Feb 2013
This decision on the admissibility of late filed requests reaffirms the principle that sets of claims filed belatedly as auxiliary requests have to converge in order to be admissible. *** Translation of the German original *** Auxiliary request 1 of the patent proprietor Admissibility [7.1] [Opponents 1 and 2] have objected to the admission of this request because it had been filed for the first time after the summons to oral proceedings (OPs) and was, therefore, filed belatedly. Moreover, it was directed at subject-matter that diverged with respect to the version of the patent as maintained because the last feature of independent claim 1 of the patent as maintained had been deleted and replaced by another aspect that had been submitted for the first time in the proceedings. It also had to be considered to be abusive that the [patent proprietor] had filed a great number of 37 mostly diverging requests (which were still pending in the OPs when the question was debated) in order to explore what the point of view of the Board might be. Such a screen (Schirm) of diverging claim versions at a late stage of the proceedings was inadmissible and in conflict with the requirement of a coherent line of defence. A consequence of claim 1 of the present auxiliary request 1, which belongs to this screen of diverging claim versions, was that the claimed subject-matter was moved in a direction which was not foreseeable and which differed from both the version as granted and the version as maintained, at a very late stage of the appeal proceedings, i.e. only four weeks before the OPs the framework of which had been fixed in the annex sent together with the summons. A “fresh case” had been generated by placing this new subject-matter even before the subject-matter [of the patent] as maintained in the ranking of the requests, which was inadmissible in view of the case law of the Enlarged Board of appeal (EBA), and in particular decisions G 9/91 and G 10/91. [7.2] In principle it is within the discretionary power of the Board to admit late filed amendments of the requests of a party. In its established case law the EBA has explained that the main purpose of inter partes appeal proceedings is to give the losing party the opportunity to contest the decision of the Opposition Division (OD) as to its substance (G 9/91 and G 10/91; G 1/94). In this respect appeal proceedings mainly aim at the independent judicial review of the decision as to its correctness, both as to its substance and from the point of view of procedural law. The discretion of the Board and the requirements for a regular conduct of the proceedings by the parties follow from the RPBA, and in particular Article 12 (Basis of proceedings) and Article 13 (Amendment to a party’s case) RPBA. These provisions have the purpose of accelerating the proceedings and express the principle of fairness vis-à-vis the other party or parties. It follows that the parties to appeal proceedings are subject to certain limits in their conduct of the proceedings. For example, each party has the duty of submitting all facts, evidence, arguments and also requests that are relevant for the prosecution or defence of its rights (Rechtsverfolgung bzw. –verteidigung) as soon and as completely as possible. Thus Article 12(2) RPBA requires a party to set out its complete case when filing the statement of grounds pf appeal. As a matter of fact, the patent proprietor has filed only one single auxiliary request together with the statement of grounds of appeal, in addition to the [request to maintain] the patent as granted (main request). This auxiliary request was directed at the version of the patent as maintained (now auxiliary request 2). Further fall-back positions were filed only four weeks before the OPs. They were directed at a great number of objects, some of which were divergent (37 auxiliary requests some of which had optional features). Considering that these documents still had to be sent to the two other parties, the time for preparing for [dealing with] this great number of auxiliary requests in the OPs was even shorter. Thus the submission underlying auxiliary request 1 was late filed. 703 | 3398
T 162/09 – A Troublesome Screen
K’s Law – The ebook
[7.3] Article 13(1) RPBA lists examples of criteria for exercising the discretion of the Board concerning amendments of the submissions. The criteria to be applied are criteria such as the time of the amendment, its reason, its extent or the difficulty or the complexity of the examination of the amendments as well as the question of allowability of the amended claims (T 942/05 [1.2]; T 81/03 [2.4]) and the general requirements concerning the parties’ conduct of the proceedings that are intrinsic to appeal proceedings. Moreover, it is of particular importance whether the patent proprietor filing more than one request pursues a coherent line of defence and does not, in particular towards the end of the proceedings, file a “screen” of diverging claim versions that creates a procedural situation, both for the other party and for the Board of appeal, where they have to “choose” the set of claims that could prevail among a great number of claim versions. Therefore, it is not only the time at which the requests were filed that matters, but also the “convergence” or “divergence” of the claim versions, i.e. whether they further develop the subject-matter of the independent claim of the main request by progressively limiting it in one direction or in the direction of one inventive idea, respectively, or whether they develop it along various [directions] by incorporating different features. However, as shown above, this is precisely the situation that the patent proprietor has created by filing 37 auxiliary requests having diverging claim versions, among which the subject-matter of the present auxiliary request 1 is found. This request differs from claim 1 as maintained in that the last feature was deleted and was replaced by the data sent to a printer, which are transformed into a virtual document. However, the latter aspect was taken from the description and claimed for the first time during the appeal proceedings. Thus claim 1 of auxiliary request 1 diverges with respect to the version underlying the impugned decision. [7.4] The fact that most of the 37 auxiliary requests have been withdrawn by the [patent proprietor] during the OPs cannot alter the fact that before and during the OPs the Board and the other parties were confronted with such a “screen” of diverging and incongruent claim versions, to which the present auxiliary request belongs and that, as a consequence, a confusing and unacceptable situation had been created. [7.5] According to the established case law of the Boards of appeal, amendments filed together with the statement of grounds of appeal are, as a rule, admitted, at least when the amendments filed do not create a completely fresh case in the appeal proceedings. In T 356/08 [2.1.1] the Board has explained that the decision of the Board of appeal should in principle be taken on the basis of the disputed matter (Streitstoff) of the first instance proceedings. This does not exclude the admission of new requests but makes it dependent on the fulfilment of certain requirements. As a matter of fact, there should not be a completely “fresh case” in appeal proceedings (cf. T 1685/07 [6.4-5]). As during the OPs the diverging subject-matter of present auxiliary request 1 was placed before the subjectmatter [of the patent] as maintained in the ranking of the requests and, consequently, the prosecution of the impugned patent in a direction that diverged from the version as maintained was given priority, the present auxiliary request 1 has created a “fresh case” at a late stage of the proceedings, which [opponents 1 and 2] have rightfully criticized. [7.6] The Board is not persuaded by the argument of the patent proprietor according to which auxiliary request 1 (which was one of the auxiliary requests filed in response to the summons) had been filed as a reaction to objections that had been raised for the first time in the summons. [Opponents 1 and 2] had made the argument that a pdf file was independent of the system already during the proceedings before the OD. Therefore, this objection could not surprise the patent proprietor at all. Moreover, the patent proprietor cannot justify the late filing of amended claim 1 according to auxiliary request 1 (filed four weeks before the OPs as auxiliary request and made auxiliary request 1 only in the course of the OPs) by an allegedly unexpected situation created by the annex to the summons because, when dealing with the novelty of claim 1 as amended, the Board had adopted a position that was contrary to the position of the OD. [7.7] In this respect the Board, based on the above explanations and principles, has exercised its discretion and allowed the request of [opponents 1 and 2] not to admit auxiliary request 1 into the proceedings because it had been filed belatedly and because, as a consequence, a “fresh case” had been created during the OPs before the Board. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1969/07 – Contact Problems
K’s Law – The ebook
T 1969/07 – Contact Problems 4 Feb 2013
In this examination appeal case, on July 16, 2012, the Board summoned the applicant to oral proceedings to be held on October 2, 2012. One day before the OPs the representative requested postponement because she had not been able to contact her Canadian client. The Board refused this request [11] [… T]he Board could not allow the appellant’s request for postponement of the oral proceedings. Not being able to contact the client is not one of the substantive reasons justifying a postponement as mentioned in the Notice of VP3 concerning OPs (OJ EPO 2007, Special edition No. 3, 115) Moreover, the Board considers that it should be possible to establish contact with a client in a period of two and a half months in today’s world of modern communication. At least due diligence would require this. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 679/09 – Unintended Consequences
K’s Law – The ebook
T 679/09 – Unintended Consequences 2 Feb 2013
Article 12(4) RPBA strikes again: [7] Claim 1 of auxiliary request I is, although not literally, identical with claim 1 of auxiliary request III, submitted to the opposition division (OD) on 8 October 2008, in all its technical features and hence its scope. According to the minutes of the oral proceedings (OPs), the patentee (appellant) withdrew auxiliary request III at the OPs before the OD. [8] In its grounds of appeal, the appellant heavily contested that it had withdrawn auxiliary requests I to IV during opposition proceedings. It stated that “[T]he representative never withdrew previous ARs I to VI (sic) at this point (or at any other point) in the OPs. The Minutes themselves prove how the OD unilaterally deemed AR1 - AR4 filed at the start of OPs to be withdrawn, without considering or deciding on the issue of prima facie admissibility of those claim requests.” [9] From the minutes of the OPs it can be seen that the appellant filed a new main request and new auxiliary requests I to IV at the beginning of the proceedings. In the course of these proceedings it replaced the main request filed at the beginning by a further main request, and it replaced auxiliary request I twice by amended auxiliary requests I. According to point 19 of the minutes, the patentee itself withdrew auxiliary requests I to IV when submitting the last version of auxiliary request I. A statement to the same effect is also contained in item 6 of the section «Facts and Submissions» of the decision issued by the OD. [10] The board notes that the patentee, at the end of the OPs, after the OD had considered the main request and auxiliary request I then on file and had decided to revoke the patent and to close the proceedings, did not protest that the OD had not decided on the admissibility of auxiliary requests I to IV filed at the beginning of the OPs. The board also notes that the patentee never requested a correction of the minutes. [11] On the basis of the available evidence, the board therefore can only conclude that auxiliary request III was indeed withdrawn during opposition proceedings. [12] According to Article 12(4) RPBA, the board has the power to hold inadmissible requests which could have been presented in the first instance proceedings. This includes requests which were filed but then withdrawn or abandoned. One criterion for exercising its discretion is to consider whether the withdrawal of a request has prevented the department of first instance from giving a reasoned decision on the critical issues, thereby compelling the board of appeal either to give a first ruling on those issues or to remit the case to the department of first instance (cf. T 495/10 [2.1.2]). Withdrawal of auxiliary requests I to IV in opposition proceedings had exactly this effect. While the appellant may not have intended to avoid a decision of the OD on the admissibility of inter alia auxiliary request III, this was the inevitable result of its withdrawal (cf. T 495/10 [2.1.7]). [13] For these reasons, the board, exercising its discretion under Article 12(4) RPBA, decided not to admit auxiliary request I into the proceedings. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1705/11 – Not Neutral
K’s Law – The ebook
T 1705/11 – Not Neutral 1 Feb 2013
Both the patent proprietor and the opponent filed an appeal after the Opposition Division (OD) had maintained the patent – which was based on a divisional application – in amended form. The patent proprietor later withdrew its appeal. Claim 1 on file was directed at a stable enzyme composition comprising a thermostable nucleic acid polymerase enzyme in a buffer comprising one or more non-ionic polymeric detergents. When dealing with novelty of the claimed subject-matter, the Board had to decide on document N2. The opponent had filed a declaration (N28) by the CEO of the company having issued N2 according to which N2 had been disclosed at a Conference in 1987. The patent proprietor had objected to this declaration in the following terms:
The Board endorsed this argument: [16] Document N2 is a product information data sheet of Molecular Biology Resources, Inc. (MBR) which discloses the thermostable DNA polymerase of Thermus aquaticus (Taq polymerase) in a storage buffer containing a non-ionic polymeric detergent (Tween 20). The [opponent] argues that document N2 was distributed on 8 June 1987 at the Conference of the American Society of Biological Chemists (ASBC). In the decision under appeal, the OD considered the following three questions, namely i) had N2 been made available at the meeting by distribution?, ii) was there a prior use?, and iii) was it, if document N2 was indeed available, a non-prejudicial disclosure in the sense of A 55(1)(a)? […]. After a thorough consideration, the OD decided all three questions in the patentee’s favour and it was concluded that document N2 did not belong to the state of the art […]. [17] In its grounds of appeal, the [opponent] filed document N28, a declaration of the President and CEO of MBR, Dr Peter J. Smyczek, in which he stated that document N2 was distributed and made available to everyone freely at the ASBC Conference held on 7-11 June 1987. In the communication under Article 15(1) RPBA, the board referred to the criteria established by the Boards of Appeal for assessing oral and public disclosures (cf. “Case Law of the Boards of Appeal of the EPO”, 6 th edition 2010, I.C.1.8, page 69, in particular I.C.1.8.3, page 73) and questioned whether these criteria were fulfilled by document N28. No further comments in this respect 707 | 3398
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were made by the [opponent] in its reply to this communication and at the oral proceedings (OPs) before the board. Instead, the [opponent] referred to its written submissions. Without entering into thorough considerations about the admissibility of document N28 into the appeal proceedings, suffice it to say that the deficiencies outlined in the board’s communication have not been overcome. In particular, as pointed out by the [patent proprietor], the president of MBR cannot be seen as a neutral attendee of that Conference. Moreover, there is no evidence on file showing that the president of MBR actually attended the Conference and supervised the actual distribution of the data sheet or, as mentioned in the decision under appeal, who were the actual recipients of this data sheet. In view of these factors, document N28 is considered not to be of further relevance. As stated in the communication under Article 15(1) RPBA, there is no reason to deviate from the findings of the OD as regards the public availability and the disclosure of document N2. The Board found claim 1 to be novel. When discussing inventive step, the Board had to decide on the admissibility of documents N33 and N39. N33 was background art for the parent application and N 39 was an MSc thesis: [21] Document N33 was filed with [opponent’s] Grounds of appeal and identified therein as a “new” document […]. This document was mentioned as general background prior art with reference to the earlier parent patent in the Notice of opposition, where no particular passage thereof was referred to and where it was not elaborated that it was of relevance in the formulation of the problem-solution approach […]. The document was also cited in the context of a hypothetical claim directed to a PCR kit composition […]. Document N33 was not physically filed nor incorporated in the list of documents presented as evidence for the opposition. The document was neither cited in the communication of the OD attached to the summons to OPs nor in the Minutes of these OPs or in the decision under appeal. [22] The [opponent] justified the late filing of document N33 in its statement of the Grounds of appeal by arguing that its relevance became only evident after the filing of an Auxiliary Request with the purpose-related feature. However, […] a narrow interpretation of the DNA polymerase activity was already an issue at the beginning of the opposition proceedings. Already at that point in time, the [opponent] was free to formulate a problem-solution approach based on document N33 and, this was certainly true, after the filing of the Auxiliary Request containing the purpose-related feature, one month before the OPs at first instance. Document N33 was known to both parties as can be seen from its citation in the [opponent’s] Notice of opposition and from the references in the patent-in-suit […]. [23] In the light of these considerations, the board takes the view that document N33 could have been filed in the first instance proceedings. To admit it now into the appeal proceedings, would amount to the opening of a fresh case which is contrary to the purpose of appeal proceedings (cf. “Case Law”, supra, VII.E.1, page 821). It is also to be noted that the patent-in-suit is a divisional application of an earlier patent application which, upon grant, was opposed and the decision of the OD subsequently appealed. This appeal led to a decision by this board in a different composition (cf. decision T 1080/01 cited in [opponent’s] Notice of opposition). Thus, the patent resulting from the parent application underwent a full examination by both the first and appeal instances of the EPO. Therefore, the board in exercising its discretion pursuant to Article 12(4) RPBA decides not to admit document N33 into the appeal proceedings. [24] Document N39 was filed by the [opponent] in reply to the board’s communication under Article 15(1) RPBA and thus, it represents an amendment to the [opponent’s] case in the sense of Article 13(1) RPBA. The document was cited in the [opponent’s] Notice of opposition by quoting expressis verbis the decision of the OD on inventive step of the earlier parent patent […]. Document N39 was not physically filed nor incorporated in the list of documents presented as evidence for the opposition. Apart from this reference, the [opponent’s] attack under A 56 in the Notice of opposition was essentially based on document N1 as closest prior art document […]. In harmony with this approach, the patentee’s reply on 26 June 2009, although mentioning document N39, referred to and dealt in detail only with document N1 as the closest prior art document. Likewise, the communication of the OD attached to the summons to OPs referred only to document N1. This is also evident from the decision under appeal and in the Minutes, wherein only document N1 is cited as the closest prior art document […]. [25] The reasons given by the [opponent] for the introduction of document N39 at this stage of the appeal proceedings are basically those given for the admission of document N33 […]. In addition, document N39 was also known to the parties from the beginning of the opposition proceedings. The board decided not to admit document N33 and sees no reason not to reach the same decision as regards document N39. Thus, in exercising its discretion pursuant to Article 13(1) RPBA, the board decides not to admit document N39 into the appeal proceedings.
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[26] It is worth noting here that, according to the established case law, the procedure concerning a divisional application is completely independent from that of the parent application, the former being examined entirely separately from the latter (cf. “Case Law”, supra, IV.1.1, page 375 and IV.7.1, page 391). Facts, evidence and requests or submissions made or filed in the parent procedure are not automatically part of the divisional procedure. A general citation or a mere reference to facts and/or evidence, such as to prior art documents, filed in the parent procedure but not physically filed or incorporated into the divisional application procedure does not constitute a reservoir upon which a party may draw at its convenience and at any time in the divisional application procedure. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 7/12 – Defend Yourself
K’s Law – The ebook
T 7/12 – Defend Yourself 31 Jan 2013
In this case the patent proprietor filed an appeal against the revocation of its patent. It complained that the Opposition Division (OD) had not admitted certain auxiliary requests filed during the oral proceedings (OPs). The patent proprietor requested the appeal fee to be reimbursed; it explained that the two auxiliary requests filed at the OPs before had been filed in reaction to the main request surprisingly being considered to contravene A 123(2). It had been expected that the OD, after its deliberation concerning said auxiliary requests, at least would have asked the patent proprietor whether or not it would like to make further comments but this was not the case. In case the OD had done so, the patent proprietor would have deleted the second independent process claim comprised in these auxiliary requests. It was its intention to explain to the OD the reasons for filing two independent claims, but the OD did not give the patent proprietor a chance to do so. In response to the Board’s remark that no correction of the minutes had been requested, the patent proprietor made the following statement:
The Board decided to remit the case to the OD for further processing but refused the reimbursement of the appeal fee: [5] The [patent proprietor’s] request for reimbursement of the appeal fee is considered not to be equitable for the following reasons (see also Case Law, 6th edition 2010, section VII.E.17.3.2): [5.1] The [patent proprietor] does not argue that the minutes or the decision do not reflect what actually was the course of events at the OPs. To the contrary, on the remark of the Board in its preliminary opinion that it had not requested correction of the minutes, it stated expressly that it did not need to as the minutes correctly reflected what happened.
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From these reactions the Board can establish that the admissibility of the two auxiliary requests, filed at the OPs, was at that point challenged by the [opponent] […] on the basis of their late filing as well as for their compliance with R 80 (the decision mentions erroneously A 80). The minutes do not mention any arguments by the [patent proprietor] on this point, only its explanation of what was the content of the requests, after which follows the statement of the [opponent] that it considered their filing late. After that the minutes state that the proceedings were adjourned for deliberation and resulted in the OD’s statement after the reopening of the proceedings that the requests were not admitted for their (i) lateness, (ii) not being occasioned by a ground of opposition (R 80) and (iii) not fulfilling A 84. [5.2] The above leads the Board to the conclusion that the [patent proprietor] did have the opportunity to react to the question of admissibility of these requests, but did not use it. This is confirmed by the statement of the [patent proprietor] that it had expected the OD, after its deliberation, to ask the [patent proprietor] to explain the claim structure, in particular the necessity to file an extra independent claim. It was under the impression that the deliberation served only the purpose of allowing the OD and the other party to study the claims […]. It was then surprised that the deliberation resulted immediately in the requests not being admitted. [5.3] However, if the [opponent] raises in the discussion the issue of admissibility of requests filed at the OPs, more in particular the issue whether they are related to grounds of opposition (R 80), it is up to the [patent proprietor] to bring forward its arguments in favour of admissibility, including reasons why they do comply with Rule 80 EPC. It cannot expect the OD, which has to stay neutral in such inter partes proceedings, to prompt the [patent proprietor] to make further submissions or to ask – as the [patent proprietor] stated – for further explanations. The OD was therefore not at fault in deciding to deliberate on the admissibility of these requests and pronouncing its conclusion after the deliberation. [5.4] Moreover, if there is a doubt or a certain expectation on what will be the subject of a deliberation, it is up to the parties to verify this before the OPs are interrupted for deliberation. It can be expected of the parties to actively participate, in particular at the OPs, and to actively safeguard their interests. In this respect the Board concurs with R 17/11 [19] in which the Enlarged Board of Appeal made it clear that in appeal proceedings it is upon a party to make sure that the points it wishes to raise are actually raised in the proceedings. If it considers something is going to be overlooked, it should raise the issue, if necessary with a formal request, which should then be minuted. The present Board considers these principles to apply also in proceedings before an OD. [5.5] In that sense, the [patent proprietor] had the opportunity to raise the necessary points before the OD interrupted the proceedings for deliberation. Contrary to its statement that it did not “have the slightest chance to explain to the OD the motivation to file two independent claims of its own accord”, it did have that chance, but did not use it. The Board therefore cannot find fault in the manner in which the OD handled the issue of admissibility of the requests in question; the right to be heard has been observed (A 113(1)). [5.6] In the notice of appeal the [patent proprietor] simply requests “reimbursement of the appeal fee” but does not give any reasoning in support. In the statement of grounds the request is not repeated, nor is a substantiation of that request to be found expressis verbis. However, in point 3.a) of the latter it is argued against the manner in which the discussion was held at the OPs and against the reasoning in the impugned decision that the requests were not occasioned by grounds of opposition. If this is to be considered the substantiation of the request for reimbursement of the appeal fee, in the sense that the [patent proprietor] was not able to react to such reasoning, the Board establishes the following: [5.7] The decision states with respect to the two auxiliary requests in question that they were late filed and were not based on granted claims. Further, the auxiliary requests introduced a new independent claim in the same category (emphasis added by the Board). The [patent proprietor] is partly right in that where it concerns claim 1 of these requests, they could not be filed earlier, as the OD had given a positive opinion on the main request, which it only changed as late as at the OPs. The amendment of claim 1, by reintroducing the passage deleted in examination, therefore was clearly occasioned by the ground of opposition of A 100(c), raised by the [opponent] and was – as such – not late filed. 711 | 3398
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[5.8] However, the requests with this claim 1 also comprised a further independent claim (5, respectively 3) resulting from only the features of claim 9 of the patent as granted, which was dependent on claim 1, but without taking up the features of claim 1 itself. The conclusion of the OD that this concerned a new independent claim was therefore not without merit. The case law on introduction of new independent claims in opposition and its compliance with R 80 is quite clear in that this is not necessarily seen as occasioned by grounds of opposition (see Case Law of the Boards of Appeal of the European Patent Office , 6th edition 2010, section VII.D.4.1.3 b)). The non-admittance of the auxiliary requests on this basis is therefore also defendable. [5.9] As the [patent proprietor] has not furnished any arguments regarding the admissibility of these requests, let alone on the question of R 80, introduced by the [opponent] in the OPs (see above), the impugned decision could be based on merely establishing that fact, without infringing the [patent proprietor’s] right to be heard. [5.10] In view of the above, the Board concludes that a reimbursement of the appeal fee would not be equitable, the request for reimbursement is therefore refused. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1888/09 – Unity
K’s Law – The ebook
T 1888/09 – Unity 30 Jan 2013
Now that the Boards of appeal are not competent for the review of invitations to pay additional search fees under the PCT (Rule 40.2 PCT; old-timers will remember the “W” decisions) any more, unity of invention has become a relatively rare issue in Board decisions. In the present case the application under consideration had been refused for lack of inventive step and unity of invention. The independent claims on file before the Board read: 1. A method of optical imaging of oesophageal cancer and Barrett’s oesophagus of an animate subject involving administering an optical imaging contrast agent to the subject and generating an optical image of at least a part of said subject to which said contrast agent has distributed; wherein said contrast agent has a molecular weight below 14,000 Daltons and an affinity for an abnormally expressed biological target associated with oesophageal cancer or Barrett’s oesophagus, said biological target being selected from: E-cadherin, CD44, P62/cmyc (HGF receptor), p53 and EGFR/erB-2. 7. Use of the contrast agent as defined in any one of claims 1 to 4 in the manufacture of a diagnostic agent for use in a method of diagnosis of oesophageal cancer and Barrett’s oesophagus involving administration of said diagnostic agent to an animate subject and generation of an image of at least part of said subject. 8. The contrast agent as defined in any one of claims 1 to 4 for use in a method of diagnosis of oesophageal cancer and Barrett’s oesophagus. The Board examined whether there was unity of invention: [2.1] When deciding on unity of invention, it is mandatory under A 82 to determine whether or not the inventions or groups of inventions as claimed form a single general inventive concept. According to R 44, the requirement of unity of invention under A 82 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features, i.e. features which define a contribution which each of the claimed inventions considered as a whole makes over the prior art. According to the established jurisprudence of the boards of appeal (see e.g. W 11/89 [4.1]), the assessment of unity of invention requires as a precondition an analysis of the technical problem or problems underlying the respective group(s) of invention(s) based on the disclosure of the application as originally filed. As a next step, it has to be determined whether or not the solution to this problem makes a contribution over the prior art. [2.2] In the present case, the problem underlying the present invention may be defined as the provision of contrast agents for optical imaging of oesophageal cancer or Barrett’s oesophagus in patients […]. This problem was solved by the subject-matter according to present claim 8 comprising five groups of contrast agents, characterised by their affinity to either E-cadherin, CD44, P62/c-myc, p53 or EGFR/erB-2. These five groups of contrasts are a priori linked by (a) a molecular weight of < 14,000 Daltons and (b) by the common effect of having affinity for an abnormally expressed biological target associated with oesophageal cancer or Barrett’s oesophagus. It is therefore possible to formulate a common concept, which can be defined as follows: provision of a contrast agent for optically imaging of oesophageal cancer or Barrett’s oesophagus, wherein said contrast agent has a molecular weight below 14,000 Daltons and an affinity for an abnormally expressed biological target associated with oesophageal cancer or Barrett’s oesophagus. In the absence of any prior art, the thus defined common concept also constitutes a priori a single general inventive concept as required by a 82. [2.3] The objection of the examining division was, however, directed to lack of unity a posteriori, taking into account the teaching of document D2. Document D2 discloses optical imaging agents comprising a fluorescent dye conjugated to a short-chain peptide having affinity to somatostatin receptors, VIP receptors or neurotensin receptors, all of which are abnormally 713 | 3398
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expressed in tumoral cells. Said compounds are particularly suitable for the diagnosis or hollow organs including the oesophagus […]. Compared to antibodies the short-chain peptides carrying the fluorescent dye are characterised by advantageous properties such as reduced blood half-live and less allergenic side effects […]. It follows therefrom that the common concept defined in paragraph [2.2] above is not novel in the light of document D2. In this context, it is noted that document D2 does not explicitly mention contrast agents with a molecular mass of below 14,000 Daltons. However, a molecular mass of below 14,000 Daltons is implicitly disclosed therein, as the fluorescent dye is covalently bonded to short-chain peptides […], so that the molecular mass of the resulting product is automatically below 14,000 Daltons. In view of the fact that the abovementioned common concept is not novel and that it is not possible to formulate an alternative common concept for the invention claimed in claim 8, there is lack of unity of invention. Alternatively, making reference to R 44, it can be reasoned that in the light of the teaching of document D2, claim 8 does not contain any special technical features, either of the same or the corresponding type, which could make a contribution over the prior art. The requirements of A 82 are therefore not met. [2.4] The above reasoning applies mutatis mutandis to the further independent claims, which concern a method claim (claim 1) and a Swiss-type claim (claim 7) involving the same contrast agents. Further arguments of the appellant [2.5] Regarding the argument that there was no teaching in document D2 that the somatostatin receptors, VIP receptors or neurotensin receptors were involved in oesophageal cancer, reference is again made to page 3, lines 1-28, according to which these receptors are overexpressed in tumour cells and tumour tissue which can be used for diagnosing hollow organs such as the oesophagus. This means that diagnosis of tumours which are located in the oesophagus constitutes a preferred embodiment of the more general teaching, according to which the receptors mentioned above are used for diagnosing tumours in hollow organs. The fact that document D2 does not contain a specific example describing the diagnosis of the oesophagus is of no consequence, as the description […] contains numerous fluorescent dyes and short-chain peptides which […] are suitable for diagnosing hollow organs including the oesophagus. As a consequence, this argument cannot succeed. [2.6] In view of this finding, the evaluation of inventive step is not necessary. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 209/10 – Singling Out
K’s Law – The ebook
T 209/10 – Singling Out 29 Jan 2013
This is an appeal against the revocation of the opposed patent. Claim 1 as granted, which was identical to claim 1 of the sole request before the Board, read: 1. The use of raloxifene, or a pharmaceutically acceptable salt thereof, in the manufacture of a medicament for preventing or treating postmenopausal osteoporosis in a postmenopausal woman wherein said medicament is in the form of a tablet or capsule. The Board had to examine whether this claim contravened A 100(c): [2.1] Claim 1 of the main request is identical to claim 1 as granted. The assessment of the ground of opposition under A 100(c) is within the framework of the present appeal. In particular, the decision of the opposition division has to be reviewed also in relation to A 100(c), and [opponent 1] already submitted arguments pursuant to A 100(c) with its response to the grounds of appeal […]. [2.2] The patent in suit derives from European patent application 04101615.5, which was filed as a divisional application of European patent application 97200262.0 (parent application), published as EP-A-0781555. The parent application was filed as a divisional application of European patent application 93305860.4 (root application), published as EP-A-0594952. The documents concerning the description and examples as originally filed are identical for the three applications: root (GA), parent (PA) and its divisional (OA) (i.e. the application 715 | 3398
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from which the patent in suit derives). However, the claims as originally filed in the root application (GA) are different from the claims as originally filed in the parent (which are the same as in its divisional application). It is an undisputable fact that the set of claims of the application as originally filed (OA) does not contain any claim or combination of claims which corresponds to the use in claim 1 of the main request. As a matter of fact claims 1 to 8 of the application as originally filed (OA) related to a pharmaceutical unit dosage form comprising an amount of from 50 to 200 mg of a compound of formula I (generic compound class defined by means of a Markush formula). Moreover, none of the claims of the application as originally filed (OA) specified any medical indication. Thus, the claims of the application as originally filed do not provide any allowable basis under A 123(2) for claim 1 as granted. Therefore, it has to be investigated whether the description and examples of the application as filed provide a basis for the subject-matter claimed in claim 1 of the main request. Such an investigation corresponds identically to the investigation of the basis in the root (GA) and parent (PA) applications, in view of the identical text of the description and examples. [2.3] Claim 1 of the main request is a medical use claim in the Swiss-type form, which relates to the use of a single drug, namely raloxifene, which may also be in the form of a pharmaceutically acceptable salt. The particular use to which the drug has to be functionally linked concerns the specific medical indication of the prevention or treatment of postmenopausal osteoporosis, and the particular subgroup of patients is identified as “a postmenopausal woman”. As regards the form in which the medicament is to be administered, it is specified as a tablet or capsule. A body of jurisprudence of the technical boards of appeal identifies the technical elements which have been specified in claim 1 (e.g. identity of the drug, form of the medicament and/or mode of administration, medical indication concerning a disease or ailment, group of patients) as technical features which may confer novelty and/or inventive step on the subject-matter of a medical use claim in the Swiss-type form. Therefore, it has to be assessed whether the application as originally filed singles out the “invention” specified in claim 1, and whether the claim includes technical information not directly and unambiguously derivable from the application documents as originally filed. [2.4] The application as originally filed discloses a group of 2-phenyl-3-aroylbenzothiophenes in the prevention of bone loss […]. However, the prevention of bone loss is not a synonym for the prevention of postmenopausal osteoporosis in a postmenopausal woman. As stated on page 1, lines 7-11 of the application as originally filed: “The mechanism of bone loss is not well understood, but in practical effect, the disorder arises from an imbalance in the formation of new healthy bone and the resorption of old bone, skewed toward a net loss of bone tissue”. Claim 1 of the main request does not explicitly reflect the technical effect of “prevention of bone loss”. Moreover, as stated in […] the application as originally filed, “Unchecked, bone loss can lead to osteoporosis, a major debilitating disease whose prominent feature is the loss of bone mass (decreased density and enlargement of bone spaces) without reduction in bone volume, producing porosity and fragility” (emphasis added). In other words, bone loss is not the only feature of osteoporosis, and thus the prevention of bone loss does not equate to the prevention of osteoporosis. Further, [… in] the application as originally filed it is stated that: “The inhibition of bone loss contemplated by the present method includes both medical therapeutic and/or prophylactic treatment” (emphasis added). Therefore, this passage does not disclose the preventive treatment of postmenopausal osteoporosis in a postmenopausal woman (which may inter alia address secondary prevention of osteoporosis in an earlier stage of post-menopause, as well as tertiary prevention in a post-menopausal woman already suffering from advanced post-menopausal osteoporosis); it simply discloses the prophylactic treatment which is exclusively linked to the technical effect (not mentioned in claim 1) of inhibition of bone loss. This understanding […] is in line with the following passage […] of the application as originally filed: “Thus, the current invention provides a method of inhibiting bone loss comprising administering to a human in need of treatment an amount of a compound of formula I that inhibits bone loss but does not significantly affect the primary sex target tissues” (emphasis added). Moreover, […] “A significant feature of post-menopausal osteoporosis is the large and rapid loss of bone mass due to the cessation of estrogen production by the ovaries” (emphasis added). On the one hand there is a specific form of bone loss encountered in post-menopausal osteoporosis, which is not shared by each patient suffering from bone loss, and on the other hand bone loss is not the only feature of post-menopausal osteoporosis.
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[2.5] Therefore, the application as originally filed discloses the technical effect of prevention of bone loss, which is not identical to the prevention of post-menopausal osteoporosis in a post-menopausal woman, as can be inferred from the following passage: “The benzothiophenes of formula I are able to antagonize classical estrogenic responses in primary sex target tissues without significantly reducing bone density when given to intact or estrogen treated animals, and they prevent bone loss in estrogen deficient animals. This dichotomy indicates selective agonist/antagonist actions on specific target cells which would appear to be highly desirable in treatment of menopausal syndrome” […] (emphasis added). [2.6] In view of the analysis above, the application as originally filed does not specifically disclose the prevention of post-menopausal osteoporosis in a postmenopausal woman. [2.7] Additionally, if taken in general terms, “Bone loss occurs in a wide range of subjects, including postmenopausal women, patients who have undergone hysterectomy, patients who are undergoing or have undergone long-term administration of corticosteroids, patients suffering from Cushing’s syndrome, and patients having gonadal dysgensis” […] (emphasis added). Therefore, post-menopausal women are selected from a list of several possible options for the patients to be treated. Even considering that raloxifene is disclosed as the most preferred compound of formula I […], apart from the selection and individualisation of the disease to be treated and the subgroup of patients, a further selection has also taken place in claim 1 of the main request, namely that concerning the form of the medicament as a tablet or capsule. The application as originally filed discloses that the compounds of formula I can be formulated with common excipients, diluents or carriers, “and formed into tablets, capsules, suspensions, powders and the like” […]. “The compounds can also be formulated as elixirs or solutions for convenient oral administration or as solutions appropriate for parenteral administration, for instance by intramuscular, subcutaneous or intravenous routes” […]. Further, […] it is stated: “The particular dosage of a compound of formula I required to treat or inhibit bone loss according to this invention will depend upon the severity of the disease, its route of administration, and related factors that will be decided by the attending physician”. The application as originally filed does not single out tablets and capsules in connection with the prevention and treatment of post-menopausal osteoporosis in a postmenopausal woman. [… I]t is stated that “It is also advantageous to administer such a compound by the oral route to an aging human (e.g. a post-menopausal female or a male showing evidence of bone loss by X-ray analysis)” (emphasis added). First of all, the oral route does not equate with the selection of tablets and capsules since other forms such as solutions and suspensions may also be possible. Moreover, the patient is identified as an aging human and there is no preference for post-menopausal women to be linked to a particular dosage form. The previously cited passage […] of the application as originally filed ends with the following statement […]: “For such purposes the following oral dosage forms are available”. This is followed by a new section with the title “Formulations”, in which several specific examples are disclosed with the proviso that “in the formulations which follow, “Active ingredient” means a compound of formula I” […]. Formulations 2, 3 4 and 5 relate to specific “Raloxifene capsules” in which the raloxifene is in the form of raloxifene hydrochloride. The tablets of formulations 6 and 7 relate to “an active ingredient”, and table 1 on pages 21-22 lists raloxifene as free base and as hydrochloride salt (compounds 20 and 21). The capsules and tablets exemplified are not representative of any possible tablet or capsule containing raloxifene or a pharmaceutically acceptable salt thereof, but illustrate particular tablets and capsules. Additionally, suspensions are also exemplified […]. In the ovarectomized rat model for post-menopausal osteoporosis illustrated in example 1 of the application as originally filed, the rats are treated with raloxifene, administered as the hydrochloride […]. Even if in example 3 of the application as originally filed it is stated […] that raloxifene was administered orally to the ovarectomized rats, there is no basis in examples 1 or 3 for the choice of the form of the medicament as tablet or capsule. As regards example 5, raloxifene was administered as the hydrochloride […] to a particular subgroup of post-menopausal women, namely those aged 45-60, receiving oral capsule formulations […]. Summarising, the examples concerning formulations illustrate specific formulations where the drug is present as hydrochloride salt, or as free base, but do not allow a generalisation to any tablet or any capsule. As regards the examples which concern the animal model for the treatment of post-menopausal osteoporosis, they do not provide any basis for the choice of tablets and capsules as the preferred form of the medicament. Finally, example 5 exclusively concerns the administration of the hydrochloride salt in the form of capsules. [2.8] Therefore, claim 1 includes technical information which is not directly and unambiguously derivable from the application as originally filed and singles out subject-matter which was not disclosed in an individualised manner in the application as originally filed (this analysis applies mutatis mutandis to the PA and the GA).
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Consequently, the main request fails on grounds pursuant to A 100(c) since claim 1 extends beyond the content of the application as originally filed and the parent and root applications as originally filed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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R 13/12 – For The Trained Only
K’s Law – The ebook
R 13/12 – For The Trained Only 28 Jan 2013
This petition for review was filed after Board 3.2.08 had dismissed the appeal of the patent proprietor whose patent had been revoked by the Opposition Division (OD) (decision T 36/10). The petitioner argued that the Board had come to its conclusion that claim 1 lacked novelty over D1 without considering or discussing the key arguments presented by the petitioner on how the skilled person would interpret a certain alloy in document D1. The Enlarged Board (EBA) found the petition to be admissible and then discussed its allowability: [2.1] The petitioner made it quite clear during the oral proceedings that the core of the petition was not that it had not had sufficient opportunity to present its case – indeed it had done so at length. The crucial point was that the decision did not consider and discuss the key arguments it had presented. More precisely it could not find in the decision anything that reflected its arguments regarding the non ambiguous disclosure in D1 of the three features and the argument of the self-contradiction contained in the opponent’s argumentation. The Board just said that D1 disclosed the different components. [2.2] It is undisputed that the right to be heard is not a purely formal right to speak, which would be a travesty of this right, but implies an obligation for the boards of appeal to consider the parties’ argumentation. As a matter of fact this obligation is shaped by the circumstances of each case. This means that the boards have an obligation to discuss in their decisions issues and arguments to the extent that they are relevant for the decision and may disregard irrelevant arguments. In this respect the Boards are not obliged to use specific words or the same wording as that used by the parties and it must be accepted that refutation of arguments may be implicitly inferred from the particular reasoning held by the boards (see R 21/10 [2.4]). [2.3] In the case in suit, the EBA although having no jurisdiction “ratione legis” nor “ratione materiae” to review the substantive assessments, is satisfied that the decision under review considered the petitioner’s arguments: it summarised the particular key argument submitted by the petitioner in paragraph V and, although not literally, mentioned it again in paragraph 2.2 of the reasons. The decision consists, as very often, of two steps. In paragraph 2.1 the Board explained how, in its view, D1 disclosed all the features of the claimed invention. Then in paragraph 2.3 the Board turned to the petitioner’s argumentation and explained why this argumentation had to be refuted. [2.4] It is true that to refute the petitioner’s arguments the Board adopted an approach to D1 that was broader than that suggested by the petitioner, in the sense that the Board did not stick to the specific example and relied on a more general teaching of D1. But this had been the core of the discussion, even before the OD, and the petitioner did not contend that it came as a surprise. The EBA does not see here more than an analysis of a document of the prior art made by the Board which is at variance with the interpretation proposed by the petitioner, this analysis rejecting explicitly this interpretation. Indeed, the fact that the Board did not literally reproduce the specific words commonly used regarding the novelty assessment such as “unambiguous disclosure”, or did not explicitly say that there was no contradiction in the opponent’s argumentation as argued by the petitioner does not mean that the Board did not consider the petitioner’s argumentation. A decision of the Boards of Appeal is meant to be read by trained people capable of understanding a reasoning in its substance even if this reasoning does not reproduce literally the words used in the parties’ submissions. This is sufficient to satisfy the right to have its relevant arguments heard in the sense of “considered” (see R 1/08 [2.2, last paragraph and 3.1] about the limit of the EBA’s competence when the complaint overlaps the substantive assessment of inventiveness). [2.5] Investigating further would involve assessing whether the Board had correctly understood the argumentation and, above all, given the correct answer. The EBA has often stated that the fact that the petitioner does not share the view of the Board of Appeal and does not accept the outcome of the decision is a matter for a 719 | 3398
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review of the merits of the decision (a means of redress which does not exist in the EPC, the decisions of the Boards of Appeal being res judicata). Such a request, therefore, obviously, falls outside the ambit of the petition for review as intended by the legislator (see as example R 4/11). In this respect the EBA has to remain vigilant and thwart any attempt to blur the frontier between what may clearly be a matter for a violation of the right to be heard under Article 113 and 112a(2)(c), (for instance an evident failure to consider an important factual submission), and anything else presented as a violation of the right to be heard but which actually pertains to the substantive merits of the decision by the Boards of Appeal. Under no circumstances could an alleged violation of the right to be heard supply the parties with a means to put the EBA in a position where it is expected to check whether a board of appeal understood an argument correctly or drew the right conclusion from it. In this respect R 6/11 remains an accurate reference, because at least the alleged defects (c) and also (d) overlap the violation of the right to be heard as intended by the petitioner in the present case: under the heading of a violation of the right to be heard and other defect, the petitioner then was also challenging the very reasons of the decision, arguing that the Board of Appeal did not explain, or not enough, or not in a logical sequence, why the petitioner’s arguments were not accepted. In the case in suit, as in R 6/11, the EBA is being expected to check the accuracy of the reasons given with respect to the petitioner’s arguments. (see R 6/11 [IX, 6] dealing with the alleged violation (c) according to which the Board did not explain why it took a different view than the one submitted by the petitioner and also agreed by the adversary party) . […] The petition for review is rejected as clearly unallowable. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2128/09 – Only The Brave
K’s Law – The ebook
T 2128/09 – Only The Brave 26 Jan 2013
This is another examination appeal. Claim 1 of the main request before the Board read: 1. An in vitro process for an identification of inhibitors acting only on protein kinase C-related kinases (PRKs) selected from the group consisting of PRK1, PRK2 and PKNβ, said inhibitors allowing to selectively block the activity of the Androgen Receptor (AR) wherein said process comprises the steps of
selecting an inhibitor to be tested for its protein kinase C-related kinase inhibitor capacity; providing at least two reactions involving at least one of said PRKs and at least the AR acted upon by at least one of said PRKs under physiological conditions, wherein said two reactions comprise the ligand-dependent activation of the AR by RhoA V14; adding distinguishable effective amounts of said inhibitor to be tested to said at least two reactions so as to obtain an inhibitor effect of said inhibitor on said PRKs; and measuring said measurable effect in dependency upon the distinguishable effective amounts of said inhibitor to be tested so as to ascertain an inhibitory effect of said inhibitor on said PRKs in said reaction. (my emphasis)
The Board found this invention to be insufficiently disclosed: [1] The Board, exercising its power to examine whether a requirement of the EPC that the examining division regarded as having been met in the examination proceedings (see decision G 10/93), has examined whether the requirements of A 83 are complied with. [2] Claim 1 refers to an in vitro process for identifying inhibitors acting only on PRKs selected from the group consisting of PRK1, PRK2 and PKNβ. The claimed process consists of the following steps:
selecting a potential inhibitor, providing at least two reactions involving at least one of said PRKs and the androgen receptor (AR), wherein one reaction comprises the ligand-dependent activation of the AR by RhoA V14, adding distinguishable amounts of the potential inhibitor to the at least two reactions, and measuring an inhibitory affect of the tested, potential inhibitor.
Thus, claim 1, while containing steps that would allow the determination of whether or not a tested inhibitor indeed acts on PRKs selected from the group consisting of PRK1, PRK2 and PKNß, does not contain any step which would allow a skilled person to decide whether or not it acts on these PRKs only or also on other substances, such as other protein kinases. [3] The appellant referred to Example 2 and argued that it disclosed a process according to claim 1 for identifying inhibitors acting only on PRKs selected from the group consisting of PRK1, PRK2 and PKNβ. [4] The two substances, referred to as Ro31-8220 and HA 1077, which were tested for their inhibitory effect on PRK1 in the assay of Example 2 […], are acknowledged in the published application (see paragraph [0041] as having only a low specificity for PRKs and showing an inhibitory effect on a number of protein kinases. [5] The Board seeing that Example 2 describes the steps of the process of claim 1, cannot find any hint in the description of this example that would assist a skilled person in defining the working steps, referred to in point (2) above, that are necessary to identify inhibitors acting only on PRKs selected from the group consisting of PRK1, PRK2 and PKNβ, which working steps are not present in claim 1.
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K’s Law – The ebook
[6] Therefore, the invention according to claim 1 is not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Thus, the main request does not meet the requirements of A 83. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1866/08 – Doubts et al
K’s Law – The ebook
T 1866/08 – Doubts et al 25 Jan 2013
This decision on an examination appeal is the first decision taken in 2013 that I report on this blog. The application filed by Yahoo! Inc. concerned the problem of locating illegal copies of digital works in computer networks such as the Internet. The Examining Division (ED) had refused the application for lack of inventive step over document D1. Claim 1 before the Board read: A method for operating an intermediary computer to track data requested by a user from a source server over a network, wherein the source server is arranged to communicate with the intermediary computer via a first network communications link, and the intermediary computer is arranged to communicate with the user via a second network communications link, the method comprising the computer-implemented steps of: receiving (206), at the intermediary computer (104), the requested data from the source server (102); and supplying (212), via the second network communications link, the requested data from the intermediary computer to the user (106); characterised in that the method comprises the intermediary computer performing the steps of: determining (208) whether the requested data includes rights data that indicates an owner of rights to the requested data; and if the data includes the rights data: (a) determining whether the source is associated with the owner of rights to the data; and (b) if the source is not associated with the owner of rights to the requested data, then the intermediary computer not allowing the requested data to be supplied to the user; and (c) if the source is associated with the owner of rights to the requested data, then the intermediary computer supplying the data to the user and recording (210) that the requested data was supplied. Independent claims 17 and 20 were directed at a computer system for tracking data and a computer-readable medium carrying sequences of instructions for tacking data, respectively. The decision contains several interesting passages: A 84 EPC 1973 and claim construction […] [4] The independent claims specify that the data should “include rights data that indicates an owner of rights in the ... data”, for instance copyright […]. [4.1] The appellant argues that the term “owner of rights” is a “term of art” which the person skilled in the pertinent field of technology would understand […], thereby suggesting it to be a term of the technical arts. The appellant further argues that the skilled person would never consider this term to “in clude a person to whom a content manager has dis tri bu ted some content”. [4.2] The board disagrees. In the board’s judgment it is primarily a legal issue what the terms “right”, “copy right” and right “ownership” mean and what they possibly exclude or under what conditions. While the board concedes that they are also used by persons skilled in fields of technology, e.g. in the context of what is known as digital rights management, the board rejects the idea that this makes them terms of technical arts with a clear technical meaning. Furthermore, the board notes that rights such as copyright may be transferred - partly or as a whole, and depending on jurisdiction – so that the user requesting and receiving data cannot a priori be excluded as “an owner of rights” in the content. For instance, the board deems it typical that the user receiving the content will also receive the right to use (e.g. display) it, possibly under certain limitations, and thus at least temporarily “own” these rights.
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K’s Law – The ebook
[4.3] According to the claims it is determined whether the source server is “associated with” the rights owner without specifying how this association is expressed or how it would be determined. The board considers that the skilled person knows ways of practising this feature: In the simplest case, one could require that the source server is explicitly mentioned as the owner so as to be “associated with” it. Alternatively, some data structure such as a table could be employed to express a mapping from rights owners to source servers (or vice versa). Or, the data itself might express the association by mentioning both the rights owner and the source server. The board thus accepts this feature as clear, if broad. [4.4] Accordingly, the board construes the independent claims of the main request as follows: Data in transit from a source server to the user may or may not be flagged for delivery control at an intermediary computer – by containing rights data or not –, but if it is, data is supplied to the user if and only if the data contains a direct or indirect reference to the source server. This interpretation had been presented in the summons to oral proceedings (OPs) […] and was not challenged by the appellant. Inventive step [5] The decision under appeal starts from D1 and makes reference to passages on pages 1, 4 and 9. [5.1] On page 1, D1 introduces the problem of protecting ownership of digital data on the Internet. Within the solution proposed by D1, however, pages 4 and 9 relate to different specific situations. [… I]t is disclosed that a network client enforces the imprinting of an ID on the requested data before it is made available to the user. The network client is not disclosed as inspecting the data for imprints, let alone to prevent use of the data depending on this inspection. [… T]he description turns to methods for “reading imprinted ID information” as opposed to “methods for imprinting ID information”. In this context, “detector” devices are described […] and it is disclosed that a “proxy server” may be equipped with such a detector. This implies the inspection of data in transit through the network. [5.2] Accordingly the board agrees with the appellant, that the appropriate starting point within D1 for the analysis is the disclosure on page 9 […]: D1 discloses that a proxy server intercepts data in transit from a source to a user and determines whether data contains an imprinted ID. The board agrees with the ED that the imprinted ID expresses “an owner of rights”, at least on a broad interpretation of that term as justified above. [5.3] D1 discloses that the proxy server might detect an illegal action […] and suggests that this might be achieved by detecting an imprinted ID […]. The board agrees with the appellant that the detection of an imprinted ID does not, according to D1, imply illegal distribution of content […]. Rather, the skilled person would understand D1 as disclosing that the proxy server of D1 merely checks for likely illegal actions. [5.4] Moreover, D1 does not disclose the proxy server as interrupting the transmission by not supplying the data to the user. Rather, the skilled person would assume from D1 that the proxy server passes on the data as usual even if an imprinted ID was detected. In the board’s judgment this is implied by the fact that the proxy server, on the one hand, does not prove a copy to be illegal and, on the other hand, should not block a legal da ta transmission. Starting from D1 and trying to improve the capability of the system to trace illegal co pies, the board considers it obvious to impose the stricter rule that any data with an imprinted ID should be deemed illegal anywhere on the network outside the user device associated with the ID. Data with an imprinted ID detected at the proxy server would thus be illegal by definition. In this case, blocking further trans mission of the illegal copy would obviously be an “appropriate measure” which D1 discloses should be taken […]. [5.5] However, the imprinted ID according to D1 does not re pre sent the source server from which data was requested, but the requesting user […]. D1 thus does not disclose that the detector, e.g. in the proxy server, makes reference to the source server when assessing legality of the intercepted transmission, let alone that it forwards intercepted data or not depending on the source server. In the board’s judgment, D1 also does not suggest taking into account the source server to improve its capability of tracing illegal copies or when taking “appropriate measures” if an illegal action is determined. [6] The decision under appeal […] determines as the difference between more general earlier claim 1 and D1 that “claim 1 determines if the source of the data is associated with the owner and a decision is taken based on that to provide or not the data”. [7] The decision goes on to state […] that this difference “merely” represents “the steps per formed by a data tracking and transmission system that implements rules about what to do with the traffic and registers th[ese] activities” and that the “task of tracking data traffic is a mere administrative task”. In passing it is argued that these rules and tasks were well-known, for example from the “activity of a librarian registering incoming and 724 | 3398
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outgoing books of the library”. The only technical features of claim 1 were merely “data trans mission and data recording” and these were known from the prior art. The remaining features did not, so the argument, solve a technical problem but an administrative one, namely to “control the distribution of un authorised data” which would belong to the non-technical “domain of the administration of property”. This difference, especially within the context of D1 which is already adapted to “[implement] rules driven by a detect ion event” […], would amount to a mere automation of this administrative task, and if its performance were improved by the automation then only to the extent that any computer automation would cause such improvement, without any further technical effect. This difference could thus not establish an inventive step. [7.1] The board takes a difference perspective on the invention. The board concedes that the claimed invention has administrative aspects but considers that these cannot be stripped from the technical context in which they occur. The claimed invention relates to the “tracking” and delivery control of “data requested by a user from a source server over a network” in view of that source server. The board fails to see how this would be analogous to, let alone known from, the activity of a librarian “registering incoming and outgoing books of the library”, or why the skilled person trying to improve the system of D1, would turn to the activities of a librarian for help. The board also considers that the claimed invention goes beyond the mere implementation of a non-technical administrative task without any effect beyond the benefits of any computer automation […]. Rather, in the board’s view, the effect of the invention over D1 is tied to a specifically technical situation, namely the request and download of data by a user over a network from a server, as is now clearly claimed. In this respect, the board agrees with the appellant in considering an automated, network-based mechanism to control and authorize the delivery of data as solving a technical problem […]. [7.2] Therefore, the board concludes that in view of the amended claims the decision under appeal has to be set aside. Moreover, since D1 does not disclose or suggest data delivery depending on the source server […], the board concludes that claim 1 is inventive over D1. Scope of the search [8] The application had been filed as a divisional application of European application no. 01991123.9, based on the description and the drawings of the latter, parent application but with a new set of claims 1-53 […]. The European search report however merely refers to claims 1-37. In fact, the European search report issued for the present application is substantially identical to the search report issued for the parent application which contained 37 claims. It would therefore seem possible that the present search relied on the results of the search in the parent application. [9] The board’s conclusion as to inventive step crucially depends on the finding that the source-sensitive automated delivery control of data across a network solves a technical problem. [9.1] The board notes that the great majority of claims of the parent application, and thus of those which appear to have been searched in the present application, lack the feature of source-sensitive delivery control. Only claims 16, 17, 36 and 37 of the parent application contain this feature. In contrast, all of claims 1-53 originally filed with the present divisional application contain it (esp. independent claims 1, 18 and 37). [9.2] The board has its doubts whether the feature of delivery control was exhaustively searched for three reasons:
Due to the fact that this feature was substantially less prominent in the claims of the parent application than in those of the present divisional application, and that the claims of the parent may have been the basis of the search for the divisional. because the preamble of all claims - both of the parent and the divisional application - by referring to “tracking data” rather than delivery control may have further detracted from the importance attached to this feature, and because the ED considered it to be of no technical relevance anyway […].
[9.3] The board has no basis for determining whether these doubts are in fact justified, in which case a further search should be carried out, or not. Therefore, the board is not in a position to order the grant of a patent based on the present main request and thus exercises its discretion under A 111(1) to remit the case for further prosecution to the ED. [9.4] In response to the board’s indication that it intended to remit the case, the appellant submitted that a further search was neither necessary nor equitable at this point of the procedure […]. However, when the board decides 725 | 3398
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to remit the case, it is a matter for the ED to determine whether or not to carry out an further search, a determination in which the board cannot interfere. The appellant’s concerns about an additional search will thus have to be directed to the ED, too. Request for OPs before the ED [10] According to the principles developed by the boards of appeal (see, for example, G 8/91 [7]; and T 34/90 [headnotes]), the appeal procedure is separate from the examination procedure. It follows that a request for OPs to be held before the ED cannot validly be made during the appeal proceedings. As a consequence, the appellant will have to file a new request for OPs after the procedure will have been resumed by the ED. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1228/08 – A Step Back
K’s Law – The ebook
T 1228/08 – A Step Back 24 Jan 2013
This is an examination appeal. Independent claims 1 and 9 before the Board read: 1. Apparatus for processing a signal comprising: a coder (203) for generating at least first and second representations of the signal, the at least first and second representations being different from each other and being deliverable at rates lower than or equal to the required delivery rate of the signal; and a controller (280, 285) for packaging at least one of the at least first and second representations into a plurality of packets (411, 413) for communication through a packetswitched network, the resulting packet-stream comprising either just packets derived from the first representation or packets derived from the first representation in combination with packets derived from at least one of the other representations depending at least in part on the connection speed associated with the connection (125) over which the packet stream is to be delivered to a given client terminal (130), each packet including at least an indicator and an information content derived from one of the at least first and second representations, the indicator identifying the representation from which the information content is derived, whereby the information content of a packet stream based on the first representation alone is such that the signal recovered therefrom affords the minimum acceptable signal quality. 9. A method for processing a signal comprising generating at least first and second representations of the signal, the at least first and second representations being different from each other and being deliverable at rates lower than or equal to the required delivery rate of the signal; and packaging (280, 285) at least one of the at least first and second representations into a plurality of packets (411, 413) for communication through a packet-switched network, the resulting packet-stream comprising either just packets derived from the first representation or packets derived from the first representation in combination with packets derived from at least one of the other representations depending at least in part on the connection speed associated with the connection (125) over which the packet stream is to be delivered to a given client terminal (130), each packet including at least an indicator and an information content derived from one of the at least first and second representations, the indicator identifying the representation from which the information content is derived, whereby the information content of a packet stream based on the first representation alone is such that the signal recovered therefrom affords the minimum acceptable signal quality. In what follows the Board deals with the question whether document D1 was the right starting point for the inventive step assessment: [3.2.1] Document D1 discloses a multicast audio tool which uses hierarchical coding. The audio signal to be transmitted is sampled with 16 bits per sample. Each sample is divided into four groups consisting of four bits each. The groups are sent as separate data streams to the destination where they are re-assembled for playback. The data source will always send all four groups but, depending on the receiver’s preferences, some of these groups may not be forwarded to the destination by the local multicast router. The more groups which are received at the destination, the higher the resolution of the re-assembled signal. One factor which is taken into account in the forwarding of groups from the multicast router to the destination is the available bandwidth. [3.2.2] The method of claim 9 is distinguished from the teaching of D1 in that the packaging of the signal for transmission is performed in dependence on the available connection speed. In D1, all data is packaged and sent irrespective of the connection speed; the local multicast router then controls the forwarding of the packets based on the connection speed but does not influence the packaging itself. Moreover, the representations which are sent in the method of claim 9 (which correspond to the “groups” in D1) are packaged together as a single data stream and are not sent as separate streams as in D1.
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[3.2.3] In the contested decision, the examining division (ED) argued that in cases in which only a single client was expected to access a single file at any one time, the skilled person would see that the multicasting properties of the system of D1 were not required and that the local multicast router would be superfluous. In such cases, it would be obvious to transfer the task of selecting which groups to forward to the client to the server itself, allowing the server to package the data to be transmitted into a single stream. The music-on-demand service described on page 1, line 31 to page 2, line 17 of the present application as filed was cited to show that it was known to send a given version of a musical piece as a single data stream. To transmit just one stream was considered by the ED to be a technological step back from the multicasting system of D1 and therefore not inventive. In other words, it would have been obvious to adapt the multicast system of D1 to provide a system in which data is directly transmitted in a single steam from the server to the destination without the intervention of a multicast router. [3.2.4] In the statement setting out the grounds of appeal, the appellant argued that if the multicasting properties of the system of D1 were not required then the system of D1 represented the wrong starting point for the assessment of inventive step. The question of how to adapt the system of D1 for use in data transmission when only one client would ever require access to the data would simply not arise because the skilled person would only consider using the system of D1 for multicasting. Thus, to suggest that D1 can be modified to dispose of the multicast router and to package the groups into a single data stream for direct transmission to the receiver was pure hindsight. [3.2.5] The Board agrees with the appellant’s position. Although D1 discloses the use of hierarchical coding, which is indeed a major aspect of the present invention, the Board considers that this document does not represent a realistic starting point for an attack on inventive step. Following T 439/92, a conscious choice of starting point not only determines the subject-matter serving as a starting point but also defines the framework for further development (see Case Law, I.D.3.5, third paragraph). Thus, using D1 as a starting point would mean that any further development would be carried out in the context of multicasting: it is unrealistic to suggest that, starting from this disclosure, the skilled person would go outside this framework – indeed take a technical step back, as observed by the ED – to develop a non-multicasting system. Furthermore, as the appellant has pointed out, the packet streams which are constructed in D1 are independent of the connection speed. All of the four-bit groups in D1 are sent individually to the multicast router which then forwards specific groups – again individually – to the receiver. This is what gives the multicast system of D1 the prerequisite flexibility: separate groups are sent in separate data streams so that at the router, individual groups may be selected for forwarding to the destination. To send a single data stream from the data source would be to lose the ability to select certain data building blocks at the router and to consequently lose the ability to adapt the data transmission to changing network conditions. In view of the fact that the whole idea in D1 is to allow maximum flexibility with regard to the data packets which are retrieved by the user, the Board is of the view that it would be counter-intuitive to provide a single stream in D1. [3.2.6] For these reasons, the Board is of the opinion that the method of claim 9, and correspondingly also the apparatus of claim 1, cannot be derived in an obvious manner when starting from the disclosure of document D1. The Board found the claims to be inventive over the prior art described in the application. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 124/09 – Let Him Speak
K’s Law – The ebook
T 124/09 – Let Him Speak 23 Jan 2013
This is an appeal against the revocation of the opposed patent. The decision contains an interesting passage on oral submissions by an accompanying person during oral proceedings (OPs): [2.1] In a letter dated 15 October 2012, the appellant’s representative, Mr Heimdal, requested permission for Mr Malmqvist, who would accompany Mr Heimdal to the OPs, to make oral submissions. [2.2] During the course of the OPs, [opponent I] requested that Mr Malmqvist should not be allowed to speak. This request was made – somewhat inappropriately – after the debate concerning the admissibility of the main request [...] had been concluded, the case for the appellant having been presented solely by Mr Malmqvist. Apart from the fact that Mr Malmqvist was not an authorised representative, no reasons were provided in support of this request. [2.3] In decision G 4/95, the Enlarged Board of Appeal decided that “During OPs under A 116 in the context of opposition or opposition appeal proceedings, a person accompanying the professional representative of a party may be allowed to make oral submissions on specific legal or technical issues on behalf of that party, otherwise than under A 117, in addition to the complete presentation of the party’s case by the professional representative” (see Headnote I). In the present case, it was in fact Mr Malmqvist who presented the complete case for the appellant, Mr Heimdal only interjecting where necessary. However, the Board saw no reason to object to this arrangement as long as the presentation of the case was made under the continued responsibility and control of the professional representative Mr Heimdal. The Board therefore allowed Mr Malmqvist to continue with his oral submissions. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1798/08 – No Disguise
K’s Law – The ebook
T 1798/08 – No Disguise 22 Jan 2013
Both the patent proprietor and the opponent appealed the decision of the Opposition Division to maintain the opposed patent in amended form. The Board found the main request on file to violate A 123(2) and then went on to examine the first auxiliary request claim 1 of which read: A visual prosthesis, comprising: a) means for perceiving a visual image, said means producing a visual signal output in response thereto; b) retinal tissue stimulation means comprising an electrode array (22) capable of stimulating retinal cells to produce phosphenes in a pattern to stimulate vision, said electrode array (22) adapted to be operatively attached to a retina of a user; and c) visual signal communication means for transmitting said visual signal output to said retinal tissue stimulation means, comprising a primary coil (16) for wirelessly transmitting a radio frequency encoded image signal and a secondary coil (18) for receiving the radio frequency encoded image signal transmitted via the primary coil (16), wherein I. the electrode array (22) and the secondary coil are in communication via a decoding and demultiplexing circuit block (20) to which the radio frequency encoded image signal is passed from the secondary coil (18) and which communicates said signal to the electrode array (22) and wherein II. a) the secondary coil (18) and the decoding and demultiplexing circuit block (20) are suitable to be located on the body of the user outside a wall of the sclera and attached to the sclera, or b) the decoding and demultiplexing circuit block (20) is suitable to be located on the body of the user outside a wall of the sclera and attached to the sclera and the secondary coil (18) is suitable to be located implanted in the eye behind the iris. In what follows the Board examines the question whether this subject-matter is excluded from patentability. [3.2] Although all claims are directed to a visual prosthesis, i.e. an apparatus, they were objected to under A 53(c) as relating to a surgical method. The features “suitable to be located on the body of the user outside a wall of the sclera and attached to the sclera”, “suitable to be located on the body of the user outside a wall of the sclera and attached to the sclera” and “suitable to be located implanted in the eye behind the iris” in part II of feature c) of claim 1 were regarded as relating to a method for treatment of the human or animal body by surgery, thus transforming the claim into a “disguised” method claim, even though it was notionally directed to a device. The Board dismisses this objection for the following reasons. A 53(c), second sentence, specifies that the provision does not apply to products, e.g. substances and compositions, for use in the methods falling under the exception clause. In addition to substances and compositions, the claim category “products” includes apparatus. Accordingly, the provisions of A 53(c) do not normally apply to apparatus claims. The fact that some features of the claimed apparatus are functionally defined in relation to the body of the patient does not itself transform the apparatus claim into a method claim (T 712/93 [3]; T 1695/07 [17]). It is true that the actual implantation of components of the prosthesis would constitute a surgical intervention in the patient’s body, but this is not what is claimed in claim 1. The claim merely defines that certain components of the prosthesis are “suitable to be located” at various locations in the patient’s body. Such a definition does not except the claimed apparatus from patentability under A 53(c). The reasoning of T 775/97 [2.6] is not applicable to the present case, as the underlying situation is entirely different. Claim 29 of the main request at issue in that case related to the use of two tubes for the manufacture of a device for use in a surgical method. Since said device was assembled inside the body by a surgical method, it was found to constitute a surgical treatment. In the present case, however, the claim is not directed to a use but to 730 | 3398
T 1798/08 – No Disguise
K’s Law – The ebook
an apparatus and does not refer to any manufacturing steps. No surgical step is needed to make any of the components of the claimed prosthesis. The present claim is comparable to the device claims of the auxiliary request in decision T 775/97 [3.1] which were found not to fall under the exclusion clause of A 52(4) EPC 1973. The reasoning of T 82/93 [1.5-5] is not applicable to the present situation either. In that case the claim objected to was directed to a method of operating a pacer including a number of features which were physical entities and a number of features defining physical activities or actions (referred to as a “hybrid claim”). At least one of these actions, viz. the use of certain sensed parameters to control the pacer rate, was considered to constitute a method of treatment of the human body by therapy, resulting in the claim defining subject-matter excluded from patentability under A 52(4) EPC 1973. The present case is different in that claim 1 is not directed to a method and in that it does not comprise any features defining physical activities or actions, still less any steps defining a surgical or therapeutic treatment of the human body.
G 5/83 deals with claims directed to the use of a substance or composition for the treatment of the human or animal body and is thus also of no relevance in the present context. The statement cited by the appellant opponent from G 1/04 [6.2.1] that a claim falls under the prohibition of A 53(c) “if it includes at least one feature defining a physical activity or action that constitutes a method step for treatment of the human or animal body by surgery or therapy” explicitly refers to method claims, and not to device claims as in the present case. Furthermore, as explained above, claim 1 does not include any such method step for treatment. It follows that claim 1 of auxiliary request 1 does not fall under the exception clause of A 53(c). The issue of exception from patentability has to be decided on the basis of the given wording of the claim as indicated above (possibly taking into consideration additional information provided in the description, which was not necessary in the case at issue). Any possibly necessary interpretation of certain features of the claim (i.e. suitability of components to be located on or attached to parts of the body) for the assessment of novelty should not play a role in the decision as to whether or not a given claim falls under the exception clause, since novelty is a separate and independent patentability requirement (“Case Law”, 6 th ed. 2010, I.A.1.2). Also the issue of possible patent infringement, i.e. the question of whether a surgeon implanting components of the claimed device might be confronted with the problem of patent infringement and thus be hampered in his freedom when treating his patients, has to be left aside in this decision. According to opinion G 2/88 [3.3] a distinction is to be made between the protection conferred by a patent as determined by the claims according to A 69(1) and the rights conferred on the patent owner in the designated Contracting States according to A 64. The rights conferred on the proprietor of a European patent under A 64(1) “are the legal rights which the law of a designated Contracting State may confer upon the proprietor, for example, as regards what acts of third parties constitute infringement of the patent, and as regards the remedies which are available in respect of any infringement”, and “the “rights conferred” by a patent are a matter solely for the designated Contracting States” [emphasis added]. This is confirmed in G 1/07 [3.2.3.2], where it is stated that “any issues of infringement ultimately depend on the construction of the applicable national laws”, and that there is “no term in A 53(c) which would allow concluding that hampering of the practitioner’s freedom is a prerequisite for the exclusion to apply in the individual case considered. The only condition defined in A 53(c) for a claim to be excluded from patentability is that it contains subject-matter being a method for treatment of the human or animal body by surgery or therapy or a diagnostic method. If so, it is excluded from patentability and it is then irrelevant whether in the individual situation under consideration a medical practitioner would or could infringe the claim” [emphasis added]. Since the issue of possible infringement by a medical practitioner is not decisive in case of a claim directed to a method, this must a fortiori be the case for a claim to an apparatus, such as a visual prosthesis. It is well established that product protection is available for medically-related products even though it may hamper the medical practitioner’s freedom to operate. NB: There are other interesting items in the decision, such as the request for a legal hint by the Board. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
731 | 3398
T 2411/10 – A Bad Handover
K’s Law – The ebook
T 2411/10 – A Bad Handover 21 Jan 2013
This is an examination appeal. Claim 1 as filed read (in English translation): Positioning system for furnishings of a building, wherein these furnishings comprise at least one positioning signal transmitter, wherein the positioning signal transmitter is capable of delivering at least one positioning signal and/or comprise at least one positioning signal receiver, wherein the positioning signal receiver is capable of receiving at least one of these positioning signals, wherein positioning signal transmitter and positioning signal receiver cooperate in such a way that this cooperation makes it possible to identify the spatial position of the furnishings in the building. When filing the application (on April 16, 2009), the applicant requested examination and paid the examination fee. On August 27, 2009, the ESR was sent to the applicant. It contained the following declaration (my translation): “It is not possible to perform a search for the claimed technical means because both in the claims and in the whole original disclosure these means are only defined by their purpose but not by their technical realisation and constitution. This amounts to a non-remediable lack of enabling disclosure within the meaning of A 83. Thus a search is not only not purposive (zielführend), because an insufficiently enabling (Instande setztender, sic) subject-matter cannot be patented, irrespective of its novelty and obviousness, but such a search, which presupposes the comparison and identification of technical features, cannot be performed at all. The application explains why IP numbers and GPS signals are not suitable for positioning objects in buildings, but it does not disclose the alternatives to those unfeasible technical solutions. The [Search Division] wishes to point out that this deficiency concerns not only the claims, but the whole subject-matter of the original application. As the latter is the only acceptable basis for amendments under A 123(2), it is not possible to remedy this insufficiency of disclosure, and the circumstances and Guidelines mentioned in the automatically generated general legal information (Rechtsauskunft) given in the following paragraph, which could trigger a search at a later stage, cannot be applied (finden … keine Anwendug, sic)in the present case. The applicant is referred to the fact that such a search can be carried out in the course of the examination if the deficiencies underlying a declaration pursuant to R 63 have been remedied (cf. EPO Guidelines C-VI 8.2).” The applicant protested on the very same day. Its representative pointed out that the EPO had searched the priority application, which showed that a search could be carried out. The applicant requested that a search be carried out or a appealable decision be given. The application was published on October 21, 2009, together with the declaration under R 63. There was no invitation under R 70(2). The first communication of the Examining Division (ED) was issued on October 5, 2009. The Examiner, who was the person who had refused the search, repeated the objection. When summoned to OPs, the applicant requested the addition of a legally competent member because there was a risk that the ED was not even competent as no declaration under R 70(2) had been sent. This request was granted. On April 15, 2010, the application was refused. The applicant then filed the appeal. 732 | 3398
T 2411/10 – A Bad Handover
K’s Law – The ebook
*** Translation of the German original *** Competence of the ED [2.1] Pursuant to R 10(1), the Receiving Section (RS) shall be responsible for the examination on filing and the examination as to formal requirements of a European patent application up to the time when the ED becomes responsible for the examination of the European patent application under A 94(1). Under R 10(2), subject to paragraphs 3 and 4, the ED shall be responsible for the examination of a European patent application under A 94(1) from the time when a request for examination is filed. R 10(3) stipulates: “If a request for examination is filed before the ESR has been transmitted to the applicant, the ED shall, subject to paragraph 4, be responsible from the time when the EPO receives the indication under R 70(2). R 10(4) stipulates: “If a request for examination is filed before the ESR has been transmitted to the applicant, and if the applicant has waived the right under R 70(2), the ED shall be responsible from the time when the search report is transmitted to the applicant.” [2.2] R 70(2) to which R 10(4) refers, has the following wording: “If the request for examination has been filed before the ESR has been transmitted to the applicant, the EPO shall invite the applicant to indicate, within a period to be specified, whether he wishes to proceed further with the application, and shall give him the opportunity to comment on the search report and to amend, where appropriate, the description, claims and drawings.” Once it has received this invitation, the applicant has the choice of pursuing the application, or of withdrawing it, in which case the examination fee is reimbursed (see Article 11(a) RRF). The purpose of this regulation is to allow the applicant to decide, based on the search report, whether it is worthwhile, in view of the chances of success, to pursue the proceedings. [2.3] In the present case the appellant had requested examination when it filed the application, i.e. before the declaration under R 63 (in its version in force until March 31, 2010) that it is impossible to carry out a meaningful search, which is deemed to constitute the ESR. The appellant has not waived its right to an invitation under R 70(2), neither when it filed the application, nor at a later stage. Thus the RS should have invited the appellant to declare within a time limit to be determined whether it wanted to proceed further with the application. However, an invitation under R 70(2) can only be omitted if the applicant has clearly and unmistakably expressed its will vis-à-vis the EPO to begin the examination proceedings after having taken note of the search report. This is precisely what has not happened in the present case. The appellant’s letter dated August 27, 2009, cannot be understood to constitute such a declaration because it referred to the search that had not been carried out and aimed at obtaining that a search be carried out. It does not express the will to start substantive examination. The interpretation of the ED according to which the fact that an appealable decision can only be rendered in examination proceedings and that, consequently, the corresponding request could be understood to constitute a declaration of the wish to proceed further with the application (Aufrechterhaltungserklärung) within the meaning of R 70(2) clearly contradicts the declarations of the appellant and emphasises formalities that do not correspond to the will of the appellant. Nor can the response to the communication of the ED (Prüfungsbescheid) be understood as an agreement to the examination proceedings because the appellant was obliged to react in order to avoid the legal fiction of deemed withdrawal. Conjectures of the RS or the ED, respectively, as to why an applicant might want to wish the examination proceedings to be started may not replace an invitation and declaration that is legally required in application of R 70(2). The clear and mutually exclusive allocation of this responsibility in the Convention prevails over considerations of procedural or cost economy (J 5/01). [2.4] In the end the absence of an unambiguous declaration of the wish to proceed further with the application means that the legal conditions for a transfer of competence from the RS to the ED (R 10(3)) were not satisfied. Thus the impugned decision was taken by the ED when it was not competent, and has to be set aside for this reason.
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T 2411/10 – A Bad Handover
K’s Law – The ebook
Thus the case has to be remitted to the RS, which is still competent. Reimbursement of the appeal fee [3] A decision taken by a department that is not competent amounts to a substantial procedural violation justifying the reimbursement of the appeal fee (R 103(1)(a)). Therefore, the Board grants the corresponding request. Possibility of and need for a search [4] The ED was of the opinion that there was no need for a late search (Nachrecherche) because even in the absence of further prior art documents a decision could be taken on the basis of insufficient disclosure. In decision T 1242/04 [8.3] the Board has explained that R 45 relates only to the practicability of a search and not to the potential relevance of its results in subsequent substantive examination. The search is the basis for substantive examination and not vice versa. In the present case a search appears to be possible. [4.1] According to the ED it is not possible to search for claim features that are defined only by their purpose. The Board is of the opinion that the opposite is true: The broader the definition of a feature, the easier it is to find evidence for it in the prior art. In exceptional cases it may be clear from the outset that there is no meaningful prior art (e.g. when a perpetuum mobile is claimed), but the present case is not such a case. [4.2] The objections under A 83 do not prove that a search is impossible either. According to the ED the claimed subject-matter cannot be carried out or searched because the desired positioning is not more precise than what could be obtained with the state of the art cited in the application. The Board concludes from this statement that a general search in the field of positioning technology was possible and could have been meaningful. As a matter of fact, from a technical point of view, it is indeed plausible that it is possible to position a radio, infrared or ultrasound transmitter. The question of whether the positioning principle can be searched is not related to the obtainable positioning precision. Objectively speaking, the application does not require revolutionary technical means but mostly uses known technical (e.g. piezoelectric) elements. Insofar as the use of such elements is obvious for the purpose under consideration, they also have to be feasible and searchable, for this very reason (independently of the question of whether a patent can be granted in the end). Also the state of the art can under certain circumstances help to determine whether an invention can be carried out, which means that the question of feasibility cannot necessarily be considered independently of the state of the art. [4.3] As a search is a requirement for substantial examination and as a search was possible, the application should not have been refused without a search. The case law has acknowledged that an application may only be refused by the ED without a late search (Nachrecherche) when the only technical features are notorious (see T 1924/07 [10]). The present case is not such a case. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1388/09 – Consult The Lexicon
K’s Law – The ebook
T 1388/09 – Consult The Lexicon 19 Jan 2013
It is a well-known principle of U.S. patent practice that an “applicant is entitled to be his or her own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s).” (M.P.E.P. 2111.01, paragraph IV). The EPO also accepts this principle to some extent, although Examiners nowadays often require such definitions to be inserted into the claims. What I found interesting in the present decision is that it transfers the lexicography principle to prior art (patent) documents. The appeal was filed by the patent proprietor after its patent had been revoked by the Opposition Division. In what follows, the Board discusses the patentability of the main request claim 1 of which read (in English translation): [1] Compressed air processing apparatus (CAPA), comprising: [1.1] a pressure controller (5); [1.2] an air dryer (6); [1.3] a multi-circuit protection valve (7); and [1.4] an electronic control unit (40) to control [1.4.1] the pressure controller, [1.4.2] the air dryer [1.4.3] and the multi-circuit protection valve, characterised in that [1.5] the electronic control unit (40) of the CAPA is also designed to control valves (10) of an air suspension system, and in that [1.6] a switching valve (52) that supplies compressed air to the air suspension system or deaerates the air suspension system, respectively, is arranged in the CAPA. (marginal references proposed by the appellant and accepted by the Board) *** Translation of the German original *** [2.1] It is undisputed that D1 discloses a CAPA according to claim 1 of the main request, with the exception of the following features: pressure controller (feature [1.1]), multi-circuit protection valve (feature [1.3]) and the characterising feature (feature [1.6]). [2.2] Regarding feature [1.6], the appellant has submitted that the CAPA according to D1 only disclosed valves for supplying [compressed air] to the air suspension system and that only such valves (as opposed to de-aerating valves) were provided in this apparatus. [2.3] The Board cannot accept this argument because it contradicts the disclosure of document D1. The introduction of the description of document D1 […], where the state of the art is acknowledged, mentions that it was common until then to arrange the valves used for compressed-air conditioning (Druckluftaufbereitung), and thus for supplying [compressed air] to the air suspension system, in the CAPA (“dispositif de traitement”) […] whereas the electrovalves (“électrovalves”) used for controlling the air suspension system were arranged in the vicinity of the pneumatically suspended axles […]. The inventive idea (erfinderische Gedanke) disclosed all over document D1, according to which the pneumatic suspension system is controlled in a centralised manner in the CAPA, via electrovalves, rather than in specific functional units comprising these electrovalves, which are, for instance, provided in the vicinity of the pneumatically suspended axles […], is quite comparable with the one underlying the impugned patent. According to this teaching the electrovalves that control the suspension air bellows are integrated centrally in the CAPA and not scattered over several places such as in the prior art acknowledged in D1 […]. According to D1, one common electronic control unit 10 for controlling the pneumatic suspension is provided in the CAPA […]. 735 | 3398
T 1388/09 – Consult The Lexicon
K’s Law – The ebook
[2.3] Before D1 was published the person skilled in the field of air suspensions was aware (cf. D4) that electrovalves for controlling air bellows of a suspension have to both supply compressed air and de-aerate, e.g. when a certain load-independent difference of heights between the chassis and the pneumatically suspended axles has to be maintained (D1 […]). When compressed air is supplied to the pneumatic air bellows (referred to as “cousins d’air” in D1) then the vehicle body is lifted up against the weight of the vehicle. When the pneumatic air bellows are de-aerated, the vehicle lowers because of its proper weight. [2.4] The parties agreed that the function of “controlling the air suspension system” includes both supplying air to the bellows of the air suspension system and de-aerating them. It is true indeed that document D1 does not explain in every detail how the idea of centralising is to be reduced to practice. In particular, it does not show how the mentioned electropneumatic components are connected and designed. However, the skilled person encounters no difficulties in practically realising this centralising idea. When the air supply and the de-aerating has to be done via electrovalves, this implicitly requires the electrovalves to be switching valves (Schaltventile). Document D4 shows in detail how such valves operate. [2.5] The [patent proprietor] has based its proper interpretation of D1 on the absence of a detailed description of the electrovalves and their pneumatic mode of operation as well as on certain passages and figures of D1a [i.e. the German translation of D1]. According to this interpretation, the air bellows mentioned in D1 cannot be directly connected to the outlet of the CAPA but are connected via de-aerating switching valves which it believes to be mentioned as “actuating elements” (“Betätigungselemente”) in D1a and which had to be arranged downstream of the CAPA. [2.5.1] The Board is of the opinion that this view of things contradicts the teaching of document D1. When interpreting the disclosed state of the art, the Board refers to the original document D1 because there are some inaccuracies due to translation in D1a. For example, the expression “actuating elements” of D1a […] does not exactly correspond to the original expression “actionneurs pneumatiques” […] for which “pneumatic actuators” would be a more correct translation. Apparently “actuators” refers to the actuators of the air suspension system, i.e. the air bellows (also referred to as “cousins d’air” in D1). [2.5.2] The Boards of appeal of the EPO have explained in several decisions that a patent document may be its own lexicon (see, for instance, T 1321/04 and T 500/01). In accordance with this principle the disputed terms mentioned above have to be assigned the meaning that is found in the description of document D1. In the present case, [the Board] notes, based on the numerous passages of D1 using these terms […] that the expression “sortie d’air destinée à l’alimentation” in D1 is to be understood as a general conduit for “supplying” energy needed for generating displacements (zu Verstellzwecken), wherein the displacement movements as such can be generated both with and without energy supply on behalf of the CAPA, as the case may be. I this context the skilled person understands that the air bellows (“coussins de suspension”) or the actuators (“actionneurs”) can indeed be deaerated via this conduit (“conduit destine à l’alimentation”), the latter being passive, which means that there is no need for the CAPA to supply pneumatic energy during the de-aeration phase. The amount of air generated during the de-aeration may exhaust via the damped outlet of the CAPA (cf. Figs. 1 and 2 “silencieux d‘échappement 6”). Thus the [patent proprietor’s] interpretation is based on an incorrect interpretation of the terms “alimentation” or “alimenter”, respectively, and “actionneurs”. [2.5.3] Document D1 uses a unified terminology for disclosing three levels within a control chain, i.e. the electronic unit (“unité de contrôle commande électronique”), the electric control valves (“composants électropneumatiques” or “électrovalves”, respectively), as well as the actuators (“actionneurs” or “coussins de suspension”, respectively), which form the last level of this chain of control. The second paragraph on page 5 of D1 unambiguously discloses that, contrary to the opinion of the [patent proprietor] the CAPA according to D1 has the feature [1.6]. [2.6] As to its assumption that the air-suspension bellows cannot be directly connected to the CAPA of D1, the [patent proprietor] also has referred to valve 27 of Fig. 3 of D1 and submitted that this valve did not comprise a switch position allowing to de-aerate. In this context it has to be noted that valve 27 of Fig. 3 of D1 is only disclosed as a valve that transmits the air pressure (“pression délivrée…par l'intermédiaire d'une électrovalve 27”) […]. This does not exclude that […] the actuator (“actionneur”) supplied by valve 27 may also be de-aerated via the CAPA. Moreover, it should be noted that the valve 27 is only represented by way of example and, according to […] D1, belongs to a module 16 for controlling the hand brake. Fig. 3 of D1 is a simplified functional chart […] and, therefore, cannot be used as evidence for the detailed design and the precise connectability of the pneumatic component.
736 | 3398
T 1388/09 – Consult The Lexicon
K’s Law – The ebook
[2.6.1] Moreover, paragraph [0023] of D1a cited by the [patent proprietor] does not mean that it is necessary for the pressure sources to be within each axle. Rather, this paragraph does not make any statement on where to provide the pressure sources. It only states that the different air bellows of an axle may be supplied by separate pressure sources or via a common pressure source […]. This allows to supply the air bellows of the right and left side of the vehicle separately or jointly. This view is confirmed in another passage […] of D1. [2.7] It remains to be examined whether features [1.1] and [1.4] are known from D1. However, it is not necessary to dwell on this question because even if the assumption of the [patent proprietor] that these features are not known from D1 is accepted, these features cannot contribute to an inventive step: […] D1 explains that the core piece 37 of the disclosed CAPA comprises the electropneumatic organs which are needed for controlling the air pressure supplied by the compressor, for drying the compressed air and for its distribution to the different service brake circuits, and which are known as such. The skilled person knows the design and interaction of these organs, e.g. from document D2 (cf. Fig. 1 of D2: pressure controller 2, air dryer 4, multi-circuit protection valve 3, control electronics 52). This document is cited in the introduction of the description of D1 […]. So the skilled person is clearly instructed to provide the core piece of the CAPA of D1 with a pressure controller, (feature [1.1]) and a multi-circuit protection valve (feature [1.4]) according to D1. When doing so, it is obvious to control the valves of these organs in the known way by means of the existing electronic control unit. [2.8] Thus the Board comes to the conclusion that the subject-matter of claim 1 is not inventive, for the reasons given above, and, therefore, does not comply with the requirements of A 56 EPC 1973. Thus the ground for opposition pursuant to A 100(a) EPC 1973 hinders [the Board] from maintaining the patent as granted. I am not sure what to think of this. The lexicon principle makes sense when interpreting claims, which form a unit that is distinct from the description. Does it make sense to apply the principle to prior art documents, where the distinction between claims and description is not really relevant and where the general rules of interpretation apply? Should you wish to download the whole decision, just click here. The file wrapper can be found here.
737 | 3398
T 227/10 – Sharp Change?
K’s Law – The ebook
T 227/10 – Sharp Change? 18 Jan 2013
Remember T 106/84? In this case the Board had to deal with an appeal against the refusal of an application. The claims were directed at a packing machine for wrapping up goods in a plastic foil, comprising a heatable tear-off edge and temperature control means, arranged in such a way as to allow the separate the piece of foil in which the goods were to be wrapped from the supply. In the closest prior art the edge was formed by a resistance heating wire whose maintenance of the desired temperature was critical and the stabilisation of which was difficult to achieve. The technical problem to be solved resided in the provision of a simple, robust package table construction. The solution was based on the idea of making use of the known temperature self-limiting phenomenon of PTC resistors for accurately maintaining a predetermined critical cutting temperature. The decision of the Board, which was published in the OJ EPO in 1985, is interesting because the appellant succeeded in persuading the Board that its invention presented several secondary indicia for inventive step (change of direction in the art, surprising advantage, commercial success, long-standing great human need, achievement of simplicity with concomittant improved quality, …). In the present case, the applicant tried to surf the same wave, but with less success. Claim 1 of the main request before the Board (which was almost identical to claim 1 before the Examining Divison) read: A method of refining a crystal of cyclic ester, comprising the steps of:
supplying a crude cyclic ester as crystalline raw materials to a vertically extending cylindrical refiner D1 from an inlet (3) provided at a lower part of said refiner D1; agitating said crude cyclic ester by an agitator (2) provided in said refiner D1 while making said crude cyclic ester flow upwardly; forming a downflowing melt of crystal components as refined; bringing said upflowing crude cyclic ester and said downflowing melt into counterflow contact so as to clean off the impurities adhered to the surface of the crystal and sweat out the impurities caught inside the crystal, whereby said crude cyclic ester is refined; and taking out, as products, the crystals thus refined from an outlet (4) provided at an upper part of said refiner D1.
Document D6 discloses a method of purification, wherein the feed material including cyclic esters is subjected to an adsorption step in which impurities are adsorbed from the feed material. The document points out the difficulty to transfer the processes for purifying cyclic ester compositions, inter alia melt-crystallization, in controlled laboratory conditions to a commercial process because they are complex or have impractical operating parameters and the cyclic esters may degrade resulting in poor purity. The applicant pointed out that D6 established a prejudice against applying a continuously refining tower to easily degradable cyclic esters. Melt-crystallization was cited, but merely as one of alternative methods in the course of post-adsorption treatments. The problem to be solved in view of document D6 was the provision of a simpler and industrially better adapted method for purifying easily degradable cyclic esters.
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T 227/10 – Sharp Change?
K’s Law – The ebook
The solution was to suppress the main purifying step on an adsorbent, and adapting the melt crystallization step destined for post-treatment in document D6 to a single-step continuously refining method, carried out in a vertically extending cylindrical refiner on a counter-current basis. It was surprising that the use of downflowing melt in a refining tower in a gravitational manner with a tight control of temperature and exposed time could lead to a purification of these unstable cyclic esters. There was a general trend not to use the refining tower method but crystallization methods, or a distilling method. The development in the past led away from the use of a refining tower for unstable cyclic esters. T 106/84 was cited to show that a sharp change of direction should be considered as involving an inventive step. The relevant passage of T 106/84 reads: “The cited documents do indicate that, although the PTC elements and their characteristics were commonly known and they had been used in other fields, the packing machine industry nevertheless adhered to additional control means separate from the heating means proper, and concentrated on efforts for improving the control means. Consequently, development led away from the use of PTC elements for heating a cutting edge. What was needed was a sharp change of direction in the art and that is what the present invention has provided through the appreciation of the feasibility of using PTC elements for the novel purpose of cutting.” The Board was not persuaded that the same could be said in respect of the present invention: [3.3] In the absence of evidence showing a different or better technical effect provided by the claimed invention vis-à-vis document D6, the problem underlying the present application can be regarded in the provision of a further continuous process to purify crude cyclic esters, namely to remove mother liquid impurities adhered to the crystal and to those taken inside it. [3.4] In view of the example and the general description it is considered that the problem was actually solved. [3.5] It remains to be decided whether or not the claimed solution is obvious in view of the state of the art. [3.5.1] Any argument related to the judicious control in the present invention of temperature and time necessary to maintain the cyclic esters in a state with no heat degradation is without any merit since the claim 1 does not recite those conditions which are, in addition not disclosed in the application. Therefore, document (E8, E1) which represents the thermal decomposition of cyclic esters depending on heat and time has no bearing with the claimed solution. [3.5.2] The person skilled in the art seeking to find a further process to solve the problem underlying the present would know from document D6 that melt crystallisation is particularly appropriate for cyclic esters as a further purification step, after the adsorption step. Moreover, he would also know from this document that several configurations of equipment can be used to perform the said purification by-melt crystallization […]. Unless a prejudice would have prevented him, he would have considered the equipment known in the prior art. [3.5.3] As properly noted by the examining division melt-crystallization, although after the adsorption step, is envisaged in document D6 and even said to have “a number of particular advantages”. The alleged “technical prejudice” is, therefore, without any merit. Furthermore, that document D4 relates to a process involving distilling out the dimeric cyclic ester together with a high-boiling polar organic solvent cannot confirm a general trend teaching away from using melt crystallization as further purification step. [3.5.4] The alleged sharp change of direction relied upon, by reference to T 106/84, cannot be acknowledged because contrary to the former case cited, where the PCT resistors in the claimed packing machine functioned as stringent control means, technical effect not known from the previous uses, in the present case the meltcrystallisation as a post-purification step of cyclic esters was known from document D6. [3.5.5] Hence, the person skilled, having no prejudice against the use of melt-crystallization as further purification step in the context of the teaching of document D6, would have looked at document D1, which describes a process to purify continuously a crystalline substance […]. It is true that the material teaching of document D1 is confined to stable substances (e.g. p-dichlorobenzene). However, the instability of cyclic esters being not an obstacle to melt-crystallization (see document D6), a device such as disclosed in document D1 would have been prima facie appropriate for implementing the purification by melt-crystallization as taught in document D6. Document D1 describes the supply of the crude crystal from the charging mouth 6 (lower part of the tower) into the purification tower by means of a screw conveyor 7. The raw materials charged into the tower are purified while being transported to the upper portion of the tower by means of the stirrer 5. The heating and 739 | 3398
T 227/10 – Sharp Change?
K’s Law – The ebook
melting means 1 positioned in the upper portion of the tower is maintained at the temperature of the melting point of the crystal component, or above whereby the purified crystal is melted to a liquid. A portion of the liquid descends back down through the tower and contacts the raw material crystal rising in the tower. One portion of the purified material reaching the upper portion is removed by means of products outlet 2 and the remaining liquid portion is returned to the inside of the tower […]. The person skilled in the art applying the teaching of document D6, namely adsorption step then melt-crystallization, in combination document D1 would have designed without inventive ingenuity a process falling within the definition of claim 1 and for this reason the subject-matter of claim 1 of the main request and first auxiliary request does not involve an inventive step. Documents D2, D3 and D5 disclose other crystal refining apparatuses and cannot rebut but only reinforce, if needed, this finding. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 849/10 – Natural Selection
K’s Law – The ebook
T 849/10 – Natural Selection 17 Jan 2013
This is an appeal by an opponent whose opposition had been rejected. Claim 1 of the patent as granted read: 1. A cleaning composition comprising a surfactant and a proteinic substrate based oxygenase, selected from the group consisting of: 1.13.11.11 TRYPTOPHAN 2,3-DIOXYGENASE 1.13.11.20 CYSTEINE DIOXYGENASE 1.13.11.26 PEPTIDE-TRYPTOPHAN 2,3-DIOXYGENASE 1.13.11.29 STIZOLOBATE SYNTHASE 1.13.11.30 STIZOLOBINATE SYNTHASE 1.13.12.1 ARGININE 2-MONOOXYGENASE 1.13.12.2 LYSINE 2-MONOOXYGENASE 1.13.12.3 TRYPTOPHAN 2-MONOOXYGENASE 1.13.12.9 PHENYLALANINE 2-MONOOXYGENASE 1.13.12.10 LYSINE 6-MONOOXYGENASE 1.13.99.3 TRYPTOPHAN 2’-DIOXYGENASE 1.14.11.1 gamma-BUTYROBETAINE DIOXYGENASE 1.14.11.2 PROCOLLAGEN-PROUN,2-OXOGLUTARATE 4- DIOXYGENASE 1.14.11.4 PROCOLLAGEN-LYSINE,2-OXOGLUTARATE 5- DIOXYGENASE 1.14.11.7 PROCOLLAGEN-PROLIN.2-OXOGLUTARATE 3- DIOXYGENASE 1.14.11.8 TRIMETHYLLYSINE,2-OXOGLUTARATE DIOXYGENASE 1.14.11.16 PEPTIDE-ASPARTATE ß-DIOXYGENASE 1.14.16.1 PHENYLALANINE 4-MONOOXYGENASE 1.14.16.2 TYROSINE 3-MONOOXYGENASE 1.14.16.4 TRYPTOPHAN 5-MONOOXYGENASE 1.14.17.3 PEPTIDYLGLYCINE MONOOXYGENASE. The opponent inter alia argued that this claim was not novel. The Board disagreed: [2.1] The [opponent] argued that the patent-in-suit together with D8 and D9 covered a total of 119 oxygenases, which amounts to a major part of the total of approximately 300 enzymes of EC 1.13 and 1.14. Since the [opponent] did not regard this to be a “narrow” selection, the criteria for a selection invention would allegedly not be met. NB: D8 and D9 were parallel applications filed on the same day as the application on which the impugned patent is based. [2.2] The Board cannot accept [opponent’s] arguments. Given the fact that D8 and D9 have the same filing date as the patent-in-suit and therefore do not represent state of the art according to A 54(2) EPC 1973 or A 54(3), these documents cannot be used for any novelty objection. [2.3] Furthermore, the patent-in-suit does not define a sub-range of a broader numerical range, but a selection of individual (classes of) enzymes mentioned distinct from the ones used in D7. Thus, for the present case the criteria for selection inventions cannot be applied. [2.4] Finally, the [opponent] has not credibly shown, that any of the documents cited in the course of the appeal procedure discloses an enzyme encompassed by the list of Claim 1 as part of a cleaning composition. [2.5] As Claims 17-22 describe the use of enzymes identical to the ones used in Claim 1, similar considerations apply for these claims too. [2.6] Therefore novelty of the claimed subject-matter of the main request is given. 741 | 3398
T 849/10 – Natural Selection
K’s Law – The ebook
Should you wish to download the whole decision, just click here. The file wrapper can be found here.
742 | 3398
T 671/08 – Bits & Pieces
K’s Law – The ebook
T 671/08 – Bits & Pieces 16 Jan 2013
This decision, although not a major one, contains some nice bits and pieces. Both parties appealed against the decision of the Opposition Division (OD) to maintain the patent in amended form. Admissibility of the appeal (A 108 and R 99). [1.1] The appellant proprietor argued that the appeal by the appellant opponent was inadmissible, since the notice and the statement of grounds of appeal were filed on a letterhead of Saint-Gobain Recherche and merely indicated “par la présente nous formons un recours” (“hereby we file an appeal”) and “notre mémoire de recours” (“our statement of grounds of appeal”), respectively (emphasis added by the board). However, according to the first page of the notice of opposition, Saint-Gobain Recherche was not the opponent, but SaintGobain Glass France. Saint-Gobain Recherche was not and has never been a party to the proceedings and thus was not entitled to appeal (A 107 EPC 1973). [1.2] The notice of opposition however clearly identifies Saint-Gobain Glass France as the opponent and Mr. J. as its professional representative having Saint-Gobain Recherche as professional address (parts III. and IV. of form 2300.1 received by the EPO on 11 July 2005). [1.3] In the view of the board, the filing of the notice and statement of grounds of appeal on a letterhead porting his professional address does not shed doubts on whose name the appeal was filed, i.e. Saint-Gobain France Glass. This fact is not affected by the use of the unspecific identifications “nous” and “notre … recours”. The Board decides for these reasons that the appeal of the appellant opponent is admissible. Admissibility of the main request and remittal to the department of first instance on that basis [2.1] The appellant proprietor’s main request is to set aside the decision under appeal and to maintain the patent as granted. [2.2] The appellant opponent requested that this request not be admitted, since the patent as granted had not been defended by the proprietor in the proceedings before the OD. The proprietor’s main request during the opposition proceedings was to maintain the patent in a more restricted version, namely the claims according to the 1st auxiliary request in appeal. The board would thus decide on a request that had never been discussed before the OD. This was contrary to the principle that only what has been decided on first instance could be reviewed in appeal. In several decisions the boards of appeal had refused to admit requests having a scope wider than the requests discussed before the department of first instance. [2.3] It is the discretionary power of the boards of appeal not to admit requests that could have been presented or were not admitted in the first instance proceedings (Article 12(4) RPBA). The boards when applying this discretionary power take into account all the relevant facts of the case. It contradicts the nature of a discretionary power that a given course of action be pre-established irrespective of the circumstances of the case. The board therefore considers that there is no absolute right of the patent proprietor to revert in appeal to the patent as granted nor that he is in principle hindered from doing so. There will be cases, as the present case shows, in which the admission of such a request poses no additional work and other cases in which such a request may even constitute an abuse of the proceedings. It follows thus that if such a request is submitted in appeal the board has to exercise its discretion under Article 12(4) RPBA and decide whether to admit or not such a request (see the discussion on this topic in T 28/10 [3.2-3], in which also the previous case law of the boards of appeal is discussed). 743 | 3398
T 671/08 – Bits & Pieces
K’s Law – The ebook
[2.4] The present main request differs from the proprietor’s main request at first instance (which is identical to the 1st auxiliary request on appeal) essentially by the absence of the sole characterizing feature. This feature however makes explicit what previously was implicit, namely that the purpose of a data transmission window is to allow the passage of electromagnetic waves (data) through that portion of glazing. The board thus considers this feature as being implicitly contained in the concept of a data transmission window. [2.5] The board considers moreover that the appellant opponent cannot be unprepared to deal with the claims of the granted patent, since it was against these claims that he filed the opposition. Thus all the initial arguments, facts and evidence submitted with the grounds for opposition should speak against these claims. The appellant proprietor further filed his main request with the statement of grounds of appeal, i.e. at the earliest possible circumstance. Thus under the present circumstances, the board considers that by admitting the main request the proceedings are not delayed nor the other party can be considered to be taken by surprise. [2.6] The appellant opponent further argued that it was not clear what exactly the proprietor’s main request was, since the appellant proprietor had submitted amended description pages 1a and 2a which were marked “For all requests”, i.e. apparently also for the main request. This was however incompatible with the requested maintenance as granted. [2.7] The board is not persuaded that the appellant proprietor’s main request was not clear at any moment. The request to maintain the patent as granted means to maintain it with the granted description, claims and drawings. The remark “for all requests” found on description pages 1a and 2a submitted with the statement of grounds of appeal seems to contradict this request. However, this contradiction is lifted by reading carefully the proprietor’s statement of grounds of appeal, since for all auxiliary requests the pages forming the description are individually identified, but not so for the main request. This clearly implies that the main request is based on the patent documents as granted with no amended description pages, i.e. what one would expect from a request to maintain the patent as granted. The board has thus no doubts on which patent documents the appellant proprietor requested maintenance of the patent for each one of the main or 1st to 4th auxiliary requests. [2.8] The appellant opponent further requested that the case be remitted to the OD in order not to loose (sic) two instances in case that the board admitted the main request into the proceedings. [2.9] Remission to the department of first instance is explicitly foreseen in Article 11 RPBA only if fundamental deficiencies are apparent in the first instance proceedings unless special reasons prevent from doing so. Thus even in case of a fundamental deficiency the discretion of the board is still required, with the emphasis being made however that remittal is the normal course of action in such a situation. This implies that in cases in which no fundamental deficiency is apparent, as in the present case, remittal of the case to the department of first instance is a discretionary issue which lies within the sole competence of the board. [2.10] The OD found the main request not allowable, since the windscreen of claims 1 and 2 lacked novelty over A1. It is thus unlikely that the OD would have a different view on a claim having allegedly a larger scope, since the removal of the characterizing feature merely renders implicit what has been previously made explicit. Remitting the case to the OD would thus result in a foreseeable outcome, namely that the present main request be found not allowable for exactly the same reason as before, i.e. lack of novelty over A1. The remittal would thus serve no other purpose than wasting time and resources. [2.11] The board for these reasons decides to admit the main request into the proceedings and not to allow the appellant opponent’s request to remit the case to the department of first instance on the basis of the main request. The Board then discussed sufficiency of disclosure and found the invention to be sufficiently disclosed. The main request and first auxiliary request were found to lack novelty. The subject-matter of the second auxiliary request was found to be novel, but the Board was not able to take a final decision on inventive step: [6.4.1] The OD based its assessment of inventive step when discussing the proprietor’s 3rd auxiliary request on a prior art that it identified as A0, which was acknowledged but not identified in the opposed patent in paragraph [0013]. It considered this prior art to be closer to the invention as document A1 and started from A0 as the closest prior art. The OD came to the conclusion that the invention claimed in the proprietor’s 3rd auxiliary 744 | 3398
T 671/08 – Bits & Pieces
K’s Law – The ebook
request, which corresponds to the appellant proprietor’s 2 nd auxiliary request in appeal, involved an inventive step even when starting from A0 (decision under appeal, reasons E4). [6.4.2] It is however the established case law of the boards of appeal that it is not allowable to base the assessment of substantive patentability (novelty and inventive step) upon subject-matter not identified as forming part of the state of the art within the meaning of A 54(2) EPC 1973 (cf. Case Law, 6th ed., 2010, I.C.1.4). [6.4.3] The appellant proprietor contested at the oral proceedings (OPs) before the board that the unidentified prior art mentioned in the opposed patent at paragraph [0013] was state of the art under A 54(2) EPC 1973. The board is therefore impeded from considering this unidentified prior art for the assessment of inventive step. [6.4.4] On the other hand, the board shares the view of the OD that document A1 does not represent a realistic starting point for assessing inventive step. The skilled person would not start from a document disclosing the properties of slot antennas when confronted with the problem of how to transmit data through a heatable windscreen. Document A1 is an accidental disclosure that may be considered when assessing novelty, but not as starting point when assessing inventive step. [6.4.5] The appellant opponent requested that documents A2 to A12 and D13 be admitted into the proceedings. The appellant proprietor requested not to admit these documents as they were belated. [6.4.6] The OD decided not to admit documents A2, A3, A5 and A7, since they were belated and prima facie not more relevant than document A1 (reasons, A2). The board sees no reasons to depart from this assessment and the appellant opponent did not argue that the OD exerted their discretionary powers in the wrong way. Documents A4 and A6 were never relied upon neither in the opposition nor in the opposition appeal proceedings. Documents A8 to A12 were submitted with the statement of grounds of appeal and were thus never considered by the OD. Documents A9, A10 and A11 appear prima facie to correspond at least in part to the prior art mentioned in paragraphs [0012] and [0013] of the opposed patent and would appear thus to represent a realistic starting point for the assessment of inventive step. The board finds documents A8 and A12 to be less relevant than documents A9 to A11 and thus does not admit documents A8 and A12. As decided under point [4.1.6] of this decision, the board does not admit document D13 as well. [6.4.7] The board decides for these reasons to admit documents A9, A10 and A11 into the proceedings and to remit the case to the department of first instance for prosecution on the basis of the appellant proprietor’s 2nd auxiliary request (A 111(2) EPC 1973). For the sake of completeness, the board wants to emphasize that the other findings in this decision, i.e. the issues of sufficiency of disclosure, added subject-matter, clarity and novelty, are part of the ratio decidendi of this decision and binding on the OD (A 111(2) EPC 1973). These issues have been finally decided by the board and cannot be raised again or contested by the parties. Apportionment of costs [7.1] With letter dated 29 December 2011 the appellant opponent raised a new objection under A 100(b) EPC 1973 arguing essentially that even nowadays it was not possible to manufacture an electric conductive coating being sufficiently transparent for a windscreen and having an electric resistance low enough to allow sufficient heating of the windscreen. [7.2] The objection under A 100(b) EPC 1973 raised in the opposition proceedings was directed at the method of claim 9 of controlling heat dissipation in a windscreen with a transmission window, since the presence of a transmission window disturbed the current flow […]. The objections under A 100(b) EPC 1973 raised in the statement of grounds of appeal relied on the position of the transmission window […] and on the method of controlling heat dissipation in a windscreen with a transmission window […]. [7.3] At first OPs held on 11 January 2012 the appellant proprietor stated that it had been impossible to prepare a proper reply to this new objection under A 100(b) EPC 1973 due to the new year’s festivities. He thus requested adjournment of the OPs and repartition of costs.
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T 671/08 – Bits & Pieces
K’s Law – The ebook
[7.4] The board considers the appellant opponent’s objection to be a fundamental one that could not be ignored. This objection of insufficient disclosure is however different from the previously raised objections in the opposition proceedings and in the appellant opponent’s statement of grounds of appeal. It is directed to the impossibility of making an automotive windscreen glazing panel having an electrically heatable solar control coating layer independently from the presence or absence of a transmission window. [7.5] The fundamental nature of the new objection would hence render any discussions on novelty and inventive step meaningless, had it been left unresolved. This case is thus an exception to the principles set out in Article 13(3) RPBA where amendments to a party’s case should not be admitted into the proceedings when their admission would lead to an adjournment of the OPs. Article 23 RPBA specifies namely that the Rules of Procedure shall be binding on the Boards of Appeal, provided that they do not lead to a situation which would be incompatible with the spirit and purpose of the Convention. Not admitting this objection would have gone against the principle of examination of its own motion enshrined in A 114(1) EPC 1973, since A 114(2) EPC 1973, which limits this principle and gives the EPO the discretion to disregard late filed facts or evidence, does not apply to late filed arguments. The appellant opponent’s objection under A 100(b) EPC 1973 is a late filed argument that, in the board’s view, cannot be disregarded without going against the spirit and purpose of the EPC. [7.6] It was the late filing of this objection that made it impossible for it to be discussed at the first OPs without violating the appellant proprietor’s right to be heard (A 113(1) EPC 1973). It was thus the behaviour of the appellant opponent that made the adjournment of the OPs before the board necessary. The board considers it thus equitable that the appellant opponent bears all the costs incurred by the appellant proprietor in relation to the OPs of 11 January 2012, as requested by the appellant proprietor (A 104(1), Article 16(1)(a) and (2) RPBA). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 494/09 – “Interpret” Interpreted
K’s Law – The ebook
T 494/09 – “Interpret” Interpreted 15 Jan 2013
The opponent filed an appeal after the Opposition Division had maintained the patent in amended form. Claim 1 of the main request before the Board read (in English translation; amendments with respect to claim 1 as granted are underlined) 1. A method for preparing a factor VIII solution which is virally secure, according to which:
a solution that has been previously purified, containing factor VIII-von Willebrand factor (factor VIII-vWF) protein complexes, is prepared; a step allowing to dissociate the high molecular weight factor VIII-vWF complexes by means of a chaotropic ion present in sufficient amount to enable the dissociation, as well as to obtain a solution that is essentially devoid of factor VIII associated with vWF of high molecular weight, is carried out; a step of filtration of said solution through a hydrophilic filter having a porosity of 15 nm at most is carried out.
Claim 1 as filed had contained the feature that the solution contained factor VIII “of high or very high purity”, but the IPEA had raised a clarity objection, which had led the applicant to delete this feature. In what follows, the Board examines the above claim as to its compliance with A 123: *** Translation of the French original *** [1] The question arises whether the skilled person would have deduced the claimed process having the feature “a solution that has been previously purified, containing factor VIII-vWF protein complexes is prepared” from the original patent application. [2] The [patent proprietor] considers that the skilled person would understand that the expressions “previously purified” and “of high or very high purity” are synonyms in the context of the description. The [patent proprietor] pointed out that in this context, according to A 69(1), the claims have to be interpreted taking into account the description, and that the skilled person would interpret claim 1 such that the feature “a solution that has been previously purified is prepared” in claim 1 would incite him to prepare a starting solution having “high or very high purity”. [3] According to the Board, the skilled person would only understand from the context of claim 1 and its feature according to which “a solution that has been previously purified is prepared” that a purification has to take place beforehand and that it has to be such that the other method steps can be performed in a technically reasonable way. However, the skilled person would not implicitly understand that this can only be done if the starting solution is purified such that it has a degree of purity that can be qualified as “high or very high”. In other words, in the context of claim 1, the skilled person would not implicitly establish a link between the expressions “previously purified” and “of high or very high purity”. [4] The Board is not persuaded by the argument of the [patent proprietor] according to which a limitative interpretation of the expression “previously purified” follows from the interpretation of claim 1 under A 69(1). [5] A 69(1) governs the interpretation of claims when it comes to determining the scope of protection, and, as a consequence, it is questionable whether this article can be used for interpreting claims when the allowability of amendments is examined (see Case Law, 6th edition, 2010, II.B.5.3.1, first paragraph).
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T 494/09 – “Interpret” Interpreted
K’s Law – The ebook
[6] However, if the reasoning of the [patent proprietor] is followed, the mere disclosure of a meaning in the description – i.e. previously purified to a high or very high degree of purity, see point [2] above – would allow to interpret in a limitative way the expression “previously purified” in claim 1. [7] According to the Board, the term “interpretation” in A 69(1) cannot possibly be interpreted in such a way as to justify such an approach (in this context, also see Case Law, 6 th edition, 2010, II.B.5.3.4, second to seventh paragraphs). The Board is of the opinion that this already follows from the mere fact that A 69(1) stipulates that the description and drawings shall be used to interpret the claims. This article, therefore, implies that one has to attach great importance to the wording of the claims rather than to the wording of the description. [8] As a consequence, claim 1 has to be interpreted in such a way that it [also] covers processes having previous purification steps that result in starting solutions the degree of purity of which is less than “high or very high”. [9] Thus it follows from points [2] to [8] above that claim 1 extends to methods that are not comprised in the content of the application as originally filed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2120/08 – Too Long
K’s Law – The ebook
T 2120/08 – Too Long 14 Jan 2013
In this examination appeal the Board inter alia had to decide on the clarity of claim 1 of the main request filed during the oral proceedings before the Board, which read: A process for the manufacture of an endless multifilament aramid or glass yarn provided with a superabsorbent material having a swelling value of at least 60 (as specified in the description) and having hydrophilic properties, which yarn is capable of absorbing and retaining quantities of water and suitable for optical communication cables, wherein an aqueous solution comprising a water-soluble pre-superabsorbent material selected from polymers derived from acrylamide, from acrylamide and sodium acrylate, and from acrylamide and dialkylaminoethylmethacrylate is applied onto the yarn, after which the yarn is dried and heated at 100 to 300°C in order to cross-link the water-soluble pre-superabsorbent material to the superabsorbent material. (my emphasis) [4] In present Claim 1, the Board’s objection that the term “pre-superabsorbent” lacked a clear definition has been overcome by specifying the kind of material meant (namely, selected from polymers derived from acrylamide, from acrylamide and sodium acrylate, and from acrylamide and dialkylaminoethylmethacrylate). [4.1] As regards the reference to the description for the meaning of the “swelling value” and the manner according to which it is determined, it aims at clarifying the scope of Claim 1, as this parameter does not have a well-recognized meaning in the art, whilst safeguarding its conciseness. In fact, the description for determination of the swelling value in the application as filed (page 7, line 27, to page 8, line 28) is in the present case too long to be included in Claim 1, so that the repetition of the full description of the method in Claim 1 would result in a lack of conciseness. Hence, the reference “(as specified in the description)” is in the present case absolutely necessary (R 43(6)) (Case Law, 6th edition, 2010, II.B.1.1.2 and 1.1.3, e.g. in connection with T 908/04 or T 1156/01) in order to fulfil both requirements under A 84 that the claim must be clear per se and concise, in particular as regards the definition of the “swelling value”. 4.2 Therefore, Claim 1 of the Main Request fulfils the requirements of A 84. NB: Not long ago, T 830/08 found another allowable exception to R 43(6). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
749 | 3398
T 1577/07 – Democracy: An Obvious Choice
K’s Law – The ebook
T 1577/07 – Democracy: An Obvious Choice 12 Jan 2013
This is an examination appeal; the Examining Division (ED) had refused the application for lack of inventive step. Claim 1 of the second auxiliary request before the Board read: A display control apparatus for controlling display of information, the apparatus comprising: a display control means for displaying, on a display device (24), a cursor (Cur-1) movable by a user and link parts (a-d) to items of information; a selecting means (12) for selecting one of said items of information based on a link part designated by said cursor displayed on said display device; and an acquisition means (12) for acquiring said item of information selected by said selecting means; characterised in that: said display control means (12) is operative to display, on said display device (24), a plurality of cursors (Cur-1 ... Cur-n) movable by respective plural users and to permit each cursor to be settled on one of the link parts (a-d) to an item of information that is desired by the user of that cursor, said display control means (12) being further operative to display a position settled cursor with a different shape or colour from a cursor before position settlement in order for users to recognize the position settlement of cursors operated by other users; and said selecting means (12) is operative to select one of said items of information based on all of the links selected by the settled cursors, thereby to decide which item of information to access next taking account of competition among the users, based on a majority decision among the link parts selected by all of the settled cursors. (my emphasis) The Board confirmed the ED’s analysis and dismissed the appeal. Here is why: [2] The Board cannot see any prejudicial error in the ED’s conclusion or the reasoning […] that the subjectmatter of all requests does not involve an inventive step (A 56 EPC 1973). [3] In particular, taking the more limited claim 1 of the second auxiliary request as a concrete example, the Board agrees with the ED […] that no technical considerations are involved in deciding to base a decision arrived at by a plurality of persons on the principle of a majority vote as opposed to the first come first served principle underlying the invention described in D1. The decision to implement a democratic majority rule instead of a first come first served rule merely reflects a different choice of social interaction concerning the manner of decision taking. The appellant argued that the technical considerations appeared in the form of an improved manmachine interface involving navigation where plural cursors are in a contentious state. In the Board’s view, however, these considerations mix up the non-technical aspects of resolving contention and the technical aspects of the implementation, the latter being obvious to the degree claimed […] once the problem has been posed. [4] Moreover, in the Board’s view, the idea of resolving the contention with a majority vote would be an obvious solution in any case. Faced with the problem of processing the input from a plurality of users, the Board considers that the skilled person would recognise determining the result based on a majority vote as an obvious alternative to the first come first served principle of D1. There may be other solutions, but in the Board’s view, the majority vote remains an obvious one. [5] The appellant argued that the argument starting from D1 involved a “category error” since D1 did not relate to a plurality of users each having permission to act. In D1 there was therefore no need to make a decision whereas the thrust of the claimed invention was to make a decision. D1 did not use or suggest any decisionmaking rule, not even according to a “dictatorship” principle since D1 disclosed […] that other users could force the active user to relinquish control. Thus D1 was concerned with the later stage of implementing the first come first served principle, but not with the general question of how to resolve contention between users.
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T 1577/07 – Democracy: An Obvious Choice
K’s Law – The ebook
However, in the Board’s view, the disclosure of the invention of D1 should be read against the background and purpose disclosed in the introduction discussed by the ED […], namely overcoming the problem of the conflicts between input of information by multiple users at the same time. Thus, the skilled person would realise that D1 solves the general problem […] that when a plurality of users have input permission, it is hard to follow what is going on and they may interfere with each other. One of the solutions proposed […] is to let only one user have input permission at a time. This is said to have drawbacks, but in the Board’s view it would nevertheless suggest to the skilled person the possibility of this type of solution. Another solution […] is to show the cursors of all users at the same time. In the Board’s view, the skilled person would also consider this display possibility independently of the adopted conflict resolution principle. [6] The appellant argued that D1 only related to inputting data in an application, the only example given being that of a helpline, whereas the invention related to selecting links in a browser. Firstly, the Board is not convinced that the claimed accessing of “items of information” via “link parts” does not cover selecting parts of an application. In particular, D1 discloses […] “clicking with a mouse”. Moreover, the Board agrees with the ED […] that the skilled person would realise that the resolution of the conflict between users does not depend on the type of application involved. [7] Accordingly the Board judges that claim 1 of the second auxiliary request and thus also the broader main request does not involve an inventive step. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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K’s Law – The ebook
Publish Or Perish (ctd.)
Publish Or Perish (ctd.) 12 Jan 2013
Number of decisions published on the DG3 case law webpage. It is time to have a look at the DG3 activity in 2012. As you can see, the Boards have published almost 1500 decisions, which is more than in the previous years (except 2009, that is). That being said, it was not an easy year for K’s Law, because the number of noteworthy (i.e. somewhat surprising, illuminating or simply very pedagogical) decisions was not greater (and perhaps even smaller) than the years before. So I had a hard time filling my schedule. Obviously, if this trend continues, I will reduce my posting rate. There was no big surprise in the release rhythm during the fourth quarter, except perhaps the big isolated bunch in November and a certain fébrilité in December:
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T 1650/08 – Oh Yes We Can
K’s Law – The ebook
T 1650/08 – Oh Yes We Can 11 Jan 2013
I am sorry to present yet another “admissibility of requests” decision, but there is not much exciting stuff out there right now. This is an appeal against the revocation of the opposed patent. The decision was based on A 123; A 54 and A 56 were not discussed. As so often, the patent proprietor filed requests one month before and also during the oral proceedings (OPs) before the Board, and as so often, the Board refused to admit these requests. The decision is interesting because there was a debate on the grounds the Board had to base its prima facie allowability review on. [1] The main request and auxiliary request I were filed one month before OPs, and auxiliary requests II and III were filed during the OPs. [2] According to Article 13(1) RPBA, any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised inter alia in view of the complexity of the new subject matter, the current state of the proceedings and the need for procedural economy. [3] The board will therefore examine whether the late filed requests are in line with these principles. [4] With regard to the procedural economy, the admission of new requests at a very late stage of the proceedings, i.e. shortly before or on the day of OPs, is only in keeping with this principle if the requests are not unsuitable from the outset to overcome the objections as to the allowability of the claims. This means that there must be no doubt that the late-filed requests meet the formal requirements and that they constitute a promising attempt to counter all outstanding objections (cf. Case Law, 6th edition, VII.E.16.4.1, and VII.E.16.5.4; cf. e.g. also T 33/07; T 321/07; T 1168/08; T 1634/09). The board will therefore not limit its preliminary assessment to issues under A 123(2) and A 123(3) but will include issues under A 54 and A 56. [5] The [patent proprietor] argued that the board, when exercising its discretion, could only take into account issues which were dealt with in the decision under appeal, i.e. only issues under A 123(2) and A 123(3). Based on decision T 384/91 in connection with decision G 1/93, and on decision G 9/91, it reasoned as follows: In decision G 1/93, the Enlarged Board of Appeal (EBA) had defined the conditions under which a patent could be maintained unamended despite it containing subject matter extending beyond the content of the application as filed. Based on G 1/93 [13], the competent board in decision T 384/91 concluded that the assessment whether the exception provided for in the EBA’s decision applies in a particular case should only rely on the technical relationship of the added feature with the content of the application as originally filed. The assessment could not depend on considerations of the prior art. The same conclusion could be derived from decision G 9/91 [18], where the purpose of an appeal procedure was described as mainly giving a losing party the possibility of challenging the decision of the opposition division (OD) on its merits, and where it was explicitly stated that it would not be in conformity with this purpose to consider grounds of opposition on which the decision of the OD had not been based. Since the decision under appeal dealt exclusively with issues under A 123(2) and A 123(3), the board was barred from including considerations of other grounds of opposition when assessing the admissibility of [patent proprietor’s] requests. [6] The board is not convinced by these arguments. 753 | 3398
T 1650/08 – Oh Yes We Can
K’s Law – The ebook
Decision G 1/93 addressed the specific problem of the relationship between the provisions of A 123(2) and (3), and analysed the conditions under which it was possible to maintain a granted claim containing subject matter extending beyond the content of the application as filed. When discussing the relationship between these provisions (cf. points [5] and [13] of the reasons), the EBA stated that both were mutually independent of each other and of equal weight, and that there was no room for an interpretation of this relationship depending on the facts of the individual case, i.e. depending on prior art considerations. In the present case, the board is not examining [patent proprietor’s] argument that the last half sentence of feature (d) of claim 1 as granted represented a limiting feature according to G 1/93 [headnote 2]. The question addressed by the board is that of the admissibility of late filed requests, and in this respect, decision G 1/93 is silent. Decision G 9/91 was concerned with the question if the power of an OD or a board of appeal to examine and decide on the maintenance of a patent depended on the extent to which the patent was opposed in the notice of opposition. Regarding the purpose of appeal proceedings as mainly giving the losing party an opportunity to challenge a decision from an OD, and in view of the judicial nature of appeal proceedings, the EBA decided that it would in principle not be justified to introduce fresh grounds for opposition at the appeal stage (cf. Reasons, point [18]). In the present case, novelty and inventive step were grounds of opposition from the beginning of the procedure, and the board is assessing a different question, i.e. the admissibility of late filed requests. The conclusions drawn in decision G 9/91 do not relate to the present case. Thus, there is no legal reason preventing the board, when exercising its discretion under Article 13(1) RPBA, from taking into consideration the issues of novelty and inventive step on which the opposition was based from the very beginning. [7] When deciding on the admissibility of late filed requests, the board does not consider it as a necessary prerequisite that the proposed amendments overcome all outstanding objections with certainty but that they result at least in an arguable case. The board sees no reason in admitting amendments which would result in clearly non-allowable requests as this would only lead to unnecessary delays. [8] The [patent proprietor] submitted that the late filed requests represented promising attempts to overcome all outstanding issues. [9] In its communication accompanying the summons to OPs, the board had expressed its preliminary opinion that the last half sentence of part (d) of claim 1 referred to a property of a packaging vector but did not further specify the technical properties of the claimed retrovirus. In view of this preliminary opinion, the [patent proprietor] argued that the last half sentence of part (d) should be simply ignored when determining whether the main request and auxiliary request II met the requirements of A 123(2). For the same reason, the deletion of the last half sentence of part (d) in auxiliary requests I and III should have no consequences under the provisions of A 123(3). The board agrees that the proposed amendments to part (d) of claim 1 could be regarded as a promising attempt as far as issues under A 123(2) and A 123(3) EPC are concerned. It remains however to be established if this also applies to the objections under A 54 and A 56. [10] The subject matter of claim 1 of the main request is a replication defective pseudotyped HIV-based retrovirus. It comprises a HIV GAG protein (feature (a)), a HIV POL protein (feature (b)), an ENV protein selected from the group of ENV proteins listed in feature (c), among others from a Moloney Murine Leukemia virus, and a retroviral genome comprising a heterologous nucleic acid linked to a regulatory nucleic acid sequence, at least one HIV cis-acting nucleic acid sequence necessary for reverse transcription and integration, and a HIV retroviral packaging site comprising a 5’ splice donor sequence and a psi sequence (feature (d)). [11] From the beginning of the opposition procedures, the [opponent] had argued that the claimed retrovirus lacked novelty over document D10. [12] Document D10 discloses the production of a replication deficient retroviral HIV based retrovirus comprising a HIV GAG, POL and ENV protein (features (a) to (c)) and a retroviral genome comprising cisacting HIV sequences necessary for reverse transcription and integration, and a packaging sequence including the 5’ splice donor sequence and a psi sequence (feature (d)) (for the retroviral genome cf. Figure 2, vector
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T 1650/08 – Oh Yes We Can
K’s Law – The ebook
“HVB(SL3NEO)”, and page 16; for features (a) to (c) cf. Figure 2, vectors “HXB?P1?env” and “pSVIIIenv3-2”, and e.g. Table II). The retrovirus disclosed in the examples of document D10 comprises HIV ENV and thus differs from the retrovirus of claim 1 of the main request by the nature of the ENV protein. The disclosure of document D10 is however not limited to the examples. It refers inter alia to pseudotyping as a way to increase the virus host range (cf. page 30: “in light of recent observations demonstrating that HIV can be pseudotyped with the envelope glycoproteins of other viruses, increasing the host range of these vectors is feasible”). In the same context, it also contains an explicit reference to a particular document describing the pseudotyping of a HIV virus (cf. page 13: “HIV can be pseudotyped with the envelope glycoproteins of other viruses. [(Lusso, P. et al., Science 247:848851 (1990)]. Consequently one can prepare a vector containing a sufficient number of nucleotides to correspond to a functional env gene from a different retrovirus”). The document referred to, Lusso et al., is document D11 in the current proceedings. It discloses a HIV vector pseudotyped with an ENV protein from an amphotrophic Murine Leukemia virus (MLV) (cf. feature (c) of claim 1). [13] The [opponent] argued that document D10 directly affected the novelty of claim 1 because it contained an explicit reference to document D11. [14] The [patent proprietor] submitted that document D10 did not affect novelty of any of the requests because it merely contained a reference to a further publication without disclosing any of the specific heterologous ENV proteins defined in part (c) of claim 1. [15] The board agrees with the [patent proprietor] that the proposed amendments to claim 1 represent at least an arguable case to overcome the novelty objections but it disagrees with the [patent proprietor] with regard to inventive step. [16] Document D10 suggests pseudotyping in general terms as a solution if one wishes to increase the host range of the disclosed retroviruses (cf. point [12] above), and, by reference to document D11, directly points to one of the replication defective pseudotyped HIV based retroviruses as defined in claim 1. Therefore, the board is convinced that claim 1 of the main request is clearly unallowable under the provisions of A 56. [17] The proposed amendments in claim 1 of auxiliary requests I to III concern the deletion of the last half sentence of part (d) (auxiliary requests I and III) and the addition of the feature “and wherein said HIV-based retrovirus is produced by a suitable packaging host cell” (auxiliary requests II and III), respectively. As explained above (cf. point [9)], the last half sentence of part (d) specifies properties of a packaging virus without affecting the technical features defining the claimed replication defective retrovirus, and removal of this feature does not alter the technical specification of the claimed retrovirus. The same is true for the addition of the new process feature to part (d). It does not alter the definition of the claimed retrovirus. Since the technical features of the replication defective recombinant retroviruses of the main request and of auxiliary requests I to III are identical, the conclusions reached in respect of the main request equally apply to auxiliary requests I to III. [18] For these reasons the board decided not to admit any of the requests into the proceedings. NB: This decision was reported on Le blog du droit européen des brevets (here) Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2052/09 – Cutting The Bone
K’s Law – The ebook
T 2052/09 – Cutting The Bone 10 Jan 2013
This is an examination appeal that might help you become familiar with some intricacies of G 1/07. The application dealt with guidance in adjusting bone incision blocks. Its independent claims were directed at a bone incision block with an incision guide comprising an adjustable localisation reference that allows to define an incision plane (claim 1) and a method claim 12 that read (English translation): Method for user guidance in setting an incision plane of an incision guide (2) of a bone incision block (1) that comprises an incision guide adjustment device (4), wherein
a target incision plane is defined ; an actual incision plane is spatially determined by means of a localisation reference (6) that is adjustably, e.g. rotatably, attached to the incision guide (2) ; the spatial position of the adjustment device (4) is determined by means of a registration element (5); and wherein depending on the spatial position of the adjustment device (4), adjustment instructions are output, which, starting from the actual incision plane, assist the user in setting the target incision plane.
The Examining Division (ED) was of the opinion that the two first steps of the claimed method necessarily implied fastening the bone incision block to the bone, so that the method comprised a surgical step and was excluded from patentability under A 53(c). The applicant filed an appeal. Its new main request contained a method claim 10 that read: Method for user guidance in setting an incision plane of an incision guide (2) of a bone incision block (1) that comprises an incision guide adjustment device (4) and that has been fastened to a bone before the method is carried out, wherein
a target incision plane is defined ; an actual incision plane is spatially determined by means of a localisation reference (6) that is adjustably, e.g. rotatably, attached to the incision guide (2) ; the spatial position of the adjustment device (4) is determined by means of a registration element (5) comprising a reference that is fastened (fest angeordnet) to the adjustment device (4), wherein the reference is punctiform or two-dimensional; and wherein depending on the spatial position of the adjustment device (4), adjustment instructions are output, which, starting from the actual incision plane, assist the user in setting the target incision plane. (my emphasis)
In what follows the Board deals with the question of whether this method is surgical within the meaning of the EPC. *** Translation of the German original *** Surgical methods The method claim on which the decision of the ED was based [2.1] The ED was of the opinion that the two first steps of the claimed method, i.e. the definition of a target incision plane and the spatial determination of an actual incision plane by means of a localisation reference that 756 | 3398
T 2052/09 – Cutting The Bone
K’s Law – The ebook
is adjustably, e.g. rotatably, attached to the incision guide, necessarily imply fastening the bone incision block to the bone, so that the method comprised a surgical step and, therefore, was excluded from patentability under A 53(c). The actual incision plane can indeed only been determined when the incision guide of the bone incision block is in a fixed relation to the bone, i.e. when the bone incision block has been anchored to the bone. Even if it is possible in theory to maintain the bone incision block in its position without anchoring it to the bone, as the appellant has asserted, in the opinion of the Board this does not change the fact that the general wording of the claim also encompasses the situation where it is fastened to the bone, i.e. a surgical step, as described, for instance in paragraphs [0019] and [0029] of the description:” “The bone incision block 1 is fastened to a lower leg bone 20 via its fastener 3 (Figure 2), and in particular screwed on or held by Schanz screws, Kirschner wires or similar fastening media. The adjustment device 4 is connected to the fastener 3 and the incision guide 2 is fixed to the adjustment device 4. ” “When the incision guide 2 and the adjustment device 4 are connected to one another in a desired configuration, the localisation reference 6 is attached to the incision guide 2. When assembled, the bone incision block 1 can be placed (e.g., screwed) onto the bone at any point near the resection area. ” In its decision G 1/07 [headnote 2a], which has been issued in the meantime, the Enlarged Board has confirmed that “a claim which comprises a step encompassing an embodiment which is a “method for treatment of the human or animal body by surgery” within the meaning of A 53(c) cannot be left to encompass that embodiment.” Thus the Board shares the opinion of the ED in regard of the method claim on which it had to decide. The appellant was of the opinion that exceptional provisions had to be interpreted narrowly and that, as a consequence, the claimed method was not to be excluded from patentability. However, according to G 1/07 [3.1], no general principle of narrow interpretation of exclusions from patentability which would be applicable a priori to the interpretation of any such exclusions can be derived from the Vienna Convention on the Law of Treaties. Rather, an exceptional provision of the EPC has to be interpreted in the same manner as any other provision on patentability, i.e. in such a manner that it takes its effect fully and achieves the purpose for which it was designed. Main request Method claim 10 [2.2.1] In contrast to the method claim on which the impugned patent was based, the wording of present claim 10 now is: Method for user guidance in setting an incision plane of an incision guide (2) of a bone incision block (1) that comprises an incision guide adjustment device (4) and that has been fastened to a bone before the method is carried out, … The addition of “fastened to a bone before the method is carried out” is intended to express that the step of fastening the bone incision block to the bone is not claimed or takes place before the claimed method begins, respectively. The remaining wording of the method claim was not amended, and the first method step still reads: “a target incision plane is defined”. As a consequence, the present wording of the method claim is directed at a method where the target incision plane is only to be defined after the bone incision block has been fastened to the bone. [2.2.2] Thus the question arises whether the method that is being claimed is not covered by A 53(c) any more, and/or whether it is admissible at all in the case of the disclosed method to exclude the surgical step of fastening the bone incision block to the bone in this way, respectively.
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T 2052/09 – Cutting The Bone
K’s Law – The ebook
First it has to be noted that contrary to the opinion of the appellant, the wording it has chosen (“fastened to a bone before the method is carried out”) does not qualify as a “disclaimer solution” according to G 1/07 [4.2.1]. What is to be examined here is the omission or exclusion of a step, which is discussed in G 1/07 [4.3]. [2.2.3] The Board is of the opinion that the method disclosed in the original application does not envisage the case where the target incision plane is defined in the operating theatre, i.e. during surgery, after the bone incision block has been fastened to the bone. Quite to the contrary, in the computer-assisted bone resection method disclosed in the present application the target incision plane is not defined in the operating theatre but before, during the diagnosis or therapy planning phase, respectively. The target incision plane is then stored in the navigation system, as can be seen, for instance, from paragraph [0004] (underlining added): “An adjustment means can be used to set the incision plane in the ‘slope’, ‘varus-valgus’ and ‘resection depth’ degrees of freedom typical for bones, in accordance with the pre-sets of the navigation system (target incision plane). However, this can be problematic when the bone incision block (in particular the adjustment means) is fastened to the bone such that the operating elements are not clearly assigned to the degrees of freedom of the incision plane defined by the incision guide. In such cases, for example, operating an element may result in a change in more than one degree of freedom, or two operating elements may need to be activated in order to adjust in one degree of freedom. Finding the most favourable way to complete the adjusting process in the shortest period of time then depends largely on the knowledge and experience of the operator. Although the target incision plane is pre-set by navigation, it is often difficult to set the incision guide in accordance with target incision plane and/or pre-sets without assistance, especially if the incision block is arranged unfavourably on the bone. If unfavourably arranged on the bone, an iterative procedure may be necessary, since direct adjusting using the interdependence of the functional members is not possible.” The other parts of the application do not disclose a specific method where the target incision plane is determined after the bone incision block has been fastened to the bone, either. Quite to the contrary, according to the original application, in computer-assisted bone resections the actual incision plane has to be aligned (zur Deckung gebracht) with the target incision plane as quickly and precisely as possible (see e.g. paragraph [0005]). The obvious purpose of this is to keep the operating time as short as possible. Thus defining the target incision plane during the surgery, i.e. after fastening the bone incision block to the bone, would also run counter to the problem to be solved because the precise baselines (? Gründe) and the precise position of the position of the target incision plane would have to be determined during the surgery. It would be unusual to proceed in this way in the case of computer-assisted bone resections because it is much simpler and reasonable to define the target incision plane in advance, based on bone imagery. Thus the original disclosure does not contain, even implicitly, a method where the target incision plane is determined after the bone incision block has been fastened to the bone Moreover, the appellant has not provided the Board of appeal with any argument in this respect. [2.2.4] In the present case the solution proposed by the appellant in order to avoid the A 53(c) objection, i.e. the exclusion of the surgical step, is not available. As already mentioned above, the original application only discloses a method where the target incision plane is determined before the bone incision block is fastened to the bone. Thus the method disclosed in the original [application] necessarily comprises the surgical step of fastening the bone incision block to the bone (see e.g. T 1005/98). Therefore, it is not possible to exclude a surgical step that necessarily occurs, from a method claim if this step, in view of the overall disclosure of the application, necessarily occurs during and not before or after the disclosed method. By fastening the bone incision block to the bone the actual incision plane is determined. It is a purpose of the invention to align the actual incision plane with a predetermined target incision plane as quickly and precisely as possible. Thus it is of central importance to the problem to be solved by the invention to attach the bone incision block to the bone after the target incision plane has been determined.
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T 2052/09 – Cutting The Bone
K’s Law – The ebook
Consequently, this is not a surgical method step - to be performed on the body - which, although necessary for carrying out the claimed method, has no functional link with it and which could be excluded from the claim in the way requested by the appellant, in application of G 1/07 [4.3.2] (as, for instance, when a reference element is attached to the bone so that a method for determining the position of a bone guidance wire can then be carried out (see e.g. T 836/08 [3]) or, under certain circumstances, when a contrast agent is injected before an imaging method is performed, see T 266/07 [4]). Moreover, the present case does not concern a mere operating procedure for a device. Rather, fastening the bone incision block to the bone after the target incision plane has been determined is an essential step without which the sequence of the claimed method steps cannot be carried out at all and which cannot be excluded under A 84 in connection with R 43 because the invention is not fully and completely defined without this step (see G 1/07 [4.3.1]). Thus it is not possible in the present case to exclude the step of fastening the bone incision block to the bone in order to overcome the A 53(c) objection. [2.5] Therefore, the main request cannot be allowed. NB: The English translation of a similar case (T 923/08) is available on this blog (here). Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 569/08 – Predestined Yet Doomed
K’s Law – The ebook
T 569/08 – Predestined Yet Doomed 9 Jan 2013
Ye who have not amended before the ED, abandon all hope to do so later on. This is an examination appeal. The Examining Division (ED) had found the claims on file not to comply with the requirements of A 123(2). The Board confirmed this finding for the main request and the first auxiliary request and then dealt with the admissibility of auxiliary requests II and III that had been filed about one month before the oral proceedings (OPs) before the Board. *** Translation of the German original *** [4.1] An applicant shall be given at least one opportunity to amend the application of his own volition (A 123(1)). It is undisputed that in the present case the applicant has made use of this opportunity in the examination proceedings (R 86(3) EPC 1973 and R 137(2), respectively) and finally has decided to request the grant of a patent covering the combination of features M3+M4. [4.2] Even during the examination proceedings, further amendments of the application can only be made with the consent of the ED (R 86(3) EPC 1973 and R 137(3), respectively). In the present case the applicant has not tried to obtain the consent of the ED for some limited or alternative subject-matter in case that the objection of lack of disclosure of the combination of features M3+M4 was finally confirmed. Thus the ED had no reason to examine possible combinations of the original claim 1 with originally dependent claims as to their inventive step, because this question was not relevant for the decision on any of the requests before the ED. [4.3] The primary purpose of appeal proceedings is to review the correctness of the impugned decision. There may be amendments during the appeal proceedings in order to remedy formal or substantial deficiencies, but their admission is within the discretion of the Board. 760 | 3398
T 569/08 – Predestined Yet Doomed
K’s Law – The ebook
[4.4] Together with the statement of grounds of appeal, the appellant has pursued the subject-matter of the main request before the ED and limited its complete case correspondingly (Article 12(2) RPBA, OJ EPO, 2007, 536). It was only in response to the summons to OPs that the appellant has modified its submissions such that in case of a confirmation of the decision of the ED [the Board] should examine subject-matter that did not contain the combination of features M3+M4 any more. However, [the admission of] such amendments of the submissions during the appeal proceedings [is] within the discretion of the Board pursuant to Article 13(1) RPBA, which has to be exercised in view of the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy. [4.5] Thus the question arises whether in the present case the amendments are of the kind that could have been filed during the examination proceedings (Article 12(4) RPBA) or at least do not make the proceedings during the OPs so complicated that their admission would contradict the need for procedural economy (Article 13(1) and (3) RPBA). Auxiliary request III [5.1] Claim 1 of auxiliary request II essentially corresponds to a combination of features taken from original claims 1 and 3, together with a feature taken from the description (“wherein in the mobile radio unit (1, 15) the data transfer rate of the compressed is adapted to the data transfer rate of the fixed line network (45)”). The combination of features M3+M4, which had been considered to be the core of the invention up to then, was completely deleted. The argument that the inventions according to all the requests concerned methods where a physical data channel was allocated and a data transfer rate was adapted, is not persuasive because these features are too general to characterise the core of the invention(s). Therefore, the claimed subject-matter was very significantly amended with respect to the subject-matter underlying the impugned decision. [5.2] In the summons to OPs the Board essentially provisionally adopted, commented and completed the reasons for the impugned decision. The Board cannot see how the provisional opinion could have caused the amendments. Thus auxiliary request II does not constitute an amendment that would have been required because of the provisional opinion of the Board. [5.3] As the objections that formed the basis for the impugned decision have remained essentially unchanged during the proceedings leading to the OPs before the Board, the appellant could (and should) have filed auxiliary request II already during the examination proceedings, in which case the Board would have disposed of a corresponding first instance decision to be reviewed. Because of the significant shift of the claimed subjectmatter, the amendments would require the Board to conduct a debate on the inventive step of a subject-matter in regard of which the file did not contain any informed opinion of the ED. This is not what appeal proceedings are meant to be. The Board is of the opinion that in this case the need for procedural economy hinders it from remitting the case to the first instance. [5.4] As a consequence the Board exercises its discretion pursuant to Articles 12(4) and 13(1) RPBA by refusing to admit auxiliary request II, which for the first time comprises amendments of the claims that could have been filed before the ED, at least in the form of an auxiliary request, even as an amendment of the case, in order not to jeopardise the need for procedural economy. Auxiliary request III [6.1] Claim 1 of auxiliary request III essentially consists in a combination of the features of original claims 1, 2, 4, and 6. The search report was based on all original claims, which means that the claimed method is to be considered to have been searched. Just as claim 1 of auxiliary request II, present claim 1 does not contain the combination of features M3+M4 any more. [6.2] Normally claims that were filed as dependent claims and searched are predestined to be fall-back positions in case an independent claim is not allowable. However, this does not hold true at any stage of the proceedings because, depending on the stage of the proceedings, [the admission of] amendments of the application [is] subject to the discretion of the ED or the Board, respectively. As already explained under point [5.3] above, in the present case the shift of the subject-matter which is to be decided upon in the appeal towards subject-matter
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T 569/08 – Predestined Yet Doomed
K’s Law – The ebook
that could have been filed before the ED and which would have to be examined as to its inventive step for the first time during the OPs before the Board, would contradict the need for procedural economy. [5.6] As a consequence the Board exercises its discretion pursuant to Articles 12(4) and 13(1) RPBA by refusing to admit auxiliary request III, which for the first time comprises amendments of the claims that could have been filed before the ED, at least in the form of an auxiliary request, even as an amendment of the case, in order not to jeopardise the need for procedural economy. NB: The Board also offered a catchword: Even a combination of claims of the application as filed may be disregarded in appeal proceedings (see paragraphs [4] to [6]). Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 455/09 – From The Department Of Corrections
K’s Law – The ebook
T 455/09 – From The Department Of Corrections 8 Jan 2013
This is an examination appeal. Claim 1 before the Board read (in English translation): 1. Method for the treatment of a digital audio, image or video file, comprising a reduction phase were at least one couple of values of the file is reduced to a representative compressed value (QR), and a reconstitution phase where the file is reconstituted to its original form from said representative compressed value, characterised in that I. the reduction phase comprises
taking into account for said at least one couple of values of the file, one of these values being greater than the other (sic); determining of an integrating value VT consisting in the greater value of said couple, and an integrated value that is equal to the ratio of the smaller value VI and the integrating value VT; determining the representative compressed value QR based on which the couple of values of the original file can be recomposed, this representative compressed value QR being equal to the sum of a value CF that is equal to the rounded value of the integrated value VI /VT multiplied by ten, CF = (VI /VT ∙10), and the rounded value of the ratio of the integrating value VT and a coefficient CV that is variable according to the desired compression and error rates, multiplied by ten, QR = rnd [VT / CV ∙10]+ CF;
II. the reconstitution phase for the couple of values of the file comprises, consecutively, according to a process that is inversed with respect to the reduction phase:
calculating the reconstituted integrating value V T* by means of the relationship VT* = rnd [QR/10∙ CV)]; calculating the reconstituted smaller value VI* by means of the formula VI* = [VT*∙ CF/10]; reconstituting the file comprising the couple of reconstituted values VT* and VI*.
One of the issues discussed by the Board was whether the corrections under R 139 requested by the applicant were to be allowed. *** Translation of the French original *** [2.1] There are obvious inconsistencies in the description and the claims as filed, between the formulas for calculating the representative value QR and the reconstituted values VI and VT* on the one hand and the numerical examples that should exemplify them on the other hand. In order to be allowable, the correction of these errors pursuant to R 139 has to be obvious for the skilled person. The reconstituted value VI* [2.2] The original formula for calculating the reconstituted value V I* refers to a variable “CV” that is not described elsewhere and is clearly erroneous. The replacement of “C V” by “CF” is obvious in view of the fact that the formula has to correspond to the inverse of the formula for calculating C F. 763 | 3398
T 455/09 – From The Department Of Corrections
K’s Law – The ebook
Thus the formula may be corrected pursuant to R 139 to read: VI* = [VT*∙ CF/10]. The reconstituted value VT* [2.3] The original formula for calculating the reconstituted value VT* refers to a variable “VR” that is not described elsewhere and is clearly erroneous. In analogy to V I*, the replacement of “VR” by “QR” is obvious. Thus the formula may be corrected pursuant to R 139 to read: VT* = rnd (QR/10∙ CV). Representative value QR [2.4.1] The numerical example contains two obvious mistakes. The displacement of the opening bracket “[“ in the numerical examples for the values CF and QR (page 6, lines 15 and 16) is obvious because it has to delimit the argument of the rounding function in these examples. [2.4.2] The appellant requests the replacement of the original formula for calculating Q R, i.e. QR = rnd [VT / CV ∙10] + CF by the corrected formula QR = rnd [VT / CV]∙10 + CF. The Board finds this correction to be inacceptable, for the following reasons: The numerical value that is obtained for QR is 409 when the original formula is used, whereas the description (page 6, lines 15 and 16) is 407. The skilled person facing the obvious inconsistencies in the original disclosure would have (at least) two possible choices, i.e. either to correct the formula, as requested by the appellant, or to correct the numerical example. The calculation according to the corrected formula would yield the described value QR = 407. Based on this result, the reconstituted values would be VT* = 4070 and VI* = 2849. The calculation according to the original value would yield a value QR = 409. Based on this result, the reconstituted values would be V T* = 4090 and VI* = 2863. The reconstituted values obtained with the two alternatives are very close of the initial values 4024 and 2869, such that the skilled person could not exclude either alternative. The appellant points out that the reconstituted values according to the original formula were VT* = 4090 and VI* = 3681. The value for VI* was so far from the initial value 2869 that the skilled person would exclude this alternative and correct the formula rather than the numerical example. However, this conclusion presupposes that the skilled person would have understood that the value for CF to be used in the reconstitution formula was not the one obtained according to the description (page 6, line 7)
and to claim 1, but the one obtained by isolating the figure of units “9” of the QR value (“409”). This step is not explained in the original application, which only mentions the action of “dissociating the representative value (QR)” (see page 6, line 18). The need to isolate the figure of the units can only be deduced by analysing the corrected formula and, therefore, by setting aside the original formula, which is precisely the formula to be used for calculating QR in the alternative under consideration. The Board is of the opinion that the appellant’s reasoning is not convincing. . In conclusion, the skilled person, even if it envisaged only the two alternatives of correction mentioned above, could not exclude either with certainty. As a consequence, it is not apparent, directly and without ambiguity, that no other text than the one resulting from the correction could have been envisaged initially.
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T 455/09 – From The Department Of Corrections
K’s Law – The ebook
[2.4.3] Consequently, the correction under R 139, second sentence, of the formula for calculating Q R has to be refused. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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T 2273/10 – The Crux With Preferences
K’s Law – The ebook
T 2273/10 – The Crux With Preferences 7 Jan 2013
This appeal was filed after the Opposition Division had revoked the opposed patent the claims of which were directed at hair cleaning compositions. The statement of grounds of appeal (SGA) contained a main request and two auxiliary requests. On October 23, 2012, the patent proprietor filed a new main request and new auxiliary requests 3 to 5. On November 12, 2012, the patent proprietor filed new pages 10ter comprising two tables with disclaimers, both for the main request and auxiliary requests. Oral proceedings (OPs) were held on November 16, 2012. *** Translation of the French original *** Admissibility of the third auxiliary request [1.1] [Opponent 4] argued that the third auxiliary request, which had been filed during the OPs, was late filed and requested [the Board] not to admit it. [1.2] In its response, the [patent proprietor] has referred to its letter dated October 23, 2012, and in particular to the following passage […]: “Third auxiliary request It is identical to the main request filed together with the SGA, except that: (a) claim 1 has been amended by deleting potassium chloride (b) the correction of the second disclaimer corresponding to example 8 of document D2-2, indicating that (i) the glycerine concentration is 2% by weight rather than 4% by weight (ii) sodium hydroxide is used in a quantity (qs) that is sufficient to obtain a pH value greater than 6, or citric acid is used in a quantity (qs) that is sufficient to obtain a pH value greater than 5.5” [1.3] The Board notes that the three versions of page 10ter of the third auxiliary request that have been filed by letters dated February 8, 2011, October 23, 2012, and November 12, 2012, have finally been limited to one single version in the request filed during the OPs. Moreover, page 10bis has been added. Thus the complete set of claims has been presented for the first time during the OPs. [1.4] The argument of the [patent proprietor] according to which the omission of page 10 was an obvious error is not valid. The skilled person would only have considered that the wording of claim 1 of the third auxiliary request was identical to the wording of claim 1 of the main request filed together with the SGA – with the exception of amendments (a) and (b) mentioned in the above mentioned letter – if there had not been any contradictions between this information and the actual wording of claim 1 of the third auxiliary request. [1.5] However, there is such a contradiction, insofar as claim 1 of the third auxiliary request differs from claim 1 filed together with the SGA by additional features: The first disclaimer on page 10ter filed with the SGA contains PEG 120 Methyl Glucose Trioleate (Glutamate LT) and the second disclaimer mentions 0.3% by weight of a perfume. The version filed during the OPs discloses PEG 120 Methyl Glucose Dioleate (Glutamate DOE-120) and 0.1% by weight of a perfume.
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T 2273/10 – The Crux With Preferences
K’s Law – The ebook
[1.6] As a consequence of these additional differences, which are not described in the letter of the [patent proprietor], the skilled person has no reason to assume that the rest of claim 1 of the third auxiliary request has to be identical to claim 1 of the main request filed with the SGA. Consequently, the omission of page 10bis does not constitute an obvious error. [1.7] Moreover, in cases where considerable amendments are filed, the patent proprietor has to present complete requests sufficiently in advance so as to give the other parties the opportunity to prepare the OPs. This duty has not been complied with in the present case. [1.8] Therefore, the Board exercises its discretion and decides not to admit the third auxiliary request filed during the OPs. Main request – A 123(2) [2.1] Compared to claim 1 as filed, claim 1 of the main request inter alia contains the features that at least one electrolyte is sodium chloride or potassium chloride in amounts of 0.5 to 3% by weight, and that the total quantity of surfactant(s) is greater than 5% by weight of the active ingredient. [2.2] The [opponents] argued that these features corresponded to a selection from several lists. The [patent proprietor] replied that claim 1 corresponded to a combination of the most preferred features of the invention. [2.3] The Board does not share the opinion of the [patent proprietor]. [2.4] Claims 1, 12 and 13 as filed disclose that ingredient (b) of the liquid cleaning composition can be an electrolyte (in general), an alkali metal salt, sodium chloride, potassium chloride, or potassium sulphate. The last paragraph of page 4 as filed gives the same information but in addition specifies that sodium chloride, potassium chloride and potassium sulphate are preferred and that sodium chloride is particularly preferred. [2.5] Thus, the selection of sodium chloride and potassium chloride corresponds to the selection of a preferred ingredient and the particularly preferred ingredient. [2.6] Claims 14 and 15 as filed give information regarding the content of electrolytes that are present in the composition. Contents greater or equal to 0.25, from 0.25 to 5%, and particularly from 0.5 to 3% by weight are mentioned. Consequently, the selected content corresponds to a more particularly preferred feature. [2.7] Finally, claims 23 and 24 disclose the overall quantity of surfactants with respect to the total weight. The following contents are disclosed: greater than 5%, from 5 to 50%, from 6 to 50%, from 6 to 30% and from 8 to 25% by weight. The second paragraph of page 9 of the description as filed mentions that the most general content is greater than 5% by weight, that 5-50% is preferred and that the other values are more preferred. “Greater than 5% by weight”, as mentioned in claim 1 of the main request, corresponds to the most general range. [2.8] Consequently, the argument that of the [patent proprietor] that claim 1 only contains the most preferred features is not correct. [2.9] The application as filed discloses several possibilities for each of the three features mentioned above. In order to reach the claim wording, the skilled person has to make selections in several lists. These selections refer to preferred or non-preferred features. Moreover, the choice does not correspond to a limitation of the lists; rather, specific values or ranges have been chosen. Consequently, this is a selection and not a limitation of the lists. [2.10] Thus claim 1 of the main request does not comply with the requirements of A 123(2). The appeal was dismissed. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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T 1034/11 – Some Critical Remarks
K’s Law – The ebook
T 1034/11 – Some Critical Remarks 5 Jan 2013
This is an examination appeal. The Examining Division (ED) had found claim 1 on file to violate A 123(2) and had made “further remarks” according to which the subject-matter of claim 1 was not sufficiently disclosed (A 83), claims 8 and 18 violated A 123(2), claims 2 and 4 to 18 were not clear (A 84), claim 18 was not new over D3 (A 54) and claims 1 and 8 did not involve an inventive step with respect to D3 (A 56). The appellant filed claims that overcame the A 123(2) objection, but the ED did not grant interlocutory revision. The Board expressed its disagreement with the way in which the ED had proceeded: [2.2] Claim 1 according to the appellant’s main request […] is […] clearly directed to overcoming the only objection raised in section II (“REASONS FOR THE DECISION”) of the decision for refusing the application. […] [3.1] Under the heading “FURTHER REMARKS” in Section III. of the decision, the ED raised further objections under A 54, A 56, A 83 and A 84 against the patentability of the application. [… C]laim 1 was found not to be allowable for lack of inventive step of its subject-matter (A 56). [3.4] In summary, the ED arrived at the conclusion that the application as originally filed did not comply with A 83 because it did not disclose how to obtain the nonlinear coefficients referred to in claim 1. On the other hand, in its argumentation against inventive step, the ED considered that the same feature, which was regarded as not sufficiently disclosed in the application, belonged to the skilled person’s general knowledge. By combining D3 with this general knowledge, the skilled person would have arrived at the claimed subject-matter without involving an inventive step. [4.1] Apart from the evident incongruity between the arguments given in the contested decision to support the lack of disclosure (A 83) and the lack of inventive step (A 56), the only objection that appears to have been raised at the oral proceedings after the applicant had submitted an amended claim 1 (“main request II”) related to the lack of disclosure of a particular feature of this claim […]. Indeed, the format of the decision appears to confirm that the only reason for refusing the application was the lack of compliance of the amended claim 1 with the requirements of A 123(2). [4.2] As pointed out above, claim 1 according to the appellant’s main request no longer includes the offending feature and thus overcomes the A 123(2) objection given in the contested decision as ground for refusing the application. [5.1] According to the case law of the boards of appeal, an appeal by an applicant of the European patent is to be considered well founded within the meaning of A 109(1) if the main request of the appeal includes amendments which clearly meet the objections on which the ED’s decision to refuse the application was based. In such a case the department that issued the contested decision must rectify the decision. Irregularities other than those that gave rise to the contested decision do not preclude rectification of the decision (cf. Case Law, VII.E.13.1). [5.2] Despite the fact that the objection under A 123(2) given as reason for refusing the application had been overcome by claim 1 according to the main request, the ED decided not to grant the interlocutory revision under A 109(1). This appears to imply that the other objections raised in section III of the decision were regarded as being integral part of the reasons for refusing the application and that these objections had not been met by the appellant’s main request. [5.3] However, when a decision is based on several grounds supported by respective arguments and evidence, it is of fundamental importance that the decision as a whole meets the requirements of A 113(1). The fact that the appellant had no opportunity to comment on all the grounds on which the decision appears to have been based constituted a substantial procedural violation within the meaning of A 113(1) and R 103. 768 | 3398
T 1034/11 – Some Critical Remarks
K’s Law – The ebook
[5.4] For these reasons the decision under appeal must be set aside and the case remitted to the department of first instance for further prosecution. [5.5] In these circumstances, it is equitable to order the reimbursement of the appeal fee in accordance with R 103(1)(a). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2399/10 – Don’t Be Mean
K’s Law – The ebook
T 2399/10 – Don’t Be Mean 4 Jan 2013
This is an appeal against the revocation of the opposed patent by the Opposition Division. Claim 1 of the main request read (in English translation): Composition obtained by drying a suspension containing, on the one hand, alumina particles A having an aspect ratio of less than 15 and, on the other hand, precipitated silica particles B dispersible in a polymer medium. The Board found the invention to be insufficiently disclosed: *** Translation of the French original *** [1.1] The Board is of the opinion that the information provided in the impugned patent is not sufficient for carrying out the claimed invention. [1.2] The only passage in the impugned patent that describes the “aspect ratio” used in claim 1 for characterising alumina particles A is paragraph [0022] of the description. The definition provided therein consists in that “the ratio of the greatest mean dimension of particles A over the smallest mean dimensions of particles A, of less than 15”. [1.3] [The document] does not disclose any explanation whatsoever concerning the expression “dimension”. The argument of the [opponent] that this dimension can be the length, the diameter, the circumference or another feature of the particles has not been disputed or refuted by the [patent proprietor]. [1.4] Moreover, the [patent proprietor] has not provided any argument concerning what is meant by “mean dimension”. According to the [opponent], the skilled person has to choose among several definitions, such as, for instance, the arithmetic mean or the geometric mean. [1.5] Even the examples of the impugned patent do not provide information on the aspect ratio of the alumina particles used, nor do they mention the name of a commercial product having said features.
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T 2399/10 – Don’t Be Mean
K’s Law – The ebook
[1.6] The expert of the [opponent] has explained that “aspect ratio” was not an established term in the technical field of the patent before the priority date. The [patent proprietor] has not provided any evidence to the contrary. [1.7] Moreover, none of the documents cited that have been published before the priority date of the impugned patent uses this expression. The only documents that refer to the aspect ratio are not part of the state of the art within the meaning of A 54(2). Consequently, the state of the art cited cannot be used as evidence that the term was an established term in the technical field of the patent before the priority date. [1.8] Even if a precise definition of the “aspect ratio” had been established in the technical field of the impugned patent, no method for manufacturing alumina particles having the disclosed features was known. The Board has no evidence showing that such a method was part of the knowledge of the skilled person before the priority date of the impugned patent. [1.9] Thus the impugned patent does not disclose how the alumina particles cited in claim 1 of the main request, which are necessary for obtaining the claimed composition, are to be produced. [1.10] This situation differs from the cases where the features of the end product disclosed in a patent are not clearly defined. In such cases, the skilled person may have doubts whether a product or composition is covered by the wording of the claim. Very often, this lack of a precise definition corresponds to a lack of clarity (A 84). [1.11] In the present case the situation is different, because it is one of the starting products that is insufficiently defined. Contrary to the case discussed above, where one can obtain concrete final products, it is impossible to prepare the claimed composition in the present case, because there is not enough information for selecting the starting product. This situation characterises an insufficient disclosure of the invention. [1.12] As a consequence, the subject-matter of the main request is not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (A 83). Should you wish to download the whole decision, just click here. The file wrapper can be found here. NB: This decision was first reported by Le blog du droit européen des brevets (here).
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K’s Law – The ebook
R 4/12
R 4/12 3 Jan 2013
This is a petition for review that has been filed after Board of appeal (BoA) 3.5.01 had dismissed the appeal against the refusal of the application by the Examining Division (ED). The ED had found the application to lack inventive step over document D1. The applicant was represented by an attorney-at-law acting under A 134(8). There were no oral proceedings (OPs) before the Enlarged Board (EBA). The decision is not very exciting, but it contains some small gems. *** Translation of the French original *** [2] According to the EBA, the petition covers two aspects: (a) the decision of the BoA may only be based on grounds on which the parties concerned have had an opportunity to present their comments; (b) the conditions under which the OPs were held, in particular its conduct, have led to a fundamental violation of A 113. [3] As to the first aspect, A 113(1) stipulates that the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. A 113 also guarantees the appellant’s right – which is subject to certain limitations – to have the relevant grounds fully taken into account in the written decision (cf. R 19/10 [6.2]). [4] The petitioner asserts that the decision on novelty was based on the reason (motif) which the chairman [of the BoA] had indicated at the end of the OPs, just before the decision was announced. According to this reason the invention differed from the teaching of D1 only by the nature of the source of information, which did not qualify as a technical feature […]. However, such remarks by the chairman of a BoA just before the announcement of the decision, which are made for information purposes only, do not constitute the reasons (motifs) of a decision. They are not made for this purpose; as a rule, they are not reported in official minutes and often they are not the result of an in-depth analysis. It is the written reasons justifying the dismissal of the appeal that are relevant. Moreover, it is important to know whether the appellant has had the opportunity to present its comments on these reasons and/or whether these reasons duly take into account the arguments submitted by the appellant in the course of the proceedings. Thus the EBA does not have to further examine what the chairman of the BoA might have said on the subject of novelty when the OPs were resumed, before the appeal was officially dismissed. [5] As to the written reasons of the Board, […] the petitioner does not argue that points A [according to which the appellant had argued during the written proceedings that D1 did not disclose icons but had admitted during the OPs that the clickable buttons of D1 could be considered to be icons] and B [according to which the appellant had argued during the written proceedings that D1 did not disclose the generation of a complete address but had admitted during the OPs that this was implicit in D1] did not deal with its arguments in favour of novelty […] in an appropriate manner. It does not criticize this part of the decision. It is points C [according to 772 | 3398
K’s Law – The ebook
R 4/12
which “distant source of information” had to be interpreted broadly and did not contain any limitation as to the nature of the information, including the second structure menus disclosed in D2] and D [according to which any page could be a point of access (porte d’entrée)] that correspond to the [points] which have, according to the petitioner, been raised by the BoA during the OPs, contrary to all expectations. The last sentence of point C (“The distinction cited by the appellant only exists according to the mental state of the user and cannot be defined to constitute a technical difference”) reflects the indications of the petitioner concerning the statement of the chairman of the BoA following the resumption of the OPs. [6] Thus the petition for review is to some extent unusual, in that the decision deals with (a) the two points which the petitioner admits to have raised in view of novelty, and (b) two other points which might help its cause (plaider en sa faveur) but which it has not raised, which have not been part of the grounds set forth (moyens invoqués) and which have only been raised by the BoA in the course of the OPs. However, the EBA does not need to further examine this question because the decision deals with the arguments which the appellant has actually raised (i.e. points A and B). Moreover, the mere fact that the decision deals with arguments which might never have been set forth by the appellant (points C and D), even if they might have helped its cause, cannot constitute a violation of A 113(1). In other words, there is no causal link between the alleged procedural violation and the decision. [7] Considering the grounds, facts, arguments and evidence submitted in order to support the petition for review, the latter is clearly unallowable in this respect. [8] As to the second aspect of the petition, the EBA makes the assumption, in favour of the petitioner, that the reasoning of the BoA concerning points C and D has somehow influenced its reasoning concerning points A and B or otherwise affected the decision to the detriment of the petitioner (although the EBA does not see how this could be the case). [9] First of all, it has to be noted that the petitioner has had the opportunity to comment the two new points which it asserts the BoA has raised. This follows from the petition itself […], and from the passage of the decision explaining the argument concerning points C and D […]. In this respect the petitioner has not argued that the relevant passage misrepresented the facts. As to the petition, it says, in substance, that the opportunity to comment was insufficient and that the way in which the question had been dealt with was unfair. [10] Irrespective of the precise course of the proceedings, the EBA does not have to examine the arguments raised by the petitioner as to their substance because they are fundamentally flawed. As a matter of fact, under R 106, a petition under A 112a(2)(c) is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the BoA, except where such objection could not be raised during the appeal proceedings. However, [the petitioner] could have raised such an objection in respect of the way in which, according to the petitioner, the Board has introduced the points under consideration, before the interruption of the OPs or even upon resumption of the OPs. It clearly follows from the petition that these points have been raised when novelty was discussed. The petitioner could have contested the way in which the Board had proceeded and could have asked for more time for dealing with these points, or even a postponement of the OPs if necessary, and in any case raised an objection under R 106. The petitioner had to know that the BoA could base its decision on novelty on these points, otherwise there was no point in raising them. The petitioner acknowledges in its petition that it expected the question of inventive step to be discussed next. Irrespective of the fact that the petitioner said that it had been surprised when the chairman of the Board announced at the resumption of the proceedings that the appeal had to be dismissed, it had to be aware of the fact that the Board could decide the question of novelty to its detriment. This is the reason why the OPs had been interrupted for deliberation. Thus it was the petitioner’s duty to raise an objection if it considered that the Board had raised these points in a way that made it impossible for [the petitioner] to duly present its arguments and that its right to be heard had been violated. This is indeed the purpose of R 106. [11] Finally, the petitioner has asserted that during the interruption of the OPs it had been surprised to learn from the sole third party present at the OPs, who had presented himself as the Examiner who had issued the decision to refuse the application, that the appeal would be dismissed, although the registrar had not even announced the resumption of the OPs yet. However, the EBA considers that this assertion has no impact on the grounds invoked by the petitioner regarding the violation of its right to be heard under A 113(1). Therefore, it is not necessary to make a comment on that issue. [12] Considering the grounds, facts, arguments and evidence submitted in order to support the petition for review, the petition is clearly inadmissible in this respect.
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K’s Law – The ebook
R 4/12
[13] The pieces of information submitted by the petitioner in its letter of July 12, 2012, […] cannot alter the above conclusions. [14] As to the submissions (prétentions) filed with the letter dated November 2, 2012, […] A 112a(4) requires a petition to be filed within two months of notification of the decision of the BoA. R 107(2) of the Implementing Regulations of the EPC stipulates that the “petition shall indicate the reasons for setting aside the decision of the BoA, and the facts and evidence on which the petition is based.” Pursuant to Article 12(1) RPEBA: “Notwithstanding R 109(3) the Board may consider new submissions made by the petitioner after expiry of the time limit for filing petitions for review, if this is justified for special reasons.” [15] In its decision R 5/08 [22], the EBA has insisted on the fact that the contents of a petition must be presented in such a way that they enable the EBA to understand immediately why the fundamental procedural defect which affects the decision is such that the decision has to be set aside; it must set out the reasons, facts, arguments and evidence relied on, within two months after the filing of the petition (A 112a(4)). Even if the EBA may accept new submissions made by the petitioner after that time if this is justified for special reasons (Article 12(1) RPEBA), apart from any reasons accepted by the EBA as special enough to justify the submission of additional facts, arguments or evidence, the petition itself must be adequately substantiated. [16] In the present case, in its submissions made in the letter dated November 2, 2012, [the petitioner] complains that the BoA had not dealt with the question related to D1, i.e. that it disclosed means for accessing information but not, under any circumstances, for accessing services. This complaint is not invoked at all in the petition for review and is, therefore, completely new. Thus it cannot, for this very reason, have any impact whatsoever on the above conclusions concerning the admissibility or the allowability of the petition for review based on the grounds, facts, arguments and evidence filed with the petition. There are, therefore, no special reasons justifying that the EBA consider the new submissions (Article 12(1) RPEBA). It also follows from the reasons given above that there is no good reason to further consider this complaint because it is clear that based on the grounds, facts, arguments and evidence filed with the petition for review, the petition is clearly unallowable to the extent to which it is not clearly inadmissible. [17] Consequently, [the EBA] has to conclude that the petition for review is clearly unallowable to the extent to which it is not clearly inadmissible. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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T 1911/09 – A Private Affair?
K’s Law – The ebook
T 1911/09 – A Private Affair? 2 Jan 2013
In this case all the parties filed appeals after the Opposition Division had maintained the opposed patent in amended form. In what follows the Board deals with the admissibility of the appeal filed by opponent 2: Transfer of the opponent status [2.1.1] During the opposition proceedings [opponent 2] filed document D15, a merger agreement between Pelikan Hardcopy (International) AG and Pelikan Hardcopy Production AG dated 11 June 2008 explicitly stating that the merger was effected by universal succession as of 1 January 2008. Consequently, on that date all the rights and obligations of Pelikan Hardcopy (International) AG, necessarily including its procedural status as opponent against the patent in suit, were transferred to Pelikan Hardcopy Production AG. [The patent proprietor’s] main argument hinges on an earlier transfer of [opponent 2’s] business assets related to the subject-matter of the opposed patent from Pelikan Hardcopy (International) AG to Pelikan Holding AG on 1 July 2007. The wording of decision G 4/88 [5-6], made it clear that an opposition that has been instituted in the interest of an opponent’s business assets constituted an inseparable part of those assets in case of their transfer. In the present case, Pelikan Hardcopy (International) AG thus had already lost the status of opponent before the merger agreement with Pelikan Hardcopy Production AG became effective. Consequently, in the opinion of [the patent proprietor], at the date of the impugned decision neither Pelikan Hardcopy (International) AG, nor its universal successor Pelikan Hardcopy Production AG were parties to the proceedings and the appeal of [opponent 2] had to be rejected as inadmissible. [2.1.2] The board does not share [the patent proprietor’s] conclusions from decision G 4/88. There, in point [6] of the Reasons, the Enlarged Board (EBA) discusses the situation in which the opposition had been instituted in the interest of the opponent’s business: “... the opposition constitutes an inseparable part of those assets. Therefore, insofar as those assets are transferable or assignable under the applicable national laws, the opposition which is part of them must also be regarded as transferable or assignable in accordance with the principle that an accessory thing when annexed to a principal thing becomes part of the principal thing” (emphasis added by the board). The cited passage thus makes it clear that decision G 4/88, although referring to the business assets and the opposition as being inseparable, does not provide any basis for a transfer of the opponent status as being an obligation or an inevitable consequence of a transfer of business assets related to the opposition. To the contrary, the wording chosen (“transferable or assignable”) stresses that the decision rather seeks to define conditions under which a transfer of the opposition is possible. Therefore, decision G 4/88 does not foresee an “automatic” transfer of the opponent status in cases of a contractually agreed transfer of business assets. In order to ensure procedural certainty the case law (T 1137/97 [4], T 1421/05 [3.3]) has established that a contractually agreed transfer of an opponent status has to be explicitly requested and supported by sufficient evidence. In the present case, neither the transferor Pelikan Hardcopy (International) AG nor the transferee Pelikan Holding AG ever requested a transfer of the opposition to Pelikan Holding AG. Thus, Pelikan Holding AG never had the status of an opponent in the opposition proceedings against the patent in suit. For the sake of completeness it is added that a transfer of the opponent status as part of a transfer of business assets is generally not at the disposition of the patent proprietor. Hence, [the patent proprietor’s] request for transfer of the opponent status has no legal basis and can therefore not be considered. The board concludes that Pelikan Hardcopy Production AG, as universal successor of Pelikan Hardcopy (International) AG, is a party to the opposition proceedings. Since it is adversely affected by the impugned decision it is entitled to appeal. [Opponent 2’s] name and address are missing in the notice of appeal
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T 1911/09 – A Private Affair?
K’s Law – The ebook
[2.2.1] [The patent proprietor] submits that the notice of appeal by [opponent 2] contained a name and an address as required by R 99(1)(a). However, the person named was not entitled to appeal. A correction of the appellant was not possible, since the “Travaux Préparatoires” for the EPC envisaged that the possibilities of correction regarding the formal requirements of admissibility should generally be the same in appeal and opposition proceedings. Moreover, the questions referred to the EBA in pending referral G 1/12 were directed to that subject so that the present appeal proceedings should be stayed until a decision on the referral was issued. [2.2.2] The board does not accept these arguments. The notice of appeal by [opponent 2] bears the name of a professional representative, clearly indicated along with his address and function. The board notes that this representative already acted as professional representative for Pelikan Hardcopy Production AG in the opposition proceedings leading to the present appeal case. Under these circumstances it would not be reasonable to conclude that the appeal was filed by this professional representative privatim. Although it readily permits the identification of the appellant by recourse to the opposition file or via the professional representative, the notice of appeal is incomplete in that it does not specify the name and address of the appellant as required by R 99(1)(a). The name and address of Pelikan Hardcopy Production AG as appellant were submitted in the statement setting out the grounds of appeal based on the remedy provided in R 101(2). Hence, the board concludes that the requirements of R 99(1)(a) are met and thereby follows the jurisprudence established in decisions T 920/97 [1], T 475/07 [1.1] and T 1519/08 [2.1]). [2.2.3] Moreover, the board does not agree that the appeal proceedings should be stayed in view of decision T 445/08, pending as referral G 1/12. In that decision, the questions referred to the EBA as well as the discussion of the case law of the boards of appeal point to a constellation in which “a notice of appeal, in compliance with R 99(1)(a), contains the name and the address of the appellant [...] and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal” and there being “a request for substituting this other legal or natural person” (see question (1), emphasis added). By contrast, in the present case, although it also relates to R 101(2), the notice of appeal is incomplete in that it does not contain the name and address of the (identifiable) appellant. Consequently, the present board does not have to decide on a request for substitution of the appellant as was the case in referring decision T 445/08. Taking these factual differences into account, the board does not consider a stay of proceedings until the EBA has decided on the possibilities of and legal basis for a substitution of an appellant to be expedient. Request defining the subject of the appeal [2.3] R 99(1)(c) requires the notice of appeal to contain a request defining the subject of the appeal, otherwise the appeal is to be rejected as inadmissible. In the present case, the notice of appeal does not contain such an explicitly formulated request. Since the impugned decision concerns the maintenance of the contested patent based on the documents of the first auxiliary request, which contains one independent and ten dependent claims, the appeal by [opponent 2] can only be aimed at the impugned decision being set aside and the contested patent being fully revoked. This interpretation is consistent with [opponent 2’s] requests set out in the statement of grounds of appeal […]. The subject of the appeal is thus implicitly but unambiguously determined. Hence, the provisions of R 99(1)(c) are met. [2.4] The board concludes that the appeal by [opponent 2] is admissible since it meets all requirements set out in A 106, A 107 EPC 1973 and A 108, as well as in R 97 and R 99. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1407/09 – Multiple Choice
K’s Law – The ebook
T 1407/09 – Multiple Choice 1 Jan 2013
A
new
year
calls
for
a
novelty
decision.
Both the patent proprietor and the opponent filed an appeal against the maintenance of the opposed patent in amended form. The Board found the main request and the first auxiliary request to lack novelty. In what follows, it examines the novelty of the second auxiliary request, claim 1 of which read: A biologically-degradable or bio-soluble glass fiber composition, characterized in that it comprises the following components expressed in percent by weight:
SiO2: 61 to 66; Al2O3: 1.1 to 1.8; (CaO + MgO): higher than 9; CaO: 6 to 9; MgO: 0 to 5; Na2O: higher than 17.5 to 18.50; K2O: 0.6 to 1; B2O3: 5 to 15; P2O5: 0 to 5; SO3: 0 to 1; Fe2O3: 0 to 0.5; Others: less than 2.
The Board found this claim to be novel: [4.3.1] The commercial glass fiber “Fibralene PV 200”, for which prior use has been acknowledged above, does not anticipate the subject-matter of claim 1 of this request because its K2O content (0.37%) as disclosed in document B1 is lower than the one claimed (0.6 to 1 wt.%). [4.3.2] Document A1 is state of the art under A 54(3). Irrespective of whether its priority is valid or not, in particular as regards its claim 3 and Example C6, in the board’s view it does not anticipate the subject-matter of claim 1 of this request. The glass fibers according to Example C6 have a lower K2O content (0.47%) and a higher Al2O3 content (1.85%) than those defined in the claimed subject-matter. The glass fibers according to claim 3 also do not anticipate claim 1 at issue because, apart from their B 2O3 and MgO content which fall within the corresponding ranges in claim 1 at issue, the ranges of values for the other glass constituents defined in claim 3 (namely SiO2 62-68; Al2O3 1.5-2.5; Na2O > 17; K2O 0-3; CaO 5-8) overlap with the corresponding ranges in claim 1 at issue. There is however no disclosure in A1, including its examples, of the five selections to be made in order to fall directly and ambiguously within the particular ranges defined in claim 1 of auxiliary request 2 at issue. The board agrees with [the opponent] that the disclosure of a document is not restricted to its examples. However, in the present case, even if – as argued by [the opponent] – the skilled person would seriously contemplate values which are close to those defined in example C6 and which simultaneously fall within the ranges of values defined in claim 3, there is still a multiple choice to be performed to arrive at the wording of claim 1 at issue:
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T 1407/09 – Multiple Choice
K’s Law – The ebook
the first choice concerns K2O and whether the value to be chosen is lower or higher than the one (0.47%) in example C6;
the second choice concerns Al2O3 and whether the value to be chosen is higher or lower than the one (1.85%) in example C6.
Only the choice of a lower value for Al2O3 and a higher value for K2O would lead to subject-matter falling within the terms of claim 1 at issue; each of the other three choices necessary would lead outside the claimed subject-matter. However, document A1 gives the skilled person no information about how these choices are to be done, and it is constant case law that, if more than one choice has to be made in order to arrive at the subjectmatter claimed, novelty has to be acknowledged. [4.3.3] In the board’s view, document A2, state of the art under A 54(2), also does not anticipate the subjectmatter of claim 1 at issue. The specific glass fibers exemplified in A2 are distinguished from the claimed subjectmatter by three or more differentiating features. The sole fiber which is distinguished therefrom by only two differences is the one according to Example 7B. If, as argued by [the opponent], the skilled person would take into consideration the entire disclosure of document A2 and in particular seriously contemplate the broader glass composition disclosed at page 9, lines 20 to 29 – i.e. the glass composition B – reproduced hereinafter:
SiO2: 55 to 65%; preferably 58 to 62% Al2O3: 0 to 3%; preferably 1 to 2.5% CaO: 6 to 10%; preferably 7 to 9% MgO: 0 to 5%; preferably 1 to 4.5% Na2O: 15 to 22%; preferably 16 to 20% K2O: 0 to 3%; preferably 1 to 2.5% B2O3: 3 to 10%; preferably 4 to 8% P2O5: 0 to 3%,
he would have to make multiple choices to arrive directly and unambiguously within the terms of claim 1 of this request. For similar considerations as in point [4.3.2] above, claim 1 of this request is therefore novel over A2. [4.3.4] The board is satisfied that the subject-matter of claim 1 at issue is also novel over the content of the documents in the proceedings. [4.3.5] It follows from the above that claim 1, and claims 2 to 6 which depend thereon, meet the requirements of A 54(1), (2) and (3). Should you wish to download the whole decision, just click here. The
file
wrapper
can
be
Let me wish you a happy new year!
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found
here.
T 2334/08 – The End Is Near
K’s Law – The ebook
T 2334/08 – The End Is Near 31 Dez 2012
As the year comes to an end, I found the present decision quite appropriate. The patent proprietor filed an appeal (in December 2008) after the Opposition Division revoked its patent. The Board summoned the parties to oral proceedings (OPs) to be held on August 9, 2012. With a letter dated June 1, 2012, the representative on record for the patent proprietor informed the board to the effect that there was no longer any validated patent in force based on the patent in suit and that the patent proprietor had gone bankrupt and no longer existed. The representative further stated that he would not attend the OPs. The board issued a further communication to the parties, noting that no evidence had been filed in respect of the alleged bankruptcy of the patent proprietor. However, publicly available commercial register information retrieved from the Internet site www.allabolag.se appeared to confirm the information provided by the appellant’s representative and a copy of this information was annexed to the communication. It was further noted that as no transfer had been registered under R 22 (applicable during opposition proceedings according to R 85), Nextlimit AB or its estate was still considered to be the patent proprietor and appellant in the present appeal proceedings. In the absence of any information or evidence relating to a succession, the board assumed that the appellant had ceased to exist as a commercial entity and was not in a position to act in the proceedings any more. The OPs were nevertheless maintained. Neither the appellant not the respondent were represented. How, and on which legal basis did the Board act in this situation? [1] The appeal as filed on 17 December 2008 fulfilled the requirements of A 106 to A 108 […]. [2] The submissions made by [the patent proprietor’s] representative with the letter of 1 June 2012 […] indicated that the appellant had ceased to exist as a legal entity. [3] According to decision T 353/95 [2], only an existing natural or legal person can be a party to opposition proceedings (A 99(1) EPC; Lunzer/Singer, The EPC, London 1995, 99.02) and this applies also at the appeal stage since A 107, first sentence, makes no different provision in this respect (R 100(1)). [4] If the [patent proprietor] still retained the capacity to act in the present appeal proceedings, the onus was on the [patent proprietor] or its representative to respond to the communication of 20 June 2012 by informing the board accordingly. [5] Likewise, if there had been a transfer in the ownership of the patent in suit, the EPO should have been informed to this effect (cf. R 22 which is applicable during opposition proceedings according to R 85). [6] In the absence of any response from the appellant’s representative to its communication of 20 June 2012, the board concludes that the original appellant has lost its capacity to act in proceedings before the EPO. As no transfer has been registered under R 22, the EPO has no record of a valid successor in title who would be entitled to continue the present proceedings. [7] Consequently the appeal has lapsed and the proceedings are at an end. ORDER For these reasons it is decided that: 779 | 3398
T 2334/08 – The End Is Near
K’s Law – The ebook
The appeal proceedings are terminated. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1431/10 – Resisting The Lego Approach
K’s Law – The ebook
T 1431/10 – Resisting The Lego Approach 29 Dez 2012
Patent proprietors sometimes hesitate which claims to pursue and find strategies how to submit a great number of sets of claims without actually presenting them as individual requests. Such strategies invariably fail. The present decision provides yet another example. [1.1] In its letter dated July 19, 2012, [the patent proprietor] requested to replace the auxiliary requests that had been filed before by three “claim groups”. Several variants were filed for each [claim group]. The patent proprietor was of the opinion that the individual “claim groups” should be discussed and that then admissible requests of the three “claim groups” should be combined to complete requests. Given the resulting number of possible combinations, the patent proprietor has determined the total number of sets of claims submitted to be 111. On August 29, 2012, i.e. less than a week before the oral proceedings (OPs), amended alternatives concerning “claim group 1” were filed. [1.2] The filing of requests corresponding to 111 sets of claims, six weeks before the OPs, and their amendment one week before the OPs results in making the work of the adverse party and of the Board difficult to an extent that cannot be accepted. Even if, as pointed out by the patent proprietor, “only” twelve aspects would have to be discussed, such a [great] number of requests and the filing of partial requests (Teilanträge) contradicts the principle of procedural economy. Moreover, not all of the aspects of the amendments were already discussed in the statement of grounds of appeal, and it is the duty of the patent proprietor to draft the complete requests. [1.3] It is for these reasons that the Board exercises its discretion under Article 13(1)(3) RPBA and considers the late filed sets of claims corresponding to the auxiliary requests filed on July 19 and August 29, 2012, to be inadmissible. In decision T 382/96, the Board had judged a similar approach even more severely: [5.2] It is a basic principle of European patent law that the applicant – in opposition proceedings, the patent proprietor – bears the responsibility for determining the subject-matter of the patent. This is expressed, for example, in the provisions of R 51(4)-(6) and R 58(4)(5) [EPC 1973]. The applicant/patent proprietor cannot, by presenting a excessive number (Unzahl) of requests, let alone incompletely drafted variants of requests, shift this responsibility de facto to the EPO, in this case the Board of appeal, or as the case may be to other parties, in this case the respondents/opponents. [5.3] According to the Board, such behaviour amounts to an abuse of procedure because the EPO and, as the case may be, other parties to the proceedings are burdened in a disproportionate manner (unverhältnismäßig) with duties that do not originally concern them and because the orderly operation of the proceedings is impeded. T 1898/07 (also presented on this blog - here) is also relevant in this context. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 2122/08 – Beelzebub Won’t Drive Out Demons
K’s Law – The ebook
T 2122/08 – Beelzebub Won’t Drive Out Demons 28 Dez 2012
In this case the applicant made an interesting attempt to overcome an A 123(2) objection by referring to an alleged lack of clarity. The claims were directed, inter alia, at a communication device. The decision deals in detail with the feature “whereby the data … are transmitted with identical timing”, which the Examining Division (ED) had found to lack clarity. The Board found the feature to be clear but rejected the third and fourth auxiliary requests for lack of inventive step. The applicant also filed a fifth auxiliary request where the expression “with identical timing” had been removed. [5.1] In the board’s judgment, claims 1 and 8 do not comply with the provision of A 123(2). [5.1.1] The board agrees with the finding of the ED that transmitting identical data on any or all carriers without “identical timing” is not directly and unambiguously disclosed in the original disclosure of both the original parent application and the present divisional application […]. Rather, the original description exclusively discloses sending “identical data with identical timing” and therefore the deletion of only “with identical timing” results in an intermediate generalisation of the original subject-matter. Consequently, claims 1 and 8 contravene A 123(2). [5.1.2] The appellant argued that the omission of “and are transmitted with identical timing” while maintaining the feature of transmitting and receiving identical data on each modulated carrier did not violate A 123(2) citing T 461/05 and T 802/92 according to which originally disclosed features of an embodiment may be omitted if such features are not necessary to carry out the particular embodiment of the invention or do not provide a technical contribution to the claimed subject-matter. In addition, the appellant assumed that, if the term “identical timing” was indeed unclear, as held by the ED, this feature could thus not contribute to the technical teaching of the application and therefore would not add subject-matter. [5.1.3] From the single and isolated basis for the related feature of transmitting identical data with identical timing […], no useful information can be derived as to whether the feature “with identical timing” is in fact essential or provides a technical contribution to the subject-matter or not. Even if, for the sake of argument, this feature were to be considered as unclear, that would not necessarily mean that it was not essential. Rather, it would merely indicate that it could not be established whether it was technically relevant or not. [5.2] In conclusion, this request is not allowable under A 123(2). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 253/10 – Admission Problems
K’s Law – The ebook
T 253/10 – Admission Problems 27 Dez 2012
This case deals extensively with the admissibility of late filed requests. The Opposition Division had revoked the opposed patent. Together with its statement of grounds of appeal (SGA), filed on April 9, 2010, the patent proprietor filed a new main request and one auxiliary request. In their replies, filed on August 26, 2010 and September 6, 2010, the opponents raised A 123(2), clarity, novelty and inventive step objections. On December 12, 2011, the Board summoned the parties to oral proceedings (OPs) to be held on March 15 and 16, 2012. On February 15, 2012, the patent proprietor filed a new main request replacing the former main request as well as several sets of auxiliary requests. The former auxiliary request was withdrawn. More new requests were filed during the OPs. Most of the decision deals with the admissibility of the late filed requests. *** Translation of the German original *** Main request and auxiliary requests 1 to 7 of series A to D of February 15, 2012 Admission [2.1] The [patent proprietor] has filed a new main request as well as four series (A-D) of seven auxiliary requests each, i.e. a total of 29 requests at a very late stage, i.e. close to one month before the OPs and more than 17 and 21 months, respectively, after the response of the [opponents] to the SGA. It has not given any justification for the late filing in the accompanying letter. The [opponents] criticised these requests as belated and requested that they be not admitted into the proceedings. [2.2] According to the RPBA, the appeal proceedings are based on the SGA and the corresponding reply. The SGA and the reply shall contain a party’s complete case (Article 12(2) RPBA). They shall contain not only all facts, arguments and pieces of evidence but also all requests. Thus the disputed matter (Streitstoff) that is relevant for the appeal proceedings results from the SGA and the corresponding reply. Later amendments of the submissions are not completely excluded, but the RPBA expressly stipulate that it is at the Board’s discretion whether amendments to a party’s case after it has filed its grounds of appeal or reply are admitted (Article 13(1) RPBA). Amendments made after OPs have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the OPs (Article 13(3) RPBA). According to this provision, the Board has no discretion in this respect. It follows from Article 13 RPBA as a whole that there is not legal right to amend the submissions at a later stage with respect to the introductory exchange of submissions. Moreover, the systematic connection between Articles 12 and 13 RPBA makes clear that amendments of a party’s submissions after the filing of the SGA and the corresponding reply do not form part of the disputed matter of the appeal proceedings but need to be introduced into the proceedings in order to be taken into account. Thus a party wishing to amend its submissions after the introductory exchange of submissions cannot rely on the fact that possible amendments will be taken into account but has to work towards (hinwirken) the admission of the amended submission by the Board. [2.3] The criteria for the exercise of discretion cited as examples in Article 13(1) RPBA (the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy) do not constitute exclusive requirements that all have to be fulfilled in order for a belatedly amended submission to be ignored (R 16/09 [2.2.4]). Accordingly, the Boards of appeal consider further aspects in their case law, such as 783 | 3398
T 253/10 – Admission Problems
K’s Law – The ebook
the reasons for an amendment, or its extent (Umfang). As a rule, the Boards admit amendments when they are filed in response to objections or evidence that are not part of the impugned decision but have been submitted for the first time in the course of the appeal proceedings. As stated by the Enlarged Board of appeal (EBA) it belongs to the discretion of the Boards of appeal to decide which criteria are to have precedence according to the circumstances of the case (R 16/09 [2.2.11]). In this context the criterion of lateness can outweigh the other criteria and be decisive for the exercise of discretion (R 16/09 [2.2.12]). [2.4] In the present case the Board is not persuaded by the argument of the [patent proprietor] according to which the filing of amended claims was an adequate and appropriate reaction to objections raised by the [opponents]. The [patent proprietor] could have drafted its fall-back positions, which it considered to be required in view of the objections raised, on the basis of the impugned decision, and in any case on the basis of the reply to the SGA. The [patent proprietor] was unable to cite cogent reasons why it had waited for so long before it filed the amended sets of claims for which it was the sole responsible. In particular, neither the course of the proceedings nor the behaviour of the [opponents] justified a reaction of the [patent proprietor]. [2.5] The [patent proprietor] justified the belated filing of its requests as a reaction to the summons [to OPs], to which it has reacted within the usual and acceptable time limit of one month before the OPs. It also referred to the similar “rice case” that was directed at weed control for another tolerant crop and which had been discussed on January 23, 2012, before the Board, in the presence of the same parties. It was of the opinion that this case had certain parallels to the present case, in particular in view of the split of claim 1 as granted into several independent claims. Therefore, for the sake of procedural economy, [the patent proprietor] wished to await the decision in the rice case. The incorporation of glyphosate-sulfosate was an outcome of the rice case, too, and in particular of the discussion of A 123(2) in that case. Very much like in the rice case, where incidentally the split of the claims had been considered to be admissible, in the present case the scope of the claims was limited to the groups (A1), (A2), and (A3), which were said to be preferred compounds in the original description. Said sulfosate was found among them, in the (A2) group. In view of the objection raised against new independent claim 4, the [patent proprietor] argued that this claim was a reaction to the objection of [lack of] novelty against claim 1, in view of document D48. Its purpose was to overcome the novelty objection while claiming what could still be protected. Moreover, the [patent proprietor] was of the opinion that the amendments were very limited. They did not trigger any new questions or problems which the [opponent] were not aware of in view of the present proceedings and the rice case, respectively. The number of requests was admittedly great, but their complexity was low. Series A, B, C, and D only differed by the presence or absence of claim 7, respectively. [2.6] The Board is not persuaded by the arguments of the [patent proprietor]. [2.6.1] The communication annexed to the summons summarised the issues to be discussed at the OPs resulting from the impugned decision, the SGA and the replies of the [opponents] to the SGA: in particular, objections under A 123(2) concerning the split of granted claim 1, objections as to a lack of novelty with respect to documents D1, D3, D42, D48, and D70 as well as inventive step, for instance in view of the question whether the alleged synergy was proven over the whole scope. Thus the summons cannot be considered to have caused the subsequently amended requests by which the [patent proprietor] claimed to react to the objections of the [opponents]. The [patent proprietor] was aware of the objections, in particular concerning novelty and inventive step, from the very beginning. It had sufficient time to consider its fall-back positions and to file accordingly amended claims, if it believed such to be required. This is what it should have done, in view of the requirements for regular proceedings, which obliges the parties to file all facts, evidence, arguments and requests as soon an as complete as possible, as well as reasons of fairness towards the [opponents], who should know as soon as possible to which extent the [patent proprietor] wishes to maintain its patent, and for which reasons. Irrespective of that fact the [patent proprietor] was not entitled to interpret the communication annexed to the summons as an invitation to unroll the case afresh in order to reorient it by amending its requests. Such an interpretation would contradict the duty of all parties to submit their complete case, i.e. all means of attack and defence, together with the SGA and the corresponding reply. Moreover, this interpretation also does not sufficiently account for the purpose of the OPs, which come last in EPC proceedings and which, therefore, also terminate the appeal proceedings. [2.6.2] The Board does not share the opinion of the [patent proprietor] according to which the one-month time limit was a common time limit within which amended submissions were still accepted. First, when asked by the Board, the [patent proprietor] was not able to indicate a legal basis for its opinion. It only invoked a custom. The Board does not consider that there is such a custom, and such a custom would not be in line with Article 13 RPBA. Rathern, in view of its knowledge of the case law of the Boards of appeal and the RPBA, the representative of the [patent proprietor] had to be aware that the admission of amended requests was at the 784 | 3398
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discretion of the Board, which discretion is exercised in consideration of the circumstances of the individual case (R 5/11 [4.2]). In view of the extent of the amendments, it had to expect the application of Article 13(3) RPBA the mandatory legal consequence of which is independent of the reasons for the belated amendment. Thus the patent proprietor was not entitled to trust that its 29 requests by which it amended the object of the appeal less than a month before the OPs would be admitted into the proceedings. [2.6.3] As regards the similar rice case invoked by the [patent proprietor], for which incidentally there was no written decision on the day of the OPs, it has to be noted that the EPC does not provide for any binding effect for decisions taken by the same or a different Board with respect to another case, even if the issues to be discussed are the same. This was conceded by the [patent proprietor] upon request by the Board. This notwithstanding, the Board also is of the opinion that the decision of the Board in this allegedly similar case, which concerns another invention, is irrelevant for the assessment of novelty and inventive step in the present case, because this assessment only depends on the facts and evidence that are in the present proceedings, i.e. the concrete state of the art, the comparative date submitted, the claimed subject-matter, etc. The [patent proprietor] has not claimed that the latter are the same in both cases. For the same reasons decision T 888/08 cannot support the arguments of the [patent proprietor]. Therefore, the Board is of the opinion that there was no legitimate interest (schützenswertes Interesse) and, as a consequence, no good reason to wait for the OPs in the rice case before filing requests that take into account objections that have existed for a long time and are specific for the present case. [2.6.4] The argument of the [patent proprietor] according to which in the present case the introduction of the sulfosate was justified by the outcome of the discussion in the rice case, is not convincing. According to the [patent proprietor], its introduction has its origin in the A 123(2) discussion in the rice case. In the present case, there have been objections under A 123(2) regarding the split of claim 1 of the impugned patent and specific combinations resulting from it. According to the statements of the [patent proprietor], in the rice case such a split was not considered to be a violation of A 123(2). Thus the introduction of sulfosate in the rice case manifestly is not linked to this objection, which is essential in the present case. [2.6.5] Nor can the Board see that the requirements of A 123(2) and of novelty are interwoven in such a way that the [patent proprietor] would have been hindered from drafting suitable fall-back positions in due time, as alleged by the [patent proprietor]. The Board is aware that such sets of claims may under certain circumstances result in a significant limitation of the subject-matter of the impugned patent. It may well be that such limitations are not in the interest of the [patent proprietor], but this does not mean that the [patent proprietor] was hindered from drafting amended claims that are both new and supported by the original application, at an early stage of the proceedings in case it did not consider the two requests filed together with the appeal to be sufficient for overcoming the known objections. [2.6.6] The Board does not share the opinion of the [patent proprietor] according to which new claim 4 was justified by the objection of novelty in view of document D48 and, therefore, did not contravene R 80. Document D48 only discloses the use of glyphosate and metazachlor in tolerant colza and was the reason why this combination was deleted from claim 2, which is directed at combinations of (A2) compound. Claim 4 is directed at the use of compounds of formula (A1), formula (A2), which inter alia comprises glyphosate, and formula (A3) in combination with herbicides of formula (B1), which inter alia comprises metazachlor, and formula (B3) in post-emergence treatment (Nachauflauf-verfahren). The Board is of the opinion that claim 4 is neither necessary not appropriate as reaction to the lack of novelty due to a particular novelty-destroying combination. Moreover, this claim, although drafted as an independent claim, is almost completely covered by independent claims 1 to 4, which encompass all application methods (pre-emergence, post-emergence, pre- and postemergence) and, therefore, with the exception of the specific combination claimed in document D48, corresponds to the subject-matter of a dependent claim. However, according to the established case law, the addition of new dependent claims is neither necessary nor appropriate for overcoming a ground for opposition (see, e.g. T 674/96 [3.10]). [2.6.7] In view of the complexity of the submission of the [patent proprietor], the Board is of the opinion that the mere number of requests significantly increased the complexity of the case. This was even amplified by the fact that, as pointed out by [opponent 2], some of the amendments in auxiliary requests 1 to 7 in the sets A to D appeared to be directed at different directions and were filed by the [patent proprietor] almost without any comments regarding the objections to be overcome and the support for the amendments in the original
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documents. Thus the [patent proprietor] left it to the Board and the [opponents] to form an opinion on the amendments underlying the auxiliary requests and their justification. [2.7] Thus the Board decided not to admit the requests of February 15, 2012, into the proceedings (Article 13(1) RPBA). Main request of March 15, 2012 Admission [3.1] This request is based on the main request of February 15, 2012, and had been filed by the [patent proprietor] during the OPs, after the Board had decided not to admit the requests of February 15, 2012. This requests differs from the main request of February 15, 2012, in that glyphosate-sulfosate was removed from claim 2 and claim 4 was deleted. The following claims were renumbered accordingly. The [opponents] requested [the Board] not to admit the new main request into the proceedings because it had been filed belatedly. [3.2] The [patent proprietor] pointed out that the [opponents’] objections regarding novelty and clarity had been taken into account. Moreover, the particular degree of complexity […] had been removed. Thus the present request could not be considered to be an inappropriate reaction any more. The [patent proprietor] also pointed out that a new main request had been filed together with the SGA and that experience showed that the summons once again gave the patent proprietor an opportunity to consider the objections. At least this is what had happened in the quasi-identical rice case. Moreover, the amendments were only deletions limiting the scope of the impugned patent. In view of the objection of lack of inventive step further deletions had been carried out. A rejection of the request by the Board would be too severe because this would deprive the [patent proprietor] of any further opportunity of reacting to objections, although the points were the same as in the rice case, which also involved the same parties. The patent proprietor could not be expected to determine fall-back positions in view of all possible objections. [3.3] As objected by the [opponents], the new main request is based on the main request of February 15, 2012. The admission of the new main request would circumvent the decision not to admit the requests of February 15, 2012. As a matter of fact, the objection raised against the requests of February 15, 2012, according to which they could and should have been filed at an earlier date if the proceedings had been conducted in a careful way, also apply to the new auxiliary request of March 15, 2012. The novelty and clarity objections raised against the requests filed together with the SGA were known to the [patent proprietor]. Moreover, the question of whether the asserted synergy was proven over the whole breadth, which was essential for the assessment of inventive step, had already been raised. The summons did not add anything further. Thus the [patent proprietor] had had enough time for filing suitable fall-back positions in the form of amended claims in due time. It has not made use of this opportunity. It now tries to remedy this failure to the detriment of the adverse party, which still faced very limited means of defence one month before the OPs, by an amendment of its submissions. However, the Board is of the opinion that in inter partes appeal proceedings it is contrary to an efficient and fair conduct of proceedings when the patent proprietor deals with objections that have been raised long before, by filing amendments only after the summons to OPs. This holds true for both the main request of March 15, 2012, and for the requests of February 15, 2012. The Board emphasises that this situation is different from cases where amended requests are filed in response to objections or evidence which are not part of the impugned decision but which have been presented (and admitted into the proceedings, as the case may be) for the first time in the course of the appeal proceedings. [3.4] The argument of the [patent proprietor] based on the low complexity of the new request did not dispose the Board to weigh the circumstances in a different way when exercising its discretion. The complexity of the new subject matter submitted is one example cited in Article 13(1) RPBA besides the current state of the proceedings and the need for procedural economy. However, these criteria do not have to be fulfilled cumulatively. It is within the discretion of the Board to decide which criterion prevails under the circumstances of the case (see above under [2.3]; R 16/09 [2.2.4;2.2.11-12]. As already explained in the preceding paragraph, what is decisive in the present case is that there were no good reasons justifying the late submission. The Board is of the opinion that the right to have an appropriate opportunity to present one’s case (A 113(1)) does not create an unconditional right to perform procedural acts that are possible and required at the beginning of the proceedings, such as the filing of sets of claims that amend the disputed subject-matter, shortly before the end of the proceedings. In the last stage of the proceedings the purpose of terminating the proceedings for the sake of legal security gains momentum and prevails over the other criteria for the exercise of discretion regarding the admission of amended submissions. The Board is of the opinion that the claim of the [patent 786 | 3398
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proprietor] for a possibility of introducing amended sets of claims as a means of defence, regardless of subsequent changes, is incompatible with the requirement of fair treatment of the parties in contentious proceedings such as inter partes proceedings. [3.5] Moreover, the Board does not share the opinion of the [patent proprietor] according to which the summons for OPs issued in the present case are to be considered as an invitation or opportunity to file requests […]. The purpose of a communication under Article 15(1) RPBA is to refer [the parties] to points of particular importance and to help them to concentrate the arguments set forth in the OPs on what is essential. [3.6] As to the allegedly different handling of the admission of late filed requests by the Boards of appeal, in particular by this Board in the rice case, the Board notes that the admission of such requests always depends on the concrete circumstances of the individual case. Differences regarding the admission of requests reflect the exercise of discretion by the Boards in view of such concrete circumstances. However, the Board is of the opinion that even in similar cases the specifics of the course of the proceedings may lead to a different assessment of the admissibility of late filed requests, without there being a different interpretation of the RPBA as claimed by the [patent proprietor]. [3.7] Thus the Board decided not to admit the main request filed during the OPs into the proceedings (Article 13(1) RPBA). Main and auxiliary request of April 9, 2010 Readmission [4.1] The [patent proprietor] was of the opinion that the non-admission of its previous requests entailed that the main and auxiliary request filed together with the SGA still were in the proceedings. Alternatively, it requested [the Board] to readmit these requests. [4.2] The Board does not share the opinion of the [patent proprietor] according to which the requests filed together with the SGA, which had been replaced by the requests of February 15, 2012, or withdrawn, as the case may be […] automatically were in the proceedings as a consequence of the refusal to admit the previous requests. However, it readmitted these requests because it was of the opinion that the [opponents] were not adversely affected by this [readmission] because they already knew these requests as from the beginning of the appeal proceedings and, as a consequence, they had had sufficient opportunity to prepare for the discussion of these requests. Thus the [opponents] may be expected to comment on these requests. The Board found the main and auxiliary requests of April 9, 2010, to lack novelty. It then discussed the admissibility of the auxiliary request dated March 15, 2012: [7.1] This request was filed after the Board had informed the parties on its conclusion regarding the novelty of the requests filed together with the SGA. The request differs from the main request filed together with the SGA in that in claim 1 and claim 11 in the (B3) and (B3’) group, respectively, the Fluazifop-P compound and its ester have been deleted. The [opponents] criticise this auxiliary request as belated and unjustified because it only overcame an objection that had been raised long ago, and as inappropriate because it was not prima facie allowable. [7.2] The [patent proprietor] argued that it had filed this request as a reaction to the preceding discussion of novelty and the conclusion drawn by the Board. The amendment was suitable for overcoming this objection. It consisted in the deletion of one single compound, which meant that the amendment was small and acceptable. There was no need for postponing the OPs. Moreover, the [patent proprietor] was of the opinion that in view of Article 13(1) and (3) RPBA, which have to be taken into account when exercising discretion, [the idea of] dismissing this request only because of the moment in time when it had been filed was inadmissible. [7.3] The Board does not share this opinion of the [patent proprietor]. [7.3.1] As already explained under point [3.4] above, the criteria for the non-admission of late filed submissions which are cited as examples in Artlcle 13(1) RPBA do not have to be fulfilled cumulatively. It also is part of the discretionary decision of the Board which aspect it privileges when considering the circumstances of the case. In the present case what is decisive in the eyes of the Board is that the objection of lack of novelty over document D1 has been part of the proceedings for a long time and it was not justified to wait for a concluding opinion of the Board on a disputed question in order to adapt the requests to this opinion. It follows from the case law of the EBA in petition for review proceedings that [parties are] not entitled to full or partial explanations by the Board 787 | 3398
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of the foreseeable reasons before the decision is given in writing (see R 6/11 [8.2] with further references to the established case law). Consequently, a party may not expect the Board to inform it on [the Board’s] opinion on particular disputed issues so that it can file new requests. As a consequence, the communication of the opinion of the Board in the course of OPs cannot be considered to constitute an objective incentive for amended requests. As stated by the EBA (R 12/09 [11] with further references to the case law) any party is free to present its case as it wishes, whereas the Board has to decide on the basis of the submissions of the parties. When doing so, in inter partes proceedings, a Board should not one-sidedly assist a party by giving it indications in advance during OPs or in a communication. The Board would give up the objectivity and impartiality it is required [to exhibit] if it communicated its opinion on a question that has been disputed from the beginning of the proceedings and therefore assisted the party whose point of view is dismissed, insofar as this party would have to be offered a possibility to react by amending its submission (cf. R 15/10 [9] with further references). The EBA also stated that a party that wishes to obtain a decision in its favour has to actively participate in the proceedings and submit of its own motion whatever may support its position. It is part of the duties of professional representatives to decide of their own motion – i.e. without being assisted by a Board – how to conduct their cases (R 12/09 [11]; R 16/11 [2.6]). Accordingly, [a party] has to carefully examine the validity (Stichhaltigkeit) of the arguments of the adverse party and to react to them in due time, in particular by defining appropriate fall-back positions. Apart from that the Board agrees with the opinion of [opponent 2] which considered the [patent proprietor’s] way of proceeding with the auxiliary request filed on March 15, 2012, to be an attempt to arrive again at a request the admission of which had been refused because it was late filed, and thereby to circumvent the discretionary decision of the Board in respect of the claims of February 15, 2012. The Board is of the opinion that this way of proceeding, by which the [patent proprietor] attempts, to its sole benefit, to react to objections that had been raised long ago in a stepwise manner, would be unfair to the [opponents]. [7.3.2] Nor is the Board persuaded by the argumentum e contrario drawn from Article 13(3) RPBA; this argument cannot justify the admission of this request. Article 13(3) provides that amendments sought to be made after OPs have been arranged shall not be admitted if they make it necessary to adjourn the OPs. Thus this article defines the conditions under which the non-admission is a mandatory legal consequence and, therefore, not within the discretion of the Board, but beyond that it does not interfere with the discretion which is given to the Board by Article 13(1) RPBA. [7.3.3] Moreover, as submitted by [opponent 2], there are prima facie doubts regarding the allowability of this set of claims, e.g. under R 80, in view of dependent claim 6, which is new with respect to the impugned patent. [7.4] Thus the Board decided not to admit this request into the proceedings (Article 13(1) RPBA). The Board dismissed the auxiliary request filed on March 16, 2012, for the very same reasons. It then went on to consider the complaint under R 106 in connection with A 112a(2)(c): [9.1] During the OPs before the Board the [patent proprietor] has raised objections under R 106 after the decisions not to admit the main request of March 15, 2012, as well as both auxiliary requests of March 15 and 16, 2012, […] because it was of the opinion that its right to be heard had been violated. [9.2] The [patent proprietor] was heard on the admissibility of its requests in all cases and was not restricted in the presentation of its arguments related to that question. Thus its right to be heard regarding the admissibility of the late filed submissions was not curtailed. This was not contested by the [patent proprietor]. Its objection is directed at the discretionary decision of the Board not to admit the late filed requests into the proceedings. This exclusion was said to violate the right to be heard of the [patent proprietor] under A 113(1). [9.3] However, the Board is of the opinion that the [patent proprietor] cannot derive the right to file requests at any stage of the proceedings from its right to be heard. The parties are not completely free in the way in which they conduct the proceedings. They are subject to certain limits that are defined, in inter partes proceedings, by the principle of fairness to the adverse party and, more generally, by the requirements for regular proceedings (T 1685/07 [6.1]). In particular, the parties to inter partes proceedings have the duty to conduct the proceedings in a careful and diligent (beförderlich) way. It is part of this duty to file facts, evidence, arguments and requests as soon and as completely as possible (T 1685/07 [6.12]; T 2102/08 [4.3.1]). Article 13 defines a legal sanction of the violation of this duty, i.e. the fact that the parties should have participated until a certain point of the proceedings but did not do so. The underlying purpose is to concentrate the submissions of the parties to an early stage of the proceedings. The intention is to make the 788 | 3398
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proceedings predictable (berechenbar) and allow them to lead to an adequate decision through proceedings the duration of which is appropriate. The duty to conduct the proceedings diligently (Verfahrensbeförderung) applies to the opponents (with respect to the submissions of the means of attack) and the patent proprietor (with respect to the means of defence) in the same way. There is no support in the EPC and in the procedural law governing the Boards of appeal for the idea that the Board should be more tolerant towards one party or the other, for instance in order to ensure that the inventor is duly remunerated or to avoid the survival of an invalid legal title (Rechtstitel). Such an approach is incompatible with the objectivity and impartiality of the Boards of appeal which are required in opposition appeal proceedings, which are contentious proceedings (G 10/91 [2]). In this context Article 13 RPBA does not contradict the parties’ right to be heard under A 113, even if the belatedly amended submission of a party is not taken into account in the further proceedings. This is because the legislator is free to limit the right to be heard for the sake of accelerating the proceedings, by [allowing the Boards] to ignore, partly or entirely, the factual submissions of a party that has infringed its duty to conduct the proceedings diligently, provided, however, that the party was offered in an appropriate way the opportunity to present its case, but that the party has failed, for reasons it is answerable for, to make use of the possibility of commenting. Moreover, in inter partes (contentious) proceedings the principle of equality of arms (Waffengleichheit) requires that the parties be given the opportunity of commenting under comparable conditions. Therefore, the admission of belated amendments of the submissions of a party must not lead to a situation where the adverse party is disadvantaged in its right to comment (Article 13(2) RPBA), for instance because it can exercise this right only insufficiently in the available time. Thus, in so far as there is no legal right to having late filed amendments admitted in a permissible manner under Article 13 RPBA, the exercise of the discretion to which the Board is entitled can only violate the right to be heard if the discretion is exercised in an arbitrary manner. However, the [patent proprietor] has not raised, let alone substantiated, such an objection. [9.4] If, in the present case, the [patent proprietor] considered it to be necessary, in view of the objections raised by the [opponents] against the maintenance (Rechtsbestand) of the impugned patent, to define fall-back positions in the form of amended sets of claims, in order to defend its legal position, it had the duty to file them at the earliest possible moment, i.e. as an immediate response to the submissions of the [opponents] where the relevant objection was raised in a comprehensible manner. It must not wait until a late stage of the proceedings, to the detriment of the [opponents]. If it omits to fulfil its procedural duties, it has to bear the consequences. [9.5] As has already been stated several times, the [patent proprietor] had sufficient opportunities to counter the objections raised by the [opponents] in their replies to the SGA, in particular the lack of novelty, by filing correspondingly drafted fall-back positions. It cannot wait until it “knows the position of the Board with respect to the submission of the opponents”, as argued by the [patent proprietor]. The [patent proprietor] is the sole responsible for taking all measures that are required for defending its legal position, including the filing of appropriate sets of claims, in good time. It is part of the professional duties of professional representatives to decide of their own motion, i.e. without any assistance of the Board, how to conduct their cases (see above, point [7.3.1], referring to R 12/09 [11]). The fact that a Board subsequently endorses the factual submissions of the adverse party does not constitute new facts; it is a possibility which a party has to anticipate. The drafting of appropriate fall-back positions at the earliest possible moment is not an expression of anticipatory obedience (“vorauseilenden Gehorsams”), as argued by the [patent proprietor]. If they are drafted as auxiliary requests of lower rank, such fall-back positions are not concessions to the adverse party but a protection against misjudgements of the factual and legal situation and, as such, expression of a careful conduct of the proceedings. The patent proprietor is still at liberty to have a main request that allows it to defend the subject-matter of the invention with a breadth that it believes to be factually and legally justifiable. [9.6] The [patent proprietor] has not sufficiently explained which new facts that are relevant for the present case have arisen from the OPs in the rice case, and to which extent these facts have justified the belatedly amended sets of claims. When filing the belated requests, the [patent proprietor] only reacted to the objections raised in the present case, which had been submitted by the [opponents] in their replies to the SGA and which are specific to the impugned patent that is the object of the present proceedings, in particular novelty and inventive step. [9.7] The decision T 2085/10 cited by the [patent proprietor] concerns an ex parte case. On that ground alone the decision differs from the concrete circumstances which led the Board not to take into account the belated requests of the [patent proprietor] in the present case.
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[9.8] The further arguments set forth by the [patent proprietor] in its complaints are identical to the arguments it had set forth in the discussion of the admission of the late filed sets of claims. They are discussed in points [2], [3], [7], and [8] of this decision and need not be repeated here. [9.9] As the [patent proprietor] had an opportunity to file arguments on all questions concerning the admission of its late filed requests before the Board decided on their admission, the Board is of the opinion that its right to be heard has not been violated. Thus the objection under R 106 was dismissed. The Board also dismissed a request for a referral to the EBA and dismissed the appeal as a whole.
This is one of the cases where I wonder whether the Board did not spend more time justifying its refusal to admit the late-filed requests than it would have needed to discuss the substance of the requests. Anyway, the message is clear: patent proprietors have to define their fall-back positions as soon as possible in the proceedings. If they are filed only one month before the OPs, they are likely not to be admitted. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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R 19/11 – Forget Wednesbury
K’s Law – The ebook
R 19/11 – Forget Wednesbury 26 Dez 2012
This petition concerns decision T 284/10 where Board 3.2.08 dismissed the opponent’s appeal and maintained the patent as granted. The petition was based on the ground referred to in A 112a(2)(c), namely that a fundamental violation of A 113(1) had occurred in the appeal proceedings. The petitioner complained about the way in which the Board had reinterpreted document D3. It asked the Enlarged Board (EBA) to consider in its decision the English judicial review ground of irrationality, also known as “Wednesbury unreasonableness”. A reasoning or decision is Wednesbury unreasonable (or irrational) if it is so unreasonable that no reasonable person acting reasonably could have made it. The EBA found the petition not to be clearly inadmissible and then dealt with its allowability. [2.1] With regard to the first issue, “The reinterpretation of D3, Column 43-51”, the EBA notes that the petitioner does not dispute that the content of document D3 has been thoroughly discussed, both during the written procedure and in the oral proceedings (OPs) held on 7 July 2011 before the board of appeal, so that its right to be heard in this respect has not been violated. [2.2] In paragraph F.2 on page 12 of its petition, the petitioner summarised its position in relation to the reinterpretation of D3: “… this petition should succeed under A 112a(2)(c). Firstly, the board decided novelty and inventive step on the basis of an incorrect reinterpretation of a passage D3 of which the appellant was not aware and upon which he had no opportunity to comment. Secondly, the reinterpretation of D3 was the reason why the board decided the issues of novelty and inventive step in the way that it did. Thirdly, the reinterpretation of D3 is demonstrably wrong and sufficiently bizarre that there is no way the appellant could have anticipated it.” According to established case law, the EBA has no jurisdiction and competence whatsoever to enter into the merits of the case under the provisions of A 112a. It is not competent to consider – even indirectly – the substance of the appeal. The board which heard the case has sovereign power to assess the facts presented to it (see R 1/08 and subsequent decisions). The petitioner complained that in its written decision the board had adopted an interpretation of the critical passage of document D3 which should have been presented to the petitioner in advance so that it could have presented arguments on that view. However, as the EBA has already indicated in several previous decisions on petitions for review - some of them cited by the petitioner itself – such complaints do not disclose a denial of the right to be heard. The EBA’s jurisprudence clearly demonstrates the principle that parties are not entitled to advance indications of the reason or reasons for a decision before it is taken (see the summary of the case law in R 12/09 [11] and the several other decisions there referred to and subsequent decisions R 15/09 [4]; R 18/09 [1415;18]; and R 15/10 [7-9]). If that principle applies to the reasons for a decision generally, it must apply equally to an interpretation of a passage in the state of the art forming only part of such reasons. Thus, there can be no such denial if a board of appeal, after hearing all parties in inter partes proceedings, subsequently reaches its own conclusion which is then recorded in its written decision. A board hearing inter partes proceedings is obliged to complete neutrality. This requirement would be breached if a board, after having dispatched a communication expressing its preliminary and non-binding opinion, at OPs would inform a party of a possible different interpretation of a passage in a prior art document discussed at length at said OPs, even if that interpretation differs from those suggested by the parties. Therefore, if the EBA comes to the conclusion that the considerations that persuaded the board of appeal to arrive at its decision were related to discussions taking place in this respect in the proceedings in question, the petitioner’s argument cannot be successful. In other words, it is enough if the EBA finds that the new considerations were not unrelated to the discussions arising in the proceedings in question. In the present case it is evident that the relevant passage of document D3 was explicitly addressed in item 5.3 of the annex to the summons to OPs. Also, in the decision itself the relevant technical issues which are of 791 | 3398
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importance for the critical passage of document D3 and its possible interpretation, namely the angular positions of the protruding and receding portions of the circular profile and also the importance of their positions in relation to the phase of the periodic fluctuating load torque, are addressed […]. Consequently, the EBA cannot establish a violation of the principle of the right to be heard justifying the setting aside of the decision under review. On this first issue, the petitioner submitted further that examination of the grounds for review relating to the right to be heard should include consideration of the adequacy of the reasoning of the board’s decision. The EBA cannot subscribe to this interpretation because it would go against the legislator’s intention to establish an exhaustive list of grounds for initiating review proceedings in accordance with A 112a (see point [2.4] below). The adequacy of the reasoning of the board’s decision as put forward by the petitioner can only be considered as a new ground for review and would represent an indirect way of allowing the case to consider the substance of the appeal, which is lege ferenda and has been consistently confirmed in case law as being outside the ambit of the review procedure. [2.3] Concerning its second issue, the failure to fully consider a key argument, the petitioner submitted that an important inventive step argument had been overlooked and disregarded by the board in its decision. It argued that it was impossible to conclude on an objective basis whether the decision would have been the same if this argument had been properly considered. The EBA notes that the petitioner states […] that the board had correctly summarised this argument of the appellant/petitioner on page 9 of its written decision. The evaluation of this argument, which was obviously not found convincing by the board, is given in item 5.1 of the written decision. The fact that the board was not convinced by the “development” of this argument put forward by the petitioner during the OPs is a decision of the competent board on a substantive issue. A 112a does not alter the fact that the boards of appeal alone are the final substantive instance in proceedings under the EPC. The EBA cannot deviate from that, even through interpretation. Rather, it must confine itself strictly to the EPC’s exhaustive list of grounds for setting decisions aside. The substantive correctness of a decision’s findings and conclusions is not reviewable – even indirectly – under A 112a. [2.4] Concerning the third issue, “the judicial ground of irrationality, otherwise known as “Wednesbury unreasonableness” and the invitation to the EBA to incorporate into its own canon an equivalent of the judicial review ground of irrationality, it is completely and unambiguously clear that the list of possible grounds contained in A 112a(2) and R 104 is exhaustive. This has been made abundantly clear in the EBA’s jurisprudence (see R 1/08 [2.1, last §]; R 16/09 [2.3.5-6]; R 10/09 [2.4-5]; R 18/09 [19]; R 1/11 [2.2] and R 20/10 [2.1]). The grounds enumerated in the legislation being exhaustive, there is no scope for creating an additional ground by analogy with the judicial ground of irrationality as the petitioner seeks to do. [2.5] For the above reasons, the petition is clearly unallowable. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2354/09 – A Tree In The Woods
K’s Law – The ebook
T 2354/09 – A Tree In The Woods 25 Dez 2012
This is an appeal against the rejection of the opposition against the patent under consideration. Claim 1 as granted read: 1. An L-amino acid producing bacterium belonging to the genus Escherichia, wherein the bacterium has been modified so that the L-amino acid production by said bacterium is enhanced by enhancing activities of proteins as defined in the following (E) or (F) in a cell of said bacterium: (E) a protein which comprises the amino acid sequence shown in SEQ ID NO:11 in Sequence listing; (F) a protein which comprises an amino acid sequence including deletion, substitution, insertion or addition of 1-22 amino acids in the amino acid sequence shown in SEQ ID NO:11 in Sequence listing, and which has an activity of making bacterium having enhanced resistance to L-amino acids and/or its analogs; the activities of proteins being enhanced by transformation of said bacterium with DNA coding for protein as defined in (E) or (F), or by alteration of promoter sequence of said DNA on the chromosome of the bacterium. Among other things, the opponent pointed out that this claim was lacking novelty. The production of L-amino acids was an inherent property of E. coli bacteria. Document D1 disclosed the complete E. coli K-12 genome which included the b1242 gene (SEQ ID NO:11) encoding a protein as defined in part (E) of claim 1. Document D1 referred to the high redundancy of the sequencing strategy and to subclones with genome fragments of a size (15 to 20 kb; 250 kb) greater than that of the b1242 gene. Thus, following this sequencing strategy, it was inevitable to obtain subclones containing the complete b1242 gene. When cloning the E. coli K-12 genome, the number of copies of the b1242 gene as well as those of other genes, was increased and thus, the E. coli bacterium of claim 1 was inherently obtained. The Board rejected this argument: [15] Document D1, the sole document discussed in the decision under appeal in the context of novelty […], discloses the complete genome of E. coli K-12. The appellant argues that, by determining this sequence, an E. coli bacterium as defined in the claims would have been “inherently” produced […]. [16] The genome of E. coli K-12 disclosed in document D1 is obtained by a combination of three different approaches. The first 1.92 Mb (positions 2,686,777 to 4,639,221 in base pairs) are sequenced from an overlapping set of 15 to 20 kb MG1655 lambda clones, a second segment (2,475,719 to 2,690,160) is sequenced using non-overlapping DNA fragments by a popout plasmid approach, and the largest portion of the genome (22,551 to 2,497,976) is sequenced from M13 Janus shotguns with fragments of about 250 kb. The M13 Janus shotgun strategy involves an initial random sequencing at a four to fivefold redundancy and it is the most efficient strategy […]. There is, however, no information either in document D1 or in any other document on file on the precise location of the b1242 gene within the E. coli K-12 genome and thus, it cannot be excluded with certainty that the b1242 gene is located within the second segment of the E. coli genome in which nonoverlapping fragments were used. [17] Similarly, with the evidence at hand, it cannot be said with certainty that the complete, full-length sequence of the b1242 gene is inevitably present in at least one of the clones or subclones resulting from the three cloning strategies used in document D1. There is no evidence on file of the presence of a clone containing and identifying the specific sequence of the b1242 gene (SEQ ID NO:11). There is also no evidence on file that any of the clones or subclones obtained by the strategies used in document D1 results in an E. coli bacterium having an enhanced production of L-amino acids. [18] Moreover, according to the established case law (cf. inter alia T 18/09 [10-15]), the presence of a cDNA sequence - without any further (indexed) information or identification - in a clone collection, a sequence databank or, as in the present case, in a complete genome sequence of about 4.64 Mb, does not “make available”
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this cDNA sequence directly and unambiguously to the skilled person. This is in line with the difference made in the case law between an “implicit” and an “inherent” disclosure as laid down in the decision G 2/88. [19] Thus, the board considers the claimed subject-matter to fulfil the requirements of A 54. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1206/12 – Case Law Slugfest
K’s Law – The ebook
T 1206/12 – Case Law Slugfest 24 Dez 2012
In this case the Examining Division (ED) had refused the application for lack of inventive step only in view of common knowledge and without any reference to prior art documents. The Board set aside the decision and remitted the case, expressing its dissatisfaction with the way in which the ED had proceeded: [1] A 113 (1) EPC 1973 provides that decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. R 68 (2) EPC 1973 further provides that decisions of the EPO which are open to appeal must be reasoned. [1.1] According to established jurisprudence of the boards of appeal (see e.g. T 763/04 [4.3]), A 113 (1) EPC 1973 is contravened where facts and arguments, which from the appellant’s submissions are clearly central to his case and which may speak against the decision taken, are completely disregarded in the decision in question. [1.2] Further, established jurisprudence of the boards of appeal explains R 68 (2) EPC 1973 as requiring that a decision must contain, in logical sequence, those arguments which justify the tenor. The grounds upon which a decision is based and all decisive considerations in respect of the factual and legal aspects of the case must be discussed in detail in the decision (see e.g. T 278/00 [2]) so as to enable the parties and, in case of an appeal, the board of appeal to examine whether the decision was justified or not. [1.3] In the board’s judgment the decision under appeal violates both fundamental requirements for the following reasons. [2] Claim 1 defines a method “for determining how many wells to drill in a plurality of oil and gas field assets” which is defined by a number of algorithmic, mostly mathematical steps operating on variables re la ting to these assets, in particular on decision variables which represent the desired number of how many wells to drill (see step a). Moreover, as part of the method, algorithms making asset-specific predictions are executed, too (see steps a and c3). [2.1] That a major part of the claimed method is a mathematical one was uncontroversial between the ED and the applicant. It was however controversial whether the mathematical steps according to claim 1 must or need not be taken into account when assessing inventive step. [2.2] The applicant filed the claims subject to the appealed decision in response to the ED’s objection […] that the claims essentially constituted the implementation of a mathematical method as such on a computer. In the accompanying letter, the applicant argued that and why it considered that the method according to the amended claims was not a mathematical method as such, had technical character and provided the technical solution to a technical problem […]. In its response to the summons to oral proceedings (OPs), the applicant further detailed its position that the claimed invention “employ[ed] technical means” and was “limited to a particular technical application” […]. It further invoked T 1227/05 to justify its opinion that the claimed method cannot be denied a technical effect even though it does not incorporate the physical end product (in this case, the actual drilling of wells) since it “serve[s] a technical purpose” and is also “functionally limited to that technical purpose” […]. A similar argument was based on T 49/99 […]. Therefore, so the applicant’s argument, all method steps, the mathematical ones included, had to be taken into account when assessing inventive step […]. [2.3] Apparently, this issue was the main contentious point when the ED took its decision. [2.4] In its decision, the ED provides a rather terse summary of claim 1 […] and then states that “all ... features defining the algorithm” except those relating to a “computer processing data” neither have technical character nor “confer technical considerations” on the claim […].
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T 1206/12 – Case Law Slugfest
K’s Law – The ebook
[2.5] The ED does not, however, provide reasons for this allegation. In particular, no reasons are provided as to why neither the claimed fact that “the assets are wells to drill” […] nor the purpose of the claim 1 according to its preamble, namely to “determin[e] how many wells to drill” confer technical character on the claimed method. [3] Points 13-15 of the decision cite T 258/03, T 641/00 and T 1173/97 as established jurisprudence and suggest that the ED means to follow the principles laid out in these decisions. This could not have surprised the applicant given that the applicant itself referred to pertinent jurisprudence of the boards of appeal and to a Practice and Procedure Notice of the EPO (PPN 04/08; […]). [3.1] However, the mere reference to jurisprudence of the boards of appeal does not, by itself, constitute or replace an argument in a first instance decision. If a deciding body, in a decision, wants to rely on an argument put forward in a decision of the boards, be it part of its ratio decidendi or an obiter dictum, it is insufficient merely to refer to it or to recite it. The deciding body must also make clear, by explicit statement or by unambiguous implication, that it adopts the argument and explain why, in what respect and to what extent this argument applies to the case at hand. [3.2] The decision under appeal however does not explain how the cited decisions apply to the case at hand. Specifically, it does not explain why the ED considers, as it appears to, that the fact that “assets are wells to drill” and the aim to “calculate the number of wells to drill” do not contribute to the technical character of the claim and thus cannot, according to T 641/00 [catchword 1], contribute to inventive step. The decision also does not formulate the technical problem in accordance with T 641/00 [catchword 2] which, if any, the claimed invention is considered to solve, nor argues why it does not consider that the preamble of claim 1 (“how many wells to drill in a plurality of oil and gas field assets”) constitutes this technical problem as the applicant proposed […]. [4] With reference to T 1227/05 the ED only argues […] that “the specific purpose of the procedural steps of claim 1 is not reflected in the aim of the claim, namely to calculate the number of wells to drill”. This sentence is the only one in the decision under appeal which responds directly to the applicant’s argument based on T 1227/05. [4.1] In the board’s view, the precise meaning of this statement is unclear as it stands, but it suggests at least that the “steps of claim 1” are, in the opinion of the ED, somehow detached from the “purpose of the claim”. This allegation however appears at least not to be completely accurate, for instance insofar as step a specifies the method to operate on “decision variables represent[ing] the possible outcomes for the number of wells to be drilled”. [4.2] Even assuming, arguendo, that the “purpose of the ... steps of claim 1” is indeed not “reflected in the aim of the claim”, it remains unclear from the decision why this is an objectionable deficiency and, in particular, what bearing this deficiency has on the overall finding of lack of inventive step. As it stands, the statement in point 16 might also be read as a clarity objection. [5] In point 17 of the decision under appeal, the ED argues that “point 7 of T 1029/06 (Toshiba) very well reflects the line of reasoning for the current application”, and cites it: “the majority of the steps are typical tools of operational research that normally have not been considered technical in the established jurisprudence, in particular if only information is processed for the purpose of management decisions”. [5.1] The board’s view, point 17 is ambiguous as to whether the examining (sic) meant the reference to T 1029/06 to be a constitutive part of its “line of reasoning” or a mere illustration of it. In the former case, it would appear arguable that, in conflict with A 113 (1) EPC 1973, the applicant had hardly any opportunity to present its comments on this part of the grounds for the refusal, since that the ED had introduced T 1029/06 during a telephone conversation a mere two weeks before the OPs and, according to the minutes of this conversation, explained its pertinence with the same terse words as used in point 17 of the decision. [5.2] Moreover, the appealed decision does not explain in what sense the cited passage of T 1029/06 has any bearing on the inventive step of claim 1 (see point [3.1] above). First, it would seem from the applicant’s arguments that it would probably oppose the view that the steps of claim 1 are “typical tools of operational research” or are meant to process information only “for the purpose of management decisions”, and this position would appear to be at least prima facie plausible and therefore cannot be silently dismissed by the ED.
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T 1206/12 – Case Law Slugfest
K’s Law – The ebook
Second, the cited passage of T 1029/06 refers only to “the majority of steps” which leaves open the possibility that the remaining steps may be technical and sufficient to establish an inventive step. [6] The board further notes that the applicant had argued in favour of inventive step that the claimed invention would “provide a massive amount of parallelism for the overall calculation” “by dispatching the execution of the set of algorithms from the first computer to one or more second computers” […], but that neither the summons to OPs nor the decision under appeal addressed this argument. Summary [7] In the board’s judgment, the reasons given in the decision under appeal do not conform with R 68 (2) EPC 1973 because they are insufficient for the applicant to understand why the ED considered the claimed method to lack an inventive step. Moreover, the reasons do not conform with A 113 (1) because they are insufficient for the applicant to understand why the ED dismissed the applicant’s argument provided in the submissions dated 11 November 2011 and 29 December 2009. [8] The violation of a party’s right to be heard and insufficiency of reasoning are both substantial procedural violations which require the decision under appeal to be set aside and the case to be remitted to the first instance without the board assessing the substantive merits of the case, see Article 11 RPBA. The appeal is thus to be allowed and the Board considers it equitable by reason of the substantial procedural violations to reimburse the appeal fee (R 67 EPC 1973). Should you wish to download the whole decision, just click here; parallel case T 1205/12 is found here. The
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T 1545/08 – Try And See
K’s Law – The ebook
T 1545/08 – Try And See 22 Dez 2012
As we have seen in the preceding post, the Board was bound by a preceding Board decision and could only examine whether the invention involved an inventive step. The opponents launched an impressive firework of objections, one of which was that the skilled person would have adopted a “try and see” attitude. [92] As a fifth line of argument [opponent 3] asserts that the skilled person would have at least adopted a “try and see” attitude towards the use of interferon and ribavirin for treating naïve patients having an HCV 1 genotype infection, a viral load of greater than 2 million copies per ml of serum for a period of 40 to 50 weeks and hence an inventive step was not present. [93] In decision T 1599/06 [20.2] the board observed that the “try and see” approach has been applied in the assessment of inventive step in situations where, in view of the prior art, the skilled person had clearly envisaged a group of compounds or a compound and then could determine by routine tests whether or not such compound(s) had the desired effect. In decision T 293/07 [37] the board considered that the testing of humans could not be considered to represent known routine tests and accordingly the skilled person was not in a “try and see” situation. Also in decision T 847/07 [70] the board considered it questionable whether the skilled person would adopt a “try and see” attitude at all in cases where human testing would be necessary in order to determine whether or not a compound has a certain property. [94] In the present case, it can be taken from document OD2 that neither cell culture nor animal models of HCV were available one year before the priority date of the patent. In fact document OD2 states […] that “[u]nfortunately, cell culture systems and animal models of HCV replication are yet to be developed and the lack of simple in vitro and in vivo systems for evaluating antiviral agents for effects on HCV replication makes it necessary to investigate agents of promise in humans with this disease.” No evidence is before the board that at the priority date this situation had changed. It follows that the effect of the combination had to be tested in humans. In line with established case law […] the board concludes that the skilled person was not in a “try and see” situation. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1545/08 – Bound
K’s Law – The ebook
T 1545/08 – Bound 21 Dez 2012
This is the second appeal in this opposition case. In a first decision, the Opposition Division (OD) had rejected the oppositions. Appeals were filed by opponents 1 to 4. The Board of appeal (“BoA”; decision T 1399/04) decided that with regard to the question of inventive step the decision had been taken in violation of the opponents’ right to be heard. The BoA also decided that the main request (patent as granted) fulfilled the requirements of A 123(2), A 52(4) and A 54 EPC 1973 and that its claims were entitled to the claimed priority. The case was remitted to the department of first instance for further prosecution. In its second decision, the OD found the main request to lack inventive step. The patent was maintained on the basis of the eleventh auxiliary request. Both the patent proprietor and three of the four opponents filed appeals. The BoA, in a different composition, finally decided that the patent was to be maintained as granted. The decision inter alia contains an interesting discussion of res judicata, ratio decidendi and more Latin stuff. Binding effect of decision T 1399/04 [10] As set out above […], the present case constitutes the second appeal concerning the patent and the only issue to be decided with regard to the main request is inventive step. [11] The parties disagree on whether the interpretation of document OD2 by the board in decision T 1399/04 [34] is binding on the present board or not. While [the patent proprietor] considers that the finding is res judicata and binding, [opponent 2] submits that the relevant finding in the context of novelty is not res judicata and is not binding on the present board in its assessment of inventive step. [12] According to established jurisprudence, “res judicata” means a matter finally settled by a court of competent jurisdiction, rendering that matter conclusive as to the rights of the parties and their privies, such a final judgement constituting an absolute bar to a subsequent legal action involving the same claim, demand or cause of action, and the same parties or their privies (Case Law, 6 th edition 2010, VII.E.11.1). It follows, that the following findings of the BoA in the first appeal proceedings (cf. decision T 1399/04) are “res judicata” for the present appeal proceedings: the subject-matter of claims 1-11 as granted is entitled to the claimed priority, relates to patentable subject-matter, finds a basis in the application as originally filed, and is novel over the public prior use disclosed in document OD105 and the disclosure of documents OD2, OD8 and OD12. The interpretation of document OD2 by the board in decision T 1399/04 is consequently not “res judicata”. [13] However, for the interpretation of document OD2 in the present appeal proceedings the provisions of A 111(2) are of relevance. Pursuant to A 111(2), if the BoA remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the BoA in so far as the facts are the same. [14] According to the established jurisprudence of the BoA, the same binding effect applies to a subsequent appeal in respect of an earlier decision of a BoA as it applies to the department of first instance (Case Law, 6 th edition 2010, VII.E.11.1). This has not changed with the introduction of new A 112a (Petition for review by the Enlarged Board of Appeal), see decision T 365/09 [2]. Accordingly, the board in the present appeal proceedings is bound by the ratio decidendi of earlier decision T 1399/04 in so far as the facts are the same. [15] It is well established that the “ratio decidendi” of a decision under A 111(2) is the ground or the reason for making it - in other words, the point in a case which determines the outcome of the judgement (Case Law, 6 th edition 2010, VII.E.11.1). The ground or reasons for making the decision that the subject-matter of claim 1 is novel over document OD2 is thus of relevance. [16] In decision T 1399/04 [34] the board analyses document OD2 and notes:
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T 1545/08 – Bound
K’s Law – The ebook
“In the chapter titled “Discussion” on page 110S, right column, it is said that it is difficult to recommend combination therapy as the first approach to treatment for interferon naïve patients. Especially patients with a favourable clinical profile (young age, low viral load or infection with HCV genotype 2 or 3) respond equally well to interferon alone. The sentence bridging pages 110S and 111S reads as follows: “In this respect, patients with high HCV RNA levels, genotype 1, high degrees of viral genomic diversity, or histological evidence of advanced fibrosis or cirrhosis would be candidates to receive combination therapy initially.” (emphasis added by the board).” The board then explains how it understands the sentence bridging pages 110S and 111S of document OD2, (see decision T 1399/04 [34]): “The sentence bridging pages 110S and 111S (see above) lists several parameters of a clinical profile that would make an interferon naïve patient a candidate for receiving combination therapy initially. The first three of these parameters are separated by commas, the third and fourth parameters are separated by the word “or”. The Board concludes that the authors of document OD2 considered a patient having a high HCV RNA level, or genotype 1, or a high degree of viral genomic diversity, or histological evidence of advanced fibrosis or cirrhosis, to be a candidate for combination therapy.” [17] Hence there can be no doubt that one of the reasons for finding the subject-matter of claim 1 to be novel over document OD2 was that this document did not disclose the patient group as defined in present claim 1 (see decision T 1399/04 [34]). [18] Accordingly, the argument of [opponent 2] that the sentence bridging pages 110S and 111S of document OD2, when read together with the previous sentence relating to patients with a favourable clinical profile, discloses a patient group having a high HCV-RNA level and genotype 1 runs contrary to the ratio decidendi in decision T 1399/04. [19] The board would not be bound by the ratio decidendi in decision T 1399/04 if the facts were not the same (see last sentence, point [14] above). However, document OD2 has not changed nor have the claims under consideration. The question which needs to be answered is thus whether consideration of the sentence bridging pages 110S and 111S in document OD2 in combination with the previous sentence amounts to a new fact. [20] According to decision T 860/93 [5.1] “[i]t is a general principle of law that the proper interpretation of any document, and more specifically any part of a document, is to be derived by having regard to the document as a whole. That principle is expressed in Latin as: Ex praecedentibus et consequentibus optima fit interpretations. [The Latinists among you will have realised that ‘interpretations’ is a typo for ‘interpretatio’] (The best interpretation is that made from what precedes and what follows).” [Opponent 2] has not advanced any indication that this principle was not followed by the board in decision T 1399/04 when arriving at the interpretation of document OD2. In fact, it can be taken from decision T 1399/04 [34] that the board took into account not only the preceding but also the following sentences of document OD2 when it arrived at its interpretation of the sentence bridging pages 110S and 111S. The present board concludes that the facts are, thus, unchanged. [21] It follows that the argument of [opponent 2] which runs contrary to the ratio decidendi of decision T 1399/04 must be disregarded in view of the binding effect of T 1399/04 in the present appeal proceedings pursuant to A 111(2). For the purpose of the present decision the sentence bridging pages 110S and 111S of document OD2 is thus understood as disclosing a patient having either a high HCV RNA level, or a HCV genotype 1 infection, or a high degree of viral genomic diversity, or histological evidence of advanced fibrosis or cirrhosis, to be a candidate for combination therapy. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 442/11 – Re-Search
K’s Law – The ebook
T 442/11 – Re-Search 20 Dez 2012
This is an examination appeal concerning a Euro-PCT application. The EPO, acting as ISA, pointed out that the application contained six inventions and invited the applicant to pay five additional search fees. The applicant did not pay any additional fee. Upon entry into the European phase, on October 13, 2006, the Examining Division (ED) confirmed the objection of lack of unity. The applicant did not pay a supplementary search fee (which was still possible at that time, even though the EPO had acted as ISA) but filed a new set of claims comprising a method claim and a device claim (both of which were mixes of features of inventions 1 and 2 according to the ISA). On October 18, 2010, the ED refused the application and justified this refusal by pointing out that the claims corresponded to invention 2, which had not been searched, which meant that the claims on file did not comply with the then applicable R 137(4). The applicant filed an appeal and argued that it had further delimited the first invention by adding features taken from the second invention. The Board found the claims on file to comply with A 123(2) and then went on to say: *** Translation of the German original *** R 137 – Amendment of the European patent application [2.2.1] The application under consideration was filed on July 11, 2005, as an international application and entered the European phase on October 13, 2006. At the time of the entry into force of the EPC 2000, on December 13, 2007, it was already pending before the EPO. According to the transitional provisions for the Implementing Regulations to the EPC 2000 (see the “Decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the EPC 2000”, OJ EPO 2007, Special Edition 1, 89) the applicability of a Rule depends on the transitional provisions for the corresponding Article to which the Rule refers. R 137 concerns amendments of the European patent application and, therefore, constitutes an implementing regulation to A 123. The transitional provisions for the EPC (see the “Decision of the Administrative Council of 28 June 2001”, OJ EPO 2007, Special Edition 4, 219) provide in Article 1, first paragraph that they shall apply to all European patent applications pending at the time of its entry into force, which includes the present application. By a “Decision of the Administrative Council of 25 March 2009” (OJ EPO 2009, 299) R 137 has been amended. R 137 as amended shall apply to European patent applications for which the European search report or the supplementary European search report is drawn up on or after April 1, 2010. As the European search report for the application under consideration was drawn up before April 1, 2010, R 137 as amended by the Decision of the Administrative Council of 25 March 2009 is not applicable here. R 137(4) in the version that was in force from December 13, 2007, to March 31, 2010 (hereinafter referred to as R 137(4), version of before April 1, 2010) has to be applied. [2.2.2] R 137(4), version of before April 1, 2010, provides that amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept. Thus the wording of the provision is identical to that of R 86(4) EPC 1973, which entered into force on June 1, 1995, and which was introduced into the Implementing Regulations in order to hinder applicants from modifying the scope of protection, in the course of the examination proceedings, so that it encompasses unsearched parts of the application that had not been claimed so far (see the “travaux préparatoires” concenring R 86(4) EPC 1973, published in the “Notice dated 1 June 1995 concerning 801 | 3398
T 442/11 – Re-Search
K’s Law – The ebook
amendment of the EPC, the Implementing Regulations and the Rules relating to Fees”, OJ EPO 1995, 409 et seq., in particular pages 420 et 421). [2.2.3] The reasons for the impugned decision state that the subject-matter of claims 1 and 19 according to the main request do not comply with the requirements of R 137. The gist of the argument of the ED is that the original claims 1 to 45 are not unitary and decompose into six inventions. In the main request the original independent claims 1 and 21 have been limited by adding features of the original dependent claims 3 and 20 and 23 and 20, respectively, which had been considered to belong to the second invention. However, as no search report had been established for the second invention, the requirements of R 137(4) had not been complied with. [2.2.4] The Board cannot endorse this line of reasoning. The original claims 1 and 19, on which the impugned decision is based, essentially constitute combinations of original claims 1, 3 and 20, and 21, 23 and 40, respectively. As these combinations had already been claimed when the search was carried out, they cannot be objected to according to R 137(4), version of before April 1, 2010, as explained in the travaux préparatoires cited above. R 164 – Consideration of unity by the EPO [2.3] As the application under consideration is a Euro-PCT application, the requirements of R 164 also have to be complied with. [2.3.1] As already explained above, according to the transitional provisions for the Implementing Regulation to the EPC 2000, the applicability of a Rule depends on the transitional provisions for the corresponding Article to which the Rule refers. R 164 concerns the consideration of unity by the EPO acting as Designated Office or Elected Office and, therefore, constitutes a Rule implementing A 153, for which the above cited transitional provisions to the EPC 2000 stipulate, in Article 1, paragraph 6, that it shall apply to international applications pending at the time of their entry into force, and thus also to the present application. R 164 was amended by “Decision of the Administrative Council of 27 October 2009” (OJ EPO 2009, 582). The only change was that the Rule as amended takes into account the newly created possibility of carrying out a supplementary international search. R 164 as amended entered into force on April 1, 2010, without there being any transitional provisions. Thus it was applicable at the time of the impugned decision. [2.3.2] Paragraph 2 of R 164, which concerns substantive examination, reads: “Where the ED finds that the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention, or protection is sought for an invention not covered by the international search report or, as the case may be, by the supplementary international search report or supplementary European search report, it shall invite the applicant to limit the application to one invention covered by the international search report, the supplementary international search report or the supplementary European search report.” Whereas the first part of the sentence of R 164(2), preceding the [first use of the] word “or”, concerns the lack of unity of the invention in respect of the application documents on which the European grant procedure is to be based, the second part of R 164(2), following the [first] “or”, deals with the situation where [the applicant] seeks protection for an invention that had not been covered by the international (or supplementary European) search report. In both cases the rule provides that the applicant is to be invited to limit the application to one invention covered by the international search report. The explanations regarding the purpose of R 164(2) in document CA/PL 17/06 (see OJ EPO, 2007 Special edition 5, p. 256) insist on the fact that in principle examination is only carried out on inventions covered either by the international search report or by the supplementary search report, in line with Enlarged Board of Appeal decision G 2/92. It follows that the second part of R 164(2) is intended to hinder [applicants] from switching from a searched invention to an invention which had originally been claimed but which had not been searched because no additional search fees had been paid, in the course of the grant proceedings of a Euro-PCT application.
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T 442/11 – Re-Search
K’s Law – The ebook
[2.3.3] As regards the first part of R 164(2), it has to be noted that the present claims 1 to 40 according to the main request only comprise one single independent method claim and one single corresponding independent device claim 19, which only differ in the wording of their features as device or method features. As a rule, an independent method claim and a corresponding independent claim directed at a device that was specially developed for carrying out the claimed method are considered unitary. Since this also holds true for the present set of claims, the application documents on which the European grant procedure is to be based do meet the requirements of unity of invention under R 164(2), first part. [2.3.4] As far as the second part of said provision is concerned, it has to be taken into account that the present independent claims 1 and 19 both are directed at a combination of features which have been considered to belong to the second invention when the claims were found to lack unity, both in the communication of the ISA and in the impugned decision, and which, as a consequence, have not been searched. However, the application of R 164(2), second part, presupposes that the [ISA] was right not to consider the invention in the international search report. Thus the Board considers it to be necessary to examine whether the subject-matter of original claims 2 and 22 was indeed non unitary with the subject-matter of original claims 3, 20, 23, and 40, i.e. whether it was justified not to deal with the subject-matter of the latter in the international search report. [2.3.5] In the impugned decision the ED has endorsed the reasons for the finding of lack of unity provided by the ISA and referred to the different problems to be solved by inventions 1 and 2. The ED states in the impugned decision that the second invention solves the problem of “transforming a translational movement of the preform (Vorformling) into a rotational movement” […]. The Board notes that this is the very problem cited in the application as originally filed, in connection with the feature that the preform rolls along an elongated surface, i.e. the subject-matter that the ED has considered to be the first invention. As the subject-matter referred to as first and second invention by the ED apparently solve the same problem, the Board cannot – be it only for this reason – endorse the justification given in the impugned decision for the finding that the subject-matter corresponding to these two inventions […] lacks unity. Moreover, the Board refers to original claim 5, which is directed at a method where the preform is guided by rails and two rolls. Notwithstanding the fact that this claim has been considered to belong to the second invention, it concerns a combination of the features of the first and second inventions, which interact to ensure a three-point guidance (Dreipunktführung) for the preform […]. In view of this interaction between the rails and the rolls documented in the application, the Board cannot consider the subject-matter of original claims 2 and 22 on the one hand and the subject-matter of claims 3, 20, 23, and 40 on the other hand, to constitute independent inventions. Therefore the Board comes to the conclusion that at least the subject-matter of the latter claims should have been covered by the international search report or by an additional search during the European phase, as the case may be. Thus the claims according to the main request do not violate the requirements of R 164(2), second part. In this context the Board expressly refers to the decision G 1/89 [8.2] of the Enlaged Board, according to which [the EPO] has to take care that the applicant is treated in a fair manner, in particular in case of “a posteriori” objections of lack of unity, and that in border-line cases [the EPO] should refrain from considering an application as not complying with the requirement of unity of invention on the ground of lack of novelty or inventive step. [2.4] Thus, in the present case, the fact that claims 1 and 19 as amended do not exclusively comprise features of searched claims 1 and 21 but have been limited by the features of original claims 3 and 20 or 23 and 40, respectively, which have not been but should have been searched, may require an additional search, but it does not justify the refusal of the application. In view of the fact that neither the requirements of A 123(2) nor the requirements of R 137(4), version of before April 1, 2010, and R 164(2) can be objected to the subject-matter of the claims of the main request, the impugned decision has to be set aside. Remittal to the ED [3] As the present claims comprise features that have not been searched the application is remitted to the ED for further prosecution, possibly after an additional search has been carried out. NB: The Board has also prepared a headnote: 803 | 3398
T 442/11 – Re-Search
K’s Law – The ebook
R 137(4) in its version of before April 1, 2010, is intended to hinder applicants from changing the scope of protection in the course of the examination proceedings towards unsearched parts of the application that had not been claimed yet when the search was carried out. The application of R 164(2), second part presupposes that [the ISA] was right not to conisder the invention in the international search report. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 135/12 – Notorious Nineteen
K’s Law – The ebook
T 135/12 – Notorious Nineteen 19 Dez 2012
Although A 19 is pretty straightforward, the EPO quite regularly manages to have decisions issued by Opposition Divisions (OD) the composition of which is unlawful. Here is yet another example. The appeal was filed by the opponent after the OD had maintained the patent in amended form. *** Translation of the German original *** Substantial procedural violation [1.1] Pursuant to A 19(2) the composition of the OD has to fulfil the following requirements (emphasis by the Board): “(2) An OD shall consist of three technically qualified examiners, at least two of whom shall not have taken part in the proceedings for grant of the patent to which the opposition relates.” [1.2] In the present case the Examining Division (ED) consisted of Examiners A, B and C (C being the chairman) when it issued the communication pursuant to R 71(3) (intention to grant, see EPO form 2035.4 (sheet 1) dated April 16, 2008, as well as EPO form 2004, sheet R, dated May 21, 2008). The decision to grant dated October 2, 2008, was taken by the ED in the same composition. The OD appears to also have consisted – as far as can be seen from the publicly available documents – of Examiners A and B, but the OD was chaired by Examiner D (see the summons to oral proceedings (OPs), EPO form 2310, dated February 10, 2011, and the minutes to the OPs EPO form 2309 (sheet 1) and the interlocutory decision, EPO form 2327, sheet 2, both dated November 8, 2011). [1.3] Thus it is apparent from the cited documents that the composition of the OD in the opposition proceedings against European patent EP-B-1 582 607 does not fulfil the requirements of A 19(2) because two members of the OD had also taken part in the proceedings for grant of the patent to which the opposition relates. The competent Director, who determines the composition of the OD, should not have appointed one of these Examiners, or should have replaced him/her (see the Guidelines, December 2007 or April 2010 version, D-II, 2.1 und 2.3, und D-IV, 2). [1.3.1] It is not apparent from the publicly available file whether the initial composition of the OD was correct and whether the composition was changed in the course of the proceedings without taking into account A 19(2), but this is irrelevant for the assessment of the situation anyway. However, the Board wishes to point out that in both cases the competent Director or the designated chairman, respectively, has to check that the requirements of A 19(2) are fulfilled. [1.3.2] It is only after the OPs that the chairman has realised that the composition of the OD did not comply with the requirements of A 19(2). This is why a communication (Bescheid, EPO form 2906, sheet 1) was added to the minutes of the OPS wherein this fact was stated. Moreover, [the OD] – correctly – pointed out that the OD was unable of correcting this error itself. Thus the parties were instructed that they had the right to criticise (bemängeln) this error by means of an appeal. In that case the appeal fee would be reimbursed under R 103(1)(a) and the case would be remitted to the first instance for further processing under A 111(1). [1.4] According to the established case law of the Boards of appeal the violation of A 19(2) constitutes a substantial procedural violation resulting in the decision of the OD being set aside (see, e.g. T 382/92). As such it requires the reimbursement of the appeal fee as well as, as a rule, the remittal of the case to an OD having a correct composition for a new examination (see Case Law, 6 th edition, VI.J.2.2, see e.g. T 251/88 or T 1700/10) In this context the Board wishes to point out that the ED is not entitled (es steht ihr nicht zu) to make statements falling within the competence of the Board, such as reimbursement of the appeal fee and remittal to the ED. 805 | 3398
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Reimbursement of the appeal fee (R 103(1)(a)) As the Board has established above (point [1.4]) such a substantial procedural violation has been committed here; it is necessary to set aside the decision. As there are no special reasons not to do so (this case was given priority treatment) the case is to be remitted for further examination by an OD in correct composition under Article 11 RPBA. As the substantial procedural violation was the cause for the remittal to the first instance, it is equitable to reimburse the appeal fee in application of R 103(1)(a); the corresponding request of the [opponent] is granted. NB: the Board has provided a headnote: When the composition of the OD is determined or changed, respectively, the requirements of A 19(2) are to be checked (again). Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 573/09 – Bad Manoeuvre
K’s Law – The ebook
T 573/09 – Bad Manoeuvre 18 Dez 2012
Having an appeal dismissed on substantive grounds is not a pleasant experience, but having it dismissed as inadmissible is even more painful. This is what happened to the appellant in the present case, an appeal against the decision of the Examining Division (ED) to refuse the application under consideration. At the end of oral proceedings (OPs), the ED had announced that it intended to grant the patent as amended during the OPs held on February 13, 2008. A set of claims filed on December 21, 2007, had been found not to be allowable. A R 71(3) communication was issued on March 12, 2008. The applicant replied by a letter dated July 7, 2008, stating that it could not give its agreement on the text for grant. It requested the ED to grant a patent based on the claims filed on December 21, 2007. Unsurprisingly, the application was refused. The applicant filed an appeal. Even though R 71 has changed since then, which should make it more difficult for an applicant to find itself in such a situation, the decision of the Board of appeal provides a nice overview over the requirements for an appeal to be admissible. [1] A 108, third sentence, provides that within four months of notification of the decision a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations. According to R 99(2), in the statement of grounds of appeal (SGA) the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based. An appeal which does not comply with this requirement shall be rejected as inadmissible (R 101(1)). [1.1] If the appellant submits that the decision under appeal is incorrect, then the statement setting out the grounds of appeal must state the legal or factual reasons why the impugned decision should be set aside. The arguments must enable the board to understand immediately why the decision is alleged to be incorrect and on what facts the appellant bases its arguments, without first having to make investigations of its own (cf. T 220/83 [4] and T 177/97 [1]; affirmed by numerous decisions). Whether the requirements of A 108, third sentence, in conjunction with R 99(2) are met has to be decided on the basis of the SGA and of the reasons given in the contested decision (see for example J 22/86 [2]; T 162/97 [1.1.2]), taking into account any amendments made to the claims. Exceptionally, it has been acknowledged that “the requirement for admissibility [laid down in A 108 EPC 1973] may be regarded as satisfied if it is immediately apparent upon reading the decision under appeal and the written statement [of grounds] that the decision should be set aside” (see J 22/86 [headnote 1]). [1.2] Different principles may apply if the appellant does not submit that the decision under appeal is incorrect but files new claims together with the SGA. In this respect, T 934/02 [2] provides the following summary of T 717/01: “An appeal of the patent proprietor is to be considered sufficiently substantiated within the meaning of A 108, third sentence, even though it does not state any specific reasons why the contested decision is wrong, if (i) there is a change in the subject of the proceedings due to the filing of new claims together with the SGA
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(ii) the SGA sets out in detail why the raised grounds for opposition do not prejudice the maintenance of the patent as amended on the basis of these new claims.” Relying on this stance, the board in T 934/02 saw no reason why the appellant (patent proprietor) in its appeal should be obliged to deal with the reasoning in the opposition division’s decision when such reasoning no longer applied in view of the amended claims. An appeal might be substantiated by filing amended claims which deprived the contested decision of its basis. It was therefore not necessary, and would also be pointless, for the purposes of adequately substantiating an appeal, to file grounds in support of a version of a claim that the appellant (patent proprietor) was no longer defending in the appeal proceedings. Analogously to the situation under point [1.1] where the appellant submits that the decision under appeal is incorrect, in the present board’s view the requirement for admissibility may exceptionally also be regarded as satisfied where the appellant makes no such submission if it is immediately apparent upon reading the decision under appeal and the written SGA that the decision should be set aside. In addition, there may be no need for explanation if – unusually – the amendments offered self-evidently overcome the grounds for the decision (see T 1276/05 [1.2]). [2] In the present case, the ED did not refuse the application on the basis that the previous set of claims on file could not be allowed. The applicant had requested the grant of a patent on the basis of a set of claims to which the ED had not given its consent under R 137(3). The application was therefore refused on the ground that the ED, pursuant to A 113(2) EPC 1973, was bound to decide on a text submitted to it. Thus the decision under appeal was based on the ground that there was no agreed set of claims. Implicitly this meant that a patent could not be granted (A 97(1) in conjunction with A 78(1)(c) EPC 1973), and that the application consequently had to be refused (A 97(2)). [2.1] The SGA does not give any reasons why the decision under appeal is thought to be incorrect, or discuss the absence of an agreed set of claims underlying it. The appellant does not dispute that there was no agreed set of claims and that, as a consequence, the ED was entitled to refuse the application. Nor does the appellant dispute that the ED was entitled to exercise its discretion under R 137(3) or that it had exercised this discretion in accordance with the right principles. Instead the SGA gives arguments as to why the claims of the sole request filed with the SGA are clear and why the subject-matter of these claims is both new and inventive in view of the prior art cited in the first-instance proceedings. Furthermore, the appellant did not comment on the issue of admissibility of the appeal raised by the board, in the communication annexed to the summons to OPs, because the board could not see that the appellant, in the SGA, had addressed the decision under appeal by providing reasons as to why the refusal should be set aside. Against this backdrop the board must conclude that the appellant does not dispute that the decision under appeal was correct. [2.2] It is also not apparent upon reading the decision under appeal and the written statement that the decision was so flawed that it should be set aside (see point [1.1] above). On the contrary, the board cannot criticise the ED’s exercise of its discretion under R 137(3) not to admit the applicant’s request. In exercising its discretion, the division took into account the very late stage in the proceedings at which the applicant had requested to revert to its previously filed request, together with the fact that this request had already been considered in the OPs before the division and, subsequent to the division’s unfavourable opinion, had been withdrawn by the applicant. The ED thus took account of the right principles, as required by the Enlarged Board in G 7/93 [2.22.5]. [2.3] Hence the present case corresponds to the situation described above, at point [1.2], citing T 717/01 and T 934/02, insofar as the appellant has not submitted that the decision under appeal was incorrect but filed new claims of a sole request together with a SGA maintaining that these claims were clear and that their subjectmatter was both new and inventive. As in those two cases, there was a change in the subject of the proceedings due to the filing of new claims together with the SGA. [2.4] However, unlike the situation in T 717/01 and T 934/02, as already stated, the application was not refused on the basis that the previous set of claims on file could not be allowed, i.e. for lack of clarity, novelty or inventive step. Rather, the decision under appeal was based on the ground that there was no agreed set of claims, due to the fact that the ED had exercised its discretion not to re-admit the claims of 21 December 2007 into the proceedings after having discussed them at OPs and the applicant having withdrawn them. The underlying principle for the exercise of the ED’s discretion is “the EPO’s interest in bringing the examination procedure to a close” (see G 7/93 [2.5]), i.e. the principle of procedural economy, which has to be balanced against the applicant’s rights, for example and as was the case in G 7/93, to obtain a patent which is legally valid in all of the designated states. In the present case, by changing its mind with respect to the set of claims according to which a
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patent was requested and reverting to the set of claims that it had withdrawn during the OPs, the appellant was trying at a very late stage in the proceedings to reopen the discussion on questions of substantive patent law. Under these circumstances, in the board’s view, the SGA should have set out why the appellant should be given the opportunity to have the proceedings continued before the board of appeal. The appellant however has not furnished any such explanation. [2.5] Nor do the amendments submitted together with the SGA self-evidently overcome the grounds for the decision (see point [1.2] in fine above). It is not self-evident from the appellant’s submissions on filing the appeal that the amended claims filed with the SGA overcome the reason for the refusal. Such a reason is not apparent from these amended claims alone; in particular, they do not correspond to the ones that were considered allowable by the ED […]. The appellant also did not provide arguments in the SGA concerning the question as to which rights of the appellant had to be balanced against the principle of procedural economy in order to admit an appeal based on these amended claims. In the present case the appellant only provided arguments as to why the amended claims were clear, novel and involved an inventive step in view of the prior art cited in the first-instance proceedings. Such arguments may or may not be suitable to address objections with respect to clarity and inventive step. But such reasoning does not take into account that an applicant does not have a procedural right to amend application documents at any time. The filing of amendments is governed by R 137. In appeal proceedings, the right to file amendments may be further restricted by Articles 12 and 13 RPBA. Therefore the mere filing of amended claims and the submission of arguments relating to substantive issues is not enough, in cases such as the present one, to convince the board that the appellant could only present the amended claims together with the SGA, and thereby to overcome the reason for refusal. [3] It follows from the above that the present SGA does not fulfil the requirements of A 108, third sentence, in conjunction with R 99(2). Thus the board must reject the appeal as inadmissible pursuant to R 101(1). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1011/09 – The Art Of Substitution
K’s Law – The ebook
T 1011/09 – The Art Of Substitution 17 Dez 2012
There is quite a bunch of case law dealing with the question under which circumstances oral proceedings (OPs) can be postponed. The present case shows that even the fact that the representative is summoned to OPs in another case will not always be considered sufficient for granting a postponement. The applicant filed an appeal against the refusal of its application by the Examining Division (ED). Two days after the receipt of the summons to OPs, the representative informed the ED that he had been summoned to OPs to be held on the very same day in another case. The ED asked the representative to establish that the other summons had been received at an earlier date and why the representative could not be replaced by a colleague. The ED pointed out that the issues to be dealt with were rather straightforward. In its response, the representative pointed out that the subject-matter was “all but simple” and announced that if a postponement was refused, the applicant would not be represented at the OPs and that an appeal including a request for reimbursement of the appeal fee would be filed because the ED would have “unjustifiably ignored” the “serious factual reasons” invoked by the representative. The ED appears not to have been impressed, because the OPs were held in the absence of the representative and the application was refused. The Board agreed with this course of action: *** Translation of the German original *** The substantial procedural violations invoked [2.1] In response to a request by the appellant, OPs before the ED were summoned during the first instance proceedings. After the summons had been issued, the appellant filed a request for postponement of the OPs. The request for postponement was justified by the fact that the representative of the appellant who was in charge of the file already had received summons to OPs to be held on the very same day in other proceedings before the EPO, so that the representative was unable to attend. The request for postponement of the OPs was dismissed by the ED and the impugned decision was declared at the end of the OPs that were held in the absence of the appellant and its representative, respectively. The appellant has pointed out that the ED had committed a substantial procedural violation when it dismissed the request for postponement of the OPs and subsequently held the OPs in the absence of the appellant and its representative. [2.2] According to point 2.2 of then applicable “Notice of the Vice-Presidents DG2 and DG3 dated 1 September 2000 concerning OPs before the EPO” (OJ EPO 2000, 456, hereinafter referred to as the “Notice”) a request for postponement of OPs could only be granted if, inter alia, the party concerned “can advance serious reasons which justify the fixing of a new date.” [bold text in the original]. According to point 2.3, such serious substantive reasons may in particular consist in “previously notified summons to OPs of the [representative concerned] in other proceedings before the EPO …”, as is the case here. However, according to point 2.5 of the Notice, every request for fixing another date for OPs had to “contain a statement why another representative within the meaning of A 133(3) or A 134 cannot substitute the representative prevented from attending the OPs”. This implies that the justification had to go beyond the general wish of the appellant to be represented in OPs by the representative it was used to, which in itself is not sufficient, and that in particular there had to be reasons excluding or at least unacceptably impeding (unzumutbar erschweren) the replacement of the representative who could not attend (see, for instance, T 1080/99 [2.6], T 1067/03 [12.2]; T 300/04 [15.4] and T 178/03 [6.1]). The Board also was of the opinion that the requirement of 810 | 3398
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justification contained in point 2.5 of the Notice presupposed that the fact that additional costs would arise – at least as long as they remain within reasonable limits – had to be accepted because in general such costs may be expected to arise when a representative is replaced by another, because the latter has to become acquainted with the case. The Board has no reason to challenge the validity of the above provisions of the Notice. [2.3] In the present case the appellant had made the following submissions during the first instance proceedings:
“a transfer of one of the two cases to another partner of the law firm appears not to make sense from the point of view of procedural economy” (letter dated September 19, 2008), and
“the subject-matter of the present application [is] all but simple […]. During the examination proceedings, twelve prior art documents have been cited. As a consequence, it would take an extraordinary amount of time to become acquainted with the present file. It is disproportionate that additional costs arise to the applicant because another patent attorney has to become thoroughly acquainted with the case, only because the EPO is unwilling to change the date” (letter dated November 24, 2008).
The ED had already informed the appellant by phone that (see minutes of the result of the telephone call of September 22, 2008, dated September 25, 2008): “As the application is not complex, both technically and from a procedural point of view, it appears to be acceptable that another representative takes over the case.” In the impugned decision, the ED has justified the dismissal of the request for a postponement of the OPs as follows […]: “First, although there are 15 documents in the proceedings, only six of them were cited in the summons, and most of them have their origin in the inventors themselves. Some of them are equivalent and three of them have been introduced together with the summons and are, therefore, new to the person representing the applicant until then. Moreover, only a few figures, which are self-explaining, and a few paragraphs of each of the documents, each of which contains only few pages, have been cited in the summons. In view of all this and in view of the small volume of the application and the shortness of the examination proceedings, the ED is of the opinion that the present OPs constitute a rather simple case. Secondly, the ED indeed agrees with the representative that the amount of time that a substitute representative [would need] might be greater than for the person representing the applicant until then. However, this always holds true and cannot correspond to what is meant by the justification required in point 2.5 of said Notice of the EPO. As the second requirement 2.5 of said Notice of the EPO is not fulfilled, the OPs were not postponed […].” [2.4] The substantive procedural violation invoked by the appellant raises the question of whether the dismissal of the request for postponement of the OPs by the ED was to be criticised in view of the circumstances of the case. The ED had informed the appellant that the application was not complex, both technically and from a procedural point of view, so that it appeared to be acceptable that another representative took over the case. The arguments subsequently submitted by the appellant in its response were considered by the ED but, for the reasons given in the decision, they did not persuade the ED. In particular, the ED has explained in its decision why it considered the case to be rather simple and pointed out that the fact that the amount of time that a substitute representative [would need] would be greater than for the person representing the applicant until then could not correspond to what was meant in point 2.5 of the Notice because this would always hold true (see [2.3], last paragraph, above). The Board is of the opinion that these considerations of the ED justifying the refusal to postpone the OPs are not to be criticised. In particular, the Board agrees with the ED that the present case is not particularly complex, difficult or voluminous. [The Board] cannot see any difficulties going beyond what is usual and which would have excluded or at least unacceptably impeded the replacement of the representative of the applicant who could not attend by another one of the representatives appointed under R 134. The arguments of the appellant, according to which among the representatives of the law firm that represented the appellant at that time only the representative who was unable to attend had been working in the present technical field, and another representative could not have attended, in particular because of the additional work and costs caused by [the
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replacement], because the applicant would not have paid the corresponding costs, are not suitable for rebutting the reasons that the ED gave in this respect (see point [2.2] above, second paragraph). The reasons related to procedural economy invoked by the appellant, therefore, do not lead to the conclusion that the OPs before the ED would have had to be postponed. [2.5] It follows from what has been said above that in the opinion of the Board, the refusal of the requested postponement of the OPs by the ED and the fact that the OPs were held in the absence of the appellant and its representative, respectively – “the failure to grant OPs”, to use the words of the appellant – does not constitute a procedural violation. In particular, and contrary to the assertions of the appellant, there was no violation of A 116 EPC 1973 and, as a consequence, of the right to be heard enshrined in A 113(1) EPC 1973. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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Interpretative Spotlight: “Vicinity”
K’s Law – The ebook
Interpretative Spotlight: “Vicinity” 15 Dez 2012
I have recently presented T 476/09 (here). The decision also contains a discussion on the correct interpretation of claim 1 of the third auxiliary request, which read: Claim 1 of the main request on file read: 1. A toner for developing a latent electrostatic image comprising: a base of toner particle which comprises a binder resin and a coloring agent; and an external additive, wherein a plurality of the base of toner particle has a volume average particle diameter (Dv) of 3 µm to 7 µm, a ratio (Dv/Dn) of the volume average particle diameter (Dv) to a number average particle diameter (Dn) is 1.01 to 1.25, a plurality of the base of toner particle comprises 15% by number or less of the base of toner particle having a particle diameter of 0.6 µm to 2.0 µm, a plurality of the base of toner particle has a circularity of 0.930 to 0.990 on average, the binder resin comprises a modified polyester resin, and the toner comprises 0.3 parts by weight to 5.0 parts by weight of the external additive, relative to 100 parts by weight of the base of toner particle, wherein the base of toner particle further comprises wax, the wax is dispersed in the base of toner particle, and more of the wax is present in a vicinity of a surface of the base of toner particle rather than a center of the base of toner particle. (my emphasis) There was a discussion on the meaning of the term “vicinity”. [10.1] It was a matter of dispute between the parties how the requirement in claim 1 that “more of the wax is present in a vicinity of a surface of the base of toner particle rather than a center of the base of toner particle” has to be interpreted. [10.2] The [opponent] was of the opinion that the term “vicinity” could be interpreted such that toner particles with a uniform wax distribution would also meet this requirement. The [opponent] in particular argued that for any wax distribution, including a uniform one, the area covered by the “vicinity” could be chosen so large that the amount of wax present in this area was larger than the amount of wax outside of this area. Hence, in the respondent’s view, a toner particle with a uniform wax distribution met the requirement that more wax is present in the vicinity of the surface of the toner particle. [10.3] The board cannot follow this claim interpretation. To interpret the requirement in claim 1 such that wax is present in any portion of the particle in the same amount (i.e. uniformly distributed) is in direct contradiction to the literal meaning of the claim and in fact deprives it of any technical sense. Moreover, it follows from the description of the opposed patent […] that a large amount of the wax has to be present in the toner near the surface and in particular that “the wax is dispersed to 1 µm or less in terms of the longer diameter”. This can only imply that the vicinity in claim 1 covers a region near, i.e. of up to 1 µm from the surface of the toner particles. The whole decision (T 476/09) can be found here. The file wrapper can be found here.
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T 1700/11 – Zero Discretion
K’s Law – The ebook
T 1700/11 – Zero Discretion 14 Dez 2012
This is an appeal by the patent proprietor against the maintenance of the opposed patent in amended form. The representative of the opponent had filed the opposition on October 14, 2008, in the name of Henniges Automotive Sealing Systems North America Inc. He did not file an authorisation. During the opposition proceedings, the patent proprietor contested the legal existence of the opponent and the validity of the authorisation of the representative. It referred to other proceedings before the EPO and the German Bundespatentgericht where oppositions filed in the name of GDX Automotive North America Inc. (the former name of the Henniges company) had been rejected as inadmissible. The Opposition Division (OD) did not see any reason to doubt that the representative was authorised; examining authorisations was not among the duties of an OD. There was no need for adding a legally competent member to the OD because the legal situation was straightforward. The patent proprietor filed an appeal and inter alia requested the Board to reject the opposition as inadmissible and to order apportionment of costs. It did all it could to hinder the opponent from having the opposition declared not to have been filed, but it was not successful. As the Board goes to some detail (which, for reasons unknown to me, appears to occur more often in Germanlanguage cases), the decision is rather lengthy. If you content yourself with the headnote, here is a translation: If a European representative files an opposition in the name of a party and does not file a signed authorisation in due time after having been invited to do so by the Board of appeal, then the opposition is deemed not to have been filed (R 152(1)(6)). This legal fiction entails a loss of rights (R 112(1)); an examination of the admissibility of the opposition which, from a legal point of view – fictitiously – has not occurred, is out of the question. For those who want it all, please read on: *** Translation of the German original *** [2] Pursuant to R 152(6) the procedural steps taken by the representative of the [opponent] are deemed not to have been taken. The [opponent] has not filed an authorisation for its professional representative within the four-month time limit set in the communication of the Board of appeal dated March 8, 2012. [3] Generally speaking, the Board of appeal is entitled to order of its own motion that an authorisation be filed within a given time limit, because the Board has to examine, at any stage of the proceedings and of its own motion, whether a procedural situation (Prozessverhältnis) is duly justified. However, this duty to examine is limited by R 152(1) in connection with the “Decision of the President of the EPO dated 12 July 2007” (OJ EPO, Special edition 3/2007, p. 128) because professional representatives are not required to file authorisations. This waiver comes to an end when the EPO, in particular cases, requires [the representative] to produce an authorisation pursuant to Article 1(3) of the Decision of the President. The Board has exercised this power its communication dated March 8, 2012. The “Decision of the President of the EPO dated 12 July 2007” is also binding on the Boards of appeal. The provisions established by means of this Decision qualify as law (haben Rechtsnormcharakter). The President was empowered, by means of direct legal delegation through R 152(1), to issue this Decision in is quality as legislative authority (Rechtssetzungsorgan). R 152(1) transfers, to a limited extent, the competence of the Administrative Council under A 33(1)(c) to amend the Implementing Regulations to the President of the EPO 814 | 3398
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(regarding the quality of law of a Decision of the EPO, see T 991/04 [20]). Thus the issuing of this Decision is not a “necessary step” within the meaning of A 10(2)(a) but part of the EPC within the meaning of A 23(3). The “Decision of the President of the EPO dated 12 July 2007”does not concern matters governed by the RPBA. Moreover, Article 1(3) of this Decision fully ensures the independence of the Boards of appeal in the conduct of the proceedings. [4] As the four-month time limit set in the communication dated March 8, 2012, has expired without any result, the opposition filed by the professional representative is deemed not to have been filed. This legal fiction that the opposition has not been filed has become effective ex tunc, at the time when the opposition was filed, as soon as the time limit expired on July 18, 2012, and generated a loss of rights within the meaning of R 112(1) for the opponent. The Board is of the opinion that in the present case, for the sake of of procedural clarity, [the Board] has to decide on the loss of rights even though the [opponent] has not filed a request pursuant to R 112(2), first sentence. At the present stage of the proceedings, the mere communication concerning the legal fiction that the opposition had not been filed, could create doubt as to whether the patent was maintained unamended, because the OD had maintained the patent in amended form. Therefore, the order (Tenor) of the present decision is better suited to clarify the procedural situation than a mere communication of loss of rights. [5] The impugned decision is based on incorrect procedural assumptions and, as a consequence, erroneously assumes that a legally effective opposition had been filed in due time. The objective incorrectness of the decision is not obviated by the fact that it was only the Board that ordered that an authorisation be produced. All the Board has to do is to review the correctness of the impugned decision based on the procedural facts that are now available. The decision contradicts the legal consequences stipulated in R 152(6) and is legally deficient. Thus the impugned decision had to be set aside and it had to be declared that the opposition was deemed not to have been filed. Dismissal of the request to declare the opposition inadmissible [6] As a consequence of the legal fiction that the opposition filed by the professional representative shall be deemed not to have been filed […] there is no legal basis for declaring that the opposition was inadmissible. [7] The [patent proprietor] submitted that R 152(6) had to be interpreted narrowly and that the opposition […] had to be dismissed as inadmissible. It would only be possible to base such an opinion on R 152(6) if the legal consequence ordered therein (that the procedural steps taken had to be deemed not to have been taken) were “pushed aside” (“verdrängt”) by means of legal consequences established by other provisions. In the case of the present opposition, this would mean that the legal fiction pursuant to R 152(2) according to which the opposition was deemed not to have been filed, was ineffective because the opposition had to be rejected as inadmissible under R 77(2). Thus the legal consequence provided in R 77(2) concerning the inadmissibility of the opposition had to completely replace the legal consequence provided in R 152(6). Then R 77 would be a lex specialis with respect to R 152(6). [8] Similar legal considerations are found in the reasons for decision T 126/04. This decision postulates precedence of the provisions regarding the inadmissibility of an appeal over the legal fiction under A 14(5) EPC 1973 that a translation is deemed not to have been received. As the notice of appeal had only been filed in a privileged language but not in one of the official languages within the applicable time limit, the Board came to the conclusion that, in view of the special nature (Spezialität) of the provisions regarding the admissibility of the appeal, the legal consequence provided in A 14(5) EPC 1973 – according to which the [translation] is deemed not to have been filed – was not applicable. In its legal assessment this decision expressly deviates from the reasons for decisions T 193/87 and T 323/87 and did not endorse the opinion expressed therein, that when (as a consequence of a legal fiction) there is no opposition, an examination of the admissibility of the opposition under R 56(1) EPC 1973 does not come into question. [9] The Board of appeal is of the opinion that R 152(6), which is to be applied in the present case, does not establish a legal basis for a narrow interpretation within the meaning of decision T 126/04. The wording of R 152(6) is unambiguous and the use of the expression “without prejudice to” clearly establishes that other provisions may provide further legal consequences but are not intended to replace the legal consequence stipulated in R 152(6).
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If this was intended, then the legislator would have had to use a wording such as “subject to” (“vorbehaltlich”). With the reference to further legal consequences in R 152(6) the legislator wanted to make clear that the legal fiction consisting in that a procedural step was deemed not to have been taken does not exclude further consequences concerning the proceedings under consideration, which is illustrated by means of examples in what follows. If a professional representative who has no authorisation files a statement of grounds of appeal, then, as soon as the time limit under R 152(6) has expired, the statement is deemed not to have been filed. However, this legal consequence is not intended to exclude that the appeal is dismissed as inadmissible because, according to the legal fiction the statement of grounds of appeal has not been filed. Also, a request for examination filed pursuant to A 94 by a professional representative who acted without being authorised can have the legal consequence that, in addition to the legal fiction under R 152(6), the application as a whole is deemed to have been withdrawn. [10] Therefore, the legal fiction pursuant to R 152(6) that the procedural step is deemed not to have been taken, precisely acts as the legal prerequisite that further legal consequences may be declared without any further examination of whether at the moment when the representative acted there was a substantive client-attorney relationship (materiellrechtliches Vertretungsverhältnis). The legislator has deliberately chosen this legal construction – as he has done in other provisions where the legal consequence of deeming acts not to have been taken is stipulated – in order to make it possible to speedily terminate the proceedings for the sake of procedural economy. The piece of evidence “power of attorney certificate” (“Vollmachtsurkunde”) can only attest of an existing client-attorney relationship, but the fact that it is not filed does not necessarily exclude that there was an effective client-attorney relationship before; it can only serve as an indication that there was no authorisation ab initio. Without the fiction stipulated in R 152(6), the Board would have to clarify of its own motion the procedural fact (Prozesstatsache) that the authorisation for filing an opposition was missing. As a matter of fact, a European representative could have been instructed to take a procedural step although he had not filed (or was unable to file) a power of attorney certificate. Then the procedural step would be legally effective. The fiction of R 152(6) is needed [for the Board] to be able to treat the procedural step as legally ineffective when no power of attorney certificate is filed upon request. Thus in the present case the opposition filed on October 14, 2008, is legally deemed not to have been filed ab initio, irrespective of whether the representative of the opponent was (at first) authorised, or not. When, from a legal point of view, there is no opposition, then there is no room for examining the admissibility of the (legally inexistent) opposition under R 77(2). A direct application of R 77(2) in view of the failure to submit a power of attorney certificate is out of the question because the examination of the power of attorney certificate for the European representative is not part of the examination as to admissibility under R 77. As Article 1(1) of the “Decision of the President of the EPO dated 12 July 2007” does not provide for an examination of the authorisation, the filing of the certificate cannot be a prerequisite for admissibility within the meaning of R 77(2). Nor can the Board endorse the argumentation of the [patent proprietor] according to which the failure to file a power of attorney certificate has to have the same legal consequence as the failure to correct another deficiency within the meaning of R 77(2) in connection with R 76. As already explained, the fiction that the opposition is deemed not to have been filed allows [the Board] not to examine whether, at the time of filing of the opposition, there actually was no effective authorisation and the latter was withdrawn only at a later stage. The failure to provide the address of the opponent, which the [patent proprietor] cited as a remediable deficiency, does not raise corresponding questions of procedural law. As the procedural situation is not comparable, it is not necessary to “adjust” the legal consequence of a missing authorisation to the legal consequence of a missing address. Therefore, the request of the [patent proprietor] to declare the opposition inadmissible cannot be granted. No substantive decision on the dismissal of the opposition [11] The [patent proprietor] has filed the auxiliary request that, in case that [the Board] refused to declare the opposition inadmissible, the opposition be dismissed as unallowable. As the Board has established that the 816 | 3398
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opposition has to be deemed not to have been filed, the Board is not empowered to take a substantive decision and has to dismiss this request, too. Request for a referral of the question of whether the opposition is admissible to the EBA [12] According to the explanations given by the [patent proprietor] during the oral proceedings, the referral to the EBA requested by it concerns the legal question of whether the provisions governing the admissibility of an opposition prevail over R 152(6). If this were true, then the present opposition would be inadmissible and not to be treated as if it had not been filed. [13] From the explanations given above (points [6] to [10]) it follows that the requirements for a referral of a legal question of fundamental importance to the EBA have not been fulfilled (A 112(1)) because the Board of appeal itself can answer this question based on the very wording of R 152(6) and because the literal interpretation of this provision leads to a procedurally convincing and consistent result. [14] Nor is the result unfair (unbillig) because the decision with respect to the missing power of attorney certificate can be taken at so late a stage of the proceedings. The fact that the power of attorney certificate was not filed by the [opponent] can have various reasons, which, contrary to the assertions of the [patent proprietor] do not exclusively express an abuse of procedure by the [opponent]. For instance, the [opponent] may, at any stage of the proceedings, withdraw the authorisation it had given to its authorised European representative, without giving reasons. The procedural facts before the Board do not constitute sufficient proof that the respondent that is formally on record as opponent has caused the opposition or is even aware of its pendency. As the [patent proprietor] conceded during the oral proceedings, it can happen in big groups having many legally interlaced but independent subsidiaries that an unauthorised person authorised the European representative to file an opposition because it believed that it was entitled to act in this way. However, the procedural facts before the Board do not allow to exclude that an unauthorised person acted deliberately in the name of the [opponent] and cunningly deceived the European representative with respect to the missing authorisation, either. In none of these cases the professional duty (standesrechtliche Verpflichtung) of a European representative to assure himself of the identity of his client, which the [patent proprietor] has invoked, can be considered to be an appropriate indication (Beweisindiz) that the opposition proceedings have to be attributed to the person that has been formally declared to be the opponent. Also, the fact that the European representative has filed documents as evidence for the legal existence of the [opponent] during the opposition proceedings does not allow to convincingly conclude that an effective authorisation had been granted, but that the [opponent] abusively prevented the filing of a power of attorney certificate in order to trigger the fiction that the opposition had not been filed. [15] It follows from the casuistry presented above that the unfairness of the application of the legal consequence provided in R 152(6) – as alleged by the [patent proprietor] – is exclusively based on the assumption that the [opponent] had acted in abuse of process although this assumption cannot be proven in the present stage of the proceedings. The unclear evidence (Beweislage) in the present individual case cannot serve as the basis for referring the legal question of whether the provision concerning the admissibility of an opposition are to be considered as lex specialis with respect to the legal consequence provided in R 152(6) to the EBA. [16] The same holds true for the fact that in the present case the fiction that the opposition had not been filed had become effective only in the course of the appeal proceedings, because it would have been the duty of the OD to clarify the evidence concerning the due authorisation of the European representative (this procedural violation is also discussed below, point [19]). This failure of the OD does not justify challenging the validity of R 152(6). The risk of lengthy proceedings and corresponding high procedural costs can also arise in particular cases where there is a dispute with respect to the timely or belated payment of an opposition fee. If it is only the Board of appeal that establishes that the opposition fee has not been validly paid, then also the opposition has to be deemed not to have been filed pursuant to A 99(1). 817 | 3398
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[17] The Board of appeal does not see any reason to refer the legal question concerning the alleged precedence of the provisions governing the admissibility of the opposition to the EBA under A 112(1) in order to ensure uniform application of the law. Decision T 126/04 based on A 14(5) EPC 1973 does not concern the interpretation of R 152(6) that is applicable here and cannot be considered to be a divergent decision, be it only for this reason. Moreover, neither the Board nor the [patent proprietor] are aware of former decisions on the present legal question. Decision J 12/88, where it was found that “proceedings before the EPO are null and void if the applicant’s representative acted without any instructions and without filing any valid authorisation” and which, therefore, ordered the reimbursement of all fees, does not go into details of the application of the fiction underlying what was then R 101(4) EPC 1973, but has not decided that the opposition was inadmissible either. Thus the Board of appeal is of the opinion that none of the requirements for a referral to the EBA laid down in A 112(1) is fulfilled. Reimbursement of the opposition and appeal fee, respectively [18] As a further consequence of the legal fiction that the opposition has to be deemed not to have been filed the Board has ordered the reimbursement of the opposition fee. There is no cause in law for the EPO to withhold a fee that has been paid for a legal act that has not been performed. In the absence of any other legal arrangement, this also holds true when the fact that the act has not been performed is established on the basis of a legal fiction. [19] The Board of appeal has also ordered the reimbursement of the appeal fee for reasons of equity under R 103(1)(a) because the appeal is to be allowed and the decision to be set aside is based on a substantial procedural violation. The substantial procedural violation of the OD consists in the fact that it has failed to order the filing of an authorisation pursuant to R 151(1) in connection with Article 1(3) of the Decision of the President of the EPO dated 12 July 2007 on the filing of authorisations. Even though according to this provision, the OD in principle has discretion to order the filing of an authorisation, this discretionary power was reduced to zero in the present case, in the light of the overall circumstances, and the OD would necessarily have had to order the filing of an authorisation. The mere uncertainty of the effectiveness of the filing of the opposition necessarily obliges the OD to remedy this uncertainty of its own motion before it decides on the substance of the case. In the present case, the procedural uncertainty was already established by the substantiated and documented contestation of the authorisation. In particular after having become aware of the decision of the OD in the parallel proceedings concerning application 01 127 947.8, the OD had no discretion not to request an authorisation because it had been stated in this decision that the authorisation of the professional representative of the opponent Henniges Automotive Sealing Systems North America Inc. had not been proven. The OD has explained in its decision that in the parallel proceedings the opposition had been filed by GDX Automotive North America Inc., Delaware, and that the change of name to Henniges Automotive Sealing Systems North America Inc. had only been declared in the course of the proceedings, and that, therefore, the factual situation was different from the one underlying the present case. However, as rightly pointed out by the [patent proprietor], the change of name in the parallel proceedings has no significance whatsoever for the identification of the doubts concerning the valid authorisation of the professional representative. In the present proceedings the OD had no verifiable facts (Anknüpfungstatsachen) on which to base its trust in the alleged effectiveness of the authorisation of the professional representative. Therefore, the failure to order the filing of an authorisation constituted a substantial procedural violation within the meaning of R 103(2)(a). The Board also considers the further requirement mentioned in this provision, i.e. that the appeal is allowed, to be fulfilled. The impugned decision is to be set aside in its entirety, for the factual reasons on which the appeal was based, and the fact that the Board of appeal has ordered the opposition filed by the respondent to be deemed not to have been filed, which differs from the request of the appellant, is not to be understood as a (partial) dismissal of the appeal within the meaning of R 103(2)(a). It is also equitable to reimburse the appeal fee because the proceedings would not have had to take place if this procedural violation had not occurred. No need for apportionment of costs [20] The request of the [patent proprietor] to have the [opponent] bear the costs which [the patent proprietor] had incurred has to be dismissed, be it only because, as found in the present decision it cannot be established at all 818 | 3398
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that the respondent has instructed “its” European representative to file an opposition. As there is no proof that the respondent has a causal responsibility for the filing of the opposition, it cannot be ordered to bear costs. Order For these reasons it is decided that: 1. The request of the appellant that the question of the admissibility of the opposition be referred to the EBA is dismissed. 2. The impugned decision is set aside. 3. The opposition is deemed not to have been filed. 4. The opposition and appeal fees are to be reimbursed. 5. The request of the appellant for apportionment of costs to the detriment of the respondent is dismissed. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1607/08 – Stick To The Guidelines
K’s Law – The ebook
T 1607/08 – Stick To The Guidelines 13 Dez 2012
This is an appeal against the revocation of the opposed patent. The opposition had been filed on November 15, 2006. The opponent had withdrawn its opposition on March 1, 2007, i.e. before the time limit for filing observations or amendments under R 57(1) EPC 1973 (now R 79(1)) had expired. On March 20, 2007, the patent proprietor requested maintenance of the patent as granted. By decision dated March 3, 2008, the Opposition Division (OD) revoked the patent. The Board set aside this decision, for the following reasons: [1] Under the provisions of R 60(2) EPC 1973 the opposition proceedings may be continued by the EPO of its own motion in the event of the death or legal incapacity of an opponent. The same shall apply when the opposition is withdrawn. [1.1] The Guidelines (Part D, Chapter VII, point 6.2, last paragraph, of the December 2007 version) state that “[t]he proprietor of the patent and any other parties are to be informed that the proceedings will be continued. Otherwise the proceedings are closed and the decision to close the proceedings is communicated to the parties”. This section of the Guidelines, published before the date on which the decision under appeal was taken, refers to new R 84(2), which has the same wording as R 60(2) EPC 1973. [1.2] In the present case, the decision to revoke the contested patent was issued without any previous information being given to the patent proprietor as to the continuation of the proceedings which means that the OD did not follow the aforementioned provisions of the Guidelines, although it cannot be derived from the documents of the file what the reasons for departing from them were. [1.3] The appellant argued that acting in such a way amounted to a violation of the principle of the protection of legitimate expectations, which had led to a violation of his right to be heard (A 113(1)). In essence, the reasoning developed by the appellant is as follows:
when the opponent withdrew his opposition the period of four months open to the patent proprietor to file observations and amendments, where appropriate, was still running; the then patent proprietor considered that this time limit had been annulled due to the withdrawal of the opposition; that was the reason why he sent, as a precautionary measure, only a brief letter by which he formally requested the maintenance of the patent as granted; he legitimately expected that the OD would first decide on the continuation or closure of the proceedings and would give him the opportunity to file observations in case of continuation; he could not expect that a decision revoking the patent would be issued about one year after the withdrawal of the opposition without any comments on his part on the merits of the grounds for opposition.
[2] The principle of the protection of legitimate expectations, also referred to as the principle of good faith, generally recognised among the Contracting States, is also a well established principle in proceedings pursuant to the EPC. Its application to procedures before the EPO implies that measures taken by the EPO should not violate the reasonable expectations of the users of the European patent system (see the decisions of the Enlarged Board of Appeal G 5/88, G 7/88, G 8/88; G 2/97 [1]). [2.1] It is established case law that the Guidelines published by the EPO are one of the sources of legitimate expectations (T 905/90 [5]; followed in J 25/95, J 24/95, J 14/95, J 15/95, J 16/95, J 17/95; J 27/94 [5]).
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Therefore, where the Guidelines give the clear indication that the continuation of the opposition proceedings has to be communicated to the patent proprietor, the latter is entitled to expect that such information will be given before a decision on the substantive issues is issued. Otherwise, as in the present case, the decision to revoke the contested patent comes to the surprise of the patent proprietor. [2.2] Contrary to the principle applying to the boards of appeal, which are not bound by any instructions (A 23(3)), parties can expect the departments of first instance to follow the general instructions in the existing Guidelines, although a department of first instance may depart from them in exceptional cases (see the Guidelines, General Part, point 3.2). The board considers that departing from the Guidelines in exceptional cases has to be justified by reasonable and clear grounds, such as particular circumstances which lead to a conflict with relevant legal provisions. Such grounds are not apparent in the present case since the Guidelines give a general instruction for the withdrawal of a sole opposition and R 60(2) EPC 1973 does not provide a clear basis for departing from this general instruction in the present case. [2.3] In the present case the failure to comply with the published instructions was the cause of the revocation of the patent in so far as the patent proprietor legitimately expected to be given an opportunity to present observations on the merits of the grounds for opposition after being informed of the continuation of the opposition proceedings. [2.4] It is true that the patent proprietor was given the opportunity to comment following the communication of the notice of opposition at the very beginning of the proceedings, a possibility he did not make use of during the four-month period. This opportunity was not curtailed by the communication of the withdrawal of the opposition. In particular, there is no justification for understanding that the period was cancelled, as considered by the appellant. [2.5] Nevertheless, the circumstances of the withdrawal explain why the patent proprietor did not consider it worth preparing an exhaustive answer before having received the information of the continuation of the opposition proceedings ex officio. In particular, there was only one opposition and its withdrawal occurred while the period for replying was still running, such that the withdrawal could have led to the termination of the opposition proceedings without the patent proprietor’s comments as to the merits of the opposition. Moreover, the patent proprietor in the present case had not presented any requests for amendment of the patent and the Guidelines led him to believe that he would be informed whether the opposition proceedings would be continued. [2.6] In this situation, the patent proprietor’s expectations were especially justified as the Guidelines (Part D, Chapter VII, point 6.2, second paragraph, of the December 2007 version) state that “[t]he OD should continue the proceedings if, for instance, the proprietor of the patent has submitted amendments to the patent in response to the notice of opposition ...” or “if it considers that the stage reached in the opposition proceedings is such that they are likely to result in a limitation or revocation of the European patent without further assistance from the opponent(s) concerned and without the OD itself having to undertake extensive investigations ...”. In the present case, as already explained, the proceedings were in the very first stage and no amendment had been submitted in response to the notice of opposition. [2.7] The patent proprietor’s letter dated 20 March 2007, despite its brevity and laconic nature, was clear as to the patent proprietor’s requests. Even if the OD had considered that the patent proprietor had no interest any more in the maintenance of the patent, such an assumption did not relieve the OD of its duty to communicate its intention to continue the proceedings, and thereby clarify the procedural situation. Such a communication would have given the patent proprietor an opportunity to react (which, in the present case, would have been a further opportunity, see point [2.4] above). [3] Thus, the revocation of the patent is the direct consequence of the procedural violation of the principle of the protection of legitimate expectations. In the present case, in which this violation led to the decision to revoke the contested patent and came to the surprise of the patent proprietor, this constitutes a substantial procedural violation. [3.1] Consequently, the contested decision is to be set aside and the case remitted to the department of first instance for further prosecution (Article 11 RPBA, OJ EPO 2007, 536).
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[4] In accordance with the provisions of R 67 EPC 1973 the board considers it equitable, on account of the circumstances set out above, to order the reimbursement of the appeal fee. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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J 7/10 – It’s Time To Resume
K’s Law – The ebook
J 7/10 – It’s Time To Resume 12 Dez 2012
This is a decision concerning a stay of proceedings under what is now R 14. The Euro-PCT application under consideration had been filed by Erwin De W. in July 2003. There was a second application, which is dealt with in parallel decision J 6/10. In a letter dated November 28, 2005, the University Medical Centre of the University of Utrecht (hereinafter “UMC” or “the third party”) submitted that the invention claimed should be considered as belonging to UMC under Dutch law. Suspension of the proceedings under R 13 EPC 1973 was requested. By a communication dated December 29, 2005, the Legal Division (LD) informed UMC that in the absence of evidence that it had instituted national court proceedings, the proceedings before the EPO could not be stayed. With letter dated October 30, 2006, UMC filed “a draft of the action of entitlement” against the applicant. In response, the EPO informed UMC that proceedings could not be stayed until such time as the action on entitlement was filed before a competent court. By letter dated October 22, 2008, UMC filed a further request that the proceedings for grant be stayed, based on proceedings initiated before the District Court of The Hague. As evidence it attached a copy of a writ of summons, in Dutch, dated 15 October 2008. In reply to a communication of the LD, UMC later submitted an English translation of the writ. By a communication dated January 15, 2009, the proceedings for grant concerning both European patent applications concerned were stayed under R 14(1) as from 22 October 2008. With letter dated May 22, 2009 the applicant objected to the stay of proceedings and requested their resumption. On August 17, 2009, the LD issued a decision stating that the grant proceedings would not be resumed. It pointed out that if the conditions for staying proceedings under R 14(1) were fulfilled the EPO was obliged to stay them; it had no discretion in the matter. In view of the interests of both parties involved, the LD did not consider it appropriate to resume the proceedings. On October 16, 2009, the applicant filed an appeal. Only one appeal fee was paid. The EPO allocated this fee to the application subject of appeal case J 6/10. The statement setting out the grounds of appeal was filed on 14 December 2009. By communication dated July 2, 2010 the Legal Board of Appeal (LBA) informed the appellant that although in a legal sense there were two separate appeal proceedings (J 6/10 and J 7/10) only a single appeal fee had been paid, which the EPO had allocated to appeal J 6/10. The appellant was given the opportunity either to pay the missing second appeal fee or to indicate clearly and unambiguously to which appeal it wanted the appeal fee paid by debit order dated October 16, 2009 to be allocated. In its letter dated September 9, 2010 the appellant confirmed within the time limit set by the Board that the said fee should be allocated to appeal J 6/10. It also enclosed a voucher for payment of a second appeal fee, for the present appeal J 7/10. The decision explains why this late payment was accepted (see point [5.1] below). By communication dated April 21, 2011 the Board informed the appellant that the arguments so far submitted by the appellant failed to convince it that the decision under appeal was erroneous and had to be set aside. With letter dated December 2, 2011, the third party informed the Board that the reason for which the District Court of The Hague had suspended the Dutch proceedings by decision of April 29, 2009, i.e. pending a decision by the Belgian courts on competence to hear the dispute between Dr De Winter and UMC, no longer applied, the Belgian Supreme Court having ruled that it had no competence to hear that case. However, the Dutch proceedings were still suspended under Dutch law because the attorney of the applicant had retired. 823 | 3398
J 7/10 – It’s Time To Resume
K’s Law – The ebook
With letter dated July 31, 2012, UMC informed the Board that there was still no decision by the Dutch court on the ownership of the patent applications concerned, and no date had been set for a hearing in the proceedings before the District Court of The Hague. Oral proceedings before the LBA were held on 13 November 2012. None of the parties was present or represented. The Board decided to order resumption of the proceedings: Applicable provisions [1] R 14 rather than R 13 EPC 1973 applies. R 14 implements A 61. In this respect the Board refers to Article 7(1), second sentence, of the Revision Act of 29 November 2000 (OJ EPO 2001, Special Edition No. 4, 50), Article 1.1, first sentence, of the decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the said Revision Act (OJ EPO 2007, Special Edition No. 1, 197) and Article 2 of the decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the EPC 2000 (OJ EPO 2007, Special Edition No. 1, 89). Admissibility of the appeal [2] The appellant having confirmed within the time limit set by the Board that the appeal fee paid on 16 October 2009 was rightly allocated to J 6/10, and having also enclosed a voucher for payment of a second appeal fee, for the present appeal J 7/10, the appeal is admissible. The LD’s decision [3] The arguments submitted by the appellant fail to convince the Board that, by the time it was given the contested decision of 17 August 2009 not to resume the proceedings stayed with effect as from 22 October 2008 was erroneous and would have had to be set aside for that reason. Under R 14(1) the EPO must stay the proceedings ex officio if a third party shows that it has opened proceedings against the applicant in a contracting state for the purpose of seeking a judgement that it is entitled to the grant of the European patent (J 28/94 [3.1]; T 146/82 [2]; J 10/02 [3.1]; J 7/96 [2]; J 36/97 [2]; J 33/03 [2.1]). These requirements were met once the third party had filed, with letter dated 16 December 2008, an English translation of the writ of summons dated 15 October 2008 which indicated that it had applied to the District Court of The Hague for a judgement that it was entitled to the grant of European patent application 03 816 761. The appellant’s contention that UMC’s unsuccessful attempts to obtain a stay of grant proceedings constituted illegitimate and abusive conduct cannot be taken into account for R 14(1) purposes, but will be considered within the context of the Board’s decision on R 14(3) as regards the auxiliary request (see [4.3] below). Resumption of proceedings by the Board [4.1] According to R 14(3), the EPO may, after staying the proceedings for grant, set a date on which it intends to resume them, regardless of the stage reached in the national proceedings instituted under R 14(1). In the present case this pertains to the entitlement proceedings instituted by the third party against the appellant before the District Court of The Hague in October 2008. Under R 14(3) the EPO has discretion to decide whether and as from which date the proceedings for grant are to be continued. In accordance with A 111(1), second sentence, the Board has decided that it will exercise the power within the competence of the department which was responsible for the decision under appeal. [4.2] Some aspects of the exercise of discretion under R 14(3) have been considered in the case law of the Boards of Appeal of the EPO. These aspects are in particular (i) how long the proceedings before the national courts/authorities have been pending, (ii) the duration of the suspension of grant proceedings, and (iii) requests for suspension of grant proceedings filed at a late stage. [4.2.1] Regarding aspects (i) and (ii), the period for which the proceedings before the national courts/authorities have been pending and the duration of the suspension of grant proceedings are nearly equal in length. The third party had shown that it had initiated entitlement proceedings before the District Court of The Hague concerning European patent application 03 816 761. The grant proceedings were consequently stayed under R 14(1) as from 22 October 2008. From this it follows that at the time of the present decision of the LBA, the proceedings before the District Court of The Hague and the suspension of grant proceedings concerning European patent application 03 816 761 have both lasted more than four years. 824 | 3398
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K’s Law – The ebook
[4.2.2] According to the case law of the Boards of Appeal on R 14(3), a period of more than four years is considerable, both for grant proceedings to be stayed and for entitlement proceedings to be pending in first instance. In decision T 146/82 [3], “having regard to the considerable length of time for which the proceedings before the UK Patent Office have been pending” (about three years) the Board set a date for resumption of grant proceedings. In decision J 33/03 the Board ordered immediate resumption of grant proceedings when they had been suspended for about three years and two months, even though the main reason for immediate resumption was that the request for suspension had been filed at a very late stage in those proceedings (see [4.6] below). [4.3] However, the four-year duration both of the suspension of grant proceedings and of the entitlement proceedings pending at the District Court of The Hague is not in itself the sole decisive factor for the Board’s conclusion that prompt resumption of the grant proceedings should be ordered. Rather, it has to be seen in connection with the third party’s procedural conduct in filing its requests under R 14(1) before the LD. [4.3.1] The third party’s first attempt to achieve stay under R 14(1), by letter dated 28 November 2005, was unsuccessful due to the lack of any evidence that it had instituted national court proceedings. It was then and thereafter informed by the LD that proceedings could not be stayed until such time as the action on entitlement had been filed before a competent court. Almost one year later the third party filed a “draft of the action of entitlement”. By letter dated 22 October 2008 and, hence, another two more years later, the third party again filed a request for the stay of the proceedings for grant relating to European patent application 03 816 761, based on proceedings initiated before the District Court of The Hague. However, it filed as evidence only a copy of a writ of summons, in Dutch, dated 15 October 2008. Only in response to a further communication from the LD did it finally file an English translation of the writ, by letter dated 16 December 2008. Only then was the LD in a position to stay the proceedings for grant under R 14(1), which it then did, with effect from 22 October 2008, by a communication dated 15 January 2009. [4.3.2] In other words, it took about three years for the third party to file an admissible request complying with R 14(1), even though it had been informed several times by the LD of the requirements which had to be met. Obviously it did not try hard to file a valid request within a reasonable time. Such conduct runs counter to the public interest in clarification of the status and the ownership of the patent application. [4.4] A related further aspect for the Legal Board is that from an objective point of view the entitlement proceedings initiated in October 2008 before the District Court of The Hague were not actively pursued for a relatively long period, i.e. more than four years. As to the reasons for the discontinuation of the entitlement proceedings, the parties have made differing and partly contradictory submissions. [4.4.1] With letter of 31 July 2012 the third party informed the Board that the District Court of The Hague had not yet taken any decision on the ownership of the patent application, or set a date for a hearing. Rather, as can be inferred from the third party’s letter dated 15 October 2012, only then was it preparing a reply in order to speed up these proceedings, and it did not expect a first-instance decision from that court until 2014. [4.4.2] Under Rule 14(3), first sentence, EPC the EPO has discretion to set a date for resumption of the grant proceedings, regardless of the stage reached in the national proceedings (emphasis by the Board) instituted under R 14(1). The order to resume grant proceedings seems all the more equitable and reasonable considering that the grant proceedings have now been stayed for more than four years due to entitlement proceedings before the District Court of The Hague which appear still not very far advanced. [4.5] The third party refers in its letter of 15 October 2012 to the Guidelines for Examination (A-IV, 2.3), which are not binding on the Boards of Appeal (T 1561/05 [1.5]), but the passage cited does also mention “the probable duration of the court proceedings” as an essential factor. Nor is it inconsistent with the present findings of the Board that the Guidelines say that the grant proceedings must be further stayed “if the judgement [of the national court] is expected in the near future”; as shown above, that is clearly not the case here. Lastly, the “delaying tactics” and “judgement in favour of the applicant” mentioned in the cited passage of the Guidelines are just examples of situations in which the grant proceedings should probably be resumed, and do not exclude other situations justifying resumption of proceedings. [4.6] Finally, the very late filing of the request for suspension of the grant proceedings is also regarded as a factor which suggests that the grant proceedings should be resumed under R 14(3) (see [4.3], aspect (iii) above; J 33/03 [4.1-2]). When the grant proceedings of European patent application 03 816 761 were suspended with effect from 22 October 2008 by communication of the LD dated 15 January 2009, they were already at a 825 | 3398
J 7/10 – It’s Time To Resume
K’s Law – The ebook
relatively advanced stage, the applicant/appellant had filed – by letter dated 5 November 2008 – amended claims in response to a communication pursuant to A 94(3). This is a less advanced stage than proceedings had reached in the parallel appeal case J 6/10. However, the other factors mentioned above demand that proceedings are resumed in the present case, as well. [4.7] For these reasons resumption of the proceedings for grant is ordered as of 1 March 2013. Reimbursement of the appeal fee [5.1] In its communication dated 2 July 2010 the LBA had explained that there had been two separate requests to stay the grant proceedings, relating to two different European patent applications. Therefore, even though the LD had decided both requests together in one decision, from a legal point of view there were two separate cases giving rise to two decisions of the LD in the legal sense. As a consequence, in order to prevent those decisions from becoming final, an appeal had to be filed for each of the applications concerned and, in order to avoid the legal consequence under A 108, second sentence, two appeal fees had to be paid. The notice of appeal referred to both applications, so there were also two appeals in the legal sense. However, only the amount due for one (single) appeal was paid. Since, however the Board considered that the LD had committed a procedural violation by dealing with the two requests for stay of the proceedings together in one decision and had thereby led the appellant into the error of thinking that one appeal fee would do, the Board considers the principle of good faith demanded to give the appellant the opportunity to pay the further appeal fee within a time limit set by the Board, thereby making good the potentially fatal consequences of the LD’s error for the appellant’s right to judicial review of the LD’s decision. [5.2] With letter dated 9 September 2010 the appellant submitted a voucher for payment of the second appeal fee, for the present appeal J 7/10. Hence, this fee, which was payable as a consequence of filing the notice of appeal, has been duly paid and is therefore not refundable for this reason. [5.3] R 103(1)(a) provides that the appeal fee is reimbursed if the Board of Appeal deems the appeal to be allowable and if such reimbursement is equitable by reason of a substantial procedural violation. Whether the procedural violation was substantial can remain moot because, for reimbursement of the appeal fee to be equitable, a causal link must exist between the alleged procedural defect and the decision of the department of the first instance that necessitated the filing of an appeal (J 9/10 [3]; T 388/09 [6]). [5.4] However, there is no such causal link in the present case. Even if the LD had processed the two sets of proceedings separately and thus legally correctly, it would still have been necessary to file two appeals and pay two appeal fees in order to avoid the legal consequence under A 108, second sentence, and prevent the decisions from becoming final. [5.5] From this it follows that there is no legal basis for reimbursing the appeal fee paid in respect of the present appeal. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 476/09 – La Saga Continua
K’s Law – The ebook
T 476/09 – La Saga Continua 11 Dez 2012
I dedicate this post to my dear friend Dimitris, a true apostle of G 2/98 [6.7]. This is an appeal against the revocation of the patent under consideration. Claim 1 of the main request on file read: 1. A toner for developing a latent electrostatic image comprising: a base of toner particle which comprises a binder resin and a coloring agent; and an external additive, wherein a plurality of the base of toner particle has a volume average particle diameter (Dv) of 3 µm to 7 µm, a ratio (Dv/Dn) of the volume average particle diameter (Dv) to a number average particle diameter (Dn) is 1.01 to 1.25, a plurality of the base of toner particle comprises 15% by number or less of the base of toner particle having a particle diameter of 0.6 µm to 2.0 µm, a plurality of the base of toner particle has a circularity of 0.930 to 0.990 on average, the binder resin comprises a modified polyester resin, and the toner comprises 0.3 parts by weight to 5.0 parts by weight of the external additive, relative to 100 parts by weight of the base of toner particle. (my emphasis) One of the questions the Board had to answer was whether this claim was entitled to the claimed priority. According to the proprietor, the patent was entitled to a priority date of 28 June 2002 for the circularity subrange of 0.94 to 0.99 which was disclosed in the first priority document, D7. According to G 2/98 multiple priorities for one claim were allowed when two alternative features were claimed. This was confirmed by T 441/93 and T 665/00. The opponent pointed out that the now claimed combination of technical features was not disclosed in any previous priority document. According to the decision G 2/98, multiple priorities cannot be claimed for so-called “and”-claims where distinct technical features were combined from different priority documents as in the present case. Moreover an arbitrary division of a numerical range such that a part of a claim was entitled with a certain priority date and another part was not entitled with the priority date was not allowable according to established practice at the EPO. What was the Board’s verdict? [5.1] The patent in suit claims two priority dates, the first priority date being 28 June 2002 from D7 and the second priority being 17 September 2002 from D8. [5.2] D6 is an intermediate document having been published on 26 March 2003, after the two priority dates of the patent in suit and before the filing date thereof. In as far as the priorities of the patent in suit are valid, D6 is prior art under A 54(3) only and hence not relevant to inventive step. It therefore has to be decided whether the claims of the patent are entitled to the claimed priority right. In this respect, it has to be decided whether in the priority document(s) the same invention is disclosed as in the patent in suit (A 87(1)). [5.3] Each claim 1 of the main request and auxiliary requests 1 to 3 refers to a toner comprising a base of toner particles and contains the requirement that the average circularity of the base of toner particles is in the range of 0.930 to 0.990. [5.4] Priority document D8 discloses this circularity range but does not describe the remaining features of claim 1. It was therefore accepted by both parties that the patent in suit does not enjoy the priority of D8. [5.5] It was also common ground that priority document D7 discloses all features of claim 1 in combination, except for the circularity, which is defined in D7 in a narrower range of 0.94 to 0.99. It was a matter of dispute between the parties whether out of the range of 0.930 to 0.990 in claim 1 of the appellant’s requests, the partial range of 0.94 to 0.99 enjoys the priority of D7.
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T 476/09 – La Saga Continua
K’s Law – The ebook
[5.6] In this respect, decision G 2/98 [6.7] is relevant. In this decision the Enlarged Board of Appeal allowed the use of a generic term or formula in a claim for which multiple priorities were claimed, but that was made under the provision that such term « gives rise to the claiming of a limited number of clearly defined alternative subject-matters ». In the present case, however, the claimed range represents a continuum of a numerical range of values which does not correspond to distinctive alternative embodiments. Consequently, no separable alternative embodiments can be identified within this continuum which could enjoy the priority date of D7. This is confirmed by the decision T 1877/08 [2.4]. In this decision priority was denied for a composition that was characterised by ranges overlapping with the corresponding ranges disclosed in the priority document, because no separable alternative embodiments could be identified in the ranges. [5.7] The appellant in this respect cited decisions T 441/93 and T 665/00 in support of its arguments. In T 441/93 multiple priorities were allowed but, contrary to the present case, in a situation wherein clearly separable alternatives were present (embodiment directed to the transformation of protoplasts versus embodiment not directed to the transformation of protoplasts). In T 665/00 the question arose whether one specific value out of a range present in a claim could enjoy priority. This is different however from the present case which concerns the priority of a partial range rather than of one individual value. The case in T 665/00 differs further from the present one in that the specific value had been disclosed specifically in the priority document by way of an example. [5.8] For these reasons no priority has been validly claimed for the subject-matter of claim 1 of the main request and auxiliary requests 1 to 3 with the consequence that document D6 is prior art pursuant to A 54(2). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 563/11 – The Silence Of The Caterpillar
K’s Law – The ebook
T 563/11 – The Silence Of The Caterpillar 10 Dez 2012
This is an appeal against the rejection of an opposition. At the end of the oral proceedings (OPs), on October 18, 2006, the Opposition Division (OD), in which Lars N. acted as first examiner, declared that the proceedings would be continued in writing. In a written submission dated December 15, 2006, the opponent provided evidence that the original opponent (Bitelli) had been replaced by its legal successor (Caterpillar Prodotti Stradali). More than three and a half years after the OPs, on May 19, 2010, the OD requested the parties to state, within a four-month period, whether they requested new OPs in view of the fact that the composition of the OD had changed. Unfortunately, this communication was not sent to the opponent. The patent proprietor declared that it did not request new OPs. This declaration was sent to the opponent, who did not react. The OD, in its new composition – comprising Flores H. acting as first examiner – then rejected the opposition. Unsurprisingly, the Board found that the OD had committed a substantial procedural violation. *** Translation of the German original *** Omission to deliver the communication of May 19, 2010 [2.1] Considering the course of the opposition proceedings and the file records that are available in the present case, the Board understands that it was the intention of the OD to inform both parties (R 126(1),(2)) of the change of composition (A 19(2)). However, the corresponding communication dated May 19, 2010, which had been prepared and which can be proven to have been delivered to the patent proprietor, was not delivered to the opponent, because the internal registry contains a record according to which a registered letter dated May 19, 2010, was sent to the patent proprietor, but there is no record of a corresponding letter to the opponent. Thus the statement of the opponent that it had not received the communication has to be considered correct. As a consequence, the opponent was not enabled to react to the communication within the time limit. Thus the opponent could not make use of its right to new OPs before the OD and had no opportunity to present its arguments to the OD in its new composition before the written decision was issued. Substantial procedural violation [2.2] According to the established case law (e.g. T 862/98 [headnote] of Board 3.4.02 or T 960/94 [3] of Board 3.3.04) the above procedural violation constitutes a substantial procedural violation consisting in a violation of the right to be heard within the meaning of A 113(1) together with A 116. The right to be heard has been violated through the signature of the written decision dated December 29, 2010, by a person (the first examiner) who had not attended the OPs on October 18, 2006, and who, as a consequence, had not participated in the formation of the opinion of the OD regarding the inventive step involved in the claimed subject-matter, as recorded in the minutes. As a matter of fact, the OD has acknowledged this problem and, therefore, in its communication dated May 19, 2010, has asked the parties to comment on whether they requested further OPs, but unfortunately, this communication was not sent to the opponent.
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T 563/11 – The Silence Of The Caterpillar
K’s Law – The ebook
The violation of the right to be heard is a substantial procedural violation, and the [patent proprietor] has not contested this fact. What is at dispute is whether the procedural violation was substantial to an extent that the case had to be referred to the OD or whether there were particular reasons pleading against a remittal. Remittal Pursuant to A 111(1) the Board of appeal has the discretionary power to either decide on the case or remit the case to the department which was responsible for the decision. [The Board] has to remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise (Article 11 RPBA). For the following reasons, the Board has come to the conclusion that the reasons which the [patent proprietor] has set forth do not speak against a remittal to the OD. [3.1] There is no way that the indirect communication of a new factual situation, which took place when the response of the patent proprietor dated September 28, 2010, was delivered to the opponent on October 1, 2010, can replace, from a legal point of view, a direct communication and grant the right to be heard. The Board can accept the argument of the [patent proprietor] insofar as it points out that the opponent, exercising all due care that may, as a rule, be expected, should have reacted to the communication and should have gathered information on the procedural situation which apparently had changed, which might have allowed it to react on the issue of new summons to OPs before the issuing of the written decision of the OD. However, on October 1, 2010, the four-month-period of the communication had already expired and the delivery of the decision took place shortly after that date. The fact that the opponent had not reacted cannot mitigate the existence of a substantial procedural violation consisting in a violation of the right to be heard to the extent that a remittal would not be required any more. In this context the Board would like to point out that, regardless of whether the communication had been delivered, the silence of a party in response to such a communication of an OD cannot possibly be interpreted as an implicit waiver of the right of the party to have new OPs. In case of doubt the OD has no other option than summoning the parties to fresh OPs. This is what the OD should have done in the present case. [3.2] As to the right to speedy proceedings (zügiger Verfahrensablauf), it applies to both the patent proprietor and the opponent in inter partes proceedings. Moreover, the fact that the opposition proceedings have lasted for about seven years was only due to the lack of action (Nicht-Handeln) of the first instance and not to any delaying tactics (Verzögerungsmanöver) on behalf of the adverse party. As far as the interest in having the opposition processed in a speedy manner is concerned, the file shows that over the whole period from the end of 2006 to mid-2010 no party, not even the patent proprietor, has asked the EPO, the ED itself, or the competent formality officer, when the delivery of the written decision was to be expected. [3.3] Nor can the Board endorse the opinion of the [patent proprietor] according to which the case law of the Boards of appeal would exclude a remittal in a case where there was only a substantial procedural violation resulting from the change of composition of an OD. In case T 960/94 [3] (also see the case law summary in Case Law, 6 th edition, 2010, paragraphs VII.E.17.4.3 and 4.6, the Board decided to remit the case to the OD because of a substantial procedural violation of the same kind (A 113(1) together with A 116). The decisions cited by the [patent proprietor] do not deviate from this established case law, not even T 862/98 of Board 3.2.04, where a remittal was based on several different procedural violations and not, as asserted by the [patent proprietor], because there was a combination of two or more deficiencies (see point [3.1] of the reasons). [3.4] The fact that the case absolutely has to be remitted to the OD in the present case follows even more compellingly from the following considerations. During an extremely long period, spanning from the OPs that took place on October 18, 2006, and the submission of the opponent on December 15, 2006, respectively, to the official communication dated May 18, 2010, and the notification dated May 19, 2010, respectively, the opposition proceedings were completely at rest, without there being any recorded or objectively determinable circumstances or declarations which could justify such a procedural delay of more than three years. 830 | 3398
T 563/11 – The Silence Of The Caterpillar
K’s Law – The ebook
Irrespective of the above mentioned particularities of the course of the proceedings, the extreme delay between the OPs and the delivery of the written decision as such constitutes a substantial procedural violation (see e.g. T 358/10 [5.1] of Board 3.2.03). The Board is not aware of any objectively verifiable reasons for the change of the first examiner. However, under these circumstances it cannot be excluded that the change of composition if the OD was directly caused by the extremely long delay between the OPs and the written decision. It may well be that more speedy processing of the opposition within a usual processing period (Bearbeitungsphase), once the legal situation of the opponent had been clarified, would have allowed to issue a written decision by the OD in its original composition, which then could have been signed by the three members before which the parties had made their submissions during the OPs held on October 18, 2006. [3.5] The Board, having exercised its discretionary power, comes to the conclusion that in view of the circumstances of the present substantial procedural violation the reasons submitted by the [patent proprietor] do not stand in the way of a remittal to the first instance. [4] As a consequence, the reimbursement of the appeal fee is equitable within the meaning of R 103(1). [5] Consequently, the question whether the impugned decision has to be maintained on substantive grounds does not need to be decided here. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1232/09 – Only By Reference
K’s Law – The ebook
T 1232/09 – Only By Reference 8 Dez 2012
In this case the patent proprietor, who appears to have been frightened by recent Article 12(4) RPBA case law, sent the following letter to the Board.
The question arose whether this way of filing requests was alright. [1.2] Regarding auxiliary requests 1 to 6, the [patent proprietor] declared on 5 August 2011 that these requests filed in the first-instance proceedings were “maintained in the appeal proceedings”. With this declaration, the board considers that said requests were formally introduced into the appeal proceedings on 5 August 2011. The sole fact that they were submitted only by reference and not in written form cannot be seen as a serious ground for disregarding them during the appeal proceedings. [1.3] The board therefore decides, in the exercise of its discretion under Articles 13(1) and (3) RPBA, to admit auxiliary requests 1 to 6 […] into the appeal proceedings. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2347/11 – Oops-A-Daisy!
K’s Law – The ebook
T 2347/11 – Oops-A-Daisy! 7 Dez 2012
The idea of withdrawing the wrong application will send a shiver down the spine of most patent attorneys. The present appeal - against the revocation of the opposed patent - presents us with a misguided withdrawal and adds a flower to the big bouquet of case law on withdrawals of withdrawals. Having received the patent proprietor’s statement of grounds of appeal the registry of the Board forwarded it to the two opponents on March 19, 2012. This communication stated that “Any reply must be filed within four months of this notification”. In a letter received on March 28, 2012, the patent proprietor made the following declaration:
In a further letter, received on April 5, 2012, the patent proprietor explained that there had been an error:
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T 2347/11 – Oops-A-Daisy!
K’s Law – The ebook
Obviously, the opponents objected to the withdrawal being ignored. In what follows, the Board tries to sort out this delicate situation. There are interesting bits and pieces all over the decision, so I decided to report it in full. Procedural matters The cancellation of the first time limit for responding to the statement of grounds of appeal, R 100(2) [1.1.1] The four month time limit for opponents 1 and 2 to reply to the statement of grounds of appeal would normally have expired on 30 July 2012. Under Article 12(5) RPBA […], extension of time limits may exceptionally be allowed in the board’s discretion following receipt of a written and reasoned request.
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T 2347/11 – Oops-A-Daisy!
K’s Law – The ebook
[1.1.2] In the letter received on 8 May 2012 opponent 1 requested an indication by the board of whether the appeal was seen as not withdrawn well before the end of the time limit for responding to the statement of grounds of appeal and, if so, to set a new time limit. [1.1.3] In the annex to the summons to oral proceedings (OPs), dated 6 June 2012, the board expressed the provisional view that under the circumstances, and particularly in the light of decision T 18/92, there was at least prima facie uncertainty as to whether the appeal procedure has been terminated by the [patent proprietor’s] declaration in the letter of 28 March 2012. These circumstances were regarded by the board as exceptional in the meaning of Article 12(5) RPBA. In the board’s view it would have been unfair and contrary to the principle of procedural economy to have expected opponents 1 and 2 to reply to the statement of grounds of appeal whilst there was at least prima facie uncertainty as to whether appeal proceedings were still pending. The board consequently cancelled the time limit for responding to the statement of grounds of appeal. The holding of separate OPs solely on the question of whether the appeal had been withdrawn [1.2.1] Such separate OPs were specifically requested by opponent 1, while the proprietor requested that they not occur and that all issues be dealt with in a single OPs. [1.2.2] In view of the present case load of the board, it is unlikely that this case would reach the front of the queue for substantive examination by the board, A 110, within the next three years, no party to the proceedings having made a request for accelerated processing of this case before the boards of appeal; see OJ EPO 2008, 220. [1.2.3] If the board had allowed the proprietor’s request, uncertainty might have remained for at least the next three years as to whether appeal proceedings were still pending in this case. The board regarded such a scenario as unacceptable for the parties to the proceedings, in particular opponents 1 and 2, and third parties and consequently allowed opponent 1’s request. The request to change the date of the OPs [1.3.1] In the letter received on 12 June 2012 the proprietor requested that the date of the OPs, arranged for 16 October 2012, be changed as the representative was also the only person working on another case in which OPs were to be held on 17 October 2012 before the German Federal Patent Court. A preparatory meeting with the parties in that case was already planned for 16 October 2012. In a letter received on 18 June 2012 opponent 1 requested inter alia that the date of the OPs not be changed. [1.3.2] According to point 2.3 of the Notice of the Vice-President of DG3 of the European Patent Office dated 16 July 2007 concerning OPs before the boards of appeal of the EPO (OJ EPO 2007, Special edition No. 3, 115), “Every request for fixing another date for OPs should contain a statement why another representative within the meaning of A 133(3) or A 134 cannot substitute the representative prevented from attending the OPs.” [1.3.3] In the present case the board found that the argument by the proprietor’s representative that he was the only person working on the present file (and a case before the Bundespatentgericht) was insufficient to demonstrate that no other representative could deal with this matter before the EPO, particularly because, as stated in the annex to the summons to OPs, the OPs did not relate to substantive matters, but rather to the procedural question of whether the appeal procedure has been terminated by the letter of 28 March 2012. To argue this issue alone it would not be necessary to have any knowledge of the substance of the case. [1.3.4] The board consequently decided to allow opponent 1’s request not to change the date of the OPs. The new time limit for responding to the statement of grounds of appeal, R 100(2) [1.4.1] As explained below, the board concludes that the proprietor’s declaration in the letter of 28 March 2012 did not terminate these appeal proceedings, meaning that appeal proceedings are still pending in this case. Hence, following opponent 1’s request, at the end of the OPs the board set a new four month time limit for opponents 1 and 2 to reply to the statement of grounds of appeal, starting the day after the OPs, i.e. on 17 October 2012. The time limit was notified to all parties in the OPs to minimize the delay in the proceedings. The proprietor’s letter received on 28 March 2012 [2.1] It is common ground between the proprietor and opponent 1, and the board agrees, that the letter contains some details which fit the present proceedings and other details which do not. Those details which fit are the 835 | 3398
T 2347/11 – Oops-A-Daisy!
K’s Law – The ebook
proprietor’s own reference for this case (RA 942-04EP), a “number” the same as the publication number in this case (1 640 847) and the name of the applicant (RAMBUS INC.). The details in the letter which do not fit are two references to “the application” (instead of the patent), two references to “the applicant” (instead of the proprietor) and “the current examination proceedings” (instead of the current appeal proceedings). The letter also mentions “objections raised” during the current proceedings, although no objections had been raised by the board. [2.2] The proprietor and opponent 1 differ as to what the consequences of these discrepancies should be. According to the proprietor, the letter of 28 March 2012 must be taken at “face value”, leading to the conclusion that it was intended to relate to another file and thus has no effect in this case. According to opponent 1, the letter of 28 March 2012 must be assumed to relate to these proceedings and construed as a declaration that the proprietor is no longer interested in maintenance of the patent, which, in turn, should be construed in the light of the case law as a withdrawal of the appeal, taking immediate effect and being irrevocable, since it has been announced to the public via the online European Patent Register. [2.3] As a preliminary point, the board considers that the fact that EPC 2000 introduced a revocation procedure, A 105a-c, is irrelevant to the present case. Such revocation procedure is explicitly excluded while opposition proceedings are pending (A 105a(2)) and there is nothing in the letter of 28 March 2012 which would give anyone the impression that it was an (incorrect) attempt to invoke this article. It would be known to an interested third party that a proprietor who had lost interest in the patent would have available only the same mechanisms for terminating the procedure as before the introduction of EPC 2000, namely either simply withdrawing the appeal (since the patent was revoked by the opposition division) or withdrawing consent to the text of the patent in accordance with A 113(2). [2.4] The board takes the view that, as argued by the [patent proprietor], it is established case law that a renunciation of a patent must be unambiguous and free from doubt before it may be acted upon by a division or board (see for example T 386/01, cited by the [patent proprietor]). The board considers that the same must be true of a declaration that an appeal is withdrawn. As noted above it is common ground that the letter contains some details which fit the present proceedings and other details which do not. According to opponent 1, the details in the letter which fit the present case, i.e. the minority of the details, are assumed to reflect the author’s true intention, whilst the details which do not fit, i.e. the majority of the details, are seen as not reflecting the author’s intention and thus requiring interpretation. The board finds that this is not a reasonable approach, since it in effect requires that the board ignore the fact that there are details not fitting the present proceedings. The board finds in fact the opposite approach to be more reasonable, namely that it is likely that the majority of the details in the letter reflect the author’s true intention, namely to withdraw a European patent application in a different case. At any rate the board considers that the request is clearly not unambiguous and free from doubt. Had the [patent proprietor] not sent the second letter of 5 April 2012 it would therefore have been incumbent on the board to enquire as to the true intention of the [patent proprietor] before taking any action, whether that would have been in the form of a decision or simply closing the procedure. Which of these two options would have been the correct one is, in the circumstances, irrelevant. The board concludes that the intention of the author of the letter of 28 March 2012 was to withdraw a European patent application in a different case, so that the letter has no effect in this case. The reasoning in the decisions relied upon by opponent 1 and mentioned in the first question for referral to the Enlarged Board of Appeal (EBA), namely T 68/90, T 264/84, T 415/87, T 347/90, T 18/92 and T 481/96 […], does not cause the board to change its assessment of the facts in this case. It is true that in some cases cited by the opponent a statement that the proprietor wishes to “withdraw the application” has been taken as a renunciation of a patent. However this does not contradict the principle that the request must be unambiguous and doubt free. It is clear that this depends on the facts of the individual case. In some of these cases (T 347/90, T 68/90, T 481/96) it is evident from the decision that there were other, clear, indications that the patent “application” referred to was indeed meant to refer to the patent which was the subject of the proceedings. In at least one case, T 481/96, the board nonetheless checked the request with the proprietor. In two cases, T 264/84 and T 415/87, there is no discussion of any surrounding facts. In these cases there is certainly no indication that the board in fact had any doubts as to the proprietor’s intention, nor that it would have issued its decision had it had any such doubts. [2.5] This evaluation of the letter of 28 March 2012 also applies to third parties reading the letter in the online “all documents” part of the European Patent Register. Third parties would also have concluded that the author of the letter of 28 March 2012 had at least possibly intended to withdraw a European patent application in a different case. Thus the third party would also have appreciated that there was not an unambiguous and doubtfree request. [2.6] It follows from the above that the board does not accept opponent 1’s argument that the letter must be construed as a withdrawal of the appeal in this case. 836 | 3398
T 2347/11 – Oops-A-Daisy!
K’s Law – The ebook
[2.7] With respect to the online publication of this letter, the board notes as a preliminary that it is not convinced by opponent 1’s argument that decisions T 18/92 and T 481/96 support the hypothesis that the withdrawal of a European patent application in opposition appeal proceedings is equivalent to the withdrawal of the appeal by the proprietor. On the contrary, these decisions state that, under circumstances where the first instance decision had been to revoke the patent, a request for revocation of the patent had the same effect as the withdrawal of the appeal. In contrast to the situation had the appeal really been withdrawn however, the appeal proceedings did not end as soon as the request for revocation of the patent was made. Instead, the board issued a decision. In T 18/92 the proprietor requested that the patent be revoked. The board informed the proprietor in writing that the request had the same effect as a withdrawal of the appeal; see reasons, point [4]. The board thereupon issued a decision stating that the patent remained revoked. In case T 481/96 the proprietor declared that the application was withdrawn. The board in question explained to the proprietor in writing that the board interpreted the request as a request for revocation of the patent, whereupon the proprietor made a request for revocation of the patent. The reasons for the decision cite T 18/92 and state that the request for revocation of the patent had the same effect as the withdrawal of the appeal. The board decided that the patent remained revoked according to the decision of the first instance. The fact that a request for revocation of the patent had the same effect as the withdrawal of the appeal in these cases stems largely from the nature of the appealed decision. Had the appealed decision been to reject the opposition(s), then these two requests would have had different effects: revocation of the patent, on the one hand, and maintenance of the patent, on the other. [2.8] Further with respect to the publication of the letter, under A 127 and R 143(n), withdrawals of European patent applications are announced in the form of an entry or “mention” in the European Patent Register, which is publicly available online. This information is also published in the European Patent Bulletin, which is also publicly available online. In the present case, no such announcement was made by the EPO in either the European Patent Register or the European Patent Bulletin. Hence it is not the case that the EPO has publicly announced an official interpretation of the letter of 28 March 2012 which might have led third parties to another conclusion regarding the effect of the letter of 28 March 2012. In decision J 25/03, which was relied upon by opponent 1 and is referred to in the third question to be referred to the EBA, a withdrawal of an application had been notified to the public in the form of a mention in the online European Patent Register. For this reason a request for retraction of a letter of withdrawal of the application was not allowed. Since in the present case however the letter of 28 March 2012 is not understood as applying to this case and because no such mention of withdrawal of the application appeared in the European Patent Register or European Patent Bulletin, this decision does not change the board’s assessment of the facts in the present case. The proprietor’s subsequent letter received on 5 April 2012 [3.1] It is established EPO practice that requests by parties which are unclear or ambiguous are queried by the EPO with the party to establish the true intention of the party concerned. In the present case, no such query by the EPO was necessary, since the proprietor soon sent a further letter, received on 5 April 2012, clarifying the intention of the submission received on 28 March 2012, namely that the letter of 28 March 2012 had been intended to relate to another case which was still in the examination phase. With the letter received on 5 April 2012 the proprietor filed a corrected withdrawal of the other patent application (No. 07 114 628.6). Whilst actions by the author of the letter of 28 March 2012, subsequent to its receipt by the EPO, have not been taken into account by the board in determining the legal effect of said letter, the board notes that the author’s subsequent actions at least do not contradict the board’s understanding of the letter of 28 March 2012. The questions to be referred to the EBA [4.1] The questions, formulated by opponent 1 in German (see the minutes of the OPs), are understood by the Board to be as follows in English: 1. How is the interpretation that the patent proprietor’s submission of 28 March 2012 is not a declaration that the patent proprietor is no longer interested in the maintenance of the patent in suit consistent with the six decisions cited in point 3.3 of the annex to the summons to OPs? 2. Following the submission of 28 March 2012 and its publication in the online European Patent Register, can the subsequent submission of 5 April 2012 still be considered? 3. If the answer to question 2 is yes, how is this consistent with decision J 25/03? [4.2] According to A 112 (1),(1)(a) EPC 1973, in order to ensure uniform application of the law, or if an important point of law arises, the board of appeal shall, during proceedings on a case and either of its own 837 | 3398
T 2347/11 – Oops-A-Daisy!
K’s Law – The ebook
motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required for the above purposes. If the board of appeal rejects the request, it shall give the reasons in its final decision. [4.3] In the present case, question 1 relates to a question of fact, namely the board’s understanding of the letter of 28 March 2012, rather than a question of law. Answers to questions 2 and 3 are not considered to be required (see point [4.2]) for a decision in the present case, since the intention of the author of the letter of 28 March 2012 has been determined on the basis of the information given in that letter alone, and no official interpretation of the letter was published by the EPO in either the European Patent Register or the European Patent Bulletin. Hence none of the questions complies with A 112 EPC 1973. The remaining requests by opponent 1 [5] Opponent 1’s last two auxiliary requests, namely that the appeal be dismissed or (further) OPs be appointed and a four month time-limit for a reply to the grounds of appeal be set require that the technical issues raised in the statement of grounds of appeal also be considered. Since the OPs of 16 October 2012 were solely to discuss whether the letter of 28 March 2012 had terminated the appeal proceedings and opponents 1 and 2 have not yet responded to the statement of grounds of appeal, the board has not been able to decide on these requests in the present interlocutory decision. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 162/12 – Card Games
K’s Law – The ebook
T 162/12 – Card Games 6 Dez 2012
This appeal was filed against the refusal of the application under consideration. The Board found the main request to lack novelty. It then dealt with the admissibility of the auxiliary requests that had been filed during the oral proceedings (auxiliary request 1) and one month before the OPs (auxiliary requests 2 and 3), respectively. (New) auxiliary request 1 filed during the OPs [2.1.1] (New) auxiliary request 1 corresponding to the combination of claims 1 and 2 of the main request was not filed until the end of the discussion concerning the patentability of the subject-matter of claim 1 of the main request. The appellant argued that the need for a further limitation of the subject-matter of the claim 1 of the main request became apparent to him only during the OPs and that the amendments in said request establish novelty for the subject-matter of amended claim 1. [2.1.2] According to the established case law of the Boards of Appeal the admission of amended claims submitted for the first time during OPs is subject to a legally relevant excuse for their late filing, see Case Law, 6th edition, 2010, Chapter VII.E. 16.3.3(a). [2.1.3] In the present case the discussion during the OPs has been essentially limited to the objection raised in the Board’s annex to the summons concerning lack of novelty of the subject-matter of claim 1 of the main request, without any new issues coming up which could have left the appellant facing a new situation. As stated under point [2.1.1] above claim 1 of the (new) auxiliary request 1 corresponds to the combination of claims 1 and 2 of the main request. However, the Board has already expressed in its annex to the summons its preliminary opinion that the subject-matter of claim 2 of the main request did not involve an inventive step, see 839 | 3398
T 162/12 – Card Games
K’s Law – The ebook
point 3. The appellant therefore could have filed said auxiliary request, properly supported by arguments (see point 2.3 below), sufficiently in assurance for the Board to prepare itself for the OPs. In acting as it did, the appellant kept all its cards to itself whereas the Board with its annex to the summons has laid its cards on the table. That cannot be considered conclusive to efficient proceedings. [2.1.4] Thus, there is no legally relevant excuse for the late filing of this auxiliary request, which is therefore not admitted. (Renumbered) auxiliary requests 2 and 3 filed with letter of 2 July 2012 as then 1st and 2nd auxiliary requests
[2.2.1] In its annex to the summons to OPs set for 2 August 2012, sent by virtue of Article 15(1) RPBA the Board specifically raised objections concerning lack of novelty of the subject-matter of claims 1 and 3 to 10 and lack of inventive step of claims 2 and 11 to 15 of the appellant’s main request. In this communication the ultimate date for filing submissions was set out at one month before the OPs and reference was made to the provisions of Article 13 RPBA. With its letter of 2 July 2012, the appellant filed two auxiliary requests. It only indicated that for the then 1st auxiliary request claim 6 of the main request was incorporated into the independent claims 1 and 10 of the main request and that in the then 2nd auxiliary request the independent claim 11 of the main request became the only independent claim. The request was not accompanied by any reasoning concerning the patentability of the claims of these requests, The appellant did not indicate what the objective of the amendments was nor how said changes responded to the objections raised in the Board’s communication. The (renumbered) auxiliary requests 2 and 3 are therefore to be regarded as not being substantiated. [2.2.2] According to Article 13(1) RPBA it is in the Board’s discretion to admit and consider any amendment to a party’s case after it has filed its grounds of appeal or reply. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. [2.2.3] It is exactly with a view to procedural economy that the Board has taken the trouble of giving a detailed preliminary opinion on novelty and inventive step, not only regarding the independent claims, but also the dependent claims and in particular those claims that are now the subject of the subsequently filed auxiliary requests 2 and 3. Filing such requests without any substantiation, let alone any argumentation taking account of the Board’s remarks, does not serve the purpose of procedural efficiency. Already for these reasons alone the Board does not exercise its discretion in favour of the appellant; the (renumbered) auxiliary requests 2 and 3 are not admitted into the appeal proceedings in accordance with Article 13(1) RPBA. [2.3] The Board considers the non-admittance of the appellant’s auxiliary requests 2 and 3 into the appeal proceedings not a harsh decision. It makes clear that also the parties have a duty to keep the proceedings efficient, be it ex-parte or inter-partes proceedings. In their dealings with the Boards of Appeal, the interested circles persistently request the Boards to issue preliminary opinions, in advance of the OPs. If a Board comprises (sic) with such a wish, like the present Board, it may expect an appropriate reaction in return, timely submitted and substantiated in advance of the OPs. Filing such requests “just in time” before the ultimate date mentioned in the annex to the summons, but supplying the substantiation only at the OPs is for this Board equivalent to filing such requests at the OPs, and can be treated accordingly. The comparison with a game of cards, as used in point 2.1.3 above, also applies here. [2.4] The Boards also cannot follow the appellant’s argument that is was its role to evaluate any reasonable request whether or not it meets, the requirements of the EPC. In the Board’s judgment, for an auxiliary request to qualify as a “reasonable request” at this stage of the proceedings requires not only at least some substantiations and clear allowability, but should also comply with and procedure efficiency. That is not the case here. [2.5] Finally, the Board wishes to point out that the provisional opinion of the Board in the annex to the summons is not necessarily a sufficient reason for having further requests admitted; the obligation to provide a complete case with the appeal or the reply to the appeal, established by Article 12(2) RPBA, still holds.
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T 162/12 – Card Games
K’s Law – The ebook
Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1176/09 – Humans Excluded
K’s Law – The ebook
T 1176/09 – Humans Excluded 5 Dez 2012
The simultaneous application of G 1/03 and G 2/10 is not an easy topic, to say the least, so it is always interesting to see how the Boards tackle this task. Claim 1 of the main request before the Board read: 1. An in vitro method of altering the state of differentiation in an embryonic stem cell or population of embryonic stem cells, comprising the step of administering one or more zinc finger proteins (ZFPs) wherein each ZFP has three DNA-binding domains Fl: RSDHLAR (SEQ ID NO: 2), F2: TSGSLTR (SEQ ID NO: 3), and F3: RSDNLAR (SEQ ID NO: 4), which are designed and/or selected to bind to a target site in an endogenous gene which is OCT 3/4, wherein the ZFP alters the state of cellular differentiation, with the proviso that the cell or population of cells is no human embryonic stem cell or population of human embryonic stem cells. The Board had to examine whether this claim complied with the requirements of A 123(2): [3] Compared to claim 1 as originally filed, claim 1 of the main request has been restricted to a method of altering the state of differentiation in an embryonic stem cell or population of embryonic stem cells, comprising the step of administering a ZFP characterised by three specific DNA-binding domains which bind to a target site in the oct-3/4 gene, and a disclaimer has been added, excluding human embryonic stem cells. [4] The claimed subject matter is disclosed in Example 1, describing the role of Oct-3/4 in embryonic stem cells, in combination with examples 2 to 4, demonstrating the effect of a ZFP with the claimed specific DNA binding domains in mouse embryonic stem cells. [5] By way of a disclaimer, a method using human embryonic stem cells or a population of human embryonic stem cells is excluded from the subject-matter of claim 1. Under A 53(a) EPC in conjunction with R 28(c), European patents shall not be granted in respect of biotechnological invention which concern uses of human embryos for industrial or commercial purposes. According to the decision of the Enlarged Board of Appeal G 1/03 a disclaimer may be allowable to disclaim subject-matter which, under A 52 to A 57, is excluded from patentability for non-technical reasons. The subject matter remaining in the claim after the introduction of the disclaimer is an in vitro method of altering the state of differentiation in a non-human embryonic stem cell. The claimed method using mouse embryonic stem cells is disclosed in the application as filed […]. The exclusion of human embryonic stem cells does not introduce a new technical teaching nor does it lead to the disclosure of any subject matter going beyond the application as filed. Therefore, the disclaimer also satisfies the condition set out in point 1a of the order of decision G 2/10 (cf. decision T 2464/10). [6] The board is therefore satisfied that the requirements of A 123(2) are met.
To me (admittedly a non-specialist in this field) this does not sound very convincing. The disclosure of a method using mouse embryonic stem cells does not disclose the method for non-human embryonic stem cells in all its generality, does it? But wouldn’t this have to be disclosed for G 2/10 to be complied with? Grrr, this disclaimer stuff is not for simple minds like me. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2233/09 – Objects In A Drawer
K’s Law – The ebook
T 2233/09 – Objects In A Drawer 4 Dez 2012
The opponent filed an appeal after the patent had been maintained in amended form. In what follows the Board deals with the admissibility of new grounds for opposition: [1.1] The [opponent] raised in the statement of the grounds of appeal an additional ground of opposition, namely lack of disclosure according to A 100(b) EPC 1973. However, A 100(b) EPC 1973 was not one of the grounds of oppositions raised by the Opponent within nine months of the publication of the mention of the grant of the patent, as required by A 99(1) EPC in conjunction with R 76(2)(c). Moreover, it is established jurisprudence of the Boards of Appeal of the EPO that new grounds of opposition not submitted within said time limit of nine months can be introduced into the appeal proceedings only with the consent of the Patent Proprietor (see G 10/91 [3]). Since in the present case the patent proprietor did not consent to the introduction of this new ground of opposition […], it is to be rejected as inadmissible. [1.2] The [opponent] argued in the statement of the grounds of appeal that claim 1 extended beyond the content of the original parent application of which the patent in suit is a divisional. The Board notes that A 100(c) EPC 1973 was also not one of the grounds of opposition raised by the opponent within the time limit of nine months, as required by A 99(1) in conjunction with R 76(2) (c). Moreover, even though the granted claim 1 had been modified during the opposition proceedings before the Opposition Division and the compliance of the amended claims with A 123(2) was considered in the decision under appeal, the present objection, which was never raised at first instance, does not concern an extension beyond the content of the application as originally filed, i.e. the compliance with the requirement of A 123(2), but a different legal ground, namely an extension with respect to the original parent application of which the patent in suit is a divisional, i.e. a compliance with the requirement of A 76(1) EPC 1973. Therefore, it concerns a legal objection which is equally covered by A 100(c) EPC 1973 but is different from A 123(2). The Board notes in this respect that the Enlarged Board of Appeal of the EPO decided in G 7/95 [6, 7.1] with respect to the different legal grounds covered by A 100(a) EPC 1973 that legal grounds covered by the dispositions of A 100(a) which have not been substantiated in due time can only be introduced into the proceedings with the consent of the patent proprietor. The Board thus finds that the same principle must apply similarly to A 100(c) 1973 EPC, which concerns both the extension beyond the content of the original application (A 123(2)) as well as, in case of a divisional application, the extension beyond the content of the original parent application (A 76(1) EPC 1973). Since in the present case no objections with respect to A 76(1) EPC 1973 had been substantiated during the opposition proceedings, such a new legal ground can be introduced in the appeal proceedings only with the consent of the patent proprietor. Since, the patent proprietor did not consent to the introduction of this new ground of opposition […], it is to be rejected as inadmissible. [1.3] For the reasons mentioned above the decision T 922/94 [2.2], cited by the [opponent], referring to the power of the Board to consider the compliance with the requirement of A 123(2) of claims amended during the opposition proceedings, cannot apply to the present case. 843 | 3398
T 2233/09 – Objects In A Drawer
K’s Law – The ebook
Should you wish to download the whole decision, just click here. The file wrapper can be found here. NB: The decision was also discussed on Le blog du droit européen des brevets (here).
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T 1680/11 – Welcome To No Man’s Land
K’s Law – The ebook
T 1680/11 – Welcome To No Man’s Land 3 Dez 2012
Sometimes the misbehaviour of an Examining Division (ED) can lead an applicant into a weird situation where there is not much help to be expected from the Board of appeal. On June 6, 2011, the ED refused the application under consideration. The applicant filed an appeal in due time. It requested that the patent be granted on the basis of the claims that had been refused by the ED. The ED granted interlocutory revision but refused the reimbursement of the appeal fee. The Board decision contains the corresponding form 2701 :
However, on August 12, 2011, the ED informed the applicant that this decision was corrected and ... that interlocutory revision was refused! The ED provided a justification that is ... surprising, to say the least (in France we would say “ça vaut son pesant de cacahuètes”) (my English translation): “EPO form 2701 dated July 27, 2011, and the corresponding decision on interlocutory revision dated August 3, 2011, do not reflect the actual intention of the ED, according to which interlocutory revision cannot be granted. Pursuant to R 140 only obvious mistakes can be corrected in decisions of the EPO. Thus it has to be examined whether such an obvious mistake within the meaning of R 140 has occurred in the present case. In the present case, the choice of box (i) on EPO form 2701 cannot correspond to the intention of the ED because in its notice of appeal dated July 4, 2011, the applicant expressly maintained the main request that had been refused and the ED had come to the conclusion that interlocutory revision could not be granted. Moreover, it has to be noted that the fact that the reimbursement of the appeal fee could not be granted and that this decision was left to the Board of appeal provides a clear hint to the proper intention of the ED.
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T 1680/11 – Welcome To No Man’s Land
K’s Law – The ebook
Finally, the fact that the box was erroneously ticked constitutes an obvious mistake because in the opinion of the ED, the grant of interlocutory revision constitutes a substantial procedural violation. As the applicant requires the Board to examine the main request that had been refused, the grant of interlocutory revision on the basis of the auxiliary request would have the consequence that the applicant would have to file a second appeal and pay a second appeal fee, which is unacceptable (unzumutbar), even if reimbursement of this appeal fee can be requested. In the present case, it is in particular the combination of interlocutory revision on the basis of the unamended main request and the refusal to reimburse the appeal fee that the ED considers to be unacceptable (nicht akzeptabel). Thus the choice of the combination of interlocutory revision and the refusal to reimburse the appeal fee by the ED was not intentional; the actual intention of the ED was to remit the entire case to the Board of appeal pursuant to A 109(2). Therefore, in the present case the ED comes to the conclusion that the decision announced on EPO form 2709 dated July 27, 2011, and the corresponding grant of interlocutory revision dated August 3, 2011, constitutes an obvious mistake that should be corrected pursuant to R 140.” This communication was not signed; there was only the name of a formality officer in the letterhead. Believe it or not, the original signed form appears to have been ‘doctored’; here is what is now accessible via the online Register:
During the oral proceedings before the Board, the applicant endorsed the opinion of the Board that the appeal did not cover substantive aspects and only requested the reimbursement of the appeal fee. The applicant argued that in spite of the decision to grant interlocutory revision, the ED had not granted a patent as requested. It was to be expected that the ED would refuse the request for the same reasons as in the impugned decision. Therefore, the appeal was not granted, nor was the decision reviewed by the Board. As the applicant had paid an appeal fee, this situation resulted in a substantial procedural violation. In T 691/91 it had been decided that a grant of interlocutory revision could be a decision ultra vires justifying the reimbursement of the appeal fee. Here is what the Board had to say on this case: *** Translation of the German original *** Pendency (Anhängigkeit) of a substantive appeal
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T 1680/11 – Welcome To No Man’s Land
K’s Law – The ebook
[2.1] The decision to grant interlocutory revision dated July 2011 and duly signed by the three members of the ED constitutes a legally effective decision pursuant to A 109(1), first sentence. The fact that the appellant desired to maintain the main request, which had been refused, cannot alter this finding, be it only because an ED can indeed change its opinion on the grant of a patent in view of the arguments contained in the statement of grounds of appeal. [2.2] According to the communication dated August 12, 2011, this decision granting interlocutory revision was to be corrected so that it was set aside. It may be left unanswered whether such a correction is at all possible, because a correction can only be made by the competent entity (Stelle) in a form that is identifiable as a decision. As the communication dated August 12, 2011, has not been signed and does not identify the entity of the EPO that is responsible for its content, it is not identifiable as a decision of the competent ED of the EPO. [2.3] Thus there is no pending appeal and the Board of appeal only has to decide on the request for reimbursement of the appeal fee. As far as the substantive examination of the application is concerned, it is the ED that remains competent. Reimbursement of the appeal fee [3.1] The appeal fee is reimbursed in the event of interlocutory revision or where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation. [3.2] In the present case even the appellant does not contest any more that the fact that its request for a telephone interview (filed in a letter dated June 11, 2010) was not granted, does not constitute a substantial procedural violation. Moreover, the impugned decision is reasoned and based on reasons which the appellant was able to comment, i.e. a violation of A 123(2) of which it had been made aware as soon as in the communication dated March 30, 2010. Thus there was no substantial procedural violation in this respect either. [3.3] However, the appellant is of the opinion that the above mentioned decision to grant interlocutory revision did constitute a substantial procedural violation justifying reimbursement of the appeal fee because its request for the grant of a patent according to the documents filed on June 11, 2010, had not been allowed and because another refusal based on the very same reasons as the impugned decision is to be expected. As a decision granting interlocutory revision pursuant to A 109(1), first sentence, does not have to be reasoned, the decision of the ED only shows that the ED considers the appeal to be admissible and reasoned, that it sets aside the impugned decision and continues the proceedings. Moreover, and above all, the decision to grant interlocutory revision cannot be the cause for the filing of the appeal because it – necessarily – has been made after the appeal has been filed. Therefore, the grant of interlocutory revision cannot constitute a substantial procedural violation justifying the reimbursement of the appeal fee. [3.4] The factual situation underlying decision T 691/91 cited by the appellant differs from the present factual situation as follows: The decision impugned by means of a second appeal by the then applicant was not, in terms of content, a decision granting interlocutory revision within the meaning of A 109(1), first sentence, but dealt with a correction of the first decision of the ED refusing [the application under consideration] in the sense that the decision did not only concern claims 1 to 4, which were the only claims that had been taken account of in the first decision, but also claims 5 to 13.The latter should also be refused. In this respect the ED was not competent (“ultra vires”) to take the second decision, which had been referred to as “rectification decision”, but the decision would have had to be directly remitted to the Board of appeal. This is what constituted the procedural violation which, according to the decision of the Board of appeal, justified reimbursement of the appeal fee paid for the second appeal. In contrast, in the present case the decision of the ED granting interlocutory revision constitutes an effective decision within the meaning of A 109(1), first sentence, for which the department was competent according to this provision and which could not have been corrected or otherwise validly amended because the letter dated August 12, 2011, does not qualify as a decision, be it only for formal reasons. […]
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T 1680/11 – Welcome To No Man’s Land
K’s Law – The ebook
The request for reimbursement of the appeal fee is dismissed. I wonder what will now happen. It may be expected that the ED will again refuse the application, which should trigger a second appeal. So in the end the applicant will have to pay two appeal fees, just because the EPO behaved in a very unprofessional way, and there is little if any hope for reimbursement of one of these fees. What a shame. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 2274/11 – Careless Tiger
K’s Law – The ebook
T 2274/11 – Careless Tiger 1 Dez 2012
One more decision on re-establishment … The Examining Division (ED) refused the application under consideration in a written decision dated March 17, 2011. The professional representative, who was based in London, received his instructions from a Korean law firm. He alerted the law firm by e-mail on March 24, 2011 (acknowledged on the day after), May 4, 2011 (acknowledged on May 6) and May 26, 2011 (not acknowledged). On July 28, 2011, the law firm contacted the representative asking for particulars of the appeal, which made him realise that something had gone wrong. He then found out that the law firm had sent two e-mails on May 26 (“We will forward our instruction to you before the due date of May 27, 2011”) and on May 27, 2011. Apparently the first mail had not reached the representative’s firm at all – the second had been sent to somebody else in his office. The applicant filed a request for re-establishment. However, the Board found that the requirement of due care had not been met: [2] On the merits of the case, the Board first of all notes that the standard for re-establishment of rights under A 122 is not whether there was an intention to do something that was inadvertently omitted, but whether all due care was taken in order to carry out the omitted act. While the Board takes the view that the e-mail of 27 May – even in the absence of any attached instructions – could reasonably be interpreted as instructions to the European representative to file an appeal, no such appeal was actually filed in good time. Unless there is a re-establishment of rights, the appeal therefore has to be deemed not to have been filed and dismissed as inadmissible. [3] In determining whether all due care has been taken, the Board must look not only to the acts of the appellant, but to the acts of all those persons the appellant has asked to act on its behalf, decision J 5/80. This of course applies to the authorised representative, but it also applies to non-authorised representatives instructed by the appellant, decision J 4/07. [4] Nothing suggests that the authorised representative has acted other than in an appropriately circumspect and prudent manner. If any criticism can be voiced, it would be concerning the use of e-mails as a means of communication for time-sensitive information, as is further elaborated below. [5] The Board is not convinced that all due care has been exercised by the Korean firm, however. The first point to be dealt with is the use of e-mails in order to transmit important and time-sensitive information. It is recalled that the Korean firm despite repeated reminders chose to send instructions to the European representative only on the last day of the appeal period, and it did so by e-mail without any follow-up telephone call, fax or requesting an acknowledgement of receipt. In its decision T 1289/10, the Board had to deal with a similar case of re-establishment of rights due to the loss of a time limit for reasons of e-mail communication. In part [3.3] of the reasons, the Board held that “it can be left open whether the American attorney, at such a late stage, was well-advised to use email at all to instruct the European representative to file an appeal. However if it is to be used, the potential dangers must clearly be borne in mind. Email was never meant to be an instant messaging medium and indeed email may, under normal circumstances, be delayed for several hours or even days or occasionally even get lost. Given these (well-known) facts, it would appear necessary for the sender of an urgent and important email to check whether it has actually been received in time, possibly by using a different means of communication, such as the telephone.” Where in light of the imminent deadline in connection with a difference in time zones it is no longer possible to verify that an e-mail has indeed reached its destination, be it by telephone, from an acknowledgement of receipt, confirmation fax, etc., this problem appears to be entirely at the risk of the sender. It is of no importance in this 849 | 3398
T 2274/11 – Careless Tiger
K’s Law – The ebook
context why the Korean firm did not act until such a late stage, be it for its own internal reasons, or be it because it could not obtain instructions from the appellant any earlier. Thus, based on the initial submissions of 26 August 2011, it cannot be established that all due care has been taken in timely instructing the authorised representative. [6] Only after the summons to oral proceedings and the communication by the Board did the appellant furnish further details about the internal organisation of the Korean law firm, and the person in charge of the file. These are late-filed facts that cannot be taken into account when determining whether all due care has been taken (see decision T 257/07 [1.3]: “ the request for restitutio initially presented within the period stipulated by A122(2) failed to show that all due care had been taken. This omission cannot be subsequently remedied by the addition of further facts”). Even if the Board were to take them into account, the late-filed facts would not lead to the conclusion that all due care had been taken. The late-filed submissions add two facts to the previous case: First, that in time-sensitive cases it was customary for the Korean law firm to send a confirmation fax in addition to the e-mail, and that this should have been done for the e-mail of 27 May. Yet the person who sent the e-mail did not feel well on this day and therefore failed to send such fax. And, second, that the person having sent the e-mail was well-trained and well-supervised and working within a well-organised office. [7] The Board, however, notes two issues that cast doubt on the proper organisation of the Korean law firm’s work flow. For one, apparently no contingency plans were in place in case the responsible person having to observe a time limit was absent or fell ill. It appears that no supervisor was alerted or was aware of what had actually been done (the e-mail had been sent), and what still ought to be done (the fax still had to be sent). Doubts about the proper organisation are compounded by the fact that it was only two months later that the Korean law firm enquired as to the state of the appeal even though reception of the e-mail of 27 May had never been acknowledged. For such time-sensitive information, one would have expected that lack of confirmation of receipt should have triggered an immediate alert, and would have made the Korean law firm enquire much earlier about the appeal than only after two months. Irrespective of the admissibility of these late-filed submissions, they fail to show that all due care was taken to make sure that time-sensitive information actually arrived in time, and that the responsible person(s) were supervised in a manner that allowed for proper functioning even in case of illness or absence. [8] Due to the above, the Board is therefore not convinced that all due care had been exercised in meeting the deadline for the appeal, and consequently has to refuse the request for re-establishment of rights, dismiss the appeal as inadmissible and reimburse the appeal fee. Should you wish to download the whole decision, just click here. The file wrapper can be found here. NB: A nice French summary can be found here.
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T 182/09 – It’s Independence Day
K’s Law – The ebook
T 182/09 – It’s Independence Day 30 Nov 2012
In this decision the Board had to deal with the admissibility of late filed document D14, a scientific publication, and related procedural questions (postponement of the oral proceedings (OPs), remittal). Admissibility of document D14 into the proceedings [2] Document D14 was filed by the [opponent] with the letter dated 2 December 2009, i.e. after filing its statement of the grounds for appeal. The [patent proprietor] objected to its introduction into the appeal proceedings for the sole reason that it was filed at a late stage of the proceedings. According to A 114(2) the EPO may disregard facts or evidence which are not submitted in due time by the parties concerned. Thus, any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy (Article 13(1) RPBA). In addition, as respects admissibility of late-filed documents, it is established jurisprudence of the boards of appeal that a crucial criteria to be taken into account is whether the document is prima facie relevant and whether there is proper justification for its late filing to forestall tactical abuse. [2.1] Document D14 is a two-page document titled “a hybrid network of synthetic polymer mesh and collagen sponge”. This network is prepared by forming collagen sponges with interconnected microporous structures in the interstices of the synthetic polymer mesh […]. This hybrid network is associated with skin fibroblasts, which are biological components […]. The mesh made from a biocompatible polymer is shown in figure 1a. Figures 1b and 1c shown the collagen sponges having pores with an open cell pore structure interconnected in the interstice of the reinforcing component. It therefore appears immediately that the structure shown in figure 2 of this document is novelty-destroying for claim 1 of the main request. [2.2] The [patent proprietor] argued that document D14 was prima facie not relevant since the mesh density was not disclosed. Furthermore the foam component was not integrated with the reinforcing component such that the pores of the component interlock with the reinforcing component, figure 1c of document D14 showing even that the collagen was only on the top face of the mesh. However, the mesh density of the structure can be determined from figure 1a of document D14
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T 182/09 – It’s Independence Day
K’s Law – The ebook
Fig 1a which reveals that it clearly falls within the broad claimed range of 12 to 80%. Figures 1b and 1c of document D14
Fig 1b
Fig 1c clearly show that the collagen sponge is located on both faces of the polymer mesh and is integrated with it such that the spores of the sponge penetrate the polymer mesh and interlock with it. Moreover, it is indicated on page 1505, bottom of the left-hand column, that the polymer mesh was embedded in the collagen sponge sheet so that the fibre bundles of polymer mesh and the collagen sponges were alternately chained. [2.3] Accordingly, document D14 is highly relevant since it unambiguously discloses the subject-matter of claim 1 of the patent as granted. [2.4] In addition, the Board is not aware of any facts indicating that the filing of document D14 was deliberately delayed for tactical reasons. According to the [opponent], this document was filed promptly after it was brought to its attention from proceedings before the United States Patent Office. Furthermore, the [opponent] explained that it had no interest at all in delaying the proceedings, what the [patent proprietor] did not challenge. Therefore, the Board is not convinced that the late filing of document D14 was caused by tactical reasons as alleged by the [patent proprietor]. [2.5] The [patent proprietor] further argued that since this document was published by the Royal Chemical Society, it was easily retrievable by a simple search. Thus, the late filing of the document was due to the [opponent’s] negligence to carry out a comprehensive search during the opposition period. Also for this reason, document D14 should not be admitted into the proceedings, independently of its relevance. However, whether a document can be easily retrieved by search cannot be objectively assessed and therefore cannot be a significant criterion for its admissibility into the proceedings. In this respect, the Board notes that, despite of its relevance […], document D14 was not cited in the application as filed, nor in the EPO Search report, and the [patent proprietor] was apparently not aware of it. [2.6] The Board decides consequently to admit document D14 into the proceedings.
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T 182/09 – It’s Independence Day
K’s Law – The ebook
Request to postpone OPs and to set a new deadline for filing substantive comments [3] The [patent proprietor] argued that the Board should first decide on the admissibility of the late filed document D14 into the proceedings and then set a new deadline for the [patent proprietor] to consider the substantive content of the document. However, since the relevance of a late filed document is an essential criterion for deciding on its admissibility into the proceedings and since any decisive issues constituting the decision may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comment (A 113(1)), the relevance of document D14 must have been considered by all parties to the proceedings, i.e. including the [patent proprietor], before the Board decides on its admissibility. Accordingly, the [patent proprietor] cannot request to consider the relevance of a late filed document only after its admission into the proceedings has been decided. The [patent proprietor] requested a new deadline to file its substantive response to the [opponent’s] objections based on document D14, or the arrangement of second OPs to discuss these substantive issues, since it did not know before the OPs the Board’s opinion on the admissibility of document D14 into the appeal proceedings. However, a party which wants a decision in its favour must play a full part in proceedings and submit arguments in support of its case on its own initiative and at the appropriate time (see R 2/08 [8.5; 9.10]). It is part of the professional task of representatives to decide independently – that is, without assistance from the Board – how to pursue their cases (see T 506/91 [2.3]). In the present case, the [patent proprietor] has deliberately chosen not to comment on the substance of document D14 and not to respond to the [opponent’s] objection of lack of novelty based on document D14, although this objection was known to him for more than two years. In the communication accompanying the summons to OPs, the Board indicated that document D14 was highly relevant and could even be considered as novelty-destroying and that the parties should be prepared to handle all the litigious issues during these OPs. The [patent proprietor] had sufficient time before the OPs to consider the objection of lack of novelty based on document D14 raised by the [opponent]. Under these circumstances, the [patent proprietor’s] requests to continue the appeal proceedings in writing, to set a new deadline for filing substantive comments or to postpone the OPs are refused. Request for remittal to the department of first instance [4.1] The [patent proprietor] requested that the Board remit the case to the first instance since the admission of document D14 into the proceedings created a fresh case. The document should be examined at two levels of jurisdiction, so that the [patent proprietor] is not deprived of the possibility of subsequent review. Pursuant to A 111(1) the Board may exercise any power within the competence of the first instance or remit the case to that department. However, A 111(1) establishes no absolute right for parties to have matters raised in appeal proceedings examined by two successive instances; on the contrary, it leaves the Board of Appeal to decide upon a remittal in the light of the circumstances. Having arrived at the present stage of the appeal proceedings, the Board should therefore assess the appropriateness of a remittal. In the present case, examination as to the requirement of novelty is made in respect of a two-pages document which was filed two years before the date of the OPs before the Board. The [patent proprietor] made no comment about the objection of lack of novelty raised by the [opponent] until the OPs before the Board although there was no ambiguity in the disclosure of the document, which immediately appeared novelty-destroying for claim 1 of the patent-in-suit. Under the present circumstances, the Board exercises its discretion not to remit the case to the first instance, with the consequence that the conditional request of apportionment of the costs if the case is remitted does not apply. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2311/10 – Shaking Pillars
K’s Law – The ebook
T 2311/10 – Shaking Pillars 29 Nov 2012
The present decision contains some very interesting statements on the essentiality test formulated in T 331/87. The appeal was filed after the Examining Division (ED) had refused the application under consideration. Claim 1 of the main request before the Board read (in English translation) Sanitary fitting comprising (a) an actuating device (28;228) for a control unit (22) for controlling the water temperature and/or the water flow rate in a water outlet (10); (b) a controllable mist generator (3) comprising (ba) at least one mist outlet channel (12) that leads to a portion of the water outlet (10) (bb) a water reservoir (13) that is connected to the water outlet (10); characterised in that (c) the water reservoir (13) is connected to the water outlet (10) via a water fill channel (19) in which a water fill valve (20) allowing to control the water supply to the water reservoir (13) is provided; (d) the water reservoir is equipped with a water level sensor (17) that transmits a sensor signal to the control unit in order to close the water fill valve when the water level has reached the height of the water level sensor (17);
In what follows the Board discusses whether the amendment that led to this claim complies with the requirements of A 123(2): *** Translation of the German original *** Preamble
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T 2311/10 – Shaking Pillars
K’s Law – The ebook
[2.1] In the preamble of present claim 1 the at least one mist outlet channel of the mist generator mentioned in the original claim 1 was specified so that it leads to a portion of the water outlet rather than to the outside atmosphere. It goes without saying that the portion of the water outlet of the sanitary fitting is surrounded by the outside atmosphere, too. Moreover, the preamble of claim 1 now describes a water reservoir of the controllable mist generator that is connected to the water outlet. The above amendments are based on original claims 1, 2, and 4 and, therefore, are considered to be admissible. Characterising part [2.2] The newly added feature of claim 1 essentially describes a water fill channel with a water fill valve provided between the water outlet and the water reservoir, as well as a water level sensor in the water reservoir for closing the water fill valve. The ED had decided that the added features were only found in the detailed description of the single embodiment, but only in combination with a great number of other features and that, therefore, this addition led to an intermediate generalisation of the embodiment. This was not admissible under A 123(2) because at least conditions II and III of the essentiality test, i.e. that the missing further features were not, as such, indispensable for the function of the invention in the light of the technical problem they served to solve, and that the replacement and removal of these features did not require any real modification of other features [to compensate for the change], were not fulfilled. Assessment of an intermediate generalisation [2.3] The expression “intermediate generalisation” (“Zwischenverallge-meinerung“) expresses the fact that the subject-matter of the amendment, although added to the claim features in order to limit the scope [of the claim], corresponds to a generalisation of a specific embodiment that had been disclosed in the original [application]. [2.4] As any admissible amendment, the assessment of intermediate generalisations is governed by the principle that the skilled person must be able to directly and unambiguously derive their subject-matter from the content of the application as filed as a whole (claims, description, drawings), taking into account information that the skilled person would find to be comprised in the content at the date of filing of the application (implicit disclosure). Therefore, it is normally not possible to extract one or several single features of a disclosed embodiment from their context in the disclosure and to transform them into a claim. However, such a claim is admissible when said features unquestionably constitute a distinct functional unit in the embodiment. The Board follows the constant case law of the Boards of appeal according to which it has to be apparent without doubt to the skilled person considering the disclosure of the original application that there is no close functional or structural relationship between the extracted features and the features which had originally been disclosed in combination for that embodiment (see Case Law, 6th edition, III.A.2) The “essentiality test” [2.5] When establishing the so-called “essentiality test”, T 331/87 [4-6] examined the omission of an “inessential” feature from an independent claim that had been filed with the original application, in particular considering (condition II – second point of the test) whether the problem solving effect of the claimed invention with respect to the prior art disclosed in the original application could still be obtained without that feature (see T 331/87 [7.1-4]). As what matters in T 331/87 is the disclosure in the application, the problem mentioned in condition II can only refer to the problem disclosed in the application (corresponding to the function or effect of the feature as disclosed or apparent to the skilled person) but not a newly formulated problem in view of any prior art. [2.6] As this is not always observed (also in the present case), there is a considerable risk of misapplying condition II of the test. The Board is of the opinion that this wrong application is also favoured by the fact that point 2 of the headnote of T 331/87, when isolated from the rest of the decision, apparently does not exclude using a problem that is new and formulated in view of prior art that has been cited at a later stage as a criterion for the way in which the invention is effective, and, therefore, for the “essentiality” of a feature that is to be deleted. When the objective problem is modified after the filing of the application, and in particular when it is considerably reformulated in view of newly cited evidence, then the “essentiality” of a feature according to condition II – and thus the result of the essentiality test – varies considerably in the course of the proceedings.
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T 2311/10 – Shaking Pillars
K’s Law – The ebook
This it was caused the difficulties both the [applicant] […] and the ED […] faced when trying to reasonably apply condition II of the test, based on the headnote of T 331/87 only. [2.7] But even when condition II is correctly applied, the Board has considerable doubts, at least regarding this aspect of the essentiality test, whether, in view of the narrow interpretation of the [expression] “same invention” according to the more recent case law of the Enlarged Board of appeal concerning the reasonable exercise of the priority right, such an approach (Denkansatz) can still serve as test criterion for the required assessment of the original disclosure of an amendment required under A 123(2) – which obeys the same principles as the right to priority; see G 2/98 [headnote, summary of the proceedings, point [9] of the reasons] and G 1/03 and G 2/03 [4]. The Board is of the opinion that it follows from G 2/98 that what counts for the assessment of the question whether a technical feature of an independent claim can be omitted is whether the skilled person can directly and unambiguously derive the corresponding teaching from the context of the original disclosure, in contrast to the essentiality test under T 331/87 which assesses the omission of an “inessential” feature – contrary to the principle of legal security developed in G 2/98 – according to whether it is related to the function or effect of the invention with respect to the prior art or not. [2.8] For the sake of completeness, the Board notes that for condition III of the essentiality test (cf. T 331/87 [3]) according to which the replacement or removal of a claim feature is admissible provided that it does not require any real modification of other features [to compensate for the change], there is also a risk that it is applied in a wrong way (as in the present case […]) because it is not clear what is meant by “no real modification”. If what is meant is (as understood by the ED in the present case) that there is no modification whatsoever of any other feature of the embodiment, than the condition is trivial and almost never fulfilled (for instance, when a different water level sensor is used […]). [2.9] Therefore, contrary to the opinion of the ED (and of the [applicant]), the Board considers the “three point or essentiality test” (cf. the Guidelines H-V 3.1 and H-V 3.2.1 (June 2012 edition)) to be of little help or even misleading in the present case for assessing whether the intermediate generalisation taken from the description for limiting [the claim] in view of the prior art that has been cited at a later stage is admissible. By doing so, the Board follows […] the basic approach concerning the application of the essentiality test in view of G 2/98 exposed in T 910/03 [3.4-5;6]. Assessment of the features newly added to the characterising portion [2.10] According to […] the impugned decision of the ED the reason for the refusal of the then auxiliary request was to be found in the fact that the following features that were “structurally related to the incorporated features” had not been incorporated: (a) There is an ultrasonic mist generator allowing to generate mist from water in the water reservoir. (b) The mist generator comprises a mist channelling funnel (Nebelkanaltrichter), and the water level sensor is provided at the height of the bottom edge of the mist channelling funnel (c) The water reservoir comprises a water overflow pipe (Wasserüberlauf) at the height of the water level sensor. As the present main request corresponds to the then auxiliary request, it has to be decided whether the application as filed offers a basis for incorporating the characterising features without the above mentioned features (a) to (c). [2.11] As explained by the [applicant], in present claim 1 the water reservoir is not filled directly via the water supply but via the water outlet of the sanitary fitting. The Board is of the opinion that the skilled person would unambiguously derive from the originally disclosed embodiment according to claim 4 […] that the water from the “water reservoir of the mist generator” is used for generating the mist, independently of which mist generator is used. It is only in a preferential embodiment that the mist is generated from water by means of an ultrasonic mist generator […]. Thus, in contrast to the opinion of the ED, in the exemplary embodiment of Figures 1 to 3 the mist can by generated in ways that differ from the “ultrasonic mist generator 14” […]. The Board is not aware of any functional or structural, let alone inseparable, relationship between the use of an ultrasonic mist generator in the water reservoir of the mist generator and the control of the water supply to the water reservoir via a water fill channel by means of a water fill valve […]. Also, providing a “mist channelling funnel 15” above the “ultrasonic mist generator 15” is, as argued by the [applicant], a merely optional measure
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T 2311/10 – Shaking Pillars
K’s Law – The ebook
and is not related in any way that is originally disclosed to the control of the water supply from the water outlet to the water reservoir of the mist generator […]. [2.12] Moreover, following the argumentation of the [applicant], the Board is of the opinion that the indication in claim 1, according to which the water level sensor in the water reservoir closes the controlled water fill valve “when the water level has reached the height of the water level sensor”, unambiguously describes the direct determination of the water level with respect to the sensor level and cannot, as argued by the ED […] encompass an indirect measurement of the water level via the water pressure above a pressure sensor provided at the bottom of the reservoir […]. The Board is not aware of any relationship between the control of the water supply to the water reservoir and the […] position of the water level sensor at the height of the bottom edge of the mist channelling funnel (which is not required), in view of the sensor function […]. Finally, the skilled person, using his technical knowledge, undoubtedly learns from the original documents that the disclosed “water overflow pipe 18” constitutes only an additional, and therefore advantageous, security measure in case the control of the filling of the water reservoir allowing to close the water fill valve in order to avoid an overflow of the reservoir fails; it is only when the water level sensor fails that the overflow occurs via an opening towards the outlet of the sanitary fitting […]. Therefore, the additional “water overflow pipe 18” is only a specific embodiment for the functioning of the water level sensor (and, as a consequence, for the control of the water supply to the reservoir) and thus can, in the opinion of the Board, be omitted. Summary [2.13] As a consequence, the Board reaches the conclusion that the skilled person directly and unambiguously derives the features in the characterising part of present claim 1 […] that have been taken from the description from the original disclosure of the application as a whole. Thus the subject-matter or claim 1 fulfils the requirements of A 123(2). Very interesting – I only regret that the Board did not discuss T 404/03, where Board 3.5.01 expressed doubts concerning the argumentation of T 910/03 (issued by Board 3.2.5). Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1994/11 – A Quick Shot
K’s Law – The ebook
T 1994/11 – A Quick Shot 28 Nov 2012
This is an appeal against the decision of the Examining Division (ED) to refuse the application under consideration for lack of novelty. The notice of appeal was received on August 25, 2011. On September 12, 2011 the ED found that the appeal was not to be rectified and that the case was to be referred without delay to the Boards of Appeal. With a letter of October 24, 2011 the appellant filed a statement setting out the grounds of appeal together with sets of claims according to a new main request and new auxiliary requests 1 and 2. [1] A 108 requires inter alia that a notice of appeal must be filed within two months after the date of notification of the decision and that a written statement setting out the grounds of appeal must be filed within four months after that date. In accordance with A 109(1), first sentence, if an ED whose decision is contested considers the appeal to be admissible and well founded it shall rectify its decision. It is evident that receipt of the statement of grounds of appeal is a prerequisite for an ED when applying the provisions of A 109(1), first sentence, to consider whether the appeal is well founded. [2] In the present case, the ED issued the order to refuse interlocutory revision and to refer the case to the Boards of Appeal before any statement setting out the grounds of appeal was filed and before the expiry of the four month time limit for filing the statement of grounds. By refusing interlocutory revision before the statement of grounds of appeal was filed together with amended claims according to a new main request and a new auxiliary request 1 and 2, the ED could not have considered whether these amended claims overcame the reasons for refusal before ordering that the case be referred to the Boards of Appeal. [3] It is customary that an appealing party takes advantage of the two time limits provided for in A 108, first and third sentences respectively, by firstly filing a notice of appeal and later filing the statement of grounds and it has the right to fully exhaust those time limits. It is incumbent on the ED to wait until the filing of the full content of the statement of grounds or the expiry of the four month time limit, whichever comes first. In the present case the issuance of the order to refuse interlocutory revision before receipt of the statement of grounds deprived the appellant of the possibility of a fore-shortened appeal procedure provided by A 109 and amounts to a substantial procedural violation, see T 41/97 [5]. [4] However, despite the presence of a substantial procedural violation the board considers that it would not be equitable to reimburse the appeal fee under R 103(1)(a). The established procedural violation cannot have been causative in filing the appeal since it occurred after the notice of appeal had been filed. [5] In accordance with Article 11 RPBA (OJ EPO 2007, 536 to 547) if fundamental deficiencies are apparent in the first instance proceedings a case is to be remitted to the department of first instance unless special reasons present themselves for doing otherwise. In the board’s view, no such special reasons are apparent and remittal is thus appropriate. Moreover, the appellant explicitly consented to the remittal to the department of the first instance. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 905/09 – Barbie Is Lonely, Buy Me A Ken
K’s Law – The ebook
T 905/09 – Barbie Is Lonely, Buy Me A Ken 27 Nov 2012
Sometimes you get the impression that the members of the Board must have had a good laugh ... The appeal was filed after the Examining Division had refused the application under consideration. Claim 1 of the main request before the Board read: An electronic mail communication method performed by a transmission control apparatus (30), the method comprising the steps of: receiving a signal from a mobile telephone defining an ID code assigned to an anthropomorphized object comprising a stuffed animal toy and an electronic mail address for an owner of the anthropomorphized object, the ID code having been input by the owner via a display of the mobile telephone; and electronically generating a mail text related to said ID code and sending said mail text as an electronic mail purporting to be from the stuffed animal toy to the owner, wherein the mail text comprises a conversational text expressing feelings including characters, signs, graphics, voices or sounds. The Board found this claim to lack inventive step: [1] The invention is concerned with generating and sending an electronic mail (email) to the owner of a so-called “anthropomorphized” object, especially a stuffed animal toy, so that the email is perceived as having been sent by the object. To enable this the user enters - via a mobile telephone - an ID code “associated with” and thereby identifying the object of interest and an email address to which the email should be sent. According to the main request, the email “purport[s] to be from the stuffed animal toy”, is “related to said ID code” and comprises “conversational text expressing feelings”. According to the auxiliary request, the email is generated based on “attribute information” for the object and for its owner, stored in respective tables, on predefined texts also stored in a table, and on grammar rules. […] Inventive step [4] It is undisputed that the claimed invention consists of a mixture of so-called technical and non-technical features but has, as a whole, technical character, for instance by virtue of requiring an email to be sent. For this situation, it is established jurisprudence of the boards of appeal that inventive step has to be assessed by taking account of all those, but only those features which contribute to the technical character of the invention, and that an aim in a non-technical field which the claimed invention aims to achieve may appear in the formulation of the technical problem to be solved according to the problem-solution-approach (see esp. T 641/00 [headnotes]). [5] Therefore, before the inventive merit of the claimed invention can be assessed, it must be determined in which technical field the invention makes a contribution and which technical problem the claimed invention solves. Technical field [6] The appellant argues that the invention belongs to the field of stuffed animal toys or dolls. In this field, “talking dolls” are known which exhibit enhanced anthropomorphism over normal dolls by communicating electronically with their owners. Assessment of the inventive step of the invention should, so the appellant, start from such a doll and appreciate that the invention enhances its anthropomorphism further with technical means, and with a limited increase in development and production cost […]. To solve this problem, the skilled person in this field would modify the sound clips the doll is able to play back, for example by recording new sentences which purport to express the doll’s feelings. However, it would not be obvious for the skilled person to switch to an entirely different communication medium such as email. [7] The board does not follow this argument.
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T 905/09 – Barbie Is Lonely, Buy Me A Ken
K’s Law – The ebook
[7.1] The invention relates to the stuffed animal toy only by way of the ID code identifying it and the content of the generated email which “purport[s] to be from” the toy and to express its “feelings”. [7.2] According to the claims, the ID code is “assigned to” the toy in an unspecified way. The description discloses that the ID code may be printed on the back of the price tag […]. Otherwise, the toy need not be modified at all to enable the claimed invention: The registration of the ID code is done by the owner, the email is generated in the “transmission control apparatus”, and the illusion that the email is from the toy is created in the mind of the receiver of the email […]. [7.3] The board agrees with the appellant that talking dolls create an illusion, too, and that the owner of such a doll must also be willing to accept the sound clips as being spoken by the doll (or, in the case of small children, unable to notice that they are not). However, a talking doll requires the provision of constructional elements such as a recording device, a loudspeaker, batteries, and, possibly, sensors or timers. [7.4] In contrast, the claimed invention applies to any given stuffed animal toy alike and it does not change the toy’s design or production at all. The development and production departments need not even be aware of the claimed registration or the sent emails. [7.5] The board therefore rejects the appellant’s assertion that the invention makes a contribution in the field of physical toys and dolls. Technical and non-technical features [8] In the board’s view, the following features do not constitute or imply any technical limitations of the claimed subject matter. [8.1] It is of no technical relevance for the invention whether the email address belongs to the owner of the toy or any other person. [8.2] The ID code serves to select and/or generate the text to be sent to the user. Beyond that, it does not have any impact on the claimed invention that the ID code is “assigned to” a specific stuffed animal toy. As already argued above, the invention does not depend on the nature of the object. Hence, it is not a technical feature of the claim that the ID code is “assigned to” a physical toy. [8.3] If the alleged effect of enhanced anthropomorphism is actually achieved by the invention, then due to the fact that the generated email “purports to be from the stuffed animal toy”, is held in a conversation tone and expresses “feelings”. The extent to which this effect is achieved depends, on the one hand, on the receiver’s mental disposition to accept the illusion and, on the other hand, on the specific content of the email, i.e. which words are used. A complete loss of content may render the communication meaningless for the receiver but does not affect the technical working of the claimed invention. Thus, the content of the email constitutes mere “cognitive data” in the terms of T 1194/97 [3.3] and therefore does not contribute to the technical character of the claimed invention. Technical problem [9] Accordingly, the board considers as the objective technical problem solved by the claimed invention how to communicate to the owner of a given stuffed animal toy customized information purporting to come from the toy and express its feelings. It is to be noted that this is not a problem of improving a toy in any way, so that the relevant skilled person is not a toy designer. Rather he or she is a communication engineer. [9.1] In the board’s view, the motivation for addressing this problem may be a marketing idea for affective advertising (“Your cuddly bear is cold, get me a jacket.” or “Barbie is lonely, buy me a Ken.”). The description in fact discloses the option of using the invention for delivering news or advertisements to the users who, due to the conversational and emotional tone of the text, “can accept” them “without feeling any mental resistance” […]. [9.2] The appellant argues that this perspective takes a distorted view on the invention because it must already have been made before the marketing department can “hijack” it for targeted advertising. [9.3] The board disagrees with this argument.
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T 905/09 – Barbie Is Lonely, Buy Me A Ken
K’s Law – The ebook
[9.3.1] First, marketing is to a large degree a matter of psychology so that marketing experts can realistically be assumed to be familiar with affective concepts. Moreover, the idea of using conversational tone and emotionalised content for targeted advertisement, for which customers may have to register, is a rather wellknown marketing scheme (imagine, say, a car dealer offering a new set of summer tyres at the first signs of spring). Considering the invention as the implementation of a given marketing concept is thus, in the board’s view, a realistic perspective, beyond the fact that it is consistent with the description. [9.3.2] Second, and more importantly, the reference to marketing only serves to illustrate that the above objective technical problem is not a contrived one but can reasonably be assumed to arise. The board concedes that different perspectives could be taken on the invention, for example as a means for parents trying to increase the emotional bonds between their child and its teddy bear, but holds that the technical problem solved by the invention would remain the same. Main request [10] The skilled person, in order to solve the above problem by implementing the given communication task, would have to choose a means of communication with the owners. A priori, several options exist, such as telephone, telefax, WWW, or email. All of them were well-established at the priority date so that the skilled person would have made his choice according to circumstances and after weighing the well-known advantages and disadvantages of these communication means against each other. Specifically, the choice of email was obvious at the time. [10.1] Evidently, for email communication to be possible the email address of an owner must be made available to the information provider. Likewise, it appears to be a matter of necessity that the object of interest – the stuffed animal toy – must be identified to the information provider so that the information can be customized to the object. [10.2] The skilled person would also have to decide how that information should be made available. Again various alternatives exist, including the ones mentioned above, all of which were equally well-established and thus equally obvious. [10.3] The board considers that it was commonly known at the priority date that Internet users would register their interest to receive information – such as electronic newsletters – via a web browser. Document D1 reports that by its filing date in June 1999 it was known to use the wireless application protocol WAP to browse the Internet with a mobile phone […]. In the board’s view the desire to access the Internet via a mobile phone was common at the priority date of the present application and that also the use of WAP to achieve it was commonly known at the time. The use of a mobile telephone to register the relevant data would thus be an option that the skilled person would consider as a matter of course. [10.4] Finally, the skilled person would have to obtain the message text to be sent. It follows directly from the problem that the text should relate to the registered toy and it would be obvious, for instance, to select the appropriate text for a given toy, identified by its ID code, from a list of predefined such texts, thereby “electronically generating a mail text” according to claims 1 and 4 of the main request. [10.5] In summary, the board concludes that the skilled person would have to make only routine choices – selecting technical means for the user to register the relevant data and for the information provider to obtain and communicate the information of interest – so as to arrive at the subject matter of claims 1 and 4 of the main request which, hence, lacks an inventive step over common knowledge in the art, A 56 EPC 1973. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2402/10 – Seeing Double
K’s Law – The ebook
T 2402/10 – Seeing Double 26 Nov 2012
When dealing with this appeal against the revocation of the opposed patent, the Board had to deal with the question of double patenting and offers us an overview over the relevant case law. [8] Although not being a ground for opposition, the [opponent] objected to double patenting, since claim 1 of the patent-in-suit was amended during the opposition/appeal proceedings in such a matter that its scope was fully encompassed by the scope of the claims of the patent EP 0 364 417 B granted from the grandparent application. The subject-matter of claim 1 of the patent-in-suit was not substantially different from the subject-matter of the combination of claims 1, 9 and 14 of EP 0 364 417 B for the contracting state AT, BE, CH, DE, FR, GB, IT, LI, LU, NL, SE or of the combination of claims 1 and 15 for the contracting states ES and GR. In G 1/05 and G 1/06 [13.4], the Enlarged Board of Appeal accepted that a principle of prohibition of double patenting existed on the basis that an applicant had no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter. This requirement of “same subject-matter” was followed in the established case law of the technical boards of appeal regarding the question of “double patenting” (see e.g. T 1391/07, [2.5]; T 877/06 [5]; T 1708/06 [6]; T 469/03 [4.2]). In the present case, claim 1 of the patent-in-suit requires a treatment in a human being and a dose of 0.1 to 30 micrograms of 13,14-dihydro-17-phenyl-18,19,20-trinor-PGF2alpha-isopropyl ester in 10 to 50 microlitres of the composition. These technical features are not required by any claim of EP 0 364 417 B. It follows that due to these technical distinguishing features the subject-matter of claim 1 of the patent-in-suit is not the same as that of claim 14 of EP 0 364 417 B. Since EP 0 364 417 B and the patent in suit claim different subject-matter, the question of double patenting cannot arise. [The opponent] nevertheless referred to the headnote of T 307/03 which stipulates that a double patenting objection can also be raised where subject-matter of the granted claim is encompassed by the subject-matter of the claim later put forward. The Board, however, sees no reason to depart from the mandatory requirement of “same subject-matter” invoked in the decisions G 1/05 and G 1/06 and in the established case law in relation with double patenting to claims on the mere ground that the subject-matter of the claim later put forward is already encompassed in a granted claim. This argument of the [opponent] must thus be rejected. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1829/10 – Just Wanna Be Heard
K’s Law – The ebook
T 1829/10 – Just Wanna Be Heard 24 Nov 2012
In this case the Examining Division (ED) refused an application without oral proceedings (OPs) although the response of the applicant to the first notification included the following paragraph:
which could be translated as follows: “In case there are further fundamental objections regarding patentability, an interview or a hearing is considered appropriate. Minor amendments that are still considered appropriate could also be discussed by phone with the undersigned.” As you might have expected, the Board came to the conclusion the ED should have granted OPs. *** Translation of the German original *** [2.1] The question to be answered here is whether the above […] cited final paragraph of the letter of the appellant dated January 27; 2010, contains a request for OPs within the meaning of A 116. The Board is of the opinion that this paragraph deals with three aspects, i.e. an interview, a hearing (Anhörung), and a phone call. [2.2] According to the established case law of the Boards of appeal of the EPO, a request for an “interview”, i.e. a personal discussion, or for a phone call, is not a request for OPs. If such a discussion (Rücksprache) is proposed or requested by the applicant, it is within the discretion of the Examiner or the ED to grant the request or not to grant it (see also the Guidelines, C-VI 6.2 in their version of April 2010). [2.3] A request for OPs is something fundamentally different. When OPs are requested by a party to the proceedings, then, pursuant to A 116(1), there have to be OPs before the Office can take a decision. This provision is mandatory and does not allow for any discretion, in contrast to the possibility of a discussion, which is not explicitly mentioned in the EPC. [2.4] In the present case the applicant used the term “hearing” (“Anhörung”). As correctly explained in the impugned decision […] this expression is equivalent to “OPs” within the meaning of A 116(1). However, in this context the applicant did not explicitly use the expression “request”. It stated that a “hearing was considered appropriate” if there were “further fundamental objections regarding patentability”. However, the Board is of the opinion that when this wording is read in a fair and understanding manner, it can only mean that the applicant wanted to be heard again before the ED took a decision and, therefore, desired, and thus requested, OPs. Whether the term “request” is used or not is irrelevant in this context (see also T 263/91 [2, 3rd paragraph]). The only thing that matters is the intention of the applicant, which the Board considers to be clear and unambiguous in the present case. If the ED had had any doubt whatsoever in this respect, it would have had to contact the applicant to clarify whether OPs pursuant to A 116(1) had indeed been requested or not, because this is an inalienable right of parties to proceedings before the EPO (see T 668/89 [3]; T 95/04 [3]). In contrast to a request for a discussion, the expression “appropriate” (sachdienlich) used by the applicant implies, in a request for OPs, that the ED has no discretion not to grant it. [2.5] Decision T 263/91 cited in the impugned decision to refuse the application is not applicable to the present case because in the case [underlying the decision] the party only reserved the right to request OPs. In other words, the party only expressed that, for the time being, it did not yet file a request for OPs but might want to do so later on (see [2, 3rd paragraph] of the reasons). The situation to be assessed here rather compares to the situation underlying decision T 283/88 […] where the applicant suggested or proposed OPs, which the competent Board considered to constitute a request for OPs (see [4] of the reasons). 863 | 3398
T 1829/10 – Just Wanna Be Heard
K’s Law – The ebook
[2.6] Therefore, in the present case the ED was not entitled to take a decision refusing the application without summoning to the requested OPs beforehand. This is a violation of the inalienable right to OPs enshrined in A 116(1). Thus the impugned decision is void and has to be set aside. [2.7] The right to OPs under A 116(1) is an important and essential part of proceedings before the departments of the EPO. A violation of this right, therefore, always constitutes a substantial procedural violation within the meaning of R 103(1)(a). The ED has taken a decision immediately following the applicant’s response to the (first and only) communication of the ED and, when doing so, has ignored the discernable intention of the applicant or at least has not tried to clarify the latter (cf. T 283/88 [4]). This is a fundamental procedural violation justifying the reimbursement of the appeal fee under R 103(1)(a). Pursuant to Article 11 RPBA, in such a situation the case has to be remitted to the first instance, and this is also what the applicant has explicitly requested. […] If you are an attorney and if you want to avoid a useless appeal, you better formulate your request for OPs in terms that are unambiguous, even for an Examiner who has a bad day. In my opinion, wording the request as above is inviting trouble. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2133/10 – Law And Order
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T 2133/10 – Law And Order 23 Nov 2012
Both the patent proprietor and the opponent appealed against the maintenance of the opposed patent in amended form. The patent proprietor, an Italian company, filed the notice of appeal in Italian. The same fax also contained an English translation. The opponent argued that the appeal of the patent proprietor was inadmissible because the English text had been received at the Office before the Italian text. As a matter of fact, the fax shows that the page containing the notice of appeal in Italian was received at 18:26:21 whereas the Italian version was received at 18:26:37, i.e. 16 seconds later. The Board won’t have it: [1.2] The opponent (appellant 1) considered that the requirements of R 6(3) concerning the reduction of the appeal fee were not met, that the paid amount was not correct and that therefore, the appeal lodged by the patentee was to be rejected as inadmissible. He referred to the decision of the Enlarged Board of Appeal (EBA) G 6/91 which states that “the persons referred to in A 14(2) are entitled to a fee reduction if they file the essential item of the first act in filing, examination or appeal proceedings in an official language of the State concerned other than English, French or German, and supply the necessary translation no earlier than simultaneously”. The opponent noted that in the present case, the fax transmission of the English translation of the notice of appeal was completed before that of the original Italian notice of appeal and that therefore the English translation has been supplied earlier rather than together with regard to the Italian text. R 2 and Article 3 of the Decision of the President date 12 July 2007 concerning the filing of patent applications and other documents by facsimile (Special edition No.3, OJ EPO 2007, A 3) read in conjunction with R 99(3) and R 50 allow for the filing of the notice of appeal by facsimile. As set out in Article 5 of this decision documents filed by facsimile are accorded a single filing date. This is in particular to determine whether time limits, which are calculated in terms of days as smallest time unit, have been met. The implication of a single filing date is that a filing of documents by facsimile constitutes a single filing act, so that a facsimile filing for all intents and purposes can be considered equivalent to a filing by other means allowed under R 2(1). With one exception (a fax transmission extending beyond midnight), all documents received in a single fax transmission are thus considered to have been filed together on the same date and form part of a single filing. Turning to G 6/91 cited by the appellant-opponent, this decision by the EBA considered the questions concerning inter alia filing requirements for fee reduction under R 6(3) arising in a specific case in which an appeal was filed in the form of a letter in Dutch accompanied by a translation into English, cf. summary, point II. The EBA weighed various considerations of such a filing of original and translation “at the same time” (cf. reasons [7] and [10]), and held that, indeed, a party who wanted to benefit from a fee reduction under R 6(3) must file the translation “no earlier than simultaneously” with the original, reasons [12]. From a contextual reading of these separate parts the Board infers that the terms “at the same time” and “simultaneously” are used synonymously and are meant at least to cover the case at hand, i.e. where original and translation were filed together in a single filing on the same date. Thus, if original and translation are filed together fee reduction under R 6(3) should apply. In the present case, as is clear from the transmission date recorded at the top and bottom of each page, all of the pages of the facsimile, including the Italian text and its English translation, were received in a single fax transmission on a single date recorded as 2010-10-18. This is also not changed by the fact that the exact time of reception of the individual pages of the fax transmission was also recorded on each page, thus showing a few seconds of delay between the pages. Consequently, both the notice of appeal in Italian and in its English translation were filed together in a single filing act of single filing date. This situation is thus analogous to that underlying G 6/91 but for the means of filing. As it can be inferred from the above decision of the President that filing by facsimile is legally equivalent to filing by any other means, it follows that the present case should therefore also benefit from a fee reduction under R 6(3). The Board adds that a narrower reading of G 1/91 (sic) 865 | 3398
T 2133/10 – Law And Order
K’s Law – The ebook
which would differentiate between the different filing means would be alien to the broad principle of equity underlying that decision. That the translation is not expressly identified as such in immaterial. Its nature and function are immediately clear from the express mention of R 6(3) and Article 14(3) RRF (sic) and the corresponding 20% fee reduction. Thus, for example the Receiving Section had no problem in establishing that a fee reduction under R 6(3) was sought, and duly applied one. The Board concludes that the requirements for a fee reduction of R 6(3) were met and that therefore the correct fee has been paid. As otherwise all requirements of A 108 and R 99 have been met, the Board finds the proprietor’s appeal to be admissible. Nevertheless, the Board notes that the patentee could have made things clearer by identifying the English version of the notice of appeal as being a translation. Should you wish to download the whole decision, just click here. The file wrapper can be found here. NB: This decision has been presented on Le blog du droit européen des brevets (here).
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T 1265/10 – What They Really Want
K’s Law – The ebook
T 1265/10 – What They Really Want 22 Nov 2012
This is an appeal against the revocation of the opposed patent. it was limited to the issue of whether the opposition had been validly filed. The notice of opposition had been filed two days prior to the expiry of the opposition period, on 1 December 2004. The notice was accompanied by a number of documents, and on EPO Form 2300 (form for filing an opposition used by the opponent), section X (“payment of the opposition fee is made”) was crossed to indicate that a voucher for payment of fees and costs (EPO Form 1010) was enclosed. However, no payment voucher was found to be enclosed with the notice of opposition. The notice of opposition made no further mention of the payment of the opposition fee. The opponent’s representative who filed the opposition did, however, maintain a deposit account with the EPO, and had regularly used it for payments of fees. With a communication dated 15 April 2005, the opponent was informed that the opposition fee had not been paid. As a response thereto, the opponent on 26 April 2005 sent a copy of EPO Form 1010 with the patent number at issue, indicating payment of the opposition fee, and bearing the date of 1 December 2004. As a consequence, in a “brief communication” of 29 May 2006, the formalities officer of the Opposition Division (OD) expressed the opinion that the opposition fee was duly paid and the opposition filed within the opposition period. The patent proprietor pointed out that the opposition had not been validly filed. The Board disagreed: [7] According to A 99(1), an opposition is only validly filed once the opposition fee has been paid. In other words, there is no opposition unless the corresponding fee has been paid within the time limit for filing an opposition. [8] One recognised way of paying the opposition fee is payment from a deposit account with the EPO, see the “Arrangements for deposit accounts (ADA)” in the version published in Supplement to Official Journal No. 2/2002, 3-37, subsequently referred to as “Arrangements”. A deposit account set up for the purposes of fee payment to the EPO is an account the EPO can withdraw funds from when properly instructed, or automatically. As the automatic debiting procedure is not available for the payment of opposition fees (Point 4. of the Arrangements for automatic debiting procedure, Official Journal No. 2/2002, 11), the ordinary rules of the Arrangements apply. [8.1] The Arrangements require payment from a deposit account via a debit order. According to point 6.2, such a debit order must be made in writing, but is otherwise not subject to any formalities, in particular use of Debit Order Form 1010 is not required. For a valid debit order, point 6.3 of the Arrangements requires “the particulars necessary to identify the purpose of the payment and the number of the account which is to be debited.” The Arrangements do not indicate what should happen in case one of the formal requirements is not complied with. [8.2] In the case at issue, section X (“Payment of the opposition fee is made”) was crossed to indicate that a voucher for payment of fees and costs (EPO Form 1010) was enclosed. The notice of opposition itself did not mention any debit account number. The fact that box X of the opposition form was crossed is first of all a statement of fact, namely that the voucher for payment of fees and costs was enclosed. As such, this was incorrect - no such voucher has been found. But in addition to a statement of fact, it is also a declaration of intent, namely of the intention to pay the opposition fee. Declarations of intent, as is generally acknowledged, should be interpreted in order to ascertain the true intention of the declaring party rather than adhering to the literal meaning of the declaration. In this respect, both parties have pointed to a number of decisions by the Boards of Appeal that relate to such intentions to pay fees in connection with the debit order system. [9] In agreement with the [patent proprietor], and in conformity with the jurisprudence of the Boards of Appeal, it is necessary for a debit order to be unambiguously recognisable and show a clear and unambiguous intention to make a particular payment, cases T 170/83, T 152/82 and T 152/85. 867 | 3398
T 1265/10 – What They Really Want
K’s Law – The ebook
[10] The above-mentioned decision T 170/83 [6] provides an appropriate starting point in this respect. In its English translation, this paragraph reads as follows: “In the case of a debit account, the problem is not the existence or the timely deposit of money as such, but the timely authorisation of the EPO to dispose of such money for a specific purpose. By opening a deposit account, a special relationship between the EPO and the account holder is created. Accordingly, a necessary authorisation to dispose of such money can also be inferred from evaluating all the circumstances despite existing formal defects. Such an authorisation to be derived from the circumstances first of all requires that the authorising person (account holder) is known and clearly identifiable, and that certain fees that are due to the EPO for a known procedure are meant to be paid by the withdrawal from such account (and not in any other way). Both the account holder and his concrete intention must therefore be beyond doubt. In addition thereto, the circumstances must be such that the EPO can and must regard itself as authorised to effect withdrawal without further clarifications.” In case T 806/99, which the board regards as of particular relevance, it was held sufficient for an unequivocal intention to pay the opposition fee by making use of the debit order system that in the Opposition Form 1200 box X had been crossed, even if no corresponding debit order was accompanied by the opposition brief that had been filed on the last day of the opposition period. The board in point [4] of the reasons (in English translation) held as follows: “In the case at issue, the representative of the opponent in opposition form (EPO Form 2300) filed in due time, crossed the box in section X of the form that states “Payment of the opposition fee is made as indicated by the enclosed voucher for payment of fees and costs (EPO Form 1010).” This declaration satisfies at least the minimum formal requirements (written form, signature, indication as to the reasons for payment). The office also knows of the existence and the number of the deposit account of the representative. However, in view of the facts ascertained by the first instance, EPO Form 1010 was not filed together with the opposition and it is therefore necessary to examine whether the intention of the representative was clearly within the ambit of this declaration. In this respect, it is not sufficient to merely cling to the form of the declaration, but, on the contrary, according to the case law cited above, to equally consider the circumstances within which such declaration was made and in light of the circumstances known to the office at the time the declaration was received.” (points [4] and [4.1] of the reasons). The board subsequently considered the fact that the representative regularly paid via the debit account, that other forms of payment such as payment per cheque could be excluded due to the fact that point IX of the opposition form did not list that a cheque had been enclosed, that by the rather detailed opposition statement it could be excluded that the opposition was not meant seriously, and that thereby it could be clearly established that the representative had intended to pay the opposition fee by the EPO debiting his account for the correct amount. [11] The Board in the case at issue is faced with facts that are almost identical to those on which the decision T 806/99 was based, with the difference that the opposition was not filed on the last possible day of the opposition period, but two days prior to the expiry of such period. Nothing turns on this difference, however. [12] A number of decisions cited by the [patent proprietor] concern issues of insufficient payment, or of the Office’s obligation of notification in case of missing documents. In particular:
decision T 79/01 concerns a case where an appeal was deemed inadmissible due to the fact that less than half of the appeal fee had been paid. The case at issue, however, concerns the question whether or not there was a clear and unambiguous intention to pay the appeal fee. decision T 161/96 concerns the insufficient payment of an opposition fee. Here, the board held that an insufficient payment was entirely within the responsibility of the opponent, and the Office had no obligation to inform the opponent of such insufficient payment where the opposition was filed just at the end of the opposition period. Neither insufficient payment of the opposition fee, nor the Office’s obligations of notification are of any relevance in the case at issue. finally, decision J 13/91 also deals with the Office’s obligation of notification in cases of insufficient payment. Again, the case at issue does not give rise to any discussion on insufficient payment, but on the interpretation of the opponents intent to pay.
For the above reasons, the Board sees no discrepancy in case law on the issue of determining whether or not a fee has been paid in the context of making use of a deposit account, and consequently a referral to the Enlarged Board would not be justified. 868 | 3398
T 1265/10 – What They Really Want
K’s Law – The ebook
[13] The Board agrees with the [patent proprietor] that legal certainty is of high relevance when it comes to filing an opposition. It is not least for this reason that case law has consistently required the clear and unambiguous intention of authorising the Office to withdraw money from a deposit account in order to effect payment. Determining such intention requires proper considerations of all circumstances of the specific case. The relevant question to be asked is: “Did the opponent give the Office proper authorisation to withdraw the opposition fee from his deposit account?” The [patent proprietor] submits that the opponent did not. A mere cross in section X of Form 2300 is a far cry from a full authorisation to withdraw money from a deposit account. After all, section X refers to Form 1010, and this form allows for three modes of payment: By cheque, by bank transfer, or by debit from a deposit account. Without Form 1010, how could the Office know which form of payment the opponent had chosen? How could it be certain that it was the third alternative, namely, debit from a deposit account? These are the same questions the Board was faced with in decision T 806/99, and the answers are the same. There was no cheque enclosed, for which reason intention to pay by cheque could be excluded, and the opponent’s representative has regularly used payment via debit order, at least in appeal proceedings before this Board. The Board is aware that such interpretation favours representatives appearing regularly before the Office. But it appears legitimate to the Board to infer an intention, and thus an authorisation, from previous behaviour. [14] The [patent proprietor] argued that a situation could be conceived where an opponent wanted to file an opposition but deliberately refrained from paying the opposition fee. This would mean that the opponent in such case could not turn around and ask the Office for the opposition fee to be reimbursed had the Office on the basis of the notice of opposition withdrawn the opposition fee from the deposit account. In light of the detailed notice of opposition, the existing deposit account and the intention to file the debit order Form 1010, the Board would find a refund of the opposition fee in such case highly inappropriate, and does not see, either, why an opponent who in performing the above acts only wanted to file a “mock” opposition should be protected by way of having the opposition fee reimbursed. [15] The Board would also like to highlight that the issue is not whether the opponent intended to pay. An intention to pay is certainly not enough in order to actually effect payment. For example, it would not have been enough to indicate in the notice of opposition that payment would be made by cheque, and no corresponding cheque had been enclosed. But the statement “we want to pay” is different in its legal significance from the statement “we want to authorise the EPO to withdraw the fees for a determined purpose from our account” in that the intention to authorise already allows the Office to act on such authorisation and carry out such intent where the EPO under the deposit account system already holds such money in trust. [16] In the case at issue, the Board therefore recognises the clear intention of the opponent to settle the opposition fee by authorising the Office to withdraw the opposition fee for a specific case from an identifiable deposit account. This is sufficient for payment of the opposition fee. The opposition has therefore been validly filed, and the appeal that is limited to the issue of whether a valid opposition has been filed, must fail accordingly. As the OD was correct in its conclusion that the opposition fee had been validly paid, no procedural violation has occurred by opening opposition procedures. Therefore, also the request for reimbursement of the appeal fee must be dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 592/11 – Ten Days
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T 592/11 – Ten Days 21 Nov 2012
As a corrector I often see EQE candidates applying the 10-day-rule in a wrong way. It also happens in real life, as the present case shows. The story begins with the refusal of an application by a decision of the Examining Division dated October 27, 2010. When calculating the four-month time limit for filing the statement of grounds of appeal, the applicant did not take the 10-day-rule into account and entered February 27 as time limit into the monitoring system (rather than the real time limit, which was October 27 + 10 days = November 6 + 4 months = March 6, 2011 (Sunday) → March 7, 2012). The representative later found out that he could not keep that limit and asked the paralegal to re-calculate the time limit, taking into account the 10-day-rule. The paralegal added the 10 days at the end of the 4 months (October 27 + 4 months = February 27 + 10 days = March 9, 2011). The statement of grounds of appeal was filed by fax on March 9, 2011. On April 21, the applicant requested re-establishment. According to the applicant, both the paralegal and the representative were well aware of the 10-day-rule but had applied it wrongly. There were oral proceedings (OPs) before the Board on July 20, 2012. On July 23, 2012, the applicant made further written submissions. The Board found the request for re-establishment admissible and then dealt with its allowability: *** Translation of the German original *** The persons having to exercise all due care within the meaning of A 122(1) [5.1] The request is allowable if, in spite of all due care, the applicant was hindered from meeting the time limit for filing the statement of grounds of appeal, the non-observance of which had the direct consequence of losing the legal remedy of appeal. According to the general rules governing burden of proof, it is the applicant that bears the burden of proof for establishing that these conditions are fulfilled. When an applicant is represented by a professional representative, then, according to decision J 5/80 [headnote 1], the request for re-establishment cannot be acceded to unless the representative himself can show that he has taken the due care required of an applicant by A 122(1). In this respect the Board referred to the discussions at the Munich Diplomatic Conference, where such a duty was defined (see point [4] of the reasons and the evidence cited therein). The Conference decided not to introduce an explicit provision into the EPC. That the professional representative has to exercise all due care has been confirmed in the established case law of the Boards of appeal (see, for instance, T 1149/11 [4.2]). According to the Board in case T 832/99 [7.2] the same strict standards […] were to be applied to an clerk (technischer Sachbearbeiter) working in the private practice of the representative without being himself a professional representative. The clerk was not an auxiliary person that only carried out routine work such as noting time limits for the professional representative. Rather the clerk de facto did the work of a patent attorney. The present Board considers it to be correct to apply the same strict standards of due care that apply to an applicant, its professional representative or its attorney-at-law at least to a professional representative who is an employee of the applicant, its professional representative or its attorney-at-law, because the employee has the same knowledge as a professional representative and in practice exercises an activity that is structurally similar. The present situation is of this kind because the patent engineer acting under A 133(3) is a professional representative. I cannot help but find this paragraph weird. If a person is a professional representative, then his/her employment status simply should not matter. The rules have to be the same for in-house attorneys and professional representatives working in private practice. But perhaps I do not understand what the Board wanted to convey. 870 | 3398
T 592/11 – Ten Days
K’s Law – The ebook
Due care exercised by the patent engineer “General comments on due care” [5.2.1] In part VI.E.7.3 of the EPO publication “Case Law of the Boards of appeal of the EPO” (6 th edition, July 2010, hereinafter referred to as “Case Law”) a sub-item 7.3.1. “Introduction” and inter alia the following passages are found under the above header (the numerous references to appeal cases were omitted): In numerous decisions the boards have ruled on the “all due care required by the circumstances” issue. In considering it, the circumstances of each case must be looked at as a whole … The obligation to exercise due care must be considered in the light of the situation as it stood before the time limit expired. … For cases where the cause of non-compliance with a time limit involves some error in the carrying out of the party’s intention to comply with the time limit, the case law has established the criterion that due care is considered to have been taken if non-compliance with the time limit results either from exceptional circumstances or from an isolated mistake within a normally satisfactory monitoring system …. (emphasis in the original text) According to the case law, sudden serious illness is an example for exceptional circumstances (cf. the title of point 7.3.2 (b)). According to the established case law, at least after T 428/98, generally speaking, to satisfy the requirement of all due care, a system for monitoring time limits must not leave the monitoring of time-limit in the hands of just one person, but a general cross-check mechanism has to be incorporated into the chosen system for monitoring time limits, which mechanism is independent of the person responsible for the monitoring of time limits (see also decision T 1962/08). “Single mistake within an otherwise normally satisfactory monitoring system” (a) Duty of due care of the patent engineer as part of the monitoring system [5.2.2] When schematically applying the above passage “that due care is considered to have been taken if noncompliance with the time limit results … from an isolated mistake within a normally satisfactory monitoring system” and the case law according to which the system has to provide a cross-check mechanism in the above sense, one might be inclined to agree with the appellant and consider that all due care has been taken. In order to do so, one would have to consider that it has been proven that the cross-check mechanism used by the appellant did work well and that the erroneous calculations of time limits by Ms M. and by the patent engineer both qualified as isolated mistakes. Both checks carried out within the framework of the cross-check mechanism had exceptionally failed but as the system was in principle working well, this failure was to be excused – at least if both Ms M. and the patent engineer knew the relevant legal provisions. The patent department of the appellant is not a small unit where the cross-check mechanism may exceptionally be dispensed with (see T 428/98 [3.5]). The patent engineer has submitted during the OPs that the patent department of the appellant comprised more than 50 persons, among which more than 5 patent engineers, and has, therefore, agreed with the opinion of the Board in this respect. An obiter dictum in case T 1095/06 [15] pleads for a schematic application in the above sense. The Board stated that when there was a cross-check system that was independent of the professional representative concerned, as “recommended” by the case law of the Boards of appeal, and both the professional representative and the independent system failed, the possibility then would exist that the immediate cause for non-observance of the time limit was the unforeseeable failure of the independent system, and not lack of due care by the professional representative, so that re-establishment under A 122 was possible. However, such a schematic application cannot be allowed because, in the opinion, of the Board, it is not in line with the duty of a professional representative to take all due care when checking time limits. This follows from the following in-depth analysis of the case law. In J 5/80 the Board distinguished between the due care of a representative and the due care of an auxiliary person, in particular when time limits are to be checked. Headnotes 2 and 3 read (emphasis by the Board): 2. If the representative has entrusted to an assistant the performance of routine tasks such as typing dictated documents, posting letters and parcels and noting time limits the same strict
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standards of care are not expected of the assistant as are expected of the applicant or his representative. 3. A culpable error on the part of the assistant made in the course of carrying out routine tasks is not to be imputed to the representative if the latter has himself shown that he exercised the necessary due care in dealing with his assistant. In this respect, it is incumbent upon the representative to choose for the work a suitable person, properly instructed in the tasks to be performed, and to exercise reasonable supervision over the work. Even in above cited decision T 1095/06 [6] the Board refused to extend the case law regarding the due care to be taken by the representative and the auxiliary person to everything that can be described as an “isolated mistake”. A professional representative had to be presumed to be supervising his own work continuously. Thus the case law on “an isolated mistake in an otherwise satisfactory system” [for monitoring time limits] could not be relied on to ignore a failure of the professional representative himself, unless there were special circumstances [which made the failure compatible with taking all due care]. The present Board agrees with the opinion expressed in decision J 5/80 as summarised in the above headlines. In this respect the Board had referred to the Munich Diplomatic Conference of 1973. It was clear from the discussions that had taken place there that the Conference had no wish to rule out the possibility of excusing the negligence of an employee (see [5] and the references cited therein). In the reports on the Munich Diplomatic Conference cited by the Board, there is, however, no discussion of the possibility to excuse the applicant or its representative. The Board is of the opinion that this can only mean that for the participants to the Conference excusing a failure of the representative was out of the question. In the opinion of the present Board, the statements of the case law regarding cross-check systems where both checks were carried out by auxiliary persons, i.e. without consulting a professional representative, are also based on these strict requirements for the due care to be taken by the representative. Decision T 439/06 [10] (similar: T 1561/05 [2.2.2]; both decisions were confirmed in T 473/07 [3.2]) stated that the representative himself had to once more check the calculation, by the administrative department, of the time limit for filing a statement of grounds of appeal, which, when missed, would have severe legal consequences, i.e. carry out a third check, when the file was handed over to him for processing (zur Bearbeitung). The decision did not mention the possibility of excusing [the representative] who has not made such a check because of a single mistake, in analogy to the possibility of excusing auxiliary persons. The present Board does not see any reason why the same would not hold true in the case of a single deficient check. Accordingly, T 1561/05 [2.3] unambiguously states that the representative of the appellant “should have realised on March 1, 2006, that the time limit for filing a statement of grounds of appeal had already expired on that day” (in the same spirit, see T 719/03 [3.2.3]) If this requirement of a – correct – check by the representative himself is applied to a cross-check system where the cross-check is – as in the present case – carried out by an auxiliary person and a representative, then the standard of due care applicable to the representative in respect of the one of the two checks that he himself has to carry out cannot be less strict than in the case of a cross-check that is carried out only be auxiliary persons, where the representative has to carry out an additional third check. This means, at least in principle, that when the cross-check is carried out by himself and an auxiliary person, the representative is liable for his own failures regarding the check which he has performed and that there cannot be any possibility of excusing a single mistake in regard of his check. Accordingly, the Board cannot endorse the considerations presented as obiter dictum in T 1095/06 [15] according to which, when there was a cross-check system that was independent of the professional representative concerned, and both the professional representative and this system both failed, the possibility would exist that the immediate cause for non-observance of the time limit was the unforeseeable failure of the independent system, and not lack of due care by the professional representative, so that re-establishment under A 122 was possible. In this respect it is sufficient to note that the Board, when drawing this conclusion, blatantly contradicted its own considerations under point [6] where it declined to extend the case law regarding the due care to be taken by the representative and the auxiliary person to everything that could be described as an “isolated mistake”. (b) Conclusion in the present case As stated above, a single mistake of a professional representative cannot, as a rule, be excused. If at all there are mistakes that can be excused, the mistaken calculation of the time limit in the present case is not among them. This is because, in view of the importance of the time limit for filing the statement of grounds of appeal, which is excluded from re-establishment, the patent engineer and professional representative – who may be expected to 872 | 3398
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be aware of the provisions that are relevant for the calculation of time limits – had to concentrate on the calculation of the time limit and to check the correctness of the date that Ms M. had calculated. Therefore, it may remain unanswered whether on March 4, 2011, when Ms H. informed him of the expiration of the (miscalculated) time limit, he had the duty of checking again the correctness of this calculation. “Exceptional circumstances” [5.2.3] As already explained, according to the case law the requirement of due care can also be considered to have been fulfilled if non-compliance with the time limit results from exceptional circumstances. In its request for re-establishment of April 21, 2011, which comprised a statement of grounds, the appellant has not argued that there had been circumstances within the meaning of this case law. In its answer to the communication of the Board it has referred to decision T 832/99, which had been cited in the communication in regard of the due care to be taken by a patent engineer and representative, in order to draw a parallel between the miscalculation of the time limit for filing an appeal and the omission to record the time limit for filing an appeal in the computerised time limit management system after the time limit had been noted on the cover sheet of the impugned decision, due to an excess of work. The Board had not considered the omission of the recording to be a lack of due care excluding re-establishment. During the OPs the Board informed the patent engineer acting for the appellant that he – in contrast to T 832/99 – had not invoked an excess of work (Arbeitsüberlastung). The patent engineer responded that he had had to face a certain work load (Arbeitsbelastung), which had led him to hand over part of his files [to another person] a few weeks after the erroneous calculation of the time limit. However, during the month of February 2011 preceding the expiration of the time limit for filing the statement of grounds of appeal, there had not been a greater work load than during other months. There had not been a special physical or psychological situation on the day on which said time limit was calculated. After the OPs, which were held on July 20, 2012, and at the end of which the factual debate was closed, the appellant filed a written submission on July 23, 2012. In [this letter] it pointed out that there had been a considerable work load on the patent engineer over the period in which the erroneous calculation occurred. There might have been an excess of work on the day on which the erroneous calculation occurred, but it was not possible any more to reconstruct it. Moreover, the patent engineer had been annoyed with certain events, which might have led to psychological stress and contributed to the erroneous calculation. It is questionable whether the proof of a causal link between the missed time limit and exceptional circumstances could be successful if this submission was to be taken into account, but this question may remain unanswered. First of all the case law of the Boards of appeal on whether the work load is to be taken into account is not consistent. In case T 41/09 [3.1] it was decided that excessive work pressure is usually not recognised as an exceptional circumstance. It was part of the representative’s organisational duty in exercising all due care to make contingency arrangements to ensure that all professional duties were fulfilled and that office services were maintained. The same holds true for the case of sickness (see the decision T 1401/05 [16], taken by the Board in different composition). As already explained, a sudden severe sickness can justify re-establishment. However the explanations of the patent engineer do not mention a sudden excess of work. In view of the above case law there is considerable doubt as to whether an excess of work – or a significant work load – that does not appear suddenly, could in itself be sufficient, because it could suggest that there were organisational deficiencies in the company. Therefore, it is doubtful whether T 832/99 is to be followed in this respect. Anyhow, as the Board has explained in the OPs and before in its communication dated May 10, 2012, according to the case law of the Boards of appeal, explanations of and supplements to the facts (Sachverhalt) that were initially presented are (only) admissible after the expiration of the time limit under A 122(2) together with R 136(1) if they do not go beyond the framework of the submissions filed in due time, i.e. do not create a new basis for the original request for re-establishment, see J 5/94 [2.3]. This is because for such explanations and supplements the two-month time limit for providing reasons for the request for re-establishment would not have been met. However, the assertion of a great work load would be such a submission. The same holds true for the psychological stress that was only asserted in the letter dated July 23, 2012. Therefore, the explanations regarding the work load that were made during the OPs are to be dismissed as inadmissible. The same reasoning would apply to the explanations contained in the letter dated July 23, 2012 873 | 3398
T 592/11 – Ten Days
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under the heading “Concerning the work load of the patent engineer” as well as the corresponding letter dated March 28, 2011 and the declaration in lieu of oath. Therefore, there is no reason to re-open the factual debate and to admit this submission into the proceedings. The fact that the time limit was missed by two days only [5.2.4] In its reasons statement of grounds for the request for re-establishment the appellant has invoked the fact that the time limit was missed by two days only. In this respect the Board reaffirms its statement made in the communication dated May 10, 2012 […]: “The number of days by which a time limit was missed does not play any role whatsoever when the question of whether all due care required under A 122(1) EPC 1973 … is to be answered because this provision does not leave any room for applying the principle of proportionality in this respect. The Board (in different composition) has justified this in detail in its decision T 1465/07 [16]. In this context the Board also refers to the case law of the European Court of Justice. In its decision in case C 426/10 the Court has stated that the conclusion was not affected by the appellant’s reliance on the principle of proportionality. As a matter of fact, “the strict application of procedural rules serves the requirements of legal certainty and the need to avoid any discrimination or arbitrary treatment in the administration of justice” (marginal number 55). In case decision J 8/09 [4.5] was to be understood to the effect that the number of days by which the time limit was exceeded – in line with earlier decisions of the Legal Board of appeal – could still play a role in borderline cases, using the principle of proportionality for supporting other grounds, then the Board most definitely will not endorse this opinion. Apart from that, the Board does not consider that the present case is a borderline case.” The appellant did not challenge the explanations of the Board and of the European Court of Justice to which it referred. In a recent decision the Legal Board of appeal has expressed a similar opinion (cf. J 13/11 [12]). However, the appellant was of the opinion that the time limit was actually exceeded by two days, which did not have any practical effect on legal security: even on a hardcopy from the European Patent Register of April 21, 2011, bearing the reference “Appeal filed”, there was no hint to the public that the appeal was to be dismissed as inadmissible. This was only visible from the documents, i.e. the electronic file. However, it could take two days until the documents were available in the electronic file, and in the present case the time limit was exceeded by only two days. Thus the request for re-establishment was to be granted. The Board cannot endorse this reasoning. As stated in T 1465/07 [16] time limits serve the purpose of ensuring legal certainty and the proper administration of justice by avoiding any discrimination or arbitrary treatment. If the number of days by which a time limit was exceeded could be considered to be a “circumstance” within the meaning of A 122(1), then the general public could not be sure which number of days could be excused in view of the weight of the other circumstances. This would lead to the result that the actual expiration of the time limit could not be determined in an unambiguous way and that from case to case different numbers of days by which the time limit was exceeded could be accepted. This would amout to a violation of legal certainty and the proper administration of justice by discrimination or arbitrary treatment. The question regarding the delay and the manner in which the public becomes aware of the fact that the time limit has been exceeded has no influence on this [conclusion]. The corresponding explanations of the appellant are of no avail. Therefore, there is no reason to re-open the factual debate and to admit the explanations contained in the written submission of July 23, 2012 under the header “Concerning the Register entry of April 21, 2011” and the enclosed extract from the Register into the proceedings. Result [5.3] The patent engineer acting for the applicant has not taken all due care required under A 122(1). As shown above, there was no isolated mistake within a normally satisfactory monitoring system nor have there been exceptional circumstances. Thus the request for re-establishment pursuant to A 122(2), second sentence has to be dismissed. Exclusion of a declaration in lieu of oath from file inspection
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[6] The appellant requested that the declaration in lieu of oath filed together with the written submission dated July 23, 2012, be excluded from file inspection pursuant to R 144 (d) and the “Decision of the President” dated September 7, 2011, number 2 a. According to R 144 (d) together with Article 1(2)(a) of the Decision of the President dated 12 July 2007 concerning documents excluded from file inspection (OJ EPO, Special edition 3/2007, p. 125, identical to the Decision of the President dated 7 September 2001 (OJ EPO 2001, p. 458) referred to by the appellant, which has been replaced by the Decision dated 12 July 2007) documents or parts thereof are “excluded from file inspection at the reasoned request of a party or his representative if their inspection would be prejudicial to the legitimate personal or economic interests of natural or legal persons” The facts mentioned in the concise declaration in lieu of oath concern the irritation regarding certain events of that period which the patent engineer has invoked. The Board is of the opinion that public access to explanations concerning these events and their effect on the patent engineer would prima facie be prejudicial to the legitimate professional and, therefore, at least economic interests of the patent engineer, so that, by way of exception, there is no need for an explicit justification of why the exclusion is required (all the more as the Board could order the exclusion under letter (b) of said Article 1(2) of its own motion). Therefore, the declaration in lieu of oath, which has been excluded from file inspection provisionally according to Article 1(3), first sentence, of the above mentioned Decision of the President, has to be excluded for good from file inspection (cf. T 1401/05 [5]). Moreover, the written submission dated July 23, 2012, together with its enclosures – among which the declaration in lieu of oath under consideration – has not been admitted into the proceedings anyway, so that this assertion could not have had any influence on the decision of the Board. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1592/09 – Because It’s There
K’s Law – The ebook
T 1592/09 – Because It’s There 20 Nov 2012
This is an appeal of the opponent after the patent had been maintained in amended form by the Opposition Division (OD). In what follows, the Board discusses the question of whether the ground of insufficiency of disclosure was already in the proceedings. *** Translation of the German original *** [2.1] In the present case the objection of the opponent regarding insufficient diclosure was discussed by both parties several times during the proceedings before the OD (see the minutes of the oral proceedings […]). [2.2] In its decision G 10/91 [16] the Enlarged Board of appeal has acknowledged that an OD may, in application of A 114(1), examine a belated ground for opposition that is not covered by the notice of opposition. However, this examination requires that, in a first step, the OD, of its own motion [or] upon request by the opponent or a third party, admits and thus introduces the ground for opposition into the opposition proceedings, in conformity with the criteria for relevance given in G 10/91 [16]. If this has happened, the OD will, in a second step, carry out the examination and thus “of course decide whether such ground of opposition prejudices the maintenance of the opposed patent”, see G 1/95 [5.2]. [2.3] The minutes of the [oral] proceedings and the impugned decision do not contain any explicit statement in respect of whether the late filed ground for opposition of insufficient disclosure was admitted and thus introduced into the proceedings or not. In such a situation the introduction of this ground for opposition can result from the fact that the reasons for the decision contain substantiated statements regarding that matter. [2.4] In point 3.3 of its decision the OD refers, in an unambiguous and sufficient way, to the legal and factual framework of the ground for opposition according to which the skilled person can “can carry out” (thereby implicitly mentioning [the German version of] A 100(b)) a waterstop device according to claim 1 having the claimed features (claims 1 and 4 as granted) without exercising any inventive activity and that in this context “the proportions … can be adapted … by the skilled person … by trial and error” (i.e. the submission of facts and evidence for justifying the enablement). It is irrelevant in this context whether, as argued by the [patent proprietor], the treatment of enablement was carried out under the heading “Inventive step”, because an appealable decision is defined by the substance of its content and not by its form. [2.5] Thus the Board comes to the conclusion that the ground for opposition under A 100 (b) already was in the proceedings. Therefore, the examination of this ground for opposition by the Board does not constitute a “fresh” ground within the meaning of the opinion G 10/91 of the Enlarged Board of appeal, cf. G 1/95 [5.3]). [2.6] Moreover, in the present case it implicitly follows from the examination of the belated ground for opposition in point 3.3 of the decision on the opposition that [the OD] apparently had been found to be prima facie sufficiently relevant and, therefore, had been – rightly –admitted and introduced into the proceedings beforehand, in compliance with the criteria for relevance [defined] in G 10/91 [16]. The fact that the margin of discretion of the OD for admitting and introducing belated grounds for opposition apparently was applied in a correct way in the present case was not discussed, let alone challenged, by the [patent proprietor] during the appeal proceedings. It only had discussed whether the ground for opposition of insufficient disclosure indeed was part of the decision of the OD and, therefore, of the proceedings. Also, the statements of the parties on insufficiency of disclosure, as recorded in the minutes of the [oral] proceedings before the OD held on March 20, 2009, do not contain any hint that the introduction of this ground for opposition – in contrast to the introduction of new documents, see point 3.8 of the minutes – was disputed by the [patent proprietor] but had nevertheless – perhaps wrongly – taken place when the decision on the opposition was made. Point 5.7 of the minutes only contains a neutral statement of the [patent proprietor] according to 876 | 3398
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K’s Law – The ebook
which “insufficiency of disclosure was to be considered as a late filed ground for opposition”. During the [oral] proceedings before the Board the [patent proprietor] had another opportunity of commenting this issue. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1784/06 – Comvik Reaffirmed
K’s Law – The ebook
T 1784/06 – Comvik Reaffirmed 19 Nov 2012
This is an appeal against the refusal of the application under consideration by the Examining Division, for lack of inventive step. Claim 1 of the main request on file read: A method for classifying records by means of a computer program product, comprising
receiving records containing several fields, the fields of which records contain values, reading the values contained in at least two specified fields from each received record, and classifying the received records using a classification structure containing conditions, the classification structure containing field-specific classification structures such that there is an own field-specific classification structure for each field according to the conditions of the classification structure, characterized by
selecting field-specific classification structures corresponding to the specified fields, and for each record: searching from the selected classification structures a set of suitable classes for each of the specified fields, wherein the suitable classes correspond to the value read from the field, forming an intersection set of the sets of suitable classes, and selecting a class from the intersection set and classifying the record into the selected class.
One of the crucial issues discussed before the Board of appeal (BoA) was whether the Comvik approach was to be applied. According to the applicant, this approach was not applied uniformly by the Boards of appeal. Therefore, the applicant requested the Board to refer several questions to the Enlarged Board (EBA): Q1: Is the requirement of A 56 [EPC 1973] an independent requirement of substantial patent law or is it to be examined together with the requirements imposed in A 52(2) and (3)? Q2: Can a condition laid down in the Implementing Regulation[s] be taken into account when examining a substantial requirement of patentability, in particular the requirement of inventive step laid down in A 56 [EPC 1973]? Q3: Can a feature relating to excluded subject-matter listed under A 52(2) be omitted when examining other substantial requirements of patentability, in particular inventive step under A 56 [EPC 1973]? Q4: If question Q3 is answered in the affirmative, what are the conditions on which such an omission from the examination can and should be made? Furthermore, what consequences does the narrow interpretation stipulated in A 52(3) have to this examination? Q5: When using the problem-solution approach in the determination of an inventive step, is it an admissible and necessary requirement that the problem to be solved be technical in its nature in a sense that it resides in a field not excluded by A 52(2)? The Board first reaffirmed the Comvik approach: [2] The Board stands by the Comvik approach that only features contributing to the technical character of claimed subject-matter enter into the examination for inventive step, see T 641/00 [6]: “... where a feature cannot be considered as contributing to the solution of any technical problem by providing a technical effect it has no significance for the purpose of assessing inventive step.”
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[2.1] As patents can be granted only for technical subject-matter (A 52(1)(2)(3)), it is consequential that a (nonobvious) contribution which justifies the grant of a patent has to have a technical character. It would appear paradoxical to the Board to recognise an inventive step on the basis of a non-technical innovation (such as an organisational, administrative, commercial or mathematical algorithm) having no technical implication other than the (obvious) desire for its implementation on a general-purpose computer. Already before the Comvik decision, technically non-functional modifications were considered as irrelevant to inventive step (see e.g. T 72/95 [5.4]). [2.2] According to the appellant, claimed subject-matter as a whole should be examined for the presence of an inventive step once the subject-matter as a whole has been found to meet the technology criterion of A 52(1)(2)(3). The appellant argues that A 56 EPC 1973 should be applied independently of A 52(1)(2)(3) because A 52(2) has to be applied independently of A 56 EPC 1973 […]. The Board does not accept such formal reasoning and points out that it is normal and often necessary for legal provisions to be in an asymmetric relationship or hierarchical dependency. For example, the novelty of a claim has to be examined independently of inventive step considerations, whereas a finding of inventiveness presupposes a novelty examination. Another example is the validity of a priority claim which has to be checked independently of novelty and inventive step requirements, whereas novelty and inventive step cannot be established independently of the validity of a priority right. [2.3] Regarding the Board’s insistence on a technical problem when applying the problem-and-solution approach, the appellant disputes that such a requirement can be deduced from the EPC or introduced from its Implementing Regulations. The appellant refers inter alia to decision T 473/08 (by a different BoA) to point out that “a non-technical problem can have a technical solution”. However, there is no divergence, the Board agrees to the statement that a non-technical problem can have a technical solution. On the other hand, where an intrinsically non-technical solution (mathematical algorithm) seeks to derive a technical character from the problem solved, the problem must be technical. This is the point on which the present case hinges. [2.4] Another argument of the appellant refers to the legislative history of the EPC (travaux préparatoires) which is said not to provide any explicit support for a cumulative application of A 52(2) and A 56 EPC 1973. However, the restriction of substantive patent law to technical subject-matter is so self-evident that the founding fathers of the EPC did not even mention that requirement in the original (1973) version of A 52(1). The explicit clause “in all fields of technology” was not added to A 52(1) until the Diplomatic Conference in the year 2000 harmonised the Article with the TRIPs treaty (see OJ EPO 2007, Special Edition 4, page 48). Nevertheless, A 52(1) has always been understood as referring to technical inventions. Similarly, in the Board’s understanding, it is implicit to the patent system under the EPC that only contributions to a field of technology – escaping the list of non-inventions – justify patent protection. [2.5] Opinion G 3/08 of the EBA backs the Comvik approach rather than raising any objection to it. This becomes clear when points 10.13.1 and 10.13.2 of the Opinion are read to the end (italics added by the Board): G 3/08, point 10.13.1: “[...] However, this does not mean that the list of subject-matters in A 52(2) (including in particular “programs for computers”) has no effect on such claims. An elaborate system for taking that effect into account in the assessment of whether there is an inventive step has been developed, as laid out in T 154/04, Duns. While it is not the task of the EBA in this Opinion to judge whether this system is correct, since none of the questions put relate directly to its use, it is evident from its frequent use in decisions of the BoAs that the list of “non-inventions” in A 52(2) can play a very important role in determining whether claimed subject-matter is inventive.” G 3/08, point 10.13.2: “[...] The Board can only speculate that the President could not identify any divergence in the case law on this issue, despite the fact that (at present) approximately seventy decisions issued by a total of fifteen different Boards (in the sense of organisational units) cite T 641/00, and over forty decisions by eight Boards cite T 258/03, Hitachi, the decisions which essentially defined the approach. Nor is the EBA aware of any divergence in this case law, suggesting that the Boards are in general quite comfortable with it. It would appear that the case law, as summarised in T 154/04, has created a practicable system for delimiting the innovations for which a patent may be granted.” 879 | 3398
T 1784/06 – Comvik Reaffirmed
K’s Law – The ebook
The Board then found all of the claims 1 on file to lack inventive step. It finally dealt with the request for referral of questions to the EBA: [9] The appellant has formulated five questions for referral to the EBA under A 112(1)(a) EPC 1973. The questions are said to relate to points of law of fundamental importance and to be important to ensure uniform application of the law. [10] The appellant quotes a number of decisions handed down by other Boards in order to demonstrate that the Comvik approach is not applied uniformly by the BoAs in that other Boards accept non-technical problems as the objective problem. The appellant refers inter alia to decision T 473/08 (by a different BoA) to point out that “a non-technical problem can have a technical solution”. [10.1] However, there is no divergence. The Board agrees to the statement that a non-technical problem can have a technical solution (assuming that a problem properly formulated with respect to the closest prior art can ever be of a completely non-technical nature). On the other hand, where an intrinsically non-technical solution (mathematical algorithm) seeks to derive a technical character from the problem solved, the problem must be technical. Otherwise, the solution remains non-technical and does not enter into the examination for an inventive step. [10.2] To the Board’s knowledge, the other BoAs also apply A 56 EPC 1973 in the light of A 52(1)(2)(3), i.e. the Comvik approach is shared by all Boards. Opinion G 3/08 [10.13.2] did not identify any divergence in the case law on this issue. Nor does the Board deviate from an interpretation or explanation of the Convention contained in an earlier opinion (in particular G 3/08) or decision of the EBA (see point [2.5] supra). Thus, the Comvik approach does not require any further harmonisation or clarification by the EBA. [11] The Board considers the proposed questions to relate to points of policy and legislation rather than points of the existing law. Only the legislators would be entitled to expand the legal definition of inventions such as to provide patent protection on the basis of non-technical contributions (to encourage their publication and dissemination, for example). However, a referral of questions to the EBA for legislative purposes would not be admissible. [11.1] The first question (Q1) asks whether the requirement of A 56 EPC 1973 is an independent requirement of substantive patent law or whether it is to be examined together with the requirements imposed in A 52(2) and (3). As noted above (cf point [2.5]), in Opinion G 3/08 the EBA noted that the jurisprudence of the BoAs recognises a relationship between A 52(2) and A 56: “... it is evident from its frequent use in decisions of the BoAs that the list of ‘non-inventions’ in A 52(2) can play a very important role in determining whether claimed subject-matter is inventive” (point [10.13.1]). Indeed, it would appear illogical to recognise an inventive step on the basis of a non-technical contribution for which no patent protection is available “as such”. Hence, question 1, insofar as it has not already been answered by the EBA, effectively aims at opening the EPC to non-technical innovations. This would exceed the competence of the BoAs (including the EBA). [11.2] The second question (Q2) asks whether a condition laid down in the Implementing Regulations can be taken into account when examining a substantive requirement of patentability, in particular the requirement of inventive step laid down in A 56 EPC 1973. The background of this question is that R 27 and R 29 EPC 1973, for example, were often cited by BoAs to underpin the requirement for a technical invention when interpreting A 52(1) EPC 1973 (see e.g. T 154/04 [8]). This question, however, was already answered by the EBA in decision G 1/08 [2.2]: “It is the function of the Implementing Regulations to determine in more detail how the Articles should be applied and there is nothing in the Convention allowing the conclusion that this would not also apply in the case of Articles governing issues of substantive patent law”.
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T 1784/06 – Comvik Reaffirmed
K’s Law – The ebook
[11.3] The third question (Q3) asks whether a feature relating to excluded subject-matter listed under A 52(2) can be omitted when examining other substantive requirements of patentability, in particular inventive step under A 56 EPC 1973. The answer to this question is implied by the answer to the first question: as A 56 EPC 1973 cannot be applied independently of the list of non-inventions according to A 52(2)(3), such non-inventions have to be disregarded in the examination for inventive step. [11.4] The third question having been answered in the affirmative, the fourth question (Q4) also needs to be considered. It asks on what conditions such an omission from the examination can and should be made and what consequences the narrow interpretation stipulated in A 52(3) has to this examination. A 52(3) limits the non-inventions listed in A 52(2) to subject-matter lacking a concrete and technical character. This understanding of A 52(2) is part of the “practicable system for delimiting the innovations for which a patent may be granted”, as already identified by the EBA (G 3/08 [10.13.2]). As to A 52(3) the Board cannot see why this stipulation should be considered at all in this context. Nor, apparently, could the EBA in Opinion G 3/08 when, in connection with inventive step, it referred to “the list of ‘non-inventions’ in A 52(2)” without mention of A 52(3) (cf. point [11.1] above). [11.5] The fifth question (Q5) relates to the problem-solution approach in the determination of an inventive step and asks whether it is an admissible and necessary requirement that the problem to be solved be technical in its nature in a sense that it resides in a field not excluded by A 52(2). The Board reiterates that it does not consider a technical problem to be an absolute requirement of the problemsolution approach. However, where an intrinsically non-technical solution (here: a mathematical algorithm) seeks to derive a technical character from the problem solved, the problem must be technical. Otherwise, the solution remains non-technical and does not enter into the examination for an inventive step under A 56 EPC 1973. A less restrictive interpretation of the inter-relationship between A 56 EPC 1973 and A 52(1)(2)(3) would remove a legal threshold of the EPC and, thus, go beyond the competence of the BoAs. [12] Hence, the Board sees no reason to refer any of the appellant’s questions to the EBA. It is interesting to see that the Board vigorously defends the Comvik approach but nevertheless qualifies it. The present Board, so it seems, would accept non-technical problems (provided the proposed solution is technical), whereas T 641/00 made it quite clear that only technical problems were to be accepted (consider, for instance, its paragraph [5], the last sentence of which reads: “If no technical problem can be derived from the application, then an invention within the meaning of A 52 does not exist ...”) Even taking into account the fact that the concept of “invention” has undergone a shift in more recent case law (meaning that “an invention within the meaning of A 52” would have to be replaced by “an inventive step within the meaning of A 56” in the above statement), I guess that hardly any Board would endorse such a statement in all its generality today. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 197/09 – Waltz Of The Polypeptides
K’s Law – The ebook
T 197/09 – Waltz Of The Polypeptides 17 Nov 2012
The patent proprietor filed an appeal after the Opposition Division (OD) had maintained its patent in amended form. Claim 1 of the first auxiliary request read (in English translation): Purified polypeptide comprising an amino acid sequence selected from among: (a) the sequence SEQ ID No. 2, (b) any sequence derived from SEQ ID No. 2 and capable of binding specifically to IL-l3, with the exception of the polypeptide of the following sequence: 1 MARPALLGELLVLLLWTATVGQVAAATEVQPPVTNLSVSV 41 ENLCTIIWTWSPPEGASPNCTLRYFSHFDDQQDKKIAPET 81 HRKEELPLDEKICLQVGSQCSANESEKPSPLVKKCISPPE 121 GDPESAVTELKCIWHNLSYMKCSWLPGRNTSPDTHYTLYY 161 WYSSLEKSRQCENIYREGQHIACSFKLTKVEPSFEHQNVQ 201 IMVKDNAGKIRPSCKIVSLTSYVKPDPPHIKHLLLKNGAL 241 LVQWKNPQNFRSRCLTYEVEVNNTQTDRHNILEVEEDKCQ 281 NSESDRNMEGTSCFQLPGVLADAVYTVRVRVKTNKLCFDD 321 NKLWSDWSEAQSIGKEQNSTFYTTMLLTIPVFVAVAVIIL 361 LFYLKRLKIIIFPPIPDPGKIFKEMFGDQNDDTLHWKKYD 401 IYEKQSKEETDSVVLIENLKKAAP.(emphasis of the Board) The Board found this disclaimer to be unallowable: *** Translation of the French original *** [14] Auxiliary request 1 is the [patent proprietor’s] preferred request. It corresponds to the precise wording of the main request considered by the OD in the impugned decision […]. [15] The OD has come to the conclusion that this disclaimer was not allowable because its introduction into claim 1 as granted had modified the latter so as to extend the subject-matter of the patent beyond the content of the application as filed, thereby violating A 123(2). [16] The introduction of a disclaimer into claim 1 as granted aimed at restoring novelty by limiting its embodiment consisting in a purified polypeptide comprising “any sequence derived from SEQ ID No. 2 and capable of binding specifically to IL-l3” with respect to document D1. [17] Document D1 is a Euro-PCT application that is comprised in the state of art within the meaning of A 54(3) EPC 1973 together with A 158 EPC 1973. [18] Document D1 mainly discloses a polypeptide of murine origin designated by the term “NR4” and identified by means of the sequence indicator “SEQ ID NO:2”. An attentive examination of the examples shows that it does not correspond to the polypeptide of 426 amino acids that is represented (having the same sequence indicator) on pages 50 to 52 of the sequence listing. It rather corresponds to the polypeptide containing 424 amino acids represented on figure 1. The sentence “The NR4 cDNA is predicted to encode for a protein of 424 amino acid residues” in the context of example 6 […] and the reference to figure 1 made in examples 2, 3, and 6, are relevant in this respect. The comment regarding this figure on page 31 […] “Figure 1 is a representation of the nucleotide [SEQ ID NO:1] and predicted amino acid [SEQ ID NO:2] sequence of murine NR4” completely removes any doubt. [19] Document D1 is not limited to the disclosure of this polypeptide NR4 of 424 amino acids but also extends to polypeptides having at least 50% similarity to all or part of it and have the ability of binding to IL-13 with at least low affinity […]. [20] Document D2 is an Australian patent application filed on October 23, 1995, i.e. prior to the priority date of the impugned patent (December 6, 1995). D2 is the earliest priority document of document D1. It precisely 882 | 3398
T 197/09 – Waltz Of The Polypeptides
K’s Law – The ebook
discloses a set of polypeptides capable of binding to IL-13, comprising a polypeptide of the SEQ ID NO:2 sequence represented in the sequence list […] corresponding to the one of figure 1 of D1, which is also capable of binding to IL-13 with low affinity, and to any polypeptide having at least 50% similarity wit said polypeptide or any part of it […]. [21] The polypeptides, insofar as they are capable of binding to IL-13 with low affinity, which are disclosed in the same way in both D1 and said priority document D2, are covered by claim 1 as granted. As this is an accidental disclosure (because document D1 was not available to the public on the day of filing of the patent under consideration), the [patent proprietor] may exclude them from claim 1 by means of a disclaimer (see G 1/03 [2]). NB: I have the impression that the Board mixes up accidental disclosures and A 54(3) prior art. Both are mentioned in headnote 2.1 of G 1/03, but A 54(3) prior art is not necessarily accidental. According to G 1/03, “an anticipation is accidental if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention”. [22] For a given claim, a disclaimer can only be allowed if it excludes the entire subject-matter that has been disclosed accidentally. However, the disclaimer of claim 1 does not exclude the polypeptides the sequence of which has at least 50% similarity with the sequence of 424 amino acids of figure 1 of document D1 or with any part of this sequence and which are capable of binding to IL-13 with low affinity. Therefore, it is not allowable within the meaning of A 123(2). [23] The argument of the [patent proprietor] according to which the skilled person would have understood that the correct sequence of murine IL-13Ralpha is the sequence of 426 amino acids represented with the sequence indicator SEQ ID NO:2 in the sequence listing of document D1 but absent from document D2, and that, as a consequence, he would have ignored the sequence of 424 amino acids designated by the same sequence indicator, does not stand up to examination. The Board finds that said polypeptide of 424 amino acids is disclosed in document D1 and that this disclosure extends to any polypeptide having at least about 50% similarity with said polypeptide or with any part of it, and capable of binding to IL-13 with low affinity […]. This is a set of polypeptides each of which, in the absence of any definition of the term “variant” in the patent, represents a derivative polypeptide variant of the polypeptide of the SEQ ID NO:2 sequence of the sequence list of the patent within the definition given in paragraph [0022] of the patent […]. In order to restore novelty for claim 1 as granted, it was thus necessary to exclude this set of polypeptides. [24] It follows from this analysis that the disclaimer of claim 1 is incomplete because it does not exclude this whole set of polypeptides; it is not capable of restoring novelty with respect to document D1. As a consequence, the amendment consisting in its introduction is unallowable within the meaning of A 123(2), in conformity with G 1/03. At least for this reason, auxiliary request 1 has to be refused. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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K’s Law – The ebook
On Translations
On Translations 17 Nov 2012
I wanted to thank all of you who have participated in the recent poll on translations. The outcome was quite unanimous. No one thought that “it would be better to have the posts in the language of the decision (English, French or German, as the case may be)” and a significant part of the voters (about 30%) stated that they did not need translations but thought that they should be maintained. The great majority (about 70%) would have regretted if K’s Law did not offer translations any more. So let us not change anything for the time being.
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T 1227/10 – Dustbin Horrors
K’s Law – The ebook
T 1227/10 – Dustbin Horrors 16 Nov 2012
This case is interesting because it illustrates how deleting a figure corresponding to “prior art” can lead to a violation of A 123(2). The appeal was filed by the opponent after the Opposition Division (OD) had rejected the opposition. Claim 1 as granted read : 1. A process for removing nitrogen oxides from flue gas issuing from a regenerator of a fluidized catalytic cracking unit wherein the flue gas is cleaned of substantial amounts of dust in the regenerator, the process comprising the steps of: a) directing the flue gas into a tertiary cyclone separator and separating the solids therefrom so that not more than 250mg/Nm3 of solids exit in an overflow from the tertiary cyclone separator and causing between 0.5% and 6% percentage of flue gas entering the tertiary cyclone separator to exit as an underflow from the tertiary cyclone separator with solids separated in the tertiary cyclone separator; b) Conveying the overflow to a selective catalytic reduction unit and processing the overflow in the selective catalytic reduction unit to form an outlet gas stream; and c) Introducing the outlet gas stream and the underflow into a wet scrubber and removing at least 80% of particles of 3.0 microns size and larger and 30% of 1.5 micron size. In its decision the OD had found that the deletion during the examination proceedings of the original figure 1
and of the part of the description relating to this drawing, both of them indicating the illustrated embodiment as being part of the prior art, removed an erroneous statement of the prior art in the original application; therefore, in line with the decision T 22/83, these parts of the original application had to be ignored in assessing the invention disclosed in the original application and their deletion would not contravene A 123(2). The opponent submitted that the deletion of figure 1 and of the corresponding passage of the description on page 6 of the original application modified the information of the invention contained in the original application and directed at the public; hence, the embodiment indicated as prior art in the original application was now encompassed by claim 1 as granted; therefore, said amendments contravened the requirements of A 123(2). The patent proprietor responded by pointing out inter alia that the disputed amendments did not modify the teaching of the original application since it was still clear from the rest of the description that the use of a ceramic filter on the underflow of the third stage separator (TSS) was not part of the invention; therefore, the granted patent did not contain subject-matter extending beyond the content of the original application. 885 | 3398
T 1227/10 – Dustbin Horrors
K’s Law – The ebook
In what follows the Board discusses the compliance of claim 1 with the requirements of A 123(2) : [1.1.1] The [opponent] submitted that the subject-matter of the patent in suit extended beyond the content of the original application since figure 1 and the corresponding passage of the description of the original application had been deleted. The Board agrees in this respect with the [patent proprietor] that the only issue to be decided upon in the present case concerns the alleged deficiency contested by the [opponent] with the ground of opposition of A 100(c) EPC 1973; hence, the compliance with the requirements of R 139 (corresponding to R 88, second sentence, EPC 1973) for the correction of an obvious error of the amendments carried out during the examination proceedings has not to be examined by the Board. In fact, as explained in G 3/89 [1.3,1.4,1.6], the prohibition of extension under A 123(2) applies also in the case of a correction under R 88, second sentence, EPC 1973. [1.1.2] According to the established jurisprudence of the Boards of Appeal of the EPO it is essential, when deciding on issues of added subject-matter, to identify the technical information that the skilled person, on the date of filing, would have objectively derived from reading the entire original disclosure, including description, claims and drawings (see G 3/89, [1.4, 2]; G 2/10 [4.3, first full paragraph]; T 667/08 [4.1.4, second and third full paragraph]). It is also established case law that the prohibition of A 123(2) ensures that an applicant cannot improve his position by adding subject-matter not disclosed in the application as filed, which additional subject-matter would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application; in fact, for example, the public could be faced otherwise at a later stage, with claims which extend beyond what was disclosed in the application as filed and published for the information of the public (see G 1/93 [9] and T 740/91 [2.5]). [1.1.3] Claim 1 as granted concerns a process for removing nitrogen oxides from flue gas issuing from a regenerator of a fluidized catalytic cracking (FCC) unit, wherein the flue gas is directed into a TSS, the overflow from the TSS is conveyed to a selective catalytic reduction unit (SCR), and the outlet gas stream from the SCR is introduced into a wet scrubber together with the underflow from the TSS. The wording of the independent claim 1 thus does not specify whether the underflow from the TSS can be further treated before introducing it into the wet scrubber. The description of the patent in suit teaches that there is no need to install a gas solid separator like a ceramic filter on the underflow of the TSS […] and that the underflow from the TSS is directed around the SCR and is re-injected into the flue gas duct after the SCR without requirement for a further cyclone separator such as a socalled fourth stage separator (FSS) or for a ceramic filter […]; however, the description teaches also that the invention is illustrated in figures 1 and 2 […], wherein figure 1 does not contain any intermediate treatment of the underflow from the TSS but figure 2 includes the use of an FSS for treating said underflow before introducing it into the wet scrubber. In fact, the embodiment of figure 2 is reflected in the wording of dependent claim 4. Therefore, even though the claimed invention teaches that there is no need to convey the underflow of the TSS to a gas solid separator, it would have been clear to the skilled person, by considering the whole content of the patent in suit, that such a step is also not excluded, as shown, for example, in figure 2 and covered by the wording of claim 4. Hence, it would have been clear to the skilled person that the process of claim 1 as granted encompasses also embodiments in which the underflow of the TSS is further treated with any type of gas solid separator before entering the wet scrubber. In the light of the whole content of the patent in suit there would have been also no reason for the skilled person to assume that the use of a filter like a ceramic filter as gas solid separator on the underflow of the TSS is prohibited or excluded by the wording of claim 1. [1.1.4] The wording of claim 1 of the originally filed application is similar to that of claim 1 as granted and also requires that the underflow of the TSS is introduced together with the outlet stream of the SCR into a wet scrubber without specifying whether said underflow can be subjected to an intermediate treatment. Moreover, similarly to the granted patent, the originally filed documents teach that there is no need to install a gas solid 886 | 3398
T 1227/10 – Dustbin Horrors
K’s Law – The ebook
separator like a ceramic filter on the underflow of the TSS (page 6, lines 8 to 11 of the published original application WO 03/078544) and that the underflow from the TSS is directed around the SCR and is re-injected into the flue gas duct after the SCR without requirement for an FSS or a ceramic filter (page 7, lines 7 to 10); moreover, they contain two figures (figures 2 and 3 corresponding to figures 1 and 2 as granted), wherein one of these figures (figure 3) illustrates an embodiment of the invention wherein the underflow of the TSS is further treated in an FSS, which embodiment is covered by the wording of dependent claim 5 (corresponding to claim 4 as granted). However, differently from the patent as granted, the original application contained also a figure 1 labelled as prior art and a passage of the description specifying that figure 1 was a schematic view of an FCC unit of the prior art (page 6, lines 14 to 17) wherein the underflow of the TSS was associated to a filter before being directed to a wet scrubber together with the outlet stream of the SCR. Therefore, even though it is not disputed that the wording of the original claim 1 encompassed theoretically a process corresponding to that labelled as prior art in figure 1, the skilled person, by reading the whole content of the application, would have objectively derived therefrom that the applicant’s invention did not require the use of a gas solid separator on the underflow of the TSS, it could include as alternative a treatment of the underflow of the TSS in an FSS, as shown in original figure 3 and required in original claim 5, but it excluded the process labelled as prior art in figure 1 wherein the underflow from the TSS was treated in a filter before entering the wet scrubber. In fact, it has to be reiterated, as already explained above […], that what counts for the assessment of the compliance of an amendment with A 123(2) is the technical information that the skilled person would have objectively derived on the date of filing on reading the content of the original disclosure, since only in this way the legal security of third parties relying on the content of the original application would be preserved; therefore, the fact that after the date of filing a disclosure might perhaps be found to be wrong is in this respect irrelevant (see, for example, T 740/91 [2.6]). The Board thus finds that the original application did not include the possibility of using a filter as gas solid separator for further treating the underflow of the TSS before entering the wet scrubber, whilst the patent as granted encompasses such a possibility, as explained above. Hence, the deletion of original figure 1 and of the related passage of the description has modified the application in a way that the granted claim 1 includes subject-matter which was excluded from the originally filed invention as it would have been understood by a skilled person on reading the whole original application on the date of filing. [1.1.5] As regards the decisions cited by the [patent proprietor] in support of its opinion that the extent of the application had not been changed by the above mentioned amendments, the Board remarks that all these decisions concern an appeal against the refusal of an application; in particular, in T 6/81 [2.2-3] the preamble of the independent claim did not reflect correctly what it was known as state of the art but included subject-matter not known at the priority date of that patent in suit which had to be disregarded for the evaluation of inventive step; in T 22/83 [3(iv)-(vi)] a figure indicated as prior art in the application could not be used as starting point for the evaluation of inventive step and was disregarded in the absence of evidence that it really represented state of the art; in T 1039/93 [2] the deletion of the label “prior art”, which was present in the original application with regard to some figures, was considered to comply with the requirements of A 123(2) by the Board since the applicant declared during appeal that such figures were not part of the state of the art. Therefore, the Board finds that none of these cases concern a ground of appeal under A 100(c) EPC 1973; moreover, they do not concern the impact of the deletion of a figure and part of the description of the original application on the interpretation of the independent claim of the granted patent; hence, they concern completely different legal situations which are not applicable to the present case. [1.1.6] The Board thus concludes that claim 1 as granted extends beyond the content of the original application and contravenes the requirement of A 123(2). The patent was finally revoked. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1496/11 – Bending & Folding
K’s Law – The ebook
T 1496/11 – Bending & Folding 15 Nov 2012
This is the second appeal in the case under consideration. In a first decision (T 1265/07) the Board set aside the decision of the Opposition Division (OD) to revoke the opposed patent and remitted the case for further prosecution. The OD then maintained the patent in amended form. Opponent 1 filed an appeal against this interlocutory decision. Claim 9 of the claims as maintained read: 9. A security document (20) including a security device (22) and verification means (21) for verifying or inspecting the security device (22), said security document (20) being formed from a substrate (2) bearing indicia (3), wherein the security document comprises a single flexible sheet (2), such as a bank note, the verification means comprises self-verification means (21) provided at a first transparent portion (5) of the single flexible sheet (2), wherein the first portion (5) is of transparent plastics material, and the security device (22) is provided at a second portion (4) of the single flexible sheet (2) spaced laterally from the first portion (5) so that the self-verification means (21) can be used to verify or inspect the security device (22) when the single flexible sheet (2) is bent, folded or twisted to bring the first and second portions (5,4) into register, characterised in that the security device comprises an area (22) of the sheet printed with metameric inks, and the self-verification means comprises an optical filter (21) for viewing the area (22) printed with metameric inks.(my emphasis) One of the questions discussed by the Board was whether this claim was entitled to the claimed priority of an Australian provisional application (without claims). [2.3] The addition in claims 1 and 9 (main request) that the single flexible sheet may be “bent” instead of “folded” does [I guess a “not” is missing here] give rise to an invention different from that disclosed in the priority document for the following reason: Folding the single flexible sheet to bring the first and second portions into register so that the self-verification means can be used to verify or inspect the security device necessarily involves bending the single flexible sheet. Conversely, bending the single flexible sheet to bring the first and second portions into register so that the self-verification means can be used to verify or inspect the security device is a process which can also be described as “folding”. The addition of the term “bent” to the wording of claims 1 and 9 does not add any new possibilities which were not immediately and unambiguously derivable from the disclosure of the prior art document. The appellant’s argument that the covers of a bank pass book, which, for the sake of this argument, are to be assumed rigid and thus may be folded but not generally bent, cannot be accepted by the board, because the security document claimed in claims 1 and 9 (main request) comprises a single flexible sheet. The embodiments of the invention concern (flexible) banknotes and there is no support elsewhere in the patent in suit of a limitation to a security document with rigid covers joined to the single flexible sheet so as to only permit folding about a hinge-like region connecting these rigid covers but which is otherwise prevented from bending by the rigidity of the covers. Thus, the addition of the term “bent” to the wording of claims 1 and 9 in itself does not make the subject-matter of claims 1 and 9 a different invention with respect to the one disclosed in the priority document. [2.4] The addition in claims 1 and 9 (main request) that the single flexible sheet may be “twisted” instead of or in addition to being “folded” was no longer contested and has a basis in the first paragraph of page 15 of the priority document. [2.5] The subject-matter of claim 9 (main request) thus constitutes the same invention as that set out in the priority document (A 87(1) EPC 1973). Adddendum: 888 | 3398
T 1496/11 – Bending & Folding
K’s Law – The ebook
As an anonymous reader has pointed out, the decision contains another interesting and controversial aspect. Having found claim 1 not to be entitled to the priority, the Board goes on to say: [3] In view of the foregoing, the subject-matter of claim 1 (main request) is only entitled to the filing date of 08 October 1997. The divisional application G25 of the patent in suit discloses an embodiment in which a flexible banknote may be folded upon itself and a self-verification means in form of an optical lens used to view an area of microprinting which constitutes the security device (column 8, lines 21 to 34 and figures 1 and 2). The description of this embodiment is identical to that provided in the priority document (page 9, lines 19 to 27 and figures 1 and 2). This embodiment of the divisional application G25 is therefore entitled to the claimed priority date of 10 October 1996 and thereby anticipates the subject-matter of claim 1 (main request) which is only entitled to the filing date of 08 October 1997. These new facts were not addressed in the earlier decision T 1265/07 so that, according to established case law (e.g. T 27/94 [2]; T 378/88 [4]) there is no case of res judicata. For these reasons, the divisional application G25 is prima facie relevant and the board exercised its discretion to introduce it into the proceedings. The board considered that, in the absence of an absolute right to have an issue decided upon by two instances, the question of novelty with respect to the divisional application G25 did not warrant a remittal at this advanced stage of the proceedings. The board thus exercised its discretion to refuse the respondent’s request for remittal to the first instance. The lack of novelty of the subject-matter of claim 1 (main request) with respect to the divisional application G25 under A 54(3) was subsequently not contested by the respondent. Hence, the subject-matter of claim 1 (main request) lacks novelty with respect to the divisional application G25 under A 54(3). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1771/08 – He Should Have Said “No”
K’s Law – The ebook
T 1771/08 – He Should Have Said “No” 14 Nov 2012
In this case the opponent filed an appeal against the decision of the Opposition Division to reject the opposition. On July 16, 2010, the parties were summoned to oral proceedings (OPs) to be held on November 17, 2010. In a letter dated September 30, 2010, the representative of the patent proprietor requested a postponement of the OPs because he already had to attend OPs to be held on the same day and at the same time. The letter also mentioned the fact that the in-house attorney of the patent proprietor could not attend either. The OPs were postponed to February 10, 2011. During the OPs the opponent requested apportionment of costs because the postponement of the OPs had obliged its representative to prepare the OPs twice. Agreeing to postpone the OPs was not tantamount to waiving the right to have costs apportioned. The Board came to the conclusion that the patent could be maintained as granted. It then dealt with the request for apportionment of costs: *** Translation of the German original *** [8.1] The representative of the [opponent], Mr K., has filed the auxiliary request that the costs be apportioned in favour of the [opponent] in case the appeal was dismissed. He requested [the Board to order that the patent proprietor bear the costs] corresponding to an additional day of preparation, i.e. 8 working hours. The fact that the OPs before the Board had been postponed had made it necessary for him to prepare twice for the OPs. He was of the opinion that the OPs should not have been postponed because, according to last paragraph of the “Notice of the Vice-President of DG3 of the EPO dated 16 July 2007 concerning OPs before the Boards of appeal of the EPO” (OJ EPO, Special edition 3/2007, 115, number 2.3), a statement why none of the other representatives of the law firm could attend the proceedings was required and no such statement had been provided in the request for postponement filed by the [patent proprietor]. When the chairman mentioned that the representative had agreed to the postponement when contacted by the registrar by phone and had added that he waited for summons for OPs to be held on an alternate date, the representative confirmed that he had said he “would” agree to a postponement but that this was not a waiver for an apportionment of costs resulting from the postponement. [8.2] Pursuant to A 104(1) each party to the opposition proceedings shall bear the costs it has incurred, unless the OD, “for reasons of equity”, orders a different apportionment of costs. A 104(1) EPC 1973 has the same content in this respect. The Board is of the opinion that apportionment of costs under A 104(1) […] is excluded when the representative of the [opponent] unreservedly (vorbehaltslos) agrees to a postponement of the OPs, because there are no reasons of equity justifying [apportionment]. In the present case the agreement was unreserved. There are no indications in the statement of the representative of the [opponent] that he “would” agree to a postponement which could be seen as a tacit reservation (Vorbehalt) that the agreement was only given in case the [opponent] had the right to claim apportionment of costs in favour of the [opponent]. In such a case the [opponent] cannot invoke the fact that the requirements for a postponement that are set forth in the above mentioned Notice dated 16 July 2007 have to be complied with. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1149/11 – Trust Is Good, But Control Is Better
K’s Law – The ebook
T 1149/11 – Trust Is Good, But Control Is Better 13 Nov 2012
Comrade Vladimir Ilyich is said to have uttered this principle. Apparently the present Board sees things in a similar light when it comes to professional representatives and their paralegals. The applicant had filed an appeal against the decision to refuse the application, which had been dispatched on December 21, 2010. The notice of appeal was received on March 1, 2010, together with the appeal fee payment. After the applicant had been informed that the notice and the fee had been received after expiry of the time limit under A 108, it requested re-establishment. The Board found the request to be admissible. In what follows it deals with its allowability. The decision will satisfy both Leninists and Latinists. Circumstances of the present case [2] The specific circumstances of the present case, as presented by the applicant with the letter of 2 May 2011, are summarized as follows. On 22 December 2010, Mr X, a professional representative, was in charge of reviewing the incoming post. On that date, the decision of 21 December 2010 was received. On the same day, Ms Y, a paralegal assistant, was in charge of calculating and noting the relevant time limits. Thus, it was Ms Y who calculated and noted the time limit for filing the appeal against the decision of 21 December 2010. According to her calculation, the time limit expired on 1 March 2011. In the patent attorney firm for which Mr X and Ms Y work, the time limits are subdivided in “blue” time limits relating to internal administrative file management and critical “red” time limits including, for example, the time limits for filing an appeal and for paying the corresponding fee. The correctness of any “red” time limit is checked by the person in charge of the review of the incoming post, this person being one of the partners of the firm. On 22 December 2010, Mr X remarked that the noted time limit was incorrect and instructed Ms Y to correct it from 1 March 2011 to 28 February 2011 in the computerized time limit monitoring system. This correction was to be performed immediately after she had finished reviewing, together with Mr X, the remaining documents received on that day. Moreover, Mr X instructed her to report to him as soon as the correction had been made. Later on the same day Ms Y reported to Mr X that she had corrected the time limit according to the received instruction. As a matter of fact, however, Ms Y had, for some inexplicable reason, failed to correct the wrong time limit. This failure first came to the attention of Mr X upon receipt of the official communication of 12 April 2011. On 1 March 2011, Mr Z, another professional representative from the same firm, signed the notice of appeal that was then filed on the same day, relying on the correctness of the noted time limit for the appeal as having been checked by Mr X on 22 December 2010. A 122 Pursuant to A 122(1),(2) a request for re-establishment of rights shall be granted provided that an “applicant” was unable to observe a time limit vis-à-vis the EPO, in spite of “all due care required by the circumstances” having been taken. Jurisprudence of the boards of appeal 891 | 3398
T 1149/11 – Trust Is Good, But Control Is Better
K’s Law – The ebook
[4.1] In the present case, the professional representative, Mr X, acted for the applicant and entrusted the performance of routine tasks such as calculating and noting time limits to the assistant, Ms Y. [4.2] Such a situation is considered in decision J 5/80. The board held that “When an applicant is represented by a professional representative, a request for restitutio in integrum cannot be acceded to unless the representative himself can show that he has taken the due care required of an applicant or proprietor by A 122(1)” (J 5/80 [headnote 1]). In other words, what A 122 requires from an applicant also applies to an applicant’s representative. Moreover, “If the representative has entrusted to an assistant the performance of routine tasks such as ... noting time limits, the same strict standards of care are not expected of the assistant as are expected of the applicant or his representative” (J 5/80 [headnote 2]). This implies that a representative carries full responsibility for the work of an assistant entrusted with a task. However, “A culpable error on the part of the assistant made in the course of carrying out routine tasks is not to be imputed to the representative if the latter has himself shown that he exercised the necessary due care in dealing with his assistant. In this respect, it is encumbent [sic] upon the representative to choose for the work a suitable person, properly instructed in the tasks to be performed, and to exercise reasonable supervision over the work” (J 5/80 [headnote 3]). Thus, responsibility of a representative entrusting an assistant with routine tasks is defined by the duty of care concerning the proper selection (cura in eligendo), instruction (cura in instruendo) and supervision (cura in custodiendo) of the appointed assistant. [4.3] These requirements are acknowledged in the established jurisprudence of the boards of appeal, for example in T 439/06. In this decision, the board held that “complying with these requirements ... does not mean that with the proper selection, instruction and supervision of the assistant the representative’s responsibility ends there once and for all, and that he need not take further care with respect to the delegated task” (T 439/06 [6-7]). The ongoing character of the representative’s responsibility with regard to the work of an assistant is here underlined. In the same decision T 439/06 the board also drew attention to further issues. A first one concerns the kind of time limit missed. In the board’s view, “... what all due care calls for depends on the specific circumstances of the case. In this respect, not only the individual circumstances of the person concerned have to be taken into consideration, but also the kind of time limit that needs to be observed and the legal consequences of missing it. It is clear from the Convention that not all time limits need the same attention. If further processing is available it might be sufficient to leave the monitoring of such a time limit completely to the assistants since there is no irrevocable loss of rights at stake. However, the time limits for filing an appeal provided for in A 108 against a decision revoking the patent are absolutely critical since if they are missed the patent remains revoked and there is no further ordinary remedy. Thus they need specific attention” (T 439/06 [8]). A second issue concerns the occurrence of an isolated mistake within a normally satisfactory system. The board held that “Under the established case law of the boards of appeal, restitutio in integrum is intended to ensure that an isolated mistake within a normally satisfactory system does not result in an irrevocable loss of rights” (T 439/06 [4, first sentence]). This quotation concerns the lack of consequences of an isolated mistake made by a person entrusted by a representative with tasks, provided that the representative complied with the requirements of proper selection, instruction and supervision. A third issue regards the need for an effective cross-check in a large firm in which a representative entrusts an assistant with tasks. In the board’s view, “It is further established case law ... that in a large firm where a large number of dates has to be monitored, in order to qualify as a normally satisfactory system, at least one effective cross-check has to be built into the system” (T 439/06 [4, last sentence]). [4.4] In T 1465/07 the board drew the consequences of non-compliance with the requirements of proper selection, instruction and supervision mentioned above. The board held that “If the representative has not complied with these requirements, and if the assistant commits a culpable error which results in the failure to observe a time limit, then the representative cannot establish that he took all due care required by the circumstances (see, by analogy, J 5/80 [8])” (T 1465/07 [18, last paragraph]). [4.5] In summary, if a representative of an applicant delegates tasks to an assistant, the representative carries the duty of care concerning the proper selection, instruction and supervision of the assistant. This responsibility lasts as long as delegation of tasks is given. 892 | 3398
T 1149/11 – Trust Is Good, But Control Is Better
K’s Law – The ebook
The duty of care concerning supervision requires that an effective cross-check is implemented, at least in a firm where a large number of time limits have to be monitored. Only then can the monitoring system qualify as being normally satisfactory. If the entrusted assistant makes a mistake which results in the failure to observe a time limit, it cannot be established that all due care required by the circumstances has been taken, if the representative has not complied with the duty of care concerning the proper selection, instruction and supervision. Re-establishment of rights, however, can be granted in case of an isolated mistake of the entrusted assistant within a normally satisfactory system. Assessment of the present case [5.1] The assessment of the present case is made in agreement with the jurisprudence mentioned above, from which the Board has no reason to depart. [5.2] First, the Board holds that the requirements of cura in eligendo and cura in instruendo have been met by the representative. Indeed, there is no reason to cast any doubt upon the appropriateness of the selection of the assistant, Ms Y, whose qualification is beyond question, or upon the instructions given by the representative, Mr X. [5.3] Hence, the issue to be considered concerns whether the representative, Mr X, has also complied with the requirement of cura in custodiendo with regard to the assistant’s tasks of calculating and noting time limits. This issue is linked with the question whether an effective cross-check was implemented in the firm. Moreover, attention shall also be paid to the specific circumstances of the present case, in particular the kind of time limit missed. [5.4] As it can be inferred from the applicant’s letter of 2 May 2011, on 22 December 2010 the assistant, Ms Y, made a first mistake when calculating and noting the time limit for filing the notice of appeal and paying the appeal fee. The representative, Mr X, checked as a routine matter the correctness of the time limit noted in the monitoring system of the firm, remarked that it was incorrect, instructed Ms Y to correct it the same day and to report back to him once the correction was made. It thus appears that, with regard to the occurrence of this first mistake, the monitoring system could be considered as normally satisfactory because an effective cross-check led to the identification of the mistake. [5.5] On the same day, however, Ms Y made a second mistake. She reported to Mr X the correction of the time limit although, for some inexplicable reason, she had failed to correct it. Manifestly, Mr X did not consider it necessary to check whether the time limit had indeed been correctly recorded, as it should have been. This is the crucial point. Complying with the requirement of cura in custodiendo does not mean that the representative’s responsibility ends with giving the proper instruction to correct the time limit. In other words, it does not mean that the representative did not need to take further care with respect to the delegated task. Rather, in a system qualifying as normally satisfactory, as acknowledged above in relation to the identification of the first mistake made by Ms Y, also the corrected date must be subjected to the same cross-check for the following reasons. First, the risk that mistakes, for example a typing error, may occur while noting the time limit in the monitoring system cannot be excluded. Moreover, the nature of the time limit concerned requires particular care. In fact, the time limit for filing a notice of appeal and paying the appeal fee pursuant to A 108 is absolutely critical because, if it is missed, there is no further ordinary remedy and the contested decision has legal effect. For these reasons, with regard to the occurrence of the second mistake made by Ms Y, all due care required by the circumstances had not been taken because the representative, Mr X, did not consistently comply with the requirement of cura in custodiendo in relation to the task entrusted to the assistant of correcting the wrong time limit noted in the monitoring system. A cross-check was indeed due, which, if carried out correctly, would have led to the identification of the second mistake.
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T 1149/11 – Trust Is Good, But Control Is Better
K’s Law – The ebook
[5.6] Hence, the Board concludes that, with regard to the second mistake made by the assistant, Ms Y, the representative, Mr X. failed to carry out an effective cross-check. In such a case, it cannot be established that all due care required by the circumstances has been taken. [5.7] The applicant substantially argued that the assistant, Ms Y, was an experienced paralegal who had calculated, registered and monitored thousands of time limits without any mistake. Moreover, her work was periodically checked by one of the partners of the firm. Thus, the requirements of proper selection, instruction and supervision were all met. The above-mentioned first and second mistakes only amounted to a single mistake. Indeed, the fact that Ms Y first calculated and noted an incorrect time limit was no longer relevant because this mistake had been detected by the representative, Mr X, who then gave an instruction to Ms Y to correct it. Consequently, only one single isolated mistake occurred, namely the failure to correct the recorded time limit. In this respect, it should be considered sufficiently fail-safe to request Ms Y to report back once she had corrected the mistake, and Mr X should be able to rely on her statement. A cross-check would represent an undue burden considering the high daily workload with which a representative in the firm had to cope. The nature of the time limit missed was also irrelevant because each time limit had, in principle, to be considered as important. In summary, the missed time limit resulted from a single isolated mistake within a normally satisfactory system, so that an irrevocable loss of rights would be inappropriate. [5.8] These arguments are not convincing. Complying with the requirement of cura in custodiendo does not mean that the representative’s responsibility in this respect ends with giving the instruction to correct the time limit noted in the monitoring system. Rather, it means that a cross-check was also due once correction had been reported. This results from the representative’s duty of care with regard to the work of the assistant. Indeed, the standard of a cross-check was respected in relation to the initial recording of the time limit in the monitoring system, but was not consistently maintained later on. This had the consequence that the final entry in the monitoring system was not checked, meaning that any manner of mistake would have gone unnoticed. Moreover, it is a questionable practice to consider each time limit equally important, independently of the legal consequences in the case that the time limit is missed, particularly in view of the fact that the jurisprudence warns of the importance of the time limit for filing an appeal (T 439/06). At least after detection of the first mistake, the representative, Mr X, should have been aware of this. The non-compliance with the requirement of cura in custodiendo entails that the missed time limit did not result from an isolated mistake within a normally satisfactory system. [5.9] In conclusion, the request for re-establishment of rights with respect to the time limit for filing the notice of appeal and paying the appeal fee cannot be granted (A 122(2)) because the representative of the applicant failed to observe the time limit, as a result of all due care required by the circumstances not having been taken (A 122(1)). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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R 21/11 – Unheard
K’s Law – The ebook
R 21/11 – Unheard 12 Nov 2012
Sometimes petitions for review do succeed, as the present decision shows. The petition had been filed after Board of appeal (BoA) 3.3.01 in its decision T 584/09 – which was reported on this blog (here) – had revoked the opposed patent, which the Opposition Division (OD) had maintained in amended form. During the opposition proceedings, the opponent filed document D8 which it believed relevant for inventive step. The OD found that this was not the case. In the appeal proceedings, the opponent used D8 for both novelty and inventive step arguments. On September 17, 2010, the Board summoned the parties to oral proceedings (OPs) to be held on February 3, 2011. There was no annex expressing the provisional opinion of the Board. On December 3, 2010, the patent proprietor filed an expert opinion by Prof. Mehlhorn regarding the interpretation of D8. Shortly before the OPs, on January 26, 2011, the Board sent a communication in which it expressed the opinion that document D8 was destructive of novelty. On January 31 2011, the patent proprietor requested that the case be remitted to the OD, or that the proceedings be continued in writing, or that the OPs be postponed. On February 1, 2012, it filed a second expert opinion by Prof. Mehlhorn (which will be referred to as “MEO2” in what follows) as a reaction to the communication by the Board and requested the Board to admit it into the proceedings. At the end of the OPs the Board revoked the patent, which triggered the petition for review. The request was based on two alleged substantial procedural violations: (a) the Board had decided on the appeal without having decided on the request to admit MEO2; moreover, by ignoring MEO2 the Board had violated the patent proprietor’s right to be heard; (b) the patent proprietor had not had sufficient time to prepare a statement on the objection of lack of novelty, which the Board had raised only five working days before the OPs; this again amounted to a violation of the patent proprietor’s right to be heard. The decision is somewhat lengthy. If you just want a short take-away, here is a translation of the headnotes:
“Relevant” in R 104(b) means “suitable for leading to a different outcome of the appeal proceedings”. An objection under R 106 has to be raised expressis verbis; a request for remittal, for postponement or for continuation in writing does not qualify as such an objection. The replacement of members of the BoA who have participated in the decision that is set aside lies within the discretion of the EBA, which exercises this discretion in a just and appropriate manner, taking due account of the facts of the case. The fee for petitions for review is to be reimbursed when the proceedings are re-opened before the BoA, even if further requests filed with the petition for review (here: replacement of members of the BoA) are unsuccessful, i.e. even if the requests of the petitioner are only partly successful.
For those who want the real thing, just read on: *** Translation of the German original *** 895 | 3398
R 21/11 – Unheard
K’s Law – The ebook
Admissibility – Procedural violation (a) [1] At first sight it appears that the parties, as far as the admissibility of the petition for review in view of procedural violation (a) is concerned, are stuck in a dispute regarding the facts of the case and, consequently, contradictory arguments. The petitioner asserts that its representatives had referred to MEO2 during OPs before the BoA, whereas the [opponent] declares that none of the persons which represented it had heard any mention of this expert opinion. The petitioner refers to the fact that it had filed a written request to admit MEO2 into the proceedings, which had never been withdrawn, whereas the [opponent] argues that the petitioner should have checked the receipt of the written submission by the BoA and should have intervened when the BoA requested the parties to state their requests. The petitioner explains that it had relied on the admission of MEO2 to the proceedings, whereas the [opponent] argues that the petitioner could have requested a decision on that matter, which it had not done. [2] However, the [opponent] has qualified its statement at a later time in such a way that the dispute between the parties is in large part irrelevant. The [opponent] declares that the petitioner could have requested a decision on the admissibility of the second expert opinion but had not done so because it probably had believed that the expert opinion had been admitted. If the petitioner had acted on the assumption that the BoA had admitted MEO2 into the proceedings and if the [opponent] acknowledges that the petitioner had indeed believed this, then the EBA can also come to the conclusion that the petitioner held this belief until it realised, upon receipt of the written decision, that the BoA had overlooked (or never seen) the request. [3] The dispute of the parties concerning the factual situation – i.e. the question of what the representatives of the petitioner have or have not said in regard of MEO2 during the OPs before the BoA – can be explained in large part by the apparent misunderstanding to which the EBA has referred the parties during the OPs, and which, as the parties have admitted, could have occurred […]. In view of the circumstances it is likely that the fax of the petitioner sent on February 1, 2011, had not reached the BoA when the OPs took place and that, as a consequence, it was not aware of MEO2. As there was already an expert opinion by Prof. Mehlhorn on file, the BoA and the [opponent] may have understood the petitioner’s reference to MEO2 to be references to the first expert opinion. The petitioner, however, believed that the BoA had considered MEO2 to be admitted, whereas the [opponent] simply did not mention it because it was not its own document and there was no reason for it to refer to it. [4] In view of this misunderstanding this particular criticism by the [opponent] of the petitioner’s way of conducting the proceedings is less persuasive. It is true that the petitioner could have checked whether its fax of February 1, 2011, had been received, but as it believed that MEO2 had been admitted, there was no reason to do so. It is for the very same reason that the petitioner has not intervened when the list of requests was read out. In this context the [opponent] pointed out, by referring to R 14/10 [5.3, 6.1], that a party has to intervene when the requests that are read out do not correspond to its intention and that, if it does not do so, former requests that are not mentioned are obsolete (überholt). However, in the present case the petitioner believed that MEO2 had been admitted and, therefore, did not see any reason let alone a duty to intervene. The misunderstanding on which Mehlhorn expert opinion was referred to by the petitioner in the OPs also explains why the request for admission of MEO2 does not appear in the minutes of the OPs and why the expert opinion itself is absent from the list of documents cited in the written decision […]. [5] As far as the final argument of the [opponent] is concerned […], i.e. that it would be unfair (unbillig) when a party that had not mentioned the admission of a new document during the OPs later filed a petition for review asserting that the BoA had not taken this document into account, the EBA in principle agrees. However, when, as in the present case, a party does not explicitly refer to the question of admissibility of the document because it has good reason to act on the assumption that it had been admitted – even if it is mistaken – although it has not, then it would be unfair not to allow it to file a petition for review. [6] The [opponent] submitted that its argument should in particular hold true when a document was filed shortly before the OPs. Again, the EBA in principle agrees – it would be clearly wrong and presumably even abusive if a party filed a document together with a request to admit it, omitted to mention the request during the OPs and then filed a petition for review because there had been no decision on that request. However, the present situation is different. It is true that the petitioner has filed MEO2 shortly before the OPs, but it has done so because the BoA had raised an objection (possible lack of novelty over D8) only five working days before the OPs, an objection that had not been raised before during the opposition and appeal proceedings before, as even the [opponent] admits. In the situation described by the [opponent] the alleged procedural violation – to use the
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R 21/11 – Unheard
K’s Law – The ebook
words of the [opponent] – would be due to the petitioner, to whom the use of the exceptional provision provided by R 106 could indeed be refused. [7] The [opponent] also submitted, referring to the travaux préparatoires, that R 106 – including the exception provided therein – had to be applied in a strict manner because the request for petition was an exceptional legal remedy affecting legal security and that, therefore, the request was only to be allowed if a decision was deficient to a point that its maintenance was unacceptable. Once again the EBA agrees on the point of departure. Until now R 106 has been interpreted in a strict and consistent way such that the objection within the meaning of this provision requires a distinct and explicit expression […]. The exception provided in R 106 is applicable only if a petitioner can persuade the EBA that it was hindered from raising the objection in the appeal proceedings. In the present case the EBA is indeed convinced that it is not necessary to invoke the travaux préparatoires. It should also be noted that the passages in the travaux préparatoires to which the [opponent] referred (CA/PL 17/00, numbers 5 and 6) contain “general remarks” regarding petitions for review and do not refer to specific provisions as they have since then been laid down in R 106. [8] Thus the EBA can endorse the argumentation of the petitioner that it had not been able to raise an objection against procedural violation (a) during the appeal proceedings because it discovered the fact that there had not been a decision on the request under consideration only when the written reasons for the decision were available. Admissibility – procedural violation (b) In its decision R 4/08 [2] the EBA found that an objection under R 106 has to be expressed in such a form that the BoA is able to recognise immediately and without doubt that an objection pursuant to R 106 – that is one which is additional to and distinct from other statements, in particular arguing or even protesting against the conduct of the proceedings or against an individual procedural finding – is intended by the party concerned. This decision and in particular the requirement that in addition to an objection against the conduct of the proceedings a distinct objection under R 106 has to be raised has been approved and applied or mentioned in several subsequent decisions (see the list in R 14/11 [2.6]). [10] The petitioner invokes the fact that by letter of January 31, 2011, it had filed requests (that the case be remitted to the first instance or that the proceedings be continued in writing, or that the OPs be postponed, respectively) and that it had maintained those requests in the OPs. In view of the short period remaining until the OPs, the requests would have helped it to react to the objection of lack of novelty raised in the communication of the BoA dated January 26, 2011. This was tantamount to raising an objection of a violation of the right to be heard. Therefore, this objection fulfilled the criteria set forth in R 4/08. The EBA cannot agree. It is true that the petitioner has raised an objection against the short period, but this only amounts to an objection against the conduct of the proceedings, which was raised before the violation of the right to be heard occurred. The petitioner did not raise an additional objection under R 106 later on, and even the petitioner has confirmed that it had not raised such an objection expressis verbis. It follows from the requirements for an objection within the meaning of R 106, i.e. that the underlying substantial procedural violation under R 112a(2)(a) to (d) and R 104 has to be indicated and – in case of OPs – be taken to the minutes (see R 4/08 [2.1-2]) that only an objection that has been made expressis verbis can be sufficient. As the EBA has stated in its decision R 14/11, a request for remittal or postponement does not qualify as an objection within the meaning of R 106; consequently this also holds true for a request that the proceedings be continued in writing. Thus the EBA comes to the conclusion that the request is inadmissible in view of procedural violation (b). Allowability – procedural violation (a) [11] Irrespective of the question whether the fax containing MEO2 had reached the members of the BoA before the OPs (of which the EBA is not convinced, see under [3] above), it has to be stated that a decision on the request to admit this expert opinion is not apparent in the minutes of the OPs or the written decision of the BoA. Thus the EBA is of the opinion that the BoA has objectively ignored the request of the petitioner to admit MEO2. It is irrelevant whether this was due to reasons for which the BoA cannot be blamed subjectively, for example because the expert opinion, which was filed shortly before the OPs had not reached the BoA. The only argument of the [opponent] in this respect – i.e. that the BoA had not decided on this request because it had not been asked to do so – is unpersuasive, for the same reasons as the arguments regarding the admissibility (see above under [4]).
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R 21/11 – Unheard
K’s Law – The ebook
[12] Therefore, in view of R 104 (b), the only question to be answered is whether the request on which there was no decision was relevant for the decision. In this respect the petitioner and the [opponent] had differing view on what the criterion “relevant” meant and, consequently, how it was to be applied in the present case. The petitioner argues that the relevance test did not consist in whether the request on which there was no decision would have made a difference for the decision, but in whether it could have made a difference. It refers to the fact that MEO2 dealt with the question how D8 would be interpreted by the skilled person and, therefore, provides evidence that, in its opinion, could have led to a different outcome regarding lack of novelty and inventive step. The [opponent] argues that the request to admit MEO2 was irrelevant for three reasons: firstly, because the request did not exist any more; secondly, because the expert opinion would not have changed the outcome, even if it had been admitted to the proceedings; and thirdly, because “relevant to that decision” (hierfür relevant) in R 104 meant “relevant to the decision as a whole” (relevant für die gesamte Entscheidung) and because, therefore, the expert opinion would not have made a difference because the requests that would have been found to be novel would necessarily have been found to lack inventive step. [14] The EBA dismisses the first argument of the [opponent] according to which this request did not exist any more, which is based on the same line of argument as the one used in respect of admissibility, i.e. that the petitioner had not mentioned the request when the BoA read out the requests of the parties and that, therefore, the request was obsolete. This argument cannot succeed, for the same reasons as above (see under [4] above) because the petitioner (actually, as admitted by the [opponent]) believed that MEO2 had been admitted to the proceedings. [15] As for the argument according to which MEO2 would not have changed the outcome, and the corresponding argument of the petitioner, the content of the expert opinion could have led to a different result, both parties have insisted in their argumentation on the decision and on MEO2 […]. The EBA cannot examine or decide whether taking account of MEO2 would have led to a different result because this would be tantamount to examining substantive questions related to the appeal proceedings, which cannot be the object of petition proceedings (see R 1/08 [2.1] and the travaux préparatoires cited therein). [16] This is also true because the question of whether the decision on the patent would be different if MEO2 was taken into account is the very question for which the Technical BoA alone is competent and which the BoA has to answer if the petition for review is found allowable and the proceedings before the BoA are re-opened. [17] When interpreting the requirement of R 104 (b), i.e. that the request must have been relevant to that appeal, it has to be taken into account that the ground for petition consisting in that a request has been ignored is a particular expression of the right to be heard and that this right exists independently of whether the party would have had to offer something that would have persuaded the BoA. In principle it would be wrong to define the relevance within the meaning of R 104 (b) so narrowly that the ground described in this rule would not be met whereas the ground under A 112a(2)(c) would be met under the very same circumstances. [18] Such an argument – i.e. that the request on which there was no decision was not relevant because its admission would not have made any difference – could only be successful if it was demonstrated that everything that was “lost” because of the non-admission was nevertheless taken into account in the decision under consideration. In the present case this means that […] it had to be apparent in the decision that the BoA completely dealt with all statements of MEO2 as to their substance in its decision. As the [opponent] has invoked the fact that MEO2, and, as a consequence, the fact that the BoA had ignored the request for its admission, was irrelevant, it should have provided corresponding evidence. The EBA is not convinced that this has happened. The written and oral arguments of the parties show that […] the parties differ on the meaning of MEO2 with respect to the teaching on the systemic treatment of insects that D8 would convey to the skilled person, and the EBA considers that it has not been sufficiently established that the BoA in its decision has taken account of all the arguments that the petitioner derives from MEO2. Therefore, the argument of the [opponent] is not persuasive. [19] The third argument of the [opponent] appears to circumvent the discussion of substantive questions insofar as it presupposes that the petitioner is right and that in the light of MEO2 the BoA would not have found the main and fourth auxiliary requests to lack novelty over D8. The [opponent] points out that irrespective of those requests all the other auxiliary requests of the petitioner had been found to lack inventive step and – as these requests were more narrow than the main request – the main request would necessarily have been unsuccessful, for the same reason as the auxiliary requests. According to the [opponent], “request relevant to that decision” (“hierfür relevanter Antrag”) means relevant for the whole decision; in other words, when the final result would be the same – even if for different reasons – then a request on which there was no decision could not be relevant.
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R 21/11 – Unheard
K’s Law – The ebook
The EBA cannot follow this argumentation. It is true that it does not require substantive questions to be considered in as much detail as the arguments of the parties regarding the content of MEO2, but it nevertheless leads into the forbidden ground of substantive questions. The EBA would have to compare the scope of protection of the individual requests of the petitioner, decide which are broader or narrower, put itself in the place of the BoA and decide whether the requests dismissed for lack of novelty would also have been dismissed for lack of inventive step. [21] The petitioner’s argument that MEO2, if taken into account, could have influenced the decision of the BoA on inventive step […], also has to be noted. As the question of inventive step, in particular over D8, was a subject of dispute between the parties, even before the appeal proceedings, one might be tempted to ask why evidence from MEO2 that could help the petitioner had not been filed before, but similar to what has been said in regard of the argument of the [opponent], the EBA cannot pursue this line of thought without dealing with the substantive questions related to the patentability of the claimed subject-matter. Moreover, the fact that the OD and the BoA have come to different conclusions on inventive step suggests that the case might not have been so clear that the decision was inevitable, as the [opponent] asserts. [22] The petitioner argues that the relevance test should not examine whether a request on which there was no decision would have led to a different outcome if there had been a decision, but whether it could have led to a different outcome. Generally speaking, the EBA agrees. It would not make sense to grant a petition for review if a request on which there had not been a decision could not have had any effect whatsoever on the outcome of the appeal, even if it is clear that the request had been ignored. However, if relevance was limited to cases where it was possible to establish beyond doubt that the outcome would have been different, the provision under R 104(b) would lose most of its power (irrespective of the fact that it would require a review of substantive questions). Therefore, the EBA is of the opinion that it is appropriate to define “relevant to that decision” (“hierfür relevant”) in R 104 (b) as suitable for leading to a different outcome of the appeal proceedings. [23] This opinion is in line with the case law of the EBA regarding the violation of the right to be heard as a ground for review, of which, as mentioned above (see [16]), the fact that a request has not been decided upon is a particular expression. According to the established case law of the EBA it is required that there is a causal link between the procedural violation of the right to be heard and the decision that has been taken, in the sense that the procedural violation was decisive for the decision (established case law following R 1/08 [3]), i.e. it cannot be excluded that the decision would have been different if the right to be heard on the issue in respect of which the party made a complaint, had been granted. This condition is fulfilled in the present case. Thus under the present circumstances the fact that MEO2 was ignored was relevant for the decision within the meaning of the case law of the EBA. [24] The EBA is of the opinion that the procedural violation (a) also constitutes a violation of the right to be heard (A 112a (2)(c) together with A 113(1)). The petitioner has argued that this violation occurred because MEO2 was ignored. However, the EBA traces it back to the fact that the BoA, as already established, has ignored the request to admit the expert opinion. The petitioner has filed the request and, according to its own submissions, has also mentioned the expert opinion in its argumentation during the OPs, but, as has turned out later, the BoA probably never received the request and has not decided on it. The BoA has heard the arguments of the petitioner but not within the framework of an admitted request to take into account the expert statement of the party’s expert. Therefore, under the unusual circumstances of this case, the petitioner was refused the opportunity to comment on its own request. If the request had been granted, it could have influenced the outcome of the proceedings, which means that there was a causal link between this denied opportunity to comment and the decision of the BoA (see R 1/08 mentioned above under [22]). [25] Thus the EBA finds that in view of procedural violation (a) both the grounds under A 112a (2)(c) and (d) and R 104(b) are fulfilled and that, therefore, the decision has to be set aside. Allowability – procedural violation (b) [26] As the EBA has decided that the request is inadmissible in view of substantial violation (b) (see above under [9] and [10]), the question of its allowability is irrelevant. Replacement of the members of the BoA [27] If the petition is allowable “[t]he EBA may order that members of the BoA who participated in taking the decision set aside shall be replaced” (R 108(3), second sentence). The use of the word “may” (“kann”, “peut”) is significant because it establishes that the EBA has the discretion to order or not to order a replacement of members of the BoA. This discretion has to be exercised in a just and appropriate manner, taking due account of 899 | 3398
R 21/11 – Unheard
K’s Law – The ebook
the facts of the case. For instance, if it turned out that the members that had participated in a decision to be reviewed were biased or could have been biased, or if they, because of their own decision, should have preconceived opinions on issues that should be examined afresh, then it could be appropriate (or, in case of a clear bias, required) to order replacement. However, if there is no acceptable reason for ordering a replacement, it should not be ordered, not least in order to avoid that the amount of money and time spent as a consequence of the re-opening of the proceedings further increases. [28] The petitioner has argued that if the composition remained unchanged, the same persons would again decide on the same issues. This argument appears to contradict the main argument of the petitioner according to which MEO2 and the corresponding request had not been considered and their consideration would lead to a different result. If they are now considered, then the questions on file are different because then MEO2 is taken into account (if it is admissible), which is precisely what the petitioner desires. [29] The further arguments of the petitioner, i.e. that there might be a bias if replacement is not ordered, are not persuasive either. In the present case there are no signs of bias. The EBA is of the opinion that the assertion of the petitioner, according to which this case was similar to T 1028/96, is somewhat far-fetched. In this early decision it is stated (see point [6.5] of the reasons] that this case was “very particular” and essentially concerned the configuration where the same questions were submitted twice to the very same BoA member, which, as already stated (see above under [27]) is the opposite of the present situation. [30] The first step in re-opened appeal proceedings will be to deal with the request to admit MEO2 into the appeal proceedings. The EBA does not see any reason why the members of the BoA that dealt with the appeal before could not decide on this request, which they have not dealt with before. Nor does the EBA see any good reason why these members could not examine the case afresh, including MEO2, if the request is admitted. The only issue to be decided in the framework of the request to maintain the impugned patent […] is whether the additional evidence makes a difference. Replacing the previous members would mean that a BoA in new composition would have to carry out afresh the whole appeal proceedings, spending a corresponding amount of money and time, in order to come to a final decision, which would be unnecessary and disproportionate in the present circumstances. Although it is up to the BoA to determine how to deal with the re-opened proceedings, there is no apparent reason why it will not be able to decide the case speedily. This is in the interest of the public and the parties, in the case of the petitioner not least because of the provisions of A 112a (6). Reimbursement of the fee for petitions for review [31] The fee for petitions for review is to be reimbursed although the request of the petitioner for replacement of the members of the BoA is not granted and, as a consequence, the requests filed by the petitioner in its petition for review are only partly allowed in the present decision. Pursuant to R 110, the EBA shall order the reimbursement of the fee for a petition for review if the proceedings before the BA are reopened. Whenever the the proceedings are to be re-opened, the fee has to be reimbursed. Since then, the BoA has changed its composition of its own motion because the former chairman will retire in early 2013. Consequently, there will be a new chairman when the BoA will take its decision. My personal guess is that the BoA will still revoke the patent. To download the whole decision (in German) or have a look at the file wrapper, just click here. NB: Would you be so kind and participate in the poll on translations of decisions (on the blog).
900 | 3398
T 1033/08 – Quite Exceptional
K’s Law – The ebook
T 1033/08 – Quite Exceptional 10 Nov 2012
In this case the Board dealt with questions related to reformatio in peius. Only the opponent had filed an appeal after the Opposition Division (OD) had maintained the patent in amended form. Claim 1 of the main request before the Board read (the differences with respect to claim 1 as maintained are highlighted): An ablating system for ablating body tissue, comprising: multiple emitters (30, 201, 202, 203) of ablating energy; two or more temperature sensing elements (80, 208, 209, 210) at each energy emitter for measuring temperature at the energy emitter; a power controller (230) coupling a source of ablating energy to each energy emitter to convey ablating energy to the energy emitters; a processing element (215) which is adapted to periodically read the temperatures measured by each of the temperature sensing elements forof each energy emitter and to select for eachat least one said energy emitter the hottest one of the measured temperatures, and to compare the hottest one of the temperatures for the or each said energy emitter to a desired temperature, and which is adapted to generate a signal individually for each energy emitter based upon the comparison wherein the desired temperature is established for all emitters; and a temperature controller (215) coupled to the power controller; the temperature controller which is adapted to individually control the conveyance of energy to each energy emitter based upon the signal for that energy emitter to maintain the hottest temperature at all energy emitters essentially at the desired temperature during tissue ablation. The opponent argued that this amendment broadened the scope of the claim, which was contrary to the principle prohibiting reformatio in peius. The Board agreed: [3] Claim 1 as upheld by the OD […] is restricted to the selection of the hottest one of the measured temperatures for each energy emitter of the ablation system for comparison to a desired temperature […]. By contrast, claim 1 of the main and the first auxiliary requests is of broader scope since the selection of the hottest one of the measured temperatures is carried out for at least one of the energy emitters. Consequently, the subjectmatter of claim 1 of the main and first auxiliary requests, by covering the possibility of selecting the hottest one of the measured temperatures for any selection of the energy emitters, is broader than that of claim 1 upheld by the OD. This results in an improvement of the proprietor’s position putting the sole [opponent] in a worse situation than if he had not appealed, contrary to the principle of prohibition of reformatio in peius. The opponent is the sole [opponent] against the interlocutory decision of the OD concerning maintenance of the patent in amended form according to the [patent proprietor’s] main request filed in opposition proceedings. The proprietor is not adversely affected and has implicitly indicated that he will not contest the maintenance of the patent in the version accepted by the OD (G 1/99 [9.1]). As ruled in G 9/92 and G 4/93 [headnote 2; 15-16], under these circumstances the patent proprietor is primarily restricted during the appeal proceedings to defending his patent in the form in which it was maintained by the OD. In particular, the patent proprietor is not permitted to improve his position to the detriment of the opponent and sole appellant. Amendments proposed by the patent proprietor as a party as of right under A 107, second sentence, may be rejected as inadmissible by a board of appeal if they are neither appropriate nor necessary. Contrary to the [patent proprietor’s] view, G 1/99 does not supersede G 9/92 and G 4/93, but is complementary thereto in that it gives directions for allowing an exception to the principle of prohibition of reformatio in peius as defined in these decisions. However, the exception to this principle developed in G 1/99 does not apply in the circumstances of the present case for the following reasons. 901 | 3398
T 1033/08 – Quite Exceptional
K’s Law – The ebook
G 1/99 only deals with the deletion of a limiting feature added during the opposition procedure. The exception to the principle of prohibition of reformatio in peius applies to this situation only (see point [2.3] of the reasons). In fact, in order to allow such a deletion which puts the opponent and sole appellant in a worse situation than if he had not appealed, the following conditions must be fulfilled: A limiting feature introduced during the opposition procedure has to be deleted. The necessity for its deletion must be caused by the appeal. This means that the deletion is necessary and appropriate because it is related to a ground of opposition and caused by new facts, evidence or arguments put forward by the [opponent], or because of a different evaluation of the situation by the board of appeal. Without the deletion, the patent would have to be revoked. It is not possible to overcome the objection by introducing new features which limit the scope of the patent as maintained. Only if these preconditions are fulfilled, an objection may be overcome by introducing new features which extend the scope of the patent as maintained, but within the limits of A 123(3) according to the second option of G 1/99. The amendment requested with the main and first auxiliary request, viz. replacement of the word “each” by “at least one” in feature (D4) of claim 1, is not a deletion of a limiting feature but a substitution of this feature. It does not overcome an objection raised with the appeal and it is not caused by a different evaluation by the Board. The objections against the claim in the version maintained by the OD can be overcome by amendments which do not extend the scope of protection […]. The inadmissible amendment held allowable by the OD in its interlocutory decision relates to [another feature], and this deficiency does not have the consequence that the patent would have to be revoked. Accordingly, the present amendment does not fulfil the preconditions defined in G 1/99 for justifying the exception. The [patent proprietor’s] argument that the filing of fresh prior art (documents E7 and E8) by the sole [opponent] at the appeal stage should permit the [patent proprietor] to retract amendments made by him before the OD is not accepted by the Board. It is true that G 1/99 [12] states that the non-appealing proprietor deserves protection for reasons of equity when new facts have been introduced in appeal proceedings, and that the patent can exceptionally be amended in a way that offends the principle of prohibition of reformatio in peius. However, this is possible only if a limitation proves impossible (point [15] of the reasons). In the present case, the [opponent’s] objection based on the above-mentioned new documents, which was raised against the version maintained by the OD, does not require any limiting amendment of the claims. To deal with new prior art documents, the [patent proprietor] either has to distinguish from it by argument or by making further restrictions to the claims upheld by the OD. The [patent proprietor] may not in principle request another version of the patent during appeal proceedings, unless this version is a restriction of the maintained version (see G 1/99 [9.1]). [… T]he [patent proprietor’s] arguments regarding the new prior art have already convinced the Board, without the need for introduction of any further distinguishing amendments of the claims. From the above it follows that the main and the first auxiliary requests are contrary to the principle of prohibition of reformatio in peius and do not fulfil the conditions for an exception. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
902 | 3398
T 547/08 – Si Nihil Aliud
K’s Law – The ebook
T 547/08 – Si Nihil Aliud 9 Nov 2012
This is an appeal by the opponent against the maintenance of the opposed patent in amended form by the Opposition Division (OD). Claims 1 to 14 of the patent as granted referred to a system for controlling a dialysis machine, claims 15 to 21 to a method for controlling such a machine and claims 22 to 29 to a user interface for a dialysis machine. In the claims as amended, claims 22 to 29 were directed at a dialysis machine comprising a user interface. The opponent pointed out that this amendment violated A 123(3). It also requested the Board to refer the following questions to the Enlarged Board (EBA): 1. Which criteria should be applied when deciding whether a change to a patent claim in opposition proceedings from a first physical entity results in a more complex physical entity which qualifies as an aliud and thus constitutes a violation of A 123(3)? 2. Is it consistent with the safeguarding of legal certainty for third parties as required by the Protocol on the Interpretation of A 69 if, in at least one designated Contracting State, that change to the claim confers rights on the patent proprietor for the first time which did not exist for the claim as granted? Here is the verdict of the Board: Scope of protection [3.2] Claim 22 as granted was directed to a user interface (12) and screen display apparatus for a dialysis machine (10) that promotes ease of use of said user interface (12) by a user operating said machine (10) without immediate supervision by trained professional medical personnel, comprising features Q to U. Claim 22 as maintained by the OD, on the other hand, is directed to a dialysis machine comprising a user interface (12) and screen display apparatus that promotes ease of use of said user interface (12) by a user operating said machine (10) without immediate supervision by trained professional medical personnel, comprising features Q to U. Accordingly, the scope of protection has been changed from “a user interface and screen display apparatus” per se [suitable] for a dialysis machine, i.e. a device A for a device B, to “a dialysis machine comprising a user interface and screen display apparatus”, i.e. a combination of the two devices B and A. The remaining claimed features, Q to U, are identical in both cases. In the Board’s view, the scope of the claim as maintained has been restricted vis-à-vis that of the claim as granted since the subject-matter upheld explicitly comprises the dialysis machine as an additional feature, instead of mere suitability of the user interface and screen display apparatus for a dialysis machine. The appellant’s arguments relating to the rights of the patent proprietor to sue for indirect or contributory infringement are not relevant to the issue of extension of scope of protection under A 123(3). According to G 2/88 [3.3] a distinction is to made between the protection conferred by a patent as determined by the claims according to A 69(1) and the rights conferred on the patent owner in the designated Contracting States according to A 64. According to G 2/88 the rights conferred on the proprietor of a European patent under A 64(1) “are the legal rights which the law of a designated Contracting State may confer upon the proprietor, for example, as regards what acts of third parties constitute infringement of the patent, and as regards the remedies which are available in respect of any infringement”. In G 2/88 [3.3] it is clearly ruled that it is not necessary to consider the national laws of the Contracting States in relation to infringement and that this issue is not relevant when deciding upon admissibility of an amendment under A 123(3).
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T 547/08 – Si Nihil Aliud
K’s Law – The ebook
With respect to the question of extension of scope of protection under A 123(3), it is rather appropriate to take into account that the protection conferred by a patent is determined by the terms of the claims, and in particular by the categories of the claims and their technical features, in accordance with A 69(1) and its Protocol (G 2/88). According to the latter, A 69 should be interpreted as a compromise between a fair protection for the patentee and a reasonable degree of legal certainty for third parties. The description and drawings may be employed to a certain extent to interpret the claims, rather than only for the purpose of resolving a possible ambiguity in the wording of the claims. In the present case, the wording of granted claim 22 is not directed to a user interface and screen display apparatus per se, being suitable for many kinds of devices other than dialysis machines. On the contrary, the expression “for a dialysis machine” is already to be regarded as a limiting technical feature. Moreover, the technical features S, T and U relating to the user interface and screen display apparatus are defined with reference to the dialysis machine and are closely related to its functional interaction therewith. In the description and drawings, the user interface and screen display apparatus is always presented in combination and interaction with the dialysis machine (see, for instance, Figure 1 and paragraph [0022] of the patent specification). Its protection in combination with a dialysis machine was clearly intended, even at the very beginning when the application was filed (see original claim 8). The decisions cited by the appellant to support his line of argument are not applicable to the present situation. The case underlying T 352/04 relates to a change from a substance to a combination of the substance and a device, which was regarded as a change of the claim category. In the present case, however, there is no such change of category. T 867/05 relates to a change from “a membrane material for use in dialysis ...”, i.e. a substance A for use in a method X, to “an artificial kidney in which there is used a membrane material...”, i.e. a combination of a device B and the substance A, which is also a situation quite different from the present case. Therefore, the appellant’s argument that the scope of protection has been shifted to an “aliud”, i.e. from a user interface and screen display apparatus to a dialysis machine, thus being in breach of A 123(3), is not accepted by the Board. Accordingly, the Board is satisfied that the scope of protection has not been extended and that claim 22 as maintained by the OD complies with the requirements of A 123(3). Referral to the EBA [4] Under A 112(1) a board shall refer a question to the EBA if it appears necessary in order to ensure a uniform application of the law or if a point of law of fundamental importance arises. Neither pre-condition is fulfilled for either of the two questions (1) and (2) proposed for referral by the appellant […]. The case law referred to above is not contradictory and not applicable to the present case, which concerns only devices and their technical features. A change from a (granted) claim, directed to a first physical entity, to a second, more complex physical entity (an “aliud”) in opposition proceedings is a common and usual procedure entirely in line with the requirements of A 123(3): adding one or more limiting technical features to a claimed device naturally renders the claimed entity more complex and results in a restriction rather than an extension of scope. Accordingly, question (1) is not of “fundamental importance”. Question (2) is not relevant either since the Board considers that the rights of the patentee have not been extended by the modification. As a consequence, the legal certainty of third parties is sufficiently safeguarded. Moreover, the admissibility of a referral under A 112(1)(a) presupposes that an answer to the question is necessary for the referring board to be able to decide on the appeal (cf. G 3/98 [1]). This is not the case here where the two questions are not relevant for deciding on the specific situation under consideration. A purely theoretical interest in clarifying points of law is no justification for a referral. Consequently, the request for referral to the EBA is rejected under A 112(1)(a). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
904 | 3398
T 1898/11 – Deal With It
K’s Law – The ebook
T 1898/11 – Deal With It 8 Nov 2012
In this decision the Board found the Examining Division (ED) to have violated the applicant’s right to be heard. Claim 1 before the Board read: 1. A method of retrieving a spoken document, the method comprising: converting speech associated with a spoken document into a lattice representation; indexing the lattice representation of speech; and upon receiving a query from a user, wherein the query comprises a combination of speech and text processing the speech and text query to enable data associated with the speech and text query to be used to search the indexed lattice representation of speech and return audio segments from the spoken document that match the user query.| [3.1] According to A 113(1), a decision by the EPO can only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. [3.2] It is the consistent case law of the Boards of Appeal, that the “grounds and evidence” under A 113(1) are to be understood as meaning the essential legal and factual reasoning on which the EPO has based its decision (Case Law, 6th Edition, VI.B.1.1). It is a contravention of A 113(1) if legal or factual reasoning which, according to a party, is clearly central to its case and could present a challenge to the decision in question were completely disregarded in that decision (see for example T 76[3]/04). [3.3] In R 19/10 [6.2] of the reasons, the Enlarged Board of Appeal agreed “in principle” with the petitioner in that case that A 113(1) guaranteed a party’s right to have the relevant grounds fully taken into account in the written decision, but added that this principle is not without any limitation … provided that the reasons given enable the parties concerned to understand whether the decision was justified or not, the deciding organ is under no obligation to address each and every argument presented by the party concerned. In R 17/11 [4] essentially the same statement is made. [3.4] In the view of the Board, a “relevant ground” in this context is an argument by a party which raises reasonable doubts as to the legal or factual basis underlying the reasons for the decision. Such an argument must be dealt with, if the parties are to understand the justification of the decision. [3.5] In the present case, the ED raised an objection under R 137(4) pre April 2010, and the appellant made a number of arguments […]. The question is what, if any, reasonable doubts these arguments created as to the legal or factual basis underlying the objection, and whether any such doubt which did arise was dealt with. [3.6] The Board finds that at least the following reasonable doubts arose, but were not dealt with. [3.6.1] [Argument (a)] [“Defining the subject-matter of original claim 1 as ‘the lattice representation of speech for the indexing of spoken documents’ neglected several features defined in the claim”] asserts that the ED’s formulation of the technical problem (for original claim 1) failed to take account of all the claimed features. That is an attack on the factual basis of the objection. Since the claim defined not only a lattice representation, but also features directed to making the representation searchable, the applicant’s argument did create a reasonable doubt as to whether the technical problem was properly formulated. In its written decision, the ED simply repeated the statement that the originally claimed subject-matter concerned lattice representation of speech for the indexation of spoken documents. The Board can see no explanation of how the claim features contribute to the formulation of the problem, and concludes that the decision did not deal with this relevant argument. [3.6.2] According to [Argument (c)] [“There were two differences between the original and the amended versions of claim 1, and they were such that the subject matter of the amended claim was wholly contained in that of the original. The Guidelines, at C-VI, 5.2 (ii) stated that an objection under R 137(5) should not be raised when a feature was added to a claim in order to meet an objection such as lack of novelty or inventive step.”] the subject matter of the amended claim is wholly contained in that of the original claim, and the Guidelines state that an objection under R 137(5) should not be raised when a feature is added to a claim in order to meet an objection such as lack of novelty or inventive step. It is evident that the applicant was referring to the 2010 905 | 3398
T 1898/11 – Deal With It
K’s Law – The ebook
version of the Guidelines, but the 2007 version makes the same statement at C-III, 5.2 (ii) with reference to R 137(4) pre April 2010. The argument attacks the legal basis of the objection: if the Guidelines apply in the way asserted, then R 137(4) pre April 2010 cannot debar the amendment. Unless that doubt is addressed, the applicability of the Rule is doubtful. The written decision explains neither why the objection would not go against the Guidelines, nor why it would be justified in this case to go against them. The Board finds this objection relevant, and that it was not dealt with. [3.6.3] [Argument (e)] [“(e) The subject matter of amended claim 1 was wholly within that of original claim 1, and so, if it had been filed together with the original claims, the applicant would not have been invited to pay an additional search fee for it. Reasoning as in T 708/00, an objection under R 137(5) should not have been made. As that decision stated, it was generally permissible to add features to a claim. ”] is similar to V (c), except that it refers to T 708/00 rather than to the Guidelines. The Board’s conclusions are the same. [3.7] In conclusion, the ED did not deal with relevant arguments, something which amounts to a substantial procedural violation. The decision under appeal should therefore be set aside and the appeal fee be reimbursed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
906 | 3398
T 1920/09 – Unusual
K’s Law – The ebook
T 1920/09 – Unusual 7 Nov 2012
The present decision reminds us that the use of unusual parameters in claims may backfire on the applicant. Claim 1 of the main request before the Board read (differences with respect to claim 1 as filed are highlighted): 1. A honeycomb structure in which plural honeycomb units are adhered through the intermediary of an adhesive layer and in the honeycomb unit plural cells are juxtaposed to each other in the longitudinal direction thereof through the intermediary of a cell wall, said honeycomb structure including a catalyst for reaction of converting gas, characterized in that each of the plural cells of the honeycomb unit has unsealed openings at both ends thereof in the longitudinal direction and the ratio of the specific surface area of the honeycomb unit to that of the adhesive layer is 1.0 or greaterfrom 1.1 to 10 in the finally completed honeycomb structure, wherein the specific surface area is measured by a single point method in accordance with JIS-R-1626. In what follows, the Board discusses the novelty of this claim: [3] According to the decision under appeal, the process of Claim 1 of the main request is not novel over either of D8 and D9. D8 is a European patent application pursuant to A 54(3), as it was published on 28 June 2006, i.e. after the filing date of the present application (24 January 2006). The same goes for D9, an international application published on 18 August 2005, i.e. after the priority date of the present application, i.e. 1 February 2005. The Board has no reason to deviate from the decision under appeal on this issue, for the following reasons: The disclosure of D8 [3.1] D8 […] discloses a honeycomb structural body comprising having [sic] pillar-shaped honeycomb structural porous ceramic members formed by arranging a plurality of cells side by side through cell walls and a sealing material layer interposed between the mutual ceramic members for bonding a plurality of the porous ceramic members in the presence of the sealing material layer, characterized in that the sealing material layer has a specific surface area of 10 to 100 m²/g. In D8 […], the specific surface area of the sealing material is represented by BET specific surface area (m²/g) per unit weight of the sealing material and measured by a one-point method according to JIS-R-1626 (1996) prescribed by the Japanese Industrial Standards. As shown in […] D8, the honeycomb structure 20 comprises a plurality of honeycomb units 30, adhered through the intermediary of an adhesive layer 23, whereby in the honeycomb units plural cells 32 are juxtaposed to each other in the longitudinal direction thereof through the intermediary of a cell wall 33. Each of the plural cells 32 of the honeycomb unit 30 has unsealed openings at both ends thereof in the longitudinal direction. The specific surface area of the adhesive layer 23 is from 10 to 100 m²/g […]. That specific surface is measured by a single point method in accordance with JIS-R-1626 […]. The honeycomb structure of D8 uses a material having a high specific surface area for making the cell walls, in order that catalyst components can be widely dispersed and carried on such a cell wall […]. This high specific surface area of the cell walls of the honeycomb unit, is however not quantified in D8, let alone the ratio thereof with the specific surface area of the adhesive layers. [3.2] Thus, the Board agrees with the only argument of the [applicants] […] that D8 does not mention any ratio of a specific surface area of the honeycomb unit to that of the adhesive layer of 1.0 or greater, nor any ratio of a specific area of the honeycomb unit to that of the coating layer of 1.0 or greater. This fact, which certainly constitutes a difficulty for assessing novelty, is however not decisive, as it merely represents a parametrical definition of a product that could well be defined otherwise, for instance by the process of manufacture from which the parametrically defined product is inevitably obtained. [3.3] A comparison of the present application with the process of D8 shows that: [3.3.1] The aim of the manufacturing process of D8 is to provide honeycomb structures, being excellent in bonding strength and thermal shock resistance, by using sealing material layers having high bonding strength 907 | 3398
T 1920/09 – Unusual
K’s Law – The ebook
and excellent durability, in order that the honeycomb has high conversion efficiency of the exhaust gas and a high removal efficiency of the particles included in the exhaust gas […]. Hence, D8, as well as the present application […], address conversion efficiency. [3.3.2] D8 discloses how to control the specific surface area of the adhesive sealing material […] and the specific surface area of the honeycomb unit […], and also discloses how to generally produce the honeycomb structure […]. [3.3.3] D8 […] illustrates the production of an alumina honeycomb structure, made up as follows: (a) A paste for the heat-resistant sealing material having the same starting materials of the paste illustrated in the present application […] and overlapping compounding ratios […]. (b) An alumina honeycomb unit prepared from starting materials […] identically corresponding to the starting materials used in the present application for producing an alumina honeycomb unit […], under process conditions […] which are identical to those used in the corresponding embodiment of the present application […]. (c) An adhesive layer provided on the surface of the honeycomb unit, by drying and firing under conditions […] which are identical to those used in the corresponding embodiment of the present application […]. (d) A coating layer of the same composition as the sealing layer applied on the outer surface of the honeycomb structure, as in the present application. [3.4] It is apparent from the above that, for the embodiments illustrated in D8, the same starting materials and process conditions have been used as disclosed in the present application. Hence, there is a strong presumption that the corresponding products should be the same. [3.5] Since the applicants decided to formulate the definition of the invention by an unusual parameter, the onus to convincingly establish novelty over the illustrated embodiments of D8 lies on them. The EPO cannot carry out comparative tests to establish whether the embodiments illustrated by D8 fulfil the condition specified in Claim 1 for the specific surface areas of honeycomb units and adhesive materials, i.e. to assess whether the claimed subject-matter is novel. [3.6] Although D8 is an earlier application by the [applicants], who thus might well have provided all of the necessary evidence concerning the embodiments of D8, no evidence whatsoever has ever been provided by the [applicants] in order to discharge their onus of proof. Therefore, the presumption that the claimed honeycomb structure is not novel having regard to the disclosure of D8 has not been displaced by evidence. No benefit of doubt can be accorded in this respect (e.g. T 1764/06 […]). [3.7] However, a European patent can only be granted on inventions which inter alia are novel (A 52(1)). [3.8] Therefore, in the absence of convincing evidence, novelty cannot be acknowledged having regard to D8 (A 54(3)). NB: T 1764/06 has been discussed on this blog (here). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
908 | 3398
T 415/11 – No Evidence
K’s Law – The ebook
T 415/11 – No Evidence 6 Nov 2012
Both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division to maintain the patent in amended form. The patent proprietor withdrew its appeal during the oral proceedings. The Board found the main request and the first auxiliary request to lack inventive step and then examined the second auxiliary request, claims 4 and 6 of which read: 4. A method for stabilizing one or more saccharides that are meningococcus C (MenC) immunogens upon lyophilization comprising: (a) dissolving the meningococcus C (MenC) immunogen in a dissolution buffer comprising at least one amorphous excipient and an amorphous organic buffer to form a mixture, wherein the amorphous excipient is sucrose, and (b) lyophilizing the mixture. 6. A lyophilized composition stabilized according to the method of claim 4 comprising at least one amorphous excipient, at least one amorphous organic buffer, and at least one meningococcus C (MenC) immunogen, wherein the amorphous excipient is sucrose. The Board fount claim 6 to lack inventive step: [38] The [opponent] submits that this subject-matter does not involve an inventive step because it cannot be considered to solve the underlying problem. The [opponent’s] approach is based on case law such as decision T 939/92, in which the board held that it followed from the principle that everything falling within a valid claim has to be inventive (see paragraph [2.4.2] of the decision) that it should be credible that the desired technical effect according to the problem to be solved is seen with substantially every embodiment of a claim (see paragraph [2.5.4] of that decision). [39] The [patent proprietor] submits that decision T 939/92 relates to circumstances where on the one hand the claims cover compounds of a broad structural variety, but where on the other hand there are only data proving an effect for one or very few of the many compounds. These are however not the circumstances here and therefore the reasoning of decision T 939/92 is not applicable to the present case. [40] The independent claim under consideration in decision T 939/92 related to chemical compounds which were summarized in the form of a Markush formula, i.e. the claims covered in fact a wide variety of compounds. However, in the present board’s understanding, the issue as to whether all compounds covered by the independent claim have the technical effect according to the problem to be solved did not arise because the number of claimed compounds was large, but because the claim was drafted such that it referred to the compounds per se without stating the effect to be achieved according to the problem to be solved. That this was also the board’s view in decision T 939/92 may be inferred from paragraph 2.2.1 of the decision: “However, the present independent claim covers certain chemical compounds per se, and not just those compounds having a particular biological activity. Hence the biological activity of these compounds is not an essential technical feature of the claimed subject-matter, and thus not part of the definition of the claimed subject- matter.” [41] Also the product claims considered here do not recite any effect, let alone the one to be achieved according to the problem to be solved. Hence, therefore, in the board’s view, the reasoning of decision T 939/92 is applicable. [42] The [patent proprietor] further submits that the examples in the patent show that the use of sucrose and an amorphous organic buffer such as histidine or imidazole reduce the aggregation of MenC immunogen and thus make it credible that the inclusion of sucrose and an amorphous organic buffer improves the stability upon lyophilization of a composition comprising MenC immunogen. [43] The board notes that the claims under consideration here are directed to compositions containing “pure”, unconjugated, i.e. “protein-free” MenC polysaccharides […]. All the experiments in the patent were carried out 909 | 3398
T 415/11 – No Evidence
K’s Law – The ebook
with MenC polysaccharides conjugated to a protein carrier – a mutant diphteria toxin denoted as “CRM 197”. In other words, there is not a single result in the patent from an experiment with “pure” MenC polysaccharides. [44] Moreover, the patent specification consistently discloses that the instability of MenC-protein conjugates upon lyophilization is due to the protein part of the conjugate. [44.1] It is disclosed in paragraph [0004]: “Some problems are associated, however, with the use of the conjugate meningococcal polysaccharide vaccine MenC-CRM 197, and, indeed, with protein-containing vaccines in general. To extend the shelf-life of vaccines, formulations are frequently lyophilized. Lyophilization of MenC-CRM 197, however, can lead to protein aggregation during freezing and storage. In the case of MenC-CRM 197, the aggregates represent noncovalently bound, multimers of MenC-CRM 197 which apparently associate through hydrophobic interactions. The use of present dissolution buffer formulations, i.e. containing 10mM sodium phosphate (pH 7.2) as a buffer and 1.5% mannitol as an excipient, can yield aggregation as high as 9.5 to 10%. As aggregation increases, the concentration of available immunogen decreases. Therefore, a need exists for compositions and methods which overcome the problem of aggregation by stabilizing biological molecules against aggregation during lyophilization. 197 vaccine [sic] is composed of two fragments, A and B, covalently bound to one another. Fragment A has been found to be stable and highly resistant to denaturation. Fragment B, however, is highly sensitive to denaturation and is subject to proteolytic breakdown during lyophilization. As proteolytic breakdown increases, the concentration of available functional immunogen decreases. Therefore, a further need exists for compositions and methods of preparation of biological molecules that will minimize breakdown during lyophilization and storage.” [44.2] Moreover, it is stated in paragraph [0061]: “Use of histidine or imidazole buffers in the MenC-CRM 197 formulation increased the vaccine stability. Although the inventors do not wish to be bound to this mechanism, it is thought that stabilization maybe due to the interaction of the tryptophan of CRM 197 with the structurally similar imidazole ring.” [45] It is stated very generally in the patent, for example in paragraph [0022]: “The present invention provides buffer compositions, biological molecule compositions, and methods for the preparation and stabilization of biological molecules by reducing aggregation and breakdown of biological molecules upon lyophilization.” [45.1] However, in the board’s opinion, in the absence of supportive evidence, this general statement is not sufficient to establish in the context of the patent that stability of “pure”, i.e. unconjugated MenC polysaccharides is improved by inclusion of sucrose and an amorphous organic buffer. Both the patent and the prior art, such as for example document D4, explicitly teach only that aggregation during lyophilisation occurs with proteins. In other words, neither the patent nor any of the prior art documents in these proceedings report that polysaccharides, which are composed of hydrophilic sugar residues, aggregate during lyophilization and thus could be stabilized by reducing aggregation. Even if the heat and drying stress during lyophilization had a detrimental effect on polysaccharides, and be it even by aggregation, then, due to their different chemical nature - sugar residues versus amino acids - it is questionable whether polysaccharides could be stabilized by the same means as proteins. Also the [patent proprietor] alleges that proteins and polysaccharides have different stabilisation requirements during lyophilization […]. [46] In view of the circumstances depicted above, the board concludes that neither the patent nor the prior art provides convincing evidence that the claimed lyophilized compositions achieve the desired technical effect to be achieved in accordance with the underlying problem, i.e. the improvement of the stability of an unconjugated MenC polysaccharide-containing composition. [46.1] When the credibility that a technical effect is achieved by substantially all claimed compounds is at issue and in a situation where, as in the present case, it is prima facie unlikely that this is credible, it is – contrary to the [patent proprietor’s] view – not the opponent […], but the patentee […] who has the burden of proving that the effect is achieved (for example T 939/92 [2.6.1]; T 97/00 [3.1.6]). [47] The [patent proprietor] submits that the modifications applied by the [opponent] to its own meningococcus vaccine, Mencevax™, confirm that the inclusion of sucrose and an amorphous organic buffer in the formulation 910 | 3398
T 415/11 – No Evidence
K’s Law – The ebook
enhances not only the stability of conjugated, but also of unconjugated MenC immunogen during lyophilisation. It refers (i) to document D26 published in the year 2000 disclosing that the product Mencevax™, which contains unconjugated MenC polysaccharides and lactose but no buffer, has a shelf life of 2 years; (ii) to documents D37 and D37a published in the year 2008 disclosing that a modified Mencevax™, which includes sucrose and Tris, has a shelf life of 3 years; (iii) to document D38 disclosing that the new Mencevax™ vaccine contains Tris as a “stabilizing agent” and finally, (iv) to document D40, a report published by the Belgian Federal Agency for Medicines and Health Products and published in the year 2008, comparing the old and new Mencevax™ products, and coming on page 51 to the conclusion that the addition of Tris “assures pH stability over the new Mencevax ACWY shelf-life”. [48] The [opponent] submits that the change in the composition had not been made with the aim of increasing the stability of the composition, but was triggered by completely different considerations. [49] All documents D26, D37, D37a, D38 and D40 referred to by the [patent proprietor] are published after the priority date of the patent at issue. [50] Post-published evidence to support that the claimed subject-matter solves the problem to be solved is taken into account if it is already credible from the disclosure in the patent that the problem is indeed solved. In other words, supplementary post-published evidence may not serve as the sole basis to establish that the problem is solved (see for example decision T 1329/04 [12]). [50.1] Therefore, the board decided in decision T 1329/04 that the post-published evidence could not be regarded as supportive of evidence in the application as filed since there was not any. Therefore, the post-published evidence was considered to be the first disclosure going beyond speculation and was therefore not taken into consideration. [50.2] In contrast, for example, the board in decision T 1336/04, who was confronted with a different technical situation, namely one where the quality of evidence provided in the respective patent was such that the claimed invention was considered to be a bona fide solution to the problem to be solved, decided to take the disclosure in a post-published document into consideration as a further support (T 1336/04). [51] The present circumstances are that (i) there are no indications either in the patent or in the prior art that the stability of a MenC polysaccharide-containing formulation is improved by sucrose and an amorphous organic buffer and that (ii) the patent indicates that stability problems are caused by proteins. The board therefore sees the present situation as being closer to that in decision T 1329/04 than to that in decision T 1336/04 because the post-published documents relied on by the [patent proprietor] would, if the disclosures therein were suitable to support the [patent proprietor’s] view, be the first disclosures establishing that the problem was solved by the claimed compositions. The board decides therefore that these documents cannot be taken into consideration. [52] It follows that no decision is necessary therefore as to whether or not the disclosures in documents D26, D37, D37a, D38 and D40 demonstrate at all that the inclusion of sucrose and Tris in the formulation enhances the stability of a composition comprising unconjugated MenC immunogen during and after lyophilisation. [53] Hence, the board comes to the conclusion that not substantially all (in fact: none) of the claimed compositions can be considered as being improved unconjugated MenC-polysaccharide-containing lyophilized compositions and therefore cannot acknowledge that the problem is solved by the claimed subject-matter. [54] Besides the argument that the technical problem is not solved, no further arguments were submitted by the parties, for example as to the reformulation of the technical problem or as to whether or not a reformulated, solved problem could be considered as obvious in view of the prior art. [55] Consequently, auxiliary request 2 [… is] refused for failure to comply with the requirements of A 56. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 236/08 – Two Much
K’s Law – The ebook
T 236/08 – Two Much 5 Nov 2012
When you amend an independent claim, think of the trouble the dependent claims may cause … In the present case, the opponent filed an appeal after the Opposition Division had maintained the patent in amended form. Claims 1, 2, 7, and 10 of the main request (which was identical to claim 1 as maintained) read: 1. A particulate composition, for therapeutic use, suitable for administration by inhalation, wherein the particles consist of a solid solution comprising a therapeutic agent and a glassforming carbohydrate and that is capable of stabilising the agent during spray-drying and storage wherein the particles further comprise a physiologically acceptable carboxylate, nitrate, sulfate or bisulfate glass, and wherein the carbohydrate is selected from disaccharides, trisaccharides and oligosaccharides, the corresponding sugar alcohols, polysaccharides and chemically modified carbohydrates. 2. A composition according to claim 1, wherein the carbohydrate is a non-reducing glycoside of a polyhydroxy compound selected from sugar alcohols and other straight chain polyalcohols. 7. A composition according to any preceding claims, wherein the therapeutic agent is a protein or peptide, nucleotide, oligonucleotide or nucleic acid. 10. A composition according to Claim 7, wherein the therapeutic agent is insulin. The Board agreed with the opponent that this amendment violated A 123(2): [2.1.1] The feature “suitable for administration by inhalation” in claim 1 of the main request was not present in the claims as originally filed. On pages 25 and 45 of the description, inhalation is described as a particular way of administration in connection with the use of a specific class of carbohydrates, namely the HDCs (hydrophobically derivatized carbohydrates). In view of the specificity of the embodiments disclosed on pages 25 and 45, these passages cannot serve as a basis for a generalisation to a particulate composition as claimed in claim 1. The examples also cannot serve as a basis for the feature “suitable for administration by inhalation”, as inhalation does not appear to be the sole or the preferred exemplified way of administration. Inhalation appears to be only one possible alternative among other ways of administration. Indeed, the sole examples showing compositions having inhalation as their purpose are example 2 and its corresponding Figure 1 as well as example 10. The other examples show compositions used for other purposes or having a size which renders them unsuitable for inhalation. A basis for the feature “suitable for administration by inhalation” can however be found, as part of a list in several parts of the description of the application as originally filed. It appears from the following passages that inhalation is indeed one among several ways of administration disclosed in the description as originally filed:
on pages 9 and 14 […] the way of administration is presented as being either “mucosal, oral, topical, subcutaneous, intradermal, intramuscular, intravenous and by-inhalation”.
on page 42 […] suitable delivery methods of guest substances of the present invention include “transdermal, transmucosal, oral, gastrointestinal, subcutaneous, ocular, intramuscular, intravenous and by-inhalation”. 912 | 3398
T 236/08 – Two Much
K’s Law – The ebook
Consequently, the choice of the feature “suitable for administration by inhalation” in claim 1 of the main request has a basis in the application as originally filed and results from a choice among different possible ways of administration. A further consequence is however that the combination of the subject-matter of claim 1 with the subject-matter of any dependent claim which also results from a selection among different possibilities would constitute an unallowable selection from multiple lists. [2.1.2] The subject-matter of dependent claim 10 restricts the composition of claim 1 to a composition “wherein the therapeutic agent is insulin”. Insulin was disclosed in the application as originally filed in original claim 22 and its corresponding part of the description […] which read respectively “wherein the proteins are selected from the group consisting of enzymes, biopharmaceuticals, growth hormones, growth factors, insulin, monoclonal antibodies, interferons, interleukins and cytokines” and “include but are not limited to enzymes, biopharmaceuticals, growth hormones, growth factors, insulin, monoclonal antibodies, interferons, interleukins and cytokines”. Hence, the subject-matter of dependent claim 10 relates to a singling out from a list of possibilities concerning specifically the use of insulin. Its combination with the subject-matter of claim 1, which results similarly from a selection of possible ways of administration, constitutes a selection from multiple lists and has no basis in the application as originally filed. [2.1.3] The subject-matter of dependent claim 2 results also from a selection of possibilities, as regards the nature of the carbohydrate. The feature “non-reducing glycosides of polyhydroxy compounds selected from sugar alcohols, other straight chain polyalcohols” constitutes a singling out from a list of carbohydrates on page 18 […] and original claim 6. The combination of the subject-matter of dependent claim 2 with the subject-matter of claim 1 of the main request results from a selection from multiple lists and is not disclosed directly and unambiguously in the originally filed application. [2.1.4] The respondent had not provided any argument to counter the objections raised by the board under A 123(2) in its preliminary opinion. However in the written proceedings, arguments regarding the existence of a support for the feature “suitable for administration by inhalation” on page 5, line 6 to page 6, line were given by the respondent. The board does not contest that the feature “suitable for administration by inhalation” has a basis in the application as originally filed, although the passage cited by the respondent relates to the background of the invention and not to the invention itself, and does not form a valid basis for this amendment. Inhalation is indeed disclosed […] under “Background of the Invention” and presented in various forms, such as topical, transdermal, subdermal, ballistic forms and implantable therapeutic systems. Further passages mentioning this way of administration and forming a valid basis for an amendment were cited under point [2.1.1] above. The board does not contest that the subject-matter of claim 1 alone meets the requirements of A 123(2), since the feature “suitable for administration by inhalation” is a single selection among multiple possibilities. However, a combination of the subject-matter of claim 1 with the subject-matter of a dependent claim which also results from a selection among different possibilities infringes A 123(2). [2.1.5] Consequently, the combination of the subject-matter of claim 1 of the main request with at least the subject-matter of dependent claims 2 or 10 constitutes a selection from multiple lists and has no basis in the application as originally filed. Therefore, the main request infringes A 123(2). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
913 | 3398
T 611/08 – Killing The Pain (And The Patent)
K’s Law – The ebook
T 611/08 – Killing The Pain (And The Patent) 3 Nov 2012
The opponent filed an appeal against the decision of the Opposition Division (OD)to maintain the patent in amended form. Claim 1 of the patent as maintained (main request) read (the differences with respect to claim 1 as filed are underlined): The use of from 50 to 300 units of a botulinium toxin for the manufacture of a medicament for treating pain associated with a muscle disorder, whereby the muscle disorder is a hand, wrist, forearm or leg spasticity condition secondary to a stroke or a cerebral vascular event. [1] A 123(2) prohibits amendments generating “subject-matter which extends beyond the content of the application as filed”. In order to determine whether or not the subject-matter of an amended claim satisfies this requirement it has to be examined whether that amended claim comprises technical information which a skilled person would not have objectively and unambiguously derived from the application as filed. It was agreed that the published “A1” application represented the application as filed. [2] Claim 1 of the main request differs from claim 1 as filed by the inclusion of a dosage interval (“from 50 to 300 units”) and by the definition of the muscle disorder as being “a hand, wrist, forearm or leg spasticity condition secondary to a stroke or a cerebral vascular event”. [3] The OD concluded that these new features in claim 1 of this request had a basis in the example described on page 8, lines 10 to 20 of the published “A1” application, which reads as follows: “Example 9 The use of Botulinum toxin Type A-G in the Treatment of Muscle Spasms and Control of Pain Associated with Muscle Spasms in Spasticity Conditions Secondary to Stroke, Traumatic Brain or Spinal Chord Injury [0062] A male, age 70, post-stroke or cerebral vascular event, is injected with 50 to 300 units of Botulinum toxin in the major muscles involved in severe closing of hand and curling of wrist and forearm or the muscles involved in the closing of the legs such that the patient and attendant have difficulty with hygiene. Relief of these symptoms occurs in 7 to 21 days.” [4] However, the [opponent] maintains that the differences (i) to (iv) between claim 1 and Example 9 (paragraph [62]) of the published “A1” application (i) The age of seventy years is specified in the example, while omitted in claim 1; (ii) In the example, the muscle spasms were characterized as being severe and causing closing of hand and curling of wrist and forearm or the muscles involved in the closing of legs, while in claim 1 no degree of severity and no specific spastic symptom was indicated; (iii) The patient of the example suffered from more than one spastic muscle while according to claim 1, the muscles disorders of the hand, wrist, forearm or leg were linked by "or", indicating that only one muscle disorder at a time was considered; (iv) The example was not limited to the treatment of pain since it stated that the patient experienced relief of symptoms of severe closing of hand and curling of wrist and forearm or the muscles involved in the closing of legs upon administration of 50 to 300 units of botulinum toxin. have an influence on the dose of botulinum toxin to be administered. Hence, the interval “50 to 300 units” (Example 9) cannot be generalised, as done in present claim 1. [5] The board observes that the Example described on page 8, lines 10 to 20 of the published “A1” application (see point [3] supra) relates to the treatment of both the pain associated with muscle spasms (originating from spasticity conditions secondary to stroke, traumatic brain or spinal chord injury) and the muscle spasms themselves (see the title of the example and lines 18-19 of page 8, where it is stated that the “relief of these symptoms occurs in 7 to 21 days”). 914 | 3398
T 611/08 – Killing The Pain (And The Patent)
K’s Law – The ebook
Therefore, the board agrees with the [opponent’s] view that this example is not limited to the treatment of pain only. Example 9, in the board’s view, is indeed akin to Example 7 of the published “A1” application, which also deals with the treatment of both pain and spasms (see the wording “relief of pain associated with muscle spasms, possible reduction of jaw clenching occurs in about 1-3 days”). [6] Once it has been established that Example 9 on page 8, lines 10 to 20 of the published “A1” application is not limited to the treatment of pain, the question arises whether or not treating pain only (claim 1) requires the same dose of botulinum toxin as treating both pain and spasms (the example of the published “A1” application). [7] In connection with this, the [patent proprietor] has always insisted on the differences existing between the treatment of pain and the treatment of spasms (submission dated 3 April 2006, page 4, lines 3-4: “Treatment of pain does not necessarily involve a treatment of the muscle disorder per se”; submission dated 23 December 2010, page 3, lines 2-4: “As the claim is about the treatment of pain, the severity of the closure of the hand is obviously not relevant”; submission of 16 April 2012, page 3, last paragraph: “The treatment of muscle spasms is a separate effect”; submissions during the oral proceedings before the board: “The severity of spasms does not correlate 1:1 to the severity of pain” and “Severity of pain and not of spasm is relevant for the dose to be administered”). [8] The board notes that this [patent proprietor’s] view is in keeping with paragraph [0026] of the published “A1” application, according to which a smaller dose (up to 50 U) of botulinum toxin may be used for the relief of pain. [9] In view of the foregoing, the board must conclude that the dosage of “50 to 300 units” (Example 9 of the published “A1” application) was meant for the treatment of both severe muscle spasticity conditions and pain, not for the treatment of pain alone (present claim 1). Hence, the technical feature in present claim 1 that “50 to 300 units” botulinum toxin should be used for the treatment of pain only cannot be derived directly and unambiguously from the application as filed and the subject-matter of claim 1 of the main request does not satisfy the requirements of A 123(2). Finally the patent was revoked. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2344/08 – Simplification
K’s Law – The ebook
T 2344/08 – Simplification 2 Nov 2012
It is often difficult to obtain patent protection for a simplification of an existing device. Here is a case where a simplification was found not to be inventive. The only claim of the sole request before the Board (corresponding to claim 1 as granted) read: 1. Use of a humidity augmenting apparatus consisting of a water source, a non-porous hydrophilic membrane, optionally at least one opening for filling the apparatus with the water source, and optionally a support material, wherein the non-porous hydrophilic membrane is coated or adhered onto the support material, wherein said water source contains water and at least one of a suspended solid, a dissolved solid, a pollutant, a salt, and a biological material, wherein said non-porous hydrophilic membrane allows the water to pass through the membrane and be emitted as water vapor into an airspace of an enclosed chamber, said nonporous hydrophilic membrane preventing the at least one suspended solid, dissolved solid, pollutant, salt, and biological material from passing through the non-porous hydrophilic membrane, wherein said non-porous hydrophilic membrane comprises one or more layers of hydrophilic polymers, said hydrophilic polymer being selected from a copolyetherester elastomer, a polyether-block-polyamide, a polyether urethane, a homopolymer of polyvinyl alcohol, a copolymer of polyvinyl alcohol, and mixtures thereof, further wherein the one or more layers of hydrophilic polymers have a water vapor transmission at a thickness of 25 microns of at least 400 g/m²/24hours according to ASTM E96-95 (procedure BW), said water vapor transmission rate being measured at an air temperature of 23º C, relative humidity of 50% and an air velocity of 3 m/s, for providing moisture to an airspace of an enclosed chamber. The Opposition Division (OD) had found this claim to lack inventive step. [2.1] The patent in suit is concerned with the use of a humidity augmenting apparatus, comprising a non-porous hydrophilic membrane, for providing moisture to an airspace of an enclosed chamber. [2.2] D4 is considered to represent the closest prior art. Said document discloses a humidifier comprising a water supply reservoir (2) and a water-evaporation conduit (1) consisting of a water evaporation tubing (3) of a porous hydrophobic polymeric material and of a continuous non-porous hydrophilic water-vapour permeable membrane (4) coated onto or attached to the inner side of the tubing […]. The non-porous hydrophilic membrane (4) may consist of a polyurethane resin containing oxyethylene groups having a water vapour transmission of at least 1000 g/m²/day, preferably in the range of 5,000 to 90,000 g/m²/day […]. The humidifier device of D4 further comprises a fan (11) which blows air over the surface of the water-evaporation conduit which entrains the water vapour emanating from the conduit. The air and entrained water vapour are blown out of the humidifier equipment into the surrounding environment, thus humidifying it. [2.3] Having regard to D4, the object of the patent in suit is to provide a simplified humidifying apparatus useful for providing moisture to an airspace of an enclosed chamber. [2.4] As a solution to the above defined problem, the patent in suit proposes the use of a humidifying apparatus according to claim 1, characterized in that the apparatus consists only of a water source, a non-porous hydrophilic membrane and an optional support material for coating or adhering the membrane onto it, and in that the apparatus is used for providing moisture to an airspace of an enclosed chamber. [2.5] As to the success of the solution, due to the term “consisting of”, the wording of the claims thus excludes the presence of further essential parts or equipment, such as a fan, for blowing air over the surface of the waterevaporation membrane.
916 | 3398
T 2344/08 – Simplification
K’s Law – The ebook
The board is therefore satisfied that the object of the patent in suit of providing a simplified humidifying apparatus, having regard to the closest prior art of D4, has been successfully solved. [2.6] It remains to be decided whether or not the claimed solution is obvious having regard to the prior art. In the board’s judgment, it belongs to the common technical knowledge that the water transport across a membrane and the evaporation of water vapour from the membrane’s surface (the pervaporation process) is controlled by the difference in chemical activities on the feed and permeate sides, respectively […]. Document D2 […] sets out in detail that for separation across a semi-permeable membrane to occur, a driving force (a gradient in pressure, concentration, temperature, electric field) has to be applied and maintained across the membrane. It is also explained that the gradient in chemical potential needs to be maintained by continuous removal of the migrating components from the side of the lower chemical potential, or otherwise chemical equilibrium would be reached and no further separation would occur […]. The skilled person would immediately realize that a fan which blows fresh (dry) air over the surface of the water-evaporation conduit and thus entrains the water vapour emanating from the conduit exactly serves the above-mentioned purpose of continuous removal of the migrating component from the side of the lower chemical potential and thus maintaining the driving force across the membrane. It is also obvious that a forced ventilation can be dispensed with if natural convection and diffusion are sufficient to maintain a gradient in chemical potential which is strong enough to keep the process going at the desired speed. It cannot be disputed that the water-evaporation conduit of D4, consisting of the porous hydrophobic polymeric tubing and the nonporous hydrophilic polymeric membrane attached to it, in combination with a water reservoir, would be sufficient to provide a certain amount of moisture to an airspace, even without the fan proposed in D4. Therefore, the board cannot see any inventive idea in the concept of omitting the fan from the humidifier disclosed in D4, at the cost of a less efficient humidification process. [2.7] Another matter of course is to realize that the humidifying equipment of D4 can be used for providing humidity not only to an open airspace, but also to an airspace of an enclosed chamber. In the latter case, it would be apparent to those of skill in the art that - depending on the relative size of the said enclosed airspace – at some point saturation and/or condensation of water vapour would occur. The board observes in this context – as did the OD – that claim 1 on file neither puts any limitation on the properties of the enclosed chamber in terms of its size and shape nor contains a feature concerning the degree of humidification to be achieved. Thus, this particular claim feature does not support the presence of an inventive step, either. [2.8] The board cannot, thus, come to any other conclusion than the OD in the contested decision, namely that it is self-evident and does not involve an inventive step to use a humidifying equipment known in its essential features from D4, but without a fan, in an enclosed chamber for the purpose of providing moisture to an airspace of said enclosed chamber. [2.9] According to an argument of the appellant, D4 taught the use of a hydrophilic coating to prevent contamination of the conduit tubing, but this hydrophilic coating was allegedly not the same as the non-porous hydrophilic membrane which was the essential feature of the simple humidity augmenting apparatus in accordance with the present invention. The board disagrees with this argument. The polyether urethane - which is one of the preferred materials for the non-porous water-vapour permeable hydrophilic membrane in accordance with the patent in suit - falls under the definition of a polyurethane resin containing oxyethylene groups, specifically recited in D4 as a membrane material (see column 2, lines 50 to 58), the oxyethylene groups in the diol component of the polyurethane (usually polyoxyethylene glycols [PEG] or polyoxypropylene glycols [PPG]) containing polyether moieties. To the extent that the appellant’s argument suggests that D4 only disclosed a hydrophilic membrane coating, it is sufficient to point out that the patent in suit explicitly encompasses coatings of the non-porous water-vapour permeable hydrophilic membrane material on a support material (see claim 1). [2.10] In conclusion, the subject-matter of claim 1 as granted does not fulfil the requirements of inventive step (A 56). Regardless of whether the Board was right or not in the present case, I would think that inventions consisting in simplifications (i.e. omission of features present in the prior art product) are stepchildren of the patent system, which appears to be better suited for “complexifying inventions” (i.e. where features are added to the prior art product). Certainly the problem-solution approach of the EPO is better suited for the case where the invention adds features to the prior art rather than omitting features.
917 | 3398
T 2344/08 – Simplification
K’s Law – The ebook
Should you wish to download the whole decision, just click here. The file wrapper can be found here.
918 | 3398
T 478/09 – Words
K’s Law – The ebook
T 478/09 – Words 1 Nov 2012
In this decision the Board examined the terms used in claim 19 of the patent as granted, which read: 19. A metal cyanide catalyst in the form of particles having an average particle size, as determined by transmission electron spectroscopy, of from about 5 to about 500 nm, prior to contact with an alkylene oxide. [7] The contested feature of Claim 19 (“average particle size, as determined by transmission electron spectroscopy, of from about 5 to about 500 nm”) is made up of the following items of definition: (a) (what) average particle size; (b) (determined how) by transmission electron microscopy (TEM); and (c) (expressed how) about 5 to about 500 nm. [7.1] As regards the first item, it comprises two notions, “average” and “size”. [7.1.1] The notion “size” is based on the assumption that a single dimensional property is indicative of the particle size. However, particles are three-dimensional objects, for which at least three parameters (length, breadth and height) are required to provide a complete description. The measurement of some one-dimensional property of a particle and the reference to a sphere in order to derive one unique number, namely of the sphere having the same response (diameter, cross-sectional area, volume, weight, sedimentation rate, etc.) as the particle under examination, is known as “equivalent sphere approximation”. In respect of this notion, Claim 19 does not specify which size is meant (larger/smaller dimension of the particle, diameter of a sphere having the same surface, cross-sectional area or volume, etc.). [7.1.2] As to the notion “average” (mean), it is not in dispute that transmission electron microscopy (TEM) generates a two-dimensional image of the particles contained in the sample, wherefrom the particle are characterized. On this image, a number of sizes can be measured, such as maximum or minimum diameter of the particle, which are then summed and divided by the number of particles, to obtain a number-length mean. It is also possible to mathematically convert the diameters measured to obtain a volume or mass mean, whereby however the conversion increases the error of the measurement. As regards the “average”, Claim 19 does not specify what is meant (number-, volume-average, etc.). So it encompasses any of the common averages obtained from TEM. [7.2] As to the second item of information, Claim 19 does not specify how the method of measurement, i.e. TEM, is actually carried out, e.g. as regards sampling, determination, measurement, treatment of data, etc. [7.3] As regards the third item of information, it merely quantifies the concept of average particle size by a nanometric range. Since no statistical deviation is mentioned, the actual distribution of the particle sizes is thereby not defined. [7.4] It follows from the foregoing that the definition of Claim 19, in particular the “average particle size”, is not as clear as possible. In this respect, the present decision is in line with decision T 1819/07 [3.5]. Thus, Claim 19 is to be construed. The construed subject-matter of Claim 19 [8] Claim 19 concerns a metal cyanide catalyst in the form of particles having an average particle size, as determined by TEM, of from about 5 to about 500 nm, prior to contact with an alkylene oxide. [8.1] In relation to the general process of manufacture, the patent in suit mentions that “the DMC catalyst complex can be prepared at such small particle sizes by precipitating it in the dispersed aqueous phase of a water-in-oil emulsion” […] and that “conditions are selected such that the aqueous phase forms droplets of about 500 nm or smaller in diameter” (emphasis added) […]. Since the particles are formed within those droplets, their maximum size (diameter) also lies within the upper limit of 500 nm. Hence, the feature “in the form of particles having an average particle size” is construed as implying that all particles have such an average size. 919 | 3398
T 478/09 – Words
K’s Law – The ebook
[8.2] For the range of 5 to 500 nanometres, as defined in Claim 19, the patent in suit does not generally define what average and what size are meant. [8.3] Only in relation to the description of preferred embodiments does the patent in suit mention a volume average particle size, as follows: (a) “The particles preferably have a volume average particle size from about 10 nanometres, such as from 40 nanometres, to 300 nanometres, more preferably 250 nanometres, especially to 200 nanometres, most preferably to 150 nanometres” […]. (b) “This catalyst has a volume average particle size of about 40 nanometres” […]. No details of how the volume average particle sizes have been computed from the measured values is disclosed. [8.4] It follows from the foregoing that: (a) The interpretation invoked by the appellants (the objected feature is not suitable to impart any limitation, it should not be considered) cannot be retained, as it disregards the whole disclosure of the patent (Case law, II.B.5.1). (b) The interpretation invoked by the respondents (the objected feature concerns a volume average particle size) cannot be accepted either. The limitation “volume average particle size” appears in the description only in relation to preferred embodiments. So it cannot be read into Claim 1 also for the generic range of 5 to 500 nm (Case law, II.B.5.3.4). [8.5] Hence, the average particle size defined in Claim 19 encompasses particles having any size ranging from 5 to 500 nm measured or computed and averaged from distributions commonly obtained with TEM equipment. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
920 | 3398
T 2433/09 – Boomerang
K’s Law – The ebook
T 2433/09 – Boomerang 31 Okt 2012
When a patent (or application) does not contain any evidence that the underlying problem is indeed solved, the patent proprietor (or applicant) is in a bad position because it has to argue that this was credible, on the basis of common general knowledge (CGK). This, however, will prove problematic at a later stage of the problemsolution approach where the very same CGK then suggests that this solution was indeed obvious to the skilled person. The present case provides an example of such a situation. Claim 1 of the main request on file read: 1. A vehicle for a hot melt ink-jet ink, the vehicle comprising from 35 to 98% by weight of a radiation curable material and a thickener, said vehicle being a thixotropic paste at 20ºC, preferably also at 25ºC, and said vehicle having a viscosity of less than 25 centipoise at least one temperature in the range of from 40ºC to 130ºC. The Board found document D0 to be the closest prior art and then pursued the assessment of inventive step: [3.4] As the next step according to the problem-solution approach, it is necessary to determine the problem which the claimed invention addresses and successfully solves in the light of the closest prior art. [3.4.1] The [patent proprietor] defined the problem to be solved in view of document D0 as lying in the provision of an ink-jet ink affording better flow properties within the printer apparatus, and improved image quality and durability. The solution as defined in claim 1 of the patent in suit relates to a vehicle for a hot melt ink-jet ink characterised in its higher content of radiation-curable material and lower content of thickener, and being a thixotropic paste at 20ºC. [3.4.2] The board would like to emphasise in this context that the patent in suit itself does not contain a single example of a printing process employing the claimed vehicles or inks, nor has any such data been supplied by the [patent proprietor] in the present opposition/appeal proceedings. Thus, no evidence has been provided that any of the alleged advantages have actually been achieved in comparison with the inks according to document D0 or any other prior art. Any positive assessment in this respect can therefore only be based on CGK and the known properties of the components of the claimed compositions. [3.4.3] Concerning the alleged advantage of improved flow properties within the printer apparatus, the [opponent] disputed that this had been plausibly demonstrated. Indeed, according the printing process disclosed in document D0, at the operating temperature of the printing apparatus, the ink is in a liquid state in the printer head […], and therefore possesses good flow properties. Therefore, it does not appear to be credible that any advantage in this respect would be observed by employing the present vehicle in the printer apparatus disclosed in document D0. [3.4.4] The remaining two advantages relied on by the [patent proprietor] were improved print quality and durability. In view of the fact that the [opponent] explicitly acknowledged that these two advantages could be regarded as having been achieved by the subject-matter claimed, the board sees no reason to differ. Indeed, as explained in more detail under point [3.5.1] below, the paste-like consistency of the claimed vehicle at room temperature could be expected to allow controlled mingling of droplets to occur on printing, thus improving image quality. Additionally, it can be accepted that larger amounts of curable material in the ink would increase the durability of print. [3.4.5] Consequently, the board considers it to be plausible that the problem as defined above under point 3.4.1 has been successfully solved as far as the aspects of improved print quality and durability are concerned. 921 | 3398
T 2433/09 – Boomerang
K’s Law – The ebook
[3.5] It remains to be investigated whether the proposed solution would have been obvious to the skilled person in the light of the prior art. [3.5.1] […] D0 already discloses the principle of combining the advantages hot-melt and radiation-curable inks by formation of inks comprising “wax and resin whose melting point is 40-70ºC” and “ultraviolet ray setting resin”. On heating, the inks become liquid and jettable, and at room temperature they return to their initial “solid or semi-solid” state […]. Through the reference to “semi-solid”, the skilled person would already derive the clear teaching that a range of consistencies may be tolerated in the inks according to document D0. Further confirmation thereof can be found in paragraph [0020], wherein it is suggested that the viscosity of the ink at room temperature may be adjusted, as need demands. It must be emphasised in this context that, starting from the solid ink composition specifically exemplified in document D0 and faced with problem of improving image quality and durability, the skilled person would have had at his disposal the same CGK as that relied on above under point [3.4.4]. Thus, as outlined above under point [3.4.4], the skilled person would have been aware of the fact that a vehicle having a semi-solid or paste-like consistency would allow controlled mingling of droplets to occur. This is also derivable from document D0 itself, which discloses that liquid inks suffer from colour bleed […], whereas no spread of the ink droplets occurs in the exemplified solid inks […]. It follows that a substance having an intermediate viscosity behaviour, between that of a liquid and a solid, would be expected to provide the required intermediate extent of mingling of droplets, and thus provide a solution to the problem of image quality. Moreover, the skilled person would have been aware of the properties imparted by the various components of the ink according to document D0. Thus, the known purpose of the radiation-curable component in ink-jet inks is to provide a hardened film when subjected to an external energy source […]. Therefore, as outlined above under point [3.4.4], greater amounts of curable material in the ink would be expected to increase the durability of print. Similarly, the wax component in document D0 is known to impart the solid consistency of the ink at room temperature […]. In view of the above, it would be within the normal routine of a skilled person, and within the teaching of document D0, to adapt the exemplified ink composition in order to achieve the optimum balance of properties required for achieving image quality and durability, namely, by decreasing the amount of wax, in order to produce a product that was semi-solid at room temperature, and by increasing the amount of radiation-curable material, in order to improve hardening. […] The [patent proprietor’s main request is rejected for lack of inventive step. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
922 | 3398
T 1807/07 – Don’t Get It Twisted
K’s Law – The ebook
T 1807/07 – Don’t Get It Twisted 30 Okt 2012
This is an appeal against the revocation of the opposed patent by the Opposition Division. Claim 1 of the main request before the Board (and of the patent as granted) read: Process for production of a synthetic toothless substitute (28, 38) of pressed fine ceramic powder which can fit on at least one preprepared dental stump (1 0), where taking into account the shrinkage the inner surface (22) of a fully ceramic skeletal structure (14) of biologically compatible material is calculated, where the geometric conditions of the patient’s mouth are scanned and digitised, the data enlarged linear in all directions by a enlargement factor (f) compensating precisely for the sinter shrinkage, transferred to the control electronics of at least one processing machine and suitable tool paths derived from this, the enlarged design form of the skeletal structure (14) dense sintered to the direct end dimensions and then individualised by capping with coating material (24) of porcelain or plastic, characterised in that on the basis of the scanning and digitisation of a positive model (46, 47) of the situation in the patient’s mouth, taking into account the sinter shrinkage, an enlarged design form of the skeletal structure (14) with an inner and an outer surface (20,22) is produced by material removal from a blank (48) of porous ceramic, where the control commands are sent to a suitable machine tool for production of the enlarged design form of the skeletal structure (14) from the blank (48) temporally decoupled from the digitisation. (my emphasis) The crucial issue was whether the scanning and digitisation of a positive model of the situation in the patient’s mouth was disclosed in the application as filed. The opponents pointed out that the application only disclosed the scanning of the skeletal structure. The patent proprietor argued that claim 1 had to be read through the eyes of the skilled person and based on the description. The description referred to both the “positive model of the situation in the patient’s mouth” and the “positive model of the skeletal structure”, but it was clear to the skilled person that the claimed method only included the scanning of the positive model of the skeletal structure. The scanning of the positive model of the situation in the patient’s mouth was not disclosed or described. This interpretation was a possible variant but not supported by the description. Moreover, the use of the reference signs “(46, 47)” unambiguously indicated that only the positive model of the skeletal structure could have been meant. The Board was not persuaded: *** Translation of the German original *** [2.1] Claim 1 of the main request […] contains the technical feature according to which on the basis of the scanning and digitisation of a positive model (46, 47) of the situation in the patient’s mouth, taking into account the sinter shrinkage, an enlarged design form of the skeletal structure is produced by material removal from a blank of porous ceramic. However, the original application does not disclose such a method step. Contrary to its line of argument in the statement of grounds of appeal as well as in the opposition proceedings, the [patent proprietor] agreed to this assessment by the Board without restriction during the oral proceedings. The original description of the application (referred to as “the application” in what follows) clearly distinguishes between a positive model of the situation in the patient’s mouth (model 1, mostly made from plaster), which is made from a cast, and a positive model of the skeletal structure (model 2, mostly made from wax or plastic) which is fitted onto the paster model 1 […]. When reading the wording of claim 1 in the light of the description, the skilled person can only come to the conclusion that claim 1 only claims the scanning and digitisation of the “positive model of the situation in the patient’s mouth” because this feature is found both in the preamble and in the characterising portion of claim 1. The scanning and digitisation if the skeletal structure is not mentioned in claim 1 of the main request […].
923 | 3398
T 1807/07 – Don’t Get It Twisted
K’s Law – The ebook
The [patent proprietor] objected that in the description only the positive model of the skeletal structure (model 2) was scanned and digitised. In view of this contradiction between the subject-matter of the claim and the description only positive model 2 could be meant in claim 1. The
Board
cannot
endorse
this
point
of
view.
It is true indeed that the application does not disclose the scanning and digitisation of the positive model of the situation in the patient’s mouth. If it did, the amendment would not be problematic. However, one cannot conclude from this that the wording “positive model of the situation in the patient’s mouth” has to be interpreted as “positive model of the skeletal structure”. Such an interpretation would be tantamount to twisting the facts, which the skilled person has no reason to do. The application clearly distinguishes between model 1 and model 2 and it is not unreasonable to imagine that the enlaged embodiment of the skeletal structure is obtained by scanning and digitising of the situation in the patient’s mount. This was even stated by the [patent proprietor] during the written proceedings. Also, the submission of the [patent proprietor] according to which the reference signs (46,47) in claim had to be taken into account in the choice of the “correct” interpretation, cannot alter this assessment. It is true that reference signs may serve to make a claim more clear to the reader, as found in decision T 237/84. Apart from the fact that the reference signs in a claim are not limiting the claim, from the point of view of patent law, in the present case the skilled person would at most assume that the insertion of the reference signs (46,47) was due to an error because they are not related at all to the positive model of the situation in the patient’s mouth. It follows that the subject-matter of claim 1 of the main request […] extends beyond the content of the original application and, as a consequence, violates the requirements of A 123(2). Thus the claims of the main request […] cannot be granted. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
924 | 3398
T 1514/06 – Dead Man Filing
K’s Law – The ebook
T 1514/06 – Dead Man Filing 29 Okt 2012
The present appeal was filed by the opponent after the Opposition Division (OD) had maintained the opposed patent in amended form. The decision deals with a company demerger and related procedural questions. *** Translation of the French original *** Transfer of the opponent status [1.1] According to the established case law, an opposition pending before the EPO may be transferred or assigned to a third party as part of the opponent’s business assets (economic activity) together with the assets in the interests of which the opposition was filed. (cf. G 4/88 [order]) [1.2] In the present case, in view of the supporting evidence filed by the JB TEC (C) company, represented by the same representative having a power of attorney dated September 8, 2011 […], the Board considers that the transfer of the opponent (and, consequently, appellant) status of the JB TEC (A) company (registered in the company register (RCS) of Lyon (France) as n° 381 958 222 and struck off on September 16, 2010; see documents L1, L4b) to the JB TEC (C) company (registered in the company register of Lyon (France) on September 9, 2009, as n° 514 495 191; see documents L4a and L4b) has been established. [1.2.1] As a matter of fact, the draft of the demerger agreement (traité de scission), both in its original (document L2) and rectified version (document L3) shows that the JB TEC (A) company has transferred
its business (branche d’activité) related to classical sealed mechanical shakers to the Agitec SAS company, and its business related to magnetic stirrers for mainly pharmaceutical and biological uses (Board’s emphasis) […] to the JB TEC (C) company.
It should be noted that the corporate objective (objet social) of the JB TEC (C) company, as indicated in the excerpt from the company register of Lyon […] is to “commercialise, conceive, study, realise and provide service for all products and equipments intended for use in industry and in particular for biotechnology, pharmaceutical, cosmetic and food industries, etc.” The rectified draft of the demerger agreement […] discloses the remainder of the corporate objective in the following terms: “… working in the very demanding context of sanitary security that may require the use of techniques allowing to transfer power by means of magnetic coupling.” The demerger agreement, which has been rectified based on accounting data only, after consultation of the demerger auditor (commissaire à la scission) and published in a newspaper authorized to publish legal advertisements, as required by French law, has been the object of a declaration of conformity […] signed on July 13, 2010, by Mr Mangeolle, the president and unique stockholder of both companies involved in the demerger agreement. Thus it has been established that the initial draft has been validated in conformity with the applicable rules, which is a necessary prerequisite for a registration in the company register. It has also been clearly demonstrated that the JB TEC (C) company is the transferee of the business related to magnetic stirrers, it being understood that it is precisely this equipment that is used for producing pharmaceutical, biotechnological and food products. Now the patent under consideration in the present proceedings concerns a magnetic stirrer. [1.3] The Agitec company is only transferee of the business related to mechanical shakers. Therefore, it is excluded that the opposition was part of the business assets transferred to this company.
925 | 3398
T 1514/06 – Dead Man Filing
K’s Law – The ebook
[1.4] Moreover, it has to be noted that the demerger under consideration has led to the dissolution without liquidation of the JB TEC (A) company […], which means that once this transaction had been achieved, there were no more assets to be allocated, nor liabilities to be covered. On the documents transmitted on August 5, 2011, by the JB TEC company [2.1] However, the reality of the transfer of the opponent status together with a transfer of business assets has to be distinguished from its procedural effectiveness. The latter requires the filing of a request in order to ensure legal security. This is why the change of party to the appeal proceedings cannot occur without having been brought to the attention of the Board. Otherwise, there could be procedural acts or decisions without the opponent - who is the sole authorised party - being involved (see T 19/97 [5]). [2.2] The JB TEC (A) company having been dissolved on September 16, 2010, […], it did not have any legal personality any more, such that the power of attorney given to Mr Blanchard was null and void (caduc). [2.3] However, Mr Blanchard has been designated as the representative of the JB TEC (C) company, the present holder of the opponent status, by means of an authorisation dated September 8, 2011 […], i.e. one year later. These pieces of information, as well as the request to transfer the opponent status to the JB TEC (C) company, have been brought to the attention of the Board on September 14, 2011, only. [2.4] As a consequence, the documents under consideration have been removed from the proceedings as having been filed in an irregular manner. [2.5] Upon request of the JB TEC (C) company, the content of said documents, comprising inter alia objections regarding the patentability of the subject-matter claimed in the auxiliary requests, has been re-introduced in the course of the oral proceedings (OPs), as an integral part of its oral submissions. During the OPs, the Board has suggested that the OPs be postponed in order to safeguard the rights of the [patent proprietor]. However, the [patent proprietor] has declared that it was capable of presenting oral submissions without there being need for a postponement of the OPs. [2.6] Consequently, in view of the particular circumstances, the Board has admitted the contents of said documents into the proceedings, irrespective of their belatedness (A 13(1)(2) RPBA). Finally the patent was revoked. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
926 | 3398
T 636/09 – Lack Of Reference
K’s Law – The ebook
T 636/09 – Lack Of Reference 27 Okt 2012
Who said this was a cannabis-free blog? Claims 1 and 7 of the main request before the Board read (in English translation): 1. A process for producing an extract containing tetrahydrocannabinol, cannabidiol and optionally the carboxylic acids thereof from Cannabis plant material, wherein the dried plant material is comminuted and wherein Cannabis sativa L., of the fibre type is employed as cannabis plant material; wherein said plant material is extracted by means of CO 2 under supercritical pressure and temperature conditions at a temperature in a range from 31 °C to 80°C and at a pressure in a range from 75 bar to 500 bar, or is extracted in the subcricital range at a temperature of 20°C to 30°C and a supercritical pressure of 100 bar to 350 bar; and the obtained primary extract is separated out under subcricital conditions or under conditions subcricital in terms of pressure and supercritical in terms of temperature. 7. A primary extract from cannabis plant material, containing tetrahydrocannabinol and cannabidiol and optionally the carboxylic acids thereof, characterized in that it may be obtained through a process in accordance with any one of claims 1 to 6; and in that it contains at least reduced proportions of monoterpene and sesquiterpene hydrocarbons, alkaloids, flavonoids, and chlorophylls. The Board found claim 7 to lack novelty: *** Translation of the German original *** 927 | 3398
T 636/09 – Lack Of Reference
K’s Law – The ebook
[3] The primary extract defined in present claim 7 is characterised both by the production process and by the feature that it contains at least reduced proportions of monoterpene and sesquiterpene hydrocarbons, alkaloids, flavonoids, and chlorophylls. Document D3 […] discloses a supercritical extraction of marihuana that is carried out with CO2 that has a density of 0.9 g/ml at the chosen temperature of 40°C. It has to be noted that under these circumstances the pressure of supercritical CO2 lies within the presently claimed pressure range of between 75 and 500 bar, which means that this feature is implicitly disclosed. Moreover, [the Board] has to agree with the Opposition Division that in the process disclosed in document D3 the individual fractions are quenched (abgefangen) at a subcritical temperature of 25°C. The expression “trapped” used un document D3 implies that the CO2 extract is kept at normal conditions, i.e. room temperature and atmospheric pressure, which means that the CO2 evaporates and only the extraction residue, i.e. the primary extract, is left. It follows that all process steps mentioned in claim 1 of the present main request are disclosed in document D3. In this context it has to be noted that the industry-scale (großtechnisch) character of the process defining the claimed product, to which the [patent proprietor] has repeatedly referred, cannot serve as a distinguishing feature, be it only because said process defined in claim 1 does not contain any feature allowing to derive an industry-scale dimension. The absence of the industry-scale character cannot be interpreted into the claim by reference to the description, as the [patent proprietor] has requested by referring to A 69. In view of this conclusion the question of whether an industry-scale process would result in structural features of the product obtained therein allowing to distinguish [this product from a product] obtained in an analytical process comprising the same process steps, may remain unanswered. As far as the starting material is concerned, the Board comes to the conclusion that the starting material “Cannabis sativa L., of the fibre type” defined in the main request is not different from the marihuana used in document D3. As stated in the impugned decision […] marihuana, in contrast to hashish, also designates dried plant material. The [patent proprietor] bases the difference between the plant material used in the impugned patent and the marihuana used in document D3 on the expression “fibre type”, which, in contrast to marihuana, was characterised by a reduced Δ9-THC content. However, as can be seen in the original application […], the expression “hemp of the fibre type” and its synonym “industrial hemp” are defined differently in different countries. In Germany, the upper limit of industrial hemp is fixed at 0.3% Δ9-THC, whereas in Switzerland the upper limit is 0.5%. Consequently, the Board comes to the conclusion that the expressions “hemp of the fibre type” or “industrial hemp” are not clearly defined expressions for the skilled person and cannot constitute distinguishing features for the starting material but only represent its intended use. Thus document D3 discloses a starting material that is identical to [the starting material of] the claimed subjectmatter and an identical extraction process. It remains to be discussed whether the feature “and in that it contains at least reduced proportions of monoterpene and sesquiterpene hydrocarbons, alkaloids, flavonoids, and chlorophylls” of claim 7 can establish novelty over document D3, which, as was correctly stated in the impugned decision, does not make any statements on the exact composition of the extracts. However, as the Board has already suggested in the annex to the summons to oral proceedings […] this feature is not suitable for establishing novelty over document D3 because there is no reference value and, therefore, because it is completely unclear with respect to which reference product these contents are reduced. In the absence of a reference value this feature can also mean that the parts of said substances are relatively small in comparison to the amount of the extracted main component, Δ9-THC, which certainly is the case for the extraction product disclosed in document D3, too. Thus the Board arrives at the conclusion that the subject-matter of claim 7 of the present main request is not novel over document D3. Thus the requirements of A 54 are not fulfilled. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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K’s Law – The ebook
T 59/10 - General Practice
T 59/10 - General Practice 26 Okt 2012
Whether an amendment consisting in a simple combination of claims as granted can be objected to for lack of clarity is a controversial issue; there have been somewhat contradictory decisions on that matter. The present decision tries to shed some light. *** Translation of the French original *** [3.4] As far as the clarity of claim 1 is concerned, according to the established case law of the Boards of appeal (see e.g. T 381/02 [2]) the Board can only examine an objection based on A 84 in so far as the objection concerns amendments with respect to the patent as granted. In this context a claim is not considered to have been “amended” when it results from a granted claim that is completed using features of other granted claims without exceeding the scope of the granted version resulting from the interdependence of the granted claims. Accordingly, claim 1 of the present request cannot be considered to have been amended because it corresponds to a combination of claims 1 to 4 and 7 as granted and its subject-matter corresponds exactly to the subjectmatter of claim 7 as granted. As a consequence, the Board cannot examine the clarity of the claims. [3.5] The [opponents] have pointed out that decisions T 1459/05 and T 656/07 did not follow the previous development of the case law and, therefore, required clarity to be examined in the present case. [3.6] The Board notes that in case T 656/07 the lack of clarity resulted at least in part from amendments made after the grant of the patent. The Board had considered that it was possible to raise an objection of lack of clarity in the opposition proceedings because it resulted from amendments that had been made in the course of these proceedings, although the contested feature as such had already been present in the claims as granted, but in a different combination (point [2.2] of the decision). Therefore, this decision is in line with the established case law. [3.7] In case T 1459/05 [4.3.5] the Board had found it necessary to exercise its discretionary power and to leave aside, exceptionally, the general practice that prohibits examination of compliance with A 84 when the amendments consist in combination of claims as granted. In particular, it was exceptionally possible to examine the clarity of a claim in view of a particular feature contained in one of the combined claims if the amendment made the assessment of the text of the patent as amended – e.g. in respect of novelty and inventive step under A 100(a) – more difficult or even impossible (impracticable). However, the present Board notes that it is not the “general practice” that prohibits an examination of compliance with A 84 but that [it is because] A 84 does not constitute a ground for opposition within the meaning of A 100 [that such examination is not possible]. Moreover, the present situation is not such that it would not be possible to examine novelty or inventive step […]. Therefore, it is not necessary to analyse this decision in further detail. [3.8] Consequently, it is not within the powers of the Board to verify whether the requirements of clarity enshrined in A 84 are complied with in the present case. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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K’s Law – The ebook
T 433/08
T 433/08 25 Okt 2012
The present decision reminds us that even if the first instance has committed a substantial procedural violation, this does not mean that the appeal fee will be reimbursed. Both the patent proprietor and the opponent had filed an appeal after the Opposition Division (OD) had maintained the patent in amended form. When the auxiliary request was examined, the opponent pointed out that the request was not inventive over document D2. The OD referred to document E2, which had already been cited in the examination proceedings, and decided to use it as the closest prior art rather than D2. It finally found the auxiliary request to be inventive over E2. [14.1] According to R 103(1)a), “the appeal fee shall be reimbursed … where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation” (emphasis added). [14.2] In the reasons given in the decision under appeal, the OD relied on document E2, which document had not been referred to at all in the course of the opposition proceedings before the issuance of the decision to maintain the patent in amended form. [14.3] This course of action is in breach of the requirements of A 113(1), which stipulates that “decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments”. [14.4] It was common ground between the parties that a procedural error had occurred. They had, however, diverging views as to the equitability of a remittal and/or reimbursement considering the particular circumstances of the case. [14.5] Concerning the given circumstances, the board notes on the one hand that although document E2 had been cited as relevant prior art in the substantive examination of the case, the opponent chose not to invoke it in the opposition proceedings. However, even though it could thus be assumed that the opponent considered this document to be less relevant than the other documents which it relied upon, this does not in itself empower the OD to use as a basis for the decision a document not having been referred to at all in the opposition proceedings. [14.6] On the other hand, the OD considered document E2 to be the closer prior art, and hence to be more relevant for the assessment of inventive step and for a potential denial of inventiveness, than those cited by the opponent. The OD would not have reached a decision more favourable to the opponent (and less favourable to the patent proprietor) if it had not taken into account document E2. Thus, the OD did not act to the detriment of the opponent […]. Such detriment was not even asserted by [the opponent]. Indeed, with its letter setting out the grounds of appeal, [the opponent] submitted document E2/E2’ of its own volition as advantageously supporting its request to revoke the patent in suit as a whole. [14.7] Moreover, it is to be noted that the board, in the present decision, (also) considered that an inventive step attack based on a combination of document D2/D2bis as closest prior art with document D1bis could not succeed […], contrary to the arguments of [the opponent] brought forward in the opposition proceedings. [14.8] Under these circumstances, the board concludes that by this course of action the rights of [the opponent] were not curtailed to an extent that would make the reimbursement of its appeal fee equitable by reason of a substantial procedural violation. Should you wish to download the whole decision, just click here. 930 | 3398
K’s Law – The ebook
T 433/08
The file wrapper can be found here.
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T 2097/10 – React!
K’s Law – The ebook
T 2097/10 – React! 24 Okt 2012
This is an appeal against the revocation of the opposed patent by the Opposition Division (OD). Among other things, the patent proprietor complained that it had been deprived of the possibility to file further requests. The Board did not see things that way: *** Translation of the German original *** [2.4] The [patent proprietor] further criticised that the OD had terminated the proceedings although [the patent proprietor] had announced that it intended to file amended claims. However, [… the OD] can only decide on the admissibility of requests that have actually been filed; it cannot decide on requests the filing of which was announced. The [patent proprietor] admitted that it had announced further auxiliary requests but had not filed them. When the OD interrupts the proceedings in order to examine whether it can reach a decision, the parties have to expect that there will be a decision on the requests on file and that, depending on those requests, this decision may be final and, therefore, lead to the proceedings being terminated. Moreover, the OD would not respect the principle of impartiality – which governs the opposition proceedings, which are inter partes proceedings of a contentious nature – if it offered a party a further opportunity to file requests after it had dealt with all the requests of the party. If the OD had invited the patent proprietor to file amended requests after it had discussed [the requests on file] and found them to lack inventive step, this would have been tantamount to favouring one of the parties and would have constituted a clear procedural violation. The [patent proprietor] has submitted that the OD had announced in advance that it would only admit one single auxiliary request. However, this could not hinder the [patent proprietor] from filing another auxiliary request and, therefore, obtaining an appealable decision on the admissibility of this further request. [2.5] The Board acknowledges that the course of the oral proceedings cannot be considered to have been absolutely fortunate (uneingeschränkt glücklich), but not to the point that the OD could be said to have committed a substantial procedural violation within the meaning of R 103(1)(a). Thus the request for reimbursement of the appeal fee cannot be granted either. The Board would like to point out that it would have been desirable to provide more detailed reasons for the impugned decision and in particular, why documents D18 and D19 were found to be relevant and introduced into the proceedings. Moreover, as inventive step was also questioned along a new line of argument (Angriffsline) (starting from D7), the OD could have been expected to ask the patent proprietor whether, in view of this new factual situation, it wanted to file the announced amendments before the discussion of inventive step. That this has not happened is regrettable but not fundamentally wrong (grundsätzlich fehlerhaft). In the end it is the parties that bear the responsibility for reacting to a changed factual situation by filing appropriate requests in due time. They cannot transfer this responsibility to the OD by adopting a wait-and-see attitude. Should you wish to download the whole decision (in German), just click here. 932 | 3398
T 2097/10 – React!
K’s Law – The ebook
The file wrapper can be found here.
933 | 3398
T 132/09 – Not The Same
K’s Law – The ebook
T 132/09 – Not The Same 23 Okt 2012
It is well known that the EPO is quite strict when assessing whether amended claims contain “new matter” (A 123). It is not always well understood that the very same approach applies when it comes to the validity of the priority claim. As a matter of fact, the case law uses the same criterion (“directly and unambiguously”) for amendments (A 123), divisional applications (A 76), novelty (A 54) and priority (A 87). It’s really all of one piece. The present appeal was filed after the Opposition had revoked the patent under consideration for lack of novelty over some A 54(3) prior art. Unsurprisingly, the validity of the priority claim was discussed in the appeal proceedings. Claim 1 of the main request before the Board read: Process for the epoxidation of olefins by i) reacting an olefin with hydrogen peroxide in the presence of an epoxidation catalyst and an alcoholic solvent, whereby hydrogen peroxide is employed as an aqueous solution containing 10 to 70 wt.-% of hydrogen peroxide or as an alcoholic solution prepared by reaction of hydrogen and oxygen in the presence of a noble metal catalyst and the alcohol; ii) separating product olefin oxide and unreacted olefin from the reaction product of step i); iii) recovering a stream comprising the alcoholic solvent, characterized by iv) subjecting the recovered stream of step iii) to hydrogenation, whereby the olefin is propene and propene is used mixed with propane. The Board found the priority claim to be invalid, for the following reasons: [2.1] Claim 1 of the main request relates to a process for the epoxidation of olefins comprising steps i) to iv). In step i), an olefin is reacted with hydrogen peroxide in the presence of an epoxidation catalyst and an alcoholic solvent, and, in step ii), olefin oxide and unreacted olefin are separated from the reaction product of step i). According to the feature introduced at the end of claim 1, “the olefin is propene and propene is used mixed with propane” […]. The standard to be applied in deciding whether the claimed priority date is to be acknowledged is whether this subject-matter is directly and unambiguously derivable from the priority document D28 as a whole (see decision G 2/98 [headnote]). In the claims of priority document D28, the term “propane” only appears in claim 13.
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T 132/09 – Not The Same
K’s Law – The ebook
However, in this claim, specific percentages by weight of this component are defined for the product stream and the overhead product obtained from steps i) and ii), respectively. Moreover, claim 13 is dependent on claim 12, which relates to a specific epoxidation reaction wherein “the catalyst is a titanium silicalite and the solvent is methanol”. Hence, this very specific disclosure cannot provide a basis for the much more general subject-matter claimed in claim 1 of the main request. As regards the content of the description of priority document D28, it is disclosed on page 6, lines 7 to 11, that propene is the preferred olefin to be used in the epoxidation reaction. Further down on the same page, it is specified that “propene may be used mixed with propane in an amount of between 0 and 10 vol.% of propane” (page 6, lines 28, 29; emphasis added). Thus, the propene feed is defined as optionally containing propane, but only in a maximum amount of 10 percent by volume. This passage cannot therefore provide a direct and unambiguous basis for the use mixtures of propene and propane without any limitation as to the relative amounts thereof. The appellants referred to page 12, lines 11 to 18, and page 16, lines 20 to 24, as providing a basis for a general disclosure of the use of propene mixed with propane in the reaction of step i), without limitation on the amount of propane.
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T 132/09 – Not The Same
K’s Law – The ebook
The cited passage on page 12 is embedded in a section starting on page 11, line 4 and ending on page 12, line 24, relating to “one embodiment of the present invention” in which “the reaction mixture is separated in a preevaporator into an overhead product containing propene, possibly propane, propene oxide and solvent, and into a bottom product ...” (page 11, lines 4 to 7). Thus, this embodiment illustrates specific means for working up the reaction product of step i), and cannot therefore provide a basis for introducing a definition as to the composition of the olefin to be used in the general context of the epoxidation reaction. Indeed, as an “embodiment of the present invention”, the cited passage must be read in the context of the previous section of the description relating to the epoxidation step i) (see page 6, line 7 to page 8, line 9). Here, the amount of propane that may be present in the propene feed is clearly restricted to 10 volume, as explained in the previous paragraph. Similarly, the cited passage on page 16, lines 20 to 24, is embedded in the section of document D28 relating to specific examples (see page 15, line 16 to page 18, line 16). On page 16, line 4, there is a reference to “a propene feed”, but it is not specified that this contains propane. However, the overhead product, separated in the preevaporation stage, contains propane (page 16, lines 15 to 17), and an uncondensed portion of this stream containing propane is returned to the epoxidation reaction (page 16, lines 22 to 24). It can therefore be concluded that the propene feed used in the examples must contain some propane, but it is not specified how much. This is not equivalent to a direct and unambiguous disclosure that unlimited amounts of propane may be present in the propene feed, particularly not in the context of a more general disclosure as now claimed. For these reasons, the board concludes that the subject-matter of claim 1 of the main request is not entitled to the priority date of 2 May 2002, but only to the filing date of 29 April 2003 […]. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 234/09 – More Round Figures
K’s Law – The ebook
T 234/09 – More Round Figures 22 Okt 2012
In last Friday’s post we have seen Board 3.3.05 make some interesting statements on novelty and rounded values. It had already done so a few months earlier, as the present decision shows. Claim 1 of the main request before the Board read:
In what follows, the Board discusses the novelty of this claim. *** Translation of the French original *** [4.1] Document D2 (cf. claim 3) discloses the preparation of bio-soluble mineral wools. In particular, example 3 of this document discloses the preparation of a mineral wool having the following composition (percentage by weight):
[4.2] According to the [patent proprietor] this mineral wool differs from the claimed mineral wool by its Mg0 content (5.2%), which is greater than the maximum MgO value defined in claim 1, i.e. greater than 5%. [The patent proprietor] has not pointed out any further differences. 937 | 3398
T 234/09 – More Round Figures
K’s Law – The ebook
[4.3] The Board does not share the opinion of the [patent proprietor], for the following reasons: [4.3.1] First it has to be noted that both in the claims under consideration and the claims as granted the composition of the fibres is defined by means of numerical ranges of % by weight of the components. It has not been contested that these compositions can easily be defined more precisely, as can be seen, for instance, in the analysis results given in Tables 1 and 2 of the patent. This notwithstanding, the patent proprietor has chosen to express most boundaries of said ranges by integers. However, some of said boundaries are expressed as decimal numbers with one decimal place (see claims 2 to 4 under consideration), even in cases where the figure after the decimal point is equal to 0. Therefore, within the context of the claims, the [patent proprietor] expressly distinguishes integers “N” and decimal numbers “N.0”. [4.3.2] In view of what has been said above, the Board considers that in the context of the patent under consideration the skilled person would understand that the integers defining the boundaries of the numerical ranges of claim 1 are not to be understood as integers as defined in mathematics (i.e. numbers that could be expressed as decimal numbers N.000) as the [patent proprietor] has asserted. Otherwise, the boundaries of the ranges of claim 1 would all have been expressed in the form “N.0”. Thus, quite to the contrary, said integers are to be considered as boundaries that have deliberately been expressed with a precision that is reduced with respect to the decimal numbers mentioned in the patent. Consequently, said numbers also cover the decimal values resulting in said integers when applying the rules of rounding. [4.3.3] An analogous approach has been applied by the Boards in similar cases, such as T 1186/05 [3.6.5-6]. In contrast to the particular circumstances of the case under consideration, two of the decisions cited by the [patent proprietor] concern situations where there was no particular reason to round values that had only been disclosed implicitly in the prior art (T 646/05 [4.1]; T 74/98 [3.1-2]). The reasons for decision T 820/04 do not provide any explanation why a number expressing a percentage (0.1% and 70%) in a claim should always, irrespective of the context, have to be understood as corresponding to the precise value having additional zeros after the decimal point (such as 0.1000…% and 70.000…%). [4.3.4] Based on the considerations set out above, the Board concludes that the weight percentage of 5.2% for MgO given in example 3 of document D3, when rounded in order to be compared, cannot be distinguished from the upper limit of 5% defined for MgO in claim 1. [4.4] In other words, said example 3 discloses a mineral wool having all the features of claim 1. Thus the subject-matter of claim 1 is not novel (A 52(1) and A 54(1)(2)). [4.5] Consequently, the main request is refused. The patent proprietor also presented auxiliary requests. Claim 9 of the second auxiliary request read:
The Board found this claim to lack clarity: [8.1] Compared to claim 1 as granted (requiring 10-17% of R20 (Na2O+K20), independent product claim 9 under consideration differs by the more limited range of 10-13% for the R20 content. In view of the fact that this
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T 234/09 – More Round Figures
K’s Law – The ebook
feature was not among the features of the claims as granted, the amendment consisting in its introduction into independent claim 9 has to comply with the requirements of A 84 (cf. G 9/91 [19]). [8.2] Now the three conditions “Na2O 0-15 %”, “K2O 0-15 %” et “R2O (Na2O+K2O) 10-13 %” are clearly incompatible as far as the maximum values of Na2O and K2O are concerned. Said contradictory indications generate an ambiguity and, consequently, a lack of clarity regarding the scope of protection conferred by this claim. [8.3] The [patent proprietor] has submitted that the skilled person would not have any problem understanding that all three conditions have to be complied with simultaneously and that, as a consequence, it was perfectly clear that neither the Na2O nor the K2O content could exceed 13%. [8.4] The Board cannot accept this argument because when reading the claims, the skilled person is not capable of understanding that the condition “R2O (Na2O+K2O) 10-13 %” prevails over the two preceding conditions, i.e. “Na2O 0-15 %”, “K2O 0-15 %”. The skilled person could also understand that the claim covers compositions comprising, for instance, 15% of Na2O and that the upper limit of the range “10-13 %” was erroneous and should de facto read 15%. [8.5] The amendment of the range of values concerning the R 2O content generates an ambiguity resulting in a lack of clarity of claim 9. The claim, therefore, does not comply with the requirements of A 84. [8.6] Consequently, auxiliary request 2 is refused. Well, that is tough on the patent proprietor. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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K’s Law – The ebook
Interpretational Spotlight: Completely Encasing
Interpretational Spotlight: Completely Encasing 20 Okt 2012
When dealing with this appeal (against the revocation of the opposed patent), the Board had to examine whether claim 1 of the main request A pipeline pig for scraping a build-up from the interior surface of a pipeline, the pipeline pig comprising a bi-directional body (20) having blunt, hemispherical front and rear noses (41, 42) and a cylindrical middle portion (43) extending between said front and rear noses (41, 42) providing surface area for sealing against the interior surface of a pipeline, and a plurality of studs (80) on said surface, thereby forming an abrasive surface for scraping the build-up from the interior surface of a pipe, characterised in that the bidirectional body (20) comprises (a) an elongatable and compressible core (60), formed from a material which tends to elongate and narrow as the pig moves through bends, curves, corners and areas of heavy buildup, said material being a mixture of resin and isocyanate; and (b) an external cover (40) made of heattreated urethane completely encasing the compressible and elongatable core, said studs (80) being carried by the external cover (40). (my emphasis) and in particular the feature “completely encasing” was directly and unambiguously disclosed in the application as filed. [2] Claim 1 of the main request contains the feature “completely encasing” […] which is considered not to be derivable in a clear and unambiguous manner from the description, the claims and the drawings of the application as originally filed (corresponding to D1). [2.1] The feature “an external cover (40), encasing the elongatable core (60)” originally comprised in claim 2 of D1 had been amended during the examination of the application for the patent in suit to the present term “an external cover (40) … completely encasing the compressible and elongatable core” of claim 1 of the present main request, which in this respect corresponds to claim 1 of the patent as granted. [2.1.1] At the oral proceedings (OPs) before the Opposition Division (OD) the representative of the patent proprietor stated that the term “completely” had been added during the examination proceedings in order to distinguish the claimed subject-matter over the prior art D2. He further admitted that there might probably be a difference in the meaning of the terms “completely encasing” and “encasing” but argued that there would be a basis for both terms […]. At the OPs before the Board the [patent proprietor] for the first time in the proceedings argued that the two terms – due to the interpretation now based on three web-based dictionaries (namely Cambridge on-line, the Macmillan dictionary and the Collins dictionary), so that the term “encase” means “to cover or surround something or someone completely”, “to completely cover or enclose something” and “to place or enclose in or as if in a case”, respectively – actually have the same meaning, so that the added term “completely” would not add matter. The Board cannot accept these arguments for the following reasons: [2.1.2] First of all, where the claims are concerned the wording is used in particular to define the subject-matter for which protection is sought. Generally each single word of a claim has a specific meaning and is carefully and purposively selected to define the subject-matter defined therein. Therefore it cannot be accepted that the addition of the term “completely” to the originally disclosed term “encasing” during the examination proceedings has in fact no meaning or does not alter the meaning of “encasing”. The IPER on this application contained an inventive step argument against claim 1 using D2 for the feature of “encasing the core”. On entry into the regional phase before the EPO claim 1 was amended as now discussed. The Board can see this amendment only as having been made with the intention to further delimit the claimed subject-matter over the prior art D2, as was also admitted in the opposition proceedings. 940 | 3398
K’s Law – The ebook
Interpretational Spotlight: Completely Encasing
In this context the Board remarks that the quoted prior art D2 discloses a pipeline pig having a core with a plurality of studs being anchored in said core and further having a cover coated over said core through which said studs are protruding (see e.g. figures 1-4). Hence the core according to D2 is encased by a cover 20 but – due to the openings left in the cover (figure 1), which show the underlying core, and the mention in the description […] that the cover is not totally inclusive of the core – is not completely encased by the cover.
[2.1.3] Secondly, considering all four dictionaries and their definitions of the term “encase”, in particular that of D9 […], it is clear that the term “encase” does not necessarily mean to totally envelop something since any case, cover or mantle can contain holes serving a specific purpose e.g. for mounting switches or simply to allow cooling by an improved air exchange (for example a PC is encased by a cover having cooling holes and several switches and plug-in connectors). [2.1.4] Therefore the addition of the term “completely” to the term “encasing” cannot be simply disregarded as the [patent proprietor] wishes the Board to do; it provides a difference over the originally disclosed term […], as admitted by the [patent proprietor] at the OPs during the opposition procedure. [2.2] However, as conceded by the [patent proprietor] in its grounds of appeal, this feature is nowhere explicitly disclosed in D1, neither in the description nor the claims or drawings. [2.2.1] The drawings of D1, in particular figures 1 and 2, do not provide a clear and unambiguous basis for this amendment since they – although the claimed pipeline pig represents a simple structure comprising three components: the core, the cover and the studs – are schematic, contrary to the [patent proprietor’s] arguments.
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K’s Law – The ebook
Interpretational Spotlight: Completely Encasing
According to D1 “Fig. 1 is a side orthographic view of a pipe pig constructed in accordance with the principles of the invention, having the core shown in dotted outline” while “Fig. 2 is a cross-sectional view of the pipe pig of Fig.1, taken about the 2-2 lines” […] and “Figure 2 illustrates in cross-section the relationship of the cover 40 to the studs and the core 60” […]. These “principles of invention” as derivable from the description of D1 […] must not necessarily show all details of the desired pipeline pig in accordance with D1. For example, according to the described method of manufacturing the cover is of uniform thickness […], which is clearly not the case for the pig depicted in figure 1. It is further remarked that the wording “comprising” of claims 1 and 5 as originally filed does not exclude any holes or wire rods (= pins) being present in the cover and although certain preferred versions of the pig are described in D1 “other versions are possible” […]. Furthermore, at the OPs the [patent proprietor] admitted that the cross-section of figure 2 of D1 need not necessarily show any pins or holes. These can be present in other cross-sections of the pig. [2.2.2] As correctly argued by the OD in the impugned decision, the fact that these figures do not show any openings or holes (i.e. in addition to the holes drilled for the studs) in the external cover 40 does not necessarily mean that there are no such openings. According to the established jurisprudence a figure which served only to give a schematic explanation of the principle of the subject-matter of the patent (the same holds true with respect to figures 1 and 2 of D1, compare point [2.2.1] above), but not to represent it in every detail, does not allow the definite conclusion to be drawn that what is disclosed purposively excludes any feature not represented (see Case Law, 6th edition 2010, section III.A.5; see T 170/87 [6]). [2.2.3] From the description of D1 it is also neither apparent nor plausible that the cover should not contain any holes, e.g. resulting from the manufacturing process of the pig, which were alleged by the [patent proprietor] to deteriorate the cleaning properties of the claimed pipeline pig, since it is essentially the cylindrical portion of the pig cover and the plurality of studs mounted therein which are responsible for cleaning the internal surface of pipes […]. These arguments cannot be accepted since the [patent proprietor], although this deficiency was remarked in the Board’s communication annexed to the summons to OPs […], did not file any evidence supporting this allegation. [2.2.4] In this context also the manufacturing method for producing a preferred version of the pipeline pig with an external cover made with urethane (more specifically Vibrathane 8083), which is described in D1 in the context of figure 2, has to be considered. According to this process there are wire rods supporting the core in the mould when the urethane is poured into it, to achieve a uniform thickness of the external cover. Thereafter the urethane is heated to a temperature of 250º, the pig is demoulded and then placed in a curing oven for 942 | 3398
K’s Law – The ebook
Interpretational Spotlight: Completely Encasing
approximately 2 hours […]. Thereafter a plurality of holes is drilled in the cover and the pig is heated again to 250º and studs are inserted in these holes with an air gun […]. The use of these wire rods is considered to be essential for centering the core within the mould and therefore in the (cured) urethane cover of the pig. According to Mr Boase the specified temperature of “250º” has to be interpreted as “250 ºF” […] and thus corresponds to “121.1ºC”. This value perfectly fits with the curing temperature of 100ºC (212ºF) for the urethane VibrathaneR 8083 mentioned in the description and in the respective technical information sheet D11 […], sent to the parties by the Board with its communication annexed to the summons. It was uncontested by both parties that there is a gradual curing of the pig cover. The curing starts immediately when mixing the urethane with the curing agent (D1 is silent with respect to the addition of a curing agent). According to D11 the typical pot life after starting this mixing is 5-6 minutes […], i.e. the time within which the urethane/curing agent mixture has to be poured into the mould. The progress of the curing reaction is then greatly influenced by the applied curing temperature and the elapsed time. D1 is silent with respect to the time necessary for reaching said temperature of 250ºF of the mould and also with respect to the question whether the mould is horizontally or vertically arranged. It is uncontested that the resulting pig cover in any case must have a sufficient green strength of the applied urethane coating, to be demoulded and to be self-supporting. This fact excludes, in the Board’s view, that the urethane can be still fluid since in that case the demoulded pig with its partly cured urethane cover would lose its shape when placed in the curing oven without its supporting mould for the mentioned “about 2 hours”, so would not obtain a cover having a uniform thickness of the cured urethane. The same conclusion is, however, considered to be fully valid for any holes produced by the supporting wire rods (also designated as “pins” by the parties) in the cover during the moulding step – if these wire rods are at all removed at this stage (D1 is silent about any removal). Since wire rods are made of metal (which by definition is an excellent thermal conductor) they will provide a good heat transfer along their surface to the interior of the urethane cover so that it is not credible that the urethane surrounding the hole can still be sufficiently fluid after removing the rods in said demoulding step, so as to fill it. The [patent proprietor’s] arguments to the contrary thus cannot be accepted. Consequently, any hole produced by the wire rods in the cover would extend through the thickness of the external cover. If on the other hand said supporting wires would not be removed with or after said demoulding step, but would remain in said pig during said final “curing” step in the curing oven then there will in any case be holes in said external cover when the pins are removed only afterwards, or they will remain in the cover. Therefore it is clear from the production method as described in D1 that the external cover cannot “completely” encase the core as required by claim 1 of the main request. [2.2.5] The [patent proprietor’s] further arguments cannot hold for the following reasons. Firstly, the description of D1 clearly mentions wire rods (or pins) in the process for making a pig with a cover having a uniform thickness so that the person skilled in the art need ask himself only how he should proceed with these wire rods since D1 is totally silent in this respect. Should they be removed or not from the produced pig and at which stage during the manufacturing process of the pig should they be removed from the pig and/or mould. Furthermore, as already remarked, the drawings are schematic only and do not necessarily show details, such as the wire rods, which as such are not considered to be important for the simple pig structure comprising the core, the cover and the studs being mounted in the drilled holes. Furthermore, as remarked by the Board at the OPs, it would also be possible to use wire rods located at diametrically opposed locations in the length direction of the core, e.g. being separated from one another by about 90º, which have a length to just abut the inside of the mould and which therefore do not need to extend through the wall of the mould and consequently do not need to be removed during the demoulding step. Secondly, all arguments based on the witness statement of Mr Boase or on the video or exhibits A1 to A3 are considered not to be relevant since the process discussed and shown therein is not identical with that described in D1 (see point [2.2.4] above) as it differs considerably from it since four diametrically opposed wire rods extending through the wall of a vertically arranged mould are used for centering the core in the mould. Further, no demoulding step takes place when the wire rods are removed after a first heating step, i.e. the complete curing
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Interpretational Spotlight: Completely Encasing
of the urethane takes place in said mould for an unspecified curing time and at an unspecified curing temperature. Furthermore, the studs are already placed in said mould and enclosed in the urethane. [2.2.6] Consequently, claim 1 of the main request extends beyond the content of the application as originally filed and thereby contravenes A 123(2). The main request is therefore not allowable. Should you wish to download the whole decision (T 380/09), just click here. The file wrapper can be found here.
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T 519/06 – Round Figures
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T 519/06 – Round Figures 19 Okt 2012
This is an appeal by the patent proprietor against the maintenance of its patent in amended form. Claim 1 of the patent as granted read:
NB: It is interesting to see that the Examining Division had accepted references to definitions provided in the description. The discussion of the novelty of this claim by the Board is not without interest: *** Translation of the German original *** [3.7] When examining the novelty of the silica according to claim 1 over the product “Zeosil 1165MP” mentioned in the impugned patent, the Opposition Division arrived at the conclusion that the feature “wk
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K’s Law – The ebook
coefficient < 3.4” was not a distinguishing feature. The Board does not share this opinion, for the following reasons: [3.7.1] As far as the precision of the indication “wk < 3.4” is concerned, it has to be noted that claim 1 does not unambiguously require that the value of the wk coefficient necessarily has to be smaller than 3.4000… In view of the fact that the wk value is a calculated ratio of two measured lengths (peak heights), the skilled person would rather assume that this figure having only one decimal place (Nachkommastelle) is a rounded value. [3.7.2] When assessing whether one particular precipitation silica has this feature or not, this ambiguity of the indication “wk coefficient < 3.4” makes it necessary to consult the description in case of doubt. It turns out that example 8 of the impugned patent, which has been referred to in the opposition proceedings, clearly shows that the value 3.4 for the “Zeosil 1165MP” product, which is listed with one decimal place, corresponds to the peak height ratio B/A = 38.7/11.4, which, in strictly mathematical terms, is equal to 3.3947…, wherein the peak height is measured with a precision of one decimal place (in this respect, see also document D9 together with document D9a, as well as document D16 […]). [3.7.3] It follows without doubt that the listed value of 3.4 is a value rounded to one decimal place, and not a value obtained by truncation, which the opponent had considered to be another option, in view of document D9a. [3.7.4] In the opinion of the Board, it follows that the indication “wk coefficient < 3.4” contained in claim 1, when seen in the light of the description, designates a range of values that could also be designated by means of the expression “wk coefficient smaller than or equal to 3.3” wherein only values rounded to one decimal place are to be taken into account. Incidentally, this interpretation is completely in line with the manifest intention of the drafter of the patent to exclude said “silica Zeosil 1165MP”, which was only studied as a reference, from the scope of the claims, and to delimit the claim with respect to this silica, respectively. [3.8] Therefore, when claim 1 of the impugned patent is interpreted in a technically meaningful way, the product disclosed in the impugned patent under the reference “Zeosil 1165MP” differs from the subject-matter of this claim also because of its wk coefficient of 3.4. [3.9] In the opinion of the Board, the aspect that product batches are variable does not play any role in this assessment. It is a fact that the sample of the silica “Zeosil 1165MP” examined in the impugned patent does not have a wk coefficient < 3.4. In the light of what has been said above, it is not relevant either whether a silica having a wk value of exactly 3.4 (i.e. 3.4000…) can be distinguished, from a technical point of view, from a silica having a “nominal” (i.e. unrounded) wk value that is equal to say, 3.39. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1856/11 – Enough Said
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T 1856/11 – Enough Said 18 Okt 2012
In this case the Board had to review the decision of the Opposition Division (OD) to reject the opposition as inadmissible. [1.1] According to the Case Law of the Boards of Appeal, 6 th edition 2010, VII.D.2.3.2, the requirement of R 76(2)(c) is fulfilled if the contents of the notice of opposition are sufficient for the opponent’s case to be properly understood on an objective basis, so that both the patent proprietor and the OD know what that case is, see T 222/85 [4]. [1.2] As is further stated in T 222/85 [5], the sufficiency of the notice of opposition as far as it concerns the fulfilment of the minimum substantive requirements of A 99(1) and R 76(2)(c) in this respect must be distinguished from the strength of the opponent’s case. Indeed, R 76(2)(c) does not prescribe a complete “indication of the facts, evidence and arguments presented in support” so as to permit a conclusive examination on that basis alone, see T 1069/96. [1.3] It follows that, for the admissibility of an opposition, the statements made in the opponent’s pleadings need not even be true nor the arguments conclusive in themselves. It is merely necessary that the OD and the patent proprietor are able to follow them. [1.4] On the one hand, an (unfounded) ground of opposition might have been clearly presented and argued. Conversely, an unconvincing submission may be rejected as not allowable even though, if properly drafted, it would have succeeded. Whether such is the case, however, is no longer an issue of admissibility but purely a question of the merits of the case. [1.5] The notice of opposition indicates two grounds of opposition: lack of novelty, based on D1 alone, and lack of inventive step, starting from D2 and using D1 to show that the skilled person would apply a certain teaching from that document in the method of D2. D1 is a “User guide for PickMaster 2002, version 2.30”. Both attacks therefore hinge on this document and the OD was correct in concentrating the admissibility discussion on this document. [1.6] The public availability of patent documents is usually not a problem. Where, however, an opposition is based on another type of document such as a doctorate thesis or a scientific journal arriving at a certain library at a certain date or – as in this case – a user’s guide allegedly sent with a product to the customer, the question of its public availability before the effective date of the patent needs to be addressed. In this respect, the same details that apply to an alleged public prior use need to be determined. [1.7] According to T 328/87 [3.3], when an opposition ground is based on an allegation of prior use, the requirements of R 76(2)c) are fulfilled if the notice of opposition indicates, within the opposition period, the facts which make it possible to determine the date of prior use (“when”), in order to ascertain its “prior” character; the object of the use (“what”) in order to examine its relevance, and the circumstances relating to the alleged use (“how”) in order to confirm its availability to the public. The notice of opposition must also indicate the arguments presented in support of this ground of opposition and indicate the evidence in support of the alleged prior use (the latter needs however not be conclusive for the purposes of the admissibility of the opposition, see points [1.1-3] above). [1.8] In the present case the public availability of the user guide D1 is only indirectly argued via the reference in the notice of opposition “we also enclose an order confirmation showing that the PickMaster 2002, version 2.30 was deliverer [sic] 08.10.2004 to a customer”. The order confirmation is D3 (supra, point III). [1.9] As concerns the details […] that need to be determinable from the notice of opposition, the supporting documents D1 and D3 allow the following to be established: [1.9.1] As far as it concerns the “when”, the opponent stated on page 1, lines 11 and 12 of its notice of opposition that a PickMaster 2002, version 2.30 had been delivered on 8.10.2004 to a customer. D3, page 5, mentions a “PickMaster 2.30” and a “user’s guide, English”. 947 | 3398
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[1.9.2] As far as it concerns the “what”, the opponent presented a complete analysis of the features of claim 1 with respect to D1, the user’s guide Pickmaster version 2.30 with copyright notice “2002”, see page 2, line 15 to page 4, line 12 of the notice of opposition. [1.9.3] As far as it concerns the “circumstances”, the opponent referred to the sale and delivery of the above mentioned machine and, by implication also via D3, of its “user’s guide” to the customer “Vipal S/A” on 8.10.2004, see page 1, lines 11 and 12 of the notice of opposition, i.e. implicitly without any obligation of secrecy. [1.10] In the present case the Board considers that this is all the patent proprietor and the OD need to understand the case of the opponent, i.e. to make the opposition admissible. The rest is a question of what is sufficiently proven also taking account of what has further been filed in the proceedings and what the consequences thereof are, i.e. the case’s allowability. The Board notes that the additional details required by the respondent (whether and which part of the user’s guide was made public by Vipal, when and how this took place, or how Vipal made use of the user’s guide) are not relevant for deciding the opposition’s admissibility. [1.11] For the reasons set out above the Board considers the opposition to be admissible. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 999/10 – A Case For A Cascade
K’s Law – The ebook
T 999/10 – A Case For A Cascade 17 Okt 2012
The present decision is interesting for all those who struggle with “extending limitations” such as found in several cases discussed on this blog (here, here, here and here). Both the patent proprietor and the opponent had filed an appeal after the Opposition Division had maintained the opposed patent in amended form. Claim 1 of the main request before the Board read, in English translation (the amendments with respect to claim 1 as granted are highlighted): Hot-extrudable pressure-sensitive hot-melt adhesive having, at its end use temperature of generally between -20 and +40°C, an elastic modulus G' less than 5∙105 Pa, comprising a blend of:
from 15 to 55% by weight of at least one compatible tackifying resin and from 45 to 85% by weight of one or more styrene block copolymers obtained from styrene monomers and from at least one other comonomer, such as ethylene, propylene, isoprene, butadiene and butylene, said copolymers constituting linear, radial or star-shaped diblock, triblock or multiblock type structures in which the intermediate block consists of at least one of the above-mentioned comonomers, said copolymers having: a mass percentage of the styrene phase in the polymer of between 10 and 35%; a mass percentage of diblock structures in the polymer greater than 30%; and a melt flow index according to condition No. 10 of the NFT 51-016 standard of between 2 and 40 g/10 min;
such that this blend has:
a viscosity, at a temperature of at least 130°C 150°C (measured according to the IS0 1 143 standard), lying within a range located above the power curve: η = 22000∙(dγ/dt + 200)-0.82 in which dγ/dt – the shear rate – is between 100 and 1000 s-1;
a tensile strength at a pull rate of 1 m∙s-1 lying within the range located below the polynomial curve: y = – 2.82∙10-16∙x6 + 5.92∙10-13∙x5 – 4.97∙10-10∙x4 + 2.15∙10-7∙x3 – 4.99∙10-5∙x2 + 6.26∙10-3∙x + 4.71∙10-2 where y – the ordinate – represents the stress expressed in MPa and X – the abscissa – represents the deformation expressed in %;
and in which the mass percentage of the styrene phase in the polymer is comprised between 10 and 25%, the mass percentage of diblock structures in the polymer is greater than 40% and the styrene block copolymer is a copolymer of styrene/isoprene/styrene type and in which the tackifying resin is a resin or a blend of resins conventionally used in hot-melt adhesives will be used, chosen among:
rosin or its derivatives, especially rosin esters, optionally hydrogenated ones; polyterpenes, terpene phenolics or derivatives thereof; and
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optionally hydrogenated polymers coming from aliphatic or aromatic cuts or blends of these cuts; having a softening point measured according to the EN 1238 standard of between 5 and 150°C, and preferably between 80 and 140°C;
and in which the compatible tackifying resin comprises a predominant resin having pronounced aliphatic character ; the tensile strength being measured using the following method:
dumbbells are cut, using a blanking die of the H2 type, from 80*80*2 mm plaques of a hot-melt pressure-sensitive adhesive that were prepared beforehand at 160°C. with a pressure and venting cycle; the tensile test is carried out by means of a hydraulic mechanical testing machine, the distance between the jaws, defined as the useful length L0, being 50 mm, the maximum displacement of the hydraulic ram L being 320 mm, the maximum deformation being of 640%, equal to 100*L/L0, and the rate of displacement of the piston being set at 1 m∙s-1.
The most interesting part of the decision (in my opinion) deals with the question whether this amendment complied with A 123(3): *** Translation of the French original *** [3.1] During the opposition and opposition appeal proceedings, the patent proprietor has tried to limit the block copolymers of the composition to styrene copolymers having blocks of the styrene/isoprene/styrene type. [3.2] [The opponent] has pointed out that the scope of protection conferred by the European patent had been extended as a consequence of the amendment of claim 1, because when open claims (“comprising”) directed at compositions are amended, the amendment the purpose of which was to limit a claim de facto extended the scope of protection conferred by the claim (see T 2017/07). [The opponent] chose the following example to illustrate its reasoning: A composition containing 10 % by weight of tackifying resin, 30% by weight of styrene/isoprene/styrene (SIS) block copolymer and 60% by weight of [styrene/butadiene/styrene] block copolymer (SBS) would not fall within the scope of claim 1 as granted because the sum of SIS copolymers and SBS copolymers exceeds 85% by weight and the amount of tackifying resin is too small. However, the very same composition would fall within the scope of claim 1 as amended: indeed, the quantity of SBS was not to be taken into account in the claimed composition, which means that the recalculated amounts of essential components present in the composition was of 25% by weight for the tackifying resin and 75% by weight of SIS. Nevertheless, the open formulation (“comprising”) of claim 1 did not exclude that SBS was present in the adhesive. [3.3] The Board does not share this opinion of the opponent. The amendment concerning the block copolymers does not extend the scope of protection of claim 1. The patent proprietor has maintained the broader definition of the block copolymers according to claim 1 as granted in the amended claim. It has added an additional restriction regarding the SIS-type block copolymer contained in dependent claim 3 (which corresponds to original claim 3), by using the expression “and in which … ” (et dans lequel …) … from 45 to 85% by weight of one or more styrene block copolymers obtained from styrene monomers and from at least one other comonomer, such as ethylene, propylene, isoprene, butadiene and butylene, said copolymers constituting linear, radial or star-shaped diblock, triblock or multiblock type structures in which the intermediate block consists of at least one of the above-mentioned comonomers, … and in which … the styrene block copolymer is a copolymer of styrene/isoprene/styrene type [3.4] The drafting of the claim in cascade form, which is based on the wording used for characterising the block copolymers, does not leave any doubt on the intention of the patent proprietor to exclude all block copolymers other than the SIS-type copolymers from the intended scope of protection. A reader familiar with the way in which patent claims are drafted would deduce that from now on, among the block copolymers disclosed, only 950 | 3398
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SIS-type copolymers could be present in the adhesive. As a consequence, the amendment does not violate A 123(3). [3.5] Even if the interpretation proposed by the opponent, according to which the open wording (“comprising”) of the claim would not exclude the presence of other block copolymers, such as SBS, in the composition, was to be adopted, it does not alter the fact that drafting of the claim in cascade form chosen by the proprietor always requires the condition limiting the quantity of block copolymers defined more broadly in claim 1 as granted to be satisfied in the amended claim, too. In other words, the condition limiting the quantity of block copolymers defined more broadly in the claim as granted is still present in the amended claim, even if both SIS and SBS are present. In such a case, the quantity of SBS in the composition indeed has to be taken into account when the quantity of block copolymers that may not exceed 85% by weight is calculated. This means that in the example mentioned by the opponent, the calculation of the total amount of block copolymers always has to take account of the quantity of SBS. [3.6] To sum up, even if the amended claim was to be interpreted by insisting on the open wording (“comprising”) of the claim, the intended scope of protection of the amended claim is not broadened with respect to the claim as granted. What is decisive is that the condition that is expressed in the claim as granted has also been incorporated into the claim as amended. [3.7] Consequently, the amendments reduce the scope of protection conferred by the patent as granted and, therefore, comply with the requirements of A 123(3). Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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T 1741/08 – A Broken Chain
K’s Law – The ebook
T 1741/08 – A Broken Chain 16 Okt 2012
This is an appeal against the refusal of an application concerning a method of entering data into a data processing system. The Examining Division (ED) had found the claims on file to lack inventive step. Claim 1 of the main request before the Board read (additions with respect to claim 1 as refused are underlined): 1. A method of entering of data in a data processing system comprising: a) displaying a first horizontally aligned linear sequence (402; 702) of top-level icons (i), b) displaying a second horizontally aligned linear sequence (420; 902; 1320) of second-level icons for a selected one of the top-level icons, the position of the leading icon of the second linear sequence being vertically aligned with the selected one of the top-level icons of the first linear sequence, c) displaying at least one data entry field (422; 922; 1022; 1122; 1322; 1422; 1522) for a selected one of the second-level icons for entering the data, wherein the at least one data entry field (422; 922; 1022; 1122; 1322; 1422; 1522) is displayed spatially separated from the first and second linear sequence while the first and second linear sequence is displayed, d) entering the data into the at least one data entry field, e) going back to step c) for a consecutive one of the second-level icons until all data entry steps of the second linear sequence have been completed, f) going back to step b) for a consecutive one of the top-level icons. The Board confirmed the verdict of the ED: [2.1.1] Claim 1 relates to a method of entering data in a data processing system using a particular graphical user interface (GUI). The layout of this GUI comprises two horizontally aligned linear sequences of icons. The second sequence is displayed for a selected icon of the first sequence. The leading icon of the second sequence is vertically aligned with the selected icon of the first sequence. In addition, one or more data entry fields are separately displayed for a selected icon of the second sequence. [2.1.2] In the appealed decision, claim 1 was refused for lack of inventive step without citing a document. In section 6.1, it was stated: “In the present case, it cannot be seen how data entry is technically made more efficient. In particular, the method of claim 1 still requires the user to enter data for every field for which data is needed.” [2.1.3] In the grounds, the appellant proposes to take the notorious GUI type “wizards” as the closest prior art […]. They are already mentioned as prior art in the description […]. It is further stated […] that the technical problem of the invention is “making data entry more efficient”. In essence the argument, further elaborated in the oral proceedings (OPs), is that the display of the two rows of icons makes it easier, particularly for an inexperienced user, to identify the stage reached in a process of data input requiring a number of steps and substeps. The user will, as a consequence, grasp more quickly the nature of the data to be input at the present stage, and therefore respond more quickly than if the rows of icons were not displayed. The appellant further asserts, and the board accepts at least for the sake of argument, that less time-consuming input transactions have the technical effect that less computer resources are used. [2.1.4] Claim 1 differs from wizards in what is displayed on the screen, i.e. in the particular GUI layout. Since the difference between the claim and D2 or the Microsoft Windows 95 start menu would also consist solely of particularities of the GUI layout, the board accepts that wizards are as good a starting point as either of these others for discussing the question of inventive step. [2.1.5] It is established case law of the Boards of Appeal, and the appellant has not disputed this, that the subjectmatter of a claim cannot be inventive if there is no technical contribution to the art, i.e. if there is no technical problem solved by the claimed subject-matter vis-à-vis the closest prior art, or equivalently if there is no additional technical effect over and above any technical effects present in the closest prior art. The appellant has argued that the reduction in the use of computer resources explained above is the required additional technical effect in the present case. The appellant further argues that any layout improvement which has the effect of 952 | 3398
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“lowering the cognitive burden of the user”, at least in the context of an input operation, should therefore be at least potentially the subject of a patent. In other words a particular layout of information, not specifying the nature of the content, should not be considered to be a “presentation of information” in the sense of A 52(2)(d). The appellant seemed however to accept in the OPs that such an effect relying on a particular content of information, rather than its layout, would not be a patentable contribution. The board notes that this fact provides something of a “reality check” on the appellant’s argument, since the argument would apply equally well to amendments of content, such as replacing an instruction to move a cursor “vertically or horizontally” by “up or down”, as to amendments of layout. [2.1.6] The board considers that a particular GUI layout could indeed shorten the search of an inexperienced user for where or what data to enter. As a result, less computer resources may be used. However, this reduction in use of resources would be caused by the way the brain of the user perceives and processes the visual information given by a particular way of presenting information. The appellant is effectively arguing that there is a chain of effects: the improved layout (which is indeed a “presentation of information” according to case law - see below) “lowers the cognitive burden” for the user; the user therefore responds more quickly; and the computer therefore requires less resources. But in terms of technical effects this is a broken chain: the layout has an effect on the mind of the user; a mental transition takes place more quickly than in the prior art; the user responds more quickly, so that the computer uses less resources. Only the third of these links can be called a technical effect, in that the user leaving the computer idle for a shorter time than in the prior art reduces resource consumption. The board does not accept that such a broken chain can be used as evidence of the required technical effect overall. It would seem that each of the links must be technical in nature for such a chain argument to be persuasive. Thus, the appellant has not established that there is an additional technical effect caused by the improved layout: the layout produces a psychological effect on the user; the user produces a technical effect on the computer. This is not the same as saying that the layout produces a technical effect on the computer. [2.1.7] Nonetheless, the board must consider whether perhaps the first step alone can be considered as causing an additional technical effect / solving a technical problem. In this context, it is necessary to consider the appeal cases cited during these proceedings. None of them relied on such a “chain” argument as employed by the appellant here. All however concerned effects on the perception of a user, one way or another. However in some cases, there was considered to be a technical effect and in others not. [2.1.8] The appealed decision states […] that “human perception phenomena cannot be qualified as being of a technical nature”. The decision cites T 619/02 [2.3.2] as a basis for this general statement. The board agrees with this as a general statement. [2.1.9] The board does agree with the appellant […] that the cited decision (T 619/02) is rather different to the present case. It relates to odour selection testing, and not to GUI design. The appellant argued during the OPs that the claim of the main request in T 619/02 contains “monitoring implicit odour memory by monitoring speed of response and subject confidence of accuracy of response in the subsequent step of odour recognition”. This meant that the claim monitored the response of the user, which was not the case here. The board agrees with the appellant that the claimed invention does not monitor the user’s behaviour. However, the board nonetheless endorses the statements in the cited decision about human perception phenomena at least usually depending on “personal factors (cultural background, gender, age, past experiences, capacity to evoke dormant meanings and emotions, perception subjectivity, etc.)”. This observation also applies to the effects of GUIs in general. Merely the kind of perception is different. [2.1.10] There is well-established case law which considers a GUI layout as such to be non-technical, being a “presentation of information” (A 52(2)(d)). In support of this position, the board cited T 1143/06. It concerns the representation of files satisfying some selection criteria as objects moving on a display screen, the speed of movement conveying information relating to the selection. On the issue of whether this representation is to be regarded as a presentation of information in the sense of A 52(2)(d), the decision argues as follows […]: “Returning now to the present invention, the movement of the elements symbolising the data files over the screen is intended to convey information. This is clear from the patent application itself: ‘Patterns in the data are readily recognisable since each element moves in accordance with the relevance of the sort statements to the data file it represents’ (p.3, 2nd sentence). Regarded in isolation this feature must be held to be ‘presentation of information’ in
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T 1741/08 – A Broken Chain
K’s Law – The ebook
the sense of A 52(2)(d). In its claim context the feature can therefore only contribute to an inventive step if it additionally produces a technical effect.” The present board agrees with this view, which is equally applicable to the present case; the lines of icons displayed are also intended to convey information, namely at which step in the input process the user finds himor herself. [2.1.11] Decision T 1143/06 discusses a number of previous cases, some of which directly concerned the effects of particular layouts of information, others of which discussed the more general context of technical and nontechnical effects. Amongst the cases discussed are T 49/04 and T 643/00, both of which have also been cited in the course of the present case. Decision T 1143/06 explicitly states that it does not follow T 49/04 and that, “a feature which relates to the manner how cognitive content is conveyed to the user on a screen normally does not contribute to a technical solution to a technical problem. An exception would be if the manner of presentation can be shown to have a credible technical effect”. […] The present board finds the reasoning in T 1143/06 to be convincing and consistent with the case law discussed therein. With respect to T 49/04, therefore, the board does not follow this decision for the reasons given in T 1143/06. The board notes that T 49/04 itself explicitly did not follow a previous decision, T 125/04, which this board would rather endorse. [2.1.12] As to the other decision T 643/00, discussed in T 1143/06, the board agrees with the appellant […] that T 643/00 comes closer to the present case than T 619/02, since it deals with arrangement of menu items on a screen, and not with odour selection. In T 643/00 [catchword, 16], searching and retrieving images are considered as technical tasks. However, not everything that supports a technical task has itself a technical character. For example, the advice to have a good night’s rest in order to make searching images more “efficient” would not have technical character. [2.1.13] In T 643/00 [17], displaying several images side-by-side in low resolution and allowing selection and display of an image at higher resolution is said to provide information to the user in the form of a technical tool. The board noted during OPs that T 643/00 [10,16-17] always mentions the technical feature of a low resolution of the image in addition to the side-by-side arrangement of the images, whereas the present application merely defines the way in which the icons and the data entry field are presented (including their alignments and their spatial relationship). Even the appellant of T 643/00 included the reduced resolution in its argumentation […]. Moreover, the low resolution, permitting the simultaneous display of a number of images, is a distinctive technical feature over the closest prior art document […]. In the OPs, the appellant contradicted this and argued that the closest prior art referred to in the decision already displayed low resolution versions of high resolution images. The board considers that on this point the appellant misreads the decision. The board cannot find any reference in the decision to the prior art disclosing the display of low resolution versions of high resolution images. In section 9 the decision states, “The prior art of document EP-A-0 392 753 seems to aim at a high speed search of images by using the lowest resolution image data of the images hierarchically encoded and stored in the database 5 (...). The details how the search could be done, however, remain in the dark.” This lack of disclosure of display of the low resolution images in the prior art appears in fact to have played a significant role in the assessment of the inventive step in the decision. Therefore, in the board’s view the technicality in T 643/00 comes from the technical character of images and their resolution, and the technical effect is the ability to display several images simultaneously if low resolution versions of the image are used. In the present case, there is no analogy to the technical feature of an image resolution. [2.1.14] Decision T 1143/06 [6.5, 1st paragraph] also cites a passage from T 244/00 [12, 3rd paragraph]: “... the arrangement of the menu items on the screen, if it is not exceptionally determined by technical considerations, is not a technical aspect of a menu-driven control system.” The board which decided T 643/00 (which also cites T 244/00) apparently considered that their case was such an exception. [2.1.15] In its letter dated 15 June 2012, the appellant cited T 928/03 which was said to confirm “that visual information on a GUI which enables a user to perform a task on the GUI in interaction with a data processing system more efficiently is of technical character” […]. During OPs, the appellant pointed to […] its letter where 954 | 3398
T 1741/08 – A Broken Chain
K’s Law – The ebook
the principle of “conflicting technical requirements” of T 928/03 [4.3] was transferred to the present application. The latter was said to resolve the technical conflict to present the user as much information as possible, but not too much in order to avoid confusion of the user about which data entry step he is actually performing. The board cannot follow this argumentation, since choosing what to display is part of the presentation of information. If the choice of what to display were technical, then every GUI layout would be technical. The application contains several such choices, e.g. in figure 8 contains additional selection possibilities […]. Decision T 928/03 concerns a video game involving two teams of players and a ball (e.g. football). An image of the virtual game is presented to the user. In addition to presenting a “realistic” view of (part of) the playing field including players and ball, there are markers displayed, showing for example which player has possession of the ball and which is the nearest to pass to. Given the requirement to present a realistic view of the playing field in T 928/03, one object in a scene may obscure another one because of the geometrical constraints of viewing the scene from a particular point of view (thus giving rise to the conflict which the decision refers to). The invention in that case solved this technical problem by changing the size and positioning of the markers. On this basis, the board accepted that there was a technical effect. But in the present case, there is no scene. There is also no technical conflict solved by separating items and data entry fields spatially. The only effect (e.g. of avoiding the user being confused in order to improve inputting) emerges simply from the psychological reaction of the user. [2.1.16] Applicant’s aforementioned letter alleges that T 333/95 is the base of T 928/03 [...]. This is not precisely correct; the latter mentions the former but does not base itself upon it. Be that as it may, the appellant’s letter further states that T 333/95 holds that a technical contribution can be achieved by a GUI which decreases the mental and physical effort of the user. This is said to be the situation of the present application. Decision T 333/95 concerns using a computer to produce animations. In order to produce a scene in which a particular object moves, the selected object takes the place of the cursor, so that the user can move it around with the mouse as desired, while the system records the movements of the mouse and translates them into a script of commands for moving the object in the later display of the animated scene. However, the board in that case clearly considered the feature of “making said graphics object the current cursor” in T 333/95 as a technical feature per se. This “graphics object cursor” replaces the normal cursor (also technical) and its movements are recorded and translated into a kind of programming language […]. There was at least a technical effect in allowing the user to move the selected object around under control of the mouse. The decision does not say that every GUI design that makes user’s inputting more efficient has a technical character. Therefore, this decision does not apply to the present case. [2.1.17] Thus, in all of the cases T 643/00, T 928/03 and T 333/95 the relevant board identified a specific technical effect, which made these cases exceptional. There was something other than the simple choice of what information to display and with what layout to display it, which meant that in these exceptional cases the displayed information might play a part in the assessment of inventive step of the claimed invention. In the present case the appellant has not put forward any convincing argument that there is such a technical effect. Neither is any such effect evident to the board as a result of its own analysis. In the absence of any technical effect arising from the claimed layout features, it is confirmed that claim 1 of the main request is not inventive vis-à-vis the well-known “wizards” for computer input. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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K’s Law – The ebook
T 495/10 - Back In Switzerland
T 495/10 - Back In Switzerland 15 Okt 2012
This is an appeal against the revocation of the opposed patent. The patent as granted had three independent claims directed at a feed additive, the use of arabinoxylans for the manufacture of a feed additive, and a method for improving the weight gain of monogastric animals, respectively. The Opposition Division (OD) had found claim 1 of the request on file not to comply with A 84 and A 123(2) as well as A 53(c):
Claim 1 of auxiliary request 6 before the Board was essentially based on claim 1 of the request found unallowable by the OD; it read: Use of arabinoxylans or preparations or materials containing arabinoxylans for the manufacture of a feed additive for monogastric animals for improving the weight gain and/or feed utilisation of monogastric animals, said feed additive comprising at least 20% w/w of low molecular weight arabinoxylans having a molecular mass between 414 and about 52,800 Da and said feed additive being used at 1 to 50 g of said low molecular weight arabinoxylans per kg of feed. The Board found this claim to comply with the requirements of A 53(c), A 123 and A 84:
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K’s Law – The ebook
T 495/10 - Back In Switzerland
Interpretation of claim 1 [3.1] Claim 1 is drafted in a manner analogous to a so called “Swiss-type” claim as “use of arabinoxylans … for the manufacture of a feed additive for monogastric animals for improving the weight gain and/or feed utilisation of monogastric animals”. [3.2] The [patent proprietor] filed this claim during the opposition proceedings as a reaction to the finding of the OD that its previous claims relating to “a method for improving the weight gain and/or feed utilisation of monogastric animals … “ contained subject-matter not patentable under A 53(c) […]. According to the [patent proprietor], the OD’s view that both a therapeutic and a non-therapeutic effect were inseparably associated with the use of arabinoxylans and consequently its statement that the method claims were not allowable necessitated amending the claim in the way prescribed by the Enlarged Board of Appeal for a second medical use. Indeed, it is apparent from points 4 and 5 of the minutes of the oral proceedings that the new ground of opposition concerning A 53(c) was indeed admitted into the proceedings having regard to the post-published document D58. D58 was filed by [opponent] 02 in order to show that the dietary inclusion of arabinoxylans had a therapeutic and/or prophylactic effect […]. [3.3] According to EPO practice, in cases where a therapeutic and a non-therapeutic effect of a method are inseparable, because they are inevitable and inextricably linked, claims drafted as method claims are usually not allowed, as such methods are excluded from patentability under A 53(c) (see Case Law, 6 th edition 2010, Chapter I.B.4.4.2a) and the decisions therein cited). [3.4] “Swiss-type claims” were allowed in decision G 5/83 for second (or further) medical uses. There, claims directed to the use of a substance or a composition for the manufacture of a medicament for a specified new and inventive therapeutic application were allowed. The claims were exceptionally allowed because the appropriate form of protection, namely a use claim or a first medical use claim, was not possible. [3.4.1] The board sees in the present case a certain analogy to this situation. In the present case a method claim is not allowable because the claimed subject-matter embraces (an inseparable) therapeutic treatment excluded from patentability. The drafting of the claim as a “Swiss-type claim” ensures therefore that, insofar as the inseparable therapeutic method is concerned, the claim does not infringe the requirements of A 53(c). [3.4.2] Although it has been said in some decisions that a Swiss-type claim relating to a non-therapeutic activity has to be interpreted as defining a conventional process of preparation (see T 1286/05 [2.3-4], and T 611/09 [10.1]), it is the board’s view that the approach of G 5/83 applies in a situation such as the present one where the claim, although relating to a non-therapeutic activity, also embraces an inseparable therapeutic activity. Thus, in analogy to a second medical use claim in the Swiss-type format, the features supporting novelty (and inventive step) of claim 1 of auxiliary request 6 will be the intended use. In other words, novelty and inventive step have to be examined in the light of the intended use, namely the use of the specified feed additive for improving the weight gain and/or feed utilisation of monogastric animals. Amendments [4.1] Amended claim 1 is based on claim 16 as filed, this claim being directed to “The use of arabinoxylans or preparations or materials containing arabinoxylans for the manufacture of a feed additive according to any of the claims 1 to 15”. In addition to the features of claim 1 to which claim 16 refers back, it has been specified that the feed additive is “used at 1 to 50 g of said low molecular weight arabinoxylans per kg of feed”. This feature is disclosed on page 6, lines 28 to 32 of the application as filed where it is stated that: “In a preferred embodiment the enrichment of the feed with the feed additive results in a low molecular weight arabinoxylan-concentration in the feed between 0.1 and 10% (w/w). In a more preferred embodiment, the low molecular weight arabinoxylan-concentration in the feed varies between 0.1 and 5 % (w/w)”. The latter range is equivalent to the now claimed amount per kg of feed. [4.2] The OD and the [opponents] objected to the amendment on the grounds that it could mean that the 1 to 50 g of arabinoxylans were simply present in the feed additive without it being incorporated into a feed or that it could mean that the 1 to 50 g of arabinoxylans were present in the feed because they were contained in a feed additive that was actually incorporated into a feed. These two possible meanings thus resulted in an objection under A 123(2).
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K’s Law – The ebook
T 495/10 - Back In Switzerland
[4.3] The board cannot accept these arguments. Claim 1 indicates that the feed additive is “being used at 1 to 50 g of said low molecular weight arabinoxylans per kg of feed” (emphasis by the board). That is to say, the low molecular weight arabinoxylans present in the feed additive are those which result in the required concentration per kg of feed. There is no room for an interpretation of the claim wherein the feed additive is not incorporated into a feed. Thus claim 1 has been limited to the embodiment wherein the feed additive is added to the feed in the specified amount, an embodiment explicitly disclosed as preferred in the application as originally filed […]. [4.4] Concerning the question whether the amended claim 1 extends the protection conferred, it is noted that claim 1 is based on claim 12 as granted, this claim being directed to “the use of arabinoxylans ... for the manufacture of a feed additive according to any one of claims 1 to 11”. Compared to granted claim 12, the subject-matter of claim 1 has been limited by specifying that the feed additive is “for monogastric animals for improving the weight gain and/or feed utilisation of monogastric animals” and that the feed additive is used “at 1 to 50 g of said low molecular weight arabinoxylans per kg of feed”. Thus, the scope of claim 1 of auxiliary request is limited over the scope of claim 12 as granted. [4.5] Insofar as the [opponents] argued that the granted claims did not protect a therapeutic use of the feed additive whereas the amended claims protect such use, the board notes that this line of argument contradicts the core of the [opponents’] submissions that the granted claims were not allowable because they embraced a therapeutic use. In any case, either because the therapeutic use was already embraced by the granted claims or because the granted claims, by not specifying the intended use, embraced any use, the claims have not been amended in such a way as to extend the protection they confer. [4.6] The OD in its decision did not raise any objection under A 123(2) against the remaining claims, i.e. dependent claims 2 to 8. Nor did the [opponents] during the appeal proceedings. The board sees no reason to raise any objection of its own. [4.7] Consequently, the subject-matter of the claims of auxiliary request 6 meets the requirements of A 123(2) and (3). A 84 [5.1] The OD saw a lack of clarity in the feature “said feed additive used at 1 to 50 g of said low arabinoxylans per kg of feed” and concluded that said lack of clarity had consequences for whether the claim fulfils the requirements of A 123(2). However, as explained above in relation to the discussion of the amendments (see point 4.3), the board sees no lack of clarity in the above mentioned feature. The objected feature therefore fulfils the requirements of A 84. [5.2] The [opponents] further argued a lack of clarity in the wording of the claim due to its drafting in the Swisstype format. The board agrees with the [patent proprietor] that so far as the EPO is concerned, a Swiss-type claim relating to a second medical use has not given rise to any problem under A 84 for almost 30 years. As set out in point [3.4.2] above, claim 1 of auxiliary request 6 has to be interpreted analogously, namely that the invention lies in the intended use. Consequently, the drafting of the claim in a manner analogous to Swiss-type claims does not infringe the requirements of A 84 either. [5.3] Finally, as regards the [opponents’] objection that the arabinoxylans referred to at the beginning of the claim (“Use of arabinoxylans ...”) are not limited to the specific low molecular weight arabinoxylans mentioned subsequently in the claim, the skilled person when considering a claim would rule out interpretations which are manifestly inconsistent with its clearly intended meaning. In the present case, it would be immediately evident to the skilled person that the claim embraces only the use of the specified arabinoxylans, i.e. the low molecular weight arabinoxylans. [5.4] For these reasons the claims do not infringe the requirements of A 84. A 53(c) 958 | 3398
K’s Law – The ebook
T 495/10 - Back In Switzerland
[6.1] A 53(c) requires that European patents shall not be granted in respect of methods for treatment of the human or animal body by surgery or therapy. [6.2] The [opponents] objected to claim 1 as embracing a therapeutic method, the reason being that the low molecular weight arabinoxylans may have both a therapeutic and a non-therapeutic effect. [6.3] This argument, however, no longer applies to present claim 1 which, as set out above, is drafted in a manner analogous to a Swiss-type claim as “Use of arabinoxylans … for the manufacture of a feed additive …”. Such a claim formulation is allowable even if the manufactured feed additive were used in a therapeutic method. [6.4] Consequently, the requirements of A 53(c) are met. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 306/09 – You Have To Cite Something
K’s Law – The ebook
T 306/09 – You Have To Cite Something 13 Okt 2012
Both the patent proprietor and the opponent appealed against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. The OD had found claim 1 of the main request to lack inventive step and had justified this conclusion as follows:
The Board did not agree: [2] According to established jurisprudence of the boards of appeal, to satisfy the requirement of R 111(2), a decision should contain, in logical sequence, those arguments which support it. The conclusions drawn by the deciding body from the facts and evidence must be made clear. Therefore, all the facts, evidence and arguments which are essential to the decision must be discussed in detail in the decision including all the decisive considerations in respect of the factual and legal aspects of the case. The purpose of the requirement to reason the decision is to enable the parties and, in case of an appeal, also the board of appeal to examine whether the decision could be considered to be justified or not (see T 278/00; T 1366/05). [3] In the present case, the OD decided that the subject-matter of claims 1 and 16 of the main request did not involve an inventive step, with the consequence that this request was rejected. [4] A 56 requires that the assessment of inventive step is made having regard to the state of the art. Accordingly, the logical chain of reasoning of the decision under appeal to justify the conclusion under A 56 has to contain a proper assessment of the question of obviousness in the light of the prior art. However, point 3.2 of the decision under appeal, which is the portion of said decision which may reveal the reasoning of the OD on the issue of inventive step, does not contain any reference to any prior art; said paragraph only states that the claimed subject-matter did not comply with the requirements of A 56 since the subject-matter claimed “encompasses embodiments which do not solve the problem forming the basis of the patent and which do not achieve the intended effect”. The OD thus arrived at the conclusion that the claimed subject-matter lacked an inventive step by finding that a purported effect had not been achieved over the whole breadth of the subject-matter claimed, without assessing obviousness in the light of the prior art. 960 | 3398
T 306/09 – You Have To Cite Something
K’s Law – The ebook
Since the requirement of inventive step as defined in A 56 is based on the state of the art, the decision under appeal, by arriving at its conclusion of lack of inventive step without reference to prior art, is insufficiently reasoned in the sense of R 111(2) (see T 87/08 and T 2375/10). [5] This failure amounts to a substantial procedural violation requiring that the decision under appeal is set aside and the case is remitted to the first instance (see T 278/00 [5]). The appeals are thus deemed to be allowable and the board considers it to be equitable by reason of the substantial procedural violation to reimburse the appeal fees of both parties pursuant to R 103(1)(a). Should you wish to download the whole decision, just click here. The file wrapper can be found here. T 2375/10 was discussed in a previous post (here).
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K’s Law – The ebook
Publish Or Perish (ctd.)
Publish Or Perish (ctd.) 13 Okt 2012
Here are the updated quarterly figures on the publishing activity of DG3.
As you can see, the activity was quite intense during the third quarter (with respect to what we have seen in recent years). As a consequence, I have to increase my estimate for the overall number in 2012 from 1300 to almost 1500 decisions. The decisions still arrive in rather big bunches, as the following graph shows:
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T 2454/11 – Postal Duties
K’s Law – The ebook
T 2454/11 – Postal Duties 12 Okt 2012
This is an appeal against the decision of the Opposition Division to reject the opposition against the patent under consideration. The decision was sent on June 27, 2011, which means that the time limit for filing an appeal expired on September 7, 2011. On the very next day, the opponent informed the EPO that its representative had found through online file inspection that the appeal was absent from the Register although it had been sent on August 23. The opponent argued that the appeal must have reached the EPO. In the private practice of the representative, letters to the EPO were collected each day, prepared for posting and then handed over to UPS at 4 o’clock. This had also happened on August 22 when the appeal under consideration as well as two further letters, all in the same envelope, were given to UPS. The other two letters appeared in the Register. The opponent also filed a request for re-establishment, by way of precaution. Here is what the Board had to say: *** Translation of the German original ***
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T 2454/11 – Postal Duties
K’s Law – The ebook
[2.1] It is the appellant that is responsible for the receipt of the notice of appeal. It carries the burden of proof [for the assertion] that the submission has actually been filed. Otherwise the Office would have to prove that it has not received a document. The EPO cannot be expected to provide such proof because it is difficult to prove that something has not happened. For the very same reason, it is the EPO that has to prove that its letters have reached the addressees when they assert that they have not received them. [2.2] The Office ensures proof of receipt by having its letters that define time limits sent as registered letters with advice of delivery. It is the Office that bears the consequences of deficiencies that are relevant for proof, as far as dispatch and transmission of a document are concerned. In contrast to the EPO, the party sending something to the EPO has several additional options regarding the way in which the item is sent, which facilitates the proof of receipt. [2.3] This holds true for both material and immaterial transmission of documents. When material transmission is envisaged, it is possible to use the traditional postal transmission of a document by means of registered letter with advice of delivery and/or the addition of a notice of receipt that is to be returned. Moreover, the sender can choose delivery by hand and thereby obtain confirmation of receipt by the mailroom (Poststelle) of the Office. A document may also be transmitted in immaterial form, electronically, by fax or e-mail, which is much more simple, sure and fast. When doing so, the sender receives an electronic or automatically printed notice of receipt. He can file them and use them as evidence if need be. These transmission techniques are nowadays the most common ways of transmitting documents to the EPO. Shortly after a notice of appeal has been received at the EPO, the sender normally receives a confirmation of the competent registrar (Geschäftsstelle) as well as the reference number. This allows him to see that the appeal has been received, although [the confirmation] does not have to occur within the legal time limit. He can also obtain the same information, again possibly after expiration of the time limit, by electronic file inspection, as in the present case. [2.4] The great number of – in principle equivalent – options regarding the transmission of documents to the EPO does not change the sender’s duty to be capable of proving the receipt of his letter. The fact that a document was lost or may have been lost at the EPO as a consequence of carelessness of its agents does not alter this assessment. In view of this [the sender] has to choose the way of transmission that is least problematic if something goes wrong (im Ernstfall). If he chooses a way of transmission for which proof of receipt is difficult, he has to bear the consequences. This is particularly true in the case of appealing opponents because they are excluded from remedy by means of re-establishment into the time limit for filing an appeal under A 122 (see point [4] below) when the time limit was missed and they fail to provide proof of receipt because of a clerical oversight (Büroversehen). [2.5] Contrary to the opinion of the appellant, and contrary to Board of appeal decision T 1200/01, the strict rule that it is the party that has sent a letter to the EPO that has to bear the burden of proof is not attenuated according to the balance of probabilities of receipt. Such a standard of proof would seriously affect legal security and would lead to a softening of the due legal clarity in formal proceedings such as those before the EPO. As a matter of fact, the indefinite legal concept of probability, which would have to be interpreted when a dispute arises, and the judicial assessment (gerichtliche Abwägung) of whether the delivery is more or less likely, would lead to multifaceted casuistry where contradictions cannot be excluded. This goes against the need for transparent and clear proceedings, and is to be avoided in the interest of third parties involved in the proceedings and of the public. [2.6] As a consequence, the decision on the receipt of a document cannot be based on a high probability of delivery. Rather, the sender has to provide proof for the receipt to the satisfaction of the Board. [2.7] Even if – contrary to the opinion of the Board, and although there is no real need to decide on that matter – a high probability of receipt of the notice of appeal was sufficient, it may be questioned whether the appeal was filed in due time. This is because the explanations of the appellant, according to which an envelope containing the notice of appeal and two further documents as well as a list of the three documents (document D1), which was deemed to be an acknowledgement of receipt, was handed over to the UPS courier on August 22, 2011, and delivered to the EPO on the day after, do not dispel corresponding doubts in a way that would allow to consider that receipt in due time was highly probable.
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T 2454/11 – Postal Duties
K’s Law – The ebook
The Board considers the explanations of the representative of the appellant and the declarations in lieu of oath on behalf of the secretaries (cf. documents D6 and D7) to be credible, but it does not find them suitable for establishing that the receipt of the notice of appeal was highly probable. It may well be that the secretary has put the notice of appeal into the envelope and that the document was lost at the Office subsequently. However, the declarations in lieu of oath filed by the appellant allow to imagine other not unlikely courses of events, such as the possibility that because of an oversight the notice of appeal was not put into the UPS envelope. Indeed, the secretary in charge of the dispatch declares in document D7: “I have prepared the documents to be sent to the EPO on August 22, 2011, as I do every day. … I am not aware that I could, because of an oversight, have omitted to put any document referred to in the transmission logbook (Übermittlungsbuch) into the parcel to be sent to the EPO.” This declaration also allows the converse assumption. The statement “I am not aware” leaves open whether the document was actually sent. The Board considers this to be explicable because the facts under consideration occurred more than eleven weeks before the statement was made. According to the common experience of life, an assistant who sends several mail items (Poststücke) every day may not be expected to recall exactly how all items were sent. Moreover, neither the three documents nor D1 contain any hint for the mailroom that it should confirm receipt. Also, the appellant itself admits that document D1, which lists the individual documents contained in the UPS envelope, was neither postmarked by the EPO nor sent back to the representative’s law firm. Finally, D1 does not appear in any of the electronic files to which those documents belong, so that it is questionable whether this document was received. Assuming that high probability was indeed the correct standard of proof, all these circumstances give rise to doubts as to whether the notice of appeal was indeed delivered on August 23, 2011, such that one can hardly conclude that the receipt was highly probable. Incidentally, the Board wishes to point out that the return of document D1 as acknowledgement of receipt, which was expected by the representative of the appellant, appears not to have been monitored. There were indeed more than two weeks between the receipt of the envelope on August 23, 2011, and the day on which the time limit for filing an appeal expired. Request for re-establishment into the time limit for filing an appeal [3] An opponent is not entitled to have its rights re-established when it misses the time limit for filing an appeal under A 108, 1st sentence (cf. G 1/86). Thus the request for re-establishment into the time limit for filing an appeal is inadmissible. Filing of the appeal As the notice of appeal has not been received in due time and as the request for re-establishment cannot be granted, the appeal is deemed not to have been filed, A 108, first sentence. According to the case law of the Boards of appeal, the appeal fee is to be reimbursed when the appeal is deemed not to have been filed, see J 21/80 [4]. Request for reimbursement of the fee for re-establishment Pursuant to R 136(1), second sentence, a request for re-establishment shall be filed in writing within two months of the removal of the cause of non-compliance (in the present case: September 8, 2011). It follows that the request for re-establishment filed on November 8, 2011, together with the fee for re-establishment, has been filed in due time. In view of G 1/86, older decisions of the Boards of appeal of the EPO have considered a request for reestablishment filed by an appealing opponent to be “void” (gegenstandslos) or “legally ineffective” (nicht rechtswirksam gestellt) and have ordered reimbursement of the fee for re-establishment, see e.g. T 520/89 [2-3] or T 266/97 [4]. In more recent decision T 1026/06 the Board made the following statement on this issue: “The fee for re-establishment cannot be reimbursed. The reimbursement of a fee is only possible when the fee has been paid without there being a cause in law (Rechtsgrund) or when 965 | 3398
T 2454/11 – Postal Duties
K’s Law – The ebook
the situation is such that the law requires reimbursement. Pursuant to A 122(3) [EPC 1973; now R 136(1), third sentence] a request for re-establishment of rights shall not be deemed to have been filed until the fee for re-establishment has been paid. Therefore, the payment of the fee is required in order to make the request effective. Thus there was a cause in law for the payment and there is no situation where the law requires reimbursement.” The Board endorses this opinion and adopts it as its own. Thus the request for reimbursement of the fee for reestablishment has to be dismissed. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1467/11 – Shortcut
K’s Law – The ebook
T 1467/11 – Shortcut 11 Okt 2012
This is an appeal against the revocation of the opposed patent by the Opposition Division. The OD had refused to admit both the main request and the first auxiliary request filed by the patent proprietor because they were late filed and would have required an additional search. An appeal was filed in the name of Daimler AG and BorgWarner Turbo Systems GmbH. However, the patent had been transferred to Daimler AG and BorgWarner Inc. on November 6, 2008. The statement of grounds of appeal was filed in the name of BorgWarner Inc. The opponents requested the Board to dismiss the appeal. The patent proprietor corrected the name of the party to “BorgWarner Inc.” and requested the Board to stay the proceedings until the Enlarged Board of appeal had given its decision in case G 1/12. The Board did not grant this request, for the following reasons: *** Translation of the German original *** [1] Under A 112(1)(a), in order to ensure uniform application of the law, or if a point of law of fundamental importance arises, the Board of appeal shall refer any question to the EBA if it considers that a decision is required. Question 1 referred [to the EBA] in case G 1/12 concerns the possibility of correcting the name and address of a party that has been indicated by mistake, as a remedy to “deficiencies” provided by R 101(2), and of correcting this error under R 139, respectively. The questions referred could also arise in the present case, in the assessment of the admissibility of the appeal. However, the Board does not believe a decision of the EBA to be required in the present case because the question of whether the appeal is admissible may be left open. The Board is of the opinion that it does not necessarily follow from A 110, first sentence (“If the appeal is admissible, the Board of appeal shall examine whether the appeal is allowable.”) that a decision on the admissibility of the request has to be taken at first. In configurations where the question of allowability can be decided without further ado but where a decision on admissibility cannot be taken yet, the latter decision need not be made. This interpretation prevents decisions from being delayed because [the Board] waits for a decision of the EBA that is manifestly not needed in the end. Thus the request for a referral to the EBA is dismissed (A 112(1)(a), second sentence). Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 937/09 – Salami Vice
K’s Law – The ebook
T 937/09 – Salami Vice 10 Okt 2012
Salami tactics may backfire on whoever uses it … including the Examining Division (ED). The present appeal was filed against the refusal of an ECT application claiming a free-piston device. The application contained 1 independent and 62 dependent claims. In its first communication of December 14, 2006, the ED pointed out that claim 1 was not novel and that, in view of the great number of non-converging dependent claims, it was not clear which features were to be considered. On March 20, 2007, the applicant filed a new claim 1 combining claims 1, 6, and 13 of the claims as originally filed. The ED again found this claim to lack novelty. The applicant filed an amended claim, but the ED came to the same conclusion as before. On February 22, 2008, the applicant filed a new claim 1 combining claims 1, 6, 13, and 28 of the claims as originally filed. The ED found this claim to lack inventive step because the added feature was a common measure. It summoned the applicant to oral proceedings (OPs) to be held on November 20. On September 19, 2008, the applicant filed several requests. Independent claim 1 of auxiliary request 3 combined 1, 20, 46 and 48 of the claims as originally filed. In the course of the OPs the applicant withdrew the main request as well as auxiliary requests 1 and 2, so that only auxiliary request 3 was still on file. The ED refused this request by invoking R 137(3). The ED made the following statement (in English translation): “… The characterising feature of what is now the main request on file, which had been filed as auxiliary request 3, concerns subject-matter that is completely different from the features that had been discussed in the course of the long examining proceedings. The springback volume is not mentioned in the claim any more, nor is the gas flux. Rather, the electric control for synchronising two pistons is the characterising feature. In view of this auxiliary request, a new novelty assessment would have been required. When exercising discretion under R 137(5) in the presence of further limitations along a certain direction (which can be seen as “of funnel shape”) it is common practice to discuss the further limitations. The later in the proceedings [such limitations arise], the more critical the consideration of whether the amendment is to be admitted becomes. In the present case, there was no further limitation: the electric control constitutes a wholly new domain that had not been covered in the proceedings yet. In view of the very late stage of the proceedings, the applicant had had enough opportunities to amend. For the sake of legal security, there is no reason to re-start the proceedings by examining along this different direction. Thus the ED refuses to give its consent under R 137(3) to the present main request. For the sake of completeness, the ED wishes to point out that even if the former features (springback volume, gas change, etc.) had not been deleted, the domain covered by the new claim would have been completely different and would have required fresh in-depth examination. …” The Board found R 137(3) EPC 2000 in its version of December 7, 2006, to be applicable and then went on: *** Translation of the German original *** [3.3] R 137(3) in this version reads:
968 | 3398
T 937/09 – Salami Vice
K’s Law – The ebook
“After receipt of the first communication from the ED, the applicant may, of his own volition, amend once the description, claims and drawings, provided that the amendment is filed at the same time as the reply to the communication. No further amendment may be made without the consent of the ED.” When deciding on whether after the first communication further amendments are to be admitted or not, the ED has a margin of discretion under R 137(3), second sentence (see G 7/93 [2.1]) Criteria for exercising discretion [3.4.1] According to the Enlarged Board of appeal (see G 7/93 [2.5]) the ED has to consider all relevant factors which arise in a case. In particular, it must consider both the applicant’s interest in obtaining a patent which is legally valid in all of the designated States, and the EPO’s interest in bringing the examination procedure to a close by the issue of a decision to grant the patent, and must balance these interests against one another. [3.4.2] A 94(3) reads: “If the examination reveals that the application or the invention to which it relates does not meet the requirements of this Convention, the ED shall invite the applicant, as often as necessary, to file his observations and, subject to A 123(1), to amend the application.” Thus, the applicant has to be informed of deficiencies, in the form laid down in R 71(1)(2). (a) Under R 71(2) any communication under A 94(3) shall contain a reasoned statement covering, where appropriate, all the grounds against the grant of the European patent. Therefore, this rule contains two requirements: First, the applicant has to be informed of all requirements of the EPC which are considered not to have been met. Secondly, for each of said requirements it has to be informed of all the legal and factual reasons which lead [the ED] to the conclusion that the requirement has not been met (T 951/92). (b) In the travaux préparatoires for the EPC 1973 it was first planned to have the first requirement introduced as a mandatory requirement into A 90(2). In the notes regarding a first draft for an agreement on a European system of patent law dated May 29, 1961, number 2, it is pointed out that the ED should give all the objections in its communication (Prüfungsbescheid). However, the deliberations then led to a more flexible approach leaving it to the ED which reasons, and to which extent the reasons not to grant a European patent, should be summarised in a communication. This decision should be made so as to ensure procedural economy (J 32/95). (c) Thus the EPC does not tell the Examiner what would be the most appropriate way of conducting the examining proceedings. However, as a rule, the first communication should already contain a comprehensive assessment of the application so that the examining proceedings can be terminated with as few communications as possible. The first communication should already inform the applicant on all deficiencies of the application, including the objections regarding the dependent claims. As soon as the applicant has had the opportunity to amend once, the consent of the ED is required for further amendments. When there is lack of unity or clarity, or when there are many dependent claims, it may sometimes appear to be more reasonable to raise only certain objections in the first communication. However, in such a case the applicant can only be expected to react to these objections and not to others of which it is not aware yet. Thus, if the Examiner, for reasons of procedural economy, only raises objections in subsequent communications although (s)he could have raised them before, (s)he has to take this fact into account when exercising discretion under R 137(3), second sentence. In other words, [the Examiner] cannot refuse his/her consent under R 137(3), second sentence, to amendments if they constitute an objectively appropriate attempt to overcome deficiencies that have only been criticised in a subsequent communication but which could have been criticised already in the first communication. (d) The situation may be summarised as follows: The admission under R 137(3), second sentence – in its version according to the decision of the Administrative Council of December 7, 2006 – of amendments of a European patent application filed after the first communication (see EPC, 13th edition, EPO, 2007) is within the discretion of the ED. Amendments filed by the applicant in response to a communication which had pointed out, in a substantiated manner, a particular deficiency for the first time therefore have to be admitted by the ED if this deficiency could 969 | 3398
T 937/09 – Salami Vice
K’s Law – The ebook
already have been criticised in the first communication and if the amendments constitute an objectively appropriate attempt to overcome this deficiency. [3.5] Apart from R 137(3), R 116(2) provides a particular rule regarding amendments of the application in case OPs are held: it is within the discretion of the ED not to take into account amendments of the application if they have not been filed before a point in time that is determined in the summons to OPs. However, the fact that amendments have been filed before this point in time mentioned in the summons to OPs according to R 116 […] does not mean that R 137(3) is not applicable. Requests filed in due time under R 116 can only be refused under R 137(3) if the ED’s discretion has been duly exercised, in application of the above mentioned criteria. Application to the present case [4.1] The first communication was posted on December 14, 2006. Subsequent to this communication the applicant has repeatedly filed amendments of the application before the ED refused the last set of claims on file, which had been filed as third auxiliary request on September 19, 2008. Thus the amended set of claims contains “further amendments” within the meaning of R 137(3), second sentence, the admission of which is within the discretion of the ED. [4.2] In this context it has to be noted that the application comprises 63 claims, which is a relatively great number in comparison to the average number of claims. [4.2.1] When the EPC was drafted and the question arose how many claims could be accepted, the legislator had to balance the interest of the general public to be able to determine the scope of protection without undue effort, and the interest of the patent proprietor to obtain comprehensive protection for the disclosed invention. When doing so, the legislator has chosen the means of claims fees in order to keep the number of claims within reasonable limits. The intention was to oblige the applicant to check whether all the claims it had filed were indeed necessary. This solution using fees avoids a strict delimitation which could never do justice to all particular cases. The fees also take into account the greater amount of work required for examining applications comprising a great number of claims (see Beier/Haertel/Schricker, EPÜ, Münchner Gemeinschaftskommentar, 1984, A 84, marginal numbers 132 and 133). Subject to A 84, which requires claims to be drafted in a concise manner, the legislator, therefore, has subjected the admissibility of dependent claims only to the number of claims for which the applicant has paid the claims fees. [4.2.2] As the present applicant has paid claims fees for all dependent claims, the greater amount of work needed for examining these claims has been taken into account. [4.3] Claim 1 filed together with the letter dated February 22, 2008, comprised the features of claims 1, 6, 13, and 28 of the original application. The features of claim 28 were criticised for the first time in an annex to the summons to OPs dated April 11, 2008, in view of their contribution to inventive step. The features of original claims 6 and 13 were objected to for the first time in the communication of April 2, 2007, in view of their contribution to the novelty of the claimed subject-matter. In contrast, claim 1 of auxiliary request 3 as filed with a letter dated September 19, 2008, comprised the features of claims 1, 20, 46 and 48 of the original application. Thus, in comparison to claim 1 filed with the letter dated February 22, 2008, the additional features of original claims 6, 13, and 28 were deleted and replaced by the additional features of original claims 20, 46, and 48. [4.3.1] The amendment of claim 1 consisting in the deletion of the additional feature of original claim 28 is a response to the objection to deficiencies of claim 1 which was raised for the first time in the summons to OPs of April 11, 2008. This response was filed together with the response to the summons in a letter dated September 19, 2008. As these deficiencies were already present in original claim 28, they could have been criticised in the first communication. As mentioned above (see [3.4.2]), R 71(2) does not oblige the Examiner to give all the reasons that stand against the grant of the patent in the first communication. If (s)he does not provide such reasons for dependent claims, the applicant cannot be expected to speculate on which objections could be raised against these claims based on e.g. the documents cited in the search report. Rather, the applicant may assume that the Examiner does not raise objections against these claims.
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T 937/09 – Salami Vice
K’s Law – The ebook
In the present case the ED never made substantiated statements on the dependent claims. As the applicant could not foresee what the course of the examining proceedings would be, it had to be granted the possibility of leaving the path to patentability it had chosen, as it has done by deleting the features of original claims 6 and 13 which had been introduced into the independent claim in order to overcome a previous objection. [4.3.2] These amendments constitute an appropriate attempt to overcome the criticised deficiencies because this combination of claims was originally disclosed through the dependence of original claim 48 on claims 46 and 20 and because only an “A” document was cited against original claim 46, which means that, at least in the opinion of the Examiner carrying out the search, novelty and inventive step of its features were not challenged. Thus, in view of the above principles the ED, when duly exercising its discretion, could not refuse its consent to the amendments of claim 1 of auxiliary request 3. [4.3.3] Consequently, the amendments in claims 1 of what is now the main request, which corresponds to auxiliary request 3 discussed in the OPs before the ED, are admitted. Reimbursement of the appeal fee [5] By refusing the admission of the sole request on file the ED has committed a substantial procedural violation because it has refused to examine a request although the EPO had been paid for providing this service. [The Board] does not have to examine here whether this was caused by the fact that the evaluation of the performance of Examiners does not take into account the greater amount of work due to the great number of dependent claims. However, it should go without saying that the EPO should duly take into account services for which it demands fees [when evaluating] the agents responsible [for this work]. As this procedural violation was the reason for filing the appeal, it is equitable to reimburse the appeal fee under R 103(1). The Board then remitted the case to the ED for further prosecution. It is a pity that the Board has not made an obiter dictum on the situation under R 137 as amended in 2009. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 990/09 – In The Archives
K’s Law – The ebook
T 990/09 – In The Archives 9 Okt 2012
This is an appeal againt the decision of the OD to revoke the opposed patent. In what follows, the Board deals with the novelty of the main request on file. The passage is insteresting because of the way in which the Board deals with Internet archive documents. [6] Claim 1 is directed to a protein-free and serum-free medium for the cultivation of mammalian cells. The medium comprises an ultrafiltered soy hydrolysate, at least 40% of which has a molecular weight less than or equal to 500 daltons […]. As no endotoxin content is specified regarding the soy hydrolysate in claim 1, said technical feature is to be ignored for the novelty assessment. [7] The [opponents] have argued that such a medium was described in document E4 and that, consequently, claim 1 was not novel. Document E4 which benefits from a priority date (25 September 2000) that is prior to the filing date claimed for the patent at issue (27 September 2000) is cited under the provisions of A 54(3) EPC. [8] The priority document of the patent at issue fails to describe a medium comprising an ultrafiltered soy hydrolysate, at least 40% of which has a molecular weight less then or equal to 500 daltons. Indeed, only hydrolysates, at least 40% of which have a molecular weight from 200 to 500 daltons are described […]. Moreover, according to the priority document it is an essential feature of the medium that it has an endotoxin content of less than 500 endotoxin-unities per gram. Therefore, claim 1 of the main request is not entitled to its claimed priority date and the relevant date to be considered for the novelty assessment is the international filing date, i.e. 27 September 2000, which is later than the priority date of the post-published document E4. Consequently, document E4 belongs to the state of the art pursuant to A 54(3). [9] The relevant passage of document E4, relied on by the [opponents], is Example 1, which describes a medium referred to as the ‘SF-medium’, used for the cultivation of Vero cells […]. This medium consisted of a mixture of DMEM, Ham’s F12 and L-Gln which was supplemented with a solution of one of two protein hydrolysates referred to respectively as the ‘hy-soy/UF, Quest 5X59100’ and the ‘hy-pep 1510, Quest’ […]. The content of a deep frozen ampoule of Vero cells – which are mammalian cells – was thawed and added to 9 ml of SF-medium. After centrifugation for 10 min at 1000 rpm, the pellet was resuspended in SF-medium, transferred to a Roux bottle and incubated at 37 ºC and 7% CO2 for at least 15 minutes. Therefore, the [opponents] have argued, that document E4 clearly and unambiguously describes a protein-free and serum-free medium for the cultivation of mammalian cells comprising a protein hydrolysate. For the Board it remains to be assessed whether a skilled person at the priority date of document E4 was in a position to establish that one of the two protein hydrolysates was an ultrafiltered soy hydrolysate, at least 40% of which had a molecular weight less than or equal to 500 daltons. [10] The question to be answered is whether there is sufficient evidence on file to convincingly establish, by applying the balance of probabilities as the standard of proof, that an ultrafiltered soy hydrolysate, at least 40% of which having a molecular weight of less than or equal to 500 daltons, was available to the public at the priority date of document E4 under one of the two designations ‘hy-pep 1510’ and ‘hy-soy/UF’. [11] An answer to this question is provided by the two product information web pages from ‘Quest international’ of document E68, bearing the address ‘http://web.archive.org/web/20000308080227/www.sheffieldproducts.com/products/5...’ (emphasis added by the Board). As derivable from the address, and as argued by in particular [opponent 1] at the oral proceedings, said web pages were archived on 8 March 2000. This has not been contested by the appellant which at the same oral proceedings has similarly indicated that the another web page of document E68 bearing the address ‘http://web.archive.org/web/20030518162635/http://www.sheffieldproducts.com/phar...’ (emphasis added by the Board) was archived on 18 May 2003. [12] As the two product information web pages mentioned in point 11 above were archived on 8 March 2000 they were made publicly available on the web at a date prior to the priority date of document E4. They describe 972 | 3398
T 990/09 – In The Archives
K’s Law – The ebook
‘HyPep 1510’ as an ultrafiltered soy hydrolysate, 25,4% of which having a molecular weight less than 200 daltons and 57,5% of which having a molecular weight comprised in the closed interval of 200 to 500 daltons. [13] Therefore, it can be concluded that an ultrafiltered soy hydrolysate, at least 40% of which having a molecular weight less than or equal to 500 daltons, has been commercialised by ‘Quest international’ before the priority date of document E4. [14] The [patent proprietor] has argued that it was possible that the trademark ‘HyPep 1510’ had been used by ‘Quest International’ to designate a protein hydrolysate having different technical features. It has also contended that ‘Quest’ could have prepared a special protein hydrolysate to serve the only purpose of providing the SFsupplement of document E4. In the absence of any supporting evidence, theses arguments are not tenable. [15] Additionally also document E79 was considered to be highly relevant for the novelty assessment. This document is a declaration, dated 27 November 2008, from Anthonie Kunst, the then R&D Director Proteins of Kerry Bio-Sciences, a company which was the successor of ‘Quest International’ (Quest). According to this declaration, ‘HyPep 1510’, which is an ultrafiltered soy hydrolysate (see point 8 of E79), has been commercially available from ‘Quest’ and its successor since 1997 (see point 5 of document E79). Document E79 also states that the ‘HyPep 1510’ was available in 1999 and earlier in a form wherein 82,9% of it had a molecular weight of less than or equal to 500 daltons (see point 7 of document E79). Whereas document E79 is silent as to the molecular weight distribution of the ‘HyPep 1501’ available in 2000 - because the declaration was made in response to questions restricted to the ‘HyPep 1510’ sold prior to September 1999 - (see point 4 of E79), there is no evidence on file that the composition of ‘HyPep 1510’ produced between September 1999 and the priority date of document E4 (25 September 2000) had changed. While it is true that the catalogue number used along with the commercial designation ‘HyPep 1510’ has varied over the time (‘IPL:5X59053’ on the web page archived on 18 May 2003 of document E68 and ‘IPL:5Z10493’ on the web pages of the same document archived on 8 March 2003), this does not necessarily mean that the product has changed. It could also represent a change in the presentation of the product only. In view of the evidence on file, the Board concludes that document E79 rather confirms that ‘HyPep 1510’ described in the two product information web pages of document E68 archived on 8 March 2000 (see point 11 above) is the same as the one referred to in document E4. [16] The appellant has argued that in the present case the ‘up to the hilt’ standard of proof should be applied rather than the standard of the balance of probabilities. The Board disagrees and asserts that the ‘up to the hilt’ standard, which was first developed in decision T 472/92, is to be applied for cases of public prior use where practically all the evidence in support of an alleged public prior use lay within the power and knowledge of the opponent(s) (see the Case Law, 6th Edition, 2010, Chapter VI.H, Section 4.3.1, page 558). [17] In view of the above remarks, the Board decides that document E4 describes a medium according to claim 1, which consequently lacks novelty. Therefore, the main request does not comply with the requirements of A 54(3). Should you wish to download the whole decision, just click here. The file wrapper can be found here. NB: This decision has already been presented on Le blog du droit européen des brevets (here).
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T 1084/10 – Sound Questions
K’s Law – The ebook
T 1084/10 – Sound Questions 8 Okt 2012
In this decision the Board addresses the link between A 123(2) and corrections of contradictions in the opposed patent. Claim 1 of the main request before the Board read, in English translation (the amendments with respect to claim 2 as granted are apparent): Method for operating a melting furnace, wherein charge materials, fuel and at least one oxidizing agent are fed to a melting zone, the oxidizing agent being injected into the melting zone at supersonic speed (mit Überschallgeschwindigkeit) by means of a plurality of injectors which are arranged at preferably equal angular intervals around the periphery of the melting furnace, and the injection, at least in one process step, being effected by a temporal sequence of flow and rest phases (pulses) of the individual injectors, characterized in that and wherein the ratio of flow and rest phases of the injectors and the number of injectors injecting at ultrasound supersonic speed (mit UltraÜberschall) are varied according to a predetermined program as a function of a predetermined or continuously determined quantity of oxidizing agent that is to be supplied, in such a manner as to achieve a smooth profile of the quantity of oxidizing agent supplied at ultrasoundsupersonic speed and a flow pattern that substantially uniformly covers the melting zone, characterized in that whenever the difference between the maximum power of all the injectors injecting at ultrasound and the total quantity of oxidizing agent to be supplied by ultrasonic injection corresponds to the maximum power of a single injector, the number of injectors injecting at ultrasound is reduced by one, and whenever the quantity of oxidizing agent to be supplied by ultrasonic injection exceeds the maximum power of all the injectors injecting at ultrasound supersonic speed, the number of injectors injecting at ultrasoundsupersonic speed is increased by one, wherein thereafter in each case the quantity of oxidizing agent to be supplied by ultrasonic supersonic injection is distributed uniformly between the injectors that are injecting at ultrasoundsupersonic speed. *** Translation of the German original *** [2.1] During the opposition proceedings the [opponent] had attacked the patent on the ground of insufficiency of disclosure under A 100(b). it had pointed out that claim as granted clearly and unambiguously defined “injectors injecting at ultrasound (Ultraschall)” for melting furnaces but that there were no indications in the description as to how such injectors should be designed. As a consequence, the claimed method for operating a melting furnace could not be carried out with “injectors injecting at ultrasound”. The Opposition Division (OD) agreed with this assessment. As a consequence, in the course of the oral proceedings (OPs), it found claims 1 to 4 as granted not to be patentable because they did not comply with A 100(b). In order to overcome this objection, the patent proprietor filed a new main request consisting of amended claims 1 to 4 wherein the term “ultrasound” (Ultraschall) was replaced by “supersonic [speed]” (Überschall). The description was amended accordingly and the OD accepted the amendment. In paragraph 3 of the impugned decision the OD explained why the amendments did not violate A 123(2)(3). In particular, it was immediately recognisable to the skilled reader that the term “ultrasound” had been – incorrectly – used as a synonym for the expression “supersonic [speed]” in the patent and also in the discussion of the prior art. This assessment followed already from the fact that ultrasound was not used for injecting gases into melting furnaces […]. The [opponent] was of the opinion that the amendments should not have been admitted by the OD [because it was not clear that only supersonic speed could have been meant; the use of ultrasound, cited twice in the characterising portion of the claim, could be the very invention ; also, ultrasound injectors were known in the prior art]. [2.2] The Board cannot endorse the point of view of the [opponent], for the following reasons:
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T 1084/10 – Sound Questions
K’s Law – The ebook
Under R 80 the description, claims and drawings may be amended, provided that the amendments are occasioned by a ground for opposition under A 100. This is undoubtedly the case here. It is clear from the minutes of the OPs before the OD that the amendments of the patent were exclusively occasioned by the ground of insufficient disclosure under A 100(b) and carried out in order to account for and overcome this ground. Therefore, the amendments allowed by the OD are not objectionable in this respect. Moreover, it has to be examined whether the patent as amended satisfies the the requirements of A 123(2)(3). It is necessary to discluss whether the skilled person, using his common general knowledge, would consider the amended claim to be explicitly or implicitly, as well as directly and unambiguously, disclosed in the original application. In the present case the skilled person considering the whole content of the patent could only come to the technically meaningful conclusion that the impugned patent used the term “ultrasound” but that only “ultrasonic [speed]” could have been meant. The patent states, in paragraphs [0006], [0011], and [0016] as well as in the preamble of claim 1 as granted that the oxidizing agent is injected into the melting zone at supersonic speed. Ultrasound injection of oxidizing agents is not known in the field of melt metallurgy and does not make any technical sense to the skilled person. Neither the embodiment of paragraph [0016] of the patent nor any other part of the description mentions parts that capable of generating ultrasound. Rather, in the last sentence of paragraph [0002] and in paragraph [0003] as well in said embodiment of paragraph [0016] clearly states that in the claimed method oxygen and fuel gas are injected at supersonic speed by means of injection lances via a Laval nozzle. Therefore, the skilled person – whom the patent addresses – can only come to the conclusion that the patent under consideration uses two contradictory terms and that “ultrasound” has to mean “supersonic [speed]”. According to the case law of the Boards of appeal of the EPO (see T 190/99) it is possible to amend a granted claim in order to replace an incorrect technical statement, which is manifestly inconsistent with the disclosure of the patent as a whole, by the correct indication of the corresponding technical features. According to that decision, the skilled person when considering a claim should rule out interpretations which are illogical or which do not make technical sense. In the present case, the technical term “ultrasound”, which was manifestly incorrect, was accordingly replaced by the correct term “supersonic [speed]”. This amendment, which eliminates a manifest contradiction, does not extend the claimed subject-matter beyond the content of the application as filed, nor does it extend the protection conferred by the patent. Thus the amendments are not objectionable under A 123(2)(3) either. It follows from these considerations that, contrary to the view of the [opponent], the amendments do not qualify as a correction of errors in documents filed with the EPO (R 139) nor as a correction of errors in decisions (R 140). In view of this, the Board sees no reason to refer the questions presented by the [opponent] regarding the application of R 139 and R 140 to the Enlarged Board of appeal. NB: The questions which the opponent wanted to have answered by the EBA were: 1. Can linguistic errors, errors of translation and mistakes in the description, claims and drawings of a European patent as granted by the EPO be corrected under R 139, second sentence? 2. If the answer to the first question is affirmative, is such a correction under R 139 admissible even if it does not satisfy the criteria for correction of the decision to grant under R 140? 3. If the answer to the first question is affirmative, can a division of the EPO, other than the division competent to decide on a correction of the decision to grant under R 140, decide on the admissibility of the correction under R 139? I find this decision stimulating because - if I understand correctly - it insists on the need to distinguish a correction under R 139, which is the result of a request by the applicant, from a corrective amendment in reaction to an objection raised by the opponent. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here. 975 | 3398
T 1959/09 – Not Fresh
K’s Law – The ebook
T 1959/09 – Not Fresh 6 Okt 2012
This decision contains an obiter dictum on fresh grounds which is a useful reminder of the relevant case law: [6] [… T]he Board notes in passing that there appears to be no basis in G 10/91 for the general assumption that a ground of opposition raised against an independent claim may not subsequently be raised by the opponent against another independent claim, falling within the scope of the opposition, since otherwise a new ground for opposition would thereby be introduced. T 514/04 does not mention and elucidate the relevant passages in G 10/91 which support this assumption. Actually, G 10/91 appears to regard a new ground for opposition as being a “ground for opposition not covered by the statement pursuant to R 55 (c) EPC” (1973) (see G 9/91 [15-16]; G 10/91 and G 9/91 relate to consolidated proceedings), no indication being given in that decision which would justify the inference that this should be construed far more broadly as meaning any ground of opposition in respect of a specific given claim which was not covered by the statement pursuant to R 55(c) EPC 1973 (see in this respect T 1523/08 [2.1]). The Board takes the view that, as the present case abundantly demonstrates, the aforementioned assumption cannot be generally valid, but rather depends on the nature of each specific case under consideration. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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R 2/12 – Nodding Not Required
K’s Law – The ebook
R 2/12 – Nodding Not Required 5 Okt 2012
To my best knowledge, this is the first case where an objection of partiality was raised against a member of the Enlarged Board (EBA) in petition for review proceedings. This is a petition of review by the patent proprietor after Board 3.2.07 had set aside the decision of the Opposition Division rejecting the oppositions and had revoked the opposed patent (decision T 1022/09, an aspect of which was discussed in a previous post- here) After the EBA had informed the parties of its preliminary view on the issues raised in the petition and its provisional conclusion that the petition was clearly inadmissible and unallowable, the petitioner objected to the rapporteur as member of the EBA on the ground of suspected partiality according to A 24(3). In the reasons for the objection it was submitted that the preliminary view expressed and drafted by the rapporteur raised serious concerns about her impartiality. As she ignored essential arguments and took disputed assessments of the Board of Appeal as granted, it seemed that she-had already made up her mind to dismiss the request without even waiting for the result of the scheduled oral proceedings. Crucial arguments in support of the petition were either ignored or rejected without giving any reasoning that would allow the petitioner to counter the preliminary view of the EBA. Moreover, the rapporteur indicated that the proceedings could be expected as only being “very close” to a fair trial, this being an indication that she does not guarantee a fair trial to the petitioner. In support, a detailed analysis of several passages and sections of the communication was presented. After due deliberation of the Board in the absence of the member concerned, the Chairman of the EBA an alternate member for the purpose of the proceedings under Article 4 RPEBA and A 24(4). In her comments the member concerned assured that she had and still has no personal interest whatsoever in the case, nor any personal resentment against the petitioner or its representative(s) . The preliminary study was based on facts and only on the facts of the case. She also asserted that the communication had been drafted, in compliance with Article 5(3) RPBA, under the direction of the chairman of the Board. [1] The objection of suspected impartiality (iudex suspectus) is derived exclusively from the text of the communication by which the petitioner was informed, in preparation of the oral proceedings, of the Board’s preliminary view on the petition. The petition does not rely on any other circumstances or evidence and there is no indication of any in the comments of the member concerned or elsewhere. There is then no reason for further investigations or considerations in view of Article 4(1) RPEBA (see decision G 2/08 [2.1]) and no facts exist, which as such would allow a neutral and informed person to conclude that it might have good reasons to suspect the partiality of the member concerned (“objective test in abstracto” - see G 2/08 [4]). [2] It remains then to be examined, whether or not the preliminary opinion in question, because of its substance or by the way it was expressed, allows such a conclusion in concreto, i.e. the presence of a factual impartiality of which the member concerned itself might be unaware and the cause of which need not be known. [2.1] The suspicion of a subjective impartiality must be justified on an objective basis, i.e. it must be established based on objective indications, a duly established judge being deemed to act in good faith and therefore presumed impartial until proven otherwise (see decisions of the ECHR referred to in G 2/08 [3.2]). Purely subjective impressions or vague suspicions are not enough. The question is whether a reasonable, objective and informed person would on the correct facts reasonably apprehend that the judge has not or will not bring an impartial mind to bear on the adjudication of the case. It is thus necessary that a reasonable onlooker considering the circumstances of the case would conclude that the party might have good reasons to doubt the impartiality of the member objected to (G 1/05 [20] with reference to further case law). [2.2] Applying these criteria, the Board in the present composition cannot identify in the communication in question any reason justifying a suspicion of partiality or a preconceived mind of the member concerned, more 977 | 3398
R 2/12 – Nodding Not Required
K’s Law – The ebook
specifically any objective indication that this member would vote against the petitioner, irrespective of the further written and oral submissions of the latter. The conclusions on admissibility and allowability of the petition as drawn in the communication are as provisional as the underlying comments which were not intended to be complete nor final; rather they have been communicated pursuant to Article 13 (as “a possible appreciation of substantive or legal matters”) and 14(2) RPEBA which stipulates : “The Board’s communication under Article 13 may draw attention to matters which seem to be of special significance, … or may contain other observations that may help concentration on essentials during oral proceedings”. The provisional character of the Board’s preliminary view of the case, in particular that the Board is not in any way bound by it (Article 13 RPEBA), is expressly stated at the beginning of the communication which itself does not contain any bold contention, nor has been substantiated in “such outspoken, extreme or unbalanced terms” that it would preclude the capacity of the member concerned from dealing with the pending petition with an open mind and without preconceived thoughts. [3] The Board notes in this context – without dealing in any way with the merits of the communication or of the petitioner’s comments on it – that the latter put forward an interpretation of selected parts of the text of the communication which, to say the least, is not the only possible or reasonable one. The Board observes further that it would be incompatible with an objective assessment of a case and with the principle of fair trial in inter partes proceedings, if members of the Boards of Appeal could be “deposed” on the ground that they did not opine in favour of a particular party right from the beginning of the proceedings. In effect, the present request, if allowed, would amount to just that. [4] There is thus nothing in the communication in accordance with Articles 13 and 14(2) RPEBA dated 20 July 2012 and nothing else has come to light which could justify any suspicion of partiality against the member who drafted that communication as the then rapporteur, who thus has to remain a member of the EBA in the case under consideration. […] The petitioner’s request under A 24(3) is rejected. What else? as George Clooney might have added. The file wrapper and the decision can be found here.
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T 2346/10 – Class Struggle
K’s Law – The ebook
T 2346/10 – Class Struggle 4 Okt 2012
The present appeal was filed by the applicant (who chose not to be represented) against the decision of the Examining division (ED) to refuse his application for failure to comply with the provisions of A 123(2). The ED also held that an inventive step could not be acknowledged : all the features of claim 1 then on file which were performed automatically were known from a document D2. The remaining features were considered to be mental acts without technical significance. The ED also noted that the application was correctly classified in G06Q and that the composition of the ED satisfied the requirements of A 18(2). The applicant filed the following notice of appeal
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T 2346/10 – Class Struggle
K’s Law – The ebook
In his statement setting out the grounds of appeal the applicant argued that the application had been wrongly classified and that, as a result, the ED was not competent to examine the application. The lack of competence of the ED was also apparent from the fact that, for compliance with A 123(2) EPC, they required “a word-by-word basis” for all amendments to claim 1. This requirement was contested by the appellant. Submissions were also made concerning the uncooperative attitude adopted by the ED during the examination proceedings. As a further request, the appellant requested “Oral meetings with the Board of appeal, where the inventor gets a fair chance to discuss any remaining objections during the process of a competent examination” and “where the classification is discussed in a fair and competent way”.
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T 2346/10 – Class Struggle
K’s Law – The ebook
On 16 April 2012 the Board issued a summons to oral proceedings (OPs) to take place on 13 July 2012. In an annex to the summons, the Board explained that the only issue to be discussed would be the question of admissibility of the appeal and in particular, whether the statement setting out the grounds of appeal could be considered to indicate the reasons for setting aside the decision. The Board held that irrespective of whether the application had been correctly classified and allocated, a reasoned decision had been issued making reference to a number of concrete objections. The statement setting out the grounds of appeal did not address these concrete objections but, instead, concentrated on the alleged incompetence of the ED. In the preliminary opinion of the Board, the reasons for setting aside the contested decision had not been presented and so the requirements of R 99(2) had not been satisfied. In his response the appellant submitted that the Rapporteur had “seriously misunderstood the Appeal, its grounds and reasons”. In view of this, the appellant repeated his request “for presentation of some figures and a demonstration [of the invention] to simplify the process of understanding”. According to the applicant, the wrong classification represented a fundamental deficiency in the first instance proceedings which, in accordance with Article 11 RPBA, would require the Board to remit the case to the department of first instance. This issue was clearly derivable from the statement setting out the grounds for appeal. The applicant also expressed the opinion that the summons to OPs sent by the Board was not justified, because the appellant had “asked for oral discussion/interviews, not [OPs]”. The appellant could “see no reason why [OPs] at this stage would be expedient for anyone. And the Board of Appeal [had] given no reason”. Also, “the inventor will absolutely not be forced to such OPs … Thus the OPs shall be cancelled”. Finally, the OPs were held in the absence of the applicant. The outcome is not surprising. Competence of the Board 3.4.01 [1.1] By an order dated 19 January 2011, the chairmen of Board 3.5.01, to which the present case was first allocated, and of Board 3.4.01 agreed, under Article 1(3) of the Business distribution scheme of the Technical Boards of Appeal for the year 2011 (Supplement to OJ EPO 1/2011, 12), to transfer the appeal from Board 3.5.01 to Board 3.4.01. For this reason, the Board 3.4.01 is competent for dealing with the present case. [1.2] The transfer of the appeal was agreed upon because the technical content of the appeal made it appropriate for allocation to Board 3.4.01. This finding does not, however, equate to an acknowledgement that the application has been incorrectly classified, for which issue the Board lacks competence. OPs [2.1] A 116(1) states that “OPs shall take place either at the instance of the EPO if it considers this to be expedient or at the request of any party to the proceedings”. [2.2] In the present case, the Board considered the OPs to be expedient in order to come to a conclusion on the issue of the admissibility of the appeal in an effective manner. Indeed, OPs are intended to provide the opportunity to carry out a focussed exchange of views enabling the Board to reach a decision on the issues discussed. The volume of correspondence which was triggered by the annex to the summons to OPs indeed illustrates how cumbersome the written procedure was likely to become in the present case. For this reason, the Board saw no cause for cancelling the OPs which were thus held as scheduled. [2.3] The appellant did not appear at the OPs. The OPs were conducted in his absence and a decision was taken at the end of the proceedings. This procedure is fully in line with Article 15(3) RPBA, which states “The Board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party duly summoned who may then be treated as relying only on its written case”. Admissibility of the appeal [3.1] The third sentence of A 108 states: “Within four months of notification of the decision, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations”.
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T 2346/10 – Class Struggle
K’s Law – The ebook
R 99(2) specifies the content of this statement of grounds: “In the statement of grounds of appeal the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based”. Moreover, R 101(1) states that “If the appeal does not comply with A 106 to 108, ... , the Board of Appeal shall reject it as inadmissible, unless any deficiency has been remedied before the relevant period under A 108 has expired”. [3.2] In the following, the Board will, in particular, consider whether the requirements of R 99(2) EPC are satisfied. The following two specific aspects are essential for this assessment in the present case: (a) Firstly, whether an allegedly incorrect classification of the application and the consequential allocation of the application to an allegedly incompetent ED may constitute a reason for setting aside the contested decision; (b) Secondly, whether the concrete objections under A 123(2) and A 56 set out in the contested decision have been addressed. Classification of the application [3.3.1] In the letter dated 3 November 2010, which will be referred to in the following as “the statement of grounds”, the appellant submitted that the application had been wrongly classified and had thus been allocated to the wrong ED. In his letter of 23 June 2012 the appellant emphasised that this was the sole reason for his appeal. It was maintained that this reason was clearly derivable from the statement of grounds of appeal. In his letter of 6 June 2012 the appellant held that the wrong classification represented a fundamental deficiency in the first instance proceedings which, in accordance with Article 11 RPBA, would require the Board to remit the case to an ED which was qualified to assess the application correctly. [3.3.2] The Board does not consider that an allegedly incorrect classification would necessarily represent a fundamental deficiency justifying the remittal of the case to the ED. This cannot constitute an indication of “reasons for setting aside the decision impugned” as is required by R 99(2). In the Board’s view, a “fundamental deficiency” in the sense of Article 11 RPBA would arise when the actual act of issuing the decision is flawed. In this respect, a “fundamental deficiency” does not appear to be any different to a “substantial procedural violation” which has been defined as “an objective deficiency in the procedure in the sense that the rules of procedure have not been applied in the manner prescribed by the Convention” in the Case Law, 6th Edition, 2010 (see page 912). Indeed, it results from the jurisprudence that a fundamental deficiency in the sense of Article 11 RPBA is held to be present whenever a substantial procedural violation has been committed. Examples of fundamental deficiencies which would justify setting aside the contested decision and remitting the case to the ED include:
The violation of the right to be heard (A 113(1)); The disregard of a request for OPs (A 116(1)); The failure to provide reasons in the decision (R 111(2)); An incorrect composition of the opposition division (A 19(2)); The issuance of a decision on the basis of a text not agreed upon by the applicant (A 113(2)).
These deficiencies all arise from a disregard of those fundamental legal provisions of the EPC which are intended to protect the parties to the proceedings. In contrast, the classification which is assigned to an application is not related to such fundamental legal provisions of the EPC. Instead, any potential mistake in the classification of the application would appear to derive from an error of judgement by the search division rather than a misapplication of fundamental rules of procedure. [3.3.3] Should an ED not be technically qualified to examine a clearly wrongly classified application, then it is likely that the resulting lack of technical expertise will be reflected in the arguments provided in the decision refusing the application. In such a case, the decision would be set aside if the applicant as appellant were to 982 | 3398
T 2346/10 – Class Struggle
K’s Law – The ebook
convince the Board that the substance of the decision was indeed wrong. Whilst an incorrect classification can therefore contribute to the incorrectness of a decision, it is not an issue which per se could justify setting aside the contested decision. In view of this, the comparison made by the appellant in the present case with regard to the terms appearing in the present application and in the allegedly incorrect classification G06Q is not sufficient for invalidating the technical arguments produced by the ED in the contested decision. Rather, convincing technical counterarguments remain indispensable. In conclusion, the simple allegation that the present application was wrongly classified does not constitute a reason in the sense of R 99(2). Objections under A 123(2) and A 56 set out in the contested decision [3.4.1] Irrespective of whether the application was correctly classified and irrespective of whether the application was allocated to the competent ED, a reasoned decision has been issued in the present case. In particular, the contested decision relies upon two main objections, i.e. added subject-matter (A 123(2)) and lack of inventive step (A 56). Within the framework of the latter objection, comments are also made concerning the technical character of the subject-matter of claim 1 then on file. Whilst the statement of grounds extensively elaborates a number of grievances concerning the competence of the ED to examine the case and to conduct the procedure in the correct manner, no reasons have been advanced to indicate why the specific objections raised by the ED are incorrect. Rather, in his letter of 6 June 2012 the appellant argued that all of the arguments which he presented to the ED were available in the EPO file and that, in his opinion, he was under no obligation to repeat what had already been said. [3.4.2] With regard to the objection under A 123(2), the appellant presented his own understanding of this legal norm. In particular, the provision of a “word-by-word basis” of disclosure, as requested by the ED, was not necessary. A 123(2) concerned the content of the entire application rather than requiring a literal basis for the amendments. The appellant also explained that the amendments to claim 1 had been performed in order to improve the clarity of the claim. It was held that the claims could be amended as long as they were still supported by the description. An objection of lack of support by the description should however only be raised with well-founded reasons (Guidelines for Examination, April 2010, section C-III,6.3). Moreover, the appellant alleged that the minutes of the OPs before the ED were deficient in that not all of the passages cited by him to provide a basis for the amendments had been recorded. In the Board’s view, these submissions are of merely a general nature. The appellant failed to produce specific reasons for rebutting each of the concrete findings of the ED in the contested decision: not a single passage of the original application documents has been cited in the statement of grounds which would provide a basis for the amendments objected to in the contested decision. No explanation has been provided as to why the specific findings of the ED in the contested decision would be incorrect. Even though the appellant expressed concern that the ED may not have referred to the same “original disclosure” as he was citing from during the OPs, the appellant made no attempt to explain to the Board which passages from which document would provide a basis for each of the amendments. [3.4.3] With regard to the issues of technical character and inventive step, the appellant held that they had not been sufficiently discussed in the OPs before the ED. Indeed, the majority of time had been spent discussing A 123(2). The Board, however, notes in this respect that the appellant left the OPs before they were closed in order to catch his plane. This fact is not contested by the appellant who moreover acknowledged that, before leaving prematurely, he had been given the chance to make submissions on the remaining issues of technical character and inventive step. In response to the specific arguments in section 3 of the reasons of the contested decision concerning nontechnical steps of the claimed method, the appellant simply argued that “Those questions become non-questions if one considers the facts about the invention as a new detection process”.
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T 2346/10 – Class Struggle
K’s Law – The ebook
However, this somewhat vague statement cannot be regarded as a specific reason sufficient for rebutting the concrete findings of the ED. Moreover, in response to the specific arguments in section 4 of the reasons of the contested decision concerning inventive step of the claimed method, the appellant made no submissions in the statement of grounds. [3.5] In accordance with Article 12(2) RPBA, the statement of grounds of appeal shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed and should specify expressly “all the facts, arguments and evidence” relied on. It is established jurisprudence that the appeal procedure is not a continuation of the examining procedure but is a distinct procedure which relies upon the appellant’s analysis of the contested decision in order that the Board may ascertain why the appellant considers the contested decision to be incorrect. Only in this manner is the Board in a position to reach a decision. Consequently, if the appellant refers to the correspondence which is already on file, then he has to point the Board to those arguments which he considers to be relevant for the specific objections of the contested decision and to construct his case accordingly. The role of the Board is not to build the appellant’s case for him, but rather to judge whether the case presented by him is convincing. In view of the foregoing, with respect to the objections under A 123(2), no attempt was made in the statement of grounds to indicate the reasons for setting aside the decision impugned. The same applies with respect to the objection under A 56, the question of technical character being discussed in this context. These issues not being sufficiently addressed in the statement of grounds of appeal, no attempt was made to indicate the reasons for setting aside the decision impugned. For the sake of completeness, it is noted that the only arguments contained in the notice of appeal concerned the classification and the EPO procedure for correction of a classification. No other correspondence was received in the four-month period of A 108. [3.6] In summary, the Board is of the opinion that the statement of grounds of appeal does not meet the requirements of R 99(2) since it does not contain an indication of reasons for setting aside the decision impugned. As a result, the requirements of A 108 are not fulfilled and the appeal is therefore not admissible under R 101(1). The Board adds that remedy of any identified deficiency under R 101(1) was excluded at the date of the decision because the four-month period under A 108 had expired. Further requests In view of the inadmissibility of the appeal, any further requests of the appellant do not need to be considered. In particular, the case cannot be remitted to “competent examiners in the technical field of the invention” because the appeal is not admissible. […] The appeal is rejected as inadmissible. Should you wish to download the whole decision, just click here. The file wrapper can be found here. NB: This decision has already been presented on Le blog du droit européen des brevets (here). If your command of French is sufficient, you might want to have a look at the comments, among which you will find a monography by Roufousse T. Fairfly, who also sometimes comments on this blog.
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T 358/10 – Waiting For Too Long
K’s Law – The ebook
T 358/10 – Waiting For Too Long 3 Okt 2012
This is an appeal of the patent proprietor against the revocation of its patent by the Opposition Division (OD). The OD had given its decision at the end of oral proceedings (OPs) held on January 30, 2008. The minutes were sent to the parties on September 8, 2009 (!). According to the OD, claim 1 as granted lacked novelty over document D1, a set of several documents including D1a, D1b, D1f and D1g, D1a and D1g being copies of an extract from a commercial document of the opponent company, D1b a specifications manual, and D1f an internal note of the opponent company The Board first dealt with the question whether D1a and D1g were indeed available to the public: *** Translation of the French original *** State of the art Brochures D1a and D1g [3.1] Documents D1a and D1g are commercial brochures the purpose of which is to present new products to potential customers. Both bear a editing date (March and September 1996, respectively), which is at least 18 months before the priority date claimed by the patent under consideration (May 27, 1998). The Board does not agree with the patent proprietor’s argument according to which there was no tangible evidence for the diffusion of brochures D1a and D1g – such as an advertising insert in specialised technical journals – and that, therefore, their publication remained unproven. According to the established case law of the Boards of appeal, the purpose of commercial leaflets is to be publicly distributed within a short period of time following their editing. In the present case, brochures D1a and D1g must have been diffused in the course of the year 1996, which is well before the priority date of the patent, i.e. May 27, 1998. Moreover, in the absence of proof to the contrary, the investment [consisting in the editing] of brochures having several dozens of pages allows to conclude that their purpose was to be distributed, for obvious commercial reasons, among customers that might be interested in the product. Consequently, documents D1a and D1g are part of the state of the art within the meaning of A 52(4).
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T 358/10 – Waiting For Too Long
K’s Law – The ebook
Specifications manual (cahier des charges) D1b [3.2.1] As for document D1b, which bears the date “June 97” and a validity date “July 2000” added by the Socotec verification office in the context of a technical investigation, it manifestly does not qualify as an advertising brochure such as D1a or D1g. As it title (“Specifications for use and implementation”) indicates, it is a specification manual, i.e. a manual or guide for using and implementing the “Quadracoustic compact 404” system. [3.2.2] Thus there is no doubt that document D1b is only intended for the use by the technican and operator who assembles the covering system on a roof in strict compliance with the instructions regarding the installation of the system as established by the manufacturer, i.e., in the present case, the Isover Saint-Gobain company [the opponent]. This means that the diffusion of the manual D1b would not have made sense and would not have been useful before the product had been sold or at least ordered by the user/customer. Apart from the fact that the editing date or a possible date at which the specifications D1b have been made available to the public (Juin 1997 or July 2000) raises legitimate questions, the question of when it was made available to the public appears to entirely depend on the sale and subsequent distribution of the product. This analysis of D1b is confirmed by the declaration of Mrs Le Bihan (last two paragraphs of D1e) where she has stated that:
D1b comprised “precise specifications regarding the installation” and “for guarantee reasons, … the customer had to be informed of the updated instructions” ; D1b “has been sent to our customers as of that date”.
Normally [the term] “customer” refers to persons having bought the product, in contrast to what is referred to as “potential customers” who receive purely commercial documents that are, as a rule, devoid of any instructions on how the systems that are presented are to be used or implemented. As for as D1f, the “internal note” dated August 25, 1997, it appears that this note was sent by Mrs Le Bihan to the Isover Saint-Gobain company (i.e. the department managers and the sales and marketing directors) for purely internal use. The assertion of Mrs Le Bihan, […] according to which D1b was made available as of July 1997 to “whomsoever requested it” appears to be unlikely and at least doubtful. [3.2.3] Thus the Board has come to the conclusion that the date at which D1b was made available to the public cannot, as a consequence of its very nature, be dissociated from the sale or at least the prior order of the Quadracoustic Compact 404 system. However, the present file does not contain any tangible evidence proving that a commercial transaction had taken place before the priority date, and all the more so because the Isover Saint-Gobain company had filed its opposition in 2005, i.e. well within the legal ten-year-period during which companies have to keep their archives, which contain invoices and delivery orders. To sum up, documents D1c to D1f, which have been filed in the course of the OPs before the OD do not establish with a fair degree of certainty (avec quasi-certitude) the date on which the specifications D1b was actually disclosed. Documents D1c to D1f, which have been filed very belatedly and without any justification for the delay, should not have been introduced into the proceedings. The justification provided by the OD in its decision […] is very superficial and manifestly insufficently reasoned. [3.2.4] Moreover, the note contained in […] D1g, according to which “The instructions of the ISOVER specifications that are specific to the method have to be observed. The waterproofing has to be done in compliance with DTU 43-3 and the Technical Advice [Sheets] of the products to be used.” are, in the absence of further indications, vague and imprecise regarding the details of the specifications. Thus, contrary to the arguments of the [opponent], it is not possible to conclude that the leaflet D1g necessarily refers to the specifications for use and implementation according to D1b. Moreover, the leaflets D1a and D1g appear to deal with two variants of the Quadracoustic® system, i.e. the “quadracoustic compact” (D1a) and the “quadracoustic compact 404” (D1g), each having its own specifications, as the case may be.
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T 358/10 – Waiting For Too Long
K’s Law – The ebook
[3.2.5] The Board comes to the conclusion that document D1b - on which the lack of patentability that had led to the revocation of the patent had been based - is not part of the state of the art within the meaning of A 54(2). The Board then found claim 1 to be novel over D1a and D1g. Before remitting the case to the OD, the Board made a statement on the late transmission of the minutes by the OD, which it found to amount to a substantial procedural violation: [5.1] Among the possible substantial procedural violations invoked by the [patent proprietor], the Board considers that the excessive delay for drafting and communicating the impugned decision and the minutes of the OPs in writing to the parties is decisive. Pursuant to the provisions of R 111(1), a decision given orally in the course of OPs has to be put in writing and notified to the parties. The communication has to take place as soon as possible. In the present case, the communication of the minutes of the OPs, dated September 8, 2009, 19 months after the OPs took place (January 30, 2008), and the communication of the written decision, dated December 14, 2009, 22 months after the decision had been given at the end of the OPs, constitute unacceptable procedural breaches (manquements) which in themselves are sufficient for ordering reimbursement of the appeal fee (T 243/87 [2]) It has to be noted in this context that such delays can generate errors in the drafting of the decision or the minutes. Such errors are indeed apparent in the present case when the minutes and the impugned decision are compared. For instance, the grounds on which the OD based its admission of documents D1a to D1g and the conclusions it made regarding the lack of patentability in the decision revoking the patent […] differ significantly from what has been stated in the minutes […]. These anomalies make it difficult to understand what happened during the OPs, so that the Board is unable of piecing together the facts and details related to the course of the OPs before the OD and, as a consequence, of making objective statements on whether there was a contradiction between the decision and the minutes, as alleged by the [patent proprietor] in […] its statement of grounds of appeal. Consequently, the substantial procedural violation consisting in the excessive delays of transmission of the official documents justifies that the impugned decision be set aside and the appeal fee reimbursed in application of R 103(1)(a). [5.2] As a consequence it is not necessary to examine whether there have indeed been further substantial procedural violation, as alleged by the [patent proprietor]. NB: This confirms older case law such as T 900/02 [3] and the decisions cited therein. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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T 916/09 – Sixty-Nein!
K’s Law – The ebook
T 916/09 – Sixty-Nein! 2 Okt 2012
The Boards have repeatedly pointed out that A 69 is not an appropriate tool to establish the novelty of a claim. Apparently, this does not deter patent proprietors from trying it again and again, as the present decision shows. The Board had found the main request to lack novelty over document D7. It then dealt with auxiliary request 1, where the claims were identical but the description had been amended: [3] This request differs from the main request only in that in the last sentence in paragraph [0024] of the description of the patent in suit the words ‘may be’ have been replaced by ‘are’. It was under dispute whether or not this amendment in the description could render the subject-matter of the claims novel. The respondent relied on A 69(1) which reads as follows: “The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.” The Board refers to decision T 881/01 [2.1] where the following is stated: “While it is true that A 69(1) second sentence states that the description and drawings shall be used to interpret the claims, this does not make it legitimate to read into the claim features appearing only in the description and then relying on such features to provide a distinction over prior art. This would not be to interpret claims but to rewrite them. The preparatory material available on the discussions leading up to the European Patent Convention, shows that the effect of A 69 and its Protocol on Interpretation was always only considered in relation to extending the extent of protection conferred beyond the strict literal meaning of the terms of the claims, and never for excluding what on the clear meaning was covered by the terms of the claims. Certainly in proceedings before the EPO, where the Patentee has the opportunity of cutting down his claims to accord with stricter limits given in the description, the scope of a claim should not be cut down by implying into it features which appear only in the description, as this would deprive claims of their intended function.” For these reasons, the amendment of the description cannot render the subject-matter of the claims novel. Consequently, the first auxiliary request is refused. Should you wish to download the whole decision, just click here. The file wrapper can be found here. NB: This decision has already been presented on Le blog du droit européen des brevets (here).
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T 387/11 – Grieving
K’s Law – The ebook
T 387/11 – Grieving 1 Okt 2012
It does not happen so often that the Boards grant requests for re-establishment, so I take the opportunity to present such a case. The applicant’s representative had missed the time limit for filing the statement of grounds of appeal after having filed an appeal against the refusal of the application under consideration. The factual situation can be summarised as follows: The Examining Division had sent its decision to refuse the application on September 8, 2010. The communication was received on September 17, so the time limits for filing the appeal and the statement of grounds expired on November 18, 2010 and January 18, 2011, respectively. The representative was the only representative working in this law firm. He had one secretary, Mrs W. She entered November 17 and January 17 as the relevant dates in the deadline calendar. The appeal was filed on November 9. On November 22, Mrs W. left the law firm. On December 22, 2010, the representative’s mother died unexpectedly. His father, aged 82, was unable to cope with this situation and so the representative – who was the only child of the deceased – had to take over the organisation of the funeral, which took place on January 3, 2011. On the day before, a new secretary, Mrs M., had started working for the law firm. She had worked for a law firm before but was not familiar with patent-related time limits right away. As a consequence of his loss and the stress related to the organisation of the funeral, the representative suffered major psychological stress and was put on sick leave from January 5 to January 7. The representative explained in his request for re-establishment that he had tried to resume his professional duties after this sick leave because he thought that this would help him in the grieving process. He had thought that he could cope with these duties but had overestimated his forces and was unable to maintain regular operation of the law firm. He had an agreement with another patent attorney who would take over in case of illness, but as he was unable to admit that he needed help, he did not make use of this option. So he missed the time limit for filing the statement of grounds. It was only during an internal review of the organisation of his law firm on January 26, 2011, that he realised that the time limit had been missed. He filed the request for re-establishment on February 24. The Board granted the request: *** Translation of the German original *** Admissibility of the request for re-establishment [1.1] In its written submission dated February 24, 2011, the appellant has requested re-establishment into the time limit for filing the statement of grounds of appeal. Pursuant to A 122(2), first sentence, and R 136(1), first sentence, a request for re-establishment has to be filed within two months of the removal of the cause of non-compliance. As can be seen from the document dated February 24, 2011, the representative of the appellant noted for the first time on January 26, 2011, that he had missed the time limit on that day. According to the established case law of the Boards of appeal, the question as to when the cause of noncompliance has been removed is a question of fact (Tatsachenfrage). What is decisive is until when the 989 | 3398
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representative was actually hindered from performing the action he had omitted (established case law following J 7/82). Therefore, [the Board] considers that the cause of non-compliance was removed on January 26, 2011. The request for re-establishment received on February 26, 2011 was, consequently, received in due time. As the request was substantiated with the documents – containing the evidence – received on February 26, 2011, the statement of grounds of appeal was also received on February 26, 2011, and the fee for re-establishment fully paid on March 16, 2011, the requirements of A 122(2), first sentence, and R 136(1), first and third sentences, as well as R 136(2) have also been fulfilled. Therefore, the request for re-establishment is admissible. Allowability of the request for re-establishment [1.2] Pursuant to A 122(1) the request may be granted if the time limit has been missed in spite of all due care required by the circumstances having been taken. By filing a medical statement (ärztliche Stellungnahme) the representative of the appellant has provided evidence that he had suffered considerable psychological stress at the end of December 2010 and in January 2011, subsequent to the sudden death of his mother. Moreover, the representative was the sole person in charge of monitoring dates and time limits after the sole assistant in charge of monitoring time limits and carrying out other clerical duties had left [the law firm] and during the period of training (Einarbeitung) of a new assistant. This situation lasted from the end of November 2010 until January 2011, i.e. during the very period in which the four-month time limit for filing the statement of grounds of appeal expired on January 18, 2011. [The representative] credibly explained that the sudden and unpredictable bereavement had made him suffer massive psychological stress during this period, which led to the time limit for filing the statement of grounds being missed. In view of the credible presentation of the circumstances the Board is convinced that the representative of the appellant found himself in an extraordinary situation that hindered him from paying attention to the time limit and to make arrangements for meeting it. Moreover, the representative has explained that he was head of a one-man law firm and had made arrangements for ensuring that in normal situations time limits would be met in case of sickness, because a colleague would act on his behalf. In this respect the representative has made organisational arrangements that satisfy the requirement of “all due care”. Therefore, the request of the representative of the appellant for re-establishment into the time limit for filing the statement of grounds of appeal is granted. The appeal was then dismissed on substantive grounds. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 184/10 – Speculation
K’s Law – The ebook
T 184/10 – Speculation 29 Sep 2012
[3.2] Document D14, which like the contested patent relates to the treatment of [non-insulin-dependent diabetes mellitus (NIDDM) …], constitutes the closest prior art. The [patent proprietor] argued that document D14 did not qualify as closest prior art because of its speculative character. Indeed, there are some phrases to be found in the first paragraph of the section “Future Trends in Treatment of NIDDM” on page 326 (e.g. “compounds that act as insulin sensitizers might be expected to have an important role in treatment”, “[a] group of drugs which may act in this manner, the thiazolidinediones…”, “[it] is interesting to speculate on the possible future role of the thiazolidinediones…”, “[it] is even more likely that they could play a role in combination therapy…” [emphasis by the board]) which, at first sight, might lead to such a conclusion. However, the above-mentioned paragraph of document D14 also reveals that at the time when document D14 was published, the TZDs, and in particular ciglitazone, pioglitazone and englitazone, were undergoing human trials in patients with NIDDM and that further data concerning, among others, the mechanism of action, were available from animal models. Taking into consideration these data as well as common general knowledge, the author of document D14 then gave an outlook into future trends, which were of course not yet verified by experimental evidence. In view of the fact that this outlook was based on the data available at the time, the skilled person would not dismiss it as pure speculation. Instead, he would regard it as a serious attempt to interpret the existing state of the art. As a consequence, the content of document D14 qualifies as closest prior art. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 678/09 – The Trap Is In The Detail
K’s Law – The ebook
T 678/09 – The Trap Is In The Detail 28 Sep 2012
Drafting disclaimers that fully comply with the requirements of G 1/03 is far from easy, as the present decision once more illustrates. The Opposition Division (OD) had revoked the opposed patent inter alia for non-compliance with the requirements of A 123(2). Impressive claim 1 of the main request (which was also the main request before the OD) read (in English translation) 1. Cosmetic compositions for topical use for protecting the skin and/or hair from UV radiation, comprising (a) a UV-filter having the general formula I
wherein in A: R1 is 2-ethylhexyl, R2 is tert-butyl, X is NH (b) another UV-filter selected from the group consisting of ethoxylated ethyl p-aminobenzoate (25 mol), 2-ethylhexyl p-methoxycinnamate, 2-phenylbenzimidazolesulfonic acid and its salts, 992 | 3398
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K’s Law – The ebook
2-hydroxy-4-methoxybenzophenone, 2-hydroxy-4-methoxybenzophenone-5-sulfonic acid, 3-(4'methylbenzylidene)-d,1-camphor, 2,4,6-tri(p-(2-ethylhexoxycarbonyl)anilino)-1,3,5-triazine, 4(tert-butyl)-4'-methoxydibenzoylmethane, as well as conventional cosmetic thinning agents, auxiliaries and carriers customary in cosmetics with the exception of: (1) cosmetic and/or dermatologic compositions containing (i) 4-(tert-butyl)-4'-methoxydibenzoylmethane (ii) at least one triazine derivative of the following formula
wherein R’ is 2-ethylhexyl and R is tert-butyl, and (iii) at least one alkyl β-β’-diphenyl-acrylate or alkyl α-cyano-β, β’-diphenylacrylate of the following formula
wherein
R7 and R’7, which are identical or not, are present in m- or p-position and chosen from among: hydrogen, a linear or branched C1-8 alkoxy group and a linear or branched C1-4 alkyl group;
R8 is a linear or branched C1-12 alkyl group
R9 is hydrogen or a –CN group, and wherein these compositions do not contain any 2-ethylhexyl p-methoxycinnamate;
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in a cosmetically and/or dermatologically acceptable carrier; (2) Oil/water day-cream consisting of 1.5 g of compound C, 3.5 g of 2-ethylhexyl-4methoxycinnamate, 4.0 g of triglyceryl methylglucose distearate; 1.0 g of glyceryl stearate; 7.4 g of C12-C15 alkyl benzoate, 5.0 g of avocado oil, 5.0 g of diisopropyl adipate, 0.2 g of Carbomer 940, 0.3 g of imidazolidinyl urea, 0.2 g of methylparaben, 0.1 g of propylparaben, 0.15 g of aminomethyl propanol, 3.0 g of glycerine, and distilled water q.s. to 100.0; or oil/water day-cream consisting of 1.5 g of compound C, 3.5 g of 3-(4’-methylbenzylydene)camphor, 4.0 g of triglyceryl methylglucose distearate, 1.0 g of glyceryl stearate, 7.4 g of C12C15 alkyl benzoate, 5.0 g of avocado oil, 5.0 g of diisopropyl adipate, 0.2 g of Carbomer 940, 0.3 g of imidazolidinyl urea, 0.2 g of methylparaben, 0.1 g of propylparaben, 0.15 g of aminomethyl propanol, 3.0 g of glycerine, and distilled water q.s. to 100.0; or oil/water day-cream consisting of 1.5 g of compound C, 3.5 g of 2-hydroxy-4methoxybenzophenone, 4.0 g of triglyceryl methylglucose distearate, 1.0 g of glyceryl stearate, 7.4 g of C12-C15 alkyl benzoate, 5.0 g of avocado oil, 5.0 g of diisopropyl adipate, 0.2 g of Carbomer 940, 0.3 g of imidazolidinyl urea, 0.2 g of methylparaben, 0.1 g of propylparaben, 0.15 g of aminomethyl propanol, 3.0 g of glycerine, and distilled water q.s. to 100.0; wherein compound C is a sunscreen compound of the following formula:
where R = (CH3)3C–; R1 = R2 = C4H9–CH(C2H5)–CH2; X=O; (3) Cosmetic composition, comprising a cosmetic substrate containing 1 to 5% by weight of a dibenzoylmethanes of formula (I)
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wherein Q means methoxy and and G means ter-butyl and 1 to 6% by weight of a composition of formula (II)
where R = (CH3)3C–; R1 = R2 = C4H9–CH(C2H5)–CH2; X=O; with the proviso that the weight ratio of the compounds of formula (II) and formula (I) is of at least 1. The Board agreed that this request violated A 123(2): *** Translation of the German original *** Document D9 (disclaimer 2, first alternative) [3.4.2] Document D9 discloses in its claim 1 cosmetic compositions for the protection of human skin from sun radiation, comprising a 1,3,5-triazine derivative in combination with a p- methoxycinnamate in a cosmetically and/or dermatologically acceptable carrier. Both for the 1,3,5-triazine derivative as well for the methoxycinnamate the alkyl radicals of the ester and the amide group have to be chosen from lists. Only Example 4 discloses an oil/water day-cream wherein 2-ethylhexyl-4-methoxycinnamate is used as UV-filter – according to a UV-filter of list (b) of the opposed patent – in combination with a 1,3,5-triazine referred to as “compound C” – corresponding to triazine A of the opposed patent. Therefore, only the specific oil/water daycream of Example 4 contains all the features of claim 1 of the opposed patent and, therefore, constitutes a novelty-destructive disclosure. The first alternative of disclaimer 2 was incorporated into claim 1 in order to exclude this novelty-destructive part of the disclosure of document D9. According to the wording of the first alternative of disclaimer 2, what is excluded is an oil/water day-cream that is identical with the one of Example 4 of document D9 in respect of all the components used and their quantities. Only the brand names (Markenbezeichnungen) “Synthalen® K” and “Abiol©” were replaced by the designations “Carbomer 940” and “imidazolidinyl urea”. As mentioned in the impugned decision […] these designations are synonyms of these brand names that are generally acknowledged in manuals, so that their use instead of the brand names is not objectionable under A 84 or under A 123. The [opponent] pointed out that the designation “Carbomer 940” was also a brand name the use of which in an amended claim was to be objected under A 84. However, the [opponent] has only asserted that the designation “Carbomer 940” was a brand name (Markenname) without providing any evidence. The fact that individual manufacturers use this designation for their corresponding commercial product does not necessarily mean that it is a brand name, all the more as this designation is also used in general manuals and their chemical composition is, therefore, considered to be generally known. Therefore, this argument of the [opponent] is not successful.
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K’s Law – The ebook
The [opponent] also argued that the brand name “Abiol©” was a specific compound, i.e. N,N’’- methylenbis (N'(3-hydroxymethyl)-2,5-dioxy-4-imidazolidinyl)urea and not “imidazolidinyl urea”. However, the designation “imidazolidinyl urea” is only a generally known common name of this very compound to the IUPAC designation of which the [opponent] refers. Therefore, this argument cannot succeed either. Document D10 (disclaimer 2, second alternative) [3.4.3] Document D10 discloses in its claim 1 cosmetic compositions for the protection of human skin from sun radiation, comprising a 1,3,5-triazine derivative in combination with a benzylidenecamphor derivative in a cosmetically and/or dermatologically acceptable carrier. Both for the 1,3,5-triazine derivative as well for the benzylidenecamphor derivative the alkyl radicals of the ester and the amide group have to be chosen from lists. Only Example 4 discloses an oil/water day-cream wherein 3-(4’-methylbenzylydene)-camphor is used as UVfilter – according to a UV-filter of list (b) of the opposed patent – in combination with a 1,3,5-triazine referred to as “compound C” – corresponding to triazine A of the opposed patent. Therefore, only the specific oil/water daycream of Example 4 contains all the features of claim 1 of the opposed patent and, therefore, constitutes a novelty-destructive disclosure. The second alternative of disclaimer 2 was incorporated into claim 1 in order to exclude this novelty-destructive part of the disclosure of document D9. According to the wording of the second alternative of disclaimer 2, what is excluded is an oil/water day-cream that is identical with the one of Example 4 of document D10 in respect of all the components used and their quantities. Only the brand names “Synthalen® K” and “Abiol©” were replaced by the designations “Carbomer 940” and “imidazolidinyl urea”. This replacement of the brand names is not to be objected, for the reasons given [above] for the first alternative. The [opponent] argued that besides the objections regarding the replacement of the brand names “Synthalen® K” and “Abiol©” by the designations “Carbomer 940” and “imidazolidinyl urea” made in view of the first alternative, the specific composition of Example 4 of document D10 also contained “perfumes”, which were absent from the second alternative of disclaimer 2. However, it has to be noted that the oil/water day-cream of Example 4 already has a total amount of 100.0 % even without the addition of “perfumes”. Therefore, the addition of “perfume” cannot be part of the oil/water day-cream disclosed in Example 4 and, therefore, does not have to be incorporated into the second alternative of disclaimer 2. As a consequence, this argument of the [opponent] cannot succeed. Document D11 (disclaimer 2, third alternative) [3.4.4] Document D11 discloses in its claim 1 cosmetic compositions for the protection of human skin from sun radiation, comprising a 1,3,5-triazine derivative in combination with a 2-hydroxy-4-methoxy-benzophenone derivative in a cosmetically and/or dermatologically acceptable carrier. Both for the 1,3,5-triazine derivative as well for the benzylidenecamphor (sic) derivative the alkyl radicals of the ester and the amide group have to be chosen from lists. Only Example 4 discloses an oil/water day-cream wherein 2-hydroxy-4-methoxybenzophenone is used as UV-filter – according to a UV-filter of list (b) of the opposed patent – in combination with a 1,3,5-triazine referred to as “compound C” – corresponding to triazine A of the opposed patent. Therefore, only the specific oil/water day-cream of Example 4 contains all the features of claim 1 of the opposed patent and, therefore, constitutes a novelty-destructive disclosure. The third alternative of disclaimer 2 was incorporated into claim 1 in order to exclude this novelty-destructive part of the disclosure of document D9. According to the wording of the third alternative of disclaimer 2, what is excluded is an oil/water day-cream that is identical with the one of Example 4 of document D10 in respect of all the components used and their quantities. Only the brand names “Synthalen® K” and “Abiol©” were replaced by the designations “Carbomer 940” and “imidazolidinyl urea”. This replacement of the brand names is not to be objected, for the reasons given [above] for the first alternative. [3.4.5] Therefore, the Board is of the opinion that the introduction of disclaimer 2 with its first, second and third alternatives intended to exclude the novelty-destructive parts of the disclosures of documents D9, D10, and D11, is allowable and does not violate A 123(2). Document D13 (first disclaimer) [3.4.6] Document D13 discloses cosmetic and/or dermatologic compositions containing a combination of several UV-filters in a cosmetically or dermatologically acceptable carrier. It discloses cosmetic and/or dermatologic 996 | 3398
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compositions containing the UV-filter combination of 4-(tert-butyl)-4’-methoxydibenzoylmethane with a UVfilter based on a 1,3,5-triazine derivative, wherein the preferred 1,3,5-triazine derivative corresponds to the triazine A claimed in the opposed patent. If at least one alkyl-β, β’-diphenylacrylate or alkyl (α-cyano)-β, β’diphenylacrylate is added as a further UV-filter to this composition, its stability to light is increased […]. Thus document D13 discloses both compositions containing a combination of at least three UV-filters and compositions containing only two UV-filters, i.e. 4-(tert-butyl)-4’-methoxydibenzoylmethane and the 1,3,5triazine derivative corresponding to claimed triazine A. According to the wording of disclaimer (1) […], however, only cosmetic and/or dermatologic compositions containing at least three UV-filters, i.e. a combination of 4-(tert-butyl)-4’-methoxydibenzoylmethane, a 1,3,5triazine derivative corresponding to triazine A of the opposed patent and at least one alkyl-β, β’-diphenylacrylate or alkyl (α-cyano)-β, β’-diphenylacrylate. As a consequence, compositions that contain only the two UV-filters 4-(tert-butyl)-4’-methoxydibenzoylmethane and the 1,3,5-triazine derivative corresponding to triazine A of the opposed patent are not excluded from claim 1 of the opposed patent by the wording of disclaimer (1) and document D13 is still novelty-destructive for them (sic). As a consequence, the wording of the disclaimer is not appropriate for excluding the whole part of claim 1 that is not novel. Thus the passage introduced into claim 1 as “disclaimer (1)”, which is not found in the application documents as filed, is not a valid disclaimer within the meaning of decision G 1/03 and the introduction of this passage into claim 1 of the main request does not comply with the requirements of A 123(2). The [patent proprietor] argued that the production of each composition began by providing the individual component; the [components] were added subsequently. Therefore, page 9, lines 22 to 24 mentions a composition containing two UV-filters only as an intermediate step, but the cosmetic compositions constituting the invention of document D13 always contained a combination of three UV-filters. The disclosure of D13 that was to be excluded by the disclaimer was only defined by the features disclosed in combination (im Zusammenhang), i.e. a cosmetic and/or dermatologic compositon containing at least one alkyl-β, β’diphenylacrylate or alkyl (α-cyano)-β, β’-diphenylacrylate in addition to the two UV-filters 4-(tert-butyl)-4’methoxydibenzoylmethane and the 1,3,5-triazine derivative corresponding to claimed triazine A, but free of octyl methoxycinnamate. However, it has to be noted that on page 9, lines 22 to 24, document D13 discloses a cosmetic sunscreen composition containings a combination of 4-(tert-butyl)-4’-methoxydibenzoylmethane and the 1,3,5-triazine derivative corresponding to claimed triazine A as UV-filters. Whether this is a preliminary stage of the cosmetic composition containing three UV-filters or a reference composition of the then prior art is not relevant as far as the disclosure is concerned. Therefore, the argument of the [patent proprietor] cannot succeed. [3.4.7] […] As claim 1 […] does not comply with the requirements of A 123(2) because of the presence of disclaimer 1, the Board is of the opinion that a detailed discussion of the allowability of disclaimer 1 is superfluous. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 28/10 – You Have To Concentrate
K’s Law – The ebook
T 28/10 – You Have To Concentrate 27 Sep 2012
We have seen in the previous post that the Board confirmed the decision of the Opposition Division (OD) not to admit the patent proprietor’s main request. In today’s passage the Board considered the auxiliary requests on file and made some interesting comments on Article 12(4) RPBA with respect to former case law. NB: This is one of the rare Board decisions that invoke the Konzentrationsgrundsatz. I did not really know how to translate this term, which normally expresses the idea that proceedings should not be diluted, so I translated quite literally (“principle of concentration”). This principle is related to the principle of judicial economy. Anyway, the patent proprietor asked the Board of appeal (BoA) to admit broadened auxiliary requests AR1 to AR10 altough they had not been presented before the OD. It justified the filing of these requests by pointing out that the previous patent proprietor had different economic interests and that the claims that had been defended before the OD were not economically relevant to the transferee. *** Translation of the German original *** [3.1] The AR on which the impugned decision is based contain claims directed at
the use of mixtures of ipconazole and at least one further fungicidal agent as microbiocidal agent for protecting technical materials (claim 4 of AR1 and claim 1 of AR2), and mixtures of active agents as such, wherein the definition of the further fungicidal agent was significantly reduced as compared to the use claims (claim 1 of AR1), respectively.
Present AR 1 to 10, however, contain claims directed at
the use of the mixtures as fungicides (claim 1 of AR 3, 4, 6, 8, and 10) mixtures if ipconazole with further fungicidal agents which additionally comprise at least one of the following active substances or groups of active substances in addition to those of claim 1 of AR1 considered in the impugned decision: phenols, methoxyacrylates (such as azoxystrobin or trifloxystrobin) or one or several formerly deleted triazole compounds.
Such mixtures of active substances and uses, respectively, were not object of AR1 and AR2 filed on September 24, 2009, on which the impugned decision of the OD was based. Consequently, the sets of claims according to present AR1 to AR10 are directed to subject-matter that has been claimed for the first time in the appeal proceedings and have not been discussed before. [3.2] The [patent proprietor] is of the opinion that claims on which the opposition proceedings had not been based could nevertheless be pursued in opposition appeal proceedings, even if this meant that [patent proprietor] defended the patent in a version that was broader than [the versions discussed] in the opposition proceedings. It invokes decision T 123/85 as well as decisions T 386/04 and T 755/00. [3.2.1] Decision T 123/85 formed the basis for case law the essential findings of which may be summarised as follows: In opposition proceedings, the patent proprietor cannot declare that it surrenders part of the patent and thereby irrevocably limit the patent (T 123/85 [3.1.1]). In principle (i.e. as far as there is no abuse of procedure) the patent proprietor having defended the patent in amended form only cannot be hindered from returning to a broader version (including the version as granted) of the patent during the appeal proceedings because intermediate limitations of the patent do not constitute a surrender of parts of the patent but have to be considered as drafting attempts intended to limit the patent in view of objections (T 123/85 [3.1.1-2]). Decisions T 755/00 [5] and T 386/04 [1], which have been invoked by the [patent proprietor], confirm this case law.
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[3.2.2] The Board is of the opinion that in order to understand the ratio of decision T 123/85 and the case law that is based on it, it is necessary to distinguish between the patent as subjective right in rem (dinglich) the effect of which is governed by the national law of the Contracting States (A 64), on the one hand, and procedural actions directed at the patent as object of the opposition and opposition appeal proceedings, as well as the corresponding procedural rights, on the other hand (more on this distinction can be found in the EBA decision G 1/09 [3.2.1]). [3.2.3] Insofar as decision T 123/85 [3.1.1], following decisions T 73/84 [4] and T 186/84, states that the patent proprietor could not surrender its patent as a whole or in part in the opposition proceedings, the term ‘surrender’ designates a unilateral delcaration through which the subjective rights conferred by a patent are abandoned as a whole or in part. In this context, decision T 123/85 points out that the EPC 1973 makes no provision for a patent proprietor to surrender the patent during opposition proceedings. As it was not possible to validly declare such a surrender before the EPO, the decision rejected the opinion of the opponent according to which limited sets of claims that were submitted in the course of the opposition proceedings had to be understood as declarations of surrender. In the context of decision T 123/85, this statement has to be limited to mean that a European patent as subjective right cannot be changed in a legally constitutive manner (rechtsgestaltend) – and, in particular, irrevocably limited – by means of a unilateral declaration of the patent proprietor in the opposition proceedings (cf. in this context G 1/90 [8]; T 386/01 [3.2]), so that limited sets of claims for the opposition proceedings are not to be seen as a surrender. In contrast, one cannot conclude from these statements that it has to be possible without procedural restrictions (verfahrensrechtlich vorbehaltlos) to revert to broader claim versions that have not been defended in the course of the opposition proceedings, [these broader claims being understood] as amendments to the procedurally relevant submissions. [3.2.4] T 123/85 based the possibility of subsequently amending sets of claims the purpose of which was the maintenance of the patent in amended form, on A 113(2) and, therefore, on the principle of party disposition (T 123/85 [3.1.1]; in this context, the reference to decision G 1/84 is obsolete: see G 9/93). Even when T 123/85 is followed, this possibility of amending the submissions is not without restrictions. Rather, the Board decided that this subsequent amendment must not constitute an abuse of procedure. The subsequent case law has confirmed this restriction. Decision T 123/85 does not define the notion of abuse of procedure in detail but has provided a concrete illustration by referring to the example of self-contradictory behaviour (venire contra factum proprium; T 123/85 [3.1.2]). In this context decision T 123/85 also relies on decision T 64/85 [2.6], which states that an abuse of the possibility of reverting to previous claims after having filed amended claims. might be sanctioned under A 114(2) or R 86(3), respectively. Thus decision T 64/85 considered the principle of concentration (Konzentrationsgrundsatz) expressed in A 114(2) and R 86(3) EPC 1973 to be restrictive. [3.2.5] The Board endorses this view, according to which – in addition to the prohibition of abuse of rights and the prohibition of reformation in peius (see e.g. T 934/02 [3.2]) – the principle of concentration of party submissions also restricts the principle of party disposition. As far as amendments of sets of claims in opposition and opposition appeal proceedings are concerned, the principle of concentration is laid down in R 116(2) and in Article 12(4) RPBA as well as Article 13 RPBA. It is true that a subsequent amendment of the submission is not completely excluded, via strict time limits for submitting certain elements, but it is within the discretion of the deciding body to take into account such amendments. [3.2.6] R 116(2) was introduced as R 71a(2) EPC 1973 in a decision of the Administrative Council (AC) dated December 13, 1994, and entered into force on June 1, 1995 (JO EPO 1995, 9). Article 12(4) RPBA and Article 13 RPBA, introduced as Article 10a(4) and Article 10b RPBA, respectively, in a decision of the AC dated December 12, 2002, are applicable to proceedings in which the notice of appeal was received after the date of the entry into force of these amendments, i.e. on May 1, 2003 (Article 2 of the Decision of the Presidium, annexed to the Decision of the AC of December 12, 2002, JO EPO 2003, 61). The previous versions of the RPBA (RPBA of June 4, 1980, OJ EPO 1980, 171, in their version of OJ EPO 1983, 7) did not contain comparable provisions, nor did the versions of OJ EPO 1989, 361 or OJ EPO 2000, 316. Article 11(1), which was unchanged in all the versions until May 1, 2003, only required the Board to endeavour to ensure, if OPs were to take place, that the parties have provided all relevant information and documents, before the OPs. [3.2.7] As a consequence, the legal situation has changed with respect to decision T 123/85 when R 116(2) as well as Articles 12(4) and 13 RPBA were enacted and it is not possible to apply this decision and the subsequent case law without taking into account these amendments. This also holds true for decision T 755/00 which was based on the RPBA as amended on October 1, 2000, which did not contain any provision corresponding to what is now Article 12(4) RPBA. Moreover, the decision did not concern the application of R 71a EPC 1973. As a
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T 28/10 – You Have To Concentrate
K’s Law – The ebook
consequence, this decision is not relevant for the present proceedings as it does not take into account the amendments of the law that are relevant for the latter (cf. T 1282/05 [1]). [3.2.8] The RPBA in its version of May 1, 2003 (JO EPO 2003, 61) are not explicitly mentioned and taken into account in decision T 386/04, which had been cited by the [patent proprietor], either. Moreover, the reasons do not make clear whether the Board considered the discretion conferred to it by the RPBA to be restricted – based on decision T 123/85 and the case law based on it – such that a set of claims by which the patent proprietor reverts to broader subject-matter that has not been defended in previous proceedings could only be disregarded in case of an abuse of procedure. In the particular case which it had to decide upon the Board came to the conclusion that the behaviour of the patent proprietor – defending the patent as granted as its main request in the appeal proceedings for the first time – did not qualify as abuse of procedure. When doing so, the Board took into account the fact that the patent proprietor had defended the version of the patent as granted until shortly before the OPs before the OD. These findings are within the framework of the discretion conferred by the RPBA. [3.2.9] According to what has been said, decisions T 386/04, T 755/00, and T 123/85 cannot support the point of view of the [patent proprietor] because they do not deal with the legal situation as modified by R 116(2) (previously R 71a(2) EPC 1973) and Articles 12(4) and 13 RPBA (previously Articles 10a and 10b RPBA) and do not meet the scope of the rule (Normzweck) pursued by these provisions, i.e. the acceleration of the proceedings. Whether sets of claims that are submitted in appeal proceedings are to be taken into account does not depend on the case law based on decision T 123/85; it depends on the procedural rules that now apply to the appeal proceedings and on the facts of the proceedings under consideration. Therefore, the decisive rule for the admission of AR1 to AR10 is Article 12(4) RPBA. [3.3] Article 12(4) RPBA sanctions the violation of the duty to facilitate the progress of the proceedings (Verfahrensbeförderung) in first instance proceedings, i.e. the requirement – which is mandatory but which has not been honoured – to submit facts, evidence ore requests before a certain stage of the proceedings. Therefore, it serves the requirement of both fair and quick proceedings. If the appeal proceedings offered the parties the possibility of introducing submissions that could already have been filed (bereits veranlasste Vorbringen) in first instance proceedings, the parties could chose to base the appeal proceedings on disputed matter (Streitstoff) different from the matter that was considered by the OD and thereby create a completely new case, which prolongs the proceedings to the detriment of the adverse party, based on considerations that are not related to the case as such (sachfremd). Therefore, Article 12(4) RPBA prohibits carless and incomplete submissions on behalf of the parties in first instance proceedings but not candid attempts of the parties to introduce the relevant requests, facts and evidence when required by an appropriate and careful conduct of the proceedings. On the other hand, it is not possible to use Article 12(4) RPBA as basis for a legal right – restricted by abuse of procedure – to the introduction of a set of claims directed at a broader version of the claims that has not been defended in the opposition proceedings so far. Rather, these provisions make clear that the principle of party disposition is breached (durchbrochen) by the principle of concentration in this respect. This opinion has been confirmed in the case law of the EBA according to which A 113(2) does not provide a legal right to have late filed submissions considered (R 11/11 [10]). [3.4] In view of Article 12(4) RPBA the [patent proprietor] explained that there was no reason (Veranlassung) to file sets of claims corresponding to AR1 to AR10 because the economic interests of its legal predecessor, who had acted in the opposition proceedings, were different from those of the [patent proprietor] to whom [the patent] had been transferred. The following has to be objected: According to A 99(3) the patent proprietor is a party to the opposition proceedings. The case law has made clear that in a case where the patent is legally (rechtsgeschäftlich) transferred, the procedural party status is transferred to the transferee, too. The transfer of the party status with respect to substantive law has to be distinguished from the procedural effectiveness of the change of party. In order for a change of party to be effective for the proceedings under consideration, proof for the legal transfer has to be provided to the EPO. As a matter of fact, for the sake of procedural legal security, a change of party resulting from a legal transfer cannot take place outside the proceedings without formal knowledge of the Board, and cannot be retroactive either, because otherwise procedural actions or decisions could be made or take place in the absence of the new patent proprietor, who is the sole entitled party. Consequently, R 22(3) provides that a transfer shall has effect vis-à-vis the EPO only when it has been proven via the submission of documents. According to R 85 (also together with R 100(1)), this provision this provision also applies to any transfer of the European patent made during the opposition or opposition appeal proceedings, respectively (T 128/10 [3]). In the present case transfer of the impugned patent was registered at the request of the appellant filed on November 23, 2011, based on an agreement signed on March 22, 2010, and April 12, 2010, respectively. As a 1000 | 3398
T 28/10 – You Have To Concentrate
K’s Law – The ebook
consequence, the substitution of the legal predecessor by the appellant was only effective on November 23, 2011. Requests AR1 to AR10 were filed together with the statement of grounds of appeal dated March 15, 2010, before the legal transfer became effective vis-à-vis the EPO. Therefore, it is not possible to use the fact that the economic interests had changed as a consequence of the subsequent legal transfer in order to retrospectively explain why the legal predecessor had had no reason to file requests AR1 to AR10 before. Even if the legal transfer had been effective before the statement of grounds of appeal had been filed on March 15, 2010, the admissibility of requests AR1 to AR10 would be within the discretion of the Board. As a transferee, the appellant takes over the procedural status of its legal predecessor as soon as the legal transfer is effective vis-à-vis the EPO and, therefore, receives the status of a party to the proceedings. As such it has to enter into the proceedings at the very stage [the proceedings] have reached when the legal transfer takes place. It has to accept the effects of procedural actions of its legal predecessor. It would be contrary to legal security and, as far as inter partes proceedings are concerned, unfair towards the other parties to the proceedings, if the transferee of a patent could invoke the change of party – which does not require approval by the other parties – in order to change the object of the appeal proceedings without cogent reasons related to the course of the proceedings (in particular a different factual situation) with respect to the opposition proceedings. Moreover, circumstances that are outside the proceedings (verfahrensextern) such as considerations of the patent proprietor as to which content the patent should be prosecuted, for economic or competitive reasons, are not aspects that can be taken into account when deciding when requests that determine the content of the patent have to be filed in appeal proceedings. Otherwise, a party to the proceedings could control the course of the proceedings (T 764/03 [6.4]; T 356/08 [2.2.2]). Therefore, the Board is of the opinion that the change of the economic interests resulting from the legal transfer of the patent was not to be taken into account when exercising discretion under Article 12(4) RPBA. The [patent proprietor] has not submitted any further reason related to the course of the proceedings why there had been no reason to file requests AR1 to AR10 before. [3.5] The Board is of the opinion that requests AR1 to AR10 could have been filed before the OD and that their filing could have been expected at an earlier time if the proceedings had been conducted in a careful manner. Consequently, the Board did not admit requests AR1 to AR10 into the proceedings (Article 12(4) RPBA). OMG, what a translator’s nightmare that was! The Board then refused to refer questions to the EBA and also found auxiliary requests 11 to 15 to be inadmissible under Article 13(1) RPBA. As there was no valid set of claims on file, the Board finally dismissed the appeal. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 28/10 – Abuse? Of Discretion?
K’s Law – The ebook
T 28/10 – Abuse? Of Discretion? 26 Sep 2012
This is an appeal against the revocation of the opposed patent by the Opposition Division (OD). The patent proprietor complained that the OD had not admitted its main request filed during the oral proceedings (OPs), which corresponded to the claims as granted. Contrary to the findings of the OD, the filing of this request had not been abusive as its aim was to avoid a reformatio in peius situation. The Board found the appeal as such to be admissible and then went on to examine the admissibilty of the main request:
*** Translation of the German original *** [2.1] According to Article 12(4) RPBA (OJ EPO 2007, 536), the Board may decide not to take into account submissions of a party which could have been presented or were not admitted in the first instance proceedings. Insofar as [a Board] has to decide on the admission, into the appeal proceedings, of submissions that had not been admitted in the first instance proceedings, under Article 12(4) RPBA, this boils down to a review of the discretionary decision of the OD based on R 116(2). If the way in which the first instance body of the EPO has exercised its discretion is contested in the appeal, then, according to G 7/93 [2.6], it is not the function of a BoA to review all the facts and circumstances of the case as if it were in the place of the first instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first instance department. If a first instance department is required under the EPC to exercise its discretion in certain circumstances, such a department should have a certain degree of freedom when exercising that discretion, without interference from the Boards of Appeal. In such cases a BoA should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion. Although the object of decision G 7/93 was the interpretation of R 51(6) EPC 1973, its explanations regarding the review of discretionary decisions are of general importance and have to be taken into account when applying Article 12(4) RPBA. Accordingly, the Board has to limit itself to a review of the way in which the OD has exercised its discretion when it decided not to admit the late filed request and should set aside the first instance decision only if it found that the discretion had been exercised in a wrongful way. Otherwise, the Board would circumvent the discretion conferred to the OD by R 116. [2.2] The main request corresponds to the claims of the patent as granted. This request had not been defended in the written proceedings before the OD. Rather, it was filed only on the day of the OPs before the OD, where the (limited) set of claims of November 2, 2007, which had been in the proceedings until then […] had been replaced by the new main request and two more auxiliary requests. Thereby, the OD correctly applied R 116(2) by treating these requests as late-filed. [2.3] The admission under R 116(2) of the main request filed on September 24, 2009, was discussed during the OPs […]. Therefore, the [patent proprietor] had the opportunity to make submissions regarding the reasons for the late filing. After having discussed with the parties, the OD exercised its discretion by not admitting this main request into the proceedings because it considered its late filing to be an abuse of procedure […]. In its reasons for its decision the OD explained that the main request was not novel – as the patent proprietor had admitted – and, therefore, not suitable for overcoming a ground of opposition. Thus the filing of the main request amounted to an abuse of procedure. [2.4] The Board cannot see a wrongful exercise of discretion in the fact that the OD based its decision above all on [the finding] that the patent proprietor admittedly did not intend to defend the late filed main request and acknowledged that this request did not comply with the requirements of A 54. The OD could indeed - without any arbitrariness - understand these statements of the [patent proprietor] to mean that even the [patent proprietor] did not consider the main request to be based on an acceptable (vertretbar) substantive legal position. The filing of such a request that openly (erklärtermaßen) does not pursue any justified legal claims has to be considered a violation of the duty to act in good faith (Gebot des Handelns nach Treu und Glauben) which obliges the parties 1002 | 3398
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K’s Law – The ebook
to act in a candid (redlich) way (for the application of this principle to the actions of the parties, see G 2/97 [4.2]; R 4/09 [2.3.2]). The prodedural (verfahrensrechtlich) interest that has been invoked by the [patent proprietor] will be dealt with below […]. As a consequence, the OD has not exercised its discretion in accordance with wrong principles or in an unreasonable way by not admitting the main request of September 24, 2009, because of an abuse of procedure, nor did it act in an arbitrary manner insofar as it considered the violation of this procedural principle to be of decisive importance when exercising its discretion. [2.5] The [patent proprietor] also objected that the purpose of the filing of the main request was to avoid a [situation of] reformatio in peius, which meant that there was no abuse of procedure. This argument cannot succeed. [2.5.1] The principle of prohibition of reformatio in peius (Verschlechterungsverbot) concerns appeals (Rechtsmittelverfahren) and can be derived from the principle of party disposition (Verfügungsgrundsatz). The latter asserts that the appellant’s requests determine to which extent the judge can and may modify the impugned decision. Therefore, the requests forming the appeal (Rechtsmittelanträge) constitute the scope of the litigation beyond which the judge must not go. As a consequence, if there is only one appellant, the judge must not modify the impugned decision in a way that would disadvantage the appellant. This is referred to as the prohibition of reformatio in peius. In cases G 9/92 and G 4/93, the EBA decided that the prohibition of reformatio in peius can be applied in proceedings before the BoA. Whether it applies depends on the entitlement to file an appeal and on the filing of an appeal by the parties to the proceedings that are entitled to do so. All in all, it is only relevant in the case of an interlocutory decision maintaining the patent in amended form that is contested by only one of the adverse parties. In the present case, however, the [patent proprietor] intended to defend the patent as granted. This is equivalent to the request that the oppositions be rejected. If this [request] had been granted, only the opponents would have been entitled to file an appeal. Therefore, the prohibition of reformatio in peius would not have applied in favour of the [patent proprietor]. Even if the patent had been revoked in view of the claims as granted, the prohibition of reformatio in peius would not have been relevant, because the outcome of the appeal proceedings could not have put the [patent proprietor] in a situation that is worse than the revocation by the OD. Therefore, it is not clear to which extent the prohibition of reformatio in peius could justify the filing of the main request corresponding to the claims as granted during the OPs before the OD. Therefore, the OD cannot be criticised for having exercised its discretion in a wrongful way by not taking into account the reference to the prohibition of reformatio in peius in favour of the [patent proprietor]. [2.5.2] As can be seen from the statement of grounds of appeal […] the [patent proprietor’s] reference to the prohibition of reformatio in peius indeed aimed at justifying its desire to maintain, by means of the main request, the possibility of filing an appeal and to make sure that it could amend – within the limits of A 123 – its requests in the appeal proceedings without being bound by the single set of claims filed before the OPs in the opposition proceedings. Neither the prohibition of reformatio in peius nor the principle of party disposition that underlies it allow to derive the right that amended sets of claims filed by the applicant or the patent proprietor have to be taken into account at any stage of the proceedings (referring to A 113(2), which is related to the principle of party disposition, R 11/11 [10]). Rather, pursuant to R 116(2), this is within the discretion of the deciding body of first instance. As a consequence, it is not at the applicant’s or patent proprietor’s discretion to modify the object of the proceedings by filing amended sets of claims even at a late stage of the proceedings in order to change the course of the proceedings. All in all, the OD, when exercising its discretion, has neither violated a legal right of the [patent proprietor] nor left aside a relevant legal aspect. [2.6] The remaining arguments submitted by the [patent proprietor] during the appeal proceedings do not establish a wrongful exercise of discretion by the OD either. [2.6.1] First of all, the [patent proprietor] points out that the filing of the main request of September 24, 2009, was triggered by the submission of the [opponent] of August 21, 2009, wherein it first raised an objection of lack of novelty against claim 3 of the patent as granted, based on document D25. However, it has to be noted that the [opponent] had already attacked claims 1, 2 and 7 for lack of novelty (A 54) over document D25. The notices of opposition of the [opponents] comprised a series of further novelty objections. In view of that background, the BoA cannot see how the [patent proprietor’s] return to the set of claims as granted, which had not been defended 1003 | 3398
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K’s Law – The ebook
until the OPs, can seriously be considered to be an appropriate reaction to a change of the course of the proceedings. As a matter of fact, the main request of September 24, 2009, did not overcome the objection of lack of novelty against claim 3, nor did it ensure a convergent conduct of the opposition proceedings. It rather meant a return to the point of departure of the proceedings. [2.6.2] The [patent proprietor] also explained that the filing of the main request did not delay the proceedings and could not surprise because it was part of the patent as granted and, consequently, of the opposition filed by the respondents. It may be true that, in view of the acknowledgement of lack of novelty, the required examination of the main request would not have taken a long time, but this aspect is not of decisive importance to the effect that it would justify challenging the balance of interests made by the OD based on the circumstances of the case and have an effect in favour of the [patent proprietor] on the decision on the admission of the main request. The restraint required by decision G 7/93 [2.6] of the EBA when discretionary decisions are to be reviewed means that the Board may only intervene in the weighing of the circumstances to be carried out by the OD if the latter exercises its discretion in a wrongful way. In this context, the OD may rightfully give one aspect decisive importance over other aspects. In the impugned decision, the OD considered that there had been an abuse of procedure. Such abuses are not limited to behaviour that makes the postponement of the OPs necessary (cf. T 1067/08 [5.3]). As a consequence, the OD has not exercised its discretion in a wrongful way. Apart from that, the second argument of the [patent proprietor] according to which the return to the claims as granted could not surprise is not correct. The Board agrees with the [opponents] that based on the behaviour of the [patent proprietor] until the OPs, the filing of a main request corresponding to the claims as granted was not to be expected. The [opponents] have referred to the following passage of the response to the notices of appeal dated November 2, 2007: “[The patent proprietor] requires [the OD] to maintain the patent on the basis of claims 1 to 9 according to the enclosure and, for the rest (im Übrigen), to dismiss the oppositions.” Together with the set of amended claims filed as enclosure to this submission, the [opponents] could legitimately understand in good faith that the [patent proprietor] did not have the intention to defend the claims as granted. This is all the more true as the [patent proprietor] did not come back to the patent as granted during the written proceedings. It is true that the filing of a request corresponding to the patent as granted did not concern an hitherto unknown object, but it still was surprising because the submission conflicted with the previous actions of the [patent proprietor] (venire contra factum proprium). Even in this respect [the Board] cannot find any wrongful exercise of discretion on behalf of the OD. [2.7] As the Board has come to the conclusion that the first instance had exercised its discretion in accordance with the right principles and in a reasonable way, and had not exceeded the proper limits of its discretion conferred by A 116(2), the Board has not granted the request to admit the main request of September 24, 2009, into the proceedings (Article 12(4) RPBA, G 7/93 [2.6]).
NB: This decision has much more to offer, because the Board also dealt with the admissibility of several new auxiliary requests. In order to keep my posts reasonably short, I shall present these aspects in a forthcoming post. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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R 14/11 – A Statement, Please?
K’s Law – The ebook
R 14/11 – A Statement, Please? 25 Sep 2012
This petition for review concerns decision T 291/08 of Board 3.3.10 (apparently not yet published, but available via the Register here) wherein the Board of appeal (BoA) set aside the decision of the Opposition Division (OD) to maintain the patent in amended form and revoked the patent. The petition was based on a fundamental violation of A 113(1) (A 112a(2)(c)). The OD had found document D6 to be the closest prior art and had found the claims as amended to involve an inventive step. D6 referred to documents D8 to D10. When filing its appeal, the opponent introduced documents D11 to D13 in order to demonstrate what the skilled person would expect when reading D6. In an annex to the summons to oral proceedings (OPs), the rapporteur pointed out that the parties should be prepared to discuss which document (probably among D2, D6 and D8) represented the closest prior art. During the OPs, the Board informed the parties that it considered D8 to be the closest prior art. In its petition, the patent proprietor complained that the Board had raised a completely fresh objection based on D8 at the OPs. When this objection had been raised, the petitioner had requested remittal to the OD or, alternatively, postponement of the OPs to provide it with an adequate opportunity to respond. While remittal was refused, the Board granted a 30 minute adjournment for the petitioner to review D8 and consider the new line of argument advanced by the Board. The petitioner pointed out that this conduct of proceedings had violated its right to be heard. The Enlarged Board (EBA) rejected the petition because the requirements of R 106 had not been complied with: [2] The decisive issue in the present case is whether in the appeal proceedings the petitioner has raised an objection in respect of the procedural defect within the meaning of R 106. [2.1] The petitioner admits that during the appeal proceedings it did not raise an express objection under R 106. The petitioner is, however, of the opinion that by the way in which it expressed itself in the OPs, it raised an implicit objection, fulfilling the requirements of R 106, when that Rule is interpreted correctly. [2.2] R 106 in conjunction with R 109(1) define the admissibility requirement that the petitioner must have raised an objection in respect of the procedural defect during the appeal proceedings. [2.3] The procedural defect within the meaning of A 112(a)(2)(c) identified in the petition is that a fundamental violation of A 113(1) occurred. According to the petitioner, the fundamental violation of A 113(1) arises from the Board’s decision to raise a completely fresh objection at the OPs based on D8 as the closest prior art and maintain that objection without giving the petitioner an adequate opportunity to respond. The petitioner had asked for remittal or postponement. Both were refused and the Board only granted a 30 minute interruption of the OPs. While it is accepted by the petitioner that remittal is discretionary, the Board’s refusal to grant postponement violated the petitioner’s right to be heard. The petitioner’s objection against the Board’s raising of an entirely new argument in the OPs had never been withdrawn and the Board was aware that the petitioner regarded its right to be heard as being violated by the Board’s refusal of a postponement. [2.4] According to the petitioner, the EBA’s interpretation of R 106, following decision R 4/08, requiring an objection which is distinct from and additional to any requests relating to or protests against the conduct of the proceedings by the Board, is overly strict and unjustified. In particular, the interpretation given by the EBA in its communication, that an objection within the meaning of R 106 is an objection raised after the procedural defect has arisen, is incorrect. R 106 only speaks of an objection “in respect of” the procedural defect. [2.5] In its decision R 4/08 the EBA for the first time considered in detail the meaning to be given to the admissibility requirement in R 106 that an objection in respect of the procedural defect must have been raised 1005 | 3398
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K’s Law – The ebook
during the appeal proceedings. In that decision the wording and nature and purpose of the requirement to raise such an objection were all considered. In point [2.1] of the reasons of the decision the EBA concluded: “Firstly, the objection must be expressed by the party in such a form that the BoA is able to recognize immediately and without doubt that an objection pursuant to R 106 - that is one which is additional to and distinct from other statements, in particular arguing or even protesting against the conduct of the proceedings or against an individual procedural finding ... - is intended by the party concerned. This is a precondition for the Board to have been able to react immediately and appropriately by either removing the course of the objection or, as provided in R 106, by dismissing it. It therefore ensures for the parties and the public at large, legal certainty as to whether the substantive decision of the BoA is open to review pursuant to A 112(a). This is one of the evident purposes of the obligation to raise objections under R 106. Secondly, for the same reasons the objection must be specific, that is the party must indicate unambiguously which particular defect of those listed in paragraph 2 (a) to (c) of Article 112a and R 104 it intends to rely on.” [2.6] The principles developed in that decision have thereafter become established jurisprudence of the EBA and have been applied in numerous cases since including (this not being an exhaustive list) R 7/08 [2]; R 8/08 [1.2.12]; R 6/09 [6]; R 9/09 [1.5 et seq.]; R 1/10 [6.2 et seq.]; R 17/10 [2.1-3]; R 2/11 [2.1]; R 3/11 [3.1]; R 7/11 [2.1]; R 10/11 [3.1]. Of these decisions, decisions R 9/09 and R 1/10 specifically concerned the refusal of a requested postponement. Decision R 8/08 concerned the refusal of a requested remittal. In decision R 3/08, given prior to decision R 4/08 [1.4], the EBA had already ruled that the requirements of R 106 had clearly not been met in a situation in which, after a petitioner’s request for postponement of the OPs, the petitioner had not raised any objection against the Board’s communication not to postpone the OPs. In decisions R 17/10 [2.3] and R 8/08 [1.2.2], the EBA emphasized that a – procedural – request or criticism cannot be qualified as an objection within the meaning of R 106 before the Board has reacted to the request or criticism. An objection under R 106 cannot be formulated prematurely, this meaning that it cannot be formulated before a procedural defect has come into existence. The same rationale is also apparent from decision R 6/09 [6] where, in order to explain why R 106 was not fulfilled, the EBA observed that no objection was raised “after” hearing the Board’s definition of a certain term. In view of the weight and consistency of this jurisprudence the petitioner’s argument – that its objection against the Board raising the new line of argument based on D8 and its request for remittal or postponement already qualify as an objection within the meaning of R 106 – does not hold good. [2.7] This established jurisprudence is also fully in line with the wording of R 106. R 106 places an obligation on the objecting party to raise its objection under certain conditions, one of them being that the objection must be “in respect of the procedural defect”. The wording of R 106 thus requires the presence of a procedural defect as a precondition for raising an objection in respect of that defect. However, as long as the Board has not taken any decision on a procedural request of the party, there is no procedural defect to which the party can object. Therefore, as has been established in the jurisprudence, an objection under R 106 is a procedural act which has to be performed after the procedural defect has arisen in the proceedings. Nothing else can be derived from the use of the term “in respect of” in the English version of R 106, since R 106 speaks of an objection in respect of “the” procedural defect and not in respect of “a” procedural defect. The same is also clear from the German and French versions of R 106 requiring in the German version that “der Verfahrensmangel beanstandet wurde” and, in the French version, that an objection was raised “à l’encontre du vice de procédure”. [2.8] In the view of this EBA any deviation from the firmly established jurisprudence would require “very clear reasons for not following the earlier interpretation” (see G 9/93 [6]). In points [2.8.1-4] below the EBA considers the petitioner’s reasons for not following the interpretation of R 106 in R 4/08. [2.8.1] First, the petitioner argued that, according to the Vienna Convention on the Law of Treaties (“Vienna Convention”), the purpose of a provision has to be taken into consideration for its interpretation. The travaux préparatoires reveal only that the purpose of R 106 is to prevent abuse of procedure. It submitted that the EBA’s reasoning in decision R 4/08 as to the purpose R 106 is intended to serve, in particular its reliance on the issue of 1006 | 3398
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legal certainty, is not supported by the travaux préparatoires or any other authority that might influence the interpretation of the Rule. According to Article 31.1 Vienna Convention, a treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose. The preparatory work and the circumstances of the conclusion of the treaty are mentioned in Article 32 Vienna Convention as a supplementary means of interpretation, in order to confirm the meaning resulting from the application of Article 31 or to determine the meaning when the interpretation according to Article 31 leaves the meaning ambiguous or obscure or leads to a result which would be manifestly absurd or unreasonable. It follows from these provisions, in particular from the only supplementary character of the preparatory work as a means of interpretation, that the meaning of the terms “in the light of the object and purpose of the Treaty” in Article 31 EPC (sic) is not simply tantamount to any purposes of the legislator as identified in the preparatory documents. What is addressed in Article 31 Vienna Convention is the objective purpose of the norm concerned which is to be determined in such manner as is derivable from the context of the norm and the object of the treaty. Hence, in accordance with the Vienna Convention, the EBA is perfectly entitled to define the objective purpose of R 106 on the basis of the ordinary meaning of its terms considered in the context and in the light of the object and purpose of the provisions in question, without any need to identify an explicit basis for such an interpretation in the preparatory documents to the EPC. [2.8.2] Second, the petitioner’s criticism of the EBA’s statement in R 4/08 that R 106 ensures, for the parties and the public at large, legal certainty as to whether the substantive decision of the BoA is open to review pursuant to A 112(a), is not justified. The petitioner’s argument that since, according to the travaux préparatoires, the interest of preserving legal certainty was the reason for providing a two-month time limit for filing a petition under A 112(a)(4), legal certainty has no relation to R 106, is unsound. The use of legal certainty in the context of one provision in the travaux préparatoires is no ground for not using it as a reason to interpret another provision – there is simply no valid connection between the two propositions. [2.8.3] Third, the petitioner’s argument that, since R 106 expressly provides for a situation in which a petition can still be filed even though no objection under R 106 has been raised during the appeal proceedings, the absence of an objection is not sufficient to tell the public that no petition is possible, is also unsound. As the words “except where” in R 106 demonstrate, the situation that an objection could not be raised during the appeal proceedings is considered to be quite literally an exception. Hence, if anything, this exception, aimed at not denying justice to a petitioner who could not raise an objection during the appeal proceedings, confirms the importance of the general rule enshrined in R 106 that the right to file a petition presupposes that notice of the defect has been given during the appeal proceedings, so that every person involved in the proceedings or inspecting the file is made aware of the possibility that the Board’s decision, although final, might still be challenged based on a ground for review in accordance with A 112a. As the EBA rightly put it in decision R 4/08, legal certainty for the parties and the public at large is one of the evident purposes of the general rule enshrined in R 106. [2.8.4] In the present EBA’s view, R 4/08 and the later decisions following it have also rightly emphasised the legal nature of an objection pursuant to R 106 as being a procedural act and not just a submission. It must, like any other procedural act, be clear and precise. Therefore, as the EBA stated in decision R 4/08 [2.1], this procedural act must be in such a form that the BoA is able to recognize immediately and without doubt that an objection pursuant to R 106 is raised, so that the Board is put in a position to perform its further duty under R 106, i.e. either to accede to it or to dismiss it and thereby to create a clear basis allowing the parties and the public to determine whether the ensuing substantive decision of the BoA is open to review pursuant to A 112(a). [2.8.5] As a result, the EBA finds that none of the reasons advanced by the petitioner justify departing from the established jurisprudence regarding the requirements which raising an objection must fulfil in order to qualify as an objection within the meaning of R 106 as justified. [2.9] As a second line of argument, the petitioner submitted that the facts of the present petition are different from R 4/08 so that R 4/08 did not create a precedent for the present decision. [2.9.1] First, the EBA notes that like any other decisions of boards of appeal those of the EBA in review cases do not have the legal nature of creating a precedent in the sense that the EBA would have to show in which respect a later decision differs from an earlier one in order to be legally justified. Such differences are normal and the usefulness of case-law is not confined to similar or identical facts but lies in the principles or guidance (such as
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R 14/11 – A Statement, Please?
K’s Law – The ebook
interpretation of legislative provisions) which, whether the facts are similar or not, can be extracted from earlier cases (see R 11/08 [11]). The petitioner refers to the Board’s reference in decision R 4/08 to the fact that the minutes of the OPs did not contain any statement of the petitioner meeting the criteria set out for an objection within the meaning of R 106. According to the petitioner this statement refers to the normal situation that the minutes can be referred to as the basis for what was said and to support an allegation that an objection under R 106 was, or was not, raised. However, R 4/08 could not deal with a situation deviating from the norm such as the present case where the minutes did not contain the essentials of the OPs and the submissions of the parties as required, a fact which had been objected to in the petitioner’s letter of 4 August 2011. This perceived difference is irrelevant for the present case. For the purpose of the present decision the EBA accepts the petitioner’s submission that it objected to the new line of argument advanced by the Board for the first time during the OPs and requested remittal or postponement to the opposition division which were refused. In the present case the decisive point as to which, as has been explained above, the EBA does not accept the petitioner’s view, is that the petitioner’s procedural behaviour did not qualify as an objection within the meaning of R 106. [2.9.2] The petitioner also submitted that, as was evidenced by point [3.3] of the decision under review, by the Board’s own admission it was able to recognize that the petitioner challenged the decision of the Board as being potentially open to review. In this respect, the Board notes that the passage cited by the petitioner only refers to the petitioner’s request for remittal. The present petition is, however, not based on a violation of the petitioner’s right to be heard for failure to remit the case but – rightly – only on the Board’s refusal to grant postponement. Therefore, the cited passage of the decision under review does not support the petitioner’s conclusion that on the Board’s own admission the Board had understood that the decision of the Board was challenged by the petitioner as potentially open to review because the Board had refused the petitioner’s request for postponement and only granted a 30 minute interruption. [2.9.3] Further, the petitioner submitted that the present case can be distinguished from R 4/08 in that in the present case the petitioner has presented evidence in the form of its account of the key aspects of the OPs in its letter of 4 August 2011 and the two sworn statements filed in response to the Board’s communication. Evidence could also be found in the written decision which is framed in the words of the Board itself. However, for the reasons indicated in paragraph [2.9.1] above, this difference, if any, is irrelevant. [2.9.4] Finally, the petitioner made the criticism that the EBA seems to require, as a valid R 106 objection in this case, a separate objection raised by the petitioner after the refusal to remit. To which the Board observes that, subject only to the proviso that (on the petitioner’s own admission) its objection could not have been based on the refusal to remit but would have had to be based on the refusal to postpone the OPs, that is precisely what the petitioner should have done in order to fulfil the requirements of R 106. The EBA cannot accept the petitioner’s arguments about the inextricable link between the original objection and the procedural defect. As the petitioner itself submitted, when a party objects to a Board’s conduct of OPs and requests some form of relief, the Board has two possibilities: it can either grant it or refuse it. If it is granted, there can be no procedural defect to the detriment of the requesting party. It is only if it is refused that there may be a procedural defect. This shows clearly why the established jurisprudence following decision R 4/08 is justified and there is no such inextricable link as the petitioner argues. Further, the fact that, as the petitioner puts it, the same argument has to be raised twice is not convincing. All that is required from a party when the Board has refused its procedural request is to state that it regards its right to be heard as violated, since it is the very purpose of R 106 to give the Board a chance to correct such an error, if any, before a decision is based on it and thereby to avoid unnecessary petitions for review being filed. […] The petition is rejected as clearly inadmissible. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2177/09 – Doping Problems
K’s Law – The ebook
T 2177/09 – Doping Problems 24 Sep 2012
This is an appeal of the patent proprietor against the revocation of the opposed patent. I found the case interesting because it shows how difficult it is to draft allowable product claims for composite objects parts of which undergo changes during the production step but can only be well characterised before undergoing these changes. The patent drafter chose to draft a product claim, but, as will become clear in the discussion by the Board, there is a product-by-process feature hidden in the claim. Claim 1 of the main request before the Board read (in English translation): Membrane-electrode assembly for polymer electrolyte fuel cells having a working temperature of up to 250°C, comprising two flat gas diffusion electrodes, a polymer membrane comprising at least one basic polymer, wherein the polymer membrane is sandwiched between said electrodes, and a dopant, wherein the gas diffusion electrodes are loaded with the dopant so that the dopant content in the gas diffusion electrodes amounts to 60% to 120% of the weight of the basic polymer in the polymer membrane, in order to form a dopant reservoir for the polymer membrane, wherein the polymer membrane is fixedly connected to the gas diffusion electrodes in a proton conducting manner via the dopant after the action of pressure and temperature and has a conductivity of at least 0.1 S/m at a temperature of no less than 25° C in the doped state. In what follows, the Board discusses the novelty of this claim: *** Translation of the German original *** [2.1] The [opponent] was of the opinion that [claim 1] was not novel over the documents D1/D4, D5, and D6. [2.1.1] D1 […] and D4 (which has the same author and the disclosure of which is identical to the disclosure of D1 for the present purpose) disclose methods for producing a membrane-electrode assembly (MEA) having a polymer membrane made of polybenzimidazole (PBI), a basic polymer, and phosphoric acid as dopant, wherein an acid doped polymer membrane is hot pressed (150°C, 2.2∙10 4 kPa, 10 minutes) with gas diffusion electrodes that are also acid doped. One may assume that the doped membrane of the MEA known from D1 has a conductivity of at least 0.1 S/m, and this has not been contested by the [patent proprietor]. D1 does not disclose the amount of phosphoric acid, relative to the weight of the basic polymer in the polymer membrane, that was used for impregnating the gas diffusion electrodes. The statements below the table on page 61 appear to refer to another impregnating method and cannot be applied to the conditions of production method 3 disclosed in D1 without further ado. Interpretation of claim 1 as granted [2.1.2] Before novelty can be assessed, it is necessary to appropriately interpret claim 1. The [patent proprietor] submitted that the claimed amount of dopant in the gas diffusion electrodes (i.e. the loading of the electrodes) had to be understood as the amount of dopant before the subsequent action of pressure and temperature […]. The parties agreed on that matter and the Board adopts this point of view. Moreover, the [patent proprietor] argued that product claim 1 of the impugned patent was directed to a MEA the polymer membrane was not, or at least insignificantly, doped and which, as a consequence, did not have any proton conductivity yet. The dopants still were in the gas diffusion electrodes, in an amount of 60% to 120% of the weight of the basic polymer in the polymer membrane, forming a dopant reservoir. Thus claim 1 was exclusively directed to a primary product (Vorprodukt) for a MEA in the state preceding the impact of pressure and temperature. This claimed primary product could then, by the action of pressure and temperature (i.e. by hot pressing), be transformed into a MEA suitable for use in a fuel cell, wherein the polymer membrane was proton conducting manner via the dopant, fixedly connected to the gas diffusion electrodes, and has a conductivity of at
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T 2177/09 – Doping Problems
K’s Law – The ebook
least 0.1 S/m at a temperature of no less than 25° C in the doped state. However, the Board cannot adopt this view, for the following reasons: First of all, the indication of the conductivity of the polymer membrane in the doped states of at least 0.1 S/m in the claim manifestly indicates that the polymer membrane already has to be in the conductive, doped state, i.e. the state resulting from hot pressing, and that the dopant already has to have migrated from the reservoir formed by the gas diffusion electrodes to the membrane. This view is in line with the further claim feature according to which “the polymer membrane is … proton conducting via the dopant”. Secondly, the claim defines a MEA the polymer membrane of which is “fixedly connected to the gas diffusion electrodes … via the dopant”. Such a connection can only be obtained by hot pressing. Therefore, the Board is of the opinion that the present product claim is to be interpreted such that it concerns a MEA after hot pressing, i.e. ready for use. The same holds true for the ready-for-use fuel cell, but the amount of dopant given in the claim corresponds to the amount that has to be used before the action of pressure and temperature and which has to be provided in the gas diffusion electrodes acting as a dopant reservoir. [2.1.3] It was not contested that after the electrodes have been hot pressed with the polymer membrane it was unknown how much dopant was still in the gas diffusion electrodes and how much of it had migrated to the polymer membrane during the hot pressing (cf. paragraphs [0013] and [0023] of the impugned patent). The latter also depends on whether the polymer membrane has been pre-doped, which is not excluded in the claim. Under these circumstances, the claim feature according to which “the gas diffusion electrodes are loaded with … [a] dopant content … amount[ing] to 60% to 120% of the weight of the basic polymer in the polymer membrane” does not delimit [the claim] with respect to the prior art because it does not define the amount of dopant present in the gas diffusion electrodes of the claimed end product. [2.1.4] As all the other claim features are known from D1, the Board is of the opinion that the novelty of the product claim depends on whether it is plausible that the amount of dopant used in the gas diffusion electrodes according to the invention can confer concrete properties to the final product (MEA) that distinguish it over the MEA produced according to D1. However, the [patent proprietor] has not submitted any such concrete product properties, and the Board cannot spot any in the description. The advantages of the invention asserted by the [patent proprietor] manifestly refer to the production method and not, or not necessarily, to the final product (i.e. the MEA). Therefore, they cannot serve as evidence for a difference over the prior art. A good contact between the polymer membrane and the electrodes, which has been asserted as being one of the advantages [of the invention], is also obtained [in a MEA] according to D1 because it is a prerequisite for the functioning of the MEA. [2.1.5] Therefore, the Board comes to the overall conclusion that the subject-matter of claim 1 is not novel over D1 (A 54). As a consequence, the main request is not allowable […]. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 56/09 – So Close
K’s Law – The ebook
T 56/09 – So Close 22 Sep 2012
I sometimes disagree with the way in which the problem-solution approach is implemented, in particular in inter partes proceedings. The present case might illustrate what I mean. The opponent filed an appeal after the patent had been maintained in amended form by the Opposition Division. Claim 1 as maintained read as follows: A syringe by which medicine may be apportioned in preset doses from an ampoule, which syringe has - a dose setting (2, 23) and injection mechanism comprising a dose setting member which comprises an injection button (11) on a carrier rod (13) and may be moved in one direction to preset a dose and in the opposite direction to inject the preset dose, and - a piston advancing mechanism comprising a piston rod and a piston rod drive, - the dose setting (2, 23) and injection mechanism being coupled to the piston advancing mechanism through a unidirectional coupling transmitting only movement of the dose setting member in the dose injecting direction to the piston rod drive (17), in which syringe - an air shot button (26, 30) is provided, - the operation of which acts only on the piston advancing mechanism side of the unidirectional coupling to enable influence on the piston advancing mechanism to advance the piston rod a distance corresponding to expulsion of a fixed volume of medicine. There was a discussion on whether document D6 qualified as closest prior art: [6] The [opponent] submitted that the subject-matter of claim 1 was also not inventive over a combination of D6 and the general knowledge of the person skilled in the art. In the so-called problem-solution approach for assessing inventive step in an objective manner, the first step is to determine the closest prior art, i.e. the most promising starting point or “springboard” towards the invention. In the present case, as already mentioned in T 1166/05 [3.2], “D2 and D6 disclose less features of claim 1 of the main request than D1”. More particularly for D6 the Board considered that “D6 does not refer to a syringe by which medicine may be apportioned in set doses from an ampoule. The syringe according to D6 has a closed piston chamber (19) into which liquid medicine may be drawn and subsequently be injected by a piston (17). Furthermore this syringe does not comprise an air shot button but a system that automatically eliminates any air from the piston chamber when this chamber is filled.” Hence it is clear that the syringe disclosed in D6 is not of the same type as that claimed, since it is not a syringe by which medicine may be apportioned in set doses from an ampoule, and as already mentioned above it has fewer features in common with the subject-matter of claim 1 than D1. Thus, according to established case law, the syringe disclosed in D6 is further away from the subject-matter of claim 1 or the invention than the syringe disclosed in D1. In other words, D6 is a weaker starting point than D1 for a lack of inventive step reasoning, so since the subjectmatter of claim 1 is inventive starting from D1 it is also inventive starting from D6. It may well be that the Board is right in this particular case, which I have not studied in detail, but I believe that this line of reasoning is not without danger. I like to compare the assessment of inventive step with mountaineering: the skilled person is faced with the problem of reaching the summit of a mountain. He/she is a good walker and capable of reading a map and 1011 | 3398
T 56/09 – So Close
K’s Law – The ebook
following a path, but unable of climbing. We want to find out whether the invention is obvious or inventive, i.e. whether the summit under consideration can be reached without climbing or not. In my illustration, the prior art documents correspond to base camps that exist on that mountain. Consider Mount Narish and its two base camps A and B:
Mount Narish, as seen from the north and the south, respectively A is very close to the summit S, but in order to get from A to summit S, you have to climb the deadly north face. The skilled person cannot take this route. So, at first sight, the invention is inventive. However, when starting from more remote base camp B, there is an easy way to summit S, altogether avoiding the deadly north face. Admittedly, it takes longer to get to the summit, but the path is never too steep and no climbing is required. So indeed the invention does not involve an inventive step. Now, as can be seen from the map, camp B is farther away from the summit than camp A:
A topographic map of Mount Narish One might say that B is not the closest prior art. But one would come to the false conclusion if B was discarded without further ado. As a matter of fact, B is the better springboard, but in order to find out, you have to take it into account: you need to follow both paths to see whether one of them does not require climbing. What is the practical conclusion from all this? I would say that a Board should never discard prior art which the opponent claims to be the best point of departure, just because it does seem more remote than another. If the opponent claims this particular prior art to be the most promising springboard, it will, in general, have good reason to do so. The Board should check it out before dismissing the attack, based on mere proximity arguments. To put it differently, time would be better spent if the discussion of whether something is indeed “the” closest prior art was replaced by a discussion whether the prior art invoked by the opponent did indeed lead to the invention without any inventive step. 1012 | 3398
T 56/09 – So Close
K’s Law – The ebook
I therefore fully agree with decision T 967/97 where the Board made the following statement: “If several paths to the the solution (Lösungswege) along which the invention could be obvious offer themselves to the skilled person, then the reasoning (ratio) underlying the problem-solution approach requires [the Office] to examine the invention with respect to all of these paths to the solution before a decision confirming the presence of an inventive step can be taken.” Decision T 1514/05 and others have since then followed this approach, which, incidentally, would also help to (slightly) “raise the bar”.
Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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J 5/11 – Be Vigilant
K’s Law – The ebook
J 5/11 – Be Vigilant 21 Sep 2012
This is an appeal against the refusal of re-establishment by the Receiving Section (RS). The applicant, a U.S. company, had failed to pay a renewal fee in due time. On July 2, 2009, the RS had informed the applicant that the renewal fee for the 7 th year (1000 €) had fallen due on March 31, 2009, and could still be paid (together with an additional fee). The fees were not paid in due time. On January 19, 2010, the RS informed the applicant that its application was deemed to be withdrawn. The letter mentioned the possibility of applying for re-establishment of rights. On March 29, 2010, the applicant filed a request for re-establishment. The request was justified as follows:
On May 12, 2010, the RS informed the appellant that it was not convinced that the applicant and its representative had taken all due care. The RS requested more detailed information about the economic challenges the appellant went through, a detailed explanation regarding the working procedures for payment of renewal fees both before and after the reduction in the workforce was made, a statement from “the individual who was assigned to take over responsibility for the payment of maintenance fees”, and a copy of the “multiple calendars” which were used to identify the due dates. The applicant was invited to reply within two months. No such reply was received. The RS finally rejected the request for re-establishment. The applicant filed an appeal and provided some of the missing information together with the statement of grounds of appeal. The Board dismissed the appeal. The decision comes with the following headnote: The applicant for re-establishment of rights who fails to substantiate his application adequately in the first instance proceedings, in particular after being expressly invited to do so, cannot normally make good that failure by submitting additional evidence with the grounds of appeal. 1014 | 3398
J 5/11 – Be Vigilant
K’s Law – The ebook
If you want to know how the Board came to this conclusion, just read on: The question whether the decision under appeal was legally correct [1] The primary duty of the Board of Appeal is to give a judicial decision on the correctness of an earlier decision taken by one of the first-instance departments listed in A 108(1) (see e.g. T 34/90, T 25/91 and T 506/91). Thus in the present case the Board must first of all decide whether the decision under appeal was legally correct on the basis of the information and evidence available to the RS at the time when it adopted the decision on 20 October 2010. [2] The request for re-establishment of rights which the appellant submitted on 29 March 2010 was clearly inadequate for the purposes of R 136(2), which requires that the “request shall state the grounds on which it is based and shall set out the facts on which it relies”. The appellant’s request referred to certain economic challenges, the departure of personnel responsible for paying patent maintenance fees and the existence of multiple calendars. The appellant did not provide the sort of detailed information, backed up with evidence, that might have allowed the RS to conclude that the appellant had exercised “all due care required by the circumstances”, as required by A 122(1). In this respect it must be borne in mind that the burden of proving that the requirements for re-establishment have been met lies with the applicant for re-establishment. In fact in the present case it is questionable whether the information provided in the appellant’s letter of 29 March 2010 was even sufficient to render the request for re-establishment of rights admissible, in the light of the case law of the Boards of Appeal. It has been held that a request which contains only general information and does not give specific details of the events that entailed the loss of rights should be rejected as inadmissible for want of substantiation (J 19/05). [3] In T 324/90 the Board of Appeal held that evidence proving the facts set out in the request for reestablishment of rights may be filed after the expiry of the two-month time limit laid down in A 122(2) EPC 1973 [now R 136(1)]. In the present case the RS expressly drew the appellant’s attention to the inadequacy of the information provided in the request for re-establishment filed on 29 March 2010. In its letter of 12 May 2010 […] the RS set out in considerable detail the sort of information and evidence that needed to be provided in order for the request to be considered properly substantiated. As was noted in the decision under appeal, the appellant failed to reply to that letter. [4] In view of the appellant’s failure to substantiate the request for re-establishment of rights it is clear that the decision under appeal is the only decision that the RS could lawfully take. At the hearing on 6 June 2012 the appellant’s representative observed that it was impossible to provide further evidence in response to the RS’s invitation as a result of the economic difficulties encountered by the appellant. He conceded that the decision under appeal was correct on the basis of the available evidence. The admissibility of the new evidence submitted during the appeal proceedings [5] The Board must next consider whether the decision under appeal, though legally correct at the time when it was adopted, may none the less be challenged on the basis of the new evidence which the appellant submitted with its grounds of appeal and with its written observations of 16 January 2012. [6] There is case law to support the view that an applicant for re-establishment of rights who fails to substantiate his application adequately in the first-instance proceedings cannot make good that failure by submitting additional evidence with the grounds of appeal (J 18/98 [3-4,7]). In that decision the Board held that facts pleaded for the first time in the grounds of appeal cannot be taken into consideration, on the ground that to act otherwise would be incompatible with the judicial nature of the Boards of Appeal. [7] While it is true that the primary function of the Boards of Appeal, as stated above in paragraph 1, is to give a judicial decision on the correctness of a first-instance decision of the Office, that does not necessarily mean that new evidence submitted for the first time on appeal is automatically inadmissible. A rigid rule excluding all new evidence on appeal might lead to injustice and unfairness in some cases and would not be compatible with the principles of procedural law generally recognized in the Contracting States (cf. A 125). [8] The appellant does not have an absolute right to introduce new evidence with its statement of grounds of appeal. That is clear from the wording of Article 12(4) RPBA, which refers to “the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings”. Article 12(4) RPBA must be read in the light of A 114(2), which provides: 1015 | 3398
J 5/11 – Be Vigilant
K’s Law – The ebook
“The EPO may disregard facts or evidence which are not submitted in due time by the parties concerned.” It is sometimes said that there is a contradiction between the Office’s power to disregard late-filed evidence (A 114(2)) and its obligation to examine the facts of its own motion (A 114(1)) (see, for example, the discussion in “Case Law”, 6th edition 2010, VII.C.1). There is, however, no such contradiction because the Office is not required to disregard late-filed evidence but merely given a discretionary power to disregard such evidence (see T 122/84 [11] and the reference made therein to the Travaux Préparatoires to the EPC). [9] There is, moreover, a difference between evidence that is in the public domain and easily accessible (e.g. published patent applications) and evidence that is within the private sphere of the party concerned (e.g. information about the economic challenges facing the party and about the organization and working methods of its internal departments). The Office’s duty to examine evidence of its own motion is more stringent in relation to evidence that is in the public domain, and the case for admitting such evidence when it is filed out of time by the parties is correspondingly stronger. The Office’s duty to examine of its own motion evidence that is in the private sphere of the party concerned is obviously limited. Such evidence can only be taken into consideration by the Office if it is brought to the Office’s notice by the party concerned. If evidence of that type is not put forward in the proceedings before the first-instance department of the Office, it is difficult to see any compelling reason why the Board of Appeal should exercise its discretionary power under A 114(2) and Article 12(4) RPBA in such a way as to admit the evidence when it is filed with the grounds of appeal or a fortiori at a later stage of the appeal proceedings. That is particularly true when, as in the present case, the first-instance department has expressly drawn the appellant’s attention to the need for supporting evidence, indicated precisely what type of evidence is needed and given the appellant an adequate time limit within which to file the evidence. In such a situation it was surely incumbent on the appellant, which had lost its rights through failing to pay a renewal fee by the original due date under R 51(1) and through failing to pay that fee and the additional fee within the six-month period provided for in R 51(2), to make an effort to gather together the requested evidence and to file it within the prescribed time limit or at the very least, if that proved impossible, to request an extension of the time limit under R 132(2). Even a company in economic difficulties must show some degree of vigilance in protecting its patent rights and responding to a request for information and evidence from the Office. The appellant did not show that minimum level of vigilance and gave every impression that at that point it had lost interest in its European patent application. [10] A further point to bear in mind is that under A 122(4) re-establishment of rights is ruled out in respect of the time limit for requesting re-establishment of rights. If an applicant for re-establishment of rights who completely failed to substantiate the application, as required by R 136(2) within the two-month time limit laid down in R 136(1), were then allowed to file with his grounds of appeal the evidence that he could and should have filed with the application for re-establishment, the effect of that would be to deprive of all meaning the rule laid down in the first sentence of A 122(4). The appeal proceedings would be used as a means of obtaining re-establishment in respect of the time limit for requesting re-establishment. [11] In the light of the above considerations the Board concludes that there are no grounds for exercising its discretionary power under A 114(2) and Article 12(4) RPBA in such a way as to admit the evidence filed for the first time with the grounds of appeal and with the written observations submitted on 16 January 2012. [12] Consequently the appeal must be dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1408/10 – In Vitro Veritas
K’s Law – The ebook
T 1408/10 – In Vitro Veritas 20 Sep 2012
This is an appeal against the refusal of the application under consideration by the Examining Division (ED). Claim 1 of the main request before the Board read: 1. Defibrotide for use in the treatment of angiogenesis-dependent tumour, characterised in that it is administered to a human on a daily basis. (my emphasis) The ED had come to the conclusion that the feature “administered to a human on a daily basis” had no basis in the original application as the administration of defibrotide on a daily basis only referred to in vitro tests or animal models which could not be transferred to the treatment of humans. The Board agreed with the ED: [1.1] The appellant indicated page 5, lines 5-8 and 22, as the basis for the characterising feature of present claim 1. As was correctly pointed out in the decision under appeal, the passage on page 5, lines 5-8 relates to an in vitro test, i.e. the Matrigel® tube formation assay involving the administration of defibrotide to endothelial cells of the rat aorta. The passage on page 5, line 22, which stresses the superiority of daily application, concerns an in vitro assay performed on the basis of microvascular endothelial cells vascularising through a layer of dermal fibroblasts. In vitro assays constitute valuable tools in pharmacy for testing the usefulness of potential active agents for therapy but it goes without saying that the specific environment of an in vitro test cannot be compared to the situation in which said agents are administered to a mammal such as a human. In connection with the dosage regimen (daily administration), it is noted that in vitro assays do not encompass parameters such as resorption, pH changes within the gastrointestinal tract (if orally administered), distribution of the active agent within the human or animal body or its release profile from the galenic vehicle, which play a very important role for determining which quantities of the active agent have to be administered at which intervals for obtaining the desired pharmacological effect. In this context, it is noted that in general, a specific dosage regimen cannot be transferred even from one mode of administration to another: thus, an intravenous administration of an active agent once per day does not imply that the desired pharmacological effect is also obtained by daily administration of a tablet or a suppository. As a consequence, the fact that the daily administration of difenobrate was suitable in an in vitro assay does not allow the conclusion that the same dosage regimen would also work for the therapy of humans. The appellant, making reference to the paragraph bridging pages 5 and 6, argued that the original application also referred to in vivo models. The board, however, notes that this paragraph is completely silent as regards the dosage regimen. It follows therefrom that the dosage regimen applied for the in vitro assays on page 5 of the original application cannot be transferred to the treatment of mammals or humans. As a consequence, the requirements of A 123(2) are not met. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1518/12 – Serves You Right
K’s Law – The ebook
T 1518/12 – Serves You Right 19 Sep 2012
The appeal was filed against the refusal of the application under consideration (claiming a process for preparing acyclic HCV protease inhibitors) for lack of inventive step. In a first communication under A 94(3) the Examining Division (ED) had expressed the opinion that the requirements of A 83 and A 84 were not met and that the claimed subject-matter lacked an inventive step. The communication stated that the application described a synthetic route for the preparation of certain compounds in general terms but did not give any example substantiating the success or feasibility of that route, and concluded that there was no substantiation that the technical problem had been solved. The applicant replied by filing claims amended in response to the objections under A 83 and A 84. As regards the objection of lack of specific examples to substantiate the feasibility of the claimed process, it referred to tables 1 and 2 of the application as filed which lists 55 compounds that may be prepared by the claimed process. The ED then refused the application. In its decision it reiterated the inventive step objection. It referred to the appellant’s argument based on tables 1 and 2 of the application as filed but, since it considered that those pages did not provide sufficiently specific information, maintained its view that the applicant had neither substantiated nor provided convincing arguments that the claimed process in fact solved the problem underlying the application. In its notice of appeal, the applicant pointed to examples 4, 5 and 6 of the first priority document as descriptions of different possible routes of the claimed process. The appellant argued that these examples, which were present on the file, substantiated the solution of the problem underlying the present invention. The ED granted interlocutory revision, but referred the request for reimbursement of the appeal fee to the Board. [1] The ED has allowed the appeal which has been forwarded to the Board solely to decide on the appellant’s request for reimbursement of the appeal fee. That has been done pursuant to R 103(2) EPC (see also J 32/95 and G 3/03). 2. The provision which the Board must consider is R 103(1)(a) which, as relevant for the present case, reads: “(1) The appeal fee shall be reimbursed (a) in the event of interlocutory revision …, if such reimbursement is equitable by reason of a substantial procedural violation …” There are thus three conditions to be satisfied – interlocutory revision must have been allowed, a substantial procedural violation must have occurred, and reimbursement because of that violation must be equitable. Interlocutory revision having been allowed, the Board is concerned only with the second and third conditions. Clearly, the second condition must be satisfied before the third condition needs to be considered. [3] The Board notes that the appellant does not allege a substantial procedural violation as such but only argues that the appeal fee should be reimbursed because the information put forward in its grounds of appeal - namely, the examples in the first priority document - was evident from the file. [4] While that information certainly was on file, and while the ED would no doubt have ascertained that information if it had, at the time of making its decision, had occasion to re-read the priority document, the Board cannot accept that not taking that step amounted to a substantial procedural violation. The mere presence of information somewhere in the file does not relieve a party of its duty to draw attention to it when necessary or to present arguments relying on such information at the appropriate time (see R 2/08 [8.5,9.10]). That did not happen in the present case. [5] When the ED in its communication of 4 September 2009 expressed its view as to the absence of any substantiation that the technical problem had been solved […], the appellant did not refer in its reply of 12 April 1018 | 3398
T 1518/12 – Serves You Right
K’s Law – The ebook
2010 to the examples in the first priority document which it later mentioned for the first time in its grounds of appeal. That response to the communication would however have been the appropriate time to have done so since, as the allowance of interlocutory revision clearly suggests, it might have resulted in a decision in the appellant’s favour and avoided the need for an appeal. Instead the appellant presented an argument based on the tables at pages 43 to 49 of the application as filed which the ED did not find convincing. [6] It is therefore clear that the need to pay the appeal fee arose not from any failure on the part of the ED but from the manner in which the appellant chose to conduct its case. In the circumstances the Board finds there was no substantial procedural violation. Therefore the question whether reimbursement of the appeal fee would be equitable does not arise. The request for such reimbursement must be refused. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 435/07 – Where Exactly?
K’s Law – The ebook
T 435/07 – Where Exactly? 18 Sep 2012
This is an appeal against the decision of the Examining Division (ED) to refuse the application under consideration. The search division (SD) had found the application to contain three distinct inventions: (1) a catalyst carrier (ii) comprising a fibre paper impregnated with a particular slurry (i) (claims 1 to 11); (2) the slurry (i) itself (claim 12); and (iii) a catalyst (iii) comprising the carrier (ii) (claims 13 to 17). Therefore, the SD raised an objection of lack of unity. The applicant paid a second search fee for claims 13 to 17. In its communication pursuant to A 96(2) EPC 1973, dated November 3, 2005, the ED reiterated the objection:
The applicant filed a reply explaining why the slurry of claim 12 was both novel and inventive over the prior art cited and constituted the common inventive concept linking all claims of the application. The applicant requested that the ED grant a patent based on the claims as originally filed and refund the extra search fee. The ED then issued its decision refusing the application. The Board came to the conclusion that the ED had committed a substantial procedural violation:
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T 435/07 – Where Exactly?
K’s Law – The ebook
[2.1] According to A 113(1), the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. The grounds are to be understood as meaning the essential legal and factual reasoning on which the decision is based (Case Law, 6th edition 2010, VI.B.1.1). The grounds must be communicated to the applicants in such a way that they are put in the position to defend their rights. It is not sufficient to raise an objection without giving the factual details on which this objection is based and then leave it to the applicants to formulate the counterarguments. An objection against the grant of a patent must be raised in such a way that the applicants are able to understand its factual basis and to react accordingly without having to guess first what the ED might have had in mind. [2.2] In the present case, the application was refused based on a single ground, namely lack of unity. Thus it needs to be decided whether or not that ground had been properly communicated to the applicants in advance and whether the applicants were given an opportunity to overcome it. [2.3] Lack of unity was based on the fact that the common concept linking the intermediate products (i), (ii) and catalyst product (iii), namely the slurry (i) defined in claim 12, is known from D8 and the common concept linking the intermediate product (ii) and catalyst product (iii), namely the support (ii) of claim 1, is foreshadowed by D1 in combination with technical encyclopedia excerpts D2-D4. The basis for lack of unity was therefore lack of novelty of the slurry of claim 12 over D8 and lack of inventive step of the support of claim 1 over D1 in combination with D2-D4. [2.4] Lack of novelty of the slurry over D8 was communicated to the applicants in the single communication of the ED by a single sentence, stating only that the slurries are “known from D8 for the same purpose, additionally relying on the computer translation of this document”. [2.4.1] Such a statement without any indication of where in the document the features of the slurry are to be found individually and in combination results in simply raising the objection without communicating to the applicants the reasoning on which that objection is based, since there is no correlation between specific passages of the document and corresponding features of the claim and there are no arguments to support the objection. It is left to the applicants to find out about the relevant features in D8 themselves. [2.4.2] A generic statement at the beginning of the communication that “the respective passages cited with the individual documents in the search report apply in assessing these documents” cannot support a different conclusion, since it only restricts somewhat the parts of the documents which may be relevant, but does not put the applicants in the position of understanding where each feature is to found according to the ED and which reasoning of the division stays at the basis of the raised objection. [2.5] The lack of inventive step objection for the support of claim 1 is developed in the single communication by the ED in a few more sentences in which it is said that the support is “foreshadowed by D1 in combination with technical encyclopedia excerpts D2-D4. D1 clearly teaches that adding either a gelation agent or the fibres defined in present claim 4-5, dependent upon claim 1, to an impregnation slurry for fibre papers comprising silica sol will lead to a strong and durable carrier as presently sought (cf. application page 1, lines 21-23), the carrier (ii) claimed in present claim 1 thus being an obvious alternative to that of Dl. Particularly attapulgite (identical with palygorskite, cf. present claim 5) and sepiolite, referred to in Dl, are known from D2 as typically falling within the particle size range claimed in present claim 1. The explicitly mentioned fillers in Dl (e.g. kaolin, mica and talc) are known from D3 and D4 to prescribe to the presently defined particle sizes in claim 1.” [2.5.1] Here again no single citation of specific passages of any of D1 or D2-D4 is given, let alone in combination with specific features of the claims. In particular, no indication is to be found of where in the document apparently considered as the closest state of the art (D1) the features of the support are to be found individually and in combination. Moreover, no clear indication is given of which are the distinguishing features with respect to D1 and where these features are to be found in the cited prior art together with a hint that they are meant to solve the posed problem. Without these pieces of information the applicants are not put in the position of understanding the objection of lack of inventive step raised by the ED and reacting appropriately in order to overcome it. [2.5.2] Also in this case the generic reference at the beginning of the communication to all passages cited in the search report is of no help, for the same reasons as outlined above (point [2.4.2]). [2.6] For these reasons, it is concluded that, while the ground of lack of unity was formally communicated to the applicants in the single communication of the ED, its factual basis was not sufficiently given therein, so that the appellants had to speculate about the ED’s assessment and thus were not put in the position to properly defend their rights. Under such circumstances the requirements of A 113(1) EPC cannot be considered to be met. 1021 | 3398
T 435/07 – Where Exactly?
K’s Law – The ebook
[2.7] Coming to a final decision after such a single deficient communication with the result that the application is refused results therefore in a substantial procedural violation. [2.8] Moreover, the decisions cited in the decision under appeal to support the fact that the issue of a decision was permissible under A 113(1) are not pertinent, since they refer to different factual situations. In the case dealt with in T 162/82 the primary examiner took a reasoned stand concerning the patentability of the application in his first communication ([10, 1st sentence]) and in the case underlying T 300/89 the relevant objection (lack of novelty) was clearly raised and explained in the first communication ([9.1, last paragraph]). The conclusion of the Boards in those cases that no procedural violation took place when a decision was directly taken after the first communication in the absence of a request for oral proceedings was based on the presence of a properly raised objection in the first communication which is not the case here. Decision G 4/92 deals with a decision taken against a duly summoned party who fails to appear at oral proceedings and is not relevant for that reason only. The Board then remitted the case to the ED and ordered reimbursement of the appeal fee. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1021/08 – No Ping Pong Please
K’s Law – The ebook
T 1021/08 – No Ping Pong Please 17 Sep 2012
This is an appeal against the revocation of the opposed patent by the Opposition Division. All the relevant facts of the case will become clear from the chosen passage, which deals with written submissions by the parties: [1] In the present case both the [patent proprietor] and [one of the opponents] filed additional written submissions after, respectively, filing their statement of grounds of appeal and replies […]. In the [patent proprietor’s] case, there were two additional submissions. The only written submissions which are necessarily taken into account are those referred to in Article 12(1) RPBA (to the extent they are relevant and comply with Article 12(2) RPBA - see Article 12(4) RPBA), namely an appellant’s notice and statement of grounds of appeal and the respondents’ replies, each of which should contain a party’s complete case (see Articles 12(1)(a)(b) and 12(2) RPBA). Any other submissions, unless answering a communication from the board (see Article 12(1)(c) RPBA and again subject to Article 12(4) RPBA), are amendments to a party’s case and admissible only at the board’s discretion (see Article 13(1) RPBA). No explanation was given for filing any of the late submissions and none of the parties concerned made any request for leave to amend its case thereby. [2] The cited provisions of the RPBA quite clearly foresee only one written submission from each party supplemented as necessary by answers to communications (if any) from the board. They do not foresee, and there is no right to, responses to the reply or any further exchanges of written submissions. Indeed the current RPBA were intended inter alia to prevent such “ping pong” submissions (see the full summary of the legislative history in T 1621/09 [25-34]). While the board was able to decide the present case without needing to decide on their admissibility, such additional written submissions beyond those envisaged by the RPBA add to the work of the board (and the parties), tend to delay appeal proceedings, and could be the subject of costs orders under Article 16(1) RPBA. NB: T 1621/09 was reported on this blog (here). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1251/08 – On The Phone Again
K’s Law – The ebook
T 1251/08 – On The Phone Again 15 Sep 2012
This is a decision on an appeal against the refusal of the application under consideration. On March 27, 2012, the appellant was summoned to oral proceedings (OPs) to be held on June 29. On June 8 the appellant’s representative telephoned the rapporteur requesting a telephone discussion with the rapporteur on June 18 or 19 to see whether any of the appellant’s requests filed so far were either allowable or would be allowable with minor amendments. The appellant argued that such a discussion could avoid OPs and thus save time and costs. The rapporteur declined the proposition. On June 20 the appellant’s representative telephoned the rapporteur again. The rapporteur informed the representative that, in the board’s preliminary opinion, none of the main and auxiliary requests currently on file appeared to be allowable or would be allowable with only minor changes. The rapporteur declined a discussion of the board’s reasons for this on the telephone. In the afternoon of June 28, the day before the OPs, the appellant’s representative telephoned the rapporteur to say that the appellant was submitting amended claims according to three new auxiliary requests. A letter to the same effect was received later the same day, accompanied by the texts of the three new auxiliary requests. The Board remitted the case to the first instance for further prosecution based on an auxiliary request. It had also something to say on telephone interviews: The appellant’s request for a telephone interview with the rapporteur and an explanation of the board’s provisional opinion [2.1] In the telephone call with the rapporteur on 8 June 2012 the appellant’s representative essentially requested a telephone interview with the rapporteur to discuss the allowability of certain requests on file. Although the request for an interview was not allowed, the representative nevertheless requested in a further telephone call with the rapporteur on 20 June 2012 an explanation of the board’s provisional opinion on the requests on file. [2.2] As established in the case law of the boards of appeal, as a matter of principle, the EPC foresees the absolute right to OPs under A 116(1) EPC 1973, but not the right to a telephone interview (cf. Case Law, 6th edition, 2010, VII.B.2.7.2 concerning the department of first instance, in particular). As to appeal proceedings more specifically, Articles 4 and 5 RPBA […] provide that certain steps in the proceedings may be taken by the rapporteur. Where this is the case the rapporteur’s duties consist of either ensuring, under the board’s supervision, that the procedural rules or the directions of the board of appeal are complied with by the parties, or, where it comes to substantive matters (Article 5(3) RPBA), of acting on behalf of the board. This, in other words, implies that the other members of the board have been informed and put in the position to give an informed opinion on the action to be taken. To this end it is important that the same case is presented to all of the board’s members. If one of the board’s members were privy to evidence or arguments not available to the other members then this would be a breach of the principle of collective decision making and would be in conflict with A 21 EPC 1973; see T 1109/02 [1] and T 263/07 [2.1-3]. [2.3] Since the requested telephone interview and the enquiry regarding the reasons for the board’s provisional opinion on the requests could have led the rapporteur to take a position on an issue where a collective decision would have been required, or to commit the board without preliminary discussion, both requests were refused as not being compatible with the above mentioned principle and rules governing appeal proceedings. [3]. A further communication by the board after the summons to OPs was not necessary and had also not been requested by the appellant. Under Rule 100(2) EPC (corresponding to Article 110(2) EPC 1973 in conjunction with Rule 66 (1) EPC 1973) the board shall invite the parties “as often as necessary” to file observations. In the present case OPs were arranged as requested by the appellant and because it was the most efficient procedural course of action to be taken at this stage. 1024 | 3398
T 1251/08 – On The Phone Again
K’s Law – The ebook
The telephone call by the representative on the day before the OPs [4] The board wishes to avoid giving the impression that it finds that it is never appropriate for parties in ex parte proceedings to telephone the rapporteur. Leaving aside the question of whether it is appropriate to file new requests on the day before an OPs, the representative’s telephone call on the day before the OPs to advise the board that several late requests were being filed by fax assisted the board in conducting these proceedings in an orderly manner. The board was consequently at least in a position to ensure that the late submission was distributed to the whole board as soon as possible. Should you wish to download the whole decision, just click here. The
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T 506/08 – Not My Business
K’s Law – The ebook
T 506/08 – Not My Business 14 Sep 2012
This decision – which Manolis mentioned in a comment recently – deals with the refusal of a Euro-PCT application by the Examining Division (ED). The application concerned a method for carrying out an electronic auction in a communication network. In December 2001, the EPO acting as ISA informed the applicant that it would not establish an ISR because it had been unable to spot a technical problem the solution of which could involve an inventive step. In April 2002, the EPO acting as IPEA reimbursed two thirds of the examination fee. After the application had entered the European phase, the ED reiterated the objections. The applicant filed amended claims and requested the ED to carry out a search. In 2007, the ED refused the application and the applicant filed an appeal. Among other requests, the appellant asked the Board to refer the following questions to the Enlarged Board (EBA) (my translation): 1. Is reimbursement of fees only possible if there is an explicit situation where a provision stipulates the reimbursement (J 3/09) or are fee payments that fall short of the purpose defined in the criteria for fee payment (here: Rule 16.1 PCT: “… for carrying out the international search”) always to be reimbursed unless there is an explicit prohibition to reimburse them (J 6/83)? 2. Is A 125 applicable to acts of the EPO performed during the international phase of a PCT application, e.g. when it is acting as ISA? 3. Does the principle prohibiting unjust enrichment – which is acknowledged in all Contracting States – constitute a basis for requesting reimbursement (application of A 125) when a purpose of the fee mentioned in the criteria for fee payment (here: carrying out an international search) is not or not entirely fulfilled (fee payment without any legal basis)? In its decision the Board found all requests on file to lack inventive step. It refused to remit the case to the first instance because it was of the opinion that the ED’s refusal of a further search was justified. The Board then dealt with the request to refund the international search fee: *** Translation of the German original *** Lack of competence of the Board of appeal [13] In the present case the EPO has not carried out a search during the international phase but has made a standardised declaration that no search would be carried out. During the European phase, the EPO has not carried out a further search (Nachrecherche) either. This is the reason for the appellant’s request for a – possibly partial – reimbursement of the search fee that had been paid to the EPO during the international phase. As the Board does not remit the case to the ED, it is certain that there will not be any further search. However, the Board does not consider itself to be competent to decide on a request for (partial) reimbursement of the international search fee in a case where no search has been carried out. [13.1] The appellant’s central argument consists in that there had to be a legal recourse (Rechtsweg) allowing to judicially review acts performed by the EPO acting as international PCT authority (guarantee of judicial review – Rechtsweggarantie) and that, therefore, the Board had to be competent for reviewing the relationship between [the payment of] the international search fee and the actual service in return (Gegenleistung). 1026 | 3398
T 506/08 – Not My Business
K’s Law – The ebook
The Board is aware of the existence of the fundamental right consisting in the guarantee of judicial review in the Contracting states of the EPC (see G 3/08 [7.2.1]: “verifiability of all state action”; [7.2.2]: “guarantee [of] the due process of law within the Organisation”). The judicial review for which the Board is competent has indeed taken place, i.e. the [review] whether under the applicable criteria of the EPC the EPO was right or not to refuse to carry out a search in the present case and whether, accordingly, a search was unnecessary or required. The review corresponds to [the finding of] the case law according to which the Boards of appeal can only provide legal remedies (Rechtsschutz bieten) offered under the EPC in the European phase and remediate the consequences of a decision of a PCT authority on the regional level (J 20/89; J 4/94). However, the guarantee of judicial review does not mean that any claim against the EPO the recourse is to be dealt with by the Boards of appeal (see e.g. J 14/87 [13, reference to A 9 EPC 1973]). [13.2] It is undisputed that there is no explicit legal basis for a (partial) reimbursement of the international search fee in case [the ISA makes] a declaration that no search will be carried out. Neither the PCT nor the Agreement between the European Patent Organisation and the WIPO dated October 31, 2001 and which has been updated several times (see in particular its Annex C, part II) provides anything on a reimbursement in such a case, nor is there a respective decision of the President of the EPO (such as for the partial reimbursement of the fee for the IPE, OJ EPO 2001, 539). The Board wishes to add that the international search fee has not been paid “without any cause” (“grundlos”) but fell due together with the international filing fee (Rule 16.1 f and 15.4 PCT). Therefore, in the present case Annex C, part II, paragraph 1 of the Agreement does not establish a situation (Tatbestand) where reimbursement of the international search fee is required, either. [13.3] As a consequence, the Board is of the opinion that the appellant’s request for a review aims at having the Board interfere in the PCT rules related to fees (e.g. Rule 16.2 or 16.3 PCT) or in the Agreement between the EPO and the WIPO (Annex C, Part II) in order to establish situations where fees are to be reimbursed (Gebührenerstattungstatbestand), in particular in the case of a standardised declaration that no search will be carried out, so as to alleviate a fee-related situation (Gebührenkonstellation) that is perceived as being unjust. However, the Board does not consider itself to be entitled to interfere in this way, irrespective of whether the lack of [provisions establishing] a situation where reimbursement is required (Erstattungstatbestand) is the result of an intended or unintended historical development of the provisions and agreements of the PCT. [13.4] Under A 21(1) EPC 1973 the Boards of Appeal are responsible for the examination of appeals from the decisions of the Receiving Section, Examining Divisions, Opposition Divisions and of the Legal Division. It follows that Boards of appeal cannot interfere in decisions of the PCT Contracting States or the Agreement between the EPO and the WIPO because such an Agreement is within the responsibility of the Administrative Council (AC) of the European Patent Organisation, who can authorise the President of the EPO to negotiate and, with its approval, to conclude agreements on behalf of the European Patent Organisation with intergovernmental organisations (A 33(4) EPC 1973 and 2000). The competence for establishing new criteria for fee reimbursements lies with the above mentioned decision makers, the decisions of whom are outside the competence of the Board of appeal. It is true that the EBA has stated that the powers of the AC are limited by the EPC (and by doing so, reviewed a decision of the AC): the AC must not create regulations that would contradict the provisions of the EPC itself (G 6/95 [4]), but in the present case such a contradiction has not been substantiated (dargetan) nor is it apparent. [13.5] A 125 EPC 1973 only allows the Board to take into account generally recognised principles of procedural law in order to complement [the provisions of the EPC] but does not confer it competence regarding rules relating to fees. [13.6] Another argument of the appellant is based on the requirement of equal treatment of European and international applications. If an application was filed directly as a European application and no search was carried out, the European search fee had to be at least partially reimbursed because Article 9 of the Rules relating to fees of the EPC clearly was based on the principle that the amount of the search fee should correspond to the efforts made by the EPO. The Board and the appellant agree that there is no precedent in the case law of the Boards of appeal which would answer the legal question of whether in the case of a direct European application a declaration that no search will be carried out (R 45 EPC 1973 or R 63) could make it necessary to reimburse the European search fee in its 1027 | 3398
T 506/08 – Not My Business
K’s Law – The ebook
entirety or in part. As the appellant’s comparison (Vergleichsfall) is clearly hypothetical, [the Board] cannot see any unequal treatment. [14] As the Board is not competent for deciding on the request for (partial) reimbursement of the international search fee in a situation where no search has been carried out, this request is inadmissible. [15] The legal questions formulated by the appellant in view of a referral to the EBA concern the substantive (inhaltlich) treatment of the above mentioned request. As the Board considers the request to be inadmissible, it will not refer these questions to the EBA because [the answer] is not relevant for the decision. For the same reason a detachment and transfer (Abtrennung und Abgabe) of legal questions to the Legal Board of appeal is also excluded. […] The appeal is dismissed. The request for reimbursement of the international search fee is dismissed as inadmissible. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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K’s Law – The ebook
Birthday Musings
Birthday Musings 14 Sep 2012
As this blog celebrates its third birthday today, let me offer you a bonus in the form of a – not so serious – list of commented key figures.
250 000 Approximate number of page views so far. A fairly impressive but somehow profoundly uninteresting number. Admittedly, I just cited it to have one really big number in my list.
1470 Number of pageviews of the most popular post ever published on this blog – a summary of G 1/08 (“Leave Mendel Alone”). Funny that what I call a “catholic” post (i.e. one where you are told what the original text says, without actually reading it) should be the most popular on a blog of more “protestant” outlook (where you are invited to read the original texts).
1001
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K’s Law – The ebook
Birthday Musings
Number of posts published so far. Better known as the number of nights during which Sheherazade told her stories to King Shahryār. I guess she would not have survived had she chosen extracts from the case law of the Boards of appeal.
997 Number of comments left so far. The technically competent among the readers of this blog will confirm that this means that there was an average number of about 1 comment per post. In other words, my readers are not only competent but also taciturn – two qualities that often go together.
950 Estimated number of decisions reported so far. If you are a reader of this blog since its beginnings, you have read more BoA decisions than the average attorney reads in his whole career, I would think. But then, maybe the average attorney is right.
458 Number of pageviews of the most popular post of this third year, a post presenting statistical data on the 2012 BoA decisions. I intend to publish an update in early 2013. Unless the end of the world takes place on December 21, that is.
319 Number of active e-mail subscriptions. I never figured out why anybody (except perhaps Robinson Crusoe on his island) would want to have an e-mail notification from a blog that publishes daily, but the number of subscribers proves that there must be some good reason to do so.
200 Approximate number of on-line visitors per day. Leonidas had his 300, I have my 200. May my end be more peaceful than his.
6 Number of posts per week. As a rule, there is one post per day, six days a week, but never on Shabbat or Sunday. I let you figure out how that can be done.
4 Number of countries that provide more than 10% of the on-line readers of this blog: the Netherlands (all people connecting from the Office appear as Dutch), Germany, France and the UK. The presence of Brits was on the rise recently – which, in European undertakings, is a sign that the end is near.
3 Number of years of existence of this blog. Less than the age of reason, but perhaps more than what would have been reasonable.
2 Number of official languages of the EPO from which I translate into English. I sometimes have the feeling that most of my readers do not need translations, aber vielleicht sind ja doch nicht alle des Deutschen fähig, sans parler de la langue de Molière – allez savoir.
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K’s Law – The ebook
Birthday Musings
Number of contributors to this blog. Not ideal, because there is nobody else to blame.
0 Number of quid I earned with this blog. Great-uncle Shmuel always told me I was not good with the money. How true.
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T 226/09 – Anticipation
K’s Law – The ebook
T 226/09 – Anticipation 13 Sep 2012
Both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form, on the basis of the second auxiliary request on file. In its notice of appeal, the patent proprietor requested maintenance of the patent on the basis of what had been the first auxiliary request before the OD. In its statement of grounds of appeal, the patent proprietor then requested as main request that the opposition be rejected. Did the Board admit this request? *** Translation of the German original *** [1] The wording of the provision corresponding to former R 64 EPC 1973 and present R 99 was modified when the EPC 2000 entered into force. In particular, [the legislator] inserted the requirement that the notice of appeal had to contain a request defining the subject of the appeal into R 99(1)(c). [He] also added to paragraph 2 that the statement of grounds of appeal had to indicate the extent to which the impugned decision was to be amended. [1.1] In the present case the patent proprietor, when filing the notice of appeal, requested that the decision be set aside and that the patent be maintained according to the first auxiliary request. The statement of grounds of appeal explained why the reason should be set aside and also contained a request extending beyond [the original request], according to which the opposition should be rejected, i.e. the patent be maintained as granted. [1.2] The opponent was of the opinion that this [course of action] had limited the subject of the appeal to the first auxiliary request and that, as a consequence, the main request was not part of the appeal proceedings. It justified this opinion by invoking the amended wording of R 99 according to which the subject of the appeal was to be defined in the notice of appeal. The Board cannot endorse this opinion. [1.3] According to the case law of the Boards of appeal, the modified wording of R 99 has not resulted in a substantive revision (inhaltliche Neuregelung) of the requirements for the notice of appeal and the statement of grounds of appeal (T 358/08 analysing in detail the travaux préparatoires, T 689/09, T 9/08). This means that the requirements of R 99(1)(c) are satisfied when the notice of appeal requests that the impugned decision be set aside. The extent of the request (Änderungsbegehren), i.e. in which version the patent proprietor filing the appeal wants the patent to be maintained, is only to be indicated in the statement of grounds of appeal under R 99(2) (see in particular T 358/08 [5]). [1.4] What exactly is the subject of the appeal always has to be seen in the context of the subject of the impugned decision. If a decision has several subjects then it is possible that the appellant does not wish to contest all of these subjects. Therefore, it can file an appeal against the decision in its entirety or against parts of the decision only. This corresponds to the principle of party disposition (Antragsgrundsatz; G 1/99 [6.2]). However, these parts have to be independent of each other. In this context the initial (einleitend) request of the appellant determines the subject of the appeal and thereby fixes the framework of the appeal proceedings (G 4/93 [1]). Thus the subject of the appeal proceedings is to be determined on the basis of the declarations in the notice of appeal. [1.5] In the notice of appeal [the patent proprietor] first requested to set aside the interlocutory decision. The purpose of this declaration is to invalidate the impugned decision insofar as it adversely affects [the appellant]. The operative part (Tenor) of the impugned decision was that, taking into account the amendments, based on the second auxiliary request, the patent and the invention that it discloses satisfy the requirements of the Convention. The reasons for the decision explain that A 100(b) was in conflict with claim 1 of the main request and that claim 1 of the first auxiliary request violated A 123(2). These statements are not independent subjects of the decision. Rather, the subject of the decision is the patent, as can also be seen from the operative part [of the decision]. [1.6] According to decision T 689/09, which deals with R 99(1)(c), the declaration “hereby we file an appeal” defines the subject of the appeal to the extent that the legal effects resulting from the decision are to be cancelled. The question as to how the decision is to be modified, however, is left to the statement of grounds of appeal […]. 1032 | 3398
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K’s Law – The ebook
[1.7] In decision T 358/08 the Board came to the same conclusion. It further explained that the sole purpose of the requirement of R 99(1)(c) to define the subject of the appeal was to clarify whether the decision was contested in its entirety or only in part (point [5] of the reasons). [1.8] However, a decision can only be contested in part if there are parts of the decision that can be contested independently. For instance, this was the case in decision T 420/03 where the OD had revoked the patent and also had ordered apportionment of costs under A 104. The Board of appeal explained that the decision concerned two legally distinct subjects. If the appellant declared in its notice of appeal “hereby we file an appeal” and then only referred to the first part concerning the revocation, then the second part, i.e. apportionment of costs, was not encompassed by the appeal (point [1.2] of the decision). [1.9] In the present case there are no such legally distinct parts but only a unitary decision on the maintenance of the patent. [The patent proprietor] filed an appeal against this decision. This defines the subject of the appeal. To which extent [the appellant] wishes the impugned decision to be modified, i.e. in which version the patent is to be maintained, only has to be stated in the statement of grounds of appeal. If, however, this indication is already given in the notice of appeal, this only constitutes an anticipation of the statement of grounds that has no limiting effect (T 89/85 [2]). [1.10] Consequently the request contained in the notice of appeal, i.e. to maintain the patent on the basis of the first auxiliary request, did not limit the patent proprietor and did not hinder [the appellant to file] a more farreaching request together with the statement of grounds of appeal. [1.11] As a consequence, the main request is part of the proceedings. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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R 3/12 – Education Matters
K’s Law – The ebook
R 3/12 – Education Matters 12 Sep 2012
This petition was filed by the proprietor of the opposed patent after Board 3.3.02 had dismissed its appeal against the revocation of the patent. The petition contained a not so common (but, in my opinion, rather desperate) argument regarding the technical competence of the members of the Board: [1] A petition for review pursuant to A 112a(4) shall be filed in a reasoned statement setting out the grounds within a time limit of two months after the notification of the contested decision if the petition is based on paragraph 2(a) to (d) of A 112a. This is the case here. The petitioner filed his petition based on the ground of a violation of his right to be heard according to A 112a(2)c) and A 113 EPC 30 March 2012 i.e. within two months after the notification of the decision under review on 31 January 2012. [2] R 107(2) prescribes that the petition shall indicate the reasons for setting aside the decision of the Board of Appeal (BoA) and the facts and evidence on which the petition is based. These requirements are not met for the following reasons. [2.1] The petitioner refers in his petition to A 112a(2)c) and A 113 as the ground for his petition. However, there is no reasoning in the grounds of his petition indicating why his right to be heard under A 113 has been violated and on which facts his objection is based. He only points out, obviously with respect to R 106, that he became aware of the grounds of the decision through the written decision of the BoA. Since in his view this decision is clearly flawed, he argues that he did not have any opportunity to explain why the Board erred in its decision, except through the current petition […]. He explains in some detail why in his view the decision under consideration was wrong. He also raises the objection that the apparent failure of the BoA to understand the scientific facts discussed during the appeal proceedings contravened the “technically qualified” requirement of A 21(4)a). [2.2] It is established case law of the Enlarged Board of appeal (EBA) that a petition for review does not open a further instance of appeal, but only provides the right for a restricted judicial review founded on a limited number of grounds which are exhaustively defined in A 112a(2) and R 104 (see R 16/09 [2.3.5-6]; and R 10/09 [2.4]). [2.3] Thus, a petition for review may not be filed on the ground that, as the petitioner submits, a decision is wrong in substance or that a member of a Board did not understand the appellant’s case and was therefore not qualified technically. According to the restricted number of grounds for a petition according to A 112a it is not the duty of the EBA to scrutinise the contested decision as to whether its reasoning is convincing or not. [2.4] Furthermore, even if for the sake of argument it were to be established that a decision was based on an imperfect understanding of the technical issues, this has no implications for the technical qualifications of the board members in the sense of A 21, since this provision only implies a prescribed course of technical education of the members rather than providing a guarantee of an unquestionable understanding of a specific case. [2.5] Finally the EBA would state that after the closure of the debate before the BoA a violation of the right to be heard can only occur if the contested decision is based on new facts which have not been discussed during the appeal proceedings. In this case, however, the petitioner does not in fact argue that his right to be heard has been violated during the oral proceedings or that new facts have influenced the decision under review. On the contrary, he actually refers to the reasons pointed out during the appeal proceedings. [2.6] Thus, there are no facts whatsoever submitted in the grounds of the petition which could support the legal ground that the petitioner’s right to be heard has been violated. The arguments with respect to the correct understanding of the technical issues of the petitioner’s invention and its possible misunderstanding by the BoA in the contested decision are not relevant in petition proceedings under A 112a. As further facts and arguments are excluded when filed after the two months time limit under A 112a(4) the petition has to be considered as not reasoned in the sense of said provision. 1034 | 3398
R 3/12 – Education Matters
K’s Law – The ebook
[3] The EBA considers that the defect of the petition cannot be remedied. For that reason a communication pursuant to Article 13 RPEBA is not expedient and, as oral proceedings were not requested, a decision in writing is appropriate. Thus, the EBA in a composition according to R 109(2)a) comes unanimously to the conclusion that the petition is to be rejected as clearly inadmissible. NB: DG3 simultaneously published decision R 16/11. The decision is not very exciting (although the number of parties is impressive: there were 17 opponents) but I found it amusing to encounter an inhabitant of Patentland who had not been introduced to me yet: the “skilled reader of the decision” (point [2.3] of the decision). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 933/09 – Tell Us Why
K’s Law – The ebook
T 933/09 – Tell Us Why 11 Sep 2012
It cannot be said often enough how important it is to draft statements of grounds of appeal that really explain why the first instance was wrong or why its reasons do not apply any more to the amended claims. There may be cases where it is sufficient to file amended claims, but clearly these cases are the exception rather than the rule. The present appeal was filed after the Examining Division (ED) had refused the application under consideration on the grounds that claim 1 did not fulfil the requirements of A 123(2). The ED had objected, inter alia, that no basis for the “initial algorithm” and “subsequent algorithm” defined in the characterising portion of feature e)iii) of claim 1 could be established, particularly since the features of these algorithms seemed to be cherrypicked from the description, leading to an intermediate generalisation which went beyond the content of the original application. The Board found the appeal to be inadmissible, for the following reasons: [1] A 108 in conjunction with R 99(2) requires that a statement setting out the grounds of appeal be filed which indicates the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based. [2] This requirement is reflected in Article 12(2) RPBA which states: “The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on” [emphasis added]. [3] In the present case the appellant filed with the statement of grounds of appeal an extensively reworded claim 1. In particular, this claim contains a full page of newly formulated features in section e)iii), mainly replacing those features in claim 1 of the main request which had been objected to in the impugned decision. Beyond the general information given by the appellant in its statement of grounds of appeal that these newly formulated features included all the steps necessary to carry out the algorithm of the flow diagram of Figure 6, the only indication of any reasons why these new features might fulfil the requirements of A 123(2) is the appellant’s statement: “support of this [sic] features can be easily found in the description from page 8, line 6 to page 34 line 13” (that is, amongst 26 pages). [4] This statement merely conveys the information that the contents of 26 pages of the originally filed description (comprising a total of 34 pages) had been condensed into the newly formulated features in section e)iii). It does not enable the Board to immediately understand, without first having to make investigations of its own, if – and if so, where – there is a direct and unambiguous basis for each of the amendments made (in terms of both additions of features as well as omissions of other features belonging to the same context). Thus, the statement of grounds of appeal is not sufficient to allow to recognise the relevance of the amendments for remedying the raised objections of added subject-matter. [5] The lack of self-evidence for such basis for more than a dozen added method steps becomes particularly apparent from inspection of the large list of citations of numerous passages scattered throughout the mentioned 26 description pages which the appellant filed before the oral proceedings in an attempt to provide a purported basis for the added features. However, contrary to the appellant’s view, additional arguments filed after the time limit fixed in A 108 cannot be taken into consideration for assessing the admissibility of the appeal. [6] Consequently, the aforementioned statement cannot be considered to set out clearly the reasons for reversing the impugned decision and to specify expressly all the arguments relied on for establishing the appellant’s complete case as prescribed by Article 12(2) RPBA. [7] It is not denied that in some cases an appeal may be found to be substantiated as a result of filing amended claims which self-evidently deprive the contested decision of its basis. In the case underlying decision T 934/02 cited by the appellant, the statement of grounds of appeal did in fact give detailed reasons why the subject-matter 1036 | 3398
T 933/09 – Tell Us Why
K’s Law – The ebook
of the amended claims satisfied the requirements of novelty and inventive step vis-à-vis the documents cited in the impugned decision (point [2] of the Reasons), whereas in the present case the appellant has remained effectively silent as to why the amendments introduced into claim 1 now meet the requirements of A 123(2). Thus, in the present case, contrary to the appellant’s view, the Board considers that the mere filing of amended claims does not exonerate the appellant from the task of expressly specifying in the statement of grounds of appeal the relevance of the amendments for overcoming the objections on which the decision under appeal was based. [8] In view of the circumstances explained above, the Board also considers that the appellant’s acknowledged expectation of obtaining a continuation of the examination procedure before the ED by means of interlocutory revision under A 109 is irrelevant, since the ED did not rectify its decision and remitted the appeal to the Board. [9] For the aforementioned reasons, the Board finds that the appeal does not comply with the requirements of R 99(2) and is therefore to be rejected as inadmissible under R 101(1). In consequence, the allowability of the appellant’s request that the decision under appeal be set aside and that the case be remitted to the department of first instance for further prosecution is not examined (A 110). T 23/03 had come to the same conclusion in a similar case: [8] Therefore, the factual basis of the contested decision remained unchanged in the present case and the amendments made to the claims filed with the statement of grounds of appeal did not add anything which implicitly could clarify as to why the [patent proprietor] might be of the opinion that the contested decision [dismissing a request for lack of inventive step and violation of A 123(2)] no longer applies to the new dependent claims. [9] This is corroborated by the fact that [the opponents], insofar as the factual situation was the same as in the first instance, simply repeated their arguments presented there. Doing so rather implies that there was nothing to add since the situation has not changed, but cannot be interpreted as an answer to grounds of appeal indicating why the first instance decision should be held to be incorrect or no longer apply. [10] Therefore, the [patent proprietor’s] document headed “written statement of grounds of appeal ...” does not deal with the reasons given in the decision under appeal and, thus, does not comply with the requirements according to the third sentence of A 108 [EPC 1973]. Consequently, the appeal has to be rejected as inadmissible in accordance with the provisions of R 65(1) [EPC 1973]. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1410/07 – Nothing Special
K’s Law – The ebook
T 1410/07 – Nothing Special 10 Sep 2012
Another decision on the patentability of meta-methods … The application under consideration had been refused for lack of inventive step. According to the Examining Division, the claimed invention concerned an administrative method for organising a project the purpose of which was merely mental/administrative. The only technical aspect consisted in routine programming of a conventional data treatment device. Claim 1 of the main request before the Board read (in English translation): 1. Method for generating at least one project reference model defining project and process requirements and their control in a machine-readable way, comprising the following processing steps:
preparation of a predefined project reference model (XY) in a memory arrangement with different classification elements (KE) linked by means of at least one classification scheme, wherein each classification element (KE) refers to at least one memory location in which information regarding the configuration of this classification element is stored, representation of the predefined PEP project reference model (XY) on a display device; generation of a new PEP project reference model from the predefined project reference model (XY) via an input device, according to predefined organizationspecific and/or service-specific conditions; representation of the new project reference model on the display device; and storage of the new reference configuration model;
characterized by the following processing steps:
the classification elements (KE) are stored in a first memory with their individual designations and memory location references to at least one further memory, wherein a state code taken from a set of state codes is allocated to the classification elements (KE), wherein the set of state codes comprises at least state codes indicating whether a corresponding classification element (KE) exists in the PEP project reference model (XY) or has been virtually deleted, changed, made into versions, inherited, blocked, or duplicated, so that it is possible to access former versions of the PEP project reference model; information going beyond the designations of the classification elements (KE), i.e. not only the information on this classification element (KE) but also its link to other classification elements (KE) is stored in the at least one further memory to which a classification element (KE) refers; for generating the new project reference model, the at least one further memory is accessed exclusively by means of a preceding access to the first memory, and the target system is controlled via information regarding the configuration, wherein the information regarding the configuration consist in classifications, links (KEV, KV), procedures, rules, and configuration information, data, as well as other descriptions for a target system to be configured.
The Board dismissed the appeal, for the following reasons: *** Translation of the German original *** [2] The main request of the appellant cannot be granted because the claimed invention does not comply with the requirement of inventive step under A 52(1) together with A 56 EPC 1973. This requirement is not satisfied 1038 | 3398
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K’s Law – The ebook
when the claimed invention as such does not have a technical contribution to the prior art or when the technical contribution is nothing but a solution that is obvious to the skilled person. [2.1] The invention according to claim 1 concerns a method for generating at least one project reference model defining project and process requirements and their control in a machine-readable way (see the claim wording). Based on the description, see paragraph [0022] et seq., the term “model” is to be interpreted as designating a data object stored in a computer system used to generate information regarding configurations in a machinereadable mark-up language (Auszeichnungssprache) – e.g., according to paragraph [0034] et seq., the meta markup language XML (Extensible Markup Language) – and which comprises an interface for accessing the stored model information. [2.2] The claimed method provides a “predefined projet reference model” and generates a “new PEP project reference model from the predefined project reference model”. Both project reference models use “classification elements KE” and at least one “classification scheme” that “links” the classification elements. The “classification elements (KE) are stored in a first memory with their individual designations and memory location references to at least one further memory” in which “information going beyond the designations of the classification elements (KE)” is stored. [2.3] According to the description and the explanations of the appellant, such a project reference model is a “standardisation model”. It is used “to make available the use of the standardizable parts of a project or process and its specialization … in the target systems by an automated configuration” […] “The classification elements and their reference structures can be organized arbitrarily and underlie the logic of each model defined by the user.” […] A project reference model is a “standardizable and reusable part of a systemic configuration support of project management and project organization applications, project portals, and project processes”. [2.4] Therefore, the presently claimed invention boils down to a computer assisted meta-method for generating software that can be used for preparing, executing and following up (Nachhaltung) projects after it has been appropriately configured and adapted to a particular target system. [2.5] During the OPs the appellant has insisted on a very successful use of the invention in the company of a well-known car manufacturer and the description also explains the method by means of the development of vehicles. However, the invention that is disclosed in the application is not intended for direct use in a concrete industrial production process and is not claimed in the context of a concrete target system. Rather, the invention can be used in any domain, including financial services, to which paragraph [0058] of the description (and original claim 15) refer. [2.6] In decision T 354/07 [2 et seq.] the Board (in different composition) has found that as a rule conceptual methods and meta-methods of software creation do not possess technical features relevant for patentability and, therefore, cannot establish inventive step, unless in a particular case it can be shown that there is a direct causal connection with a technical effect that is relevant for the solution of a technical problem. The fact that the alleged invention could possibly serve a technical purpose or contribute to the solution of a technical problem is not sufficient for establishing its technicality (see also T 306/04 [6]). Methods and processes for information management in the context of controlling economic processes are not per se technical inventions within the meaning of A 52(1). If they do not directly and causally contribute to the technical solution of a technical problem by interacting with technical features, neither novelty nor inventive step can be based on them. (see also T 1359/08 [2] and T 1171/06 [4.5]). [2.7] The concept underlying the present invention, i.e. to standardise concept, project and planning processes by means of computer-based models, is not part of a technical solution of a technical problem. Requirements such as the possibility to re-use such models or particular substructures of a model and to combine or edit existing models or substructures do not per se have a technical orientation (Bezug) and no not make a technical contribution to the prior art, even in the context of general implementation concepts such as the use of arborescent structures or references related to the definition of models. Also, the scheme of starting from an existing model, of visualising it and of producing the new model by taking into account predefined conditions does not confer any concrete technical relevance. [2.8] This is what distinguishes the present case from decisions T 1351/04 and T 1227/05 cited by the appellant, because in these decision the Board could acknowledge a technical and inventive contribution of the respective claimed subject-matter to the prior art. [2.9] In the present case only the use of technical means in the computer-based implementation of the claimed method can make a technically relevant contribution to the prior art, i.e. the storage of data in a first and at least 1039 | 3398
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K’s Law – The ebook
one further memory, the representation of the predefined project reference model on a display device and the limitation of the access path to the “at least /one/ further memory by means of a preceding access to the first memory” (see claim 1 of the main request). [2.10] According to the appellant, the use of several memories in the context of re-usable data makes an inventive contribution. The Board cannot endorse this argument, be it only because, according to the description […] there can be several logical memories, which is an embodiment where this feature would be automatically fulfilled when different data are stored. But in the present context even the (hypothetical) use of several physically different memories appears to be an obvious technical option that does not result in particular advantages when the method is carried out. [2.11] Moreover the use of a display device for representing relevant data structures, such as models or other information, is not something that would surprise the skilled person, even less so within the framework of complex application programs in the field of project management. [2.12] Finally the claimed exclusive access to the further memories by means of a preceding access to the first memory is already suggested by the arborescence of the model because, according to the invention, the classification elements of higher rank are stored in the first memory. The effect referred to by the appellant, that this feature allowed the system to know at any time to which semantic context the corresponding requested information belonged may be an important feature of the method on the meta-level of abstract model generation, but it does not make any concrete contribution to a technical solution of a technical problem. [2.13] The appellant has invoked the particular advantage of the invention consisting in the fact that it allows to configure models for complex processes in an efficient way. This would make it possible to precisely understand changes of the model and to re-use subcomponents of the model across projects (projektübergreifend). However, these advantages and features of the invention at best are the result of the abstract concept of providing a configurable standardisation model; they do not have any direct causal connection with a concrete technical solution to a problem. [2.14] The appellant also pointed out that the invention allowed to configure complex systems in real time. It made it possible to immediately and simultaneously carry out, administrate and manage changes of configuration, without any loss of time and without requiring the prior use of data processing specialists, across all projects and systems concerned. Such performances cannot be claimed for the invention be it only because the invention is not a concrete system but is directed at generating an abstract standardisation model on a meta-level. The hypothetical possibility of developing a model that is based on the claimed method, allowing to promptly configure a complex target system is not sufficient and does not constitute an indication that the claimed method as such makes an inventive contribution to the prior art. [2.15] Therefore, the method according to claim 1 of the main request does not comprise any feature that could make a contribution to the prior art beyond an obvious implementation of a computer. Thus the requirement of inventive step is not fulfilled. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1034/08 – Abbreviations
K’s Law – The ebook
T 1034/08 – Abbreviations 8 Sep 2012
This decision contains an interesting paragraph dealing with the admissibility of the opposition: [1] A natural or legal person filing an opposition must be identifiable at the latest at the end of the opposition period. The notice of opposition was filed on behalf of GSK Biologicals SA, a legal entity having its place of business in Belgium. The notice of appeal was filed on behalf of GlaxoSmithKline Biologicals SA. Both GSK Biologicals SA and GlaxoSmithKline Biologicals SA have the same address. In principle, the use of an abbreviation instead of the full name of a legal entity does not render an opposition inadmissible, as long as the party’s identity can be established. In the view of the board there remains no reasonable doubt that the abbreviation GSK stands for GlaxoSmithKline. In this context, reference is made to the Certificate of the associated notaries Vroninks & Rickers of 27 February 2012, submitted by the appellant-opponent with letter dated 29 February 2012, according to which the Belgian Company Law allows the co-existence of more than one company name, one being the primary name and the others being(s) the alternative name(s). Said Certificate further indicates that GlaxoSmithKline Biologicals, which is the sole primary name, may be abbreviated to GSK Biologicals. The board concludes therefrom that GSK Biologicals does not constitute an incorrect designation of the opponent. The board further concludes that the opposition and the appeal were filed by the same legal entity. As a consequence, both the opposition and the appeal filed by the appellant-proprietors are admissible (R 77 and R 101). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1817/08 – No Public Access?
K’s Law – The ebook
T 1817/08 – No Public Access? 7 Sep 2012
The patent proprietor filed an appeal after the Opposition Division (OD) had revoked its patent for lack of novelty over document E3, a PhD thesis dated September 29, 1995, about two months before the priority date of the patent (November 21, 1995). The Board found that E3 had not been available to the public in due time: Public availability of E3 [3.1] The former opponent had argued in the notice of opposition that E3 was made available to the public on 27 September 1995. The former opponent referred to the fact that the first page of E3 reads: “Soutenue le 27 Septembre 1995 devant le jury composé de ...” and that presentations of doctoral theses were accessible to the public […].
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T 1817/08 – No Public Access?
K’s Law – The ebook
[3.2] Together with the statement setting out the grounds of appeal the appellant provided a fax from the library of the University of Paris 12 Val-de-Marne as evidence indicating that E3 was signalled to the public in June 1996, i.e. after the priority date of the patent. [3.3] It is therefore not apparent from the file whether E3 as a whole was (or which parts were) presented to a public audience on 27 September 1995. It is also not apparent whether the members of the jury were obliged to maintain secrecy or not. Thus it is not established that E3 was made available to the public before the date indicated in the library fax. [3.4] The former opponent acknowledged that he could not prove a publication date of E3 before the priority date of the opposed patent and withdrew the opposition […]. [3.5] Although a board of appeal (and equally an OD) has an obligation under A 114(1) EPC 1973 to investigate matters of its own motion, that obligation does not extend as far as investigating an allegation of prior public use or a prior oral disclosure, where the party who formerly made that allegation has withdrawn from the proceedings and it is difficult to establish all the relevant facts without his co-operation (cf. decision T 129/88). Following this approach the board sees no need to pursue this matter of its own motion. [3.6] Accordingly, the board finds that the public availability of E3 before the priority date of the patent in suit is not proven. Hence, E3 is not part of the state of the art. [3.7] It follows from the above that the decision of the OD with respect to lack of novelty of claim 1 according to the second auxiliary request in view of E3 cannot be upheld. Remittal [4.1] Thus the appeal is allowable. However, the opponent in its notice of opposition had based its objections on documents other than E3. These objections were not the subject of the decision under appeal or of the appeal proceedings. 1043 | 3398
T 1817/08 – No Public Access?
K’s Law – The ebook
[4.2] In this situation, the board considers it appropriate to exercise its discretion pursuant to A 111(1) EPC 1973 to remit the case to the first instance for further prosecution on the basis of the appellant’s new main request and of its new first to third auxiliary requests. Since the patent had been revoked and although the opposition has been withdrawn in the meantime, the opposition division will have to examine whether the patent and the invention to which it relates according to the amended requests meet the requirements of the EPC. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 853/10 – A Limited Statement
K’s Law – The ebook
T 853/10 – A Limited Statement 6 Sep 2012
This is an appeal against the revocation of an opposed patent by the Opposition Division (OD). The OD found in its decision that claim 1 according to then pending main and first auxiliary requests lacked clarity and that the subject-matter of independent claim 12 according to the then pending second auxiliary request lacked novelty, inter alia, over document D3. Before the Board, the patent proprietor filed a new main request corresponding to the second auxiliary request but which did not contain claim 12 any more. The patent proprietor complained about the way in which the first instance proceedings had been handled:
after the amended claims according to the main request and the first auxiliary request had been found to lack clarity, the OD gave it a last opportunity to file a new request; the claims of the then filed second auxiliary request were found to comply with the requirements of A 84, A 123 and A 83; however, the opponents raised novelty objections against claim 12, which corresponded to claim 17 as granted; these novelty objections raised had not been submitted previously in writing and, in fact, the OD had communicated in the summons to oral proceedings (OPs) its provisional opinion that the claimed subject-matter was novel over the cited prior art; after an interruption for deliberation, the Chairman of the OD informed the parties that further amendments would not be accepted, that claim 12 lacked novelty and that therefore the patent was revoked; the OD thus did not give the patent proprietor a further opportunity to file a new request not containing any longer the objected claim 12, which request had been already prepared during the interruption; this represented a violation of the right to be heard and a substantial procedural violation; since the patent proprietor had to file an appeal because of the OD’s decision not to give a further opportunity to amend the claims, it was equitable to reimburse the appeal fee in accordance with R 103(1)(a).
In what follows the Board dealt with the alleged substantial procedural violation and its consequences: [1.1] It is not disputed and it results from the minutes of the OPs of 4 February 2010 before the OD that
the patent proprietor was allowed to submit three new requests; after the discussion on the clarity of the first auxiliary request the OD gave the patent proprietor a last opportunity to file a new request; the claims of the then filed second auxiliary request were found to comply with the requirements of A 84 EPC (1973), A 123 and A 83 EPC (1973); however, the opponents raised new novelty objections, which had not been submitted previously in writing, against claim 12, corresponding to claim 17 as granted; the patent proprietor had ample time to discuss these new facts and had no difficulty in discussing the objections raised; the patent proprietor did not ask for the possibility of submitting further requests and did not inform the OD that it intended to prepare an amended request in order to overcome the raised novelty objections before the proceedings were interrupted by the chairman for deliberating on the novelty of the second auxiliary request; after an interruption for deliberation, the Chairman of the OD informed the parties that claim 12 lacked novelty and that therefore the patent was revoked.
[1.2] The admissibility of the new novelty objections has not been challenged by the patent proprietor. Moreover, as already explained above, the patent proprietor had sufficient time for considering the new objections raised against its amended claims and had no difficulty in dealing with them.
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T 853/10 – A Limited Statement
K’s Law – The ebook
As regards the fact that the OD had communicated in the summons to OPs its provisional opinion that the product claims were novel over the cited prior art, the Board remarks that the opinion expressed in the summons was provisional and, consequently, subject to revision on the basis of the arguments submitted by the parties at the OPs. In fact, such a communication sent to the parties with the summons serves only as orientation for the discussion that has to take place during OPs but it has no limitative effect on the arguments which can be then presented by the parties. Under these circumstances the Board cannot recognise any procedural violation in the admission of the new novelty objections. [1.3] The [patent proprietor] submitted during the OPs before the Board that, in its recollection, the chairman, after reopening the proceedings, stated that further amendments would not be allowed, de facto depriving the patent proprietor of the possibility of filing a further amended request as a reaction to the new novelty objections raised. A confirmation of this fact cannot be found in the minutes. The [opponents] submitted in writing that, after the discussion on the clarity of the first auxiliary request, the chairman gave the patent proprietor a last opportunity to file a new request, as reported in the minutes, and stated also that no further amendments would be allowed. Therefore, the chairman’s statement concerned exclusively the attempt of the patent proprietor of overcoming the clarity objections discussed so far. Hence, it cannot be assumed that this statement had still to be considered applicable in the light of the new facts introduced into the proceedings with the novelty objections raised for the first time by the opponents against claim 12 of the second auxiliary request. [1.4] Even though the Board is convinced that it would have been a substantial procedural violation to refuse a request by the patent proprietor to submit amended claims in an attempt to overcome the new novelty objections which could not have been foreseen before OPs, the Board can rely in its judgement only on the minutes of OPs, which were not disputed by the patent proprietor (see also T 642/97 [9.3]), and on the facts agreed upon by all parties. On the basis of these undisputed facts, it does not result that the chairman stated, after reopening the OPs, that further amendments would not be allowed. Therefore, the Board can only conclude that the OD, in deciding after deliberation to revoke the patent, did not commit any substantial procedural violation. [1.5] Since the OD did not commit a substantial procedural violation, the request for the reimbursement of the appeal fee cannot succeed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 302/09 – Take ‘Em All?
K’s Law – The ebook
T 302/09 – Take ‘Em All? 5 Sep 2012
In this case the opponent had stated in its notice of opposition that the opposition concerned the patent in its entirety (“in vollem Umfang”) but had not provided any explicit arguments against claims 5 to 7. Nevertheless, the Opposition Division (OD) had considered the opposition to be against the patent in its entirety. The patent proprietor criticized this approach and cited T 737/92, which had stated, in point [2.2] of its reasons: … The legal framework of any opposition case is uniquely defined by (i) the extent to which a patent is actually opposed and (ii) the grounds (in the sense of A 100(a), (b) and (c) EPC [1973]) upon which it is opposed, whilst its factual framework is determined by the facts, evidence and arguments adduced and set out in the Notice of Opposition pursuant to R 55(c) EPC [1973]. It is thus self- evident that neither grounds not actually supported by such facts, evidence and arguments, nor claims not actually opposed (as distinct from being merely formally mentioned in the Notice of Opposition) can be properly regarded as making up the “legal and factual framework” of the opposition … However, the Board of appeal found this criticism to be unfounded: [1] The proprietor has disputed the finding in this respect of the OD by arguing, in essence, that similarly to the case of T 737/92 also in the present case it would be justified a restrictive application of the principles set in G 9/91. The Board notes, however, that all the claims of the granted patent are directed to display packs and that the opposition letter refers explicitly not only to “Anspruch 1” but also to “Abhängige Ansprüche” (i.e. to “claim 1” and to “dependent claims”). The Board notes further the undisputed fact that substantially all conceivable embodiments of the display pack defined in the granted claims 5 to 7 (which are formally not dependent from claim 1) appear also to be subject-matter of claim 1 as granted. Hence, the arguments against the patentability of the “dependent claims” that are given in the grounds of opposition, appear to the Board possibly intended to apply to the claims 2 to 7, independently as to whether these latter are explicitly formulated as dependent from claim 1 or not. The Board finds that these facts render the present case substantially different from that ruled in T 737/92 (wherein only arguments against process claims and not against composition claims were given) and that they do not justify an interpretation to the contrary of the explicit statement in the first paragraph of page 1 of the opposition letter that the opposition was made against the patent “in vollem Umfang” (in its entirety). Hence, the Board concurs with the OD that the extent of the opposition embraces all granted claims. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1262/04 – Of Mice And Men
K’s Law – The ebook
T 1262/04 – Of Mice And Men 4 Sep 2012
This is an appeal against the refusal of an application by the Examining Division. Independent claims 1 and 8 to 10 of the main request before the Board read: 1. A method for detecting tumour cells in a living mouse model of human disease, said method comprising: (a) providing a living, mouse comprising tumour cells, said tumour cells comprising a heterologous genetic construct encoding at least one light generating protein; (b) placing the mouse in the detection field of a photodetector device; (c) maintaining the mouse within the detection field of the photodetector device; and (d) measuring through opaque tissue, photon emission from said cells with said photodetector device, to detect said tumour cells. 8. A method for identifying a therapeutic compound effective to inhibit the growth and/or metastatic spread of a tumour in a mouse model of human disease, said method comprising: (a) administering tumour cells labeled with or comprising a light-generating moiety to groups of experimental and control living mice; (b) treating the experimental group with a selected compound; (c) localizing the tumour cells in mice from both groups by measuring, through opaque tissue, photon emission from the light-generating moieties associated with the tumour cells with a photodetector device; and (d) identifying the compound as therapeutic if the compound is able to significantly inhibit the growth and/or metastatic spread of the tumour cells in the experimental group relative to the control group. 9. A method for identifying a therapeutic compound effective to inhibit the growth and/or metastatic spread of a tumour in a mouse model of human disease, said method comprising: (a) administering eukaryotic tumour cells comprising a heterologous genetic construct encoding a light generating protein to experimental and control groups of living, mice; (b) treating the experimental group with a selected compound; (c) localizing the tumour cells in mice from both groups by measuring, through opaque tissue, photon emission from light-generating proteins associated with the tumour cells with a photodetector device; and (d) identifying the compound as therapeutic if the compound is able to significantly inhibit the growth and/or metastatic spread of the tumour cells in the experimental group relative to the control group. 10. A method for identifying a therapeutic compound effective to inhibit the growth and/or metastatic spread of a tumour in a mouse model of human disease, said method comprising: (a) administering eukaryotic tumour cells comprising a heterologous genetic construct encoding a light generating protein to experimental and control groups of living mice; (b) treating the experimental group with a selected compound; (c) measuring photon emission through opaque tissue from mice of both groups with a photodetector device; and (d) identifying the compound as therapeutic if the compound is able to significantly inhibit the growth and/or metastatic spread of the tumour cells in the experimental group relative to the control group. The question arose whether this request complied with A 53(a): [13] Independent claim 1 relates to a method for detecting tumour cells in a living mouse model of human disease which includes, inter alia, the step of providing a living mouse comprising tumour cells which comprise a heterologous genetic construct encoding at least one light-generating protein. Dependent claim 6 specifies that the mouse may be a transgenic mouse comprising tumour cells […]. While such a method does not directly embrace the step of introducing the tumour cells into the mice, it presupposes, however, this step. Independent 1048 | 3398
T 1262/04 – Of Mice And Men
K’s Law – The ebook
claims 8 to 10 relate to methods for identifying therapeutic compounds which include administering tumour cells to experimental and control groups of living mice. These tumour cells are labelled with or comprise a lightgenerating moiety or a heterologous genetic construct encoding a light generating protein. Independent claims 8 to 10 also include a monitoring step concerning the growth and/or metastatic spread of the tumour cells in the experimental group relative to the control group. [14] The board considers that in view of the above-described character of the claimed subject-matter an examination of whether or not the patent exclusion contained in A 53(a) applies is required. The provision stipulates that European patents shall not be granted in respect of inventions the commercial exploitation of which would be contrary to “ordre public” or morality. R 28(d) furthermore specifies that processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal shall not be patented in accordance with A 53(a). [15] Earlier decision T 315/03 has dealt extensively with the interpretation of A 53(a) and R 23d(d) EPC 1973 (corresponding to R 28(d)) in the context of an invention which concerned the production of transgenic animals having an increased probability of developing neoplasms by the introduction of an activated oncogene sequence into the genome of a rodent. It came inter alia to the following conclusions:
R 23d(d) EPC 1973 applied to a case which was pending on the date when the rule took effect.
In cases falling within R 23d(d) EPC 1973, a further or additional objection under A 53(a) 1973 based on the balancing test developed in decision T 19/90 could be raised.
A case not falling within one of the categories listed in R 23d EPC 1973 had to be considered further under A 53(a) 1973.
[16] The method according to independent claims 8 to 10 include the administration of specifically prepared tumour cells (which may be genetically modified) to living mice and the monitoring of the growth and/or metastatic spread of these tumour cells. The facts of the present case are thus similar to those underlying decision T 315/03, in that the claimed method involves the deliberate generation of tumours in animals. Nevertheless, a substantial difference is that, in contrast to the invention dealt with in decision T 315/03, the methods of claims 8 to 10 do not involve the modification of the genome of the animals themselves. Therefore, the patent prohibition of R 28(d) which concerns processes for modifying the genetic identity of animals cannot be applied directly in respect of the subject-matter of claims 8 to 10. In respect of this subject-matter the question thus arises whether in the present case the test of R 28(d) should be applied per analogiam and/or whether the balancing test developed in decision T 19/90 and endorsed by decision T 315/03 should be applied under A 53(a). In fact, as explained in more detail in decision T 315/03 [10.5-10], these two tests are not wholly identical. The board considers however that there is no necessity to decide in the present case whether both tests have to be applied cumulatively or which of the two tests has to be applied since both tests lead here to the same result […]. [17] Independent claim 1 of appellant’s request includes the step of providing a living mouse comprising tumour cells which comprise a specific heterologous genetic construct. While the claim does not specify how the mouse which is to be provided was generated, claim 6 which is dependent on it specifies that the mouse may well be a transgenic mouse. It thus appears that certain embodiments of the subject-matter of claim 1 presuppose preceding processes for modifying the genetic identity of animals and therefore have to be assessed under R 28(d). Nevertheless, the test developed in T 19/90 is arguably also of relevance in respect of these embodiments […] and in respect of those embodiments of claim 1 not relating to the provision of transgenic mice […]. [18] Accordingly the board examines whether the subject-matter of the independent claims 1 and 8 to 10 complies with both the tests as laid down in R 28(d) and as developed in decision T 19/90 under A 53(a). [19] The board is convinced that the deliberate introduction of tumour cells into mice (which is either an explicit step of the claimed methods or is presupposed by them), in particular with the aim of monitoring their growth or metastatic spread, is most likely to cause suffering to these animals. This is in line with the view taken in decision T 315/03 concerning the deliberate introduction of an activated oncogene into the genome of rodents. [20] The wording of the claims and the description of the patent application make it abundantly clear that the claimed methods are performed in the framework of cancer research. The main purpose is the identification and 1049 | 3398
T 1262/04 – Of Mice And Men
K’s Law – The ebook
study of (putative) anti-tumour compounds, thus offering the prospect of a valuable contribution to medical research. [21] Furthermore, the appellant submitted several documents in order to support its view that the methods of the claimed invention are likely to produce a substantial medical benefit to man or animal. [21.1] Document D19 is a declaration by Prof. Linda C. Cork, stating that a significant benefit of the optical imaging technology was enabling scientists to observe mechanisms of action or cascading events within the animal. These events would not otherwise be detected using conventional imaging methods. The technology was particularly important in drug studies where biological pathways involving multiple tissues and organs interacted with the drug in a manner that cellular systems or other in vitro systems did not. Prof. Cork expressed the opinion that the developed non-invasive imaging methods could greatly accelerate human medical research, including drug discovery efforts. [21.2] In document D21, a declaration by Prof. Robert D. Cardiff, it is stated that from the viewpoint of cancer research, the use of in vivo optical imaging in animal studies had been a tremendous biomedical advance. In particular, the use of luciferase as a marker of biological function was a rapid and accessible modality that had already made a significant impact on drug discovery. Since the biological process could be observed within the animals, fewer animals were required for each study with far less suffering during their lifetimes as compared to traditional approaches to animal models of human disease. Any technology that minimized the number and suffering of animals were to be encouraged. [21.3] In document D22 Prof. Glen Otto declares that the nature of the experiments described in the application was such that the potential medical benefits of the experimentation far outweigh any potential distress caused to the animals. Whereas most drug discovery efforts required death of one or more animals at each time point, the experiments described in the application were non-invasive and allowed sequential data collection from smaller numbers of animals. [22] In view of the above, the board concludes that the claimed methods of the invention are at least likely to be of substantial medical benefit to man, thus fulfilling the criterion provided for in R 28(d) for escaping the patent exclusion. Likewise, when applying the balancing test as developed in T 19/90, the board considers that this likelihood of substantial medical benefit demonstrates the invention’s usefulness to mankind in human cancer research. The board notes in addition that the appellant’s credible assertion that the claimed methods lead to a reduction of the number of experimental animals in cancer research is a further relevant factor in this balancing exercise. [23] The board notes lastly that the appellant has restricted the claimed methods to their implementation in mouse models of human diseases, i.e. to conventionally accepted experimental animals. Since the claims do not embrace any other animal, the board considers that they do not cover animals for which the tests provided in R 28(d) and developed by decision T 19/90 might arguably not be complied with. Accordingly, in view of this restriction, the appellant’s arguments previously submitted in order to defend a broader version of the claim requests do not require to be addressed by this board. [24] The board concludes that the requirements of A 53(a) are met. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1957/10 – In-House Problems
K’s Law – The ebook
T 1957/10 – In-House Problems 3 Sep 2012
The patent proprietor filed an appeal against the revocation of its patent by the Opposition Division (OD). In its notice of appeal, the patent proprietor requested the Board to reject the opposition – which had been filed by LuK Lamellen und Kupplungsbau Beteiligungs KG (“LuK KG”) – as inadmissible. It argued that the European Patent Register (EPR) cited LuK Lamellen und Kupplungsbau GmbH (“LuK GmbH”) as the opponent. In distinct opposition proceedings, the opponent had declared that LuK GmbH had ceased to exist 10 years ago. Shortly after the appeal had been filed, the opponent filed an excerpt from the commercial register according to which the commercial activities (Handelsgeschäft) of LuK KG had been transferred to LuK Vermögensverwaltungsgesellschaft mbH (“Luk VmbH”) on June 30, 2010 and that LuK VmbH had transferred all European IP rights (Schutzrechte) and all pending European applications to Schaeffler Technologies GmbH & Co. KG (“Schaeffler”). The Board did not find the opposition inadmissible: *** Translation of the German original *** [2] The requests of the [patent proprietor] to dismiss the opposition as inadmissible and to deny the opponent status to the respondent cannot be granted. The fact that the EPR wrongly cites LuK GmbH as opponent is irrelevant because parties are not responsible for possible errors in the EPR which they have not caused. It is also irrelevant that the [opponent] allegedly declared in other proceedings that LuK GmbH had ceased to exist 10 years ago, all the more because it cannot be determined any more whether such a statement has indeed been made. The opposition was filed by LuK KG. In a written submission dated March 29, 2011, received on March 31, 2011, the representative of this company informed the Office that it had been dissolved as from June 30, 2010 and that its commercial activities – including all IP rights and applications – had been transferred by means of a merger (Anwachsung) to LuK VmbH. Excerpts from the commercial register of the Mannheim District Court (Amtsgericht) were also submitted, as well as a copy of a document according to which LuK VmbH had transferred all European IP rights as well as all pending European applications to Schaeffler as from July 1, 2010. According to the [patent proprietor] the opponent status now belonged to [Schaeffler] because this status was not freely transferable. Rather, according to the case law of the Enlarged Board of appeal (EBA), it could only be transferred or assigned to a third party as part of the opponent’s business assets together with the assets in the interests of which the opposition was filed (G 4/88). The [patent proprietor] was of the opinion that the opponent status was equivalent to an IP right and, therefore, as from July 1, 2010, belonged to Schaeffler to which all IP rights of LuK VmbH had been transferred. Moreover, the [patent proprietor] cited decision T 19/97 according to which “a transfer of the party status is admissible at any stage of pending opposition appeal proceedings if it is made together with the transfer of the business activities (Geschäftsbetrieb) or that part of the company in whose interest the opposition was filed.” According to the [patent proprietor] the opposition was filed in the interest of the part of the company that was transferred to Schaeffler because this company deals with IP related problems (Fragen des geistigen Eigentums). The Board does not agree with this opinion of the [patent proprietor] because an opposition is not an IP right but rather the attempt to annihilate IP rights of another person by means of the revocation of a granted patent. Consequently, the agreement between LuK VmbH and Schaeffler dated July 1, 2010, has no influence of the question which legal person is to be considered to be the opponent in the present proceedings. Until June 30, 2010, the opponent status belonged to the business activities of LuK KG. After its dissolution all its business activities – including the opponent status – were transferred to LuK VmbH. This transfer of the opponent status complies with the requirements set forth by the EBA in its decision G 4/88. The transfer of all IP rights of LuK VmbH to another – apparently associated – company is an in-house (konzernsintern) problem and does not 1051 | 3398
T 1957/10 – In-House Problems
K’s Law – The ebook
imply that the opposition and the appeal were filed in the interest of the part of the company that was transferred to Schaeffler. Rather, what is decisive is the fact that the commercial activities of the dissolved LuK KG company were transferred to LuK VmbH as from June 30, 2010. As the legal situation is clear, it is not necessary to refer the questions submitted by the [patent proprietor] to the EBA. As a matter of fact, there is no doubt regarding the identity of the opponent and respondent. The decision also contains an interesting passage on the admissibility of the second auxiliary request: [7] The second auxiliary request was only filed during the appeal proceedings although it could have been filed during the first instance proceedings. Therefore it is within the discretion of the Board to admit this request or not to do so (see Article 12(4) RPBA). The second auxiliary request comprises three independent claims. The torsional vibration damper according to claim 1 is characterised by the section of the slide ring. Claim 2, however, defines torsional vibration dampers by the fact that the primary sheet comprises noses. Claim 3 is directed at still another subject-matter by indicating that the secondary mass is made of grey iron. It is true indeed that it is not possible in appeal proceedings to divide the patent by filing a divisional application. However, in the present case the three independent claims are not directed at three alternative embodiments of an invention. Rather, they are directed at three different and uncorrelated aspects. Moreover, each of these lines of defence constitutes an entirely new case because none of the independent claims was had been presented to the OD for decision. As a consequence this request runs contrary to the main purpose of inter partes appeal proceedings, i.e. to give the losing party the opportunity to contest the decision of the OD on substantive grounds. Under these circumstances the second auxiliary request was not admitted into the proceedings. To read the whole decision (in German), click here. The file wrapper can be found here.
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Interpretational Spotlight: “Epitope”
K’s Law – The ebook
Interpretational Spotlight: “Epitope” 1 Sep 2012
Claim 1 of the main request before the Board read: An antibody binding exclusively to a Prp Sc isoform of the prion protein and recognizing the epitope having the three dimensional conformation provided by the protein sequence Cys-Ile-Thr-Gln-Tyr-Glu-Arg-Glu-Ser-Gln-Ala-Tyr-Tyr Sc
of the PrP isoform of the prion protein while not binding to the PrPC form, obtainable by a method comprising the step of immunising an animal with a peptide consisting of the amino acid sequence Cys-Ile-Thr-Gln-Tyr-Glu-Arg-Glu-Ser-Gln-Ala-Tyr-Tyr or Cys-Ile-Thr-Gln-Tyr-Gln-Arg-Glu-Ser-Gln-Ala-Tyr-Tyr. When discussing the novelty of this claim, the Board had to face an interpretational problem: [1] Claim 1 relates to antibodies which are inter alia defined by the feature “and recognizing the epitope having the three dimensional conformation provided by the protein sequence Cys-Ile-Thr-Gln-Tyr-Glu-Arg-Glu-SerGln-Ala-Tyr-Tyr of the PrPSc isoform of the protein”. There is disagreement between the parties about the meaning of this feature, i.e. whether or not it is to be interpreted as meaning that the claimed antibodies bind exclusively to this epitope. [2] Generally the term “epitope” is used to describe a part of a molecule to which the antigen-binding site of an antibody attaches. [2.1] In the case of a protein, an epitope may be formed by a continuous stretch of amino acids. These epitopes are sometimes referred to as “linear” epitopes. However, although they are denoted as “linear”, these epitopes may also adopt a specific three-dimensional conformation as, for example, the epitope of the PrP Sc protein recited in claim 1. [2.2] Epitopes may also be formed by amino acids stemming from different parts of a protein, which are however brought into proximity by the folding of the protein into its three dimensional structure. These epitopes are often referred to as “conformational” epitopes. [3] In the case of a conformational epitope, a distinction is made between the denomination of the parts of a protein contributing to the epitope and the epitope as a whole. This is for example apparent from documents D1 and D2 (emphasis added): “whereas three distinct peptide sequences were found to form the 15B3 epitope” (D1 […]); “[t]he polypeptide segments of the 15B3 epitope ...” (D1 […]); “[m]apping of the 15B3 epitope onto the NMR structure of the C-terminal domain of mouse PrP (ref. 12) reveals close proximity of the peptide segments 2 and 3, but a much larger spatial separation of the segment 1 ...” (D1 […]); “recognizes three discontinuous linear polypeptide segments that are hypothesized to form a conformational epitope on the surface of prions” (D2 […]); “it was assumed that the epitope was indeed conformational and that the three polypeptide segments represented partial epitopes thereof” (D2 […]). Hence, if an epitope is formed by distinct parts of a protein, the parts are usually not denoted as “the” epitope. [4] It is also clear from the description of the patent that the epitope recognized by the claimed antibodies is a “linear” epitope […] as opposed to a conformational epitope […]. It is, for example, stated in paragraph [0022]: “The antibodies are directed to the region comprised by amino acids 190 to 214 of PrP Sc, more preferably to the sequence from about 202 to about 214 of PrP Sc.” [5] The board is therefore satisfied that the skilled person would understand the feature in claim 1 “and recognizing the epitope having the three dimensional conformation provided by the protein sequence Cys-Ile1053 | 3398
Interpretational Spotlight: “Epitope”
K’s Law – The ebook
Thr-Gln-Tyr-Glu-Arg-Glu-Ser-Gln-Ala-Tyr-Tyr of the PrPSc isoform of the protein” to mean that the claimed antibodies bind to a protein segment which is built by the indicated linear sequence and only that sequence. Hence, by virtue of the first part of claim 1 as just quoted, the claimed antibodies are defined as binding exclusively to “the epitope having the three dimensional conformation provided by the protein sequence Cys-IleThr-Gln-Tyr-Glu-Arg-Glu-Ser-Gln-Ala-Tyr-Tyr of the PrPSc isoform of the protein”. In the board’s view the process-feature in claim 1 (see section II above, “obtainable by ....”) provides the same definition. To download the whole decision (T 30/09), click here. The file wrapper can be found here.
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T 1082/08 – Be Prepared
K’s Law – The ebook
T 1082/08 – Be Prepared 31 Aug 2012
This is an appeal of the patent proprietor against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. Claim 1 of the main request before the Board was identical to claim 1 as granted and read (in English translation): A document of value (Wertdokument) having at least one authenticity feature in the form of a luminescent substance based on doped host lattices, characterized in that the host lattice is doped with at least one chromophore with the electron configuration (3d)². The OD had found the subject-matter of this claim to be insufficiently disclosed for it to be carried out by a person skilled in the art (A 100(b)). The Board had something to say on this matter: *** Translation of the German original *** Substantiation of the ground of opposition [2.1] The [patent proprietor] has submitted that the ground of opposition under A 100(b) EPC 1973 had been insufficiently substantiated and, consequently, was inadmissible. The ground of opposition under A 100(b) EPC 1973 has been introduced into the proceedings by the OD […]. Grounds of opposition or legal bases (Rechtsgrundlagen), respectively, which were subject of the impugned decision, as in the present case, are also subject of the appeal proceedings, cf. T 275/05 [1]. Therefore, it is not to be examined whether the OD was right to consider this ground of opposition to be sufficiently substantiated. Allowability of the ground of opposition [2.2] The [opponent] has essentially cited one reason why it believed that the disclosure of the invention was insufficient: a good portion of the claimed luminescent substances were not stable or did not have the desired luminescence properties allowing to authenticate [documents]. According to A 100(b) EPC 1973 the European patent has to disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. According to the established case law of the Boards of appeal this [requirement] is only fulfilled if the invention that is defined in the independent claim can be carried out by the skilled person, using his general knowledge as well as the indications provided in the patent specification, over the whole claimed domain, without undue burden. Here the term “invention” means the claimed invention. Therefore, it has to be examined what precisely is encompassed by the “whole claimed domain”. Independent claim 1 of the main request concerns a document of value having at least one authenticity feature in the form of a luminescent substance based on host lattices doped with at least one chromophore with the electron configuration (3d)². Therefore, the Board is of the opinion that the claim cannot be interpreted in such a manner that it comprises all imaginable (denkbar) dopings with the electron configuration (3d)² in combination with all imaginable host lattices. Rather, the dopant must be capable of being incorporated into the host lattice and the host lattice that has been doped accordingly must have luminescent properties and must be capable of being introduced into documents of value. The [patent proprietor] has submitted that the corresponding skilled person was a person the professional activity of whom was to ensure the authenticity of documents of value, in particular using luminescent substances. As a consequence, this person had to have technical knowledge in the technical field of production of documents of 1055 | 3398
T 1082/08 – Be Prepared
K’s Law – The ebook
value as well as in the technical field of luminescent substances. The Board agrees. The Board expects this skilled person to be capable of deciding which transition metal ions with the electron configuration (3d)² he can incorporate into which host lattices, in which concentration or grain size, respectively, in order to obtain luminescent substances that can be introduced into documents of value (e.g. by means of printing ink). Therefore, the Board reaches the conclusion that the invention claimed in claim 1 of the main request is disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The Board finally found claim 1 to lack inventive step. The opponent requested the Board to revoke the patent, which was obviously impossible in view of the prohibition of reformatio in peius. The corresponding paragraph of the decision is interesting because the opponent tried to overcome this prohibition by means of an original argument. [6.1] The Enlarged Board of appeal has explained in its decisions G 9/92 and G 4/93 [14] that the opponent who has not filed an appeal cannot validly request the revocation of the patent after the expiration of the time limit for filing an appeal. Therefore, the main request of the [opponent] has to be dismissed as inadmissible. [6.2] Also, the submission of the [opponent] according to which the [patent proprietor] had filed its appeal on the last day before the expiration of the time limit for filing the appeal and that, as a consequence, it had not had the opportunity to respond by filing an appeal itself, does not alter this assessment. As a matter of fact “if one opposing party does not win a case outright, the other opposing parties must be prepared for it to file an appeal.” (see G 9/92 and G 4/93 [11]). To read the whole decision (in German), click here. The file wrapper can be found here.
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T 1070/10 – Technical Indeed
K’s Law – The ebook
T 1070/10 – Technical Indeed 30 Aug 2012
Headnote 2 of G 1/93 reads: A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed in the sense of A 123(2). The ground for opposition under A 100(c) therefore does not prejudice the maintenance of a European patent which includes such a feature. As we have already seen in earlier posts (e.g. here), the Enlarged Board probably thought of disclaimers, but as it did not use this term, applicants and patent proprietors sometimes argue that their claims do not violate A 123(2) because the feature allegedly violating A 123(2) does not provide a technical contribution. I am not aware of any case where this approach was successful, and the present decision is not such a case either. Claim 1 of the main request before the Board read: “A sprayhead comprising: a support comprising a base (2) and a top (3), the base (2) being mountable on a fluid container and the top (3) being mounted on the base (2) and rotatable relative thereto; a passageway (14), mounted on and extending within the support [feature A] that is connectable to a switchable source of fluid and incorporating a fluid outlet (12), the passageway (14) being moveable between a first, non- operative position and a second position in which it switches the source to supply fluid to the outlet (12) via the passageway (14); and a member (17) secured relative to the support being moveable between a first nonoperative position in which the member (17) is held in a raised position and supported by a cam means (11,22) on the support and a further position in which the member can be depressed whereby the passageway (14) may switch the source to supply fluid; characterized in that the base (2) and top (3) provide complementary cam means (11,12), the member (17) is selectively lockable by a lock and held in a raised position [feature B] in its first non-operative position thereby preventing the member from urging the passageway to its second position unless the lock is released, the lock comprising the complementary cam means (11,12), such that movement of the top (3) relative to the base (2) moves the corresponding cam means (11,22) relative to each other between a first position of the cam means in which the member (17) is in its said first non-operative position and a second position of the cam means in which the member (17) is in its said further position and the top (3) having a body portion that has an opening (24) for cooperation with the fluid outlet (12) and a section that can face the fluid outlet to completely close it by relative rotation of the top to the base [feature C]. (emphasis added by the Board) The decision inter alia contains a discussion of whether the addition of feature A complies with the requirements of A 123(2): [2.2] The appellants do not contest that feature A was not disclosed in the application as originally filed, i.e. in the originally filed grandparent application. The appellant, though mentioning G 1/03, has clearly relied upon the decision G 1/93 and argued that feature A merely excludes protection for part of the subject-matter of the claimed invention as covered by the application as filed. Thus, the opposition ground according to A 100(c) would not hold against the subject-matter of claim 1 disclosing said amendment. The Board considers that feature A relates to the arrangement/positioning of the passageway and that accordingly it relates to a technical teaching specifying the sprayhead, namely its construction and the positioning of the passageway in the support. Thus, feature A has obviously a technical meaning restricting at the same time the scope of protection defined in claim 1.
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T 1070/10 – Technical Indeed
K’s Law – The ebook
The appellants’ argument that the “exact nature of the spray passageway is not in the least involved in the claimed invention” cannot be followed by the Board. In the originally filed claim 1 of the grandparent application (and of the present divisional application) the claimed passageway is mounted on the support, is connectable to a switchable source of fluid, incorporates a fluid outlet, and is moveable between a first, nonoperative position and a second position in which it switches the source to supply fluid to the outlet via the passageway. Feature A defines now in addition to the above- claimed technical characteristics of the passageway the further technical characteristic that the passageway extends, i.e. is positioned, within the support. The appellants argued further that the feature in question certainly did not create an inventive selection in the sense of G 1/93. However, according to decision G 1/93 [16] such a selection invention is only mentioned as a “typical example” of when such an added feature could give rise to an unwarranted advantage to the patent proprietor. This does not exclude other examples of an unwarranted advantage. For instance, during the life span of the patent it may occur that further prior art becomes known, for which this technical feature could prove to be of advantage to the patent proprietor, either in distinguishing the invention (further) from the prior art, or by better setting off the invention in the discussion of inventive step. For this feature that is not unimaginable. For this reason the Board is of the opinion that G 1/93 cannot find application. Consequently, it seems that feature A cannot be regarded as a mere limitation of the protection but it has to be considered as subject-matter which extends beyond the content of the application as originally filed. To download the whole decision, click here. The file wrapper can be found here.
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T 908/09 – No Priority
K’s Law – The ebook
T 908/09 – No Priority 29 Aug 2012
This is an appeal against the revocation of the opposed patent by the Opposition Division. Claim 1 of the main request before the Board read (in English translation): Water-miscible cooling lubricant concentrate, which contains natural or synthetic mineral oils, emulsifiers, anticorrosive agents, solubility promoters, preservatives, metal inhibitors and other standard additives, characterized in that it has a pH value between 7.0 and 7.5 after dilution to an aqueous solution containing between 2 and 25 percent by weight and further contains as a preservative and an anti-corrosive agent a mixture containing (a) at least one substance selected from the group consisting of ethoxylated fatty acids, propoxylated fatty acids, ethoxylated fatty acid alkanolamides, propoxylated fatty acid alkanolamides and reaction products of boric acid and a primary or tertiary alkanolamine as well as (b) at least one substance selected from the group consisting of carboxylic acid imides, phosphoric acid esters, thiadiazoles, isothiazolinones, imidazoles, guanidines, aromatic carboxylic acids, 3-iod-2-propinyl-carbamate and methyl urea derivatives. The question arose whether document E1 was prior art under A 54(2) or A 54(3). Therefore, the Board had to examine the validity of the priority claim: *** Translation of the German original *** [2.1.1] Document E1 is part of the state of the art under A 54(3) to the extent to which the priority of the impugned patent is valid for the claims. Otherwise, E1 is part of the state of the art under A 54(2). [2.1.2] Although the impugned decision considered the priority to be valid for the claims as granted (i.e. for the claims of the present main request), the Board has explained in its communication why it did not share this opinion. It justified this provisional opinion inter alia by pointing out that the priority document did not directly and unambiguously disclose the combination of at least one compound (a) with at least one compound (b) according to claim 1 as granted. This was all the more true as the priority document did not define the compounds (b) disclosed therein as a group of compounds belonging together (zusammengehörige Gruppe). [2.1.3] The [patent proprietor] objected that the priority document disclosed the components (a) and (b), with the exception of the carboxylic acid imides and the methyl urea derivatives. The priority document disclosed to the skilled person that at least one anticorrosive agent (a) and at least one preservative (b) had to be used. Therefore, the [patent proprietor] concluded that for the part of the subject-matter of the claims that did not concern carboxylic acid imides and methyl urea derivatives as components (b) the claim to priority had to be valid. [2.1.4] Claim 1 as granted comprises the following components other than carboxylic acid imides and methyl urea derivatives in group (b): phosphoric acid esters, thiadiazoles, isothiazolinones, imidazoles, guanidines, aromatic carboxylic acids, and 3iod-2-propinyl-carbamate. However, in the priority document, phosphoric acid esters and thiadiazoles are not cited as preservatives (b) but only as anticorrosive agents […], whereas isothiazolinones, imidazoles, guanidines, aromatic carboxylic acids, and 3-iod-2-propinyl-carbamate are classified as preservatives […]. Thus the priority document does not unambiguously assign the components (b) cited in claim 1 as granted to a specific group. Therefore, the priority document does not directly and unambiguously disclose to the skilled person to mix at least one compound (a) with at least one compound (b). Consequently, the claims of the main request do not (i.e. not even partially) enjoy the priority claimed by the impugned patent. Thus there is no effect of the priority right under A 89 and the effective date of the impugned patent with respect to the state of the art corresponds to its filing date rather than its priority date. 1059 | 3398
T 908/09 – No Priority
K’s Law – The ebook
To download the whole decision (in German), click here. The file wrapper can be found here.
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T 294/11 – Tell Me Why
K’s Law – The ebook
T 294/11 – Tell Me Why 28 Aug 2012
The present decision reminds us that it is dangerous to draft statements of grounds of appeal (SGA) containing sweeping assertions rather than dealing in detail with the objections raised by the first instance department. The appeal was directed against the refusal of an application by the Examining Division (ED) for lack of clarity (A 84) and non-compliance with A 123(2). The SGA contained the following statement regarding the ED’s finding on lack of clarity:
The Board found the appeal to be inadmissible: [2.1] A 108 in conjunction with R 99(2) requires that a SGA is filed which indicates the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based. In this respect, the jurisprudence of the boards of appeal has developed the general principle that the SGA should specify the legal or factual reasons on which the request for setting aside the decision is based (see for instance T 220/83). The arguments must be clearly and concisely presented to enable the board to understand immediately why the decision is alleged to be incorrect. [2.2] The contested decision does not contain reasons but only a reference to grounds given in the communication of 14 July 2010 of the ED. This form of decision is allowed if it is quite clear from the grounds in a previous communication which considerations played a crucial role for the responsible division when it took its decision (see for example T 234/86 [5.10]). It should not be left up to the party concerned and a board to construct the applicable reasons (see for instance T 1709/06 and T 1309/05). In the present case, it is clear from the communication dated 14 July 2010 that lack of clarity and the contravention of A 123(2) were major deficiencies of the application and that these were the reasons for the refusal.
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T 294/11 – Tell Me Why
K’s Law – The ebook
In particular, the ED’s reasoning as to lack of clarity was very elaborated. In fact, the ED identified for claim 1 on file eighteen separate aspects of lack of clarity. Although some of these aspects may be of minor importance, others apparently concern serious problems. Thus, the appellant should have explained in its statement setting out the grounds for appeal and within the time limit provided for in A 108 why the reasoning of the ED was wrong. [2.3] As far as the appellant’s SGA of 28 January 2011 addresses the ground for refusal of lack of clarity, it provides two brief observations. The first observation is an assertion that the claims on file were clear to the skilled man. They defined the subject-matter for which protection was sought whilst simultaneously being clear, concise and supported by the description. The assertion is supported by only one concrete argument which refutes the ED’s objection that it was not clear whether the steps in claim 1 were to be carried out in the order in which they are mentioned. In this respect, it is stated that it would be clearly understood by the skilled man that the steps as claimed were interdependent and had necessarily to follow since the results of one process step were essential for the operation of a subsequent process step. The second observation does not add any concrete reason why the findings in the contested decision would be wrong but constitutes a submission on the part of the appellant that, in violation of the principles of the Protocol to A 69, the ED’s comments were directed towards encouraging the applicant to narrow the claims to explicit embodiments of the present invention, without necessarily defining the present invention in a way that would provide a fair degree of protection with a reasonable degree of certainty for third parties. Thus, with the exception of one aspect, the SGA fails to explain why any of the other seventeen reasons for lack of clarity contained in the contested decision would be wrong. Consequently, it does not meet the standard for adequate substantiation. [2.4] The appellant argued in the oral proceedings that the rulings in the contested decision concerning lack of clarity were fundamentally flawed because the ED relied on the wrong test for judging clarity. Instead of properly interpreting the claims in the light of the description, as called for by the Protocol to Article 69 EPC, the division started from non-sensible interpretations of the claim definitions and arrived, on the basis of these free interpretations, at its findings of lack of clarity. In pointing to this key deficiency of the contested decision, the SGA was sufficiently reasoned. [2.5] The appellant’s submission is not convincing because it constitutes an argument in support of clarity which was not given in due time, i.e. in the SGA (R 101(1)). Besides, it is doubtful whether it could have been regarded as a sufficient reasoning because it does not address the majority of the clarity objections, which do not rely on any interpretation but directly question the meaning of the claimed definitions. [2.6] Furthermore, as far as the contravention of A 123(2) is concerned, the statement of grounds contains only the assertion that this article was not contravened. Apart from a statement concerning the claimed step of determining the velocity of the moving table, which addresses point 2.1.1 of the communication of 14 July 2010, none of the other detailed objections of the ED was dealt with. [2.7] It follows from the above considerations that the SGA filed in the present case amounts to no more than a mere assertion that the contested decision is incorrect, without stating the legal or factual reasons why that decision should be set aside, and thus does not satisfy the provisions of A 108 in conjunction with R 99(2). The appeal is therefore not admissible. To download the whole decision, click here. The file wrapper can be found here.
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T 2068/10 – Lack of support
K’s Law – The ebook
T 2068/10 – Lack of support 27 Aug 2012
This is an appeal against the refusal of the application under consideration by the Examining Division (ED). The ED raised objections under A 84 and A 123. In particular, the ED objected to the term “fixed-dried cells”, which in its opinion included also “rehydrated fixed-dried cells”. Additionally, it considered the term “active agent” to be very broad not allowing the claimed subject-matter to be distinguished from the subject-matter of the prior art. The ED also held that in the absence of experimental support as to the viability of the active agent after internalisation the claimed subject-matter lacked technical support. Claim 1 of the sole request before the Board read: Fixed-dried blood cells carrying an active agent, wherein said fixed-dried blood cells are fixed-dried platelets and wherein the active agent has been coupled to or introduced into the cells. There were three more independent claims, one directed at a pharmaceutical composition, the second at a method of making fixed-dried blood cells carrying an active agent and the third at a method of making a pharmaceutically acceptable composition comprising rehydrated fixed-dried blood cells carrying an active agent. Having found the request to comply with the requirements of A 123(2), the Board dealt with the objections regarding clarity and support (A 84): [3.1] In the decision under appeal the ED objected to the term “fixed-dried cells” in claim 1. Contrary to the Applicant’s, now Appellant’s, opinion it considered that this term also included “rehydrated fixed dried cells”, because in its opinion further treatment of the cells after having been fixed was not excluded. In support of its interpretation the ED pointed to the prior art, without in this context specifying any particular document, wherein the term “fixed-dried” and “rehydrated lyophilised” (“RL”) were allegedly used interchangeably and to the application as filed “which states on page 6 that fixed-dried blood cells are cells which have been fixed (which of course is also true for cells which have been rehydrated in a subsequent phase)”. [3.2] The Board does not agree with the ED’s findings. Claim 1 of the present main request, as was claim 1 of the main request before the ED, is directed to a product, namely fixed-dried platelets. When reading claim 1, the term “fixed-dried” suggests to a skilled person a product in a dry or water-free state. The meaning of this term therefore is clear per se. Furthermore, this meaning is confirmed in the description of the application. [… F]ixeddried blood cells are described as blood cells “which have been fixed, and additionally have had water removed therefrom ....”. In contrast, fixed-dried blood cells which have been contacted with water so that the water is taken up into the intracellular cells, are defined as “rehydrated fixed-dried blood cells” […]. The prior art as cited in the supplementary ESR and the ISR makes the same distinction between dried or lyophilised cells and rehydrated dried or lyophilised cells. An interchangeable use of the term “fixed-dried” and “rehydratedlyophilised” as argued by the ED is not apparent to the Board. In this context, the Board also notes that the term “fixed-dried” refers to dried cells which were treated with a fixation agent, while “rehydrated-lyophilised” merely refers to a freeze-dried product, which was rehydrated, but was not necessarily fixed […]. Thus, the terms cannot be considered equivalent or interchangeable. The Board acknowledges that ultimately the fixed-dried cells will have to be rehydrated before being administered to a patient and that rehydration is therefore also described in the application. However, this does not justify the conclusion that rehydrated platelets form part of claim 1 contrary to its wording. [3.3] An additional objection of the ED under A 84 was directed to the breadth of the claims. However, according to the jurisprudence of the Boards of Appeal, the clarity of a claim is not necessarily diminished by the mere breadth of a term. In the present case the ED has understood the term “active agent” as encompassing any compound with any kind of activity or function. The Board agrees with this admittedly very broad definition, which is also in line with the definition in the description of the application […]. The specific activity or function is not essential for the invention. According to the application […], active agents may encompass a wide variety of different compounds, for example RNA, DNA, proteins or peptides such as enzymes or antibodies, viruses, 1063 | 3398
T 2068/10 – Lack of support
K’s Law – The ebook
bacteria, small organic compounds, polymers, nanoparticles, having a wide variety of activity like antimicrobial, antibacterial or antiviral, blood coagulation or anti-coagulation activity, reporter or detectable activity, like radiolabels or fluorescent probes. Compounds with a different activity, for example stabilisers (trehalose, albumin) are, however, also included. Whether or not this broad definition allows the claimed subject-matter to be distinguished from the prior art, is a matter that should be dealt with by the ED in the examination of novelty, taking into account the fact that claim 1 is not directed to a rehydrated product. [3.4] The Board also does not agree with the ED’s finding of “lack of technical support” in the sense of A 84”. With lack of technical support, the ED refers to the absence of experimental results for example 5 directed to the internalisation of Ribavirin into platelets. [3.4.1] Concerning the question of support under A 84, the Board observes that according to the jurisprudence of the Boards of Appeal the expression “support by the description” means that the technical features stated in the description as being essential for the invention must be the same as those used to define the invention in the claims (see decision T 939/92 [2.2.2], T 821/96 [3.2.1]). The ED did not argue that features which are mentioned as essential in the description are missing in claim 1. Nor can the Board find any such features. Instead the ED referred to the existence of an alleged prejudice in the prior art, namely that the active agent may not be viable when platelets were subjected to fixation and that in the absence of experimental results showing that ribavirin, the active agent of example 5, is still viable this prejudice was not considered to be overcome. In other words, concerning the embodiment of internalisation, the EDs doubted that the technical problem of delivering the active agent as stated on page 2 of the application was solved. [3.4.2] However, the question whether or not this problem is indeed solved by the claimed subject-matter may be dealt with when assessing inventive step or examining sufficiency of disclosure. Moreover, the Board notes that the ED considered that support existed for embodiments where the active agent is carried on the surface of the platelets. According to the invention the internalisation of the active agent into the platelets is an alternative embodiment of the invention. There is no reason apparent to the Board why there should be any doubt as to the viability of the active agent, if it is internalised, where it is even less exposed to any fixing or cross-linking agent, instead of being carried on the surface of the platelet, and the decision under appeal fails to give any explanation in this respect. In this context, the Board also notes that according to the prior art cross-linking in platelets occurs on the surface of the platelets, i.e. cross-linking of surface proteins and lipids […]. Moreover, fixation in platelets is carried out under particularly mild conditions (room temperature, low concentration of formaldehyde, short reaction time) in order not to loose viability of the platelets […]. There is no plausible reason apparent to the Board why the skilled person would have concerns that under these conditions the viability of the active agent will be in jeopardy, while the viability of the platelets remains largely intact, i.e. many of the surface membrane functions despite a certain degree of cross-linking of surface proteins and lipids are retained. Thus, an objection of lack of support by the description cannot, in the Board’s judgement, be validly raised in the present case. The Board finally remitted the case to the ED for further prosecution. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 588/09 – That’s All Folks
K’s Law – The ebook
T 588/09 – That’s All Folks 25 Aug 2012
The present decision deals with an appeal against the revocation of a patent by the Opposition Division (OD). In what follows, the Board made clear that the way in which the patent proprietors wanted the proceedings to be conducted was unacceptable: [2.1] R 115(2) EPC and A 15(3) RPBA provide respectively that, if a party duly summoned to oral proceedings (OPs) before the EPO does not appear, the proceedings may continue without that party and that the Board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party duly summoned who then may be treated as relying only on its written case. [2.2] In the present case the [patent proprietors] and the [opponent] had been duly summoned to OPs, which both of them had requested in their statement setting out the grounds of appeal and in the reply thereto respectively. [2.3] The [opponent] informed the Board three weeks before the scheduled date that it would not attend the OPs. The [patent proprietors] communicated that they would not attend the OPs four days before the fixed date and accompanied that communication with the request to continue the proceedings in writing on the basis of two requests which had been filed ten days before. No reasons were given for justifying the late filing of the requests and the absence at the OPs. It was only invoked, when filing the new requests, that that filing was an earnest attempt to provide a set of claims which was novel and inventive and to avoid OPs. [2.4] The procedural strategy of the [patent proprietors] to file new requests shortly prior to the OPs and then decide not to appear at the OPs asking for a continuation in writing cannot result in forcing the Board to follow the procedural steps imposed by the [patent proprietors] against the legal provisions cited above (point [2.1]) and commonly applied by the Boards of Appeal. This is all the more the case, since there is no justification for the behaviour of the [patent proprietors], as the legal and factual framework of the opposition did not change since the issuing of the decision of the OD […] and there was no apparent impediment for them to come to the OPs. [2.5] It results therefrom, bearing in mind that there had been no changes in the legal and factual framework of the case which might justify the filing of new claims, that there was no reason to cancel the OPs requested by both parties and continue the proceedings in writing. Such a course of action under the present circumstances and in view of R 115(2) EPC and A 15(3) RPBA […] would go against the principle of procedural economy. [2.6] The Board therefore refuses the request to continue the proceedings in writing and decides on the basis of the written submissions. To download the whole decision, click here. The file wrapper can be found here.
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T 313/10 – Double Mistake
K’s Law – The ebook
T 313/10 – Double Mistake 24 Aug 2012
This is an appeal of the applicant (Amazon.com) against the decision of the Examining Division (ED) to refuse its application relating to matching a given item description (e.g. of a book) with stored item definitions (e.g. in a website’s product catalog). The USPTO acting as ISA found two X documents. For the supplementary search in the European phase, the search division issued a declaration of no search. The reason was that the subject-matter was a “mental act selecting intangible items of abstract information on the basis of fuzzy but technically unspecified criteria which is implemented by a program for computers”, both excluded under A 52(2). The overall method was seen as a method of doing business, also excluded. In the first examination communication, the ED referred to the declaration of no search and made some other minor objections. In the reply, the applicant amended claim 1 to include the aspect of identifying candidate item. It cited T 258/03 and argued that the claims had technical character by virtue of mentioning a computer and because the identification of candidate item definitions was a technical solution to the problem of automating the matching of a large number of items. The ED issued summons arguing in the communication that the identification of candidate item definitions was limited to the field of computer programs without a tangible technical effect going beyond the normal interaction between the computer and the program it was executing, without wilfully and directly controlling the forces of nature, without transforming or transporting a physical object and without the processed data being defined in their technical significance. The subject matter was therefore excluded from patentability. The division further stated that it was not bound by the case law. It added that the then pending referral G 3/08 showed that there was no generally accepted jurisprudence on computer program exclusions. It found that a decision could be reached on the basis of the Convention and the Guidelines alone. In its reply, the applicant pointed out that the Guidelines in force as of April 2009 did in fact state that any claimed subject-matter defining or using technical means was an invention within the meaning of A 52(1) EPC and cited T 258/03 again. It gave arguments about which features it considered as technical and what technical problem was solved. The applicant did not attend the oral proceedings (OPs). The application was refused on the ground of lack of patentable subject-matter (A 52(2) and (3)). The decision stated that “no further comments in the merit having arrived from the applicant …” the application had to be refused for the defects and reasons noted in the summons. The decision does not mention the Guidelines. The applicant filed an appeal. Claim 1 before the Board read: A method performed by a computer system (100; 110) for identifying an item definition that matches an item description, the item definition and item description having attributes with values, the item definitions being stored in an item definition table (101), the method comprising: providing one or more rules (211) that specify how to generate a similarity score based on similarity between the values of the attributes of an item definition and an item description, wherein at least one rule specifies a criterion for identifying candidate item definitions; identifying one or more candidate item definitions in accordance with the rules using indexes (212) of attributes into the item definitions in the item definition table, each index for an attribute mapping values of that attribute to the item definitions; for each of the one or more candidate item definitions, generating a similarity score for the candidate item definition and the item description in accordance with the rules (403, 902), 1066 | 3398
T 313/10 – Double Mistake
K’s Law – The ebook
wherein said generating comprises assigning a score to the attributes of the candidate item definition and the item description, and aggregating scores of the attributes to derive the similarity score (909); and selecting the candidate item definition whose generated similarity score indicates it is most similar to the item description as the matching item description. The Board found dismissed the appeal but expressed its disagreement with the ED: [1] The first issue in this case is whether the claimed method, performed by a computer, of matching items in a table is excluded from patentability (A 52(2) and (3)). It is the established case law of the Boards of Appeal (see G 3/08, T 258/03, and T 424/03) that claimed subject-matter specifying at least one feature not falling within the ambit of A 52(2) is not excluded from patentability by the provisions of A 52(2) and (3). In this case, claims 1 to 16 are all method claims which specify that the method is “performed by a computer system”. Claims 17 to 24 are claims to a computer system and claims 25 to 41 are claims to a “computer-readable medium”. None of these features fall under the exclusions of A 52(2) and hence the claimed subject-matter of the present request is not excluded from patentability by the provisions of A 52(2) and (3). [2] The ED argued, using their own criteria, that a method performed by a computer was excluded. This was contrary to the established jurisprudence as set out in the Guidelines for Examination at the time. After stating that they were only bound by the EPC and the Guidelines, the division ignored the applicant’s observations that their approach was in fact in breach of the Guidelines. Both of these acts were procedural violations. [3] The next issue that arises is whether therefore the matter should be remitted to the ED for an additional search as per the appellant’s main request. [4] It is established jurisprudence that an additional search can be dispensed with if the only technical features of the claims are considered to be “notorious”, i.e. generic and so well known that they cannot reasonably be refuted (see T 1242/04 [9.2] and T 1411/08 [4]). If this is the case, then there is no need to remit the case for an additional search. Thus the Board must examine whether there are any technical features that are not notorious. [5] The invention is essentially to match an item description (e.g. of a book) with one in an “item definition table” (e.g. a web site’s database) using rules that define the required similarity of different attributes of the item (for a book, the attributes may be ISBN number, author, title, product type, etc.) The main aspect of the invention and the one that the appellant alleges to be technical is that, before applying the full set of matching rules, a number of “candidates” are identified (analogous to a pre-selection of candidates before a job interview). Although not claimed, this is based on a subset of the rules used in the full matching procedure. This avoids having to perform a time-consuming detailed match against all the items in the table (analogous to avoiding interviewing all applicants) [32]. The candidates are identified using indexes of the attributes. [6] At the OPs, there was some debate about the nature of the indexes. The Board asked the representative whether they were not the same as indexes conventionally used by databases. Such an index may be a sub-table of the main table ordered by the attribute in question. Instead of searching the whole database for records with a particular value of the attribute, it is looked up in the index, which is quicker because the attributes are ordered. However, the representative explained that the index in the invention was different, being “an index into the attributes”, which was somehow different from an index into the table. Nevertheless, neither the claim, nor the description appear to provide any support for this interpretation, the claim defining the indexes as “indexes of attributes into the item definitions in the item definition table, each index for an attribute mapping values of that attribute to the item definitions”. In the Board’s view, this defines the indexes in the sense understood by the Board, namely as a mapping from attribute values to definitions in the table. [7] According to the jurisprudence going back to T 208/84, one indication of technical character is that the method has an overall technical effect, such as controlling some physical process. This is not the case in the present invention since the effect of matching items with items in a table is either an abstract data processing one, or taking the embodiment into account (matching e.g. books and CDs), a business one. [8] The technical character may also come from within, namely from the effect on the computer. This was the case, for example in T 424/03 where the technical effect came from “functional data structures (clipboard formats) used independently of any cognitive content … in order to enhance the internal operation of a computer system” (see point [5.2]). Such “functional data structures” were also considered to be present in the file search method that was the subject of T 1351/04. Here, the functional data was also in the form of an index containing “management information” that indicated the “start positions”, i.e. memory addresses, that pointed to the data to 1067 | 3398
T 313/10 – Double Mistake
K’s Law – The ebook
be searched for. This was said to control the computer by directing it to a certain memory location (see point [7.2]). This was contrasted with the looking up of addresses in T 52/85. In that case the addresses stored linguistic expressions that were equivalent to possible input expressions. The contribution there was seen to relate only to the kind of data represented, i.e. linguistic expressions. In T 1351/04, it was conjectured that the line to be drawn between the use of addresses in these two decisions is that if the method is concerned with the way that a computer performs the search, it may be technical. If, however, the kind of data is decisive it is not. [9] It thus follows that the index may well have technical character since, using the terms of T 1351/04, it controls the computer by directing it to a certain memory location. On the other hand, the Board cannot see any technical effect in the identification of the items or candidate items in accordance with rules. This is a purely abstract process part of an algorithm to provide matching and not part of any technical process or interacting with the computer in any way. [10] The representative essentially argued that the technical character came from being part of the technical process going on in the computer and that the identification of candidate item definitions was a technical solution to the problem of automating the matching of a large number of items using a computer. However, in the Board’s view, these are merely manifestations of the intrinsic effect of implementing an algorithm on the computer. They are analogous to “normal” physical interactions between program (software) and computer (hardware) that does not contribute in the case of a computer program (see T 1173/97 [headnote]). [11] The representative argued that implementing the matching operation was the task of the engineer and therefore technical. The Board agrees that the implementation is indeed technical by virtue of the computer system. However, the point is that the contribution of the matching algorithm is not technical. [12] In conclusion, the Board judges that the only features having technical character are the computer system and potentially the use of indexes. However, a computer system in general is clearly notorious. As stated above, the Board is of the view that indexes are certainly well known in the field of databases. The question is then whether they are so well known as to qualify as “notorious”. The Board judges that they are and were at the priority date of 2003. The problem of searching databases has been known for a very long time and methods of speeding this up using some kind of “index” have been implemented in virtually all commercial database products. Decision T 1411/08 requires not only that the features be notorious, but also generic, that is, features which are defined in such a way that technical details are not significant (see [headnote]). In the Board’s view, the present description of the use of the index does not specify any technical features and so is “generic” by that standard. In conclusion, the Board judges that claim 1 contains only technical features that are notorious so that no additional search is required. [13] Accordingly, the Board cannot allow the appellant’s main request. [14] Moreover, under these circumstances, the Board considers that there can be no inventive step since the only features that could contribute are notorious. Thus the problem to be solved would be along the lines of how to implement the matching scheme. Clearly, it would be obvious to use a computer system and to consider the use of indexes to speed up the access to the data. Claim 1 accordingly does not involve an inventive step (A 56 EPC 1973), so that the Board cannot allow the appellant’s auxiliary request either. […] The appeal is dismissed. Point [2] of the reasons is interesting. Ignoring the applicant’s objection clearly amounts to a substantial procedural violation (SPV). But what exactly was the second SPV detected by the Board? Probably the fact that the ED acted in contradiction to the Guidelines. One may note, however, that sometimes Boards have stated that acting in this way did not constitute a SPV. Two examples should suffice:
T 42/84: The Guidelines, as stated in the General Introduction to them, do not have the binding authority of a legal text. Therefore a failure by the ED to follow them is not to be regarded as a procedural violation within the meaning of R 67 unless it also constitutes a violation of a rule or principle of procedure governed by an article of the EPC or one of the Implementing Regulations. [9]
T 647/93: Although it is normally desirable for ED to act in accordance with the Guidelines, the Board wishes to point out that the Guidelines are guidelines, not rules of law, so that failure to follow a procedure set out there is not in itself a SPV. [4.1] 1068 | 3398
T 313/10 – Double Mistake
K’s Law – The ebook
The way in which the Board has worded point [2] of the reasons appears to suggest that what constituted the SPV is that the ED acted in contradiction to the established jurisprudence. I think this reasoning would lead us on even less solid ground, because it is not clear when case law becomes established. I have sometimes heard attorneys invoke “established case law” for which there was only one T decision (if any). And even if there was a generally accepted definition of “established jurisprudence”, I do not see anything in the EPC that would make it binding on an ED. Of course, an ED would be very unwise to go against well established case law simply because its decision would be likely to be set aside in appeal proceedings - but I do not think that by doing so it would ipso facto commit a SPV, in particular if the Guidelines are silent on the matter. Any thoughts? Should you wish to download the whole decision, just click here. The file wrapper can be found here. NB: This decision has also been presented on Le blog du droit européen des brevets.
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T 160/09 – Transparency
K’s Law – The ebook
T 160/09 – Transparency 23 Aug 2012
This appeal was filed against the decision of the Examining Division (ED) to refuse the application under consideration (claiming a mobile terminal for a wireless telecommunications system) for lack of inventive step. The decision was delivered during oral proceedings (OPs) before an ED in a different composition than the one having signed the summons to OPs. More specifically, instead of the second examiner who had signed the summons another examiner was present during OPs and signed both the minutes and the decision. The decision contains several interesting paragraphs on procedural matters: Remittal in case of an adverse decision [1] If the board were to examine the case substantially and come to a negative conclusion, it would make no sense to then remit the case to the ED for further prosecution. The reasons for the decision of the board would have to be given, and the negative conclusions would therefore be part of the ratio decidendi of the decision. The ED would therefore be bound by those conclusions (A 111(2) EPC 1973). Thus the only purpose of such a remittal would be to give the appellant a further opportunity to amend its case to rely on new facts, such as new, more restricted, claims. But any such facts could and should be submitted to the board itself, preferably with the grounds of appeal (Articles 12(2) and 13(1) RPBA). The appellant is effectively asking for a blank cheque to further modify its case, together with a further opportunity to appeal. Accession to such a request would require truly exceptional circumstances, of a nature which the board cannot presently envisage. At any rate, no such circumstances have been claimed here. Hence, the appellant’s request to remit the case if the board intends to come to an adverse decision for the appellant cannot be granted. [2] According to Article 11 RBPA the board shall remit the case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise. If no such reasons exist, the board will allow the appeal because of the fundamental deficiency alone and without assessing the substantive merits of the appeal, and will remit the case in order for this error to be corrected in further prosecution. So the board will first examine whether there is a fundamental deficiency in the first instance procedure which justifies an immediate remittal. The alleged substantial procedural violations Right to be heard [3] The decision makes repeated reference to figure 4 of D2 […] which had not been mentioned in the written procedure nor, as it appears from the minutes, discussed during OPs. Thus it would appear that the appellant did not have an opportunity to comment on this aspect of the decision. Contrary to the appellant’s position, however, the board is of the opinion that the reference to figure 4 of D2 was not decisive for the decision. [4] As regards the main request, the decision comes to its conclusion as to lack of inventive step of claim 1 over D1 and D2 without referring to figure 4 (see point 2-2.9). Figure 4 is mentioned later on with respect to claims 2 and 3 (point 3.1) and in a subsequent section dealing with the applicant’s arguments (points 4 et seq.) to show why they did not, according the ED, affect this conclusion. As regards the auxiliary request, the ED argue (sic) in the decision (point 5.1) that the “additional feature does not render the claimed subject matter inventive” because to use event subscription is “the most common way of implementing an event-based communication” and “well within the reach of the skilled person”. The ED further argue (sic) (point 5.2) that figure 4 of D2 provides an example of event subscription, and conclude (sic) (point 5.3) that “[t]herefore, the subject-matter of independent claims of the auxiliary request does not involve an inventive step”. [5] The appellant pointed out that neither section 4 nor point 5.2 of the decision are labelled as obiter dicta nor placed sufficiently separate from the reasons (e.g. at the very end) to warrant the conclusion that they were meant as obiter dicta. The appellant was also of the opinion that the conclusion in point 5.3 relies on the arguments in both points 5.1 and 5.2. 1070 | 3398
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[5.1] As a consequence, the appellant argued that these sections belong to the ratio decidendi of the decision un der appeal. The appellant also made reference to T 5/81 [headnote, 7] which states that “an alleged violation affecting a part of the decision other than its ratio decidendi cannot be a substantial violation” and submitted that, by implication, all procedural violations which do affect the ratio decidendi must be considered as substantial procedural violations. [5.2] The appellant further argued that the board had to assess whether a substantial procedural violation had occurred on a purely objective basis and that therefore there was no room for any discretion on the board’s side based on subjective judgment. In case of doubt the board had, so the argument, no choice according to T 1505/06 [3.1] but to remit the case. It also argued that an objective assessment must be based on the structure of the decision […]. [6] The board agrees that a “substantial procedural violation” is an objective deficiency affecting the entire proceedings (J 7/83 [12]) which is to be determined on an objective basis (see J 32/95 [4.1]). However, the board’s assessment is indeed based on the pertinent objective facts, in particular the decision under appeal. [6.1] In T 1505/06 the Opposition Division (OD) had refused the proprietor’s request to postpone the OPs but had failed to give their pertinent reasons in the minutes or in the final decision. Absent such reasons the board had found itself incapable of deciding whether OD had exercised its discretion properly or not and whether a substantial procedural violation had occurred, and therefore saw no choice but to remit the case to the OD for further prosecution (see esp. [3.1]). In the present case, the situation is significantly different: It is undisputed that the decision under appeal contains reasons for the relevant conclusion as to inventive step and thus there is a factual basis to decide whether or not the alleged violation of the right to be heard occurred or not. [6.2] The board agrees with the appellant that the structure of the decision is an important aspect for analysing the reasons of a decision, but disagrees that it is the only one that may be taken into account for this analysis to be objective. Rather, the content of the individual arguments may and normally must be assessed, too. [6.3] Also, the requirement that a decision be based on objective facts does not exclude that the board has to assess and judge the facts at issue nor that consequently the decision may also contain subjective elements. [7] Having said that, the board interprets the reasons in the decision as follows: [7.1] In point 2.6 of the decision it is argued that D2 dis closes that software modules are permitted to invoke functionality in their own layer or in layers below, whereas communication upwards through the layers is con figured to be handled by events. With respect to events, reference is made to the following disclosure of D2 […]: “Upcalls arise in systems that receive asynchronous inputs through lower level components and that usher the processing of these inputs up through the system. Upcalls are common in net works and operating systems, and are initiated via hardware interrupts.” [7.2] Point 4.4 of the decision repeats the applicant’s argument according to which “D2 does not disclose the ‘asymmetric’ operation between layers as claimed”. This argument is dismissed in point 4.5 with reference to the cited section of section 3.1. In point 4.6, reference to figure 4 along with the argument that “the receipt of a data packet” would represent a hardware interrupt “as introduced in section 3.1, line 14” the “processing” of which “implies its propagation upwards through all the layers” which would show “the existence of event-based processing in all layers of the system”. [7.3] In the board’s judgment, the ED made reference to figure 4 of D2 as a specific example of the general statement in the cited passage of section 3.1 with respect to the existence and handling of hardware interrupts. Therefore, this reference merely illustrates an argument previously made by the ED and discussed with the applicant and does not introduce a new argument. [7.4] The fact that, as the appellant pointed out during OPs, the board of appeal had expressed doubt in the summons to OPs as to whether section 3.1 of D2 actually discloses exclusively event-based upward communication and therefore disagreement with the ED’s argument in substance, is irrelevant for the issue at stake: Whether the appellant’s right to be heard was violated or not is a procedural question quite independent of the substantive question of whether the board agrees with the reasoning of the ED or their conclusion. [7.5] Similarly, in the board’s opinion, the ED referred to figure 4 in point 5.2 in order to illustrate the argument made under point 5.1, whereas the conclusion as to lack of inventive step in point 5.3 does not depend on this example but is supported by the allegation of common knowledge under point 5.1 alone.
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[8] The board thus comes to the conclusion that figure 4 of D2 was not decisive for the ED to arrive at their finding as to lack of an inventive step of the independent claims of both requests and thus is not a substantial procedural violation which would make an immediate remittal equitable under Article 11 RPBA. Composition and constitution of the ED [9] The appellant argued that the OPs did not take place before the legally appointed ED because the second examiner present at the OPs was not the same as the examiner having signed the summons, and because there is no evidence that the president of the EPO directly or by delegation had ordered or approved this change or according to what procedure. [9.1] The appellant argued that absent such evidence it must be assumed that the new second examiner had appointed himself. The appellant argued that according to T 390/86 [7] such a “self-appointment” is illegal because members of the ED are personally appointed under A 18 EPC 1973 on a particular file. The appellant also suggested that “self-appointment” would offend against the appellant’s right to defend their case before an ED as “fairly diverse as possible”. The appellant did not however provide any evidence to corroborate the suspicion of self-appointment. According to the minutes […] the appellant had only asked why the second examiner was changed but when the ED referred to “organizational reasons” the appellant did not request further information to establish that this change was approved or by whom. [9.2] The appellant did not question that the new second examiner might not be technically qualified as required by A 18(2) EPC 1973 or not be competent to deal with the pertinent parts of the international patent classification (cf. R 9(1) EPC 1973). The board also does not consider that the requirement of A 18(1) EPC 1973 that the EDs shall be responsible for the examination of European patent applications prohibits changes in their composition per se. [9.3] The appellant did not, in fact, raise any objection against the individual new member, did not claim that the new ED had shown any lack of “fair diversity” to the appellant’s disadvantage, and generally did not argue that the appellant was negatively affected by the replacement. [10] In T 390/86, the appealed decision was set aside be cause the written decision had not been signed by those members of the OD who had delivered the decision during OPs. In the reasons (points [7] and [8]) it is explained that the decision must be delivered by the examiners who are “appointed on a personal basis” to constitute a particular OD in order to decide the case and that wrong signatures on the written decision put into doubt whether the written decision reflected the views of the same examiners who had decided the case in oral proceedings. As the board reads it, T 390/86 does not prohibit that the composition of an OD be changed at all, nor does it require that the EPO follow a particular procedure to do this. In the present case there is no doubt that the written decision was signed by those examiners who had taken part in the OPs. For this reason alone T 390/86 does not apply to the present case. [11] The appointment and possible replacement of members of the ED (and OD) are amongst the “necessary steps” which by A 10(2)(a) EPC 1973 the president is empowered to take to ensure the functioning of the EPO. The president may delegate these powers under A 10(2)(i) EPC 1973. In this respect, R 12(1) EPC 1973 provides that EDs are grouped together administratively so as to form directorates. In the board’s view this implies that the president delegates decisions about administrative matters regarding the ED, including the appointment and replacement of members, to the directorates. [11.1] It is true that there is no evidence on file that the president has, directly or by delegation, approved the change in the composition of the ED. However, the EPC does not contain an explicit requirement that such evidence be made available. The board points out that neither is such evidence available for the initial allocation of the ED. In fact, to the best knowledge of the board such information is generally not publicly available. [11.2] The sections of Guidelines for Examination as referred to by the appellant (Version June 2005, sections CVI, 1.2 and 1.3) explain that a dossier is normally allocated to an ED responsible for the examination of applications in the technical field in which the particular application has been classified by the search division and under which conditions exceptions to this principle are made, that one member of the ED will, as a rule, be entrusted to carry out all the work up to the point of a decision to grant a patent or refuse the application, and that this primary examiner is normally the examiner who drafted the search report. The appellant considers that these sections make at least plausible that the initial appointment of an ED to an application is performed according to a well-defined procedure.
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[11.3] The board however cannot see that these sections of the Guidelines relate to the question of whether the appointment takes place according to delegation by the president or according to what procedure. The board also disagrees with the appellant that the Guidelines relate to the initial appointment of an application as opposed to a change in the ED: They do not mention initial allocation explicitly, and there is no reason to assume that changes in the composition of the ED should not be made according to the same criteria. For this reason, the board considers the cited sections of the Guidelines to be irrelevant for the appellant’s argument. [12] The appellant also argues that there is a generally accepted principle of transparency in procedural law in the contracting states of the EPC which the EPO should take into account under A 125 EPC 1973. This transparency principle would require that the procedure according to which the composition of the ED is changed be made public. [12.1] In support of this allegation, the appellant refers to the European Treaties and therein specifically to:
Article 1 in section “Common Provisions” stating inter alia that “[t]his treaty marks a new stage in the process of creating an ever closer union among the peoples of Europe, in which decisions are taken as openly as possible and as closely as possible to the citizen”,
Article 10(3) in section “Provisions on Democratic Principles” stating inter alia that “[d]ecisions shall be taken as openly and as closely as possible to the citizen”, and to
Article 15(1) in section “Provisions Having General Application” stating that “[i]n order to promote good governance and ensure the participation of civil society, the Union’s institutions, bodies, offices and agencies shall conduct their work as openly as possible”.
[12.2] Firstly, the board notes that the objective for open decision making in Articles 1 and 10(3) explicitly refers to “the Union”, i.e. to the European Union as an organization separate from its member states. The board thus rejects the idea that a general principle accepted within the member states can be derived from the cited passages of the EU treaties. [12.3] Secondly, the board is not of the opinion that the “democratic principle” according to which decisions shall be taken “as openly as possible” can be derived from the cited passages of the EU treaties as a point of procedural law as opposed to a non-enforceable commitment of the member states. [12.4] Thirdly, the board considers that the vague reference to decisions which should be taken “as openly as possible” does not suffice to conclude that it would imply, as alleged by the appellant, the particular requirement to publish the appointment procedure of examiners. The appellant also did not claim that the procedures according to which tasks are allocated to administrative employees are conventionally published in member states of the European Union, nor was anecdotal evidence provided that some of them are. The board has no reason to assume that this is generally the case. [12.5] The board therefore concludes that the appellant has failed to establish a transparency principle which would, according to A 125 EPC 1973, require the EPO to publish the appointment procedure of examiners. The board also finds that the appellant has not established that the replacement of the second examiner in the present case infringed on its right to be heard or constituted a fundamental procedural defect for other reasons. [13] In summary, the board comes to the conclusion that no substantial procedural violation occurred which would on its own justify that the decision be set aside and the case be remitted to the first instance according to Article 11 RPBA. The request that such remittal should preferably be to an ED in a different composition is thus moot. The appeal was dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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J 13/11 – Forgotten
K’s Law – The ebook
J 13/11 – Forgotten 22 Aug 2012
This appeal was directed against the decision of the Receiving Section (RS) refusing a request for reestablishment of rights in relation to the time limit for paying the third-year renewal fee with surcharge in respect of a Euro-PCT application. As so often in re-establishment cases, there were several parties involved. The Australian applicant had an Australian patent attorney (“GH”) and was represented before the EPO by a European representative. The payment of renewal fees was entrusted to a specialised company (“CPA”). The third-year renewal fee fell due on March 31, 2008 and payment of that fee, together with a surcharge, could still have been validly effected within the subsequent six-month grace period. However, the EPO received no payment by the expiry of that period. As a consequence, with a communication dated November 6, 2008, the EPO informed the applicant that the application in suit was deemed to be withdrawn under A 86(1). Then professional representative filed an application for re-establishment, stating that : “I hereby request re-establishment of rights of the above-mentioned European patent application … Please deduct the fee for restoration from our deposit account in accordance with our on-line instructions … GH only became aware that the patent application had lapsed due to the failure to pay the renewal fee when, on 23 October 2008 GH read a report from CPA, informing them that, in the previous month, a renewal fee had not been paid and that this patent application, amongst others, had consequently lapsed … It is requested that rights in the above-mentioned patent application are re-established in their entirety. If anything further is required in order for you to make your decision, please let me know …”. The electronically filed “online instructions” read as follows:
(click to enlarge) On March 23, 2009, the RS sent a communication to the professional representative, stating that as the third renewal fee and additional fee had not been paid, the omitted act had not been completed within two months of removal of the cause of non-compliance, and that it was the intention of the RS to reject the request as inadmissible. The RS stated that it considered the date of the removal of the cause of non-compliance to be 23 October 2008. The European representative replied to the above communication in a letter dated 8 May 2009 which stated that: “...we submit that the principle of good faith applies between the EPO and the applicant, and that the legitimate expectations of the parties to the proceedings must not be violated. Under the principles laid down in the decisions T 14/89 and J 13/90, there is a legitimate expectation on the part of the applicant that the EPO should draw to the applicant’s attention deficiencies in a request for re-establishment of rights which are obviously easy to correct. I believe that 1074 | 3398
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the EPO has complied with this principle by sending the communication dated 23 March 2009 and that, accordingly, by completing the omitted act within the time period of the letter, the time limit for filing the request for re-establishment of rights will be deemed to have been met. … it is submitted that, since completion of the omitted act simply involves paying the renewal fee and surcharge, this is obviously very easy to correct”. The [applicant] paid the third renewal fee and surcharge on May 8, 2009. The RS based its decision to reject the request for re-establishment as inadmissible upon the non-completion of the omitted act of payment of the third renewal fee and surcharge; a finding that the letter of 23 December 2008 did not contain an implicit instruction to debit the outstanding renewal fee and surcharge from the European representative’s deposit account with the EPO. Regarding the [applicant’s] arguments concerning good faith and legitimate expectations, the RS considered that as the request for re-establishment had been filed on the last day for doing so at 18.35 hours CET, the EPO was not in a position to warn the [applicant] of the non-payment of the renewal fee and surcharge within the few hours that remained before the expiry of the 2 month time limit. The applicant filed an appeal, but it was dismissed by the Legal Board, for the following reasons: [2] In order to be allowable, the request for re-establishment has to meet the requirements of A 122, one of these requirements being the completion of the omitted act. [3] The first issue to be addressed in this appeal is whether the request for re-establishment of 23 December 2008 contains an instruction to the EPO to debit the third renewal fee and surcharge from the European representative’s deposit account with the EPO, thus completing the relevant “omitted act” under A 122. [4] As stated in the third full paragraph, page 2 of the request for re-establishment […], on 23 October 2008 the Australian representative became aware of the non-payment of the third renewal fee and surcharge. Hence there was a period of approximately 2 months in which it could have been arranged for CPA or someone else to pay the fee. The [applicant] has not suggested that 23 October 2008 is not the date of removal of the cause of noncompliance with the period for paying the third renewal fee and surcharge. Hence, the finding in the decision under appeal that 23 October 2008 is the day of removal of the cause of non-compliance is correct. It follows that in accordance with R 136(1) and (2) the period for paying the third renewal fee and surcharge ended on 23 December 2008. [5] The request for re-establishment of 23 December 2008 does not contain any explicit instructions to the EPO to debit the third renewal fee and surcharge from the European representative’s deposit account with the EPO. The same is true for the instructions that the European representative filed electronically on 23 December 2008. The issue, therefore, is whether the 23 December 2008 letter contains an implicit instruction to so debit the European representative’s deposit account. [6] The first argument to address is that it was clear from the 23 December 2008 letter that it was intended to be a complete application, that is to say that all the aspects of the application for re-establishment were intended to be included as part of that submission, CPA being no longer responsible for these fees. The entire tenor of the relevant text of the 23 December 2008 letter […] is that CPA has been responsible for these fees in the past. There is no indication that this responsibility has now ended and nothing else which could be understood as an implicit reference to the payment of the missing renewal fee and surcharge. Three declarations were attached to the request for re-establishment. These are from Andrew Mueller, the Managing Director of the [applicant], Daniel Rosenthal, the [applicant’s] Australian patent attorney, and Sheila McLean, an administrator with the [applicant’s] Australian patent attorney. These declarations set out the history of how CPA was responsible for paying the renewal fees and how the payment of the third renewal fee came to be omitted. [6.1] These declarations fail to indicate any intention of the [applicant] that it would be the European representative who would pay the renewal fees. Thus these declarations do not assist the [applicant’s] case on this point. Rather, the declarations and the electronically filed instructions of 23 December 2008, if read together, suggest, if anything, that CPA was going to pay the third renewal fee and surcharge.
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[7] Thus the Board concludes that the [applicant’s] request for re-establishment of 23 December 2008 does not contain an instruction, explicit or implicit, that the EPO should deduct the third renewal fee and surcharge from the European representative’s account. [8] Turning now to the arguments, set out in point VII above, based upon the case law of the Boards, the first case cited is decision J 6/90. That decision concerned a situation where the missing renewal fee and reestablishment fee had been paid in time and the applicant filed a letter indicating that “... a written application for re-establishment of rights” would follow. This written application was received outside the time limit and hence the RS found the request to be inadmissible. The Board found the letter, which was filed in time, to amount to a request for re-establishment in itself. A similar fact situation and conclusion can also be found in decision T 585/08 [5]. The [applicant] argues that the situation of decision J 6/90 is analogous to the “reverse” situation of the present case and that hence its letter of 23 December 2008 could be seen as an implicit request for the deduction of the third renewal fee and surcharge from the European representative’s deposit account. Decision J 6/90 would only be helpful to the [applicant] if its letter of 23 December 2008 could be considered as indicating an intention that the third renewal fee and surcharge be deducted from the European representative’s deposit account with the EPO. As set out in point [5] above, the content of the 23 December 2008 request and its accompanying declarations do not, on any reasonable reading, indicate to the reader that the European representative would be responsible for paying such fees and would, therefore, intend to have them paid out of his deposit account at the EPO. [9] Upon the basis of the duty of the EPO to act in good faith and to satisfy the legitimate expectations of the parties before it, the [applicant] sought to argue that the EPO should have informed it of the deficiency in its request for re-establishment, that is the non-payment of the renewal fee and surcharge. As part of its arguments on good faith and legitimate expectations, the appellant referred to the cases underlying decisions T 14/89, J 13/90, and J 23/90. Decision J 13/90 concerned a request for re-establishment following non-payment of a renewal fee. The RS rejected the request as the omitted act, the payment of the renewal fee, did not take place within the time limit. In its request for re-establishment the applicant had indicated that they would pay the missing fee once their rights had been re-established. The Board found that the applicant was “… evidently confusing the provisions of A 122(2), second sentence, with those of national law which would have allowed them to pay the missing fee after re-establishment had been granted” (see J 13/90 [7]). Applying the principle of good faith the Board found that the EPO should have warned the applicant about this deficiency. Thus decision J 13/90 deals with a situation where the party gave a clear indication that they had a mistaken understanding of the relevant provisions of the EPC and hence, under the principle of protection of legitimate expectations, the EPO had a duty to correct this misunderstanding. This is not the case here and this case cannot assist the [applicant], also for the reason that in the present case, contrary to the one decided under the decision J 13/90, the request was filed so late that the office could objectively not take action before expiration of the time limit in question - see point [10] below. [10] The [applicant] referred to decision T 14/89 in support of his appeal. Decision T 14/89 concerns a patent proprietor who filed a request for re-establishment of rights well within the time limit for doing so. This request had two deficiencies: the fee for re-establishment had not been paid and the facts to substantiate the request had not been filed. The Board found (at point [5]) that under the principle of good faith, “... the EPO should not fail to draw the appellant’s attention to obvious deficiencies in his acts. This obligation certainly exists if as in the present case, the obvious deficiencies can be expected to be remedied within the time-limit for re-establishment”. Decision T 14/89 was commented upon by the Enlarged Board of Appeal in decision G 2/97 where it found that this decision “… related to the particular facts of that case and that there is no generally applicable principle to be derived therefrom” (point [3.4] of the Reasons). In decision T 14/89, it is to be noted that the EPO had ample time, about 6 weeks before the expiry of the time limit for requesting re-establishment, in which to inform the proprietor of the deficiencies of his request. In the present case the EPO received the request for re-establishment on the last day for filing such a request at 18.35 hours CET, that is after office hours. There is a substantial case law on the principle of protection of legitimate expectations. The duties of the EPO under this principle are limited and do not extend to informing a party of missing fees immediately after the receipt of a request for reestablishment (see J 2/94 [2]). This principle is further limited in that the EPO can only be expected to warn a party of a deficiency if: (a) the deficiency is readily identifiable by the EPO; and (b) the party can still correct it within the relevant time limit (see T 455/98 [2]). 1076 | 3398
J 13/11 – Forgotten
K’s Law – The ebook
In the present case the deficiency was not readily identifiable. The letter and attached documents submitted on 23 December 2008 contain no internal inconsistencies. These documents contain nothing which could be understood or construed as an indication that CPA or someone else was not going to pay the renewal fee and surcharge, and that this was the responsibility of the European representative. Further, the [applicant] filed its request for re-establishment on the last day for doing so and after EPO office hours. Thus there was no time for the EPO to warn the [applicant] about the non-payment of the third renewal-fee and surcharge even if the EPO had been in a position to spot this deficiency. The [applicant’s] argument that the “sufficient time” refers to the [applicant] and not the EPO is unconvincing: only if the EPO has sufficient time within the relevant time limit to warn a party of a deficiency can there be a legitimate expectation by the party that the EPO will do so, and only then does that party have sufficient time to rectify the deficiency within the relevant time limit. Thus the Board cannot follow the [applicant’s] argument that the principle of legitimate expectation would have required the formalities officer to contact the [applicant] after the deadline for re-establishment of rights had passed in order to clarify the situation. Neither decision T 14/89 nor decision J 6/90 assist the [applicant]. As regards the [applicant’s] reference to decision J 23/90, this reference is not developed in the [applicant’s] submissions. [11] None of the cases cited support the appeal. [12] The [applicant] has invoked the principle of proportionality. The provisions of the EPC seek to strike a balance between legal certainty and the proper administration of justice on the one hand, and substantive justice on the other. More specifically, the time limits in the EPC aim to serve legal certainty and proper administration of justice by avoiding any discrimination or arbitrary treatment. The severe consequence of a loss of a patent application in this case cannot be considered in isolation but must be assessed against the values of legal certainty and proper administration of justice that are embodied by the time limits appropriate to A 122. The application of the principle of proportionality that the [applicant] is advocating would empty the time limits of A 122 of any content and would make the provisions of this article uncertain. In addition the boards of appeal do not have the power to apply provisions of the EPC contra legem, that is contrary to their unambiguous meaning and purpose. The Board thus finds the [applicant’s] arguments on this point without merit and they must therefore be dismissed. [13] In conclusion the Board finds that the RS was correct to find that the request for re-establishment was inadmissible due to non-completion of the omitted act within the time limit for doing so. […] The appeal is dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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R 13/11 – False Hopes
K’s Law – The ebook
R 13/11 – False Hopes 21 Aug 2012
The Boards’ handling of Article 12(4) RPBA is also sometimes discussed in petitions for review, as the present case shows. The case is also interesting because the petitioner invoked the principle of legitimate expectations. The petition concerns decision T 23/10 of Technical Board of Appeal 3.3.02 (reported on this blog) dismissing the patent proprietor’s appeal against the decision of the OD to revoke its European patent. The petition was based on the ground in A 112a(2)(c), i.e. that a fundamental violation of A 113 had occurred in the appeal proceedings. The patent proprietor’s main request in the opposition proceedings was to maintain the patent as granted. In OPs the Opposition Division (OD) decided that claim 11 of the patent as granted did not meet the requirements of A 123(2) and A 76(1). Since a claim such as claim 11 as granted was also present in all the auxiliary requests 1 to 7, those requests also failed. After an adjournment the patent proprietor did not file any further requests and the OD decided to revoke the patent. The [patent proprietor] filed an appeal in which it maintained the same main request and auxiliary requests 1 to 7 as before the OD and also filed auxiliary requests 8 to 15 in which claim 11 was omitted. The Board of Appeal issued a communication dated 16 September 2010 in which it expressed the provisional opinion that claim 1 of the main request did not satisfy A 123(2) and A 76(1), that it agreed with the decision under appeal as regards claim 11, and that it intended to remit the case to the first instance “in case that one of the requests on file meets the requirements of A 76 and A 123(2)”. In its response to the communication, the patent proprietor withdrew its main request and auxiliary requests 1 to 7. However, at the OPs before the Board on 18 January 2011 the remaining auxiliary requests 8 to 15 were held inadmissible in the exercise of the Board’s discretion under Article 12(4) RPBA. The appellant did not file any further requests and objected that by not admitting its auxiliary requests 8 to 15 into the proceedings the Board had denied it the right to be heard and thus a fundamental violation of A 113 had occurred. By an order of 20 September 2011, the Enlarged Board (EBA) in its composition under R 109(2)(a) submitted the petition for review to the EBA in its composition under R 109(2)(b) – which, incidentally, does not happen very often ; only few petitions arrive at that stage. What was the final verdict of the EBA? [1] As indicated in the EBA’s provisional opinion of 1 February 2012, the petition is admissible. However the EBA considers the petition not to be allowable for the following reasons. [2] Although the petition makes several references to the principle of legitimate expectations, and indeed takes that principle as its starting point […], the failure to observe that principle is not in itself a ground for a petition for review mentioned in A 112a(2) or R 104, the grounds mentioned in those provisions being exhaustive (see R 16/09 [2.3.5-6]; and R 10/09 [2.4]). The only ground mentioned in those provisions and relied on in the petition is that in A 112a(2)(c), namely that a fundamental violation of A 113 occurred. [3] The alleged violation is described in the petition as: “the complete refusal of the Board of Appeal to admit sets of claims that had been filed with [the] Grounds of Appeal [which] was ... unexpected and violated the principle of legitimate expectations and, most importantly, deprived the [[patent proprietor]] of its right to be heard under A 113 … The Board of Appeal’s application of its discretion under Article 12(4) RPBA was incorrect, and its refusal to admit Auxiliary Requests 8 to 15 into the proceedings resulted in an unreliable and unjust decision” […]; and “the Board of Appeal contravened the [patent proprietor’s] right to be heard as a result of the incorrect application of the discretion given to the Boards of Appeal under Article 12(4) 1078 | 3398
R 13/11 – False Hopes
K’s Law – The ebook
RPBA, which the Board themselves (sic) state at point 2.4 of the decision, is intended to serve the purpose of ensuring fair and reliable conduct of judicial proceedings” (see petition, page 10, first full paragraph; emphasis added in the petition). [4] It is therefore abundantly clear that the [patent proprietor’s] real complaint is that the Board of Appeal decided in its discretion under Article 12(4) RPBA not to admit the [patent proprietor’s] auxiliary requests 8 to 15 into the proceedings. The case-law of the EBA shows clearly that petition proceedings may not be used to review the exercise by a Board of Appeal of a discretionary power if that would involve an impermissible consideration of substantive issues (see R 1/08 [2.1]; R 10/09 [2.2]; R 9/10 [10]). This has recently been confirmed in the specific context of the discretion in Article 12(4) RPBA (see R 11/11 [6]). [5] It appears from both the minutes of the OPs […] and the decision under review […] that the issue of the admissibility of the [patent proprietor’s] auxiliary requests 8 to 15 was in fact discussed at the OPs before the Board of Appeal. The [patent proprietor] does not appear to dispute this, indeed at several places in its submissions to the EBA it acknowledged and admitted that the issue was discussed at the OPs ([…] the [patent proprietor] observes the issue was raised as a “deviation” from the Board’s preliminary opinion; […] the [patent proprietor] complains it was raised by the Board and not by the [opponent]; […] the [patent proprietor] observes the issue was first raised at the OPs; and […] the [patent proprietor’s] representative acknowledged it was an issue which could arise at OPs but he was surprised at the emphasis placed on it). The [opponent] also confirms the issue of admissibility of the auxiliary requests was discussed at the OPs […]. [6] Since it is thus beyond doubt, indeed agreed by all concerned, that the [patent proprietor] was heard on the admissibility of its auxiliary requests 8 to 15, the only question which arises is, as the EBA observed in its communication […], whether the [patent proprietor’s] opportunity to comment on that issue was adequate. Although the [patent proprietor] did not present its arguments in that way in the petition, the question of adequacy of opportunity could, as the EBA’s communication indicates, be extracted from the complaints that this issue was not mentioned in the Board’s preliminary opinion and that the Board’s decision during the OPs, which the [patent proprietor] calls an unexpected departure from the preliminary opinion, did not allow the [patent proprietor] an opportunity to present a full and complete case […]. [7] The EBA considers the opportunity was adequate. As the [opponent] has observed […], the [patent proprietor] (or its representative) must have known that auxiliary requests filed on appeal are only admissible in the Board of Appeal’s discretion and further must have known that Article 12(4) RPBA could lead to a finding of inadmissibility in the case of auxiliary requests which could have been presented at first instance. Indeed, that must or should have been a consideration also when the [patent proprietor] elected not to file further requests at the OPs before the OD. The [patent proprietor] has now in the petition proceedings put forward various explanations why that was not done but, as in decision R 11/11 [7], the EBA observes that these are reasons why the [patent proprietor] did not file such requests then, and not reasons why it could not do so. It is quite clear from the [patent proprietor’s] own submissions […] that it consciously chose not to do so. [8] In any event, and for the sake of completeness, the EBA does not accept that the basis of the [patent proprietor’s] argument in this respect – that the decision of the OD was the first the [patent proprietor] knew of an objection to claim 11 as granted – is correct. The objection was made in the notice of opposition of the first opponent filed on 6 December 2007 […] and repeated in its reply of 27 August 2009 to the OD’s preliminary opinion […]. That latter submission also contains additional comments in response to the [patent proprietor’s] own reply to the notices of opposition of 25 September 2008 in which it referred to and presented arguments against this very objection […]. It appears therefore that, far from being surprised by the objection being raised at the OPs before the OD, the [patent proprietor] was squarely on notice of the objection from the commencement of the proceedings, had prepared an answer to it more than a year before the OPs, and was presented with the first opponent’s rejection of that answer prior to the OPs. [9] The argument that the [patent proprietor] was taken by surprise at the OPs is therefore not credible and, without that argument, the other submissions in this respect – such as the need for time to consider the implications of amendment, the commercial importance of claim 11, and the need to wait for the written decision of the OD – must fall. The statement of the [patent proprietor] that the written decision of the OD contained reasoning never previously advanced either by the Division or the opponents […] is simply wrong, as a comparison of […] the first opponent’s notice of opposition and […] the OD’s decision shows. However, despite the implausibility of the [patent proprietor’s] arguments why it did not file auxiliary requests at the OPs before the OD, the EBA needs to make no finding as to why this was not actually done, or indeed why no explanation was provided when the requests were filed with the statement of grounds of appeal. Certainly there is no need to agree or disagree with the [opponent’s] assertion that it was an abusive delaying tactic on the part of the [patent proprietor], although it appears the Board of Appeal had some sympathy with that argument (see the decision, 1079 | 3398
R 13/11 – False Hopes
K’s Law – The ebook
point [2.8]). As already mentioned […], the requests could have been filed at first instance – indeed, in view of the first opponent’s submissions, the [patent proprietor] would have had good reason to do so – and thus Article 12(4) RPBA applied. [10] The [patent proprietor’s] argument as regards the adequacy of opportunity is based on the allegedly misleading nature of the Board of Appeal’s preliminary opinion. The [patent proprietor] argues that, since the opinion commented on substantive matters, the [patent proprietor] understood that its auxiliary requests were admissible and, on that understanding, withdrew one group of its requests leaving only the other group (auxiliary requests 8 to 15) which it had filed as new with the statement of grounds of appeal. Then, the argument continues, the [patent proprietor] was surprised to find at the OPs that admissibility of those remaining requests was in issue. The conclusion of the argument is that, if the [patent proprietor] had known that admissibility of those requests was still an issue to be discussed at the OPs, it would have prepared better and presented a fuller case. [11] The EBA can understand how a communication containing a preliminary opinion may generate hopes of a particular outcome to the proceedings which, after subsequent developments, are not fulfilled. However, the EBA cannot agree that, by commenting only on substantive issues in its preliminary opinion, the Board could be considered to have decided already on questions of admissibility. It would have been quite wrong for the Board to have decided any issue prior to the OPs, as that could clearly have denied either or both parties the right to be heard at the OPs to which they were entitled and which they had both requested (A 113(1) and A 116(1)). Moreover, any comment on admissibility would have been no more than provisional (see Article 17(2) RPBA). Although it was put forward in the petition […] that the [patent proprietor] understood from the preliminary opinion that a decision to admit the auxiliary requests into the proceedings had actually been taken, the EBA considers that it was not in fact the case as, at the OPs before the EBA, the [patent proprietor’s] representative candidly admitted that he knew admissibility of auxiliary requests was an issue which could arise at OPs […]. While the preliminary opinion is open to the criticism that it did not mention the issue of admissibility of auxiliary requests, the omission of an issue which the parties and the Board knew could arise cannot be characterized as misleading. [12] There is a further reason why the EBA considers that the [patent proprietor] should not have been surprised that admissibility of the auxiliary requests, although not mentioned in the preliminary opinion, was raised at the OPs. In its reply to the grounds of appeal the [opponent] had raised the objection that before the OD the [patent proprietor] had deliberately chosen not to file a set of claims which the OD could have considered […]. Although this was raised by the [opponent] not as an objection to admissibility of the auxiliary requests under Article 12(4) RPBA but as an objection to any remittal based on the claims in those requests, the [opponent] made an unambiguous attack on the [patent proprietor’s] behaviour in not filing at first instance requests which it then filed on appeal. In the light of that attack it was not surprising that the Board of Appeal considered admissibility of the auxiliary requests under Article 12(4) RPBA. Accordingly the [patent proprietor’s] argument must fail. [13] The [patent proprietor’s] further argument that the question of admissibility of its auxiliary requests 8 to 15 was raised by the Board of Appeal and not by the [opponent] […] must also fail. It certainly did not prevent the [patent proprietor] being heard and it is unclear how it is suggested that it affected the adequacy of the opportunity to be heard. The [patent proprietor’s] argument is that this somehow represented a lack of neutrality on the part of the Board but, even assuming that were the case, there is no submission from the [patent proprietor] explaining how this lead to a violation of A 113. In any event, the EBA can see no valid criticism of the Board in this respect. While the [opponent] agrees […] that it did not challenge the admissibility of the auxiliary requests 8 to 15 as such in its reply (but only made submissions on them in the context of its arguments against remittal), the [patent proprietor] acknowledges that admissibility was an issue which could arise […]. That the Board might raise the question of Article 12(4) EPC (sic) if no-one else did was only to be expected and that the [opponent], once the issue was raised, requested a finding of inadmissibility, is wholly unsurprising. [14] The [patent proprietor] having relied on an alleged inadequacy of opportunity to comment on the admissibility of its auxiliary requests, it was none the less unable to satisfy the EBA that it would have done anything differently if, for the sake of argument, the Board of Appeal’s preliminary opinion had mentioned the issue. The [patent proprietor] submitted in the petition that it was denied the opportunity to prepare a full response to the inadmissibility objections and, at the OPs before the EBA, that its representative would have invested more time on the issue but, when asked how the adequacy of the opportunity would have differed, could not add anything […]. That must be conclusive – if the [patent proprietor] itself cannot suggest anything additional it would have done or might have said if the matters of which it complains had not occurred, then its opportunity to be heard must have been adequate.
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R 13/11 – False Hopes
K’s Law – The ebook
[15] The [patent proprietor] sought to distinguish this case from that of decision R 11/11 by the fact that, in the case under review there, admissibility of auxiliary requests had been in issue throughout the appeal proceedings […]. However, the EBA can attach no significance to that, not least because the admissibility of requests filed on appeal is always a matter for a Board’s discretion and will therefore be decided, either at OPs or otherwise, after the parties have made their submissions; so the matter will in fact be in issue throughout appeal proceedings whether the subject of submissions or not. Again, the EBA notes the [patent proprietor’s] acknowledgment that admissibility of such requests could arise at the OPs […]. [16] Further, there are in fact significant parallels between this case and R 11/11. In both cases the complaint was in essence that the non-admission of requests filed with the statement of the grounds of appeal violated the [patent proprietor’s] right to be heard (see R 11/11 [3] and point [4] above). In both cases the reason for nonadmission was the exercise of the discretion in Article 12(4) RPBA (see R 11/11 [4] and points [3] and [4] above). In both cases the [patent proprietors] argued that they could not have presented their requests in the first instance proceedings since they were taken by surprise and did not know the reasons for the OD’s view (see R 11/11 [5] and point [8] above). In both cases it was not disputed that the [patent proprietor]s were in fact heard on admissibility (see R 11/11 [6] and point [5] above). And in both cases the EBA has held that, in any event, the [patent proprietor]s could have filed requests at first instance but did not do so (see R 11/11 [7] and point [7] above). The EBA sees no reason to differ here from the conclusion it reached (in a different composition) in decision R 11/11. [17] It appears that the [patent proprietor’s] difficulties were not in fact caused by any actions or failings on the part of the Board of Appeal but were of its own making. Whether or not it really was surprised by the OD’s decision, it did not file further requests to overcome the objection to claim 11 in the opposition proceedings when it could in fact have done so. When it did file such requests with its statement of grounds of appeal, it did not anticipate the argument of inadmissibility under Article 12(4) RPBA by explaining why the requests could not have been filed at first instance, even though its representative knew admissibility of new requests on appeal was an issue which could arise. While the [patent proprietor] could understandably take some encouragement from the fact that admissibility of the requests was not mentioned in the Board’s preliminary opinion, it drew from that the unwarranted conclusion that admissibility of the requests had already been decided even though, paradoxically, it also knew that the issue could arise at the OPs. [18] The [patent proprietor] and its representative were responsible for the conduct of their case and it was for them to submit the necessary arguments to support their case on their own initiative and at the appropriate time (see R 2/08 [8.5, 9.10]). If the [patent proprietor] was surprised by the result, such surprise may be an understandable subjective reaction but such subjective surprise cannot change the fact that the [patent proprietor] knew the issues which might be raised and had an adequate opportunity to comment thereon (see R 12/09 [13]; and R 15/10 [11]). Despite the assertions of a denial of the right to be heard, the detailed criticism of the reasons for the board’s decision and the arguments over the cited case-law make the petition read more like the grounds of a second appeal than a petition for review, demonstrating that the [patent proprietor’s] real complaint is with the substance of the decision which the EBA has no power to review. […] The petition for review is rejected as unallowable. In my opinion the argument based on good faith was not without force; its rejection once more confirms the EBA’s (well established) narrow interpretation of the grounds on which petitions for review can be granted. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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J 9/10 – Partial Reimbursement
K’s Law – The ebook
J 9/10 – Partial Reimbursement 20 Aug 2012
About one year ago, we have seen decision J 25/10 (here) where the Legal Board found that a refusal to partially reimburse the examination fee could not be based on the mere assertion that the substantive examination had begun when the application was withdrawn. The present decision sheds more light on this matter. The applicants requested examination under A 94(1) EPC 1973 on June 6, 2007. The examination fee was paid with transaction date of 6 July 2007. An extended European search report (EESR) was communicated to them on November 14, 2007. Objections under A 54 and A 56 were raised. The applicants did not respond to the EESR either by filing amended application documents or observations on the objections raised. On December 15, 2008, a communication pursuant to R 70(2) was sent inviting the applicants to indicate, within 6 months, whether they wished to proceed further with the application. The applicants confirmed their intent to proceed further with the application on April 24, 2009. On May 28, 2009, the EPO issued form 2001A entitled “Communication pursuant to A 94(3) EPC” was issued inviting the applicants to rectify the deficiencies as mentioned in the EESR within a time limit of four months. In a letter dated July 13, 2009, the applicants withdrew their application on condition that 75% of the examination fee was to be reimbursed pursuant to Article 11(b) RRF. In a letter dated July 20, 2009, the formalities officer acting on behalf of the Examining Division (ED), the applicants were informed that a refund of 75% of the examination fee was no longer possible since substantive examination had already begun. The applicants were further requested to inform the EPO whether they wished to maintain their notice of withdrawal. In a letter filed on July 24, 2009, the applicants contested that substantive examination had begun. They argued that they had only received a formal computer generated letter (EPO Form 2001A) inviting them to respond to the European search opinion attached to the European search report. The applicants observed that such letters seemed to be issued after a fixed time period once the request for examination became effective. The applicants took the view that such formal maintenance of an earlier opinion in an unchanged situation did not involve material work on the case but was simply a formal act. They stressed that the intention of Article 11(b) RRF was to grant the applicant a partial refund where a withdrawal of the application at the examination stage saved work for the EPO. They assumed that the creation of EPO Form 2001A would take not more than 10 minutes work. Retaining all or part of the examination fee would be disproportionate to the insignificant work involved with the despatch of EPO Form 2001A. The applicants therefore asked for reconsideration of their request for refund. In a letter sent by Directorate 2.5.2 (Quality Management Support) on July 31, 2009, the applicants were informed that their request to reconsider the refund was to be refused. It was argued that the ED had de jure assumed responsibility for the examination of the application and had issued a first communication under A 94(3). In said communication, the objections raised in the European search opinion were maintained since the applicants had not availed themselves of the opportunity to reply to the EESR. Accordingly, the substantive examination had already begun at the time the application was withdrawn. The conditions for a refund under Article 11(b) RRF were therefore not met. In their response of 11 August 2009, the applicants asked for a decision open to appeal. On October 5, 2009, the ED issued a communication pursuant to A 113. Among other things, the applicants were informed that the ED intended to refuse their request for refund. The applicants were given an opportunity to comment. The applicants maintained their request for a refund and requested an appealable decision. 1082 | 3398
J 9/10 – Partial Reimbursement
K’s Law – The ebook
With decision of November 26, 2009, the formalities officer acting on behalf of the ED refused the request for refund of the examination fee at a rate of 75% pursuant to Article 11(b) RRF. The applicants filed an appeal against this decision. How did the Legal Board decide this matter? Reimbursement of the examination fee [2.1] The allowability of the present appeal hinges on the issue of whether the condition of the withdrawal of the European patent application, i.e. the entitlement to a refund of 75% of the examination fee according to the Rules relating to Fees, was met or not. [2.2] There are two conditions for the refund of the examination fee according to Article 10b(b) RRF (see the corresponding analysis for Article 11(b) RRF in force as of 13 December 2007 by J 25/10 [2 et seqq.]): First, the patent application must have been withdrawn after the ED had assumed responsibility. Second, the withdrawal request must have been filed before substantive examination has begun. [2.3] The first condition was indisputably met in the present case: The patent application was withdrawn on 13 July 2009, after the ED had assumed responsibility. [2.4] In the written procedure, the fulfilment of the second condition gave rise to the questions of what “substantive examination” is and what kind of act or acts amount to the beginning of “substantive examination”. Although, in view of the board’s observations presented during oral proceedings, the [applicants] did not maintain their interpretation of what constitutes the beginning of “substantive examination” according to Article 10b(b) RRF, this issue is relevant for the present case and needs to be considered. [2.5] It remains to be considered whether “substantive examination” has started with the communication of 28 May 2009 on EPO Form 2001A which referred to the content of the EESR. Relying – as argued by the [applicants] – on the amount or type of work done by examiners at the moment of withdrawal, deemed withdrawal, or refusal in order to determine the beginning of “substantive examination” would be contrary to legal security. The relevant point in time could not be determined by reference to objective and verifiable criteria. To ensure predictability and verifiability of the application of Article 10b(b) RRF, the beginning of “substantive examination” must be interpreted as requiring a concrete and verifiable act of the ED as regards “substantive examination” after having assumed responsibility for the examination of the application (J 25/10 [5-6]). Therefore, the modest amount of work involved in the despatch of EPO Form 2001A does not disqualify the communication as a concrete and verifiable act indicative of the beginning of “substantive examination” pursuant to Article 10b(b) RRF. The issue at present is, rather, whether the drawing up and posting of EPO Form 2001A is an act imputable to the ED in its composition pursuant to A 18(2), to which the examination of the application is entrusted. [2.6] In their written submissions, the [applicants] had alluded to the fact that EPO Form 2001A was generated automatically. Thus, the question arises of whether EPO Form 2001A is despatched with or without the involvement of an examiner acting in his capacity as primary examiner for the ED. [2.7] The Guidelines for Examination in the EPO of June 2005 were modified to take into account the introduction of the EESR with effect from 1 July 2005 (R 44a(1) EPC 1973). They merely set forth that if a (negative) search opinion had been issued, and the applicant had not replied to it (which was not mandatory according to R 86(2) EPC 1973), a communication referring to the search opinion and setting a time limit for reply was issued as the first communication under A 96(2) EPC 1973 (C-VI, 3.3). This information was maintained unaltered in the Guidelines for Examination in the EPO of December 2007 (C-VI, 3.5), except for the legal references being adapted to the revised EPC (R 62 and A 94(3)). The board has however ascertained on the basis of the Internal Instructions (C-VI, 2.4) that the EPO Form 2001A is despatched by a formalities officer in case the appellant has not responded to the EESR either by filing amended application documents, or by filing observations on the objections raised in the (negative) European search opinion. According to these Internal Instructions, upon receipt of a computer generated message and having updated the paper file and performed formal checks, the formalities officer completes the EPO Form 2001A and despatches it without the involvement of the notional primary examiner in the name of which EPO Form 2001A is, on its face, sent.
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J 9/10 – Partial Reimbursement
K’s Law – The ebook
[2.8] In the letter of 31 July 2009 sent by the Directorate 2.5.2 (Quality Management Support) it is however argued that the ED had de jure assumed responsibility for the examination of the application and had issued a first communication under A 94(3). This argument was maintained in the contested decision which found that the ED, on receipt of the [applicants’] reply under R 70(2), assumed responsibility for the examination of the application in suit and issued a first communication under A 94(3) (point 2 of the Reasons). The board agrees with the opinion that the ED assumed responsibility on receipt of the [applicants’] reply under R 70(2) on 24 April 2009 (point [2.3] above). It was thus within the sole competence of the examiners appointed to form the ED for the present patent application to issue a communication under A 94(3). The board does not agree with the finding of the contested decision that the competent ED, i.e. the primary examiner acting on behalf of the ED, issued such a communication. If a communication of a particular ED is to be legally valid, it must have been written on behalf of and represent the views of the members who were appointed to that division to examine the issues forming the subject of the communication. In general, the name and signature of the primary examiner entrusted with the work provide for the required identification and authentication (R 113(1)). R 113(2) permits the replacement of the primary examiner’s signature by a seal and to dispense with his name in case the communication was produced automatically by a computer. Nevertheless, the applicant and the public in general must be able to ascertain that the communication has been issued on behalf of, and represents the views of, the members of the ED. There is, however, no indication in the present file that the appointed primary examiner actually authenticated the communication under A 94(3) before it was despatched by the formalities officer. Therefore, the communication cannot be attributed to the ED, but only to the formalities officer the name of which is indicated on EPO Form 2001A. The formalities officer, on the other hand, had no power to issue a communication under A 94(3) EPC on the ED’s behalf. Such power has not been transferred to formalities officers by R 11(3) EPC in conjunction with the Decision of the President of the EPO dated 12 July 2007 concerning the entrustment to non-examining staff of certain duties normally the responsibility of the examining or opposition divisions (Special edition No. 3, OJ EPO 2007, 106). The corresponding older provisions are R 9(2) EPC 1973 in conjunction with the Notice from the Vice-President of DG 2 of the EPO dated 28 April 1999 concerning the entrustment to non-examining staff of certain duties normally the responsibility of the examining or opposition divisions (OJ EPO 1999, 504, referring to OJ EPO 1984, 317). Point 5 of the Decision of 12 July 2007, applicable in the present case, concerns communications under A 94(3) regarding formal deficiencies set forth in the legal provisions enumerated in points 1 to 4 of said Decision. None of these legal provisions is pertinent in the present case. Thus, the formalities officer, although acting in good faith, had no power to issue the present communication pursuant to A 94(3) EPC. As a consequence, the EPO Form 2001A despatched on 28 May 2009 cannot be considered to have the legal effect of a communication pursuant to A 94(3) sent on behalf of the competent ED. [2.9] It follows from the previous considerations that the communication of 28 May 2009 on EPO Form 2001A did not constitute an act of the ED pertaining to the examination in accordance with A 94(3). Hence, the communication of 28 May 2009 cannot be regarded as the beginning of “substantive examination” pursuant to Article 10b(b) RRF. There is no indication in the file regarding any other step of the ED pertaining to the examination of the application No. 07109768.7 which had been taken before the receipt of the [applicants’] withdrawal on 13 July 2009. In the absence of any indication pointing to the contrary, it has to be taken that the ED had indeed not taken any action which amounted to a start of the substantive examination. Therefore, the second condition for the refund of the examination fee according to Article 10b(b) RRF was met. In these circumstances, the decision under appeal must be set aside and the appellant is entitled to a refund of the examination fee at a rate of 75%. Reimbursement of the appeal fee [3.1] The [applicants] argued that the despatch of the communication of 28 May 2009 by a person who was not entitled to act constituted a procedural violation. In order to render the reimbursement of the appeal fee equitable, a causal link must exist between the alleged procedural defect and the decision of the department of the first instance that necessitated the filing of an appeal (T 388/09 [6]). Such causal link has not been substantiated by the appellant, nor was it evident from the circumstances of the present case. The alleged procedural defect of the communication of 28 May 2009 would have been relevant, if the application had been refused on the basis of said communication. However, in the present case, the procedural defect of the communication of 28 May 2009 was a preliminary finding of fact relevant for the determination of the beginning of “substantive examination” pursuant to Article 10b(b) RRF. At 1084 | 3398
J 9/10 – Partial Reimbursement
K’s Law – The ebook
most, the submission was an alternative line of argument to the [applicants] main contention that the beginning of “substantive examination” requires substantial or significant work of examination be done. [3.2] Even if the procedural defect of the communication of 28 May 2009 had been the sole ground of appeal, there would be no procedural violation, which is a prerequisite for the reimbursement of the appeal fee. Although the formalities officer’s conclusion regarding the legal effectiveness of the communication of 28 May 2009 could not be confirmed by the board, this is, however, a matter of consideration and appreciation of facts, i.e. a matter of judgment. The formalities officer’s error of judgment neither amounts to a grave abuse of discretion in the appreciation of facts nor constitutes a substantial procedural violation. [3.3] The [applicants] further submitted that delegating to formalities officers the power to decide on the issue of refund of the examination fee pursuant to Article 10b RRF was ultra vires, because this duty could not be transferred to employees who are not technically or legally qualified examiners pursuant to R 11(3), since such a decision involved difficult legal questions as was evident in the present case. [3.4] Although this submission constituted a complete change of the [applicants’] case at oral proceedings, the board, exercising its discretion pursuant to Article 13(1) RPBA, admitted this late filed submission. The [applicants’] argument nevertheless fails for the following reasons: [3.5] Rule 11(3) EPC together with Article 1, point 21, of the decision of the President of the European Patent Office dated 12 July 2007 (Special edition No. 3, OJ EPO 2007, 106) entrusts formalities officers with the duty to decide on requests for refund of fees, with the exception of the European search fee, the fee for appeal and the fee for petitions for review. The formalities officer was acting within the area of competence assigned to him by this decision. Contrary to the [applicants’] assertion, decisions on requests for reimbursement of the examination fee pursuant to Article 10b(b) RRF do not concern matter that involves technical and legal difficulties. Assessing the conditions for a refund of the examination fee according to Article 10b(b) RRF requires first and foremost the appreciation of facts, since the beginning of “substantive examination” referred to in Article 10b(b) RRF must be interpreted as referring to a concrete and verifiable act of the ED in view of examination after having assumed responsibility for the examination of the application (point [2.5] above). Neither the [applicants’] disagreement with the interpretation by the formalities officer of Article 10b(b) RRF, nor issues regarding the interpretation of the legal provisions arising in an individual case are tantamount to difficult legal considerations being involved as such in the matter entrusted to formalities officers. Therefore, the delegation complies with the requirements set forth in the opinion of the Enlarged Board of Appeal G 1/02. The formalities officer was thus competent to take the decision under appeal. This finding is in conformity with the decision J 25/10 in which the power of formalities officers to decide on requests for a refund was implicitly acknowledged even though the interpretation of Article 11(b) RRF was contested in the cases under consideration. This finding is also in line with comparable decisions of the Legal Board of Appeal (J 14/07; J 9/83). [3.6] For the considerations given above, the appellant’s request for reimbursement of appeal fees is refused. NB: The Board also provided a headnote: A communication pursuant to A 94(3) on EPO Form 2001A which is automatically generated by a computer and posted by a formalities officer without the involvement of an examiner appointed to the ED does not constitute a legally effective act of the ED and cannot therefore be regarded as the beginning of “substantive examination” pursuant to Article 10b(b) of the Rules relating to Fees (inserted by decision of the Administrative Council of 10 June 1988, as last amended by decision of the Administrative Council of 15 December 2005). Should you wish to download the whole decision, please click here. The file wrapper can be found here.
1085 | 3398
T 192/09 – Some Kind Of Restriction
K’s Law – The ebook
T 192/09 – Some Kind Of Restriction 18 Aug 2012
This appeal was filed against the revocation of the patent under consideration by the Opposition Division. Claim 1 of the main request before the Board read: A formaldehyde-free aqueous binder composition comprising: a binder component (A) obtainable by reacting at least one alkanolamine with at least one carboxylic anhydride and, optionally, treating the reaction product with a base; and a binder component (B) which comprises at least one carbohydrate; wherein binder component (A) comprises the reaction product of at least one alkanolamine with at least one carboxylic anhydride in an equivalent ratio of amine and hydroxy groups (NH+OH) to carboxy groups (COOH) of at least 0.4; and wherein the equivalent ratio of amine and hydroxy groups (NH+OH) to carboxy groups (COOH) in the final binder composition, including binder components (A) and (B), is 2.0 or less. (my emphasis) The Board had something to say on the interpretation of this claim: [3.1] Claim 1 of the main request contains two (NH+OH)/(COOH) ratios: one referring to component A, the second referring to “the final binder composition, including binder components (A) and (B)”. [3.1.1] Component A is defined in the first part of claim 1 of the main request as being obtainable by reacting at least one alkanolamine and at least one carboxylic anhydride and in the second part as comprising the reaction product of the aforementioned compounds in an equivalent ratio of (NH+OH) groups to (COOH) groups of at least 0.4. From this wording it is ambiguous whether what is meant is the proportion of functional groups based on the starting materials or that present in the final product. [3.1.2] According to paragraph [0020] of the patent in suit, “In the preparation” of component A the proportion of alkanolamine and carboxylic anhydride is selected such that the (NH+OH)/(COOH) ratio is at least 0.4. This wording suggests that the ratio refers to the starting materials. [3.1.3] According to paragraph [0021] the properties of the final binder composition, including binder components (A) and (B), such as curing behaviour, durability and humidity resistance are determined by the total ratio of reactive groups present (emphasis of the Board). This text appears to refer to the final binder. [3.1.4] Thus on the one hand the description and claims appear to be referring to the ratio of functional groups in the starting materials, at least as far as the first component is concerned. However in another respect, the content of functional groups present in the final binder, i.e. the reaction product of these starting materials, is referred to. [3.1.5] The ambiguity in the claims is exacerbated by the use of the wording “comprising” indicating that other materials, also such containing OH, NH or COOH functional groups may be present. Among the “other components” permitted are, according to paragraph [0033] of the patent, ß-hydroxyalkylamides, i.e. a compound containing hydroxy groups, citric and adipic acids, i.e. components containing carboxyl groups. The presence of any such compound would clearly affect the (NH+OH)/(COOH) ratio. [3.1.6] The examples do not assist in clarifying the matter. Examples 1-4, disclosing the preparation of the binder component A, report the quantities of starting materials employed and also give the ratio of functional groups in the product “obtained”. However, the latter is identical to the ratio of functional groups as calculated on the basis of the amounts of starting materials employed. Since a reaction would imply that the functional groups in the starting materials have been consumed – otherwise there would be no reaction – it appears that the information in the examples does not in fact relate to the final product but to the starting materials. [3.1.7] To prepare the final binder in the examples a commercial carbohydrate component is added, identified as “Cerestar® 01411”. According to paragraph [0030] of the patent in suit this is a composition of 3% dextrose, 12% maltose, 16% maltotriose and 69% “higher sugars”. It is also reported in paragraph [0051] that this material has a dextrose equivalent of 30. This information is insufficient to disclose the content of functional groups, especially OH groups in the carbohydrate since 69% of the composition of that carbohydrate component is 1086 | 3398
T 192/09 – Some Kind Of Restriction
K’s Law – The ebook
unknown. Furthermore it is not even indicated on what the percentages are based (mole, mass, volume?). The reported dextrose equivalent has not been demonstrated to provide, either directly or indirectly, the missing information. On the contrary, the dextrose equivalent is a measure of the reducing power of the sugar, i.e. relates to the content of CHO groups but not to OH groups. This information was provided by the [opponent], referring to a Wikipedia extract, and was not contradicted by the [patent proprietor]. [3.1.8] It is a technically sensible interpretation that the (NH+OH)/(COOH) ratio relates to the final product according to the wording of the claims. The interpretation that the ratio refers to the starting materials would not only go against the wording of the claims, but is also not supported by any information that could be obtained from the description and examples, in particular as regards the presence of other components. Furthermore, the Board doubts that it would be “technically sensible” to define a two component system by features which would no longer be present therein, such as the proportions of starting materials of one of the components thereof. [3.1.9] The consequence of all this is that, although it is clear that the ratios specified in the claim impose a restriction on the subject matter thereof, in particular on the quantities of the compounds used in the binder, the precise limits and nature of this restriction are unclear. As a result the only possible interpretation of the claims that is consistent with the wording thereof is that there is some kind of restriction on the proportions of compounds present, but not what this restriction actually is. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1743/09 – Open Literature
K’s Law – The ebook
T 1743/09 – Open Literature 17 Aug 2012
In the present case the patent proprietors tried to experimentally establish sufficiency of disclosure. So far, so good. Unfortunately, they oversaw an important aspect: that sufficiency may be a function of time. [2.1] In reply to the summons to oral proceedings before the Opposition Division (OD) the [patent proprietor] filed documents D34 and D35 as evidence for the routine experimentation mentioned in the patent in suit by which the skilled person would be able to determine the values for the multiplication factors and the factor B. The OD decided not to admit these documents into the proceedings for the reason that “the students (who developed the experimental protocols for the routine experimentation, annotation by the Board) were allowed to use any open literature available to them including also publications after the priority date of the presently disputed patent”. In addition, the OD took the view that these documents were not prima facie highly relevant, because only theoretical procedures were described which had not been put into practice […]. The decision not to admit these documents was challenged by the [patent proprietor]. [2.2] If the way in which a department of first instance has exercised its discretion on a procedural matter is challenged in an appeal, it is not the task of the Board of Appeal to review all the facts and circumstances as if it were in the place of the first instance, and to decide whether or not it would have exercised such discretion in the same way. Thus, a Board of Appeal should only overrule the way in which a department of first instance has exercised its discretion if it comes to the conclusion that either the department of first instance has not exercised its discretion in accordance with the right principles, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limit of its discretion (G 7/93 [2.6]). [2.3] In the present case the Board finds that the department of first instance has exercised its discretion correctly and in a reasonable way. The patent in suit refers in general to routine experimentation for the determination of the multiplication factors and the factor B without providing any information as to how the experimentation should be performed. Documents D34 and D35 were filed as evidence that it was possible to devise routine experimentation in order to determine the required factors with only the information given in the patent in suit and common general knowledge. The documents with the title “Exercise in “Routine Experimentation”“ consist of two parts. In the first part the background is explained. The problem is stated and the students are invited by Mr Scott Baker to develop an experimental protocol for the determination of individual effectiveness factors in the ratio Q. The second part provides the students’ answers. According to the instructions given to them by Mr Baker, the students were allowed to use “the open literature including textbooks and their general knowledge in chemistry, catalysis, reaction engineering and experimental design”. In other words, they were free to access any information available to them at the time they devised the experimental protocols, including the electronic file of the patent in suit, and to rely on general knowledge, which may not have been available to the person skilled in the art at the priority date of the patent in suit. The protocols were devised in 2009, 8 years after the priority date of the patent in suit. It is not apparent from the instructions given to the students that they had been made aware of the significance of this date for the development of their experimental protocols. Nor is there any indication in the students’ responses on which information or general knowledge they relied. Thus, admitting these documents into the opposition proceedings would have involved the risk of relying on information or knowledge which might have been acquired after the priority date of the patent in suit. The Board therefore concludes that for this reason alone the OD was within its right to refuse to admit them into the proceedings. In view of the above, there was no need to decide on the admissibility of declarations by the students concerning this issue which were submitted by the [patent proprietor] for the first time a week before oral proceedings before the Board. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1859/08 – Currently Being Explored
K’s Law – The ebook
T 1859/08 – Currently Being Explored 16 Aug 2012
This is an appeal against a refusal of an application by the Examining Division (ED), for lack of clarity and lack of novelty. Independent claims 1 and 10 under consideration read: 1. Use of an anti-ErbB2 antibody in the preparation of a medicament for treatment to provide clinical benefit as measured by increased time to disease progression of malignant breast cancer characterised by overexpression of ErbB2 in a human patient, wherein said antibody binds to epitope 4D5 within the ErbB2 extracellular domain sequence as determined by a cross-blocking assay using said antibody and antibody 4D5 obtainable from deposit ATCC CRL 10463, and wherein the medicament is for combined administration of the antibody with a chemotherapeutic agent other than an anthracycline derivative and not in combination with an anthracycline derivative, wherein said chemotherapeutic agent is a taxoid, wherein the combined administration has clinical efficacy as measured by determining time to disease progression and reduced myocardial dysfunction compared with combined administration of the antibody and anthracycline derivatives. 10. An anti-ErbB2 antibody for use in a method of treatment to provide clinical benefit as measured by increased time to disease progression of malignant breast cancer characterised by overexpression of ErbB2 in a human patient, wherein said antibody binds to epitope 4D5 within the ErbB2 extracellular domain sequence as determined by a cross-blocking assay using said antibody and antibody 4D5 obtainable from deposit ATCC CRL 10463, and wherein the method comprises combined administration of the antibody with a chemotherapeutic agent other than an anthracycline derivative and not in combination with an anthracycline derivative, wherein said chemotherapeutic agent is a taxoid, wherein the combined administration has clinical efficacy as measured by determining time to disease progression and reduced myocardial dysfunction compared with combined administration of the antibody and anthracycline derivatives. The Board found the claims to be clear and then examined their novelty: [6] [… I]ndependent claims 1 and 10 are in the form of medical use claims (“Swiss type” form or A 54(5) EPC 2000-type, respectively), where the novelty is derived from the intended medical use (see the “Case Law of the Boards of Appeal”, 6th edition 2010, Chapter I.C.5.2.4). As a consequence, all the technical features of the therapeutic indication specified in the claims must be taken into account when considering whether or not the claimed subject-matter is novel. [7] In short, the intended medical use is the provision of a clinical benefit as measured by increased time to disease progression of malignant breast cancer characterised by overexpression of ErbB2 in a human patient, and wherein the method comprises combined administration of an anti-ErbB2 antibody with a taxoid to a human patient. For the purpose of assessing novelty, it thus has to be examined whether or not the same therapeutic effect is directly and unambiguously derivable from a prior art document, upon using the same combination therapy in a human patient. [8] It should be noted that the language “wherein said chemotherapeutic agent is a taxoid” in independent claims 1 and 10 […] requires that the chemotherapeutic agent to be used together with the antibody must be a taxoid. This requirement of necessity excludes the possibility that the chemotherapeutic agent be an anthracycline. By implication, any (deleterious or otherwise) side effect linked to anthracyclines is also excluded by the claim language. In view of this, the further features in independent claims 1 and 10 represented by the wording “a chemotherapeutic agent other than an anthracycline derivative and not in combination with an anthracycline derivative … wherein the combined administration has clinical efficacy as measured by determining … reduced 1089 | 3398
T 1859/08 – Currently Being Explored
K’s Law – The ebook
myocardial dysfunction compared with combined administration of the antibody and anthracycline derivatives” may be overlooked by the board for the purpose of assessing the novelty. The ED came to the same conclusion, albeit for other reasons […]. Moreover, anthracyclines have been known to be cardiotoxic since the sixties of the last century. Thus, the feature “...reduced myocardial dysfunction compared with combined administration of the antibody and anthracycline derivatives” is an implicit “non-hidden” feature. [9] The ED held that the claimed subject- matter lacked novelty over document D1 because this document disclosed […] the treatment of cancer, particularly metastatic breast cancer, with the recombinant humanised monoclonal antibody (rhuMoAb) Her2 and the taxoid paclitaxel. Monoclonal antibody rhuMoAb Her2 exhibits the same capacity as murine monoclonal antibody 4D5 of targeting epitope 4D5 within the ErbB2 extracellular domain sequence […]. [10] [… D]ocument D1 describes investigations of the effects of antibody rhuMoAb Her2 combined with chemotherapy with the taxoid paclitaxel or with the anthracycline doxorubicin in monolayer culture soft agar (in vitro) or in xenografts of human breast cancer transplanted into nude mice (in vivo). No results are reported for the in vitro experiment. As regards the in vivo experiment, it is reported […] that the antitumor activity was markedly better than an equipotent dose of doxorubicin and antibody 4D5, and that disappearance of wellestablished xenografts took place. [11] However, both studies did not involve humans, whereas the claims before the board are directed to the treatment of breast cancer in a human patient. Therefore, this passage of document D1 is not novelty-destroying for the claimed subject-matter. [12] [… In] document D1, it is stated that a combination therapy based on an anti-ErbB2 antibody (anti“p185HER2”)and the taxoid placlitaxel is “currently being explored”. [13] However, a mere statement that a combination therapy is being explored does not amount to a noveltydestroying disclosure of what is claimed in claim 1, because claim 1 is a medical use claim which includes, as a technical feature of the claim, the achievement of a clinical benefit in breast cancer patients as measured by an increased time to disease progression. The present “currently being explored” situation, where no clinical benefit is disclosed, falls within the rationale of decisions T 158/96 and T 715/03. According to these decisions, if a prior art document discloses clinical investigations such as phase I, II or III studies (or states that these investigations are ongoing), but the document fails to disclose the final result of these studies, this document is not novelty-destroying. [14] The ED argued that by applying the combined therapy of document D1, one would inherently come to the claimed effect, which could not render a known therapy novel. However, decision G 2/88 [10.1] states: “Under A 54(2) EPC the question to be decided is what has been “made available” to the public: the question is not what may have been “inherent” in what was made available”. Therefore, while it may be true that the claimed effect is inherent once applying the claimed therapy, the decisive question to be answered by the board remains whether or not this effect was a “hidden” one or was accessible to the skilled person before the priority date of the patent in suit. [15] A further passage of document D1 relied upon by the ED for denying novelty […] refers to an earlier phase II clinical trial and describes a planned phase III clinical trial: “Results from the phase II studies and the activity of rhuMoAb HER2 against xenografts when given in combination with doxorubicin and paclitaxel have been encouraging. These positive results have led to the design of a phase III multinational study of chemotherapy in combination with rhuMoAb HER2 in patients with HER2-overexpressmg breast tumors who have not received prior chemotherapy for metastatic disease (Figure 2).” [16] In paragraph 1.2.b2 of the decision under appeal, the ED considered that the expression “Results from the phase II studies” […] did in fact relate to the claimed combination therapy (rhuMoAB Her2 combined with paclitaxel) administered to human patients. It also argued that the results of this study were encouraging to the extent that they led to the start of a phase III multinational investigation prior to the priority date of the present application. 1090 | 3398
T 1859/08 – Currently Being Explored
K’s Law – The ebook
Therefore, because it was disclosed in document D1 that these phase II studies had a positive outcome, i.e., a pharmacological effect was achieved, the first instance denied that the rationale of decisions T 158/96 and T 715/03 […] applied to both the phase II clinical and the planned phase III clinical trial referred to in the passage of document D1 cited in point [15] supra. [17] The assumption by the first instance that the phase II trials had used the claimed combination has been a key factor in its finding of lack of novelty. The board will thus deal with elucidating the nature of these “encouraging” phase II studies referred to in the first sentence of the paragraph highlighted in point 15 supra. [18] Document D1 describes a phase II trial with rhuMoAb HER2 […]. This study does not use any combination chemotherapy, as only the antibody is referred to. A second, different, phase II trial is described […]. This study relates to the anti-ErbB2 antibody taken in combination with cisplatin in human patients. However, cisplatin is not a taxoid. [19] There are two references to the phase II trials cited in document D1 […]. Upon consulting documents J and K, it becomes clear that the former relates to the rhuMoAb HER2 phase II clinical trial where the antibody is used as a single agent, whereas the latter document describes a phase II clinical trial wherein the only agents used were rhuMoAb HER2 and cisplatin (not a taxoid). [20] In view of this, the board must agree with the appellant’s view that none of the phase II trial described in document D1 uses an anti-ErbB2 antibody in combination with a taxoid, as required by present claims 1 and 10. Thus, the wording “encouraging” could not relate to this combination. In any case, it cannot be derived from document D1 that the encouraging results translated into a clinical benefit as measured by increased time to disease progression. [21] As for the planned or ongoing phase III clinical trial, it cannot be directly and unambiguously derived from these trials […] that a therapeutic effect is obtained, let alone one translating into an increased time to disease progression. Moreover, since document D1 fails to disclose any encouraging phase II trial using an anti-ErbB2 antibody in combination with a taxoid, the rationale of decisions T 158/96 and T 715/03 […] applies also to the planned phase III clinical trial referred to in the passage of document D1 cited in point [15] supra, which is not noveltydestroying for claims 1 and 10. [22] In conclusion, document D1 is not novelty-destroying for the subject-matter of claims 1 and 10 and dependent claims 2 to 9 and 11 to 14. [23] Turning to the remaining documents before the board, both documents D2 and D3 deal with a rodent xenograft model wherein the antibody MoAb 4D5 (against the HER2 receptor) is used in combination with paclitaxel or doxorubicin chemotherapy. There is no description in these documents of the treatment of a human patient, nor any disclosure of a biological effect translating into an increased time to disease progression. [24] Therefore, the claims of the main request satisfy the requirements of A 54. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1091 | 3398
T 1115/09 – Epsilonics
K’s Law – The ebook
T 1115/09 – Epsilonics 15 Aug 2012
Both the patent proprietor and the opponent appealed against the decision of the Opposition Division (OD) to maintain the patent in amended form. Claim 1 of the main request before the Board (identical to claim 1 of the patent as granted) read: Process for the purification from organic impurities of an inert gas stream exiting a solid state polycondensation reactor of an aromatic polyester resin, wherein the gas is added with oxygen or gas containing oxygen and passed on a catalyst bed-containing Pt or a mixture of Pt and Pd supported on an inert porous support at a temperature comprised between 250°C and 600°C, wherein the quantity of the added oxygen is in such an excess over the stoichiometric amount referred to the impurities present in the gas that the gas at the exit of the catalytic bed contains more than 10 ppm oxygenand up to 250 ppm, and the purified gas is recycled to the reactor after drying to remove the water formed in the oxidation stage, characterised in that a deoxidation stage with hydrogen is not present before recycle of the purified gas to the reactor. (my emphasis) Claim 1 of auxiliary request 1 differed from claim 1 as granted in that the gas at the exit of the catalytic bed is defined as containing “a quantity of oxygen comprised between 10 and 250 ppm” (my emphasis). In claim 1 of auxiliary request 2, the gas at the exit of the catalytic bed was defined as containing “from 10 to 250 ppm of oxygen, except 10 ppm”. (my emphasis) The Board found these requests to lack novelty over document D1: Main request [2.1] Document D1 (claim 1) discloses a process for the purification of an inert gas from impurities formed of organic compounds, where the gas added with oxygen or gas containing oxygen is circulated on a catalyst bed containing Pt or mixtures of Pt and Pd supported on an inert porous support at temperatures from 250° to 600 °C, the quantity of oxygen used being stoichiometric with respect to the organic impurities or in such an excess that the gas at the outlet of the oxidation reactor contains no more than about 10 ppm of oxygen (my emphasis). D1 (claim 3) further specifies the gas to be purified as coming from a solid-state polycondensation reactor of a polyester resin and that the gas, after purification, is recycled to the solid-state polycondensation reactor after a drying treatment to eliminate the water formed in the oxidation stage. It is undisputed that the sole issue to be decided is whether D1 discloses a quantity of oxygen in the gas exiting the catalytic bed which falls within the terms of claim 1 or not, and in particular whether an amount of “no more than about 10 ppm of oxygen” falls within the range “more than 10 ppm oxygen and up to 250 ppm”. [2.2] In this respect, it is a generally applied principle for concluding lack of novelty that there must be a direct and unambiguous disclosure in the state of the art inevitably leading the skilled person to subject-matter falling within the scope of what is claimed. [2.3] D1 discloses that the gas at the outlet of the catalytic bed contains no more than about 10 ppm oxygen, i.e. a range of oxygen concentrations ending with the upper value of “about 10 ppm”. According to established case law of the boards of appeal (see e.g. T 240/95 [4.2]), the disclosure of a range is an explicit disclosure of the end values. In the present case it follows by analogy that the end value “about 10 ppm” is explicitly disclosed in D1. [2.4] The sole question which remains to be answered is whether this end value falls within the range defined in claim 1 at issue, i.e. “more than 10 ppm oxygen and up to 250 ppm”. In the board’s view, in the absence of a clear definition in document D1 of the relative term “about”, the expression “about 10 ppm of oxygen” is to be given its broadest meaning, namely “10 ± ε ppm of oxygen”, with 1092 | 3398
T 1115/09 – Epsilonics
K’s Law – The ebook
ε denoting - as in mathematics - a small undefined positive quantity. It follows that the upper end value “about 10” can be read as: “10-ε”, “10” or “10+ε”, which means that document D1 directly and unambiguously discloses a list of three ranges ending respectively with “10-ε”, “10” and “10+ε”. As the value “10+ε” is synonymous with the value “more than 10”, the choice of the latter as the lower end of the range defined in claim 1 thus boils down to the selection of one discrete value within the list of three: “10-ε”, “10” and “10+ε” disclosed in D1. [2.5] Following the case law (e.g. T 730/01 [2.3]) according to which the selection of one item within one single list of equivalent alternative items does not confer novelty, in the present case the board concludes by analogy that the disclosure of document D1 inevitably leads to subject-matter falling within the scope of protection of claim 1 at issue. [2.6] [T]he patentee argued that document D1 taught to work with less than 5 ppm (as in the Example) and even with no oxygen (as in the statement at page 6, paragraph 4: “the gaseous stream at the reactor outlet contains only nitrogen, carbon dioxide and water”). In this context the skilled person would not consider carrying out the process of document D1 with more than 10 ppm oxygen, because there was a risk of degradation of the PET polymer. The board cannot accept these arguments because even if document D1 discloses that the risk of degradation is limited with a gas leaving the oxidation reactor containing less than 5 ppm oxygen, there is no limitation at all in the claims – let alone in the description – regarding the degree of degradation which might be accepted with the claimed process. Furthermore, it is directly and unambiguously disclosed in D1 […] that a maximum excess of about 10 ppm of oxygen is tolerated at the oxidation reactor outlet. It follows that the skilled person has no reason to worry about a risk of degradation of the PET polymer within the whole range claimed and he would therefore indeed consider also carrying out the process of document D1 with a gas containing 10+ε ppm of oxygen at the oxidation reactor’s outlet. [2.7] For the above reasons, claim 1 does not meet the requirements of A 54(1) and (3) (document D1 being state of the art under the meaning of A 54(3)). Auxiliary request 1 [3.1] Claim 1 of this request defines the quantity of oxygen in the gas exiting the catalytic bed as being “comprised between 10 and 250 ppm”. [3.2] According to the established case law of the boards of appeal, the wording used for defining the above range is to be considered as an explicit disclosure of the end values “10” and “250”. The end value “10” being explicitly disclosed in D1 as one of the upper end values of the oxygen concentration range […], the subject-matter of claim 1 at issue lacks novelty under A 54 (1) and (3). [3.3] The board observes that even if – as argued by […] the patentee – one would consider the value “10” to be excluded by the wording used in above claim 1, the scope of protection of claim 1 would then be the same as that of claim 1 of the main request, since the lower end value of the range would then be the same - apart from the semantic difference - as in claim 1 of the main request. The subject-matter of claim 1 of the first auxiliary request lacks novelty under A 54 (1) and (3). Auxiliary request 2 [4.1] Claim 1 of this request defines the gas at the exit of the catalytic bed as containing “from 10 to 250 ppm of oxygen, except 10 ppm”. [4.2] The board observes that – apart from the semantic difference of wording – the lower end value of this corresponds to the one in claim 1 of the main request (“more than 10”) and so, for the same reasons that apply to claim 1 of the main request, the present request is to be rejected under A 54 (1) and (3). The patent was finally revoked. Should you wish to download the whole decision, just click here.
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T 1115/09 – Epsilonics
K’s Law – The ebook
The file wrapper can be found here.
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T 1014/07 – Motivation Matters
K’s Law – The ebook
T 1014/07 – Motivation Matters 14 Aug 2012
This is an appeal against the refusal of an application by the Examining Division (ED). The Board did not like the way in which the ED had found claim 1 on file to lack an inventive step: [9] In the decision under appeal the ED holds that the subject-matter of claim 1 is obvious on the basis of the reasoning quoted in the present decision […]. In brief, the ED identifies the difference between the relevant disclosure in the closest prior art document D4 and the claimed invention, finds that prior art documents D1, D2, D6 and D7 disclose the “missing” features and then states that “[a] skilled person willing to reproduce the invention and facing the disclosures of the cited documents would combine the process disclosed in D4 with the process disclosed in D6 (or D1, D2 and D7) in order to arrive at the proposed process”. [10] Thus, essentially, the ED considers the subject-matter of claim 1 as obvious for the reason that each of the claimed features has been disclosed in the prior art. However, the mere existence of teachings in the prior art is not a conclusive reason for explaining that the skilled person would have combined these teachings in order to solve the problem that he or she is confronted with (see Case Law of the Boards of Appeal, 6 th edition 2010, I.D.8.2.1, in relation to combination inventions). [11] As a further reason for denying an inventive step for the claimed subject-matter the ED indicated that “[t]he mere fact that a known biochemical step has been added to a known chemical process of oxidation cannot be considered in itself inventive in the absence of a special feature or advantage of the combined use of biochemical and chemical processes” ([…] emphasis as in the decision under appeal). [12] However, as observed above in point [10] for the determination of the obviousness or non-obviousness of claimed subject-matter, it is not decisive that teachings are known – it must be decided whether or not the skilled person would have combined the known teachings such as to arrive at the claimed subject-matter when attempting to solve the underlying technical problem. Thus, in contrast to the ED’s view, the combination of known teachings may result in non-obvious subject-matter, namely when the skilled person is not motivated, for example by promptings in the prior art, to make such a combination. Under these circumstances the presence of any special effect arising from the combination is not necessary to establish an inventive step. [13] It follows from the observations in points [9] to [12] above that the reasons given in the decision under appeal do not persuade the board that the subject-matter of the present main request lacks an inventive step. [14] Hence, the appellant’s request to set aside the decision under appeal […] is granted. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1688/08 – Language Skills
K’s Law – The ebook
T 1688/08 – Language Skills 13 Aug 2012
The home of the skilled person This is an appeal against the refusal of an application by the Examining Division (ED). According to the ED, the subject-matter of independent claim 3, which was directed at a 1 x N optical coupler, did not comprise an inventive step over the combined teachings of GB application D5 and Japanese application D6. A skilled person faced with the problem of determining how the device disclosed in document D6 worked, would seek a translation or, should this not be available, similar devices with a functional description. Document D5 discloses such a device excepting use of an annular mixer guide 45 in place of an annular core. Document D5 thus enabled a skilled person to understand that the function of a coupler according to document D6 had to be based on multimode interference. The Board did not find this approach persuasive: [3] In relation to claim 3, the division assumed that the skilled person knows that a device according to document D6 is based on the interference of different modes because it works with high efficiency, as set out in the corresponding English abstract, but did not explain how such knowledge relates to a number of features in the claim, for example, to the radial single mode. In fact, in the context of high efficiency, all that the abstract of document D6 discloses is simply “To reduce the insertion loss, to equalize the photo coupling, and to execute it with high efficiency, by using a repeating rod having a cylindrical optical conductor part whose thickness is similar to the core diameter of an input/output fibre”. Moreover, the division considered it not possible to determine scaling from the drawings of patent applications as they are typically schematic and of illustrative nature only. In other words, the division could determine neither core diameters nor fibre lengths from the drawing and did not show how, without knowledge of the subject matter claimed, the skilled person’s knowledge provides such features. [4] Since the division did not find all the claimed features in Japanese-language document D6 and assumed that the skilled person did not understand Japanese, the division removed inconsistencies with the claimed subject matter by reference to the teaching of document D5. This approach is not very convincing because the language 1096 | 3398
T 1688/08 – Language Skills
K’s Law – The ebook
of a patent document alone cannot be decisive for the question of whether or not the skilled person considers the technical content of that document. Otherwise, there would be a differentiation between skilled persons according to the language(s) they speak. This would be against the objective assessment of the inventive step. (See, by analogy, T 426/88 [6.4]) In the board’s view, it is not credible either that the skilled person would have believed that another document, such as document D5, having only some features not dissimilar to those actually disclosed in document D6, would correspond to the disclosure of document D6 in relation to subject-matter claimed. This lack of credibility leads to a gap in the chain of reasoning of the ED, the gap then leading the board not to be persuaded by the case of the division. [5] The board does not disagree with the case of the appellant on inventive step and is therefore satisfied that the subject matter of independent claims 1 to 3 can be considered to involve an inventive step. [6] In view of the foregoing and since the board sees no other bar to grant of a patent, the board considers it appropriate to exercise powers within the competence of the first instance and order grant of a patent (A 111(1)). NB: T 1157/06 is another relevant decision on this issue; a partial translation is available here. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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Interpretative Spotlight: “Plurality”
K’s Law – The ebook
Interpretative Spotlight: “Plurality” 11 Aug 2012
The opposed patent was directed at a method of simultaneously monitoring the expression of a multiplicity of genes. Step (b) of this method consisted in “providing a plurality of different probes for analysis of each of the RNA transcripts that are to be monitored; said probes being immobilized as an array on a surface of a substrate in known locations at a density greater than 60 different probes per cm2; said array probes including match and control probes; the array comprising more than 100 different probes, each probe attached to the surface through a single covalent bond”. The Opposition Division found claim 1 as granted to violate A 123(2) and maintained the patent on the bases of the first auxiliary request. In claim 1 as maintained step (b) read: “providing a plurality of different probes for analysis of each of the RNA transcripts that are to be monitored; said probes being immobilized as an array on a surface of a substrate in known locations at a density greater than 60 different probes per cm 2; said array probes including control probes and a plurality of match probes; the array comprising more than 100 different probes, each probe attached to the surface through a single covalent bond;” (my emphasis) Both the patent proprietor and the opponend filed appeals. Claim 1 of the main request before the Board comprised a step (b) that read: “providing a plurality of different probes for analysis of each of the RNA transcripts that are to be monitored; said probes being immobilized as an array on a surface of a substrate in known locations at a density greater than 60 different probes per cm 2; said array probes including control probes and, for each of the RNA transcripts that are to be monitored, a plurality of match probes; the array comprising more than 100 different probes, each probe attached to the surface through a single covalent bond;” (my emphasis) The Board found this request not to comply with the requirements of A 123(2): [6] The passages of the application as filed cited by appellant I as providing a basis for the amendment introduced into part(b) of claim 1 of the Main Request refer to a “large numbers of probes” (cf. page 21, lines 13, 15, 19-20 and page 22, lines 9-10), to a very specific number of probes (cf. page 5, lines 15-17 and page 22, lines 6-8) or to probes in general without further definition (cf. page 34, lines 18-19, page 36, lines 10-11, page 37, lines 15-16 and page 38, lines 5-7, 11-12). None of these references contains the term “plurality” which is found only in the context of a computer-implemented method of monitoring expression of genes which is different from the method of claim 1 (cf. page 10, lines 21-30 and claims 65 and 73 of the application as filed). [7] The board agrees with [the patent proprietor] that the expression “a plurality” means “more than one” or “at least two” and thereby, it excludes a minimal embodiment containing only a single match probe; an embodiment considered by the OD to be embraced by the granted claims and to lack a formal basis in the application as filed […]. However, the Main Request embraces embodiments that make use of a limited low number of match probes, such as “at least two” or “more than one”, i.e. two, three, etc. Neither the references to “a large number of probes” nor those to a specific number of probes (“more than 10”, “most preferably more than 1000”, “at least 10”, etc.) provide a basis for embodiments comprising these limited low number of probes. Likewise, the references founds in the application as filed to probes in general have to be read in the light of these other references (“a large number of probes”, “more than 10”, etc.). The expression “a plurality” cannot be directly and unambiguously derived from these references to probes in general. [8] [The patent prorietor] has also referred to the expression “a multiplicity of probes” found in the application as filed in the context of methods for selecting and optimizing a set of probes. Although these methods are different from that of claim 1, [the patent prorietor] argues that it is directly derivable from the whole disclosure of the application as filed that these selected and optimized “multiplicity of probes” are to be used in the method of claim 1. Thus, the selected and optimized “multiplicity of probes” by the former methods are in a way equivalent to, and provide a basis for, the “plurality of probes” in the method of claim 1 […]. 1098 | 3398
Interpretative Spotlight: “Plurality”
K’s Law – The ebook
[9] The board cannot follow this argument. It is arguable whether all, some or only a few probes of these “multiplicity of probes” selected and optimized by the methods disclosed in the application as filed are, always and exclusively, to be used in the method of claim 1. In the absence of a clear disclosure linking, in a straightforward manner, these selection and optimizing methods with that of claim 1, the use of these “multiplicity of probes” indicated by [the patent proprietor] may well be obvious to the skilled person. However, according to the case law, obviousness is not a criterium for assessing whether subject-matter is supported by the application as filed. It is also not a question of reading the disclosure of the application as filed with a mind willing to understand but only of assessing whether the subject-matter is directly and unambiguously derivable from the application as filed, either explicitly or implicitly (cf. “Case Law of the Boards of Appeal”, 6 th edition, III.A.7.1, page 347). In the board’s view, this is not so in the present case. [10] Therefore, the Main Request is considered not to fulfil the requirements of A 123(2). Should you wish to download the whole decision (T 1509/09), click here. The file wrapper can be found here.
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T 1990/08 – Double Trigger
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T 1990/08 – Double Trigger 10 Aug 2012
The applicant filed an appeal against the refusal of its application by the Examining Division (ED). The ED considered that the requests on file did not comply with A 123(2), A 84 and A 56. The inventive step objection was based on documents D1 (a Japanese application) and D4 (a French application). The Board found the request before it to be allowable and then dealt with the request for reimbursement of the appeal fee: [7.1] The appellant argued that the ED committed a substantial procedural violation by not providing a translation of document D1, which justified the reimbursement of the appeal fee. […] [7.3] According to R 67, first sentence, EPC 1973 the appeal fee shall be reimbursed in the event of interlocutory revision or where the board of appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation. The board however finds that, even if the alleged procedural violation occurred in first-instance proceedings, it would not have been equitable to reimburse the appeal fee in the present case for the following reasons: In the contested decision the ED relied on document D1 to deny inventive step of the subject-matter of claim 1 of the main request then on file […]. However, the contested decision is also based on other reasons for refusing the main request then on file and contains reasons […] why claim 1 of the main request was not clear (A 84 EPC 1973) and why the subject-matter of that claim extended beyond the application as filed (A 123(2) EPC). Thus, even if the inventive step objection including the appraisal of document D1 in the decision were disregarded, the contested decision would still be negative and be reasoned, and an appeal including payment of the appeal fee would have been required in order to obtain a reversal of the first-instance decision. Hence the alleged procedural violation could not have been the immediate and only cause of the need to appeal and to pay an appeal fee. Moreover, if the board had found that the alleged procedural violation in relation to the ED’s finding on lack of inventive step had indeed occurred, such a violation would not have been considered by the board as fundamental, justifying a reversal of the decision under appeal and a remission of the case to the department of first instance. Thus, regardless of whether a substantial procedural violation occurred or not, the appellant, requesting that a patent be granted, had to appeal in order to obtain a reversal of the first-instance decision. Under these circumstances, a reimbursement of the appeal fee would not have been equitable in the present case and, therefore, the question whether any procedural violation was in fact committed by the ED can be left open. [7.4] In view of the above, the request for reimbursement of the appeal fee must be refused. Still, it would have been nice to tell us whether, in the opinion of the Board, the fact that no translation had been provided as such could have constituted a substantial procedural violation or not. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2294/08 – A Lack Of Adaptation
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T 2294/08 – A Lack Of Adaptation 9 Aug 2012
In this case both parties filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. The Board found the main request and auxiliary requests 1 to 4 – all directed at an array of rigid water-soluble washing containers made of a water-soluble polymer – to lack inventive step. Its decision to reject the remaining auxiliary requests was based on a ground that is not so common: [2.1] [The patent proprietor’s] fifth to seventh auxiliary requests that the patent be maintained in amended form are based on the corresponding sets of amended claims filed with its statement of grounds of appeal. No correspondingly adapted description has been filed during the appeal proceedings. The only description in the file concerning any of [the patent proprietor’s] auxiliary requests is the one directed to the present second auxiliary request, said last being the version upheld by the OD as the then first auxiliary request. [2.2] Claim 1 of the fifth auxiliary request differs from claim 1 of the second auxiliary request inter alia by the following features:
each container is made from a water-soluble receptacle part and is sealed by a water-soluble closure part; the receptacle part has side walls which terminate at their upper end in an outward flange, to which the closure part is sealingly secured; the polymer active in detergency being present in the wash in sufficient quantity to produce the required effect.
Claim 1 of the sixth auxiliary request differs from claim 1 of the fifth auxiliary request inter alia by the following additional features:
each container comprises a tablet formulated for delayed and/or sustained release of a material; each receptacle part defines two or more compartments and at least one compartment is made entirely or in part of said water-soluble polymer which when dissolved in water is active in detergency.
Claim 1 of the seventh auxiliary request differs from claim 1 of the second auxiliary request in that it is directed to a method of ware washing by using the array of claim 1 of the fifth auxiliary request. [2.3] As the array of all claims 1 of these auxiliary requests has been extensively modified over the array of claim 1 of the second auxiliary request, the above-mentioned description being adapted solely to the set of claims according to the second auxiliary request is obviously not compatible with these claims. Said description is thus not suitable to support the claims of the fifth to seventh auxiliary requests as required by A 84, second sentence. Already for this reason alone the patent cannot be maintained according to the appellants II’s fifth to seventh auxiliary requests. [2.4] In the statement of grounds of appeal [the patent proprietor] stated: “We will of course deal with the matter of amending the description in the usual way at the end Oral Proceedings (sic), dependent on the outcome”. [2.5] Since [the patent proprietor] decided not to be represented at the oral proceedings (OPs), there was no such corresponding amendment of the description to the claims of these requests. [3] The Board, in agreement with decision T 917/95 [5.2(ii)] considers that a patent proprietor who files new claims but no description adapted to these claims before OPs, and who is not represented at the OPs, cannot rely on the Board to postpone its final decision at the end of the OPs, in order to offer the patent proprietor the possibility to adapt the description to the claims. Article 15(3) RPBA states clearly that the Board is not obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party 1101 | 3398
T 2294/08 – A Lack Of Adaptation
K’s Law – The ebook
duly summoned who may then be treated as relying only on its written submissions. The latter do not contain anything that can be considered as a description appropriately adapted to these amended claims. The
patent
was
Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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revoked.
T 71/10 – Just An Option
K’s Law – The ebook
T 71/10 – Just An Option 8 Aug 2012
The opponent filed an appeal against the decision to maintain the opposed patent in amended form. In its notice of opposition, the opponent had objected to the amendment of expressions such as “:m”, “:L” and “:g” to “μm”, “μL” and “μg”. The Opposition Division did not find this argument persuasive:
In response to the statement of grounds of appeal filed on June 28, 2010, the patent proprietor vigorously objected to the arguments presented by the opponent against the correction. In another submission filed on December 16, 2011, the patent proprietor nevertheless proposed to come back to the original text.
In auxiliary request 1, on page 4, line 33 of the patent specification the term “μm” according to the granted patent was replaced, twice, by “:m”.
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T 71/10 – Just An Option
K’s Law – The ebook
The opponent objected to this amendment on the ground that it violated A 123(3). The Board would not accept this argument: [3.3] The amendments amount to a limitation of the definition of the monomer of each of steps a) and b) recited in the set of granted claims, i.e. divinylbenzene and N-methyl-N-vinylacetamide, respectively, thus leading to a limitation of the scope of the subject-matter claimed. Page 4, lines 33 of the granted patent reads “The polymer beads can have a diameter in the range of 3 to about 100 μm…” (emphasis by the Board) which implies that the limitation of the diameter is an optional feature of the polymer beads. Hence, an amendment of this passage cannot modify the scope of the subject-matter claimed. In decision T 142/05, it was considered that the deletion in the description of an important desired property of the claimed subject-matter led to an extension of the scope of protection. That is, however, a different situation from the case at issue in which the diameter range of the beads is an optional, hence not an important feature. Therefore, decision T 142/05 is not relevant for the present case. For these reasons, the argument of the appellant that the amendment broadened the scope of the claimed subjectmatter cannot be followed and A 123(3) is complied with. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2215/08 – Useful?
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T 2215/08 – Useful? 7 Aug 2012
This is an appeal of the opponent after the Opposition Division had decided to maintain the opposed patent in amended form. The decision is a * useful * reminder of the way in which the Boards apply the teachings of G 2/88 in the context of process claims. Claim 1 of the main request before the Board read: Process for improving the stability of the hue of a granulated product of potassium sorbate, including the step of adjusting (i) the overall pore volume to equal to or less than 0.4 ml/g and the Na content to equal to or less than 1000 ppm. Claim 4 of the fourth auxiliary request read: Use of a process for improving the stability of the hue of a granulated product of potassium sorbate, including the step of adjusting (i) the overall pore volume to equal to or less than 0.4 ml/g and the Na content to equal to or less than 1000 ppm. (my emphasis) The Board first examined whether the public prior used alleged by the opponent was sufficiently substantiated and found this to be the case: [2.1.8] The Board thus comes to the conclusion that potassium sorbate granulate having a sodium content of 690 ppm (±20%) and an overall pore volume of 0.17 ml/g has been made available to the public before the priority date of the patent in suit by its sale. This potassium sorbate thus has all the structural characteristics required for the product prepared by the process according to claim 1. This paved the way to the finding that the main request lacked novelty: [2.2] Claim 1 is a “process” claim with the single process step of “adjusting” the overall pore volume and sodium content. The [patent proprietor] argued that the sale of potassium sorbate did not make the process by which it was made also available to the public. In the present case, however, the sole process step specified in claim 1 is the step of “adjusting” the overall pore volume and sodium content to the values indicated in the claim. A product having an overall pore volume and sodium content falling within the values indicated in the claim has necessarily been made by a process in which the pore volume and sodium content have been “adjusted” to within these desired values. [2.2.1] For these reasons, the Board holds that in the present case, the sale of potassium sorbate granulate having a sodium content of 690 ppm (±20%) and an overall pore volume of 0.17 ml/g, also implicitly makes available to the public that it has been prepared by adjusting the sodium content and overall pore volume to these values. [2.3] Thus not only all the structural characteristics, but also the process feature of claim 1, were made available to the public before the priority date of the patent in suit by the prior use. For these reasons the process according to claim 1 is not novel. [2.4] The [patent proprietor] argued that the purpose of improving the stability of the hue was a functional technical feature of the claim in the sense of the decisions G 2/88 and G 6/88, the considerations underlying these decisions relating to the use of products also being applicable to process claims. Said functional technical feature rendered the claimed process novel over the prior use, which did not disclose that adjustment of the sodium content and overall pore volume had an effect on the stability of the hue of the granulated product.
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T 2215/08 – Useful?
K’s Law – The ebook
[2.4.1] In the present case, claim 1 relates to a process which includes the physical step(s) of adjusting the overall pore volume and the sodium content of a potassium sorbate. Said claim is thus a “process” claim within the meaning of A 64(2), since it specifically includes physical steps which result in the production of a product, namely a granulated potassium sorbate, and is not a “use” claim in the sense of decisions G 2/88 and G 6/88, which relate exclusively to claims directed to the use of a substance for achieving an effect. Thus, the purpose of the process in present claim 1, namely for “improving the stability of the hue”, cannot be regarded as a functional technical feature, and hence cannot distinguish the subject-matter of the claim from the prior use. The criteria set out by the Enlarged Board of Appeal in the aforementioned decisions may only be applied to claims directed to the use of a substance for achieving an effect and cannot be extended to claims to a process for producing a product characterised by process steps, wherein the purpose of carrying out said process steps is indicated in the claim (see decisions T 1179/07 [2.1.3], T 1343/04 [2] and T 1049/99 [8.4.4,8.5]). [2.5] For the above reasons, the Board concludes that by virtue of the sale of the product, a process according to claim 1 is disclosed, such that the subject-matter thereof is not novel. Auxiliary requests 1 to 3 were found to lack inventive step. Auxiliary request 4 suffered the same fate as the main request: [7.1] Claim 1 of auxiliary request 4 differs from claim 1 of the main request in that the “Process for improving the stability of the hue” has been reformulated as “Use of a process for improving the stability of the hue”. [7.2] The [patent proprietor] argued that this claim was now clearly a “use” claim in the sense of decision G 2/88, such that the subject-matter thereof was thus novel over the prior use in view of the technical effect of “improving the stability of the hue”. [7.3] However, claims to the use of a process are, in fact, directed to the preparation of a product, i.e. in the present case, potassium sorbate granulate having an overall pore volume of equal to or less than 0.4 ml/g and a sodium content of equal to or less than 1000 ppm. The use of the process for improving the stability of the hue comprises as technical feature only the step of adjusting the overall pore volume and sodium content which has as result the product defined in the claims. This Board thus shares the view expressed in decisions T 210/93 [3.2.3] and T 684/02 [5] that the use of a process for a particular purpose is “nothing but that very same process”. Thus, as in the case of the main request, the purpose of the use of the process in claim 1, namely for “improving the stability of the hue”, cannot be regarded as a functional technical feature in the sense of decisions G 2/88 and G 6/88, and hence cannot distinguish the subject-matter of the claim from the prior use. [7.4] Thus, the subject-matter of claim 1 of auxiliary request 4 is not novel for the very same reasons that the subject-matter of claim 1 of the main request is not novel […]. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1199/08 – Quod Licet Bovi Non Licet Homini
K’s Law – The ebook
T 1199/08 – Quod Licet Bovi Non Licet Homini 6 Aug 2012
In the present case, both the patent proprietor and the opponent filed an appeal against the maintenance of the patent in amended form. Claim 1 of the main request before the Board read: 1. A method for the cryopreservation of sex-selected bovine sperm comprising: (a) obtaining a bovine sperm sample; (b) adding an initial extender and sex-selecting sperm by flow cytometry; (c) cooling said selected sperm sample; (d) isolating by centrifugation sperm from said selected cool sperm to produce isolated cool sperm; (e) adding final extender to said cool isolated sperm to produce a cool suspension of sperm, wherein the final extender comprises a cryoprotectant and Tris[hydroxymethyl]aminomethane; and (f) freezing said suspension of sperm. Claims 2 to 13 were dependent on claim 1. Claim 14 was another independent claim: 14. A frozen sex-selected bovine sperm sample comprising a portion of the sperm present in a source sample and an extender, said portion of sperm being stained with a fluorescent dye and sex-selected by flow cytometry, and said extender comprising a cryoprotectant and Tris[hydroxymethyl]aminomethane, wherein thawing yields sperm that can be used in artificial insemination and achieves pregnancy. Claim 15 was dependent on claim 14. Claim 16 was directed to the use of the sperm sample of claim 14 or 15 for the manufacture of a formulation for artificial insemination. Claim 17 was dependent on claim 16. The question arose whether this claim complied with the requirements of A 53(b), which, as you certainly know, excludes essentially biological processes for the production of animals from patentability. [16] A 53(b) provides that: “European patents shall not be granted in respect of: (a) [...] (b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof.”(emphasis added by the Board). [17] [Opponent 3] considers that claim 1 contravenes this provision, insofar as the prohibition applies to essentially biological processes for the production of animals and argues that this objection extends to the other claims, including the product claims 14 to 15 and the use claims 16 to 17. In support of her objection, [opponent 3] has referred to decisions G 2/06 and G 1/08, the proceedings of which were consolidated with those of decision G 2/07, as well as the Oliver Brüstle v. Greenpeace decision of 18 October 2011 of the Court of Justice of the European Union (CJEU decision C-34-10). As only an abridged version of decision G 1/08 was published, reference will be made hereinafter to decision G 2/07 which was published in its entirety. [18] [Opponent 3] argues that, in accordance with the “whole content approach” developed by the Enlarged Board of Appeal (EBA) in decision G 2/06 [22], not the explicit wording of claim 1 but the technical teaching of the patent as a whole should be taken into consideration for a correct assessment of whether claim 1 falls under the prohibition of A 53(b). [Opponent 3] contends that, following this approach which is reflected by the CJEU decision C-34-10, it becomes obvious that the only purpose of the claimed method is the production of an animal. 1107 | 3398
T 1199/08 – Quod Licet Bovi Non Licet Homini
K’s Law – The ebook
[19] [Opponent 3] considers further that, in the method of claim 1, the step of sex-selecting sperm by flow cytometry is a selection step which, together with the other technical steps, serves the only purpose of assisting in the crossing step and leads subsequently and inevitably to the breeding of an animal. Consequently, drawing a parallel with the reasoning made in decision G 1/08 regarding a process for the production of plants, the claimed method should be regarded as an essentially biological process for the production of animals. [20] In decision G 2/06, the EBA has answered inter alia the question of whether R 28(c) forbids the patenting of claims directed to products (in the referring decision: human embryonic stem cell cultures) which – as described in the application – at the filing date could be prepared exclusively by a method which necessarily involved the destruction of the human embryos from which the said products were derived, if the said method is not part of the claims. Regarding R 28(c) which provides that, under A 53(a), European patents should not be granted in respect of biotechnological inventions which, in particular, concern uses of embryos for industrial or commercial purposes, the EBA has noted that said rule does not mention claims, but refers to “invention” in the context of its exploitation and has indicated that “[W]hat needs to be looked at is not just the explicit wording of the claims but the technical teaching of the application as a whole as to how the invention is to be performed” (emphasis added by the Board). This defines the “whole content approach” as referred to by [opponent 3]. The EBA has noted further that “[T]o restrict the application of R 28(c) (formerly R 23d(c)) to what an applicant chooses explicitly to put in his claim would have the undesirable consequence of making avoidance of the patenting prohibition merely a matter of clever and skilful drafting of such claims” (see point [22] of the Reasons). [21] The present Board does not see any reason to apply this approach of decision G 2/06 to the situation underlying present claim 1. Said approach has been developed in the context of a particular exception to patentability governed by A 53(a) in view of R 28(c) which focuses on the patentability of inventions related specifically to the ethical concerns associated with the destruction of a human embryo, whereas for present claim 1 the context to be considered is the one of another exception to patentability which is governed by A 53(b). Present claim 1 is indeed directed to a method for the preparation of sex-selected bovine sperm resulting in a product with properties allowing its long term storage. [22] In the case underlying the CJEU decision C-34-10, the invention was concerned with neural precursor cells obtainable from human embryonic stem cells. The Court had to answer inter alia the question of whether technical teaching is to be considered unpatentable pursuant to Article 6(2)(c) of the Directive 98/44/EC (R 28(c)) even if the use of human embryos does not form part of the technical teaching claimed by the patent, but is a necessary precondition for the application of that teaching. In paragraph 50 of the Decision, the Court noted that “Not to include in the scope of the exclusion from patentability set out in Article 6(2)(c) of the Directive technical teaching claimed, on the ground that if does not refer to the use, implying their prior destruction, of human embryos would make the provision concerned redundant by allowing a patent applicant to avoid its application by skilful drafting of the claim” (emphasis added by the Board). Thus, for the very same reason given at point [21] supra, the Board sees no reason to apply the approach of CJEU decision C-34-10 to the situation underlying present claim 1. [23] In the case underlying decision G 2/07, the referring Board had to decide on the patentability of a process for the production of Brassica oleracea, which as claimed comprised in succession steps of a) crossing wild Brassica oleracea species with broccoli double haploid breeding lines, b) selecting hybrids, c) backcrossing and selecting plants with a the genetic combination encoding the expression of elevated levels of given compounds and d) selecting a broccoli line with elevated levels of said compounds. This was a non-microbiological process for the production of plants which contained a step of sexually crossing the whole genome of plants and of subsequently selecting plants, i.e. a traditional method of breeding new plant varieties [24] The EBA came to the conclusion that “[S]uch a process does not escape the exclusion of A 53(b) merely because it contains, as a further step or as part of any of the steps of crossing and selection, a step of a technical nature which serves to enable or assist the performance of the steps of sexually crossing the whole genomes or plants or of subsequently selecting plants” (see decision G 2/07 [order 2]). [25] Regarding additional technical steps performed either before or after the process of crossing and selection per se decision G 2/07 indicates: “For the previous or subsequent steps per se patent protection is available” (G 2/07 [page 70, lines 4 to 5]) 1108 | 3398
T 1199/08 – Quod Licet Bovi Non Licet Homini
K’s Law – The ebook
and “[H]owever, in such case the claims should not, explicitly or implicitly, include the sexual crossing and selection process.” (G 2/07 [page 70, lines 10 to 12]). [26] The process of claim 1 does not comprise a step of breeding an animal and none of its steps involves any crossing. Furthermore, it is an obvious fact, in an attempt to draw a parallel between a method for the production of plants and a method for the production of animals, that a selection step equivalent to a selection step in a traditional method of breeding new plant varieties which takes place after a crossing step between pre-existing varieties is not present in claim 1. [27] Therefore, [opponent 3]’s argument that it was only skilful claim drafting that avoided in the present case the application of the prohibition of A 53(b), regarding processes for the production of animals, is not convincing. [28] From the analysis made at points [20] to [27] supra, the Board concludes that claim 1 is directed to a method which allows for the long term preservation of sex-selected sperm. This method does not qualify as an essentially biological process for the production of animals, and, therefore, in line with the parallel reasoning developed in decision G 2/07 regarding processes for the production of plants, it does not fall under the prohibition of A 53(b). Thus, claim 1 meets the requirements of A 53(b). The same conclusion applies to dependent claims 2 to 13. [29] Claim 14 and dependent claim 15 are directed to a frozen sex-selected bovine sperm sample, a product which is not mentioned in A 53(b). In view of the fact that, according to established case law, any exception to patentability must be construed narrowly, A 53(b) provides an exhaustive list of possible exclusions from patentability. Therefore, the frozen sex-selected bovine sperm sample according to claim 14 or claim 15 does not fall under the prohibition of A 53(b). [30] Claim 16 and dependent claim 17 are directed to the use of a sperm sample according to claim 14 or claim 15 for the manufacture of a formulation for artificial insemination. Such a use is also not mentioned in A 53(b). Therefore, the use of frozen sex-selected bovine sperm sample according to claim 16 or claim 17 does not fall under the prohibition of A 53(b). [31] In view of these remarks, the Board concludes that the main request as a whole complies with the requirements of A 53(b). The Board regards it as relevant to note that, in the course of the oral proceedings of 24 November 2011, as clearly reflected in the minutes thereof which were not contested by the parties, [opponent 3] withdrew her request to refer questions of law with respect to this issue. Therefore, the attempt made by [opponent 3] in her letter of 31 March 2012 to re-open the debates in this respect was unsuccessful. When formulating her final requests, [opponent 3] did not include such a request. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1109 | 3398
K’s Law – The ebook
Weaning
Weaning 6 Aug 2012
“I just joined a support group for Internet addicts. We discuss every night from 7 pm until midnight on Facebook.” I now begin a fortnight of Internet abstinence. Unless there is a technical problem, you will nevertheless find new posts on the blog, at the usual rhythm. However, I will not be able to react to your comments. If you are in need of very fresh decisions, you might want to check out the latest posts on Le blog du droit européen des brevets, or go ad fontes on the DG3 webpage. See ya
1110 | 3398
T 1170/07 – Let’s Be Reasonable
K’s Law – The ebook
T 1170/07 – Let’s Be Reasonable 4 Aug 2012
In this case the opponent filed an appeal against the decision of the Opposition Division to maintain the patent on the basis of the claims as granted and a description amended during the appeal proceedings (which, if I may add, appears to be a very rare outcome). Claim 1 of the main request read: 1. The use of tetrahydrolipstatin for the manufacture of an oral pharmaceutical preparation for treating type II diabetes mellitus per se, the amount of tetrahydrolipstatin to be employed in unit dosage form, which consists essentially of tetrahydrolipstatin formulated as an oral composition, the amount of tetrahydrolipstatin being effective to alleviate or cure type II diabetes mellitus per se and in the range of from 60 to 720 mg of tetrahydrolipstatin per day, wherein the pharmaceutical preparation is to be administered from two to three times per day. (my emphasis) One of the question before the Board was whether the expression “consists essentially of” complied with the requirements of A 123(2): [3.1] Claim 1 of the main request includes a unit dosage form, which consists essentially of tetrahydrolipstatin formulated as an oral composition. Before evaluating whether the original application in its entirety specifically discloses such a unit dosage form, it first has to be established what the term “consisting essentially of”, which cannot be found in the original application, means in this context. The [opponent], making reference to decision T 468/99, argued that “consisting essentially of” meant that the claimed composition must not contain any additional components that might influence the properties of the composition, which even excluded excipients such as PVP or microcrystalline cellulose. The consequence of such an interpretation would be that the unit dosage form formulated as an oral composition would be restricted to tetrahydrolipstatin per se, as any additional compound would have some effect on the properties of the composition. However, claims should be read in a technically reasonable way. Unit dosage forms formulated as oral compositions necessarily comprise a vehicle or carrier for the active agent, otherwise a safe administration of the active agent is not possible. This requires the presence of further compounds or excipients, which, as was mentioned above, have an influence on the properties of the composition in terms of release rate, stability etc. As a consequence, “consisting essentially of” cannot have this restrictive meaning in the present case. The board concludes that under the specific circumstances of the present case “consisting essentially of” excludes further active agents useful in the treatment of NIDDM but allows the presence of additional compounds forming the carrier of tetrahydrolipstatin. The passage on page 1, lines 23-27, of the original application discloses that tetrahydrolipstatin, when administered orally, is useful in the treatment and prevention of NIDDM. This disclosure does not specifically mention that tetrahydrolipstatin is used in the absence of further active agents. However, the passage on page 2, lines 22-23, indicates that the pharmaceutical preparations “can also contain still other therapeutically valuable substances” [emphasis by the board], which means that the absence of such therapeutically valuable substances is clearly envisaged. Furthermore, all three formulation examples (examples 1 to 3) concern compositions with tetrahydrolipstatin as the only active agent. The board concludes therefrom that treatment of NIDDM with oral compositions comprising tetrahydrolipstatin as the sole active agent constitutes the most preferred embodiment of the original application. As a consequence, the substitution of “consisting essentially of” for “comprising” is allowable under A 123(2). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1111 | 3398
T 1839/11 – Limited Visibility
K’s Law – The ebook
T 1839/11 – Limited Visibility 3 Aug 2012
The fratricidal war between Danish companies Novozymes and Danisco has been all over the news recently, even on the Pat Lit blog. Well, it has finally reached K’s law, too. The Opposition Division had revoked the patent. The Board of appeal decided not to admit the only requests on file, which had been filed belatedly, and therefore dismissed the appeal, which made the revocation final. The decision contains some interesting paragraphs on exclusion from file inspection. In the course of proceedings between the parties before the High Court of England and Wales (Patents Court) concerning the validity and infringement of the opposed patent (“the English Proceedings”), the opponent had obtained from the patent proprietor, as part of the English process of disclosure, various documents relating to the results of trials and research programmes conducted by the patent proprietor(“the Disclosure Documents”). Following a decision of the English Court dated 9 March 2012 the opponent was permitted by the English Court to use the Disclosure Documents in the present appeal proceedings. The terms on which it was allowed to use them were set out in the order of the English Court dated 9 March 2012 (“the English Court Order”), by which inter alia: (a) The patent proprietor undertook that it would not resist the introduction of the Disclosure Documents into the appeal proceedings; (b) The opponent was given permission to use the Disclosure Documents in the appeal proceedings; (c) Both the patent proprietor and the opponent were ordered to use their best endeavours to keep the Disclosure Documents confidential to the extent that the various jurisdictions concerned so allowed (but the absence of any such provisions (whether existing in law or applied by the relevant court or tribunal) allowing confidence in the Disclosure Documents to be kept would not prevent their use); (d) The Disclosure Documents were to remain confidential and might only be used for the purposes of inter alia the present appeal proceedings and were to be subject to the obligations set out in the paragraph (c) above. [3.1] A 128(4) provides that: “After the publication of the European patent application, the files relating to the application and the resulting European patent may be inspected on request, subject to the restrictions laid down in the Implementing Regulations.” R 144 provides that: “The parts of the file excluded from inspection under A 128, paragraph 4, shall be: (d) any document excluded from inspection by the President of the EPO on the ground that such inspection would not serve the purpose of informing the public about the European patent application or the European patent.” Article 1(2) of the Decision of the President dated 12 July 2007 (OJ EPO, 2007, Special edition No. 3, p.125) provides that: “Documents or parts thereof ... (a) shall be excluded from file inspection at the reasoned request of a party or his representative if their inspection would be prejudicial to the legitimate personal or economic interest of natural or legal persons”. [3.2] Prejudice to the economic interests of a party is therefore a necessary requirement for exclusion from file inspection in a case such as the present but is not of itself a sufficient requirement. The overreaching principle is set out in R 144(d), to which the President’s Decision must read as being subject, namely, that documents may be withheld from public inspection (only) if such inspection would not serve the purpose of informing the public about the patent. To this may be added the following two comments: (a) The provisions making an exception from the general principle of public access to the file are to be construed narrowly (see T 379/01 [6.1]).
1112 | 3398
T 1839/11 – Limited Visibility
K’s Law – The ebook
(b) One of the purposes of file inspection is to enable the public to obtain information about the patent, being information to which it is entitled in return for the exclusive monopoly rights which the patent confers (indeed, this is the “paramount” purpose of file inspection according to the Board in T 1401/05 [5]). [3.3] Examples where file inspection would not have served the purpose of informing the public about the patent are to be found in the decisions T 379/01, T 1401/05 and J 23/10. In each of these cases the material which was the subject of a request for exclusion from file inspection had no relevance to the subject matter of the patent. [3.4] In the board’s view, much of the information in the documents which were the subject of the parties’ original requests for exclusion from file inspection clearly served the purpose of informing the public about the patent in the sense of R 144(d). In particular it provided information about whether the subject matter of the patent was inventive and/or sufficiently disclosed. Thus, D46R was extensively referred to in the course of the submissions of the parties on inventive step and these references were taken into account by the board in reaching its conclusions […]. The same was potentially true of the documents D55 and D56 which had been filed by the [patent proprietor], although these documents were not in the event relied on. The various written submissions of the parties referring to these materials and which were also the subject of requests for exclusion from file inspection a fortiori served this purpose. [3.5] It is also the case that if it had been necessary for the board to have given written reasons for a decision on the substantive issues concerning the requests for maintenance of the patent (in particular on inventive step and sufficiency) such reasons, which would have been published, would inevitably have contained references to these materials as they concerned the validity of the patent. [3.6] It was for these reasons that the board indicated its view during oral proceedings […] that the original requests for exclusion from file inspection were unlikely to be granted in such a wide form. The board did not see that it had the power to make such an order. [3.7] The situation is unusual and, so far as the board is aware, unique in proceedings before the Office, in that the [opponent] has obtained these documents from the [patent proprietor] as part of the English disclosure system but subject to an obligation of confidence and before it was known whether the [opponent] would be released from this obligation after a trial in the English Proceedings. The board also acknowledges that both parties have been ordered by the English Court to use their best endeavours to keep the Disclosure Documents confidential to the extent that inter alia the EPC allows. Nevertheless, the [opponent] was not prevented from making use of the documents in these appeal proceedings, and indeed was expressly allowed to do so. The board is therefore not concerned about a case in which the documents filed were in some way improperly obtained and does not need to consider what the powers of the EPO might be in such a case. [3.8] In the light of the board’s indication, the parties sensibly modified their requests in the course of oral proceedings […]. As to the documents which are now sought to be excluded from public file inspection, the board accepts that in part they contain information which does not serve the purpose of informing the public about the patent and also that their publication would be likely to prejudice the economic interests of the [patent proprietor] and the [opponent] respectively. So far as concerns the [patent proprietor], the board accepts the [patent proprietor’s] submission that this information would give a competitor a potential springboard by showing the research and development work that it had carried out. The documents would also potentially provide third parties with information about the methodology, techniques and strategies followed by the [patent proprietor] in a more general sense. So far as concerns the [opponent], D55 and D56 also in part contain commercially sensitive information which concerns its business but which has nothing to do with the patent. [3.9] The one remaining point of dispute between the parties was that the [opponent] argued that some of the passages which had been removed by the [patent proprietor] from D46R to obtain D46R(2) contained information which, even if it was prejudicial to economic interests of the [patent proprietor], did in fact serve the purpose of informing the public about the patent. This information for the most part related to the capacity of the [patent proprietor’s] plant and rebutted the [patent proprietor’s] assertion that the reason why it had abandoned pelleting trials was because it had insufficient capacity to carry on the trials and not because it could not get the invention to work. [3.10] While this information may have been relevant to understanding the reasons why the [patent proprietor] at one stage abandoned pelleting trials, the board considers that such information serves no purpose of informing the public about the patent itself. The same applies to other information that the [opponent] said should not be redacted. For this reason the board rejected the argument of the [opponent] on this issue.
1113 | 3398
T 1839/11 – Limited Visibility
K’s Law – The ebook
[3.11] The information contained in these documents which serves to inform the public about the patent is available in the various redacted versions of the documents, which will be available for file inspection. The interests of the public are therefore preserved and the board will accordingly make the order requested. NB: the Board also provided two take-away headnotes: 1. A document filed in proceedings and which serves the purpose of informing the public about the patent may not ordinarily be excluded from file inspection under R 144 EPC and Article 1(2) of the Decision of the President dated 12 July 2007 even though such inspection would be prejudicial to the legitimate personal or economic interests of natural or legal persons (Points [3.2-6]). 2. Where a filed document contains information, some of which serves the purpose of informing the public about the patent but some of which does not, the filing of a version of the document in a form from which the latter information has been redacted may form the proper basis for an order excluding the unredacted document from file inspection under R 144, the redacted version being open to file inspection (Points [3.8,11]). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1114 | 3398
T 2534/10 – The Day After
K’s Law – The ebook
T 2534/10 – The Day After 2 Aug 2012
The present appeal was filed against the decision of the Opposition Division (OD) to revoke the opposed patent. The OD had summoned the parties to oral proceedings (OPs) to be held on March 16, 2010. On this day, the main request and auxiliary requests 1 to 3 were discussed. The OPs ended at 22:38. At about 22:30, the chairman proposed that the proceedings be continued on the next day. The minutes have the following entry (English translation): “… The chairman proposes to the parties to continue the proceedings on the next day. Opponents 1 and 2 agree. The patent proprietor prefers to continue on another day rather than on the next day because both representatives are already busy with other proceedings. Opponent 1 insists that the proceedings be continued on the next day and notes that the patent proprietor is represented by two professional representatives. Therefore, it proposes that only one of the representatives be present, which would allow the other representative to attend the other proceedings. The chairman interrupts the proceedings from 22:30 to 22:35. The chairman tells the parties that the OD has decided to continue the proceedings tomorrow. The chairman interrupts the proceedings at 22:38 on March 16, 2010. The proceedings are continued on March 17, 2010, in room A 1011 of Module VIII of the EPO, Grasserstraße 9. Opponent 1 and 2 are present with the same representatives as on the day before. The patent proprietor is represented by Mr G. (as on the day before) and Mr M. (rather than Mr S. as on the day before). The chairman opens the proceedings at 9:08 on March 17, 2010.” The two representatives of the patent proprietor immediately requested exclusion of the whole opposition division. At about 2 p.m. the parties were informed that the deputy director had examined the request and had rejected it. At about 14:30, Mr S. joined the meeting. Auxiliary requests 4 to 10 were then discussed. The patent was finally revoked and the OD decided that the patent proprietor would have to pay the expenses - for half a day or proceedings and accommodation - that had arisen to the parties coming from places other than Munich. Here is what the Board had to say on this case: *** Translation of the German original *** [2.1.2] R 115 provides at least two months’ notice for “OPs under A 116”. According to A 116, “OPs” (“eine mündliche Verhandlung”; NB: the German “eine” is ambiguous; it could be the indefinite article or the numeral “one”) shall take place either upon request or if [the EPO] considers this to be expedient. It follows from A 116(4) that OPs before the OD are public. The summons to OPs indicate the date and time. If the proceedings are to last several days, this is stated. [2.1.3] Apparently there is no case law regarding the question whether the continuation of the proceedings on a day that is different from the day mentioned on the summons constitutes new OPs and whether R 115 is to be applied, which would mean that [the parties] would have to agree to a period that is shorter [than 2 months]. The [opponent] has pointed out that the continuation still was the same OPs and that, as a consequence, the OD could duly exercise its discretion in fixing a date for the continuation (Fortsetzungstermin) without having to respect the two-month period. 1115 | 3398
T 2534/10 – The Day After
K’s Law – The ebook
(a) The two-month period provided in R 115 serves the purpose that both parties, who cannot chose the date for the proceedings, have the opportunity to prepare themselves both regarding the contents and the organisation of the proceedings. If one of the summoned representatives encounters scheduling difficulties, he can point them out in due time and obtain a postponement, provided that the reasons are acceptable. Conversely, a professional representative can rely on the fact that there will not be proceedings on a day other than the day mentioned in the summons and that the representative can make arrangements for the day before and the day after the proceedings. As a consequence, there is neither a duty nor a necessity for the summoned representative to inform the OD, for instance that on the day after the day mentioned in the summons he has other proceedings or will be off for a vacation trip, simply because there is no scheduling problem. Also, a professional representative who has been summoned for one day will not, by way of precaution, have to look for accommodation (Übernachtungsmöglichkeit), and, as a rule, will not do so. It follows from all this that the two-month period mentioned in R 115 makes allowance for a fundamental need for being able to schedule and predict events (Planbarkeit und Vorhersehbarkeit). In order for summoned representatives to be able to schedule, they have to be able to rely on the fact that the scheduled OPs take place within the time frame mentioned in the summons and do not exceed the latter. Therefore, the Board cannot see why the two-month period provided in R 115 would only be applicable to the first summons for OPs but not to their continuation on a day that is different from the calendar day referred to in the summons. As a matter of fact, the existing interests (Interessenlage) are the same. Therefore, the Board is of the opinion that the continuation of OPs beyond the calendar day mentioned in the summons requires new summons that have to comply with the requirements of R 115. (b) In the present case, the summons mentioned OPs to be held on March 16, 2010. Therefore, the continuation of the proceedings decided by the OD on the evening of this day had to comply with the requirements of R 115. Requirements of R 115 [2.2.1] It is uncontested that the two-month period was not respected for the continuation of the OPs on March 17. According to R 115 this is not required if “the parties agree to a shorter period”. According to the [opponent], the patent proprietor had tacitly (stillschweigend) agreed to a shortening of the period for summons by being present at the proceedings on the second day of the proceedings. As a consequence, it had accepted the continuation of the proceedings without any objection (rügelos). [2.2.2] The Board cannot endorse the arguments of the [opponent], for several reasons. (a) The principle of acceptation without objection (rügelose Einlassung) pursuant to § 295 of the German code of civil procedure (CCP), which has been invoked by the [opponent] reads: “§ 295 Objections to process (Verfahrensrügen) (1) The infringement of a rule to which the proceedings are subject, and in particular of a rule governing the form of a procedural action, no longer may be objected to if the party has waived the rule’s being applied, or if the party has failed to object to the irregularity at the next hearing taking place as a result of the corresponding proceedings or at the hearing in which reference was made to the rule, in spite of the fact that the party appeared at the hearing and that it was aware, or must have been aware, of the irregularity.” (b) Even if one wished to derive a general principle from § 295 CPC, the latter would only be applicable in the present case via A 125 if it was a general principle of procedural law generally recognised “in the Contracting States”. However, the [opponent] has not provided evidence that this principle also applies in the national law of Contracting States other than Germany, in view of shortening the period for summons. (c) Moreover, the Board is not of the opinion that the presence of the representatives of the patent proprietor on the second day indeed qualifies as acceptation “without objection”. The minutes oif the OPs of the impugned decision read, at the bottom of page 14: “The patent proprietor prefers to continue on another day rather than on the next day because both representatives are already busy with other proceedings.” The fact that the patent proprietor was represented on the second day, but with a team the composition of which had changed, and that the representatives have made statements as to the substance of the case, cannot be considered to be a case of acceptation without objection but only expresses the attempt to limit the adverse effects as far as possible. 1116 | 3398
T 2534/10 – The Day After
K’s Law – The ebook
Finally, even if there had been acceptation without objection, it would not have complied with the requirements of R 115 because this provision expressly requires the parties to “agree”. Therefore, it is not enough if one of the parties does not raise explicit objections or, to use the language of § 295 CCP, “has failed to object to the irregularity”. Rather the party has to express its agreement in plain language (klipp und klar). This what the opponents had done, because the minutes, at the bottom of page 14 make the following statement on the continuation of the proceedings on the next day: “Opponents 1 and 2 agree.” However, according to the minutes, the patent proprietor did not and apparently it did not change its mind on the next day. (d) Each of the reasons mentioned above leads to the conclusion that the behaviour of the patent proprietor cannot be interpreted to be an agreement to the continuation of the proceedings on the next day. As a consequence, by continuing the proceedings on the next day, the OD has violated R 115. Substantial procedural violation [2.3] The [opponent] is of the opinion that a violation of R 115 cannot be considered to be substantial because the case of a continuation of OPs that had not been planned in advance is not foreseen in the EPC and because there was no established case law on that matter either. However, a substantial procedural violation can also be made in good faith (in bestem Wissen und Gewissen) insofar as it is a violation of fundamental principles of the EPC. The principle that parties have to be able to schedule and predict events (Grundsätze der Planbarkeit und Vorhersehbarkeit), which are expressed in R 115, are expressions of the protection of legitimate expectations and as such fundamental. As is clearly shown by the present case, they are also closely related to the right to be heard if the shortened period leads to collisions of appointments (Terminkollisionen) that adversely affect a party in the procedural strategy it had planned. Therefore, in agreement with decision T 111/95, the Board considers the violation of R 115 to constitute a substantial procedural violation that leads to a remittal of the case to the first instance. Remittal [3] As the substantial procedural violation consists in the continuation of the proceedings on the next day, the Board does not consider it to be required or appropriate (weder erforderlich noch geboten) to repeat the part of the proceedings that is not defective, i.e. the first day of the proceedings. On the first day, the OD has examined, and decided on, the main request as well as auxiliary requests 1 to 3. After a discussion with the parties, the OD considered claim 1 of the main request not to involve an inventive step, claim 1 of auxiliary request 1 to violate A 123(2) and claim 1 of auxiliary request 2 not to be inventive. Auxiliary request 3 was not admitted into the proceedings. By announcing the revocation of the patent, the OD has made a binding statement on these requests in way that was apparent to the parties. Therefore, it has taken interlocutory decisions (Zwischenentscheidungen) on these requests. As far as appeal proceedings are concerned, Article 8(2) RPBA makes clear that in case of a different composition of the Board (2) [a new member] shall be bound “by an interim decision which has already been taken”. Although there is no corresponding provision for first instance proceedings, Article 8(2) should be applied accordingly (Singer/Stauder-Schachenmann, EPÜ, 5th edition, Köln 2010, A 116, marginal number 31). Consequently, the OD will have to continue the proceedings with the proviso that the main request and auxiliary requests 1 to 3 on which [the OD] has decided on March 16, 2010, are not examined afresh, regardless of whether its composition is the same or not. In my opinion the Board should have reviewed the findings of the OD on the main request and auxiliary requests 1 to 3 before remitting the case. As things stand, the OD will now decide on the remaining requests and a (likely) appeal against its decision will have to cover all requests (including the main request and auxiliary requests 1 to 3) although the appealed decision will only deal with auxiliary requests 4 to 10. Isn’t this somewhat unfortunate? Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
1117 | 3398
T 869/10 – Too Big
K’s Law – The ebook
T 869/10 – Too Big 1 Aug 2012
This is an appeal of the opponent against the maintenance of the opposed patent in amended form. Claims 1, 2 and 5 as granted read: 1. Non-dusting homogeneous pigment preparation, 40-60 % by weight of one 0.1-5 % by weight of 0.5-40 % by weight 1-40 % by weight of an organic 0-50 % by weight of 0-10 % by weight of a pH regulator.
characterised in that it or more effect surface-active of organic solvent or solvent water and
comprises pigments, substances, polymers, mixture, optionally
2. Non-dusting homogeneous pigment preparation according to Claim 1, characterised in that the effect pigment is a pearlescent pigment and/or a metal pigment. […] 5. Non-dusting homogeneous pigment preparation according to one of Claims 1 to 4, characterised in that the surface-active substance is an alkylsilane, a saturated or unsaturated fatty acid and/or a fluorosurfactant. (my emphasis) Claim 1 as maintained by the Opposition Division read (the underlined features are additions with respect to claim 1 as granted): Non-dusting homogeneous pigment preparation, characterised in that it comprises 40-60 % by weight of one or more effect pigments, wherein the effect pigment is a pearlescent pigment 0.1-5 % by weight of surface-active substances, wherein the surface-active substance is an alkylsilane, a saturated or unsaturated fatty acid and/or a fluorosurfactant 0.5-40 % by weight of organic polymers, 1-40 % by weight of an organic solvent or solvent mixture, 0-50 % by weight of water and optionally 0-10 % by weight of a pH regulator. The opponent pointed out that claim 1 did not comply with the requirements of A 123(3). Believe it or not, the Board agreed: *** Translation of the German original *** [1.1] The [opponent] argued that the limitation of the expression surface-active substances to specific groups of compounds in claim 1 of the main request entails that [this claim] now claims pigment preparations that were not encompassed by claim 1 as granted. It cited the example of a preparation containing 2.5 % by weight of alkylsilane and 3 % by weight of another surfactant, i.e. having a total [amount of surface-active substances] exceeding the value of 5 % by weight as defined in claim 1 as granted, and wherein the contents of the remaining components are within the ranges defined in both claims. The [patent proprietor] was of the opinion that in principle the incorporation of a feature of a dependent claim cannot violate (widersprechen) the requirements of A 123(3). [1.2] The Board does not agree with the opinion of the [patent proprietor]. As a consequence of the open wording of the claim 1 of the main request there is the possibility of further surfactants being present in addition to the explicitly named specific surface-active substances for which the defined % by weight range applies. The combination of the named specific surface-active substances and additional surface-active substances can exceed 5 % by weight, which is the upper limit for all surface-active substances in the version [of the patent] as granted. 1118 | 3398
T 869/10 – Too Big
K’s Law – The ebook
[1.3] Therefore, claim 1 of the main request encompasses pigment preparations that were excluded from the scope of protection of claim 1 as granted. The requirements of A 123(3) have not been complied with. […] Decision T 2017/07 [1.7] Basically (sinngemäß) this view was also held in decision T 2017/07. In this case a general definition of a class of compounds was replaced by a specific component in an “open” claim where the overall quantitative (mengenmäßig) composition was unchanged. The Board was of the opinion that the presence of further members of the class of compounds, beyond the upper limit for the content, was not excluded and that, as a consequence, the requirements of A 123(3) had been violated. Decision T 1756/07 [1.8.1] Decision T 1756/07 concerns a polymer that is completely defined as to its composition and which is post-crosslinked (nachvernetzt) by means of an organic product for post-crosslinking the surface (Oberflächennachvernetzungsmittel) and a cation after its polymerisation. It is clear from the wording of the claim that the polymer (Polymerisat) is treated with a post-crosslinking product that is used in a ratio of 0.015 % by weight with respect to the polymer. Therefore, this claim is not directed at a composition as is decision T 2017/07 and the situation created by the amendment of the claim is not comparable with the situation described in decision T 2017/07. In this case, the limitation to a specific post-crosslinking product necessarily entails the limitation of the polymer obtained. Therefore, there is no problem regarding a possible extension of the scope of protection. [1.8.2] As a consequence, the present decision and T 2017/07 are based on a different factual situation than decision T 1756/07 and the Board is unable to see contradictory views expressed in the case law. Consequently, the Board refused the patent proprietor’s request to refer a question to the Enlarged Board. The patent was revoked. I think the Board has got it wrong because the scope of protection of the patent as granted is not defined by its claim 1 but by the claims as a whole. It may be true that the scope of dependent claims 2 and 5 as granted exceeded the scope of claim 1 as granted (which is unfortunate, but nevertheless possible), but in that case a limitation to one of those claims cannot – in my opinion – extend the scope of protection of the patent as granted. There would only be a violation of A 123(3) if the patent proprietor had taken the problematic features from the description rather than from dependent claims. What do you think? Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1068/07 – It’s All In There
K’s Law – The ebook
T 1068/07 – It’s All In There 31 Jul 2012
This is the (final) decision in the case that led to decision G 2/10 of the Enlarged Board (EBA) Claim 1 of the main request before the Board read: 1. A catalytic DNA molecule having site-specific endonuclease activity specific for a nucleotide sequence defining a cleavage site in a preselected substrate nucleic acid sequence, said catalytic molecule having first and second substrate binding regions flanking a core region, said molecule having the formula: 5’ (X-R) - GGCTAGCT8ACAACGA - (X) 3’ wherein each X is any nucleotide sequence, (X-R) represents said first substrate binding region, (X) represents said second substrate binding region, R is a nucleotide capable of forming a base pair with a pyrimidine in the preselected substrate nucleic acid sequence, T8 may be replaced by C or A, said first substrate binding region having a sequence capable of binding through complementary base-pairing to a first portion of said preselected substrate nucleic acid sequence, said second substrate binding region having a sequence capable of binding through complementary base-pairing to a second portion of said preselected substrate nucleic acid sequence, with the proviso that said catalytic molecule is not a molecule in which the first and second binding regions can bind through complementary base-pairing to a substrate nucleic acid which is 5’ - GGAAAAAGUAACUAGAGAUGGAAG - 3’ (SEQ ID NO 135). Here is what the Board had to say on A 123(2) related issues: [1] According to the decision G 2/10 [order 1(a)] of the EBA , an amendment to a claim by a disclaimer disclaiming from it subject-matter disclosed in the application as filed infringes A 123(2) if the subject-matter remaining after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed. [2] In order for the board to decide whether the main request fulfils the requirements of A 123(2), it is necessary to address the following questions: i) is the subject-matter of the disclaimer introduced in claim 1 of the main request – either explicitly or implicitly – directly and unambiguously disclosed in the application as filed?, and
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T 1068/07 – It’s All In There
K’s Law – The ebook
ii) is the subject-matter remaining in claim 1 of the main request after the introduction of the disclaimer in this claim – either explicitly or implicitly – directly and unambiguously derivable from the application as filed? […] The disclosure of the application as filed and the subject-matter of the disclaimer introduced in claim 1 [4] In its referral to the EBA (cf. T 1068/07), this board, albeit in a different composition, acknowledged that the subject-matter of the disclaimer present now in claim 1 of the main request was disclosed in the application as filed. As a formal basis for this disclaimer, the board explicitly referred to page 85, lines 2 to 26 and Figure 9 of the application as filed, which report the results obtained in Example 5 of the application as filed (cf. T 1068/07 [14]). [5] As correctly stated by the appellant […], the application as filed discloses an in vitro evolution process for generating, selecting and isolating – intramolecular (cf. Examples 1 and 2) and intermolecular (cf. Examples 3 and 4) – catalytic DNA molecules having site-specific endonuclease activity specific for a nucleotide sequence defining a cleavage site in a preselected substrate nucleic acid sequence, and having first and second binding regions flanking a core region, wherein said first and second substrate regions have sequences capable of binding through complementary base-pairing to a first and a second portion, respectively, of said preselected substrate nucleic acid sequence. [6] In Example 5, the preselected (all-RNA) substrate nucleic acid sequence was a stretch of 12-highly conserved nucleotides (SEQ ID NO: 49) embedded within a longer DNA molecule that included a stretch of 50 random nucleotides (N50) (SEQ ID NO: 50), which generated a population of putative enzymatic DNA molecules. After several rounds of in vitro evolution, enzymatic DNA molecules were selected for their ability to cleave a phosphoester within the embedded RNA target sequence. Several individual molecules from the population obtained after these rounds of in vitro selective amplification were cloned (cf. Tables 2 and 3) and their selfcleavage activity was measured. The self-cleavage reaction was easily converted to an intermolecular cleavage reaction by dividing the enzyme and substrate domains into separate molecules (cf. page 82, line 33 to page 83, line 1). Clone “10-23”, which was identified as having a high level of activity, was chosen, together with clone “8-17”, as a prototype molecule and characterized in detail, both structurally (nucleotide sequence, enzyme and substrate binding domains) and kinetically (cleavage site, turnover rates) (cf. Figure 8). The substrate binding arms of these molecules were further optimized by reducing them to 7 base-pairs on each side of the unpaired nucleotides demarcating the cleavage site (cf. Figure 9). [7] The catalytic core region of clone “10-23” shown in Figures 8 and 9 of the application as filed falls within the more generic sequence SEQ ID NO: 122 referred to in original claim 1, which corresponds to the formula of the core region of claim 1 of the main request. The substrate nucleic acid sequence of clone “10-23”, referred to on page 85 of the application as filed, is also shown in Figures 8 and 9 (intramolecular and intermolecular, respectively) and is identical to the sequence SEQ ID NO: 135 of the disclaimer present in claim 1 of the main request. [8] The board agrees with the appellant that the subject-matter of the disclaimer in claim 1 of the main request, namely the catalytic DNA molecules based on the “10-23” motif or prototype enzyme having a site-specific endonuclease activity specific for the substrate nucleotide sequence SEQ ID NO: 135, is explicitly disclosed in the application as filed. The subject-matter remaining in claim 1 after introduction of the disclaimer [9] Example 6 of the application as filed is directed to the preparation of “universal substrate enzymes” based on the “8-17” and “10-23” motifs described in the previous examples of the application as filed. In Example 6, it is explicitly stated that “(f)or both the 8-17 and 10-23 motif enzymes, the sequence of the substrate can be changed without loss of catalytic activity, so long as the substrate-binding arms of the enzyme were changed in a complementary manner” (cf. page 87, lines 24 to 28). Further studies were carried out in Example 6 in order to define more precisely the sequence requirements of the catalytic core of these DNA molecules and, as a result of these studies, the generic core region of the “10-23” motif was defined (cf. inter alia page 90, lines 26 to 29, page 96, lines 14 to 20, Figure 10 and original claim 1) and shown – by a survey of different combinations of RNA substrate and corresponding complementary DNA enzyme in the substrate binding region – to be generalizable with respect to any substrate sequence (cf. inter alia page 90, lines 29 to 33, page 92, line 23 to page 95, line 15, Table 4). [10] It is in fact this very specific subject-matter, namely catalytic DNA molecules having the “10-23” core region of the formula found in claim 1 of the main request having site-specific endonuclease activity specific for 1121 | 3398
T 1068/07 – It’s All In There
K’s Law – The ebook
any (preselected) substrate nucleotide sequence other than the substrate nucleotide sequence SEQ ID NO: 135, which actually remains in claim 1 of the main request after the introduction of the disclaimer in this claim. [11] Thus, it follows from the above, that the criteria set out in point 1a of the Order of decision G 2/10 of the EBA […] are met by the disclaimer present in claim 1 of the main request and, accordingly, that this disclaimer fulfils the requirements of A 123(2). Further objections raised under A 123(2) [12] The appellant in the grounds of appeal protested against the inclusion of a section entitled “Final remarks not part of the present decision” in the appealed decision of the ED, wherein the ED raised several objections under A 123(2) […]. Nevertheless, the board referred to these objections in its communication pursuant to Article 15 RPBA […]. [13] Most of the remarks made, and objections raised, by the ED related to the Sequence Listing containing SEQ ID NO:1 to SEQ ID NO:150 (“463.4.TXT SEQUENCE LISTING”), which was filed by the applicant with its letter of 15 January 2004 in order to include all nucleotide sequences that were referred to in the application as filed but not present in the original Sequence Listing containing SEQ ID NO:1 to SEQ ID NO: 101 (cf. pages 99 to 140 of the application as filed). In its letter, the applicant explicitly stated that “To the best of my knowledge, the electronic form of the sequence listing corresponds to the printed form, and it does not include matter which goes beyond the content of the application as filed”. The board notes that the same objections were already raised – verbatim – by the ED in its communication of 8 August 2006 annexed to the summons to oral proceedings and they were specifically addressed in detail by the applicant in its reply of 19 December 2006 in preparation for the oral proceedings before the ED. Thus, none of the arguments put forward by the applicant has been discussed or even taken into account by the ED in the Section “Final remarks not part of the present decision” of the decision under appeal. [14] The attention of the board has also been drawn to the “Decision of the President of the EPO dated 28 April 2011 on the filing of sequence listings” and to the “Notice from the EPO dated 28 April 2011 on the filing of sequence listings” (OJ EPO, 6/2011, pages 372 and 376, respectively) which specify the requirements for the filing of sequence listings in respect of European patent applications and the subsequent filing of sequence listings and further refer to previous decisions of the President of the EPO and previous notices from the EPO that have since been superseded. [15] In view of the above considerations and taking into account that the objections raised by the ED concerning the Sequence Listing result from amendments made in the original description, which presumably will have to be adapted again after a complete examination by the first instance, the board refrains from making any further comments with respect to this issue. Nevertheless, it is noted that the disclaimer in claims 1 and 30 of the main request explicitly refers to SEQ ID NO: 135 and that the subject-matter of dependent claims 14 and 40 of the main request refers to SEQ ID NO: 102 to 109. Should these references not be in accordance with the above cited “Decision of the President of the EPO” and “Notice from the EPO”, these claims will have to be amended accordingly. [16] In the section “Final remarks not part of the present decision” of the decision of the ED under appeal and in its letter of 8 August 2006 […], the ED raised an objection under A 123(2) with regard to the term “R” in claim 1 and to the specification of the cleavage site as being 5’ A-U 3’ in claim 3. These objections were addressed by the applicant in its letter of 19 December 2006, which, as acknowledged by the board in its communication pursuant to Article 15(1) RPBA […], indicated a basis for these features. Basis for other amendments introduced into the claims were indicated by the applicant in its letter of 30 May 2005, in particular with references to the original claims, the description and the Figures of the application as filed. [17] No further objections under A 123(2) were raised by the ED nor has the board a reason to raise any of its own at this stage of the appeal proceedings. Conclusion [18] Thus, the subject-matter of claims 1 and 30 of the main request is considered to fulfil the requirements of A 123(2). […] The decision under appeal is set aside and the case is remitted to the first instance for further prosecution on the basis of the main request […].
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T 1068/07 – It’s All In There
K’s Law – The ebook
Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1123 | 3398
G 1/10 – Unavailable
K’s Law – The ebook
G 1/10 – Unavailable 30 Jul 2012
Here is the latest decision by the Enlarged Board, on corrections under R 140. The underlying case was as follows: The opposition (filed on September 10, 2004) had been based on the sole ground of added subject-matter (A 100(c)), the only argument being that in claim 1 of the patent the feature “means for initiating (56) a command related to a position of the device data” was not disclosed in the application as filed. The proprietor’s reply of 27 April 2005 argued that this resulted from a typographical error made when amending claim 1 during the pre-grant procedure and that the feature should read “means for initiating (56) a command related to a portion of the device data”. The word “position” should thus read “portion”. On December 27, 2005, the proprietor requested that the opposition proceedings be stayed and that the case be remanded to the Examining Division (ED) for re-issuance of the granted patent after correction under R 89 EPC 1973. On November 2, 2006 a formalities officer acting for the Opposition Division (OD) issued a communication stating that the case was referred to the ED and that examination of the opposition was adjourned pending the final decision of the ED. The opponent filed an appeal which was rejected as inadmissible by Board 3.5.03 in its decision T 165/07 of November 23, 2007. The Board considered that the formalities officer’s communication did not constitute a decision within the meaning of A 106(1) EPC 1973 and that the OD had not yet taken a decision on the proprietor’s request to stay the opposition proceedings and to remit the case to the examination division for a decision on the request for correction under R 89 EPC 1973. On March 12, 2009 the OD took the interlocutory decision to stay opposition proceedings, to remit the case to the ED for a decision on the request for correction under R 140 (which corresponds to R 89 EPC 1973), and to allow a separate appeal against this decision. The opponent appealed against that decision. In 2010, Board 3.5.03 (case T 1145/09) referred the following questions to the Enlarged Board (EBA) : 1. Is a patent proprietor’s request for correction of the grant decision under R 140 which was filed after the initiation of opposition proceedings admissible? In particular, should the absence of a time limit in R 140 be interpreted such that a correction under R 140 of errors in decisions can be made at any time? 2. If such a request is considered to be admissible, does the ED have to decide on this request in ex parte proceedings in a binding manner so that the OD is precluded from examining whether the correction decision amounts to an unallowable amendment of the granted patent? The answer of the EBA is very straightforward: Since R 140 is not available to correct the text of a patent, a patent proprietor’s request for such a correction is inadmissible whenever made, including after the initiation of opposition proceedings. If you want to know the reasons for the answer, here we go: [1] The EBA agrees with the referring board’s decision […] that the referred questions relate to a decisive issue in the case before it concerning the interpretation of R 140, the delimitation of the respective competences of the ED and OD, and the possible intercalation of ex parte and inter partes proceedings. The procedural provisions of the EPC are silent on these issues and the case law of the boards of appeal is at least partly divergent […]. Thus the present referral is admissible as it serves both the purposes mentioned in A 112(1)(a), namely ensuring uniform application of the law and addressing points of law of fundamental importance. 1124 | 3398
G 1/10 – Unavailable
K’s Law – The ebook
[2] R 140 reads: “In decisions of the EPO, only linguistic errors, errors of transcription and obvious mistakes may be corrected.” This is exactly the same wording as the previous R 89 EPC 1973. Accordingly, while both are referred to herein, no distinction is made between the present and previous rules or between the case law relating to one or other of them. [3] The referred questions use the expression “request for correction of the grant decision under R 140” and therefore this decision is not concerned with corrections of any other decisions. Further, even in the context of corrections of grant decisions, it is clear that the referring decision is concerned only with the text of patents which are treated as an integral part of grant decisions by reason of being referred to in communications under R 71(3) (see T 850/95 [2]). Accordingly this decision is further confined to corrections of patents themselves - to the description, claims and drawings (often called the “patent documents”). Such patent documents have the particular characteristics that they are not only supplied by a patent applicant but also that they may only be the subject of a decision to grant if approved by the applicant (see A 113(2) and R 71 EPC and point [10] below). The EBA’s decision is therefore limited to corrections within grant decisions of the description, claims and drawings and references in these reasons to “patent corrections” or “correcting patents” are also so limited. [4] It also follows from this limitation of the present reasons to such patent corrections that, among other possible corrections to grant decisions, the EBA is not here concerned with corrections to bibliographic data and need not therefore comment on situations such as that described in the submissions of the second amicus curiae […]. R 71(3) has been amended with effect from 1 April 2012 (OJ EPO 2010, 637) so as to extend its scope to bibliographic data which is also to be sent to the applicant (thereby codifying the EPO’s previous practice). Since both the text in which the ED intends to grant the patent and the related bibliographic data are mentioned in the amended R 71(3) as separate entities, it is clear that under the amended Rule bibliographic data still do not form part of the text of the patent.(Subsequent references to R 71 are to the Rule prior to that amendment). [5] As the EBA observed in decision G 1/97 [3(c)] by reference to the travaux préparatoires, legal certainty and the prevention of adverse effects on third parties are the reasons for the narrow ambit of allowable corrections under R 140 (then R 89 EPC 1973): “The travaux préparatoires concerning R 89 also show that the legislator was particularly concerned with the protection of third parties. This is evident from the history of R 89, which emerged from a draft version of A 159(a) (see BR/49 d/70, page 9) incorporated in the draft Implementing Regulations of April 1972 under A 91(1) (see BR/185 d/72) which deals with the correction of procedural errors as long as this does not adversely affect the interests of, inter alia, third parties. Finally, it was decided that R 89 should be limited to its present, narrow wording, which rules out any possibility of such adverse effect.” In the EBA’s judgment R 140 is not available to correct patents. This is consistent with the wish to rule out any possibility of adverse effects as expressed in its earlier opinion cited above. There are several reasons, all of which reflect the need for legal certainty and the protection of third parties, why this should be so (see points [68] below) while patent proprietors none the less have adequate remedies available, both before and after grant, to ensure that the text of their patents is correct (see points [9-13] below). The non-availability of R 140 to correct patents means that the EBA, while agreeing with the statement in decision T 850/95 […] that patent documents referred to in a grant decision become an integral part of the decision, does not agree with the subsequent conclusion that errors in those documents may subsequently be corrected under R 140 (or R 89 EPC 1973 which was in effect at the time of decision T 850/95 – see OJ EPO 1996, 455, point [2, final sentence]). [6] Legal certainty is served by the grant decision establishing a definitive text of a patent for the purposes of any subsequent proceedings, whether at national or EPO level. As from its grant, a European patent ceases to be within the jurisdiction of the EPO and becomes, subject only to the possibility of later EPO proceedings by way of opposition or limitation, a bundle of national patents each of which falls within the exclusive jurisdiction of a designated Contracting State (see A 2(2)). One necessary corollary of the decision to grant is that the EPO is no longer competent to deal with any further matters relating to the text of the patent (see decision T 777/97 [3]). A further corollary of the grant decision is that, according to A 70(1) and subject to A 70(3), the courts and other authorities of each designated Contracting State are entitled, indeed required, to take the text of the granted patent as the basis of any national proceedings. Since, apart from any later opposition or limitation proceedings, the patent is then subject to the exclusive jurisdiction of those Contracting States, there is no reason why any subsequent decision of the EPO (other than 1125 | 3398
G 1/10 – Unavailable
K’s Law – The ebook
in opposition or limitation proceedings) to change the text of the granted patent should be recognised in those jurisdictions. Since, territorial scope apart, the powers of national courts and the OD correspond to each other (see A 100 and A 138), it would follow that the text of an opposed patent should also be in the form as granted. [7] As regards third parties, including potential opponents, none of the concerns with the present practice expressed in the President’s comments and, to a lesser extent, in the referring decision can arise if there is no possibility of recourse to R 140 to correct patents […]. Thus there will be no delay in opposition proceedings caused by requests under R 140 and no decisions on corrections not subject to appeal by an opponent. There will be no adverse effects on third parties who, relying on a patent as granted, undertake activities which later infringe a patent as corrected. There will be no would-be opponents who, relying on the granted claims, decide not to file an opposition only to find that, after correction, they are threatened by the patent but deprived of the possibility of opposition. And there will be no question of denying the principle of equal treatment of parties through the possibility for a patentee to turn inter partes proceedings into ex parte proceedings on an issue – the content of the patent – which is decisive for an opposition. [8] Further, the EBA considers that the absence of a possibility to request patent corrections under R 140 should not prejudice patent proprietors. If on the one hand a correction would be obvious (as it should be to satisfy R 140) then, as the respondent proprietor submitted […], there can be no surprise and no adverse effect on opponents or others, because all concerned should read the patent as if corrected and an actual correction should not be necessary. If on the other hand a correction would be less than immediately obvious, then it should not in any event be allowed under R 140 which is confined to correction of “obvious mistakes”. [9] In the EBA’s judgment a patent applicant (or, subsequently, a patent proprietor) has adequate means at his disposal to ensure his patent as granted is in the exact form he wants it to be without any need to invoke R 140. Should an applicant, at any stage up to and including the final approval by him of the text of his patent, make a mistake (or overlook a mistake he has previously made) in a document he has filed – for example, he mis-spells a word or uses an incorrect word in an amended claim which he files in the course of examination proceedings – then before grant that mistake can be corrected under R 139 on request. [10] Further, a patent applicant is obliged to approve the text in which his patent is to be granted (see A 97(1) and R 71(3)(4) and (5)). He must be informed of the text in which the ED intends to grant a patent and is deemed to approve that text if he proceeds to pay the requisite fees and file translated claims within a period of four months (see R 71(3)). Otherwise he must within that four month period request amendments or corrections (see R 71(4), which specifically mentions “correction of errors under R 139”); and there is also a procedure for further amendment and approval in the event those first amendments or corrections are not consented to by the ED (see R 71(5)). [11] If, given the opportunity to check the patent text before approving it, an applicant does not draw any errors to the attention of the ED and thus ensure his approval is limited to the correct text, then the responsibility for any errors remaining in that text after grant should be his alone, whether the error was made (or introduced) by him or by the ED. Thus, for example, the responsibility for a mis-spelt or incorrect word in an amended claim in the approved text is from this point in time entirely that of the patent applicant and it would be illogical thereafter to impute that mistake to the ED – by suggesting the ED did not intend to make a decision which in fact included the very text approved by the applicant himself – in order to bring the applicant’s own error within the ambit of R 140. The President’s comments […] referred to the practice of some applicants who turn to R 140 to request the correction of obvious errors when this is no longer possible under R 139. That practice suggests some patent applicants seek to rely on R 140 to “tidy up” their own errors by the fiction of ascribing them to the ED. As epi correctly observed […], R 140 is intended for correcting errors in decisions of the EPO and not errors in documents filed by a patent applicant or proprietor. It would follow from the non-availability of R 140 to correct patents that this practice should cease. [12] If however the ED proceeds to make a decision to grant which contains an error subsequently made by it, so that the granted text is not that approved by the proprietor, then the proprietor is adversely affected by that decision and is entitled to appeal. If, for example, the text of the patent which is the subject of the decision to grant includes an amended claim which has after approval been erroneously changed by the ED, then the patent proprietor can demonstrate that the ED did not grant his patent with the text approved by him. It must then follow that the ED failed to observe A 113(2) and the appeal should succeed by allowing interlocutory revision and reimbursement of the appeal fee as being equitable in view of the ED’s mistake (see respectively A 109(1) and R 103(1)(a)). 1126 | 3398
G 1/10 – Unavailable
K’s Law – The ebook
[13] The referring decision relates to opposition proceedings. The EBA considers R 140 is not available for correcting patents, including during opposition or limitation proceedings. However, it is always open to a patent proprietor to seek to amend his patent during opposition or limitation proceedings and such an amendment could remove a perceived error. Such an amendment would have to satisfy all the legal requirements for amendments including those of A 123. Being a request for an amendment under A 123 and not a request for a correction under R 140, and thus a normal incident of the opposition or limitation proceedings, no question arises as to which body is competent to deal with the request. In the case of opposition proceedings, the amendment will be considered and decided by the OD (see A 19(1) and A 100), in the case of limitation proceedings by the ED (R 91 and R 95(2)(3)(4)). [14] The first referred question asked whether a patent proprietor’s request for correction of the grant decision under R 140 which was filed after the initiation of opposition proceedings is admissible. Since the EBA considers that R 140 is not available to correct granted patents, it follows that a request for such a correction under R 140 filed is inadmissible. [15] The subsidiary part of the first referred question asked whether, in particular, the absence of a time limit in R 140 should be interpreted such that a correction under R 140 of errors in decisions can be made at any time. It follows from the EBA’s opinion that, as regards corrections of patents, R 140 is not available at all. [16] It was a condition precedent of the second referred question that a request for correction of a grant decision under R 140 filed after the initiation of opposition proceedings should be considered admissible. Since, as stated above, the EBA does not consider such a request admissible at all, no answer to the second referred question is required. […] For these reasons, it is decided that: 1. Since R 140 is not available to correct the text of a patent, a patent proprietor’s request for such a correction is inadmissible whenever made, including after the initiation of opposition proceedings. 2. In view of the answer to the first referred question, the second referred question requires no answer. Should you wish to read the whole decision, just click here. The file wrapper can be found here.
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Interpretative Spotlight: “Gradually”
K’s Law – The ebook
Interpretative Spotlight: “Gradually” 28 Jul 2012
This is an appeal against a refusal of an application. The single claim according to the request submitted during the oral proceedings (OPs) before the Board read as follows: 1. A gas turbine engine comprising a plurality of blades, each blade comprising: a platform (52); a shank (54) extending from the platform; a dovetail (56) extending between an end (101) of the blade and said shank for mounting said blade within the gas turbine engine, said dovetail comprising at least one tang (86); an airfoil (50) comprising a first sidewall (60) and a second sidewall (62) extending in radial span between said platform and a blade tip (70); and, a cooling cavity (102) in the blade that extends through the airfoil, the platform, the shank, and the dovetail, wherein the portion of the cavity defined within the dovetail includes a root passage section (120) having a first width (DR), and a transition passage section (122) that extends between the root passage section and the portion (114) of the cavity defined within the shank, and wherein the portion of the cavity defined within the shank has a second width (DS) that is larger than the root passage section first width (DR); wherein the root passage section first width (DR) is substantially constant within the root passage section (120) and the transition passage section (122) is tapered between the root passage section and the portion (114) of the cavity defined within the shank (54), such that the width of the transition passage section (DT) tapers outwardly between the root passage section and the shank portion; and a coating on the inner surface (104) of the blade that defines the cooling cavity, the coating being an oxidation resistant environmental coating (105), characterized in that at least a portion of said cooling cavity has a coating having a thickness greater than 0.0254 mm (0.001 inches), and in that the inner surface (104) of the cooling cavity (102) is defined with an arcuate interface (156) having a predefined radius between the transition passage section (122) and the root passage section (120) of the cavity, wherein the combination of transition passage section length (146) and the arcuate interface (156) enables the transition passage section (122) to taper gradually outward between the root passage section (120) and the shank portion (114), and with an arcuate interface (170) between the transition portion (122) and the shank portion (114) of the cavity, and wherein the transition passage length (146) enables the arcuate interface (170) to be defined between the transition passage section (122) and the shank portion (114). (my emphasis)
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Interpretative Spotlight: “Gradually”
K’s Law – The ebook
The Board found this claim to lack clarity: [1] Claim 1 of the sole request submitted during the OPs does not meet the requirements of Article 84 EPC 1973. In particular, the feature “wherein the combination of transition passage section length (146) and the arcuate interface (156) enables the transition passage section (122) to taper gradually outward between the root passage section (120) and the shank portion (114)” lacks clarity. [1.1] This feature has been taken almost literally from page 7 of the description of the only preferred embodiment of the invention, illustrated in Figure 3. The relative term “gradually”, which has no well-defined meaning in the art, is not further defined in the description of in this embodiment. Its meaning can be understood however in comparison to the abrupt transition between the corresponding sections in the blade of the prior art shown in Figure 5.
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Interpretative Spotlight: “Gradually”
K’s Law – The ebook
[1.2] The appellant’s construction of the feature “taper gradually outward” relies on a comparison of the taper angles of the transition passage section in a blade of the preferred embodiment of the invention (Fig. 3) with an angle of the corresponding section in a prior art blade (Fig. 5). In these two blades, the respective diameters of the adjacent root passage section DR, and the shank portion DS, are shown to be essentially unchanged. The length of the transition passage section is altered and the sharp corners at both ends of the transition passage section of the prior art blade are replaced by arcuate interfaces in the blade according to the embodiment of the invention. By comparing the two blades of these Figures indeed the outwardly tapering transition passage section of the preferred embodiment of the invention is longer and therefore, by joining at their ends the respective root 1130 | 3398
Interpretative Spotlight: “Gradually”
K’s Law – The ebook
passage section and shank portion, leads to a less abrupt or more shallow taper angle compared to that in Figure 5. However, the subject-matter of the claim does not refer to any prior art blade, so that the feature “taper gradually outward” remains vague and without precise meaning. [1.3] Even if it were assumed that the skilled person would, from the present wording of the claim, understand the feature “to taper gradually outward” in the sense of a more shallow taper angle compared to the prior art disclosed specifically in Figure 5, it would remain entirely unclear where the limit lies, for example in terms of degrees of an angle, between an abrupt transition, of the prior art, and a gradual transition as intended by the claimed subject-matter. The application does not disclose any absolute or relative dimensions of the geometry of the cooling cavities’ various sections for the blade according to the embodiment of the invention or the prior art blade. The appellant was also unable to provide any indication where such a limit between the prior art and the claimed subject-matter should be drawn, nor could the Board itself determine any disclosure in the application which would clarify this. The comparison of the length of the transition passage sections and consequently the meaning to be given to the feature “taper gradually outward” relies thus on unspecified dimensional relationships of a non-standardised prior art blade having a particular cooling cavity geometry with an allegedly abrupt transition. The feature consequently does not allow a skilled person to understand with any clarity what is meant by this feature of the claim. [2] According to Article 12(2) RPBA the grounds of appeal shall contain a party’s complete case. Article 13(1) RPBA sets out that any amendment to the party’s case may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. In order to be in line with the requirement of procedural economy, a request filed at a late stage of the procedure should be prima facie allowable in the sense that it overcomes the objections raised against previous requests and does not introduce new objections. Since the claim of the sole request submitted during the OPs does not meet the requirement of A 84 EPC 1973, this request is not prima facie allowable in the aforementioned sense. It was thus not admitted into the proceedings. [3] Since the only request on file was not admitted, the appeal could not be allowed since there was no request in proceedings upon which grant of a patent could be based. […] The appeal is dismissed. Should you wish to download the whole decision (T 1075/10), just click here. The file wrapper can be found here.
1131 | 3398
T 936/09 – A Deliberate Choice
K’s Law – The ebook
T 936/09 – A Deliberate Choice 27 Jul 2012
This is an appeal against the revocation of the opposed patent by the Opposition Division (OD). About one month after the notice of opposition had been filed, the EPO sent a communication (dated April 23, 2007) inviting the patent proprietor to file its observations within a period of four months. Upon request from the patent proprietor, this time limit was extended by two months, but the patent proprietor still failed to respond. The EPO then issued another communication (dated December 13, 2007) setting a two-month period for further action on behalf of the patent proprietor. On March 10, 2008, the latter sent a fax, which read: “For the attention of the OD Dear Sirs, Re: European Patent Application […] Reference is made to your Communication dated December 13, 2007. Please be informed that the Applicant [sic] is interested in maintaining the Patent, but will not reply to the Notice of Opposition filed by Brose on April 23, 2007.” The patent proprietor did not request oral proceedings (OPs) in the first-instance proceedings. Nor did it file any amended claims or further submissions on matters of substance. By a decision of the OD posted on 17 February 2009 the patent was revoked under A 101(2), for lack of novelty over documents D5 and D6. This decision was issued without prior OPs or a prior communication to the parties from the OD. The patent proprietor filed an appeal as well as amended claims. Those who have followed the recent case law will not be surprised that the Board found these claims to be inadmissible: [2] According to the principles developed by the Enlarged Board of Appeal, the appeal procedure is to be considered as a judicial procedure (G 1/99 [6.6], G 8/91 [7]). Appeal proceedings are wholly separate and independent from the preceding, purely administrative, first-instance proceedings and not a mere continuation of those first-instance proceedings (see e.g. T 34/90 [2]). The function of appeal proceedings is to give a judicial decision upon the correctness of a separate earlier decision taken by a first-instance department (see e.g. T 34/90, G 9/91 and G 10/91). It follows that the purpose of the inter partes appeal procedure is mainly to give the losing party a possibility to challenge the decision of the OD on its merits and to obtain a judicial ruling on whether the decision of the OD is correct (G 9/91 and G 10/91 [18]). The appeal proceedings are thus largely determined by the factual and legal scope of the preceding opposition proceedings and the parties have only limited scope to amend the subject of the dispute in second-instance proceedings (T 1705/07 [8.4]). It is not the purpose of the appeal to conduct the case anew and, therefore, the issues to be dealt with in appeal proceedings are determined by the dispute underlying the opposition proceedings (see e.g. T 356/08 [2.1.1]). Thus the appeal proceedings are not just an alternative way of dealing with and deciding upon an opposition. Parties to first-instance proceedings are therefore not at liberty to shift their case to the second instance as they please, thereby compelling the board of appeal either to give a first ruling on the critical issues or to remit the case to the department of first instance (see also T 1067/08 [7.2]). The filing of new submissions (requests, facts or evidence) by a party are not precluded in appeal proceedings, but their admission is restricted, depending inter alia on the procedural stage at which the submissions are made (see e.g. T 356/08 [2.1.1], T 1685/07 [6.4]; Brigitte Günzel, “The treatment of late submissions in proceedings before the boards of appeal of the EPO”, Special edition OJ EPO 2/2007, 30). [3] The afore-mentioned principles are reflected in the provisions of Articles 12(4) and 13 RPBA. Since the [patent proprietor] filed its main request with its statement of grounds of appeal, Article 12(4) RPBA is the relevant provision to be applied in the present case.
1132 | 3398
T 936/09 – A Deliberate Choice
K’s Law – The ebook
[4] Article 12(4) RPBA requires the board to take into account everything presented by the parties under Article 12(1) RPBA if and to the extent that it relates to the case under appeal and meets the requirements in Article 12(2) RPBA. However, according to Article 12(4) RPBA, the board has the discretionary power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the firstinstance proceedings. This discretionary power serves the purpose of ensuring a fair and reliable conduct of judicial proceedings (T 23/10 [2.4]). [5] It follows from the above that a party to appeal proceedings has no right to have a request which could have been filed in first-instance proceedings but was only filed with the statement setting out the grounds of appeal admitted into appeal proceedings (see also e.g. R 10/09 [3.2]; R 11/11 [9]; T 144/09 [1.14]). Consequently, a patent proprietor who files such a request cannot defend its patent on the basis of that request in appeal proceedings if the board, exercising its discretion under Article 12(4) RPBA, holds it inadmissible. [6] According to established jurisprudence, discretion has to be exercised equitably, i.e. all relevant factors which arise in a case have to be considered, taking into account the particular circumstances of the case (G 7/93 [2.5]; R 11/11 [9]; T 931/06 [3.5]; T 23/10 [2.3]). [7] In the first-instance proceedings of the present case the patent proprietor reacted to the opposition filed against its patent only after receipt of several EPO communications […] and in a very restricted manner. The patent proprietor merely stated that it was interested in maintaining the patent as granted and that it would not reply to the notice of opposition […]. In fact the patent proprietor did not file any further submissions, such as arguments or requests, in the course of the first-instance proceedings, despite being given several opportunities to do so […]. Indeed, in the whole course of the first-instance proceedings, the patent proprietor did not take the opportunity to defend its patent as granted or in amended form in writing. Nor did the patent proprietor file a request for OPs, with the result that the OD was not obliged to hold OPs in case of a revocation of the patent. Although it is true that not requesting OPs is not a waiver of the right to file submissions, it does, however, amount to dispensing with presenting the case orally during OPs. In the board’s view, by its conduct in the firstinstance proceedings the patent proprietor thus made a “considered and deliberate choice” not to submit any arguments or amended claims, or any further requests in the first-instance proceedings in writing or orally, despite being given the opportunity to do so. In this respect the present case is indeed comparable to case T 144/09, in which the patent proprietor did not avail himself of the opportunity to file any request which could have overcome one of the grounds for opposition, despite being given the opportunity to do so in OPs before the OD (see T 144/09 [IV; 1.4-18]), and therefore made a “considered and deliberate choice” not to file an amended request in those proceedings (see T 144/09 [1.14]). The board notes that, according to the facts of T 144/09, the patent proprietor had not explicitly stated in that case that he would not file any further request. However, the present board does not consider it necessary that such a choice is explicitly stated. [8] The board considers the patent proprietor’s conduct in the first-instance opposition proceedings particularly significant since a patent proprietor usually files at least arguments as to why the grounds for opposition raised do not prejudice the maintenance of the granted patent if he wants to maintain his patent in that form, and/or he amends his patent if he (also) wants to defend a limited version of his patent. [9] However, under the EPC, there is no legal obligation for the patent proprietor to take an active part in opposition proceedings. To that extent, the board agrees with the [patent proprietor]. But the board does not accept that the patent proprietor is free to present or complete his case at any time that he wishes during the opposition or opposition appeal proceedings, depending, for example, on his procedural strategy or his financial situation. This view is in line with the provisions of A 114(2) EPC (and A 114(2) EPC 1973) and of Articles 12(4) and 13 RPBA, which give a discretion to the deciding body not to admit a party’s submissions filed at a late stage of proceedings. In particular, in view of the judicial nature and purpose of inter partes appeal proceedings […] and in the interests of an efficient and fair procedure, the board considers it necessary that all parties to opposition proceedings complete their submissions during the first-instance proceedings in so far as this is possible. If a patent proprietor chooses not to respond in substance at all to the opposition, for example by filing arguments or amended claims, or chooses not to complete his submissions at the stage of the first-instance proceedings, but rather presents or completes his case only in the notice of appeal or the statement setting out the grounds of appeal, then he will need to face the prospect of being held to account for such conduct by the board when, for example, exercising its discretion under Article 12(4) RPBA. 1133 | 3398
T 936/09 – A Deliberate Choice
K’s Law – The ebook
[10] The board turns now to the [patent proprietor’s] argument that, as in case T 848/09, the reasons for the patent being revoked were not known to the patent proprietor until the decision under appeal was notified to the parties, because the OD had not held OPs or issued a preliminary opinion before notifying its decision. This argument does not convince the board. First, the notice of opposition clearly indicated the grounds for opposition, together with the supporting evidence and submissions, and the patent proprietor should have expected that the ground(s) for opposition raised in the notice of opposition would most probably be dealt with in the decision of the OD. Second, the board agrees with the [opponent] that there is nothing in the decision under appeal which goes beyond the content of the notice of opposition. This has also not been contested by the [patent proprietor] […]. Thus all the reasons for revocation of the opposed patent were known to the patent proprietor before it received the impugned decision. Consequently, the facts of the present case differ from those in case T 848/09, in which the competent board concluded that the reasons for revocation had not been explicitly made known to the patent proprietor and therefore that it was plausible that the formulation of a suitable new request overcoming the objection was not immediately evident to the patent proprietor at OPs before the OD. [11] Since the reasons for revocation of the patent were known to the patent proprietor before the OD notified its decision, the board does not accept the [patent proprietor’s] argument that the appeal proceedings were the first possibility to file amended claims suitable to overcome the reasons for revocation of the opposed patent. Moreover, the patent proprietor was given several opportunities to meet the grounds for opposition […]. Instead of not taking the opportunity to defend its patent in the first-instance proceedings, the patent proprietor could at that stage have filed a request in the form of that filed with the statement setting out the grounds of appeal. That this could have been done is also supported by the [patent proprietor’s] submission that the present main request is a straightforward limitation of the granted claims which took into consideration the reasons for revocation of the patent given by the OD. The [patent proprietor’s] argument that the present main request was “a direct reaction to the reasons for revocation given by the OD” does not alter the board’s view since, as explained above, these reasons were essentially the same as the objections raised in the notice of opposition. Furthermore, the [patent proprietor’s] motives for not limiting its patent in the first-instance proceedings in view of the objections raised in the notice of opposition are not a valid reason for accepting that the [patent proprietor] could not have filed the present main request in the proceedings before the OD. Even if the patent proprietor did think that these objections would not be relevant to the granted patent and for that reason did not file amended claims in the first-instance proceedings, this does not mean that it could not have done so. [12] The [patent proprietor’s] further argument that after the patent proprietor’s reply of 10 March 2008 to the EPO communications there was no indication at all that the OD would issue the impugned decision is not convincing either. As the [opponent] pointed out, the EPO communication dated 13 December 2007 contained the information that it was likely that, if the patent proprietor did not react within the period specified in that communication, the opposition proceedings would be continued pursuant to A 101. Since, in its reply to that communication, the patent proprietor clearly indicated that it would not reply to the notice of opposition and did not request OPs, it should not have come as a surprise to the patent proprietor that the OD continued the examination of the opposition and proceeded directly to issue the written decision. The board also agrees with the [opponent] that there was no surprising element as far as the time of notification of the impugned decision is concerned because there was indeed a period of almost two years between the filing of the notice of opposition and the notification of the decision under appeal as well as a period of about one year between the patent proprietor’s reply to the EPO communication and the notification of the decision under appeal. [13] Finally, the board turns to the [patent proprietor’s] argument that in fact there had been no further opportunity for the patent proprietor to react to any opinion of the OD by filing amended claims in the firstinstance proceedings. The board does not find this argument persuasive, since there was no reason for the OD to give an opinion on the opposition before taking its decision in view of the course of the first-instance proceedings as set out above (see point [7] above). [14] In view of the foregoing, the board concludes that the present main request could already have been filed in the first-instance proceedings in response to the objections raised in the notice of opposition. Hence the board does not accept the [patent proprietor’s] argument that the provisions of Article 12(4) RPBA were not pertinent in the present case. [15] Taking into account the course of the first-instance proceedings, it is the board’s view that an admission of the main request into the appeal proceedings would be incompatible with the judicial nature of the appeal procedure […]. As set out above […], the appellant patent proprietor made a considered and deliberate choice not to respond in substance to the opposition at all in the first-instance proceedings but to defend its patent for the first time in appeal proceedings, by filing amended claims and corresponding arguments. In fact, it was only in the appeal proceedings that the [patent proprietor] for the first time took an active part after receipt of the 1134 | 3398
T 936/09 – A Deliberate Choice
K’s Law – The ebook
opposition. As argued by the [opponent], the [patent proprietor] effectively circumvented the first instance and defended its patent exclusively in the appeal proceedings. By this conduct, the [patent proprietor] tried to shift its case entirely to the second instance, thereby compelling the board either to give a first ruling on the [patent proprietor’s] case or to remit the case to the OD. Such a shifting of the case would also put the [opponent] at an unjustified disadvantage because if the main request were admitted and decided upon by the board, the subjectmatter of that request would have been dealt with only by the board and the [opponent] would be deprived of an examination of the claims before two instances. [16] For the above reasons, the board, exercising its power under Article 12(4) RPBA, decided not to admit the [patent proprietor’s] main request into the appeal proceedings. The [patent proprietor’s] auxiliary request for remittal [17] At the OPs before the board the [patent proprietor’s] new representative requested, as an auxiliary measure, that the case be remitted to the OD on the basis of the amended set of claims which were filed with the statement of grounds of appeal and which form the basis for the [patent proprietor’s] main request. [18] Although it is true that a remittal pursuant to A 111(1) EPC 1973 would avoid the loss of two instances, it would clearly be in contradiction to the board’s discretionary decision not to admit the main request into the appeal proceedings. In particular, it would go against the reasons which the board had for not admitting the [patent proprietor’s] main request into the appeal proceedings. [19] As pointed out by the [opponent], a remittal would also be disadvantageous for the [opponent] since it would involve higher costs and a prolongation of the proceedings by several years before the present case would finally be settled. Moreover, the prospect of second appeal proceedings would not be excluded. Hence a remittal would go against the principles of procedural economy without any justification. Further a remittal would cause legal uncertainty for a long period for the [opponent], as well as for the public, regarding the validity of the opposed patent. The board accepts the argument of the [opponent], namely that, in the case of a remittal, the [opponent] and the public would be left with a provisionally valid patent for a considerable time until the issue of a final decision and, therefore, would have to be careful as far as possible infringements of the present patent were concerned. [20] It is the board’s conviction that, even if it decided to remit the case to the OD, an order for a different apportionment of costs in the [opponent’s] favour would not offset the above disadvantages of a remittal. [21] For the above reasons the [patent proprietor’s] auxiliary request is not allowable. [22] Since none of the [patent proprietor’s] requests is allowable, the appeal must be dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1870/08 – Disclaimer Subtleties
K’s Law – The ebook
T 1870/08 – Disclaimer Subtleties 26 Jul 2012
The present decision is extremely interesting because it tries to shed some light on the - complex, to say the least interrelation between G 1/03 and G 2/10. If you only want the headnote, here it is: The test of G 2/10 also applies to an amendment involving an undisclosed disclaimer by means of which a claim has been rendered new over a European patent application according to A 54(3). The examination of the admissibility of the amendment for compliance with A 123(2) must be made separately for the disclaimer per se and for the subject-matter remaining in the claim (see point [4] of the Reasons). But I would definitely recommend that you also read the reasoning behind this statement. The appeal was filed by the opponent after the Opposition Division had maintained the opposed patent in amended form. The wording of independent claim 1 of the main request was as follows (board’s labelling): (i) A superconducting wire comprising: (ii) a tubular sheath member (2); and (iii) an oxide superconductor (1) filled in said sheath member, (iv) said sheath member being formed of a material resistant in an oxidizing atmosphere to oxidation at the temperature of heat treatment used to form said superconducting wire, (v) said material being selected from Au, Ag or an alloy thereof and (vi) when said sheath is Ag or an alloy thereof, said oxide superconductor is not of the K2NiF4 type. In the following extract the Board examines the request with respect to the requirements of A 123(2): [4.1] Claim 1 specifies that the sheath member is
filled with an oxide superconductor ( feature (iii)) and formed of a material selected from Au, Ag or an alloy thereof (feature (v)).
Feature (vi) of claim 1 specifies that when said sheath is Ag or an alloy thereof, the oxide superconductor is not of the K2NiF4 type. The following subject-matter is therefore disclaimed: The combination of
an oxide superconductor of the K2NiF4 type and a sheath made of Ag or an alloy thereof.
[4.2] The indication that the oxide superconductor is of the “K2NiF4 type” relates to the crystal structure of the superconductor and means that this structure is of the same type as that of potassium nickel fluoride K2NiF4. In the application documents as originally filed it is disclosed […] that the oxide superconductor may have a perovskite type crystal structure. Furthermore, layered perovskite oxides and oxygen deficient perovskite oxides are mentioned. It is also disclosed that the sheath member contains a material selected from the group of: Ag, Au, Pt, Pd, and their alloys. Furthermore, combinations of specific superconducting compositions and specific sheath materials have been disclosed in the examples of the invention […]. However, the combination of an oxide superconductor of the K2NiF4 type and a sheath made of Ag or an alloy thereof is not disclosed as subject-matter of the invention or as a possible negative feature in the application as filed. The feature (vi) is therefore regarded to be an undisclosed disclaimer. By means of the disclaimer (vi) the subject-matter of claim 1 has been rendered new over document D1, a European patent application according to A 54(3) […]. 1136 | 3398
T 1870/08 – Disclaimer Subtleties
K’s Law – The ebook
[4.2.1] The [opponent] argued that the disclaimer was inadmissible in the light of G 2/10. The disclaimer obviously had a technical effect, because Ag as mentioned in the disclaimer clearly had different physical properties from the other materials. For example, it was well known that Au and Ag had quite different melting temperatures, which could have a significant impact on their applicability as a sheath material. This technical teaching was not derivable from the application as filed. Hence, the subject-matter “remaining in the claim after the introduction of the disclaimer” would not pass the test as set out in G 2/10. Disclaimers in the light of decision G 1/03 [4.3.1] Both referring decisions T 451/99 and T 507/99 leading to decision G 1/03 (and G 2/03) of the Enlarged Board of Appeal (EBA) posed the question whether an undisclosed disclaimer may be allowable when its purpose is to meet a lack-of-novelty objection pursuant to A 54(3) EPC 1973. This question is answered in the order of G 1/03. A 54(3) is essentially equivalent to A 54(3) EPC 1973. Decision G 1/03 is therefore concerned with the same situation as in the present case and has to be considered carefully. This is especially the case in view of the board’s obligations under Article 21 RPBA (OJ EPO 2007, 536). [4.3.2] G 1/03 [2.1] is of particular relevance in relation to state of the art under A 54(3). It was explained there that for a proper interpretation of the law the purpose of A 54(3) EPC 1973 had to be taken into account. There followed a discussion of the two traditional solutions in Europe which dealt with the problem of how a later application should be affected by an earlier application which had not been published at the filing or priority date of the later application (“whole contents approach” vs. “prior claim approach”). The corresponding discussions in the preparatory work to the EPC were also mentioned. Although eventually the “whole contents approach” was, at least in principle, accepted for the EPC, it was qualified in important respects and could not be said to implement the “philosophical” basis of the “whole contents approach”, i.e. that nothing be patented that had already been disclosed to the patent office. The legal history made it clear that the intention was to restrict the effect of the earlier application as far as possible in order to avoid unfairness resulting from the concept of a fictional publication. Furthermore, delimitation against an earlier application was a traditional and well-known exercise under the “prior claim approach” and it might be assumed that the highly controversial “whole contents approach” would never have been accepted in the preparatory work to the EPC if it had been suggested not only to extend the state of the art to be considered for novelty by a legal fiction but also to do away with the practice of delimitation against earlier applications. For the interpretation of A 123(2) EPC 1973 it was deduced from the discussion on A 54(3) EPC 1973 that the purpose of the disclaimer excluding a conflicting application was merely to take account of the fact that different applicants were entitled to patents in respect of different aspects of inventive subject-matter and not to change the given technical teaching. The following conclusion was reached: “Such a disclaimer, only excluding subject-matter for legal reasons, is required to give effect to A 54(3) [1973] and has no bearing on the technical information in the application. It is, therefore, not in contradiction to A 123(2) [1973].” (point [2.1.3, second paragraph]). As will be apparent below, the correct interpretation of the finding that an admissible disclaimer “has no bearing on the technical information in the application” is decisive for the question whether a claim may be found to infringe A 123(2). [4.3.3] In the discussion on A 54(3) EPC 1973 cited above, reference is made (see G 1/03 [2.1.1]), inter alia, to A 54(4) EPC 1973. According to the transitional provisions under Article 7 of the Act revising the EPC of 29 November 2000 (Special edition No. 1, OJ EPO 2007, 197) in conjunction with Article 1, last sentence of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000, A 54(4) EPC 1973 shall apply to patents already granted at the time of entry into force of the EPC 2000. Furthermore, A 123(2) is essentially equivalent to A 123(2) EPC 1973. The board therefore concludes that the reasoning of G 1/03 referred to above applies to the present case. The decision G 2/10 1137 | 3398
T 1870/08 – Disclaimer Subtleties
K’s Law – The ebook
[4.4.1] The [opponent] argued that the introduction of the disclaimer (vi) into claim 1 infringed A 123(2), especially in view of decision G 2/10 of the EBA. In the referring decision T 1068/07 [14] leading to decision G 2/10 of the EBA it was held that the subject-matter of the disclaimer had been disclosed as an embodiment of the invention in the application as filed. This is also reflected in the question put to the EBA. In G 2/10 [2.3] the term “embodiment” in the referred question was understood to be addressing the issue of disclaiming “subject-matter”, which is consequently reflected in the order of G 2/10. That decision therefore concerns an amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter disclosed in the application as filed. The present case, by contrast, relates to an undisclosed disclaimer […]. Decision G 2/10 is therefore, prima facie, not concerned with the same situation as in the present case, so it may be questioned whether that decision is applicable at all to the present case. [4.4.2] The [opponent] argued in particular that in order to decide whether the amendment introducing the disclaimer (vi) into claim 1 infringed A 123(2), the test set out [in] G 2/10 [4.5] had to be applied. [4.4.3] This test, which in the following the board will refer to as the “test of G 2/10”, is that an amendment to a claim by the introduction of a disclaimer infringes A 123(2) if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed (see G 2/10 [order 1a; 4.5.1-2]). Determining whether or not that is the case requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subjectmatter remaining in the claim after the amendment (see G 2/10 [order 1b; 4.5.3-5]). [4.4.4] On the other hand, in G 1/03 the conclusion that the disclaimer was not in contradiction to A 123(2) EPC 1973 was based on essentially legal considerations, taking into account the purpose of A 54(3) EPC 1973 and having particular regard to the preparatory work to the EPC […]. Even though the notion of ‘remaining subjectmatter’ is mentioned, how it should be determined or defined is not dealt with any further (see for example the last sentence of point [2.1.3]). Accordingly, it is not immediately apparent how, or to what extent, the test of G 2/10 should be applied to the present case, if applicable at all. For example, decision T 1049/08 held that G 2/10 applies exclusively to disclosed disclaimers (see point [4.4, 4 th §]). At the same time the board is aware that some passages of G 2/10 strongly suggest otherwise, as explained hereafter. [4.4.5] G 2/10 [4.7] discusses the President’s suggestion that, where the subject-matter remaining in the claim was not directly and unambiguously derivable from the application as filed, the criteria established in G 1/03 should be applied regarding the allowability of the disclaimer. This was suggested since otherwise, in the case of state of the art according to A 54(3) EPC 1973, an applicant disclaiming disclosed subject-matter could be in a worse position than an applicant disclaiming subject-matter for which there was no disclosure in the application. [4.4.6] The EBA examined this question and held that this discrepancy does not exist. More importantly, it did not interpret decision G 1/03 “to have intended, in its answer 2, to exhaustively determine the conditions under which, if fulfilled, an amendment by introduction of an undisclosed disclaimer was to be regarded as allowable under A 123(2) under all circumstances.” It is, however, not explicitly stated in G 2/10 what other conditions had to be fulfilled for such an amendment to be allowable. On the other hand, there can be little doubt that in the opinion of the EBA, claims containing an undisclosed disclaimer may well be found to infringe A 123(2). This is most clearly seen from the last statement of point [4.7]: “Hence, in that decision [i.e. G 1/03] it was not decided that, the requirements of answer 2 being fulfilled, an undisclosed disclaimer would always be allowable under A 123(2).” Furthermore, from the overall context of the President’s proposal and the answer of the EBA, as described above, it appears that in the opinion of the EBA such an infringement of A 123(2) would have the same cause as in the case of the disclaimers disclaiming disclosed subject-matter, namely the lack of disclosure of the subjectmatter remaining in the claim. In other words, the test of G 2/10 also applies for undisclosed disclaimers. [4.4.7] This may convey the impression that the two decisions contradict, given that an undisclosed disclaimer – as part of the definition of the claimed subject-matter – could obviously not have been disclosed to the skilled person in the application as filed.
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T 1870/08 – Disclaimer Subtleties
K’s Law – The ebook
The board therefore needs to examine how the test as set out in G 2/10 is applicable in the present case without running counter to the ratio decidendi of G 1/03. In this the board also attaches considerable weight to the fact that in G 2/10 the EBA at no point states or suggests that the findings of G 1/03 are not valid, although this decision is analysed in great detail (G 2/10 [3, 4.3, 4.4]). Applicability of the teaching of G 2/10 to the present case [4.5.1] The question is whether the test of G 2/10 may in fact require that an undisclosed disclaimer, being part of the definition of the claimed subject-matter, also needs to have a basis in the application as filed. This would mean that undisclosed disclaimers would no longer be possible. Such a conclusion would have required the EBA to have made a clear statement to this effect, which it did not, however, as observed above […]. [4.5.2] It therefore follows that in G 2/10 the EBA in fact meant something else. For this reason, the board is of the opinion that the above-cited last sentence of point [4.7] of the Reasons was intended to mean that it was not decided in G 1/03 that, the requirements of answer 2 of G 1/03 being fulfilled, an amendment involving an undisclosed disclaimer would always be allowable under A 123(2). A similar formulation is in fact also used by the EBA in the preceding paragraph: “… an amendment by introduction of an undisclosed disclaimer …” (G 2/10 [4.7, 4th §, second sentence]). [4.5.3] This board believes that the EBA intended to refer to an amendment by which the addition of an undisclosed disclaimer results in an amended claim in which the subject-matter remaining in the claim after the amendment – but not the undisclosed disclaimer itself – needs to be examined for its compatibility with A 123(2). The question now remains as to how this examination should be done. [4.5.4] Such an interpretation of G 2/10 makes it possible to maintain the crucial distinction between, on the one hand, the disclaimer per se, namely a feature of the claim which contributes to the definition of the claimed subject-matter, which may be itself allowable on the basis of G 1/03 even when undisclosed, and, on the other hand, the subject-matter remaining in the claim after the introduction of the disclaimer. The possibility of such a distinction is in line with the findings of G 1/03, and is not in contradiction with G 2/10, as will be explained hereafter. At the same time, the notion of the ‘subject-matter remaining in the claim’ makes sense independently of whether the disclaimer per se was disclosed or not. It is another matter that ascertaining compliance with A 123(2) may require a different examination, depending on whether the disclaimer was disclosed or not. [4.5.5] Decision G 1/03 introduced the notion that the subject-matter remaining in the claim may well be defined and identified even without the subject-matter of the disclaimer per se, see G 1/03, [2.1.3, last sentence]: “The remaining subject-matter is not modified by the disclaimer.” This finding of the EBA is understood by the present board to mean that the disclaimer does not form part of the remaining subject-matter, in the sense that its technical effects – or more precisely any teaching which may possibly be derived from a technical analysis of the features used in the formulation of the disclaimer – must simply be disregarded when the claim is compared with the original teaching in the application as filed. It is another matter that the disclaimer is required to identify those possible embodiments of the original technical teaching which are no longer covered by the amended claim, but are nevertheless still covered by the original technical teaching, i.e. the original disclosure normally understood as defining the subject-matter for the purposes of A 123(2). [4.5.6] The EBA at no point stated in G 2/10 that the distinction between disclaimers and other features of the claim is no longer tenable. On the contrary, the EBA confirmed that disclaimers are special in the sense that they are not to be considered as belonging to the invention, that is the technical subject-matter: “By contrast, the technical subject-matter defined in the disclaimer does not make the disclaimed subject-matter as such a part of the definition of the claimed invention” (G 2/10, point [4.5.2, 2nd §]). [4.5.7] It needs no particular emphasis that the use of undisclosed disclaimers may be quite common in certain technical areas, yet it must be considered as an exceptional tool in claim drafting. Its exceptional character is well illustrated by the fact that G 1/03 laid down strict conditions for its applicability. The board observes that the possibility of using undisclosed disclaimers has been derived from the legislative intent, and not from the wording of the EPC. Accordingly, such a possibility cannot and need not be explained on the basis of an interpretation which is derived only from the wording of the EPC. However, given that this latter interpretation is the basis of most proceedings before the EPO, care must be taken not to deviate from this “standard” interpretation of the Convention more than absolutely necessary. This explains the required exceptional approach 1139 | 3398
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to the examination of claim amendments involving undisclosed disclaimers as opposed to claim amendments involving disclosed features. [4.5.8] A 123(2) refers to the subject-matter of an application or patent as a whole, which may not be amended beyond the original content of the application. The claim is part of the application, and therefore it appears natural that A 123(2) also applies to the subject-matter of the claim. The term “subject-matter” as used in the EPC mostly refers to the technical teaching of the invention. This is best illustrated by comparing the wording of paragraphs (2) and (3) of A 123, with the former referring to subject-matter as opposed to the (scope of) protection conferred. [4.5.9] Furthermore, the patent system normally awards legal protection to the patent proprietor for exactly the subject-matter which had been disclosed as the invention, i.e. a technical solution. Even when the original full disclosure of an application is limited later in the light of the state of the art, it is to be expected that the remaining subject-matter can be qualified as a complete and fully disclosed invention. However, when “subjectmatter” is considered as the “subject-matter of a claim”, it suddenly develops a legal dimension. Besides expressing the technical teaching of the invention (what has been taught by the inventor to solve a technical problem), it also defines the legal subject-matter, namely the legal scope of protection (what others are excluded from exploiting). These are assumed to be the same, by virtue of A 69(1) in conjunction with R 43(1) (R 29(1) EPC 1973), the latter requiring that the claims define the protection sought (i.e. the legal subject-matter) in terms of the technical features of the invention. Though not expressly stated in this Rule, it is of course presumed that here a possibly limited invention in conformity with A 123(2) is meant. [4.5.10] The “subject-matter remaining in the claim” is doubtless also subject-matter of a claim, and as such it may also refer to both technical and legal subject-matter. As long as technical and legal subject-matter are the same, “subject-matter” may appear to be freely interchangeable between its technical and legal meaning. This is not the case when the subject-matter remaining in the claim results from an amendment by an undisclosed disclaimer. [4.5.11] Indeed, in the case of a claim comprising such a disclaimer the scope of the technical and of the legal subject-matter may be different. The scope of protection sought is less than the scope as taught by the invention, through the use of the purely legal limitation which as such does not make the subject-matter defined by the disclaimer part of the definition of the claimed invention. From this it also follows that technical and legal subject-matter are no longer freely interchangeable. On the contrary, the notion ‘subject-matter remaining in the claim’ as used in G 1/03 and G 2/10 must be carefully examined at every stage to ascertain whether it refers to the technical or legal subject-matter. [4.5.12] It appears to the board that it is unproblematic to read the concepts ‘subject-matter remaining in the claim’ and ‘subject-matter disclosed in the application as filed’ in the order of G 2/10 as technical subject-matter, i.e. the features of the invention as taught. This also holds true for the concept ‘disclaimed subject-matter’, given that it was the precondition of the referral for G 2/10 that the disclaimed subject-matter was disclosed in the application as filed. [4.5.13] If, on the other hand, the order of the EBA in decision G 2/10 had to be read as also applying to a claim which has been amended by means of an (admissible) undisclosed disclaimer, as apparently suggested by the EBA (see point [4.4.6] above), then the meaning of the expression “subject-matter remaining in the claim after the introduction of the disclaimer” must inevitably change to legal subject-matter in certain instances, namely whenever the effects of the disclaimer are examined. Put simply, in order to avoid comparing apples and pears during the examination for compliance with A 123(2), one must always keep in mind that the purely legal subject-matter of the disclaimer cannot by definition modify the original technical subject-matter. [4.5.14] Furthermore, if the disclaimer was undisclosed, it would not find any support in the sense of implicit or explicit disclosure in the application. Having anything undisclosed in a claim may not appear to be conform with A 123(2) according to its normal or usual interpretation, i.e. when all claim features, without exception, are expected to be directly and unambiguously derivable from the application as filed. However, assuming that A 123(2) only sets up a requirement for the technical subject-matter, while at the same time accepting that the disclaimer cannot modify the technical subject-matter, then it is not A 123(2) which is violated. Rather, claims containing (admissible) undisclosed disclaimers are exempted from complying with R 43(1), since the claim will contain features which might be technical per se, but they will not be those of the invention. [4.5.15] In this case, the claimed subject-matter is not amended so as to extend beyond the original content when compared with the originally disclosed (technical) subject-matter of the application, because the disclaimer does not modify the teaching of the invention, as a matter of law: it is not part of the definition of the invention. It 1140 | 3398
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only exists in a legal sense: it provides the limitation which is solely intended to play a role when the scope of protection needs to be determined, but cannot be considered when the original technical merits of the invention are examined. However, this limiting effect in itself, i.e. the result of the limitation (but not the features which have resulted in the limitation), may still have an effect on the technical subject-matter, as will be illustrated below. [4.5.16] Finally, it is mentioned that apart from the question of compliance with A 123(2) as prescribed by decision G 2/10, the amended claim, including the disclaimer, also needs to fulfil the other requirements laid down by G 1/03, such as clarity and conciseness (see point [2.4] of the order) and restriction of the amendment to the minimum (see point [2.2] of the order). The test of G 2/10 [4.6.1] The exceptional character of an amendment by way of an undisclosed disclaimer, as explained above, dictates that the examination of the admissibility of such an amendment is made with due regard to this exceptional character. In particular, the examination of the admissibility of the amendment for compliance with A 123(2) must be made separately for the disclaimer per se and for the subject-matter remaining in the claim (see point [4.5.4] above). [4.6.2] The examination must start with the question whether the formal conditions for the use of an undisclosed disclaimer as laid down in decision G 1/03 are given. In the present case this is uncontentious, because the disclaimer is intended to delimit the invention against a European patent application according to A 54(3). It would appear wrong to the board first to examine any technical effect of the proposed disclaimer in order to decide on its admissibility, as proposed by the [opponent]. Most disclaimers are worded using technical terms, so that such an examination would inevitably find technical effects as a result of the technical terms used. This would consequently make all such disclaimers inadmissible, which could not have been the intention of the EBA in view of G 1/03. Accordingly, the arguments of the [opponent] cannot stand. Furthermore, it appears wrong to the board to require at this stage in the examination of the proposed amendment that implicit or explicit support for the disclaimer per se should be found in the application as filed. As stated above, this would automatically disqualify all undisclosed disclaimers. [4.6.3] The test as laid down in decision G 2/10 should thus take place after an examination of the legal preconditions for admitting the use of undisclosed disclaimers according to G 1/03 and after the insertion of the proposed disclaimer in the claim. It is only at this stage that the examination of the “subject-matter remaining in the claim” should be made, corresponding to the order of G 2/10. This procedure is not in contradiction to the findings and the order of G 2/10: the subject-matter remaining in the claim “after the introduction of the disclaimer” must be examined (see point 1a of the order of G 2/10). The wording of the order leaves it open whether the disclaimer per se must fulfil A 123(2) or not. [4.6.4] There is also nothing in G 2/10 itself which would imply the contrary. Similar formulations are used throughout the decision, e.g.: “Whether the skilled person is presented with new information depends on how he or she would understand the amended claim” (emphasis by the board, see point [4.5.2, 3 rd §]). This board only adds that the skilled person, when reading the amended claim, is expected to be aware that the claim contains an undisclosed disclaimer, given that G 1/03 instructs that undisclosed disclaimers must be drafted so that they are readily identifiable as such (see [3, last §]). Therefore, the skilled person will be able to read the claim keeping in mind the differences between the technical and legal subject-matter, as explained above (see point [4.5.9]). Other board decisions have also readily accepted that the remaining subject-matter can be examined independently of whether there is any basis for the disclaimer itself (see for example T 1107/06 [45]). [4.6.5] Again, in the opinion of this board, the order of decision G 2/10 not only makes it clear that the test which it lays down applies to the amended claim, but the test is also applicable to amendments involving an undisclosed disclaimer. It is true that point 1b of the order concentrates on the examination of the technical content: determining whether or not the amendment infringes A 123(2) “requires a technical assessment of the overall technical circumstances of the individual case under consideration”. The emphasis put on the technical content is understandable given that the referrals plainly concerned disclaimers apparently not benefiting from the special status of admissible undisclosed disclaimers. Yet the order does not imply that the disclaimer per se needs to have a basis in the application as filed. Rather, the above determination of whether or not the amendment infringes A 123(2) should be made “taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subjectmatter remaining in the claim after the amendment” (see point 1b of the order). 1141 | 3398
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[4.6.6] Put differently, the test of G 2/10 can be used for examining the remaining subject-matter with due regard to the fact that the disclaimer is an undisclosed one that, as such, does not add technical subject-matter as a matter of law. As explained above, given that the skilled person is aware that the undisclosed disclaimer needs to be treated as such, the skilled person will also be able to determine whether the technical subject-matter remaining within the legal scope of the claim has been properly disclosed as required by G 2/10. [4.6.7] This said, the Board now needs to determine how the requirement for the amended claim to meet the test of G 2/10 may possibly be satisfied. In the first place, it must be examined whether the proposed disclaimer is indeed a proper disclaimer, in the sense that the remaining legal subject-matter is less than that of the unamended claim. If any subject-matter can be identified which falls within the scope of the claim after amendment by the proposed disclaimer, but which did not do so before the amendment, the disclaimer is improper. For example, a negative formulation removing a restricting feature may look like a disclaimer, but may in fact extend the legal scope of protection. The board takes it that such an amendment, not being a disclaimer at all, would also fail the test of G 1/03 so that any further examination under G 2/10 would in fact be redundant. Secondly, it may be examined whether there is any remaining subject-matter at all. A comparison of the originally disclosed and remaining subject-matter may reveal that a proper interpretation of the disclaimer in fact leaves the amended claim empty, in the sense that no technically realistic or feasible embodiments can be identified on the basis of the original application which would still fall under the amended claim. Thirdly, even if the second examination is passed, it may still be justified to examine whether the remaining subject-matter could plausibly be considered as belonging to the invention as presented in the application. For example, some existing remaining subject-matter may well be positively identified purely on the basis of claim logic. Nevertheless, a technical assessment of the original application may show that the amended claim is restricted to such a combination of parameters which the skilled person would never have contemplated as belonging to the invention from a technical point of view, for example because it would not solve the technical problem underlying the original invention. It must be emphasized that these types of examinations are given only as examples potentially suitable for determining whether the remaining subject-matter can be considered as properly disclosed in the sense of G 2/10. It goes without saying that other types of examinations may offer themselves, depending on the technical content of the application and the proposed disclaimer. The present case [4.7.1] In the present case, the board is satisfied that the subject-matter remaining in the claim has been properly disclosed and that the [patent proprietor] is not benefiting from an unwarranted advantage as a result of the amendment (G 1/93 [9]). [4.7.2] In particular, in the application documents as originally filed it is disclosed […] that the oxide superconductor may have a perovskite type crystal structure in the broad sense. This comprises structures which are not of the K2NiF4 type, which was also known to the person skilled in the art of superconductor technology at the priority date. For instance, in example 10 […] a superconducting wire is disclosed in which the components were mixed at a mixing ratio of (Y0.4Ba0.6)CuO3, which is not of the disclaimed type. Furthermore, it is disclosed […] that the sheath member contains a material selected from the group of: Ag, Au, Pt, Pd, and their alloys. From the priority document JP56856/87 of 13.03.1987 […] it can also be derived that the oxide superconductor has a perovskite type crystal structure which is not of the K2NiF4 type as described above, and that the sheath member is composed of Ag, Au or an alloy thereof. Thus it is clear that there are genuine and realistic embodiments still encompassed by the amended claim. Furthermore, there is no pointer in the application or any evidence on file that the embodiments still covered by the claim would not provide the advantages of the invention or that the skilled person could not have reproduced them at the priority date. Put differently, there is no pointer in the application for not considering these embodiments as belonging to the invention. [4.7.3] Accordingly, the board is satisfied that the technical subject-matter remaining in the claim has been properly disclosed to the skilled person in the application as filed. The board is also satisfied that the disclaimer 1142 | 3398
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is clear and concise, and properly restricted in relation to the anticipating content of European patent application D1. For these reasons the board is of the opinion that the amendment introducing the disclaimer (vi) into claim 1 is not contrary to the requirements of A 123(2), and is allowable in the light of both G 1/03 and G 2/10. To download the whole decision, click here. The file wrapper can be found here.
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T 667/08 – Looking Everywhere
K’s Law – The ebook
T 667/08 – Looking Everywhere 25 Jul 2012
This is an appeal against the refusal of a divisional application. Claim 1 of the sole request before the Board read: A monopole antenna, said monopole antenna comprising a radiating arm and a ground plane (12), said radiating arm being excited by a transmission line (11), wherein said radiating arm is shaped as a space-filling curve (59-60), wherein said space-filling curve is composed by at least ten connected segments forming a non-periodic portion of said curve, wherein:
each of said segments is shorter than a tenth of the operating free-space wave length of the antenna; said segments are spatially arranged in such a way that none of said segments form, together with an adjacent segment, a longer straight segment; said segments are connected in such a way that each segment forms an angle with its neighbours; none of said segments intersect with another of said segments except at the ends of the curve, whereby said space-filling curve intersects itself at its beginning and end so that said space-filling curve forms a closed loop; each pair of adjacent segments of said curve forms a corner; and wherein, if said curve is periodic along a fixed straight direction of space, the corresponding period is defined by the non-periodic portion composed by at least ten connected segments, none of said connected segments forming, together with an adjacent segment, a straight longer segment;
said space-filling curve being a curve that features a box-counting dimension larger than one; wherein said curve is not self-similar. The Board found this request to be allowable. In the following extracts, the Board deals with the question of whether A 123(2) and R 27(1)(e) EPC 1973 (now R 42(1)(e)) had been complied with. A123(2) [4.1] In this section, references to the original disclosure or original claims refer to the original version of the present divisional application as published under No. 1 592 083. It is stressed that this version is identical to the original earlier application. [4.1.1] The present application relates to “Space-filling miniature antennas”. In its original version, the description underlines that a key point of the invention resides in the definition of a “novel geometry, the geometry of Space-Filling Curves (SFC)” which is used to shape a part of an antenna […]. The original disclosure consistently stresses the general benefit in terms of size reduction which is expected from the use of SFCs when designing antennas or, given a fixed size, in terms of the ability of the antenna to operate at lower frequencies with respect to a conventional antenna of the same size […]. The original disclosure neither provides much detail as to antennas according to the various embodiments described throughout the description nor does it put any particular emphasis on the advantages they offer. In this respect, the dipole antenna, the monopole antenna, the patch antenna, the slot antenna, the loop antenna, the horn antenna and the reflector antenna, to which explicit reference is made in the original application, constitute mere illustrations of possible implementations of the original idea of using SFCs for the design of common antenna types. The original application discloses various examples of SFCs. In this respect, no clear distinction is made between the various categories of SFCs, in particular, between self-similar curves (i.e. structures which provide repetition in smaller and smaller scales) and non self-similar configurations. As a matter of fact, the original 1144 | 3398
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disclosure does not even expressly refer to these different categories of SFCs. Some of the geometries originally considered are “inspired in the geometries studied already in the XIX century by several mathematicians such as Giusepe Peano and David Hilbert. In all said cases the curves were studied from the mathematical point of view but were never used for any practical engineering application” [… M]ention is made of techniques which might have been used in order to construct SFCs. These include the use of algorithms known as Iterated Function System (IFS), Multireduction Copy Machine (MRCM) or Networked Multireduction Copy Machine (NMRCM). A combination of said various techniques is also envisaged […]. However, contrary to the appellant/applicant’s assertion, the European search report revealed the existence of various documents from which it followed that the use of SFCs for designing antennas was already known at the time of filing of the application from which a priority right is claimed. While a fractal pattern contributes to the inductive loading of the antenna system according to document WO-A-99/27608 (D2), the further documents WO-A-97/06578 (D1) and ES-A-2 112 163 (D5) describe antennas whose radiating arm is designed as an SFC. In both documents D1 and D5, the radiating portions of the antenna define self-similar (deterministic) curves. Apart from original claim 6, which reads: “A monopole antenna comprising a radiating arm and a ground counterpoise in which at least a part of said is shaped either as an SFC, Hilbert, Peano, HilbertZZ, SZ, Peanoinc, Peanodec, PeanoZZ, or ZZ curve according to claim 1, 2, 3 or 4”, the only example of a monopole antenna in the original application documents is given in Figure 4 and the corresponding section of the description. [4.1.2] In the Board’s view, the original disclosure provides a sufficient basis for the deletion in present claim 1 of the adjective “straight”, initially associated with the feature of the “at least ten connected segments” in the definition of the space-filling curve in original claim 1. It is observed, in this respect, that the passage of the original description in paragraph [0010], which provides in similar terms a definition of an SFC, does not include said adjective when referring to the “at least ten connected segments”. The additional limitation, in the same paragraph, according to which “no pair of adjacent segments defines a larger straight segment” does not necessarily imply that the segments, as such, are straight but appears to specify, in the case that these segments are indeed straight, that they cannot be associated so as to define a longer straight segment (cf. point 3.1 above). A further confirmation of the fact that the reference to segments was never intended to be limited to straight configurations can be found in the statements in paragraph [0010], according to which the SFC can be fitted over a curved surface, or in paragraph [0027], according to which a reflector whose perimeter is shaped with an SFC can be either flat or curved. As stressed by the appellant, at least some segments of a pattern that is fitted over a curved surface must themselves be curved. [4.1.3] The original disclosure also provides sufficient basis for the claimed configuration of a monopole antenna whose radiating arm defines a closed loop. More specifically, original claim 6 defines a monopole antenna comprising a radiating arm and a ground counterpoise, the arm being shaped as an SFC. Claim 6 explicitly refers to original claim 1 in which the possibility of the segments of the SFC intersecting at the tips of the curve is explicitly acknowledged. [4.1.4] A main issue to be considered under the aspect of added subject-matter concerns the definition of the SFC in claim 1, in particular the indication that “said curve is not self-similar”. More specifically, the question arises whether a sufficient basis exists in the original disclosure allowing a generalisation of the teaching of the monopole antenna of Figure 4. Whilst it is acknowledged that the SFC disclosed in this example is indeed not self-similar, this aspect is not emphasised in the section of the description relating to Figure 4 nor indeed in the rest of the application, where the terms “self-similar”, “self-affine” or “deterministic” are not even employed.
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It is an undisputed principle in the jurisprudence of the Boards of Appeal of the EPO that an amendment is allowable under A 123(2) if the subject-matter resulting from the amendment is directly and unambiguously derivable from the original application documents i.e. the description, the claims and the drawings, using common general knowledge. Thereby it is not necessary that the subject-matter resulting from the amendment was explicitly disclosed in the original application. It is therefore essential, when deciding on issues of added subject-matter, to identify the actual teaching conveyed by the original disclosure, i.e. the technical information that the skilled person reading the original disclosure would have derived from its content (description, claims, drawings) considered in its entirety. This approach might lead to the identification of subject-matter which has not been explicitly revealed as such in the application as filed, but nevertheless derives directly and unambiguously from its content. Literal support is not required by the wording of A 123(2). An amendment can therefore be allowable if it combines information which has not been disclosed in one and the same section of the original disclosure, but results, for instance, from information gathered from various embodiments possibly associated with general statements regarding the information derivable from the introductory section of the application. If this were not the case, the original disclosure would be deprived of a part of the information it actually contains, namely the technical teaching that the skilled person would retrieve from the application but which may typically extend beyond a mere literal interpretation of the original text. In order to avoid any misunderstanding, it is stressed that the Board does not question the principle according to which embodiments of an invention can normally not be freely combined under A 123(2) but merely emphasises that each embodiment in a disclosure must be construed with the knowledge and understanding aptitude of the skilled person in the art in the light of the whole application. Under the present circumstances, the broadest message conveyed by the original application is to design a part of an antenna as an SFC so as to limit its size or the area it occupies. The section “Background and summary of the invention” establishes that this idea can be implemented in various types of antennas and, in particular, in monopoles. In the absence of any restriction as to the type of SFC to be associated with each type of antenna, the skilled person would have understood that all types of SFC, as defined in paragraph [0010], could be implemented in any of the antenna types, since the effect in terms of size reduction resulted solely from shaping the antenna as an SFC irrespective of the type of antenna considered. This also applies inter alia to monopole antennas. This interpretation of the original description is further confirmed by the wording of original claim 6 which refers to a monopole antenna comprising a radiating arm shaped, for example, as an SFC. As convincingly 1146 | 3398
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put forward by the appellant, the skilled person is aware of the fact that the techniques of IFS and MRCM, referred to in paragraph [0009], generate self-similar structures. In contrast, the use of an NMRCM algorithm permits to avoid said self-similarity. In this context, reference was made to common general knowledge, as for example exemplified in the book: “Chaos and Fractals – New Frontiers of Science”, Heinz-Otto Peitgen et al., Springer-Verlag, 1992 (cf. in particular section 5.9 “Breaking Self-Similarity and Self-Affinity or Networking with MRCMs”). For these reasons, the Board is convinced that the skilled person would have indeed recognised that the evocation of these various techniques actually constitutes an implicit reference to the two families of SFCs, namely those which are self-similar (or self-affine) and those which are not, bearing in mind that IFS is essentially equivalent to MRCM, at least insofar as the result is concerned (cf. Peitgen, Section 5.1). Furthermore, the Board holds that the lack of a reference in the independent claims to the NMRCM algorithm, possibly associated with IFS or MRCM algorithms, to generate non self-similar curves as disclosed in original claim 16, is allowable. As pointed out by the appellant during the oral proceedings, the SFC disclosed in relation to Figure 4, or its reproduction in cascade in Figure 2 is not obtainable by NMRCM. The skilled person would have thus recognised that the monopole antenna actually disclosed in the original application was limited neither to the specific shape of Figure 4 nor by the technique of NMRCM to generate non self-similar structures but did in fact encompass possible alternatives. The skilled person would therefore have understood that what really mattered was just to break the similarity of self-similar patterns, independently of the technique required to reach this objective. [4.1.5] In conclusion, the subject-matter of present claim 1 derives directly and unambiguously from the original disclosure. It therefore meets the requirements of A 123(2). […] R 27(1)(e) EPC 1973 – Example embodying the invention [5] A consequence of the amendments made in the course of the examination and appeal proceedings is that the claimed invention is devoid of any concrete example. It is pointed out, in this respect, that the sole illustration of a monopole antenna in Figure 4 depicts an open radiating arm contrary to the claim’s wording. The present Board (in a different composition) has, however, already decided in decision T 990/07 that it is not always necessary under R 27(1)(e) EPC 1973 to include an example embodying the invention if the earlier application is considered to fulfil the requirements of A 83 EPC 1973 (cf. T 990/07 [3]). In the present circumstances, the Board has no doubts that the realisation of a radiating arm defining an SFC which is not self-similar for the realisation of a monopole antenna can be carried out on the basis of present disclosure. It is observed, in this respect, that the printed circuit fabrication techniques referred to in relation to Figure 3 could be applied irrespective of the actual nature of the SFC considered. The requirements of R 27(1)(e) EPC 1973 are therefore met. To download the whole decision, click here. The file wrapper can be found here.
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T 742/11 – Too Many Cooks Spoil The Broth
K’s Law – The ebook
T 742/11 – Too Many Cooks Spoil The Broth 24 Jul 2012
When between an applicant and its representative there is another agent, A 122 is in the air. Here is another case illustrating this empirical principle. The case is also interesting because the Code of conduct of professional representatives is referred to. The appellant in the present case is a company situated in Panama City that had filed a European patent application. The patent portfolio of this company was managed by an Australian and New Zealand patent attorney, who acted as a “trusted advisor” to the appellant. Though not a European patent attorney himself, he was experienced in European patent prosecution matters. He acted as an intermediary between the professional representative (PR) and the applicant. It was him who gave instructions to the PR. The Examining Division (ED) had scheduled OPs (OPs) for June 8, 2010 and set May 7, 2010, as a time limit for submitting new requests or arguments. On May 4, there was an exchange of e-mail messages:
16:21: the advisor reminded the applicant of the time limit 16:32: the applicant responded and instructed the advisor not to proceed with the application 16:37: the advisor confirmed these instructions to abandon and forwarded them to the PR 17:04: the advisor told the applicant that he thought the application should be maintained 17:23: the advisor told the applicant that the PR could provide an estimate on the chances of success
Later that day the applicant called the advisor and instructed him to continue with the application. However, these instructions were not forwarded to the PR, as a result of “an oversight on the part of [the advisor]”. During the OPs held on June 8, 2010, the ED announced that the application was refused. The decision was posted on July 2, 2010. In an e-mail dated August 4, 2010, and sent both to the office address of the advisor and also to his private email address, the PR informed the advisor about the refusal of the application and the time limit for filing an appeal. This e-mail was worded as follows: “Dear … We have received from the EPO a decision to refuse this application, together with a write up of a telephone conversation I had with a member of the ED on whether we would attend Oral Proceedings and a copy of the minutes of the Oral Proceedings, which proceeded in our absence. I attach a copy of these documents. The applicant now has the option of appealing the decision to refuse the application. The period for notifying the EPO that the applicant wishes to appeal ends 10 September 2010. A further two months are allowed for filing grounds of appeal. In the absence of instructions from you before 10 September 2010 we will take no action to effect an appeal. We will also not issue any reminders in this regard. I look forward to any instructions you might have. We will issue our invoice for reporting the decision shortly. Yours sincerely ...” The time limit for filing an appeal expired on September 13, 2010 without an appeal having been filed. The applicant realised that the application was no longer pending when an employee of the legal department called the PR on 19 January 2011 to inquire about the instructions that the latter had received.
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On March 18, 2011, the applicant filed a notice of appeal, a statement of grounds of appeal as well as a request for re-establishment. [1] The admissibility of the appeal turns on the success of the request for re-establishment of rights. If this request is granted, the appeal will be examined on the merits. Otherwise it has to be rejected as inadmissible (A 108, first sentence in conjunction with A 110, first sentence and R 101(1)). [2] The time limit for filing an appeal in the present case expired on 13 September 2010. The request for reestablishment of rights was filed on 18 March 2011. The Board accepts that in the present case the cause of noncompliance (R 136(1)) was removed when an employee of the appellant realised that no action had been taken in the application (thereby implying that the appeal had not been filed either). According to the appellant, this happened on 19 January 2011, when the PR sent an email to an employee of the appellant following her inquiry by telephone. The Board accepts the given date of the email as the starting date for calculating the time limit pursuant to R 136(1) (at least no other event after 13 September 2010 is evident from the file which potentially could have triggered an earlier time limit). In this manner, the cause of non-compliance with the missed time limit was the erroneous belief of the appellant that the advisor had been instructed and had taken the necessary steps, while for the advisor and the PR it was their erroneous belief that the application was to be abandoned. The omitted acts were completed together with the filing of the request and the necessary fees were paid. The request for re-establishments of rights is admissible. [3] Pursuant to A 122(1), the request must be allowed if the applicant can show that the time limit was missed in spite of all due care required by the circumstances having been taken. It is settled case law of the Boards of Appeal that due care must be exercised by all persons acting on behalf of the applicant. Thus, in the present case it must be examined whether this requirement has been fulfilled by all the persons involved. In the present case it can be established that the PR, the advisor, the assistant and the managing director of the appellant were all personally involved in the communication between the appellant and the PR. [4] The Board notes that the explanation of the events as presented in the request and the subsequent two written submissions of the PR on behalf of the appellant contradict each other to some extent, or at least convey this impression on first reading. To the extent that the later submissions give a different cause for the missing of the time limit, they have to be disregarded (or be considered as inadmissible, see J 2/86, T 257/07, T 261/07), given that the later submissions were filed after the expiration of the time limit stipulated by R 136(1) and (2). However, the Board accepts for the benefit of the appellant that the contradictions themselves do not amount to the presentation of a completely new and different factual situation, and that the three submissions essentially all relate to the same set of facts, so that in the end the Board is able to assess the case taking into account all the written and oral submissions of the appellant (see also J 5/94). Due diligence to be observed by the assistant [5] Firstly, the Board notes that there is absolutely no evidence on file in respect of the key action of the assistant, namely the alleged phone call to the advisor on 4 May 2010 with the reversal of instructions. There is no witness statement from her. The only factual statement is that she was instructed to make the phone call. Whether she made the phone call or not remains unknown. From the facts on file it cannot be excluded that she did not make the phone call. This would be contrary to the assumption made in the two available witness statements from the managing director and the employee working in the legal department […], but they only express an assumption, and not personal knowledge of this event (i.e. the phone call). This contrasts with the statement of the advisor, who does not remember any phone call. It is noted that the employee working in the legal department does not even name the assistant personally as having made the phone call. The managing director admits himself that he did not follow up the instructions given to his assistant to check if they reached the advisor […]. Though the request for re-establishment is based on an alleged “misunderstanding” between the advisor and the assistant, there is no evidence that there was anything to misunderstand at all. It is even possible that the misunderstanding occurred between the assistant and the managing director. Hence the Board is unable to establish that the assistant did act with the required level of care. The mere statement that she was a reliable employee is not sufficient. For this reason alone the request for re-establishment of rights cannot be allowed. The argument that she probably would not have remembered the details of the phone call does not help because it does not change the fact that there is practically no information available to the Board about the circumstances relating to how the instruction to the advisor was lost. [6] Assuming, again for the benefit of the appellant, that the assistant understood the instruction and made the phone call as instructed, the Board considers it appropriate to point out that her manner of proceeding by apparently not following up the alleged phone call (e.g. with an e-mail) does not appear particularly diligent under the given circumstances. On that day she had received several e-mails from the advisor, and also sent one 1149 | 3398
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herself with the instruction not to continue the application. In such a situation it would have been reasonable to expect that the instructions given by phone would be also confirmed by an e-mail at least, particularly in the light of the fact that the new instructions were meant to reverse completely the previously sent written instructions. In the opinion of the Board, this minimum level of diligence is to be expected from an office assistant even without special knowledge of patent matters. Conversely, if she was regularly expected to carry out instructions without any intellectual involvement on her part, it would have been reasonable to expect her superior to have checked if she had made this particular phone call, or alternatively to instruct her that this phone call was particularly important and needed written follow-up or checking for confirmation of receipt. However, the wording of her emails and the fact that e-mails were addressed to her personally (“Dear Patricia”) do not convey the impression that she had no understanding of the matters passing between the advisor and the managing director: “I have spoken to [the managing director] … we are not interested in pursuing this matter” (emphases by the Board) […]). Examination as to due care during subsequent events [7] The appellant based his case based on the argument that the time limit in question was missed because the advisor was unaware that the instructions had been reversed and that the application should be pursued further. The Board sees no reason either to doubt the existence of a strong causal relationship between the events and occurrences resulting in the erroneous belief of the advisor on the one hand and the final loss of rights on the other, and therefore these events, in the light of all the facts of the present case, are relevant to the missed time limit. Put differently, the Board has good reason to consider these events as falling under those circumstances in respect of which the due care required by A 122 must be shown. From this it follows that a finding of lack of due care in relation to these events could in itself be sufficient to lead to a refusal of the request for re-establishment of rights. Furthermore, this is not affected by the finding, as set out below, that the loss of rights could still have been avoided if all due care had been observed at a late stage. [8] On the other hand, the first error (the loss of the instructions from the managing director) did not cause any direct loss of rights at that time, but only meant that no submissions were prepared for the upcoming OPs. The rights were finally lost more than four months later, when the appeal against the refusal of the application was not filed. Furthermore, the appellant stated that the first error was of a type which could not have been discovered under the circumstances […]. [9] The Board also took note of the fact that the assistant was no longer working for the appellant. The causes and circumstances of her departure from the firm were not explained or given any significance. Yet, based on the available evidence, it cannot be excluded that the loss of the order from the managing director reversing his previous instructions did not depend on her or at least cannot be imputed to her. The Board is also aware of case law according to which inexplicable errors may be excusable, depending on the circumstances (see T 580/06 [2.3]). [10] The Board finds it appropriate also to examine the due care requirement in the time before the expiry of time limit for filing an appeal (see also T 30/90 [3]), if the Board accepts, arguendo, that the first lost communication (or misunderstanding) was excusable. In other words, the Board needs to examine if the appellant could have been realistically expected to discover the first error, given that it is clear that the proper observation of this time limit could have made good the earlier mistake, and also given that there had been ample time to discover the first error. Due care to be observed by the advisor [11] The Board holds that even if the lost communication (or misunderstanding) between the assistant and the advisor could be excused, the request could still not be granted because there was a lack of due care in respect of the second missed opportunity of saving the application, namely when the appellant should have become aware of the time limit for filing an appeal following the refusal. The Board holds that, based on the available evidence, either the advisor or the managing director of the appellant (or possibly both) did not show the required care in dealing with a time limit, in the present case the time limit for filing an appeal, the non-observance of which could cause a loss of rights. [12] The monitoring and observance of time limits is normally expected from a diligent applicant (or patent proprietor as the case may be), or at any rate from a PR representing the applicant. In the present case, the appellant is a company registered in Panama, and as such obliged to act through a PR (A 133(2)). The appellant chose to communicate with the PR through an intermediary, the advisor. The request for re-establishment of rights described the advisor as a “trusted advisor” to the appellant, and from all the evidence it appears that he was not an employee of the appellant. In the opinion of the Board, from a legal point of view he must be 1150 | 3398
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considered to have been an agent acting on behalf of the appellant in relation to the PR, since he was not a PR entitled to act before the EPO himself. Nevertheless, the actions of an agent must be imputed to the party he is acting for, and the same level of care is expected from the agent as from a PR, or at least as from the party itself. See also Case Law, 6th edition, Chapter VI.E.7.4.3, page 523 onwards (Due care on the part of a non-authorised representative). Indeed, requiring a certain level of care from a PR and a party using his services would become utterly pointless if an intermediary acting between the party and the PR were not required to show the same level of care. [13] The appellant submits that even though the advisor himself was not a PR authorised to act directly before the EPO, so that he also had to rely on another representative besides the advisor, this arrangement did not involve an exceptional level of risk. It was also widely used, so that it must be considered as sufficiently diligent practice. The Board agrees that no party is obliged to communicate with his appointed representative before the EPO directly, but is free to choose any intermediary. However, in this case the party resorting to the services of such an intermediary bears the risk of all the consequences arising from this arrangement. The Board also accepts that an applicant may indeed find it convenient and practical to use a further agent between himself and the PR handling his matters before the EPO. Such a middleman may have a better personal knowledge of the patent portfolio and may have been engaged instead of an in-house patent clerk, all the more so as in-house patent staff are very often not fully qualified patent attorneys. Still, adding a middleman introduces another communication interface and increases the risk of error, if only marginally. However, the Board finds that the real risk may be not so much the loss of information, but rather the loss of a well-defined sphere of responsibility with respect to the application, and with that an increased danger that errors remain hidden, as the present case illustrates. [14] In assessing the situation before it, the Board proceeds from the assumption that the appellant, being a relatively small firm, had neither its own patent department nor any other employee whose main task was the administration of the patent portfolio. The patent portfolio was essentially managed by the advisor, who was acting as an agent of the appellant vis-à-vis the outside world in patent matters, including the PR. The advisor himself had set up his business as a one-man firm. Furthermore, it is important to note that the PR sent his invoices to the firm of the advisor, who issued then his own invoice to the appellant, thereby making it clear that he was indeed an agent and not an employee of the appellant. In such a situation the Board accepts that neither the advisor nor the appellant could be expected to maintain a highly reliable and therefore necessarily sophisticated and expensive system for monitoring time limits. It was sufficient that time limits were monitored by the PR handling the case before the EPO. However, it is clear that the advisor had no powers to decide whether an application was to be maintained or not. This was decided by the managing director of the appellant. On the other hand, the managing director, while retaining the responsibility for deciding on patent matters, did not have time to look after the individual patent applications in the portfolio. Rather, this was the task of the advisor, on the understanding that he would seek timely instructions from the managing director whenever needed. It also appears clear that even though a number of staff at the appellant’s offices occasionally handled patent-related correspondence, at no time did they have any responsibility to monitor time limits or the status of the applications in general. Hence, on the one hand, it should have been clear to the advisor that he must seek instructions from the managing director directly, and on the other hand it should have been clear to the managing director that if the advisor was not taking any action in a file, nobody else would. [15] The Board holds that under such circumstances it was to be expected from the PR that he reminds the appellant of the time limit for filing the appeal and that failing to file the appeal would result in a loss of rights, even if he had been instructed earlier not to put more work into the application. By implication, it was also to be expected from the advisor to remind the appellant, whether of his own volition or following a reminder from the PR. Proper monitoring of the procedure in order to avoid a loss of rights is one of the very reasons for using the services of a PR, whether directly or through a further agent. However, if the information from the PR concerning the imminent time limit does not get through to the applicant, then the system must be designated as inherently defective. It is true that the last identifiable instructions from the appellant (e-mail of 4 May 2010 at 16:32 hours) clearly state that the appellant was “not interested in pursuing (the application) any further”, but the confirmation of receipt of these instructions (advisor’s e-mail of 4 May 2010 at 16:37 hours) leaves it open whether further possible actions of the advisor could be expected or whether it meant a definite termination of his involvement in the case. In particular, the confirmation e-mail did not warn the appellant that it would not be receiving any more reminders so that it must be prepared for a complete loss of rights. [16] The Board notes that the Code of Conduct for PRs (Code of Conduct of the Institute of Professional Representatives before the EPO, OJ EPO 2010, Special edition 1, p. 203 onwards) expressly mentions the provision of case status information to clients as a professional obligation: “A member shall keep clients informed of the status of their cases.”, see point 4 (Relations with clients), paragraph (a), second sentence. A diligent applicant using the services of a PR should always be able to rely on this obligation of the PR, which 1151 | 3398
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undoubtedly serves the interest of the clients. This is particularly so when the applicant itself does not have proper monitoring systems in place. A diligent PR must make sure that his clients are aware of this service and together they are responsible for ensuring that the status information provided by the PR will not be obstructed by a possible middleman or agent acting between them, such as the advisor in the present case. [17] The PR asserts that once instructions to abandon the application have been received, no further actions or reminders either from the PR or from any other agent such as the advisor are expected. The Board agrees that there are situations where this is indeed the case, namely if the client has been so informed, either by an explicit statement or a tacit agreement based on pre-existing and long-standing relationship. None of this is proven in the present case. [18] On the contrary, the PR’s letter of 4 August 2010 sent to the advisor contradicts such an assumption, all the more so as the PR indicated in this reminder that he would issue a further invoice for reporting on the refusal […]. It has to be presumed that the advisor would have issued a corresponding invoice to the appellant. Apparently it was not the understanding of the parties that the representatives would not need to take further action if an application was not pursued any further, otherwise the appellant could not have been expected to accept an invoice “for reporting the decision”. It appears very unlikely to the Board that the PR was expected to report on the outcome of the OPs before the ED, but not expected to report whether and when an appeal against a possibly adverse decision at the OPs could be filed. [19] Finally, quite apart from the intention to issue the invoice, the wording of the e-mail dated 4 August 2010 also contained a final warning to the appellant, illustrating that such a warning is customary and expected before a representative is indeed discharged from all obligations in a case: “In the absence of instructions from you before 10 September 2010, we will take no action to effect an appeal. We will also not issue any reminders in this regard” […]. Only when such a warning is effectively received by the represented party does the duty of the PR normally end. [20] The Board recognises that the extent of an obligation to report on the status of abandoned applications may depend on various factors. These are not set out in detail in the Code of Conduct (see point [16]). In this respect some helpful indications can be found in the Guidance passages of the Rules of Conduct for UK Patent Attorneys (Rules of Conduct for Patent Attorneys, Trade Mark Attorneys and Other Regulated Persons, source: http://www.ipreg.org.uk/document_file/file/IPReg_Code_%20of_Conduct_Sept_2011.pdf. In particular, see Guidance 6.4: “Even where there is no ongoing client relationship, absent a formal termination including clear and reasonable notice to the former client that communications will not be forwarded [emphasis by the Board], regulated persons should take timely steps to draw a former client’s attention to correspondence or communications received relating to the former client and their rights. …”. It goes without saying that this obligation applies even more strongly where the relationship with the client is still ongoing, e.g. because of other pending applications in a patent portfolio. The Board adds that this guidance of the UK code of conduct is provided for the purposes of applying Rule 6, the scope of which essentially corresponds to the scope of point 4 of the European Code of Conduct mentioned above (Relations with clients), and that the Board is not aware of any circumstance which would suggest a substantially different professional standard for European and for UK patent attorneys. Due care to be observed by the appellant [21] For the sake of argument, if the Board were to accept the submission that the appellant explicitly or tacitly agreed with the advisor that the PR and/or the advisor was indeed discharged from all his obligations, i.e. that no reminders were necessary or expected following instructions not to pursue an application, then the Board would be bound to conclude that it was the appellant, in the present case the managing director acting directly for the appellant company, who did not exercise the expected due care. [22] Firstly, a normally diligent applicant would not give up the benefits resulting from the professional obligations and qualifications of the PR, for example in order to save costs. Such practice may be common, yet it cannot be considered diligent, in the sense of showing all due care in the light of the circumstances, as required by A 122 EPC. In other words, depriving oneself of the “safety net” of such reminders cannot be considered as diligent behaviour. In practice, cases presumed abandoned may become important again, as the present case itself illustrates. This also means that a normally diligent applicant would not expect of an intermediary to “filter” out the status information or reminders originating from the PR. It follows that in the present case the 1152 | 3398
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managing director did not exercise due care if he intentionally dispensed with the possibility to be reminded of the final loss of rights in the event of an abandoned matter. In the opinion of the Board, this manner of assessing this issue also provides a fair result. Either the applicant intended the decision to abandon to be final and irreversible, in which case not granting re-establishment is equitable. Or if the applicant expected the decision to abandon to be reviewed at a later stage, then waiving reminders – in spite of the applicant not having a time limit monitoring system of its own – obviously cannot be diligent. [23] Secondly, irrespective of the previous finding, if the managing director was conscious of the fact that there would be no reminders, and he also knew that he would not have the time or knowledge to monitor the prosecution of the applications himself, he ought to have followed up the instructions reversing his previous decision to abandon, and ought to have checked in some appropriate manner that they reached his appointed advisor. This was all the more to be expected, as it is clear from the submissions that the managing director must also have been aware that he gave the instructions very late, even though he was in frequent personal contact with the advisor. If he chose not to contact the advisor personally in this instance, at least a check on the confirmation of the receipt of the instructions would have been in order. Even this task could easily have been delegated to the assistant. In this respect the ratio decidendi of decision T 166/87 does not appear to be applicable, contrary to the submissions of the appellant. The advisor was not working daily and in close personal contact with the other staff in the offices of the appellant, so that maintaining some redundancy in the communication with the advisor would have been in order. [24] As to the responsibility of the managing director, not realising the mistaken abandonment of the application from the status reports must also be imputed to him (if they existed at all, given that such status reports were not shown to the Board). After all, the primary purpose of status reports is to make sure that the client is made aware of the status of individual applications. If in a small company there is no dedicated staff to do deal with these, this task and the associated responsibility remain in the end with the person having the final say, in the present case the managing director. He cannot decline this responsibility by reference to a large amount of correspondence needing to be reviewed. It is normally to be presumed that correspondence addressed to a company will finally be read by the person responsible. Otherwise, written correspondence would completely lose its legal significance. [25] Accordingly, the Board holds that the appellant did not prove that the required due care was exercised in the period leading up to the time limit for filing an appeal, by all the persons involved. On the contrary, the Board finds that neither the advisor nor the managing director of the appellant acted with the required care, so that the request for re-establishment must be rejected. […] The appeal is rejected as inadmissible. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1924/07 – Searchless 23 Jul 2012
This appeal is against the decision of the Examining Division (ED) to refuse the application under consideration, which concerned collecting factory automation (FA) information generated at each step of a manufacturing process, and in particular information about abnormal conditions. The search division had issued a declaration under R 45 EPC 1973 on the grounds that the claims related to subject-matter excluded from patentability and commonplace implementation features. It pointed out that a search might be carried out during examination should the problems be overcome. In a reply, the applicant argued that at least the apparatus claims should have been searched in the light of the recent change in practice at the EPO as reflected in the Guidelines. In their three communications and decision, the ED did not refer to excluded subject-matter, but raised substantive objections, mainly of lack of inventive step over the prior art cited in the description. The division refused the application on the ground that there was no basis in the original application for the “two-step” setting of the data collection conditions in amended claim 1 (A 123(2) EPC). The objection of lack of inventive step was in a section entitled “Obiter Dicta”. Claim 1 of the main request before the Board read: An FA information collecting method for collecting work front information sent to a data transmission line (11,13,26), using a network, for use in an FA system (10) that manages plural steps for manufacturing a product, the method comprising setting a data collecting condition on said network, to collect desired information from among the said work front information, and managing data collection by collecting and storing, as measured data, desired information based on the data collecting condition from an information collecting end (18,19,20,21,22), characterized in that the method further comprises: specifying another data collecting condition to detect abnormal information; collating the measured data, with another data collecting condition thus specified; collecting, when abnormal data deviated from said another data collecting condition is detected, data over a predetermined period going back from the point where said abnormal data was detected; and transmitting the data over a predetermined period to the FA system. The decision contains some interesting statements on search-related matters. The application [3] In the present case, no search report was established on the grounds that the claims related to subject-matter excluded from patentability and commonplace implementation features. The ED, however, never referred to excluded subject-matter, but raised substantive objections, for the most part that the claims (limited in each successive amendment) lacked inventive step over the prior art cited in the opening part of the description. The last amendments were found to have no basis in the original application and that was the ground for the refusal. [4] Thus the division essentially examined the application despite the fact that no search had been carried out. This is however only possible in exceptional cases. As set out in T 1242/04 [8.2], the search is an essential element of the grant procedure, designed to identify prior art relevant to the application. The decision goes on to state (point [8.3]) that a search can only be dispensed with under R 45 EPC 1973 (now R 63) if it is not possible to carry out a “meaningful” search. “Meaningful” relates to the practicability of the search and not to the 1154 | 3398
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potential relevance of the results in substantive examination. T 1242/04 also points out that features that the search division deems “trivial” do not prevent a meaningful search into the state of the art, which in fact ought to be particularly simple in such a case. [5] T 1242/04 also explains that an additional search may need to be carried out if an objection of lack of technical character raised at the search stage is not maintained during subsequent proceedings. According to the jurisprudence of the boards, this may be dispensed with if the technical features of the claims are considered to be “notorious”, i.e. generic and so well known that they cannot reasonably be refuted (see T 1411/08 [4]). As set out above, the features in question are collecting factory automation information over a network from terminals at each step of a manufacturing process, setting data collection conditions over the network, including one for “abnormal” data, collecting and storing the measured data based on the conditions, and transmitting the data. In the Board’s view these cannot be considered as “notorious”. Thus an additional search would have been necessary before addressing inventive step. [6] When assessing inventive step, the ED started from the prior art acknowledged by the applicant in the description. In several communications, including the summons to oral proceedings at point 3.5, but not in the decision, the ED stated that they did not “contest” this state of the art and that therefore no further proof was required, referring to decision T 172/03 [18]. However, the present Board notes that the features in question in case T 172/03, namely general purpose computers at different locations and connected by a communication network, although referred to as “common general knowledge as can, for instance, be seen from the prior art referred to by the appellant”, were in fact notorious as defined above. Moreover, a search was actually performed in this case. The present case is thus not comparable to that in T 172/03. [7] Nevertheless, it is true that T 1242/04 [9.2] also suggests the idea that an additional search is not required if the features of the claim form part of the “common general knowledge”, or are accepted by the applicant as known (criteria followed to various degrees in T 690/06 [2] and T 1515/07 [6]). [8] Concerning “common general knowledge”, the present Board notes that its first use in T 1242/04 [9.2] is qualified with the term “undisputable” (“unstreitig” in the original German). The resultant meaning thus corresponds very closely to “notorious” as described above and, in practice, there will be little reason to distinguish between the two concepts. This is how the present Board understands the expression “common general knowledge” used in the decisions cited above. [9] Concerning the applicant’s acknowledgement of prior art, the Board judges that, given the primacy of the search, which as T 1242/04 [8.3] puts it, “is the basis for substantive examination … and not vice versa”, an applicant’s acknowledgement in the original application that certain prior art is known is in general not a sufficient reason for not carrying out an additional search since such statements may be – and indeed frequently are – withdrawn or qualified. Moreover, this could only apply in cases where all the technical features in the claim would be acknowledged as known. In the present case, the appellant did not acknowledge the features of specifying the second data collection condition for abnormal data and collecting and storing the measured data based on it, so that a search would need to be carried out for these features anyway. [10] In summary, therefore, in the present Board’s view, the only condition under which an additional search can be dispensed with is where all the technical features of a claim correspond to notorious prior art. [11] As to whether the ED’s course of action is a substantial procedural violation, the Board is guided by the existing jurisprudence on the matter. Essentially, this turns on whether the ED acted despite realising that the features were technical and not notorious, thereby indicating a situation where a search was “manifestly necessary” (cf. T 1515/07 and T 1411/08), or whether the features were erroneously overlooked or misjudged, i.e. an “error of judgement” (cf. T 690/06 and T 698/11). [12] In the present case, it is clear from the above that the division had indeed recognised that at least some of the claim features were technical and not notorious and had not overlooked or misjudged them. In particular, the division had discussed the inventive step involved in adding a certain new “filter” to the acknowledged prior art by a database specialist (see the “Obiter Dicta” in the decision under appeal). As a result, the ED must be held to have committed a substantial procedural violation in the sense of Rule 67 EPC 1973 by not performing an additional search that was manifestly necessary. It is therefore equitable to reimburse the appeal fee. [13] The Board thus remits the case to the ED for further prosecution, starting with an additional search, which is the proper basis for the appellant to decide which amendments are necessary. […] Should you wish to download the whole decision, just click here. 1155 | 3398
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T 2003/08 – A Call For Witnesses
K’s Law – The ebook
T 2003/08 – A Call For Witnesses 21 Jul 2012
I found this decision noteworthy because it is the first time I see an interlocutory decision on taking of evidence. Both the patent proprietor and the opponent had filed an appeal against the maintenance of the opposed patent, which is directed at the treatment of dilated cardiomyopathy by removal of autoantibodies. [1] Document E1 in the present proceedings is a so-called “Eidesstattliche Versicherung” by Dr W. dated 10 February 2005. Document E2 is an “Eidesstattliche Versicherung” by Dr K. dated 9 February 2005. [2] Dr W. inter alia states in document E1 that he attended a public symposium on “The role of immune mechanisms in cardiovascular disease” from 14 to 16 December 1995 in Berlin and that he gave on 15 September 1995 on the occasion of the symposium a presentation with the title “The possible pathogenic role of autoantibodies in myocarditis and dilated cardiomyopathy”. [3] As to the contents of his presentation Dr W. declares the following in paragraphs 3 to 5 of document E1. *** my translation of the German original *** “In my oral presentation on September 15, 1995, I presented, inter alia, slides showing the results obtained in my research group at the Max-Delbrück Centrum related to the identification and characterisation of autoantibodies against the β1 adrenergic receptor of patients suffering from dilated cardiomyopathy, which had been purified by means of affinity chromatography. For this purpose I used peptides corresponding to the structures of the receptor that connect with the antibodies. Moreover, I have presented data regarding the extracorporeal removal of immunoglobulins or autoantibodies against the β1 adrenergic receptor, respectively, from the body or the blood plasma of patients suffering from dilated cardiomyopathy, by means of immune apheresis. In this [method] the blood plasma that is separated from cells is led to columns containing ligands that specifically connect to the immunoglobulins of human plasma and thereby retain it. The plasma purified by removal of the immunoglobulins is then intravenously re-administered to the patient. The immune adsorption decreases the levels of β1 adrenergic antibodies in a statistically significant and partly long-lasting manner. Directly after the immune adsorption a immunoglobulins preparation is intravenously administered to the patient in order to compensate the deficiency caused by the adsorption. After the immune adsorption the heart function of patients suffering from dilated cardiomyopathy is improved. I have shown this by means of several slides one of which is reproduced as an example in figure 3 of my above mentioned publication.” *** end of the translation *** [4] Dr K. inter alia states in document E2 that Dr W. gave (“hielt”) a presentation with the title “The possible pathogenic role of autoantibodies in myocarditis and dilated cardiomyopathy”. He furthermore indicates some of the topics presented by Dr W. […] in paragraphs 3 to 5 of document E2: *** my translation of the German original *** “… and presented the results obtained in his research group at the Max-Delbück Centrum regarding the pathogenetic significance of autoantibodies in cases of myocarditis and dilated cardiomyopathy as well as [results] regarding the treatment of dilated cardiomyopathy by means of extracorporeal removal of immunoglobulins by means of immune adsorption from the blood plasma of patients. In this [method] blodd plasma is led to columns containing ligands for human immunoglobulin which are coupled to the column and which are specific for immunoglobulins. This method is commonly referred to as immune apheresis or therapeutic 1157 | 3398
T 2003/08 – A Call For Witnesses
K’s Law – The ebook
apheresis. The plasma that has been mostly and significantly purified from the immunoglobulin is then intravenously re-administered to the patient. In this context Dr W. presented the therapeutic effectiveness of extracorporeal removal of anti β1 adrenergic receptor autoantibodies from the blood of patients suffering from dilated cardiomyopathy. He was able to show that after the blood plasma of patients had passed through a column specifically binding immunoglobulin, containing ligands that are appropriate for binding human immunoglobulin, the content of autoantibodies against the dilated β1 adrenergic receptor in the blood plasma was significantly reduced both immediately and also several weeks later. The immunoglobulin reduction in the blood plasma was greater than 80% after the immune adsorption. The pathogen β1 receptor autoantibody was eliminated, too. Immediately after the immune apheresis immunoglobulin preparations were intravenously administered to the patient in order to restore humoral immune competence. After the therapeutic apheresis the heart function of the patients improved. The sustained decrease of the β1 adrenergic autoantibody and the improved heart function several weeks after the immune apheresis were shown in a slide that is reproduced in figure 3 of Dr W’s article in the above mentioned book.” *** end of the translation *** [5] Evidence shall be taken on whether or not the information recited in paragraphs [3] and [4] above was made publicly available during Dr W.’s presentation in order to establish whether or not it is prior art pursuant to A 54 by hearing of the witnesses Dr Gerd W. […] and Dr Rudolf K. […] The witnesses are asked to also bring any documentary material that could be relevant with regard to the issue on which they will be heard. [6] The taking of evidence will be made on the first day, i.e. on 20 September 2012, of the oral proceedings summoned to take place on 20 and 21 September 2012 […]. [7] Pursuant to R 122(2) witnesses who are summoned by and appear before the EPO shall be entitled to appropriate reimbursement of expenses for travel and subsistence. [8] In accordance with R 122(1) the board makes the taking of evidence conditional upon appellant II making a deposit of an advance payment of Euro 4300,00 for each of the witnesses to be heard (i.e. in toto Euro 8600,00) to secure payment of the costs arising from any possible reimbursement. [9] Instead of making a deposit of an advance payment it is also possible to file a waiver of costs signed by each witness. [10] The deposit or the waiver should be made or filed, respectively, within one month from notification of this decision. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1178/08 – Not Obliged
K’s Law – The ebook
T 1178/08 – Not Obliged 20 Jul 2012
Another case showing that you really have to think thoroughly which requests you present before the first instance – even in ex parte cases. [2.1] In accordance with A 123(1) in conjunction with R 137(2) and (3), an applicant is to be given at least one opportunity to amend the application of his own volition. No further amendments may be made without the consent of the examining division (ED). The Convention and the Implementing Regulations do not contain explicit provisions concerning the admissibility of amendments in appeal proceedings. R 66(1) EPC 1973 sets out that the provisions relating to proceedings before the department which has made the decision from which the appeal is brought shall be applicable mutatis mutandis in such a case. Therefore, an appellant is not entitled, as a matter of right, to present amendments of his own volition at the appeal stage, but as a matter of discretion to be exercised by the board. Articles 12 and 13 RPBA set out the provisions governing the basis of appeal proceedings and amendments to a party’s case which are binding upon the boards of appeal (Article 23 RPBA). [2.2] In particular, Article 12(4) RPBA reads as follows: “Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under (1) shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in (2).” In the paragraph above, (1) and (2) refer to Articles 12(1) and 12(2) RPBA, respectively. [2.3] In the board’s view, the above wording makes clear that the board in an ex parte case has discretion over whether or not to admit requests which could have been presented to the first instance, but were not. It must exercise that discretion having regard to the particular circumstances of the individual case. [2.4] The board considers that this view is consistent with the view taken in previous decisions in the different context of inter partes cases (see, for instance, R 10/09 [3.2]; T 144/09 [1.14] and R 11/11 [9], which rejected the petition for review of T 144/09 as clearly unallowable; and T 1007/05 [3]). [2.5] The board is aware that amended claims filed together with the statement of grounds of appeal have in many cases been admitted into appeal proceedings if they constituted a legitimate reaction to the reasoning underlying the appealed decision. Indeed, such amended claims filed with the statement of grounds of appeal may achieve the goal of “a more defined and controlled initial phase of proceedings” (see T 1007/05 [3]), in particular if they serve to avoid later amendments. But this does not mean that the board is obliged to admit amended claims solely because they were filed with the statement of grounds of appeal. [2.6] In the present case, the applicant had been given several opportunities to file amended claims in the firstinstance proceedings. In particular, as far as A 56 EPC 1973 was concerned, the decisive issue in the communications and replies, as well as in the summons to attend oral proceedings before the ED, was whether the only difference over the closest state of the art, namely the step of creating lab meta data including labgenerated image identifiers (see feature d) of claim 1) was sufficient to confer inventive step on the claimed subject-matter. With respect to claim 1 the applicant chose to maintain in substance, and in the end also in form, claim 1 as originally filed […]. No auxiliary requests were filed. Instead the applicant tried to convince the ED with arguments that the subject-matter of claim 1 involved an inventive step. In reply to the summons to oral proceedings which already set out the essential reasons for the later decision, the applicant merely requested a decision according to the file. Since the applicant’s arguments did not convince the ED, the application was ultimately refused. [2.6.1] Thus already after the first communication of the ED the applicant was aware that the application might be refused for lack of inventive step if his arguments concerning this decisive issue reflected in feature d) of claim 1 did not convince the ED. Furthermore, the detailed reasoning concerning A 54 and A 56 EPC 1973 given in the decision under appeal is almost verbatim the same as that given in the summons to attend oral proceedings. Under these circumstances, in the board’s view, the amended claims filed with the statement of grounds of appeal are not a reaction to the reasoning underlying the appealed decision. Instead they are the result 1159 | 3398
T 1178/08 – Not Obliged
K’s Law – The ebook
of the applicant’s decision no longer to pursue claim 1 as originally filed and to submit a fresh case to the board of appeal. [2.6.2] This assessment is confirmed by the fact that the statement of grounds of appeal gives no indication that or how the amended claims are a reaction to the reasoning underlying the appealed decision. Nor does it indicate why the amended claims were not submitted to the ED even though they could have been submitted at the latest in reaction to the summons to attend oral proceedings, in which the applicant had been informed of the ultimately relevant reasoning. [2.6.3] It is also confirmed by the wording of the amended claims. Namely, these claims do not further specify feature d) of claim 1, which reflected the decisive issue (in the context of the objections relating to A 54 and A 56 EPC 1973) discussed in the first-instance proceedings. In particular, the wording of claim 1, when read in the light of the statement of grounds of appeal and the decision under appeal, does not make clear that the (or which) amendments made to claim 1 are in substance caused by the objections concerning feature d) of claim 1, as given in the decision under appeal. Instead, amended claim 1 has an additional feature f) specifying separate and distinct studio-generated image identifiers which are not related to the lab meta data including lab-generated image identifiers […]. [2.6.4] In the board’s view, the applicant should have submitted these (or other suitably) amended claims in the first-instance proceedings. By presenting its sole and amended request only in appeal proceedings the applicant is making it impossible for the board to examine the contested decision. In addition, the new claims necessitate further investigations and give rise to further objections (as set out in the communication accompanying the summons issued by the board) to which the appellant did not reply in substance. This is contrary to the main purpose of ex parte appeal proceedings. Namely, “[p]roceedings before the boards of appeal in ex parte cases are primarily concerned with examining the contested decision” (see G 10/93 [4]). The appellant has not submitted any arguments as to why the present case is an exception justifying that the board carry out a full examination of the application as to patentability requirements. Nor does the board see any reason why the present case might be such an exception. [2.7] In view of the above the board has exercised its discretion under Article 12(4) RPBA by not admitting the claims filed with the statement of grounds of appeal into the appeal proceedings. [3] Hence the decision under appeal cannot be set aside. […] The appeal is dismissed. Should you wish to download the whole decision, just click here. The
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NB: This case was also discussed on Le blog du droit européen des brevets.
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found
here.
T 1707/08 – Troublesome Notoriety
K’s Law – The ebook
T 1707/08 – Troublesome Notoriety 19 Jul 2012
This is an appeal against the refusal of an application by the Examining Division (ED). The Search Division (SD) had issued a declaration under R 45 EPC 1973 that the claims were directed at nontechnical subject-matter excluded from patent protection or notorious technical means for their implementation. Therefore, it was not possible to carry out a meaningful search. The ED was not willing to carry out an additional search because it considered the subject-matter to be notoriously known and refused the application. Claim 1 of the main request before the Board read (in English translation): Computer system (Datenverarbeitungssystem) comprising
means (118) for accessing a medical case database (104), means for receiving case-related data from a medical-technical device (124), means (118, 120, 124; 136) for entering the case-related data into the case database, means (118) for accessing a database for medical expert questions (Fachfragen), means (118) for generating an query for the database for medical expert questions using the caserelated data, means (118, 120; 150) for outputting an expert question obtained through the query, means (118, 120; 150, 154) for inputting a response to the expert question, means (118) for evaluating the answer.
The Board decided to remit the case to the ED but refused the requests for re-imbursement of the appeal fee. Here is why: *** Translation of the German original *** [2.1] In its declaration under R 45 EPC 1973, the SD informed the applicant – with a reference to A 52(2) and (3) EPC 1973 – that it was not possible to carry out a meaningful search of the prior art. The ED did not grant the applicant’s request for an additional search and issued the impugned decision refusing the application for lack of inventive step within the meaning of A 56 EPC 1973. [2.2] In the impugned decision [the ED] considered that the closest prior art was a computer (Datenverarbeitungsanlage), which was well-known on the date of filing. This was not contested by the appellant (applicant). The subject-matter of claim 1 of the main request concerns a computer system comprising, inter alia, the following additional features: (i) means for receiving case-related data from a medical-technical device (124) (ii) means (118) for generating an query for the database for medical expert questions using the case-related data. The Board agrees with the appellant (applicant) that these features confer the advantage that misinterpretations of the measured data or typing errors that could lead to irrelevant expert questions can be avoided. Therefore, the technical problem solved by features (i) and (II) can be considered to be to implement the teaching method (Lehrmethode) in a way that is user-friendly and less prone to errors. As a consequence, the relevant skilled person is the skilled person working in the field of data treatment.
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T 1707/08 – Troublesome Notoriety
K’s Law – The ebook
The Board is of the opinion that at least feature (i) goes beyond what indisputably belongs to technical knowledge (Fachwissen) in the field of data treatment, i.e. this feature does not belong to “notorious” expert knowledge because it is not generic. Moreover, the appellant (applicant) also contests that (i) belongs to the technical knowledge of the skilled person. [2.3] The Board is of the opinion that under these circumstances it is necessary to carry out an additional search of the relevant prior art before the novelty and inventive step of claim 1 of the main request can be assessed (see T 1242/04 [8-9]). Therefore, the case has to be remitted to the first instance for further examination (A 111(1) EPC 1973). Request for re-imbursement of the appeal fee [3.1] The appellant is of the opinion that in particular point 11 of the minutes of the oral proceedings (OPs) before the ED and point 4.4 of the impugned decision show that the ED thought that at least the provision of a portable electronic device was not to be considered to be notorious and that an assessment of inventive step was to be made in respect of this [feature]. [3.2] Point 11 of the minutes of the OPs before the ED contains the following statement: “At the date of priority a portable electronic device within the meaning of the application was common for the purpose of data treatment.” However, this does not allow to conclude that the ED was not of the opinion that a portable device was part of the notorious technical knowledge. The statement rather is consistent with this opinion. Moreover, point 17 of said minutes states that in the course of the proceedings the ED had had the opportunity of introducing documents if it had considered “the application to be more than such a client/server system with a portable electronic device”. However, it had come to the conclusion that a “final decision could be taken on the basis of the notorious prior art because all technical means of the claim – and of the application as a whole – were notorious”. The Board is of the opinion that this clearly shows that the ED indeed was of the opinion that a portable electronic device was part of the notorious technical knowledge. [3.3] In point 4.4 of the impugned decision [the ED] explains that question that are to be answered at a later time have to be stored. Whether this was to be done in the memory of the schoolboy, in an exercise book (Heft) or in a portable electronic device was “not a feature conferring inventive step” but “to be decided on the basis of what was common in the field”. However, the Board is of the opinion that this only allows to conclude that the ED thought that the combination of features of claim 1 of the second auxiliary request was not inventive. However, this does not imply that the ED had not considered a portable electronic device not to be part of the notorious technical knowledge. Rather, point 5.3 states that the ED did not see any technical elements in the application that “went beyond a commonly known client/server computer system (possibly in connection with a portable electronic device)” This is consistent with the conclusion cited above according to which the ED was of the opinion that a portable electronic device was part of the notorious technical knowledge. [3.4] Thus the Board has no reason to doubt that the ED was of the opinion that the claimed subject-matter did not involve any inventive step, be it only in view of notorious technical knowledge. The Board is of the opinion that under these circumstances, the fact that the ED has not carried out an additional search does not constitute a substantial procedural violation (see T 1242/04 [9]). Therefore, there is no basis for the reimbursement of the appeal fee under R 103(1)(a). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 570/08 – Abnormality
K’s Law – The ebook
T 570/08 – Abnormality 18 Jul 2012
When the patent proprietor and the opponents file contradictory experimental results, will the patent proprietor be given the benefit of doubt? Not always, as the present decision shows. Claim 1 of the main request read: A fuel composition comprising a major amount of a diesel fuel oil containing not more than 0.05% by weight of sulphur and having a 95% distillation point of not greater than 350°C, and from 150 to 500 ppm (active ingredient) by weight, per weight of fuel oil, of an additive composition comprising (a) an ashless dispersant comprising an acylated nitrogen compound and (b) a monocarboxylic acid of general formula R’(COOH) wherein R’ represents an alkyl group or alkenyl group having 10 to 30 carbon atoms; wherein the ratio of (a):(b), on a weight:weight basis, is in the range of from greater than 1:4 to 2 1; and wherein the acylated nitrogen compound comprises a hydrocarbyl-substituted succinimide or succinamide prepared by reacting a poly(isobutylene)-substituted succinic anhydride acylating agent wherein the poly(isobutylene)-substituent has between 30 and 400 carbon atoms with a mixture of ethylene polyamines having 3 to 7 amino nitrogen atoms per ethylene polyamine and 1 to 6 ethylene groups. The Board considered D31 to be the closest prior art and pursued: [1.1.2] The problem according to the patent-in-suit vis-à-vis D31 is the provision of a low sulphur fuel composition comprising an additive composition with improved low temperature solubility while exhibiting good lubricity performance. [1.1.3] The composition of Claim 1 represents the proposed solution to this problem. [1.1.4] The Opponents argued that the problem has not been solved over the entire range claimed. Opponent 4’s comparative tests of 23 May 2008 show in test runs 9 and 10 that the addition of 250 ppm detergent 3 (a dispersant defined as compound (a) in Claim 1 of the patent-in-suit) to 250 ppm behenic acid (which corresponds to compound (b)) results in an increase of sediment level, i.e. a decrease of solubility. The Proprietor did not dispute the results but regarded them as an “abnormality”. Opponent 5’s tests of 22 December 2008 show that the addition of a dispersant (a) to oleic acid does not lead to any improvement in wear scar after 28/29 days at -30°C and that the addition of dispersant (a) to TOFA b after 27 days at -30ºC even leads to an increase in wear scar. These results are in contrast to Proprietor’s tests of 27 March 2002, 14 September 2007 and 20 May 2008. However in the latter tests the fuel has either not been defined as a low sulphur diesel containing not more than 0,05% by weight of sulphur or they do not specify the compounds (a) and (b) exactly as defined in Claim 1 of the main request. Even when assuming that these tests meet the requirements defined in Claim 1 of the main request, the Board would still be confronted with several sets of tests of the parties leading to contradicting results. Therefore it cannot be concluded that improved lubrification and solubility of the additive is achieved in low sulphur diesel fuel, at least not for all combinations claimed. Proprietor’s argument that the burden of proof would still be on the Opponent’s side is not valid, as results have been provided by the Opponents which cast doubts on the effect allegedly achieved by the present invention. However, the Proprietor could not convincingly eliminate these doubts.
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T 570/08 – Abnormality
K’s Law – The ebook
Therefore, since an effect has not been proven, the objective problem has to be re-formulated as the provision of low sulphur diesel fuel compositions comprising an additive composition with alternative low temperature solubility while exhibiting good lubricity performance. The patent was finally revoked for lack of inventive step. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 853/11 – Constantly Craving
K’s Law – The ebook
T 853/11 – Constantly Craving 17 Jul 2012
This decision contains a useful statement on what the skilled person would do. Claim 1 of the main request before the Board read: A method of forming a polymer array comprising a substrate and 100 or more groups of polymers with diverse, known sequences coupled to the surface thereof in discrete, known locations, the density of said groups being at least 1000 per cm², wherein said discrete known locations are separated from one another by inert regions, and wherein said polymers are delivered to said locations by spotting. When assessing the inventive step involved in the invention under consideration, the Board came to the conclusion that document D3 was the closest prior art and formulated the technical problem to consist in providing an alternative to photolithographic methods for producing high-density screening arrays. [3.2.1] The [patent proprietor] has however argued that the person skilled in the art would have no motivation to search for an alternative to the method of document D3, i.e. would have no reason for departing from the pioneering and very successful photolithographic techniques which had allowed for the first time to obtain very high probe densities and, in particular, probe densities much higher than the lower limit of 1000 probes per cm² set in the granted claim […]. [3.2.2] The Board considers instead that it is inherently advantageous for the skilled person to also have at his disposal further ways for solving the same technical problems that have already been solved in the prior art. Thus, the fictional skilled person would normally search for and arrive at any obvious alternative to the prior art, independently as to whether the prior art presents or not particular disadvantages or difficulties, as well as independently on the public recognition of the pioneering nature and of the advantages of the prior art. The Board incidentally notes that even the passage of paragraph [0010] of the description of the patent-in-suit […] appears to imply similar considerations. The Board notes further that document D3 explicitly mentions the possibility of fabricating arrays with a density of probes of 1000 per cm² or even much less […], thereby proving to the skilled reader thereof that also the variants of this prior art methods resulting in somewhat less dense arrays with a probe density of about 1000 per cm²represent a realistic reduction into practice of the teaching in this citation. [3.2.3] Hence, the Board concludes that the skilled person would actually attempt to solve the posed technical problem, i.e. would search for further methods for fabricating the arrays that were already delivered by the photolithographic methods, including those for fabricating arrays with a density of probes of about 1000 per cm². Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1212/08 – The Third Option
K’s Law – The ebook
T 1212/08 – The Third Option 16 Jul 2012
This is an appeal against the refusal of the application under consideration by the Examining Division (ED). The Board found the main request as well as auxiliary requests 1 and 3 to lack novelty and then discussed the admissibility of auxiliary request 2. All the requests were directed at projection device for medical images. *** Translation of the German original *** [4.1] The subject-matter of claim 1 of auxiliary request 2 refers to the adaptation and display of the projected image taking into account the position of the Laser projection device. A disclosure of these features in the original application is only found in page 7, paragraph 3 of the description. [4.2] Claims claiming this subject-matter have been filed for the first time together with the statement of grounds of appeal and never been submitted during the first instance proceedings. In particular, the ED has not been able to make a reasoned decision on this subject-matter in its decision to refuse the application. During the first instance proceedings, the applicant had reacted to the objection of lack of novelty raised in the first communication against original dependent claims 2 and 3 by inserting the features of these claims into original independent claim 1, without any further addition, which triggered summons to the requested oral proceedings (OPs). In the summons the ED objected against the clarity, novelty and inventive step of the subjectmatter based on the original claims. Thereupon the applicant renounced the OPs and requested a decision according to the state of the file. This decision was then issued, referring to the reasons mentioned in the summons. [4.3] As said summons only took account of the subject-matter of the original claims, the fact that the subjectmatter claimed in auxiliary request 2 has been submitted for the first time in the appeal proceedings obliges the Board either to examine and to decide on this factual situation (Sachverhalt) for the first time in the appeal proceedings, or to remit the case for further decision to the first instance; A 111(1). However, the Board is of the opinion that in the present case none of these procedural options is adequate and acceptable, for the following reasons: [4.4] According to the established case law of the Boards of appeal (cf. Case Law, 6th edition, VII.E.1), appeal proceedings are wholly separate and independent from the proceedings at first instance. Their function is to give a judicial decision upon the correctness of a strictly separate earlier decision taken by a first instance department. As there is no decision of the first instance on the subject-matter of auxiliary request 2, the Board cannot review (überprüfen) this decision. Moreover, the Board is of the opinion that the feature taken from the description according to which the image is adapted to the position of the Laser projection device constitutes a particular new aspect that has no counterpart in the original claims, which at best constitute the required technical prerequisites. Therefore, it may be doubted whether this particular aspect of the adaptation of the projected image has necessarily been taken into account in the search. As a consequence, the Board does not see any good reason (Veranlassung) to examine this fact for the first time in the appeal proceedings. The second option of a remittal of the case to the first instance would considerably prolong the proceedings and would, therefore, clearly go against the requirement of procedural economy. [4.5] These two inadequate ways of continuing the proceedings with which the Board is confronted would not have arisen had the subject-matter of auxiliary request 2 been submitted in due time during the first instance proceedings. Contrary to the appellant, the Board is of the opinion that auxiliary request 2 could – and should – indeed have been filed in due time before the ED rather than together with the statement of grounds of appeal at a later time. The circumstances relied on by the appellant, according to which the ED had only given a global and provisional negative assessment of the patentability of further unspecified subject-matter contained in the description in the summons to OPs (point 7), should not have deterred the applicant from having the subject-matter for which it 1166 | 3398
T 1212/08 – The Third Option
K’s Law – The ebook
intended to obtain protection, at least subsidiarily, finally examined and decided upon by the ED, in particular if the applicant wanted to have a decision of the Board of appeal on this matter, as conceded [by the appellant]. However, by requesting a decision “according to the state of the file” immediately after having received the summons to OPs, the applicant has consciously renounced such an examination and decision of the ED. As follows from the above cited case law of the Boards of appeal, the appeal proceedings are not a continuation of the first instance examination proceedings. [4.6] Moreover, it has to be noted that – in contrast to the subject-matter of auxiliary request 2 – the other requests filed together with the statement of grounds of appeal were not objectionable regarding their admissibility because the subject-matter claimed therein – with the exception of a few required clarifications or limitations taken from the description – essentially corresponded to the subject-matter of the original claims […], which have been considered in the first instance decision. [4.7] For these reasons the Board exercises the discretionary power conferred to it under Article 12(4) RPBA by not admitting auxiliary request 2 into the proceedings. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here. PS: This decision was followed in more recent case T 1108/10 (Board 3.2.03), where a copy of T 1212/08 was handed out to the representative during the OPs “for further discussion” (see point [3.2]).
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Interpretational Spotlight: “Produced By”
K’s Law – The ebook
Interpretational Spotlight: “Produced By” 14 Jul 2012
The appeal was filed by the patent proprietor after the Opposition Division (OD) had maintained the patent in amended form. The Board did not admit the main and first auxiliary request into the proceedings and then considered the second auxiliary request, claim 1 of which read: An extrusion coating structure provided on a substrate comprising at least one layer of bimodal polyethylene composition, characterized in that the composition is produced by
subjecting ethylene, optionally with hydrogen and/or comonomers to polymerization or copolymerization reactions in a multistage polymerization sequence of successive polymerization stages; carrying out the polymerization reactions in the presence of a single-site metallocene catalyst capable of forming a composition comprising a low molecular weight component with a MFR2 of 20g/10min or more and a density higher than the density of the composition, and a high molecular weight component, said composition having a melt flow rate MFR2 of 5g/10min or more and a density of 915 to 960 kg/m 3;
whereby said bimodal polyethylene composition comprises the low molecular weight component in an amount of 60 to 40 wt.-% and the high molecular weight component in an amount of 40 to 60 wt.-%, said layer of bimodal polyethylene composition exhibiting
tensile strength machine/transverse direction of 20/20 MPa or more, tear strength machine/transverse direction of 1.0/1.5 MPa or more, and puncture strength of 900 N/mm or more, preferably 1000 N/mm or more. (my emphasis)
The decision contains a noteworthy remark on the expression “produced by”: [4.2.1] Claim 1 is directed to an extrusion coating structure provided on a substrate comprising at least one layer of bimodal polyethylene composition whereby the composition is characterised in that “it is produced by” a certain process. It is established case law (Case Law, supra, section II.B.6, in particular decision T 411/89 [2.1-2]) that such wording is to be interpreted only to the extent that the product is “producible” or “obtainable” by such a process in so far as the process does not lead to recognisable differences in the product. Since the patent in suit gives no indication that different process features would lead to different product properties, these process features cannot serve to restrict the subject matter of the claim. Hence, the wording “produced by” does not exclude that the product can be obtained by other processes. NB: In T 411/89, it was the opponent that filed the appeal against the maintenance of the opposed patent in amended form. The opponent objected to the amendment of claim 14 during the opposition proceedings. Claim 14 as granted read: 14. Fatty product entirely comparable to butter, both in its use and in its behaviour, obtained by (obtenu par) the process according to any one of Claims 1 to 10, or in the equipment according to any one of Claims 11 to 13. (my emphasis) Claim 14 as maintained by the OD read: 14. Fatty product entirely comparable to butter, both in its use and in its behaviour, which can be obtained by (obtenable par) the process according to any one of claims 1 to 10, said product 1168 | 3398
Interpretational Spotlight: “Produced By”
K’s Law – The ebook
containing more than about 43% of plant fatty substance compared with the total fatty substance. (my emphasis) Here is what the Board said, in English translation: [2] The [opponent] has objected that claim 14 of the patent under consideration has been amended in the course of the opposition proceedings such as to extend the [scope of protection] of the patent. Therefore, it has to be examined whether the amendments of the main product claim comply with the requirements of A 123(3). [2.1] Present claim 14 does not contain any reference to a product “obtained … in the equipment according to any one of Claims 11 to 13”. The deletion of this choice clearly constitutes a limitation of the claimed subjectmatter because only the first option described initially (product-by-process) as been retained in new claim 14, which is undisputed by the [opponent]. [2.2] The claim under consideration is a claim wherein the product is defined by a reference to a process allowing to produce it; it has to be interpreted as a claim directed at the product as such because the reference to the process is only a means intended to characterise the claimed object, which is a product. The fact that the expression “obtained”, which had been used initially, has been transformed to “obtainable” (susceptible d’être obtenu) does not at all modify the definition of the product at which the claim is directed insofar as the process referred to has clearly (de toute evidence) remained the same. Therefore, if the definition or characterisation of the product is the same before and after the amendment, one has to conclude that the claimed product is the same. As a consequence, the argument according to which the amendment has led to an extension of the [scope of] protection is untenable. Should you wish to download the whole decision (T 868/09), just click here. The file wrapper can be found here.
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T 523/10 – Be Consistent
K’s Law – The ebook
T 523/10 – Be Consistent 13 Jul 2012
When you try to establish, inter alia, insufficiency of disclosure of a patent you oppose, you have to be careful with the rest of your arguments. That is what the opponent had to learn in the present case. Anything you say can be used against you by a Board of appeal … Claim 1 on file read: 1. A solid detergent composition in the form of granules, the composition comprising from 10 to 60 wt % of a surfactant system and having a maximum Residues Index (RI) of 25 and a maximum Secondary Residues Index (SRI) of 15, wherein the composition is free of phosphatecontaining builder material, wherein the composition comprises from 1% to 80% by weight of a water-soluble and/or partially water-soluble builder compound, wherein the composition comprises below 9 wt % aluminosilicate builder, wherein the composition comprises a highly water-soluble carboxylate- or carboxylic acid-containing compound in an intimate mixture with one or more surfactants, wherein the surfactant comprises an anionic surfactant of which 50 to 100 wt % is an anionic sulphonate surfactant. The Board decided to admit documents D18 and D19 as well as RI and SRI values presented by the opponent into the proceedings and then discussed compliance with the requirements of A 83: [2.1] The [opponent] in essence argued, that the structural features concerning the composition, like the amounts and kinds of ingredients, are not linked to the functional features RI and SRI. Meeting only the structural features does therefore not automatically mean that the functional features are also met. Since the patent-in-suit does not contain sufficient information on how to select a suitable composition possessing the required RI and SRI values, the requirement of sufficiency of disclosure is not met. [2.2] A 83 EPC 1973 requires that the invention has to be disclosed sufficiently clear and complete for it to be carried out by a person skilled in the art. The patent-in-suit exemplifies a method for preparing products according to the invention and gives inter alia details on their chemical composition and the necessary amounts. Furthermore, the patent-in-suit gives detailed information how the RI and SRI values may be calculated. [2.3] Based on this information the [opponent] determined the RI and SRI values of prior art composition. Thus, as has been confirmed by the [opponent], the skilled person is per se in a position to prepare compositions as claimed with the required structural and functional characteristics. [2.4] According to the [opponent] the obstacle is the high number of tests that has to be carried out by the skilled person to arrive at compositions according to the invention due to lack of guidance in the patent-in-suit. [2.5] In the Board's view the requirement of A 83 EPC 1973 is met. The examples and the description, which point towards preferred embodiments of the patent-in-suit, give guidance on how to obtain the claimed compositions. No proof of the contrary has been submitted by the [opponent]. [2.6] In particular by identifying allegedly novelty-destroying prior art documents and calculating the RI and SRI values, the [opponent] himself showed, that the skilled person is capable of reworking compositions potentially claimed in the main request and consequently, to carry out the invention without undue burden. [2.7] Since the [opponent] did not present arguments with regard to the features additionally being present in the auxiliary requests, the considerations above apply to all requests on file. One might perhaps criticize that the decision reasons as if the opponent was representative of the skilled person, which is doubtful. The skilled person is a legal construction that is quite remote from real life. Therefore, I would be reluctant to deduce what the skilled person would have done from what a real person has done. Should you wish to download the whole decision, just click here. The file wrapper can be found here. 1170 | 3398
T 523/10 – Be Consistent
K’s Law – The ebook
1171 | 3398
T 2438/09 – A Case For Prior Art
K’s Law – The ebook
T 2438/09 – A Case For Prior Art 12 Jul 2012
From time to time the problem-solution approach is challenged for being tantamount to an ex post facto analysis. This argument is not very likely to be endorsed by the Boards, as the present case illustrates once more. The appeal was filed by the opponent after the Opposition Division (OD) had maintained the patent in amended form. Claim 1 of the request before the Board read: 1. A method of washing dishware/tableware in an automatic dishwashing machine using a machine dishwashing product in the form of a water-soluble pouch comprising a plurality of compartments in generally superposed or superposable relationship, each containing one or more detergent active or auxiliary components, wherein at least one of the plurality of compartments comprises a liquid composition or a composition in the form of a paste, gel or wax and wherein the pouch has a volume of from 5 to 70 ml and a longitudinal/transverse aspect ratio in the range from 2:1 to 1:8, preferably from 1:1 to 1:4, wherein the product is dispensed from the automatic dishwashing machine dispenser into the main wash cycle. The assessment of the inventive step involved in this subject-matter led the Board to go back to very basic issues: [3] The relevant prior art for detergent products in pouch form mentioned in the patent in suit includes document D5 (paragraph 2) which is considered by the [opponent] as a suitable starting point for the assessment of inventive step. The [patent proprietor], in contrast, submitted that in order to avoid ex post facto analysis, assessment of the claimed invention had to be done without any knowledge of the prior art. This view does not, however, conform to the problem solution-approach normally applied by the Boards of Appeal for the assessment of inventive step. According to this approach inventiveness is assessed on the basis of a suitable piece of prior art and the effects actually achieved by the claimed invention when compared with that prior art, hence the effects achieved by those features which distinguish the claimed subject-matter from the prior art. These effects constitute the technical problem solved by the claimed invention in view of that prior art and it has to be examined whether it was obvious for a skilled person to solve that technical problem by those distinguishing features (Case Law, 6th edition, 2010, chapter I.D.2.). [4] Hence, a suitable piece of prior art, if present, has to be considered for the assessment of inventive step. In the present case, the Board agrees with the [opponent] that such piece of prior art is represented by document D5 since it relates to a similar technical problem as the patent in suit, namely the provision of detergent doses suitable for cleaning dishware in a dishwashing machine which do not present the drawbacks of detergents in powder or tablet form […]. The patent was finally revoked. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1172 | 3398
T 531/09 – Trouble At The Checkpoint
K’s Law – The ebook
T 531/09 – Trouble At The Checkpoint 11 Jul 2012
This is an appeal against the refusal of an application by the Examining Division (ED), for lack of inventive step. Claim 1 of the main request before the Board read: 1. A system for simulating a security checkpoint for screening passengers and their carry-ons, the system having: a. a security checkpoint model (200) representing time spent in the security checkpoint as a series of probabilistic events, and b. a simulation application for simulating said security checkpoint model (200), said simulation application operating on a computer system, whereby the improvement in the security checkpoint simulation system comprises: said security checkpoint model (200) including separate sets of probabilistic events representing: a security checkpoint entrance process (110) referring to a process in which a person enters a security checkpoint entrance (110), a personal screen process (120) referring to a process in which one or more personal scans (120a) of the person who has entered the security checkpoint entrance (110) are carried out, the one or more personal scans (120a) being performed by a walk through metal detector, an item screen process (130) referring to a process in which one or more item scans (130a) of the items belonging to the person who has entered the security checkpoint entrance (110) are carried out, the one or more item scans (130a) being performed by a scanning device, in particular, by an x-ray device, and a defined relationship between the security checkpoint entrance (110), personal screen (120), item screen processes (130), wherein the system is adapted to define one or more tasks in a security checkpoint, each task having an associated output time value representing a delay caused by undertaking that task, and wherein the delay value for a task can be altered as necessary to represent changes in the tasks, and wherein the delay value is dynamically linked to other checkpoint conditions, and wherein the delay time value associated with a task is conditionally determined by the results of a previous task, the system further being adapted to run a checkpoint simulation using security checkpoint data (321) and security checkpoint demand data (331) and to produce the simulation results (630) ; and wherein the system further comprises a display device (500) for graphically displaying the results of the security model (200) along with a graphical representation of events and positions in the security checkpoint (100) The Board came to the same verdict as the ED: [1] The invention concerns the simulation of a security checkpoint. It could be the sort of familiar security checkpoint used at airports, but is not limited to that. The simulation is carried out by computer. According to claim 1 of the main request, tasks at the checkpoint are modelled as probabilistic events, each taking a certain time to perform, which may depend on what happens in preceding tasks. Two of the tasks simulated involve technical equipment, namely a walk-through metal detector and (possibly) an x-ray device. [2] The [applicant] seeks to rely on T 1227/05, which concerned the simulation, on a computer, of an electronic circuit. The basis of the [applicant’s] argument is that the organisation of a security checkpoint, at least in so far as it comprises technical scanning devices, is a technical problem, because it lies in the field of “industrial engineering”. As a technical problem, and following T 1227/05, this contributes to inventive step. [3] In decision T 208/84 [5] the board held that a technical process is different from a mathematical method in that the technical process is carried out on a physical entity and provides, as its result, a certain change in that entity. That definition of technical processes seems to exclude simulations, whose very purpose is to replace physical entities by virtual ones. T 1227/05 [3.1.1] goes beyond the earlier decision in holding that the simulation of an adequately defined class of technical items could be a functional technical feature. In T 1265/09 [1.13], the Board, referring to T 1227/05, left open the question whether it is a sufficient condition for a 1173 | 3398
T 531/09 – Trouble At The Checkpoint
K’s Law – The ebook
simulation to be patentable that the simulated items be technical, noting that the simulated system (in that case, call handling in a telephone call center) was not technical, so that the condition did not hold. The present Board finds itself in a similar situation and will proceed in the same way. For the reasons set out below, the Board finds that the condition is not fulfilled in the present case, and so there is no need to decide whether or not it is sufficient. [4] Simulation of a checkpoint is not inherently technical. It can be carried out by asking people to queue and undergo various checks. The simulations of the metal detector and the x-ray device are the same as that of any other task at the checkpoint, whether they involve technical equipment or not: a probabilistic delay, dependent on the results of earlier tasks, and variable to allow for changes in tasks. The idea is that each task at the checkpoint takes some time, but that later tasks may take more or less time depending on what happens in earlier tasks. The metal detector and x-ray device are not modelled any differently from any non-technical tasks, and it is not a technical delay which is modelled, but a non-technical: the queuing of people , rather than, say, the length of time the metal detector and x-ray device take to react to a stimulus. The Board does not see how any technical delay of the detectors contributes to the delay of a person in the queue. That might happen if, for example, a person had to stand in the scanner for any length of time, but that is not so with a walk-through detector. The delay to the person results rather from standing in a queue and waiting for an operator to respond. The same goes for the x-ray device. The Board, therefore, rejects the [applicant’s] arguments that the simulations of the metal detector and of the x-ray device make a technical contribution to the invention. They would not count in favour of inventive step, even if T 1227/05 were followed. For the same reasons, consideration of T 306/04, also cited by the [applicant], does not lead to any different conclusion. [5] The Board sees claim 1 according to the main request as defining a simulation, on a computer, of a nontechnical process, which happens to include some technical devices, and considers that the only feature that makes a contribution to inventive step is the fact that the simulation is performed on a computer. [6] It is common ground that simulation on computers was well known, and that software for that purpose was commercially available at the priority date (published application, page 26, lines 3 - 5). The Board concludes that to run this particular simulation on a computer would have been obvious. [7] Thus, the main request cannot be allowed due to lack of inventive step (A 56 EPC 1973). […] The appeal is dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2001/09 – Difficult Questions
K’s Law – The ebook
T 2001/09 – Difficult Questions 10 Jul 2012
Another decision for fans of Article 12(4) RPBA, translated for you from the French. It appears to confirm the impression that opponents invoke this provision more and more often, and that the Boards are reluctant to accept this objection when it is raised by opponents. [2.1] The [opponents] have requested [the Board] not to admit the requests of the [patent proprietor], which had been filed for the first time during the appeal proceedings,. The [opponents] pointed out that the [patent proprietor] could have filed these new requests before the Opposition Division (OD). They explained that in the course of the oral proceedings (OPs) before the OD, held on July 7, 2009, the chairman, after having announced in a clear way the grounds for opposition leading to the dismissal of all the requests of the patent proprietor, had expressly asked the patent proprietor whether he had the intention of filing new requests. The [patent proprietor], who had not taken this opportunity of filing new requests in order to overcome the objections of the OD but had preferred to do so only during the appeal proceedings, had acted in an abusive way. Therefore, its requests should be considered to be inadmissible (see T 1067/08, T 144/09 and T 23/10). [2.2] The admissibility of new requests in appeal proceedings is governed by Article 12(4) RPBA. This provision allows the Boards of appeal of the EPO acting as reviewing authority (instance de revision) to hold inadmissible any request filed in the course of the appeal proceedings if it could have been presented during the first instance proceedings. As a consequence, the Boards of appeal have a discretionary power and can dismiss such requests in order to ensure just and reliable proceedings. When the Boards exercise their power they base themselves on the relevant circumstances of the case in order to conclude if and why a specific request could have been presented during the first instance proceedings. The Board notes that the decision of the OD on the first three requests of the patent proprietor […] (main request and auxiliary requests 1 and 2) did not concern the patentability of claim 1, which was the only independent claim, but claim 2 the subject-matter of which the Board considered not to comply with the requirements of A 123(2). However, the patent proprietor had filed two more requests (auxiliary requests 3 and 4) which did not contain the subject-matter of claim 2 of the preceding requests and which consequently did comply with the requirements of A 123(2). These requests have been dismissed based on another ground for opposition, in particular insufficiency of disclosure. In view of Article 12(4) RPBA and the circumstances of the present case, the Board considers that the main request of the [patent proprietor] (the only request that is relevant for the present appeal) filed together with its written submissions of October 14, 2011, i.e. after the communication of the Board, is admissible because it attempts to overcome the deficiencies of the requests filed before the OD and dismissed by it, as well as the objections raised by the parties during the appeal proceedings. The Board agrees with the [patent proprietor] that in view of the objections raised during the OPs before the OD, the drafting of new requests raised questions that were difficult to solve at once and that it was difficult to draft a request claiming a specific combination of features that could successfully overcome all the objections right away. [2.2.1] The circumstances of the present case are different from the cases cited by the [opponents] (T 1067/08, T 144/09, T 23/10). In those cases the competent Boards have come to the opposite conclusion, i.e. that the requests filed during the appeal proceedings could have been filed in the course of the first instance proceedings. Based on the particular circumstances of these cases – which differ from those of the present case – the Boards have decided to make use of their discretional power conferred by Article 12(4) RPBA, first sentence, by not admitting the requests under consideration into the appeal proceedings. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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T 1415/07 – Unexpected Help
K’s Law – The ebook
T 1415/07 – Unexpected Help 9 Jul 2012
This is an appeal against the revocation of the opposed patent, on the ground of A 123(2) (main request) and A 123(3) (auxiliary request). Claim 1 of the sole request before the Board – identical to claim 1 as granted – read: A computer-implemented method for configuring an instrument to perform a measurement function, wherein the instrument includes a programmable hardware element, the method comprising: creating a graphical program, wherein the graphical program implements the measurement function, wherein the graphical program includes a front panel portion and a block diagram portion, wherein the front panel portion operates as a front panel for the instrument; generating a hardware description based on the block diagram portion of the graphical program, wherein the hardware description describes a hardware implementation of the block diagram portion of the graphical program; configuring the programmable hardware element in the instrument utilizing the hardware description to produce a configured hardware element, wherein the configured hardware element implements a hardware implementation of the block diagram portion of the graphical program; compiling the front panel portion into executable code for execution by a processor and storing the executable code in a memory; the instrument acquiring a signal from an external source after said configuring; the programmable hardware element in the instrument executing to perform the measurement function on the signal; and the processor executing the executable code from the memory to present the front panel portion on a display during the programmable hardware element in the instrument executing to perform the measurement function on the signal. The Board found this claim to comply with A 123(2): [5] There is no dispute about the basic functionality of the prior art and the invention. The only point at issue in this appeal is whether the last feature of granted claim 1 is derivable from the originally filed (PCT) application. This feature reads: the processor executing the executable code from the memory to present the front panel portion on a display during the programmable hardware element in the instrument executing to perform the measurement function on the signal. [6] Notwithstanding the obvious grammatical error, it is common ground that this specifies that the display of the front panel and the measurement function in the hardware occur simultaneously. [7] It is common ground that the disputed feature is not explicitly disclosed in the originally filed application. Thus, using the generally accepted standard for judging the support for amendments, the question is whether it is directly and unambiguously derivable taking into account what is implicit to a person skilled in the art. [8] Many of the [patent proprietor’s] arguments aim to show that the feature is derivable by implication from other features, such as the fact that the measurement is “real time”, or via the “supervisory portion” or via a “global variable”. The Board, however, prefers the arguments that involve passages that mention the “front panel” directly. [9] The “front panel” is first mentioned in the introductory part of the description in connection with virtual instruments (VIs). The passage starting at page 2, line 25 states: In creating a virtual instrument, a user preferably creates a front panel or user interface panel. The front panel includes various front panel objects, such as controls or indicators that represent the respective input and output that will be used by the graphical program or VI, and may include other icons which represent devices being controlled. 1176 | 3398
T 1415/07 – Unexpected Help
K’s Law – The ebook
Since this directly follows the summary of the proprietor’s own Kodosky document (D10), the Board considers that the skilled person would have no doubt that such a front panel is a part of the VI of that system. Moreover, as stated by the [patent proprietor], D10 discloses part of its invention at column 8, lines 5 to 19 in the following terms: The virtual instrument 40 includes a front panel 42 which permits interactive use of the virtual instrument 40 by a user. As will be explained more fully below, the front panel permits graphical representation of input and output variables provided to the virtual instrument 40.... The virtual instrument 40 also includes a block diagram 46 which graphically provides a visual representation of a procedure by which a specified value for an input variable displayed in the front panel 42 can produce a corresponding value for an output variable in the front panel 42. One such VI, described later in the document, is an instrumentation system (Figure 21) for testing a unit 212. The traditional approach is said at column 17, line 9 to involve a computer program that interacts with the test instruments 208 and 210 to measure values in real time. It then goes on to describe a block diagram of the virtual instrument for this example (Figure 22). This has front panel input controls (line 22) and an (output) graph indication (line 57). Finally, it is stated (line 64) that the “instrument is operated from the front panel”. In summary, D10 discloses a front panel for interactive control of a virtual measuring instrument that is designed to model an actual instrument performing a real time measurement. [10] Returning to the original application corresponding to description of the present patent, it goes on in the next paragraph (bridging pages 2 and 3) to state: A user inputs data to a virtual instrument using front panel controls. This input data propagates through the data flow block diagram or graphical program and appears as changes on the output indicators. In an instrumentation application, the front panel can be analogized to the front panel of an instrument.... The user adjusts the controls on the front panel to affect the input and views the output on the respective indicators. [10] In the Board’s view this, especially in the context of D10 discussed above, informs the skilled person that a conventional front panel of a virtual instrument should act like a real instrument, i.e. be usable while the measurement is being performed. [11] If there were still any doubt about this, the subsequent paragraph introduces “LabVIEW” as a well-known graphical programming environment, which in the Board’s view also shows this real time capability. Thus, D14 from 1991 (one year after D10) states at page 1-8: 10) Interactive Operation - You can change the inputs to your VI even while it’s running by clicking a switch, moving a slide, tweeking [sic] a knob, or typing a value. As data is displayed on the front panel, some indicators include cursors and scroll bars for real-time manipulation of the data. D15 from 1994 at page 1-8, and D16 from 1996 at page 2-16, paragraph bridging first and second column in both cases disclose the same. Thus in the Board’s, and contrary to the [opponent’s], view there is no serious doubt that it would be implicit to the skilled person that the interactive operation of the front panel had been a fixed feature of LabVIEW from around the date of D10 (1991) up to just before the priority date of the patent (1997). [12] The [opponent]argues that the application only presents the LabVIEW system as prior art, but not in combination with the invention i.e. with a hardware implementation of (or at least part of) the VI. However, besides the references in the opening part of the description, the embodiment of the invention makes various references to the LabVIEW graphical programming system. The first starting at page 10, line 30 states: In the preferred embodiment, the graphical programming system is the LabVIEW graphical programming system available from National Instruments. In this system, the user creates the graphical program in a graphical program panel, referred to as a block diagram window and also creates a user interface in a graphical front panel. The second starting at page 12, line 29 states: The user also preferably assembles a user interface, referred to as a front panel, comprising controls and indicators which indicate or represent input/output to/from the graphical program. For more information on creating a graphical program in the LabVIEW graphical programming system, please refer to the LabVIEW system available from National Instruments as well as the above patent applications incorporated by reference.
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T 1415/07 – Unexpected Help
K’s Law – The ebook
[13] In the Board’s judgement, these passages, particularly the latter, leave the skilled person in no doubt that the invention is an extension of the long-standing LabVIEW system and thus has a front panel that is the same as the traditional LabVIEW front panel. In other words, a front panel that operates simultaneously with performing the measurement. [14] The [opponent] argues that the disclosure does not exclude the possibility of entering of data in a phase before measurement and even that this is the normal situation. Although the Board agrees that this is a theoretical possibility, no evidence was offered that this was envisaged in general or in the present invention. Moreover, in the Board’s view, the mere existence of another theoretical possibility is not enough on its own to defeat the test for “directly and unambiguously derivable”, since this would set the standard of proof too high, namely at absolute certainty and would render the determination a mere formality. The determination is subject to the important rider of taking into account matter which is implicit to a person skilled in the art. This matter is explained above, and in the Board’s judgement, taking it into account, even considering the possibility offered by the [patent proprietor], leads to the conclusion that the feature in question is implicit. [15] Accordingly, the Board judges that the corresponding amendment to claim 1 is not an extension of subjectmatter under A 100(c). [16] The Board has reached its conclusion using the standard of what it judges that a skilled person would understand to be disclosed from the whole context of the application including the introductory part of the description and the referenced documents D10 and D14 to D16. However, the Board is aware that there is a rather restrictive jurisprudence concerning amendments taken from referenced documents which is now considered for completeness. [17] In T 689/90 [2.2], the Board set out four conditions to be met: (a) that protection is or may be sought for features which are only disclosed in the reference document; (b) that the features which are only disclosed in the reference document contribute to achieving the technical aim of the invention and are thus comprised in the solution of the technical problem underlying the invention which is the subject of the application; (c) that the features which are only disclosed in the reference document implicitly clearly belong to the description of the invention contained in the application (A78(1)(b)) and thus to the content of the application as filed (A123(2)); and (d) that such features are precisely defined and identifiable within the total technical information within the reference document. [18] The decision derived these conditions “having regard partly to what is set out in the headnote to decision T 6/84”, but gave no further explanation for this. The conditions in this headnote are: (i) that the features unequivocally form part of the invention for which protection is sought. (ii) that all the essential structural features thus disclosed which belong together must be incorporated into the claim. [19] Summing up these criteria, which have been used in various combinations in intervening decisions, and applying them to the present case, the present Board is of the following view: Condition (a) requires that protection “is or may be sought” for the features, whereas condition (i) requires this to be unequivocal, i.e. unambiguous, which is thus somewhat more strict. Condition (a) also appears to overlap with condition (c) which requires that the features “implicitly clearly belong to the description of the invention”. In the present Board’s view, what these three conditions are getting at is that it must be unambiguously derivable to the skilled person which features of the application are to be taken from the referenced document. This is met in the present case since as mentioned above, it is clear that the traditional front panel is intended to form part of the present invention. Condition (ii) appears to be a statement of the usual requirement that an amendment may not isolate random features from a reservoir of features, whether in the same description or as here from a referenced document. This appears to have been subsumed into condition (d), which effectively requires that the features to be incorporated are equally unambiguously derivable from the referenced document. 1178 | 3398
T 1415/07 – Unexpected Help
K’s Law – The ebook
Again, the Board considers that this is met in the present case because it is clear from the introductory part of the description and LabVIEW in particular that the traditional front panel is interactive. Furthermore, in the Board’s view, incorporating the interactive aspect of the front panel is not a case of an inadmissible isolation of one feature from, say, the other features of the front panel because it is apparent that the “interactivity” is selfcontained and separate from other aspects of the front panel, and, being a functional feature, there is no question of aspects of structure being isolated. This leaves condition (b), which requires that the features solve, or contribute to solve “the technical problem underlying the invention which is the subject of the application”. This does not appear to have a counterpart in the earlier decision and no further reasons are given for its inclusion in the list. In the present Board’s view, this condition seems questionable. Firstly, it is not clear which “technical problem” is meant - the subjective one mentioned in the application, or the objective one found after considering the prior art cited in the search report. Secondly, in either case it can only relate to “new” features, i.e. features not present in the closest prior art. However, it is not clear why referencing new features should be less objectionable than referencing known ones. For these reasons, the present Board does not require this condition to be met. The Board then remitted the case to the Opposition Division for further prosecution. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 287/10 – Just Irrelevant
K’s Law – The ebook
T 287/10 – Just Irrelevant 7 Jul 2012
This is an appeal against the revocation of the opposed patent by the Opposition Division (OD). The decision contains an interesting statement concerning the formal admissibility of the patent proprietor’s requests: [1] The [patent proprietor] filed the current set of claims according to a main request and two auxiliary requests together with its statement of Grounds of Appeal. These sets of claims are the same as those on which the decision under appeal is based. During the oral proceedings before the Board of Appeal, the [opponent] eventually agreed that the new claim sets were not belated and, hence, admissible as far as the appeal proceedings are concerned, but maintained that they were not admissible during opposition proceedings. The Board does not see any relevance of this latter argument for the present proceedings. Even if the decision of the OD to revoke the patent would have been based on the formal ground of inadmissibility of the requests instead of on the grounds of A 83, this would not have terminated the proceedings irrevocably or prohibited the [patent proprietor’s] appeal. For sake of completeness the Board wishes to express its full agreement with the OD’s finding insofar as the current claim sets are not deemed to be belated even during opposition proceedings. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1180 | 3398
K’s Law – The ebook
Publish Or Perish (ctd.)
Publish Or Perish (ctd.) 7 Jul 2012
Here is my quarterly update of the numbers of decisions published on the DG3 webpage.
So far, the 2012 numbers are in line with what we have seen in 2008 or 2010, and one may expect an overall number of about 1300 decisions in 2012 – unless we see a sharp increase in Q3, as in 2009, that is. The DG3 webpage is said to check for new decisions daily and update the list accordingly. Still, the publication of decisions is not very smooth, as can be seen from the following graph (number of decisions published per day, between 1/1/12 and 30/6/12). But regularity has improved in June.
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T 346/11 – Don’t Change Your Mind
K’s Law – The ebook
T 346/11 – Don’t Change Your Mind 6 Jul 2012
This is an appeal against the refusal of an application by the Examining division (ED), for lack of clarity. Together with the statement of grounds of appeal, the applicant filed amended claims that overcame the clarity objections, but later filed a request corresponding to the request that had been refused by the ED. The Board did not like this approach: [4.1] According to Article 12(2) RPBA, the statement of grounds of appeal shall contain a party’s complete case. It shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed or amended. The provision of Article 13(1) RPBA [is] also relevant in this context […]. [4.2] In the present case, the appellant requested, as a second auxiliary request, at the very end of the oral proceedings that the case be remitted to the first instance for further prosecution on the basis of the then main request filed on 7 May 2010, i.e. the request which is the subject-matter of the contested decision and was found not to meet the clarity requirements. [4.3] The board considers it inappropriate for the appellant to accept (by filing amended claims with the statement of grounds of appeal) the objection of lack of clarity raised by the first instance and then to change its mind at an extremely late stage of the proceedings, requesting in fact that the board reverse the reasoning of the first instance on clarity, which had hitherto not been the subject-matter of the debate. It must be borne in mind that it is the duty of the appellant to define the scope of the appeal as set out in the above cited Article 12(1) RPBA. The appellant has the discretion to appeal against the decision only in part and to argue accordingly in the statement of grounds. However, a new request which changes the scope of the appeal, in particular if, as in the present case, it is not supported by any reasoning as to why the contested decision should be reversed and is submitted at a very late stage of the proceedings, cannot be admitted into the proceedings in accordance with Article 13(1) RPBA. The second auxiliary request is thus not admissible. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1982/09 – Once Upon A Party
K’s Law – The ebook
T 1982/09 – Once Upon A Party 5 Jul 2012
In this case an opposition had been filed by Siemens AG (“Siemens”) and transferred to Nokia Siemens Networks GmbH & Co. KG (“NSN”). The Opposition Division (OD) had maintained the opposed patent in amended form. An appeal was filed both by the patent proprietor (Sony) and NSN. The Board examined the party status and the admissibility of the appeal: [1.1] As a matter of principle, the board examines the question of party status ex officio before dealing with the substance of the case (cf. G 2/04 [3.2.5], and T 1178/04 [27, 31, 34]). According to the established case law an opponent status is not freely transferable. It may however be transferred or assigned to a third party as part of the opponent’s business assets, together with the assets in the interests of which the opposition was filed (G 2/04 and G 4/88). If the technology of the opposed patent concerns different parts of the opponent’s business, the status of opponent can pass to a third party only if all these parts are transferred to it (see T 9/00 [2(e)]). [1.2] In the present case, it was common ground between the parties that with effect of 1 October 2006 the original opponent (Siemens) transferred its business part “Carrier Networks Geschäft” to Siemens Networks GmbH & Co. KG (statutory declaration dated 3 February 2009) which subsequently changed its name to NSN. [1.3] However, in the board’s judgement, the declaration submitted by NSN in support of the transfer of opposition does not constitute sufficient evidence in order to conclude that the transferred business part comprised all of the technology to which the patent in suit relates. More specifically, the term “Carrier Networks” is open to different interpretations and the declaration does not give details of the technological areas covered by the transferred business part. Nor does the further evidence as submitted in reply to the first communication, in which it was confirmed that Siemens had transferred “its assets, liabilities and contracts relating to the carrier networks equipment and services business with telecommunication network operators and service providers of Siemens’ communications group (COM) comprising: (a) the mobile networks, fixed networks and carrier services divisions; and (b) the carrier core development and supply chain management carrier networks functional divisions”, provide sufficient evident in order to conclude that the transferred business part comprised all of the technology to which the patent in suit relates. In this respect the board notes that the patent in suit is concerned with a communication resource allocation method for adapting the transmission capacity of a wireless link between a mobile terminal apparatus and a base station connected to a cellular communication network. Independent claim 9 as granted is directed to a mobile terminal. Hence, the patent relates, inter alia, to business activities in the field of mobile telephones. At the oral proceedings (OPs) before the board the representative representing both Siemens and NSN did not contest that Siemens is currently the applicant for or patent proprietor of patents relating to mobile telephones. [1.4] In view of the above the board concludes that the opponent status was not validly transferred. The OD thus incorrectly held that NSN was the new opponent and, consequently, the appeal was filed in the wrong name, namely in the name of NSN, instead of in the name of Siemens. [1.5] Following T 1178/04 [3], the fact that the OD’s ruling on the issue of opponent status was wrong cannot however mean that NSN was not a party to the proceedings at the date the notice of appeal was filed. A person is to be regarded as a party for the purpose of A 107 even if his entitlement to take part in the proceedings is brought into question and such entitlement is the subject-matter of a pending decision. Although he may cease to be a party if it is decided that he is not entitled to take part in the proceedings, this does not mean he never was a party. [1.6] Since there is no dispute that the other requirements of A 107 and A 108 have been satisfied in this case, it follows that the appeal filed by NSN is admissible. Procedural consequences 1183 | 3398
T 1982/09 – Once Upon A Party
K’s Law – The ebook
[2.1] The OD’s view that the opponent status was validly transferred had the consequence that the opposition proceedings were continued with the wrong party, i.e. with NSN instead of the original opponent. These proceedings thus suffered from a major procedural deficiency. According to Article 11 RPBA, a board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise. Such a remittal was considered necessary in decision T 1178/04 [44-45] in a situation similar to the present one. [2.2] However, in the board’s view, the particular circumstances of the present case, which are summarized in the following, speak against a remittal under Article 11 RPBA. In response to the board’s communication accompanying the summons, the appellant’s representative explicitly stated that he had been and was still authorized to represent the original opponent and submitted a corresponding authorisation. He had already offered to file such an authorisation in the OPs before the OD, when the patent proprietor for the first time questioned the transfer of opponent status. None of the parties argued that the fact that the opposition proceedings were continued with the wrong party had changed the outcome of the proceedings in substance. Any suggestion that the true opponent might not have appealed the decision or might have conducted the appeal proceedings differently would amount to mere speculation and be highly implausible, since the original opponent indeed authorized the representative to represent it in the current appeal proceedings. Moreover, all the parties agreed that a remittal and the ensuing repetition of the first instance proceedings would cause a considerable and undesirable delay in having the case decided by the final instance. Under these circumstances, the true opponent (Siemens) is deemed to have acquired the appellant status from NSN as a consequence of the board having decided that the opponent status was not validly transferred to the latter company. Thus, in the present case, there is no need for a remittal on the ground that the appeal was not filed by the true opponent itself. [2.3] The appeal proceedings are therefore continued with Siemens as the appellant. Further, since in the course of the OPs the proprietor withdrew its appeal, the proprietor is party to the appeal proceedings as of right and will hereinafter be referred to as the respondent (A 107). Should you wish to download the whole decision, just click here. NB: For some reason unknown to me (which might simply be an error), the decision is marked as “draft”. The file wrapper can be found here. A similar case was discussed in an earlier post on this blog.
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T 1100/09 – For The Worse
K’s Law – The ebook
T 1100/09 – For The Worse 4 Jul 2012
This is an appeal of the opponent (alone) against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. Claim 1 as maintained by the OD read: A piston assembly for heavy duty diesel engine applications comprising: a one piece upper crown part (102, 202) and a one piece lower crown part (104, 204); said upper crown part (102, 202) having a lower connecting portion formed with an inner annular rib (107, 207) and an outer annular rib (109, 209) spaced from said inner rib (107, 209), said inner and outer ribs (107, 207, 109, 209) of said upper crown part (102, 202) extending axially to free ends thereof each presenting a single planar joining surface (108, 110, 208, 210) of said upper crown part ribs (107, 207, 109, 209); said lower crown part (104, 204) having an upper connecting portion (117, 217) from which a pair of pin boss portions (121, 221) depend having a space (127, 227) between said pin boss portions (121, 221) to receive a connecting rod, said upper connecting portion (117, 217) having an inner annular rib (113, 213) and an outer annular rib (115, 215) spaced from said inner annular rib (113, 213) of said lower crown part (104, 204), said inner and outer ribs (113, 213, 115, 215) of said lower crown part (104, 204) extending axially to free ends thereof each presenting a single planar joining surface (116, 118, 216, 218) of said lower crown part ribs (113, 213, 115, 215); said lower crown part (104, 204) having an inner gallery floor (106d, 206d) arranged above said space (127, 227) of said pin boss portions (121, 221) and surrounded by said inner annular rib (113, 213) of said lower crown part (104, 204); and said inner gallery floor (106d, 206d) including an opening (106e, 206e) establishing fluid communication between said inner gallery (120, 220) and said space (127, 227) between said pin boss portions (121, 221) characterized in that said inner and outer ribs (107, 207, 109, 209) of said upper crown part (102, 202) are joined to said inner and outer ribs (113, 213) of said lower crown part (104, 204), respectively, across their respective single planar joining surfaces (108, 110, 208, 210, 116, 118, 216, 218) by friction weld joints (106b, 106g, 206b, 206g) to define the inner oil gallery (120, 220) and the outer oil gallery (122, 222) within the joined crown parts (102, 202, 104, 204) separated by said inner ribs (107, 113, 207, 213) of said joined crown parts (102, 202, 104, 204), that said inner rib (113, 213) of said lower crown part (104, 204) is formed with at least one fluid transfer port (123, 223) spaced axially from said joining surface thereof and extending between said outer oil gallery (122, 222) and said inner oil gallery (120, 220) to establish fluid communication therebetween, that said fluid transfer port (123, 223) of said inner rib (113, 213) extends upwardly at an angle from said outer gallery (122, 222) to said inner gallery (120, 220),
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K’s Law – The ebook
that said outer gallery (122, 222) has a floor (124, 224) extending between said inner rib (113, 213) and said outer rib (115, 215) that is spaced axially from said planar joining surfaces (116, 118, 216, 218) of said inner and outer ribs (113, 213, 115, 215) of said lower crown part (104, 204), (and) that said floor (124, 224) of said outer gallery (122, 222) is spaced below said floor (106d, 206d) of said inner gallery (120, 220). (my emphasis) Claim 1 of the auxiliary request read (changes have been made apparent) A piston assembly for heavy duty diesel engine applications comprising: a one piece upper crown part (102, 202) and a one piece lower crown part (104, 204); said upper crown part (102, 202) having a lower connecting portion formed with an inner annular rib (107, 207) and an outer annular rib (109, 209) spaced from said inner rib (107, 209), said inner and outer ribs (107, 207, 109, 209) of said upper crown part (102, 202) extending axially to free ends thereof each presenting a single planar joining surface (108, 110, 208, 210) of said upper crown part ribs (107, 207, 109, 209); said lower crown part (104, 204) having an upper connecting portion (117, 217) from which a pair of pin boss portions (121, 221) depend having a space (127, 227) between said pin boss portions (121, 221) to receive a connecting rod, said upper connecting portion (117, 217) having an inner annular rib (113, 213) and an outer annular rib (115, 215) spaced from said inner annular rib (113, 213) of said lower crown part (104, 204), said inner and outer ribs (113, 213, 115, 215) of said lower crown part (104, 204) extending axially to free ends thereof each presenting a single planar joining surface (116, 118, 216, 218) of said lower crown part ribs (113, 213, 115, 215); said lower crown part (104, 204) having an inner gallery floor (106d, 206d) arranged above said space (127, 227) of said pin boss portions (121, 221) and surrounded by said inner annular rib (113, 213) of said lower crown part (104, 204); and said inner gallery floor (106d, 206d) including an opening (106e, 206e) establishing fluid communication between said inner gallery (120, 220) and said space (127, 227) between said pin boss portions (121, 221) characterized in that said inner and outer ribs (107, 207, 109, 209) of said upper crown part (102, 202) are joined to said inner and outer ribs (113, 213) of said lower crown part (104, 204), respectively, across their respective single planar joining surfaces (108, 110, 208, 210, 116, 118, 216, 218) by friction weld joints (106b, 106g, 206b, 206g) to define the inner oil gallery (120, 220) and the outer oil gallery (122, 222) within the joined crown parts (102, 202, 104, 204) separated by said inner ribs (107, 113, 207, 213) of said joined crown parts (102, 202, 104, 204), that said inner rib (113, 213) of said lower crown part (104, 204) is formed with at least one fluid transfer port (123, 223) spaced axially from said joining surface thereof and extending between said outer oil gallery (122, 222) and said inner oil gallery (120, 220) to establish fluid communication therebetween, that said fluid transfer port (123, 223) of said inner rib (113, 213) extends upwardly at an angle from said outer gallery (122, 222) to said inner gallery (120, 220), that said fluid transfer port (123, 223) extends from a location above said floor (124, 224) of said outer gallery (122, 222) to said floor (106d, 206d) of said inner gallery (120, 220) at said upward angle,
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T 1100/09 – For The Worse
K’s Law – The ebook
that said outer gallery (122, 222) has a floor (124, 224) extending between said inner rib (113, 213) and said outer rib (115, 215) that is spaced axially from said planar joining surfaces (116, 118, 216, 218) of said inner and outer ribs (113, 213, 115, 215) of said lower crown part (104, 204), (and) that said floor (124, 224) of said outer gallery (122, 222) is spaced below said floor (106d, 206d) of said inner gallery (120, 220), and that said inner ribs (107, 113, 207, 213) of said upper and lower crown parts (102, 202, 104, 204) extend substantially parallel to a central longitudinal axis A of said upper and said lower crown parts (102, 202, 104, 204) adjacent said joining surfaces (116, 118, 216, 218, 108, 110, 208, 210). This case offers us the opportunity to study one of those cases where the Boards accepts reformatio in peius. Main request (A 84 EPC 1973) [2.1] The [patent proprietor] was of the opinion that the insertion of “single” into claim 1 made during the opposition proceedings was only a clarification which did not restrict the claimed subject-matter. The Board however finds that the amendment is a restriction; it excludes for example multi-planar surfaces. The amendment is thus not simply a clarification of what the granted claim already states as argued by the [patent proprietor]. As the amendment is also not simply a result of combining granted claims, the requirements of A 84 EPC 1973 need to be fulfilled by the amendment. [2.2] The features in the pre-characterizing portion of claim 1 define two crown parts of a piston assembly to be joined by friction welding (i.e. to achieve the welded state defined in the characterizing portion). However, the claim is directed to a “piston assembly” (i.e. an assembly formed by assembling these crown parts) in which the friction welded joining surfaces are no longer identifiable because the surfaces have melted and are welded to one another. Consequently the features of the pre-characterizing portion in question are no longer present in the subject-matter having the further features of the characterizing portion. This leads to a lack of clarity in the meaning of A 84 EPC 1973 since it is not determinable in which configuration the respective joining surfaces are related to one another in the piston assembly according to claim 1. Specifically in the present case, it is no longer possible to identify whether a single surface was used on each rib before welding. Although the [patent proprietor] argued that a single surface on each rib could still be identified in the welded assembly, as allegedly demonstrated by Annex A, the Board is unconvinced by this argument, since the joining surfaces where friction welding occurred in Annex A are highly deformed (as shown for example at the outer portions thereof) such that identification of a single surface on each of the contact areas which were ultimately joined cannot be made. [2.3] For this reason the main request cannot be allowed. Auxiliary request (exception to the prohibition of reformatio in peius) [3.1] In its decision G 1/99 the Enlarged Board of Appeal held that in principle, an amended claim, which would put the opponent and sole [opponent] in a worse situation than if it had not appealed, must be rejected. However, an exception to this principle may be made in order to meet an objection put forward by the opponent/[opponent] or the Board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the OD in its interlocutory decision. In such circumstances, in order to overcome the deficiency, the patent proprietor/[patent proprietor] may be allowed to file requests, as follows:
in the first place, for an amendment introducing one or more originally disclosed features which limit the scope of the patent as maintained; if such a limitation is not possible, for an amendment introducing one or more originally disclosed features which extend the scope of the patent as maintained, but within the limits of A 123(3); finally, if such amendments are not possible, for deletion of the inadmissible amendment, but within the limits of A 123(3).
[3.2] In the present case neither the Board nor the parties to the proceedings saw a possibility of applying one of the first or second alternative solutions established by the Enlarged Board. The newly introduced term “single” cannot be restricted by another expression since it has already the narrowest specific meaning in defining the 1187 | 3398
T 1100/09 – For The Worse
K’s Law – The ebook
surfaces. There is no other expression in the patent which would be suitable to restrict “single” in another way because it is already the highest degree of definition compared to the possibilities of “a” or “one”. Therefore, according to established case law, the [patent proprietor] may be allowed to delete the inadmissible amendment made during the opposition proceedings. Since the deletion also does not extend the scope of protection conferred by claim 1 as granted (as this defined merely “a planar joining surface”), deletion of the term “single” does not contravene A 123(3). Finally the case was remitted to the first instance for further prosecution. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 353/11 – Intentions Are Not Enough
K’s Law – The ebook
T 353/11 – Intentions Are Not Enough 3 Jul 2012
One of the traps Examining Divisions (ED) sometimes fall into – in particular when taking decisions “on the state of the file” without oral proceedings (OPs) – is to insufficiently reason their decisions. This what happened in the present case and which led to a (second !) remittal. [2.1] Pursuant to A 106(1) an appeal shall lie from the decisions of the ED. According to R 111(2) the decisions of the EPO open to appeal shall be reasoned. [2.2] The function of appeal proceedings is to give a judicial decision upon the correctness of an earlier decision taken by a first instance department (see inter alia T 34/90 [headnote 1]). A reasoned decision issued by the first instance department meeting the requirements of Rule 111(2) EPC is accordingly a prerequisite for the examination of the appeal. [2.3] It is established jurisprudence of the boards of appeal that for this requirement to be fulfilled the decision must include, in logical sequence, the supporting arguments. The grounds upon which a decision is based and all the relevant considerations in respect of the factual and legal aspects of the case must be discussed in detail in the decision (see inter alia T 278/00). [2.4] In the present case the ED refused the application using EPO Form 2061 under the so-called “decision on the state of the file” procedure. This typically involves referring in, and/or annexing to Form 2061, one or more previous communications of the ED. [2.4.1] This standard form may be entirely appropriate in the case where the ED has fully expressed and reasoned its objections to the current application text in the preceding communication(s). It should be noted that a request for a decision based on the current state of the file does not mean that the party gives up its right to a reasoned decision (see T 1356/05 [15]). It simply means that the party does not wish to further comment on the case. [2.5] In the present case, the decision under appeal refers solely to the communication of 21 January 2010, which was annexed to a summons to attend OPs. [2.5.1] Points 1 to 3 of said communication merely reproduce the wording of claim 1 on file, indicate that the subject-matter thereof was deemed novel by the decision T 1631/06, and that during oral proceedings inventive step would be examined. [2.5.2] Point 4 of said communication begins with the wording “The preliminary opinion of the ED is the following”. It then identifies the closest prior art, namely document D1, and describes what is disclosed therein and how the subject-matter of claim 1 of the application in suit is distinguished therefrom, namely by the feature identified in point II above. It was then indicated that “it will be examined whether this feature involves an inventive step or not”. It was further indicated that it was not clear whether the examples of the application illustrated the distinguishing feature of the invention and invited the Applicant to submit such an example. It indicated that it would then be examined whether the defined controlling of the pH value involved any surprising effect vis-à-vis Example 1 of document D1. The Applicant was thus invited to compare the effects of the claimed process with that of Example 1 of document D1, said comparison being carried out under the same experimental conditions, i.e. the experiments should differ only by virtue of the distinguishing feature and the significance of any effects should be explained. [2.6] The communication thus does no more than to identify the closest prior and the distinguishing feature of the invention, indicates that it is “not clear” whether the examples of the application illustrate the distinguishing feature of the invention, states it will be examined whether or not the process is inventive, and invites the [applicant] to file a comparative example. It neither gives an explicit conclusion with respect to inventive step, nor any reasons as to why the claimed process is not inventive. More particularly, it provides no reasons as to why it may have been obvious to the skilled person to amend the process according to document D1 by controlling the pH of the formulation prior to injection in relation to the pH and temperature prevalent or created in the rock formation, such that upon injection into the rock formation the pH of the formulation varies to a value 1189 | 3398
T 353/11 – Intentions Are Not Enough
K’s Law – The ebook
so as to generate a precipitate of the scale inhibitor in situ, i.e. as to why in the absence of a comparative example, the claimed process lacks an inventive step. Furthermore, no reasons are given as to why the examples of the application do not appear to illustrate the distinguishing feature of the invention, and thus nor as to why they do not provide a fair comparison with document D1. [2.7] Accordingly this communication cannot be regarded as containing any reasons at all for refusing the application, and also does not arrive at any conclusion with regard to inventive step. [2.8] It might be that the ED had the intention to give more detailed reasons to the applicant during the OPs but, the OPs not having taken place, a simple reference in the decision to vague and incomplete statements in a prior communication cannot be considered as valid reasoning pursuant to R 111(2). [2.9] Thus, the ED did not issue a reasoned decision within the meaning of R 111(2) and, therefore, committed a substantial procedural violation. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 89/10 – Copy & Paste
K’s Law – The ebook
T 89/10 – Copy & Paste 2 Jul 2012
Quite recently (here) we have seen that it can be dangerous to file a statement of grounds of appeal that only repeats the arguments brought forward before the first instance. This does not mean that one may not copy and paste the major part of the objections, as the present decision shows. [1] It is not contested that the greatest part of section 4 (and also of section 3) of the statement of the grounds of appeal repeats exactly the arguments of the last letter submitted by the Opponent in advance of the oral proceedings before the Opposition Division (OD), with the exception of some slight adaptation of the text to the subject-matter of the claims found to comply with the requirements of the EPC in the decision under appeal. However, the statement of the grounds of appeal contains also an introduction (section 1) analysing specifically the subject-matter of the patent as maintained by the OD and a section 6 addressing specifically the reasoning of the decision under appeal and referring back to the arguments presented in section 4 (see last paragraph in section 6.2). Therefore, it is clear from the statement of the grounds of appeal that, according to the Appellant’s opinion, all these objections already raised before the OD still apply to the claims allowed by the OD and form part of the Appellant’s case. The fact that great part of these objections are copied from one submission filed during the first instance proceedings does not detract from the alleged validity of these arguments, which are implemented by specific sections (1 and 6) addressing the claims as maintained by the OD and parts of the decision under appeal. Therefore, the Board finds that the objections forming the appeal case are clear and fully understandable by reading the statement of the grounds of appeal. The present case thus is different from the case T 349/09, invoked by the Respondent, in which the statement of grounds of appeal was prepared by simple editing of the earlier notice of opposition so as, for example, to refer to claims numbered as in the request allowed by the OD, and in which the Opponent repeated exactly entirely its statement of opposition and it was not possible to elicit from the submitted text which objections could still apply to the maintained claims without an extensive work of comparison (see points 1, 4, 8, 10 and 13 of the reasons). Therefore, the Board concludes that the appeal complies with the requirements of A 108 and R 99(2) and is admissible. To download the whole decision, click here. The file wrapper can be found here.
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Interpretative Spotlight: “Active”
K’s Law – The ebook
Interpretative Spotlight: “Active” 30 Jun 2012
The patent proprietor filed an appeal against the decision to revoke the patent under consideration. Claim 1 of the main request read: Use of fluprostenol isopropyl ester as the sole active ingredient for the manufacture of a medicament for topical application for the treatment of glaucoma and ocular hypertension. (my emphasis) The Board found this claim to comply with A 123(2): [3] A 123(2) stipulates that the European patent may not be amended in such a way that it contains subjectmatter which extends beyond the content of the application as filed. According to the established jurisprudence of the boards of appeal, this content encompasses what can be directly and unambiguously deduced from the explicit and implicit disclosure of the application as filed in its entirety. [3.1] As a first step, the meaning of the expression “active ingredient” has to be clarified. According to the respondent, it comprises every compound having any activity. Such a definition does not appear to be suitable in view of the fact that virtually every compound interacts with its environment somehow and therefore shows some sort of activity. Such a meaning of active ingredient would restrict claim 1 to the use of IEP as such, i.e. to the use of IEP in the absence of any additional compounds including excipients or preservatives, and this is clearly not how the skilled person would read the sole claim of the main request. Taking into consideration that the skilled person makes a distinction between active ingredient on the one hand and excipients on the other hand, it might be argued that active ingredient encompasses every compound having any pharmacological activity including pharmacological activities not related to those defined in the claim. However, such an interpretation amounts more or less to the same restriction of the claim as the former definition. The appellant cited water, which may be used for treating dehydration, or sodium chloride, which is suitable for treating sodium deficiency, as examples of compounds having a pharmacological activity. The skilled person would not associate the exclusion of these compounds with the feature “as the sole active ingredient”. As a consequence, this definition is not correct either. The board concludes that “active” in the feature “as the sole active ingredient” implies an activity in relation to the treatment defined in the Swiss-type claim. As a consequence, the feature “as the sole active ingredient” excludes further compounds characterised by a pharmacological activity which mitigates or otherwise influences the symptoms of glaucoma and ocular hypertension. It does not, however, exclude further compounds such as preservatives, co-solvents and viscosity building agents. In this context, it is noted that some ocular preservatives such as boric acid may also be used as active ingredients for the treatment of inflammations, which in combination with conjunctival hyperemia and edema are known side effects of prostaglandins used in the treatment of ocular hypertension including FIE (see page 2, lines 13-15, and page 32, lines 1-12, of the original application). However, the fact that such preservatives may be able to lessen some side effects possibly caused by FIE does not make them active ingredients in the sense of the claim. These preservatives are not excluded from the claim of the present main request in view of the fact they do not have any activity in connection with glaucoma and ocular hypertension. The board therefore concludes that the Swiss-type claim according to the main request relates to a medicament for topical application which, apart from FIE, does not comprise additional compounds which are able to treat glaucoma and ocular hypertension. Further compounds such as e.g. the preservatives, co-solvents and viscosity building agents mentioned above are not excluded. [3.2] The board notes that the feature “fluprostenol isopropyl ester as the sole active ingredient” is not as such mentioned in the original application. The original application cites FIE as one of the preferred, albeit not the most preferred, active ingredients (see page 4, lines 14-17, and page 7, lines 4-8), but does not specify expressis verbis that it should be used as the sole active ingredient. In fact, the general description does not explicitly disclose monotherapy for any of the active agents therein; it merely says that certain cloprostenol and 1192 | 3398
Interpretative Spotlight: “Active”
K’s Law – The ebook
fluprostenol analogues as well as compounds according to general formula (IV) are useful in treating glaucoma and ocular hypertension (see page 4, lines 22-26, and page 7, lines 10-11). Original claim 16 concerns the “use of a compound of formula (IV) … for the manufacture of a medicament for topical application for the treatment of glaucoma and ocular hypertension”. These passages encompass both monotherapy and combination therapy and therefore cannot serve as a basis for the feature “fluprostenol isopropyl ester as the sole active ingredient”. However, the evaluation of the overall content of a patent application also requires an analysis of the examples disclosed therein. The original application comprises nine examples. Examples 1 to 4 concern the synthesis of some active ingredients and are therefore irrelevant in this context. Examples 5 and 6 deal with pharmacological assays of some active ingredients including FIE (compound B) in which the intraocular pressure lowering effect (example 6) and development of hyperemia as an unwanted side effect (example 5) were examined on the basis of animal models. Examples 7 and 8 also describe animal models in which the intraocular pressure lowering effect of some active ingredients not including FIE are studied. Although not relating to pharmaceutical formulations, as was correctly pointed out by the respondent, these examples nevertheless reveal that the active ingredients disclosed in the original application are suitable for monotherapy. Example 9 discloses eight pharmaceutical formulations for topical use for lowering the intraocular pressure. Although different active ingredients are used (various cloposterol derivatives in formulations 1-3, 5 and 7-8; FIE in formulation 4; and 13,14-dihydrofluprostenol in formulation 6), these formulations have one thing in common, namely that a sole active ingredient in the sense as defined above was used. [3.3] To summarise: the general part of the description does not explicitly refer to the use of a sole active ingredient but includes both monotherapy and combination therapy. All the formulations of example 9 comprise a sole active ingredient, there is not a single formulation exemplifying combination therapy. The concept of monotherapy is confirmed by examples 5 to 8, in which the suitability of the active ingredients as sole active agents in terms of pharmacological effects and side effects is shown. The board concludes therefrom that monotherapy, i.e. the use of a sole active ingredient, constitutes the preferred form of administration in the original application. This preference is not restricted to FIE but concerns all the active ingredients disclosed in the original application and therefore has general character. FIE was selected from a list of compounds, and in particular from a list of six particularly preferred active ingredients (see page 7, lines 4-8) and combined monotherapy (as the sole active ingredient), which constitutes de facto the only administration form envisaged in the original application. Under these circumstances, the board concludes that the feature “fluprostenol isopropyl ester as the sole active ingredient” is not the result of two selections from different lists, as basically only one selection, i.e. the selection of FIE from a list of six preferred active ingredients, has to be made in order to arrive at the feature mentioned above. As a consequence, the requirements of A 123(2) are met. The case was then remitted to the first instance for further prosecution. To download the whole decision (T197/08), click here. The file wrapper can be found here.
1193 | 3398
T 1721/07 – No Self-Service
K’s Law – The ebook
T 1721/07 – No Self-Service 29 Jun 2012
The patent proprietors filed an appeal against the decision to revoke the patent under consideration. The decision dated March 29, 2012, – wherein this appeal was dismissed – also contains an interesting paragraph on a request filed on May 4, 2012, concerning a correction of the minutes of the oral proceedings (OPs) before the Board. In particular, the patent proprietors requested:
that the sentence “[The chairman] presented the essential content of the file” be deleted because only the requests of the parties were presented, and not the essential content; that a 30-lines passage – wherein the patent proprietor summarised the arguments of the parties and the conclusions of the Board – be inserted after the sentence “Then the parties were given the opportunity to speak”; that the minutes mention that the patent proprietor had raised their objection – according to which the decision not to admit auxiliary requests 2 to 4 was a substantial procedural violation – before the announcement of the decision by the Board, and not afterwards; that the sentences “When asked by the chairman, the parties declared that they did not wish to file further requests or statements” and “Then the chairman declared the factual discussion to be terminated”, because these events had not taken place ; the sentence “After deliberation of the Board, the following decision was announced” should also be amended to read “The Board then announced the following decision”. that several grammatical errors be corrected.
As you might have guessed, the Board did not grant these requests: *** Translation of the German original *** [15] It follows from R 124, according to which minutes shall be drawn up and copies transmitted to the parties, as well as from Article 6(4) RPBA, according to which the minutes shall be drawn up by the Registrar or such other employee of the Office as the Chairman may designate, that the minutes of OPs (in appeal proceedings) are to be drawn up by the Board. This duty cannot be transferred or left, in whole or in part, to the parties or even only one of the parties. This alone would be enough for dismissing the request of the [patent proprietors] to have the minutes of the OPs corrected along its proposition […]. However, the Board wishes to comment on the submission of the [patent proprietors] as follows: [16] The sentence “He presented the essential content of the file” is a well-known standard formulation that is often used in minutes of OPs before Boards of appeal. To which extent the “content of the file” is actually presented at the beginning of the proceedings depends on the individual case. According to the established practice of the present Board the number of the appeal, the language of the proceedings, number and title of the patent, the impugned decision, the parties and their representatives as well as their requests are mentioned; this has also be done in the present case. [17] Quite obviously – and understandably – the elements the [patent proprietors] wanted to have added [to the minutes] reflect their view of the OPs and summarise the arguments they consider to be relevant. However, as already mentioned, a party cannot be allowed to decide or have an influence on the contents of the minutes. In practice, a summary of the arguments made in the course of the OPs, as the one the [patent proprietors] wished to have included in the minutes of te OPs, is not, as a rule, given in the minutes but – although in somewhat different form – in the written decision, together with the written submissions. This has been done in the present case, too […]. [18] The third and fourth requests of the [patent proprietors] do not correspond to the recollections of the Board. The Board has noted the events in its minutes when they occurred (zeitgleich) and does not see any reason why it
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T 1721/07 – No Self-Service
K’s Law – The ebook
should correct the minutes at the request of one party, more than one month after the events, so that they reflect another sequence of events than when they were drafted. [19] Although the correction of grammatical errors might not be disputed, the Board does not see any need for correcting minutes, provided that the errors do not result in making the minutes faulty; however, this appears not to be the case here. To download the whole decision, click here. The file wrapper can be found here.
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T 412/09 – A Consistent Picture
K’s Law – The ebook
T 412/09 – A Consistent Picture 28 Jun 2012
This is an appeal against the refusal of an application. The decision contains a useful reminder on the link between patent documents and common general knowledge (CGK). [2.1.3] In its letter of reply the appellant disputed that the image acquisition procedure referred to above belonged to the CGK and submitted that according to the established case law patents cannot be used to establish CGK. While the Board concurs with the appellant that the CGK of the person skilled in the art is, as a general rule, established on the basis of encyclopaedias, textbooks and the like (see decision T 890/02 [2]), contrary to the appellant’s submissions this does not meant that a disclosure is automatically discarded as evidence in this regard for the mere fact of being disclosed in a patent specification. On the contrary, the case law contemplates exceptions to the general rule mentioned above and allows in particular circumstances the establishment of CGK on the basis of the content of patent specifications (see T 890/02 [2], and “Case Law of the Boards of Appeal” EPO, 6th edition, 2010, chapter I, section C.1.5 and last paragraph of section C.3.2.6), and in particular when a series of patent specifications provides a consistent picture that a particular technical procedure was generally known and belonged to the CGK in the art at the relevant date (see decisions T 151/05 [3.4.1, 4.1, 4.3] and T 452/05 [2.4.1, paragraph (b)(ii)]). [… D]ocuments A1, A2 and A3 provide a consistent picture that setting the exposure time of a CCD camera to be identical to or an integer multiple of the display period of a rapidly varying periodic display to be captured by the camera constituted a common practice in the art. Therefore these documents constitute prima facie evidence that this practice constituted CGK at the priority date of the application in suit, and the appellant’s mere submission that patents cannot be used in establishing CGK is insufficient to rebut or displace this evidence or to cast doubts on the CGK under consideration. The appellant submitted that documents A1 to A3 pertain to technical fields different from that of the claimed invention […]. The Board notes, however, that in the circumstances of the present case the question is not whether the skilled person would be expected to consult these documents when operating the apparatus of document D2, but whether the documents constitute evidence supporting the position that the common practice mentioned above was generally known to him. In documents A1 to A3 different value ranges of the exposure time of the CCD camera (in particular, “2 or more” periods in document A1 (paragraph [0058]), “a few tens” in document A2 (paragraph [0041]), and “the shortest [period] ... multiplied by an integer” in document A3 (paragraph [0176])) are selected in order to cope with the specific technical situations encountered in the respective technical fields; however, it is taken for granted in the disclosure of all these documents that, when capturing a periodic display with a CCD camera, the value of the exposure time of the camera is to be selected to correspond to the display period or to a multiple integer of the same. This procedure relates to the operation of the CCD camera itself and not to the specific technical field in which the camera is being used in each of documents A1 to A3. [2.1.4] Having regard to the above considerations, the Board concludes that the apparatus defined in independent claim 2 of the main request does not involve an inventive step (A56). Should you wish to download the whole decision, just click here. The file wrapper can be found here, and a French summary of the decision here.
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T 768/08 – Lethal Process
K’s Law – The ebook
T 768/08 – Lethal Process 27 Jun 2012
This is an appeal against the refusal of the application under consideration by the competent Examining Division (ED). Claim 1 of the main request before the Board read (Compared to Claim 1 as filed, additional features are underlined, deleted features are crossed out). A hair treatment composition containing, as the internal phase of an emulsion which itself constitutes the hair treatment composition, a silicone component, comprising droplets of silicone blend the silicone component being provided as a single blend, and the single blend being in the form of an aqueous emulsion which is added to the composition during the manufacture, the silicone blend comprising (iii) from 50 to 95% by weight of the silicone component of a first silicone having a viscosity of at least 100,000 mm**(2)/sec at 25ºC, and (iv) from 5 to 50% by weight of the silicone component of a second silicone which is functionalised, and wherein the weight ratio of the first silicone to the second silicone in the silicone component is from 6:1 to 2:1. In what follows, the Board deals with the clarity of the request on file : [3.2] Process steps, such as the features “the silicone component being provided as a single blend”, “the single blend being in the form of an aqueous emulsion” and “which is added to the composition during the manufacture”, which were not present in Claim 1 of the previous claims requests, have been included in Claim 1, which concerns a composition of matter, to define the internal phase of that composition of matter. [3.3] Since Claim 1 attempts to define the internal phase of the composition of matter, a hair treatment composition, hence the hair treatment composition, by reference to features of the process of its manufacture, i.e. it contains product-by-process features, it has to be decided whether Claim 1 fulfils the requirements of clarity stipulated by A 84, in particular having regard to the product-by-process features used. [3.4] Before dealing with the objections under A 84, it is worth recalling the principles underlying the requirements of clarity under A 84 for claims for products defined in terms of the process of their manufacture, e.g. product-by-process claims. Principles underlying the requirements of clarity under A 84, in particular as regards product-by-process claims [4] The second sentence of A 84 stipulates that the claims must be clear (Principle of clarity). [4.1] The principle of clarity established by A 84 is an aspect of a broad general principle of law, i.e. legal certainty, namely the requirement that e.g. legal texts be clear and precise, which conveys the idea of predictability (scope and purpose of the text must be predictable). [4.2] As established in G 2/88 [2.5], as regards drafting and amending claims in respect of inventions which are the subject of European patent applications and patents, the principle of clarity requires that the wording used must be such as to define the matter for which protection is sought in terms of technical features of the invention, having regard to the particular nature of the invention, having regard also to the purpose of the claims. The purpose of the claims is to determine the protection conferred by the patent (A 69), and consequently the rights enjoyed by the patent proprietors, having regard to the patentability requirements of A 52 to A 57. Still according to G 2/88 [7], the technical features of the invention are the physical features which are essential to it. As regards a claim to a physical entity, the technical features are the physical parameters of the entity, which in appropriate cases may be defined functionally. Hence, a primary purpose of the claim is to permit, in order to assess the patentability requirements, a comparison with the available state of the art.
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T 768/08 – Lethal Process
K’s Law – The ebook
[4.3] Although the breadth of a claim does not necessarily imply a lack of clarity, it is nevertheless subject to a further aspect of the principle of legal certainty, the requirement of proportionality, namely the weighing up and balancing of the contribution to the art and the sought-for scope of protection, i.e. the defined scope must be commensurate to the contribution to the art. Hence, the allowable breadth of a claim and the relevant extent of the patent monopoly, as defined by the claim, should correspond to the technical contribution to the art, thus to the invention as disclosed in the description (T 409/91 [3.3]). This implies that if a claim does not contain all of the features which are essential to the definition of the invention, it is not supported by the description (A 84). [4.4] Already since decision T 2/80 [2, last sentence], it is established case law (C.II.B.5.3.5) that the principle of clarity stipulated by A 84 requires that it must be possible to understand the claims without reference to the description. Hence, as regards clarity, reliance to the description, or to A 69, cannot be considered as a substitute for an amendment which would remove the lack of clarity. This is especially applicable in examination proceedings, where the value of future legal certainty is paramount. Hence, as established in the case law (C.II.B.5.3.5, in relation to T 1279/04), amendments rather than protracted arguments should be the answer to genuine difficulties of interpretation, in particular in examination proceedings. [4.5] Chemical substances may be defined by scientific designations, chemical formulae (explicitly foreseen in R 49), physical and structural features, properties as well as by the process of their manufacture (product-byprocess claims). Hence, as regards clarity, for each chemical substance, the question arises as to which of these formulations of definition can unambiguously define the sought-for subject-matter and how the claim should enable the claimed subject-matter to be distinguished from the prior art. [4.6] Product-by-process claims fulfil the need of defining chemical substances (such as macromolecules, complex compositions), which cannot be defined by their structure but, by way of the process of their manufacture. The justification for that kind of claim lies in the acknowledgement that the inventor is rewarded, not because of the theoretical explanation of the structure of the product but, for making available the manufacture of the claimed product (Münchner Gemeinschaftskommentar, 7th edition, May 1985, A 84, Notes 107-109, which inter alia cites the BGH decision “Trioxan”, published in GRUR 1972, 80). [4.7] However, as correctly mentioned in the said Münchner Gemeinschaftskommentar (Note 108, which inter alia states that the Guidelines do not set any clarity restricting conditions on the drafting of product-by-process claims, with reference the opinion expressed by Bühling in GRUR 1974, 299), it is established case law of the Boards of Appeal of the EPO (C.II..B.6.1, 6.2 and 6.3), since T 150/82, that the choice of a product-by-process format for drawing up a claim is not at the free disposal of the applicants, unless two specific conditions are fulfilled: (a) the claimed product itself fulfils the patentability requirements (which implies that a new and inventive process for manufacturing a known product cannot be used to define the known product with a product-byprocess claim) (established case law, C.II.B.6.2); and, (b) there is no other information available in the application for satisfactorily defining the claimed product by reference to its composition, structure or testable parameters (established case law, C.II.B.6.3, in particular T 956/04 [3.2]). [4.8] According to T 150/82 [10, last sentence], the requirement that “the form for a claim to a patentable product as such defined in terms of a process of manufacture (i.e. product-by-process claims) should be reserved for cases where the product cannot be satisfactorily defined by reference to its composition, structure or some other testable parameters” was to be established “in order to minimise uncertainty” (emphasis added by the Board). [4.9] As regards the requirement that the claimed product itself fulfils the patentability requirements, it implies that all of the specific process conditions (such as starting materials and reaction or formulation or preparation conditions), needed to necessarily obtain the claimed product, as inevitable process product, whose novelty could then be established by e.g. comparative tests, should be defined by a product-by-process claim (Case law, C.II.B.6., in particular with reference to T 300/89, T 552/91 and T 956/04 [3.5.3-5, 3.6.7, 3.7-8]). Therefore, for such a claim to be clear, the product-by-process features should make it possible to establish the distinctions of the inevitable product of the product-by-process claim over the prior art. [4.10] A combination of product and process features in a product claim is permissible (Case Law, II.B.6.4). However, as regards the process-by-product features, the criteria developed in T 150/82 apply (Case law, C.II.B. 6.4, e.g. T 129/88 [2.2.1-4]). 1198 | 3398
T 768/08 – Lethal Process
K’s Law – The ebook
Lack of clarity (A 84) [5] Claim 1 concerns a hair treatment composition, i.e. a composition of matter, in the form of an aqueous emulsion, the internal phase of which (i.e. the phase dispersed in the continuous water phase) comprises a silicone component. Claim 1 does not define precisely what the silicone component is, but indicates that it is provided as a single blend, in the form of an aqueous emulsion, which is added to the composition during manufacture. Also the term “single blend” is not defined as such (i.e. what kind of blend is meant). The weight percentages and ratios of the silicones comprised in the single blend are specified, which however can only relate to the those used in the preparation of the blend. [5.1] The alleged contribution to the art by the claimed composition, as gathered from the application as filed […], is the provision of intimate blends of combinations of silicones which result in individual particles comprising a mixture of silicones. This alleged contribution was to be contrasted to the known, separate addition of emulsions of each of the constituent silicone components to the hair composition […]). [5.2] It is apparent from the above that the alleged contribution relies on a particular intimacy of the combination of silicones, such as to result in individual particles comprising an intimate mixture of silicones. However, neither any degree of intimacy of the blend nor any constitution of the individual particles of the internal phase is defined in Claim 1. [5.3] Moreover, still from the application as filed, in particular from the detailed description of the alleged invention, it can be gathered that: (a) The single blend may simply be in form of a silicone mixture which can be added to the composition during manufacture […]. (b) It is however preferred that the single blend be in the form of an aqueous emulsion which is added to the composition during manufacture […]. (c) Pre-formed aqueous emulsions of silicone may have advantages in that they themselves may be easier to handle or process than the raw silicone ingredients of the silicone component […] (d) When the silicone present in the composition is added as an already homogenised mixture, it will be present in the hair treatment composition as a homogeneous mixture of silicones […]. That is, each silicone droplet in the composition will have essentially the same composition and will comprise a mixture (typically a solution) of the two types of silicone which together make up the silicone component of the composition, i.e. first silicone and second silicone […]. [5.4] It follows from the foregoing that: (a) aqueous emulsions of the silicone ingredients may be used, i.e. may be put together, e.g. in form of a single emulsion, which will then contain a single blend of silicones; or, more particularly, (b) the silicones may firstly be blended (pre-blending step) and homogenised, then the homogenised pre-blend can be emulsified, in order that each droplet essentially has the same composition. Finally, that pre-homogenised and pre-emulsified single blend in form of an aqueous emulsion is added to the final composition during manufacture. [5.5] Hence, the term “single blend” of Claim 1 encompasses not only an aqueous emulsion of pre-blended, homogenised and pre-emulsified silicones but also an aqueous emulsion obtained from blending two separate pre-emulsified silicone ingredients into a single aqueous emulsion, the internal phase of which will be made up of the silicone ingredients in their respective droplet form, hence of a single blend of silicones, in controlled particle sizes, uniformly dispersed in the emulsion, suitable to be added to the final composition. [5.6] The attempt by the appellants to reduce the breadth of the term “single blend” of Claim 1 to a pre-blended, homogenised and pre-emulsified silicone blend, hence to each particle of the emulsion containing a mixture or a solution of the silicones, as illustrated in the description of the application as filed […], amounts to reading additional features and limitations into Claim 1, not explicitly specified as such in Claim 1, but presented as features of a particular embodiment of the alleged invention only in the description, in order to avoid an objection of lack of novelty. This improper claim interpretation is not allowable, as established in the case law (supra) (C.II.B.5.3.4, for instance with reference to T 939/99 and T 681/01). 1199 | 3398
T 768/08 – Lethal Process
K’s Law – The ebook
[5.7] Also, in the present case, although the silicones themselves are polymers, the clarity of the definition at issue relates to the way of blending and emulsifying them, for the purpose of cosmetic preparations, not to their structure, however complex it may be. Cosmetic preparations containing emulsified silicones are well known, as apparent from the prior art cited in the search report, in particular from D3 mentioned in the decision under appeal. In this field, the emulsions and compositions are normally defined by their structure and properties. Hence, already for those reasons, a product-by-process definition is likely to render difficult any comparison with the prior art. In fact, as shown by the file history of the present case, despite the comparative tests provided, the crux of the decision under appeal still lies in the difficulty of assessing novelty over the prior art, e.g. D3. [5.8] Above all, in the present case, the claimed composition, in particular its internal phase, can be defined structurally by reference to the constitution of each of the droplets, as illustrated in the description of the application as filed […], in order to make clear where the alleged distinctions from the prior art lie. For this very reason Claim 1 must be refused for lack of clarity under A 84, in compliance with the second requirement set by T 150/82. [5.9] In view of this decision, the further objections under A 84 raised by the Board need not be pursued in the present decision. [5.10] As apparent from the foregoing, Claim 1 lacks any process features relating to the steps of pre-blending and homogenising the silicones before emulsifying them in form of an aqueous emulsion. Hence, even if a product-by-process definition were the only way of defining the composition, the question whether that lack of definition of essential steps inevitably led to the claimed product, i.e. whether Claim 1 lacks clarity under A 84, would arise. However, still in view of the above decision, this question also need not be dealt with. [5.11] Therefore, the sole claims request maintained by the appellants is not acceptable. […] The appeal is dismissed. If I understand this correctly, whenever the invention has been described via process features although a structural description was possible, the claim has to be refused for lack of clarity, even if the process features as such are perfectly clear. In T 2019/09, Board 3.3.01 had come to the same conclusion not long ago (cf. the corresponding post on this blog). As a corollary, if such a claim is granted, it should not be possible to raise this objection in an opposition. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 970/10 – Errare Inquisitorium Est
K’s Law – The ebook
T 970/10 – Errare Inquisitorium Est 26 Jun 2012
Sometimes Examiners err. Which does not mean that they necessarily commit a substantial procedural violation when doing so. Inventive step [1] The Examining Division (ED) based its reasoning on the disclosure of, inter alia, document D4. However, this document is dated September 2006 which is after the filing date of the present application (26 April 2006). Document D4 is consequently not prior art within the meaning of A 54(2) and hence not relevant to inventive step (A 56); nor is there any suggestion that D4 discloses subject-matter well-known to the skilled person at the filing date of the application. The objection of lack of inventive step was therefore, prima facie, ill-founded. As this was the ground leading to refusal of the application, the decision under appeal has to be set aside. […] Reimbursement of the appeal fee [4.1] An incorrect assessment of a document with regard to its date of availability to the public relates to a factual error in respect of the substantive requirements to be met by the “state of the art” in accordance with A 54(2) (which is included in Part II of the EPC, “Substantive Patent Law”), and not to an error in respect of procedural law. Such an error therefore does not amount to a substantial procedural violation. [4.2] The appellant argued that the citing of documents which are not part of the state of the art under A 54(2) was a procedural violation, as it was contrary to the correct procedure for performing examination under A 94, or for drawing up a search report under R 61. [4.3] However the board notes that the procedure followed by the ED apparently fully complied with A 94, or A 96 EPC 1973, in that the ED examined whether the European patent application met the requirements of the EPC, determined that the application or the invention to which it relates did not meet the requirements of the EPC, and invited the applicant to file his observations. One of the purposes of the procedure set out in A 94 is in fact to provide the applicant with the opportunity to point out exactly the kind of substantive error committed by the ED. [4.4] With regard to R 61 (cf. R 44 EPC 1973), this concerns the content of the European search report. If the search report putatively contained an error of fact regarding a document’s date of availability to the public (although in the present case the content of the search report is not relevant as documents D4 and D5 were not mentioned in the European search report) this would also be a substantive rather than a procedural matter. [4.5] In accordance with R 103(1)(a), “the appeal fee shall be reimbursed ... if such reimbursement is equitable by reason of a substantial procedural violation”. As there was no substantial procedural violation, this request is refused. Should you wish to download the whole decision, just click here. The
file
wrapper
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NB: A French summary can be found on Le blog du droit européen des brevets.
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found
here.
T 383/11 – No Free Hand
K’s Law – The ebook
T 383/11 – No Free Hand 25 Jun 2012
In this case there was a first appeal after the Opposition Division (OD) had maintained the opposed patent in amended form. The Board found the main request and the first two auxiliary requests not to comply with the requirements of A 123(2) remitted the case for further processing on the basis of the third auxiliary request on file (T 911/06; also reported on this blog). After remittal the proprietor filed a new main request and four auxiliary requests. Subsequently, in oral proceedings (OPs), the proprietor withdrew the first and second auxiliary requests and renumbered the third and fourth requests as first and second requests. Claim 1 of the second auxiliary request (after renumbering) corresponded to claim 1 of the third auxiliary request that had been the subject of the Board's decision on the first appeal. The OD finally revoked the patent for lack of novelty. The proprietor appealed against this second decision and, with the grounds for appeal, submitted a main request and first and second auxiliary requests, which corresponded to those which were the subject of the OD’s second decision. The second decision of the Board, wherein the Board finally maintained the patent in amended form, contains an interesting passage on the admissibility of the main and first auxiliary requests on file. [1.1] The Boards of Appeal have derived, in particular from R 79(1), the principle that the proprietor does not have a right to have amendments admitted at any stage of opposition proceedings. At the discretion of the OD or the Board of Appeal, amendments can be refused if they are neither appropriate nor necessary (see case law of the Boards of Appeal, 6th edition 2010, VII.D.4.1.2, second paragraph). [1.2] In its decision on the first appeal (T 911/06), the Board found that the main request and first auxiliary request valid at that time offended A 123(2) (see T 911/06 [7-8]) and that the patent as granted and the second auxiliary request valid at that time offended A 83 (see T 911/06 [4,9]). Considering the third auxiliary request valid at that time, the Board held that the amendments made to claim 1 did not introduce subject-matter that extended beyond the content of the application as filed (see point [10]) and that they restricted the scope of the claim in such a way that the insufficiency of disclosure that had been identified in respect of claim 1 as granted no longer existed (see point [11]). Hence, the Board passed judgement on the then third auxiliary request at least as regards A 123(2) and A 83. In point [12] of the reasons for the decision, entitled “Remittal to the first instance for further prosecution”, the Board decided to remit the case to the department of first instance for further prosecution, noting in particular that the amendments made according to claim 1 of the third auxiliary request and the attempt to introduce into the proceedings a new document (D8: “Variable speed diesel power generation design issues” by Anthony L. Rogers, UMI Number 9639021, Copyright 1996) had created an entirely new situation that had not been considered in the contested [first] decision. It is evident from this reasoning that for the Board the purpose of the remittal was to allow further prosecution on the basis of the new situation that had been instrumental in bringing it about. In other words, the third auxiliary request was to be the basis for the further prosecution, taking due account of the Board’s judgement on the issues of A 123(2) and A 83. [1.3] In the post-remittal proceedings before the OD, the proprietor introduced a new main request and a new first auxiliary request (filed as main request and third auxiliary request with letter dated 7 September 2010). These requests correspond to the present main request and first auxiliary request. Claim 1 of each of these two requests has been broadened in scope with respect to claim 1 of the third auxiliary request upon which the remittal had been obtained.
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T 383/11 – No Free Hand
K’s Law – The ebook
The OD admitted these new requests into the opposition procedure and examined them, finding inter alia that the new main request met the requirements of A 123(2) and A 83 […] and that the new first auxiliary request met the requirements of A 123(2) […]. It is evident from the fact that the OD carried out an examination of the new main request and first auxiliary request for the requirements of A 123(2) and A 83 , that by admitting these new requests, the examination had to be re-opened on issues which had already been judged upon in the first appeal proceedings in respect of the request that led to the remittal. [1.4] It cannot be the purpose of a remittal to the department of first instance to give the proprietor a free hand to redefine the claimed invention and have the examination start afresh, as that would have the effect of allowing the proprietor to restart the discussion of issues that had been settled by the appeal, even when no new situation has arisen that might justify amending the claims. Furthermore, the overall duration of further opposition and possibly further appeal proceedings after remittal would be likely to severely impair the legitimate interests of the other party and of the general public in having some degree of legal certainty about the existence and scope of the European patent within a reasonable time span. To avoid these problems, the prosecution of the case after remittal must in some way follow on from the situation that existed at the end of the appeal procedure, and that led to the remittal. In conclusion, the Board holds that in the present case, where after remittal the proprietor filed new requests which required examination to be re-opened on issues that had already been judged upon by the Board of Appeal, without the justification that might be provided, for example, by the proprietor being faced with a new situation, then such requests should be deemed to be inadmissible. Thus, the Board decided to disregard the appellant’s main request and first auxiliary request. [1.5] For the sake of completeness, the Board notes that this decision is in line with decision T 796/02, which was relied upon by the opponent in his submission that the filing of the new main request of 7 September 2010 constituted an abuse of procedure. In that case, the patentee, in a first appeal, had obtained a remittal to the OD on the basis of a request which contained a feature (g) that was defined in relatively narrow terms. Subsequently, in the second proceedings before the OD, the patentee sought to introduce a request in which the feature (g) was more broadly defined (see point [7]). Requests comprising the more generally defined feature (g) had already been filed during the first appeal procedure, but had been withdrawn. The Board held that by withholding the broader requests for tactical reasons, the patentee had deprived the competent Board of an opportunity to decide thereon. Furthermore, the Board held that as a direct result of the patentee’s own tactical choice, the matter of the appeal proceedings had been limited from the broader version of the claims to a much more restricted subject-matter by limiting the feature (g). The present case differs from that underlying T 796/02 in that during the first appeal the proprietor did not withdraw any requests which correspond to the present main request and first auxiliary request. However, the proprietor did file various requests in preparation for OPs (i.e. the main request and first to seventh auxiliary requests of 9 October 2009). These requests were filed in response to the communication of the Board dated 27 August 2009 in which the Board informed the parties: “granted claim 1 covers cases where the controllable source is controlled in response to the current of the intermediate DC output, or in response to the voltage (independently from the current) of the controllable source. It is not clear to the board whether these claimed alternatives are sufficiently disclosed in the patent” […] Thus, the proprietor had at least the opportunity during the first appeal to amend his case as he wished to meet the objection that eventually led to the decision of the Board in the first appeal that the requirement of sufficiency of disclosure (A 83) was not met by claim 1 as granted and that this insufficiency of disclosure no longer existed in claim 1 of the then third auxiliary request (corresponding to the present second auxiliary request) (see T 911/06 [4.4-5,11]). In this way, the Board considers that as a direct result of the proprietor’s own informed choice, the matter, following the first appeal proceedings, was limited from the broader version of the claims (claim 1 as granted) to a more restricted subject-matter by the limiting features added to claim 1 in the third auxiliary request, on the basis of which remittal was obtained. The board considers that in such circumstances it would not be justified to admit requests that are broader than the third auxiliary request and that could have been presented before the conclusion of the first appeal proceedings. 1203 | 3398
T 383/11 – No Free Hand
K’s Law – The ebook
Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1204 | 3398
T 1644/07 – A Problematic Extraction
K’s Law – The ebook
T 1644/07 – A Problematic Extraction 23 Jun 2012
In T 201/83, it was said that “[a]n amendment of a concentration range in a claim for a mixture, such as an alloy, is allowable on the basis of a particular value described in a specific example, provided the skilled man could have readily recognised this value as not so closely associated with the other features of the example as to determine the effect of that embodiment of the invention as a whole in a unique manner and to a significant degree”. The present decision gives an example where this condition was not fulfilled. All the parties appealed against the maintenance of the opposed patent in amended form. The decision contains an interesting discussion on whether the main request before the Board complied with the requirements of A 123(2). Claim 1 of this request read (in English translation; my emphasis): Pulverulent polymerisate which has been post-crosslinked at the surface, which absorbs water or aqueous fluids and which is composed of polymerised, possibly pre-crosslinked monomers containing partially neutralised carboxyl groups, characterised in that the pulverulent polymerisate has been reacted following the post-crosslinking with an Aluminium sulphate of [sic], wherein the concentration of the Aluminium sulphate in the solution lies between 25.86 and 80 wt.%, calculated in anhydrous form(wasserfrei berechnet). *** Translation of the German original *** [2] The issue that has been debated in view of A 123(2) concerns the basis for the boundaries of the numerical range of the feature “wherein the concentration of the Aluminium sulphate in the solution lies between 25.86 and 80 wt.%, calculated in anhydrous form” in the characterising part of claim 1. [2.1] The question to be answered in this context is whether the numerical value calculated from the indications given in Example 20 can be generalised and applied as the lower limit for the concentration range over the whole breadth of the subject-matter of the claim. As a matter of fact, the Examples all dealt with the treatment of some specific polymerisates based on acrylic acid. [2.2] It is true that the salt concentration of the salt solution used for the post-treatment of the polymerisate is an important parameter, but is only meaningful when seen together with the quantity of solution in relation to the polymerisate. Moreover, the nature of the polymerisate, the nature of the post-crosslinking and its degree of crosslinking as well as the portion of fine particles (Feinteilchen) and the absorption speed (Aufnahmegeschwindigkeit) of the water, which is related to the latter, play an essential role. For the sake of completeness, [the Board] refers to the statement in the paragraph bridging pages 2 and 3, according to which the abrasion of polymerisate particles, i.e. fine dust, in particular impairs the ability of a swollen absorber gel to transport further liquid (so-called “gel blocking”). The Board is of the opinion that this holds true in a general way for all such polymerisates, all the more as no explanations contradicting this [view] have been put forth. These statements can be summarised [by saying] that in such a system there is a great number of interactions as a consequence of which the generalisation of such a particular value for the salt concentration over the whole breath of the claims is inadmissible. [2.3] In other words, it cannot be asserted that the numerical value “25.68 wt.%” in Example 20 is independent of the other boundary conditions mentioned in this Example. As a consequence, the numerical value does not fulfil the criteria that apply to the admissibility of the generalisation of this value and its use as boundary in the independent claims that extend far beyond the Example. Concerning these criteria, [the Board] refers to decision T 201/83. Therefore, the lower boundary of 25.68 wt.% for the concentration range introduced into claims 1 and 5 has to be considered not to be directly and unambiguously disclosed in the original documents. [2.4] For this reason alone, the main request […] is not allowable because it violates the requirements of A 123(2) as a result of the new definition of the concentration range. As a consequence, it is not necessary to deal with the arguments concerning the upper boundary of the range. 1205 | 3398
T 1644/07 – A Problematic Extraction
K’s Law – The ebook
[2.5] Therefore, the main request is dismissed. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 134/10 – Small Change, Big Effect
K’s Law – The ebook
T 134/10 – Small Change, Big Effect 22 Jun 2012
No reader of the case law of the Boards of appeal can ignore that clarity is not a ground for opposition but that clarity objections may be raised against claims that have been amended during opposition (appeal) proceedings, if the lack of clarity arises from the amendment. Sometimes even apparently minor amendments can open the door to clarity objections, as the present decision shows. Here the opponent filed an appeal against the decision to maintain the opposed patent in amended form. Claim 1 of the main request before the Board was directed to a pearlized cleansing composition for personal care consisting of ingredients (a) to (h). Ingredient (g) was defined to be “optionally, one or more members selected from the group consisting of an effective amount of a pH modifying agent; an effective amount of a viscosity modifying agent; an effective amount of a preservative; fragrance; and a coloring agent”. The opponent argued that in a claim directed to a composition of matter and drafted with an open wording of the type “composition comprising ...”, additional not specifically listed ingredients could still be comprised in the claimed composition; consequently, the exact assessment of the range of compounds falling under the definition of classes of ingredients which are optional according to the wording of the claim was not relevant for determining which compositions were excluded from the extent of the claim; to the contrary, a closed wording of the type “composition consisting of ...” did not allow the presence of additional not specifically mentioned ingredients; therefore, in such a case the extent of all the classes of components listed, including optional ones, had to be clear in order to enable the skilled person to recognise the limits of the claimed composition. The change from the open wording of claim 1 as granted to the closed wording of claim 1 according to the main request rendered necessary the interpretation of the meaning of the optional ingredient (g); therefore, objections to the clarity of this ingredient (g) arising from the amendments to the granted claim had to be allowed. In claim 1 the optional component (g) included some functionally defined classes of compounds, the meaning of which was not explained in the patent in suit; therefore, it was not clear which range of compounds was encompassed by the wording “an effective amount of a viscosity modifying agent”, which could theoretically include a multitude of very different ingredients having more than one possible functional activity; therefore, it was not possible for the skilled person to assess exactly the extent of the claimed composition. The patent proprietor argued that the wording of component (g) had remained unchanged with respect to that of the granted claim 1; therefore, its clarity could not be challenged. Moreover, the classes of compounds listed as optional component (g) were well known to the skilled person and some suitable compounds were listed in the description of the patent in suit; therefore, claim 1 was clear. The Board found the opponent’s arguments more persuasive: [1.1] Lack of clarity is not itself a ground for opposition and according to the established jurisprudence of the Boards of Appeal of the EPO objections to the clarity of claims are only allowable if they arise in relation to the amendments made (see Case Law of the Boards of Appeal of the EPO, 6th edition, 2010, point VII.D.4.1.4 […], as well as point VII.D.4.2 […]). In the present case the [opponent] raised inter alia an objection as to the clarity of component (g) of claim 1 which reads: “(g) optionally, one or more members selected from the group consisting of an effective amount of a pH modifying agent; an effective amount of a viscosity modifying agent; an effective amount of a preservative; fragrance; and a coloring agent”. Even though the wording of component (g) has remained identical to that contained in the granted claim 1, the amendment of granted claim 1 from the open wording “A pearlized cleansing composition for personal care comprising ...” into the closed wording “A pearlized cleansing composition for personal care consisting of ...” has rendered, in the [opponent]’s view, the limits of the claim unclear insofar as component (g) is concerned. Therefore, the objection to the clarity of the claim should be allowed. 1207 | 3398
T 134/10 – Small Change, Big Effect
K’s Law – The ebook
[1.2] It is undisputed that the closed wording of claim 1 according to the main request implies that only the components specifically listed in the claim can be contained in the pearlized cleansing composition. Therefore, also the meaning of the optional component (g) is essential for defining the limits of the claimed composition and for knowing which compositions are not encompassed by the wording of the claim. To the contrary, the granted claim 1, because of its open wording, implied that additional amounts of unspecified ingredients suitable for use in a pearlized cleansing composition could still be included in the claimed composition. Consequently, the extent of the optional component (g) was not important for defining the limits of the claimed composition. In fact, even though the skilled person would have been uncertain if a certain amount of a compound X could fall under the definition of component (g), the open wording of the claim would have allowed anyway the presence of such a compound X as additional ingredient not specifically listed in the claim and there would have been no doubts upon the exact extent of the subject-matter covered by the claim. Hence, even though the wording of component (g) has not been modified with respect to that of the granted claim 1, the amendment to the granted claim from an open wording to a closed one has in the present case an influence on the assessment of the extent of the claim insofar as component (g) is concerned. Therefore, the possible unclarity originates from this amendment and the objection raised by the [opponent] as to the clarity of claim 1 with regard to component (g) is allowable. [1.3] It is established jurisprudence of the Boards of the Appeal of the EPO that, in order to insure legal certainty, a claim must clearly define the matter for which protection is sought (see T 728/98 [3.1] as well as T 337/95 [2.2-5]). Insofar as component (g) is concerned, claim 1 according to the main request requires, for example, the optional presence of “an effective amount of a viscosity modifying agent”. Therefore, the principle of legal certainty requires the identification of the meaning of the above mentioned technical feature in order to establish without any doubt the subject-matter covered by the claim. The description of the patent in suit does not contain any specific definition for the term “viscosity modifying agent” and for its “effective amount” and reports only two examples of viscosity modifiers, sodium chloride and sodium cumene sulphonate, and some preferred concentrations (see paragraph 27). Moreover, the Board remarks that many ingredients, which are theoretically able to modify the viscosity of a composition, can have in the same composition also other different functions. In fact, as discussed in the oral proceedings, behenyl alcohol, which is component (b) of claim 1, is a pearlizing agent but also increases the viscosity of the composition and sodium chloride, one of the two viscosity modifying agents specifically cited in the patent in suit, is also well known as electrolyte. Furthermore, solvents such as water or ethanol could also be considered as viscosity modifiers because of their solubilising properties. From the above considerations it results that, in the absence of a specific teaching in the patent in suit which would suggest to the skilled person which compounds should be intended as “viscosity modifying agents” and which not, the labelling of an optional component as a “viscosity modifying agent”, which is essential for establishing the limits of the extent of the claim, is arbitrary and depends on the mental label the user wishes to apply to a specific ingredient (see, for example, T 586/97 [4.1.2.2]). Therefore, a composition comprising an ingredient X, which would be part of the extent of the claim if it is added in virtue of its ability to modify the viscosity, would fall outside the extent of the claim if the viscosity of the composition is modified by other components and the ingredient X is included for another purpose, for example as an electrolyte. Consequently, the functionally defined class of compounds “viscosity modifying agent” does not identify clearly and unambiguously a limited range of ingredients. Moreover, the unclarity of the exact limitation conferred to the claim by the wording of this specific component (g) is increased by the requirement of the claim to comprise “an effective amount” of such an ingredient; in fact, the meaning of “effective amount” is not specified in the patent in suit and, for example, the amount of a component X, necessary for modifying the viscosity of the composition, will depend on the other components present in the composition and could be different for any compound and any composition.
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T 134/10 – Small Change, Big Effect
K’s Law – The ebook
The Board thus concludes that the wording of claim 1, for the reasons mentioned above, does not allow the skilled person to recognize with certainty which compositions are included and which are excluded from the extent of the claim. Claim 1 thus lacks clarity. The patent was finally revoked. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1209 | 3398
T 1140/09 – Let’s Not Be Too Strict
K’s Law – The ebook
T 1140/09 – Let’s Not Be Too Strict 21 Jun 2012
This is an appeal of the opponents against the maintenance of the opposed patent in amended form. One of the crucial issues was whether brochure E3 had been made available to the public. [3.1] Document E3 is a brochure relating to a “Post Identification System”, in short named “PIDSY”, for identifying the person who deposited a bank note at a cash machine after the bank note has been determined as a counterfeit bank note at the central bank. The brochure relates to the own commercial product of [opponent 1] with the purpose of informing potential customers of this latest development. The board was able to ascertain that the original brochure E3, which was submitted during oral proceedings before the board, corresponded to the copy submitted with the notice of opposition. The text of document E3 is uncontested. [3.2] However, the [patent proprietor] argued that it had not been shown by [opponent 1] “beyond reasonable doubt” that document E3 had been made available to the public. It is established jurisprudence of the boards of appeal that information is available to the public if only a single member of the public is in a position to gain access to it and understand it, and if this member of the public is under no obligation to maintain secrecy (see Case Law of the Boards of Appeal of the EPO, 6th Edition 2010, section I.C.1.8.8). Whether or not a member of the public has actually accessed the information is irrelevant (see T 84/83 [2.4.2]). As regards the standard of proof, according to established jurisprudence of the boards of appeal, it is generally the “balance of probabilities” (see Case Law of the Boards of Appeal of the EPO, 6th Edition 2010, section VI.H.4.3). Although earlier decisions have applied the standard “beyond reasonable doubt” or “up to the hilt” for alleged public prior use, the standard of proof for the public availability of commercial brochures applied by the boards, even in their recent decisions, is the less strict standard of “balance of probabilities” (see T 743/89 and T 804/05). In view of the above the board considers the “balance of probabilities” to be the proper standard of proof to be applied for the question of the public availability of document E3. However, the board finds for the reasons given below that the evidence presented by [opponent 1] is such that it would also meet the stricter standard of proof as proposed by the [patent proprietor], i.e. that the evidence would also prove the public availability of document E3 beyond reasonable doubt. [3.3] In the board’s view it is clear that the designation “PIDSY” refers to one and the same system. There is no indication in document E3 that the system described in that document was an improvement of an earlier similar system. Rather, the system is apparently a new development which is intended to achieve compliance with the Council Regulation (EC) No 1338/2001 as well as the ECB framework agreement concerning cash recycling machines. Furthermore, a version number of the system is indicated neither in document E3 nor in any one of the other documents E5-E13 relating to that document. In each of these documents merely the acronym “PIDSY” is used, sometimes supplemented by an indication that it is a registered trade mark. Moreover, the indication in documents E10 and E11 that they concern a 4-page document is consistent with the number of pages of E3. The board is therefore satisfied that the invoices E10 and E11 concern the drawing up and printing, respectively, of the brochure E3. [3.4] Appellant I alleged that E3 had been distributed to visitors of its booth at CeBIT 2003 and thereby been made available to the public before the priority date of the opposed patent.
1210 | 3398
T 1140/09 – Let’s Not Be Too Strict
K’s Law – The ebook
CeBIT is well-known to be one of the largest industrial fairs in the area of information technology. It goes without saying that it was in the own interest of [opponent 1] to inform as many potential customers as possible of the new product “PIDSY”, especially at an important industrial fair such as CeBIT 2003 at which many business deals are closed. Appellant I therefore had a strong interest that the brochure E3 would be available at the fair for distribution to visitors of its booth. Hence it would be implausible under these circumstances to assume any obligation of secrecy. The invoice E11 contains details like colours, format, and paper related to the printing of the brochure E3. Furthermore, it is indicated in E11 that 1650 copies were delivered (“geliefert”), of which 100 to the industrial fair CeBIT (“Messe CeBIT”), and that the costs of transport to that fair would be invoiced separately. In 2003 CeBIT took place from 12.03.2003 until 19.03.2003. The date 19.03.2003 of the invoice E11 is therefore consistent with the stated delivery to the fair. In view of the above the board is satisfied that the brochure E3 was made available to the public at CeBIT 2003. [3.5] Furthermore, in the present case there is a period of about 3 months between the delivery of the brochure E3 to [opponent 1] and the priority date 17.06.2003 of the opposed patent. It was clearly in the interest of [opponent 1] to disseminate the brochure E3 as widely as possible. The time following CeBIT 2003 falls into the period mentioned above. The board is convinced that during this period visitors of CeBIT 2003 who were not given a copy of E3 at the booth of [opponent 1] because of the limited number of copies available, received such a copy, e.g. by sending one of the 1550 copies received from the printing company (see invoice E11) by mail or by electronic transmission. Such electronic transmission is consistent with document E5 which shows the printout of an e-mail transmitting during the above period, namely on 11.04.2003, a PDF document comprising the string “BR_PIDSY_mar03_D” also appearing on the last page of the brochure E3 itself. In view of the above the board is satisfied that the brochure E3 was also sent to potential customers before the priority date of the opposed patent. [3.6] Since the brochure E3 has been made available to the public before the priority date of the patent in suit, it is regarded as state of the art within the meaning of Article 54(2) EPC 1973. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1211 | 3398
T 1751/07 – Not Clear-Cut Enough
K’s Law – The ebook
T 1751/07 – Not Clear-Cut Enough 20 Jun 2012
This appeal was filed against the refusal of the application under consideration by the Examining Division. Few days before the oral proceedings before the Board, the appellant requested that another company be registered as the proprietor of the application. Unfortunately, this document is not available for file inspection. A signed authorisation for the (same) attorney was filed simultaneously. The Board found the evidence for the transfer to be insufficient: [2] According to the jurisprudence of the boards of appeal, assessing whether there are documents satisfying the EPO that a transfer has taken place in accordance with R 22(1) and (3) and making the entry in the register is the responsibility of the relevant department of first instance. Accordingly, in appeal proceedings, substitution of another party for the original applicant is possible only once the relevant department of first instance has made the entry or where there is clear-cut evidence of a transfer (J 26/95 [2]). The documents produced with letter dated 23 April 2012 do not constitute clear-cut evidence of a transfer. They only created the obligation to assign rights, and did not constitute the assignment itself. The effective date of the assignment and possible conditions to be fulfilled before the assignment becomes effective cannot be inferred from the document produced. Thus, the board was not in a position to replace the party shown in the register as proprietor of the application at the date on which the notice of appeal had been filed, and the representative therefore spoke in the name of that company. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1212 | 3398
T 2334/11 – Expect The Unexpected
K’s Law – The ebook
T 2334/11 – Expect The Unexpected 19 Jun 2012
This is an appeal against the refusal of the application under consideration by the Examining Division (ED). Claim 1 of the main request read (in English translation): Device for detecting radiation signals comprising a first detector (5a), a second detector (5b), a first filter (11a) and a second filter (11b), wherein
the first and second detectors (5a, 5b) are provided on a first chip (1) and the first and second filters (11a, 11b) are provided on a second chip (2), and the first chip (1) and the second chip (2) are connected together in a hermetically sealed manner, in particular by means of a wafer-bonding process,
characterised in that a heating element (Heizleiter) for carrying out a self-test of the detectors is provided in the area of the detectors (5a, 5b). The ED had justified the refusal by pointing out that the amended claims were not admissible because they did not comply with R 137(5) [according to which amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept, nor to subject-matter not searched in accordance with R 62a or R 63]. The Board did not consider this objection to be justified: *** Translation of the German original *** Main request [2.1] The preamble of claim 1 according to the main request, which is identical with the main request on which the decision was based, corresponds – apart from minor linguistic amendments – to claim 1 of the originally published version (hereinafter “original claim 1”). In the course of the examining proceedings, original claim 1 was completed by adding the feature forming the characterising portion of the claim on file, according to which a heating element for carrying out a self-test of the detectors is provided in the area of the detectors. The characterising feature of claim 1 is supported by the description of the application as published […] within the meaning of A 123(2) and is – as correctly stated by the ED in its decision – only disclosed in the description and not in the features of the claims in the published version. [2.2] In its decision the ED has expressed the opinion that the amendment of claim 1 explained above did not comply with the requirements of R 137(5), so that the amended claim according to the main request was not admitted pursuant to R 137(5). R 137(5) provides that amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept. In the present case, the Board cannot endorse the application of R 137(5) by the ED, for the following reasons: [2.2.1] First of all, the application of R 137(5) requires that the claims as amended relate to unsearched subjectmatter. Even if the impugned decision does not state expressis verbis why the ED considered the subject-matter of amended claim 1 to be unsearched, the explanations offered in the reasons for the decision clearly show that the ED based its reasoning on the fact that the characterising feature of the claim was taken from the description and was not contained in the original claims, on which the search was based, so that – from the point of view of the ED – the amended subject-matter was not covered by the extent of the search.
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T 2334/11 – Expect The Unexpected
K’s Law – The ebook
However, that a feature has not been searched does not necessarily follow from the mere fact that a feature of was not contained in the request on which the search was based (cf. T 708/00 [4], T 377/01[3.1] and T 789/07 [5.2]). A 92(1) EPC 1973 – which was applicable at the time of the search (in the case of an international application, together with A 157 EPC 1973) – requires that the European search report be drawn up “on the basis of the claims, with due regard to the description and any drawings”, and the Guidelines for examination in the EPO – both in the then applicable and in the present version – explain that “[i]n principle […] the search should cover the entire subject-matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended” (Guidelines, B-III 3.5) In the present case original claim 1 was directed at a device for detecting radiation signals comprising two detectors on a first chip and two filters provided on a second chip, wherein the first chip and the second chip are connected together in a hermetically sealed manner (see the preamble of present claim 1) and the pending amended claim, in addition of the features of original claim 1, further contains the feature that a heating element for carrying out a self-test of the detectors is provided in the area of the detectors (see the characterising part of present claim 1). The passage […] of the description on which the characterising feature of amended claim 1 is based reads as follows: “According to the invention, a heating element is also provided in the area of the detectors 5a, 5b. […] Such a heating element is provided in a device according to the invention so as to allow for a self-test of the sensor or the device, respectively. The heating element creates a short-time heat pulse on the thermally decoupled surface of the detector 5a, 5b.” One can see from these explanations in the description that the performance of a self-test of the detectors by means of a heating element provided in the area of the detectors is directly linked to the originally disclosed invention and indeed corresponds to a particular embodiment or development of the detector device defined in original claim 1, and in particular of its detector arrangement, and that this embodiment or development was clearly disclosed as such in the description. It follows that at the time of the search, taking due regard of the description, it was reasonable to assume – and in view of the prior art classified under category “X” (i.e. “particularly relevant”) for all claims, even to expect – that the claimed subject-matter could be directed to such a particular embodiment or development after an amendment, so that the search should have encompassed subject-matter amended accordingly. It follows that – in the Board’s opinion – the subject-matter of the amended claim has to be considered to have been searched within the meaning of R 137(5), even if the feature added to the claim de facto has not been searched – as the ED believes (cf. T 789/07 [9,12]). For this reason alone, the Board cannot endorse the application of R 137(5) by the ED. [2.2.2] When examining the second requirement laid down in R 137(5) the ED has inter alia expressed the opinion that the subject-matter of original claim 1 was not novel over document US-A-5721430 and that, as a consequence, the subject-matter of original claim 1 did not contain “any particular technical features” and that the particular technical feature of amended claim 1 did not correspond to any of the particular technical features of the originally filed dependent claims and solved a technical problem that was completely independent from the problems solved by the original claims, so that the subject-matter of amended claim 1 did not combine with the originally claimed invention to form a single general inventive concept. However, the Board cannot endorse this approach because when an original claim is amended by adding a feature, in principle it has to be examined when R 137(5) is applied whether the added feature can be subordinated (unterordnen) to the original general inventive concept as it emerges from the originally filed claims and the description (see T 1640/07 [5]), and not – as assumed by the ED – whether the originally claimed subject-matter and the subject-matter as defined in the amended claim could bear up against an a posteriori assessment of unity of invention (cf. T 708/00 [5-8, 16] and T 274/03 [6]). If such an a posteriori approach (i.e. an approach taking into account the patentability of the originally claimed subject-matter with respect to the prior art found through the search) were to be used when R 137(5) is applied, this would result in a situation where, when, for instance, original claim 1 is not novel with respect to the prior art – as was the opinion of the ED in the present case – any limitation of the originally claimed subject-matter on the basis of an unsearched feature would have to be objected to immediately because the lack of novelty of original claim 1 inevitably would make it impossible to establish an inventive concept connecting the amended claim and the originally claimed invention. However, according to the established case law of the Board of appeal this would neither make sense nor would the intended purpose of R 137(5) be served (cf. T 708/00 [4-8, 16], T 274/03 [4-6], T 915/03 [4], T 141/04 [5.2-3], und T 1394/04 [4]). Rather, the case law concerning the applicability of R 137(5) (former R 137(4) and R 86(4) EPC 1973], respectively) has inter aliafollowed (sich orientieren an) [the approach according to which] although amendments of claimed subject-matter which considerably alter the 1214 | 3398
T 2334/11 – Expect The Unexpected
K’s Law – The ebook
essence or nature (das Wesen oder die Natur) of the invention – in particular by replacing or omitting claim features (see T 442/95 [5] and T 274/07 [3] – may give rise to objections under R 137(5), the mere limitation or specification (Konkretisierung) or completion of a claim via the insertion of a feature disclosed in the originally filed application – e.g. in order to overcome an objection of lack of clarity or novelty or inventive step – do not, as a rule, lead to a lack of unity with the originally claimed invention within the meaning of R 137(5) (cf. T 708/00 [17], T 377/01 [3.1], T 274/03[5-6], T 915/03 [4.1], T 141/04 [5.4-6], T 978/04 [3.3-4], T 1394/04[3-7], T 372/05 [2.2], T 1719/06 [3] and T 264/09 [4.2]; see also the Guidelines, C-VI 5.2-ii), first §). In the present case the feature that has been added to the claim is not a feature that alters the essence or the nature of the originally claimed invention but – as already explained under [2.2.1] above – a limitation of the originally claimed subject-matter to a particular embodiment or a development, respectively, of the detection device defined in claim 1, and in particular its detector arrangement, which had already been disclosed as such in the description and which can clearly be subordinated to the original general inventive concept disclosed in the originally filed application. [2.3] Therefore, the Board comes to the conclusion that amended claim 1 according to the main request does not fulfil either condition required for the application of R 137(5) and that, as a consequence, the refusal to admit the amended claims according to the main request pursuant to R 137(5) was unjustified. […] First auxiliary request Claim 1 according to the first auxiliary request has been completed by the addition of the feature of original dependent claim 7 (according to which the device for detecting radiation signals is provided in a device for measuring the concentration of a substance in the optical path of a radiation source) to claim 1 of the main request. In its decision the ED expressed the opinion that amended claim 1 according to the first auxiliary request could not be admitted pursuant to R 137(5), for the same reasons as given for the main request. As already explained under [2] above, the Board is of the opinion that the refusal to admit the amended claims according to the main request under R 137(5) was unjustified. The fact that claim 1 according to the first auxiliary request now contains the feature of original dependent claim 7 does not change this conclusion. It follows that the refusal to admit the amended claims according to the first auxiliary request under R 137(5) was unjustified, too. [4] It follows from what has been said above that the decision of the ED has to be set aside. However, as the amended claims according to the main and auxiliary request have not been the object of substantial examination – and might require a supplementary search (cf. T 274/03[6], T 141/04 [6] and T 789/07 [12], as well as the Guidelines, C-VI 5.2-ii) first §) – it is appropriate to grant the request of the appellant and remit the case to the ED for further prosecution. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
1215 | 3398
T 1993/07 – Divergence
K’s Law – The ebook
T 1993/07 – Divergence 18 Jun 2012
This decision deals with appeals against the maintenance of the opposed patent in amended form. Claim 1 of the main request (patent as granted) read: 1. A process for producing polymer from a polymerization slurry in a loop reactor operating at a space time yield greater than 2.6 lbs/hr-gal (8.65 x 10-5 kg s-1dm-3) which comprises the steps of :
forming the polymer in the polymerization slurry, wherein the polymerization slurry comprises a liquid medium and solids; continuously discharging the polymerization slurry through a discharge valve into a first transfer conduit, the polymerization slurry after discharge referred to as a polymerization effluent; heating the polymerization effluent in said first transfer conduit to a temperature below the fusion temperature of the polymer; communicating said polymerization effluent through said first transfer conduit to a first flash tank wherein the pressure in said first flash tank and the temperature of said heated polymerization effluent are such as to produce a vapor from about 50% to about 100% of the liquid medium; condensing the vapor obtained in the first flash step by heat exchange; discharging from said first flash tank polymer solids to a second flash tank through a seal chamber of sufficient dimension such as to maintain a volume of polymer solids in the said seal chamber sufficient to maintain a pressure seal; communicating the polymer solids to a second flash tank; exposing the polymer solids to a pressure reduction from a higher pressure in the first flash tank to a lower pressure in said second flash; and discharging the polymer solids from said second flash tank.
Claim 1 as held allowable by the Opposition Division (OD) read: 1. A process for producing polymer from a polymerization slurry in a loop reactor operating at a space time yield greater than 2.6 lbs/hr-gal (8.65 x 10-5 kg s-1dm-3) which comprises the steps of :
forming the polymer in the polymerization slurry, wherein the polymerization slurry comprises a liquid medium and solids; continuously discharging the polymerization slurry through a discharge valve into a first transfer conduit, the polymerization slurry after discharge referred to as a polymerization effluent; heating the polymerization effluent in said first transfer conduit to a temperature below the fusion temperature of the polymer; communicating said polymerization effluent through said first transfer conduit to a first flash tank wherein the pressure in said first flash tank and the temperature of said heated polymerization effluent are such as to produce a vapor from about 50% to about 100% of the liquid medium; condensing the vapor obtained in the first flash step by heat exchange; discharging from said first flash tank polymer solids to a second flash tank through a seal chamber of sufficient dimension such as to maintain in the said seal chamber a volume of polymer solids being a continuous plug flow having an l/d ratio of from 1.5 to 8 and being sufficient to maintain a pressure seal; communicating the polymer solids to a second flash tank; exposing the polymer solids to a pressure reduction from a higher pressure in the first flash tank to a lower pressure in said second flash; and 1216 | 3398
T 1993/07 – Divergence
K’s Law – The ebook
discharging the polymer solids from said second flash tank.
In its statement of grounds of appeal filed on March 7, 2008, the patent proprietor filed a main request (rejection of the oppositions), a first auxiliary request (maintenance in amended form) and an second auxiliary request (maintenance of the patent as maintained by the OD). On September 22, 2011, i.e. shortly before the oral proceedings (OPs) held on October 13, 2011, the patent proprietor filed five auxiliary requests. Auxiliary request 3 aimed at the maintenance of the patent as maintained by the OD and auxiliary request 5 was equivalent to the first auxiliary request filed together with the statement of grounds of appeal. The Board found the main request to lack inventive step. Claim 1 of the first auxiliary request read (differences with claim 1 as granted are underlined): 1. A process for producing polymer from a polymerization slurry in a loop reactor operating at a space time yield greater than 2.6 lbs/hr-gal (8.65 x 10-5 kg s-1dm-3) which comprises the steps of :
forming the polymer in the polymerization slurry, wherein the polymerization slurry comprises a liquid medium and solids; continuously discharging the polymerization slurry through a discharge valve into a first transfer conduit, the polymerization slurry after discharge referred to as a polymerization effluent; heating the polymerization effluent in said first transfer conduit to a temperature below the fusion temperature of the polymer; communicating said polymerization effluent through said first transfer conduit to a first flash tank wherein the pressure in said first flash tank and the temperature of said heated polymerization effluent are such as to produce a vapor from about 50% to about 100% of the liquid medium; condensing the vapor obtained in the first flash step by heat exchange; continuously discharging from said first flash tank polymer solids to a second flash tank through a seal chamber of sufficient dimension such as to maintain a volume of polymer solids in the said seal chamber sufficient to maintain a pressure seal, wherein the said chamber is of sufficient length to allow measurement and control of the solids level; maintaining a polymer solids level in the said chamber to form the pressure seal; communicating the polymer solids to a second flash tank; exposing the polymer solids to a pressure reduction from a higher pressure in the first flash tank to a lower pressure in said second flash; and discharging the polymer solids from said second flash tank.
The Board refused to admit this request – pursuant to Article 13 (1) and (3) RPBA – because it was late filed and raised questions regarding its compliance with A 123(2) and A 84. It then dealt with the second auxiliary request, claim 1 of which read (differences with claim 1 as granted are underlined): 1. A process for producing polymer from a polymerization slurry in a loop reactor operating at a space time yield greater than 2.8 lbs/hr-gal (9.3 x 10-5 kg s-1dm-3) which comprises the steps of :
forming the polymer in the polymerization slurry, wherein the polymerization slurry comprises a liquid medium and solids; continuously discharging the polymerization slurry through a discharge valve into a first transfer conduit, the polymerization slurry after discharge referred to as a polymerization effluent; heating the polymerization effluent in said first transfer conduit to a temperature below the fusion temperature of the polymer; communicating said polymerization effluent through said first transfer conduit to a first flash tank wherein the pressure in said first flash tank and the temperature of said heated polymerization effluent are such as to produce a vapor from about 50% to about 100% of the liquid medium; condensing the vapor obtained in the first flash step by heat exchange; discharging from said first flash tank polymer solids to a second flash tank through a seal chamber of sufficient dimension such as to maintain a volume of polymer solids in the said seal chamber sufficient to maintain a pressure seal; communicating the polymer solids to a second flash tank;
1217 | 3398
T 1993/07 – Divergence
K’s Law – The ebook
exposing the polymer solids to a pressure reduction from a higher pressure in the first flash tank to a lower pressure in said second flash; and discharging the polymer solids from said second flash tank.
As a matter of fact, this claim corresponds to the combination of claims 1 and 2 as granted. Will the Board admit it into the proceedings? [6] The second auxiliary request was filed together with the first auxiliary request, and so its very late filing raises the question of its admissibility. [6.1] The request was filed without justification as to its lateness, and with no further argumentation as to the purpose of the amendment. At the OPs, [the patent proprietor] stated that the new requests had been filed in reaction to new arguments regarding lack of novelty in the light of document D2 raised by [opponent 2] in its letter of 13 September 2011. [6.1.1] The board observes that the claims according to this request were not only filed late but – compared to the claims as granted (main request) – also go in a completely different direction to the claims of the first auxiliary request referred to above and those held allowable by the OD. More particularly, none of the features additionally incorporated into the respective claims 1 of the latter requests concerning the dimensioning of the seal chamber have been taken over into claim 1 at issue, which only differs from claim 1 of the main request by a different lower limit of the prescribed range of STY values (2.8 in the second auxiliary request vs. 2.6 in the main request). [6.2] So although the amendments consist in the incorporation of features from a dependent claim into claim 1 as granted, the claims submitted as second auxiliary request “diverge” in the sense that they pursue different lines of amendment - by incorporating different features in each version - instead of increasingly limiting the subjectmatter of independent claim 1 of the main request in one direction. For the board, the very late filing of the “diverging” second auxiliary request is not admissible, for the reasons set out in decision T 1685/07 [6.5-6], which the present board decided to follow. [6.3] The board thus decided, in the exercise of the discretion conferred on it by Article 13(1) and (3) RPBA, not to admit into the proceedings the first auxiliary request. Finally, the Board dismissed the appeals. I find it somewhat surprising that the second auxiliary request is criticized for going into a completely different direction than the first auxiliary request, as the latter had not even been admitted into the proceedings. All in all, this looks rather harsh. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1218 | 3398
T 1205/07 – Confirmation
K’s Law – The ebook
T 1205/07 – Confirmation 16 Jun 2012
This appeal was filed by the patent proprietor after the Opposition Division (OD) had maintained the patent in amended form. The Board found the main request before it not to comply with A 123(2) and then examined auxiliary request 1, which had also been auxiliary request 1 before the OD. Claim 1 of this request read: 1. A combination consisting of: a recombinant nucleic acid molecule based on or derived from an adenovirus, said nucleic acid molecule having a functional encapsidating signal and at least one functional Inverted Terminal Repeat or a functional fragment or derivative thereof, and a packaging cell, said recombinant nucleic acid and said packaging cell together comprising all elements which are necessary to generate a recombinant adenoviral particle comprising said recombinant nucleic acid molecule, wherein said recombinant nucleic acid molecule has no overlapping sequences which allow for homologous recombination leading to replication competent virus in said packaging cell, and wherein the genome of said packaging cell comprises an adenoviral sequence consisting of Ad5 nucleotides 459-3510. The OD had found this claim to lack sufficiency of disclosure. The Board disagreed: [20] In the decision under appeal the OD held that the invention claimed in claims 1 and 22 of the first auxiliary request did not fulfil the requirements of A 83, because neither the application nor the common general knowledge (CGK) in the relevant technical field provided the guidance required for carrying out the claimed invention over the whole scope of the claims, in particular as regarded the preparation of packaging cells starting from primary cells other than HEL, HEK or HER cells. As evidence in support of these findings, the OD pointed to the patent itself and to documents D8 and D43 which were cited as expert opinion. [21] The OD correctly found that neither claim 1 nor claim 22 imposes any limitation to the type of cell suitable for use as packaging cell, except for the presence in its genome of an adenoviral sequence consisting of Ad5 nucleotides 459 to 3510. Thus, claim 22 encompasses any possible type of cell of any possible origin, be it a primary human cell or a cell from an established cell line. Similarly, claim 1 encompasses any combination of a recombinant nucleic acid molecule as defined in the claim with any type of packaging cell harbouring in its genome the Ad5 sequences specified in the claim. [22] The OD also held that the examples of the patent described successful generation of packaging cell lines only by transfection of human embryonic retina (HER) cells with E1A and E1B sequences of Ad5, while the transformation of the established human bronchial carcinoma cell line A549 was not successful because a significant expression of E1A could not be achieved. The OD thus concluded that the patent provided only one example of how to obtain packaging cells as defined in claim 22. [23] These findings, although based on the disclosure content of the patent – instead of the application as filed which is the relevant disclosure for the assessment whether or not the requirements of A 83 are fulfilled – are, in principle, correct, since in the present case the disclosure content of the application as filed and the patent as granted are, at least in the relevant passages, identical. [24] The OD went on to observe that the patent did not provide the skilled person with a general teaching how to obtain a human cell line expressing adenoviral E1A and E1B proteins, and that, therefore, the question to be addressed was whether or not the skilled person would have been able to carry out the invention over the whole scope of claims 1 and 22 based on the CGK at the relevant date. [25] In this respect the board does not agree with the OD. A general teaching how to obtain a human cell line expressing adenoviral E1A and E1B proteins is found in the passage from page 17, line 25 to page 19, line 19 of the application as filed. A plasmid including adenoviral sequences encoding E1A and E1B proteins (plasmid pIG.E1A.E1B) is described on page 25, lines 19 to 33 and Figure 4, and a standard protocol for transfection of cells with suitable plasmids on page 28, lines 10 to 16. Thus, the application as filed discloses indeed technical 1219 | 3398
T 1205/07 – Confirmation
K’s Law – The ebook
details and measures which enable a person skilled in the art to prepare, possibly with some amount of trial and error, a packaging cell as defined in claims 1 and 22. [26] Apart from the failure to transform the established cell line A549 reported in the application as filed, there are no other verifiable facts on file that support the allegation that, at the filing date of the patent in suit, there were insurmountable difficulties in transforming primary human cells by transfecting them with adenoviral E1A and E1B sequences. There is, however, documentary evidence, in particular documents D43 and D32 showing that primary human cells can be transformed applying the teachings of the application. [27] While the documents in question were published after the filing date, the board believes that the evidence they provide is not aimed at “curing” any alleged insufficiency of disclosure, but rather at confirming that the teachings of the application are, in fact, applicable to cell lines other than HEL, HEK or HER cells. Thus, contrary to the OD’s view, the board holds that, under the circumstances of the present case, post-published evidence may be considered (see decision T 1262/04). [28] Documents D43 and D32 describe the efficient transformation of primary human amniocytes by transfection with adenoviral E1 sequences. It is stated in document D43 that the E1-transformed cell lines produced the E1A proteins and the 21-kDa E1B proteins in comparable amounts, whereas in preliminary experiments expression of the 55-kDa E1B protein was found to be more variable (see page 2111, left column, paragraphs under the heading “Synthesis of Ad5 E1 proteins in E1-transformed amniocyte cell lines”, and Figure 4). Whether or not the primary human amniocytes used in the experiments described in document D32 are mentioned in the specification of the patent in suit is, contrary to the OD’s view, immaterial. The decisive fact is that primary human amniocytes, i.e. primary human cells other than HEK, HEL or HER cells, can transformed by transfection with adenoviral E1 sequences, as shown in documents D32 and D43. [29] As regards post-published document D33, an international application filed in 1998 claiming the priority of a previous application filed in 1997, the OD remarked that only the expression of E1B p55 but not of any other E1B proteins was reported. This is correct. However, in Example 3 of this document it is stated that E1-deleted Ad5-CA-GFP adenovirus was propagated through 20 passages on A549E1-68 cells, a cell line obtained by transfection of A549 human lung carcinoma cells with E1A and E1B sequences of Ad5. This implies that all E1 functions missing in the Ad5-CA-GFP adenoviral vector, including those of other E1B proteins were necessarily supplied by the packaging cell. The same applies in respect of the Hela-E1 packaging cell line described in document D35, which the OD regarded as disclosing solely the expression of E1A. [30] The board observes that the A549 cell line used in the experiments described in document D33 appears to be the same cell line which, in the examples of the application, failed to produce detectable levels of E1A and E1B. Since document D33 does not appear to describe any particular technical measures which may have been necessary to obtain a different result - nor did the [opponents] indicate any such measures -, it seems that the failure reported in the application, on which the OD based its doubts concerning the sufficiency of the disclosure, may have been either fortuitous or due to factors unrelated to the ability of the A549 cell line to be transformed upon transfection with adenoviral E1 sequences. [31] In view of the above the board is persuaded that, in spite of the alleged difficulties in transforming primary human cells, the evidence on file shows that with the guidance given in the application as filed supplemented with the CGK at the filing date, and with a reasonable amount of experimentation, a person skilled in the art could obtain packaging cells for replication-defective adenoviruses starting from either primary cells or established cell lines. [32] It is therefore concluded that, as regards the packaging cell according to claim 22 and the combination of claim 1, the requirements of A 83 are met. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1220 | 3398
T 2256/08 – Inconsistency
K’s Law – The ebook
T 2256/08 – Inconsistency 15 Jun 2012
This appeal was against the refusal of the application under consideration. Claim 1 of the main request before the Board read: A pharmaceutical composition comprising (a) an oral contraceptive for preventing pregnancy in a subject and (b) folic acid in the manufacture of a medicament for use in a method of reducing the risk of neural tube defects in an embryo developing in said subject following becoming pregnant. The Board found this claim not to comply with A 84: [3.1] A 84 requires that the claims shall define the matter for which protection is sought. They must be clear and concise and supported by the description. [3.2] Claim 1 of the main request is in the form of a purpose-related product claim and seeks protection for a composition for use in a medical treatment. In particular, claim 1 concerns a composition comprising an oral contraceptive and folic acid to be administered to a subject, and the medical use is a method of reducing the risk of neural tube defects in an embryo developing in said subject following becoming pregnant. The subject of claim 1 therefore concerns the concomitant and continuous administration of an oral contraceptive and folic acid to any subject or group of subjects to reduce the risk of neural tube defects in the embryo. The subject-matter of claim 1 is seen as consistent only in particular situations. Such cases comprise an accidental discontinuation of the oral contraception or an unintentional pregnancy under oral contraception. In both cases the woman would temporarily continue to take the composition of folic acid together with the contraceptive, as long as it is not known whether pregnancy has have occurred. The subject-matter of claim 1 is however not restricted to this particular situation or group of subjects. On the other hand, the subject-matter of claim 1 is inconsistent with a situation concerning a group of women wishing to become pregnant and discontinuing oral contraception for that purpose. Such a group of women cannot be concerned by the treatment as claimed in claim 1, which relates exclusively to subjects taking concomitantly and continuously an oral contraceptive and folic acid. Thus, claim 1 of the main request does not define the invention in a complete manner and is inconsistent. Consequently, the claim does not meet the requirements of A 84. [3.3] In the applicant’s view, the subject-matter of claim 1 must be seen as the chronic administration of a prophylactic composition. The prophylaxis benefits a person different from the person receiving the treatment, since at the time of the administration, the embryo is not present. This situation does not present any contradiction; the prophylaxis stops when the embryo is formed. [3.4] The board could however not follow this opinion. The subject-matter of claim 1 has to be analysed in its whole scope and exact wording. It is sufficient that one single alternative encompassed by the subject-matter of the claim presents a contradiction or inconsistency to render the said claim unclear. Claim 1 relates to the chronic administration of a prophylactic composition comprising inter alia an oral contraceptive. There is no further restriction in claim 1 regarding a specific group of subject or a subsequent administration of the composition without the contraceptive. The presence of an oral contraceptive in the composition has the consequence that the treatment should only concern a specific group of subject, namely subjects not wishing to get pregnant. However, the claim does not make any distinction regarding the group of patients to be treated, and therefore covers all possible situations and groups of subjects. 1221 | 3398
T 2256/08 – Inconsistency
K’s Law – The ebook
Oral contraception is however inconsistent with the treatment of some groups of subjects. Such a group is for instance discussed in the description (see description, page 3, lines 26-30); this particular group of subjects “become pregnant within three to six months following discontinuation of oral contraception”. The further administration of a composition comprising inter alia an oral contraceptive to these subjects is inconsistent and contra-indicated. Consequently, the subject-matter of claim 1 presents an inherent contradiction. [3.5] The main request does not meet the requirements of A 84. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1222 | 3398
T 1326/11 – No Consent
K’s Law – The ebook
T 1326/11 – No Consent 14 Jun 2012
The present case is not particularly surprising but I found it interesting because the Board scrutinized the way in which the Examining Division (ED) exercised its discretion under R 137(3) not to admit amendments. There had been oral proceedings (OPs) before the ED on September 29, 2009. At the end of the OPs the ED announced its intention to grant a patent. A communication pursuant to R 71(3) had then been sent. The applicant then sent amended claims, which triggered the ED to send a communication pursuant to A 94(3) wherein it refused its consent to the amendments under R 137(3). Following a request by the applicant, the ED summoned again to OPs on December 20, 2010 “to discuss the admissibility of the amendments … under R 137(3) only”. During these OPs the application was then refused. In its decision the ED explained that the applicant had already had sufficient opportunity to amend its case and sufficient time to prepare for the OPs. At the end of said OPs, the ED had announced that it intended to grant a patent on the basis of the sole request then on file. The set of claims received after the R 71(3) communication omitted a feature which had been added in order to overcome objections under A 83 and A 54; the amendments proposed were, hence, substantive amendments which called into question the outcome of the earlier procedure. The conditions for accepting late amendments defined in the decision G 7/93 were, therefore, not met. The appellant argued that the ED was not precluded from reopening examination proceedings up to the moment at which the decision was handed over to the internal postal service, and cited the Guidelines for Examination in the EPO, C-VI, 14.4. It argued that the discretion of the ED should be exercised taking into consideration all relevant factors, including the right of the applicant to a patent with the broadest possible scope. The application related to a complex invention, which justified an exception. Since the applicant could not file further divisional applications, these broader claims filed after the communication under R 71(3) were its sole possibility to obtain the scope of protection commensurate to the invention. The Board followed the logic of the ED: [2] The decision under appeal deals solely with the refusal under R 137(3) of the ED to admit into the proceedings the request received after issuance of the communication under R 71(3). Thus, the question to be decided on this appeal is whether this refusal is an appropriate exercise of the discretion given to the ED under R 137(3). [3] Guidance on the principles to be applied can be derived from the Enlarged Board of Appeal decision G 7/93, as summarised in decision T 1064/04: (a) Until the issue of a decision to grant the patent, the ED has a discretion under Rule 137(3) EPC whether or not to allow the amendment of the application at a late stage (G 7/93 [2.1]). (b) The ED is required to exercise its discretion considering all relevant factors, in particular the applicant’s interest in obtaining a patent which is valid in all designated states, and the EPO’s interest in bringing examination to a close, and must balance these against one another (G 7/93 [2.2-3]). (c) Allowing a request for amendment at a late stage of the examination proceedings during which the applicant has already had at least one opportunity to amend the application, and after the ED has already completed substantive examination thereof, will be an exception and not the rule (G 7/93 [2.3]). (d) It is not the function of a board of appeal to review all the facts of the case as if it were in the place of the first instance department in order to decide whether or not it would have exercised the discretion in the same way. Rather, a board of appeal should only overrule a first instance exercise of discretion if it comes to the conclusion either that the first instance department has not exercised its discretion correctly as set out in (b) above, or has exercised its discretion in an unreasonable way, and thus exceeded the proper limits of its discretion (G 7/93 [2.6]).
1223 | 3398
T 1326/11 – No Consent
K’s Law – The ebook
[4] In the present case, the proceedings before the ED involved two communications according to A 94(3), after each of which the applicant filed amended claims, a detailed summons to attend OPs, in response to which new claims were presented to the ED, and OPs before it, during which two sets of amended claims had been filed. At the end of the OPs which took place on 29 September 2009, the ED intended to grant a patent on the basis of claims 1-12 of the sole request then pending and an adapted description thereof. This was confirmed in a communication under R 71(3) dated 23 November 2009. From this sequence of events, the board concludes that the applicant had several opportunities to amend the application and it did so, and that the substantive examination had been completed by the ED. [5] The purpose of OPs should be to settle as far as possible all outstanding questions relevant to the decision. A late stage of the examination proceedings had thus been reached at the end of the OPs held on 29 September 2009, and any amendments thereafter fell to be considered under the principles derivable from decision G 7/93 as set out in point [3], above. [6] As stated in the decision under appeal, the ED exercised its discretion under R 137(3) to refuse to allow into the proceedings the set of claims filed after the communication under R 71(3) because this would have required re-opening of the examination proceedings in relation to matters already thoroughly discussed during these proceedings. The ED explained in its decision that the claims which the appellant sought to introduce in the proceedings omitted one feature which had been added previously to the claims in order to overcome objections under A 83 and A 54. The board agrees with the ED that the amendments proposed are substantive, in the sense that they call into question the outcome of the OPs and, if taken into account, would have necessitated a substantive reexamination of the application and thus a delay in the closure of the examination procedure. In addition, the validity of the claims upon which the ED intended to grant a patent as mentioned in the communication under R 71(3) has never been put into question by the appellant. Thus, the ED took into consideration the applicant’s interest in obtaining a valid patent and the EPO’s interest in bringing the examination to a close. The board concludes that the ED has, hence, followed the principles set in G 7/93 as explained in paragraph (b) above, and considered all relevant factors as defined in G 7/93in its decision not to admit the new request. [7] The board concludes, therefore, that the ED has exercised its discretion under R 137(3) in a reasonable manner by not admitting the set of claims filed under cover of a letter dated 11 March 2010 into the proceedings. [8] The appellant has argued that the present application was very complex, not only due to its subject-matter, but also since it was a divisional of a divisional application (EP-03076151 and EP-96306263), and because the ED introduced with the summons to the first OPs 32 additional documents which had been cited in the opposition proceedings concerning the parent application. The scope of protection conferred by the claims proposed for grant would have been too narrow, and subsequent divisional applications could not be filed. For these reasons the present case was an exceptional situation in which reopening of the examination proceedings by the ED was justified. [9] The board is of the view that the complexity of the case only supports the decision of the ED not to admit a request at a very late stage of proceedings, which had already involved two communications of the ED and OPs before it. In fact, admitting the set of claims put before it at that late stage would have led, in the view of the complexity of the case, to re-starting the examination on complex substantive issues, with the consequence of unduly lengthening the proceedings. […] The appeal is dismissed. I have been wondering whether the ED would have had to act differently if the new R 71 had applied. Having considered the Notice dated December 13, 2011 concerning amended R 71 and new R 71a (OJ EPO 2012, 52) and the draft Guidelines, C-V 4, I tend to believe that the way in which the ED acted here is blameless, even under the new regime. There may be some discussion, however, on what exactly is meant by “resume the examination proceedings” in R 71(6). Would the issuing of the A 94(3) communication (stating that the amendments were refused under R 137(3)) and the holding of OPs (for discussion of the admissibility of the amendments) qualify as “resumption of the examination proceedings”? If any reader can shed some light on this matter, please do so. To download the whole decision, click here. 1224 | 3398
T 1326/11 – No Consent
K’s Law – The ebook
The file wrapper can be found here.
1225 | 3398
T 2464/10 – Accumulation
K’s Law – The ebook
T 2464/10 – Accumulation 13 Jun 2012
Some time ago I reported on the first decision that implemented the teaching of G 2/10 (here). Well, here is another one. Interesting food for thought. The appeal was against the refusal of an application by the Examining Division (ED), based on an alleged noncompliance with the requirements of A 123(2). The main request before the Board was identical to the main request that had been refused by the ED. Claims 1, 10, 11, and 14 of this request read: (emphasis by the Board) 1. A non-human animal comprising a biological tissue, wherein the tissue comprises a cell, the cell expressing one or more proteins comprising a region with anticoagulant activity and a region which can anchor said protein to a cell membrane, wherein the anchor region and anticoagulant region of the protein are derived from different proteins, and wherein the anticoagulant region comprises the sequence of an anticoagulant polypep tide selected from the groups consisting of: i) hirudin, tissue factor pathway inhibitor, tick anticoagulant peptide and protein C activator; ii) functional derivatives, fragments or analogues of i) which retain anticoagulant activity; iii) heparin and antithrombin; iv) functional derivatives and fragments of iii) which retain anticoagulant activity; and v) anticoagulant derivatives of thrombin. 10. An organ of the non-human transgenic animal of claim 8 or claim 9. 11. A biological tissue comprising a cell, wherein the cell expresses one or more proteins as defined in claim 1, wherein the cell is not produced using a process which involves modifying the germ line genetic identity of human beings or which involves use of a human embryo for industrial or commercial purposes. 14. A method of rendering a tissue or organ suitable for transplantation, comprising expressing a protein as defined in claim 1 on the surface of endothelial cells in said tissue or organ, wherein the method does not involve modifying the germ line genetic identity of human beings or use of a human embryo for industrial or commercial purposes. The applicant argued, inter alia, that by amending claims 11 and 14 to include disclaimers based on the wording of R 28(b) and (c), the only subject-matter which has been disclaimed was that which was excluded from patentability for non-technical reasons. Compliance with A 123(2) [2] The question to be answered is whether the subject-matter of each of claims 1 to 15 […] is disclosed in the application as filed. The allowability of the disclaimers of claims 1, 11 and 14, and of the other aspects of the claimed subject-matter will be assessed in succession. Disclaimers [3] Each of claims 1, 11 and 14 contains a disclaimer […]. The disclaimer of claim 1 (“non-human”) excludes human beings in order to satisfy A 53(a) while the disclaimers of claims 11 and 14 exclude subject-matter which is not patentable under A 53(b) taken in combination with R 28, paragraphs b) and c). [4] The three disclaimers which exclude subject-matter not eligible for patent protection and only serve the purpose of removing specific legal obstacles do not contribute to the invention. The “non-human” disclaimer of claim 1, in a self-evident manner, and the disclaimers of claims 11 and 14, for the very reason that they 1226 | 3398
T 2464/10 – Accumulation
K’s Law – The ebook
reproduce the specific wording of R 28, do not remove more than is necessary to disclaim subject-matter excluded from patentability for non-technical reasons. In this respect, the Board disagrees with the conclusion reached by the ED […] that the disclaimers of claims 11 and 14 removed more than was necessary. [5] As such the disclaimers of the main request, while meeting the criteria as set forth in decision G 1/03 [order], do not change the subject-matter of the application as filed, within the meaning of A 123(2). [6] In decision G 2/10 […], it was considered that in decision G 1/03 the Enlarged Board of Appeal (EBA) did not provide an exhaustive treatment of when a disclaimer violates A 123(2) and when it does not […]. Applied to the facts of G 2/10, this meant that the EBA did not consider that decision G 1/03 was exhaustive as to the conditions that needed to be fulfilled for an amendment that consisted of the introduction of an undisclosed disclaimer to be regarded as allowable under A 123(2) (see G 2/10 [p. 47, last §]). [7] The present Board interprets these remarks made in decision G 2/10 as an instruction to the Board to apply the further test developed in this decision, in addition to those set out in G 1/03, in order to carry out a full assessment of whether an undisclosed disclaimer meets the requirements of A 123(2). [8] The further test to be applied is whether the skilled person would, using common knowledge, regard the remaining claimed subject-matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed (see G 2/10 [4.5.4 (p. 39)]). The remaining subject-matter test of G 2/10 applied to claim 1 [8.1.1] Account being taken of the exclusion associated with the “non-human” disclaimer, claim 1 is directed to any animal, except a human, comprising a biological tissue a cell of which expresses one or more specific chimeric proteins with anticoagulant activity. The animal is referred to in the application as filed without any limitation with the indication that preferably it is a mammal, and more preferably a transgenic pig or a transgenic sheep (see page 7, lines 25 to 28 of the application as filed). The limitation of this general disclosure to nonhuman animals does not lead to a disclosure of any particular animal. No new technical teaching is introduced. The aforementioned passage in the description as filed provides an explicit support for non-human animals. The preparation of any non-human animal according to claim 1, which includes the introduction into a cell of a genetic construct encoding the desired chimeric anticoagulant protein by gene therapy or as the result of any other method suitable for generating transgenic animals, relies on exactly the same procedure as would be the case for a human (see from line 29 on page 7 to line 11 on page 8 of the application as filed). Thus, regarding the remaining subject-matter of claim 1, the skilled person is not presented in the application as filed with any new disclosure which goes beyond the application as originally filed. The remaining subject-matter test applied to claims 11 and 14 [8.1.2] The preparation of a cell which expresses one or more chimeric anticoagulant proteins, as referred to in claim 11, basically relies on the introduction of a construct encoding such a protein. It is disclosed in the application as filed only in general terms. It may or not involve a transfection (see page 7, lines 5 to 15, and page 8, lines 5 to 11, of the application as filed). The remaining subject-matter of claim 11 is limited to the situation where the cell is produced using a process which does not involve either modifying the germ line genetic identity of human beings or using a human embryo for industrial or commercial purposes. [9] A method of rendering a tissue or organ suitable for transplantation which comprises expressing a chimeric anticoagulant protein on the surface of endothelial cells of said tissue or organ, as referred to in claim 14, is disclosed in the application as filed only in general terms (see page 7, lines 12 to 15 of the application as filed). The remaining subject-matter of claim 14 is limited to the situation where the method involves no modification of the germ line genetic identity of human beings or use of a human embryo for industrial or commercial purposes. [10] The limitation imposed by the disclaimers of claims 11 and 14 serves the sole purpose of removing specific subject-matter not eligible for patent protection pursuant to A 53(b) in combination with R 28(b) and (c). It has no bearing on the remaining subject-matter in that no new technical teaching is introduced and it leads neither to a disclosure directed to any particular animal nor to an intermediate generalisation that is not explicitly or implicitly disclosed in the application as filed.
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T 2464/10 – Accumulation
K’s Law – The ebook
[11] Thus, it follows from the above, that the disclaimers of claims 1, 11 and 14 of the main request meet the requirements set out in point 1a of the Order of decision G 2/10. Accordingly, these claims satisfy A 123(2). The Board then found the remaining amendments to comply with A 123(2) and remitted the case to the ED for further prosecution. NB: The Board also provided a headnote: Remaining subject matter test of G 2/10 applied. The EBA in G 2/10 did not consider that G 1/03 provided an exhaustive treatment of the conditions under which an undisclosed disclaimer was to be allowable. In addition to the requirements set out in G 1/03, G 2/10 developed the further test of whether the skilled person would, using common general knowledge, regard the remaining claimed subject matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed. Mmmm … As far as I can see, G 1/03 allowed disclaimers cutting out undisclosed subject-matter – which, from a purist point of view, appear to be violations of A 123(2) – in very particular circumstances. G 2/10, as I understand it, states that under more general conditions, the only thing that matters is that what is claimed in the end complies with A 123(2). Combining these two and stating that G 2/10 has added criteria to G 1/03 does not sound right to me. I think these two decisions should not be mixed, because they address different situations (and I am not even sure that they are 100% compatible). But then, I may be wrong. What do you think? Should you wish to download the whole decision, click here. The file wrapper can be found here.
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J 9/11 – Lost Cause
K’s Law – The ebook
J 9/11 – Lost Cause 12 Jun 2012
Although the Boards have made clear, again and again, that the provisions of the EPC do not apply to the Extension Ordinances and that there is no right to appeal in respect of extensions, sometimes applicants still try … and invariably fail. The Euro-PCT under consideration was filed on March 14, 2008. The applicant requested entry into the European phase with letter of 12 October 2009. All (then) EPC Contracting States were designated and the respective fees were paid but no extension of the European patent was claimed. With letter dated December 9, 2009, the [applicant] designated four extension states (Albania, Bosnia and Herzegovina, Former Yugoslav Republic of Macedonia, and Serbia) and asked for the debit of the extension fees and late payment surcharges. Those payments, one of which titled as “fee for further processing (late payment of a fee)”, were made the same day. Concerning the late designation of extension states and late payment of extension fees, the [applicant] argued that the “grace period system” pursuant to R 85a(2) EPC 1973, referred to in Article 3(2) of the extension ordinances, were still in place regardless the deleting of that rule by way of the EPC 2000 reform. According to the applicant, the unilateral removal of that rule by the EPO effectively constituted an intervention in the sovereign rights of the extension states. The [applicant] requested an appealable decision. On June 10, 2010, the Receiving Section (RS) sent a reasoned communication pursuant to A 113. It informed the [applicant] that the “grace period system” according to R 85a(2) EPC 1973 had been replaced by the remedy of further processing under A 121, and it considered the [applicant’s] earlier letter as such a request. However, A 121 was only applicable in cases where both designation fees and extension fees had not been paid in due time and a loss of rights communication under R 112 was issued. In other cases, in particular where the designation fees had been paid in time or where an applicant waived the right to receive a communication according to R 112, no possibility to pay extension fees was available any more. Since no such communication was issued, the RS rejected the [applicant’s] request for further processing under A 121 for late payment of extension fees as inadmissible. The applicant maintained its request for an appealable decision in relation to the payment of the extension fees. In addition to this, it argued that in view of the Notice from the EPO dated 2 November 2009 concerning the reintroduction of a grace period for the payment of extension fees (OJ EPO 2009, 603), applicable to applications for which the basic time limit for payment of designation fees expires on or after 1 January 2010, the EPO’s refusal to accept the [applicant’s] payment of the extension fees led to an inequitable situation. The RS then issued an appealable decision and the applicant filed an appeal. [1] The appeal is formally directed against the decision of the RS dated 10 March 2011 rejecting both the [applicant’s] request for a decision pursuant to R 112(2) in its favour and its request for further processing under A 121 for the designation of extension states and payment therefore with surcharge concerning the European patent application No. 08 743 872.7. In essence, the [applicant] requests that the late designated extension states Albania, Bosnia and Herzegovina, Former Yugoslav Republic of Macedonia and Serbia be added to said European patent application. [2] The appeal was filed, and the appeal fee was paid within two months of the date of notification of the decision, alleged by the [applicant] to be appealable (A 108). [3] As noted by the Legal Board of Appeal in its communication dated 28 December 2011, the appeal proceedings are essentially concerned with the question whether such a denial of the RS to accept a late designation of extension states is open to an appeal and, therefore, whether the appeal is admissible.
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J 9/11 – Lost Cause
K’s Law – The ebook
[3.1] According to the exhaustive provisions of A 106(1), only those decisions of the EPO may be contested which are taken by the departments listed therein, i.e. by the RS, Examining Divisions, Opposition Divisions and the Legal Division, acting within the framework of their duties under the EPC. [3.2] The Legal Board of Appeal found in a number of cases that decisions taken by the EPO when carrying out its obligations under the co-operation agreements with certain states extending the protection conferred by European patents (Extension Agreements) were not based on the EPC itself but solely based on the Co-operation Agreements between the European Patent Organisation (EPO) on the one hand and the extension states on the other hand; it, therefore, rejected the respective appeals as inadmissible (J 14/00; J 19/00; J 9/04; J 2/05; J 4/05). [3.3] Starting from this and following a recent decision taken by the Legal Board of Appeal in case J 22/10, the Board observes that it follows already from the very nature of the Extension Agreements relevant in these appeal proceedings (Albania, OJ EPO 1995, 803 and 1996, 82; Bosnia and Herzegovina, OJ EPO 2004, 619; Former Yugoslav Republic of Macedonia, OJ EPO 1997, 345 and 538; Serbia, OJ EPO 2004, 5[6]3, 2007, 406) that any decisions based on such international treaties do not fall within the scope of the EPC and, as a result of this, are not subject to the jurisdiction of the Boards of Appeal. [3.3.1] The procedure for payment of the extension fees is determined by the Extension Agreements alone. Although there are certain parallels between the formal procedures of extension of protection under the Extension Agreements on the one hand and the designation of a contracting state under the EPC on the other hand (A 78(2) and A 79(2) EPC 1973, R 38(1) and R 39(1) EPC), the Extension Agreements form a legal system of their own that is distinct from the legal system created by the EPC. References within the Extension Agreements to the EPC, in particular to the so-called period of grace under R 85a(2) EPC 1973 do not override this fundamental distinction. Consequently, the legal nature of any decision taken on the legal basis of the Extension Agreements remains within that legal system and does not extend to the legal system of the EPC. [3.3.2] The Extension Agreements make it absolutely clear that references to provisions of the EPC are exhaustive and, thus, that there can be no corresponding application of other provisions, including those of A 106 et seq. concerning the appeals procedure. Neither is there anything in the structure or legal nature of the Extension Agreements to support the appealability of the contested decision within the legal framework of the EPC. As bilateral agreements, the Extension Agreements essentially deal - exhaustively and strictly separated from the EPC – with matters pertaining to the integration of extended European applications and protective rights into the respective national law and their relationship to national applications and rights based on the law on industrial property of the extension states. Nor do the Extension Agreements provide for a transfer of jurisdiction on the EPO and its Boards of Appeal. Such a transfer could only have been established by an explicit and clear provision to this effect in the Extension Agreements. Particularly with regard to the principle of sovereignty of the extension states, there is no room for acknowledging an implicit transfer of jurisdiction from the respective national law and the national courts to the EPC and the Boards of Appeal. [3.4] Thus, apart from the fact, that A 121 and R 112 are not applicable to cases where (only) the due designation of extension states and the payment of extension fees was omitted, the Legal Board of Appeal is not competent to decide a case that is solely governed by a “foreign” legal system. [4] This has been brought to the [applicant’s] attention by way of the communication of the Board dated 28 December 2011 to which the [applicant] chose not to reply. Having reviewed the facts and legal issues involved in this appeal case, the Board maintains the opinion already expressed in said communication and reiterated above. [5] Since the contested notification of the RS dated 10 March 2010, rejecting the [applicant’s] request for a decision pursuant to R 112(2) in its favour and its request for further processing under A 121 for the designation of extension states and payment thereof with surcharge, and [applicant’s] request that the late designated of extension states Albania, Bosnia and Herzegovina, Former Yugoslav Republic of Macedonia and Serbia be added to said European patent application No. 08 743 872.7 are not open to an appeal according to A 106 the appeal has to be rejected as inadmissible. To download the whole decision, click here. 1230 | 3398
J 9/11 – Lost Cause
K’s Law – The ebook
The file wrapper can be found here.
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T 611/09 – Non-Therapeutic
K’s Law – The ebook
T 611/09 – Non-Therapeutic 11 Jun 2012
The opponent filed an appeal against the maintenance of the opposed patent in amended form. Claim 1 of the main request before the Board read: 1. The use of a citrate salt solution having a concentration to eliminate infection and to reduce the likelihood of subsequent infection for the manufacture of a medicament in the form of a catheter lock solution for infusion into the lumen of an in-dwelling intravascular catheter of a patient for the treatment of an infection or a substantial risk of infection related to the presence of the catheter wherein the lock solution comprises the citrate salt in a concentration range, in weight percent, of between 10% and 50%. The discussion of this request by the Board contains some interesting statements: Preliminary considerations [4.1] Claim 1 of the main request, which is drafted in the “Swiss type” format, refers to two alternative uses of the lock solution, namely to the treatment of an infection and to the treatment of a substantial risk of infection, which in the view of the board is equivalent to a prevention. [4.1.1] Regarding therapy the board notes that according to the established jurisprudence of the boards of appeal, this term comprises any treatment designed to cure, alleviate, remove or lessen the symptoms of a disorder or malfunction or the human or animal body. This definition also includes a retardation in the progression of a disease, as for example in cancer therapy. All these aspects of therapy have one thing in common: the majority of the patients having undergone a treatment must be in a better physical and/or mental state than those without a treatment. A further important aspect in connection with therapy via medicaments is that the medicament is brought into contact with the body where it delivers the active agent(s) in order to obtain the desired pharmacological effect. Active agents exercising their activity outside the human or animal body (e.g. disinfection of surgical instruments in order to avoid infections) are not considered to be therapeutic. [4.1.2] In the present case it is therefore important to evaluate whether the lock solution exerts its antibacterial activity within the human or animal body or outside of it. According to paragraphs [0013] and [0024] of the contested patent, the lock solution is used for infusion into the lumen of an in-dwelling intravascular catheter, i.e. a catheter which is typically inserted into a vein or artery and therefore in intimate contact with the human or animal body. However, this does not necessarily mean that the lock solution is also directly in contact with or even active within it. Paragraph [0042] of the contested patent indicates that the lock solution, once infused into the lumen of the catheter, is allowed to remain until the catheter or lumen is desired to be accessed again. The lock solution can be removed from the catheter prior to infusion or removal of additional fluid for further treatment or, alternatively, it can be flushed directly into the patient without the necessity of removing it before infusing fluids for subsequent treatment. In the latter case, the lock solution enters of course into contact with the human or animal body. However, in that case, the citrate in the lock solution is inactivated by calcium in the blood or calcium derived from body stores (see column 9, lines 18-20 of the contested patent) and can therefore not exert any therapeutic effect within the human or animal body. In this context, it is noted that it is irrelevant whether the bacteria are located at the tip of the catheter (see last three sentences of paragraph [0008] of the contested patent) and therefore very close to the lumen of the catheter or freely circulating in the bloodstream. The important point is that no antibacterial activity can take place within the human or animal body as a consequence of this inactivation. Therefore, the antibacterial activity will only take place in the lumen, which is a part of the catheter that is located outside of the human or animal body, which means that it is not therapeutic in the sense of A 52(4) EPC 1973. Sufficiency of disclosure 1232 | 3398
T 611/09 – Non-Therapeutic
K’s Law – The ebook
[4.2] A logical consequence of the finding that the citrate containing lock solution does not show any therapeutic activity within the human or animal body is that it does not constitute a medicament which would be suitable for treating a bacterial infection of the human or animal body (see the second paragraph of point [4.1.1] above). It can certainly prevent or reduce the invasion of further microorganisms into the human or animal body by preventing contamination of fluids administered via the catheter as a preventive measure, but it is not able to inactivate pathogenic microorganisms which are already there. In other words, the citrate containing lock solution can at best eliminate the source of an infection - which is comparable to the disinfection of surgical instruments - but it cannot alleviate or cure an already existing infection, which is claimed in claim 1 of the main request. As a consequence, the use claimed in claim 1 of the main request lacks sufficiency so that the requirements of A 83 are not met. [4.3] In view of this finding, an evaluation of the further objections raised by the appellant is not necessary. To download the whole decision, click here. The file wrapper can be found here.
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T 1848/09 – Can’t Complain
K’s Law – The ebook
T 1848/09 – Can’t Complain 9 Jun 2012
The fact that the Opposition Division (OD) has maintained the patent under consideration in amended form does not automatically give the patent proprietor the right to appeal. It really depends on what the last main request before the OD was, as the present decisions reminds us. [1.1] Both parties have appealed. However, the appeal of the patent-proprietor is inadmissible since it was not adversely affected by the decision, as required by A 107, given that its main request was allowed by the OD […]. See the Case Law of the Boards of Appeal, 6th ed. (2010), section VII.E., para. 7.4.2, and, e.g. T 506/91 and T 54/00. [1.2] The decision in T 386/04 referred to by the patent proprietor is not relevant since in that case the proprietor’s main request had been refused by the OD so that the proprietor was indisputably prejudiced by the decision; the question in the appeal was the admissibility of its main request, not the admissibility of its appeal. So you better think twice before you withdraw a main request before the OD, even if you feel that the OD will not grant it. If you withdraw the request, you are not adversely affected by its not being allowed, and there will be no possibility to appeal. In other words, when you get what you asked for, you can’t complain. To download the whole decision, click here. The file wrapper can be found here.
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T 463/07 – Non-Communicating Vessels
K’s Law – The ebook
T 463/07 – Non-Communicating Vessels 8 Jun 2012
The present decision explores the limits of what can be said to be disclosed in an A 54(3) document. The appeal was filed by the opponent after the Opposition Division (OD) had maintained the patent in amended form. Independent claim 4 of the request before the Board read: A process for preparing a human-antibody library, which comprises mRNA being isolated from nonactivated peripheral human B-lymphocytes and being transcribed into cDNA, subsequently amplifying the cDNA coding for antibodies by PCR by means of suitable primers, then carrying out an incorporation into suitable expression plasmids and finally expressing the antibody cDNA in individual clones, and wherein only the variable regions are amplified in each case by the primers used, the expression plasmids do not code for any constant domains of an antibody, and wherein the design of the primer used for the reverse reaction for the synthesis of the noncoding strand of the DNA of the heavy chains is based on IgM sequences. The Board confirmed the finding of the OD that this claim was novel over document D1: *** Translation of the German original *** [1] In the impugned interlocutory decision the OD established that document D1 did not disclose the process according to claim 4 because the document did not contain an unambiguous reference to IgM-specific primers. The reference in document D1 to a publication by Larrick et al filed as document D11 during the opposition proceedings was only made in the context of the location of the primers and not in the context of the selection of a primer that was specific for a particular immunoglobulin isotype […], as the opponent had asserted. [2] There is no doubt that document D1 is [to be] considered as prior art pursuant to A 54(3)(4) EPC 1973, the content of which is only to be considered for the assessment of novelty. As far as novelty is concerned, the only question to be decided in the appeal proceedings is whether document D1 directly and unambiguously discloses a process having all the features of claim 4 to an average skilled person. [3] Document D1 discloses a process wherein sequences which encode at least part of the variable domain of the heavy chain of immunoglobulin molecules are amplified by PCR (see column 8, lines 7 to 38) and used for establishing expression libraries. Molecules having particular binding properties can then be isolated from these libraries (see column 16, lines 5 to 8). [4] The [opponent] has not contested that document D1 did not expressly disclose the feature of the process of claim 4 according to which the design of the PCR primer used for the reverse reaction for the synthesis of the noncoding strand of the DNA of the heavy chains is based on IgM sequences […]. However, the [opponent] pointed out that this feature could be derived directly and unambiguously from the reference to the content of the publication of Larrick et al (document D11 in the present proceedings) in column 14, lines 21-25 of document D1. [5] [The Board] cannot endorse this argument. The passage of document D1 on which the [opponent] relies reads:
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T 463/07 – Non-Communicating Vessels
K’s Law – The ebook
The Board cannot see any clear reference to a particular part of document D11 which directly and unambiguously discloses the feature under consideration to an average skilled person. In particular, the Board cannot see any direct reference to figure 1 or Table 1B od document D11, let alone the IgM specific primer described in Table 1B. The indication of references in the above cited passage merely concerns the proposed location (“… may be located …”) of the primers used for cloning the variable domain of the heavy chain. Therefore, a skilled reader, even if he had become aware of the specific primer in Table 1B of document D11 would not have considered relevant that this was an IgM specific primer. Under these circumstances the Board is of the opinion that the combination of this particular feature with the teaching of document D1 would not impose itself on the skilled person (see T 291/85). [6] Therefore, the Board comes to the conclusion that at least one feature of the process according to claim 4, i.e. that the design of the primer used for the PCR reaction is based on IgM sequences, is not directly and unambiguously disclosed to the skilled person in document D1. As a consequence, the subject-matter of claim 4 is to be considered novel within the meaning of A 54. To download the whole decision (in German), click here. The file wrapper can be found here.
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K’s Law – The ebook
T 620/08 - The Relic
T 620/08 - The Relic 7 Jun 2012
When grounds for opposition are raised for the first time after the time limit for filing oppositions has expired, the Opposition Division (OD) has some discretion not to admit them. However, even then a Board of appeal can later admit this very ground – even if the patent proprietor refuses its approval – if it comes to the conclusion that the OD had not exercised its discretion in a reasonable way. The present decision not only reminds us of these principles but also has some interesting statements on how to deal with definitions provided in the description of a patent. [3.1] The [opponent]’s opposition was originally only based on the ground of lack of inventive step. With letter dated 6 July 2007 the opponent filed documents D3-D7 and argued that the subject-matter of the patent in suit lacked novelty in view of documents D3, D4 and D7. [3.2] The OD decided not to admit the late-filed ground for opposition, since it found that none of the documents D3, D4 or D7 was prima facie relevant for the question of novelty. In the decision under appeal, under the point “Novelty”, the OD set out in detail the reasons why it considered that the subject-matter of the patent in suit was novel over these documents, which then led to its decision not to admit the late-filed ground for opposition. The [opponent] challenged the finding of the OD with regard to document D7. The objection of lack of novelty over documents D3 and D4 was not maintained. [3.3] The [patent proprietor] argued that since it was not admitted into the proceedings by the OD, the objection of lack of novelty was a fresh ground for opposition which could not be introduced without the agreement of the patentee and cited the decision G 7/95 in support of this argument. Approval was not given. [3.4] According to the jurisprudence of the Boards of Appeal (see G 10/91 [headnote3] and G 7/95), fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee. As can be derived from the Enlarged Board of Appeal’s argumentation G 10/91 [18], the term “fresh ground of opposition” means a ground which is relied upon for the first time in appeal proceedings (T 986/93 [2.3]). This, however, is not the case here. Novelty as a ground for opposition was relied upon and discussed during the opposition proceedings and forms a major part of the decision under appeal (T 986/93 [2.4]). Furthermore, a Board of Appeal is at least not barred from considering a late-filed ground for opposition which has been disregarded by the OD pursuant to A 114(2), if it is of the opinion that the OD exercised its discretion wrongly in this respect (T 986/93 [headnote]). The procedural decision of an OD to disregard submissions forms an essential element of its decision-making process and as such belongs to the issues subject to review when the final decision of the OD is challenged on its merits (T 986/93 [2.4]). [3.5] The OD considered that the moiety -NHC(=O)(CH2)(CH2)phenyl present in compounds 54a, 126, 129 or 130 did not fall within the definition of the residue R**(1) of claim 1 of the patent in suit, because the term “amino” was not to be construed broadly such as to encompass the aforementioned moiety. In its reasoning the OD recognised that, in principle, “the claims should be read giving the words the meaning and scope which they normally have in the relevant art, unless, in particular cases, the description gives the words a special meaning by explicit definition or otherwise”. In this context, the OD also recognised already that paragraph [0055] of the patent in suit might be understood as giving the term “amino” such a special technical meaning. Thus, the OD was already aware of the fact that, at first glance, lack of novelty over the disclosure of document D7 might be an issue, which, if established, could prejudice the maintenance of the patent in suit. It should thus have admitted this ground for opposition. Nevertheless, the OD considered that the term “amino” had no such special technical meaning for two main reasons:
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K’s Law – The ebook
T 620/08 - The Relic
Firstly, the broad definition of amino in view of paragraph [0055] of the patent in suit would have made the more specific definitions in claim 1, like -N(C1-C3alkyl)-C(=O)(C1-C3 alkyl), -NH-C(=O)-NH-(C1-C3 alkyl), -NHC(=O)-N(C1-C3alkyl)-C(=O)-NH(C1-C3 alkyl), C1-C3 alkylamino, etc., redundant, so that the skilled person attempting to make technical sense of the claim would expect that the term “amino” had its normal meaning. Secondly, the originally filed application was directed to a very broad class of compounds and paragraph [0055] was related to said broad class. The skilled person reading the description and the considerably restricted claims would realise that paragraph [0055] was a “relic” of the originally filed description which did not apply to the restricted set of claims as granted. [3.6] The OD’s first reason that the skilled person would understand that claim 1 would not contain at the same time a broad definition and a more specific definition encompassed by the broad definition is inconsistent with the facts. Claim 1 of the patent in suit obviously includes other examples for the simultaneous presence of broad and specific (i.e. redundant) terms, for example the term “-CF3” and the term “haloalkyl”. Other examples are the term “carboxy”, which refers to a group “-C(=O)O-”, and “carboxyl”, which refers to a group C(=O)OH, or “sulfonyl”, which refers to a group “-SO2-”, and “-SO2-(C1-C3)”. Thus, for the skilled person redundancy of terms is a feature of the present claims and no reason to attribute to a term a meaning other than that given to it in the patent in suit by explicit definition. Nor does the presence of redundant terms render present claim 1 technically meaningless. The second reason of the OD is also not supported by the facts. It is not apparent at all from the patent in suit itself that paragraph [0055] should be understood as a “relic” of the original application which does not apply to the claims of the patent in suit. Under the heading “Brief Summary of the Invention” the patent in suit refers to the compounds according to claims 1 and 3. This section is followed by a section with the heading “Detailed Description of the Invention” which starts with a clear “Definition of Terms”, including the term “amino (see paragraphs [0016]-[0054]). Paragraph [0055] refers to substituents of the “above terms”, which the skilled person would understand as applying to all the terms mentioned in paragraphs [0016] to [0054]. There is nothing in the patent in suit indicating that this paragraph was to be ignored. Also, the skilled person wishing to establish what is disclosed in the patent in suit is not required to consider the application as filed or consult the file history of the patent. However, even if the skilled person had done so in the present case, all he would have learned was that the original value Q, which was defined as “one or more rings”, was restricted to a oxo-pyridine ring which could be unsubstituted or substituted by R**(1). This restriction did not concern the definition of the terms as set out in paragraphs [0016]-[0055]. This is also apparent in the fact that neither the applicant nor the Examining Division considered it necessary to restrict or amend the “Definition of Terms”. [3.7] Thus, in view of the specific meaning of the terms given in the patent in suit, it appears to the Board that there are prima facie reasons for believing that the claimed subject-matter might not be novel over the disclosure of document D7. The Board therefore concludes that the OD did not exercise its discretion in a reasonable way and, therefore, erroneously decided to disregard novelty as ground for opposition. As a consequence, the Board is not barred from considering the issue of lack of novelty over document D7. [3.8] Concerning novelty of the claimed subject-matter, the Board agrees with the OD’s opinion that the claims should be read giving the words the meaning and scope which they normally have in the relevant art, unless the description gives the words a special meaning by explicit definition. Being a legal document a patent may be its own dictionary. It may define technical terms and determine how a skilled person has to understand a specific word when used in the description or the claims. Thus, the description may give a word or an expression, even an unequivocally clear one, which has a generally accepted meaning, a different meaning than the generally accepted one by explicit definition (T 556/02 [5.3]; T 416/87 [5]; T 500/01 [6]). [3.9] In the present case, the description of the patent in suit contains an entire section of over two pages with the heading “Definition of terms” at the beginning of the section with the heading “Detailed Description of the Invention” in which the meaning of the terms used in the patent in suit is explicitly defined (paragraphs [0016] to [0055]), including a definition of the terms “alkyl” and “amino”. It is, furthermore, made clear that these definitions apply throughout the complete patent specification, see the expression “the term … as used herein” in all the paragraphs [0016] to [0054]. Alkyl, for example, is defined as C1-C12 straight or branched saturated chain radicals, amino as NH2, both being optionally substituted (paragraphs [0016], [0040] and [0055] of the patent in suit). It would, therefore, be clear for any skilled reader that in the present case the meaning of any of these terms used in the description or the claims may differ from the meaning the skilled person would normally attribute to them. The Board sees no reason in the present case to disregard these unambiguous and explicit definitions for a proper
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understanding of the claims and to consider instead the generally accepted definition of alkyl, i.e. a moiety with the formula CnH2n-1 with n being an integer >=1 and amino, i.e. NH2. Accordingly, in the present case the specific definitions given in the description of the patent in suit will be taken into account in the examination of novelty over document D7. Please note, however, that not all the Boards share this understanding of the role of definitions as you can see here or here. I hope that sooner or later a Board will refer the question to the Enlarged Board (although I am not convinced that this will happen). Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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T 1242/06 – Tomatoes Again 6 Jun 2012
You certainly remember this case concerning a patent covering a process for breeding tomato plants as well as the fruit resulting from the process. The Opposition Division (OD) had maintained the patent in amended form, which triggered appeals of both the patent proprietor and the opponent. In an interlocutory decision issued on 4 April 2008, the board referred three questions of law to the Enlarged Board of Appeal (EBA). All questions related to the interpretation of the process exclusion contained in A 53(b), namely to the circumstances under which processes for the production of plants have to be regarded as “essentially biological”. The EBA answered the referred questions in its decision G 1/08. The patent proprietor then dropped the process claims. The Board found the main request before it not to comply with A 123(3) and then dealt with the first auxiliary request, claims 1 and 2 of which read: 1. A raisin-type tomato fruit of the species Lycopersicon esculentum which is naturally dehydrated, wherein natural dehydration is defined as wrinkling of skin of the tomato fruit when the fruit is allowed to remain on the plant after a normal ripe harvest stage, said natural dehydration being generally unaccompanied by microbial spoilage. 2. A raisin-type tomato fruit of the species Lycopersicon esculentum characterized by an untreated skin, dehydration of the fruit and wrinkling of the skin, said dehydration being generally unaccompanied by microbial spoilage. These were claims that had been filed during oral proceedings (OPs) before the OD and found allowable by the latter. The Board found this request to be admissible and to comply with the requirements of R 80 and A 123 as well as A84. It then examined the allowability of the request in view of A 53(b). This led the Board to make a second referral to the EBA. The questions the EBA is asked to answer are as follows: 1. Can the exclusion of essentially biological processes for the production of plants in A 53(b) have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit? 2. In particular, is a claim directed to plants or plant material other than a plant variety allowable even if the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application? 3. Is it of relevance in the context of questions 1 and 2 that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under A 53(b)? If you would like to know why the Board found this referral necessary, please read on: General [19] With respect to the area of plant breeding, A 53(b) contains two exceptions from patentability. It prohibits the patenting of, on the one hand, plant varieties and, on the other hand, essentially biological processes for the production of plants. When this board handed down its first interlocutory decision, both the proprietor’s main request and auxiliary request I then on file contained process claims directed to methods for breeding tomato plants as well as product claims directed to tomato fruits and tomato plants. Since the board considered that the 1240 | 3398
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interpretation of the process exclusion contained in A 53(b) needed clarification in the light of R 26(5), it referred corresponding questions to the EBA. [20] In view of the responses given by the EBA in G 1/08, [the patent proprietor] deleted the process claims so that the claim requests now on file are restricted to product claims directed to tomato fruits or tomato fruit products […]. Nevertheless, [the opponent] is of the opinion that the remaining product claims are still directed to subject-matter excluded from patentability by A 53(b). Its main lines of argument are firstly that the claims are directed to plant varieties which are excluded from patentability, and secondly that allowing these claims would counteract the process exclusion of A 53(b) as interpreted in G 1/08, thereby frustrating the legislator’s aim not to provide patent protection for the excluded plant breeding processes. Procedural aspects [21] When filing its notice of opposition, [the opponent] challenged both process and product claims of the granted patent as not complying with A 53(b) EPC 1973. In particular, it argued that the claimed tomato fruit had to be regarded as concerning an excluded plant variety. Thus, as also noted by [the patent proprietor] in its response to the notice of opposition, the ground for opposition under A 100(a) EPC 1973 in connection with the product exclusion under A 53(b) EPC 1973 was specifically raised already at the beginning of the opposition procedure. [22] During the OPs before the OD, [the opponent] did not maintain this objection when confronted with the newly introduced auxiliary requests II and IIIb then on file (which contained only product claims directed to tomato fruits). Nevertheless, the OD dealt with the objection in substance […] by stating that claims 1 and 2 of auxiliary request II were not limited to a single plant variety and were therefore allowable under A 53(b) and R 23b(4) EPC 1973. [23] Under these circumstances the objection under A 100(a) in conjunction with A 53(b) against product claims relating to tomato fruits cannot be regarded as a fresh ground of opposition which may be introduced in the appeal proceedings only with the proprietor’s consent according to G 10/91 and G 1/95 (see also T 275/05 [1]). [24] Although [the opponent] did not pursue the above objection in its grounds of appeal or in the response to the [the patent proprietor’s] grounds of appeal, it raised the objection again in the course of the first OPs before this board (which took place more than four years before the second OPs) and requested that questions of law relating to the interpretation of the product exclusion contained in A 53(b) be referred to the EBA. Furthermore, in its written submissions in the aftermath of the EBA’s decision G 1/08, [the opponent] presented several arguments as to why the product claims contained in [the patent proprietor’s] requests should be regarded as non-patentable under A 53(b). Since [the patent proprietor] therefore had ample opportunity to consider this objection and the supporting arguments brought forward by [the opponent], the board, using its discretion under Article 13(1) RBPA, admits and examines the objection in the present appeal procedure. The concept of plant varieties [25] Both the European legislator (see Article 2(3) of the Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions, OJ EPO 1999, 101, hereinafter “Biotech Directive”, and R 26(4)) as well as the EBA in its decision G 1/98 have contributed to clarifying the meaning of the term “plant varieties” contained in A 53(b). According to the definition provided by R 26(4), “plant variety” means any plant grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective of whether the conditions for the grant of a plant variety right are fully met, can be (a) defined by the expression of the characteristics that results from a given genotype or combination of genotypes, (b) distinguished from any other plant grouping by the expression of at least one of the said characteristics, and (c) considered as a unit with regard to its suitability for being propagated unchanged. Identical or very similar definitions are contained in the international and European legislative framework for the protection of plant breeders’ rights (see Article 5(2) Council Regulation (EC) No. 2100/94 of 27 July 1994 on Community Plant Variety Rights, hereinafter “CPVR Regulation”) and Article 1(vi) UPOV Convention 1991). [26] In accordance with the decision G 1/98 [3.1; 3.8], the reference in R 26(4)(a) to the expression of the characteristics that results from a given genotype or combination of genotypes is to be understood as a reference to the entire constitution of a plant or a set of genetic information. The concept of plant variety requires plant groupings defined by their whole genome, not merely by individual characteristics. The EBA has therefore held that a claim to transgenic plants that are characterised merely by specific recombinant DNA sequences is not directed to a plant variety. The relevant passages in decision G 1/98 read as follows:
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“In contrast, a plant defined by single recombinant DNA sequences is not an individual plant grouping to which an entire constitution can be attributed […]. It is not a concrete living being or grouping of concrete living beings but an abstract and open definition embracing an indefinite number of individual entities defined by a part of its genotype or by a property bestowed on it by that part. As described in more detail in the referring decision, the claimed transgenic plants in the application in suit are defined by certain characteristics allowing the plants to inhibit the growth of plant pathogens […]. The taxonomic category within the traditional classification of the plant kingdom to which the claimed plants belong is not specified, let alone the further characteristics necessary to assess the homogeneity and stability of varieties within a given species. Hence, it would appear that the claimed invention neither expressly nor implicitly defines a single variety, whether according to the definition of ‘plant variety’ in Article 1(vi) of the UPOV Convention 1991, or according to any of the other definitions of ‘plant variety’ mentioned above. This also means that it does not define a multiplicity of varieties which necessarily consists of several individual varieties. In the absence of the identification of specific varieties in the product claims, the subject-matter of the claimed invention is neither limited nor even directed to a variety or varieties.” [27] In the present case, the subject-matter of the claims of auxiliary request I is not directed to whole tomato plants, but to dehydrated tomato fruits. The question thus arises whether for that reason alone the claimed subject-matter might escape the exclusion of plant varieties. However, a plant variety may be represented not only by whole plants but also by propagating material such as seeds and by parts of plants. It is noted that Article 5(3) CPVR Regulation defines “variety constituents” as “entire plants or parts of plants as far as such parts are capable of producing entire plants”. In addition, Article 13(2) CPVR Regulation defines the rights of the holder of a Community plant variety right as covering specific acts in respect of variety constituents or harvested material of the protected variety. The UPOV Convention 1991 defines the scope of the breeders’ right primarily by enumerating certain acts in respect of the propagating material of the protected variety, but extends these rights under certain conditions also to acts relating to harvested material (see Article 14(1) and (2) UPOV Convention 1991). The board therefore concludes that claims which, as in the present case, are directed to plant fruits which contain seeds and which are therefore to be regarded as plant parts capable of producing entire plants may well in general fall under the patent exclusion of plant varieties contained in A 53(b). [28] The plant grouping to which the claimed tomatoes belong is restricted to plants belonging to the species Lycopersicon esculentum. Thus it is not as broad and generic as the plant grouping in the case underlying the decision G 1/98 where the claimed subject-matter was transgenic plants that, while being characterised by specific recombinant DNA sequences, could belong to completely different taxonomic categories within the traditional classification of the plant kingdom. [29] However, even a plant grouping of which the members all belong to a single plant species such as Lycopersicon esculentum is not necessarily a plant variety. There are currently several thousands of tomato varieties grown for various purposes, each tomato variety being based on an entire set of genetic information and having a number of specific features e.g. with respect to leaf type, plant type, plant height, plant size, season, fruit shape, skin colour, flesh colour, taste and resistance to plant diseases and pests. In contrast, in the present case the claimed tomatoes are not defined by a multitude of characteristics resulting in a given genotype, but only by one particular trait, i.e. (natural) dehydration. [30] The board is aware that a single trait may be sufficient to make a given plant grouping distinguishable from another very similar plant grouping not having that trait and thus provide a basis for the grant of a plant breeders’ right for that specific plant grouping if it qualifies as a new variety (which may be an essentially derived variety, see Article 14(5)(b) UPOV 1991 and Article 13(6) CPVR Regulation). Nevertheless, a single trait is in general not sufficient to define a plant variety without providing, apart from an indication of the species, any other indication about the actual genotype of the plant grouping. As already pointed out (point [26], above), the concept of plant variety requires plant groupings to be defined by their whole genome and not merely by a particular individual characteristic. It is therefore not sufficient that, as maintained by [the opponent] in the present case, the specific trait is inserted into the tomato plants in a stable manner so that it can be inherited by future generations. [31] The board acknowledges that the description of the patent in suit uses at some places the term “tomato varieties”, e.g. by stating that the development of tomato varieties with the trait of natural dehydration is highly valuable to the tomato industry […] or that selected plants may be crossed with other Lycopersicon esculentum cultivars to create varieties that incorporate characteristics other than reduced fruit water content […]. Furthermore, as described in Examples 1 and 2, specific Lycopersicon esculentum breeding lines were used in the breeding programme for developing naturally dehydrated tomatoes. Nevertheless, the subject-matter of the 1242 | 3398
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claims under consideration is not restricted to tomatoes of any of those specific varieties or breeding lines. The claims leave completely open what further characteristics the claimed naturally dehydrated tomato fruits and the plants on which they grow may have. [32] According to the patent description, the tomato fruits of the invention were developed by crossing and selection, i.e. “classical” plant breeding methods. However, this does not have the automatic consequence that they have to be regarded as a plant variety. The question as to whether a plant grouping constitutes a plant variety does not depend on how it was obtained, i.e. whether it was produced by genetic engineering technology or by more traditional breeding techniques based on crossing and selection. This was made clear by the EBA in the following passage of its decision G 1/98 [5.3] (see also T 1854/07 [10.4]): “As already emphasised by the referring Board, it does not make any difference for the requirements under the UPOV Convention or under the Regulation on Plant Variety Rights, how a variety was obtained. Whether a plant variety is the result of traditional breeding techniques, or whether genetic engineering was used to obtain a distinct plant grouping, does not matter for the criteria of distinctness, homogeneity and stability and the examination thereof. This means that the term ‘plant variety’ is appropriate for defining the borderline between patent protection and plant breeders’ rights protection irrespectively of the origin of the variety.” No extension of the exclusion of plant varieties to plants in general [33] Having ascertained that the claimed invention at issue was neither limited nor even directed to a variety or varieties, the EBA in its decision G 1/98 carefully considered in great depth the further issue as to whether the exclusion of plant varieties negatively affected the allowability of claims which included plant varieties as possible embodiments, i.e. whether it prohibited the patenting of subject-matter which, whilst not directed to a plant variety, embraced plant varieties. [34] The EBA found that there was no general principle according to which a claim would become automatically non-patentable if it encompassed an embodiment which did not comply with the requirements of the EPC. This principle applied only in certain contexts, in particular when examining novelty or inventive step, but not in others (e.g. when examining the requirement of sufficiency of disclosure or the exception to patentability pursuant to A 53(a) EPC 1973). [35] The EBA furthermore considered that the legislative reason for excluding plant varieties in A 53(b) EPC 1973 was to delimit patents and plant breeders’ rights as the two forms of protection for plant innovation, taking into account the ban on dual protection in the UPOV Convention in its version of 1961. It had been the legislator’s intention to consider plant breeders’ rights and patents as a single comprehensive system, so that the two forms of protection together permitted neither overlapping nor gaps in the protection of eligible subjectmatter. Inventions ineligible under the plant breeders’ rights system were thus intended to be patentable under the EPC provided they fulfilled the other requirements of patentability. The extent of the exclusion for patents was the obverse of the availability of plant variety rights. [36] The EBA concluded that it was not sufficient, for the exclusion of A 53(b) EPC 1973 to apply, that one or more plant varieties were embraced by the claims. Thus, a claim wherein specific plant varieties are not individually claimed is not excluded from patentability under A 53(b), even though it may embrace plant varieties. The EBA’s conclusion is corroborated by R 27(b) which was introduced into European patent law as R 23c(b) EPC 1973 in the course of implementation of the Biotech Directive and which states that biotechnological inventions shall also be patentable if they concern plants or animals if the technical feasibility of the invention is not confined to a particular plant or animal variety. [37] The EBA underpinned its legal analysis by emphasising that the broadly claimed subject-matter in the case underlying the referral, i.e. transgenic plants characterised by specific recombinant DNA sequences, could not be protected by a plant breeders’ right and that the inventor in the genetic engineering field would not obtain appropriate protection if he were restricted to specific varieties. Notwithstanding these particular arguments made in view of the specific technology involved, the EBA did not limit its above conclusion to situations where inventions based on genetic engineering are claimed. [38] Rather, the core of its reasoning was the consideration that the exclusion of plant varieties serves only to exclude from patentability those plant inventions which can be protected by plant breeders’ rights. To extend the product exclusion contained in A 53(b) generally to a plant invention which is not directed to a plant variety would be difficult to reconcile with this legislative purpose and could lead to undesirable gaps of protection. Whether the invention is in the area of genetic engineering (as in the case underlying decision G 1/98) or in the 1243 | 3398
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field of more traditional plant breeding, as in the present case, should therefore not make any difference when considering the effect of the exclusion of plant varieties on the patentability of the claimed subject-matter (see also T 1854/07 [10.4]). [39] The present board therefore takes the view that, if it only had to consider the exclusion of plant varieties in A 53(b), the subject-matter of the claims of auxiliary request I would not be excluded from patentability. Impact of the process exclusion on claimed subject-matter [40] However, the above conclusion does not yet terminate the analysis of the objections raised by [the opponent] under A 53(b) (see point [20] above). The board still has to address the further argument that, irrespective of the interpretation of the exclusion of plant varieties, it would be wrong to allow the claimed subject-matter to be patented, since this would render the exclusion of essentially biological processes for the production of plants completely ineffective, thereby frustrating the legislative purpose behind the process exclusion in A 53(b). [41] The meaning and the scope of this process exclusion were considered in detail in G 1/08 on referral in the present case. Although R 26(5) (which was introduced into European patent law as R 23b(5) EPC 1973 in the framework of implementation of the Biotech Directive) attempts to define the term “essentially biological process for the production of plants”, the EBA considered this provision as unclear and self-contradictory. Since R 26(5) did not provide any useful guidance on the interpretation of the above term, the latter had to be interpreted on its own authority. [42] The EBA came to the conclusion that any non-microbiological process for the production of plants which contains or consists of the steps of sexually crossing the whole genome of plants and of subsequently selecting plants is in principle excluded from patentability as being “essentially biological” within the meaning of A 53(b). Excluded processes are characterised by the fact that the traits of the plants resulting from the crossing are determined by the underlying natural phenomenon of meiosis which is responsible for the genetic make-up of the plants produced (see G 1/08 [6.4.2.3]). A process does not escape the exclusion of A 53(b) merely because it contains, as a further step or as part of any of the steps of crossing and selection, a step of a technical nature which serves to enable or assist the performance of the steps of sexually crossing the whole genome of plants or of subsequently selecting plants. An exception has to be made only with respect to processes which contain within the steps of sexually crossing and selecting an additional step of a technical nature, which step by itself introduces or modifies a trait in the genome. [43] In view of the above ruling, the deletion of all the method claims in [the patent proprietor’s] present claim requests […] did not come as a surprise. It follows from the principles stated in G 1/08 that the method claims in the patent as granted and in [the patent proprietor’s] claim requests at the time when the case was before the EBA fell under the process exclusion of A 53(b). For they were based on and contained steps of sexually crossing the whole genome of plants and of subsequently selecting plants by screening for reduced fruit water content, and none of them appeared to contain an additional step of a technical nature which by itself introduced or modified a trait in the genome. [44] [The opponent] took the view, however, that the deletion of the method claims was not sufficient to escape the process exclusion of A 53(b). Its line of argument can be summarised as follows. As a matter of legislative policy, it would not make any sense to exclude, on the one hand, essentially biological processes for the production of plants from patentability and to allow, on the other hand, patents on plants which, according to the disclosure of the invention, are produced by an excluded process. The legislator’s reasons for excluding these processes had to be respected and necessarily implied the exclusion of plants or plant parts that are produced by essentially biological processes. To hold otherwise would lead to an inconsistent legal framework. The EPC should not be interpreted in such a self-contradictory way even in the absence of an explicit provision excluding the products of essentially biological plant production processes. [45] The argument that allowing the product claims in the present case would be inconsistent with the legislator’s decision to exclude the processes specified in A 53(b) may, in the board’s view, be underpinned by considering the respective scope of protection conferred by product and process claims. According to established principles of patent law, the protection conferred by a product claim is absolute (see G 2/88 [5]) and the patent proprietor has in particular the right to exclude others from making or using the patented product (see decision G 2/06 [25]; Article 28.1(a) TRIPS Agreement and the corresponding provisions of the national laws of the contracting states). In contrast, the protection conferred by a process claim for making a product is narrower since it basically covers only the use of the process and the products directly obtained by it (see A 64(2), Article
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28.1(b) TRIPS Agreement). Hence, a claim to a product provides the patent proprietor with protection that generally encompasses the protection provided by a patent claim for the process of making the product. [46] If in the present case the product claims of auxiliary request I were allowed, any act of making and using the claimed dehydrated tomato fruits would in principle fall under the prerogative of the patent proprietor. This would have the consequence that the proprietor could prevent others from using the essentially biological plant breeding method which is taught in the description of the patent and which was the subject-matter of the deleted method claims. In fact, if one takes into account the features of the breeding method as defined in claim 1 as granted (“breeding tomato plants that produce tomatoes with reduced fruit water content comprising the steps of: crossing […]; growing plants from the first generation of hybrid seeds; […] growing plants from the seeds of the most recent hybrid generation; allowing plants [sic] to remain on the vine past the point of normal ripening; and screening for reduced fruit water content as indicated by extended preservation of the ripe fruit and wrinkling of the fruit skin”), it appears that this method cannot be performed without producing and using the tomato fruits claimed in auxiliary request I. [47] In view of the above considerations, the question arises whether allowing the product claims in the present case would effectively negate the legislator’s intention as identified in G 1/08 [6.4.2.3] “to exclude from patentability the kind of plant breeding processes which were the conventional methods for the breeding of plant varieties”. Disregarding the process exclusion in the examination of product claims altogether would have the general consequence that for many plant breeding inventions patent applicants and proprietors could easily overcome the process exclusion of A 53(b) by relying on product claims providing a broad protection which encompasses that which would have been provided by an excluded process claim. At least prima facie this would appear to be at odds with a purposive construction of A 53(b). Issue not settled by decision G 1/98 and R 27(b) [48] In the board’s view, decision G 1/98 did not deal with this line of argumentation, either explicitly or implicitly. It is true that the EBA came to the conclusion that a claim wherein specific plant varieties are not individually claimed is not excluded from patentability under A 53(b) EPC 1973, even though it may embrace plant varieties (see point [36] above). However, the reasons underlying this conclusion only concerned the meaning and the scope of the exclusion of plant varieties. The issue of a possible impact of the process exclusion in A 53(b) EPC 1973 on claims for plants or plant material was not addressed. This can be explained by the fact that the case underlying the referral leading up to decision G 1/98 concerned transgenic plants that were produced by modern genetic technology, rather than by a breeding method based on crossing and selection. [49] In a similar vein, R 27(b) is understood by the board as aiming at restricting the scope of the product exclusion in A 53(b), not of the process exclusion. If the legislator had intended to clarify that products obtained by essentially biological plant production processes, other than a plant variety, should not be excluded from patentability, then this could have been expected to be expressed in R 27(c) (according to this provision, products obtained by means of a microbiological or other technical process other than a plant or animal variety are to be regarded as patentable). However, this was not done. The board furthermore considers that, in the light of A 164(2), it appears questionable whether a provision of the Implementing Regulations could mitigate an effect which a provision of the Convention would have if interpreted on its own authority. Interpretation of other process exclusions - the example of R 28(c) [50] The case law shows that there are situations where an exclusionary provision referring to specific processes or uses may have an impact on the allowability of product claims. According to R 28(c), European patents shall not be granted in respect of biotechnological inventions which concern the uses of human embryos for industrial or commercial purposes. In its decision G 2/06 the EBA concluded that this provision forbids the patenting of claims directed to products which - as described in the application - at the filing date could be prepared exclusively by a method which necessarily involved the destruction of the human embryos from which said products are derived, even if the said method is not part of the claims. The patent applicant’s counter-argument that, in order to fall under the prohibition of R 28(c), the use of human embryos must be claimed was dealt with in point [22] of the reasons for the decision as follows: “However, this Rule (as well as the corresponding provision of the Directive) does not mention claims, but refers to ‘invention’ in the context of its exploitation. What needs to be looked at is not just the explicit wording of the claims but the technical teaching of the application as a whole as to how the invention is to be performed. Before human embryonic stem cell cultures can be used they have to be made. Since in the case referred to the EBA the only teaching of how to perform the invention to make human embryonic stem cell cultures is the use (involving their destruction) of human embryos, this invention falls under the prohibition of Rule 28(c) […]. To restrict the 1245 | 3398
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application of Rule 28(c) […] to what an applicant chooses explicitly to put in his claim would have the undesirable consequence of making avoidance of the patenting prohibition merely a matter of clever and skilful drafting of such claim.” [51] The corresponding provision of the Biotech Directive was interpreted in a similar manner by the European Court of Justice (ECJ) in its decision C-34/10 of 18 October 2011 (Oliver Brüstle v. Greenpeace e.V.). In response to the third question referred to it by the German Federal Supreme Court, the ECJ concluded that Article 6(2)(c) Biotech Directive excluded an invention from patentability where the technical teaching which was the subject-matter of the patent application required the prior destruction of human embryos or their use as base material, whatever the stage at which that took place and even if the description of the technical teaching claimed did not refer to the use of human embryos. In the ECJ’s view, not to include in the scope of the exclusion technical teaching claimed, on the ground that it does not refer to the use of human embryos, would make the provision concerned redundant by allowing a patent applicant to avoid its application by skilful drafting of the claim. [52] The board is aware that, due to the different legislative purposes of the patentability exceptions under A 53(a) and (b), the above considerations do not necessarily apply mutatis mutandis to the interpretation of the process exclusion of A 53(b). Nevertheless, they demonstrate that situations exist where an exclusion referring to specific processes (according to the EBA’s case law “uses” are regarded as a sub-class of processes, see e.g. decision G 5/83 [11]) may negatively affect the allowability of product claims. Arguments against a negative effect of the process exclusion on product claims [53] The board considers that the following interrelated lines of argument against extending the effect of the process exclusion in A 53(b) to product claims need to be addressed:
Issues of patentability (including the applicability of an exclusionary provision) should be determined strictly in relation to the subject-matter of the claim to be examined. The subject-matter of product claims is different from that of process claims, so that it is justified to treat them differently when determining what is patentable and what is not. The difference in subject-matter should not be smoothed out by taking into account the scope of protection or the proprietor’s prerogatives conferred by the claims, since this would amount to an impermissible mixing of two bodies of rules, i.e. those concerned with the patentability of inventions and those concerned with patent infringement.
The following considerations are of relevance for addressing these lines of arguments. [54] As pointed out in the EBA’s decision G 2/88 ([2.2; 2.6], the subject-matter of a claimed invention involves two aspects: first, the category or type of the claim, and second, the technical features, which constitute its technical subject-matter. Basically two types of claim have to be distinguished, namely claims to a physical entity (e.g. product, apparatus) and claims to a physical activity (e.g. method, process, use), although there are no rigid demarcation lines between the various possible forms of claims. Consequently, the subject-matter of a process claim for the production of plants (which relates to a physical activity) and that of a product claim for plants or plant parts (which relates to physical entities) are not identical. [55] The difference of subject-matter between product and process claims is inter alia of importance when the patentability requirements of novelty and inventive steps are examined. While a product claim can only be allowed when the claimed product is new and inventive, a claim to a manufacturing process for a product may comply with the requirements of novelty and inventive step even where the product to be manufactured does not fulfil these requirements itself. Since an invention underlying a product claim therefore has to have an “inventive quality” which is not the same as that of an invention underlying a process claim, it may be argued that, when framing the exclusionary provision of A 53(b), the legislator made a deliberate differentiation by excluding only certain plant breeding processes, but not all the products produced by those processes. [56] However, the process exclusion itself does not distinguish between processes which lead to new and inventive plants and those processes which do not. Rather, it excludes them all. This uniform approach is reflected in the legislative history, during which it was explained that the (essentially) biological processes for the production of plants or animals should include those which may produce known varieties as well as those which may produce new ones (see G 1/08 [6.4.2.2]). It appears furthermore that, when new and inventive subject-matter is developed in the context of a plant breeding invention based on the natural phenomenon of meiosis, it will very often be possible to formulate process and product claims which both comply with the 1246 | 3398
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requirements of novelty and inventive step. The argument of a distinctive inventive quality of product inventions justifying their general allowability notwithstanding the general non-allowability of process claims therefore does not seem to be convincing in the present context. [57] In decision G 1/98 […]the EBA dealt with an issue which may be considered to be the obverse of the present core issue: it analysed a possible impact of the product exclusion in A 53(b) EPC 1973 on the examination of process claims, namely the question as to whether, in view of A 64(2) EPC 1973, the exclusion of plant varieties should be a bar to process claims when the products directly obtained by such processes were or covered plant varieties. The EBA gave a negative answer to this question and pointed out that the protection of the product obtained by a patented process was of particular importance in situations where product protection was not available. Thus, when a claim to a process for the production of a plant variety is examined, A 64(2) EPC 1973 should not be taken into consideration. [58] It is apparent that the protection conferred by A 64(2) on any process for the production of a plant variety is limited to the variety directly obtained by the process and thus considerably narrower than the protection which would be conferred by a product claim to the variety. As emphasised by the EBA in decision G 1/98 [4], the protection of the product obtained by a patented process has nothing to do with product-by-process claims, which belong to the category of product claims. It may be inferred from this that a legal framework does not lack consistency if it disallows the broader protection conferred by product claims while allowing the narrower protection conferred by process claims. [59] The core issue of the present case, however, is quite different, since not taking into account the process exclusion of A 53(b) when examining product claims may lead to a situation where the legal framework disallows the narrower protection conferred by claims on essentially biological plant production processes while allowing the generally broader protection conferred by product claims. The EBA’s above-mentioned finding in decision G 1/98 can therefore not simply be extrapolated to the present case. [60] European patent law clearly distinguishes between issues of patentability, which are governed by the EPC, and issues of infringement, which are a matter for the legislation of the contracting states. The process exclusion of A 53(b) belongs to those provisions which determine what can be patented under the EPC. It is not a provision exempting specific activities from the rights conferred by patents and therefore does not completely shield those who use an essentially biological process for the production of plants from infringing patent rights. [61] Already at an early stage in the legislative history of Article 2(b) Strasbourg Convention (on the Unification of Certain Points of Substantive Law on Patents for Invention) and A 53(b) it was recognised and accepted that technical devices used in an excluded process (e.g. a particular type of instrument for use in a grafting process or a special greenhouse for growing a plant) may perfectly well be patented themselves (see in particular document EXP/Brev 61(8), pages 4-5, as cited in decision T 83/05 [40], and summarised in G 1/08 [6.4.2.2]). The legislator apparently did not see any inconsistency in allowing patent protection for these devices, notwithstanding the consequence that the proprietor’s prerogatives may then encompass the use of the patented devices in an excluded process. [62] A similar approach appears to underlie A 53(c) which, on the one hand, excludes certain surgical, therapeutic and diagnostic methods from patentability and, on the other hand, stipulates that products, in particular substances or compositions, for use in any of these methods are patentable. This has the consequence that, although the exclusion of medical methods by A 53(c) is commonly explained by the legislator’s aim to free the medical profession from possible constraints imposed on them by patents (see e.g. decision G 1/07 [3.2.3.2]), medical practitioners who use such products in a medical method excluded per se may well infringe patents (see decision G 2/08 [6.5] in the context of dosage regimes). [63] It follows from the above that a process exclusion cannot have the general effect of precluding patents on any product that can be used in the excluded process. This also appears to be justified from the point of view of legal policy. As there will normally be a market for lawfully produced and commercialised products to be used in excluded processes (e.g. plant greenhouses or medicaments), those who want to use these products in their professional activities (e.g. plant breeders or medical practitioners) will be able to acquire them. Using these products put on the market with the consent of the patent proprietor will then be exempted from patent infringement pursuant to the doctrine of exhaustion. [64] In the present case, however, a product is claimed which is being made (i.e. not only used) when an excluded process is performed. The breeding method disclosed in the patent necessarily implies the production of the claimed tomatoes (see point [46] above). Plant breeders who perform this essentially biological process would fall into the scope of protection of [the patent proprietor’s] patent without being able to invoke the 1247 | 3398
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doctrine of exhaustion. They would also be prevented from commercializing the tomatoes obtained through the breeding method. If [the patent proprietor’s] product claims were allowed, then plant breeders would be more severely restricted in performing essentially biological processes than in the above-mentioned situation where (merely) a product to be used in the course of this activity was patented. [65] Summing up, the board is not fully convinced by the arguments reviewed above against considering the process exclusion of A 53(b) in the examination of claims for plants or plant material. Serious concerns remain that allowing claims to plant material which, according to the disclosure of the patent, is obtained by means of an essentially biological breeding process would de facto frustrate the legislator’s intentions in framing the process exclusion, which were emphasised in G 1/08, and make the circumvention of the exclusion in many cases a matter of skilful claim drafting, thereby diminishing the consistency and persuasiveness of the legislative framework of the EPC as regards patentable subject-matter. [66] In the board’s view, these concerns can equally not be overcome by pointing out that national legislators, insofar as this is permitted under the Biotech Directive, might be able to introduce specific exemptions for plant breeding activities into their national infringement provisions (see e.g. Article L 613-5-3 French Intellectual Property Code and § 11 No. 2a German Patent Law). Courts should aim at interpreting the EPC provisions on patentable subject-matter in a consistent manner, wherever possible. To rely on the possibility that inconsistencies might be partially remedied by national infringement provisions appears to the board to be the second-best solution. Referral under A 112(1) [67] The board is of the opinion that the issues analysed above under points [40] to [66] raise points of law of fundamental importance and that a decision of the EBA on them is required in order to dispose of the present appeals on a correct legal basis. [68] While there are further grounds of opposition in the present appeal procedure which the board has not yet fully examined, the issue as to whether the claimed subject-matter is excluded from patentability conceptually precedes the assessment of other substantive requirements such as novelty or inventive step and is therefore normally determined first. This has also been noted in decision T 1384/06 [5] (“[…] it must be investigated whether such subject-matter falls within the category of exceptions to patentability. Obviously, this should be done as the first step in the examination because there is absolutely no point in assessing whether or not a subject-matter which is decided to be an exception to patentability fulfils the requirements for patentability.”). [69] Similarly, it was found in decisions G 1/03 [1.2] and G 2/10 [1] that a referral concerning the conditions under which a disclaimer complies with A 123(2) is justified since formal allowability is normally examined before substantive requirements. [70] The board notes in addition that the issue of a possible impact of the process exclusion in A 53(b) on the allowability of product claims does not only arise in view of auxiliary request I; it is also highly relevant for all other pending requests of [the patent proprietor]. [71] The board has therefore not followed [the patent proprietor’s] suggestion that it proceed with the examination of these other requirements before referring questions of law to the EBA. [72] The questions of law referred by the board with its first interlocutory decision were limited to the issue as to whether certain plant production processes fall under the process exclusion of A 53(b). The EBA was therefore not provided with the opportunity to address the further issue now at stake. [73] Indeed, when the board took that first interlocutory decision, the current issue had not yet emerged, at least not clearly. Insofar as the decision under appeal and the submissions of the parties dealt with the allowability of the product claims under A 53(b), they focused only on the scope of the exclusion of plant varieties. Since the board was - and still is (see point 39, above) - of the opinion that the EBA had already sufficiently clarified the interpretation of the exclusion of plant varieties in its decision G 1/98, it refrained from following the suggestion made by [the opponent] in the first OPs to refer an additional question concerning that interpretation. [74] The issue now at stake, i.e. a possible negative effect of the process exclusion contained in A 53(b) on the allowability of [the patent proprietor’s] product claims, differs from the issues considered by the board in its first interlocutory decision. It has come up as a result of the EBA’s decision G 1/08 which, as summarised above (points [41] and [42]), has given the process exclusion a broad reading, and of the parties’ submissions made in the aftermath of that decision. Fully aware of the unusual character of such a course of action, the board 1248 | 3398
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K’s Law – The ebook
therefore decides to refer again questions of law to the EBA. In formulating them, the board has taken into account the suggestions made by [the opponent] […], while submissions by third parties after the closure of the debate on this issue at the end of the OPs have been disregarded. […] The following questions are referred to the EBA for decision: 1. Can the exclusion of essentially biological processes for the production of plants in A 53(b) have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit? 2. In particular, is a claim directed to plants or plant material other than a plant variety allowable even if the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application? 3. Is it of relevance in the context of questions 1 and 2 that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under A 53(b)? To download the whole decision, click here. The
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NB: A French summary and translation of the questions can be found here.
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T 2076/11 – The Missing Chairman
K’s Law – The ebook
T 2076/11 – The Missing Chairman 5 Jun 2012
This appeal was against the revocation of the opposed patent by the Opposition Division (OD). The revocation had been announced at the end of oral proceedings (OPs) before the OD, on September 15, 2010. The written decision and minutes of the OPs were sent to the parties on the same day. On form 2339, which was to be signed by the members of the OD the name of the chairman was crossed out and replaced by another name, followed by “Direktor 2206”.
Also, on form 2309.2 of the minutes, the name of the chairman was crossed out and the same name, preceded by “i.V” (short for “in Vertretung”, German equivalent of “per pro”) was inserted.
As you might have expected, this formal problem led the Board to set aside the decision: *** Translation of the German original *** Deficient signing of the written decision [1] Pursuant to R 113(1) decisions of the EPO shall be signed by, and state the name of, the employee responsible. A written decision which reproduces the reasons of a decision of revocation announced beforehand during OPs has to be signed by the members of the OD that had participated in taking the orally announced decision – and by them only. The signatures are to be considered as evidence that the written decision was taken and endorsed by the members of whom the OD was composed (established case law of the Boards of appeal, see T 390/86 [7], see also Singer/Stauder, EPÜ, 5th edition, A 116, marginal number 73). [2] In the present case the written decision was not signed by the chairman of the OD, who, according to the minutes, had conducted the OPs and had announced the decision, but by the director of organisational unit 2206. However, the director had not been part of the OD that had taken the oral decision on the opposition. [3] It is not clear from the file whether the chairman of the OD had been prevented from signing the written decision. But even if this had been the case, the director of an organisational unit should not have signed in his place. The correct way of proceeding in such cases can be derived from the case law of the Boards of appeal. As a rule, it is then sufficient that the remaining members of the division sign and that the reason for the missing signature of the member who is prevented [from signing] are stated (see, e.g. T 1170/05). This way of proceeding corresponds to the provision of Article 8(3) RPBA according to which a member who is unable to act after the Board has reached a final decision shall not be replaced by an alternate. Under no circumstances can the
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signature of a member who has been prevented [from signing] be replaced by the signature of a person that had not belonged to the OD having taken the oral decision. [4] It follows from all this, in agreement with the established case law, that the signature of the written decision of the OD by the director who had not been designated to decide on the opposition, constitutes a substantial procedural violation. For this reason the impugned decision is to be set aside and the case is to be remitted to the OD pursuant to Article 11 RPBA without any substantial examination of the case. [5] Contrary to the opinion of the [patent proprietor] the effect of the decision to set aside [the former decision] is not only to clarify the situation – it also has a constitutive legal (rechtsgestaltend) effect, because the missing signature alone does not result in the first instance decision having to be considered non-existent or void (see T 1093/05 [6] and the references therein on the general question of whether a decision that is based on a substantial procedural violation has to be considered void). [6] Therefore, the appeal is to be allowed and the impugned decision has to be set aside. Moreover, the appeal fee is to be reimbursed pursuant to R 103(1)(a). Deficient signing of the minutes of the OPs [7] Pursuant to R 124(3) the minutes shall be signed by the employee responsible for drawing them up and by the employee who conducted the OPs or taking of evidence. In the present case the minutes have been signed by the director instead of the chairman who had conducted the OPs. This constitutes another procedural violation. Further proceedings [8] The Board does not see any need for going beyond the remittal pursuant to A 111(1) by commenting the further steps to be taken by the first instance and by fixing conditions (Vorgaben) for the future composition of the OD: as far as can be seen from the file, the composition of the OD that had taken the oral decision had not violated A 19(2). The objection of the [patent proprietor] according to which the decision of the OD could have been influenced by the hierarchy (Vorgesetzte) – which objection has not been elaborated – is not sufficient reason to challenge the original composition of the OD. As a rule, the first instance alone is competent for deciding on the composition of the OD. Should you wish to download the whole decision (in German), just click here. To have a look at the file wrapper, click here. Related decisions can be found here and here.
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T 1416/10 – Korean Washing
K’s Law – The ebook
T 1416/10 – Korean Washing 4 Jun 2012
This appeal against the revocation of the opposed patent contains an interesting passage on an alleged prior use. The Board considered that this prior use was established beyond all reasonable doubt although some elements of the prior use were not supported by evidence. What has been made available, when and under which circumstances? [2.2.1] It was not disputed by the [patent proprietor] that the washing machine with the model number WDR100C dismantled by the respondent as documented by the set of photographs of Appendix B comprises all features of claim 1 of the patent as granted. [2.2.2] It was also not disputed that this dismantled machine was manufactured in October 2003 as may be seen from the printed label on several of these photographs. There is however no evidence on file as to when and under what circumstances this particular dismantled machine was made available to the public. The Board considers it nevertheless improbable that this washing machine would have have been stored for at least one month by the manufacturer before being delivered to a commercial distributor only after the relevant date, taking into account that machines of this model were already commercially available at that time, as will be shown below. [2.2.3] Document A6 is a report on a price survey for a number of consumer products conducted by the Korean National Council of Consumer Organisations. Amongst the products covered by it is the washing machine WDR100C. According to this report the survey was conducted from 6 to 10 October 2003 to provide consumers with the exact price information for a rational decision in their purchase. It was carried out in a number of department stores located in Seoul, i.e. on the street (pages 1/2 of the translation of A6 list several shopping centres/malls, department stores etc.). Based on this (again uncontested) evidence and in view of the fact that it is indeed the purpose of a department store to have the real product in its showroom in order to allow potential buyers to get a direct impression of the product compared to that from e.g. a catalogue or an internet shopping site, the Board cannot conclude that the same washing machines WD-R100C were delivered to these distributors and were physically standing at least in some of these places for an unconditional sale to the public only at a later point in time. Absent any indication to the contrary, it is hardly conceivable that a survey, such as in A6, conducted by a consumer organisation and intended to assist consumers by demonstrating the price variations amongst specific distributors would select products which were not (yet) available on the market. Consequently, it has to be concluded that washing machines with model number WD-R100C have been available for public sale with the distributors reported in A6 in the survey period, 6 to 10 October 2003, and thereby available within the meaning of A 54(2) to the public before the relevant date, that is 2 December 2003. A11 confirms the conclusions drawn from A6. It contains the following statement made by the deciding body (text in square brackets added by the Board): … it is acknowledged that the company of the defendant [the appellant in the present case] had manufactured and sold the drum-type washing machine of model name “WD-R100C” before the filing date (December 2, 2003) of the patented invention of the subject case, and there is no dispute between the two parties regarding the subject issue. Accordingly, the [patent proprietor] in the present case agreed before the Korean Intellectual Property Tribunal that washing machines with model name WD-R100C were publicly available prior to the second priority date of the patent. The [patent proprietor] did not contest this statement. Also the remaining evidence in A1 to A5, A7 and A8, which shows indeed some inconsistencies with respect to “release dates”, is not suitable to cast doubt on the conclusions drawn from A6 and confirmed by A11. It appears even that, as far as A1 to A5, A7 and A8 indicate dates of delivery or release (“coming out”), these dates lie clearly before the relevant date of the patent in suit, e.g. A7, a printout from the [patent proprietor’s] Customer Service web page, reports a “Coming-out date” of 11 August 2003. The [patent proprietor] as the manufacturer 1252 | 3398
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of the product constituting the prior use should have been able to provide convincing evidence for a later release, had this been the case. The evidence therefore shows beyond any reasonable doubt that washing machines with the model number WDR100C, were publicly available prior to the relevant date of the patent in suit. [2.2.4] The Board accepts that products already on the market may be subject to design changes while keeping their model name or number. In the absence of any evidence to the contrary, the Board is however convinced that within the short period of interest, set by the manufacturing date of the dismantled washing machine in October 2003, the period in which the survey in A6 was conducted, 6 to 10 October 2003, and the relevant date of the patent in suit, 2 December 2003, a design change of the structure of the washing machine with model number WD-R100C in regard to the features defined in claim 1 of the patent in suit, which notably relate to the connection between the drive unit and the tub and hence concern a major structural element of the washing machine design, is excluded beyond all reasonable doubt. Appendices A and A12 submitted by the [patent proprietor] to support the allegation of design changes are not suitable to cast doubt on the assumption of an unmodified structure of the machines referred to in A6 and A11 and disclosed in the photographs B. The [patent proprietor] did not establish a clear link between the content of Appendix A and the relevant features of a washing machine, let alone to features concerning the particular structures and alleged changes in the assembly of motor parts, shaft bearing and tub of the model WD-R100C. The modification pointed out by the [patent proprietor] in the photographs of A12 […] concern only the type of stator core used in the washing machine with model number WD-R100C, which has no impact at all on the mounting design of the stator to the tub rear wall. Indeed, as can be seen from the remaining photographs in A12 […], the assembly of the drive unit and the tub rear wall is in no way affected by any modification compared to the machine in Appendix B. If it were the case, as argued by the [patent proprietor], that in the short period before the relevant date of the patent a washing machine with the same model number but different assembly of drive unit and tub rear wall was on the market and that the machine shown in Appendix B was not already on the market, which would go completely against normal practice, the [patent proprietor] as the manufacturer of such product should have clearly been in the position to provide evidence for it. The [patent proprietor] however provided no evidence to this effect. In other words, there is no evidence on file which casts doubt on the fact that the machines WD-R100C referred to in A6 or A11 and the one of Appendix B were identical with respect to the features of claim 1. [2.2.5] As regards the decision T 2043/07 referred to by the [patent proprietor], the Board notes that the facts underlying that decision are different from those of the present case, and further that in that case, as stated by the [patent proprietor] with regard to the applicable standard of proof, “it was immaterial which test was to be applied” and, last but not least, that the [patent proprietor] (proprietor) in the present case is not adversely affected by the application of the stricter standard of proof “beyond reasonable doubt”. In T 1464/05 [5.3.1], also cited by the [patent proprietor], the Board concluded that although subsequent modifications of the composition cannot be excluded ..., there is no indication that the modifications would have been sufficiently significant to affect the present conclusions”. A similar conclusion was reached by the Board in the present case (see [2.2.4] above), in that no modification of (relevant) features of washing machines with the same model number (“WD-R100C”) during the critical period could be established. [2.2.6] In summary, although for the specific washing machine dismantled by the opponent […] there is no proof on file that it was indeed available to the public prior to the relevant date of the patent in suit, notwithstanding that it is already highly unlikely that this specific machine manufactured in October 2003 remained with the manufacturer more than one month before being delivered for sale to a distributor, the evidence submitted by the opponent allows to conclude beyond any reasonable doubt that washing machines with the model number WDR100C, being identical in structure with respect to the features defined in granted claim 1 to those disclosed in Appendix B, were publicly available prior to the relevant date of the patent in suit. [2.3] The public prior use relating to a washing machine with model number WD-R100C as established on the basis of Appendices A6, A11 and B thus forms part of the state of the art according to A 54(2). Novelty
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T 1416/10 – Korean Washing
K’s Law – The ebook
[3] Since it was not contested by the [patent proprietor] that the washing machine with model number WDR100C constituting the established public prior use, as exemplified in Appendix B, comprises all features of claim 1 of the patent in suit and since the Board finds no reason to conclude otherwise, the subject-matter of claim 1 lacks novelty (A 54(1)) and the [patent proprietor’s] main request is therefore not allowable. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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T 1239/08 – Guidance Required
K’s Law – The ebook
T 1239/08 – Guidance Required 2 Jun 2012
The present appeal of the opponent against the maintenance of the opposed patent in amended form contains interesting passages on novelty and the choice of the closest prior art. [4.1] According to the [opponent], claim 1 of the main request lacked novelty over document D2, particularly over example 12 in combination with the general disclosure in column 3, line 58 to page 4, line 2 and more particularly the disclosure in column 3, lines 66-73. [4.2] Claim 1 of the main request is directed to a dispersion of insoluble particles in a liquid vehicle with the features (a) to (d) […]. According to feature (d) the insoluble segment of the polymer dispersant has crosslinking moieties which are cross-linked to at least one cross-linkable component which is insoluble in the liquid vehicle and is selected from itself or a polyfunctional mono-, oligo- or polymer to form an encapsulation network. [4.3] Example 12 of document D2 discloses the preparation of a predominantly aqueous pigment dispersion using as a polymer dispersant a copolymer with a relatively hydrophobic main chain (corresponding to the insoluble segment(s) in step (c) of the presently claimed subject-matter) derived from methyl methacrylate, a small amount of methacrylic acid and the acrylate part of the Carbowax 750, and pendent relatively hydrophilic side chains (corresponding to the soluble segment(s) in step (c) of the presently claimed subject matter) of the polyethylene blocks derived from Carbowax 750, which provide water-dispersibility. In a first step a copolymer solution in isopropanol and methyl ethyl ketone is prepared. Into this solution are ground titanium dioxide pigments. Then water is slowly added under vigorous stirring (i.e. the polarity is changed from “strong polar” to “intensely polar”, which is sufficient to precipitate the less polar polymeric component […] and a fine stable pigment dispersion is obtained, which does not flocculate upon addition of further quantities of water. The copolymer of example 12 is a graft polymer according to the IUPAC definition provided in document D11, which was not disputed by the [patent proprietor] during oral proceedings. Thus, example 12 discloses a particle dispersion with the features (a) to (c). The feature that is clearly missing however, is the cross-linking in the precipitated (i.e. insoluble) component, as required for the insoluble segments in the feature (d) of claim 1 of the main request. This was acknowledged by the [opponent] […]. [4.4] The part of the description of document D2 relied on by the [opponent] describes as a further embodiment of the invention the possibility of cross-linking the precipitated component with itself. This requires the presence of cross-linkable groups within the precipitated component. In column 3, lines 66-73 of document D2, it is disclosed that for this purpose a suitable precipitated component of the block or graft polymer would be a random copolymer of methyl methacrylate, methacrylic acid and glycidyl methacrylate, which is subsequently cross-linked by heating the dispersion to approximately 150°C. An alternative component would be a random copolymer of acrylate and methylol acrylamide which can be cross-linked by the same heat treatment. [4.5] The Board notes that it is indeed established jurisprudence of the Boards of Appeal regarding the examination of novelty that the teaching of a document is not limited to the detailed information given in the examples, but embraces the disclosure of that document as a whole (see e.g. T 666/89, T 565/90 or T 941/98). Nevertheless, it is a general and consistently applied principle of the Boards of Appeal that for deciding lack of novelty there must be a direct and unambiguous disclosure in the state of the art which inevitably leads the skilled person to subject-matter falling within the scope of the claims. Thus, for the examination of novelty, different passages in a document can only be combined if there is a clear disclosure leading the skilled person to combine them. [4.6] In the present case there is no such disclosure. The Board notes that the precipitated component in the copolymer of example 12 of document D2 cannot be cross-linked within itself due to the absence of suitable cross-linkable groups, like glycidyl methacrylate or methylol acrylamide. Furthermore, the Board notes that the cross-linking procedure of heating the particle dispersion to 150°C as described in column 3, lines 66-73 and illustrated in example 7 of document D2 would not be directly applicable to the aqueous dispersion of example 12 in view of the temperature of 150°C in the cross-linking procedure. Without additional adaptation this cross1255 | 3398
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K’s Law – The ebook
linking temperature is incompatible with the liquid vehicle disclosed in example 12 comprising water, isopropanol and methyl ethyl ketone with boiling points well below 150°C. The skilled person therefore had no reason to apply the specific embodiment of cross-linking the precipitated component disclosed in columns 3/4 of document D2 to the specific embodiment of example 12 in which neither the polymer nor the liquid vehicle are suitable for the described cross-linking process. [4.7] In support for its argument that the combination of example 12 and the general teaching regarding crosslinking is permissible, the [opponent] cited the decision T 332/87. In this decision it is stated that “In general the technical teaching of examples may be combined with that disclosed elsewhere in the same document, e.g. in the description of a patent document, provided that the example concerned is indeed representative for the general technical teaching disclosed in the respective document” (T 332/87 [2.2]). The [opponent] argued that example 12 is in perfect accordance with the general teaching in document D2 and thus perfectly combinable with the disclosure of cross-linking. It further pointed out that the Opposition Division (OD) has used an analogous reasoning in point 5.2, and especially 5.2.3, of the decision under appeal with regard to lack of novelty of the then pending main request in view of document (1). [4.8] In the Board’s view, the case underlying the decision T 332/87 cannot be compared with the present case. In decision T 332/87 all examples including those which as a result of a combination with the description were considered as anticipating the claimed subject-matter were considered to be equivalent and directly compatible with the teaching of the description. In the present case, with regard to the embodiment of cross-linking not all examples are equivalent. Example 12 as explained in point [4.6] above cannot be cross-linked according to the process disclosed in the description without requiring additional modifications. Whether or not such modifications would be obvious for the skilled reader, i.e. whether or not, as argued by the [opponent], the skilled person would be taught how to modify example 12 to render it cross-linkable, if desired, is not a question related to novelty, but an issue to be examined in the assessment of inventive step. Decision T 332/87 cannot, therefore, support the [opponent’s] case. Nor is the OD’s decision concerning lack of novelty of previously claimed subject-matter in view of a different prior document relevant in this context. [4.9] In this context, the [opponent] also submitted that there were no technical reasons why the cross-linking temperature was inappropriate given the fact that the claimed scope covered liquid vehicles containing up to 50% of any organic solvent including those with high boiling points and that the duration for the cross-linking was only 15 minutes. In addition, the [opponent] referred to document D4 which suggested cross-linking of aqueous dispersions under increased pressure “at on the order of 100°C to 150°C in some cases”. [4.10] The fact that high boiling solvents are included in the presently claimed scope is immaterial for the examination of whether or not example 12 of document D2, which uses low boiling solvents, in combination with the disclosure in columns 3/4 directed to cross-linking anticipates the claimed subject-matter. With regard to the [opponent’s] reference to document D4 the Board notes that according to established case law, when examining novelty combining separate pieces of prior art is only permissible in exceptional cases, such as for example when there is a specific reference in one prior art document (primary document) to a second prior art document, construing the primary document (see T 153/85 [4.2]). Document D4 is, however, not mentioned in document D2. [4.11] For the reasons set out above, the Board concludes that the subject-matter of claim 1 of the main request is novel within the meaning of A 54. A second interesting passage deals with the appropriateness of document D2 as closest prior art: [5.5.1] The [patent proprietor] pointed out that the provision of aqueous pigment dispersions for inkjet printing ink was clearly one of the most important aspects of the present invention as could be seen from paragraph [0006] of the patent in suit. This paragraph also referred to the very unique and demanding requirements of the pigment dispersion to be used in inkjet printing applications. Document D2 was published in 1968, well before the inkjet printing technology was even available. According to the [patent proprietor], such a document would therefore be an unrealistic starting point as it could not provide the skilled person with any guidance and information on pigment dispersions suitable for inkjet printing ink. In support of its arguments the [patent proprietor] cited the decisions T 479/00 and T 870/96. [5.5.2] The Board notes that the patent in suit is concerned with stable aqueous particle dispersions (paragraphs [0001] and [0007] of the patent in suit). Inkjet printing inks are apparently an important area for the application of such dispersions. However, the claimed subject-matter is not limited to inkjet printing inks. On the contrary, claim 1 of the main request relates in general to a dispersion of particles in a liquid vehicle. Furthermore, in 1256 | 3398
T 1239/08 – Guidance Required
K’s Law – The ebook
paragraph [0002] of the patent in suit other application areas are mentioned, such as coatings (paints and inks), magnetic and optical recording media (tapes and disks), cosmetics (lipstick or nail polish), agriculture (insecticides) or pharmaceutical preparations. Moreover, example 8 of the patent in suit is concerned with the preparation of a tint suitable in the manufacture of paints. Coating compositions such as paints and lacquers are also mentioned in document D2 as an area in which the dispersion of particles disclosed in this document can be applied […]. This was also conceded by the [patent proprietor] in the oral proceedings before the Board. Being directed to the same purpose, namely providing stable particle dispersions useful in coating compositions like paints and sharing the maximum number of identical technical features, document D2, in the Board’s view, does not represent an unrealistic starting point for the assessment of inventive step. The
decisions
T
479/00
and
T
870/96
cannot
support
the
[patent
proprietor’s]
case.
In decision T 479/00 the Board considered a 65 year-old document which had not received any attention and which, as admitted by both parties, referred to a teaching which had never been put into practice on a commercial scale, as an unrealistic starting point. In the present case, as explained above, the [patent proprietor’s] argument concerning the age of document D2 are not convincing and document D2 being directed to the same purpose is not considered to be an unrealistic starting point. In T 870/96 the Board pointed out that a generically different document cannot normally be considered as a realistic starting point for the assessment of inventive step. In the present case, document D2 referring to stable particle dispersions intended for the same use, namely coating compositions, like paints, cannot be considered as a generically different document. [5.5.3] The [patent proprietor] also argued that the skilled person would not even remotely have considered cross-linking in an aqueous system in view of the teaching in document D2 referring to a cross-linking temperature of 150°C. In addition, according to the [patent proprietor], the unexpected effect that cross-linked graft-polymers are superior to cross-linked block or random copolymers was not derivable from document D2. [5.5.4] These arguments, however, are related to the question of whether or not the present invention shows unexpected properties over the prior art which might support an inventive step or whether or not the claimed subject-matter would be obvious for the skilled person in the light of the prior art. They cannot be used to discard document D2, which has the same purpose and shares the maximum number of technical features with the claimed subject-matter, as a suitable starting point for the assessment of inventive step. [5.6] For the above reasons the Board, in accordance with the [opponent], considers document D2 as the closest prior art and hence takes it as the starting point for the assessment of inventive step. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
1257 | 3398
T 1188/08 – A Statement Of Unhappiness
K’s Law – The ebook
T 1188/08 – A Statement Of Unhappiness 1 Jun 2012
The present decision is an invitation not to draft appeals too quickly … The applicant filed an appeal against the decision of the Examining Division (ED) to refuse the application under consideration. [1.1] Under current case law, an appeal by the applicant or patentee is deemed sufficiently reasoned if, either, the applicant files new claims (decision T 934/02) or takes up the arguments set out in the decision under appeal and argues that these were incorrect. It is insufficient to merely refer to the arguments brought forward during the examination procedure (decisions T 220/83 and T 213/85). Decision T 95/10 identified three reasons for this. First, that the appeal procedure was no mere continuation of the examination procedure, but separate therefrom. Second, that in the same way as A 114 required the Patent Office to take into account the applicant’s submissions prior to rendering a decision, the applicant had to take into account the arguments set out in the appealed decision when filing an appeal. Third, that otherwise, it was not sufficiently clear why the decision under appeal was deemed incorrect. Where the applicant in the grounds of appeal repeats its arguments set out during the examination phase without taking into account the decision under appeal, it mistakes the function of the boards of appeal. The boards of appeal are not a second go of the examination procedure, but are meant to review decisions from the ED. Such review requires the applicant to provide the board either with a new set of claims that deprives the decision under appeal of its basis, or to present an argumentative framework that, when adopted by the boards of appeal, would justify the decision under appeal to be set aside. The mere indication of an applicant that it considers the decision under appeal to be wrong and to invite the board to try again based on the same facts and arguments is insufficient. The above considerations do not apply, however, where the decision under appeal itself does not or insufficiently take into account the arguments presented by the applicant in the examination procedure, as in such case the applicant can indeed only repeat what has been argued before. [1.2] It is uncontested that no new claims have been filed with the grounds of appeal. [1.3] Apart from the introductory paragraph […], the grounds of appeal are nearly literal copies of passages from the letter of reply to the ED dated 19 October 2007. Moreover, the grounds reiterate substantially all the arguments relating to inventive step in that letter. The board thus fails to see any selection of arguments previously presented that could be regarded as arguments against the decision under appeal. Already the wording of the grounds of appeal indicates that they address the “Examination Report” and the “Examiner”, and tellingly the last sentence reads: “Applicant submits that the amended claims overcome the Examiner’s objections …”. There is no passage in the grounds of appeal providing arguments against the appealed decision. Neither are there arguments in the grounds referring to section 3.4 of the refusal, i.e. as to why it would not be obvious to a skilled person to use the third-party file transfer of the form-based file upload function of the HTML standard. From the grounds of appeal, it is clear that the appellant is unhappy with the appealed decision, but that much is already clear from the notice of appeal. [1.4] The appellant has argued that there was no need to address the decision under appeal because the decision under appeal was based on the same incorrect premise as the first examination report and the annex to the summons to which the appellant had responded with its letter of 19 October 2007. This would be relevant for the question of admissibility if indeed the ED had failed to take into account the arguments submitted by the appellant in its letter of 19 October 2007 when rendering its decision. This letter contained arguments that have been mentioned above, and a new set of claims. In its decision to refuse that patent application, the ED took into account the new set of claims, summarised the arguments brought forward by the appellant (section 3.5 of the decision under appeal) and explained over almost two pages why it found these arguments unconvincing (section 3.6). Thus, the decision under appeal indeed maintains the position set out in the examination report and in the annex to the summons, but is based on a set of claims different from the set of claims as filed, and further explains why the position taken by the applicant in its letter dated 19 October 2007 is deemed unconvincing. It 1258 | 3398
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K’s Law – The ebook
would thus have been the task of the appellant in the grounds of appeal to take into account those grounds of the decision under appeal that deal with the applicant’s arguments, and provide reasons why the ED was wrong. No such arguments have been provided, though. The appellant’s argument that section 3.4 need not have been addressed may be true, but the point is that no section of the decision under appeal has been addressed at all. [1.5] Decision T 644/97 cited by the appellant in order to support its position concerns the scope of appeal in terms of subject matter. In order to address the opposition division’s decision, the opponent on appeal had, inter alia argued that “the decision under appeal had applied different and inconsistent criteria to the assessment of one and the same document”, thereby clearly addressing the appealed decision rather than any previous report or communication. In the other decision cited by the appellant, T 382/96, (partial) admissibility of the appeal was discussed in light of some possibly inadmissible auxiliary requests filed with the appeal, while the main request was considered undoubtedly admissible. [1.6] The board therefore comes to the conclusion that the appeal is not sufficiently reasoned, contrary to A 108, third sentence, in combination with R 101(1) and R 99(2), and is therefore inadmissible. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
1259 | 3398
T 1911/08 – Not Accidental
K’s Law – The ebook
T 1911/08 – Not Accidental 31 Mai 2012
This appeal was filed against the revocation of the patent under consideration. Claim 1 of the main request before the Board was a Swiss-type claim for a medicament for treating a great variety of disorders stretching from migraine to schizophrenia, Parkinson’s and stroke. Claim 48 was directed at a compound for use as medicament. It contained a disclaimer which is referred to as “disclaimer (vi)” in the following passage where the Board examined the allowability of the disclaimer under A 123(2): [3.2] Disclaimer (vi) […] was introduced in response to a novelty objection raised under A 54(2) EPC with respect to document D6. It is not in dispute that this disclaimer relates to an “undisclosed disclaimer” in the sense of decision G 1/03 [2, 1st §], that is, it does not have a basis in the application as filed. However, the parties disagree on whether document D6 can be viewed as being an “accidental anticipation” and, accordingly, as providing the basis for an allowable disclaimer under A 123(2), as set out in decision G 1/03 [hn2.1;2.2]. Therefore, in the present instance, it has to be decided whether document D6 is an accidental anticipation as defined in decision G 1/03, that is, whether “it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention” (see [hn2.1]). [3.3] The patent in suit relates heterocyclic compounds of general formula (I) that are effective as NMDA NR2B antagonists, and accordingly are disclosed as being useful in the treatment of a number of diseases associated with this pharmacological activity, namely, pain, migraine, depression, anxiety, schizophrenia, Parkinson’s disease, and stroke […].
Document D6 also relates to heterocyclic compounds of overlapping general formula (I), and a number of the specific compounds listed in Table 1 fall within this area of overlap. The compounds according to document D6 are disclosed as being well tolerated by plants and having favourable toxicity to warm-blooded species, and being highly suitable for controlling animal pests, for controlling endoparasites and ectoparasites in the field of veterinary medicine, and for controlling harmful fungi […]. Further details of the use in the field of veterinary medicine are disclosed […], including the possibility of oral administration to animals. [3.4] The appellant argued that the biological pathway by which compounds acted should constitute the boundary between accidental and non-accidental anticipation, since, in modern mechanism-based research, the skilled person, that is, the medicinal chemist, would only take into account compounds interacting with the same receptor as a starting point for drug development. The board cannot agree with this analysis for the following reason:
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T 1911/08 – Not Accidental
K’s Law – The ebook
The ultimate aim of the pharmaceutical industry is the development of drugs capable of treating specific diseases. Therefore, in the present instance, where the patent in suit relates to the field of pharmaceuticals, the skilled person cannot merely be defined as being a medicinal chemist, but rather as being made up of a team covering the full range of disciplines required for drug discovery and development. High-throughput screening may be an important and integral part of this process. However, it will be equally important to establish whether candidate drug compounds have potentially favourable properties with respect to safety, toxicity, pharmacokinetics and metabolism. Therefore, the disclosure in document D6 that specific structures under consideration have favourable toxicity properties and are suitable for oral administration to animals would be considered to be valuable information to be taken it into consideration by the skilled person when making the present invention. The board therefore agrees with the conclusion reached in T 134/01 [2.3], namely, that a further document belonging to the field of pharmaceuticals is not to be considered as being an accidental anticipation within the meaning of the decision G 1/03, that is, even if it does not relate to the same illness or biological pathway as the patent or application in suit. In decisions T 739/01 [3.5], T 580/01 [2.4] and T 639/01 [3.2], the relevant prior art documents related to the treatment of the same illness as the patent or application in suit and were considered to be non-accidental anticipations. However, it does not follow that, had they related to a different illness, they would have been regarded as being accidental. Indeed, decisions T 739/01 [3.4-5] and T 580/01 [2.3-4] emphasise that “the patent in suit relates to the technical field of medicaments”, as does the relevant prior art. [3.5] The further arguments advanced by the appellant are also not considered to be persuasive: It is true that, for the purpose of patent protection of a medical application of a substance, a pharmacological effect observed in vitro may be accepted as sufficient evidence of a therapeutic application. However, this is only true if this observed effect directly and unambiguously reflects such a therapeutic application (cf. e.g. T 241/95 [4.1.2]). Indeed, as is further stated in decision T 241/95 [hn1], “the discovery that a substance selectively binds a receptor ... still needs to find a practical application in the form of a defined, real treatment of any pathological condition in order ... to be considered as an invention eligible for patent protection”. Moreover, the appellant’s narrow problem-based approach to defining accidental disclosure focuses on an analysis of the problem to be solved. However, this was specifically rejected in decision G 1/03 [2.2.2]: “Even less decisive, as an isolated element, is the lack of a common problem, since the more advanced a technology is, the more the problem may be formulated specifically for an invention in the field. Indeed, one and the same product may have to fulfil many requirements in order to have balanced properties which make it an industrially interesting product. Correspondingly, many problems related to different properties of the product may be defined for its further development. When looking specifically at improving one property, the person skilled in the art cannot ignore other well-known requirements. Therefore, a “different problem” may not yet be a problem in a different technical field.” Finally, the appellant questioned the relevance of the disclosure of document D6 to pharmaceutical applications. As outlined above under point [3.3], the use in the field of veterinary medicine is disclosed in this document as one of three fields of application. Moreover, a whole section is devoted to dosages and formulations suitable for this use […], and an example is included relating to antiparasitic use […]. Therefore, it cannot be accepted that the disclosure of a veterinary use only qualifies as “a passing reference”. Moreover, since document D6 envisages oral administration to animals, there seems no basis for the contention of the appellant that the reference to a favourable toxicity in warm-blooded species was not of relevance to pharmaceutical applications. Finally, […] the diseases claimed in the patent in suit cannot be seen as being exclusively human-specific. Moreover, animal models are frequently used in research into human diseases. Therefore, information derived from the former is also of relevance to the latter. [3.6] Accordingly, the main request […] must be rejected, since the incorporation of disclaimer (vi) into the respective claims 48 to 50 contravenes the provisions of A 123(2). Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
1261 | 3398
T 759/10 – Normal Development
K’s Law – The ebook
T 759/10 – Normal Development 30 Mai 2012
This decision deals with an appeal against the revocation of the opposed patent. Claim 1 of the main request read as follows: 1. A texturizing composition comprising a texturizing agent and a hardstock, the texturizing composition having substantially the same physical properties as hardstocks, characterized in that the texturizing agent consists essentially of one or more phytosterol fatty acid esters, one or more phytostanol fatty acid esters or their mixtures, and in that the texturizing composition comprises at least 70% of the texturizing agent. (my emphasis) According to the Opposition Division (OD), while the originally filed application provided support for a texturizing agent comprising and consisting of stanol/sterol esters, a texturizing agent consisting essentially of stanol/sterol esters was not clearly and unambiguously disclosed. Such a feature could also not be considered to be inherently supported by the combination of the terms “comprising” and “consisting of”, because the technical meaning of the term “consisting essentially of” was different from that of these two terms. The patent proprietor filed an appeal. In case the Board was unwilling to allow its requests, it requested the Board to refer the following questions to the Enlarged Board (EBA): 1. In order for amendment of the term “comprising” to “consisting essentially of” to be in accordance with A 123(2), is it necessary for the term “consisting essentially of” to be found expressis verbis in the application as filed? 2. If the answer to question 1 is no, is it nevertheless necessary to consider whether the term “consisting essentially of” is directly and unambiguously derivable from the content of the application as originally filed? 3. If the answer to question 2 is yes, is the term “consisting essentially of” considered directly and unambiguously derivable from the term “comprising” itself, such that no new subjectmatter is introduced by an amendment of the term “comprising” to the term “consisting essentially of”? Here is what the Board had to say: Amendments - A 100(c) [3.1] Claim 1 of the main request contains the feature that the texturizing agent “consists essentially of one or more phytosterol fatty acid esters, one or more phytostanol fatty acid esters or their mixtures” (in the following denoted “stanol/sterol esters”). This feature differs from the corresponding feature in claim 1 as originally filed in that the term “consists essentially of” has been substituted for the term “comprises”. It was a matter of dispute between the parties whether this amendment infringed A 100(c). [3.2] The term “consists essentially of” in claim 1 of the main request implies that apart from the stanol/sterol esters, only certain types and amounts of other components may be present in the texturizing agent, namely those types and amounts that do not materially affect the essential characteristics of the texturizing agent (see the interpretation of the term “consisting essentially of” in e.g. T 472/88 [3]). [3.3] The application as filed does not contain any explicit disclosure of the term “consisting essentially of” or the possibility that the texturizing agent, apart from the stanol/sterol esters, contains certain types and amounts of other components that do not materially affect its essential characteristics. It has therefore to be examined whether there is a clear and unambiguous implicit disclosure in the application as filed for the amendment from “comprises” to “consists essentially of”. [3.4] As has been set out above, claim 1 as originally filed and page 10, lines 20-22 of the application as filed disclose texturizing agents comprising the stanol/sterol esters. 1262 | 3398
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K’s Law – The ebook
The appellant argued that the term “comprising” encompassed three alternatives, namely (i) “comprising”, (ii) “consisting of” and (iii)”consisting essentially of”, and each of these alternatives would immediately come to the skilled person’s mind when reading the term “comprising”. The term “comprises” is therefore by itself already a sufficient basis for the term “consists essentially of”. The board cannot accept this argument as each term has a different technical meaning, namely (i) that any further component can be present (“comprises”), (ii) no further component can be present (“consists of”) and (iii) specific further components can be present, namely those not materially affecting the essential characteristics of the texturizing agent (“consists essentially of”). Therefore the skilled person is not at liberty to choose whichever of the three terms he wishes when reading the term “comprises”. Consequently, the reference to texturizing agents comprising stanol/sterol esters in the application as filed does not provide a clear and unambiguous disclosure of the feature “consists essentially of”. [3.5] Apart from the disclosure of texturizing agents comprising the stanol/sterol esters, the remaining part of the application as filed refers to texturizing agents consisting of these esters. Reference is made in particular to the following passage on page 8, lines 2-4 as filed: “The process comprises substituting, for at least a portion of the hardstock, a texturizing agent consisting of fatty acid esters of sterols, fatty acid esters of stanols or mixtures of these” (emphasis added). As has been set out above, the term “consisting of” has a different technical meaning than the term “consisting essentially of” in that it excludes the presence of any components other than the stanol/sterol esters. The reference to texturizing agents consisting of stanol/sterol esters in the application as filed therefore does not provide a clear and unambiguous disclosure of the feature “consists essentially of” either. [3.6] Apart from the above disclosures, the passage on page 12, line 29 to page 13, line 7 of the application as filed appears to be relevant with regard to the composition of the texturizing agent. This passage describes the preparation of stanol fatty acid esters (as the texturizing agent) from (i) a fatty acid ester or a fatty acid ester mixture, (ii) a stanol and (iii) an interesterification catalyst. This reaction results in a mixture of stanol fatty acid esters and further fatty acid esters, which mixture can either be purified or can be applied as such. This preparation process is further illustrated by way of a specific example on page 15, lines 1-30, where the preparation of stanol fatty acid esters is described starting from vegetable oil stanol and erucic acid rapeseed oil methyl ester (a fatty acid ester) and resulting in a blend of stanol fatty acid esters and erucic acid rapeseed oil methyl ester. The conversion rate of the esterification process is described to be higher than 99% (page 15, line 29). Apart from the stanol fatty acid esters and erucic acid rapeseed oil methyl ester, the resulting reaction mixture thus possibly contains additionally some unreacted stanol starting material (due to conversion below 100%). This reaction mixture can be used as such or after removal of the erucic acid rapeseed oil methyl ester by vacuum distillation (page 15, lines 24-27). These disclosures imply that apart from the stanol esters, the texturizing agent may contain some additional fatty acid esters and some unreacted stanol. According to the appellant, these disclosures provide a basis for the term “consists essentially of” in claim 1 of the main request. The term “consisting essentially of” is however not restricted to additional fatty acid esters or unreacted stanol but clearly covers in general any types and amounts of further components that do not materially affect the essential characteristics of the texturizing agent. The specific reference to additional fatty acid esters and unreacted stanol in the application as filed thus does not provide a clear and unambiguous disclosure of the feature “consists essentially of” in claim 1 of the main request. [3.7] The amendment of the term “comprises” in claim 1 as originally filed to the term “consists essentially of” thus infringes A 100(c). The main request has therefore to be refused. […] Request for referral to the EBA of Appeal (EBA) [5] The appellant requested that, in the event of any of the main request or auxiliary requests 1 and 2 not being granted, three questions be referred to the EBA (in the following “referral questions”) as a divergence existed between, on one hand, decisions T 472/88 and T 975/94 and on the other hand T 868/04 and T 725/08. The appellant in particular argued that in T 472/88 and T 975/94 the respective boards considered the amendment of the term “comprises” to “consists essentially of” to be generally allowable as the term “consists essentially of” 1263 | 3398
T 759/10 – Normal Development
K’s Law – The ebook
was narrower than “comprises”, while in T 868/04 and T 725/08 the respective boards concluded that in the absence of either an explicit or an implicit disclosure of the term “consists essentially of”, such an amendment extended beyond the content of the application as filed. [5.1] In T 472/88 [4] the board considered the requirements of A 123(2) to be met for a claim containing a number of amendments, one of which was the replacement of the terms “comprising” by the term “consisting essentially of”. The board cited several passages of the application as filed as a basis for the amendments but from inspection of the application in the public file (the cited passages are not quoted in the decision), it appears that the passages are not concerned with the amendment of “comprises” to “consisting essentially of” but with the other amendments. Rather, it therefore appears to be the case that the board considered the term “comprises” by itself to be a sufficient basis for the amendment from “comprising” to “consisting essentially of”: see point [4], penultimate paragraph. In T 975/94 [1.1], it was decided that the amendment of “comprises” to “consists essentially of” met the requirements of A 123(2) as the term “consists essentially of” was narrower in meaning than the term “comprises”, so that no new subject-matter was introduced by this amendment. No further explanation as regards this amendment is present in the decision. The present board therefore agrees with the appellant that the two boards in decisions T 472/88 and T 975/94 appear to have considered the term “comprises” by itself to be a sufficient basis for the term “consists essentially of”. [5.2] However, since these two decisions, the jurisprudence of the boards has further developed, in particular by way of the two later decisions of the EBA in G 2/98 and G 1/03. In G 2/98 (OJ EPO 2001, 413; point 9), the EBA held as follows: “... priority of a previous application in respect of a claim in a European patent application in accordance with A 88 is to be acknowledged only if the person skilled in the art can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole.” Hence, this decision establishes the criterion of clear and unambiguous derivability with regard to the concept of “the same invention” referred to in A 87(1). According to G 1/03 [2.2.2; 4], the same criterion has to be applied with regard to both A 87 and A 123(2): “It is true that the European patent system must be consistent and the concept of disclosure must be the same for the purposes of A 54, A 87 and A 123.” (point [2.2.2]) “In order to avoid any inconsistencies, the disclosure as the basis for the right to priority under A 87(1) and as the basis for amendments in an application under A 123(2) has to be interpreted in the same way.” (point [4]). Consequently, the criterion of clear and unambiguous derivability referred to in G 2/98 has to be applied also to the requirements of A 123(2) and thus A 100(c). This is further confirmed by G 2/10, where the EBA used this criterion in the context of “disclosed disclaimers”: “An amendment to a claim by the introduction of a disclaimer disclaiming from it subjectmatter disclosed in the application as filed infringes A 123(2) if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.” [order 1a]. In line with these decisions of the EBA, more recent decisions of the boards of appeal, e.g. T 868/04, T 725/08 and T 903/09 have applied the criterion of clear and unambiguous disclosure to decide on the allowability of the amendment of the term “comprises” to “consists essentially of”. T 868/04 [2.2]: “In order to determine whether or not an amendment [concerning the amendment of “comprising” to “consisting essentially of”] offends against A 123(2) it has to be examined whether technical information has been introduced which a skilled person would not have objectively and unambiguously derived from the application as filed...”. (Insertion in squared brackets by the present board). T 725/08 [3.2; 3.3.1]: “[3.2] This expression [“consisting essentially of”] is not mentioned explicitly in the application as originally filed. Thus the board has to examine on the basis of the submissions 1264 | 3398
T 759/10 – Normal Development
K’s Law – The ebook
of Appellant I whether it is directly and unambiguously derivable from the content of the application as originally filed... [3.3.1] It is, therefore, concluded that in the absence of either an explicit or an implicit disclosure of a process involving a milling mixture “consisting essentially of”, the process defined in Claim 1 of the main request extends beyond the content of the application as originally filed.” (Insertions in squared brackets by the present board). T 903/09 [8.1-8.2]: “[8.1] With respect to claim 1 of the main request ..., the feature “comprising” was replaced by “consisting essentially of”. This feature is not explicitly disclosed in the application as originally filed, where the feature “comprising” is always mentioned ... The question is nevertheless whether the person skilled in the art would regard the subject-matter now claimed as implicitly but unambiguously disclosed in the application as filed. [8.2] Even it might be conceded as contended by the respondent, that the feature “consists essentially of” represents a limitation to identify more specifically the most essential elements of the invention, the question, which is different, is whether this new subject-matter meets the requirements of A 123(2) as defined above.” [5.3] Consequently, a uniform approach has been developed by the jurisprudence of the boards of appeal, according to which an amended feature must, explicitly or implicitly, be directly and unambiguously disclosed to the skilled person using common general knowledge in the application as filed in order to be allowable under A 123(2)/100(c). [5.4] On the basis of this uniform approach, the first referral question can be answered in the negative by the present board without the need for any referral, i.e. it is not in doubt that in order for the amendment of the term “comprising” to “consisting essentially of” to be in accordance with A 123(2), it is NOT necessary for the latter term to be found expressis verbis in the application as filed. [5.5] Equally on the basis of this uniform approach, the second referral question can be answered in the positive by the present board without the need for any referral, i.e. it is not in doubt that it is indeed necessary in the context of A 123(2) to consider whether the term “consisting essentially of” is directly and unambiguously derivable from the content of the application as filed. [5.6] As to the third referral question, namely whether the term “consisting essentially of” is to be considered directly and unambiguously derivable from the term “comprising” itself, in the more recent decisions which have applied the criterion of clear and unambiguous derivability (T 868/04, T 725/08 and T 903/09) the boards have considered this criterion not to be automatically fulfilled by the term “comprising” alone. This difference from the earlier decisions in T 472/88 and T 975/94 is part of the ordinary development of the jurisprudence of the Boards of Appeal and does not mean that a reference to the EBA is required for ensuring uniform application of the law: see G 3/08 [4]. More to the point, however, what the skilled person would clearly and unambiguously derive from an application as filed is a question that can only be answered by reference to the application in question. No general answer to the referred question is therefore possible and it is not a suitable subject-matter for a reference to the EBA. To download the whole decision, click here. The file wrapper can be found here.
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T 834/09 – Don’t Trust The Librarian
K’s Law – The ebook
T 834/09 – Don’t Trust The Librarian 29 Mai 2012
It has been a long time since we had our last library decision. Here is a fresh one. Enjoy. The appeal was against the revocation of the patent under consideration by the Opposition Division (OD). Claim 1 of the main request before the Board read: 1. A cathode material for a rechargeable electrochemical cell, said cell also comprising an anode and an electrolyte, the cathode comprising a compound having the formula LiMPO4 where M is at least one first-row transition-metal cation selected from the group consisting of Mn, Fe, Ni and Ti, or a combination thereof; and wherein the compound has an ordered olivine structure. In the opposition procedure, the parties agreed that the subject-matter of above claim 1 was disclosed in its entirety in document D1, an article published in the Abstracts of the Electrochemical Society, (Spring Meeting, Los Angeles, Calif., May 5-10, 1996). The patent proprietor contested that document D1 had been made available to the public before the priority date of the contested patent, i.e. before 23 April 1996. In the contested decision, the OD concluded that document D1 was made available to the public before this date because it was proven it had been received by several libraries well before the above date and electronically catalogued by one of these libraries on 9 April 1996. The OD considered that “once an electronic registration took place, respective document was also retrievable for the public, even though it was not shelved”. The patent proprietor contested the conclusions of the OD, arguing in particular that there was no evidence that D1 was catalogued or shelved, and so made available to the public, before 23 April 1996. The Board came to the same conclusion as the OD: [1] The main question to be decided in this appeal is whether or not document D1 – which indisputably discloses the subject-matter of claim 1 at issue – was made available to the public before the earliest priority date of the contested patent, i.e. before 23 April 1996. [2] Regarding the public availability of a document received in a library, the jurisprudence of the boards of appeal is as follows: In T 381/87 it was considered that the shelving before the relevant date was evidence enough for establishing the public availability of a document in a public library, regardless of whether any person looked at it or actually knew it was available. According to other decisions (T 314/99 [5.1 to 5.6]) or T 186/01 [4]), a document did not become publicly available by its mere arrival in the archive of a library. Rather the possibility that the public could acquire knowledge or awareness of the existence of a document – for instance by cataloguing – was seen as a precondition of its public availability in the library before the relevant date. [3] In the case at issue, it is uncontested that document D1 was received and date stamped by the University of California Libraries San Diego on 3 April 1996. The statement of Mr Harvell […] and the date stamp “Received on: 04-03-1996” visible on the reproduction of the stamped page of the original print of the Meeting Abstracts publication - which includes the abstract D1 - corroborate the reception of document D1 in the aforementioned library well before the earliest priority date of the contested patent. There is no evidence whatsoever that D1 was shelved before the relevant date, and the evidence from D14 that D1 was catalogued has been contested by the appellant on the basis of D19.
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T 834/09 – Don’t Trust The Librarian
K’s Law – The ebook
[4] The board observes that none of the aforementioned decisions T 381/87, T 314/99 or T 186/01 addressed the question of the public availability of a document by reception and date stamping by a staff member in a public library. This issue and in particular the quality of the staff member as belonging to the public and the possibility for the public to gain access to the information in the document will be focused on hereinafter. [5] As to the question whether a person in charge of the reception and date stamping of a document received by mail in a public library – such as document D1 in the University of California San Diego Libraries – is a member of “the public” within the meaning of A 54(2), the board observes the following: [5.1] According to the jurisprudence of the boards of appeal, information is said to be publicly available if only a single member of the public is in a position to gain access to it and understand it, and if there is no obligation to maintain secrecy (T 1081/01 [5] and T 1510/06 [4.2.1]). Further, according to T 165/96 [1.1.1] which concerned the public availability of technical information drafted in Danish and disclosed in an insert in a minor small-ads newspaper (circulation: 24,000) distributed in the suburbs of Copenhagen, the “public” within the meaning of A 54(2) did not presuppose a minimum number of people or specific language skills or educational qualifications. It followed that the residents of a Copenhagen suburb were held to represent the public. In another case (T 398/90 [6]), a marine engine installed in a ship was held to have been made available to the public because it had been known to the engine room crew. [5.2] For the board, it follows by analogy from the above jurisprudence that the person in charge of the reception and date stamping of an incoming document at a public library is without any doubt a member of the public – just like the residents of a Copenhagen suburb or the crew working in a ship’s engine room – as this staff member is in no way bound by any obligation to maintain secrecy about the publications he/she handles and the content thereof, and after all, his/her very function as a staff member of a public library is to make information available to the public. [6] As to the question relating to the possibility for the public to gain access to the information in said incoming document, it is observed that: [6.1] It is part of the case law of the boards of appeal that the theoretical possibility of having access to information renders it available to the public (T 444/88 [3.1]). In the case at issue, this means that a printed document received by mail at a public library is clearly rendered available to the public, since the staff member in charge of its reception and date stamping is not bound by any obligation to maintain secrecy and is thus free to pass the document on to others, which is precisely his or her job. [6.2] Moreover, in the case of a written disclosure it is irrelevant whether the staff member is a person skilled in the art or not, because the content of a written disclosure can be freely reproduced and distributed even without understanding it. It follows that date stamping an incoming document in a public library is the point of time at which the document is leaving the non-public domain and entering the public domain. Once placed in the public domain, there is no longer anything that restrains or obstructs access to said information, since the content of the document can be freely reproduced, distributed, transmitted, or otherwise exploited. [6.3] It follows that the appellant’s argument that the reception and data stamping operation is not open to the “public” is no longer relevant since at least one person – the member staff in charge of the reception and stamping – had free access to the document and could, at least theoretically, have passed the information contained therein on to anybody else. As stated in the case law cited above, this theoretical possibility of access by at least one person not bound by any explicit or implicit confidentiality agreement is sufficient. Openness to “the public” does not require access to an unlimited number of arbitrary persons (a ship’s engine room is certainly not open to the public in that sense). [7] The board therefore concludes from the above reasoning that the action of receiving and date stamping an incoming document in a public library suffices to make a written document available to the public and that a person fulfilling this action can be described as a member of “the public” in the sense of A 54(2). [8] In the light of the above findings, the board concludes that document D1 was made available to the public before the priority date of the patent in suit and is thus, according to A 54(2), comprised in the state of the art. It
1267 | 3398
T 834/09 – Don’t Trust The Librarian
K’s Law – The ebook
follows that claim 1 of the sole request on file, the subject-matter of which is disclosed in entirety in D1, lacks the requirements of novelty of A 54 (1) and (2). […] The appeal is dismissed. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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R 17/11 – Speak Out
K’s Law – The ebook
R 17/11 – Speak Out 28 Mai 2012
This petition for review concerns decision T 1668/09 where Board 3.2.07 had dismissed the appeal of the patent proprietor against the revocation of the opposed patent. The petitioner raised two objections. Objection 1 was based on an alleged violation of the petitioner’s right to be heard when admitting document D16. The Board considered the objection to be unfounded. Objection 2 was based on the treatment of (undated) brochure D5, which the Board had considered to be the closest prior art and over which the claims on file were found to lack an inventive step. The patent proprietor had pointed out during the written proceedings that D5 had not been established that this document had been made available to the public. According to the patent proprietor, the Board had taken its decision without deciding on the admissibility of D5, which amounted to a substantial procedural violation. The Enlarged Board (EBA) considered this objection to be unfounded, too: *** Translation of the German original *** [13] The basic problem of the petitioner consists in that it does not assert in its request that it had asked [the Board] not to admit D5 at any time during the oral proceedings (OPs). Therefore, it lacks the required factual basis for justifying a request under A 112a(2)(d) in connection with R 104(b). [14] In R 19/10, the EBA has noted that the EPC does not contain an explicit definition of the term “request” used in R 104(b), but that, according to the common practice in the proceedings before the EPO, requests are in general directed to executable legal consequences sought by the parties. This is also confirmed by the travaux préparatoires related to R 104(b), in particular CA/PL 5/02 rev. 1 Add. 1, p. 27 (referred by the President of the EPO to the “Patent Law” commission, October 7, 2002) where the following is stated: “The assumption is that only requests submitted in writing or requests which the party had recorded in the minutes of the OPs will fall within the ambit of that provision.” [15] In R 19/10 the EBA also established that the arguments provided by the parties in support of these legal consequences did not normally belong to its requests. When a request is not explicitly made by a party during the proceedings, the Board does not have the duty under R 104(b) to examine the submissions of the parties as to whether they might contain requests that have not been made explicitly. [16] […] During the OPs before the EBA the petitioner insisted on the fact that in the course of a long day (the proceedings before the Technical Board (TBoA) lasted until 17:25) several arguments related to inventive step had been discussed, not only in view of D5 and D16, and that the petitioner had only found out which combination the TBoA considered to be potentially relevant for inventive step when receiving the written decision. D5 was a short document and had not played a role in the decision of the OD or in the detailed communication that the Board had sent to the parties. Moreover, there was no hint in this communication that the Board might consider D5 to play any role whatsoever in view of inventive step […]. Rather, the petitioner had assumed – rightly, in its opinion – that the TBoA would raise the question whether D5 was part of the prior art of its own motion, in order to discuss it and decide on it, if and when it considered D5 to be potentially relevant. Until then it was legitimate for [the petitioner] to assume that the contents of the communication of the TBoA still applied. [17] At this stage of the review proceedings, where the EBA has only heard one party, it has to assume, in favour of the petitioner, that the question of the status of D5 had not been raised during the OPs. It is true that in its decision […] the TBoA only mentions that D5 is one of the two documents used by the Board as prior art, but the decision does not dwell on the objection of the petitioner that its publication before the priority date had not been established.
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R 17/11 – Speak Out
K’s Law – The ebook
[18] However, the petitioner does not contend that D5 was discussed during the OPs before the TBoA within the framework of the substantive discussion of inventive step. This also follows from the impugned decision, where the arguments of the petitioner are recorded as follows […]: “It was true that D5 concerned a packed, highly compressed filter tow bale of the kind under consideration. However, there was no hint in this document that the bale had the cuboid-shape defined in claim 1 without there being bothersome bulges (Auswölbungen) or neckings (Einschnürungen) and having the flatness of the upper and bottom sides of the bale as also defined in claim 1.” The arguments of the [opponent] are also recorded […]. [19] The EBA does not know whether the status of D5 as prior art has not been discussed during the OPs. It may be that the TBoA has come to the conclusion, in view of the discussion on D5, which undoubtedly has taken place, that the petitioner had not maintained the objection. Anyway, this does not make any difference because the petition for review misses one fundamental point: It is not the role of the Board of appeal to ensure of its own motion that all the points that have been raised at any stage of the appeal proceedings are discussed during the OPs. It is up to the parties to raise a point which they consider relevant and which they believe might be overlooked and to insist on it being dealt with – if necessary, by means of a formal request. If a Board then does not give a party the opportunity to state its arguments, this can justify the objection that the right to be heard pursuant to A 113(1) had been violated. However, this is not true [in the case of] the petitioner. [20] As the petitioner has not made any such request within the meaning of R 104(b), the petition for review is clearly unallowable in view of this objection. Should you wish to download the whole decision or have a look at the file wrapper, just click here. My post on related decision R 19/10 can be found here.
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T 510/10 – Distinct
K’s Law – The ebook
T 510/10 – Distinct 26 Mai 2012
This appeal was filed against the revocation of the opposed patent by the Opposition Division. One of the questions discussed by the Board was the validity of the claim to priority for Claim 1 of the main request, which read: 1. A granule comprising an enzyme core, a hydrated barrier salt coated over the enzyme core, and one or more coating layers coated over the hydrated barrier material, wherein the barrier salt is magnesium sulfate heptahydrate, zinc sulfate heptahydrate, magnesium nitrate hexahydrate or magnesium acetate tetrahydrate, the barrier salt having moderate or high water activity. The patent proprietor argued that this subject-matter was found in claims 1, 3, and 7 of the U.S. priority document. The claims contained in this document read (my emphasis): 1. A granule comprising an enzyme core and a barrier material, wherein the barrier material comprises a stably hydrated material. 2. The granule of claim 1, wherein the stably hydrated material is a stably hydrated salt. 3. The granule of claim 1, wherein the stably hydrated salt is selected from the group consisting of magnesium sulfate heptahydrate, zinc sulfate heptahydrate, copper sulfate pentahydrate, sodium phosphate dibasic heptahydrate, magnesium nitrate hexahydrate, sodium borate decahydrate, sodium citrate dihydrate and magnesium acetate tetrahydrate. 4. The granule of claim 1, wherein the barrier material is part of the enzyme core. 5. The granule of claim 1, wherein the barrier material is coated over the enzyme core. 6. The granule of claim 1, further comprising a layer of material between the enzyme core and the barrier material. 7. The granule of claim 1, further comprising a layer of material over the barrier layer and enzyme core. The Board did not find the priority claim to be valid: [1.1] Claim 1 of the main request refers to a granule comprising an enzyme core, a hydrated barrier salt coated over the enzyme core and a further coating applied over the hydrated barrier material. According to the Appellant this teaching can be found in the priority document in Claims 1, 3, 7. [1.2] The Board cannot share this view. Claim 1 of the priority document discloses a granule comprising an enzyme core and a hydrated barrier material. Claim 3, lists salts to be used as barrier material and Claim 7, which exclusively refers to Claim 1, reports on an additional “layer of material over the barrier layer and enzyme core”. [1.3] The wording of these claims does not necessarily mean that the barrier material forms a layer on the surface of the core which is then coated with the additional layer, as the wording used in Claim 7 also covers barrier layers in the enzyme core (priority document, page 3, fourth paragraph), i.e. that in such an embodiment the hydrate barrier salt is not coated over the core.
[1.4] Although a coating of the barrier material over the enzyme core is disclosed in Claim 5, this claim
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T 510/10 – Distinct
K’s Law – The ebook
exclusively refers to Claim 1, as does Claim 7. Since Claims 5 and 7 describe two distinct embodiments, the combination of features cannot be considered to be disclosed. [1.5] When considering the description of the priority document the situation does not change. The fourth paragraph on page 3 of the priority document defines that the barrier material may be dispersed throughout the core, may be a layer in the core or be coated onto the core. The second paragraph on page 4 states that the invention can comprise one or more coating layers, i.e. that one of more coating layers are optional. [1.6] Thus, in order to arrive at the combination of features of Claim 1 of the main request a number of selections within the description of the priority document has to be made. The specific combination of features of Claim 1 has therefore not been disclosed in the priority document. [1.7] This reasoning applies also to the auxiliary requests 1-4. In addition the fourth auxiliary request refers to a protein core, whereas in the priority document only an enzyme core is described. [1.8] Therefore, none of these requests validly claims the priority date. I think that in this particular case there was little (if any) hope for the priority claim to be considered valid. Be that as it may, this case confirms what I often say to my American colleagues, i.e. that if they are aiming at patent protection in Europe, they should use multiple dependent claims in their priority documents and in their PCT applications. These multiple dependencies can easily be removed before the USPTO - and other offices that do not accept them - at a later stage, but they may prove quite useful before the EPO. I know it is not easy for American patent drafters to overcome their habits, but doing so may really improve their situation in Europe. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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T 593/09 – Sufficiently Clear
K’s Law – The ebook
T 593/09 – Sufficiently Clear 25 Mai 2012
This is an appeal against the revocation of the patent under consideration by the Opposition Division (OD). Claim 1 of the main request before the Board was identical to claim 1 as granted and read: 1. Polyethylene terephthalate resin covered metal sheet, wherein a biaxially oriented film consisting of polyethylene terephthalate having a low temperature crystallization temperature ranging from 130 to 165°C is covered at least on one side of a metal sheet by heat bonding. The OD held that, as corroborated by A3, the low temperature crystallization (LTC) temperature depended to a substantial degree on the heating rate applied during differential scanning calorimetry (DSC). The ISO standard D8 did not give unambiguous advice on the heating rate but merely suggested a heating rate. Furthermore, no information regarding the heating rate could be found in the opposed patent or in the prior art cited therein. Also, the proprietor had not been able to convincingly show that this information was part of the common general knowledge (CGK). Finally, it was not possible to determine the required heating rate by applying DSC measurements to commercial polymers with given LTC values because, as confirmed by the proprietor, the LTC temperature also depended on the polymerisation catalyst, the molecular weight, the heat treatment and the amount of stretching of the film. As a consequence the skilled person, when having to decide whether a specific polyethylene terephthalate fell within the claimed range or not, did not have enough information to do so. The opposed patent therefore was insufficiently disclosed. The discussion of this matter by the Board is quite interesting: [3.1] The essence of the [opponent’s] attack on sufficiency of disclosure was that the LTC temperature range covered by claim 1 of the main request was not well-defined, since any information with regard to the heating rate to be applied during the heating step for the determination of the LTC temperature was missing. As the skilled person therefore did not know whether he was working within or outside of the scope of claim 1, sufficiency of disclosure had to be denied. [3.2] Accordingly, it has to be analysed whether the skilled person indeed lacks information as to what heating rate to apply when determining the LTC temperature of the polyethylene terephthalate in claim 1. In this regard, (i) the information available from the opposed patent as filed and (ii) the CGK at the filing date of the opposed patent must be taken into account. [3.3] As regards point (i), all that is contained in the opposed patent as filed with regard to the determination of the LTC temperature is the indication on page 4, lines 16-20 that an exothermic peak appears when quenched polyethylene terephthalate films are gradually heated using differential scanning calorimetry (DSC). Consequently, all that the skilled person learns from the opposed patent as filed is that the LTC temperature of the polyethylene terephthalate in claim 1 is measured by means of DSC, applying gradual heating. In particular, no information as to the heating rate to be applied during this gradual heating is contained in the opposed patent. [3.3.1] The [patent proprietor] argued in this respect that according to page 11, lines 36-37 of the opposed patent, polyethylene terephthalate on the market had an LTC temperature of 128°C. In order to identify the heating rate applied in the opposed patent, the skilled person therefore simply had to calibrate the DSC measurement and in particular the heating rate with the help of the polyethylene terephthalate resin on the market such that an LTC temperature of 128°C resulted. The heating rate thereby determined was the heating rate applied in the opposed patent. The [patent proprietor’s] argument logically implies that at the filing date of the opposed patent either only one polyethylene terephthalate resin was available on the market or all polyethylene terephthalate resins available on the market had the same LTC temperature of 128°C. As set out by the [opponent] and as also acknowledged by the [patent proprietor], this was however not the case. Actually, “polyethylene terephthalate resin” constitutes a family of materials, each member having different properties, depending e.g. on its molecular weight, the presence and type of nucleating agents, and the intrinsic viscosity. Therefore, contrary to the [patent proprietor’s] allegation, a skilled person could not identify the heating rate to be applied in the opposed patent for the determination of the LTC temperature with the help of those polyethylene terephthalate resins which were available on the market at the filing date of the opposed patent.
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T 593/09 – Sufficiently Clear
K’s Law – The ebook
[3.3.2] The [patent proprietor] additionally argued that it followed from page 3, lines 56-57 of the opposed patent that polyethylene terephthalates with an LTC temperature above 165°C could not be produced. In the [patent proprietor’s] view, the upper limit of the claim was, therefore, inherently given by the polyethylene terephthalate with the highest LTC temperature available on the market. However, page 3, lines 56-57 in fact discloses that “ … it is extremely difficult in the sense of economy to manufacture a Homo polymer film consisting of polyethylene terephthalate resin having a low temperature crystallisation temperature more than 165°C alone.” (emphasis added). Consequently, what may be deduced from the opposed patent is that polyethylene terephthalates with an LTC temperature above 165°C are expensive to produce. This does however not mean that such polyethylene terephthalates were not available to the skilled person, be it on the market or otherwise. Hence, also this argument of the [patent proprietor] must fail. [3.3.3] On the basis of the information present in the opposed patent as filed, the skilled person would thus not know what heating rate to apply for the determination of the LTC temperature. [3.4] It remains to be examined whether this information was available to the skilled person on the basis of the CGK at the filing date of the opposed patent (point (ii) above). [3.4.1] The [patent proprietor] argued in this respect that the skilled person would deduce from the norm D8 that, by default, a heating rate of 20°C/min had to be applied for the determination of the LTC temperature in the opposed patent. First of all, as the date of D8 (15 March 1999) is significantly later than the filing date of the opposed patent, the information present in D8 cannot, in the absence of any further evidence, be considered to have been part of the CGK at the filing date of the opposed patent. Hence, D8 is not to be taken into account when deciding on the question what heating rate the skilled person would use in order to determine the LTC temperature in the opposed patent. Quite apart from that, D8 does not refer to the determination of the LTC temperature and for this reason also it cannot be relevant to the question of what heating rate the skilled person would apply for the determination of the LTC temperature in the opposed patent. In particular, the procedure applied in D8 (point 9) contains only the steps of:
performing a preliminary thermal cycle at a rate of 20°C/min, thereby heating the sample to a temperature high enough to erase the test material’s previous thermal history, holding the temperature for 5 minutes, performing a cooling cycle at a rate of 20°C/min to approximately 50°C below the extrapolated end crystallisation temperature, thereby determining the crystallisation temperature, holding the temperature for 5 minutes, and performing a second heating cycle at a rate of 20°C/min to approximately 30°C higher than the extrapolated end melting temperature, thereby determining the melting temperature.
Hence, what are determined in D8 are the melting and the crystallisation temperatures, but not the low temperature crystallisation (LTC) temperature, i.e. a temperature where crystallisation is observed in a heating cycle after a prior quenching step. The [patent proprietor’s] argument that the skilled person would use a heating rate of 20°C/min on the basis of D8 in order to determine the LTC temperature in the opposed patent is thus not convincing. [3.4.2] Like D8, and for the same reasons, the norm D10 (from 2007) does not reflect the CGK at the filing date of the opposed patent. Moreover, again like D8, D10 refers to the determination of a melting temperature (point 3.1 of table 2) rather than the LTC temperature. The same applies to documents D11 (from 1999) and D12 (from 2000) which are equally post-published and refer to the determination of melting points (D11, last paragraph of page 2) and “melting start points” (D12, point 2.3), rather than the determination of the LTC temperature. Hence, like D8, D10-D12 are not relevant to the question of what heating rate the skilled person would apply when determining the LTC temperature in the opposed patent.
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T 593/09 – Sufficiently Clear
K’s Law – The ebook
[3.4.3] In fact, the only documents on file which were available to the skilled person at the filing date of the opposed patent and which relate to the measurement of the LTC temperature are D7 and D9. D7 is a patent application with a publication date of 9 April 1997, which is prior to the filing date of the opposed patent (10 April 1997). This document describes on page 11, lines 14-17 the measurement of a thermal crystallisation parameter DeltaTcg. This parameter represents the difference between the peak temperature of crystallisation in DSC (Tc) and the glass transition temperature in DSC (Tg) (formula on top of page 6 of D7). The measurement comprises the steps of drying a polyester, melting it, quickly cooling it, and subsequently measuring the glass transition and crystallisation temperatures by DSC at a heating rate of 16°C/min. Due to the fact that the crystallisation temperature is determined after melting and quickly cooling the sample, this temperature is in fact the LTC temperature of the sample. So, what is determined in D7 is the LTC temperature, and to do so, a heating rate of 16°C/min is applied. The [patent proprietor] argued in this respect that exceptionally a heating rate below 20°C/min had been used in D7 because, apart from the LTC temperature, also the glass transition temperature was determined, which was difficult to measure and which therefore required a lower heating rate. However, no evidence was provided for this allegation and, for this reason alone, the [patent proprietor’s] argument must fail. D9 is a scientific article published in 1987, i.e. before the filing date of the opposed patent. Figure 7 of this document discloses DSC patterns of laminated polyethylene terephthalate films. These patterns show exothermic recrystallisation peaks that are obtained upon heating a rapidly quenched polyethylene terephthalate sample. The recrystallisation temperature (which is synonymous with the LTC temperature) thereby determined lies in the range of 110-130°C (first sentence of point 3 on page 641). The heating rate applied during the DSC measurement is 10°C/min (first sentence of point 2 on page 638). [3.4.4] Consequently, the only documents on file dealing with the measurement of the LTC temperature (and being available at the filing date of the opposed patent), i.e. D7 and D9, do not teach one single but rather two different heating rates, namely 16°C/min and 10°C/min, and both heating rates are different from the one to be applied in the opposed patent according to the [patent proprietor], namely 20°C/min. [3.5] In summary, neither from the opposed patent as filed nor on the basis of his CGK at the filing date of the opposed patent, would the skilled person know what heating rate to apply when determining the LTC temperature. [3.6] In view of the fact that the LTC temperature strongly depends on the heating rate applied (see point 2.5 above) and in the absence of any knowledge of what heating rate to apply, the skilled person thus is not able to establish whether a given polyethylene terephthalate film has an LTC temperature as required according to the opposed patent in order to obtain the desired peel, permeation and impact resistance. Hence, because of the unclear “heating rate” parameter, the crucial LTC temperature is so ill-defined that the skilled person, when trying to carry out the invention underlying the opposed patent, is left with having to test each individual polyethylene terephthalate as to its peel, permeation and impact resistance. In view of the numerous polyethylene terephthalates with different properties on the market (see point [3.3.1] above) and the even greater number of polyethylene terephthalates which can be synthesized using e.g. different reaction conditions or catalysts, this amounts to an undue burden to solve the problem addressed in the opposed patent. Its teaching thus in effect is at most a suggestion to perform a research program in order to identify suitable materials. [3.7] This has the consequence that the invention underlying the opposed patent is insufficiently disclosed within the meaning of A 100(b), because the requirement is not met that the invention is disclosed “in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art”. Consequently, the main request must be refused. A 83 versus A 84 [4.1] Though arriving at the same conclusion as the OD […], the board does not share the OD’s reasoning that led to this conclusion, namely that claim 1 of the patent did not comply with A 83 because the skilled person did not have enough information when having to decide whether a specific polyethylene terephthalate “falls into the claimed range or not” […]. [4.1.1] A 100(b) or A 83 requires a European patent or a European patent application to disclose the invention in a manner sufficiently clear and complete for it to be carried out by the skilled person. (As the disclosure standard given in A 100(b) is identical to that prescribed by A 83 and the same factual and legal criteria as well as the
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relevant jurisprudence apply, for the sake of conciseness, henceforth reference is made to the latter provision, i.e. A 83 only). [4.1.2] The requirement of sufficient or “enabling” disclosure in the sense of A 83 is, as such, different from and independent from the clarity requirement pursuant to A 84, namely that the claims, which define the matter for which protection is sought, “shall be clear and concise”. This distinction e.g. underlies decision T 1062/98 [2.1.4], where the board said: “Firstly, the question whether the skilled person is capable of determining whether a certain feature would be infringing a feature claimed is not a matter of sufficiency of disclosure as required by A 83. … Whether there is infringement is … a matter to be decided by the national courts. Secondly, the determination of the scope of the claim … relates in fact to the question whether the claims properly define the matter for which protection is sought. …. These are, however, the requirements imposed by A 84 and R 29(1), which do not form grounds of opposition … ” [4.1.3] There is thus a distinction between the meaning of “clear” in A 83, which concerns the disclosure (the “technical teaching”) of the application or the patent on the one hand, and in A 84, where that expression relates to the claims, which “shall define the matter for which protection is sought” on the other hand. In short, there is a distinction between clarity of what has been disclosed and clarity of what is claimed. This distinction is, however, not always properly made, in particular in respect of so called “ambiguous parameters”, i.e. parameters present in the description and/or claims, whose exact definition and/or applicable measuring method remains doubtful. For example, there exist numerous decisions of the boards of appeal according to which the, or at least one, relevant criterion for sufficiency of a disclosure containing an ill-defined parameter is whether the skilled person knows if he is working within or outside of the scope of the claim (e.g., T 256/87 [10]; T 387/01 [2.2.1-4]; T 252/02 [2.2.1-5] and T 18/08 [4.2.1-4]). It is however, not always apparent from the reasoning of these decisions whether or not this criterion was meant to be the sole or the decisive one. On the other hand, decisions exist that consider the question of whether or not the skilled person knows if he is working within or outside of the scope of the claims not to be a matter of sufficiency of disclosure but rather a matter of A 84 (see, e.g. T 396/02 [4.8.2-3], and T 1033/02 [11.4]). [4.1.4] It is certainly true that where the disclosure is insufficient within the meaning of A 83 due to the presence of an ill-defined parameter, claims defined by reference to this parameter - in the present case the LTC temperature - would lack clarity under A 84, since establishing the exact scope of the claim would then be impossible. But that does not allow the reverse conclusion to be drawn, namely that there is insufficient disclosure in the sense of A 83 whenever the scope of the claims is unclear, i.e. not properly defined. The position is as follows: where a claim contains an ill-defined (“unclear”, “ambiguous”) parameter and where, as a consequence, the skilled person would not know whether he was working within or outside of the scope of the claim, this, by itself, is not a reason to deny sufficiency of disclosure as required by A 83. Nor is such a lack of clear definition necessarily a matter for objection under A 84 only. What is decisive for establishing insufficiency within the meaning of A 83 is whether the parameter, in the specific case, is so ill-defined that the skilled person is not able, on the basis of the disclosure as a whole and using his CGK, to identify (without undue burden) the technical measures (e.g. selection of suitable compounds) necessary to solve the problem underlying the patent at issue. [4.1.5] This rationale underlies e.g. T 608/07 [2.5.2] and T 815/07 [headnote], where the following statements are contained: “Although the board accepts that, depending upon the circumstances, such an ambiguity may very well lead to an insufficiency objection, it should be born in mind that this ambiguity also relates to the scope of the claims, i.e. A 84. Since, however, A 84 is in itself not a ground of opposition, care has to be taken that an insufficiency objection arising out of an ambiguity is not merely a hidden objection under A 84. It is the conviction of this board that for an insufficiency arising out of ambiguity it is not enough to show that an ambiguity exists, e.g. at the edges of the claims. It will normally be necessary to show that the ambiguity deprives the person skilled in the art of the promise of the invention.” (T 608/07) “The purpose of a parameter contained in a claim is to define an essential technical feature of the invention. Its significance is that the presence of this technical feature contributes to the 1276 | 3398
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solution of the technical problem underlying the invention. The method specified for determining the parameter should therefore be such as to produce consistent values, so that the skilled person will know when he carries out the invention whether what he produces will solve the problem or not.” (T 815/07). The same rationale also underlies the decision in Kirin-Amgen Inc v. Hoechst Marion Roussel Ltd [2004] UKHL 46 of the United Kingdom House of Lords, where Lord Hoffmann said (the other members all agreeing): “[if] … finding out which ones work will need extensive experiments, then that in my opinion is not merely lack of clarity; it is insufficiency. The lack of clarity does not merely create a fuzzy boundary between that which will work and that which will not. It makes it impossible to work the invention at all until one has found out what ingredient is needed.” (point 126). Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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T 2434/09 – Post Mortem
K’s Law – The ebook
T 2434/09 – Post Mortem 24 Mai 2012
This is an appeal against a decision of an Examining Division (ED) to refuse the application under consideration. When summoning the applicant to oral proceedings (OPs), the ED expressed the view that the amended claims on file did not comply with A 123(2) and that the invention was not sufficiently disclosed under A 83. It also expressed doubts concerning the existence of an inventive step in view of documents D1 or D4 and common general knowledge (CGK). On April 24, 2009, applicant filed amended claims but did not comment on the alleged lack of inventive step. The OPs were held on May 26, 2009. The applicant filed a first auxiliary request against which the ED raised objections under R 43(2), A 123(2) and A 54(2). In response the applicant filed a second auxiliary request. The ED expressed its view that this request did not comply with the requirements of A 56 in view of document D2 and CGK. The latter was acknowledged in the application as filed. The applicant pointed out that this was only inhouse knowledge, in response to which the ED introduced document D5 as evidence for the CGK. The ED then proposed to adjourn the proceedings to give the applicant’s professional representative enough time to study document D5. The representative waived this right but requested to continue the procedure in writing because he wanted to present the document to the applicant’s technical experts. The ED expressed its opinion that the objection of lack of inventive step was still based on the skilled person’s CGK as acknowledged in the application, whereas document D5 was merely used to refute the applicant’s argument that the background art of the description merely reflected in-house knowledge. At the end of the OPs the chairman announced the decision of the ED to refuse the request for continuing the proceedings in writing and to refuse the European patent application under A 97(2). Point 8.5 of the reasons of the written decision reads: “The representative at the OPs disagreed with the objection of inventive step (A 56) raised by the ED. He considered that the use of an aberration correction mechanism was not well known and commonly used in the art for solving the problem of how to reduce the spherical surface aberration accompanying the thickness error of the light transmission layer due to the enhancement of NA [(numerical aperture), added by the board] in the next-generation optical systems. He also contested that the description only reflects in-house knowledge which was not public at the priority date of the application. In response to that argument, the ED, introduced a new document into the proceedings: D5 [....]. This document was published before the priority date of the application and introduced as an example that the problem of the increase of the spherical aberration with the increase of the NA was well-known in the art and the solution of adding a spherical aberration correction mechanism proposed in independent claim 1 was known too. As evidence, document D5 discloses the same problem (see paragraphs 4-7) and proposes a relay lens system (see for example figure 10, reference number 21 and paragraphs 53 and 63) in a recording and reproducing apparatus for a BluRay disk for correction spherical aberration due to differences in the cover layer thickness. Hence, the description of the application does not reflect in-house knowledge but mechanisms for correcting spherical aberration which were generally known to the skilled person at the priority date of the application.” The applicant then filed an appeal. The grounds of appeal read as follows: “During the OPs of May 26, 2009 the ED introduced a new document, i.e. document D5 (EPA1-1043615).
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This state of the art document is essential for the decision refusing the present application. The representative requested to continue the examining procedure in written so as to give the applicant time to study document D5 and so as to have the opportunity to provide the representative with corresponding instructions how to argue against this state of the art. However, the ED refused this request and instead decided to refuse the present application. It is believed that this represents a procedural violation which justifies the appeal and the refund of the appeal fee. In this connection reference is made inter alia to the decision T 951/97, where it is explicitly stated that the subject of the proceedings is changed within the meaning of R 71a(1) and (2)1979 [sic] inter alia where the ED itself introduces a new document (...) for the first time during the OPs.” By communication dated 25 November 2010, the EPO noted a loss of rights pursuant to R 112(1) and informed the appellant that the application was deemed to be withdrawn under A 86(1) since the renewal fee for the 9th year and the additional fee had not been paid in due time. No means of redress against this finding have been made use of by the appellant. The appellant informed the board as follows: “Regarding the fact that the present application has lapsed due to the non-payment of the renewal fees, the applicant is strongly interested in receiving a decision setting aside the decision of the ED and refunding the Appeal fee.” What would the Board do? [3] A 110 […] provides that, if the appeal is admissible, the board has to examine whether the appeal is allowable. [4] In the present case, however, the European patent application in respect of which the first-instance examination under A 94 was carried out and which is the subject of the appealed decision was finally deemed to be withdrawn after the appeal had been filed due to the non-payment of the renewal fee and the additional fee and no means of redress against this finding had been made use of […]. [5] In such a case, the ex-parte appeal proceedings are usually closed without a substantive decision and the appellant is informed accordingly. Subsequently, the grant procedure in respect of the European patent application concerned is closed by the first-instance department. The reason for taking this course of action is that if a European patent application is finally deemed to be withdrawn after an admissible appeal against a decision refusing it has been filed, the appeal can usually be considered disposed of, because there is no possibility of a European patent being granted for the application. [6] However, in certain situations it may not be possible to take the above course of action. The board is faced with such a situation in the present case. [7] The sole aim of the present appeal was clearly to obtain a finding by the board that a (substantial) procedural violation occurred in the first-instance proceedings which justifies the setting aside of the appealed decision and consequently the reimbursement of the appeal fee (see point VIII above). This means that the main issues to be decided by the board in the present appeal proceedings are whether a substantial procedural violation occurred during the first-instance examination proceedings which justifies in itself the setting aside of the appealed decision and whether the appeal fee has to be reimbursed to the appellant. [8] It is also obvious from the appellant’s letters dated 2 May 2011 and 6 June 2011 […] that the appellant wished to pursue its appeal irrespective of the fact that a European patent could no longer be granted on the basis of the present application. This is plausible in the board’s view because, according to the present appeal, which was filed before the nonpayment of the renewal fee, the only reason why the appellant initiated the appeal proceedings was that, in its view, a procedural violation had occurred in the first-instance proceedings which in itself justified the setting aside of the appealed decision and the reimbursement of the appeal fee. Consequently, if the board had concurred with the appellant’s view as set out in the grounds of appeal and had allowed the appellant’s requests […], the 1279 | 3398
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appellant would have received the board’s declaratory judgement that the ED had committed a substantial procedural violation which justified the setting aside of the appealed decision and would have obtained a refund of the appeal fee. Subsequent to such a decision the grant procedure in respect of the European patent application concerned would be closed. [9] It follows from the above that the appellant had a legitimate interest in receiving a decision on the merits of this case and that therefore the present appeal was not disposed of by the application being finally deemed to be withdrawn. Accordingly, an examination of the present appeal is necessary and the present appeal proceedings could not be closed without a substantive decision. Concerning the alleged procedural violation, the Board added: [18] The principle of the right to be heard is laid down in A 113(1) EPC 1973, which is the provision to be applied in the present case according to A 7(1), second sentence, of the Revision Act (loc. cit.), since A 113 is not indicated in A 1 of the decision of the Administrative Council of 28 June 2001 on the transitional provisions under A 7 of the Revision Act (loc. cit.). [19] Taking into account the appellant’s statement of grounds of appeal, which comprises essentially the party’s case as well as the essential facts and arguments as to why it is requested that the decision under appeal be reversed, the board is of the view that no breach of A 113(1) EPC 1973 took place in the first-instance proceedings, for the following reasons. [20] The applicant does not have a right in principle to continuation in writing if the department of first instance introduces a new document for the first time in OPs and thereby changes the subject of the proceedings. Where a new document is first introduced by the ED in OPs, the party’s right to be heard under A 113(1) EPC 1973 is observed if the applicant is given an adequate amount of time to study the document and present comments (see e.g. decision T 376/98 [4.3], which also refers to T 951/97). It is established jurisprudence that an adjournment of the OPs giving the party sufficient time for an adequate analysis ensures its right to be heard in accordance with A 113(1) EPC 1973 (see Case Law of the Boards of Appeal, 6th edition, 2010, VI.B.2.2.1). How much time is sufficient depends on the nature of the newly introduced document and the preceding procedure. This is also in line with decision T 951/97 [4.1], which was cited by the appellant. [21] In the present case, in its communication annexed to the summons to OPs dated 21 January 2009, the ED already raised an objection (albeit a very general one) of lack of inventive step of all subject-matter contained in the present application in view of D4 and the CGK of a person skilled in the art of optical recording […]. The applicant did not comment on this general remark in its reply […]. In particular nothing was said about aberration correction mechanisms not being within the CGK of a person skilled in the art of optical recording at the relevant date, even though an aberration correction mechanism was referred to as a means which determined the allowable value of the aberration in the cover layer in claim 1 then on file (i.e. the main request underlying the decision under appeal). [22] At the OPs before the ED the CGK of a person skilled in the art at the relevant date was not an issue until amended claims according to a second auxiliary request were filed (see point V above). With regard to these claims the ED took the view that the feature of a spherical surface aberration correction mechanism belonged to the CGK of the skilled person in the field of optical data storage at the date of priority, and that this CGK was already acknowledged in the description of the application, which clearly implied that a spherical surface aberration correction mechanism was known on the priority date and that the object of the application was to take into account this known mechanism when setting the allowed degree of margin for manufacturers of optical disks […]. It was only then that the applicant’s representative denied that the use of a spherical surface aberration correction mechanism was publicly known at the priority date. He declared that the description disclosed in-house knowledge of the applicant which was not public at that time (see also point V above). According to the jurisprudence of the boards of appeal, in-house knowledge, or matter which cannot be identified as forming part of the state of the art within the meaning of A 54(2) EPC 1973, has no relevance for assessing inventive step (see decisions T 1001/98 and T 654/92). Hence, in reaction to the representative’s declaration made for the first time at the OPs, the ED had to introduce a corresponding published document, confirming the CGK of the skilled person in the art which was at issue in the discussion on inventive step of the amended claims of the second auxiliary request, if it wished to use such prior art for assessing inventive step. The ED did so by introducing document D5. That this did not happen at an earlier stage of the examination proceedings but only at the OPs is comprehensible in view of the fact that, before the OPs, the applicant had not commented on or contested the CGK of a person skilled in the art of optical recording at the relevant date. The board also takes the view that, in 1280 | 3398
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principle, it does not matter that document D5 was not a copy of a text book since, in accordance with A 117(1), means for giving evidence on CGK of a person skilled in the art are not restricted to specific documents. The evidential weight as to what constituted CGK might be different, depending on the circumstances of the case. But it does not matter for the present appeal proceedings whether the ED’s assessment that the indicated specific text passages of document D5 reflected CGK was correct. Even if this assessment were incorrect, that would not amount to a procedural violation (see also T 367/91). In view of the above the board concludes that the fact that, as the appellant submitted, D5 could have been cited earlier with regard to independent claim 14 is not decisive for the question at issue. [23] The board turns now to the question whether the applicant’s representative was given an adequate amount of time to study document D5 and present comments in OPs before the ED. According to the minutes […], the ED proposed to adjourn the OPs to give the applicant enough time to study document D5. However, the applicant’s representative waived this offer of the ED. The appellant did not explain in the grounds of appeal why the appellant’s representative waived the offer of the ED to interrupt the OPs to give the applicant enough time to study document D5 and implicitly to give him the opportunity to prepare comments on the issue of CGK for assessing inventive step. The grounds of appeal are also silent on why document D5 is of such a nature that it would have been necessary to continue the proceedings before the ED in writing. Nor, in the OPs before the board, did the appellant give any explanation on this issue apart from new facts and arguments with regard to the assessment of novelty and the drafting of new claims, thereby delimiting the claimed subject-matter from the novelty-destroying disclosure of document D5. However, as set out above […] these facts and arguments were not admitted into the appeal proceedings. It is also not evident to the board why an adjournment of the OPs before the ED would not have provided the applicant’s representative with sufficient time to study the specific passages of document D5 which were indicated by the ED as being sufficient evidence of the CGK at issue. [24] Finally the board turns to the argument of the appellant’s representative that it was not the first time that he had been surprisingly confronted with a new document in proceedings before an ED in The Hague. First, the board may only give a judgement on the basis of the facts of the present case and not on the course of proceedings of other examination proceedings which are not the subject of the present appeal proceedings. Second, it is the board’s view that it should not have come as a surprise to the representative in the present case that the ED introduced a new document at OPs since this was a reaction to the filing of amended claims according to a new second auxiliary request and the contesting of the CGK of the skilled person in the art at issue for the first time at the OPs. [25] In view of the above it is not apparent to the board that a substantial procedural violation occurred in firstinstance proceedings which would justify the setting aside of the appealed decision. Accordingly, the appeal is unallowable.
NB : The Board also provided a headnote : If a European patent application is finally deemed to be withdrawn after an admissible appeal against a decision refusing it has been filed, the appeal can usually be considered disposed of, because there is no possibility of a European patent being granted for the application. (See points [4] and [5]). However, where, as in the present case, the sole aim of the appeal is to obtain a finding by the board of appeal that a substantial procedural violation occurred in the first-instance proceedings, such that the appealed decision is to be set aside and the appeal fee reimbursed, the appeal cannot be dealt with in this way. In these circumstances the appellant has a legitimate interest in receiving a decision on the merits of the appeal. Therefore the appeal must be examined and the appeal proceedings cannot be closed without a substantive decision on the case. (See points [6] to [9]). Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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T 1668/07 - What’s In A Name
K’s Law – The ebook
T 1668/07 - What’s In A Name 23 Mai 2012
The opponent filed an appeal against the rejection of its opposition by the Opposition Division (OD). In the following extract the Board deals with the admissibility of the appeal: [2.1] As far as the admissibility of the present appeal is concerned, the provisions of the EPC 1973 are to be applied, since all the time limits for complying with the conditions for filing an appeal under A 108 EPC 1973 had expired before the revised EPC entered into force on 13 December 2007 (see also J 10/07 [1]). [2.2] It was only in its reply to the board’s communication under Article 15(1) RPBA, annexed to the summons to oral proceedings, that the respondent called into question the admissibility of the present appeal and requested as its new main request that the appeal be deemed inadmissible. In the board’s view this was a rather late stage of proceedings for raising objections to the admissibility of the present appeal as the facts had not changed since the expiry of the periods for complying with the conditions for filing an appeal. However, the admissibility of an appeal has to be examined ex officio at every stage of the appeal proceedings (see also T 15/01 [1]). Hence the board has had to consider the respondent’s new main request although it was filed long after the periods for filing an appeal had expired and after OPs had been arranged. [2.3] The admissibility of the appeal has been called into question by the respondent with the argument that the notice of appeal was filed on behalf of the company IGR GmbH & Co. KG and the evidence for the change of name of the opponent was only filed after expiry of the two-month period for filing an appeal and that, therefore, IGR GmbH & Co. KG was not the acknowledged name of the party to the first-instance proceedings when the notice of appeal was filed. [2.4] A 107, first sentence, EPC 1973 provides that any party to proceedings adversely affected by a decision may appeal. If this requirement is not met, the appeal must be rejected as inadmissible under R 65(1) EPC 1973. The board thus has to determine first whether the company IGR GmbH & Co. KG can be regarded at the time of filing its notice of appeal as a party to the first-instance opposition proceedings (whether as original opponent or as successor to the original opponent), and thus, pursuant to A 107 EPC 1973, a person entitled to appeal the decision of the OD. [2.5] The notice of opposition and the decision under appeal indicate as opponent the company Interessengemeinschaft für Rundfunkschutzrechte GmbH Schutzrechtsverwertung & Co. KG. The notice of appeal was filed on behalf of the opponent and the company IGR GmbH & Co. KG was indicated as opponent. In the statement of grounds of appeal the appellant submitted that the company Interessengemeinschaft für Rundfunkschutzrechte GmbH Schutzrechtsverwertung & Co. KG had changed its name to IGR GmbH & Co. KG. [2.6] The board considers that the copy of an excerpt from the Commercial Register filed by the appellant […] clearly shows that the above-mentioned change of name of the company Interessengemeinschaft für Rundfunkschutzrechte GmbH Schutzrechtsverwertung & Co. KG was effective under German law as of 9 August 2006, i.e. before the notice of appeal was filed. This has not been contested by the respondent. A company is a legal person and a mere change of its name does generally not cause a change of its legal personality. In other words a renamed company generally enjoys perpetual succession and does not thereby change its identity. Hence there is generally no transfer of assets from one company to another or universal succession by one company to all the rights and interests of another. In the filed copy of the excerpt from the Commercial Register there is no evidence of anything other than a change of name. Furthermore, the respondent has not asserted otherwise. The board concludes that the change of the opponent’s name did not result in the transfer of opposition status to a third party in the present case. Hence the jurisprudence of the Enlarged Board of Appeal (G 4/88 and G 2/04) and of the Boards of Appeal (see Case Law of the Boards of Appeal, 6th edition, VII.C.5) on the requirements for the transfer of opponent status does not apply in the present case. 1282 | 3398
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[2.7] The respondent referred to decisions T 1137/97 and T 956/03. However, it follows from the above that the facts of these cases differ from those of the present case, since they concern the transfer of the opponent status to a third party. In these decisions it was held that a transfer of opposition status can only be acknowledged as from the date when adequate evidence is produced, since it is a principle that a patent proprietor and, as the case may be, the OD or the board of appeal should know the identity of the party opposing a patent. In both cases the appeal was found inadmissible because the entitlement of the transferee to replace the opponent and to appeal could not be established by adequate evidence at the time of filing of the notice of appeal or before the twomonth period for filing an appeal expired, respectively. In the present case, however, the legal person which was the opponent in the first-instance opposition proceedings also filed the notice of appeal, using its new name IGR GmbH & Co. KG. Thus there is no doubt that the appellant was entitled to appeal the decision of the OD and that the appeal was filed in accordance with A 107, first sentence, EPC 1973 by the party adversely affected by the appealed decision. [2.8] The respondent further argues that there was no indication in the notice of appeal of a change of the opponent’s name and that, therefore, the appellant, using its new name, was not identifiable in the present case. The board thus also has to ascertain whether the notice of appeal contained sufficient information for identification of the appellant within the meaning of R 64(a) EPC 1973. [2.9] According to R 64(a) EPC 1973 the notice of appeal shall contain the name and address of the appellant in accordance with the provisions of R 26(2)(c) EPC 1973. The purpose of this provision is, apart from administrative purposes, to secure the appellant’s identification and to allow establishment of whether or not the appeal was filed by a party to the proceedings within the meaning of A 107 EPC 1973 (see T 97/98 [1.3]). Deficiencies and omissions regarding the appellant’s name or address may be remedied under R 65(2), first sentence, EPC 1973 on invitation of the board of appeal, even after expiry of the two-month time limit under A 108 EPC 1973 (see T 1/97 [1.1] and T 97/98 [1.3]). [2.10] However, according to the jurisprudence of the Boards of Appeal, the appellant must be sufficiently identifiable within the period for filing an appeal (see T 533/93 [1.1] , T 1/97 [1.1] and T 97/98 [1.3]). This is the case if “it is possible to derive from the information in the appeal with a sufficient degree of probability, where necessary with the help of other information on file, e.g. as they appear in the impugned decision, by whom the appeal should be considered to have been filed” (T 97/98 [1.3]; see also T 1/97 [1.1] and the further decisions cited therein). [2.11] In the present case, the appeal was expressly filed in the name of the (sole) opponent, but in the notice of appeal the company IGR GmbH & Co. KG was indicated as the opponent, which was different from the name of the opponent indicated in the impugned decision and recorded in the European Patent Register (EPR) at that time. However, in spite of this inconsistency, in the board’s judgement the appellant was sufficiently identifiable within the period for filing an appeal, since, in the notice of appeal, the appellant was clearly referred to as the opponent and the opponent’s address, the number of the contested patent and the name and address of the professional representative were the same as those cited in the impugned decision and recorded in the EPR at the time when the appeal was filed. [2.12] Accordingly, a deficiency in the indication of the name of the appellant could have been remedied under R 65(2), first sentence, EPC 1973 on invitation of the board of appeal, even after expiry of the two-month time limit under A 108 EPC 1973. Due to the above-mentioned inconsistency in the name of the opponent, the board would normally have issued a communication under R 65(2), first sentence, EPC 1973, drawing the appellant’s attention to the fact that the appeal appeared at first sight to have been filed in the name of a legal person other than the opponent in the first-instance proceedings and outlining the possible legal consequences depending on the circumstances of the case, which would have to be clarified by the appellant. However, before issuing such a communication, the board was informed of the change of the appellant opponent’s name with the appellant’s statement of grounds of appeal and the evidence attached thereto […]. Thus it became apparent that the notice of appeal indicated the appellant opponent’s correct new name according to the Commercial Register, Düsseldorf, Germany, and that the appellant was not a different legal person from the opponent in the first-instance opposition proceedings […]. However, since the opponent had not yet informed the EPO of this change of name, the new opponent’s name had not been recorded in the EPR at the time of filing of the appeal. This inconsistency was removed when the entry of the opponent’s name in the EPR was updated after receipt of the statement of grounds of appeal. Since the legal situation regarding the appellant’s name was clarified and any deficiency regarding the requirements of R 64(a) EPC 1973 had been remedied with the update of the EPR, there was no longer a need for a communication from the board under R 65(2), first sentence, EPC 1973.
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K’s Law – The ebook
[2.13] In view of the above, the original opponent filed the notice of appeal and the requirements of A 107, first sentence, and R 64(a) EPC 1973 are met. The present appeal is also in accordance with A 106 and A 108 as well as R 64(b) EPC 1973 and thus admissible. NB: The Board also provided a take-away headnote: If an appellant files an appeal using a new name and without indicating that its name has changed, the requirements of A 107, first sentence, and R 64(a) EPC 1973 are met provided the appellant is identifiable and substantiates its change of name, for entry in the European Patent Register, at the latest upon the board’s invitation under R 65(2), first sentence, EPC 1973. To download the whole decision, click here. The file wrapper can be found here.
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J 27/10 – Missing
K’s Law – The ebook
J 27/10 – Missing 22 Mai 2012
This decision – the knowledge of which I owe to a kind reader of this blog – deals with an appeal against a refusal of a request by the Receiving Section (RS). The application under consideration was filed on August 13, 2009 and claimed the priority of a U.S. application that had been filed on August 14, 2008 (hereinafter “priority application”). The application documents filed with the EPO contained, apart from the claims and the abstract, description pages 1 to 15 and a set of drawings, comprising Fig. 1 to Fig. 12. The description referred to “Fig. 13”, “Fig. 14” and “Figs. 10-14” In a communication pursuant to R 56(1) of 18 September 2009, the RS informed the applicant that the examination as prescribed in A 90(1) had revealed that the drawings “Figures 13 & 14” referred to in the description were not included in the original application documents. The applicant was invited to file the missing drawings within two months after notification of said communication. The applicant was also informed that
if the missing drawings were filed in due time, the application would be re-dated to the date on which they were filed (R 56(2)); the application would not be re-dated if it claimed priority of an earlier application and it was requested to maintain the original filing date, provided the requirements under R 56(3) were fulfilled; if the missing drawings were not filed in due time, according to R 56(4), any reference to the missing drawings would be deemed to be deleted and any filing of the missing drawings would be deemed not to have been made.
In its reply dated November 4, 2009, the applicant filed a new description and requested, pursuant to R 56(3), that this description be substituted, in its entirety, for the description filed on 13 August 2009 and that the date of filing be maintained unamended. The applicant submitted that the description filed on August 13, 2009 was the wrong version of the description and had been erroneously filed with the EPO and that the newly filed description was the correct version and corresponded exactly and in its entirety to the description of the priority application. The applicant further submitted that Figs. 13 and 14 were not supposed to form part of the present application since they did not appear in the priority application and that therefore the correct version of the drawings was already filed with the EPO on 13 August 2009. In the applicant’s view the conditions laid down in R 56(3) were fulfilled since a copy of the priority application in English was already available to the EPO under R 53(2) and the indication of where the missing parts of the description could be found was given. In a communication dated January 18, 2010, the applicant was informed of the RS’s preliminary opinion that the documents filed on November 4, 2009 did not qualify as “missing parts” according to R 56(1) since they were not merely parts of the description but appeared to be a different description, substituting the originally filed description. In a letter dated March 29, 2010, the applicant maintained his request for substitution of the description and asked for an appealable decision, rejecting that request. As an auxiliary request, the applicant requested deletion of the references to Figs. 13 and 14 from the description filed on August 13, 2009, pursuant to R 56 (4). In its decision dated August 2, 2010, the RS refused the appellant’s main request and allowed the auxiliary request. According to the RS, it was not possible to replace an entire description under R 56. R 56(3) constituted an exception to the fundamental provision of A 123(2). Although neither the EPC nor the travaux preparatoires defined the term “missing”, it followed from this exceptional character of R 56 that it had to be given a narrow reading. As the requirements of R 56(3) were not fulfilled the description filed on November 4, 2009, could not be considered to form part of the application as filed on August 13, 2009. As far as the auxiliary request under R 56(4) was concerned the following was stated in the reasons: 1285 | 3398
J 27/10 – Missing
K’s Law – The ebook
“Since drawings 13 and 14 were not filed within the applicable time limit, the references to said drawings in the description filed on 13 August 2009 are deemed to be deleted pursuant to R 56 (4)(a)”. The applicant filed an appeal. Here is the verdict of the Board: Main request [2] As regards the appellant’s main request, R 56 is the relevant provision which most closely corresponds to the provisions of Article 5(6) of the Patent Law Treaty (PLT). R 56 was introduced after the Revision of the EPC (EPC 2000) (see decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the EPC 2000 (Special edition No. 1, OJ EPO 2007, 89)) and entered into force on 13 December 2007 (see Article 3 of said decision of the Administrative Council). [3] A 90(1) provides that the EPO examines, in accordance with the Implementing Regulations to the EPC, whether the application satisfies the requirements for the accordance of a date of filing. If the examination under A 90(1) reveals that parts of the description, or drawings referred to in the description or in the claims, appear to be missing, the EPO shall invite the applicant to file the missing parts within two months (R 56(1), first sentence). [4] It is not literally stipulated in R 56 that the applicant may also file of his own motion missing parts of the description or missing drawings (i.e. without being invited to do so by the EPO). However, R 56(2), first sentence, reads: “If missing parts of the description or missing drawings are filed later than the date of filing, but within two months of the date of filing or, if a communication is issued under paragraph 1, within two months of that communication, the application shall be re-dated to the date on which the missing parts of the description or missing drawings were filed.” From this wording it is clear that the applicant may also file of his own motion missing parts of the description or missing drawings. This approach is in line with the intention of the legislator (see travaux preparatoires, CA/PL 5/02, 18 June 2002, Explanatory remarks, page 12 regarding R 39a (which is the former provision of R 56 in the travaux preparatoires)). The board also notes that this approach is reflected in the instructions to the EPO (see Guidelines for Examination in the EPO, April 2010, A-Chapter II, 5.2). [5] If the applicant files missing parts of the description or drawings within two months from the filing date or the communication under R 56(1), the application will be re-dated to the date on which the missing parts of the description or drawings were filed (R 56(2), first sentence). If, however, the application claims priority, the missing parts of the description or missing drawings which were completely contained in the priority application may, if the requirements of R 56(3) are met, be included in the application without loss of the original date of filing. [6] In the present case, the appellant did not file the drawings 13 and 14 as the RS invited him to do. Instead, on 4 November 2009, the appellant filed a new description which was to replace the description originally filed on 13 August 2009 in its entirety. In comparison to the description filed on 13 August 2009, words were deleted and added in the text of the new description. [7] The appellant submitted that the description filed on 13 August 2009 was the wrong version of the description and had been erroneously filed with the EPO and that the newly filed description was the correct version and corresponded exactly and in its entirety to the description of the priority application. The appellant essentially argues that, since the present application claims priority, only the provisions of R 56(3) were relevant for determining “missing parts” according to R 56. A different test applied in the present case than in cases where no priority was claimed. For cases where no priority was claimed R 56(1) was the relevant provision. Consequently, in the appellant’s view, the initially filed text of the description of the present application could be partly or fully replaced by documents which were intended to be filed on 13 August 2009. Such partial or full replacement was justified because these documents were identical with those of the priority application. [8] The main issue is therefore how the term “missing parts of the description” in R 56 is to be construed and whether, for determining “missing parts of the description”, different tests apply, depending on whether the application claims priority or not. 1286 | 3398
J 27/10 – Missing
K’s Law – The ebook
[9] Neither the EPC nor the travaux preparatoires concerning R 56 (or former R 39a) contain a definition of the term “missing parts of the description”. Therefore, this term must be construed. [10] The board considers that the same interpretation is to be given to the term “parts of the description … appear to be missing” R 56 (1), first sentence, as to the term “missing parts of the description” in the subsequent paragraphs of R 56 for deciding if a part is missing from the description. This term is also used in the title of the whole provision. The board also considers that the terms “missing parts of the description”) “Fehlende Teile der Beschreibung” and “Parties manquantes de la description” have the same meaning in all three language versions. [11] In the board’s understanding the term “description” in “missing parts of the description” refers to the description which was originally filed in order to obtain a filing date and not to any other description, such as, for example, the one the appellant actually intended to file or the description of a priority application. In its literal sense the term “missing parts of the description” indicates that some parts of the description are missing or absent but other parts of it have been filed. From this the board concludes that the incomplete originally filed description is to be completed by the missing parts which must be added to the already filed text of the description. [12] Thus an interpretation of R 56 that some, or all, of the description that was originally filed in order to obtain a filing date could be amended, replaced or deleted is incorrect. [13] The above conclusion is supported by a reading of R 56. R 56(1) concerns the situation where the examination by the RS “on filing and as to formal requirements” pursuant to A 90 leads the RS to consider that a complete description or set of drawings has not been filed. This formal examination can only be performed on the basis of the text and documents of the application as originally filed in order to obtain a filing date. Thus the term “missing parts of the description” must be read as parts missing from the application documents as originally filed in order to obtain a filing date. [14] R 56(2), first sentence, concerns the situation where the applicant files “missing parts of the description” on its own motion. The RS has still to examine whether or not the subsequently filed parts of the description are missing from the initially filed description. There is no basis in R 56 that, regarding missing parts of the description, the examination criteria is the correctness of the initially filed application documents with respect to the appellant’s true intentions. [15] R 56(3) explicitly refers to “the missing parts of the description … filed within the period under paragraph 2 …” (emphasis added by the board). The board concludes from this wording that the term “missing parts of the description” in R 56(3) has the same meaning as in the preceding paragraphs of R 56 (R 56(2) refers to paragraph (1) of R 56) and constitutes a requirement which must be fulfilled in order to comply with R 56(3). [16] The board does not consider that, for establishing whether the applicant filed “missing parts of the description” under R 56, different tests apply, depending on whether priority from an earlier application was claimed or not. [17] In the board’s view, R 56(3) provides the possibility to keep the initial filing date although “ the missing parts of the description” were filed after the date of filing: If the applicant files “the missing parts of the description” of its own motion or upon invitation from the EPO within the period of R 56(2) and the application claims priority from an earlier application, the date of filing does not change upon the applicant’s request, provided that, inter alia, (1) the missing parts of the description are completely contained in the earlier application; (2) the applicant files a copy of the earlier application (priority document) within the period under R 56(2), unless such copy is already available to the EPO under R 53(2); (3) the applicant indicates within the period under R 56(2) as to where the missing parts of the description are completely contained in the earlier application. [18] It follows from the provisions of R 56(3) that, as far as the filing date of the application is concerned, R 56(3) provides, if all its requirements are fulfilled, an exception to the principle laid down in R 56(2) according to which an application is usually re-dated if “the missing parts of the description” were filed after the date of filing. However, there is no indication in R 56(3) that it refers to a different type of “missing parts of the description” than those referred to in its preceding paragraphs or that, for determining “missing parts of the description”, a different test applies, if the application claims priority from an earlier application. There is also no indication in R 56(3) that a description filed after the filing date of an application may substitute the description as originally filed, either partly or in its entirety. 1287 | 3398
J 27/10 – Missing
K’s Law – The ebook
The board does also not consider that a comparison of the description and/or drawings of the application as originally filed in order to obtain a filing date with those of the priority application is to be made in order to determine the missing parts of the description within the meaning of R 56. Thus the board does not consider that the differences between the application as originally filed in order to obtain a filing date and the priority application, are the “missing parts” within the meaning of R 56. The wording of R 56(3) clearly indicates that the disclosure of the priority application is only of importance for establishing whether an application, for which indeed missing parts of the description were filed within the period under R 56(2), may keep its initial filing date upon the applicant’s request. If these missing parts of the description are not completely contained in the priority application, the application has to be re-dated in accordance with R 56(2) or (5). Thus, for determining “the missing parts of the description”, it is irrelevant whether any subsequently filed description corresponds exactly and in its entirety to the description of the priority application. [19] In view of the above, the board concludes that, when applying R 56(3) in the present case, it has firstly to be established whether the description filed on 4 November 2009 is to be considered as “missing parts of the description” within the meaning of R 56(1) to (3). For this purpose the version of the description filed on 4 November 2009 has to be compared with that filed on 13 August 2009. [20] A comparison of the version of the description filed on 4 November 2009 with that filed on 13 August 2009 reveals that the later filed description does not complete the earlier filed description by adding missing parts but that the text of the earlier filed description is amended, replaced and deleted by the later filed description. The appellant also admits that the later filed description is intended to substitute parts of the earlier filed text of the description. Thus according to the board’s interpretation of the term “missing part of the description”, the appellant did not file missing parts of the description. Hence the requirements pursuant to R 56, in particular those of paragraphs (2) and (3), are not met in the present case. [21] Since the requirement of “missing part of the description” is not met in the present case, the issue of whether the appellant was entitled under R 56(1) or (2) to file parts other than the missing figures 13 and 14 in response to the EPO communication dated 18 September 2009 need not be addressed. [22] It follows from the above that the appellant’s main request is not allowable under R 56. Auxiliary request [23] The appellant requested, as its auxiliary request, to remit the case to the RS with the order to specify exactly what references to drawings 13 and 14 in the description and/or claims should be deleted pursuant to R 56(4) (a). This auxiliary request is allowable for the following reasons. [24] The appellant did not comply with the EPO invitation of 18 September 2009 under R 56(1) to file missing figures 13 and 14 within 2 months of said communication. Thus all references to the missing drawings 13 and 14 in the description or in the claims are deemed to be deleted in accordance with R 56(4) (a) and (1). [25] In the reasons of the appealed decision, the RS concluded that the references to said drawings in the description filed on 13 August 2009 are deemed to be deleted pursuant to R 56(4) (a), but did not exactly specify what references to the drawings in the description and/or claims are deemed to be deleted. [26] In the present case, however, this information is of great importance for the appellant as can be seen from the following relevant passages of the ‘description as originally filed. The relevant passages on page 9 read as follows: “Fig. 13 is a close-up view of a spring-loaded front latch which can be used to secure the front section of the cart of the invention to a corresponding front section of a portable blower housing; Fig. 14 is a close-up view of a spring-loaded rear latch which can be used to secure the rear section of the cart of the invention to a corresponding rear section of a portable blower housing.”
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K’s Law – The ebook
The relevant sentence on page 15 read as follows: “In a preferred embodiment, blower housing 201 i s secured to rotary member 102 by means of a spring-loaded hook latch 202 attached to a front wall 204 of rotary member 102, and a spring-loaded locking latch 203 attached to a rear wall 205 of rotary member 102 (see. Figs. 10-14). [27] It is clear that the above passages of the description, apart from the references to the missing figures 13 and 14, possibly contain further technical information. If the references to the missing figures 13 and 14 are deemed to be deleted, it has to be determined whether any technical information in the relevant passages is still technically meaningful without the references and may therefore be retained. Moreover, if apart from the references to the missing figures 13 and 14 any technical information is deleted in the description, it has to be examined whether anything else has to be deleted in the claims. [28] The principle of legal certainty requires that the decision upon the deletion of parts of the description pursuant to R 54(4)(a) leaves no doubt about what exactly is deemed to be deleted. In some cases it might be sufficient that the decision merely orders that the references in the description to figures are deemed to be deleted. However, in the present case, it is not clear which words or sentences are deemed to be deleted and, therefore, the RS should have determined which words or sentences were addressed. Thus, it has to be specified what exactly is deemed to be deleted as the deletion could only concern e.g. on page 9 the words “Fig. 13 is a close up view of” or could include the following words of the whole sentence or paragraph. [29] Since the RS has not specified exactly in the decision under appeal what references to the drawings 13 and 14 in the description and/or claims are deemed to be deleted, the board considers it appropriate to remit this case to the department of first instance in accordance with A 111(1), second sentence. [30] However, the board wishes to point out by way of an obiter dictum that if the RS would have to base its decision on this issue on the result of a technical examination, which does not normally form part of its duties under A 16 and A 90, the decision on exactly what references to the missing figures 13 and 14 are deemed to be deleted might lie within the competence of the Examining Division (see J 4/85; J 33/89 and J 7/97). Order For these reasons it is decided that: 1. 2.
The decision under appeal is set aside. The case is remitted to the RS with the order to specify exactly what references to drawings 13 and 14 in the description and/or claims filed on 13 August 2009 should be deleted pursuant to R 56 (4) (a).
NB: The Board also provided a headnote: 1. The same interpretation is to be given to the term “parts of the description ... appear to be missing” in R 56(1), first sentence, as to the term “missing parts of the description” in the subsequent paragraphs of R 56 for deciding if a part is missing from the description. The term “description” in “missing parts of the description” in R 56 refers to the description which was originally filed in order to obtain a filing date and not to any other description. The incomplete originally filed description is to be completed by the missing parts which must be added to the already filed text of the description. Thus an interpretation of R 56 that some, or all, of the description that was originally filed in order to obtain a filing date could be amended, replaced or deleted is incorrect. (See points [8] to [18]) The principle of legal certainty requires that the decision upon the deletion of parts of the description pursuant to R 54(4) (a) leaves no doubt about what exactly is deemed to be deleted. (See point [28]) To download the whole decision or have a look at the file wrapper, click here.
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K’s Law – The ebook
Some Statistics
Some Statistics 21 Mai 2012
If, like me, you were a little disappointed by the information regarding the Boards of appeal offered in the latest annual report of the EPO, you might be interested in some more statistics. In what follows, I present some statistical data regarding the 443 decisions published on the DG3 webpage during the first four months of 2012. These decisions were taken between October 28, 2010, and April 11, 2012. 1. Nature Let us first have a look at the nature of these decisions:
60 per cent of the cases were opposition appeal cases, compared to 37 per cent of examination appeal cases. “PETREV” refers to petitions for review. Note that there were still two PCT cases left. 2. Boards involved The following Table shows the numbers of decisions per Board of appeal (click to enlarge):
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3. Language of proceedings Unsurprisingly, the three official languages of the EPO were very unevenly represented:
English took the lion’s share (68 per cent) whereas French was very little used (6 per cent). What is more surprising is that the situation depends on whether examination or opposition appeals are considered. In examination appeal proceedings, English was even more preponderant (81 per cent, more than twenty times the share of French (4 per cent):
In opposition appeal proceedings, however, German was relatively more often the language of the proceedings: 1291 | 3398
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Some Statistics
English was used in 61 per cent, German in 32 per cent of the cases. Might it be that German language patents attract more oppositions? That would be weird. Obviously, the discrepancy between examination and opposition appeals may have very complex reasons that are beyond the reach of so simple a study; it might also express the fact that English is gaining momentum – because opposition proceedings, generally speaking, deal with patents based on applications that were filed well before the applications dealt with in examination appeal proceedings. (In other words, when examining opposition appeal cases, one looks further back in the past than when studying examination appeal cases.) 4. Examination appeals Considering the examination appeal proceedings, what was the outcome?
In almost 60 per cent of the cases, the appeal was dismissed, the first instance refusal becoming final. In a quarter of the cases, the Boards ordered the Examining Division to grant a patent. In 16 per cent of the cases, the case was remitted to the first instance for further prosecution. As far as the remittals are concerned, I have not been able to go any further and examine the subsequent fate of the applications, all the more as many of these cases may not have been settled yet. NB: The “OTHER” cases are cases where the first instance granted interlocutory revision and the Board had to decide on reimbursement of the appeal fee etc. 5. Opposition appeals Let us now consider the opposition appeal proceedings, which are more complex to analyse.
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Some Statistics
It turns out that the three possible reasons for an appeal against a decision of the Opposition Division (rejection of the opposition(s), maintenance of the opposed patent, revocation) all had about the same weight.
What was the overall outcome? As the following graph shows, the most likely outcome of opposition appeal proceedings was the revocation of the patent (46 per cent), followed by maintenance of the patent in amended form (30 per cent). The opposition was rejected in only 14 per cent of the cases, and in another 8 per cent of the cases the case was remitted to the Opposition Division for further processing (again, I have not studied the subsequent fate of the patent). In two cases the proceedings were terminated by the lapse of the patent in all Contracting States.
Let us now have a closer look at these data. 5.1 Appeals subsequent to a rejection of the opposition For appeals filed by the opponent(s) after their opposition(s) had been rejected (78 cases), the most likely outcome was … the revocation of the patent (44 per cent), closely followed by a confirmation of the rejection (42 per cent). The maintenance of the patent in amended form was quite unlikely an outcome (12 per cent).
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Some Statistics
I found this result quite surprising; I would have expected to find maintenance in amended form more often. A possible reason could be that many patents do not have strong fall-back positions: when the claims as granted fall, the patent falls. 5.2 Appeals against the maintenance of the opposed patent in amended form First of all, I was interested to see who filed the appeal: was it predominantly the patent proprietor or the opponent, or did both parties file appeals? In the 98 cases published in 2012, it was mostly the opponent(s) alone who filed the appeal (68 per cent of the cases), whereas appeals by the patent proprietor alone were pretty rare (5 per cent):
I understand this to mean that the proprietors mostly were happy with the outcome, which confirms my (admittedly, subjective) impression that the first instance is quite proprietor-friendly in opposition proceedings. The most likely outcome was the maintenance of the patent in amended form (62 per cent, which encompasses both a dismissal of the appeal and amendments made before the Board of appeal), followed by the revocation of the patent (32 per cent). A rejection of the opposition at this stage was relatively rare (3 per cent).
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Some Statistics
This view is, however, oversimplified because it blurs the distinction between cases where the principle of prohibition of reformatio in peius applies and cases where it does not. Therefore, it is necessary to have an even closer look. 5.2.1 Cases where the patent proprietor was the sole appellant Obviously, the patent cannot be revoked in this situation. As a matter of fact, in all cases but one (where the case was remitted for further prosecution) the outcome of the appeal was the maintenance in amended form:
Note, however, that there were only five cases in total, which means that the results may not be significant, statistically speaking. 5.2.2 Cases where the opponent was the sole appellant In such cases (67 in total) the Board could not reject the opposition. It turns out that the patent was maintained in amended form in about two thirds of the cases (64 per cent) and revoked in the remaining cases:
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Some Statistics
5.2.2 Cases where the proprietor and the opponent filed appeals In these cases (26 so far), the principle of prohibition of reformatio in peius does not find application and all options are open to the Boards. The outcome was as follows:
In 54 per cent of the cases, the patent was finally maintained in amended form; in about 27 percent of the cases it was revoked. The rejection of the opposition was less frequent but not nonexistent (12 per cent). “FURTHER” refers to remittals for further prosecution. 5.3 Appeals against the revocation of the opposed patent When the patent had been revoked by the Opposition Division (91 cases), there was little hope even before the Board of appeal: in two thirds of the cases (65 per cent), the Board dismissed the appeal:
I find this quite logical because, according to what I have seen in my practice, Opposition Divisions are reluctant to revoke patents, in particular in the (frequent) case where the first examiner is the one who delivered
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Some Statistics
the patent. If even the Opposition Division comes to the conclusion that the patent is to be revoked, the Board is likely to agree. 6. Outlook In case DG3 will publish further decisions in 2012 - I have not given up hope yet - I shall try to pursue these statistics. Perhaps at the end of the year it will even be possible to compare the most prolific Boards and see whether there are significant differences. NB: My reservoir is now empty. This blog will be back as soon as fresh decisions are available.
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Interpretative Spotlight: “Boundary portion”
K’s Law – The ebook
Interpretative Spotlight: “Boundary portion” 19 Mai 2012
This appeal was against the revocation of the opposed patent by the Opposition Division (OD). Claim 1 before the Board (identical to claim 1 as granted) read: An automotive vehicle protection apparatus for an automotive vehicle having an interior compartment, a pillar portion (20), a vehicle body side portion, and a roof side rail (28), said apparatus comprising:
an inflator (14) for jetting gas upon an occurrence of a side collision; a bag (16) operatively connected to said inflator (14) so as to expand during jetting of the gas, said bag (16) being housed in a folded state and constructed and arranged to permit placement thereof between the pillar portion (20) and the roof side rail (28) so that expansion occurs beneath the roof side rail and within the interior compartment; characterized in that it further comprises a pillar garnish (40) including a trim member disposable at an inner side of the pillar portion (20) and extending in a longitudinal direction by a sufficient length to cover at least a portion of said bag (16) in the folded state; and a deformable member hingedly connected to said pillar garnish (40) and provided in the vicinity of said bag (16), said deformable member being (i) formed of a portion of said pillar garnish (40) and (ii) configured to form an opening for expansion of said bag (16) without braking or scattering said pillar garnish (40); wherein the deformable member includes an unhinged end portion positioned in the vicinity of the vehicle body side portion, the unhinged end portion moving away from the vehicle body side portion when the bag starts to expand; wherein said pillar garnish (40) covers a vehicle front side of said pillar portion (20) and is formed by a vehicle front side support portion (42), which is disposed at a vehicle front side and is supported by the pillar portion, and an unfolding portion (42B), which is disposed at a vehicle rear side and covers said bag (16) and has one end continuous with said support portion and another end which is a free end, and a boundary portion between the support portion and the unfolding portion becomes a hinge (46) for the unfolding portion when the bag expands, and the bag expands from a portion between the free end and the pillar portion; (my emphasis) wherein said bag (16) is disposed in a space (48) substantially defined by the unfolding portion (42B) and the pillar portion (20).
In its decision the OD held that the subject-matter of this claim extended beyond the content of the parent application as originally filed because of the presence of the feature “boundary portion”. The Board did not come to the same conclusion: [2] In the Board’s view, the presence of the term “boundary portion” in claim 1 does not result in subject-matter extending beyond the content of the originally filed parent application so that, in this respect, the ground for opposition based on A 100(c) EPC 1973 does not prejudice the maintenance of the European patent. [2.1] When the amendments examined as to their admissibility under A 100(c) EPC 1973 concern a divisional application, these may not extend beyond the content of the “earlier application as filed”. In the present case, in which the application documents of the earlier European patent application as filed are a translation of an international application filed in Japanese, the content of the “earlier application as filed” is that of the international application as it was filed (published as international application WO-A-98/19893). It is assumed that the translated application documents of the earlier application filed upon entry into the regional phase before 1298 | 3398
Interpretative Spotlight: “Boundary portion”
K’s Law – The ebook
the EPO as well as the published earlier European application, EP-A-0 872 390, are identical in content to the published international application (see also T 605/93 [3.1]). This was not contested. Therefore, in the following, reference is made to the translation of the earlier application filed upon entry into the regional phase before the EPO, unless stated otherwise. However, it has been noted that the translated set of claims of the above translation comprises claims 25 to 29, which were added during the international phase and must therefore be disregarded for the purpose of A 100(c) EPC 1973. [2.2] According to the established case law the findings of the Enlarged Board of Appeal in G 1/05 and G 1/06, although made with regard to European patent applications, are also valid for European patents granted in respect of a divisional application (see decision T 687/05, which was followed by several decisions e.g. T 2175/09). The Board agrees with the statement in T 687/05 [3.1] that in order to meet the requirements of A 100(c) EPC 1973, it is a necessary and sufficient condition that anything disclosed in the granted patent must be directly and unambiguously derivable from not only the application on which the patent has been granted but also from what is disclosed in each of the preceding applications as filed. Moreover, it is the total information content of the original application as filed that matters (see T 873/94) and, in the Board’s view, the same applies to the earlier application as filed. In other words, when taking into account the total information content of the earlier application as filed, the content of the earlier application is established on the basis of the description, claims, and drawings. [2.3] If the above requirements are not met, the ground for opposition according to A 100(c) EPC 1973 prejudices the maintenance of the European patent. In the present case, it is not disputed that the originally filed European patent application on which the patent in suit was granted discloses the term “boundary portion” of granted claim 1. However, the [opponent] contested that said term is disclosed in the originally filed parent application. [2.4] In the present case, the term “boundary portion”, in particular the term “boundary”, is not literally disclosed in the earlier application as filed. What is disclosed is the term “intermediate portion” […]. “Boundary portion” is however different from “intermediate portion”: Claim 1 defines a “boundary portion between the support portion and the unfolding portion”. Since the “portion between the support portion and the unfolding portion” already corresponds to an “intermediate portion”, for the skilled reader the further attribute “boundary” clearly implies a further limitation. [2.5] The attribute “boundary” must be seen in the context in which it is used in granted claim 1 when it is being considered whether the claimed subject-matter extends beyond the disclosure of the earlier application as filed. First of all, claim 1 defines a “boundary portion between the support portion and the unfolding portion”, which means that the boundary portion is situated between two other portions. In addition, prior to this, claim 1 specifies that the “unfolding portion (42B) has one end continuous with said support portion”, which means that the support portion and the unfolding portion are not separated but connected to each other. As a consequence, the “boundary portion” defined in this context corresponds to a portion between (i.e. “intermediate”) two adjacent portions (i.e. between the “support portion” and “unfolding portion”) that are connected to each other. Thus, the “boundary portion” can only itself be continuous with the adjacent portions. As disclosed in the earlier application as filed […], the unfolding portion is “capable of unfolding around the intermediate portion”. Therefore, an unfolding portion adjacent to an intermediate portion is disclosed. And as agreed by the OD and not contested by the parties, a “support portion” is originally disclosed as well, the support portion corresponding to the “base portion 42A” and the unfolding portion corresponding to the “bag housing portion 42B” as described on page 32 of the earlier application. In addition, said parent application discloses […] that a “connecting portion between the base portion 42A and the bag housing portion 42B … is a hinge portion 46 when the bag housing portion 42B unfolds”. From this it follows that there is a basis in the earlier application for “an intermediate portion connecting the support portion and the unfolding portion”. Such intermediate portion is also visible in the embodiments according to Fig. 1 or Figures 4 to 8, where the support portion and the unfolding portion are formed as one piece showing a transitional region in between them.
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Interpretative Spotlight: “Boundary portion”
K’s Law – The ebook
Since said connecting portion is further specified to be a hinge portion, it is also clear for the skilled person that the connecting portion has an extension in three dimensions, in particular since any technical “hinge” is not represented by a pure limit line but relates to an object having an extension in three dimensions. It remains to be discussed whether the earlier application provides a basis for the attributive term “boundary” used in this context and not literally disclosed: The earlier application as filed describes the connecting portion […] as a “rigidity-suddenly-changing portion formed in the middle portion”, e.g. a portion between the base portion 42A having a high rigidity and the bag housing portion 42B having a lower rigidity as described with regard to the first embodiment ([…]; portion 46 in Fig. 1), but also in relation to further embodiments (portion 64 in Fig. 5, portion 70 in Fig. 6, portion 84 in Fig. 7, portion 97 in Fig. 8). Therefore, the parent application discloses that the connecting portion is a region which separates two portions of different rigidity, i.e. of different material characteristics. In the Board’s view, a region or portion which separates two adjacent portions of different material characteristics constitutes a “boundary” in respect of these material characteristics. What is more, a “boundary” in the general meaning of the term serves to “indicate the bounds or limits of anything whether material or immaterial” (see Oxford English Dictionary), i.e. not only relating to geometrical or geographical limits but also applicable e.g. to a change in material characteristics (such as stiffness, rigidity, material composition). Therefore, a region separating adjacent regions of different material characteristics can be qualified by using the attributive term or qualifier “boundary”. In this sense, the “portion between the support portion and the unfolding portion” as defined in granted claim 1 is a boundary for the support portion (having a high rigidity) as well as for the unfolding portion (having a low rigidity) in respect of their material characteristics. Since a “boundary portion” intended as a portion between two adjacent portions and itself continuous with said adjacent portion can only be an intermediate portion connecting two adjacent portions having different material characteristics and since this is disclosed in the earlier application as filed, the Board concludes that the subject-matter of claim 1 does not extend beyond the original disclosure of the earlier application. [2.6] Contrary to the argument of the [opponent], the combined feature “boundary portion” must relate to a region extending in three dimensions and not to a clear limit in terms of a one-dimensional limit line or a twodimensional area between two portions extending in three dimensions. On the one hand, in the contested patent the term “portion” is always used in conjunction with a three-dimensional object (in the present case: a pillar garnish formed by a support portion and an unfolding portion) and therefore defines a region having a certain 1300 | 3398
Interpretative Spotlight: “Boundary portion”
K’s Law – The ebook
extension in three dimensions, and this interpretation also holds true when the attributive term “boundary” is added. On the other hand, claim 1 of the granted patent defines the function of the “boundary portion” that “becomes a hinge (46) for the unfolding portion when the bag expands”. For the skilled person a technical “hinge” has a three-dimensional extension and is not represented by a clear limit line as argued by the [opponent]. It is agreed that the term “boundary portion” is not synonymous with the terms “intermediate portion” or “connecting portion”, which are originally disclosed. The attributive term “boundary” provides a further restriction in respect of said intermediate or connecting portion, specifying a limiting characteristic of said intermediate portion. And in this respect the earlier application as filed provides a basis for such kind of limiting characteristic of the intermediate portion, disclosing in fact a change in material characteristics with regard to the adjacent portions, as explained above. [2.7] The [opponent] further argued that the fact that the term “boundary portion” was not directly and unambiguously derivable from the original parent application documents could also be inferred from the diverging opinions of the [patent proprietors] and the [opponent] on whether the embodiments according to Fig. 9 and 10 of the patent in suit had to be excluded since in these embodiments the support portion and the unfolding portion were separated from each other whereas the “boundary portion” as claimed was required to be a “connecting portion”. However, the fact that embodiments are not covered by the claims does not necessarily imply that the claimed subject-matter was not disclosed in the original parent application documents. As argued above, claim 1 as granted defines a boundary portion being, on the one hand, an intermediate region between two adjacent portions (i.e. the support portion and the unfolding portion), and being, on the other hand, continuous with said two adjacent portions, the attribute “boundary” implying that the boundary portion forms a limit with respect to the material characteristics of the two adjacent portions. The term “connecting portion” is indeed mentioned with respect to the fifth embodiment according to Fig. 10 […], but there the connecting portion refers to the region where a slight gap is formed between the base portion 114 and the bag housing portion 116 and which is used as a hinge 118.
As indicated in Fig. 10, said hinge 118 belongs to the outer skin 44 that covers and connects the base portion and the bag housing portion. However, said “connecting portion” does not correspond to a boundary portion between (i.e. “intermediate”) two adjacent portions (the base portion and the bag housing portion) and continuous with said two adjacent portions. Accordingly, the embodiment of Fig. 10 does not fall under the wording of granted claim 1. The term “connecting portion” is also mentioned with respect to the fourth embodiment, but only with reference to the example depicted in Fig. 8, whereas Fig. 9 describes a modified example of the fourth embodiment of the patent in suit […].
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Interpretative Spotlight: “Boundary portion”
K’s Law – The ebook
The support portion and the unfolding portion in this modified example (denoted as hard member 104 and soft member 106 of the base member 102) are explicitly described as being “separated at a portion corresponding to a hinge”. The further characterization that “the hard member 104 and the soft member 106 are integrally formed by an adhesive (not shown) or the like” might show that the two portions are connected and continuous in this sense. [2.8] Even the embodiment according to Fig. 9 does not justify that, as alleged by the [opponent], the term “boundary portion” had to be construed as meaning an unextended limit or a limit area having, at the most, a small extension, i.e. not relating to a transitional region having a certain extension. On the contrary, all the embodiments depicted in Fig. 1 or Figures 4 to 8 show a region between the support portion and the unfolding portion having a certain extension to provide a transition in material characteristics. [3] The impugned decision to revoke the European patent as granted was based only on the conclusion of the OD that the term “boundary portion” was not disclosed in the originally filed parent application documents. The Board, however, finds that the feature “boundary portion” of granted claim 1 is disclosed in the earlier application as filed and that, therefore, the subject-matter of claim 1 does not extend beyond the original disclosure of the earlier application (see item 2 above). Consequently, the appealed decision must be set aside. [4] The Board also notes that, in its decision, the OD - except for the term “support portion” - neither dealt with further features of granted claim 1 objected by the opponent as having no basis in the original disclosure of the parent application, nor considered the grounds for opposition under A 100(a) EPC 1973 raised in the notice of opposition. For these reasons, and since this was agreed upon by the parties during the oral proceedings before the Board, the Board considers it appropriate to remit the case to the department of the first instance for further prosecution in accordance with A 111(1), second sentence, EPC 1973. To download the whole decision (T 549/09), click here. The file wrapper can be found here.
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T 1229/09 – Don’t Jump To Conclusions
K’s Law – The ebook
T 1229/09 – Don’t Jump To Conclusions 18 Mai 2012
I found this decision interesting because it refers to an old decision – which I did not know – defining another secondary indicia for inventive step. Claim 1 of the main request before the Board read: A clean-room installation with filter-ventilator units (2), each of which has at least one fan motor (3) and is connected to a mains supply (L1, N), characterised in that the filter-ventilator units (2) are connected to one another and to at least one central command unit (16, 18) via a bus system (10), that each filter-ventilator unit (2) is directly addressable by the command unit (16, 18) via an address number or identification number and the bus system is part of a LAN network, that the filter-ventilator units (2) are connected to the bus system (10) in each case via a node (13), and that the fan motors (3) are electronically commutated direct-current motors. The Board found this claim to be novel over an alleged prior use (“Daldrop”), in particular because the bus system was part of a LAN network. It then continued: *** Translation of the German original *** [2.3] It is undisputed that LAN networks were known at the relevant priority date […]. LAN networks consist of up to 32000 nodes which are connected via various media that form a data bus […]. Typical nodes comprise, inter alia, a microprocessor referred to as neuron chip and a transceiver that establishes the connection with the transfer medium […]. The use of a LAN network rather than the serial network based on the RS 232 standard which is known from “Daldrop” […] solves the problem to make it possible to connect a greater number (i.e. up to 32000 […] rather than 4096 at the most) of filter-ventilator units that can be individually controlled, for a given network. It is also possible to consider that a further problem is solved, i.e. the use of a more up-to-date network that is adapted to an industrial context […]. The skilled person has several options for solving these problems. As a matter of fact, there is a whole array of field buses for industrial contexts other than LAN networks […] that would solve said problems […] even though they have not been mentioned in the present method. When choosing an appropriate field bus the skilled person would be guided by the fact that the LAN network is used in building control (Gebäudeleittechnik), which is similar to clean-room technology […] and is suitable for establishing networks of ventilators […] and would consider using it in a clean-room device for connecting filter-aerator units and the central control unit, without there being any inventive step. [2.4] In this context the [patent proprietors] have submitted that it was common practice to multiply the number of serial networks of the kind known from “Daldrop” in order to be able to connect the desired number of aerator-ventilator units. They referred to decision T 812/92 which explained that a prior use that had occurred very close to the priority date of the impugned patent and which used the known prior art, such as “Daldrop”, was an indication for the presence of an inventive step if this prior art did not use the features according to their invention despite their alleged advantages. Moreover, the skilled person would consider LAN networks to bee to complex (aufwendig) and, therefore, too expensive for the mere control of filter-aerator units and would not have considered their use. They also referred to the fact that LAN networks were suitable for receiving data from a great number of nodes in these nodes and in further nodes and for taking into account the control of devices connected to these nodes […]. Such a scenario was rather untypical for an application in the context of cleanrooms. [2.5] The Board was not persuaded by these arguments. The common use of several networks of the kind known from “Daldrop” for controlling a greater number of ventilator-aerator units does not lead the skilled person to [adopting] a technical prejudice against the development of a new development of the whole system based on a different type of networks. At best, the 1303 | 3398
T 1229/09 – Don’t Jump To Conclusions
K’s Law – The ebook
skilled person is faced with a conflict of objective (Zielkonflikt) between a time-tested technology, which has, however, reached the limits of its expandability, and the development effort related to a new system. In the case underlying decision T 812/92 the solution according to the invention was not found in the prior art, at least in the particular context (point [3.4.8] of the reasons). Things are different in the present case because LAN networks were also well known for aerator control […]. Moreover, the declarations of witness Goller show that costs were the decisive criterion for the choice of the “Daldrop” solution […]. Therefore, it is not possible to conclude on non-obviousness from the fact that the LAN network had not been used in this solution. It is true that LAN networks are used in systems that are more complex than aerator-ventilator units in cleanroom installations. However at least after the development of digital systems it has become common to use more complex technical systems for solving less complex problems. The decisive criterion, therefore, is whether [the system] is suitable for solving the problem to be solved, which is the case for a LAN network (see [2.3] above). In this context it also has to be taken into account that it was known to use LAN networks for aerator applications […]. The Board came to the conclusion that the claim lacked inventive step. Should you wish to download the whole decision (in German), just click here. To have a look at the file wrapper, click here. NB: Case T 812/92, the Opposition Division had revoked the opposed patent because the claimed subject-matter (directed at a method of manufacturing profile steel in a steel rolling mill) was not novel over Japanese applications D1 and D3. The Board found the claims before it to be novel over this prior art and then, surprisingly, made use of a prior use invoked by one of the opponents: *** Translation of the German original *** [3.4.8] The fact that very close to the priority date of the impugned patent (August 16, 1986) a competitor of the patent proprietor, i.e. opponent 2, in a letter dated July 28, 1986, has offered a rolling mill facility using a conventional finishing stand (Fertiggerüst) – i.e. which did not implement (verwirklicht) the advantageous teaching – to a manufacturer of profiled steel, is another argument in favour of inventive step of the solution, which allows to make a better use of the universal finishing stand than all the known methods and, therefore, to obtain a particularly high throughput in view of the effort needed. In spite of its efforts and the assumably existing need to make best use of the rolling mill, including the finishing stand, the competitor as not succeeded in finding the solution according to the invention. This is evidence (Beweisanzeichen) for [the existence of an] inventive step (see Pagenberg, A 56, marginal number 107, EPÜ Münchner Gemeinschaftskommentar, as well as BGH GRUR 1979, 619, 620 “Tabelliermappe”).
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T 1051/09 – Too Particular
K’s Law – The ebook
T 1051/09 – Too Particular 17 Mai 2012
This appeal was against the revocation of the patent under consideration by the Opposition Division (OD). Claim 1 of the main request before the Board read: A process for preparing paper comprising: (A) a resin treatment step for reducing the AOX content of a starting water-soluble wetstrength resin comprising azetidinium ions and tertiary aminohalohydrin, comprising treating said resin in aqueous solution with base to form treated resin, wherein at least 90% of the tertiary aminohalohydrin present in the starting resin is converted into epoxide, the level of azetidinium ion is substantially unchanged, and the effectiveness of the treated resin in imparting wet strength is at least as great as that of said starting wet strength resin; and (B) a paper-making step comprising: (a) providing aqueous pulp slurry (b) adding to the aqueous pulp slurry the treated resin produced in step (A) (c) sheeting and drying the aqueous pulp slurry to produce paper. In what follows the Board examined this request in view of sufficiency of disclosure. [2] The claimed process is defined in a functional manner, i.e. by its outcome. Since the claimed subject-matter is not limited to particular water-soluble wet-strength resins, the question to be answered with respect to A 83 is whether the way to achieve that outcome for any possible water-soluble wet-strength resin is disclosed in the patent in suit in such a manner that it is fit for generalisation beyond the specific examples disclosed. [2.1] The only general information relating to the nature of the resin is provided in paragraph [0034] of the patent in suit which states that the amount of base varies widely from resin to resin and teaches that this is dependent on :
resin type amount and type of polymeric aminochlorohydrin the amount of epi by-products the amount of stabilisation acid in the resin the conditions used to activate the resin.
There are however no further explanations, analyses or discussions of any of these factors, their interrelationship and how they affect the outcome. Thus all that this paragraph provides is a disclosure which while comprehensive in scope is almost devoid of any relevant information. In particular this paragraph does not amount to the provision of a teaching of a concept fit for generalisation since no consideration is presented of how the identified factors might, even in a very general manner, influence the outcome or interact with the treatment system. According to paragraph [0035], the treatment temperature ranges from 0° to 100°C, the time from 1 minute to 24 hours and the resin solids content for base treatment from 1% up to 40%. These are very broad ranges and again there is no discussion or appreciation of their interdependence or relationship to other resin properties. Paragraph [0038] provides the general statement that treatment conditions can be optimized for each resin to a given set of conditions, but that other conditions also give good results and that if shorter reaction time is desired then higher temperatures are needed. Thus the sum total of the general teaching is that it is necessary to select conditions that are neither “too mild” nor “too harsh”, but are “moderate” or “just right” and that the conditions have to be adapted to the resin and a list of factors which influence the reaction, in line with the argumentation of the [patent proprietor]. [2.2] As submitted by the [patent proprietor], and not disputed by the [opponent], the patent in suit does indeed contain a great many examples. It is also the case that a number of different resins are employed in these examples. However the outcome of these is variable – some provide the required outcome in terms of reduction 1305 | 3398
T 1051/09 – Too Particular
K’s Law – The ebook
of AOX content (and also conversion of aminohalohydrin to epoxide) and retention of azetidinium groups, whereas others do not. [2.2.1] The [patent proprietor] drew attention in particular to the family of examples 25, 26 and 28, which would reveal that the required “moderate” conditions to obtain simultaneously the required reduction of AOX and retention of azetidinium were provided by example 25, in which Kymene® 736 resin was treated:
at 55°C for 5 minutes with 4.3 mmole NaOH/g resin and peak pH of 10.8
resulting in a percentage AZE of 38, a percentage aminochlorohydrin (ACH) of <2 and 165 ppm AOX. The conditions of example 26 were however “too harsh”, leading to a too great reduction in azetidinium:
carrying out reaction under the same conditions of temperature and time, i.e. 55°C for 5 minutes but with 5.1 mmol NaOH/g resin and a maximum pH of 11.1
resulting in a percentage AZE of 32, a percentage ACH of <2 and an undetectable amount of AOX. Example 28, according to the [patent proprietor], demonstrated conditions that were “too mild”, i.e. did not lead to the required reduction of AOX:
25°C for 5 minutes same base concentration as example 25, i.e. 4.3 mmole NaOH/g resin but higher maximum pH namely 11.8
resulting in a percentage AZE of 37, a percentage ACH of <2 and 770 ppm of AOX. As the respective values of the starting resin were 42%, 30% and 4820 ppm the reduction was (rounded): Example 25: 10% AZE, >93% ACH, 96% AOX Example 26: 34% AZE, >93% ACH, 100% AOX Example 28: 12% AZE, >93% ACH, 84% AOX. Apparently, from the [patent proprietor’s] submissions, a reduction of 10% or 12% of AZE is still considered as being “substantially unchanged”. [2.2.2] Further, the [patent proprietor] drew attention to examples 24 to 26 in which the effect of the “harshness” of treatment on AZE retention was demonstrated. In example 24, treatment was carried out at
55°C for 5 minutes 3.9 mmole NaOH/g resin, peak pH 10.3
which resulted in hardly any loss of AZE with a percentage of 41, a percentage ACH of <2 and an undetectable amount of AOX. Hence, the reduction was: Example 24: 2% AZE, >93% ACH, 100% AOX. [2.2.3] The effect of the nature of the treatment on reduction in AOX content was stated by the [patent proprietor] to be demonstrated by examples 17 and 18, in which however Kymene® 557LX resin, hence a different resin from that of examples 24-26 and 28, was employed: Example 17:
temperature/time conditions of 55°C/5 minutes a base concentration of 2.4 mmole NaOH/g resin the reaction reaching a peak pH of 10.9
resulting in a percentage AZE of 47.5 and a percentage ACH of 0.0 and 200 ppm of AOX. 1306 | 3398
T 1051/09 – Too Particular
K’s Law – The ebook
In example 18 the same temperature/time conditions were employed but with 2.0 mmole NaOH/g resin, and a peak pH of 10.4, leading to a percentage AZE of 51.0, a percentage ACH of 1.5 and 663 ppm of AOX. The values of the starting material being 51.6%, 8.8% and 3200 ppm, the reduction can be calculated: Example 17: 8% AZE, 100% ACH and 94% AOX Example 18: 1% AZE, 83% ACH and 79% AOX. The conditions used in these examples differ significantly from those of examples 24-28, also in the concentration of base. Therefore, examples 17 and 18 cannot be compared or combined with examples 24-28 in order to obtain general information about how to achieve the result now being claimed. [2.3] Furthermore, in the arguments presented with respect to examples 17 and 18 the [patent proprietor] focused solely on the AOX content, and omitted to explain what information these examples provide about other properties of the resin. Accordingly, and apart from the question of the interpretation of “substantially unchanged” for the level of AZE, not only has the [patent proprietor] discussed unrelated examples in combination, it has furthermore restricted consideration of these examples to certain aspects in isolation. This approach is however inconsistent with the requirements of the claimed subject-matter: to obtain a set of properties in combination. [2.4] Other evidence, not invoked by the [patent proprietor], undermines the conclusions presented by the [patent proprietor] regarding appropriate conditions based on example 25, showing these not to be generally applicable. Thus in comparative example 5 a polyamino-polyamide-epi resin containing about 13 mole% of AZE was prepared and in the related examples 21 and 22 it was base treated. In the results and discussion of examples 21 and 22 it is stated that treatment at 55°c for 5 minutes at a base concentration of 5.0 mmole NaOH/g resin and a peak pH of 11.6, i.e. a higher NaOH concentration and peak pH than employed in example 25, leads to the desired properties of the treated resin (a percentage AZE of 11.8, a percentage ACH of 0.0 and 244 ppm of AOX). According to example 22 however, the same temperature/time conditions but with a base concentration of 4.3 mmole NaOH/g resin and a peak pH of 11.2, i.e. the same base concentration as example 25 but a higher peak pH, do not lead to a desirable product, with a percentage AZE of 12.8, a percentage ACH of 5.1 and 759 ppm of AOX. The starting resin having values of 13,1%, 54,8% and 9600 ppm, respectively, the reduction can be calculated: Example 21: 10% AZE, 100% ACH and 97% AOX Example 22: 2% AZE, 89% ACH and 92% AOX. The evidence of these examples in relation to example 25 is that similar reaction conditions can lead to greatly differing outcomes in the case of different resins. The patent in suit however provides no explanation of the underlying factors leading to these differences. [2.5] For the sake of completeness, the Board also notes that the teaching of the patent in suit with respect to the requirement of claim 1 of maintenance of the effectiveness of the resin at imparting wet-strength properties is also insufficient. There is a discrepancy between the results depending on the aging of the paper. Only in the case of examples 21 and 22 is a consistent improvement shown. For many other examples the requirement that the wet-strength should be at least that imparted by the starting resin is not fulfilled. [2.6] The only conclusion that can be drawn from the above is that the conditions necessary to meet the varying requirements of the resin, in particular conversion of AOX and retention of AZE as well as maintenance of the effectiveness of the resin at imparting wet-strength properties, cannot be generalised but need to be adapted for each starting resin to be treated. [2.7] Accordingly the patent in suit provides no indication or teaching for the skilled person on how starting from a given resin it is possible in a directed and structured manner to identify an appropriate set of conditions. Nor does the patent provide any indication or guidance to assist the skilled person in evaluating the outcome of unsuccessful trials to identify which modifications need to be made in order to progress towards conditions which give the desired result. Each set of examples in the patent in suit relates to a specific resin. The [patent proprietor] has failed to show that the information given in the patent relating to the nature of the resins and conditions employed would 1307 | 3398
T 1051/09 – Too Particular
K’s Law – The ebook
provide the skilled person with the insight sufficient to understand the interaction between these factors and how they influence the outcome so that it would be possible in a directed way, without undue burden, to converge on a set of conditions which for any given resin would yield the desired result. Accordingly the technical teaching of the patent amounts to little more than a report that it has been found possible to provide optimised conditions enabling the various competing requirements to be met and some examples of special cases in which this was achieved. What is lacking is a generalisable teaching applicable within the scope of the claims, i.e. beyond the specific examples (cf. decisions T 435/91 [2.2.1] and T 226/85). [2.8] The main request […] therefore does not meet the requirements of A 83 and is refused. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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T 371/10 – Allow For Shrinking
K’s Law – The ebook
T 371/10 – Allow For Shrinking 16 Mai 2012
All the parties appealed against the maintenance of the opposed patent in amended form. The Board found the main and first auxiliary requests not to comply with A 123(2) and then dealt with the second auxiliary request, claim 2 of which read, in English translation: (NB: part (A) of claim 1 as granted comprised four alternatives (A1) to (A4), wherein (A2) covered “compounds of formula (A2)
and their esters and salts” ; in part (B), the changes with respect to claim 1 as granted are made apparent below) Use of herbicide combinations for controlling harmful plants in rice crops, characterised in that the herbicide combination in question has a synergistically active content of (A) a broad-spectrum herbicide from the group of the compounds consisting of (A2) glyphosate and its alkali metal salts or salts with amines and sulfosate, and (B) one or more a herbicides from the group of the compounds which consists of (B1) foliar-acting and soil-acting herbicides which are effective selectively in rice against monocotyledonous and dicotyledonous harmful plants (residual action) from the group consisting of molinate, thiobencarb, quinclorac, propanil, pendimethalin, bispyribac-Na, LGC 40863, butachlor, pretilachlor, metolachlor, acetochlor, clomazone, oxadiargyl, sulfentrazone, MY 100, anilofos, cafenstrole (CH 900), mefenacet, fentrazamid, thiazopyr, oxadiazon, esprocarb, pyributicarb, azimsulfuron, azoles of the type of 1 -(3-chloro- 4,5,6,7-tetrahydropyrazolo-[l,5-a]pyridin-2-yl)-5methylpropargylamino)-4-pyrazolylcarbonitrile thenylchlor, pyriminobac-methyl (KIH 6127), fluthiamide, mesotrione and nicosulfuron and (B2) herbicides which are effective selectively in rice against dicotyledonous harmful plants and/or sedges from the group consisting of 2,4-D, MCPA, bensulfuron-methyl, ethoxysulfuron, metsulfuron, acifluorfen, cinosulfuron, pyrazosulfuron, imazosulfuron, cyclosulfamuron, chlorsulfuron, bromobutide, carfentrazone, bentazone, benfuresate, chlorimuron, dithiopyr, triclopyr and tritosulfuron and (B3) foliar-acting herbicides which are effective selectively in rice against monocotyledonous harmful plants, from the group consisting of quizalofop-P, quizalofop, fenoxaprop-P, fenoxaprop, fluazifop-P, fluazifop, haloxyfop, haloxyfop-P, propaquizafop, clodinafop and cyhalofop or (B4) foliar- and soil-acting herbicides which are effective selectively in rice against monocotyledonous harmful plants from the group consisting of sethoxydim, cycloxydim, clethodim and clefoxidim and that the rice crops are tolerant to the herbicides (A) and (B) contained in the combination, if appropriate in the presence of safeners. The opponents objected that this claim violated A 123(2): 1309 | 3398
T 371/10 – Allow For Shrinking
K’s Law – The ebook
*** Translation of the German original *** [3.2] The [opponents] have objected that the combinations of claims 2 and 3, which have been obtained by deleting [compounds] from lists, go beyond the disclosure of the application as filed. In claim 2, several compounds of the groups (A) and (B) have been deleted. However, these deletions do not lead to a limitation to individual herbicide combinations that have not been explicitly disclosed (“singling out”) but result in – admittedly limited – generic residual subject-matter. As such shrinking (Schrumpfung) of the scope of the claim does not result in a new teaching, is not objectionable. The fact that in claim 2 now only one herbicide (B) is required only corresponds to the abandonment of part of the claimed subject-matter and does not generate a new subgroup that has not been originally disclosed (see T 615/95 [6]). The same holds true for claim 3 of this auxiliary request. [3.3] Therefore, the claims of the second auxiliary request comply with the requirements of A 123(2). Should you wish to download the whole decision (in German), just click here. To have a look at the file wrapper, click here.
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T 1835/08 – Is Everything Clear?
K’s Law – The ebook
T 1835/08 – Is Everything Clear? 15 Mai 2012
The question to which extent claims that are based on the claims as granted can be objected to in opposition proceedings for being unclear is a delicate one and, as far as I can see, there is some disagreement between the Boards on this matter. The present decision shows us how to deal with a borderline case. Claim 1 of the sole request before the Board was based on claims 1, 2, 5, and 8 as granted and read (in English translation; amendments with respect to the granted claims are marked): 1. Towing hitch for towing vehicles (2), comprising a tow-bar (8) which is mounted pivotably about at least one rotatory axis (16,18) and is movable by a mechanical drive (13) between an extended operating position (47) and a retracted inoperative position (48) on the towing vehicle (2), the towing hitch (1) having an automatic locking device (56) which can be actuated by the mechanical drive (13), characterized in thatwherein the locking device (56) has a transmission device (57) for converting the rotating driving movement into a translatory locking movement for the actuation of form-fitting locking elements (58,59) which act on the tow-bar (8), 2. Towing hitch according to Claim 1, characterized in that the transmission device (57) has a wheel (68) which is connected to the mechanical drive (13) and has at least one slotted guide mechanism (71, 80), which wheel displaces the locking elements (58, 59) at the end of the movement of the tow-bar and brings them into blocking engagement with the tow-bar (8) 5. Towing hitch according to one of the preceding claims, characterized in thatwherein the locking elements (58, 59) are designed as toothed strips (60, 61) or as blocking balls (62,63,64,78) with ball receptacles (65, 7876, 79) and ball guides 8. Towing hitch according to one of the preceding claims, characterized in thatwherein one or a plurality of ball receptacles (65) for the locking elements (58) are arranged at the tow-bar end (11).
*** Translation of the German original *** [3.1] Claim 1 of the sole request on file is based on a combination of granted claims 1, 2, 5, and 8, wherein the embodiment of the locking element as toothed strips according to claim 5 was deleted, as well as the variant wherein there is only one ball receptacle at the tow-bar end, as claimed in claim 8. Moreover, it was specified
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T 1835/08 – Is Everything Clear?
K’s Law – The ebook
that the receptacles at the tow-bar end are ball receptacles, the reference to the locking elements defined in the preamble of claim 1 was established by using of the definite article “the” and reference numbers were corrected. [3.2] A 100 EPC 1973 provides an exhaustive list of the grounds for opposition. According to the established case law, it is not possible to invoke further reasons (that would have led to a refusal of the application during the examination proceedings) against the patent as granted during opposition proceedings. Therefore, the objection of lack of clarity is not a ground for opposition and cannot, as a consequence, be invoked against the claims of the patent as granted (see, for instance, decision T 23/86, which has been confirmed in a great number of decisions of the Boards of appeal). [3.3] However, if the patent proprietor amends the claims with respect to the claims as granted and requests the maintenance of the patent in amended form, the Opposition Division - and, in opposition appeal proceedings, the Board of appeal - is competent and entitled, pursuant to A 103(3)(a) (which corresponds to A 102(3) EPC 1973), to fully examine these amendments as to their compatibility with the requirements of the EPC (G 9/91 [19]). When doing so, they can – according to the established case law – also examine grant requirements that are not grounds for opposition. Therefore, amendments of the patent can be examined in view of the requirements of A 84 EPC 1973. [3.4] The structure of the claims as granted of the present patent requires claim 2 to directly depend on claim 1, whereas claims 5 and 8 may depend directly on claim 1 but also on claim 2 or – as far as claim 8 is concerned – from claim 5. If the amendment consisted in a mere combination of the claimed features as granted in the above mentioned order, then it would only have the effect of bringing together the wording of the granted claims under consideration, even if one of the two variants claimed in claim 5 and 8 was deleted. According to the established case law (see T 381/02 [2.3.7] and T 1855/07 [2.2-4]), such a combination cannot be considered to be a substantive amendment (sachliche Änderung) that would allow for an objection of lack of clarity pursuant to A 84 EPC 1973 for combinations of granted claims. Decisions T 1459/05 and T 656/07, which have been referred to by [opponent 2] during the written proceedings, deal with particular exceptional situations which do not apply in the present case. However, in the present case, there have been amendments with respect to the claims as granted, such as the insertion of the definite article “the” before “locking elements” and the use of the expression “ball receptacles” instead of “receptacles”, which amendments have to be fully examined as to their compatibility with the requirements of the EPC (such as A 84 EPC 1973). The insertion of the definite article “which wheel displaces the locking elements at the end of the movement of the tow-bar” has the meaning that, in comparison with the corresponding feature without the definite article in claim 2 as granted, the form-fitting locking elements according to claim 1 as granted, which are actuated by a translatory locking movement and which act on the tow-bar, are limited to the embodiment defined in claim 2 as granted (i.e. locking elements that are displaced at the end of the movement of the tow-bar and brought into blocking engagement with the tow-bar, as shown in the embodiments comprising blocking balls). As a consequence, it is now clear which locking elements are meant, whereas the embodiment according to claim 2 as granted (without the definite article “the”) does not specify whether it is only the form-fitting locking elements defined in claim 1 as granted that are displaced or whether this refers to different locking elements: it is the locking elements defined in preamble of claim 1 that are displaced. The definition of “ball receptacles” (instead of “receptacles”) for the locking elements at the tow-bar end results in a limitation to the embodiment presented as the preferred embodiment in the impugned patent, which comprises locking elements having the shape of blocking balls (see impugned patent, column 10, lines 12 to 13: “At the tow-bar end (11) there are one or several recessed receptacles, preferably ball receptacles (65).” Therefore, said amendments only result in a limitation of the claimed subject-matter according to claim 1 of the present request with respect to the claims as granted and comply with the requirements of A 84 EPC 1973. To download the whole decision (in German), click here. The file wrapper can be found here.
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T 153/11 – Not Quite The Same
K’s Law – The ebook
T 153/11 – Not Quite The Same 14 Mai 2012
The criteria for assessing lack of novelty are quite restrictive under the EPC as interpreted by the case law – which is something even Examining Divisions (ED) sometimes forget. Claim 1 before the Board read: An apparatus for controlling supercharging pressure in an internal combustion engine, wherein the engine includes: an exhaust passage (20); a turbine (32) located in the exhaust passage (20), the turbine (32) having variable position vanes (36) which open and close to change the flow rate of an exhaust gas through the turbine, wherein the exhaust gas applies a driving torque to the turbine (32); an intake passage (22); a compressor (34) located in the intake passage (22), the compressor (34) supplying air to the internal combustion engine depending on the driving torque of the turbine (32); a recirculating passage (24) connecting the exhaust passage (20) and the intake passage (22) to each other to recirculate exhaust gas from the exhaust passage (20) to the intake passage (22); and an EGR control valve (50) located in the recirculating passage (24), wherein the position of the EGR control valve (50) is varied to adjust the quantity of exhaust gas passing through the recirculating passage (24); wherein the position of the variable vanes (36) is controlled according to the position of the EGR control valve (50) by setting a limit value (Va) for the position of the variable vanes (36) when the vanes are being closed to limit the operational range of the variable vanes (36) depending on the degree of opening of the EGR control valve (50), thereby preventing an excessive amount of exhaust gas from flowing into the recirculating passage (24). The ED found this claim to lack novelty over document D1. The Board did not agree: [4.1] The decision under appeal argues lack of novelty over D1. This document, see figure 1, relates to the same type of variable displacement turbocharger with valve controlled exhaust gas recirculation as the application.
Here the variable displacement turbo-charger is controlled in response to corrections in the EGR rate of the EGR control system, see abstract and figure 8, between blocks 103 and 106. 1313 | 3398
T 153/11 – Not Quite The Same
K’s Law – The ebook
In more detail, see figures 6 and 7, vane control signal LADUTY is determined according to different schemes (either following step S45 in figure 6, or one of steps S50, S51 in figure 7) for different engine operating states.
It is always derived from a duty signal DUTB2, which depends on EGR valve position via control and corrections signals MEGRM, KEGR1, VNEGR2, see figure 5, but has different offsets or none depending on operation state. Figure 6, step S45, shows a downward correction by DUTDT for heavy acceleration, where the turbocharger tends to run too fast, to effectively open up the vanes and so slow the turbine down, column 19, lines 12 to 16, reducing boost pressure in the intake, column 7, lines 47 to 49, and thus back-pressure in the exhaust passage. This effect is similar to that in the present application, see above, and is achieved by the valve position dependency of the vane control signal LADUTY. In that they produce the same or similar effect and both involve valve position dependency the two approaches can be said to be “comparable”, as argued in the decision under appeal.
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T 153/11 – Not Quite The Same
K’s Law – The ebook
[4.2] However, it is not enough that functions or effects are “comparable”, the same or similar to demonstrate lack of novelty. Rather, the prior art must also achieve these functions and effects in the same way as the claimed invention, and, applying the generally accepted standard for assessing novelty, this must be derivable clearly and unambiguously from D1. That is not the case in the present appeal. In D1 the vane control signal LADUTY depends on the EGR valve position as well as on other variables. Vane position thus varies with EGR valve position among others across some range. The limits of that range and how they might correlate with the EGR valve position are entirely unknown, let alone that it can assumed conclusively and with certainty that the limit value in the direction of opening depends on the EGR valve position. This indeed need not be so. Nor can the correction of LADUTY by an offset be regarded in any way as a limitation in this particular sense, namely that of the limit value required by claim 1. This particular feature of the valve control, which represents the “core” or “essence” of the claimed invention is thus not clearly and unambiguously disclosed in D1. The subject-matter of claim 1 of the main request is thus novel over D1. [4.3] The above feature is also not directly and unambiguously derivable from any of the other prior art cited in the search report. Briefly, in prior right document EP-A-1 031 719 the turbo vane signal Aturbr is based on the EGR valve opening value Aevr, see figures 15,20 and 21 and paragraphs [0149] and [0111]. A similar approach is taken in JP-A-2000002120. In US-A-6 076 353 vane and valve position control signals are each calculated from intake pressure and mass airflow, while in JP-A-2000170580 the two are controlled so that the supercharge pressure and fresh air intake increase or decrease together. There is no mention in these documents, explicitly or otherwise, of limiting the operation range of the vane depending on the opening degree of valve. 4.4 The Board can but conclude that the apparatus of claim 1 is novel over the prior art as required by A 52(1) in combination with A 54. The Board then remitted the case to the ED for further prosecution. To download the whole decision, click here. The file wrapper can be found here.
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T 913/09 – The CW Problem
K’s Law – The ebook
T 913/09 – The CW Problem 12 Mai 2012
The so-called « could-would » approach has some limits but they are reached only in very particular cases, such as situations of arbitrary choice. The patent proprietor filed an appeal against the revocation of its patent by the Opposition Division. Claim 1 of the main request before the Board read : A medium for detecting Campylobacter in a sample comprising (a) a substrate for an L-alanine aminopeptidase; (b) a conditionally detectable marker, wherein said marker is capable of providing a detectable signal when in contact with a viable microorganism; (c) a signal moiety linked to the substrate, said moiety providing a detectable signal when cleaved by said aminopeptidase from a microorganism; and (d) a growth supporting medium for Campylobacter wherein said growth supporting medium contains antibiotics to suppress the growth of non-target microorganisms. The Board found this claim to be novel and found the objective technical problem to consist in the provision of improved means and methods for the detection of Campylobacter. It then went on to say: [21] Based on its definition of the technical problem as the provision of an alternative method for detecting Campylobacter, and referring to the Case Law (T 631/06, T 879/05, T 931/04, and T 12/07) the respondent argued that the correct approach in the assessment of inventive step was not whether the skilled person would have arrived but merely whether it could have arrived at the claimed solution. It was thus sufficient to verify if the skilled person could have selected an additional compound, in this case a substrate for an L-alanine aminopeptidase linked to a cleavable signal moiety, from the prior art and added it to the medium disclosed in document D16. The board disagrees with the respondent for two reasons. First, the technical problem consisted of providing an improved medium […], a situation to which the cited decisions do not apply. Second, in the cases underlying the cited decisions, the available prior art contained lists of compounds known or suggested to be suitable for the intended purpose. Selecting compounds from these lists was considered to lack an inventive step. In the case at issue here, the prior art documents cited by the respondent (D6, D9, and D18) refer to the use of several compounds for a purpose different from that of the claimed invention. This represents an entirely different situation. [22] Therefore, the question to be answered is whether the skilled person would have combined the prior art teachings to arrive at the claimed solution with a reasonable expectation of success but not whether it merely could have done so. Furthermore, it is established case law that when assessing inventive step, an interpretation of the prior art documents as influenced by the problem solved by the invention, where the problem was neither mentioned or even suggested in those documents, must be avoided, such an approach being merely the result of an a posteriori analysis (cf. Case Law of the Boards of Appeal, 6th edition, 2010, I.D.5). Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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T 540/09 – Wrong Name
K’s Law – The ebook
T 540/09 – Wrong Name 11 Mai 2012
Nowadays companies merge and change their names all the time, and it can easily happen that an appeal is filed using a wrong name for the appellant. Is this sufficient to make the appeal inadmissible? As a rule, it is not. The present decision confirms this stance. [1] The opposition was originally filed in the name of SIG Technology AG. During the opposition proceedings the opponent filed further submissions as SIG Combibloc Systems GmbH. In the minutes of the oral proceedings the opponent is identified as SIG Technology Ltd. The opposition division’s decision refers to SIG Technology AG. The notice of appeal was filed in the name of SIG Combibloc Systems GmbH. In its communication dated 20 May 2009 the Board noted that due to the above-mentioned situation the notice of appeal appeared to contain an inconsistency concerning the name/identity of the appellant (R 101(2) and R 99(1)(a)), which has to be a registered party to the opposition proceedings (A 107) and a legal entity still existing at the filing date of the notice of appeal (T 525/94). The Board noted further that the appellant’s address was missing in the notice of appeal, contrary to the requirements under R 99(1)(a). Thereupon the Board requested from the appellant to provide explanations, in case it applied evidence concerning its status as a party in the present proceedings, and – insofar as possible – to remedy the deficiencies. In its reply dated 29 July 2009 the appellant submitted that the mention of SIG Combibloc Systems GmbH as the appellant in the notice of appeal dated 2 March 2009 as well as in the letter stating its grounds of appeal dated 4 May 2009 did not originate from any change as to the status of opponent but resulted from an unjustified modification introduced in its electronic file already during the opposition proceedings. It further indicated (supported by a copy of an extract of the Handelsregister des Kantons Schaffhausen) that SIG Technology AG and SIG Technology Ltd were the two different official names of the same company. It finally mentioned the address of the appellant. It requested to consider the notice of appeal and the statement of grounds of appeal as filed by the registered opponent SIG Technology AG and thus admissible. On that basis, the Board, concurring with its opinion expressed in its communication dated 1 September 2009, sees no element which would support any intention of the appellant to have the appeal filed in the name of a legal person different from the opponent registered as such at the EPO nor does the Board have any reason to consider any matter related to a possible transfer of the status of opponent. The Board considers the discrepancy between the registered opponent and the mentioned appellant as an error. The Board further notes that both the notice of appeal and the statement of grounds have been sent by the representative of the opponent in the first instance proceedings, under the same internal references, referring to the same patent, the same patent proprietor and mentioning the correct date of the impugned decision. Therefore, in line with the case-law established by T 97/98 and the decisions following it, the Board holds that only a mistake occurred in the name indicated and that sufficient elements are provided in order to allow its correction in this sense indicated by the opponent. As above-mentioned, the appellant also mentioned its address in its reply to the communication, so complying with the requirements of R 99(1)(a). The respondent questioned at no point in these appeal proceedings the admissibility of the appeal. Taking the above into consideration the Board finds the appeal admissible. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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T 443/11 – Irrelevant matter
K’s Law – The ebook
T 443/11 – Irrelevant matter 10 Mai 2012
This is an appeal against the refusal of an application by the Examining Division (ED). The reason given for the refusal was that the application did not meet the requirements of A 83 and R 42(1)(e). The single claim before the Board read: A turbo encoder comprising: a first encoder (111) for encoding a frame of K input information bits to generate first coded symbols; an interleaver for sequentially writing the K input information bits into an R x C rectangular matrix row by row starting in the first column of the first row, selecting a primitive root g0 corresponding to a prime number p, generating a base sequence C(i) for intra-row permutation as C(i) = [g0xC(i-1)] mod p, i = 1, 2, ... , (p-2) and C(0) = 1, determining a minimum prime integer set {qj} for j = 0, 1, 2, ... ,R-1 such that g.c.d {qj,p-1} = 1 and qj > 6, qj > q(j-1) for each j = 1, 2, ...,R-1, where g.c.d is a greatest common divider and q0 = 1, determining {pj} from {qj} using pP(j) = qj, j = 0, 1, ... , R-1 where P(j) indicates a predetermined inter-row permutation pattern, permuting positions of the information bits in a jth row in accordance with Cj(i) = C([ixpj] mod (p-1)), where j = 0, 1, 2, ... , (R-1), i = 0, 1, 2, ... , (p-2), Cj(p-1) = 0, and Cj(p) = p; performing inter-row permutations according to the predetermined inter-row permutation pattern P(j), and reading out the information bits from the permuted R x C rectangular matrix column by column starting in the first row of the first column; and a second encoder (113) for encoding the interleaved information bits to generate second coded symbols, wherein the R x C rectangular matrix has R rows and C columns, K specifies the number of the input information bits in the frame and K = R x C, C=p+1 and K>R>1; characterized in that the prime number p is the minimum prime number satisfying 0 <= (p+1)-K/R; and the interleaver is arranged to implement, between the permuting of the positions of the information bits and the performing inter-row permutations, one of the following: exchanging CR-1(p) with CR-1(0), exchanging CR-1(p) with CR-1(p-1), exchanging Cj(p) with Cj(0) for every j, wherein j = 0, 1, 2, ... R-1, exchanging Cj(p) with Cj(p-1) for every j, wherein j = 0, 1, 2, ... R-1, exchanging Cj(p) with Cj(k) for every j, wherein j = 0, 1, 2, ... R-1 and wherein k indicates a specific exchanging position searched for a given interleaving rule, or exchanging CR-1(p) with CR-1(k), wherein k indicates a specific exchanging position searched for a given interleaving rule. The Board found most of the arguments of the ED to be unpersuasive: Sufficiency of disclosure (A 83 and R 42(1)(e)) [3.1] The objection in the decision under appeal concerning sufficiency of disclosure is based on the argumentation in decision T 1123/09 relating to claim interpretation. The board considers that this argumentation is not applicable to the present case, because of differences in the wording of the claims. Specifically, claim 1 as addressed in T 1123/09 defines that the “inter-column permutation” step is performed by the interleavers, whereas the step of “collecting the permutated bits” is performed by a different component,
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T 443/11 – Irrelevant matter
K’s Law – The ebook
namely the modulator, thus clearly indicating that these two steps are separate operations which are not combined. In contrast, the present claim defines that both of the corresponding steps (permutation and reading out) are performed by the interleaver, so that the option of these two steps being combined in one operation is not excluded. Thus the claim covers the embodiments described in the application with reference to figures 9 and 10, in which the inter-row permutation is combined with the reading out step by reading out using interleaved addresses.
[3.2] In the light of this interpretation of the claim, the board sees no inconsistency between the claim and the teaching of the application in paragraphs [0025] and [0026] relating to figures 2 and 3, which concerns an interleaver and a deinterleaver in which the write or read operation is combined with a permutation operation by using interleaved write or read addresses.
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T 443/11 – Irrelevant matter
K’s Law – The ebook
[3.3] Thus, considering the application as a whole, the board concludes that, as indicated in paragraph [0024], the teaching relating to figures 2 and 3 should be understood as explaining techniques for carrying out the permutation operations in combination with the write or read steps which can be used in the claimed invention, thus providing teaching in this respect which meets the general requirement of A 83. Considering the embodiments described in detail in the application, in particular with reference to figures 9 and 10, the board concludes that these are consistent with the claim, since the claim covers the performing of the inter-row permutation and reading out in a combined operation. Thus, the application describes in detail at least one way of carrying out the invention, as required by R 42(1)(e). [3.4] The board notes also in this context that during the course of the proceedings the ED has argued […] that claim 1 has to be taken literally. The board disagrees with this statement, since it is established case law of the boards of appeal that claims should be interpreted in the manner that they would be understood by a person skilled in the art. In the present context the board considers that the skilled person would understand the definition of the interleaver in the present claim as specifying that the interleaver should operate so as to arrive at the result which would be produced by applying the defined mathematical operations, without requiring that it actually explicitly carries out each of these operations as a distinct process step. Such an interpretation is consistent with the conventional manner in which mathematical operations are implemented in electronic devices, according to which a device is implemented in such a manner as to produce the result of the required mathematical operation by whatever method is appropriate for the particular hardware and/or software used, without placing any other restrictions on the actual operations carried out. Thus, a literal interpretation of the present claim in this respect is not appropriate. Clarity and irrelevant matter (A 84 and R 48(1)(c)) [4.1] In the summons to oral proceedings dated 23 April 2010 the ED raised objections under A 84 and R 48(1)(c). The board considers, for the following reasons, that the present claim meets those requirements. [4.2] The division argued that the then valid claims lacked an essential feature, thus not clearly defining the invention, because they did not exclude the case that the selected primitive root g0 is 1. The board considers that the absence of an explicit exclusion of this value does not result in a loss of clarity, since it would be evident to 1320 | 3398
T 443/11 – Irrelevant matter
K’s Law – The ebook
the skilled person that this value of the primitive root was excluded, because if g0=1, then all of the C(i) would be equal to 1, so that C(i) would not be a permutation sequence. Since the claim requires C(i) to be a permutation sequence, the case that g0=1 is implicitly excluded, so that there is no lack of clarity in the claim. [4.3] The division also argued that the application contained irrelevant matter, contrary to the requirement of R 48(1)(e). The reasons given for this objection were that the claims were restricted to the case where K=RxC, whereas paragraphs [0048] to [0050] covered other cases, and that paragraphs [0053] and [0054] taught that the invention differed from D1 only in “step B-5)”, i.e. the “exchanging” step of the present claim, thus implying that the invention also covered cases in which K was not equal to RxC. The board does not find this argumentation convincing, for two reasons. Firstly, the board considers that from the discussion of the prior art interleaver in paragraph [0049] it would be clear to the skilled person that, although the encoding technique as a whole might be applied to cases in which K is not equal to RxC, the invention is restricted to the case in which it does, since it is only in that case (i.e. that in which C=p+1) that the problem addressed by the invention arises. Thus, the description of the other cases can be understood as being useful for the understanding of the technical background to the invention. In particular, the board understands that the purpose of the defined step of generating the permutation sequences using the primitive root of a prime number derived from the frame size K is to cope with the fact that this parameter varies in a manner which cannot be predicted in advance. Hence, a discussion of how to proceed with different values of K seems to the board to be appropriate. Secondly, the board does not understand paragraphs [0053] and [0054] as teaching that the invention differs from D1 only in the step B-5), but rather that it discloses merely that it is the introduction of this step which provides the solution to the problem. The board is therefore not able to identify any matter in the application which could be considered to be irrelevant within the meaning of R 48(1)(e). Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here. NB: A French summary can be found on Le blog du droit européen des brevets.
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T 670/09 – Bad Timing
K’s Law – The ebook
T 670/09 – Bad Timing 9 Mai 2012
This decision, which deals with an appeal against the revocation of the opposed patent, is interesting because it makes use of a legal concept that is often used in (at least, French) national case law but very rarely invoked in the case law of the Boards of appeal (I have found only four decisions, including the present one): the requirement to present certain requests in limine litis, i.e. at the start of the proceedings. The Opposition Division (OD) had found the two requests on file to lack novelty with respect to document D1. The patent proprietor filed an appeal and submitted a new main request as well as two amended auxiliary requests. The opponent raised A 123 objections against the new requests and stated that the amendments were not sufficient for establishing novelty over document D1. On July 19, 2011, the parties were summoned to oral proceedings (OPs) to be held on December 14, 2011. On July 22, 2011, the opponent requested the Board to make a statement on its provisional opinion as well as the points to be discussed during the OPs. The Board then informed the parties that the requests of the patent proprietor appeared to be incomplete because they only contained one single claim. It also explained that the requests on file were to be examined in view of the aspects referred to by the parties during the opposition and appeal proceedings. The Board fixed a time limit of two months for further statements and submissions. On October 21, 2011, the patent proprietor filed claimed files 2 to 6 as granted as a complement for the requests on file. On December 8, 2011, it then filed a further (third) auxiliary request. In a fax sent on December 12, 2011, the opponent informed the Board of a change of representative and requested the Board to dismiss the appeal because it was insufficiently reasoned. *** Translation of the German original *** [1.1] Two days before the OPs, on November 12, 2011, the [opponent] for the first time put forth the argument that the appeal was inadmissible because it was not reasoned within the meaning of R 99(2) and questioned the admissibility of the requests of October 21, 2011, because they went beyond the object (Gegenstand) of the appeal. Admissibility of the appeal [1.1.1] Pursuant to A 12(2) RPBA, the reply to an appeal shall contain a party’s complete case. In principle, objections against the admissibility of an appeal or against the competence of a Board, which are a prerequisite for establishing the factual situation, have to be made in limine litis, i.e. before the party defends itself on substantive grounds (vor der sachlichen Verteidigung einer Partei). It is true that there is no duty for a party to object to the admissibility of an appeal and can limit itself to a substantive defence in its reply pursuant to Article 12(2) RPBA. However, the consequence of this way of proceeding is that, in this respect, the respondent endorses [the result of] the examination of the facts by the Board of appeal. In the present case it is undisputed that [the EPO] has received a written document within the time limit for filing an appeal pursuant to A 108, i.e. on June 19, 2009. At that time the [opponent] has considered this document filed by the [patent proprietor] to be a statement of grounds of opposition […] and has only brought forward factual arguments in its reply, which indicates that it did not have the intention to challenge the admissibility of the appeal. Moreover, it should be noted that during the whole appeal proceedings, until far after the summons to OPs, the [opponent] has based its defence only on factual arguments, which means that an objection of admissibility cannot be made at a later stage. 1322 | 3398
T 670/09 – Bad Timing
K’s Law – The ebook
[1.1.2] In its answer to the communication of the Board of appeal of August 26, 2011, the [patent proprietor] has filed amended claims according to its main request and auxiliary request in due time on October 21, 2011 […]. In its communication the Board has expressed doubts that the [patent proprietor] had the intention to abandon claims 2 to 6 as granted. Therefore, there was no reason to challenge the admissibility of these requests in view of claims 2 to 6 as late as December 12, 2011. The fact that the late filing of the objection was due to the change of representative, as explained by the [opponent], cannot be taken into consideration in inter partes proceedings because this could result in putting the other parties at a disadvantage. [1.1.3] The objection of the [opponent] concerning the inadmissibility of the appeal and the requests of October 21, 2011, as well as the written submission of December 12, 2011, as far as it concerns this objection, will, therefore, not be taken into account. [1.2] In its letter of December 8, 2011 […], i.e. significantly after the time limit fixed in the communication of December 26, 2011, the [patent proprietor] has filed requests according to a third auxiliary request, without any justification. During the OPs it has justified the late filing with the argument that the further limitation had become possible only now because the inventor had left the company. It has not established a link between the limitation of the request with the preceding proceedings or with the patentability requirements. The latter is all the more remarkable as the third auxiliary request is a combination of the then first and second auxiliary requests, so that it is not apparent why this request should be allowable should the requests of higher rank fail. Consequently, there is no apparent procedural necessity for the filing of the third auxiliary request. As far as the justification for the late filing is concerned, it has to be noted that it is the duty of the [patent proprietor] to file its requests in due time. Therefore, the third auxiliary request of the [patent proprietor] is not admitted into the proceedings. [1.3] During the OPs the [opponent] has tried for the first time to comment on independent claims 4 to 6, and it has done so only after the Board had expressed the opinion that the new main request might fulfil the patentability requirements. The [opponent] has pointed out that it was triggered to act in this way by the request that had only been filed during the OPs. Claims 4 to 6 are so-called “product-by-process” claims that were already present in the patent as granted and covered the subject-matter of the pending main request. The [opponent] has never attacked these claims on the grounds of lack of novelty or inventive step but has left it to the Opposition Division and the Board of appeal, respectively, to examine these claims of their own motion. The Board is of the opinion that the submission of such objections at a time when the likely result of this examination by the Office is communicated during the OPs, is definitely belated. The way in which the [opponent] has acted is all the more questionable as it was [the opponent] who requested a communication of the points to be discussed in the OPs in reply to the summons to OPs, whereupon the Board referred to the time limit for filing written submissions of the parties. The [opponent] has not used this last opportunity for comments. The late filed comments of the [opponent] on claims 4 to 6 are not admitted pursuant to Article 12(4) RPBA together with A 114(2). To download the whole decision (in German), click here. The file wrapper can be found here.
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T 303/09 – Looking For Problems
K’s Law – The ebook
T 303/09 – Looking For Problems 8 Mai 2012
The opponent appealed against the rejection of the opposition by the Opposition Division. Claim 1 of the patent as granted read : A papermaking belt comprising a reinforcing substrate embedded in a thermosetting polyurethane layer and having an outer peripheral surface and an inner peripheral surface formed by said thermosetting polyurethane layer, wherein a polyurethane layer forming said outer peripheral surface is made of a composition containing an urethane prepolymer having isocyanate groups on ends and a hardener containing dimethylthiotoluenediamine. The Board found this claim to be distinguished from the closest prior art D1 by the nature of the hardener used. It then went on to examine the objective technical problem : [3] According to D1, column 2, line 13ff, the problems of avoiding development of cracks and improving the abrasion resistance of the belts have been contradictory. It was an object of the invention of D1 to provide a belt capable of satisfying both these requirements. This problem is solved according to D1 by a structure whereby on one surface the hardness decreases laterally outwards from the middle portion to the side portion. D1 contains two examples. The first demonstrates a belt wherein one surface has regions of differentiating hardness, the comparative example employs a belt where both surfaces have a uniform hardness across the width thereof. These examples show that the belt of the example according to the claims of D1 did not develop cracks after 600 hours on a “testing machine”, whereas the belt of the comparative example developed cracks after 250 hours. D1 contains no discussion of the considerations leading to the selection of the hardener or any consideration of possible alternatives. [3.1] According to paragraph [0005] the object of the patent in suit is to provide a papermaking belt, formed by integrating a reinforcing substrate and a thermosetting polyurethane layer with each other, capable of preventing cracking. A further aim is to provide a belt as above, capable of suppressing growth of a crack even if one forms. A still further aim is to provide a belt resistant to delamination. [3.2] Table 1 of the patent in suit compares belts having differing compositions of polyurethane forming the outer surface whereby the constitution of the prepolymer varies. Further two sets of belts are provided, one employing the hardener required by the claims, i.e. DMTDA, the other set employing MOCA, i.e. the hardener employed in D1. In the cases of both hardeners the same equivalent ratio of hardener hydrogen to isocyanate (H/NCO) of 1.04 is employed. Table 1 shows that for a given polyurethane prepolymer composition the belt prepared using DMTDA as hardener exhibits greater endurance. Thus the compositions according to the claims have endurance limits of between 250 and 2250 x 10**(4) reciprocations whereas the respective compositions employing MOCA achieve levels of only 10 to 90 x 10**(4). [3.3] Table 2 reports examples based on the same three polyurethane compositions as in Table 1 but in which only DMTDA curative is employed. In the examples of Table 2 the equivalent ratio of hardener, expressed as H/NCO, is varied over the range 0.92-1.15. The results show that over the majority of this range, i.e. 0.92-1.14 no cracking is observed after 10**(6) reciprocations, which is superior to the best result obtained with the MOCA cured compositions reported in Table 1. Therefore, the examples of the patent in suit show that the distinguishing feature compared to D1, i.e. the use of DMTDA instead of MOCA, makes it possible to obtain a belt that is resistant to cracking even without a differentiated hardness profile across the width (i.e. the “comparative” belt structure of D1) and that this effect is, contrary to submissions of the [opponent] obtained over a broad range of hardener equivalent ratios. [3.4] In the light of this evidence the technical problem to be solved with respect to D1 can be formulated as being to provide a further papermaking belt which is resistant to cracking and which does not require the differentiated hardness structure of D1, which problem has been effectively solved by using DTMDA instead of MOCA.
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T 303/09 – Looking For Problems
K’s Law – The ebook
[4] The [opponent] argued that that the problem as set out in the patent in suit was not in fact the correct one and that a different problem should be adopted, namely that of avoiding the use of MOCA hardener or to provide a papermaking belt employing less toxic materials. [4.1] According to the problem solution approach, the problem as set out in the patent in suit is normally taken as the starting point for the analysis of inventive step. Under certain circumstances it is permissible – or even necessary – to modify this and adopt a different problem. For example, if it had been shown that the problem as set out in the patent had not been solved, or if inappropriate prior art had been employed to define the problem (see summary of the appropriate case law presented in “Case Law”, infra section I.D.4.3.2). In view of the analysis set out in sections 2 and 3 above, it is apparent that such circumstances do not exist in the present case since both D1 and the patent in suit address the same problem, namely cracking of the paper-making belt, and the evidence of the patent in suit shows that this problem has been solved by the distinguishing feature with respect to closest prior art D1. [4.2] The [opponent] invoked two decisions to support its position that in the present case it was appropriate to depart from the problem as set out in the patent in suit. According to T 910/90, when assessing the objective technical problem, it was not important whether the problem had already been mentioned in the closest prior art, but what mattered was what the skilled person objectively recognised as the problem when comparing the closest prior art with the invention (T 910/90, [final passage on page 9 thereof]). In the present case, one aspect of the technical problem mentioned in the prior art is the same as in the patent, namely prevention of cracking and it is this common problem which is the focus of the examples of D1 and of the patent. As this problem is explicitly mentioned in both the patent in suit and in D1, and is solved according to the examples of both, the skilled person would objectively recognise this as the technical problem to be solved. Accordingly the situation underlying the findings of T 910/90 does not apply to the present case and consequently the reasoning thereof does not support the position of the [opponent] concerning the definition of the technical problem. [4.2.1] Decision T 936/96 [2.6] states […] that if an analysis following the framework of the problem-solution approach leads to the conclusion that the subject matter claimed is not inventive, this assessment cannot be changed or overcome if a different problem was also solved, the solution to which was not obvious. The essence of this decision is thus that the correct approach is that of the problem solution approach, and that conclusions arrived at by application of a divergent analysis, not following the problem solution approach cannot overcome or prevail over the conclusion so reached. In the present case however, following the problem-solution approach, the conclusion is that the claimed subject-matter is inventive. Accordingly, decision T 936/96 does not provide support for the position of the [opponent] that it is appropriate in the present case to depart from the definition of the problem that results from application of the problem solution approach. [4.2.2] In conclusion, the problem proposed by the [opponent] is neither mentioned in nor derivable from either the patent in suit or D1 since neither document contains – even implicitly – any discussion of matters such as toxicity. Accordingly there are no grounds for departing from the problem as set out in the patent in suit in any manner and in particular no grounds for adopting the formulation of the problem as petitioned by the [opponent]. The Board then found the claim to be inventive and dismissed the appeal. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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T 1797/09 – Obliquity
K’s Law – The ebook
T 1797/09 – Obliquity 7 Mai 2012
This is an appeal of the opponent against the maintenance of the opposed patent in amended form. It contains an interesting discussion with respect to the use of an A 54(3) document. Claim 1 of the main request before the Board read: 1. A machine dish wash composition which is in the form of a tablet comprising a) a hydrophobically modified polycarboxylic acid b) an organic phosphonate and c) a polymer of acrylic acid. The Board found this claim to be novel over D1, which was prior art under A 54(3). It nevertheless used this document in the context of the inventive step assessment. [2.1] According to the patent in suit the technical problem to be solved consists in the provision of a dish wash composition which obviates the need for salt or rinse aid in the machine dishwashing process […]. As a solution to this technical problem, claim 1 of the main requests suggests a dish wash composition in the form of a tablet comprising a) a hydrophobically modified polycarboxylic acid, b) an organic phosphonate and c) a polymer of acrylic acid. It is emphasised that the claimed compositions are particularly effective at antiscaling and antispotting in the machine dish wash process […]. [2.2] Document D1 is the only document cited by the [opponent] relating to the same technical problem as the patent in suit. However, as it is a document according to A 54(3), it does not constitute prior art relevant as a starting point for the assessment of inventive step (A 56). The Opposition Division (OD) has selected the comparative example of document D3 which comprises Acusol 460 ND as the closest prior art for the reason that it had the most technical features in common with the opposed patent. The Board agrees with the OD and the presentation of both parties during appeal proceedings that this example is a suitable starting point for the assessment of inventive step. [2.3] Document D3 relates to a machine dish wash detergent or rinse aid formulation which deliver excellent final glassware appearance as evidenced by reduced spotting and filming […]. This effect is obtained by providing a dish wash detergent or rinse aid composition comprising a particular nitrogen containing cationic or amphoteric polymer […]. The superior performance of dish wash detergent formulations containing these polymers with regard to spotting is shown by comparison with formulations containing prior art polymers, inter alia Acusol 460 ND […], which is a hydrophobically modified polycarboxylic acid according to Claim 1 of the present main request. Test 1 of Table 2 is the only one where the polymers are dosed via the dispenser cup together with a base formulation, namely Product 1 of Table 1 […]. The latter contains a polymer of acrylic acid. Hence, document D3 discloses as a comparative example a machine dish wash composition comprising a hydrophobically modified polycarboxylic acid and a polymer of acrylic acid, i.e. components a) and c) of present Claim 1. [2.4] This composition differs from the claimed one only in that it is not in the form of a tablet and does not contain an organic phosphonate (component b) of Claim 1). [2.5] There is no evidence on file to illustrate that the technical problem mentioned in the patent of obviating the need for salt or rinse aid in the dish washing process, actually has been solved by these distinguishing features.
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T 1797/09 – Obliquity
K’s Law – The ebook
[2.6] The [patent proprietors] argued, that in the present case, where the technical problem underlying the invention was completely new at the priority date of the patent, it was not necessary to provide evidence to make credible that the technical problem was actually solved. They relied in this respect on decision T 692/09. Given these circumstances, it was prima facie plausible that in view of the comparative example in document D3 the above technical problem was solved by the addition of an organic phosphonate (component b)). Concerning the tablet form of the composition, the [patent proprietors] eventually agreed that there was no pointer in the patent towards a contribution of this feature to the solution of the technical problem. [2.7] The Board agrees with the [patent proprietors] insofar as a technical problem set out in a patent is considered to be credibly solved by a claimed invention if there exist no reasons to assume the contrary. In such circumstances, it is normally the opponent’s burden to prove the opposite or at least provide evidence casting doubt on the alleged solution of the problem. If no such evidence is provided, the benefit of doubt is given to the patent proprietor. However, if the opponent succeeds to cast reasonable doubt on the alleged effect, the burden to proof its allegations is shifted to the patent proprietor (Case Law of the Boards of Appeal, 6th edition 2010, chapter VI.H.5.). In the case underlying T 692/09 no such evidence was forwarded by the opponent. In the present case, however, the opponent has pointed to the comparative examples of document D1 where it is shown that the antispotting and antiscaling performance of a dish wash composition containing components a), b) and c) (Example 12) is worse than one containing only components a) and c) (Example 10). [2.8] The [patent proprietors] argued that document D1 has to be disregarded as a whole since it is not prior art under A 56 to be considered for the purpose of inventive step. [2.9] The Board agrees with the [patent proprietors] that a piece of the prior art which has not been made available to the public at the priority date of the opposed patent cannot be used directly as evidence for the assessment of inventive step. However, in the present case document D1 is not considered as direct evidence of the existing prior art but only as evidence used indirectly for a conclusion which may be questioned as to its plausibility. Such a document which is not itself part of the prior art does not stand and fall with its publication date even on the issue of inventive step (Case Law of the Boards of Appeal, 6th edition 2010, chapter VI.H.4.1 and decision T 1110/03). The comparative examples in document D1 are in the Board’s opinion equivalent with comparative examples put forward by a party to furnish proof of what it alleges. Such examples are allowable at any reasonable point of the proceedings, provided they are not in abuse of the proceedings. Hence, the comparative examples of document D1 could have been reworked by the [opponent] to illustrate exactly what they actually show in document D1. In fact, the [opponent] has reworked some of the examples of document D1 (Examples 7, 9 and 12) and obtained the same qualitative results, namely that compositions containing components a), b) and c) are as insufficient at antiscaling and antispotting as are compositions containing only component a). The Board further notes that those examples of document D1 which illustrate compositions in accordance with comparative Example 1 of document D3 (Example 10) and composition according to Claim 1 (Example 12) differ from each other not only in that the latter also comprises an organic phosphonate but also in that different brands of acrylic acid polymers have been used. Hence, the antiscaling and antispotting performance may also depend on the particular acrylic acid polymer, a factor not contemplated in the patent in suit. [2.10] As a consequence, the comparative examples in document D1 as well as the [patent proprietors]’ comparative data cast doubt on the allegation in the patent in suit that the incorporation of an organic phosphonate into the composition according to the comparative example of document D3 would solve the technical problem of obviating the need for salt or rinse aid addition in the dishwashing process. Since the [patent proprietors] have not invalidated that doubt, the technical problem credibly solved by the claimed subject-matter in view of the comparative example of document D3 boils down to the provision of an alternative machine dish wash composition. [2.11] The means proposed in Claim 1 to solve this problem consists in the addition of an organic phosphonate and in that the composition is presented in tablet form. 1327 | 3398
T 1797/09 – Obliquity
K’s Law – The ebook
These measures are, however, disclosed in document D3 as optional in the art of dish wash compositions […]. [2.12] The Board, therefore, concludes that starting from the comparative example of document D3 it was obvious for a skilled person, faced with the technical problem of providing an alternative dish wash composition, to add an organic phosphonate and to present the composition in the form of tablets. The patent was finally revoked. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 663/10 – The Absent Guest
K’s Law – The ebook
T 663/10 – The Absent Guest 5 Mai 2012
The EPO has to grant requests for oral proceedings (OPs) – at least once – but you cannot expect the Office to hold OPs if you announce that you will not attend them, even if you maintain your request, as the present decision shows. [1.1] In the present case the scheduled OPs would have been public, A 116(4). Since there are at present no facilities which would permit the Boards of Appeal to hold public OPs by video conference or indeed an established procedure for holding public OPs by video conference, the appellant’s request “for an opportunity ... to choose” that the OPs be held by video conference was rejected (following T 37/08 and T 1266/07). With the summons to attend the OPs the appellant was informed accordingly. [1.2] In response to the board’s communication which was annexed to the summons, the appellant informed the board that it did not intend to attend the OPs and requested that the merits of the case be considered by the board and a final decision be reached. The appellant further stated that “For the avoidance of doubt, the expression of this current intention should not be misconstrued as withdrawal of the request for OPs.”. [1.3] According to A 116 OPs shall take place either at the instance of the EPO if it considers this to be expedient or at the request of any party to the proceedings. OPs serve the purpose of giving a party to the proceedings the opportunity to present its case orally and, if the board considers it appropriate, the purpose of discussing orally any outstanding objections. If a party informs the board that it does not intend to attend the OPs, the board is not obliged to hold OPs in the absence of the party. Rather, under these circumstances and irrespective of whether or not the appellant explicitly maintains its request for OPs, it is within the discretion of the board to decide whether the scheduled OPs are to be maintained or to be cancelled (following T 910/02 [6]). [1.4] In the communication accompanying the summons, objections under, inter alia, A 52(1) in combination with A 56 were raised in respect of claim 1 of each request on file. Further, the appellant was informed that at the OPs these objections would be discussed. In deciding not to attend the OPs the appellant chose not to make use of the opportunity to comment at the OPs on any of these objections but, instead, chose to rely on the arguments as set out in the statement of grounds of appeal, which the board duly considered below. The board also notes that the appellant did not request that the OPs be postponed. Nor did the appellant file a request for further OPs after being informed that the scheduled OPs were cancelled. [1.5] Under these circumstances holding OPs was considered inappropriate. Hence, the board decided to cancel the OPs and, having considered the merits of the case, was in a position to reach a decision which complied with the requirements of A 113(1). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 363/11 – Not More
K’s Law – The ebook
T 363/11 – Not More 4 Mai 2012
This is an appeal against the revocation of the opposed patent. The Board found claim 1 of the main request (claims as granted) not to comply with A 123(2) because “dissolved matter” had been replaced by “dissolved low molecular weight polysaccharide derivative having a degree of polymerization of from 50 to 100”. It then dealt with the first auxiliary request, claim 1 of which read (the differences with respect to claim 1 of the main request are highlighted): A packing material for high-performance liquid chromatography, which comprises a polysaccharide derivative coated on a carrier, wherein 80 to 100% of the hydroxyl groups of the polysaccharide of the polysaccharide derivative are substituted with a substituent, and which is characterized in that the amount of dissolved matter derived from the low molecular weight polysaccharide derivative having a degree of polymerization of from 50 to 100 contained in said polysaccharide derivative is not more than 0.1 mg as determined by passing a mixed solution of n-hexane/2-propanol in a volume ratio of 9/1 through a column having an inner diameter of 1 cm and a length of 25 cm at a flow rate of 4.7 ml/min and at a temperature of 40° C, taking 564 ml of the solution and concentrating the solution to dryness. A 123(2) [3] Claim 1 is a combination of original claims 1, 2 and 5. The Board thus concludes that the subject-matter of claim 1 of this request does not extend beyond the content of the application as filed, such that the requirements of A 123(2) are satisfied. This was not contested by the [opponent]. A 123(3) [4.1] A 123(3) provides that the claims of a patent as granted may not be amended during opposition/appeal proceedings in such a way as to extend the protection conferred. In order to decide whether or not an amendment of the patent in suit satisfies this requirement, it is necessary to compare the protection conferred by the claims as granted, with that of the claims after amendment. [4.2] Claim 1 is directed to a packing material for high-performance liquid chromatography, which comprises a polysaccharide derivative coated on a carrier, and which is characterized in that the amount of dissolved matter derived from the polysaccharide derivative is not more than 0.1 mg as determined by a specific method (emphasis added). Claim 1 of the patent as granted is directed to a packing material for high-performance liquid chromatography, which comprises a polysaccharide derivative coated on a carrier, and which is characterized in that the amount of dissolved low molecular weight polysaccharide derivative having a degree of polymerization of from 50 to 100 contained in said polysaccharide derivative is not more than 0.1 mg as determined by the same method as in auxiliary request 1 (emphasis added). [4.3] Thus the question to be answered is whether claim 1 of auxiliary request 1 covers any packing materials which were not covered by claim 1 as granted. It thus needs to be examined whether the replacement of the term “dissolved low molecular weight polysaccharide derivative having a degree of polymerization of from 50 to 100 is not more than 0.1 mg” by the term “dissolved matter is not more than 0.1 mg” results in an extension of the protection conferred. [4.4] When considering this question, it must be borne in mind that the feature concerned is a negative feature, in the sense that it defines embodiments which are excluded from the claim. [4.5] The term “dissolved matter” as used in the patent in suit completely embraces dissolved low molecular weight polysaccharide derivatives having a degree of polymerization of from 50 to 100 […]. Thus those embodiments wherein the amount of dissolved low molecular weight polysaccharide derivatives having a degree of polymerization of from 50 to 100 is not more than 0.1 mg are automatically excluded from the scope of claim 1 if the amount of all dissolved matter may not be more than 0.1 mg, the method for determining the amount 1330 | 3398
T 363/11 – Not More
K’s Law – The ebook
being the same in each case. Consequently, more embodiments of a packing material are excluded from claim 1 of auxiliary request 1 than from claim 1 as granted. Its scope is thereby reduced vis-à-vis granted claim 1. [4.6] The [opponent] argued that the feature “the amount of dissolved low molecular weight polysaccharide derivative having a degree of polymerization of from 50 to 100 contained in said polysaccharide derivative is not more than 0.1 mg” in granted claim 1 should not be read as a negative feature, but rather as a positive feature, namely that the polysaccharide derivative coated on the carrier must contain >0 and <=1 mg of dissolved low molecular weight polysaccharide derivatives having a degree of polymerization of from 50 to 100, whereas in claim 1 of auxiliary request 1, the polysaccharide was no longer required to contain this particular low molecular weight matter. The Board, however, holds that when a material (M) is defined as containing not more than a certain amount of a certain compound (A), then this does not mean that it must contain a finite quantity of compound (A), but merely that the amount of (A) may not exceed a certain limit. This situation is to be distinguished from a claim positively formulated as comprising M and A, wherein the amount of A may not exceed a certain limit. Thus, since claim 1 as granted does not have to contain any dissolved low molecular weight polysaccharide derivatives having a degree of polymerization of from 50 to 100, the [opponent’s] argument must be rejected. [4.7] Thus, the Board concludes that the scope of protection conferred by claim 1 and dependent claims 2 to 5, and of claims 6 to 8, which relate to a process for producing the packing material of claims 1 to 5, has not been broadened vis-à-vis that of the claims as granted, such that the requirements of A 123(3) are satisfied. The file was then remitted to the OD for further prosecution. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1472/08 – It’s Too Late Now
K’s Law – The ebook
T 1472/08 – It’s Too Late Now 3 Mai 2012
Another decision reminding us that Article 12(4) RPBA may also find application in appeals against a refusal by the Examining Division (ED). Claim 1 of the main request before the Board read (in English translation): A method for controlling phytopathogenic harmful fungi, characterised in that the fungi or the materials, plants, the soil or seeds to be protected against fungal attack are treated with an effective amount of a compound of formula I
wherein X is C1-C12 alkylene or C2-C12 alkenylene, where the carbon chains may be interrupted by one or two heteroatoms selected from the group consisting of S, O and NR1 , R1 is hydrogen, C1-C6 alkyl or C(=O)-C1-C6-alkyl. In what follows, the Board deals with the admissibility of the main request and auxiliary request 2: *** Translation of the German original *** [2.1] The concerns expressed in the second communication of the Board against the admission of certain then pending sets of claims also apply to present main request and auxiliary request 2 because here the definition of the radicals X and R1 has been extended with respect to both the claims amended during the examination proceedings and the claims filed together with the statement of grounds of appeal. [2.2] The appellant already had filed amended claims before the ED. According to R 137(3) no further amendment may be made without the consent of the ED. Pursuant to R 100(1) this provision shall apply to appeal proceedings (see T 1969/08 [3.2]). Therefore, in the present case, further amendments need the consent of the Board. Accordingly, Article 12(4) RPBA emphasizes the “power of the Board to hold inadmissible … requests which could have been presented in the first instance proceedings” […]. [2.3] The appellant considered that the sudden refusal of the application by the ED hindered it from proposing further amendments […]. [2.4] During the international phase of the present application the EPO has established an IPER on March 20, 2006. Among other things, this report stated that the subject-matter of original claims 1 to 4 was not novel. The report of the ED of January 11, 2007, confirmed the objections raised in the IPER and invited the applicant to file amended claims. This is what the applicant did, after extension of the time limit, in its letter dated July 2, 2007. The decision of the ED was posted on April 22, 2008.
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T 1472/08 – It’s Too Late Now
K’s Law – The ebook
[2.5] As the appellant had not filed any further request for an extension of the time limit, the Board considers that the appellant felt capable of responding to the report and carrying out all necessary amendments when it drafted its response of July 2, 2007. In its answer it only referred to novelty in the sentence: “We consider that by increasing the precision of the variables in Formula I we have established novelty.” However, even in view of the sole composition disclosed in document D3 it was obvious that the subject-matter of the thereby amended claims was not novel […]. Therefore, the applicant and now appellant had to expect the refusal of its application after its answer to the first communication. For this reason the Board is of the opinion that the argumentation of the appellant summarised under [2.3] above is not persuasive. The appellant indeed had enough time to file claims during the examination proceedings wherein the radicals X and R1 were defined as in the present main request and in auxiliary request 2. [2.6] In ex parte cases also, proceedings before the boards of appeal are primarily concerned with examining the contested decision. (G 10/93 [4]). Therefore, it cannot be the purpose of examination appeal proceedings to completely re-open (völlig neu aufzurollen) the examination proceedings and to admit claims comprising extended definitions of features if, as here, these claims could already have been filed during the examination proceedings and the extensions are not appropriate in view of overcoming objections that had been raised in the impugned decision or by the Board. It may be left open whether the subject-matter of these amended claims was covered by the search. For these reasons, the Board decided not to admit the claims of the main request and of auxiliary request 2 into the proceedings, pursuant to Article 12(4) RPBA. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1099/09 – What A Strip!
K’s Law – The ebook
T 1099/09 – What A Strip! 2 Mai 2012
This appeal was filed against the refusal of the application under consideration by the Examining Division (ED). The ED considered claim 1 of the main request (request A) to lack novelty over D1. Claim 1 of the main request before the Board (request F) read (in English translation): A strip (1) made from biocompatible material for a use in the treatment of female urinary incontinence, wherein the treatment comprises the following steps:
Making a median paraurethral (paraurétale) incision essentially at the level of the middle third (tiers moyen) of the urethra measured from the meatus such as to allow for said strip to pass between the Halban’s fascia (le facia [sic] de l’Halban) and the periurethral fascia (facias [sic] périurétaux); and Extending each of the free ends (3,4) of said strip (1) at the level of the two obturating holes of the iliac wing and their outlet (sortie) into the groin opposite the corresponding hole such as to form a V the tip of which passes below the urethra without changing its position.
Claim 1 of the first auxiliary request before the Board was identical to claim 1 of request A and read (in English translation): Use of a biocompatible material for manufacturing a strip (1) for the treatment of female urinary incontinence by means of a method comprising the following steps:
Making a median paraurethral (paraurétale) incision essentially at the level of the middle third (tiers moyen) of the urethra measured from the meatus such as to allow for said strip to pass between the Halban’s fascia (le facia [sic] de l’Halban) and the periurethral fascia (facias [sic] périurétaux); and Extending each of the free ends (3,4) of said strip (1) at the level of the two obturating holes of the iliac wing and their outlet (sortie) into the groin opposite the corresponding hole such as to form a V the tip of which passes below the urethra without changing its position.
The appellant also requested the Board to refer the following questions to the Enlarged Board (EBA) – again in English translation:
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T 1099/09 – What A Strip!
K’s Law – The ebook
A1) Is the patentability of products for use in any of the methods concerned by A 53(c) limited to substances or compositions? 2) If the answer to the first question is yes, what characterises a substance or a composition? 4) If the answer to the first question is no, is the product also patentable if the sole new feature of the treatment consists in the surgical steps envisaged? 5) Is it sufficient for a substance, a composition or a medicament to be patentable pursuant to A 54(5) if it is consumed during its use according to a method according to A 53(c)? 6) If the answer to the first question is no, what are the criteria to be applied for distinguishing a substance or a composition according to A 54(5) from a product which in itself has a therapeutic effect when it is used in a method according to A 53(c)? The appellant argued, inter alia, that the method for the treatment of female urinary incontinence was not known. Admittedly, the strip according to claim 1 used in the method was not distinct from strips used in prior art methods for the treatment of female urinary incontinence. However, being inserted into the body and having a physiological interaction with the body, the strip had to be considered to be a composition. Therefore, its novelty could be acknowledged within the framework of A 54(5). Even if the strip was not to be considered to be a substance or composition, it would still be patentable within this framework. A 53(c) established that products for use in methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body were not excluded from patentability. Given this wording, it was clear that A 54(5) was not limited to substances or compositions but was applicable to all products for use in methods covered by A 53(c). This also resulted from G 2/08 [5.10.9] … Here is the verdict of the Board : *** Translation of the French original *** Request F [3.1] A strip made from biocompatible material for a use in the treatment of female urinary incontinence is known, e.g. from D1 (claim 1). However, even if, as admitted by the appellant itself, the prior art strip is suitable for use in a method such as the method of claim 1, this method as such is not known from D1. Therefore, it has to be established whether this use, which constitutes a method for treatment of the human body by surgery or therapy, confers novelty to the claimed subject-matter. [3.2] According to A 54(4), it is possible to acknowledge the novelty of a “… substance or composition, comprised in the state of the art, for use in a method referred to in A 53(c), provided that its use for any such method is not comprised in the state of the art” (emphasis added). According to A 54(5) it is also possible to acknowledge the novelty of a “… substance or composition referred to in paragraph 4 for any specific use in a method referred to in A 53(c), provided that such use is not comprised in the state of the art.” Article 53(c), to which A 54(4) and A 54(5) refer, provides that European patents shall not be granted in respect of “methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods” (emphasis added). [3.3] It can be seen from the wording of the three articles that there is an explicit difference between the wording chosen by the lawmaker for A 53(c) and the wording of A 54(4) and A 54(5). First of all, as a consequence of the use of the expression “in particular” (notamment), A 53(c) in itself indicates that the products are not limited to substances or compositions. Moreover, whereas A 53(c) mentions the products, in particular substances or compositions, A 54(4) and A 54(5) only mention substances or compositions. Thereby, the legislator has made a distinction between the products that can be qualified as substances or compositions – which are patentable within the framework of A 54(4) and A 54(5) – and other products, which do not fall under the exceptions provided by those articles.
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T 1099/09 – What A Strip!
K’s Law – The ebook
It is true that, as pointed out by the appellant, A 53(c) provides that products – among which the products which are neither substances nor compositions – for use in any of the methods concerned by this article are not excluded from patentability on the basis of this article. However, this provision simply means that said products are not excluded from patentability in application of A 53(c) and not that their novelty can be established on basis of their use within the framework of A 54(4) and (5). The appellant’s argument referring to decision T 1020/03, according to which there was no difference between substances and compositions, cannot play any role in establishing the field of application of A 54(4) and A 54(5) because the lawmaker’s distinction is not between substances and compositions but rather between products that are substances or compositions and products that are not. Decision G 2/08 does support a different point of view either because it does not deal with the patentability of products in general but only with the patentability of substances and compositions that are already known as medicaments. Therefore, it directly and unambiguously follows from the provisions of the EPC that A 54(4) and A 54(5) only apply to products that are substances or compositions, whereas products that are neither substances or definitions are not patentable within the framework of those articles. [3.4] In order to establish whether the strip according to claim 1 is patentable within the framework of A 54(5), as submitted by the appellant, it has to be decided whether it may be considered to be a substance or composition. The strip under consideration is a finished product having a certain shape and certain dimensions. In the present case, it is for example the polypropylene used for manufacturing the strip disclosed in paragraph [0029] of the application that constitutes a substance or a composition. Considering the context of A 54(4), it is impossible to interpret the terms “substance” and “composition” in a way that would encompass a finished product such as said strip. In particular, as this article does not require or mention any physiological interaction, there is no reason to interpret it as if it also referred to finished products, provided that they had such a physiological interaction with the human body, as argued by the appellant. Therefore, the strip according to claim 1 cannot be considered to be either a substance or a composition. Therefore, it is excluded to acknowledge its novelty within the framework of A 54(5). As a consequence, the subject-matter of claim 1 of request F lacks novelty over D1. Request A [4.1] Claim 1 of request A concerns the use of a biocompatible material for manufacturing a strip for the treatment of female urinary incontinence by means of a method corresponding to a method according to claim 1 of request F. It is therefore necessary, also in this case, to establish whether the indication of this use, which constitutes a method for treatment of the human body by surgery or therapy, may confer novelty to the claimed subjectmatter. [4.2] As far as claims covering a method or a use are concerned, the EPC does not contain any explicit provision analogous to those applying to substances or compositions according to A 54(4) and A 54(5). However, decision G 6/83 [2] has acknowledged the possibility of using Swiss-type claims. Accordingly, a European patent may be granted on the basis of claims directed to the use of a substance or composition for the manufacture of a medicament for a specified new and inventive therapeutic application. [4.3] In order to establish whether novelty can be acknowledged on this basis it is necessary to consider whether the strip that is manufactured in accordance with claim 1 can be considered to be a medicament. The appellant has submitted that said strip is a medicament because it has a physiological interaction linked to the treatment of female urinary incontinence. However, claim 1 only requires the material of the strip to be biocompatible, which is not limitative at all in the present case. Therefore, said therapeutic effect cannot stem from the nature of said material as such in the present case. Quite to the contrary, as acknowledged by the appellant itself, it depends on the geometry and the positioning of the strip.
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T 1099/09 – What A Strip!
K’s Law – The ebook
However, the therapeutic effect of a medicament, within the ordinary meaning of this term, has in principle its origin in at least one substance or composition that is used, generally referred to as the active principle of the medicament. It is true, as pointed out by the appellant, that other factors, such as the posology of the medicament, can be essential for its therapeutic effect to be obtained. However, this effect is never independent of said active principle. Moreover, the posology is of no concern in the present invention. Moreover, even the possibility introduced by decision G 6/83 [headnote 2] concerns claims “directed to the use of a substance or composition for the manufacture of a medicament for a specified new and inventive therapeutic application” (emphasis added). Therefore, this decision does not offer any basis for considering that a product the therapeutic effect of which is not associated to a substance or a composition used, could be a medicament. In view of the above considerations the strip the therapeutic effect of which does not result from the nature of the biocompatible material, i.e. of the substance or composition that is used for its manufacture, cannot be considered to be a medicament. As a consequence, it is not necessary for the present decision to decide whether, in agreement with the considerations of decision T 227/91 [5.1], a medicament is necessarily consumed when it is used and can only serve once. Nor is it necessary to establish whether the observations made in decisions T 775/97 and T 1314/05 concerning the use of Swiss-type claims for the manufacture of a device can be applied to the present case. Consequently, the subject-matter of claim 1 of request 1 lacks novelty with respect to D1. […] Referral to the EBA [7.1] A 112(1)(a) provides that in order to ensure uniform application of the law, or if a point of law of fundamental importance arises, a Board of appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required for the above purposes. According to this article, it is within the discretion of the Board to decide whether a referral is necessary or not. Such a need can only exist if the decision to be taken by the Board depends on the question that is to be referred to the EBA and if the Board cannot decide itself without difficulty the question that is to be referred. [7.2] The Board is not aware of any divergence in the case law concerning the point raised by question 1 of the appellant, i.e. whether the patentability of products for use in any method concerned by A 53(c) is limited, within the framework of A 54(4) and 54(5), to substances or compositions. As far as this point is concerned, there is, therefore, no problem of uniform application of the law. Moreover, as explained above under [3.3], the Board is of the opinion that the answer to this question can be derived clearly and explicitly from the provisions of the EPC itself. Therefore, it is not necessary to refer this question to the EBA. [7.3] Although it is necessary in the present case to decide whether the strip according to the invention is a substance or a composition, the Board can decide on this question without there being any need for a complete definition of what defines a substance or composition. Therefore, the decision to be taken by the Board does not depend on question 2 and this question must not be referred to the EBA. [7.4] It is not necessary to refer questions 4 and 6 either because they only had to be considered if the answer to question 1 was “no”. [7.5] As the Board has established that said strip was neither a substance nor a composition, nor a medicament, question 5 plays no role whatsoever in the present decision and must not be referred to the EBA either. […] The appeal is dismissed. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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K’s Law – The ebook
T 1849/08 - Drawn To Scale
T 1849/08 - Drawn To Scale 1 Mai 2012
This appeal was filed against the refusal of an application by the competent Examining Division (ED). Claim 1 of the main request read: A semiconductor device comprising a semiconductor substrate having a pair of main surfaces; a first semiconductor region (10) of first conductivity-type located in the substrate; a second semiconductor region (22) of second conductivity-type located on the first semiconductor region; plural third semiconductor regions (23) of second conductivity-type having carrier density higher than carrier density of the second semiconductor region (22); a fourth semiconductor region (31) of first conductivity-type located in the third semiconductor region; a fifth semiconductor region (40) of second conductivity-type located in the fourth semiconductor region (31); a gate insulation film (52) formed on surfaces of the second, third, fourth and fifth semiconductor regions; a gate electrode (3) formed on the gate insulation films; an emitter electrode (2) contacting with low resistance to the fourth semiconductor region (31) and the fifth semiconductor region (40); and a collector electrode (1) contacting with low resistance to the first (10) semiconductor region, characterised in that the sheet carrier density of the third semiconductor region (23) is 1 x 10**(12) cm**(-2) or less. The applicant did not agree with what the ED considered to be disclosed in document D1. Here is what the Board had to say on that matter: [2.1.1] Document D1 discloses an Insulated Gate Bipolar Transistor (IGBT) wherein the body regions are enclosed within respective enhancement regions of the same conductivity type as the (underlying) lightly doped drain regions, but more heavily doped (cf. figures 1 and 2 with corresponding description). In particular, D1 discloses, in the terms of claim 1 of the appellant’s main request, a semiconductor device comprising: a semiconductor substrate having a pair of main surfaces; a first semiconductor region (2) of first conductivity-type (e.g. p-type) (cf. page 3, lines 16 to 18) located in the substrate; a second semiconductor region (1) of second conductivity-type (n-type) located on the first semiconductor region; plural third semiconductor regions (12) of second conductivity-type (n-type) having carrier density higher than carrier density of the second semiconductor region (cf. page 3, lines 23 to 28; figures 1 and 2); a fourth semiconductor region (4, 5) of first conductivity-type (p-type) located in the third semiconductor region; a fifth semiconductor region (6) of second conductivity-type (n-type) located in the fourth semiconductor region (4); a gate insulation film (8) formed on surfaces of the second, third, fourth and fifth semiconductor regions; a gate electrode (7) formed on the gate insulation films; an emitter electrode (10) contacting with low resistance to the fourth semiconductor region (4) and the fifth semiconductor region (6); and a collector electrode (11) contacting with low resistance to the first (2) semiconductor region. [2.1.2] Contested by the appellant is whether in D1 the third semiconductor region (12) has a sheet carrier density of 1 x 10**(12) cm**(-2)or less.
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K’s Law – The ebook
T 1849/08 - Drawn To Scale
According to D1 “Figure 2 is a diagram (not to scale), showing the doping concentration profiles (expressed in log. atoms (at) per cubic centimeter) of the various doped semiconductor regions of the structure of Figure 1, as a function of the distance x from the semiconductor surface” (page 3, lines 24 to 26). The appellant argued that since the figure 2 diagram was stated to be “not to scale”, the diagram only provided an indication of the relative dopant concentrations of the various regions of the structure, but no information could be derived from the diagram on any concrete dopant value or thickness of any of the regions. Accordingly, the sheet carrier density of the third semiconductor region (12) as defined in claim 1 could not be derived from the diagram. As document D1 did not disclose any value for the sheet carrier density of the third semiconductor region (12) anywhere else in the document, this feature was not disclosed in D1 and therefore the subject-matter of claim 1 was new over D1. [2.1.3] Decisive for the information content of a prior art document is what a person skilled in the art reading the document would understand from it.
Although in the passage of the description of D1 referred to above by the appellant the diagram of figure 2 is indicated to be “not to scale”, the diagram is actually provided with a scale both on the horizontal and the vertical axis, providing, as stated in the description, the doping concentration profiles expressed in atoms/cm**(3) in logarithmic scale of the various doped semiconductor regions of the structure of figure 1, as a function of the distance x from the semiconductor surface in microns (cf. page 3, lines 24 to 26). The vertical axis of the diagram of figure 2 is as a matter of fact provided with the decades of the logarithmic scale, whereby the indicated scale is also clearly consistent with the plotted value of 2.10**(14) cm**(-2) corresponding to the dopant concentration of the semiconductor layer 1 provided in the description (cf. page 3, lines 45 to 48). Hence, to a person skilled in the art the diagram of figure 2 is to scale. The description also at no other point provides any indication that, or indeed in which respect, the diagram of figure 2 would in fact not be to scale. According to the only other, formal, explicit reference to the nature of figure 2 in D1, “Figure 2 is a diagram showing the doping concentration profiles of some doped semiconductor regions of the structure of Figure 1” (page 2, lines 58 to 59), no mention being made of the diagram not being to scale. In summary, there is nothing to a person skilled in the art in figure 2 itself or in the rest of document D1 supporting the above isolated statement in brackets that the diagram of figure 2 would be “not to scale”. The skilled reader would, thus, consider this statement to be made in error and disregard it. Accordingly, in the board’s judgement the skilled reader would understand figure 2 of D1 to show the doping concentration in atoms/cm**(3) in logarithmic scale, with the decades being indicated on the vertical axis, as a function of the distance from the semiconductor surface in microns.
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K’s Law – The ebook
T 1849/08 - Drawn To Scale
[2.1.4] As region 1 has a dopant concentration of 2.10**(14) atoms/cm**(3), it is shown in figure 2 that region 12 has a dopant concentration of less than about 4.10**(15) atoms/cm**(3) and a thickness of about 1.3 mym. This yields a sheet carrier density of less then 5.2.10**(11) cm**(-2) for region 12. This falls well within the claimed range of 1 x 10**(12) cm**(-2) or less. Furthermore, factors, addressed in the decision under appeal […], such as the assumption of thermal activation of all dopants, the box profile approximation using the highest dopant concentration of region 12 as shown in figure 2, and neglecting any dopant compensation by p-type dopants present in region 12 (see figure 2), all result in the above indicated value of 5.2.10**(11) cm**(-2)being an overestimation of the actual sheet carrier density of region 12. Accordingly, the subject-matter of claim 1 according to the main request is not new over document D1 (A 54(1) and (2) EPC 1973). Therefore, the appellant’s main request is not allowable. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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J 4/11 – Not Pending Any More
K’s Law – The ebook
J 4/11 – Not Pending Any More 30 Apr 2012
After G 1/09 had issued, there was quite some speculation on whether its verdict could be transferred to the case of deemed withdrawal. Well, here is a decision that sheds light on one such situation. This appeal was directed against the decision of the Receiving Section (RS) posted to the appellant on 30 September 2010 refusing the request that the application under consideration be treated as a divisional application. The parent application to the present application was itself filed as a divisional application of a grandparent application which was published on 30 August 2001. These applications are referred as the “present application”, the “parent application” and the “grandparent application”, respectively. Before the date when the parent application was filed, the grandparent application had been deemed to be withdrawn for non-payment of the renewal fee for the fourth year. However, a request for re-establishment of rights had been filed in the grandparent application before the filing date of the parent application. This request was later refused by the Examining Division (ED) – after the filing of the parent application – and an appeal against this refusal was subsequently dismissed. The RS concluded that the grandparent application was no longer pending when the parent application was filed. This was on the basis that a loss of rights as regards the grandparent application occurred on the expiry of the non-observed time limit and at this point the grandparent application was no longer pending. The appellant requested the Board to order that the present European patent application be treated as a divisional application. As an auxiliary request, it requestd that the following question be referred to the Enlarged Board of Appeal (EBA): “In which way should the term “pending” in R 25(1) EPC 1973 (now R 36(1) EPC) be interpreted for the case where the parent application has been deemed to be withdrawn but a request for re-establishment of rights was filed and a relevant appeal was pending at the time of filing of the divisional application?” The Board did not allow any of these requests. The headnote sums up its position: An application which has been deemed to be withdrawn for non-payment of a renewal fee is not pending within the meaning of R 25(1) EPC 1973 in the period for filing a request for reestablishment of rights under A 122 EPC 1973 in respect of such non-payment or in the period after which such an application is filed in the event of such request being refused. Here is how the Board came to this conclusion: [2] The question to be decided is whether the parent application was pending when the present application was filed. This in turn depends on whether the grandparent application was still pending when the parent application was filed. The appellant accepts that if the grandparent was not pending at this latter date, then the parent application was never a pending application, in which case the present application cannot be treated as a divisional application and the appeal must fail. [3] Because of the respective filing dates it was not in dispute that the applicable provisions are those of the EPC 1973. In the following discussion the Board only draws a distinction between the provisions of the EPC 1973 and EPC 2000 where it is necessary to do so. Initial considerations [4] R 25(1) EPC 1973 provides that a divisional application may be filed relating to any “pending earlier European application”. The EPC does not define “pending... application” but the appellant accepted that the starting point for the discussion is the statement of the EBA in G 1/09 that for the purposes of R 25(1) EPC 1973 a ‘pending European patent application’ is a “patent application in a status in which substantive rights deriving 1341 | 3398
J 4/11 – Not Pending Any More
K’s Law – The ebook
therefrom under the EPC are (still) in existence.” See point [3.2.4] , emphasis by the EBA. In this context, the EBA also observed (point [3.2.3]) that the requirement of a pending earlier patent application reflects the applicant’s substantive right under A 76 to file a divisional application on an earlier application if the subject matter of the earlier application is “still present” at the time when the divisional application is filed, citing G 1/05 [11.2]. [5] The question is thus whether substantive rights deriving from the grandparent application were still in existence when the parent application was filed. The EBA did not give any definition of the expression “substantive rights” in this context. The Board nevertheless extracts the following points from the EBA’s reasons: (a) “Substantive rights” in this context include the provisional protection conferred after publication of the application by virtue of A 67(1), which in turn refers to the protection conferred by A 64. See point [4.2.1]. The combined effect of these two articles is to provisionally confer on an applicant the same rights in the designated Contracting States as would be conferred by a national patent granted in those States. The Board will refer to these rights as the A 64 rights. (b) The EBA did not expressly say (and did not need to say) whether there might be other relevant types of substantive rights. (c) A patent application involves two different aspects. On the one hand a patent application is an object of property as set out in A 71 to A 74, conferring on the applicant, inter alia, the provisional A 64 rights. On the other hand it involves procedural rights which the applicant is entitled to exercise by virtue of A 60(3) EPC 1973. The expression “European patent application” may therefore stand for substantive rights as well as for procedural rights of the applicant. See point [3.2.1]. Since R 25(1) EPC 1973 (see now R 36(1)) refers to “any pending patent application” and not to pending proceedings before the EPO, it is not relevant for the purposes of R 25(1) EPC 1973 whether proceedings are pending before the EPO. Pending proceedings cannot be equated with a pending application. See points [3.2.2] and [4.2.5]. (d) A 67(4) provides for the point in time when the A 64 rights must end and thereafter are no longer still in existence. This is when, in the words of A 67(4), the application has “been withdrawn, deemed to be withdrawn or finally refused.” [6] The EBA also noted (point [3.2.5]) that there are circumstances where an application may be pending but the right to file a divisional application relating to it may be excluded by procedural provisions, as lex specialis. The appellant referred to this point, but it does not help the present Board to decide whether the grandparent application was pending when the parent application was filed because the expressly named exceptions do not apply to the case in hand. [7] From this starting point the Board will deal with the question which it has to answer in the following stages: (a) Given that following publication of the grandparent application the substantive rights of the appellant under that application included at least the provisional A 64 rights, what, prima facie, was the effect on these rights of the deemed withdrawal of the grandparent application? (b) Is the answer to this question affected by either: (i) the possibility (and indeed the fact) of a request being made under A 122 for re-establishment of rights in the grandparent application following its deemed withdrawal, or (ii) the possibility of an applicant using R 69 EPC 1973 (see now R 112) to challenge the notice of loss of rights? (c) If the answers to these questions mean that the A 64 rights were no longer in existence when the parent application was filed, was the appellant entitled to any other substantive rights and, if so, were such rights under the grandparent application still in existence when the parent application was filed? The prima facie effect of deemed withdrawal on the A 64 rights [8] A 67(4) provides that a European patent application shall be deemed never to have had the effects set out in A 67(1) and (2) when it has been (a) withdrawn, (b) deemed to be withdrawn or (c) finally refused. The EBA in G 1/09 was concerned with the case of the refusal of an application by the ED: for the purposes of A 67(4), at what point in time is an application to be considered as “finally refused” where no appeal is filed against the 1342 | 3398
J 4/11 – Not Pending Any More
K’s Law – The ebook
decision refusing the application? The Board concluded that this is when the time limit for filing an appeal against a decision refusing the application expires, since it is at this point that the decision to refuse the application becomes final. The retroactive effect of a decision dismissing the appeal does not alter the pending status of the application. See points [4.2.1-2]. Up until this point a substantive right under the application therefore still subsists. This was sufficient to answer the question which had been referred to the EBA. [9] The present Board is concerned with a different case, namely a deemed withdrawal of an application. [10] A 67(4) provides that an application is deemed never to have had the effects provided for under A 67(1) and (2) EPC when it is deemed to be withdrawn. The EBA took the position (point [4.2.3]) that A 67(4) is a self contained provision indicating the point in time at which “substantive rights conferred by a European patent application and therefore its pending status must end.” The wider implications of this statement are considered later but so far as concerns the A 64 rights, these rights must therefore have come to an end in the present case when the grandparent was deemed to be withdrawn. Indeed, this is simply what the article says. If it were otherwise there would be no point in giving a person the right under A 122 to file a request to “have his rights reestablished.” [11] As to the point in time when this deemed withdrawal took place, A 86(3) EPC 1973 (see now A 86(1)) simply provides that if the renewal fee (and any additional fee) is not paid in due time, the application shall be deemed to be withdrawn. Although the applicant must be informed of the loss of rights (R 69(1) EPC 1973, see now R 112(1)) the withdrawal takes place at that point in time as a matter of law without any decision of the Office. As explained in G 1/90 [6], in such a case the loss of rights occurs on expiry of the time limit that has not been observed. See also G 4/98 [3.3]. [12] Prima facie, therefore, the A 64 rights under the grandparent application were no longer subsisting when the time for payment of renewal fee expired, which was before the date when parent application was filed. The effect of the possibility (and the fact) of the filing of a request to grant re-establishment of rights. [13] If the Board were to accept the appellant’s arguments, which are based on an analogy with the situation of “final refusal” of an application, it would follow that an application would remain pending after it had been deemed to be withdrawn for as long as the period for making a request to grant re-establishment of rights continued to run. Further, if and when such a request was made, the application would remain pending at least until the date when the request for re-establishment was finally determined. [14] By way, first, of a general remark, the wording in A 67(4) appears to the Board to have been chosen with care, particular the positioning of the word “finally”. In the case of a refusal of an application, the filing of an appeal will have the effect of suspending the effect of the order refusing the application (A 106(1)). It is logical therefore to speak of the “final” refusal of an application in this context, since the effect of the refusal of the application by the ED is suspended in the event of an appeal. In such a case the suspensive effect of an appeal is ended in the event of a decision dismissing the appeal, from which point the appealed decision retrospectively takes full effect. At the point of dismissal of the appeal, the application can be said to be finally refused and the decision of ED is made final. [15] On the other hand, in a case where an application is deemed to be withdrawn under A 86(3) EPC 1973 for non-payment of a renewal fee it does not appear to the Board to be logical to speak of the “final” deemed withdrawal of the application. As already noted, the point in time when the application is deemed to be withdrawn is the point when the due time for payment of the renewal fee expires; the loss of rights occurs on the expiry of the time limit that has not been observed and, as such, is final in itself. [16] The question is then whether, nevertheless, there are any provisions of the EPC which have the effect that the filing of a request for re-establishment of rights provisionally revives a deemed withdrawn application. In other words, does the application thereupon become pending once again? As to this, the filing of a request for reestablishment does not have any suspensive effect equivalent to the suspensive effect under A 106(1) of the filing of an appeal against refusal of an application for a grant. Not only is there no provision in the EPC providing for such equivalent effect but also the nature of an order granting a request for re-establishment is inconsistent with it. The effect of re-establishment is to put the applicant back in the position which he would have been in had the omitted act been performed as it should have been and thus, in accordance with wording of A 122(1), to re-establish the rights which have been lost. The act belatedly performed (for example, as here, the payment of the renewal fee) is then deemed retroactively to have been performed in time so that the application which was deemed to have been withdrawn is deemed not to have been withdrawn (see Singer/Stauder on the 1343 | 3398
J 4/11 – Not Pending Any More
K’s Law – The ebook
European Patent Convention, 3rd (English) edition, Commentary on A 122 at para. 144). This is now stated expressly in A 122(3): “If the request is granted, the legal consequences of the failure to observe the time limit shall be deemed not to have ensued.” Although this provision was not in force at the relevant time, the travaux préparatoires to the EPC 2000 give no indication that any change in the law was intended, something which the Board considers would almost be bound to have been the case if this had been the intention. The Board considers this provision to be an accurate statement of the previous position. The effect of filing a request for re-establishment is thus merely to make a reversal of the deemed withdrawal possible. The effect of an unsuccessful request for re-establishment is that the application stays deemed withdrawn. [17] In G 1/09 the EBA, when dealing with the issue of when an application should be considered to be (finally) refused, referred to and relied on the jurisprudence of Contracting States, pursuant to which “decisions do not become final until the expiry of the respective period for seeking ordinary means of legal redress.” (See point [4.2.2]). In effect, the appellant argues that the right to seek re-establishment is a right of redress, so that while the period for seeking such redress against the deemed withdrawal of the application was still running, the deemed withdrawal was not a final withdrawal. The Board considers that this is not a correct analysis. First, the argument overlooks the distinction, already discussed, between a refusal, which requires a decision by the Office which is then challengeable by way of an appeal, and a deemed withdrawal, which takes place automatically by operation of law. The above statements by the EBA in G 1/09 were made in the express context of a decision by a department of first instance refusing an application: see point [4.2.2]. Second, the Board considers that the concept of redress is appropriate only in the context of correcting a wrong. Thus while it is appropriate to speak of seeking redress against an allegedly wrong decision of the Office refusing an application, it is not appropriate to speak of seeking redress against the deemed withdrawal of an application. A person requesting re-establishment of rights does not seek correction of a wrong, i.e. allege that the deemed withdrawal was wrong as a matter of law. Rather he requests that he should be excused the consequences of the withdrawal in the particular circumstances of the case. In contrast, the procedure under R 69 EPC 1973 (now R 112) by which a person can challenge a notice of loss of rights (see point 22, below) is a process for seeking ordinary means of legal redress against an alleged wrong of the Office. This conclusion appears to be fully be consistent with the position under French, German and Swiss national law, as summarised in D1, points 4.1 to 4.3. NB: D1 is an article by N. Bouche et al, “Divisionals and Deemed Withdrawal. A Way out of the Mist?” published in “epi Information” 2/2011, p. 61. D1 is a follow-up article to D2, an article by D. Visser and M. Blaseby, “Divisionals – Peering into the Mist” published in “epi Information”, issue 1/2011, p. 32. [18] The Board also considers that the appellant is wrong in the inference which is sought to be drawn from Consultative Document CA/127/01. This document was drawn up for the Administrative Council when deciding on the amendment of R 25 EPC 1973 in 2001. The relevant passage at point 6 states in full: “Grant proceedings are pending until the date that the European Patent Bulletin mentions the grant (cf. J 7/96), or until the date that an application is finally refused or (deemed) withdrawn.” The appellant argues that therefore one can legitimately speak of an application being “finally (deemed) withdrawn.” However, even if the wording in CA/127/01 in this respect might be ambiguous, this part of the document was not specifically addressed to the question of when a deemed withdrawal of an application takes place but was concerned with the pending status of an application in the case of grant (see G 1/09 [4.2.5]). In any event, the wording of A 67(4) is quite unambiguous in this respect. From the travaux préparatoires containing the successive drafts of what became A 67 it can be seen that the distinction between a (deemed) withdrawal and a final refusal was consistently made. It follows from what is said in points [14] and [15] above, that the Board also considers that such a distinction was made for good reason. The Board would add that in the
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Notice published by the Office explaining inter alia the changes subsequently made to R 25(1) EPC 1973 (OJ EPO 2002, 112), it was stated that “An application is pending up to (but not including) the date that... the application is refused, withdrawn or deemed withdrawn; ...”. [19] The conclusion which the Board has reached also appears to be fully consistent with the opinion of the EBA in G 4/98, where the Board decided inter alia that the deemed withdrawal of a designation of Contracting States takes effect upon expiry of the time limit set out in the relevant articles and rules, and not upon expiry of a grace period. In other words, the existence of a grace period does not defer the effect of the loss of rights to the end of the grace period. The Board said (see point [7.2]): “The question therefore is whether the deemed withdrawal takes effect upon expiry of the regular time limits or upon expiry of the grace period pursuant to R 85a … R 85a does not prolong the normal time limits, but contains what its name says, namely a grace period, a possibility to remedy an otherwise potentially fatal non-observation of a time limit. The conclusion that the relevant date is not the expiry of the grace period, but the expiry of the normal period was reached in J 4/86 concerning the failure to file a request for examination of a European patent application. The well-reasoned decision is fully convincing and since there are no reasons to distinguish the case at hand from the situation underlying J 4/86, there is nothing more to add. The practice of the EPO (Guidelines for Examination in the EPO, A-III, 12.5, 2nd paragraph) is confirmed.” [20] The Board therefore considers that the appellant is incorrect in saying that the question is: when was the grandparent application “finally withdrawn”? In doing so, the appellant tries to equate the factual situation of the present case with the factual situation before the EBA in G 1/09 and ignores the fact that here the application was deemed to be withdrawn, not refused. [21] The Board thus concludes that the mere existence of the right to file a request for re-establishment of rights in a deemed withdrawn application does not mean that the application is still pending while the period for filing such a request is running. For the same reasons, the Board concludes that the fact that a request for reestablishment of rights is actually filed cannot thereupon make the application once again become pending. The effect of the right of an applicant to challenge the notice of loss of rights. [22] Although this was not something argued for by the appellant, the Board considers that the above conclusions are not altered by taking into account the procedure by which an applicant can challenge a notice of loss of rights by way of requesting an (appealable) decision (R 69 EPC 1973, now R 112). If the decision in effect confirms the loss of rights, the loss of rights will still have occurred when the relevant time limit expired. There is no mechanism by which the application can have become pending again in the interim period and then become no longer pending. If the Office agrees with the applicant, then the effect of the procedure is that the Office acknowledges that no loss of rights ever occurred; the application will have been pending throughout. Further processing [23] The Board is not concerned with the possible effect on the pendency of an application of a request for further processing under A 121. These provisions of the EPC 2000 do not apply to the grandparent application (see point [3], above). Did the appellant enjoy other substantive rights in the grandparent application which were (still) subsisting when the parent application was filed? [24] As to whether the appellant enjoyed any other substantive rights after the grandparent application was deemed to be withdrawn on the expiry of relevant time limit, the appellant argues that (a) the right of the inventor under A 60 and (b) the right to have a request under A 122 for re-establishment of rights considered are both substantive rights within the meaning of G 1/09 which were still subsisting under the grandparent application when the parent application was filed. The Board will consider these in turn together with a further possible candidate for a substantive right, namely the right to file a divisional application itself. The A 60 right [25] The substantive right which the appellant relies on is said to be the right under A 60 to a patent, which right belongs to the inventor (or his employer or successor in title) and which, by virtue of A 60(3), the applicant is deemed to be entitled to exercise. The Board will refer to this as the A 60 right. 1345 | 3398
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[26] As the Board understands it, the right which the appellant relies on is in effect, and speaking broadly, the right of an applicant to have its application for the grant of a patent examined in accordance with the EPC and, subject to the application meeting the requirements of the EPC, to have a patent granted. [27] The Board inclines to the view that A 60 does not confer a substantive right per se, but rather a procedural right, which, once having been exercised, may lead to the conferring of proprietary rights under A 64. This appears to follow from the wording of A 60, which, according to the headline of Chapter II of the EPC, is concerned with who is entitled (or deemed to be entitled) to apply for and obtain a European patent. See also the statement by the EBA in G 1/09 [3.2.1] that: “... in proceedings before the EPO a European patent application also involves procedural rights which the applicant is entitled to exercise (A 60(3) EPC 1973).” (emphasis added). [28] The Board acknowledges, however, that it is not always easy to say precisely what constitutes a procedural right and what constitutes a substantive right. As the Legal Board pointed out in J 18/04, procedural rights touch upon substantive rights and drawing a clear separation between the two concepts may be difficult. [29] In addition, as already noted […], the EBA in G 1/09 said that a patent application is an object of property conferring on the proprietor of the application, inter alia, the provisional A 64 rights. By the use of the words “inter alia”, the EBA appears to have been careful not to say that the substantive rights conferred on such proprietor were restricted to the provisional A 64 rights, although the Board did not say what such other rights might be. In the light of this the Board will assume in the appellant’s favour, but without deciding, that a patent application as an object of property does confer other substantive rights on the inventor, these being rights which the applicant is deemed to be entitled to exercise by virtue of A 60(3). The Board will further assume in the appellant’s favour, but again without deciding, that one such right is the A 60 right which the appellant relies on. [30] The question is then whether this right was still subsisting when the parent application was filed. In the Board’s view the answer to this question is no. The short reason is that in G 1/09 [4.2.3] the EBA said that A 67(4) “... is a self-contained provision indicating the point in time at which substantive rights conferred by a European patent application and therefore its pending status must end.” (emphasis added by the Board). Although this statement was made in the context of the discussion of the continuing subsistence of the A 64 rights, it is perfectly general in its terms. More significantly, if there were in fact other substantive rights which continued to exist beyond this time, it would mean that the application would remain pending while these other rights remained subsisting despite the ending of the A 64 rights. But this would be inconsistent with the EBA’s statement that A 67(4) indicates the point in time at which the pending status of a European patent application must end. [31] However, the Board will again assume (in the appellant’s favour) that the only substantive rights that the EBA was talking about here were the provisional A 64 rights. See, for example, the unambiguous references to this right in point [4.2.1]. In the appellant’s favour it can also be said that the Board did not expressly consider whether there might be other substantive rights and, further, did not need to consider the point. It was sufficient to have enabled the EBA to reach the conclusion which it did for it to have restricted its consideration to the A 64 rights. This is because the Board found such rights still to be subsisting in the case in question and so on this basis the Board could answer the question referred to it positively. The Board thus did not need to consider the position of other possible rights. [32] So far as concerns the A 60 right, it is true that there is no provision in the EPC equivalent to A 67(4) setting out expressly when and in what circumstances the A 60 right ceases to exist. However, this is presumably because such a provision is unnecessary. In the case of the A 64 rights, A 67(1) confers only provisional protection. The legislator therefore apparently considered it necessary to spell out what would happen to such provisional protection in the event that no patent was granted on the application, since otherwise the position would (at least arguably) have been uncertain. A 60, on the other hand, does not provisionally confer rights. The A 60 right exists unconditionally as from the moment when the application is filed. As to when such right ceases to exist, the position appears to the Board to be clear: the right ceases to exist if and when the application is finally refused, or is withdrawn or deemed to be withdrawn, as the case may be. At that point the applicant no longer has a right to have his application examined or to have a patent granted. Nor does the possibility of an application being made for re-establishment or the fact of such an application alter this conclusion. The reasoning is the same as in the case of the A 64 rights, dealt with in points [16] to [21], above. 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rights conferred by a European patent application and therefore its pending status must end” appears therefore to be fully applicable. The right to request re-establishment as a substantive right [33] The right to have a (final) decision on the request for re-establishment of rights in the grandparent application was clearly still subsisting when the parent application was filed. The Board does not accept, however, that this right was a substantive right as this expression is used by EBA in G 1/09. In this respect the present Board has already referred to the distinction drawn by the EBA in G 1/09 between substantive and procedural rights, and to the EBA’s statement that the fact that there may be pending proceedings in the application does not necessarily mean that the application is pending. [34] Although drawing a clear separation between procedural rights and substantive rights may be difficult, the right which the appellant relies on is in the Board’s view a purely procedural and not a substantive right in the sense meant by the EBA. This is confirmed by the decision in J 10/93, where the Legal Board was concerned with the transfer of an application after the application had been deemed to be withdrawn. The Board said: “[3] First, it is to be taken into consideration that deemed withdrawal of a patent application does not result in a complete and immediate loss of all the applicant’s rights. Although it is true that the grant procedure as such is terminated by a communication noting the deemed withdrawal (see G 1/90 [5-6]), there still remains a bundle of procedural rights, as e.g. the applicant’s right to apply for a decision under R 69(2) (followed by the possibility to file an appeal having suspensive effect) and his right to avail himself of any of the legal remedies provided for in A 121, A 122, R 85a or R 85b, as the case may be. Thus, following deemed withdrawal, there is a period of time during which the applicant is entitled to make use of his procedural rights referred to above with the aim of having his patent application restored.” (Emphasis added by the Board). [35] The point was affirmed in J 16/05, where the Board said about a similar point (point 2.1): “Also, the fact that the application was declared deemed to be withdrawn does not prevent the Board from considering the effect of the transfer. As long as procedural rights remain outstanding, which the applicant is entitled to make use of, a successor to the applicant is entitled to have a transfer registered (see J 10/93 [3]).” [36] The Board therefore rejects this argument of the appellant. The right to file a divisional application as a substantive right [37] Although the appellant did not rely on such a right, the EBA in G 1/09 [3.2.3] referred to the right to file a divisional application relating to an earlier application as being a substantive right arising under the earlier application. The argument that the continued existence of such a right means that the earlier application will still be pending is nevertheless obviously circular in the present context. [38] The circle can be broken, however, by taking into account the EBA’s qualification to this statement, namely that the right only existed “if the subject matter of the earlier application is “still present” at the time the divisional application is filed”, quoting G 1/05 [3.2.3]. The requirement that the subject matter be “still present” was equated in the next paragraph of the EBA’s reasons with the requirement that, for an application to be pending, substantive rights deriving therefrom must (still) be in existence. The present Board concludes that the right to file a divisional application therefore depends on some other substantive right under the earlier application (still) being in existence at the date of filing of the divisional application. So far as concerns the grandparent application, this condition, for the reasons already given, was not satisfied. Referral of a question to the EBA [39] In support of the request for the referral of a question to the EBA, the appellant cited the two articles D1 and D2, and said that they demonstrate that the position is uncertain. This is enough, it was argued, to mean that the question is an important one for the purposes of A 112. [40] The authors of D2 argue (see page 34, point 3) that although the reasoning in G 1/09 implies that in the case of a deemed withdrawal the pending status ends at the expiry of the non-observed time limit, this is in conflict with the principle endorsed by the EBA of “pendency until expiry of the remedial period” (the authors’ words). Alternatively, the authors argue that because of the similarity between a refusal and a deemed withdrawal it is reasonable to apply to the case of deemed withdrawal the principle endorsed by the EBA that a decision does not 1347 | 3398
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become final until the expiry of the period for seeking ordinary means of redress. In D1 and also in Visser, The Annotated EPC, 9th edition (2011), para. 2.1.3 (the author being one of the authors of D1 and D2) it is suggested that it is arguable that an application is still pending in the period during which a request for re-establishment can be filed. In D1, the authors also suggest a way of resolving what they see as the uncertainties arising out of G 1/09. [41] While the Board treats with due respect the views of academics and practitioners, the Board has been able to reach a conclusion in this case, including the above points discussed in D1 and D2. The existence of doubts expressed in such articles is not in itself enough to make the question, even assuming that it is important, one which should be referred to the EBA. So far as the Board is aware, there are no other decisions of the boards of appeal in which a different conclusion has been reached. Conclusion [42] For the above reasons the appeal must be dismissed and the request for referral of a question to the EBA is refused. Should you wish to download the whole decision, just click here. The file wrapper is not available as the decision was anonymized.
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T 1185/09 – Reduction To Practice
K’s Law – The ebook
T 1185/09 – Reduction To Practice 28 Apr 2012
The opponent filed an appeal against the decision of the OD that maintained the opposed patent on the basis of the first auxiliary request. Claim 1 of this request reads as follows: 1. A method for controlling glyphosate-susceptible weeds and a glyphosate-tolerant first plant species growing in a crop of a glyphosate-tolerant second plant species, comprising: first applying a non-glyphosate herbicide to the crop of the glyphosate-tolerant second plant species, the non-glyphosate herbicide being toxic to the first plant species and non-toxic to the second plant species, at a rate of application sufficient to control the first plant species, wherein the non-glyphosate herbicide is selected from the group consisting of quizalofop, clethodim, sethoxydim, fluazifop, imazamox and fenoxaprop; and, second applying a glyphosate herbicide to the crop of the glyphosate-tolerant second plant species at a rate of application sufficient to control the glyphosate-susceptible weeds, wherein the first applying and the second applying steps can be performed in either order or simultaneously. According to the opponent, document D6 explicitly disclosed a method for controlling a glyphosate-tolerant first plant species (the volunteer Roundup ReadyTM corn) growing in a crop of a glyphosate-tolerant second plant species (the Roundup ReadyTM soybean) comprising the application of a non-glyphosate herbicide (fluazifop-p, clethodim, quizalofopethyl, sethoxydim). The elements of the claimed method not explicitly taught in this document were the control of glyphosate-susceptible weeds (growing in the Roundup ReadyTM soybean crop) via the application of glyphosate herbicide. It was however axiomatic that glyphosate (RoundupTM) would be applied to the Roundup ReadyTM soybean explicitly mentioned in document D6 in order to control glyphosatesusceptible weeds for the simple reason that this is the very reason why Roundup ReadyTM crops were developed. This element was one implicit feature of document D6. The patent proprietor pointed out that the sequential or simultaneous application of a glyphosate herbicide and one of the non-glyphosate herbicides listed in claim 1 in order to efficiently control glyphosate-susceptible weeds and volunteer glyphosate-tolerant corn in a glyphosate-tolerant soybean crop was not disclosed in document D6. Since Roundup ReadyTM corn was deregulated on November 1997 and not available before the 1998 growing season, volunteer corn plants which are the progeny of a crop of corn grown the previous season in the same field could not have occurred in a crop of a glyphosate-resistant plant until 1999 after the priority date of the patent in suit as shown by document D21. The Board found claim 1 to lack novelty: [2.1] The last sentence of paragraph D on page 50 of document D6 reads as follows: “Even in the case of a rotation involving Roundup ready soybeans, it should be considered that a) no-till - cultivation which is used on 35% of the soybean acreage, reduces dramatically the occurrence of the volunteers and b) control of Roundup Ready corn volunteers will remain possible with an application of grass-killer herbicides such as fluazifop-p, clethodim, quizalofop-ethyl, sethoxydim, currently used in soybean crops for volunteer corn control.” The use of RoundupTM (glyphosate) on Roundup ReadyTM soybeans to control the Roundup ReadyTM corn volunteers with application of clethodim and sethoxydim is, therefore, disclosed. Furthermore, the process of claim 1 of the patent in suit mentions that not only glyphosate-tolerant plant species are controlled but also glyphosate-susceptible weeds. Although the passage cited above in point [2.1] does not refer to the control of weeds, Roundup (glyphosate herbicide) has been developed in order to spare the crop and to kill weeds. This point is confirmed by the disclosure of document D6 (see page 49, two first lines of the third paragraph), which mentions that weeds are not tolerant to glyphosate and up to now no resistance to glyphosate has been observed for weeds. Therefore, the treatment of Roundup ReadyTM soybeans with a glyphosate herbicide will automatically control the glyphosate-susceptible weeds.
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[2.2] The respondent’s argument based on the deregulation of Roundup ReadyTM corn in November 1997 […] did not convince the board. [2.2.1] Whether the disclosure of document D6 has been applied in a field before the priority date of the patent in suit is irrelevant for assessing novelty, since the mere disclosure of a teaching, disregarding whether this teaching has actually been reduced into practice, is enough to make it available to the public as required by A 54. That document D6 was available to the public at the priority date of the patent in suit is confirmed by document D7. This point was never disputed by the respondent and the board does not see any reason to contest this point. [2.3] The respondent also argued that the sequential or the simultaneous application was not mentioned in document D6. [2.3.1] However, document D6 recites that the grass-killer herbicides listed (see point [2.1]) are applied. Since, Roundup (glyphosate herbicide) is also applied to the plants, it must thus be inferred therefrom that the application of the said glyphosate herbicide is performed either before or after or at the same time as the application of the grass-killer herbicide. Hence, the method of applying the herbicides mentioned in claim 1 cannot distinguish the claimed process from the disclosure of document D6, since it includes all the possible methods of applying the two herbicides. [2.4] Thus, claim 1 of the main request lacks novelty (A 54). To download the whole decision, click here. The file wrapper can be found here.
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T 1289/09 – Only One? Not Necessarily
K’s Law – The ebook
T 1289/09 – Only One? Not Necessarily 27 Apr 2012
This decision contains a useful reminder concerning the closest prior art: [4.5.4] The argument that for an invention there exists only one closest prior art document and that another prior art document cannot be used for attacking inventive step of the process claim 1, cannot be accepted in particular in view of the established case law, see e.g. T 967/97 (see Case Law of the Boards of Appeal of the European Patent Office, 6th edition, 2010, chapters I.D.2, and I.D.3.1 to I.D.3.5). As shown above, the cited documents D2 and D3 represent feasible starting points for attacking inventive step of the subject-matter of the product claim and the process claim respectively. To read the whole decision, click here. The file wrapper can be found here.
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J 4/10 – Back And Forth
K’s Law – The ebook
J 4/10 – Back And Forth 26 Apr 2012
The application under consideration was filed as an international application on April 10, 2002, by Korea Microbiological Laboratories (“KML”), which later became “Komipharm”. The international application mentioned this applicant for all designated states except for the USA, and Messrs Sang Bong Lee and Yong Jin Yang as applicants for the USA only. In the Power of Attorney dated May 7, 2002, for the representation before all competent authorities KML and Messrs Lee and Yang were indicated as applicants. The written authorisation for the common representative was signed by both Mr Lee and Mr Yang; the latter also signed on behalf of KML in his capacity as President. With letter dated November 11, 2004, the representative submitted to the EPO two Forms PCT/IB/306 from the International Bureau (hereinafter “IB”) dated 9 November 2004, one of them giving notice of a change regarding the applicant by the IB pursuant to Rule 92bis.1 PCT. According to this notification the two inventors and applicants for the US, Mr Lee and Mr Yang, were now also recorded as applicants for all designated states. In a letter dated November 27, 2008 a representative appointed by Mr Lee requested the EPO to “update” the EPR entry by adding Messrs Lee and Yang as co-applicants. A copy of the relevant bibliographic data on file at the IB indicating Komipharm, Mr Lee and Mr Yang as applicants, as well as a copy of the Form PCT/IB/306 already submitted to the EPO were attached. The EPO then notified Komipharm, also having appointed a new representative, of the corrected entries concerning the applicant now including Mr Lee and Mr Yang as co-applicants. In a letter dated December 3, 2008, Komipharm asserted that a transfer of rights in this patent application had never taken place and requested to revert to entering Komipharm as sole applicant. The representative of Mr Lee contended that the international patent application was filed mistakenly in the name Komipharm as the sole applicant. He submitted a copy of a contract between the three co-applicants dated May 16, 2005, as well as a translation of the contract as proof of the co-ownership of the two newly added coapplicants. The Legal Division informed Mr Lee’s representative that the documents submitted as proof for the coownership of Mr Lee had not been duly signed by Komipharm. In his answer, the representative informed the EPO that the contract was stamped by the parties to the contract and that the seal rather than the signature was generally used for formal legal documents in Korea. By decision of the Legal Division dated 11 August 2009 the request of Komipharm to reverse the entry into the EPR was rejected. Komipharm filed an appeal against this decision. In the course of the proceedings before the Board the parties also filed evidence related to a law suit before Korean jurisdictions. Here is what the Legal Board had to say on this topic: [4] With its main request the appellant seeks in essence that the entry of Mr Lee and Mr Yang into the European Patent Register (EPR) as co-applicants be reversed. This request is allowable if the registration of Mr Lee and Mr Yang as co-applicants in the EPR as conveyed in the communication of the Legal Division dated 28 November 2008 was contrary to law (points [4.1-6] below), or, if after the entry in the EPR and during the European/Regional phase of the patent application a legal basis for the correction of that entry became apparent (point [5] below).
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K’s Law – The ebook
[4.1] The registration in the EPR of the change concerning the applicants was based on a copy of the Form PCT/IB/306 from the IB dated 9 November 2004, giving notice of the recording of a change concerning the applicant by the IB pursuant to Rule 92bis.1 PCT, whereby Mr Lee and Mr Yang were now recorded as inventors/applicants for all designated states. It was also backed up by a copy of the relevant bibliographic data on file at the IB of the international patent application at issue indicating Komipharm, Mr Lee and Mr Yang as applicants. Both copies were filed with the letter dated 27 November 2008 of the representative of Mr Lee requesting the respective “update” of the EPR. [4.2] Pursuant to Article 39(1)(b) PCT, A 153 EPC, R 159(1) EPC the present international patent application entered the European phase on 10 November 2004, i.e. 31 months from its international filing date of 10 April 2002. R 159 EPC applies instead of R 107 EPC 1973 according to Article 7 of the Revision Act of 29 November 2000 (OJ EPO 2001, Special Edition No. 4, 50), Article 1(6) of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Revision Act of 29 November 2000 (OJ EPO 2007, Special Edition No. 1, 197) and Article 2 of the Decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the EPC 2000 (OJ EPO 2007, Special Edition No. 1, 89). [4.3] The recording of Mr Lee and Mr Yang as co-applicants by the IB as notified and evidenced by the Form PCT/IB/306 dated 9 November 2004 as well as by the copy of the relevant bibliographic data on file at the IB had therefore still been performed during the international phase of the PCT application and hence before the international application entered the European phase on 10 November 2004. [4.4] No other information can be obtained when looking at the EPO-Form 1200 “Entry into the European phase (EPO as designated or elected Office)”, signed by the then common representative of Komipharm, Mr Lee and Mr Yang and received by the EPO on 8 October 2004. This Form displays under “1. Applicant: Indications concerning the applicant(s) are contained in the international publication or recorded by the International Bureau after the International publication.” The International Publication took place on 23 October 2003. In the International Publication only KML (predecessor to Komipharm) was indicated as applicant. However, at the time of entry into the European phase on 10 November 2004 Mr Lee and Mr Yang were already recorded as coapplicants as shown by the above-mentioned IB-Form PCT/IB/306 dated 9 November 2004 and by the copy of the relevant bibliographic data on file at the IB. This situation did not change by the 28 November 2008, when the EPO performed and communicated the correction of the applicants as recording Mr Lee and Mr Yang as coapplicants in the EPR. [4.5] The requirements set out in Rule 92bis.1(a) PCT, the provision governing the recording of a change of i.a. the applicant, have obviously been met. The recording of the change of applicants on 9 November 2004 was requested also on behalf of the registered applicant Komipharm, i.e. of its predecessor Korea Microbiological Laboratories, Ltd., since the request was filed at the IB by the then common representative on record of Korea Microbiological Laboratories, Ltd., Mr Lee and Mr Yang. This prerequisite being met Rule 92bis.1 (a) PCT does not require proof of entitlement regarding the change of applicants in the form of submitting documents. [4.6] Considering these facts and evidence and in the absence of any clear indication giving rise to considerable doubts that Mr Lee and Mr Yang, from a legal point of view, should not be registered as co-applicants, it was reasonable for the Legal Division to rely on the correctness of the IB Register and the bibliographic data at the IB as submitted by Mr Lee’s representative with the letter dated 27 November 2008. Therefore the correction of the EPR on 28 November 2008 is not to be impugned on that account. [5] Pursuant to Article 27(2)(ii) PCT, Rule 51bis.1(a)(ii) PCT once the processing of the international application in the national/regional phase has started the designated office may require assignments and additional documents relating to the entitlement to apply for or be granted a patent, provided that the national law provides for a respective legal basis. With regard to the European phase of an international application and the EPO as designated office as in the case at issue R 20 EPC 1973, R 22 EPC respectively, constitute the pertinent legal provisions thereby implementing A 71 and 72 EPC 1973, A 71 and 72 EPC respectively. In the present case R 20 EPC 1973 rather than R 22 EPC applies according to Article 7 of the Revision Act of 29 November 2000 (OJ EPO 2001, Special Edition No. 4, 50), Article 1(1) of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Revision Act of 29 November 2000 (OJ EPO 2007, Special Edition No. 1, 197) and Article 2 of the Decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the EPC 2000 (OJ EPO 2007, Special Edition No. 1, 89), albeit these Rules as well as A 71 and 72 EPC are almost identical as regards the substance. Contract dated 16 May 2005
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[5.1] After Komipharm had objected to the entry of Mr Lee and Mr Yang as co-applicants in the EPR arguing that there was no legal basis for the registering of either of the additional parties as co-applicants Mr Lee submitted with letter dated 19 December 2008 a copy and a translation of a contract dated 16 May 2005 between Komipharm, Mr Lee and Mr Yang as evidence of the co-ownership of the two newly added co-applicants. [5.2] There is still reasonable doubt whether the seal, which according to Mr Lee’s submission is generally used rather than the signature for formal legal documents in Korea, and whether the filing of a translation of the notarization of the stamps by a public notary law firm as part of the contract are sufficient to the requirements of A 72 EPC 1973 (assignments in writing and signature of the parties) at all. However, this does not need to be decided by the Board in the present case, since the contract dated 16 May 2005 cannot be regarded as adequate proof of the entitlement of Mr Lee and Mr Yang to be registered as co-applicants of the patent application at issue by virtue of their original status nor by transfer of rights. On the contrary and thereby for the moment leaving out of consideration the fact that the Seoul High Court Civil Court held with judgement of 30 June 2011 that the agreement of 16 May 2005 was null and void […] this document apart from the reasons given in that judgement raises such serious doubts as to the entitlement of Mr Lee and Mr Yang to be recorded as coapplicants that the entry in the EPR should have been reversed. [5.3] First of all the contract of 16 May 2005 cannot per se serve as evidence of the request for registration as coapplicants directed to the IB in November 2004, since it was apparently concluded only six month later without any discernible retroactive effect. [5.4] Neither can the contract substantially be regarded as a legally valid basis for a subsequent transfer of rights to Mr Lee and Mr Yang nor as an entitlement to be registered as co-applicants of the patent application at issue. R 20 EPC 1973 requires that the documents produced as evidence of a transfer of rights must directly verify the transfer which already took place (J 38/92 and J 39/92 [2.3-4]). Documents only establishing the obligation to assign rights but not constituting the assignment itself do not comply with Rule 20 EPC 1973 (J 12/00 [2,14]). Regarding the contract of 16 May 2005 as filed by Mr Lee’s letter dated 19 December 2008 the respective chapter “C. (Co-ownership …) 2.” (No. 2 of annexes Catalog of applied patent indicating the PCT application at issue) at most constitutes a legal obligation to transfer rights concerning the PCT application where, as in the case under consideration, the application was filed only by one of the contracting parties. A direct transfer of rights from Komipharm to Mr Lee and Mr Yang as required by Rule 20 EPC 1973 cannot be inferred from this passage of the contract. Korean Judgements [5.5] Considering the comments in Mr Lee’s letter dated 13 June 2011 on the inconsistencies and contradictions between the submissions of the parties and the judgements of the Seoul Central District Court of 20 May 2010 with regard to the Co-Ownership Agreement as set out in the Board’s communication dated 21 April 2011 the Board has no occasion to change its opinion. However, this issue finally is quite immaterial for the present decision of the Board for the reasons given below (points [5.6, 5.8]). [5.6] The letter dated 13 June 2011 was filed by Mr Lee himself rather than by his professional representative. As correctly argued by the appellant in its letter dated 1 August 2011 according to A 133(2) EPC a natural or legal person without a residence or principal place of business within the territory of one of the contracting states must act through a professional representative in all proceedings established by this Convention with the exception of filing the European patent application. Mr Lee’s address is in Korea, thus not within the territory of one of the contracting states. Therefore, the requests and arguments contained in Mr Lee’s the letter of 13 June 2011 would have had to be submitted by the professional representative. As these submissions were made neither by Mr Lee’s representative nor endorsed by him, the Board following the jurisprudence of the Boards of Appeal cannot take them into consideration (see T 213/89 [2]; T 717/04 [1]). [5.7] The same legal consequence applies with regard to the contention of Mr Lee in his letter of 13 June 2011 that the agreement of 16 May 2005 was submitted “as an evidence of co-applicant” and not “as an evidence of transfer of patent rights” and that a transfer of rights had never happened. For the sake of argument only the Board points out that if the agreement of 16 May 2005 was submitted “as an evidence of co-applicant” and a transfer of rights had never happened this allegation as far as proceedings before the EPO are concerned could only be relevant with respect to a procedure pursuant to A 61 EPC, R 14 EPC. However, entitlement procedures according to A 61 EPC, R 14 EPC have not yet been initiated with regard to the patent application at issue. [5.8] Finally the appellant has put forward another serious reason why the agreement of 16 May 2005 cannot be regarded as appropriate and sufficient proof of a legally valid transfer of rights in terms of the patent application 1354 | 3398
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underlying the present appeal proceedings and thus of an entitlement of Mr Lee and Mr Yang to be registered as co-applicants. With letter dated 1 August 2011 the appellant filed a certified translation of the judgement of the Seoul High Court Civil Court of 30 June 2011 which is a judgement on the appeals from the judgements of the Seoul Central District Court of 20 May 2010 […]. This appeal judgement materially altered the first instance rulings, particularly in holding that the agreement of 16 May 2005 was null and void due to the fact that the Joint Ownership Agreement was not approved by the board of directors. The Seoul High Court Civil Court further stated that the claims which are based on the effectiveness of the Joint Ownership Agreement are groundless. [5.9] Consequently, this agreement which was the only document submitted that, by itself, met the requirements of Article 27(2)(ii) PCT and Rule 20 EPC 1973 and which also formed the main legal basis of the judgements of the Seoul Central District Court of 20 May 2010, can no longer be regarded as evidence in favour of Mr Lee and Mr Yang for any rights to the present patent application nor as entitlement to be recorded as co-applicant in the EPR. [6] For the time being the EPO was correct in recording Mr Lee and Mr Yang as co-applicants on 28 November 2008 relying on the documents issued and provided by the IB and available at that time. However, the documents, i.e. the agreement of 16 May 2005 and the judgements of the Seoul Central District Court and the Seoul High Court Civil Court filed subsequently during the regional phase before the EPO according to Article 27(2)(ii) PCT, R 20 EPC 1973 do not provide evidence that a transfer of rights in favour of Mr Lee and Mr Yang actually occurred nor that they were co-owners of the present patent application. This applies even more considering that the Seoul High Court Civil Court as the final instance held that the agreement of 16 May 2005 is null and void and of no effectiveness. Therefore the recording of Mr Lee and Mr Yang as coapplicants in the course of the proceedings before the EPO has proved to be unsustainable. Consequently the request of the appellant to reverse the entry in the EPR of Mr Lee and Mr Yang as co-applicants and to revert to Komipharm as sole applicant is allowable. […] The case is remitted to the […] Legal Division with the order to delete the entry of Mr Lee and Mr Yang as coapplicants from the EPR. Should you wish to download the whole decision, click here. The file wrapper can be found here.
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J 21/10 – A Closed File
K’s Law – The ebook
J 21/10 – A Closed File 25 Apr 2012
This appeal was against the refusal of a request for re-establishment by the Examining Division (ED). On August 30, 2008, the ED had sent a communication pursuant to R 71(3) inviting the applicant to pay the grant fee and to file the translations of the claims. As the applicant did not react, the ED, on March 16, 2009, sent a communication stating that the application was deemed to be withdrawn. On January 29, 2010, the representative of the applicant requested re-establishment into the time limit under R 71(3) and completed the omitted acts. The formalities agent called him and explained that re-establishment was excluded because further processing was available. On February 10, 2010, the representative then requested further processing. This request was refused. The applicant then filed an appeal. The applicant explained that there had been an error by an experienced employee of its representative. She had received the file because another patent attorney working for the applicant had requested not to receive any reminders for annuities payments any more. Because of another letter contained in the file, the employee had drawn the erroneous conclusion that this other law firm would take over the representation and had closed the file without consulting the representative. As a matter of fact, she had acted as if the attorney had already checked the file, as usual. The applicant went on to explain that communications relating to closed files were only added to the file wrapper, without further inspection. They were not shown to the representative in charge of the file, nor were they transmitted to the applicant, because it was assumed that the client did not wish to pursue the proceedings; once an applicant had decided to let rights go abandoned, it did not wish to receive further communications. Why exactly the file had been closed was not questioned when communications were received because the attorney had examined this matter when closing the file. Only letters sent by clients were transmitted to the attorney in charge. Because of the erroneous indication on the file wrapper (that the file was closed), it was believed that nothing had to be done. The communications under R 71(3) and the notification of loss of rights had simply been filed and had not been transmitted to the representative. It was only after receipt of the letter of the applicant that the error was discovered. As you might have guessed, the Board did not allow the request. Here are the reasons: *** Translation of the German original *** [1] The appeal is directed at the re-establishment of the legal situation that would have occurred if the time limit for further processing of the European patent application […], which had been triggered by the communication pursuant to R 112(1) of March 16, 2009, had been met. The basis for this is the request for re-establishment of January 29, 2010, which had been amended, together with the submission of February 10, 2010, in that reestablishment into the time limit for requesting further processing was requested rather than re-establishment into the time limit pursuant to R 71(3) (for which re-establishment is not available). On the very same day, the omitted act was carried out by paying the fee for further processing. The Board approves the formalities officer who has interpreted and treated the submission of January 29, 2010, together with the letter dated February 10, 2010, as a request for re-establishment into the time limit for requesting further processing. [2] According to R 136(3) all re-establishment of rights shall be ruled out in respect of any period for which further processing under A 121 is available and in respect of the period for requesting re-establishment of rights. Conversely, re-establishment is available for time limits that are excluded from further processing, unless reestablishment into this time limit is explicitly excluded. As, pursuant to A 121(4), inter alia, the time limit for requesting further processing is excluded from further processing, it follows e contrario from R 136(3) that reestablishment into the time limit for requesting further processing is admissible. The travaux préparatoires to the revision of the EPC confirm this interpretation. As can be seen from the basic proposition for a revision of the 1356 | 3398
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EPC of October 13, 2000 (MR/2/00, Number 6, A 122), the lawmaker wanted to keep the possibility of reestablishment into the time limit for further processing, which had been acknowledged by the case law (J 12/92 [3.2.2]; J 29/94 [3], J 902/87 [2.2-4]). Therefore, the request for re-establishment of the appellant concerns a time limit for which this legal remedy is available. As a consequence, the Board has not challenged the admissibility of the request for re-establishment of January 29, 2010, together with the letter of February 10, 2010, from this point of view. [3] However, it had to be examined whether the time limit for filing the request for re-establishment into the time limit for requesting further processing, i.e. within two months of the removal of the cause of non-compliance (R 136(1)) had been complied with. [4] The removal of the cause of non-compliance is a fact that has to be determined taking into account the circumstances of the particular case (J 27/90 [2.4]). In the present case, the appellant was of the opinion that the cause of non-compliance consisted in the erroneous conviction that nothing had to be done for patent application 02 797 893.1. The reason was that an employee of the law firm (Kanzlei) of the representative had marked as completed (Erledigungsvermerk) and brought to the room in which completed files were stored. [5] According to the established case law of the Boards of appeal, when a time limit has been missed because of an error regarding facts, the cause of non-compliance is removed on the day on which the person in charge of the patent application (i.e. the proprietor of the right or its authorised representative) should have noted the error. As a rule, this is the day on which he/she receives a communication pursuant to R 112(1) because – provided there are no exceptional circumstances – one may expect that as a consequence of this communication, the person in charge is aware of the fact that the time limit has been missed and has to notice the error. However, this does not exclude that other events may lead to the discovery of the error and trigger the time limit for requesting reestablishment. In individual cases, it has to be examined whether one has to assume a removal of the cause of non-compliance because the responsible person has not discovered (erkannt) the error, as a consequence of a lack of due care for which he/she is to be held responsible, but would necessarily have discovered it if he/she had taken all due care (J 27/90 [2.4]). [6] In the present case it is decisive for the question whether the time limit for requesting re-establishment into the time limit for further processing, i.e. within two months of the removal of the cause of non-compliance (R 136(1), first sentence), has been complied with, whether the representative would necessarily have discovered the error if he had taken all due care required by the circumstances. It may be left open whether all due care has been taken regarding the closure (Schließung) of the file and whether the way in which the employee of the law firm acted may not be attributed to the representative because it was a single error of a well-trained and appropriately supervised employee, because this question concerns the allowability of the request for reestablishment, which did not have to be dealt with in view of the outcome of the proceedings. [7] The appellant points out that the erroneous closure of the file did not have to be noticed, neither when the notification of loss of rights of March 16, 2009, was received, nor when the communication pursuant to R 71(3) of September 29, 2008 [was received]. These communications had not received any attention because of the erroneous marking that the file was completed. In compliance with the processes implemented in the law firm, as soon as these communications had been received, they were identified, by the employees responsible for the incoming letters, as belonging to a file that was completed and, as a consequence, deposited in the archived file wrapper without having been presented to a patent attorney. This way of proceeding was usual in law firms. It was not necessary to present official communications related to closed files because it could be expected that the client was not interested in maintaining the rights any more. In particular, this was the case when there were written instructions on behalf of the client according to which the client did not wish to maintain the rights. In such a situation, the fact that an attorney noticed the official notification would not make any difference in view of the closure of the file and the order of the client. The same was true when the attorney decided to close the file because he had not received requested instructions of the client in spite of repeated requests. Also, when there was a change of representative, an attorney gave the clearance for the administrative completion of the file only when the process of transmission was completely terminated. As the completion (Erledigung) of a file always had to be agreed upon beforehand by the attorney in charge, the representative could rely on the fact that when a file was marked as completed, no further examination by a patent attorney was required. Official communications concerning closed files were not transmitted to the clients either because the latter did not wish [to receive such letters] and many law firms handled this situation in the same way. [8] The arguments of the appellant are not persuasive. The Board is of the opinion that the duty of due care required of a patent attorney is not satisfied by an organisation of procedures where official communications regarding closed files, which are received at a later stage by registered mail are filed in the file wrapper without any examination as to their contents and are not transferred to the client either. This also holds true when the 1357 | 3398
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representative has fulfilled his duty of ascertaining the client’s will before the file is closed. Although in particular cases official notifications of loss of rights that are received after the closure of a file may correspond to legal consequences desired by the client, it is not acceptable to generalise this and to base the internal organisation of the work processes on it such that the contents of official communications is not even considered any more. As a matter of fact, the organisation [of processes] based on [such a view] cannot do justice to the great variety of cases and in fact hinders errors that might be committed during the closure of the file from being discovered. [9] This is also true for the case – which has been expressly referred to by the appellant but which does not correspond to the present case – where the representative has received the order to let the right go abandoned by non-payment of the renewal fees. If, for instance, a communication pursuant to R 71(3) is received afterwards, it is not acceptable to assume without any verification that the will of the client to abandon the right, which is expressed in its earlier instruction, has remained unchanged. It cannot be excluded in such a case that the applicant had committed an error or that it has made up its mind and, for example, has given instructions to pay the renewal fees. This is true in particular when the payment of the renewal fees is made by a third company and not by the representative. If there are internal instructions in the law firm not to present an official communication pursuant to R 71(3) [which has been received] after the file has been closed, to the representative and not to transmit it to the client either, then it is not possible to verify the intention of the client. The withholding of official communications deprives the client of the possibility to investigate a possible error, to become aware of it and to act accordingly in order to avoid a loss of rights. Moreover, it is hindered from reconsidering the instructions it may have given, for example in view of the reference to the legal remedy of further processing. The same reasoning applies for official communications concerning a loss of rights, to which the appellant mostly referred. The instruction not to examine official communications after a file had been closed and to withhold them deprives the representative of all means of control that would allow to discover without undue effort a possible discrepancy that occurred when the file was closed. [10] As far as the facts are concerned, it has to be noted that according to the submissions of the appellant the fact that the file of European patent application 02 797 893.1 was closed was not due to an instruction not to pay the renewal fee. Rather, the file was marked as completed in view of a change of representative. As explained by the representative of the appellant, in such cases the law firm awaits the publication (Anzeige) of the change of representation before the file is closed under the supervision of a patent attorney. Later on, however, such a file is treated in the very same way as files that have been closed for a different reason. In this case also the employee who is responsible for incoming letters files the official communication in the file wrapper in the archive without previously presenting it to the representative. This way of organising internal work processes is also to be considered as a fault on behalf of the representative in the context of a transfer of representation. First, in the case of a change of representation, which, in view of an orderly treatment, necessarily leads to a situation of overlapping responsibilities, it is not appropriate to delimit the individual responsibilities [of each of the representatives] according to formal aspects such as the access to the publication of the transfer (see T 338/98 [8]). Secondly, official communications that are received afterwards necessarily have to raise suspicions because they suggest that errors have been committed in the treatment of the transfer of representation. In the present case, the representative would have found surprising the communication pursuant to R 71(3), which arrived about 15 months after the file had been closed, and the notification of loss of rights of March 16, 2009, which was received another 6 months later, if he had become aware of their existence. As far as the communication pursuant to R 71(3) was concerned, there was an obvious discrepancy with respect to the fact that the file had been marked as completed: that an application that has been found to be allowable is not to be pursued should not have been presumed without verification. Moreover, the presumption of a change of representative could not have explained the receipt of the communication either, and this also applies to the notification of loss of rights. All in all, these communications should have triggered a verification of the legal situation. Because of the instruction not to transmit official communication concerning closed files to the client, the representative deprived the appellant or its patent attorney who allegedly had taken over representation, respectively, of the information on the on-going proceedings contained in these communications and also deprived them of the opportunity of becoming aware of an oversight or a misunderstanding. [11] For the above reasons the Board comes to the conclusion that the representative, had he taken all due care, would have discovered the error when he received the communication pursuant to R 71(3) of September 29, 2008. Therefore, it is this moment that is relevant for the removal for the cause of non-compliance and the start of the time limit for filing a request pursuant to R 136(1), first sentence. [12] However, it has to be noted in the present case that what was requested is re-establishment into the time limit for requesting further processing. According to R 135(1), further processing under A 121(1) shall be requested by payment of the prescribed fee within two months of the communication concerning either the failure to observe a time limit or a loss of rights. In the present case what is relevant for the time limit for filing a 1358 | 3398
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request for further processing is the notification of the loss or rights, which was posted on March 16, 2009. Therefore, it is obvious that the time limit for requesting further processing ended after the moment of removal of the cause of non-compliance, because the representative should have become aware of the error already when receiving the official communication of September 29, 2008 […]. It is a fact that the error continued to exist after that, but the representative was not prevented – within the legal meaning of A 122 – from requesting further processing in due time any more. The appellant has not pointed out any further cause of non-compliance hindering it from filing a request for further processing in due time. [13] The existence of an obstacle that is causally related to the failure to meet a time limit is a procedural requirement or a requirement for admissibility (Verfahrens- bzw. Sachurteilsvoraussetzung) and has to be checked when the admissibility of the re-establishment is to be examined. It cannot make any difference for such an attribution (Zuordnung) whether in a particular case the reason for there not being any obstacle hindering [a party] from meeting a time limit within the meaning of A 122 at the moment when the missed time limit has expired is that the invoked circumstances did in fact not make it impossible to carry out the missed procedural actions in due time, for instance when a party knowingly let a time limit expire (T 413/91 [4]) or because one has to conclude, for legal reasons, that there was no obstacle, as in the present case, where an error because of which a procedural action that had to be made within a time limit was not performed should have been discovered if all due care had been taken. The fact that this [aspect] is part of the procedural requirements does not mean that considerations of due care are not appropriate because such considerations are inherent to the examination of the procedural requirement of whether the time limit for requesting re-establishment into the time limit for further processing, i.e. within two months of the removal of the cause of non-compliance (R 136(1), first sentence) was met when the party invokes an error as the cause of non-compliance. If the cause of non-compliance [by the requesting party] in its request for re-establishment, which consists in an error, is eliminated as a consequence of a violation of the duty of due care that has to be attributed to the responsible person, then this elimination leads to the request for re-establishment being inadmissible. For this reason alone the request for re-establishment cannot be allowed. There is no need for further justifications. […] The appeal is dismissed. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 541/09 – More On Weight Problems
K’s Law – The ebook
T 541/09 – More On Weight Problems 24 Apr 2012
All the parties filed appeals against the decision to maintain the opposed European patent on the basis of the second auxiliary request, but the patent proprietor finally defended this request. Claim 1 of this request read (in English translation): A process for the preparation of expandable styrene polymers having a molecular weight Mw in the range from 220000 to 300000 g/mol, characterised in that a blowing agent-containing styrene polymer melt having a temperature in the range from 160 to 240°C is conveyed through a die plate which is heated to a temperature that is in the range of 20 to 100°C above the temperature of the blowing agent-containing styrene polymer melt and which has holes the diameter of which at the die exit is in the range from 0.2 to 1.2 mm, and subsequently granulated. The Board found this request not to comply with the requirements of A 83: *** Translation of the German original *** [4.1] The claimed invention concerns a process for the preparation of expandable styrene polymers. On the one hand, the process is defined by process steps comprising the extrusion of a blowing agent-containing styrene polymer melt through a heated die plate under certain temperature conditions, and the granulation if the extrudate. On the other hand, the process also characterises the product to be obtained via the process by means of a parameter. According to the claim, this product has to be an expandable styrene polymers having a weight average molecular weight Mw in the range from 220000 to 300000 g/mol. The patent specification teaches, in particular in view of paragraphs [0005] and [0006], that the purpose of the teaching of the patent is to provide, by means of the claimed process, an expandable styrene polymer that can be foamed to give foams with ideal foam structure. The argumentation of [the patent proprietor] in its letter of November 25, 2009 […] allows to derive, together with the trial report I filed as an annex, that the claimed molecular weight Mw of the styrene polymer is essential for its foaming to final products having advantageous properties such as reduced post-shrinkage, even surface and homogeneous cell structure. It follows that the molecular weight Mw of the process product according to the claim in the range from 220000 to 300000 g/mol, which is to be obtained according to the process, is an essential feature of the invention. This range has a width of 80000 g/mol, which is relatively narrow. Moreover, when the polymer is produced by means of extrusion of the departure polystyrene, it is necessary to take into account reductions of the molecular weight caused by thermal degradation reactions, which, according to paragraph [0008] of the patent specification can amount to 10000 g/mol and, according to the trial report I, which states that the Mw of PS 158 K is reduced from 280000 to 241000 g/mol, even 40000 g/mol. This loss of molecular weight alone comprises, as far as values are concerned, half the width of the claimed Mw range. [4.2] The requirement under A 83 that the skilled person must be enabled to carry out the invention requires the skilled person to precisely determine the molecular weight Mw in order to obtain an expandable styrene polymer having a molecular weight Mw in the range from 220000 to 300000 g/mol within the meaning of the teaching of the patent in a target-oriented and reliable way. In particular, he has to choose a sufficiently high molecular weight Mw of the departure polymer in order to reach the claimed Mw range after the extrusion. However, as the original documents of the application do not indicate any measuring method for determining the molecular weight Mw, the objection raised by [opponents 1 and 3], based on this lack of disclosure, that the skilled person is not enabled to carry out the invention, is a paramount criterion for the [present] decision. [4.3] It is undisputed that there are several methods for determining the weight average molecular weight Mw of polymers, such as gel permeation chromatography (GPC), light scattering, ultracentrifugation. It is also undisputed that different measuring methods, when applied to the same sample, and different measurement conditions within a given measurement method, lead to different Mw values. This has been shown by the opponents in several documents (e.g. D55, D56, D67, D68, D69, D71). 1360 | 3398
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[4.3.1] Thus it can be derived from Table 1.3.21 of D55 that the Mw determination of the standard polystyrenes NBS-705 et NBS-706 by light scattering, ultracentrifugation and GPC leads to significantly different results. The measurements carried out on NBS-705 and GPC give Mw values of 189000 and 159000 g/mol, respectively. The difference amounts to 30000 g/mol or about 20%. When Mw is determined for NBS-706 by means of ultracentrifugation (Mw 288000 g/mol) and GPC under certain measuring conditions (Mw 220000 g/mol) differences of 68000 g/mol (30%) are possible. Even when the same measuring principle (GPC) is used, differences of about 20% occur for different measuring conditions (Measurement series 2 and 3 of the Table). D56 shows the dependence of the Mw value determined by GPC on the same samples on the sample concentration (Table 1). The change of the calibration standard used in the GPC method also leads to significant differences in Mw as shown in D71 (where GPC is referred to as “Size Exclusion Chromatography“ or SEC) for different polystyrenes (SRM 706, SRM 705a, PS-1) using standards TSK and Shodex (Tables 2 to 7). On page 12 of D71 it is noted that the Mw values obtained with the Shodex calibration curve are about 10% higher than when the TSK calibration curve is used. [4.3.2] It unambiguously follows from all this that the skilled person wishing to reliably determine the molecular weight Mw of the expandable styrene polymer according to the teaching of the patent needs precise information on how to proceed. The mere indication of a measuring method is not enough; indications regarding the precise measuring conditions are also needed. In particular in relative methods such as the common GPC method indications concerning the sample concentration, the calibration standard, the separation material and the eluent are required. The DIN-standard 55672-1 (D72) even requires an examination report (point 12). [4.3.3] This is all the more true in the present case because the width of the Mw range that is relevant for the invention is relatively narrow (80000 g/mol) and because the differences of 20% or more that are observed when different measuring principles or conditions are used are of an order of magnitude that may amount to 50% of this width. Moreover, of one considers that there may be a reduction of the Mw value of up to 40000 g/mol between the initial product and the process product, due to thermal degradation (see trial report I), then it is practically impossible for the skilled person to obtain an expandable styrene polymer having the claimed Mw range within the meaning of the teaching of the patent in a targeted way if no details concerning the determination of the molecular weight are given. [4.4] The argument of the [patent proprietor] according to which the polystyrene PS 158 K, which was characterised by a Mw of 280000 g/mol, could be used as a reference for the calibration is not persuasive. As a matter of fact, the data sheet for the polystyrene PS 158 K does not contain any indication regarding the molecular weight of the polymer sold by BASF. However, a commercial product without a precise specification of the molecular weight Mw appears not to be suitable for use as a calibration substance for this very parameter. Moreover, as shown in D64 and D67 to D69, GPC measurements carried out on PS 158 K sold by BASF in Korea and Europe (“PS Europa” and “PS Korea”) yield Mw measurements that, depending on the laboratory and on the measurements conditions, partly differ significantly from 280000 g/mol and fluctuate between 236000 and 27000 g/mol. Therefore, the skilled person is unable to correlate one particular measuring method and/or measuring conditions with the Mw value of 280000 g/mol to be obtained for PS 158 K. [4.5] The further argument of the [patent proprietor], according to which polystyrene was a relatively simple molecule without significant branching of the polymer chain, so that the determination of its Mw was unproblematic, is not persuasive either. As already stated by [opponents 1 to 3], the styrene polymer to be used as the starting product according to the claim is not limited to a homopolymer but also encompasses, according to paragraph [0010] of the patent specification, a great number of copolymers such as ABS, SAN, ASA, MBS, MABS or blends thereof. The [patent proprietor] has not established that a particular measuring method suitable for a homopolymer is equally suitable for different copolymers. Rather, it is to be expected that at least certain measuring conditions (such as the PS reference, eluent, separating agent for GPC) have to be adapted. [4.6] Summing up, it has to be noted that the differences of the measured Mw values of polystyrene of up to 30%, which have been established by [opponents 1 to 3], may exceed the claimed range width of 80000 g/mol, taking into account the not inconsiderable thermal reduction of the molecules of up to 40000 g/mol during the extrusion of the polystyrene starting material. [4.6.1] Therefore, these considerable deviations in the determination of the molecular weight Mw, together with the narrow width of the claimed Mw range, not only lead to a lack of clarity of the scope of protection of the claims that normally has to be considered under A 84, but also concern the question of whether the invention can 1361 | 3398
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be carried out. When assessing this question, unclear parameters have to be taken into account, in view of T 608/07, in particular if
the lack of clarity not only concerns the boundaries of the claimed range, and the lack of clarity results in undue efforts having to be made if the advantages of the invention are to be obtained.
[4.6.2] As far as the first criterion is concerned, the explanations under point [4.3] show that almost the whole Mw range from 220000 to 300000 g/mol is concerned. [4.6.3] As far as the second criterion is concerned, it has already been explained under point [4.1] that the claimed range of molecular weights is an essential element of the invention and that the advantages of the invention (little post-shrinkage, even surface and homogeneous cell structure of the foamed final product) are only obtained if the expandable styrene polymer is within this relatively narrow Mw range. Therefore, in order to obtain these advantages within the meaning of the teaching of the patent in a targeted way, the skilled person must be certain that measured molecular weight values Mw for the styrene polymer that lie within the claimed domain do indeed qualify as values within the meaning of the invention. As this is not true, as has been shown in points [4.3] to [4.5], the reproduction (Nacharbeitung) of the teaching of the patent requires undue efforts of the skilled person wishing to obtain the advantages according to the invention. As a consequence, the requirement of A 83, according to which the invention has to be sufficiently disclosed, has not been complied with. [4.6.3] Therefore, the main request, which is the only request on file, cannot be granted. […] The patent is revoked. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 2/09 – Big Brother Is Reading You 23 Apr 2012
This test case complements T 1553/06 (see the preceding post), in particular by considering whether the contents of e-mails are made publicly available by the fact that e-mails can be intercepted. I2 refers to a webpage entitled “Display Device” allegedly found at URL http://www.gironet.nl/home/morozov/CIE/D1SPLAY_DEVICE on 12 January 2000, on the basis of the keyword string “three cathodes and phosphor screen and convergence” entered in the Altavista search engine as a webpage dated “12-1-00”, as certified in a notarial record A2 dated January 13, 2000 at the request of DSM N.V. (DSM Patents & Trademarks). C3 refers to an e-mail from Mr de Vries (AkzoNobel) to Mr Mooij (acting for the opponent), sent encrypted on 17 January 2000 at 20:45,as certified in a notarial record dated 18 January 2000, at the request of DSM N.V. C5 refers to an e-mail from Mr de Vries to Mr Mooij, sent unencrypted on 25 January 2000 at 21:44, as certified in a notarial record dated 31 January 2000 at the request of DSM N.V. The filing date of the impugned patent was February 1, 2000. Background [4.1] The Opposition Division (OD), in the decision under appeal, held that, out of the documents that the opponent had submitted, i.e. I2, C3 and C5, document I2 was the only available prior art before the filing date of the patent in suit (hereinafter also referred to as “the filing date”). The division held that the subject-matter of claim 1 differed from the device of I2 […] in that it included the (additional and final) feature dealing with the 1363 | 3398
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relationship between the light output L and the signal level V. The problem to be solved by the addition of this feature to the device known from I2 was regarded as to provide a display which yielded a brightness distribution that was very comfortable for studying images on the screen […]. I2 did not disclose this feature or render it obvious. The board notes that the content of e-mail C5 corresponds to the final feature of claim 1. The opponent, in the statement of grounds of appeal, contended that the subject-matter of claim 1 was not inventive in view of I2 and C5. The board will assume arguendo that the OD was right in considering I2 to be publicly available before the filing date and will assess below whether C5 was also made available to the public. Pursuant to A 54(2) EPC 1973: The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application. According to the case law of the boards of appeal, information is “available to the public” if only a single member of the public is in a position to gain access to it and understand it, and if said member of the public is under no obligation to maintain secrecy (see T 1081/01 [5], affirmed by T 1309/07, [3.2.1]). Whether or not a member of the public has actually accessed the information is irrelevant (see T 84/83 [2.4.2]) . The relevant facts and arguments submitted by the opponent [4.2] […] The opponent’s latest position includes the following:
the e-mail was routed inside the E.U. and possibly the U.S. (the opponent relied on Article 5 of Directive 97/66/EC and on a map of the inter-regional Internet backbone), at the filing date, it was in principle unlawful in both the E.U. and the U.S. to intercept e-mails, if, exceptionally, interception was done lawfully in the E.U. or the U.S., then there was no obligation to the interceptor to keep the content of an e-mail secret, provided that the interceptor recognised from its content and context that the e-mail was not confidential (“proportionality” test), in the E.U., interception was legally authorised for Internet Service Providers (ISPs) in particular for law-enforcement purposes (U.K.: see RIPA act), in the U.S., interception was legally authorised for ISPs without restrictions.
While in the oral proceedings (OPs) the opponent’s focus was on the above indents, the board considers that the opponent has not abandoned its view that the e-mail might also have been routed through territories other than the E.U. or the U.S., in particular through territories where, at the filing date, it had not been unlawful to intercept e-mails. Whether C5 forms prior art because it was communicated to the opponent’s representative (recipient stage) [4.3] The parties admitted that there was a substantial level of co-operation between them and other professional representatives in order to create a test case. For the board, this explains why it was possible that e-mail C5 corresponding to the final feature of current claim 1, i.e. the feature of claim 5 of the parent application (just like C3 corresponding to current claim 3, i.e. the feature of claim 7 of the parent application), could be sent on 25 January 2000 (C3: 17 January 2000), i.e. before the filing date of the parent application on 1 February 2000, from Mr de Vries of AkzoNobel to Mr Mooij, the representative of the opponent DSM IP Assets B.V. and also of DSM N.V. (DSM Patents & Trademarks) on whose behalf notarial records were drawn up. Access by Messrs de Vries and Mooij to the information in e-mail C5 before the filing date, however, did not put this information into the public domain. This is because a non-disclosure agreement (NDA) not to divulge the respective information and binding on these two persons, among others, had been concluded. The then applicant mentioned in its letter of 10 October 2000 in the proceedings up to grant of the parent application, before the divisional application from which the patent in suit originated had been filed, that “both Mr De Vries and Mr Mooij were bound to a non-disclosure agreement pertaining to the subject-matter of the present European Patent application” […]. In the OPs before the board the opponent acknowledged that Mr Mooij was bound by a confidentiality agreement relating to the exchange of the e-mail C5, but that the subject-matter of that agreement was not clear. In any case, the board must infer from the test-case nature of the present proceedings that disclosure of the content of e-mail C5 by either Mr de Vries or Mr Mooij was not permitted because otherwise the test case would have become largely moot.
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Whether C5 was transmitted over the Internet [4.4] The board notes that the opponent, in support of its contention that C5 (like C3) was transmitted over the Internet, filed the original of a corresponding notarial record by a Dutch notary public at the OPs (such original was also filed for C3). This record certifies that C5 (and another notarial record certifies that C3) was opened in his presence at a certain date and time. This original bears the signature and stamp of the notary public, and C5 and the attached notarial record were bound in one folder (idem for C3 and the further notarial record). The discrepancy between the notarial record pertaining to e-mail C5 saying that the message was on one page and the fact that in reality the e-mail consisted of two pages is regarded by the board as an obvious mistake. What is decisive for the board is the fact that the substantive content of the e-mail was indeed on one page. The board considers the opponent’s statements to be credible given that this is a test case and transmission of C5 (and C3) is a precondition for enabling the board to deal with the gist of the test case. In the light of the foregoing, the board considers that the opponent has proven beyond reasonable doubt that C5 (like C3) was transmitted over the Internet at the date and time indicated in the notarial record. […] Whether C5 forms prior art because the notary saw it [4.5] As stated, it has been proven that a Dutch notary opened e-mail C5 (and C3) . However, the board does not consider that the content of C5 (or C3) was divulged to the public by the fact that the notary public saw it before the filing date. This is because from the test nature of the present case it must be concluded that the notary was under a duty to keep this content confidential. Otherwise the test case would be largely moot. Whether C5 forms prior art because it might have been intercepted from the Internet: in general Disclosures via the Internet: the technical differences between webpages and e-mails [4.6.1] In its submission of 11 March 2011 the patentee said: The purpose of the present patents (parent and divisional) was and is to assess if and to what extent disclosures via the Internet would fall under the prior art as defined in A 54. (Emphasis added.) At the outset the board draws the attention to a basic factual difference present at the filing date between two types of “disclosures via the Internet”, i.e. between content that exists on the World Wide Web (also referred to as “the Web”), a part of the Internet, on a webpage at a specific URL (Uniform Resource Locator) and content that is transmitted over the Internet by e-mail. Content on the Web can, in principle, be accessed and read via its URL, which may have been found by the public at large with the help of a public search engine if the content in question has been indexed with keywords (electronic “pull type” technology, i.e. where the request for a transaction is initiated by the receiver) . An e-mail is a communication from a sender to one or several recipients (in case of a large number of recipients, sending is sometimes dubbed “broadcasting”). A (private) communication takes place between senders and receivers, who may be individuals or groups of persons, possibly members of the public (electronic “push type” technology, i.e. where the request for a given transaction is initiated by the sender). E-mails are not placed in an unrestricted area of the Internet, such as the Web. The board is not aware that they would be accessible by entering an address that may have been found with the help of keywords entered in a public search engine. An email can only be read by a member of the public (who is not a recipient of the e-mail) if extraordinary measures, such as intercepting it on a computer network, are used. The opponent submitted that such interception was taking place in practice and that e-mails could be filtered according to keywords. It should be added that e-mails transmitted over the Internet are generally divided into packets and later reassembled. Document D1 […] , submitted by the opponent, explains email transmission in greater detail as follows: … given the dynamic nature of the Internet, it is impossible to absolutely predict exactly what path network traffic will follow. One e-mail message that you send could take an entirely different path to reach the recipient than another that you send to the same person. In fact, it is even worse than that: for the sake of efficiency, email messages and other network traffic are typically broken down into smaller little chunks, or packets, before they are sent across the network, and automatically re-assembled on the other side. Each of these individual
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packets may in fact follow a different path to get to the recipient! (In actual practice, a given path tends to get reused until the operational parameters of that or other related paths have significantly changed.) The net result of all this is that your message, or at least little chunks of your message, travels through an indeterminate set of systems and network devices, each of which offers a point of interception. Implications of the test for public availability of a document on the World Wide Web [4.6.2] In parallel case T 1553/06 the board developed a test for assessing the public availability of a document stored on the World Wide Web which could be found via a public web search engine on the basis of keywords. In devising this test the board started from its finding that the mere theoretical possibility of having access to a means of disclosure did not make it become available to the public within the meaning of A 54(2) EPC 1973. What was required, rather, was a practical possibility of having access, i.e. the requirement of “direct and unambiguous access”, set out in G 1/92 and T 952/92) applied not only to access by the skilled person to information derivable from a means of disclosure, but also to access by a member of the public to the means of disclosure (see T 1553/06 [6.5.4]). The test is as follows (see T 1553/06 [6.7.3]): If, before the filing or priority date of the patent or patent application, a document stored on the world Wide Web and accessible via a specific URL (1) could be found with the help of a public web search engine by using one or more keywords all related to the essence of the content of that document and (2) remained accessible at that URL for a period of time long enough for a member of the public, i.e. someone under no obligation to keep the content of the document secret, to have direct and unambiguous access to the document, then the document was made available to the public in the sense of A 54(2) EPC 1973. The board in T 1553/06 also made clear that if any of conditions (1) and (2) is not met, the above test does not permit to conclude whether or not the document in question was made available to the public. In case T 1553/06 the board analysed inter alia whether two webpages labelled I1 and I2 (the same I2 as in the present appeal) formed prior art. I1 and I2 were considered to have existed on the Web. Their contents were proven to have been found several times by a Dutch notary public after entering keywords in a public search engine. The opponent had furnished corresponding notarial records as evidence to that effect. The board held that the above test was complied with in relation to both these documents and therefore that both of them formed prior art. As for further document I3, for which no notarial record had been submitted, the board left the question as to whether that document existed on the Web unanswered. In any case, since the board found that I3 had neither been indexed by a web crawler nor could be found by guessing its URL, the board arrived at the conclusion that there was no direct and unambiguous access to I3 and that it thus did not form prior art. The board notes that in the present case even a superficial comparison between access to webpages and access to e-mails transmitted via the Internet before the filing date reveals marked differences, including the following:
It is disputed between the parties whether illegal interception (“hacking”) of e-mails was commonly possible for the skilled person in the field of the present invention. It is also disputed and there is no evidence that, before the filing date of the opposed patent, e-mails could be found on the basis of keywords with the help of a public search engine. Even assuming that it might have been possible, along the route that an e-mail takes, to retrieve it as a whole, i.e. that the packets into which it had been divided were reassembled at the point of interception, then, in the absence of an existing equivalent to a public web search engine, it would seem that the email would have had to be searched for at a plethora of ISP mail servers and MX hosts […] all over the world and on the networks of a multitude of ISPs that were independent of one another. The opponent itself alleged that as the e-mail addresses for AkzoNobel (from which C5 was sent) and “DSM” (where it was received) had a top-level domain “.com” and both entities were large multinational companies there was no certainty that e-mails from and to these addresses were sent externally from a company server located in the Netherlands. It was possible that they could have been sent first via an internal network (intranet) within each company to any location in the world where that company had a server and thence externally (via the Internet) from that country.
In addition, the opponent confirmed that it was not alleging any specific instance of disclosure to any third party of the e-mail C5 sent from Mr de Vries of AkzoNobel to Mr Mooij acting for the opponent. In contrast thereto it should be recalled that, in case T 1553/06, the fact that webpages I1 and I2 were retrieved from the Internet was certified by a Dutch notary public.
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In the light of the above, the board has doubts as to whether public availability of e-mails transmitted via the Internet can reasonably be established at all if the technical conditions of the above test for public availability of webpages were to be applied mutatis mutandis, i.e. whether e-mails transmitted over the Internet could be accessed and searched in a way comparable to that of webpages, independent of whether or not access to and disclosure of the content of the email were lawful. The board rather is of the opinion that the differences between webpages and such e-mails make a strong prima facie case against public availability of the latter. The board however does not deem it necessary for purposes of the present case to embark on a more thorough enquiry into this issue. This is because it will be shown below that, on the basis of legal considerations relating to the lawfulness of access and/or disclosure of e-mails sent over the Internet, email C5 cannot be deemed to have been publicly available before the filing date. More specifically, the legal condition of the above test, applied mutatis mutandis to e-mail transmission via the Internet, of access by “a member of the public, i.e. someone under no obligation to keep the content of the document secret”, is not complied with. Legal considerations outside the areas of European patent law and fundamental rights are based on the parties’ submissions and may or may not reflect the actual state of the law at the relevant points in time. In the following the board will assume arguendo that technical conditions of a test for public availability of emails transmitted via the Internet could still be devised that such e-mails could meet. Breakdown of the legal analysis [4.6.3] The subsequent discussion is based on the board’s understanding that the opponent, in essence, addresses the legal issues relating to the lawfulness of access and/or disclosure of e-mails sent over the Internet under two distinct hypotheses:
an individual, i.e. a person to whom the task of monitoring e-mail traffic has not been entrusted, might have intercepted e-mail CS; and an ISP might have performed such an act, either for operational purposes or to comply with governmental requests .
Considering the distinction between individuals and ISPs to be expedient, the board will proceed with its analysis accordingly (see points [4.7] and [4.8] below). For the reasons given in its analysis below, the board is of the view that
in the case of an individual, the question is whether access and disclosure are lawful, in the case of ISPs, assuming access to be lawful under certain circumstances, the question is whether disclosure would then also be lawful.
For the sake of simplicity, the board will assume arguendo, apparently in line with the opponent’s submissions, that any ISP through whose installations email C5 was routed had the technical means to reassemble an e-mail if necessary. Whether C5 forms prior art because an individual might have intercepted it from the Internet Summary [4.7.1] Even under the assumption that technical conditions of a test for public availability of e-mails transmitted via the Internet could be devised that such e-mails could meet, however, e-mail transmission via the Internet would still not have rendered e-mail C5 publicly available for legal reasons connected with such interception. This follows from the considerations set out below. Unlawfulness analogous to confidentiality agreement [4.7.2] In the communication annexed to the summons, the board considered that interception of e-mail C5 might have been unlawful in the relevant territories. The board described the legal consequences of this possibility, drawn by analogy, as follows : According to established case law, information covered by a confidentiality agreement is not considered to be publicly available, provided that it has been kept confidential. For the board, it might follow by analogy that information that is legally prohibited from being accessed, let alone disclosed, is not publicly available either, unless it has actually been disclosed before the filing date of the application. In the case of a confidentiality 1367 | 3398
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agreement a person is in possession of certain information but, because of that agreement, not allowed to disclose it. On the other hand, a legal prohibition of access does not permit a person to obtain knowledge of certain information. Should that person still obtain such knowledge in breach of the law, then the prohibition of access might also imply a prohibition of disclosure of that knowledge and the question of any legal impact of a confidentiality notice might be left unanswered. (See paragraph bridging pages 25 and 26) In the above communication the board mentioned a number of legal provisions according to which, at the filing date, intercepting e-mails might have been illegal both under Dutch (telecommunications and criminal) law and under the law of the then European Union, i.e. of the “E.U.-15” (the E.U., at that time, consisted of 15 Member States: ~ustria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, the Netherlands, Portugal, Spain, Sweden and the United Kingdom). As for E.U. law, the board, more specifically, referred to Directive 97/66/EC. As a consequence, the board issued the following invitation to the opponent: The opponent is invited to show that email C5 was routed via one or several territories in which it was lawful to intercept it and to disclose its contents. […] In this context the statement by the opponent relating to the question of how to determine whether the content of an e-mail could be deemed public […] is also of relevance. According to the opponent, this question had to be considered at several stages: (i) at the sender, (ii) during message transmission and (iii) at the recipient. The opponent went on to say: If at any one of these stages at least one reader could (not did) have accessed its contents and had a reasonable belief that he was free to repeat its contents to another person then the contents of the email must be deemed made available to the public. For the board it would follow that, under this view, if the reader held no such reasonable belief (based on the law of confidence), then the e-mail had to be deemed not made available to the public. Moreover, the opponent argued that a reader reading an e-mail by unlawful interception (hacking) might reasonably assume its content was, in principle, confidential. For the board it would follow from this assumption that an e-mail that was intercepted unlawfully was,’ in principle, not publicly available either. Thus the board considers that the opponent’s assumptions also lead in principle to the board’s preliminary conclusion above regarding the analogous consequences of prohibition of access and disclosure by law and by contract (NDA). The board now confirms this conclusion. The law in the territories through which C5 was routed (a) Whether the territories are of legal significance [4.7.3] In reply to the board’s communication annexed to the summons to OPs, the patentee observed that, in the view expressed therein, the dividing line between public and non-public was strongly dependent on “technical issues how the e-mail was actually sent” and on a wealth of national legislation on e-mail privacy. Such a practice would never provide certainty to users of the European patent system and to the public at large. The opponent, in its reply, considered the board’s invitation (reproduced above, at point [4.7.2]), referred to as a “test” by the opponent, to be both unreasonable and unnecessary - only to, in essence, apply the letter of that “test” in that very reply, and later again during the OPs. The opponent relied, in particular, on a map of the interregional Internet backbone (document 08) to show the likelihood that the e-mail was routed through the U.S. Apparently, the opponent, like possibly the patentee as well (referring to “technical issues how the e-mail was actually sent”), considered that the board, in its invitation, was requesting the opponent to furnish email header information. The board, however, had made no such express request. The fact that the opponent itself relies on the territories through which the e-mail was routed and attempts to establish that route (via the U.S.) on the basis of a map of the inter-regional Internet backbone […] implies that, in the opponent’s opinion, proof of the email’s route might be established by means other than header information. (The board however does not mean to exclude the possibility that header information might constitute an appropriate means of evidence to that effect.) In this context the board again notes the opponent’s reference in the notice of opposition to Directive 2002/58/EC requiring E.U. Member States to bring into force the provisions necessary to comply with this Directive. At the patentee’s request, the opponent furnished a copy of the Directive, and the patentee, in the
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proceedings before the OD, discussed its implications […]. Against this backdrop, the patentee’s latest stance denying the usefulness of taking (national) legislation into account amounts to an about-face. The board considers that, in line with the parties’ position before the OD and the opponent’s (at least implied) position before the board, the law in force in the territories through which an email is routed naturally does play a role because all the activities on the territory of a sovereign state are, as a simple consequence of that sovereignty, subject to the state’s laws, unless the state has lost its jurisdiction on certain subject-matter, in particular because it has transferred it e.g. to an international organisation. E-mail traffic being routed across the globe, such transfer would have had to be made on a global scale, e.g. by entrusting the corresponding tasks to a global international organisation. It has not been claimed by any party that this has taken place. The conclusion that the law in force in the territories through which an e-mail was routed is of legal significance does not exclude, however, that interception by an individual may, across the whole world, not lead to public availability within the meaning of A 54(2) EPC 1973 of the e-mail intercepted. This is because it might be possible to break down the world into territories in which interception was unlawful and territories in which interception was lawful but such lawfulness could not be taken into account for legal reasons. These questions are being dealt with in points (b) and (c) below, respectively. The legal significance of routing C5 within the E.U. and possibly the U.S. (b) While it was the opponent’s original assertion that C5 formed prior art for the sole reason that it was transmitted over the Internet, the opponent’s submissions in the OPs, as already set out above, were focused on the allegation that e-mail C5 was routed within the then E.U.-15 and possibly the U.S. and that in both territories it was illegal for an individual (but not for an ISP) to intercept e-mails. The board considers that it is the opponent’s duty to state the facts and also, in principle, foreign or international law concerning its case (see above, point [3.1]). The board therefore sees no reason to make enquiries of its own, especially given that the patentee made no objections to the opponent’s submissions in this regard in the OPs. The board notes that an e-mail transmitted over the Internet before the filing date of 1 February 2000 in either the European Union (then comprising 15 Member States) or the United States was, according to the parties1 submissions, prohibited from being intercepted, whatever the pertinent legal provisions may have been’. In this respect the board refers to its analogy made in the communication annexed to the summons (see above at point [4.7.2]), according to which information that is legally prohibited from being accessed, let alone disclosed, is not publicly available either, unless it has actually been disclosed before the filing date of the application. It follows from this analogy that transmission of e-mail C5 via the territories of the E.U. and possibly the U.S. does not, by itself, make the content of that e-mail publicly available. In other words, the legal condition of the test developed in T 1553/06 (see point [4.6.2] above), applied mutatis mutandis to e-mail transmission via the Internet, of access by “a member of the public, i.e. someone under no obligation to keep the content of the document secret”, is not complied with. Thus, the question as to whether the inter-regional Internet backbone map 08 alone, showing the situation as of September 2000, established that e-mail C5 was indeed routed via the U.S. need not be answered. (c) The legal significance of any routing of C5 outside the E.U.-15 and the U.S. However, even if e-mail C5 had been routed beyond the borders of the E.U.-15 and the U.S., the same result would ensue from the aforementioned analogy. The opponent has made no specific indications as to any countries outside the E.U.-15 and the U.S. through which e-mail C5 might have been routed. The opponent relying on a certain report to the U.S. Congress as evidence […] only indicated that, in April 2010, a substantial amount of e-mail traffic was diverted from the U.S. to China, without, however, providing evidence that this was also the case before the filing date. For that reason alone, the allegation that e-mail C5 might also have been routed to China is pure speculation. In the absence of pertinent evidence, the question as to the standard of proof under which such evidence would have to be assessed does not arise. Furthermore, the opponent alleged that it was possible that e-mail C5 sent by Mr de Vries of AkzoNobel could have travelled first via AkzoNobel’s internal network (intranet) to any location in the world where that company had a server and thence externally (via the Internet) from that country, depending on the quickest path available, again to any location in the world where the receiving company had a server. Yet, again, no evidence has been filed as to any specific circumstances under which e-mail C5 was thus routed. Thus, once more, these submissions as to a possible routing outside the E.U. and possibly the U.S. are mere speculation. 1369 | 3398
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However, the board will still assume arguendo that email C5 did traverse at least one territory outside the E.U. and the U.S. and that in that territory it was not unlawful to intercept C5. Even under this hypothesis the board would not accept any ensuing public availability of C5. This is because, in the board’s view, the practical and effective protection of the fundamental rights enshrined in Article 8 of the European Convention of Human Rights and Fundamental Freedoms (ECHR) would be jeopardised if information obtained in violation of this provision could be relied on to the detriment of those for whom the rights were designed. The ECHR is relevant for the purposes of the EPC (see T 1465/07 [8] and the cases cited there). Article 8 ECHR reads: 1. Everyone has the right to respect for his private and family life, his home and his correspondence. 2. There shall be no interference by a public authority with the exercise of this right except such as is in accordance with the law and is necessary in a democratic society in the interests of national security, public safety or the economic well-being of the country, for the prevention of disorder or crime, for the protection of health or morals, or for the protection of the rights and freedoms of others. The European Court of Human Rights held in Liberty and Others v. The United Kingdom (no. 58243/00, 1 July 2008, paragraph 56) : Telephone, facsimile and e-mail communications are covered by the notions of “private life” and “correspondence” within the meaning of Article 8 (see Weber and Saravia v. Germany (dec.), no. 54934/00, § 77, 29 June 2006, and the cases cited therein). The Court has also consistently held that: [w]hile the essential object of Article 8 is to protect the individual against arbitrary interference by the public authorities, it does not merely compel the State to abstain from such interference: in addition to this negative undertaking, there may be positive obligations inherent in effective respect for private or family life. These obligations may involve the adoption of measures designed to secure respect for private life even in the sphere of the relations of individuals between themselves (see X and Y v. the Netherlands, 26 March 1985, § 23, Series A no. 91, and Armoniene, cited above [Armoniene v. Lithuania, no. 36919/02, 25 November 20081, § 36). (See Von Hannover v. Germany (no. 21, nos. 40660/08 and 60641/08), Grand Chamber, 7 February 2012, paragraph 98; emphases added.) Against the backdrop of the above case law, it is the board’s view that the right to the protection of private life and correspondence may be interpreted as requiring Member States of the Council of Europe to adopt measures prohibiting the violation of individuals’ rights by the interception by other individuals of their e-mails sent over the Internet, subject to the exceptions mentioned in Article 8(2) ECHR. As for the E.U.-15 the board, in this context, refers to Directive 97/66/EC that the opponent considered to be the law. Recital (2) of that Directive states: … confidentiality of communications is guaranteed in accordance with the international instruments relating to human rights (in particular the European Convention for the Protection of Human Rights and Fundamental Freedoms) and the constitutions of the Member States. Furthermore, Article 5 (and 14) of that Directive which the opponent also relied on (in the OPs the opponent no longer insisted on the fact that, according to Article 15(1), the last implementation date of this article was 24 October 2000, i.e. after the filing date) read : Article 5 Confidentiality of the communications 1. Member States shall ensure via national regulations the confidentiality of communications by means of a public telecommunications network and publicly available telecommunications services. In particular, they shall prohibit listening, tapping, storage or other kinds of interception or surveillance of communications, by others than users, without the consent of the users concerned, except when legally authorised, in accordance with Article 14 (1). Article 14 - Extension of the scope of application of certain provisions of Directive 95/46/EC 1. Member States may adopt legislative measures to restrict the scope of the obligations and rights provided for in [Article 5] … , when such restriction constitutes a necessary measure to 1370 | 3398
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safeguard national security, defence, public security, the prevention, investigation, detection and prosecution of criminal offences or of unauthorised use of the telecommunications system, as referred to in Article 13(1) of Directive 95/46/EC. The board thus considers that the E.U.-15 did adopt measures to protect individuals’ rights against interception of their e-mails sent over the Internet, not only in respect of governmental requests to ISPs to monitor e-mails but also against violations by individuals, such as hackers, of the rights of other individuals, i.e. senders of emails. The board notes in this respect that a distinction was made in recital 13 of the Directive between “the fundamental rights of natural persons” and “the legitimate interests of legal persons”. As far as the protection of e-mails against interception is concerned, the board however believes that the obligation to grant protection by the law exists irrespective of whether emails are sent by a natural person or by such person on behalf of a legal person. This is because the rights of both natural and legal persons in respect of the secrecy of the content of their e-mails should be afforded equal weight. Interception must be prohibited indiscriminately, subject to exceptions such as those set out in Article 8 ( 2 ) ECHR or in Article 14(1) of Directive 97/66/EC (both provisions were reproduced above). (Regarding the right to “respect for … his home” protected by Article 8(1) ECHR, the Court held in Société Colas Est and others v. France (no. 37971/97, 16 April 2002, paragraph 41) that: in certain circumstances the rights guaranteed by Article 8 of the Convention may be construed as including the right to respect for a company’s registered office, branches or other business premises. It should be noted that on the filing date of 1 February 2000 not only the E.U.-15 but all EPC Contracting States were also Member States of the Council of Europe, with the exception of Monaco that joined the Council on 5 October 2004. In the light of the above, the question as to any impact of e-mail diversion to China […] has become moot also because even if it had been lawful in China to intercept e-mails the board could not take that fact into account. It should also be noted that the opponent has offered no evidence to this effect, and indeed has not even expressly alleged any instance of lawful access. (d) Conclusion As a consequence, C5 does not form prior art because an individual might have intercepted it from the Internet, no matter in which territory of the world. The opponent, in the OPs, in any case focused more specifically on alleged lawful interception of e-mails by ISPs in the U.S., on the one hand, and of ISPS, as the case may be, in conjunction with law enforcement personnel in the E.U. on the other hand. Accordingly, the board relying arguendo on such lawfulness of interception will discuss the legal implications separately for each region below. In this context the board will assume, again favourably for the opponent, that it would be possible to devise technical conditions of a test that do not a priori exclude public availability of e-mails sent via the Internet and that ISPs were able, before the filing date, to intercept emails and search them on the basis of keywords […]. Whether C5 forms prior art because an ISP might have intercepted it from the Internet The situation in the U.S. (a) The opponent’s proposed approach [4.8.1] Assuming lawfulness of interception of an e-mail by an ISP, the opponent proposed to assess the content of the information transmitted and its context in order to decide whether an e-mail should be deemed confidential. Such a finding would imply a duty, based on the law of confidence, for an ISP to keep the content of the e-mail secret, which, in turn, would rule out its public availability. The opponent’s proposed approach is explained in greater detail below. The opponent asserted in the OPs that ISPs in the U.S. were, at the filing date of 1 February 2000, not required to keep data confidential because the E.U. “safe harbor” provisions had only been adopted in July 2000, i.e. after the filing date (under the Safe Harbor Agreement, U.S. signatories promise to handle the data of European citizens according to E.U. rules). The supporting evidence for the legal situation before that date, which the opponent supplied in the OPs, consists of the two documents “Opinion 1/99” and “Data Protection” […].
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The “Data Protection” article of 1998 written by U.S.- based authors identifies a sharp contrast between privacy and data protection policies in the U.S. and in Europe. Where the U.S. approach had been to provide specific and narrowly applicable legislation, in Europe most countries had implemented unified supra-national policies with omnibus legislation. The article provides the following, more specific information: The European legislation outlines a set of rights and principles for the treatment of personal data, without regard to whether the data is held in the public or private sector. In the United States, the legal tradition is much more concerned with regulating data collected by the federal government. […] The United States has largely avoided legislation governing the treatment of sensitive personal information in records systems held by sources other than the federal government. […] A European point of view is expressed in the paper “Opinion 1/99” by the “Working Party on the Protection of Individuals with regard to the Processing of Personal Data” (established by Article 29 of Directive 95/46/EC): 1. Privacy and data protection.in the United States is found in a complex fabric of sectoral regulation, at both federal and state level, combined with industry self-regulation. Considerable efforts have been made during recent months to improve the credibility and enforceability of industry self-regulation, particularly in the context of the Internet and electronic commerce. Nevertheless, the Working Party takes the view that the current patchwork of narrowlyfocussed sectoral laws and voluntary self-regulation cannot at present be relied upon to provide adequate protection in all cases for personal data transferred from the European Union. 2. Given the complexity of the US system of privacy and data protection, the establishment in the US of an agreed “benchmark” standard of protection in the form of a set of “safe harbor” principles offered to all economic actors and US operators is a useful approach … One may conclude from the above two documents, especially the excerpts just quoted, that data protection and privacy standards in the U.S., apart from data collected by the U.S. Federal government, were less restrictive than in the E.U. when those documents were published, i.e. in 1998 and 1999 respectively, and thus before adoption of the Safe Harbor Agreement in July 2000. Nevertheless, it must be pointed out that these two documents do not expressly establish that ISPs in the U.S. were free to disclose data to which they had access; in fact they do not mention ISPs at all. The opponent itself has anyway acknowledged that there were restrictions on an ISP’s freedom to disclose the contents of e-mails read in transit imposed by the law of confidence, giving examples including the following:
an ISP administrator could reasonably expect no prohibition on passing the information in a press release to a friend, but a message sent from a managing director to his board of directors which included financial information about the company and a request to store paper copies in a locked cabinet would be deemed confidential. Accordingly, both the nature and context of the information transmitted had to be assessed before a lawful reader in transit (such as an ISP administrator) could decide whether the content of an email was deemed confidential and so to be treated as such.
The following excerpt from document D1 submitted by the opponent makes it clear that, at the filing date, ISPs in the U.S. were indeed prohibited by law, even though no specific legal basis is indicated, from disclosing certain information that they can access to third parties: Most ISPs are highly ethical and have the best interests of their customers at heart; however, there have been instances of less scrupulous ISPs taking advantage of the trust their users place in them. There was a case in San Francisco where an ISP was charged with multiple counts of intercepting email traffic between January and June 1998 from one of their business customers, namely Amazon.com, and forwarding the insider information contained therein to a competitor. They settled the case with prosecutors in November 1999. There have been other instances of this type of behavior, but these cases are frequently settled with relatively little press. his is not just limited to small ISPs however, in the case of a large ISP it is much more likely that it is a renegade employee intercepting messages than the ISP itself, but the ease of interception is just the same. The question therefore is whether the board should draw upon the opponent’s proposal to assess the content of the information transmitted and its context in order to decide whether an e-mail should be deemed confidential, 1372 | 3398
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thereby implying a duty, based on the law of confidence, for an ISP to keep its content secret (in the OPs the parties said that breach of confidence might amount to a tort, but did not enter into greater detail). Where content and context of the information transmitted suggested no such duty, then the ISP would be free to pass it on to anybody (referred to by the opponent as the “proportionality” test; see below, under point (b)(i)) . Then the information would have to be considered publicly available within the meaning of A 54(2) EPC 1973. In dealing with this topic, the board, as stated, assumes arguendo that any ISP involved in the transit of e-mail C5 was indeed able, at a relevant date before the filing date, to assemble the various e-mail packets into a complete email and to search e-mails on the basis of keywords. The opponent’s submissions obviously imply that it was generally not unlawful for U.S. ISPs to intercept e-mails, and the following analysis is based on this assumption. (b) The board’s position regarding the opponent’s approach The board is not convinced that the opponent’s proposal reflects the right approach. (i) The lack of relevance of intent Content and context cannot be considered to be decisive for determining whether an e-mail is to be treated as confidential. Content and context thus cannot serve as a basis for drawing a distinction between e-mails with publicly available and non-available content. This follows from the considerations below. The “proportionality” test suggested by the opponent is not convincing. In reality, this is a (binary) threshold test, i.e. whether the information attains a certain threshold of confidentiality, so the person reading it lawfully would decide that he was not permitted to disclose it. (Given that “proportionality” is the relationship of two variables whose ratio is constant, a genuine proportionality test would establish the degree of disclosure permitted to be made depending on the degree of confidentiality.) In determining whether that threshold has been reached, the content and context would be decisive because they would make it possible to identify the sender’s intent […]. The patentee also expressly suggested relying on intent to assess confidentiality. Consequently, this test involves a subjective element for determining whether an e-mail is to be treated as confidential and thus, under the law of confidence, in the parties’ submissions, is prohibited from being disclosed. The decision of the Enlarged Board of Appeal in case G 1/92 [2.1], however, meant to exclude a subjective element from the assessment of novelty. Novelty thus implies an entirely objective assessment. This must take into account the nature of e-mail communication as point-to-point or point-to-multipoint transmission, not to the public at large, and the ISPs’ role as transmission facilitators, not forwarders of single messages to indiscriminate addressees. For that reason alone the e-mails that ISPs can access must be treated as one single set of confidential messages. Given that, according to the opponent’s submissions, the law of confidence (whatever the specific rules may be) prohibits their disclosure, the e-mails must all be deemed to be non-public, unless a specific instance of divulgation has been proven. Therefore, in this context, there is no need to assess any impact of disclaimers indicating confidentiality of e-mail content, no matter how they are phrased (e.g. whether personal to the sender or added automatically). In addition, an intent-based approach would on balance not be more practical, as the patentee contends, than identifying the e-mail route and the law in the territories traversed. This is because such an approach would involve a large grey area where intent could not be readily identified. What about, for instance, company financial information presented like a press release, but confidential? Furthermore, a person lawfully reading an e-mail would have to know the applicable specific rules of the law of confidence in order to be able to decide whether or not disclosure of the content of a specific e-mail was lawful. The board wishes to point out that the considerations under this point (i) not only apply to ISPs in the U.S. but .also to individuals intercepting e-mail traffic lawfully anywhere in the world. This scenario has not been taken into consideration above in relation to the E.U.-15 and the U.S. because the parties considered that interception was prohibited in those territories (see point 4.7.3 (b) above). Thus, even if in the U.S. (or elsewhere in the world) it had been lawful for the public at large to intercept e-mails before the filing date, then they would have had to make the’same assessment as ISPs to ascertain whether the e-mail in question had been intended by its author to be kept confidential. Because of this necessarily subjective element that G 1/92 had sought to exclude, e-mail traffic as a whole must be rated confidential. It is also for this reason, in addition to those given above, at point [4.7.3 (c)], that C5 does not form prior art because an individual might have lawfully intercepted it. from the Internet. (ii) ISPs being in a situation analogous to that of an NDA
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The board notes that, in exploring the issue of public prior use in T 809/95, the board deciding that case addressed the question of whether the persons who had tested the allegedly prior used product had had an interest of their own in secrecy. In this regard, the board relied on T 830/90 [3.2.2]. The present board takes the view that, where such a party’s own interest in secrecy can be established, then the situation will be analogous to that of a nondisclosure agreement between the parties involved. In this respect, the board considers that, at the date of transmission of C5 (or C3) before the filing date of 1 February 2000, independent of any applicable data protection and privacy or tort law, there generally was an expectation not only among e-mail users in the E.U., where, according to the opponent, stricter rules applied than in the U.S., but also among many e-mail users in the U.S., that not only e-mail messages which a lawful reader could rate as confidential, but also those that were clearly non-confidential would not be freely forwarded to third parties, irrespective of any legal prohibition against doing so. As already mentioned, the two documents “Opinion 1/99” and “Data protection” are silent as to ISPs’ duties relating to data protection and privacy. Furthermore, the opponent, while referring to “typical terms and conditions in an ISP contract” has not provided any such boilerplate agreement. The opponent has therefore not established that, even assuming freedom to forward a non-confidential e-mail to anybody for lack of prohibition under data-protection and privacy law, or tort law relating to confidence, an ISP was likewise allowed to pass on e-mails to third parties for lack of prohibition by contractual provisions. Nor has the opponent proven that, in the absence of such contractual provisions, there was also no general expectation on the part of e-mail users that ISPs would not forward emails. It would have been for the opponent to adduce appropriate evidence to that effect. Again, it is not for the board to make enquiries as to the state of the pertinent U.S. law and practice at the date of transmission of C5. Given that forwarding e-mails to third parties might be detected, this might hurt the ISP’s reputation, which in turn would bring about the danger of losing customers. The board therefore concludes that an ISP had a business interest of its own in keeping secret the e-mails to which it had access. On the other hand, the board does not deny that there may have been several possible ways for ISPs to exploit email content that might not have been frowned upon by many customers in the U.S. An example may be the use of e-mail content for drawing up profiles of the consumption habits of holders of e-mail accounts and selling those profiles to advertisers for targeting email senders with advertising corresponding to those habits. Obviously, however, from such profiles no advertiser could derive the content of a specific e-mail such as C5. In conclusion, applying the rationale derived from T 809/95 and T 830/90, the ISP’s identified business interest in keeping e-mails secret creates a situation analogous to that of a non-disclosure agreement between the ISP and its customers. The fact that an ISP, through staff members instructed accordingly, might lawfully have read emails in transit has not therefore made those e-mails publicly available, independent of whether or not there were legal provisions (of data-protection and privacy law, or tort law) prohibiting the forwarding of those e-mails. Regarding the role of ISP employees acting on their own behalf, the board notes the following. As indicated in the above quote from the document “Data Protection” there may be renegade ISP employees passing on e-mails to third parties. To that extent the considerations above relating to ISP companies apply mutatis mutandis. Employees also have a business interest in keeping the e-mails secret, because otherwise their companies and themselves might have to face severe consequences and thus ISP employees might lose their jobs. Nothing more need be said here, and nothing more can be said failing access to copies of typical employment contracts between ISPs and their employees which the opponent has not furnished. (c) Conclusion In the light of the above findings made under the assumption that U.S. ISPs were entitled to lawfully intercept emails transmitted over their networks, email C5 has not become publicly available for that reason alone if it passed via the U.S. The opponent would have had to prove a specific instance of disclosure of that e-mail. The situation in the E.U. (a) Disclosure by ISPs [4.8.2] As a preliminary matter the board notes that since lawful access to e-mails by U.S. ISPs at the filing date did not put e-mails into the public domain, this must be true a fortiori for the E.U. on the basis of the opponent’s submissions, according to which U.S. ISPs had greater leeway than E.U. ISPs in dealing with e-mail content that
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had been lawfully intercepted. It is therefore only for the sake of completeness that the board will now discuss below the opponent’s submissions on the E.U. situation. The opponent argued that, as in the U.S., no general prohibition to intercept e-mail applied to ISPs in the E.U.-15 at the filing date of 1 February 2000. Article 5 of Directive 97/66/EC prohibited interception within the E.U. “except when legally authorised”, i.e. in accordance with Article 14(1) of that Directive (the pertinent part of which is reproduced above, at point [4.7.3(c)]). Administrators at an ISP would routinely access random e-mails to check that ISP policies were being complied with or address technical issues or comply with government requests. ISPs in the E.U.-15 were not generally allowed to disclose e-mail content. However, it was likely that at least one ISP administrator in the E.U. had not inferred any duty of confidence from the content and context of the e-mail C5 Hence, the content of e-mail message C5 had to be deemed made available to the public. The board has already dismissed the analogous reasoning in relation to U.S. ISPs above under points 4.8.l(b), which applies mutatis mutandis. As for the situation in the E.U.-15. the board in addition refers to its discussion of Article 8(1) ECHR in the context of interception by a member of the public, at point [4.7.3 (c)] above. here the board concluded that the right to the protection of private life and correspondence may be interpreted as requiring the adoption of measures prohibiting the violation of individuals’ rights by other individuals by the interception of their e-mails sent over the Internet, subject to the exceptions mentioned in Article 8(2) ECHR. The board is of the opinion that Article 8(1) ECHR also requires the adoption of measures prohibiting the disclosure by ISPs, independent of content and context, of e-mails which, under these exceptions, they may have lawfully intercepted. In this context the board recalls that, pursuant to Article 5 of Directive 97/66/EC, E.U.- 15 “Member States shall ensure via national regulations the confidentiality of communications by means of a public telecommunications network and publicly available telecommunications services.” The board is of the opinion that ISP employees must generally be considered to be law-abiding, i.e. to heed legal prohibitions of disclosure of e-mails, until the opposite has been proven in a specific case. Under these circumstances. to establish disclosure of an e-mail to the public by ISPs in the E.U., the above-mentioned legal situation lends additional weight to the conclusion that it would have been for the opponent to prove a specific instance of such disclosure. (b) Disclosure by law-enforcement personnel As for the-situation in the E.U., the opponent not only relied on ISPs’ lawful activities, but also on those of lawenforcement personnel. In the OPs, the opponent focused on exceptions in Directive 97/66/EC for law enforcement, arguing that, in this respect, the “proportionality” test applied to the prosecutor issuing requests to an ISP, not to ISP personnel. The opponent more specifically referred to the situation in the U.K. under the Regulation of Investigatory Powers Act (RIPA) concerning encryption. These submissions are based on document 09 […], where it was stated that the RIP Bill was introduced in particular “to comply with the new Human Rights Act” (see 09, second paragraph of section 7, at page 53). The British Chamber of Commerce (BCC) expressed concerns that interception under RIPA having been lawful (i.e. permitted by Directive 97/66/EC) there was a potential danger that critical company information could be published. According to 09 (at point 7, first full paragraph), the regulatory intents regarding encryption were first mentioned in 1996, but Royal Assent to RIPA was given only in July 2000. The filing date of the patent in suit is 1 February 2000. The board therefore is at a loss to see how RIPA could conceivably be of relevance for the present case. It is therefore needless to say that more than 10 years had passed since adoption of RIPA when the opponent first relied on RIPA in its submission of 11 March 2011, without providing any indication as to whether the BCC’s misgivings were justified in the light of experience with interception on the basis of RIPA. Favourably for the opponent, the board still supposes that law-enforcement authorities in both the U.K. and the other fourteen Member States of the E.U. on 1 February 2000, were, under certain circumstances, entitled to request ISPs to intercept non-encrypted information. In this respect, no evidence has been submitted as to which information would have been divulged in such circumstances. The board therefore considers that lawenforcement personnel must be presumed to have acted lawfully unless the opposite is proven in a specific case. ISPs outside the U.S. and the E.U.-15 [4.8.3] In the absence of pertinent submissions by the parties, the board assumes that the considerations made for U.S. ISPs apply mutatis mutandis. 1375 | 3398
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Conclusion [4.8.4] E-mail C5 has not become publicly available for the sole reason that an ISP in the U.S., in the E.U.-15 or in other territories of the world may have lawfully intercepted it and that in the E.U.-15 law-enforcement personnel may have lawfully obtained access to intercepted e-mails at their request. For a finding of public availability of e-mail C5 it would have been necessary for the opponent to establish that e-mail C5 had been disclosed by ISP or law enforcement personnel to the public in at least one single instance. The opponent however expressly confirmed in the OPs that it was not making such an assertion. Overall conclusion regarding claim 1 [4.9] Given the above findings, C5 does not form prior art, and from I2 alone the skilled person would not arrive at the subject-matter of claim 1 without an inventive step. The opponent has not based its challenge to inventive step on a combination other than I2 and C5. The subject-matter of claim 1 is thus inventive. The same applies to claim 2 which depends on claim 1. To download the whole decision or have a look at the file wrapper, click here. NB: I like the concise (French) summary of this decision on Le blog du droit européen desbrevets.
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Some Stats
Some Stats 21 Apr 2012
We have not had any new decisions on the DG3 webpage for more than one month. If Laurent had not found the recent “test case” decisions, this blog would already have shut down by now. There is only one who creates ex nihilo, and I am not Him. So I will content myself with giving you feed-back on the recent polls on who the readers of this blog are. The first poll concerned the professional context of my readers. 292 readers participated in the poll. Here is the outcome, sorted in decreasing order.
and a (condensed) pie chart:
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Some Stats
What I find interesting is that private practice is much stronger than industry. Of course, one has to take into account that there are more EP attorneys working in private practice than in industry. I have not been able to find precise figures, but I have heard that in the epi, there are twice as much private practice attorneys than industry attorneys. If this is true, industry is still under-represented. I am happy and honoured to see that EPO employees are interested in this blog, too. I knew that two or three Board members were regular visitors, but that there were not less than 16 members of the Boards is a pleasant surprise. Even more surprisingly, there are a few foreign attorneys among the readers of this blog. *** The second poll concerned the “technical field of predilection” of my readers. 256 readers participated in the poll. Obviously, it was possible to give more than one answer, and most people did: on average, there were 1.9 fields cited per participant. Here is the outcome:
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Some Stats
The poll confirmed my impression that the biotech community was quite well represented. But the biggest surprise to me was the great number of chemists among the readers of this blog. The other fields are more or less evenly distributed.
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T 1553/06 – Direct And Unambiguous Access
K’s Law – The ebook
T 1553/06 – Direct And Unambiguous Access 20 Apr 2012
This test case led to an interesting discussion of whether and under which conditions a document that could be accessed via the Internet was indeed available to the public within the meaning of A 54. The Boards love things that are “direct and unambiguous”. The present decision is expected to revive the notion of “direct and unambiguous access”. If you do not want to have all the details, you might jump to the proposed test, which is found towards the end of the extract that follows.
Background [6.1] The opposition division, in the decision under appeal, considered that document I1 formed part of the state of the art and anticipated the subject-matter of claim 1. In this respect, the board notes that document I1 includes (nearly identically) the wording of claim 1 according to the main request, together with pertinent parts of the description. I1 was allegedly found on the Internet on 15 November 1999 at the URL http://www.gironet.nl/home/morozov/CIE/DISPLAY_DEVICE. Document I2 comprises the whole of document 11, together with an appended text portion, i.e. (nearly identically) the wording of claim 2 according to the main request (without the reference to claim l), together with parts of the description pertaining to that claim 2. The patentee referred to I2 as apparently being an update of 11. I2 was allegedly found on both 12 and 31 January 2000 under the same URL as 11. According to both parties, that URL no longer exists. In the light of the foregoing the only novelty-related issue for the subject-matter of claim 1 is whether the content of 11, i.e. I1 and the corresponding part of 12, constituted prior art within the meaning of A 54 EPC 1973 at the filing date. Pursuant to paragraph 2 of that provision: The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application. According to the case law of the boards of appeal, information is “available to the public” if only a single member of the public is in a position to gain access to it and understand it, and if said member of the public is under no obligation to maintain secrecy (see T 1081/01 [5], affirmed by T 1309/07 [3.2.1]). Whether or not a member of the public has actually accessed the information is irrelevant (see T 84/83 [2.4.2]) . Whether the content of I1 forms prior art because it was communicated to the opponent’s representative [6.2] The parties admitted that there was a substantial level of co-operation between them and other professional representatives in order to create a test case. For the board, this explains why it was possible that Mr Mooij, the representative of the opponent DSM IP Assets B.V. and also of DSM N.V. (DSM Patents & Trademarks) at whose request notarial records were drawn up, submitted the documents now referred to as I1 and I2 within the framework of third-party observations under A 115 EPC 1973. According to the notarial records I1 was found on the Internet on 15 November 1999 and I2 on 12 and 31 January 2000, i.e. before the filing date of the patent application from which the present patent originates. Mr Mooij’s access to the documents, now referred to as I1 and 12, before the filing date, however, did not put these into the public domain. This is because a non-disclosure agreement (NDA) not to divulge the respective information had been concluded. According to the patentee’s remarks in the oral proceedings (OPs) before the board, which the opponent did not contest, that agreement was binding, among others, for Messrs Cohen (patentee’s representative), Mooij (opponent’s representative) and de Vries (professional representative involved in the preparation of the test case) until publication of the patent application (which took place on 7 June 2000). The then applicant also mentioned in its letter of 10 October 2000 in the proceedings up to grant that “both Mr de Vries and Mr Mooij were bound to [sic] a non-disclosure agreement pertaining to the subject-matter of the present European patent application” […]. 1380 | 3398
T 1553/06 – Direct And Unambiguous Access
K’s Law – The ebook
Whether the content of I1 existed on the Internet Technical background and definition of terms [6.3.1] In their written and oral submissions, the parties have used technical terms such as “Internet”, “Web”, “webpage”, “URL” and “web search engine”. In order to avoid any confusion and to facilitate the reader’s understanding of the technical issues, these and other technical terms of the decision will now be defined and briefly explained. The following explanations refer to the situation at the time of the alleged publication of documents I1 to I4 i.e. between 15 November 1999 and 31 January 2000. The “Internet” is a global system of interconnected computer networks which communicate via a standard Internet protocol suite (TCP/IP). The “World Wide Web”, also commonly referred to as “the Web”, is a network of interconnected documents or information resources on the Internet, containing text and/or multimedia information. The terms “Internet” and “Web” are thus not equivalent, the Web being only a part of the Internet. Other parts of the Internet include, for instance, the infrastructure to support “electronic mail” (commonly known as “e-mail”). A “webpage” is a document or information resource which is stored on the Web and can be accessed, for instance, via a “web browser”. In order to access and display a webpage an Internet user can enter the “Uniform Resource Locator (URL)” of the webpage in a web browser or click on a “hyperlink” leading to that webpage, the URL forming a specific address at which the webpage can be found on the Web. Alternatively, in particular when the URL is not known to the user, a webpage of interest can be found by entering a search query (typically one or more keywords) in a “web search engine”. The web search engine then returns a list of webpages which match the entered keyword(s). A webpage can only be found via a web search engine by entering keywords if the search engine knows its URL and has indexed the webpage with keywords. There are basically two ways in which a webpage can become known to a web search engine: (1) someone, usually the creator or administrator of the webpage, supplies its URL to the search engine (it is common ground between the parties that the creator or administrator can also supply keywords to the search engine); or ( 2 ) the webpage is discovered by one of the “web crawlers” of the search engine. Web crawlers are computer programs which explore the Web in a methodical, automated manner. A common way for a web crawler to discover an unknown webpage is by following a hyperlink present on a known webpage which points to (the URL of) the unknown page. Once the URL of a webpage is known to the search engine, the webpage is accessed and indexed based on keywords generated by the search engine from the text (including hidden text known as “meta tags”) of the webpage. The notarial records and the parties’ agreement [6.3.2] The board notes that the opponent, in support of its contentions that I1 and I2 existed on the Internet, filed originals of the corresponding notarial records A1 (for 11) and A2 and the notarial record in T15 (both for 12) during the OPs. These records certify that I1 and I2 could be found on the Internet at certain dates and times after entering certain strings of keywords for each of them (see the details above, under point 11). Each of these originals bears the signature and stamp of a Dutch notary public, and I1 and I2 were attached to the associated notarial record(s). Both A1/11 and A2/12 and the notarial record of T15/12 were bound in one folder each. In addition, the patentee, in reply to a question by the chairman in the OPs, confirmed that I1 and I2 could be accessed on the basis of keywords. The board considers the parties’ statements to be credible given that this is a test case and the existence of I1 and I2 is a precondition for enabling the board to deal with the gist of the test case. Conclusion on whether the content of I1 existed on the Internet [6.3.3] In the light of the foregoing the board considers that the opponent has proven beyond reasonable doubt that I1 and I2 could be found on the Internet at the dates and times indicated in A1, A2 and the notarial record in T15 after entering the strings of keywords mentioned in these notarial records. Contrary to the opponent, the board regards the terms “beyond reasonable doubt” and the more colloquial term “up to the hilt” as being equivalent. […] Given that both parties agree that I1 and I2 existed on the Internet at the dates and times indicated in the notarial records, the question as to whether the reported requirements of the French courts for Internet disclosures […] would, in the absence of such agreement, have to be fulfilled (in the present case they are not) for acknowledging proof beyond reasonable doubt may therefore be left an open one. The same applies to the more general question as to the proper standard of proof. Whether the content of I1 forms prior art because the notary actually found it on the Internet 1381 | 3398
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[6.4] As stated, it has been proven that a Dutch notary public found I1 on 15 November 1999 and, again, as part of 12, on both 12 and 31 January 2000 on the Internet on the basis of certain keyword strings. However, the board does not consider that the content of I1 was divulged to the public by the fact that the notary public had seen it before the filing date. This is because from the test nature of the present case it must be concluded that the notary was under a duty to keep this content confidential. Otherwise the test case would be largely moot. According to the opponent (reasoning against its case) it might be argued that the notary was not “the public”. Firstly, there was no evidence that the notary was a skilled person i.e. someone who would understand the content of what he found. Secondly, arguably, a notary would have a duty of confidence to keep all information obtained in a professional context secret. The opponent also maintained that it would be for the patentee to show that the notary was not a member of the public and, in the absence of pertinent evidence, the notary was. The board disagrees that the notary was a member of the public. The board wonders, in relation to the opponent’s second point above, how the burden of showing that the notary acting on behalf of DSM N.V. (DSM Patents & Trademarks) had a duty of confidence could conceivably be upon the patentee. The notarised documents I1 and I2 were furnished by the opponent, DSM IP Assets B.V. Given the co-operation between the parties in this test case and the non-disclosure agreement mentioned above, the board considers it highly unlikely that the opponent’s representative, who also acted for DSM N.V. (DSM Patents & Trademarks), would have left it up to the notary’s discretion to decide whether or not to divulge the contents of I1 and I2 supposing arguendo the notary was not bound by professional rules or public law not to divulge them. This would have rendered the test case in relation to I1 and I2 largely moot. The opponent’s contentions in this respect are therefore not intelligible. As the board considers that the notary was not entitled to disclose the content of 11, as included in I1 and 12, the opponent’s first point whether the notary had the technical knowledge to understand that content is of no relevance. Whether the content of I1 forms prior art for the sole reason that I1 or I2 existed on the Internet Introduction [6.5.1] Regarding public availability of a disclosure the case law has distinguished a number of concepts. In T 952/92 [2.1] the board found : whatever the means of disclosure (written description, oral description, use, etc.), availability in the sense of Article 54(2) EPC involves two separate stages: availability of the means of disclosure, and availability of information which is accessible and derivable from such means. (emphases added) The board made this statement in conjunction with a quote from G 1/92 [1.2] : A 54(2) EPC [1973] does not make any distinction between the different means by which any information is made available to the public. Thus, information deriving from a use is governed in principle by the same conditions as is information disclosed by oral or written description. The board in T 952/92 also said: In other words, the disclosure of a written description is the information which a skilled person can learn by reading it, the disclosure of an oral description is the information that a skilled person can learn by hearing it, and the disclosure of a product which has been used is the information that a skilled person can learn from it, either visually or by analysis for example. In this regard, the board deciding on the present case draws attention to the fact that the parties and a number of board decisions quoted from in the present decision sometimes use the term “information” as a synonym for “means of disclosure”. In the patentee’s view it is the Internet that forms the means of disclosure in the present case, and the Internet must be exposed to deliberately chosen specific external conditions, i.e. a very special set of keywords, must be submitted, to find I1. This exercise constitutes “undue burden” as referred to in G 1/92, which excludes public availability of I1. (This view is analysed at point [6.7.2] below.)
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The board notes as a preliminary observation that G 1/92 deals with the availability of information which is accessible and derivable from (the use of) a commercially available product. The availability of the means of disclosure, i.e. the availability of the product itself, however, is not in question in G 1/92. As to the availability of the means of disclosure, the question of whether I1 forms prior art for the sole reason that it existed on the Internet, i.e. independent of whether it could be found by using keywords or by guessing the URL, logically precedes the question whether I1 became publicly available because it could be found on the basis of keywords or its URL. As a consequence, the board will start by considering that it is not the Internet but I1 itself that forms the means of disclosure. The board will first explain the case law on the availability of written disclosures which does not rely on G 1/92. Thereafter the board will analyse whether G 1/92 is also relevant for dealing with the question of availability of the means of disclosure, independent of whether that means is a product (as in G 1/92) or a written description or any other means of disclosure and, if so, what is the impact of G 1/92 on the availability of document I1 and I2, allegedly found on the Internet. Finally, the board will compare the results of both enquiries and answer the question in the heading. The case law on the public availability of written descriptions [6.5.2] According to the EPO publication “Case Law of the Boards of Appeal of the EPO”, 6th edition, 2010, at I.C.1.8., referring to T 444/88, “Board of appeal case law has established that the theoretical possibility of having access to information renders it available to the public” . (emphasis added) T 444/88 [3.1] dealt with a situation where, in the course of grant proceedings, additional example was introduced in an application document already available to public inspection. The board held that that example shared the fate of that document and was also “made available to the public” was not necessary as a matter of law that any member the public had to be aware that the example was introduced into the document, and therefore was available for inspection on request. It was sufficient that the document was in fact available to the public before the priority date of the patent in suit, whether or not this was known by any member of the public, and whether or not any member of the public actually inspected the document. In the same vein it was considered in T 1127/00 [9] that “It is established jurisprudence of the Boards of Appeal … [citing the 4th edition of the “Case Law”, at I.C.1.6, 421 that the theoretical possibility of having access to information renders it available to the public.” Moreover, the decision in case T 381/87 dealing with an article in a scientific journal may be seen as also expressing this view. Headnote 3 starts with the phrase: If a document in a library “would have been available to anyone who requested to see it” on a particular day, such fact is sufficient to establish that the document was “made available to the public” on that day. In the decision the board said (see point [4(4)(b)]) : It is not necessary as a matter of law that any members of the public would have been aware that the document was available upon request on that day, whether by means of an index in the Library or otherwise. It is sufficient if the document was in fact available to the public on that day, whether or not any member of the public actually knew it was available, and whether or not any member of the public actually asked to see it. Nevertheless, two other decisions, i.e. T 314/99 and T 186/01, in the board’s analysis, did not accept that a mere theoretical possibility of having access to a means of disclosure rendered it available to the public. In T 314/99 the board was prepared to take the view that D6, a diploma thesis, arrived in the archive before the relevant priority date (see point [5.4.4]) but also said that: However, in the Board’s judgment D6 did not by its mere arrival in the archive become publicly available, since that did not mean it was as of that point in time catalogued or otherwise prepared for the public to acquire knowledge of it, and because without such means of information the public would remain unaware of its existence. [5.5] … the possibility that the public could acquire knowledge or awareness of the existence of D6 is a precondition of its public availability before the priority date of the patent in suit. [5.6] 1383 | 3398
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In T 186/01 [4] the board held that : … the accessibility to the library for the public is not proven. D10 [an internal work report by the German Federal Institute for Agriculture (“Bundesforschungsanstalt fur Landwirtschaft”)] did not by its mere arrival in the archive become publicly available, since that did not mean that it was as of that point in time catalogued or otherwise prepared for the public to acquire knowledge of it, and because without such means of information the public would remain unaware of its existence. However, the possibility that the public could acquire knowledge or awareness of the existence of D6 is a precondition of its public availability before the priority date of the patent in suit (see T 314/99 [5.1-6]). As to the above case law, the board questions that the three decisions cited in favour of a mere theoretical accessibility being sufficient were cases in which the document was only theoretically accessible:
in T 444/88, if an application document is already available for public inspection, the public will assume that it may be amended, e.g. by introducing an additional example; in T 1127/00 [8] the document in question was an article published in a scientific journal. The nominal publication date was one day before the (relevant) second priority date of the patent in suit, a Thursday, and members of the public could purchase a copy of the journal from the editorial office on and after the Wednesday of each week in which it was published; in T 381/87, the journal in question was issued regularly, and it was possible for an interested member of the public to ask for the latest issue (see point [4(4)(b)(ii)]). Opinion G 1/92 (a) Background
[6.5.3] Even though G 1/92 only relates to the availability of information which is accessible and derivable from the (use of) a commercially available product, in T 165/96 the board did rely on G 1/92 in dealing with the question of availability of the means of disclosure. The board held that information was “available” once members of the public could theoretically become aware of it. The case dealt with technical information in an insert in a minor small-ads newspaper (circulation: 24000) distributed in the suburbs of Copenhagen. The patentee had argued that the publication should not be regarded as directly available to the public without undue burden relying on G 1/92. On this argument the board noted that the patentee’s interpretation would introduce into the consideration of novelty precisely that subjective element which in G 1/92 the Enlarged Board (EBA) had sought to exclude. That argument was therefore not valid. Taking this holding at face value, one might conclude that the mere existence of I1 on the Internet was sufficient to make it become publicly available because, after all, members of the public could also theoretically become aware of it. In order to find out whether such a conclusion is warranted, the board will proceed to an analysis of G 1/92.
(b) The answer given by G 1/92 The referral to the EBA concerned the interpretation of the requirement “made available to the public” in relation to the prior use of a commercially available product. As stated, the decision deals with the availability of information which .is accessible and derivable from a commercially available product as a means of disclosure, not with the availability of the means of disclosure (i.e. the product itself). The EBA answered the questions put by the President of the EPO as follows: 1. The chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition. 2. The same principle applies mutatis mutandis to any other product. (emphases added) (c) Undue burden In the Reasons for its opinion, the EBA made some “general remarks on the kind of information which can be derived from the public use of products for the purpose of the application of the requirement ‘made available to the public’ in A 54(2).” The EBA inter alia said: 1384 | 3398
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[1.4] … Where it is possible for the skilled person to discover the composition or the internal structure of the product and to reproduce it without undue burden, then both the product and its composition or internal structure become state of the art. 2. There is no support in the EPC for the additional requirement … that the public should have particular reasons for analysing a product put on the market, in order to identify its composition or internal structure. … It is the fact that direct and unambiguous access to some particular information is possible, which makes the latter available, whether or not there is any reason for looking for it. 2.1 The introduction of such an additional requirement would … obviously represent an element of subjectivity leading to uncertainty in applying the concept of novelty as defined in … A [54(2) EPC]. (emphases added) In this respect, the board in T 952/92 [2.2] noted that the reference in opinion G 1/92 to the term “without undue burden” was not strictly necessary for providing an answer to the referred questions, and therefore could not have been intended to alter or add to the existing law concerning what constituted “the state of the art”. The concept of reproduction of a product “without undue burden” was traditionally associated with the question of “sufficiency” of a description of an invention in a patent specification. The concept of reproducibility “without undue burden1’ had also been extended by analogy to cases concerning novelty, where a prior document described a product such as a chemical compound which was the subject of a claim in a patent. Such a description of a product did not render the product “available to the public” if a skilled person was unable to make the product, using his common general knowledge and “without undue burden” (in other words, in the absence of an “enabling disclosure”). The board in T 952/92 went on to say: However, the extension of application of the concept “without undue burden” from reproduction of what has been described in a prior document to the discovery of what is not yet known about a previously sold product (namely, its composition or internal structure) would involve very different considerations, and the Board does not accept either that that was intended by the EBA in opinion G 1/92, or that it is legally correct. … In the Board’s view, to apply the concept of “without undue burden” to the determination of the composition or internal structure of a prior used product which cannot be ascertained visually (for example by analysis) would introduce a subjective element into the determination of novelty, which was specifically rejected by the EBA in opinion G 1/92 … On the contrary, … in the Board’s view it is the fact that direct and unambiguous access to information concerning the composition or internal structure of a prior used product is possible, for example by means of analysis, which makes such composition or internal structure “available to the public” and thus part of the state of the art for the purpose of A 54(2). If such an analysis is possible in accordance with the known analytical techniques which were available for use by a skilled person before the relevant filing date, the composition or internal structure thereby is available to the public. … the analysis by a skilled person of a product which has per se been “made available to the public” by means of prior sale for example, using available analytical techniques, can be considered as equivalent to the reading by a skilled person of a written description in a document which has per se been “made-available to the public”. The likelihood or otherwise of such a skilled person either reading such a written description, or analysing such a prior sold product, and the degree of burden (i.e. the amount of work and time) involved in such reading or analysing, is in principle irrelevant to the determination of what constitutes the state of the art. (emphases added) The board in T 952/92 thus held that the phrase “without undue burden” G 1/92 [1.4] quoted above did not govern the “discovery” of the composition or internal structure, but only its reproduction. (d) No “element of subjectivity” As indicated above, in T 165/96 dealing with technical information in an insert in a minor small-ads newspaper the patentee relying on G 1/92 had argued that the publication should not be regarded as directly available to the public without undue burden. The board rejected this argument considering that the patentee’s interpretation would introduce into the consideration of novelty precisely that subjective element which in G 1/92 the EBA had sought to exclude. The EBA had rejected an additional requirement that the public should have particular reasons for analysing a product in order to identify its composition or internal structure because the introduction of such an additional requirement would represent “an element of subjectivity leading to uncertainty in applying the concept of novelty as defined in … A [54(2) EPC].” The present board’s position 1385 | 3398
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[6.5.4] As discussed above under point [6.5.1], in T 952/92 [2.1] the board found that: whatever the means of disclosure (written description, oral description, use, etc.), availability in the sense of Article 54(2) EPC involves two separate stages: availability of the means of disclosure, and availability of information which is accessible and derivable from such means. (emphases added) The present board agrees with this statement. Moreover, in the present board’s view, and in line with T 165/96, as the EBA ruled that applying the concept of novelty must not depend on an element of subjectivity, such element must not only be excluded in determining the availability of information which is accessible and derivable from a means of disclosure, such as the composition or internal structure of a commercially available product, but also in the preceding stage of determining the accessibility of such means. In both situations the degree of burden involved is in principle irrelevant to the determination of what constitutes the state of the art. The board considers that this principle does however not mean that theoretical access to the means of disclosure is sufficient, as stated in T 165/96. In line with the decisions referred to above, under point [6.5.2], what is decisive is the practical possibility of having access to the means of disclosure. More specifically, this view can be derived from decisions T 314/99 and T 186/01 and is not contradicted by T 444/88, T 1127/00 and T 381/87. The board bases its stance on the assumption that if the public, in practice, remains unaware of the existence of a certain means of disclosure or has no access to the means of disclosure, then there is no reason to deny a patent applicant or patentee a patent in return for the divulgation to the public of the information embodied in that means of disclosure, subject to the remaining patentability requirements being fulfilled. In addition, considering theoretical access to be sufficient would make it possible to hide documents on the Web, which would nevertheless belong to the state of the art. Such documents may be referred to as hidden publications. These could be an attractive tool for some to put the success of a patent application or the validity of a patent into question. This is because it would be in the hands of the authors of hidden publications to unearth them at their whim. This would jeopardize legal certainty. The board therefore recognises a public policy interest in preventing hidden publications. The considerations in the preceding paragraph do not run counter to the analogy made in the second paragraph of the present point [6.5.4] between determining the availability of information which is accessible and derivable from a means of disclosure, such as the composition or internal structure of a commercially available product, and determining the accessibility of such means, with the degree of burden involved being in principle irrelevant in both situations. Indeed, where practical access is not possible, this can be likened to the composition or internal structure of such a product not being discoverable by known analytical techniques and thus not being regarded as “made available to the public” because no “direct and unambiguous access” to it is possible. For the above reasons the board considers that the requirement of “direct and unambiguous access”, set out in G 1/92 and T 952/92, should apply not only to access by the skilled person to information concerning the composition or internal structure of a commercially available product, but also to access by at least one member of the public to the means of disclosure. In the case of the World Wide Web, given its enormous size, the fact alone that a document exists there does not go beyond mere theoretical accessibility. In order to conclude that the document is available to the public, it must further be established that direct and unambiguous access to it by known means and methods is possible. Conclusion on whether the content of I1 forms prior art for the sole reason that I1 or I2 existed on the Internet [6.5.5] It follows from the above that the mere fact that I1 and I2 existed on the World Wide Web is not sufficient to consider them as having been made available to the public. Until it is established that direct and unambiguous access to them by known means and methods was possible before the filing date, the access remains only theoretical and therefore does not meet the requirement of “made available to the public” within the meaning of A 54(2) EPC 1973. The board will now examine whether direct and unambiguous access to I1 or I2, and thus to the content of I1, was possible. Whether direct and unambiguous access to I1 or I2 was possible on the basis of their URL [6.6] The (identical) URL of webpages I1 and 12, i.e. the character string
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http://www.gironet.nl/home/morozov/CIE/DISPLAY_DEVICE, represents a specific address indicating where to find I1 and 12 on the World Wide Web. In other words, the URL reveals the access path to I1 and 12. As explained under points [6.2] and [6.4] above, this character string was not disclosed, either orally or in written form, before the filing date of the patent in suit to any person not bound by confidentiality, i.e. to a person outside the group of people consisting of those involved in setting up the test case and the notary public. The URL of I1 and 12, however, was known to the web search engine AltaVista. Therefore the question arises whether a member of the public could have had direct and unambiguous access to this URL (and to I1 and 12) via AltaVista. This question will be discussed by the board in section [6.7] below. Prior to that discussion, the board must also consider the possibility, submitted by the opponent, that the URL could have been guessed with some basic IT skills and a few attempts. If so, the URL might have provided direct and unambiguous access to I1 and 12. The board cannot exclude that there might be URLs which are so straightforward, or so predictable, that they could readily be guessed exactly and thus be regarded as providing direct and unambiguous access to the webpages at those URLs. However, this is conceivable only in exceptional cases. Otherwise, access to the content stored at the URL will only be theoretical, which, as found in section [6.5] above, is not sufficient for considering that content to be publicly available. The board does not consider it to be straightforward for a member of the public, even one with IT skills, to guess the full URL http://www.gironet.nl/home/morozov/CIE/DISPLAY_DEVICE. Guessing the term “morozov”, at any rate, would by no means be straightforward without knowledge of the terms in the URL. In the light of the foregoing, the board concludes that guessing the URL of I1 and I2 did not provide direct and unambiguous access to I1 and 12, and thus did not make these documents, and thereby the content of 11, available to the public. For the sake of completeness, the board observes that the situation in which a URL must be guessed in order to access a webpage is analogous to the situation in which access to a document is protected by a password which members of the public have no means of obtaining except by guessing. Whether direct and unambiguous access to I1 was possible because it could be found on the basis of keywords How I1 could be found by entering keywords [6.7.1] I1 was found on 15 November 1999 on the basis of the keyword string “CATHODE RAY TUBE and GRID and THREE ELECTRON BEAMS and PHOSPHOR” in the AltaVista search engine. This is regarded as proven in view of notarial record A1 and of the fact that the patentee does not dispute it (see points [6.3.2] and [6.3.3] above). The content of I1 was again found as part of I2 on the basis of
the keyword string “THREE CATHODES and PHOSPHOR SCREEN and CONVERGENCE” in the AltaVista search engine on 12 January 2000 (regarded as proven; see points [6.3.2] and [6.3.3] above) and the keyword string “CATHODE RAY TUBE and GRID and THREE ELECTRON BEAMS and PHOSPHOR” in the AltaVista search engine on 31 January 2000 (regarded as proven; see points [6.3.2] and [6.3.3] above).
Given that I1 could be found on the basis of keywords, I1 must have been indexed. The parties agree that I1 was indexed […]. The patentee’s analogy to G 1/92 [6.7.2] As mentioned above, at point [6.5.1], in the patentee’s view it is the Internet that forms the means of disclosure in the present case. The patentee denied that document I1 was made publicly available due to the fact 1387 | 3398
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that it could be found on the basis of keywords. The patentee contended that in order to reveal the contents of documents I1 and I2 one needed to expose the Internet to a very particular interaction, viz. in the form of submitting a very special set of keywords or a particular character string as the URL of the document on the Web. Here the patentee drew an analogy with the exposure of a product to a deliberately chosen specific external condition which revealed particular properties of that product. In such a situation the information in point was considered in opinion G 1/92 of the EBA not to be available to the public. This opinion indicated that the requirement “made available to the public” was satisfied provided that there was direct and unambiguous access to particular information which made the latter available. In the present case, an analysis under specifically chosen circumstances of the Internet to derive the features of the claims as granted would constitute undue burden. The board has already elaborated extensively on the criterion “undue burden” above, under point [6.5.3(c)]. In respect of the patentee’s submissions on the exposure to interaction with specifically chosen outside conditions, the board draws attention to the proviso of G 1/92 [3], which relates to “a commercially available product”: It may be added that a commercially available product per se does not implicitly disclose anything beyond its composition or internal structure. Extrinsic characteristics, which are only revealed when the product is exposed to interaction with specifically chosen outside conditions, e.g., reactants or the like, in order to provide a particular effect or result or to discover potential results or capabilities, therefore point beyond the product per se as they are dependent on deliberate choices being made. Typical examples are the application as a pharmaceutical product of a known substance or composition (cf. A 54 ( 5 ) EPC [1973]) and the use of a known compound for a particular purpose, based on a new technical effect (cf. G 2/88). Thus, such characteristics cannot be considered as already having been made available to the public. This passage was interpreted by another board as follows (see T 301/94 [3.6]):
Item 3 of opinion G 1/92 refers to the use of a known compound for a particular purpose, based on a new technical effect as defined’ in G 2/88, and it is stated in this context that such characteristics cannot be regarded as having already been made available to the public when the compound itself is available to the public. The situation considered by the EBA … concerns a claim relating to a new use of a known compound reflecting a newly discovered technical effect and not a claim to the compound itself. It is the new technical effect which constitutes a hidden or secret feature, not the composition itself or one component thereof. (emphases added) In the board’s opinion, the patentee’s view that there is an analogy between the need to submit a set of keywords, whether “very special” or not, to a search engine and the exposure of a product to an external condition as dealt with in G 1/92, cannot be accepted for the following reasons. Whether the World Wide web can be regarded as a product in the sense of G 1/92 As a preliminary matter it should be recalled that G 1/92 deals with the composition or internal structure of a commercially available product, such as a chemical product or a mechanical or electrical article. One condition for this composition or internal structure to be state of the art is that it can be analysed and reproduced by the skilled person. In contrast thereto, the World Wide Web (the relevant part of the Internet in the present case) is essentially a global repository of interconnected documents stored in electronic form. In other words, the Web could be viewed as an enormous library of electronic documents. Assimilating the Web (or a library) to a commercially available product in the sense of G 1/92, is thus already prima facie far-fetched and, in the present board’s judgement, goes beyond the intent of the EBA in G 1/92. Moreover, in contrast to that of a “normal” commercially available product considered in G 1/92, the composition or internal structure of the Web constantly changes, in fact in fractions of a second, making it impossible in practice to discover at any given time its whole composition or internal structure by using known analytical techniques. For these reasons, the board cannot accept the patentee’s argument that the Web should be regarded as a product in the sense of G 1/92 and that documents found on the Web by entering keywords would be akin to revealing extrinsic characteristics pointing beyond that product per se. It follows that the patentee’s analogy of the exposure of the Web to a very special set of keywords with the exposure of a product to a deliberately chosen specific external condition has no object. 1388 | 3398
T 1553/06 – Direct And Unambiguous Access
K’s Law – The ebook
Can a specific test be defined? [6.7.3] As explained under section [6.5] above, the mere fact that a document existed on the World Wide Web is not sufficient to consider it as having been made available to the public. Unless it is established that direct and unambiguous access to it was possible before the filing or priority date, the access remains only theoretical and therefore does not meet the requirement of “made available to the public” within the meaning of A 54(2) EPC 1973. Keyword(s) unrelated to the essence of the content of the document In the board’s view, the fact that a document could be found with the help of a public web search engine by using one or more keywords does not automatically allow to conclude that direct and unambiguous access to that document was possible. This is a consequence of the fact that it is possible to store a document on the Web in such a way that it is indexed by a public web search engine only with (one or more) keyword(s) unrelated to the essence of the content of the document, thus making it impossible to find it by entering only keywords related to the essence of the content of the document. The following fictitious two examples illustrate such a situation. In a first example, an electronic image file containing a description of an improved television receiver is stored on a new webpage created at a hitherto unknown URL. The arbitrary character string “lk8zhd94j87hir” is attached as a keyword to the webpage, either as a title or as a meta tag. The creator of the webpage then supplies the URL to a public web search engine. The search engine follows the URL and indexes the webpage with the only keyword available i.e. “lk8zhd94j87hir”. It should be noted that the text of the description of the technical product is not detected by the search engine because it is stored as an image (i.e. as pixels, not as alphanumeric characters) and thus is not recognised as text by the search engine (assuming that the search engine does not perform optical character recognition (OCR) on the image). In the above example, the description of the improved television receiver could be found via the search engine, but only by using the keyword “lk8zhd94j87hir” which, clearly, has nothing to do with the television receiver. The description of the improved television receiver would therefore be theoretically accessible by entering keywords, but impossible to find in practice. In a second example, the facts are the same as in the first example except that the word “adoxography” (a late 19th-century word meaning “skilled writing on an unimportant subject”) is used instead of the arbitrary character string “lk8zhd94j87hir”. Although “adoxography”, in contrast to “lk8zhd94j87hirU, is a known word, it still has nothing to do with a television receiver and thus it would be at least questionable whether direct and unambiguous access to the technical content of the description of the improved television receiver was possible if it was only established that the document was found by entering the keyword “adoxography” in the search engine. Time period during which the document remained accessible Another important factor which must be considered in the case of a document stored on the World Wide Web is the length of time during which the document remained accessible. A document stored at a given URL may be deleted at any time by its owner/creator. It is thus technically possible to store a document at a given URL only for a very short period of time. In order for the requirement of “direct and unambiguous access” to be met, it is thus a necessary condition that a document stored at a given URL on the Web remain accessible there for a sufficiently long period of time. Indeed, too short a period of time would effectively make it impossible to access the document. The minimum amount of time required for allowing direct and unambiguous access by a member of the public to a document must be assessed on a case-by-case basis, taking into account all the circumstances of the case. Conclusions and proposed test In the light of the above considerations, the board considers that the fact that a document stored on the World Wide Web could be found by entering keywords in a public web search engine before the priority or filing date of the patent or patent application is not always sufficient for reaching the conclusion that “direct and unambiguous access” to the document was possible. That conclusion may be correct in most cases but, under certain (unusual) circumstances, it may not be. 1389 | 3398
T 1553/06 – Direct And Unambiguous Access
K’s Law – The ebook
However, where all the conditions set out in the test below are met, the board is of the opinion that it can be safely concluded that a document stored on the World Wide Web was made available to the public. This test is defined as follows: If, before the filing or priority date of the patent or patent application, a document stored on the World Wide Web and accessible via a specific URL (1) could be found with the help of a public web search engine by using one or more key words all related to the essence of the content of that document and (2) remained accessible at that URL for a period of time long enough for a member of the public, i.e. someone under no obligation to keep the content of the document secret, to have direct and unambiguous access to the document, then the document was made available to the public in the sense of A 54(2) EPC 1973. As to this test, the board draws attention to the following:
If any of conditions (1) and (2) is not met, the above test does not permit to conclude whether or not the document in question was made available to the public. In such a situation, in particular where condition (1) is not met, it must be examined on a case-by- case basis whether there were other circumstances possibly providing direct and unambiguous access to the document, such as a written or oral disclosure of the URL, the presence of the URL (e.g. in a hyperlink) on a webpage available to the public, the document being accessible via a public web search engine not using keywords as search inputs (e.g. based on similarities between images), publication of the document in a Web-based discussion forum, etc.
The questions of whether keywords are related or unrelated and whether the period of time was long enough will have to be determined in any single case and cannot be described beforehand in abstract terms.
As A 54(2) EPC 1973 does not make any distinction between the different means by which any information is made available to the public, the board does not deem it necessary to make an enquiry as to whether a document stored on the Web that meets the conditions of the above test falls under one of the means expressly mentioned in A 54(2), such as “written description”. In any case, such a document will have been made available to the public “in any other way” . The parties’ suggestions
[6.7.4] The following suggestions by the parties for devising a test on public availability of a document existing on the world Wide Web cannot be accepted.
Number of different keywords required The patentee suggested that it was necessary that not just one specific search string led to a certain webpage, but that a number of different (sets of) keywords did. The board does not consider it to be necessary to add as a criterion that more than one specific (set of) keyword(s) should lead to the document in question. Such a criterion would not add much to the test and would not do away with the need for assessing the keyword string on a case-by-case basis. The criterion is vague because it does not say how many possible strings would have to be there, in which way the keywords would have to differ, etc. Hidden publications could still be created on the basis of a number of different intricate search strings. Apart from that, the several search strings would have to be used at the same time because the Web content constantly changes.
Intent of the submitter relevant
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T 1553/06 – Direct And Unambiguous Access
K’s Law – The ebook
As for the intent of the submitter that both parties suggested was an important criterion, in the board’s opinion, it is sufficient to recall that the EBA, in G 1/92, specifically rejected introducing a subjective element into the determination of novelty. Thus the intent-based argument must be dismissed on its face. Other suggestions by the patentee on how to assess content submitted to the World Wide Web cannot be accepted either for the following reasons.
In-tray If the test set out in previous section [6.7.3] is complied with, there will be no analogy between submitting information to the World Wide Web and sending information to an (albeit electronic) in-tray. Contrary to what the patentee contended, the information will then, by analogy, have to be considered as having been delivered to the public.
Permission to publish Nor will there be an analogy to the permission to publish (the patentee had cited T 842/91 in this respect). If the conditions of the above test are met, then the document will be considered as actually published. Application of the test to I1
[6.7.5] In the present case, document I1 was found with the help of the public web search engine AltaVista on the basis of keywords. (a) The keywords were related. As mentioned above at point [6.7.1], I1 was found with AltaVista on 15 November 1999 on the basis of the keyword string “CATHODE RAY TUBE and GRID and THREE ELECTRON BEAMS and PHOSPHOR” and the content of I1 was found again at the same URL as part of the content of I2 with the same keyword string on 31 January 2000 and on the basis of the different keyword string “THREE CATHODES and PHOSPHOR SCREEN and CONVERGENCE” on 12 January 2000. The keywords used in each of those two strings were all related to the essence of the content of I1. This fact is not in dispute; it was acknowledged by the patentee during the OPs. (b) The period of time during which I1 was accessible was largely sufficient I1 was found on 15 November 1999 and on 12 and 31 January 2000 (I2 including 11) so that the board considers that I1 and I2 existed on the Web at the same URL for two and a half months and nearly three weeks, respectively. Both periods are obviously largely sufficient for a member of the public to have direct and unambiguous access to I1 and 12. It does not have to be decided whether the same result would have been achieved on the basis of the present keywords if it could be established that I1 could be found by search engines for a short period of time only, such as a period of less than 20 minutes on one particular day, as allegedly in the case of document I4. As for the parties’ submissions emphasising the importance of the point in time after the filing or priority date until which documents must be found on the Internet in order to be considered as reflecting the situation for retrieving a document at the filing/priority date, the board is at a loss to see how this could be an issue in relation to document I1. I1, like the other documents I2 to I4 relied on as prior art in the present proceedings, were all retrieved before the filing date. Finally, a member of the public (e.g. not the notary or the persons involved in setting up the test case) who could have found I1 on the Internet before the filing date was under no duty to keep the information embodied in I1 secret. (c) Conclusion Against the backdrop of the above findings, the board considers that the test established in previous section 6.7.3 is complied with in relation to document I1 so that I1, as a means of disclosure, was made available to the public before the filing date of the patent in suit. Since the information derivable from I1 could be directly and 1391 | 3398
T 1553/06 – Direct And Unambiguous Access
K’s Law – The ebook
unambiguously accessed by merely reading I1 (i.e. the information was not encrypted or otherwise rendered inaccessible), it was also made available to the public. Since document I1 discloses all the features of claim 1 in combination, the subject-matter of claim 1 lacks novelty. The main request can therefore not be allowed. To
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T 1553/06 – Friendly Fire
K’s Law – The ebook
T 1553/06 – Friendly Fire 19 Apr 2012
Le blog du droit européen des brevets has reported on two recent (still to be published) decisions on a test case built by two Dutch companies working together in the study committee for intellectual property of VNO-NCW, the Confederation of Netherlands Industry and Employers. The decisions are quite voluminous and cannot possibly be dealt with in a single post. A first aspect, which is discussed in both decisions, is related to the very fact that the oppositions opposed two parties that were not really opposed to each other. Can such proceedings be considered to be contentious? Here is what the Board had to say on this topic: The case law of the Enlarged Board of Appeal (EBA) [1.1] […] For the board it follows from the decisions of the EBA delivered in cases G 9/93 and G 3/97 that it is a condition for an opposition to be admissible that the opposition proceedings thereby instituted are contentious. In G 9/93 [1] the EBA said: ... [I]n G 9/91 and G 10/91 ... the EBA held that in view of their special post-grant character, opposition proceedings under the EPC are in principle to be considered as contentious proceedings between parties normally representing opposing interests. (emphasis added) Against this backdrop the EBA judged that: the patent proprietor is not covered by the term “any person” in A 99(1) EPC [1973] and is therefore not entitled to oppose his own patent under that provision. (see ibid., at point 3 in fine). The EBA’s ruling in G 3/97 dealt inter alia with the question of whether an opposition filed by an indirect representative (“straw man”) was admissible. The EBA decided (see the order) that: 1(a): An opposition is not inadmissible purely because the person named as opponent according to R 55(a) EPC [1973] is acting on behalf of a third party. 1(b): Such an opposition is, however, inadmissible if the involvement of the opponent is to be regarded as circumventing the law by abuse of process. 1(c): Such a circumvention of the law arises, in particular, if: the opponent is acting on behalf of the patent proprietor … (emphasis added) [In] G 3/97 [4.1] the EBA explained in this respect that: Attention has already been drawn to the decision in G 9/93 … Here, it was decided that the patent proprietor is not entitled to oppose his own patent, since opposition proceedings are contentious and the opponent must therefore be a person other than the patent proprietor. This in itself requires no further comment. However, if the patent proprietor employs a straw man, then the latter, too, is representing the patent proprietor’s interests. The identification of the straw man as opponent according to Rule 55(a) EPC [l9731 does nothing to alter the fact that the person who is formally a party to the proceedings is on the patent proprietor’s side. From this it follows that in this situation, too, the proceedings are not contentious. The employment of the straw man merely serves to conceal this circumstance and to circumvent the legal consequences arising from it. The action of the opponent on behalf of the patent proprietor therefore renders the opposition inadmissible. (emphases added) The present board cited the above case law of the EBA in its communication annexed to the summons to oral proceedings (OPs). It would add what the EBA said in G 3/97 [5] on proof-related issues: The burden of proof for a straw man objection is to be borne by the person raising the issue, i.e. the patent proprietor or, in the case of an objection by the Office of its own motion, the relevant EPO department. 1393 | 3398
T 1553/06 – Friendly Fire
K’s Law – The ebook
Regarding the standard to be applied in assessing evidence, it must be remembered that any person is entitled to file an opposition. Withholding this legal entitlement from anyone requires a particular justification, which cannot be based on a mere balance of probabilities. Instead, before considering an . opposition to be inadmissible, the deciding body has to be satisfied, on the basis of clear and convincing evidence, that the law has indeed been circumvented in an abusive manner by the employment of a straw man. The opponent’s assertions [1.2] In its reply of 11 March 2011 to the board’s communication, the opponent relied on the following arguments to establish the admissibility of the opposition […]:
that oppositions were “contentious proceedings” was not a general principle, the parties satisfied the criteria for “contentious proceedings”, VNO-NCW (the Confederation of Netherlands Industry and Employers) did not control either party, co-operation between parties’ representatives did not make proceedings non-contentious, there would be undesirable consequences from a ruling of inadmissibility. Analysis
[1.3] On the basis of the parties’ submissions, the board cannot find a circumvention of the law by abuse of process in the sense mentioned above, i.e. because the opponent acted on behalf of the patent proprietor. In their submissions in reply to the board’s communication annexed to the summons, both in writing and in the OPs before the board, the parties admitted that they co-operated on a test case that arose out of a discussion in the study committee for intellectual property of VNO-NCW. It was only by these submissions that the parties informed the board of the test case. They may have conveyed pertinent information to the first instance as long ago as in 1998, as they contend. Yet the board, in its preparation of the file for the OPs, which is reflected in the communication annexed to the summons, found no hint of the parties having provided express information to the EPO that this was a test case. Rather, as follows from the facts enumerated in said communication under the section dealing with the admissibility of the opposition, the opposite would have to be concluded from the file as it stood at that time. As for the prosecution of the test case, the parties agreed that the opponent was not bound by any instructions from either the patentee or the study committee. The board has no reason to cast doubt on these submissions. The fact that a test case was created does not necessarily imply that the various submissions made as part of it must have been under the control of one party (or of both parties jointly). A further question is whether the opposition proceedings are not contentious because of the very fact that the parties defended their positions within the framework of a test case in order to obtain answers from the board to specific legal questions, i.e. whether and under what conditions disclosures via the Internet constitute prior art within the meaning of A 54 EPC 1973. The board is of the opinion that the prosecution of the opposition proceedings was contentious, as required by G 3/97, because the parties defended mainly opposing positions. The fact that the parties defended their positions within the framework of a test case and will obtain answers from the board to certain specific legal questions is immaterial in this regard. Therefore the opponent’s challenge to the soundness of the requirement of contentious proceedings established in G 3/97 need not be afforded any consideration. From the above analysis the board concludes that the opposition is admissible. […] To download the whole decision or have a look at the file wrapper, click here.
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T 1265/09 – Final Call
K’s Law – The ebook
T 1265/09 – Final Call 18 Apr 2012
The present appeal was filed against the rejection of an opposition by the Opposition Division (OD). Claim 1 of the main request (and of the patent as granted) read: A method, using a computer, of determining an efficient schedule for a plurality of scheduled agents in a telephone call center, each of the plurality of scheduled agents having a combination of defined skills and wherein the plurality of scheduled agents may be organized into skill groups each including all scheduled agents having a particular combination of skills, comprising the steps of: (a) generating net staffing data per call type defining, for each time interval to be scheduled, an estimate of a difference between a given staffing level and a staffing level needed to meet a current call handling requirement; (b) generating skills group availability data per call type defining, for each combination of skill group and time interval to be scheduled, an estimate of a percentage of scheduled agents from each skill group that are available to handle a call; (c) using the net staffing data and the skills group availability data to generate a schedule for each of the plurality of scheduled agents; (d) running a call handling simulation against the schedule; (e) adjusting the net staffing data and the skills availability data as a result of the call handling simulation, and (f) repeating steps (c)-(e) until a given event occurs. The Board found this claim to lack inventive step. The decision contains an interesting discussion on which features had to be taken into account in the A 56 assessment. [1.1] It is established case law that an invention which consists of a mixture of technical and non-technical features is to be assessed with respect to the requirement of inventive step by taking account of all those features which contribute to the technical character of the claimed subject-matter, whereas features making no such contribution cannot support the presence of an inventive step, see, e.g. T 641/00 [4], T 154/04 [5], and T 1284/04 [3.1]. [1.2] In the present case it was common ground between the parties that in claim 1 as granted the feature “using a computer” gave the claimed method a technical character. The board agrees and refers to T 258/03 [4.5 to 4.7]. The question which remains is whether or not claim 1 as granted includes any further features which contribute to the technical character of the claimed subject-matter. [1.3] The board notes that the claimed method does not result in any technical effects which relate to the operation of the telephone call center referred to in the claim, which would otherwise contribute to the technical character of the claimed method, since the claim is directed to a method of determining a schedule for a plurality of agents in a telephone call center and not to a method of operating a telephone call center. In fact, as pointed out by the [patent proprietor] in the letter dated 7 December 2011, the claimed method can even be carried out before the telephone call center is implemented. Since, apart from the reference to a telephone call center, the only other technical device implicitly or explicitly referred to in the claim is the computer, any technical effect must be sought in connection with the operation or functioning of the computer itself. [1.4] Looking now at each of the features of claim 1 in more detail, the board notes the following: Apart from using a computer, the first paragraph of claim 1 […] merely recites the aim of the method, namely that of determining an efficient schedule for a plurality of scheduled agents in a telephone call center. This merely defines a business aim, since it does not necessarily imply any technical effects or technical features in connection with the computer used. The remaining features of the first paragraph of the claim merely concern certain capabilities of the agents (“skills” and “skill groups”). Neither do steps (a) to (c) of claim 1 as granted imply any technical effects or technical features in connection with the computer, or even merely the use of the computer, since these steps do not exclude that the net staffing 1395 | 3398
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K’s Law – The ebook
data, the skills group availability data, as well as the schedules for the agents are manually generated on the basis of a given number of agents, their skills and availability, and the number of calls expected for each time interval. The same considerations apply, mutatis mutandis, to the step of adjusting given net staffing skills availability data, cf. step (e). The board notes that the above understanding of claim 1 is in accordance with the patent description, since it suggests that a representative computer for implementing a preferred method is a general purpose computer including a general purpose operating system (“a personal computer or workstation platform that is Intel x86-, PowerPC®- or RISC®-based”, which includes “an operating system such as Windows’95, Windows® NT, IBM® OS/2®, IBM AIX®, Unix or the like”, and “the various methods described are conveniently implemented in a general purpose computer selectively activated or reconfigured by software” […]. [1.5] In the letter dated 7 December 2011, the [patent proprietor] argued that a telephone call center was a “complex physical system” which involved “hundreds or thousands of agents” with “hundreds or thousands of skill combinations” and “thousands of incoming calls”. Consequently, it would have been impossible to manually carry out the method steps, including the above steps (a) to (c) and (e). The board notes however that the claim does not define any technical details of the telephone call center which would imply a system as referred to by the [patent proprietor]. Hence, in the board’s judgement, the claimed method does not imply that a computer is used in each of the method steps. [1.6] As to step (d) the board notes that carrying out a call handling simulation per se does not necessarily imply technical features, since it encompasses imitating a call handling in any suitably analogous situation at an abstract level. However, taking into account that the claim specifies that a computer is used and giving the wording “running a ... simulation” in step (d) of claim 1 the meaning it normally has in the relevant art, step (d) and, consequently, step (f) are understood as implying the use of the computer in order to repeatedly run a call handling simulation against the schedule. Nevertheless, apart from the implied use of the computer, the claim does not specify any features of the call handling simulation in terms of its technical implementation, which might otherwise have implied, for example, a special computer architecture, a special computer functioning, or other technical effects which would have implied technical features of the computer. Hence, steps (d) and (f) essentially specify nothing more than the repeated running on the computer of what may be a given computer application program, in this case a call handling simulation program, without necessarily implying a specific technical operation or functioning of the computer itself. [1.7] The board therefore concludes that only the use of a computer, more specifically the repeated running of a call handling simulation program on the computer, contributes to the technical character of the claimed method. Consequently, only this feature is to be taken into account in examining inventive step of the claimed subjectmatter. [1.8] For examining inventive step, the board follows the well-established “problem-and-solution approach”, according to which an invention is to be understood as a solution to a technical problem. Further, again in accordance with the well-established case law, where a claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met, cf. T 641/00 [7] and T 154/04 [15-16]. [1.9] In view of the above considerations, in the present case the technical problem to be solved may be formulated as technically implementing a method of determining an efficient schedule for a plurality of scheduled agents in a telephone call center, each of the plurality of scheduled agents having a combination of defined skills and wherein the plurality of scheduled agents may be organized into skills groups each including all scheduled agents having a particular combination of skills, in which the method includes the steps of: (i) generating net staffing data per call type defining, for each time interval to be scheduled, an estimate of a difference between a given staffing level and a staffing level needed to meet a current call handling requirement; (ii) generating skills group availability data per call type defining, for each combination of skill group and time interval to be scheduled, an estimate of a percentage of scheduled agents from each skill group that are available to handle a call;
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T 1265/09 – Final Call
K’s Law – The ebook
(iii) using the net staffing data and the skills group availability data to generate a schedule for each of the plurality of scheduled agents; (iv) carrying out a given call handling simulation against the schedule; (v) adjusting the net staffing data and the skills availability data as a result of the call handling simulation, and (vi) repeating steps (iii)-(v) until a given event occurs. [1.10] The formulation of this problem does not contribute to an inventive step, since it is a common aim to technically implement, preferably automate, processes of various kinds, including business schemes. [1.11] Since it was common general knowledge at the priority date to use a computer in order to carry out processes of various kinds in various fields, including processes by which a given business aim is to be achieved, it would have been obvious to the person skilled in the art, when faced with the above technical problem, to use a computer and, hence, to implement the call handling simulation as a computer application program, in order to technically implement the above-mentioned method. The skilled person would thereby without exercising inventive skill arrive at a method in which a computer is used for the repeated running of the call handling simulation program and, hence, would arrive at a method which includes all the features of claim 1 as granted. [1.12] The board notes that in the decision under appeal, the OD stated that “Following the Guidelines C-IV, 2.3.6 and Decision of the Board of Appeal T 1173/97 (OJ 10/1999,609) the subject-matter has a technical character since the method is capable of bringing about, when running on a computer, a further technical effect which goes beyond the normal physical interaction between the program and the computer, namely the management of the resources i.e. the call agents to achieve an optimal call distribution.” Subsequently, when examining inventive step, the OD defined the objective problem to be solved as “how to facilitate the production of high quality schedules to make it easier to manage call centers that use skills-based routing in their ACDs.” and stated that this problem was solved by steps b) to f) of claim 1. The board notes however that the requirement of bringing about a further technical effect as developed in T 1173/97 concerns the particular case of a computer program claimed by itself (T 1173/97 [6]), whereas present claim 1 is directed to a method. It is well-established case law that a clear distinction is to be made between a claim to a computer program, i.e. a sequential set of instructions, on the one hand, and the corresponding computer-implemented method, on the other hand (see G 3/08 [11.2.4-9]) and T 424/03 [5.1]. The reasoning given by the OD, which resulted in all features of claim 1 being taken into account in assessing inventive step, is therefore not convincing. [1.13] In connection with, inter alia, the main request, the [patent proprietor] argued that all the features of claim 1 had to be taken into account in assessing inventive step, since the claimed invention provided a technical solution to a technical problem. The computer simulation was a technical tool used in order to efficiently design the telephone call center. All steps were carried out automatically in order to obtain the preferred results. This was a technical process, as opposed to a non-technical idea. The claimed invention solved the problem of providing a mechanism to facilitate the production of high-quality schedules to make it easier to manage call centers that use skill-based routing in their ACDs and to enable an efficient use of the call center resources, in particular staffing levels, network resources (trunk load), while providing the desired level of customer service. Similar to case T 1227/05, the claimed invention was a computer simulation of a real-world system, which enabled the real-world system to be optimised. In the present invention the optimum arrangement could be achieved before the call center was implemented, similar to the use of the simulation of the circuit in T 1227/05 before the circuit was fabricated. By analogy to case T 1227/05, in the call center environment modelled by the claimed invention the incoming calls were the signal, the random arrivals of the calls was the noise, and the call center, including its agents and telecommunications equipment (e.g. trunks and other hardware and software), was the circuit. Since all features of the claim contributed to the simulation and thereby to the production of the efficient schedule, all features had to be taken into account in the assessment of inventive step. The board notes however that the mere fact that a claim defines subject-matter which provides a technical solution to a technical problem does not necessarily imply that all features of the claim have to be taken into account in assessing inventive step. As stated above, see point [1.1], it is established case law that an invention which consists of a mixture of technical and non-technical features is to be assessed with respect to the 1397 | 3398
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requirement of inventive step by taking account of all those features which contribute to the technical character of the claimed subject-matter, whereas features making no such contribution cannot support the presence of inventive step. Further, in the present board’s view, the circumstances of the present case differ significantly from those of T 1227/05. In that case the invention related to a computer-implemented method for the numerical simulation of a circuit under the influence of 1/f noise, in which the dynamics of a physical variable of the circuit, e.g. an electric voltage, were simulated. The independent method claims specified the steps of generating a noise vector, which represented the 1/f noise, in which these steps resulted in a resource-efficient computer simulation of a circuit under the influence of 1/f noise (Reasons, [1.2-3]). The board held that beyond its implementation, a procedural step may contribute to the technical character of a method only to the extent that it serves a technical purpose of the method and, further, it held that a simulation of a circuit subject to 1/f noise constitutes an adequately defined technical purpose for a computer-implemented method, provided that the method is functionally limited to that technical purpose (Reasons, [3.1]). The claimed methods were held to meet these conditions because, firstly, they concerned an adequately defined class of technical items, namely a circuit with input channels, noise input channels and output channels, the performance of which was described by differential equations, and, secondly, the stated purpose, namely the simulation of a circuit subject to 1/f noise, was established in the further steps of the claimed methods, according to which random numbers were generated, which actually introduced 1/f noise into the circuit simulation, thereby functionally limiting the claims to the simulation of a noise-affected circuit (Reasons, [3.1.1-2]). The board therefore concluded that all steps relevant to the circuit simulation contributed to the technical character of the simulation method and, hence, had to be taken into account in assessing inventive step (Reasons, [3.2.4,4]). In the present board’s view, it follows from T 1227/05 that steps relevant to a simulation of a technical item contribute to the technical character of the simulation method only if certain conditions, as cited above, are met. Leaving aside the question of whether these conditions are indeed sufficient to contribute to a technical character, the board notes that, in any case, these conditions are not met in the present case, since, in connection with the call handling simulation referred to in claim 1, the telephone call center and, in particular, its performance, are not further specified in the claim and, further, the claimed method does not define the further steps which actually result in the stated purpose, i.e. the call handling simulation. The [patent proprietor’s] arguments are therefore not convincing. [1.14] In view of the above, the board concludes that the subject-matter of claim 1 of the main request lacks an inventive step (A 52(1) and A 56). The patent was finally revoked. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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K’s Law – The ebook
T 1685/08 - Inexistent
T 1685/08 - Inexistent 17 Apr 2012
An opposition was filed on 21 November 2006 by Jochen R. (c/o Christophersen & Partner) in the name of the opponent (Gain Technologies). During the opposition proceedings Ulrich C. notified the Office by a letter dated 5 July 2007 that the association Christophersen & Partner (“Zusammenschluss 193”) had taken over the representation from Jochen R. The Opposition Division maintained the opposed patent in amended form. The decision was posted on July 2, 2008. The opponent lodged an appeal against this decision. The notice of appeal was signed by Ulrich C. On February 19, 2010, the representative of the patent proprietor informed the Board that the opponent might have gone out of business and might therefore no longer be in a position to pursue the appeal. On November 10, 2010, the representative of the patent proprietor informed the Board that it had come to his attention that Gain Technologies was not, and never has been a legal entity, but was a trading name registered as an “assumed” name by Plastic Moulded Technologies, Inc. On December 14, 2010, the representative of the opponent was requested to give notice whether or not the company and appellant Gain Technologies (still) existed and whether or not he still represented the opponent. On March 16, 2011, the representative responded that he had not been the representative of the opponent when the opposition was filed. In a communication dated April 1, 2011, the Board noted that the new representative, Ulrich C., and not Jochen R. himself, had notified the Office by a letter dated 5 July 2007 that his association had taken over all files from Jochen R. The Board expressed its provisional opinion that, since Ulrich C. was not an appointed representative of the appellant when the opposition was filed, at the time Jochen R. had filed the opposition he was not acting as a member of the association of Christophersen & Partner, but as the sole representative of the opponent. The Board further noted that Jochen R. was deemed to be authorised until the termination of his authorisation was communicated to the EPO, cf. R 152(8). However, this had not been confirmed by filing of the original and a copy of the authorisation of the new representative, as required by Article 1(2) of the Decision of the President of the EPO dated 19 July 1991 on the filing of authorisations (OJ EPO 1991, 408). Moreover, since under the circumstances severe doubts existed whether the appellant Gain Technologies was at present a legal entity (cf. R 76(2)(a) and R 41(2)(c)) and whether the new representative was entitled to act, Ulrich C. was requested to produce an authorisation within two months after the notification of this Communication, cf. Article 1(3) of the Decision of the PEPO dated 12 July 2007 on the filing of authorisations (OJ SE 3/2007, 128). The Board further stated: “If the authorisation was not in existence at the time the Notice of Appeal was filed, the appeal shall be deemed not to have been filed, cf. R 152(6), which stipulates that if a required authorisation is not filed in due time, any procedural steps taken by the representative, other than the filing of a European patent application, shall be deemed not to have been taken, without prejudice to any other legal consequences provided for by this Convention.” No reply was given within the set time limit.
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K’s Law – The ebook
T 1685/08 - Inexistent
The notice of appeal filed on 1 September 2008 was signed by Ulrich C. However, since no authorisation has been filed, there is no proof that the new representative was entitled to act on behalf of the appellant when the notice of appeal was filed. It follows that the notice of appeal, and therefore the appeal itself is deemed not to have been filed, cf. R 152(6). Consequently, the appeal did not come into existence and the appeal fee must be refunded (see T 323/87). To download the whole decision, click here. The file wrapper can be found here.
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T 117/09 – Ashtray Revisited
K’s Law – The ebook
T 117/09 – Ashtray Revisited 16 Apr 2012
The Guidelines, C-III 4.10, contain the famous “ashtray” example illustrating claim features consisting in results obtained by the claimed subject-matter: “The area defined by the claims must be as precise as the invention allows. As a general rule, claims which attempt to define the invention by a result to be achieved should not be allowed, in particular if they only amount to claiming the underlying technical problem. However, they may be allowed if the invention either can only be defined in such terms or cannot otherwise be defined more precisely without unduly restricting the scope of the claims and if the result is one which can be directly and positively verified by tests or procedures adequately specified in the description or known to the person skilled in the art and which do not require undue experimentation (see T 68/85). For example, the invention may relate to an ashtray in which a smouldering cigarette end will be automatically extinguished due to the shape and relative dimensions of the ashtray. The latter may vary considerably in a manner difficult to define whilst still providing the desired effect. So long as the claim specifies the construction and shape of the ashtray as clearly as possible, it may define the relative dimensions by reference to the result to be achieved, provided that the specification includes adequate directions to enable the reader to determine the required dimensions by routine test procedures …” The present decision on an appeal against the refusal of an application is interesting because it dwells on these notions. Claim 1 of the main request on file read: An antenna (100) comprising
a substrate (110) having a pair of oppositely directed surfaces, a source plane conductor (120) on one of said surfaces having a signal line connected thereto, a ground plane conductor (130) on another of said surfaces,
wherein said source plane conductor (120) is electrically isolated from said ground plane conductor (130), characterized in that each of said conductors (120, 130) has a slot (122, 132) extending therethrough for controlling directional variation in intensity of radiation emanating from said antenna (100), said slots (122, 132) being different and being sized and positioned relative to one another to reduce said intensity of radiation in a rear direction extending from said source plane (120) toward said ground plane (130). The Board found this claim to lack clarity: [3.1] Claim 1 concerns an antenna comprising, as structural features, a substrate, a source plane conductor on one surface of the substrate having a signal line connected thereto, a ground plane conductor on another surface of the substrate, the source plane conductor being electrically isolated from the ground plane conductor, each of the plane conductors having “a slot” extending therethrough, the slots being “different”. The claimed antenna is further defined by functional features. In particular, the slots are provided for controlling directional variation in intensity of radiation emanating from the antenna and are sized and positioned relative to one another to reduce the intensity of radiation in a rear direction extending from the source plane conductor toward the ground plane conductor. [3.2] From a semantic point of view, the expression “a slot” implies that each of the plane conductors has at least one slot. Such an understanding is supported, from a technical point of view, by the embodiment of Figures 3B and 4B of the published application, according to which the source plane conductor has two slots (122b, 122c), whereas the ground plane conductor has a single L-shaped slot.
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T 117/09 – Ashtray Revisited
K’s Law – The ebook
The Board notes that the appellant agreed with this understanding in writing […] and during the oral proceedings. [3.3] The arguments produced by the appellant are not convincing. [3.3.1] A 84 EPC 1973 requires that the claims define the matter for which protection is sought in a clear and concise manner and that the claims be supported by the description. R 29(1) EPC 1973 specifies that the matter for which protection is sought be defined in terms of the technical features of the invention. These requirements serve the purpose of ensuring that the public is not left in any doubt as to which subjectmatter is covered by a claim. Moreover, these requirements imply that a claim must be non-ambiguous and comprehensible for a skilled person, and that a claim must identify all the essential technical features of the invention, these being the features which are necessary in order to obtain a desired effect. The claimed features may be expressed in structural or functional terms, the latter case applying if, from an objective point of view, the features cannot otherwise be defined more precisely without unduly restricting the scope of the claim, and if the functional features provide instructions which are sufficiently clear for the skilled person to reduce them to practice without undue burden (T 68/85 [headnote]). However, an applicant cannot simply define a technical feature as it wishes. Rather, the objectively more precise form must be chosen (T 68/85 [8.4.2]). [3.3.2] In the present case, claim 1 of the main request results from a generalisation of the three disclosed embodiments (Figures 2; 3A, 4A; 3B, 4B; 3C, 4C).
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T 117/09 – Ashtray Revisited
K’s Law – The ebook
The Board agrees with the appellant that the extent of protection should not be unduly limited. The Board also agrees that the claim may include structural and functional features. Nevertheless, the claim must clearly define the subject-matter for which protection is sought. In the Board’s view, this is not the case, as may be seen from the following paragraphs. [3.3.3] As stated above, the expression “a slot” in claim 1 implies that each of the plane conductors has at least one slot. With this understanding, the feature that the slots are “different” causes a lack of clarity because the claim does not specify which particular slots on the source plane conductor and the ground plane conductor are indeed different. For example, the claim covers the case of plane conductors, each having an identical arrangement of different slots, wherein a given slot on the source plane conductor would differ or not from a slot on the ground plane conductor depending on which particular slots are considered. In the appellant’s view, the slot patterns in the plane conductors were “different” in that the slots were nonidentical and appropriately “sized and positioned relative to one another”. This may be. The appellant’s argument, however, does not remove the ambiguity mentioned above concerning which combination of slots is being considered. [3.3.4] In claim 1, the size and position of the slots are not defined structurally. They are defined instead by the effect of reducing the radiation intensity in the rear direction. The Board acknowledges the fact that a structural definition of the size and position of each slot of the patterns on the source plane conductor and the ground plane conductor would amount to an unduly limited extent of protection of the claim. However, the use of the expression “a slot” means that the claim covers innumerable arrangements of slots having any size and position, most of which are not at all envisaged by the description. Moreover, no evidence is provided in the application to conclude that all such arrangements would effectively permit the desired effect to be achieved. In other words, doubts exist as to whether this effect can readily be obtained for all of the possible arrangements of slots claimed. Although at least some arrangements of slots will undoubtedly give rise to the effect, in the absence of any indication of which slots have to be different and appropriately sized and positioned, the claim lacks clarity, notwithstanding its breadth.
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T 117/09 – Ashtray Revisited
K’s Law – The ebook
[3.3.5] Even the claimed effect of reducing the intensity of radiation in a rear direction extending from the source plane conductor to the ground plane conductor lacks clarity, because it is not stated with regard to what the intensity of radiation is reduced. [3.3.6] The example cited in the Guidelines, April 2010 (C-III 4.10) concerns an ashtray in which a smouldering cigarette end will be automatically extinguished due to the shape and relative dimensions of the ashtray. The latter may vary considerably in a manner difficult to define whilst still providing the desired effect. So long as a claim specifies the construction and shape of the ashtray as clearly as possible, it may define the relative dimensions by reference to the result to be achieved, provided that the specification includes adequate directions to enable the reader to determine the required dimensions by routine test procedures. In this example, it is clear which structural features have to be appropriately designed in order to achieve the desired effect. The relative dimensions of the ashtray may vary, but will always be such as to automatically extinguish a cigarette. In the present case, the specific structural features which have to be appropriately designed are not clear from the wording of the claim. With regard to a multi-slot antenna, no indication is given as to which of the many slots shall be designed so as to reduce rearward radiation intensity. [3.3.7] With regard to the jurisprudence cited by the appellant, the Board agrees that essential features may be of a very general character (T 630/93), and that the breadth of a claim covering several possibilities (T 523/91; T 688/91) or of a term contained in a claim (T 238/88) do not necessarily impair clarity. However, this jurisprudence does not invalidate the Board’s assessment mentioned above. In the present case, it is indeed possible to define the claimed subject-matter in clear terms on the basis of a generalisation of the embodiments of Figures 3A, 4A and 3C, 4C, which is supported by the description, entails a fair extent of protection and does not extend beyond the content of the application as filed (see claim 1 of the tenth auxiliary request). [3.4] In conclusion, claim 1 of the main request does not meet the provisions of A 84 EPC 1973. Therefore, the main request is not allowable. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 67/09 – Unseen So Far
K’s Law – The ebook
T 67/09 – Unseen So Far 14 Apr 2012
This is an appeal against the revocation of the patent by the Opposition Division (OD). The Board found the main request to lack inventive step and then discussed the admissibility of the auxiliary requests: *** Translation of the German original *** [4.1] At a very late stage of the appeal proceedings, i.e. about one month before the oral proceedings (OPs) before the Board, the [patent proprietor] has filed for the first time amended claims according to auxiliary requests 1 and 2, in which features from various dependent claims as well as features taken from the description were incorporated into claim 1 […]. There have not been claims with such amendments before, neither in the opposition, nor in the subsequent appeal proceedings. The [opponent] criticized those requests as being late-filed and requested that the Board should not admit them into the proceedings. [4.2] The main purpose of the inter partes appeal proceedings is to grant the adversely affected party – here: the patent proprietor – the opportunity to challenge the first instance decision. According to the Rules of proceedings of the Boards of appeal (RPBA, published in OJ EPO 2007, 536) the appeal proceedings shall be based on the statement of grounds of appeal and, in cases where there is more than one party, the reply [of the other party or parties]. The statement of grounds of appeal and the reply shall contain the parties’ complete case. (Article 12(1) and (2) RPBA). There is no right to have amended requests admitted at a later time; the admission is at the Board’s discretion. (Article 13 RPBA). According to the established case law, when exercising their duty of discretion regarding the admission of fresh requests, the Boards consider the complexity of the new submission, the state of the proceedings and the [need for] procedural economy. Among other things, a decisive criterion to be examined is the question of whether the amended claims of the fresh requests raise question the Board or the other parties may be expected to deal with without a postponement of the OPs. [4.3] In the present case the impugned patent was revoked during the first instance proceedings for lack of inventive step. About one month before the OPs before the Board the patent proprietor has filed for the first time amended requests 1 and 2 without there having been a change of the factual situation. Therefore, the Board is of the opinion that the [patent proprietor] could have filed auxiliary requests 1 and 2 together with the statement of grounds of appeal. As a consequence, the Board of appeal cannot endorse the opinion of the [patent proprietor] according to which the auxiliary requests were admissible because the amendments were essentially limited to a combination of granted claims the subject-matter of which had already been attacked during the first instance proceedings. In view of the fact that both during the proceedings before the OD and during the appeal proceedings only the patent as granted was object of the discussions, neither the Board nor the [opponent] had any reason to deal with the subject-matter of dependent claims when preparing the OPs, all the more as there had never been a request directed to them. Moreover, the amendments in claim 1 of auxiliary requests 1 and 2 raise further questions regarding inventive step, as now technical features related to the materials or the specific construction - such as the fact that the resistance layer is a nickel-chromium alloy layer that had been vapour-deposited or sputtered as a thin layer under vacuum, and that the resistance element is encapsulated (vergossen) with a flame-resistant insulation cement having high thermal conductivity in the heating block - have been incorporated into claim 1, which had never been a matter of considerable debate (im Fokus gestanden) in the impugned decision or in the appeal proceedings. These new questions arising in the context of inventive step cannot be answered without a detailed discussion and perhaps a different assessment of the prior art, which means that one cannot expect to have an appropriate discussion of the amended submissions of the [patent proprietor] during the OPs before the Board. [4.4] For the above reasons the Board exercises its discretion pursuant to Article 13(3) RPBA not to admit the late-filed auxiliary requests 1 and 2 into the proceedings. Should you wish to download the whole decision (in German), just click here. 1405 | 3398
T 67/09 – Unseen So Far
K’s Law – The ebook
The file wrapper can be found here.
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T 1056/09 – Side By Side Yet Independent
K’s Law – The ebook
T 1056/09 – Side By Side Yet Independent 13 Apr 2012
The appeal was against the revocation of the patent under consideration by the Opposition Division. Claim 1 of the main request on file read (in English translation): Microbicidal active substance concentrate, which in aqueous solution contains a) 5 to 30% by weight of at least one aliphatic, saturated mono- and/or dialdehyde comprising up to 8 carbon atoms and b) 0.1 to 30% by weight of at least one nonionic surfactant of the formula
wherein k is equal to 4 and R a saturated or unsaturated, linear or branched alkyl radical with 6 to 10 carbon atoms or one phenylalkyl radical with 10 to 18 carbon atoms, wherein the weight percentage contents refer to the total amount of the aqueous solution respectively and wherein the amount of non-ionic surfactants of the formula
wherein k represents a whole number from 2 to 8 and R a saturated or unsaturated, linear or branched alkyl radical with 6 to 10 carbon atoms or one phenylalkyl radical with 10 to 18 carbon atoms, is 0.1 to 30% by weight. The Board found the request to comply with the requirements of A 123 and A 84 and then examined its novelty: *** Translation of the German original *** [5.1] The [opponent] pointed out that the contents of document D1 destroyed the novelty of the claimed subjectmatter. In particular, the [opponent] referred to column 4, lines 12 to 14 of D1
according to which the amounts of aldehyde and alcohol in the disinfectant concentrate of this document and the amounts of aldehyde and surfactant in claim 1 overlap. Moreover, the [opponent] added that the alcohol of document D1 was structurally identical to the surfactants of claim 1 of the opposed patent (see column 3, lines 44 and 45).
Moreover, the [opponent] submitted that the surfactant of formula R-(O-CH2-CH2)k-OH, where k = 4 and R represents 8 carbon atoms, which was mentioned in claim 1 of the opposed patent, was disclosed in document D1. In column 3, lines 45 to 47 it is mentioned that this alcohol has a chain of 8 carbon atoms and that the
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T 1056/09 – Side By Side Yet Independent
K’s Law – The ebook
number of ethoxylate units in the alcohol can be 4. Therefore, the [opponent] excluded that the subject-matter of the main request was not novel (sic). [5.2] The [lack of ?] novelty of a chemical substance is only acknowledged when the features of the claimed substance in combination were disclosed in this very combination in a disclosure of the prior art. In the present case it was only contested that the group of surfactants of formula R-(O-CH2-CH2)k-OH, where k = 4 and R represents 8 carbon atoms, was disclosed in document D1. [5.2.1] The only relevant passage concerning the group of surfactants is found in column 3, lines 44 to 47. The skilled person can see from this passage that the length of group R can vary between 2 and 8 carbon atoms. The skilled person can also see that the number of ethoxylate units in the alcohol extends from 1 to 4. Nevertheless, contrary to the opinion of the [opponent], the Board considers that although both lists were listed (aufgeführt) side by side in the description of document D1, they are independent of each other. In other words, there is no indication in document D1 from which it can be derived that, when the group R contains 8 carbon atoms, there necessarily have to be 4 ethoxylate units in the alcohol of formula R-(O-CH2-CH2)k-OH (see Case Law of the Boards of appeal, 6th edition, I.C..4.1.1.c). [5.3] As document D1 was the only document used to challenge the novelty of claim 1, the Board comes to the conclusion that the claimed subject-matter of claim 1 of the impugned patent is novel (A 54). The Board then remitted the case to the first instance for further prosecution. To download the whole decision (in German), click here. The file wrapper can be found here.
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T 1519/08 – Not Necessarily
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T 1519/08 – Not Necessarily 12 Apr 2012
The joint opponents filed an appeal against the decision of the Opposition Division (OD) to reject the opposition. The opposition had been based on the ground of lack of inventive step. I found the decision noteworthy because it contains interesting statements concerning an allegedly implicit ground for opposition and on claim interpretation. Ground for opposition under A 100(c) EPC 1973 [3.1] The ground for opposition under A 100(c) EPC 1973 was raised by the joint appellants with a letter of 25 June 2008 […] after the expiry of the time limit laid down in A 99(1). It thus constitutes a fresh ground and was not admitted into the procedure by the OD […]. [3.2] The joint appellants held that a ground for opposition could also be implicit (decision T 455/94). In the present case, paragraph B1 of the notice of opposition concerned the definition of the invention according to claim 1 of the granted patent, whereas paragraph B1.1 dealt with the issue of lack of clarity of claim 1. The observation in paragraph B1 that paragraph [0006] of the granted patent was incorrect because claim 1 did not comprise an essential feature of the invention, namely “an array made up of a plurality of grouped stacks of sheets having cut out fluidic elements thereon”, should therefore be understood as implicitly relating to the ground for opposition of A 100(c) EPC 1973. It was held that it could be inferred from this observation that the general “array” of claim 1 included non-stacked arrangements of fluidic elements which were not originally disclosed. In the Board’s view, this argument is not convincing because the observation in paragraph B1 mentioned above does not necessarily imply an objection under A 100(c) EPC 1973. Rather, it may be understood as an objection concerning an inconsistency between claim 1 and the description of the granted patent under A 84 EPC 1973 which, however, is not a ground for opposition. [3.3] The joint appellants also submitted that the OD did not duly exercise its discretionary power to decide whether to admit the ground for opposition under A 100(c) EPC 1973 into the procedure, because it did not sufficiently deal with the arguments produced by the joint appellants (decision T 736/95). It could indeed be inferred from the minutes of the oral proceedings (OPs) of 27 June 2008 before the OD (paragraph 2.3) that this issue was only briefly dealt with, despite the fact that the interpretation of the term “array” was a recurrent theme throughout the whole opposition proceedings. The Enlarged Board of Appeal (EBA) held in decision G 10/91 [headnote 1] that “An OD or a Board of Appeal is not obliged to consider all the grounds for opposition referred to in A 100 EPC [1973], going beyond the grounds covered by the statement under R 55(c) EPC [1973]” (underlining added). With particular regard to the opposition proceedings the EBA stated that “In principle, the OD shall examine only such grounds for opposition which have been properly submitted and substantiated in accordance with A 99(1) [EPC 1973] in conjunction with R 55(c) EPC [1973]. Exceptionally, the OD may in application of A 114(1) EPC [1973] consider other grounds for opposition which, prima facie, in whole or in part would seem to prejudice the maintenance of the European patent” ([headnote 2]; underlining added). In the present case, the OD, in the exercise of its discretionary power acknowledged in G 10/91, held that the ground under A 100(c) EPC 1973 was not prima facie relevant and therefore disregarded it […]. The Board does not have any criticism against the OD’s approach. The fact that in the OPs before the OD this issue was only briefly dealt with corresponds to a prima facie assessment and cannot, as such, be considered as a procedural deficiency.
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T 1519/08 – Not Necessarily
K’s Law – The ebook
With regard to the appeal proceedings the EBA unequivocally held that “Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee” ([headnote 3]; underlining added). In the present case, the respondent explicitly withheld its approval […]. [3.4] For these reasons, the ground for opposition under A 100(c) EPC 1973 is not admitted into the procedure. As mentioned above, the Board also made an interesting statement on claim interpretation when discussing the objection of lack of inventive step against the main request: Ground for opposition under A 100(a) EPC 1973 in connection with A 56 EPC 1973 … [5.1] As a step preliminary to the assessment of whether the subject-matter of claim 1 of the granted patent is inventive, the question of how said claimed subject-matter should be understood was considered. The discussion specifically concerned the feature (a) which relates to “an array of fluidic elements, at least some of the fluidic elements comprising fluidic amplifiers, the array having a face plate and a back plate” (reference numerals omitted). [5.1.1] An interpretation of the claimed subject-matter may be made by taking into account the whole context of the disclosure of the patent (decision T 467/02 [2.3]). The claimed expression “array of fluidic elements” is defined in column 6 (lines 1-4) of the granted patent by stating that “an array of fluidic elements will include several stacks, each of which has at least one, and preferably several, fluidic elements”. Moreover, with regard to the claimed “fluidic elements” it is noted that the description of the granted patent only discloses embodiments in which the fluidic elements are cut out of a sheet. [5.1.2] On the other hand, an ambiguous text may be construed against the interest of the person responsible for drafting it, i.e. the respondent in the present case, and in favour of the person on whom it is legally imposed, i.e. the joint appellants as members of the public in the present case (decision T 151/05 [3.2.2]). This would plead for a wide interpretation as advocated by the joint appellants. Thereby, although a claim must not be interpreted in a way which is illogical or does not make any sense, the description cannot be used to give a different meaning to a claim feature which in itself imparts a clear credible technical teaching to the skilled reader (decision T 1018/02). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 840/07 – No Free Ride
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T 840/07 – No Free Ride 11 Apr 2012
The applicant filed an appeal against the decision of the Examining Division (ED) to refuse the application under consideration, for the sole reason that the claims lacked unity within the meaning of A 82. The applicant argued that there had been a substantive procedural violation. He argued that he had been adversely affected by the manner in which the examination proceedings had been conducted. Although the applicant made every effort to comply with each communication, the ED “went on throwing spanner [sic] in the works” so that the application had to fail. After the applicant had dealt with the unsubstantiated objections against the breadth of the claims in the second communication, the ED took the applicant by surprise by summons to OPs with an annexed communication introducing for the first time document D2 as the justification for the OPs and another “reason” for rejection of the application. The applicant filed two new sets of claims with its letter of September 4, 2006, asked for the examination to be continued in writing and for a telephone discussion of any minor issues, but requested OPs in case the ED considered refusal of the application. In the subsequent first telephone consultation on October 23, 2006, the applicant’s representative explained that the summons to attend OPs was premature and allowance should be made for the applicant’s limited resources. No reason was given why the requests filed on September 4, 2006, were bad. The primary examiner refused to cancel the OPs and to continue the proceedings in writing and gave the applicant until October 27, 2006, to file new sets of claims. The applicant’s representative filed an amended second auxiliary request on October 26, 2006, and a further telephone consultation took place on October 27, 2006, in which he was told that this request was inadmissible and he was given a last chance to file amended claims by 16:00 on that date. The Board found the request before it to comply with A 82 and then dealt with the request for reimbursement of the appeal fee: [12] The appellant’s complaints about the ED’s conduct of the examination proceedings are understandable but inconsistent. It is clear that the appellant wished to avoid the cost of attending OPs but none the less requested OPs if (as was the case) the ED considered refusing the application. The specific complaint of a substantial procedural violation by the introduction of document D2 into the proceedings with the summons to attend OPs cannot, in the board’s view, be correct. The ED is entitled to identify additional prior art and to raise objections based on it. Contrary to the appellant’s argument, it did have time to consider the new document - the summons was issued on 2 June 2006 and the applicant replied in writing on 4 September 2006. [13] One aspect of the proceedings which the appellant does not specifically criticise but which troubles the board is the exceedingly short deadlines imposed by the ED in the telephone consultations for filing further requests before the OPs – on 23 October 2006 a deadline of 27 October 2006, and on 27 October 2006 a deadline of 16.00 hours the same day. It is notable that on both occasions the applicant met those deadlines but they were clearly both far too short to allow a representative to consult his client, take adequate instructions and draft and file new requests. [14] The impression the objective reader obtains from reading the file of the examination proceedings is of mutual frustration. On one side the ED wanted to bring the proceedings to a conclusion and, after three rounds of communications and replies and two telephone consultations shortly before the OPs, both followed by further written submissions, it clearly considered the OPs necessary to provide that conclusion. On the other side, the applicant wanted to avoid OPs to save costs and, if necessary, would not attend OPs for costs reasons. If maintained, as they were, those attitudes were irreconcilable. The appellant’s submission that the present appeal could have been avoided if the ED had allowed further discussion is wholly speculative. Moreover, and the deciding factor, the appellant’s request which has succeeded in this appeal is the same as the main request which it filed on 4 September 2006 and later replaced. It did not pursue that request to the point where it became the subject of a decision. Thus the appellant had no choice but to 1411 | 3398
T 840/07 – No Free Ride
K’s Law – The ebook
appeal if it wanted the result it has now obtained. To reimburse the appeal fee would give the appellant a fee-free appeal which would be inequitable. The request for reimbursement must accordingly be refused. The Board then remitted the case to the ED. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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R 8/11 – Off Limits
K’s Law – The ebook
R 8/11 – Off Limits 10 Apr 2012
This decision on a petition for review is interesting because the Board discussed the question of whether firstinstance procedural violations could be the object of a petition. The petition was filed by the opponent whose opposition had been rejected – very quickly – by the Opposition Division (OD) and whose subsequent appeal had been dismissed. The impugned decision (T 571/09) has been discussed on this blog (here). *** Translation of the German original *** [1.2.1] Pursuant to A 112a(2) a petition for review may only be filed on the grounds mentioned in this provision. Pursuant to R 108(1), the petition for review is to be rejected as inadmissible if it does not comply with this provision. The petitioner, who is adversely affected by the impugned decision, bases his petition for review on the violation of his right to be heard pursuant to A 113(1) together with A 112a(2)(c) both in the opposition and the opposition appeal proceedings. […] [1.2.2] As also implied by R 106, A 112a only empowers the Enlarged Board of Appeal (EBA) to review procedural violations that have been committed by a Board of appeal (BoA). Therefore, according to the unambiguous wording of this provision, procedural violations that have occurred in the course of the proceedings before an Examining Division (ED) or an OD are excluded from a review under A 112a. The reason for this is that – in contrast to decisions of the BoA – decisions taken by the first instance body can be impugned by means of an appeal and procedural shortcomings can be corrected by the BoA. [1.2.3] As a consequence, the present petition for review is clearly inadmissible to the extent to which the petitioner points out that his right under A 113(1) has been violated because the OD had rejected his opposition without giving him the opportunity to respond to the answer of the patent proprietor to the opposition […]. As a matter of fact, this submission concerns the opposition proceedings and not the opposition appeal proceedings. Insofar the submission had already been judicially reviewed by the competent Technical BoA. [1.2.4] Contrary to the opinion of the petitioner, first instance decisions cannot be reviewed a second time, even if they involve an alleged violation of fundamental principles that are generally recognized, such as A 113(1). As a matter of fact, A 112a is an exceptional rule which opens the way to the EBA only within narrow limits, so as to allow [parties] to raise the – substantially limited – objection against decisions of BoA (which cannot, in principle, be impugned) that the appeal proceedings were affected by a substantial procedural violation within the meaning of A 112a(2) in conjunction with R 104. Being an extraordinary legal means, the review pursuant to A 112a is based on the balancing of legal interests by the lawmaker, whereby the latter has – subject to narrow requirements – given the priority to the cancellation (Aufhebung) of a decision of a BoA that is affected by a substantial procedural violation, and, thereby, to the abolition (Durchbrechung) of its legal force, over the confidence of the parties and the public in their continuance (Fortbestand), which also deserves protection (see also R 1/10 [6.1.1], referring to the requirements of R 106). However, whenever a decision can be reviewed in regular appeal proceedings, which is the case for decisions of the ED and the OD, then according to the purpose (Sinn und Zweck) of the review proceedings, it shall not be possible to request a further review of the very same alleged procedural violation after a decision of a BoA. [1.2.5] Contrary to the opinion of the petitioner, this also holds true when the alleged procedural violation involves the – important – right to be heard pursuant to A 113(1). [1.2.6] The EBA shares the opinion of the petitioner that A 113(1) is a central procedural right – if not the basic procedural right par excellence – the safeguard of which is the first duty of any jurisdiction based on the rule of law (rechtsstaatliche Gerichtsbarkeit). Otherwise the right to be heard would not have been explicitly incorporated into the EPC. The importance of this provision is also emphasized by Article 6 of the European 1413 | 3398
R 8/11 – Off Limits
K’s Law – The ebook
Convention for Human Rights, as well as by the fact that the establishment of petitions for review pursuant to A 112a in the EPC 2000 treats the violation of this right as the paramount (as to its importance) ground for review. [1.2.7] The extraordinary importance of the right to be heard for judicial proceedings based on the rule of law, however, does not establish the EBA as a further instance in all proceedings wherein the violation of A 113(1) by the granting authority (Erteilungsbehörde) has been criticized. This is because, unlike the Federal Constitutional Court in the legal system of the Federal Republic of Germany, the EBA does not have the role of a guardian of the procedural rights of the parties in all instances and, therefore, also in proceedings before the granting authority. The unambiguous wording of A 112a clearly makes such an understanding impossible because it limits the admissibility of a petition for review to a violation of rights by a BoA. It is the BoA in their function as judicial authority (gerichtliche Instanz) that have the duty to examine whether the first instance has granted the parties the right to be heard. Therefore, the protection of this right does not necessarily require a further decision of the EBA. [1.2.8] As an alleged violation of the right to be heard by the OD can – only – be asserted in the proceedings before the competent BoA, and not in review proceedings before the EBA – the petitioner’s argument according to which the BoA had perpetuated a substantial procedural violation of the first instance by its negative decision and its refusal to remit, and, therefore, again violated the right to be heard of the petitioner, cannot succeed. As a matter of fact, such an objection (Rüge) would make the very same objections (Einwände) regarding the violation of the right to be heard, on which the BoA had already decided, afresh subject of the proceedings (Verfahrensgegenstand), admittedly before the EBA. This, however, would result in an inadmissible circumvention of the explicit limitation of the review proceedings pursuant to A 112a to the substantial procedural violations mentioned in this provision, which precisely affect the appeal proceedings. This limitation not only results from the wording of the provision but also from the explicit will of the lawmaker (see The revised EPC (EPC 2000), Synoptic presentation EPC 1973/2000 – Part I: The Articles, Special edition No. 4 OJ EPO 2007, 144), which has been confirmed in the established case law of the EBA (Case Law of the BoA of the EPO, 6th edition, 2010 VII.E.15.1). Extending the application of review proceedings beyond the grounds given in A 112a(2) would be tantamount to disregarding the explicit will of the lawmaker, which is not an option for the EBA (an exhaustive list of the grounds for review and further references to the case law have again been provided in R 6/11 [11.1] recently). [1.2.9] Moreover, based on the argumentation of the petitioner, one would always have to assume a perpetuation of a procedural violation when the BoA does not share the legal assessment of the case and finds no procedural violation. However, A 113(1) does not establish a right to a certain factual understanding but only the right that the relevant deciding authority allows the parties to submit sufficient arguments regarding all essential aspects of the case, that it takes notice of these submissions and that it takes them into account in its decision. This is what the BoA has done in the impugned decision by dealing with the submissions of the petitioner in a detailed and careful way, even if it has not come to the same conclusions. [1.2.10] It follows that neither the assertion according to which the OD had violated the right to be heard of the petitioner, nor the assertion that the BoA had perpetuated this violation by finding that the OD had not violated the right to be heard, are objections (Rügen) that can be asserted in a petition for review. [1.2.11] It may be left open whether the BoA was empowered to correct the original version of the impugned decision based on an obvious error under R 89 EPC 1973, as it has done in its decision of May 19, 2011. The mere fact that the BoA has dealt with the alleged procedural violations in the context of the discussion of the request for reimbursement of the appeal fee pursuant to R 103 – possibly in the wrong place, from a systematic point of view – does not change the fact that it has dealt in detail with the alleged violation of A 113(1) by the OD. Should you wish to download the whole decision (in German) or have a look at the file wrapper, click here. NB: A similar decision has been reported here.
1414 | 3398
T 599/07 – Fatal Dependence
K’s Law – The ebook
T 599/07 – Fatal Dependence 9 Apr 2012
The present appeal was filed against the refusal of the application under consideration. According to the Examining Division, the subject-matter claimed in the sole request lacked inventive step and claim 5 was not clear. Together with the statement of grounds of appeal, the appellant filed a new main request containing three independent claims and several dependent claims. The oral proceedings (OPs) were held in the absence of the appellant. The Board found the main request to be inadmissible: [1] Except for the addition of dependent claims 2 and 6 to 8, the present main request is identical to the set of claims filed with a letter dated 17 September 2003, on which the decision under appeal is based. All independent claims of the present main request (claims 1, 5 and 9) literally correspond to the independent claims (claims 1, 4 and 5) of the set on which the decision under appeal is based. The appellant did not give any explanation for the introduction of new dependent claims. The board concludes that if the independent claims are not amended, the introduction of new dependent claims into a given set of claims cannot overcome the grounds for refusal. The board further notes that R 137(2) does not apply, as an amended set of claims had already been filed with a letter dated 17 September 2003. As a consequence, the main and sole request is not admitted into the proceedings (Article 12(4) RPBA together with R 137(3)). [2] According to A 113(2), the EPO shall decide upon an European patent application only in the text submitted to it, or agreed, by the applicant for a patent. In view of the fact that the sole request was found inadmissible, there is no text of the patent application on the basis of which the board could consider the appeal and the application could proceed to grant. […] The appeal is dismissed. I find this decision tough on the appellant, but I imagine the appellant’s absence from the OPs did not help its case. As the addition of independent claims was already raised in the Board’s summons to OPs, the appellant should have come back to the claims as refused by the ED. I trust the Board would have allowed such an amendment even during the OPs. For a similar (later) case in opposition appeal proceedings, see here. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1415 | 3398
T 630/09 – Combination Locked
K’s Law – The ebook
T 630/09 – Combination Locked 7 Apr 2012
The question of whether an amendment consisting in combining granted claims can possibly give rise to an objectionable lack of clarity is disputed between the Boards. Here is one more decision in favour of the approach according to which clarity is not to be examined in this context. The patent proprietors filed an appeal against the decision of the Opposition Division to revoke their patent. During the oral proceedings before the Board, the patent proprietors withdrew all requests on file and filed one new request. Here is what the Board had to say on the scope of examination: *** Translation of the German original *** [3] The present request is based on a combination of granted claims: claim 1 combines granted claims 1 and 11, dependent claims 2 to 8 are the same as in the patent as granted. As [the amendment] only corresponds to a syntactical redrafting of the claims, which does not lead to any substantial modification, there is, according to the established case law of the Boards of appeal, no reason to [raise] any new objection beyond A 100 EPC 1973 (see, for instance, T 367/96 [6.2], T 381/02 [2.3.7], T 1855/07 [2.2-4]). Therefore, in the present case, in application of decisions G 9/91 and G 10/91, all that has to be examined in the appeal proceedings is whether one of the grounds of opposition raised in the opposition makes it impossible to maintain the patent. To download the whole decision (in German), click here. The file wrapper can be found here.
1416 | 3398
K’s Law – The ebook
Publish Or Perish (ctd.)
Publish Or Perish (ctd.) 7 Apr 2012
Here is the quarterly update of my graph presenting the number of decisions published on the DG3 page.
Although we have not had a single decision published during the last three weeks (except two decisions on petitions for review), the overall output during the first quarter was slightly above average. There is not much more to be said for the time being.
1417 | 3398
T 2451/09 – The Dangers Of Welding
K’s Law – The ebook
T 2451/09 – The Dangers Of Welding 6 Apr 2012
This decision – dealing with an appeal against the rejection of the opposition against the patent under consideration – is not brand new but it contains some interesting statements on sufficiency of disclosure and in particular on the burden of proof. [2.1] The invention concerns a sealing slide fastener with opposing elastic tapes that are pressed together edgewise by teeth on the tapes that are made to mesh by a slider - basically a zipper. The teeth are formed of two halves on opposite sides of the tapes. The invention’s main thrust is towards preventing infiltration of water through holes in the tape that allow the halves to be joined […]. To this end the patent essentially proposes using materials for teeth and tape that can be “welded together chemically”, in such a way that when the teeth are injection moulded in position on the tapes, they are welded by chemical bonding” […]. Therefore, […] the teeth halves are injection moulded onto outer tape layers made of thermoplastic elastomer (TPE), with the teeth halves “welded together chemically, so that [they] adhere by chemical bonding ... onto the opposite outer layers of [the] tapes”. [2.2] As acknowledged by the [patent proprietor] the expression “welded together chemically” is not standard usage. It does not refer to any particular recognized type of welding. The skilled person – a plastics engineer involved in the manufacture of a plastics fastener with extensive textbook knowledge of plastics – must therefore try to understand the expression from context, that is considering it in conjunction with the further terms of the claims, description and figures, given their usual meaning, and drawing on his common general knowledge (CGK) if necessary. [2.2.1] “Welding (together)”, for example, on its own is a common term in the plastics industry where it denotes the process of “joining pieces of suitable plastics by raising the temperature at the joint so that the pieces are united by fusing or by forging or under pressure”, see e.g. Chambers Science and Technology Dictionary, 1988. However, the juxtaposition with “chemically” is unusual; it does not appear elsewhere in the cited or consulted literature. In its usual sense that term will suggest to the skilled person an interaction at chemical level during welding of the two components, and indeed claim 1 (in all versions) goes on to state that teeth and tapes “adher[e] by chemical bonding”. […] [2.2.2] The particular type of chemical bond – whether covalent, ionic or hydrogen, primary or secondary, strong or weak – is not specified in the patent. Nor will it be apparent to the skilled person from his common knowledge whether a particular bond type is meant and which one, as all are known to play roles in polymer chemistry. All he has is the information that the bond must result in teeth and tapes welding. [2.2.3] Giving the terms their normal meaning the skilled person, who is trying to make technical sense of the patent’s teaching, will therefore infer the meaning of this defining feature of the invention as welding together of the materials during injection moulding in a way that they interact to form chemical bonds. [2.2.4] With the above understanding complemented with CGK in the field he must then be able to choose appropriate tooth and tape materials as well as the necessary conditions to produce the requisite chemical bond during injection-moulding, if he is to be able to successfully put the invention into practice. Though the patent does not provide any specific examples of combinations of materials, it does instruct him, see claim 1, to use TPE’s for the tape outer layer, and […] one of a list of synthetic resin groups for the teeth. This information offers an obvious starting point in determining which materials to choose. [2.3] In the light of the CGK in the field it becomes clear that the skilled person faces a daunting task. For one, it shows that TPE’s form a large class of elastomeric materials, which vary widely in their ability to weld with selected resins […]. More importantly, it emerges from the CGK, that it is not yet fully understood how elastomers adhere, whether the mechanism involved is purely physical or chemical in nature, let alone which materials produce a chemical bond and by what means. [2.3.1] D13/D14 is a textbook treatise on adherence of rubbers. It focuses on the role of primary (covalent or ionic) chemical bonds in adherence, discussing a variety of different models with varying degrees of primary and secondary (weak) bonds interacting in a diffusive boundary layer […]. A purely mechanical model of molecular 1418 | 3398
T 2451/09 – The Dangers Of Welding
K’s Law – The ebook
entanglement is also briefly mentioned […]. Though the role of primary bonds is underlined, […] D14 makes clear that the various models are tentative and that research is ongoing. In fact, D14 […] states that it is not yet possible to quantify the primary bond. The Board notes that the models in D13/D14 are not specific to rubber but apply to the broader class of elastomers, to which TPE’s belong. In figure 12-6, for example, the terms “rubber” and “elastomer” appear side by side, while throughout the text the terms are interchanged frequently. The skilled person, who is trying to understand the patent’s teaching, will thus also draw on this textbook knowledge. [2.3.2] The view in D13/D14, which stresses the role of primary bonding, conflicts with that of Osen, a paper published 5 years later and which presents an overview of TPE’s and their properties, and with which the average plastic practitioner will also be familiar. Osen considers physical interdiffusion and molecular entanglement to be the predominant mechanism in the adhesion in TPEs […] (“bonding ... is based almost entirely on diffusion ... The resulting molecular entanglement can provide high bond strength”). Where it mentions “grafting reactions”, […] it does not refer to a chemical adhesion mechanism. Instead, it explains how normally non-miscible polymers can be made compatible and thus miscible by changing the chemistry of the individual molecules. Grafting normally refers to side chains being added to a main chain of a given polymer molecule, not cross-linking between molecules as suggested by the [patent proprietor]. The basic mechanism by which such “compatibilized” polymers weld according to Osen is still that of interdiffusion or physical entanglement. [2.3.3] D13/D14 and Osen thus offer opposing views of how elastomers, in particular TPEs might bond. Nor does the expert opinion D15 offer a more conclusive view. At best it suggests that some materials may adhere physically (by entanglement), others chemically, either by strong, primary covalent bonds or by or weak or secondary hydrogen bonds […]. None of the models is substantiated by empirical proof. The tentative formulation in point 3 (“In principle ... could adhere ... could create ... could abstract ... could be accelerated ...”; emphasis added) indeed suggests that Prof. Camino’s interpretation of chemical welding is based on conjecture rather than fact, and that he differentiates between hypothetical models, not empirically proven mechanisms. [2.4] In view of these conflicting adhesion models, none of which has been verified, the skilled person would at the priority date not have known with any certainty from his CGK how elastomers, and in particular TPEs, adhere. He would have been unable to say whether they adhere by physical entanglement or by any of a number of chemical bonding mechanisms, or, indeed whether some materials adhere physically, while others adhere chemically, much less which ones and under which conditions. This lack of knowledge might lead him to try and determine whether and which materials bond chemically, and possibly under which conditions. Given that hitherto none of the proposed models has been proven – and indeed concrete proof regarding the role of chemical bonding has remained forthcoming during opposition and appeal procedures – , the skilled person would then need to invest a great deal of effort in merely proving that chemical bonds are responsible. Starting from the information given in the patent, he would have to do so for a large number of possible combinations of different TPE’s and listed resins. Finally, he might not even be rewarded for his efforts, as he might find that adhesion is purely physical as posited by Osen. [2.5] In the Board’s view the effort involved goes far beyond that, say, of routine trial and error. It amounts to an extensive research programme that puts undue burden on the skilled person in his attempts to put the invention into practice, and which may not even lead to success. Following established jurisprudence, that for an invention to be sufficiently disclosed if the disclosure is reproducible without undue burden, see the Case Law of the Boards of Appeal, 6th Edition, 2010, II.A.4.2 and the case law cited therein, e.g. T 265/85, the Board can but conclude that the invention is not sufficiently clearly and completely disclosed in the sense of A 100(b) and A 83. This fundamental flaw of the patent is a result of the speculative nature of a central, defining feature of the invention. It is not remedied by any of the amendments to the claims formulated in the main, first or second auxiliary requests. [2.6] This speculative nature of a central defining feature of the invention naturally also means that the skilled person is not able to ascertain that he has indeed successfully carried out the invention. The requirement of sufficiency necessarily implies that he must be able to do so. The [patent proprietor’s] assertions to the contrary, for example his mention of IR spectrometry as a means of determining that the weld is formed by chemical bonds, are unsubstantiated and thus without merit. This confirms the Board’s finding of insufficiency. [2.7] The assertion that where the skilled person reads welding by chemical bonds as synonymous with strong adhesion assumes that when there is strong adhesion it is due to (primary, covalent) chemical bonds. This assumption is again based on speculation as to the nature of the bond rather than substantiated fact. Nor has the [patent proprietor] provided any evidence that the sole example he cites, Hytrel with PBT, which is known to adhere well, see D6, page 18, adheres by chemical bonding. In this conjunction the Board also notes that the [patent proprietor] has previously, in examination (see the reply of March 1st 2005, the paragraph bridging pages 1419 | 3398
T 2451/09 – The Dangers Of Welding
K’s Law – The ebook
4 and 5), argued that the main mechanism of chemical bonding was in fact “molecular interdiffusion”, as posited by Osen. 2.8 Equally speculative is the assertion that all TPE’s weld chemically under the right conditions so that specifying TPE would by itself be sufficient. Not only is this assertion unsubstantiated, it also conflicts with table 2 of Osen showing specific combinations of TPE´s and thermoplastics that weld well and others that do not. Even if it were so, it would again be left entirely to the skilled person to work out what those conditions, for which the patent provides no information, might be. [2.9] Finally, though it is true that the [opponent] carries the burden of proof that an invention is insufficiently disclosed, there is no requirement that that proof take any particular form or that it conclusively demonstrate that adequate information is lacking in the patent. The latter requirement, proving that something is missing, would set a high standard indeed. The departure point for assessing sufficiency of disclosure is the legal presumption that a granted patent is sufficiently clear and complete, see in particular T 63/06 [3]. It is incumbent on an opponent to prove that that presumption is invalid. This depends on the strength of the presumption, normally determined by the amount of detail given in the patent on how to put the invention into practice. In the present case the information in the patent is scant, providing little or no practical detail regarding a central defining feature, which could have been illustrated by a single specific material combination. It therefore suffices when the [opponent] on the basis of arguments and/or documentary evidence is able to raise serious doubts with the Board regarding the feasibility of this feature for it to find the disclosure insufficient. In the present case the [opponent’s] arguments based on D13/D14 have indeed raised such doubts, which the [patent proprietor’s] counterarguments and mention of Osen have been unable to dispel. [3] The Board concludes that the invention is not disclosed sufficiently clearly and completely for it to be successfully carried out by the skilled person, A 100(b) and A 83. As the patent, taking into considerations the amendments proposed in all of the requests, fails to meet this fundamental requirement of the EPC, the Board must revoke the patent pursuant to A 101(3)(b). Should you wish to download the whole decision, just click here. The file wrapper can be found here. NB: This decision has been commented on Le blog du droit européen des brevets some time ago (here).
1420 | 3398
T 309/09 – Excessive?
K’s Law – The ebook
T 309/09 – Excessive? 5 Apr 2012
This appeal was against the refusal of an application by the Examining Division (ED). In its summons to oral proceedings (OPs), the ED fixed the time limit for making written submissions to September 16, 2008. On September 15, 2008, the applicant filed six auxiliary requests. The ED told the applicant on the phone that it intended not to admit those requests under R 137(3). The OPs were held in the absence of the applicant. The ED found claim 1 of the main request to lack inventive step and refused to admit the auxiliary request. It justified this course of action as follows (English translation): “a) There are unjustifiably many auxiliary requests and those requests do not converge towards patentable subject-matter. Each auxiliary request differs from the main request by a different feature. The features concern completely different aspects (use of the final device, way in which the data are transmitted, server properties, conditions of reproduction, biometrical measurements). b) Former objections appear not to have been overcome. The additional features cannot establish an inventive step. They correspond to details of implementation that are well known to the skilled person and that do not obtain any additional technical effect going beyond their wellknown purpose in connection with the other features of the claim.” The Board won’t have it that way: *** Translation of the German original *** [7] The refusal articulates the reasons for the discretionary decision of the ED not to admit auxiliary requests 1 to 6 as follows […]: There are unjustifiably many auxiliary requests and those requests do not converge towards patentable subjectmatter. Former objections appear not to have been overcome. [7.1] According to its wording, point (a) presents the number of auxiliary requests and their lack of convergence as two independent reasons. This is also reflected in the summons to OPs […] which presents both reasons – independently from each other – as possible criteria for not admitting auxiliary requests. However, it is also possible that the ED considers the number of auxiliary requests as a single reason in view of the lack of convergence. Both possibilities are treated in the following. Unjustifiably many auxiliary requests [7.2] The Board doubts that, as a rule, the number of auxiliary requests is a suitable criterion for a sweeping (pauschal) refusal of requests pursuant to R 137(3). The Board does not want to exclude that in particular cases a great number of auxiliary requests may provide sufficient justification for refusing all of them. However, this question may be left open because in any case [the number of] six auxiliary requests cannot be considered to be excessive just like that (ohne Weiteres). It may also be left open whether in the present case those six auxiliary requests may be considered to be unjustifiably many and whether their lack of convergence is relevant, because the impugned decision does not contain any considerations concerning the particular cases which could support this conclusion. 1421 | 3398
T 309/09 – Excessive?
K’s Law – The ebook
Lack of convergence of the auxiliary requests [7.3] The Board agrees with the appellant that “there is no provision in the EPC according to which auxiliary requests may not cover entirely different aspects”. However, the Board is of the opinion that under particular circumstances it may be justified to take into consideration, when exercising discretion as to whether admit an auxiliary request, weighting the interests of the applicant and the EPO […], whether its subject-matter converges with the subject-matter of previous requests or requests of higher rank. Whether there are such circumstances or not has to be examined in each particular case and reasons have to be given, R 111(2). It may be left open whether there are such particular circumstances in the present case, for instance in view of the fact that the auxiliary requests were filed within the time limit fixed pursuant to R 116 and that the independent claims of at least some of the auxiliary requests (1, 2, and 4) are supported by dependent claims as originally filed. This is because a criterion of convergence has to be examined separately for each individual request. In the present case, the independent claims of all auxiliary requests are limited with respect to the independent claims of the main request. The independent claims of the main request had been amended only once in the preceding examining proceedings, in response to an objection of [lack of] clarity by the ED […]. Thus, at least the first auxiliary request is convergent with the main request and the convergence criterion cannot possibly justify the refusal to admit the first auxiliary request. Former objections not overcome [7.4.1] There have been objections of lack of novelty and lack of inventive step, respectively, against the independent claims. Moreover, there have been objections of [lack of] clarity against some of the dependent claims […]. However, the ED appears to have dropped the latter in view of the amended claims […]. In any case the summons to OPs of April 23, 2008, does not contain any objection of [lack of] clarity. [7.4.2] Regarding the novelty and inventive step of the dependent claims, the written statements of the ED are limited to cursory objections […] as well as sweeping references to prior art documents […]. These explanations cannot be considered to be reasoned objections within the meaning of R 111(2). [7.4.3] The independent claims of all auxiliary requests are limited with respect to the independent claims of the main request: in auxiliary requests 1, 2, and 4, features taken from former dependent claims have been added; in auxiliary requests 5 and 6 features taken from the description have been added; and in auxiliary request 3 one previously claimed alternative has been deleted. In view of these amendments, the appellant could expect to have overcome the objections of lack of novelty and inventive step, or at least to have appropriately responded to the reasons given in writing. Therefore, the Board agrees with the appellant that the sweeping reference to “former objections” that had not been overcome does not allow to understand which former objections were meant. [8] Summing up, the Board comes to the conclusion that, in the absence of the appellant, the ED indeed was entitled to exercise its discretion and that in principle it has exercised its discretion according to correct criteria within the meaning of G 7/93, but that it has not provided sufficient reasons in the impugned decision, which is contrary to R 111(2). Even a lack of reasons is a substantial procedural violation justifying a remittal to the first instance in application of Article 11 RPBA and a reimbursement of the appeal fee for the sake of equity, R 103(1)(a). Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
1422 | 3398
T 1476/08 – Seriously Contemplating
K’s Law – The ebook
T 1476/08 – Seriously Contemplating 4 Apr 2012
This appeal was against the refusal of an application by the Examining Division. Claim 1 of the main request before the Board read: A glass comprising:
wherein the glass has at least one of the following properties: (a) a log 10 viscosity temperature of at least 1280°F (694°C) and (b) a liquidus temperature of at least 2350°F (1288°C). The Board found this claim not to be novel over document D4: [1.1] D4 (claim 1) discloses a crystallisable glass comprising approximatively in wt%:
with the mol ratio of Al2O3/R2O being between about 1 and about 1.35, R2O being an alkali metal oxide. In its examples 5, 6 and 7, D4 discloses the following specific glasses compositions (in wt.%): 1423 | 3398
T 1476/08 – Seriously Contemplating
K’s Law – The ebook
[1.2] The appellant argued that the disclosure of D4 did not anticipate the subject-matter of claim 1 because iron and (CaO and/or MgO) were absent from the above glass compositions. Further, the amount of ZrO2 was higher in the glasses of D4 than in the subject-matter of claim 1 at issue. [1.3] The board cannot follow this argumentation because the raw materials used in the preparation of glasses always contain iron and alkaline earths as impurities and in view of the very small values of the lower limits (0.05 and 0.04, respectively) of the ranges defined in claim 1 regarding iron and (CaO + MgO), the board is convinced that the glasses known from D4 also contain such low amounts of iron and of (CaO + MgO). [1.4] With respect to ZrO2, it is true that in the examples of D4 the amount of ZrO2 is disclosed to be 1.6%, i.e. above the upper limit of 1.5% defined in claim 1 at issue. It is however established jurisprudence that the teaching of a piece of prior art is not limited to the specific examples disclosed therein. In this context, it is observed that D4 further discloses (claim 1) the amount of ZrO2 in terms of the total amount of ZrO2 and TiO2 in the glass, which is defined to be between 2.0 and 3.6% wt. Considering that the examples in document D4 represent preferred embodiments of the above disclosure in claim 1 of D4, the board judges that the skilled reader of D4 would seriously contemplate (in the sense of e.g. decisions T 440/04 [4.3.2]; T 666/89) applying the broader disclosure in claim 1 of D4 to the production of other specific glass compositions close to those in the examples of D4, in particular in view of the lower limit of 2.0% wt. as regards the sum of (ZrO2 + TiO2) defined in claim 1 of D4. The skilled reader of D4 would thus seriously contemplate preparing glass compositions with a lightly lower amount of ZrO2 than in the examples of D4 (wherein the amount of ZrO2 is 1.6%), namely an amount of ZrO2 falling directly and unambiguously within the terms of claim 1 at issue, for instance 1.5% wt. The board observes that D4 does not explicitly disclose the log 10 viscosity temperature or the liquidus temperature of the glass compositions in D4. Owing to their composition which – as explained above – reads on the wording of claim 1 at issue, at least one of these parameters should inevitably be fulfilled as a direct consequence of the chemical composition of the glasses. The board invited the appellant to comment on this issue and if the need arises, to provide evidence to the contrary, e.g. by reworking the glass compositions in D4. The appellant neither commented on this issue, nor did it provide any kind of evidence in this sense. It follows from the above considerations that the subject-matter of claim 1 of this request lacks the requirements of A 54(1) and (2) EPC 1973 in the light of the disclosure of D4. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 122/10 – Don’t Bite The Dog
K’s Law – The ebook
T 122/10 – Don’t Bite The Dog 3 Apr 2012
I find this case interesting because of the way in which Article 12(4) RPBA was invoked. This provision is mostly used by the Boards to refuse late-filed requests, but in the present case, it was the patent proprietor that tried to take advantage of the wording of the article. Unsuccessfully, I should add. This appeal was against the revocation of the European patent under consideration. The Board decided not to admit auxiliary requests 2 to 4, for the following reasons: [3.1] These requests were filed during the oral proceedings (OPs), hence at the latest possible stage in the proceedings. According to Article 13(1) RPBA, it lies within the discretion of the Board to admit any amendment to a party’s case after it has filed its grounds of appeal or reply. This Article also states that “the discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.” [3.2] Claim 1 of all these requests has been amended compared to claim 1 of the corresponding requests 2 to 4 filed with letter of 9 November 2011 by deleting the term “non-folded” which was discussed as not being allowable in the course of the OPs in view of its nature as a disclaimer with reference to the decision of the Enlarged Board of Appeal G 1/03. [3.3] Accordingly, the now claimed subject-matter of claim 1 of the second to fourth auxiliary requests is identical to the subject-matter of claim 1 of the corresponding requests 2 to 4 filed with the grounds of appeal. Also, the subject-matter of claim 1 of the second auxiliary request is identical to the subject-matter of claim 1 of the first auxiliary request found not to involve an inventive step by the opposition division. [3.4] The communication of the Board sent prior to the OPs contained a statement in item 2 in relation to a possible interpretation of claim 1 whereby two bristles could be formed from a single folded filament, whereby novelty of the subject-matter of claim 1 would appear to be in doubt having regard to Example 2 in D1. Hence, at least in response to the Board’s communication, any doubts concerning such an interpretation could have been presented, and the [patent proprietor] could have maintained a corresponding set of product claims. However, whilst arguing that a bristle was entirely straight, the [patent proprietor] chose only to file requests which excluded an interpretation of a bristle being one half of a folded filament via the insertion of the term “nonfolded” into claim 1. [3.5] Due to the deletion of the term “non-folded”, the subject-matter of claim 1 was broadened significantly with respect to claim 1 of the corresponding requests previously filed, thus raising issues which neither the Board nor the other parties could have been expected to deal with at that stage, even though such subject-matter corresponded to earlier withdrawn requests. [3.6] Thus, the framework of the appeal would have been altered completely if the new requests were admitted; the Board as well as the parties would be faced with arguments as to why this claimed subject-matter would then be novel and why the Board’s preliminary view on lack of novelty was incorrect. Moreover, the Board’s communication was not the only indication that the subject-matter of claim 1 lacked novelty. Indeed such objection had already been raised by the [opponents]. Accordingly, the deletion of the feature “non-folded” would have the effect of changing the [patent proprietor’s] case in a direction which, objectively, could not have been expected, in particular because all of the earlier auxiliary requests 2 to 4 had been amended in this way without reservation. Requests corresponding to the current auxiliary request 2 to 4 could clearly have been maintained as filed with the grounds of appeal, had this been the [patent proprietor’s] intention. Likewise, the [patent proprietor] chose not to supply any arguments in support of novelty or inventive step of the claims, so it could not be deduced that the [patent proprietor] had any intention of trying to defend claim 1 of the withdrawn requests in any form, in view of the Board’s opinion. The submission of auxiliary requests 2 to 4 without the expression “non-folded” only during the OPs was thus not consistent with the requirements set out in Article 13(1) RPBA, in particular with respect to the need for procedural economy.
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T 122/10 – Don’t Bite The Dog
K’s Law – The ebook
[3.7] Although reference was made to Article 12(4) RPBA which sets out that the Board shall take into account everything presented with the grounds of appeal, and thus in this case auxiliary requests 2 to 4 as presented during OPs, such provision can only be understood to apply if such requests have not previously been withdrawn in the course of the proceedings as was the case here. Once the [patent proprietor] chose to withdraw its earlier filed requests, the provisions of Article 13(1) RPBA apply since an amendment to the party’s case has been made. An interpretation of Article 12(4) in the sense that a party must always have the option to return at any time to previously withdrawn requests would run counter to the clear intention of Article 13(1) RPBA in terms at least of procedural economy and also the established case law of the Boards of Appeal according to which, when exercising its discretion under Article 13(1) RPBA (and thus considering amendments to a party’s case after filing its grounds of appeal or reply thereto), such requests should be convergent. The purpose of Article 12(4) RPBA is to ensure that the parties’ right to be heard on requests it has filed is guaranteed. However, and although not a procedural requirement, in the present proceedings the Board issued a communication giving an opinion on the subject -matter of the requests filed with the grounds of appeal, resulting in the [patent proprietor’s] choice to withdraw same. [3.8] Hence, the late-filed second to fourth auxiliary requests did not fulfil the requirements of procedural economy, taking also into account that no comments were made by the [patent proprietor] to the (negative) preliminary opinion on novelty and/or inventive step of such requests in the communication issued by the Board. [3.9] The fact that the [patent proprietor], at the start of the OPs before the Board, offered to remove the expression “non-folded” from its auxiliary requests 2 to 4, does not alter the aforegoing, since already at that stage of proceedings an entirely different legal situation existed for the parties, so that a return to previously filed requests raising issues which were seemingly no longer of importance would not have been anticipated. Thus the Board exercised its discretion under Article 13(1) RPBA not to admit these requests. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2296/09 – Sketchy
K’s Law – The ebook
T 2296/09 – Sketchy 2 Apr 2012
The question of what information exactly drawings convey to the skilled person is not always an easy one and, as a rule, its answer depends on the circumstances of the case. The present decision shows a situation where the Board had to draw the line. The appeal was filed against the decision of the Opposition Division to reject the opposition. Claim 1 as granted read (division of features added): (a) A low-pressure atomising spray gun including an air spray gun body (10), (b) a paint nozzle (1) screwed to the spray gun body (10), and (c) an air cap (2) installed with a cover (3) thereof in the spray gun body (10) so as to cover the paint nozzle (1); (d) the paint nozzle (1) and air cap (2) between them defining an annular slit (4) formed between a top portion of the nozzle (1) and a wall of a central opening formed in the air cap (2) and working cooperatively with each other to mix, in the atmosphere, compressed air and a paint just delivered from the nozzle (1) to atomize the paint; (e) the said spray gun further comprising (f) a plurality of air grooves (1a) formed on the tip of the portion of the paint nozzle (1) convergently towards the centre of a delivery port (100) of the paint nozzle (1) so that the intersection of the bottom of the air grooves (1a) with the inside diameter of the paint nozzle (1) approximately coincides with the front end of the central opening in the air cap, and (g) each of the air grooves (1a) starts at or upstream of the inlet end of the annular slit (4), and being characterized in that: (h) the front end of the paint nozzle tip projects (i) 03 (correctly: 0.3) to 0.8 mm from the front end of the central opening in the air cap. One of the decisive issues was what was disclosed in Japanese patent application E1. The OD held that E1 was completely silent concerning the range of values for the distance the respective front end of the paint nozzle tip projects from the wall of a central opening formed in the surrounding air cap (feature (i)). According to the OD, the drawings were conventional sketches and not necessarily true to scale. Consequently the spray gun according to claim 1 was distinguished from the known spray guns by the characterising features of claim 1 (features (h) and (i)) and thus novel. Here is the conclusion of the Board: [2.1] It is common ground that the relevant disclosure of E1 to be considered resides solely in its drawings and that these drawings, as can be derived from figure 2, disclose a spray gun of the kind defined by the preamble of claim 1.
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T 2296/09 – Sketchy
K’s Law – The ebook
Beyond that the parties are divided as to the extent of the disclosure derivable from these drawings. [2.2] According to the impugned decision […] and the [patent proprietor …] these drawings can only be regarded as conventional sketches. While the decision under appeal remains silent concerning the reasoning underlying this assumption the [patent proprietor] referred to the intended use of these drawings. In its view these drawings are patent drawings which normally, and the present drawings making no exception, show in a general outline an embodiment according to the respective invention. Thus details not addressed as part of the invention in the description of E1 but only shown in the drawings, like it is the case for the projection of the front end of the paint nozzle tip as shown in figure 2, cannot be considered as being part of the disclosure. Consequently this projection cannot be considered as corresponding to the one defined by feature (i) of claim 1 of the patent in suit but merely as a negligible pictorial detail for which no reason is given in E1, or even as a drawing inaccuracy or an unforeseen deviation in the pictorial presentation of the spray gun concerned. This aspect becomes even more evident considering the large number of prior art documents which disclose spray guns of the kind concerned for which the front end of the paint nozzle tip does not project. [2.3] The Board in this respect finds, however, the arguments of the [opponent …] more convincing. Due to the accuracy and completeness of these drawings and due to the fact that apparently all elements constituting the spray gun as well as their relationships are shown in great detail, also the one clearly shown in figure 2, namely that, as defined by feature (h), the front end of the paint nozzle tip projects from the front end of the central opening of the air cap, is disclosed by E1. From the drawings of E1 it cannot be concluded that only essential details relating to the invention referred to in the description are shown as asserted by the [patent proprietor]. Furthermore it needs to be taken into consideration that the projection concerned is shown in the same order of magnitude as other elements (in particular ones with associated reference numerals) like the air grooves 1a and the annular slit 4 formed, corresponding to feature (d), between an end portion of the nozzle and the central opening formed in the air cap. Further, although it has been asserted that a large number of documents exists showing spray guns of the kind concerned without the front end of the paint nozzle projecting, with the result that the projection shown in figure 2 of E1 should be disregarded, no such documents have actually been cited or submitted and no convincing reason has been given as to why - and which - disclosure(s) of other documents not referred to in E1 should be taken into account in the assessment of the disclosure of this document. At present it can be left open to what extent the above reasoning applies likewise to the argument of the [opponent] that in determining the disclosure of the drawings of E1 the rather similar drawings of the patent in suit and the corresponding description should be taken into account. 1428 | 3398
T 2296/09 – Sketchy
K’s Law – The ebook
[2.4] As can be derived from the above considerations the disclosure of E1 involves a spray gun according to the preamble of claim 1 in which, corresponding to feature (h), the front end of the paint nozzle projects from the front end of the central opening of the air cap. [2.5] Concerning the question of whether or not with the projection of the front end of the paint spray gun also a value for the length is disclosed which, as argued by the [opponent …], corresponds to a value of the value range defined by feature (i) the Board finds the arguments of the [patent proprietor …] more convincing, according to which the impugned decision is correct in not considering measurements taken from the drawings of E1 as a disclosure by these drawings. The reason given in the impugned decision is that the drawings can only be regarded as a conventional sketch which is not necessarily true to scale […]. [2.6] According to the [opponent] it is evident in view of the impression given by these drawings, in particular their accuracy and completeness, that these drawings show the spray gun in reduced but true scale. Since the scale of the drawings and thus measurements taken therefrom can easily be transformed into values present in the actual size spray gun, like all dimensions shown in the drawings, the value for the length of the projection of the front end of the paint nozzle tip measured in figure 2 and transformed to its actual size needs to be considered as disclosed by E1. In this respect it should be taken into account that the transformation factor from the reduced scale of the drawings in E1 to the actual size of the spray gun can easily be determined taking the actual size of the spray gun into account, which can easily be determined considering its nature as a hand held tool. Although at present it appears that by themselves the drawings of E1 can be considered as being true to scale the determination of the transformation factor referred to is subject to uncertainty, as the fact that the spray gun is a handheld tool does not lead to only one precisely determinable actual size. As a result, only a range of sizes for spray guns satisfying the constraints imposed on their size due to their nature as hand held tool is possibly derivable from the drawings. [2.7] Since this leads to different values for the projection of the front end of the paint nozzle tip of figure 2, no specific value for the length of the projection (nor one specific range of values) can be considered directly and unambiguously derivable from E1. To download the whole decision, click here. The
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You might have noticed that the same decision has been reported on Le blog du droit européen des brevets (here) almost simultaneously. This is not due to co-operation between the blogs, but an expression of the scarcity of decisions: we have not had a single new decision in more than two weeks.
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T 660/08 – It’s Always Been Tight
K’s Law – The ebook
T 660/08 – It’s Always Been Tight 31 Mrz 2012
This is an appeal against the revocation of the patent by the Opposition Division (OD). One month before the oral proceedings (OPs) before the Board, the patent proprietor filed a new main request and auxiliary requests I to XIX, replacing all previous claims. Obviously, the Board discussed the admissibility of these requests: [2] According to Article 13(1) RPBA, any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. [3] In the present case, with a letter of 1 November 2011, the [patent proprietor] filed twenty sets of amended claims, according to a main request and auxiliary requests I to XIX, replacing the four sets of claims on which the decision under appeal had been based. Re the main request and auxiliary requests I to III and X to XIII [4] The claims according to the main request and auxiliary requests I to III and X to XIII differ from the claims of the appealed decision essentially only by the following amendments:
the term “content” was replaced by “a television program”; the term “screen” was replaced by “display”; either the expression “in response to a user input” or the expression “in response to a channel change input” was added.
The first of these amendments limited the “content” displayed according to claim 1 to “a television program” which is displayed, thereby addressing the objection that the content could be an EPG cell as in D7. Since throughout the description of the application as filed it was clear that the content in question was meant to refer to a television program, this amendment did not add any complexity and, as it came as no surprise, did not negatively affect procedural economy. The second amendment was an unsubstantial correction making the wording of the claims more consistent. The third amendments were made in direct response to the board’s objection under A 123(2) (added subjectmatter) raised for the first time in the annex to the summons to OPs. These amendments were filed within the time limit set by the board, successfully addressed the board’s objection under A 123(2) and did not add complexity, as it raised no new issues. For the above reasons, the board decided to exercise its discretion under Article 13(1) RPBA to admit the [patent proprietor’s] main request and auxiliary requests I to III and X to XIII into the proceedings. Re auxiliary requests IV to IX and XIV to XIX [5.1] The [patent proprietor] did not dispute that the further amendments made in claim 1 according to each of these auxiliary requests introduced features which had not been in any of the claims of the granted patent, nor in any of the sets of amended claims examined by the OD. The further amendments in claim 1 according to these requests relate to features taken from the description [..] which only played a minor role in the application as filed: they were each mentioned only in one or two paragraphs of the 64-page long description and, with a few exceptions, were not even mentioned in any of the 186 claims of the international application as filed. Since these features may not even have been searched in the 1430 | 3398
T 660/08 – It’s Always Been Tight
K’s Law – The ebook
same context, were not examined by the examining division before grant of the contested patent, nor by the OD as possible amendments for maintaining the patent in amended form, they could not have been admitted, at this very late stage of the proceedings, without adjournment of the OPs. Hence, in view of the current state of the proceedings and the need for procedural economy, the board decided to exercise its discretion under Article 13(1) RPBA in refusing to admit auxiliary requests IV to IX and XIV to XIX into the proceedings. The [patent proprietor’s] arguments [5.2] The [patent proprietor] explained that the amendments had not been filed with the statement of grounds of appeal because, back in 2008, when the statement of grounds of appeal was filed, it was not possible to know that the board’s practice with regard to the admission of amended claims would become stricter. Regarding this argument the board noted that the current version of the RPBA had been published in the Official Journal in 2007 (OJ EPO 2007, 536) i.e. before the filing of the statement of grounds of appeal. Moreover, the text of the current Article 13(1) RPBA is identical to the text of the corresponding Article 10b(1) RPBA of the RPBA published in the Official Journal in 2003 (OJ EPO 2003, 61) which entered into force already on 1 May 2003. Therefore, in the absence of more specific submissions as to any tightening of the conditions for admission in the case law of the boards of appeal since 2008, this argument is not convincing. The [patent proprietor] also argued that, in the case of auxiliary request IV, the additional text “in full screen” was explicitly disclosed on page 47, lines 6 to 14, of the application as filed and implied by on page 4, lines 31 to 34, page 6, lines 6 to 8, and page 9, lines 6 to 10. The [patent proprietor] emphasized that this feature was prominent in the description of the application as filed, must have been searched and had been implicitly included in earlier discussions on inventive step. The board does not share this argument. The only clear disclosure in the application as filed of the feature that the television program is displayed “in full screen” is on page 47, lines 6 to 14, and, possibly, also on page 9, lines 6 to 10. These short text portions in a 64-page long description cannot be regarded as making this feature “prominent”, within the meaning of a feature of the invention which would obviously have been taken into account in the search and examination proceedings. Moreover, these passages state or imply that, instead of being displayed in a window (as shown, for instance, in figure 13), the television program could also be displayed in full screen, but they do not indicate what would happen in response to a user command selecting to display newsgroup listings related to this program. Whether the newsgroup listings would be overlaid on the television program displayed in full screen or whether the television program would be displayed in a smaller window in order to make space for the display of the newsgroup listings in another window or whether any other unspecified solution would be found, is left unanswered. The board regards the absence of answers to these obvious questions as a further indication that the display of the television program in full screen was not “prominent” in the application as filed. Moreover, the board has no evidence that this feature and its technical effects were taken into account in the drawing up of the search report or that they were implicitly included in earlier discussions on inventive step. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1872/08 – Abuse Of Discretion
K’s Law – The ebook
T 1872/08 – Abuse Of Discretion 30 Mrz 2012
May an Opposition Division (OD) be criticized for not having admitted comparative trials filed during the oral proceedings (OPs) ? Yes, under certain circumstances, as the present decision shows. This appeal was against the second revocation of the opposed patent. The patent had been revoked a first time in 2004, but the patent proprietor had filed an appeal and Board 3.3.01 had remitted the case to the OD for further prosecution based on the third auxiliary request (decision T 141/05). One day before the OPs, opponent 1 filed document D26. The OD did not admit the document because it was late filed and not prima facie relevant. During the OPs, the patent proprietor filed comparative tests. The OD decided not to admit them either. The OD then revoked the patent for lack of inventive step. The Board finally maintained the patent in amended form. Its decision contains an interesting paragraph on how the OD exercised its discretion. Evidence not admitted into the first instance proceedings [2.1] In the summons of the OD dated 12 November 2007 to attend OPs, 28 March 2008 was set as the final date under R 71a EPC 1973 for making submissions and/or amendments. Document D26 was enclosed with a letter received by the EPO by fax in the afternoon of 28 May 2008. The comparative tests were intended to be submitted during the OPs of 29 May 2008. Hence, both the document and the comparative tests were not submitted in due time. [2.2] According to A 114(2) “The EPO may disregard facts and evidence which are not submitted in due time by the parties concerned.” According to R 71a EPC 1973, new facts and evidence submitted after the final date set in the communication annexed to the summons “need not be considered, unless admitted on the grounds that the subject-matter of the OPs has changed.” The OD exercised the discretion conferred on it by the afore-mentioned provisions in the decision under appeal […]. It has to be assessed whether or not the OD exercised its discretion in the right way when not admitting document D26 and the comparative tests of the patentee into the proceedings (see G 7/93 [2.6]). Document D26 [2.3] The OD indicated the reasons for not admitting this late filed document under point 3.1 of the reasons of the decision under appeal. There it explained in detail why it was of the opinion that the disclosure of this document was not prima facie relevant for ink jet ink compositions and why this document could have been filed earlier. Regarding the reasons given by the OD for not admitting document D26, the Board is satisfied that the OD exercised its discretionary power correctly, namely on the basis of the given relevant facts, in accordance with the right principles and in a reasonable way. Hence, the Board saw no reason to overrule the OD’s decision. Consequently, it did not admit this document into the proceedings.
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T 1872/08 – Abuse Of Discretion
K’s Law – The ebook
The comparative tests which the patentee offered to submit during the OPs on 29 May 2008 [2.4.1] The OD indicated the reasons for not admitting this late filed evidence under point 3.3 of the reasons of the decision under appeal. Therein the OD stated that comparative tests filed at such a late stage would have taken the opponent by surprise. The OD goes on to argue as follows: “The fact that example 18 of D9 is highly relevant for the current proceedings has been made clear already during the appeal procedure. Besides, said example consists of a single mixture of pigments, so that there could not have any ambiguity how a fair comparative example should be done.” [2.4.2] How a fair comparative example should be done can be derived from point 4.3.1 of the decision under appeal, which refers to the comparative tests filed with the letter dated 28 March 2008. There it is stated that comparative tests should use inks with the same combination of pigments as in example 18 of document D9. The OD continued as follows: “Furthermore, the additional examples were made with one specific paper and one specific printer (both different from the paper and the printer used in D9 and from the examples of the opposed patent). Moreover, document D18, tables 11-13 describes that the a* and b*-value depend significantly on the paper and on the printer used.” [2.4.3] Document D18 was first cited by opponent II […] in its letter dated 20 September 2004 to show that an ink set consists of three or four inks of different colours […]. In the opposition and appeal proceedings prior to the issue of the written version of the decision under appeal, no reference was made to the fact that the a* and b*-value depend significantly on the paper and on the printer used. The OD thus introduced in its decision a new fact as a basis for the additional requirement to use certain types of paper and certain printers when preparing comparative tests. Moreover, the OD did not take into account that the offer of the patentee to present additional comparative tests was the immediate reaction to the objection first raised during the OPs, that the comparative tests submitted under cover of the letter dated 28 March 2008 were deemed to be insufficient. It did not weigh the patentee’s interest of submitting evidence to overcome this objection against the interest to take a decision soon. Lastly, in not admitting the comparative tests offered by the patentee, the OD did not take into account that it deemed further comparative data to be absolutely necessary in order to overcome its objections as to inventive step. The OD thus deprived the patentee of the possibility to defend its case effectively. For these reasons, the OD did not use its discretion in a reasonable way by not admitting the additional comparative tests. Therefore, the Board decided to overrule the decision of the OD in this respect and to admit into the proceedings these comparative tests, which the patentee resubmitted under cover of its statement setting out the grounds for appeal. [2.4.4] However, the reasons given under point [5.2.10] of this decision show, that the admission of these comparative tests has no effect on the outcome of the present decision. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 181/08 – Coverage
K’s Law – The ebook
T 181/08 – Coverage 29 Mrz 2012
Both the patent proprietor and two of the three opponents filed an appeal against the decision of the Opposition Division to maintain the opposed patent in amended form. The Board found the requests on file not to comply with A 123(2): [2.1] Claims 1 of all these requests contain differing or additional features with respect to claim 1 as granted and with respect to claim 1 as originally filed. [2.2] Claims 1 of all requests concern an oral pharmaceutical multiple unit tableted dosage form comprising
an enteric coating layer having a thickness of more than 20 μm and said layer comprising a plasticizer in an amount of 15-50 % by weight of the enteric coating layer polymer.
Both features are not contained in claim 1 as originally filed. They are derived from the description as originally filed, namely page 15, lines 18 to 23 and lines 10 to 12:
Claim 1 of the second auxiliary request contains a further feature which is also taken from the description as originally filed, i.e. page 16, lines 29 to 30:
As can be seen with regard to this further feature as an example, there are even more parameters in the description than thickness of the enteric coating layer or amount of plasticizer referring to multiple values and characterised by being “usual”, “preferred” or “more preferred” Under these circumstances, the person skilled in the art reading this description firstly finds no guidance with which of the preferred features to start and secondly which of the other features to combine. [2.3] Therefore, the combination of the two features “thickness of enteric coating layer of more than 20 μm” and “an amount of 15-50 % by weight of the enteric coating layer” is not directly and unambiguously disclosed in the application as originally filed and claims 1 of all requests containing this combination are in breach of A 123(2). [3] In addition to the arguments and conclusions set out under point [2] above which lead to the consequence under point [2.3], for the sake of taking account of all arguments presented by the appellant (patent proprietor), the following remarks are added:
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T 181/08 – Coverage
K’s Law – The ebook
[3.1] As a supporting argument, it was mentioned that all the examples covered the “20 μm” and “15-50 % by weight” combination of features. This remark could put the case close to that of cited decision T 330/05 in asserting that “coverage” by all the examples at least put particular weight on an embodiment carrying one of these features and that this weight would enable the skilled person to directly and unambiguously derive the combination of these features by starting at the particularly weighted embodiment und adding the further feature directly by selecting it from a single list. However, there is neither particular reference to the amount of plasticizer being in the range of “15-50 % by weight” in each of the examples (the values even have to be figured out by the reader himself and are not indicated as such and, in addition, at least also lie above 10%, one of the other alternatives on page 15 of the description) nor is there any mention of the thickness of the enteric coating layer in any of the examples, except example 15, and there, the thickness is not defined as representing “more than 20 μm” but only corresponding to “approx. 20 μm” which usually also includes a thickness slightly less than 20 μm. Thus, the appellant (patent proprietor)’s argument that – following the language in T 330/05 – a “most preferred embodiment” based on
either the enteric coating layer having a thickness of more than 20 μm or said layer comprising a plasticizer in an amount of 15-50 % by weight of the enteric coating layer polymer
could be derived from the examples to start with and then simply the second feature had to be added, cannot be followed. [3.2] The argument that there was no selection from lists leading to totally different embodiments for each item as selected also cannot hold. Narrowing down parameters or percentages of ingredients of compositions as used in current claims 1 does not in fact result in different products in terms of chemical structure. In any case, however, it results in products carrying different characteristics that, in case of doubt, create a difference with respect to products of the state of the art - which is usually precisely why such “narrowing down” of parameters and percentages is introduced into claims. [4] Thus, amended claims 1 of the main request and of the first to third auxiliary requests represent subjectmatter extending beyond the content of the application as originally filed (A 123(2)). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1880/11 – Untimely
K’s Law – The ebook
T 1880/11 – Untimely 28 Mrz 2012
The application under consideration was refused a first time by the Examining Division (ED) with a decision posted on October 4, 2005. The applicant filed an appeal; on July 24, 2009, Board 3.5.05 set the decision aside and remitted the case to the first instance “with the order to grant a patent on the basis of the main request ... and a description and figures to be adapted thereto” (T 408/06). The ED issued a communication under R 71(3) on January 12, 2010. In the attached documents, pages 9, 9a and 9b of the description were amended by the ED in order to adapt the description as required by the Board. In particular, the following sentence was added on page 9b: “The embodiments of figures 2, 3 and 5 do not specify the invention but only related technology.” In a first letter dated May 20, 2010, the grant documents were said to be approved, but with a request to amend the added sentence to: “The embodiment of figure 5 does not specify the invention but only related technology.” In a communication dated September 10, 2010, the ED raised an objection under A 84. In a second letter dated January 20, 2011, the applicant requested a new communication under R 71(3) wherein the sentence on page 9b should be deleted and the other amendments on pages 9, 9a and 9b maintained. There was also a conditional request for oral proceedings (OPs). The application was refused a second time by the ED with a decision posted on March 30, 2011. The reason for the refusal was lack of clarity. The applicant filed an appeal against this decision. It submitted a notice of appeal, together with “abbreviated Grounds of Appeal”: “Thus, to enable immediate allowance under interlocutory review, the Applicant hereby approves the amendments proposed by the Examiner on pages 9, 9a, and 9b as attached to the Communication under R 71(3) dated 12th January 2010.” A second statement of the grounds was received on July 14, 2011, repeating the approval and the requests, and a third statement of the grounds on 9 August 2011. Inter alia it was argued that there had been a procedural violation. The Board found that the ED had committed a substantial procedural violation. [2.1] In his third grounds of appeal dated 9 August 2011, the appellant submitted that there had been a procedural violation. He complained that the dialogue with the ED about the adaptation of the description had been improperly stopped by the issuing of a refusal decision. The appellant further argued that the ED had itself interpreted the ratio decidendi of the board of appeal’s decision and had not permitted any discussion on its interpretation […]. The letter ends with the assertion that “not permitting any further written submissions by the applicant” constituted a “procedural violation”. [2.2] In its communication dated 10 September 2010, the ED argued that the amendments of the ED were “a direct and unavoidable consequence of what has been ordered by the BoA (decision T 480/06, chapter 8)” […]. [2.3] The appealed decision (section 7) argues that:
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T 1880/11 – Untimely
K’s Law – The ebook
“the description ... contains subject-matter that does not fall within the scope of the claims since the decision T 408/06, chapter 8 explicitly identifies such subject-matter being not covered by the claims.” [2.4] The passage in the board of appeal’s decision cited by the ED reads (T 408/06 [8]): “… Conclusions [8] The board concludes that the claims of the main request satisfy the requirements of the EPC. However, the claims of the said request are understood to relate primarily to the embodiment according to Fig. 4 and the related passages of the description. The description includes further embodiments which are not covered by said claims. For example, the embodiments of Figs. 2 and 3 are understood to relate to a client-side “digital content management apparatus” which is used for the secrecy protection of the digital content, (cf. col.5 1.38-47).” It follows from this passage that figures 2 and 3 are understood to relate to embodiments which are not covered by the claims of the main request. [2.5] At the time when the ED had to decide on the request for OPs, the following arguments had been presented by the applicant: “It appears that with the other amendments made on page 9a and 9b, the application is now clearly adapted to the claims and the statement which was hand-written by the Examiner and amended by the representative seems redundant. There is no specific requirement in the Decision for an explicit positive or negative statement, merely for adaptation of the description. There is a conceivable risk that the negative statement may be adversely construed, however improper that might be, which is why we feel it unhelpful as well as unnecessary.” […] [2.6] In order to decide whether the ED committed a procedural violation, the board has to consider whether the ED had the discretion to reject the request for OPs. [2.7] A 116(1) EPC 1973 reads: “OPs shall take place ... at the request of any party to the proceedings. However, the EPO may reject a request for further OPs before the same department where the parties and the subject of the proceedings are the same.” The only other provision of the EPC allowing rejection of a request for OPs applies only to the Receiving Section (A 116(2) EPC 1973). Thus the EPC defines only one situation which allows the ED to reject a request for OPs: the request is for further OPs (which applies here; the first OPs before the ED took place on 8 July 2005); it must be before the same department (applies here); the parties must be the same (applies here) and the subject of the proceedings is the same. The last condition does not apply here since the claims are different and there is a new subject, namely how to adapt the description and the figures in order to fulfil the order of the board of appeal’s decision. [2.8] As to the statement in the appealed decision, section 7: “The auxiliary request for OPs is not allowed since a point to be discussed is prerequisite for the summons to OPs and the applicant is not entitled to continue discussing issues on which the division has no right to decide. In the present case in view of A 111(2) the ED is not entitled to discuss the ratio decidendi of the Boards of Appeal decision T 408/06.” Firstly, as follows from the above there is no basis for this to be found in the EPC, in particular not in A 116(1) EPC 1973. [2.9] Secondly there was in fact clearly a need for and an entitlement to discussion between the ED and the applicant in this case. At least the following questions could have been discussed during OPs:
Does the above cited section [8] of the board of appeal’s decision belong to the ratio decidendi of the decision? Does section [8] leave room for interpretation since the wordings “primarily” and “understood” are used?
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T 1880/11 – Untimely
K’s Law – The ebook
Did the ED interpret the ratio decidendi of the board of appeal’s decision or did it strictly follow the ratio decidendi? Does section [8] force the addition of the sentence “The embodiments of figures 2, 3 and 5 do not specify the invention but only related technology.” to the description?
[2.10] Moreover the outcome of the OPs could clearly have had a decisive influence on the outcome of the examination procedure as a whole. Thus, the rejection of the request for OPs by the ED constitutes a substantial procedural violation. [2.11] The appellant did not request the reimbursement of the appeal fee. The board could grant the reimbursement even without such a request. According to R 103(1)(a) the prerequisites for reimbursement are the allowability of the appeal, equity and a substantial procedural violation. While the first and last of these conditions are satisfied in the present case, the fact that the appellant now does not request more than was in fact offered in the R 71(3) communication and so could have been achieved even without the (refused) OPs, means that reimbursement would not be equitable. The appropriate order [3.1] The board could only guess at the ED’s reasons for not granting interlocutory revision as requested, since, in accordance with A 109(2) EPC 1973, it passed the appeal to the board without comment. The board refrains from making any such guess. Prima facie the ED should have granted interlocutory revision, since the applicant now accepted the text which had been proposed to it. However the board notes that an ED is not bound, even by an applicant’s approval of a text put forward by the division to grant a patent on that text (G 7/93, [2.1, penultimate paragraph]). Given that the dialogue between division and applicant was brought to a premature end by the untimely issuance of a refusal decision without holding the OPs requested, the board therefore uses its discretion under A 111(1) EPC 1973 and remits the case to the department of first instance for further prosecution (bearing in mind that the final form of the claims has already been decided). Should you wish to download the whole decision, just click here. The
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Great minds think alike; Laurent Teyssèdre has commented this decision on the very same day (here).
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here.
T 690/10 – What If
K’s Law – The ebook
T 690/10 – What If 27 Mrz 2012
The appeal was filed against a refusal of an application based on an international application. Claims 1 and 2 as originally filed read: 1. A pharmaceutical composition, for delivery of carbon monoxide to a physiological target, comprising a metal carbonyl compound or pharmaceutically acceptable salt thereof and at least one pharmaceutically acceptable carrier, wherein the metal carbonyl makes available CO suitable for physiological effect by at least one of the following means: 1) CO derived by dissociation of the metal carbonyl is present in the composition in dissolved form; 2) on contact with a solvent the metal carbonyl releases CO; 3) on contact with a tissue, organ or cell the metal carbonyl releases CO; 4) on irradiation the metal carbonyl releases CO. 2. A pharmaceutical composition according to claim 1, wherein the metal carbonyl compound is a complex of at least one of Fe, Mn, Ru, Rh, Ni, Mo or Co with at least one carbonyl ligand. In its communication dated July 15, 2003, the EPO, acting as ISA, invited the applicant pursuant to Article 17D3(a) and Rule 40.1 PCT to pay seven additional search fees. The ISA found that the subject-matter concerned metal carbonyl compounds releasing carbon monoxide in organisms to increase the CO-concentration and their use in therapy. Such compounds were already disclosed in document D3. The ISA found that there were eight different inventions claimed: seven classes of CO-containing metal-complex compounds and one invention concerning formate- or oxalate-derivatives. The ISA searched only the first of these inventions, i.e. pharmaceutical compositions for the delivery of carbon monoxide to a physiological target comprising the metal Fe, and the therapeutic uses of these compositions. After entry into the regional phase, the Examining Division (ED) in its first communication, dated May 14, 2004, confirmed the lack of unity objection raised by the ISA and asked the applicant whether it wished to obtain a European search report for the other inventions under R 112 EPC 1973. In response to this communication, the applicant filed a new set of claims with its letter dated July 5, 2004 and paid one additional search fee to have a search performed on these claims. It did not provide any indication as to the invention to which the additional search should be directed. A second communication was issued by the ED on July 12, 2005, stating that the applicant could not amend the application at this stage. The ED further asked the applicant to indicate on which of the inventions as identified in the annex accompanying the communication under R 112 EPC 1973 the additional search should be performed. In reply to this communication, the applicant requested the refund of the search fee and asked that examination be started on the set of claims filed on July 5, 2004. Arguments in support of unity of invention were also provided. In its third communication, issued on November 8, 2005, the ED again confirmed the lack of unity of the application as filed and asked the applicant to restrict the application to the invention searched (the first invention). The applicant replied by a letter dated July 31, 2006, filed a new set of claims and presented arguments for unity of invention and to the effect that the amended claims did not relate to unsearched matter.
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T 690/10 – What If
K’s Law – The ebook
A fourth communication was issued by the ED on 8 February 2007. Since the last set of claims still contained unsearched subject-matter, this set of claims had been considered as inadmissible on the basis of R 46(1) and R 112 EPC 1973 in conjunction with opinion G 2/92. The ED again requested the applicant to limit the application to the invention searched. In reply to this communication, the applicant contested the findings of the ED. The claims were still not restricted to the only invention searched. A summons to attend oral proceedings (OPs) was sent out on April 2009. the ED once more invited the appellant to “limit the application to the invention covered by the International Search Report”. The OPs were held in the absence of the applicant. The application was refused. Together with its appeal, the applicant filed a new main request identical to claim 1 as filed on July 31, 2006, as well as three auxiliary requests. In what follows, the Board examined the unity objection with respect to the application as originally filed : [3.1] A 82 EPC 1973 (which was not amended in the EPC 2000 revision) deals with the requirement of unity of invention and states the principle that a European patent application should relate to one invention only or to a group of inventions so linked as to form a single general inventive concept. R 30 EPC 1973 (in comparison to which no substantive amendments were made in the corresponding provision of the EPC 2000, i.e. R 44) defines the method for determining whether the requirement of unity of invention is satisfied in respect of a group of inventions claimed in a European patent application. Unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more of the same or corresponding “special technical features”. The expression “special technical features” is defined in R 30 EPC 1973 as meaning those features that define a contribution which each of the inventions, considered as a whole, makes over the prior art. Claim 2 of the application as originally filed constitutes seven equal embodiments representing a group of inventions which supposedly involve one or more of the same or corresponding “special technical features” defining a contribution which each of the inventions, considered as a whole, makes over the prior art in order to establish a technical relationship that guarantees unity of the application. Firstly, the “special technical features” that this group of inventions can involve are all or scope of the features of claim 1, because this claim 1 includes the subject-matter of claim 2. The subject-matter of claim 1 relates to a pharmaceutical composition, for delivery of carbon monoxide to a physiological target, comprising a metal carbonyl compound or pharmaceutically acceptable salt thereof and at least one pharmaceutically acceptable carrier, wherein the metal carbonyl makes available CO suitable for physiological effect by at least one of the following means: 1) CO derived by dissociation of the metal carbonyl is present in the composition in dissolved form; 2) on contact with a solvent the metal carbonyl releases CO ; 3) on contact with a tissue, organ or cell the metal carbonyl releases CO ; 4) on irradiation the metal carbonyl releases CO. In the description, it is stressed that “the ligands to the metal may all be carbonyl ligands, as e.g. in [Mn2(CO)10]” […], which means that such metal carbonyl compounds, including e.g. iron pentacarbonyl, must make available CO suitable for physiological effect by at least one of the means as defined under points 1 to 4 in claim 1, which is part of the common general knowledge of a chemist. Secondly, there could be a common feature within claim 2 representing the “special technical feature” unifying the seven teachings concerning seven metals, which is not set out explicitly in this context, for instance a teaching relating to the use of a transition metal carbonyl to deliver CO with physiological effect. 1440 | 3398
T 690/10 – What If
K’s Law – The ebook
Document D3 discloses a pharmaceutical composition (see claim 6 in combination with claim 1), for delivery of carbon monoxide to a physiological target (see claim 1), comprising a metal carbonyl compound or pharmaceutically acceptable salt thereof and at least one pharmaceutically acceptable carrier (see claim 6 relating to iron pentacarbonyl representing a transition metal and even one of the particular metals mentioned in claim 2 of the application in suit), wherein the metal carbonyl makes available CO suitable for physiological effect by at least one of the following means, namely on contact with a tissue, organ or cell the metal carbonyl releases CO (see column 1, lines 44 to 53 of document D3, which is in line with the argumentation in the paragraphs before). Consequently, all the features of claim 1 of the application as originally filed, and even the feature relating to “transition metals” which were common to the metals in claim 2 itself, are anticipated by the teaching of document D3; finally, even one of the metals itself is already mentioned in document D3. Therefore, from the features contained in claim 1, none is left that could be regarded as a “special technical feature” to provide unity for the embodiments representing the group of inventions under claim 2, and there is also no additional feature which could serve as the special technical feature within the meaning of R 30 EPC 1973. Consequently, in accordance with the ISA’s argumentation in the invitation to pay additional search fees and the argumentation of the ED, there remains no special technical feature that could define a contribution which any of the claimed inventions could make over the prior art. Thus, the original set of claims does not satisfy the requirements of A 82. The non-unity objection raised for the initial claims by the International Search Division [sic] during the international search, and the resulting invitation to pay further search fees under R 112 EPC 1973 for a search with respect to inventions numbers 2 to 8, were thus justified. [3.2] The appellant’s argument that the current non-unity objection would not have occurred if claim 2 of the application had not existed cannot succeed. Nor can the argument that it would have been no undue effort to the ISA to make a search for the subject-matter of the whole application without raising the non-unity objection. As for the first argument, the fact is that seven specific examples for the metal atoms are mentioned in claim 2. That is the same situation as if seven separate claims had been set out with respect to the seven metals. They define a group of seven different teachings, and it is the first of these seven specific teachings, containing Fe as the metal, that is not new with respect to document D3. Beyond this fact and the resulting conclusion, the board sees no possibility to consider speculative situations with respect to the subject-matter that could have been claimed, because their implications would be different and are not known. The second argument relates to Chapter VII-12 of the PCT International Search Guidelines (PCT Gazette No. S06/1998) giving the possibility to the searching authority to search a group of inventions together and to include the result in the ISR, even if they lacked unity. This regulation applies to a situation in which the search examiner is able to make a complete international search for more than one invention with negligible additional work. Nevertheless, it is fully within the examiner’s discretion to decide on this matter and nothing has been submitted by the appellant to suggest that this discretion was misused in the present case. The board cannot find any such reasons either. The Board then found all the requests on file unallowable because none of the claims 1 of the main request or of the auxiliary requests 1 to 3 is restricted to Fe-containing metal-carbonyl complexes ; consequently, they all contain unsearched subject-matter. The appeal was dismissed. I am not much of a chemist, but it looks to me as if it was advantageous not to place a Markush-type claims (or equivalents) immediately after a broad main claim, in order to avoid unity objections (and all the troubles that may arise therefrom) during the search phase. 1441 | 3398
T 690/10 – What If
K’s Law – The ebook
Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1679/09 – When One Becomes Two
K’s Law – The ebook
T 1679/09 – When One Becomes Two 26 Mrz 2012
Recently, a reader enquired on case law concerning R 80. Well, here is a recent decision dealing with a multiplication of independent claims in the course of opposition proceedings. One landmark decision on this topic was T 223/97 [2.2], where Board 3.2.1 stated (my translation of the French original): “According to a principle set forth in decision G 1/84 [9] opposition proceedings are not to be considered an extension of the examination proceedings and is not to be misused as such. This means that only the independent claims challenged in the opposition may be amended, provided that this amendment is a response to the grounds for opposition invoked, in particular lack of patentability, and also satisfied the requirements of the EPC and in particular the double requirement expressed in paragraphs 2 and 3 of A 123. It is clear that the addition of two new independent claims cannot be admissible because this addition, which does not have any effect on the fate of claim 1 that has been challenged, cannot be considered to be a limitation of claim 1 itself in response to a ground for opposition that has been invoked against it. If claim 1, as here, covers two particular embodiments, the patent proprietor may as a response to the lack of patentability, limit [the patent] to those two embodiments and, consequently, file two independent claims each of which protects one of those two embodiments. If, as in the auxiliary request, the main claim that has been challenged is deleted, the two new independent claims replacing it constitute a limitation of this main claim because only two particular embodiments are still protected. As a consequence, these claims are admissible provided that they satisfy the double condition of A 123(2) and (3). However, if, as in the main request, the main claim, which already covers the two particular embodiments is essentially maintained in its entirety, the introduction of these two new requests (3 and 4) violates the well-established principle mentioned above, because then the addition of those two new claims cannot be considered to be a limitation of the main claim itself in response to the ground for opposition, i.e. the lack of patentability invoked against it. Moreover, the requirement of concision of the claims pursuant to A 84 [EPC 1973] pleads against the introduction of superfluous new claims that do not improve the fate of the European patent under consideration. Therefore, [the Board] has to conclude that the independent claims 3 and 4 that have been introduced in the course of the opposition proceedings are not admissible.” (my emphasis) In the present case, both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. Claim 1 of the main request (identical to the set of claims as granted) read (in English translation): A reel changer for a web-fed rotary printing press with a drive with at least one electric motor (03) by which a material reel (02), which is held on a receiving unit (06) in the reel changer (01) and onto which the material web is wound, is capable of being driven in a rotating manner, wherein the electric motor (03) is embodied as a synchronous motor (03), characterized in that the rotor of the synchronous motor (03) has poles comprising permanent magnets.
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T 1679/09 – When One Becomes Two
K’s Law – The ebook
Auxiliary requests I, Ia and Ib each had two independent claims: 1. A reel changer for a web-fed rotary printing press with a drive with at least one electric motor (03) by which a material reel (02), which is held on a receiving unit (06) in the reel changer (01) and onto which the material web is wound, is capable of being driven in a rotating manner, wherein the electric motor (03) is embodied as a synchronous motor (03), wherein a receiving unit (05; 06; 16) engages with each end of the two ends of the material reel (02), wherein two pairs of receiving units (05; 06; 16) are arranged so that each receives one material reel (02) or a scrap reel, wherein each receiving unit (05; 06; 16) of the reel changer has its own actuator (21) for adjusting the receiving units (05; 06; 16) in the axial direction of the material reel (02), wherein the actuators (21) are movable together with the receiving units (05; 06; 16). 2. A reel changer for a web-fed rotary printing press with a drive with at least one electric motor (03) by which a material reel (02), which is held on a receiving unit (06) in the reel changer (01) and onto which the material web is wound, is capable of being driven in a rotating manner, wherein the electric motor (03) is embodied as a synchronous motor (03), wherein the rotor of the synchronous motor (03) has poles comprising permanent magnets, wherein a receiving units (05; 06; 16) engages with each end of the two ends of the material reel (02), wherein two receiving units (05; 06; 16) are arranged for bearing the material reel (02), wherein both receiving units (05; 06; 16) are rotatably supported and wherein only one of the two receiving units (05; 16) is driven by the electric motor (03), wherein the receiving units (06; 16) have structurally identical bearings. The Board found the main request to lack inventive step and then dealt with auxiliary requests I, Ia and Ib. Here is what the Board had to say on their compliance with R 80: *** Translation of the German original *** [4.1] The OD did not admit auxiliary request I inter alia based on R 80 because the addition of the second independent claim 2 was not required to overcome an objection under A 100 (a). This was only admissible in exceptional cases. The OD also argued that its reasoning was supported by decisions T 610/95 and T 181/02. [4.2] The Board cannot adopt this point of view, for the following reasons: R 80 essentially provides that the description, claims and drawings of the European patent may be amended, provided that the amendments are occasioned by a ground for opposition under A 100, even if that ground has not been invoked by the opponent. In the present case the single independent claim of the patent as granted was considered to lack novelty. During the opposition proceedings [the patent proprietor] has filed two independent claims limited to different subjectmatter, wherein the independent claim as granted was limited by adding the features of dependent claims as granted (claims 36, 47, 53 and 54, and claims 36, 37 and 40, respectively). The Board is of the opinion that the
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T 1679/09 – When One Becomes Two
K’s Law – The ebook
[patent proprietor] was right in pointing out that under these circumstances such an amendment complies with the requirements of R 80. [4.3] Decision T 181/02, which has been cited by the OD, discusses a situation that can be compared to the present case. There also the competent Board came to the conclusion that the replacement of a single independent claim by two or more dependent claims may be caused by a ground for opposition, e.g. when two dependent claims as granted were inked in parallel to a single independent claim. Then the filing of two independent claims might be possible. Decision T 610/95, which has also been cited in the impugned decision, concerns the situation where the patent proprietor keeps the single independent claim which has been attacked in the opposition proceedings and adds a second independent claim, which was considered to be inadmissible in view of R 57a EPC 1973 (now R 80). However, as the present factual situation is different, decision T 610/95 is not suitable for justifying the dismissal of auxiliary request I based on R 80. Even considering said decisions the Board is of the opinion that auxiliary request I complies with the requirements of R 80. For the same reason, auxiliary requests Ia and Ib also comply with the requirements of R 80. Should you wish to download the whole decision (in German), just click here. The
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NB: Another interesting decision in this context is T 642/06 [4.2], where Board 3.2.03 said (again, my translation of the French original): “Moreover, the set of claims filed comprises not one single independent claim by three such claims, i.e. new claims 1, 10, and 15, which are based on the combinations of claims 1 and 6, claims 1 and 10 and claims 1 and 3 as granted. However, dependent claims 3, 6 and 10 as granted are neither parallel nor exclusively dependent on claim 1. Quite obviously, as their subject-matter is not directed at alternative or equivalent developments of a single concept or embodiment (see Case Law, 5th edition, 2006, VII.C.6.1.3 and T 181/02), they cannot correspond to the only exception where the case law allows the filing of supplementary independent claims during opposition or opposition appeal proceedings. The amendments included in the set of claims according to the first auxiliary request go beyond the amendments that are necessary for overcoming the grounds for opposition (in particular, A 56) and, therefore, violate R 80.” (my emphasis)
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K’s Law – The ebook
T 188/09 - No Good Reason
T 188/09 - No Good Reason 24 Mrz 2012
This appeal deals with the refusal of an application by the Examining Division. The applicant argued that the “problem-solution approach” should not be used. Although this approach was used as a tool to provide a consistent approach to the assessment of inventive step, there were cases where its application was not appropriate because it hindered rather than assisted in answering the ultimate question of whether or not the claimed subject-matter was obvious over the prior art. This was acknowledged in decision T 465/92. The Board was unwilling to adopt this argument and to follow T 465/92 – which, incidentally, is referred to as a “one-off” decision in the Case Law Book: [1] The “problem and solution approach” is regularly applied as an auxiliary means by the instances of the EPO in the course of deciding whether or not claimed subject-matter fulfils the requirements of A 56. [2] The appellant, referring to decision T 465/92, observes that there are however cases where the “problem and solution approach” hinders, rather than assists answering the question of whether claimed subject-matter is obvious over the prior art. [3] In decision T 465/92 [6-9.6] the board explicitly decided not to use the “problem and solution approach”. Thus, the board understands the appellant’s reference to this decision as an argument that the present case is one where the “problem and solution approach” should not be used. [4] The board notes first that whatever approach is applied as an auxiliary means for the evaluation of inventive step of claimed subject-matter, in a given evidential situation it must provide the same result, be it either in favour of or against inventive step. Therefore, in the present case, even if the “problem and solution approach” was applied, the decision on inventiveness should be the same as if it was not used. [5] Moreover, according to the reasons of decision T 465/92, the board decided to avoid the “problem and solution approach” because it considered that the seven relevant citations were all equally close to the claimed invention and that therefore, the opponent “ought not to be tied down by having to select one or more citations as being closer than others” (see points [9.3] and [9.4] of the reasons). Consequently, the board considered them all individually without selecting one as the closest prior art document. [6] The board in decision T 465/92 [9.5] also notes that there may be situations which “can result in a complicated multi-step reasoning where the facts were clear, either for or against inventiveness. Thus, if an inventions breaks new ground it may suffice to say that there is no close prior art rather than constructing a problem based on what is tenuously regarded as the closest prior art.” [7] None of the circumstances for the avoidance of the classical “problem and solution approach” referred to in decision T 465/92 is present in the case at hand, i.e. neither can the claimed subject-matter be considered as breaking new ground, since document D4 describes a G-protein coupled receptor specifically located in taste cells nor is there a large number of equally close prior art documents […]. [8] Thus, having considered the rationale in decision T 465/92 the present board does not see a reason to apply the approach adopted by the board in that decision rather than the classical “problem and solution approach”. T 465/92 was indeed more radical than what is said about it in the present decision, because it made the somewhat provocative statement that the problem-solution approach, “as it relies on the results of a search made with actual knowledge of the invention, it is inherently based on hindsight, and therefore calls for care in its application in some circumstances” (point [9.5] of the reasons). If this were true, then the statement under point [4] above would not be correct any more because a method based on hindsight will not always give the same results as a method that is not. However, even if the statement in T 465/92 was correct, if an invention was found to be inventive when assessed with an approach based on hindsight, then it should a fortiori be inventive
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K’s Law – The ebook
T 188/09 - No Good Reason
when assessed with an approach that was not flawed by hindsight. The reverse would not be true. Please correct me if I am wrong. To download the whole decision, click here. The file wrapper can be found here.
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T 1248/08 – What’s Your Number?
K’s Law – The ebook
T 1248/08 – What’s Your Number? 23 Mrz 2012
This is an appeal against the revocation of the European patent under consideration. Claim 1 of the patent as granted read: A coating solution for forming a film for cutting off heat radiation which contains fine particles of at least one hexaboride and fine particles of tin-containing indium oxide (ITO) or antimony-containing tin oxide (ATO), in a weight ratio of from 0.1:99.9 to 90:10, said hexaboride being represented as XB6 where X is Y, La, Ce, Pr, Nd, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb, Lu, Sr or Ca provided that, when the hexaboride is LaB6, the weight ratio of LaB6 to ITO or LaB6 to ATO is not 18.6:81.4. Claim 1 of the main request before the Board read: A coating solution for forming a film for cutting off heat radiation which contains fine particles of LaB6 and fine particles of tin-containing indium oxide (ITO) or antimonycontaining tin oxide (ATO), provided that the weight ratio of LaB6 to ITO is from 0.62:99.38 to 10.7:89.3 and the weight ratio of LaB6 and ATO is from 1.10:98.9 to 13.8:86.2. (my emphasis) The opponent raised objections under A 123(2) against the value of LaB6/ITO of 0.62:99.38, which was based on the alleged disclosure of 0.09 for the LaB6 concentration. According to the opponent, this value was not unambiguously derivable from the application documents as originally filed. The patent proprietor considered that the proposed value of “0.09” in example 1 of Table 1 was allowable because it was clearly and unambiguously derivable from the application documents as originally filed.
Moreover, the value was indirectly derivable from the plotted points in Figure 2 at the position x = LaB6 /(LaB6 + ITO) = 0.06 which agreed with the proposed value of 0.09 for the hexaboride concentration, but not with alternative values of “0.08” or even “0.05”.
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T 1248/08 – What’s Your Number?
K’s Law – The ebook
The opponent argued that the scale of the axes and the plotted points in Figure 2 made it impossible to distinguish between 0.62% and 0.55%, and hence it could not be used to confirm the value of 0.09 in example 1 of Table 1. The Board agreed with the opponent: Amendments (A 123(2) and (3)) Main request […] [1.1.1] In the application as filed (page 24, Table 1, first row, second column), a number pertaining to the value of the amount of the Lanthanum hexaboride used in example 1 was illegible and indecipherable. It was not clear whether it should read “0.08” or “0.09”, or even “0.05”.
The board is not persuaded by the appellant’s arguments that the actual disclosure of that figure was unequivocal and that it reads “0.09”. According to the board, said value, in particular the number “9” thereof, is neither directly and unambiguously derivable from said Table 1 […] because the entry in question is so poorly legible that it may be interpreted as “0.08” or as “0.09” or even as “0.05”, nor can it be derived in an unambiguous manner from the position on the abscissa of the corresponding data points on the graph of example 1 in Figure 2 as filed. To avoid any ambiguity, a higher degree of accuracy would be required so that the position of the plotted points could be ascertained with a precision of as little as 0.07. Such a precision is, in the board’s opinion, impossible to achieve in view of the scale of the abscissa of Figure 2 and in view of the fact that the data “points” are represented by circles having themselves a diameter of at least about 0.05. The application documents as originally filed are therefore ambiguous in this respect. [1.1.2] In accordance with the established jurisprudence of the Boards of Appeal of the EPO, and contrary to the assertions of the appellant, in the case of a proposed amendment under A 123(2) or of a correction under R 139, the factual disclosure of a European patent application as originally filed has to be established to a rigorous 1449 | 3398
T 1248/08 – What’s Your Number?
K’s Law – The ebook
standard, namely the standard of certainty “beyond reasonable doubt” (see T 113/86 [2.2]; T 383/88 [2.2.2]; T 581/91 [3, last three paragraphs]; T 723/02 [2.4]; T 1239/03 [3.3.3]). In the above-cited decisions, the boards explicitly rejected the “balance of probabilities”, the normal standard of proof in civil proceedings, as an appropriate criterion to be applied. In particular, it was decided in T 113/86 that “amendments requested by the Patentee should not be allowed if there was the slightest doubt that the unamended patent could be construed differently to the patent as amended”. In T 383/88 the board remarked that “applying a lower standard could easily lead to undetected abuse by allowing amendments on the basis of ostensibly proven common general knowledge.” [1.1.3] The board considers that the above-cited jurisprudence is eminently important and clearly applicable to the present case, where an analogous question of compliance or non-compliance with the requirements of A 123(2) needs to be decided, namely the question of whether a particular proposed feature is disclosed in the application documents as originally filed. Following the established jurisprudence, the board considers that the balance of probabilities is not an acceptable standard for determining the actual value and that this question should be [determined] on the basis of the rigorous standard of certainty characterised as “beyond reasonable doubt”. Therefore, the arguments of the appellant adopting a proof “on the balance of probability” in favour of the value of “0.09”, in particular the survey A6, must fail. According to this survey – conducted amongst partners and staff at Withers & Rogers LLP (the firm of the [patent proprietor’s] representative) – out of 72 test persons, a total of 67 indicated the relevant entry in Table 1 to be “0.09” without qualification. However, it was also found that two respondents indicated another figure (“0.08”) and that three further respondents who indicated “0.09” had also considered other possibilities. In the board’s opinion, therefore, these results demonstrate that the value in question cannot be considered to be “0.09” with a certainty “beyond reasonable doubt”, as required by the established jurisprudence. In any event, a question of accuracy and disclosure cannot be decided by a poll. [1.1.4] The appellant also pointed to the priority document of the patent in suit and to the family patent document A8 (published 20 November 2001) as potential sources of supplemental original disclosure. This approach must fail, because the Enlarged Board of Appeal (EBA) ruled in decision G 11/91 [7] that “[b]efore a correction can be made under R 88, second sentence, it has to be established in point of fact what actually a skilled person would derive, on the date of filing, from the parts of the European patent application relating to the disclosure. As a result of the prohibition of extension under A 123(2), documents other than the description, claims and drawings may only be used insofar as they are sufficient for proving the common general knowledge on the date of filing. On the other hand, documents not meeting this condition may not be used for a correction under R 88, second sentence, even if they were filed together with the European patent application. These include, inter alia, priority documents, the abstract and the like.” (emphasis added). Therefore, the disclosure of the priority document cannot be used to supplement or replace parts of the disclosure of the application as originally filed. Nor can it be used to dispel doubts as to the meaning of an ambiguous part of the application. The same applies to the family documents, for the reason that the text of another patent application based on the same priority document need not be identical to the European patent application. [1.1.5] In view of the above reasoning, the lower limit of the ratio of LaB6 to ITO of 0.62:99.38 […] and derived from a weight ratio of 0.09 to 14.5 (Table 1, example 1) is not disclosed in the originally filed documents. For comparison only, a weight ratio of 0.8 to 14:5 in example 1 would yield the weight ratio of 0.55:99.45. The board observes that an amendment to 0.55:99.45 would also not be allowable because of a lack of a clear and unambiguous disclosure of the concentration value of 0.08 in Table 1 as originally filed. The requirements of A 123(2) and (3) are thus not met. The main request [… is] not allowable. Should you wish to download the whole decision, just click here. The file wrapper can be found here. NB : The decision has already been reported on Le blog du droit européen des brevets (here). 1450 | 3398
T 1575/07 – When Things Get Narrow
K’s Law – The ebook
T 1575/07 – When Things Get Narrow 22 Mrz 2012
This appeal was filed against a decision to refuse a European patent for lack of inventive step. Claim 1 of the main request before the Board read as follows: A method for managing maintenance of equipment comprising: storing, in a database (116), first data defining a plurality of planned maintenance tasks for equipment (302,304,306); storing, in the database (116), second data defining a plurality of unplanned maintenance tasks for the equipment (310,312,314); storing, in the database (116), location data associating the planned maintenance tasks (302,304,306) with the unplanned maintenance tasks (310,312,314) where the location data identifies the physical location on the equipment associated with completion of the planned maintenance tasks and associated with the unplanned maintenance tasks; identifying using a user interface a planned maintenance task for the equipment (308); and based on the location associated with completion of the planned maintenance task, retrieving from the database (116) all unplanned maintenance tasks (310, 312, 314) that are associated with the identified planned maintenance task (308). The Board came to the same conclusion as the Examining Division (ED). When applying the problem-solution method, it made an interesting statement on technical problems. The application [2] When performing routine maintenance work an unfortunate problem tends to occur, namely that unplanned work is discovered, also termed “above and beyond” or “emergent” work […]. The invention is concerned with the identification and categorisation of the extent of such work, which is crucial to dealing with it successfully and managing the maintenance schedule. [3] The solution offered is essentially to store all the planned routine maintenance tasks in a database along with unplanned work that is likely to be found at the same physical location as the routine work. When an intended planned maintenance task (e.g. “inspect left wing hydraulic lines”) is entered into the system, the location associated with that task (e.g. “left wing”) is used to retrieve associated possible unplanned tasks that should be checked at the same time (e.g. “left wing airframe damage”) […]. [4] In another aspect of the invention, the location can be entered and the system shows all the tasks (both planned and unplanned) associated with that location […]. Main request [5] The appellant’s essential argument is that displaying only unplanned maintenance tasks based on the location of the given planned maintenance task solves the technical problem of filtering data retrieved from the database so that only the most useful or relevant data is presented to a user. This is said to be a technical problem in the light of T 49/04. This is because this decision concludes that “the presentation of natural language text on a display in a manner which improves readability, enabling the user to perform their task more efficiently, relates to how, i.e. by what physical arrangement of the text, cognitive content is conveyed to the reader and can thus be considered as contributing to a technical solution to a technical problem”. This decision is based on the judgement in that case that the physical arrangement of text (the “how”) was a technical solution to the technical problem of improving readability of the text. However, the present Board does not consider that it is a general statement to the effect that any feature that relates to “how” information is conveyed to the user involves technical considerations. In particular, if the “how” simply concerns putting data in a table for easier comprehension, this is clearly still only a presentation of information, excluded from patentability. As stated in decision T 1143/06 [5.4], which discusses T 49/04 at more length, the manner of presentation has to have a credible technical effect. 1451 | 3398
T 1575/07 – When Things Get Narrow
K’s Law – The ebook
[6] In the Board’s view that is not the case here. The Board agrees with the ED […] that showing data that is useful or relevant to an administrative maintenance scheme is essentially a part of that administrative scheme and not part of a technical process. Basing the choice on the “location” of the maintenance task does not change that. The only link to anything technical is that the maintenance is on “equipment”. However, this is a remote connection and is not directly related to the displaying, which has to do with the administrative process, and thus cannot contribute to the technical nature of the problem. Similarly, in the Board’s judgement, there is no interaction, in the sense of T 154/04, of these non-technical features with the technical features of the database and the user interface, which operate in a conventional manner. In particular, there is no functional modification of the database, just a storage of different data. Thus in the Board’s view, the problem reduces to that of implementing such a filtering. The claim gives no details of the actual implementation, and the Board agrees with the ED that it would be obvious to consider using standard data processing hardware containing a database and a user interface for this purpose. [7] The above also explains the apparent paradox in the ED’s reasoning alluded to by the appellant that a broad problem cannot be formulated despite the lack of relevant prior art. According to the problem and solution approach, the objective technical problem is based on the distinguishing features. It is therefore true that when there are many distinguishing features, as when there is no close prior art, the problem tends to be broad. However, only the features having technical character should be considered. If these are few in number a narrower, more specific, formulation of the problem is appropriate. Since this is the situation in the present case, the Board judges that the ED was correct in identifying only the implementation of the filtering as the technical problem. […] [10] Accordingly, claim 1 […] lacks an inventive step (A 56 EPC 1973), so that the appeal must be dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1057/09 - Public Or Not Public
T 1057/09 - Public Or Not Public 21 Mrz 2012
The opponent (the Thor company) filed an appeal against the decision of the Opposition Division to maintain the opposed patent as amended. The opponent’s argument was essentially based on Mr Rüdiger Baum’s diploma thesis (Diplomarbeit), hereinafter referred to as D1, and disclosures related to it. According to the opponent, D1 was handed over to Mr Schmidt, manager of Thor who is to be considered as a member of the public, in 1993. The content of D1 was also made available to the public in a presentation held on May 11, 1993. In what follows, the Board deals with these disclosures: [5.1] The opponent alleged that before the priority date of the patent in suit the invention had been made available to the public pursuant to A 54(2) through the “diploma thesis” (document D1). It was contended that the content of the “diploma thesis” was disclosed during the oral presentation (hereinafter “colloquium”) at the Fachhochschule Mannheim on 11 May 1993 and by handing over of a copy of the diploma thesis to Prof. Dr. Palmer and to Mr Hans-Jürgen Schmidt in May 1993 (hereinafter disclosure “Schmidt”). “Colloquium” [5.2] It has to be decided whether the information content that was presented during the “colloquium” was such as to destroy the novelty of the patent in suit and, if necessary, whether the oral examination was open to the public. [5.3] Concerning the content of the disclosure, the evidence relied on to establish the information content conveyed to the public by an ephemeral disclosure, such as a lecture or an oral presentation, must be such that the Board is certain beyond any reasonable doubt that a particular piece of information was made available to the public. In the present case the Board is not convinced beyond any reasonable doubt that the specific piece of information concerning the use of a low concentration of copper in isothiazolone formulations as a stabiliser and in particular Fig. 6 of the diploma thesis D1 has been clearly and unambiguously disclosed during the colloquium […]. [5.4] In its communication dated 13 May 2011 the Board has drawn the parties attention to decision T 1212/97, which had to resolve the question whether there is any safe and satisfactory evidence as to the information content of what was made available to the public by a lecture. The present board holds that the principles set out in T 1212/97 (affirmed by T 12/01 [20]; T 667/01 [2]) apply to the present case. [5.5] In T 1212/97 [3] the Board did not consider evidence from the lecturer alone as being satisfactory evidence as to what was made available to the public at the lecture. The present board agrees with the approach of the board in T 1212/97. For this reason alone the declarations of Mr Baum submitted during the written procedure concerning the content of his oral explanations during the colloquium as well as his respective testimony cannot be regarded as sufficient evidence of which information and details have clearly and unambiguously been conveyed to the “audience” at the colloquium. The present board considered that no useful purpose would be served in summoning Mr Baum again as a witness, since further evidence from him would not serve to make up for the lack of evidence from the “audience” at the colloquium. [5.6] When the question to be resolved is whether there is any safe and satisfactory evidence as to the information content of what was made available to the public by a lecture or an oral presentation, information appearing in written notes made at the lecture by at least two members of the audience can usually be regarded as sufficient, whereas information in the notes of a single member of the audience might be inadequate as reflecting the thoughts of the listener rather than the content of the lecture (T 1212/97 [4]).
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K’s Law – The ebook
T 1057/09 - Public Or Not Public
[5.7] Apart from the declarations of Mr Baum […] there is only one further single statement stemming from the “audience” of Mr Baum’s oral presentation during the colloquium, namely the declaration of Prof. Dr. Palmer of 6 April 2006 (document (10)), who was one of the two examiners. He stated “… daß ich, … zum Thema dieser Diplomarbeit … ein … Kolloquium durchgeführt habe, bei dem die Ergebnisse der schriftlichen Diplomarbeit von Herrn Rüdiger Baum im Detail erörtert wurden”. [“… that I have organised a … colloquium … on the topic of this diploma thesis, in which the results of the written diploma thesis of Mr Rüdiger Baum were discussed in detail”] This is a general statement which cannot be regarded as sufficient evidence of which technical details were made available to the “audience” and whether those results which are relevant with regard to the assessment of the patentability of the patent in suit had been discussed. In addition, this is evidence from only a single member of the “audience” which is regarded as inadequate to serve as evidence for the content of the oral presentation (see T 1212/97 [4]). [5.8] In T 1212/97 [4] the board further held that if the lecturer read his lecture from a typescript or manuscript the written version might be taken as some evidence of the contents of the lecture, though with some caution as there would be no guarantee that a script was completely and comprehensibly read. With its letter dated 8 March 2010 the [opponent] filed a written declaration E3 […] of Mr Baum dated 8 February 2010 and as “Anlage B” a written version […] of Mr Baum’s oral presentation at the colloquium which would reflect nearly the exact wording of his lecture. Apart from the fact that the patentee/respondent has raised objections and doubts as to the availability of the format “Microsoft Works 4.0.” in which “Anlage B” had allegedly been generated in May 1993 this document has to be left out of consideration, since this document has been regarded as late filed and has therefore not been admitted in the present appeal proceedings. [5.9] In the annex to the summons to OPs dated 13 May 2011, the board had already indicated that according to its preliminary opinion the documents filed with the [opponent’s] letter dated 9 March 2010 (inter alia “Anlage B”) were regarded as being late-filed and would probably not be admitted in the proceedings. However, the [opponent] also failed to put forward any convincing reasons on the occasion of oral proceedings why such an important document as the alleged written version of his lecture held at the colloquium had not been submitted earlier, in particular with the notice of opposition of 9 May 2006 or with the statement of grounds of appeal of 29 June 2006 at the latest (See Article 12(4) RPBA). Taking into account the filing of this document at a relatively late stage of the proceedings and in view of the remaining doubts as set forth in the respondent’s letter dated 29 July 2010 as to the availability in May 1993 of the format “Microsoft Works 4.0.” in which “Anlage B” had allegedly been generated, the board exercises its discretion according to Articles 12(4) and 13D1 RPBA not to admit document (30) (“Anlage B”) in the proceedings. [5.10] Since for the reasons given above it cannot be established beyond any reasonable doubts that during the colloquium technical information was made available to the “audience” that is allegedly contrary to the patentability of the patent in suit, the subsequent question whether the colloquium was open to the public is no longer relevant for the decision in this appeal case and therefore does not need to be answered. Disclosure “Schmidt” [5.12] It has not been disputed by the patentee that a copy of the diploma thesis (document D1) was handed over to Mr Schmidt by Mr Baum on the day of the colloquium on 11 May 1993 at the latest and thus clearly before the priority date of the patent in suit. Thus Mr Schmidt was able to gain knowledge of the content of document D1. Document D1 […] discloses compositions in which the stability of CIT is investigated in a 10% aqueous solution of Acticid 14 and different amounts of Cu**(2+)(see page 32, paragraph 4.3.3., essays 6 to 8; corresponding to feature “c)” of claim 1). The 10% Acticid 14 used in the said compositions is a solution containing 15% of magnesium nitrate (see document D1, page 28, lines 6-7; corresponding to feature “b)” of claim 1) and 14% of IT (corresponding to a mixture of 25% MIT, namely 2-methylisothiazolin-3-one and 75% CIT, namely 5-chloro-2-methylisothiazolin-3-one, see page 8, lines 9-10). These 14% IT correspond to feature “a)” of claim 1. The water being present in Acticid 14 corresponds to feature “d)” of claim 1. Consequently, document D1 discloses in combination all the features of claim 1 of the second auxiliary request. [5.13] However, the question arises whether the content of document D1 was made available to the public. This would not be the case if Mr Schmidt was at that time under an obligation to maintain secrecy regarding the 1454 | 3398
K’s Law – The ebook
T 1057/09 - Public Or Not Public
content of the diploma thesis. Such an obligation may be based on an explicit or a tacit agreement or may stem from the circumstances of the case and derive from the principle of good faith and mutual trust. According to the Case Law of the Boards of Appeal information cannot be regarded as made available to the public for the purpose of A 54(2) and the recipient of that information cannot be treated as a member of the public, if at the time of receipt of the information he is in some special relationship to the donor of the information (T 1081/01 [7]). [5.14] It could not be ascertained that there was any explicit secrecy agreement between the parties involved. However, based on the special circumstances and facts underlying the present case the board considers that there was such a special relationship in the sense of T 1081/01 between Mr Baum and Mr Schmidt and Thor GmbH. As a consequence of these circumstances Mr Schmidt cannot be regarded as part of the public. Thus Mr Baum, by handing over a copy of the diploma thesis to Mr Schmidt, did not make the technical information content of document D1 available to the public pursuant to A 54(2). There is also no evidence that Mr Schmidt or other members of the staff of Thor made available technical information stemming from the diploma thesis (document D1) to the public (see below […]). [5.15] The conclusion that there was a special relationship between Mr Baum and Mr Schmidt and Thor, of which Mr Schmidt was and still is the managing director, and also responsible for research and development, is in particular based on the results of the hearing of the witnesses before the OD. The following circumstances and facts are essential and decisive for the assumption of this special relationship. [5.16] Mr Baum was employed by Thor GmbH before he started his academic education. After he had finished his academic education and passed his diploma exam he was again hired in May 1993 and since then has been employed by Thor GmbH as a chemical engineer. In the course of his studies at the Fachhochschule Mannheim Mr Baum made his traineeship (“Praxis-Semester”) and the “Diplom-Semester” with the company Thor. During his studies Mr Baum was not employed by Thor GmbH but was sponsored by the company. [5.17] The subject of the diploma thesis pertains to the field of isothiazolone, and in particular the stabilisation of isothiazolone-containing formulations by copper ion, which also belongs to the business and research activities of the company Thor GmbH. Mr Schmidt stated in his testimony that the results found by Mr Baum could be used for further formulations, even if the results of the diploma thesis were not commercialized and not made the subject of a patent application. The diploma thesis was developed in close collaboration with the company Thor. Mr Baum declared in his witness statement that he discussed technical issues of his diploma thesis and exchanged views with Mr Zinser, the then Head of the Research and Development division of Thor, as well as with Mr Schmidt, who was also concerned with isothiazolone-products. Mr Schmidt declared that it is crucial when assigning a subject-matter for a diploma thesis to a student that there is a synergy effect between the diploma thesis and the concerns of the company. He explained in his testimony that the 5-chlor-2methylisothiazolinone, which was one of the main subject-matters of the diploma thesis was a very important product for Thor. The stabilisation of formulations was a special issue which was important for Thor’s clients, and that Mr Baum had indeed come to some new findings regarding stabilising agents, which have also been used for further formulations. [5.18] The close relationship between Mr Baum and the company Thor/Mr Schmidt is also evidenced in the sponsoring of Mr Baum by Thor during his academic education and the drawing up of his diploma thesis. Mr Schmidt stated […] that it was in the interest of the company to promote the education of its employees and that sponsorship enabled the employees to complete their academic education and Thor to have better qualified employees. [5.19] From the circumstances and facts mentioned above it emerges that there has been a special relationship between Mr Baum and Thor and Mr Schmidt mainly based on the previous and subsequent employment of Mr Baum at Thor GmbH, the importance of the subject-matter of Mr Baum’s diploma thesis for the company and the sponsoring of Mr Baum by Thor GmbH during his academic education. This close occupational relationship gave rise to a relation of mutual trust and confidence. Thus it would contravene accepted commercial practices if one would assume that Thor or Mr Schmidt felt completely free to, or could be expected to readily disclose the technical subject-matter and technical details of the diploma thesis to the public or third parties without any secrecy obligation. In fact, it is normally in a company’s interest to keep research results, such as in Mr Baum’s diploma thesis, in confidence, since they constitute the company’s know-how and the basis for future products. It has neither been proven nor does it appear to be credible that Thor or Mr Schmidt provided such information to the public. [5.20] It has not been suggested that Mr Schmidt or the staff of Thor GmbH actually made available the technical content of document D1 to members of the public. 1455 | 3398
K’s Law – The ebook
T 1057/09 - Public Or Not Public
Mr Schmidt testified that the results of the diploma thesis have of course been discussed intra-company. However, the staff of a company is normally not regarded as being member of the public, unless there is proof to the contrary (T 1085/92). [5.21] Mr Schmidt stated that the technical content of document D1 was also discussed with Thor’s service technicians and chemical engineers, who are involved in the support service and in the advising of customers. However, it has not been alleged by the opponent that any technical information stemming from the diploma thesis (document D1) was made available to any members or other persons outside of Thor. [5.22] Furthermore, according to the declaration […] of Mr Leonhard (Rector of the Fachhochschule Mannheim) dated 16 June 2008 the diploma thesis of Mr Baum has not been made available to the public by putting it on the library shelves of the Fachhochschule Mannheim. This has not been disputed by the opponent. [5.23] The provision of a copy of the diploma thesis to Prof. Dr. Palmer does not render the content thereof publicly available either, since the professor grading the thesis cannot be regarded as a member of the public. After all it cannot be established that the content of document D1 belongs to the state of the art pursuant to A 54(2). [5.24] Since document D1 does not represent a prior art document according to A 54 and since the board as well as the [opponent] agrees that no other cited document calls into question the novelty of the claimed subjectmatter, the board concludes that the subject-matter of the claims of the second auxiliary request is novel (A 54). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1456 | 3398
T 377/11 – Not By Money Alone
K’s Law – The ebook
T 377/11 – Not By Money Alone 20 Mrz 2012
The Boards have explained times and again that the mere payment of an appeal fee cannot replace the filing of a regular notice of appeal. Still, would-be appellants having missed the time limit for filing an appeal keep on trying to persuade the Boards, and sometimes bring new arguments, as in the present case. On October 29, 2010, the Opposition Division (OD) posted its decision to maintain the opposed patent in amended form. On December 13, 2010, a sum of 1180 € was credited to an EPO bank account by virtue of an electronically filed debit form. The form referred to this payment as an appeal fee, cited the above application number, and contained the name and address of the representative of the opponent. In a communication dated March 1, 2011, the Board indicated that it was of the preliminary opinion that the appeal had not been validly filed, since the mere payment of an appeal fee did not constitute a valid means of filing, citing decision T 778/00 in this respect. On March 3, 2011, the [opponent] filed a statement of grounds of appeal. The opponent argued that an appeal had been validly filed as the document filed on December 13, 2010 via epoline “was not merely a form for the payment of fees and costs, as was the case in decision T 778/00, but rather “une lettre d'accompagnement relative à des pièces produites ultérieurement” which contained a request, namely that an appeal fee be debited. From the application number, the decision being contested could implicitly be deduced, such that there was no doubt about the sender's intention of filing an appeal against this decision. T 778/00 was additionally not relevant to the present case, because it was rendered before the entry into force of EPC 2000 and was based on the fact that the appeal was not filed in writing, this no longer being a requirement in EPC 2000, and electronic filing now being possible. The opponent also cited inter alia decisions T 932/93 and T 358/08, which confirmed that a request according to R 99(1)(c) could be implicit, the extent of the appeal being a matter for the grounds of appeal, and J 25/92, wherein it was considered that if a request was uncertain, the EPO should clarify the situation by asking the requester. It further argued that its right to be heard had been violated during the first instance opposition proceedings, as highly relevant documents had not been taken into account. Well, the Board was not persuaded: [1] A 108, first and second sentences, provides that notice of appeal must be filed, in accordance with the Implementing Regulations, within two months of the date of notification of the decision appealed from. Notice of appeal is not deemed to have been filed until the fee for appeal has been paid. [2] In the present case, the decision posted on 29 October 2010 is deemed to have been delivered on 8 November 2010 (R 126(2)); accordingly, the time limit under A 108, first and second sentences, for filing the notice of appeal and paying the appeal fee expired on 10 January 2011 (R 131(4) and R 134(1)). [3] It is not disputed that the appeal fee was paid in due time, a debit order recording payment of an appeal fee, and including the application number and the name and address of the representative of the [opponent] having been filed on 13 December 2010. [4] However, no notice of appeal was received within the time limit designated by A 108. The Board thus holds that no appeal has been filed within the time limit for appeal. [5] For the following reasons, the Board is not convinced by the [opponent’s] submissions in support of the existence of a valid appeal. [5.1] The [opponent] argued that the debit order could be regarded as a notice of appeal, as it contained all the necessary information required by R 99(1)(b) and (c). More particularly it contained the application number, 1457 | 3398
T 377/11 – Not By Money Alone
K’s Law – The ebook
from which the decision to be contested could implicitly be deduced, and a request, namely that an appeal fee be debited. Thus, it was clear that the sender's intention was to file an appeal against the decision of the OD concerning European patent No. 1 304 366. In this respect, the [opponent] cited inter alia decisions T 932/93 and T 358/08, which confirmed that a request according to R 99(1)(c) could be implicit, the extent of the appeal being a matter for the grounds of appeal. Rule 99(1)(b) and (c) EPC specifies that the notice of appeal shall contain an indication of the decision impugned, and a request defining the subject of the appeal, respectively. In the present case, the debit order does not explicitly refer to any decision, nor does it contain a request defining the subject of the appeal. A request that an appeal fee be debited together with an application number cannot be a substitute for an explicit and unequivocal statement expressing the definite intention to contest an appealable decision (see headnotes of T 460/95, J 16/94 and J 19/90). Payment of the appeal fee may at the most imply that the [opponent] intended to file an appeal but does not in itself constitute the notice of appeal required to institute appeal proceedings. Once an appeal fee is paid, the payer remains free to decide whether or not it wishes to lodge an appeal (see T 371/92 [3.5-6]). If it changes its mind and drops the matter, the appeal, being nonexistent, is not deemed to be withdrawn, but the fee is reimbursed because no appeal has been filed (see T 696/95). Decisions T 932/93 and T 358/08 are not applicable to the present case, because in the cases underlying said decisions, the decision impugned was clearly identified in the Notice of Appeal, and there was a request that said decision be set aside (see, for example, T 358/08 [5.1]). In T 932/93 [1.1], the matter of dispute was whether the extent to which amendment or cancellation of the decision was requested under the then applicable R 64(b) EPC 1973, corresponding to the subject of the appeal under R 99(1)(c) EPC 2000 in T 358/08 [5] may be implicit, and not whether the decision impugned had been identified or a request to set said decision aside had been made. [5.2] The [opponent] submitted that in view of the fact that with the entry into force of EPC 2000, the provision that the notice of appeal must be filed in writing had been deleted from A 108, and the fact that appeals may now be filed in electronic form, it was now obsolete to have to file an explicit statement that an appeal was being lodged. The deletion of the words “in writing” from A 108 was indeed in view of the future use of electronic means of filing documents (see OJ EPO, Special Edition 4, 2007, Point 1 to A 108), Rule 2(1) EPC 2000 allowing for documents in proceedings before the EPO to be filed by “technical means of communication”, the admissibility of electronic means of filing being announced by the Decision of the President of the EPO dated 26 February 2009 (OJ EPO 2009, 182). However, documents filed in electronic form are subject to the same provisions governing the filing of documents on paper (see Decision of the President of the EPO dated 26 February 2009 concerning the electronic filing of documents, A 10(5), loc. cit.). Hence, the fact that the debit form of 13 December 2010 was filed in electronic form, makes no difference to the requirements of A 108, which are not met [...]. [5.3] The [opponent] further argued that if the EPO considered that a request was uncertain, it should have clarified the matter by asking the requester, citing J 25/92 in this respect. This was particularly pertinent in the present case, since the document accompanying the payment of the appeal fee was filed on 13 December 2010, whereas the time limit under filing the notice of appeal did not expire until 10 January 2011, which meant that the EPO had had nearly one month in which to notify the [opponent] of any potential irregularity. However, the Board holds that there was nothing unclear or ambiguous concerning the debit order filed 13 December 2010, since it represented a usual method of paying an appeal fee. Filing the notice of appeal and paying the appeal fee are treated as two separate requirements for an appeal in A 108, first and second sentences […]; the appeal fee can be paid together with, before or after the filing of the notice of appeal, so long as the time limit under A 108 is met. As described above […], once an appeal fee is paid, the payer remains free to decide whether or not it wishes to lodge an appeal. There was thus no indication in said debit order from which it could have been inferred that the [opponent] would inadvertently miss the time limit for filing the notice of appeal, which fell nearly a month later, such that there was no reason, let alone an obligation, for the boards of appeal of the EPO to notify the [opponent] that such a notice of appeal was missing (cf. G 2/97). [5.4] The [opponent] also submitted that the OD had committed a substantial procedural violation by not honouring its right to be heard, as highly relevant documents had not been taken into account. However, since in the present case there is no appeal […], the Board has no power to judge whether there has been a substantial procedural violation by the first instance (see T 371/92 [headnote]). 1458 | 3398
T 377/11 – Not By Money Alone
K’s Law – The ebook
[6] Since no notice of appeal has been filed, the relevant fee paid is groundless and must therefore be reimbursed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 260/10 – In Particular
K’s Law – The ebook
T 260/10 – In Particular 19 Mrz 2012
As is well known, the Guidelines, C-III 4.9 have the following statement on optional features Expressions like “preferably”, “for example”, “such as” or “more particularly” (German version: “insbesondere”) should be looked at carefully to ensure that they do not introduce ambiguity. Expressions of this kind have no limiting effect on the scope of a claim; that is to say, the feature following any such expression is to be regarded as entirely optional. The present decision – which deals with an appeal filed by a patent proprietor against the decision of the Opposition Division to maintain the patent in amended form – points out that this is not always true. Claim 1 of the main request before the Board read (in English translation – the amendments with respect to claim 1 as granted are highlighted; features (d) and (f) essentially correspond to the features of dependent claims 2 and 3 as granted, respectively):
Click to enlarge The Board found this claim to violate A 123(3): *** Translation of the German original *** [2.1] In claim 1 according to the main request […] the feature of claim 1 as granted “…having at least one optical display unit and in particular (insbesondere) at least one operating unit for displaying and/or controlling at least one operating state of the domestic appliance by means of at least one light beam …” has been replaced by the feature “a) having at least one optical display unit for displaying at least one operating state of the dishwasher by means of at least one light beam”, wherein “and in particular at least one operating unit” has been deleted. [2.2] Contrary to the submission of the patent proprietor and the Guidelines for examination in the EPO C-III 4.9, it depends on the respective context whether a feature the feature following the expression “in particular” (insbesondere) is to be regarded as optional. In principle, optional features in the main claim are features which are not necessary for the claimed teaching but which explain other features in an exemplatory manner (beispielhaft) – see Schulte/Mufang, PatG, 8th edition, § 34, marginal number 135). The wording of claim 1 as granted “…having at least one optical display unit and in particular at least one operating unit …” means that the claimed domestic appliance not only has an optical display but also an operating unit, wherein the expression “in particular” here has the meaning of “above all” or “especially”, respectively (vor allem bzw.”speziell”). Here the operating unit is not mentioned as an example of a possible part of the domestic appliance but as a necessary part thereof. In the present case, the expression “in particular” is used to particularly emphasize that the operating 1460 | 3398
T 260/10 – In Particular
K’s Law – The ebook
unit is part of the domestic appliance. Similar considerations apply to redrafted sentences such as “household appliance “comprising” an optical display and in particular an operating unit”, wherein, e.g. “having”, “containing”, “comprising” are equivalent. The scope of protection is limited by this non optional feature, which means that its deletion violates A 123(3). Claim 1 as granted also claimed “Domestic appliance, in particular a dishwasher (1), having …”. In this context the feature introduced by “in particular” corresponds to a particular domestic appliance, i.e. a dishwasher. It explains, in an exemplatory manner, what is meant by the domestic appliance mentioned before and is not necessary for the claimed teaching. The scope of protection is not limited by this feature because it is defined by the general wording of claim 1, which encompasses this particular domestic appliance. The fact that there may be support in the description that the presence of an operating unit is optional is irrelevant in this context because the feature introduced by “in particular” is not to be seen as optional in the context of claim 1, which means that there is no need for an interpretation in the light of the description. It follows from the above that claim 1 as amended according to the main request […] violates A 123(3). Should you wish to download the whole decision (in German), just click here. The
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NB: A French summary can be found here.
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be
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R 6/11 – False Premise
K’s Law – The ebook
R 6/11 – False Premise 17 Mrz 2012
Generally speaking, decisions on petitions for review are not very interesting reading. There are, however, exceptions. I find the present decision worth reading because it comments on a great number of shortcomings to be avoided when drafting such a petition and nicely sums up some of the principles established in previous decisions. The Enlarged Board (EBA) also makes some interesting statements on a false premise it detected in the petition. This petition for review concerns decision T 79/08 of Board of appeal (BoA) 3.3.03 (also presented on this blog) dismissing the appeal of the patent proprietor against the decision of the Opposition Division to revoke his European patent. All the independent claims of the patent as granted contained the feature that “at least about 1.5 wt-% of said fluoropolymer particles comprise substantially rod-shaped particles having a length to diameter ratio of greater than about 5”. During the oral proceedings (OPs) the OD held that the requirements of A 83 and A 54 were satisfied, but revoked the patent on basis of lack of inventive step. The decision contained a statement on how the weight percentage of rods was determined. The patent proprietor filed an appeal. In his statement of grounds of appeal he addressed the OD’s decision on inventive step but not the statement on how to calculate the weight percentage of rods because, in his view, this aspect related to sufficiency of disclosure which the OD had acknowledged. In first OPs the parties and the BoA discussed how the weight percentage was to be determined. The BoA decided to continue the procedure in writing to allow the opponent to file better quality photographs. The BoA then gave the parties two months to make further submissions on the correct calculation method. The opponent submitted that the “collective calculation method” yielded the values reported in examples 1 and 2 of the patent. The patent proprietor objected that a skilled person would rather use the “individual calculation method” since this was the only correct mathematical method. Second OPs were held on October 28, 2010. After discussing sufficiency of disclosure of the main request, the BoA took a decision on all the auxiliary requests and closed the proceedings. The written decision was issued on December 29, 2010. The patent proprietor then filed a petition for review. The petition relies on six alleged fundamental procedural violations under A 112a(2)(c) and two further alleged violations under A 112a(2)(d): (a) The BoA ruled on the auxiliary requests without giving the petitioner a chance to comment on those requests. (b) The BoA did not admit the affidavit of the petitioner’s technical expert into the proceedings. This alleged violation was withdrawn during the OPs before the EBA. (c) In its written decision BoA failed to acknowledge the correct method of calculation of the weight percentage of rods. (d) In its written decision the BoA wrongly inferred from the patent that the inventor had not anticipated that the skilled reader would use the incorrect calculation. (e) The BoA based the reasoning in its written decision on the “poor quality” of images in the patent which was both wrong and never discussed during the proceedings. (f) The BoA based its decision on a different view of the calculation from that agreed by both parties and which was both completely wrong and not discussed.
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R 6/11 – False Premise
K’s Law – The ebook
(g) The BoA did not give reasons for not admitting the affidavit of the petitioner’s technical expert into the proceedings. This alleged violation was withdrawn during the OPs before the EBA. (h) The BoA’s written decision was not reasoned with respect to the auxiliary requests. The EBA found the petition not to be clearly inadmissible and then dealt with its allowability: [4] The EBA will consider […] each of the alleged procedural violations (a), (c) to (f) and (h) […] and then consider the general argument relating to all the alleged violations (c) to (h). (a) No chance to comment on the auxiliary requests [5.1] The petitioner alleges it was given no chance to comment on the auxiliary requests before the BoA ruled on them. However, a party has no absolute right to be heard separately on each and every one of its auxiliary requests, either at all or in its chosen order of preference. No such right (or necessity) can be derived from the right to be heard under A 113(1). The right provided by that article is to comment on grounds for a decision and not to comment on individual requests or to repeat comments on grounds which apply to two or more requests. Thus, the requirement of that article that the parties have an opportunity to comment on the grounds for a decision is, by definition, satisfied if those grounds have been the grounds for a decision on the main request (or another auxiliary request) and the remaining requests are not allowed on the same grounds. [5.2] In the present case the finding of non-compliance of the main request with A 83 was based on the conclusion that the person skilled in the art could not be sure of the correct calculation method for the content of the substantially rod-shaped particles […], that content being crucial and requiring the preparation of a dispersion having the correct fraction of substantially rod-shaped particles. However, the necessary information to achieve this was found to be absent from the patent in suit and it was held that the skilled person was not in a position - without undue burden and without inventive effort - to make good this deficit […]. As this reasoning is not in any way related to a particular value of the content in question, it must be equally valid for all those claims according to the auxiliary requests, which “rely on the definition of the content of rod-shaped particles” […]. This means that the reasons given for not allowing the main request also constitute the grounds under A 113(1) in respect of the auxiliary requests (including those with a value of 2 for the lower weight percentage), the essential legal and factual reasoning (see decisions cited in “Case Law of the BoAs of Appeal”, 6th Edition, page 438) being identical. [5.3] As regards the discussion of the issue of sufficiency under A 83, the petitioner argues essentially that its representative had the impression that the BoA would decide in his favour on the main request and only provided part of his arguments supporting sufficiency of disclosure assuming that, even if he had misunderstood the BoA, he would have a chance to make these arguments with respect to the auxiliary requests. However, such considerations of a party (or it’s representative) are immaterial to the fulfilment of requirements pursuant to A 113(1). The EBA’s jurisprudence makes clear that the right to be heard is satisfied if the party is aware of, and thus has had the possibility to comment on, arguments of the other party on which the decision is based (see R 2/08 [8.2]; and R 4/08 [3.2-3]). That is even more true where a party’s representative, in view of the discussions before and with the BoA, felt himself in a position to make a reasoned guess at the BoA’s finding on a critical issue and adapted the manner of conducting his case accordingly. [5.4] The petitioner’s contention that a discussion of the claims according to the auxiliary requests would have led to a different decision of the BoA is mere speculation, even if such a consequence of allowing further discussions of an issue in dispute can never be excluded. Of course, whether by opening a discussion of the auxiliary requests or in another way, the BoA could have granted the petitioner a further opportunity to defend its position as to the requirement of A 83 which possibly – although not likely in the given circumstances – might have eventually changed the view of the BoA. However, once the party – as here – has had an adequate opportunity to comment within the meaning of A 113(1), the granting of further such opportunities is purely within the discretion of the BoA in conducting the proceedings and thus a matter which is not open to review by the EBA. (c) The BoA failed to acknowledge the correct method of calculation [6] The allegation that in its written decision the BoA failed to acknowledge the correct method of calculation of the weight percentage of rods is pre-eminently a matter which concerns the substantive issues in the case and is thus not amenable to review (see R 1/08 [2.1] and the travaux préparatoires cited there). Even if (which the EBA is in no position to decide) the BoA did fail to acknowledge a correct method, that is not a matter which could 1463 | 3398
R 6/11 – False Premise
K’s Law – The ebook
lead to a finding of a fundamental violation of A 113(1). The EBA is confined to considering whether or not the parties were heard and, as is again clear from the petition itself which says the parties agreed on the method of calculation, the parties were indeed heard on the matter of that method. If, having heard the parties, a BoA then makes a decision with which one of them disagrees, there can be no violation of A 113(1). (d) The BoA wrongly inferred from the patent that the inventor had not anticipated that the skilled reader would use the incorrect calculation [7] This also relates quite clearly to substantive issues in the case and therefore cannot be the subject of review for the same reasons as in point [6] above. The EBA simply cannot decide whether or not the BoA’s observation about the patent in point [5.6] of its decision […] is wrong. In reality, the petitioner’s complaint in this respect is no more than that the BoA has made a statement with which it disagrees but mere disagreement with a decision by a losing party is not enough to establish a procedural violation. (e) The BoA based its written decision on the “poor quality” of images in the patent [8.1] This also relates quite clearly to substantive issues in the case and therefore cannot be the subject of review for the same reasons as in point [6] above. Whether or not the BoA was wrong to consider the images in the patent to be of poor quality is again just an example of the petitioner disagreeing with the BoA’s decision. [8.2] The additional assertion that the issue was never discussed during the written or oral proceedings appears incorrect. The words in the decision of which the petitioner complains are: “the patent in suit itself provides no means by which the validity of such an insight could be tested. Raw data is provided only in the nature of images of extremely poor quality”. The whole passage in the decision from which that is taken reads (see point [5.13]): “Even accepting, for the sake of argument, that such insight would be within the range of normal, non-inventive ability of the skilled person, there remains the obstacle that the patent in suit itself provides no means by which the validity of such an insight could be tested. Raw data is provided only in the nature of images of extremely poor quality. In this connection it is recalled that the images provided by the [respondent] during the opposition proceedings were considered by the [petitioner] to be of insufficient quality to allow analysis (counting of the particles) notwithstanding that these images appear to be significantly clearer and of higher quality than those contained in the patent in suit”. [The words underlined were omitted by the petitioner in its quotation from this passage of the decision.] The “insight” referred to in the opening words is that mentioned in the previous passage of the decision (see point [5.12]) where the BoA discusses at some length submissions of the petitioner. It is thus beyond doubt that the words the petitioner now complains of, far from representing a new issue introduced for the first time in the written decision, were in fact part of a lengthy consideration and ultimate rejection of an argument of the petitioner itself. There can of course be no question of a denying a party an opportunity to be heard in relation to an argument which that party has itself presented. It appears that, at best, the petitioner did not read the decision sufficiently carefully before framing this complaint. [8.3] While the question of quality of images was discussed during the appeal proceedings, as shown by both the passage from the decision quoted above and the petition itself […], if the petitioner’s complaint is that the quality of images was not discussed as part of a reason for the BoA’s view of the petitioner’s argument, that cannot amount to a violation of A 113(1). The EBA’s jurisprudence clearly demonstrates the principle that parties are not entitled to advance indications of the reason or reasons for a decision before it is taken (see the summary of the case-law in R 12/09 [11] and the several other decisions there referred to; and subsequent decisions R 15/09 [4]; R 18/09 [14-15,18]; and R 15/10 [7-9]). If that principle applies to the reasons for a decision generally, it must apply equally to a comment forming only a part of such reasons. (f) The BoA based its decision on a different view of the calculation from that agreed by both parties and which was wrong and not discussed. [9.1] All the EBA’s observations in relation to the alleged violation (c) also apply to alleged violation (f). Since this also concerns substantive issues it cannot be the subject of review for the same reasons as in point 6 above. To the extent the BoA may not have discussed its own view of the method of calculation as mentioned in the reasons for its decision, neither the petitioner nor the respondent was entitled to any advance indication of such reasons as explained in point [8.3] above. 1464 | 3398
R 6/11 – False Premise
K’s Law – The ebook
[9.2] Moreover, the petitioner’s argument is factually fundamentally flawed. It relies […] on the text of point [5.16] of the decision under review which reads as follows: “Indeed the BoA is aware that the entire foregoing section relies on making a key assumption – namely that the skilled person would identify the nature of the calculation as being the source of the divergences [between the reported values of rod content and the values obtained by using the average values]. This has in fact been assumed by both parties. However, this assumption is in the BoA’s view not valid. For example, it takes no account of the possibility of alternative sources of error such as clerical errors in the patent in suit, or even errors in collating or in analysing the data, e.g. instrumental errors.” [The words underlined were omitted, and the words in brackets added by the petitioner in its quotations from this text of the decision.] On the basis of its own selective quotations the petitioner accuses the BoA of denying it the right to be heard and of prejudice […]. [9.3] However, a reading of the whole passage in its context makes quite clear that neither was the case. The passage begins with the words “the BoA is aware that the entire foregoing section relies on making a key assumption”. The “foregoing section” begins at point [5.12] which, as mentioned above (see point [8.2]), marks the beginning of the BoA’s lengthy consideration of the petitioner’s own argument as to the approach the skilled person would take to the method of calculation (which in turn follows a section beginning at point [5], some three pages earlier where, after having already found the disclosure of the patent itself insufficient (see point [4.8]), the BoA turns to consider whether the skilled person could by common general knowledge understand how to calculate the content of rod-shaped particles). In point [5.12] the BoA summarizes the petitioner’s argument, disregards another inconsistent argument (of the petitioner), and says that the argument would require a level of insight approaching inventive step. That is the “insight” then referred to in point [5.13] which leads the BoA to the problem that the patent provides no means to test the quality of such an insight (see the passage cited in full in point [8.2] above). Points [5.14-15] then continue the same examination of the petitioner’s argument to the conclusion that it had failed to show that the skilled person could rely on common general knowledge (see point [5.15]). The “entire foregoing section” is thus the BoA’s own reasoned treatment (in points [5.12-15]) of the petitioner’s own argument and the statement in point [5.16] as to that section relying on a key assumption is the BoA’s own qualification of its own assessment of the petitioner’s argument. Then, after observing that both parties made the same assumption, the BoA proceeds to explain (again, at some length - see points [5.16-18]) why that assumption of both parties was not accepted. [9.4] The petitioner’s reliance on highly selective fragments of the BoA’s decision shows at best an unreasonably subjective reading of the decision. When those fragments are read in context it becomes abundantly clear that, far from denying the petitioner the right to be heard by raising matters not previously discussed, the decision goes to great lengths to explain why the BoA did not agree, first with the petitioner’s argument and then with an argument apparently agreed by both parties, all being arguments which were indeed discussed. Further, far from showing prejudice, it appears that the BoA was at pains to deal with all the submissions made to it and to explain its own reasons for disagreeing with one or both parties. (h) The BoA’s written decision was not reasoned with respect to the auxiliary requests [10] This alleged violation is quite simply factually incorrect. It appears from the decision under review (see point [6], last two paragraphs) that the BoA’s written decision did in fact include reasons for rejecting the auxiliary requests, namely that in the view of the BoA the auxiliary requests were subject to the same objection as the main request. [11] Finally, as regards the petitioner’s general argument relating to all the alleged violations (c) to (h), this is based on a wholly false premise, namely that A 112a(2)(d) requires that a BoA’s written decision must be reasoned. [11.1] A 112a(2)(d) imposes no such requirement whatsoever; it merely specifies that petitions for review may be filed on the grounds that “any other fundamental procedural defect defined in the Implementing Regulations occurred in the appeal proceedings”. The reference to “other fundamental procedural defect” reflects the fact that the opening words of A 112a(2) are: “The petition may only be filed on the grounds that:” which make it completely clear that petitions for review are 1465 | 3398
R 6/11 – False Premise
K’s Law – The ebook
limited to the grounds appearing after those words in (a) to (e). Thus the grounds included by (d) are limited to those other procedural defects “defined in the Implementing Regulations”. The only provision in the Implementing Regulations which defines such grounds is R 104 which reads: “A fundamental procedural defect under Article 112a, paragraph 2(d), may have occurred where the BoA, (a) contrary to A 116, failed to arrange for the holding of OPs requested by the petitioner, or (b) decided on the appeal without deciding on a request relevant to that decision.” Thus, it is completely and unambiguously clear from R 104 that the Implementing Regulations only add two further grounds for petitions for review to those in A 112a(2) and that the list of possible grounds contained in A 112a(2) and R 104 is exhaustive. This has been made abundantly clear in the EBA’s jurisprudence (see R 1/08 [2.1, last paragraph]; R 16/09 [2.3.5-6]; R 10/09 [2.4-5]; R 18/09 [19]; R 1/11 [2.2]; and R 20/10 [2.1]). The grounds enumerated in the legislation being exhaustive, there is no scope for creating an additional ground by analogy with R 111 as the petitioner seeks to do […]. [11.2] Accordingly there is no ground for a petition for review, whether under A 112a(2) or otherwise, such as the petitioner puts forward that a decision of a BoA is not reasoned. In any event, such a provision would be unnecessary in view of the words of A 113(1) and the related grounds for a petition in A 112a(2)(c). [11.3] Further, for the sake of completeness, the EBA observes that, as already indicated in respect of the particular passages complained of by the petitioner (see points [8.2] and [9.2-4] above), the decision under review in the present case appears to be comprehensively and clearly reasoned. The petitioner’s general complaint – that the decision contains inconsistent findings which are not in logical sequence such that the reader is unable to decide which of the various findings are correct and which are false – is a complaint which could only be made by a reader determined to disagree with the decision. An objective reading of the decision merely shows that the complaint itself is false. [11.4] The decision T 278/00 to which the petitioner referred related to R 68(2) EPC 1973 (now R 111(2)) which requires that decisions which are open to appeal be reasoned. Decisions of BoA, which are open only to review but not to appeal, are clearly not covered by that rule. Further, as made clear above (see point [11.1-2]), it is no ground per se for a petition that a decision is not reasoned. As an interpretation of R 111(2), the principles summarized in the headnote of decision T 278/00 are as follows: “ 1. The reasoning of a decision under appeal must be taken as it stands. The requirements of [R 111(2)] cannot be construed in such a way that in spite of the presence of unintelligible and therefore deficient reasoning, it is up to the BoA or the Appellant to speculate as to what might be the intended meaning of it. 2. The BoA must be in a position to assess on the basis of the reasoning given in the decision under appeal whether the conclusion drawn by the first instance was justified or not. This requirement is not satisfied when the BoA is unable to decide which of the various inconsistent findings indicated in and justifying the decision under appeal is correct and which is false.” Even if those principles were applicable to decisions under review, they would only apply in the presence of unintelligible and therefore deficient reasoning and inconsistent findings such that it is not possible to decide which are correct and which are false. However, as already indicated (see point [11.3] above), the EBA considers that this is not so in the case of the decision under review. [12] Accordingly the EBA finds no merit in any of the arguments of the petitioner and the petition is therefore unallowable. […] The petition is unanimously rejected as clearly unallowable. Should you wish to download the whole decision, click here. The file wrapper can be found here.
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T 448/09 – Devoid Of Object
K’s Law – The ebook
T 448/09 – Devoid Of Object 16 Mrz 2012
The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form. The OD had also taken a decision on the apportionment of costs:
In its statement of ground of appeal, the patent proprietor requested the Board to maintain this decision.
This gave the Board the opportunity to explain the extent of the devolutive effect of appeals:
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T 448/09 – Devoid Of Object
K’s Law – The ebook
[7] The appellant requested to maintain the decision with respect to the apportionment of costs and the request for fixing costs as referred to in paragraph 5 of the interlocutory decision in opposition proceedings dated 5 December 2008. The Board, however, observes that this part of the decision of the opposition division has not been appealed. The devolutive effect of an appeal before a board extends only to the part of the impugned decision which is indicated in the notice of appeal as provided in R 99(1)c). This in turn implies that the part of the impugned decision not indicated in the notice of appeal becomes final on expiry of the time limit for filing an appeal and cannot later become an object of the appeal proceedings. In the present situation, the aspect of the decision relating to the apportionment of costs was not appealed and is thus res judicata. The appellant’s request to maintain the decision with respect to the apportionment of costs is thus devoid of object. Similarly, the appellant’s request to maintain the decision with respect to the fixing of costs is devoid of object since no such decision has been taken so far. As specified under point 5(d) of the decision under appeal the OD shall, on request, fix the amount of costs to be paid under a final decision apportioning them. Although the decision concerning the apportionment of costs has become final, no request regarding the fixing of costs has yet been filed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 605/09 – Paraphrase
K’s Law – The ebook
T 605/09 – Paraphrase 15 Mrz 2012
This appeal was against the rejection of the opposition by the Opposition Division. The decision contains an interesting paragraph on the novelty of the main request, claim 1 of which read: A method for improving activity in a pet, the method comprising administering to the pet a nutritional agent which promotes the growth of bifido- and lactic-bacteria in the gastrointestinal tract of the pet. [2.1] Claim 1 of the main request is directed to:
a method for improving activity in a pet, comprising administering to the pet a nutritional agent, which promotes the growth of bifido-and lactic-bacteria in the gastro-intestinal tract.
The nutritional agents used are known prebiotics, including oligosaccharides, probiotic micro-organisms, or a fermentation product thereof […]. [2.2] Claim 1, although drafted as “method of improving activity in a pet”, is undoubtedly framed so as to protect the “use” of the known nutritional “for improving activity in a pet”, that is to say, the claim is to be understood as a second non-medical use claim. This is in fact how the parties and the opposition division interpreted the claim throughout the opposition proceedings. According to decision G 2/88 novelty within the meaning of A 54(1) can be acknowledged in cases where the discovery of a new technical effect of a known substance leads to an invention which is defined in the claims in terms of the use of that substance for a hitherto unknown, new non-medical purpose reflecting such effect, even if the only novel feature defined in the claims is the purpose for which the substance is used. It is then to be decided whether the claimed improvement of activity in a pet is a new technical effect in terms of G 2/88. [2.3] The novelty of claim 1 was contested by the appellant during the appeal proceedings having regard inter alia to the disclosures of D4, D6 and D7. [2.4] D4 discloses the use of pullulan and/or dextran as growth-promoting agent for bifid bacteria […]. Although D4 does not disclose that pullulan and dextran promote the growth of lactic-bacteria, they are in fact growthpromoting for lactic bacteria, as evidenced by D22, D23 and D24. The agent can exert its activity in domestic animals such as dogs and cats […] and is said to be very useful, inter alia, in the maintenance and improvement of health […]. D6 discloses a pet diet which alters the function and morphology of the gastrointestinal tract in ways which are beneficial to the animal’s health and well-being […]. The diet comprises fermentable fibres such as fructooligosaccharides or inulin […], both being nutritional agents which promote the growth of bifido- and lactic-bacteria in the gastro-intestinal tract […]. D7 discloses the use of sucrose thermal oligo-saccharides to increase the number of bifidobacteria and lactobacilli within the gastrointestinal tract […]. The nutritional agents of D7 are used to enhance the growth rate and health of animals, including dogs and cats […]. [2.5] Thus, neither D4, D6 nor D7, nor any other cited prior art, contains an explicit disclosure that these nutritional agents have the claimed capability of improving the activity in a pet.
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T 605/09 – Paraphrase
K’s Law – The ebook
[2.6] The assessment of novelty depends on the answer to the question whether or not this effect, i.e. the capability of the nutritional agents to improve the activity in a pet, which is not verbatim disclosed in the state of the art, can confer novelty to the subject-matter of claim 1 in view of the conclusions laid down in G 2/88 […]. [2.7] In the board’s judgement this is not the case here because the improvement of the activity of the pet does not represent a newly discovered technical effect of the nutritional agents for the following reasons: [2.7.1] There is undeniably a correlation between improving health of a pet and its (physical) activity. As pointed out by the appellant, every dog or cat owner knows that a primary indicator of the health of a dog or a cat is its level of activity. In particular, it is well known that lethargy or inactivity are an indicator of illness. This selfevident truth is reflected, for example, in D20, in which the state of health of a cat is assessed by means of a modified “Karnofsky” score. The levels of playing and social activity in the cat contribute to the overall score, such that increased activity is taken as an indicator of improved health. The health improvement disclosed in D4, D6 and D7 results inherently in an increase of the activity of the pet. [2.7.2] In fact the alleged newly discovered effect of improving pet activity is necessarily correlated to the known one. In other words, the claimed effect was already manifest and could not have been overlooked by a pet owner when feeding the compositions of D4, D6 or D7 to its pet. Hence, the effect relating to improving pet activity is not a new technical effect in the sense of G 2/88 and cannot confer novelty on the subject-matter of granted claim 1 over the disclosure of D4, D6 and D7. [2.8] The respondent maintained that an improvement in the health of a pet did not mean that the activity of the pet was increased. The claimed improvement in activity in a pet was not necessarily correlated with the known improvement of health and could be clearly distinguished therefrom. [2.9] The board cannot accept this argument for the following reasons: [2.9.1] It is correct that the prior art does not mention the wording “improving activity”. It is however selfevident that an improvement of health results in increased activity as explained above. Calling the “improvement of health” which is disclosed in D4, D6 and D7 “improving activity” is only paraphrasing a known effect. Specifically pointing to this effect cannot be considered as an additional piece of knowledge about the known use of the nutritional agents because it is only the rewording of a known effect. The above considerations are in line with the conclusions in decision T 254/93 [4.8] where it is stated that “the mere explanation of an effect obtained when using a compound in a known composition, even if the effect was not known to be due to this compound in the known composition, cannot confer novelty on a known process if the skilled person was aware of the occurrence of the desired effect”. [2.9.2] Furthermore, the patent in suit associates health improvement with improved activity. In examples 1 and 4 the increased level of activity is associated with effects related to an enhancement of health (a healthy look, shinier coats, brighter eyes). Moreover in examples 2 and 3, where arthritic (i.e. ill) dogs were used, the improvement of activity can again not be separated from the known improvement of health. [2.9.3] Finally, it is noted that the patent attributes the improvement in activity to the increased production of nutrients and/or absorption of nutrients due to the increasing concentration of bifido- and lactic-bacteria, which provide the pet with better nutrition and more energy […]. This is indeed the known effect of the used prebiotic and probiotic microorganisms. The ability to improve glucose metabolism and enhance nutrient absorption in animals is the reason for its beneficial use for improving health […]. [2.10] For these reasons the subject-matter of claim 1 of the main request is not novel. The patent was finally revoked. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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J 29/10 – No Country For Old Men
K’s Law – The ebook
J 29/10 – No Country For Old Men 14 Mrz 2012
The present appeal was filed against the decision of the Examining Division (ED) not to reimburse a fee for further processing. The facts of the case can be summarised as follows: On January 13, 2009, the ED had informed the applicant on its doubts regarding the patentability of the claimed subject-matter and had given him four months for remedying the deficiencies. On April 27, 2009, the applicant requested a two-month extension of the time limit because the communication between the Swiss applicant, the inventor (residing in Great Britain) and the German representative needed more time. On July 23, 2009, the applicant requested another two-month (or at least one-month) extension of the time limit : “Unfortunately, it is necessary to respectfully request to exceptionally extend the time limit for responding to the communication by another two months, i.e. until September 23, 2009, or at least by one month. The reason for this request is that the undersigned has to cope with an unusually high work load. a) Until the end of 2007, patent attorney Dr. S. had dealt with the cases of the Krohne company, but he then left [the law firm]. After the departure of patent attorney Dr. S. the undersigned is the only professional representative dealing with the Krohne cases in this association. b) The undersigned has had to deal with very unusually time consuming cases over the last months, i.e. ba) three law suits pending before the Düsseldorf Regional Court, one before the Frankfurt Regional Court, another one before the Regional Appellate Court in Karlsruhe and one pending appeal against refusal of leave to appeal (Nichtzulassungsbeschwerde) before the Federal Supreme Court; bb) three nullity proceedings pending before the Federal Patent Court and another two nullity proceedings pending before the Federal Supreme Court; bc) two cancellation proceedings pending before the German Patent Office and cancellation proceedings pending before the Federal Patent Court; c) This situation has the consequence that the undersigned – who is sixty-nine years old – works about 65 to 70 hours per week on average, normally also on Saturdays and often also on Sundays. d) Very much like the undersigned, some Examiners or EDs of the EPO have to cope with a great work load, which entails that often search reports or communications have to be waited for for a long time. In this situation, it would be “simply nice” (“einfach schön”) if the EPO could show understanding for the above mentioned situation of the undersigned.” On July 31, 2009, the ED dismissed this request as unsufficiently justified.
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J 29/10 – No Country For Old Men
K’s Law – The ebook
On November 10, 2009, the applicant requested further processing and reimbursement of the fee for further processing. The request for further processing was granted. On December 7, 2009, the ED informed the applicant that the request for reimbursement was likely to be refused and requested him to comment within a time limit of two months. On February 8, 2010, the applicant requested a two-month extension of the time-limit, which was granted. On April 16, 2010, the applicant requested two more months – because of an “extreme work load” – and again the ED granted the request. The third request for two more months, filed on June 17, 2010, was, however, refused, and an appealable decision was issued on August 5, 2010. The applicant then filed an appeal. Here is what the Legal Board had to say: *** Translation of the German original *** Admissibility of the appeal [1.1] As a rule, decisions of the ED are appealable, provided that they terminate proceedings, A 106(1). It is true that from a procedural point of view a request for reimbursement of the fee for further processing is an auxiliary request (Nebenantrag) which has to be decided upon within the framework of a substantive final decision. Insofar it has already been decided that an applicant whose application was deemed to be withdrawn (nach Verfall seiner Anmeldung) because he had not taken some required action in due time can first request further processing pursuant to A 121 and has to pay the corresponding fee for further processing. He then can request reimbursement of the fee and, thereby, implicitly request a judicial review of the question whether the refusal of the extension of the time limit pursuant to R 132(2) was lawful (cf. J 37/89 [3.5]). Insofar as an applicant is adversely affected by an isolated refusal of the request for reimbursement – as in the present case – a separate appeal against this decision is admissible (cf. J 37/89 [4.2-3]). [1.2] Irrespective of the fact that the representative of the appellant himself bears the costs for the appeal proceedings, the Board considers – in favour of the appellant, in the name of which the appeal has been filed – that it is the appellant itself and not its representative – who, from the procedural point of view, is not adversely affected – that is party to the appeal proceedings. [1.3] The other requirements of A 106 to 108 are fulfilled; the appeal is admissible. Allowability [2.1] The impugned decision is based on the fact that the requested further processing pursuant to A 122 [sic] has created the duty for the appellant to pay the corresponding fee for further processing after [the appellant] had missed the time limit for filing the required comments in response to the communication of the ED dated May 16, 2008, which had led to the application being deemed to be withdrawn according to A 94(IV). There had not been any reason to reimburse [the fee] because the refusal to extend the time limit was legitimate. The alleged excessive work load on the representative did not constitute particular circumstances that could justify an exceptional extension beyond six months. [2.2] Pursuant to R 132(2) periods specified by the EPO, which, normally are neither less than two nor more than four months, and, in certain circumstances, up to six months, may be extended upon request. The Guidelines for examination, E-VIII 1.6, further explain that for any communication raising a matter of substance – such as in the present case – a request for extension, even if filed without reasons, should normally be allowed if the total period set does not thereby exceed six months. However, according to the Guidelines, a request for a longer extension – especially if the total period set exceeds six months – should be allowed only exceptionally, when the reasons given are sufficient to show convincingly that a reply in the period previously laid down will not be possible. The Guidelines cite examples for such exceptional circumstances : the fact that a representative or client is so seriously ill that he cannot deal with the case in time, or the need to perform extensive biological experiments or tests. On the other hand, [the Guidelines] expressly state that leaves or pressure of other work should not be accepted as a sufficiently exceptional circumstance. [2.3] The Guidelines for Examination in the EPO are based on the power entrusted to the President of the EPO in application of A 10(2)(a) to adopt internal administrative instructions. They are not legal provisions but contain 1472 | 3398
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K’s Law – The ebook
instructions regarding practical and procedural aspects and, according to their General Part, point 3, serve as general instructions intended to cover normal occurrences, in order to render the practice of the Office as uniform as possible, in view of creating and maintaining legal security. The concretisation of the “special cases” referred to in R 132(2) by means of the examples of a “serious illness” or extensive biological experiments as well as leaves or pressure of other work, respectively, is appropriately based on criteria related to predictability of and the possibility to avoid the particular circumstances, for the person concerned in the individual case. [2.4] The appellant has not persuasively exposed sufficient reasons for its opinion that the rules for extending time limits are “unlawful, and in any case inappropriate”, nor does the Board see any such reasons. Insofar as the appellant requires a modification of the “system for time limits introduced by the Notice of the Vice-President of the Directorate-General 2 of the EPO of February 28, 1989”, by referring to some selected individual cases and justified by the fact that the EPO itself had an excessive work load because applications or required submissions had not been dealt with in a final manner even after several years, and, therefore, invites [the EPO] to exercise its discretion in dealing with requests for the extension of time limits in a less restrictive manner, this objection cannot succeed. [2.4.1] As a matter of fact, the discretion (Ermessensrahmen) referred to [by the appellant] has been introduced by the Guidelines for examination in the EPO, part E-VIII 1.6 based on the above mentioned power [of the President of the EPO] pursuant to A 10(2)(a). [2.4.2] This discretion has been referred to in point 4 of the Notice of the Vice-President of the DirectorateGeneral 2 of the EPO of February 28, 1989 (OJ EPO 1989,180), but it is expressly stated that requests for a longer extension, after expiration of a total period of six months, will in future be strictly applied and that such requests will normally be refused. The established case law of the Boards of appeal has confirmed this strict application of time limits in view of the absolute necessity for speedy proceedings (see J 12/07 [2.2] and, for appeal proceedings, T 79/99 [2.1]). The Board fully agrees with this [approach]. It may well be that in individual cases there can be unsatisfying effects when the chronology of a case is considered. However, it is not the object and purpose of Guidelines for examination to exclude such situations. [2.5] The way in which the ED exercises its discretion regarding the handling of requests for the extension of a time limit pursuant to R 132(2) should be inspired by these indications. Insofar the Guidelines can be used as a help for interpretation, from which [the ED] can depart in individual cases where this is justified (see also T 1388/10). Insofar it may exercise its discretion in favour of the parties, in cases which urgently require an exception with respect to the situations where the rule does not allow [an extension] (Regelversagungstatbestände). However, normally this will not be the case in the situations mentioned in the Guidelines, such as holidays or – as in the present case – excessive work load. [2.6] Seen in this light, the impugned decision is not to be objected to. In particular, the Board cannot find any fault in the way the ED has exercised its discretion. Even in principle the excessive work load mentioned by the representative of the appellant cannot be considered to constitute unpredictable or exceptional circumstances within the meaning of the above mentioned provisions. Nor was there any good reason for considering that the case was exceptional, in view of the general requirement of handling requests for extension of time limits beyond six months, because there were no sufficient reasons to do so. The appellant has explained the excessive work load of the representative by pointing out that an attorney who had dealt with its cases until then had left the association of its representative in May 2007. However, as this situation had already lasted for more than two years when the request for extension was filed, on July 23, 2009, the ED correctly expected the representative to have taken the necessary measures to reduce the work load to such an extent that it was possible to definitely keep – generous – time limits. However, there was no submission regarding this aspect. [2.7] it was not possible to reimburse the appeal fee. Neither the submissions of the appellant nor the other elements of the file have allowed the Board to spot any legal error of the ED in the way it exercised its discretion. Consequently, the impugned decision was correct. [3] Contrary to the – unreasoned – suggestion of the appellant, there was no need to refer the case to the Enlarged Board of Appeal in application of A 112(1). Pursuant to A 112(1) a Board of appeal may refer [a question] in order to ensure uniform application of the law, or if a point of law of fundamental importance arises. The Board is of the opinion that none of these requirements is fulfilled. […] The appeal is dismissed.
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J 29/10 – No Country For Old Men
K’s Law – The ebook
Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1260/08 – Prima Facie Is Enough
K’s Law – The ebook
T 1260/08 – Prima Facie Is Enough 13 Mrz 2012
Each of the two opponents filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. On October 17, 2011, the Board summoned the parties to oral proceedings (OPS) to be held on December 20, 2011. In a letter dated November 18, 2011, opponent 2 raised new grounds of revocation against the patent as maintained by the OD. The Board would not admit those grounds into the proceedings, for the following reasons: *** Translation of the French original *** [2] In its letter of November 18, 2011, opponent 2 argues that the subject-matter of claim 1 as maintained extends beyond the content of the application as filed, and thereby violates A 100(c) EPC 1973. Even if the objection refers to the amendment of claim 1 carried out in the course of the opposition phase, which means that the case law of the Boards of appeal does not prohibit that such an objection be taken into account (see e.g. T 227/88 [3]; T 922/94 [2.2]), the Board nevertheless considers that this objection could most certainly have been filed at an earlier stage of the proceedings. As a matter of fact, as emphasized by the [patent proprietor], not only had this aspect not been mentioned during the opposition phase, but it had not even been raised by [opponent 2] in its statement of grounds of appeal. Article 12(2) RPBA, however, stipulates that “The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on. …” Therefore, the Board, exercising the discretionary power conferred to it pursuant to article 13 RPBA, and taking into account the fact that the admission of the new ground raised by [opponent 2] would run contrary to the principle of procedural economy to which this article refers, concludes that this ground is inadmissible. It is true, indeed, as pointed out by [opponent 2] in the course of the OPs, that the Board has the duty to examine of its own motion whether the amendments of a patent in the course of opposition or opposition appeal proceedings comply with the requirements of the EPC. In the course of inter partes proceedings, however, this duty, which is a consequence of A 114(1), is limited to a prima facie examination of the amended documents, i.e. a sort of pre-examination that will lead to a genuine (véritable) examination of the amendments only if the [pre-examination] suggests that these amendments are indeed such that they create a presumption of nonconformity with the requirements defined by the EPC (see T 263/05 [7.15]). In the present case, the additional feature concerning the bending of the first branch, which has been introduced by the [patent proprietor] during the opposition proceedings, exactly corresponds to a passage found in column 4, lines 52 to 57 of the application as published. The question of whether it is indeed possible to “detach” this effect of the structural feature of fitting (encastrement) of the free end 46 of the first branch 40 – which are indeed associated in the cited passage – belongs to a more substantive examination which clearly exceeds the limits of the prima facie examination that is required under the present circumstances. As a matter of fact, the question raised requires [the Board] to determine to which extent the skilled person would indeed have considered that the proposed geometry was the only one that could be envisaged or whether, to the contrary, he would have understood without further ado that a great number of alternatives were equally suitable. Finally, the conclusion according to which the introduced feature indeed satisfies, at first sight, the requirements of the EPC, and in particular those of A 123(2), is supported by the fact that neither the OD nor the [opponents] had considered the proposed wording to be problematic when it was introduced. In this respect, the statement of [opponent 2] according to which it had only realized at a very late stage of the appeal proceedings that there was 1475 | 3398
T 1260/08 – Prima Facie Is Enough
K’s Law – The ebook
problem related to a possible generalisation of the subject-matter of the application, confirms the non-immediate nature of the objection raised. The Board concludes that the late filed ground is inadmissible. The Board finally dismissed the appeals. To read the whole decision (in French), click here. The file wrapper can be found here.
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T 532/08 – Admittedly
K’s Law – The ebook
T 532/08 – Admittedly 12 Mrz 2012
Disclaimers inserted during examining proceedings also create presumptions concerning the exclaimed subjectmatter, as the appellant in the present case had to find out. The patent proprietor appealed against the decision of the Opposition Division to revoke the patent under consideration. Claim 1 of the main request before the Board read (in English translation; the differences with respect to claim 1 as granted are emphasized): Crop protection composition, formulated as powder, granules or as a liquid, aqueous suspension, of active compounds having foliar or systemic action, characterized in that it comprises, in the case of herbicide preparations, at least one herbicide from the groups of the urea derivatives or sulphonylureas, the carbamates, biscarbamates, diphenyl ethers, pyridolylacetic acid derivatives, pyridazines, triazines, triazinones, uracils, benzofuran derivatives, glyphosate or glufosinate, in the case of fungicide preparations, at least one fungicide from the group of the morpholines, azoles, phthalimides or piperidines, in the case of insecticide preparations, at least one insecticide from the group of the pyrethroids, carbamates or organophosphates, or possible salts or esters of the abovementioned groups of active compounds, at least one inorganic adsorbent and at least one surfactant from the group of the ethoxylated C6- to C20- alcohols, preferably C8- to C16-alcohols, the ethoxylated castor oils or the alkyl ether sulphates, wherein the sum of the proportions of adsorbent(s) and surfactant(s) is from 5.5 to 45.0% by weight, preferably from 15.0 to 25.0% by weight, and wherein the proportion of active compounds is from 5.0 to 75% by weight the combination of metamitron technical (I), ethofumesatetechnical (II), phenmedipham technical (Ill), alcylaryl sulfonate (IV), polyoxyethylene-(6)-tridecyl ether (V), highly disperse pricipitated silicic acid (VI) and kaoline W (VII) in the composition:
and the combination of 33,93% by weight of propachlor (94%), 11,31% by weight of atrazine (95%), 4,00% by weight of Hi-Sil 2338, 1,00% by weight of kaoline, 2,80% by weight of Pluronic 1058, 1,00% by weight of lgepon T778, 1,00% by weight of CaCI2 x 2 H20, 8,00% by weight of ethylene glycol, 0,10% by weight of Corak 1008 and 36,86% by weight of water being excluded. The Board found the underlying amendments to violate A 123(3): *** Translation of the German original ***
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T 532/08 – Admittedly
K’s Law – The ebook
[3.1] The [opponent] criticized the introduction of the feature related to the proportion of active compound in % by weight because the amendment was not occasioned by a ground for opposition under A 100. [3.2] The Board does not share this opinion and considers this amendment to be an attempt to delimit [the subject-matter] with respect to the prior art and, therefore, to overcome the novelty objections that have been raised, in particular by the [opponent]. Because of the outcome of the present proceedings, however, this point does not need to be discussed in more detail. [3.3] Claim 1 of the impugned patent, which is directed at a crop protection composition, formulated as powder, granules or as a liquid, aqueous suspension, contains two disclaimers. The first disclaimer refers to the exclusion of combinations of components (I) to (VII) the composition of which is given in the form of a table, wherein the sum of the individual components adds up to 100%. None of the components (I) to (VII) is water. The second disclaimer refers to a combination of combination of 33,93% by weight of propachlor (94%), 11,31% by weight of atrazine (95%), 4,00% by weight of Hi-Sil 2338, 1,00% by weight of kaoline, 2,80% by weight of Pluronic 1058, 1,00% by weight of lgepon T778, 1,00% by weight of CaCI2 x 2 H20, 8,00% by weight of ethylene glycol, 0,10% by weight of Corak 1008 and 36,86% by weight of water. [3.4] In claim 1 as amended, which is only directed at liquid, aqueous suspensions, both disclaimers were deleted. As far as the first disclaimer was concerned, the parties did not agree on whether this disclaimer only concerned solid formulations or whether, as was submitted by the [opponent], it also comprised liquid, aqueous suspensions. In this context, the Board agrees with the [patent proprietor] that the first disclaimer, wherein water is absent, is directed at solid formulations and not at liquid, aqueous formulations. In view of the negative outcome of the decision, however, the Board sees no need to discuss this point in more detail. [3.5] The [patent proprietor] has not contested that the second disclaimer is directed at a liquid, aqueous suspension. This suspension undisputedly contains an active compound and adsorbents according to the claim (anspruchsgemäß) in addition to CaCl2 and ethylene glycol. It does not explicitly mention surfactants according to the claim, but the liquid, aqueous suspension further contains components referred to by the trade names Pluronic 105®, Igepon T77® und Corak 100®. It is only possible to omit this disclaimer without extending the scope of protection if there is no doubt that the components referred to by these trade names do not comprise any of the claimed surfactants. [3.6] The [patent proprietor] pointed out that the suspension excluded by means of the disclaimer did not contain surfactants according to the claim and that, moreover, the feature concerning the sum of proportions of adsorbents/surfactants was not fulfilled. The disclaimer mentioned Pluronic 105® und Igepon T77® as surfactants, i.e. a block polymer of propylene oxide and ethylene oxide, and sodium-N-methyl-N-oleoyl taurate, respectively. Corak 100® was an anti-foaming agent based on silicone and was, therefore, not suitable as a surfactant according to the claim. Moreover, the [patent proprietor] explained that the [opponent] had not provided any proof for the assertion that the two compounds mentioned in the disclaimer and referred to by the trade names were surfactants according to the claim. [3.7] It has to be observed that as far as the surfactants according to the claim are concerned, claim 1 of the main request is the same as claim 1 of the impugned patent but also of the application as filed. As a given composition has been excluded by means of a disclaimer in the course of the grant proceedings, one has to assume – as the opponent has done – that the aqueous suspension that has been excluded by means of the disclaimer comprises surfactants according to the claim and that the feature of the sum of proportions of adsorbents/surfactants is fulfilled. If the [patent proprietor] now claims that this is not the case, and that this also held true for the claim as granted, then the [patent proprietor] bears the burden of proof for this assertion. [3.8] However, the [patent proprietor] has not submitted any evidence establishing, with the required certainty, that the suspension excluded in the impugned patent does not comprise surfactants according to the claim or that the feature concerning the sum of proportions of adsorbents/surfactants is not fulfilled, respectively. Moreover, it has to be noted in this context that it cannot be excluded that products characterised by trade names or their composition change in the course of time but keep the same name. Therefore, it cannot be clearly defined what is excluded by a disclaimer referring to trade names.
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T 532/08 – Admittedly
K’s Law – The ebook
[3.9] For the above reasons, it cannot be excluded with sufficient certainty that the liquid, aqueous suspension of the second disclaimer contains surfactants according to the claim and fulfils the feature concerning the sum of proportions of adsorbents/surfactants. The Board comes to the conclusion that the amendment in claim 1 of the main request extends the scope of protection and, therefore, violates A 123(3). Incidentally, this is another reminder (see also another recent post) that disclaiming products identified by their trade names is a very dangerous enterprise. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 191/08 – Don’t Trust Titles
K’s Law – The ebook
T 191/08 – Don’t Trust Titles 10 Mrz 2012
The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form. Claim 1 of the main request before the Board (identical to claim 1 as granted) read: Method for the immunochemical quantification of inactivated immunoreactive haemagglutinin molecule complexes of influenza viruses, which method comprises the following steps: a) a sample which contains one or more haemagglutinin molecule complexes to be determined, which complexes have been formed by inactivation with formaldehyde, is incubated with a protein-binding solid phase, with haemagglutinin molecule complex being absorbed physically to this solid phase and not being bound by immunochemical reaction, b) the liquid and the solid phases are separated, c) the adsorbed haemagglutinin molecule complex is incubated with one or more specific antibodies which, directly or indirectly, carry a label. d) the quantity of the label bound to the haemagglutinin molecule complex is determined, and e) the quantity of the immunoreactive haemagglutinin molecule complex is determined from the quantity of the bound label by comparison with one or more standard values. Claim 1 of the auxiliary request read (in English translation ; amendments with respect to the main request are underlined): Method for the immunochemical quantification of inactivated immunoreactive haemagglutinin molecule complexes of influenza viruses, which method comprises the following steps: a) a sample which contains one or more haemagglutinin molecule complexes to be determined, which complexes have been formed during the cleavage of the viruses by lipid-solubilizing agents and inactivation with formaldehyde, is incubated with a protein-binding solid phase, with haemagglutinin molecule complex being absorbed physically to this solid phase and not being bound by immunochemical reaction, b) the liquid and the solid phases are separated, c) the adsorbed haemagglutinin molecule complex is incubated with one or more specific antibodies which, directly or indirectly, carry a label. d) the quantity of the label bound to the haemagglutinin molecule complex is determined, and e) the quantity of the immunoreactive haemagglutinin molecule complex is determined from the quantity of the bound label by comparison with one or more standard values. *** Translation of the German original *** Main request – A 100(c) [1] Claim 1 of the patent as granted is derived from claim 1 of the application as filed, which was amended as follows during the examining proceedings:
Claim 1 of the patent application concerns a method for the immunochemical quantification of “inactivated immunoreactive antigens”, whereas the method according to claim 1 of the patent as granted is directed at the quantification of “inactivated immunoreactive haemagglutinin molecule complexes of influenza viruses”.
In method step (a) three additional features characterising the haemagglutinin molecule complexes have been added, i.e. that the complexes (i) have been formed by inactivation with formaldehyde, (ii) physically adsorb to the solid phase and (iii) are not bound by immunochemical reaction.
[2] During the examining proceedings the applicant cited the passage extending from page 2, line 4, to page 3, line 4, of the application as filed as support for the first amendment […]. The “formaldehyde” feature and the feature related to “physical and not immunochemical adsorption” were said to be based on the second paragraph of page 2 and the third paragraph of page 5 of the application, respectively […]. 1480 | 3398
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K’s Law – The ebook
[3] During the opposition proceedings, the opponent has invoked the ground of opposition pursuant to A 100(c) EPC 1973 […] against the feature “haemagglutinin molecule complexes […], which […] have been formed by inactivation with formaldehyde”. [4] In its impugned interlocutory decision the OD has established that the first sentence of pargraph 3 of page 2 of the application was the only place in the application as filed where an inactivation of haemagglutinin molecule complexes of influenza viruses with formaldehyde is mentioned. The [patent proprietor] has not contested this [finding]. The passage to which the OD referred reads:
The corresponding passage taken from the Canadian counterpart to the EP application. [5] The OD was of the opinion that this passage did not unambiguously disclose a method for the immunochemical quantification immunoreactive haemagglutinin molecule complexes of influenza viruses that have been inactivated with formaldehyde – without preceding lipid solubilisation. [6] The Board of appeal shares this opinion. According to the Board, the feature “inactivation with formaldehyde” is not isolated in the cited passage of the application […] but is clearly put in the context of “cleavage of the viruses by lipid-solubilizing agents”. In contrast, the subsequent indications contained in the passage, which refer to document D8, belong to the exposition of the prior art; the skilled person reading the application would understand them within this context. [7] The Board is not persuaded by the argument of the [patent proprietor] according to which the skilled person would realize that the cleavage of viruses by lipid-solubilizing agents was not essential for the invention. The skilled person would not interpret the omission of this step in the title of document D8, which obviously is an abridged statement of the contents of this document, that this feature characterising the haemagglutinin molecule complexes was not essential. The technical considerations invoked by the [patent proprietor] do not support its argument either. It is not relevant in the present case whether there are influenza vaccines where the viruses are not cleaved with lipid-solubilizing agents because the disclosure of page 2 of the application clearly refers to influenza vaccines where the viruses are treated with lipid-solubilizing agents before they are inactivated with formaldehyde. [8] For these reasons, the Board of appeal cannot discern any clear, direct and unambiguous disclosure in the application as filed which could serve as a basis for claim 1 as granted. Therefore, the ground of opposition pursuant to A 100(c) makes it impossible to maintain the patent as granted. Auxiliary request – A 123(2) [9] Claim 1 of auxiliary request 1 differs from claim 1 of the main request in that the haemagglutinin molecule complexes have been formed by cleavage of the viruses by lipid-solubilizing agents and inactivation with formaldehyde. [10] The Board, very much like the OD, cannot see any basis in the application as filed for an arbitrary sequence (beliebige Reihenfolge) of the steps “lipid solubilisation” and “formaldehyde treatment”. In the application as filed, these two steps are carried out in a given order, i.e. first the cleavage of the viruses by lipid-solubilizing agents and subsequently the inactivation with formaldehyde.
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T 191/08 – Don’t Trust Titles
K’s Law – The ebook
[11] Therefore, the Board is of the opinion that the amendment in claim 1 of auxiliary request 1 is in conflict with A 123(2). […] The appeal is dismissed. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
1482 | 3398
T 273/10 – All About The Money
K’s Law – The ebook
T 273/10 – All About The Money 9 Mrz 2012
Both the opponent and the patent proprietor filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form. The Board decided to maintain the patent as amended during the appeal proceedings and then dealt with costrelated requests under A 104 and – which is less common – Article 16 RPBA. *** Translation of the French original *** Concerning the apportionment of costs ordered by the OD [18] Pursuant to A 104(1) each party shall bear the costs it has incurred, unless the OD, for reasons of equity, orders a different apportionment of costs. When ordering that the opponent bear the costs related to the second oral proceedings (OPs), the OD has concluded that document D10 had been filed belatedly during the OPs and, more precisely, during the examination of the second auxiliary request, which had been filed in the course of said OPs, but the subjectmatter of which was identical, at least as regards content, with the same auxiliary request in its previous form. Thus the opponent would have had to envisage that the content under consideration would be discussed and that, as a consequence, said document had to be filed. The fact that the opponent was in possession of enlarged and coloured figures taken from this very document provided evidence that it had the intention of using it. The Board does not challenge these elements and considers that the opponent has indeed withheld, in an abusive manner, document D10 which it should have submitted in due time so that it could be examined after due hearing of the two parties, thereby allowing the adverse party to analyse it with the required serenity. However, it cannot be denied that the minutes of the OPs establish that this circumstance was not the only reason why second OPs were needed. As a matter of fact, when the OPs were suspended, i.e. on Friday, April 24, 2009, at 17:05, pending auxiliary requests 2, 3, 4, and 5 still had to be examined, which means that it would not have been possible to bring the proceedings to an end on this day. It should also be noted that the second OPs required a whole day from 9:30 to 18:50. Moreover, this way in which the proceedings were conducted allowed the patent proprietor to file new auxiliary requests 1 to 9. It follows that the fact that second OPs took place was of benefit to both parties and there is no need to make the opponent bear all the costs for reasons of equity. Therefore, the impugned decision shall also be set aside on this matter. Concerning the request of the opponent that the patent proprietor reimburse part of its costs [19.1] Article 16 RPBA stipulates that subject to A 104, paragraph 1, the Board may on request order a party to pay some or all of another party’s costs which shall, without limiting the Board’s discretion, include those incurred by any
amendment pursuant to Article 13 to a party’s case as filed pursuant to Article 12(1); extension of a time limit; acts or omissions prejudicing the timely and efficient conduct of OPs; failure to comply with a direction of the Board; abuse of procedure.
[19.2] The [opponent] has pointed out, in support of its request, that the adverse party had proven negligent in its way of conducting the appeal proceedings, in particular by filing new auxiliary requests after the OPs, which requests did not comply with A 84 and A 123(2), as a result of a lack of attention in the preparation of these 1483 | 3398
T 273/10 – All About The Money
K’s Law – The ebook
documents. Therefore, the [opponent] was obliged to send several letters to the Board and incur costs that could have been avoided. [19.3] The Board considers it to be appropriate to remind [the parties] that at the end of the OPs held on February 3, 2011, the Board had issued an interlocutory decision according to which claim 1 of auxiliary request 8c did comply with the provisions of the EPC and had remitted the case to second OPs to be held on September 12, 2011, dealing with the adaptation of the dependent claims and the description. [The patent proprietor] has then successively filed three sets of amended claims on April 15, July 26 and August 23, 2011. [The opponent] has responded by filing observations on May 10 and August 15. [19.4] The Board is of the opinion that the [patent proprietor] has indeed made drafting errors that could have been avoided, in the two first sets of claims cited above. However, the rectifications made subsequent to the communication of the Board and the observations of the [opponent] have made it possible to cancel the OPs, with the agreement of both parties. Therefore, the supplementary costs of the [opponent] were compensated by the cancellation of the OPs, which would have given raise to higher costs. Moreover, the Board notes that the written submissions filed by the [opponent] on March 11, in which it challenged the interlocutory decision that had been made on February 3, which observations were repeated in a letter dated May 10, could not influence the course of the decision-making process. Therefore, the request for reimbursement of costs is unfounded and has to be dismissed. [19.5] The Board notes that the contents of the letter dated September 28, 2011, which only concerns the details of the expenses, cannot change the above conclusions. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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T 317/11 – Inquisitor Me Impune Lacessit
K’s Law – The ebook
T 317/11 – Inquisitor Me Impune Lacessit 8 Mrz 2012
This is an appeal against the refusal of an application by the Examining Division (ED). Together with the statement of grounds as filed on August 6, 2010, a set of amended claims was filed. On January 31, 2011, the ED instructed the formalities officer that it would not rectify the decision under appeal and that the case should be referred to the board of appeal. [1.1] The decision to refuse was preceded by a communication of the ED issued on 6 May 2009 in which inter alia objections of added subject-matter (A 123(2) […]) against claim 2 and of lack of inventive step (A 56 EPC […]) against claim 1 were raised. [… T]he ED further argued that “The expression […] “man or machine” discloses two alternatives. The lack of inventive step described above concerns the alternative where the B-replier is a man. But the lack of inventive step of one of both alternatives results in lack of inventive step of the claim 1”. In the same communication the ED proposed an amended claim 1 which in its view would overcome the objections on file […]. From this proposal it is clear that the ED considered the claimed method as involving an inventive step if the authorized party was “a machine called B-replier” whereas it considered the method as lacking an inventive step if the method encompassed the possibility that the authorized party was a “man called B-replier”. [1.2] A new set of claims was filed on 8 August 2009. The ED then refused the application, taking the view that the objections raised in the communication were not met by the amended claims. [1.3] Claim 1 as filed together with the statement of grounds corresponds to the claim which the ED stated in its communication of 6 May 2009 would overcome the objections it had raised. In the reasons of the impugned decision […] the ED explicitly described the proposed claim as “patentable subject-matter”. Furthermore, claims 2 and 12, said by the ED to contain added subject-matter, have been deleted from the present set of claims. Hence, the objections which led to refusal of the application have been overcome by amendment. Consequently, the appeal is well founded. [1.4] According to the established case law of the boards of appeal (see e.g. T 139/87; T 2140/09) the case ought therefore to have been rectified by the department of first instance pursuant to A 109(1). The ED did not however grant interlocutory revision, the reason for the apparent change of mind of the ED remaining unclear to the board. Under these circumstances the board considers that the case should be remitted to the ED for further prosecution in accordance with A 111(1). The request for reimbursement of the appeal fee [2.1] Pursuant to R 103(1)(a) the appeal fee shall be reimbursed in the event of interlocutory revision or where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation. [2.2] The board infers from the statement of grounds of appeal […] that by refusing the application at this stage of the procedure the appellant (applicant) was taken by surprise so that the refusal constituted a substantial procedural violation. [2.3] The grounds for refusal as given in the reasons of the impugned decision substantially correspond to the objections as discussed above […]. [2.4] It follows that the decision to refuse the application was based solely on grounds communicated to the applicant in the ED’s communication and on which the applicant had an opportunity to comment (A 113(1)). 1485 | 3398
T 317/11 – Inquisitor Me Impune Lacessit
K’s Law – The ebook
Whether or not in the present case a further communication should have been issued by the ED instead of an immediate refusal was a matter for the discretion of the ED. Accordingly, the grounds for refusal do not give rise to a procedural violation. [2.5] Furthermore no sanction is provided in the EPC in the event of failure to forward the case to the board of appeal within the three month time limit as required by A 109(2); therefore the fact that the ED had delayed the remittal of the appeal to the board of appeal by more than five months from receipt of the statement of grounds in contravention of A 109(2) entails no legal consequence. [2.6] Even if this delay may be considered a procedural violation there is no causal link between the reasons of the impugned decision and this deficiency. Accordingly this procedural violation is not “substantial” in the sense of R 103(2). [2.7] It follows from all these reasons above, that the board sees no substantial procedural violation in view of which reimbursement would be equitable. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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R 10/11 and R 2/11 – Busy Guillotine
K’s Law – The ebook
R 10/11 and R 2/11 – Busy Guillotine 7 Mrz 2012
If a fairy offered me a voucher allowing to get rid of one EPC provision, I guess I would choose R 106. However, as fairies are rare these days, we will have to live with this rule, which often determines the fate of petitions for review. Here are two recent examples, both translated from the French. R 10/11 In the appeal underlying this case (T 383/09), Board 3.2.03 had revoked the opposed patent. The patent proprietor based his petition for review on a violation of its right to be heard. [3.1] The obligation to raise an objection pursuant to R 106 as soon as the alleged grievance (grief) is identified is a procedural act that constitutes a necessary condition and a precondition for access to the extraordinary legal remedy offered by revision of last-instance decisions taken by the Boards of appeal. As such the objection has to be duly qualified by the party that raises it; this has to be done in such terms that the jurisdictional body is in a position to identify its nature and extent without any ambiguity. For the same reasons, it has to be specified by the the party that raises it, such that its legal basis can be identified within the exhaustive list provided by A 112bis(2)(a)-(d) and R 104. This is well established in the case law; see inter alia R 4/08 [2.1], R 8/08 [1.2.3] and R 7/11 [2.1]. [4] In the present case this condition has not been complied with. [4.1] As a matter of fact, it can be seen from the very wording of the petition for review […] that “[t]he Board of appeal then announced its decision not to admit auxiliary requests 3 and 4 into the proceedings”. [5] It is true indeed that, according to the author of the petition, “it had expressed the fact that it considered the behaviour of the Board of appeal to be flawed (vicié) and requested that its right to be heard on those requests be respected”. However, this protest has not been qualified at all pursuant to R 106 as can be seen from the reasons of the impugned decision and from the minutes of the oral proceedings (OPs) dated March 17, 2011, which means that the Board has not been in a position to reject it or to allow it. Moreover, it follows from the petition and from its complement that the admissibility of the third and fourth auxiliary requests has been discussed in great detail […]. [5.1] As a consequence, the right to be heard on the admissibility, which is by nature subject to the discretion of the Board, has indeed been granted. [5.2] As a matter of fact, the petition, under the pretext of a violation of A 113(1), the petition only tries to challenge the way in which the Board used its discretion. In this respect the Enlarged Board can only remind [the petitioner] that by essence the discretionary power of a Board to admit late-filed requests or to dismiss them cannot be examined as to whether it has been exercised in the right way, unless the Board has exercised its discretion in a manifestly arbitrary or unlawful way, which is not the case here. As a matter of fact, the Board has made use of its discretion and found that the inadmissible requests prima facie did not overcome the objections raised against the maintenance of the patent. [6] Thus the petition is clearly inadmissible and unfounded, and, as such, has to be dismissed. To download the whole decision (in French), click here. The file wrapper can be found here.
R 2/11
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R 10/11 and R 2/11 – Busy Guillotine
K’s Law – The ebook
In the appeal underlying this case (T 150/09), Board 3.2.04 had also revoked the opposed patent. The patent proprietor based his petition for review on a violation of its right to be heard and another procedural violation. The Enlarged Board found the petition to be inadmissible because R 106 had not been complied with. It repeated verbatim point [3.1] of R 10/11 (with the sole modification that R 10/11 was added to the list of decisions cited) and then went on : [2.2] In the present case the petitioner has acknowledged that it had not qualified its objection but it points out that it had protested against the principle of the hearing of the expert cited by the adverse party, which necessarily identified the alleged violation. However, neither the minutes of the OPs nor the written decision show any trace of an objection that has been expressly qualified pursuant to R 106 which the Board of appeal had the opportunity to deal with in the course of the OPs. Therefore, the preliminary condition for admissibility has not been complied with and the request is clearly inadmissible. To download the whole decision (in French), click here. The file wrapper can be found here.
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T 1953/07 – Words Count
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T 1953/07 – Words Count 6 Mrz 2012
This appeal was against the decision of the Examining Division (ED) to refuse the patent application under consideration, on the basis that the independent claims in the main request did not satisfy R 29(2) EPC 1973, that claim 1 in the main request was not novel and that the auxiliary request contained subject-matter did not comply with A 123(2) EPC. The following document was cited in the decision: The independent claims of the main request before the Board read as follows: Claim 1 A method for determining an address that uniquely identifies a hardware component (200) on a common bus (115), said method characterized by the steps of: reading identification information from a connector of said hardware component, said identification information having physical significance; and deriving a bus address from said identification information that uniquely identifies said hardware component on said common bus. Claim 3 A system for determining an address that uniquely identifies a hardware component on a common bus, said system characterized by: a memory (220) for storing computer readable code; and a processor (210) operatively coupled to said memory, said processor configured to: read identification information from a connector of said hardware component, said identification information having physical significance; and derive a bus address from said identification information that uniquely identifies said hardware component on said common bus. Claim 10 A method for determining the configuration of a plurality of hardware components installed on a larger piece of equipment, said method characterized by the steps of: providing an identification value to each of said hardware components, said identification value having physical significance; receiving physical identification information from each of said hardware components; and determining how said plurality of hardware components are interconnected. Claim 12 A system for determining the configuration of a plurality of hardware components installed on a larger piece of equipment, said system characterized by: a memory for storing computer readable code; and a processor operatively coupled to said memory, said processor configured to: provide an identification value to each of said hardware components, said identification value having physical significance; receive physical identification information from each of said hardware components; and determine how said plurality of hardware components are interconnected. The Board confirmed the finding of the ED according to which claim 1 was not novel. It nevertheless decided to deal with the issue of plural independent claims in the same category. NB: R 29(2) EPC 1973 – which has now become R 43(2) – read Without prejudice to A 82, a EP application may contain more than one independent claim in the same category (product, process, apparatus or use) only if the subject-matter of the application involves one of the following : (a) a plurality of inter-related products ; (b) different uses of a product or apparatus ; (c) alternative solutions to a particular problem, where it is not appropriate to cover these alternatives by a single claim. 1489 | 3398
T 1953/07 – Words Count
K’s Law – The ebook
Independent claims in the same category; R 29(2) EPC 1973 [4.3] As set out in the appealed decision, the subject-matter claimed in the independent method claims 1 and 10, as well as the subject-matter claimed in the independent apparatus claims 3 and 12, does not involve any of the exceptions (a), (b) or (c) mentioned under R 29(2) EPC 1973. According to the appellant, the independent claims in each category involve “a plurality of interrelated products” (Rule 29(2)(a) EPC 1973), the tasks in claims 1 and 10 both being related to managing and operating hardware components; in claim 1 by providing an identification value having physical significance to each hardware component, and in claims 1 and 10 by reading/receiving identification information having physical significance. The appellant points out that, in order for information to be read by a component, it must be provided by a component and, thus, the step of reading requires a complement or cooperation for the step of providing. The board, however, holds the view, as did the first instance, that the mere fact that the information provided is the same as that which is read is not sufficient to demonstrate the presence of an interrelationship in the sense of R 29(2)(a) EPC 1973. The remainder of the claims’ wording cannot be left aside when arguing that such an interrelationship exists. For example, in order for the subject-matter in two independent claims to be considered interrelated, there should, at the very least, be no discrepancy in the wording that is used to define those elements in the subjectmatter in each of these claims that would be identical in view of the nature of the interrelationship. This is clearly not the case for respectively claims 1 and 10. Indeed, claim 1 relates to “a method for determining an address that uniquely identifies a hardware component on a common bus”, whereas claim 10 relates to “a method for determining the configuration of a plurality of hardware components installed on a larger piece of equipment”. The appellant has provided no reason why, although the subject-matter of both claims is, allegedly, interrelated, the component in claim 1 is on a bus, whereas the components in claim 10 are on a “larger piece of equipment”, which may or may not be a bus. The same applies to independent system claims 3 and 12. The appellant has, thus, not provided any counterarguments that successfully rebut the arguments given in the appealed decision and that would thereby show that the presence of two independent claims in, respectively, the method and the apparatus category is, or possibly could be, justified. The board, therefore, concludes that the main request does not satisfy the requirements of R 29(2) EPC 1973. To download the whole decision, click here. The file wrapper can be found here.
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T 1049/08 – No Liquids
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T 1049/08 – No Liquids 5 Mrz 2012
To my best knowledge, this decision – which in itself is not very exciting – is the first Board decision to apply the teaching of G 2/10 concerning the possibility of disclaiming disclosed embodiments. The opponent filed an appeal after the Opposition Division had rejected the opposition. The main request before the Board was identical to the set of claims as granted. Claim 1 of this request read: A food intake restriction device for forming a stoma opening in the stomach or esophagus of a patient, the device comprising: A) an elongated restriction member (2, 48, 60, 62, 88, 110, 122, 126, 128, 130), B) forming means (10, 94, 106, 108, 118, 132) for forming the elongated restriction member into at least a substantially closed loop around the stomach or esophagus, said loop defining a restriction opening (3); C) an adjustment means (12, 52, 66, 90, 92, 104, 110) for adjusting the restriction member in said loop to change the size of said restriction opening, C1) wherein the adjustment means is designed to mechanically adjust the restriction member C2) in a non-invasive manner to allow post operation non-invasive adjustment of the restriction member; D) an implantable signal receiving means (334, 338) comprising a control unit for controlling the adjustment means in response to signals from a wireless remote transmitting means; and E) an implantable energizer unit for providing energy to energy consuming components of the device, characterised in that: E1) the energizer unit is capable of being provided with energy via wireless energy transfer from the signal transmitting means. Claim 1 according to the First Auxiliary Request differs therefrom by the following additional after feature B: F) there is no liquid directly involved in the elongated restriction member itself for providing inflation thereof. NB: The designation of features A to F has been introduced by the Board. The Board found the priority claim to be invalid for the main request and concluded that, as a consequence, claim 1 lacked novelty over document E22. In what follows, the Board discusses the validity of the priority claim and the novelty of claim 1 of the auxiliary request: Validity of the priority [4.2] Feature F is derived literally from page 3, lines 13 to 16 of the previous application.
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T 1049/08 – No Liquids
K’s Law – The ebook
Extract of the U.S. provisional application the priority of which is claimed. The paragraph comprising this feature describes further features of the gastric band, such as adjustment means being designed to mechanically adjust the restriction member and non-invasive post-operative adjustment thereof. Claim 1 according to the auxiliary request comprises all these features even though not in immediate succession. Therefore, it claims the same device described on page 3 of the previous application. It is irrelevant whether or not any cause-effect link between the different features is specified, since the introduction of such a combination would not change the subject matter of the claim. It is correct that in principle the wording of claim 1 would encompass the use of a gas for inflating the restriction means while the priority document related exclusively to non-inflatable restriction means. However, due to the application of the restriction means within a gastric band the use of a gas for inflation is excluded as a matter of fact. Therefore, in the present context, feature F according to which no liquid is involved in the restriction member for providing inflation thereof corresponds to the feature according to which the restriction member is non-inflatable. Hence, the invention defined in claim 1 of the auxiliary request is the same as that of the priority document and the priority is validly claimed. Clarity [4.3] The feature introduced into claim 1 according to which “there is no liquid directly involved in the elongated restriction member itself for providing inflation thereof” is clear. In the context of the present claim, the wording “directly involved” can only be interpreted as meaning that no liquid is used in the restriction member for changing its dimension by inflation. It is correct that the feature introduced into the claim allows a liquid to be used for conveying forces to the restriction means, i.e. the liquid can be involved indirectly, e.g. in the form of a hydraulic actuator, however this does not render the wording unclear. The term “itself” as used in feature F only stresses the fact that no liquid is involved in the elongated restriction member. The fact that the boundaries of the restriction member are not specified in the claim is not linked to the term “itself” and does not render it unclear. If at all the absence of a definition of the boundaries might become relevant for ascertaining the novelty and inventive step of the subject matter of the claim. Moreover, since the sentence would have exactly the same meaning if the term “itself” was left out, this term cannot introduce any unclarity or vagueness into the feature.
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T 1049/08 – No Liquids
K’s Law – The ebook
In contradiction to the appellant’s opinion, the term “liquid” has a clear and well known physical meaning. As for example described in Collins English Dictionary, Fourth Edition, 1998, a liquid is “a substance in a physical state in which it does not resist change of shape but does resist change of size”. Therefore, this term per se is clear. It is correct that the state of a substance changes depending on its temperature and pressure and that a liquid may become a solid or a gas. However, in the present case, claim 1 refers exclusively to a liquid and not to a solid or a gas. Therefore, feature F complies with the requirements of A 84 as well. Allowability of the amendments [4.4] By stating that no liquid is involved in the elongated restriction member for providing inflation thereof, feature F comprises a negative formulation and disclaims the use of liquids for inflation of the restriction member. However, it is permissible to restrict the subject-matter using a negative limitation i.e. a disclaimer if – as in the present case – adding positive features to the claim either would not define more clearly and concisely the subject-matter still protectable or would unduly limit the scope of the claim. The decision G 1/03 cited by the appellant refers to so-called “undisclosed disclaimers”, i.e. to disclaimers which do not have any basis in the application as filed. It is correct that such disclaimers are only allowable if they meet the conditions set out in G 1/03. However, since the limitation introduced by feature F is derived literally from page 3, lines 26 to 29 of the original application it has a basis in the original application and does not represent an undisclosed disclaimer but a disclaimer for a disclosed subject matter. Hence G 1/03 is not relevant in the present case. G 2/10 which deals with the allowability of disclosed disclaimers exclusively states that an amendment to a claim by the introduction of such a disclaimer infringes A 123(2) if the subject-matter remaining after the introduction of the disclaimer is not disclosed in the application as filed (see headnote 1a). Moreover, G 2/10 points out that G 1/03 refers exclusively to undisclosed disclaimers (see G 2/10 [3.9]). Consequently, G 2/10 has to be considered in the present case. Since the subject matter remaining after the introduction of feature F is clearly disclosed in the originally filed application (see arguments brought forward under [4.2] above in the context of validity of the priority which apply to the allowability of the amendments as well), a fact which has not been challenged by the appellant, the amendments introduced into claim 1 are allowable under A 123(2). G 1/03 and G 2/10 have defined a “disclaimer” to be “an amendment to a claim resulting in the incorporation therein of a “negative” technical feature, typically excluding from a general feature specific embodiments or areas”. More commonly, it is the negative feature itself that is referred to as disclaimer. Feature (F) is such a negative feature. G 2/10 has stated that “[a]n amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter disclosed in the application as filed infringes A 123(2) if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.” The present case is particular in that the disclaimer as such was already disclosed, whereas G 2/10 – as I understand it – considered the more general case of a disclaimer disclaiming disclosed subject-matter. To bring it to the point, the present decision deals with a disclosed disclaimer whereas G 2/10 deals with disclaiming disclosed subject-matter. My feeling is that when the disclaimer as such is disclosed – in combination with the claimed features – the amendment should be allowable anyway, and the reference to G 2/10 is not even necessary. Any thoughts? To download the whole decision, click here. The file wrapper can be found here.
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T 1836/09 – Whenever, Wherever
K’s Law – The ebook
T 1836/09 – Whenever, Wherever 3 Mrz 2012
This appeal was filed by the patent proprietor after the Opposition Division had revoked his patent. Claim 1 of the main request before the Board read (the amendment with respect to claim 1 as granted is apparent): 1. A flexible biaxially stretched, heat shrinkable polymeric film having at least one layer comprising a blend of at least three polymers comprising: 20 to 85 weight percent of a first polymer having a melting point of 80 to 928°C comprising at least one copolymer of ethylene and hexene-1; 5 to 35 weight percent of a second polymer having a melting point of 115 to 128°C comprising at least one copolymer of ethylene and at least one alpha-olefin; and 10 to 50 weight percent of a third polymer having a melting point of 60 to 110°C comprising at least one copolymer of ethylene and a vinyl ester, an alkyl acrylate, acrylic acid, or methacrylic acid; wherein said first and second polymers have a combined weight percentage of at least 50 weight percent, said weight percentage being based upon the total weight of said first, second and third polymers. The question arose whether this claim complied with the requirements of A 123(2): [2.1] The subject-matter of Claim 1 of the main request differs from Claim 1 as granted in that the melting point range for the first polymer has been amended from 80 to 98°C to 80 to 92°C. The [opponent] argued that the new range of 80 to 92°C had not been disclosed in the application as filed in combination with the other features of Claim 1 as granted. [2.2] However, it is apparent from the original application as a whole that a melting point range of 80 to 92°C for the first polymer is a generally preferred range. Thus, the passage on page 11, lines 11-12, under the heading “Summary of the invention”, discloses that: “In various embodiments the inventive film comprises a blend including: (a) a first polymer having a melting point of 80-98°C, preferably 80-92°C, comprising a copolymer of ethylene and hexene-1;” (emphasis added). Further, when it comes to describing the first polymer in detail, it is mentioned on page 18, lines 10-11, that: “The first polymer of the preferred film blend has a melting point of 80 to 98°C, preferably 80 to 92°C, and comprises an ethylene hexene-1 copolymer” (emphasis added). The board concurs with the appellant that the skilled person considering the application as filed as a whole (following the consistent case law of the boards of appeal of the EPO; cf. T 860/00) would directly and unambiguously infer from this document that the melting point range of 80-92°C of the first polymer is implicitly included as the preferred range for the first polymer wherever it is mentioned in the original document. This applies also to the embodiment of Claim 1 as granted, which is derivable from a combination of Claim 1 as filed with the embodiment disclosed in the paragraph bridging pages 22 and 23 of the application as filed. [2.3] Consequently, the further limitation of the melting point of the first polymer by the preferred range of 8092°C, which leads to the subject-matter of Claim 1 of the main request, fulfils the requirements of A 123(2). To download the whole decision, click here. The file wrapper can be found here.
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K’s Law – The ebook
To All The EQE Candidates ...
To All The EQE Candidates ... 3 Mrz 2012
... reading this blog, let me wish you the best of luck. Luck alone will not do the job, but you still will need some of it next week. NB: I shall be invigilating in Stockholm this year. If you happen to take the exam there, please say hello.
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T 535/08 – No Contribution
K’s Law – The ebook
T 535/08 – No Contribution 2 Mrz 2012
As most readers of this blog will be aware of, G 1/93 made the following statement: A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed in the sense of A 123(2). The ground for opposition under A 100(c) therefore does not prejudice the maintenance of a European patent which includes such a feature. A closer inspection of G 1/93 shows that the Board had disclaimers in mind when drafting this headnote, but for some reasons unknown to me, the word “disclaimer” is mentioned only once in the decision (point [7], citing an argument of the patent proprietor). As it stands, the headnote could also refer to “features that do not provide a technical contribution” other than a disclaimer, and it has indeed often been understood in this way. The present decision is interesting in this respect. Claim 1 of the patent as granted read: A friction lining mixture for brake and clutch linings co-operating with a friction partner, composed of metals that may be present in fibrous and powdery form, fillers, lubricants, binders and organic components, characterized in that the friction lining mixture contains, as a solid lubricant additive, at least one metal sulphide of the formula
wherein M1, M2 and M3 are different from each other and each represent one metal of the series Ti, V, Mn, Fe, Cu, Zn, MO, W, Sb, Sn and Bi, S denotes sulphur, and the subscripts comprise the ranges of I = 1-5, m = 1-5, n = 0-5 and X = 2-8. The appeal under consideration was filed by the opponent after the Opposition Division had maintained the patent in amended form. Claim 1 of the main request filed during oral proceedings (OPs) before the Board read Use of a solid lubricant additive containing at least one metal sulphide of the formula
as solid lubricant, wherein M1, M2 and M3 are different from each other and each represent one metal of the series Ti, V, Mn, Fe, Cu, Zn, MO, W, Sb, Sn and Bi, S denotes sulphur, and the subscripts comprise the ranges of I = 1-5, m = 1-5, n = 0-5 and X = 2-8, in a friction lining mixture for brake and clutch linings co-operating with a friction partner, composed of metals that may be present in fibrous and powdery form, fillers, lubricants, binders and organic components. The Board first dismissed several objections under A 100(c) and then went on to say: *** Translation of the German original *** [3.1.3] As rightly pointed out by the [opponent], the feature “composed of metals … fillers, lubricants, binders and organic components” was not disclosed in the original version of the application. However, it was disputed
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T 535/08 – No Contribution
K’s Law – The ebook
whether the corresponding amendment made the maintenance of the patent impossible or whether it was allowable in application of decision G 1/93. In this decision the Enlarged Board came to the following conclusion: “A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed in the sense of A 123(2). The ground for opposition under A 100(c) therefore does not prejudice the maintenance of a European patent which includes such a feature. In the present case the feature was introduced into the claims during the examining proceedings. It is also undisputed that it limits the scope of protection conferred by the patent as granted. The feature could be found allowable only if it does not provide any technical contribution to the subject-matter of the claimed invention. The [opponent] was of the opinion that the feature was essential for the invention (erfindungswesentlich), that it did delimit the subject-matter of the claims with respect to the state of the art and that, as a consequence, it did provide a technical contribution […]. This is to be approved insofar as this feature, when it was introduced within the framework of the examining proceedings, was indeed intended to delimit the subject-matter of the claim with respect to the state of the art. However, as will be explained in point [7] below [wherein the Board demonstrates the novelty of claim 1], this does not hold true for the use claims any more […]. As correctly stated in the impugned decision, the technical focus is on the use of the sulphides as solid lubricant additive in friction lining mixtures. This additive is intended to reduce wear and the dependence of friction on temperature and pressure […]. This intended contribution to the effect of the friction linings is to a large extent independent of the other components of the friction lining mixture. Therefore, the definition of the other components of the mixture does not provide any technical contribution to the claimed invention but merely delimits the subject-matter of the claims. As a consequence, in agreement with decision G 1/93, there is no reason why the insertion of this definition into present claim 1 would make the maintenance of the patent impossible. […] The decision also deals with an objection against the validity of the priority claim, which was decisive for deciding whether document D14 could be cited against the patent: [6.1] The European patent application D14 was filed on October 14, 1996, claiming a priority of October 16, 1995. Therefore, its priority date lies between the priority date (May 17, 1995) and the day of filing (April 12, 1996) of the impugned patent. Therefore, the application D14 can only be prior art under A 54(3) if
the priority of D14 is valid, and the priority of the impugned patent is not.
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T 19/05 – A Special Relationship
K’s Law – The ebook
T 19/05 – A Special Relationship 1 Mrz 2012
The opponent filed an appeal against the decision of the Opposition Division (OD) to reject the opposition. One of the crucial issues was the availability of documents B1, B2 and B7 to the public. Document B1 [2.1.1] According to the [opponent’s] own submissions […], it was the [opponent] that approached Prof. Mustacchi and commissioned a study concerning a process for concentrating tannin solutions using membranes. The study was carried out by the company ADES S.R.L. in collaboration with employees of the [opponent], was fully paid by the [opponent] and resulted in technical report B1, which mentions the involvement of inter alia Prof. Mustacchi […]. Copies of document B1 were given to the [opponent] in July 1997. None of this was disputed by the [patent proprietor]. [2.1.2] Document B11 is an offer and cost estimate signed by Prof. Mustacchi in the name of ADES S.R.L., and is addressed to the Nuova Rivart S.p.a., i.e. the present [opponent]. B11/B11’ specifies the price for carrying out a “Feasibility study for a tannin production plant” and refers to “preliminary contents” thereof indicated in “enclosure A”, which enclosure is not, however, part of the document B11. For the board, B11 corroborates that it was the study commissioned by the [opponent] that led to the preparation of the report B1. It is also credible that the [opponent] paid an amount as specified in document B11 […] upon receipt of the report B1. [2.1.3] As already noted by the OD, B1 is a company generated technical paper and can thus not be assumed to have automatically made its way to the public, see e.g. decision T 37/96 [2.1.2]. Moreover, the study which resulted in report B1 was commissioned and paid for by the [opponent], who provided the initial input, and closely cooperated with ADES S.R.L. during the study. [2.1.4] Hence, the payment made by the [opponent] to ADES S.R.L. cannot be equated to a conventional sale of a printed company generated paper by a first company to any customer, i.e. an economically unrelated second company. On the contrary, the study was thus undertaken within the framework of a close technical/business cooperation between ADES S.R.L. and the [opponent]. Such a cooperation is usually based on trust and hence under a tacit confidentiality agreement. For the board, the commissioning of the study established a special relationship (in the sense of decision T 1081/01 [6-8]) between the donor of the information, i.e. ADES S.R.L., and its recipient, i.e. the [opponent]. Consequently, in the board’s judgement, the [opponent] and its employees […] and consultants […] cannot be considered to be members of the public within the meaning of A 54(2). [2.1.5] There is also no evidence on file, and it was not argued, that the content of document B1 was made available to any member of the public, i.e. to somebody unrelated to ADES S.R.L. or the [opponent] before the effective filing date of the patent in suit and without an at least tacit confidentiality agreement. [2.1.6] In the board’s judgement it has not been shown that document B1 or its contents were made available to the public before the effective filing date of the patent in suit. Hence, the disclosure of document B1 does not pertain to the state of the art pursuant to A 54(2). Document B2 [2.2.1] Document B2 is an offer bearing the number “Estimate P-3090” and made by Hydro Air Research S.R.L. This project cost estimate […] concerns a plant for treating a pre-filtered/clarified liquid containing tannin and stemming from a chestnut extraction step involving membrane ultrafiltration and evaporation to obtain a tannin concentrate. [2.2.2] The offer had been requested by Sadepan Chimica S.R.L., a “sister company” of the [opponent] in the latter’s own words, i.e. a company in very close business relationship with the [opponent] […]. According to the 1498 | 3398
T 19/05 – A Special Relationship
K’s Law – The ebook
[opponent], the offer is based on information, more particularly the content of document B1, provided by Sadepan Chimica S.R.L. to Hydro Air Research S.R.L. within the framework of a commercial relationship which is usually based on trust and hence under a tacit confidentiality agreement. The company Hydro Air Research S.R.L. can thus be considered as a “subcontractor” in the sense of decision T 799/91 [4.1]. Hence, the board does not consider it as any “third party” or “member of the public”. Moreover, said request for an offer clearly established a special relationship in the sense of decision T 1081/01 [6-8] between the donor of the information, i.e. Sadepan Chimica S.R.L. and the [opponent], and its recipient, i.e. Hydro Air Research S.R.L. Consequently, employees of the latter cannot be considered as members of the public. [2.2.3] Moreover, there is no evidence on file showing that Hydro Air Research S.R.L. made document B2 available to a member of the public, i.e. to a person not employed by or in business relationship with Sadepan Chimica S.R.L or the [opponent]. [2.2.4] In the board’s judgement the content of document B2 was thus not made available to the public before the (effective) filing date of the patent in suit and without a confidentiality agreement. Hence, document B2 does not pertain to the state of the art pursuant to A 54(2) either. Document B7 [2.3.1] Document B7 consists of a printout of web pages relating to membrane separation products commercialised by the company Millipore. [2.3.2] According to the case law of the boards of appeal of the EPO, if an internet disclosure is to be used as prior art, a strict standard of proof should be adopted. The particular facts and evidence required will normally have to answer inter alia the questions of when the internet disclosure was made available to the public and under which circumstances it was made available to the public (see e.g. T 1134/06 [4.1]). [2.3.3] The date on which the printout was made is not apparent from document B7. The printout could thus have been made when the opposition was filed, i.e. after the publication of the granted patent. Moreover, as was already noted in the contested decision, document B7 contains no reference to the date at which said web pages were uploaded and their contents thus made available to the public. [2.3.4] No supporting evidence was provided during the opposition procedure which showed that the information content of B7 had been available to the public before the effective filing date of the patent in suit. Despite the findings of the OD and the general remark in the board’s communication […], no such evidence was submitted in the appeal proceedings either. [2.3.5] Since the availability to the public of the information content of B7 before the effective filing date of the patent in suit is not proven, the board sees no reason for overturning the finding of the OD in this respect. Hence, in the board’s judgement, the information contained in document B7 does not pertain to the state of the art pursuant to A 54(2) either. [2.3.6] The argument of the [opponent], according to which the date of the document “does not seem to be so important”, is rejected. Due to the missing publication date information, document B7 cannot even serve the purpose of establishing, as common general knowledge, that pre-filtration was a feature in common to all “SWM membranes” before the effective filing date of the patent in suit, as alleged by the [opponent]. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 418/07 – Nonchalance
K’s Law – The ebook
T 418/07 – Nonchalance 29 Feb 2012
The opponent filed an appeal after the Opposition Division had rejected the opposition. The decision is interesting because the patent proprietor had some rather unusual requests related to the oral proceedings (OPs) to be held before the Board: Multiple representatives [2] On 4 April 2011, shortly before the OPs on 4 May 2011, the [patent proprietor] appointed a second firm of representatives as joint representatives in addition to the firm already acting and asked the board to send copies of all correspondence to both firms […]. After the board gave a negative answer to that request in its communication of 12 April 2011, the [patent proprietor] repeated the request in a subsequent letter of 14 April 2011 […]. [3] While it is open to a party to appoint as many representatives as it may wish, the board is not aware of any requirement on it or on other parties to send correspondence to more than one representative of one party. If a party wants to retain multiple representatives, it must make its own arrangements for copying correspondence to them all. Parties cannot expect the board to provide copying services for their convenience. Provision of translation in OPs [4] The [patent proprietor] announced in its letter of 4 April 2011 that it would use German at the OPs and requested the board to provide translation from German into English for the benefit of the [opponent] and of one of its own employees who would attend the OPs and who does not speak German […]. [5] It is a right of any party to use any one of the three official languages in EPO proceedings, but the right to translation from either of the two other languages is circumscribed by R 4. It is clear from R 4(1) and (5) that a party who gives at least one month’s prior notice is free to use an official language other than the language of the proceedings and that interpretation must then be provided by the EPO. [6] However, such interpretation is quite manifestly only for the benefit of other parties not using the same language who would otherwise be at a disadvantage. In the present case that might have included the [opponent] had it not decided not to attend the OPs but then it would clearly have been he, and not the [patent proprietor], who was responsible for requesting free translation at least one month before the date of the OPs (see R 4(1)). In the board’s view it is equally clear that a party which elects to use a language which is not understood by one of its own representatives or employees cannot for that reason request a free translation. The board cannot provide translation merely to suit the convenience of a party. Requests for decisions in advance of OPs [7] The [patent proprietor] made several attempts to obtain a decision or partial decision from the board before the date of the OPs. In one of its letters of 4 April 2011 it requested the board to indicate whether or not the OPs were necessary and also requested the board to inform it whether or not it intended to admit the documents whose admissibility the [patent proprietor] had challenged […]. This would have required the board to decide those admissibility issues before the OPs. In its letter of 21 April 2011, it limited its request for OPs so as only to be effective if its main request was not granted. Again this would have required the board to decide the main request before the OPs. [8] The [patent proprietor’s] objective seems to have been the quite understandable one of avoiding or reducing the costs of attending the OPs. However, even if only one party makes or maintains a request for OPs, the board cannot make any decision before the OPs. The purpose of OPs being to hear the parties before making a decision, any decision or part-decision in advance of the OPs could deny a party the right to be heard, assist one party to the prejudice of another, and compromise the board’s duty of impartiality (see A 113(1) and decision R 11/08 [14]). If avoidable costs are a concern to a party, its remedy is to request not a premature decision but an apportionment of costs. 1500 | 3398
T 418/07 – Nonchalance
K’s Law – The ebook
To download the whole decision, click here. The file wrapper can be found here.
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T 960/08 – A Certain Uncertainty
K’s Law – The ebook
T 960/08 – A Certain Uncertainty 28 Feb 2012
On 14 May 2008, VDO Automotive AG (“VDO”) filed an appeal against the decision of the Opposition Division (OD) to reject an opposition filed by Siemens AG (“Siemens”). The appeal was filed in the name of VDO and, as an auxiliary request, in the name of Siemens. With a letter received on 26 June 2008, i.e. after expiry of the period for filing the notice of appeal, the representative filed a declaration by Siemens and another declaration made on behalf of VDO, both dated 22 April 2008, stating that the opponent status had been transferred, as well as an extract from the commercial register of the Amtsgericht Regensburg. The patent proprietor questioned VDO’s entitlement to appeal and the admissibility of the auxiliary request indicating Siemens as an appellant. The Board’s analysis of the situation contains both a useful overview over the applicable case law and an interesting statement on auxiliary requests. [1] At the end of the oral proceedings (OPs), the representative of the appellant requested that the board first decide on the auxiliary request. This request requires a reversal of the order in which the requests were filed. The admissibility of the appeal can be examined only on the basis of the legal facts as they stand at the time the period for filing the notice of appeal expired. The order of requests concerning the person of the appellant is also a legal fact. Therefore, the requests have to be considered in the order they were filed when the time limit for filing the notice of appeal expired. The request is therefore refused. Entitlement to appeal of VDO [2.1] VDO is not entitled to appeal under A 107, first sentence. According to A 107, first sentence, only a party to proceedings adversely affected by a decision may appeal. In deciding which party is affected by a decision, the legal situation at the time the impugned decision was issued has to be considered. The party adversely affected by the decision under appeal is Siemens, since its opposition was rejected by the impugned decision. Siemens filed the opposition and remained the party to the opposition proceedings until the end of the procedure, i.e. it was the party to the opposition proceedings at the time the decision under appeal was issued. There was no indication in the notice of opposition that the opposition had been filed in the interests of the business assets “Siemens VDO Automotive” or any other special business assets. These facts are evident from the file and have been confirmed by the appellant. It follows that Siemens was formally the party to the opposition proceedings. VDO was never a party to the proceedings before the department of first instance in the present case. Therefore, the conditions laid down in A 107, first sentence, concerning entitlement to appeal are not fulfilled. [2.2] VDO is not entitled to appeal due to the transfer to it of the business assets “Siemens VDO Automotive”. Where opposition proceedings are pending before the EPO, the opponent’s status may be transferred to a third party by universal succession or as part of the opponent’s business assets, together with the assets in the interests 1502 | 3398
T 960/08 – A Certain Uncertainty
K’s Law – The ebook
of which the opposition was filed (see G 4/88 and Case Law of the Boards of Appeal, 6th Edition 2010, VII.C.5.1.2). However, there is a clear distinction between a substantive transfer of opponent status with the business assets and its procedural validity in proceedings before the EPO (cf. among others, T 19/97). The boards of appeal have consistently held that formal requirements have to be fulfilled for the opponent status to be considered transferred. This finding is based on an application, by analogy, of the general procedural principle laid down in R 22(3) (cf. Case Law of the Boards of Appeal, 6th Edition 2010, VII.C.5.1.2). It follows from this procedural principle that the procedural validity of a transfer of opponent status is dependent on the submission of a duly substantiated request and on production of documents providing evidence of legal succession within the proceedings (cf. among others, T 6/05, T 19/97). A mere declaration by the transferee that he has acquired the party status is not sufficient (cf. T 670/95). A transfer can only be acknowledged from the date when adequate evidence to prove the transfer was filed, i.e. ex nunc (cf., among others, T 956/03, T 1137/97, T 1421/05). There is no retroactive effect of the submission of evidence. Until evidence of the transfer has been provided, the original party to the proceedings continues to have the relevant rights and obligations (cf. e.g. T 870/92, T 19/97, T 478/99, T 413/02, T 6/05). This is especially justified in cases where the opponent status is transferred together with the assignment of business assets, because the original party continues to exist and may continue the opposition proceedings (cf. T 6/05 [1.6.4]). In particular, if the transfer takes place before the period for filing the notice of appeal expires, then the entitlement of the transferee to replace the opponent has to be established by filing the necessary evidence before the period for filing the notice of appeal expires (T 956/03). The present board does not see any reason to depart from this jurisprudence. In the present case, it was even never explicitly requested during the proceedings that the transfer of the party status as opponent be acknowledged. In fact, there was no substantiated submission on this issue at any time in the proceedings. On the contrary, the appellant submitted that Siemens continued to be party to the proceedings. The declarations annexed to the letter of 26 June 2008, i.e. after expiration of the period for filing the appeal, that the opponent status had been transferred are not a request that the transfer be acknowledged in the proceedings and cannot be considered an implicit request either because this is in contrast to the procedural behaviour of the appellant and its submissions. Moreover, the appellant admitted that it could not be proved that the declarations as well as the extract from the commercial register of the Amtsgericht Regensburg were filed at the EPO before the expiry of the period for filing the notice of appeal. As it was not requested that the transfer of the party status be acknowledged and as the declarations and extract from the commercial register of the Amtsgericht Regensburg filed as evidence were submitted after expiry of the period for filing the notice of appeal although the alleged transfer had taken place earlier, it is unnecessary to examine whether the evidence would be convincing. Since the required conditions are not fulfilled, the procedural validity of the transfer of the opponent status cannot be acknowledged in the present case. It follows from the above that VDO is not entitled to file the appeal under A 107. Admissibility of the auxiliary request indicating that the appeal is filed in the name of Siemens [3.1] In principle, a conditional appeal is not admissible. However, in decision G 2/04 the Enlarged Board of Appeal (EBA) held that an appeal filed by one representative containing an auxiliary request concerning the person of the appellant is admissible under the following three conditions: i. there are no doubts whether a review of the contested decision shall take place; ii. the professional representative is entitled to act in the name of both persons; iii. there is a legal uncertainty about the party status. According to G 2/04, a legal uncertainty about party status exists when the uncertainty is caused by a legal situation which, from an objective point of view, may be considered unclear (cf. G 2/04 [3.2.4(c)]), thus corresponding to situations where the party status has to be decided by the competent body of the EPO on the basis of the file as it stands and depends only on the judgment of this body (cf. G 2/04 [3.2.4(c)]) and the party in 1503 | 3398
T 960/08 – A Certain Uncertainty
K’s Law – The ebook
question cannot be held responsible for the legal uncertainty as to which one of the entities may seriously be considered to be the correct party (cf. G 2/04 [3.2.5(b)]). An uncertainty dependent on an uncertain event outside the proceedings, or caused by the procedural conduct of the party, does not justify filing an appeal in the name of a person indicated alternatively as an auxiliary request (see G 2/04 [3.2.4(c)]). [3.2] In the present case, there are no doubts that it was intended that a review of the contested decision shall take place and that the representative who filed the appeal was entitled to represent both parties. However, the legal situation was clear from an objective point of view. In fact, although the alleged transfer of the party status took place before the expiry of the period for filing the notice of appeal, no request for transfer of the party status had been filed before expiry of the period for filing the notice of appeal or at any time later. Therefore, according to the established jurisprudence of the boards of appeal (see above point [2.2]), the transfer has no procedural validity before the EPO, irrespective of whether or not there was an agreement between the parties on this point. The alleged legal uncertainty about the party status resides in the fact that the appellant and the representative were uncertain about the content of the contract concerning the transfer and about the conditions under which a transfer is procedurally valid. This is a state of mind of the representative and thus an event outside the proceedings which does not justify the filing of an auxiliary request in the name of the person indicated alternatively. (a) The “Einbringungsvertrag” is a contract between the two parties in whose name the appeal was filed. The parties are legal persons. The fact that individuals working for them in different departments did not know the content of the contract, or had different opinions about its content, or evaluated its legal effects differently, or had different opinions on what pertained to the transferred business assets, is an event outside the proceedings. The argument of the appellant that it is the duty of the EPO to decide who is the right party to proceedings in this case cannot be accepted as it is an improper attempt to shift responsibilities insofar as it seems to imply that the EPO, instead of the parties, should decide on the content of the contract. (b) As far as the uncertainty as to the necessary means of proof and the time of their filing is concerned, the jurisprudence clearly establishes that, if the appeal is filed by the transferee, the transfer has to be requested and proved within the time period for filing the notice of appeal and that, in the case of a transfer of business assets, the request that the transfer be acknowledged has no retroactive effects. The necessity of requesting and proving the transfer before expiry of the period for filing the notice of appeal was therefore clearly recognisable. It is true that in decision G 2/04 [3.2.3(c)], the EBA cites as an example of legal uncertainty the situation where a request for transfer of the opposition has been submitted but the transfer has not yet been registered and it is doubtful whether or not the evidence submitted by the requester for establishing the transfer actually satisfies the EPO that a transfer has duly taken place. In the present case, however, no request to register a transfer has been filed, so that this example is irrelevant. (c) As far as decisions G 4/88 and G 2/04 are concerned, it is clear that both decisions are complementary and applicable to the present case insofar as G 4/88 establishes the principle that the opposition pending before the EPO may be transferred to a third party as part of the opponent’s business assets together with the assets in the interest of which the opposition was filed and as G 2/04, contrary to the view developed by the appellant, does not contradict this finding and does also not permit a free transfer of the status as opponent. The factual situations underlying these two decisions are very clear and very different from each other. In the situation underlying G 4/88 it was for legal reasons not from the outset possible to attribute the procedural status of opponent to the business assets in the interests of which the opposition was filed, whereas G 2/04 is concerned with a situation in which the holding company did not want to attribute the procedural status of opponent to the entity in whose interest the opposition was filed and which already existed at that time. In G 2/04 it was decided that there is no reason to extend the application of the rationale of G 4/88 to the case where a subsidiary company was sold in whose interest the opposition had been filed by the parent company.
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T 960/08 – A Certain Uncertainty
K’s Law – The ebook
The legal situation that follows from these decisions is clear: only if the business assets in the interests of which the opposition was filed are sold to another company is a transfer possible. In that case, if all further conditions established by the jurisprudence are fulfilled, then the transfer also has procedural validity before the EPO. In the present case, it was submitted that a transfer of business assets had taken place and that the transferee did not exist at the time the opposition was filed. There was accordingly no reason to think that G 4/88 was not applicable. Moreover, the situation underlying G 2/04, namely two legal entities existing at the time the opposition was filed, was not given. There could also not be any uncertainty on the way the two decisions should be applied. The uncertainty was a personal uncertainty on the part of the representative, and this is an event outside the proceedings. Thus, the conditions established by decision G 2/04 for the admissibility of an auxiliary request concerning the identity of the appellant are not fulfilled. Since the appellant is not entitled to appeal and its auxiliary request is not admissible, the appeal is inadmissible under A 107 and R 101(1). [4] The appellant requested that the notice of appeal be corrected under R 139. A correction under R 139 is only possible if there is an error in a document. For the notice of appeal, R 101(2) and R 99(1)(a) are to be applied as lex specialis (cf. e.g. T 340/92, T 1/97, T 97/98). The principles for correction of a notice of appeal under these Rules were set out in T 97/98. Even though that decision was taken under the EPC 1973, the same principles apply under the EPC now in force, since the text of R 99(1)(a) and R 101(2) is identical to that of R 64(a) and R 65(2) EPC 1973. In case T 97/98 [1.3], the board held that: “What is required (for a correction) under R 64(a) and R 65(2) is that there was indeed a deficiency, i.e. that the indication was wrong, so that its correction does not reflect a later change of mind as to whom the appellant should be, but on the contrary only expresses what was intended when filing the appeal. It must be shown that it was the true intention to file the appeal in the name of the person, who is, according to the request, to be substituted.” The board added that, for the purposes of R 64(a) and R 65(2) EPC 1973, it must be possible on the expiry of the time limit for appeal to determine whether or not the appeal was filed by a person entitled to appeal in accordance with A 107 EPC. For this, it is sufficient if: “it is possible to derive from the information in the appeal with a sufficient degree of probability, where necessary with the help of other information on file, e.g. as they appear in the impugned decision, by whom the appeal should be considered to have been filed ...”. (point [1.3] of the reasons). The board also indicated that the identity of the true appellant should be derivable within the appeal period by a person not knowing all the details later presented to the board (point [1.6] of the reasons). The present board agrees with these principles and applies them to the present case. The appellant submitted the request for correction as an auxiliary request. This implies that it considered the original declaration to be the main request. This implies in turn that this declaration was not an error and that the change is just a change of mind. A correction is therefore not possible, because the notice of appeal did not contain a deficiency under R 99(1)(a). The notice of appeal in case T 457/08 was filed as evidence that the true intention was to file the appeal for Siemens, as the main request, and for VDO as an auxiliary request, because that was the order of the requests in that case. However, that notice of appeal cannot prove the true intention in the present case. Furthermore, the
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T 960/08 – A Certain Uncertainty
K’s Law – The ebook
notice of appeal in another appeal is not information on file, i.e. as it appears in the impugned decision, as required in T 97/98. The respondent submitted decision T 428/08, in which the same order of requests as in the present case was chosen and maintained. Therefore, it cannot be assumed that the appellant usually files its appeals in the reverse order and only in the present case was the order erroneously changed. The appellant itself submitted that it has tried different combinations in order to provoke a referral to the EBA. The board therefore holds that the original declaration was not an error and cannot be corrected under R 101(2). […] The appeal filed in the name of VDO or subsidiarily in the name of Siemens is rejected as inadmissible. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 600/08 – Cured
K’s Law – The ebook
T 600/08 – Cured 27 Feb 2012
Opponent 3 was the only party to file an appeal against the decision of the Opposition Division to maintain patent EP 1 022 787 in amended form. This patent was based on a divisional application from application EP 0 400 146 filed by Siemens AG. The divisional application had been filed on December 10, 1999, in the name of Osram Opto Semiconductors GmbH & Co. OHG (hereinafter OOS). On May 12, 2000, the applicant’s representative requested a correction (pursuant to R 88 EPC 1973) of the name of the applicant. He pointed out that at the time of the filing of the divisional application, the parent application (referred to as “root application” (Stammanmeldung) in the decision) had already been transferred from Siemens to OOS but the transfer had not yet become effective before the EPO. The fact that the divisional had been filed in the name of OOS was due to an error. On June 2, 2000, the RS allowed the correction. The opponent argued that the RS should not have granted the request to correct the designation of the applicant for the divisional application. Therefore, the application based on which which the patent under consideration had been granted never was a valid divisional application. As a consequence, its effective date was the date on which the divisional application was filed, and the publication of the parent application was novelty-destroying prior art for the “divisional” application. The patent proprietor pointed out that the effective date of a patent based on a divisional application could only be the date of filing of the parent application. Consequently, the parent application could not destroy the novelty of the opposed patent. According to the patent proprietor, the – incorrect – objection that the RS should not have allowed the correction could not be invoked in the appeal proceedings. In what follows, the Board deals with the novelty objection: *** Translation of the German original *** [2.1] The impugned patent is based on divisional application n° 99 124 677. The divisional application was filed on December 10, 1999. The OOS company was named as applicant. Application n° 89 109 835, which had been filed on May 31, 1989, by Siemens AG was cited as previous application (root application). When the divisional application was filed, Siemens AG was still named as applicant for the root application in the European Patent Register (EPR). The transfer of the root application from Siemens AG to OOS was only entered into the EPR on January 31, 2000, after a corresponding request had been filed on the same day. In a communication dated May 4, 2000, the RS of the EPO informed the applicant for the divisional application that at the time of filing of the divisional application the applicant for the divisional application was not the same as the applicant for the root application and that, unless the error was corrected within one month after the receipt of the communication, the applicant would be informed by means of a communication pursuant to R 69(1) EPC that the above mentioned application could not be treated as a divisional application. Then Siemens AG, in a written submission dated May 12, 2000, requested that the applicant of the divisional application be corrected – under R 88 EPC 1973 – to Siemens AG. [Siemens AG] justified this request by pointing out that, from a substantive point of view, at the time of filing of the divisional application the root application had already been transferred from Siemens AG to OOS but that this transfer had not yet become effective before the EPO. This had been overlooked when the divisional 1507 | 3398
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application was filed. Therefore, the OOS company had been erroneously named as applicant for the divisional application. In a communication dated June 2, 2000, the RS informed [Siemens AG] that the correction of the applicant had been allowed. [2.2] The appellant objected to this [course of action]. A correction pursuant to R 88 1973 should not have been made. As a consequence, there was no valid divisional application and the effective date of the impugned patent was the date of receipt of the underlying application. Consequently, the content of the root application was novelty-destroying for the application that had been filed as a divisional application. The whole matter should be treated in analogy to a case where a priority was not validly claimed. [2.3] The Board cannot endorse this reasoning. After all, it can be left unanswered whether [the RS] was right at that time in allowing the correction - although there are good arguments for concluding that it was - or not. But even if the correction should not have been made at that time there is no support in the EPC for the consequences the appellant derives from it. As the Enlarged Board of appeal has explained in decision G 1/05 [11.1], “[u]nder the EPC the filing date of the root application is the only filing date which can be attributed to a divisional application, by way of the legal fiction contained in Article 76(1), second sentence, second half sentence, EPC […]. There is no room under the EPC for a divisional application to have as filing date the date of its actual filing with the EPO.” As a consequence, as the [patent proprietor] has rightly pointed out, there are only two alternatives for a European patent application filed as a divisional application. Either it is not treated as a divisional application, in which case there are no grant proceedings at all, or it is treated as a divisional application, in which case it can only have the date of filing of the root application. Therefore, it necessarily follows from the fact that the application on which the impugend patent was based was filed as a divisional application that it is entitled to the date of filing of the root application. As a consequence, the root application cannot constitute a noveltydestroying prior art for the impugned patent. In this respect the case under consideration differs fundamentally from the examination of the validity of a priority claim. The right of priority has the effect that the date of priority counts as the date of filing of the European patent application for the purposes of A 54, paragraphs 2 and 3, and A 60, paragraph 2. If the claimed priority proves invalid, this effect does not occur and the filing date is the actual date of filing. Moreover, [the EPC] does not provide for an examination of the lawfulness of the correction of the designation of the applicant carried out by the RS in opposition proceedings. A 100 gives an exhaustive list of the grounds for opposition. Futher grounds cannot be invoked against the patent as granted during opposition proceedings. In principle the grant of the patent cures possible formal errors and deficiencies that have occurred during the grant proceedings, such as a possibly unlawful allowance of a request for a correction pursuant to R 88 EPC 1973. Such deficiencies cannot lead to the revocation of the patent as granted in opposition proceedings, because they do not constitute a legal ground for opposition (cf. Schulte, “Patentgesetz mit EPÜ”, 8th edition, §39 PatG or A 76 EPC, respectively, marginal numbers 78, 79). Incidentally, the fact that the impugned patent has been amended does not alter [the situation] because in this case also the cut-off effect (Zäsurwirkung) of the act of grant cures possible formal errors and deficiencies that have occurred during the grant proceedings. This finding is not surprising. It is also to be accepted in other cases - such as the case of a patent which was granted after a request for re-establishment had been allowed pursuant to A 122, although it should not have been allowed - that possible formal errors and deficiencies that have occurred during the examining proceedings are cured by the act of grant and are not examined any more in opposition proceedings (cf. J 22/86). [2.4] As a consequence, the content of the root application cannot be novelty-destroying for the impugned patent. The Board then found the claims on file to involve an inventive step and finally dismissed the appeal. Should you wish to download the whole decision (in German), click here. The file wrapper can be found here. 1508 | 3398
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NB: The Board also provided a headnote: A patent application filed as a divisional application can only have the filing date of the root application. The EPC does not provide for the possibility of examining the lawfulness of a correction of the designation of the applicant carried out by the Receiving Section during opposition proceedings (see point [2.4] of the Reasons).
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T 1033/07 – Should I Stay Or Should I Go?
K’s Law – The ebook
T 1033/07 – Should I Stay Or Should I Go? 25 Feb 2012
The applicant filed an appeal against the decision of the Examining Division (ED) refusing his application on the ground of lack of novelty over documents D1 and D2. The applicant requested that the decision under appeal be set aside and that the appeal fee be reimbursed. He justified the request for reimbursement as follows: The present application (called “divisional 2”) was a divisional application of European patent application No. 02 014 905 (called “divisional 1”), which was in turn a divisional application of European patent application No. 99 125 620. In the case of “divisional 1”, the ED had issued a communication dated 30 January 2006, indicating that the examination proceedings were adjourned until the Enlarged Board of Appeal (EBA) had given its decision in case G 1/05 concerning the validity of a divisional application. At the material time, there existed a possibility that “divisional 1” had to be considered as never filed and, thus, non-existing. In this case, “divisional 2”, i.e. the present application, could also be considered as never filed and non-existing. The existence of the present application depended also on the decision in case G 1/06. Therefore, the validity of the present application was uncertain. By refusing the present application instead of adjourning the examining proceedings until the EBA had taken its decision, the ED had made a substantial procedural violation. Any discussion of the present application in appeal proceedings, so the appellant argued, was premature, since it could not be established with certainty at this stage, whether or not the present application was validly filed. Following the appeal, the ED rectified its decision to refuse the application pursuant to A 109(1). The ED did not allow, however, the appellant’s request for reimbursement of the appeal fee, this request being forwarded to the board of appeal for a decision. The Board did not allow the request: [3] According to R 103(1)(a), the appeal fee is reimbursed in the event of interlocutory revision, if such reimbursement is equitable by reason of a substantial procedural violation. [3.1] It has to be investigated, therefore, whether a substantial procedural violation occurred in the present case during the examination proceedings. [3.2] The ED refused the present application under A 97(2) on grounds of lack of novelty of the process according to claims 1 to 3 in respect of the disclosure of D1. The ED held that, although the wording of claim 1 of the present application was different from the wording used in D1, there existed no technical difference between the process set out in claim 1 of the present application and the process disclosed in D1. In the decision under appeal, the significance of the disclosure of D1 was discussed in detail […]. [3.3] The board is satisfied that the reasons which led to the refusal of the application were both understandable and adequate, so that the decision was sufficiently reasoned in accordance with R 111(2). In this respect, there is no evidence that the decision under appeal is tainted with any flaws. [3.4] In the appellant’s view, the ED committed a substantial procedural violation by refusing the application, instead of adjourning the examining proceedings until such time when the EBA had given in consolidated proceedings G 1/05, G 1/06 and G 3/06 its “decision concerning the validity of the present divisional application as for the parent application” […]. [3.5] The board notes that the alleged procedural violation is completely unrelated to the ground of lack of novelty of the process of claims 1 to 3, which was decisive for the refusal of the application. Consequently the outcome of case G 1/05 was not “of the highest importance” for the present application, as the appellant erroneously believed […]. For this reason, the board cannot subscribe to the notion, that the ED committed objectively a substantial procedural violation by not adjourning the examination of the application until such time, when the EBA gave its decision in consolidated cases G 1/05 and G 1/06 and G 3/07 (sic).
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T 1033/07 – Should I Stay Or Should I Go?
K’s Law – The ebook
[4] Regarding the conditions for staying proceedings before the EPO first-instance departments (here: ED) in connection with consolidated cases G 1/05, G 1/06 and G 3/06, the board refers to the Notice from the EPO dated 1 September 2006 (see OJ 2006, p. 538 - 539). [4.1] According to said notice, examination proceedings were stayed until issuance of the decision of the EBA only where the two following conditions are met: (i) the stay of proceedings has explicitly been requested by the party to the proceedings, i.e. the applicant; and (ii) the outcome of examination proceedings depends in the opinion of the ED entirely on the decision of the EBA. Furthermore, the notice contained the following statement: “All cases affected by decision T 39/03 will henceforth be stayed only where the two abovementioned conditions are fulfilled.” (see Notice from the EPO, OJ 2006, p. 539, paragraphs 3 to 6; emphasis added by the board). [4.2] The board notes that in the present case, the applicant (now appellant) did not make an explicit request for staying the examination proceedings. The ED on its part did not consider, that the outcome of the examination proceedings depended entirely on the decision in consolidated cases G 1/05, G 1/06 and G 3/06. Therefore, neither the first nor the second condition for staying the examination proceedings set out in the Notice from the EPO dated 1 September 2006 was met. [4.3] Under these circumstances, there existed no legal basis for the adjournment of the examination proceedings in the case of the present application. Since the course of action adopted by the ED was in full conformity with the Notice from the EPO dated 1 September 2006, there can be no question of a procedural violation. [5] In the absence of a substantial procedural violation, no reimbursement of the appeal fee is possible under R 103(1)(a). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 9/10 – Hidden Danger
K’s Law – The ebook
T 9/10 – Hidden Danger 24 Feb 2012
Something attorneys amending claims – especially in the chemical field – have to be aware of is the risk of adding features that apparently limit the claim but which de facto enlarge the scope of the claim. We have already seen such cases (e.g. here and here), here is yet another one. The opponents filed an appeal against the decision of the Opposition Division to maintain the patent in amended form. Claim 1 as granted read: A skin cleansing composition comprising (A) 3 to 80 wt.% of an oil component, (B) 1 to 45 wt.% of a hydrophilic nonionic surfactant, (C) 1 to 45 wt.% of a lipophilic amphiphile, (D) 3 to 80 wt.% of a water-soluble solvent and (E) 3 to 80 wt.% of water, and having an isotropic liquid phase exhibiting a bicontinuous structure. Claim 1 of the main request before the Board read: A skin cleansing composition comprising (A) 3 to 80 wt.% of an oil component, (B) 1 to 45 wt.% of a hydrophilic nonionic surfactant, having an HLB value of more than 8 and having a hydrophobic group with 8 or more carbon atoms, (C) 1 to 45 wt.% of a lipophilic amphiphile, selected from nonionic surfactants having an HLB value of 8 or less, fatty alcohols having 8 to 25 carbon atoms, fatty acids having 8 to 25 carbon atoms and monoalkylphosphoric acids having 8 to 25 carbon atoms, (D) 3 to 80 wt.% of a water soluble solvent and (E) 3 to 80 wt.% of water, and having an isotropic liquid phase exhibiting a bicontinuous structure. The Board found this request to violate A 123(3): [1.1.1] Claim 1 as granted defines a skin cleansing composition comprising inter alia “1 to 45 wt.% of a hydrophilic nonionic surfactant”, referred to as component (B). [1.1.2] The use of the term “comprising” in connection with a numerical range defining the amount of a component implicitly means, that the protection conferred by the claim does not extend to compositions containing that component in amounts outside the defined range (see the head note of T 2017/07). [1.1.3] In the present case this means that the protection conferred by claim 1 as granted, as far as component (B) is concerned, is restricted to skin cleansing compositions containing not less than 1 wt.% and not more than 45 wt.% of any kind of hydrophilic nonionic surfactant. [1.1.4] The same considerations apply for components (A) and (C) to (E) in claim 1 as granted. [1.1.5] In Claim 1 of the main request, the following definition is given for component (B): “1 to 45 wt.% of a hydrophilic nonionic surfactant, having an HLB value of more than 8 and having a hydrophobic group with 8 or more carbon atoms”. [1.1.6] Given the amended definition of component (B) in the main request, this feature is to be regarded as restricting component (B) to the specific group of hydrophilic nonionic surfactants with the defined HLB value and number of carbon atoms in the hydrophobic group. [1.1.7] As however the wording of claim 1 according to the main request is restricted as far as the specifically defined component (B) is concerned, due to the non-exclusive term “comprising” any other hydrophilic nonionic
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surfactant with HLB values and/or a number of carbon atoms in the hydrophobic group outside the definition given may be present in the skin cleansing composition. [1.1.8] Consequently, since claim 1 as granted excludes any hydrophilic nonionic surfactant in an amount less than 1 and more than 45 wt.%, whereas claim 1 according to the main request allows the presence in undefined amounts of any hydrophilic nonionic surfactants not having the specific HLB values and/or the number of carbon atoms in the hydrophobic group, the protection conferred by claim 1 according to the main request is extended in comparison with the protection conferred by claim 1 as granted, contrary to the requirement of A 123(3). [1.1.9] Similar considerations apply to feature (C) of the claimed composition. To download the whole decision, click here. The file wrapper can be found here.
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T 1984/07 – The Phone That Never Rang
K’s Law – The ebook
T 1984/07 – The Phone That Never Rang 23 Feb 2012
This appeal was against the decision of the Examining Division to refuse the application under consideration. The Board summoned to oral proceedings (OPs) and in a communication set out its preliminary opinion concerning clarity, added subject-matter and inventive step. In response to this communication, the appellant filed two further amended sets of claims forming the basis of a main and auxiliary request respectively to replace all previous requests. The OPs were held in the absence of the appellant. In what follows, the Board deals with the appellant’s absence and his right to be heard. Absence of the appellant at the OPs [4.1] As announced in advance, the duly summoned appellant did not attend the OPs. In accordance with R 115(2), the proceedings continued without him. As foreseen by Article 15(3) RPBA, the absent appellant was treated as relying only on his written case and the issuance of the decision was not delayed due to his absence at the OPs. [4.2] In advance of the OPs the appellant requested that he be contacted by telephone should neither of the requests on file be considered to be substantially allowable “such that an allowable set of claims may be prepared before the date of the OPs”. [4.3] Whilst A 116(1) foresees a fundamental right to OPs if requested by a party to the proceedings, a similar right to an informal telephone consultation does not exist (see T 552/06 [2.2]). In the present case, the Board summoned to OPs at the appellant’s request and was prepared to discuss the case with the appellant during those OPs. A communication was issued in preparation of the OPs in which various objections of the Board were presented. The whole purpose of convening an OPs is to allow an exchange of opinions between the appellant and the entire Board and to ensure that the appellant has had ample opportunity to present its case before a decision is taken at the conclusion of those proceedings. If a party chooses not to attend the OPs, it gives up the opportunity to present its case is this manner. The Board notes that no request to re-schedule the OPs was made. Under R 100(2) the Board shall invite the parties “as often as necessary” to file observations. In view of the fact that OPs had been appointed, a further opportunity to present observations or requests need not be given outside this framework, the OPs providing the necessary platform for this exchange of opinions. [4.4] The Board does not rule out that there may be circumstances in which a telephone call may be appropriate: for example, if only minor objections remain which can be easily attended to by straightforward amendments. However, in the present case, the objections are of such nature that any further amendments are likely to entail more than just a simple modification to the wording of the claims or a straightforward adaptation of the description. In view of the late stage of the proceedings and the declared intention of the appellant not to attend the OPs, it is questionable whether any further requests involving possibly extensive amendments to the claims would have been admitted into the proceedings anyway. Right to be heard [5.1] The claims forming the basis of both requests were filed in response to the Board’s communication. A further communication was not issued before the OPs. Since the appellant did not attend these OPs, the Board had to consider whether taking a decision on these claims would infringe the requirements of A 113(1). [5.2] Article 15(3) RPBA reads: 1514 | 3398
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K’s Law – The ebook
“The Board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party duly summoned who may then be treated as relying only on its written case”. This text is the same as the text of Article 11(3) RPBA of 1 May 2003, the explanatory notes to which state the following (CA/133/02 dated 12 November 2002): “This provision does not contradict the principle of the right to be heard pursuant to A 113(1) since that Article only affords the opportunity to be heard and, by absenting itself from the OPs, a party gives up that opportunity”. [5.3] The Board follows the line taken in decision T 1704/06 [7.6], in which it was held that: “[...] in the situation where an appellant submits new claims after OPs have been arranged but does not attend these proceedings, a board [...] can also refuse the new claims for substantive reasons [...] even if the claims have not been discussed before and were filed in good time before the OPs. This will in particular be the case if an examination of these substantive requirements is to be expected in the light of the prevailing legal and factual situation.” In the present case, the appellant had to expect that a discussion of both formal and substantive issues relating to the newly filed sets of claims would take place during the OPs. Specifically, the appellant had to expect that the Board would at least consider the question of whether the new requests could be admitted into the proceedings and, if so, whether the amendments satisfy the requirements of A 123(2). [5.4] It follows that in the present case, the Board was indeed in a position in the OPs to decide on the requests on file without violating the appellant’s right to be heard. By filing amended claims before the OPs and then not attending those OPs, the appellant must expect a decision based on objections which may be raised against those claims in his absence (Article 15(3), (6) RPBA). […] The appeal is dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 98/09 – Singled Out
K’s Law – The ebook
T 98/09 – Singled Out 22 Feb 2012
Claim 1 of the opposed patent read : Compositions for controlling pests of plants, which compositions comprise compounds of the general formula (I)
in which X represents =CH– or =N–, E represents NO2 or CN, R represents heteroatylmethyl having up to 6 ring atoms and N, O, S as heteroatoms, which are optionally substituted by alkyl having 1 to 4 carbon atoms, alkoxy having 1 to 4 carbon atoms, alkylthio having 1 to 4 carbon atoms, haloalkyl having 1 to 4 carbon atoms and 1 to 5 halogen atoms, where the halogen atoms are identical or different, hydroxyl; halogen; cyano; nitro; amino; monoalkyl- and dialkylamino having 1 to 4 carbon atoms per alkyl group, A represents hydrogen or C1-4-alkyl, Z represents C1-4-alkyl or -NH(C1-4-alkyl) or A and Z together with the atoms to which they are attached form a saturated or unsaturated 5to 7-membered heterocyclic ring which may contain a further one or two identical or different heteroatoms and/or hetero groups, possible heteroatoms being oxygen or nitrogen and possible hetero groups being N-alkyl, where the alkyl of the N-alkyl group contains 1 to 4 carbon atoms, in a mixture with the azole derivative of the formula
in a synergistically effective ratio. The Opposition Division revoked the patent. Before the Board, the patent proprietor filed a new main request, claim 1 of which read: Use of compositions comprising a compound selected from group I
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K’s Law – The ebook
in a mixture with an azole derivative of the formula
for controlling pests of plants, wherein the relative weights of the active compounds in the mixture are such that there is a synergism with respect to the pests of plants. Claim 1 of the first auxiliary request was further limited to “controlling wheat pests and fungal attacks on vegetables, wine and fruit”. In claim 1 of the second auxiliary request the list of compounds of group I in claim 1 of the main request was limited to imidacloprid:
The Board found these claims to violate A 123(2):
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K’s Law – The ebook
*** Translation of the German original *** Main request [2.1] Originally filed claim 1 is directed at compositions comprising compounds of general formula (I) in mixture with fungicidal active compounds. In claim 1 of the main request, the component of formula (I) has been limited so as to be chosen from a list of six specific compounds. The second compound has been limited to a single compound, cyproconazol (II-4) […]. In the claims as originally filed there was no reference to specific compounds. Therefore, it has to be checked whether the combination of components according to claim 1 of the main request can be derived directly and unambiguously from the application as originally filed. According to the first paragraph of the description, the invention concerns compositions for controlling pests of plants comprising a combination of certain agonists or antagonists of the nicotinergic acetylcholine receptors of insects with fungicides, as well as their use for controlling pests of plants. From page 2, line 16, to page 5, line 3, the insecticidal active compound is defined by general formulas (I), (Ia) and (Ib). This is followed by a list of single compounds (page 5, lines 5 to 10), i.e. the six insecticides that have now been incorporated into claim 1 […]. The compositions to be used as fungicides are mentioned in a lists of 47 individual compounds or groups of compounds (pages 6 to 23). Cyproconazol appears among them, on page 6, line 12. This is the only place in the original application where cyproconazol is mentioned. Therefore, in the present case, in order to arrive at the subject-matter of claim 1, all alternatives with the exception of one have been deleted from the list of possible fungicides. So cyproconazol has been picked from a voluminous list of alternatives without there being any indication in the original application that this compound is preferred in any way. Simultaneously, the compounds of group (I) have been limited to a list of six specific insecticides. As the definition of the fungicide component is not a list any more, [the subject-matter] has been fixed to six individual combinations of active compounds (i.e. cyproconazol in mixture with the respective listed insecticides), which had not been disclosed in this individualised manner. As a consequence, the originally filed description cannot provide any support of claim 1 of the main request. Contrary to the opinion of the [patent proprietor], even a deletion from a list can correspond to an inadmissible extension, [in particular] if the picking of a single active compound leads to a selection of combinations which are logically (denkgesetzlich) comprised by the original application but which have not been specifically disclosed. According to the established case law of the Boards of appeal such a selection is an inadmisisble extension and, therefore, to be considered to be a violation of A 123(2) (see, e.g. T 727/00 [1.1.4], T 686/99 [4.3]). Auxiliary request 1 [2.2] The reasons under [2.1] also apply to claim 1 of auxiliary request 1 because this claim contains all the features of the main request that are relevant for the above argumentation […]. Auxiliary request 2 [2.3.1] In claim 1 of auxiliary request 2 the insecticide was further limited to the compound imidacloprid […]. Thus the composition to be used is determined to be a mixture of imidacloprid and cyproconazol. In addition to the passages of the originally filed description already discussed, the [patent proprietor] has referred to the examples as providing support of this combination of active compounds. On page 30, lines 20 to 22 of the description, the following is disclosed: “In the examples that follow, imidacloprid is employed as active compound of the formula (I). The fungicidal active compounds also used are stated in the examples.” In examples A to F that follow mixtures of imidacloprid with different fungicidal active compounds are used. However, none of these mixtures contains cyproconazol. Therefore, the specific combination of imidacloprid and cyproconazol is not directly and unambiguously disclosed in the examples. 1518 | 3398
T 98/09 – Singled Out
K’s Law – The ebook
The Board agrees with the [patent proprietor] that in the exemplary embodiments imidacloprid is the only insecticidal active compound. However, this compound was only disclosed in the context of specific fungicidal active compounds. Therefore, only the explicitly mentioned combinations are directly and unambiguously disclosed in the examples. There is no hint in the original application according to which the component imidacloprid is to be picked from the specific context of the examples and to be considered to be preferred in a more general context. Thus the argument of the [patent proprietor] according to which the combination of imidacloprid with all fungicides mentioned in the application has been disclosed in the original application cannot be endorsed. As already mentioned under point [2.1], the general part of the original description discloses imidacloprid within a list of six equivalent (gleichwertig) members, and cyproconazol as a member of a quite voluminous list. In the present case, therefore, there have been deletions of all but one components in two lists. This leads to a selection of a concrete combination consisting of imidacloprid and cyproconazol, which had not been disclosed originally in this individualised manner. [2.3.2] The decisions cited by the [patent proprietor] are to be commented as follows: In decision T 1253/07 [2.3], the limitations of claim 1 of the main request were considered to be admissible because , in view of the examples the skilled person would have directly and unambiguously correlated the subgroup of safeners of formula (III) to the herbicide 3-2. By contrast, the present examples do not provide any support for the combination of imidacloprid and cyproconazol, as already explained under point [2.3.1] above. In the case underlying decision T 783/09, one paragraph of the application as filed disclosed two DPP-IVinhibitors “LAF 237” and “DPP728” to be particularly preferred in combination of 22 anti-diabetic compounds. Under the particular circumstances of the case the competent Board has come to the conclusion that this resulted in a direct and unambiguous individualised disclosure of each combination of each single anti-diabetic compounds mentioned and “LAF237” and “DPP728”, respectively (see point [5] of the reasons). This situation is not comparable with the present situation, be it only because in the relevant paragraph of page 5 of the present application as filed, imidacloprid is disclosed in a list of six equivalent members. Therefore, the Board comes to the conclusion that the case law cited by the [patent proprietor] is not relevant for the present case. […] The appeal is dismissed. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 109/08 – (Dis)Sancta Simplicitas
K’s Law – The ebook
T 109/08 – (Dis)Sancta Simplicitas 21 Feb 2012
The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke his patent for lack of novelty. The OD did not admit the late-filed ground for opposition pursuant to A 100(b) into the proceedings since it could not see “any prima facie relevance in the late filed submissions concerning the ground of opposition under A 100(b)”. The Board did not approve: Scope of the examination of the appeal [3.1] The [opponent] took issue with the OD’s conclusion not to admit the late-filed ground of opposition (A 100(b) – lack of sufficiency of disclosure) into the proceedings. It requested that the relevance of this ground be considered by the board and admitted into the appeal proceedings. [3.2] Under A 107, first sentence, a party can only appeal if it is adversely affected by the decision of the first instance. A party is adversely affected if a decision does not accede to its requests (established jurisprudence; see T 961/00 [1]). In the present case the patent was revoked in accordance with the [opponent’s] request. Therefore, the [opponent] was not in a position to file an appeal with the sole object of securing the admission of a fresh ground of opposition into the proceedings even though its request to admit the new ground of opposition pursuant to A 100(c) had been rejected by the OD. According to A 107, second sentence, the [opponent] is however party to the appeal proceedings as of right. In accordance with the principle of equal and fair treatment of all parties, the [opponent] must be able to challenge, in reply to the admissible appeal by the proprietor, the way the OD exercised its discretion when not admitting the late-filed ground of opposition, so as not to be put at an unfair disadvantage given the [patent proprietor’s] legitimate attempt to reverse the decision revoking the patent. The board has therefore the power and duty to decide whether the OD’s conduct of the proceedings amounted to a violation of A 114(2) or A 113(1). Fresh ground of opposition - review of exercise of discretionary power [4.1] If the way in which a department of first instance has exercised its discretion on a procedural matter is challenged in an appeal, it is not the function of a board of appeal to review all the facts and circumstances of the case as if it were in the place of the department of first instance, and to decide whether or not it would have exercised such discretion in the same way. A board of appeal should only overrule the way in which a department of first instance has exercised its discretion if the board concludes that it has applied the wrong principles, or not taken account of the right principles, or has acted in an unreasonable way (G 7/93 [2.6]). The board therefore is in the first place charged with reviewing the OD’s exercise of its discretion under A 114(2). A failure to exercise sound, reasonable and legal discretion does not however need to amount to bad faith, intentional wrong doing, or unsound conduct of the proceedings to justify an appeal board reviewing the exercise of discretionary power by a department of first instance. [4.2] The OD did not admit lack of sufficiency of disclosure as a late-filed ground for opposition since it considered that it was not prima facie relevant, i.e. would not prejudice the maintenance of the patent, for the reasons given in point I of “Reasons for the decision”. [4.3] An inspection of the file shows that the opponent raised an objection of lack of sufficiency of disclosure with its letter dated 16 August 2007 as a reaction to the preliminary view expressed by the OD in its communication sent as an annex to the summons to oral proceedings (OPs) under the heading “Novelty”. In particular, the OD stated the following in said communication: “In principle, the opponent did not demonstrate that the amounts presented in the various documents in wt.% correspond to the amounts presented in the contested patent in vol.%. In order to calculate the amounts in vol.% it seems to be necessary to determine the density of the composite, the polymer matrix and the filler materials”. (emphasis added) By saying this the OD overlooked the fact that the patent in suit does not contain any definition in relation to the density of the composite (bulk density, apparent density). Moreover, claim 1 as granted does not contain any 1520 | 3398
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definition in relation to the chemical nature or physical form of the resin base and does not specify either the chemical nature and constitution of the filler materials. The claim merely contains some definitions in relation to particle sizes (in a non-limitative way by means of the definition of ranges preceded by the term “comprises”) which had also been contested, and the “product-by-process”-like term “ground”, i.e. obtainable by grinding. In fact, the resin base may include, according to the description, commercially available monomers of very different chemical natures. These might, or might not be, polymerized or cured in the dental composite, with the corresponding volume shrinkage (and differences in the density after shrinkage). The filler materials for their part are to be chosen from a broad palette of materials with a broad variety of tamped volumes resulting in different densities of the composite, contrary to the simplistic understanding stated in the OD’s decision […] that “in dentistry similar materials having a similar density are used”. [4.4] In its response dated 16 August 2007 to the OD’s communication, the opponent justified its failure to file earlier the grounds pursuant to A 100(b) as follows: during examination proceedings the relative contents of the filler in the dental composite introduced in the amended and eventually granted claim 1, expressed as % by volume, had been treated by the applicant and the examining division as if they were amounts. Therefore, on the basis of this understanding of the claimed subject-matter it had initially based its opposition on a lack of novelty since the dental composite claimed contained comparable amounts of filler in terms of bulk as those in the priorart documents which were expressed as % by weight. [4.5] The board has investigated the correctness of the opponent’s allegation mentioned in point 4.4 above. As a matter of fact, the definition of the composite in claim 1 as granted as a dental composite comprising a resin base and about 11% by volume to about 80% by volume filler relates to a definition which was introduced during examination proceedings and which derived from the arithmetical addition of two independent ranges for load volumes of the particular filler materials defined in originally filed claims 1 and 7 (between about 10% by volume and about 70% of a ground structural filler, and between about 1% and about 10% by volume of microfiller). This amendment was introduced by the applicant and accepted by the examining division, as if it involved the mere addition of amounts. However, it appertains to the common technical knowledge that when adding load volumes of two filler materials of different particle sizes the filler component with smaller particle size fills the interstices between the bigger particles of the other filler component (as is acknowledged in lines 19-20 on page 14 of the application as filed). Thus, the total volume of filler in the composite taken as the result of the arithmetical addition of the load volumes of the different filler materials contradicts the common technical understanding and the original disclosure. [4.6] The opponent further stressed in its letter dated 16 August 2007 that there were essential differences between a bulk volume and a tamped volume and that the patent in suit did not contain any reference to a method of measuring the volume of the filler contained in the dental composite expressed in claim 1. Moreover, the opponent stated in said letter that the specific examples A, B and C in the patent in suit expressed the amounts of filler components in % by weight in the composite, and that the only place where % by volume could be found was in the tables as “load volume %”. [4.7] It is manifest that Table 3 expresses for the composites of examples A, B and C the “load weight %” for the filler as the total amount (which results from arithmetical addition of the amounts expressed as % by weight of the three different filler materials employed), and further states a “load volume %” for the filler in toto (emphasis added) but does not give any value for any content of the separate filler materials as % by volume of the composite. [4.8] In view of the analysis made in points [4.2] to [4.7] above it is apparent that the OD exercised its discretion in an unreasonable way, since the OD’s reasoning for considering the ground of opposition pursuant to A 100(b) to be prima facie not relevant disregards all the essential technical aspects mentioned above, which are manifestly relevant for an objective evaluation of the novelty of the subject-matter claimed. The OD’s approach reduced the relevance of A 100(b) to a mere reproduction of the specific examples. Such an approach is not correct in the present case since there is a gap, created by an apparent lack of explicit technical information in the patent in suit, between the particular reproduction of the individual examples and the extrapolation of this specific teaching when trying to reproduce the generic dental composite defined in claim 1 as granted. It is not immediately evident how this gap can be filled from the content of the description and the general knowledge of the skilled person. [4.9] Therefore, the arguments put forward by the opponent with its letter of 16 August 2007 justified the late filing of the grounds pursuant to A 100(b) and raised reasonable doubts as to the sufficiency of disclosure of the
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subject-matter claimed in the granted claims. Therefore, the late-filed ground for opposition should have been admitted into the proceedings. [4.10] Furthermore, as the OD did not admit the ground of lack of sufficiency of disclosure into the proceedings, it endorsed the conversion (brought by the opponent as a subsidiary argument) of % by wt. values into % by vol. values based on an artificial conversion factor calculated from the relationship between the load weight% and the load volume% for the filler appearing in Table 3 of the patent in suit, and concluded by analogy that there was a lack of novelty vis-à-vis document D5 (EP-A-0 677 286). [4.11] The [patent proprietor] (patentee) has contested the technical correctness of these calculations in its grounds of appeal. The [opponent] replied that this argumentation made it clear that the ground of opposition pursuant to A 100(b) should be admitted into the proceedings. Moreover, the opponent submitted further documents and technical information about the density of particular materials used as constituents for the fillers of the prior art. [4.12] From the analysis made in points 4.3 to 4.9 above it is apparent that the OD did not take into proper consideration all the facts and arguments bearing on the issue of the late-filed ground of opposition. Rather, it based its assessment of the admissibility of the late-filed ground of opposition and consequently also its finding of lack of relevance on manifestly wrong technical assumptions and on an erroneous approach to applying A 100(b). This amounts to an unsound exercise of discretion (A 114(2)) which in the board’s opinion justifies the reversal of the decision in suit. [5] Having regard to the fact that the full and correct assessment of sufficiency of disclosure of the claimed subject-matter has not yet taken place because the OD declined to admit this ground of opposition, the dispute in relation to novelty of the claimed “invention” has been artificially overburdened in the present appeal by a manifest lack of explicit information in the patent in suit concerning some of the technical features in the claims as granted. A 111(1) [6.1] As regards the [opponent’s] request that the case should not be remitted to the department of first instance since the board may exercise any power within the competence of the department which was responsible for the decision appealed, the following has been considered (A 111(1)). As expressed in the board’s communication sent as an annex to the summons to OPs, the issue of substantive examination of the grounds for opposition pursuant to A 100(b) – yet to be undertaken – is not a minor one in the present case. The board is convinced that a hypothetic assessment of the other opposition grounds is devoid of meaning before sorting out that matter. [6.2] Moreover, the board considers that the present situation, in which the appealed decision is based on manifestly wrong technical assumptions which lead to the revocation of the patent for lack of novelty, justifies that the substantive examination of the grounds for opposition under A 100(b) being dealt with at two instances. [6.3] Consequently, the board sets aside the decision under appeal and remits the case to the OD for further prosecution and in particular for a substantive examination of the grounds pursuant to A 100(b) (A 111(2)). To download the whole decision, click here. The file wrapper can be found here. NB: A French summary can be found on Le blog du droit européen des brevets.
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T 443/09 – Your Mess, Your Problem
K’s Law – The ebook
T 443/09 – Your Mess, Your Problem 20 Feb 2012
The opponent filed an appeal against the decision of the Opposition Division which maintained the opposed patent in amended form. Independent claim 1 of the request before the Board read as follows: A process for producing dimethyl ether comprising dehydrating methanol in vapor phase at a reaction temperature of 250ºC to 350ºC and a gas hourly space velocity (GHSV) of 900 1/h to 4000 1/h and a pressure of at least 0.0 MPa-G and at most 3.0 MPa-G in the presence of an activated alumina catalyst having an average pore radius of at least 2.5 nm and less than 5 nm and having a sodium oxide content of at most 0.07 % by weight, and collection of dimethyl ether produced. The opponent argued that the subject-matter of claim 1 lacked novelty over the prior use of the catalyst T-126 as reported in annex A10 (copy of a letter dated 3 April 1990 sent by Prof. Levec to Dr. Stadler). Prof. Levec was not a consultant for the opponent and there was no confidentiality agreement. The process for producing dimethyl ether by dehydrating methanol in the vapour phase as reported in the letter was carried out at Ljubljana University prior to 3 April 1990 and was accessible to any students present at the university at that time. Despite extensive research, it was not possible to find Prof. Levec, nor to establish whether his laboratory in the university still existed. The affidavit of Mr. Selig (document D11) furthermore attested that the product designation T-126 was synonym to the designations Girdler T-126, DME-1; T-4021, CTR, CTR-Träger and DME/T-4021. The late-filing of these documents was due to the difficulty of retrieving old documentation in a big company such the opponent’s after twenty years and several moves. The Board did not take into account this alleged prior use, for the following reasons: [2] Document D11 and its annexes A1 to A10 are new evidence cited for the first time in the [opponent’s] Statement of the Grounds of Appeal. The [patent proprietor] objected to these documents being admitted into the proceedings for the reason that they were late-filed non-relevant documents. [2.1] According to the established jurisprudence of the Boards of Appeal, the relevance of the late-filed evidence is a crucial criterion for deciding on its admissibility in the proceedings. However, other criteria are important, such as how late, whether the late submission of evidence constitutes an abuse of proceedings, or if their admission excessively delays the proceedings (see T 681/00 [2]; T 555/04 [1]). Thus, the Boards of Appeal, making use of their discretion under A 114(2) in order to ensure fair and prompt proceedings, are entitled to refuse to take them into account. [2.2] In the appeal proceedings the [opponent] relied on a new alleged public prior use based on trials of dehydration of methanol by Prof. Dr. Levec, which allegedly had been made available to the public in the years 1989 and 1990 in the Department of Chemistry and Chemical Technology at the University Edvard Kardelj, Ljubljana, Slovenia. The sole evidence filed by the [opponent] supporting this alleged public prior use is a letter dated 3 April 1990 sent by Prof. Dr. Levec to the [opponent’s] employee Dr. Stadler including the results of methanol conversion trials with a catalyst denoted as T-126 (annex A10). [2.3] In connection with why the documents in support of the prior use were late-filed, the [opponent] argued that this was due to the difficulty in retrieving documentation in a large company such as Süd Chemie [i.e. the opponent] after such a long period of time. Furthermore, it was not to be expected that documents connected with projects which had been concluded 20 years ago to be archived for such a long time. However, the [opponent’s] difficulties in finding documents within its own company is a self-created situation lying entirely within its own sphere of responsibility, which is not a reason to justify the admission of the latefiled documents purportedly showing a prior use (cf. T 508/00 [5.2]).
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Furthermore, the Board holds that of course the [opponent] is under no obligation to archive old projects. However, if it wishes to prove a prior use based on such a project, then it is the [opponent’s] duty to furnish the relevant documents in due time. [2.4] With regard to the relevance of the late-filed documents, it needs to be established whether they are prima facie adequate to substantiate the alleged public prior use. In order to prove a public prior use, the date on which the prior use occurred has to be established, the circumstances surrounding the prior use and what was made available to the public. [2.4.1] Regarding the question of when the prior use was made available to the public, the [opponent] merely indicated that it was prior to the letter (Annexe 10) dated 3 April 1990, but was unable to indicate a precise date. [2.4.2] The circumstances surrounding the prior use are also not established in this letter. The [opponent] merely alleged that that there was no obligation of confidentiality, in particular that Prof. Dr. Levec was not a consultant of Süd Chemie, but was unable to indicate the reasons why this report was sent to Süd Chemie. [2.4.3] Regarding the question of how the prior use was made available to the public, the [opponent] argued that students present at the University Edvard Kardelj at the time in question had access to the results of the methanol conversion trials. It further argued that according to decisions T 228/91, T 300/86, T 877/90, research carried out at a university is always considered as being available to the public. A prior use should be regarded as made available to the public if, at the relevant date, it was possible for members of the public to gain knowledge of the particular use and there was no bar of confidentiality restricting the use or dissemination of such knowledge (see T 300/86 [2.1]). In the present case, no evidence has been provided that the letter from the university professor to the employee of the [opponent] (annex A10) was available to the public. In the absence of such evidence, the Board holds that such a letter must prima facie be treated as a private communication. The [opponent] has also provided no evidence that students at the University Edvard Kardelj had access to the results of the methanol conversion trials in question. The mere statement by an employee of the [opponent], Mr Selig (see document D11, point 5) that the results of the methanol conversion trials were publicly available is not supported by any arguments or evidence as to how, where, when, and to whom they were accessible. With regard to the cited decisions which apparently show that the Boards of Appeal always consider research carried out at universities to be per se available to the public, none of these decisions is in fact concerned with a prior use based on experiments carried out at a university. In any case, the availability to the public of a prior use must always be evaluated according to the particular circumstances of the case. In the present case, the circumstances surrounding the experiments carried out by Prof. Dr. Levec have not been made clear. [2.4.4] Hence, the Board must come to the conclusion that the accessibility of the alleged public prior use by members of the public is not clearly established. [2.5] In view of the above, the Board considers that the alleged public prior use, as relied upon in the [opponent’s] Statement of the Grounds of Appeal, is not substantiated. Thus, it is not necessary to determine whether the alumina denoted T-126 used in the trials as reported in annex 10 meets the requirement of the alumina set forth in claim 1, which the [patent proprietor] had alleged it did not […]. [2.6] The submissions made by the [opponent] in respect of the public prior use shall therefore be disregarded under A 114(2). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1885/08 – The Broad Way
K’s Law – The ebook
T 1885/08 – The Broad Way 18 Feb 2012
The opponent filed an appeal against the decision of the Opposition Division to reject the opposition. Claim 1 before the Board (identical to Claim 1 as granted) read: A bearing (1) , especially a wedge-shaped bearing (2); 1.1 with at least two partial elements, an inner part (3) for receiving a bearing pin and an outer part (4) enclosing the inner part (3) at least partly; 1.2 the inner part (3) and the outer part (4) being detachably connected with each other; 1.3 the bearing (1) being free from a housing; 1.4 the outer part (4) comprising at least two partial regions, a first partial region (7.1) forming the stop and contact surfaces (13.1, 13.2) when joining the bearing (1) with a connecting module and a second partial region (7.2) which encloses with the first partial region (7.1) the inner part (3) in the circumferential direction at least partly relative to the axis of the bearing pin; 1.5 the bearing and contact surfaces (8) for joining with a connecting module being arranged on the outer part (4); 1.6 wherein at least one elastic element (14.1, 14.2) is arranged between inner part (3) and outer part (4) with a stiffness in a region of including 500 N/mm up to and including 10 000 N/mm; 1.7 the connection of the inner part (3) with the outer part (4) occurring via a conically tapering bent element, especially a sheet metal (17) which is arranged between inner part (3) and outer part (4).
The opponent argued that this claim was lacking inventive step, and the Board came to the conclusion that this objection was well founded. In order to come to this conclusion, the Board had to interpret one of the claim features. *** Translation of the German original *** Inventive step [2.1] The Board is of the opinion that document D6 is the closest prior art. In its figures 9A to 9D,
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this document shows a bearing 1.1 with at least two partial elements, an inner part (inner member 926) for receiving a bearing pin (cf. paragraph [0035]: hole 927) and an outer part (outer member 924) enclosing the inner part at least partly; 1.2 the inner part and the outer part are detachably connected with each other (cf. assembly instructions in paragraph [0030]); 1.3 the bearing is free from a housing; 1.4 the outer part 924 comprises at least two partial regions, a first partial region (flange) forming the stop and contact surfaces 925a when joining the bearing with a connecting module and a second partial region which encloses with the first partial region the inner part in the circumferential direction at least partly relative to the axis (P1) of the bearing pin; 1.5 the bearing and contact surfaces 925a for joining with a connecting module are arranged on the outer part 924; 1.6 at least one elastic element 934a, 934b is arranged between inner part and outer part; 1.7 the connection of the inner part with the outer part occurring via a conically tapering bent metal sheet 936 which is arranged between inner part and outer part. [2.2] The Board does not share the opinion of the [patent proprietor] that D6 did not constitute the closest prior art because it concerned a different type of bearing. Claim 1 is directed at a general bearing and the engine mount disclosed in D6 clearly is such a bearing. The variant according to which the bearing can be a wedgeshaped bearing is only optional in the claim. Moreover, the X-configuration mount according to D6 corresponds to a double wedge-shaped bearing. [2.3] Contrary to the opinion of the [patent proprietor] it follows from figure 9A of D6 that the outer member 924 encloses the inner member 926 in the circumferential direction at least partly relative to the axis P1 of the bearing pin. The construction and the assembly of the bearing according to figure 9A corresponds to the construction and assembly of the bearing of figure 8A of D6. It can be clearly seen from this perspective view that the outer member 824 encloses the inner member 826 from three sides in the circumferential direction at least partly relative to the axis P1 of the bearing pin.
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[2.4] The opinion of the [patent proprietor] according to which feature 1.7 was not disclosed in D6 cannot be accepted. When assessing whether a feature is known from the prior art or not, its wording should be given the broadest meaning that is technically meaningful (cf. T 79/96). In figure 9A of D6 the connection of the inner member 926 with the outer member 924 is established via a conically tapering bent metal sheet 936 that is arranged between the inner member and the outer member. The Board is of the opinion that the effects mentioned for the claimed metal sheet element in the patent ([…] simplification of assembly and disassembly by avoiding a fixed integral (stoffschlüssig) connection, shaping of the metal sheet such that it is adapted to the inner contour of the outer part) are also obtained with the conically tapering bent metal sheet 936 of D6. That the connection is detachable and that [the sheet 936] is adapted to the contour follows in particular from paragraphs [0029]-[0030] of D6, where it is stated that the elastic elements comprising the bent metal sheet elements are to be assembled by clamping them between the outer and inner parts by means of a jig and a funnel. The conical shape of the metal sheet element is obtained by bending each single metal sheet element 936, the tip of the cone being arranged along axis P2 in figure 9A. [2.5] Therefore, the subject-matter of claim 1 only differs from this prior art in that the at least one elastic element has a stiffness in a region of including 500 N/mm up to and including 10 000 N/mm (feature 1.6). Even though this domain of elasticity values is very broad, it is a distinguishing feature with respect to the prior art that confers novelty within the meaning of A 54(2). [2.6] Based on the bearing disclosed in figures 9A to 9C of D6 as prior art the skilled person is faced with the objective technical problem of defining a bearing stiffness for the elastic element that is suitable for the load that is exerted in the specific case. [2.7] It is part of the common general knowledge of the skilled person to adapt the spring characteristic (Federkennlinie) of the elastic elements of such bearings by choosing the appropriate materials and dimensions such as to adapt the bearing to the particular requirements of the intended use. The claimed domain of stiffnesses is very broad and a stiffness value between 500 and 10000 N/mm clearly corresponds to what is usual for such bearings in railway vehicle construction (see D11 […] from about 1050 to 4905 N/mm). Thus the claimed domain of stiffnesses encompasses conventional values and its selection cannot be considered to be inventive. […] The patent is revoked. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 445/08 – The Wrong Person
K’s Law – The ebook
T 445/08 – The Wrong Person 17 Feb 2012
You might have heard that there has been another referral to the Enlarged Board of appeal (EBA). The questions concern the admissibility of appeals. Before we discover the questions, let us have a look at the facts of the case. The international application on which the European patent under consideration was based was filed in the name of Zenon Environmental Inc. After grant, the patent was assigned to Zenon Technology Partnership on May 30, 2006. The transfer of ownership was registered by the EPO with effect from February 10, 2007. The patent was revoked by the Opposition Division (OD) in its decision dated December 28, 2007. On February 8, 2008, an appeal was filed in the name of Zenon Environmental Inc.
On March 7, 2008, the EPO sent a communication concerning the commencement of proceedings before the Board of appeal. This communication had a handwritten statement on it:
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On March 13, 2008, the opponent’s representative challenged the admissibility of the appeal on the ground that it had been filed by a Zenon Environmental Inc., which was not the registered patent owner. On the same day, the patent proprietor’s representative sent a response to the communciation and requested correction of the appellant’s name:
The Board issued a first communication on April 16, 2008, inviting the appellant’s representative to explain on whose behalf he was acting, under what provision of the EPC the correction was being requested, what precisely the correction would be and what effect it would have on the proceedings. The appellant’s representative answered on June 23, 2008, stating that he was acting on behalf of Zenon Technology Partnership. He then stated:
In its interlocutory decision, sent to the parties exactly four years (!) after the filing of the appeal, the Board decided to refer several questions to the EBA: (1) When a notice of appeal, in compliance with R 99(1)(a), contains the name and the address of the appellant as provided in R 41(2)(c) and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is a request for substituting this other legal or natural person admissible as a remedy to “deficiencies” provided by R 101(2)? (2) If the answer is yes, what kind of evidence is to be considered to establish the true intention? (3) If the answer to the first question is no, may the appellant’s intention nevertheless play a role and justify the application of R 139? (4) If the answer to questions (1) and (3) is no, are there any possibilities other than restitutio in integrum (when applicable)? If you want to know why the Board found a referral to be appropriate, please read on: [1] It is undisputed that the notice of appeal as filed is not admissible pursuant to A 107 because the appellant company was not a party to the opposition proceedings and accordingly was not adversely affected by the appealed decision. It was no longer the patent proprietor. The request for correction concerning the appellant with a view to complying with A 107 was filed only in reply to the Registrar’s letter and after expiry of the relevant two-month period provided for by R 101(1). Accordingly, the only remaining question is whether the correction as requested, which would result in the appeal being admissible, is possible pursuant to R 101(2) or R 139. The request for correction [2] The notice of appeal was drafted as follows: “European Patent No 1140330 (99955620.2-062) Zenon Technology Partnership 1529 | 3398
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We hereby give Notice of Appeal (underlined by the appellant) against the decision of the Examination Division [sic] dated 28 December 2007 to refuse the above patent application [sic]. Cancellation of the decision in its entirety is requested so that the patent may be maintained. … The name, address and nationality of the Appellant is (emphasised by the Board): ZENON ENVIRONMENTAL INC 845 Harrington Court Burlington Ontario L7N 3P3 Canada ZENON ENVIRONMENTAL INC is a Canadian Corporation. In the event that the Board of Appeal wishes to make a decision detrimental to the Applicant’s [sic] rights at any time, it is hereby requested that Oral Proceedings be held to discuss this matter”. [2.1] It appears from the notice, which complies with all the requirements of R 99(1)(a) and R 41(2)(c), that the appellant is fully identified, the company in question being a real company corresponding to the former owner of the patent in suit incorporated under Canadian law, while the current owner is incorporated under the law of Delaware, USA. [2.2] But the question of admissibility arises because it is contended that the appellant’s identification in the notice of appeal stemmed from an unintentional inversion between the former and current patent owner. [3] The Board tends to concur with the respondent that in the circumstances of the case at hand there are no deficiencies with respect to the requirements of R 101(2) and R 99(1)(a). This latter rule, by incorporation of R 41(2)(c), defines the standard formal administrative items of information required to fill out the notice of appeal, which will permit the identification of the appellant. A 107 on the other hand, once the appellant has been identified, defines an admissibility requirement to be fulfilled by the appellant in order to be entitled to appeal. Therefore R 101(2), which authorises correction of deficiencies under R 99(1)(a), can only justify corrections of deficiencies that are directed to completing the appellant’s identity, if this was not fully provided in the notice of appeal, in cases where the appellant is already identifiable from the notice of appeal. [4] The Board has now to look into the case law and consider whether this conclusion […] contradicts the established case law dealing with questions of correction of a notice of appeal. The case law offers three categories of decisions to be considered: (a) decisions in which correction of the name of the appellant was allowed under R 65(2) EPC 1973 because it was held that there was a deficiency, so it was possible to infer from the file who the real appellant was. Sometimes the Boards indicated that R 65(2) EPC 1973 was preferred to R 88 EPC 1973 as it was more specific (T 715/01 [9]); (b) decisions in which R 88 EPC 1973 was used as a legal basis for the corrections (T 814/98); (c) decisions in which correction was refused because the notice of appeal contained no remediable errors but rather a mistake of law. Decisions allowing the request for correction on the basis of R 99(1)(a) and R 101 (2) (R 64 (a) and R 65(2) EPC 1973) (a) In T 340/92, correction of the name of the appellant was allowed and the appeal declared admissible because the erroneous mention of the appellant’s name was held to be due to a confusion between the name of the appellant company (societe Croizet-Pourty) and its parent company (SOGEA). In this case a request for reestablishment of rights had been filed but the Board decided that this request was superfluous. (b) The Board then considered that where the appellant’s name or the name of the person actually entitled to appeal was not mentioned in the notice of appeal, in non-compliance with R 64(a) EPC 1973, it was possible to remedy this deficiency under R 65(2) EPC 1973 within the time limit allocated by the Board.
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K’s Law – The ebook
The Board stated that the name of the parent company had been indicated by error, as was apparent from the statement of grounds of appeal and the explanations of the subsidiary company, which was the only one to be adversely affected by the decision under appeal and which was sufficiently identifiable through its representative’s name (point [1] of the decision). It was inferred from the fact that the subsidiary was the only party adversely affected and that it was sufficiently identifiable through its representative that the error was a deficiency that could be remedied under R 65(2) EPC 1973. (c) It is difficult to know to what extent the solution and reasons given by the Board in that case are relevant for, or transposable to, the current case. However, as far as this Board understands, it seems that the notice of appeal in T 340/92 did not contain an entire identity of the appellant. Only its name was erroneous, which is not the case here. T 483/90, T 613/91 and T 1/97 [5.2] (a) In T 483/90 the appeal was filed by the opponent without specifying its address; with respect to the name, even if it was not completely clear, it seems that there was no deficiency. In T 613/91 the address was missing. (b) In T 1/97, which cited the two preceding decisions, the notice of appeal was filed in the name of the opponent; there was an inconsistency between the name indicated in the notice of appeal (“Crown Cork & Seal CO”) and the name taken from the appealed decision (“Crown Cork AGM). But there was no Swiss company “Crown Cork & Seal CO” registered at the address indicated in the notice of appeal, which was the correct address of the “Crown Cork AG” company. The Board did not accept that R 64(a) EPC 1973 applied only when the appellant’s name or address was missing and stated that the general term “deficiencies” used in R 65(2) EPC 1973 was to be interpreted as also referring to an incorrect indication of an appellant’s name and/or address (point [1.4]). For the then competent Board “there [was] a close relationship between R 64 (a) and A 107 first sentence”, this latter presupposing the identification of the appellant (point [1.1] of the reasons). The Board went on: “However, this does not mean that i f R 64 (a) is not or not correctly met then A 107 first sentence will necessarily not be complied with” (idem). For the Board it was clear that what was required was that the appellant had to be sufficiently identifiable within the two-month period, if necessary with the aid of the decision under appeal, in order to establish that it was entitled to appeal under A 107, first sentence. On the other hand, deficiencies and omissions concerning the name and address of the appellant given in the notice of appeal as specified in R 64(a) EPC 1973 could be remedied later (idem). [5.2.1] This Board agrees in principle with the analysis made in case T 1/97 by the competent Board, which given the particular circumstances of that case admitted the correction. [5.2.2]In these three cases the circumstances seem to differ from those of the case at hand. There were deficiencies within the meaning of R 99(1)(c) (correct name not specified but appellant identified as the opponent and/or missing address; discrepancy in the addresses) which did not enable the boards to establish the appellant’s precise identity but justified an investigation. T 97/98 [5.3] (a) In T 97/98, which, inter alia, referred to T 340/92 and T 1/97, the appeal had been filed in the name of Fresenius AG instead of Fresenius Medical Care Deutschland GmbH. In this particular case also no name was explicitly indicated as the appellant’s name, but “Fresenius AG” was mentioned as the opponent’s name. (b) The Board first noted that it was not unusual in a notice of appeal to designate the appellant in such a way, namely by referring only to the “opponent” in cases where the opponent became the appellant. Such an indication was admitted as an indication of the appellant’s name as required by R 64(a) EPC 1973 in situations where the same representative who had represented the opponent in the opposition proceedings had then filed the appeal. The same result followed in the case of a patent proprietor/appellant in T 867/91 [1.1]. (c) This Board subscribes to the statements in T 97/98 [1.3], namely that the requirements of R 64(a) EPC 1973 are intended, along with their administrative purposes, to secure the appellant’s identification and to allow the Boards of Appeal to check its entitlement to file an appeal as required by A 107 EPC, and that R 64(a) and R
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65(2) EPC 1973 cannot be construed as forming an exception to the basic principle that the appellant must be identifiable on expiry of the time limit for filing an appeal. (d) But in the opinion of the competent Board in T 97/98 there was a deficiency in the indication of the name and address of the appellant within the meaning of R 65(2) EPC 1973 not only when no such express indications at all had been made in the notice of appeal but also when wrong indications had been made (repeated twice, point [1.3] of the reasons). And some passages of the reasons further expand this statement in a way which might be seen to be potentially conflicting with the conclusion that the Board in the present case could reach (see points [1] and [3]) : For instance, the Board stated that correction of errors in the name or address of the appellant might be of varying nature. It might lead after correction to a different natural or legal person to the one indicated within the time limit for filing the appeal having to be regarded as the appellant. “What is required under R 64(a) and R 65(2) EPC [1973] is that there was indeed a deficiency, i.e. that the indication was wrong, so that its correction does not reflect a later change of mind as to whom the appellant should be” (the two last sub-paragraphs of point [1.3]) and “correction of the name of the appellant to substitute a natural or legal person other than the one indicated in the appeal is allowable under R 65(2) EPC [1973] in conjunction with R 64(a) EPC [1973], if it was the true intention to file the appeal in the name of said person and if it could be derived from the information in the appeal, if necessary with the help of other information on file, with a sufficient degree of probability that the appeal should have been filed in the name of that person”. (point [1.4]) To this end the competent Board thoroughly examined the documents (extract from the commercial register, a copy of a letter to the representative and an authorisation) accompanying the request for correction. (e) This decision, putting considerable weight on the “true intention” of the appellant, was quoted together with T 814/98 in The EPC, Singer/Stauder (volume 2, third edition, A 110, page 243) as allowing a correction of the appellant’s name on a different legal basis to that in T 340/92 or T 1/97. T 814/98 was different because it explicitly accepted the correction under R 88 EPC 1973 […]. As to T 97/98, despite the fact that the legal basis was R 65(2) EPC 1973 and not R 88 EPC 1973, it in fact used the same terminology as in G 11/91 about the requirements of R 139 (R 88 EPC 1973) when assessing whether the requirements of R 101 (2) (R 65(2) EPC 1973) in conjunction with R 99(1)(a) (R 64 (a) EPC 1973) were met. Thus, the introduction of the notion of “true intention” to assess the requirements of R 99(1)(a) and R 101(2) could have an impact beyond the circumstances of the case upon which the Board then decided: in particular, the conclusion drawn in point [1.4] (see point (d), paragraph [5.3] supra) could prima facie embrace correction of any nature and apply to the case at hand (see [5.8] infra), all the more so since T 97/98 [1.3] explicitly referred to T 1/97 [1.1], where it is stated that the name and address of the appealing opponent can be identified from the decision under appeal (emphasis added by the Board). [5.4] In seeking to establish the true intention, all the quoted decisions also rely very much on the fact that the appellant had the same representative and that, in conjunction with the appealed decision, it was apparent that the notice of appeal could have been validly filed only by the person adversely affected (T 340/92 [1]; T 1/97 [1.3]; T 97/98 [1.5]). [5.5] In this Board’s view, it is not pure speculation to read the common reasons of the decisions cited above in the sense that, under R 101(2) (R 65(2) EPC 1973), the entire identification of the appellant could be replaced provided that the true intention to file an appeal in the name of the right person was established, one of the possible means of evidence for establishing the true intention being the fact that nobody else pursuant to A 107 EPC would have been entitled to appeal. In fact, this interpretation crystallised in T 15/01 and T 715/01. [5.5.1] In the first case the appeal was filed in the name of a legal person which no longer existed due to a merger. The Board took a broad view of the possibilities offered to an appellant to correct the notice of appeal, since it referred to the case law justifying correction on the basis of R 88 (T 814/98; T 460/99) as well as to T 97/98 (commented upon supra point [5.3]). The Board endorsed T 97/98, according to which “nothing [in R 65(2) and R 64(a) EPC 1973] allowed them to be applied only to certain kinds of deficiencies and as a matter of principle not when the correction of a wrong indication of the name or address of the appellant leads to a different person to the one originally expressly named in the appeal having to be regarded as the appellant.”
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The deficiency was that the indication was wrong, so that the correction expressed what was intended when the appeal was filed (T 15/01 [14]). In the second case, the notice of appeal had been filed by the right person while the statement of grounds of appeal was filed by the new patent proprietor, who however had not yet been registered as such. But, and this is why this Board has to mention this case, the Board then did not make any distinction between the two appeal procedural steps, considering the same admissibility requirements to be met both by the statement of grounds and by the notice of appeal (point [4] of the reasons) : “the only question remains whether a correction of the name of the applicants in the said statement of grounds is allowable under R 65(2) EPC [1973]”. Then the Board, in point [5], referred to the passage from T 97/98 quoted in point [5.3(d)] above and then concluded (point [10(f)]) : “(f) Thus, the board considers that in the present case it is possible to remedy the deficiency under R 65(2) EPC [1973], even after expiry of the time limit for filing the appeal […], since the true intention of the appellants was to comply with the formal requirements for making an appeal admissible. This corresponds to applying in the present situation the rationale of T 97/98”. [5.5.3] Again, it is true that in T 715/01 the procedural step concerned was not the notice of appeal; but this Board understands, given the general statement in T 715/01 [5], that it was the Board’s view in this latter case that the broad interpretation of T 97/98 regarding the statement of grounds could be applied to the notice of appeal. In this case such broadening would come into open conflict with G 2/04, T 656/98 or T 128/10. [5.6] In case T 1421/05 the decisive issue was who the opponent was. The appeal had been filed in the name of an opponent who had transferred the assets to which the opposition related and who no longer existed but who had a universal successor. After having decided that the status of opponent remained with the transferor, the Board then stated: “An appeal filed by mistake in the name of an opponent who no longer exists but who has a universal successor, and which was obviously intended to be filed on behalf of the person who is the actual opponent and who was prejudiced by the decision, namely the universal successor, is admissible; if necessary the notice of appeal and statement of grounds of appeal may be corrected to record the name of the true appellant/opponent” ([headnote 4; 6-7]). The correction of the notice of appeal was undoubtedly not the main issue in this case (the question arose in fact as a consequence of the main issue, namely who the opponent was), but the Board, in the event that the notice of appeal and statement of grounds were defective, gave its reasons why the correction, if necessary, should be allowed (point [7] of the reasons). The Board indicated that it followed the approach of the Board in T 715/01, which had decided that the relevant rule was R 65 and not R 88 EPC 1973, which was in Chapter V of Part VII of the Implementing Regulations to the Convention, and that the principles for correction under R 65(2) EPC 1973 were set out in T 97/98. While in T 97/98 the Board was satisfied that, from reading the appeal with the help of the indications in the impugned decision, a third party could have derived who really intended to appeal, without knowing the details later brought before the Board of Appeal, T 1421/05 went still further and stated that the Board in T 97/98 did not mean that it was a necessary requirement for correction that the information should be derivable from the appeal (point [7.5] of the reasons). [5.7] In the light of this case law, having considered the general statements of the decisions mentioned above, particularly in T 97/98, against their specific factual background, this Board could come to the conclusion that some differences can be detected in the factual circumstances (see points [5.1(c)] and [5.2.2] above), which in the present case could justify a refusal of the requested correction without apparently deviating from the established case law. But the Board is not convinced that these differences are more than formal differences: what was found decisive was the true intention which led the boards to decide that the indication was wrong and the true intention was established with the help of information taken from the file or the fact that the representative had been the same. Moreover, there are decisions, such as T 715/01 and T 1421/05, which developed the potentially broad interpretation of T 97/98 in a sense which in fact can be seen as broadening the scope of R 101(2). [5.8] This is why the question arises in the present case whether, in view of this possible broad interpretation, this Board should consider the alleged incorrect indication in the notice of appeal as a deficiency pursuant to R 99(1) (a) and R 101(2). In fact the parameters used to establish the true intention in the decisions analysed above point to an error qualifying as such a deficiency in the identity of the appellant: from the file and the appealed decision it is immediately clear that Zenon Technology Partnership is the only party adversely affected, the same 1533 | 3398
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representative has been acting for this company since the opposition procedure, no transfer of rights has occurred, the appeal fee had been paid in the name of Zenon Technology Partnership, in addition the anomaly was immediately seen by the Registrar - all of which could plead in favour of a genuine error. [5.8.1] As regards genuine errors, the Board refers here to The Annotated EPC by Derk Visser, 19th edition, page 581, where the case law of the boards of appeal in this matter is summarised as follows: (a) the first requirement for a correction to be authorised under R 101(2) is that the deficiency is a genuine error, adding however that the correction must reflect what was intended when filing the appeal, which is an intentional feature; (b) the second requirement reflects, in the Board’s view, the ambiguity of the case law. It is stated: (i) on the one hand that the indication in the notice of appeal must be such that the appellant is identifiable upon expiry of the period for filing the appeal, even though it is allowed to make the correction after that point in time, so that it is possible to determine whether or not the appeal was filed by the entitled person in accordance with A 107. This Board fully agrees with this statement, which was already in T 1/97 (see point [5.2 (b)] supra) . But there is a second comment. (ii) on the other hand that it is sufficient for that purpose that it is possible to derive from the information in the appeal, if necessary with the help of other information on file, with a sufficient degree of probability by whom the appeal should have been filed (T 97/98 [1.4]) (emphasis added by the Board). This remark introduces an element of subjectivity into the assessment of the requirements of R 99 (1) (a) and R 101(2). [5.8.2] Having said that, the Board notes that there is another trend in the case law, which sticks to objective criteria. Decisions rejecting the request for correction G 2/04, T 128/10 and T 656/98 [5.9.1] The facts underlying this case were that the opponent (Akzo Nobel N.V.) and the company owning the activities to which the opposition pertained (bioMérieux B.V.) had filed a notice of appeal because they were in doubt as to which of the two companies was entitled to appeal. One of the requests was that the name of the appellant bioMérieux B.V. in the notice of appeal be corrected to Akzo Nobel N.V. if this company was the one entitled to appeal. The EBA noted that the opponent Akzo Nobel N.V., clearly identified as the opponent in the declaration of opposition, was not indicated as the appellant but bioM6rieux was (point [3.1] of the reasons). This was in conformity with the true intention of the author of the declaration. The EBA went on to state that it was the established case law that in such circumstances there was no deficiency which might be remedied in accordance with R 64(a) in conjunction with R 65(2) EPC 1973, nor was there an error which might be corrected in accordance with R 88 EPC 1973 (point [3.1] of the reasons). [5.9.2] Thus this Board cannot conclude from these statements that the EBA really endorsed T 97/98 in its general statements, or T 715/01, applying these statements: Indeed the EBA then concluded that “considering the overriding interest that a party must be identifiable, the [Enlarged] Board sees no reason for a broadening of the scope of application of R 65(2) or R 88, first sentence, EPC [1973] (point [3.1] of the reasons) [5.9.3] In the Board’s interpretation this only means that where there is no deficiency in the sense of R 99(1)(a) and R 101 (2) there is no reason to search for the true intention, the EBA leaving open the question of the relation between R 101(2) (R 65(2) EPC 1973) and R 139 (R 88 EPC 1973). T 128/10 and T 656/98 [5.9.4] In T 128/10, the mistake as in T 656/98 was held to be a mistake of law as to who was entitled to appeal. [5.9.5] The circumstances these two cases have in common are that the notice of appeal was filed on behalf of an identified person and was intended to be filed on behalf of this person, but it transpired afterwards that this
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person was not entitled to appeal (after a transfer of rights it happened that the appellant had not yet become the registered patent owner at the time of filing the notice of appeal). [5.9.6] In these cases where it was submitted that the real intention was to file the notice of appeal on behalf of the patent proprietor, the Boards concluded that the intention as to the identity was clear and that there was neither a deficiency nor a mistake (T 656/98 [7.1] and T 128/10 [5.4]). [5.9.7] The only difference between the case at hand and T 128/10 or T 656/98 is that in the latter cases there was a clear mistake of law: the patent proprietors had overlooked the fact that registration was a necessary requirement for being recognised as patent proprietor in proceedings before the office and therefore for being entitled to appeal, while in the present case the mistake consists in having filed an appeal in the name of a person who was not entitled to appeal, when there had been no change which could have introduced a possible hesitation about who was entitled to appeal. Accordingly, if there were not the reservations made in point [5.8] supra, and the question about the possible role of the intention, the present case could correspond to the situation as described in T 656/98 [7.1-3], where the Board then concluded that there was no deficiency, hence no room for any application of R 65(2) EPC 1973. Decisions based on R 139 [6] The Board is aware that the case law is not uniform as to whether the scope of application of R 139 extends to an act of procedure such as the notice of appeal. [6.1] T 715/01 excluded it and preferred to apply R 65(2) EPC 1973. T 814/98 allowed the correction of the appellant’s name on the basis of R 88 EPC 1973 without any preliminary discussion about the applicability of the rule. Other decisions simply mentioned it was possible without any comments (see for instance T 15/01 [14]). Consequently this rule cannot be seen as a satisfying solution. [6.2] The upshot of the above is that the decision of this Board on the admissibility of the notice of appeal depends on the role allocated, or not, to the appellant’s intention, either under R 101(2) in conjunction with R 99(1)(a) or under R 139. Accordingly, given the fact that the case law offers no clear uniform answer, the Board will now consider the respondent’s auxiliary request for a referral to the EBA. Auxiliary request: referral to the EBA [7] In fact, it results from all the decisions examined above that the crucial line of partition within the case law is, or should be, the existence of a deficiency, always relied on by the decisions, rather than the intention. [7.1.1] Either the notice of appeal was filed in the name of the presumed entitled person, who ultimately was not entitled. Whatever the intention was at the time of filing, it led to a mistake of law and to the inadmissibility of the appeal (T 128/10; T 656/98). [7.1.2] Or something happened, perhaps not intentionally, which led to a deficient indication in the notice of appeal. But the difficulty with respect to this category of decisions is that some of them accepted a very broad definition of “deficiency”, by having recourse to the notion of “true intention” to characterise such deficiencies, e.g. including discrepancies, as an unintentionally wrong identification. And in these cases the true intention was thoroughly investigated to complete the identity of the identifiable person (see for instance T 1/97 above). [7.2] In that light, the current case could belong to the first category, as already asserted (point [5.9.7]): the notice of appeal was filed on behalf of somebody not entitled to appeal, and it contains no deficiency pursuant to R 99(1) (a), so that there is no reason to trigger the application of R 101(2). [7.3] But in the light of the comments in points [5.8] above, it remains an open question whether a wrong indication can be considered a deficiency open to correction under R 101(2) because the appellant contends that the true intention was to file an appeal in the name of Zenon Technology Partnership, submitting arguments close to those admitted to establish the true intention [7.4] As already indicated in points [5.8] above, the case law has introduced the subjective notion of “true intention” and the possibility to “derive from the information in the appeal, if necessary with the help of other information on file, with a certain degree of probability by whom the appeal should have been filed”. Thus uncertainty exists about whether and, if so, under which requirements it is possible to have recourse to the true intention to assess whether there is a remediable deficiency under R 101(2) in conjunction with R 99(1)(a). 1535 | 3398
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This uncertainty concerns an important point of law: the admissibility of an appeal. Owing to this uncertainty the Board could turn to R 139, which could be a possible solution. But this rule offers no clear answer either (see points [6], supra). [7.5] Pursuant to A 112(1)(a), in order to ensure uniform application of the law, or if a point of law of fundamental importance arises, the Board of Appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required for the above purposes. [7.6] In the present case, the main reason to refer a question to the EBA is that a point of law of fundamental importance has arisen. Given the overriding interest that the party must be identifiable as underlined by the EBA (G 2/04 [3.1]), it is a matter of legal certainty that the admissibility requirements for a notice of appeal should be immediately clear for the parties and should not need to be settled at the price of a preliminary admissibility discussion about the definition of a deficiency and the possible remedies. [7.7] At this point the Board refers and subscribes to T 656/98 [1.1], where it is stated that it must be possible to determine the person entitled to appeal precisely and easily if the appeal process is not to be tangled up already at the outset in complicated investigations as to the relations between the original parties and later would-be parties and would-be appellants. This declaration made in relation to the transfer of rights to patent ownership remains relevant for the current case because it addresses the status of the appellant. [7.8] Apart from the trouble caused by the investigations which might be necessitated by a search for the true intention, the Board is not convinced that allowing the correction only on the basis of the true intention would not result in broadening the scope of application of R 101(2) in a manner which was prohibited by G 2/04, also with the consequence contra legem of eluding R 101(1) and A 107. [7.9] In fact the question is whether this broad interpretation would not lead in extreme cases to simply ignoring A 107: in cases where the patent is revoked or the opposition is rejected, the sole possible appellant being the sole losing party or its legal successor, the requirements of R 99(1) (a) could simply be ignored. [7.10] Furthermore, while the EBA in G 2/04 had no reason to discuss the relationship between R 65(2) and R 139 EPC 1973, now R 99(1)(a) and R 101(2), for the purpose of the referral at hand, it admitted implicitly that it was an issue. In the present case the appellant bases its request on both provisions, so that the question of their relationship is also decisive for the present decision on admissibility. [7.11] Finally, having regard to certain elements of case law, the Board cannot be sure that the true intention of the appellant has no role to play. Accordingly, taking the responsibility to pronounce judgment on this important point of law in a sense which would depart from these elements of case law would be fatal for the appellant’s case. This would add unfairness in a context of legal uncertainty. [8] This is why the Board comes to the conclusion that the issue is to be referred to the EBA. Order For these reasons it is decided that: The following questions are referred to the EBA: (1) When a notice of appeal, in compliance with R 99(1)(a), contains the name and the address of the appellant as provided in R 41(2)(c) and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is a request for substituting this other legal or natural person admissible as a remedy to “deficiencies” provided by R 101(2)? (2) If the answer is yes, what kind of evidence is to be considered to establish the true intention? (3) If the answer to the first question is no, may the appellant’s intention nevertheless play a role and justify the application of R 139? (4) If the answer to questions (1) and (3) is no, are there any possibilities other than restitutio in integrum (when applicable)? 1536 | 3398
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NB: The referral is pending under reference G 1/12. To download the whole decision, just click here. The file wrapper can be found here. NB: I think Le blog du droit européen des brevets was first to spread the news. You can find a French summary of the referral there.
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T 871/08 – Round 3
K’s Law – The ebook
T 871/08 – Round 3 16 Feb 2012
In this case all the opponents filed appeals against the decision of the Opposition Division to maintain the patent in amended form. Claim 1 of the main request before the Board read: 1. A process for production of hydrogen peroxide according to the anthraquinone process comprising the steps of alternate hydrogenation and oxidation of anthraquinones and tetrahydro anthraquinones in a working solution, characterised in that the working solution to be hydrogenated comprises a mixture of alkyl-substituted anthraquinones and alkyl-substituted tetrahydro anthraquinones dissolved in at least one organic solvent, wherein from 10 to 55 mole % of the anthraquinones and the tetrahydro anthraquinones are substituted with one amyl group, and the molar ratio of alkyl-substituted tetrahydro anthraquinones to alkylsubstituted anthraquinones is from 3:1 to 9:1. (my emphasis) In what follows, the Board examines the novelty of this claim: [2.1] Document D9 […] relates to a method for hydrogen peroxide production by an anthraquinone method involving hydrogenation of a mixture of alkyl and tetrahydroalkyl anthraquinones dissolved in organic solvents. The mixture is further supplemented with amyl anthraquinones and tetrahydroamyl anthraquinones. [2.2] In Example 3 of D9, the working solution contains
0.233 mol/l of 2-ethyl anthraquinone, 0.312 mol/l of tetrahydro 2-ethyl anthraquinone, 0.139 mol/l of tetrahydro anthraquinone, 0.386 mol/l of tetrahydro 2-isoamyl anthraquinone.
It follows that in the working solution:
36,07 mole % of the anthraquinones and the tetrahydro anthraquinones are substituted with one amyl group; the molar ratio of alkyl-substituted tetrahydro anthraquinones to alkyl-substituted anthraquinones when calculated from the values in Example 3 - is 2.996 : 1.
[2.3] The [patent proprietor] argued that the claimed subject-matter was novel, because the value 2.996 was lower than the lower limit of 3:1 defined in claim 1 at issue. This argumentation is not accepted by the board. When comparing a value from the state of the art (in the present case the value “2.996”) - with those claimed (here the range of values of “from 3:1 to 9:1”), the state of the art value has to be given the same accuracy as the one claimed. In the case at issue, the values in the claims have been quoted without any digit after the comma, which means that for comparison purposes, the value 2.996 has to be rounded up to 3, which thus falls into the range of the claimed values. This judgement is in agreement with the jurisprudence of the boards of appeal (in particular T 1186/05 [3.6.1-5]; T 708/05 [3]). All the other features defined in claim 1 being also disclosed in combination in document D9 […], claim 1 of the main request lacks novelty under A 54 (1) and (2). Should you wish to download the whole decision, just click here.
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T 871/08 – Round 3
K’s Law – The ebook
The file wrapper can be found here.
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T 36/11 – An All Too Sudden End
K’s Law – The ebook
T 36/11 – An All Too Sudden End 15 Feb 2012
When an opposition is withdrawn, the Opposition Division (OD) can continue the proceedings of its own motion. But it does not have to, even if the patent proprietor would prefer to keep the proceedings alive. An opposition had been filed on February 3, 2010 by Deutsche Telekom, but two weeks later the opponent withdrew the opposition. The OD informed the patent proprietor of the withdrawal (on March 1) and then invited him to file his observations with respect to the notice of opposition (on March 12). The proprietor filed observations on September 10. On November 25, he was informed that the OD had decided to discontinue the proceedings. He then filed an appeal against this decision. The Board found this appeal to be inadmissible: [1.1] In accordance with A 107 and R 101(1), one of the requirements for an appeal to be admissible is that the appellant is adversely affected by the decision under appeal. In the present case, this requirement is not met for the following reasons: [1.2] In its reply dated 10 September 2010 to the communication issued by the OD, the proprietor requested that the opposition be dismissed. In support of its request, for each one of the claims as granted, the proprietor submitted arguments against the opponent’s arguments as set out in the notice of opposition in support of lack of novelty and/or lack of inventive step. Apart from a conditional request that oral proceedings be held, the proprietor did not submit any further requests. [1.3] From the reply it can thus unambiguously be derived that the proprietor requested that the opposition be dismissed and, hence, that the patent be maintained as granted. [1.4] By deciding to discontinue the opposition proceedings, the OD fully acceded to this request, since the decision had the immediate consequence that the patent was maintained as granted. In this respect, it is not relevant whether or not the order of the decision literally corresponds to the proprietor’s request. In the board’s view, what is decisive is that the substance of the decision given in the order fully accedes to the request, which in the present case is that the patent be maintained as granted. [1.5] In the statement of grounds of appeal, the appellant argued that it was adversely affected by the decision, since, notwithstanding the opponent’s withdrawal, the EPO had invited the proprietor to file its observations, which was taken by the proprietor as a clear indication that the EPO planned to continue the opposition procedure of its own motion. Further, since it was evident to the proprietor that the EPO was going to examine the facts of its own motion, the appellant assumed that the further prior art as filed with the reply would also be considered and examined. Issuing a decision to maintain the patent as granted only after an examination of this prior art would have led to “the needed clarity on this patent, in the interest of the public and all parties involved”. [1.6] These arguments are not convincing for the following reasons: With the communication dated 12 March 2010 the proprietor was invited to file its observations. This invitation cannot be interpreted as indicating that the proceedings would be continued. For example, a reply in which the proprietor were to submit that, in view of the withdrawal of the opposition, the opposition proceedings were to be discontinued, would have been fully compatible with the content of the communication. As to the prior art documents filed with the reply, the board notes that in the accompanying letter reference to these documents is only to be found at points II. 3 and 4, which read as follows:
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T 36/11 – An All Too Sudden End
K’s Law – The ebook
“3. For the sake of completeness, Patentee submits as further items of prior art Exhibit E 10: Patent JP-03-244224 including English abstract and English claims Exhibit E 11: Patent JP2001-197551 including English abstract and English claims and also machine translation of claims and description These items of prior art were cited by the Japanese Patent Office during examination of a Japanese family member of the patent in suit. 4. Furthermore, Patentee submits the following items of prior art which were cited by examiners of the USPTO during examination: Exhibit E 12: US6088002 Exhibit E 13: US20030003959” In the board’s view, these submissions do not imply that the proprietor made a request that the opposition proceedings be continued and, more specifically, that the cited prior art documents be considered and examined by the OD. Nor do they imply or suggest that an examination of these documents would lead to “the needed clarity on this patent, in the interest of the public and all parties involved”. [1.7] The board further notes that under A 113(1) the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. This procedural right is intended to ensure that no party is caught unawares by reasons given in a decision turning down its request on which the party has not had the opportunity to comment. In the present case, since the opponent had withdrawn its opposition, the proprietor was the only remaining party to the opposition proceedings. Further, from the decision under appeal it follows that the OD had no cause to continue the proceedings of its own motion as the dossier stood at the time (see point II above). If the OD had considered that the stage reached in the opposition proceedings was such that they were likely to result in a limitation or revocation of the patent without further assistance from the opponent and without the OD itself having to undertake extensive further investigations, it should have continued the proceedings (cf. R 84(2), Guidelines, D-VII, 6.2 and 6.3). In the present case, this situation apparently did not occur and, analogous to the case in examination proceedings in which the examining division is not obliged to issue a communication in which its reasons as to its positive findings on the grant of a patent are set out, the OD was not obliged to communicate to the proprietor the reasons as to its positive findings on the maintenance of the patent as granted in order to comply with A 113(1). Hence, there was no violation of the right to be heard, which might otherwise have adversely affected the proprietor. [1.8] Since the decision corresponds to and is fully consistent with the proprietor’s unambiguous request at the time and the board sees no other reason why the proprietor would have been adversely affected at the time the decision was delivered, the board concludes that within the meaning of A 107 the proprietor was not adversely affected by the decision. [1.9] Consequently, the appeal is to be rejected as inadmissible, A 107 and R 101(1). I understand that if the patent proprietor had responded by filing a main request limiting claim 1 of the patent before the OD terminated the proceedings, the OD could not have acted as it did - or, if it had done so, the appeal would have been admissible. To download the whole decision, click here. The file wrapper can be found here.
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T 1285/11 – Something Special
K’s Law – The ebook
T 1285/11 – Something Special 14 Feb 2012
The applicant filed an appeal after the Examining Division (ED) had refused his Euro-PCT application. The application as originally filed contained 28 claims. The product claims 1 to 22 and 26 to 28 were directed to various solid-state forms of (3-(((4-tert-butyl-benzyl)-(pyridine-3-sulfonyl)-amino)-methyl) -phenoxy)-acetic acid sodium salt or a hydrate thereof. The EPO, acting as an ISA, considered the application to be non-unitary and the claims to cover nine inventions: (1) claims 1 (in part), 20 and 21 ; (2) claims 1 (in part), 2-4, 17-19, and 22-25) ; (3) claims 1 (in part) and 5-7 ; (4) claims 1 (in part) and 8-10 ; (5) claims 1 (in part), 11 and 12 ; (6) claims 1 (in part), 13 and 14 ; (7) claims: 1 (in part), 15 and 16 ; (8) claims 26 and 27 ; (9) claim 28. The reasons given for the finding of non-unity were essentially that document D1 already disclosed (3-(((4-tertbutyl-benzyl)-(pyridine-3-sulfonyl)-amino)-methyl) -phenoxy)-acetic acid sodium salt as a white solid for use in treating conditions that are related to the modulation of prostaglandin. Because it already belonged to the prior art, said salt could not be viewed as constituting a “special technical feature” in the sense of Rule 13.2 PCT. The problem of providing further forms of said salt had been solved by providing different polymorphs thereof according the nine inventions listed. These inventions were therefore not so linked as to form a single general inventive concept, contrary to the requirements of Rule 13.1 PCT. Since no additional search fees were paid, the ISR was restricted to the invention first mentioned in the claims. Together with the request for entry into the European phase, the applicant filed amended claims 1 to 10 relating to invention (2) above. In a first communication dated 21 September 2010, the ED referred to the written opinion of the ISA, and noted that no additional fees had been paid in the international phase, following an objection of lack of unity by the ISA. It was therefore requested that the applicant “restrict the claims to invention 1 as required by R 164(2)”. The applicant disputed that R 164(2) could be seen as a bar to further prosecution based on the subject-matter now claimed, since a search with respect to the subject-matter as defined under “invention 1” would inevitably also have covered crystalline form A of the present salt. No further search was therefore required. The ED maintained its objection. It finally refused the application at the end of oral proceedings (OPs) held on 7 March 2011. According to the written decision, the ED considered that the subject-matter of this request contravened R 164(2) and R 137(5). It considered that the fact that no further search fees or protest fees had been paid in the international phase amounted to a tacit agreement on the part of the applicant with the findings of non-unity of the ISA. With reference to decision G 2/92 and the Guidelines for Examination, chapter III, point 7.11.4, the ED submitted that the only way for the applicant to seek protection for the present subject-matter would be to file a divisional application. Here is what the Board of appeal had to say: Refusal based on R 137(5) [2] The ED inter alia relied on R 137(5) in refusing the present main request, citing the text of this R according to which “amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept”. The board notes that this wording is the same as that of R 86(4) EPC 1973. This rule was introduced to give the EPO the means to react appropriately when the applicant dropped existing claims and replaced them with originally non-unitary subject-matter extracted from the description (see the Notice published in OJ EPO 1995, 409, in particular pages 420 and 421, point 2; see also Guidelines for Examination, C-VI, 5.2(ii), in particular the 1542 | 3398
T 1285/11 – Something Special
K’s Law – The ebook
second paragraph of this section). This is also reflected in the passage of the Guidelines for Examination cited by the ED in this context, namely, chapter III, point 7.11.1(iv), which states that, “if the claims to be examined relate to an invention which differs from any of the originally claimed inventions and which does not combine with these inventions to form a single inventive concept, an objection under R 137(5) should be raised in the first communication” (emphasis added). Indeed, according to well-established case law, “R 86(4) does not apply when the applicant has not paid the search fee in respect of a nonunitary invention relating to the originally filed claims” (see T 708/00, [7, 5-8]). In the present case, the subject-matter of the amended claims according to the main request was already present in the claims as originally filed (see claims 2 to 4, 17 to 19, 22 to 25). Therefore, the main request does not contravene R 137(5) and may not be refused on this basis. Refusal based on R 164(2) [3.1] R 164(2), which entered into force with the 2000 on 13 December 2007, applies to the present application, since the international application on which it is based […] was filed on 25 August 2008. This rule requires that, “where the ED finds that the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention, or protection is sought for an invention not covered by the ISR ..., it shall invite the applicant to limit the application to one invention covered by the ISR ...” (emphasis added). The board notes that it can already be deduced from the juxtaposition of the expressions “an invention not covered by the ISR” and “one invention covered by the ISR” that, in order for R 164(2) to be applicable, the respective non-searched and searched inventions being referred to cannot belong to a single invention and must indeed be non-unitary with respect to one another. As aptly analysed in the decision of the Legal Board of Appeal J 3/09 [3.5.7], it is also implied by the wording of R 164(2), giving the EPO the power to invite the applicant to limit the application to one invention covered by the ISR, that where there is in fact only “one” invention there is no sanction. According to the practice of the EPO, as set out in the Guidelines for Examination (C-III, 7.10, first paragraph) and explained in detail in decision J 3/09 [3.5.6]), the responsibility for establishing whether or not the application meets the requirements of unity of invention ultimately rests with the ED, and the opinion of the EPO acting as the ISA on lack of unity is not final or binding on the ED. The fact that the applicant did not pay further search fees or protest fees in the international phase cannot therefore be seen as a tacit agreement with the findings of non-unity of the ISA, as submitted by the ED in the decision under appeal. The situation referred to by the ED, whereby subject-matter in respect of which a search fee has not been paid can only be pursued in a divisional application, presupposes that the searched and non-searched inventions are in fact found to be non-unitary when the ED upon review agrees with the opinion of the search division (see decision J 3/09 [5.1-7] and references therein to decisions G 2/92 and T 631/97; see also Guidelines for Examination, C-III, 7.10, third and fourth paragraphs, and 7.11.1(ii),(iii)). To the extent that an objection of non-unity raised by the ISA turns out to be unjustified, the applicant is entitled as of right to have the whole subject-matter of his unitary invention searched. If need be, an additional search would have to be performed (see Guidelines for Examination, C-III, 7.10, third paragraph, last sentence, and 7.11.1(v); decision J 3/09 [3.5.6, 5.2]), regardless of whether or not this might involve an additional effort. With respect to the ED’s reference to the Guidelines for Examination, chapter III, point 7.11.4 […], it is noted, for the sake of completeness, that this relates to the situation where the EPO has established an international preliminary examination report (IPER). An IPER has not been issued in the present case, since the applicant did not file a demand requesting examination of the international application by the IPEA (Chapter II of the PCT). In addition, it is noted that point 7.11.4 must be read in the context of preceding point 7.11.3, which explicitly refers to the case where “the applicant successfully refutes the objection ... or the interpretation of the rules regarding unity of invention was erroneous”. [3.2] Consequently, in order to establish whether R 164(2) is applicable in the present case, it must be decided whether the ED was correct in its assessment that the subject-matter now claimed in the main request (“invention 2”) and the searched subject-matter (“invention 1”) are non-unitary. 1543 | 3398
T 1285/11 – Something Special
K’s Law – The ebook
The objection of lack of unity of the ISA, on which the examination division relied, was raised a posteriori, based on document D1 […]. In Step D of Example 14d (page 200), a process is disclosed for the synthesis of the present sodium salt, which is obtained as a “white solid”. Thus, this material already forms part of the prior art, but its solid-state structure is not specified, that is, whether it is crystalline, non-crystalline or amorphous (cf. application in suit, originally filed claims 1 to 25; 26, 27; and 28, respectively). It must therefore be concluded, prima facie, that any one of these features, including “crystallinity”, defines a contribution over the prior art, and therefore qualifies as a potential “special technical feature” in the sense of R 44(1). The ED argued in this context that, although the ISA had found “invention 1” to be novel with respect to document D1, it had not considered it to be inventive with regard to said document (cf. above point XI). However, it is noted that this opinion of the ISA on novelty and inventive step was not included as part of the analysis relating to unity, and for good reason. Indeed, in the present case, a definitive conclusion as to whether the common concept of “crystallinity” is novel and inventive cannot be reached without a full substantive examination procedure, with active participation of the appellant. This is clearly required in order to establish what solid-state form is actually obtained in Example 14d of document D1 […], and whether any claimed subject-matter possesses surprising properties with respect to the prior art material, as contended by the appellant […]. Consequently, the board concludes that, prima facie, the feature of “crystallinity” can be regarded as constituting a “special technical feature” in the sense of R 44(1), establishing unity between present “invention 1” and “invention 2” in accordance with A 82. Accordingly, as explained above under point 3.1, R 164(2) cannot be seen as a bar to further prosecution based on the subject-matter now claimed in the main request. Remittal to the first instance [4] It follows from the preceding considerations that the reasons for the refusal of the present application by the ED were not justified. Under these circumstances, the board exercises its power under A 111(1) and remits the case to the ED for further prosecution. Examination can thus be resumed on the basis of the main request. The ED will have to consider whether an additional search is required in the present case […]. With respect to the issue of clarity, it will in particular have to be examined whether the main request meets the requirements of A 84, taken in combination with R 43(2), in respect of the number of independent claims in the same category. In addressing the issue of novelty, the ED should assess whether convincing evidence or arguments have been provided to establish that the claimed crystal form is in fact novel over the product produced by the process according to Example 14d of document D1. Reimbursement of the appeal fee [5] According to A 113(1), the decisions of the EPO may only be based on grounds on which the parties concerned have had an opportunity to present their comments. In this context, the word “grounds” should be interpreted as referring to the essential reasoning, both legal and factual, which leads to the refusal of the application (see T 951/92 [3(v)]). In the present case, the ED referred in a first communication to the written opinion of the ISA stating that the claims as originally filed were non-unitary, and, with reference to R 164(2), requested that the applicant restrict the claims to the invention for which a search fee had been paid […]. This is in accordance with standard procedure as outlined in the Guidelines, chapter C-III, 7.10. However, in response to the counter-arguments submitted by the applicant, the ED merely referred once again to R 164(2) […]. This pattern was repeated in the subsequent reply of the applicant and summons to attend OPs, despite the fact that the applicant had submitted additional arguments and requested a reasoned response from the ED […]. Finally, in its letter of 4 February 2011, the applicant provided a yet more detailed analysis of the case and once again complained of the lack of reasoned response on the part of the ED […]. This letter remained unanswered prior to OPs held before the ED on 7 March 2011.
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T 1285/11 – Something Special
K’s Law – The ebook
Thus, neither of the communications of the ED referred to in the previous paragraph was in line with the requirements of R 71(2), since they contained no reasoned statement as to why the arguments of the applicant had not been accepted and the objection under R 164(2) maintained. This conduct of the ED thus deprived the applicant of the possibility of preparing meaningfully for the scheduled OPs since it was not clearly informed of the essential reasons on which the findings of non-compliance were based. Regarding the decisive question of whether “inventions 1 and 2” were to be considered unitary […], the ED submitted that, since it had invoked and applied R 164(2) in its communications, it was implicit that it had reviewed the non-unity objection brought forward in the international phase and found this to be justified […]. However, in order to satisfy A 113(1), the outcome of this review should have been communicated in such a way as to permit the applicant to understand and respond to the essential reasons for the conclusion reached. Indeed, from the statement of grounds of appeal […], it is apparent that the reasoning of the ED for rejecting the applicant’s argument that “crystallinity” was to be seen as a “special technical feature” was only communicated to the applicant with the decision under appeal. Moreover, it is apparent, from the communications of the ED and from the minutes of the OPs before the ED, that the objection under R 137(5), on which the refusal was also based, was communicated to the applicant for the first time in the form of a statement at the conclusion of OPs. In view of the above, it must be concluded that the refusal of the application was based on legal and factual reasons which were presented for the first time in the decision under appeal and on which the appellant was therefore given no opportunity to present its comments. The board considers that this failure to comply with the requirements of A 113(1) constitutes a substantial procedural violation and that it is therefore equitable to order the appeal fee to be reimbursed in accordance with R 103(1)(a). Should you wish to download the whole decision, just click here. The
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J 1/11 and J 18/10 – Second Thoughts (Again And Again)
K’s Law – The e
J 1/11 and J 18/10 – Second Thoughts (Again And Again) 13 Feb 2012
These decisions deal with withdrawals from a withdrawal of an application. J 1/11 In J 1/11, the application under consideration was filed as an international application and then entered the European phase. By letter dated 19 January 2009 received by fax on the same day, and confirmed by letter of January 28, 2009, the authorised European representative of the above application wrote the following: “On behalf of the applicant I hereby formally withdraw the above application. Please refund the examination fee paid in relation to this application.” On February 6, 2009, the withdrawal of the application was recorded in the European Patent Register (hereinafter “the Register”) after a confirmation of the withdrawal was sent to the representative one day earlier. On February 26, 2009, that is, after the withdrawal was recorded in the Register, but before it was published in the European Patent Bulletin (hereinafter “the Bulletin”), a request for correction pursuant to R 139 was filed. The request stated that the withdrawal was made in error and a correction should be made to the effect that the application was not withdrawn. The EPO did not allow this request and the applicant filed an appeal. The appellant essentially argued in writing that a request for retraction of a withdrawal of the application should be allowable until such withdrawal has been officially notified in the Bulletin according to A 129 EPC rather than, as was held in the decision under appeal, the Register according to A 127 and R 143. The appellant pointed out an inconsistency between J 25/03 and J 14/04 on the one hand and J 10/87 and J 4/03 on the other hand. Should the Board not be minded to follow the reasoning of these latter two decisions, the appellant requested the Board to refer the following question to the Enlarged Board of Appeal (EBA): “Is retraction by correction of a withdrawal of a patent application no longer possible if the withdrawal has already been recorded for inspection in the Register (per J 25/03 and J 14/04) or should publication of the withdrawal to the general public in the Bulletin (per J 10/87 and J 4/03) be decisive?” As you might have guessed, the Board dismissed the appeal, for the following reasons: [2] Explicitly withdrawing a pending patent application is a declaration of highest importance for the applicant, since all legal effects of the application such as establishing a preliminary right, are finally abandoned. In light of these consequences, utmost caution is therefore required when declaring the withdrawal of an application. [3] A correction of errors in documents filed with the EPO under R 139 is only possible under strictly defined conditions. In the case at issue, the request for retraction of the withdrawal reached the EPO more than a month after the withdrawal was made and after it was recorded in the Register. Yet it is not primarily the EPO that is concerned with a withdrawal, but the public, for which a withdrawal is of potential interest. It is thus the public that can be regarded as the ultimate addressee of such a withdrawal. Therefore, a withdrawal cannot be retracted once the public has been officially informed thereof. In a broader sense, this is also reflected in the principle that a declaration of intent can only be retracted if the retraction reaches the addressee either before said declaration or at the same time, a rule that can be found in the civil law systems of many Contracting States of the EPC. It is not disputed by the appellant that retraction of the withdrawal is no longer possible once the withdrawal has been published in the Bulletin. The question is thus whether a publication of the withdrawal in the Register should have the same legal consequences. In the present case, retraction of the withdrawal reached the EPO
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almost one month after the withdrawal was notified in the Register, while it had not yet been published in the Bulletin. [4] Starting point for the Board’s analysis is decision J 10/87. The headnote of this decision (and also point [13] of the reasons) reads as follows: “A request for retraction of a withdrawal of the designation of a Contracting State filed after publication of the patent application may be allowable under R 88 EPC [1973] in appropriate circumstances, in particular if (a) the public has not been officially notified of the withdrawal by the EPO at the time the retraction of the withdrawal is applied for; ...” In other words, retraction of a withdrawal, be it of a designation of a Contracting State, or, as in the current case, the application as a whole, is basically considered possible until the public has been officially notified of the withdrawal. [5] In applying the criteria in decision J 10/87, the examining division had allowed a request for retraction of a withdrawal in considering that the withdrawal had not been officially notified to the public. While the withdrawal had already been entered into the Register, it had not yet been published in the Bulletin. The withdrawal could be noticed by the public via a public file inspection. The Board in that case took the view that the possibility of a public file inspection could not be equalled to an official publication, and paragraph 10 of the reasons reads as follows: “[10] After due consideration, weighing the interests of the public against those of the applicant, the Board is of the opinion that a withdrawal which could only be noticed by inspection of the file can justifiably be treated differently from a withdrawal which was officially published. Legal certainty for third parties is of greater importance after official publication of a withdrawal by the EBO than after a withdrawal which can only be discovered by inspection of the file.” [6] While the Board takes note of the distinction of public file inspection and publication in the Bulletin made in the decision J 10/87, it is of the opinion that internet technology as implemented by the EPO has made this distinction no longer relevant for determining the basic condition of the official notification of the withdrawal to the public. The Register nowadays allows for a file inspection online no different than the Bulletin allows for an online access of its contents. Since 1 January 2005, the Bulletin has been issued in electronic form only, and paper copies are no longer available. The previous distinction between “inspection” that required either a personal visit to the EPO or a specific oral or written request regarding a particular application, and a “publication” effected by sending out the Bulletin to the world at large seems no longer justified or justifiable. The progress of technology for the question of inspection of the Register and publication of the Bulletin was dealt with in detail in the decision J 25/03 that relates to facts very similar to the present case, and that goes into considerable detail as to the technical possibilities of access both for the Register and the Bulletin. [7] In decision J 25/03, an application was unconditionally withdrawn, and such withdrawal was published in the Register before the applicant requested correction under R 88 EPC 1973 (now R 139) of its earlier withdrawal of the application. At that point in time, no publication of such withdrawal had taken place in the Bulletin. The question was thus whether mention in the Register according to A 127 and R 143 counted as an official information to the public. The Board in the above-mentioned case answered this question in the affirmative, and in its reasoning went into considerable detail. Paragraphs 8 to 10 of the decision in this respect read as follows: “[8] Decision J 14/04 refers to the EPC, which in Chapter II of Part VII sets out the “Information to the public or official authorities”. According to A 127 EPC [1973], the EPO shall keep a register, to be known as the Register, which shall contain those particulars the registration of which is provided for by this Convention. R 92 EPC [1973] further lists the entries in the Register, which includes, in paragraph (n), the date on which the European patent application is refused, withdrawn or deemed to be withdrawn. These references to the text of the European Patent Convention clearly support the official character of the entries in the Register, in particular the mention of the withdrawal of a patent application. 1547 | 3398
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J 1/11 and J 18/10 – Second Thoughts (Again And Again)
Moreover, A 129(a) EPC [1973] states that the Bulletin contains entries made in the Register. This indicates clearly that the contents of the Bulletin relies on entries in the Register. It corroborates the official character of the entries in the Register and, to a certain extent, even its precedence over the Bulletin. So, contrary to what is alleged by the appellant, legal effects are associated not only with the publication in the Bulletin, but also with entries in the Register. As an example, unless the conditions of R 20(3) EPC [1973] are met, it is the person registered as applicant, i.e. the person whose name is entered into the Register, who is the party to the proceedings and who is deemed to be entitled to exercise the right to the European patent, in accordance with A 60(3) EPC [1973] (J 26/95 [2]), irrespective of whether or not the right to a European patent belongs to him as a matter of substance (see A 60(1)). [9] As to the public character of the content of the Register, A 127 EPC [1973] mentions that it is open to public inspection. As regards the Bulletin, A 129(a) EPC [1973] explicitly refers to it as being a publication. No conclusive difference can however be derived simply from this minor and strictly literal difference. In a broader approach, the public dimensions of the Bulletin and of the Register have to be considered in the framework of how these official sources of information have actually been made available by the EPO to the public since the time the withdrawal of the patent application had been mentioned in the Register. Both the Bulletin and the Register are similarly offered freely to the public via EPOLINE®, on the internet. Not only is it possible for any person to access the Register on-line but also a service is offered which allows tracking changes in all files of published applications, using tailor-made lists of patent applications. Combined with an additional software tool, it renders it possible to compare data and identify changes immediately, or even automatically to receive an e-mail alert every time a change occurs in any of the cases previously selected in the Register (at that time through WebRegPro. See WebRegPro: monitoring patent applications using the epoline® online Register, EPIDOS News 4/2002, December 2002, also published on the EPO internet site, in the News, on 20 December 2002). These factual elements surrounding the official character of the information available support the general availability to the public of the entries in the Register, from the day they appear therein. Consequently, an entry in the Register also amounts to a notification to the public as well as a publication in the Bulletin. [10] For these reasons, the Board holds that the public has been officially notified of the withdrawal of the patent application by its mention in the Register on 11 January 2003, before the request for retraction of the withdrawal. Even after possible inspection of the complete file, there would not have been any reason for a third party to suspect at that time that the withdrawal could be erroneous and later retracted. The Board considers that legal certainty and the balance to be made of the applicant’s and of third parties’ interests do not allow the application of R 88 EPC [1973] in the present circumstances to authorise the retraction of the withdrawal of the patent application.” [8] In adopting the above considerations, the Board takes the view that decision J 10/87 was necessarily factspecific in that in its analysis of what made the withdrawal officially notified to the public, it relied on certain, then existing technical features of the file inspection system that allowed for a distinction between inspection and publication. Subsequent development of technology no longer allows for such distinction, as had been set out in great detail in the decision J 25/03. [9] Still, the Board acknowledges that the appellant advanced a second line of argument that has not been explicitly dealt with in previous decisions, namely, that despite the technical and functional approximation of 1548 | 3398
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J 1/11 and J 18/10 – Second Thoughts (Again And Again)
Register and Bulletin, only the latter carries the presumption of an official publication. In other words, as much as the public may be able to obtain information from the Register technically and functionally equivalent, but earlier as from the Bulletin, the public is deemed to have been officially informed only by information that is contained in the Bulletin, and only information in the latter is “cast in stone” and can be relied upon by the public as legally certain. [10] As a starting point, it should be said that both the Register according to A 127 and the Bulletin according to A 129(a) are official sources of information to the public. There is nothing that would allow a distinction as to which of the two is more official, reliable or decisive. Both are listed in the EPC under the same chapter II that is entitled “Information to the public or to official authorities”. The function of the Register as information to the public is confirmed by the heading of chapter IX of the EPC Rules “Information to the public” that in Rule 143 in particular deals with the Register. [11] This is not to say that the Bulletin has no functions other than those of information. On the contrary. For example, only a publication in the Bulletin gives effect to the decision to grant a patent (A 97(3)), and only the publication of the mention of the grant of the European patent in the Bulletin triggers the nine-month period for a notice of opposition, A 99(1). Furthermore, only the Bulletin carries a specific publication date. It is, in fact, published on a weekly basis. Contrary to what the appellant alleges, entries into the Bulletin are no more “cast in stone” than those of the Register, and can be corrected either under R 140, or by way of a decision. [12] Yet, as far as the function of information to the public is concerned, the Board is unable to deduce a fundamental difference between Register and Bulletin. [13] For its request to refer the case to the EBA, the appellant relies on decisions J 10/87 and J 4/03 that allegedly conflict with decisions J 25/03 and J 14/04. As regards decision J 04/03, the Board is unable to see any conflict with decisions J 25/03 and J 14/04 already for the fact that in the specific circumstances of J 4/03, a request for correction of an allegedly erroneous withdrawal was made only after publication had been effected in the Bulletin. For that reason, the question as to whether an entry in the Register could qualify as a relevant notification to the public did not arise in that case. As regards decision J 10/87, it has been explained above why this case should be followed as to the condition of the absence of official notification of the withdrawal to the public, but distinguished from subsequent cases as to the actual application of that condition due to the limited technical possibilities of file inspection back in the 1980ies, as has already been decided in J 25/03 and J 14/04. Therefore, the Board in the present case sees no need to refer a question to the EBA under A 112(1) EPC. [14] The Board thus takes the view, that, first, there is no reason to deviate from decisions J 25/03 and J 14/04, that, second, advanced technology has made the distinction of “inspection” and “notification” relied upon in case J 10/87 no longer applicable, that, third, there is no justification for distinguishing official information to the public by way of the Register or the Bulletin, and that, fourth, the decision J 4/03 does not address the case of a request for correction after entry of a withdrawal in the Patent Register, but before publication in the Bulletin. [15] In conclusion of the above analysis, the appellant’s requests for retraction of the withdrawal of its application as a correction of an error under R 139 EPC must be refused. […] The appeal is dismissed. J 18/10 Decision J 18/10 deals with a similar case, but here the request for correction was made after the publication in the Register and in the Bulletin. Obviously, the appeal was dismissed, too. What makes this decision interesting is that the appellant argued that a third party inspecting the complete file of the application at the time of the official notification of the withdrawal to the public would have had a strong suspicion that the withdrawal was made in error since the written opinion and the supplementary search report for the application were extremely favourable. A third party would have therefore expected that the application would proceed to examination with a probable grant of a patent. Further, the reference to the invitation from the EPO requesting it to confirm its intention to further proceed with its application, which the applicant made in the letter withdrawing the application would have surprised a person reading the file, in view of the very positive situation of the application and since there was no need for the applicant to express that it did not wish to continue with the examination of its application. The Board will not have it:
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J 1/11 and J 18/10 – Second Thoughts (Again And Again)
[4] However, the appellant argued that a third party inspecting the file after the withdrawal would have suspected that the withdrawal was made in error, in view of the positive elements present in the file and the normal expectation that the examination would terminate with the grant of a patent. The Board cannot follow that line of argument. Even in a case of the application being in a very favourable position in examination proceedings, it remains possible and consistent that, for other reasons, the applicant decides not to proceed further with its application. It is also possible that the applicant is interested in having its application withdrawn immediately instead of having it simply deemed to be withdrawn later. [5] The appellant further argued that its reference to the invitation from the EPO requesting it to confirm its intention to further proceed with its application in the letter withdrawing the application would have surprised a person reading the file. With regard to that argument, the Board notes that the withdrawal was explicit, unambiguous and unconditional. The Board sees no contradiction arising from the reference made to the invitation to confirm the intention to further proceed. It is not decisive whether a third party could possibly have been surprised by that reference, since it does not indicate an error. To download the whole decision, just click here (J 1/11) and here (J 18/10). The corresponding file wrappers can be found here and here, respectively.
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T 2048/07 – Nothing Further
K’s Law – The ebook
T 2048/07 – Nothing Further 11 Feb 2012
The applicant filed an appeal against the decision of the Examining Divison to refuse his application. Claim 1 of the final request before the Board read: A computer-implemented method (400) for dynamic data type enrichment comprising the steps:
accessing (415), through an application programming interface, API, (190) by an application program (210), metadata (150), wherein the application program (210) uses at least one variable (201) being an ‘integer’, ‘character’, or ‘string’ and wherein the application program (210) calls through the application programming interface(190) at least one metadata service (191, 192, 193) that relates to the corresponding variable (201); and enriching the corresponding variable (201) with metadata (150) at runtime when the application program (210) is executed, wherein the metadata (150) is associated with a specific data type (120) defined in a metadata store (220) and the application program (210) provides a mapping (302) between the specific data type (120) and the corresponding variable (201), wherein to specify the specific data type (120), the corresponding metadata (150) includes data type details (151, 152, 153) including a text label, a range of allowed values, constraints or any other data that specifies the specific data type and wherein the data type details (151, 152, 153) are exposed to the application program (210) and its variable (201) through the API (190) in the form of the at least one metadata service (191, 192, 193).
The Board came to the conclusion that this claim lacked inventive step : Further technical effect [7.1] [… In] the statement of grounds of appeal […], the appellant identifies the effects achieved by the claimed invention thus: “System failures due to an otherwise non-matching data type requirement in the underlying system [are] avoided and thereby robustness, reuse and consistency of (mobile) application programs is improved”. However, the board is not convinced, at least insofar as this suggests that the claimed invention makes the computer system more reliable, in the sense of avoiding program or system crashes. A properly written program expecting a ten-digit customer number will not crash if presented with a twenty-digit one, it will simply reject the input. Indeed, if anything, the proposed invention introduces new dangers of system failure. The problems involved in at first accepting an assignment to a variable of a value consisting of twenty digits, and later changing the definition of that variable to specify that it can only have values of ten digits length, are evident. The Board accepts that reading certain data usually embedded in program source code from a file would make at least that part of the source code more reusable and the program more flexible and portable […]. However, this is simply an advice on how to write a program, and belongs to the fundamentals of that art. To take an example, if one wanted to write a program to calculate the trajectory of a projectile, one option would be to embed the value of g (acceleration due to gravity, on the earth’s surface approximately 9.8 ms**(-2)) in the source, either as a number or as a defined constant. The program would, however, not work for trajectories on the moon; the system would “fail” if one tried to use it for such a calculation. To make the program cover all cases, the value of g could be made an input variable. It would simply be a programming option that would directly follow from the specification drawn up by a systems analyst: if the specification states that some data may change, the programmer will make it a variable. [7.2] The program, therefore, contains only features that are necessary to ensure its proper functioning, independent of any technical context in which it should be used. As a consequence, the program lacks a “further 1551 | 3398
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technical effect”, i.e. an effect that goes beyond the normal technical effects that would be caused by any program within the computer system on which it runs (T 1173/97 [6]). [7.3] During the oral proceedings, the representative reformulated the “reliability” argument as an increased availability of the system on which the program is running, since a change of the metadata could be effected without stopping the program. It was argued that this was the required “further technical effect”. However, the board considers that this again is simply a matter of how a program is specified. A correct program is precisely as flexible as it is designed to be. The way in which a formal specification is implemented in a computer program is part of the art of computer programming, which by virtue of A 52(2)(c) and (3) cannot of itself be adduced as an indication of “technical” activity (see G 3/08 [13.5]). [7.4] In the course of discussion, the representative was asked if, taking the example trajectory program, he would consider there to be the same “further technical effect” in a program which read in the value of “g” rather than having it embedded in the source code. He said that there would indeed be a technical difference between the programs. The board agrees that if the “increased availability” argument were accepted, this would be the consequence. But the implication of this would be that any program which read in any data at all would show a “further technical effect”. The board can not accept this: reading in data is part of the fundamental definition of computing - input, process, output. Thus the board considers that reading in data does not go beyond the normal technical effects that would be caused by any program within the computer system on which it runs, i.e. that reading data is not a further technical effect in itself. Thus the “increased availability” argument, at least in the context of this particular claimed invention, equally fails. [7.5] The board notes that the claims concern themselves with “metadata”, i.e. a particular subset of data in general. However, the arguments given above are not affected by what the nature of the data is, nor does “metadata” have any inherently technical nature, as might be argued in the case of data relating to some technical process. Inventive step, A 52(1) and A 56 EPC 1973 [8] Since the program causes no further technical effect, it also solves no technical problem with respect to the prior art of computers in general. As a result, claims 1, 6, 7 and 11 lack an inventive step, according to the established case law of the Boards of Appeal (see e.g. G 3/08 [10.13]). […] The appeal is dismissed. Should you wish to download the whole decision, click here. The file wrapper can be found here.
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T 1525/10 – They Never Come Back
K’s Law – The ebook
T 1525/10 – They Never Come Back 10 Feb 2012
Interested in how the Boards apply Article 12(4) RPBA? If so, this decision is for you. In this case the Opposition Division (OD) decided in its interlocutory decision of March 27, 2007, to maintain the patent under consideration in amended form. The opponent filed an appeal against this decision. Opponent 1 filed an appeal against this decision. There were interventions pursuant to A 105 on January 17, 2008, and January 23, 2009. On February 3, 2009, the Board set aside the decision and remitted the case to the OD because the interventions had created a fresh case (decision T 1469/07). There was still another intervention on February 27, 2009. In its decision taken on March 17, 2010, the OD revoked the patent. According to the OD, none of the requests met the requirements of A 84, because the feature “wherein the sustained release formulation releases the active ingredient over more than 3 hours” was not clear. Firstly, it was not clear whether the release rate referred to in vitro or to in vivo release. Secondly, the description did not provide any standard test for measuring it and finally, the release data provided in the patent specification were not sufficient for characterising the sustained release. The patent proprietors filed an appeal against this decision. They filed a main request and auxiliary requests I to V together with the statement of the grounds of appeal. Claim 1 of the main request read: 1. A sustained release pharmaceutical composition comprising a water soluble salt of fluvastatin as active ingredient and being selected from the group consisting of matrix formulations, diffusion-controlled membrane coated formulations and combinations thereof, wherein the sustained release formulation releases the active ingredient over more than 3 hours. (my emphasis) Claim 1 of auxiliary request II did not contain this 3-hours feature any more: 1. A sustained release pharmaceutical composition comprising a water soluble salt of fluvastatin as active ingredient and being selected from the group consisting of matrix formulations, diffusion-controlled membrane coated formulations and combinations thereof. The respondents pointed out that auxiliary request II was not admissible in the light of decisions T 1067/08 and T 23/10, which fully applied to the present case because requests omitting the the 3-hour feature had been withdrawn during the opposition proceedings. Therefore, the patent proprietors should be precluded to reintroduce such claims under Article 12(4) RPBA. The appellants should not have withdrawn the requests and thereby prevented a discussion on the merits if they had intended to pursue them. Moreover, the appellants’ submission was argued not to be allowable in view of reformatio in peius. In what follows the Board dealt with this admissibility objection: [2.1] Pursuant to Article 12(4) RPBA an appeal board can hold inadmissible facts, evidence or requests that could have been presented in the opposition proceedings. The boards of appeal thus retain discretion, as a review instance, to refuse new material including requests (claim sets) not submitted during opposition proceedings (T 240/04 [16.2], T 1705/07 [8.4]). The request at issue is one which was before the OD, but which was withdrawn so that no decision was taken thereon. In the board’s view, Article 12(4) RPBA equally confers discretionary powers to hold inadmissible requests that were filed and subsequently withdrawn in the first instance proceedings, since such a course of events shows that these requests could have been presented in the first instance proceedings. The discretionary power under Article 12(4) RPBA has to be exercised appropriately, which requires the appeal board to consider and weigh up the relevant factors having regard to the particular circumstances of each case. 1553 | 3398
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[2.2] It is clear from the minutes of the oral proceedings (OPs) before the OD of 17 March 2010 that the appellants, following the discussion on the main request, withdrew auxiliary requests I to III filed on 25 November 2009, in which the wording “wherein the sustained release formulation releases the active ingredient over more than 3 hours” was omitted. The OD had beforehand informed the parties that it considered the main request to meet the requirements of R 80 […] and A 123 […], whereas the words “wherein the sustained release formulation releases the active ingredient over more than 3 hours” did not satisfy the requirement of A 84 […]. In view of this finding, the withdrawal of those claim requests, in which the objected wording was omitted, appears – as the respondents argue – to be made with the intention of preventing a decision on novelty and inventive step. However, the appellants adverted to the OD’s decision of 20 August 2007 which was later set aside by decision T 1469/07. According to this decision, the release time was critical for establishing novelty visà-vis document D13 […]. Bearing in mind the OD’s opinion on novelty, the [patent proprietor’s] regarded it pointless to discuss auxiliary requests I to III filed on 25 November 2009, since it was predictable that the OD would refuse these requests for lack of novelty. For procedural economy, the appellants did not maintain their request that would set back the discussions to the state of the proceedings before the OD’s decision of 20 August 2007. [2.3] While the auxiliary requests I to III filed on 25 November 2009 may not have been withdrawn with the intention of delaying the opposition and appeal proceedings by seeking remittal upon introduction of these requests into appeal proceedings, the inevitable result of the withdrawal of the requests was that a decision thereon was avoided. As soon as those requests had been withdrawn, they were no longer the subject of a reasoned decision. However, the purpose of appeal proceedings is to review what has been decided at first instance and not to review what has not been decided (T 390/07 [2], also considering circumstances under which a request withdrawn at first instance may be admitted on appeal). As has been repeatedly stated in the case law, it is neither the purpose of an appeal proceedings to give the patent proprietor the opportunity to recast its claims as it sees fit and to have all its requests admitted into the appeal proceedings. Thus, if the appellants had wanted to preserve their right to have any of auxiliary requests I to III filed on 25 November 2009 considered by a board of appeal, they should have maintained them, all the more so in the light of the OD’s opinion on the main request. Procedural economy, which in the present circumstances consists in the time it would have taken at OPs to consider auxiliary requests I to III and to reach a decision thereon, and in the time for the OD to provide written reasons, is not a sufficient justification for the appellants’ way to proceed. Moreover, it is incumbent on both the EPO and users of the European patent system who are parties to proceedings before it to act in good faith (G 2/97 [4.2]). A proprietor who files auxiliary requests by which it delimits the framework of the opposition proceedings and then deliberately withdraws them in order to avoid any adverse decision being reached infringes this general principle by seeking to introduce these requests into appeal proceedings. In conclusion, the board, having regard to the facts and arguments presented to it, decided to make use of its discretionary powers according to Article 12(4) RPBA not to admit auxiliary request II, in which the words “wherein the sustained release formulation releases the active ingredient over more than 3 hours” had been omitted, into the appeal proceedings. [2.4] Although the following considerations are not relevant for the board’s decision not to admit auxiliary request II into the proceedings, the board wishes to take a stance with regard to additional arguments submitted in this context. [Opponent 1] argued that the admission of auxiliary request II would be contrary to the interdiction of reformatio in peius, i.e. the prohibition of a possible worse outcome of appeal proceedings for the (sole) appellant as compared to the decision under appeal. The legal situation in this regard has been elucidated in the decisions of the Enlarged Board (EBA) G 9/92 and G 4/93. The implications are limited to cases in which an interlocutory decision on the maintenance of a patent in amended form is appealed only by one of the parties. Since the present appeal lies from the OD’s decision to revoke the patent, the interdiction of reformatio in peius cannot have a bearing on the appeal and all the more on the question of admission of auxiliary request II. [Opponents 2 to 4] relied on the decisions T 1067/08 and T 23/10 refusing late filed claim requests pursuant to Article 12(4) RPBA. The appellants contested the pertinence of these decisions in view of the different factual circumstances. The board notes in this respect that the exercise of the discretionary power under Article 12(4) 1554 | 3398
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RPBA requires the appeal board to have regard to the particular circumstances of each case. The facts of the individual case will thus clearly affect any decision on the admission of late filed requests. Therefore, the decision invoked by the respondents cannot foreclose the weighing of the relevant factors having regard to the particular circumstances of each case. Nevertheless, as the EBA pointed out in its decision R 11/08 [11], the usefulness of case-law is not confined to similar or identical facts; rather it lies in the legal principles or guidance which, whether the facts are similar or not, can be extracted from earlier cases. In this respect the present decision conforms with the legal principle stated in the cited decisions that there is no right of the patent proprietor, be it pursuant to A 133(1) or A 113(2), to have claim requests admitted at any stage of opposition and opposition appeal proceedings. Thus, the admission of new claim requests remains a matter of discretion which may or may not be exercised in a party’s favour on the basis of the facts of the individual case. This legal principle has also been confirmed by the EBA (R 10/09 [2.2]; R 11/11 [9-10]). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1744/09 – Retroactive Identification
K’s Law – The ebook
T 1744/09 – Retroactive Identification 9 Feb 2012
The opponent filed an appeal after his opposition had been rejected by the Opposition Division (OD) The notice of opposition contained in the letterhead the data identifying the patent and the proprietor. The letterhead further contained the following identifications: Opponent: EADS Space Transportation GmbH (with address) Address for correspondence: EADS Deutschland GmbH (with adress) Immediately following the letterhead, the notice of opposition started with the following sentence (in English translation): “In the name of EADS SPACE Transportation GmbH, a company affiliated (konzernverbunden) to EADS Deutschland GmbH, we hereby file an opposition …” Following the detailed reasons of the opposition, the notice of opposition on the last page was signed as follows:
The patent proprietor argued during the opposition proceedings that the opposition was inadmissible, because the representative of the opponent appeared to be the EADS Deutschland GmbH, a legal entity not being entitled to represent the opponent. The OD held that the opposition was admissible, and that the grounds invoked by the opponent did not prejudice the maintenance of the patent as granted. The decision was reasoned both on the admissibility issue and on the substantive grounds of the opposition. In the minutes of the oral proceedings (OPs) the following order is recorded:
By contrast, the order of the written decision reads:
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A notice of appeal was filed in the name of EADS Space Transportation GmbH, again signed by Mr H. (but not containing EADS Deutschland GmbH in the signature). The statement of grounds of appeal contained a letterhead and a signature similar to that of the notice of opposition, with the difference that a further general authorisation number (“AV-Nr. 48428”) was also indicated under the handwritten signature. Here is the verdict of the Board: Admissibility of the opposition and the appeal [1.1] During the OPs the [patent proprietor] expressly acknowledged that the person of the (original) opponent has been clear from the very beginning and all through the procedure. The main objection against the admissibility of the opposition and the appeal is the missing signature, more precisely an “invalid” signature. The signatures in question as they stand must be considered to be the signature of EADS Deutschland GmbH. The invalidity is caused by the lack of power of EADS Deutschland GmbH, as a legal person, to represent EADS Space Transportation GmbH as a party before the EPO. According to the [patent proprietor], the undisputed fact that Mr H. was in fact a professional representative according to Article 134(1) EPC does not help the opponent. The [patent proprietor] contends that as the documents on file did not indicate that Mr H. is acting in his capacity as a professional representative, this has the effect that his actions (here the signing of the grounds of appeal) are without legal effect, in the sense that these are not to be recognised as actions taken by a professional representative. [1.2] The board does not follow this line of argument for lack of any legal basis, as explained below. [1.3] As an initial remark, the board notes that an “invalid” signature can hardly have more serious consequences than a missing one. A missing signature only leads to loss of rights if the deficiency is not remedied within a time limit after an invitation from the Office (R 50(3), last sentence). Even if the board were to find that the signature were missing or “invalid”, it could not order the legal effect (inadmissibility) desired by the [patent proprietor], but would have to invite the appellant to remedy the deficiency (R 50(3), second sentence). However, as will be further explained below, the board finds that the opponent was properly represented and all the documents, in particular the opposition and the grounds of appeal, were properly signed. [1.4] A 134(1) establishes that representation in proceedings before the EPO is mostly the privilege of the professional representatives registered as such with the EPO, with some exceptions which are not relevant here. Representation means the ability to make legal statements on behalf of the authorising party, with the legal effect that the relevant rights and obligations directly affect the authorising party, without any further confirming act of the latter. This is why a representative needs to be fully aware of the legal consequences of his actions, i.e. must have personally acquired the necessary professional competences to act for his client. [1.5] The above explains why representation is mostly restricted to professional representatives. Otherwise, the EPO does normally not enquire for the specific conditions of employment between a party and the professional representative acting for the party, as long as the EPO is satisfied that the representative is indeed authorised by the affected party to act as such. This will normally have been expressed by the issuance of a formal power of attorney (authorisation) to the representative, but such power need not even be put in writing. The entitlement to represent is based on the factual existence of such a power, whether verbal or written, and the corresponding provisions of the Convention, A 133, which specifically permit parties to act in the proceedings through a representative. [1.6] A 134, which is dedicated specifically to professional representatives, concerns only the personal conditions for acting as such. Some further formal conditions for exercising the power to represent are regulated by R 152 (A 134 EPC 1973 and R 101 EPC 1973 is applicable for the notice of opposition, but the differences are not relevant here). The single formality this rule foresees is the filing of an authorisation. R 152(1) and (5) further delegates power to the President of the EPO to determine eventual further formal conditions which need 1557 | 3398
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to be fulfilled so that the professional representatives (and also others) may make effective use of their powers to represent. However, it is to be noted that R 152(1) restricts the powers of the President to determine “the cases in which a signed authorisation shall be filed by representatives acting before the EPO”. This rule includes all types of representatives, and it is a further indication that the legislator foresaw the possibility for representatives to act before the Office without any special formalities. Similarly, R 152(5) restricts the powers of the President to determine “the form and content” of authorisations. [1.7] The President made use of his delegated powers to regulate the question of authorisations in the “Decision of the President of the EPO dated 12 July 2007 on the filing of authorisations” (Special Edition No. 3, OJ EPO 2007, 128, hereafter “Decision”). However, neither R 152 nor the Decision contains any formal requirement that the documents signed by professional representatives must indicate their basis of entitlement in order to be recognised as valid. It is true that Article 1(1), first sentence of the Decision states that a professional representative who identifies himself as such shall generally not be required to file an authorisation (emphasis by the board). Obviously, such an indication is useful and to be recommended, but it has no immediate legal effect per se if it is missing. R 152(2) and the President’s Decision merely instruct the Office how to proceed in this case: The apparent representative is invited to furnish an authorisation (Article 1(3), 2 and 3 of the Decision). Obviously, such an invitation also permits the Office to enquire about the legal position of the apparent representative if this should not be clear from the submissions. Only when “a required authorisation is not filed in due time”, i.e. following an invitation from the Office, will a legal consequence follow pursuant to R 152(6), namely that the applicable procedural step shall be deemed not to have been taken (emphasis by the Board). Still, even in this case the legal consequence is not caused by the initially missing indication (declaration) of the legal position of the apparent representative (i.e. the missing indication whether he is a professional representative, a legal practitioner or an employee), but rather by the failure to prove that he has the powers and the entitlement to represent. [1.8] For sake of completeness, the same holds for the previous Decision of the President (Decision of 19.07.1991, OJ EPO 1991, 421) and R 101(4) EPC 1973 applicable at the time of filing the notice of opposition. [1.9] Moreover, neither any article or rule of the Convention, nor the Decision does preclude that the professional representative identifies himself retroactively. Such a retroactive identification may also obviate the need for a formal authorisation (see also T 850/96 [3.3]). This is also superfluous in most cases, given that the Office maintains a continuously updated register of the professional representatives entitled to act before the Office, and this register is easily accessible for all the involved parties. [1.10] Given the above, it is immaterial that Mr H. was probably an employee of a third party, and was using the address of his employer as the address of correspondence. It is equally irrelevant that probably out of habit, he also indicated his employer in his signature, thereby possibly implying that the signature is made on behalf of his employer, adding some confusion to the matter. But even this confusion does not detract from the fact that at the time of signing he was personally a professional representative registered with the EPO (A 134(1)) and as such entitled to represent the opponent and to sign on its behalf as well. For this signature, his own name and the indication that he is signing on behalf of the opponent was sufficient. Moreover, his entitlement to represent did not stem only from his personal qualification as a professional representative and some unidentified agreement between him and the opponent, but this was further evidenced by a general authorisation issued by the opponent and deposited with the Office. The registration number of the general authorisation (AV-Nr. 48310) was explicitly referred to under his signature. On the other hand, on the basis of the totality of the facts, the indication of EADS Deutschland GmbH in the signature objectively did not serve any identifiable purpose for the opposition procedure before the EPO and therefore may be ignored. Whether it might serve some other purpose outside of this procedure need not be examined here. [1.11] Therefore, the board finds that the representative of the opponent, now appellant, did validly sign both the opposition and the notice of appeal in his capacity as professional representative. [1.12] The other argument advanced against the admissibility of the appeal is based on the fact that the original opponent, EADS Space Transportation GmbH did no longer exist by the time the notice of appeal was filed, and therefore no admissible appeal could have been filed in its name. [1.13] However, it is undisputed that EADS Space Transportation does presently have a universal legal successor, and in fact did have one at all times during the proceedings. [1.14] It is true that a person, whether natural or legal, which has ceased to exist, cannot perform legal acts, or put differently, cannot acquire rights or obligations. Nevertheless, what matters in the present case is the fact that 1558 | 3398
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the rights and obligations of the ceased person – here EADS Space Transportation GmbH – have been transferred to its universal legal successor as a matter of national law, without any interruption in the existence of the rights and obligations (see also T 425/05 [1.2]). These rights and obligations include all substantive and procedural rights before the EPO, no matter under what name they were established. The basis of the acquisition and the continued existence of these rights is the continuous factual existence of a person having legal capacity (“Rechtsfähigkeit”, “capacité juridique”) under the relevant national law, including the ability to legally succeed its legal predecessor. But the continuous existence and use of its original name is not required for maintaining the rights and serving the obligations, because the name is merely an identifier, an attribute of the person, but not a holder of rights. For the same reason, it is immaterial that the universal legal successor continued to use the original name in the proceedings before the EPO. The fact that the legal succession has not been recorded with the Office does not preclude the continued actions of the legal successor under the previous name, as long as a legal successor exists and remains identifiable. This means that in the present case, from a legal point of view the appeal has been filed on behalf of the universal legal successor of the original opponent existing at the relevant time, namely Astrium GmbH, even though the notice of appeal and the grounds of appeal were formally filed in the name of the original opponent EADS Space Transportation GmbH. This is why Astrium GmbH could later be recorded as the opponent and appellant, simply confirming towards the proprietor and third parties that it had been the original appellant all through the appeal proceedings. As such, it is not the same as a transfer of the opposition, which requires notification of and consent by the EPO. [1.15] The legal conclusion argued by the respondent, namely that no legally valid actions can be taken in the name of the ceased person, would lead to untenable results. For example, the Office would not be able to take any action in the proceedings, because it would not be possible to notify communications or decisions, hence they would not be legally effective (see also T 425/05 [1.3]). Further, instead of relying on the subsequent filing of extracts from company registers in order to prove the changes in person, parties would need to declare immediately any changes in their person, in order to prevent any loss of rights. It would be most unrealistic to expect that any legal succession between natural or legal persons should be timed depending on actions which are to be expected from or need to be performed before the EPO. Now given the fact that the legal successor of a party may not even be immediately known – a situation not uncommon in case of inheritance between natural persons -, such an immediate declaration towards the office may simply prove to be impossible. It is also conceivable that a representative making legal statements to the Office on the basis of previous instructions from a party may not even be aware of a possible death or other form of cessation of his client, thus not even knowing that his actions are potentially invalid. This illustrates well why the arguments of the respondent cannot be followed. [1.16] Otherwise, the notice of the appeal and the grounds of appeal were timely filed and the appeal fees were paid. The grounds of appeal were sufficiently reasoned. [1.17] In conclusion, the board holds that the opposition and the appeal is admissible. The Board then went on to assess inventive step and concluded that the subject-matter of claim 1 lacked inventive step. It then considered the opponent’s request for reimbursement of the appeal fee: [3.1] Besides stating that the OD has decided to reject the opposition, the cover sheet of the notification of the written decision, form 2330, includes an “additional decision” that “the opposition is ... rejected as inadmissible”. This additional decision is not included in the decision duly announced at the OPs as indicated on form 2309.2 of the minutes. Moreover, it conflicts directly with the OD’s finding recorded at point 9 of the minutes, and the reasons given under the corresponding heading on pages 2 and 3 of the grounds of the decision. These record that admissibility was considered, but that the division found in favour of admissibility of the opposition. [3.2] The Board concludes on the face of these facts that the “additional decision” indicated on form 2330 is an obvious mistake, as it clearly does not reflect the OD’s intention as evident from the reasons and the minutes and the decision’s announcement at the OPs. The Board holds that such an obvious mistake does not constitute a substantial procedural violation which might have justified a reimbursement of the appeal fee under R 103(1)(a). The mistake may have caused initial surprise to the [opponent]. However, the Board is unable to see how, once it became clear to the [opponent] that it was a mistake and what the division’s true intent had been, this might have deprived the [opponent] of his rights or affected due process. As the Board finds no substantial procedural violation it concludes that a reimbursement of the appeal fee is not justified. [3.3] The proper remedy for obvious mistakes in decisions is provided by R 140. However, as the decision under appeal is to be put aside, the question whether or not to correct the decision is moot.
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Should you wish to download the whole decision, click here. The file wrapper can be found here.
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T 1695/07 – More Bloody Stuff
K’s Law – The ebook
T 1695/07 – More Bloody Stuff 8 Feb 2012
Both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the patent under consideration in amended form. Claim 1 of the main request before the Board read: 1. A process for measuring the rate of blood flow in a shunt (12) in which blood is flowing, comprising: continuously removing blood from a downstream location in the shunt (12) by way of an inlet (28) to an inlet side (26) of a circulating line; delivering the removed blood flowing in said circulating line by way of an outlet (34) connected to an outlet side (32) of said circulating line to an upstream location of said shunt (12), so as to cause it to travel downstream in the shunt (12) towards the inlet (28) as an admixture with the blood flow; changing a selected physical property of the blood in said circulating line to produce a distinguishable blood characteristic at the outlet side (32) of said circulating line; measuring the amount of change of said distinguishable blood characteristic; and determining the rate of blood flow in said shunt (12) from the amount of change of said distinguishable blood characteristic by reference to a dilution curve of said amount of change.
Obviously, the question arose whether this was a surgical method and, as such, excluded from patentability: [5] Claim 1 is directed to a process for measuring the rate of blood flow in a shunt in which blood is flowing. It comprises the steps of “continuously removing blood from a downstream location in the shunt (12) ...” and “delivering the removed blood flowing in said circulating line by way of an outlet (34) connected to an outlet side (32) of said circulating line to an upstream location of said shunt (12), ...”. 1561 | 3398
T 1695/07 – More Bloody Stuff
K’s Law – The ebook
[5.1] According to the very first paragraph of the patent in suit, the process of Claim 1 is for measuring arteriovenous shunt blood flow during haemodialysis. Still according to the patent in suit (Paragraph [0002]), haemodialysis is a process by which an artificial kidney replaces the function of a patient’s kidney. The majority of patients have an arterio-venous shunt implanted in a location having a high blood flow, to simplify the withdrawal of blood from a location close to the arterial side of the shunt and the return of the purified blood downstream of the withdrawal site, i.e. closer to the venous side of the shunt. The implanted shunt can be a native or artificial vessel that has been established surgically between a patient’s artery and vein. [5.2] Since Claim 1 as granted is thus directed to a process that is carried out in vivo on a human or animal body, from which blood is removed and reintroduced, it has to be decided whether the claimed process is a method for treatment of the human or animal body by surgery falling under the exception clause of A 53(c). [5.3] In this regard, the criteria developed in decision G 1/07 of the Enlarged Board of Appeal (EBA) have to be taken into consideration. The criteria developed in G 1/07 [6] Before dealing with the criteria of G 1/07 in detail, it is necessary to deal with the proprietor appellants’ assertion that exclusions from patentability should be construed narrowly. [6.1] According to G 1/07 [3.1], a provision containing exclusions or exceptions from patentability is to be interpreted in such a manner that it takes its effect fully and achieves the purpose for which it was designed. [6.2] As further explained in G 1/07 [3.4.2.1-3], the broad construction of the term “treatment by surgery” as previously developed in T 182/90 and T 35/99 was no longer justified. Also, the definition given in opinion G 1/04 [6.2.1] that “any physical intervention on the human or animal body ...” is a method of surgery within the meaning of A 52(4) EPC 1973 appeared too broad. [6.3] A “narrower understanding” of what constitutes by its nature a “treatment by surgery” within the meaning of A 53(c) was hence required. It was generally stated (Reasons [3.4.2.2]) that “such a narrower understanding rules out from the scope of the application of the exclusion clause uncritical methods involving only a minor intervention and no substantial health risks, when carried out with the required care and skill, while still adequately protecting the medical profession” [emphasis added]. In particular it was found that it “appeared hardly still justified to exclude from patentability certain, albeit invasive techniques, at least when performed on uncritical parts of the body”, which were carried out in a non-medical, commercial environment like in cosmetic salons and in beauty parlours” [emphasis added]. This was said to apply “as a rule to treatments such as tattooing, piercing, hair removal by optical radiation, micro abrasion of the skin”. On the other hand, it was required that the “definition of the term “treatment by surgery” must cover the kind of interventions which represent the core of the medical profession’s activities, i.e. the kind of interventions for which their members are specifically trained and for which they assume a particular responsibility”. These physical interventions on the body were defined as those which “require professional medical skills to be carried out and which involve health risks even when carried out with the required medical professional care and expertise” [emphasis added]. [6.4] Therefore, G 1/07 [3.4.2.4] indicates a new direction in which further practice and jurisprudence should develop, namely that the exclusion from patentability should apply only to methods in respect of which it is justified on grounds of public health, the protection of patients and the freedom of the medical profession to apply the treatment of choice to its patients. [6.5] In the present case it now has to be decided whether the process of Claim 1 as granted belongs to the kind of methods which should not be covered by the exception clause according to this “narrower understanding” of the EBA and according to the criteria developed in G 1/07. According to G 1/07 [3.4.2.6], this assessment has to be done on a case-by-case basis, with each category of cases being assessed on its own merits. [7] The main criteria developed in G 1/07 concern the criticality of the parts of the body affected by the method, the degree of intervention, the environment in which the method is carried out, the required medical expertise, if any, and the health risks incurred (as highlighted in Point [6.3], supra). These points will be considered in the following sections. Criticality of the parts of the body affected by the method
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K’s Law – The ebook
[8] The claimed process involves the continuous removal of blood from a shunt, its subsequent flowing through a circulating line of an extracorporeal circuit and the re-delivery of the blood to the shunt, where it forms an admixture with the blood flowing in the shunt. [8.1] In a medical sense, blood is a (flowing) organ of the human body, performing numerous functions which are essential to the health of the patient (T 1075/06 [2.1.1.2]). Accordingly, it can hardly be regarded as an “uncritical part of the body”. [8.2] As regards the arterio-venous shunt, it can be created by joining an artery and a vein together through anastomosis, to bypass the capillaries, whereby a high blood flow is created in the shunt. Alternatively, an artificial vessel can be used to join artery and vein. The shunt is usually created in the lower arm but may also be situated on the hand. In any case, at least when the shunt is created by anastomosis to ensure the required access to the blood, in order to carry out haemodialysis, the shunt too cannot be regarded as an “uncritical part of the body”. [8.3] Therefore, the claimed process is practised on body parts (blood and shunt) that are not uncritical for the health of the patient, whereby at least one of them (blood) is manipulated during the process. As mentioned in G 1/07 [3.4.2.5], “manipulating a body part is traditionally considered surgical”. The Board considers that this traditional approach still applies to “in vivo” blood manipulation, blood not being an uncritical organ of the body. [8.4] Hence, the claimed method surgically affects a not uncritical part of the body. Degree of intervention on the human or animal body [9] The specification of the patent in suit neither discloses a specific amount of the blood flow rate in the circulation line, nor the duration of the process. According to D19 […], a typical flow value is 300 ml/min. Taking into account a duration of about 10 min, acknowledged as typical by the proprietor appellants […], the total quantity of blood flowing through the circulation line of the extracorporeal circuit during the measurement would be about 3 litres, i.e. more than one half of the average total blood volume of an adult patient. Even if the duration of the measurement were to be shorter, a substantial volume of blood is nevertheless being circulated during the measurement. [9.1] Since the process of Claim 1 as granted involves a continuous manipulation of a large part of the flowing organ blood in an extracorporeal circuit connected to the patient, it is far from being a “minor intervention”. The claimed process therefore involves a significant degree of intervention on the body. The environment (medical, non-medical, commercial) in which the method is carried out [10] That the process of Claim 1 as granted is performed “during haemodialysis” is not only disclosed in […] the patent in suit but also indicated in D19 […]. As a rule, haemodialysis is carried out in a medical environment, i.e. hospital, clinic or dialysis centre. The fact that, in some countries, nowadays, haemodialysis may also be carried out at home represents the exception rather than the rule, an exception which is only available under very specific conditions for certain kinds of patients, who nevertheless require detailed instructions and temporary assistance of medically trained personnel. [10.1] Although, as ruled in opinion G 1/04 [6.3], the fact that the method steps can also be practised by the patient himself or herself is not a decisive criterion with respect to the applicability of the exception clause, the conditions under which the claimed method is carried out are nevertheless not comparable to a “commercial environment like cosmetic salons and in beauty parlours”, where certain kinds of treatment may not be excepted from patentability. [10.2] In the Board’s view, the process of Claim 1 as granted is performed in an essentially clinical environment, i.e. in a medical environment. Required professional medical expertise [11] Claim 1 itself does not address haemodialysis, but as indicated above its process is carried out during haemodialysis.
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T 1695/07 – More Bloody Stuff
K’s Law – The ebook
[11.1] Haemodialysis is usually prescribed and supervised by nephrologists, as a consequence of a serious kidney dysfunction, i.e. of the inability of the kidneys to ensure the cleaning of the blood and the water balance in the body, resulting in accumulation of water and dangerous substances in the body, eventually leading to dysfunctions in almost all of the organs of the body. The treatment is initiated and managed by specialised medical staff specifically trained in extracorporeal blood treatment techniques, according to the detailed instructions of the physician and under his or her control and responsibility. [11.2] In order to perform the claimed measurement process, the dialysis treatment has to be interrupted, the direction of flow in the shunt is to be reversed and the rate should be set at a specific value (e.g. 250 to 300 ml/min, see D19 […]). In the Board’s view, these steps in particular require a dedicated decision of the responsible physician. This becomes also evident from the fact that D19 […] restricts the use of the claimed measurement process to “patients under stable cardiovascular condition” and specifically excludes “unattended monitoring of conditions which could result in imminent danger to the patient”. [11.3] Therefore, the claimed in vivo process requires “professional medical expertise”. [11.4] Referring to G 1/07 and T 663/02, the patent proprietor appellants argued that “professional medical expertise can only be considered to be the expertise of a doctor or ‘physician’”, which was to be distinguished from the care and skill of a “duly trained and qualified nurse or paramedical professional” to whom a physician may delegate minor routine interventions not implying a substantial health risk for the patient. Since the claimed method was routinely carried out by a nurse or dialysis technician, i.e. paramedical personnel, it represented a delegated act which could not be considered as belonging to the “core of medical activities” and should thus not fall under the exception clause. [11.5] The Board cannot follow this approach for the following reasons. It is true that G 1/07 [3.4.2.3] states that “any definition of the term treatment by surgery must cover the kind of interventions which represent the core of the medical profession’s activities”. This positively formulated requirement, however, does not imply that interventions which do not represent the core of the medical profession’s activities do not generally fall under the exception. [11.6] Moreover, G 1/07 uses the definition of “the core of the medical profession’s activities, i.e. the kind of interventions for which its members are specifically trained and for which they assume a particular responsibility”. The term “medical profession” cannot be regarded as being restricted to medical doctors and physicians, i.e. academically trained personnel. It appears that the broad term “medical profession” was chosen to cover all health care providers who professionally practise medical acts, thus also physicians under training, nurses and other paramedical professionals, who are undoubtedly “specifically trained” and assume “a particular responsibility” for the interventions they perform. Any other interpretation would run against the purpose of the exception provision which is, as set out by the EBA, to free the medical profession from constraints which would be imposed on them by patents granted on methods for surgical treatments, because also paramedical staff act in the interest of public health and patients. [11.7] This understanding is consistent with the choice of the similarly broad term “medical or veterinary practitioner” used in Opinion G 1/04 with respect to diagnostic methods, which was explicitly distinguished from the more specific term “physician” (Reasons, point [2]). In point [6.3] of the Reasons of this Opinion, it is clearly stated that “whether or not a method is a diagnostic method within the meaning of Article 52(4) EPC [1973] should neither depend on the participation of a medical or veterinary practitioner, by being present or by bearing the responsibility, nor on the fact that all method steps can also, or only, be practised by medicinal or non-medicinal support staff, the patient himself or herself or an automated system”. [11.8] Accordingly, no distinction is to be made between a delegating physician and paramedical (or even nonmedical) support staff with respect to the performance of diagnostic methods, and it cannot be derived from G 1/07 that such a distinction should apply for surgical methods. On the contrary, the approach taken in G 1/04 is explicitly confirmed by G 1/07 [3.4.1] as follows: “Whether or not a method is excluded from patentability under A 53(c) cannot depend on the person carrying it out. The findings of the EBA in point [6.3] of the Reasons of G 1/04 relate to diagnostic methods, but they quite generally deal with the exclusion from patentability under A 52(4) EPC 1973 and are thus equally valid with respect to the other exception conditions contained in A 53(c)”. [11.9] Therefore, the present Board does not follow the approach (“paramedical profession”) suggested in T 663/02 [3.2.4]. 1564 | 3398
T 1695/07 – More Bloody Stuff
K’s Law – The ebook
Health risks [12] In the extracorporeal circuit, the blood is subjected to conditions of a non-natural environment quite different from the vasculature within the patient’s body. In order to avoid deleterious effects on the blood in the extracorporeal circuit and resulting negative side effects on the patient upon its re-delivery, a number of measures and precautions must be taken. In particular, sterility must be maintained in order to avoid infections, and the temperature and the blood flow rate be properly controlled. Bubble traps are usually installed within the circuit in order to exclude the presence of air in the re-delivered blood which could lead to embolisms. Moreover, leakages resulting in blood losses have to be avoided. Blood clotting due to shear stresses and contact with artificial surfaces represents a serious risk since it may lead to thrombosis. This usually requires the addition of an anticoagulant, i.e. a medicament. Further problems and health risks might arise from the fact that the shunt, where flow is to be measured, can already be partially stenosed and that the inverted flow of blood therein causes blood clots to be dislodged into the patient’s circulatory system. All these conditions must be continuously monitored and carefully controlled, and in cases of deviations and problems, immediate action must be taken to prevent danger for the patient (who is normally already in an impaired health state due to chronic renal failure, thus particularly sensitive to treatment). This requires the attendance of specially qualified and medically trained personnel, and, as a rule, the presence of a physician who at least supervises the procedure. Moreover, the necessary emergency equipment and personnel must be available. Most of the above-mentioned aspects also become directly evident from page 3 of D19. It is therefore clear that the patient is subjected to a number of health risks, even when the process is carried out with the required medical professional care and expertise. Some of these risks are certainly “substantial”, even though the likelihood of their occurrence may be rare. [12.1] The proprietor’s argument that they were not aware of any complications or health risks, these only being hypothetical and not based on any evidence or reports, is not convincing. [12.2] In the Board’s view, the wording “entails” or “involves a substantial health risk” used in G 1/07 cannot be understood as requiring a factual risk analysis based on objective evidence for the following reasons. [12.2.1] Firstly, any risk is “hypothetical” by its very nature. In principle, it may be possible to quantify the likelihood of occurrence of a certain risk in absolute terms, taking into account statistical data. However, in many situations, significant and reliable data are not available. This applies in particular to the evaluation of health risks for patients undergoing a medical treatment. Since the treatment is generally adapted to the individual patient, comparable and thus reliable data are difficult to obtain. For new kinds of treatment, such as are frequently the subject of patent applications, e.g. the reversal of blood flow in a shunt in the present case, such data as a rule do not yet exist at all. [12.2.2] Moreover, what would seem relevant is not a risk analysis on an absolute scale, but a relative evaluation of the health risks for the patient. This implies a consideration of the physical state of the individual patient and a judgement of the health risks in relation to the potential benefit to be achieved by the intervention. This judgement or balance itself would require “professional medical expertise” and belongs to the “core of the medical profession’s activities”. [12.2.3] For the above reasons, the Board is of the opinion that an objective and concrete analysis of the absolute or relative risks, which is hardly feasible, cannot have been intended by the EBA and should therefore not be required. Accordingly, the present Board has not followed the approach (“risk matrix”) suggested in T 663/02 [3.2.5]. [12.2.4] The assessment of the “risk-criterion” is therefore limited to a more abstract basis, i.e. to the questions “Is a certain health risk present?” and “Is it substantial?”. A health risk is considered to qualify as “substantial” whenever it goes beyond the side effects associated with the treatments mentioned in G 1/07 (piercing, tattooing, etc.) which are generally limited to harmless infections of superficial tissues due to non-sterile working conditions. [12.2.5] In contrast thereto, the above-mentioned health risks of the claimed method, which are objectively present, are undoubtedly “substantial”. Conclusion
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T 1695/07 – More Bloody Stuff
K’s Law – The ebook
[13] It follows from the above that the claimed process does not fall under the “narrower understanding”, i.e. does not belong to the kind of methods which should not be covered by the exception clause according to the criteria developed in G 1/07. [13.1] Claim 1 comprises the steps of “continuously removing blood from a downstream location in the shunt (12) ...” and “delivering the removed blood flowing in said circulating line by way of an outlet (34) connected to an outlet side (32) of said circulating line to an upstream location of said shunt (12), ...”. [13.2] It has been established that these steps are invasive and represent a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise (G 1/07 [headnote 1, 3.4.2.7, last §]). [13.3] According to the established jurisprudence of the Boards of Appeal, a multi-step method falls under the exception clause of A 53(c), if it includes at least one feature that constitutes a method step for the treatment of the human body by surgery (G 1/04 [6.2.1]; G 1/07 [3.2.5]). [13.4] The possible technical contribution of the invention as mentioned by the proprietor appellants is not a criterion to be taken into consideration in this context. [13.5] The present case is quite different from that underlying T 329/94, referred to by the proprietor appellants, which related to a blood extraction assistance method for facilitating sustained venous blood flow through a human limb towards a venous blood extraction point. In that case the blood extraction itself did not form part of the claimed subject-matter. If that had been the case, it was stated that withdrawal of blood would have fallen under the exclusion clause of A 52(4) EPC 1973 three times, namely as treatment by therapy and surgery and as a diagnostic method (point [4] of the Reasons). With respect to the last two aspects it must be noted, however, that decision G 1/07 and opinion G 1/04 have subsequently been issued by the EBA and the criteria developed therein must now be taken into consideration. [13.6] Therefore, Claims 1 to 8 of the Main Request are directed to a method for treatment of the human body by surgery which is excepted from patentability under A 53(c). Should you wish to download the whole decision, just click here. The file wrapper can be found here. More post-G 1/07 decisions can be found here, here and here.
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T 2020/07 – Cutting Out Trade Marks
K’s Law – The ebook
T 2020/07 – Cutting Out Trade Marks 7 Feb 2012
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Having found the main request as well as the first and second auxiliary request to lack novelty, the Board examined the third auxiliary request in which the patent proprietor tried to overcome the novelty objection by means of a noteworthy disclaimer. Claim 1 of this request read (in English translation) : 1. Process for the preparation of polyisobutenylphenol-containing Mannich adducts by (a) alkylation of a phenol with polyisobutene having more than 70 mol% of vinylidene double bonds and a number average molecular weight of from 300 to 3000 at below about 50°C in the presence of an alkylation catalyst; (b) reaction of the reaction product from a) with formaldehyde, an oligomer or a polymer of formaldehyde and at least one amine HNR4R5, wherein the radicals R4 and R5 are methyl, ethyl, n-propyl, isopropyl, n-butyl, isobutyl, sec-butyl, tert-butyl, n-pentyl or n-hexyl, with the exception of a process wherein step (a) is carried out as follows: Phenol (203.2 g, 2.16 mol) is melted at 40°C and added to boron trifluoride etherate (73.5 ml, 0.60 mol) in a 5 litre round bottomed flask. Ultravis 10 (1040 g, 1.09 mol), is dissolved in hexane (1863 ml) and the solution is added to the flask containing the phenol via a pressure equalizing dropping funnel, at a rate sufficient to maintain the temperature of the reaction mixture at 22-27°C over a period of three hours. The solution is stirred for an additional 16 hours at room temperature before ammonia (400 ml of 30% w/w aqueous, 2.88 mol) is added. Water (1000 ml) is added and the mixture is stirred. The solution is separated into an organic layer and an aqueous layer using a five litre separating funnel. The aqueous layer is extracted using hexane. Four extraction steps are used, with 500 ml of hexane being used in each extraction step. The organic layers from the four extraction steps are combined and dried over MgSO4 overnight, then filtered through a 12 mm Celite pad. The solvent is removed from the filtrate at 80°C/23"Hg on a rotary evaporator; and the amine is dimethylamine, N-methyl-ethylamine, or dibutylamine. (Board’s emphasis) *** Translation of the German original *** [5] […] Claim 1 of the third auxiliary request also contains a disclaimer which is a complete translation of part A of the example of D1, with the exception of the last sentence (which is a statement on the para to ortho ratio of the PIB phenol mentioned there). According to the [patent proprietor] its only purpose is to exclude the novelty destroying disclosure of D1. […] [5.1] As the third auxiliary request was filed only during the oral proceedings (OPs), [the Board] first has to examine whether it complies with the criteria for admissibility under the EPC (A 123(2)) and Articles 12 and 13 RPBA. [5.1.1] According to the RPBA, the statement of grounds of appeal and the reply shall contain a party’s complete case, including all documents related to it. The appeal proceedings are based on these submissions of the parties (Articles 12(1)(2) RPBA). According to Article 13(1) RPBA the admission of any later submissions of the parties are considered at the Board’s discretion. The Board shall take into account the complexity of the new submission, the current state of the proceedings and the need for procedural economy. [5.1.2] In the present proceedings, sets of claims containing a disclaimer with respect to D1 were first filed as auxiliary requests 6 to 11 on February 27, 2008, together with the statement of grounds of appeal. [5.1.3] In the light of this fact, the third auxiliary request, which was filed during the OPs, cannot be considered to be an amendment of the submissions of the [patent proprietor] that would increase the complexity of the case or go against the due procedural economy within the meaning of Article 13(1) RPBA. Rather, when filing its statement of grounds of appeal, the [patent proprietor] had already tried to formulate a request allowing to avoid a negative assessment and, as a consequence, the loss of the opposed patent due to a lack of distinction over D1. 1567 | 3398
T 2020/07 – Cutting Out Trade Marks
K’s Law – The ebook
In the subsequent appeal proceedings it had always maintained and, whenever and to the extent required, amended these auxiliary requests. Given this situation the Board has come to the decision to consider the third auxiliary request to be appropriate (sachdienlich) and to admit it into the proceedings. [5.1.4] According to decisions G 1/03 and G 2/03 of the Enlarged Board of appeal (EBA), a disclaimer the content of which was not disclosed in the original documents of the application that led to the opposed patent may be allowable in order to restore novelty by delimiting a claim against state of the art under A 54(3) or against an accidental anticipation under A 54(2), or in order to disclaim subject-matter which, under A 52 to A 57, is excluded from patentability for non-technical reasons (see headnote 2.1). A disclaimer should not remove more than is necessary to reach that goal. Otherwise, the claim into which the disclaimer has been inserted violates A 123(2) (see headnotes 2.2 and 2.3). According to headnote 4, a claim containing a disclaimer must meet the requirements of clarity and conciseness of A 84. [5.1.5] The definition of the process features in paragraphs (a) and (b) of claim 1 of the present third auxiliary request are identical with the definitions of features (a) and (b) in claim 1 of the second auxiliary request. As seen [above], process variant (b) [of claim 1] of the second auxiliary request does not comply with the requirement of novelty pursuant to A 54(1) and A 54(3) with respect to the prior but post-published document D1 […]. Therefore, in order to delimit the subject-matter of the third auxiliary request with respect to D1, a disclaimer was inserted into claim 1 of the second auxiliary request. Thus the disclaimer fulfils the first condition for admissibility of a disclaimer laid down in G 1/03 or G 2/03, respectively. [5.2] Claim 1 of the third auxiliary request can be separated into two parts: on the one hand, there is the part defining the claimed invention, and on the other hand, the disclaimer excluding a certain subdomain of the domain defined by the first part, and which reads : “, with the exception of a process wherein step (a) is carried out as follows: […] removed from the filtrate at 80°C/23"Hg on a rotary evaporator; and the amine is dimethylamine, N-methylethylamine, or dibutylamine.” This wording exactly reflects the structure of the wording describing the example of D1 and also excludes the secondary amines mentioned at the bottom of page 6, to the extent that they are encompassed by the first part of claim 1. [5.2.1] Considering the arguments filed in written form or made orally, the Board understands that the [patent proprietor] also tried to comply with the further requirement formulated by the EBA, requiring the disclaimer not to exclude more than necessary to restore novelty over D1. [5.2.2] The Board is of the opinion that any attempt to re-formulate the wording of part A of the example in D1 so that it formed one single sentence, or to even shorten it, would have destroyed the clear structure of the description of the trial in D1 and, therefore, would have led to a lack of clarity (A 84) or even to contradictions between the extent of the disclaimer and the disclosure of the example of D1, and, as a consequence, to a violation of A 123(2). [5.2.3] It is precisely in view of the need to avoid any discrepancy and, therefore, any factual difference between the wording of the disclaimer and the definition of the part of the prior document to be excluded – and thus to comply with the headnote of decisions G 1/03 or G 2/03 – that the Board considers the use of a sequence of individual sentences according to the original text (Vorlage) in part A of the example of D1 to be justified. [5.3] However, one essential starting material (the PIB) of the process of D1 to be excluded is only referred to by using its trade name “Ultravis” and a type designation “10”. Such a reference, however, has no clear technical meaning and it is doubtful whether and how a material referred to in this way can be unambiguously distinguished from another material (see T 480/98 [5.3]). [5.3.1] Such a trade mark (Handelsmarke) is not suitable for unambiguously identifying a material, also because it can be modified at any time over the course of time. However, in the present case, such a modification of the meaning [of the reference] would shift the domain excluded by the disclaimer, i.e. it would also modify the scope of the claim. [5.3.2] Decision T 762/90 [4.1.1] has expressed concerns against the definition of a material by a brand or trade mark (Warenzeichen) in the following way:
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K’s Law – The ebook
“… the Board has reservations against the use of such a designation in a claim because it is uncertain whether the meaning of this trade mark, even if known on the day of filing, will remain unchanged until the end of the life of the patent.” [5.3.3] The differences in the definition of “Ultravis 10” in several documents referred to in these proceedings provide evidence that these doubts are justified. According to D1 (claiming a priority of June 22, 1999 […]) this PIB is a “a polyisobutene having a number average molecular weight of about 950 and a methylvinylidene content of about 82%”. According to […] D4 (filed on December 28, 1992) the MN value of “Ultravis 10” is within the same domain, but its methylvinylidene content is of “about 76%”. Example 1 of D8 (claiming a priority of September 5, 1996) refers to it as a “highly reactive' poly isobutene (PiB) (Mw = 1000)”. [5.3.4] However, in the present case the disclaimer has to exclude the embodiment of the process disclosed in D1, the definition of which is only very general. [5.3.5] As this cannot be done in an unambiguous way by using the trade name “Ultravis 10” in claim 1 of the third auxiliary request, as shown above, this auxiliary request has to be dismissed on the ground of lack of clarity pursuant to A 84. This is the second time I see a lack of clarity imported from a prior art document via a disclaimer; another example of a disclaimer-transmitted disease can be found here. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1621/09 – The Case
K’s Law – The ebook
T 1621/09 – The Case 6 Feb 2012
The opponent filed an appeal against the decision of the Opposition Division (OD) maintaining the patent in amended form. Claim 1 as upheld by the OD read: “1. A method of casting an article from metal foam comprising steps in the sequence as follows: a) providing a bath (32) containing said molten metal; b) providing a die (36) having a die cavity (38) in fluid communication with said bath through a tube (39), the die (36) being located above said bath (32); c) establishing a pressure within said bath (32) by passing a pressurizing gas into the bath (32) through a port (40), said pressurization causing the molten metal to be forced up the tube (39) and into the die cavity (38), and said pressurization being continued until the die cavity is filled with the molten metal; d) after the die cavity is filled in this manner, bubbling a gas through said molten metal to form a foam of said molten metal, e) causing said foam to enter and fill said die cavity (38); f) after allowing the foam to cool and solidify within the die cavity (38), releasing the pressure in said bath (32); g) removing said foamed article (46) from said die cavity (38).” The oral proceedings (OPs) before the Board of appeal (BoA) were held in the absence of the patent proprietor. In the grounds of appeal the [opponent] contested novelty and inventive step on the basis of document D2 consisting of 15 slides forming the basis of a presentation entitled “Development of a new processing technique based on the melt route to produce near net shape foam parts”, given by Mr H. Flankl at the conference MetFoam 2001. Slide seven of the presentation depicts a process for low pressure casting of metal foam, in which gas bubbles rise through a melt to form a foam that collects in a mould cavity. According to the opponent, the skilled person would readily see that the process shown in slide seven is carried out by either producing foamed molten metal which is then pressed into the mould, or by filling the mould with molten metal which is then foamed; both of these approaches were thus disclosed in D2. At the OPs, the [opponent] for the first time referred to slides six and thirteen of D2, which show components made from foamed metal. The BoA considered the question of whether submissions based on these slides were admissible. The decision is a bit lengthy, so if you only want to know the conclusion, here are the headnotes: (a) A new argument brought forward in appeal proceedings by a party which would have the effect of amending its case, even if the argument is based on evidence and facts already in the proceedings, can only be introduced into the proceedings at the discretion of the BoA by way of an amendment under Article 13 RPBA (see point [37(a)] below). (b) To the extent that the decision of the EBA in G 4/92 deals with the general admissibility of new arguments in appeal proceedings, it must be taken to have been modified in accordance with (a) above by the amendments to the RPBA introduced with effect from 1 May 2003 (see point [37(b)] below). (c) Article 13(2) RPBA must be read subject to Article 15(3) RPBA, with the result that the absence of a duly summoned party does not prevent a BoA from allowing an amendment to another party’s case and reaching a decision on the basis of the amended case. The absence of the party is nevertheless a factor to be taken into account in the exercise of the discretion (see points [43-44] below). For those who enjoy detailed reasonings, here we go:
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[2] It is first necessary to consider whether the new submission or argument of the [opponent], […] should be taken into consideration. As to this, it may be helpful to set out the issues which the BoA has considered in this respect, together with its conclusions. These are as follows: [2.1] Does the [opponent’s] new argument amount to an amended case within the meaning of the RPBA, with the result that it is only admissible at the BoA’s discretion under Article 13(1) RPBA? Answer: prima facie, yes (points [4-14] below). [2.2] Given, however, that this new argument is based upon facts and evidence already in the appeal proceedings, is this prima facie conclusion affected by the well-established proposition that new arguments, as opposed to new facts or evidence, can be introduced at any stage of proceedings? Answer: no, because: (a) This proposition admittedly holds good for proceedings before the departments of first instance (points [1722] below). (b) Until 1 May 2003 it also held good for appeal proceedings (point [24] below). (c) In respect of appeals filed after this date, however, the position has been changed by the amendments to the RPBA which then came into force. In respect of such appeals, new arguments which have the effect of amending a party’s case are admissible only at the BoA’s discretion (points [25-35] below). (d) Statements in decisions of the BoA in respect of appeals filed since 1 May 2003, which appear to be contrary to this conclusion were either obiter dicta and/or were taken without reference to the RPBA (points [36-37] below). [2.3] Where a new argument which constitutes an amendment to a party’s case is put forward for the first time at OPs, how is the exercise of the BoA’s general discretion to admit the amendment affected if the party prejudiced is not present at the OPs, even though duly summoned? Answer (points [39-44] below): (a) The apparent conflict between Article 15(3) and Articles 13(2) and (3) RPBA is to be resolved in favour of permitting the exercise of such discretion. (c) Nevertheless, the absence of the prejudiced party is a factor to be taken into account when exercising the discretion. [3] These issues are discussed in the following paragraphs. Does the [opponent’s] new argument amount to a new or amended case within the meaning of the RPBA? [4] Appeal proceedings are a judicial procedure (see e.g., Case Law Book, 6th Edition, page 821 VII.E.1), which is governed by the RPBA. These rules are enacted pursuant to the EPC (see A 23(4) and R 12(3)) and are binding on the BoA (Article 23 RPBA). [5] The basic principle relating to the conduct of appeal proceedings is to be found in Article 12(1) RPBA, which states that: “(1) Appeal proceedings shall be based on (a) the notice of appeal and statement of grounds of appeal, (b) any written reply of any other party and (c) any communication sent by the BoA and any answer thereto filed pursuant to directions of the BoA.” [6] Article 12(2) RPBA specifies that, in the case of an [opponent], the statement of grounds of appeal must contain the party’s complete case. It should set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed (or amended) and should specify expressly all the facts, arguments and evidence relied on. All documents referred to shall be identified in the prescribed way. If the [opponent] subsequently wishes to put its case in another way, this requires the case to be amended. This is clear from Article 13(1) RPBA, which provides inter alia that any amendment to an [opponent’s] case after it has filed its grounds of appeal may be admitted and considered at the BoA’s discretion [7] It is therefore important to consider what is meant by a party’s “case”. The equivalent expression appears in at least two different forms in the German version of the RPBA. In Article 12(2) the equivalent expression is “Sachvortrag” but in Article 13(1) the expression used is “Vorbringen”. In the French version the expression used in both articles is “moyens invoqués” (although in Article 13 this appears only in the title). Since the
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relevant parts of travaux préparatoires for these articles are in English, the BoA has taken the English language version as its starting point. [8] A party’s “case” may not be a very precise judicial concept but it is generally well understood: in the case of an [opponent], it describes the totality of the reasons why it says that a decision should be set aside (or amended) and why any other requests it makes should be granted. It clearly includes, in the words of Article 12(2) RPBA, the “facts, arguments and evidence relied on” by a party to justify the setting aside of the decision under appeal. This is consistent with R 99(2), which requires the statement of the grounds of appeal to indicate the reasons for setting aside the decision impugned (or the extent to which it is to be amended), and the facts and evidence on which it is based. [9] Since the arguments relied on thus constitute part of a party’s case, it appears to the BoA that new arguments, even when based on facts and evidence already in the proceedings, can have the effect of altering a party’s case: the facts and evidence relied on can be assembled in different ways using different arguments. On the other hand, there will clearly be many situations where a new argument does not change a party’s case. For example, it may be just be a different way of looking at the same point. So, in the present appeal it might be said that the [opponent’s] case on novelty is that D2 is novelty destroying. The BoA considers, however, that this is too simplistic a view. In reality, the two ways of presenting the novelty attack […] are different in substance, and, in the BoA’s view, are different cases. Such a conclusion is very case-specific (i.e., it depends very much on the specific circumstances of the appeal) but the BoA reaches it taking into account in particular the fact that the two attacks are inconsistent, and the second attack is a departure from and not just a development of the first. [10] This can be seen from a close examination of the course of the proceedings. The OD held that slide seven of D2 was not novelty destroying as regards the present request since inter alia there was no clear disclosure whether the foaming step took place with the die cavity already full of molten metal, as required by claim 1, or whether the cavity was first empty and then filled with foamed metal. The other documents cited in this respect (D4 and D3) did not clarify the position. The [opponent] had argued that since there were only two possibilities, both known to the skilled person, the skilled person would inevitably consider this feature of claim 1 as being disclosed. In this respect, the [opponent] had in fact argued that it made no difference to the product where foaming took place […]. The inventive step argument also turned on whether the choice of an alternative method of foaming was obvious […]. [11] In the statement of grounds of appeal the [opponent] complained at length of the OD’s failure to hear Dr Barnhart in support of his statement (D4) regarding what the skilled person would have gathered from the presentation (D2). In D4 Dr Barnhart explained that to him, as an expert, it was irrelevant in which of the above two ways the foaming took place, both of which were known to him. He referred to Figure 2 of D3, which is in effect the same as slide seven of D2. The [opponent] also offered a further witness, Dr Kriszt, who in her statement (D9) effectively said the same thing as Dr Barnhart. The [opponent’s] case was thus that the relevant steps (steps (d) and (e)) were disclosed from the relevant slide of D2 (slide seven) coupled with the explanation by Dr Barnhart and Dr Kriszt (see page 5 of the statement of the grounds of appeal). The point was repeated at length in the context of the argument on lack of inventive step: even if there was no clear and unambiguous disclosure of this aspect of the method, it was not inventive to choose one of the disclosed methods [...]. [12] This case was addressed by the [patent proprietor] in its reply dated 22 February 2010 and at length in the BoA’s communication sent with the invitation to OPs (see pages 2 to 5). [13] As indicated above, during OPs before the BoA the [opponent] sought to advance a different (or at least alternative) case, now based on the disclosure of slides six and thirteen. It was now said that from the appearance of the articles shown in these slides it would have been clear to the skilled person that the method as disclosed in D2 involved filling the empty mould with molten metal and then foaming it. In the BoA’s view, although based on facts and evidence already in the proceedings, this was a new or alternative case based on those facts and evidence. Indeed, not only was it a new case, it was a case which was contrary to the [opponent’s] previous case. [14] Prima facie, therefore, this new or amended case could only be admitted at the board’s discretion. Submissions Based on Slides 6 and 13 of D2: a new argument only? [15] Nevertheless, there are many statements in the jurisprudence of the BoA which clearly state that new arguments can always be admitted or advanced by a party if such arguments are based on facts or evidence which are already part of the proceedings. It is therefore necessary to examine how this apparent conflict is to be resolved.
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[16] The BoA will first consider the jurisprudence of the BoA in this respect. [17] In T 92/92, the [opponent] argued that the OD had been wrong to accept a new line of argument based on documents already in the opposition proceedings. The BoA observed (point [2]) that the right to a fair hearing included the right to present facts, evidence and arguments relevant to the decision to be made. A 114(2) provided a basis for disregarding “facts or evidence” not submitted in due time and thus in effect placed a limit on the extent of this right. By contrast, there was no mention in the article of “arguments” (which the BoA understood as including the parties’ submissions as to the consequences that result from applying the law to the facts and evidence). There was therefore no basis in the article for disregarding arguments, whenever they were brought forward. [18] So far as concerns first instance OPs, this principle is given further procedural effect by R 116(1) (formerly R 71a EPC 1973), which provides that: “When issuing the summons, ... a final date for making written submissions in preparation for the OPs shall be fixed. ... New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed.” [19] In G 4/92, decided shortly after T 92/92, the EBA considered the question whether, if one party chooses not to attend OPs, a decision against that party can be based on new facts and evidence, and/or new arguments, put forward during those OPs. As to new facts and evidence, the EBA started from A 113(1), which recognises that a decision may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. The BoA referred to A 114(1) and (2) and the possibility of the OD or BoA examining late-filed facts or evidence, but concluded that the other party must be given the opportunity to comment on such material, and a decision may therefore not be based on facts or evidence put forward for the first time during OPs when the other party is absent. As to the admissibility of new arguments during OPs at which the other party is not present, the BoA said: “... the requirements of A 113(1) have been satisfied even if a party who has chosen not to appear consequently did not have the opportunity to comment on them during OPs, insofar as such new arguments do not change the grounds on which the decision is based. In principle, new arguments do not constitute new grounds or evidence, but are reasons based on the facts and evidence which have already been put forward.” (point [10]). As part of its Conclusions, the BoA said: “... new arguments may in principle be used to support the reasons for the decision.” (Conclusions, Point 2). [20] The main principle to be extracted from G 4/92 is therefore that a decision may not be taken at the end of OPs based on new facts or evidence presented for the first time during those OPs in the absence of the prejudiced party. The subsidiary point is that in principle such a decision can be based on new arguments presented at such OPs. [21] In the light of later statements about this decision, it is worth noting that the statement of the EBA about new arguments was not absolute. New arguments brought forward in the absence of the other party may “in principle” be used to support the reasons for the decision but new arguments which have the effect of changing the grounds on which the decision is based are not acceptable under this principle. The BoA thus apparently recognised the possibility of new arguments having the potential to change the grounds on which a decision was based, and therefore potentially infringing the absent party’s rights under A 113(1). In T 501/92 the BoA indeed recognised that a submission which amounted to a new legal reason why an appeal should be allowed, even though based upon the facts already in proceedings, was a new “ground” within the meaning of A 113(1), rather than merely a new argument. It would therefore have been contrary to A 113(1), and contrary to the principles underlying G 4/92, to act on the basis of the submission, without first giving the absent party an opportunity to present comments in reply (see point [1]). [22] As regards first instance proceedings, the combined effect of A 113(1) and A 114(2), as explained in G 4/92 and T 92/92, has been consistently applied by the BoA. (a) In T 861/93 the BoA held that the OD had been wrong to exclude citations from board of appeal decisions as late-filed documents under Article 114(2), since these were part of the party’s arguments. (b) In T 131/02, the OD had under R 71a(1) EPC 1973 refused to admit a new argument on lack of inventive step based on documents already in the proceedings. The BoA held that this was wrong. Only new facts and evidence
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could be excluded under R 71a(1) EPC 1973. Nor could such a step be justified under A 114(2), the BoA citing G 4/92. (c) In T 604/01 the opponent had during the opposition proceedings raised objections under A 123(2) and (3) but did not further explain the objections until OPs. The OD excluded the objection, relying on R 71a(1) EPC 1973. The BoA held that this was wrong: the relevant facts (the application, the granted claims and the amended claims) were all in the proceedings; the objections were then a matter of argument. [23] Before 2003 the same principles were applicable to appeal proceedings. A 114(2) applied to such proceedings, even though R 71a EPC 1973 did not: see G 6/95. The then current RPBA (see OJ EPO 1980, 171, as amended: OJ EPO 1983,7; OJ EPO 1989, 361; and OJ EPO 2000, 316) made no special provision relating to facts, evidence or arguments, the only relevant provision being Article 11(1) RPBA (since deleted), which stated that: “If OPs are to take place, the BoA concerned shall endeavour to ensure that the parties have provided all relevant information and documents, before the hearing.” The principles enunciated in G 4/92 also applied to appeal proceedings since they concerned the right to be heard under A 113(1). [24] The case law of the BoA also confirms this position as regards appeal proceedings: (a) In T 432/94 it was stated that although in accordance with A 108 an [opponent] had to state in its grounds of appeal the legal and factual reasons why the contested decision should be set aside, this did not mean that an [opponent] was bound to this line of argument for the whole appeal proceedings. Such a strict rule would prevent an [opponent] from reacting appropriately if it came to realise that its original arguments were not convincing. The general procedural provisions of the EPC, such as A 114(2) and R 57 EPC 1973, provided enough flexibility for preventing possible misuse by means of delaying relevant submissions. (b) In T 86/94 the BoA stated that whilst it was desirable that all relevant arguments be brought at the earliest possible stage of the proceedings, there was again no requirement in A 108 that the statement of grounds of appeal be exhaustive as to the arguments to be brought. The new argument in that case was not a new ground of appeal and it was the very purpose of appeal proceedings, and in particular of OPs, to provide an opportunity to a losing party to throw new light on relevant aspects of matters which had been decided to its detriment and/or to draw attention to facts in the reasoning of the first instance department that resulted in an adverse decision. This could in practice be best achieved by reliance on new arguments: a mere rehearsal of what went before would be ineffectual. The amendments to the RPBA and the travaux préparatoires [25] With effect from 1 May 2003, the RPBA were amended and inter alia the provisions of what are now Articles 12, 13 and 15 were introduced: OJ EPO 2003, 89. (In what follows references will be to the current numbering of the articles, although this numbering has changed over time.) This was part of a major revision of the RPBA, the first draft of which was prepared by the “Procedure Working Party” as part of a report to the chairmen and members of the BoA (“the PWP Report”). In paragraphs 1.2 to 1.4 of the PWP Report it was explained that the changes being made contained measures which were intended to increase the efficiency and shorten the length of appeal proceedings, these measures relating to the “core” of appeal proceedings, namely written and OPs and certain related matters such as late-filing and costs. The existing “philosophy” of the appeal procedure as developed by the boards and the EBA was to be maintained, in particular the established discretionary powers of the BoA, while introducing some elements of case-law into the RPBA and at the same time seeking to ensure that the RPBA contained a similar degree of detail and certainty as were found in the procedural rules of other courts. The measures were aimed at achieving the goal of more efficient and shorter appeal proceedings to include a more defined and controlled initial phase of proceedings, a more pragmatic exercise of discretion under A 114(2) thereafter, increased case management (as practised in many national courts), and the incorporation from the then current practice and case-law in the RPBA of certain principles of OPs and costs to give those principles a clear legal basis. [26] In relation to Articles 12 and Article 13(1), paragraph 2.1 of the PWP Report explained that they provided a cut-off point after which any further material submitted would be ipso facto late, codified the BoA’s existing power to ignore material unrelated to a case, and made extensions of time not only discretionary (as was already the case) but also exceptional. It concluded that the moment in time when a party’s case would be considered to be complete (so that the BoA was able to assess a case in its entirety and, subject to OPs, take a decision) would now be fixed objectively by the rules and no longer subject to the procedural strategy of the parties. 1574 | 3398
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[27] As to Article 13 itself, the PWP Report explained in paragraph 2.2 that it made the admissibility of any amendment to a party’s case as filed (“whether relating to facts, evidence, arguments or requests”) after the cutoff point defined by Articles 12(1) and 13(1) a matter for the BoA’s discretion, but gave the BoA a specific authority to refuse the amendment on the grounds of complexity of the new subject matter submitted, of the current state of proceedings and the need for procedural economy. In particular, amendments should not be admitted if they would lead to adjournments of OPs. [28] Paragraph 2.3 of the PWP Report explained that the intended overall effect of these amendments was to prevent “ping pong” submissions and “salami” tactics in written proceedings and to provide the BoA (and the rapporteur in particular) with an appeal file containing one comprehensive submission from each party. [29] Express consideration was not given in the PWP Report to the possible effect of the amendments to the RPBA on the jurisprudence of the BoA regarding new arguments as developed in G 4/92, T 92/92 and subsequent decisions […]. Although the PWP Report referred to G 4/92, this was not in the context of Articles 12 and 13 but in the different context of Article 15 RPBA […]. [30] The PWP Report was considered by the Presidium of the BoA on 16 September 2002 and the draft amended rules, with some additional amendments, were sent to the Committee on Patent Law with explanatory notes (CA/PL 11/02). [31] The Committee on Patent Law considered the amendments at its meeting held on 15 and 16 October 2002. In reply to a question from the German delegation about Article 13(1) (i.e., concerning amendment to a party’s case), the Office confirmed that the article “precluded new substantive submissions, but not a change in their legal appraisal. The wording chosen was designed to give the case law room to evolve.” (See Point 105 of the minutes, CA/PL PV 19). [32] The Presidium of the BoA adopted the amended rules, with certain further small changes, at its meeting on 28 October 2002, and the rules were sent to the Administrative Council with a consultative document (CA/133/02, original language English, hereafter the “Consultative Document”) which largely repeated the wording of the PWP Report. One potentially significant difference is that whereas the PWP Report had referred in the context of Article 13(1) to amendment to a party’s case as filed, “whether relating to facts, evidence, arguments or requests” […] the Consultative Document referred only to an amendment to a party’s case “whether relating to facts, evidence or requests”. [33] In summary, the travaux préparatoires do not address expressly the question whether the general principle that new arguments are allowable at any stage of proceedings should continue to apply in appeal proceedings. Nevertheless it can be said that overall the changes were aimed at increasing the efficiency and shortening the length of appeal proceedings, inter alia by providing that the appeal file should contain one comprehensive submission from each party. The exchange of the grounds of appeal and reply would thus effect a more defined and controlled initial phase of proceedings, providing a moment in time fixed by the rules when a party’s case would be complete and could be assessed in its entirety, and such that any further material submitted would be ipso facto late. Again, the travaux préparatoires do not make explicit what was meant by a party’s “case” or when amendment to it might be required, except that (apparently - […]) the requirement for amendment was intended to make new substantive submissions admissible only by way of amendment, although the wording chosen was designed to give the case law room to evolve. As already seen […], Article 12(2) implies that the concept of a party’s “case” refers to all the facts, arguments and evidence relied on to justify its requests. Against this, the change in the wording between the PWP Report and Consultative Document noted […] above indicates perhaps that new arguments alone were not considered to be the subject matter of amendment, although the extended wording (“whether relating to facts, evidence or requests”) is in fact not limiting and was not repeated in the accompanying draft text and is not found in the present rule. [34] It appears to the BoA that the choice of the word “case” as opposed, for example, “facts, evidence and requests” must have been intended to have some effect. One of the ways of making appeal proceedings more efficient was to require the parties to state their position (their case) from the outset, not least so that the other party or parties and the BoA could know what it was and react accordingly. So far as the travaux préparatoires are concerned, it does not appear to have been the intention to permit a party, having grounded its appeal on arguments based on specific evidence and facts, then to be able to alter its case with new arguments as it went along, or at least not without taking the formal step of gaining permission to amend its case. [35] These considerations are therefore consistent with the above preliminary conclusion reached by the BoA [...]. 1575 | 3398
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Subsequent case law [36] So far as the BoA is aware, the possible effect of this alteration of the RPBA has not been considered in detail in any decisions of the BoA. [36.1] In T 704/06, the applicant raised a new inventive step argument during the OPs, described by the BoA as “an entirely new approach”, which the BoA nevertheless admitted into the proceedings, saying: “3. In accordance with the case law, A 114(2) does not provide a legal basis for disregarding late-filed arguments on the grounds that they were presented for the first time at the OPs (cf. T 92/92). It is the very purpose of appeal proceedings, particularly OPs, to provide an opportunity for a losing party to throw new light on relevant aspects of matters which have been decided to its detriment (cf. T 86/94). The [opponent] is not bound to the line of arguments he used in the statement of grounds for the whole appeal proceedings (cf. T 432/94). Thus the new argument is not rejected for being late-filed.” The BoA did not refer to Article 13(1) RPBA, even though the [opponent’s] new argument appears to have amounted to an amendment of its case in the sense understood by the present BoA. It may well be that in such an ex parte case the BoA would in any event have been willing to exercise its discretion to allow such an amendment, since the new argument raised a difficult issue and the BoA said it was not willing to issue a positive decision to grant a patent on less than solid grounds nor to refuse an application which might contain patentable subject-matter (point [5]). The BoA therefore remitted the case to the Examining Division for further prosecution taking into consideration the situation created by the [opponent’s] new argument. [36.2] In T 926/07 the OD had refused to allow the opponent to present a new inventive step attack during OPs based on evidence of a prior use which was already part of the proceedings. The BoA, referring to A 114(2) EPC and R 71a EPC 1973, held that this had been wrong, since the attack was a new argument, not new facts or evidence. However, the BoA appears to have taken the view that new arguments could be brought forward at any stage of proceedings, including appeal proceedings. (“Dementsprechend sind Argumente, denen rechtzeitig vorgebrachte Tatsachen zugrunde liegen, in jeder Phase des Einspruchs - oder Einspruchsbeschwerdeverfahrens zuzulassen.” (underlining added)). However, no reference was made to the RPBA and the remark relating to appeal proceedings was clearly obiter. [36.3] In T 1553/07 the OD again refused to allow the opponent to bring forward a new attack based on prior use. The BoA considered that the facts and evidence for this prior use were already in the proceedings and that therefore the OD had been wrong to exclude the attack, referring to A 114(2) and R 71a EPC 1973, since it was a new argument only. The BoA, however, also stated that new arguments could be brought forward at any stage of proceedings, citing T 131/01 and T 926/07 (“R 71a (1) EPÜ 1973 bezieht sich wie auch der zugrundeliegende A 114 (2) EPÜ 1973 auf verspätet vorgebrachte Tatsachen und Beweismittel, nicht jedoch auf neue Argumente, die während des gesamten Verfahrens vorgebracht werden können.” emphasis added). Again, however, insofar as the BoA intended to include appeal proceedings in this statement, the remark was obiter and, again, no reference was made to Article 13 RPBA. [36.4] In T 1050/09 the BoA rejected the proprietor’s submission that a new argument from the opponent should not be considered, on the grounds that new arguments, opposed to new facts and submissions were always allowable, even though brought forward for the first time at OPs, citing A 114(2), T 92/92 and G 4/92 [2.1]. The BoA did not, however, refer to the RPBA, and in any event it would seem that the new argument did not amount to an amendment to the opponent’s case. [36.5] In T 1421/05 [14.3] and T 624/08 [4.2-3] the respective BoA, without discussion, proceeded on the basis that a new A 83 attack, although based on documents already in the appeal proceedings, would require amendment to the party’s case, which was not allowed. [37] The relevant case law therefore consists of either obiter statements and/or statements made without reference to the RPBA or cases in which the point has not been discussed. The BoA therefore considers that there is nothing in the jurisprudence of the BoA or in the travaux préparatoires to cause it to think that the view provisionally reached in Point [14] above is wrong, above and concludes that: (a) A new argument brought forward in appeal proceedings by a party which would have the effect of amending its case, even if the argument is based on evidence and facts already in the proceedings, can only be introduced into the proceedings at the discretion of the BoA by way of an amendment to the party’s case.
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(b) To the extent that the decision of the EBA in G 4/92 deals with the general admissibility of new arguments, it must be taken to have been modified in accordance with (a) above by the RPBA introduced with effect from 1 May 2003. [38] The above considerations relating to amendment of a party’s case obviously do not apply where the BoA has ex officio raised an issue. Article 12(1) RPBA provides that appeal proceedings shall be based not only the parties’ written submissions but also any communication from the BoA. Admissibility of Submissions Based on Slides 6 and 13 of D2 in the absence of the [patent proprietor]: the BoA’s discretion. [39] The exercise of the BoA’s discretion to allow amendments to a party’s case is governed by Article 13 RPBA, which provides: “(1) ... The discretion shall be exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy. (2) Other parties shall be entitled to submit their observations on any amendment not held inadmissible by the BoA ex officio. (3) Amendments sought to be made after OPs have been arranged shall not be admitted if they raise issues which the BoA or the other party or parties cannot reasonably be expected to deal with without adjournment of the OPs.” [40] In the present case, there is a further complicating factor, namely that the [patent proprietor] was not present at the OPs when the question of amendment arose, although duly summoned. As to this, Article 15(3) RPBA provides: “The BoA shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party duly summoned who may then be treated as relying only on its written case.” [41] It is not immediately clear what the relationship is between Article 15(3) and Articles 13(2) and (3) RPBA. As with Article 13, Article 15(3) RPBA was entirely new when introduced with effect from 1 May 2003. The main intention behind Article 15(3) RPBA appears to have been to nullify the effect of G 4/92 in so far as it prevented a BoA admitting new facts and evidence at OPs in the absence of a party and then deciding the case without giving the absent party the opportunity to comment. See the Consultative Document (CA/133/02), page 20, and T 706/00 [2.2] (obiter). [42] The BoA, however, is concerned with a different issue, namely the amendment to a party’s case at OPs in the absence of the party prejudiced. Articles 13(2) and (3) RPBA both essentially provide that the other party is always entitled to comment and react to an amended case. New facts, evidence and arguments can support a party’s existing case without requiring amendment to the case and so in such circumstances it makes perfect good sense to say that the absent party can be taken to rely on its written submissions in answer to that case. But it perhaps makes less good sense to say that where a party amends its case, an absent party can be taken to rely on its written submissions: it may well never have addressed the amended case in those submissions, being unaware that the other party would wish to put its case in such a way. [43] Nevertheless, the wording of Article 15(3) RPBA is perfectly general and appears to be quite broad in its intended effect. The BoA considers that it provides an exception to the more general provisions of (in particular) Article 13(2) in the special case of a duly summoned party being absent. This is consistent with the intention expressed on page 20 of the Consultation Document which, although primarily concerned with the effect of G 4/92, indicates generally that the absence of a party at the OPs need not delay any subsequent step in the case: “[Article 15(3)] provides that the absence of a party at the OPs need not delay any subsequent step in the case, including the decision, and that a party which absents itself may be treated as relying only on its written case. These powers are discretionary, and a BoA would no doubt take into account any reason provided for absence ...” [44] The BoA therefore concludes that it remains a matter for the BoA’s discretion to allow an amendment to a party’s case in the absence of the prejudiced party. The absence of the prejudiced party is a factor to be taken into account but does not prevent the board from allowing the amendment and proceeding to reach a decision on the basis of the case as now amended. Admissibility of Submissions Based on Slides 6 and 13 of D2 1577 | 3398
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in the absence of the [patent proprietor]: the exercise of the BoA’s discretion [45] The BoA, in the exercise of this discretion, decided however not to allow the [opponent] to amend its case, for the following reasons: (a) As already explained, the new argument amounts to a new way of putting the [opponent’s] case on novelty. Indeed, it is contradictory to the [opponent’s] previous case. (b) The new argument also impacts on the inventive step attack. (c) The new argument was raised at the last stage of the appeal, namely during OPs. (d) There was no reason why the new argument could not have been raised earlier. It was not occasioned by a new point raised by the [patent proprietor] in its reply or by the BoA in its communication. (e) The new case was raised during OPs in the absence of the [patent proprietor]. The implications of this have already been referred to […] but the fact remains that the [patent proprietor] had never dealt with the new case in its written submissions since it had never been part of the [opponent’s] case. (f) An absent party must expect reactions of the opposing party within the legal and factual framework of the case established prior to OPs, and thus the possibility of decisions taking account of, and being based on, such reactions (T 414/94 [2.3]). However, the [patent proprietor] had no reason to expect that the [opponent] would wish to raise this new argument or amend its case in this way. (g) The new argument was not based on a simple, incontrovertible piece of evidence in the proceedings. Rather it was based upon the inferences to be drawn from what was shown by slides six and thirteen. The [opponent] argued that from the smooth surfaces of the products shown in these slides it would have been clear to the skilled person that these products had been produced by a process according to claim 1 of the main request, i.e., by foaming the liquid aluminium after it had been introduced into the mould. During the OPs the [opponent] explained the reasons for drawing this inference, and while the explanation seemed plausible to the BoA, the BoA was not able to say that it was clearly correct, involving, as it did, technical expertise. The [patent proprietor], not being present, was also not able to give its comments on the explanation. The BoA then found the claimed method to be both novel and inventive and dismissed the appeal. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 197/10 – Self-Explaining
K’s Law – The ebook
T 197/10 – Self-Explaining 4 Feb 2012
The opponent filed an appeal against the decision of the Opposition Division (OD) to reject the opposition. Claim 1 of the patent as granted read (in English translation): Builder-containing laundry detergent or cleaning composition comprising a water-soluble builder block, alkali metal percarbonate and a cellulose derivative capable of removing dirt, obtainable by alkylation and hydroxyalkylation of cellulose, and additionally a compound which releases an organic percarboxylic acid under perhydrolysis conditions and/or an organic percarboxylic acid, wherein the builder block is composed of the components (a) from 5% by weight to 35% by weight of citric acid, alkali metal citrate and/or alkali metal carbonate which may be replaced at least partly by alkali metal hydrogencarbonate, (b) up to 10% by weight of alkali metal silicate having a modulus in the range from 1.8 to 2.5, (c) up to 2% by weight of phosphonic acid and/or alkali metal phosphate, (d) up to 50% by weight of alkali metal phosphate, and (e) up to 10% by weight of polymeric polycarboxylate. In its decision the OD came to the conclusion that in view of the definition for the expression “builder block” in the description of the opposed patent the claim had to be interpreted in such a way that the laundry detergent or cleaning composition only contained water-soluble builder substances. Therefore, claim 1 was novel over the examples of D4, which also contained the builder substance zeolite which was insoluble in water. Before the Board, the opponent submitted that the term “comprising” indicated that further components such as a builder substance that was insoluble in water, could be present. The patent proprietor responded that the skilled person would not know the expression “builder block” and would examine the description of the patent. *** Translation of the German original *** Novelty of the subject-matter of claim 1 [1] The [patent proprietor] has submitted that the expression “builder block” used in claim 1 was not necessarily clear for the skilled person. The skilled person did know builder substances but, not knowing what the expression “builder block” meant (emphasis added), he would consult the description and, when doing so, realize that this expression summarised all builder substances of laundry detergents or cleaning compositions and that all those substances had to be water-soluble. thus the presence of builder substances that were not watersoluble was excluded by the wording of claim 1. [2] The Board cannon share the opinion of the [patent proprietor]. [2.1] Claim 1 describes a “Builder-containing laundry detergent or cleaning composition comprising a watersoluble builder block, […] composed of the components (a) […], (b) […], (c) […], (d) […], (e) […]” [2.2] As the expression “builder block” in claim 1 is described as consisting of components (a)-(e) and as the remaining wording of the claim does not leave any doubt what is to be understood by the expression “builder block”, the skilled person has no reason to assume that the claim possibly contains an unclear expression. Therefore, there was no incentive for the skilled person to interpret the wording of the claim in the light of the contents of the description. As a consequence, the skilled person had no reason to assume that the expression “comprising” in claim 1 had a meaning different from its common meaning, i.e. that additional components could be present besides the listed components. [2.3] When the claims are worded in such a clear and unambiguous manner that the skilled person can understand them without difficulty, there is no incentive to draw on the description for interpreting them. When there is a discrepancy between the claims and the description, then the unambiguous wording of the claims is to interpret according to what the skilled person would understand without consulting the description. 1579 | 3398
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Thus, when there is a discrepancy between clearly defined patent claims and the description, the parts of the description that have no expression in the patent claims are, as a rule, not to be taken into account for the assessment of novelty and inventive step. [2.4] In the present case, claim 1 of the impugned patent discloses that the laundry detergent or cleaning composition comprising a water-soluble builder block composed of components (a)-(e). As a matter of fact, this wording does not exclude that there may be further components, such as builder substances that are not watersoluble. [2.5] Examples A to D of document D4, which were cited by the [opponent] define laundry detergent or cleaning compositions which are within the scope of claim 1 of the impugned patent and which further comprise the builder substance zeolite, which is not water-soluble. [2.6] Therefore, in view of the above considerations, the claimed subject-matter is considered to be disclosed by examples A to D of D4. [2.7] For the above reasons, claim 1 of the impugned patent does not comply with the requirements of A 54(1)(2) EPC 1973. […] The patent is revoked. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here. NB: A French summary of the decision can be found on Le blog du droit européen des brevets (here).
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J 7/11 - Just Write It!
J 7/11 - Just Write It! 3 Feb 2012
Biotech specialists, you might find this decision interesting! The applicant filed an appeal against the decision of the Receiving Section (RS) refusing the application for lack of compliance with R 30(3). The application had been filed electronically on September 28, 2010. The description contained a sequence protocol concerning 17 nucleotide and amino acid sequences. On November 3, 2010, the RS sent form 1128 requesting the applicant to remedy deficiencies pursuant to R 30(3) because elements that were mandatory pursuant to WIPO standard ST.25 had not been supplied. In an annex to the form, the following was stated: “1) When checking the paper version of the sequence protocol, the following deficiencies have been found: The numeric identifiers <220>, <221> and <223> are missing. In case of a “artificial sequence “ or if the organism is “unknown”, the mandatory numeric identifiers <220>, <221> and <223> always have to be provided. <213> artificial sequence (or “unknown”) <220> (leave empty) <221> source <222> (1)..(last position) <223> /note=“...“ (description of the artificial sequence) 2) In sequence protocols which are filed upon request of a competent office or after having been allocated an application number the following data elements are to be integrated: <140> current patent application <141> current filing date 3) The diskette that has been filed does not contain a sequence protocol.” On November 11, 2010, the applicant filed an amended sequence protocol and explained in an accompanying letter which amendments had been carried out. He had inserted the numeric identifiers <223> for certain features of sequences 1 to 8, which concerned artificial sequences. For sequences 9 to 11, the designation “artificial sequence” in numeric identifier <213> had been replaced by plasmid designations such as “GeneArt plasmid 0908426_256_pMA”, which had already been used in the original description. Moreover, the applicant made the statement that the amended sequence protocol did not contain anything going beyond the original application and paid the fee for the late payment of the sequence protocol. In a telephone interview which apparently took place on January 21, 2011, the applicant was informed that the sequence protocol did not give the description of the artificial sequences and that some of the feature keys used for the numeric identifier <221> could not be acknowledged. On January 26, 2011, the applicant filed another sequence protocol using modified feature keys for numeric identifier <221>. On February 22, 2011, the RS decided to refuse the application. The RS used form 1088S and ticked the following pre-printed text: “The deficiency (or deficiencies) regarding the sequence protocol, mentioned in the communication pursuant to R 30(3)/R 163(3) (EPO form 1128), has (have) not been remedied in due time or form, respectively.” The representative of the applicant called the EPO on February 24, 2011 and requested clarification of the deficiencies. He also criticized the defectiveness of the communication dated November 3, 2010.
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The applicant then filed an appeal as well as a modified sequence protocol. The statement of grounds of appeal pointed out the following:
According to the applicant, the communication dated November 3, 2010, was completely incomprehensible. Two of the allegations of deficiencies were incorrect. The general allegation that certain numeric identifiers were missing was not true either. The WIPO standard did not stipulate a duty to provide information with numeric identifier <221>, not even for artificial sequences. In a telephone interview several amendments had been discussed. This resulted in the amended sequence protocol filed on November 11, 2010. It is only during a later telephone interview, which took place on January 21, 2011, that the EPO explained that for field <221> only indications found in Tables 5 and 6 of Annex 2 of standard ST.25 were acceptable. The applicant then filed an amended sequence protocol. The decision to refuse the application referred to the communication dated November 3, 2010 and, therefore, did not contain correct and comprehensible reasons for the decision. Moreover, it had been discovered that the sequence protocol filed on January 26, 2011, was deficient, due to a software error of the PatentIn 3.5 software recommended by the EPO. This explained why the applicant had filed yet another amended sequence protocol. The appeal fee was to be reimbursed because there had been substantial procedural violations affecting the decision to refuse and also because the principle of the protection of legitimate expectations and the right to be heard had been violated.
Here is what the Legal Board of appeal had to say on this case: *** Translation of the German original *** [2] Pursuant to R 30(1) EPC, if nucleotide or amino acid sequences are disclosed in the EP application, the description shall contain a sequence listing conforming to the rules laid down by the President of the EPO for the standardised representation of nucleotide and amino acid sequences. Further rules concerning this matter are found in the Decision of the President of the EPO dated 28 April 2011 on the filing of sequence listings (OJ EPO 2011, 372) which has entered into force on June 1, 2011 and which, according to its Article 8, applies to all European patent applications pending on that date. In principle this Decision also applies to the present case; however, it has to be taken into account that, according to general intertemporal principles, the correct course of the proceedings before the RS has to be assessed on the basis of the legal situation existing at the relevant point in time (in this context, see decisions G 1/07 [1.1] and J 10/07 [1.2]). Insofar the rules of the Decision of the President of the EPO dated 12 July 2007 concerning filing of sequence listings (OJ EP0 2007, special edition 3, C.1), in its version as amended by the Decision dated 26 March 2010 (OJ EPO 2010, 328) are relevant. [3] According to Article 1(1) of the Decision dated 12 July 2007, the description shall contain a sequence listing complying with WIPO Standard ST.25. This standard concerns the representation of nucleotide and amino acid sequence protocols in applications and has to be applied in its amended version adopted on October 20, 2009 (Article 2 of the decision to amend dated March 26, 2010 has abrogated the Annex of the decision dated July 12, 2007, which contained the previous standard adopted on March 28, 1998) [4] The sequence protocol filed by the applicant on the date of filing did not comply with WIPO standard ST.25 in two respects. First, for a great number of sequences (n° 1 to 8 and n° 12 to 17) it used abbreviated designations (such as “ampR”, “ori”, “ScURA3”, “HARS1” etc.) for the numeric identifier <221>, which abbreviated designations did not correspond to the feature keys foreseen in Tables 5 and 6 of Annex 2 of WIPO-standard ST.25. Secondly, sequences n° 9 to 11 were designated as “artificial sequence” in numeric identifier <213> but the then required data elements <220> (feature) und <223> (other information) were not given (see point 30 of WIPO standard ST.25). Therefore, the sequence protocol was deficient. [5] Where the applicant has not filed a sequence listing complying with the requirements under paragraph 1 at the date of filing, the EPO shall invite the applicant to furnish such a sequence listing and pay the late furnishing fee (R 30(3), first sentence). Moreover, R 30(3), second sentence, provides that if the applicant does not furnish the required sequence listing and pay the required late furnishing fee within a period of two months after such an invitation, the application shall be refused. The two-month period is not extendable (see Article 2(1) of the Decisions dated 12 July 2007 and 28 April 2011). This strict way of conducting the proceedings is due to a 1582 | 3398
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change of R 30(3), as regards content, with respect to former R 27a(3) EPC 1973, which has been decided by the Administrative Council on December 7, 2006, as part of the amended implementing regulations to the EPC 2000. As can be seen from the travaux préparatoires of the Patent Law Committee, objections according to which the legal consequence of refusal was too strict or inappropriately tough, respectively, were countered by pointing out that complete sequence protocols filed in due time were indispensable for an appropriate European search report to be available in due time and that a request for further proceedings could be filed in case the time limit was missed (cf. CA/PL PV 30 Nr. 88-93 und CA/PL PV 31, Nr. 21-23). [6] In the present case, on November 3, 2010, the RS requested the applicant to remedy deficiencies pursuant to R 30(3) by means of form 1128 […]. [7] This communication pointing out deficiencies (Mängelbescheid) did not criticize the first deficiency mentioned above (see point [4]) consisting in the use of feature keys for the numeric identifier <221> that were not foreseen [in WIPO-standard ST.25]. Moreover, the communication lacked precision because the deficiency (lacking numeric identifiers for artificial sequences) did not concern all the sequences but only sequences n° 9 to 11. Moreover, some indications were incorrect. The statement that in case of an artificial sequence the numeric identifier <221> was mandatory is wrong (see WIPO standard ST.25, point 30). Also, the designation “source” for the data element having numeric identifier <221> is incorrect (according to WIPO standard ST.25, Annex 1, the correct designation for <221> is “name/key”). Furthermore, the statement that the diskette that had been filed did not contain a sequence protocol is incomprehensible in view of the fact that both the sequence protocol and the rest of the application had been filed electronically. [8] This notwithstanding the applicant has complied with the objections as far as they were comprehensible and correct. The amendments filed on November 11, 2010, did comply with the communication of the EPO insofar as the applicant had completed the data elements <223> for sequences n° 1 to 8 concerning artificial sequences and referred to the sequences n° 9 to 11, which it had originally referred to as artificial sequences in numeric identifier <213> by indicating plasmid designations. [9] In a telephone interview, which apparently took place on January 21, 2011, i.e. more than two months after the filing of the corrected sequence protocol, the RS has again objected to deficiencies by informing the applicant that the sequence protocol did not give the description of the artificial sequences and that several feature keys used for numeric identifier <221> could not be acknowledged […]. [9.1] The first objection is not readily comprehensible because the corrected sequence protocol did not contain any more sequences referred to as artificial sequences in numeric identifier <213> without containing the then required data elements <220> and <223>. Perhaps the RS was of the opinion that the applicant had to continue to designate the sequences n° 9 to 11, which had been referred to as “artificial sequences” in numeric identifier <213> of the original sequence protocol, as such, i.e. that the applicant was not allowed to provide the relevant plasmid designations for sequences n° 9 to 11 in numeric identifier <213> and, thus, to avoid the indication of data elements that were actually required. If this is the background for the first objection raised in January 2011 – as it presumably is – the RS has gone beyond the objections raised at first. [9.2] According to WIPO standard ST.25 (see points 25 and 30 as well as Annex 1, on <213>) [the applicant] shall provide either the scientific name of the organism or the indications “artificial sequence” or “unknown” in numeric identifier <213>. It is true that plasmids are not organisms in the narrow sense of the word, but they can of course have both a natural and an at least partially artificial origin. Moreover, there are many plasmid designations in molecular biology allowing the skilled person to unambiguously characterise [the plasmid] and which, therefore, comply with the purpose of the standard, i.e. to designate sequences as precisely as possible. In the framework of formal examination, to which the RS is in principle confined when examining sequence protocols, the indication of a plasmid designation in numeric identifier <213> cannot, as a rule, be objected to. The criticism that the sequence in a sequence protocol is in fact an artificial sequence, which has to be designated as such and which then has to be described using the numeric identifiers <220> and <223>, presupposes a technical examination of the facts for which the RS is not competent (see J 7/97 [8.1], which cites other decisions). [9.3] The second objection raised during the telephone interview on January 21, 2011, concerned the deficiency of the sequence protocol which the RS had not mentioned in its communication pointing out deficiencies dated November 3, 2010, i.e. the use of several inappropriate feature keys in numeric identifier <221>. Insofar the RS has tried to introduce (“nachschieben”) by telephone an objection that had not been raised at first, concerning a deficiency that was there right from the beginning.
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[10] In principle, the RS should take care that the invitation pursuant to R 30(3) addresses all objections, so that the applicant is prompted to quickly file a corrected sequence protocol that can be used for establishing the European search report. If in exceptional situations the situation is such that the sequence protocol filed in response to the invitation contains deficiencies that have not been objected to at first, the RS must not refuse the application without further ado, in application of R 30(3), second sentence and based on the original invitation, if the applicant has remedied the deficiencies that had been duly objected to, by filing a corrected sequence protocol, as he has done in the present case. Rather, the RS then has to send another written invitation to remedy the deficiencies. Raising objections by telephone may be helpful in view of the relatively short time frame available for correcting the sequence protocol if the applicant then remedies the deficiencies objected to by telephone – on short notice. However, objections to deficiencies raised by telephone have no legal effect pursuant to R 30(3) because proceedings before the EPO are conducted in written form with the exception of cases where oral proceedings are foreseen (R 1 et seq.). Therefore, in order to comply with the principle of the right to be heard (A 113(1)) it is necessary to send a second written communication pursuant to R 30(3) in such exceptional situations, and this communication has the legal consequence of triggering a fresh two-month time limit. However, the late furnishing fee only has to be paid once. [11] In the present case the RS has committed a procedural violation by raising additional objections only orally, in the course of a telephone interview on January 21, 2011, which objections differed, as regards content, from the objections raised at first, which had been overcome by the applicant, without there being a second written communication. The original two-month period triggered by the communication pointing out deficiencies dated November 3, 2010, which had already expired at that time, could not have been relevant any more for remedying the deficiencies newly objected to by the RS. [12] This notwithstanding, the applicant has tried again to remedy the objections by filing an amended sequence protocol. By filing an amended sequence protocol on January 26, 2011, the applicant took into account the new objection according to which several of the feature keys used for numeric identifier <221> could not be acknowledged. [The amended sequence protocol] only gave feature keys listed in Tables 5 and 6 of Annex 2 of the WIPO standard ST.25. It is true, however, that this amended sequence protocol also contained deficiencies because – apparently due to a software error – it contained a greater number of sequences than the original filing and because it did not contain the amendments concerning sequences n° 9 to 11 carried out on November 11, 2010. [13] In this situation, the RS could not refuse the application without further ado by referring to its communication pointing out deficiencies dated November 3, 2010. The applicant had taken into account the then raised objections by the first correction dated November 11, 2010. Therefore, the original communication pointing out deficiencies could not have the legal consequences provided in R 30(3), second sentence, which means that the refusal of the application should not have been decided without a further communication pointing out deficiencies. Thus the impugned decision is based on a substantial procedural violation. Moreover, it is insufficiently reasoned because it does not deal at all with the attempts of the applicant to file a regular sequence protocol. This violation of R 111(2) constitutes a further substantial procedural violation. [14] As a consequence of the procedural violations the impugned decision is to be set aside and the case is to be referred back to the first instance (A 111(1), second sentence, second alternative; Article 11 RPBA) and the appeal fee is to be reimbursed pursuant to R 103(1)(a). [15] For the further proceedings before the RS the amended sequence protocol filed on March 11, 2011, will be relevant. In this context the Board of appeal points out the following:
The deficiency concerning the inappropriate feature key for numeric identifier <221> appears to have been remedied. The fact that the DNA sequences n° 9 to 11 in numeric identifier <213> have not been designated as “artificial sequences” but have been defined in more detail by indicating plasmid designations is not to be objected to within the framework of the formal examination to be carried out by the RS […] In case of a subsequently filed sequence protocol, information concerning numeric identifiers <140> and <141> is mandatory. In contrast to the first amended sequence protocol filed on November 11, 2010, the sequence protocol filed on March 11, 2011, does not contain this information any more. This minor deficiency should be corrected by the EPO of its own motion (see also the Notice from the EPO 1584 | 3398
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dated 28 April 2011, point II.5, in the context of proceedings where the EPO acts as an international authority under the PCT). The applicant has not yet made the statement that the amended sequence protocol does not comprise any subject-matter extending beyond the application as originally filed (see Article 2(2) of the Decisions dated 12 July 2007 and 28 April 2011) for the sequence protocol filed on March 11, 2011. The applicant has already paid the fee for furnishing the sequence protocol belatedly.
Should you wish to download the whole decision (in German), just click here. The decision having been anonymized (do not ask me why), I cannot give you a link to the file wrapper.
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J 8/10 – No Lawyers
K’s Law – The ebook
J 8/10 – No Lawyers 2 Feb 2012
This decision concerns the registration of an association of representatives pursuant to R 152(11). The appellant, a German legal practitioner (LP), together with 11 professional representatives (i.e. European patent attorneys), had requested the EPO to register their association. The Legal Department registered the association of the 11 professional representatives and informed the appellant that he could not be registered as a member of the association because an association could only be formed by professional representatives. The appellant then requested an appealable decision. The decision was issued on July 15, 2009. The refusal was based in particular on the “Communication on matters concerning representation before the EPO” (hereinafter referred to as “ComMatRep”, OJ EPO 1979, 92) and the Decision of the Administrative Council (AC) on the interpretation of R 101(9) EPC 1973 (corresponding to R 152(11) EPC 2000) of December 1978 cited therein (and referred to as “DecInt” hereafter), whereby the AC stipulated that “an ‘association of representatives’ [was] to be taken as meaning an association consisting solely of professional representatives on the EPO list in private practice”. The LP then filed an appeal. He pointed out that the wording of R 152(11) and the legal systematics concerning this provision did not justify a different treatment of LPs and professional representatives. The rule referred to “representatives” rather than “professional representatives”. A 134(8) stipulated that representation in proceedings before the EPO might also be undertaken, “in the same way as by a professional representative”, by any LP. Therefore, the term “representative” in R 152(11) comprised both professional representatives and LPs entitled to represent parties pursuant to A 134(8). The appellant argued both from a historic and a teleological point of view. He pointed out that the lawmaker had always had the intention to treat LPs in the same way as professional representatives. The purpose of A 134(8) was to ensure that only highly qualified persons could represent parties before the EPO. Neither the EPC nor the history of its origins suggested doubts as to the qualification of LPs. Moreover, the control mechanisms of the EPO and the Institute of Professional Representatives (epi) regarding professional representatives had been considered to be equivalent to national control mechanisms applying to LPs. Therefore, there was no justification for having different rules regarding the possibility of registering as members of associations. The Legal Board dismissed the appeal. The headnote says (in English translation): Against the background of the applicable rules concerning the filing of authorisations, a legal practitioner cannot be treated as a member of an association of representatives within the meaning of R 152(11). The decision is going to be published in the Official Journal. If your command of German is not sufficient and you do not want to wait for the official translation, well, here is mine: *** Translation of the German original *** [1] The appeal is admissible […]. [2] First of all [the Board] has to examine which legal norms are to be applied, how they relate to each other and to which extent they are binding on the Boards. [2.1] The entitlement to represent [parties] in proceedings before the EPO is above all governed by A 134. The entitlement of legal practitioners is laid down in A 134(8). The filing and effect of authorisations is laid down in 1586 | 3398
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R 152; the authorisation of an association of representatives is mentioned in paragraph 11 of this rule. There were no major amendments to these rules during the revision of the EPC; R 152(11) corresponds to R 101(9) EPC 1973. [2.2] The “Decision of the President of the EPO dated 12 July 2007 on the filing of authorisations” (OJ EPO special edition 3/2007, 128, hereinafter referred to as “DecFilAuth”) was based on R 152(1). This decision stipulated that professional representatives had to file authorisations only in particular circumstances, whereas legal practitioners have to file an authorisation in any case (Article 1 and 2 of the Decision). Therefore, when exercising the power conferred to her by R 152(1), [the President of the EPO] distinguished between professional representatives and legal practitioners (as a previous decision on the filing of authorisations dated July 19, 1991, OJ EPO 1991, 489 had already done), although R 152(1) only refers to “representatives” and, therefore, to both professional groups. [2.3] The Board does not see any reason to doubt the lawfulness of the DecFilAuth and its binding force also for the Boards. The decision does not exceed the margin of discretion conferred to the President of the EPO in application of R 152(1). Its substantive rules do not reveal any abuse of discretion. The distinction between professional representatives and LPs appears appropriate and not arbitrary. Professional representatives are subject to the disciplinary power exercised by the Institute of Professional Representatives (epi) or the EPO (A 134a(1)(c)) whereas the disciplinary power to which legal practitioners are subject is a matter of national law and is exercised by national organisations or offices. Whether a professional representative is entitled to represent [parties] can be checked by anybody by inspection of the list maintained by the EPO pursuant to A 134(1) and (2). In the case of legal practitioners such a check requires much more effort. In view of the transparency offered to represented parties it is at least desirable that the represented party knows at any time whether it is represented by a professional representative having undergone technical training or by a legal practitioner who has not necessarily undergone such technical training. The rule requiring a legal practitioner to file an authorisation favours transparency in this respect. [2.4] The DecFilAuth does not contain any specific rules for the authorisation of associations of representatives. As a consequence, it does not contain any exceptions from the duty of filing authorisations regulated by the decision, which would apply to such associations or their members. [2.5] When discussing whether R 101(9) EPC 1973 – which was inserted into the Implementing Regulations at a later time (and which is identical to present R 152(11) from a substantive point of view) – was to be deleted, the AC of the European Patent Organisation laid down, in December 1978, how this rule was to be interpreted. According to this DecInt an “association of representatives” within the meaning of R 101(9) EPC 1973 is to be taken as meaning an association consisting solely of professional representatives on the EPO list in private practice (ComMatRep, OJ EPO 1979, 92, number 1, 2nd paragraph; cf. the Communication in OJ EPO 1978, 281). By limiting [the meaning] to professional representatives the DecInt has retained an interpretation that is more narrow than the wording as such, to the extent that the “representative” in R 152(11) refers to both professional representatives and legal practitioners who are entitled to represent [parties]. [2.6] When the Legal Board of appeal had to decide whether an association of representatives within the meaning of R 101(9) EPC 1973 could also be formed by professional representatives who are not working in private practice, it deliberately deviated from the DecInt and decided that the possibility of forming an association was not limited to professional representatives in private practice (J 16/96). In decision J 16/96 the Board did not have to consider the question of whether LPs could be members of an association pursuant to R 101(9) because all the members of the association under consideration were professional representatives. [2.7] Decision J 16/96 [2] expressed the opinion that the DecInt was not binding on the Boards but that it was to be taken into account when interpreting R 101(9) EPC 1973. The DecInt was published in the context of the ComMatRep (OJ EPO 1979, 92). This communication contained not only the DecInt but also various explanations and implementing regulations in view of implementing the DecInt. These parts of the Communication published in 1979 are not binding on the Board, either, and can at most have subordinate relevance for the interpretation of R 152(11). [2.8] Insofar as the EPC and the Implementing Regulations do not contain any rule, the Board has to base its decision above all on the DecFilAuth, which, being based on the entitlement conferred by R 152(1) and implementing this rule, has normative quality. The other provisions mentioned above (point [2.7]) which could qualify as legal basis do not have normative character and, consequently, are not binding on the Board. 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advantage of such associations was manifest when individual professional representatives joined or left the association. Changes in the composition of an association became more and more frequent with increasing size of the private practice or the association. The registration of the change of a composition of an association made it unnecessary to have to change the registration of who represented [the party] for each application a law firm was taking care of. [4] The Board agrees with the appellant that when the relevant provisions of the Implementing Regulations to the EPC mention an association of representatives, what they mean is the association in its effective composition. Once an association has been authorised [to act], each representative of this association is authorised to act in the name of the represented party if he is a member of this association at the time of the action. If only the representatives who were members of the association on the day on which the association was authorised, or at the moment when the association was entered into the list maintained by the EPO, then the administrative simplifications mentioned by the appellant […] could not be obtained. [5] Association of representatives are mentioned in R 143(1)(h) and R 152(11) of the Implementing Regulations to the EPC ; no further rules concerning associations are found, neither in the EPC nor in the Implementing Regulations. R 143 deals with entries into the Patent Register. Paragraph (1)(h) of this rule stipulates that in the case of an association referred to in R 152(11), the Register shall only contain the name and address of the association. R 152(11) stipulates that the authorisation of an association of representatives shall be deemed to be an authorisation of any representative who can provide evidence that he practises within that association. Therefore, there is a legal fiction according to which any representative practising within the association is authorised. [6] Although R 152(11) refers to an “authorisation of an association of representatives”, it is not the association as a legal person that is authorised. The authorisation is granted only to the individual members of the association (J 16/96 [4.3]) This also holds true when the authorisation form only mentions the name of the law firm or the company of a legal representative (Rechtsträger) (for instance, “XY Patentanwälte AG” and when the order to represent a party in proceedings before the EPO is given to the legal representative of a law firm. When a representative expressly signs a written submission directed to the EPO in the name of the legal representative of his law firm (“in the name of “XY Patentanwälte GmbH”, “for and on behalf of XY LLP” etc.) this is commonly understood to mean that the representative signs in the name of the party that is represented. The way in which the law firm is organised is not relevant for the EPO, even if the representative is member of an association pursuant to R 152(11) EPC. From the point of view of the EPO an association of representatives is only a plurality of representatives who can be authorised to act in the name of a represented party to the proceedings, either jointly or singly (see R 152(10)). [7] The appellant’s request is directed at being entered, as a member of an association, into the list of associations maintained by the EPO. Entries into this list are made upon request of the representatives desiring to form an association. The list is not published by the EPO but is only maintained as an internal tool. Whether a representative has proven, within the meaning of R 152(11), that he acts within a certain association has to be checked on a case-by-case basis. The internal list is a useful tool for providing evidence but it is not constitutive in the sense that a representative listed as a member of the association is necessarily deemed to be authorised if the association has been authorised. [8] In the case of a LP who wishes to exercise his right to represent [a party] pursuant to A 134(8) the EPO checks on a case-by-case basis whether the requirements mentioned in those provisions are fulfilled (qualification in a Contracting State, place of business in that State, entitlement in that State to act as a professional representative in patent matters). In the case of a professional representative it is not necessary to check whether he is in principle entitled to act before the EPO because the EPO itself maintains a list of professional representatives that are entitled to represent [parties] (A 134(1)). When the result of said check is positive for a LP, the latter is entered into a list which the EPO maintains as an unpublished internal tool, very much like the list of associations of representatives. [9] Against this background, the Board comes to the conclusion that a LP can represent [parties] before the EPO “in the same way as a professional representative” and that A 134(8) is not violated when only professional representatives can form an association pursuant to R 152(11). The existing differences in the administrative procedures are based on the one hand, on the closer relationship between professional representatives and the EPO (see point [3.2] above) and on the other hand, on the different provisions governing the presentation of authorisations (see below). [10] R 152, which is entitled “Authorisations” concerns both the substantive authorisation (die materiellrechtliche Bevollmächtigung) and the presentation of signed authorisations (unterzeichnete 1588 | 3398
J 8/10 – No Lawyers
K’s Law – The ebook
Vollmachten) filed as evidence for the existence of such an authorisation. In principle there may be an authorisation even if no authorisation form has been signed and filed. However, if a required authorisation is not filed in due time, then any procedural steps taken by the representative, other than the filing of a European patent application, shall be deemed not to have been taken (R 152(6)). This legal fiction results in a representative losing his authorisation if he does not comply with the provisions governing the filing of authorisations. [11] If a LP who is entitled to represent [a party] before the EPO became a member of an association of representatives, then he would be authorised – via the legal fiction of R 152(11) – to carry out all actions which the association is authorised to carry out. Under the present regulations in Article 2 of the DecFilAuth each LP entitled to act before the EPO has to file a signed authorisation or a reference to a general authorisation already on file. If the authorisation is not filed, the EPO has to invite the LP to do so (Article 2, second sentence of the DecFilAuth; R 152(2)). If the authorisation is not filed in due time, then the authorisation is lost (see point [10] above; R 152(6). If R 152(11) was understood to mean that LPs can be members of an association of representatives, then these LPs on the one hand, would be deemed to be authorised via R 152(6) and, on the other hand, be deemed not to be authorised via the provisions governing the filing of authorisations, if they do not file an authorisation. Under the applicable normative provisions governing the filing of authorisations (see point [2.8] above) – which do not provide for any exception from the duty to file [authorisations] that would be applicable to associations comprising LPs (see point [2.4] above) – this contradiction can only be eliminated via an interpretation of R 152(11) that interprets the association of representatives to be an association of professional representatives. Therefore, LPs cannot avail themselves of the legal fiction of R 152(11), which means that the appeal has to be dismissed. [12] The appellant acknowledged that the admission of LPs into associations pursuant to R 152(11), which he desired, was at conflict with the applicable rules governing the filing of authorisations. However, he was of the opinion that the relevant decision of the President (see point [2.2] above) was a mere administrative instruction which had to be measured by A 134(8) and R 152(11). In any case, the DecFilAuth was not of higher rank in the hierarchy of norms than the DecInt of the AC and the corresponding ComMatRep (OJ EPO 1979, 92 see point [2.5] above). The Board cannot endorse this opinion; it is, for the reasons mentioned above (see points [2.3] and [2.8]) bound by the DecFilAuth, which has been taken in application of R 152(1). [13] The appellant pointed out, in the statement of grounds of appeal already, that R 152(11) as well as the other provisions of R 152 only referred to “representatives” and did not distinguish professional representatives from LPs. The Board is of the opinion that the term “representative” needs to be interpreted. In the DecFilAuth based in R 152(1) a distinction is made between professional representatives and LPs (see point [2.2] above). This distinction has an impact on other provisions of R 152. For instance, the reference to a “required authorisation” in R 152(6) contains an implicit reference to the DecFilAuth, which entails that the legal consequences of R 152(6) occur under circumstances that differ according to which professional group is concerned. Also, in the present legal situation, the consideration of the whole context of R 152 leads to the conclusion that the two professional groups are to be treated differently as far as R 152(11) is concerned (see point [11] above). [14] It may remained unanswered to which extent the Legal Division considers the DecInt of R 101(9) EPC 1973 and R 152(1), respectively, to be still relevant. However, the Board notes that the third criterion established by the EPO in its Communication interpreting the Decision of the AC of the European Patent Organisation, according to which only professional representatives may act in the name of the association in business matters ([…] confirmed in J 16/96 [4.3]) apparently has not been observed in practice, for quite some time. There are persons who are neither professional representatives nor LPs but who nevertheless act, even in the name of the very association of which the appellant wishes to be member. Insofar the procedure for registering associations does not correspond to the procedure set forth in the ComMatRep (OJ EPO 1979, 92, see point [2.7]) any more. […] The appeal is dismissed. Should you wish to download the whole decision, just click here.
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T 382/10 – The Last Word
K’s Law – The ebook
T 382/10 – The Last Word 1 Feb 2012
The applicant filed an appeal after the Examining Division (ED) had refused his application. The relevant facts of the first instance proceedings are as follows: In reaction to a summons to oral proceedings (OPs) before the ED, the applicant filed a main request and two auxiliary requests, and commented on the objections of lack of inventive step. During the OPs, an objection under A 123(2) was raised against all pending requests. The ED invited the applicant to file a new request. The applicant inserted a new “first auxiliary request” but maintained the other requests. The ED was satisfied that the first auxiliary request overcame the objections. A substantive examination of inventive step followed. At the end of the discussion of inventive step of claim 1 according to the first auxiliary request, the ED interrupted the OPs in order to deliberate. According to the minutes of the OPs, the chairman announced “that a decision on the four requests on file will likely be taken after the break”. After the break, the chairman announced the decision that the application was refused according to A 97(2). The Board found the ED to have committed a substantial procedural violation: [2.1] In the statement setting out the grounds of appeal […], the appellant argued that the statement in the minutes that the chairman of the ED announced that a decision on the four requests on file would likely be taken after the break “cannot be confirmed by the representative as it was not heard”. However, the appellant did not question the correctness of the minutes after they were sent to the party and before the appeal proceedings. The correctness of the minutes is therefore not formally in doubt and the board has to consider the minutes as correctly reflecting the course of the OPs (see R 11/08 [16]). [2.2] In the statement setting out the grounds of appeal […], the appellant went on to argue that such a statement “could not have been expected to be made at this time”. The appellant stressed that apart from the introducing remark that all requests had the same problem with A 123(2), an objection under A 123(2) had been discussed only with regard to the main request, however not with regard to the rest of the pending auxiliary requests, i.e. after filing a new first auxiliary request during OPs the second and third auxiliary requests. This could not be considered to be a full discussion of all subsequent requests. The board notes that the discussion of the objection under A 123(2) is reported in the minutes […]. In particular […] reference is made to “the three requests” or “the first auxiliary request”. Therefore, the board is not convinced that the objection under A 123(2) was not discussed with respect to the first and second auxiliary requests. [2.3] From the written decision […] it is understood that the main request, the second auxiliary request and the third auxiliary request were considered not to fulfil the requirements of A 123(2), whereas the first auxiliary request was considered to fulfil the requirements of A 123(2) but not those of A 56 EPC 1973. This clearly shows that the applicant’s amendments made during OPs did overcome the objection raised at the beginning of the OPs by the chairman. [2.4] Any party has to be prepared that a new objection may be raised by the ED during OPs in reaction to amendments to the claims made by the applicant in reaction to the summons for OPs. The ED should give the party adequate opportunities to react to such a new objection during the course of the OPs. In fact, the ED did so when it announced that it would exercise its discretion under R 137(3) to consent to the filing of a new request if the representative wished to do so […]. In reaction to this statement, the applicant filed an amended request, which was introduced into the proceedings as first auxiliary request. Since the amendments were considered to overcome the objections under A 123(2) with respect to the main request, compliance with the provisions of A 56 EPC 1973 was discussed. At the end of the discussion the ED announced that a decision on the four requests might be taken. After deliberation it announced the final decision. This implies that the ED considered the four requests to be the final requests. 1590 | 3398
T 382/10 – The Last Word
K’s Law – The ebook
[2.5] The appellant in the statement setting out the grounds of appeal said that these four requests were not its final requests and pointed out that “before the last break, the ED did not ask the usual question whether the Applicant has any further submission or request, but did then immediately refuse the application at a time where this could not have been expected.” [2.6] The board considers it to be common practice that a party being confronted with a new objection which is raised with respect to several requests during OPs first tries to overcome this objection by dealing with a single request only (here the main request). This is a sensible approach in the light of procedural economy and avoids filing multiple versions of all requests during OPs. Thus, the board judges that the appellant did not consider the second and third requests as final requests. On the other hand, the minutes fail to provide an indication that the final requests had been established before the ED deliberated and made the final decision. [2.7] A 113(2) EPC 1973 requires the EPO to examine an application only in the text which the applicant has submitted or approved. In cases in which a request of a party is considered unclear, it is the duty of the deciding body to ask for clarification before deliberation (see decision of the Enlarged Board of Appeal R 14/10 [6.1]). To avoid any misunderstanding, in particular when requests are amended during OPs, the ED should clarify the final requests before pronouncing its decision at the conclusion of OPs. In accordance with prevailing case law, (see e.g. T 666/90, T 552/97 and T 1439/05), the fact that the final requests were not established contravenes the provisions of Article 113(2) EPC and is considered a substantial procedural violation. [3] The substantial procedural violation requires that the decision under appeal be set aside and justifies the reimbursement of the appeal fee according to R 67 EPC 1973 (applicable here, see J 10/07 [7]). Pursuant to Article 11 RPBA, a board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first-instance proceedings, unless special reasons present themselves for doing otherwise. The board is not aware of such special reasons in the present case. With the appeal proceedings, all requests have been amended except for the fourth auxiliary request which corresponds to the former first auxiliary request before the first instance. The other present requests have been amended in different ways such that each of them comprises combinations of amended features which have not yet been examined by the department of first instance. Since the board is bound by the order of the requests submitted by the appellant, and the first instance has not carried out a complete examination of the requirement of an inventive step for the subject-matter of the second and the third auxiliary requests, which are the basis for the present second and the third auxiliary requests, the board is exercising its discretion under A 111(1) EPC 1973 to remit the case so that a decision not vitiated by substantial procedural violations can be made by the first instance and so that the appellant does not lose an instance before the EPO. The appellant requested grant of a patent on the basis of the main request or the auxiliary requests. However, as stated in decisions T 42/90 [5] of the reasons and T 315/92 [5] of the reasons, the decision to remit the case to the first instance is not to be considered as being adverse in substance to that party, so that no OPs before the board need to be appointed. With the remittal to the first instance for further prosecution, the party still has the possibility of appealing against the final decision on the substance, possibly with OPs. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1491/06 – Just Overlapping
K’s Law – The ebook
T 1491/06 – Just Overlapping 31 Jan 2012
Need a reminder on how (most) Boards deal with double patenting? Here we go. The applicant filed an appeal against the decision of the Examining Division (ED) to refuse his (divisional) application. The ED refused the application on the grounds that the claims filed by the then applicant with the letter of 1 August 2003 were identical to the claims granted in the parent application, which was not allowable since double patenting was prohibited under A 125. The ED further considered that the prohibition of double patenting could also be regarded as a specific case of the general concept of legitimate interest in the proceedings, which itself was a generally recognised principle of procedural law. The Board found the new main request not to be a case of double patenting: [3.1] Prohibition of double patenting the subject-matter of the same claims as those of the parent patent was the sole ground for refusing the present application […]. [3.2] In its decisions in cases G 1/05 and G 1/06 handed down on 28 June 2007 the Enlarged Board of Appeal (EBA) held obiter (see point [13.4] of the identical Reasons): “The Board accepts that the principle of prohibition of double patenting exists on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter if he already possesses one granted patent therefor.” The board in decision T 1391/07 [2.6], referring to the above decisions of the EBA, saw no basis for extending the existing practice to “cover claims not defining the same subject-matter but conferring ... a scope of protection overlapping with each other only partially in the sense that some, but not all of the embodiments notionally encompassed by one of the claims would also be encompassed by the other one of the claims.” The present board agrees with this view. [3.3] Whether the subject-matter of the single claim (claim 1) of the main request, as amended during the appeal proceedings, is the same as subject-matter claimed in a patent already granted to the appellant is therefore decisive. The subject-matter claimed in the parent patent [3.4.1] Claim 1 in the parent patent essentially relates to an apparatus for pre-processing a set of transform coefficients, comprising an accumulator, parity judgement means, parity inverting means to provide a parityinverted transform coefficient such that the parity of the sum would be odd, and means for providing the transform coefficients as a set of transform coefficients which is error-immune when subject to the inverse orthogonal transform. Claim 1 according to the main request in the present case relates to a sum-oddifying circuit for processing a block of DCT coefficients comprising an accumulator, a parity judgment circuit and a parity inverter, in order to output a block of sum-oddified DCT coefficients to prevent a mismatch error when the block is inversely orthogonally transformed. Thus these claims essentially differ in that transform coefficients in general are processed according to claim 1 of the parent patent, whereas DCT coefficients are processed according to claim 1 of the main request on file. The Discrete Cosine Transform (DCT) is a particular instance of an orthogonal transform. As a result, claim 1 according to the main request is at least in this respect distinct from claim 1 of the parent patent. [3.4.2] DCT coefficients are recited in dependent claim 2 of the parent patent, however with the additional limitation that the parity inverting means (corresponding to the parity inverter (28) in claim 1 according to the main request) is adapted to invert the parity of one of the transform coefficients other than the transform coefficient representing the DC component. 1592 | 3398
T 1491/06 – Just Overlapping
K’s Law – The ebook
[3.4.3] As a result, the subject-matter of present claim 1 is not the same as the subject-matter of either of claims 1 or 2 in the parent patent. The subject-matter in other applications by the same appellant [3.5.1] In the decision under appeal no objection of double patenting was raised with respect to the grand parent application No. 94 907 708.5, which matured into European patent No. 0 638 218. Dependent method claim 2 of this grand parent patent sets out DCT coefficients in a step having in substance the same further limitation as dependent apparatus claim 2 of the parent patent […]. As a result, the subject-matter of present claim 1 is not the same as the subject-matter of claim 2 of the grand parent patent. [3.5.2] Further European patent applications No. 10 011 642.5 and No. 10 011 843.9 have been filed by the appellant as divisional applications of the present application. However, no patent has been granted so far on the basis of these later-filed applications. Consequently, no issue of double patenting arises in the present case. [4] In conclusion, the subject-matter of claim 1 of the main request is different from subject-matter of a patent already granted to the appellant. Hence claim 1 overcomes the grounds for refusal and the decision under appeal is to be set aside. [5] The ED raised other objections during the examination proceedings, for instance lack of novelty and inventive step. These objections were not addressed in the decision under appeal. In view of these objections, of the amendments to claim 1, and of the pending further divisional applications, the board considers it appropriate to grant the appellant's request that the present application be remitted to the ED for further prosecution on the basis of the main request. Should you wish to download the whole decision, just click here. The
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NB: Other interesting decisions on double patenting can be found here and here.
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found
here.
T 2415/09 – Forty-five Days
K’s Law – The ebook
T 2415/09 – Forty-five Days 30 Jan 2012
The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form. The OD had admitted late filed documents D6 to D8 and found the main request to lack novelty over their disclosures. It considered that the period of six weeks and three days was sufficient for the patent proprietor to file counter-evidence. The Board did not see things this way: *** Translation of the French original *** [3.1] Document D6 and the results of trials reproducing and characterising the catalyser disclosed therein (documents D7 and D8) have been filed by the [opponent] about six weeks before the oral proceedings (OPs) before the OD. The [opponent] has pointed out, based on these documents, that the claimed subject-matter lacked novelty. On the day of the OPs, the European patent has been revoked based on this new evidence. The [patent proprietor] has pointed out that in these circumstances he had not been granted the right to be heard because he had not had the time to respond to the new evidence by carrying out his own counter-evidence trials (contre-essais). [3.2] According to A 113(1), the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. In this regard, it is not sufficient that a party has had knowledge of the arguments and evidence used against it, but it also must have had the opportunity of responding by preparing an appropriate defence. [3.3] In the present case, the [patent proprietor] undeniably has been confronted with a new factual situation, comprising a new document and experimental results challenging the novelty of the claimed subject-matter, six weeks before the OPs before the OD. However, the OD, after having admitted this new evidence presented shortly before the OPs into the proceedings, has not given the [patent proprietor] the opportunity of responding in an appropriate way, i.e. as desired by the [patent proprietor], by carrying out trials in order to show that the catalyser disclosed in document D6 did not fulfil the requirements of the claims under consideration. [3.4] The OD has argued that the six weeks remaining before the OPs were sufficient for carrying out those trials although the [patent proprietor] had pointed out that this was impossible because there was not enough time. In the present circumstances the Board is unable of making statements on how much time was necessary to carry out comparative trials. However, it notes that as far as periods are concerned, R 132(2), for instance, stipulates that a period specified by the EPO shall be neither less than two months and may be extended upon request. As a rule, the period for responding to substantive questions is set to four months and extended to six months upon request, and requests for longer extensions may be allowed in exceptional circumstances, such as the need to provide experimental trials (see the Notice of the Vice-President of DG2 dated February 28, 1989, OJ 5/1989, 180 and the Guidelines [E-]VIII 1.2 and 1.6). These time limits, even though they do not apply in the present case (R 116(1)), show that a party cannot be required to file comparative trials within a period that does not exceed six weeks. Moreover, the [patent proprietor] had explained that he could not carry out the trials in time because, among other things, his research laboratories were closed during the period under consideration. The OD has asserted, without any further justification, that this argument was not relevant. The Board, however, considers this argument to be completely justified because obviously it is impossible to carry out trials when the laboratories where they are to be performed are closed. As a consequence, it was impossible to carry out the trials between the moment when the [patent proprietor] had had knowledge of documents D6 to D8 and the date of the OPs. Consequently, the Board comes to the 1594 | 3398
T 2415/09 – Forty-five Days
K’s Law – The ebook
conclusion that the OD, when basing its decision on the new documents without allowing the [patent proprietor] to respond by means of counter-evidence which he considered to be necessary, has not granted him the right to be heard, in violation of A 113(1), which amounts to a substantial procedural violation. [4] The [opponent] points out that the [patent proprietor] had never asked for a postponement of the OPs in order to be able to present counter-evidence. However, the [patent proprietor] had requested the OD not to admit the late filed documents D6 to D8 into the opposition proceedings because, inter alia, he was unable of carrying out comparative trials and because his right to be heard was violated, which goes beyond postponing the OPs. Therefore, this argument of the [opponent] has to be dismissed. [5] As a consequence, the impugned decision has to be set aside and the case has to be remitted to the OD for further prosecution (A 111(1)). The reimbursement of the appeal fee is ordered because the appeal is allowed and because the reimbursement is equitable due to the substantial procedural violation, i.e. the violation of the right to be heard (R 103(1)(a)). Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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T 2196/09 – Not In Line
K’s Law – The ebook
T 2196/09 – Not In Line 28 Jan 2012
The applicant filed an appeal after the Examining Division (ED) had refused his application. The following paragraphs are taken from the Board’s discussion of the admissibility of the main request and of auxiliary request 1: [4] According to the established case law of the Boards of Appeal, the function of appeal proceedings is to give a decision upon the correctness of a separate earlier decision taken by a department of first instance (cf. “Case Law of the Boards of Appeal of the EPO”, 6th edition 2010, VII.E.1). In line therewith, Article 12(4) RPBA states that it is within the power of the board to hold inadmissible facts, evidence or requests which could have been admitted in the first instance. Although new requests with amended claims may exceptionally be admitted in appeal proceedings, it is not the purpose of the appeal to give the appellant the opportunity to recast its claims as it sees fit and to have all its requests admitted into these proceedings (cf. “Case Law”, VII.E.16.1.2). [5] As for the main request and auxiliary request 1, the board has the following considerations: [5.1] The main request dealt with by the ED in the decision under appeal comprised a technical feature characterizing the distal optical tip (“... comprising a tapered portion (305) and a tapered distal tip portion (303) ...”) which was further defined in more detail in auxiliary requests I and II before the ED (“... wherein a substantial step is provided where the tip portion meets the base portion ...”) […]. None of these features are present in the main request and the auxiliary request 1 filed in appeal proceedings […]. The deletion of these features in appeal proceedings does not address, let alone overcome, the objections raised by the ED and reverts the claimed subject-matter to that examined at a much earlier stage of the examination proceedings. Indeed, the claims of the main […], closer to those originally filed than those underlying the decision under appeal. [5.2] According to the “Minutes of the OPs before the ED”, auxiliary request II was filed at the oral proceedings (OPs) before the ED after the applicant requested, and was granted, a short break. After examining this auxiliary request II and considering it not to meet the requirements of A 123(2), the applicant was asked whether it had further requests, to which it replied that it did not wish to introduce a new request […]. Thus, supplementary time was offered by the ED and not availed by the applicant because it did not consider necessary or, as stated in the Minutes, it did not wish to file further requests. Indeed, in the light of the nature and type of amendments introduced into the main request and the auxiliary request 1 in appeal proceedings, the board considers that it was not a lack of opportunity or of time for the applicant to file such requests at the OPs before the ED but that it had good reasons not to file them at that stage of the examination proceedings since they would certainly not have been admitted into the proceedings by the ED. [5.3] Thus, neither the main request nor the auxiliary request 1 are in line with the purpose of appeal proceedings as established in the case law. Therefore, in accordance with Article 12(4) RPBA, the board, exercising its discretion, decides not to admit these requests into the appeal proceedings. Should you wish to download the whole decision, just click here. The file wrapper can be found here. NB: A French summary (and some interesting reader comments) can be found on Laurent’s blog (here).
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T 1336/09 – Anonymous Is Alright ...
K’s Law – The ebook
T 1336/09 – Anonymous Is Alright ... 27 Jan 2012
... at least in ex parte proceedings. In a recent post I have reported T 146/07 where the Board deemed anonymous third party observations not to have been filed. The present decision – taken one day after T 146/07 – comes to a different conclusion. [2.1] The third party observations […] were filed four working days only before the scheduled oral proceedings (OPs), citing two new documents which were obviously highly relevant against several of the requests then on file. The appellant though having been informed of the filing of the observations in advance of the OPs neither requested that these be excluded from the procedure, nor that the OPs be postponed. At the start of the OPs, it filed an amended request in which due account had been taken of the new citations. In these circumstances the board considered that the lateness of the observations should not per se be a bar to their admission into the procedure. [2.2] In respect of the anonymous character of the observations under A 115, the Board notes that a Decision of the President of the EPO and a Notice from the EPO, both dated 10 May 2011 and concerning the filing of third party observations under A 115 by means of an online form made available on the website of the EPO, have been published in OJ EP0 2011, pages 418 and 420 respectively. The Decision in particular allows for third party observations being filed without signature (see Article 2 of the Decision), the Notice states that “Observations may be filed anonymously”(see the 4th paragraph under point "Formal requirements") . Indeed, the boards of appeal of the EPO are bound only by the EPC, but the above dispositions in relation to anonymous third party observations are in line with earlier decisions of the boards, which did admit such observations both in ex-parte and in inter partes appeal proceedings, without apparent misgivings in relation to their anonymous character (see T 258/05 [V,3.3] in combination T 735/04 [2]). Since the observations in the present case have been made under A 115 in an ex parte appeal before a technical board of appeal and are limited to the citation of pieces of prior art and the indication of the correspondences between their content and certain claimed features, which essentially are statements of facts, the present situation is also quite different from that in the decisions G 1/03 and G 2/03 in which the Enlarged Board of Appeal without further explanations did not take into account an anonymously filed statement made within the frame of the referral of a point of law in relation to the allowability of disclaimers. The only requirements imposed on third party observations by R 114(1) are that they be filed in writing in an official language of the EPO and state the grounds on which they are based. The written form of the observation and the use of an official language indeed constitute the minimal conditions for allowing them to be communicated to the applicant or proprietor and to be commented upon by the latter, as provided for in R 114(2). R 50(3) and by analogy R 86, which establish the requirement that documents filed in the examining or opposition procedure be signed, do not in the board’s opinion directly apply to third party observations. As a matter of fact, the reference in R 50(3), in relation to the case of a missing signature, to “the party concerned” indicates that the rule addresses the filing of documents by parties to the procedure, which a person who files third party observations clearly is not, as is expressly stated in A 115 (see the last sentence). The board is aware of decision T 146/07 [3-6], dated the day before the date of the present decision and made public later, in which the deciding board disregarded third party observations because of their anonymous character, on the basis inter alia of a different appreciation of the relevance to this issue of R 50(3) and of decisions G 1/03 and G 2/03. Contrary to the present instance, decision T 146/07 concerned an inter partes appeal, and it emphasised that “Identification is particularly important in the context of opposition proceedings in order to allow the competent organ of the EPO to verify whether the observations are indeed filed by a third party rather than by a party to the 1597 | 3398
T 1336/09 – Anonymous Is Alright ...
K’s Law – The ebook
proceedings. Otherwise, a party might be tempted to submit late observations and/or documents by means of anonymous third party observations in order to avoid negative procedural consequences such as apportionment of costs.” In ex parte proceedings however the appellant is the sole party and it can at any time raise new issues or submit new prior art - and so can the board of its own motion by virtue of A 114(1). Accordingly the risk of anonymous third party observations providing a cover for procedural abuse can be largely excluded in ex parte proceedings. For these reasons the board considered that in the present circumstances the anonymous character of the third party observations did not bar them from being admitted into the procedure. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2020/07 – Official Selection
K’s Law – The ebook
T 2020/07 – Official Selection 26 Jan 2012
If the provisional results of the second poll are representative, there are quite a few chemists among the readers of this blog. Perhaps some of them might find the following decision interesting. The patent proprietor filed an appeal against the decision of the Opposition Division revoking the opposed patent. In what follows, the Board examined the novelty of the main request, claim 1 of which read (in English translation): 1. A process for the preparation of polyisobutenylphenol-containing Mannich adducts by (a) alkylation of a phenol with polyisobutene having more than 70 mol% of vinylidene double bonds and a number average molecular weight of from 300 to 3000 at below about 50°C in the presence of an alkylation catalyst; (b) reaction of the reaction product from a) with formaldehyde, an oligomer or a polymer of formaldehyde and at least one amine which has at least one secondary amino function and no primary amino function, or (c) reaction of the reaction product from a) with at least one adduct of at least one amine which has at least one secondary or primary amino function and formaldehyde, an oligomer of formaldehyde, a polymer of formaldehyde or a formaldehyde equivalent, wherein, in step (c), an adduct which is obtained from at least one amine and formaldehyde, an oligomer of formaldehyde, a polymer of formaldehyde or a formaldehyde equivalent by reacting the two reactants for at least 15 minutes at above +15°C is used and wherein this adduct is formed in the absence of the polyisobutenylphenol and only subsequently reacted with the polyisobutenylphenol. *** Translation of the German original *** [3.1] Document D1, which is to be taken into account as a prior, post-published European patent publication according to A 54(1), A 54(3) and A 89, discloses - in its claim 1 and under the chapter heading “Summary of the invention” on pages 1 and 2 – a composition comprising a Mannich adduct and an alcohol, as well as a process for producing this composition (claim 29). The Mannich adduct is “derived from” or produced from three components referred to as (A), (B), and (C) in the presence of alcohol, where (A) is a hydroxy containing aromatic compound having one to four hydrocarbyl groups of up to about 400 carbon atoms, (B) is an aldehyde or ketone having the formula R1-(CO)-R2 wherein R1 and R2 independently are H or hydrocarbyl groups having from 1 to about 18 carbon atoms and R2 can also contain carbonyl, and (C) is a mixture of water and an amine containing at least one primary or secondary amino group. The description of D1 first deals with various embodiments of component (A), leading the reader from benzene or naphthalene nuclei […] having hydrocarbyl substituents (“R1”) and hydrocarbyl groups derived from an olefin to polyisobutene groups having a high content of methylvinylidene groups (e.g. based on “Ultravis 10” or “Ultravis 30” […]). “Ultravis 10” was used in part A of the only example of D1. […] Finally a polyisobutene-substituted phenol (PIB phenol) is referred to as preferred embodiment of component (A), wherein the polyisobutene substituent is derived from a polyisobutene (PIB) having a number average molecular weight (MN value) from about 300 to about 5000, or from about 500 to about 2500, respectively, and a minimum methylvinylidene isomer content of about 70%, e.g. about 80%. Process step (a) of claim 1 of the present main request concerns the “alkylation of a phenol with polyisobutene having more than 70 mol% of vinylidene double bonds and a number average molecular weight of from 300 to 3000 …” Therefore, the PIB phenol produced in process step (a) of present claim 1 corresponds to the preferred embodiment of component (A) in D1. [3.1.2] The description of component (B) in D1 also leads the reader from a general description of suitable substances, a great number of aldehydes and ketones, to a preferred embodiment. Lines 1 and 2 of page 6 refer to 1599 | 3398
T 2020/07 – Official Selection
K’s Law – The ebook
paraformaldehyde and “aqueous solutions of formalin (e. g., about 35 % to about 45 % by weight formalin in water) [as] preferred reactants.” In part B of the example of D1 paraformaldehyde was used. Claim 1 of the present main request refers to the use of formaldehyde, an oligomer or a polymer of formaldehyde for both process variants. In […] the opposed patent, these terms are explained in more detail: they comprise the terms formalin solution, trioxane and paraformaldehyde. In this case also the used compounds are partially identical with those of D1. [3.1.3] According to claim 1 of D1, a mixture of water and an amine containing at least one primary or secondary amino group is used as component (C). Starting from line 4 of page 6, the amine component is explained in more detail. Accordingly, it typically contains a certain amount of water (“The weight ratio of amine to water is typically about 50:50 to about 99:1”) and, therefore, has two components. The amine contained therein shall contain at least one group referred to as “> NH”. In a list of suitable amines of different structure […], wherein ethylene diamine is referred to as a “preferred amine” […] the last paragraph of page 6 also mentions amines having a secondary and no primary amino group: dimethylamine, N-methyl-ethylamine, Nmethyl- octylamine, and dibutylamine. Those last-mentioned amines in the list of exemplary amines of D1, therefore, fulfil the requirements of amines according to variant (b) of claim 1 of the present main request: at least one secondary amine group but no primary amino function. [3.1.4] Claim 1 of document D1 only recites the substances that are initially contained in the reaction mixture (i.e. the components (A), (B), and (C) according to their most general definitions) but does not provide any features of the process for producing the Mannich adduct. Process claim 29 only requires component (A) to be reacted with components (B) and (C) in the presence of alcohol. Dependent claim 33 mentions a range from 40 to 200°C as process temperature. Claim 34 concerns a process wherein the polyisobutene substituent is derived from a polyisobutene having a methylvinylidene isomer content of at least about 70%, paraformaldehyde and a mixture of water and ethylene diamine, and which is carried out in the presence of 2-ethyl hexanol. There is only one place in the description of D1 where the process for producing the claimed compound is explained in more detail – in view of the process features defined in the present claims of the opposed patent – than in these process claims: in the only example on pages 11 and 12 of D1. [3.1.5] There was agreement between the parties that the first process step (a) according to claim 1 of the present main request did not differ from part A of the example of D1, not even in view of the temperatures used. However, the [patent proprietor] had based its argumentation that in part B of the example of D1, which describes the subsequent Mannich reaction of the PIB phenol of part A, 2-ethyl hexanol and water were present, whereas none of these compounds is added according to claim 1 of the main request. [3.1.6] In view of this argument [the Board] refers to the different embodiments of variant (i) in the examples IIb, IIe and IIf […] of the opposed patent. For instance, in example IIb, as also explained in general terms in paragraph [0068], an alcohol, i.e. isopropanol, is added. On the other hand, in examples IIa and IIe, a 37% strength formalin solution is used, and in example IIf a “37% strength aqueous solution of formaldehyde” is expressly added to the present components PIB phenol and dimethylamine (“40 ml of 40% strength aqueous solution”). There the reaction mixture, therefore, apparently contains the very components that are described in claim 1 of D1. For the sake of completeness, [the Board] notes that in example 3 of the trial report of the patent proprietor dated July 13, 2007, water and formaldehyde were also added. Moreover, water is formed during the Mannich reaction, as can be seen from part B of the example of D1 and also the last reaction formula on page 261 of D9. Considering these findings, the argument of the [patent proprietor] concerning the addition of water or alcohol, respectively, in D1, in order to establish differences that are relevant for the decision on novelty, is not persuasive. [3.2] The example in D1 and the parts of its general disclosure mentioned above show that the use of PIB phenol having a MN value within the range from 300 to 2500 and a methylvinylidene content close to or above 70 % (i.e. within the definition of the opposed patent) and of formaldehyde in various common embodiments (Einsatzformen), i.e. as (polymer) paraformaldehyde or as aqueous formaldehyde solution, respectively, is also generally preferred in D1. Therefore, there is only one significant difference between this preferred embodiment of D1, the example, and the subject-matter of the opposed patent, i.e. the selection of an amine other than ethylenediamine.
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T 2020/07 – Official Selection
K’s Law – The ebook
[3.2.1] As already mentioned in paragraph [3.1.3] above, at the beginning of the first group of the amines that are expressly listed in D1 […] four secondary amines are listed as examples for “primary or secondary amines” as closest alternatives following methylamine: dimethylamine, N-methyl-ethylamine, N-methyl-octylamine, and dibutylamine.
[3.2.2] The Board is of the opinion that such a replacement of a component (of a primary amine) by a compound that is disclosed as a simple alternative (a secondary amine) wherein all the other preferred components of the disclosure are maintained, cannot lead to the acknowledgement of novelty. [3.2.3] As neither the general description nor the example of D1 suggests the replacement of the preferred PIB phenol or of the preferred aldehyde, but the amine used in the example of D1 is not the but just one preferred amine, the present situation is quite close to the one of decision T 332/87 [2.2, 2nd §] : “This means that, when examining novelty, different passages of one document may be combined provided that there are no reasons which would prevent a skilled person from such a combination. In general the technical teaching of examples may be combined with that disclosed elsewhere in the same document, e.g. in the description of a patent document, provided that the example concerned is indeed representative for the general technical teaching disclosed in the respective document.” The finding of paragraph [3.2.2] above is supported even more strongly by decision T 278/97 [1.1.4.2-3] where a disclaimer that had been introduced in claim 1 of the patent under consideration, which excluded a certain support material (cellulose triacetate) was considered to be insufficient for distinguishing [the claimed subjectmatter] over a patent application to be considered under A 54(3) and, therefore, for establishing novelty. The prior application (document D4) contained an example 4, wherein cellulose triacetate was used as support material. This example destroyed the novelty of claim 1 under consideration. In the general description there was an explicit list of possible carriers, and this list also mentioned cellulose triacetate. The Board explained that the 1601 | 3398
T 2020/07 – Official Selection
K’s Law – The ebook
document did not give any reasons hindering the skilled person from using such a different support. It rather taught that this different support could be used instead of cellulose triacetate. [3.3] In view of these facts and findings, the Board has arrived at the conclusion that in the present case claim 1 of the main request (and, therefore, the entire main request) cannot be acknowledged to be novel over D1 (A 54(1) and 54(3)). NB: This decision has more to offer, as we shall see in a forthcoming post. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 110/07 – One Way Only
K’s Law – The ebook
T 110/07 – One Way Only 25 Jan 2012
Back to basics! One of the opponents filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. The Board did not agree with the way in which the OD had validated the priority claim: [2.1] The patent in suit claims the priority dates of 14 March 1997 (P1) and of 23 July 1997 (P2). The earlier priority document P1 discloses, as a thickness for the sodium ion diffusion barrier layer (SIDB), the ranges of 2 to 50 nm […] and 2 to 18 nm […]. Furthermore, P1 discloses in the examples individual values of SnO2 CVDdeposited SIDB layer thickness of 101 nm, about 100 nm, 434 nm […], and of 50 nm for SnO2 layers obtained by spray pyrolysis […]. Thus, P1 fails to disclose the range in the claim feature “sodium diffusion barrier layer … having a thickness of at least 10 nm” […]. This was not disputed by the respondent. The question is therefore whether a PASC layer thickness of “at least 10 nm” may be derived from P1. [2.2] Opinion G 2/98 [ 8.4] – to which the OD referred in the contested decision […] – states that “[t]he requirement for claiming priority of “the same invention”, referred to in A 87(1), means that priority of a previous application in respect of a claim in a European patent application in accordance with A 88 is to be acknowledged only if the skilled person can derive the subjectmatter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole.” For the board, neither the claimed lower limit of 10 nm nor the open-ended range of ≥ 10 nm is directly and unambiguously derivable from P1, so that the earlier priority date is not valid. [2.3] The OD came to a different conclusion, upon applying a “novelty test” based on the concept of overlapping ranges. The board considers the application of this “novelty test” as inappropriate in view of G 2/98 itself, because in the present case there is no overlap, but rather a generalization of ranges. It is true that G 2/98 [8.4] states that “priority claims should not be acknowledged if the selection inventions in question are considered “novel” according to these criteria” (i.e. the criteria applied by the EPO with a view to assessing novelty of selection inventions over the prior art). However, it does not automatically follow from the said statement that priority claims should be acknowledged if the selection inventions in question are considered not “novel”. (In this context, attention is drawn to decisions T 1233/05 [4.4], T 230/07 ([headnote, 4.1.6] and T 1130/09 [3.2] according to which the demonstration of a technical effect over a sub-range is not decisive for acknowledging novelty. A sub-range must be novel per se.) [2.4] The feature in question relating to the thickness of the SIDB layer is however literally disclosed in P2 […] so that the patent enjoys priority rights of 23 July 1997. Should you wish to download the whole decision, just click here. The file wrapper can be found here. NB: This appeal was won by fellow blogger Laurent Teyssèdre. Congrats!
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T 1488/08 – Salami Cut-Off
K’s Law – The ebook
T 1488/08 – Salami Cut-Off 24 Jan 2012
The opponents filed an appeal against the decision of the Opposition Division (OD) to reject the opposition. In their written statement setting out the grounds of appeal, the opponents only invoked lack of inventive step under A 100(a). The grounds of lack of novelty and of added subject-matter, which were not substantiated in the statement setting out the grounds of appeal (filed on October 6, 2008), were invoked for the first time with letter of 11 August 2009. The Board did not admit these grounds: [2.1] Article 12(2) RPBA stipulates that “The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on”. This provision provides a cut-off point after which any further submission is ipso facto late and subjected to the discretionary power of the Board. The intended overall effect of this Article is to require the parties to present a complete case at the outset of the proceedings in order to provide the Board with an appeal file containing comprehensive submissions from each party and to prevent procedural tactical abuses. In the particular circumstance of the present case, the statement of grounds of appeal, after a short introductory paragraph generally referring to earlier submissions made in the first-instance proceedings, contained under the main heading III “Stellungnahme zu der Entscheidung bezüglich der Einspruchsabteilung” only a substantiation in support of lack of inventive step. Specific objections under the grounds of added subject-matter and lack of novelty were not raised. It is only with the letter dated 11 August 2009 after the reply of the [patent proprietor] that the [opponents], referring to the introductory paragraph of the grounds of appeal, invoked the grounds of extension of subjectmatter and lack of novelty. It is established case law that a statement of grounds which merely generally refers to previous first-instance submissions cannot replace an explicit account of the legal and factual reasons. On the sole basis of the statement of grounds of appeal, the Board had no reason to examine the grounds of inadmissible extension of subjectmatter and lack of novelty without making investigations of its own. The new objections are therefore late-filed and their admissibility is a matter of discretion by the Board pursuant to Article 13(1) RPBA. [2.2] Article 13(1) RPBA states that “Any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy”. In the present case, the [opponents] have not submitted any objective reasons justifying the filing of the grounds of added subject-matter and lack of novelty at a later stage than with the appeal (such as e.g. in direct response to new points raised by the [patent proprietors] in their reply). The attempt of the [opponents] to re-introduce these grounds thus may only be regarded as a change of position determined by procedural tactics (so-called “salami” tactics). Already on this basis, the Board considered, in view of procedural economy, that it should exercise its discretion not to admit the later-filed grounds of added subject-matter and lack of novelty. For the sake of completeness, the Board also considered whether these late-filed grounds would constitute, on a prima facie basis, a valid challenge to the patentability of the claimed subject-matter, and came to the conclusion that this was not the case. The objection of added subject-matter addressed in the letter dated 11 August 2009 1604 | 3398
T 1488/08 – Salami Cut-Off
K’s Law – The ebook
was concerned with the feature of claim 1 “when the seat back is moved to the reclined position, a top edge of the seat back is caused to be moved in a rearward direction” […]. The submission of the [opponents] in this respect focussed on the OD’s assertion in the decision under appeal , according to which the application as originally filed discloses that “the backseat [i.e. seat back] describes the trajectory of an arch”. However, claim 1 is not concerned with the trajectory of the seat back and therefore the [opponents’] objection appears to be misconceived. This also applies to the further objection under A 100(c) EPC 1973 raised with the letter dated 11 August 2009, which objection was not raised during opposition proceedings, contesting the change of the claimed subjectmatter from “a privacy and support apparatus” to “an airplane”. Indeed an airplane is undoubtedly disclosed in the application as filed. As regards the objection of lack of novelty over D2, it was based on an interpretation of claim 1 justified by the alleged added subject-matter (i.e. due to the added subject-matter, claim 1 would cover objects which were not disclosed in the application as filed, and such objects were known from D2). The objection of added subject-matter being unfounded, on a prima facie basis, the same applies to the objection of lack of novelty. The Board therefore exercised its discretion not to admit the late filed grounds of added subject-matter and lack of novelty for reasons of procedural economy. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 689/11 – Overstretched
K’s Law – The ebook
T 689/11 – Overstretched 23 Jan 2012
This decision deals with the refusal of an application claiming an interface between a packaging machine and a data storage storing a plurality of packaging specifications, for selecting at least one of them. According to the Examining Division (ED), the claimed interface aimed at implementing a business scheme and amounted to no more than a notorious general purpose networked computer system linked to a generic packaging machine as a commonplace peripheral thereof. The description did not mention any technical detail but dealt with a scheme for doing business. Therefore, no prior art search had been carried out at any stage of the application. Here is what the Board had to say: Additional search [2.1] The application was refused for lack of inventive step without a search having been performed. As set out in decision T 1242/04, an ED may raise an objection of lack of inventive step without documented prior art. That should be allowable where the objection is based on “notorious knowledge” or indisputable common general knowledge. Such cases, however are exceptional, and a search is otherwise essential. [2.2] The Board concurs with the ED in considering a networked general-purpose computer as part of notorious knowledge. However, the Board judges that the ED overstretched the concept of a notorious networked generalpurpose computer by alleging that a packaging machine constituted a commonplace peripheral of such a computer so that the notoriety of the computer system propagated to the packaging machine. Even though the application refers to packaging machines only in a generic way, the Board does not regard packaging machines as notorious components. A packaging machine is a technical device which is not a usual computer peripheral, such as a printer, keyboard, data storage, display, I/O modem or the like. [2.3] An ED should not normally refuse an application for lack of inventive step if the invention as claimed contains at least one technical feature which is not notorious (T 690/06). Therefore, it would have been necessary for the ED in this case to carry out a search into the documented prior art pertaining to packaging machines controlled by (networked) computers, and to take the result of that search into account during the examination of the application. Request for reimbursement of the appeal fee [3] According to R 103(1)(a), the appeal fee shall be reimbursed where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation. Thus, the appeal fee can only be reimbursed if a procedural violation has occurred. An error of judgement on substantive issues by the ED does not constitute a procedural violation (T 690/06 [12]). [3.1] In the present case, the ED’s reasoning that a generic packaging machine might be considered as a notorious peripheral of a networked general-purpose computer constitutes an error of judgement on a substantive issue rather than an incorrect conduct of the procedure. Therefore, the ED’s decision not to carry out a search into the prior art of the present application is not considered as a procedural violation. 3.2 Furthermore, and in contradistinction to case T 1287/04 [4.4-5], the reasoning in the refused decision is sufficient, i.e. existent in a form that can be examined by the Board and the appellant. Although prima facie containing no non-technical feature, claim 1 read in the light of the description, i.e. in the light of the objectives and advantages emphasised by the applicant itself […], can be seen to relate to an interface embedded in a commercial context. Therefore, again it was a matter of judgement for the examining division whether or not to base their reasoning on the case law developed for assessing mixtures of technical and non-technical features, e.g. T 641/00, as it is reflected in the Guidelines for Examination. 1606 | 3398
T 689/11 – Overstretched
K’s Law – The ebook
[3.3] In conclusion, the Board does not identify a substantial procedural violation and, thus, cannot order a reimbursement of the appeal fee. To download the whole decision, click here. The file wrapper can be found here.
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T 1827/07 – A Late Swiss
K’s Law – The ebook
T 1827/07 – A Late Swiss 21 Jan 2012
In this case claims 1 to 4 related to hydrophilic sulphonamide derivatives, claim 5 to their use as a medicament, claim 6 to their use for the preparation of a medicament against certain diseases, claim 7 to pharmaceutical compositions containing these compounds, and claims 8 and 9 to processes for making the compounds. The Board found the claims to involve an inventive step. It then examined the allowability of the use claim 6: [6] Claim 6 is directed to the “Use of a sulfonamide derivative according to any of claims 1-4 for the preparation of a medicament for the treatment of a neuronal disorder selected from ...”. Thus it is in the form of a “Swisstype claim”. The Enlarged Board of Appeal has decided that a claim of this type may no longer be used “Where the subjectmatter of a claim is rendered novel only by a new therapeutic use ...” (see G 02/08 [7; headnote 3]). This decision applies only to patent applications having a filing date or earliest priority date of 29 January 2011 or later (see G 02/08 [7.1.4], in combination with the "Notice from the European Patent Office dated 20 September 2010 concerning the non-acceptance of Swiss-type claims...", OJ EPO 10/2010, 514, point 4). The present application is not affected by this ruling in G 02/08, as it has a priority date of 27 September 2000. Hence, Swiss-type claim 6 may remain in the present set of claims. To download the whole decision, click here. The file wrapper can be found here.
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T 1610/08 – Honeymoon Killers
K’s Law – The ebook
T 1610/08 – Honeymoon Killers 20 Jan 2012
The patent proprietor filed an appeal against the decision of the Opposition Division to revoke the patent under consideration. By communication of 20 June 2011, the Board summoned the parties to oral proceedings (OPs) scheduled for 21 September 2011 and forwarded its provisional opinion to them. The opponent’s representative requested, by letters dated 28 June 2011 and 18 July 2011, that the OPs be postponed because he had firmly booked a honeymoon holiday that could not be rescheduled due to the wedding. The representative also pointed out that the patent proprietor’s representative supported the request and offered some arguments why he could not be replaced by a colleague:
The Board refused to postpone the OPs, for the following reasons: [3] The respondent’s request for postponement of the OPs was considered in the light of the Rules of Procedure of the Boards of Appeal (RPBA) and the Notice of the Vice-President of Directorate-General 3 dated 16 July 2007 concerning OPs before the boards of appeal of the EPO (OJ EPO 2007, Special Edition No. 3, 115), referred to as the “Notice” hereinafter. According to Article 15(2) RPBA, the Board has a discretion to allow exceptionally a change of date for OPs. In exercising its discretion, the Board has to take into account the internal organisational burden of the Board and the guidelines given to the public in the Notice. The Notice (point 2.1) lists holidays which have been firmly booked before the summons as a potential serious reason for a representative to request a change of date for OPs. Point 2.1 of the Notice has to be balanced against point 2.3 of the Notice, according to which every request for fixing another date for OPs should contain a statement why another representative within the meaning of A 133(3) or A 134 cannot substitute for the representative prevented from attending the OPs. Point 2.3 of the Notice thus makes it clear that substitution of a representative is a possible alternative to postponement. The Board is of the opinion that the circumstances indicated by the respondent with respect to point 2.3 are in fact common to all cases in which substitution is involved. When a party is represented it is a normal situation that the party trusts its representative. The same is true for the point that substitution is likely to cause additional costs to the party. The new representative normally has to prepare the case he takes over and normally has to be 1609 | 3398
T 1610/08 – Honeymoon Killers
K’s Law – The ebook
paid for his work. Also the fact that the experience acquired during the preceding opposition proceedings is unique is the usual situation when a new representative must take over the representation during an appeal in an inter partes case. If point 2.3 of the Notice was to be interpreted to mean that the reasons mentioned by the respondent would fulfil the criteria for excluding the possibility of a substitution, then the provision could never be applied and would be devoid of any meaning. This cannot reasonably be considered to have been the intention of the drafter. In the Board’s view, only extraordinary circumstances, i.e. those which are not common to every case of substitution, should be accepted. In general, a party can trust other representatives. The respondent’s letter of 14 July 2011 shows that this is also the case in the present proceedings. It was not submitted that it was impossible for other representatives to do the necessary preparation. Further, the present case does not imply special technical difficulties which might prevent the substitution of one representative having a background in the field of medical technology by another one of the numerous representatives of similar background from the same association of representatives. Nor have any particular technical, factual or legal circumstances been asserted which might warrant a different finding. As far as costs are concerned, it is the decision of the representative in charge of the case whether he will pay the substitute himself or charge the costs to his client. In any case, this is not a relevant factor for the proceedings before the EPO because it does not affect the feasibility of the substitution per se. It simply means that additional costs might arise but does not imply that the party or the representative cannot afford these additional costs. While experience of foregoing opposition proceedings can be useful, it is not necessary in order to represent a party competently before the board of appeal. No reasons have been submitted that make this case different. The Board has taken into account the fact that the appellant had indicated that it would also be convenient to him for the OPs to be rescheduled (even though he did not file a request in this respect). However, this is only one aspect among others, as indicated above, and cannot not outweigh the constraints of the internal organisational burden for the Board. For the above reasons, the Board considers that the submitted reasons do not amount to extraordinary circumstances that are not common to all cases of substitution. A party’s general desire to be represented by a specific member of an association of representatives is not considered sufficient ground for changing the date for OPs. Otherwise the provision according to point 2.3 of the Notice would have hardly any significance in practice. The Board therefore refused the respondent’s request for postponement of the OPs. Should you wish to download the whole decision, just click here. The
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T 1421/08 – Technicality
K’s Law – The ebook
T 1421/08 – Technicality 19 Jan 2012
The applicant filed an appeal against the decision of the Examining Division (ED) to refuse his application. The ED had come to the conclusion that the requests lacked an inventive step over the documents D1, D2 and the Unix utility “cat” as part of the common know ledge in the art. Claim 1 on file before the Board read: An apparatus for regenerating runtime objects, the apparatus comprising: a processor (210); and a memory (240), coupled to the processor, storing instructions adapted to be executed by the processor to: retrieve (100) object model data (1500) defining framework-specific relationships between object types of a computer application framework; access (110) a generic object navigation grammar file; incorporate (120) the object model data into the generic object navigation grammar file to produce a framework specific object navigation grammar file; provide the framework specific object navigation grammar file to a parser generator arranged to generate a rule parser (1510); parse (1610) one or more invalidation rules by utilizing the generated rule parser (1510) to check the one or more invalidation rules for syntactic correctness, the or each invalidation rule identifying relationships between development objects and runtime objects; generate a respective rule object for the or each syntactically correct invalidation rule; execute the or each rule object to invalidate one or more run time [sic] objects which are to be regenerated in response to changes made to one or more development objects; and regenerate the invalidated run time objects. In what follows, the Board discussed the technicality of the claimed subject-matter: [4] According to established jurisprudence of the boards of appeal the claims – directed towards apparatus and computer-implemented methods, respectively – define inventions within the meaning of A 52 (see G 3/08 [10.7]). This is not under dispute. [5] The central point at stake however is which technical effects can be attributed to the claimed matter and which technical contribution the claimed matter makes over the prior art. [5.1] The primary purpose of the claims according to the main request, witness the preamble and the last feature of both independent claims, is the regeneration of runtime objects in response to changes made to development objects. This is part of what is conventionally called the “build process” of a software application. [5.2] The feature claiming regeneration of runtime objects determines the nature of the claimed invention and is, therefore, central for the assessment of patentability. The board notes that this feature was not contained in the claims subject to the appealed decision but added to the claims filed with the grounds of appeal. [5.3] Determining which runtime objects need to be regenerated in an individual case in view of regenerating only those rather than all of them contributes to limiting the resources needed for a particular build. The board con siders this as a technical effect. Therefore, according to established jurisprudence of the boards of appeal, the features contributing to this effect must be taken into account for the assessment of inventive step (see T 641/00 [headnote 1]). [5.4] According to the claims, the grammar relates to how the syntax of invalidation rules is defined, the parser generator to how the syntactic correctness of the invalidation rules so defined is verified, and the object rules to how the syntactically correct invalidation rules are used so as to identify invalidated runtime objects. These features do not have an immediate impact on the increased efficiency of the build process if and insofar as the invalidation rules and the runtime objects to be regenerated remain unchanged.
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T 1421/08 – Technicality
K’s Law – The ebook
[5.5] Further, the board cannot agree with the appellant that “the way in which the invalidation rules are parsed” or “in which the parser is generated” must “take into account the nature of the relationships between the development and runtime objects”, or “the nature” or “the purpose of the invalidation rules” […]. According to conventional understanding in the art, the parsing does not depend on the nature of these relationships but only on the way they are represented within the grammar, for instance in that the form of a grammar has an impact on whether it can be processed by a particular kind of parser or within specific time or space constraints. [5.6] However the board considers that the utilisation of a grammar, a parser generator and rule objects enables the software developer to exercise control over the build process and over the extent to and the ease with which the relevant effect is actually achieved. [5.7] The board is of the opinion that within a claimed invention having a primary technical effect, features enabling and supporting control of that effect will typically have technical character as well. In consequence, the board concludes that the fact that a grammar, a parser generator and rule objects are used within the context of regenerating runtime objects contributes to the technical character of independent claims of 1 and 9 of the main request and therefore may also contribute to inventive step. The case was finally remitted to the ED for further prosecution. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1612 | 3398
T 1864/09 – One Or The Other
K’s Law – The ebook
T 1864/09 – One Or The Other 18 Jan 2012
This decision also contains an interesting statement on remittals pursuant to A 111(1). Having found both requests on file to lack inventive step, the Board had to deal with the request to remit the case to the Examining Division (ED) . *** Translation of the German original *** [6] The request for remittal pursuant to A 111(1) could not be granted, for the following reasons. [6.1] This request, which had already been filed during the written proceedings (written submission of July 17, 2009) and in view of which the Board, in the annex to the summons dated January 12, 2010, pointed out that “it will have to be discussed whether the case may have to be remitted to the ED” […] at first was not pursued in the oral proceedings (OPs). A request for remittal was again made at the end of the OPs, at a time when the substantive examination had already been terminated. During this substantive examination, in which [the Board] acted as if it was the ED pursuant to A 111(1), second sentence, first half sentence, the subject-matter of claim 1 according to the main request, which had been amended following its discussion during the OPs, was extensively examined as to its compliance with the requirements of A 56 and A 84 (inventive step and clarity) ; the same holds true for claim 1 according to the auxiliary request. [6.2] The request for remittal, according to the second way in which a Board of appeal may proceed, which is mentioned in A 111(1), second sentence, second half sentence, therefore, has been made at a time when the examination according to the first option of this article had already been terminated. [6.3] As a consequence, the request for remittal could not succeed, on procedural grounds alone, because the EPC does not establish the right to have a Board act along both options mentioned in A 111(1) during examination appeal proceedings. [6.4] Nor could the request succeed on factual grounds. It is true indeed, as argued by the appellant, that the impugned decision has been based on lack of clarity and lack of novelty only and that the amendment of the claims has restored novelty. However, […] in view of the claims to be examined, the factual situation is not completely new with respect to the factual situation underlying the impugned decision. The same holds true for the prior art to be taken into account for the examination of inventive step. Besides document D1/D2, which has already been taken into account for the examination of novelty in the examining proceedings, only document D4, which had been referred to as closest prior art in the present application and which had the same applicant as the present application, has been taken into account. Therefore, contrary to the appellant’s opinion, no new aspects which would justify a remittal have arisen during the appeal proceedings. [6.5] Finally, it has to be noted, for the sake of completeness, that the appellant already had the opportunity to carry out the amendment within the framework of the examination of novelty and clarity before the ED, at least as an auxiliary request, as he has done during the appeal proceedings. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
1613 | 3398
T 1864/09 – Irrelevant Alternatives
K’s Law – The ebook
T 1864/09 – Irrelevant Alternatives 17 Jan 2012
When trying to establish the existence of an inventive step, attorneys sometimes argue that the skilled person would not have done this or that because there was a well-known path he would rather have chosen when trying to solve the problem under consideration. Depending on the concrete circumstances, there may be some truth to this, but the present decision shows that the argument will not always work. If you hate mechanics, you better not read on. The applicant filed an appeal against the decision of the Examining Division to refuse his application. Claim 1 of the main request before the Board read (in English translation): Power tool (1) having a drive motor (2) and a flange (3) connected to it so that it can be driven, wherein a disk (5), in particular a grinding disk (Frässcheibe) or a separating disk (Trennscheibe), which can be attached so that it is hindered from rotating (drehfest anbringbar) and to which at least one transmission body (11) projecting from the flange (3) is moulded, characterised in that the outer contour of the transmission body (11) has an oval or ellipsoid shape and, when the disk (5) is mounted on the flange (3), [said outer contour] is curved in the direction of the circumference of the disk, in that the transmission body (11) is inclined with respect to the direction of the circumference of the disk (5), in that the disk (5) comprises at least one recess (12) having an oval or ellipsoid shape, wherein the recess is inclined towards the direction of rotation (8) of the disk (5) and curved and has an inner contour that matches the outer contour of the transmission body (11), in that the position of the transmission body (11) matches the corresponding position of the recess (12), in that, when the disk (5) is mounted, the transmission body (11) of the flange (3) is supported in a tight-fit fashion (formschlüssig) by the inner contour of the recess (12) of the disk (5), in that the disk (5) comprises a through bore (9) that is tapered conically towards the drive motor and into which a bolt (7) can be inserted, and in that the bolt (7) can be screwed into a threaded hole (6) provided in the flange (3), such that the head of the bolt (7) is positioned in the conically tapered through bore (9) of the disk (5) and the free ends of the transmission bodies (11) and of the bolt (7) extend through the planes defined by the disk (5).
1614 | 3398
T 1864/09 – Irrelevant Alternatives
K’s Law – The ebook
The Board found claim 1 to differ from prior art document D4 by five distinguishing features: (a) the outer contour of the transmission body has an oval or ellipsoid shape; (b) when the disk is mounted on the flange, the outer contour is curved in the direction of the circumference of the disk; (c) the transmission body is inclined with respect to the direction of the circumference of the disk; (d) the disk comprises at least one recess having an oval or ellipsoid shape that is inclined towards the direction of rotation of the disk and curved; and (e) the bolt can be screwed into a threaded hole provided in the flange. The following paragraphs are taken from the Board’s discussion of the inventive step of this claim. *** Translation of the German original *** Effect of the distinguishing features [4.3.1] According to the understanding of the appellant, which the Board considers to be correct and supported by the description of the application under consideration, the features (a) to (d) have the effect that the disk can be positioned precisely on the flange […]. As far as the at least one transmission body of the flange is concerned, the features (a) and (b) define its shape (in a sectional plane) and feature (c) defines its arrangement. Feature (d) defines the corresponding [properties] of the at least one recess of the disk. As regards the understanding of features (a) to (c) the Board – in favour of the appellant – bases its reasoning on the understanding that the outer contour of the transmission body at first has the basic shape of an oval or an ellipse (feature (a)) and that it is subsequently shaped in such a way that the transmission body is (over at least part of its length) curved in the direction of the circumference (feature (b)) and that the transmission body is arranged in such a way that it is inclined with respect to the direction of the circumference (feature (c)). The same holds true for the shape and the arrangement of the recess in the disk.
1615 | 3398
T 1864/09 – Irrelevant Alternatives
K’s Law – The ebook
As a consequence of this shape and arrangement of the at least one transmission body and the corresponding recess an interaction between the transmission body (or several transmission bodies) and the corresponding recess(es) is possible only if the disk is fit to the flange when the correct side of the disk faces the flange. [4.3.2] Distinguishing feature (e) corresponds to an embodiment that differs – from a constructive point of view – from a power tool according to D4 by the way in which the bolt is screwed into the tool. Feature (e) was not discussed during the oral proceedings. It does not have any influence on the effect of the distinguishing features (a) to (d) and, when combined with the other features of claim 1, apparently does not give rise to any effect that has to be taken into account when inventive step is assessed. The problem [4.4] Considering the power tool according to the closest prior art D4 and taking into account the above mentioned effect of the distinguishing features (a) to (d), the problem to be solved corresponds to the first partial problem […], i.e. to adapt the known power tool such that the disk can be positioned precisely on a predetermined position of the flange. The first partial problem is solved by a power tool having an appropriate shape of the flange, comprising at least one transmission body and the corresponding shape of the disk, comprising at least one recess, according to claim 1. Obviousness [4.5] When, depending on the way and the application in which the power tool according to D4 is used, [the skilled person] is confronted with the problem of positioning a disk precisely on a predetermined position of the flange, or in other words, of avoiding that the disk can be positioned on the flange in a position that is different from the precisely predetermined position, then it would be obvious to solve the first partial problem by arranging the known elements by which the disk is positioned on the flange, i.e. the pins, which have a circular cross-section and which are arranged symmetrically with respect to the centre of the flange, as well as the corresponding recesses, in an asymmetrical manner, so that the disk can be fit to the flange only from one particular side. [4.5.1] In this context the Board agrees with the opinion of the appellant according to which there was a simple way of solving the partial problem in a way that differed from claim 1 and which allowed to keep the circular cross-section. If, as in D4 (Fig. 1), there were two pins, it was sufficient to asymmetrically arrange the two pins of the flange and the two recesses on the corresponding disk rather than having a symmetrical arrangement (in the circumferential direction) as in D4.
1616 | 3398
T 1864/09 – Irrelevant Alternatives
K’s Law – The ebook
[4.5.2] However, the Board cannot endorse the further argumentation of the appellant, according to which, considering said obvious solution to the first partial problem, the different solution according to claim 1 cannot be considered to be obvious. The Board is of the opinion that the present circumstance that, when starting from the power tool according to D4, there is another, obvious solution, which is different from the solution according to claim 1, cannot as such automatically lead to the conclusion that a further solution, such as the one of claim 1, is to be held non obvious. [4.5.3] In the Board’s view, as far as the solution to the first partial problem according to claim 1 is concerned, and irrespective of any further obvious solutions, it rather has to be examined to which extent the solution according to claim 1 as such can be considered to involve an inventive step when starting from the closest prior art D4 and taking into account the remaining prior art, here D1/D2. Prior art document D1/D2 discloses a power tool comprising a disk that can be fitted onto a flange, which is comparable in view of the allocation of a disk to a flange, and, therefore, in view of the first partial problem to be solved (cf. […] D1, figures 2 and 6).
When starting from the power tool according to D4, the skilled person would consider document D1/D2 because this document also aims at solving a problem that corresponds to the first partial problem. According to D1/D2, each transmission body and, accordingly, each recess that is associated with it, is arranged asymmetrically on the flange […]. According to an embodiment of D1/D2, one transmission body has a triangular shape and another has a U-shape, and the recesses in the disk have a corresponding shape […]. The transmission body and the recess, therefore, lead to an asymmetric configuration only because of their shape and arrangement – there is no need for an inclined arrangement of the triangular transmission body and the recess according to feature (c) […]. The effect is that the disk can be fit to the flange only from one particular side. The Board is of the opinion that, starting from the power tool according to D4 and considering the way in which D1/D2 has solved the first partial problem, it is to be considered obvious to arrange the transmission bodies having a circular cross section according to D4, in an asymmetrical manner, by changing their cross sectional shape, taking into account the approach according to D1/D2. It also has to be taken into account – as explained by the Board during the oral proceedings – that the features (a) to (c) of claim 1 concerning the shape and arrangement of the transmission body contribute to the solution to the first partial problem only to the extent that they lead to an asymmetrical arrangement of the transmission body on the flange. The same holds true for the disk, in view of feature (d). The shape or the arrangement of the transmission body (or the recess, respectively) does not contribute to the solution of the first partial problem beyond that point. In this regard, the shape and the arrangement of the transmission body (and, in analogous manner, of the recess), such as, for instance, a kidney-shaped design, which features (a), (b) and (d) aim at, according to the appellant, are irrelevant and, therefore, arbitrary, if only the asymmetrical arrangement is maintained. [4.5.4] As a consequence, the features (a), (b) and (d), which are directed to specific – not necessarily asymmetric – cross sectional shapes of the transmission body and the recess, cannot, neither alone nor in combination with the remaining features of claim 1, lead to subject-matter that involves an inventive step, because, as already explained, the cross-sectional shapes defined by those features cannot be ascribed any further
1617 | 3398
T 1864/09 – Irrelevant Alternatives
K’s Law – The ebook
effect beyond their asymmetrical arrangement according to feature (c) in view of the first partial problem to be solved. [4.5.5] For the sake of completeness, it has to be noted in this context that, starting from the circular cross section of the transmission bodies according to D4, and taking into account the triangular cross section according to D1/D2, the transformation of the known spherical cross section into an oval one appears to be obvious. As a consequence, the whole power tool according to claim 1 does not involve an inventive step within the meaning of A 56 over the closest prior art D4 of the further prior art according to D1/D2 is taken into account for solving the first partial problem. [4.6] The above result also holds true if the further arguments of the appellant are taken into account. [4.6.1] The further main argument of the appellant is based on a further effect of the features (a) and (d) within the combination of features of claim 1, which goes beyond the solution of the first partial problem and solves the second partial problem concerning the connection for operating the drive (triebliche Wirkverbindung) […]. According to this second problem of the present application […] an appropriate (gattungsgemäß) power tool is to be developed in such a way that the connection for operating the drive is both reliable and permanently available. [4.6.2] The appellant is of the opinion that this problem is solved because, as explained in the description […] the transmission bodies fit without clearance to the recesses where the force is transmitted, which results in the torque of the flange being optimally transmitted without there being any abrupt stresses or peak values of shear forces resulting therefrom. Moreover, as also stated in the description […] the available surface on which the torques act, is considerably increased by the inclined arrangement of the transmission bodies and recesses according to features (b), (c) and (d). [4.6.3] Neither D4 nor D1/D2 contained any suggestion to shape and arrange the at least one transmission body and the corresponding recess according to features (a) to (d) in such a way that the power transmission via the at least one transmission body and the corresponding recess was also improved in view of solving the second partial problem. Document D4 only disclosed in this respect that two shear pins extending through corresponding through holes in the grinding disk were provided for the power transmission […]. As explained in the present application, the diameter of each recess was to be greater than the diameter of the corresponding pin in order to correct any manufacturing inaccuracies. In particular when the power tool was switched on and off, there would be strokes because the clearances resulting therefrom had to be overcome, and these strokes would lead to increased shear forces […] and could result in increased wear [4.6.4] Moreover, the shape and arrangement of the at least one transmission body and the corresponding recess according to features (a) to (d) would greatly increase the available surface on which the torques could act […] so that the surface pressure between the transmission body and the recess was advantageously reduced. [4.6.5] As regards the interaction between the transmission bodies and the recesses, D1/D2 only taught that the disk could be positioned precisely on a predetermined position of the flange thanks to an appropriate design and arrangement of these elements. According to this document, a further flange was provided between the flange and the disk for the power transmission (see figure 1 of D2 […]; there was no statement in D1/D2 on any interaction between the transmission body and the recesses in view of the power transmission. [4.6.6] As a consequence, a combination of documents D4 and D1/D2 would not have led to the design and arrangement of the at least one transmission body and the corresponding recess according to features (a) to (d) in view of improving the co-operation of these elements to the transmission of power from the driven flange to the disk. [4.7] Regarding this line of argument directed at the solution of a second partial problem, the Board is of the opinion that, as far as the assessment of inventive step is concerned, it may remain unanswered to which extent the power tool according to claim 1 may be considered obvious over the present prior art as solution to the second problem, when, as explained above […] the whole claimed power tool does not involve an inventive step as solution to the first problem over the present prior art.
1618 | 3398
T 1864/09 – Irrelevant Alternatives
K’s Law – The ebook
[4.7.1] Moreover, the Board is of the opinion that, taking into account the corresponding arguments of the appellant, the power tool of claim 1 is to be considered obvious with respect to documents D4 and D1/D2 even if, as argued by the appellant, the second partial problem is taken into account. First of all, as regards the power tool defined in claim 1, it is questionable to which extent the mentioned effects (absence of clearance, increased surface for power transmission) can be derived from the combination of claim 1 with the features (a) to (d). As far as the allocation of the transmission bodies to the recesses without any clearance is concerned, claim 1 – as explained by the Board during the oral proceedings – does not contain any explicit indication. The same holds true for the greatly increased surface that is said to be available for the transmission of power, because claim 1 does not contain any definition regarding the dimension of the cross sectional areas of the transmission bodies and the recesses, respectively, nor does it define the extent of the inclined positioning of those elements. [4.7.2] But even if it is considered, in favour of the appellant, that these effects are indeed obtained as a consequence of the combination of features of claim 1, the line of arguments based thereon is not persuasive. The Board is of the opinion that it may indeed remain unanswered to which extent document D1/D2 teaches that, as contested by the appellant, the transmission bodies and recesses of the embodiment according to figures 6(a) and 6(b) (in connection with figure 2) of D1 contribute to the power transmission from the driven flange to the disk. [4.7.3] As a matter of fact, in view of the contribution of the at least one transmission body and the corresponding recess, it has to be taken into account that in the power tool according to D4, these elements already co-operate in the way in which they were said to co-operate in the argumentation of the appellant in view of the power tool according to claim 1. In this respect, D4 explains that “for the transmission of power, two shear pins are provided on the driving shaft 5 and extend through corresponding through holes in the grinding disk 4” […]. One has to consider that the skilled person, when designing the transmission bodies and the recesses asymmetrically, according to D4 taking into account the approach according to D1/D2 […], would not modify the power transmission via those elements, not only because of the explicit reference to this way of transmitting power in D4, but only because in the power tool according to D4, according to the approach of claim 1 […] the disk is held on its side that is opposite to the drive motor only by means of a fixing screw (see D4, figure 1). Therefore, a power tool according to the closest prior art, similar to a power tool according to the present application (figure 1) and contrary to the one of D1/D2 (cf. figure 2) does not have a second flange which could also serve for power transmission. [4.7.4] For the sake of completeness, it should be noted that the skilled person further developing the closest prior art in order to solve a technical problem, here the first partial problem, has no reason to carry out modifications that do not contribute to the solution of the problem, in the present case by modifying the shape of the at least one transmission body and the corresponding recess. This is particularly true when, as in the present case, the modification would considerably change the construction of the power tool because it would modify the constructive elements serving the power transmission. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
1619 | 3398
T 606/08 – Crystal Clear
K’s Law – The ebook
T 606/08 – Crystal Clear 16 Jan 2012
When a claim is amended based on parts of the description, is it necessary to incorporate all the features disclosed in that part? The answer is no, for the features the skilled person would understand to be inessential, as explained in T 331/87 (criticized in T 910/03, but see also T 404/03 [11]). The present case reminds us that there is another case to be considered: the deletion of a feature in a claim is admissible if the sole purpose of such deletion is to clarify and/or resolve an inconsistency. (T 172/82). The application as filed concerned an “amorphous diamond coating of blades”. Claim 1 as granted read: A process for forming a razor blade wherein a layer of amorphous diamond (60) is deposited on a substrate (50), comprising the steps of: (a) providing a substrate; (b) forming a wedge-shaped sharpened edge on said substrate that has an included angle of less than thirty degrees and a tip (52) radius of less than 1,200 angstroms; and characterized by (c) depositing a layer (60) of amorphous diamond on said sharpened edge; applying an initial high bias to the substrate (50) during deposition, and then applying a second lower bias to the substrate during deposition. The patent was revoked by the Opposition Division. Claim 1 of the main request before the Board read (the underlined parts are amendments with respect to claim 1 as granted): A process for forming a razor blade wherein a layer of amorphous diamond (60) is deposited on a substrate (50) using a cathodic arc source, comprising the steps of: (a) providing a substrate; (b) forming a wedge-shaped sharpened edge on said substrate that has an included angle of less than thirty degrees and a tip (52) radius of less than 1,200 angstroms; and characterized by (c) depositing a layer (60) of amorphous diamond on said sharpened edge; applying an initial high bias in the range of 200 to 2000 Volts to the substrate (50) during deposition for up to two minutes to establish adhesion, and then applying a second lower bias in the range of 10 to 200 Volts to the substrate during deposition to optimize the structure of the amorphous diamond coating. This amendment was based on page 13, lines 25 to 32 of the application as filed:
1620 | 3398
T 606/08 – Crystal Clear
K’s Law – The ebook
Will the Board accept the amendment? [1.1] Process claim 1 of the main request has been restricted to the use of a cathodic arc source; it is based on original claims 1 and 6 in combination with the bias voltage ranges of the two deposition steps taken from page 13, lines 25 to 32 of the application as originally filed (corresponding to the published D5). The deposition steps are disclosed as: “An initial high bias in the range of 200-2000 volts is applied to the substrate during deposition for up to two minutes to establish adhesion. A second stage lower bias in the range of 10-200 volts is then applied to optimize the structure of the amorphous diamond hard carbon coating and to establish the desired crystal structure” (emphasis added by the Board). [1.1.1] It goes without saying that said bias voltage values are negative so that the missing minus signs need not be incorporated into claim 1. [1.1.2] The omission of the feature “to establish the desired crystal structure” in the amendment, which the Board in point 4 of its communication considered to be inconsistent with the definition “amorphous diamond”, is in the present case, in line with decision T 172/82, not to be objected under A 123(2) since its inclusion would result in an inconsistency contrary to A 84. Amorphous diamond normally does not have a crystal structure. [1.1.3] There exists also no need to incorporate the term “hard carbon” after the expression “amorphous diamond” […] since it is clear that the resulting amorphous diamond coating is a particularly hard carbon (see patent, paragraph [0007]). The omission of the term “hard carbon” from the amendment thus complies with A 123(2). [1.1.4] The aforementioned passage […] is the only one in the description of D5 (the same holds true for the claims dependent upon claim 1 as originally filed) which discloses these – originally preferred – two bias voltage ranges and is taken from the paragraph named “Process Conditions and Adjustments.” This passage is preceded by the statement “Process conditions include a multi-step bias to the substrate; an equal average deposition on both sides of the blade; and attention to the angle of presentation” (see D5, page 13, lines 20 to 32). Consequently, according to this more general disclosure the multi-step bias is to be combined with an equal average deposition on both sides of the substrate (see also page 14, lines 1 to 3, lines 7 to 9 and lines 29 to 32) and a specific angle of presentation of the substrate to the arc source. This angle is either measured from a line normal to the plane formed by the tips of stacked blades or from the line bisecting the angle enclosed by the tip and the first and second inclined surfaces of the cutting edge of an unstacked blade (see page 15, lines 12 to 23). This disclosure is also in line with the single example of a particular processing sequence (see page 9, line 9 to page 12, line 8). [1.1.5] The result of this amendment is that claim 1 of the main request – which is now not restricted to depositing a layer of amorphous diamond “at an equal rate or simultaneously on both sides of the substrate” nor 1621 | 3398
T 606/08 – Crystal Clear
K’s Law – The ebook
to a definition of the angle of presentation – contravenes A 123(2), as it has selectively taken up only the bias voltage ranges from the description as originally filed. This amounts to an unallowable “intermediate generalisation” of the two passages disclosed in D5 at page 13, lines 21 to 24 and at page 13, lines 25 to 32 since the two-step bias deposition without the above mentioned two features is not directly and unambiguously derivable from D5. A preliminary conclusion to this effect had already been drawn in point 4 of the Board’s communication annexed to its summons to oral proceedings. [1.1.6] The arguments of the appellant to the contrary cannot hold for the following reasons. An argument is that the equal deposition on both sides of the substrate and the angle of presentation of the substrate to the cathodic arc source do not represent essential features of the claimed process. However, this is contradicted by the aforementioned passage of page 13, lines 20 to 24 relating to the process conditions, which include both features. The amendment is therefore not directly and unambiguously derivable from the application as originally filed. The quoted statement concerning “an uneven or unbalanced layering” (see D5, page 15, lines 8 to 11) does not support the suggestion that the invention could involve the deposition of an amorphous diamond coating on one side of the substrate only. It has to be seen in the context of the disclosure of the whole paragraph comprising it and to which it is restricted. This paragraph, however, deals with preferred forms of depositing the amorphous diamond coating in a thickness of 1000 angstroms on both sides of a blade stack, i.e. several substrates, either by a simultaneous deposition on both sides or a cyclic alternation on the first and second side of the substrate until the desired thickness is built up on both sides (see page 14, line 33 to page 15, line 8). In the Board’s view this statement makes only sense in the context of the cyclic alternation embodiment – if there is a simultaneous deposition than there should be equal deposition on both sides of the substrate due to the movement of the substrate or the blade stacks - and could be interpreted as meaning that the cycle lengths for each of the two sides may be different so that the individual intermediate layers produced on the first side of the substrate after a first cycle and on the second side after the second cycle can have different thicknesses (e.g. it may be 100 angstroms on the first side of the substrate after a first coating cycle while that on the second side after the second coating cycle may be 500 angstroms, etc. and so on up to a final total thickness of e.g. 1000 angstroms). This statement, however, does not necessarily imply that the final desired coating thickness on both sides must be different. [1.1.7] Claim 1 of the main request is therefore not allowable. To download the whole decision, click here. The file wrapper can be found here.
1622 | 3398
T 1803/09 – Wrong Approach
K’s Law – The ebook
T 1803/09 – Wrong Approach 14 Jan 2012
The applicant filed an appeal against the decision of the Examining Division refusing its application. Claim 1 of the main request before the Board read: 1. A method for predicting cardiac mortality in a chronic congestive heart failure (CHF) patient, said method comprising the steps of: (A) assaying for the presence of a cardiac marker of cell injury in a body fluid sample drawn from said patient using: a first antibody that specifically binds to a cardiac marker of cell injury, wherein said cardiac marker of cell injury is cardiac Troponin-I; and (B) assaying for the presence of a marker of organ adaptation in a body fluid sample drawn from said patient using: a second antibody that specifically binds to said marker of organ adaptation, wherein said marker of organ adaptation is selected from the group consisting of ANP, N-terminal ANP, BNP, N-terminal BNP and CNP, wherein when both said marker of cell injury and said marker of organ adaptation are present in said sample at significantly increased levels as compared to control samples from normal individuals, said patient is predicted to have an increased prognosis of cardiac mortality. (my emphasis) There was agreement on the fact that the subject-matter of this claim was not explicitly disclosed in the application as filed, but the applicant pointed out that the disclosure was implicit. The Board won’t have it: [7] The appellant does not contest the absence of an explicit disclosure of the subject-matter of claim 1 […] in the application as filed, but its argumentation relies on an implicit disclosure of this subject-matter which, in the appellant’s view, is directly and unambiguously derivable from the application as filed when taken as a whole, the specific teachings of the Example assisting the skilled person to understand the general disclosure (T 40/97), and from the fact that said disclosure and teachings would prompt the skilled person to seriously contemplate the use of the claimed combinations of markers in the method of the Main Request or of Auxiliary Requests 1 to 3 in chronic CHF patients (T 187/91 and T 296/96). [7.1] The board agrees with the appellant that the entire disclosure of the application as filed is focused on the heart as the organ of study and, in particular, on CHF. However, as stated in the application as filed when acknowledging prior art concerned with CHF […], various and different causes may be at the origin of CHF and, although some of them may be shared by both acute and chronic CHF, these two conditions are differentiable and distinguished – albeit, admittedly, broadly defined. Thus, contrary to the appellant’s view, the term “CHF” as used in the application as filed can not always be, only and exclusively, equated to “chronic CHF”. Although the former term includes the latter, it is much broader and includes other conditions, such as “acute CHF”. [7.2] The board does not share the appellant’s view that the tests and methods disclosed in the application as filed for use in CHF patients are appropriate only for “chronic CHF” and not for “acute CHF”. Early, preliminary diagnosis methods may distinguish and differentiate patients with one of these conditions. Likewise, methods may be developed for monitoring the long-term management (efficacy of therapeutic agents) of each of these two CHF conditions. Indeed, the references in the application as filed to “methods for distinguishing CHF” may be interpreted as referring to methods for distinguishing CHF from other heart failures as well as methods for distinguishing – at an early, preliminary stage – different CHF conditions. If at all, these references are ambiguous. It is worth noting here that not all tests and methods referred to in the application as filed are necessarily concerned with the prediction of CHF mortality. A test for early, preliminary diagnosis for CHF may well inform about the specific type of CHF condition but may be of limited value, or of no value at all, for the prediction of the severity or mortality of this condition. [7.3] Although the sole method exemplified in the application as filed refers to criteria for selecting markers of cell injury and organ adaptation having elevated levels in CHF patients, it is also explicitly stated that 1623 | 3398
T 1803/09 – Wrong Approach
K’s Law – The ebook
“(h)owever in patients with chronic heart failure, it is unclear whether there is a relationship between either elevated levels of cTnI alone, or in conjunction with elevated levels of proANP, and survival” (emphasis added by the board) […]. Although this uncertainty is set aside for the specific marker combination disclosed in the Example, the board does not see the results reported in the Example for cTnI and pro-ANP to be directly and unambiguously transferable to all other possible combinations of markers fulfilling said criteria. Indeed and contrary to the appellant’s view, the same uncertainty remains for other markers, their possible combination does not necessarily have to provide similar or identical results to those obtained with cTnI and pro-ANP. If at all, the sentence referred to above is ambiguous. The results shown in the Example may well render the combination of other markers obvious or, in other words, they may be for the skilled person obvious to try but this is not a criteria to apply under A 123(2). These combinations are not a direct and unambiguous consequence of the results shown in the Example nor a consequence directly and unambiguously derivable from the application as filed when taken as a whole. [7.4] Thus, not all tissue or organ failures, damages or diseases within the above identified group A) can be directly and unambiguously equated to “chronic CHF” […]. Likewise, not all subject-matter within the above identified group C) can be directly and unambiguously understood as relating to mortality prediction for chronic CHF patients […]. Moreover, on the basis of the results shown in the Example of the application as filed, not all possible marker combinations within the above identified group B) can be seen as being directly and unambiguously interchangeable in the method of that Example […]. The identification of three groups of interrelated subject-matter and the different levels of generalization for each of them is not artificial and inappropriate but it is clearly derivable from the application as filed taken as a whole. When reading the application as filed, the skilled person would not recognize that the feature “chronic CHF” is equally applicable to “all marker combinations” disclosed in the application, let alone that all marker combinations might be useful “for predicting cardiac mortality” in a patient with this specific CHF condition. This reading can only arise when using the disclosure of the application as filed as a large reservoir from which parts are arbitrarily taken and combined. Such a reading, however, is not allowable under A 123(2) […]. [8] Thus, there is no implicit disclosure in the application as filed of the subject-matter of claim 1 […]. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1624 | 3398
T 692/09 – No Experiments Needed
K’s Law – The ebook
T 692/09 – No Experiments Needed 13 Jan 2012
The appeal was filed by the opponent whose opposition had been rejected by the Opposition Division. Claim 1 as granted read: 1. A laundry detergent composition comprising a bleach system which contains a hydrogen peroxide source and at least 2.5% by weight of a peroxyacid bleach precursor, at least 15% by weight of a carbonate source, which may include the hydrogen peroxide source, at least 7% by weight of an acid, preferably an organic acid, whereby a 1% by weight mixture of the composition in demineralised water provides a pH from 8.8 to 9.9, and which further comprises an anionic surfactant. The decisive question before the Board was whether this claim involved an inventive step: [2.1] Claim 1 of the patent-in-suit […] defines a GP laundry detergent composition (i.e. a laundry detergent composition generating in situ peroxyacid bleach) containing a hydrogen peroxide source, a peroxyacid bleach precursor (at least 2.5% by weight), a carbonate source (at least 15% by weight) which may simultaneously be the hydrogen peroxide source, an acid (at least 7% by weight) and an anionic surfactant, whereby a 1% by weight mixture of the composition in demineralised water provides a pH of from 8.8 to 9.9. [2.2] In order to correctly identify the prior art of departure for the assessment of inventive step it is necessary to consider the statements contained in the patent-in-suit as to the technical problem addressed by the invention. [2.2.1] The Board notes that paragraphs [0002] to [0008] of the patent-in-suit describe the background of the invention by referring to difficulties in formulating GP laundry compositions (i.e. composition in which a peroxyacid bleach is generated in situ from a precursor thereof and from a source of hydrogen peroxide) capable of providing efficient sanitisation simultaneously with excellent cleaning. These difficulties are attributed to the fact that while an highly alkaline pH is necessary for generating the peroxyacid bleach and favoured by certain conventional ingredients of GP laundry compositions (such as percarbonate or certain builders), the same highly alkaline pH is also known to promote dissociation of the acid form of the peroxyacid required for sanitisation. Consistently, the technical problem underlying the invention is then identified in paragraph [0009] of the patentin-suit as that of providing “efficient antimicrobial performance and/or sanitisation whilst a good cleaning of both bleachable and non-bleachable stains is achieved”. The patent-in-suit provides examples of the patented compositions. Some quantitative information on the level of biocidal activity aimed at is provided in paragraphs [0016] to [0019] of the patent-in-suit that describe a standard method for measuring the activity of microorganisms and a list of the relevant microorganisms, identify the minimum concentration at which the laundry composition should be used relative to the initial concentration of microorganisms and define some specified minima for the reduction in microorganism activity to be observed. [2.2.2] The Board considers appropriate to stress that this description of the addressed problem of the background art given in the patent-in-suit appears consistent with the common general knowledge as derivable from the available non-patent literature of documents D12, D14 and D18. These citations confirm indeed that the skilled person would know that in the case of GP laundry compositions the acid form of the peroxyacid prevailing at lower pH is in general much more effective in providing sanitisation than its anionic form prevailing under alkaline conditions […]. Moreover, document D18 explicitly recognises that there is a necessity of “potentiating” the sanitising activity of the peroxyacid anion in the alkaline wash baths […], thereby implicitly confirming the existence of difficulties in achieving good sanitisation under the alkaline conditions required for peroxyacid generation and good bleaching. [2.2.3] Hence, the skilled reader of the whole patent disclosure is correctly reminded of the existing common general knowledge as to the fact that the GP laundry compositions of the prior art containing a carbonate source that produce highly alkaline wash baths and result in good bleaching normally do not provide satisfactory sanitisation. Accordingly, the skilled person can only reasonably interpret the aimed “efficient antimicrobial performance and/or sanitisation” indicated in paragraph [0009] of the patent-in-suit as a level of sanitisation superior to that expected for the GP laundry compositions containing a carbonate source that produce highly 1625 | 3398
T 692/09 – No Experiments Needed
K’s Law – The ebook
alkaline wash baths. Hereinafter the aimed combination of good levels of sanitisation and bleaching is also indicated as efficient sanitisation with good bleaching. [2.3] The [opponents] have considered reasonable to assess inventive step starting from any of the two examples of departure […]. In view of the technical problem indicated in the patent-in-suit and discussed above, and considering that:
both these prior art examples are GP laundry compositions containing a carbonate source and providing good cleaning […] and that the subject-matter of claim 1 of the patent-in-suit only differs from example 1A of document D1 as well as from example 1 of document D3 in that claim 1 requires a 1% by weight mixture of the patented laundry composition in demineralised water to have a pH of from 8.8 to 9.9,
the Board concurs with the [opponents] that it was reasonable for a skilled person to start from one or the other of these prior art examples. [2.4] In a first line of reasoning in view of A 56, the [opponents] have combined each of the two examples of departure with the document D9 or with document D11. In particular, they have considered that, in the absence of any experimental data demonstrating the superior sanitising effect of the patented composition in comparison to those observable in one or the other of the two examples of departure, the statement as to the efficient sanitisation in paragraphs [0008] and [0009] of the patent-in-suit would just be an allegation of an improvement that, as indicated e.g. in the decision of the Boards of Appeal T 1392/04 [20], required experimental evidence in order to be considered for the assessment of inventive step. Since it would not be credible that the patented GP laundry compositions provided a level of sanitisation superior to that of the prior art of departure, the subject-matter of claim 1 of the patent-in-suit represented just an optimization of the prior art, optimization that was rendered obvious by the combination of one or the other of the two examples of departure with document D9 or D11. [2.4.1] The Board notes however that the referred passage in T 1392/04 only relates to the credibility of a statement of the patent proprietor that the patented subject-matter would provide an improvement of “some particular property of the closest prior art” (emphasis added by this Board), i.e. an improvement of one of the properties already disclosed in the prior art (such as those indicated at point [13] of the Reasons in this decision). [2.4.2] The content of T 1392/04 [20] is, thus, not similar to the issue raised by the present case wherein, as argued by the patent proprietor, the skilled reader of the relevant prior art document would not know if the examples of departure also provide an efficient sanitisation or not. Indeed, the absence of specific information in documents D1 or D3 as to the (final) pH of the wash baths produced when using one or the other of the two examples of departure, and the fact that it is not even possible to presume that these examples produce a 1% by weight wash bath with a pH in the range of 8.8 to 9.9 (and, thus, necessarily obtain the aimed combination of efficient sanitisation with good bleaching) has not been disputed by the [opponent]. It is also undisputed that, whereas document D1 does not mention at all disinfection or any other expression related to sanitisation, document D3 only contains a single reference at page 8, lines 41-42, as to the fact that the optional ingredient “oxygen bleach” of the laundry compositions disclosed therein can “provide a multitude of benefits such as bleaching of stains, deodorization as well as disinfectancy”. The Board concurs with the [patent proprietor] that this passage is only a vague general statement, insufficient at justifying any reasonable prediction of the skilled reader of document D3 as to whether the specific composition of e.g. example 1, based on the specific peroxyacid bleach produced by the presence therein of percarbonate, would also provide some sanitisation, and even less the aimed effective sanitisation. Accordingly, and in the absence of any evidence to the contrary, the Board has no reason for rejecting the argument of the [patent proprietor] that no combination of efficient sanitisation with good cleaning is disclosed to be present or to be predictable in any of the two examples of departure.
1626 | 3398
T 692/09 – No Experiments Needed
K’s Law – The ebook
[2.4.3] Thus, the Board finds that no comparative experimental evidence is required for concluding that the subject-matter of claim 1 of the patent-in-suit solves vis-à-vis each of the two examples of departure the same technical problem mentioned in the patent-in-suit, i.e. that of providing GP laundry compositions capable of producing in combination efficient sanitisation and good bleaching (see above point [2.2.3]). [2.4.4] The Board concludes therefore that the [opponents’] first line of reasoning resumed above at point [2.4] is not convincing already because it fails to correctly identify the technical problem solved. The Board then also dismissed the opponent’s second line of reasoning and came to the conclusion that claim 1 involved an inventive step. To download the whole decision, click here. The file wrapper can be found here.
1627 | 3398
T 520/06 – Walk The Line
K’s Law – The ebook
T 520/06 – Walk The Line 12 Jan 2012
Opponent 3 filed an appeal after the Opposition Division (OD) had rejected the opposition. Claim 1 before the Board (which corresponds to claim 1 as granted) read: A precipitated silica characterised in that it has:
a CTAB specific surface area (SCTAB) of between 140 and 240 m2/g, a porous distribution such that the porous volume formed by pores whose diameter is between 175 and 275 Å represents less than 50% of the porous volume formed by pores of diameters less than or equal to 400 Å, an ultrasound disagglomeration factor (FD) of higher than 5.5 ml, and a median diameter (Ø50) after ultrasound disagglomeration of less than 5 μm,
and is in at least one of the following forms: substantially spherical balls of a mean size of at least 80 μm, powder of a mean size of at least 15 μm and granules of a size of at least 1 mm. and independent process claim 6 read: A process for the preparation of a silica according to one of claims 1 to 5 comprising the reaction of an alkali metal silicate M with an acidifying agent, thereby obtaining a precipitated silica suspension, then separation and drying of said suspension, characterised by effecting precipitation in the following manner: (i) forming an initial vessel bottoms comprising a part of the total amount of the alkali metal silicate M involved in the reaction, the concentration of silicate (expressed as SO2) in said vessel bottoms being at most 15 g/l, (ii) adding the acidifying agent to said initial vessel bottoms until at least 50% of the amount of M20 present in said initial vessel bottoms is neutralised, and (iii) simultaneously adding to the reaction medium acidifying agent and the remaining amount of alkali metal silicate M such that the ratio of the amount of silicate added (expressed as Si02)/amount of silicate present in the initial vessel bottoms (expressed as Si02) is between 12 and 100. Among other things, the Board dealt with the objections that claim 6 did violate A 123(2) and that claim 1 was not novel: *** Translation of the French original *** [2.1] Process claim 6 is based on process claims 1 to 3 of the application as filed. However, the initial silicate concentration […] according to claim 6 of the patent is limited to “at most 15 g/l” whereas the independent process claim 1 of the application as filed only requires a value “less than 20 g/l”. [2.2] In application of the principle restated in T 925/98 [2] the Board considers that a limiting amendment consisting in a replacement of the upper limit “less than 20 g/l” of said range by the limit “at most 15 g/l” does not extend the subject-matter of claim 6 beyond the content of the application as filed. [2.2.1] In the present case, the value of the upper limit of a narrow preferred range (“between 10 and 15 g/l; cf. claim 11 of the application as filed) is used to delimit the more general range which has an upper limit of 20 g/l (cf. claim 1 of the application as filed) but which is not limited by a precise value at its lower end. [2.2.2] It has been submitted that the principle restated in T 925/98 does not apply to the present case. It is not obvious to the Board why this principle would not be applicable to the particular case of a larger range of values corresponding to an open interval, i.e. which has been formulated without any indication of a precise value for one of the two boundaries of said interval. […]
1628 | 3398
T 520/06 – Walk The Line
K’s Law – The ebook
[9] Document D2, which was cited as a novelty-destructive document, discloses the preparation of precipitated silica and their use as reinforcing filler for elastomers […]. According to D2, said silica are easily dispersed and have improved reinforcing properties. They are obtained by reacting silicate with an acidifying agent and have granular, powder or bead shape. [9.1] Generally speaking, the precipitated silica disclosed in document D2 have a specific surface area SCTAB between 140 and 200 m2/g […]. The granules preferably have a dimension between 1 and 10 mm […]. The powders generally have an average granulometry (D50) of between 5 and 70 μm, preferably between 10 and 30 μm […] and the beads have an average size of at least 80 μm […]. The powders and the beads according to D2 preferably have an ultrasound disagglomeration factor that is greater than 6 ml or 5.5 ml, respectively […] and have a median diameter (Ø50) after ultrasound disagglomeration of less than 4.5 μm or 5 μm, respectively […]. As far as the above cited parameters are concerned, the silica disclosed in D2 comply with the criteria mentioned in claim 1 of the opposed patent. [9.2] However, the precipitated silica according to D2 are characterised by a very particular distribution of their porous volume, this distribution being expressed by means of the ratio (in %) between the porous volume constituted by the pores having a diameter between 175 Å and 275 Å and the porous volume constituted by the pores having diameters of less than or equal to 400 Å, this ratio being referred to as “V2/V1” […]. Said ratio V2/V1 is of at least 60%, preferably of at least 65%, for granules, and of at least 50%, preferably of at least 60%, for powders and beads. [10] Now, the Board is of the opinion that the claim feature of the patent under consideration regarding the distribution of porous volume, which can be expressed in the form of the condition that V2/V1 < 50% limits claim 1 to silica which the skilled person can distinguish from silica having a ration V2/V1 of 50% or more by means of measurement according to the method cited in the patent under consideration (mercury porosimetry) […], which by the way is the same as the one in D2 […]. [11] Contrary to the opinion of the [opponent], claim 1 of the patent under consideration unambiguously excludes the products disclosed by D2 […], i.e. precipitated silica having powder or bead shape and a V2/V1 ratio ≥ 50% as well as granules having a ratio V2/V1 ≥ 60% and the silica according to example 12 of D2 where the V2/V1 ratio is equal to 61%. [12] It has to be noted that D2 also discloses comparative products having a V2/V1 ratio that is clearly smaller than 50% (cf. table I and example 2; PC1: 43%; PC2: 46%). Products PC1 (Ø50: 7.4 μm, FD: 3.0 ml) and PC2 (Ø50: 9.9 μm, FD: 2.3 ml) however, do not comply with the criteria given in claim 1 of the patent under consideration according to which Ø50 < 5 μm and FD > 5.5. The V2/V1 value of the comparative products GRC1 and GRC2 mentioned in D2 (53% […]) is greater than 50% and its Ø50 and FD values are not given. The smallest V2/V1 value given for a non-comparative product according to D2 is 57% […]. [13] Therefore, all the precipitated silica disclosed in D2, including the ones disclosed as comparative products, differ from the silica according to claim 1 of the patent under consideration at least regarding the distribution of their porous volume (according to the teaching of D2) and/or regarding the values for Ø50 and FD (comparative products in D2). [14] In particular, the beads according to example 12 of D2 (comparative product MP1 according to the opposed patent) have a V2/V1 ratio (61%) that is greater than 50% and, therefore, are perfectly distinguishable from the claimed beads. This conclusion is not liable to be called into question in view of documents E2 and E4 which essentially only deal with the influence the sampling conditions can have on the results obtained when the V2/V1 values of granules are measured. [15] As regards the decisions cited by the [opponent], the Board notes that they are not directly applicable to the present case, for the following reasons: [15.1] The principle developed in decision T 594/01 [4.1.5] cannot be applied to the present case, be it only because the value of 50% mentioned several times in D2 is not an “experimental value” that has been concretely measured on an embodiment, but the lower boundary defining the range of V2/V1 values to be complied with (à respecter) according to D2. None of the examples of embodiments of D2 discloses a value equal to or even close to 50%, the smallest experimental value disclosed being equal to 57% […]. The V2/V1 values smaller than 50% mentioned in D2 (tables I and II) only concern the comparative products (“PC1” and “PC2”) and do not disclose the whole set of features of the product according to claim 1 of the patent under consideration […].
1629 | 3398
T 520/06 – Walk The Line
K’s Law – The ebook
[15.1.1] According to the established case law of the Boards of appeal, including decision T 240/95 [4.2, 3rd §], a numerical range expressed as “from x to y” effectively constitutes a disclosure of the numerical values x and y. However, in the case of the patent under consideration, the range of claim 1 under consideration is formulated as an open interval having an upper boundary, i.e. “less than 50%”. This wording expressly excludes the value of 50%. [15.1.2] Decision T 666/89 concerns situations of “selection” and “overlapping” of numerical ranges. However, in the present case, the respective ranges for the V2/V1 parameter in D2 and in the patent under consideration precisely do not overlap, because the interval defined by the expression “< 50%” does not have any point in common with the interval defined by the expression “≥ 50%”. [15.1.3] Therefore, considering said decisions does not lead to a different assessment of D2 than the one given in points [13] and [14] above. The claims were found to be novel and inventive. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
1630 | 3398
T 1914/08 – Total Recall
K’s Law – The ebook
T 1914/08 – Total Recall 11 Jan 2012
The patent proprietor filed an appeal after the Opposition Division (OD) had maintained the opposed patent in amended form. After expiration of the time limit for filing an appeal, the opponent filed a “cross- appeal” (Anschlußbeschwerde) but he finally withdrew this appeal. The patent proprietor requested the Board to maintain the patent as granted. Claim 1 as granted read: 1. Method for cleaning a UHT installation (1) for flowable foods comprising the steps: (a) Placing a cleaning solution in a storage vessel (6,7), (b) Cleaning the UHT installation (1) with a first portion of the cleaning solution, (c) Discarding this first portion of the cleaning solution, (d) Cleaning the UHT installation (1) with a second portion of the cleaning solution, (e) Recirculating this second portion to the storage vessel (6,7), (f) Rinsing the UHT installation (1) with fresh water, (g) Collecting at least a portion of the rinse solution in step (f) in the storage vessel (6,7), (h) Fortifying the solution in the storage vessel (6,7) with cleaning agent. The decision contains some interesting statements on late filed documents and witness testimonies. *** Translation of the German original *** Consideration of documents D18 to D25 [2] Documents D18 to D25 were announced on May 4 and 13, 2009, by the [opponent] and filed together with a written submission dated August 26, 2011, about one month and a half before the oral proceedings (OPs) before the Board. The [patent proprietor] is of the opinion that said documents were late filed, so that he did not have the opportunity to prepare himself properly. It should also be taken into account that the late filed documents concerned the alleged prior public use (PPU) and evidence therefor, respectively, and that all the evidence was in the sphere of the [opponent], so that all the [patent proprietor] could do was to point out gaps and inconsistencies of the evidence. This possibility would be seriously limited if the late filing of documents D18 to D25 was considered admissible. According to the [opponent] the documents under consideration were not indispensable for establishing the alleged PPU Leche Pascual but could nevertheless provide further evidence for the prior use and invalidate (entkräften) the patent proprietor’s objections against the conclusions at which the OD had arrived when assessing the evidence. The [opponent] has announced the filing of further documents related to the PPU at an early stage of the proceedings – in written submissions dated May 4 and May 13, 2009 – when reacting against the objections made by the [patent proprietor] in the statement of grounds of appeal. He justified the fact that the documents were filed only together with his written submissions of August 26, 2011, i.e. more than two years later and shortly before the date of the OPs (October 13, 2011) by the tense economic situation the [opponent] had had to face in the meantime. In the exercise of its discretional power, the Board considers that the late filing of documents that had been announced earlier and which, therefore, were available, without any justification having a causal link to the present proceedings, does not comply with a regular way of conduction the proceedings. Therefore the late filed documents D18 to D25 have not been admitted into the proceedings. […] Prior public use 1631 | 3398
T 1914/08 – Total Recall
K’s Law – The ebook
[4.1] According to the impugned decision […] the processing plant (Prozeßanlage) that is said to constitute a prior public disclosure has been delivered in the 1994/1995 period by the Gea Finnah company to the Grupo Leche Pascual company, the latter being both the purchaser and the operator of the plant. This delivery, for which there had been no confidentiality obligation, had made the plant available to the public. Moreover, the operation of this plant had made a process for cleaning a UHT installation available to the public, which process destroyed the novelty of claim 1 as granted, which is the only version that will be considered hereinafter […]. [4.2] When assessing the evidence, the OD has considered the witness testimonies of witnesses Tacke and Assing […] to be the essential pieces of evidence. Moreover, in the context of these witness testimonies, it has referred to documents D5 and D6 as “written evidence”. [4.3] The Board is of the opinion that the two witness testimonies, which go beyond the disclosure of documents D5 and D6 – as far as the process plant alleged to have been the object of a PPU and the cleaning process are concerned –, are the decisive pieces of evidence by which the alleged PPU has been completely (lückenlos) established to the extent that is necessary in the present case. As both witnesses have referred to D5 for explaining their statements and as witness Tacke also used D6, these pieces of evidence comprise facts that can be taken from D5 and D6, insofar as they are comprised by the witness testimonies. Each witness testimony as such gives a consistent and complete picture of the cleaning process which is to be established. Moreover, the witness testimonies agree with each other as far as the essential process steps of the cleaning process are concerned. [4.4] Based on the content of the witness testimonies that has been taken into account in the impugned decision, and on the minutes of the hearing of witnesses Tacke and Assing, the Board considers the way in which the evidence was assessed by the OD, the underlying standard of proof and the outcome of the assessment to be correct. The Board agrees with the [patent proprietor] that in the present case the applicable standard of proof is such that the alleged public prior use has to be established “beyond reasonable doubt”. This follows from the fact that it is the legal predecessor of the [opponent’s] company who delivered the CIP (Cleaning In Place) plant under consideration and, therefore, caused the PPU, which means that the PPU belongs to his sphere of influence. [4.5] The [patent proprietor], who considers that the PPU has not been established and contests its reality […] has tried to expose gaps and inconsistencies regarding the evidence of the opponent and shortcomings in the assessment of the evidence on behalf of the OD, both in the opposition and appeal proceedings. The OD has not endorsed the corresponding objections, essentially because it considered the facts to be proven by means of the witness testimonies […]. [4.6] The Board considers the OD’s assessment of the situation to be correct. [4.6.1] In particular, as far as the availability to the public is concerned, it is of the opinion that the impugned decision is right in coming to the conclusion that the CIP plant, which had been delivered by the Gea Finnah company to the Leche Pascual company, who was both purchaser and operator, has been made available to the public through this very delivery. The Board is of the opinion that the same holds true for the assessment according to which the operation of the CIP plant for cleaning the UHT installation has made the process used for cleaning the UHT installation available to the public before the date of filing of the impugned patent. As a matter of fact, when the plant was sold, put into service and homologated (see witness testimony […]) all process steps have been carried out. In this context the OD was right in coming to the conclusion that the delivery and operation of the plant was performed without there being any confidentiality obligation and that the Leche Pascual company acting as a purchaser and operator of the plant was a third party within the meaning of patent law, in the person of whom the CIP plant for cleaning a UHT installation under consideration as well as the process for cleaning the UHT installation carried out with it have been made available to the public. [4.6.2] The impugned decision is also correct on the object of the PPU.
1632 | 3398
T 1914/08 – Total Recall
K’s Law – The ebook
Accordingly, the witness testimonies have shown that the delivered CIP plant is suitable for carrying out the cleaning process according to claim 1 both in view of the means provided in the plant and its control and of the interaction with the UHT installation. As far as the operating sequence of the cleaning process carried out in the plant of the PPU is concerned, the impugned decision refers to the process steps disclosed in D5 and uses the designations for the individual steps used therein. This is in agreement with the declarations of both witnesses who have kept their declarations on the operating sequence of the cleaning in line with the process sequence of D5. The outcome is that the OD has considered that it has been proven that the process for cleaning a UHT installation carried out in the plant of the PPU comprised all steps of the process according to claim 1. [4.6.3] It may be left open to which extent D5 is to be considered as an independent piece of written evidence alongside the witness testimonies – as the OD appears to have believed – because the two witness testimonies – partly referring to D5 – completely encompass its disclosure insofar as it concerns the object of the PPU in view of the process according to claim 1. The same holds true for D6 and the construction of the CIP plant, because the witness Tacke refers to this document in his deposition. [4.6.4] Therefore, the objections of the opponent concerning the use of D5 and D6 as independent pieces of evidence are pointless because the witness testimonies are complete both in view of the construction of the CIP plant and – to the extent necessary – the UHT installation, and in view of the operating sequence of the cleaning process carried out on the UHT installation by means of the CIP plant to the extent required in the context of the process according to claim 1, and as such establish the alleged PPU. As a consequence, it may be left open to which extent D5 and D6 are to be considered as independent pieces of evidence alongside the two witness testimonies. For analogous reasons it is not necessary to consider declaration D16, which the [opponent] has used for supporting his argumentation alongside both witness testimonies, either. [4.6.5] Concerning D5 and D6, the objection of the [patent proprietor] according to which it was not proven which version of D5 and D6 was available when the PPU took place, and what they disclosed, is also irrelevant. The same reasoning applies to the objection that D5 does not disclose the complete cleaning process and that the precise interaction of the CIP plant and the UHT installation in view of cleaning the UHT installation by means of the CIP plant is not apparent in D6. That the cleaning process has indeed been carried out in compliance with the process according to claim 1 follows from the relevant declarations of both witnesses, which are extensive and complete, as explained above. In this context, it has to be taken into account that, according to the minutes of the hearing of the witnesses, the witness Tacke has been personally involved as project manager in the start-up of the plant until its homologation According to the minutes of the hearing of witness Assing, the same holds true for this witness, who was responsible for developing and implementing the complete software and who, therefore, was on site from October 1994 to June 1995. As a consequence, both witnesses could draw upon their recollections concerning the operating sequence of the cleaning process during the start-up of the delivered CIP plant in conjunction with the UHT installation. [4.6.6] As far as the establishment of proof (Beweisführung) is concerned, the [patent proprietor] has explained that he did not question the reliability of the witnesses as such. However, as there were inconsistencies in the witness declarations regarding the dates at which the documents D5 and D6 were established / published and their content during the relevant period, there were indications that doubts concerning the witnesses’ powers of recollection were justified. This also held true for the witness declarations concerning the period and the object of the alleged PPU. In this regard, it has to be noted, as explained above, that in the present case the PPU is considered to have been proven by the two witness testimonies. Therefore, links and details that can be found in D5 and D6 do only matter to the extent to which the witnesses have referred to them during the hearing. Regarding the powers of recollection of the witnesses the general experience of life allows to act on the assumption that when actions that have taken place in the past, such as in the context of the present PPU, actions that are experienced directly (unmittelbar wahrgenommen), such as the construction of the CIP plant in conjunction with the UHT installation, as well as the start-up of the CIP plant for cleaning the UHT installation, wherein both witnesses have participated actively, according to their declaration, can be recollected much better 1633 | 3398
T 1914/08 – Total Recall
K’s Law – The ebook
than actions that are not readily assigned to such immediate perception. In the present case this concerns the moment at which D5 or D6, respectively, have been established and the version of each of these documents that was available in the period that is relevant for the PPU. [4.7] Based on the fact that, as mentioned above, both witness testimonies as such are complete in view of the factual situation to be established and do not contradict each other or the other documents filed in this regard, in particular D5 and D6, the other objections of the [patent proprietor] with respect to the proof of the PPU are irrelevant. [4.7.1] The objection that, starting from D5 and D6, gaps in the disclosure made it unclear how the CIP plant and the UHT installation were constructed, how they interacted in the cleaning of the UHT installation and which process steps a cleaning process for the UHT implemented in the allegedly used CIP plant has comprised, cannot be accepted. As the PPU has been proven by the two witness testimonies, further documents or pieces of evidence, such as the “written pieces of evidence” D5 and D6 mentioned in the impugned decision, are not relevant. This holds true at least for the present case wherein there are no fundamental contradictions between the pieces of evidence such as the two witness testimonies, and further documents, such as D5 and D6, which would diminish the evidentiary power (Aussagekraft) of some or all of the pieces of evidence so that they cannot be taken into account, either partly or completely, when evidence is assessed within the framework of the free evaluation of evidence. However, the [patent proprietor] has not been able to demonstrate the existence of such gaps of disclosure or contradictions. […] [4.7.2] The [patent proprietor] also expressed the opinion that, given his unlimited access to the pieces of evidence concerning the alleged PPU, the [opponent] could have been expected to provide further written pieces of evidence concerning the construction of the plant that had been delivered and, therefore, the cleaning process carried out with it. In this context, he also criticized that there had not been any documents representing the whole construction of the CIP plant and the UHT installation or from which the whole operating sequence of the cleaning process was discernable. The Board is of the opinion that this request for further pieces of evidence concerns aspects of establishment of proof by the [opponent] which go beyond what the [opponent] had to supply in order to bear his burden of proof. As the OD, acting within the framework of free evaluation of evidence, has come to the conclusion – which the Board considers to be correct – that the alleged PPU has been essentially established by the two witness testimonies, and as the [patent proprietor] has not been able to cast into doubt the probative value of these witness testimonies, there was no motivation for the opponent to file further pieces of evidence, neither in the opposition nor in the appeal proceedings. Finally the appeal was dismissed. To download the whole decision (in German), click here. The file wrapper can be found here.
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T 2210/10 – Swedish Post
K’s Law – The ebook
T 2210/10 – Swedish Post 10 Jan 2012
The opponent filed an appeal against the decision to maintain the patent in amended form. The decision was posted on August 10, 2010 with an advice of delivery. On the address label the addressee was mentioned in the following way : Name of the representative, name of its office, address. According to the advice of delivery received at the EPO on August 19, the decision was received at the representative’s office on August 17. The advice of delivery had been signed by an employee of the this office. The acknowledgement of receipt (EPO Form 2936) was received at the EPO on 3 September 2010. It bears the signature of the representative and the date of 3 September 2010. The opponent filed a notice of appeal on 3 November 2010 and a statement setting out the grounds of appeal on 3 January 2011. The Board informed the appellant that it was to be expected that the appeal would be rejected as inadmissible pursuant to A 108, first sentence, in conjunction with R 101(1). The representative further referred to two articles of the Swedish Code of Judicial Procedure Chapter 33 which read as follows in their English translation: “If service is to be done to a single person, the document is handed over to him. If there is a substitute for him and if this person is authorized to represent him in the proceedings of the case the document is handed over to him. If a single person is sought for service on his place for employment but is not to be met there during his normal working time, the document may be handed over to the employer of the sought person. By employer is meant a person in an executive position or in a position comparable with this or the manager of the human resource administrative department on the workplace of the person sought”. He argued that because on the address label of the mail containing the decision the name of the representative appeared in the first line and the name of the representative’s office only in the second line, the mail had to be considered as addressed to the representative in person and not to the representative’s office. Therefore the employee having accepted the mail acted in breach of its authorisation to do so, since the employee was only authorised to accept mail for the representative’s office. Likewise the Swedish post office should not have handed out the decision to the said employee because under Swedish law such mail should be handed out to the person named on the mail only, or to a person authorised to accept mail in the name of this very person. Hence, the decision had to be considered as delivered to a non-authorised person. The date of notification to be taken as the starting day for the calculation of the time limit had therefore to be the date on which the representative became aware of the decision upon returning from holiday. This was 3 September 2011 as indicated on form 2936 sent back to the office on that very day. You might have guessed that the Board did not endorse these arguments. Here are the reasons why: [1] In the case under consideration the decision of the Opposition Division was notified by registered mail with an advice of delivery pursuant to R 126(1) on 10 August 2010. As a representative was designated, the decision was sent to him (R 130(1)) and, according to the advice of delivery, received at his office on 17 August 2010. Undisputedly the decision was accepted there by an employee of the representative who was authorised to accept all mail delivered to the representative’s office. Thus, the decision was notified within ten days following its posting, so that the fiction of R 126(2) applies for the calculation of the starting day of the time limit and the decision is deemed to have been notified on 20 August 2010.
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T 2210/10 – Swedish Post
K’s Law – The ebook
Hence, the time limit for filing a notice of appeal ended on Wednesday 20 October 2010 and the time limit for filing a statement setting out the grounds of appeal ended on Monday 20 December 2010, respectively. The appellant, however, filed a notice of appeal on 3 November 2010 and a statement setting out the grounds of appeal on 3 January 2011, respectively. Both dates are late, i.e. after expiry of the corresponding time limits. [2] The appellant submitted that because the name of the representative appeared first on the address label of the mail, the decision could only be considered notified when the representative himself took knowledge of the decision. The Board cannot accept this argument. Pursuant to R 130 the decision was addressed to the representative at his office. For organisational reasons, it is clear that in the representative’s office, one or several employees are entitled to accept mail addressed to the representatives working there. The employee who took over the impugned decision had an authorisation to do so in the name of the representative’s office. This is not disputed by the appellant. What happened there is no longer as much the responsibility of the EPO, but rather that of the representative (see T 743/05 [1.6] ; T 1535/10 [1.5.2]). In addition, unless otherwise provided for, if an employee has an authorisation to accept over mail for the representative’s office this means that the employee has a right to take in mail for any one of the representatives working there, at least as long as the representative’s office name is on the address label. Any other interpretation would not make any sense. As a matter of fact in any of a granting, opposition or appeal procedure, when a representative is designated, this is in general a single natural person (representative) of a bigger law firm with a certain number of representatives. If the representative in the present case were right in his assumption, this would mean that the mail sent by the EPO would never be notified until the particular representative was informed of it. This would lead to inextricable difficulties for determining the date of notification, and the representative could pick and choose at will the day on which it would like the notification to have taken place. [3] The appellant further submitted that in Sweden, where notification by post is concerned, it makes a difference whether on the address label the name of the representative is mentioned first and the name of the representative’s office second, or vice-versa. In the first case, the mail must be delivered to the very person named and in the second case it can be delivered to its office. In the present case this would mean that the decision was delivered to a person not authorised to accept it. Pursuant to R 126(2) last part of the only sentence, “in the event of any dispute, it shall be incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be.” In the opinion of the Board, this, however, cannot mean that it is the duty of the EPO to start enquiries as soon as a party, against the evidence on file, considers that the mail has not been properly notified. The EPO, and the Boards of appeal in particular, cannot be expected to undertake exhaustive investigations to establish on their own the date of notification in the absence of serious doubts. This would de facto amount to allowing any party to request the EPO to prove that notification has duly been effected whenever the party feels it advantageous to do so. This cannot be the aim of this rule. In the present case, the Board considers that no serious doubts exist. Once again, the advice of delivery has been returned to the EPO in due time, the date of reception of the mail is duly indicated (17 August 2010) on the advice of delivery and the employee who accepted the mail was indisputably authorised to accept mail for the representative’s office. In such a case, if the representative still considers that notification has not been correctly effected it is up to him to bring convincing evidence as to the contrary. But the appellant did not file any convincing evidence to back up its allegations. In its letter of 22 March 2011, it mentioned two articles of the “Swedish Code of Judicial Procedure Chapter 33”, which according to it would require that “If service is to be done to a single person, the document is handed over to him.”. In the absence of any argument in this respect from the appellant’s side, the Board fails to see why the Swedish Code of Judicial Procedure would have any relevance when it comes to deciding to whom a registered letter of an administrative body should be delivered by the postal services.
1636 | 3398
T 2210/10 – Swedish Post
K’s Law – The ebook
It is further to be noted that case T 743/05 also concerned a Swedish representative, that the name of the representative and the representative’s office name and address were in the same format as in the present case, and that this issue did not play any role. This casts further doubts as to the relevance of the representative’s argument. Moreover, if the two articles of the Swedish Code of Judicial Procedure cited by the appellant were applicable, they do not make any reference to a difference of treatment between pieces of mail having either the name of the person or the name of the person’s place of employment cited first on the address label. In other words even if they were applicable to registered letters of an administrative body, the cited articles fail to deal with the present situation. Hence, in the present case, on the basis of the filed evidence, the Board cannot see any difference, when it comes to notification, between an address label with either the name of the representative or the name of his office in the first position, as in both cases the name of the representative’s office is on the label. [4] The appellant further submitted that the date of notification to be considered should be the date indicated by him on the EPO Form 2936, namely the 3 September 2011. This form was introduced by the EPO in order to facilitate the establishment of the date of notification in cases in which the advice of delivery is either not returned to the EPO or is returned but without being completed at the receiving end (see Notice of the European Patent Office dated 10 June 2010 in Official Journal EPO 7/2010, page 377). In the present case the advice of delivery was duly completed and returned to the EPO, so that the date on Form 2936 is of no importance. [5] Hence, pursuant to R 101(1) in combination with A 106 to A 108, the appeal must be considered inadmissible. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 848/09 – Not Frozen
K’s Law – The ebook
T 848/09 – Not Frozen 9 Jan 2012
The manner in which Article 12(4) RPBA is applied by the Boards is a matter of concern for many patent attorneys. Here is another interesting case, where Board 3.5.03 had to deal with an appeal against the decision of the Opposition Division (OD) to revoke the opposed patent. In its response to the summons to attend oral proceedings (OPs), the patent proprietor filed amended main and auxiliary requests. Obviously, the question of admissibility arose. Here is what the Board had to say on the admissibility of the main request. [1] In accordance with Article 12(4) RPBA, the board has the discretion “to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings”. The [opponent] argued that the main request should not be admitted as it was not submitted during opposition proceedings, despite the fact that the patent proprietor had been asked by the chairman of the OD whether it wished to file “an auxiliary request” […]. The [opponent] also argued that appeal proceedings concerned a judicial procedure whose primary purpose was to determine the correctness of the decision taken by the OD. The [opponent] referred to decisions T 379/09, T 144/09 and T 240/04 to provide support for its view. The board concurs with the [opponent] that the primary purpose of the appeal procedure is to check the correctness of the decision of the department of first instance. It is also established case law that the parties should not in general be able to change the factual and legal framework of the case during the appeal phase; however, this does not mean their procedural situation becomes frozen following the decision from the department of first instance. In accordance with Article 12(4) RPBA, amendments are possible, provided that these amendments are justified by the normal development of the proceedings. Amendments may for instance be justifiable having regard to the principle of procedural economy (which is not the main justification here, but at least there is no conflict since no delay to the proceedings has ensued), or, as is the case here, be a normal reaction of a party given the circumstances of the case. In the cases cited by the [opponent] where the new requests were not admitted under Article 12(4) RPBA, the circumstances were different, namely: • In T 379/09, the patent proprietor filed the new request aimed at overcoming an objection raised by the OD only one month before the OPs before the board of the appeal although the nature of the objection had been set out in the summons to OPs issued by the OD. Furthermore, admitting the request would have caused a considerable delay of the procedure. • In T 144/09 [1.14], the proprietor had made a “considered and deliberate choice” not to file an amended request, despite being given the opportunity to do so after the objection had been explained. • In T 240/04 [16], the new request introduced subject-matter which had not been considered by the first instance and, above all, diverged from what had been discussed before; instead of convergence there was a jump to another invention. By contrast, in the present case the board considers the filing of the present main request to be a legitimate and normal reaction to the decision to revoke the patent, because the amendment concerns the addition of a feature of a dependent claim which further limits the subject-matter distinguishing the invention with respect to the disclosure of document D3. As the added feature was previously in a dependent claim, it can be assumed that the claimed subject-matter has been searched. Moreover, the request was filed at the earliest possible stage of the appeal proceedings, namely with the statement of grounds. The filing of this request therefore did not give rise to any procedural complications preventing a discussion of the request at the OPs. Even if, theoretically, the patent proprietor might have been able to file this request at the end of the OPs before the OD, the board sees a difference with the other cited cases above, in particular with T 144/09, since it does not appear that the patent proprietor made a “considered and deliberate choice” not to file the request. Rather, the reasons for the revocation of the patent were not so explicitly known as in case T 144/09 and plausibly the formulation of a 1638 | 3398
T 848/09 – Not Frozen
K’s Law – The ebook
suitable new request overcoming the objection was not immediately evident. In such circumstances it would be unreasonable to penalise the non-filing of an auxiliary request at the end of OPs by later invoking Article 12(4) RPBA in appeal proceedings. The board therefore decided to exercise it discretion to admit the main request. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1086/07 – Presenting Information
K’s Law – The ebook
T 1086/07 – Presenting Information 7 Jan 2012
This appeal was against the decision of the Examining Division (ED) to refuse the European patent application under consideration, which concerned the problem of indicating on a summary document where the summarised portions came from in the original document. The ED found that the subject-matter of claim 1 did not involve an inventive step. Claim 1 of the sole request before the Board read: A method for summarizing a document using a processor (12), the method comprising:
extracting (S200) text from the document along with corresponding location information; identifying (S220) portions (82) of the extracted text that reflect the content of the document; generating (S230) a presentation file that includes the identified portions (82) and a first set of indicators (84) that identify each identified portion of text, the first set of indicators being placed adjacent to the corresponding extracted text; and presenting (S270) the presentation file, characterized by generating a second set of indicators (86) that correspond to the first set of indicators, the vertical positions of the second set of indicators (86) indicating the vertical locations of the corresponding extracted text in the document.
[4] The ED started from the method of automatically mapping a document abstract to its original sentences disclosed in D1. The subject-matter of claim 1 differed from this by the generation of the second set of indicators to indicate the “vertical locations” of the original text. The objective problem was seen as how to improve navigation between the document summary and the summarised document. The ED considered that the skilled person would try to solve this by providing more navigation information about the summarised document. Such data was already present in D1 in the form of the corresponding area table 410 in Figure 13,
the sentence score table 408, revealing the sentence length, in Figure 8
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T 1086/07 – Presenting Information
K’s Law – The ebook
and the abstract sentence table 409, showing which original sentence corresponds to which abstracted sentence, in Figure 9.
The ED considered that the skilled person would “use this data and visualize it according to user requirements, the form of presentation of this information being only a mere choice for the skilled person”. [5] The Board agrees with the appellant that the ED’s reasoning is rather terse, in particular the motivation to modify D1 to arrive at the invention. If the features in question were all of a technical nature, the Board might have some doubts about the conclusion of this argument. However, as the ED did acknowledge, albeit only at point 4.3 of the minutes, the “pure visualization of available information” cannot contribute to inventive step. In the Board’s view this consideration is decisive to the outcome of the present case. [6] Moreover, the Board finds the ED’s statement of the distinguishing features slightly too generous. In the Board’s view, the sentence numbers (B2, B5, B7) shown in Figure 9 of D1 can be considered to be a second set of indicators that correspond to the first set of indicators (A1, A2, A3…), and indicate the vertical locations of the extracted text. Thus, strictly speaking the invention differs only in that these second indicators are displayed and that their vertical positions indicate the vertical locations of the text instead of using them to look up and display automatically the text. 1641 | 3398
T 1086/07 – Presenting Information
K’s Law – The ebook
[7] The Board considers that, in general, the idea of displaying and placing an indicator at a position to identify a location has no technical character. It is a presentation of information, namely the results of the summarising process, and has no interaction with the possibly technical function of producing it. A similar conclusion was reached in decision T 603/89 [2.1(c)/(d), 2.6] in connection with a kind of template that displayed numbers on a card to represent notes on a keyboard instrument. Although the jurisprudence on A 52(2) was somewhat different at the time, the judgement of technical character was essentially the same. Thus, in the Board’s view the idea of this distinguishing feature cannot contribute to inventive step. As the ED stated, the skilled person would be able to implement some form of indicator based on the sentence number, and the claim gives no details of the implementation of these indicators that could contribute to inventive step either. [8] Concerning the appellant’s absolute position argument, the Board considers that the claimed term “vertical locations” is not precise enough to define a position that is any more absolute than the sentence numbers in D1, in particular considering that the user must anyway make the connection between the indicator and the actual text. Since the claim does not define how the invention deals with non-text passages, this argument cannot be used to distinguish over D1. [9] In the Board’s view the same conclusion can be reached starting from the general desire to refer to original sentences while reading the abstracts disclosed in the opening part of D1 at column 1, lines 23 to 26. The invention differs from this by identifying the extracted portions and providing the corresponding second indicators. Again these differences would be aspects of presentation of information having no technical character. [10] Finally, even if the features were considered to have technical character, the Board cannot see how they could involve an inventive step. The claimed portions of extracted text and first indicators essentially cover the contents page of a document or book. The second indicators cover the use of sticky tabs that indicate the position in the book of relevant passages. In the Board’s view the skilled person would consider the idea of using such tabs on the contents page as an obvious possibility for keeping track of the original text using the contents page alone. [11] Accordingly, the subject-matter of claim 1 does not involve an inventive step (A 56 EPC 1973), so that the appeal must be dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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K’s Law – The ebook
Publish Or Perish (ctd.)
Publish Or Perish (ctd.) 7 Jan 2012
At the end of each quarter, I have a look at the number of decisions that DG3 has published on its website. This year I found what I had expected: in 2011, the EPO has published significantly less decisions than in the years before. It is the small number of decisions published in quarter 2 that made the difference; this might correspond to a small number of decisions taken in quarter 1. As a matter of fact, the numbers of decisions published during quarters 3 and 4 hardly differ over the years (quarter 3 of 2009 being a notable exception). As a consequence of the reduced production, I almost had to stop posting on two occasions during the year, and my reservoir is empty so to speak. Obviously, life is easier for case law bloggers when decisions abound. Bets are open as to what 2012 will bring. It would be great if the DG3 website came back to normal, after a troublesome year.
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T 456/10 – See The Big Picture
K’s Law – The ebook
T 456/10 – See The Big Picture 6 Jan 2012
A reminder on how (not) to interpret drawings … The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke the opposed patent. Claim 1 as granted read: Eccentric screw pump having an inner casing (2) made from wear-resistant and resilient material in a single-part or multi-part cylindrical housing casing (1); wherein an inner surface (3) of the casing (2) or the inner casing (2) is designed spirally with predetermined pitch direction and pitch length on its side (3) pointing inwards; having a helical or spiral rotor (6, 8) inserted with pretension in the casing in a first axial position (z1) and with radial eccentricity (9) and mounted (15, 16) on the drive side in this position and having the same pitch direction (7) as the stator (2); characterised in that an outlet opening (5) of the stator (2) is expanded starting from its end-face end on a piece of the axial conveying length radially outwards on its entire periphery so that an end-face edge (24), which rotates in pump operation, of the rotor end (23) placed close to the outlet opening - preferably for wear-related axial displacement (19; Δz) of the rotor - can be rotated in contact-free or released (G) manner with respect to the inner surface (3) of the stator.
The OD had found claim 1 as granted to lack novelty over document D0 and in particular over figure 1 of this document. The Board disagreed: *** Translation of the German original *** [2.1.1] Document D0 concerns a stator for eccentric screw pumps the inner coating 2 of which can be readily and simply replaced […]. This result is obtained by means of a coating that is manufactured separately and which is used together with a casing (Mantel) that is divided lengthwise and the parts of which can be connected with each other in a non-permanent (lösbar) way […]. [2.1.2] Figure 1 shows a partial longitudinal section of the eccentric screw pump.
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T 456/10 – See The Big Picture
K’s Law – The ebook
One can discern a gap on the left end-face, between the lower part of the rotor 4 and the coating 2 of the stator. Therefore, at the lower part of this end-face also, the rotor 4 is not in contact with the inner surface of the coating 2. However, one can see from figure 2 that the lower part of this end of the rotor 4 is in contact with the inner surface of the coating 2, i.e. that there is no gap.
[2.1.3] It clearly follows from page 1, lines 60-75 of the description that all figures show one and the same eccentric screw pump. Therefore, figure 2 is a front view of the stator according to figure 1 and should, therefore, show what the skilled person sees in figure 1 when looking at the pump from the left hand side. As figures 1 and 2 are intended to show the same eccentric screw pump but diverge in view of the above mentioned gap, the Board notes that the figures contradict each other in this respect. [2.2] According to the established case law of the Boards of appeal, the technical disclosure of a document that forms part of the state of the art has to be considered as a whole (see T 56/87). The individual sections of a document must not be considered separately from the other parts but have to be seen in the overall context (see T 312/94). [2.2.1] For this reason alone figure 1 cannot be used (gewürdigt) in isolation from the remainder of the document and in particular from figure 2. [2.2.2] The fact that figures 1 and 2 show the same eccentric screw pump also hinders [the skilled person from using figure 1 in isolation] . In case the skilled person would try to find out which drawing is correct, he would not find any information in the description simply because the gap is not mentioned there. This is not surprising because the gap has nothing to do with the above mentioned purpose (see [2.1.1]). [2.2.3] Therefore, the characterising feature of claim 1 – i.e. that a gap has to be provided on the left end-face, between the lower part of the rotor 4 and the stator 1,2, such that the lower part of the rotor 4 is not in contact with the inner surface of the coating 2 – does not follow unambiguously, for the skilled person, from the overall context of document D0 (see T 153/85 [headnote 3]).
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T 456/10 – See The Big Picture
K’s Law – The ebook
[2.3] According to the established case law of the Boards of appeal, a document forming part of the state of the art is novelty destroying only if the subject-matter of the invention is disclosed in it directly and unambiguously (see e.g. T 511/92). As the overall context of document D0 does not allow the skilled person to understand without doubt which of the two figures is correct, the distinguishing feature cannot be considered to be unambiguously disclosed. Therefore, the subject-matter of claim 1 is novel within the meaning of A 54(1)(2) EPC 1973 over the disclosure of document D0. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1022/09 – What’s In Is In
K’s Law – The ebook
T 1022/09 – What’s In Is In 5 Jan 2012
If the opposition filed by one of the opponents is found not to be admissible, are the documents filed by him (alone) still in the proceedings? That is the question the Board had to answer in the present case. The patent (directed at a process for packaging wine in aluminium cans) was opposed by nine opponents. Opponent 5 had his principal place of business in Argentina and filed his opposition via a professional representative. This representative subsequently withdrew, without another representative being appointed, even after the EPO had requested the opponent to do so ; this resulted in the opposition being deemed inadmissible. All the oppositions were rejected by the Opposition Division (OD). In the following passage, the Board deals with the admissibility of several documents: [2.1] The [patent proprietor] argued that a number of documents filed in the opposition proceedings, as well as documents filed during the appeal proceedings were not admissible into the proceedings. [2.2] D18, D28, D43, D52, D53 and D59 were each filed with a corresponding notice of opposition. In each case the filing of the document was substantiated by the document being discussed in detail with respect to at least one ground of opposition. The OD considered that these documents were not part of the opposition proceedings for one or more of the following reasons: it was not proven that they were publicly available; their publication was not proven; their dates of publication were not proven to have been before the date of priority; or they were filed by opponent 5 whose opposition the OD retrospectively considered to have been inadmissible. [2.2.1] In the view of the Board the question of whether the publication date or content of the respective document makes them relevant to the discussion of the grounds of opposition is a separate consideration to that of admissibility when the document is filed with an admissible notice of opposition and its alleged significance is discussed in that notice. In this respect the OD has confused the criteria for admissibility of late-filed documents with those for documents filed with and referred to in an admissible notice of opposition. In the latter case the content and publication date does not come into play for the question of admissibility. [2.2.2] With respect to the documents filed by opponent 5 along with its notice of opposition the Board notes that at least at the time of filing the opposition the documents were automatically in the opposition proceedings as they were also referred to in that notice of opposition. The OD decided that the subsequent withdrawal of representation by the professional representative meant that the opposition was deemed inadmissible. [… T]he Board does not consider it necessary to reach a conclusion on the admissibility of this opposition. With regard to the documents filed along with the notice of opposition the Board considers that since their filing was substantiated they were automatically in the opposition proceedings. This fact cannot be changed retrospectively by the subsequent withdrawal of representation by the professional representative. [2.2.3] In the view of the Board all of these documents filed in the first instance proceedings are therefore in the proceedings. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2339/09 – Balance Act
K’s Law – The ebook
T 2339/09 – Balance Act 4 Jan 2012
The applicant filed an appeal after the Examining Division had rejected the application under consideration. The Board discussed the question whether Internet document D4 was publicly available. *** Translation of the German original *** [2] The way in which the EPO deals with citations of Internet documents is explained in a communication of the EPO (OJ EPO, 8-9 2009, p. 456-462) and in decision T 1134/06. Disclosures made on the Internet are deemed to have been accessible as from the date on which they are published online. As a rule, it is necessary to assess whether the documents form part of the state of the art by considering the balance of probabilities (nach Abwägen der Wahrscheinlichkeit). Product catalogues or product lists of companies such as D4 are, in general, directed at potential clients and, therefore, intended for publication. According to the search report, D4 is an Internet article dated May 22, 2006, which was found on March 21 in the Internet archive www.archive.org and which concerns a product catalogue of the HBE company. The date of the online publication of this product catalogue, therefore, is May 22, 2006, which is before the filing date of the present application, i.e. November 17, 2006. Moreover, the catalogue is marked “11.10.04”, which even refers to an earlier date of publication of this catalogue. In any case the relevant dates are before the date of filing, which makes it necessary to consider that D4 forms part of the state of the art. It is the [applicant] who bears the burden of proof for the assertion to the contrary, i.e. that D4 has not been published before the date of filing. In this context, he has argued that when the search engine www.archiv.org is used, D4 was found with a publication date of January 7, 2007, i.e. after the filing date. However, no evidence was provided. Moreover, the name of the search engine is not identical to that of the search report and the time at which the request was made is unknown, but it may be expected to be well after the date of the search report. Therefore, the submissions of the appellant are neither sufficient nor suitable for invalidating the assumption that D4 forms part of the state of the art. I am not sure whether this decision is really in line with T 1134/06 (approved in T 1875/06 [9]) where it was stated that “ … the fact that an Internet disclosure is state of the art under A 54(2) should be proved “beyond any reasonable doubt”.” If my understanding (and translation) is correct, this decision rather applies the standard of “balance of probabilities”. Patent attorneys should note both decisions, so that they can use whatever suits the situation they have to face. To download the whole decision (in German), click here. The file wrapper can be found here.
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T 1841/09 – A Dubious Combination
K’s Law – The ebook
T 1841/09 – A Dubious Combination 3 Jan 2012
In this case the opponent appealed against the decision of the Opposition Division (OD) to reject the opposition. Claim 1 of the patent as granted read: 1. An amine dispersant containing one or more amino and/or imino groups, a poly(oxy-C1-6alkylene carbonyl) chain (POAC chain) obtainable from two or more different linear hydroxycarboxylic acids or lactones thereof and a residue of an ethylenically unsaturated group wherein the amino and/or imino group is attached via the ethylenically unsaturated group, including salts thereof. According to the opponent, the subject-matter of granted claim 1 differed in only one feature from each of examples 14 and 16 of document D1: the alkyl rest of the second acids or lactones thereof used to prepare the POAC chain should be
linear and not branched as in example 14, a C1-6 alkylene and not C18 as in example 16.
The substitution of the differing feature by one mentioned in the list of equivalent alternatives given in the description of D1 automatically resulted in the claimed subject-matter. According to T 332/87 and other decisions, it was not necessary for a document explicitly to mention a claimed combination to be novelty destroying. Therefore D1 took away the novelty of the claimed subject-matter. Nor could the claimed subjectmatter be regarded as a selection invention since the features replacing the ones in examples 14 and 16 were explicitly disclosed in D1 and were chosen from only one list of alternative possibilities. Reference was made to the Guidelines, C-IV 9.8. The Board did not agree: Modification of examples 14 or 16 of D1 [2.1.1] D1 discloses dispersants comprising amino groups and a poly(oxy-alkylene carbonyl) chain wherein the amino groups are attached to said chain via the residue of an ethylenically unsaturated group […]. [2.1.2] Example 14 of D1 discloses the preparation of a dispersant obtained by reacting a polyethyleneimine having a molecular weight of 10,000 (SP200, manufactured by Nihon Shokubai Kagaku Co. Ltd.) and a polyester prepared from epsilon-caprolactone and 4-methylcaprolactone according to Preparation Example 5. The dispersant thus obtained comprises a POAC chain obtained from two different lactones of C1-6 hydroxycarboxylic acids, the one derived from 4-methylcaprolactone being non-linear. Example 16 of D1 discloses the preparation of a dispersant obtained by reacting polyethyleneimine SP200 and a polyester prepared from epsilon-caprolactone and 12-hydroxy-stearic acid according to Preparation Example 7. The dispersant thus obtained comprises a POAC chain obtained from a lactone of a C1-6 hydroxycarboxylic acid and from a C18 linear hydroxycarboxylic acid, which is not a poly(oxy-C1-6-alkylene carbonyl) chain as required by claim 1 of the patent in suit. Hence, neither example 14 nor example 16 of D1 discloses a dispersant according to claim 1 of the patent in suit. [2.1.3] D1 […] further describes a list of lactones that may be also employed in the addition reaction used to prepare the POAC chain in example 14, said list including lactones of linear C1-6 hydroxycarboxylic acids (e.g. (-caprolactone, (-valerolactone, (-propiolactone, (-butyrolactone) or of branched C1-6 hydroxycarboxylic acids (e.g. (-methyl-(-valerolactone, 4-methylcaprolactone, 2-methylcaprolactone). A similar list is given [… in] D1 regarding the lactone compounds that may be employed in the addition reaction used in example 16. Besides, according to [D1], the hydroxycarboxylic acid suitably used in example 16 may be chosen from a list of several alternatives comprising compounds having a linear C1-6 rest (e.g. (-hydroxyvaleric 1649 | 3398
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acid, (-hydroxy caproic acid, lactic acid, glycolic acid), a branched C1-6 rest (e.g. 2-2-dimethylolpropionic acid) or a linear rest falling outside the requirement of C1-6 for the POAC chain recited in claim 1 (e.g. 12hydroxystearic acid, salicylic acid). [2.1.4] There is however no disclosure in D1 to combine specifically example 14 with that part of [the description] directed to the specific lactones as defined in claim 1 of the patent in suit. In particular, D1 contains no motivation to substitute the 4-methylcaprolactone used in example 14, which is branched, by a linear hydroxycarboxylic acid or lactone thereof. There is also no hint in D1 to use a linear hydroxycarboxylic acid or lactone thereof as defined in present claim 1 in addition to the two monomers used in example 14. In this regard, it is noted that the addition of such a monomer would lead to a POAC obtained from three units, one of which not being according to claim 1 of the patent in suit, so that it would not be novelty destroying. [2.1.5] D1 further does not contain any incentive to modify the particular process of example 14 by selecting two lactones according to present claim 1 as monomers for the preparation of the POAC out of the whole list given in D1, which also includes other lactones that are equally suitable. [2.1.6] The same is valid for the substitution of the 12-hydroxy-stearic acid in example 16 by a linear hydroxycarboxylic acid or lactone thereof according to present claim 1 on the basis of the list of D1, page 7, lines 41-43 and/or lines 48-52. Multiple selections within the ambit of D1 [2.2] The modification of a specific example (either example 14 or example 16) on the basis of a specific passage of the description of D1 […] in order to arrive at the subject-matter now being claimed amounts to a multiple combination of individual elements that has not been explicitly mentioned in D1. Indeed, one has, first, to choose a specific example among all those of D1, secondly, to choose to substitute either the 4methylcaprolactone used in example 14 or the 12-hydroxy-stearic acid used in example 16, and thirdly, to choose a compound according to claim 1 of the patent in suit within the list of alternative hydroxycarboxylic acids and lactones recited in D1 which is not limited to those compounds […]. The same conclusion would be reached if one would consider e.g. claims 1 and 2 of D1, which both disclose dispersants comprising a POAC chain obtainable from hydroxycarboxylic acids or lactones thereof: here, one would have to choose to prepare a POAC chain from two compounds according to claim 1 of the patent in suit within the list of alternative compounds defined in either formula 1 (see in particular the definition of the R3 group) or in claim 2, which are not all according to the definition of claim 1 of the patent in suit. This modification would amount to at least two selections within a list of equivalent alternatives. According to decision T 12/81 such a multiple selection confers novelty since it represents a combination of features that was not specifically disclosed in the prior art. In decision T 332/87, novelty was denied considering the modification of an example illustrative of the invention with a general teaching disclosed in the description of the same prior art document concerning the mere optional addition of a filler applicable to any composition claimed, including those specified in the examples. T 332/87 describes, thus, a different situation from the present case, wherein the objection of lack of novelty raised was based on the modification of an example of a prior art document by selecting in the description of the same document a specific monomer among a list of alternative compounds, not all of which would lead to the subjectmatter as claimed. Therefore the argument of the appellant based on T 332/87 […] can not be followed. [2.3] For these reasons, the Board considers that D1 does not contain a direct and unambiguous disclosure which inevitably leads the skilled person to a dispersant as defined in claim 1 of the patent in suit. Hence, the subjectmatter of claim 1 of the patent in suit is novel. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1644/10 – You’re Late
K’s Law – The ebook
T 1644/10 – You’re Late 2 Jan 2012
In this case the EPO had published the mention of the grant of the patent under consideration on November 22, 2006. The B1 specification was published on the same day. Claim 1 contained an error: the EPO had published an earlier version of the claim instead of the claim as granted! In response to a request by the patent proprietor, the Examining Division ordered the publication of a corrected (B9) specification on March 19, 2008. The error concerned claim 1 in its German version, German being the language of the application as filed. Claim 1 of the B9 document was different from claim 1 of the B1 document in the following way (underlined parts correspond to additions, struck-through parts to deletions) Filter device (1) for the separation of undissolved solid substances from liquids, in particular in the fields of waste water purification and water treatment, with several filter elements (6), for the introduction into a container (2) containing the unpurified liquid, wherein through the individual filter elements (6) a filtrate is capable of being drained away, the fitter elements are arranged so as to be capable of rotating around a horizontal axis, and the filter elements (6) are designed and arranged in such a manner, that they form a hollow space (4) in the centre, characterised in that the filter device (1 ) comprises a gassing installation (8), which is stationarily arranged in the hollow space (4) and which for the formation of a mixture of gas and liquid is capable of being impinged with compressed gas and which is arranged in such a manner, that in the liquid a flow of a mixture of gas and liquid is capable of being produced at the filter elements (6), such that this flow renders an adhesion of solid substances to the filter elements (6) more difficult, and in that the filter elements (6) are arranged to be rotatable around the gassing installation (8), wherein the gassing installation (8) comprises either a hollow shaft (9) with gas outlet openings, or at least one elongated hollow body (10) that is arranged parallel to a hollow shaft (9) and closed on both ends, or at least one elongated hollow body (10) arranged horizontally as well as orthogonally to a hollow shaft (9), and the at least one hollow body (10) is connected with a chamber (12) of the hollow shaft (9) through connecting pieces (11), wherein the chamber (12) is connected with a compressed gas generator (14). NB: The English version was the same for the B1 and the B9 documents. The “opponent” filed an opposition against the patent on December 18, 2008, i.e. almost nine months after the publication of the corrected specification. The Opposition Division (OD) concluded that the opposition was deemed not to have been filed. The opponent filed an appeal. The Board confirmed the verdict of the OD and made some interesting statements on the principle of protection of legitimate expectations (PPL, sometimes also referred to as “principle of good faith”). I have finally found the time to translate this interesting decision. Admittedly, it is quite lengthy but I find it very pedagogical and well worth reading. For those who are in a hurry, here is a translation of the Headnotes 1. Pursuant to A 99(1) EPC 1973 the moment at which the time limit for filing an opposition begins to run only depends on [the fact] that a European patent has been granted and that the mention of the grant has been published in the European Patent Bulletin. It does not depend on [the fact] that the patent specification has been published (see point [6] of the reasons). 2. The mention of the publication of a corrigendum to the patent specification in the European Patent Bulletin does not trigger a first or a further time limit for filing an opposition, even if the corrected patent specification has a scope of protection that is broader than the scope of protection of the patent specification as originally published. (see point [11] of the reasons) 1651 | 3398
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3. The application of the principle of protection of legitimate expectations to a failure to meet the time limit to file an opposition in inter partes proceedings is subject to a balance of interests. The patent proprietor’s legitimate expectations regarding the validity and legal force of the decision to grant are not, as a rule, subordinate to the opponent’s legitimate expectations regarding the correctness of the content of the patent specification as published. This would contradict the principle of equal procedural treatment of the parties. (see point [27] of the reasons). NB: Unless otherwise specified, all legal provisions refer to the EPC 1973. *** Translation of the German original *** [1] The appeal fulfils the requirements of A 106 to A 108 and R 99 EPC (2000) and is, therefore, admissible. The name of the company of the opponent and appellant was to be corrected to “Huber SE” ex officio. It follows from the extract of the commercial register (Handelsregisterauszug) that “Hans Huber AG Maschinen- und Anlagenbau” has changed its legal form to become “Huber SE”. According to German law, such a change of legal form only concerns the legal form as such but not the legal personality. In application of the legal fiction provided in § 202 (1) of the German Transformation Act (Umwandlungsgesetz) the legal identity of the company undergoing the change is conserved. Therefore, the change of company to be taken into account ex officio at any time. [2] The appeal cannot be allowed. The reasons set out in the impugned decision, according to which the opposition was filed belatedly are not objectionable, as will be explained in what follows. Provisions to be applied (EPC 1973 vs. EPC 2000) [3] As the application under consideration was filed on December 2, 2003, the question arises as to which provisions have to be applied after the entry into force of the EPC 2000. Here the following applies: procedural acts that were legally effective for the proceedings (verfahrensgestaltend schon rechtswirksam) and completed (e.g. the time limit for filing an opposition (TFO)) before the entry into force of the EPC 2000 on December 13, 2007, are to be decided on the basis of the old law (J 10/07 [1]; T 1172/04 [1], tempus regit actum). The new provisions are to be applied to factual situations that were not yet completed at that time, provided that they are mentioned in Article 1, n° 1, first and second sentences of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the EPC of 29 November 2000 (OJ EPO, Special edition 1/2007, 197). The Board is of the opinion that the provisions cited hereinafter do not differ depending on whether the old or the new law are considered, even though there may have been numerical or linguistic adaptations in particular cases. Therefore, the Board does not consider it to be necessary to explain in detail the legal situation for each individual provision. As a result, only the provisions of the EPC 1973 are applied. Computation of the beginning and the end of the TFO [4] In agreement with the parties the Board of appeal bases its considerations on the following factual situation: The wording of claim 1 according to the decision to grant a patent of October 26, 2006, comprised three parallel alternatives A, B, and C, whereas the wording of claim 1 of the patent specification in the relevant German version only contained the alternatives A and B but not alternative C. The opponent invokes the fact that its opposition was “only” directed against alternative C and that the 9-month TFO related to this subject-matter was only triggered by the publication of the B9 document. According to A 99(1), an opposition to a patent has to be filed within nine months from the publication of the mention of the grant of the European patent. In the present case, however, no mention of the grant of the European patent on which the decision to grant was based had been published because the patent specification B1 was incorrect. Therefore, the Board of appeal has dealt with the legal question whether and how the publication of the patent specification can determine the moment in time when the TFO starts and whether the publication of the B9 document having a broader scope of protection than the B1 document can trigger a new TFO, which might be limited to the subject-matter of alternative C. [5] Whether an opposition has been filed in due time depends on when the TFO begins, because this moment also determines the end of the nine-month TFO, as well as on the payment of the opposition fee.
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According to A 99(1), which was in force when the opposition was filed, an opposition against a European patent has to be filed within nine months from the publication of the mention of the grant in the European Patent Bulletin (EPB) (A 99(1), first sentence); it shall not be deemed to have been filed until the opposition fee has been paid (A 99(1), second sentence). [6] In the present case the mention of the grant of the European patent had been published in the EPB 06/47 on November 22, 2006. Therefore, the nine-month TFO ended on August 22, 2007. As a consequence, the opposition filed on December 18, 2008, was not filed in due time and is deemed not to have been filed, also because the opposition fee was paid by debit order only on this date. (As far as the requirement for the payment of the opposition fee within the TFO is concerned, see T 152/85 [1]) According to the wording of A 99(1), the TFO is triggered exclusively by the fact that a European patent has been granted and a mention of the grant has been published in the EPB, and not by the fact that a patent specification has been published. No legal effect of the publication of the specification [7] The appellant has not contested that in the present case the decision to grant a patent concerned embodiment C in claim 1 and that the mention of the grant of the patent was published in the EPB on November 22, 2006. Regarding its content, the mention complied with the requirements pursuant to A 97(4). The opinion of the appellant according to which the mention was deficient to the extent that the patent specification B1 was deficient contradicts the wording of the provision which only refers to the procedural fact of the grant of the patent but not to the patent specification. The publication of the mention of the grant of the patent in the EPB on November 22, 2006, was complete and correct with respect to its content, as also admitted by the appellant and, therefore, was not affected by any of the deficiencies of the publication that were considered in decision J 14/87 [11]. [8] Considering that the publication of the European patent specification is not relevant for the computation of the time limit pursuant to A 99(1), this also holds true for the publication of a subsequent correction of the patent specification (cf. T 438/87 [4.1]) It also follows from the legal systematics of A 98 and A 99 that the wording of the patent specification as published has no legal effect even when its contents differ from the decision to grant a patent. A 98 only provides: “At the same time as it publishes the mention of the grant of the European patent, the EPO shall publish a specification of the European patent containing the description, the claims and any drawings”. The fact that the lawmaker in the next article, i.e. A 99(1), nevertheless makes the beginning of the time limit depend on the day of the publication of the mention of the grant of the patent in the EPB only and does not refer to the actual publication of the patent specification makes it obvious that the TFO shall not depend on the public availability of the patent specification. Therefore, from a legal point of view, it is irrelevant for the beginning of the TFO whether the scope of protection defined in the patent specification is smaller than the scope of protection as defined in the decision to grant a patent or whether it exceeds it. Systematics of A 64(1), A 97(4), and A 99(1) [9] The arrangement of A 99(1) also serves legal security. As the EPB is published routinely at a date that is known in advance, the date of the publication of the mention of the grant of the patent is determined unambiguously and in a way that can be reproduced at any later moment, whereas the actual publication of the patent specification can be uncertain because the law does not establish any duty of documentation. However, the moment when a European patent becomes effective has to be understandable (nachvollziehbar) in a simple and safe way in view of the national patent rights which arise from it. Thus A 64(1) provides that a European patent shall, (subject to the provisions of paragraph 2) confer on its proprietor from the date of publication of the mention of its grant, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State. Clearly the law has not added an additional requirement according to which the patent specification has to be published and must be correct as to its content for the patent to be effective.
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It is not accidental that the moment at which the European patent becomes effective in the Contracting States pursuant to A 64 coincides with the moment at which the mention is published in the EPB pursuant to A 97(4) and the moment at which the TFO begins to run pursuant to A 99(1) but it serves the legal security the lawmaker intended. In this context it has to be noted that the grant proceedings are ex parte proceedings and would be factually terminated when the decision to grant a patent is sent (notified) to the applicant. However, notwithstanding these procedural principles the legal effectiveness of the decision to grant a patent is shifted pursuant to A 97(4) to the moment at which the mention of the grant of the patent is published in the EPB for the sake of legal security so that the European patent right arises at the same time as the national rights granted pursuant to A 64. These provisions do not establish that it is necessary to send the patent specification to the applicant or [make it available to] the public in order for the decision to grant a patent to become legally effective, and this would indeed be completely alien to the proceedings. For these reasons also it has to be noted that the moment at which the patent specification is made available has no influence on the beginning of the TFO. This corresponds to the wording of A 99(1) according to which the opposition has to be filed “within nine months from the publication of the mention of the grant of the European patent”. Thus the lawmaker has expressly associated the beginning of the TFO with the moment at which the European patent becomes effective and at which national rights arise. Confirmation of Legal Advice n° 17/90 [10] The Board of appeal considers Legal Advice n° 17/90, which has been published by the EPO (OJ EPO 1990, 260) but which is not binding on the Board to be correct in view of the legal situation under consideration. The Board does not share the opinion of the appellant according to which the meaning of the term “misprints” used in point 1 of the Legal Advice is limited to mistakes created in the printing process. The Legal Advice defines this term as a divergence from the text on which the decision to grant was based, owing to error during production. This definition includes not only typesetting errors (“Druck-setz-Fehler”) but all possible mistakes that can occur during the production of the patent specification, including the use of a version of the claims that has not been granted. Therefore, based on the legal situation presented above, the Board of appeal does not share the opinion of the appellant according to which the legal effect of the publication of the mention of the grant of the patent is limited to the extent to which the wording of the specification is identical to the content of the decision to grant a patent. No legal effect of the publication of a corrigendum to the specification [11] If even the publication of the B1 specification has no legal effect, then the mention of the publication of a corrigendum to the patent specification in the EPB 2008/12 on March 19, 2008, cannot have any legal effect in view of the beginning of the TFO. Therefore, because of the unambiguous legal situation the publication of the B9 specification has not triggered a “first” TFO, nor has it triggered a “further” TFO, limited to the embodiment C in claim 1. Principle of unity of the opposition proceedings [12] Moreover, it has to be noted that a “legal construction” such as the one aimed at by the appellant would contradict the principle of a unitary patent enshrined in the EPC. It would be unlawful to consider that the first publication dated November 22, 2006, gave rise to a patent limited to the subject-matter of alternatives A and B in claim 1 and that it was only the publication of the corrected version on March 19, 2008, that gave rise to a patent encompassing the alternative C, because in grant or opposition proceedings [the EPO] can only grant a unitary patent based on the set of claims that has been expressly agreed upon by the applicant pursuant to A 113(2). Moreover, the EPO does not have the power to grant a patent limited to individual claims of a set of claims presented [to it] and to reject the remaining claims of this set as not allowable. The set of claims is either allowable as a whole or to be dismissed, even if only one claim does not comply with the requirements of the EPC. As can be seen from A 99(2), an opposition that is limited to certain claims encompasses (erfasst) the whole European patent and does not create a partial patent corresponding to the extent to which the patent has not been attacked. Therefore, in order to always ensure the maintenance of a unitary patent, A 99(4) provides that opponents shall be parties to the opposition proceedings as well as the proprietor of the patent. This provision 1654 | 3398
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guarantees the unity of the opposition proceedings and excludes, for instance, that there are several parallel or subsequent opposition proceedings. As a consequence, the systematics of the unity of the opposition proceedings laid down in the EPC hinders mistakes that have occurred in the production and publication of the patent specification from having any influence on the beginning and the course of the TFO if the publication of the mention of the grant of the European patent as such was regular. As in the present proceedings the publication of the mention of the grant of the European patent was done in a legally correct way on November 22, 2006, the nine-month TFO began to run on that day. As a consequence of provisions of law, the mention of the correction of the patent specification, which was published at a later moment, did not cause the beginning of a completely new TFO nor did it trigger a TFO limited to the embodiment C of claim 1 of the patent specification, as explained by the appellant. Legal delimitation with respect to a correction of a decision to grant a patent [13] From a legal point of view, the present case of a retroactive correction of the patent specification is to be distinguished from the correction of the decision to grant. In the first case the patent specification is brought in conformity with the content of the decision to grant, i.e. the version of the patent as granted. The scope of protection of the patent as granted is not changed by [such action]. If the decision to grant a patent was extended, in the second case, by addition of embodiment C to claim 1, then this would result in a substantive amendment and, therefore, in an extension of the scope of protection conferred by the patent. The corresponding question of whether this correction could retroactively amend or extend the scope of protection in a legally effective (rechtswirksam) way does not arise in the present case. Therefore, the questions that have been referred to the Enlarged Board of appeal (EBA) in decision T 1145/09 are not relevant for the decision to be taken in the present case. The “mere” correction of the patent specification, intended to bring the latter in conformity with the content of the decision to grant, does not change the substantive patent right that has arisen as a consequence of the decision to grant at all; it “only” corrects a misleading piece of information of the EPO concerning the content of the European patent, which has not changed. Expiry of the TFO as an intermediate result [14] The explanations given above, therefore, disprove the opinion of the appellant according to which the publication of the B9 specification on March 19, 2008, triggered a (fresh) nine-month TFO at least against the subject-matter of embodiment C of claim 1 of the patent. Because, therefore, as already shown under point [6] above, the TFO began to run when the mention of the grant was published in the EPB, on November 22, 2006, and, as a consequence, expired on August 22, 2007, the opposition filed on December 18, 2008, by the appellant has not been filed in due time. Therefore, the Board of appeal had to examine whether there was a remedy for the failure to file the opposition in time. In this context, it was to be examined whether the requirements stipulated in A 122 constituted an exclusive set of rules or whether the PPL could be applied. Domain of application of the rules for re-establishment pursuant to A 122 [15] The misleading information provided by the EPO in the form of the patent specification has caused the appellant to fail to file an opposition within the TFO because he only took notice of the scope of protection encompassing embodiment C by means of the publication of the B9 specification, after the TFO had expired. Therefore, the legal question arises whether re-establishment into the TFO can be granted. The factual submissions of the appellant can be understood to mean, from a legal point of view, that the appellant had missed this time limit through no fault of his own, because he trusted that the wording of claim 1 of the German version of the originally published patent specification corresponded to the patent as granted. Therefore, the loss of rights caused by the expiration of the time limit was unjustified and had to be remedied. The further submissions of the appellant concerning the public’s need for legal remedies (Rechtsschutzbedürfnis) concern the procedural situation provided for in A 122, allowing someone who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit, to request re-establishment into the time limit. [16] However, the appellant does not invoke this provision, and rightly so. He has not requested re-establishment and has not paid the corresponding fee because the law does not allow an opponent who has missed the TFO to benefit from re-establishment pursuant to A 122. 1655 | 3398
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Although in the present case even the formal requirements pursuant to A 122 (request, time limit, fee, one-year deadline) have not been complied with and the appellant does not invoke this provision, the Board feels the need to explain why re-establishment of an opponent into the missed time-limit for filing an opposition is prohibited […] pursuant to A 122. As a matter of fact, in order to decide on whether the failure to comply with the time limit can be legally “remedied” by application of the PPL, it is necessary to find that the factual situation is not governed by A 122. Otherwise the application of the PPL would constitute an inadmissible circumvention of the requirements laid down in A 122, which have not been fulfilled in the present case. In this context the one-year deadline of A 122(2), second sentence, has a great legal significance because the lawmaker has expressly laid down a positive foreclosure effect (Ausschlusswirkung) to the detriment of the person seeking a legal remedy. Moreover, it is necessary to examine whether the lawmaker has intended a negative foreclosure effect. Insofar as the wording of A 122 would exclude an opponent from re-establishment, this would clearly constitute a negative foreclosure effect for the opponent. Then, if the factual situation is the same, the failure to meet the TFO could not ne remedied along other rules of law without violating A 122. [17] The EBA has decided, as soon as in G 1/86 [8], that A 122 does not find application when the opponent has failed to comply with the TFO, not only because of its wording – which defines the applicant and patent proprietor to be entitled, but not the opponent – but also because for reasons of procedural certainty (Verfahrenssicherheit), because it is the filing of the opposition itself that creates a new legal instance (Rechtszug). According to the ratio of this decision of the EBA an application of A 122 in favour of an opponent who has missed the TFO is excluded, be it only because at the expiry of the TFO the members of the public who could have become opponents did not have any concrete procedural relationship with the EPO. The further reasons invoked by the EBA, relating to legal certainty, also exclude the direct or analogous application of this provision in favour of an opponent who has missed the TFO. The fact that the opponent has missed the TFO through no fault of his own, does not alter the interests involved (Interessenlage) with respect to those of an opponent missing the TFO. Unlike ex parte proceedings, inter partes proceedings require [the EPO] to balance the interests of both parties. The “improvement” of the situation of the opponent could only be obtained at the expense of the patent proprietor’s legitimate expectations regarding the effectiveness and legal force (Rechtskraft) of the decision to grant. The EPC has expressly solved this conflict of interests in favour of the patent proprietor and has given the principle of legal effectiveness (Rechtskraftwirkung) priority by excluding a potential opponent from requesting re-establishment after having missed the TFO. An opponent who misses the TFO in spite of all due care required by the circumstances having been taken, therefore, is referred to the possibility of national nullity proceedings and cannot request re-establishment into his rights by means of a direct or analogous application of A 122. This legal opinion has already been expressly validated in the case law, in decision T 702/89 [3]. The Board of appeal is of the opinion that this assessment still holds true because whenever the interests of the opponent in being re-established and legal certainty regarding the validity and legal force (Bestands- bzw. Rechtskraft) of a European patent are to be balanced, legal certainty is to be given priority in view of the effect of a finally granted (bestandskräftig) patent in the Contracting States (A 64). Moreover, it is to be noted that the legal possibility of re-establishment would contradict the principle of unity of the opposition proceedings explained above under point [12] when there is more than one opponent because a reestablishment into the missed time limit would de facto extend the TFO. Additional opposition proceedings initiated retroactively by “re-establishment” could take a different turn, from the point of view of procedural law, than opposition proceedings that have been partly or completely terminated before, and could, therefore, lead to different versions of the patent. Application of the PPL when time limits are missed [19] The fact that the TFO has been missed cannot be “remedied” in the present case by invoking the PPL, as will be explained in more detail below, even if the appellant has not filed an opposition because it trusted that the patent specification issued by the EPO was correct. PPL in connection with A 125 1656 | 3398
T 1644/10 – You’re Late
K’s Law – The ebook
[20] The appellant invokes a violation of A 125 because the PPL has not been taken into account. According to this provision, in the absence of procedural provisions in the EPC, the EPO shall take into account the principles of procedural law generally recognised in the Contracting States. It follows that in order for this provision to be applied there has to be a legal loophole in the procedural provisions of the EPC. Also, there have to be principles of procedural law that are recognised in the Contracting States. The statement of the EBA (see G 1/86 [4,7]) that according to the documents relating to the EPC, even in a case of force majeure an opponent should not be granted the right to re-establishment (and, therefore, [reestablishment] into a missed TFO) makes clear that in this context A 122 does not constitute a legal loophole but a negative foreclosure provision. Falling back on principles of procedural law generally recognised in the Contracting States pursuant to A 125, based on a factual situation governed by A 122, would be excluded because there is no legal loophole. [21] The only way to consider that the factual situation of the present case is not objectively governed by A 122 is [to base one’s reasoning on the fact] that the appellant has trusted the patent specification B1 issued by the EPO to be correct and, as a consequence, has omitted to file an opposition in due time. By issuing an incorrect patent specification B1 the EPO has not fulfilled its duty of publishing the (correct) patent specification laid down in A 98. This misleading information of the EPO extends beyond the factual situation governed by A 122(1). The factual element (Tatsbestandsmerkmal) “in spite of all due care required by the circumstances having been taken” only concerns the duties of the applicant/patent proprietor and is intended to encompass the malfunctions (Störungen) resulting therefrom. That the public has been misled by the incorrect patent specification B1, however, has its origin in a fact that is related to the duties of the EPO and which is not governed or excluded by A 122(1). The factual point of contact for the application of the PPL as a remedy for having missed the time limit, therefore, is constituted by the false information of the public by the EPO, by means of the publication of the patent specification B1. Legislative content of the PPL [22] The case law of the Boards of appeal acknowledges that in general a user of the European patent system has to be able to trust the legal validity (Rechtsgültigkeit) of documents and procedures of the EPO and that he shall not be prejudiced if they are incorrect. The EBA has repeatedly found that the protection of legitimate expectations is acknowledged in the Contracting States to the EPC and anchored in European Community law (see G 5/88 [3.2] and G 2/97 [1]). [23] However, the PPL as a “procedural principle” is not a rule of law that is uniformly defined, neither in the case law of the Boards of appeal nor in the case law of the Contracting States, and it cannot be directly applied as a concrete procedural rule by referring to A 125. Therefore, the application of this principle is not unrestricted and always has to be examined within the framework of the concrete procedural situation under consideration. When doing so, one has to take into account the procedural system of the EPC on the one hand and the concrete procedural embodiments (verfahrensrechtliche Ausgestaltung) of the PPL in the Rules of procedure of the Contracting states on the other hand. [24] For instance, there is no generally accepted principle in the Contracting States according to which, when a time limit for using legal means in inter partes proceedings has been missed, it is sufficient to invoke some “official” false information in order to obtain a new time limit for using the legal means after the “official” correction, or for the time limit to be deemed not to have been missed. Considering the present procedural question as to when the TFO begins to run after the grant of a patent, the German Federal Patent Court has decided, quite to the contrary, that in a legal situation corresponding to § 59(1), first sentence, of the German Federal Patent Law, a clear-cut entry into force of the legal effects of the patent is necessary for the sake of legal security [and that] the publication of the patent specification and its correctness as regards the content is not an additional requirement without which the TFO cannot effectively begin to run (BPatGE 28, page 18) [. The Court has] referred the opponent to the possibility of file inspection whereby it was possible to know the exact version of the patent. [NB: I had to interpret and complete the German sentence because it is unclear and appears to contain at least two syntax errors] 1657 | 3398
T 1644/10 – You’re Late
K’s Law – The ebook
[25] In the decisions of the Boards of appeal also, the protection of legitimate expectations is considered to be a mere assessment criterion and not an absolute (fest normiert) rule. There have been differences regarding the legal consequences (Rechtsfolge): either re-establishment into the missed time limit has been granted (T 781/04 [10]) or the applicant was treated as if he had carried out the missing act (in due time) (cf. J 14/94 [9]; T 1973/09 [2.4]) Content of the decision G 5/88 of the EBA [26] Decision G 5/88 of the EBA, applying the PPL, treats the opponent – whose opposition had been filed at the German Patent Office in Berlin within the nine-month TFO but had reached the EPO in Munich after expiration of this time limit – as if he had filed the opposition in due time at the EPO. Therefore, the legal consequence of the PPL to be applied was not a re-establishment into the missed time limit but the legal fiction of timeliness. Therefore, this decisions opens the legal possibility of remedying the fact that a time limit had been missed through no fault [of the opponent] without requiring the legal requirements for re-establishment laid down in A 122 to be fulfilled. By proceeding in this way the EBA has made the patent proprietor’s legitimate expectations and right to the legal effectiveness of the decision to grant subordinate to the interest of the opponent in an effective assertion of his legal rights (Rechtsverfolgung). [27] However, the patent proprietor’s legitimate expectations regarding the validity and legal force of the decision to grant are not, as a rule, subordinate to the opponent’s legitimate expectations regarding the correctness of the contents of the patent specification. This would indeed contradict the principle of equal procedural treatment of the parties. Such a subordination can only be justified on the basis of the individual circumstances. In the factual situation underlying the decision G 5/88 there were such particular circumstances because the patent proprietor had received the notice of opposition within a time frame in which he would also have received a notice of opposition filed in due time. Moreover, he had not received a notification stating that there had not been any opposition filed within the nine-month TFO. Therefore, the patent proprietor had no reason to have legitimate expectations regarding the legal effectiveness of the decision to grant after all. As he had received a notice of opposition immediately after the expiration of the TFO, he had to consider the possibility of a revocation or amendment of the decision to grant a patent. Therefore, the question of whether the opposition had been filed in time and was, as a consequence, admissible, depended on the decision of the EPO that still had to be taken. This factual situation does not justify any legitimate expectations of the patent proprietor regarding the legal effectiveness of the decision to grant that are worthy of protection. [28] In the present case there are no circumstances that could justify giving the legitimate expectations of the appellant (opponent) regarding the correctness of the content of the patent specification priority over the legitimate expectations of the patent proprietor regarding the validity of the decision to grant, because no notice of opposition was filed within the TFO. Quite to the contrary, after the expiration of the nine-month TFO the respondent received the communication of the EPO stating that no opposition had been filed. Moreover, it was not part of the duties of the respondent to ensure the correctness of the content of the patent specification because this is the exclusive duty of the EPO pursuant to A 98. Nor can the appellant’s error concerning the consequences of the publication of an incorrect patent specification establish a situation justifying legitimate expectations (Vertrauenstatbestand) in his favour. It belongs to the appellant’s duties to keep himself informed on the legal consequences of a patent specification having an incorrect content, all the more as the EPO in Legal Advice n° 17/90 has expressly pointed out that the patent specification has no legal effects. It is true that the text of the patent specification is intended to facilitate the access of the public to the content of the patent as granted, and in particular to the category and extent of the exclusive rights (Schutzrecht), but it does not establish any legal effects concerning the course of the TFO, as can be seen from the explanations given above on the legal systematics [and in particular the connection] between A 64(1), A 97(4) and A 99(1)(4). Therefore, the Board of appeal agrees with the appellant that the publication of an incorrect B1 specification is a serious mistake of the EPO, but it does not agree [with the appellant’s opinion] that the publication of the incorrect specification establishes a situation justifying legitimate expectations in favour of an opponent, which could hinder the decision to grant from being – even partially – legally effective until the publication of a corrected specification, or justify that a fresh TFO run from the publication of the correction. Therefore, the patent specification can only serve for allowing a first review of the patent but cannot replace the examination of the scope of protection conferred by the granted patent by means of file inspection.
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T 1644/10 – You’re Late
K’s Law – The ebook
As a consequence, the appellant cannot rely on the application of the PPL [in order to remedy] the fact that the TFO has been missed. Therefore, the opposition was not filed in due time. As the opposition fee has been paid only after the expiration of the nine-month TFO, the opposition is deemed not to have been filed pursuant to A 99(1), third sentence. Referral of an important point of law to the EBA [29] Insofar as the appellant has requested that an important point of law be referred to the EBA, the requirements pursuant to A 112(1) are not fulfilled. The request is to be dismissed because the deciding Board of appeal can decide on all the points of law that are relevant for the decision without doubt. The answer to the question on the beginning and, therefore, the end of the TFO directly results from the legal systematics and the wording of A 64(1), A 97(4), A 98 and A 99(1)(4). The same holds true for the lack of legal effect of the publication of a European patent specification on the course of the TFO, on which the Board has decided in agreement with the previous case law (cf. T 438/87). The answer given by the Board to the legal question, i.e. that the failure to meet the TFO cannot be remedied by invoking the PPL if this necessarily entails a violation of the legitimate expectations of the patent proprietor regarding the validity or legal force of the decision to grant, is based on the principle of equal procedural treatment of the parties and is in agreement with the decisions of the EBA G 1/86 and G 5/88 cited above. Confirmation of the refund of the opposition fee [30] As the opposition fee has not been paid within the TFO, the opposition is deemed not to have been filed pursuant to A 99(1), third sentence. In view of this legal fiction, there was no cause in law for the late payment of the opposition fee (cf. T 323/87 [5]). An opposition fee paid without cause misses its purpose (Günzel in Benkard, EPÜ, Munich, 2002, §99, marginal number 35). Therefore, the OD was right in ordering the refund of the opposition fee. Dismissal of the appeal [31] The appeal is to be dismissed for the relevant reasons given in the impugned decisions. It is only for the sake of clarity in the final treatment of the proceedings that the Board has expressly confirmed the refund of the opposition fee in the order. ORDER For these reasons it is decided that: 1. The appeal is dismissed. 2. The refund of the opposition fee ordered by the first instance is maintained. Should you wish to download the whole decision, just click here. The file wrapper can be found here. A French summary has been published here.
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T 1007/09 – Talking With Asterisks
K’s Law – The ebook
T 1007/09 – Talking With Asterisks 31 Dez 2011
In its decison revoking the opposed patent, the Opposition Division (OD) found the main request (patent as granted) as well as the three auxiliary requests on file to lack inventive step. The Board did not agree and maintained the patent as granted. It also considered the question of whether the appeal fee should be reimbursed: *** Translation of the French original *** [9] Pursuant to R 111(2) the decisions of the EPO which are open to appeal shall be reasoned. According to the established case law a lack of reasoning of a decision constitutes a substantial procedural violation within the meaning of A 113(1) (cf. inter alia T 763/04; T 1182/05; T 246/08). In the present case the impugned decision comprises a blank paragraph (paragraph 6.2.3).
The opposition division is of the opinion that *********************** It is obvious that the OD intended to give the reasons justifying its dismissal of the second auxiliary request, but it did not do so, whereby it kept the appellant in the dark as to the reasons for the dismissal. Therefore, the impugned decision is affected by a substantial prodedural violation. As the appeal is granted, it is necessary to order the refund of the appeal fee pursuant to R 103(1)(a). Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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T 193/07 – Purely Hypothetical
K’s Law – The ebook
T 193/07 – Purely Hypothetical 30 Dez 2011
Both the patent proprietor and opponent 2 (!) filed an appeal against the decision of the Opposition Division (OD) revoking the patent under consideration. In what follows the Board discussed the admissibility of the opponent’s appeal: [2.1] According to A 107 “any party to the proceedings adversely affected by a decision may appeal”. [2.1.1] The first instance opposition proceedings led to the revocation of the patent in its entirety as requested by opponent 2 […]. The order of the decision of the OD thus fully complies with the request of opponent 2. [2.1.2] A party is only adversely affected if the order of the appealed decision does not comply with its request. Hence, in the present case, [opponent 2] is not adversely affected by the decision of the OD. [2.2] [Opponent 2] argued that A 107 did not expressly further specify the meaning of “adversely affected”. In a case like the present one, with no possibility of continuing appeal proceedings initiated by an appeal of the patent proprietor if the latter withdraws its appeal, procedural situations could occur which could adversely affect the respondent-opponent in parallel or related national infringement or nullity proceedings. [2.2.1] However, the board observes that [opponent 2] has not identified any specific reasons for which it considered itself to be adversely affected on the day it filed its notice of appeal. [Opponent 2] merely presented purely hypothetical considerations concerning potentially disadvantageous situations that may occur (in the future) in related national litigation proceedings. These considerations have no legal relevance under A 107, first sentence. [2.2.2] In this connection, the board also observes that the possibility of an anticipatory cross-appeal is not foreseen by the EPC (see e.g. decision T 854/02 [2.2]). A respondent-opponent which is not adversely affected by a decision revoking the patent is thus not entitled to file an appeal for the sake of acquiring an independent appellant status instead of the status of a respondent (party as of right). [2.3] Moreover, the board’s conclusion in the present case is in accordance with the established jurisprudence of the boards of appeal, according to which in cases where the order of the decision of the OD is the revocation of the patent, an opponent who requested revocation of the patent in its entirety is not “adversely affected by” said decision within the meaning of A 107, first sentence, irrespective of the reasons given in the decision. Reference can e.g. be made to decisions T 854/02 [3.1-2], T 981/01 [5-6], T 1147/01 [2], T 1341/04 [1.2(i),1.3] and T 473/98 [2.2-8]. Whether or not the OD, in its decision to revoke the patent on the ground of lack of inventive step, dealt with all the novelty objections raised by opponent 2 is thus not relevant in the assessment of the admissibility of the appeal of [opponent 2]. The board sees no reason for deviating from the established case law in the present case. [2.4] Summarising, in the board’s judgement, [opponent 2] was not entitled to appeal against the decision of the OD, since it was not “adversely affected by” said decision within the meaning of Article 107 EPC. [2.5] Therefore, the appeal of [opponent 2] is not admissible. [2.6] Consequently, the board considered the submissions of [opponent 2] from the point of view of its status as a respondent to the appeal of the patent proprietor. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 305/07 – Time Does Not Heal All Wounds
K’s Law – The ebook
T 305/07 – Time Does Not Heal All Wounds 29 Dez 2011
Evidence that has been considered inadmissible by the Opposition Division (OD) because it had been filed belatedly will not necessarily be admitted in appeal proceedings only because it is re-filed together with the statement of grounds of appeal. This is what the patent proprietor in the present case had to find out when filing an appeal against the decision of the OD revoking his patent. [5] The [patent proprietor] filed the experimental evidence which had not been admitted by the OD, i.e. experimental evidence originally included in the letters dated 26 June 2006 and 21 July 2006, with its statement of the grounds of appeal and requests its admission. [6] The board is not convinced by the [patent proprietor’s] argument that “the EPO and the Opponent have now had ample time to evaluate the experimental data and the Opponent has had time, should it wish to, to repeat any experiments”. The board does not see why the [opponent] should react to experimental evidence which is not “in” the proceedings (even if it could be expected that it would be re-filed in appeal proceedings). The [patent proprietor’s] argument overlooks the difference between filing and admissibility. [7] The admissibility of late-filed evidence during appeal proceedings is specifically regulated in Article 12(4) RPBA stipulating that, without prejudice to the power of the board to hold inadmissible evidence which was not admitted in the first instance proceedings, everything presented by the parties with the statement of the grounds of appeal shall be taken into account by the board if and to the extent it relates to the case under appeal. [8] The present claims differ from those dealt with by the OD and in relation to which it considered the experimental evidence as irrelevant. Thus, in the board’s view, Article 12(4) RPBA, first half sentence does not apply here, but Article 12(4) RPBA, second half sentence is to be considered. In particular, the question arises whether, and if so to what extent, the experimental evidence relates to the case under appeal. [9] According to the [patent proprietor] the data originally presented in the letter of 26 June 2006 demonstrate not only that alkali metal salts are indeed suited to reduce trisulfide variants in a recombinant product, but also that this effect can be applied to other peptides. However, the board considers that what the [patent proprietor] aims to demonstrate is sufficiently demonstrated by the data in the patent, in particular those of Figure 2. The evidential weight of the data originally submitted with the letter of 26 June 2006 is moreover questionable, inter alia, since there is no information as to when, during the recombinant production process, the salt was applied, i.e. during or after fermentation. 1662 | 3398
T 305/07 – Time Does Not Heal All Wounds
K’s Law – The ebook
[10] According to the [patent proprietor] the experimental data as originally submitted with the letter dated 21 July 2006 was filed in order to exclude the mechanism of trisulfide reduction disclosed in document D1 as the mechanism by which the alkali metal or earth alkali metal salts of the present invention operate. However, feature or features relating to a mechanism are absent from claim 1 and therefore it is not necessary to prove that mechanism. [11] The board thus comes to the conclusion that none of the experimental evidence submitted with the statement of the grounds of appeal is relevant to the present case. Therefore, it cannot be considered to “relate” to it. Hence, in accordance with Article 12(4) RPBA, second half sentence the board decides not to admit the experimental evidence filed with the statement of the grounds of appeal. To download the whole decision, click here. The file wrapper can be found here.
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T 468/09 – Don’t Focus On The Negative
K’s Law – The ebook
T 468/09 – Don’t Focus On The Negative 28 Dez 2011
The patent proprietor filed an appeal after the Opposition Division (OD) had revoked the patent under consideration because it found the disclosure not to be sufficient within the meaning of A 100(b). Claim 1 of the main request before the Board read: A urinary catheter assembly comprising at least one urinary catheter (1) having on at least a part of its surface a hydrophilic surface layer (6) intended to produce a low-friction surface character of the catheter by treatment with a liquid swelling medium prior to use of the catheter and a catheter package (7, 16, 29, 34, 42, 46, 51, 51’) made of a gas impermeable material and having a cavity (11, 18, 39, 48, 53) for accommodation of the catheter (1, 58, 69), characterized in that the cavity accommodates said liquid swelling medium for provision of a ready-to-use catheter assembly. The appellant argued that the gist of the claimed invention was to provide an assembly for intermittent catheterisation, wherein the catheter could be withdrawn from the package in a condition which was suitable for insertion into the urethra. In order to put the invention into practice, the skilled person had to provide the urinary catheter with a hydrophilic surface layer, a package made of a gas impermeable material, to place the catheter and a liquid swelling medium in the package and to close the package. Urinary catheters with hydrophilic surface layers were known at the priority date of the patent in suit, and so were gas-impermeable packages. On the basis of the disclosure of the opposed patent and his common general knowledge, the skilled person would have no difficulty in carrying out the catheter assembly in the claimed manner, no matter if the liquid swelling medium were to be placed in direct contact with the catheter surface or in a storage body from which it was released. The subject-matter of claim 1 of the main request covered both embodiments and did not require storage of the catheter for years. The stability of the catheter coating was not an essential feature in the present patent. Opponent 1 pointed out that the invention as claimed was restricted to the embodiments in which the coating was in contact with the liquid swelling medium (water) from the time of manufacture until use of the catheter, which could be up to 5 years later. It was essential that the coating be capable of being stored for the duration of this period without deterioration. Although not specified in claim 1, the recommended time period was, however, implicit. The subject-matter of claim 1 did not include the embodiment in which coating and liquid were kept apart until immediately before use, by confining the liquid in a spongy body. At the time the patent was filed, a skilled person was not able to produce without undue burden a hydrophilic catheter coating that could withstand wet storage for the required shelf life, i.e. avoiding deterioration of the coating. The patent was silent on how to solve this problem with the coating, namely how to provide a pre-wetted catheter assembly which could be stored for up to 5 years, typically 36 months, thus resulting in a long term preservation of the low friction surface characteristic of the catheter until its use. The evidence provided by the appellant clearly showed that the prior art coatings were not suitable. None of the catheters disclosed in the prior art cited in the patent was intended for wet storage. There was no indication in the patent of how the hydrophilic coating catheter could be made. Opponent 2 argued along similar lines. [4.1] A 100(b) states that an opposition may be filed on the ground that the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The requirement is the same as for A 83, which addresses the European patent application before grant. It is established case law that sufficiency of disclosure must be assessed on the basis of the patent specification as a whole, including the description and the claims. Moreover, the disclosure is only regarded as sufficient if it allows the invention to be performed in the whole range claimed, i.e. for all embodiments falling within the ambit of the claimed subject-matter. [4.2] Essentially, claim 1 of the main request defines a urinary catheter assembly comprising a urinary catheter and a catheter package;
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T 468/09 – Don’t Focus On The Negative
K’s Law – The ebook
the urinary catheter has on its surface a hydrophilic surface layer (coating); prior to use, the hydrophilic surface layer is brought into contact with a liquid swelling medium to produce a low-friction surface; the catheter package is made of a gas impermeable material and has a cavity; the cavity accommodates the catheter (preamble of claim 1) and the liquid swelling medium (characterising portion of claim 1) for provision of a ready-to-use catheter assembly.
Claim 1 of the main request covers the two embodiments which are disclosed in the patent specification. [4.3] In a first embodiment, shown in Figures 1 and 2, the catheter package 7 is formed by two sheets 8 and 9 of gas impermeable material welded together along a seam 10 (joint) so as to define a cavity 11 for accommodating a catheter tube 2 and a compartment 12, spaced apart from the cavity by an transitional section 13 […] for accommodation of a liquid swelling medium confined in a storage body 14 made of a spongy or gel-like material […].
The catheter and the spongy body are arranged in the package prior to welding the sheets of gas impermeable material together, in order to form the urinary catheter assembly. This clearly means that the package 7 encloses both the cavity and the compartment […]. Prior to use of the catheter, the hydrophilic surface layer 6 (coating) is prepared for activation of its low friction character by squeezing the liquid out of the body in order to allow it to flow into the cavity and to bring the catheter into a ready-to-use condition […]. This first embodiment, therefore, corresponds point by point to the wording of claim 1 in suit and, contrary to [opponent 1’s] assertion, falls within the scope of said claim. In particular, the hydrophilic coating of the catheter which is accommodated in the cavity is activated “prior to use” by treatment with the liquid swelling medium (preferably water - see paragraph [69]) within the cavity for provision of a “ready-to-use” catheter assembly. This embodiment can readily be carried out on the basis of the information given in […] the description. This was not contested by the respondents either. [4.4] In a second embodiment, not shown in the figures, the spongy body 14 is not used. The liquid is introduced into the package during the assembly operation, prior to the welding of the joint. In this case, the compartment for the liquid swelling medium is integrated with the cavity for accommodation of the catheter, the coating being prepared and activated immediately after completion of the production process when the liquid has been introduced into the package […]. This embodiment is made possible due to the gas impermeable characteristic of the material of the package. As explained in […] the patent, this should be understood as a material sufficiently tight to avoid diffusion by evaporation of the liquid, so as to prevent the coating from drying out and to preserve its low friction character for a long time […]. A period exceeding the shelf life of the catheter is recommended, which could be up to 5 years but is typically 36 months. It should be noted here that the disclosed range is not limited at the lower end and therefore does not exclude much shorter periods of e.g. a few months, though such interpretations should be ruled out which do not make any technical or commercial sense, such as a zero length period or a period of a few days. Moreover, the time period of 36 months is given as an example (“typically”; “recommended”). The important matter is to keep the coating activated and the catheter in a ready-to-use condition “at all times” […], i.e. within the time period corresponding to the above defined range. Claim 1 does not mention any duration for the preservation of the coating, i.e. the period between the time of activation of the coating and the time at which a catheter is used. Therefore the subject-matter of claim 1 also 1665 | 3398
T 468/09 – Don’t Focus On The Negative
K’s Law – The ebook
covers the second embodiment since “prior to use” corresponds in that case to the activation of the coating at the time the catheter assembly is produced. From that time onwards, the catheter assembly is “ready-to-use”, in accordance with the wording of a claim 1. [4.5] As can be derived from the patent specification, the problem underlying the claimed solution is principally to avoid diffusion by evaporation of the liquid swelling medium in order to protect the activated coating from drying out […]. This result is achieved by the gas impermeable characteristic of the material constituting the package, not by a characteristic of the coating. Therefore, the respondent’s arguments based on maintenance of the coating stability and of its coherence over time by avoiding its dissolution in the liquid are irrelevant and not convincing. The same is true for the problem formulated by the OD of avoiding the coating reacting with the material inside the bag or dissolving into water. [4.6] It results therefrom that all the discussions about the characteristics of the coating appear to be irrelevant for the assessment of sufficiency of disclosure and of the reproducibility of the catheter assembly as claimed. The same applies to the document cited by both parties in support of their arguments regarding the properties of the coating. Having regard to the broad definition of claim 1 and given that the gas impermeable material of the package provides sufficient tightness against evaporation of the liquid for a period of time which could vary considerably (“up to five years”), the known catheters referred to in […] the patent specification could be suitable in any case and on the basis of this disclosure the invention can be carried out, even if such catheters may suffer from some other deficiencies. A 100(b) does not require that the best mode be performed. Where a disadvantage of an invention could (possibly) prevent its use, this is not an obstacle to reproducibility provided that the otherwise desired result was achieved by the technical teaching disclosed in the patent (see also T 881/95). This is obviously the case here since the only problem addressed by the contested patent is confined to preventing evaporation of the liquid from the package and subsequent drying of the catheter coating, and this is solved by the provision of an appropriate material for the package. The coating stability of a catheter immersed for a long period of time is not an issue. Under the circumstances, it matters little whether, at the priority date of the contested patent, catheter coatings capable of withstanding water storage over a long period of at least 36 months were available or not. [4.7] For the foregoing reasons, the requirements of A 100(b) are satisfied. The case was then remitted to the OD for further prosecution. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2166/10 – Missing Pages
K’s Law – The ebook
T 2166/10 – Missing Pages 27 Dez 2011
Missing pages are one of the recurring problems to be solved in paper D of the EQE, but the problem also occurs in real life and may have dramatic consequences if it is not dealt with properly. The patent proprietor filed an appeal against the decision of the opposition division (OD) revoking his patent which had been granted on the basis of a Euro-PCT application. In its decision the OD held, inter alia, that, as concerns the description, only description pages 1, 2 and 26 to 43 were entitled to the international filing date of 4 December 2001 and that the subject-matter of the patent as granted extended beyond the content of the application as filed. A main request that the patent be maintained as granted was therefore not allowable. Here is what the Board had to say on this case: [1.1] The appellant argued that the international application, on which the patent in suit was based, was completely filed on the date of filing, i.e. 4 December 2001, and that it therefore included, inter alia, description pages 3 to 25. Further, the appellant argued that, since the arguments given by the opponent in support of the opposition grounds were solely based on the assumption that these description pages were not part of the application as filed, the opponent’s arguments had to fail and, hence, that the opposition had to be rejected. [1.2] In the present case it is therefore necessary to determine which documents made up the application as filed and, in particular, whether or not the description pages 3 to 25 were part of the application as filed on 4 December 2001. [1.3] In this respect the board notes that in the proceedings before the IPEA, in the present case the EPO, the applicant submitted on 3 July 2002 a Demand under Article 31 PCT together with amendments under Article 34 PCT. In the accompanying letter the applicant made it clear that the amendments were to be taken into account by the IPEA only if the Receiving Office (RO), in the present case the International Bureau (IB), were not to grant a petition which was pending before the RO and in which the applicant requested that it be held that the international application was completely filed on 4 December 2001, i.e. including, inter alia, the description pages 3 to 25. The amendments under Article 34 PCT consisted of “new pages” 3 to 25, i.e. new paragraphs [0006] (second part) and [0007] to [0057]. In a table, the applicant indicated for each of these “newly added pages” and for each paragraph thereof which parts of the application as originally filed, i.e. description pages 1, 2 and 26 to 43, Figures 1 to 23, and claims 1 to 52, provided a basis. The board further notes that, subsequently, in a communication dated 6 August 2002 the IB informed the applicant and the IPEA that following a decision:
the originally filed pages 3 to 25 of the description were held to be null and void and were to be disregarded; the international filing date was corrected to read 4 December 2001; the earliest priority date, i.e. 5 December 2000, was reinstated; and the international application would be published as such, i.e. without pages 3 to 25 of the description, with an indication to this effect.
In accordance with this decision, the application was published without the above-mentioned description pages 3 to 25 and with international filing date 4 December 2001. The description as published included the following note between pages 2 and 26: “ATTENTION: PAGES 3-25 WERE MISSING UPON FILING”. The International Preliminary Examination Report (IPER), dated 20 March 2003, was based, inter alia, on description pages 1 to 45 “as received on 01/03/2003 with letter of 25/02/2003” and which were annexed to the IPER. More specifically, paragraphs [0001] to [0005](first part) of the annexed description correspond to paragraphs [0002] to [0006](first part) of the application as published, whereas paragraphs [0005](second part) to [0008] and [0021] to [0068] of the annexed description respectively correspond to paragraphs [0006](second 1667 | 3398
T 2166/10 – Missing Pages
K’s Law – The ebook
part) to [0009] and paragraphs [0010] to [0057] of the description pages as filed by the applicant by way of amendment under Article 34 PCT. The renumbering of the paragraphs was due to deleting paragraph [0001] and inserting a new section concerning the prior art, namely paragraphs [0009] to [0020]. On entry of the European phase, the applicant indicated that the proceedings before the EPO as elected Office were to be based on the documents on which the IPER was based. With the communication under R 51(4) EPC 1973 the applicant was informed that the examining division (ED) intended to grant a patent on the basis of, inter alia, description pages 2 to 5 and 7 to 45 as annexed to the IPER. An annex to the communication included bibliographic data of the patent application, including, inter alia, 4 December 2001 as the date of filing of the application. By filing the translations of the claims and by paying the fees for grant and printing, the applicant approved the text intended for grant. The decision to grant was issued on 2 November 2007 and mentioned 4 December 2001 as the date of filing. The above observations were not contested by the appellant. [1.4] From the above, it follows that the IB held that the description as originally filed, i.e. on 4 December 2001, did not include pages 3 to 25 and that, in accordance with the applicant’s conditional request, the IPEA took into account the amendments submitted with the Demand, which resulted in the addition to the description as filed of new paragraphs [0005](second part) to [0008] and [0021] to [0068]. [1.5] In the board’s judgement, there can therefore be no doubt that the preliminary examination and the patent in suit were partly based on new description pages which had been submitted in the course of the international preliminary examination procedure by way of amendment and which were missing from the application as originally filed. The board therefore concludes that the application on which the patent in suit is based was not completely filed on the international filing date, i.e. 4 December 2001, in that it did not include description pages 3 to 25. [1.6] The question of whether or not the decision given by the IB acting as RO, in which it was held that the description pages 3 to 25 were not filed on the date of filing of the international application, was correct does not alter the above facts and findings based thereon and, hence, need not be further considered by the board in the present decision. In fact, the board observes that neither before the EPO acting as IPEA in the international phase nor before the EPO ED in the regional phase did the applicant raise the issue of the missing pages or request a correction of the filing date (cf. J 03/00). Nor did the applicant contest that the preliminary examination or the patent to be granted was partly based on new description pages which were only submitted in the course of the international preliminary examination procedure by way of amendment and which were missing from the application as originally filed. Nor subsequently did the applicant file a request for correction of an error in the decision to grant. [1.7] The appellant’s argument that the arguments submitted by the opponent in support of the opposition grounds had to fail for the reason that they were solely based on the wrong assumption that description pages 3 to 25 were not part of the application as filed, is therefore not convincing. [1.8] The board concludes that the OD was correct when it held that the application as filed did not include the description pages 3 to 25. Further, the board notes that the OD gave a detailed reasoning as to why the opposition ground set out in A 100(c) prejudiced the maintenance of the patent as granted and that in the statement of grounds of appeal the appellant did not submit any arguments against this reasoning. Since the board does not see any reason to deviate from the reasoning given by the OD, it concludes that the opposition ground set out in A 100(c) prejudices the maintenance of the patent as granted. [1.9] The appellant’s sole request is therefore not allowable. [2] The sole request not being allowable, it follows that the appeal must be dismissed. To download the whole decision, click here. The file wrapper can be found here.
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J 22/10 – Foreign Affairs
K’s Law – The ebook
J 22/10 – Foreign Affairs 26 Dez 2011
The present case was triggered by the late payment of extension fees. The applicant had requested entry into the European phase on February 5, 2008 ; in the request the “extension” box was ticked but no extension states were explicitly mentioned:
In a letter dated April 7, 2008, the applicant’s representative stated that all five extension states were to be designated; he requested the EPO to debit five extension fees and five late payment surcharges from his deposit account. In this letter, the representative cited the Guidelines, chapter A-III 12.2 and pointed out that the underlying interpretation of the Extension Agreements was incorrect. According to him, the only sensible interpretation of the Extension Agreements with Albania, Macedonia and Serbia was “to use R 85a(2) EPC 1973 as was”. As there was no counterpart to R 85a(2) EPC 1973 under the EPC 2000, the old rule had to be applied. The representative also offered arguments why late payment or further processing should be available for Bosnia & Herzegovina and Croatia. So the extension fees for all five extension states could be paid at least two months late with payment of late payment surcharges or further processing fees. The Receiving Section (RS) of the EPO was not persuaded : it refused the late payment and ordered the refund of the fees. It stated that the procedure for payment of the extension fee were not be governed by the EPC. All provisions relating to the implementation of the extension were established by national law in the relevant (extension) state, whereas the extension agreements merely established the amount of the extension fee. The respective national laws of the extension states became obsolete with the entry into force of the EPC 2000 and the deletion of R 85a (2) EPC 1973. The applicant filed an appeal against this decision.
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J 22/10 – Foreign Affairs
K’s Law – The ebook
In compliance with earlier decisions on related matters, the Legal Board found itself to lack competence, and the appeal to be inadmissible: [3] As noted by the Legal Board of Appeal in its communication dated 19 August 2011, the appeal proceedings are essentially concerned with the question whether such a denial of the RS is open to an appeal and, therefore, whether the appeal is admissible. [3.1] According to the exhaustive provisions of A 106(1), only those decisions of the EPO may be contested which are taken by the departments listed therein, i.e. by the RS, Examining Divisions, Opposition Divisions and the Legal Division, acting within the framework of their duties under the EPC. [3.2] The Legal Board of Appeal found in a number of cases that decisions taken by the EPO when carrying out its obligations under the co-operation agreements with certain states extending the protection conferred by European patents (Extension Agreements) were not based on the EPC itself but solely based on the Co-operation Agreements between the EPO on the one hand and the extension states on the other hand; it, therefore, rejected the respective appeals as inadmissible (J 14/00; J 19/00; J 9/04; J 2/05; J 4/05). [3.3] Starting from this, the following aspect is relevant in deciding the current case: [3.3.1] It follows already from the very nature of the Extension Agreements relevant in these appeal proceedings (Albania, OJ EPO 1995, 803 and 1996, 82; Bosnia and Herzegovina, OJ EPO 2004, 619; Croatia, OJ EPO 2004, 117; Former Yugoslav Republic of Macedonia, OJ EPO 1997, 345 and 538; Serbia and Montenegro, OJ EPO 2004, 583, 2007, 406 and 2010, 10) that any decisions based on such international treaties do not fall within the scope of the EPC and, as a result of this, are not subject to the jurisdiction of the Boards of Appeal. [3.3.2] The procedure for payment of the extension fees is determined by the Extension Agreements alone. Although there are certain parallels between the formal procedures of extension of protection under the Extension Agreements on the one hand and the designation of a contracting state under the EPC on the other hand (A 78(2) and A 79(2) EPC 1973, R 38(1) and R 39(1) EPC), the Extension Agreements form a legal system of their own that is distinct from the legal system created by the EPC. References within the Extension Agreements to the EPC, in particular to the so-called period of grace under R 85a(2) EPC 1973 (in combination with A 79(2) EPC 1973, R 107(1)(d) EPC 1973 and the EPO Rules relating to Fees), do not override this fundamental distinction. Consequently, the legal nature of any decision taken on the legal basis of the Extension Agreements remains within that legal system and does not extend to the legal system of the EPC. [3.3.3] The Extension Agreements make it absolutely clear that references to provisions of the EPC are exhaustive and, thus, that there can be no corresponding application of other provisions, including those of A 106 et seq. concerning the appeals procedure. Neither is there anything in the structure or legal nature of the Extension Agreements to support the appealability of the contested decision within the legal framework of the EPC. As bilateral agreements, the Extension Agreements essentially deal – exhaustively and strictly separated from the EPC – with matters pertaining to the integration of extended European applications and protective rights into the respective national law and their relationship to national applications and rights based on the law on industrial property of the extension states. Nor do the Extension Agreements provide for a transfer of jurisdiction on the EPO and its Boards of Appeal. Such a transfer could only have been established by an explicit and clear provision to this effect in the Extension Agreements. Particularly with regard to the principle of sovereignty of the extension states, there is no room for acknowledging an implicit transfer of jurisdiction from the respective national law and the national courts to the EPC and the Boards of Appeal. [3.4] The Legal Board of Appeal is not competent to decide a case that is solely governed by a “foreign” legal system. [4] All this has been brought to the appellant's attention by way of the communication of the Board dated 19 August 2011 to which the appellant chose not to reply. Having reviewed the facts and legal issues involved in this appeal case, the Board maintains the opinion already expressed in said communication and reiterated above.
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J 22/10 – Foreign Affairs
K’s Law – The ebook
[5] Since the contested notification of the RS dated 21 August 2009 refusing its request for late payment of the extension fee concerning the European patent application Nr. 06 752 688.9 is not open to an appeal according to A 106 the appeal has to be rejected as inadmissible. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 491/09 – Clairvoyance
K’s Law – The ebook
T 491/09 – Clairvoyance 24 Dez 2011
Member of an Opposition Division consulting the DG3 oracle The opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form, based on the third auxiliary request, which had been filed during oral proceedings (OPs) The opponent claimed that the OD should not have admitted this request into the proceedings. Here is what the Board had to say on this matter: [1.1] The Board notes that if the way in which a department of first instance has exercised its discretion on admitting requests filed during OPs is challenged in appeal, it is not the function of a Board to review all the facts and circumstances of the case as if it were in the place of the department of first instance, and to decide whether or not it would have exercised such discretion in the same way as or different from the department of first instance. A Board of Appeal should only overrule the way in which a department of first instance has exercised its discretion if the Board concludes it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way (see Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VII.E-6.6). [1.2] The question therefore arises whether the OD exercised its discretion properly according to the above stated criteria. [1.3] In chapter E-III, 8.6 of the Guidelines for Examination in the EPO is stated that in exercising its discretion according to R 116(1) and (2) “the Division will in the first place have to consider ... the allowability of the late-filed amendments, on a prima facie basis. If these ... amendments are clearly not allowable, they will not be admitted. Before admitting these submissions, the Division will next consider procedural expediency, the possibility of abuse of the procedure (e.g. one of the parties is 1672 | 3398
T 491/09 – Clairvoyance
K’s Law – The ebook
obviously protracting the proceedings) and the question whether the parties can reasonably be expected to familiarise themselves in the time available with ... the proposed amendments”. Prima facie allowability [1.4] It transpires from points 3 and 4 of the minutes of the OPs that the OD regarded the then final 3rd auxiliary request as prima facie overcoming the opposition grounds based on A 100(b) and A 100(c) (in combination with A 123(2)) and thus as prima facie allowable in these respects. The appellant argues, however, that the OD did not examine the prima facie clarity of the claims, which it should have. [1.4.1] The Board observes in the first place that the minutes of the OPs before the OD are silent on any issue of clarity raised by the appellant as a hindrance to admitting the request in question. Also at the OPs before the Board the appellant could not recollect having made such an objection in this particular respect. To the contrary, the minutes, page 3 state that “the opponent raised no other objections than those already discussed”, which clearly could lead the OD to assume that no further formal issues remained, nor that any new formal objections were raised. Admitting this request in such circumstances can already for that reason alone not be criticised. [1.4.2] The appellant argued that the OD should ex officio have examined the entire claim for clarity, following the principles of T 1459/05 and T 656/07. The Board wishes to point out that the OD could hardly take account of T 656/07 which was issued in 2009, i.e. after the OPs in opposition held on 10 November 2008. Remains only one decision T 1459/05, which was decided on 21 February 2008. Apart from the fact that ODs can hardly be held to have immediate knowledge of any single decision when it issues, the Board cannot find fault with an OD which does not follow a decision which itself explains why its case is so particular that it warrants departing from otherwise consistent case law. It should be kept in mind that the allowability is examined merely on a prima facie basis and all the more so only in connection with a discussion on admissibility of a request. Procedural expediency, abuse [1.5] In the first place, due to the direct treatment of the 3rd auxiliary request by the OD, instead of returning to written proceedings, a protracting of the proceedings was avoided and the [patent proprietor] did not benefit from any further delay of the final decision on the part of the OD. Secondly, it is clearly the purpose of OPs before the department of first instance that all concerned are aware of the outstanding issues and which positions are taken on them, including those of the OD. Not allowing simple further amendments to resolve such issues would clearly run counter to this purpose. In fact, the Guidelines, chapter E-III, 8.7, makes this clear by referring to the fact that it should be ensured (by the OD) that the parties file requests which are to the point and that claims are formulated appropriately. If the OD finds that some patentable subject-matter results from a limitation/amendment, it may even inform the proprietor of the fact and allow him an opportunity to submit amended claims thereon. In view of the above, the Board can only conclude that the [patent proprietor] needed quite some prompting to finally come up with this request addressing the point under discussion, but not that this amounts to an abuse of proceedings by, nor to/an unwarranted advantage for the [patent proprietor]. Opponent reasonably expected to familiarise itself [1.6] As argued by the [patent proprietor], the 3rd auxiliary request filed during the OPs was not going in a different direction, but was prepared on the basis of the 3rd auxiliary request filed before the deadline of one month before the OPs. Its claim 1 follows the course of the discussions during the OPs, in that it differs from claim 1 of the earlier 3rd auxiliary request by the expressions “blades, a base opposite to the blades”, “said adapter unit being adapted to be snap fitted ... toward the base” and “fixedly” having been deleted. These had been criticized by the appellant in its letter dated 30 April 2008, section 2.3, which was repeated at the OPs (see point 3 of the minutes). Further, the expressions “at least one of the second adapter engagement member and the handle engagement member being resiliently yieldable” and “such that said snapping may occur” have been
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T 491/09 – Clairvoyance
K’s Law – The ebook
added in reply to objections raised in this respect in the OPs. The three latter amendments exactly address the issues the appellant was well aware of before the OPs since it raised objections on them at the OPs. The OPs were therefore proceeding towards resolution of the outstanding issues. [1.7] From the minutes of the OPs it transpires that a number of interruptions have taken place, which the Board considers as sufficient for the appellant. This is confirmed in the first three paragraphs of page 3 of the minutes where it is further stated: “The chairman interrupted the OPs at 15:05 to allow the patentee to prepare a new and final request. After reopening of the proceedings by the chairman, the patentee submitted a third auxiliary request (Annex AIII) and explained the amendments done. The opponent raised no other objections than those already discussed”. The Board can therefore only conclude that the appellant had sufficient opportunity to familiarize itself with the amended subject-matter. [1.8] In summary, the Board sees no indication that the OD exercised its discretion to admit the 3rd auxiliary request into the proceedings according to the wrong principles, or without taking into account the right principles or in an unreasonable way. This request is therefore in the proceedings. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 146/07 – Unsigned
K’s Law – The ebook
T 146/07 – Unsigned 23 Dez 2011
The opponent filed an appeal against the decision of the Opposition Division to maintain the patent in amended form. The parties were summoned to oral proceedings (OPs) to be held on January 20, 2011. After the opponent had announced that he would not attend the OPs and had withdrawn his request for OPs, the Board cancelled the OPs on January 10. On January 18, the Board received anonymous third party observations (TPO). Would it take them into account? [3] Anonymous TPO were received by the board at a very late stage, i.e. after the scheduled OPs had already been cancelled in view of appellant’s announcement not to attend these proceedings and the withdrawal of its subsidiary request for OPs. According to R 114(1), any observations by a third party shall be filed in writing. This requirement implies that the observations have to be signed (see R 50(3) and R 86) in order to allow an identification of the third party (see Schachenmann in: Singer/Stauder, EPÜ, 5th ed., A 115, marg. n° 13). Identification is particularly important in the context of opposition proceedings in order to allow the competent organ of the EPO to verify whether the observations are indeed filed by a third party rather than by a party to the proceedings. Otherwise, a party might be tempted to submit late observations and/or documents by means of anonymous TPO in order to avoid negative procedural consequences such as apportionment of costs. [4] When a party to the proceedings submits an unsigned document, the document is deemed not to have been filed if, after a corresponding invitation has been sent out by the EPO, it is not signed in due time (see R 50(3)). Since unsigned anonymous TPO do not allow the EPO to send out such an invitation at all, they necessarily remain unsigned. This has the consequence that they are deemed not to have been filed. [5] The board is aware that anonymously filed TPO may nevertheless be adopted by a party to the proceedings as its own or may even trigger objections by the competent organ of the EPO of its own motion (see decision T 735/04 [2], dealing with the exceptional situation that a highly relevant patent application of one of the patent proprietors had been submitted by an anonymous third party). However, in the absence of such a further procedural act, anonymous TPO are to be disregarded altogether. This view is in line with the decisions G 1/03 and G 2/03 in which the Enlarged Board of Appeal refused to take into account an anonymously filed third party statement (see Section VI(3) of the decisions). [6] Thus, the anonymous observations under A 115 received on 18 January 2011 are deemed not to have been filed and are disregarded by the board. If the approach set forth in Singer’s commentary is followed, TPO simply cannot be anonymous. This may be formally correct (although I doubt that the lawmaker had TPO in mind when drafting R 36(3) EPC 1973, which has become R 50(3)), but I do not think that it is in the interest of the EPO (and of the public at large) to require the parties filing observations to reveal who they are. The question of apportionment of costs is too marginal to balance the benefit that can be drawn from allowing anonymous TPO. Yes, there may be cases of abuse of proceedings (this is also possible when straw men act as opponents), but I guess the vast majority of TPO are just that, and many of them would not have been filed if anonymity was not allowed. As has been found in T 458/07, TPO filed during opposition (appeal) proceedings should be treated as late filed documents, in compliance with the rules the Boards have developed for such documents (considering prima facie relevance, procedural economy, …). In the present case this would have allowed the Board not to take into account the TPO, without even considering whether they were signed or not, which I believe to be irrelevant.
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T 146/07 – Unsigned
K’s Law – The ebook
But let us imagine that the present approach prevails. I wonder whether the signature of a professional representative would be considered sufficient if the third party was not identified. After all, one of the parties could have requested the representative to file the observations. Also, would the use of the EPO third party observation website (here) lead to a R 50(3) notification? The corresponding form allows to identify the third party, but as far as I can see, there is no easy way of signing the form. Be that as it may, if you are a professional representative and you are asked to file TPO in opposition proceedings, the safest way, obviously, would be to reveal the identity of the party and sign the observations. But what should be done if the third party wants to stay incognito, as it most likely will? I think I would sign the observations as a professional representative and make a clear declaration that the third party is not a party to the proceedings. Perhaps this would dispel any doubts of the EPO about a possible abuse of proceedings. Any thoughts? Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2375/10 – Empty Hands And Heavy Hearts
K’s Law – The ebook
T 2375/10 – Empty Hands And Heavy Hearts 22 Dez 2011
Sometimes Examining Divisions (ED) are too concise in their decisions refusing an application. This invariably leads to the a remittal, as in the present case. The relevant part of the decision read:
Too short, says the Board: [2] According to established jurisprudence of the Boards of Appeal, to satisfy the requirement of R 111(2) a decision should contain, in logical sequence supporting arguments. The conclusions drawn by the deciding body from the facts and evidence must be made clear. Therefore all the facts, evidence and arguments which are essential to the decision must be discussed in detail in the decision including all the decisive considerations in respect of the factual and legal aspects of the case. The purpose of the requirement to reason the decision is to enable the appellant and, in case of an appeal, also the Board of Appeal to examine whether the decision could be considered to be justified or not (see T 278/00; T 87/08 and T 1366/05). In the present case the ED decided against the Appellant, that the subject-matter of claim 1 according to the sole then pending request did not involve an inventive step (A 56). A 56 requires that the assessment of inventive step is made having regard to the state of the art. Accordingly, the logical chain of reasoning of the ED in the decision under appeal, to justify the above conclusions under A 56, has to contain a proper assessment of the question of obviousness in the light of the prior art. 1677 | 3398
T 2375/10 – Empty Hands And Heavy Hearts
K’s Law – The ebook
The only part of the section “Reasons for the Decision” of the written decision under appeal dealing with the issue of inventive step is to be found in point 3, comprising two paragraphs. Paragraph 3.1 merely summarizes the arguments of the Applicant and does not reflect the ED’s own considerations, this paragraph in fact should rather belong to the section “Facts and Submissions” of the written decision under appeal. The mere summary of a party’s submission is not per se a reasoning proper to the deciding body. Consequently, paragraph 3.2 is the sole portion of the written decision under appeal which may reveal the reasoning of the Opposition Division (sic) on the issue of inventive step and, thus, is the sole portion of the decision which could justify the ED’s conclusion of lack of inventive step. However, there is no reference at all in this paragraph to any prior art, paragraph 3.2 merely stating that the claimed subject-matter did not comply with the requirements of A 56 since the technical effect of pressure reduction in a wellbore fluid was only demonstrated for graphite as the resilient material, but that this effect had not been shown for the other cited materials and therefore the selection of materials recited in claim 1 did not solve the technical problem in its entire breadth. Therefore, the ED arrived in the appealed decision at the conclusion that the claimed subject-matter lacked inventive step merely by declaring that a purported effect has not been achieved by other cited materials, i.e. the technical problem as defined in the application as filed had not been solved in the entire breadth of the claims, without reformulating the problem in a less ambitious way and without assessing obviousness of the claimed solution to that reformulated problem in the light of the cited prior art. Since, the requirement of inventive step defined in A 56 is based on the state of the art, the decision of the ED, by arriving at a conclusion of lack of inventive step without reference to prior art, is insufficiently reasoned in the sense of R 111(2). [3] This failure amounts to a substantial procedural violation requiring that the decision under appeal is set aside and the case is remitted to the first instance (see T 278/00 [5]). The appeal is thus deemed to be allowable and the Board considers it to be equitable by reason of the substantial procedural violation to reimburse the appeal fee pursuant to R 103(1)(a). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 866/08 – Of Mice And Dogs
K’s Law – The ebook
T 866/08 – Of Mice And Dogs 21 Dez 2011
The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke the opposed patent on the ground of insufficiency of disclosure. The OD argued that the therapeutic effect of the claimed vaccine had not been established. The prior art did not contain a disclosure of the use of a polynucleotide vaccine formula for treating dog diseases. In view of document D12, which had been published after the effective date of the patent, there were doubts as to whether the polynucleotide vaccines could replace the existing effective vaccines. Therefore, it was not possible to extrapolate the results obtained with mice . Claim 1 of the main request before the Board read: 1. A vaccine inducing a protective response for canidae comprising a plasmid containing and expressing the G gene of the rabies virus and a suitable vehicle. Here is what the Board had to say on sufficiency of disclosure: *** Translation of the French original *** [2] According to the established case law, when a claim covers a therapeutic application of a substance or a composition, it is not enough for the requirements of A 83 to be fulfilled that the skilled person can realize or obtain the compounds to be used based on the invention that is disclosed in the patent and/or on his common general knowledge; it is also necessary to establish that the claimed compound does indeed have a direct effect on a metabolic mechanism that is specifically linked to the disease to be treated. This mechanism may be known from the prior art or indicated in the application as such, e.g. via experimental trials. Once this has been proven, it is possible to take into account evidence that has been published at a later stage in order to support these conclusions (see T 609/02 [9]). [3] In the present case, the patent does not provide any experimental data establishing that a plasmid expressing the G gene can induce a protective response against rabies in canidae. [4] However, the OD has pointed out, in substance, that at the date under consideration there was no use of polynucleotide vaccines for treating dog diseases in the prior art for vaccinating dogs against rabies. Moreover, in view of document D12, which has been published after the effective date of the patent, there were doubts as to whether polynucleotide vaccines could replace the existing effective vaccines such as the vaccines against rabies. Based on these arguments, the OD was convinced that it was not possible to extrapolate in a systematic way the results of document D1, which had been obtained with a polynucleotide vaccine expressing the G gene in mice, to dogs, and that a vaccine tested on mice absolutely had to be tested on dogs in order to determine its effectiveness. [5] The Board notes that the present patent under consideration covers a compound, the G protein of the rabies virus, which has been identified in the prior art as having the direct effect of producing an immune response in a great number of animals such as canidae (see e.g. documents D6 […], D13 […] and D18). In view of the common knowledge of the skilled person in the technical field under consideration, there was no doubt on the immunological effect of the claimed compound , i.e. its direct effect on the relevant metabolic mechanism, nor has the OD explicitly formulated such doubts. [6] As a consequence, the impugned decision has to be understood as questioning the fact that polynucleotide vaccines carrying the G protein of the rabies virus can indeed induce the claimed effect (i.e. that the carrier used can produce the claimed effect in canidae) in view of the disclosure of document D12, which has been published at a later stage, rather than expressing doubts regarding the direct effect of the this gene on the immune system. [7] First of all, the Board notes that document D12 has been published shortly after the priority date of the present patent and, therefore, was not part of the general knowledge of the skilled person. Moreover, table 1 of this document sums up 29 scientific articles that had been published during the three years preceding its publication and which deal with “DNA vaccines ... to induce some form of immunity against a dozen or more 1679 | 3398
T 866/08 – Of Mice And Dogs
K’s Law – The ebook
infectious agents” […], thereby establishing the functionality of those structures in a great number of animals. As the OD nevertheless indicated, document D12 expresses doubts as to whether polynucleotide vaccines could replace the existing effective vaccines. However, the Board notes that this does not shed doubt on the technical usefulness of those vaccines but only their superiority with regard to the existing effective vaccines. Therefore, the Board cannot endorse the opinion of the OD according to which document D12 can raise doubts that a polynucleotide vaccine such as the one claimed could lack functionality. [8] The Board also notes that […] the impugned patent refers to document D1. It contains the statement that “as regards rabies, protection of mice against virulent challenge has been demonstrated after treatment with a polynucleotide vaccine expressing the gene for the G protein under the control of the SV40 virus early promoter [reference to D1], a similar result being achieved by using the CMV IE promoter.” The Board notes that document D1, therefore, also discloses that a vaccination with a plasmid carrying the gene for the G protein of the rabies virus induces a protective response against the rabies virus in mice. [9] As a consequence, the Board considers that the disclosure of the prior art is such that the vaccine according to claim 1 is likely to be useful for the therapeutic application at which the claim is directed. Under these circumstances, the disclosure in documents D23, D29, D41 and D45 to D49, which have been published at a later stage, may be taken into account for supporting these conclusions. As a matter of fact, examples 20 and 21 of document D45, i.e. the U.S. patent that is equivalent to the impugned patent, contain experimental data which extensively disclose the short and long term protection of dogs that have been vaccinated with the plasmid disclosed in example 16 and administered according to the teaching of example 19 of the impugned patent. [10] This is why the impugned patent is considered to disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, as required by A 83. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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T 1789/09 – Margin Of Error
K’s Law – The ebook
T 1789/09 – Margin Of Error 20 Dez 2011
This decision – dealing with an opposition that had been rejected by the Opposition Division – contains some interesting statements on the scope of a claim the decisive parameter of which was affected by a considerable margin of error. Claim 1 of the main request before the Board read: A process for the preparation of a granular detergent composition or component having a bulk density greater than 650 g/l, which comprises the step of dispersing a liquid binder throughout a powder stream in a high speed mixer to form granular agglomerates, characterised in that the powder stream comprises crystalline zeolite A having an oil absorbing capacity of at least 40ml/100g. (my emphasis) In what follows, the Board dealt with the interpretation of the claim, sufficiency of disclosure and novelty: Interpretation and sufficiency of disclosure (all requests) [1.1] The objections made by the [opponent] with respect to sufficiency of disclosure are based on the [patent proprietor’s] interpretation of the parameter “oil absorbing capacity” used in Claim 1 of all requests. [1.1.1] According to the [opponent] this term referred to the initial oil absorbing capacity of the zeolite before any process step was carried out. Otherwise, there would be a lack of sufficiency of disclosure since Claim 1 covered the possibility of forming powdery agglomerates of the zeolite with other components before the powder stream is introduced into the high speed mixer. The other components might change the oil absorbing capacity of the zeolite. However, it was impossible for any skilled person to measure the oil absorbing capacity of the zeolite within such agglomerates. [1.1.2] In the [patent proprietor’s] opinion this interpretation was against the gist of the invention as set out in the patent. It was apparent from the description that the invention did not cover embodiments where the oil absorbing capacity of the zeolite would be lost by combining the zeolite with other components prior to introducing the zeolite containing material into the powder stream. The [patent proprietor] pointed to the first sentence of paragraph 17 of the patent in suit where the following is stated: “It is an essential feature of the present invention that the Zeolite A used in the formation of the granular agglomerates has an oil absorption capacity of at least 40ml/100g”, and argued that following the second sentence of A 69(1), according to which the description had to be used for interpretation, Claim 1 had to be construed such that the zeolite had the oil absorbing capacity of at least 40 ml/100g at the moment where the liquid binder is dispersed within the high speed mixer throughout the powder stream. [1.1.3] A 69(1) relates to the extent of protection conferred by a European patent or patent application. According to the Protocol on the Interpretation of A 69 which was adopted as an integral part of the EPC to provide a mechanism for harmonisation of the various national approaches to the interpretation and determination of the protection conferred by a patent, this should be done so as not to overestimate either the literal wording of the claims or the general inventive concept disclosed in the description (see also G 2/88 [2.1, 3.3 and 4]). The Board notes, however, that this does not mean that the scope of protection conferred by a claim is generally limited by the description. However, the sentence cited from paragraph 17 of the patent does not even say that the zeolite exhibits the oil absorbing capacity only during the formation of the granular agglomerates in the high speed mixer. In the Board’s opinion, the term “in the formation of” certainly covers the process of forming granular agglomerates as such, as it is expressed in Claim 1. 1681 | 3398
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Moreover, since the process of Claim 1 merely “comprises” the step of dispersing a liquid binder throughout the zeolite containing powder stream in the high speed mixer, further process steps like formation of the powder stream by agglomeration with other ingredients are not excluded. The [patent proprietor] has agreed that it would not be possible for a skilled person to measure the oil absorbing capacity of the zeolite within such agglomerates. Hence, in the Board’s opinion, defining a process by a parameter which clearly cannot be measured does not make technical sense to the skilled artisan. [1.1.4] The Board concludes therefore, that anyone skilled in the art would understand the oil absorbing capacity mentioned in the claims as that of the zeolite as initially applied, i.e. before any process step is carried out in the course of which the initial capacity is changed. No other meaning can be attributed to the term in question. As a corollary to this conclusion, consideration of the [opponent’s] objection under A 83 is redundant. [1.2] Another disagreement concerns the parties’ interpretation of the value of the oil absorbing capacity. According to the patent in suit […], the oil absorption values can be determined by following British Standard Part 7: 1982 which corresponds to ISO 787/5-1980, i.e. document D1. [1.2.1] The [opponent] argued that this standard included an inaccuracy of measurement of ± 50%. [1.2.2] According to the [patent proprietor], however, the error was much smaller since document D1 only mentioned a difference of at most 50% between the absolute measured values. Further, this error did not even apply to zeolites since document D1 concerned pigments and extenders. [1.2.3] In the Board’s opinion there is no reason to assume that the error is smaller with zeolites, since the patent recommends the standard of document D1 for determining the oil absorbing capacity and does not mention a particular accuracy especially if zeolites are used. Concerning the extent of the error, it appears that the [patent proprietor’s] understanding is the correct one (see document D1, page 1, second paragraph). However, even in this case, the error is still as high as ± 33.33% (± 1/3). Due to this uncertainty of measurement, the Board considers the values mentioned in the claims not as selective points but as ranges of possible values. Accordingly, the value of the oil absorbing capacity mentioned in Claim 1 of the main request covers the range of 40 ml/100g ± 33.33%, hence values from about 26.7 to 53.3 ml/100g. Novelty (main request and first auxiliary request) [2.1] Lack of novelty of the claimed subject-matter has been objected to, inter alia, in view of Example H of document D2. [2.2] This example discloses a process wherein the spray-dried powder of Example G is granulated with liquid nonionic surfactant as binder in a Fukae high speed mixer to form a granular detergent agglomerate having a bulk density greater than 650 g/l (pages 8 to 10). The powder stream of Example G comprises zeolite A, specifically Wessalith P ex Degussa […]. The oil absorbing capacity of Wessalith P as measured according to document D1 is given as 36 g/100g […] which translates into 39 ml/100g […] and with the inaccuracy of measurement of document D1 into the range of 26 to 52 ml/100g. [2.3] The [patent proprietor] argued that the inaccuracy of measurement in document D2 was not comparable with that of the patent in suit since it was based on a sample of 100g instead of 5g as in document D1 and the patent. [2.4] However, the Board adopts in this respect the [opponent’s] view that the accuracy of measurement rather increases with increasing sample size.
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[2.5] Thus, there exists a large overlap between the oil absorbing capacity of 26.8 to 53.2 ml/100g of the zeolite A used in the process of Claim 1 of the main request and that of the Wessalith P of 26.13 to 51.87 ml/100g used in Example H of document D2. Since there is no hint in document D2 not to work within the overlapping area, hence with zeolite A having an oil absorbing capacity of 26.8 to 51.87 ml/100g, the Board concludes that document D2 anticipates the process of Claim 1 of the main request. [2.6] The same reasons apply mutatis mutandis to Claim 1 of the first auxilary request which differs from that of the main request only in that the oil absorbing capacity of zeolite A is now at least 45 ml/100g. As this value covers the range from 30 to 60 ml/100g, it still overlaps to a large extent with that of the Wessalith P used in document D2 […]. [2.9] For all these reasons, the Board concludes that the subject-matter of Claim 1 of the main request and the first auxiliary request is not novel in view of Example H of D2 (A 54). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1530/09 – The Whole Truth
K’s Law – The ebook
T 1530/09 – The Whole Truth 19 Dez 2011
Although it is in principle possible to amend claims based on figures, such an amendment will not be possible if the teaching of the application as filed as a whole does not provide any support for the amendment, as the present decision shows. In this case, both the opponent and the patent proprietor filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form. Claim 1 of the main request before the Board was identical to claim 1 as granted : An emission control apparatus of an internal combustion engine (10) having a storage device (22) provided in an exhaust passage (18) of the internal combustion engine (10) that stores a threshold level of NOx, and control means (40) that reduce NOx stored in the storage device (22) to recover a NOx storing level of the storage device (22) by performing a rich spike control by temporarily shifting during a lean burn operation of the internal combustion engine (10) an engine air-fuel ratio to a fuel-rich ratio, wherein the control means (40) limit an execution time of the rich spike control, and perform a stoichiometric burn operation in which the engine air-fuel ratio is stoichiometric, after the execution time limited by the control means (40) elapses, wherein the control means (40) switch to the stoichiometric burn operation when the limited execution time of the rich spike control elapses without recovering the NOx storing level and switch from the rich spike control to the lean burn operation when the NOx storing level is recovered, wherein the control means switch from the rich spike control to the lean burn operation when the limited execution time of the rich spike control set by the control means (40) is not achieved but the NOx storing level is recovered. The opponent pointed out that the subject-matter of claim 1 as granted was not disclosed in the application as originally filed : the entire application as filed made no reference to a direct switch from rich burn to lean burn, but only to the prevention of deterioration of CH and CO emissions (itself caused by prolonged rich spike control) by using a stoichiometric burn operation between rich and lean burn modes. Such operation should not be understood as omitted by the flowchart of Figure 2. Although the flowchart included a logic pathway seemingly indicating a possible omission of stoichiometric burn, this would not be considered correct by the skilled person as it would not be consistent with the timing chart of Figure 3 which highlighted the step of stoichiometric burn as the distinguishing feature with respect to the prior art process shown in Figure 4. The patent proprietor relied on the flowchart of figure 2. What did the Board decide ? [1.1] Claim 1 includes a combination of the features of originally filed claims 1, 2 and 7, whereby claim 7 as filed however did not depend on claim 1 but only on independent claim 5. Furthermore, the following feature has been added to the wording of claim 1: “wherein the control means switch from the rich spike control to the lean burn operation when the limited execution time of the rich spike control set by the control means (40) is not achieved but the NOx storing level is recovered.” [1.2] Hence, the subject-matter of claim 1 is directed to the embodiment disclosed in the patent in suit which concerns a control apparatus arranged to perform the sub-sequence of the steps: lean burn - rich burn stoichiometric burn - lean burn, but wherein the control apparatus is arranged also to include an alternative of omitting stoichiometric burn under certain conditions. Claim 1 as originally filed however required the control means to be arranged to perform a stoichiometric burn operation between the rich burn and the lean burn. [1.3] Figure 2, which was cited by the appellant (proprietor) as disclosing both options, is a flowchart illustrating a processing procedure of the NOx storing capability recovering process.
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T 1530/09 – The Whole Truth
K’s Law – The ebook
It is correct that this flowchart includes the logic pathway of omitting the step of stoichiometric burn. Such option depends on whether the time duration set for the rich spike burn has elapsed or not (S270). The option of switching directly from rich burn (S260) to lean burn (S310) concerns the case where the rich spike duration is shorter than the set value (i.e. S270 “NO”) and additionally where the NOx has been recovered (i.e. S290 “YES”), in which case step S300 follows and sets the XRICHS flag to the OFF position, whereupon the procedure continues with a switch to lean burn (S310) and then ends the program. [1.4] Hence, the question of whether the skilled person would consider the omission of the stoichiometric burn as an option which was disclosed in the application as filed has to be assessed on the basis of the whole contents of the specification and thus taking into account the disclosure in the description. [1.5] The description of the patent in suit highlights as the basic issue […] the control of HC and CO emissions effectively by avoiding prolonged rich spike control and thus switching from the rich spike control to a stoichiometric burn operation. The underlying concept therefore includes the complete recovery of the NOx storing level of the storage device during stoichiometric burn operation to thereby curb deterioration of NOx emissions while at the same time avoiding deterioration of HC and CO emissions even when the amount of exhaust gas becomes great. It is consistently disclosed […] to set the duration time for the rich burn to be sufficiently short so as to obtain recovery of the NOx storing level during the stoichiometric burn operation.
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T 1530/09 – The Whole Truth
K’s Law – The ebook
Such consistent timing chart is complementarily shown in Figure 3 which shows that it is precisely the presence of a stoichiometric burn period directly subsequent to the rich burn duration which distinguishes the process and control means of the patent in suit from the process of the related art shown in Figure 4.
Thus for a skilled person, the flowchart of Figure 2 has to be read in line with this underlying concept of the process steps and not in isolation. [1.6] In this regard it is undisputed between the parties, that there is no disclosure whatsoever in the description that the step of stoichiometric burn should or could be omitted. According to the general references in the description, there is no doubt about the skilled person being aware of the various interactions in the emission procedure (e.g. type of combustion engine, materials, temperatures, velocities) and being capable of correctly calculating and determining a time interval for the duration of rich burn. This duration period has to be calculated on the basis of the amount of the stored NOx, and has to be set sufficiently short in order to curb HC and CO-emissions via a subsequent stoichiometric burn operation even though no details of such calculation or determination are disclosed. However the skilled person is well-trained and has experience in such field such that setting a suitable time period to achieve this would be well within his knowledge. [1.7] Concerning the logic pathway possibility shown in the flowchart of Figure 2 of seemingly omitting the switch to the stoichiometric burn by directly changing from a rich spike to lean burn, the purpose of that pathway is however unambiguously evident from the description (see paragraph [0035] of the A-publication, which states: “At this moment, the rich spike control has just started, and the rich spike duration Tr is less than the set 1686 | 3398
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value. Therefore, the unit 40 proceeds to step S290, in which the unit 40 determines whether the amount of NOx stored has become “0”.”). Thus, that pathway is intended to be used only for the time at the beginning of the rich spike duration when the rich spike duration is less than the set value and hence, directly after switching to rich burn. At such time neither the rich spike duration Tr can have elapsed nor the amount of stored NOx can be zero and the procedure must, evidently, remain in the rich burn (sub-sequence of steps S270 “NO”, S290 “NO”, “END”, return to S220, and rich burn is continued (paragraph [0036] of the A-publication). Hence, this sequence of steps is entirely in line with the general concept given in the description of the application as filed. [1.8] There are no conditions disclosed in the patent in suit (concerning the determination and setting of the duration time of the rich burn or the amount of stored NOx) which would even suggest to a skilled person another possibility or other purpose of the steps disclosed in the flowchart than the one described which includes a step of stoichiometric burn. [1.9] Thus, although there is a logic possibility within the flowchart of Figure 2 not to enter the step of stoichiometric burn, the description of the patent in suit discloses clearly and unambiguously to the skilled person that the value for the duration of the rich burn must be set correctly, which means in the present case being sufficiently short in order to allow the step of stoichiometric burn to be entered. Although it might be the case that if the rich spike control duration were set to be sufficiently long, a direct switch from rich to lean burn might occur if the flowchart were considered in isolation, nothing in the application as filed discloses in an unambiguous manner that such a duration would be set. Indeed, avoidance of the stoichiometric burn operation (which is not disclosed) would in fact only be the result of an unintended and thus incorrect setting of the rich spike duration by a skilled person. [1.10] Claim 1, however, defines a control means which is specifically arranged to include this alternative option disclosed in isolation only as a logic pathway in Figure 2, namely switching directly from the rich spike control to the lean burn operation without requiring a stoichiometric burn operation to be included. When considering the whole contents of the application as filed however, there is no unambiguous disclosure of the control means being arranged in such a manner that it could ever switch from rich to lean burn directly. Although the proprietor argued that e.g. atmospheric conditions might exist under which the control system would switch directly from rich to lean burn, this is not disclosed anywhere in the application as filed. More importantly however, since the flowchart of Figure 2 is used together with the description to aid understanding thereof (notably also together with Figure 3), it may even be the case that other sub-routines not shown in the flowchart would account for any such conditions. Without any disclosure in the application as filed to indicate that a switch from rich burn to lean burn might indeed occur under a specific set of conditions, the proprietor’s argument is nothing more than mere speculation. The subject-matter of claim 1 of the main request thus extends beyond the content of the application as originally filed (A 100(c)), whereby the main request is not allowable. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1730/09 – Essentially
K’s Law – The ebook
T 1730/09 – Essentially 17 Dez 2011
Both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division to maintain the patent in amended form. Claim 1 of the main request before the Board read : A viscoelastic fluid consisting essentially of: (1) an aqueous medium; (2) a surfactant represented by the formula (I):
wherein R1 is RCONHCH2CH2CH2(-) wherein R is an alkyl group containing from 14 to 24 carbon atoms, which may be branched or straight chained and which may be saturated or unsaturated, R2 and R3 are each methyl; R4 is a hydrocarbyl radical with a chain length of 1 to 4; and (3) a member selected from the group consisting of organic acids, inorganic salts, and combinations of one or more organic acids with one or more inorganic salts; wherein said fluid exhibits the property of viscoelasticity. (my emphasis) Among other things, the opponent pointed out that in the absence of a definition in the patent in suit of the term “essentially”, the wording “consisting essentially of” would not identify precisely the amounts of components which could be contained in the claimed composition in addition to those explicitly listed; reference was made in this respect to decision T 728/98. The patent proprietor responded that it was clear that the wording “consisting essentially of” allowed only the presence of impurities in addition to the specifically listed components. What did the Board decide ? [1.2.3] As regards the wording “consisting essentially of”, which is also part of claim 1, it was not contained in any of the granted claims. Therefore, the alleged lack of clarity of this term raised by [the opponent] can be objected in opposition appeal proceedings. However, as reported in the Case Law of the Boards of Appeal of the EPO, 6th edition (2010), II.B.5.2, referring to decisions T 759/91 and T 522/91, the wording “consisting essentially of”, at variance with the wording “comprising substantially”, has a defined meaning because of the unequivocal character of the words “consisting of”; therefore, the use of the unequivocal words “consisting of” in combination with “essentially” has been found to solve all interpretation problems of the unclear claims examined in such previous cases. The cited decisions T 759/91 [2.2] and T 522/91 [2.2] both refer to the decision T 472/88 [3], wherein it was decided that the term “consisting essentially of” was clear and allowed the presence of other components in a claimed composition in addition to the components mandatory in the claim, provided that the essential characteristics of the claimed composition are not materially affected by their presence. The Board agrees with these previous decisions. Therefore, even though the word “essentially” does not identify precisely the amounts of additional components which could still be contained in the claimed viscoelastic fluid, 1688 | 3398
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the wording “consisting essentially of” allows in the present case that the composition of claim 1, which must be viscoelastic, consists of the mandatory components listed in the claims and can contain additionally only other components which do not materially affect the essential viscoelastic characteristics of the composition, e.g. minor amounts of impurities as submitted by [the patent proprietor] during oral proceedings. [1.2.4] The decision T 728/98, cited by [the opponent], concerns the clarity of the different wordings “substantially pure” or “substantially free of” (point [3] of the reasons), which do not contain the word “essentially”; therefore, this decision concerns a legal situation which is more similar to that of the previously cited decisions T 759/91 and T 522/91, wherein the wording “consisting substantially of” was found not to be clear. Consequently, this decision concerns a different legal situation and is not applicable to the present case. The Board concludes that the wording “consisting essentially of” contained in claim 1 of auxiliary request 8 complies with the requirements of clarity of A 84 EPC 1973. Should you whish to download the whole decision, click here. The file wrapper can be found here.
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T 2106/08 – Don’t Infer Too Much
K’s Law – The ebook
T 2106/08 – Don’t Infer Too Much 16 Dez 2011
All parties appealed against the decision of the Opposition Division to maintain the patent in amended form. One of the issues raised before the Board of appeal was the validity of the priority claim: [5.1] The opponent argued for the first time during the oral proceedings before the board that the claims were not entitled to the priority date of 21 February 2000, because the patent proprietor and former applicant is Borealis Technology Oy, whereas the GB priority document No. 0004043.6 was filed in the name of Borealis Polymers Oy. The opponent argued that Borealis Technology Oy and Borealis Polymers Oy were different companies and that there was no assignment of the priority between the two companies on file. However the mere observation that the priority document was filed in the name of Borealis Polymers Oy whereas the originally filed patent application was filed in the name of Borealis Technology Oy does not necessarily mean that the priority is not validly claimed. The fact that no assignment document, or a similar document, is on file does not mean that such a transfer had not taken place (or was even not necessary in view of the relationship between the two companies). In any event this objection could have been raised earlier in order to allow the board to investigate this issue and the patent proprietor to submit appropriate evidence. Admitting this objection at such a late stage of the proceedings would have required the adjournment of the oral proceedings. Hence, the board exercising its discretion under Article 13(3) RPBA decided not to admit this objection into the proceedings. [5.2] The opponent also argued that Claim 10 was not entitled to the priority date and argued that the amended/corrected ranges of: (a) 0.01 to 0.2 wt% for the organic phosphite or phosphonite antioxidant, and (b) 0.01 to 0.5 wt% for the metal stearate were not disclosed in the priority document. However, the priority document discloses on page 16, lines 17-23, that the polymer moulding powder should preferably comprise 0.01 to 0.3 wt%, e.g. 0.1 to 0.2 wt% organic phosphite or phosphonite antioxidant, and 0.01 to 0.5 wt% metal stearate. The range of 0.01 to 0.2 wt% for the organic phosphite or phosphonite antioxidant results from the combination of the lower value of the broader range with the higher value of the narrower range, which, following the case law of the Boards of Appeal, is considered to be disclosed in the priority document and does not justify an objection to the entitlement to the priority. [5.3] No further objections with regard to entitlement to priority were raised against the claims of the proprietor’s sole request. The board sees no reason to raise an objection of its own and therefore considers that all these claims are entitled to the priority date of 21 February 2000. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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R 7/11 – Closed
K’s Law – The ebook
R 7/11 – Closed 15 Dez 2011
The patent proprietor filed a petition for review after Board of Appeal (BoA) 3.3.09 had revoked his patent in decision T 120/08 (cf. my post on this decision) The petition for review was based on A 112a(2)c) and d) and asserted that a fundamental violation of the right to be heard occurred and that the BoA had taken its decision without deciding on a request relevant to that decision. During the oral proceedings (OPs) before the BoA on October 14, 2010, a thorough discussion took place on the question of whether or not the claimed invention was sufficiently disclosed in respect of the feature “vacuum 1000 mbar” according to step c) of Claims 1 of the main and auxiliary requests. During this discussion the petitioner filed Greek patents D and E, and another document F to show what the skilled person would understand. At the end of the OPs the BoA revoked the patent for insufficiency of disclosure. The petitioner reconstructed the course of the OPs before the BoA as follows: There was a first session from about 9.15 until 10 am where the petitioner defended its patent and, to this end, it submitted the Greek patents. The BoA interrupted the proceedings to consider these new documents. After half an hour the proceedings were resumed and the floor was given to the opponents, who discussed the test D44. The petitioner had only five minutes to respond and at the end of these five minutes the chairman put a question that the petitioner’s representative had difficulties in answering. At this point in time there was, according to the petitioner a break in proceedings, during which the petitioner wanted to prepare counterarguments; but when OPs were resumed, the BoA issued its final decision. In fact, the petitioner argues, it cannot be concluded from the minutes of OPs, which simply state that the chairman closed the debate, that the petitioner had any reason to assume that a final decision would be imminent. The OPs had previously been interrupted and the debate been declared terminated before this previous interruption; after this first interruption, however, OPs had been resumed and the discussion continued. The petitioner expected that the same would be the case with the second interruption. Once the decision of the BoA had been issued, it was too late to issue an objection. Therefore the petitioner submits that this is a case where an objection pursuant to R 106 could not have been raised. The Enlarged Board (EBA) did not agree: [2] Pursuant to R 106 a petition for review based on a fundamental procedural violation under A 112a paragraph 2(a) to (d) is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the BoA, except where such objection could not be raised during the appeal proceedings. [2.1] Raising an objection pursuant to R 106 is a procedural act and a precondition for access to an extraordinary legal remedy against final decisions of the BoAs of Appeal. Therefore such an objection must be expressed by a party in such a form that the deciding body is able to recognize immediately and without doubt that an objection pursuant to R 106 is intended. For the same reason such an objection must be specific, that is the party must indicate unambiguously which particular defect amongst those exhaustively listed in paragraph 2(a) to (c) of A 112a and R 104 it intends to rely on. (see R 4/08 [2.1], R 8/08 [1.2.3]) The alleged procedural violation resulting from the non-hearing of the petitioner’s experts by the BoA during the OPs concerns an event which occurred during OPs; it is related to the conduct of OPs and it cannot be disputed that the absence of such a hearing was an event, or non-event, which was apparent to the petitioner at the time. This defect should therefore have been objected to during the OPs pursuant to R 106. [2.2] It is however the submission of the petitioner that the BoA did not make clear that the closure of the debate could lead directly to a final decision and the petitioner was not able, as a consequence, to raise an objection with respect to the absence of a hearing of its experts. [2.3] However, the minutes of the OPs drafted under the responsibility of one of the members of the BoA and the chair pursuant to R 124(3) (which unless duly corrected authenticate the facts they relate) indicate that the debate was closed but do not reflect any objection from the petitioner about a misunderstanding of what had been 1691 | 3398
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K’s Law – The ebook
announced, or any protest that the debate had been prematurely closed or the BoA had omitted to decide upon a request to hear experts. Furthermore it indeed appears clearly from the documents on file and particularly from the petitioner’s request for correction of the minutes of the OPs before the BoA and also its letter after the refusal by the BoA to correct them that the absence of a hearing of the experts was not the relevant point and was not, at that time, considered by the petitioner as constitutive of a fundamental procedural violation of its right to be heard: the petitioner never raised an issue about the closure of the debate or an omitted request; nowhere is it stated that the debate had been closed only partially […]; nor did the petitioner complain that one of its requests had been omitted or that it had not been able to object because of the unexpected closure of the debate. In fact, the request concerned only the statements of the opponents’ expert which should, according to the petitioner, have been transcribed in view of the written decision and a possible use before the national courts. The fact that the petitioner’s experts had not been asked for their comments was incidentally mentioned twice in passing but the petitioner did not draw from this fact any consequence as a basis for a request or any submission. [2.4] At this stage the EBA can only repeat that it is hopeless to try to reconstruct what happened during the OPs as already stated in R 15/09. But even if the steps as described by the petitioner are taken to be correct relying on the principle of good faith, the EBA notes that the debate was declared closed. The necessary meaning of the expression “the debate is closed”, which corresponds to an important procedural step, is not open to multiple or relative interpretations; its announcement after a discussion of an issue with the parties must alert the parties to the fact that, unless otherwise announced by the BoA, the BoA does not intend to come back to this discussion, except of course in exceptional cases where the BoA decides to reopen the debate. At this precise point the parties and all the more professional representatives must bear in mind that a negative conclusion on the particular issue may be fatal for all the requests on file and as a consequence may result in a final decision, which is what happened in the current case following the decision about A 83. Accordingly, if the petitioner had had something to add, either a request or an objection because of a procedural defect or only a doubt, it should have mentioned it when the BoA was about to pronounce the closure, namely at a point in time when the BoA still had the possibility to reopen the debate or refuse to do so. This analysis is in line with R 6/10 [3.2], where the EBA considered that neither the minutes of the OPs nor any other part of the file indicated that the appellant had objected to the closure of the debate without the witness having been heard. This is also in line with what has already been indicated about the parties’ roles and duties in R 2/08 of [8.5, 8.10] where the EBA stated that it was not possible for a party to allege as an afterthought the violation of its right to be heard based on the fact that the BoA had accepted a procedural objection during the OPs. The EBA, in the present case, does not see that there was any obstacle to prevent the petitioner from complying with the requirement of R 106. All the facts point to the conclusion that this is an attempt to dress up a challenge of the decision on its merits as a petition for review, using the alleged violation of the right to be heard as clothing. [3] The outshot of this is that the petition is clearly inadmissible. […] The petition for review is rejected as clearly inadmissible. To download the whole decision, click here. The file wrapper can be found here.
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T 1687/08 – The Gagged Lawyer
K’s Law – The ebook
T 1687/08 – The Gagged Lawyer 14 Dez 2011
The patent proprietor appealed against the decision of the Opposition Division (OD) to revoke his patent. In the course of the proceedings before the OD, there had been oral proceedings (OPs) held on February 25, 2008. On January 16, 2008, the representative of the patent proprietor filed a letter headed “Substitute Authorisation”, in which he stated that he authorised Mr Gerd J. to represent the patent proprietor at the OPs, referring to Mr J’s entitlement to represent under A 134(8). Nevertheless, during the OPs, the OD refused to let Mr J. speak. The OD referred to the date set under R 71a EPC 1973 and to the fact that the letter dated 16 January 2008 was not in their file. The patent proprietor requested the Board to set aside the decision. According to him, the OD incorrectly refused Mr J. permission to speak, because they considered him as an accompanying person, and therefore applied the conditions set down in decision G 4/95. That decision was not relevant, because Mr J. was authorised to represent the patent proprietor as a legal practitioner according to A 134(8). Moreover, the OD had given the patent proprietor no opportunity to resolve these issues. The decision not to allow Mr J. to speak had therefore denied the patent proprietor his right to representation, which thus constituted a substantial procedural violation, which in turn justified immediate remittal of the case to the department of first instance and reimbursement of the appeal fee. Here is what the Board had to say: [2] At the OPs held before the OD on 25 February 2008, the OD refused Mr Gerd J. permission to speak on behalf of the patent proprietor. [2.1] The requirements for representation by a legal practitioner are defined in A 134(8) and in Article 2 of the Decision of the President of the EPO (PEPO) dated 19 July 1991 on the filing of authorisations (OJ EPO 9/1991, 489), as cited in the summons to OPs issued by the OD (in EPO Form 2310). With the exception of renumbering of Articles and Rules, this decision is equivalent to the decision dated 12 July 2007 (OJ EPO 2007, Special edition No. 3, 128), which entered into force on 13 December 2007, i.e. between the date when the summons to OPs was issued and the date when the authorisation of Mr J. was filed. A 134(8) requires that the legal practitioner be qualified in a Contracting State, that he have his place of business in that State, and that he be entitled in that State to act as a professional representative in patent matters. The first sentence of Article 2 of the cited decision of the PEPO requires additionally that the legal practitioner file either a signed authorisation or a reference to a general authorisation already on file. The letter from the representative of the patent proprietor dated 16 January 2008, headed “Substitute Authorisation” contained an authorisation for Mr J. to represent the patent proprietor in accordance with A 134(8). This letter indicated the address of Mr J’s place of business in Germany and his status as a Rechtsanwalt entitled to carry out representation as a legal practitioner within the meaning of A 134(8), and was signed by the patent proprietor’s authorised representative, Mr B. The board therefore concludes that this letter represents an authorisation which establishes that Mr J. was entitled under A 134(8) to carry out representation and which fulfils the requirements of the first sentence of Article 2 of the cited decision of the PEPO. [2.2] From the minutes of the OPs of 25 February 2008 and the decision under appeal, it is apparent that the OD did not consider Mr J’s status as a legal practitioner under A 134(8), at least in part because they did not have the letter of 16 January 2008 in their (paper) file. Instead, they treated Mr J. as an accompanying person, and therefore applied the requirements set out in decision G 4/95. In particular they based their refusal to allow Mr J. to speak on the failure of the patent proprietor to announce his intention that Mr J. should be able to make oral submissions before the date set in the summons to OPs pursuant to R 71a EPC 1973 (i.e. 21 December 2007). [2.3] Since the patent proprietor requested Mr J’s participation in the OPs as a legal practitioner under A 134(8), not as an accompanying person within the meaning of decision G 4/95, the OD’s decision not to allow him to speak was taken under the wrong legal provision. Moreover, since for the reasons indicated […] above, Mr J. was entitled under A 134(8) to represent the patent proprietor, the outcome of that decision, i.e. not allowing Mr 1693 | 3398
T 1687/08 – The Gagged Lawyer
K’s Law – The ebook
J. to speak, was incorrect. The board thus concludes that the OD denied the patent proprietor his right to be represented in the manner he chose. Such a denial of the right of representation has to be considered as a substantial procedural violation. [2.4] The [opponent’s] arguments in this respect are not found convincing for the following reasons. [2.4.1] In his written submissions (see his letter of 4 October 2011), the [opponent] questioned whether Mr Brunner had had the power of sub-authorisation when filing the letter of 16 January 2008. However, during the OPs before the board, the representative of the appellant stated that he had a general authorisation from the appellant dating back to 18 August 1997, which included the right to sub-authorise. The appellant did not challenge that statement, and the board has no reason to doubt its correctness. [2.4.2] The [opponent] has also argued that the authorisation in the letter of 16 January 2008 was late-filed, because R 71a EPC 1973 was applicable to the filing of authorisations, as was clear from the fact that in the summons to OPs issued by the OD, the reference to the decision of the PEPO concerning authorisation of legal practitioners was immediately followed by the indication of the date set under R 71a EPC 1973, and because it is clear from the requirement in the second sentence of the cited Article in that decision, that some form of time limit is necessary to allow the filing and checking of such authorisations. The board does not consider this issue to be relevant to the present case, since from the minutes of the OPs of 25 February 2008 and the decision under appeal, it is apparent that the OD did not consider whether Mr J. was duly authorised under A 134(8). Had they considered that question, and concluded that they had doubts on this matter, they would have been obliged to give the patent proprietor the opportunity to address those doubts, but since they do not seem to have addressed that issue at all, the question did not arise. Moreover, the board notes firstly that R 71a(1) EPC 1973 concerned only the filing of “written submissions” and “facts and evidence”, but that authorisations do not fall into either of these categories, and secondly that since, as indicated in paragraph 2.1 above, the letter of 16 January 2008 satisfies the requirements of the first sentence of Article 2 of the cited decision of the PEPO, the second sentence of that article, referring to the practitioner being required to file an authorisation within a period to be specified by the EPO, is not applicable. [2.4.3] Finally, the [opponent] argued that, even if the decision of the OD not to allow Mr J. to speak were to be considered as a procedural violation, it did not represent a substantial procedural violation which would justify immediate remittal to the department of first instance, because a procedural violation could only be considered to be substantial if it had an effect on the outcome of the procedure. He argued further that in the present case that requirement was not satisfied, because it was apparent from the outcome of the OPs held on 26 February 2008 concerning the patent granted on a divisional application from the application on which the patent in suit is based, in which the issues were similar, and at which Mr J. had been allowed to speak, the outcome was the same. The board is not convinced by this line of argumentation, because any conclusions as to what might have happened at the OPs in the present case had Mr J. been allowed to speak are merely speculation, regardless of the outcome of the related OPs held the next day. [2.5] The board therefore concludes that the decision of the OD not to allow Mr J. to speak at the OPs of 25 February 2008 represents a substantial procedural violation. [3] In the light of this conclusion, the board considers it appropriate to follow the appellant’s request to remit the case to the department of first instance for further prosecution, in accordance with Article 11 RPBA, and to order the reimbursement of the appeal fee, in accordance with R 103(1)(a). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1188/10 – Range Picking
K’s Law – The ebook
T 1188/10 – Range Picking 13 Dez 2011
The applicant appealed against the decision of the Examining Division (ED) refusing the application. Claim 1 on file before the Board read: 1. Use of a cationic preservative derived from the condensation of a fatty acid and an esterified dibasic amino acid, according to the following formula:
as a preservative in food preparations, wherein the preservative is added to such food products at a concentration from 0,006% to 0.015%. (my emphasis) The ED held that the amended concentration range from 0,006% to 0,015% in claim 1 was not originally disclosed and that its upper and lower limit was formed by a generalisation of single values taken from the examples. In its view, the concentration of the cationic preservative (hereinafter: LAE) would be influenced by the nature of the food product and it was thus not admissible to isolate features from a set of features which have been disclosed in a specific combination in the examples. The amendment was, therefore, not in compliance with A 123(2). The Board disagreed: [2] The Board notes that, in the application as filed, the broadest general range relating to the concentration of LAE in food products is from 0,0001% to 1% as disclosed in claim 5. The new range of 0,006% to 0,015% fully lies within this broadest range and therefore constitutes a limitation. This new range, however, was formed by taking, as end points, single values from examples 2 and 4 relating to the use of LAE as preservative in two different specific food products at different growth temperatures, namely 150 ppm for a chicken product at 10°C in example 2 and 60 ppm for a blackberry juice at 34°C in example 4. [2.1] In order to assess whether this new range complies with A 123(2) it has to be considered whether a skilled person, in analogy to T 201/83, would generalise these values in the sense that he would recognise them as not only associated with the specific food products and temperatures used in the examples. In this context, it emerges from table 1 of the application as filed that LAE as preservative is active against a number of gram-positive and gram-negative bacteria as well as fungi and yeast. It is furthermore stated on page 1, lines 4 to 5 from the bottom that “LAE and related compounds are particularly suitable to be used in the preservation of all perishable food products”. From this the skilled person would therefore recognise that the preservative effect of LAE is universal and not limited to specific bacteria and food products. This is confirmed by the results presented in tables 2 to 9 of the experimental part of the application depicting for different food products the growth of bacteria and/or mould & yeast (expressed in the number of colony forming units, cfu/g,) preserved with various LAE concentrations in comparison with the respective control samples without LAE. 1695 | 3398
T 1188/10 – Range Picking
K’s Law – The ebook
The following can be deduced (a) all examples of the application as filed lie within the new range formed by the end values of 0,006% (60 ppm) and 0,015% (150 ppm) LAE taken from examples 2 and 4; (b) at the beginning of the test (0 days) the food-specific number of colony forming units (cfu/g), is similar in the respective food samples with and without LAE (control); (c) with progressing time (after 3, 5, 14 and 43 days) the increase of the number of cfu/g in the control samples is considerably higher than in the samples preserved with LAE in various concentrations and at various growth temperatures; (d) the observations under (b) and (c) not only apply for the series of examples 1, 3, 5, 7 and 8 with LAE concentrations of 100 ppm, but also for the examples with LAE concentrations higher or lower than 100 ppm, including the two samples with the LAE concentrations of 60 ppm and 150 ppm in examples 2 and 4 forming the end values of the claimed range; (e) the trend observed under (b) to (d) is common to all examples, regardless of the kind of preserved food products and the bacterial growth temperatures. [2.2] From the above, the skilled person would conclude that, at least within the new concentration range of 0,006% to 0,015%, the LAE activity is not bound to a specific concentration, food product or bacterial growth temperature. The skilled person would therefore unambiguously extract from the application as filed that, within the broadest general LAE concentration range of from 0,0001 to 1%, the narrow range formed by taking the LAE concentrations of 60 ppm (0,006%) and 150 ppm (0.015%) of examples 4 and 2 as end values can also be generalized. The range claimed in claim 1 therefore complies with A 123(2). […] I would say that this finding is quite out of line with the established case law. I guess most Boards would not have accepted such an amendment. Should you wish to download the whole decision, just click here. The file wrapper can be found here. NB: Le blog du droit européen des brevets was quicker in reporting this decision (here).
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T 1235/07 – A Wider View
K’s Law – The ebook
T 1235/07 – A Wider View 12 Dez 2011
The applicant filed an appeal against the decision of the Examining Division (ED) refusing the application under consideration for lack of inventive step. Claim 1 of the main request read as follows: A computer-implemented method for displaying data points stored in an OLAP multidimensional database, the data points being defined as locations of data records along at least two dimensions including a first dimension and a second dimension, each of the dimension divided into at least three levels having a parent level, a first child level and a second child level in a hierarchical structure, the method comprising the steps of:
receiving a selection of the first dimension; in response to receiving the selection, extracting a parent data point from the multidimensional database; displaying the parent data point as an icon in a data point tree; receiving a selection of the parent data point icon from the data point tree; extracting, from the multidimensional database, a plurality of first level child data points under the parent data point along the first dimension; displaying the first level child data points as respective icons in the data point tree; receiving a selection of one of the child data icons from the data point tree; displaying a menu associated with the selected first level child data point, the menu containing the first and second dimensions; receiving a selection of the second dimension from the menu; in response to receiving the selection, extracting, from the multidimensional database, a plurality of second level child data points under the selected first level child data point along the second dimension; and displaying the second level child data points as individual icons in the data point tree, together with the relationships between the selected first level child data point and the second level child data points. The application
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T 1235/07 – A Wider View
K’s Law – The ebook
[2] The structure of data in a multidimensional database recognises generic aspects, or “dimensions”, of the data. The application gives examples of “Time”, “Customers”, “Regions” and “Products” (Figure 3 […]). Within each dimension, the data has a hierarchical structure with each “level” in the hierarchy having a name. Thus in the “Customers” dimension in Figure 3, the customers each have a “Name” the names belong to a “Sector” and the sectors belong to a “Channel”. For the “Regions” dimension, each “City” is part of a “State Prov”, which is part of a “Country”, which is part of a “Region”. [3] Figure 4D shows some actual data in the “Customers” dimension. The “Channel” data includes “Direct” and “Indirect” customers. The “Direct” channel contains the sectors “Corporate”, “Educational”, “Government”, and the “Indirect” channel contains the sectors “Distributor”, “OEM” and “Reseller”. The “Reseller” sector has the customer names “Aberdeen Information Syst”, “Advance & Partners” etc.
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T 1235/07 – A Wider View
K’s Law – The ebook
[4] The invention uses a tree diagram to view and navigate through the dimensions and levels of data in a multidimensional database. For example, Figure 16 shows the percentage of total sales in the customer dimension broken down in the “Corporate” sector by customer “Name”, which is in the same dimension.
This is called a “drill-down” in the customer dimension, which is a commonly used technique to find out more detailed information. When analysing results, the user may want to ask the question: What is the breakdown of “Corporate” sector sales by “Country” (instead of “Name”)? This requires taking a slice of the data (the “Corporate” sales) and breaking them up in another direction, hence the term “slice-and-dice”. Figure 3 shows that “Country” is the second level in the “Region” dimension. The invention allows this dimension and level to be entered via respective menus (Figure 16: 1604, 1606) to show the required result (Figure 17).
Thus, Figure 17 represents a drill-down in the customer dimension, a slice by the “Corporate” sector, and a dice (with drill-down) in the “Region” dimension. Alternatively, this can be seen as part of a pivot of the customer data by sector and country. In summary, the invention uses a tree diagram to show arbitrary combinations of “drill-down” and “slice-and-dice”. In the diagrams the lowest values are all grouped in the box labelled “Bottom” to prevent cluttering. Main request [5] It is common ground that D1 is the closest prior art. D1 discloses […] displaying data points in a multidimensional database in the form of a data point tree including a parent level and a number of child levels. This corresponds to the opening part and the third, fifth and sixth features of claim 1. [6] It is also common ground that claim 1 differs from D1 by the features identified by the ED, namely by selecting a data point (e.g. “Corporate” in Figure 16) in one dimension (e.g. “Customers/Sector”), selecting a desired new dimension (e.g. “Region”) from a menu (1604) and displaying the child data points (e.g. “USA”, “Germany”, “Canada”, etc.) along this dimension under the selected data point (Figure 17). These are the last five features of the claim. [7] According to […] the grounds of appeal, the appellant appears to be expressing doubts that D1 discloses the selection of the first dimension and the selection of the parent data point in the first dimension, i.e. the first and fourth features of the claim. However, in the Board’s view, the tree can only start from one of the available dimensions, which must therefore be selected somehow, so that this feature is implicit. However, D1 does not disclose selecting any of the data points themselves. [8] D1 discloses at column 23, line 5, that the tree can represent multi-dimensional data. This leads to the question of whether the data points in the tree 136 are all in one, or are in more than one dimension. Assuming the former, it represents different levels of data in that dimension, i.e. already represents a drill-down. Thus, in 1699 | 3398
T 1235/07 – A Wider View
K’s Law – The ebook
the Board’s view, claim 1 differs additionally from D1 by performing this drill-down in response to selecting a data point. This is in fact the most favourable interpretation for the appellant since, if the tree contained points in different dimensions, it would additionally disclose the claimed slice-and-dice operation. [9] It is common ground that the effect of the distinguishing features is to allow navigation through dimensions while preserving relationships between parent data points and child data points. The appellant considers that this is the problem to be solved, for which there is no motivation to consider a slice-and-dice operation. The ED argued that since slice-and-dice was known, the skilled person would have strived to implement it as part of the normal design strategy. Thus the problem was seen as how to provide an interface having this effect. Essentially, the ED incorporated the idea of using the slice-and-dice operation into the objective problem by arguing that it was an obvious problem to solve. [10] However, in the Board’s view a more compelling reason for incorporating the slice-and-dice operation into the problem is that it has no technical character. A slice-and-dice operation is merely a manipulation of data, like taking a square root, that does not in itself have technical character. According to the jurisprudence of the boards of appeal this cannot contribute to inventive step. Similarly, showing the results in the tree structure is a presentation of information that has no technical character. Finally, the Board cannot see anything technical in the nature of the information itself, which not being tied to any particular application, just represents abstract data. The same applies to the drill-down operation, although this operation is already inherent anyway in the tree structure of D1 as discussed above. Thus, in the Board’s view the problem solved by the invention boils down to showing the user what he wants to see in the tree structure, in this case the result of a slice-and-dice or drilldown analysis. [11] The Board is thus in this case taking a wider view of “presentation of information” than just the actual information that is displayed, the so-called cognitive content, to include also structural aspects of how the information is displayed. In the Board’s view, such additional aspects can only contribute to inventive step if they have technical character. This broader meaning is supported by almost the only reference to presentation of information in the travaux préparatoires, namely the Record of the Washington Conference, 1970 at point 1183. When asked what “mere presentations of information” meant, “Mr. Fergusson (United Kingdom) said that the intent of the provision was to remove from what an International Searching Authority had to search just ‘a presentation of information,’ say in tabular form, particular ways of writing, and that sort of thing.” Although the discussion was in connection with Rule 39 PCT, A 52(d) was ultimately based on the same provision (see “Minutes of the 9th meeting of Working Party I held from 12 to 22 October 1971, in Luxembourg”, BR/135/71, point 95). These examples show that it was envisaged that parts of how the information, namely the form and way it is presented, may also be part of the presentation of information. In the Board’s view, this applies to the arrangement of information in the tree diagram in the present case. [12] Moreover, there is jurisprudence in this field holding that similar presentations of information are not technical. In particular, T 1143/06 discussed some of this jurisprudence and concluded that representing, by the speed of an element moving on a display, the relevance of data in a database to sort statements had no technical effect. The case was similar in that the information was presented to the user in a way that made it easier to evaluate and the user could then respond by selecting and displaying data (see point [3.8]). The Board noted that the information was known per se, but only differed in the visual form in which it was displayed; i.e. speed of a moving element instead of in tables. In the Board’s view, the present case is even less convincing because the invention is merely a visual display of a known analysis technique using known means, whereas in T 1143/06 the idea of varying the speed of the element was at least not known. [13] The Board essentially agrees with the ED that the solution is the implementation of user choices using known techniques that would be matters of routine design. In particular, the Board considers that, faced with the problem of showing the user the results of a slice-and-dice operation, it would be self-evident that the value at a child point on the tree already gives the “slice” in a certain dimension. Thus, the skilled person would be faced with the practical problem of selecting the required “slice”. Furthermore, since, by definition, the “dice” is the set of values along another dimension, this dimension must also be selected. The use of mouse clicks and menus to make such selections are routine design options in this field and are common general knowledge. The same applies to implementing the “drill-down” operation. D1 also confirms the common general knowledge of selecting various data types by using a menu, an icon or double clicking […]. [14] The appellant argues that D1 only discloses navigation in connection with the “n-gonal” representation, but not in a tree structure. Moreover, the tree structure would not be suitable because it grows wider and taller with each successive level and thus requires scrolling to view all the data. However, these arguments relate to aspects 1700 | 3398
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K’s Law – The ebook
of the invention that concern the presentation of the information, which as mentioned above, do not contribute to inventive step. The only technical contribution is how to present a particular piece of data at a particular point using menus and selections. [15] Having said that, the Board considers that D1 does actually disclose the techniques of analysing multidimensional data, including drill-down and slice-and-dice, as well as all the essential navigation functions of the invention. Thus the user can specify a hierarchy of data points (Figure 18: 50), each data point having a dimension (47a - e.g. “Country”, “Manufacturer”, “Racket Attribute” or “Racket Type”), in turn having levels (48 - e.g. “Badminton”, “Racket Ball”, “Squash”, “Table Tennis” or “Tennis”). The hierarchy can then be transformed into a “n-gonal” representation (e.g. as in Figure 10). The user may perform analyses on the data and change the hierarchy if necessary […]. Thus the invention could be considered to differ only in the presentation as a tree rather than an “n-gonal” structure. However, the passage in D1 […] states that the “ngonal” representation 138 is more compact and visually understandable than the equivalent tree structure 136, which would tend to imply that they are alternative presentations. [16] Accordingly, claim 1 of the main request does not involve an inventive step (A 56 EPC 1973). […] The appeal is dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1037/09 – He Loves Redundancy
K’s Law – The ebook
T 1037/09 – He Loves Redundancy 10 Dez 2011
This decision is not particularly noteworthy but it contains a statement on the attitude of the skilled person that might come in handy from time to time. [3.5] […] Nor is the Board convinced that the skilled person is generally disinclined to combine measures with the same effect. Combination often offers useful redundancy, or combined effects may complement each other. As for the increased costs of combining similar measures this is a routine economical concern that can hardly be equated to a generally existing technical prejudice. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1172/08 – Empty Shell
K’s Law – The ebook
T 1172/08 – Empty Shell 9 Dez 2011
The patent proprietor and the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form. Claim 1 of the granted patent read: A method for determining T-cell epitopes within a protein comprising the steps of: (a) obtaining from a single human blood sample a solution of dendritic cells and a solution of naïve CD4+ and/or CD8+ T-cells; (b) promoting differentiation in said solution of dendritic cells; (c) combining said solution of differentiated dendritic cells and said naïve CD4+ and/or CD8+ T-cells with a peptide of interest; (d) measuring the proliferation of T-cells in said step (c). (my emphasis) Claim 1 of the request found allowable by the OD read: A method for determining T-cell epitopes within a protein comprising the steps of: (a) obtaining from a single human blood sample a solution of monocyte cells and a solution of naive CD4+ T-cells; (b) promoting differentiation of said monocyte cells to dendritic cells by a method as described in Example 1; (c) combining said solution of dendritic cells and said naive CD4+ T-cells with a peptide of interest; (d) measuring the proliferation of T-cells in said step (c). (my emphasis) One of the key issues was the compliance of this request, which was also the main request before the Board, with A 123(3). A 123(3) and A 69 [6] According to A 123(3), “the European patent may not be amended in such a way as to extend the protection it confers”. According to A 69(1), “the extent of protection conferred by the patent ... shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.” [7] The interpretation of the protection conferred by a patent according to A 69 is in general not one of the duties of the boards of appeal (cf. e.g. decision T 175/84). For the purpose of establishing whether the amendments of the main request fall foul of the provisions of A 123(3), it is however necessary to do so. [8] Parts (a) and (b) of claim 1 as granted referred to obtaining dendritic cells from a human blood sample and to promoting the differentiation in said solution of dendritic cells, while the respective parts of claim 1 of the main request refer to obtaining monocyte cells and to promoting the differentiation of said monocyte cells to dendritic cells. It is evident, and it has not been contested by the parties, that obtaining a solution of monocyte cells from a blood sample is not the same as obtaining a solution of dendritic cells from a blood sample. Thus, claim 1 as granted and claim 1 of the main request, when read on their own, provide protection for different subject matter. [9] [The patent proprietor] agreed that normally such a shift in the extent of protection would not be allowable. It argued however that the case at issue was very particular because the claims as granted did not embrace the subject matter of the only example of the patent specification. Under such circumstances, the skilled reader would have realised that the claim language was inconsistent with the patent specification, and that what the patentee really wanted was protection for the method described in Example 1. [10] It has therefore to be established whether the amendments of claim 1 result in an extension of the scope of protection conferred by the patent as a whole. 1703 | 3398
T 1172/08 – Empty Shell
K’s Law – The ebook
[11] According to the protocol on its interpretation, “A 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims” (Protocol on the interpretation of A 69, Article 1, first sentence). [12] From this, [the patent proprietor] concluded that what determined the scope of protection in the present case was not the literal meaning of the term dendritic cells. Since the literal meaning of the term dendritic cells was not consistent with Example 1, in which monocytes were isolated, the skilled person would have concluded that the granted patent conferred protection for a method for determining T-cell epitopes comprising the steps of obtaining monocyte cells and differentiating those monocyte cells to dendritic cells. Thus, on a proper construction of claim 1, there was no extension of the scope of protection. [13] The board agrees with [the patent proprietor] only insofar as the protocol on the interpretation of A 69 states that the description and drawings should be used for interpreting the claims even if there is no ambiguity in the meaning of the claims. But Article 1 of the protocol also makes reference to the balance that has to be struck between the interests of the patent proprietor in obtaining fair protection and a reasonable degree of legal certainty for third parties (Protocol on the interpretation of A 69, Article 1, third sentence). To give some guidance in this respect, it also explicitly states that A 69 should not “be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated” (Protocol on the interpretation of A 69 EPC, Article 1, second sentence). [14] The board has no doubts and the parties have not disputed that dendritic cells and monocytes are different cell types characterized by different features. Both cell types can be distinguished by morphological features as well as phenotypic and molecular markers, and the isolation of enriched dendritic cell fractions from blood samples was for instance disclosed in prior art document D8. Thus, the skilled person would a priori not have had any reason to read a different technical meaning into the term “obtaining from a blood sample a solution of dendritic cells”. Had he wondered, as argued by [the patent proprietor], what sublineage of dendritic cells was used for the differentiation in said solution of dendritic cells, he might have turned to the description and Example 1 and would have found that monocytes were isolated and in vitro differentiated into dendritic cells. He might have wondered why the claim referred to isolating dendritic cells, but in the board’s opinion, the protocol on the interpretation of A 69 does not leave room for going a step further and reading [the patent proprietor]’s interpretation into claim 1. Doing so would require the skilled reader to completely ignore the wording of granted claim 1, which per se was not technically meaningless, with the consequence that the wording of claim 1 would merely serve as an empty shell. This is clearly not in the sense of A 69 nor in the sense of the protocol on its interpretation. Moreover, the interest of third parties in legal certainty would be completely ignored, if [the patent proprietor]’s interpretation were found to be acceptable. [15] [The patent proprietor] repeatedly referred to the amendments in claim 1 as removing an inconsistency between the claims and the description. To support its case, it cited several decisions from the boards of appeal relating to this issue. In decision T 108/91, the competent board stated that the amendment of a granted claim to replace an inaccurate technical statement, which was evidently inconsistent with the totality of the disclosure of the patent, by an accurate statement of the technical features involved, did not infringe A 123(3). Importantly, in said case the technical term used in the claims was inconsistent with the totality of the disclosure of the patent. This is however not comparable to the present case where the general parts of the description of the application documents define the invention exactly as in granted claim 1 […], and the term monocytes is used only in Example 1 but nowhere else in the description. In decision T 140/99, the meaning of a literally clear term in a claim was altered by adding a statement how the term had to be interpreted. The board accepted this amendment because it considered it to remove an inconsistency between the claim and the description. This is also not comparable to the present case where a literally clear technical term was not altered by stating how it had to be interpreted but instead was removed and replaced by a term with an equally clear but distinct technical meaning. In decision T 371/88, the replacement of a restrictive term, which in its strict literal meaning did not clearly embrace a further embodiment of the description, by a less restrictive term clearly embracing also this 1704 | 3398
T 1172/08 – Empty Shell
K’s Law – The ebook
embodiment was held to be permissible if two conditions are met. The conditions are: a) the restrictive term is not so clear in its technical meaning in the given context that it could be used to determine the extent of protection without interpretation by reference to the description and drawings of the patent, and b) it is quite clear from the description and the drawings of the patent and also from the examination procedure up to grant that the further embodiment belongs to the invention and that it was never intended to exclude it from the protection conferred by the patent. The present case differs from the case underlying decision T 371/88 because already the first condition is not met. The replacement of the terms “obtaining dendritic cells” and “promoting differentiation in said solution of dendritic cells” by “obtaining monocyte cells” and “promoting differentiation of said monocyte cells” cannot be regarded as the replacement of a more restrictive term by a less restrictive term. The term monocytes does not embrace dendritic cells. In decision T 314/03, the replacement of a feature of the claim in plural form by the same feature in singular form, was considered to remove an inaccuracy or inconsistency which was said to be obvious to the skilled person upon reading the description. The present case is however about replacing a technically meaningful term with a technically entirely different and equally meaningful term. This constitutes an entirely different situation. In conclusion, the board does not agree with [the patent proprietor]’s interpretation of the cited decisions and their applicability to the present case. [16] In view of the above considerations, the board comes to the conclusion that the amendment of claim 1 extends the protection conferred by the granted patent. The main request does not meet the requirements of A 123(3). […] The patent is revoked. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1282/08 – You’re Too Greedy
K’s Law – The ebook
T 1282/08 – You’re Too Greedy 8 Dez 2011
Both opponents filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form. About one year after having filed his statement of grounds of appeal, opponent 1 filed document D34, an article published in the journal of the Entomological Society of America in 1978. He requested the document to be admitted into the appeal proceedings and, as an auxiliary request, that the case be remitted to the OD. The Board found D34 to be highly relevant because it prima facie disclosed all the features of use and method claims 1 and 15 and because it apparently indicated that the invention could not be carried out over the whole scope of the claims. It therefore admitted it into the proceedings. The Board then dealt with the question whether the case should be remitted and whether costs should be apportioned: *** Translation of the French original *** [13] [Opponent 1] has not argued very strongly against a remittal. He has even filed an auxiliary request for a remittal if document D34 was admitted into the proceedings, as it indeed was. His only argument against a remittal, i.e. that the document had not been filed belatedly because it had been filed as soon as it had been discovered, is not convincing. Otherwise, any party could wait for the moment it deems appropriate for filing evidence, without giving any thought to the legal requirements concerning, for instance, the time limit for filing an appeal (A 99(1) and R 76(2)(c)) or to the completeness of the case on which an appeal is based (Articles 12(2) and (4) RPBA). Obviously, it is unacceptable to allow parties to decide themselves on what is belated and what is not. [14] In the present case, [opponent 1] has found document D34 only on August 18, 2009, and has filed it immediately afterwards. The sole reason for not having done so at an earlier stage was that the document had only been found when carrying out a search on an apparently unrelated topic. However, it cannot be accepted for such a situation to turn to the disadvantage of the [patent proprietor] who could expect the statement of grounds of appeal to inform him on the complete case made against him (see Article 12(2) RPBA). The Board agrees with the [patent proprietor’s] submission that if the document had been produced together with the statement of grounds of appeal, there would not have been any necessity for a remittal: it would not even have been envisaged. [15] As the document changes the case in a significant way […] and as the sole argument against a remittal is unacceptable, the Board comes to the conclusion that it is appropriate to remit the case. Apportionment of costs [16] The [patent proprietor] has requested apportionment of costs so that the [opponent 1] would pay all his costs, i.e. not only the costs related to the present appeal, but also to the additional proceedings before the OD. As far as the costs related to the appeal are concerned, he has argued that the fact that document D34 was taken into account changed the case in such a way that all the expenses related to the appeal were made in vain (en pure perte). [Opponent 1] has countered this request by pointing out that apportionment of costs was only justified if there had been an abuse of procedure, and that there had not been such an abuse in the present case. [17] The Board does not endorse this argument, simply because of Article 16(1) RPBA: (1) Subject to A 104(1), the Board may on request order a party to pay some or all of another party’s costs which shall, without limiting the Board’s discretion, include those incurred by any (a) amendment pursuant to Article 13 to a party’s case as filed pursuant to Article 12(1); (b) extension of a time limit; (c) acts or omissions prejudicing the timely and efficient conduct of OPs; (d) failure to comply with a direction of the Board; 1706 | 3398
T 1282/08 – You’re Too Greedy
K’s Law – The ebook
(e) abuse of procedure. [18] These provisions clearly show that an abuse of procedure is only one item among a non-exhaustive list of situations that can justify apportionment of costs. The Board agrees that the late filing of document D34 by [opponent 1] does not constitute an abuse of procedure, but this is not sufficient for avoiding apportionment. As a matter of fact, the non-exhaustive list of Article 16(1) RPBA also mentions the case of an amendment pursuant to Article 13 to a party’s case, i.e. an amendment made after the filing of the statement of grounds of appeal or of the response thereto. As such amendments are allowed only if the Board choses to do so, they do not always result in apportionment of costs, but it is clear that the RPBA considers apportionment of costs in a situation that is identical to the present case. [19] [Opponent 1] has also pointed out that document D34 could not have been found with the available search tools at the beginning of the opposition proceedings. This argument has only been made during the oral proceedings, without any proof. However, even if this argument is accepted provisionally, it cannot have any impact on the present case because the [patent proprietor’s] request only concerns the costs related to the appeal and the additional opposition proceedings and does not extend to the costs related to the prior opposition proceedings. [20] [Opponent 1] has not alleged that the results that could be obtained with the search tools available in August and September 2009 (when D34 was found and filed) could not have been obtained during the period of four months ending on September 28, 2008 (when the time limit for filing the statement of grounds of appeal expired). As a matter of fact, it follows from what the Board has stated in points [13] to [15] above that [opponent 1] could (and should) have filed document D34 together with his statement of grounds of appeal. This misbehaviour (manquement) cannot be excused ; as it has created additional costs for the [patent proprietor], the Board is of the opinion that apportionment of costs is appropriate. [21] However, the Board does not share the [patent proprietor’s] opinion that [opponent 1] has to pay all the costs related to the appeal and for the first instance proceedings to come. As far as the costs related to the appeal are concerned, the Board is of the opinion that at most the expenses related to the [patent proprietor’s] response to the statements of grounds of appeal filed by the [opponents] qualify as having been made in vain. As pointed out by the [patent proprietor], the remittal could have been avoided if at least one of the statements had invoked D34. Then the [patent proprietor] would have been aware of the whole case made against him and could have treated all its elements in his response. As document D34 has only been filed at a later stage, and as its relevance is such that it changes the case to the point that a remittal to the OD is justified, the expenses related to this response were made in vain and it equitable to let [opponent 1] bear those costs. [22] Regarding the costs related to the first instance proceedings to come, the Board notes that certain Boards of appeal have sometimes ordered apportionment of costs for expenses to be made in the future (see T 847/93 [4] and T 715/95 [4]). Apportionment of costs is always at the discretion of the Board, and it may well be that those Boards were confronted, in the cases cited above, with different situations. However, the Board feels unable to arbitrate, at the appeal stage, on apportionment of costs that would arise in subsequent proceedings, on the progress (déroulement) and outcome of which one can only speculate for the time being. Each case of this type comprises some uncertainty, which makes it preferable to wait for the outcome of the subsequent proceedings before deciding on apportionment of costs. In the present case, if document D34 turns out to be decisive for the outcome of the opposition, then it would be more equitable to apportion the costs of the earlier proceedings rather than those of the subsequent proceedings. Therefore, the Board considers that in the present case apportionment of costs relating to the opposition proceedings, if such costs are to be apportioned, has to be decided by the OD at the end of the opposition, based on the situation that prevails at that time, and the requests that will have been submitted to it. Decisions T 758/99 [2], T 890/00 [5, 4th §] and T 1182/01 [4.3] are examples where the Boards have left it to the OD to decide on apportionment of costs arising in subsequent first instance proceedings. [… Opponent 1] has to bear the costs which the [patent proprietor] had to bear in relation to his response […] to the statement of grounds of appeal. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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T 624/08 – Artificiality
K’s Law – The ebook
T 624/08 – Artificiality 7 Dez 2011
The patent proprietor filed an appeal after the Opposition Division had revoked the opposed patent, in particular on the grounds of insufficiency of disclosure and lack of compliance with A 123(2). Claim 1 before the Board read: 1. A composition comprising aqueous fluid absorbent polymer particles which have been heattreated at temperatures greater than 170ºC for more than 10 minutes, wherein the composition has been remoisturized, after the heat-treatment, with an aqueous additive solution containing a mono- or multivalent metal salt in the absence of an organic solvent or water-insoluble, nonswellable powder, wherein the composition comprises 1 to 10 percent by weight, based on the total weight of the composition, water and wherein the composition is characterized by the ability to absorb at least 20 grams of a 0.9 weight percent aqueous saline solution under a pressure of 0.3 psi (21,000 dynes/cm2), that is, a 60 minute 0.3 psi (21,000 dynes/cm2) absorption under load (AUL) greater than 20 grams/gram. (my emphasis) The Board found the request on file to comply with A 123(2) and then examined its compliance with A 83: [3] The objections raised under A 83 essentially concerned the parameter “a 60 minutes 0.3 psi (21,000 dynes/cm2) absorption under load (AUL) greater than 20 grams/gram. The [opponents] argued that the contested European patent did not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art because:
the above parameter did not define the AUL of the entire absorbent polymer composition;
the open-end range of AUL did not allow the skilled person to perform the patent over the whole claimed range; and
the patent did not disclose the invention in a manner such that the skilled person could systematically obtain compositions satisfying the AUL-parameter.
The [opponents] raised an additional objection under A 83 concerning an alleged contradiction between Claim 1 (absence of organic solvent) and Claims 6 and 11 (further comprising propoxylated polyol, which is an organic solvent). Method of measuring AUL [3.1.1] The board acknowledges that the claims do not comprise a definition of the method to be used for the measurement of the AUL of the composition. Nevertheless, the patent specification […] provides a clear and unambiguous disclosure of the method to be used, stating that the composition is characterised by the ability to absorb 20 grams of a 0.9 weight per cent aqueous solution under a pressure of 0.3 psi, that is: “a 60 minutes 0.3 psi (21,000 dynes/cm2) AUL greater than 20 grams/gram as measured in accordance with the Absorption Under Load Test set forth in U.S. Patent No. 5,147,343”. [This document corresponds to D1 of the appeal proceedings]. The board is satisfied that D1 […] discloses this test in full detail and thus enables the skilled person to carry out this test – something which was not contested by the [opponents]. The board, however, acknowledges the potential artificiality of this test, which is actually the origin of the dispute between the parties, namely that it does not use all polymer granules from the claimed composition in the measurement of AUL but only a fraction thereof. Thus a sample is prepared by pre-screening the granules through a U.S. standard #30 mesh and keeping only those retained on a U.S. standard #50 mesh. The AUL is then determined by measurements carried out on this fraction, which thus contains only particles with a size ranging between around 300 and around 600 mym.
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T 624/08 – Artificiality
K’s Law – The ebook
As a matter of convention, the AUL-value measured for this particular fraction is then attributed to the sample composition as a whole, i.e. to a composition including all polymer granule fractions. The board observes that neither D1 nor any other of the cited documents provides a technical explanation for the selection of the specific particle size fraction in the AUL measuring method. Nor could such an explanation be provided by the parties at the oral proceedings. This is, however, immaterial since D1 gives the skilled person clear instructions how to carry out the measurement. [3.1.2] The board acknowledges that the potential artificiality underlying the AUL-test described in D1 may be even more artificial in the present case. In particular, Claim 1 relates to a composition comprising aqueous fluid absorbent polymer particles but attributes the AUL to the whole composition. The board accepts that the AULvalue measured on a particular particle fraction of such a composition may indeed be even less representative for a composition comprising, besides the absorbent polymer particles, further components (e.g. non-absorbents) than for a composition essentially consisting of only absorbent polymer particles. Nevertheless, the convention or artificiality stemming from D1 is not invalidated by this fact. [3.1.3] In the Board’s view, this convention cannot be validly objected to under A 83. A person trying to repeat the invention has merely to pre-screen the composition through a U.S. standard # 30 mesh, to retain the particles on a U.S. standard # 50 mesh, carry out the AUL-test on the retained sample of granules and then attribute the resulting value - in accordance with the convention - to the composition as a whole. Under these circumstances it is not necessary to further consider whether the AUL-value depends on the particle size. [3.1.4] In the board’s view there can also be no doubt that the claim requires that the composition indeed comprises particles of the required size. If no such particles are present in the composition, no AUL-value can be measured using the prescribed method, so that such a composition would in any case not fall within the scope of the claims. [3.1.5] However, the particularity of the AUL-test may lead to the parameter as defined in Claim 1 being, at least to a certain extent, technically meaningless. For example, a composition may have, in accordance with the convention of the AUL-test, the required AUL-value, but may in fact have a rather “bad” absorbency under load in practice, for example because the composition contains only a very small amount of the material responsible for it. In the board’s view, however, this aspect relates not to insufficiency of disclosure, but rather is to be evaluated in the assessment of inventive step. [3.1.6] Finally the board does not consider that the conclusions of T 137/01 on sufficiency of disclosure apply by analogy to the present case. In T 137/01 the claimed invention was also defined by parameters of the superabsorbent material, namely the “Resistance to Deformation Under Load” and the “Wicking Index”, although these are different from the AUL parameter used to define the present invention. In T 137/01, the patent, as with the present patent, only disclosed how to measure the parameters for absorbent particles with sizes between 300 and 600 mym. In T 137/01 [2.2.1] the board took the view that since the claim was not limited to composites only having absorbent particles lying within this range, and since the patent did not disclose how much of the absorbent material should consist of particles lying within this range, there was not enough information enabling the skilled person to say that the absorbent material as a whole would be suitable for achieving the desired effects, these effects being achieved when the measured values of the parameter of the “whole superabsorbent material [fell] within specific numerical ranges.”. [3.1.7] The present board reads the present patent differently. The board considers that it would be apparent to the skilled person that the AUL-value to be attributed to the composition for the purpose of the claimed invention cannot be the actual AUL-value for the “whole” composition because the stipulated AUL determination method requires sieving, as already explained. Since the composite is likely to have also absorbent particles with sizes lying outside the 300 - 600 mym range (see e.g. the reference to the problem of polymer particles in the form of dust […]) the AUL-value obtained is at best only likely to be representative of the actual AUL characteristics of the composite (except in the unlikely case of the composite comprising only polymer particles falling within the claim range). How representative the value will be for the whole composition will depend on the particular circumstances, in particular on the nature of the absorbent polymer used and the constitution of the composition as a whole. But the parameter is, nevertheless, capable of being measured and the skilled person will be able to tell if any particular composition falls within the claimed parameter value range. As
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T 624/08 – Artificiality
K’s Law – The ebook
already indicated, however, the stipulated method of determining the AUL-value will clearly become highly relevant when it comes to evaluating inventive step. AUL value defined as an open-ended range [3.2.1] The composition referred to in the claims (see for example Claim 1) must have an AUL-value of greater than 20 g/g. In essence it was argued that this open-ended range was unduly broad so that it would embrace values of AUL which were not yet known and/or it was not known how they could be achieved. In fact, the highest AUL-value in the examples of the contested patent is 30.5 g/g […]. However, the Board does not construe the AUL-value range as claimed, i.e. without defining a specific upper-end, as being unlimited. [3.2.2] This objection is based on an erroneous interpretation of the subject-matter covered by the claims. It is clear for a skilled reader that a claim such as present Claim 1 including an open-ended range is limited in practice. In fact, values of the parameter not obtainable in practice would not be regarded by the skilled reader as being covered by the claim and thus could not justify an objection of insufficiency of disclosure (see Case Law of the Boards of Appeal of the EPO, 6th edition 2010, Section II.A. 6.1; see also point 2.3 of T 1018/05 [2.3] and T 297/90 [2.2]). The use of an open-end formulation simply seeks to embrace values which should be as high as can be technically attained above the specified minimum, given the other parameters of the claim. In the present case there is a clear teaching in the patent specification, including numerous examples, how to achieve compositions with the desired value of absorbency under load greater than 20 g/g. Moreover Claim 1 includes process features (heat treatment of a starting material and its remoisturization with a specific aqueous additive solution), so that the skilled reader would immediately understand the practical repercussions of these limitations, namely that the starting material and the method for the preparation of the water-absorbent powder set the practical limitations for the value of absorption under load. [3.2.3] The [opponents] did not question the examples in the patent in suit nor did they submit any experimental evidence showing that the invention could not be performed. Consequently, the board is satisfied that the requirement of sufficiency of disclosure with regard to the open-ended range for the AUL is met. [3.2.4] In reaching this conclusion the board has also considered the decision T 1008/02 [3.3-4]. There, the board concluded that the auxiliary request under consideration did not fulfil the requirements of sufficiency because none of the examples showed the claimed properties, in particular an absorbency under load of “at least 27 ml/g”, and no evidence had been produced that a superabsorbent having inter alia this property was available to the skilled person. Thus, the situation in that case differs from the present case where the patent provides various examples with values of absorbency substantially greater than 20 g/g (e.g., 30.5 g/g). Performance of the invention so that AUL values systematically fall within the claimed range [3.3.1] The board is satisfied that the experimental part of the contested patent exemplifies compositions with an AUL falling within the claimed range. The board does not dispute the fact that a comparison of the examples in the patent in suit with regard to the AUL-values before and after remoisturization indicates that the AUL-value can either increase […] or decrease […] or even remain the same […]. Nevertheless, the board observes that in all these examples referred to by the [opponents], the measured AUL has a value falling within the claimed range. Thus sufficiency of disclosure cannot be plausibly contested. In particular since commercial products are used as the starting materials […]. [3.3.2] Even if remoisturizing were to decrease AUL of the heat-treated polymer particles, it appears to be an obvious measure to use heat-treated polymer particles with a sufficiently high AUL-value in the first place so that despite a decrease after remoisturizing the AUL-value would still be above the lower limit. The contradiction between Claim 1 and Claims 6 and 11 [3.4.1] According to independent Claim 1 the composition is remoisturized with a specific aqueous additive solution in the absence of an organic solvent. On the other hand, Claims 6 and 11, both dependent on Claim 1, specify that the aqueous additive solution further comprises a propoxylated polyol, which is, as pointed out by the [opponents], normally considered to be an organic solvent. [3.4.2] The board accepts that there is a prima facie contradiction between Claim 1 (absence of organic solvent) and Claims 6 and 11 (further comprising propoxylated polyol). Nevertheless, the board considers that a skilled person would understand from reading the claims that, in the context of the present patent, propoxylated polyols 1710 | 3398
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K’s Law – The ebook
are not considered to be organic solvents which have to be excluded. This is in fact supported by paragraph [0017] of the patent specification which describes, in addition to sodium, potassium or aluminium ions, propoxylated polyols as suitable additives, in particular to further bind the fine dust of the final superabsorbent polymer. Thus, the patent specification attributes to the propoxylated polyols a particular function different from the “normal” solvent function. [3.4.3] In fact this issue relates to clarity, namely the interpretation of the terms used in the claims, rather than to sufficiency of disclosure. In any event, the apparent contradiction is resolvable, as explained above. Admissibility of additional arguments regarding sufficiency of disclosure [4.1] With its letter dated 13 January 2011 [opponent 1] filed numerous additional arguments relating to sufficiency of disclosure. The most relevant among these arguments concerned the absence of any disclosure of the method of measuring the water-content of the claimed composition. According to Claim 1 the composition comprises 1 to 10 percent by weight water, based on the total weight of the composition. [4.2] These new arguments were filed long after [opponent 1’s] reply to the statement of grounds of appeal (filed with letter dated 10 October 2008) and also after the board had issued the summons to attend oral proceedings (11 August 2010). These arguments and lines of attack were therefore submitted very late and would have required amendment to [opponent 1’s] case (Article 13(1) RPBA), as well as prolonging and complicating the appeal. Furthermore, these new arguments are not prima facie relevant. In particular with regard to the method of measuring the required water-content of 1 to 10 wt%, the board observes that the originally filed application […] and the patent specification […] disclose that the moisture-content of the superabsorbent polymer resin is determined by weight loss at 105ºC for 3 hours. This method corresponds exactly to the disclosure of D28 where the following is stated […]: “Traditionally the determination of moisture in superabsorbent polymers has been obtained gravimetrically after heating the sample at 105ºC for 3 h.” Thus, apart from the fact that the method of measuring the water-content is disclosed in the patent specification itself, this method even appears to belong to the common general knowledge of a person skilled in the art. [4.3] In view of the above considerations, the board exercising its discretion power under Articles 13(1) RPBA decided not to allow [opponent] 1 to amend its case and thus to admit the additional arguments relating to sufficiency into the proceedings. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 95/10 – Too Concise
K’s Law – The ebook
T 95/10 – Too Concise 6 Dez 2011
The patent proprietor appealed against the decision of the Opposition Division (OD) revoking the opposed patent. He filed a very concise notice/statement of grounds of appeal (cited in the decision). The Board found the appeal to be inadmissible, for the following reasons: *** Translation of the German original *** [1] A statement of grounds of appeal only qualifies as such if it deals with the impugned decision and does not only refer to submissions made during the opposition proceedings (established case law of the Boards of appeal, e.g. T 220/83 and T 213/85). There are three reasons for this: First, the appeal proceedings are not a continuation of the opposition proceedings. They are distinct proceedings wherein all the facts, evidence and arguments that are considered essential may have to be filed anew. The Enlarged Board of appeal has referred to the independent legal nature of the appeal proceedings in its decisions G 10/91, G 9/92 and G 4/93. Secondly, the statement of grounds of appeal presupposes that the appellant deals with the impugned decision. Just as the EPO has to grant the parties the right to be heard (A 114) by not only noting the submissions of parties but by dealing with them in a visible manner, the request for a legal dialog between the Board, the appellant and the respondents that is made when an appeal is filed requires the appellant to deal with the arguments of the impugned decision which he considers erroneous. Thirdly, it is necessary that [the statement of grounds of appeal] deal [with the impugned decision] because otherwise neither the Board nor the respondents can understand for which reason the impugned decision is considered erroneous. However, this knowledge is needed if the respondents are to oppose the arguments of the appellant, and the Board is to be enabled to make a factual decision. [2] In the present case the notice of appeal dated December 10, 2009, makes the following statement: “The OD has neither taken into account nor even considered our statements regarding novelty and inventive step of July 15, 2009; therefore, it has violated the constitutional (verfassungsmäßig) right to be heard. As a consequence, the appeal is admissible and reasoned.” [3] Decision T 574/91 has found a statement of grounds of appeal which only contained the indication that the OD had “missed the point in its decision” to be sufficient. This decision cannot be applied to the present case. First, the facts underlying the cited decision show that the appealing patent proprietor had filed a new set of claims together with the statement of grounds of appeal, which, according to the established case law of the Boards of appeal is sufficiently substantiated as such (e.g. T 934/02). Moreover, apparently the factual situation underlying T 574/91 was such that the OD had based the lack of inventive step on one singles reason and, therefore, it was not difficult for the Board of appeal and for the respondents to determine what the appeal was directed at. In the present case, however, the OD has given very carefully drafted and detailed reasons why the European patent was neither novel (in view of D12) nor inventive (D801 and D3; D801 and D9; D802 and D3; D12 and D801 or D12 and D 802). Therefore, the appeal could only have been allowed if none of the cited documents as such or in one of the above mentioned combinations could have led to the revocation of the patent. Therefore, the appellant would have had to deal with these reasons on which the impugned decision was based, as explained in T 213/85. [4] The Board cannot see why these requirements for the duty to substantiate established by the Boards of appeal in their constant case law “generally and obviously does not guarantee the indispensable level of protection in the instances of the EPO” as the appellant submitted in his letter of March 31, 2011. [5] However, the appellant does not have to comply with the above requirements for substantiating an appeal if the decision of the OD itself does not deal with the facts and arguments submitted by the appellant during the opposition proceedings (which in itself is already a substantial procedural violation), which resulted in the 1712 | 3398
T 95/10 – Too Concise
K’s Law – The ebook
appellant being caused and enabled to reformulate and to substantiate its arguments filed during the opposition proceedings in the light of the decision. This is exactly what the appellant has submitted by complaining in its notice of appeal that the OD had neither taken into account nor even considered his statements regarding novelty and inventive step filed on July 15, 2009. In its written submission of July 15, 2009, the patent proprietor comments the three oppositions. As far as the facts and arguments of opponent 2 are concerned, he states, for instance: “D8 (DE 19 746 563 A) does not disclose an unregulated high-pressure pump. Moreover, D8 does not disclose an control device either, nor does it disclose a high-pressure pipe with a highpressure reservoir. Moreover, the connection of a control valve with an injection valve is not disclosed in column 3, lines 39 to 36.” The OD on its part has precisely analysed the documents referred to by the opponents. When dealing with document D8 mentioned just before, the OD explains briefly, but clearly, where and why it considers the features mentioned by the patent proprietor (high-pressure pump, control device, high-pressure pipe with a highpressure reservoir, connection of a control valve with an injection valve) to be disclosed in D8. When doing so, the decision of the OD refers to items that are found either in the description or in the drawings. Therefore, the Board is of the opinion that it cannot be affirmed that the OD when taking its decision has neither taken into account nor even considered the – anyway, very brief and general – submissions of the patent proprietor contained in his letter dated July 15, 2009. [6] In its decision the OD has dealt with all the documents referred to by the opponents and given them due regard. Based on this appreciation it has held the European patent to be neither novel nor inventive. Therefore, a statement of grounds of appeal would have required the appellant (patent proprietor) to deal with the OD’s analysis and to try to disprove all the lines of argument used by it. However, the appellant has not done this for any of the lines of argument. […] The appeal is dismissed as inadmissible. To download the whole decision (in German), click here. The file wrapper can be found here.
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K’s Law – The ebook
T 571/08 - Plausible
T 571/08 - Plausible 5 Dez 2011
The opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. Claim 1 before the Board read (in English translation): 1. A centrifuge comprising a trough (2), a rotor (3) intended to be arranged in the trough (2), and means (4) for driving the rotor (3) in rotation about a central axis of rotation (A) at speeds greater than 10.000 rpm, wherein a number n of seats (81, 82, 101 and 102) for receiving a product to be centrifuged are provided in the rotor, the seats being arranged eccentrically relative to the axis of rotation, characterised in that the geometric image (I) of at least a first seat (81), through a geometric rotation about the axis of rotation (A) in a first direction of rotation (S1) and an angle of 360°/n, is different from a second seat (101) which directly follows the first seat (81) in the first direction of rotation (S1), wherein the seats (81, 82, 101, 102) are of a substantially analogous shape, elongate in a respective longitudinal direction (D), and in that the second seat (101) is substantially the image, through a geometric transformation, of the geometric image (I) of the first seat (81),and in that said geometric transformation comprises a geometric rotation by a non-zero angle (α) in a plane orthogonal to the axis of rotation (A) and/or a geometric translation by a non-zero distance (d) in a plane orthogonal to the axis of rotation (A), the direction of the translation being inclined with respect to the longitudinal direction (D) of the geometric image (I) of the first seat.
In what follows the Board dealt with an alleged prior use that had only been invoked when the appeal was filed. *** Translation of the French original *** Admissibility of new evidence [1.1] Together with its letter dated December 12, 2007, the [patent proprietor] has filed new sets of claims in the form of auxiliary requests, in view of the oral proceedings (OPs) held on January 16, 2008. In its decision, the OD has considered that the subject-matter of claim 1 of the second auxiliary request was novel and inventive. In particular, the OD has considered that the technical feature according to which there are means for driving the rotor in rotation about a central axis of rotation at speeds greater than 10.000 rpm
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K’s Law – The ebook
T 571/08 - Plausible
supported inventive step […]. This lower limit for the speed or rotation was decisive for the decision of the OD […]. This technical feature was not comprised in the claims of the patent as granted and first appeared in the main claim of the second auxiliary request. [1.2] Therefore, the [opponent] was first confronted with a new technical feature about one month before the OPs. The [patent proprietor] considers that the [opponent] had enough time for carrying out the necessary search and find, at this stage of the proceedings, documents that were only submitted together with the statement of grounds of appeal. The Board notes that the [opponent] was faced with this question on short notice at the end of the year, which is a period where the workload is always increased in companies, especially in the accounting and finance departments which are concerned by such a search, because of the end of the financial year in the one hand and the end-of-the-year holidays of the staff on the other hand. Searching for evidence for a prior use is not easy and often very time-consuming for the persons concerned. As a rule, it is necessary to find somebody who recalls the prior use. The staff concerned has to precisely recall what has been sold and when. Sometimes the date is imprecise at first. In such cases it is necessary to carry out searches in different directions in order to find documents concerning the sale and the delivery as well as documents establishing what has been sold. In view of the priority date, the documents concerned go back several years and, therefore, were not necessarily easily accessible. Quite often different documents are kept in different departments and places. Thus the Board comes to the conclusion that the evidence did not necessarily have to be submitted before or during the OPs before the OD. The Board considers that in view of the new auxiliary requests filed shortly before those OPs, the documents, which are part of a response to one of those requests, have not been filed belatedly. The [opponent] has introduced these documents providing evidence for this prior use as soon as possible, i.e. together with his statement of grounds of appeal, in response to the decision of the OD accepting the auxiliary request comprising the above mentioned additional feature. [1.3] The [patent proprietor] considers that the [opponent] should have requested a postponement of the OPs before the OD. The Board cannot accept this argument. First, the [patent proprietor] has indicated, in response to a question of the Board, that he might have objected to such a postponement. Moreover, the [opponent] had arguments concerning a lack of inventive step of the claimed subject-matter, based on documents that were already part of the proceedings. It was, therefore, not clear that such a postponement was necessary. [1.4] The appeal is based in particular on a new prior use consisting in the sale of a particular rotor. In what follows the Board will refer to a “rotor sold” without making clear each time that there is only an allegation of a sale. This is done only for the sake of easier drafting and reading of the reasons for the decision and should not be taken as an indication that the Board considers that it has been proven that the rotor under consideration has actually been sold and delivered before the priority date. [1.5] When a decision has to be taken on whether a prior use is to be admitted and whether the case has to be remitted to the first instance, the relevance of the prior use may play a role. The Board does not have to arrive at the conclusion that the prior use is proven but only that the evidence is sufficient for justifying an examination by the OD. Therefore, a remittal cannot be understood as a decision that the prior use has been proven. [1.6] Regarding the technical features of the sold rotor, the evidence offered consists in drawing D6 and the proposal to hear Mr Wende as a witness.
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K’s Law – The ebook
T 571/08 - Plausible
The Board notes that drawing D6 as such does not form part of the prior art; therefore, one cannot simply decide on what is disclosed in this document. The drawing is evidence concerning the technical features of the rotor sold. Thus the document has to be examined in order to establish the technical features of the rotor sold. According to the drawing it appears that the rotor has room for 12 strips (“Streifen”) each of which has twelve seats (which can be seen on the drawing and which are mentioned in documents D7 and D8). The orifices giving access to the seats of each strip are arranged along a straight line. Therefore, it is at least possible to interpret the drawing such that the axes of the seats a strip are parallel to each other. This appears to be the case for the two seats of different strips that are shown in section. If the axes of the seats of a strip are parallel to each other the rotor has the technical features of the rotor defined in claim 1 (see also figure 3 of the patent).
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K’s Law – The ebook
T 571/08 - Plausible
However, the drawing apparently does not exclude that the axis of the seats are oriented towards the axis of the rotor, that is to say that they might not be parallel to each other in radial sections. In this case, the rotor would not have the technical features of the rotor defined in the claim. However, in this case there would have had to be another figure in the technical drawing showing the particular orientation of the seats, because this is not a simple schematic representation but a production drawing intended to be used for providing all the relevant information on the whole rotor, its lid and how the lid is attached. The fact that there is no such drawing might be evidence supporting that the seats of a strip are all parallel to each other. Therefore, the prior use appears to be relevant because if it is concluded that for the rotor shown in drawing D6 the axes of the seats of a strip are parallel and if it is decided that the rotor has been made available to the public, these elements might have an impact on the novelty and/or inventive step of the subject-matter of claim 1. It may also be relevant in view of novelty and/or inventive step to establish whether the indication of 14.000 rpm (“14000/min”) that is apparent on the drawing was also present on the rotor sold.
The drawing constitutes evidence supporting this theory, but it remains to be decided whether the evidence is sufficient and whether the witness offered could possibly contribute to establishing this element. If it is decided that the rotor sold had the indication “14000/min” apparent in the drawing, it is possible that this could have an impact on the novelty and/or inventive step of the subject-matter of claim 1. The impact on novelty appears to depend on the actual features of the centrifuge in which the rotor was mounted. Apparently there is no evidence for the use of the rotor so far. 1717 | 3398
K’s Law – The ebook
T 571/08 - Plausible
[1.7] Moreover, it is necessary to consider whether the rotor sold was delivered before the priority date. First it has to be established whether the indications for the delivery (delivery slip D7, invoice D8 and VAT certificate D11) as well as the general considerations concerning the reliability of the sender and the usual duration of transit are sufficient proof. The Board is of the opinion that in principle these indications may be sufficient but it does not decide that they are sufficient in the present case. Then it has to be established whether the indications of sending together with the information contained in the extract from the bank statement (annual account D9) are sufficient proof that the rotor has been received, and when. A payment that clearly corresponds to the purchase of a well-defined object may indeed contribute to supporting the assertion that the object has been received. However, such a payment is not necessarily tantamount to an acknowledgement of receipt because it can happen that an accounting department pays a bill independently of the notification of receipt of the object, which may be incumbent on another department. Document D6 has number 12104. Document D7 has the same number 12104, as well as number 2001-14804 as reference for the confirmation of the order (“Auftragsbestätigung”) and number 2001-05953 as registration number (“Belegnummer”). Document D8 also has number 12104 as well as number 2001-05953 as certificate of dispatch (“Lieferschein”) and number 2001-35609 as registration number (“Belegnummer”). Document D10 has number 12104. Document D11 has number 2001-14804. Therefore, apparently those documents may be linked together. The amount mentioned in invoice D8 is 716.17 €, which may be reduced by 2% to 701.85 € if the payment is made within less than 14 days. However, the amount mentioned in the bank statement D9 is 1400.71. The [opponent] has indicated that this difference may be explained by the fact that the amounts in invoice D8 are given in euros whereas the amount given in the extract from the account D9 is in Deutsche Mark, considering that the latter is exactly 1.95583 times greater than the first, which corresponds to the conversion rate from Deutsche Mark to Euros that is mentioned in D10. Moreover, it has to be noted that the article bearing reference 12104 in D10 is associated with reference 1-5K/216/K15, which is different from the reference 1-15K;2K15 associated with reference 12104 in D6 but identical to the indication in D4. This is an indication for the centrifuges with which the rotor can be used (“suitable for” in D10). This is consistent with the reference 12104 in price list D10 which applied as from March 2001, corresponding to D4 established on September 8, 2000, as D4 not only has number 25032 but also number 12104 as reference to the list of items (“Stückliste”). Drawing D6 has been established before July 2001 and, because of the engraving concerning the maximum speed of rotation may refer to list of appropriate centrifuges that is different from the list on D4 and D10. Therefore, the fact that the indication in D10 is different from the one in D6 is not inconsistent. The Board notes that the finding that the pieces of evidence are linked does not necessarily prove that they are sufficient. However, the Board considers that the evidence is at least plausible for establishing a prior use. It may also be that the offered witness might contribute to the evidence. [1.8] Therefore, the Board has come to the conclusion that the prior use that has been asserted for the first time in the appeal proceedings may be relevant and admits documents D6 to D11 into the proceedings. As you might have guessed, the Board then remitted the case to the OD for further prosecution. To download the whole decision (in French), click here. The file wrapper can be found here. I owe the knowledge of this decision to the 2011 FNDE meeting in Lyon. To my best knowledge, I have not presented it before on this blog. ;-)
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T 467/08 – No Way
K’s Law – The ebook
T 467/08 – No Way 3 Dez 2011
The patent proprietor filed an appeal against the decision of the Opposition Division (OD) revoking the opposed patent. In what follows the Board deals with the request of opponent 03 to disregard comparative test results filed by the patent proprietor during the opposition proceedings : [1.2] [Opponent] 03 requests the Board to disregard the comparative test results filed by the appellant with letter of 22 October 2007 for being late filed. With this, the [opponent] 03 in essence wants the Board to exclude a party’s submission made in the opposition proceedings retrospectively; this was confirmed by the professional representative of the [opponent] 03 when asked by the Board during the oral proceedings (OPs). However, neither the EPC itself nor the RPBA provide for such a decision of the Boards of Appeal. The Boards of Appeal can merely review a decision taken by the OD concerning the admittance or non-admittance of late filed submissions, documents and requests filed in those earlier proceedings, or it can decide whether or not to admit submissions, documents and requests filed in the appeal proceedings. [1.2.1] The former is subject to certain limitations. Having regard to the somewhat contradictory setting of limits by the OD in its summons to OPs (22 October 2007) on the one hand and in the annexed communication (two months before the date of the proceedings, i.e. 22 September 2007) on the other hand, the Board can only establish that the issue of whether or not the comparative test results should be admitted into the opposition proceedings has been discussed at the OPs of 22 November 2007 before the OD as derivable from points 3 and 4 of the minutes of the OPs. The minutes, however, do not mention any result of this discussion except the statement that “the Proprietor is allowed to file any document to defend his case upto [sic] the limitation date set by the OD”. Since the decision under appeal is entirely silent on this issue, the Board is not in a position to review whether and how the OD exercised its discretion. However, the Board cannot - as requested by the [opponent] 03 - put itself in place of the OD and review as such all the facts and circumstances. That is not the function of the Boards of Appeal (see G 7/93 [2.6]). In contrast, the fact that the issue was discussed during the OPs and that the OD did not take an explicit decision to refuse to admit the comparative test results leads the Board to the conclusion that said submission of the appellant was part of the opposition proceedings. The two cited decisions T 569/02 and T 718/98 concern two cases different from the present wherein very shortly (i.e. one month and about one week, respectively) before the date of the scheduled OPs before the Board experimental evidence and other documents were submitted by parties, which then in accordance with the established case law decided not to admit these documents into the proceedings (see Case Law of the Boards of Appeal, 6th edition 2010, chapter VII.C.1.3.4). [1.2.2] Remains the question whether there are reasons to not consider the appellant’s submission of 22 October 2007 and its test results in the appeal proceedings. The Board could reject a party’s submission merely within the framework of Articles 12 and 13 RPBA. However, none of the prerequisites provided for in said Articles are met: As a consequence of the conclusion that said submission was part of the opposition proceedings it cannot be late filed in the appeal proceedings according to Article 13 RPBA. For the same reason they cannot be eliminated by the Board on the basis of Article 12(4), 1st alternative RPBA. In addition to this, they were not (explicitly) rejected by the OD and, therefore, cannot be disregarded on the basis of Article 12(4), 2nd alternative RPBA. Neither can it be held that the [opponent]s did not have sufficient time to react to them and to produce, if necessary, their own comparative tests, as they have been filed more than three years ago. 1719 | 3398
T 467/08 – No Way
K’s Law – The ebook
In this context it is to be noted that according to Article 12(2) RPBA the reply to the appeal should contain the [opponent’s] complete case. In this respect [opponent] 03 chose to limit itself to argue solely on the admissibility of this submission but not on its content. That is the choice of the [opponent]; however, it cannot expect the Board to provide intermediate rulings on such requests so as to facilitate the [opponent’s] decision whether to react in substance to such a submission or not. [1.2.3] Taking account of the above deliberations the Board cannot accede to [opponent] 03’s request to exclude from the present proceedings the test results and further submissions based on it. To download the whole decision, click here. The file wrapper can be found here.
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T 2377/09 – Alternative Grounds
K’s Law – The ebook
T 2377/09 – Alternative Grounds 2 Dez 2011
In order to have the appeal fee reimbursed, the appellant has to convince the Board that the first instance proceedings were affected by a substantial procedural violation (unless R 103(b) applies, that is), but the existence of such a violation will not always make the reimbursement equitable within the meaning of R 103(a), as the present decision reminds us. Claim 1 of the Euro-PCT under consideration read (in English translation): A method for measuring the shape of a reflective surface with a system which comprises at least one pattern for reflection at the reflective surface and at least one camera for viewing, pixel by pixel, the pattern which is reflected at the surface , wherein the position and the orientation of the camera and of the pattern as well as the viewing direction of the camera for each pixel are known, wherein, from the viewing directions of the camera, which are known for the pixels, and the positions of the pattern, which correspond to the mapping of the reflected pattern on pixels of the camera, the surface angle and the surface height are determined for the purpose of measuring of the shape, wherein for the accurate determination of the surface height a linear object of known shape is arranged in front of the pattern such that at least one point of the linear object covers a point of the pattern, the spatial position of the object being known, wherein subsequently a plane is determined from the known viewing direction of the pixel which maps the point of the pattern, and the point of the pattern, and [wherein] the point is established as the point of intersection of the thin object with the plane, and the basis point [is established] as the point of intersection of the known viewing direction of the pixel which maps the point of the pattern with the straight line passing through the point of the pattern and the point.
The ED objected to this claim, which led the applicant to amend the claim by replacing the two occurrences of “linear object” by “thin object of known shape” and “thin object”, respectively. The ED then rejected the application because (1) claim 1 was unclear (A 84) because it is impossible to determine the point of intersection of a thin object, which can also be a sheet, with a plane; (2) the description referred to alternative embodiments that were contradictory to the claimed subject-matter (A 84), which were irrelevant for the understanding of the invention or even made it more difficult (R 48(1)(c)); and 1721 | 3398
T 2377/09 – Alternative Grounds
K’s Law – The ebook
(3) the description had not been adapted to the claims (R 42(1)(c)). The applicant filed amended claims and an amended description and requested reimbursement of the appeal fee. He pointed out that the ED had not exercised its discretion under A 94(3) as it should have (“.. as often as necessary …”). The Guidelines (C-VI 4.6) stipulated that the DE had to contact the applicant if there were further deficiencies. The ED granted interlocutory revision but did not grant the request for reimbursement, which was transmitted to the Board. Here is the provisional opinion of the Board, which has become definitive because the applicant did not comment on it and had withdrawn his request for oral proceedings: *** Translation of the German original *** [1] First it is to be noted, with respect to the repeated submissions of the appellant concerning the Guidelines, that the ED has a certain discretion to depart from the general directives in a particular case, as long as it remains within the bounds defined by the EPC. Therefore, the question that is decisive here is whether the ED has acted in accordance with the provisions of the EPC, and not whether it has correctly applied the Guidelines (see e.g. T 162/82 [9]). The […] submissions of the appellant all converge to the question to be examined here, i.e. whether the refusal of the application was a violation of the provisions of A 113(1) EPC 1973 and/or those of A 94(3). [2] In its first objection the ED objected, inter alia, that the subject-matter of claim 1 then on file was unclear (A 84 EPC 1973) because the claim was directed at a method comprising, inter alia, the determination of the point of intersection of a linear object with a certain plane, without specifying that the spatial position of the object was known, so that the determination of the point of intersection was impossible (Notification dated February 19, 2009, point 2.2). When responding to this notification of the ED, the appellant filed an amended set of claims, on which the decision to refuse the application is based. Inter alia, claim 1 was amended such that the feature “the spatial position of the object being known” was incorporated. However, the claim was also amended by replacing the expression “linear object” by the expression “thin object”. In the reasons for its decision, the ED noted that claim 1 as amended was unclear because the point of intersection of a thin object, which could, for instance, have the shape of a sheet, with a plane cannot be determined because the intersection of a sheet with a plane is a line rather than a point. The ED came to the conclusion that the objection raised in its notification had not been completely overcome because it was still impossible to determine the point of intersection ([…] point 1 of the reasons). First, the Board notes that the objection raised in the notification (indefiniteness of the point of intersection of a plane with a linear object of unknown position) and the objection raised in the decision (indefiniteness of the point of intersection of a plane with a thin object) are based on the same legal basis (i.e. the requirement of clarity enshrined in A 84 EPC 1973) and on the same conclusion (i.e. the impossibility of determining the point of intersection within the framework of the respective claimed method) but also on different facts (a linear object of unknown position vs. a thin object of known position) and on different technical considerations (the indefiniteness of the point of intersection due to the unknown position vs. the indefiniteness of the point of intersection as such, because the form of the intersection of a thin object of known position with a plane depends on the cross-sectional shape of the object and, as a rule, does not correspond to, or allow to determine, a point. However, as the “grounds” within the meaning of A 113(1) EPC 1973 comprise, not only the legal, but also the essential factual grounds on which a decision is based (see e.g. T 187/95 [8] and T 105/93 [6]) and as the essential facts and the technical considerations on which the objection of lack of clarity raised in the decision, regarding the determination of the point of intersection is based, significantly differ from those on which the corresponding objection in the notification of the ED is based, the decision was based on grounds which the appellant had no opportunity to comment. De facto the notification of the ED invited [the appellant] to clarify claim 1 such that the spatial position of the object was known in order to overcome the objection of indefiniteness of the point of intersection (points 2.2 and 2.10 of the notification) and claim 1 was amended by the appellant as proposed by the ED […]. The fact that the application was refused on the same ground of indefiniteness of the point of intersection must have come as a surprise to the appellant because the objection is
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T 2377/09 – Alternative Grounds
K’s Law – The ebook
based both on new facts (the replacement of the expression “linear object” by “thin object” in claim 1) and on new technical considerations that had not been communicated to the appellant beforehand. Therefore, the Board agrees with the appellant that the decision of the ED, insofar as it is based on the grounds mentioned above, was taken in violation of the right to be heard pursuant to A 113(1) EPC 1973 and, therefore, is flawed by a substantial procedural violation. [3] However, it also has to be noted that the decision to refuse [the application] is also based on additional grounds […] that are independent from the grounds mentioned above and which do not give rise to a substantial procedural violation. In particular, the ED had also raised objections pursuant to A 84 and R 71(1)(c) and R 34(1)(c) EPC 1973 in its sole notification and has substantiated them by referring to several passages of the description (point 2.9 of the notification) that these passages were contradictory to the claimed invention and did not contain claimed alternative embodiments, which resulted in these passages making the claims unclear (A 84 and R 27(1)(c) EPC 1973) or being irrelevant for understanding the claimed invention (R 34(1)(c)). These objections essentially correspond to the factual and legal grounds on which the alternative […] main grounds of the impugned decision are based. When responding to the notification, the appellant has, inter alia, filed amended pages of the description and has pointed out that the amendments comprise an adaptation of the introduction of the description to the claims as well as clarifications “marking the parts of the description that do not belong to the invention” and that “the corresponding passages of the description […] were not deleted in order not to lose necessary connections which also belong to the disclosure and which make it easier to understand the invention”. However, the ED found those amendments and the arguments of the appellant insufficient for overcoming the above mentioned objections raised in the notification, as can be seen from points 2 and 3 of the reasons for the decision. The Board is of the opinion that these objections were sufficiently clear to allow the appellant to adapt the description accordingly. Moreover, the appellant has not requested oral proceedings or other requests (e.g. amendments presented in the form of auxiliary requests) which could have safeguarded the appellant’s position. It follows that
the appellant had been granted the right to be heard pursuant to A 113(1) EPC 1973 regarding the factual and legal grounds on which the alternative […] main grounds for the decision were based, and the Board cannot see any circumstances – and the appellant has not made any concrete assertions – from which it would have to be concluded that the ED would have had to give the appellant a further opportunity to comment on the same […] objections mentioned above or that it has exercised its discretion arbitrarily or in a way that failed to comply with the requirements of the rules when taking its decision – as far as the [further] objections mentioned above are concerned – immediately after the response to the first notification (see T 161/82 [11]).
In this context it has to be noted that a further written notification of the ED pursuant to A 94(3) would have had to essentially repeat the objections raised in the first notification, which goes beyond the requirements of A 94(3). Therefore, it is irrelevant for the question that is dealt with here that the refusal of the application occurred after only one notification of the ED. The Board shares the opinion of the appellant according to which it would have been appropriate [for the ED] to call the appellant in order to inform him of the factual situation and to warn him that the application might be refused under those circumstances ; however, this course of action is not mandatory under the EPC and its absence cannot result in a substantial procedural violation pursuant to R 67 EPC 1973. The further submissions of the appellant according to which several objections under A 84 and R 27(1)(c) raised by the ED were incorrect cannot support the appellant’s point of view because what matters in the assessment of whether there has been a procedural violation is whether the procedural requirements enshrined in the EPC were complied with, and not whether the objections raised by the ED were correct or convincing, as the case may be (see “Case Law of the Boards of appeal”, 6th edition, 2010, VII-E 17.4.5. [4] In view of the above explanations the Board is of the opinion that a reimbursement of the appeal fee is not equitable pursuant to R 67 EPC 1973 based on the above mentioned procedural violation alone because the decision to refuse the application was also based on alternative grounds which […] do not give rise to any 1723 | 3398
T 2377/09 – Alternative Grounds
K’s Law – The ebook
substantial procedural violation and which would in any case have required the appellant to file an appeal in order to obtain that the decision be set aside (see T 893/90 [5.3], T 219/93 [6], T 4/98 [13.3] and T 978/04 [4]). To download the whole decision (in German), click here. The file wrapper can be found here.
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T 2118/08 – It’s Factual
K’s Law – The ebook
T 2118/08 – It’s Factual 1 Dez 2011
This decision deals with an appeal against the revocation of the patent by the Opposition Division (OD). Claim 1 of the patent as granted read: 1. Fat based food product wherein the food product is a yellow fat spreads[sic] containing vegetable fat and/or animal fat such as butterfat, a dressing, a coffeecreamer, a shortening, a filling or a topping, comprising natural fat components which have a blood cholesterol lowering effect in amounts sufficient to obtain a blood cholesterol lowering effect, wherein the product comprises at least 4 wt% phytosterol weight percentages being based on the total weight of the fat based food product, wherein the fat used in the product is a fat comprising at least 30 wt%, and preferably at least 45 wt% of pufa rich triglycerides, calculated on the total weight of the fat present in the product. The ED had held that the claimed combination of the following features, contained in Claim 1 of all requests, could not unambiguously be derived from the parent application as filed: (A) yellow fat spreads; (B) the product comprises at least 4 wt.% phytosterol weight percentages being based on the total weight of the fat based product; and (C) the fat used in the product is a fat/fat blend (for the auxiliary requests) comprising at least 30 wt.% of pufa rich triglycerides, calculated on the total weight of the fat present in the product. Claim 1 of the main request before the Board corresponded to Claim 1 of the first auxiliary request before the OD and read as follows: 1. Fat based food product wherein the food product is a yellow fat spread containing vegetable fat and/or animal fat such as butterfat, comprising natural fat components which have a blood cholesterol lowering effect in amounts sufficient to obtain a blood cholesterol lowering effect, wherein the product comprises at least 4 wt% phytosterol weight percentages being based on the total weight of the fat based food product, wherein the fat used in the product is a fat blend comprising at least 30 wt% of pufa rich triglycerides, calculated on the total weight of the fat present in the product. The auxiliary requests contained further limitations. The proprietors argued that the subject-matter of the main request did not extend beyond the content of the earlier filed patent application because the features, namely (A), (B) and (C) were combinable. A patent specification was addressed to the person skilled in the art, who surely would understand that the best products would be obtained if the preferred features were combined, even if there was no explicit statement that they were combinable. In the mechanical and electromechanical arts it was routine to combine features which were not disclosed in a single embodiment but taken from the more general passages in the original text, even though combinability was not explicit ... The proprietors also requested the Board to refer a set of questions (cited in the body of the decision, below) to the Enlarged Board (EBA) in case it envisaged to reject their requests for lack of compliance with the requirements of A 123(2). The Main Request [2.1] The OD in its appealed decision […] held that the subject-matter of Claim 1 extends beyond the content of the earlier application as filed, namely WO 96/38047, because it comprises a combination of features which was not disclosed in the parent application as filed.
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T 2118/08 – It’s Factual
K’s Law – The ebook
[2.1.1] The subject-matter of Claim 1 relates to a fat based food product which comprises the combination of the following features: (A)
the
food
product
is
a
yellow
fat
spread;
(B) the product comprises at least 4 wt% phytosterol weight percentages being based on the total weight of the fat based product; and (C) the fat used in the product is a fat blend comprising at least 30 wt% of pufa rich triglycerides, calculated on the total weight of the fat present in the product. [2.2] It is undisputed that each feature (A), (B) and (C) is individually disclosed in the earlier application as filed. Particular reference is made to WO 96/38047, page 11, lines 7-10 for feature (A) “The invention is in particular very suitable for yellow fat spreads, dressings, cheese, shortenings and cooking and frying oils, and more in particular for yellow fat spreads which can comprise 0 (zero) to 90% fat (usually 5-80%).”; page 5, lines 23-28 for feature (B) “In a more preferred embodiment the fat based food product comprises at least 1.2 wt%, preferably at least 4 wt% phytosterol or at least 1.2 wt% preferably at least 4 wt% oryzanol or a mixture thereof in their relative weights.”; and page 13, lines 8-11 for feature (C) “If a fat blend is used, it is preferred that it comprises at least 30%, and more preferred at least 45% of polyunsaturated fatty acids, based on the total weight amount of the fat in the fat based food product.”. [2.3] Nevertheless, it remains to be examined whether the combination of these features also has a basis in the earlier application as filed. [2.3.1] First of all the board notes that the combination of features (A), (B) and (C) is not explicitly disclosed in the earlier application as filed, so that the relevant question to be answered is whether or not this combination is, at least implicitly, directly and unambiguously derivable from the earlier application as filed. [2.3.2] As to whether or not the generation of a fresh particular combination contravenes A 123(2) (and the same criteria apply for A 76(1)), T 686/99 [4.3.3] states: “The content of the application as filed must not be considered to be a reservoir from which individual features pertaining to separate sections can be combined in order artificially to create a particular combination. In the absence of any pointer to that particular combination, this combined selection of features does not, for the person skilled in the art, emerge clearly and unambiguously from the content of the application as filed.” This approach is established jurisprudence of the boards of appeal and has been applied in, for example, T 296/96 [3.1] and T 1402/07 [2.1.2]. It might be worth mentioning at this juncture that the boards of appeal apply the same criteria when assessing novelty over a piece of prior art (e.g. T 305/87 [headnote], and T 763/07 [3.1]). [2.3.3] The [patent proprietors] argued […] that “... the patent specification is addressed to the person skilled in the art. If the person skilled in the art reads of a number of preferred features, surely that person will understand that the best products will be obtained if those preferred features are combined, even if there is no explicit statement that they are combinable. Obviously, that would not be the case if the text said explicitly that, these preferred features were not combinable.” However, apart from this argument, the [patent proprietors] have not cited any passage of the earlier application as filed which contains a pointer motivating the skilled person to combine features (A), (B) and (C) of present Claim 1. In fact, these features are presented in the earlier application as filed rather in a parallel manner than with a connection to each other. This is corroborated by the fact that none of the examples, which is usually the place where the skilled person would look for the best products in a patent application, falls within the scope of Claim 1. In the only two examples describing the preparation of a spread, namely Examples V and VI of the earlier application, no phytosterol at all was used. Also none of the claims of the earlier application as filed provides a hint to the combination required in Claim 1. Although Claim 6 of the earlier application as filed
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T 2118/08 – It’s Factual
K’s Law – The ebook
relates to a yellow fat spread, a fat content of 0 to 60% is a requirement of the said claim. Such a requirement is completely absent in Claim 1 of the main request. [2.3.4] In summary, the board agrees […] that the combination of features (A), (B) and (C) in Claim 1 is not clearly and unambiguously derivable from the application as filed. In fact, the subject-matter of Claim 1 appears to be […] firstly a rather arbitrary combination of features in order to draft a claim which is novel over the cited prior art, and secondly a combination which is not hinted at by the earlier application as filed. [2.4] Therefore, Claim 1 of the main request contains subject-matter which extends beyond the content of the earlier application as filed, contrary to the requirements of A 76(1). That is also what was clearly intended by the OD and what was understood by the parties, even if the OD referred to A 123(2) in this context. Consequently, the main request must be refused. First to fifth auxiliary requests [3] The subject-matter of Claim 1 of the auxiliary requests also comprises the combination of features (A), (B) and (C), which as set out above does not meet the requirements of Article 76(1) EPC. Therefore the auxiliary requests mutatis mutandis must be refused. Referral to the EBA [4.1] The [patent proprietors] alleged that there was a dichotomy in the case law concerning the standards applied when assessing whether a European application or patent fulfils the requirements of A 123(2). They argued that it appeared that a more stringent standard was often applied in the chemical and related arts than in the mechanical and electromechanical arts, where it was routine to combine features which were not disclosed in a single embodiment but taken from the more general passages in the original text, even though combinability was not explicit. This dichotomy has led to two different strands of case law, one comprising “liberal” decisions and the other comprising “strict” decisions. The [patent proprietors] considered that in order to clarify the relevant law the case should be referred to the EBA. Although they held that the formulation of the questions would ultimately be at the discretion of the board, they considered that the following appeared to be relevant: (i) Does an amendment which combines preferred or particular features which are not disclosed in a single embodiment always contravene A 123(2)? (ii) When considering combinations of features from different embodiments, what actually constitutes an “embodiment”? (iii) In order to contravene A 123(2), to what extent do the members of a combination created by way of amendment need to be already combined, or be indicated as potentially combinable, in the original disclosure? [4.2] The board […] considers that the combinability of features taken from different embodiments disclosed in a European application or patent is not a legal issue but a factual one. Thus, depending on the circumstances of each particular case, a board must decide whether a claimed combination of features is or is not directly and unambiguously derivable from the content of the originally filed application. [4.3] Furthermore, the board has not identified any dichotomy in the case law. Whether a board has decided in favour of or against a claimed combination of features is the result of the evaluation of each individual case on its own merits following the requirement developed in the jurisprudence of the boards of appeal of the EPO, namely as to whether or not a claimed combination is directly and unambiguously derivable from the application as filed. [4.4] The [patent proprietors] have even admitted in their statement of grounds of appeal […] that “(t)he problem is where the Board will draw the lines, in any particular case, with regard to what is, or is not, directly and unambiguously derivable, from the application as filed, and whether there is a technical contribution to the subject-matter of the invention”. This is exactly what this board has done in the present case: by considering the particular technical constellation of the present case, it has decided that the claimed combination of features is not directly and unambiguously derivable from the earlier application as filed. [4.5] Under these circumstances there is no reason to refer the case to the EBA. […] The appeal is dismissed. 1727 | 3398
T 2118/08 – It’s Factual
K’s Law – The ebook
Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1728 | 3398
T 1642/07 – Prophets Welcome
K’s Law – The ebook
T 1642/07 – Prophets Welcome 30 Nov 2011
The applicant filed an appeal against the decision of the Examining Division (ED) refusing his application. Independent claims 1 and 8 before the Board read: 1. A combination of a herpes simplex virus (HSV) and an effective amount of a chemotherapeutic agent which induces DNA damage for simultaneous, separate or sequential use in a method of treatment of the human or animal body. 8. Use of a herpes simplex virus (HSV) for the manufacture of a medicament for the therapy of tumors, wherein the virus is administered simultaneously, separately or sequentially in combination with an effective amount of a chemotherapeutic agent which induces DNA damage. The Board found this request to comply with the requirements of A 123(2) and to be novel. It then determined document D3 to be the closest prior art and found that the problem to be solved over D3 was to provide an alternative potentiated virus-based combination therapy for killing (cancer) cells. The proposed solution lay in the replacement of radiation with a chemotherapeutic agent which induces DNA damage. The Board then dealt with the question whether the problem had indeed been solved: [14] In the decision under appeal, the ED considered that the formulated technical problem had not been solved. [15] However, as explained in detail below […], the ED’s negative arguments […] in relation to the failed solution of the technical problem do not (or no longer) apply to the formulation of the technical problem set out by the board. This formulation is now the provision of an alternative potentiated virus-based combination therapy (wherein “potentiated” means additive until synergistic, or in other words “at least additive”) […]. [16] One of the ED’s lines of argument […] was that the patent application as filed did not comprise experimental data showing the synergistic effect. [17] Firstly, the board cannot agree with the approach adopted by the ED which unjustifiably turned its original formulation from “the provision of an alternative anticancer therapy using HSV” […] into “the provision of a synergistic anticancer combination therapy” […]. [18] Secondly, it is true that the patent application contains no experimental evidence in support of the claimed combination therapy but only theoretical statements that viral therapy in combination with a chemotherapeutic agent inducing DNA damage results in an additive until synergistic killing effect on cells/cancer cells […]. A “prophetic” Example III(3) disclosing mitomycin C at a dose of 20 mg/m**(2) to be used in conjunction with an adenovirus can also be found [… in] the published WO application. HSV viruses are dealt with […]. The patent application as filed thus addresses expressis verbis the claimed subject matter and potentiation (additive until synergistic killing effect on cells/cancer cells). However, the board observes that there is no requirement in the EPC, let alone in A 56, that a patent application should include experimental evidence in support of patentability or a claimed technical effect. Hence, the fact that the disclosure in a patent application is merely theoretical and not supported by experimental data is in itself no bar to patentability or to the presence of a technical effect being acknowledged. [19] Further, the ED, relying on decision T 1329/04, decided that post-published documents E7, E8 and E13 to E15 could not be taken into account for showing that the synergistic effect occurred, because the disclosure in the present application did not render plausible that its teaching indeed solved the problem of providing a synergistic anticancer combination therapy and did not render plausible that this synergistic effect occurred for all the possible combinations covered by claim 1.
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T 1642/07 – Prophets Welcome
K’s Law – The ebook
[20] However, the formulation of the technical problem to be solved as set out by the board is less demanding than the ED’s, since it now only requires that the potentiating effect be additive until synergistic (in other words, “at least additive”) rather than “synergistic” for any combination. Post-published document E7 (this document shows that HSV R1716 + mitomycin C = additive effect in 3/5 cells and synergistic effect in 2/5 cells and that HSV R3616 + cisplatin = additive effect), document E8 (HSV NV1066 + 5-FU or gemcitabine = synergistic effect in 3 cell lines), E13 (HSV NV1020 + 5-FU, SN38 or oxaliplatin = additive up to synergistic effect), document E14 (HSV NV1066 + cisplatin = synergistic effect in 6 cell lines) and document E15 (HSV NV1066 + mitomycin C = synergistic effect in 2 cell lines), submitted by the appellant, illustrate such an “at least additive” effect for all the combinations. Therefore, the dichotomy noted by the ED between the disclosure in the patent application and the technical teaching in post-published documents E7, E8 and E13 to E15 no longer subsists. Rather, the post-published documents can be viewed as being a mere confirmation of the technical effect already announced (albeit at a theoretical level) in the application as filed. [21] The board observes that such a dichotomy arose between, on the one hand, the disclosure in the patent application underlying decision T 1329/04 (lack of the seven cystein residues with their peculiar spacing required for a protein (in that case, GDF-9) to belong to the TGF-beta superfamily – see T 1329/04 [7] – and the lack of functional characterisation of GDF-9 – see ibidem, [9]) and, on the other hand, the teaching in postpublished document D4 that GDF-9 was indeed a growth differentiation factor (see T 1329/04 [12]). Hence, the then competent board concluded that there was not enough evidence in the application as filed to make it at least plausible that a solution had been found to the problem alleged to be solved. [22] In summary, the negative arguments produced by the ED no longer apply to the less demanding problem set out [by the board]. The board sees also no grounds for doubting that the combined administration of HSV and a chemotherapeutic agent inducing DNA damage is able to achieve an increase of the level of cell killing above that seen for a treatment modality alone. Under these circumstances, post-published documents E7, E8 and E23 to E15 can be taken into account. [23] In view of the foregoing, the board concludes that the problem highlighted in point 13 supra has indeed been solved by the claimed subject-matter. The Board then found the claims to be inventive and remitted the case to the ED for further prosecution. To download the whole decision, click here. The file wrapper can be found here.
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T 945/09 – The Patient Who Knew
K’s Law – The ebook
T 945/09 – The Patient Who Knew 29 Nov 2011
The opponent filed an appeal against the decision of the Opposition Division (OD) to reject the opposition. Claim 1 as granted read: Use of taurolidine or taurultam in the manufacture of a solution for preventing or reducing infection and sepsis in or caused by a delivery system for administration of a desired liquid material to a patient or withdrawal of a blood sample from a patient, wherein said solution is employed to fill the system between each said administration or withdrawal so as to act as an antimicrobial seal serving to prevent or reduce said infection and sepsis. Document D3, on which a novelty attack was based, is an article published in the Journal of Parenteral and Enteral Nutrition in 1998, i.e. after the earliest priority date of the patent under consideration (December 23, 1996). This article reported on a previous use of 2% taurolidine solutions to fill catheters).
The OD considered that this use did not destroy the novelty of Claim 1 because it was covered by an implicit obligation of confidentiality. According to the OD, the evidence provided by the opponent was not sufficient to establish that there was no such obligation or that it had been violated. The Board does not come to the same conclusion. [3.1] In one of the alternative embodiments the claimed subject-matter of the patent in suit relates to
the use of taurolidine in the manufacture of a solution for preventing infection and sepsis in a delivery system for administration of a desired liquid material to a patient, wherein said solution is employed to fill the system between each said administration so as to act as an antimicrobial seal serving to prevent said infection and sepsis.
[3.2] Document D3 teaches
the use of taurolidine in the manufacture of a solution […] for preventing infection and sepsis […] in a delivery system for administration of a desired liquid material to a patient […], 1731 | 3398
T 945/09 – The Patient Who Knew
K’s Law – The ebook
wherein said solution is employed to fill the system between each said administration […] serving to prevent said infection and sepsis […].
The person skilled in the art of total parenteral nutrition at the priority date of the patent in suit knows that the catheter lumen must be sealed during times when it is not used for administration of the nutrient, and refers to it as the lock-technique. This seal may be performed using heparin solution as is referred to in document […]. Thus, the remaining feature
so as to act as an antimicrobial seal
is also inevitably comprised in the teaching of document D3. Consequently, the teaching of document D3 in the form of the reported use of taurolidine solution as a lock represents all the features of claim 1 of the patent in suit. [3.3] Concerning the question of when this teaching of taurolidine-lock was performed, and in particular when it began to be performed, there is prima facie the clear-cut normal case that a paper is ready before it is sent to a journal for publication and there is normally no need for substantial amendments after the date of receipt. First there is the record of a success, then the idea and realisation of publication follow. In the current case there is evidence for the particular date of receipt at the bottom of page 242 of document D3, left column: “Received for publication, May 28, 1997”. Since any decision to publish a paper inevitably must lie in the period before its receipt for publication, the authors of document D3 must have decided to publish their experience in the time before May 1997. Following the time frame proposed by the respondent, this would have been just shortly after they had removed the catheter and implemented systemic antibiotic treatment (ten months after March 1996, which was January 1997) stripped of the experience of a further 12 months free of infection. According to these considerations, the board is satisfied that the starting date for the use of the taurolidine-lock can be set at 22 months before the date of receipt for publication, i.e. July 1995. Doubting this normal sequence of actions, under the circumstances of the current case as set out, requires tangible evidence and not just one example of differing experience in another case and statements based on several mere assumptions […]. The maxim “reus in excipiendo fit actor” applies here. The burden is on the respondent to show that the actual facts and their sequence in truth were different. [3.4] In document D3 it is pointed out that “Ten months before the last infection, the patient was instructed to instil 1.5 mL taurolidine 2% daily into his central line after finishing his HPN (home parenteral nutrition) infusion and has continued to do so 2 years to date” (parenthesis inserted by the board). Thus, the teaching according to claim 1 of the patent in suit was used by a patient while having “home parenteral nutrition” (HPN). Such a patient, aged around 30, after his long history of complications leading to multiple replacements of the catheter […] usually knows what is happening to him and he is interested in the nature of all actions intended to bring him relief. In addition, the “evaluation of the patient’s protocol of site care” mentioned in document D3 […] would not have been possible without exact explanation for instance of the purpose of the daily instillation of 1.5 mL of heparin solution. Consequently, it is also to be seen as a prerequisite that the intention connected with the heparin replacement by 1.5 mL of taurolidine solution […] was sufficiently explained to him. In addition, there is no remark in document D3 indicating anything to the contrary. Therefore, the board has to base its considerations and conclusions on the knowledge of the patient being clear and concise enough that he could take notice of the technique used after replacement of heparin-lock by taurolidine-lock, representing the teaching of claim 1 of the patent in suit. There was also no reason for him to treat this knowledge as a secret, because at that time the acting doctors simply tried to apply taurolidine of whatever provenance using a technique they derived freely and easily from the state of the art common to them at that time […]. Obviously, they never saw anything special about that treatment, and consequently there is no indication of confidentiality in document D3. 1732 | 3398
T 945/09 – The Patient Who Knew
K’s Law – The ebook
[3.5] Accordingly, the board concludes that this teaching was performed beginning from July 1995 in the full knowledge of the patient without any obligation of confidentiality and thus was publicly available before the priority date of the patent in suit. [4] In these circumstances the arguments of the respondent cannot lead to success. [4.1] To the extent that the respondent calls for standards for a chain of evidence and arguments on the basis of the balance of probability, the board sees the argumentation of the appellant as being based on an indicative document, whereas the respondent itself tries to establish a chain of evidence and arguments to cast doubt on a document which prima facie appears to be decisive. Thus, the required standards have a priori to be applied to the arguments of the respondent. [4.2] The respondent concludes from the age 29 mentioned at the beginning of document D3 and the following series of episodes of catheter-related bloodstream infections (CRBSIs) and line changes that the letter of authorisation dated 12 March 1996 (document D20b) is related to the same patient mentioned in this letter as “HP” at the age of 30. Since, as reported in documents (12) and (20a), it was the first shipment of taurolidine from the respondent to the Canadian team after a long break, the respondent draws the further conclusion that there were no reserves from the last shipment, and the beginning of the taurolidine treatment of the patient reported in D3 thus could not have started before this shipment of March 1996. Disclosure of document D3 was consistent with this view on the basis of a simple update before printing. But this chain of various indicia, put together from different documents that are not all known in their full context, together with the attempt to establish the identity of the patient through indirect conclusions, is not wellfounded enough to cast doubt on the straightforward starting date of taurolidine-lock treatment of catheterrelated bloodstream infections derived from the disclosure of document D3. In particular, the mere statement that there was an amendment of the text of document D3 is not sufficient to make such an event a reality. [4.3] The fact that the taurolidine-lock treatment at least at the beginning of the last twelve months (“New tunnelled subclavian” from table 1 of document D3) was accompanied by systemic therapy with vancomycin and was maybe in parallel at any time with taurolidine as an additive to the nutritional solution (Ninewell’s method) is irrelevant with respect to the clear intention of the Canadian team to interrupt the pattern of catheter-related bloodstream infections by use of the taurolidine-lock technique. The test was made using the taurolidine-lock and in full awareness of the problems of the patient with regard to repeated sepsis originating from the catheter and with the intention of fighting this problem by using this lock technique […]. Addition of systemic vancomycin occasionally during this episode merely underlines that the lock-technique per se was directed to fight the sepsis originating from the catheter and not systemic sepsis. Finally, document D3 even reports the authors as being convinced of the success of their use of antimicrobial taurolidine-lock with respect to infection being catheter-related […]. [4.4] Since the respondent no longer maintains its argument that a real confidentiality agreement existed between itself as a supplier of taurolidine and the Canadian team as user, and since it merely affirms that confidentiality was inherent, only this inherency is to be assessed, in particular in relation to the decision of a technical board of appeal cited by the respondent (T 1057/92): In the cited decision the acting doctor is held not to be an appropriate witness to state what information was public […]. “… In these circumstances, the Board cannot accept evidence that the person carrying out the trials believed that she was making the results available to the public already when carrying out the trials, and not only later when publishing her paper, as evidence that it was indeed made available to the public at the time of the trials. Just because Dr Hedner knew exactly what trials she was carrying out, she is not the appropriate witness to state what, if anything, was made available to the public as a result of the trials. She was not in the position of a member of the public, and thus could only make conjectures about what knowledge the public might have acquired. The Board thus does not take these trials in the hospital on human patients into account for the purpose of assessing novelty or inventive step.” In the current case, however, it is sufficient that the patient was aware of the treatment he received, and public prior use does not depend on the doctor being a witness. In addition, in the cited decision novelty was discussed with regard to whether a trace of another compound was present or absent (see point [5] of the decision), while in the current case the straightforward use of a compound as such was crucial for assessment of novelty. 1733 | 3398
T 945/09 – The Patient Who Knew
K’s Law – The ebook
Moreover, the action in the Canadian hospital of using the taurolidine-lock was not typical of a clinical or even an experimental approach because it was dictated by the instant necessity to help a patient in a very desperate situation and thus had not been planned systematically as a scientific experiment. [4.5] Thus, the subject-matter of the sole request does not meet the requirements of A 54. To download the whole decision, click here. The file wrapper can be found here. NB: I owe the knowledge of this decision, which had escaped my scrutiny, to the 2011 FNDE meeting in Lyon.
1734 | 3398
T 1605/07 – No Selection
K’s Law – The ebook
T 1605/07 – No Selection 28 Nov 2011
The patent proprietor filed an appeal against the decision of the Opposition Division to revoke the opposed patent. Claim 1 of the main request before the Board read (in English translation): 1. Process for the anodic electro-dipcoating of conducting surfaces by dipping in an aqueous anodic electro-dipcoating bath and connecting up as the anode characterised in that an aqueous anodic electro-dipcoating bath is used that contains 1 to 15 wt. %, referred to the binder solids of the electro-dipcoating bath, of one or more phosphoric acid epoxy esters and/or phosphonic acid epoxy esters with an acid number of 10 to 40 that are obtained by reacting one or more monomeric, oligomeric or polymeric epoxy compound(s) with phosphoric acid or phosphonic acids or their esters or mixtures thereof in the presence of one or more alcohols, chosen from the group consisting of n-butanol, tert.-butanol, sec.-butanol, isopropanol, n-propanol, methanol, ethanol and/or hexanol. The discussion of the novelty of this claim contains some interesting statements on numerical ranges. *** Translation of the German original *** [3.1] The [opponent] has contested the novelty of claim 1 in view of document D1. Document D1 discloses anionic electro-dipcoating compositions containing phosphoric acid epoxy esters obtained by reacting of phosphoric acid with an epoxy resin […]. The reaction is carried out in an organic solvent that is miscible with water, such as acetone, butanol, isopropanol, and similar organic solvents. However, ether alcohols are preferably used […]. Example 1 of document D1 discloses the production of a phosphoric acid epoxy ester in the presence of 2-butoxy ethanol, example 5 a method for the anodic electro-dipcoating of steel panels as the anode, by using an aqueous anodic electro-dipcoating bath containing the phosphoric acid epoxy ester produced in example 1. However, the feature of an acid number of 10 to 40 for the phosphoric acid epoxy ester is not disclosed in document D1. [3.2] The [opponent] submitted that this feature corresponded to a specific selection from the general disclosure of document D1. As such it did not comply with the principles applied by the Boards of appeal in their established case law concerning the novelty of selection inventions. In particular, the selected domain of 10 to 40 was not sufficiently remote from the value of 41.5 mentioned in example 1 of document D1. Moreover, the value would further decrease or even go below the upper limit of 40 if example 1 was carried out with the alcohols isopropanol and butanol, which were suggested in document D1, because, as explained by the [patent proprietor], mixed esters were formed when using the claimed alcohols, to which butanol and isopropanol belonged as well. As a matter of fact, the formation of mixed esters with free hydroxyl groups of phosphoric acid would lead to lower acid numbers. Moreover, there was no evidence for any particular effect related to the selected range of 10 to 40 besides the influence on dispersibility known from document D1. The [opponent] admitted that there was no disclosure of an acid range with exact limits, but he referred to column 4, lines 4 to 14 of D1.
1735 | 3398
T 1605/07 – No Selection
K’s Law – The ebook
In this passage, in the context of binder systems, acid numbers of 12 to 60 were mentioned as preferred values for electro-dipcoating deposition. Admittedly, this domain was disclosed for other compositions but they had acid groups serving the same purpose, i.e. making dispersion possible, very much like the phosphoric acid epoxy esters. Therefore, one might expect the same acid numbers for the phosphoric acid epoxy esters. Therefore, the range selected according to the invention was not a narrow sub-range either. [3.3] The Board does not share the opinion of the [opponent]. As far as the acid number is concerned, document 1 does not disclose a range having a specific upper and lower limit such that the claimed range would constitute a selection. It only discloses one single value of 41.5 in example 1, which is clearly outside the claimed range. Apart from that, document D1 only contains a general statement that the presence of the phosphoric acid (group) leads to a measurable acidity which is or can be advantageous for dispersibility and subsequent curing […] Therefore, the present case does not correspond to the selection of a sub-range of numerical values from a greater range but to the choice of a specific feature, i.e. an acid number of 10 to 40, from a generic disclosure, i.e. a generally disclosed acidity. However, according to the established case law of the Boards of appeal a generic disclosure does not destroy the novelty of the specific disclosure. The acid number range of 12 to 60 in column 4 of document D1 cited by the [patent proprietor] clearly refers to the preferred range of the specific copolymers mentioned therein. There is no indication for a combination of this range with the phosphoric acid epoxy esters. The notion of dispersibility mentioned for both the copolymers and for the phosphoric acid epoxy esters cannot be construed to be such an indication. Copolymers of monomers containing olefinic carboxyl groups and substances carrying hydroxyl groups on the one hand and phosphoric acid epoxy esters on the other hand are completely different classes of substances and, therefore, also have different properties, e.g. a different solvation and dispersion behaviour. The fact that according to document D1 both compound groups are dispersible in water, wherein a certain acidity is apparently advantageous, does not mean that the acid numbers necessarily have to be identical. Therefore, document D1 does not directly and unambiguously disclose a range of acid numbers of 12 to 60 for the phosphoric acid epoxy esters. When transferring the preferred acid number range for copolymers (12-60) to phosphoric acid epoxy esters, the [opponent] makes an a posteriori interpretation of document D1 based on the knowledge of the invention, in order to arrive at a method according to claim 1 of the main request. Concerning the [opponent’s] assertion that when example 1 of document D1 is reworked using the alcohols explicitly mentioned in column 2 (isopropanol and butanol), the reaction product could result in an acid number below 40, it has to be noted that the [opponent], who bears the burden of proof, has not submitted any trials which could corroborate his assertion. He rather relies on assertions of the [patent proprietor], i.e. the alleged formation of mixed esters, but he simultaneously questions them as being unproven. There are no documents available to the Board which would clearly and unambiguously prove that reworking of example 1 with isopropanol or butanol leads to a reaction product having an acid number in the claimed range. Therefore, the assertion of the [opponent] is mere speculation. To download the whole decision (in German), click here. The file wrapper can be found here. 1736 | 3398
T 1245/09 – Ten Years After
K’s Law – The ebook
T 1245/09 – Ten Years After 26 Nov 2011
The opponent filed an appeal after the Opposition Division (OD) had maintained the opposed patent in amended form. In what follows the Board dealt with the admissibility of documents D7, D8, D17, D18, D30 related to a seminar held in 1990, which documents had been filed belatedly during the opposition proceedings. Document D30 was a compilation of documents D7, D17 and D18. The patent proprietor pointed out that it was unknown whether these documents were distributed at the seminar or afterwards. Moreover, it was not known whether the seminar was public and whether the participants were bound by a confidentiality agreement. [2.1] Documents D7, D8, D17, D18, D30 are written disclosures allegedly relating to presentations held in September 1990 at the Stratco 1990 Alkylation Seminar. In the oral proceedings before the Board the [patent proprietor] did not doubt that the documents of the Seminar were distributed to the participants of this seminar. The issue was rather, when this happened, whether the seminar was open to the public and whether the participants were bound to a confidentiality agreement. [2.2] The introduction of document D30 was already refused by the OD given the late stage of the procedure at which the introduction of D30 was proposed. Additionally, the individual parts of this document, i.e. D7, D17 and D18 were already part of the procedure. [2.3] The Board does not see any reasons for deviating from the OD’s view. Even more so, as each of the individual disclosures represents an individual lecture. The fact that they were held by the same lecturer does not necessarily mean that their contents have to be seen in context. On the contrary, in particular D17 appears to be an independent lecture given the structuring and the index of the individual chapters as shown on page 2. Thus, the Board does not introduce D30 into the appeal procedure. [2.4] With regard to the individual documents D7, D8, D17, D18 no proof has been submitted by the [patent proprietor] supporting the allegation that the seminar was not open to the public or that the participants were bound by a confidentiality agreement. It was not denied by the [patent proprietor] that the seminar’s participants received the printout of the written submissions. The only question to be clarified is, whether this happened at the seminar or some time, i.e. a couple of weeks or months later. However, this question is of no relevance for the present appeal, as the seminar took place in September 1990, whereas the priority date of the patent-in-suit is March 2000. Given the length of this period, the skilled person was certainly able to obtain the documents well before the present priority date. [2.5] Given the fact that a confidentiality agreement or restrictions in the participation of the seminar have not been proven and that the priority date of the patent-in-suit is almost ten years after the seminar, documents D7, D8, D17, D18 are considered to have been publicly available at the priority date of the patent-in-suit and to represent state of the art according to A 54(2) EPC (1973). Should you wish to download the whole decision, just click here. The file wrapper can be found here. A French summary has been made available to the public by Laurent Teyssèdre (here).
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T 1523/08 – Not Fresh
K’s Law – The ebook
T 1523/08 – Not Fresh 25 Nov 2011
In this case claim 1 of the patent as granted was attacked on the grounds of lack of novelty and of inventive step; dependent claim 4 only for lack of inventive step. In response to the preliminary opinion expressed by the Opposition Division (OD) the patent proprietor filed a new main request, claim 1 of which was a combination of claims 1 and 4 as granted. The opponent attacked this claim for lack of novelty. The patent proprietor requested the novelty attack not to be admitted as, in the notice of opposition, claim 4 was only attacked for lack of inventive step. The ground of lack of novelty, therefore, was a new ground of opposition. The OD dismissed this request because it could not “detect a new ground for opposition in the contesting of the novelty of claim 1 as the notice of opposition indicated the patent to be attacked in its entirety on lack of novelty as well as inventive step. The OD finally maintained the opposed patent on the basis of the third auxiliary request. The patent proprietor filed an appeal. The main request before the Board was identical to the main request before the OD. The patent proprietor reiterated his argument against the novelty attack. Here is what the Board had to say: [2.1] Novelty as a fresh ground for opposition It is a fact that claim 4 as granted, which has been combined with claim 1 as granted to form claim 1 of the main request, was only objected for lack of inventive step in the notice of opposition. However, lack of novelty as a ground for opposition was raised in the notice of opposition and substantiated e.g. with respect to claim 1. Hence, lack of novelty as a ground for opposition cannot be regarded as a fresh ground for opposition. This is in line with G 10/91 [15-16], in which it is stressed that the grounds for opposition are linked to the “statement pursuant to R 55(c) EPC 1973”, with R 55(c) EPC 1973 requiring the opponent to present an indication of the facts and evidence in support of the grounds for opposition. This means that a ground for opposition raised must be substantiated with facts and evidence, but it cannot be inferred that a ground for opposition raised and substantiated in the notice of opposition with respect to an independent claim - in the present case, claim 1 - but not with respect to a dependent claim - in the present case, claim 4 - will amount to the introduction of a fresh ground for opposition when substantiated for the combination of the independent and the dependent claim - in the present case, the combination of claims 1 and 4 - only later in the proceedings. To download the whole decision, click here. The file wrapper can be found here.
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T 1069/08 – Late Argument
K’s Law – The ebook
T 1069/08 – Late Argument 24 Nov 2011
In this case the opponent filed an appeal after his opposition had been rejected by the Opposition Division (OD). The relevant claims of the patent were directed at a purified or isolated polypeptide capable of desaturating a fatty acid molecule from the carboxyl end of the fatty acid. In his statement of grounds of appeal, the opponent contested the findings of the OD concerning A 100(b) and A 100(a) as regards inventive step. According to him, claim 1 encompassed polypeptides that did not possess the activity of desaturation and, therefore, did not solve the technical problem. The Board found that the ground for opposition under A 100(b) did not prejudice the maintenance of the patent as granted. Moreover, it pointed out that the claims on file contained a functional feature limiting it to polypeptides that were capable of desaturating, which made the opponent’s argument irrelevant. During oral proceedings (OPs) before the Board, held in the absence of the patent proprietors, the opponent argued that the solution to the problem was obvious. The Board refused to discuss this issue: [23] The findings of the examining division in examination proceedings regarding the non-obviousness of the claimed subject-matter were not contested in the opponent’s notice of opposition, nor did the OD consider that there was any reason to examine them of its own motion. Accordingly, the decision under appeal is silent on this issue. This issue was not raised in the appellant’s grounds of appeal which, as regards A 56, contested, only and exclusively, the broad scope of the claims. [24] Indeed, it was only in the board’s communication pursuant to Article 15(1) RPBA that the board, when discussing the issues under A 56, drew the attention of the parties to the examination proceedings and noted that “none of the parties in the present appeal proceedings has explicitly referred to these specific arguments … or to the particular documents introduced into the examination proceedings to support them”. The board further pointed out the relationship between sufficiency of disclosure and inventive step and to the fact that the “same criteria” had to be applied for assessing both the disclosure content of the patent-in-suit and that of the prior art documents. [25] In reply to this communication, the [patent proprietors] vehemently protested against a revision of the examination proceedings. With reference to decision G 9/91, they stated that “none of those facts, evidence and arguments have been put into the present proceedings, since they were, and are, irrelevant to the parameters of the opposition established by the parties to this opposition”. [26] In its reply, the appellant argued that “making an argument of lack of inventive step of the claims based on the teaching of D1 is not a new ground, and this does not contravene the procedural requirements of the EPC” because document “D1 has since the beginning of these proceedings always been considered as the closest prior art by the opponent”. [27] Apart from this statement of the appellant, no other submissions were made in appeal and in opposition proceedings on the obviousness – or lack thereof – of the claimed subject-matter. It was only at the OPs that the appellant requested the board to have the opportunity to present its arguments on this issue. [28] This request was not allowed by the board for the following reasons: [28.1] According to Article 12(2) RPBA, the statement of grounds of appeal shall contain a party’s complete case and specify expressly all the facts, arguments and evidence relied on. Article 13(1) RPBA states that any amendment to a party’s case after it has filed its grounds of appeal may be admitted and considered at the board’s discretion.
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T 1069/08 – Late Argument
K’s Law – The ebook
In the present case, the appellant’s statement of grounds of appeal did not include any argument regarding the obviousness of the claimed subject-matter. Hence, the introduction of this new argument at OPs would represent an amendment to the appellant’s case. It is thus at the board’s discretion to admit and consider it. [28.2] Article 13(1) RPBA states that this discretion shall be exercised in view of, inter alia, the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. In the present case, the appellant failed to submit the new argument at an early stage of the appeal proceedings. Even after the board’s communication in which reference was made to the examination proceedings and to the relationship between sufficiency of disclosure and inventive step (cf. point [24] supra), the appellant did not consider it necessary to introduce the new argument into the appeal proceedings but only referred, in very general terms, to its right to raise an objection for lack of inventive step based on document D1 (cf. point [26] supra). OPs in appeal are usually, if not always, the latest stage of appeal proceedings and thus, facts, arguments and evidence submitted at that stage are usually considered to be late. [28.3] The appellant argued that the new argument at OPs was a direct reaction to the board’s reasoning when arriving at its opinion on A 100(b) in the OPs. No other reasons were provided to justify the introduction of this argument at such a late stage of the appeal proceedings. In the light of the content of the board’s communication pursuant to Article 15(1) RPBA, the board’s reasoning when arriving at its opinion on A 100(b) in the OPs cannot be considered to have come as a surprise to the appellant. It was in this communication that the board addressed the relationship between sufficiency of disclosure and inventive step and pointed to the use of the “same criteria” for both articles (cf. point [24] supra). The appellant could, and indeed should, have considered that the board could reach the same conclusion as the OD as regards A 100(b) and, if it wished the board to consider a new argument to establish inventive step based on the use of the “same criteria” in both A 83 and A 56 and/or on the obviousness of the claimed subject-matter, it should have set out this argument, at the very latest, in its reply to the communication of the board. [28.4] This was all the more so in view of the [patent proprietors’] protest in their reply to the board’s communication, in which they also announced their intention not to attend the OPs […]. It was in the appellant’s interest to submit all new facts, arguments and evidence as soon as possible, and certainly before the OPs, so as to avoid the possible risk of taking aback the [patent proprietors] and/or the board, and thereby compelling the board to adjourn the OPs or to disregard these new facts, arguments and/or evidence. [28.5] Indeed, the appellant’s failure to submit the new argument in reply to the board’s communication deprived the [patent proprietors] of the opportunity to present their comments thereon and/or of the opportunity to reconsider their intention not to attend the OPs. The introduction of this new argument at OPs – in the absence of the [patent proprietors] – could well raise the question whether the board could arrive at a decision without violating the [patent proprietors’] right to be heard (A 113(1)) or, in order to avoid it, to adjourn the OPs. [28.6] In this regard, Article 13(3) RPBA states that amendments sought to be made after OPs have been arranged shall not be admitted if they raise issues which the board or the other party cannot reasonably be expected to deal with without adjournment of the OPs. This is in line with the need for procedural economy referred to in Article 13(1) RPBA for the board to exercise its discretion (cf. point [28.2] supra). In view of the submissions made by the parties during the written phase of the appeal proceedings, the board was convinced that the introduction at OPs of the appellant’s new argument - with or without reference to all the evidence submitted at the examination proceedings - certainly went against the need for procedural economy and it could well require the adjournment of OPs. [28.7] Thus, the board in the exercise of its discretion did not admit the appellant’s request to have an opportunity to present its arguments on the obviousness of the claimed subject-matter at the OPs. [29] Having considered the arguments put forward by the appellant, the board is not persuaded that the subjectmatter of the claims as granted lacks inventive step within the meaning of A 56. Thus, the ground for opposition under A 100(a) does not prejudice the maintenance of the patent as granted. […] The appeal is dismissed. To download the whole decision, click here. The file wrapper can be found here. 1740 | 3398
T 1069/08 – Late Argument
K’s Law – The ebook
NB : A good French summary is available on Le blog du droit européen des brevets.
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T 1508/08 – Correctional Facilities
K’s Law – The ebook
T 1508/08 – Correctional Facilities 23 Nov 2011
As we have seen in an earlier post, drafters of applications dealing with monomers and polymers have to be careful because it is easy to mix up these terms … and difficult to correct the resulting errors. The present appeal was filed after the Opposition Division (OD) had revoked the opposed patent. The decision in itself is not very surprising but it reminds us of the rules that govern corrections. Claims 1, 7 and 9 of the patent as filed read (in English translation): 1. A process for the production of conducting wires coated with cross-linked polyethylene, in which process a granulate made of polyethylene is coated with a fluid cross-linking agent, the coated granulate is melted in an extruder and extruded onto the electrical conducting wire, and the extruded layer is cross-linked by heating to a temperature above the decomposition temperature of the cross-linking agent, characterized in that a mixture of granulate, meal, or powder made of a polyethylene homopolymer and a polyethylene copolymer is coated together with the cross-linking agent and stabilizer, wherein the portion of copolymer in the coating on the cable is between 1 and 8% by weight. 7. A process according to claim 1 to 6, characterized in that a polyethylene copolymer having a portion of copolymer of over 16% is used. 9. A process according to any one of claims 1 to 8, characterized in that ethylene vinyl acetate (EVA), ethylene butyl acrylate (EBA), ethylene ethyl acrylate (EEA), and/or ethylene methyl acrylate (EMA), with a portion of copolymer being from 10 to 30% by weight, is used as polyethylene copolymer. (my emphasis) Claim 1 of the main request before the Board read (in English translation): 1. A process for the production of a cable consisting in conducting wire coated with crosslinked polyethylene, in which process a granulate made of polyethylene is coated with a fluid cross-linking agent, the coated granulate is melted in an extruder and extruded onto the electrical conducting wire, and the extruded layer is cross-linked by heating to a temperature above the decomposition temperature of the cross-linking agent, characterized in that a granulate, meal, or powder made of a polyethylene homopolymer and a polyethylene copolymer is mixed together in a tumbler mixer at an elevated temperature, which temperature is below the melting point of the polyethylene homopolymer and/or polyethylene copolymer and is simultaneously coated with a fluid mixture of cross-linking agent and stabilizer, wherein the polyethylene copolymer is chosen from among ethylene vinyl acetate (EVA), ethylene butyl acrylate (EBA), ethylene ethyl acrylate (EEA), and/or ethylene methyl acrylate (EMA), with a portion of comonomer from 10 to 30% by weight, and wherein the portion of comonomer in the coating on the cable is between 1 and 8% by weight. (my emphasis) *** Translation of the German original *** [3.1] The parties did not agree on whether the comonomer portion mentioned in claims 1 to 4 and 7 of the main request complied with the requirements of A 123(2). The passages of claims 1 to 4 and 7 of the main request read (emphasis by the Board):
“wherein the portion of comonomer in the coating on the cable is between 1 and 8% by weight” (claims 1 to 4) “wherein the polyethylene copolymer is chosen from among ethylene vinyl acetate (EVA), ethylene butyl acrylate (EBA), ethylene ethyl acrylate (EEA), and/or ethylene methyl acrylate (EMA), with a portion of comonomer from 10 to 30% by weight” (claims 1 to 4) “a polyethylene copolymer having a portion of comonomer of above 16% by weight” (claim 7).
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T 1508/08 – Correctional Facilities
K’s Law – The ebook
[3.2] These passages are derived from the following passages of original claims 1, 7 and 9 (emphasis by the Board):
“wherein the portion of copolymer in the coating on the cable is between 1 and 8% by weight” (original claim 1) “wherein ethylene vinyl acetate (EVA), ethylene butyl acrylate (EBA), ethylene ethyl acrylate (EEA), and/or ethylene methyl acrylate (EMA), with a portion of copolymer from 10 to 30% by weight are used as polyethylene copolymer” (original claim 9) “a polyethylene copolymer having a portion of copolymer of above 16% by weight” (original claim 7).
The passages of the original claims 1, 7, and 9 do not disclose a portion of comonomer but exclusively refer to a portion of copolymer (see emphasis by the Board). Also, the rest of the application as originally filed exclusively refers to portions of copolymers, wherein the following is disclosed:
“The essential advantage of the invention can be seen in that by the use of a mixture of polyethylene homopolymer and polyethylene copolymer with a limited amount of copolymer, the resistance of the cable insulation to the formation of water trees can be significantly increased.” (last paragraph of page 2) Coating of a wire with a mixture of 20 parts of polyethylene copolymer, 80 parts of LDPE (polyethylene homopolymer), 2 parts of dicumyl peroxide and 0.2 parts of stabilizer, corresponding to a portion of polyethylene copolymer of 19.6%, based on the mix used for coating (Examples 1 and 2). Coating of a wire with a mixture of 20 parts of polyethylene copolymer, 80 parts of LDPE (polyethylene homopolymer) and an undefined quantity of highly concentrated peroxide/stabilizer batch based on polymers (Example 3).
The application as originally filed, therefore, does not directly disclose the comonomer portions claimed in claims 1 to 4 and 7 of the main request. [3.3] According to the [patent proprietor], the comonomer portions of claims 1 to 4 and 7 are obtained when the expression “portion of copolymer” in claims 1, 7, and 9 as originally filed is corrected to read “portion of comonomer”. This correction was allowable pursuant to R 139. As mentioned in G 3/89 [2] the requirements for allowing a correction consist in that (a) the incorrect information is objectively recognisable as such for the skilled person, and (b) the correction that is carried out must correspond to the only possible correction which the skilled person would consider on the basis of the original disclosure of the opposed patent and his common general knowledge. [3.4] As far as the first requirement is concerned, the Board agrees with the [patent proprietor] that the indications regarding the copolymer portions are contradictory in the application as filed. For instance, there is a contradiction between the portion of copolymer between 1 and 8% by weight in the coating according to original claim 1 and the portion of polyethylene copolymer of 19.6%, based on the mix used for coating in Examples 1 and 2. Moreover, there is a discrepancy between the portion of copolymer between 1 and 8% by weight in the coating mentioned in original claim 1 and the portions of copolymer above 16% from 10 to 30% by weight disclosed in claims 7 and 9. Finally, claims 7 and 9 of the application as originally filed are contradictory to each other because claim 7 requires a portion of copolymer of above 16% by weight whereas claim 9, which is dependent on claim 7, also appears to allow portions of copolymer that are below 16%. Also, the wording of claims 7 and 9 of the application as originally filed “polyethylene copolymer having a portion of copolymer …” is objectively incorrect because a copolymer does not contain a portion of copolymer. Therefore, the Board agrees with the [patent proprietor] that based on the whole disclosure of the originally filed application, it is obvious for the skilled person that the portions of copolymer mentioned in original claims 1, 7 and 9 are defective. Thus the first requirement for allowing a correction pursuant to A 139, as expressed in G 3/89, is fulfilled. [3.5] On closer inspection, in order for the second requirement (b) mentioned in G 3/89 to be fulfilled, two things are required, i.e. that the skilled person, on the basis of the original disclosure of the opposed patent and taking into account his common general knowledge, 1743 | 3398
T 1508/08 – Correctional Facilities
K’s Law – The ebook
would consider the correction that has been carried out, and, if so, would consider it to be the sole conceivable (in Frage kommend) correction.
[3.5.1] The Board will first examine whether the skilled person would consider the correction of the expression “portion of copolymer” to “portion of comonomer” […]. According to the [patent proprietor] it is clear for the skilled person that the desired effect of increasing the resistance to the formation of water trees [mentioned] on the last paragraph of page 2 of the originally filed application, can be obtained by limiting the portion of comonomer but not by limiting the portion of copolymer, as stated in this paragraph. If this view was to be adopted, then one would expect the relevant portion of comonomer that is needed to obtain the desired effect to be given in the examples of the application – in the form of the erroneously used expression “portion of copolymer”. However, this is not the case. Quite to the contrary, the examples only contain indications regarding the content of copolymer (“20 parts of polyethylene copolymer” in Example 1 and “20 parts of PE copolymer” in Example 3) but do not make any statement of the comonomer contained therein, let alone its portion. Thus, based on the original disclosure, and contrary to the arguments of the [patent proprietor], one has to assume that it is the portion of copolymer, and precisely not the portion of comonomer, that is relevant for obtaining the effect the application aims at. For this reason alone the skilled persons would not take into account the correction carried out by the [patent proprietor]. Moreover, this correction […] does not resolve the lack of clarity regarding the portions of copolymer in the application as originally filed in a technically meaningful way, as claimed by the [patent proprietor] […]. The correction of claim 7 leads to a portion of comonomer of above 16%, whereas corrected claim 9, which depends on claim 7, allows for portions of comonomer below 16%. Moreover, it is not clear whether the comonomers contained in LLDPE and VLLDPE are deemed to contribute to the portion of comonomers or if they may not be taken into account, because, according to original claim 8, LLDPE and VLLDPE are homopolymers, i.e. free from comonomers. Finally, it is not clear whether the polyethylene copolymers used in the examples have a portion of comonomer according to the claim and whether, therefore, the examples are consistent with the claims as corrected. Therefore, in this context, the Board cannot share the opinion of the [patent proprietor] according to which the portion of comonomer of the polyethylene copolymer in the examples is between 10 and 30% by weight, as indicated in original claim 9, because original claim 9 is a dependent claim and the portion of copolymer mentioned therein is not to be considered as an essential feature, i.e. a feature that is necessarily present in the examples. Therefore, notwithstanding the correction, not only are there unresolved unclear issues, but there are even new ones added. For this reason also the skilled person would not consider the correction that has been made by the [patent proprietor]. [3.5.2] But even if one assumes, in favour of the [patent proprietor] that the skilled person would have considered the correction made by the [patent proprietor], this correction would not be the only possible correction. For instance, the skilled person could keep the portion of copolymer of between 1 and 8% by weight mentioned in claim 1 and only correct the portions of copolymer mentioned in claims 7 and 9. Such a correction would indeed resolve the lack of compatibility between the portion of copolymer in claim 1 on the one hand and the one of claims 7 and 9 on the other hand and eliminate the objectively incorrect wording “polyethylene copolymer having a portion of copolymer …” in those claims. As an alternative, the skilled person could keep all the portions of copolymer in the application and only insert the expression “…, based on the polymer mix” after the indication of the portions of copolymers. This would at least eliminate the objective incorrectness in claims 7 and 9 because then the portion of copolymer mentioned in those claims is not a portion of copolymer of the copolymer but of the polymer mix. Moreover, this would eliminate the contradiction between original claims 7 and 9 on the one hand and the examples on the other hand because then the portions of copolymer of the examples would then be encompassed by the ranges required in claims 7 and 9. Finally, the claims amended accordingly would be consistent with the last paragraph of page 2 of the description, which deals with the essential character of the portion of copolymer.
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T 1508/08 – Correctional Facilities
K’s Law – The ebook
[3.5.3] Summing up, it can be said that the correction carried out by the [patent proprietor] would not be considered by the skilled person for the original claims 1, 7, and 9 and, if at all, would only be one of at least three conceivable corrections. Thus the second requirement (b) for allowing a correction pursuant to R 139 is not fulfilled. [3.6] The amendment of the expression “portion of copolymer” to “portion of comonomer” in the claims of the main request is not based on a correction that can be allowed pursuant to R 139. Therefore, this correction violates the requirements of A 123(2). During the oral proceedings before the Board, the patent proprietor also filed auxiliary requests wherein the correction was retracted. The Board considered these requests, which had been withdrawn beforehand, to be new requests and refused to admit them into the proceedings: [4.3.4] Summing up, it can be said that the [patent proprietor], by filing the new auxiliary requests, not only contradicts all his prior submissions, but also revives objections which had long been overcome by the preceding requests, at the latest possible moment of the appeal proceedings. The Board is of the opinion that this way of proceeding comes very close to an abuse of proceedings and, irrespective of that, in any case, does not comply with the requirement of procedural economy. The appeal was dismissed. To download the whole decision (in German), click here. The file wrapper can be found here.
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T 7/07 – Fatal Yasmin
K’s Law – The ebook
T 7/07 – Fatal Yasmin 22 Nov 2011
The opponent filed an appeal after the Opposition Division had rejected the opposition. There were several third party observations (A 115) pointing out that the claimed subject-matter had been made publicly available through clinical trials of the oral contraceptive Yasmin® carried out between 1996 and 1998. There also was an intervention (A 105) following the institution of infringement proceedings in Lithuania. Unsurprisingly, this intervention was found not to be admissible. In what follows, the Board discusses the question of whether the clinical trials are novelty-destroying for the claims under consideration: [3.1] In April 2008 a third party, Stragen Pharma, submitted a copy of a judgement by the United States District Court for the District of New Jersey dated 3 March 2008 […]. The judgement concerns the validity of US Patent No. 6 787 531, that corresponds to the patent in suit in the present appeal. The third party claims inter alia that claims 1-5 and 16-19 lack novelty over a prior use reflected in the US decision, namely the conduct of clinical trials with contraceptives containing the composition claimed in the patent in suit in the present appeal. These trials took place in the US between December 1996 and July 1998, i.e. before the priority date of the contested patent (31 August 1999). The participants were informed of the ingredients but had not signed a confidentiality agreement, and not all unused drugs had been returned. The third party claimed that as a result the drugs had become publicly available. [3.2] During the oral proceedings the [opponent] argued for the first time that the trials mentioned in the US decision establish a novelty-destroying public prior use. Although these arguments were brought forward at a very late stage, they are nevertheless admitted by the board as the allegation of a novelty-destroying prior use does not amount to a new ground for opposition, was as a result of the third-party observations known since April 2008, and has prompted the [patent proprietor] to present counter-arguments in its written submissions. [3.3] The [patent proprietor] did not contest that clinical trials were carried out prior to the priority date and that the principal investigators but not the participants entered into confidentiality agreements. The participants were informed about the active agents of the contraceptive, but were not told that the drospirenone was present in micronised form. Nor did the [patent proprietor] contest that the oral contraceptive used for the study comprised all the features of the subject-matter according to claim 1. It is established board of appeal case law that if a single member of the public, who is not under an obligation to maintain secrecy, has the theoretical possibility to access particular information, this information is considered as being available to the public within the meaning of A 54(2). The [patent proprietor] argued that the drug had not become publicly available before the priority date as according to established board of appeal case law any persons involved in clinical trials are (implicitly) bound to confidentiality. The board does not agree with the [patent proprietor’s] interpretation of the case law. Both decisions cited by the [patent proprietor] (T 152/03 and T 906/01) concern prototype devices that were to be implanted in a small number of patients. Therefore, even if the patients did not sign a confidentiality agreement, they would not have been in a position to pass the prototypes on or even inspect them themselves. Such trials are to be distinguished from trials where a large number of patients are given tablets to take home with them and for use over a longer period of time. It has been acknowledged by the US court that not all of the unused study drugs were returned. Therefore, it appears that after having handed out the drugs the [patent proprietor] effectively lost control over them as the participants in the clinical trials were in no way barred from disposing of the drugs as they wanted. In view of these circumstances, the board comes to the conclusion that the handing out of the drugs to the participants made them became (sic) publicly available. 1746 | 3398
T 7/07 – Fatal Yasmin
K’s Law – The ebook
[3.4] The [patent proprietor] has also argued that the participants could not be bound by confidentiality as this would have been “unethical”. The US court had established that it would have been unethical to bind patients by confidentiality provisions as they should have been in a position to discuss the medication with their spouses and doctors. The board has difficulties in reconciling this argument with the argument that there was an implicit secrecy agreement. Either there was an implicit secrecy agreement or there was not. The finding of the US court rather confirms that there was indeed no obligation of confidentiality. Nor can the line of argument that it would have been unethical to have asked the participants to sign a secrecy agreement lead to a conclusion other than that the drugs had become publicly available before the priority date. If a product has become publicly available, it is irrelevant why it has so unless one of the exceptions in A 55(1) applies which is not the case here. [3.5] A further argument brought forward by the [patent proprietor] is that the clinical trials were to be classified as “trade secrets” within the meaning of Article 39 TRIPS. While the TRIPS agreement is not binding on the EPO, it is an element that can be taken into consideration when interpreting provisions of the EPC which admit of different interpretations (G 2/02 and G 3/02). The [patent proprietor] has not stated which provision of the EPC is so ambiguous that an interpretation in the light of TRIPS would be appropriate. Even if the TRIPS agreement were applicable, the purpose of its Article 39 is to clarify the obligation of WTO members under Article 10bis of the Paris Convention to provide for protection against unfair competition. Article 39, paragraph 2, TRIPS merely states that “Natural and legal persons shall have the possibility of preventing information lawfully within their control from being disclosed to, acquired by, or used by others without their consent in a manner contrary to honest commercial practices…”. This means that national authorities should allow natural and legal persons to keep particular information secret. In the present appeal the [patent proprietor] was in a position to keep information secret, but decided to distribute the product to selected members of the public before it had secured patent protection. Under Article 39, paragraph 3, TRIPS, the authorities of WTO members are obliged to keep information submitted to them confidential. This provision too is of no relevance for the present case as the prior use does not concern the disclosure of information by a national authority. [3.6] As the oral contraceptive used for the clinical trials was publicly available before the effective filing date of the contested patent and as the assertion that it comprises all the features of claim 1 of the main request was not contested by the [patent proprietor], it remains to be examined whether the skilled person was in a position to analyse its content and structure. In particular, it has to be evaluated whether he was able to determine the micronized state of drospirenone, which is an item of information that was not communicated to the women participating in the clinical trials. According to G 1/92, the chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition (see [headnote 1]). If it is possible for the skilled person to discover the composition or the internal structure of a product and to reproduce it without undue burden, then both the product and its composition or internal structure become state of the art (see point [1.4]). The Enlarged Board emphasises that there is no support in the EPC that the public should have particular reasons for analysing a product put on the market in order to identify its composition or internal structure (see point [2]). This means for the present case that, in order for the oral contraceptive used in the clinical trials to be publicly available, the skilled person does not need any motivation for investigating the micronized structure of drospirenone. The only question is whether he is able to analyse the structure and composition of the product without undue burden. Regarding the composition of the prior use, the board notes that it belongs to the general knowledge of the skilled person to identify the active agents drospirenone and ethinylestradiol and to determine their concentrations within the tablet. This has not been contested by the [patent proprietor]. On the contrary, the [patent proprietor] has even acknowledged that this information had been passed on to the women participating in the clinical trials. Moreover, it does not require inventive skill to identify at least one excipient.
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T 7/07 – Fatal Yasmin
K’s Law – The ebook
However, there was a long discussion at the oral proceedings as to whether it was possible to determine the micronized structure of drospirenone which had undergone a compression step during tablet formation. The [patent proprietor] argued that in principle such an analysis was possible via Raman spectroscopy. However, a large number of samples were necessary in order to calibrate the system. As the number of unreturned samples of the clinical trials was not known, there was no guarantee that the skilled person would have sufficient material for analysing the particle size of drospirenone. The board cannot agree with this argumentation. As was correctly pointed out by the [opponent], it is not necessary to take tablets from the clinical studies for calibrating the system. This can also be done by using a different material. Once the system is calibrated, a single tablet from the clinical studies should be sufficient for determining the particle size of drospirenone. The [patent proprietor] further argued that the contraceptive used for the clinical trials comprised 21 hormonecontaining tablets and 7 placebos. As a consequence, it was not certain that the unreturned samples contained any drospirenone at all. This argument is not convincing either, for the following reason: in view of the fact that the women participating in the clinical trials were not bound to secrecy, the public availability of the prior use was not restricted to the unreturned samples but included all the tablets handed out to them. As the tablets and placebos were not randomly administered but follow a well-defined distribution scheme (e.g. 21 hormone containing tablets followed by 7 placebos), the participants had to be able to identify the two types of tablets. The skilled person therefore had no problems in selecting the hormone-containing specimens for his analysis. As a consequence, it was possible for the skilled person to discover the composition or the internal structure of the product Yasmin® used in the clinical trials mentioned above and to reproduce it without undue burden. The subject-matter of claim 1 of the main request therefore does not meet the requirements of A 54. To download the whole decision, click here. The file wrapper can be found here. NB: Le blog du droit européen des brevets provides a French summary (here).
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T 781/08 – No Clues Needed
K’s Law – The ebook
T 781/08 – No Clues Needed 21 Nov 2011
When parties to opposition and appeal proceedings find opinions in the reasons for the decision which they would have liked to comment upon, they sometimes feel tricked and get in a lather. So the Enlarged Board has made clear (for instance in R 15/10) that the Boards do not have to indicate their opinion before taking a decision. This principle also holds true for first instance decisions, as the present case shows. Here the Board dismissed the opponent’s appeal against the decision of the Opposition Division (OD) to reject the opposition. As a consequence, it also refused his request for reimbursement of the appeal fee. The request for remittal was also refused, for the following reasons: [3.2] The board also considered the question of whether the alleged violation was a substantial procedural violation justifying the remittal of the case to the department of first instance pursuant to Article 11 RPBA. The appellant argued that its right to be heard (A 113(1)) had been violated because the OD did not inform the parties of its evaluation of the patent proprietor’s arguments prior to issuing the decision, even though a request for a written statement had been made by the appellant (then opponent). [3.3] The board sees no procedural violation in the mere fact that the OD did not inform the opponent of its evaluation of the patent proprietor’s arguments prior to its decision. As stated explicitly in T 774/97 [2], A 113 requires that a decision should only be made on grounds on which the parties have had an opportunity to comment. If this opportunity is given by the written submissions from the parties without a communication from the OD there is no obligation to issue such a communication, even if a party requests one. In the present case the appellant has objected that it did not have an opportunity to elaborate on the reasons given in the notice of opposition because it had not had an opportunity to respond to the OD’s perception of the case. However, contrary to what the appellant has alleged, the board cannot see that it was taken by surprise by the reasoning on which the decision was based, which in essence accepts the patentee’s counterarguments. It is the responsibility of each party to present its arguments and counterarguments, bearing in mind that the purpose of any communication from the OD is merely to facilitate, and if necessary, to streamline, the discussion of the case. The absence of a communication in these circumstances does not amount to a procedural violation. [3.4] The appellant argued that in accordance with decision T 849/03, taken by this board in a different composition, the right to be heard is not only violated if the grounds of a decision are not transmitted to the opponent prior to the decision, but also if the opponent cannot, at the given point of time, expect such a decision. The appellant submitted that after having requested a preliminary opinion of the OD and after a delay of three years after the patentee had filed its observations on the opposition, the decision of the OD could only be described as surprising. The board does not accept this argument. In case T 849/03, which was ex parte, the examining division issued a decision after informing the applicant that they intended to call oral proceedings (OPs) as a second and final action if after the applicant’s response they did not find the case allowable. However, instead of appointing OPs the application was refused. The board considered that this was a substantial procedural violation as the appellant could have expected the examining division to summon to OPs as announced. In the present case, no OPs were requested by the opponent nor were they conditionally announced by the OD. The argument of the opponent with respect to a lack of inventive step in the subject-matter of claim 1 of the patent based on D1 and the common general knowledge, was answered in the patentee’s first response in particular as regards feature 7. The appellant thus had ample opportunity to submit further observations after having received the patentee’s response. The OD by basing its decision on the written submissions of the parties did not go beyond the factual and legal framework determined by these submissions. Therefore, the appellant cannot claim that the content of the decision of the OD was surprising. [3.5] For these reasons, the decision of the OD complies with the requirements of A 113(1). 1749 | 3398
T 781/08 – No Clues Needed
K’s Law – The ebook
To download the whole decision, click here. The file wrapper can be found here.
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T 715/09 – Classy
K’s Law – The ebook
T 715/09 – Classy 19 Nov 2011
The inventive step assessment carried out in this decision contains an interesting statement on patent classification. The Opposition Division maintained the opposed patent in amended form. Claim 1 of the request found allowable read as follows : A glow plug for diesel engines, comprising:
a metal tubular body (12) provided with means (14) for fixing it to the cylinder head of an engine; a metal sheath (24) carried by a the tubular body (12) and driven with interference into a cavity (16) of the tubular body; a first electrical terminal (30) connected to a heating resistor (33) set inside the aforesaid sheath (24); a second electrical terminal (32) electrically connected to the sheath (24); and means for electrical insulation of the metal sheath (24) from the metal tubular body (12), wherein said sheath (24) comprises a layer (36) of insulating material applied on a portion (34) of the outer surface of said sheath (24),
characterized in that said layer (36) of insulating material is applied by means of plasma deposition. The Board examined whether this claim involved an inventive step : [4.2.4] The claimed glow plug differs from the embodiment shown in Figure 4 of E3 only that the coating of insulating material has been applied by plasma deposition.
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T 715/09 – Classy
K’s Law – The ebook
Objective Problem [4.3] E3 simply states that the insulation is formed by a ceramic coating and no indication is given as to how the coating is to be applied […]. The objective problem to be solved is therefore, as formulated by the [opponent], to select a suitable method for coating the metal sheath, bearing in mind that the coating lies between two parts that are held together by means of an interference fit. Solution [4.4.1] Plasma deposition is a generally well known technique for coating objects with a ceramic layer that is hard and wear resistant, but the question is whether it is obvious to use plasma deposition for applying the insulating coating as described in E3. Documents E7, E8 and E9 all describe the manufacture of glow plugs in which a ceramic coating step carried out by plasma deposition.
[4.4.2] E7 discloses a glow plug having a metal sheath (17) and a tubular body (11) that corresponds to tubular body (12) of the disputed patent. The metal sheath (17) extends beyond tubular body (11), and in this region it is coated with two insulation layers (23 and 27); a heating element (24) is sandwiched between these layers. These insulation layers are applied by plasma deposition. Hence plasma deposition is known for coating the metal sheath, albeit not in the region between the metal sheath and the tubular body which, as pointed out by the [patent proprietor], is coated with glass. [4.4.3] E8 also concerns a glow plug and describes coating the plug by plasma deposition with a protective layer to protect the plug from the corrosive environment. Use of such a coating to form an insulating layer between a metal tubular body and a sheath is not described.
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T 715/09 – Classy
K’s Law – The ebook
[4.4.4] E9 describes the application of a coating (20) by plasma deposition to the surface of a glow plug (see last paragraph on page 5). The coating (20) is porous and is intended to reduce the effects of thermal gradients (see sentence bridging pages 4 and 5); it is applied on top of a dense, abrasive resistant, insulating coating (13); it is not said how the latter coating (13) is applied. [4.4.5] The skilled person reading E3 is looking for a means for applying the insulating coating. None of the documents E7, E8 or E9 explicitly discloses plasma deposition of an insulating coating in the region between the tubular body and sheath of a glow plug, hence the opposition division concluded that the claimed subject-matter had an inventive step. [4.4.6] In addition, the [patent proprietor] submits that the skilled person versed in the art of glow plugs would not, as part of his common knowledge, be aware of plasma deposition technology. Support for this submission is that glow plugs and surface treatment techniques are in two completely different classes according to the international patent classification scheme, namely F23Q7/00 and C23C respectively. The Board disagrees for the following reasons. IPC classification alone is no reason for determining whether or not two pieces of prior art can be combined. The mere fact that two documents have the same classification is no reason for saying the combination of the teachings is obvious (see T 745/92 [1.4]). Likewise the mere fact that the technologies have been given different IPC classes does not necessarily mean that they cannot be combined. [4.4.7] In the present case E7 to E9 indicate that it is well known to use plasma deposition in the manufacture of glow plugs. Faced with the problem of finding a suitable method for applying the insulation coating shown in Figure 4 of E3, the skilled person would first turn to known methods in the field of glow plug manufacture. Aware that plasma deposition generally provides hard, wear resistant ceramic coatings, it does not require any inventive activity for the skilled person to select this technique for making the glow plug of Figure 4 of E3. [4.5] Consequently, the glow plug of claim 1 lacks an inventive step. Should you wish to download the whole decision, just click here. The file wrapper can be found here. Another decision dealing with classification can be found here.
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R 3/10 – A Misunderstanding
K’s Law – The ebook
R 3/10 – A Misunderstanding 18 Nov 2011
Oops, they did it again: another petition for review has been granted! The patent proprietor filed a petition for review after Board 3.2.04 had revoked his patent in decision T 136/09. He complained that he had not had an opportunity to comment on inventive step during the OPs that led to the revocation for lack of inventive step. The Enlarged Board (EBA) found the petition to be sufficiently reasoned and to comply with R 106. It then dealt with the allowability of the petition: [2.1] It is undisputed by the parties that the discussion of the main request in the oral proceedings (OPs) only turned on novelty. The course of the discussion was that the representative of the opponents was invited to speak first. He presented his arguments against the novelty of the main request. When he had done so, the representative of the petitioner was invited to respond. He explained why he thought the main request was novel. The questions raised by the Board only concerned aspects related to the issue of novelty. It is, furthermore, undisputed that when thereafter closing the debate, the Chairman indicated that the Board would decide on patentability. [2.2] The petitioner’s submission is that, when the Chairman closed the debate, in the circumstances of the case the petitioner had no reason to assume that the Board would decide on more than had been discussed so far orally, which was only whether the main request was novel. [2.3] In the signed declarations of the persons who attended the OPs before the Technical Board on behalf of the petitioner it is indicated that the Chairman opened the discussion by stating that the Board would like to discuss novelty, but that in the opening remarks the Chairman gave no indication that novelty and inventive step were to be discussed together. Furthermore, when closing the debate after the parties’ submissions on novelty, the Chairman stated “that the Board will decide on patentability” but nothing was specifically or explicitly mentioned about the Board’s intention to decide on both novelty and inventive step of the main request. [2.4] In the minutes of the OPs one of the reasons given for dismissing the objection raised by the proprietor (after the announcement of the decision concerning the main request) is: “The objection was dismissed by the Board, by pointing out that before the closing of the debate on the main request, the Chairman has explicitly stated that the Board will decide on both novelty and inventive step, …”. There is, however, no direct entry in the minutes stating that before closing the debate the Board had informed the parties that the Board will decide on both novelty and inventive step. In point 2 of the reasons for rejecting the request for correction of the minutes, which were issued in close temporal connection with the OPs, the circumstances in question are described in a different manner. It is said therein, “Further, the Board is of the firm opinion that the Chairman indeed expressly stated that the issue of patentability will turn on both novelty and inventive step. This statement was made not only before closing the debate, but also at the commencement of the debate concerning the main request.” It emerges from the terminology used that these remarks mainly refer to what was said at the commencement of the debate. The expression “patentability will turn on novelty and inventive step” makes no sense as a statement made after the discussion with the parties, when closing the debate. [2.5] More importantly, however, the statement that the issue of patentability will turn on both novelty and inventive step cannot on an objective view be understood as meaning that novelty and inventive step were to be discussed and decided together. It can in fact mean no more than it says - that both issues are to be discussed and decided. Neither in the minutes nor in the reasons for rejecting the petitioner’s request for correction is it stated
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R 3/10 – A Misunderstanding
K’s Law – The ebook
anywhere that the Board had informed the parties before or after the discussion on novelty that the discussion of and/or the decision on novelty and inventive step would take place together. [2.6] It appears that, as a result of the Board’s statement that the issue of patentability would turn on novelty and inventive step, a very unfortunate misunderstanding arose. While the Board may have intended to Say that novelty and inventive step would be discussed together and decided together, that was not, or at least not clearly, expressed. The Board’s statement in fact only told the parties that novelty and inventive step were both issues to be discussed and, that being the apparent meaning of the statement (see point [2.5] above), the petitioner assumed accordingly that both those issues would be discussed before any decision was taken. That the petitioner did not understand that the Board intended to discuss and decide both issues together is also apparent from its representative’s answer “no” to the Chairman’s question, before he closed the debate after the discussion on novelty, whether the parties had any further comments. The same answer “no” from the representative of the respondents, who had also only addressed the Board on the issue of novelty of the main request, can have done nothing to alleviate the petitioner’s misunderstanding. Thus the petitioner only presented arguments on novelty because he thought, understandably, that there would be an opportunity later to address the Board on inventive step, in the event that the Board should acknowledge novelty and that a discussion of inventive step should thus become necessary. Such an expectation was all the more justified, since in its communication accompanying the summons to OPs, the Board had itself dealt with novelty and inventive step as separate points, its reasoning on each of those points having been based at least partly on different prior art and different arguments. [2.7] In Chapter 1 of Part II of the EPC the term “patentability” covers a variety of potential objections; the Chairman cannot have meant to address all those objections when he used the term “patentability”, since most of them had never been a subject of the appeal proceedings. Hence, it is clear that the meaning to be attributed to the word “patentability” depends on the context in which it is used. Considering the circumstances of the present case set out above it has to be acknowledged that, when the debate was closed after the discussion on novelty, the petitioner had no reason to assume that the Board’s decision would address more than had been previously discussed orally, i.e. novelty. [2.8] According to A 112a(2) (c) ( 5 ) the petition for review is allowable, and hence must be allowed, if a fundamental violation of A 113 EPC occurred in the appeal proceedings. Whether or not that is the case must be determined on an objective basis. It is not relevant that the Board did not deliberately deny the petitioner the opportunity to speak on inventive step. It appears clear that in the present case the members of the Board thought that the parties did not wish to make separate submissions on that issue and, once a formal decision on the main request had been given, there was no possibility for the Board to reopen the debate on inventive step. The boards of appeal have constantly held that determining whether a substantial procedural violation justifying the reimbursement of the appeal fee has occurred in first instance proceedings (R 103(1) (a) EPC, R 67 EPC 1973), is to be decided exclusively on an objective basis (J 7/83, J 32/95, T 405/96 making reference to further decisions, T 400/02). A “substantial procedural violation” is an objective deficiency affecting the entire proceedings (J 32/95 [4.1], making reference to earlier decision J 7/83). As the Legal Board of Appeal acknowledged in decision J 32/95, there can be a substantial procedural violation even if the deciding body acted in good faith. It does not imply that the deciding body should be reproached in any way. Thus, a substantial procedural violation was e.g. acknowledged to have occurred in cases in which a request for OPs had not reached the file and, the deciding body not knowing that OPs had been requested, the decision was taken without OPs (T 405/96 [2], T 400/02 [2-3]). Such an objective approach must also be applied when it comes to determining whether a fundamental violation of the petitioner’s right to be heard within the meaning of A 112a(2)(c) occurred. It is therefore not relevant that it was not the deciding Board’s intention in any way to deprive the petitioner of its right to be heard orally on the issue of inventive step. [2.9] In the present case it cannot be denied that the violation of the petitioner’s right to be heard orally was objectively a fundamental one. As a result of the misunderstanding between the Board and the petitioner as to which aspect the Board’s decision on the main request would address and of the Board having announced a formal decision on the lack of inventive step, the petitioner had no possibility to speak on inventive step at all. Since the Board’s decision rejecting the main request was based only on lack of inventive step, while its novelty 1755 | 3398
R 3/10 – A Misunderstanding
K’s Law – The ebook
was acknowledged, the negative decision on the main request was exclusively due to the denial of inventive step by the Board. [2.10] In the OPs before the EBA the respondent argued that in the case under appeal the relevant considerations for the assessment of inventive step were very close to the discussion having taken place on novelty. It could at best be said that claim 1 of the main request was just novel but it was then clearly obvious. In the context of review proceedings the EBA is not entitled to go into the merits of a party’s case. It is not entitled to assess whether or not and to what degree, if any, a party’s standpoint which it alleges it would have taken had it been given the opportunity to present it, would have been well founded. More importantly, however, in the context of determining whether a party’s right to be heard has been violated, this is not a relevant issue. The right to be heard is a fundamental right of the parties which has to be safeguarded, irrespective of the merits of the party’s submissions. The necessity to respect it is absolute and therefore cannot be made dependent on a prior assessment of the merits of the party’s submissions, which in the present case would involve an assessment of the degree of likelihood that the arguments of the petitioner would have convinced the Board to acknowledge inventive step. It is the very essence of the right to be heard that the party is given a full opportunity to defend its case and to persuade the deciding body that its position is the correct one. This right would be undermined if it were made dependent on an evaluation as to whether the party’s standpoint is likely to be justified. In order to answer the question of whether a fundamental violation of the petitioner’s right to be heard occurred as a result of the petitioner’s not having been heard on inventive step, it is therefore irrelevant whether the respondents are right in their assessment of the clear obviousness of the claimed solution. [2.11] In a case such as the present, in which the ground of opposition, i.e. lack of inventive step, on which the revocation was based, was not discussed at all in the OPs, it is also irrelevant that that issue was discussed in writing between the parties. The purpose of OPs is to allow each party to make an oral presentation of its arguments, to allow the Board to ask each party questions, to allow the parties to respond to such questions and to allow the Board and the parties to discuss issues, including controversial and perhaps crucial issues. The value of OPs is that matters may as a result be clarified and the Board may ultimately be satisfied that a party’s position is the right one, although it was not so satisfied by the written submissions alone. Subject to the exception made in A 116(2) for OPs before the Receiving Section, the right of any party for OPs to be held on request and to present its case orally is absolute. It is, with respect to the party’s right to be heard on its case, a more specific embodiment of the general principle enshrined in Article 113(1) EPC, but is by no means subordinate to the latter provision or less important in any respect. According to the established jurisprudence (see e.g. T 125/89 [7]) the parties’ absolute right to be heard in OPs, A 113(1) and A 116(1), is not restricted to new and substantial arguments which have not yet been presented in writing. Therefore, the fact that the petitioner made submissions on inventive step in writing is not a valid reason for denying that the petitioner’s right to be heard under A 113 was violated in a fundamental manner, as a result of its not having had the opportunity to present its arguments orally on the decisive issue of inventive step, entailing the rejection of the petitioner’s main request. [2.12] For these reasons, the decision under review has to be set aside and the proceedings have to be reopened, in order to give the petitioner the opportunity to present its arguments on inventive step orally. The petitioner’s further objection, that the impugned decision relied on arguments which had not previously been put to the petitioner, need therefore not be dealt with here. [3] Pursuant to R 110 the fee for the petition for review shall be reimbursed. You can download the whole decision and have a look at the file wrapper here.
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T 45/10 – Gotta Be Right
K’s Law – The ebook
T 45/10 – Gotta Be Right 17 Nov 2011
The patent proprietor appealed against the decision of the opposition division (OD) revoking the patent under consideration ; claims 1 of the main request and the second auxiliary request on file was found to lack inventive step. During the oral proceedings (OPs) before the Board, the patent proprietor filed a main and five auxiliary requests. Claim 1 of the main request before the Board was very similar to the second auxiliary request on which the OD had decided (additions underlined): 1. A honeycomb structural body (30) made of a columnar porous ceramic block (35) of silicon carbide in which a large number of through holes (31a, 31b) are placed in parallel with one another in the length direction of the said through holes with a wall portion (33) interposed therebetween, wherein said large number of through holes comprises: a large-capacity through hole group and a small-capacity through hole group, the total sum of the areas of the through holes constituting the said large-capacity through hole group on a cross-section perpendicular to the length direction of the said through holes being greater than the total sum of the areas of the through holes constituting the said small-capacity through hole group on the said cross-section, each of said through holes in the large-capacity through hole group is sealed at an end on an exhaust gas outlet side of said honeycomb structural body and has an open end on an exhaust gas inlet side, each of said through holes in the small-capacity through hole group is sealed at an end on an exhaust gas inlet side of said honeycomb structural body and has an open end on an exhaust gas outlet side, and a surface roughness (greatest height) Ry, measured based upon JIS B0601, of the wall face of said through holes is set in a range from 10 to 100 μm, wherein a density of the through holes on a cross-section perpendicular to the length direction is set in a range from 15.5 to 62 pcs/cm2, and wherein the large number of through holes are constituted by two kinds of through holes, that is, largecapacity through holes each of which has a relatively greater area on a cross-section perpendicular to the length direction of the said through holes and small-capacity through holes each of which has a relatively smaller area on said cross-section perpendicular to the length direction of the said through holes, and wherein the shape of a cross section of a through hole perpendicular to the length direction of each of the through holes is an octagonal shape for each of the large-capacity through holes and a quadrangle shape for each of the small-capacity through holes. The Board found the none of the requests to be admissible and revoked the patent. Here is what it had to say on the main request: Procedural aspects [2.1] In the statement setting out the grounds of appeal, the requests made during the first instance proceedings were no longer pursued. All requests filed in the written phase of the appeal proceedings, whether with the grounds of appeal or following receipt of the communication of the Board (annexed to the summons to OPs), comprised an amended claim 1 containing additional features with regard to the manufacturing process of the honeycomb body and with respect to the functioning of the honeycomb body when in use. [2.2] Contrary thereto, the subject-matter of claim 1 of the main request as filed during OPs and now under consideration is substantially identical to the subject-matter of claim 1 of the second auxiliary request before the 1757 | 3398
T 45/10 – Gotta Be Right
K’s Law – The ebook
OD (the only amendments being the limitation to silicon carbide as material for the ceramic block and the specification of the method for determination of the surface roughness Ry). The amendments made in all requests filed in the written phase of the appeal proceedings thus included additional features which were then the subject of objections in the appeal proceedings. These additional features were then in effect deleted as the result of the new request filed during OPs. In this way, claim 1 has been broadened significantly with respect to claim 1 of the various requests filed during the written phase of the appeal proceedings. Thus, the framework of the appeal would be altered completely if the new main request were to be admitted. [2.3] Article 12(1)(a) RPBA states inter alia that appeal proceedings are to be based on the notice of appeal and statement of grounds of appeal filed pursuant to A 108. So far as concerns an appellant, Article 12(2) RPBA requires that the statement of grounds of appeal should contain its complete case and set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, or amended, and should specify expressly all the facts, arguments and evidence relied on. [2.4] According to Article 13(1) RPBA, it lies within the discretion of the Board to admit any amendment to a party’s case after it has filed its grounds of appeal or reply and states that “the discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.” Application of these procedural principles to the main request [3.1] Comparing the subject-matter of claim 1 with the subject-matter of claim 1 as granted, the subject-matter of dependent claims 2, 3 and 5 has been added. Such subject-matter corresponds essentially to the subject-matter of claim 1 of the second auxiliary request before the OD, which was found to lack an inventive step. [3.2] Beyond these amendments, claim 1 has been further limited to specify the material of the columnar porous ceramic block as being silicon carbide, and the surface roughness has been defined as being “measured based upon JIS B0601”. [3.3] Such specification of the material of the porous ceramic block and the insertion of the determination method do not prima facie alter the reasons which were given by the OD concerning lack of inventive step of the then second auxiliary request. It is also noted that A1, used by the OD as a starting document for the problem/solution approach, already cites in its paragraph [0016] silicon carbide as a suitable ceramic material. Hence, this amendment is prima facie not appropriate for overcoming the objection of lack of inventive step. The insertion of the determination method for the surface roughness has no influence on the reasons for the refusal of the patent either. The OD already implicitly assumed such a determination method in its reasoning. Accordingly, the reasons given by the OD for its finding of lack of inventive step still apply prima facie and have not been commented on otherwise during the written appeal proceedings. [3.4] When taking into account the proposed amendments/deletions of features in claim 1, it is clear that they raise issues which neither the Board nor the other parties could be expected to deal with since the appeal had not been based at all upon such subject-matter. In order to be admitted, any late-filed request should, for procedural economy reasons at least, be prima facie allowable, which is not the case here in view of the subject-matter having been held non-inventive by the OD. [3.5] Neither in the statement of the grounds of appeal nor in any subsequent submission did the appellant explain why the decision of the OD on inventive step of the second auxiliary request should be overturned. The appellant’s argument that sections 3 to 5 in the grounds of appeal equally applied to the requests before the OD is not convincing. Section 3 refers in particular to the functional feature relating to the release of ashes, which feature was not present in the first instance requests. Section 4 specifically comments on the improvements added via the manufacturing process of extrusion moulding, which feature was also not present in the requests before the OD. Section 5 adds further statements concerning the mechanism to remove ashes and hence only provides arguments for the functioning of the honeycomb body when in use. Thus, all arguments previously filed in the appeal proceedings concern the impact of additional features.
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T 45/10 – Gotta Be Right
K’s Law – The ebook
Although not decisive, it may also be added that D25 highlights the function of removing ashes as a crucial feature of the invention and compares the exfoliation of ashes when applying silicon carbide sheets in comparison to cordierite sheets. However, this test is not related to a honeycomb structural body having the claimed features and is also not related to the use in an exhaust gas purifying device. Therefore, the test results of D25 lack relevance for the claimed subject-matter. [3.6] Furthermore, the communication of the Board had already highlighted clarity objections to the amended features. Hence, in view of the maintenance of similar features in all subsequent written submissions, it could not have been expected that a request deleting these features would have to be considered at the OPs for the first time. [3.7] If the request were admitted, the Board as well as the parties would be faced for the first time with new arguments as to why this claimed subject-matter would be inventive and why the OD’s decision was incorrect. Accordingly, the deletion of these features has the effect of changing the appellant’s case from that set out in the grounds of appeal and in a direction which, objectively, could not be expected. Such a request and supporting arguments could have been submitted earlier and their submission is thus not consistent with the requirements set out in Articles 12 and 13 RPBA. [3.8] Hence, the Board exercised its discretion under Article 13(1) RPBA not to admit the main request. Note that the Board presumes the inventive step assessment carried out by the OD to be correct: a claim equivalent to a claim found to lack inventive step by the OD is considered to be prima facie unallowable. To download the whole decision, click here. The file wrapper can be found here.
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T 1456/06 – All Things Considered
K’s Law – The ebook
T 1456/06 – All Things Considered 16 Nov 2011
Both the patent proprietor and the opponent appealed against the decision of the Opposition Division (OD) maintaining the opposed patent in amended form. The Board found the main request and the first auxiliary request not to comply with the requirements of A 123(2). It then examined the second auxiliary request, and in particular its compliance with A 123(3). The relevant claims of the file as granted read: 1. A polynucleotide comprising a sequence encoding a polypeptide capable of exhibiting a telomerase catalytic activity when associated with a telomerase RNA and which is: (a) a polynucleotide having the sequence of the insert of plasmid ATCC 209016; or (b) a polynucleotide which hybridizes to (a) under stringent conditions; or (c) a polynucleotide which hybridizes to SEQ ID NO 3 or SEQ ID NO 8 under stringent conditions; or (d) a polynucleotide sequence which is degenerate as a result of the genetic code to the sequences defined in (a) or (b). 44. The use of a polypeptide obtainable by expressing the polynucleotide of claim 1 in a vector of claim 5 or an immunogenic fragment thereof in the preparation of a vaccine capable of eliciting an immune response. 46. An immunogenic peptide of human telomerase protein, said peptide comprising at least 8, optionally at least 10, amino acids of a human telomerase protein encoded by the polynucleotide of claim 1 for use in medicine. 47. The use of an immunogenic peptide of human telomerase protein, said peptide comprising at least 5, optionally at least 8 or at least 10, amino acids of a human telomerase protein encoded by the polynucleotide of claim 1 for the manufacture of a medicament for the treatment of a condition mediated by cells expressing high levels of telomerase. The second auxiliary request introduced some amendments:
Did the deletion of the reference to the “at least 8 amino acids of a human telomerase protein” violate A 123(3), as argued by the opponent? The OD did not think so when it discussed the then first auxiliary request:
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T 1456/06 – All Things Considered
K’s Law – The ebook
And the Board came to the same conclusion: [21] Claim 46 of auxiliary request 2 […] is identical to claim 47 of auxiliary request 1 in opposition proceedings. In the decision under appeal, the OD held that, although the feature “..., comprising at least 8 amino acids of a human telomerase protein …” had been deleted in the amended claim 47, the scope of the claim had de facto remained the same. Consequently, the OD found that A 123(3) was not contravened. This finding has been contested by [the opponent]. [22] Albeit for different reasons, the board reaches the same conclusion as the OD. [23] A 123(3) rules that a European patent may not be amended in such a way as to extend the protection it confers. According to the established jurisprudence of the Boards of Appeal, the legal notion of “protection conferred” in A 123(3) does not necessarily refer to the scope of protection of each single claim as granted, but rather to the totality of the protection established by the claims as granted as a whole. Thus, in order to assess whether or not an amendment introduced to the claims as granted offends against A 123(3), the question to be decided is whether or not, in comparison to the claims as granted, the protection conferred by the totality of the claims has been extended (see decision T 579/01). [24] In the present case, the board is persuaded that, although the deletion of the feature “..., comprising at least 8 amino acids of a human telomerase protein ...” may possibly result in a different scope of amended claim 46 compared to that of claim 47 as granted from which the amended claim is derived, the protection conferred by the totality of the claims as granted has not been extended by the amendment because the subject-matter of amended claim 46 is within the scope of protection conferred by the patent as granted. [25] Amended claim 46 is directed to the use of an immunogenic peptide of the human telomerase according to the invention for the manufacture of a medicament “... for the treatment of cancer by eliciting a Class I MHC restricted cytotoxic lymphocyte response against cells expressing high levels of telomerase”. In the board’s judgement, a medicament which elicits a lymphocyte response is nothing else than a vaccine. Thus, in other words, amended claim 46 is directed to the use of an immunogenic peptide of the human telomerase for the manufacture of a vaccine, in particular a therapeutic vaccine (“... for the treatment of cancer ...”) which elicits a specific type of immune response, namely a Class I MHC restricted cytotoxic lymphocyte response. [26] Claim 44 as granted was directed to the use of an immunogenic fragment of the human telomerase according to the invention in the preparation of a vaccine capable of eliciting an immune response. Claim 44 as granted was not restricted to the treatment of a particular disease or to a specific type of immune response, as it is the case in amended claim 46. Thus, the more limited subject-matter of amended claim 46 falls within the 1761 | 3398
T 1456/06 – All Things Considered
K’s Law – The ebook
scope of claim 44 as granted. The slight difference in wording between the two claims (amended claim 46 reads “... for the manufacture of...” instead of “... in the preparation of ...” as in claim 44 as granted) does not appear to have any significance with regard to the claim scope. If anything, the wording “... in the preparation of ...” in claim 44 as granted could be considered to have a broader meaning. [27] For these reasons, [the opponent’s] argument that, as a result of the amendment introduced into claim 46, the protection conferred by the patent has been extended, cannot be accepted. Should you wish to download the whole decision, you can do so by clicking here. The file wrapper can be found here.
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T 2198/08 – One Too Many
K’s Law – The ebook
T 2198/08 – One Too Many 15 Nov 2011
In the present case the Opposition Division (OD) had revoked the opposed patent for lack of novelty over some A 54(3) prior art. The request on file before the OD contained 16 claims: claims 1 to 7 were directed at a process for dyeing a textile fabric with indigo and claims 8 to 16 to a system for exploiting this dyeing process. Before the Board of appeal, the patent proprietor filed three requests. The main request consisted of eight claims. Claims 1 to 7 were identical to the claims on which the OD had based its decision and another dependent claim 8 was added. The features of newly added claim 8 were taken from system claim 9 of the set of claims before the OD. Auxiliary request I had a claim 1 corresponding to a combination of claims 1 and 8 of the main request. Auxiliary request II corresponded to claims 1 to 7 of the set claims on which the OD had based its decision. The Board found the main request to be inadmissible: *** Translation of the French original *** [3] The main request comprises a new dependent claim 8. It has been established by the case law of the Boards of appeal (6th edition, 2010, VI.D.4.1.3a) that the addition of a dependent claim cannot possibly be a response to an objection that the claimed subject-matter (the process of claim 1) is not patentable because it neither limits nor amends the subject-matter claimed in the relevant independent claim (claim 1). As a consequence, the addition of claim 9 is not allowed and the main request is inadmissible (R 80). Auxiliary request I was then found to be allowable and new and the case was remitted to the OD for further prosecution. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
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T 386/08 – Eighty-three Issues
K’s Law – The ebook
T 386/08 – Eighty-three Issues 14 Nov 2011
Both the patent proprietor and the opponents appealed the decision of the Opposition Division maintaining the opposed patent in amended form. The claims on file were directed at a particular humanized antibody, or fragment thereof. The Board found the main request on file to violate A 123(2) and the first auxiliary request to lack clarity because of the expression “a light chain framework sequence substantially identical to a native human light chain framework”. The decision contains some interesting paragraphs dealing with the sufficiency of disclosure of auxiliary request 2: A 83 [43] The patent discloses in SEQ ID Nos. 11 and 12 (describing sequences of the variable and constant regions for the heavy and light chain of the humanized antibody) the sequence of a specific humanized antibody having CDR sequences as recited in claim 1 and modified human framework sequences. In particular, the framework sequences of the heavy chain variable region framework according to SEQ ID No. 12 are derived from the human germline VH segment DP53 and J segment JH4 with amino acid substitutions according to the Queen procedure (see paragraph [0040] of the patent). The light chain variable chain framework according to SEQ ID No. 11 originates from the human germline Vkappa segments DPK18 and J segment Jkappa1 with amino acid substitutions according to the Queen procedure […]. This exemplified humanized antibody is the one denoted as “Hu266” (see paragraph [0112] of the patent). [44] The patent moreover discloses in SEQ ID Nos. 7 and 8 […] positions labelled as “XAA” which denote potential sites of variation of the sequence of the specifically disclosed Hu266 antibody. More precisely, ten and eight sites, respectively, for modification in the light and heavy chain variable regions are listed in SEQ ID Nos. 7 and 8 with two to three and two to four, respectively, possible amino acid substitutions at each of those sites. [45] Thus, the patent discloses not only one, but many examples. The opponent does not contest that the skilled person is able to obtain Hu266 and its disclosed derivatives. [46] The opponent’s argument however is that, because the framework sequences are defined in claim 1 as framework sequences from a human immunoglobulin light or heavy chain, this claim does not only encompass the specifically disclosed antibody Hu266 and its disclosed derivatives, but also humanized antibodies with framework sequences unrelated to the exemplified one. [47] According to the opponent these variants (in the following “variants at issue”) cannot be obtained when following the disclosure in the patent. The reason is in the opponent’s view that the only method for the preparation of humanized antibodies disclosed in the patent is that developed by Queen et al. This method requires knowledge of the sequence of the non-human donor antibody from which the CDRs are derived. However, the sequence of, in the present case, the mouse donor antibody Mu266, is not disclosed in the patent (nor in the prior art) and there is no disclosure either in the patent or in the prior art of how humanized antibodies could be obtained without knowledge of the sequence of non-human donor antibody. Thus, the opponent concludes that the disclosure in the patent, even when taking into account common general knowledge, does not enable the skilled person to carry out the invention over its whole claimed scope and therefore, the requirements of A 83 are not fulfilled. Burden of proof [48] The opponent has suggested that in a case such as the present where neither the patent nor the prior art expressly disclose how to obtain particular embodiment of the claim, it should not be for the opponent to prove that the variants at issue cannot be obtained, but rather the burden should be on the patentee to prove that the variants at issue can be obtained. 1764 | 3398
T 386/08 – Eighty-three Issues
K’s Law – The ebook
To support its view the opponent refers to decisions T 792/00 and T 397/02 and argues that the patentees have not provided evidence that the invention is enabled with respect to the variants at issue. [49] The board in T 792/00 [9] alludes to the general rule that “he who asserts something positive has the burden of proof” and concludes thus that “if a patentee asserts that an example in a patent works as stated, and an opponent denies this, it is up to the patentee to provide proof. However, if the example contains a complete experimental protocol and the patentee affirms that the results reported have been obtained, a Board is likely to accept that the patentee has done enough to shift the burden of proof to the opponent to provide a repeat of the experiment to show that it does not, in fact, work as stated. Finally, however, the board must be satisfied, considering all the evidence, that the example works as stated.” [50] The board in decision T 792/00 considered that the burden of proof was on the patentee because (i) the claimed invention went against a prevailing technical opinion and (ii) the patent contained only an example which was expressly labelled as a hypothetical experimental protocol. [51] In the case underlying decision T 397/02 the board emphasized that the invention did not consist in adapting an already known method to make it simpler or more efficient, but the claimed method was conceptually different from the approach taught in the prior art (see point 12 of the reasons). There was one example, but it was not suited to show that the claimed subject-matter was enabled (see point [7] of the reasons), i.e. an example was in principle absent. As is apparent from points [13] to [16] of the decision, the board in that case considered that these were circumstances where the proprietor had to demonstrate that the claimed invention worked because, since it was not convinced of the patentee’s arguments that the invention worked, it denied sufficiency of disclosure. [52] The circumstances of the present case are different from those dealt with in decisions T 792/00 and T 397/02 insofar as the concept of and methods for humanization are known and can, from a technical point of view, be applied to each antibody donor-acceptor pair, i.e. also to a humanized donor-human acceptor pair […]. The opponent’s submission that there is no disclosure that any-one has applied the known method to this particular situation does not necessarily establish that there was a prevailing opinion that this could not be done. In addition, the patentees submit that there was no obstacle. [53] In the present board’s view, the situation in the case at issue here rather coincides with the situation mentioned by the board in T 792/00 [10] – a situation which was considered not to be present in case T 792/00: “[I]n the special situation where an opponent accepts that the invention can be carried out as stated in the examples, but alleges that there are other circumstances where something falling under the claim cannot be carried out, then Boards of Appeal would normally expect the opponent to provide concrete evidence of this (cf. Latin legal tag “Qui excipit, probare debet, quod excipitur” : he who raises an objection should prove it)”. [54] In conclusion, in the board’s view, in the present case it is the opponent who should prove that the variants at issue cannot be made. Enablement [55] It is established case law that the disclosure of a European patent is only considered as sufficient in the sense of A 83 if the skilled person is able to obtain substantially all embodiments falling in the ambit of the claim (for example, decisions T 409/91 and T 435/91). [56] Yet, the concept of “sufficiency of disclosure over the whole scope of the claim” does not mean that, for a disclosure to be considered as sufficient, it has to be demonstrated that each and every conceivable embodiment of a claim can be obtained. [57] This is explicitly acknowledged in decision G 1/03. The Enlarged Board of Appeal states in point [2.5.2] of the reasons that if a claim comprises “non-working” embodiments this may have different consequences with regard to the fulfilment of the requirements of A 83, depending on the circumstances. There may be situations where the specification contains sufficient information on the relevant criteria for finding appropriate alternatives (“variants”) over the claimed range with reasonable effort. Under these circumstances the non-availability of 1765 | 3398
T 386/08 – Eighty-three Issues
K’s Law – The ebook
certain variants encompassed by the claim at the priority date is considered immaterial for the sufficiency of disclosure. [58] An example where this was not so is the case underlying decision T 601/05. In that case the board found that a whole class of compounds falling under the terms of a claim - antibodies binding with a high affinity to TNF alpha - could not be produced on the basis of the teaching in the patent and/or the common general knowledge and that the class concerned was the very class which was particularly aimed at by the scientific community. Moreover, also the single example disclosed in the patent was an antibody which did not have high affinity (see points [24] to [44] of this decision). [59] The present situation differs however from that in case T 601/05 in that the present patent describes quite a number of appropriate alternatives and in that the allegedly non-obtainable variants are “hypothetical” variants. [60] Taking into account the above mentioned case law and in view of the number of examples given the patent, the board comes to the conclusion that the requirements of A 83 are fulfilled. [61] Since most of the parties’ arguments in relation to sufficiency of disclosure dealt with the question of whether or not the variants at issue, humanized antibodies with framework sequences unrelated to the exemplified one, could be made, the board has nevertheless considered the situation that the present case was one where the requirements of A 83 could be considered as fulfilled only if there was evidence that the variants at issue could be made. Starting from this assumption, the board agrees with the opponent that these variants cannot be obtained by following the “classical” Queen-procedure disclosed in the patent, because this procedure requires knowledge of the non-human donor sequence. [62] However, this finding would be irrelevant for sufficiency of disclosure as long as the skilled person knows other ways of making the variants at issue. It is established case law that the skilled person may use his/her common general knowledge when it comes to carrying out an invention. [63] Thus, the question is whether or not there is any other way available to the skilled person by which the variants at issue could be made. The board can only come to the conclusion that the requirements of A 83 are not fulfilled, if it is convinced that there is not a single method for obtaining the variants at issue. [64] The opponent argues that the variants at issue cannot be made by, for example, a) a modified Queen procedure, i.e. by applying the Queen-technology to humanized antibody Hu266 as the donor antibody or b) by random site-directed mutagenesis or c) by reconstruction of the mouse sequence and subsequent application of the Queen method. [65] It is established case law that an objection of lack of sufficiency of disclosure only succeeds, if there are serious doubts that claimed subject-matter is enabled, and these doubts are supported by verifiable facts. [66] As for example to method a) above, the opponent submits that screening the database of human germline immunoglobulin sequences for sequences with highest identity - this is a central step of the Queen procedure with the sequence of the humanized Hu266 would result in the provision of sequences with an identity that was much lower than that which would result if the database was screened with the sequence of the mouse parent antibody. It appears that the opponent’s implicit conclusion is that the identity is in fact so low that the framework would not be suitable to properly support the specific CDRs from the mouse parent antibody Mu266 and that therefore an antibody constructed with these low-identity frameworks would not have a useful affinity and may even have lost the binding specificity. [67] The opponent – who has the burden of proof, see points [48] to [57] above – has not provided, for example, tangible evidence that homology-screening with the humanized antibody Hu266 would result in finding only framework regions with a sequence identity that was lower in relation to the original mouse antibody framework sequence than the identity of sequences that would be found if screening was made with the parent antibody Mu266. Even if this was assumed to be so, there is also no evidence that the retrieved sequence, even if it had a lower identity, would not properly three-dimensionally position the specific CDRs of the Mu266 antibody. [68] It appears that there have been cases where the grafting of CDRs to framework sequences which were not selected on the basis of sequence identity resulted in functional humanized antibodies. It is reported in, for example, document D7 on page 4285, in the middle of the second column and document D18B page 70, in the middle of the first column, that simple transplantation of CDRs without changes to framework residues resulted in antibodies with the expected specificity and affinity:
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T 386/08 – Eighty-three Issues
K’s Law – The ebook
“In some cases, transplanting hypervariable loops from rodent antibodies into human frameworks is sufficient to transfer high antigen binding affinity (16, 18) whereas in other cases it has been necessary to also replace one (17) or several (20) framework region (FR) residues.”; “[a]lthough CDR grafting was successful in some cases [10,11], [...]”. [69] Evidence allowing the verification of alleged facts may vary in nature according to each case, i.e. experimental data are certainly not always necessary as a means of proof. However, in the present case, as in particular shown by the observations in point [67] above, without such experimental data the board cannot verify the facts alleged by the opponent. [70] Thus, the board is not convinced that the variants at issue cannot be obtained by a “modified” Queen procedure or the procedures referred to in documents D7 or D8. [71] The opponent has relied on decisions T 792/00 and T 397/02 to support its case. However, in both cases sufficiency of disclosure was denied because not a single embodiment could be obtained on the basis of the disclosure in the patent and even less on the disclosure in the prior art. Thus, these cases do not help in the present situation where the question of the obtainability of a particular embodiment is at stake. [72] Thus, even assuming that the present case was one where the requirements of A 83 could be considered as fulfilled only if there was evidence that the variants at issue could be made, the board would come to the conclusion that no case of lack of sufficiency of disclosure has been made. [73] The requirements of A 83 are fulfilled. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 971/10 – Substantially Circular
K’s Law – The ebook
T 971/10 – Substantially Circular 12 Nov 2011
This appeal deals with the refusal of the application under consideration by the Examining Division (ED). Claim 1 of the application as filed (which was also claim 1 of the main request before the Board) read: 1. A gas-liquid contacting tray suitable for horizontal mounting in a normally vertical column, which tray comprises
a tray plate with substantially circular circumference and having top and bottom surfaces, which tray plate is provided with passages for gas between the bottom and the top surface, and on which tray plate two semi-circular tray sections are defined by a virtual diametrical line of the tray plate; and a total of three downcomers for guiding liquid from the top surface of the tray plate to below the tray, each downcomer extending from an inlet opening arranged in the tray plate to a downcomer outlet opening below the tray,
wherein two of the downcomers are arranged in the corners of one of the semi-circular tray sections, and wherein the third downcomer is arranged on the other tray section substantially along a radius of the tray that is perpendicular to the diametrical line. The ED held that the claim features “substantially circular” and “substantially along a radius” did not fulfil the requirement of clarity of A 84. The applicant also filed an auxiliary request wherein these features were deleted. Main request [1.1] According to A 84 the patent claims must define the subject-matter for which protection is sought and be clear. The importance of the clarity requirement is due to the necessity of legal certainty, as the purpose of the claims is to enable the protection conferred by a patent to be determined (see Case Law of the Boards of Appeal of the EPO, 6th edition, 2010, chapter II.B). Insofar, the Board agrees with the appellant. In the present case, the question at issue is whether the expressions “substantially circular circumference”, “substantially along a radius of the tray”, “normally vertical column” and “substantially conforming to the circumference of the tray” mentioned in the claims to define a gas liquid contacting tray fulfil the above requirements. [1.2] The appellant admitted that the terms in question introduce a certain level of unclarity but was of the opinion that this level did not exceed the one generally inherent in patent claims. Their deletion would unjustly limit the patent protection since it was clear from the description of the application that the trays need not be exactly circular. By referring to decisions T 198/01 and T 386/07, the appellant argued that the term “substantially” was found clear in decisions of the Board of Appeal. There was no reason to apply to the present claims the requirement of clarity more strictly than usual. Decision T 728/98 cited by the ED did not apply in the present case since the feature “circular” was not essential for delimiting the present invention from the prior art. [1.3] The Board agrees with the appellant insofar as decision T 728/98 does not seem to be relevant for the present case. In this decision, it was found that the term “substantially pure” used to define a chemical compound was unclear. On a first sight, it might appear that the term “substantially pure” would display the same “level of clarity” as the terms “substantially circular” and “substantially along a radius”. However, upon deleting the expression “substantially” it is apparent that the term “pure” in relation with a chemical compound is still vague as it does not define any particular level of purity. In contrast, the terms “circular” and “along a radius of the tray” define a particular geometry of a physical device.
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T 971/10 – Substantially Circular
K’s Law – The ebook
The Board further agrees that it would be unfair to restrict the claimed subject-matter to “perfectly” circular trays. However, as is established in R 35(12) EPC (1973), last sentence, patent applications should contain only technical terms which are generally accepted in the field in question. Accordingly, for the purpose of A 84, a particular technical term has to be given the meaning it usually has in the particular technical field concerned. This means that in the field of gas-liquid contacting apparatuses the term “circular” used for defining the shape of a tray never means ‘exactly’ or ‘perfectly’ circular but only circular within those tolerances which are usual in the manufacture of such apparatuses. The same applies to the term “along a radius of the tray” used to define the location of the third downcomer. As a consequence, the use of the term “substantially” in combination with “circular” and “along a radius” suggests that deviations are included which are larger than those accepted tolerances. Since there is no explanation of what the deviations might be, the terms become vague and undefined with the result that it is no longer possible to determine the extend (sic) of protection conferred by the application (see also decision of the Enlarged Board of Appeal G 2/88 [2.5]). On the contrary it might appear to be intended that the application shall include future embodiments, not thought about at the application date, since the application in suit does not disclose any other than a circular shape of the trays or any other arrangement of the third downcomer than along a radius of the tray. The same arguments apply to the term “normally vertical column” when compared with the definition given on page 84 of “The Petroleum Handbook” filed by the appellant during the examining proceedings and to the term “substantially conforming to the circumference of the tray” used in dependent Claims 5 to 7 of the main request. Concerning decisions T 198/01 and T 386/07, the Board observes that the assessment of clarity is dealt with in a different manner. In particular, those decisions do not consider the fact that the meaning of technical terms in claims is neither absolute nor theoretical but governed by what is generally accepted in the technical field in question. Further, the compositions of the Boards of Appeal vary from case to case, depending on the specific technical field. Hence, the assessment of the merits of a case may also vary to a certain degree due to different approaches with respect to the assessment of technical features. There cannot be an ultimate right for an equal assessment in all cases since such assessments are generally subject to mental development. [1.4] Having regard to the above, the Board concludes that the claims of the main request do not comply with the requirements of A 84 since the terms “substantially” and “normally” render the claimed subject-matter vague. The Board then found the auxiliary request to be clear and remitted the case to the ED for further prosecution. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 75/09 – Don’t Look Away
K’s Law – The ebook
T 75/09 – Don’t Look Away 11 Nov 2011
The present appeal deals with the refusal of an application by the Examining Division (ED). The core issue was clarity/sufficiency of disclosure, and in particular the definition of the parameter “through plane thermal conductivity” The way in which the ED had handled the requests on file triggered some general observations by the Board: [2] In view of the course of the examination proceedings before the ED, and in particular the different conclusions drawn by the ED with regard to the different requests of the applicant, but also the [applicant’s] argument [according to which the introduction of a further limiting feature reduced the importance of the measurement of the thermal conductivity with regard to A 83] the Board deems it appropriate to add some more general observations concerning the examination of a case like this, before turning to the [applicant’s] individual requests. [2.1] As set out […] in the minutes of the oral proceedings (OPs) before the ED on 31 January 2008 and in […] the annex to the Communication under R 71(3) (hereinafter “the Annex”), the ED had taken the view that all requests higher ranking than the sixth auxiliary request filed at the OPs could not be allowed for the reason of lack of clarity. In the decision under appeal […], this view was again confirmed with regard to the main request and first auxiliary request […]. [2.2] The reason for this finding was explained with regard to Claim 1 of the main request in […] the decision now under appeal […]: [3.15] Since the determination of the “thermal conductivity” is significantly dependent on the measurement conditions used, the indication of the measurement conditions is part of the clear definition of the parameter “thermal conductivity”, and hence of the clear definition of the claimed product in accordance with A 84. [3.16] This lack of information results in uncertainty as to the definition of the parameter “thermal conductivity”, and therefore said parameter cannot limit the subject-matter of claim 1 of the [main request] in any clear way. In other words, claim 1 is not clear as required by A 84. Despite the identification of the measurement “according to ASTM Method D5930” in its Claim 1, the same conclusion had been drawn with respect to the first auxiliary request in […] the Annex and confirmed in […] the decision under appeal […], because the measuring temperature had not been defined in its Claim 1. Furthermore, this conclusion had also been drawn with regard to Claim 1 of the third auxiliary request […]. Consequently, the ED had held that neither auxiliary request complied with A 84. [2.3] Moreover, based on the statement “the parameter ‘thermal conductivity’ would remain the only distinguishing feature and thus this claim would remain unclear” or in similar words […], the ED had come to the same conclusion with regard to each of the second, fourth and fifth auxiliary requests. [2.4] By contrast, the ED had indicated in the Communication under R 71(3) that it deemed the sixth auxiliary request to be in compliance with the requirements of the EPC. [2.4.1] A closer look at Claim 1 of this request shows that it contained a combination of features which had as such also been incorporated in those higher-ranking auxiliary requests and which had been considered there as not being suitable for overcoming the objection under A 84 EPC against those requests […]:
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T 75/09 – Don’t Look Away
K’s Law – The ebook
[2.4.2] In view of the reasoning for the refusal of the main and the first auxiliary request in the decision under appeal and additionally for the second to fifth auxiliary requests in the Annex, the Board can only conclude that the ED had apparently taken the view as regards the sixth auxiliary request
that the above objection of lack of clarity in respect of the definition of the thermal conductivity could be left aside/disregarded, because the “thermal conductivity” did not “remain(s) the only distinguishing feature” (with respect to the prior art) and that, therefore, a patent could nevertheless be granted despite this lack of clarity in both independent claims of this request.
[2.5] However, such an approach is not, in the Board’s opinion, in accordance with the requirements of the EPC. [2.5.1] A 18(1) states that “The EDs shall be responsible for the examination of European patent applications”, i.e. in all its aspects. [2.5.2] The articles of the EPC relevant to the examination proceedings as a whole are organised in different Parts and Chapters of the Convention. Thus, Part III “The European Patent Application”, Chapter I “Filing and requirements of the European patent application” contains A 75 to A 86, whilst A 52 to A 57 concerning the grant of a patent, in general, and novelty, inventive step and industrial application, in particular, are found in Part II “Substantive Patent Law” Chapter I “Patentability”. [2.6] In view of this structure of the EPC, the Board takes the view that articles in one chapter of the EPC concern requirements different from those defined in articles of the other chapter of the EPC and that, consequently these different requirements have to be treated separately and independently from one another. [2.7] It follows that the assessment of the substantive requirements for grant, i.e. novelty, inventive step and industrial application, can only be brought to a meaningful and appropriate end, in particular can only result in the grant of a patent, after any problems concerning (i) the “Filing and requirements of the European patent application” as such and (ii) the “Common provisions governing procedure” (Part VII Chapter I of the EPC), namely those laid down in A 123(2), have positively been solved. This implies, in the Board’s opinion, that any problems concerning the requirements of A 83 (sufficiency of disclosure) and of A 84 (requiring the claims to be clear and concise and supported by the description - without making in this respect any distinction between independent and dependent claims) and, in the case of amendment, those of A 123(2) have to be dealt with independently from and prior to the question of patentability. [2.8] Moreover, it should be kept in mind that a feature in an (independent or dependent) claim, which prima facie does not appear to be relevant for the decision on patentability at any time during or at the end of the examination procedure, may at a later stage in the life of the granted patent, e.g. in opposition proceedings under A 99 before the EPO or in revocation proceedings before a court under A 138, become highly relevant or even decisive for the validity of the European patent. However, a deficiency concerning the requirements of A 84 is neither a ground for opposition before the EPO under A 100 EPC nor a ground for revocation under A 138(1). Consequently, such a deficiency cannot be dealt with, let alone remedied in either proceedings. 1771 | 3398
T 75/09 – Don’t Look Away
K’s Law – The ebook
Reference can be made in this respect to established jurisdiction, namely to the decision of the Enlarged Board of Appeal G 9/91 [19] and e.g. decisions T 301/87 [3.8] and T 690/00 [4.1], cf. also Chapter VII.D.4.2 in the Case Law of the Boards of Appeal of the EPO, 6th edition, 2010). [2.9] In other words, where - as in the present case - there are multiple requests and a feature common to all requests is held not to meet the requirements of A 84, as a consequence of which higher ranking requests are refused, all lower ranking requests retaining this feature have to be refused for the same reason. The fact that in a lower ranking request the offending feature no longer has to be relied upon to establish a distinction over the prior art does not overcome the defect pursuant to A 84. Nor does it give the deciding body the discretion to disregard the deficiency. In particular it has to be borne in mind that the significance of a feature may become apparent only at a later stage in the life of a patent, e.g. in opposition or revocation proceedings. The appeal was finally dismissed because the cited ASTM standard and, as a consequence, the application did not explain how to measure thermal conductivity through a plane, and, therefore, violated A 83. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 334/08 – No Surprise
K’s Law – The ebook
T 334/08 – No Surprise 10 Nov 2011
When requests filed by the patent proprietor one month before oral proceedings (OPs) have not been transmitted to the opponent, will this have an effect on the admissibility on the requests? That is one of the questions the Board had to deal with in the present case. The patent proprietor filed an appeal against the decision of the Opposition Division maintaining the opposed patent – the claims of which were directed to flame-retardant epoxy resins and flame retarders for epoxy resins – in amended form. He filed new requests at the beginning of the OPs. In what follows, the Board discusses the admissibility of those requests. *** Translation of the German original *** [3.1] At the beginning of the OPs the [patent proprietor] has filed a new main request and new auxiliary requests 1 and 2. [3.2] The [opponent] criticized the new requests as late filed and requested [the Board] not to admit them into the proceedings. In particular, the [opponent] argued that he had only become aware of the written submissions of the [patent proprietor] dated February 24, 2011, on March 18, 2011, i.e. six days before the OPs, by precautionary inspection of the EPO “on line” file. The [patent proprietor] had not communicated those submissions to him and he had not received the corresponding communication of the registrar (Geschäftsstelle) dated March 4, 2011, until that date. Therefore, he had been surprised such that he had not been able to sufficiently familiarize himself with the new requests, consulting his client – both had ignored the new requests when meeting at the beginning of March – and to file appropriate comments. Moreover, there was no justification for the late filed requests because the factual situation had not changed for more than four years. Also, the submission dated February 24, 2011, did not explain to which extent these requests met the objections of the Board. The [opponent] referred to decisions T 755/96, T 1105/98, T 401/02 and T 153/85 in order to support his plea. The [opponent] also referred to the complexity of the amendments, in particular of the amended main request and the second auxiliary request. For example, independent claim 16 of the main request introduced a new feature (a phosphor content of at least 50% by weight chemically bonded to the epoxy resin). In view of the great number of claims of the original main request and the different alternatives comprised therein, this amendment was practically tantamount to introducing a feature of the description and, therefore, led to a new factual situation for the assessment of which the [opponent] had not had enough time. In this context the [opponent] referred to decision T 681/02. The second auxiliary request contained amendments which had never been filed before in this form. Moreover, it was not to the point because it was not clear which objections it was intended to meet. The claim still contained the compound DOP, which was also disclosed in document D6 in view of which the [patent proprietor] wanted to delimit [the claims]. [3.3] The admission of late filed requests into the proceedings is within the discretion of the Board (article 13(1) and (3) RPBA). According to the established case law of the Boards of appeal, complexity of the new subjectmatter submitted, the current state of the proceedings and the need for procedural economy submission are decisive criteria [to be taken into account] when exercising this discretion. [3.4] The amendments in the new main request as well as in the new first and second auxiliary requests consist in the deletion without replacement of a series of independent claims as well as of claims that depend from them or which refer back to them, as well as in further limitations of the independent claims 11 and 16 (the latter being deleted as well in the first and second auxiliary requests). The feature of dependent claim 18 has been incorporated into claim 16 and claim 11 has been limited to one group of compounds encompassing one preferred embodiment. These amendments rather contribute to reducing the complexity of the case. Moreover, they can be considered to be a serious attempt of meeting the objection of lack of novelty raised by the Board in its summons. The [patent proprietor’s] letter dated February 24, 2011, also contains reasons to that effect. The 1773 | 3398
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K’s Law – The ebook
second auxiliary request corresponds to a further attempt of the [patent proprietor] to delimit the claims in view of document D6 which the Board had considered relevant both for novelty and inventive step. [3.5] Moreover, it is to be noted that the new main request and the new auxiliary request as such had already been filed as third and fourth auxiliary requests, respectively, one month before the OPs. Considering the simplicity of the amendments (deletion of many claims and, as far as claim 16 is concerned, incorporation of features from dependent claims) the period of one month can normally be considered sufficient for allowing the [opponent] to prepare himself adequately. Moreover, the [patent proprietor] was not obliged to inform the [opponent] on its submission, even though this is often done by the parties, because it can rely on the fact that the EPO will send the submission to the [opponent] pursuant to R 100(1) and R 79(3). [3.6] However, in the present case the [opponent] apparently has not received the communication of the registrar dated March 4, 2011. As far as the Board can see, for some obscure reasons the communication was sent by registered letter to the former address of the representative of the [opponent]. This error was not detected until the receipt of the letter of the [opponent] dated March 18, 2011, because the registered letter only came back to the Office on March 14, 2011. The Board regrets this error and the fact that the [opponent] only became aware of the submission of the [patent proprietor] a few days before the OPs through his own efforts. However, the Board is convinced that this fact has no decisive influence on the assessment of the admissibility of the requests into the proceedings in the present case because the [opponent] did not have to face a surprising new factual situation and no new questions have been raised which would have required a postponement of the OPs. The deletion without replacement of a part of the independent claims and of claims that refer to them, whereby the subject-matter of a set of claims is further delimited towards the subject-matter of the invention discussed during the proceedings, does not modify the matter at issue (Prozessstoff) in a way that would be inacceptable to the parties. Nor can it come as a surprise to the [opponent] if the [patent proprietor] deletes claims that have been attacked in answer to objections of the Board and of the [opponent] himself […]. The same holds true for the amendment of claims that have been attacked by incorporation of further limiting features from dependent claims. Claim 16 of the new main request corresponds exactly to dependent claim 18 of the main request filed together with the statement of grounds of appeal, which exclusively referred to claim 17, which exclusively referred to claim 16. Contrary to the opinion of the [opponent] this situation is not equivalent to the situation where an arbitrary (beliebiges) feature, which could not have been foreseen by the Board or the [opponent], is incorporated into the claim from the description. Moreover, the Board points out that the subject-matter of claim 18 had already been attacked by the [opponent] in its response to the statement of grounds of appeal based on documents D6 and D17 […]. Therefore, it is not clear why the [opponent] should be surprised by a situation which it had already taken into account or why this would necessitate a further consultation of the client, because there are no new aspects related to this claim as compared to the main request that had originally been filed together with the statement of grounds of appeal. The same holds true for the amended auxiliary request, wherein the subject-matter of the invention to be discussed is further limited by deletion without replacement of claims 16 to 21 of the new main request. [3.7] New auxiliary request 2, which has been filed at the beginning of the OPs contains further limitations to independent claim 11, whereby the [patent proprietor] wanted to delimit [his claims] even more clearly with respect to the teaching of document D6, which, in contrast to the opposed patent, referred to halogenated epoxy resins. The [opponent] was of the opinion that this request was not relevant because it still contains the DOP compound, which was disclosed in document D6, too. However, the Board points out that the parties disagreed on the question of whether the use of DOP as flame retardant in epoxy resins, to which claim 11 refers, was disclosed in the prior art or made obvious by the latter. Moreover, this limitation does not change the factual situation but only concentrates it on the use of a group of compounds encompassing the preferred embodiment DOP. In view of the documents filed by the [opponent] during the opposition proceedings, for instance document D6, this group of compounds is not “new” to the [opponent], i.e. [a group] which it had not taken into account yet. Therefore, the Board cannot see why the limitation to this issue should have surprising aspects for the [opponent]. [3.8] In view of the decision on which the [opponent] bases his arguments, the following has to be said: [3.8.1] Decision T 755/96 [4.3] pointed out that a particular concern was that in oppositions other parties are not taken by surprise. Therefore, there could be good reasons not to admit new requests filed after the time limit pursuant to R 116, in particular if they would require that the professional representative consult his client and the latter’s technical experts. As stated under point [3.6], the Board cannot see any surprising facts which would require a further consultation of the client in the new requests. 1774 | 3398
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K’s Law – The ebook
[3.8.2] The facts underlying decision T 1105/98 were different. Here claim 1 of the patent comprised two alternatives. The objections of the opponent concentrated essentially on one of them. The Board was of the opinion that the limitation proposed during the OPs would have required a further search. This is not necessary in the present case. Claim 16 as limited results from dependent patent claims which had already been attacked by the [opponent] during the opposition proceedings. Claim 16 as amended still encompasses DOP and, therefore, does not shift the subject-matter to an unsearched alternative. By the way, decision T 1105/98 [3.7] also confirms that the opponent has to expect such amendments and has to be prepared accordingly. [3.8.3] In decision T 401/02 the Board has not admitted an auxiliary request that had only been filed during the OPs, because neither the Board nor the adverse party could have been expected to deal with the request. Its admission might have required, in particular in view of the inventive step assessment, to postpone the OPs or, as requested by one party, to remit the case to the first instance. However, in the present case, there is no need for postponing the OPs or for remitting the case to the first instance because there is no new and surprising factual situation. Nor did the parties request either of those measures. [3.8.4] In decision T 153/85 the Board refused to admit the main request which had been filed during the OPs and which referred to a further alternative with different limitations than in the sets of claims filed so far. The Board found that there was no justification for filing the alternative set of claims during the OPs because the examination of the appeal was terminated to a large extent and it was contradictory to the purpose of the OPs, i.e. to come to a decision at the end of the proceedings. Moreover, the set of claims was not novel, either. In the present case, the second auxiliary request filed during the OPs is an attempt of the [patent proprietor] to more clearly delimit his [claims] from document D6 which the Board and the [opponent] had considered to be relevant. This request does not correspond to an alternative that had not be taken into account so far but it represents a further limitation of the group of compounds that had already been discussed in the proceedings. [3.8.5] In decision T 681/02 the Board refused to admit the auxiliary request because its claim 1 had been amended by adding a feature taken from the description. The Board acted on the assumption that this feature had not been searched (see point [3.4] of that decision). By contrast, only features of a dependent claim as granted have been incorporated in the present case. It may be assumed that this subject-matter had been searched, so that a final assessment was possible. [3.9] Under these circumstances the Board has decided to admit the new main and auxiliary request as well as the new second auxiliary request into the proceedings. The Board finally dismissed the appeal. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 189/09 – Sweet ’N’ Risky
K’s Law – The ebook
T 189/09 – Sweet ’N’ Risky 9 Nov 2011
This decision deals with an appeal against the refusal of an application by the Examining Division. It contains a reminder of what is to be understood as plant varieties within the meaning of the EPC. Claim 1 before the Board read (in English translation): 1. Glyphosate tolerant sugar beet plant, characterized in that a) a DNA fragment can be amplified from the genomic DNA of said sugar beet plant, parts or seeds thereof, using polymerase chain reaction with a first primer having the nucleotide sequence of SEQ ID NO: 3 and a second primer having the nucleotide sequence of SEQ ID NO: 3, wherein the DNA fragments shows at least 95% identity with the nucleotide sequences of SEQ ID NO: 6, and/or b) a DNA fragment can be amplified from the genomic DNA of said sugar beet plant, parts or seeds thereof, using polymerase chain reaction with a first primer having the nucleotide sequence of SEQ ID NO: 9 and a second primer having the nucleotide sequence of SEQ ID NO: 10, wherein the DNA fragments shows at least 95% identity with the nucleotide sequences of SEQ ID NO: 12, and/or c) a DNA fragment can be amplified from the genomic DNA of said sugar beet plant, parts or seeds thereof, using polymerase chain reaction with a first primer having the nucleotide sequence of SEQ ID NO: 14 and a second primer having the nucleotide sequence of SEQ ID NO: 16, wherein the DNA fragments shows at least 95% identity with the nucleotide sequences of SEQ ID NO: 17. In what follows, the Board examines whether this subject-matter is excluded from patentability pursuant to A 53(b). *** Translation of the German original *** [2] According to decision G 1/98 [3.1] a plant defined by single recombinant DNA sequences is not an individual plant grouping to which an entire constitution within the meaning of the definition provided by the Community Regulation on Community Plant Variety Rights can be attributed. It is not a concrete living being or grouping of concrete living beings but an abstract and open definition embracing an indefinite number of individual entities defined by a part of its genotype or by a property bestowed on it by that part. [3] The subject-matter of claim 1 is a sugar beet plant which has been made glyphosate tolerant by incorporation of a CP4-EPSPS-gene within the plant genome. The plant is characterised by at least one of three PCR amplification fragments comprising, entirely or partly, the transgene insert. As the claimed plant is defined only by single recombinant DNS sequences it is not a plant variety according to decision G 1/98. Therefore, the subject-matter of the claims does not violate the requirements of A 53(b). To download the whole decision (in German), click here. The file wrapper can be found here.
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T 345/09 – Not Enough
K’s Law – The ebook
T 345/09 – Not Enough 8 Nov 2011
Even in the mechanical arts, one single example will not always be enough for establishing sufficiency of disclosure, as the present decision shows. All four opponents filed appeals against the decision of the Opposition Division (OD) maintaining the opposed patent in amended form. Claim 1 of the main request on file read (in English translation): 1. Process for the manufacture of a part with very high mechanical properties obtained after shaping by quenching when cooling, shaped by stamping of a strip of rolled steel sheet and more particularly hot rolled and coated with zinc or a zinc based alloy zinc ensuring protection of the surface and the steel, wherein:
the steel sheet is cut to obtain a steel sheet blank, the steel sheet blank is hot stamped to obtain the part, an alloyed intermetallic compound is provided on the surface before the stamping, ensuring protection against corrosion, against steel decarburization, which intermetallic compound may provide a lubrication function, said compound being obtained by transforming the coating into an intermetallic alloy by raising the temperature beyond 700°C, the excess material from the steel sheet required for the stamping operation is trimmed. (the underlined parts correspond to amendments with respect to claim 1 as maintained by the OD)
The Board dealt in detail with the question of whether the invention was sufficiently disclosed (A 100(b) and A 83): *** Translation of the French original *** [3] According to claim 1 of all the requests, the claimed process results in “very high mechanical properties” […]. Therefore, first of all the question has to be answered which mechanical properties have to be considered for the invention and which values they have to be attain in order to be qualified as “very high” according to claim 1 of all the requests. “Very high” [3.1] The [opponents] have pointed out that claim 1 and the description of the patent do not provide clear information on that topic. They mention “very high mechanical properties” (paragraph [0004]) “high mechanical properties” (paragraph [0014], which does not concern the invention according to the patent any more, and paragraph [0021] in the context of quenching). Also in the context of quenching, [the description] mentions “high hardness and high surface hardness of the coating” in paragraph [0005]. No values for these properties are mentioned at all, with the exception of the breaking strength (résistance à la rupture) (1500 MPa) in figure 1.
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T 345/09 – Not Enough
K’s Law – The ebook
The Board is of the opinion that these aspects do not need to be discussed because the invention is not sufficiently disclosed, for the following reasons. Which mechanical properties? [3.2.1] By amending claims 1 and the descriptions of all the requests (“very high mechanical properties obtained after shaping by quenching when cooling” … “in order to undergo quenching … by which said high mechanical properties are obtained”), the [patent proprietor] wanted to limit the claimed “very high mechanical properties” to those obtained at the end of the process, after quenching. The mechanical properties obtained before quenching, after hot rolling, even if “very high” did not play any role. The Board cannot accept this argument because the patent as granted already claimed this result before the quenching in claim 1 and in the relevant parts of the description (paragraphs [0004], [0010] and [0020]). According to claim 2 of the patent as granted and to paragraphs [0005] and [0021] the high mechanical properties were also obtained by quenching. In this context the argument of the [patent proprietor] according to which it was already implicit in the process of claim 1 of the patent as granted that the process included quenching and that claim 2 only added the value for one of these mechanical properties (hardness) cannot be accepted either because this distinction was clearly present in the patent as granted and is even underlined by the amendments of the description which the [patent proprietor] had to propose in order to eliminate it. Also, the argument of the [patent proprietor] according to which the claimed process only concerned “press hardening” cannot be endorsed because none of the claims 1 on file does contain any indication that the quenching was carried out in the press. [3.2.2] As a consequence, the opposed patent affirms in its paragraphs [0010] and [0020] that high (or increased) resistance to abrasion, wear and fatigue is obtained after the treatment consisting in raising the temperature, but before the stamping and even before the quenching. By alloying the coating with the steel, this treatment ensures not only a high hardness of the coating (paragraph [0015]) but also good lubricant properties (paragraphs [0021] and [0023]). The quenching has to result (paragraph [0005]) in high hardness of the steel and of the coating and in high breaking strength (1500 MPa, figure 1). As the process requires a sheet of rolled steel to be hot stamped, it is also obvious that the deformability (e.g. ductility and a certain resistance to rupture) before the stamping step constitutes one of these high mechanical properties, see also figure 1 showing a breaking of 500 MPa before stamping. For all those mechanical properties – with the exception of the hardness of the coating of the rolled steel sheet after stamping – there is no example in the opposed patent. Even for this hardness (600 HV 100 g) the steel composition, which is important for forming an alloy with the rolled zinc (or zinc-based [alloy]) which then forms the coating. [3.2.3] In consideration of the above, nine mechanical properties are referred to. Even taking into account the fact that there is a relationship between the hardness of the steel and its tensile strength (which is not identical to 1778 | 3398
T 345/09 – Not Enough
K’s Law – The ebook
the breaking strength mentioned in the opposed patent, see above), in order to satisfy the requirements of A 83 there are still eight mechanical properties to be established by trials to be conducted by the skilled person in order to carry out the invention. Parameters to be taken into account in the process steps [3.3] The sole example of a final product in the opposed patent deals with corrosion resistance, which, however, is not a mechanical property. In order to remedy the absence of relevant examples regarding the above-mentioned mechanical properties, which are essential to the invention, the skilled person would have to carry out a certain number of trials in order to establish what the invention is. In such a case, when the question of whether the invention is sufficiently disclosed within the meaning of A 83 is to be answered, one has to establish whether the skilled person has to make an excessive effort when carrying out those trials, over the whole range covered by claim 1. It is also necessary to establish the parameters that are to be taken into account for those trials. [3.3.1] The composition of the steel forming the sheet, which has to alloy with the zinc that is rolled onto the sheet in order to form the coating having the above-mentioned high mechanical properties, is one of the essential parameters. According to the sole example 1 of the patent the composition by weight of the steel (given in %) is as follows: carbon: 0.15 to 0.25; manganese: 0.8 to 1.5, silicon: 0.1 to 0.35; chrome: 0.01 to 0.2; titanium: less than 0.1; aluminium: less than 0.1; phosphor: less than 0.05, sulphur: less than 0.03; boron: 0.0005 to 0.01 (see paragraph [0022]). The example for a heat treatment by heating to 950°C does not mention this steel composition at all. The claims 1 of all the requests do not give any indication on the steel composition; in view of the fact that quenching is needed following the hot shaping, the [patent proprietor] has also argued that that a carbon content between about 0.15 to 0.8 % by weight – which range is greater than the range given in the description of the patent – essentially determines the quenchability. The steel composition and in “particular at least the content in carbon, in elements which are able to form carbides (i.e. manganese, molybdenum, vanadium, tungsten, niobium and titanium) and in boron have an influence on the quenchability. R1 [Guy Murry, “Transformations dans les aciers”, Techniques de l’ingénieur; traité matériaux métalliques, 1998; vol. MD1, dossier M1115], which is, as noted by the [patent proprietor] a compilation of general knowledge in the field of quenching steels when cooling them, shows these influences […]. As a consequence, at least the elements C, Mn, Mo, V, W, Nb, Ti and B of the steel composition correspond to at least eight parameters that have an influence on the quenchability and, therefore, on the mechanical properties of this steel after quenching when cooling. The Board is of the opinion that even for such a carbon content of 0.8 % by weight, the opposed patent does not inform the skilled person allowing him to determine how to adapt the other components of the steel, not to mention carbon contents between 0.25 and 0.8 % by weight, which would still have to be included in the trials, assuming that claims 1 of all requests are indeed at least directed at steels that are hardenable by quenching. [3.3.2] The trials on different steel compositions also have to take into account the zinc percentage that is to be used because claims 1 of all requests also refer, not only to a coating with 100 % of zinc but also to a coating with an “zinc based alloy”, as argued by [opponent] 03, i.e. having a zinc percentage of above 50 %. [3.3.3] As some of the above-mentioned mechanical properties (coating hardness, lubrication function, resistance to abrasion) that are necessary for the stamping step have to have their origin in the heating step resulting in a coating alloy, the above-mentioned trials also have to be repeated for different temperatures above 700°C, as claimed. The Board can accept that the skilled person, when carrying out those trials, will not go beyond temperatures which are detrimental to the coating or which can destroy it, contrary to the argument of [opponent] 04 based on B11. However, the range of temperatures to be taken into account would still have to extend to at least 950°C, mentioned in paragraphs [0023] and [0024], for obtaining the austenitization of the steel mentioned therein. As the deformability during stamping is also one of the properties mentioned, the influence of the temperature to which the rolled sheet is heated on its deformability also has to be part of the trials to be carried out. 1779 | 3398
T 345/09 – Not Enough
K’s Law – The ebook
In view of the result of the assessment of sufficiency of disclosure […] it is not necessary to consider the question regarding the temperature of the heat treatment in the range between 700°C and the AC1 point of the Fe-C system, i.e. 723°C, or the question of whether an Fe-C-Mn alloy can be transformed at a temperature of 700°C or not. Moreover, the trials have to be repeated for different durations during which the high temperature is applied, because figure 1 mentions a duration of between 2 and 10 minutes and the example at 950°C mentions a duration of 5 minutes, as well as for different speeds at which the temperature is increased (°C/s) during that step. These two parameters have an influence on the austenitization of the steel, which is also influenced by the steel composition […]. [3.3.4] This composition of the rolled steel in its state of total or partial austenitization, following the heating step at a temperature beyond 700°C also determines the final structure after the quenching step. As a matter of fact, the trials necessary for establishing the sufficiency of disclosure also have to take into account the search for this relationship. It is clear that quenching after partial austenitization results in any case in mixes of, for instance, ferrite + perlite + bainite or ferrite + bainite + martensite. This implies that the mechanical properties of a steel resulting from such a treatment are different from those of a steel obtained from a process including complete austenitization. [3.3.5] As far as the quenching step is concerned, it is clear that the cooling speed and the final temperature determine the final mechanical properties of the rolled sheet and of the above-mentioned coating, i.e. the hardness of the steel vs. tensile strength. […] These parameters also have to be part of the trials to be carried out. [3.3.6] As a consequence, the number of parameters to be observed is of at least fourteen. Conclusions [3.4] In view of the mechanical properties (eight or even nine) and the parameters to be followed (fourteen), in combination with the ranges to be applied to those parameters and the repetition of the trials – which are necessary for some of the mechanical properties that have to be guaranteed before and after quenching – all of it being required for carrying out the invention, the Board can only conclude that the skilled person is faced with a research programme that is so broad that it represents an excessive effort. Consequently, the description of the invention underlying claims 1 of all the requests […] is insufficient and the requirements of A 83 are not fulfilled. It is noted that the above conclusion does not depend on the question of whether the skilled person has the required knowledge for carrying out these trials. The Board can accept that R1 represents the general knowledge of the skilled person in this technical field. The conclusion is based on the quantity of properties and the parameters to be observed therein, the ranges to be applied and the repetitions to be carried out for the different steps of the process. […] The patent is revoked. Should you wish to download the whole decision (in French), just click here. The
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NB: Le blog du droit européen des brevets also comments this decision (here).
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found
here.
T 923/08 – Close To The Bone
K’s Law – The ebook
T 923/08 – Close To The Bone 7 Nov 2011
The applicant appealed against the decision of the Examining Division (ED) refusing the application under consideration. The ED was of the opinion that the subject-matter of claim 1 contained surgical steps and as such was excluded from patentability. Claim 1 of the main request before the Board read (in English translation): Method for determining the change or change in length of a first object (b) which is connected in an initial state to a second object (d) via a joint (k) and which has been changed after having been detached from the second object (d), wherein a reference system (e1) is attached to the second object (d) and the first object is attached to a second reference system (e2) that is not directly fixed to the first object (b), [wherein] at least one reference mark (f) is gathered (erfasst) on the first object (b) and the relative position between the at least one reference mark (f) and the reference system is determined and/or stored, wherein, after the first object has been disconnected from the second object (d), the first object (b) has been treated and the treated first object (b) and the second object have been assembled, the first object (b) is oriented with respect to the first reference system (e1) attached to the second object (d), using the position determined by the second reference system (e2), and a change of the first object (b) is determined by gathering anew the position of the at least one reference mark (f), or another reference mark the relative position of which with respect to the latter is known, with respect to the first reference system (e1) and by comparing it with the relative position between the at least one reference mark (f) and the first reference system (e1) gathered in the initial state.
Claim 1 of the auxiliary request read: Method for determining the change in length of a femur (b) which is connected in an initial state to a pelvic bone (d) via a joint (k), consisting in a first reference system (e1) which can be directly and preferably tightly attached to the pelvic bone (d), a second reference system (e2) 1781 | 3398
T 923/08 – Close To The Bone
K’s Law – The ebook
comprising a ribbon (j) which can be attached to a skin (c), which surrounds the femur (b) and which is movable with respect to the femur (b), by means of the ribbon (j), as well as a pointer (g) allowing to gather the position of at least one characteristic point (f) on the femur, and a navigation system (m) allowing to gather the positions of the first reference system (e1), the second reference system (e2) and the pointer (g), and to determine the change in length of the femur (b). The appellant also requested the following question to be referred to the Enlarged Board of appeal (EBA): Does A 53(c) prohibit the grant of patents for any method having a preceding surgical intervention as a prerequisite for achieving the objective of the method? Here is what the Board had to say: *** Translation of the German original *** [2.1] Pursuant to A 53(c) European patents shall not be granted in respect of methods for treatment of the human or animal body by surgery. In decision G 1/07 ([headnote 1]) the EBA has answered the question of whether an imaging method for a diagnostic purpose, which is to be carried out before or during a surgical intervention and which comprises or encompasses a step consisting in a physical intervention practised on the human or animal body, was to be excluded from patent protection under A 53(c) even if this step did not per se aim at maintaining life and health, as follows: A claimed imaging method, in which, when carried out, maintaining the life and health of the subject is important and which comprises or encompasses an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise, is excluded from patentability as a method for treatment of the human or animal body by surgery pursuant to A 53(c). [2.2] A similar situation underlies the present case. Here, too, the claim is directed at a method that is carried out in the context of a surgical intervention. As can be seen from the description, the claimed method is in particular designed to determine the change in length of a femur when, for instance, a damaged femur head is cut off during a hip replacement surgery and is replaced by an implant. This allows to determine the length of the operated femur as compared to its original length so that the reassembled hip joint differs as little as possible from a healthy joint […]. As a consequence, the recovery of the health of a human or animal body is relevant when the claimed method is carried out. An indispensable requirement for carrying out the claimed method consists in that in the initial state, i.e. before the hip replacement surgery has begun, or at its beginning, a first reference system is, preferably directly, attached to a pelvic bone, for instance by screwing it into the bone […]. As admitted by the appellant, the desired determination of the change in length of the femur cannot be obtained without a reference system that is firmly attached to the pelvic bone. Attaching the reference system to the pelvic bone is an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise. This has not been questioned by the appellant. However, the appellant is of the opinion that the attachment of the reference system to the pelvic bone is carried out before the claimed method has begun and that, consequently, the claimed method as such does not comprise an invasive step. This has been underlined in claim 1 according to the main request by the wording that the first reference system is attached to the second object. [2.3] However, a claimed method is excluded from patentability pursuant to A 53(c) even if it only encompasses (umfasst) a surgical step (G 1/07 [first headnote]). In the present case claim 1 of the main request neither expressly indicates that the claimed method is designed to determine the change or the change in length of a femur, nor that the first reference system is to be attached to the pelvic bone. However, the description clearly expresses that the claimed method is designed to determine the change or change in length of a femur. It does not describe any other application. Moreover, it clearly follows from it that the attachment of the first reference system to the pelvic bone is indispensable for the claimed 1782 | 3398
T 923/08 – Close To The Bone
K’s Law – The ebook
method and represents an essential feature of this method because it is required for solving the problem underlying the claimed method. The method claimed in claim 1 of the main request starts from a known method for determining the change or change in length of a femur, wherein a reference system (reference star) is directly attached both to the pelvic bone and to the femur, e.g. by screwing into the respective bone (EP-A-1 911 421, paragraph [0003]). According to paragraph [0004] the present invention aims at providing a method allowing a more simple measurement of the change, in particular the change in length of a joint part (femur). As a consequence, a claimed method that is proposed for solving this problem has to comprise all features or method steps that are indispensable for obtaining a simplified determination of such a change. One of the requirements for this is that a first reference system is firmly attached to the second object (pelvic bone), a second reference system is directly attached to the first object (femur) and a reference mark is attached to the second (sic) object (femur). As already mentioned above (see second paragraph of [2.2]) it is impossible to determine the change or the change in length of the first object (femur) with the claimed method without these measures. According to EP-A-1 911 421 […], contrary to the closest prior art mentioned above, the invention does not require a second reference system to be directly attached to the femur, so that there is no need for a surgical intervention at this point. If follows, in reverse, that it is not possible not to directly attach the first reference system to the pelvic bone. Therefore, the attachment of the first reference system to the second object (pelvic bone) is an indispensable step of the method according to the invention, which is encompassed by the method claimed in claim 1 of the main request, even if it is not mentioned in the claim. (The ED has referred to this step as being “implicit” in the claim.) [2.4] If such a step is not encompassed by the claim the requirements of A 84 (EPC 1973) are not complied with. As a matter of fact, A 84 (EPC 1973) together with R 29 (EPC 1973) requires a claim to give all the essential features that are necessary for defining the invention. This requirements has also been affirmed in decision G 1/07 [4.2.2; 3.3.1 – should read 4.3.1]. According to this decision, the assessment of whether a method step that is excluded from patentability may be omitted (ausgeklammert) from a claim, whether by leaving it out or by wording [the claim such that it] indicates that this step is carried out outside the claimed method, depends on whether the claimed invention is fully and completely defined by the remaining features of the claim without that step. As already explained, in the present case, the attachment of the first reference system to the second object (pelvic bone) is to be considered to be an indispensable and thus essential feature of the claimed method without which the invention is not fully and completely defined. [2.5] Therefore, the method according to claim 1 is not patentable pursuant to A 53(c), so that the main request of the appellant is to be dismissed. [2.6] In decision T 836/08 cited by the appellant claim 1 was directed to a method for determining the distal end of a bone guidance wire by means of a medical-technical optical tracking and navigation system. This was done – in a way similar to the present situation – by means of reference apparatus situated both on the proximal end of the wire and on the bone. However, in this decision the Board has assessed the method steps that are mandatorily required in a different way and has, therefore, come to the conclusion that claims 1 to 3 only define the way in which a technical device operates and that, as a consequence, the method was optical rather than surgical (see T 836/08 [3]). It may well be that the different assessment results from the fact that the Board has attached more importance to the claim category than the Board in that decision. However, this shows that finally there is some margin of assessment in any individual decision and that there is no entitlement to identical decisions. Such margins of assessment, which are necessary when decisions are to be taken, are only infringed if the principles of logic or essential basic facts have been disregarded or if some other logic (Denkgesetze) has been violated. This appears not to have been the case and has not been invoked by the appellant. The Board then dealt with the auxiliary request, which it found to comply with A 123(2), A 84, A 54 and A 56. It remitted the case to the ED with the order to grant a patent based on this request. 1783 | 3398
T 923/08 – Close To The Bone
K’s Law – The ebook
Finally, the Board dismissed the request to refer the appellant’s question to the EBA: [4] In order to ensure uniform application of the law, or if an important point of law arises, the Board of appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required for the above purposes (A 112(1)(a) EPC 1973). [4.1] As explained under [2.6], decision T 836/08 is based on the fact that that Board had assessed the method steps that are mandatorily required in the respective method in a different way and has, therefore, come to a conclusion in favour of the applicant, which is the same as in the present case. The reason for this was that the margin of assessment – to which any deciding body is entitled in its decision – for technically assessing the claimed features, and not a deviant use of the relevant general decision parameters developed by case law. This follows from the mere fact that this decision also applied the principles of G 1/07. [4.2] The question proposed by the appellant does not correspond to an important point of law either. As a matter of fact the question of whether A 53(c) prohibits the grant of patents for any method having a preceding surgical intervention as a prerequisite for achieving the objective of the method is so broad and indefinite that the answer to it is not necessary in order for the referring board to be able to decide on the appeal (cf. Case Law, 6th edition, 2010, VII.E.14.2). In particular, the expressions “any method” and “for achieving the objective of the method” are too indefinite to allow for a meaningful answer to the question which would allow to develop higher principles to be used in individual decisions. NB: The Board has also provided a headnote: If a method designed to gather data on the human or animal body mandatorily requires a surgical step for fixing a measuring element that is indispensable for carrying out the method to the human or animal body, this step is to be considered as an essential feature of the method which is comprised by such a method, even if there is no feature in the claim that is expressly directed to this step. Such a method is excluded from patentability pursuant to A 53(c). The omission of such a surgical step, whether by wording [the claim] such that [it indicates that] the surgically attached measuring element was already attached to the body before the beginning of the method or by means of a disclaimer violates A 84 EPC (1973) because such a method claim then does not contain all essential features of the claimed invention. To download the whole decision (in German), click here. The file wrapper can be found here.
1784 | 3398
T 132/90 – Schizo Prio
K’s Law – The ebook
T 132/90 – Schizo Prio 5 Nov 2011
Some colleagues preparing for the EQE have questioned me about this decision, which I did not know (although it is reported here in the Case Law Book). As the underlying case is somewhat exotic, I thought it would be a perfect weekend post. NB: All the passages cited below are translations of the German originals. One of the key points of this case concerns a claim to the priority of a Swiss application filed on March 11, 1983. The European application claiming its priority had been filed on March 9, 1984. Claim 1 of the patent as granted read 1. Projecting plate connection member for the insulated, non-positive connection to a projecting plate, with a parallelepipedic insulating member (2) and reinforcing rods passing through the same, characterised in that the reinforcing rods (3-6) are constructed as closed loops in a vertical plane, which are interconnected by transverse rods (7-14) running approximately parallel to the parallelepipedic insulating member (2) and in that the upper and lower parts of each loop (3-6) are interconnected by means of a clip (39).
The patent was opposed by another Swiss company. During the opposition proceedings, the patent proprietor initiated infringement proceedings against the opponent, which led the latter to examine the priority very closely. In a letter dated April 14, 1988, the opponent made the following statement: “… It has turned out that the original Swiss application was filed on March 11, 1983. As new parts have been added, in particular Figures 6 and 7 and the corresponding description, the Swiss date of filing was shifted to July 1, 1983. As far as the European patent is concerned, this means that these new parts do not have the priority of March 11, 1983 but that the effective date (Stichtag) for the prior art for those figures 6 and 7 is March 9, 1984 because, as stated on the cover sheet of the European patent specification 0 119 165 only the priority of 1785 | 3398
T 132/90 – Schizo Prio
K’s Law – The ebook
March 11, 1983 has been claimed. In this context [the opponent] refers to A 88(3) according to which the right of priority shall cover only those elements of the European patent application which are included in the application or applications whose priority is claimed. Annex 3 corresponds to the order concerning the shift of the date of filing of the patent application from March 11, 1983 to July 1, 1983, as well as the original office copy, where it is stated that this is above all relevant for the subject-matter of claim 3, i.e. the clips 39. As the clips, i.e. above all figure 6 and the corresponding description, which correspond to one of the features of claim 1 of the opposed European patent, do not benefit from the priority and, therefore, the corresponding effective date for the prior art is March 9, 1984, and as the attorney of the applicant has explained in his writ of July 21, 1987 […] that Egco AG has produced projecting plate connection members according to the invention since June 1983 […] and as it has to be assumed that either the members or at least leaflets comprising a complete description have circulated before March 9, 1984, i.e. within nine months from the start of production, this feature is most certainly deprived of novelty. …” On February 22, 1989, the OD explained its point of view: “… The present patent […] claims the priority of a prior Swiss application dated March 11, 1983. In view of the fact that the subject-matter of a claim that has been amended in the course of the proceedings was not disclosed in the original documents as filed, the Intellectual Property Agency has shifted the date of filing to July 1, 1983, after approval by the applicant. Regarding the disclosure of [the elements] contained in the original application dated March 11, 1983, [the OD] acts upon the assumption that this date is to be considered as the date of the first application within the meaning of A 87. The requirements of A 87(4) are not complied when the date of filing is shifted; the situation does not correspond to the case where a previous application has been withdrawn, abandoned or refused. In the present case, even an application of Article 4C, paragraph 4 CPU on A 87(4) would not lead to the conclusion that July 1, 1983 could be considered to be the date of the first application in view of the disclosure [of the elements] contained in the original application dated July 11, 1983. One requirements for considering a subsequent application to be the first application, pursuant to A 87(4), is that the previous application has not served as a basis for claiming a right of priority already. However, this is the case here because the European patent claims the priority of March 11, 1983. As far as the present patent is concerned, this means: Insofar as the patent, and in particular, claim 1, claims an invention consisting in a combination of features at least one of which had not been disclosed on March 11, 1983 but only at a later time, the European patent, from a substantive point of view, cannot claim the priority of March 11, 1983 or July 1, 1983 because the priority of a claimed embodiment of an invention can only be unitary. A 88(2) only allows claiming of multiple priorities only if and to the extent that an application or a claim encompasses several embodiments of an invention (each of which as such is complete). In the present case, this means that the date of filing is considered to be relevant for the assessment of the prior art. …” In his response dated August 22, 1989, the patent proprietor argued as follows: “… The communication dated February 22, 1989, correctly states that regarding the disclosure of [the elements] contained in the original application dated March 11, 1983, this date is to be considered as the date of the first application within the meaning of A 87. The claimed priority of the Swiss prior application n° 1361/83 dated March 11, 1983, is based on a regular filing under the national law of the state of filing (A 87(2)). The application that had been filed at that date was sufficient for allocating a date of filing. Whether this application was withdrawn, abandoned or refused. A 87(3) expressly states: “… whatever may be the outcome of the application”.
1786 | 3398
T 132/90 – Schizo Prio
K’s Law – The ebook
Moreover, A 87(4) contains a cumulative clause dealing with the cases where there were several previous applications concerning the same subject-matter. This is not the case here. A mere amendment of the application documents of the first application cannot be considered to be a previous application. Such an interpretation would be arbitrary and would clearly be in conflict with A 87(3). The right of priority shall cover only those elements which were already included in the application whose priority is claimed (A 88(3)). In the present case this holds true for all the features, with the exception of the clips 39. Therefore it has to be examined whether the opposed patent, considering the disclosure [of the elements] contained in the document dated March 11, 1983, on which the priority claim is based, amounts to a patentable invention and whether the clips, which were known at the date of filing of the European application, are essential to the invention or merely constitute an overdetermination (Überbestimmung). If the answer to both questions is yes, then the patent has to be maintained as granted and the opposition has to be dismissed. …” The OD maintained its position and revoked the patent because there had been public disclosures between July 1, 1983 and Marc 9, 1984. In his statement of grounds of appeal, the patent proprietor changed his argumentation and pled that July 1 was the priority date to be taken into account. “… We are of the opinion that there was only one application bearing reference n° 1361/83-8 and that its date of filing was July 1, 1983. The priority of this reference has been claimed. The date of filing has been corrected by the Agency. This correction was carried out at a time where the European application had already been filed and the priority had been claimed and expired. Therefore, the applicant has claimed the correct priority, based on the data and information at his disposal, and the reference is still correct today. Therefore, the public has not been misled. The opponent has found out without any difficulties that the Swiss patent n° 652 160, which has been granted on the basis of the application the priority of which is claimed that the date of filing was July 1, 1983. Therefore, when a change of date has been carried out, one has to act on the assumption that there has been no application dated March 11, 1983. Therefore, only the priority of July 1, 1983, has been claimed. The only problem arises from the fact that the date of filing was changed only at a very late stage, i.e. in 1985, by means of an order to this effect. If the Federal Intellectual Property Agency had decided the shift of date immediately after the filing of the amended documents, then the March 11 date would not have been appeared at all and only the July 1 date would have been mentioned. Before the decision to shift the date had been taken, the applicant could not claim anything else than what he had claimed, i.e. the priority of a first filing bearing the reference n° 1361/83 …” Here is how the Board handled this tricky problem: [3.1] Document D7 explains that the possibility to shift the date serves the purpose of sparing the applicant the burden of having to file a new application in cases where the technical documents have to be completed. It may be left unanswered whether the shift of date is to be understood as a withdrawal of the original application combined with a new filing (see GRUR Int., 1972, 1, pages 23 and 25). What is decisive is that the shift of date has an ex nunc effect and that, therefore, the original application exists until the date of the shift. As, pursuant to A 87(3) the outcome of the application is irrelevant from the point of view of the right of priority, this application can, therefore, be the basis for claiming a right of priority and the original date of filing can be acknowledged as the priority date. [3.2] The (original) application filed on March 11, 1983 before the Swiss Federal Intellectual Property Agency is a regular national application within the meaning of A 87(3) the priority of which had been regularly claimed according to the requirements of A 88(1) and R 38. As this application can be the basis for a right of priority […] it has to be acknowledged as such. [3.3] As this priority has been regularly claimed, A 87(4) does not apply in this case. Therefore, the application as amended, which had given rise to the shift of the date of filing to July 1, 1983, could only have been the basis 1787 | 3398
T 132/90 – Schizo Prio
K’s Law – The ebook
for claiming a right of priority insofar as it comprises features that had not been disclosed in the original application filed on March 11, 1983. However, the appellant has not claimed such a right of priority. Therefore, the application as amended is not to be considered any more. [3.4] According to A 88(3) the right of priority covers only those elements of the European patent application which are included in the application or applications whose priority is claimed. Thus in the present case, the right of priority is delimited as to its content by the certified copy of the Swiss patent application 1361/93 filed pursuant to A 88(1), which bears the annotation “Date of application: 11.03.83” […]. I let you imagine how things would work out in the (admittedly somewhat unlikely) case where the priority document is a European patent application that has been redated upon filing of missing parts under R 56 after the filing of a subsequent application claiming its priority. To download the whole decision (in German), click here. The file wrapper can be found here.
1788 | 3398
T 2115/08 – White & Deadly
K’s Law – The ebook
T 2115/08 – White & Deadly 4 Nov 2011
The opponent filed an appeal against the decision of the Opposition Division to maintain the patent in amended form. Claim 1 as maintained by the OD read (the additions with respect to claim 1 as granted are underlined): A white sealable, flame-retardant, biaxially oriented polyester film with at least one sealable outer layer A, one base layer B, and one other outer layer C, characterised in that the sealable outer layer A comprises from 40 to 95 mol% of ethylene terephthalate and from 60 to 5 mol% of ethylene isophthalate, has an average roughness Ra smaller than 30 nm and has a surface gas flow time of from 500 to 4000 s, the minimum sealing temperature being smaller than or equal to 110°C and its seal seam strength smaller than or equal to 1.3 N/15 mm, in that the non-sealable outer layer C has a coefficient of friction COF smaller than 0.5 and an average roughness of from 40 to 100 nm, in that the outer layer C and, where appropriate, the sealable outer layer A and/or the base layer B, comprise a flame retardant, and in that white pigments have been added to the base layer B. The Board found this claim to lack clarity: *** Translation of the German original *** [2.1] Claim 1 of the main request differs from claim 1 as granted, inter alia, in that the polyester film was limited to a white polyester film. The feature of a “white polyester film” is not contained in any of the granted claims. Therefore, it has to be examined whether this feature complies with the requirement of clarity pursuant to A 84. According to A 84, the claims have to be clear. As explained in decision T 560/09 [2], this requirements implies that the skilled person can without any doubt distinguish embodiments encompassed by the claim from embodiments that are not encompassed by it. Therefore, in the present case, it has to be examined whether the feature “white polyester film” is clear for the skilled person reading claim 1 and in particular whether it is possible without any doubt to distinguish white polyester films from polyester films that are not white. [2.1.1] The only information provided in claim 1 with respect to the whiteness of the polyester film is that there have to be white pigments in the base layer of the polyester film. If the content of white pigments in a transparent polyester film is increased, then the film will lose its transparency and become more and more cloudy (“milky”) until finally a white film is obtained. However, the claim does not give any indication for the amount of white pigments. In particular, there are no indications which degree of cloudiness or which white pigment content allows to consider the polyester film to be a “white polyester film”. [2.1.2] Moreover, polyester films and the pigments contained therein can comprise not only white parts but also parts of different colour, such as grey or yellow parts. From page 6, line 58 of the opposed patent (“Thus the film has a brilliant, white appearance without having a yellow tint.”) one may conclude, by inverse inference, that white polyester films may have a yellow tint. However, there are no indications until which content of yellow a polyester film is to be considered “white” within the meaning of the claim. [2.1.3] Finally, contrary to the assertions of the [patent proprietor] the white polyester film of claim 1 is not defined by a degree of whiteness above 70. Rather this definition is contained only in claim 4, which depends on claim 1, which implies that this is only a preferred feature. Thus claim 1 also encompasses embodiments that do not have this feature, i.e. polyester films having a degree of whiteness smaller than 70. However, the claim does not provide any information until which degree of whiteness polyester films are still covered by the claim feature “white polyester film”. The [patent proprietor] has argued in this context that the definition of the degree of whiteness in claim 1 followed from the description, and in particular from the degree of whiteness of greater than 70 indicated in Table 1 of the opposed patent.
1789 | 3398
T 2115/08 – White & Deadly
K’s Law – The ebook
Table 1 as published in the corresponding U.S. patent (“Inventive range” should perhaps have been translated as “Range according to the invention”) The Board agrees with the [patent proprietor] that Table 1 indicates that a degree of whiteness of greater than 70 is said to be the range according to the invention. However, this conflicts with the claims of the opposed patent from which it follows that claim 1 comprises films having a degree of whiteness smaller than 70 (see the first paragraph of [2.1.3]). Moreover, the wording of A 84 makes clear that a claim as such has to be clear (see, for instance, T 1129/97 [2.1.2-3]). Therefore, an explanation of the term “white” in the description of the opposed patent cannot lead to the expression “white polyester film” in claim 1, which as such is unclear, being considered to be clear. [2.2] Therefore, the skilled person working in the field of polyester films cannot assign an unambiguous meaning to the feature “white polyester film” in claim 1 of the main request. In particular, he cannot determine the limit with respect to the degree of cloudiness/portion of white pigment, portion of yellow and/or degree of whiteness until which a film complies with the feature “white polyester film”. Thus it is not possible to distinguish without doubt between polyester films according to the claim and polyester films that are not covered by the claim. Therefore, the limitation to white polyester films which the [patent proprietor] has introduced into the claim leads to claim 1 being unclear. [2.3] In its response to the appeal dated July 20, 2009, the [patent proprietor] has argued that the term “white” was a merely qualitative property assignment which helped the skilled person to understand the invention. Therefore, this term did not call for any closer definition. This understanding appears to imply that the requirement of clarity is less stringent for qualitative features. However, this is in conflict with A 84, which does not provide for any distinction between qualitative and quantitative features but requires that claims have to be clear. Therefore, this argument of the [patent proprietor] cannot succeed. […] The patent […] is revoked. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 974/10 – Quite Exceptional
K’s Law – The ebook
T 974/10 – Quite Exceptional 3 Nov 2011
In the present case, only the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. This creates a situation where the prohibition of reformatio in peius applies: in principle, the patent proprietor cannot amend the claims on file in a way that would leave the opponent in a worse position than if he had not appealed. But there are exceptions to this principle, and the Board has an interesting obiter dictum on this topic: [2.1] In a case where the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, the patent proprietor is primarily restricted during the appeal proceedings to defending the patent in the form in which it was maintained by the OD in its interlocutory decision, see the decision of the Enlarged Board of Appeal (EBA) G 9/92 [point 2 of the order, first sentence]. The defence may include proposing amendments to the claims if they are appropriate and necessary. The prohibition of reformatio in peius is the principle that, if defending the patent in the form in which it was maintained is not possible, the respondent (patent proprietor) should not be allowed to pursue claims which, if held allowable, would put the appellant in a worse situation than if it had not appealed. In decision G 1/99 [order] the EBA allowed an exception to this principle: “However, an exception to this principle may be made in order to meet an objection put forward by the opponent/appellant or the Board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the OD in its interlocutory decision.” The EBA laid down a strict order of possible amendments that a patent proprietor was allowed to file in order to overcome the deficiency. The EBA also stated (see decision G 1/99 [12, last sentence]): “However, in particular if the patent cannot be maintained for reasons which were not raised at the first instance, the non-appealing proprietor deserves protection for reasons of equity” (emphasis added). In the present case the clarity objection […] was raised by the Board for the first time in appeal. The respondent must therefore be allowed to file amendments as foreseen in decision G 1/99 […], which decision gives due regard to the principle of equity (see also point [13] and point [14], last sentence, of the reasons). However, the Board then found that the request under consideration, if held allowable, did not put the appellant in a worse situation than if it had not appealed. Therefore, the procedure laid down in G 1/99 was not relevant. To read the whole decision, click here. The file wrapper can be found here.
1791 | 3398
T 1973/09 – Ultra Vires
K’s Law – The ebook
T 1973/09 – Ultra Vires 2 Nov 2011
On January 7, 2005, the Examining Division (ED) decided to refuse the European application under consideration because it considered that the subject-matter of claim 1 lacked an inventive step. The
applicant
filed
an
appeal
against
that
decision,
together
with
amended
claims.
The Board (decision T 697/05) considered it appropriate to remit the case to the ED so as to give the appellant the possibility to argue its case before two instances. On May 8, 2009, the ED refused the application again, for lack of inventive step and lack of clarity. This time the applicant did not file an appeal in time but filed a request for re-establishment on August 26, 2009. The professional representative of the applicant pointed out that the applicant had taken all due care by issuing instructions in good time (on June 5, 2009). He then explained the circumstances of the appeal:
On September 8, 2009, the representative filed a copy of the relevant fax transmission report:
1792 | 3398
T 1973/09 – Ultra Vires
K’s Law – The ebook
On September 23, 2009, the formalities officer of the ED sent a written decision allowing the request for reestablishment. The ED then decided not to rectify its decision and transmitted the case to the Board of appeal. The Board did not like the way in which the request for re-establishment had been handled: Request for re-establishment of rights (A 122) [1.1] By its decision dated 23 September 2009, the formalities officer acting on behalf of the ED allowed the applicant's request for re-establishment of rights dated 25 August 2009. This decision had the effect that the notice of appeal was deemed to have been filed in due time and the proceedings were continued. [1.2] Under R 136(4), the department competent to decide on a request for re-establishment of rights is the department competent to decide on the omitted act. [1.3] In the present case the omitted act is the filing of the notice of appeal, which is to be carried out within the time limit defined under A 108. The department competent to decide whether the appeal is inadmissible for noncompliance with A 108 is, under R 101(1), the Board of Appeal. Therefore only the Board of Appeal is entitled to decide upon the request for re-establishment of rights. [1.4] A 109(1), which empowers the department of first instance in ex parte proceedings to set aside its own decision if it considers an appeal to be “admissible and well founded” (emphasis added by the Board), provides an exception to the principle of general devolutive effect of the appeal, in order to allow an interlocutory revision. This exception, as such, has to be construed narrowly in connection with the interlocutory revision, and not as a broader entitlement for the first instance to decide whether an appeal is admissible (T 473/91, T 808/03, and Case Law of the Boards, 6th. edition 2010, VI.E.3.1, page 495). This is reflected in the Guidelines for Examination (E-VIII, 2.2.7) which indicate that the request for re-establishment is only then to be considered by the competent department if interlocutory revision is to be granted, which in the present case it was not. This exception is necessary since interlocutory revision requires that an appeal exists before a positive decision can be taken for the appellant to grant the interlocutory revision. When it considers the appeal to be wellfounded, the department of first instance is required therefore to form an opinion as to the admissibility of the appeal. This does not infringe upon the power of the Boards of Appeal to decide upon the admissibility of appeals since it applies only to well-founded appeals which in the case that they are also considered by the department of first instance to be admissible never reach the Boards of Appeal. Since the department of first instance only takes positive decisions on admissibility of an appeal in the case of well-founded appeals the rights of the appellant, at least in so far as it has not requested the refund of the appeal fee, are preserved, since it achieves what it has requested without the necessity of going through a complete appeal procedure. [1.5] The department of first instance, however, in the present case followed neither A 109(1) nor the Guidelines for Examination since it decided upon the request for re-establishment of rights to conclude that the appeal was admissible, but not well founded. The decision of the department of first instance was thus ultra-vires. [1.6] Since the department of first instance was not empowered to take the decision that it did, the Board sets aside the decision of the department of first instance to allow the request for re-establishment of rights. Admissibility of the appeal 1793 | 3398
T 1973/09 – Ultra Vires
K’s Law – The ebook
[2.1] The Board has considered the fax transmission report submitted by the appellant with its letter of 8 September 2009 and concludes from this that the letter dated 29 June 2009 containing the notice of appeal in the present case was sent and received by the EPO on that same date. [2.2] However, the Board notes that the facsimile number of the addressee of the fax (+49 089 2399 2528) is in fact the number of the Treasury and Accounts department of the EPO, i.e. it is not the facsimile number (+49 089 2399 4465) of the filing office of the EPO in Munich (Article 3 of the Decision of the President of the EPO dated 12 July 2007 concerning the filing of patent applications and other documents by facsimile, Special edition 3/2007 of OJ EPO, page 7, and point 3 of Notice from the EPO dated 12 July 2007 concerning the availability of the EPO filing offices, Special edition 3/2007 of OJ EPO, page 6). [2.3] Should it have been established that the said notice of appeal was not duly filed at the EPO, the appellant could at least legitimately have expected to receive a corresponding warning from the EPO that its filing was deficient, i.e. that it was sent to the wrong fax number, because the deficiency was readily identifiable for the EPO. Since 20 days then remained for the appellant to file a notice of appeal at a correct EPO address, the Board is convinced that the appellant would have filed its already prepared notice of appeal again at the correct address, both in due time and in due form. [2.4] Therefore, applying the established case law on the principle of protection of legitimate expectations, the Board deems that the notice of appeal was filed on 29 June 2009, i.e. in due time. Since the order for payment of the appeal fee was part of the same letter dated 29 June 2009, the same applies to the payment order. [2.5] Consequently, the Board deems the appeal to be admissible without any necessity to consider a reestablishment of rights. Re-imbursement of the fee for re-establishment of rights [3.1] In view of the above finding that the appeal was admissible without consideration of the request for reestablishment of rights, the request for re-establishment of rights has no more basis. [3.2] Therefore, the Board orders the reimbursement of the corresponding fee already paid by the appellant. The Board then dismissed the appeal on substantive grounds. Should you wish to download the whole decision, click here. The file wrapper can be found here.
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T 711/07 – Nothing New Under The Sun
K’s Law – The ebook
T 711/07 – Nothing New Under The Sun 1 Nov 2011
as wise man Qohelet put it, “There is nothing new under the sun.” Apparently Munich is under the sun, at least as far as admissibility is concerned. The patent proprietor appealed against the decision of the Opposition Division to revoke the opposed patent. In response to the communication annexed to the summons to oral proceedings (OPs), the patent proprietor filed two auxiliary requests replacing the auxiliary request on file. The patent proprietor did not attend the OPs. The Board found the main request on file not to comply with the requirements of A 123(2). It admitted the first auxiliary request because it was an appropriate response to the objections raised in the summons. However, it dismissed this request because its subject-matter lacked inventive step. The Board then dealt with the second auxiliary request. It found that the subject-matter of this request introduced a number of new complex issues at a time when this was not appropriate from the point of view of procedural economy and the state of the proceedings and could not be dealt with in the absence of the appellant. Therefore, it decided not to admit the second auxiliary request into the appeal proceedings in application of Article 13(1) RPBA. The decision also contains an interesting paragraph on the famous Article 12(4) RPBA: [5.9] In his letter of 1 April 2011 the appellant argued with respect to the admissibility of the second auxiliary request under Article 12(4) RPBA that in the time since the opposition had been filed the practice of the boards had changed significantly. It used to be the case that a party to an appeal could rely on being able to submit amendments at various points in the procedure without being questioned as to why the amendments had not been first introduced in the opposition procedure. In respect of this argument it is sufficient to note that the board declined to admit the second auxiliary request into the appeal proceedings in application of Article 13(1) RPBA, and not of Article 12(4) RPBA referring to the power of the boards “to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings”. The latter provision had been cited by the board in respect of the auxiliary request filed with the statement setting out the grounds of appeal. However, the appellant submitted further amendments in reply to the board’s communication accompanying the summons to OPs which introduced a number of new complex issues at a time when this was not appropriate from the point of view of procedural economy and the state of the proceedings and could not be dealt with in the absence of the appellant. It is therefore only for the sake of completeness that the board adds that the provisions of Article 12(4) RPBA, previously numbered Article 10a(4), have applied to proceedings before the boards in which the notice of appeal was received after 1 May 2003, i.e. long before the opposition was filed in February 2005, see Articles 2 and 3 of the decision of the Presidium of 28 October 2002 (OJ EPO 2003, 62) in conjunction with Article 2 of the decision of the Administrative Council of 12 December 2002 (OJ EPO 2003, 61). Article 10a was renumbered as Article 12 by the decision of the Presidium comprising the amended RPBA of 12 September 2007 (OJ EPO 2007, 537), with the wording of paragraph 4 left unchanged. This decision was approved by the decision of the Administrative Council of 25 October 2007 (OJ EPO 2007, 536). Pursuant to Article 24 RPBA, “[t]hese Rules of Procedure shall enter into force upon entry into force of the revised text of the EPC in accordance with Article 8 of the Revision Act”. The date of entry into force of the revised text of the EPC was 13 December 2007. Thus the renumbering of Article 10a as Article 12 became effective as of 13 December 2007. Should you whish to download the whole decision, just click here.
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T 711/07 – Nothing New Under The Sun
K’s Law – The ebook
The file wrapper can be found here. NB: There is nothing new on this blog - this decision has already been reported on Le blog du droit européen des brevets.
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T 226/07 – Exploring Strange Places
K’s Law – The ebook
T 226/07 – Exploring Strange Places 31 Okt 2011
The patent proprietor filed an appeal against the decision of the Opposition Division revoking the opposed patent. He filed a new request during the oral proceedings (OPs) before the Board. Claim 1 as amended read (in English translation): Motor vehicle having B columns, in particular of the coupé or cabriolet type (1;101), comprising side walls (3) delimiting the occupants’ space below a window breast (16), the B columns being arranged within the vertical extent of the side walls, wherein vertically oriented reinforcement profiles (5) are assigned to the B columns in order to absorb forces acting laterally on the vehicle (1;101), wherein there is at least one cantilever arm extending substantially transversely to the vehicle between the B columns, wherein the cantilever arm (6) is connected to the vehicle via a connection area (15) that is separated from the lower end of the reinforcement profile (5), characterised in that a cantilever arm (6) extends transversely to the reinforcement profiles (5) towards the vertical longitudinal centre plane (7) of the vehicle and in that the cantilever arms (6) are separated from one another by a central joint (9) in the region of the vertical longitudinal centre plane (7). (my emphasis)
The opponent pointed out that this request was late filed and should not be admitted, in particular because the “central joint” feature had not been part of any of the claims on file before. What I found interesting in this decision is how the Board dismissed this argument. *** Translation of the German original *** [2] As submitted by the [opponent], the feature “by a central joint”, which is an addition with respect to claim 1 of auxiliary request 4 filed together with the statement of grounds of appeal, has been extracted from the description of the patent. However, the skilled person understands from the introductory part of the description of the patent (see, in particular, column 2, lines 26 to 43) that the use of a central joint is an important aspect of the inventive idea (Erfindungsgedanke) disclosed in the patent in the context of the problem mentioned therein (column 1, lines 40 to 50: reducing repair costs). 1797 | 3398
T 226/07 – Exploring Strange Places
K’s Law – The ebook
Moreover, one may note that this feature corresponds to the subject-matter of dependent claim 3 of the priority document […]. In view of the fact that the question of priority was extensively discussed during the opposition proceedings, the [opponent] necessarily knew the significance of this feature. Moreover, the added feature limits the subject-matter of independent claim 1 of the previous auxiliary request 4 in a direction that corresponds to the disclosed inventive idea (cf. T 1685/07). Therefore, in the present circumstances of this case, the Board did not see any incentive not to admit this request when exercising its discretion pursuant to Article 13(1) RPBA. Nor does the Board consider that the requirements for postponing the OPs pursuant to Article 13(3) are fulfilled in the present case because the subject-matter as limited does not create the need for any particular preparation in view of the OPs. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 312/11 – On Remedies
K’s Law – The ebook
T 312/11 – On Remedies 29 Okt 2011
The present decision deals with a case which itself is much more interesting than the decision it resulted in. The application under consideration was filed under the PCT on April 27, 2001, claiming three priorities. There was an A2 publication on November 8, 2001. Only two of the three priorities were completely cited.
On February 12, 2002, the WIPO informed the applicant that the third priority claim was deemed not to have been made because the applicant had not responded to the invitation under Rule 26bis.2(a) PCT. The A3 publication dated May 10, 2002, mentioned only the first two priorities. The WIPO transmitted two priority documents to the EPO. On November 22, 2002, the applicant entered the European phase. In a letter to the EPO dated February 7, 2003, the applicant filed amended claims and also made a statement on the priority issue:
On April 10, 2003, the Receiving Section of the EPO contacted WIPO on this matter. The answer was as follows:
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T 312/11 – On Remedies
K’s Law – The ebook
On March 27, 2003, the EPO informed the applicant accordingly:
WIPO also had become aware that page 25 of the A2 publication was incomplete and re-published the application (as an “A9” document) on July 3, 2003. Again, only two priority documents were cited. In the meantime the examination proceedings had started. After a considerable number of A 96(2) notifications and telephone interviews, the Examining Division (ED) finally granted a patent with amended claims. The decision to grant a patent, dated June 25, 2009, became effective on July 22 of the same year with the publication of the mention of the grant in the European Patent Bulletin. On June 2, 2010, the appellant filed a request to the ED for correction of the decision according to R 140. It argued that the reference to the third priority document, erroneously omitted from the publication, should be introduced into the bibliographic data of the patent.
On the very same day, the representative filed an appeal and a request for re-establishment of rights in order to remedy the failure to observe the time limit for filing an appeal. The appellant requested that the decision to grant a patent be set aside and a new decision be issued including the reference to the third priority document. On January 26, 2011, the ED informed the appellant that the requested correction under R 140 was considered allowable. With a letter dated April 28, 2011, the appellant withdrew the appeal and requested reimbursement of the appeal fee and of the fee for re-establishment of rights. It alleged that the appeal was redundant in view of the fact that the ED’s decision to correct the appealed decision applied ex tunc. The appeal should thus be considered inadmissible or deemed not to have been filed. 1800 | 3398
T 312/11 – On Remedies
K’s Law – The ebook
On June 6, 2011, the Board nevertheless issued a provisional opinion: [6] … the board considers that, prior to the examination of the appellant’s request for reimbursement of the appeal fee under R 103, it is necessary to examine its request for reestablishment of rights for filing an appeal. [7] The present appeal was filed almost one year after the notification of the decision to grant, thus clearly outside the time limit of two months set by A 108. Thus the appeal can only be considered duly filed if the request for re-establishment of rights under A 122 is allowed. However the board is of the opinion that the request for re-establishment of rights cannot be granted because it appears that not all due care required by the circumstances has been taken. [8] In particular it is noted that the issue of the missing reference to the third priority document had been raised once by the appellant, then applicant, in letter dated 07 February 2003. A subsequent e-mail exchange between the EPO and the International Bureau is on file, wherein a reply from the International Bureau confirmed that there had indeed been a mistake which was to be corrected and that a confirmation would be sent to the applicant and authorities concerned. The Receiving Section of the EPO then issued a communication dated 27 May 2003 informing the applicant that the third priority would be registered upon receipt of the relevant communication from the International Bureau, and that a correction in Section II of the PCT Gazette would be published. The applicant was furthermore urged to take up contact with the PCT Receiving Office in order to speed up the process, and it was informed that the mentioned priority document was not yet available in the EPO’s files. [9] There is no evidence on file that the relevant communication from the International Bureau was received, neither by the EPO nor by the applicant, during the grant proceedings. Moreover a correction in Section II of the PCT Gazette was published in PCT Gazette No.27/2003 (03 July 2003) but it only concerned replacement of a page of the description and did not make any reference to priority. Pursuant to this entry in the PCT Gazette, a corrected version of the international publication pamphlet was published on 03 July 2003, wherein the third priority document is still missing. [10] Despite the absence of any indication that the issue of the third priority claim had been settled, the applicant has made no further enquiries in this respect during the entire examining procedure. It is noted that a communication from the ED, dated 18 February 2005, even states that “[t]he present application claims priority from US 60/200,580, filed on 28.04.2000 and from US 60/240,169, filed on 13.10.2000.”, thus omitting a reference to the third document. Exactly the same statement is made again-in a further communication of the ED dated 06 June 2006. Finally an annex to the communication under R 51(4) EPC 1973 dated 20 November 2007, comprising the bibliographic data for the patent publication, indicates the same two priority documents mentioned above. [11] It appears that the applicant should have been alerted, if not by the abovementioned communications from the ED, then at the latest by the annex to the R 51(4) EPC 1973 communication, that the issue of the third priority document had not yet been satisfactorily settled. However the applicant, who made several submissions with letters of 28 May 2005, 7 September 2007 and 11 March 2009, failed each time to address this problem. [12] The appellant has disclosed in detail the procedure followed at the representative’s office in relation to R 51(4) EPC 1973 communications. Said procedure comprises checking by the office’s formalities department and by members of the office’s biotechnology group, and involves the use of a checklist covering various details to ensure that the records held by the EPO are correct. However it was inadvertently failed to notice that there was an inconsistency between the representative’s own records and the bibliographic data attached to the R 51(4) EPC 1973 communication in what concerned priority designations. The appellant argues that this should be considered as an isolated failure in a robust and satisfactory system, which should be excused pursuant to A 122(1). [13] The board considers that, given the circumstances of the present case in which there was a problem with priority designations from the onset, a more thorough control, specifically directed to that issue, would have been required to monitor and follow up, at the latest upon 1801 | 3398
T 312/11 – On Remedies
K’s Law – The ebook
receipt of the communication under R 51(4) EPC 1973, the settlement of this issue. Such a control however has obviously not taken place. [14] Moreover, the appellant has not given any explanation about the reasons why the priority issue was not addressed all along the examination procedure. Furthermore, it should also be noted that it is only almost one year after the notification of the decision to grant that the appellant took again action concerning the third priority, following instructions from the proprietor’s US representative, which again implies that the system implemented at the European representative’s office was not sufficiently efficient. [15] The board is thus of the opinion that the request for re-establishment of rights under A 122 cannot be allowed and as a consequence the appeal is deemed not filed within the due time limit stipulated by A 108. Therefore, the board is inclined at present to issue a negative decision in line with the above considerations and order the reimbursement of the appeal fee but not of the fee for re-establishment of applicant’s rights. … With a further letter dated August 5, 2011, the appellant withdrew its request for re-establishment of rights and its request for reimbursement of the fee for re-establishment of rights. The appellant finally requested that the appeal fee be reimbursed. The reasons for the final decision of the Board read: [1] Although the present appeal was withdrawn from consideration by the Board of Appeal in respect of admissibility and allowability, the Board of Appeal, in the exercise of its inherent power, is authorised to examine the appellant's request for reimbursement of the appeal fee (see T 41/82 and J 12/86). [2] According to A 108 the notice of appeal shall be filed, in accordance with the Implementing Regulations, at the EPO within two months of the notification of the decision. Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid. [3] In the present case the notice of appeal was filed and the appeal fee was paid almost one year after the notification of the decision of the ED, thus clearly outside the time limit of two months set by A 108. [4] Therefore, the appeal is deemed not to have been filed. There is no legal basis for payment of the appeal fee which, for this reason, is reimbursed. I find this case noteworthy because it raises some interesting questions. The ED granted a request for correction under R 140 - which rule concerns linguistic errors, errors of transcription and obvious mistakes - but should it have done so? Was there really an error in the decision to grant a patent? Most certainly there had been an error in the PCT proceedings, but can the decision to grant a patent be said to have been affected by this error? The appeal is interesting, too. Was there any valid ground for appeal? Was the applicant really adversely affected within the meaning of A 107 by the decision to grant a patent? Obviously, the lacking priority could in principle have adversely affected the applicant, e.g. if the ED had dismissed the main request of the applicant as lacking novelty over some prior art filed or published between the third priority date and the PCT filing date and had granted only an auxiliary request. But this appears not to have been the case here. So even if the request for re-establishment had been granted, the appeal might have been inadmissible. Having said this, as the Board did not go so far, we shall never know for sure. What do you think? To read the whole decision, click here. The file wrapper can be found here.
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T 584/09 – Never Mind The Translation
K’s Law – The ebook
T 584/09 – Never Mind The Translation 28 Okt 2011
The opponent filed an appeal against the decision of the Opposition Division to maintain the patent in amended form. The decision contains an interesting paragraph dealing with the novelty of claim 5 of auxiliary request 5, which read (in English translation): Moulded article (Formkörper) for the non-systemic control of parasitic insects on animals, comprising imidacloprid in a mixture with synergists or other active compounds. *** Translation of the German original *** [6.3] Claim 5 of auxiliary request 1 is directed to a moulded article (Formkörper) comprising imidacloprid for the non-systemic control of parasitic insects on animals. Examples 1 and 10 of document D13 discloses wool, woollen yarn or a sheet-like structure of wool which have been treated with a dye solution containing imidacloprid in order to protect the dyed material against being eaten by moths and beetles. [6.3.1] In its argumentation regarding lack of novelty, the [opponent] referred to the English translation of claim 5 where the term Formkörper was translated by “shaped article”. A sheet-like structure of wool such as the one disclosed in document D13 was a “shaped article”. Moreover, this sheet-like structure was impregnated with imidacloprid as well as another insecticide, the quantities of which were sufficient for non-systemic control of parasitic insects. Therefore, it was suitable for the use referred to in claim 5, irrespective of whether such a use had been disclosed. [6.3.2] First of all it has to be noted that pursuant to A 70(1), it is the German language that is relevant because it is the language of the proceedings. Therefore, when assessing novelty, one has to consider the meaning of the German term Formkörper and not what might be encompassed by “shaped article” as used in English. The technical expression Formkörper does not simply refer to a three-dimensional object, i.e. an article having a certain shape, but designates a particular object that has been produced in a particular way, i.e. from moulding compounds (Formmassen). The latter are liquid, paste-like compounds, in particular synthetic materials, which can be moulded by non-cutting moulding (e.g. injection moulding, extrusion, compression) into moulded articles. Wool, woollen yarns and sheet-like structures of wool such as those disclosed in document D13 are not encompassed by this term. For this reason alone document D13 cannot anticipate the subject-matter of claim 5. [6.3.3] During the oral proceedings the [opponent] also argued that the fumigating coils mentioned in document D8 were encompassed by the expression “shaped article”. Moreover, this document also mentioned impregnated natural and synthetic materials. The materials cellulose and starch mentioned in paragraphs [0053] and [0079] of the opposed patent were encompassed by those expressions. [6.3.4] However, the expressions “synthetic and natural materials” in document D8 and “moulded article” (Formkörper) are not equivalent at all. For example, materials made from wool, paper or leather are encompassed by the expression “natural and synthetic materials” but do not qualify as “moulded articles” […]. Also, the fact that according to the opposed patent both cellulose and starch qualify for the production of moulded articles does not mean that, conversely, that the impregnated materials mentioned in document D8 necessarily are moulded articles. The same holds true for the fumigating coils mentioned in document D8. This document does not explain from which materials and how they were made, nor has the [opponent] provided proof that they necessarily are or have to be moulded articles within the above meaning. [6.4] Therefore, the Board comes to the conclusion that claims 1 and 5 of auxiliary request 1 are novel within the meaning of A 54.
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T 584/09 – Never Mind The Translation
K’s Law – The ebook
Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1652/08 – Changes In Composition
K’s Law – The ebook
T 1652/08 – Changes In Composition 27 Okt 2011
The patent proprietor filed an appeal against the decision of the Opposition Division (OD) revoking the opposed patent. The appellant requested the Board to remit the case to the OD because the composition of the latter had changed before the oral proceedings (OPs). This was a substantial procedural violation because the parties had not even been informed on the change before the OPs. As a consequence, it was not certain that the provisional opinion expressed in the summons was maintained and it could not be excluded that the new chairman would have a different approach. Therefore, the proprietor’s right to be heard had been violated. Decision T 862/98 was cited in this context. The Board was not persuaded: *** Translation of the German original *** [2.1] The appellant considered the fact that the composition of the OD had been modified before the OPs were held constituted a substantial procedural violation that had to result in the impugned decision being set aside and the case being remitted to the first instance. For the following reasons, the Board has come to the conviction that there was no procedural violation. [2.2] The change of the chairwoman of the OD took place after the summons to OPs had been sent (on November 21, 2007) but before the OPs (held on July 10, 2008). The proceedings preceding the OPs and in particular all the exchanges between the OD and the parties were exclusively in writing. Therefore, the new chairwoman had the opportunity of getting acquainted with and assessing all the facts and arguments which had been submitted by the parties in the very same way as the original chairwoman. The OPs were held by the OD in its new composition. This composition was not changed any more until the end of the proceedings. All persons taking part in the impugned decisions had the same opportunity of getting completely acquainted with and assessing all oral and written submissions of the parties. [2.3] The present case differs considerably from the facts underlying decision T 862/98. This decision dealt with a change of the composition of the OD after the OPs. In agreement with the former case law the Board in T 862/98 found that such changes of the composition generated the risk that the written decision did not correctly reflect the opinion of the three members who participated in the OPs and that a member that had joined the Board (sic) after the OPs was not aware of what actually happened in the course of the OPs (cf. T 862/98 [2.3.2] referring to T 243/87). [2.4] This risk does not exist in a case where the composition of the OD has not been modified between the OPs and the end of the proceedings. Therefore, the Board comes to the conclusion that a modification of the composition of the OD carried out before the OPs as such does not constitute a violation of the right to be heard and that no procedural violation justifying that the impugned decision be set aside and the case be remitted [to the OD] has occurred in the present case. The OD was correctly composed at any time and, therefore, A 19(2) has not been violated either. [2.5] The appellant pointed out that he had been surprised by the change in the composition of the OD and that he could not rely any more on the fact that the provisional opinion of the OD explained in the summons [to OPs] did indeed reflect the opinion of the OD in its new composition. For this reason also the right to be heard had been violated. [2.6] Whether the right to be heard has been violated is to be assessed only on the basis of whether the grounds on which the decision is based have been brought to the attention of the parties and whether they had an opportunity of commenting them (A 113(1)). This would also hold true if the OD had changed its position between the summons and the OPs, which has not been shown by the appellant anyway.
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T 1652/08 – Changes In Composition
K’s Law – The ebook
The appellant has not established that he could not comment on the reasons for the subsequent decisions in an appropriate way. Therefore, the Board does not see any indication that a violation of the right to be heard or another substantial procedural violation has occurred. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1194/08 – Stick To What You Said
K’s Law – The ebook
T 1194/08 – Stick To What You Said 26 Okt 2011
The patent proprietor and the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the opposedpatent in amended form. The parties were summoned to oral proceedings (OPs) on 22 June 2011. With its letter of 13 May 2011 the proprietor indicated that it would not be present. Claim 1 of the main request (patent as granted) reads as follows: Automatic rotating labelling machine (1) comprising a rotatable support (3) carrying means (5) for gripping bottles or containers (6) to be labelled, said support (3) being operatively associated to at least one labelling unit (8, 9) that applies labels (19) to said bottles or containers (6), said rotatable support (3) being arranged at an upper end of said machine (1), and said gripping means (5) gripping said bottles or containers (6) at an open or upper portion thereof, and holds them below said support (3), characterised in that it comprises an upper platform (20) supported by columns (21) carrying at least a motor (4) and said rotatable support (3).
The Board made an interesting statement on how the OD had dealt with a late filed document: [2.1] E15 and E16 were late filed documents in the opposition proceedings. For the purpose of the present decision it is only necessary to consider the admittance of E15. [2.2] E15 was filed by the opponent during the opposition proceedings with letter of 5 June 2007. The preceding communication of the OD dated 16 February 2007 had been favourable to the opponent. Nevertheless, the opponent considered that it wished to respond to one of the comments of the OD regarding a feature that the OD considered was not disclosed in the nearest prior art document. It responded by filing E15 […]. [2.3] With its letter also dated 5 June 2007 the proprietor filed three auxiliary requests. With its subsequent letter of 24 October 2007 the proprietor filed comments regarding E15 without objecting to its admittance into the proceedings. [2.4] In its provisional opinion accompanying the summons to OPs dated 31 October 2007 the OD indicated that E15 was accepted as a belated submission. It further considered that the first auxiliary request was allowable taking into consideration E1 to E15.
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T 1194/08 – Stick To What You Said
K’s Law – The ebook
[2.5] In its letter dated 28 March 2008, i.e. five days before the OPs, the proprietor objected for the first time to the admittance of E15 into the opposition proceedings. It repeated this objection at the start of the OPs before the OD. [2.6] The OD decided to reject the document as having been late filed and because it considered that it was not more relevant than E1 or E4 […]. [2.7] The opponent objected in its appeal grounds to the non-admittance of the document into the proceedings. Moreover, it also referred to the document in its response dated 19 December 2008 to the appeal of the patent proprietor with respect to the fourth auxiliary request of the proprietor […]. [2.8] In the opinion of the Board the OD was not entitled during the OPs to reverse its admittance of the document. The opponent was entitled to rely on the earlier decision of the OD to admit the document into the proceedings. Also, the request of the proprietor shortly before the OPs, when beforehand it had dealt with the document, may itself be considered to have been made too late. This view of the Board was already set out in its provisional opinion accompanying the summons to OPs. [2.9] The Board therefore considers that E15 is already in the proceedings so that there is no need to take a decision regarding its admittance into the appeal proceedings. The Board then found the main request and the second auxiliary request to lack inventive step and the first auxiliary request to violate A 123(2). There is an interesting obiter dictum concerning the second auxiliary request: [5.1] The Board notes that the opponent raised a number of points of a so-called formal nature relating to alleged inconsistencies of the description and the depending claims with claim 1 of this request. Had the Board found that the subject-matter of the claim was patentable then it would have been necessary to examine these points before a decision could have been taken to allow the request. [5.2] In its communication accompanying the summons to OPs the Board had explicitly indicated that new requests should be accompanied by a correspondingly amended description and, if appropriate, amended claims […]. Despite this indication the proprietor has not made any such amendments. Had the Board found that the subject-matter of claim 1 of the request involved an inventive step then it would have had to consider whether the amended patent also met the other requirements of the Convention, cf. A 101(3)(a). A cursory assessment suggests that this is not the case, e.g. the embodiment of figure 9 is outside of the scope of the claims, so that even if the Board had found positively for the proprietor with respect to inventive step it would probably still have revoked the patent, cf. A 101(3)(b). Should you wish to download the whole decision, just click here. The file wrapper can be found here. A nice summary in French can be found on Laurent Teyssèdres’s blog. In conclusion, Laurent offers good advice: “Be careful not to forget to file an appropriate description together with each request when you intend not to attend the OPs.”
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T 603/08 – Very Meaningful
K’s Law – The ebook
T 603/08 – Very Meaningful 25 Okt 2011
I have the impression that there is some kind of consensus that A 69 is not to be invoked in novelty and inventive step assessments (see e.g. here and here). This does not mean, however, that the Boards will not invoke the description and the drawings in this context, as the present decision shows. Here the applicant filed an appeal against the decision of the Examining Division to refuse the application under consideration. Claim 1 of the main request before the Board read (in English translation): A device for transmitting an excursion of an actuator (2;102), comprising at least one transmission element (4;104), a first, a second, and a third bearing area (6,8,10;106,104,106), wherein the first bearing area (6;106) is assigned to a counter bearing, the second bearing area (8;108) is assigned to the actuator (2;102) and the third bearing area (10;110) is assigned to a control member (20;120), wherein the at least one transmission element (4;104) is supported with the first bearing area (6;106) against the counter bearing when the actuator (2;102) is operated and moves the control member (20;120) with the third bearing area (10;110) by means of a rotational motion about a point of rotation, wherein the at least one transmission element (4,104) is configured substantially in the form of a plate (5;105), which is disposed substantially perpendicular to the control motion (L), and wherein the first, second and third bearing areas (6,8,10;106,104,106) are each configured as substantially flat surfaces on the plate (5;105), wherein there is a distance (C) between a central axis (M) of the actuator (2) and a central axis (M) of the control member (20). Here is what the Board had to say on this request: *** Translation of the German original ***
[3.1] Document D3 […] discloses an injection valve in which the excursion of an actuator 1 is transmitted to a control member 6 by means of a transmission element 14. The transmission element is supported with a first bearing area 15 on a bearing surface 8 of the valve body 3 and with a third bearing area 17 on the centre of the control member 6. The second bearing area touches an actuator piston 10. As shown by dash-dotted lines in figure 3, there is a distance b between a central axes of the actuator and the control member […]. The point of rotation of the transmission element is vertically above the first bearing area 15.
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T 603/08 – Very Meaningful
K’s Law – The ebook
Moreover, document D3 shows a transmission element 14 in a perspective view (figure 4). It substantially has the shape of a cylinder wherein the limiting surfaces that are perpendicular to the lateral surface of the cylinder have triangular shape with rounded corners […]. [3.2] Thus, put in the language of claim 1, document D3 discloses a device for transmitting an excursion of an actuator 1, comprising a transmission element 14 having a first bearing area 15, a second bearing area 16, and a third bearing area 17, wherein the first bearing area 15 is assigned to a counter bearing, i.e. the valve body 3, the second bearing area 16 is assigned to the actuator 1 and the third bearing area 17 is assigned to a control member 6, wherein the transmission element 14 is supported with the first bearing area 15 against the counter bearing when the actuator 1 is operated and moves the control member 6 with the third bearing area 17 by means of a rotational motion about a point of rotation D, wherein there is a distance b between a central axis of the actuator 1 and a central axis of the control member 6. [3.3] Besides the above mentioned features, which are disclosed in document D3, claim 1 also comprises the following features: (i) … “wherein the at least one transmission element (4,104) is configured substantially in the form of a plate (5;105)”, and (ii) … “wherein the first, second and third bearing areas (6,8,10;106,104,106) are each configured as substantially flat surfaces on the plate (5;105)”. [3.4] The Board is of the opinion that in order to carry out a meaningful comparison of the subject-matter of claim 1 with the prior art, and in particular with document D3, it has to be established what is to be understood by “in the form of a plate” (feature (i)) and “substantially flat surfaces on the plate” (feature (ii)) according to the embodiments (Ausführungen) presented in the description, the drawing and the dependent claims of the application. This [approach] complies with the principle established and applied by the Boards of appeal that the description and the drawings of are to be used for interpreting the claims when the subject-matter (Gegenstand) of a claim is to be determined, in particular in order to be able to assess its novelty and inventive step (see Case Law of the Boards of appeal of the EPO, 6th edition, 2010, II.B.5.3.1, second paragraph and decision T 1321/04 [2.3]) [3.5] As far as the main request is concerned, neither the description nor the drawings have been modified, so that the published version is decisive. As can be seen from the description […] and as stated by the appellant during the oral proceedings, the transmission elements shown in the drawings and described in the description all correspond to embodiments of the invention. Therefore, they are to be used in the above mentioned interpretation of the claims. [3.6] In the impugned decision features corresponding to features (i) and (ii) have been interpreted narrowly in the light of the description and considered to be features distinguishing [the invention] from D3. The description and the drawings of the application describe embodiments (see […] figure 7) wherein a transmission element in the form of a plate has a recess 176 and, therefore, two ledges (Vorsprünge).
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This [feature] is used to make a relative movement between the transmission element and the housing 130 possible. Moreover, the transmission element has a convex surface the upmost area of which forms the second bearing area.
Similar to this embodiment of the application, the transmission element 14 depicted in figure 4 of document D3 […] has a buckling (Wölbung) towards the inside on its lower part, in order to make a rotational movement of the transmission element 14 possible without striking against the valve body 3. Moreover, the upper part of the transmission element 14 is only slightly curved and forms a bearing area. Therefore, the Board is of the opinion that in the light of the description, the drawings and the dependent claims, the term “plate” is to be interpreted such that it also encompasses surfaces having steps, recesses and convex surfaces. Therefore, the transmission element 14 disclosed in document D3 is to be considered to be a “plate” within the meaning of the application. Indeed, the term is actually used […] in document D3 for the transmission elements 30 depicted in figures 8 to 10. Therefore, document D3 also discloses feature (i).
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T 603/08 – Very Meaningful
K’s Law – The ebook
[3.6.1] Besides the above mentioned embodiment of the application, with has been described with regard to figure 7, wherein a bearing area is formed by a convex surface, the application also discloses another embodiment (figure 8) comprising a bearing area formed by a rounded portion. Claims 37 and 41 also claim a transmission element having a convex or rounded surface, respectively. Therefore, the Board is of the opinion that the expression “substantially flat surfaces” is to be interpreted such that it also encompasses convex or rounded surface, respectively. As document D3 discloses that the bearing areas are curved, wherein the curvature is to be as small as possible […], the Board is of the opinion that feature (ii) is also disclosed in document D3. [3.7] For the above reasons all the features of claim 1 are disclosed in document D3. Therefore, the subjectmatter of this claim is not novel over document D3 ( A 52(1) and A 54(1) EPC 1973). As a consequence, the main request cannot be allowed. The White Book II.B.5.3.1 tells us that “In a number of decisions, … the boards of appeal have laid down and applied the principle whereby the description and drawings are used to interpret the claims and identify their subject-matter, in particular in order to judge whether it is novel and not obvious.” I think this approach, which recalls A 69, makes sense because you cannot interpret words without knowing their context. As already mentioned above (and also stated in II.B.5.3.2), several Boards have expressed concerns against using A 69 in novelty assessments. Now it is true that the present decision does not explicitly invoke A 69, but does this really make a difference? I can see two differences. First, A 69 refers to the description and the drawings, whereas the present approach adds the dependent claims. Secondly, A 69 comes with its Protocol of interpretation. At first sight this looks desirable, even in novelty assessments, because article 1 of the Protocol excludes extreme options of interpretation. However, there is good reason to avoid A 69 because article 2 of the Protocol introduces the notion of equivalents, which is not something you would want to see in a novelty assessment. At the end of the day, I would think that the Board has chosen the right approach by taking into account the description and the drawings when interpreting the claims, without referring to A 69. Any comments? To read the whole decision (in German), click here. 1812 | 3398
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The file wrapper can be found here.
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T 824/10 - Don’t Take It For Granted
K’s Law – The ebook
T 824/10 - Don’t Take It For Granted 24 Okt 2011
Now that the Boards are not competent for dealing with protests under the PCT any more, the question of unity of invention has become rare in the case law of the Boards of appeal. But it has not disappeared altogether, as the present decision shows. The applicant filed an appeal against the decision of the Examining Division (ED) to reject the application under consideration. The application had been filed under the PCT. The claims as filed were directed at (1) the use of plasma membrane calcium ATPase (PMCA) inhibitors to inhibit sperm mobility in order to achieve a contraceptive effect (claim 1 and dependent claims), (2) a contraceptive composition comprising a PMCA inhibitor and a pharmaceutically acceptable carrier (claim 10 and dependent claims), and (3) a method for diagnosing infertility in a human male, comprising identifying a mutation or a post-translational modification of a gene encoding the PMCA (claim 13). The EPO acting as ISA had found the application to contain six groups of inventions and had requested the applicant to pay five additional search fees. Before the (EPO acting as) IPEA, on May 2, 2005, the applicant filed an amended set of eleven claims limited to the use of a particular PMCA inhibitor (i.e. an inhibitor directed against a plasma membrane calcium ATPase 4 (PMCA4) isoform). Claim 1 read (in English translation): Use of plasma membrane calcium ATPase (PCMA) inhibitor for inhibiting sperm mobility in order to achieve a contraceptive effect, wherein the inhibitor is directed against the PMCA4 isoform. The IPER only repeated the arguments and conclusions concerning the searched subject-matter. After entry into the European phase, the EPO objected to the claims as referring to unsearched subject-matter and offered to establish a European search report in application of R 112 EPC 1973. The applicant paid an additional search fee but requested a search report for the whole set of claims on file because it was unitary. The ED found the claims to lack unity and searched “invention 2”. After some exchanges between the ED and the applicant, the latter filed a main request and two auxiliary requests as well as a request for reimbursement of the additional search fee. Claim 1 of all of the requests was identical to claim 1 filed on May 2, 2005. In the main request, the claim directed to a method for diagnosing infertility was deleted; in the first auxiliary request there was no claim directed to a contraceptive composition either. The second auxiliary request only contained claim 1. The applicant withdrew its request for oral proceedings (OPs) and requested an appealable decision. In its decision, the ED invoked R 164(2) and “independently” R 137(4) and explained that all the requests on file referred to unsearched subject-matter. The main request before the Board was identical to the set of claims filed on May 2, 2005. Here is what the Board had to say: *** Translation of the German original *** Unity of the main request before the Board [3.1] Although R 164(2) EPC, on which the rejection was based, encompasses both the lack of unity of the present claims and (“or”) the fact that the claimed subject-matter has not been searched, it follows from the
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overall context of the impugned decision that what is meant is the second situation (i.e. the one following the “or”). Hereinafter, this situation is referred to as “R 164(2), second subclause”. It is true that the decision of the ED is not based on the question of whether the last filed requests lack unity, but their unity is denied. As the underlying argumentation […] has a considerable impact on the question of unity of the claims as filed and, consequently, on the division into (groups of) inventions, which then affects the question of whether the second search fee was correctly used, this decision also deals with the unity of the subject-matter of the main request before he Board. This request corresponds to the version that was before the ED, plus the claim directed at fertility diagnostics. Document D1 cited in the examining proceedings refers to plasma membrane calcium ATPase (PMCA) but does not mention any isoform thereof, and in particular isoform 4 (PMCA4). The statement in the abstract of this document, according to which the inhibiting effect of gossypol on the plasma membrane calcium++ pump could be explained by the fact that gossypol influenced the sperm mobility by means of a mechanism related to the structure and functions of the plasma membrane cannot be affirmed conclusively for [establishing] an interaction of the inhibitor gossypol with the plasma membrane calcium ATPase isoform 4 (PMCA4). Consequently, the reasons given in the communication of the ED dated October 27, 2006, i.e. that gossypol, which is the object of document D1, would also have an inhibiting effect on PMCA4, are only based on presumptions (“It appears credible that gossypol prevents not only the other isoforms of PMCA but also isoform PMCA4 …” […]) Therefore, within the framework of an a posteriori consideration of unity of a patent application, they cannot be used for asserting that the single inventive concept is not novel or for questioning that this concept does involve an inventive step. Nor is there any concrete reason to presume that substances according to dependent claims 2 to 4 would not act as inhibitors of PMCA4 but would inhibit other PMCA isoforms […]. After all, the mention of those substances in the claims contains a reference to claim 1 and already comprised a reference to claim 3 concerning PMCA4 in the claims as originally filed in their most narrow, and, therefore, decisive form. The subject-matter of each of claims 1 to 10 according to the present main request is connected by the teaching that PMCA4 inhibitors can hinder the mobility of sperm and, therefore, have a contraceptive effect, which is the single common inventive concept. Conversely, this corresponds to the concept that a defect in PMCA4 as such has to result in hindering the mobility of sperm and can, therefore, be a cause for natural male infertility. This common inventive concept within the meaning of Rule 13.1 PCT and A 82 EPC, respectively, also supports the unity of the application when claim 11 according to the main request is included. If one retraces (wird … nachvollzogen) the argumentation of the ED based on the problem solved such that the known feature “Disturbing the functionality of PMCA results in reducing the motility of sperm cells” is taken into account, one also comes to the conclusion that there is unity of invention between the subject-matter of claims 1 to 10 and the subject-matter of claim 11. [3.2] As already explained under point [3.1] of this decision, the impugned decision […], which cites R 164(2) EPC and R 64(1) EPC as well as “independently” R 137(4) EPC, is based on the assertion that in particular the uses according to claims 1 of the different requests still encompassed unsearched subject-matter (R 164(2), second subclause). According to its response to the notification pursuant to R 112 EPC 1973 dated June 19, 2006 (i.e. together with is written submission dated July 18, 2006, which is before the entry into force of the EPC 2000 and its new R 164) the appellant has paid a second search fee with the comment that a search be carried out for claims 1 to 11 that had already been filed together with the request for IPE dated May 2, 2005 ([…] these claims correspond to the present main request). Despite this, the ED has carried out a search of invention 2 as defined in the invitation to pay further search fees dated October 15, 2004. According to the wording of R 64(1) EPC, however, the European search report shall be drawn up for the parts of the application relating to inventions in respect of which search fees have been paid (Board’s emphasis). This means that the [applicant] has to indicate how it wants the paid search fee to be used and the search report is to be established for the corresponding invention. In the present case, the ED was of the opinion that the initial and abiding lack of unity made it impossible to direct the search to the subject-matter indicated by the [applicant]. Even if this opinion was correct, the ED was 1815 | 3398
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not free to arbitrarily search the originally defined invention 2 but it had to at least try to clarify with the [applicant] for which subject-matter – which both sides agreed to be unitary – the search fee was to be used. As this has not been done, it was impossible to define, at the moment of the decision, which subject-matter had definitely not been searched, and it was impossible to make the statement that the claims according to the requests on file did contain unsearched subject-matter. Therefore, there was no basis for the decision of the ED – as a consequence, the decision has to be set aside. [3.3] The further examination to be carried out after remittal to the ED will have to deal with all formal and substantial aspects of the EPC, including the examination of the amendments with respect to the requirements of A 123(2), the need to carry out corresponding searches and the decision of whether the second search fee is to be refunded or not. To read the whole decision (in German), click here. The file wrapper can be found here.
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T 888/07 – Revival
K’s Law – The ebook
T 888/07 – Revival 22 Okt 2011
This decision also deals with an alleged substantial procedural violation committed by the Examining Divison (ED): [8.1] The appellant argued that after non-admission of the main request filed during oral proceedings, the version previously standing would have remained in the previous state and was still pending. The ED therefore would have had to give reasons according to R 68(2) EPC 1973 for this request. Failing to do so constituted a substantial procedural violation. [8.2] This point of view is, however, not correct. By replacing a request, the former request is no longer pending. According to R 86(3) EPC 1973, last sentence, no further amendment may be made without the consent of the ED. Also according to the case law an ED has a discretion to allow amendments until the issue of the decision to grant (see G 7/93 [order 1] and G 12/91). If a request for amendment is refused, the ED must inform the applicant of the reasons for not admitting the amendments such that the applicant has the opportunity to comment on them in order to satisfy the right to be heard according to A 113(1). If the applicant maintains his request for amendment, the application has to be refused under A 97(2), since there is no text which has been approved by the applicant and allowed by the ED (see A 113(2), decisions T 647/93; T 946/96 and T 237/96). A 113(2) states that the EPO shall consider and decide upon the European patent application or the European patent only in the text submitted to it, or agreed, by the applicant or the proprietor of the patent. In the present case the ED refused to consent to the introduction into the procedure of the claims submitted during oral proceedings, which had been put forward in substitution for the claims on file before. Deciding to refuse an application on the grounds that the claims previously on file were not allowable would have contravened A 113(2) EPC 1973, since these claims were no longer pending. If the ED refuses consent to the latest amended set of claims under R 86(3) EPC 1973 this does not automatically revive the previous set of claims that the ED had consented to consider, unless the applicant has indicated that he was relying on these as an auxiliary request. There was no such indication here, since the appellant did not even mention that the claims filed on 12 December 2006 and/or the claims filed on 29 July 2005 constituted auxiliary requests. [8.3] As can be seen from the minutes of the oral proceedings […], the chairman explicitly brought the legal situation and the corresponding consequences to the attention of the appellant's representative, who did not present any observations […] and apparently did not react according to his intentions (e.g. by referring to the auxiliary requests believed to be pending or by filing a further request). The appellant did not question the correctness of the minutes after they were sent to the party and before the appeal proceedings. The correctness of the minutes is therefore not formally in doubt and the board has to consider the minutes as correctly reflecting the course of the oral proceedings (see R 11/08 [16]). The appellant's representative could be expected to be aware of the legal situation, in particular after having actually been warned of the legal consequences. [8.4] Therefore, the board comes to the conclusion that the applicant's right to be heard (A 113(1) EPC 1973) has been observed. In the board's view, the procedural issues referred to by the appellant do not constitute a substantial procedural violation which would justify the reimbursement of the appeal fee. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 888/07 – Don’t Be So Negative
K’s Law – The ebook
T 888/07 – Don’t Be So Negative 21 Okt 2011
The applicant filed an appeal after the Examining Division (ED) had rejected the application under consideration. The Board found claim 1 of the main request not to comply with the requirements of A 84 because one essential feature was missing from the independent claims. It then dealt with auxiliary request 1, Claim 1 of which read: A system for supporting mobile IP, comprising:
a controlling foreign agent (CFA1, CFA2) managing communications in a service region (RA1, RA2); and a plurality of paging foreign agents (PFA1, PFA2, PFA3, PFA4, PFA5, PFA6) managing respective paging areas within the service region, the paging foreign agents configured to register new location information of a mobile node (MN) upon the mobile node moving into the paging area of one of the plurality of paging foreign agents from the paging area of another of the plurality of paging foreign agents;
characterized in that the paging foreign agents are configured to transmit the new location information to the controlling foreign agent if the mobile node is in an active mode at the time of entering the respective paging area and to withhold transmission of the new location information to the controlling foreign agent if the mobile node is in an idle mode at the time of entering the respective paging area. (my emphasis) The Board again raised a clarity issue: [3] Claim 1 of this request still comprises the wording “withhold transmission” which was objected to during the first-instance proceedings because it was a negative feature. [3.1] The board is of the opinion that a feature with such wording is originally disclosed (see e.g. original claim 14), in contrast to the ED’s argument presented in point 1.2 of the communication dated 1 April 2005. Such a negative limitation can therefore be deduced from the application as filed (see T 278/88). [3.2] However, negative limitations may be used only if adding positive features to the claim either would not define more clearly and concisely the subject-matter still protectable (see T 4/80) or would unduly limit the scope of the claim (see T 1050/93). Both of the cited cases relate to a chemical process and use a negative limitation to clearly define a chemical substance used as an agent in the process. In the present case the negative limitation relates to a registration step which may be omitted under specific circumstances. These circumstances contribute to the claimed solution. Therefore the subject-matter should be specified in this case by using positive features such as for example the principle of regional registration and local registration as disclosed in Figures 6 and 7 and in paragraphs [0060] to [0070] of the published application. Claim 1 of auxiliary request I therefore does not fulfil the requirements of clarity pursuant to A 84. Should you wish to download the whole decision, just click here. The
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T 1389/10 – Suitable For
K’s Law – The ebook
T 1389/10 – Suitable For 20 Okt 2011
The present decision is not surprising at all but it presents us with a nice application of the “suitable for ...” doctrine. The patent proprietor filed an appeal against the decision of the Opposition Division to revoke the opposed patent for lack of novelty and inventive step. Claim 1 of the main request before the Board read: The protective case for enclosing a delicate object, of the type of objects that are portable such as mobile phones, glasses, remote controls for electronic home appliances etc., the case comprising a tubular body formed from a circular knitted fabric (as hereinbefore defined), an elastic section suitably dimensioned to define a mouth at one end of the tubular body, and a seam that provides a permanent closure of the opposed end of the tubular body, wherein the elastic section is configured to facilitate the closure of the mouth of the tubular body preventing accidental exit of the delicate object that is contained inside the case. (my emphasis) Interpretation of Indefinite Requests [2] In the letter of 23 June 2011, page 2/6, final paragraph, the [patent proprietor] states that “[he] would be willing to accept any other more accurate wording that would refine further the concept to English speakers. Maybe something along the following lines” and then on page 3/6 offers the following four alternative versions of the opening lines of claim 1 (using the [patent proprietor’s] notation): I: “A protective case for enclosing mobile phones, glasses, remote controls for electronic home appliances and any other portable objects” II: “A protective case for enclosing mobile phones, remote controls for electronic home appliances and any other electronic portable objects “ III: “A protective case for enclosing mobile phones and other electronic portable objects” IV: “A mobile phone protective case”. The Board notes firstly that in particular in inter partes appeal proceedings, where impartiality of the Board is fundamental to due process and the principle of fairness, it is not incumbent on the Board to make suggestions as to claim wording. That responsibility must remain firmly with the [patent proprietor]. The Board shall, however, in the following consider these alternative formulations as like numbered auxiliary requests - i.e. auxiliary requests I to IV - each directed at a correspondingly amended claim 1. Background & Claim Interpretation [3.1] The patent is directed at a protective case for delicate objects - in particular portable objects such as mobile phones, glasses, remote controls. The case is defined by its constructional features of a tubular body of circular knitted fabric which has an elastic section defining a mouth at one end, and a closing seam at the other end. The use of knitted fabric protects the delicate objects from damage by banging or scratching, while the elastic mouth section prevents them from accidentally slipping out, see specification section [0005]. [3.2] As stated in the Board’s communication of 25 January 2011, it is long standing office practice that a formulation such as “apparatus for” is to be interpreted as meaning an apparatus which is suitable for the stated use, see for example the Guidelines C-III.4.13, see also T 69/85 [2.2.8]. As explained in the Guidelines, as e.g. in the case of a mould for molten steel, the stated use may imply certain physical limitations (size, material) without which the apparatus could not be used for that purpose. Any prior art apparatus which, in addition to features expressly mentioned in the claim also possesses these implicit physical features and can thus reasonably be used for the stated purpose will then take away novelty of the claimed apparatus. This is irrespective of 1819 | 3398
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whether or not the prior art mentions the stated use or purpose or whether the stated use is obvious or not. This is because the claim is directed at the apparatus, not its use. Nor can stating a use that is new and not-obvious render an apparatus which is already known novel and inventive, see also the Case Law of the Boards of Appeal, 6th edition 2010, I.C.5.3.3 and the case law cited therein, in particular T 215/84, T 523/89, T 637/92. [3.2.1] The various versions of claim 1 are all directed at a protective case defined by the same physical features: circularly knitted, tubular body, elastic mouth section at one end, closing seam at the other. Undoubtedly, these features define the claimed subject-matter as an apparatus or device, i.e. as a physical object. Its intended use lies in the indication that it is a “protective case for delicate objects”, with the particular objects limited in varying degree in the different requests. In the final auxiliary request claim 1 is to “a mobile phone protective case”, which the Board reads as equivalent to “a protective case for mobile phones”. [3.2.2] This intended use will imply certain properties of the knitted material to be able to protect a delicate object or mobile phone. For example, the material should be soft and not abrasive. It also implies an appropriate size of the article to accommodate the object/phone within it. [3.2.3] Using the usual rules of construction, in particular those concerning intended use or purpose of an apparatus, the Board then arrives at a construction of claim 1 as directed at any article that has a circularly knitted, tubular body, with an elastic mouth section at one end and closed by a seam at the other, and which is made of appropriate material and has an appropriate size so that it can be used as a protective case for the objects in question. Lack of Novelty [4.1] With the above understanding of claim 1 the Board must then, in assessing novelty, determine whether any of the cited prior art discloses articles with all the above features, explicit and implicit, and which therefore could conceivably be used as a protective case for the objects concerned, even that use is not foreseen in that prior art, see above. [4.2] Turning first to D2, this document concerns a protective receptacle for spectacles, see title. The receptacle, shown in figure 1, comprises an envelope formed from a tube, i.e. a tubular body, column 4, line 10, which may be formed of knitted material, column 4, lines 28 to 29, see also column 6, lines 8 to 10.
The tube is continuously knitted (without a seam) at its circumference, as is clearest from the cross-sections 5 and 7 in particular, meaning that when knitted, it must be circularly knitted. Either end 21A or 21B can be sewn 1820 | 3398
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closed, column 4, lines 17 and 18, thus forming a seam providing a permanent closure at one end. The other (not sewn) end may have “an end closure such as a tightly woven end portion [as in figures 1 and 2] as a tapered or a restricted end”, column 4, lines 21 to 24. This is clearly meant to facilitate closure and has the same function as the alternative closures of figures 7A to 7C, namely to prevent the spectacles from accidentally exiting.
As explained in column 4, lines 28 to 34, the envelope material is elastic so as to expand to accept the spectacles, and thereafter contract to engage them. This applies naturally also to the end section, which, is also elastic, in particular if the material is knitted. The material is so as to protect spectacles within the tube, e.g. wool or cotton, column 4, line 30. Similarly, it goes without saying that this receptacle which is specifically meant for spectacles will be sized accordingly. Spectacles or glasses, the Board notes, are expressly mentioned in the patent, see specification paragraph [0001] as an example of a delicate object that the case should protect. In summary, the receptacle of D2 has all the physical features that are expressly mentioned in all versions of claim 1. It also has those implicit in the use stated in claim 1 of the main, first auxiliary and auxiliary request I, which all mention glasses as delicate object. This is only natural as the D2 receptacle is also meant to protect and hold glasses. If perhaps spacious for a relatively small mobile phone, the D2 receptacle could nevertheless also hold and protect remote controls or other electronic portable devices such as a portable game console, that are of the same size as a pair of glasses. It thus also meets the size requirement implicit in the limited use stated in claim 1 of auxiliary requests II and III. The Board concludes that the case of claim 1 of the main and first auxiliary request and of auxiliary requests I to III lacks novelty vis-à-vis the protective spectacle receptacle of D2. [4.3] D7, see its opening paragraph, relates to a knitted article intended to cover the toe portion of a foot.
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The article, shown in figures 1 to 3, has a seamless or circular[ly] knit main body 10, column 2, lines 5 to 6, produced in the form of a tubular fabric on a circular knitting machine, column 2, lines 26 to 28, i.e. is an essentially tubular body. It has a cuff or welt 13 at one open end, column 2, line 29, which may have elastic yarn incorporated, column 3, lines 10 to 11, and thus forms an elastic end section defining a mouth. At the other toe end the tube is closed as described in column 2, lines 36 to 40, to form what is effectively a seam 21 as permanent closure, see also the figures. The size and material of the sock are intended to protect the toes of a foot. Even though D7 does not mention such a use, its sock has all the features that allow it be used to hold and protect a mobile phone, a portable electronic device or any other delicate object of about the same size as the toe portion of a foot. The elastic cuff or welt 13 would then prevent the object from slipping out accidentally. The subject-matter of claim 1 in all versions lacks novelty over the toe sock of D7. [4.4] Finally, D8 describes an undersock or foot cover, see title, shown in figures 3,4.
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This undersock is formed of a knitted tube 1 formed on a circular knitting machine, page 2, lines 1 to 4, i.e. a circularly knitted tube. A rubber thread 2 is knitted into open rim 2, page 2, lines 6 to 10, figure 3, forming an elastic section defining a mouth at the tube’s open end. At the other end it is closed by a seam 10, page 2, line 57 to 61, figure 3, providing permanent closure. Dimensions are in the order of several centimetres, page 2, lines 19 to 21, and the material can be a crimped or stretch yarn, page 2, lines 62 to 64, making the sock extremely elastic and extensible, page 2, lines 76 and 77, so that it can fit over a foot. D8 also does not mention its use as a protective case for delicate objects. However, it has all the features that would allow it be used that way. Thus, it can hold and protect, say, a mobile phone or other portable electronic device that easily fits inside the stretchable material and stays inside due to the elasticized rim section. This known undersock thus also takes away the novelty of claim 1 in any of its versions. [4.5] None of the proposed versions of claim 1 include a limitation, explicit or implicit, that the case is specially constructed to loosely hold a (mobile) phone, and the Board can thus not take this feature in consideration when assessing novelty of the case as claimed. However, even if claim 1 had been so limited, given the small size of many mobile phones, the toe sock of D7 meant to cover the front portion of the foot, see figure 1, would most likely meet that limitation for such phones. Vis-à-vis D7 this feature would therefore not be able to establish novelty. [5] As set out above, the subject-matter of claim 1 in all its versions lacks novelty, contrary to A 52(1) in combination with A 54. None of the requests on file are therefore allowable and the Board thus confirms the OD’s decision to revoke the patent. One might add that this approach is based on the EPO’s practice and is not common to all the contracting states. In France, for example, the Supreme Court (Cour de cassation), in a famous decision dated June 6, 2001, has established that novelty of purpose is to be taken into account in a novelty assessment: « … pour être comprise dans l’état de la technique et être privée de nouveauté, l’invention doit s’y trouver tout entière dans une seule antériorité au caractère certain, avec les mêmes éléments qui la constituent dans la même forme, le même agencement et le même fonctionnement en vue du même résultat technique, … » (my emphasis) which might by translated as follows :
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T 1389/10 – Suitable For
K’s Law – The ebook
“… in order to form part of the prior art and to be deprived of novelty, the invention must be found there entirely, in a single and certain prior art document, comprising the same elements which constitute the same form, the same arrangement and the same function in view of the same technical result, …” Therefore, I doubt that a French court would consider the protective case to be anticipated by the toe protector or the undersock disclosed in documents D7 and D8, respectively. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1824 | 3398
R 23/10 – Just Disagreeing
K’s Law – The ebook
R 23/10 – Just Disagreeing 19 Okt 2011
The opponent filed a petition for review after Board 3.2.08, in decision T 1440/08 (also reported on this blog), had maintained the patent in amended form. According to the opponent, the Board had violated its right to be heard by completely misunderstanding one of its arguments. The petitioner also filed an article by Rüdiger Zuck (GRUR Int. 2011, p. 302) to support its opinion that the EPC did not require the Boards to interpret rules for the application of an extraordinary remedy (such as petitions for review under A 112a) in a strict and narrow (streng und eng) manner. The Enlarged Board (EBA) found the petition not to be clearly inadmissible and then examined its allowability: *** Translation of the German original *** [2] The EBA is of the opinion – without having to depart from its previous case law and in agreement with the established case law of the Boards of appeal and of national jurisdictions (by which, however, it is not bound) – that for the right to be heard within the meaning of A 113(1) to be granted, it is not sufficient that the parties have the opportunity of commenting (on the facts and considerations that are relevant for the decision) but these comments must also be taken into account, i.e. examined as to their relevance for the decision (see R 19/10 [6.2] cited by the petitioner, who agrees). [3] This legal understanding is not in conflict with the decisions of the EBA according to which it is sufficient for the purposes of A 113(1) that the party concerned was aware of the arguments put forward by the adverse party, had an opportunity to answer them, and makes no contention that the Board of Appeal refused to hear them (see in particular R 18/09 [12]): this statement refers to cases where it had to be examined whether a party had not commented (on facts and considerations relevant for the decision) because it had been hindered from doing so by objective obstacles (as found in R 7/09) or by the way in which the Board had conducted the proceedings. [4] The present case contrasts with this situation because there is no doubt that the petitioner had the opportunity to express its opinion and has also done so. The petitioner rather points out that its submissions relating to a matter decisive for the factual decision (i.e. the teaching of document D21 […]) have been completely misunderstood by the Board and, as a consequence, have not been taken into account in the decision making process. [5] The Board accepts [the argument of] the petitioner [according to which] the – correct, as the petitioner admitted – presentation of its relevant submissions [in the decision …] is only an indication (Indiz) for the fact that [the petitioner’s] factual submissions have been taken into account in compliance with A 113(1). However, in order to [make the EBA] doubt or even state the contrary – here: that the Board nevertheless had misunderstood the relevant submissions of the petitioner and, as a consequence, had not taken it into account as it should have – there have to be concrete and unambiguous indications in the decision under consideration. The Board also accepts that such a review (Überprüfung), even if it refers to “facts” in a very general sense, does not constitute a review (“evaluation” (Wertung)) of the factual correctness of the decision. [6] The petitioner argues that the fundamental (ursächlich) misunderstanding is to be found in that, in contrast to the explanations under point 5, last paragraph on pages 18 and 19 of the reasons for the decision, it had never argued that D21 taught that the clutch disk was to be inclined (angestellt). [7] In the place cited the following is said on the disclosure of D21: “D21 discloses a clutch wherein the contact pressure plate is slightly inclined … When transferring this teaching to the torsional vibration damper according to D2 the skilled person would also incline the clutch disk such that …
1825 | 3398
R 23/10 – Just Disagreeing
K’s Law – The ebook
The prior art does not disclose that the design (Gestaltung) of the clutch disk gives rise to problems, so that D21 cannot incite the skilled person to transfer the inclination of the clutch disk to the flywheel mass element. As said documents only disclose (if at all) that a plane contact pressure plate is inclined, they cannot incite [the skilled person] to provide a concave course or a return (Rücknahme) towards the flywheel mass element …” [8] Apart from the fact that these explanations cannot only be understood such that only D21 teaches that a clutch disk is to be inclined (whatever that means from a technical point of view), the petitioner is not mentioned at all in this passage. Therefore, one can at most conclude from this passage that the Board has not adopted the point of view of the petitioner, or simply that, having considered the whole relevant prior art (including D2) that it has found auxiliary request 2 to involve an inventive step and, consequently, decided against the petitioner. Therefore, there is no factual or textual indication that these statements and conclusions were based on a different understanding of the relevant submissions of the petitioner than the one (correctly) exposed in point IV d) of the decision. The assertion of the petitioner that in the present case the Board had misunderstood the explanations of the petitioner that were relevant for the decision and, therefore (or for what reasons ever), had not taken them into account as would have been required by the right to be heard (A 113(1)) does not have any support. [9] Therefore, the decision on the present petition does not require the Board to dwell on the question of whether a misunderstanding of the kind alleged by the petitioner, if established, could at all qualify as violation of the right to be heard within the meaning of A 112a(2)(c) or whether it had to be considered as error – which as a matter of principle is not open to review in proceedings under A 112a. Nor is there any reason to review the allegedly too “strict” interpretation or application of the grounds for setting aside [a decision] established by A 112a, as requested by the petitioner. It is indeed true and legitimate that as a rule, a petition under A 112a is filed with the objective of obtaining that the decision taken by the Board of appeal be amended with regards to content in favour of the petitioner. However, A 112a has not changed the fact that the Boards of appeal alone are the last instance for assessing facts (Sachinstanz) in proceedings under the EPC. The EBA cannot deviate from this fact, even by means of interpretation. It rather has to limit itself strictly (strikt – und insofern “streng”) to the exhaustive [list of] grounds provided by the EPC. The factual correctness of the facts and conclusions on which the decision to be reviewed is based cannot – not even indirectly – be object of a review under A 112a. Only the Boards of appeal can, possibly after setting aside the decision and reopening proceedings pursuant to A 112a(5), decide on that matter – as a matter of principle the EBA is not competent to do so. ORDER For these reasons it is unanimously decided that: The petition for review is rejected as clearly unallowable. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
1826 | 3398
T 2006/09 – Point Of Reference
K’s Law – The ebook
T 2006/09 – Point Of Reference 18 Okt 2011
Most readers of this blog will be aware of the % trap: specifying percentages without defining what exactly is meant (per cent by weight, by volume …) may kill a patent application or a patent, as the case may be. The present decision presents us with an interesting variant of this problem. The applicant filed an appeal after the Examining Division had refused the application under consideration. Claim 1 of the main request before the Board read: 1. A liquid ink jet ink comprising a solvent and a coloring component, dispersed in the solvent, a photo acid generating agent, generating an acid upon irradiation with light, and wherein the solvent contains at least one kind of a solvent that is polymerized in the presence of an acid, which at least one solvent is an aromatic oxetane compound, wherein an alicyclic epoxy compound and an aliphatic or alicyclic oxetane compound having a valency of at least 2 are added, wherein the aromatic oxetane compound is present in an amount of 0 to 40 parts by weight, wherein the alicyclic epoxy compound is added in an amount of no larger than 50 parts by weight, wherein the total amount of oxetane compound is at least 40 parts by weight based on the total amount of liquid ink, wherein the total amount of the compounds having an alicyclic and an aromatic skeleton is at least 30 parts by weight. The Board concentrated on the clarity of the claim: [4] According to A 84, the claims must define the matter for which protection is sought. A consequence thereof is that the claims must be clear in themselves when read by the person skilled in the art, without any reference to the content of the description (see T 2/80 [2] and T 1129/97 [2.1.2]). [4.1] Claim 1 of each request defines the amounts of several components or group of components by ranges given in “parts by weight” without indicating a common amount of reference (such as 100 parts by weight of the solvent or of the total ink). In the absence of such a common amount of reference, the weight of one part by weight of a first component may differ from the weight of one part by weight of a second component, thereby rendering the ranges vague and the claims unclear. [4.2] The appellant argued that it was evident to the person skilled in the art that the “parts by weight” in the claims referred to 100 parts by weight of the solvent, except for the total amount of oxetane derivatives […]. However, the appellant has provided no evidence in support of this argument; nor does the board see any reason why the person skilled in the art might not equally consider the “parts by weight” to be based on 100 parts by weight of the total ink. [4.3] Although any reference to the content of the description cannot overcome this objection of lack of clarity of the wording of the claims […], the board would like to emphasise that even if such a reference to the description was made, it would not have helped to remove this lack of clarity. On page 29, lines 12 to 18, 22 to 28 of the application as originally filed, the expression “parts by weight” is based on the weight of solvent. However, it is mentioned on page 39, lines 10 to 15 that when the solvent consists of the epoxy compound alone, then the amount is based on the entire liquid ink. On page 45, lines 21 to 25, the minimum amount of 40 parts by weight of the total addition amount of oxetane compound is based on the amount of liquid ink. Furthermore, the amount of kneaded mass referred to in this part of the description (see page 112, lines 12 to 14) is based on an epoxy compound. Consequently even if the content of the description was considered, the content of said description would not provide the person skilled in the art with the appropriate information allowing him to remove the lack of clarity in the claims. […] [4.5] Hence, the board concludes that claim 1 of each request on file contravenes A 84. 1827 | 3398
T 2006/09 – Point Of Reference
K’s Law – The ebook
Should you wish to download the whole decision, just click here. The file wrapper can be found here. There is a nice French summary of this decision on Le blog du droit européen des brevets.
1828 | 3398
T 1244/08 – Having Second Thoughts
K’s Law – The ebook
T 1244/08 – Having Second Thoughts 17 Okt 2011
The patent proprietor filed an appeal against the decision of the Opposition Division (OD) revoking the opposed patent. After having been summoned to oral proceedings (OPs) to be held on July 7, 2011, the patent proprietor, in a letter dated April 5, 2011, declared that he had decided to abandon the patent, that he did not accept the patent as granted and did not propose any amended text, and, consequently, that there was no reason to hold OPs.
A few days later, on April 11, the patent proprietor declared that contrarily to his earlier declaration, he did not wish to abandon the patent and that, therefore, the OPs should be maintained.
During the OPs, the patent proprietor argued that the wording of his letter dated April 5 was not a withdrawal of the appeal and that it did not have an immediate legal effect. A withdrawal of an appeal had to be clearly worded as such. The declaration of April 5 did not indicate that the appeal was withdrawn. This declaration comprised four parts, i.e. (1) the declaration of the intention to abandon the patent under consideration; (2) the intention not to accept the patent as granted; (3) the intention not to amend its text; and (4) the intention to waive OPs. None of these parts qualified as a withdrawal of the appeal. As a matter of fact, the EPO was not competent for deciding on the abandonment of a patent. According to the patent proprietor, the fact that he did not accept the patent only indicated that he did not wish to have the patent maintained as granted. The fact that he did not propose an amended text at a given stage of the proceedings did not exclude that he would do so later on. He also pointed out that waiving OPs was a mere procedural act. Moreover, his declaration that he did not accept the patent as granted and that he did not propose an amended text required the Board to issue a decision that the patent was revoked. As long as this decision had not been issued, the patent proprietor could make up his mind. The case law based on the immediate effect of a declaration of withdrawal did not apply because the declaration of April 5 was not a withdrawal of the appeal. Decision T 73/84 had pointed out that only a revocation could ensure legal certainty and that, therefore, proceedings ought to be terminated as quickly as possible by a decision. Insofar as legal certainty could only be safeguarded after a revocation of the patent, this implied that the patent proprietor could retract as long as the Board had not issued its decision. Therefore, the patent proprietor had the right to withdraw his declaration dated April 5 and the Board had to pursue the appeal proceedings. Well, as you might have guessed, the Board did not find these arguments persuasive: *** Translation of the French original *** [2] In his letter sent to the EPO on April 5, 2011, the [patent proprietor] has declared:
1829 | 3398
T 1244/08 – Having Second Thoughts
K’s Law – The ebook
“the L’Oréal company having decided to abandon the above-mentioned patent, it does not accept the patent as granted and does not propose any amended text. Consequently, the OPs to be held on July 7, 2011, are not necessary any more.” However, in his letter dated April 11, 2011, the [patent proprietor] had made the request to withdraw this declaration. The [opponents] are of the opinion that the declaration of April 5 qualifies as a declaration of withdrawal of the appeal, which is irrevocable, whereas the [patent proprietor] pleads that this letter was only a letter of intent without any immediate legal effect. [3] All the parties admit that a declaration of withdrawal of the appeal is irrevocable and has immediate effect. Therefore, the question to be decided is whether the declaration dated April 5, 2011, qualifies as a declaration of withdrawal of the appeal which immediately puts an end to the appeal proceedings. [4] It clearly and unambiguously follows from the wording of the declaration dated April 5, 2011, that the [patent proprietor] unrestrictedly and unreservedly renounced his patent, which had already been revoked by the OD (A 113(2)). There could not be any doubt on the intention of the [patent proprietor] expressed in his declaration, i.e. that his patent remained revoked for good and that he, therefore, showed no more interest in the appeal proceedings. According to the established case law of the Boards of appeal (T 18/92, T 481/96, T 1003/01, T 53/03), a declaration of a patent proprietor having filed an appeal after the patent had been revoked by an OD, stating clearly and unambiguously that he was not interested any more in the pursuit of the appeal proceedings qualifies as a declaration of withdrawal of the appeal. Consequently, the Board comes to the conclusion that the declaration dated April 5 2011 qualifies as a declaration of withdrawal of the appeal, which puts an end to the appeal proceedings with immediate effect, resulting in the decision of the OD revoking the patent becoming final (définitive). As a consequence (dès lors), a subsequent request aiming at the retraction of this declaration and the pursuit of the proceedings is inadmissible. [5] The [patent proprietor] has pointed out that the withdrawal of the appeal had to be expressly worded as such and that nothing in the different parts of the declaration dated April 5 indicated that it was a withdrawal of the appeal. However, the Board cannot endorse an interpretation based on splitting the declaration. A declaration makes sense only if it is taken as a whole. As a matter of fact, the declaration shows clearly and unambiguously that the [patent proprietor] was not interested in pursuing the appeal proceedings. Such a declaration leaves no doubt on the intention of the [patent proprietor] and has to be considered equivalent to a declaration of withdrawal of the appeal, regardless of the terms used. This argument of the [patent proprietor] has to be dismissed. [6] According to the [patent proprietor], following decision T 73/84, a declaration that [the patent proprietor would] not propose an amended text obliged the Board of appeal to issue a decision. As long as this decision had not been issued, he could most certainly retract. However, the circumstances of the present case differ fundamentally from the circumstances of the case underlying decision T 73/84 cited by the [patent proprietor]. In the present case, the patent has already been revoked by the OD, whereas in case T 73/84 the OD had rejected the opposition and, therefore, maintained the patent as granted. In a situation where the patent is maintained by the OD, a request by the [patent proprietor] aiming at having his patent revoked cannot qualify as a withdrawal of the appeal because it would result in having the patent maintained, i.e. the opposite effect of the effect sought by the [patent proprietor]. The decision of the OD has to be set aside by a decision of revocation by the Board of appeal. This argument of the [patent proprietor] also has to be dismissed. […] The appeal proceedings are terminated. The patent remains revoked. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here.
1830 | 3398
T 1126/09 – What Would My Robot Do?
K’s Law – The ebook
T 1126/09 – What Would My Robot Do? 15 Okt 2011
The patent proprietor appealed against the decision of the Opposition Division revoking its patent. Claim 1 before the Board read: Method for manufacturing concrete products on at least one casing table, characterized by (A) the use of at least one program-controlled robot (48) which (B) on said casing table (20), (C) picks up, from a store (30), (D) edge forming profiled casing elements (10) that can be magnetically fixed (E) by means of integrated permanent magnet elements (14); (F) precisely positions them on said casing table (20); and (G) then activates the permanent magnet elements (14). The Board found this claim to lack inventive step: *** Translation of the German original *** [2] It is undisputed that, as discussed during the oral proceedings (OPs), the skilled person to be taken into account in this case, where a program-controlled and, therefore, programmable, robot interacts with edge forming profiled casing elements (EPE), is to be considered to be formed by a team comprising a person that is skilled in the field of the manufacture of EPE, and another person skilled in the use of program-controlled robots of the kind under consideration. Therefore, the team to be considered, which will be referred to as the skilled person, has to be deemed to have technical knowledge and to be familiar with standard practices both in the field of plant construction (Anlagenbau) and in the field of programming of robots to be used in such plants. [3] Claim 1 according to the main request concerns a method for manufacturing concrete products on at least one casing table. In this method a program-controlled robot having features (A) to (G) is used. This robot picks up EPE that can be magnetically fixed (feature D), precisely positions them on the casing table (feature F) and then activates the permanent magnet elements (PME; feature G). The EPE that can be magnetically fixed (feature D) used in this method have integrated PME (feature E) that can be activated according to feature G. Thus the method according to claim 1 comprises the use of at least one program-controlled robot for handling EPE each of which has integrated PME. Closest prior art [4.1] it is undisputed that […] the method for manufacturing concrete products disclosed in D1 is the closest prior art for the subject-matter of claim 1 of all the request s on file. [4.2] The known method concerns the manufacture of concrete products on at least one casing table wherein, as in feature A, at least one program-controlled robot is used […]. This robot positions EPE that can be magnetically fixed on the casing table, as in features B and D. In the known method the PME are distinct from the EPE. The robot first positions them on the casing table and then positions EPE on top of the corresponding PME […]. Distinguishing features [5] It is undisputed that the method according to claim 1 […] differs from the method according to D1 in that the EPE have integrated PME (features D and E) and, as far as the use of program-controlled robots is concerned, in that it is the EPE which can be magnetically fixed that are picked up from a store and precisely positioned 1831 | 3398
T 1126/09 – What Would My Robot Do?
K’s Law – The ebook
(features A and C to F). A further distinguishing feature results from the fact that the integrated PME of the EPE are activated by the robot (feature G). Problem [6] The above mentioned distinguishing features have the following effects: On the one hand, the method is improved by increasing the precision of the positioning of the EPE. As EPE having integrated PME are used, the number of elements that have to be handled is reduced and the EPE and the PME are maintained in a constant relative position. On the other hand, the reduction of the number of elements that have to be handled also leads to the effect that the set-up times (Rüstzeit) are shortened and that the handling of the EPE is simplified. Based on these effects, the problem underlying the method according to claim 1 […] can be formulated to consist in providing an improved method wherein the set-up times are significantly shortened and wherein the handling of the EPE is perceptibly simplified. Solution [7] It is apparent that the above mentioned problem is solved by the interaction between the robot and the EPE that can be magnetically fixed and which have integrated permanent magnets, as defined in claim 1 […]. Consideration of further prior art D2 [8.1] According to the impugned decision, starting from the method using a program-controlled robot according to D1, document D2, which discloses an edge forming profiled casing element having integrated PME, is to be taken into account. […] [8.2] The [patent proprietor] considers this view to be wrong. It contests that document D2, which has been cited in the application that has resulted in the opposed patent […], is to be considered as further prior art together with the method according to D1 when the presence of an inventive step is to be assessed. [8.2.1] The [patent proprietor] is of the opinion that there is no indication for using the edge forming profiled casing element known from D2, which is disclosed only in the context of manual handling, in a method such as that of D1, where EPE are handled using a program-controlled robot. [8.2.2] This was also supported by D10 which presents the actual development. This document explains that it was already known to use EPE having integrated PME such as those of D2 in a method for manufacturing concrete products. However, in this method, the EPE had deliberately been handled manually because apparently serious difficulties were to be expected when using a program-controlled robot […]. [8.3] The Board believes the reasons for the impugned decision to be correct and cannot endorse the opinion of the [patent proprietor]. The Board is of the opinion that the skilled person starting from the method according to D1, wherein EPE and PME are handled separately, is almost obliged to take into account the use the EPE having integrated PME from D2, e.g. in order to improve the degree of automatisation and the precision of the method or to solve the problem mentioned above […]. The advantage resulting from the reduction of the number of the elements to be handled (EPE with separate PME according to D1 vs. EPE with integrated PME according to D2) is manifest. It may be added that the serious difficulties encountered when using EPE according to D2 in a method using a program-controlled robot according to D1 have not found any expression in a feature of claim 1 […] nor does the opposed patent report measures that have allowed to overcome these problems. Consequently, as these difficulties have no basis in claim 1 to be assessed, they cannot be taken into account. It is not possible to consider that they prevent the skilled person from using the EPE according to D2. Moreover, such difficulties would not be insurmountable because the skilled person to be considered here is part of a team comprising a person skilled in the field of robots […] For this reason alone (lack of corresponding features in claim 1) the argument that such difficulties are reported in D10, which presents the actual development, cannot succeed. 1832 | 3398
T 1126/09 – What Would My Robot Do?
K’s Law – The ebook
For the sake of completeness, the Board would like to add that this argument is not persuasive. In this context, it is not necessary to discuss whether D10 as a single document can be representative for the actual development of the field under consideration. Even if one assumes, in favour of the [patent proprietor] that this is the case, it is necessary to take into account the whole disclosure of D10 concerning the technical development. When doing so, one finds, as has been pointed out by the Board during the OPs, that D10 mentions a lack of experience in the use of a casing robot as a particular circumstance justifying the manual handling disclosed therein. The possibility of retrofitting with a casing robot is expressly mentioned in this context […]. Therefore, the disclosure of D10 does not allow to draw any conclusion that technical difficulties would have prevented the skilled person from improving the method according to D1 by using the EPE having integrated PME known from D2. [8.4] D2 discloses, as duly considered in the impugned decision and mentioned in the application underlying the opposed patent, that an EPE that can be magnetically fixed (according to features D, E, and G) can be activated by a release button. As far as the disclosure of D2 regarding the handling of the EPE that can be magnetically fixed is concerned, the Board is of the opinion that the [patent proprietor] is right in pointing out that this document only gives indications concerning the handling of EPEs in general […] and provides details only for manual deactivation […] of the integrated PMEs. Obviousness [9.1] According to the opinion expressed in the impugned decision, which the Board endorses, the method of claim 1 does not involve an inventive step when starting from the method according to D1 and taking into account the EPEs known from D2 […]. [9.2] The Board is of the opinion that when the problem-solution approach for assessing inventive step is applied, which the [patent proprietor] has not objected to, one has to assume that the skilled person to be considered […], based on the method for manufacturing concrete products according to the closest prior art D1 […] and trying to solve the problem […] of improving (e.g. regarding the precision of positioning of the EPEs on the casing table) and simplifying the method and of reducing the set-up times, would replace the two elements to be handled in D1 (the EPE and the separate PMEs) by the single element of D2 (i.e. the EPE with integrated PMEs) and would activate the PMEs with the existing robot. Therefore, the method according to features A to F of claim 1 is to be considered obvious over documents D1 and D2, as discussed in the OPs. [9.3] The [patent proprietor] is of the opinion that, irrespective of the above statement, which it has not objected to any more in the end, the method of claim 1 involves an inventive step. The main argument of the [patent proprietor] is based on the fact that neither D1 nor D2, nor their combination (Gesamtschau) gives an indication for proceeding along features A to F taking into account feature G, according to which the PMEs are activated by the at least one program-controlled robot. According to the [patent proprietor] the purpose of the robot used in the method of D1 is to position the PMEs and, in a distinct step, the EPEs (which do not comprise PMEs). Leaving aside the serious difficulties to be expected […], this known method may encompass the possibility that when EPEs according to D2 are used, they are picked up from a store and are precisely positioned on the casing table by using the at least one programcontrolled robot (according to features A, C, and F). However, there was no indication in D1 for subsequently activating the PMEs according to remaining feature G of claim 1. The same was true for D2 because this documents only refers to manual handling of EPEs with integrated PMEs. Consequently, there was no hint in this document tat the integrated PMEs were to be activated by means of a robot. [9.4] The Board is of the opinion that the impugned decision has correctly addressed this argument by stating “… that in principle robots are used in industry for replacing human activities, which allows to save time and costs. In the present case, it is unthinkable that the skilled person, which already uses a robot in all steps of the casing method would not at least try to have the PMEs activated by the robot.” 1833 | 3398
T 1126/09 – What Would My Robot Do?
K’s Law – The ebook
The Board is of the opinion that the last sentence of this citation is crucial in the present case. The skilled person, who is familiar with the idea expressed in D1 to use “a robot for all steps of the casing method” will at least consider having the PMEs according to features A and G activated by the robot, be it only to keep the degree of automation known from D1. When doing so, the skilled person cannot ignore the need for activating the PMEs after having positioned an EPE on the casing table (according to feature G), which is inherent to the PMEs of D2 because of the integrated PMEs. The Board finds the [patent proprietor’s] argument, according to which the skilled person would provide a manual actuation by pressing a release button 18 for activating according to D2, to be unpersuasive. Rather, the Board is of the opinion that the skilled person would provide that all the steps of the method, and, therefore, also the activation of the PMEs, are carried out by the existing program-controlled robot, thereby following the method of D1. The Board believes that this is all the more true as, according to the manual procedure of D2, the activation of the PME can be obtained by simply exerting pressure on the release button of the corresponding PME by the program-controlled robot. [9.5] Regarding the use of the program-controlled robot known from D1 for handling the EPEs according to D2, the [patent proprietor] was of the opinion that the skilled person would expect serious difficulties which could only be overcome through development work that was considerable both from a temporal and from a financial point of view […]. This was particularly true for the activation of the PMEs according to feature G of the invention. These difficulties would have prevented the skilled person from extending the use of the program-controlled robot in the method according to D1 to the activation of the PMEs according to features A and G. The [patent proprietor] has not substantiated the difficulties he had invoked, nor provided evidence for them, although the Board had requested him to do so. As the Board is of the opinion that the facts of the present case do not indicate such difficulties and as neither a feature of claim 1 nor an indication of the opposed patent provide an indication that such difficulties had to be overcome, the argument based on them cannot be taken into consideration when assessing inventive step. As far as this argument is concerned, the Board can only endorse the opinion expressed in the impugned decision according to which the use of the robot as defined in claim 1 may not be trivial but that problems arising in this context and corresponding solutions are not mentioned in claim 1 or in the rest of the patent […]. Regarding the suitability of integrated PMEs according to D2 for activation by robots according to features A and G, it is undisputed that the requirements for an activation by use of a robot are fulfilled even without any modification of the robot because each integrated PME of the EPE according to D2 has a pull-off element (Abziehorgan) 10 for manually deactivating by pulling up this element […], which means that the activation is obtained in reverse order by pushing down this element. [9.6] Therefore, the method according to claim 1 […] does not involve an inventive step when starting from the method according to D1 and taking into account the EPEs known from D2 (A 56). [9.7] This holds true even when the remaining arguments of the [patent proprietor] are taken into account. [9.7.1] One of the arguments is based on the opinion that when inventive step is to be assessed, one has to take into account that, according to the “could-would approach” it is not sufficient for denying the presence of an inventive step that the skilled person, starting from the closest prior art (here: D1) and taking into account further prior art (here: D2) could arrive at the method according to claim 1. Rather, [it has to be examined] whether he, starting from the method according to D1 and taking into account document D2 would indeed arrive at the method according to claim 1. This was not the case because neither D1 nor D2 contained an indication pointing towards such a result based on the combination (Gesamtschau) of documents D1 and D2. [9.7.2] The Board is of the opinion that according to the “could-would approach”, when inventive step is to be assessed, it has to be examined, in each individual case, to which extent the skilled person, starting from the closest prior art and taking into account the effect of the features that distinguish [the claim] from this prior art, or the objective technical problem that can be derived from [this effect], respectively, had good reason (Veranlassung) to adduce further prior art and to apply its teaching to the method / the device of the closest prior art, or, in other words, whether there is any apparent indication (Anhaltspunkt) pointing towards a combination of the teachings of the documents under consideration.
1834 | 3398
T 1126/09 – What Would My Robot Do?
K’s Law – The ebook
As mentioned during the OPs, the Board does not share the point of view of the [patent proprietor] according to which such an indication had to arise from one of the documents D1 or D2. As also mentioned during the OPs, and contrary to the opinion expressed by the [patent proprietor], this also holds true for method steps which the skilled person to be taken into account in the present case may be expected to carry out when using EPEs according to D2 in the method according to D1, using the existing program-controlled robot. In the present case, where the teachings of documents D1 and D2 are combined when inventive step is assessed, the Board is of the opinion that the examination according to the “could-would approach” at first concerns the question whether the skilled person, starting from the method according to D1 with EPEs and permanent magnets which are arranged separately, can be expected, within the framework of his technical know-how and in order to solve the objective problem, to replace these two elements, which are to be handled separately by means of the robot in the known method, by a single element, i.e. the EPE having PMEs according to D2. This question is answered in the affirmative for the reasons mentioned above in section [9.2]. The indication that leads the skilled person to taking into account the EPE according to D2 in the method according to D1 results from his fundamental endeavour to simplify the existing method within the framework of the problem to be solved, for instance, as here, by reducing the number of elements that are to be handled by the robot (D1: EPEs and separate PMEs; D2: EPEs with integrated PMEs) and, as a consequence, the set-up time needed for the handling. The same holds true for the part of the problem that concerns the improvement of the method; it is apparent that the reduction of the number of elements to be positioned contributes to say improving the method by means of an increased positional precision. The further question raised by the [patent proprietor] in this context, to which extent, when starting from the combination of the teachings of D1 and D2, there was an indication to activate the PMEs according to features A and G by means of the program-controlled robot is also to be answered in the affirmative for the reasons given above in section [9.4]. The indication – in this case for taking into account the technical knowledge of the skilled person, see section [2] above – is found in the fundamental endeavour of the skilled person to (further) automatize, here at least with the goal of reducing the set-up times according to a part of the problem. [9.7.3] According to a further argument of the [patent proprietor] the economic success that was due to the solution according to the invention, should not be disregarded when assessing inventive step. In the present case, this argument cannot lead to another conclusion, because the result of the examination using the problem-solution approach does not leave any doubt. For the sake of completeness it may be added that this argument cannot be taken into account also because there are no concrete and established facts that would support it. Finally the appeal was dismissed. NB: If you find the English translation cumbersome here and there, it might just be that it is faithful to the original :-). Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1810/08 – High And Low
K’s Law – The ebook
T 1810/08 – High And Low 14 Okt 2011
Only the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form. Claim 1 as granted read: 1. A polyurethane latex composition, said composition comprising a polyurethane aqueous dispersion that has less than 20 percent pendant chains by weight based on total weight of solids, said polyurethane aqueous dispersion being free of volatile solvent and being suitable for being dried to form a pressure-sensitive-adhesive composition. Claim 1 as maintained read: 1. A polyurethane latex composition, said composition comprising a polyurethane aqueous dispersion prepared from a formulation which includes high molecular weight monols and/or a stochiometric excess of polyols such that the polymer terminates in unreacted polyol chains which are not connected to other polymer molecules and which contains less than 20 percent pendant chains by weight based on total weight of solids, said polyurethane aqueous dispersion being free of volatile solvent and being suitable for being dried to form a pressure sensitive-adhesive composition. (my emphasis) The Board found this claim to lack clarity: [2.1] Claim 1 of the main request and auxiliary request 1 refers to a polyurethane latex composition comprising a polyurethane aqueous dispersion. By way of amendment after grant, the requirement has been introduced into claim 1 of both requests that this dispersion has to be prepared “from a formulation which includes high molecular weight monols”. Since the amendment has been made after grant and is based on a passage from the description, it has to be examined whether the amendment meets the requirements of A 84. [2.2] There is no information in claim 1 of the two requests as to what molecular weights are embraced by the term “high molecular weight”. Moreover, no evidence was provided by the [patent proprietor] to establish that the skilled person, on the basis of his common general knowledge, would know what molecular weights are covered by this term. [2.3] The [patent proprietor] argued that the term “high molecular weight” was defined in the description of the opposed patent and that, on the basis of this definition, the term in claim 1 was clear. The [patent proprietor] in particular relied on the statement in paragraph [0038] of the opposed patent that the molecular weight of a low molecular weight mono-functional active hydrogen compound is less than 600 atomic mass units. The [patent proprietor] argued that this definition of low molecular weight could only mean that the term “high molecular weight” in claim 1 of both requests referred to a molecular weight of 600 or more atomic mass units. However, as is confirmed by decision T 1129/97 [2.1.2-3], it is the claim as such that has to be clear. For this reason alone, the [patent proprietor’s] argument must fail. Moreover, it cannot be excluded that an intermediate molecular weight range exists in between the low molecular weight of less than 600 atomic mass units disclosed in the description of the opposed patent and the high molecular weight referred to in claim 1 of both requests. Consequently, the [patent proprietor’s] assumption that high molecular weights start where low molecular weights end does not necessarily hold true. No definition of high molecular weights can thus be derived from the description of the opposed patent. Also for this reason, the [patent proprietor’s] argument cannot succeed. [2.4] Therefore, claim 1 of the main request and auxiliary request 1 lacks clarity with regard to the term “high molecular weight monols”. These requests thus are not allowable. Consequently, the patent proprietor had to get rid of the unclear feature. However, as he had not filed an appeal, he faced a reformatio in peius problem.
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T 1810/08 – High And Low
K’s Law – The ebook
Auxiliary request 3 is interesting because its treatment by the Board makes us revisit the rules that govern this situation. Claim 1 of this request read: 1. A polyurethane latex composition, said composition comprising a polyurethane aqueous dispersion prepared from a formulation which includes high molecular weight monols and/or a stochiometric excess of polyols such that the polymer terminates in unreacted polyol chains which are not connected to other polymer molecules and said polyurethane aqueous dispersion being free of volatile solvent molecules and which contains less than 20 percent pendant chains by weight based on total weight of solids and being suitable for being dried to form a pressure sensitive-adhesive composition which is tacky due to being prepared by including a mono-functional active hydrogen oligomer with the reactants during the synthesis of the prepolymer or alternately reacting the oligomer with the prepolymer after the prepolymer has been prepared and/or a stochiometric excess of polyols such that the polymer terminates in unreacted polyol chains which are not connected to other polymer molecules. (my emphasis) The Board finds this request to violate the prohibition of reformatio in peius: [4.1] The prohibition of reformatio in peius implies that an amendment effected during appeal proceedings, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected (G 4/93 and G 1/99). Therefore, in appeal proceedings where the opponent is the sole appellant, claim amendments that broaden the claim with regard to the corresponding claim found allowable by the OD are normally to be rejected. Where a patent which has been maintained in amended form would however have to be revoked as a direct consequence of an inadmissible amendment held allowable by the OD, the proprietor, without violating the prohibition of reformatio in peius, may be allowed to file requests, as follows: (a) in the first place, with an amendment introducing one or more originally disclosed features which limit the scope of the patent as maintained; (b) if such a limitation is not possible, with an amendment introducing one or more originally disclosed features which extend the scope of the patent as maintained, but within the limits of A 123(3); (c) finally, if such amendments are not possible, with a deletion of the inadmissible amendment, but within the limits of A 123(3) (see the headnote of G 1/99). [4.1.1] In the present case, the feature “... prepared by including a mono-functional active hydrogen oligomer ...” was substituted in claim 1 of auxiliary request 3 for the feature “... prepared from a formulation which includes high molecular weight monols ...” in claim 1 of the request found allowable by the OD. It is thus a mono-functional active hydrogen oligomer rather than a high molecular weight monol that is to be used as reactant according to claim 1 of auxiliary request 3. Apart from monols, the term “mono-functional active hydrogen oligomer” additionally covers e.g. mono-functional amines or thiols. This implies that by the amendment of claim 1 of auxiliary request 3, this claim has been broadened with regard to claim 1 of the request found allowable by the OD. This amendment thus puts the appellant (opponent) in a position that is worse than it was in under the contested decision. The amendment therefore goes against the prohibition of reformatio in peius. [4.1.2] The [patent proprietor] argued that the amendment had been carried out in order to meet the board’s objection under A 84 raised against the term “high molecular weight monols”. Therefore, in the [patent proprietor’s] view, the amendment corresponded to one of the three options considered in G 1/99 not to violate the principle of reformatio in peius. As has been set out above, this claim, by way of the amendment in claim 1 of auxiliary request 3, has been broadened compared to claim 1 of the request held allowable by the OD. The [patent proprietor’s] amendment thus corresponds to the second option referred to in G 1/99. According to this decision, this second option does not violate the prohibition of reformatio in peius if a limitation according to the first option is not possible. In the present case, the first option would however have been available to the [patent proprietor]. More particularly, the [patent proprietor] could equally have restricted the high molecular weight monols in claim 1 of the request held allowable by the OD on the basis of the specific 1837 | 3398
T 1810/08 – High And Low
K’s Law – The ebook
high molecular weight monols disclosed in the examples of the application as filed, e.g. the 1800 molecular weight hetero ethylene oxide/propylene oxide monol of example 1. Thereby, one or more originally disclosed features would have been introduced into claim 1 of the request held allowable by the OD which at the same time would have limited the scope of the patent as maintained. As the first option thus would have been possible, the second option chosen by the [patent proprietor] does not escape the prohibition of reformatio in peius. In line with G 1/99, the amendment of the high molecular weight monol to a mono-functional active hydrogen oligomer in claim 1 of auxiliary request 3 therefore violates the prohibition of reformatio in peius. […] Obviously, things would have been much easier for the proprietor if he had filed an appeal. Unless you are not adversely affected by the decision, never let the opponent be the only one to appeal. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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J 19/10 – On Time Limits
K’s Law – The ebook
J 19/10 – On Time Limits 13 Okt 2011
The present decision deals with a late filed divisional application. The mention of the grant of the “parent” application was published on April 2, 2008. The divisional application was received at the EPO after that date. With letter dated April 14, 2008, the applicant contended that a postal strike had taken place in the Munich area at least on April 1, 2008; he therefore assumed that the first divisional application had been filed in due time. On April 24, 2008, the applicant was informed by the Receiving Section (RS) that European the late filed application was not being processed as a European divisional application. On May 2, 2008, the applicant filed another divisional application (second generation divisional application with respect to the “parent application”). The applicant requested an appealable decision pursuant to R 112(2). He submitted that the finding of loss of rights was inaccurate because in view of the postal strike the first divisional application had been filed in time and therefore should be treated as a divisional application. If the postal strike did not result in the first divisional being regarded by the EPO as having been filed in time as an auxiliary request he asked for further processing in relation to the filing of the first divisional. In response, the RS informed the applicant that the alleged postal strike could not have any relevance in the present context, because R 134(2) clearly applied to periods (time limits) only and thus was not applicable. R 36(1) did not set a time limit but a condition for the filing of a divisional application, namely the pendency of the earlier European patent application (see e.g. J 24/03 [4]). The present European patent application could therefore not be processed as a divisional application. The auxiliary request for further processing also referred to the failure to observe a time limit. Consequently, further processing was not available either. The applicant maintained all requests. He argued that J 24/03 was not applicable to the present case, because former R 85(2) EPC 1973 referred to a “time limit”, whereas new R 134(2) referred to a “period”. The applicant further submitted that R 134(2) was more generally applicable than A 122. He concluded this from the fact that A 122 EPC 1973 was not applicable to priority-claiming applications, whereas R 85(2) EPC 1973 (R 134(2)) was. On April 27, 2010, the RS issued a decision rejecting all the applicant’s requests. The applicant then filed two appeals against this decision, one for the first generation divisional (case J 19/10) and another one for the second generation divisonal (J 26/10). Before the Board, the appellant maintained all arguments previously made in this matter. Furthermore, he argued that the wording “The time limit for filing divisional applications must be observed” used in the examination report dated 19 July 2006 on the “parent” application would lead a reasonable addressee to conclude that there was a time period in which divisional applications could be filed and hence, that this period could be extended, e.g. in the case of a postal strike. By not allowing him an extension, the decision under appeal had violated the principle of protection of legitimate expectations. The Board first criticized the RS for having issued one single decision for both divisional applications. It then deals with the subject-matter of the appeal. NB: For reasons that I do not understand the Board has decided to hide the application numbers and to replace them by XXXXXXXX and YYYYYYYY. In order to make the decision more readable, I rather refer to the “divisional” application and to the “parent” application.
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J 19/10 – On Time Limits
K’s Law – The ebook
[3] The subject-matter of the present appeal is the request to set aside the noting of loss of rights in respect of [the “divisional” application] (main request), the request for further processing in respect of [the “divisional” application] (auxiliary request) and the request that [the “divisional” application] be treated as a divisional application of [the “parent” application]. Main request [4] The request that the noting of loss of rights be set aside is allowable if the decision of the RS of 24 April 2008 that [the “divisional” application] would not be processed as a European divisional application of [the “parent” application] was incorrect. However, that is not the case. [5] According to R 36(1), a divisional application may be filed relating to any pending earlier European patent application. Where the earlier application proceeds to grant, an application is pending up to but not including the date of publication of the mention of grant in the European Patent Bulletin (Notice dated 9 January 2002, OJ EPO 2002, 112; J 24/03 [4]; J 7/05 [2.1]; G 1/09). Therefore, the parent application was no longer “pending” pursuant to R 36(1) when [the “divisional” application] was filed as a divisional application on 2 April 2008. This fact is not disputed by the appellant. [6] However, the applicant contended that a postal strike took place in the Munich area at least on 1 April 2008 and consequently assumed that [the “divisional” application] should be deemed to have been filed in due time according to R 134(2) and could be treated as divisional application. R 134(2) reads as follows: “If a period expires on a day on which there is a general dislocation in the delivery or transmission of mail ..., the period shall extend to the first day following the first day of the interval of dislocation ...” (emphasis added). Therefore R 134(2) is applicable only if the wording “... to any pending earlier European patent application ...” pursuant to R 36(1) imposes a period, i.e. a time limit (emphasis added). [7] In several earlier decisions, the boards of appeal have ruled that the wording “... to any pending earlier European patent application...” in R 36(1) does not set a period/time limit, but rather sets a condition; see e.g. J 10/01 [15-20], J 24/03 [4], J 18/04 [2.1], J 7/05 [3] and G 1/09 [3.2.4]. In view of this established case law, particularly the very thorough and detailed reasoning in J 18/04, the board sees no reason to take a different approach in the present case. Nor is it convinced by the arguments brought forward by the appellant. [7.1] The argument of the appellant that J 24/03 was not applicable to the present case, because former R 85(2) EPC 1973 referred to a “time limit” whereas new R 134(2) referred to a “period” is legally not sustainable in the light of the documents underlying the introduction of the EPC 2000. Special edition No. 5 OJ EPO 2007, 200, under “R 134” refers the reader to “Explanatory remarks 2002: CA/PL 5/02 Rev. 1 Add. 1”. In “Chapter V - R 85 EPC 1973” (corresponding to R 134(2)) of these “Explanatory remarks” it is noted that “Amendments are purely editorial”. Therefore, no legal consequences can be inferred from the replacement of “time limit” in R 85(2) EPC 1973 by “period” in R 134(2). In this regard reference is also made to J 18/04 [21] where the board found that in R 83 EPC 1973 (“Calculation of time limits”) the term period was the only logical substitute for the term time limit throughout the wording of the rule. [7.2] Furthermore, the appellant contends that R 134(2) is more generally applicable than A 122. He concludes this from the fact that A 122 EPC 1973 was not applicable to applications claiming priority, whereas R 85(2) EPC 1973 was applicable in such cases. This may be so, but it results from the fact that A 122 and R 134(2) have differently worded requirements. Aside from that, A 122 EPC 1973 was not applicable to applications claiming priority (period of twelve months), because re-establishment into the time limit referred to in A 87(1) EPC 1973 was explicitly excluded in A 122(5) EPC 1973, whereas R 85(2) EPC 1973 did not comprise such an exclusion. By contrast, the EPC – including A 122 and R 134(2) – draws no distinction with regard to the concept of “time limit”. In the absence of any indications to the contrary, if a term has the same wording it must be assumed to have the same meaning. [8] Finally, the appellant argues that an extension of the “period for filing a divisional application” has to be allowed due to the principle of protection of legitimate expectations. He infers this from the fact that in non-unity communications from the EPO, e.g. in the examination report dated 19 July 2006 concerning [the “parent” application], the standard wording “The time limit for filing divisional applications (R 25(1) EPC 1973) must be observed” is used. [8.1] According to the case law of the boards of appeal, the principle of protection of legitimate expectations governing the procedure between the EPO and applicants requires that communications addressed to applicants 1840 | 3398
J 19/10 – On Time Limits
K’s Law – The ebook
must be clear and unambiguous, i.e. drafted in such a way as to rule out misunderstandings on the part of a reasonable addressee (G 2/97). The board is not satisfied that the appellant can rely on the principle of protection of legitimate expectations, even if it is assumed in the appellant’s favour that the examination report of 19 July 2006 contained misleading information in mentioning a time limit to be observed pursuant to R 25(1) EPC 1973. At least three of the abovementioned decisions (see point [7]) finding that R 25(1) EPC 1973 (R 36(1)) does not set a time limit but a condition, namely J 10/01, J 24/03 and J 18/04, were issued well before the notification of the examination report dated 19 July 2006. Here the board would refer in particular to J 24/03 and J 18/04, which were published in the Official Journal of the EPO and substantiated that finding in considerable detail. [8.2] In view of this jurisprudence of the Legal Board of Appeal, the appellant’s professional representative could not simply rely on the legal accuracy of the wording of the information in the examination report of 19 July 2006. The relevant information was obviously intended only to remind the applicant, as a courtesy service, of the need to file a divisional application in respect of that part of the invention which was held to lack unity. This assessment is also supported by the wording of the respective passage of the communication of 19 July 2006 […], informing the applicant that “The subject-matter to be excised may be made the subject of one or more divisional applications” and thus just provided as a recommendation or hint as to how to overcome the non-unity objection raised by the examining division. Unreserved reliance on the correctness of the said information is all the more unjustified since the professional representative must or should have known that EPO examiners do not normally handle procedural issues such as valid filing dates, which are generally dealt with by the RS. [8.3] In the present case the professional representative could be expected to be familiar with procedural matters in general, and the boards’ detailed and consistent jurisprudence in particular (see J 5/02 [3.2]); T 267/08 [5.2.1]). He has also to be aware that any questions relating to the filing date should be clarified with the RS (see J 2/08 [55]). Taking all these circumstances into account it cannot be assumed that a reasonable addressee would and could justifiably conclude that there is a time period in which divisional applications can be filed and that such a period can be extended in the case of a general dislocation of mail services within the meaning of R 134(2). [9] Since for the reasons stated above R 36(1) does not set a “period/time limit” and the principle of protection of legitimate expectations does not apply, R 134(2) (requiring a “period”) is not applicable. Thus the question whether there was a “general dislocation in the delivery or transmission of mail” within the meaning of R 134(2) can be left undecided. Hence, the main request that the noting of loss of rights be set aside cannot be allowed. Auxiliary request [10] As an auxiliary request the appellant seeks further processing of [the “divisional” application] as a divisional application from [the “parent” application] pursuant to A 121. However, A 121(1) also requires that “... an applicant fails to observe a time limit ...” (emphasis added). Since, as has been stated above, the EPC draws no distinction with regard to the concept of “time limit” and in the absence of any indications to the contrary, this term must be assumed to have the same meaning in A 121(1) as in R 134(2). Due to the fact that R 36(1) does not set a “period/time limit” A 121(1) is not applicable to this case either. Consequently, the auxiliary request too must fail for this reason alone. [11] Since both the main request and the auxiliary request are rejected, [the “divisional” application] cannot be treated as a divisional application. Request for refund of fees [12] The board considers that the request for “a refund of all refundable fees” submitted with the faxed letter dated 16 May 2011 fails to make clear either its scope and its content and is not admissible. Thus, this request cannot be dealt with and has to be disregarded. In the absence of any substantiated request by the appellant it is not up to the board to identify which fees in the first-instance and appeal proceedings might be refundable. Since the request is clearly and explicitly directed to “refundable” fees, it a priori does not encompass a possible reimbursement of the appeal fee, because in the present case the appeal fee is obviously “not refundable” pursuant to R 103(1)(a). […]
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J 19/10 – On Time Limits
K’s Law – The ebook
The appeal is dismissed. Should you wish to download the whole decision, just click here. As already mentioned, there is also a parallel case (J 26/10).
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T 840/09 – Can’t Complain
K’s Law – The ebook
T 840/09 – Can’t Complain 12 Okt 2011
Only the patent proprietor filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form, according to the main request on file. The appellant argued that he was adversely affected by the finding of the OD that the priority claim was not valid. *** Translation of the French original *** [1] The present appeal does not aim at a modification of the impugned decision as such but only at the acknowledgement of the validity of the priority claim […] to French patent application n° 0304203. [2] In said decision the OD has established that the patent under consideration as amended according to the main request of the patent proprietor, complied with the requirements of the EPC (and could, therefore, be maintained provided that the conditions laid down in the Implementing Regulations were fulfilled – A 101(3)). The OD has given reasons for this decision. Among the reasons regarding novelty it has considered that the patent could not validly claim the priority of April 4, 2003, which is the filing date of French application FR 0304203. [3] However, this consideration of the OD does not prevent the decision from having been taken in full conformity with the (main) request of the patent proprietor, and it does not appear in the order (dispositif) of the decision. It simply constitutes a ground (motif) which as such does not have res judicata authority and which does not bind any national jurisdiction. Contrary to the argument of the appellant […] it is not a “decision which makes it possible to invoke (rend opposables) [against the patent] all documents that have been published between the priority date and the effective filing date, as well as all disclosures, public uses etc. having taken place during that same period of time.” Rather, it is a reasoning supporting the decision which as such has granted, within the framework of an interlocutory decision, the whole (main) request of the patent proprietor as filed before the OD. [4] In agreement with the established case law of the Boards of appeal (see T 84/02 as an example among a great number of decisions), such a ground, even if it is not in favour of the patent proprietor, does not adversely affect him and, consequently, cannot be challenged pursuant to A 107. [5] The appellant has referred to decision T 73/88 where the following is stated: “In the event of an appeal being filed by an opponent, however, if the patentee wishes to contend that such adverse reasoning was wrong [in the case under consideration, to overcome the objections against [the validity of] the priority claim, as in the present case] he should set out his grounds for so contending in his observations […] in reply to the statement of grounds of appeal, by way of cross- appeal.” He has argued that this sentence showed that the question of whether a priority claim is valid is a claim (prétention) of the patent proprietor because it can be the object of a cross-appeal, and that granting or refusing this right is a substantive decision with regard to a claim of the patent proprietor and not just a simple ground of the decision. Decision T 84/02 cited by the opponents and by the Board and decision T 73/88 are, therefore, contradictory, and, moreover, contrary to balance between the parties. The Board admits that the expression “by way of cross-appeal” does not fit very well into the procedural system of appeals under the EPC. However, the cited sentence is directed at means of defence of the patent proprietor in the case where an (admissible) appeal has been filed by the opponent. It does not deal with the requirements of A 107 regarding an appeal filed by the patent proprietor and, therefore, it does not support the present argumentation of the patent proprietor. […] The appeal is inadmissible. Should you wish to download the whole decision (in French), just click here. The file wrapper can be found here. 1843 | 3398
J 23/10 – Sound Of Silence
K’s Law – The ebook
J 23/10 – Sound Of Silence 11 Okt 2011
The applicant filed a request for re-establishment after it had been informed that its application was deemed to be withdrawn as a consequence of the non-payment of the renewal fee for the third year. The applicant submitted that the notice drawing its attention to A 86(2) EPC 1973 had been received by Ms R., an employee of the applicant, who had written back to the EPO asking for substantiation of the annuity due date. Since she had not received any reply, she had assumed everything was in order and no further action was needed. The applicant had planned to pay the renewal fees via CPA. CPA got monthly lists of hundreds of cases. However, the present case was not included in these lists. The applicant was encountering severe problems with the interface between its internal software and CPA. After a communication sent by the Receiving Section, the applicant filed an affidavit of Ms R. in which she explained that prior to April 2006 the applicant’s patent data were electronically exchanged with CPA and automatically entered onto CPA’s records. Owing to a change in the applicant’s software system, after April 2006 the patent data were sent by herself and manually entered by CPA in their records. She could not say why she had not informed CPA. She could simply guess that she had overlooked this particular number when preparing the relevant lists. Furthermore, since she was puzzled by the exact meaning of the communication pursuant to A 86(2) EPC 1973, she had written back to the EPO for clarification. As she had not received an answer, she had understood that the communication had been sent to her firm by accident and did not need to be acted upon. The Receiving Section refused the request for re-establishment. Did the Board allow it? Allowability of the request for re-establishment [4] According to A 122(1), an applicant can have his rights re-established only if he has sufficiently shown that in spite of all due care required by the circumstances having been taken, he was unable to observe the time limit. Under the established case law of the boards of appeal, an isolated mistake within a normally satisfactory system is excusable. The applicant or his representative must plausibly show that a normally effective system for monitoring time limits prescribed by the EPC was established at the relevant time in the office in question (see references in “Case Law of the Boards of Appeal of the European Patent Office, 6th edition 2010”, VI.E.7.3.3 a)). [5] In the present case, it has not been shown that the applicant had such a satisfactory system in place. Monitoring of renewal-fee payments was performed by the use of a computer system which contained a great amount of data. Based on the date of filing of an application, this system calculated the due dates for the renewal fees. Every month a report was run in this database and a spreadsheet was generated which listed all the applications for which renewal fees had to be paid within the near future. This list was sent to CPA which then paid the fees due. In the case of a PCT application, the system only calculated the due date for the renewal fee once the “NP-filing date” had been coded, which for unknown reasons had not been done in the present case. This mistake obviously went unnoticed, which seems to imply that the thirty-one month time limit for entering the regional phase before the EPO was not monitored. For a system to be satisfactory, it must include a reminder system for an upcoming time limit which has to be met. Since the coding for entry into the European phase had not been performed, the system should have sent a warning that action had to be taken. If such a mechanism had been in place it would have been realised that the only procedural act still outstanding was payment of the renewal fee. Moreover, because no due date for the renewal fee had been calculated, the application did not get onto the list for CPA. At that stage, the next mistake happened. The representative explained during the oral proceedings that Ms R. should have checked the list for completeness based on the data of the parent application (i.e. the PCT application). It seems that this was her essential task at this stage, because the report and the corresponding spreadsheet were generated by the software system. In her affidavit, Ms R. stated that she guessed that she had overlooked this particular application number, which seems to imply that she had not performed her tasks properly. Summarising the above, the Board is of the 1844 | 3398
J 23/10 – Sound Of Silence
K’s Law – The ebook
view that the non-payment was caused not by an isolated mistake but by a series of mistakes which all went unnoticed, so that it cannot be said that the system in place was satisfactory. [6] Irrespective of the applicant’s system, all due care was not taken, given that the applicant still had the possibility of paying the renewal fee within the additional period under A 86(2) EPC 1973 after receipt of the EPO’s notice of 17 April 2007 and it did not take the necessary action. By the notice of 17 April 2007, the applicant was clearly informed that the renewal fee had not been paid in due time and that it could still be paid within an additional period. When Ms R. received this notice, all due care would have required checking the files in order to find out why it had not been paid. By doing so the mistake would have immediately become evident. Instead, Ms R. wrote to the EPO, enquiring about the due date. The representative submitted that from a US applicant who is not necessarily familiar with the European patent system no other reaction could be expected. It was not necessary to provide a procedure in case the EPO erroneously sent a communication directly to the applicant instead of to the European representative. In the Board’s view, it is indeed not necessary to have a specific procedure for such a situation, but a reasonable reaction which could have been expected of anybody would have been to check the situation based on the applicant’s own files. It cannot reasonably be assumed that, if no reply is received to an enquiry made with the EPO, everything is in order. This applies even more, if one is not familiar with the European patent system and if the applicant has the relevant information at hand to clarify the situation, either by checking its own records or by asking the appointed European representative. Simply believing, as was submitted by the representative, that the notice of 17 April 2007 did not concern the present application, and that no further action was required does not meet the requirement of all due care. [7] The applicant maintained that the confusion arose because the EPO had sent the notice dated 17 April 2007 to the applicant itself, instead of to the appointed European representative. If it had sent the notice to the representative, the mistake would not have happened. It also would not have happened if the EPO had replied to Ms R.’s enquiry. Therefore, the principle of good faith applied. [8] The principle of good faith implies that measures taken by the EPO should not violate the reasonable expectations of the parties to the proceedings. It is to be noted that the notice drawing attention to the additional period under A 86(2) EPC 1973 is a voluntary service. Hence, the applicant cannot derive any claims if this communication is either not sent (see J 12/84) or not sent to the correct addressee. The question remains whether based on the fact that the Office had not replied to Ms R.’s enquiry (at least not to herself) she could reasonably assume that everything was in good order and no further action was necessary. The protection of the legitimate expectations of users of the European patent system requires that the user must not suffer a disadvantage as a result of having relied on erroneous information received from the EPO or on a misleading communication (G 2/97 [4.1] summarising the previous case law). In the present case, the Office did not give incorrect information but Ms R. drew incorrect conclusions from the fact that the Office did not reply to her. Furthermore, from Ms R.’s enquiry it was not apparent that she was under the impression that the fee did not have to be paid at all, but only that she was puzzled about the due date. As set out above, Ms R., who was a patent prosecution paralegal, could easily have established the situation by looking into her own records or consulting the European representative. Therefore, the principle of good faith does not apply. Exclusion from file inspection [9] According to R 144(d) in conjunction with Article 1(2)(b) of the decision of the President concerning documents excluded from file inspection (Special edition 3/2007 OJ EPO, 125), documents or parts thereof can be excluded from file inspection if their inspection would be prejudicial to the legitimate personal or economic interest of natural or legal persons. The applicant’s representative explained that from the spreadsheet printout it could be seen that Microsoft paid the renewal fees for certain applications for which they were not the registered applicant. These applications had been transferred to them but this had not been made public. It was still the assignor who was mentioned in the register. In the Board’s view, this is information about internal relationships between the parties concerned, the 1845 | 3398
J 23/10 – Sound Of Silence
K’s Law – The ebook
publication of which could be prejudicial to their economic interests, while being irrelevant for the assessment of the patent application as such and therefore to be excluded from file inspection. Moreover, the content of the list did not play any role in the Board’s decision. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1846 | 3398
T 1168/08 – Unjustified
K’s Law – The ebook
T 1168/08 – Unjustified 10 Okt 2011
The patent proprietor appealed against the decision of the Opposition Division (OD) to revoke the opposed patent. Claim 1 of this patent (and of the main request before the OD) read: An antiperspirant or deodorant cosmetic aerosol composition suitable for topical application to the human skin, comprising: i. an antiperspirant or deodorant active; ii. a moisturising cream providing occlusion or humectancy; iii. a non-polar hydrocarbon propellant and; iv. a carrier for the antiperspirant or deodorant active. According to the decision under appeal, the main request was not allowable as claim 1 lacked novelty in view of documents D1, D2, D4 to D6 and D14. The other requests either did not comply with A 123(2) (auxiliary requests 1 to 7) or lacked novelty (auxiliary request 8) Together with the statement setting out the grounds of appeal, the patent proprietor submitted 32 sets of claims forming basis for their new Main and 1st to 31st Auxiliary Requests. Claim 1 of all those requests, compared to claim 1 as granted, was restricted by the use of an additional ingredient (v) defined to be a single non-volatile emollient or a mixture of emollients selected from fatty acids, fatty alcohol esters, slightly water-soluble ethers and alcohols, hydrocarbons, water-insoluble ethers, mineral oils and polyorganosiloxanes. The nature of the composition according to claim 1 was furthermore restricted in all requests by defining it as anhydrous and/or free from ethanol. Claim 1 of the 1st, 5th-7th, 12th-15th, 17th, 21st-23rd and 28th-31st auxiliary Requests contained in addition the proviso that the claimed composition “does not contain from 0.01% to 5% by weight of a trihydroxy stearin suspending agent”. In response to objections filed by the opponents, the patent proprietor filed revised 1st, 5th-7th, 12th-15th, 17th, 21st-23rd and 28th-31st auxiliary requests in order to correct a typing error concerning the place of the decimal in the amount of 0.01% defined in the proviso, which amount should read instead “0.1%”. The Board then summoned the parties to oral proceedings (OPs) to be held on June 10, 2011. In preparation for the OPs, the Board issued a communication dated 5 April 2011 containing the preliminary and non-binding opinion that none of the requests appeared to meet the requirements of A 123(2). Concerning the issue of novelty of claim 1 over the disclosure of Examples 6 and 7 of D18 raised by the opponents, the Board indicated, inter alia, that the question of whether the compositions 6 and 7 of D18 comprised “a moisturising cream providing occlusion or humectancy” had to be examined in view of the meaning to be attributed to this expression. Attention was drawn in this respect to the specification. It appeared in view of the relevant passages that the expression “a moisturising cream providing occlusion or humectancy” was meant to define any cream which would either reduce “the rate of transepidermal water loss through old or damaged skin” or protect “otherwise healthy skin from the effect of a drying environment”. As the patent in suit did not quantify the degree of reduction or protection qualifying a cream as being occlusive, it appeared that any cream providing any degree of reduction of the rate of transepidermal water loss or any protection from the effect of a drying environment should be considered as a cream providing occlusion. On May 25, 2011, the submitted five sets of claims as their new main and 1st to 4th auxiliary requests. Claim 1 of the new main request read Use of an antiperspirant composition for providing an antiperspirant effect while moisturising the skin, which composition comprises: i. an antiperspirant active; ii. a moisturising cream providing occlusion or humectancy; iii. a non-polar hydrocarbon propellant and iv. a carrier for the antiperspirant active. 1847 | 3398
T 1168/08 – Unjustified
K’s Law – The ebook
In its decision, the Board first pointed out that the claims on file were filed at a very late stage of the proceedings (about two weeks before the OPs and more than two years after having received the reply of the opponents to the statement setting out the grounds of appeal). It then went on: [3] The [patent proprietor’s] justification for the late filing of the new requests, namely that they had been filed in reaction to the Board’s communication, is not acceptable here, because the argumentation in support of the Board’s preliminary opinion that the claimed subject-matter had no basis in the application as originally filed and lacked novelty over D18 corresponded in substance to the reasoning of [opponent] II in reply to the grounds of appeal. A Board communication under Article 15(1) RPBA is intended as guidance for the OPs. It helps the parties to focus their argumentation on issues that the Board considers crucial for reaching its decision. Where the Board’s communication contains a preliminary opinion based solely on the issues raised by the parties and their arguments, that communication cannot be taken as a justification for submitting new requests that the parties could have filed earlier. In decision G 4/95 of the Enlarged Board of Appeal (EBA), it is pointed out that both opposition and opposition appeal procedures are primarily written procedures. In principle, OPs are scheduled at a point in time within an opposition or opposition appeal procedure when the written submissions of all parties, including the written presentation of facts and evidence by all parties, are complete. In the present case, the [patent proprietor], at the latest after having received the submissions of [opponent] II that the claims proposed had no basis in the application as filed and that their subject-matter was in part anticipated by D18, should have submitted one or more additional set(s) of claims in order to overcome those objections if they considered it necessary. They chose, however, not to file any such request, the revised 1st, 5th7th, 12th-15th, 17th, 21st-23rd and 28th-31st auxiliary requests filed with letter dated 2 December 2009 being submitted only in order to correct a typing error in the disclaimer contained in the previous requests, not to overcome the [opponent’s] objection, who had clearly objected to the introduction of that disclaimer, as it was made to overcome a novelty objection in view of prior art D18 that could not be considered as an accidental disclosure. [4] The question also arises whether the new requests would overcome the existing objections. Claim 1 of the main and 1st to 3rd auxiliary requests [4.1] The [opponent’s] arguments had led the Board to the preliminary view, as indicated in the communication dated 5 April 2011, that D18 disclosed with its Examples 6 and 7 compositions that contained (i) an antiperspirant active comprising an aluminium salt (Aluminiumchlorohydrate), (iii) a non-polar hydrocarbon propellant (Propellant CAP 30), (iv) a volatile carrier fluid for the antiperspirant active (Cyclomethicone DC 245) and (v) an emollient ester of a fatty alcohol (Finsolv® TN). It was indicated in the Board’s communication that the homogenised mixture of Cyclomethicone DC 245, Finsolv® TN and Thixcin R that was contained in the compositions of Examples 6 and 7 of D18 was implicitly a moisturising cream providing occlusive properties within the meaning of the patent in suit, since Thixcin R was a known occlusive agent. Thus, the composition the use of which is now claimed in claim 1 of any of the present main and 1st to 3rd auxiliary requests was indicated in the Board’s communication to be disclosed in D18. [4.2] The [patent proprietor] argued at the OPs before the Board that the use according to claim 1 of any of the new main and 1st to 3rd auxiliary Requests was novel over the disclosure of Examples 6 and 7 of D18, by virtue of the fact that the compositions described in Examples 6 and 7 of D18 were not described in that document to be used for the purpose of providing, in addition to the antiperspirant effect, also a moisturising effect for the skin. In other words, the sole definition in the present use claims of the purpose “while moisturising the skin” provided a distinguishing feature over the disclosure of D18, thereby overcoming in the [patent proprietor’s] opinion the [opponent’s] objection for lack of novelty. No other arguments were presented by the [patent proprietor] as to why the claimed use was novel over D18. It was in particular not argued that the composition the use of which is now defined in claim 1 of any of the present Main and 1st to 3rd Auxiliary Requests structurally differed from those disclosed in D18. The [opponent] also did not rebut the view that the homogenised mixture of Cyclomethicone DC 245, Finsolv® TN and Thixcin R provides occlusion. 4.3 According to decisions of the EBA G 2/88 and G 6/88 a claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under A 54(1) provided that such technical feature has not previously been made available to the public. 1848 | 3398
T 1168/08 – Unjustified
K’s Law – The ebook
The question to be answered in the case under consideration is therefore whether or not in D18 a moisturising effect is disclosed. As shown above, the existence of an occlusive effect brought about by the creamy mixture obtained in Examples 6 and 7 of D18 has been implicitly made available to the public, as outlined in the Board’s communication dated 5 April 2011. Hence, the condition defined in decisions G 2/88 and G 6/88 to recognise novelty of the use of a known compound for a particular purpose is therefore here not fulfilled. Thus, claim 1 as defined in any of the main and 1st to 3rd auxiliary requests does not prima facie overcome the existing objection of lack of novelty over D18. […] [5] Accordingly, in view of the circumstances of the present case the late-filed main and 1st to 4th Auxiliary Requests that have been submitted in the absence of a proper justification and which are prima facie not allowable are in the interest of procedural economy not admitted into the appeal proceedings under A 114(2) in conjunction with Article 13(1) RPBA. As a consequence, the appeal was then dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1849 | 3398
K’s Law – The ebook
Interpretative Spotlight: Directly
Interpretative Spotlight: Directly 8 Okt 2011
The opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form. Claim 1 of the main request before the Board read (in English translation, taken from the patent as granted): Internal combustion engine having a crankcase (1) in which is rotatably mounted a crankshaft to which at least one piston-carrying connecting rod is coupled, the piston being moveable in a cylinder which is covered by a cylinder head so as to form a working space, it being possible by means of gas exchange devices for fresh gas to be fed to the working space from a fresh gas line and for exhaust gas to be discharged from the working space into an exhaust gas line, and the exhaust gas line and the fresh gas line being connected by means of an air-cooled recirculation line, a portion of which is embodied as an air/exhaust gas heat exchanger (14) arranged directly on the internal combustion engine, characterized in that an existing cooling air stream of the internal combustion engine, which cooling air stream is supplied by a cooling air fan (8) which is integrated in the internal combustion engine, flows through the air/exhaust gas heat exchanger (14).(my emphasis) The opponent argued that this claim was not novel over document E1. The patent proprietor pointed out that the claim was new because E1 did not discloses the feature that the air/exhaust gas heat exchanger was arranged directly on the internal combustion engine. In D1 the exhaust gas heat exchanger 84 was inserted in a radiator block 24 mounted on the vehicle chassis 12, i.e. not directly on the internal combustion engine. The opponent argued that the feature only taught that the air/exhaust gas heat exchanger had to be arranged so close to the internal combustion engine that it was situated in a flow of cooling air. The wording did not exclude that there was a further aggregate between the internal combustion engine and the air/exhaust gas heat exchanger. What did the Board decide? *** Translation of the German original *** [2.1] Document E1 discloses an internal combustion engine having a crankcase 30 (see Fig. 1) in which is rotatably mounted a crankshaft 20 to which at least one piston-carrying connecting rod is coupled, the piston being moveable in a cylinder 34 which is covered by a cylinder head so as to form a working space, it being possible by means of gas exchange devices for fresh gas 42 to be fed to the working space from a fresh gas line 64 and for exhaust gas 40 to be discharged from the working space into an exhaust gas line. The exhaust gas line and the fresh gas line are connected by means of an air-cooled recirculation line 82, a portion of which is embodied as an air/exhaust gas heat exchanger 84. An existing cooling air stream of the internal combustion engine, which cooling air stream is supplied by a cooling air fan 18 which is integrated in the internal combustion engine, flows through the air/exhaust gas heat exchanger.
1850 | 3398
K’s Law – The ebook
Interpretative Spotlight: Directly
[2.2] The subject-matter of claim 1 differs from this internal combustion engine in that the air/exhaust gas heat exchanger 84 is arranged directly on the internal combustion engine. [2.2.1] According to the literal sense of “arranged” and “directly”, this means that the heat exchanger is provided immediately (unmittelbar) on the internal combustion engine, i.e. that no other part may be between them. [2.2.2] The OD and the [patent proprietor] argued that this feature required the heat exchanger to be fixed (befestigt) to the internal combustion engine. According to the established case law of the Boards of appeal, terms used in patent documents are given their normal meaning in the relevant art, unless the description gives the terms a special meaning (see, for instance, T 1321/04). In the present case the figure of the patent shows that that the air/exhaust gas heat exchanger 14 is fixed (befestigt) to the internal combustion engine. However, as the description only uses exclusively the term “arranged” (“angeordnet”), it is not unequivocal that the term is used in its narrower meaning in claim 1.
1851 | 3398
K’s Law – The ebook
Interpretative Spotlight: Directly
Therefore, claim 1 does not require the heat exchanger to be fixed to the internal combustion engine. [2.2.3] As the cooling air fan according to claim 1 is an integral part of the internal combustion engine, what is claimed is that there is no further part between the cooling air fan and the air/exhaust gas heat exchanger. [2.3] Although the heat exchanger 84 of document E1 is not fixed to the internal combustion engine but is fixed to the chassis 12 via the radiator block 24, it is arranged directly on the internal combustion engine within the meaning of claims 1, i.e. there is no further part between the heat exchanger 84 and the cooling air fan 18. [2.4] Consequently, document E1 discloses all the features of claim 1 and the subject-matter of the claim is not novel within the meaning of A 54(1)(2) EPC 1973. Should you wish to download the whole decision (T 351/10; in German), just click here. The file wrapper can be found here.
1852 | 3398
T 299/09 – Just Can’t Do This
K’s Law – The ebook
T 299/09 – Just Can’t Do This 7 Okt 2011
During the proceedings before the Opposition Division (OD), after the summons to oral proceedings (OPs) had been sent, one of the opponents had filed document E15. The OD had then admitted this document and had found claim 1 of the main request to lack inventive step over a combination of documents E15 and E12. It had then maintained the patent in amended form, based on auxiliary request 1. The patent proprietor filed an appeal against this decision and asked the Board to dismiss document E15 as belated. Here is the Board’s answer. *** Translation of the German original *** [2] The request to dismiss document E15 as having been filed belatedly […] could not be granted, for the following reasons. [2.1] Pursuant to Article 12(4) of the Rules of Proceedings of the Boards of appeal (RPBA), without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under (1) shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in Article 12(2) RPBA. [2.2] In view of the fact that the OD has admitted document E15 into the proceedings and that the [opponents] have cited this document as relevant prior art in the statement of grounds of appeal, the Board has to take document E15 into account in the appeal proceedings and is not entitled not to admit document E15 into the proceedings pursuant to Article 12(4). The request of the [patent proprietor] to “dismiss [E15] as having been filed belatedly” can, therefore, only refer to a review of the decision of the OD to admit document E15, which had been filed belatedly during the first instance proceedings, into the proceedings, by making use of its discretionary power pursuant to A 114(2) EPC 1973. [2.3] The case law of the Boards has established that [the Boards], when reviewing a discretionary decision of a first instance department, should only assess whether the department has exercised its discretion according to the wrong principles, or without taking into account the right principles, or in an unreasonable way (T 640/91, T 201/98). However, the [patent proprietor] has not given any arguments establishing that the OD has exercised its discretion in a wrong way. Nor can the Board see any evidence that could cast doubt on the correctness of the way in which the OD has exercised its discretion. [2.4] The [patent proprietor’s] submission – that opponent 2 had committed an abuse of proceedings by filing document E15, which has its origin in the [opponent] itself, only during the OPs before the OD – has only been made at a very late stage of the proceedings. The Board wishes to point out that it is not opponent 2 but opponent 1 that has filed document E15 before the first instance and that the applicant named in E15 is opponent 2. Therefore, contrary to the [patent proprietor’s] statement, document E15 does not have its origin in the party who had filed this document belatedly during the first instance. This being said, the Board cannot see an abuse of proceedings in the mere fact that that opponent 1 has filed document E15 which has its origin in opponent 2 only after the summons for OPs before the OD. Therefore, the decision of the OD to admit document E15 into the proceedings is not objectionable. Should you wish to download the whole decision (in German), just click here. 1853 | 3398
T 299/09 – Just Can’t Do This
K’s Law – The ebook
The file wrapper can be found here.
1854 | 3398
T 179/07 – Unfulfilled Duty
K’s Law – The ebook
T 179/07 – Unfulfilled Duty 6 Okt 2011
All the parties filed appeals against the decision of the Opposition Division revoking the opposed patent. The decision of the Board of appeal contains some interesting paragraphs on the admissibility of late filed documents D16 and D20. *** Translation of the German original *** [3.1] [The opponent] filed document D16 about two months after having received the summons to oral proceedings (OPs), i.e. more than three years after filing the statement of grounds of appeal, without providing any justification for the late filing. It only pointed out that the [patent proprietor] had to be familiar with document D16 because it had been cited during the examination proceedings of the corresponding Japanese application. [3.1.1] Even if this were the case, the Board is of the opinion that this fact would not relieve the opponent […] of its procedural duty to present its case (Sachvortrag) with all due care, as soon and as complete as possible. [3.1.2] The Board is of the opinion that the [opponent] has not adequately fulfilled this duty. As mentioned by [the opponent] itself during the OPs, when asked by the Board, it only detected document D16, which had been cited by the Japanese Patent Office already in June 2007, after having received the summons to OPs, when reexamining the case that had been at rest (ruhend) until then. However, this new search (Nach-Recherchieren) for further relevant prior art has no perceptible causal link with the summons by the Board or the requests of the [patent proprietor]. [3.1.3] When assessing the admissibility of new evidence at so late a stage of the proceedings the relevance of the document is only one of several criteria to be taken into account; see Articles 13(1) and (3) RPBA. However, it should be noted that D16 does not disclose any concrete zeolite having replaced a transition metal as SCR catalyser. Moreover, only hydrocarbons (“HC”), alcohol and urea are mentioned as reduction agents. The only example discloses a SCR catalyser of the platinum/aluminium oxide type and the use of propylene as reduction agent. Moreover, figure 2 of D16 is merely schematic and, therefore, does not allow to draw exact conclusions on the NO/NO2 ratio in the exhaust gas to be fixed before reduction. Therefore, the Board is of the opinion that D16 is not prima facie more relevant than the prior art that has already been cited in the proceedings. [3.2] Document D20 was filed by the [opponent] only on the day before the OPs (the records indicate receipt at 13:19 CET). [3.2.1] [The opponent] itself indicated in its letter that document D20 is mentioned in paragraph [0005] of the opposed patent and is also cited in the search report. The prima facie relevance also followed from said paragraph [0005] [3.2.2] It has to be noted that the [opponent] has not considered appropriate to introduce document D20 already during the opposition proceedings or at an earlier stage of the appeal proceedings despite of it being – allegedly – very relevant and because it had been familiar with this document from the search report and the description of the opposed patent. [3.2.3] [The opponent] did not provide any reason for this particularly late submission in its letter. Nor was there any explanation why D20 was prima facie more relevant as the documents on file. The opponent did not offer an even rudimentary line of arguments based on D20 either. [3.2.4] In its letter the [opponent] has only referred to the Guidelines for examination in the EPO wherein it is stated that the skilled person should be presumed to have had access to everything in the state of the art, in particular the documents cited in the search report. This may be true in principle but it does not relieve an opponent or appellant of the procedural duty to present its case with all due care, as soon and as complete as possible. 1855 | 3398
T 179/07 – Unfulfilled Duty
K’s Law – The ebook
[3.2.5] In any case the adverse party and the Board were not able to prepare themselves thoroughly and efficiently for answering the possible, relatively complex questions that would have had to be discussed during the OPs if D20 were to be taken into account. [3.3] In view of the particular circumstances of the late filing of documents D16 and D20 mentioned above the Board has decided not to admit these two pieces of evidence into the proceedings, pursuant to A 114(2) as well as Articles 12(2)(4) and 13(1)(3) RPBA. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 458/08 – Everyday Experience
K’s Law – The ebook
T 458/08 – Everyday Experience 5 Okt 2011
The applicant filed an appeal against the decision of the Examining Division (ED) to refuse its application. The application concerned a method for authenticating and/or authorising in the context of Internet transactions. The ED and the Board both came to the conclusion that the claimed subject-matter did not involve an inventive step. The applicant felt that the way in which one of the features under consideration was treated by the Board was inadequate and voiced a R 106 objection (paving the way for a petition for review). Here is what the Board had to say: *** Translation of the German original *** [7] The Board is of the opinion that it is generally known that telephone orders – which existed long before the Internet business and which still exist alongside it – do not require prior registration. [7.1] The appellant opposes this assumption and contests that the Board was allowed to base its reasoning on it without there being any written evidence. [7.2] The Board, on the contrary, is of the opinion that the assumption refers to something everybody experiences every day and which needs no proof, in particular because it is known to members of the Board, who are also members of the public. In this respect, all the members of the Board can remember without doubt having booked say a hotel room without having registered at the hotel beforehand. [7.3] This was announced during the oral proceedings (OPs) and the appellant had the opportunity to present comments. However, it still requested written proof. [7.4] In view of said generally known fact the Board is of the opinion that, starting from D1, it is obvious not to require a prior registration whenever there is no need to require the safety level which is guaranteed upon registration […]. A user who is not registered and whose personal data cannot be extracted from a data base has to provide them – in particular the telephone number – in case of need […]. Therefore, in the case of an online transaction it is obvious to provide these data online as well. [7.5] Therefore, the Board comes to the conclusion that claim 1 of the main request is obvious over D1 together with the general knowledge available on the priority date and, as a consequence, does not involve an inventive step within the meaning of A 56 EPC 1973. […] [17] Together with the summons to OPs the Board had informed the appellant on the assumption of the Board as presented under point [7]. [17.1] During the OPs the appellant contested that the Board could base its analysis on this assumption without there being any written evidence. It referred to decision T 939/92 [2.3] which states that “in the case of any dispute as to the extent of the relevant common general knowledge this, like any other fact under contention, has to be proved, e.g. by documentary or oral evidence” and requested such evidence for the contested assertion. [17.2] The Board notes that the appellant has not even mentioned the contested assumption in its response to the summons to OPs. At this stage of the proceedings it would have been very easy to provide written proof. [17.3] This notwithstanding, the Board is of the opinion that it is justified, for the reasons given above (see point [7.2]) to maintain its assessment even without there being written evidence. [18] The Board is of the opinion that the question of whether an object can be deemed to be so widely known that it can be considered proven even without written evidence, is a substantive question and not a question of procedural law. Therefore, the Board cannot see any deficiency pursuant to A 112a(2). [19] As a consequence, the Board dismisses the objection of a procedural violation pursuant to R 106. 1857 | 3398
T 458/08 – Everyday Experience
K’s Law – The ebook
Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
1858 | 3398
T 2230/08 – Trapped
K’s Law – The ebook
T 2230/08 – Trapped 4 Okt 2011
Claim 1 of the application as filed covered a method of regenerating a devitalized absorber comprising the steps of providing a stream of regenerating gas and passing it over the absorber, at an effective temperature. Claim 2 added the feature that the temperature was in the range of 250°F to 750°F. Claim 1 as granted covered a method of method of regenerating a devitalized absorber comprising the steps of providing a stream of regenerating gas within a temperature of 250°F to 750°F and passing it over the absorber. As a matter of fact, the temperature condition now applied to the gas rather than to the absorber. The Opposition Division revoked the patent. According to the decision, the subject-matter of claim 1 of the sole request on file extended beyond the content of the application as filed, as the latter did not disclose a method of regenerating a devitalized catalyst/absorber that comprised the step of providing a stream of regenerating gas with a temperature in the range of 121°C to 399°C. The patent proprietor tried two strategies in order to get out of the inescapable trap: requesting a correction under R 139 and invoking G 1/93 (“no technical contribution”). Unsurprisingly, none of them succeeded. Main Request [3] Claim 1 according to the main request comprises in comparison to claim 1 as granted several amendments, in particular that the temperature range of 121°C to 399°C (250°F-750°F) defines the temperature at which regeneration takes place, in line with the application as originally filed, and not the temperature of the incoming stream of reducing gas. This amendment is considered by the [patent proprietor] to represent a mere correction under R 139 of the wording of claim 1 as granted. [4] R 139 (former R 88 EPC 1973) provides in its second sentence that a correction of errors in documents filed with the EPO that concerns the description, claims or drawings can only be allowed if the correction is obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as correction. In decision G 3/89 [5], the Enlarged Board of Appeal (EBA) considered that, for a correction under R 88, second sentence EPC 1973, that concerns the disclosure of a European application or a European patent to be allowed, the respective parts of the disclosure for which a correction is requested must, either on the date of filing or following an amendment under A 123, contain such an obvious error that a skilled person would be in no doubt that the information concerned could not be meant to read as such. According to point [2] of the reasons of that decision, the skilled person must be in a position objectively and unambiguously to recognise the incorrect information using common general knowledge. If, on the other hand, it is doubtful whether that information is incorrectly defined, then a correction is ruled out. The same applies if incorrect information only becomes apparent in the light of the proposed correction (see point [5] of the reasons). [5] In the present case, the range of 121°C to 399°C (250°F-750°F) is clearly defined in claim 1 as granted as the temperature of the incoming stream of regenerating gas. The step of providing a gas at a specific temperature is technically sensible for the skilled person, as it could be used for example as a means to provide or adjust the temperature at which regeneration takes place. The [patent proprietor] argued that the only temperature that matters was not that of the incoming stream of regenerating gas, but the temperature at which regeneration is carried out, which is the temperature of the catalyst/absorber. They argued that the temperature of the regenerating gas was of no significance for the regeneration of catalysts in turbine power plants – it was not even measured- because the regeneration temperature in that case was imposed by the temperature of the huge mass of ceramic supporting the catalyst/absorber. Claim 1 as granted, however, does not contain any limitation in respect of turbine power plants, the method of the invention being also for example applicable to the regeneration of vehicle exhaust catalysts as indicated by the [patent proprietor]. In the latter field, it is not uncommon as was argued by the [opponent] to pre-heat the regenerating gas before regeneration takes place. That point was not disputed by the [patent proprietor]. Therefore, the [patent proprietor’s] argument that the only temperature that matters in the method according to claim 1 of the patent in suit is the reaction temperature fails to convince. Thus, the skilled 1859 | 3398
T 2230/08 – Trapped
K’s Law – The ebook
person would not have any reason in the absence of any limitation to turbine power plants to doubt the information provided in claim 1 as granted when taken at face value. [6] Moreover, the description of the patent in suit does not provide any indication that another meaning could have been intended for the range of temperatures defined in claim 1. There is no disclosure in the patent as granted that the only temperature that matters is the reaction temperature and not that of the gas. On the contrary, the temperature of the regenerating gas is defined in paragraph [0014] of the specification in the same manner as in claim 1 as granted and the temperature of the regeneration reaction is stated in paragraph [0019] to be preferably in the range of 121°C to 399°C, i.e. possibly in the same range but not necessarily in that range, in line with the absence of any definition of the reaction temperature in claim 1 of the granted version. The information presented in claim 1 as granted is therefore for the skilled reader coherent with that provided in the description. Thus, the definition of the range of temperature for the incoming stream of regenerating gas in claim 1 does not appear to the skilled person as an error, even less as an obvious one. [7] The [patent proprietor] argued that a correction under R 139 should be allowed as the skilled reader comparing the wording of claim 1 as granted and of claim 1 as originally filed would immediately realise that the range of temperature as defined in claim 1 as granted was meant to be that of the regeneration reaction as in claim 1 as originally filed. A correction under R 139 in a document filed with the EPO is an instrument available to rectify an error of transcription against the true intention of the person filing the document or on whose behalf it was filed. There is however no evidence that such an error of transcription occurred in the present case. On the contrary, the fact that the same amendment was carried out while adapting the description to amended claim 1 and that the temperature of the regeneration reaction was not amended in the description, i.e. remained preferably, but not necessarily, in the range of 121°C to 399°C, rather indicates that the intention of the applicants was to attribute this temperature range to the stream of incoming gas, but not to the reaction temperature. [8] Consequently, the request for correction under R 139 is rejected and the range of temperature from 121°C to 399°C (250°F-750°F) in claim 1 as granted is read by the skilled person as to define the temperature of the incoming stream of regenerating gas, but not that of the regeneration reaction. [9] Compared to claim 1 as granted, claim 1 according to the main request has been broadened in scope in violation of A 123(3) as it no longer requires that the stream of regenerating gas has a temperature in the range of 121°C to 399°C (250°F-750°F), i.e. claim 1 according to the main request allows a method using a stream of gas which is cooler or hotter than the one defined in granted claim 1. This was not disputed by the [patent proprietor]. Hence, the claims according to the main request are not allowable in view of A 123(3). Auxiliary request [10] The question to be answered is whether in view of decision of the EBA G 1/93, the undisclosed added feature defining the temperature of the incoming stream of regenerating gas can remain in claim 1 of the auxiliary request. According to G 1/93 [16], if an undisclosed added feature, although limiting the scope of protection conferred by the patent, has to be considered as providing a technical contribution to the subjectmatter of the claimed invention, it would give an unwarranted advantage to the patentee contrary to the purpose of A 123(2). Whether or not a limiting feature is to be considered as added subject-matter within the meaning of A 123(2), can, of course, only be decided on the basis of the facts of each individual case (see G 1/93 [17]). [11] According to T 384/91 [5], an undisclosed added feature at least should not be considered as merely limiting the protection conferred by the granted patent without providing a technical contribution to the invention as claimed, if it interacts with the remaining features of the claim in such terms that it influences the solution of the technical problem which can be understood from the application as originally filed. The [patent proprietor] citing decision T 553/99 argued that the addition of the disclosed feature of the temperature range for the regeneration reaction deprived the undisclosed feature of the temperature range for the regenerating gas of all technical contribution to the subject-matter of the claimed invention. [12] According to […] the patent in suit […], the technical problem underlying the present invention is the provision of “a system for regenerating the absorber, rather than removing it, which is easier, simpler, faster, less labour intensive and less expensive than those systems known in the prior art”. The present invention is indicated to be advantageous, because the regeneration of the catalyst/absorber may be carried out in situ, without liquid reagents and also because the by-products of the regeneration can be easily disposed of and the gases used in the regeneration are low-cost and readily available. According to […]the patent in suit […] “a devitalized catalyst/absorber is regenerated, that is, treated to restore the initial activity or to otherwise substantially improve the activity, by passing a regeneration gas over it”. 1860 | 3398
T 2230/08 – Trapped
K’s Law – The ebook
[13] The fact that the essential temperature is that at which regeneration takes place, as was argued by the [patent proprietor], does not automatically deprive the temperature of the stream of regenerating gas of all technical contribution to the invention as claimed. In the context of the present claimed regeneration method, the preheating of the regenerating gas could represent depending on the type of device containing the catalytic system a sensible feature that interacts with the other means used for providing the reaction conditions required for regeneration. The undisclosed modification contained in claim 1 as granted and still present in claim 1 of the auxiliary request would therefore be prejudicial to third parties relying on the invention as described in the application as originally filed, as that undisclosed modification which is technically sensible, might possibly be the basis for a valuable invention. [14] Claim 1 of the auxiliary request is not restricted to any specific method which would deprive the definition of the temperature of the regenerating gas of all technical contribution within the context of that claim. In the absence of any additional disclosed restricting feature to that effect, the temperature of the incoming regenerating gas is therefore considered to interact with the remaining features of the claim in such terms that it influences the solution of the technical problem which can be understood from the application as originally filed. [15] It follows that the condition of a missing technical contribution set out in decision G 1/93 on whose basis added matter can be considered as not extending beyond the application as filed are not met in the present case. Consequently, the subject-matter of claim 1 according to the auxiliary request extends beyond the content of the application as originally filed in violation of A 123(2). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 157/08 – Gobbledygook?
K’s Law – The ebook
T 157/08 – Gobbledygook? 3 Okt 2011
This decision shows what happens when an invention is not explained in sufficient detail. It will perish – and it will be of no avail to invoke a skilled person that comes close to an intellectual superhero. The applicant appealed against the refusal of his application by the Examining Division (ED) on the ground that the claimed method could not be carried out (Nichtausführbarkeit). Claim 1 before the Board read (in English translation): Method for separating speech from noise (Geräusche), comprising the following steps: the speech signal to be isolated from jamming (Störungen) is decomposed into its elementary tones (sounds) (Einzelklänge (Laute)) by means of an envelope method; the speech signal is transformed from a representation “Intensity over time” into a representation “Amplitude over frequency” by means of integral transformations; in the representation “Amplitude over frequency”, the frequency space, a sound has a plurality of frequencies; intervals defining harmonic relationships between frequencies of speech are calculated by means of number-theoretic functions; the proper separation of speech and noise is obtained in the following method steps: the frequencies within a sound are compared with each other by pairs, by means of appropriate loop methods (Schleifenverfahren), wherein intervals are formed from the pairs of frequencies, wherein the intervals are equal to the ratio of the two frequency values; the intervals determined in this way are compared with the calculated intervals of speech in order to check whether there are harmonic relationships between the corresponding frequencies; only frequencies that are harmonically related with each other are transferred into the speech file. In his statement of grounds of appeal, the applicant pointed out that the complexity of the subject-matter required a high-level skilled person. The skilled person to be taken into account could not be a normal graduate of a technical college (Fachhochschulabgänger) having experience in the field of speech recognition. Rather, the skilled person was a graduated physicist having many years of experience in the field of speech recognition but also a comprehensive knowledge of mathematics and in particular in group theory. Moreover, this skilled person had to have experience in musicology and in particular in the field of harmonics. The applicant also submitted that an objection of lack of feasibility (Ausführbarkeit) could only be raised when there were corroborated doubts based on reproducible facts. The ED had not provided such facts. *** Translation of the German original *** Feasibility of carrying out the claimed invention (A 83 EPC 1973) Qualification of the average skilled person [3.1] The appropriate average skilled person does not have the qualifications which the appellant would want him to have […]. According to the established case law of the Boards of appeal, the skilled person is a practitioner having the usual knowledge in his technical field at a given time (i.e. the date of filing or the priority date) and having at his disposal normal means and abilities for routine work. He may also be expected to consider neighbouring fields and a more general field which he is familiar with in order to look for known solutions to similar problems. Therefore, in the present case, the average skilled person cannot have a superior qualification than a physicist who is used to dealing with the separation of speech and noise, or perhaps a sound engineer. Such a skilled person has to have knowledge in the fields of signal processing, acoustics and audio technology. He is familiar with standard mathematical methods of spectral analysis, such as for example integral transformations. However, he cannot be attributed special knowledge in technical fields which are not significant for his routine work and 1862 | 3398
T 157/08 – Gobbledygook?
K’s Law – The ebook
which, as in the present case, are brought into view not because of the problem to be solved but because of the solution underlying the present invention. Therefore, the relevant skilled person cannot be attributed significant knowledge in the field of musicology in general and harmonics in particular. Nor does he have above-average knowledge in special fields of mathematics such as group theory and number-theoretic functions as well as their practical application in technology. [3.2] The present application suffers from a lack of precision of the terminology used, non-uniform terminology, deficient or even inexistent definitions of mathematical expressions and over-all insufficient explanations of the mathematical/technical concepts that ensure a successful separation of speech and noise. The feasibility of steps D, F and G of claim 1 in view of A 83 is particularly problematic. […] [3.2.1] A first problem concerning the feasibility of step D consists in the breadth of the claim wording regarding the number and nature of the number-theoretical functions to be used. It is not obvious, and the appellant has not made it credible, that comparative intervals suitable for speech separation can as a rule be calculated with any number-theoretical function that can be imagined, as encompassed by claim 1. As a matter of fact, the statements in […] the application as published indicate that the number-theoretical functions to be used are part of particular “groups” and that there are functions that are not suitable for the desired separation method. However, the identity of those “groups” is not explained. Nor are there criteria in the application documents that would allow to decide which number-theoretical functions would be suitable for the purpose of speech separation, and which would not. Paragraphs [0057] to [0074] do indeed exemplify some suitable number-theoretical functions but they do not provide any hint let alone rules for finding further functions that might be suitable. Moreover, it is not clear from the application what is meant by the expression “number-theoretical function” and how one could use them to calculate “intervals defining harmonic relationships between frequencies of speech.” The indications of the application regarding this topic are vague or incomprehensible. For instance, in the part of the description […] entitled “target intervals” it is stated that the “interval values” or “target intervals” are “very particular elements of the body of prime numbers” and the “result of complicated number-theoretical functions” and that they are calculated “from the number-theoretical functions of the body of prime numbers”. The list of preliminary calculation steps […] contains the statement “A number of number-theoretical functions calculates intervals of speech and generates the space of equivalent classes of tones of speech”; the explanation of the expression “equivalent classes” does not go beyond the indications “Speech intervals are calculated by means of number-theoretical functions and a space of equivalent classes is generated” […] and “Number-theoretical functions of prime numbers and powers of two constitute fields for equivalent classes” […]. [Another] paragraph mentions a “reference tone from the equivalent class of number-theoretical functions of the body of prime numbers”. There is no concrete embodiment allowing to concretely understand the execution of the required mathematical steps for generating the “fields” and the “space” of “equivalent classes” and of their elements, i.e. “tones of speech” and/or “reference tones”. Therefore, it is not clear how to calculated the needed comparative intervals and the “target intervals”, respectively, are to be calculated even when using the concrete exemplary functions provided in […] the application as published. It is indeed shown how the degree of consonance of a number n is obtained for Euler’s Gradus function, but it is left open how comparative intervals are determined with this function. It also remains unclear how such intervals are obtained from the Gamma function, i.e. the function
Moreover, it is to be noted that the indications in the [application] are mathematical terms but not functions stricto sensu. The appellant’s reference to annex B1 to the statement of grounds of appeal rather contributes to confusion than to clarifying the matter because it is not clear how the intended determination of “harmonic” frequency intervals relates to functions which, as defined in annex B1, connect an element of the set of positive, natural numbers with an element of the set of complex numbers. [3.2.2] As far as steps F and G of claim 1 are concerned, the corresponding explanatory parts of the description allow to understand the underlying idea of how the signal is analysed and the speech part separated from noises but not how this is concretely carried out from a process point of view.
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T 157/08 – Gobbledygook?
K’s Law – The ebook
For instance, it is not apparent how “appropriate loop methods” according to step F are to be carried out, in view of the fact that [the description] points out that the order of frequencies is never to be inverted when intervals in an envelope are to be determined but that there is no more precise indication of what the correct order would be. Instead of that the “summary” of […] the application as published refers to “astute combinatory operations of comparison” by which “systematically all tones of a sound, i.e. all frequencies of a wave packet, are divided by the adjacent frequencies until all elements (frequencies of a wave packet) have been compared with each other”, and it adds: “The intervals obtained from the wave packets of the speech sample by combinatorics and comparison are then inserted into mathematical formulae which take into account, inter alia, the particularities of the physics of hearing”. The application documents remain silent on which formulae and which particularities are meant. Regarding the comparison (according to step G) of the intervals determined in steps D and F, the summary of […] the application mentions the “confrontation of a specific formula structure” and [notes] that “thereby grouptheoretical structures expressing symmetry laws can be taken into account (in Ansatz gebracht)”, wherein “the separation [can] obviously take place when the tones of a speech sample exactly correspond to the calculated congruence groups of the tones in the form of intervals”. There is no explanation of the “specific formula structure” or of the “symmetry laws”. [Two] paragraphs refer to “symmetry relationships” and “symmetry operations”, respectively: “All frequencies of the frequency space of the transformed speech signal have to be examined as to whether they have symmetry relationships with other frequencies of the same envelope. There are invariant properties of speech encrypted in the symmetry relationships of the elements.” “The separation of speech and non-speech is carried out by means of a series of several symmetry operations” However, none of these expressions is explained. The expression “congruence groups” reappears once more […] together with the expressions “equivalence class” and “equivalence relations”, without there being any explanation. The corresponding instructions “The equivalence classes are related to the speech signal in the form of equivalence relations”. and “Inversions of elements are specified by a double- or multi-digit relation on the set of all sounds of a pitch space (Tonsystem)” are equally incomprehensible as […] “A two-digit relation of the intervals is defined such that a reference tone exactly corresponds to the element of the signal to be examined within several coordinates of the space of equivalence classes.” and “The elements of the existing set of equivalence relations (Faktormenge) of frequency intervals from equivalence classes are now defined as harmonies.” [3.3] The arguments invoked by the appellant do not deal with the above mentioned deficiencies of the application and are not persuasive for this reason alone. [3.4] For the reasons given above, a method for separating speech from noise, as claimed in present claim 1, cannot be carried out by the skilled person on the basis of the pieces of information contained in the application documents, as required by A 83 for the grant of European patents. Therefore, the request of the appellant for the grant of a patent cannot be allowed. […] The appeal is dismissed. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1200/08 – Long Live The Patent
K’s Law – The ebook
T 1200/08 – Long Live The Patent 1 Okt 2011
Has it ever occurred to you that 20 is too young to die and that patents should live longer ? There is perhaps something under way at the EPO, as the present decision suggests. *** Translation of the German original *** [5.5] The impugned patent is based on an application filed on May 28, 1998. Therefore, it will expire in May 2118 at the latest. If the Board remitted the case back to the Opposition Division (OD) and if there was an appeal against the subsequent decision of the OD, it is doubtful whether the final decision could be taken before the expiration of the patent. [5.6] For these reasons, the Board has decided to decide on the inventive step of auxiliary request 3. To download the whole decision (in German), click here. The file wrapper can be found here.
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K’s Law – The ebook
Publish Or Perish (ctd.)
Publish Or Perish (ctd.) 1 Okt 2011
At the end of each quarter, I have a look at the number of decisions published on the DG3 site so far. Here are the updated figures:
Click to enlarge As you can see, the number of decisions published during the last quarter is quite normal but overall we are still significantly behind what had been published during the last years. 2009 appears to have been an exceptional vintage. On a different note, I have made a curious observation regarding the geographical origin of the readers of this blog. As already mentioned some time ago, in the beginning the blog was mostly read by the French, for historical reasons. Over the last months, Germany was more and more strongly represented and finally overtook France, but recently, the number of German readers has sharply decreased whereas now the French come back and the Dutch skyrocket.
Click to enlarge I wonder what the reason could be. The overall number of readers per month appears to have increased, but not dramatically. Has the EPO recently made a change in its proxies so that my readers from the Office would be identified as Dutch whereas they were identified as German before? Difficult to say. Perhaps these Google data are simply not reliable. 1866 | 3398
T 1912/08 – Ouch, Those Teeth!
K’s Law – The ebook
T 1912/08 – Ouch, Those Teeth! 30 Sep 2011
It may be problematic to have claim features that are defined by an object that is outside the claim. The Guidelines (C-III 4.14) have something to say on this topic: “… It may also be allowable to define the dimensions and/or shape of a first entity in an independent claim by general reference to the dimensions and/or corresponding shape of a second entity which is not part of the claimed first entity but is related to it through use. This particularly applies where the size of the second entity is in some way standardised (for example, in the case of a mounting bracket for a vehicle number-plate, where the bracket frame and fixing elements are defined in relation to the outer shape of the number-plate). However, references to second entities which cannot be seen as subject to standardisation may also be sufficiently clear in cases where the skilled person would have little difficulty in inferring the resultant restriction of the scope of protection for the first entity (for example, in the case of a covering sheet for an agricultural round bale, where the length and breadth of the covering sheet and how it is folded are defined by reference to the bale's circumference, width and diameter, see T 455/92). It is neither necessary for such claims to contain the exact dimensions of the second entity, nor do they have to refer to a combination of the first and second entities. Specifying the length, width and/or height of the first entity without reference to the second would lead to an unwarranted restriction of the scope of protection. …” The present decision shows a case where such a reference to the dimensions of a second entity was found not to be allowable. Claim 1 (of the first auxiliary request) before the Examining Division (ED) read: Root canal reamer for use in handpieces, having a reaming section with two or more cutting blades (L) with progressively increasing diameter and constant taper angle, characterized in that the length of said reaming section is such that, when said root canal reamer is inserted in the root canal until the apex, at least a part of said reaming section is effective on the apical portion of said root canal and at least a further part of the same reaming section is simultaneously effective on the coronal portion of said root canal, wherein the length (A) of the reaming section comes between 16 and 30 mm. The ED refused this request inter alia for lack of clarity: “… The applicant also amended the characterizing portion of claim 1 in an attempt to define the subject matter of the invention with respect to a second, unclaimed entity, namely human teeth. The length of the reaming section has been made dependent on the size of the human tooth because it is claimed that the length must be such that “said reaming section is effective on the apical portion of said root canal and at least a further part of the same reaming section is simultaneously effective on the coronal portion of said root canal”. Teeth are not considered to be standardized entities nor are they of equal size, since they Vary within the mouth of the patient from the incisors to the molars. Chipping or breaking of teeth provides for even more variability in the dimensions of teeth, as does the difference between baby teeth and adult teeth and between healthy and unhealthy teeth. It is not possible to infer clearly from this part of claim 1 what technical features, if any, can be understood and used as a way to delimit the scope of the invention. …” The applicant filed an appeal as well as a new set of claims, claim 1 of which read: Root canal reamer for use in handpieces, having an apical reaming portion and a coronal reaming portion with at least two cutting blades (L) and with progressively increasing diameter and constant taper angle, the cutting blades (L) covering both the apical portion and the coronal portion, wherein the whole reaming length (A) exceeds the ISO standard length of 16 mm and reaches a maximum length of 30 mm. The Board agreed with the ED that there was a lack of clarity:
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T 1912/08 – Ouch, Those Teeth!
K’s Law – The ebook
[2] The decision under appeal found that claim 1 of the first auxiliary request lacked clarity because it defined a reamer on the basis of the apical and coronal portion of the human tooth […]. The new claim 1 still defines the reamer as having an apical and a coronal portion (with at least two cutting blades covering both the apical and the coronal portion). That is the definition of the reamer is still dependent on the apical and the coronal portion of the human tooth. The objection of the first instance of lack of clarity was correctly reasoned since it is not possible to clearly define a reamer on the basis of the human tooth, being the size of the human tooth extremely variable and depending on the age of the subject, the type of the tooth (incisive, canine, molar) and the health of the tooth itself, as clearly stated in the decision under appeal. The appellant in its statement of grounds addresses the objection of lack of clarity with the sole sentence: “A set of new claims is submitted, claim 1 of which defines the features of the invention in a clearer manner”. The appellant did not bring forward any new argument or fact which could lead to a different founding on this issue. Therefore the objection of lack of clarity raised by the first instance has to be confirmed. To download the whole decision, click here. The file wrapper can be found here.
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T 1584/08 – Presumed Faithful
K’s Law – The ebook
T 1584/08 – Presumed Faithful 29 Sep 2011
The applicant filed an appeal against the decision of the Examining Division (ED) to refuse the application under consideration for lack of inventive step. The discussion was centred around document D2, an article on the ISO/IEC MPEG-2 standard, published in the Journal of the Audio Engineering Society. Based on D2 as closest prior art, the Board found the invention to lack inventive step. It then dealt with the applicant’s allegation that the ED had committed a substantial procedural violation. According to the applicant, the ED did not present evidence to support its argument that the standard did not require calculation of the number of sign bits each time the code length was calculated for an unsigned codebook, beyond stating that D2 does not disclose this feature. Since document D2 was merely a summary of the standard, it was not valid to draw any conclusion from the absence of any relevant teaching in that document. In this respect, the appellant referred to the T 578/06 [21] (also discussed on this blog). Here is the Board’s answer: [4.1] The appellant has argued that in reaching its conclusion that, contrary to what is stated in the summary of the prior art in the present application, the ISO/IEC 13818-7 standard does not require that the number of sign bits be calculated and added to the code length individually in each operation of the code length calculation section, the ED made a substantial procedural violation. This argument is based on the appellant’s contention that, since the document D2 represents only a summary of the standard, this summary giving no details of the codebook selection procedure, and since the application clearly taught that the standard did contain such a requirement, the burden of proof lay on the division to establish that such a requirement was not present in the full standard. In this context he referred to the decision T 578/06 [21], which indicates that the burden of proof for an allegation lies with the person raising that allegation. [4.1.1] The board observes in this context that the prior art described in the application which is at issue is specified in the application as being the MPEG2-AAC standard defined in ISO/IEC 13818-7. The board notes moreover that the document D2 is a description of the main features of that standard (as stated for instance in the abstract of that document), which appears to have been written by a group of authors who were involved in the preparation of the standard. Furthermore, document D2 appears to constitute provisions of the standard itself (i.e. of document D4, which is the first edition of ISO/IEC 13818-7, see in particular page 3, section 2 “Normative references”, which refers to D2). As such, the board considers that the document D2 represented a reasonable basis to use for a prima facie assessment of whether the prior art acknowledgement in the application was correct, and that the objection raised by the ED in this respect cannot therefore be considered as being “mere opinion”, without proof, as argued by the appellant. As a consequence, the board considers that when the division raised this objection, they did so in a manner which met the established criteria for burden of proof (i.e. those referred to in the decision cited by the appellant). [4.1.2] Moreover, the board considers that, given the nature of the document D2 as described above, arguments based on that document should be assumed to be correct unless it could be demonstrated that the teaching of D2 was inconsistent with the standard (i.e. document D4) itself. By raising this objection in the annex to the summons to oral proceedings (OPs), the ED gave the appellant (then applicant) the opportunity to demonstrate such an inconsistency. This he attempted to do by presenting arguments based on the document R1, which is understood to comprise excerpts from a later version of the standard. From the minutes of the OPs before the ED, it is apparent that those arguments were discussed in detail at those OPs. In section II. 4 of the decision under appeal the ED presented detailed reasons, based on that discussion, as to why they were not convinced by those arguments. [4.1.3] For the reasons indicated in the previous two paragraphs, the board concludes that the manner in which the ED addressed the contradiction between D2 and the summary of the prior art in the present application did not involve any procedural violation. 1869 | 3398
T 1584/08 – Presumed Faithful
K’s Law – The ebook
Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1870 | 3398
T 1930/07 – A Call For Courtesy
K’s Law – The ebook
T 1930/07 – A Call For Courtesy 28 Sep 2011
The applicant filed an appeal against the decision of the Examining Division to refuse the application under consideration. The appellant did not respond in any way to the summons to oral proceedings (OPs). When the registrar of the board contacted the appellant’s representative by telephone shortly before the OPs, no definite answer was received to the question whether the representative would attend. [3] The board notes that a professional representative has a duty to inform the EPO as soon as possible of a party’s intention not to be represented at OPs (cf. e.g. T 653/91 [8] and T 1485/06 [2.8]). Article 6 of the code of conduct of members of the European Patent Institute (epi), of which the representative is obligatorily a member, stipulates that the members are required to act courteously in their dealings with the EPO. The epi Council also issued the explicit recommendation that “if a party to an appeal decides that it will not attend a scheduled OPs, the representative of the party should, as soon as possible … before the OPs … inform the board of the party’s nonattendance” (epi Information 4/2009, pp. 133-134). The board considers it discourteous of the representative in the present case not even to have informed the board in time for the start of the OPs that he would not attend. Should you wish to download the whole decision, just click here. The file wrapper can be found here. NB: Other recent decisions on courtesy can be found here and here.
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T 578/08 – Not Automatic
K’s Law – The ebook
T 578/08 – Not Automatic 27 Sep 2011
This decision, to which my previous post was dedicated, also has an interesting paragraph on the admissibility of two late filed documents, D5 and D6. *** Translation of the French original *** [3.1] In its decision G 7/93, the Enlarged Board of appeal (EBA) has explained, as regards the exercise of the discretionary powers by the Examining Division (ED) within the framework of R 86(3) EPC 1973 that “… it is not the function of a Board of Appeal to review all the facts and circumstances of the case as if it were in the place of the first instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first instance department. If a first instance department is required under the EPC to exercise its discretion in certain circumstances, such a department should have a certain degree of freedom when exercising that discretion, without interference from the Boards of Appeal. In the circumstances of a case such as that before the referring Board, a Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles …, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion.” These general principles set forth by the EBA apply to all reviews of decisions resulting from the exercise of the discretionary powers of the preceding instance. [3.2] As regards the admission of documents filed belatedly during the opposition proceedings, the established case law has determined that the crucial criterion for decision is whether [the document] is prima facie relevant. This is a discretionary decision of the Opposition Division (OD), which decides on a sovereign basis (souverainement) whether [a document] is relevant or not. In the present case, the criterion of prima facie relevance, which has been laid down by the case law, is the criterion used by the OD for discarding documents D5 and D6. Therefore, the OD has not used unreasonable criteria. The assessment of the OD is not manifestly erroneous either, because the substantial teaching of document D5 concerns efficient control of water removal in a process for extracorporeal blood purification that allows to maintain an appropriate volume of blood in the body of the patient. This document does not deal with calculating recirculation. Therefore, there is good reason to think that this document is not prima facie more relevant than other documents in the opposition proceedings which disclose means for determining the recirculation of blood. Thus the OD has not applied the criterion of prima facie relevance in an unreasonable way. Consequently, the discretionary decision of the OD to discard document D5 does not result from the use of an erroneous criterion of assessment or from un unreasonable way of exercising its discretionary power. It follows that the Board has no reason and is not entitled to set aside this decision. [3.3] The [opponent] asserts that document D5 has been filed in due time before the oral proceedings (OPs) and does not raise any technical difficulties, so that neither the OD nor the [patent proprietor] had difficulties in understanding the document or the objections that had been formulated on this basis. Therefore, the document should have been introduced into the proceedings. The Board cannot share this opinion. Even if the examination of document D5 did not raise any particular difficulties, this does not change the fact that the OD has the discretionary power not to admit new documents into the proceedings if it considers that their prima facie relevance is not such that it would change the decision. The reason for this way of proceeding is that it allows to combine procedural economy and then duty of maintaining patents only if they are valid.
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[3.4] The same reasoning holds for document D6 because the OD also concluded that it was prima facie not relevant. For the same reasons as provided above, the Board considers that it should not question the discretionary decision of the OD. Furthermore, during the appeal proceedings, document D6 has only been used together with document D5, which has been used as starting point in an argument concerning lack of inventive step. Consequently, the absence of D5 from the appeal proceedings necessarily has to lead to this argument being held invalid. It is for this reason also that D6 alone should not be admitted into the proceedings, because no reasoning based on D6 alone has been submitted during the appeal proceedings. As D6 is cited in the application underlying the opposed patent, the [opponent] considers that it automatically has to be part of the proceedings, in application of decision T 536/88. The Board does not share this opinion. According to this decision, “a document indicated in the European patent as the closest or important prior art for the purposes of elucidating the technical problem set out in the description nevertheless forms part of the opposition or opposition appeal proceedings even if not expressly cited within the opposition period.” In the present case, D6 is cited only among other documents that illustrate the state of the art before the invention and, more particularly, a technology that is different from that of the invention, which consists in injecting a complementary substance into the circuit so that the recirculation can be determined. Therefore, the Board considers that this document is neither the closest prior art nor a document that is particularly relevant for the purposes of elucidating the technical problem. [3.5] Moreover, the [opponent] considers that the OD would have had to examine the combination of D5 and D6 on the ground of inventive step and that, had it done so, it would have concluded that there was a prima facie lack of inventive step. This argument fails because it does not take into account the reasoning of the first instance. The OD has concluded from its analysis that D6 did not disclose that the pump is driven in such a way as to generate a momentary variation of the blood concentration by filtering plasmatic water […]. Therefore, the OD has indirectly answered in the negative the question raised by the [opponent] because D6, which does not disclose one of the essential features of claim 1, cannot suggest the invention. [3.6] It follows that documents D5 and D6 are not admitted into the appeal proceedings. [3.7] As the [opponent’s] objections regarding the inventive step of the claimed subject-matter were based exclusively on these documents, the objections are unfounded (sans objet) and the appeal has to be dismissed. To download the whole decision (in French), click here. The file wrapper can be found here.
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T 578/08 – Because It’s There
K’s Law – The ebook
T 578/08 – Because It’s There 26 Sep 2011
The opponent appealed against the decision of the Opposition Division to reject his opposition. All the claims of the Italian priority application were directed to a method for determining the recirculation value of a suspension. For instance, claim 1 as filed read: 1. Metodo di determinazione del valore del ricircolo di una sospensione comprendente un solvente ed almeno un soluto, fluente in un circuito primario, e sottoposto a trattamenti di filtraggio ed ultrafiltrazione in un circuito secondario comprendente una linea di ingresso di prelevamento della sospensione dal circuito primario, un filtro includente una membrana semipermeabile, ed una linea di uscita di reimmissione della sospensione nel circuito primario, il ricircolo di detta sospensione avvenendo in detto circuito primario tra detta linea di uscita e detta linea di ingresso, caratterizzato dal fatto di comprendere le fasi di:
comandare una variazione di flusso di ultrafiltrazione in detto circuito secondario in modo tale da modificare la concentrazione di detto soluto in detta linea di uscita; immettere la sospensione a concentrazione modificata in detto circuito primario; e determinare il valore (AR) del ricircolo di detta sospensione in base ad una variazione di concentrazione del soluto indotta in detta linea di ingresso.
which can be translated as follows: Method for determining the recirculation value of a suspension comprising a solvent and at least a solute, flowing in a primary circuit, and subjected to filtering and ultrafiltration treatments in a secondary circuit comprising an inlet line for withdrawing the suspension from the primary circuit, a filter including a semi-permeable membrane and an outlet line for reinjecting the suspension into the primary circuit, the recirculation of said suspension occurring in said primary circuit between said outlet line and said inlet line, characterized in that it comprises the steps of:
driving a variation of the ultrafiltration flow in said secondary circuit so as to modify the concentration of said solute in said outlet line; injecting the suspension with modified concentration into said primary circuit; and determining the value (AR) of the recirculation of said suspension based upon a variation of the solute concentration induced in said inlet line.
The patent as granted only claimed a blood treatment system. Claim 1 read: 1. Blood treatment system comprising:
a blood treatment apparatus (12) with semipermeable membrane; an arterial line, intended to interconnect a vascular access (1 1) of a patient with an inlet of the treatment apparatus (12); a venous line (14) intended to interconnect an outlet of the treatment apparatus (12) with the vascular access (11); means for inducing plasma fluid filtration through the membrane of the treatment apparatus (12); means for determining a parameter signifying the blood concentration and are arranged on the arterial line (13);
characterized in that it includes computation and control means for: driving the means for inducing plasma fluid filtration in such a way as to generate a momentary variation of the blood concentration in the treatment apparatus (12) by
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momentarily reducing or increasing the proportion of blood plasma fluid circulating in the membrane apparatus, storing values of the parameter signifying the blood concentration, and calculating the blood recirculation on the basis of the values which the parameter takes in response to a determined drive programme of the means for inducing a blood concentration. Among other things, the opponent claimed that the priority claim was not valid. In what follows, the Board deals with this question. *** Translation of the French original *** [2] In what follows, the Board refers to the French translation (filed by the [patent proprietor] on June 10, 1998) and the English translation (filed by the [opponent] on September 9, 2005). [2.1] It is not necessary to recall that in its opinion G 2/98, the Enlarged Board of appeal has explained that a claim may benefit from the priority of a former application if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole. It is undisputed by the parties that the description and the drawings of the previous application and of the patent as granted are almost identical. However, the patent as granted only comprises device claims whereas the previous application only comprises method claims. However, it is already clear from the wording of the method claim 1 of the previous application that there have to be structural device components because the suspension referred to in this claim has to flow in a primary circuit and be subjected to filtering and ultrafiltration treatments in a secondary circuit comprising an inlet line for withdrawing the suspension from the primary circuit, a filter including a semi-permeable membrane and an outlet line for re-injecting the suspension into the primary circuit. Moreover, the wording of claim 1 of the method claim of the previous application requires
driving a variation of the ultrafiltration flow in said secondary circuit so as to modify the concentration in said solute in said outlet line; injecting the suspension with modified concentration into said primary circuit; and determining the value of the recirculation of said suspension based upon a variation of the solute concentration induced in said inlet line.
It goes without saying for the skilled person that the method steps can only be carried out if there are appropriate technical – and, therefore, structural – means allowing to perform the claimed functions. Therefore, the claims, and in particular claim 1 of the previous application, implicitly disclose appropriate general means allowing to perform the claimed functions. For instance, driving a variation of the ultrafiltration flow in the secondary circuit so as to modify the concentration of the solute in the outlet line, requires appropriate technical means for driving the variation of the ultrafiltration flow. Therfore, for the skilled person, these general technical means are implicitly disclosed by the disclosure of the process step that requires them. The same holds true for the other technical means allowing to carry out the other claimed method steps. Thus the Board is of the opinion that for the skilled person, the structural means of the device claimed in claim 1 of the patent as granted are already disclosed by the features of method claim 1 of the previous application, either explicitly, where the claim mentions structural features, or implicitly, where it mentions functional features. Moreover, the previous application mentions several times that the method that is claimed and disclosed is performed automatically, which implies the presence of corresponding technical means. As the assessment of the validity of the priority is not limited to a comparison of the claims of the patent and the claims of the previous application, see A 88(4), the skilled person can indeed refer to the description for completing his understanding of the claim. Thus the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole. Thus the priority is validly claimed; the requirements of A 87 and A 88 have been complied with.
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[2.2] The [opponent] considers that the subject-matter of claim 1 as granted is an undisclosed generalisation of the specific device disclosed in the previous application. As it has explained above, the Board is of the opinion that the most general disclosure of the invention given in the priority document is defined by claim 1 and that, taking into account the teaching of the this document as a whole, [this disclosure] discloses the general technical means allowing to carry out the claimed method. Whether the device disclosed in the previous application is more specific than the one claimed in the patent as granted, or not, is not relevant. Normally the case law requires the EPO to apply the same standard (“directly and unambiguously”) when examining whether A 123(2) and A 87 have been complied with. I may be wrong, but I have the impression that the present decision is not as strict as what we usually see in A 123(2) assessments. To download the whole decision (in French), click here. The file wrapper can be found here.
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T 1479/08 – Wrong Lane
K’s Law – The ebook
T 1479/08 – Wrong Lane 24 Sep 2011
Some time ago, I have dedicated a post to decision T 176/84, which had made some important remarks on which technical fields were to be taken into account when assessing whether an invention involved an inventive step. The present decision gives an example of how this teaching is applied. The Opposition Division had rejected the oppositions and one of the opponents had filed an appeal. Claim 1 as granted concerned a lane-following system for facilitating steering of a vehicle by tracking a lane of a roadway. Some of the prior art cited by the opponent (documents E3 and E6) were not in the technical field of lane control. The opponent cited T 176/84 to support its view that the skilled person would nevertheless consult these documents. Will the Board follow this reasoning? The Board first determined E1 to be the closest prior art. It then pursued: [3.1] Starting out from E1 as the most relevant prior art, the system according to claim 1 specifies the operation of the controller as being to evaluate the “manner” […] in which detection of the presence of lane marking has failed and to hold control of steering inoperable for a predetermined time period in response to the evaluation result. The characterizing features solve the technical problem of steering control being intermittently switched on and off due to intermittent detection of the lane marking […]. E1 in combination with E2 [3.2] For the sake of argument the board assumes that the skilled person, starting out from document E1, would find it obvious to apply the teaching of E2. E2 relates to a lane following system for assisting a driver steering a vehicle. The system detects a line marking by means of three light detectors detecting light reflected from the lane marking. A line marking is judged as being present only after it has been continuously detected for a predetermined period, which for a given vehicle speed corresponds to a set driving distance. When lane marking is detected over more than this set distance, steering control is resumed […]. The predetermined period is applied in response to each change of detection of the lane marking from being absent to being present. Thus, starting out from E1 as the closest prior art, the person skilled in the art would be led by E2 to resume steering control with a delay each time the detection of the line marking changes from being absent to being present. The skilled person would however not be led by E2 to evaluate, by considering the history of lane marking detection, the manner of failure of detection of the presence of the lane marking as a criterion for deciding on whether or not steering control should be resumed with a delay. Thus, the system according to claim 1 is not rendered obvious to the skilled person having regard to the combination of E1 and E2. E3 and E6: Closely related technical fields? [3.3.1] With reference to T 176/84 the [opponent] argued that the skilled person would also consider prior art in the adjacent technical fields of E3 and E6. At point [5.3.1] of the reasons of T 176/84 it is stated: “While it is indeed perfectly reasonable to expect a person skilled in the art if need be, i.e. in the absence of useful suggestions in the relevant field as to how a given problem might be solved, to look for suitable parallels in neighbouring fields, the question of what is a neighbouring field is one of fact and the solution depends, in the opinion of the Board, on whether the fields are so closely related that the person skilled in the art seeking a solution to a given problem would take into account developments in the neighbouring field.” 1877 | 3398
T 1479/08 – Wrong Lane
K’s Law – The ebook
Thus, the board has to decide whether the skilled person would take into account E3 and E6 when seeking a solution for the problem as stated at point [3.1] above. E6 [3.3.2] E6 is an extract from a technical book relating to target tracking by means of radar. Chapter 1.3.4 relates to the initiation and confirmation of a tentative track in airborne radar systems. It is suggested that a tentative new track is only confirmed when the associated object has been observed M times within N observation scans. Thus, E6 relates to the specific problem of track confirmation in the field of radar systems, which is somewhat remote to the field of steering control. Moreover, the issue addressed in E6 is deciding when a tentatively observed track can be confirmed as a real track. In the contested patent confirmation of the presence or absence of a lane marking is not an issue since the lane marking has already been confirmed as being either present or absent. The board is therefore of the view that E6 would not be considered by the skilled person since it relates to a different technical field and moreover to a different issue. E3 [3.3.3] E3 relates to a system for automatically switching the lights of a vehicle on and off depending on the ambient light level. When the ambient light level rapidly changes the system controls the lights so as to remain switched on for an additional delay CFE each time the level changes from dark to light. Thus, E3 is in the technical field of lighting control for a vehicle, which is different from steering control. Although the methodology in E3 for judging when the light should be kept on or off dependent on the ambient light level appears to be similar to that for switching on and off the steering control in the patent (compare figure 2 of E3 with figure 4 of the patent specification) …
Fig. 2 of E3
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Fig. 4 of the opposed patent … the board is not convinced that the skilled person would, without the benefit of hindsight, have been led by E3 to the system as claimed in claim 1 of the patent. In the board’s view the skilled person would first have to recognize that the methodology in E3 could be generalized for the purpose of avoiding control hunting in a field other than lighting control. Subsequently, the skilled person would be required to identify the presence of the lane marking in the lane control system as the appropriate input parameter the evaluation of which could reasonably serve to decide whether or not the controller should be held inoperable for a delay time in response to the evaluation result. The board is of the view that the skilled person would not have carried out these steps without the benefit of hindsight. Thus, the skilled person would not be led by E3, either alone or in combination with E1, to the system as claimed in claim 1 of the patent. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1969/08 – Obscure Matter
K’s Law – The ebook
T 1969/08 – Obscure Matter 23 Sep 2011
The applicant appealed against the refusal of its application by the Examining Division (ED). It filed one single request together with the statement of grounds of appeal. A summons to oral proceedings (OPs) to be held on June 7, 2011, was issued on February 23, 2011. On May 6, 2011, the applicant filed a new request that was to replace the request on file. The applicant deleted a feature the Board had objected to under A 84 and introduced another feature from the description. The Board found this request not to be admissible: [3] By letter of 6 May 2011, i.e. after the summons for OPs, the appellant filed a new request comprising claims 1 to 4 which replaced the previously filed request (see letter of 6 May 2011, page 1, first paragraph and page 4, point 3 “It is respectfully requested to base further examination on the amended set claims …”). The appellant amended claim 1 by deleting the last feature of claim 1 objected to under A 84 and introduced from the description the feature that the induction layer is an antenna array “formed by silver-plasm or a mixture of silverplasm and carbon-plasm”, which had not been claimed in the appeal proceedings before. [3.1] In the communication annexed to the summons to OPs, the appellant was advised that any amendments to its case would have to be examined for compliance with the requirements of the EPC, including inter alia their admissibility. In the board’s judgement, the appellant was forewarned and could therefore have foreseen that any new request might be subject to examination of its admissibility. By not attending the proceedings the appellant effectively chose not to avail itself of the opportunity to present comments orally before the board but instead to rely on its written case (cf. Article 15(3) RPBA). [3.2] According to R 137(3) in its original version applicable to the present case (see Article 2(2) of the decision of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the EPC, OJ EPO 2009, 299), “after receipt of the first communication from the ED, the applicant may, of his own volition, amend once the description, claims and drawings, provided that the amendment is filed at the same time as the reply to the communication. No further amendment may be made without the consent of the ED”. By virtue of A 111(1) and R 100(1), these provisions are also applicable mutatis mutandis to appeal proceedings. According to Article 12(4) RPBA, requests which could have been presented or were not admitted in the firstinstance proceedings can be held inadmissible by the board. The board notes that a claim referring to the same feature was objected to by the ED under A 84 as being obscure (see the communication dated 21 July 2006, point 2.7). The ED further argued that the expressions “silver-plasm” and “carbon-plasm” could not be clarified without infringing the requirements of A 123(2) and the corresponding features should therefore be removed. Apparently, the applicant chose to follow this recommendation, since it no longer prosecuted any claim directed to such a feature in the first-instance proceedings. The board interprets this behaviour as abandoning the corresponding subject-matter. According to Article 12(4) RPBA as referred to above, the board therefore has discretion not to admit such a request which the appellant returns to late in the appeal proceedings. [3.3] Article 12(2) RPBA stipulates that the statement of grounds of appeal shall contain a party’s complete case. According to Article 13(1) RPBA, any amendment to a party’s case after it has filed its grounds of appeal may be admitted and considered at the board’s discretion. The discretion is to be exercised, inter alia, in the light of the current state of the proceedings. In the present case, the appellant re-introduced abandoned subject-matter even after OPs had been arranged, and therefore at a very late stage of the proceedings. [3.4] In addition, according to the established case law of the boards of appeal it is relevant, with respect to the admissibility of new claims during appeal proceedings, whether the respective versions of the sets of claims 1880 | 3398
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converge or diverge, i.e. whether the claimed subject-matter of the independent claims of a main request goes in the same direction and further specifies the same alleged inventive aspect (see e.g. T 1685/07 [6.5]; T 240/04 [16]). In the present case, claim 1 filed with letter of 6 May 2011 specifies features which do not constitute a further limitation of claim 1 of the preceding request on which the annex to the summons for OPs was based and which specified “wherein said output of the antenna array of the induction layer (4) is positioned between a hard sheet (600) and a printed substrate (500); a buffering layer (8’) is provided between the hard sheet (600) and the output of the antenna array; the hard sheet (600), the buffering layer (8’) and the output of the antenna array are overlaid on the printed substrate (500) by means of the screwing-conjunction; the output of the antenna array is connected with corresponding input terminal (511’)”. Instead of amending and further specifying this aspect of the different layers of the structure of the touch screen, the appellant amended claim 1 by replacing this feature by the following aspect “wherein said induction layer (4) is an antenna array formed by silver-plasm or a mixture of silver-plasm and carbon-plasm”. It thus went in a different direction, specifying the material of one of those layers instead. The added feature of amended independent claim 1 therefore concerns a technical problem (reduction of cost, see appellant’s letter of 6 May 2011, page 3, paragraph 5) which is only remotely related to the original one linked to the deleted feature (improving the sensitivity of the structure). [3.5] By filing, at a very late stage, a new set of claims directed to abandoned subject-matter which is not substantially identical to that of the previous request and is therefore a diverging request […] and not attending the OPs, the appellant waived the opportunity of discussing its case. To admit a new request in those circumstances would practically give appellants the opportunity to compel a remittal to the department of first instance as they pleased, which would run counter to the principle of procedural economy. Therefore, and since the appellant did not provide any reasons or arguments as to why the objections raised by the ED against the re-introduced feature were wrong or had been overcome, the board has to decide on the admissibility of the new request by using the criterion of whether amended claim 1 would be prima facie clearly allowable under the EPC (see T 979/02 [3.2-3] and T 70/98 [2.1-5]). [3.6] The appellant did not present any argument with regard to the objections raised in the communication dated 21 July 2006 against the feature re-introduced in claim 1 with the letter of 6 May 2011. In the board’s judgement these objections are justified and therefore prima facie have not been overcome by the appellant. The board considers the expressions “silver-plasm” and “carbon-plasm” to be unclear, rendering the features “antenna array” and “induction layer” unclear. An unclear feature, however, cannot contribute to the inventive step of the claimed subject-matter. In contrast to the appellant’s argument, the added feature therefore cannot render the claimed subject-matter inventive over the prior-art on file. In addition, the board considers the added feature to be in contradiction to the rest of the wording of claim 1 which still specifies that the induction layer is “printed” on the insulation membrane. It is ambiguous to say that “silver-plasm or a mixture of silver-plasm and carbon-plasm” can be “printed” on an insulation membrane. The board interprets the term “printed” in claim 1 to refer to printed circuit technology which, however, is in contrast to the use of “silver-plasm” or “carbon-plasm”. For these reasons, amended claim 1 of the sole request on file lacks clarity under A 84 and its subject-matter is not considered to be prima facie clearly allowable under the EPC. [4] For the afore-mentioned several reasons, the board refuses its consent under R 137(3) and decides not to admit the request filed with letter of 6 May 2011 into the appeal proceedings. [5] Since this request now held inadmissible replaced the previous request, there is no longer any request to consider, and the application has to be refused under A 97(2) and A 113(2) on the basis that the application contains no claims to which the applicant has agreed and the appeal must be dismissed. The Board also drafted a take-away headnote: 1881 | 3398
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If a feature objected to as “obscure” by the ED and omitted from all requests subsequently filed by the applicant is then re-introduced in the claims filed one month before OPs during the appeal proceedings without commenting on the objection raised earlier against this feature, the board may refuse to admit these claims into the proceedings at its discretion under Article 12(4) RPBA. Should you wish to download the whole decision, just click here. The
file
wrapper
can
NB: Also reported on Le blog du droit européen des brevets.
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be
found
here.
T 206/10 – Hearing Disorders
K’s Law – The ebook
T 206/10 – Hearing Disorders 22 Sep 2011
The applicant filed an appeal after the Examining Division (ED) had refused his patent application. Here are some relevant details relating to the examination proceedings. There were oral proceedings (OPs) on November 15, 2007. The ED announced that it could not grant the main request on file but that the auxiliary request was allowable. The ED then sent a communication under R 51(4) based on the auxiliary request. In its response, the applicant did not agree with the text proposed by the ED and requested an appealable decision. Since the ED had changed, the applicant was summoned to OPs to be held on July 28, 2009. These OPs were limited to a discussion of the main request only. In a letter dated June 4, 2009, the applicant withdrew the main request “in favour of the auxiliary request” and submitted that “it is thus believed that the OPs can be cancelled and that a fresh R 71(3) EPC communication can be issued …” The ED maintained the OPs. On the day before the OPs, the applicant informed the ED that he would not attend and added that he hoped that “a further R 71(3) communication can be issued on the basis of the claims and description previously agreed. Any other decision in these circumstances will run the risk of being a substantive procedural violation.” The ED decided to refuse the application. It held that there were two contradictory statements by the applicant, namely that he did not agree with the proposed text for grant (i.e. of the auxiliary request in the letter of March 17, 2008) and that he was withdrawing the main request in favour of the auxiliary request (faxed letter dated June 4, 2009). Though the first statement was regarded as an express disapproval of the auxiliary request, the second could not be regarded as a clear and express approval of the text (see T 549/96 [4.1]). Further, the ED saw no legal basis for a “re-issuing” of a R 51(4) EPC 1973/R 71(3) communication on the same unamended request. Following the appeal, the ED granted interlocutory revision but refused reimbursement of the appeal fee. In what follows the Board deals with the allowability of the appeal: [4] The appeal is allowable. R 67, first sentence, EPC 1973 states that the reimbursement of appeal fees is to be ordered in the event of interlocutory revision if such reimbursement is equitable by reason of a substantial procedural violation. [5] There is no need to decide whether the indication in the summons dated 29 April 2009 to the new OPs that “the issue to be discussed will be … only whether the Main Request fulfils the requirement of patentability” at that stage of the grant proceedings constitutes a restriction depriving the applicant of a decision based on a text of his own choosing, as alleged by the appellant, thus contravening A 113(2) and constituting a substantial procedural violation. [6] In any case, there is a substantial procedural violation in the reasoning of the ED in its impugned decision dated 12 August 2009 that there are contradictory statements by the applicant in the letter dated 17 March 2008 on the one hand and in the letter dated 4 June 2009 on the other with respect to the auxiliary request and that there is therefore no clear and express approval of the text for grant according to the auxiliary request, so that the patent application is to be refused. A proper interpretation and reading of the applicant’s letters dated 4 June 2009 and 27 July 2009 according to their wording and to the expressed intention cannot reasonably justify and substantiate the conclusion drawn by the ED.
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[7] At first glance there can be no doubt, nor is it disputed, that the letter dated 17 March 2008 contains a clear and unambiguous statement that the text proposed for grant is not approved by the applicant and an appealable decision on the main request is requested. [8] However, the explicit declaration in the letter dated 4 June 2009 that the applicant “withdraw[s] the Main Request” is equally clear and unequivocal in its meaning as required e.g. in decision T 549/96 [4.1], also cited in the decision under appeal. As a consequence, there was no longer any basis for a decision on the main request. The further statement that the main request is withdrawn “in favour of the Auxiliary Request” therefore on objective evaluation leaves no doubt that the applicant now seeks to have the auxiliary request granted, particularly when taking into account that only these two requests for grant, namely the main request and the (single) auxiliary request, were on file. In addition, this interpretation is strongly supported by the second sentence of the said letter, which says that “it is thus believed that the OPs can be cancelled and that a fresh R 71(3) Communication can be issued.” There appears to be no other explanation how this in combination with the foregoing declaration could be understood as the wish and request of the applicant that (now) the patent should be granted on the basis of the auxiliary request. Otherwise the request for a new R 71(3) communication would have made no sense at all. [9] With regard to the content of the applicant’s letter dated 4 June 2009, the procedural response of the ED in sending the “Brief Communication” merely informing the applicant that the date for OPs on 28 July 2009 was maintained constitutes a disregard of the applicant’s submission and thus a procedural violation, in particular of the right to be heard under A 113(1). This communication neither gives any reasons why the ED refused the applicant’s requests nor reveals that these declarations had at least been taken into consideration. According to the case law of the boards of appeal, it is not sufficient to observe A 113(1) merely formally by granting the applicant the procedural opportunity to present comments, as was the case here. This procedural step falls short of its legislative purpose and remains a pure formality if there is no trace in the file that such comments were indeed read and discussed on the merits, beyond a mere acknowledgment of their existence. In summary, A 113(1) does not merely require a party to be given an opportunity to voice comments; more importantly, it requires the deciding instance to demonstrably hear and consider them (T 763/04 [4.4]; T 246/08 [2.6]). Therefore in view of the clear declarations of the applicant, the ED should have cancelled the date for OPs, issued a new R 71(3) communication or – if it still had doubts in respect of a clear approval of the text for grant – clarified the requests instead of merely informing the applicant that the date for OPs was maintained, which is legally and procedurally an inadequate response under the given circumstances. [10] Even the applicant’s faxed letter dated 27 July 2009, in which it referred to its letter dated 4 June 2009 and inter alia expressed the hope that “… a further R 71(3) Communication can be issued on the basis of the claims and description previously agreed” and added that “Any other decision in these circumstances will run the risk of being a substantive procedural violation”, obviously did not cause the ED to reconsider the unequivocally declared consent of the applicant to the grant of a patent according to the auxiliary request already previously agreed and to reverse its own decision to maintain the date of the OPs. [11] At the latest after the filing of the letter dated 27 July 2009 the requirements for a new R 71(3) communication were met, since in it the applicant again expressed his approval for the granting of a patent on the basis of the auxiliary request previously agreed sufficiently clearly and beyond any reasonable doubt. At that stage at the latest, if the ED felt that there still were “contradictory statements”, according to the case law of the boards of appeal (T 666/90, T 552/97, T 355/03) it was obliged to rectify the misunderstanding and clarify the applicant’s true intention, instead of merely informing the applicant that the date for OPs was maintained and finally issuing the decision which is under appeal. This applies all the more because the applicant had already explicitly asked for confirmation of his declarations in his letter dated 4 June 2009. The fact that the appellant did not attend the OPs on 28 July 2009 is immaterial for the present decision, because the relevant substantial procedural violation occurred before the OPs were held and furthermore the applicant could only have declared the same as he had already done in a sufficiently clear manner in his letters dated 4 June 2009 and 27 July 2009. [12] Under A 113(2) the EPO may examine and decide upon the European patent application only in the text submitted to it by the applicant. A 113(2) is considered a fundamental procedural principle, being part of the right to be heard (see Case Law of the Boards of Appeal of the EPO, 5th edition, VI.B.4.). According to this case law the said procedural principle is of such fundamental importance that any infringement of it, even as the result of a mistaken interpretation of a request, has to be considered to be a substantial procedural violation (T 552/97; T 647/93).
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T 206/10 – Hearing Disorders
K’s Law – The ebook
[13] Under these circumstances the requirements of A 67 EPC 1973 are met. The ED rectified its decision by means of interlocutory revision. The above-mentioned substantial procedural violation led to the contested decision (refusal of the patent application) of the ED. In order to overturn this decision the applicant had to file an effective appeal, including the payment of the associated appeal fee. Hence, it appears equitable to reimburse the appeal fee. [14] By communication under R 71(3) dated 16 February 2010 the ED correctly and in accordance with the informed the applicant that it intended to grant a European patent on the basis of the (unamended) auxiliary request already agreed in the course of the grant procedure after receipt of a R 51(4) EPC 1973 communication. Obviously the examining decision (sic) did not uphold the further ground for the refusal of the patent application indicated in the decision under appeal that the “re-issuing of a R 71(3) communication on the same unamended request is neither foreseen nor justified”. [15] Even though it is not decisive for the decision in the present appeal proceedings, the sole subject-matter of which is the request for reimbursement of the appeal fee for reasons of equity, the board considers it appropriate to make the following additional remark. Contrary to the said ruling of the ED in the decision under appeal, the crucial question to be raised is not whether the EPC provides a basis for the re-issuing of a R 71(3) communication on the same unamended request, but rather whether it provides a proper legal basis for the decision to refuse a request for such a re-issuing. From the legal point of view the refusal of a request for reissuing of a R 71(3) communication on the same unamended patent application, as in the present case, constitutes an administrative act detrimental to the applicant. In order to be effective, such an administrative act requires a legal basis either in terms of an explicit legislative provision in the EPC providing for the respective legal consequence under the particular facts and circumstances or, in the absence of such a regulation, the existence of a general principle of law, developed and stated by case law or the presence of other higher-ranking legitimate interests of the parties to the proceedings or of the public overriding the interest of the applicant in getting a re-issued R 71(3) communication. However, no such legal basis has been indicated by the ED, nor is such a basis obvious or discernible. NB: You might be aware that new R 71(6), which will enter into force on April 1, 2012, explicitly provides for re-issuing of R 71(3) communications: see the Decision of the Administrative Council of 26 October 2010, OJ 12/10, 637 : (6) If the applicant, within the period under paragraph 3, requests reasoned amendments or corrections to the communicated text or keeps to the latest text submitted by him, the ED shall issue a new communication under paragraph 3 if it gives its consent; otherwise it shall resume the examination proceedings. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 753/09 – Late Expertise
K’s Law – The ebook
T 753/09 – Late Expertise 21 Sep 2011
The opponent appealed against the decision of the Opposition Division to maintain the opposed patent in amended form. During the appeal proceedings, the opponent filed an expert’s declaration:
The patent proprietor argued that the declaration of Mr G. was belated and should not be admitted into the proceedings. The background of Mr G., an alleged skilled person in the art, was left completely in the dark. He was not an independent expert, but one appointed by a party to the proceedings. From the fact that he only had signed the Italian declaration, but not the English translation, it could be deduced that he lacked sufficient language skills for understanding the translation. It was thus doubtful if he really had understood document E1, an English patent application, or document E2, a French patent application. The proprietor requested, in case the board would admit the declaration of Mr G. into the proceedings, that the board of appeal appoint an independent expert to produce an affidavit on the teachings of E1 and E2 or, alternatively, that the respondent proprietor be given the opportunity to file a corresponding affidavit. Will the Board admit Mr G.’s statement? [3.1] The declaration of Mr G. was filed by the opponent as a response to the summons to oral proceedings (OPs) issued by the board, ostensibly for demonstrating how the skilled person would interpret documents E1 and E2. From a procedural point of view, the submission is belated (Article 12(2) RPBA, for the applicable version see OJ EPO 2010, Supplement to the OJ 1, page 39), nevertheless such late submissions are normally admitted if sufficiently relevant and if the other party can reasonably react to the late filing. [3.2] Firstly, it appears that the declaration does not provide more technical information than the documents E1 and E2 themselves, thus from a technical point of view it is not more relevant than the documents on file. In principle, it is the primary and everyday task of a board of appeal under the EPC, comprising at least two technically qualified members (A 21(3)(a)(b) and (4)) to establish what various technical documents teach to the skilled person. Given that the technical teaching of both documents is relatively simple, and given that patent attorneys normally have a technical background themselves, the explanation provided by Mr G. may as well be put forward in an equally convincing fashion by the authorized representatives of the appellants, with no less evidentiary weight before the board. Therefore, in order to establish the teaching of documents E1 and E2 there is no need to admit the declaration of Mr G. [3.3] On the other hand, it is apparent that the appellant opponent seeks to add more weight to its previously developed technical argumentation by emphasizing the very fact that Mr G. has the same view in his capacity as an expert, i.e. a skilled person by definition. The respondent proprietor has various options to deal with such late 1886 | 3398
T 753/09 – Late Expertise
K’s Law – The ebook
filed evidence, since an expert declaration must be considered not just an argument, but evidence pursuant to A 117(1)(e). It is certainly open to the other party to contest the expert qualifications of Mr G. (which the respondent proprietor did), but more importantly, if statements of an expert indeed require expert knowledge, and for the same reason a greater evidentiary weight should be attributed to them than to “simple” statements of a party, then the possibility must be given to the other party to have such an expert declaration verified or possibly refuted by another expert having the same qualifications (as also requested by the respondent proprietor as an auxiliary measure). Such a defense (sic) against an expert’s declaration requires quite some time. In the present case the expert declaration was submitted less than two months before the OPs, not leaving enough time for the respondent proprietor to prepare a suitable counterstatement, also given the holiday season between the submission and the OPs. Article 13(1) RPBA stipulates that “Amendments [to a party’s case] sought to be made after OPs have been arranged shall not be admitted if they raise issues which ... the other party ... cannot reasonably be expected to deal with without adjournment of the OPs”. This being the case here, the expert declaration of Mr G. is not admitted into the proceedings. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2254/08 – Not Proven
K’s Law – The ebook
T 2254/08 – Not Proven 20 Sep 2011
This decision, one aspect of which (a request for exclusion from public inspection) was discussed in the preceding post, also contains an interesting passage on an alleged prior use. [2.1] The alleged prior use is based on D14, D15a and D15b as evidence that a closure assembly under the name “Alusnap” was launched or put on the market, i.e. at least offered for sale, before the priority date of the patent in suit. It is only necessary to discuss D14 as will become apparent below. D14 is a document dated November 2005 supporting an offer for the sale of shares in a company which has the name Guala Closures S.p.A. In a table on page 71 of D14 a launch date of 2001 is indicated for a closure with the name “Alusnap”. There is also a reference on this page to “Alusnap” being patent protected. The said table indicates the number of components in “Alusnap” as 6. On page 72 of the document there is a diagram of the closure.
In the patent in suit it is stated in column 2, lines 45 to 46 that “The Applicant has named the device of the invention “ALUSNAP” (Trade Mark)”. [2.2] As part of the evaluation of the alleged prior use it must be considered what may have been prior used, i.e. what are the technical features of any prior used device. D14 has on page 72 a diagram of an “Alusnap closure”. If this diagram is to be considered as evidence of the features of the prior used closure then it must be proven that the prior used closure is identical to that shown in this diagram. Apart from the name “Alusnap” there is no link between the diagram on page 72 of D14 and the allegedly prior used closure. “Alusnap” is a trade mark (see column 2, lines 45 to 47 of the patent in suit). A trade mark is used to indicate the origin of goods or services and is not normally considered to be an indication of the technical features of a device with which it is associated. It is moreover normal for improvements to be made to a device without however changing its name or trade mark. In the present case both D1 (see page 3, lines 2 and 3) and the patent in suit (see above) indicate that the device disclosed therein is named “Alusnap”, even though these documents disclose different devices. There is thus evidence that in the case of “Alusnap” the same name has been used for closures having differing technical features. It must therefore be concluded that this trade mark is not one which exceptionally could be considered to uniquely define the technical features of device with which it is associated. In this respect the Board notes that the number of components of the device is given as six in the said table in D14 whereas the number of components in the devices according to the patent in suit and D1 could be considered to be different due to the first and second outer sleeves being separate in the device according to the 1888 | 3398
T 2254/08 – Not Proven
K’s Law – The ebook
patent in suit. Opponent I and opponent III gave differing answers concerning the number of components in the device according to D1. The Board concludes therefore that also this information given in D14 does not allow the device to be identified. There is hence no evidence as to the technical features of the closure that is stated to have been launched in 2001. The closure could, for instance, have corresponded to the one disclosed in D4 which has the same applicant as for D1, or it could have been a still further closure having quite different features. Not only is there no evidence that “Alusnap” is a unique name for a particular form of closure, there is evidence that it specifically is used for closures having varying technical features. [2.3] In this respect the Board also notes that it does not necessarily accept that the reference to a “launch date” in D14 or the other evidence relating to the circumstances and date of the alleged prior use is sufficient to prove that a prior use actually has taken place. The Board does not have to consider these matters since, as explained above, it does not consider that what might have been prior used has been proven. [2.4] The Board concludes therefore that the technical features of the allegedly prior used closure have not been proven. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2254/08 – No Hiding
K’s Law – The ebook
T 2254/08 – No Hiding 19 Sep 2011
Both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division to maintain the opposed patent in amended form. Among other things, the Board had to deal with the (not so frequent) request to exclude a document from file inspection: [1.1] With its grounds of appeal opponent I filed D14 which is a document concerning a global offering of shares in Guala Closures S.p.A. The document is marked as confidential on its front page. Opponent I also gave the Internet address of the website from which it obtained the document. The address given by opponent I turned out to have an error in it.
Click to enlarge In its response to the appeal of opponent I the proprietor requested that D14 be removed from the proceedings, that it be excluded from file inspection, and that all references thereto be deleted from the file, since it considered that it was a confidential document that should not be made available to the public. Opponent I thereupon corrected the Internet address of the website and filed a confirmation from a public notary that he had accessed the website via the Internet and was able to print out documents D14 and the full version of D15a which is in the Italian language and part of which corresponds essentially to D14. The Board itself accessed the website at the corrected address and found that it could view the document D14 and print out a copy thereof. The availability of D14 and D15a to an unrestricted public is not therefore in doubt. D15b is an excerpt from a document alleged by opponent I to be the English version of D15a. Proof of this allegation was not supplied by
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T 2254/08 – No Hiding
K’s Law – The ebook
opponent I and it is not necessary to consider this document further in the present decision since its content is covered by D14 and D15a. [1.2] A 128 governs file inspection. Paragraph (4) of the article indicates that the inspection may be subject to restrictions laid down in the Implementing Regulations and R 144 sets out these restrictions. The documents mentioned above do not fall under any of the categories set out in R 144 paragraphs (a) to (c) EPC so that it must be considered whether they could fall under paragraph (d) of this rule. Paragraph (d) indicates that the President of the EPO may exclude from file inspection other documents which do not serve the purpose of informing the public about the European patent application or the European patent. Furthermore, in the Decision of the President of the EPO dated 12 July 2007 (OJ 2007, Special edition 3, 125) regarding R 144(d) it is stated in Article 1(2)(a) that a document shall be excluded from file inspection at the request of a party if the inspection could be prejudicial to the legitimate personal or economic interests of legal or natural persons. [1.3] It is established that the documents were accessible to the public irrespective of any confidentiality statement on the document itself. Since the documents have been available to the public by one means, i.e. the Internet, the economic interest of the proprietor cannot be affected by its being available by another means, i.e. file inspection. The documents are also relevant to the proceedings since they constitute evidence related to an alleged public prior use of a possibly relevant device. The documents therefore do not fall into the category set out in paragraph (d) of R 144 so that there is no reason to exclude them from file inspection. [1.4] In accordance with Article 1(3) of said Decision of the President a document covered by Article 1(2)(a) thereof shall be provisionally excluded from file inspection until a final decision on the request has been taken. The provisional exclusion had been effected in the present case. The Board has now come to the conclusion that there is no basis for the exclusion from file inspection so that it can now take a final decision lifting the exclusion. [1.5] Also, the request of the proprietor that the documents be removed from the proceedings and references thereto deleted is refused. As explained above the documents are in the public domain so that there is no reason for any such action, irrespective of whether or not the EPC would even allow such actions. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 959/08 – (Dys)Functional
K’s Law – The ebook
T 959/08 – (Dys)Functional 17 Sep 2011
The applicant filed an appeal after its application had been refused by the Examining Division (ED) for lack of clarity. Claim 1 before the Board read: A process for producing aliphatic polyesters having a weight-average molecular weight (Mw2) that falls within a numerical range as defined by the following numerical formula (2) and numerical formula (3) and having at least 50 % of aliphatic hydroxycarboxylic acid units, which comprises polymerizing a crystallized, aliphatic polyester prepolymer having a weightaverage molecular weight (Mw1) that falls within a numerical range as defined by the following numerical formula (1) and having at least 50 % of aliphatic hydroxycarboxylic acid units, in a solid phase in the presence of a volatile catalyst, i.e. a catalyst capable of vaporizing away from the reaction system during the reaction, the volatile catalyst being an organic sulfonic acid compound selected from the group consisting of alkanesulfonic acids having from 1 to 10 carbon atoms, halogen-substituted alkanesulfonic acids, benzenesulfonic acid and benzenesulfonic acid derivatives, naphthalenesulfonic acid and naphthalenesulfonic acid derivatives, wherein the volatile catalyst is removed during the solid phase polymerization by evaporation at a temperature of not higher than the melting point of the polymer by adjusting the type and the amount of the catalyst, the flowing gas atmosphere having a flow rate of 0.02 to 200 ml/min, per gram of the prepolymer: (1) 2 x 10^(3) <= Mw1 <= 1 x 10^(5) (2) 5 x 10^(4) <= Mw2 <= 1 x 10^(6) (3) Mw1 < Mw2 the weight-average molecular weight (Mw) being determined by gel permeation chromatography at a column temperature of 40ºC, using chloroform as the solvent by comparison with the molecular weight of a standard sample of polystyrene, and a residual percentage of the catalyst, R, in the product, which is defined by the following numerical formula (10), being at most 50 %: (10) R [%] = CA [ppm] ÷ CB [ppm] x 100 wherein R is the residual percentage of the catalyst [%], and this constitutes an index of the variation in the catalyst concentration before and after the solid-phase polymerization, CB [ppm] is the theoretical catalyst concentration in the case where all the catalyst as fed into the reaction system before solid-phase polymerization is to remain in the product, aliphatic polyester, and this is represented by the following numerical formula (11), and CA [ppm] is the actual catalyst concentration in the aliphatic polyester as finally obtained after the solidphase polymerization, and this is represented by the following numerical formula (12): (11) CB [ppm] = WB [g] ÷ WP [g] x 10**(6) wherein WB [g] is the total weight of the catalyst as fed into the reaction system before the solid-phase polymerization, and WP [g] is the weight of the aliphatic polyester as finally obtained after the solid-phase polymerization, (12) CA [ppm] = WA [g] ÷ WP [g] x 10**(6) wherein WA [g] is the weight of the catalyst having remained in the aliphatic polyester as finally obtained after the solid-phase polymerization, and WP [g] is the weight of the aliphatic polyester as finally obtained after the solid-phase polymerization. [2] Claim 1 relates to a process for producing high molecular weight aliphatic polyesters having at least 50% of aliphatic hydroxycarboxylic acid units, whereby a crystallized, low molecular weight aliphatic polyester 1892 | 3398
T 959/08 – (Dys)Functional
K’s Law – The ebook
prepolymer having at least 50% of aliphatic hydroxycarboxylic acid units is polymerized in solid phase in the presence of a volatile catalyst. At the same time, the process has to be conducted in such a way that the residual percentage of the catalyst, R, in the product, which is defined by the following formula (10), is at most 50%: R [%] = CA [ppm] : CB [ppm] x 100, CB [ppm] being the theoretical catalyst concentration in the case where all the catalyst as fed into the reaction system before solid phase polymerization is to remain in the product, and CA [ppm] being the actual catalyst concentration in the product. [2.1] Thus, the process of Claim 1 is characterized by a functional feature directed to a result to be achieved, namely the residual percentage of the catalyst, R. As pointed out in T 68/85 [8.4.3]), such a functional definition of a claim feature “must stop short where it jeopardises the clarity of a claim as required by A 84. That clarity demands not only that a skilled person be able to understand the teaching of the claim but also that he be able to implement it. In other words, the feature must provide instructions which are sufficiently clear for the expert to reduce them to practice without undue burden, if necessary with reasonable experiments.” Whilst it is true that the requirement of implementing a functional feature of a claim is an issue relating to A 84, this requirement, viewed in relation to the disclosure as a whole, is also highly relevant to the question of sufficiency in the sense of A 83. Hence, as pointed out in T 435/91 [headnote; 2.2.1], the definition of a component by its function “is not sufficient if the patent discloses only isolated examples but fails to disclose, taking into account, if necessary, the relevant common general knowledge (CGK), any technical concept fit for generalisation, which would enable the skilled person to achieve the envisaged result without undue difficulty within the whole ambit of the claim containing the “functional” definition.” Regarding the overlapping aspects of A 84 and A 83, reference may also be made to T 713/98 [3.2]. [2.2] In the present case, Claim 1 refers to various process features for achieving the desired result, namely removing the volatile catalyst during the solid phase polymerization by evaporation at a temperature not higher than the melting point of the polymer by adjusting the type and the amount of the catalyst, and the flowing gas atmosphere having a flow rate of 0.02 to 200 ml/min per gram of prepolymer. However, these process features are defined in such general terms that a person skilled in the art is left with a considerable number of variables which would have to be adjusted in order to arrive at the desired result. In other words, Claim 1 itself does not provide any meaningful instruction to achieve the desired result. [2.3] Furthermore, these rather general process features of Claim 1 which could be varied in order to achieve the desired result are not explained more fully in the original description. In fact, the relevant passages in the description merely indicate that variables like the temperature, the catalyst, the flowing gas and the pressure may have an influence on R, but the description is conspicuously devoid of any concrete, coherent and convergent teaching how to reliably and consistently get the desired result. Moreover, when discussing the individual variables, the description is equivocal rather than providing clear further instructions. With regard to the temperature, for example, Claim 1 requires the temperature to be not higher than the temperature of the melting point of the polymer. By contrast the description as filed states in the paragraph bridging pages 1 and 2 that the solid phase polymerization is carried out at a temperature not higher than the melting point of the prepolymer, or at page 24, first full paragraph, that the temperature should not be higher than the melting point (Tm) of the polymer (including the prepolymer and the reaction product, aliphatic polyester). Since it is CGK that the melting points of the prepolymer (low molecular weight), the resulting polymer (high molecular weight) and the polymer mixture are not identical, the application as filed refers in the end to three different temperatures whereby it is not clear which one should be followed. Further, according to the application as filed, the solid phase polymerization could be carried out under reduced pressure, whereby “The degree of reduced pressure in the reaction system for solid-phase polymerization under reduced pressure could be suitably determined, in consideration of the polymerization rate, the type and the amount of the volatile catalyst used, the vaporization rate and efficiency of the volatile catalyst to vaporize away from the reaction system that contains the polyester formed in the step of dehydrating polymerization, the rate and the efficiency of removing water having 1893 | 3398
T 959/08 – (Dys)Functional
K’s Law – The ebook
been formed through the solid-phase polymerization, and the final weight-average molecular weight (Mw) of the product, aliphatic polyester” (page 28, first full paragraph). Although this paragraph is remarkably free of tangible process measures, the person skilled in the art would deduce from this paragraph (also taking into account the CGK) that a reduced pressure facilitates the evaporation of the volatile catalyst. But the application as filed also contains the bewildering statement that “In general, the volatile catalyst used could hardly vaporize away from the reaction system in solid-phase polymerization under reduced pressure” (page 29, first full paragraph). When the appellant’s attention was drawn to this inconsistency, the appellant declared that the statement on page 29 of the application was an obvious error, but, at the same time, deleted the process variable “pressure” from Claim 1. Thus, it is not clear as to whether (according to the description) or not (according to Claim 1) pressure, and in particular reduced pressure, is a suitable process variable for achieving the desired result. The thrust of the appellant’s defence was that the person skilled in the art would know how to carry out the process in order to obtain the desired result. However, in the absence of any convincing evidence and in view of the rather vague and even equivocal description, the appellant’s argument is not convincing. [2.4] In order to illustrate the invention, the appellant has filed during examination (10 August 2006) a comparative example where polylactic acid was produced in the same way as in Example C-1 of the application as filed except that the solid phase polymerization was carried out under conditions so that the catalyst did not volatilize enough. In the comparative example R was 78%. The solid phase polymerization step in these two examples can be outlined as follows: (i) In Example C1 of the application this step comprises two successive steps. In the first step, the reaction is carried out at 760 mmHg (1013 hPa), at a temperature of 140ºC, and a nitrogen flowing rate of 5 ml/min for 40 h. In the second step, the reaction is continued at 760 mmHg (1013 hPa), at a temperature of 160ºC, and a nitrogen flowing rate of 200 ml/min for 60 h. (ii) In the comparative example, the solid phase polymerization is carried out in a single step at 760 mmHg (1013 hPa), at a temperature of 140ºC, and a nitrogen flowing rate of 5 ml/min for 60 h. The above comparison shows that Example C-1 differs from comparative example in
the reaction scheme, the overall reaction time (100 h vs. 60 h), the elevated temperature (160ºC vs. 140ºC), and the higher nitrogen flowing rate (5 ml/min vs. 200 ml/min).
Thus, various process parameters have been adjusted in order to obtain the desired result. It is, however, not apparent which one of these parameters is decisive in achieving the desired result or whether it is the combination of all adjustments which provides the desired result. In this context, it is noteworthy that two of the parameters, i.e. the temperature and the flowing rate, are well within the general limits indicated in Claim 1, whereas the other two parameters, namely the reaction scheme and the reaction time, are not even dealt with in the description as possible factors having an influence on the desired result. Hence, the information provided with the additional comparative example is likely to raise more questions than it answers when trying to find a technical concept fit for generalisation how to reliably and consistently get the desired result. [2.5] Finally, it is conspicuous to the board that, in order to achieve the desired result, the claimed process has to fulfil – simultaneously – two conflicting requirements. On the one hand, there must be enough catalyst species in the system in order to effectively catalyze the reaction. On the other hand, the catalyst species has to be removed during the solid phase polymerization in order to obtain the required R value. In this connection, the appellant argued that a person skilled in the art would know how to run such a process. For example, a skilled person would choose a catalyst that could be removed but was not too volatile. Or if, the catalyst were too volatile, more catalyst would have to be added during the solid phase polymerization. However, the application as filed is completely silent about this aspect. Further, there is no prior art available which is concerned with this, in a way, paradoxical situation. Hence, the appellant’s unsubstantiated assertion in this connection is not convincing.
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T 959/08 – (Dys)Functional
K’s Law – The ebook
[2.6] In summary, although the appellant argued that the functional definition in Claim 1 would be allowable in view of the case law of the Boards of Appeal (inter alia T 68/85), the above analyses reveals just the opposite. In the present case, neither Claim 1 itself nor the description nor the additionally filed comparative example provide a coherent technical concept fit for generalization, which would enable the person skilled in the art to achieve the desired result without undue burden. The lack of any tangible technical concept is even further compounded by a vague and equivocal description. Consequently, the functional claim wording directed to a result to be achieved in Claim 1 does not fulfil the requirements of A 84 and A 83, respectively (following T 68/85 and T 435/91). [2.7] Furthermore, it is conspicuous to the board that Claim 1 combines a rather general polymerization process requiring no particular point in time of the addition of the catalyst with a parameter whose calculation refers to a particular point in time of the catalyst addition, namely before the solid phase polymerization. Although this combination has a basis in the application as filed (Claim 1 as filed provides a basis for the general process, Claim 7 as filed for the parameter, and page 19, lines 7-13 for the addition before the solid phase polymerization), this combination leads nevertheless to an unclarity in Claim 1 as can be seen from the following example. Claim 1 covers the possibilities that the catalyst may be added before and/or during the solid phase polymerization. If, however, all the catalyst is added during the solid phase polymerization, it is not possible any more to calculate the parameter R according to formula (10), because the divisor of the equation becomes 0 (i.e. no catalyst before the solid phase polymerization). It is CGK that such a situation is mathematically not defined, because a division is only defined for divisors not equal 0. Thus, also for this reason, Claim 1 does not clearly define the scope of the subject-matter claimed, contrary to A 84. It might be worth pointing out that the possibility of adding the catalyst during the solid phase polymerization is not just a hypothetical possibility excogitated by the board to the disadvantage of the appellant. In fact, this possibility is explicitly mentioned in Claim 8 (“CB [ppm] … before and/or during dehydration polycondensation” and “WB [g] before and/or during the dehydrating polycondensation”) of the claim set pursued by the appellant in appeal and in the application as filed on the passage bridging pages 8 and 9 (“…the catalyst as fed into the reaction system during the solid-phase polymerization”). […] The appeal is dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1855/07 – Clear Words On Clarity
K’s Law – The ebook
T 1855/07 – Clear Words On Clarity 16 Sep 2011
The opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. The OD had found claim 1 of the patent as granted to lack inventive step. This claim read: 1. Method for activating a vehicle occupant protection application (7) in a motor vehicle (1), having the following steps: measurement of the rotational acceleration (ax) of the motor vehicle (1) about an axis (x) of rotation which is parallel to the longitudinal axis of the vehicle, by means of a rotational acceleration sensor device (4); evaluation of the measurement results by means of a computational unit (5) for evaluating the vehicle situation with respect to its environment; and activation of a suitable protection application (7) in the event of the evaluation indicating an imminent roll-over process of the motor vehicle (1), characterized in that the activation is determined as a function of a logical linking of the rotational acceleration (ax) of the rotational speed (wx) and of the translator accelerations in the vertical direction (az) of the vehicle and in the transverse direction (ay) of the vehicle. Claim 1 of the patent as maintained had the additional feature: “… a classification of the profile of the rotational acceleration being carried out on the basis of motor vehicle trials.” This feature was apparently taken from claim 6 as granted, which read: 6. Method according to one of the preceding claims, characterized in that the profile of the rotational acceleration can be classified on the basis of motor vehicle trials. The opponent pointed out that it was not clear which function this additional feature had within the claimed method and how the classification was taken into account in the activation of the protection application. In its preliminary opinion, the Board had stated that it did not feel free to examine the clarity of claim 1 as amended because it had been obtained by combining claims 1 and 6 as granted. The opponent pointed out that the wording of claim 6 as granted, which comprised a « can », indicated that this feature was optional, and should, therefore, not have been taken into account in the examination proceedings … The opponent also pointed out that there were decisions (such as T 656/07 and T 1459/05) challenging the established case law and asked the Board to remit the following questions to the Enlarged Board of Appeal (EBA): (my translation) 1. Is the entitlement of an OD and of a Board of appeal under A 102(3) EPC 1973 and A 101(3)(a) EPC 2000, respectively, to examine whether claims that have been amended during opposition proceedings comply with the requirements of the EPC, to be understood such that only certain types of amendments, or any amendment, which could generate a deficiency under A 84, are to be taken into account? 2. If only certain types of amendments are to be taken into account, do they correspond to limitations of the patent as granted by incorporation of single features or groups of features, which are not contained in the claims as granted? 3. If so, are those single features or groups of features, which are not contained in the claims as granted to be understood to comprise also amended features taken from the claims as granted? In what follows, the Board deals with the question of whether the A 84 objections are admissible: *** Translation of the German original *** 1896 | 3398
T 1855/07 – Clear Words On Clarity
K’s Law – The ebook
[2.1] The expressions “independent” and “dependent” claims stem from R 29 EPC 1973, which dealt with the form and contents of the claims. “Any claim stating the essential features of an invention may be followed by one or more claims concerning particular embodiments of that invention.” (R 29(3) EPC 1973) Such a claim is, as a rule, referred to as independent claim. “Any claim which includes all the features of any other claim (dependent claim) shall contain, if possible at the beginning, a reference to the other claim and then state the additional features which it is desired to protect.” (R 29(4), first sentence, EPC) Therefore, the particularity of a dependent claim within the meaning of R 29(3) EPC 1973 is that it protects a particular embodiment of the invention that is already defined in the independent claim. Such a claim necessarily belongs to the same category as the higher-ranking independent claim. For reasons of conciseness (A 84, second sentence, EPC 1973), such dependent claims indicate, via their reference pursuant to R 29(4) EPC 1973, that they contain all the features of the higher-ranking independent claim. There is no doubt that a claim which, being a dependent claim (within the meaning of R 29(4) EPC 1973), refers to the independent claim containing the essential features of the invention, protects exactly the same embodiment of the invention as a claim which is drafted as an independent claim and in which the reference [to the independent claim] is replaced by the inclusion of the wording of the independent claim. [2.2] Regarding the question of the [opponent] whether the Board was entitled to examine claim 1 as amended in respect of clarity, it first has to be noted that lack of clarity pursuant to A 84 is not a ground for opposition pursuant to A 100. This means that, irrespective of the way in which the granted claims are drafted, an opposition cannot be based on the allegation that the claims as granted are unclear. It follows from this finding and from what has been said under [2.1] above that a syntactical incorporation of a dependent claim into an independent claim cannot trigger an objection under A 84 EPC 1973. [2.3] This Board is well aware of the fact that the EBA, in its decision G 9/91 [19], has emphasized that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, A 102(3) EPC 1973 requires that such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. also with A 84 EPC 1973). However, the case law of the Board of appeal (BoA) provides that [a Board] is not entitled to examine conformity with A 84 EPC 1973 when the amendment simply consists in a syntactical incorporation, where a reference to the independent claim as granted is replaced by the inclusion of its full wording in the claim on file (Case Law of the BoA of the EPO, 6th edition, 2010, VII.D.4.2 and in particular T 367/96 [6.2]). Many decisions of the BoA have confirmed this view. As soon as in T 301/87 [3.8] it was stated: In the Board’s judgement, when amendments are made to a patent during an opposition, A 102(3) requires consideration by either instance as to whether the amendments introduce any contravention of any requirement of the Convention, including A 84; however A 102(3) does not allow objections to be based upon A 84, if such objections do not arise out of the amendments made. The Board goes on to say: … it would seem to be somewhat absurd if the making of a minor amendment could enable objections outside A 100 to be raised which have no connection with the amendment itself. The competent BoA in cases T 472/88 [2] as well as T 326/02 [6.1-5] and T 381/02 [2] come to the same conclusion as decision T 301/87. These relevant decisions of the BoA distinguish between factual amendments, which are to be examined in view of compliance with the requirements of the EPC pursuant to A 102(3) EPC 1973, and between merely formal, syntactical claim amendments, which do not give rise to a new objection outside A 100. [2.4] The Board adopts this view in the present circumstances. The present combination of granted claims 1 and 6 to form new amended claim 1 cannot be considered to constitute a factual amendment that would necessarily
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T 1855/07 – Clear Words On Clarity
K’s Law – The ebook
entail an assessment pursuant to A 102(3). Rather, the wording of this claim is the result of a syntactical amendment of the set of claims. The [opponent] has referred to the optional (“can”) wording of claim 6 as granted. The Board is of the opinion that the elimination of this option does not modify the substance of the subject-matter that has been claimed on the patent as granted. Present claim 1 as amended and claim 6 as granted both claim the same method. The Board has no doubt that the granted version of claim 6 complied with the wording of R 29(4), first sentence, EPC 1973, as it referred to claim 1 as granted. It follows that the Board cannot endorse the submission of the [opponent] concerning the question of whether the objections under A 84 EPC 1973 can be admitted into the present proceedings. Therefore, the objection under A 84 EPC 1973 is not taken into account, in conformity with the established case law. Request for a referral to the EBA [2.5] In view of the fact that the request for admission of objections under A 84 EPC 1973 into the proceedings has been dismissed, the Board has to examine the request of the [opponent] for a referral of its question pursuant to A 112(1)(a) EPC 1973. This article provides that in order to ensure uniform application of the law, or if an important point of law arises, the BoA shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required for the above purposes. As explained under [2.1] to [2.4] above, the Board’s dismissal of the request to consider objections under A 84 EPC 1973 in the present proceedings is in line with the established case law of the BoA of the EPO. The [opponent] has referred to decisions T 1459/05 and T 656/07 which it considered not to be in line with this case law and which make it questionable whether the application of the law is indeed uniform. The first decision cited, T 1459/05 [4.3.4], exceptionally derives the entitlement to examine the clarity of a claim resulting from a mere combination of the features of the granted claim with the feature of a dependent claim from the fact that “in the present case the technical meaning of the single added feature o) is decisive for the assessment of the subject-matter of the claim, because a difference with respect to the prior art disclosed in E1 might only be defined on the basis of this feature. However, this technical meaning is so unclear, even for the skilled person, that such a difference cannot be discerned or defined with an indefiniteness that the skilled person can be expected to deal with.” Thus the entitlement to examine clarity is justified by the result of the clarity assessment. From a logical point of view, this approach appears to be somewhat problematic and difficult to understand. Point [4.3.5] of the reasons provides some general remarks on the validity of the assumption that the claims as granted have been examined as to their clarity by the Examining Division. However, the problem that the clarity of a claim cannot be a ground for opposition is not dealt with in this decision. The Board is of the opinion that the second decision cited by the [opponent], T 656/07, constitutes a very particular case that cannot be generalised because it deals with an unusual claim construction. (Claim 1 as granted contains a reference to two claims of lower rank that are directed to subject-matter that differs from the subject-matter of claim 1 as granted.) T 1659/07 [5] shares this view of decision T 656/07. However, a referral in order to ensure uniform application of the law can only be made if the Board considers that a decision of the EBA is required (see the wording of A 112(1)(a) : “… if it considers that … is required …”). Therefore, the Board has to exercise its discretion when deciding whether it wishes to refer [the question] to the EBA. This is not the case here. For the reasons exposed in points [2.1] to [2.4] above, there is no reason to depart from the established case law. The two decisions cited by the [opponent] do indeed depart from the established case law as explained above, but they are isolated in the case law of the BoA. For this reason alone, the Board cannot see any good reason for a Board wishing to apply this established case law to refer such legal questions to the EBA. This is all the more true when – as here – the dissenting decision does not deal with the main concern (tragender Gedanke) of the case law, i.e. that lack of clarity is not a ground for opposition. Given these facts and taking into account all the relevant circumstances of the case the request for a referral to the EBA is dismissed.
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T 1855/07 – Clear Words On Clarity
K’s Law – The ebook
[2.6] The Board is of the opinion that if in a case corresponding to the above citation from T 1459/05 a feature introduced from a dependent claim as granted is so unclear that it cannot be ascribed any technical meaning, then this fact should be taken into account in the assessment of novelty or inventive step, respectively. However […] this is not the case here. Although I fully agree with this decision, I am not so sure that the case law is as established as is suggested here. Besides T 1459/05 (Board 3.2.03) and T 656/07 (Board 3.2.02) one might also cite decisions T 1484/07 (Board 3.3.10) and T 1440/08 (Board 3.2.08). It would be great if the EBA could clarify this issue once and for all, but I fear that the very particular nature of the dissenting decisions will make an (admissible) referral difficult and unlikely. Should you wish to download the whole decision (in German), click here. The file wrapper can be found here.
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T 1900/07 – No More
K’s Law – The ebook
T 1900/07 – No More 15 Sep 2011
The patent under consideration was opposed on the grounds of lack of novelty (in particular over A 54(2) document D1 and A 54(3) document D4). Lack of inventive step was mentioned but not substantiated. In its decision, the Opposition Division (OD) discussed the legal framework of the opposition and made the following statement: “Legal framework of the present opposition The legal framework of an opposition case is defined solely by (i) the extent to which the patent is actually opposed and (ii) the grounds upon which it is opposed. With respect to the first criteria, the opponent stated in his notice of opposition […] that patent in suit is opposed in its entirety. The claims as granted comprise two independent claims : claim 1 relating to a composition consisting of (a), (b) and (c).and claim 11 relating to a dietary supplement for the prevention of inflammatory processes and articular disorders consisting of an admixture of (a) and (b), wherein the wording of features (a) and (b) are identical for both claims. On the subsequent pages of the notice of opposition, the indication of facts, evidence and arguments concern exclusively the subject-matter of claim 1. The proprietor, relying on the principles set out in G 9/91, argued that the second independent claim was outside the remit of opposition proceedings. The Division notes that there is an inconsistency between, on one hand, the general statement at the beginning of the notice of opposition, and the subsequent pages of the notice of opposition on the other hand, which relate solely to one of the two independent claims. The Division considers the patent in suit was actually opposed in part only, despite the general statement mentioning that the patent was opposed as whole. In the present case, the patent in suit relates to two different chemical entities (as defined in claims 1 and 11), which only partly overlap. and allowing to the opponent to amend serious inconsistencies in his notice of opposition with respect to the extent of the opposition after expiry of the nine-month period fixed by Art. 99(1) EPC is contrary to the basic concept of post-grant opposition under the EPC. With respect to the second criteria, the opponent has indicated that the grounds for opposition were lack of novelty and inventive step […]. In the notice of opposition, no facts, arguments or evidence with respect of inventive step were brought forward. Instead, in the last paragraph of the notice of opposition, it was mentioned that “Aus verfahrensokonomischen Gründen soll die Diskussion der erfinderischen Tatigkeit zurückgestellt werden bis Patentansprüche vorliegen, die zumindenstens das Kriterium der Neuheit erfüllen.” Such a statement cannot be considered to fulfill the requirements of R. 55(c) EPC. As the alleged lack of inventive step is not sufficiently substantiated and as the Division fails to see any reason why it should be introduced under Art. 114(1) EPC on the basis of the documents cited in the procedure, this ground of opposition is not part of the present proceedings. […] In summary, the legal framework of the present opposition procedure is limited to the substantive examination of the independent claim actually opposed by the grounds actually supported by fact, evidence and arguments, namely novelty of independent claim 1 as granted. …” The OD then found claim 1 of the patent as granted not to be novel over both D1 and D4 and maintained the patent in amended form. Both the patent proprietor and the opponent filed an appeal against the decision of the OD. The patent proprietor requested the patent to be maintained as granted. 1900 | 3398
T 1900/07 – No More
K’s Law – The ebook
In its statement of grounds of appeal, the opponent raised novelty objections (based on D1, D3 and D4) but also inventive step objections (based on D9 in combination with D10 and D11 as well as on D8 together with the common general knowledge of the skilled person). Documents D8 to D11 had only been filed together with the statement of grounds of opposition. The Board found claim 1 as granted to be novel. What will it do with the inventive step objections? [1] The OD decided that, as a result of the content of the notice of opposition, the legal framework of the opposition was limited to the substantive examination of novelty of claim 1 as granted […]. [2] The legal framework of an opposition case is defined by the extent to which the patent is actually opposed and by the grounds on which it is opposed. [3] Regarding the extent to which the European patent is opposed, the opponent on page 1 of the notice of opposition, dated 13 August 2004, requested to revoke the patent in its entirety. The grounds for opposition were indicated on page 2, first paragraph, of the notice of opposition, as being A 100(a) in combination with lack of novelty (A 54) and lack of inventive step (A 56). However, on the following pages the opponent only substantiated the ground for opposition in accordance with A 100(a) in combination with A 54 with regard to claim 1 as granted. The only statement referring to the requirements of A 56 […] read (my translation): “For the sake of procedural economy the discussion of inventive step is postponed to the stage at which the claims on file fulfil at least the criterion of novelty.” [4] As far as the extent of an opposition is concerned, if an opponent requested revocation of the patent in its entirety, it is sufficient to substantiate the ground for opposition in respect of at least one claim of the patent for the requirements of R 76(2)(c) (R 55(c) EPC 1973) to be met. R 76(2)(c) does not refer to claims but rather requires that the notice of opposition should contain a statement of the extent to which the patent was opposed (see Case Law of the Boards of Appeal of the EPO, 5th Ed., 2006, VII.C.5.2.1(b)). [5] The ground for opposition under A 100(a) in combination with A 56 has not been substantiated within the time limit prescribed in A 99(1) as required in R 76(2)(c). This ground for opposition, which has also not been introduced into the proceedings by the OD under A 114(1) in accordance with the principles set out in the decision of the Enlarged Board of Appeal G 10/91 [16], was not part of the opposition procedure […]. [6] Although not arguing against this issue of the OD’s decision, [the opponent], in the appeal procedure […] submits evidence and arguments substantiating an objection of lack of inventive step of the claimed subjectmatter. Thus, A 56 is a “fresh ground for opposition” (see G 10/91 [18]) which in appeal proceedings can be considered only with the approval of the Patentee. As can be seen from Patentee’s written submissions it does not approve the introduction of this fresh ground for opposition. [7] Thus, in summary the Board decides with regard to the legal framework of the present opposition/appeal procedure that the patent in suit was opposed in its entirety under A 100(a) on the ground of lack of novelty (A 54) and no more. Finally the patent was maintained as granted. Note that the present reasoning is not contrary to T 131/01, because the inventive step objections were not based on D1 but on documents that were new in the proceedings. The Board might have discussed inventive step (or remitted the case) had the opponent based its inventive step attack on A 54(2) document D1 he had used for the novelty attack. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 475/07 – All ‘Bout The Money
K’s Law – The ebook
T 475/07 – All ‘Bout The Money 14 Sep 2011
Each of the opponents filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. During the oral proceedings (OPs) before the Board of appeal (BoA), on March 2, 2010, the patent proprietor contested the admissibility of the appeal of opponents I because the names and addresses of the appellant were not mentioned in the notice of appeal and because the person having signed the notice (Lothar S.) had never been authorised by the opponent. This led to the OPs being postponed. The BoA offered opponents I the possibility to remedy the deficiency within one month. An authorisation for Lothar S. was filed. OPs were again held on September 8, 2010. The BoA came to the conclusion that the patent was to be revoked. It then dealt with opponent II’s request for an apportionment of costs: *** Translation of the German original *** [7.1] According to A 104(1), “each party to the opposition proceedings shall bear the costs it has incurred, unless the OD, for reasons of equity, orders, in accordance with the Implementing Regulations, a different apportionment of costs.” Pursuant to A 111(1) the BoA may exercise any power within the competence of the department which was responsible for the decision appealed. Therefore, in the present case, the BoA can decide on apportionment of costs within the competence of the OD for reasons of equity. [7.2] During the OPs before the BoA, on March 2, 2010, the [patent proprietor] disputed for the first time the admissibility of the appeal filed by [opponents I]. It asserted that
the notice of appeal did not comprise the names and addresses of the appellants, and the signatory of the notice of appeal had not been authorised by [opponent I] […].
The second deficiency could only be remedied by submitting authorisations. Authorisations cannot be filed by facsimile (see Article 3 of the “Decision of the President of the EPO dated 12 July 2007”, Special edition n°3, OJ EPO 2007, 7). Thus the [patent proprietor] must have been aware that in response to this objection, the BoA was obliged to postpone the OPs and summon the parties afresh to OPs. The fact that it had not requested the postponement itself is, therefore, irrelevant. These new OPs have generated additional costs for the parties, which could have been avoided had the [patent proprietor] pointed out the deficiencies at an earlier stage. It could have done so, as the deficient notice of appeal dated March 16, 2007 was transmitted to it together with the communication dated March 27, 2007. As a consequence, it is equitable to have the [patent proprietor] bear costs for the additional OPs. [7.3] Consequently, it has to be decided which costs the [patent proprietor] shall bear. [7.3.1] [Opponents I] have not directly caused the postponement of the OPs. However, its deficient notice of appeal was the trigger (Anlaß) for the postponement. Therefore, it would not be equitable to have the [patent proprietor] bear the additional costs incurred [by opponents I].
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T 475/07 – All ‘Bout The Money
K’s Law – The ebook
[7.3.2] [Opponent II] has requested apportionment of costs. As the admissibility of its appeal has not been questioned, it has not had any part in the postponement of the OPs. Therefore, the BoA has decided to have the [patent proprietor] bear only the costs incurred by [opponent II] for the additional OPs. [7.4] Pursuant to R 88(2) the OD shall, on request, fix the amount of costs to be paid. Pursuant to A 111(1) the BoA may exercise any power within the competence of the department which was responsible for the decision appealed. [7.5] [Opponent II] has put its costs for the additional OPs and their preparation at 2300 €. R 88(1) provides that apportionment shall only take into consideration the expenses “necessary to assure proper protection of the rights involved. The costs shall include the remuneration of the representatives of the parties.” Therefore, it had to be determined whether it was necessary to spend 2300 € to assure proper protection of the rights of [opponent II]. [Opponent II] had been represented in both OPs by Dr. Michael P., a self-employed patent attorney. Therefore, the remuneration of this representative is part of the adequate costs under R 88(1). In decision T 930/92 [4.3] the BoA has come to the conclusion that costs amounting to 8750 DM for remunerating the professional representative for preparing for and attending the OPs during three and a half days were adequate. “Costs may be fixed once their credibility is established.” (R 88(2), last sentence) In the present case the BoA assumes that the professional representative could bill one day for preparing and another day for attending the additional OPs. Therefore, the cost estimate of 2300 € is credible. Consequently, the BoA considers that in the present case, exceptionally, a detailed cost calculation is superfluous. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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R 5/11 – Boilerplates Etc.
K’s Law – The ebook
R 5/11 – Boilerplates Etc. 13 Sep 2011
In yesterday’s post, we have seen decision T 1685/07, where Board 3.2.03 dismissed the appeal of the patent proprietor against the revocation of its patent. The patent proprietor then filed the present petition for review. The petition was based on an alleged violation of the right to be heard (A 112a(2)(c), A 113). The patent proprietor pointed out that the non-admission of auxiliary requests 4 to 6 was based on reasons which it had not been able to comment. The relevant file history is as follows: Together with its statement of grounds of appeal, the patent proprietor filed a main and an auxiliary request. The main request was directed at a method for producing an air separation installation comprising at least one coldbox for at least one module of the installation. About five weeks before the oral proceedings (OPs) before the Board, the patent proprietor filed six new auxiliary requests:
Auxiliary request 1 was identical to the main request, but the two-part form was abandoned; Auxiliary requests 2 and 3 were directed to an embodiment with three coldboxes; Auxiliary requests 4 to 6 were directed to an installation with at least two coldboxes of a particular size.
As we have seen in the previous post, the Board did not admit auxiliary requests 4 to 6. The Board said (point [6.8] of the Reasons) that: “… All in all, the claim versions according to auxiliary requests 4 to 6 go into a completely different direction than the claim versions according to the main request and auxiliary requests 1 to 3. Contrary to the opinion of the respondent (sic) it is not relevant that auxiliary requests 2 and 3 have been found not to be allowable under 123(2), because this deficiency could have been easily overcome by convergent limitations of the claim versions. The way in which the respondent (sic) proceeded presents both the appellant (sic) and the Board with an unacceptable situation because the respondent (sic) forces them to deal with divergent claim versions and, consequently, with a completely new factual situation. This way of proceeding is not a regular defence that is consistent with efficient proceedings (verfahrensfördernd) in the above sense. Therefore, the Board has exercised its discretion under Article 13(1) RPBA by not admitting auxiliary requests 4 to 6 into the proceedings. …” The petitioner pointed out that these reasons came as a surprise. Neither the belated filing nor Article 13 RPBA had been mentioned. T 565/07 had not been referred to either. According to the petitioner, the violation of the right to be heard was fundamental within the meaning of A 112a(2)(c) because it resulted in a patent being definitively destroyed (vernichtet). The EBA first stated that it did not find the petition clearly inadmissible. It then examined whether it was clearly unallowable: *** Translation of the German original *** [2] As can be seen from the course of the proceedings […], the main reason for not admitting the auxiliary requests 4 to 6 was that they went, in the opinion of the Board, “into a completely different direction” than the claim versions of the main request and of auxiliary requests 1 to 3, i.e. a lack of convergence of auxiliary requests 4 to 6 with respect to the requests of higher order. The Board had already pointed out this problem in its summons [to OPs], when commenting on former auxiliary request 3 on which the later filed auxiliary requests 4 to 6 were based. The petitioner explained that this aspect was indeed discussed during the OPs. No violation of the right to be heard under A 113(1) is manifest in this respect.
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R 5/11 – Boilerplates Etc.
K’s Law – The ebook
[3] The petitioner considers that its right to be heard has been violated because the way in which the proceedings were conducted by the Board of appeal (BoA) did not give it any opportunity to comment on the question of whether the requests under consideration were late filed in view of Article 13 RPBA, or to take appropriate alternative action. This was particularly true for the provision of Article 13(3) RPBA dealing with the issue of whether amendments filed after the summons for OPs were acceptable, which had been applied in the decision without having been discussed at all. [4] The EBA cannot share this opinion, for the following factual and legal reasons: [4.1] As can be seen from the course of the proceedings […], the BoA not only mentioned the problem of diverging claims but also pointed out that the admission of amended requests was within the discretion of the Board pursuant to Article 13 RPBA. The Board cannot be held responsible for the petitioner having understood this to be a boilerplate text (Leerformel) without there being a reference to the facts of the case. [4.2] Irrespective of this reference the petitioner’s representative had to be aware, in view of the established practice of the Boards of appeal (see Case Law of the Boards of appeal, 6th edition, 2010, VII.E.16 “Filing of amended claims in appeal proceedings”) that the admission of amended claims during the appeal proceedings is within the discretion of the Board. This discretion is exercised by pondering all the circumstances of the case under consideration. This established practice was codified in 2003 to form the RPBA, which a professional representative may be expected to know. [4.3] As admitted by the petitioner, the BoA announced during the OPs that it intended not to admit auxiliary requests 4 to 6. It is alleged that it has justified this by pointing out the lack of convergence of those claims without referring to their late filing. This remark has doubtlessly given the appellant the opportunity to provide arguments in favour of the admission of auxiliary requests 4 to 6. It has not asserted that it has been hindered from doing so. It merely points out that after several enquiries, only A 106 had been cited as legal basis for the intention not to admit [the requests] and that it had expressed doubts in this respect. The EBA is of the opinion that this cannot be an objective reason hindering [the petitioner] from presenting its own arguments in favour of the admission of auxiliary requests 4 to 6, especially if it had doubts concerning the correctness of the response it had received. That the aspect of late filing is part of the argument follows from the mere fact that the requests had been filed late; there was no need for the Board to refer to this fact. [4.4] Even if the BoA did not address the belatedness of auxiliary requests 4 to 6 of its own motion during the OPs, the fact that it took it into account when exercising its discretion does not constitute a violation of the right to be heard of the petitioner. In the summons [to OPs] the BoA had clearly referred to the problem of amended requests and to its discretion under Article 13 RPBA in this respect. There was no need for repeating this remark during the OPs. The fact that the Board referred not only to Article 13(1) RPBA but also to Article 13(3) RPBA, which does not leave any room for discretion, does not do any harm because this provision is not relevant for the reasons. [5] The arguments submitted by the petitioner, according to which the alleged violation of A 113(1) were fundamental within the meaning of A 112a(2)(c), are not persuasive either. [5.1] The mere fact that the BoA confirmed the revocation of the petitioner’s patent cannot as such qualify the alleged violation of A 113 as fundamental. It is not sufficient that the issue of the appeal proceedings is fundamental for the petitioner. [5.2] Also, the EBA cannot endorse the petitioner’s opinion according to which it had not been able to comment reasons that were essential for the decision. See the considerations under [4.3] above. [5.3] Finally, the petitioner’s argument according to which the conduct of the proceedings by the BoA had prevented it from taking easily available measures for saving the patent, is not persuasive. The petitioner is of the opinion that it could have fallen back on its previous third auxiliary request filed on March 31, 2009, which would have meant that the provisions of Article 13(3) would not have been applicable to this request. When arguing in this way, the petitioner overlooks that the admission of its previous third auxiliary request was also within the discretion of the Board because this request had been filed after the statement of grounds of appeal and that the Board had already pointed out in its summons that this request lacked convergence with respect to the preceding requests. Consequently, the situation would not have been very different from the situation underlying the decision. Order
1905 | 3398
R 5/11 – Boilerplates Etc.
K’s Law – The ebook
For these reasons, it is unanimously decided that: The petition for review is rejected as clearly unallowable. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1685/07 – Converge!
K’s Law – The ebook
T 1685/07 – Converge! 12 Sep 2011
The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke its patent. The Board established that the main request and the first auxiliary request on file lacked inventive step and that the second and third auxiliary requests did not comply with the requirements of A 123(2). It then dealt with the question whether late filed auxiliary requests 4 to 6 should be admitted. *** Translation of the German original *** [6] Auxiliary requests 4 to 6, which had been filed by the [patent proprietor] together with the written submissions dated June 30, 2010, on July 1, 2010, i.e. a little less than five weeks before the oral proceedings, were not admitted into the proceedings. [6.1] Pursuant to A 106(1), first sentence, an appeal shall lie from decisions of, inter alia, the OD. Once appeal proceedings pursuant to A 106(1) have been opened, their aim is to review (Kontrolle) the concrete particular case. This means that the extent of review (Prüfungsumfang) is limited to fully or partly remedying the fact that one or more losing parties are adversely affected by the impugned decision of the EPO, upon request of these parties. The Board of appeal does so by setting aside or modifying the impugned decision. In this context, the Enlarged Board of Appeal (EBA) has explained in its established case law that the main purpose of inter partes appeal proceedings is to give the losing party the opportunity of contesting the decision of the OD (G 9/91 and G 10/91; G 1/94). In this respect the appeal proceedings aim at providing an independent judicial review of the administrative decisions of the EPO, which have to be strictly distinguished from the appeal proceedings, in view of their correctness from a factual, procedural and substantive point of view (T 26/88; T 611/90; T 34/90; T 534/89; T 506/91) It follows from this alone that there are certain limits for the way in which parties can conduct appeal proceedings. These limits follow from both procedural principles (principle of party disposition, binding nature of requests (Antragsbindung), prohibition of reformatio in peius, principle of party presentation and of examination by the office of its own motion (Verhandlungsgrundsatz-Amtsermittlungsgrundsatz), principle of fair trial, right to be heard) and immanent requirements any regular proceedings have to comply with. Thus it is the duty of any party to the proceedings to submit all facts, evidence, arguments and requests that are relevant for the assertion or defence of rights, respectively, as soon and as complete as possible. [6.2] The requirements which the parties have to comply with if the proceedings are to be conducted in a regular manner follow from the Rules of Proceedings of the Boards of appeal (RPBA), and in particular from Articles 12 RBPA (Basis of proceedings) and Article 13 RPBA (Amendment to a party’s case). The admissibility of subsequent amendments of the requests of a party are expressly subject to the Board’s discretion. These rules are the expression of the principle of expedition of proceedings (Beschleunigungsgrundsatz) and of the principle of fairness towards the other party. [6.3] As far as amendments of the patent application or the patent are concerned, R 137(3) and R 80 are relevant, via R 100(1), for examination and opposition appeal proceedings, respectively. In opposition appeal proceedings, such as here, the only amendments possible are amendments occasioned by a ground for opposition. From a temporal point of view, it is within the discretion of the Board of appeal to refuse late filed requests also in opposition appeal proceedings, in analogous application of R 137(3). [6.4] The function of appeal proceedings, i.e. to give the losing party the opportunity to have the correctness of the decision of the administrative instance reviewed, has led some decisions to conclude that the patent proprietor is not entitled at all to amend his requests in the appeal proceedings and that the admission of amendments generally lies within the discretion of the Board of appeal (T 840/93; T 427/99 [3 et seq.] T 455/03 [2.1]; T 651/03 [2]; T 339/06 [6.2 et seq.]; T 240/04 [16.1 et seq.]) 1907 | 3398
T 1685/07 – Converge!
K’s Law – The ebook
According to T 153/85 [5 et seq., headnote 1], an applicant shall only be entitled to have a set of claims which differs from the claims on file in the proceedings of the administrative instance, examined in examination appeal proceedings in which he is the sole appellant and sole party to the proceedings if he has filed this set of claims together with the statement of grounds of appeal or as soon as possible thereafter. This has been criticized in decision T 577/97 where it is said that there is no legal basis for refusing requests for amendments during appeal proceedings, unless [the filing of the requests amounts to] an abuse of procedural rights (similar T 162/97 [1.2 et seq.] : the patent proprietor has the right to change his request and amend the patent when filing the statement of grounds of appeal and in the course of the appeal proceedings) Notwithstanding all those differences of point of view, in practice amendments filed together with the statement of grounds of appeal are, as a rule, admitted, at least when this does not lead to a completely new case. In T 356/08 [2.1.1] the Board of appeal has explained that, as a rule, the decision of the Board of appeal should be taken on the basis of the matter of dispute before the administrative instance. This does not exclude the admission of new requests but makes it dependent on the fulfilment of certain requirements. As a matter of fact, no “fresh case” should be brought (B. Günzel, The treatment of late submissions in proceedings before the boards of appeal of the EPO, Special edition OJ EPO 2/2007, 30, No. 5). The case law has elaborated rules for taking into account amendments that have been filed belatedly, at an advanced stage of the appeal proceedings, modelled on the principles for exercising discretion in view of late filed submissions. As in the case of late filed submissions, criteria [to be taken into account] are: the time of the amendment, the reasons for it, its extent, or the difficulty or complexity of the amended claims (T 942/05 [1.2]; T 81/03 [2.4]). [6.5] Notwithstanding the above criteria and the general requirements with respect to the conduct of the proceedings by the parties, which are immanent to appeal proceedings and for which the Boards of appeal have developed a comprehensive casuistry (see Case Law of the Boards of appeal, 6th edition, 2010, VII.E.16 […]), it is of particular importance for the admission of new requests filed only in the course of the proceedings, whether the applicant or the patent proprietor, as the case may be, who files more than one request, follows a consistent line of defence in its different requests and does not, especially towards the end of the proceedings, use a “screen” of divergent versions of claims to create, for both the other party and the Board of appeal, a confusing and unacceptable procedural situation in which they are obliged to select from a great number of incongruous versions the one which could eventually prevail. Contrary to the opinion of the respondent (sic) there is no need for an explicit legal basis for being restrictive in admitting a great number of requests comprising different versions of claims in view of convergence or divergence. Neither the EPC nor the RPBA contain any express rule for the use of different versions of claims in the form of auxiliary requests. As a rule, such requests are conditional requests in that a subsequent auxiliary request is only to be considered if the preceding request(s) cannot be allowed. Therefore, each such request on file depends on another decision [to be taken] in the course of the proceedings. The hitherto existing case law has, as a rule, held this way of filing requests to be admissible, and it has indeed proven convenient in practice, but it is an exception to the principle according to which requests are to be filed unconditionally, and, therefore, it has to be subject to limiting rules. What is of particular importance, besides the time at which the request is filed, is the question of whether the versions “converge” or “diverge”, i.e. whether they develop the subjectmatter of the independent claim of the main request in a given direction or in the direction of an inventive idea, respectively, or else pursue different [lines of] development by incorporating different features in each case. [6.6] Insofar the Board maintains its previous jurisprudence and refers to its decision T 565/07 [2.5] “Even if in principle a patent proprietor has to be authorised within the framework of R 80 to limit the subject-matter of a patent by incorporating features of a dependent claim in order to meet objections against the patentability of the independent claim that has been granted, the repeated application of this right in different directions, e.g. in the form of parallel our subsequently filed requests would lead to the result that the patent proprietor leaves it to the Board to decide in which of the different versions the patent should be maintained. This result is not reconcilable with A 113(2) according to which the Board has to stick to the “text submitted … by the proprietor”, which means that it is incumbent on the patent proprietor to decide on the version in which the patent is to be prosecuted, and to file one or several sets of claims that have to correspond to this decision and, as a consequence, to the chosen direction of limitation (see also T 382/96 [5.2] and T 446/00 [4.3]).” A similar position is also held by other Boards of appeal, as can be seen from the cited decisions T 382/96 and T 446/00, but also decisions T 1126/97 [3.1.1 et seq.] and T 47/03 [1.1, 1.4 et seq.] as well as T 745/03 [2.2] and T 221/06 [2.2]. 1908 | 3398
T 1685/07 – Converge!
K’s Law – The ebook
In the latter decisions the Board of appeal explained that it was up to a party to decide on presentation of its case. When filing several sets of claims, a party usually listed them in order of preference, wherein the broadest claims formed the main request and more limited versions formed auxiliary requests. If a higher order request should fail, then a lower more limited request would still have a chance of success. In the case before the Board, the approach chosen could more aptly be designated as “pick and mix” (buntes Zusammenwürfeln), as independent claims present in higher order requests were also found in lower order requests in differing permutations of independent claims. Such a “pick and mix” approach could give rise to a situation where the final decision did not refer to some independent claims because if even just one of the independent claims in a particular request incorporated from a higher order request did not meet the requirements of the Convention, the particular request concerned had to fail for this reason, without a decision being necessary on the other independent claims. [6.7] In the present case, the auxiliary requests 1 to 6 filed together with the written submission dated June 30, 2010, i.e. after the summons for oral proceedings, are divergent. Whereas claim 1 of auxiliary request is distinguished from claim 1 of the main request only in that it is a onepart claim, claim 1 of auxiliary requests 2 and 3 limits claim 1 of the main request to a specific arrangement of three coldboxes for different modules of the installation. However, this limitation is not found in independent claim 1 of auxiliary requests 4 to 6. These claims are drafted more generally because there only have to be two coldboxes and there is no more allocation to particular modules of the installation, as claimed in auxiliary requests 2 and 3. [6.8] All in all, the claim versions according to auxiliary requests 4 to 6 go into a completely different direction than the claim versions according to the main request and auxiliary requests 1 to 3. Contrary to the opinion of the respondent (sic) it is not relevant that auxiliary requests 2 and 3 have been found not to be allowable under 123(2), because this deficiency could have been easily overcome by convergent limitations of the claim versions. The way in which the respondent (sic) proceeded presents both the appellant (sic) and the Board with an unacceptable situation because the respondent (sic) forces them to deal with divergent claim versions and, consequently, with a completely new factual situation. This way of proceeding is not a regular defence that is consistent with efficient proceedings (verfahrensfördernd) in the above sense. Therefore, the Board has exercised its discretion under Article 13(1) RPBA by not admitting auxiliary requests 4 to 6 into the proceedings. To download the whole decision (in German), click here. The Relevant
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NB: In a forthcoming post, we will see the outcome of the petition for review filed by the patent proprietor.
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here.
T 2019/09 – Not Suitable
K’s Law – The ebook
T 2019/09 – Not Suitable 10 Sep 2011
The applicant filed an appeal against the decision of the Examining Division (ED) to refuse its application. Claims 4 and 5 of the main request before the Board read (in English translation): 4. A radiation-curable 1,3,5-triazine carbamate or 1,3,5-triazine urea obtainable by reacting a compound of formula (IV)
in which R4, R5 and R6 each independently of one another can be C1-C4 alkyl or by reacting 2,4,6-triisocyanato-1,3,5-triazine with a compound containing a hydroxyl or amino group and at least one vinyl, methacryloyl or acryloyl group. 5. A radiation-curable 1,3,5-triazine carbamate or urea according to claim 4, characterised in that the compound containing a hydroxyl or amino group and at least one vinyl, methacryloyl or acryloyl group is selected from the group consisting of polyether (meth)acrylates, polyesterol (meth)acrylates, urethane (meth)acrylates and epoxy (meth)acrylates. The Board found the request to comply with A 123(2) and then examined its clarity. The applicant pointed out that it was not possible to draft the subject-matter of claims 4 and 5 more clearly because it generally referred to the reaction products (Umsetzungsprodukte). The disclosure comprised a great number of products which could not be summarised in one generic formula. *** Translation of the German original *** [2] The compounds claimed in claims 4 and 5 are not defined by reproducible physical or chemical parameters – such as for example their chemical structure – but by the process for their preparation. [2.1] According to the case law of the Boards of appeal (see T 150/82 [10]), such a definition is admissible only if the compounds themselves fulfil the requirements for patentability and there is no other reproducible parameter available in the application which would allow to characterise those compounds. The description of the present application discloses that the compounds of formula (VI) and/or (V) as wells as the compounds of formula (I) to (III) are obtainable via the process described in claim 4 […]. Therefore, the claimed compounds of claims 4 and 5 can be defined by their structure. The formulation of claims 4 and 5, i.e. compounds which are characterised by the process for their preparation, is not appropriate in the present case. [2.1.1] The Board does not find the [applicant’s] argument persuasive. The reaction of a 1,3,5-triazine carbamate with compounds containing a hydroxyl or amino group either results in low-molecular reaction products or possibly in polymers. In both cases the compounds that are obtained can be characterised by reproducible parameters such as structure or glass transition temperature. As a consequence, the definition of the compounds that are obtained by the process for their preparation is not appropriate in the present case. [2.2] In view of this the Board assumes that the claims violate A 84.
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T 2019/09 – Not Suitable
K’s Law – The ebook
The Board finally remitted the case to the ED for further prosecution, based on the auxiliary request in which the product-by-process claims were replaced by process claims. To read the whole decision (in German), click here. The file wrapper can be found here.
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T 1136/10 – One, Two, Three
K’s Law – The ebook
T 1136/10 – One, Two, Three 9 Sep 2011
Oh, when things go wrong, they really go wrong … This decision deals with an appeal against a refusal of an application. The ground for the refusal was lack of clarity (absence of essential features) and insufficient support. The Board found that the Examining Division (ED) had committed not less than three substantial procedural violations. Request for oral proceedings (OPs) (A 116(1) and A 113(1)) [1.1] The ED states in point 3.5 of the facts and submissions of the impugned decision that “The applicant explicitly did not request OPs” (emphasis added by the Board). This statement is factually wrong for the following reasons. [1.2] The applicant stated in its response dated 13 November 2007 “While it is believed that the above is fully responsive to the Examiner’s objections, should the Examiner feel disposed to reject the application at any time, we would request OPs, purely as a precautionary measure, so as to avoid such a rejection. However, this should not be taken as a request for OPs per se” (… ; emphasis added by the Board). [1.3] According to point I of the reasons of the impugned decision the ED took the view that the last sentence “this should not be taken as a request for OPs per se” meant that “the applicant insists on the fact that no request for OPs is formulated” (emphasis added by the Board). In doing this, the ED either ignores the first sentence (which makes a clear conditional request for OPs if a rejection is imminent), or interprets it exactly contrary to what it explicitly states. The first is a clear procedural violation, the second is contrary to common sense. By considering both sentences together it is clear that the request for OPs is conditional only in case a refusal of the application is intended, but is not meant to indicate that the applicant wishes, as a next submission, to give any further argumentation only orally. [1.4] In the impugned decision the ED cited decision T 433/87 in that a party’s right to OPs is subject to a clear and unconditional request to that effect. [1.4.1] That decision concerns an opposition case wherein the patent proprietor asked to arrange for OPs as soon as possible in case that they would be necessary (“bei Erfordernis baldmöglichst die mündliche Verhandlung anzusetzen” …) and the Board stated therein that this statement did not represent an unconditional request for OPs so that the Opposition Division (OD), which did not arrange for OPs in the opposition procedure, was not only not wrong, but actually was correct in doing so since the OD did not consider such OPs to be necessary for issuing its decision (see point [2] of the reasons). [1.4.2] The Board is not aware of any requirement in the EPC or by Case Law that only unconditional requests to OPs are admissible. It is absolutely normal practice to request OPs e.g. only for the eventuality of an imminent adverse decision. As discussed […] above, the Board further does not consider the present request for OPs to be lacking in clarity, or to be conditional on unclear circumstances. [1.4.3] T 433/87 is further also not relevant since the request for OPs in the present case was not made dependent on whether the Examiner or ED considered it necessary. [1.4.4] Since the ED came to the conclusion to refuse the application the condition involved by the applicant applied and it should therefore have arranged for OPs, in accordance with A 116(1).
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T 1136/10 – One, Two, Three
K’s Law – The ebook
By not granting the applicant’s clear conditional request for OPs the ED committed a first substantial procedural violation since the applicant was firstly deprived of its right for OPs according to A 116(1) and secondly of its right to be heard (A 113(1)) during such OPs. [1.4.5] In any case, when interpreting a request out of its context or when a request is not clear to the ED it should have tried to clarify the situation, e.g. by a telephone conversation with the representative of the appellant. Such an action would have prevented it from committing this substantial procedural violation. Ignoring the right to be heard (A 113(1)) [2.1] In point II of the reasons of the impugned decision the ED stated for the first time during the examination proceedings (which in fact comprised only the European search opinion as substantive communication) “Furthermore, claim 1 does not meet the requirements of A 84 in that the matter for which protection is sought is not defined. The claim attempts to define the subject-matter in terms of the result to be achieved: “the coating having a transparency to incident radiation of less than about 50% below the coating glass transition temperature and greater than about 50% above the coating glass transition temperature” Such a definition is not allowable in the present case because it appears possible to define the subject-matter in more concrete terms, viz. in terms of how the effect is to be achieved, i.e. by the chemical and physical definition of the coating.” [2.2] By introducing this new clarity objection with respect to claim 1, which bears no relationship with the prior lack of clarity objection in respect of which the applicant had no opportunity to comment or to submit any argument, the applicant was deprived of its right to be heard as guaranteed by A 113(1). Thereby the ED committed its second substantial procedural violation since, as defined in A 113(1), the decisions of the EPO may only be based on grounds or evidence on which the party concerned has had an opportunity to presents its comments (see also the Guidelines for Examination in the European Patent Office, Part E, Chapter X, 1.1). Lack of reasoning in the decision (R 111(2)) [3.1] The European search opinion of the Search Division sent with the communication dated 18 September 2006 raised in points 5 and 6 the following two objections: “Clarity (A 84) (5) It is clear from the description on page 16 that the following features are essential to the definition of the invention: (1) the substrate comprises a superalloy selected from the group consisting of nickel-based, cobalt-based, iron-based and combination thereof, (2) the coating comprises a glass selected from the group consisting of borosilicate glass, lithium silicate glass, potassium germinate glass, barium germinate glass, arsenic germinate glass, and combinations thereof. Since independent claim 1 does not contain these features it does not meet the requirement following from A 84 taken in combination with R 29(1) and (3) that any independent claim must contain all the technical features essential to the definition of the invention. (6) Claim 3 is not fully supported by the description as required by A 84, as its scope is broader than justified by the description. The reason the following: although the description mentions the possibility to use a coating comprising germinate glass, it seems clear from the example that the result is achieved using a silicate glass. It is not clear how a coating comprising germinate glass could obviously have the same properties as a coating comprising silicate glass, and no example is provided to support the optical behaviour of such a coating comprising germinate glass.” [3.2] The first substantive communication of the ED dated 4 July 2007 merely referred to the reasons given by the Search Division in the European search opinion and therefore does not contain any further explanations or reasoning concerning these two objections. [3.3] In the impugned decision in point II of the reasons it is stated (differences compared to the reasons given in the European search opinion are in bold; emphasis added by the Board): “II. It is clear from the description on pages 12, 13 16 [sic] that the following features are essential to the definition of the invention: 1913 | 3398
T 1136/10 – One, Two, Three
K’s Law – The ebook
(1) the substrate comprises a superalloy selected from the group consisting of nickel-based, cobalt-based, ironbased and combination thereof, (2) the coating comprises a glass selected from the group consisting of borosilicate glass, lithium silicate glass, potassium germinate glass, barium germinate glass, arsenic germinate glass, and combinations thereof. Since independent claim 1 does not contain these features it does not meet the requirement following from A 84 taken in combination with R 43(1) and (3) that any independent claim must contain all the technical features essential to the definition of the invention.” [3.3.1] Apart from the fact that pages 12 and 13 were not mentioned in the European search opinion they as well as page 16 of the description as originally filed were quoted by the ED as a basis for its objection of the essential features missing in claim 1 without specifying a relevant paragraph or relevant passage therein: Page 12 discusses preferred properties of the coating 110 and describes the effect of incident radiation reflected or absorbed by components “particularly in high stress, high temperature environments such as gas turbine engines”. It is, however, entirely silent with respect to the composition of superalloys or glass materials. Page 13 mentions amongst others that “gas turbine components are typically constructed of high temperature superalloys based on nickel, cobalt, iron or combinations thereof” and that it is desired to avoid precious metals in the coating 110 and that “the use of an optical coating that is transparent at high temperatures will not result in a major increase in reflectivity to incident radiation if the underlying substrate does not have a reflective surface, for example, when ceramic materials are used to form the substrate”. Page 16 concerns the description of the single example of the application relating to an aluminium mirror coated with a layer of sodium silicate glass doped with iron. [3.3.2] Therefore, none of the three quoted pages 12, 13 and 16 supports the allegation of the ED that a) the substrate of the component must be a superalloy selected from the group consisting of nickel-based, cobalt-based, iron-based and combinations thereof; b) the coating comprises a glass selected from the group consisting of borosilicate glass, lithium silicate glass, potassium germinate glass, barium germinate glass, arsenic germinate glass, and combinations thereof, since it is derivable from said quoted pages that the substrate may be a component such as a gas turbine component, that it may be a ceramic material or that it even may be made from aluminium. Further, the coating material according to the single example, namely sodium silicate glass, is not comprised in the aforementioned list b). [3.3.3] The same conclusion holds true when considering the rest of the specification as originally filed from which it can be derived that e.g. “the invention will now be described in greater detail, by way of example, with reference to the drawings …” (see page 4, third paragraph); that “… superalloys are believed to be suitable materials for the present invention;” that “Also ceramic materials may be employed … Such ceramic materials are specifically contemplated for use in the present invention …” (see page 7, fourth paragraph); that “substrate materials are preferably high temperature superalloys based on nickel, cobalt, iron or combinations thereof;” that “The substrate materials are not so limited and may be a ceramic matrix composite (CMC) material, for example.” (see page 10, third paragraph); that “the coating 110 of the present invention is any material that has a transparency to incident radiation that is different at different temperatures” and finally that “Exemplary materials include borosilicate glass … lithium silicate glass … potassium germinate glass, barium gallium germinate glass, and arsenic sulfide glass, by way of example only.” (see page 10, fourth paragraph to page 11, first paragraph). [3.3.4] The Board can only conclude from the application as originally filed that the ED’s objections concerning claim 1 and its missing essential features remain allegations as they are not reasoned since no explanation is given as to why these features should be considered to be essential. [3.4] In the impugned decision in point III of the reasons it is stated: “III. Claim 3 is not fully supported by the description as required by A 84, as its scope is broader than justified by the description. The reason the following: although the description mentions the possibility to use a coating comprising germinate glass, it seems clear from the example that the result is achieved using a silicate glass. It is not clear how a coating comprising germinate glass could obviously have 1914 | 3398
T 1136/10 – One, Two, Three
K’s Law – The ebook
the same properties as a coating comprising silicate glass, and no example is provided to support the optical behaviour of such a coating comprising germinate glass.” [3.4.1] Taking account of the disclosure of the description with respect to the exemplary glass materials for the coating 110 […] it is likewise evident that the objection with respect to claim 3 based on the example using a silicate glass not providing a basis for the claimed germinate glasses also remains an allegation as it is not derivable from the application as originally filed that germinate glasses when applied as said coating are expected to behave significantly different from the silicate glasses. To the contrary, they are mentioned in the description as alternative to each other. In case that the ED was aware of further evidence or documents supporting its allegation then it should have introduced this evidence before issuing the impugned decision. [3.4.2] The impugned decision clearly does not contain anything dealing with the arguments submitted by the appellant in this respect (see point IV above), particularly not as to why they cannot be accepted. Consequently, the impugned decision is also not reasoned in that respect. The Board therefore concludes that the impugned decision falls short of revealing the reasons which led the department of first instance to conclude lack of support for claim 3. [3.5] The Board thus has to establish that the ED, when issuing the impugned decision, did not follow the Guidelines for Examination in the EPO, according to which the reasoning must contain in logical sequence those arguments which justify the order. Furthermore, the reasoning should be complete and independently comprehensible and the reasoning should contain the important facts and arguments which speak against the decision (see the Guidelines, Chapter E-X, 5). The latter means that the decision should address the arguments of the losing party (not in the least to also comply with the right to be heard) and should make sure that it deals sufficiently with the counterarguments put forward and provide reasoned support for what it concludes. The lack of reasoning in the impugned decision is the third substantial procedural violation since it results in the appellant being deprived of any reasoning which it can properly address in appeal and the Board being unable to properly examine the reasons why the ED came to the conclusion of lack of clarity and support. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 390/08 – Not For Laymen
K’s Law – The ebook
T 390/08 – Not For Laymen 8 Sep 2011
The patent proprietor filed an appeal against the decision of the Opposition Division (OD) revoking the opposed patent. Claims 1 and 9 of the application as filed read (my emphasis): 1. Process for the production of a hydrogen rich gas without formation of hydrocarbons comprising water gas shift conversion of a gas containing carbon monoxide and steam at a temperature of between 400°C and 850°C in the presence of a catalyst, which catalyst comprises one or more of the elements Mg, Mn, Al, Zr, La, Ce, Pr, and Nd, being able to form basic oxides, and mixtures thereof. 9. Process according to anyone of the preceding claims, wherein said catalyst further contains alkali metals. Claims 1 and 8 as granted had an almost identical wording. Claim 1 of the main request before the OD read (my emphasis): Process for the production of a hydrogen rich gas without formation of hydrocarbons comprising water gas shift conversion of a gas containing carbon monoxide and steam at a temperature of between 400° and 850°C in the presence of a basic metal oxide catalyst, wherein the metal of said catalyst consists of one or more of the elements Mg, Mn, Al, Zr, La, Ce, Pr and Nd, and mixtures thereof, and said catalyst optionally further contains alkali metals. In its decision, the OD held this claim not to comply with the requirements of A 84, because the feature “the metal of said catalyst consists of one or more of Mg, Mn, Al, Zr, La, Ce, Pr or Nd” – which explicitly excludes other metals – was in contradiction with the further feature that “said catalyst optionally further contains alkali metals”. The OD further held the main, first auxiliary and second auxiliary requests then on file not to comply with the requirement of sufficiency of disclosure (A 100(b)). It argued that the feature “without formation of hydrocarbons”, which was present in claim 1 of all these requests, did not need any interpretation, as it only bore the meaning that no hydrocarbons were formed irrespective of the method which was used to determine their presence. Thus, the skilled person should be able to obtain the desired result – a hydrogen rich gas without hydrocarbons – in a reliable way, irrespective of the method of evaluating the composition of the gas product. In the case at issue, by using the gas chromatography method for evaluating the said gas, the skilled person would not be able to perform the invention “without” formation of hydrocarbons as it could not determine unambiguously whether hydrocarbons were formed or not. The argument that formation of trace amounts of hydrocarbons did not impede the possibility of carrying out the claimed process could not be accepted, because the aim of the patent-in-suit was explicitly to avoid concomitant formation of hydrocarbons. A further lack of clarity on how the process was to be conducted “without formation of hydrocarbons” arose in particular from examples 1 to 4, 12, 13, 16, 20, 21 and 41, which were defined as embodiments according to the invention, but showed formation of methane well above the detection limit of 15 ppm. So, it was not possible on the basis of the examples to determine which process conditions were necessary to produce a hydrogen rich gas without concomitant formation of hydrocarbons. Together with its statement setting out the grounds of appeal, the patent proprietor submitted a main request claim 1 of which read (my emphasis): 1. Process for the production of a hydrogen rich gas without formation of hydrocarbons comprising water gas shift conversion of a gas containing carbon monoxide and steam at a temperature of between 400° and 850°C in the presence of a basic metal oxide catalyst, wherein the metal of said catalyst consists of one or more of the elements Mg, Mn, Al, Zr, La, Ce, Pr and Nd, and mixtures thereof. 1916 | 3398
T 390/08 – Not For Laymen
K’s Law – The ebook
Dependent claim 8 of the same request read (my emphasis): 8. Process according to any one of the preceding claims, wherein said catalyst further contains alkali metals. In preparation to the oral proceedings, the board expressed its provisional opinion that the wording of the above claims appeared not to fulfil the clarity requirement of A 84. The patent proprietor then filed a new main request claim 1 of which read (my emphasis): 1. Process for the production of a hydrogen rich gas without formation of hydrocarbons comprising water gas shift conversion of a gas containing carbon monoxide and steam at a temperature of between 400° and 850°C in the presence of a basic metal oxide catalyst, wherein the metal of said catalyst consists of one or more of the elements Mg, Mn, Al, Zr, La, Ce, Pr and Nd, and mixtures thereof, wherein said catalyst optionally further contains alkali metals. Will this claim – which is almost identical to the claim found unallowable by the OD; the only difference being the replacement of “and” by “wherein” in the last feature – overcome the objections? Main request – Amendments [1] Claim 1 of this request results from the straightforward combination of claims 1 and 9 of the application as filed, and so it meets the requirements of A 123(2). The respondent argued that claim 9 as originally filed defined the catalyst as further containing alkali metals, hence any amendment to include alkali metals should not define the latter as optional but rather as a further definite component. This argument is not accepted by the board, because when a feature is included in a dependent claim, it is conventional in patent law to consider said feature as optional in comparison to the features defining the subject-matter of the independent claim on which said feature depends. Clarity [2] The definition of a composition as “consisting of” compulsory and optional components meets the requirements of A 84, as such a composition defines a “closed” composition from which elements other than those mentioned are excluded (see in particular decisions T 1998/07 [2.1-2] and T 1190/01 [2]). This wording furthermore prevents contradiction between an independent claim and a dependent claim relating to a preferred embodiment including a further element not yet defined in the independent claim (see in this respect T 1998/07 [2.1]). Therefore, claim 1 meets the requirements of clarity of A 84. Sufficiency of disclosure [3.1] According to A 83 and its counterpart in A 100b), the requirement of sufficient disclosure means that an invention shall be disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. [3.2] In the case at issue, the decision to revoke the patent for lack of sufficient disclosure of the invention was exclusively based on the feature “without formation of hydrocarbons” that the OD held as not needing any interpretation, as it only bore the meaning that no hydrocarbons were formed irrespective of the method which was used to determine their presence. [3.3] The board observes that in the absolute it is true that a layman reading claim 1 at issue would literally understand that the result of the process features claimed - namely the “water gas shift conversion of a gas containing carbon monoxide and steam at a temperature of between 400º and 850ºC in the presence of a basic metal oxide catalyst, wherein the metal of said catalyst consists of one or more of the elements Mg, Mn, Al, Zr, La, Ce, Pr and Nd, and mixtures thereof, wherein said catalyst optionally further contains alkali metals” - would be the total absence of hydrocarbon by-products in the hydrogen-rich product gas. However, a patent specification is not aimed at a layman, but at a skilled person with common general knowledge in the technical field concerned. Furthermore, sufficiency of disclosure of a patent is not to be assessed on the basis of the claims alone, but on the patent specification as a whole (see e.g. T 14/83 [3]; T 202/83 [2]). 1917 | 3398
T 390/08 – Not For Laymen
K’s Law – The ebook
[3.4] In the present case, the patent specification (paragraph [0017]) describes the invention as the provision of “a process for producing a hydrogen rich gas by contacting an effluent gas from a steam reforming unit with a basic metal oxide catalyst at high temperatures, preferably from 400°C to 850°C, with significantly less hydrocarbon by-product formation than may be accomplished by contact with a conventional iron-chromium high temperature shift catalyst” (emphasis added by the board). In paragraphs [0021] and [0022], it further explains that “it was surprising that with catalysts comprised by basic oxides of main group metals, rare earth metals or mixtures thereof in crystalline or amorphic form, significant CO-conversion was observed while essentially no hydrocarbons (emphasis added) were formed, […]. One of the most active catalysts was a catalyst comprised by magnesium oxide stabilised with alumina (catalyst B). Even at a very low steam/carbon ratio, no detectable amount of hydrocarbons was formed within 24 hours on stream at 650°C.” [3.5] In summary, the skilled reader of the patent specification is taught that, in comparison to a conventional iron-chromium high-temperature shift catalyst, the catalysts of the alleged invention are supposed to produce a hydrogen rich gas containing “essentially no hydrocarbons”, or even “no detectable amount of hydrocarbons” as regards the “most active catalysts” based on magnesium oxide stabilised with alumina. Hence, the skilled person learns from the description of the patent specification that a broader technically meaningful interpretation is to be given to the expression “without formation of hydrocarbons” than the strict literal interpretation held by the OD. The board further holds the interpretation of the OD that “no hydrocarbons were formed irrespective of the method which was used to determine their presence” as not appropriate, because it is common general knowledge that any measurement method has its technical limits, in particular as regards the detection precision, and that this limit varies from one method to the other. [3.6] The contested patent (paragraph [0031]) further describes the analysis of the product gas, in particular as regards the presence of higher hydrocarbons and CH4, as having been made by gas chromatography using argon as the internal standard. The contested patent (page 5, line 7) also discloses the detection limit of the gas chromatography equipment to be 15 ppm of methane. So, there is no gap of information in the contested patent as regards the measurement method used and the skilled person is clearly and unambiguously informed how the formation of hydrocarbons is to be assessed. [3.7] The contested patent (Table 1; pages 7 to 9) further discloses numerous examples – Experiments 1 to 4, 6 to 19, 30, 32, 34 and 36 to 39, 90 (sic) and 41 – which are in conformity with a technically meaningful interpretation of claim 1 at issue and so provides a “hydrogen rich gas without formation of hydrocarbons”, since the gas produced contains - depending on the catalyst used and the operating conditions - from 0 to 121 ppm methane and no higher hydrocarbons. In comparison, the iron-chromium catalyst - considered as reference in the introductory part of the patent specification - when tested under comparable conditions was assessed to produce a hydrogen rich gas containing 290 ppm CH4 (Experiment 23), i.e. more than twice as much hydrocarbons as the worst catalyst according to the alleged invention. In this context, and owing to the fact that the contested patent thus contains not less than 27 specific embodiments falling under the wording of claim 1 at issue and not less than 14 specific embodiments – Experiments 6 to 11, 14, 15, 17 to 19, 36, 39 and 90 – in which the gas produced was analysed to contain 0 ppm CH4 and no higher hydrocarbons, the contested patent offers sufficient guidance since it describes in detail different ways of carrying out the invention claimed. [3.8] For the above reasons, the board holds that the invention as now claimed, interpreted in a meaningful way, is disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art pursuant to the requirements of A 100(b) together with A 83. The case was then remitted to the OD for further prosecution. I find the clarity part somewhat surprising. For the Board, when the discrepancy between the main claim and the dependent claim is imported within the main claim, the lack of clarity disappears. Interesting. I may be nitpicking, but the claim did not read “… wherein the metal of said catalyst consists of one or more of the elements Mg, Mn, Al, Zr, La, Ce, Pr and Nd, and mixtures thereof, and optionally further alkali metals” as the Board appears to have read.
1918 | 3398
T 390/08 – Not For Laymen
K’s Law – The ebook
Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1919 | 3398
T 648/10 – Let ‘Em In
K’s Law – The ebook
T 648/10 – Let ‘Em In 7 Sep 2011
Over the last months, we have seen that the Boards more and more often rely on Article 12(4) RPBA as legal basis for not admitting new requests. This certainly is a trend to be taken into account by patent proprietors facing opposition proceedings. It is, however, not true that the Boards refuse requests whenever they can. There are situations where they do not invoke Article 12(4) RPBA although they could have done so (and were invited to do so by the opponent), as the present case shows. Here the Opposition Division (OD) had revoked the opposed patent because it found that the ground for opposition under A 100(c) (i.e. A 123(2)) because neither the main claim (rejection of the opposition) nor the nine auxiliary requests on file complied with this provision. The patent proprietor filed an appeal; the statement of grounds of appeal contained the main request as well as the nine auxiliary requests. In its preliminary opinion the Board of appeal pointed out that the characterising feature of claim 1 as granted appeared to violate A 123(2). During the oral proceedings (OPs) before the Board, the patent proprietor withdrew auxiliary requests 2 to 4 and 8 and filed an auxiliary request 10. Opponent 1 argued that the auxiliary requests should not be admitted because:
the appellant had not made clear in the notice of appeal that auxiliary requests were maintained – this had only become clear in the OPs before the Board; and auxiliary request 10 was filed too late; as it could have been filed during the first instance proceedings, it should not be admitted under Article 12(4) RPBA. Moreover, as the request could have been filed at an earlier stage of the appeal proceedings, its filing was tantamount to a tactical abuse.
The Board first examined the patent as granted and found that the ground for opposition under A 100(c) indeed prejudiced its maintenance. It then dealt with the admissibility of the auxiliary requests: [3.1] [Opponent 1] argued that auxiliary requests 1 to 9 should not be admitted into the appeal proceedings. In support he contended that (i) the notice of appeal did not clearly specify which requests were being maintained in appeal proceedings and that (ii) the claims were clearly unallowable because the auxiliary requests did not contain dependent claims and thus the relationship between features of the independent claims and those of dependent claims of the patent as granted was not clear. The arguments of [opponent 1] did not convince the board for the following reasons. Re (i) [3.2] The appellant defended auxiliary requests 1 to 9 in the statement of grounds of appeal. These requests had already been filed and admitted in the first-instance proceedings, and the decision under appeal is based on these requests. The board therefore does not see any reason to hold these requests inadmissible under Article 12(4) RPBA. Rather, given that the conditions of this provision are complied with, under this very provision, the board shall take into account those auxiliary requests that the appellant did not withdraw in the oral proceedings, i.e. auxiliary requests 1, 5, 6, 7 and 9. [3.3] This finding cannot be called into question on the basis of the fact that the appellant’s request in the notice of appeal was limited to maintenance of the patent as granted and it was only in the statement of grounds of appeal that the appellant also defended auxiliary requests 1 to 9. A board may, independently of Article 12 RPBA, decline to admit a request into appeal proceedings in relation to which the admissibility requirements are not met, in particular where sufficient grounds within the meaning of A 108, third sentence, have not been furnished (see T 509/07 [2]). Pursuant to A 108, first sentence, 1920 | 3398
T 648/10 – Let ‘Em In
K’s Law – The ebook
“Notice of appeal shall be filed, in accordance with the Implementing Regulations ...”. Pursuant to A 108, third sentence, “... a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations.” R 99 deals with the content of the notice of appeal and the statement of grounds (see its title). In this respect the board concurs with the view expressed in T 358/08 [5] that R 99 has not altered the previous law as to the requirements of either the notice of appeal or the statement of the grounds of appeal as regards the appellant’s requests. R 99(1)(c) is satisfied if the notice of appeal contains a request, which may be implicit, to set aside the decision in whole or (where appropriate) only in part. Such a request has the effect of “defining the subject of the appeal” within the meaning of R 99(1)(c). Nor is it necessary in the case of an appeal by a proprietor for the notice of appeal to contain a request for maintenance of the patent in any particular form. This is something which relates to “the extent to which [the decision] is to be amended”, and which is therefore a matter for the statement of grounds of appeal under R 99(2). In the case at hand it is clear from the notice of appeal that the decision under appeal should be set aside. Furthermore, from the fact that the appellant defended auxiliary requests 1 to 9 in the statement of grounds, it is equally clear which were the requests on the basis of which the patent should be maintained, i.e. the main request and auxiliary requests 1 to 9. R 99 thus being complied with, there is no basis for the board not to admit any of the residual auxiliary requests 1, 5, 6, 7 and 9 for lack of compliance with A 108, third sentence, in conjunction with R 99. Re (ii) [3.4] As for the arguments by [opponent 1] pertaining to the lack of dependent claims, the board notes that, in the present case, the fact that the dependent claims of the auxiliary requests had not been filed was not decisive for the decision under appeal, which deals with only one of the several grounds for opposition on which the oppositions were based, namely added subject-matter, and more particularly is limited to the issue of added subject-matter in independent claims. Hence the fact that the dependent claims have not been filed is also not decisive for the board’s review of the decision under appeal. In the present case, in view of the appellant’s request that the case be remitted to the first instance, the board considers that presenting complete sets of claims is not a necessary precondition for admitting them and deciding on the limited issue of added subject-matter. The [opponents’] right to be heard is safeguarded in that any objection not dealt with in the decision under appeal and decided by the board can be raised before, and may be dealt with by, the OD within the framework of the oppositions and in the exercise of the division’s discretion. As a consequence, the board sees no basis for refusing admittance of the residual auxiliary requests 1, 5, 6, 7 and 9 into the proceedings on this strand of reasoning by [opponent 1]. Auxiliary request 10 [3.5] Auxiliary request 10 was filed only during the OPs before the board. [Opponent 1’s] argument that, for reasons of procedural economy, the appellant had had an obligation to file auxiliary request 10 in the firstinstance proceedings and therefore auxiliary request 10 should not be admitted on appeal did not convince the board. The board agrees with [opponent 1] that the appellant could have presented this request in the first-instance proceedings because it is a simple combination of claims as granted which do not have the defect which was the ground for revocation of the opposed patent. Article 12(4) RPBA explicitly gives a board of appeal the power not to admit such requests. In the present case, the patent proprietor made an attempt in the OPs before the OD to seek a wording of the independent claims which was acceptable to the OD and submitted auxiliary requests 8 and 9. It is a matter of speculation which decision(s) the OD would have taken if auxiliary request 10 had been filed in the first-instance proceedings, as the patent was opposed on the basis of several grounds for opposition and the opponents presented several chains of arguments referring to a large number of documents. Thus the board sees no reason not to admit auxiliary request 10 on the basis of Article 12(4) RPBA.
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T 648/10 – Let ‘Em In
K’s Law – The ebook
[3.6] This request, however, still faces scrutiny under Article 13(1) RPBA. This is because it was filed only during the OPs before the board. Therefore, it also constitutes an amendment to the appellant’s case, admittance and consideration of which are subject to the board’s discretion pursuant to Article 13(1) RPBA. In this respect the board notes that the appellant defended auxiliary requests 1 to 9 made in the first-instance proceedings in the statement of grounds of appeal to convince the board that the OD was wrong and that the appellant was entitled to a broader scope of claims. It was only when the appellant noticed in the OPs that the board was not convinced by the arguments that he chose a combination of claims as granted as a last chance to overcome the ground for revocation. Claim 1 of auxiliary request 10 is a combination of claims 1 and 2 as granted, and claim 6 of auxiliary request 10 is a combination of claims 7 and 8 as granted. Hence these claims relate to feature combinations which were recognisable as potential fall-back options and do not introduce any new amendment that would need further extensive consideration. Furthermore, these claims 1 and 6 do not have the defect which was the sole ground in the decision under appeal for revoking the patent. Therefore, the subject-matter of these claims is not so complex that a decision on the limited issue of whether or not the decision under appeal should be set aside and the case remitted to the first instance for further prosecution could not have been taken in the OPs before the board. Furthermore, the filing of auxiliary request 10 only during OPs before the board is unlikely to have caused a prolongation of the appeal proceedings, because the appeal proceedings including the board’s decision might have been similar if auxiliary request 10 had already been filed with the statement of grounds of appeal. [3.7] Also, for the reasons given above, in the context of Article 12(4) RPBA […] [opponent 1’s] argument that the late filing of auxiliary request 10 without giving a proper justification constituted a tactical abuse did not convince the board. It is established case law that a patent proprietor has the right to defend his request before the board of appeal and that, under the discretion of the board pursuant to Article 13 RPBA, the appellant may file amendments to his case, in particular amendments which remove deficiencies in response to observations made by the board and which do not introduce new complex subject-matter. In the present case, an earlier filing of auxiliary request 10 in the appeal proceedings would possibly have led to the same decision of the board, so that filing auxiliary request 10 only in OPs did not necessarily improve the appellant’s situation. And in the present case [opponent 1] did not need to respond in detail to the filing of auxiliary request 10 since the board did not take a final decision as to the substantive issues of this request. [3.8] The argument that auxiliary request 10 was not clearly allowable and infringed A 84 EPC 1973 and A 123(2) concerns features which were already present in the claims of the patent as granted and in particular their meaning in the light of the dependent claims which have not been filed […]. However, since the board remits the case to the first instance, this objection as well as any objections against dependent claims may be dealt with by the OD in the exercise of their discretion. In this respect the board had informed the parties with the communication dated 7 February 2011 that the present case might be remitted to the first instance for further prosecution if it came to the conclusion that the decision under appeal was to be set aside. [3.9] In the light of the considerations set out above, the board has admitted auxiliary request 10 into the proceedings pursuant to Article 13(1) RPBA. To download the whole decision, click here. The file wrapper can be found here.
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R 20/10 – Exhausted
K’s Law – The ebook
R 20/10 – Exhausted 6 Sep 2011
The present petition for review concerns a case (decision T 1478/07 of Board 3.3.01 ; see also my post dedicated to this decision) where the opposed patent, which had been maintained in amended form by the Opposition Division (OD) had then been revoked by the Board of appeal. In the first instance proceedings, the OD had raised the ground of opposition under A 100 c) during the oral proceedings (OPs) and rejected the main request (i.e. the request to maintain the patent as granted) on this basis. Before the Board of appeal, the patent proprietor objected to this introduction of a new ground of opposition and took issue with the fact that no prior discussion of the prima facie relevance had taken place before the OD. The Board did not endorse this criticism and pointed out that there was no need for the OD to hear the parties on the prima facie relevance of the introduction of a new ground of opposition. In its petition, the patent proprietor argued inter alia that a violation of the right to be heard had occurred before the OD and that the Board had not remedied this procedural violation. The EBA (EBA) found the petition to be clearly inadmissible: [1] The petition for review of the decision T 1478/07 of Technical Board of Appeal 3.3.01 of 19 February 2010 was filed on 29 November 2010 and thus within two months of the deemed notification of the decision of the board of appeal within the meaning of A 112a(4), second sentence, in conjunction with R 126(2) . The fee for the petition was paid on the same day and, hence, also within the time limit. [2] According to A 112a(4), first sentence, the petition shall be filed in a reasoned statement. Furthermore, R 107(2) stipulates that the petition shall indicate the reasons for setting aside the decision of the board of appeal and the facts and evidence on which the petition is based. According to R 108(1) the EBA shall reject the petition as inadmissible if the petition does not comply with A 112a, paragraph 1, 2 or 4, R 106 or R 107, paragraph 1(b) or 2. [2.1] The mandatory requirement set up in the above-cited provisions that the petition shall be reasoned is not a formality. It is, to the contrary, a very important condition for a petition for review to be admissible. Its function is to ensure that the EBA only has to deal with the kinds of cases for which the right to petition the EBA was instituted. It is crystal clear from the preparatory documents relating to the 2000 that the purpose of creating the possibility of judicial review of decisions of the boards of appeal was to provide for an extraordinary and limited legal remedy for cases in which the proceedings before a board of appeal suffer from an intolerable procedural defect as defined in the EPC, i.e. in A 112a(2) in conjunction with R 104 . The function of the petition for review is not to further the development of EPO procedural practice, generally, or to ensure the uniform application of the law (see Synoptic presentation 1973/2000 - Part 1: The As, OJ EPO 2007, Special edition 4, 126). It follows that procedural defects having occurred in first instance proceedings may not be the subject of a petition for review. Decisions of the first instance are subject to judicial review by the boards of appeal. The examination of an appeal includes the examination of any procedural errors allegedly made by the first instance. Thereafter, a party’s right to a judicial review of first instance proceedings is exhausted. Furthermore, as the EBA has held ever since its first decisions R 1/08 [2.1] and R 2/08 [5, 8.3], the possible grounds for review are exhaustively listed in A 112a(2) in conjunction with R 104 (see likewise e.g. R 10/09 [2.4-5], R 1/11 [2.2]). This means that any other procedural defect in the proceedings before the board of appeal can only be considered to the extent that it at least allegedly results in one of the procedural defects listed in A 112a(2) in conjunction with R 104 (R 2/08 [headnote 1; 8.4]). 1923 | 3398
R 20/10 – Exhausted
K’s Law – The ebook
[2.2] As a consequence of the limited function and potential scope of petition for review proceedings, as defined above, the obligation to file a reasoned statement cannot be construed so narrowly as to mean that any kind of reasoning is sufficient to fulfil this requirement, so long it is only extensive enough. That the petitioner’s submissions are extensive cannot be denied, since they extend over nineteen full pages. Those nineteen pages, it must also be said, however, consist largely in the verbatim reproduction of extracts from decisions of boards of appeal, purportedly confirming the petitioner’s position. In order to justify the EBA examining the merits of a petitioner’s case, the complaints made must provide at least a minimum context with a ground which could potentially constitute a ground for revision of a decision of a board of appeal within the terms of the EPC. This can also be inferred from the fact that R 106 requires as a condition for the admissibility of the petition that an objection under A 112a(2)a)-d) is raised in the proceedings before the board of appeal. [2.3] A potential ground for review has not been raised in the petition. [2.4] The petitioner’s complaint that the OD (as opposed to the board of appeal) violated its right to be heard falls completely outside the ambit of any of the possible grounds for review listed in the EPC. There is no more to be said on that. [2.5] Under the circumstances of the present case as set out below, the same applies to the petitioner’s further argument that the board of appeal erred in its finding that the OD had exercised its discretion in an appropriate manner. Even assuming for the sake of argument that the petitioner was right in this respect, that would not mean that by (wrongly) deciding the legal question concerning the conduct of the proceedings by the OD, the board of appeal had thereby itself violated any of the provisions listed in A 112a(2) in conjunction with R 104, such as in particular its right to be heard. The petitioner itself does not even submit that. On the contrary, according to the petitioner’s own submissions, all the questions relating to the new ground of opposition raised by the OD, i.e. whether the OD should have heard the petitioner on the prima facie relevance of the objection before admitting it into the proceedings, whether the OD exercised its discretion correctly and whether the objections raised against the allowability of the amendment in question were well-founded, were discussed extensively in the proceedings before the board of appeal. There is hence nothing in the petitioner’s submissions that may be regarded as substantiating a ground within the meaning of A 112a(2) in conjunction with R104 , on which, at least potentially, a petition for review could be based, and the petitioner itself has not indicated any of these as forming a legal basis for its petition. On the contrary, the submissions of the petitioner all boil down to saying that the board of appeal should have decided the issue of the OD’s admission of the new ground of opposition differently from how it did. In this respect, the EBA only notes that, the board having decided that the feature in question offended against A 123(2) , it is difficult to imagine how it could nevertheless justifiably have come to the conclusion that in admitting the new ground of opposition into the proceedings the OD exercised its discretion wrongly. As has also been acknowledged in decision R 1/11 [2.2, final sentence] a petition may not be used as a vehicle to review the merits of the decision of a board of appeal, even to the extent that that decision relates to procedural issues, as long as a wrong application of rules of procedure does not result in any of the defects listed in A 112a(2) (a) (d), in conjunction with R 104 . Since this has not been submitted in the petition, for this reason alone it has to be rejected as clearly inadmissible. [3] Furthermore, there is also nothing in the petition for review indicating that during the appeal proceedings the appellant raised the objection of a fundamental procedural violation falling within one of the grounds on which a petition for review can be based being committed by the board of appeal itself if the board was to decide or because it did decide that the OD had exercised its discretion correctly and that, therefore, it would not remit the case to the OD. Nor has the petitioner submitted that it only became aware from the reasons of the decision of the board of appeal that it decided this issue in the way it did. On the contrary, the board had already indicated in its provisional opinion that it was not inclined to follow the petitioner’s interpretation of decisions G 9/91, G 10/91 and T 433/93, as regards the issue of what the OD must discuss with the parties before it may decide to introduce a new ground of opposition into the proceedings. In the oral proceedings before the board, the requests in question were undisputedly also discussed with respect to their compliance with A 123(2) . which implies the board’s position that the OD had exercised its discretion appropriately by admitting the ground of opposition into the proceedings. Hence, the requirements of R106 are not fulfilled either in the present case.
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R 20/10 – Exhausted
K’s Law – The ebook
Accordingly, the petition must be rejected as clearly inadmissible. since pursuant to R108(1) a defect within the meaning of A 112a(4) and R 106 cannot be remedied after the expiry of the period for filing the reasoned petition. Order For these reasons it is unanimously decided that: The petition for review is rejected as clearly inadmissible. To download the whole decision or have a look at the file wrapper, click here.
1925 | 3398
J 21/09 – Passing The Buck
K’s Law – The ebook
J 21/09 – Passing The Buck 5 Sep 2011
The present decision deals with a request for reimbursement of additional search fees. The Examining Division (ED) had pointed out an “a posteriori” lack of unity of the application and had requested the applicant to pay four further search fees. The applicant paid the fees but requested them to be reimbursed. The extended search report dealt with unity and stated that the five inventions were not unitary. The applicant amended the claims but, on August 29, 2008, reiterated its request for reimbursement of the further search fees. A communication pursuant to R 71(3) was issued on February 16, 2009. There was a telephone conversation on February 27, 2009, after which the ED sent a communication announcing the reimbursement of two further search fees. The applicant then requested an appealable decision on the remaining two further search fees. On March 25, 2009, the ED has issued this decision. The decision states that inventions 2 and 4 lacked unity of invention and that the payment of further search fees was appropriate. Inventions 3 and 5 were also said to lack unity but reimbursement of the fees was granted because the search effort was not significant. The applicant filed an appeal and requested reimbursement of the two further search fees and of the appeal fee. In a communication dated August 11, 2009, the EPO told the applicant that technical Board of appeal (TBA) 3.2.03 would deal with the appeal. Later, on March 11, 2010, the applicant was told that the appeal had been transferred to the Legal Board of appeal (LBA). In a communication dated March 23, 2011, the Legal Board expressed doubts as to its competence. It finally referred a question to the Enlarged Board of appeal (EBA), for the reasons given in the decision. The appellant requested the Board to ask the EBA to clarify the applicability of a posteriori objections of lack of unity. However, it did not provide concrete questions to be referred. *** Translation of the German original *** [1] The impugned decision was issued by the ED as an interlocutory decision allowing a separate appeal (A 106(2)). The appellant is adversely affected by this decision (A 107). The appeal complies with the formal requirements and has been filed in due time (A 108). Therefore, the appeal is admissible. Competence of the LBA [2] It is a generally accepted principle for proceedings conducted in accordance with the rule of law (rechtsstaatliche Verfahren) that an instance in charge of reviewing [decisions] (Überprüfungsinstanz) has to check its competence of its own motion, at each stage of the proceedings. [3] It is not prima facie obvious to the Board whether the LBA or rather a TBA should be competent for reviewing the only question that has been decided, i.e. the refusal to refund the further search fees. As a consequence, the LBA considers that it has to examine its competence. [4] The impugned decision does not explicitly mention the applicable provisions of the EPC. However, it appears to be undisputed that, from the procedural (verfahrensrechtlich) point of view, the decision is essentially based on R 64(2).
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J 21/09 – Passing The Buck
K’s Law – The ebook
[5] According to its wording, a decision pursuant to R 64(2) is not a decision concerning the refusal of a European patent application or the grant, limitation or revocation of a European patent within the meaning of A 21(3)(a). In view of the right of the applicant to amend alone, the outcome of the decision concerning the refund of a search fee does not necessarily have a correlation with the outcome of the decision on the grant or the refusal of the application itself. Accordingly, the default rule (Auffangregelung) pursuant to A 23(3)(c) would apply, i.e. by appeals against such decisions the LBA would be competent. [6] However, the Board is concerned that this result might not be justified in view of the whole system of appeal proceedings under the EPC, in particular in view of the role – expressed in A 21 – of the technically qualified members of the Board of appeal in cases where technical questions are to be answered. It appears to be undisputed that a decision under R 64(2), such as the present one, presupposes, as a rule, the assessment of technical facts, i.e. the question of whether there is unity of invention for the claimed inventions. The appellant is right in pointing out that the wording of the criteria for unity in R 44(1) clearly is directed to the technical content of the features, so that a statement on unity presupposes the decision-making body to carry out a detailed and technically competent discussion of the technical facts. [7] The TBA have this technical competence that is needed in each concerned domain. On the one hand, the important role of the technically qualified members already follows from the wording of the law, i.e. from the rules governing the composition [of the Boards] pursuant to A 21 (two or three technically qualified members vs. one or two legally qualified members). On the other hand, there is no doubt concerning the intention of the lawmaker to entrust decisions on cases comprising technical questions to Boards having a majority of technically qualified members. This intention is a recurrent theme in the travaux préparatoires for the EPC 1973, as is the intention that according to A 21(3)(c), the LBA should only deal with cases that concern only legal questions. See, for instance, document n° 4344/IV/63-D […] as well as proposition n° 2821/IV/63 of Kurt Haertel […]. [8] Decisions under R 64(2) may be expected to be rare and appeals against them to be even more rare. Not only are such decisions to be taken by the ED but, according to the wording of the provision, “during the examination of the European patent application”. It is true that the origin of this wording is to be found in the conscious decision of the lawmaker that the question of unity and, consequently, of a possible refund of further search fees that have been paid is not to be decided during the search but during the examining proceedings, and not by the International Patent Institute in The Hague, which, at that time, was still envisaged for carrying out the search, and which has become the Search Division of the EPO later on (see document IV/4860/61-D1 […]). However, this legal provision also shows that the lawmaker has wanted a decision on a refund of search fees to be part of the main proceedings, i.e. the examination proceedings, ending with the decision on the grant or the refusal of the application, rather than independent proceedings. [9] Moreover, it has to be pointed out that the lawmaker apparently never considered a decision pursuant to R 64(2) (R 46(2) EPC 1973) to be an autonomous decision. At least the Board is not aware of any sources allowing to draw the opposite conclusion. The only reference to R 64(2) in the Guidelines (A XI 10.2.2, edition 2007, or the latest online version to be found here) does not make any statement on this topic either. [10] Even if the decision of the refund of a further search fee does not necessarily depend on the fate of the application and is not a question to be decided in view of the grant or the refusal, as a rule, there is still a close connection with the technical content of the examining proceedings because, and as far as, the request to refund paid search fees is related to the objection of lack of unity that had been raised during the examining proceedings an contested or overcome by the applicant. As a rule, the ED’s refusal to refund paid further search fees presupposes that it first establishes that the objection raised (lack of unity) was justified. Therefore, in view of its content, the decision on the refund of search fees appears to be an ancillary decision (Nebenentscheidung) within the examining proceedings with respect to the main subject of the examining proceedings, i.e. the factual decision on the application. [11] This understanding is not altered if the decision on both points is taken in two autonomous decisions that are formally separated, either for practical reasons, for instance, as a result of subsequent procedural acts to be carried out by the granting body, or as a consequence of the timing of the request by the applicant. Considering contents in this way, it could be argued that when there are two formally autonomous decisions relating to the main and ancillary aspects of the examining proceedings, it is the Board that would be competent for the main proceedings, i.e. a technical Board pursuant to A 21(3)(a) (or A 21(3)(b), as the case may be), and in particular the Board that is competent in the specific technical domain of the application, that would be competent for reviewing a decision concerning this auxiliary request. [12] In a nutshell, the decision pursuant to R 64(2) could be considered to be an “ancillary issue (Nebensache) ex lege” with respect to the decision on grant or refusal, respectively. 1927 | 3398
J 21/09 – Passing The Buck
K’s Law – The ebook
[13] By comparison, in the cases in which there is no doubt that the LBA is competent, in a composition pursuant to A 21(3)(c), as a rule, the legal questions can be treated independently of the technical assessment of the subject-matter of the application. [14] The case law concerning the present competence problem is both scarce and, to some extent, divided. The Board is aware of four decisions of the Boards where this question arose. In decisions T 94/91 and T 390/91 the TBA have tacitly assumed their competence without discussing the problem of competence. In later decisions J 24/96 [2] and T 1382/08 [1.1], however, the question is discussed in detail and answered by stating that the allocation pursuant to A 21(3)(c) unambiguously provides that the LBA is competent. This being said, in T 1382/08 [1.2-4] the TBA finally affirmed its competence because in this case the decision on the refusal to refund the search fee was only an ancillary decision with respect to the refusal of the application by the first instance. [15] For the time being, the Board is of the opinion that it would be arbitrary to decide differently on the competence of the TBA or the LBA, depending on whether the ED had taken the decision on the application (refusal or grant) and the decision on the refund of the search fee in one single decision (then only annexed; the TBA is competent) or in two formally separated decisions. This would also result in, for instance, the first instance being able to determine the composition of the review body, see G 2/90 [2]. [16] In its decision G 3/03 [4-5] the EBA has decided that it is the TBA and not the LBA that is competent for deciding on a request for reimbursement of the appeal fee that has been transferred to the Boards after interlocutory revision had been granted because the request for reimbursement was an ancillary issue of the original appeal. Therefore, the board which would have been competent under A 21 to deal with the substantive issues of the appeal if no interlocutory revision had been granted was competent to decide on the request. [17] The Board is of the opinion that the facts of the present case are not a priori incomparable. In the same way the request for reimbursement of the appeal fee presupposes the prior filing of an appeal, the request to have the search fee refunded presupposes that there has been an objection of lack of unity during the examination proceedings. In both cases the critical issues underlying, on the one hand, the filing of an appeal or a decision of refusal, respectively, or preceding a decision to grant, or, on the other hand, the request for reimbursement of the appeal fee or the request to refund a search fee, respectively, are not necessarily the same. In both cases the decisions on the reimbursement of fees are decisions which presuppose that the main proceedings have been terminated, which appears to imply an “ancillary character” of the proceedings. [18] For these reasons, the Board hesitates to follow the interpretation of decision J 24/96 according to which the LBA is competent. [19] It is true that the EBA, in its decision G 2/90 [3.2,4], has explained that whenever the decision of an ED consisting of less than four members relates to some matter other than the refusal of a European patent application or the grant of a European patent, it is the LBA and not the TBA that is competent. Moreover, according to this decision, it is inadmissible to interpret an unambiguous legal provision (in that case: concerning the exclusive competence of the TBA) as being invested with some other meaning merely because other conceivable arrangements might offer certain advantages. [20] However, it should be noted that this referral was based on a decision of the formalities officer of the Opposition Division (OD) to revoke the patent (because a fee for the maintenance of the patent in amended form had not been paid). The EBA (in point [3.2] of the Reasons) first points out that in contrast to appeals against the decision of an ED, where the law establishes the competence of the LBA, there is no such a competence for appeals against decisions of the OD. Moreover, the EBA found it to be decisive that matters entrusted to formalities officers may only be matters involving no technical or legal difficulties, so that there were no reasons why the LBA should be competent for such appeal proceedings (point [3.6] of the Reasons). In other words, the EBA has indeed examined whether the deciding Board had the required knowledge. [21] It is precisely for that reason that the composition of a TBA always comprises at least one legally qualified member, so that it is ensured that the Board has the required legal expertise for assessing legal questions. Accordingly, the EBA did not have to discuss that each TBA has the necessary legal expertise which may be expected from a Court, and that the legal regulation of competence has to ensure that all questions – i.e. also the legal questions – are assessed in a satisfying way. [22] The situation is not comparable when the LBA, which consists of jurists only, has to decide on the substantial justification of an objection of lack of unity when dealing with a request to refund the search fee. 1928 | 3398
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Such a decision can concern complex technical facts in all technological domains. Contrary to the LBA (if it is assumed to be competent) each of the TBA is competent for a limited technological domains and its members are technically qualified in the specific technological domain. In order to ensure a correct decision by the LBA, it could be necessary in extreme cases to consult an external expert. Certain national legal systems use this approach for a technical assessment of the facts. However, as a rule, this [approach] would appear to be disproportionate with respect to the value of the object of the appeal. [23] In view of these remarks, and the considerations of the lawmaker regarding the search fee, it could also be necessary to consider whether there might be a legal loophole regarding the competence for appeals against isolated decisions of the ED refusing to refund the search fee. It could be that the lawmaker when drafting the provisions concerning the composition of Boards of appeal in A 21 did not envisage the possibility of a case having such a configuration because, as far as the actions of the Search Division (which requests the payment of further search fees) as such the issuing of appealable decisions is not foreseen at all. [24] The Board is of the opinion that the above cited decisions create legal insecurity that should be eliminated. According to the Board, eliminating legal insecurity concerning the competence of a Board of appeal also qualifies as a point of law of fundamental importance. Clear and unambiguous rules as to the competence of a judicial body that is to review decisions is one of the fundamental requirements for due process and the efficient functioning of any judicial review system (J 12/01 [4]). Therefore, the EBA has repeatedly confirmed the admissibility of referrals [of questions] concerning the competence of Boards of appeal. This is why the Board decides to refer the question concerning the competence of the LBA pursuant to A 112(1)(a), as defined in the order of this decision, to the EBA. [25] Irrespective of their unclear formulation, the further questions raised by the appellant in its response to the communication of the Board, which may arise in the appeal proceedings, are not relevant for the question of competence. The question concerning the requirements for raising an objection of lack of novelty “a posteriori” is closely related to the proper object of the appeal, i.e. the assessment of the existence or absence of a sufficient technical relationship between the group of inventions as established. If the EBA were to find that the LBA is not competent for dealing with appeals of the present kind, the LBA could not answer any question relating to the object of the appeal. For this reason alone, the requirements for a referral by the LBA are not fulfilled because the answer to the referral would not be required for a decision by the Board (A 112(1)(a), first sentence. Order For these reasons it is decided that: The following question is referred to the EBA: Is it the TBA or the LBA that is competent for deciding on an appeal against a decision of the ED not to refund search fees pursuant to R 64(2) which has not been taken together with a decision on the grant of a European patent or the refusal of a European patent application? Should you wish to download the whole decision or have a look at the file wrapper, just click here. The referral is pending before the EBA under the reference G 1/11. A better English translation should become available in the OJ EPO in due time. A French summary of the case can be found on Le blog du droit européen des brevets.
1929 | 3398
T 477/09 – Another One Bites The Dust
K’s Law – The ebook
T 477/09 – Another One Bites The Dust 3 Sep 2011
Here is another textbook example of a disclaimer that does not fulfil the requirements established in G 1/03. The patent proprietor filed an appeal against the decision of the Opposition Division to revoke the opposed patent. The Board found the (main) request I to lack novelty over document D1 (prior art under A 54(3)(4)), and auxiliary requests II and III not to comply with A 123(2). In what follows, the Board examines auxiliary request IV. Claim 1 of this request read (the difference with respect to the main request is underlined): Dental composition comprising: (1) at least one crosslinkable and/or polymerizable silicone oligomer or polymer which is liquid at room temperature or which is heat-meltable at a temperature of less than 100°C, and which comprises: • at least one unit of formula (FS):
in which: o
a = 0,1 or 2, R0, identical or different, represents an alkyl, cycloalkyl, aryl, vinyl, hydrogeno or alkoxy radical, preferably a C1-C6 lower alkyl,
o
Z, identical or different, is an organic substituent comprising at least one reactive epoxy, and/or alkenyl ether and/or oxetane and/or dioxolane and/or carbonate functional group,
• and at least two silicon atoms. (2) at least one aromatic hydrocarbon photosensitizer with one or more aromatic nuclei which are substituted or not, having a residual light absorption of between 200 and 500 nm, (3) at least one dental filler present in a proportion of at least 10% by weight relative to the total weight of the composition, (4) and an effective quantity of at least one borate-type photoinitiator, chosen from those of formula:
in which the cationic entity of the borate is selected from: o
the onium salts of formula (I):
in which formula:
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A represents an element of groups 15 to 17 such as for example: I, S, Se, P or N, R1 represents a carbocyclic or heterocyclic C6-C20 aryl radical, it being possible for said heterocyclic radical to contain, as heteroelements, nitrogen or sulphur, R2 represents R1 or a linear or branched C1-C30 alkyl or alkenyl radical; said radicals R1 and R2 being optionally substituted with a C1-C25 alkoxy, C1-C25 alkyl, nitro, chloro, bromo, cyano, carboxyl, ester or mercapto group, n is an integer ranging from 1 to v + 1, v being the valency of the element A, m is an integer ranging from 0 to v - 1 with n + m = v + 1,
o
the organometallic salts of formula (III):
in which formula:
M represents a group 4 to 10 metal, in particular iron, manganese, chromium or cobalt, L1 represents 1 ligand bound to the metal M by π electrons, which ligand is chosen from the ligands η3-alkyl, η5-cyclopendadienyl and η7-cycloheptratrienyl and the η6-aromatic compounds chosen from the optionally substituted η6-benzene ligands and the compounds having from 2 to 4 condensed rings, each ring being capable of contributing to the valency layer of the metal M by 3 to 8 π electrons; L2 represents a ligand bound to the metal M by π electrons, which ligand is chosen from the ligands η7-cycloheptratrienyl and the η6aromatic compounds chosen from the optionally substituted ligands η6-benzene and the compounds having from 2 to 4 condensed rings, each ring being capable of contributing to the valency layer of the metal M by 6 or 7 π electrons; L3 represents from O to 3 ligands, which are identical or different, linked to the metal M by σ electrons, which ligand(s) is (are) chosen from CO and NO2+; the total electron charge q of the complex to which L1, L2 and L3 contribute and the ionic charge of the metal M being positive and equal to 1 or 2;
the anionic borate entity of which has the formula
in which: o o
a and b are integers ranging, for a, from 0 to 3 and, for b, from 1 to 4 with a + b = 4, the symbols X represent: a halogen atom (chlorine, fluorine) with a = 0 to 3, an OH functional group with a = 0 to 2, the symbols R are identical or different and represent: a phenyl radical substituted with at least one electronattracting group such as for example OCF3, CF3, NO2, CN, and/or with at least 2 halogen atoms (fluorine most particularly), this being when the cationic entity is an onium of an element of groups 15 to 17, a phenyl radical substituted with at least one element or one electron-attracting group, in particular a halogen atom (fluorine most particularly), CF3, OCF3, NO2, CN, this being when the cationic entity is an organometallic complex of an element of groups 4 to 10, an aryl radical containing at least two aromatic nuclei such as for example biphenyl, naphthyl, optionally substituted 1931 | 3398
T 477/09 – Another One Bites The Dust
K’s Law – The ebook
with at least one electron-attracting group or element, in particular a halogen atom, including fluorine in particular, OCF3, CF3, NO2, CN, regardless of the cationic entity; and which does not comprise the compound ethyl-4-dimethylaminobenzoate. The Board finds this disclaimer not to be allowable: *** Translation of the French original **** [5.1] Claim 1 has been modified by adding a negative feature or disclaimer in order to restore novelty over document D1. [5.2] The admissibility of disclaimers and the situations in which they may be used have been discussed in decisions G 1/03 and G 2/03 of the Enlarged Board of appeal (EBA). [5.3] The disclaimer of auxiliary request IV is intended to excise from the claimed subject-matter any dental composition according to the claims of the impugned patent containing EDAB. It is undisputed that this disclaimer has no support in the application as filed. However, an amendment to a claim by the introduction of a disclaimer may not be refused under A 123(2) for this reason alone (see G 1/03 [headnote 1]). [5.4] The EBA has, therefore, established that a disclaimer was allowable in order to restore novelty by delimiting a claim against state of the art under A 54(3) and (4) (see G 1/03 [headnote 2.1, first line]). As has already been said, D1 complies with this requirement. [5.5] Decision G 1/03 also gives two conditions to be observed when drafting disclaimers. On the one hand, “a claim containing a disclaimer must meet the requirements of clarity and conciseness of A 84” (see G 1/03 [headnote 2.4] and [3]). On the other hand, “a disclaimer should not remove more than is necessary […] to restore novelty […]” (see G 1/03 [headnote 2.2] and [3]). [5.5.1] The second paragraph of G 1/03 [3] states “However, the only justification for the disclaimer is to exclude a novelty-destroying disclosure […]. The necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily. Therefore, the disclaimer should not remove more than is necessary to restore novelty […].” These passages, therefore, establish that the two conditions set out in headnotes 2.2 and 2.4 of G 1/03 have the same value. Consequently, it is not possible to consider that the patent proprietor has any room for manoeuvre when drafting the disclaimer and, as a consequence, when defining its scope: in order to satisfy the requirements established by G 1/03, a disclaimer must not excise more than is needed for restoring novelty. [5.5.2] It has been established before that examples 14 and 16 of D1 destroyed the novelty of claim 1 of the patent under consideration. [5.5.3] The [opponent] has submitted that the novelty of claim 1 was destroyed by the disclosure in D1 of other compounds that may be used as an alternative to EDAB, e.g. in paragraph [0025]. However, only a dental composition comprising the specific combination of compounds (1) to (4) as defined in claim 1 of the impugned patent can destroy the novelty of said claim 1. The [opponent] has not identified the passages of D1 which, apart from examples 14 and 16, disclosed such a combination. However, the features of claim 1 are disclosed in the following passages of D1:
a silicone according to feature (1) of the impugned patent has to be chosen among the set of compounds according to D1 containing epoxy groups and/or oxetane groups, as defined in claims 8 to 10 and paragraphs [0017] to [0019], respectively. It has to be noted that only a minority of those compounds comprises at least one (FS) unit and at least two silicon atoms, according to feature (1); a compound according to feature (2) of claim 1 of the impugned patent has to be chosen among all the [aromatic amines] defined in claims 1 and 5 to 7 or in paragraphs [0024] and [0025] of D1;
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T 477/09 – Another One Bites The Dust
K’s Law – The ebook
a dental filler according to feature (3) of claim 1 of the impugned patent must be used whereas such a filler is optional in D1 and, when it is present, it can be used in a proportion of less than 10% by weight relative to the total weight of the composition (cf. claim 1); a diaryliodonium according to feature (4) of claim 1 of the impugned patent has to be chosen among a great number of compounds defined in claim 3 or in paragraphs [0012] to [0015] of D1.
Therefore, although all the features (1) to (4) of claim 1 of the impugned patent are disclosed as such in the claims and/or the description of D1, their specific combination is not disclosed directly and unambiguously. Nor does D1 disclose, directly and unambiguously, to replace the EDAB in examples 14 and 16 of D1 by an appropriate compound chosen among those disclosed, e.g. in paragraph [0025] of D1. As a consequence, the claims and/or the description of D1 do not disclose an embodiment that would destroy the novelty of claim 1 of the impugned patent. Therefore, only examples 14 and 16 of D1 destroy the novelty of claim 1 of the impugned patent and can, as a consequence, be disclaimed. [5.5.4] In particular, examples 14 and 16 of D1 are limited to:
a compound of particular silicones wherein only compound [1,3,5,7-tetrakis(2,1-ethandiyl-3,4epoxycyclohexyl)-1,3,5,7-tetramethylcyclotetrasiloxane] corresponds to the definition of compound (1) of present claim 1; one single specific dental filler (quartz) as compound (3); one single specific photoinitiator, (4-methylphenyl)(4-isopropylphenyl) iodoniumtetrakis (pentafluorophenyl) borate, as compound (4) of claim 1; compositions mandatorily comprising campherquinone.
However, the disclaimer introduced by the [patent proprietor] is not limited to such compositions and also excises compositions comprising
any silicone according to compound (1); any dental filler (3); any photoinitiator (4), in particular photoinitiators the cationic entity of which is an organometallic salt of formula (III), which are not disclosed in D1.
It also excises compositions that do not contain campherquinone from the subject-matter of claim 1. [5.5.5] It is manifest that the scope of the disclaimer is much broader than the novelty-destructive disclosure of D1. Therefore, the requirement laid down in G 1/03 [headnote 2.2] and [3] is not complied with and the disclaimer if auxiliary request IV is not admissible. As a consequence, auxiliary request IV is dismissed. To download the whole decision (in French), click here. The file wrapper can be found here.
1933 | 3398
G 2/10 – Test The Rest
K’s Law – The ebook
G 2/10 – Test The Rest 2 Sep 2011
In its interlocutory decision T 1068/07 of 25 June 2010, Board 3.3.08 referred the following question to the Enlarged Board of Appeal (EBA): Does a disclaimer infringe A 123(2) if its subject-matter was disclosed as an embodiment of the invention in the application as filed? Now this is not an easy one. What did the EBA have to say? Well, we have got the answer yesterday. Enjoy! Admissibility of the referral [1] In decision G 1/07 [4.2.3] the EBA pointed out that it was aware that, subsequent to decisions G 1/03 and G 2/03 different opinions have been expressed in the jurisprudence of the boards of appeal on whether decisions G 1/03 and G 2/03 relate to the disclaiming of embodiments which are disclosed as part of the invention in the application as filed or whether in that situation the jurisprudence as previously established following decision T 4/80 continues to apply. Reference was made by the EBA to decision T 1107/06 [31. et seq.], and the decisions cited therein. In spite of the somewhat broad wording of the referred question, which asks generally whether disclaiming an embodiment disclosed in the application as filed as an embodiment of the invention infringes A 123(2), it is to be understood from points [15] and [16] of the referring decision that the referral was made mainly, if not exclusively, in order that the divergence of views identified in decisions T 1107/06 and G 1/07 could be clarified. There is, furthermore, a divergence of views in the jurisprudence of the boards of appeal not only with regard to the question of what the EBA actually decided in decision G 1/03 but also with respect to the question of what the right solution to the question ought to be. Is it the application of the criteria set out in decision G 1/03 or should the relevant test be whether the subject-matter remaining in the claim after the introduction of the disclaimer was disclosed in the application as filed, as was held in decision T 1107/06? This question is indisputably also a point of law of fundamental importance within the meaning of A 112(1) and, since the question of compliance with A 123(2) is normally examined before substantive examination, the referral is admissible (see G 1/03 [1.2]). The construction of the referred question Disclaimer infringing A 123(2)? [2.1] The referring Board has asked whether a disclaimer infringes A 123(2) if its subject-matter was disclosed as an embodiment of the invention in the application as filed. However, since A 123(2) deals with amendments and since the disclaimer as such defines subject-matter that is not claimed, the question is construed as intended to ask whether an amendment to a claim by the introduction of a disclaimer infringes A 123(2) if the subjectmatter of the disclaimer was disclosed as an embodiment of the invention in the application as filed. The term “disclaimer” [2.2] In decision G 1/03 [2] the EBA gave a definition of the term “disclaimer”, which states that in accordance with consistent practice, the term “disclaimer” is used in the decision as meaning an amendment to a claim resulting in the incorporation therein of a “negative” technical feature, typically excluding from a general feature specific embodiments or areas. This is the understanding of the term “disclaimer” on which the present decision is also based. The term “embodiment” 1934 | 3398
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K’s Law – The ebook
[2.3] The referring Board has drafted the question of the infringement of A 123(2) on the basis that the disclaimed subject-matter is an “embodiment” of the invention. The term “embodiment” is commonly used to define a specific combination of features or a specific mode of carrying out the invention, by contrast to a more abstract definition of features which can be carried out in more than one way. As regards disclaimers, it is, however, not generally so that only one specific embodiment is excluded from protection. On the contrary, disclaimers are often defined in much broader terms. The disclaimers then - at least potentially - exclude a plurality of embodiments, a whole (sub)group thereof or a whole, even if limited, area falling within the ambit of a generic claim. In this respect, the EBA notes that e.g. in claim 1 of auxiliary request III all catalytic molecules are excluded from protection which show site-specific intermolecular catalytic cleavage of the substrate corresponding to a defined portion of sequence ID number 135 under defined conditions. The main problem of the compatibility of disclosed disclaimers with A 123(2) does not lie in one specific “embodiment” of an invention being disclaimed from a broad generic claim. Rather, it arises in those cases in which a whole area or subclass is disclaimed. It is cases of this kind that have given rise to doubts whether, after the introduction of such a broad disclaimer, the subject-matter remaining in the claim is still the same as that formerly claimed, and have prompted the idea that, when the requirements of A 123(2) are examined, the nature of the subject-matter remaining in the claim must be assessed. It appears immediately evident that the nature of the question differs according to whether only one specific embodiment is disclaimed from a generally drafted claim, or whether, on the other hand, a whole subgroup or area is disclaimed. In decision G 1/03 [2.1.3], the EBA defines the possible contents of a disclaimer in a much broader sense than by referring to the exclusion of an embodiment. In the context of explaining why, for the purpose of delimiting the claimed-subject matter with respect to a conflicting application, a disclaimer is not in contradiction to A 123(2), the EBA speaks very generally of “an invention comprising “different specific embodiments or groups thereof” having been disclosed in the application as filed, a “part of which” is excluded from the requested protection. There is no definition of a degree of narrowness required from the part to be excluded in order to be the potential subject-matter of a disclaimer. This explains the broad wording of answer 1 in decision G 1/03, which does not use a narrow term such as “embodiment”. Instead, it answers the referred question generally, with respect to “subject-matter” excluded by the disclaimer, in correspondence to the terminology used in question 1 of referring decision T 507/99. For these reasons, the use of the term “embodiment” in the referred question cannot be a reason for construing the question too narrowly. All - and in particular the critical - uses of disclaimers, i.e. disclaimers excluding whole (sub)groups of embodiments or areas from the claimed subject-matter need to be considered in order to deal with the referred question in an appropriate way. As a consequence, the EBA holds that the term “embodiment” in the referred question should be understood as addressing the issue of disclaiming “subjectmatter”. This term will figure in the EBA’s answer. Did G 1/03 decide the issue of disclaimers disclaiming subject-matter disclosed in the application as filed? [3] In the decisions of technical boards of appeal cited in decision T 1107/06 [42], the expression “disclaimer which is not disclosed in the application as filed” in answer 2 of decision G 1/03 has been read as meaning that the criteria set out in answer 2 were meant to apply to all cases in which the disclaimer as such was not disclosed in the application as filed and hence also to cases in which, albeit the disclaimer not being disclosed as such, its subject-matter was disclosed in the application as filed. Such a reading of decision G 1/03 is incorrect, for the following reasons: [3.1] It is particularly clear from question 1 of the first referring decision, T 507/99 [Headnote], that that referral was only directed to the situation in which neither the disclaimer nor the subject-matter excluded by it from the scope of the claim has a basis in the application as filed. Question 1 sets out this condition explicitly, the referring Board having ascertained in point [3] of the Reasons that in the case under consideration neither the disclaimers as such nor the excluded subject-matter had been disclosed in the application as filed. The second referring decision, T 451/99, uses the term “disclaimer not supported by the application as filed” in the first referred question, but it is clear, in particular from points [4] and [24] of the Reasons, that by using this
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K’s Law – The ebook
term the referring Board was - also - addressing a situation in which neither the disclaimer as such nor the excluded subject-matter was disclosed in the application as filed. [3.2] In spite of some differences in wording, in both referring decisions the further questions asking the EBA to define the criteria to be applied in assessing the admissibility of a disclaimer, refer back to the respective first question put. In both decisions, the further questions were put to the EBA only for the event that the EBA did not answer question 1 by saying that an amendment to a claim by the introduction of a disclaimer is unallowable under A 123(2) for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim has a basis in the application as filed (i.e. is supported by the application as filed, in the terminology of T 451/99). [3.3] The EBA’s answers follow exactly the structure of the referred questions. They start by giving the basic principle in answer 1. It is expressly stated therein that the answer relates to the case in which neither the disclaimer nor the subject-matter excluded by it from the scope of the claim has a basis in the application as filed. Answer 2 and its sub-answers then address the further referred questions and define in more detail the criteria to be applied for assessing the allowability of such a disclaimer. In this respect also following the structure of the referred questions, answer 1 is, however, only drafted in negative terms by giving the reason for which an amendment may not be refused under A 123(2) (i.e. not for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim has a basis in the application as filed). It is, hence, clear that answer 1 only partly dealt with the referred questions and that further answers were required to settle them. In such a situation, where an answer completes another answer in order to settle the questions posed, the questions all being defined by a particular set of circumstances (here the fact that neither the disclaimer nor the subject-matter excluded by it has a basis in the application as filed), such further answer cannot be taken out of context or read in isolation. Just as for the further referred questions (see in this respect in particular decision T 507/99), answer 2 refers back to and further elucidates the criteria to be applied in the context of the basic answer given in answer 1. When read in the context of answer 1, it appears that the term “disclaimer which is not disclosed in the application as filed” used in answer 2 is the term linking this answer to answer 1. It may be that this passage of answer 2 could have been worded by repeating verbatim the corresponding formulation in answer 1. However, it can nevertheless be deduced clearly from the above-described structure of the answers - which corresponds to the structure of the referred questions - that the EBA’s answer to subsidiary question 2 refers to the situation addressed in answer 1, i.e. to the situation in which neither the disclaimer nor the subject-matter excluded by it have a basis in the application as filed. In the Reasons of decision G 1/03 that situation is later referred to by the use of the term “undisclosed disclaimer” (see e.g. [2.1] of the Reasons), and in the present case the same terminology will be used. Hence, the controversial passage in answer 2 cannot be read to mean that the EBA intended to decide that a case not addressed by the referred questions, i.e. the situation in which the subject-matter excluded by the disclaimer is disclosed in the application as filed, was a case to which the criteria set up in answer 2 were to be applied. [3.4] In the absence of indications to the contrary, it can be presumed that the EBA would have clearly stated so if it had intended to give answer 2 a meaning going beyond the scope of the questions posed. Nor is there anything in the further text of decision G 1/03 which indicates that the EBA envisaged that the requirements for the allowability of disclaimers, as set out in answer 2, should apply to the disclaiming of subject-matter disclosed in the application as filed. [3.5] G 1/03 [2.5] does not support the conclusion drawn from that passage by the technical board in decision T 1050/99 [6] and [7.(d)], that G 1/03 also relates to disclaimers for disclosed subject-matter. In G 1/03 [2.5] the EBA generally addresses the question as to whether, if a claim comprises non-working embodiments, such embodiments may be disclaimed. It is nowhere mentioned that, although the object of the said decision was disclaimers for subject-matter which was not disclosed in the application as filed, the discussion in point [2.5] of the Reasons relates to the situation in which the non-working embodiments are disclosed in the application as filed. The fact that the two decisions cited by the EBA in this context, i.e. T 170/87 [8.4] and T 313/86, referred to in decision T 170/87, addressed the question of disclaimers in the absence of disclosure of the subject-matter to be excluded in the application as filed, also points away from the interpretation of that passage in the sense advocated in decision T 1050/99. [3.6] Furthermore, as the appellant’s representative has pointed out, the requirement laid down by the EBA in G 1/03 [3] for drafting a disclaimer, i.e. that “the disclaimer should not remove more than is necessary to restore novelty …” is not suitable for the disclaiming of disclosed subject-matter, since in that case the wording of the 1936 | 3398
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disclaimer must be configured in accordance with the disclosure of the disclaimed subject-matter in the application as filed. [3.7] In G 1/03 [2], the EBA explains why it uses the term “undisclosed” disclaimer instead of the term “unsupported” disclaimer, which had been used in referring decision T 451/99 for the situation in which neither the disclaimer as such nor the disclaimed embodiments were disclosed in the application as filed. As is apparent from the EBA’s explanations, the only reason for the change in terminology adopted by it was to avoid any confusion between the requirements of A 123(2) and those of A 84, which uses the term “supported”. [3.8] For the EBA it is furthermore an important element in arriving at this conclusion that national decisions have taken the same stance and read decision G 1/03 in the same way (“Napp Pharmaceutical Holdings Ltd v. Ratiopharm GmbH and Sandoz Ltd”, Court of Appeal (England and Wales), [2009] EWCA Civ 252, point 82. et seq. of the Reasons, with reference to T 1139/00; “Mundipharma Pharmaceuticals B.V. v. Sandoz B.V.”, District Court of The Hague of 7 April 2010, case no. 340373/09-2029, point 4.11 et seq. of the Reasons). This has been made particularly explicit in the above cited decision of the District Court of the Hague, in which the Court sets out in a very comprehensive and convincing reasoning, which is analogous to the EBA’s reasoning in the present decision, why it comes to the conclusion that decision G 1/03 only relates to the situations in which “neither for the disclaimer nor for the subject-matter of the disclaimer (i.e. that which is excluded) a basis can be found in the original application” (loc.cit., translation into English on file). [3.9] To conclude, it cannot be said that answer 2 of decision G 1/03 relates to the disclaiming of subject-matter disclosed as part of the invention in the application as filed. Does an amendment to a claim by the introduction of a disclaimer disclaiming subject-matter disclosed in the application as filed infringe A 123(2)? The scope of the referred question [4.1] In point [15] of the Reasons of the referring decision the referring Board defines the purpose of the referral as being to clarify the controversial issue of whether the conditions set out in decision G 1/03 apply to the disclaiming of disclosed subject-matter or whether the relevant test should be whether the subject-matter remaining in the claim after the introduction of the disclaimer is disclosed in the application as filed […]. It is clear, however, that when considering and deciding the referred question, which has been drafted in a broader manner, the EBA cannot in any way be confined to deciding only on these two opposed alternative interpretations adopted by the boards of appeal. On the contrary, even though the EBA will consider what has been said on the matter in prior decisions, it is the EBA’s role to define of its own motion the criteria determining when disclaiming disclosed subject-matter must be considered to infringe A 123(2). The text of A 123(2) [4.2] A 123(2) reads: “(2) The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.” The basic principle underlying A 123(2), in the jurisprudence of the Enlarged Board [4.3] The importance and the applicability, without exception, of A 123(2) was underlined in the jurisprudence of the EBA as early as in its opinion G 3/89 and decision G 11/91, relating to amendments by way of correction. From these rulings it follows that any amendment to the parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in A 123(2) and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed, points [1], [1.3] and [3] of the Reasons. These findings were in principle confirmed in decision G 1/93 [answer 1, first sentence] with respect to the ground of opposition under A 100(c) and, on a more general level, in decision G 2/98, dealing with the requirement of the “same invention” under A 87(1). In that decision the EBA also relied on a disclosure test for determining whether the later application is for the same invention as the priority application and made explicit reference to the disclosure test applied under A 123(2) (answer, see also point [1] and [9] of the Reasons).
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In decision G 1/93, concerned with the relationship between paragraphs 2 and 3 of A 123 in the situation of the patentee being caught in a so-called “inescapable trap”, the EBA stated with respect to the argument advanced of there being a mutual relationship between paragraphs 2 and 3 of A 123, the one to be applied as primary and the other as subsidiary depending on the facts of the individual case: “This interpretation is not in line with the mandatory character of A 123(2), as explained by the EBA in its opinion in case G 3/89 (OJ EPO 1993, 117)” (point [13] of the Reasons). In decision G 1/93 [16] the EBA however conceded that, where an undisclosed limiting feature - without providing a technical contribution to the subject-matter of the claimed invention - merely excludes protection for part of the subject-matter of the claimed invention as covered by the application as filed, the adding of such a feature cannot reasonably be considered to give any unwarranted advantage to the applicant and is, on a proper interpretation of A 123(2), therefore not to be considered as subject-matter extending beyond the content of the application as filed within the meaning of that provision. It is, however, evident from the context of these findings that by introducing the “technical contribution” criterion the EBA did not intend to amend the definition concerning when an amendment is allowable under A 123(2) generally, but that it only sought a way of avoiding the potentially fatal consequences of the patentee being caught in the “inescapable trap” between the requirements of paragraphs (2) and (3) of A 123 (see point [13] of the Reasons). Although the general principle expressed in that decision, namely that the purpose of A 123(2) is to avoid the applicant obtaining an unwarranted advantage by means of an amendment, is often cited and has also been relied on in later decisions of the EBA as being the purpose underlying A 123(2), such later decisions have also made clear that the issue in question in decision G 1/93 related to the conflicting requirements of A 123(2) and (3) and “hence, dealt with a completely different legal situation”. This is how the EBA put it in its decision G 2/98 [10], in which decision the disclosure test of G 3/89 was applied to the concept of the same invention. Decision G 1/03 [2, penultimate paragraph], also starts from the premise that decision G 1/93 was concerned with the relationship between paragraphs (2) and (3) of A 123. After having addressed the conflict identified in decision T 323/97 between decisions G 1/93 and G 2/98 with respect to the question of whether it matters that an added feature provides a technical contribution to the claimed subject-matter, the EBA refrains from taking any position but ends by saying: “The question answered in T 323/97 in the negative is examined below in relation to the different situations arising in the present proceedings” (point [2, last paragraph]). It can thus be stated that neither decision G 1/93 nor decision G 1/03 intended to modify the general definition of the requirements of A 123(2) established in opinion G 3/89 and decision G 11/91, which definition has become the generally accepted, one could also say the “gold” standard, for assessing any amendment for its compliance with A 123(2). Therefore that definition also applies to the kind of cases underlying the present referral. Is it to be derived from G 1/03 that the introduction of a disclaimer disclaiming disclosed subject-matter cannot a priori modify the subject-matter remaining in the claim and that it is therefore always allowable? [4.4] Certain passages in this decision could be and indeed have been interpreted as expressing the EBA’s position that introducing a disclaimer could a priori not change the technical information in the application and therefore not modify the subject-matter remaining in the claim. The decision [4.4.1] In point [2.1.3] of the Reasons the EBA states after a detailed discussion of the legal history of A 54(3) (whole contents vs. prior claim approach) with respect to the question of a potential change of the content of technical information in the application by the introduction of a disclaimer: “For the interpretation of A 123(2), it may be concluded from the foregoing […] that the purpose of a disclaimer excluding a conflicting application is merely to take account of the fact that different applicants are entitled to patents in respect of different aspects of inventive subject-matter and not to change the given technical teaching. The disclaimer splits the invention as a whole in two parts: […] Such a disclaimer, only excluding subject-matter for legal reasons, is required to give effect to A 54(3) and has no bearing on the technical information in the application. It is, therefore, not in contradiction to A 123(2). […] An invention comprising different specific embodiments or groups thereof has been disclosed in the application as filed, a part of which is excluded from the requested protection, i.e. no longer claimed. The remaining subjectmatter is not modified by the disclaimer. […]” 1938 | 3398
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In point [2.2.1]} of the Reasons the EBA then states : “The concept of accidental anticipation is akin to the situation of conflicting applications already discussed, starting from the premise that only novelty is at stake. In the case of an accidental anticipation, the exclusion of the unrelated state of the art is likewise not intended to contribute to the inventive merit of the technical teaching given.” Meaning of that jurisprudence [4.4.2] In order to assess correctly the statements cited in the foregoing, the context in which they were made as well as some further findings in this decision must be considered. The context is first that in a preceding passage, in point [2], second paragraph of the Reasons, the EBA had already dealt with and refuted the argument that a disclaimer is a mere voluntary restriction by which the applicant abandons part of the claimed subject-matter and that, therefore, the disclaimer per se is not a technical feature of the claim, cannot violate A 123(2) and should always be allowed. The EBA replied by stating that any amendment to a claim is presumed to have a technical meaning, otherwise it would be useless to have it in the claim. Hence, it appears that the proposition that disclaiming subject-matter could per se not change the content of technical information in the application and could therefore per se not violate A 123(2), was not endorsed by the EBA. As a consequence, it appears that the purpose of the example given in point [2.1.3] of the Reasons of an invention comprising different specific embodiments or groups thereof disclosed in the application as filed, a part of which is excluded from the requested protection, must be understood as giving a typical example in which the disclaimer does not normally change the teaching of the subject-matter remaining in the claim and does not normally add information. It cannot be read as meaning that the EBA wished to establish the principle that an amendment to a claim by the introduction of a disclaimer disclaiming a disclosed embodiment could per se not modify the subject-matter remaining in the claim and could therefore never violate A 123(2). This is corroborated by the EBA’s findings in points [2.5.2] and [2.6.5] of the Reasons. In point [2.6.2] the EBA speaks of “the principle that an undisclosed limitation has to be a mere disclaimer in the above sense” to be allowable. What is meant thereby is then further explained in point 2.6.5 of the Reasons, in which the EBA states: “[2.6.5] It results from the foregoing that a disclaimer may serve exclusively the purpose for which it is intended and nothing more. In the case of a disclaimer concerning conflicting applications, its purpose is to establish novelty with respect to a prior application in the sense of A 54(3). In the case of a disclaimer concerning state of the art under A 54(2), its purpose is to establish novelty vis-a-vis an accidental anticipation as defined in this decision. Finally, a disclaimer excluding subject-matter not eligible for patent protection may only serve the purpose of removing such specific legal obstacle. If a disclaimer has effects which go beyond its purpose as stated above, it is or becomes inadmissible.” It is true that these findings, in particular the last cited sentence, are only embedded in the reasons for the decision and have not found their direct entrance into answer 2 in the order, setting out the criteria to be applied for assessing the allowability of an undisclosed disclaimer. That does not mean, however, that the above-cited findings were not made purposefully and need not be taken as meaning what is stated therein. The gist of the questions referred to the EBA in cases G 1/03 and G 2/03, on which the EBA had to give an answer, was to establish whether and, if so, under which circumstances undisclosed disclaimers could be considered allowable at all, as a matter of principle, despite the absence of a basis in the application as filed. It is this question and no more the EBA has answered in answer 2. The wording the EBA chose in the starting line of answer 2, reading “a disclaimer may be allowable” indicates that with the criteria set up in answer 2 the EBA did indeed not intend to give a complete definition of when a disclaimer violates A 123(2) and when it does not. It is in this sense that the teaching of decision G 1/03 has also been interpreted first in decision T 1139/00 and then in the above-cited national decisions, also with respect to disclaimers for disclosed subject-matter. In decision T 1139/00, the Board, after having stated in point [2.5] of the Reasons that the subject-matter excluded by the disclaimer in question is supported by the application as filed, gives an extensive technical reasoning in points [3] and [4] (bearing the heading “A 123(2)”) of the Reasons as to why the introduction of the disclaimer only limits the scope of protection “without providing any technical contribution to the invention as claimed” (point [3.1] of the Reasons), and why it only “leaves a more limited group” (point [4.1] of the Reasons,
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at the end). Thus, the Board did not consider A 123(2) as being automatically fulfilled as a consequence of the limitation having been performed by a disclaimer for disclosed subject-matter. In the decision handed down by the Court of Appeal of England and Wales cited above Jacob LJ states in point [82] of the Reasons, making reference to decision T 1139/00: “G 1/03 does not set up any further or more extensive rule than the basic rule that an undisclosed disclaimer is permissible as not adding matter provided it is a “mere disclaimer”.” In point [83] of the Reasons he then goes on, again with reference to decision T 1139/00: “So this TBA has held that G 1/03 is confined to novelty restoring or exclusion of unpatentable subject-matter disclaimers. It went on, rightly in our view, to address the real question: was there added subject-matter?” And, in point [85] of the Reasons, by referring to the appealed decision: “Floyd J was entirely right when he said: [122] Nevertheless, the test for added subject matter remains that set out in the Convention and the Act […].” In the decision of the District Court of the Hague the Court also expressly endorses the finding in decision T 1139/00 that “the allowability of a “disclosed” disclaimer must be tested against A 123 paragraph 2 of the EPC” and that it is “conceivable that the technical teaching of the patent changes if subject matter is excluded, which subject matter had initially been included in positive terms […]” (points [4.14] and [4.15] of the Reasons). The criteria to be applied The disclosure test [4.5.1] It is thus in accordance with the above-cited jurisprudence of the EBA and the national decisions that the principle that any amendment to an application or a patent, and in particular to a claim, must fulfil the requirements of A 123(2) also applies to an amendment limiting the claim by disclaiming disclosed subjectmatter. Therefore, as is the case for any other amendment, the test for an amendment to a claim by disclaiming subjectmatter disclosed as part of the invention in the application as filed must be that after the amendment the skilled person may not be presented with new technical information. Hence, disclaiming subject-matter disclosed in the application as filed can also infringe A 123(2) if it results in the skilled person being presented with technical information which he would not derive directly and unambiguously, using common general knowledge, from the application as filed. How is the original disclosure of the claimed subject-matter to be determined with respect to a claim amended by the introduction of a disclaimer ? [4.5.2] The critical question is how the original disclosure of the claimed subject-matter is to be determined in the case of the introduction into a claim of a disclaimer disclaiming disclosed subject-matter. If a positive feature, which defines subject-matter that is actually claimed, is introduced into a claim, it can be examined whether the subject-matter of that feature was disclosed in the application as filed. With respect to the new combination of features which is claimed after the introduction of that feature, it can be examined whether that combination was disclosed in the application as filed. By contrast, the technical subject-matter defined in the disclaimer does not make the disclaimed subject-matter as such a part of the definition of the claimed invention. A disclaimer does not as such define a feature of the claimed invention. It is just the opposite. It defines something that is not claimed. Hence, when it comes to determining whether, after the introduction of the disclaimer, the claim infringes A 123(2) or whether it is in conformity with it, this cannot be decided solely by establishing that the disclaimed subject-matter is disclosed in the application as filed. Whether the skilled person is presented with new information depends on how he or she would understand the amended claim, i.e. the subject-matter remaining in the amended claim and on whether, using common general knowledge, he or she would regard that subject-matter as at least implicitly disclosed in the application as filed. That statement corresponds to the definition given in A 123(2). Transposed to the presently discussed issue of an amendment to a claim, A 123(2) would read: 1940 | 3398
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“The claim may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.” Hence, it follows from the wording of A 123(2) itself that the point of reference for assessing an amended claim for its compatibility with A 123(2) is the subject-matter which the claim contains after the amendment. In other words, it is the subject-matter remaining in the claim after the amendment. Rules of logic [4.5.3] Whether that subject-matter was originally disclosed or not cannot be decided by following so-called rules of logic, in the sense that if an application discloses a general teaching and specific embodiments, groups thereof or areas, then all other potential embodiments, groups thereof or areas falling within the ambit of the general teaching (but not as such disclosed in the application as filed) would thereby, by implication, inevitably also be disclosed. In this context it was also submitted that the disclosure of an embodiment or smaller region (B) within a broader region (A), likewise disclosed, would thereby logically and inevitably disclose the subject-matter of the broader region minus the embodiment (A-B) and that a claim containing such a disclaimer would for that reason not contain subject-matter offending against A 123(2). Even if it may be said that there is not normally a problem with the original disclosure for the remaining subjectmatter when originally disclosed specific embodiments, groups thereof or areas are disclaimed from the scope of a more general claim reflecting a more general teaching which has equally been disclosed, the question can nevertheless not be decided schematically. In particular, no principle can be acknowledged, which would be applicable a priori, to the effect that disclaiming disclosed specific embodiments, groups thereof or areas from a broader claim can never infringe A 123(2). Also, no so-called rule of logic applies, in the sense that where an application discloses a general teaching and specific embodiments, groups thereof or areas, all other potential embodiments or intermediate generalisations falling within the ambit of the general teaching (but not as such disclosed in the application as filed) would thereby, by implication, inevitably also be disclosed. On the other hand, any schematic reasoning solely suggesting that the introduction of the disclaimer modifies the subject-matter remaining in the claim because that amended claim contains less than the unamended claim, would also not be sufficient to motivate an objection under A 123(2). Need for technical assessment of the case under consideration [4.5.4] Instead, what is required is an assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after the amendment. The test to be applied is whether the skilled person would, using common general knowledge, regard the remaining claimed subject-matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed. This test is the same as that applied when the allowability of a limitation of a claim by a positively defined feature is to be determined. In this respect a whole body of jurisprudence exists, in particular with respect to cases in which the limitation could lead to the singling out of compounds or sub-classes of compounds or other so-called intermediate generalisations not specifically mentioned nor implicitly disclosed in the application as filed (see Case Law of the Boards of Appeal of the EPO, sixth edition, July 2010, III.A.l. and 2.). The principles of that jurisprudence can and must be applied in the same manner to amendments of claims by disclaiming disclosed specific embodiments, groups thereof or areas as they apply to limitations performed by positively defined features. Where, for instance, as was said in decision G 1/03 [2.1.3], in the application as filed an invention has been disclosed and claimed in general terms and different specific embodiments or groups thereof have also been disclosed, and one of these is later excluded from the requested protection by the disclaimer, the remaining 1941 | 3398
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subject-matter, i.e. the remaining general teaching, will normally not be modified by the disclaimer. This contrasts with the situation in which, for instance, the disclaimer would have the effect of confining the subjectmatter remaining in the claim to a subgroup of the originally claimed subject-matter, which subgroup could not be regarded as disclosed in the application as filed, even taking into account what the skilled person, using common general knowledge, would regard as implicit in the contents of the application as filed. In this case the amendment would contravene A 123(2). By analogy with decision T 615/95, there would be added matter where the insertion of a disclaimer into a claim would result in singling out any hitherto not specifically mentioned or at least implicitly disclosed individual compound or group of compounds, or would lead to a particular meaning of the remaining claimed subjectmatter which was not originally disclosed. The relevance of the fact that the disclaimed subject-matter is disclosed as part of the invention [4.5.5] Decision T 1102/00 and other decisions following the same approach have put forward as a reason for not allowing the disclaiming of subject-matter disclosed in the application as filed that that subject-matter was not presented in the application as filed as subject-matter to be excluded from protection, but on the contrary as part of the invention. That line of reasoning does not hold good. It is in principle for the applicant to determine the scope of protection he desires by the manner in which he drafts his claims. There is no provision in the EPC which would oblige an applicant to seek, in the individual application under consideration, a protection corresponding to the broadest possibility offered by the disclosure of the application. Nor is there an obligation to draft claims in such a way as to include the preferred embodiment in their scope. To amend a claim in a way excluding disclosed subject-matter from it, in particular when by disclaiming a preferred embodiment, is at the applicant’s risk because it is clear that when it comes to determining whether the amended claim fulfils the remaining requirements of the EPC, such as support by the description (A 84), sufficiency of disclosure (A 83) and inventive step (A 56), the disclaimed subject-matter cannot be taken into account. In respect of inventive step the questions as to whether the problem has been solved over the whole breadth of the claim or whether an advantageous effect obtained by the remaining claimed subject-matter can be deduced from the application as filed may in particular become relevant. With this proviso, i.e. subject to the claimed subject-matter fulfilling the requirements of the EPC, the applicant is free, i.e. he is entitled, not to claim protection for an embodiment or even a part of the disclosed invention. The applicant may, for example, be interested in obtaining a first quicker protection for a preferred embodiment and pursue the general teaching in a divisional application. Whether or not and, if so, under what circumstances, in such a case a disclaimer would be necessary in order to avoid the so-called prohibition on double protection is a different matter. It is sufficient to say that such procedural behaviour is not abusive and even legitimate. The amici curiae also mentioned other possible reasons not related to the requirements for patentability for splitting an application up into different applications for different embodiments, for instance for licensing purposes. Taking it to the extreme, if the idea were correct that a disclosed embodiment of the invention could not be disclaimed because it was presented in the application as part of the invention, then as a result no limiting amendment of a claim would be possible at all, since even in the case of a limitation by positively defined features the situation is that through this limitation something is excluded from the claim which was previously presented as being part of the invention. If by contrast, an embodiment is presented in the application as filed as not being part of the invention, but e.g. as belonging to the state of the art or as a comparative example, then it cannot be claimed at all. To conclude, no convincing reason has been advanced for not applying the principles developed in the context of A 123(2) for the assessment of amendments to claims by the introduction of positive limiting features in the same manner to limitations of claims by disclaimers which disclaim subject-matter disclosed in the application as filed. Coherence of the approach with other issues relating to disc1osure [4.6] Such an approach does not distort, but rather preserves, the structural relationship established in the EPC, based on the first-to-file system, between the provisions defining the state of the art and their impact on patentability, the substantive requirements for validly claiming a priority (concept of same invention) or for the filing of divisional applications and for the right to amend the application. It is vital that a uniform concept of disclosure is applied in all these respects and that the rights of an applicant are uniformly determined in all these contexts as extending to but at the same time as being limited to the disclosure made at the relevant point in time.
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This was emphasised in decision G 2/98 [9], in which, in the context of determining the right to priority derivable from an application, the EBA endorsed a narrow or strict interpretation of the concept of “the same invention”, limiting the right to priority to subject-matter which the person skilled in the art can derive directly and unambiguously, using common general knowledge, from the previous application as a whole. In that decision the EBA also emphasised that any concept other than making the entitlement to priority dependent on the disclosure of the priority document could undermine patent protection for selection inventions, and held: “Hence, such priority claims should not be acknowledged if the selection inventions in question are considered “novel” according to these criteria” (point [8.4] of the Reasons). The same must apply to any amendment of an application under A 123(2). It may not create novel subjectmatter. The importance of applying a uniform concept of disclosure was again confirmed in decision G 1/03 [2.2.2], where the EBA emphasised that “the European Patent System must be consistent and the concept of disclosure must be the same for the purposes of A 54, A 87 and A 123”. Accordingly, it appears that the approach, as adopted here with regard to the requirements to be met in order for amendments by the introduction of disclaimers for disclosed subject-matter to be allowable under A 123(2) does not lead to an unjustified result as compared with any of the above mentioned matters. Nor does this approach impair an applicant’s right under A 76(1) to divide the application and split its subjectmatter up into different applications, since according to A 76(1), second sentence, that right is in any case limited to the subject-matter which can be regarded as being disclosed in the earlier (the parent) application as filed (the “root” application in case of a sequence of divisional applications, see decisions G 1/05 and G 1/06). Therefore, if the subject-matter of a claim in a divisional application, in which an embodiment disclosed in the parent application is disclaimed, cannot be regarded as at least implicitly disclosed in the parent (or root application in the case of a sequence of divisional applications), because the disclaimer has the effect of confining the subjectmatter remaining claimed in the divisional application to something which cannot be regarded as disclosed in the parent or root (as the case may be) application as filed, then there is no right to file a divisional application in respect of that subject-matter. The same considerations govern the entitlement to the priority of an earlier application claimed in a later application in which a disclaimer is introduced disclaiming subject-matter disclosed in the priority application. Finally, the same also applies under A 61(1)(b) if the entitled person files a new application and the original application must be confined to the subject-matter to which the original applicant remains entitled, As with any amendment, such an amendment is also subject to the requirements of A 123(2). This means that where a limitation of the original application is made by introducing a disclaimer, this is only allowable to the extent that the subject-matter remaining in the claim after such limitation can be regarded as disclosed in the application as filed. The president’s suggestion [4.7] The President has suggested […] that where the subject-matter remaining in the claim is not directly and unambiguously derivable from the application as filed, the criteria established in decision G 1/03 should be applied regarding the allowability of the disclaimer. The EBA fails to see any justification for adopting such an approach. As can be derived from the EBA’s position developed in the foregoing, in accordance with the principles developed in the above cited earlier rulings of the EBA, the overriding principle for any amendment to be allowable under A 123(2) is that the subject-matter of an amended claim must be at least implicitly disclosed to the skilled person, using common general knowledge, in the application as filed. As has also been set out in the foregoing that applies equally to the subject-matter of a claim the scope of which is determined by a disclaimer. Where this requirement is not fulfilled in the individual case under consideration because the effect of the disclaimer is to limit the claim to subject-matter, such as a subgroup, an intermediate generalisation or else, which cannot be regarded as disclosed in the application as filed, then there is no justification for granting a patent on such a claim. As has also been set out previously, any other view would undermine the legal system of the EPC based on the first-to-file principle and in particular the patentability of selection inventions. In the oral proceedings before the EBA the representative of the President explained why the additional application of the criteria established in answer 2 of decision G 1/03 to the allowability of a disclaimer for 1943 | 3398
G 2/10 – Test The Rest
K’s Law – The ebook
disclosed subject-matter not having passed the remaining subject-matter test under A 123(2) had been suggested. This was because otherwise, in the case of a state of the art according to A 54(3), an applicant disclaiming disclosed subject-matter could be in a worse position than an applicant disclaiming subject-matter for which there was no disclosure in his application. This was so since according to decision G 1/03 in the latter case the applicant did not have to show that the subject-matter remaining in the claim after the introduction of the disclaimer was also disclosed as such in the application as filed. The EBA does not hold this discrepancy to exist. It does not interpret decision G 1/03 to have intended, in its answer 2, to exhaustively determine the conditions under which, if fulfilled, an amendment by introduction of an undisclosed disclaimer was to be regarded as allowable under A 123(2) under all circumstances. As has already been set out in point [4.4.2] above, the gist of the questions referred to the EBA in cases G 1/03 and G 2/03, to which the EBA had to give an answer, was to establish whether and, if so, under which circumstances undisclosed disclaimers could be considered allowable at all, as a matter of principle, despite the absence of a basis in the application as filed. It is this question and no more the EBA has answered in answer 2. The wording the EBA chose in the starting line of answer 2, reading “a disclaimer may be allowable”, indicates that with the criteria set up in answer 2 the EBA did indeed not intend to give a complete definition of when an undisclosed disclaimer violates A 123(2) and when it does not. Hence, in that decision it was not decided that, the requirements of answer 2 being fulfilled, an undisclosed disclaimer would be always allowable under A 123(2). For these reasons it is decided that: The question referred to the EBA is answered as follows: 1a. An amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter disclosed in the application as filed infringes A 123(2) if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed. 1b. Determining whether or not that is the case requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after the amendment. To download the whole decision, click here. Laurent Tessèdre has given a nice summary (in French) here.
1944 | 3398
T 2299/08 – Right Method, Wrong Problem
K’s Law – The ebook
T 2299/08 – Right Method, Wrong Problem 1 Sep 2011
The applicant filed an appeal against the decision of the Examining Division (ED) to refuse its application. The Board found the main and the first and second auxiliary requests to lack novelty over document D1. It then dealt with the third auxiliary request, claim 1 of which read: 1. A method for bleaching and colouring human or animal hair comprising applying to the hair a hair bleaching and colouring composition comprising: (a) an oxidising agent; (b) an oxidative hair colouring agent, wherein said oxidative hair colouring agent comprises an oxidative hair colouring agent selected from the group consisting of N,N bis(2hydroxyethyl)-p-phenylenediamine, 2-amino-3-hydroxypyridine, 4-amino-2-hydroxytoluene, 2methylresorcinol, m-aminophenol, and 1-napthol; and (c) ammonium carbonate and/or ammonium carbamate; and wherein the pH of the composition is from about 7 to about 9, and wherein said composition is applied to the hair between 5 minutes and 30 minutes. Novelty (A 54) [6] Document D1 discloses a method for colouring hair comprising applying to the hair a colouring composition having a pH of about 7 to about 9 and comprising an oxidising agent, an oxidative hair colouring agent, in particular m-aminophenol and 1-napthol, and ammonium carbonate. Document D1 further discloses that the composition is applied to the hair during sufficient time to assure substantial dyeing […], but does not disclose any precise application time, let alone an application time comprised between 5 minutes and 30 minutes. Consequently, the subject-matter of claim 1 is novel over document D1. Inventive step (A 56) [7] According to the established jurisprudence of the Boards of Appeal it is necessary, in order to assess inventive step, to establish the closest state of the art, to determine in the light thereof the technical problem which the invention addresses and successfully solves, and to examine the obviousness of the claimed solution to this problem in view of the state of the art. This “problem-solution approach” ensures the assessment of inventive step on an objective basis. Closest prior art [7.1] Document D1 relates to oxidative hair colouring compositions and method for colouring hair and describes all the technical features required by the method according to claim 1 with the exception of the indication of a particular application time of the colouring composition on the hair […]. Consequently, the Board considers, in agreement with the ED that the disclosure of document D1 specified above represents the closest state of the art, and, hence, takes it as the starting point in the assessment of inventive step. The [applicant] considered, however, that the closest prior art would rather be the general knowledge of the person skilled in the art relating to conventional oxidative hair colorations carried out with an oxidation system, comprising ammonium hydroxide and hydrogen peroxide at pH 10, this system being by far the most used. However, the closest prior art is represented by a prior art document disclosing subject-matter conceived for the same purpose as the claimed invention and additionally having the most relevant technical features in common. 1945 | 3398
T 2299/08 – Right Method, Wrong Problem
K’s Law – The ebook
In the present case, a method for colouring hair using an oxidation system comprising ammonium hydroxide and hydrogen peroxide at pH 10, the purported general knowledge of the skilled person, differs from the claimed method by the oxidation system which is involved, whereas the claimed method for colouring hair falls within the ambit of the disclosure of document D1. The Board concludes therefore that a method for colouring hair using the ammonium hydroxide/hydrogen peroxide system is further away from the claimed method than the method for colouring hair disclosed in document D1. This argument of the [applicant] must thus be rejected. Technical problem underlying the application [7.2] The [applicant] submitted that the technical problem underlying the application consisted in finding dyes which lead to a different coloration in an ammonium carbonate and/or ammonium carbamate system than that obtained in the ammonium hydroxide system. However, the subject-matter of claim 1 which, following the problem-solution approach, should represent the solution to this technical problem, relates to a method for bleaching and colouring hair characterized by a particular application time of the colouring composition. Hence, the proposed solution is not a solution to the problem identified by the [applicant]. The [applicant] argued that the problem-solution approach was not appropriate in the present case. The feature establishing novelty with respect to document D1 was the period of time of 5 to 30 minutes during which the colouring composition is applied to the hair. However, the inventive step resided in the selection of hair colouring agents which were more sensitive to a system comprising ammonium carbonate than to a system comprising ammonium hydroxide. This increased sensitivity was demonstrated by the filed data of the comparative tests. Document D1, on the other hand, failed to distinguish such carbonate-sensitive hair colouring agents from carbonate-insensitive hair colouring agent. This argument does not, however, put into question the applicability of the problem-solution approach to the present case, it merely shows that the [applicant] defined a technical problem which is not in agreement with the claimed subject-matter. In fact, the technical problem defined by the [applicant], i.e. finding particular colouring agents having specific properties cannot logically have as a solution a method of colouring hair with known colouring compositions characterized by the length of time they are applied to the hair. With regard to the comparative tests on which the Applicant relied, the comparison with the closest state of the art must be such that the purported effect is convincingly shown to have its origin in the distinguishing feature of the invention (see T 197/86 [6.1.2-3]). In the present case, the experimental report filed with the letter of 20 October 2008 compared the colorations of compositions differing from each other by the presence of ammonium carbonate instead of ammonium hydroxide. However, the claimed method is characterised in that the colouring composition is applied to the hair for a length of time from 5 to 30 minutes, the presence of ammonium carbonate as required by present claim 1 being already disclosed in the closest prior art […]. Accordingly, this test report does not concern the impact of the essential technical feature distinguishing the claimed composition from the closest prior art […], i.e. that the composition is applied to the hair for a length of time from 5 to 30 minutes. Hence, the comparison provided by this test does not adequately demonstrate any effect linked to the feature distinguishing the claimed subject-matter from the closest prior art. In the absence of any demonstrated effect with respect to methods disclosed in document D1 the technical problem underlying the application is to be reformulated into the provision of a further method for colouring hair. Solution [7.3] The proposed solution is the method according to claim 1 characterised in that the colouring composition is applied to the hair for between 5 and 30 minutes. Obviousness [7.4] At the oral proceedings before the Board the [applicant] submitted that the introduction into claim 1 of the range of time during which the composition is applied was only intended to establish novelty with respect to the method disclosed in document D1, which merely required sufficient time to colour the hair without further 1946 | 3398
T 2299/08 – Right Method, Wrong Problem
K’s Law – The ebook
precision. Therefore, since the claimed range of time of from 5 to 30 minutes is not linked to any surprising technical effect, it must be considered as an arbitrary limitation for which no inventive step can be acknowledged. As a result, claim 1 of auxiliary request 3 is not allowable since its subject-matter lacks an inventive step pursuant to A 56. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1947 | 3398
T 1710/09 – Taking A Can For A Must
K’s Law – The ebook
T 1710/09 – Taking A Can For A Must 31 Aug 2011
T 12/81 has made the following statement on selection inventions : [12] A substance selection can come about in various ways, e.g. if an unmentioned compound or group of compounds having a formula covered by the state of the art is found, in the absence of any information as to the starting substance or substances. The present subjectmatter does not involve a selection of that kind in an area which, although marked out by the state of the art, is nonetheless virgin territory. [13] However, the disclosure by description in a cited document of the starting substance as well as the reaction process is always prejudicial to novelty because those data unalterably establish the end product. If on the other hand two classes of starting substances are required to prepare the end products and examples of individual entities in each class are given in two lists of some length, then a substance resulting from the reaction of a specific pair from the two lists can nevertheless be regarded for patent purposes as a selection and hence as new. (my emphasis) There is some disagreement between the Boards on the interpretation of the verb “can” here. Some time ago, we have seen T 783/09 where Board 3.3.04 stated: [5.6] However, given the term “can” in the citation from decision T 12/81, the absence of a direct and unambiguous disclosure for individualised subject-matter is not a mandatory consequence of its presentation as elements of lists. Thus, the “disclosure status” of subjectmatter individualised from lists has to be determined according to the circumstances of each specific case by ultimately answering the question whether or not the skilled person would clearly and unambiguously derive the subject-matter at issue from the document as a whole […]. In the present decision, Board 3.3.02 comments this approach. The patent proprietor had filed an appeal after the Opposition Division had revoked the opposed patent (17 oppositions had been filed!) Claim 1 of the requests on file read: Main request (amendments with respect to claim 1 as granted underlined): Use of alendronate in the manufacture of a medicament for treating osteoporosis in a human in need of such treatment, where said medicament is orally administered to said human in the form of a tablet as a unit dosage comprising about 70 mg of the alendronate compound, on an alendronic acid active weight basis, according to a continuous schedule having a once-weekly dosing interval. First auxiliary request (amendments with respect to claim 1 of the main request underlined): Use of alendronate monosodium trihydrate in the manufacture of a medicament for treating osteoporosis in a human in need of such treatment, where said medicament is orally administered to said human in the form of a tablet as a unit dosage comprising about 70 mg of [deleted: the] alendronate monosodium trihydrate [deleted: compound], on an alendronic acid active weight basis, according to a continuous schedule having a once-weekly dosing interval. Second auxiliary request (amendments with respect to claim 1 of the first auxiliary request underlined): Use of alendronate monosodium trihydrate in the manufacture of a medicament for treating osteoporosis in a human in need of such treatment, where said medicament is orally administered to said human in the form of a tablet as a unit dosage comprising about 70 mg of alendronate monosodium trihydrate, on an alendronic acid active weight basis, according to a continuous schedule for at least one year and having a once-weekly dosing interval.
1948 | 3398
T 1710/09 – Taking A Can For A Must
K’s Law – The ebook
Main request; A 76(1) [3.1] This claim 1 relates to the
use of alendronate … for treating osteoporosis … orally administered … in the form of a tablet as a unit dosage comprising about 70 mg of the alendronate compound …… according to a continuous schedule having a once-weekly dosing interval.
[3.2] A combination of claims 6, 7 and 8 as originally filed in the earlier application provides for a combination of these features with the exception of the “form of a tablet”, which is missing. Moreover, the active ingredient “alendronate” is disclosed only in the form of the specific salt alendronate monosodium trihydrate and not as alendronate in general. Thus, regarding original claims 6 to 8, the teaching of claim 1 of the main request is at least generalised in an unallowable manner with respect to the active ingredient. Looking at the description, the missing feature “in the form of a tablet” is found to be mentioned in example 2 together with “alendronate”. However, example 2 refers to examples 7 and 8 defining the “alendronate” as monosodium salt trihydrate, because the text in example 2 “Alendronate tablets or liquid formulations … are prepared (see Examples 7 and 8). The tablets … are orally administered …” (emphasis added by the Board) leaves no freedom of interpretation that example 2 could relate to another alendronate than the monosodium salt trihydrate actually used […]. If, as an alternative, page 19, lines 18 to 27 are referred to in order to provide a basis for the feature “in the form of a tablet” in claim 1 of the main request, prima facie there would be no problem of unallowable generalisation. In these lines 18 to 27, the “form of a tablet” is correlated to bisphosphonates in general. However, in these lines alendronates as the particular embodiment of bisphosphonates are not disclosed for formulation as a tablet. In addition, the form of a tablet is mentioned as only one possibility of various oral forms, together with capsules, elixirs, syrups … or powder. To provide a source for allowing the selection of alendronate from bisphosphonates, lines 7 to 14 on the same page could be cited disclosing
preferred bisphosphonates, inter alia alendronate, more preferred alendronate, pharmaceutically acceptable salts thereof, and mixtures thereof (potentially meaning the same as alendronate in general) and, however, most preferred alendronate monosodium trihydrate.
The only information that is given for answering the question as to what level of preference might be combined with which member of the group of oral forms, e.g. with elixir, powder or in fact tablets, could be that “most preferred” prevails, but in this case the already described problem of unallowable generalisation reappears and claim 1 of the main request is still in breach of A 76(1). [3.3] As an alternative, an attempt to find a disclosure of the features of claim 1 of the main request could be started from page 20, line 28 to page 21, line 19 of the description as filed in the earlier application: a) The teaching set out there relates to the
use of alendronate … as a unit dosage comprising from about 8.75 mg to about 140 mg of the alendronate compound … (page 20, lines 30 to 32) according to a continuous schedule having a once-weekly dosing interval (page 20, line 33 to page 21, line 4) or a twice-weekly dosing interval (page 21, lines 5 to 11) or a biweekly (page 21, lines 12 to 19) or a twice-monthly dosing interval (page 21, lines 12 to 19) for o osteoporosis prevention or o treating osteoporosis 1949 | 3398
T 1710/09 – Taking A Can For A Must
K’s Law – The ebook
with differing unit dosages, namely 35 mg for “prevention” or 70 mg for “treatment” (see page 21, lines 1 to 4, lines 7 to 11 and lines 14 to 19). The feature “in the form of a tablet” is missing here too. b) For adding this feature, again example 2 could be referred to: The teaching of example 2 on pages 29 and 30 of the original application reiterates the two alternatives as being treatment (with 70 mg of alendronate) or prevention of osteoporosis (with 35 mg of alendronate) and in addition discloses two further alternatives as the basis for orally administering 70 mg of alendronate to a human patient once-weekly, namely
tablets or liquid formulations
as exemplified in examples 7 and 8. c) Thus, reading these sources of disclosure relevant for the subject-matter as requested in claim 1 of the main request, the skilled person is free in principle to combine different variations of the elements being suggested as features of the claim with respect to
dosage (e.g. 70 mg), dosing interval (e.g. once-weekly) and form of the formulation (e.g. in the form of a tablet),
with no recognisable preference for the features as actually represented in this claim [underlined]. d) Reference to page 19 instead of example 2 also cannot solve the problem of providing for the feature “in the form of a tablet” (and not as a syrup or elixir etc.) clearly connected to alendronate in general (not to monosodium trihydrate) and at the same time clarifying the preference of “once-weekly” and the dosage of 70 mg, as can be seen from the arguments under point [3.2], fourth paragraph et seq. above. [3.4] As a consequence, a unit dosage of 70 mg of alendronate in the form of a tablet for a once-weekly dosing interval for treating osteoporosis is not individualised in the description as originally filed in the earlier application, and the subject-matter of claim 1 of the main request cannot be derived directly and unambiguously. First and second auxiliary request; A 76(1) [3.5.1] The considerations and conclusions under point [3.3] above apply mutatis mutandis to claims 1 of the first and second auxiliary requests because, as the core amendment, they differ only in restriction from alendronate to monosodium trihydrate (with the additional wording that the medicament was orally administered to the human “for at least one year” in the second auxiliary request). These considerations in particular are valid for starting from pages 20 and 21 of the description as originally filed. [3.5.2] With respect to the claims as originally filed in the earlier application as the basis for the original disclosure, it is to be stressed that they equally reflect a) the structure of the teaching of pages 20/21, b) the structure of the description and c) the structure of the examples. In these three cases a), b) and c), the alternatives for
the dosage,
differ in relation to the use, mostly o o
35 mg (osteoporosis prevention) or 70 mg (treating osteoporosis) […]
the alternatives for the dosing interval are 1950 | 3398
T 1710/09 – Taking A Can For A Must
o o o o
K’s Law – The ebook
a once-weekly dosing interval (see claims 8 and 14 or see page 20, line 33 to page 21, line 4 or example 2) or a twice-weekly dosing interval (see claims 9 and 15 or see page 21, lines 5 to 11 or example 3) or a biweekly (see claims 10 and 16 or see page 21, lines 12 to 19 or example 4) or a twice-monthly dosing interval (see claims 11 and 17 or see page 21, lines 12 to 19 or example 5).
This teaching is to be supplemented for the form of the formulation
from the examples representing as alternatives, o o
tablets or liquid formulations […]
or from page 19 presenting, as alternatives, o o
tablets, capsules, elixirs, syrups, effervescent compositions, powders, and the like or tablet, capsule, or powder, respectively […].
In all cases, the alternatives are of equal weight, no preference is indicated by specific words or in any other directly recognisable way and their singling out for reasons of original disclosure is not allowed. [3.5.3] Therefore, also when starting from the claims as originally filed, the particular combination of features in claim 1 of the first and the second auxiliary requests is not to be found in individualised form in the earlier application as originally filed and the provisions of A 76(1) are not fulfilled. [4] Under these circumstances, the additional arguments of the appellant cannot hold. [4.1] Applying the principle of direct and unambiguous derivability gives rise to a clear and unequivocal conclusion in the present case. There is no room for any question as to what the skilled person would seriously contemplate. [4.2] The “form of a tablet” as well as “70 mg of alendronate once-weekly for treatment of osteoporosis” as preferred features in view of the overall content of the earlier application could not be seen by the Board, and specific and convincing arguments for this opinion were not presented. For instance, it is not apparent why the structure of the experiments of example 1 would indicate particular weight being attached to a once-weekly dosing: on page 27, lines 10 to 14 of the description of the earlier application it is set out that considerably less oesophageal irritation was observed from the administration of a single high concentration of alendronate on a weekly basis (Group 5) or twice-weekly basis (Group 6) versus administration of low concentration dosages on consecutive days (Group 2) (emphasis added by the Board), giving once-weekly the same weight as twice-weekly. With respect to the other arguments of the appellant, it is to be stated that in view of example 8 the tablet form is not the primarily exemplified form of the medicament in the application as originally filed, and the mentioning of the word “alendronate” in example 7 does not alter the fact that only the “monosodium salt trihydrate” is specifically used in this example. [4.3] Coming to its conclusion, the present Board duly considered decision T 783/09 cited by the appellant in support of its line of argumentation concerning the disclosure in its originally filed application of the features currently claimed. With respect to T 12/81, the following is emphasised in T 783/09 [5.6]: “… given the term “can” in the citation from decision T 12/81, the absence of a direct and unambiguous disclosure for individualised subject-matter is not a mandatory consequence of its presentation as elements of lists. Thus, the “disclosure status” of subject-matter individualised from lists has to be determined according to the circumstances of each specific case by ultimately answering the question whether or not the skilled person would clearly and
1951 | 3398
T 1710/09 – Taking A Can For A Must
K’s Law – The ebook
unambiguously derive the subject-matter at issue from the document as a whole” (underlining by this Board). While it is stressed in T 783/09 that the circumstances of each specific case are decisive for the outcome of the assessment of the “disclosure status”, it follows from points [3.3] and [3.5] above, in particular point [3.3 c)], that the specific circumstances of the present case are different from those considered in T 783/09 and nothing has been submitted during the proceedings that might justify a statement to the contrary. Thus, complying fully with the issue “disclosure status” to be uniformly assessed in all cases of entitlement to priority or original disclosure of an amendment on the one hand and novelty of a claimed subject-matter on the other hand in answering to the question “whether or not the skilled person would clearly and unambiguously derive the subject-matter at issue from the document as a whole”, the present Board considers it inappropriate to expand all the reasonings and conclusions with respect to the particular subject-matter of decision T 783/09 to the present case. The present Board adheres to the meaning of the sentence in seminal decision T 12/81 “If on the other hand two classes of starting substances are required to prepare the end products and examples of individual entities in each class are given in two lists of some length, then a substance resulting from the reaction of a specific pair from the two lists can nevertheless be regarded for patent purposes as a selection and hence as new.” (underlining by this Board) taking “can” for a “is to” as the therefrom following standing jurisprudence did. In view of the implications of freely interpreting this word “can”, there is deep concern that in this way the uniformity of the disclosure assessment process cannot be warranted. […] The appeal is dismissed. To download the whole decision, click here. The file wrapper can be found here.
1952 | 3398
T 1312/09 – Let’s Be Objective
K’s Law – The ebook
T 1312/09 – Let’s Be Objective 30 Aug 2011
The problem-solution approach is intended to be as objective as possible : subjective aspects have to be ignored. Inventors may sometimes have the impression that this is unfair, because subjectively, they have indeed made an invention. The present case corresponds to such a situation. The opponent filed an appeal against the decision of the Opposition Division to reject the opposition. Claim 1 before the Board read (in English translation):
1. Milking cup (1) comprising a cup sleeve (2), a teat rubber (3) inserted in the cup sleeve (2) with a head piece (4) and an intake socket (5) connectable with a milk discharge conduit, and comprising an air inlet valve (13) provided on the milking cup (1) and connected with the interior space of the intake socket (5) via a first conduit (14), which lets atmospheric air penetrate into the intake socket (5) in response to a relief phase, during which a higher pressure causing a folding-in of the intake socket (5) relative to the milking vacuum pending in the milk discharge conduit is generated in a clearance (12) between the cup sleeve (2) and the intake socket (5), characterized in that an opening (25) toward the interior space of the teat rubber (3) is provided in the head piece (4) of the teat rubber (3), wherein the opening (25) can controllably be supplied with atmospheric air in response to the relief phase, and a second conduit (24) is provided in flow connection with the opening and the air inlet valve so as to supply the opening with atmospheric air. The Board found this request to lack inventive step: *** Translation of the German original *** [2.1] It is undisputed that D5 is the closest prior art.
1953 | 3398
T 1312/09 – Let’s Be Objective
K’s Law – The ebook
This document discloses […] a milking cup (1) comprising a cup sleeve (2), a teat rubber (3) inserted in the cup sleeve (2) with a head piece (4) and an intake socket (5) connectable with a milk discharge conduit, and comprising an air inlet valve (13) provided on the milking cup (1) and connected with the interior space of the intake socket (5) via a first conduit (14), which lets atmospheric air penetrate into the intake socket (5) in response to a relief phase, during which a higher pressure causing a folding-in of the intake socket (5) relative to the milking vacuum pending in the milk discharge conduit is generated in a clearance (12) between the cup sleeve (2) and the intake socket (5). [2.2] The subject-matter of claim 1 according to the main request […] differs from the milking cup disclosed in D5 in that an opening toward the interior space of the teat rubber is provided in the head piece of the teat rubber, wherein the opening can controllably be supplied with atmospheric air in response to the relief phase, and a second conduit (24) is provided in flow connection with the opening and the air inlet valve so as to supply the opening with atmospheric air. [2.3] According to the opposed patent, the problem underlying the invention […] consists in providing an improved milking cup that has a simple structure, is easy to clean and which has properties that increase the well-being of the animal during milking. [2.4] The features known from D5 ensure that the udder of the domestic animal to be milked is handled in a gentle way; the handling and the cleaning of the milking apparatus is easy. This is indeed acknowledged in the opposed patent […]. Moreover, D5 […] discloses that the teat is massaged and injections of milk back into the teat are avoided by letting atmospheric air flow into the intake socket. Starting from D5, the objective technical problem can be seen in further improving the well-being of the animal that is being milked during the milking. [2.5] The [patent proprietor] has asserted that in the present case the appropriate skilled person is an agrobiologist having little mechanical engineering knowledge. The Board cannot endorse this opinion. For developing a milking cup as the one claimed what is needed is not only in-depth knowledge of the anatomy and the behaviour of domestic animals that are to be milked, and in particular of cows, but also extensive knowledge in the filed of milking cups and of pneumatic milking installations, in order to be able to constructively implement the animal-specific requirements. A milking cup is a technically complex object, as also follows from the submissions of the inventor to this effect. Therefore, in the present case, the “skilled person” consists in a “team of skilled persons” comprising an agrobiologist and a mechanical engineer having experience in the field of milking cups and pneumatic milking installations.
1954 | 3398
T 1312/09 – Let’s Be Objective
K’s Law – The ebook
[2.6] From D2 […] it is known to provide an opening toward the interior space of the teat rubber in the head piece of the teat rubber, wherein the opening can controllably be supplied with atmospheric air in response to the relief phase, and to provide a conduit in flow connection with the opening and the air inlet valve so as to supply the opening with atmospheric air. This results in massaging the teat and circulatory problems of the teat are avoided […]. As improved blood circulation and massaging the teats can only improve the well-being of the domestic animal to be milked, it is obvious for the skilled person to introduce atmospheric air also into the head piece of the teat rubber known from D5, as taught in D2. [2.7] The [patent proprietor] has submitted that both D5 and D2 have been invented by the same inventor as the opposed patent and that the inventor already knew D2 when he was developing D5. Therefore, it could not be obvious to combine D5 and D2. In other words, what is not obvious for the inventor cannot be obvious for the skilled person. The Board cannot endorse this view. According to the established case law, the skilled person within the meaning of A 56 is a normal expert who is active in the field of the invention and who has an average knowledge and average skills. He is not an outstanding or smart (gewieft) skilled person, and in particular, he is not an inventor (see Schulte, PatG, 8th edition, § 4, marginal numbers 39-41 and T 39/93). D2 and D5 disclose different measures each of which contributes to the well-being during milking of a domestic animal that is to be milked. As there was no prejudice against it, there is no reason why a skilled person should not use both measures simultaneously. The [patent proprietor] also asserted that the skilled person could not have found any incentive in D2 to further develop a milking cup known from D5 because D5 already solved the problem underlying the invention. Again, the Board cannot agree, because, as explained above, the problem to be solved in respect of the closest prior art D5 is to “further improve” the well-being during milking of the domestic animal that is to be milked, i.e. to provide a better solution for a problem that has already been solved in D5. Although the milking cup disclosed in D5 already ensures gentle handling of the udder of the animal, its first objective is to avoid wetting of the air inlet valve by milk, as well as obtaining an improvement of the milk outflow. In contrast, the teaching of D2 provides improvements of the health of the udder […] because it reduces the constriction of the teat region and thereby improves the blood circulation […]. Therefore, it was advantageous to simultaneously implement both measures. Finally, the [patent proprietor] has submitted that it was not obvious to implement the control of the conduit letting air into the head peace and into the suction-side end of the teat rubber by means of a single valve, because the valves of D2 and D5 were different and this [implementation] was technically too complicated for an agrobiologist. Although the valve of D5 is a valve that is closed when it is in its idle position (Ruhestellung) and the valve of D2 is open when it is in its idle position, their way of functioning is the same, i.e. both supply the conduit 1955 | 3398
T 1312/09 – Let’s Be Objective
K’s Law – The ebook
connected to them with atmospheric air during the relief phase (when the annular space is brought to atmospheric pressure). Therefore, it is obvious for the mechanical engineer who is familiar with milking cups and pneumatic milking installations – who is part of the “team” defined above) – that the valve provided in D5 is sufficient for implementing the teaching of D2 and that he only has to provide a second conduit. [2.8] Consequently, the subject-matter of claim 1 of the main request […] does not involve an inventive step. Should you wish to download the whole decision (in German), click here. The file wrapper can be found here.
1956 | 3398
T 177/08 – Fake Dependency
K’s Law – The ebook
T 177/08 – Fake Dependency 29 Aug 2011
Another decision with an interesting paragraph on dependent claims, but also on A 69 and R 139 ... This appeal was directed against the decision of the Opposition Division to revoke the patent. Claim 1 of all the requests on file before the Board concerned the use of a compound of general formula II:
for the preparation of a pharmaceutical composition for inhibiting hyperproliferation in a cell. The Board found the main request not to comply with A 123(3): [3.1] The Markush formula according to claim 1 as granted can contain C1-C10 alkyl rests at three locations, namely at positions R1, R2 and R8. The claims do not contain any information as to whether or not these alkyl rests may be substituted. As was correctly pointed out in the decision under appeal, alkyl according to IUPAC is equivalent to CnH2n+1, which precludes substitution. On the other hand, paragraph [0086] of the description reads: “Moreover, the term “alkyl” (or “lower alkyl”) as used throughout the specification, examples, and claims is intended to include both “unsubstituted alkyls” and “substituted alkyls”, the latter of which refers to alkyl moieties having substituents replacing a hydrogen on one or more carbons of the hydrocarbon backbone.” [3.2] According to A 69, the extent of the protection conferred by a European patent shall be determined by the claims. Nevertheless, the description and the drawings shall be used to interpret the claims. It therefore has to be decided whether said interpretation of the claims by the content of the description is limited to cases where the claims are in need of interpretation, e.g. because of functional or unclear features, or whether it also applies to the present case, where a well-known and generally accepted meaning of a term is overthrown and replaced by a new definition given in the description. [3.3] The appellant cited decisions T 1321/04 and T 190/99 in this context. T 1321/04 [2.3] indicates that terms are not considered in isolation but in the context of the content of the document as a whole. Terms must be construed as they would be by the skilled person according to the whole content of the application, taking into account what is achieved by the invention. However, decision T 1321/04 1957 | 3398
T 177/08 – Fake Dependency
K’s Law – The ebook
concerned the question of how the term “predetermined value of nitrogen oxide concentration” should be interpreted in view of the assessment of novelty. To understand the meaning of this term, the whole content of the document was taken into consideration. The case was not concerned with the issue of determining the scope of protection. In the present case, the situation is quite different: here, the meaning of the feature in question is generally accepted, perfectly understandable per se, and unambiguously defined by IUPAC, whom the skilled person acknowledges as the competent authority in this context. The skilled person therefore has no need to consult the description for a definition of “alkyl”. The board is of the opinion that the second sentence of A 69 does not apply to cases where an unambiguous and generally accepted definition of a term figuring in the claims should be superseded by a different definition found in the description. If it is intended that a term which is in no need of any interpretation is given a new meaning, then the definition for this new meaning must be put into the claims. Third parties cannot be expected to check every single term of the claims for a potentially different meaning that might be hidden somewhere in the description. As a consequence, irrespective of the definition in paragraph [0086] of the contested patent, the term “alkyl” in the claims as granted has the meaning of CnH2n+1. [3.4] Nor does decision T 190/99 have any bearing on the present case. In T 190/99 [2.4], it was found that the skilled person when considering a claim should rule out interpretations which are illogical or which do not make technical sense. He should arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent pursuant to A 69. The patent must be construed by a mind willing to understand, not by a mind desirous of misunderstanding. In T 190/99 [2.2.4], the board held that the skilled person reading the feature “said plurality of tensioning warp threads (19) extending parallel with and between said upper and lower binding warp threads (17, 18)” would not unreservedly assume that the term “parallel” had to be understood in the strict geometrical sense of the word (i.e. two equidistant straight lines). It was part of the most basic knowledge of the skilled person that in a woven fabric warp threads appeared to be parallel when the fabric was seen in plan, but running approximately sinusoidally when seen in cross- section. Warp threads were therefore not parallel in the strict sense of the word (see point [2.2.3]). As a consequence, the board arrived at the conclusion that in view of the overall disclosure the replacement of “parallel” by an amended and less restricted definition was not objectionable under A 123(3). In contrast to decision T 190/99, where a term used in its usual meaning did not make technical sense, formula II according to claim 1 of the contested patent does not include any subject-matter which is illogical or does not make technical sense if the term “alkyl” is used in its usual and well-known meaning. Reference is again made to the last two sentences of point [3.3] above. [3.5] As a consequence, the board concludes that the subject-matter of the main request extends the protection conferred and does not meet the requirements of A 123(3). The same was found to be true for the first auxiliary request. The Board then went on to examine the second auxiliary request: [5.1] The subject-matter of auxiliary request 2 does not include substituted alkyl groups. As a consequence, the objections raised above in point 3 do not apply to auxiliary request 2. [5.2] Formula II according to claim 1 of auxiliary request 2 comprises compounds in which L adjacent to X is CH(R10)-. Claim 1 as granted does not include this option. However, claim 21 as granted, which refers to any preceding claim and thus also to claim 1 as granted, comprises compounds wherein X adjacent to L includes unsubstituted methylene groups if L adjacent to R1 is absent. The latter condition is also fulfilled by the subjectmatter of auxiliary request 2, where L adjacent to R1 was deleted from formula II. NB: Claim 21 as granted read: 21. The use as in any preceding claim, wherein L adjacent to R1 is absent, and L adjacent to X is a substituted or unsubstituted methylene. Claim 21 as granted, in combination with the preceding claims to which it refers, therefore encompasses the subject-matter of auxiliary request 2. As a consequence, it has to be evaluated whether claim 21 as granted can be taken into consideration or, as was alleged by [opponent 2], whether it is erroneous and therefore to be disregarded. In this context, [opponent 2] made reference to R 43 and R 139. R 43 1958 | 3398
T 177/08 – Fake Dependency
K’s Law – The ebook
[5.2.1] R 43(4) stipulates that any claim which includes all the features of any other claim is a dependent claim and shall contain, if possible at the beginning, a reference to the other claim and then state the additional features. Claim 21 as granted contains a reference to the preceding claims and has the same category as the claims to which it refers. However, the compounds defined by formula II according to claim 21 as granted are different from those according to claims 1 to 20 as granted as far as the substituent L adjacent to R1 is concerned: substituted methylene groups (claim 21 as granted) are not included in the list of substituents for L as defined in claim 1 as granted. Despite its reference to the preceding claims, claim 21 as granted is therefore an independent claim, as it does not include all the features of the claims to which it refers. As a consequence, the requirements of R 43(4) are not met. Despite this deficiency, the skilled person has no doubts as far as the content of claim 21 as granted is concerned. He will conclude that the definitions for those substituents not mentioned there (i.e. all substituents except R1 and L adjacent to X) can be found in the preceding claims and in particular in claim 1. Doing so, he will realise that claim 21 is indeed an independent claim which, however, is clearly and unambiguously defined and therefore does not give rise to any doubts regarding its content. As a consequence, the skilled person would not disregard claim 21 as granted. R 139 [5.2.2] Making reference to R 139, [opponent 2] alleged that claim 21 had been erroneously introduced in the course of substantive examination. Features which were the consequence of an obvious error had not been intended to be part of the claims and could therefore not be used in support of A 123(3). This argument cannot succeed, as the [patent proprietor] contested that the introduction of claim 21 was the result of an obvious error. The fact that [opponent 2] has doubts regarding the basis for claim 21 as granted in the application as originally filed is an issue that does not concern A 123(3) but should be discussed in connection with the requirements of A 123(2). The board therefore concludes that claim 21 is not the result of an obvious error. [5.3] As a consequence, the use of compounds according to formula II as defined in auxiliary request 2, in which L adjacent to X is -CH(R10)-, is encompassed by the claims as granted, so the requirements of A 123(3) are met. The Board then remitted the case to the Opposition Division for further processing. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
1959 | 3398
T 1614/08 – Still Dependent
K’s Law – The ebook
T 1614/08 – Still Dependent 27 Aug 2011
The present appeal was directed against the decision of the Examining Division (ED) to refuse the application under consideration. In its first communication, dated July 8, 2004, the ED had objected that the claims on file violated A 123(2) and also lacked conciseness due to the presence of two independent method claims 1 and 13, in violation of R 29(2) and A 84. On January 18, 2005, the applicant filed a new set of claims in order to overcome objections under A 84. The claims now contained a single independent method claim 1, a single independent apparatus claim 13 and a dependent machine readable disc claim 12. Claims 1, 11, 13, and 23 read: 1. A method of assigning, via a graphical user interface, values to object parameters (70,72) of objects (54) of a simulation mode1 (30), the method comprising: displaying a diagram panel (401) within a user interface, the diagram panel (401) including respective graphical representations (152-164) of objects (54) of the simulation mode1 (30); displaying an access panel (260; 262) within the user interface enabling user input of values to be assigned to object parameters (70,72) of objects (54) of the simulation model (30), the access panel (260;262) being distinct £rom the diagram panel (401); and assigning user input values received via the access panel (260;262) to object parameters (70,72) of the simulation model (30), characterized in that displaying (284) an access panel (260;262) and assigning (292) user input values received via the access panel (260;262) comprises: detecting user identification of a set of object parameters (7O,72) for inclusion within an access panel (260;262), the set of object parameters including object parameters (70,72) associated with multiple objects (54) of the simulation model(30); in response to the user identification of a set of object parameters (54) of the simulation mode1 (30) for inclusion in an access panel (260;262), displaying (288) an identifier (264,266) for each object parameter (70,72) of the user identified set of object parameters within the access panel (260;262); receiving user input via the access panel (260, 262) of values (268) for one or more of the object parameters (70,72) represented by identifiers (264,266) in the access panel (260;262); and assigning the respective values received via the access panel (260;262) to said one or more object parameters (70,72). 11. A method of performing a simulation utilizing a simulation model (30), comprising: assigning, via a graphical user interface, values to object parameters (70,72) of objects (54) of a simulation model (30) in accordance with any preceding claim; and utilizing the values assigned to the object parameters as initial input values for object parameters (70,72) in the simulation model (30). 13. Apparatus for assigning, via a graphical user interface, values to object parameters (70,72) of objects (54) of a simulation mode1 (30), the apparatus comprising: user interface means operable to generate a user interface display including: a diagram panel (4 01) including graphical representations (152-164) of objects (54) of a simulation model (30);and at least one access panel (260;262) enabling user input of values to be assigned to object parameters (70,72) of objects (54) of the simulation model (30), the access panel (260;262) being distinct from the diagram panel (401); and means for assigning user input values received via an access panel (260;262) to object parameters (7O,72) of the simulation model (30), characterized by further comprising: means for detecting user identification of a set of object parameters (7O,72) including object parameters (70,72) associated with multiple objects (54) of the simulation model(30) for inclusion within an access panel (260;262), the user interface means being responsive to said means for detecting user identification of a set of objects, to display an identifier (264,266) for each object parameter (70,72) of the user identified set of object parameters within an access panel (260;262), said means for assigning 1960 | 3398
T 1614/08 – Still Dependent
K’s Law – The ebook
user input values being responsive to receiving (290) user input via the access panel (260, 262) of values (268) for one or more of the object parameters (70,72) represented by identifiers (264,266) in the access panel (260;262) to assign the respective values received via the access panel (260;262) to the object parameters (7O,72) represented by identifiers (260,262). 23. Apparatus for performing a simulation utilizing a simulation model (30), the apparatus comprising: means for assigning, via a graphical user interface, values to object parameters (70,72) of objects (54) of a simulation model (30) in accordance with any of claims 13-22; and simulation means operable to utilize values assigned to object parameters as initial input values for object parameters (70,72) in a simulation mode1 (30). In a second communication, dated January 31, 2007, the ED maintained its objections.
In its response, the applicant pointed out that claims 11 and 23 had to be considered as dependent claims.
The refusal was delivered in the form of a “decision according to the state of the file”, as requested by the applicant. As is so often the case with decisions according to the state of the file (which the Board would prefer to call “decisions by reference”, see [2] of the reasons), the Board found the decision to be insufficiently reasoned. There is an interesting paragraph on the R 29 objection: [10.2] Claims 1 and 13 as filed on 18 January 2005 relate, respectively, to a “method of assigning... values to object parameters ...” and a corresponding apparatus. Claims 11 and 23 relate, respectively, to “a method of performing a simulation... comprising: assigning... values to object parameters... in accordance with any preceding claim” and again a corresponding apparatus. In the second communication, the ED considers claims 11 and 23 as independent claims, the reference to preceding claims notwithstanding. According to R 29(3) EPC 1973 (and, equivalently, R 42(3)) [sic, the correct reference is R 43(4)] “[a]ny claims which includes all the features of any other claim” is considered a dependent claim. This formulation is reproduced in the Guidelines for Examination C-III, 3.4. In view of this the ED’s position is at least
1961 | 3398
T 1614/08 – Still Dependent
K’s Law – The ebook
unconventional and the applicant, when referring to the standard interpretation of what constitutes a “dependent claim”, must have had a fair expectation of having overcome this objection. The case was remitted to the ED for further prosecution. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1962 | 3398
T 1188/09 – You May Come Back
K’s Law – The ebook
T 1188/09 – You May Come Back 26 Aug 2011
The patent proprietor filed an appeal after the Opposition Division (OD) had revoked his patent. The main request before the Board was to maintain the patent as granted, although this had never been requested before the OD. Will the Board admit this request? The opponents thought it should not, and pointed out that this question of law had been answered differently by the Boards, which justified the referral of the following question to the Enlarged Board of appeal (EBA): Is a patent proprietor who has withdrawn the subject-matter of a main request before the OD (in the present case, the request to maintain the patent as granted), entitled to pursue this subject-matter in the appeal proceedings? *** Translation of the German original *** Referral to the EBA [1] Opponent 3 has requested to refer the question of admissibility to the EBA by means of a referral pursuant to A 112(1)(a). For the reasons following from what is said in point [2] below the Board cannot grant this request. Admissibility [2.1] The [opponent’s] view that the appeal is inadmissible is based on the fact that the set of claims that the patent proprietor had defended during the opposition proceedings was limited with respect to the patent as granted. The OD had not decided on the set of claims as granted. Therefore, the patent proprietor was not entitled to defend the patent in a broader version, i.e. the claims as granted, after having submitted a limited version during the opposition proceedings. [2.2] According to the established case law of the Boards of appeal the patent proprietor may not surrender his patent in part during opposition proceedings and irrevocably limit his patent by declaring that he does so (T 123/85 [3.1.1]). Based on this principle, the case law has deduced that the appealing patent proprietor whose patent had been defended in limited form only during the opposition proceedings cannot be hindered from requesting that the Board of appeal maintain the patent as granted. T 407/02 [1.2] has made the following statement: Conversely, there is a predominant view that the patent proprietor who had defended his patent in limited form only during the opposition proceedings cannot, as a rule (i.e. unless the prohibition of reformatio in peius applies or there is an abuse of proceedings), be prohibited from reverting to a broader version of the patent, including the patent as granted, because limitations made in the meantime are not to be understood as a surrender of parts of the patent but only as formulation attempts that are to delimit the patent in view of objections (Benkard/Günzel, EPÜ, Munich 2002, A 107, marginal number 17). Therefore, the opponents have to expect in any case that the patent proprietor whose patent was revoked by the OD defends the patent as granted during the appeal proceedings. Decision T 1018/02 [2.4], which was taken shortly afterwards, has expressly followed this approach. Decision T 386/04 [1] has reaffirmed the same view and pointed out that decisions that appeared to contradict it always dealt with situations where the amendment of the claims was tantamount to an abuse of proceedings. In this context the Board also commented T 528/93, which the present [opponents] have invoked and have said to be deviant. Decision T 420/03, which has also been cited by the [opponents], deals with the questions of whether criticism of a decision on apportionment of costs by the OD, which has not been attacked before, is still admissible after the expiration for filing the statement of grounds for appeal, which is an entirely different question. [2.3] In the present case, the Board does not see any reason to deviate from this established case law. Nor does it see any divergence between the decisions of the Boards of appeal in this respect, which would call for a referral to the EBA. 1963 | 3398
T 1188/09 – You May Come Back
K’s Law – The ebook
Therefore, the appeal is admissible. Certainly to be approved. The claims as granted are in the opposition proceedings at least at the time when the opposition is filed (unless there the patent was limited before the opposition was filed, that is). This being said, I wonder whether the more generous view of T 407/02 and T 1018/02, according to which the patent proprietor could also revert to a broader version somewhere between the patent as granted and the claims as defended during the opposition proceedings, is still up-to-date. The recent tendency to invoke Article 12(4) RPBA appears to go against this view. To read the whole decision, click here. The file wrapper can be found here.
1964 | 3398
T 1782/09 and T 2127/09 – What About Some Tetris?
K’s Law – The ebook
T 1782/09 and T 2127/09 – What About Some Tetris? 25 Aug 2011
The present decisions deal with the patentability of devices for playing games similar to the famous Tetris game. If you are not interested in such subject-matter, you might still want to have a look at the last part of this post where Article 12(4) RPBA related questions are discussed. The two decisions under consideration correspond to parallel appeals filed against decisions of the Examining Division (ED) refusing applications EP 1 600 197 and EP 1 600 198. Claim 1 of the main request before the Board in T 1782/09 read: A game apparatus having an operation unit (1406) which inputs an operation to a game, a display unit (1405) which displays information associated with the game, and a storage 10 unit (1403) which stores data required to execute the game, the game apparatus comprising: means for generating display data of falling objects (101, 102, 103, 104) which are displayed to fall from an upper portion to a lower portion in a predetermined display area (100) on the display unit (1405), and storing the display data in the storage unit (1403); means for reading out the generated display data of the falling objects from the storage unit (1403), and displaying the falling objects to fall from the upper portion to the lower portion in the predetermined display area (100); and means for, when the falling objects reach a falling stop position in the display area, changing the display data to display the falling objects as stop objects whose falling movement stops, and storing the changed display data in the storage unit (1403), the game apparatus characterized by further comprising: object designating means for designating a predetermined number or less of stop objects in accordance with a designation instruction from the operation unit (1406) and re-arranging means for, when the stop objects are designated, changing the display data of stop objects to rearrange positions of the predetermined number of designated stop objects in accordance with a re-arrange instruction from the operation unit (1406), and storing the changed display data in the storage unit (1403) wherein: the object designating means comprises a cursor (106) movable on the display area (100) in accordance with a movement instruction from the operation unit (1406) and having a shape and size to accommodate a plurality of the objects; the re-arranging means is arranged to perform the processing to re-arrange the positions of the stop objects when the cursor (106) has been positioned to accommodate the predetermined number of stop objects; and the apparatus further comprises: means for, when the re-arranged stop objects and stop objects which are located around the re-arranged stop objects form a predetermined combination, changing display data of a plurality of stop objects which match the predetermined combination to display data that express rising objects which rise from the lower portion to the upper portion in the predetermined display area (100) on the display unit (1405), and storing the changed display data in the storage unit (1403); and means for, when the rising objects reach a predetermined clear position in the display area, changing the display data to clear display of the rising objects; 1965 | 3398
T 1782/09 and T 2127/09 – What About Some Tetris?
K’s Law – The ebook
wherein the re-arranging means is further configured to perform the processing to re-arrange the positions of a plurality of objects accommodated in the cursor among the rising objects. Having determined the differences with respect to closest prior art D1, the Board concluded that “the non-technical aspects of the distinguishing features reflect modified game rules of the D1 computer game and the technical aspects reflect the technical implementation thereof” ([2.3.2(c)]) and that “the objective technical problem is merely to technically implement the modified game rules on the D1 computer game apparatus.” ([2.3.4]). The Board then stated: [4] In summary, the board finds that claim 1 of both requests relates to the technical implementation of excluded matter in the form of game rules. Disregarding any effects and advantages inherent in the game rules themselves, the board is unable to identify any further technical effects in the particular manner of technical implementation that might render it non-obvious to the skilled person. In conclusion therefore, the board finds that the subjectmatter of claim 1 of both requests does not involve an inventive step as required by A 52(1) and A 56. During the oral proceedings (OPs) held before the Board, he applicant had requested the Board to refer a question to the Enlarged Board (EBA): In the context of a computer-implemented gaming system, can a feature be regarded as a nontechnical feature although the feature cannot exist and be put into practice outside the computer-implemented game system? The Board refused a referral: [5.1] A 112(1)(a) stipulates that in order to ensure uniform application of the law or if a point of law of fundamental importance arise, the board of appeal shall, … following a request from a party to the appeal, refer any question to the EBA, if it considers that a decision is required for that purpose. However, as stated in G 3/08 [7.2.5], the boards of appeal are not authorised to consult the EBA whenever they so wish in order to clarify abstract points of law. The question has to be essential to reach a decision on the appeal in question. Moreover it was stated therein (reasons [10.3.2]) that the case law of the boards of appeal regarding computerimplemented inventions, as summarised in T 154/04, is consistent and has a sound legal basis in the Convention. Item 5 of the reasons of T 154/04 reads: (E) For examining patentability of an invention in respect of a claim, the claim must be construed to determine the technical features of the invention, i.e. the features which contribute to the technical character of the invention. [5.2] In the present case, the board distinguished between technical and non-technical aspects of the claimed distinguishing features on the basis of their contribution to the technical character of the invention. Whether, in the context of a computer implemented gaming system, a feature may be regarded as a non-technical feature although the feature cannot exist and be put into practice outside the computer-implemented game system, is not decisive for this assessment. Put differently, this finding of the board answers the question of the appellant, and implies that features do not become inevitably technical merely because such features only make sense and realistically may only be put into practice in a computer-implemented game system. The board also notes that it was able to arrive at this finding without having to refer the question to the EBA. Furthermore, the board is also not aware of any other decision on this specific point, hence the board is also not aware of any divergence in the jurisprudence, as mentioned above. An answer of the EBA to the question submitted at the OPs is thus not necessary for the decision on the present appeal and the request for referral to the EBA must therefore be refused. Now, coming to the second decision, the independent claims of the main request before the Board in T 2127/09 read: 1966 | 3398
T 1782/09 and T 2127/09 – What About Some Tetris?
K’s Law – The ebook
1. A game apparatus for making a player operate a falling object (102) that falls within a predetermined display area (100), and clearing the falling object (102) and falling stop objects (103) by combining the falling object (102) and the falling stop objects (103) under a predetermined condition, the apparatus comprising: a CPU (1101), a) said CPU (1101) being adapted to display a falling object (102) at a falling start position (101) of a predetermined display area (100); b) said CPU (1101) being adapted to display the displayed falling object (102) to move in a lower direction of the display area independently of an operation input from the player; c) said CPU (1101) being adapted to display the falling object (102) to move in the lower or horizontal direction of the display area in accordance with an operation input to the falling object (102); and d) said CPU (1101) being adapted to, when the falling object (102) reaches a falling stop position of the display area (100) and satisfies a falling stop condition, stop falling of the falling object (102), and display the falling object (102) as a falling stop object; e) said CPU (1101) being adapted to determine if the falling stop object and other falling stop objects (103) which are arranged around the falling stop object in advance satisfy clear conditions, characterized by further comprising: f) said CPU (1101) being adapted to, when the clear conditions are satisfied, register a portion of the falling stop object which satisfies the clear conditions as an object to be cleared; g) said CPU (1101) being adapted to display a sequence bar (701) when a counter, counting given timings independently of the music data, reaches a predetermined value, the sequence bar being displayed to move from left to right in the display area in synchronism with a music which is output along with progress of a game; and h) said CPU (1101) being adapted to, when the sequence bar (701) has passed the portion of the falling stop object registered as the object to be cleared, clear the portion of the falling stop object. 9. A method of controlling a game apparatus having an operation unit (1106) which makes an operation input to a game, which makes a player operate a falling object (102) that falls within a predetermined display area (100), and clears the falling object (102) and falling stop objects (103) by combining the falling object (102) and the falling stop objects (103) under a predetermined condition, a display unit (1105) which displays information associated with the game, a storage unit (1102, 1103, 1104) which stores data required to execute the game, and an audio output unit (1107) which outputs music data of the stored data along with progress of the game, the method comprising: a step of displaying the falling object (102) at a falling start position (101) by setting display position data of the falling object (102) at the falling start position (101) in the predetermined display area (100) of the display unit (1105); a step of changing the display position data of the falling object (102) to move the falling object (102) displayed on the display unit (1105) in a lower direction of the display area independently of an operation input from the operation unit (1106); a step of changing the display position data of the falling object (102) to move the falling object (102) in the lower or horizontal direction of the display area in accordance with an operation input from the operation unit (1106) to the falling object (102); a step of stopping, when the falling object (102) reaches a falling stop position of the display area and satisfies a falling stop condition, falling of the falling object (102), and displaying the falling object (102) as a falling stop object;
1967 | 3398
T 1782/09 and T 2127/09 – What About Some Tetris?
K’s Law – The ebook
a step of determining if the display position data of the falling stop object and display position data of other falling stop objects (103) which are arranged around the falling stop object in advance satisfy clear conditions; and a step of generating, when the clear conditions are satisfied, clear object data used to register a portion of the falling stop object which satisfies the clear conditions as an object to be cleared, and storing the generated data in the storage unit (1102, 1103, 1104) , characterized by further comprising: a step of displaying a sequence bar (701) when a counter, counting given timings independently of the music data, reaches a predetermined value, the sequence bar being displayed to move it in the display area from left to right in synchronism with the music data which is read out from the storage unit (1102, 1103, 1104) and is output from the audio output unit (1107) along with progress of the game; a step of determining on the basis of display position data of the sequence bar (701) if the sequence bar (701) has passed the portion of the falling stop object corresponding to the clear object data stored in the storage unit (1102, 1103, 1104) and a step of clearing, when it is determined that the sequence bar (701) has passed the portion of the falling stop object, display of the portion. 18. A computer program product adapted to perform the method steps of one or more of claims 9 to 17. 19. A computer readable recording medium recording a computer program product of claim 18. Again, the Board examined whether this subject-matter involved an inventive step: [3.1] The application relates to a computer game like “Tetris” in which objects as blocks are displayed to fall down and fill a row. Once a row is fully filled, the blocks will be cleared immediately. It can be stated that the blocks will be cleared when they satisfy a first condition. The idea behind the claimed subject-matter is now to introduce a second condition which has to be satisfied before the blocks are cleared. According to claims 1, 9, 18 and 19, the second condition is implemented with a sequence bar moving over the blocks to be cleared. [3.2] The rules of the notoriously known “Tetris” computer game could be described as follows: A random sequence of objects appear at the top of a playing field display and fall down to the bottom thereof. The objects stop falling when they hit either the bottom line of the playing field or an object that has already fallen and stopped before. In the latter case, the objects will be stacked towards the top of the display. When new objects cannot fall any longer because the fallen objects are stacked and reach the top of the playing field where the new objects are supposed to fall, the game is over. A player can move the falling objects to the left or to the right and can thus try to fully fill a horizontal row of objects. When a row is fully filled with objects, these are immediately cleared, i.e. they disappear, and any object above a cleared one, will fall into the cleared space. The new objects appear at the top of the playing fields display as soon as the falling object stop moving. [3.3] Compared with the standard “Tetris” game in which objects are cleared when a first condition is satisfied, the distinguishing features f) to h) of claim 1 and the corresponding features in claims 9, 18 and 19 include now a second condition which has to be satisfied before the objects are cleared and disappear. [3.3.1] These distinguishing features have both technical and non-technical aspects. (a) “Game rules” form part of “the regulatory framework agreed between [or with] players concerning conduct, conventions and conditions that are meaningful only in a gaming context (T 12/08 [4.6]). They govern the conduct and actions of the players during game play (T 336/07 [3.3.1]).
1968 | 3398
T 1782/09 and T 2127/09 – What About Some Tetris?
K’s Law – The ebook
Thus, “games rules” define inter alia the structural setup of the game that allows choice making to occur and determines how the game play evolves from the beginning to its end in response to player actions and decisions. It should be noted that the structural setup of the game does not require a player’s interaction. (b) Such “games rules” are clearly recognisable in the independent claims. The game apparatus of claim 1 and the method of claim 9 are setup such that the objects are cleared only when the first and the second clearing conditions are satisfied. The same can be stated with respect to claims 18 and 19. (c) From this it follows that the non-technical aspects reflect modified “Tetris” game rules and the technical aspects reflect the technical implementation of these modified game rules. [3.3.2] Since these distinguishing features include both technical and non-technical aspects, the subject-matter of claims 1, 9, 18 and 19 is of “mixed” nature. (a) In dealing with such “mixed” inventions the board adopts the approach as set out in T 1543/06 [2] which is based foremost on T 641/00. Thus, only those features that contribute to technical character are to be taken into account when assessing inventive step. That requirement cannot rely on excluded (non-technical) subject-matter alone, however original that matter might be. The mere technical implementation of something excluded cannot form the basis for inventive step. Decisive for inventive step is the question how excluded subject-matter has been technically implemented, and whether such implementation is obvious in the light of the prior art. As explained in T 1543/06 [2.7-9], such a consideration focuses on any further technical effects associated with implementation of the excluded subjectmatter over and above those inherent in the excluded subject-matter itself. (b) In the present case, the independent claims have been substantially amended and specify now in addition the control of the sequence bar in accordance with a counter when a predetermined count value is reached. However, since the search division (SD) did not carry out a search under R 45 EPC 1973, the board is unable to finally assess whether the claimed subject-matter involves an inventive step, and in particular whether these amended features provide any further technical effects associated with the implementation of the modified “Tetris” game rules over and above those inherent in these rules themselves. Procedural matters [4.1] The OPs before the board focused in particular on the definition of “game rules” and resulted in amendments to the claims which addressed the board’s objections. Thus the amended claims have been filed in response to the board’s objections at the OPs. [4.2] It is true that according to Article 13(3) of the Rules of Procedure of the Boards of Appeal (RPBA) amendments made especially at the OPs should not be admitted if they raise issues which the board cannot reasonably be expected to deal with without adjournment of the OPs. However, in the present case, the SD decided under R 45 EPC 1973 to draw up no search report, without consulting the applicant, so that the claims on file contain unsearched matter and that an amendment to the claims also necessarily introduces unsearched matter. Thus, the board at the OPs was not able to examine whether the amended claimed subject-matter involves an inventive step, not because this amendment had been submitted at a very late stage namely at the OPs but because it merely relates to unsearched matter. The fact that the board was not in a position to decide on the issue of inventive step at the OPs is clearly not dependent on the degree of lateness of the applicant’s amendment, it is primarily the result of the SD’s decision that no search should be carried out so that only unsearched matter could be used by the applicant for amending the claims. [4.3] In cases in which the SD did not carry out a search under R 45 EPC 1973 and features are claimed which are neither notoriously known nor explicitly accepted by the applicant as known, the boards of appeal have decided (see e.g. T 1515/07 [6]; T 690/06 [2]) that an additional search must be carried out. Since the amendment in feature g) of claim 1 and the corresponding amendment in claim 9 meet these requirements, it is necessary to carry out an additional search according to R 63. 1969 | 3398
T 1782/09 and T 2127/09 – What About Some Tetris?
K’s Law – The ebook
Moreover, already in the annex to the OPs, the board expressed the view that if a request were found to be allowable on the basis of the available facts and evidence, then the case should be remitted to the department of first instance for carrying out an additional search. [4.4] The above nothwithstanding, the board emphasizes that remittal should be seen as an exceptional procedural possibility, and it must be also examined whether the applicant could have been expected to make the amendments which were made during the appeal before the board earlier (see Rule 12(4) RPBA), and thereby could have requested from the ED to perform the necessary search. For example, the board notes that the applicant did not file any auxiliary request before the ED, and therefore the question arises if the appellant could have been expected to file these amendments at least by way of an auxiliary request. To this the board notes that the identification and separation of the technical effects which may and may not contribute to the technical charater of an invention (and thus to inventive step) is far from straightforward. Further, the assumption of a general obligation to file auxiliary requests - in the sense that the party must fear adverse procedural consequences if he does not - appears problematic. Firstly, if one were to recognise this as a procedural obligation, one must immediately also answer the question: how many auxiliary requests are then “expected”, given that it is also standing jurisprudence of the boards that too many auxiliary requests can be seen as an abuse of the procedure. Secondly, the EPC as such is completely silent on auxiliary requests: while the board recognises that these are well established in the proceedings before the EPO, both before the first and appeal instances, there is no legal basis for penalising an applicant for not using them. In other words, it should be possible for an applicant to act in good faith also without making use of auxiliary requests. On the other hand, it is also clear that parties have no entitlement to a remittal as of right (apart from those cases where the first instance commits a procedural violation). This means that a party restricting itself to a single request before the first instance must be prepared for the possibility that he will not be able to present further requests and have them examined. Considering the above, the board finds that the appellant himself is also not completely without fault, as nothing prevented him from introducing the subject-matter of the present amendments earlier into the procedure. However, an examination of the first instance proceedings reveals that while the applicant possibly might have realised that further technical features in the claims could lead to the identification of potentially patentable and searchable subject-matter, it would be exaggerated to state that the applicant could have been expected to recognise what amendments he needs to make there and then. He was apparently not invited to make such amendments - and indeed the ED had no obligation to invite him -, but apparently he also could not have been expected to realise that by way of the further amendments he might at least achieve the recognition of a searchable invention. Apparently the ED did accept that the claims on file at that time do contain technical features and as such are not excluded from patentability on the basis of A 52(2) EPC, see point 3 of the Minutes, first sentence. However, all the recognised technical features were considered notorious and not contributing to inventive step. At no time did the ED indicate (at least according to the file) that it intends to perform a further search. In other words, there is some justification for the applicant for not trying to find further technical features which could potentially overcome the A 56 objections of the ED. [4.5] In view of these particular circumstances, the board decided to admit the amendments to the claims submitted for the first time at the OPs before the board and, in accordance with A 111(1) second sentence, to remit the present case to the department of first instance for further prosecution, starting with an additional search. Should you wish to download these decisions, click here and here. The file wrappers can be found here and here. NB: I guess the IPKat was the first to report T 1782/09 (here).
1970 | 3398
T 1535/10 – K.O. Because Of c/o?
K’s Law – The ebook
T 1535/10 – K.O. Because Of c/o? 24 Aug 2011
This decision deals with the admissibility of the appeal filed by the opponent following the rejection of its opposition by the Opposition Division (OD). The opponent (Dynamit Nobel Defence GmbH) was represented by professional representative (PR) Andreas S., member of the law firm (Vertretergemeinschaft) “Patente, Marken & Lizenzen”, which is closely associated with the Chemetall company, as its postal address suggests: Patente, Marken & Lizenzen c/o Chemetall GmbH Trakehner Straße 3 60487 Frankfurt am Main The impugned decision was sent on May 4, 2010 to Andreas S. Chemetall GmbH Trakehner Straße 3 60487 Frankfurt am Main Mr P. of Chemetall GmbH signed the receipt on May 14, 2010. PR Franz U. of “Patente, Marken & Lizenzen” signed a receipt on May 17, 2010. The appeal was filed on July 15, 2010, i.e. more than ten days plus two months after the date of dispatch. In what follows the Board deals with the question of whether the appeal was filed in time or not. *** Translation of the German original *** [1] Pursuant to A 108, first sentence, notice of appeal shall be filed, in accordance with the Implementing Regulations, at the EPO within two months of notification of the decision. [1.1] According to the Implementing Regulations, decisions incurring a period for appeal shall be notified by registered letter with advice of delivery (R 126(1)). According to R 126(2), such letter shall be deemed to be delivered to the addressee on the tenth day following its posting, unless it has failed to reach the addressee or has reached him at a later date; in the event of any dispute, it shall be incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be. If a representative has been appointed, notifications shall be addressed to him (R 130(1)). If several representatives have been appointed for a single party, notification to any one of them shall be sufficient (R 130(2)). Time limits are determined pursuant to R 131(1) and (4). [1.2] The impugned decision of the OD has been posted as registered letter with advice of delivery on May 4, 2010, in compliance with R 126(1). It was addressed to the PR of the [opponent]. Consequently, this date is decisive for the computation of the time limit for filing an appeal. Application of the ten-day-rule according to R 126(2), first alternative, as well as R 131(1) and (2) shows that the time limit for filing the appeal ended on July 14, 2010, unless there has been a delay of delivery that is imputable to the EPO, which contradicts or invalidates the legal fiction of delivery within ten days pursuant to A 126(2), as the case may be. [1.3] The [opponent] has invoked such a delay of delivery and pointed out that the ten-day-rule could not be applied in the present case because the delivery was not duly directed to the PR, because of the deficient postal address, and, notwithstanding the receipt on May 14, 2010 by a third party, which it said not to have been authorised to receive mail (Mr P.), the delivery had been received by the representative only on May 17, 2010 (R 125(4), R 126(2), second alternative as well as R 130(1) and (2)). 1971 | 3398
T 1535/10 – K.O. Because Of c/o?
K’s Law – The ebook
[1.4] Regarding the objection of a deficient postal address, the letter sent on May 4, 2010, enclosing the impugned decision actually contains an error with respect to the address. The address did contain all particulars of the PR (Andreas S.), the name of the law firm (Patente, Marken & Lizenzen), the indication of street and city (Trakehner Straße 3, 60487 Frankfurt am Main), as well as the name of the Chemetall company, at the business location of which the PR resides. However, the supplement “c/o” was missing before the latter. [1.4.1] However, contrary to the [opponent’s] opinion, this incorrectness does not result in the transmission of the impugned decision having to be qualified as not directed to the PR of the [opponent], in violation of R 130(1). Irrespective of the fact that the representative has explicitly been named in the first place of the address field, and, thus, was unambiguously designated as (final) recipient, the [opponent] has not been able to convince the Board that the assignment of the letter was impossible or even more than insignificantly complicated only because the supplement “c/o” was missing before the company designation Chemetall GmbH. [1.4.2] First, the affirmation according to which Mr P. in the post room (Poststelle) would not have accepted the letter had the “c/o” supplement been used but would have referred the post man to the office of the law firm is in contradiction with its other submissions. As a matter of fact, when asked by the Board, the [opponent] has explained that the law firm did not even have its own post room but rather used the material and facilities of Chemetall GmbH. The use of the franking machine of Chemetall GmbH for the receipts that were sent back to the EPO, both in the opposition and appeal proceedings […] provides further evidence for the fact that the law firm, and in particular the PR of the [opponent] did not himself handle the mail circulation but used the post room of Chemetall GmbH. As the PR and the law firm of which he was a member had no post room but used the central post room of Chemetall GmbH for its incoming and outgoing mail, Mr P., who worked in this very post room, could not have referred the post man delivering the letter containing the impugned decision [to the post room of the law firm], even if the “c/o” supplement had been provided in the address field, because there was no post room to which he could have referred. [1.4.3] Moreover, the various deliveries that have been made to the same address without the “c/o” supplement during the opposition and appeal proceedings and which have all been transmitted to the law firm by the post room of Chemetall GmbH, and in particular also by Mr P. working in the post room – and, in the case of the summons to oral proceedings before the OD, even on the very day of receipt – provide evidence that the assignment of the mail directed to the PR manifestly did not create difficulties. [1.4.4] Moreover, the Board endorses the inquiring remark of the [patent proprietor] […] why the PR who invokes a wrong address used in mailings on behalf of the EPO, based on the missing “c/o” supplement, has not drawn the attention of the EPO to this error in connection with earlier identical mailings made during the opposition proceedings. The PR of the [opponent] has not explained why he had not taken this obvious action but has remained completely inactive. [1.5] The objection of the [opponent] concerning the non-imputability of the receipt of the impugned decision by Mr P., who it declared not to be authorised [to receive mail on its behalf], on May 14, 2010, is related to the question to whom the risk of delayed transmission of a mail between the post room of Chemetall GmbH to the PR of the [opponent], who has confirmed receipt on May 17 only, is to be imputed. [1.5.1] It follows from R 125(4) and R 126(2) that the EPO has to bear the risk arising in its own sphere, as well as the transport risks, such as the risk of losing a letter on the way to the recipient. [1.5.1] However, risks that arise in the sphere of organisation and control of the recipient, such as the risk that employees or other persons in charge of receipt do not transmit the letter deposited at the business address, or the risk that a fax the receipt of which has been confirmed with an “OK” comment sent by the receiving apparatus is “lost” due to a malfunction of the memory or the printer of the apparatus (for the transfer of risks in the latter case, see T 580/06 [1.4.2]) are to be distinguished ; the recipient himself has to bear such risks. For a letter to be deemed to have reached the sphere of organisation and control of the recipient, it is sufficient that the letter reaches the recipient and that the recipient has the possibility of taking notice of the letter. The case law of the Boards of appeal has acknowledged that this possibility is given when an employee of the addressee or another person which the addressee (here: the PR) has put in charge of receipt accepts the mail on his behalf. It is not necessary that the PR “receives” and/or takes notice [of the mail] on behalf of his client. The fact that the recipient (here: the PR) takes notice of the mail only several days or even weeks after [the receipt] is 1972 | 3398
T 1535/10 – K.O. Because Of c/o?
K’s Law – The ebook
not relevant because the only legal condition, i.e. the delivery to him, is fulfilled (T 247/98 [1]; T 172/04 [4]; T 743/05 [1.6-8]; T 261/07 [1.6]; T 529/09 [4]). Decision T 703/92, which has been invoked by the [opponent] is not to be understood differently. To the extent (see point [1.1.1]) that this decision states that in order to assess the effectiveness of the transmission it is relevant whether and when the representative was in possession of the complete decision, this statement concerned a particular situation that was different from the situation of the present appeal proceedings. This decision dealt with a violation of R 81(1) EPC 1973 (now R 130(1)) because the written reasoned decision and the minutes of the oral proceedings had not been sent to the authorised PR but to the opponent itself. This deficiency of delivery was only remedied by a (new) delivery to the representative pursuant to R 82 EPC 1973 (now R 125(4)). In contrast, in the present case the impugned decision was sent to the authorised PR of the [opponent] right away and the only question that matters is when this delivery has taken place: when the mail was handed over to an employee in the post room of Chemetall on May 14, 2010, or when the PR confirmed that he had taken notice, on May 17, 2010. In this respect the [opponent] pointed out that Mr P. was not an employee of its PR or of the law firm and that he was not authorised to receive mail on behalf of the representative or the law firm, and that, therefore, only the fact that the PR had taken notice mattered. [1.5.3] Consequently, it is decisive whether the alleged delayed transmission of the letter containing the impugned decision subsequent to the transmission of the letter by the post man to Mr P. is still part of the transport, for which the EPO is responsible, or if it occurred within the sphere of control and responsibility of the PR. The latter would be the case if, irrespective of the fact that, as alleged by the [opponent], Mr P. was not authorised to receive mail, his receipt of the letter would be imputable to the PR, because he was enabled as from this moment to take notice of the impugned decision. Indeed, for the PR being enabled to take notice, he does not have to have taken possession of the letter, but it is at least necessary that the letter is brought so close to him that it only depends on him whether he takes notice of the letter or not. [1.5.4] Insofar as the [opponent] has affirmed that Mr P. was not authorised to receive mail addressed to the PRs of the law firm, as he has declared in his declaration in lieu of oath dated May 10, 2011, this assertion does not conflict with the assignment of the receipt of the impugned decision in the post room of Chemetall GmbH to the PR. Even if Mr P. has not been expressly authorised, the law firm – and, consequently, the PR – has organised the mail circulation in a way which created the impression, at least towards the outside world, that the post room belonging to Chemetall GmbH (and which is, therefore, external to the law firm) was the law firm’s own post room. According to the [opponent’s] own submissions, the law firm was so closely connected to Chemetall GmbH, both organisationally and infrastructurally, that at least as far as mail circulation is concerned, they could not be distinguished from outside. This close connection is based on the use of the stationery of Chemetall GmbH with all its indications, including its entry into the commercial register, its VAT identification number and its banking details. The [opponent] has also admitted a personal connection consisting in that some law firm employees were also employees of Chemetall GmbH. Moreover, from an organisational and infrastructural point of view, the connection comprised, as the [opponent] admitted, the use of material and facilities of Chemetall GmbH, such as the post room, including the franking machine, and the e-mail server (chemetall.com). Finally, the PR of the [opponent] and the law firm authorised by it also appear to have used the deposit account […] of Chemetall GmbH for paying the opposition fee and the appeal fee. All in all, the close connection between the law firm and Chemetall blurred the legal independence of the former, when seen from outside, to such an extent that the law firm authorised by the [opponent] and the PR of the [opponent] have to accept to be treated, as far as the organisation of mail circulation is concerned, as if the post room of Chemetall GmbH also was – or had to be deemed to be – its own mail room.
1973 | 3398
T 1535/10 – K.O. Because Of c/o?
K’s Law – The ebook
Consequently, the question of whether Mr P. was expressly legally authorised to receive mail addressed to the law firm or to PRs belonging to it, is not relevant, because de facto the law firm was, as far as mail circulation is concerned, so closely connected to the post room of Chemetall GmbH that its post room simply served as post room of the law firm or appeared to do so, when seen from outside, respectively. [1.6] Apart from these considerations, there is another reason why the PR of the [opponent] and the law firm which was authorised by the [opponent] during the opposition and appeal proceedings have to accept that the receipt of mail addressed to them in the post room of Chemetall GmbH is deemed to be their proper receipt and why they have to bear the consequences of any internal delay in the (internal) transmission of mail from the mail room of Chemetall GmbH to their offices. In the exercise of his professional duties, a PR has to ensure that he can be always be reached by mail, without any restriction (see Regulation on Discipline for Professional Representatives, OJ EPO 1978, 91, OJ EPO 2008, 14; Code of Conduct of the Institute of PRs (epi) before the EPO, OJ EPO 2003, 523). This general basic rule for dealings between the PR and his client, the EPO and other PRs requires a proper mail room (be it only a letter box) or some other arrangement for receiving mail. In the present case, this means that the PR of the [opponent] and the law firm authorised by it were allowed to compensate for the absence of a proper post room by using a “foreign” mail room (here: the mailroom of Chemetall GmbH), but they have to accept that, as far as the delivery of communications that trigger a time-limit is concerned, this mail room is deemed to be their proper mail room. A different understanding, according to which in a case where there is no proper mail room it is not the receipt in the “surrogate” post room that triggers the moment of delivery and, therefore, the time limit, but the moment at which the PR takes notice of the content of the communication, would create insecurity for all users of the European patent system because in this case the answer to the question of whether the delivery had actually taken place would depend entirely on the honesty, the good will or the organisational skills of the PR. [1.7] Finally, the [opponent] cannot invoke the sheet of time limits (Fristenzettel) of the law firm which the [opponent] has filed together with its written submission of December 16, 2010 and on which the PR Franz U., who was also authorised by the [opponent], had written: “Attention! No 10-day rule!”
As noted above, the ten-day rule according to R 126(2) did apply, which means that the PR made an error of law. According to the established case law of the Boards of appeal, ignorance or erroneous interpretations of a provision of the EPC, in particular concerning the computation of time limits, are not to be taken into account (see e.g. J 31/89, Case Law of the Boards of appeal, 6th edition, 2010, VI E.7.4.2b) Therefore, the [opponent] cannot successfully invoke the – erroneous – computation of the time limit on behalf of the PR in order to rely on a delivery after May 14, 2010. [2] Therefore, the letter containing the impugned decision was delivered on May 14 in the post room at the business location of Chemetall GmbH, with effect also for the law firm and the PR of the [opponent]. The fact that the latter only took notice of the impugned decision on May 17, 2010, as pointed out by the [opponent], is not relevant for the question of receipt and, therefore, of the effectiveness of the delivery, which had been made on May 14, 2010. Consequently, the delivery of the impugned decision occurred within the ten day time limit pursuant to R 126(2) and the time-limit for filing an appeal pursuant to A 108(1), first sentence, as well as R 131(1) and (2) expired on July 14, 2010. Thus the appeal filed by letter on July 15, 2010, reached the EPO only after expiry of the time limit for filing an appeal and is, therefore, inadmissible. 1974 | 3398
T 1535/10 – K.O. Because Of c/o?
K’s Law – The ebook
Should you wish to download the whole decision (in German), click here. The
file
wrapper
can
be
found
here.
NB: You might want to have a look at the French summary offered on Le blog du droit européen des brevets.
1975 | 3398
T 1686/07 – On Things You Would Not Do
K’s Law – The ebook
T 1686/07 – On Things You Would Not Do 23 Aug 2011
The applicant filed an appeal against the decision of the Examining Division (ED) to refuse its application. The reason given for the refusal was that the requests on file did not comply with A 56 and A 123, respectively. Claim 1 of the main request before the Board read (in English translation): System for stock exchange trading having a central processor (2,11) for handling a commercial transaction, the central processor being connectable, via an interface (3,12), with at least one intermediary calculator (4,13) for transmitting commercial orders to the central processor (2,11), and, via another interface (5,14), with a price calculator (6,15,16,36) for fixing a commercial price, wherein the central processor (2,11) transmits a price request (B) to the price calculator (6,15,16,36) after having received a stock price request from the intermediary calculator (4,13), the price calculator (6,15,16,36) fixes a commercial price and sends a corresponding price response (C) back to the central processor (2,11), the central processor (2,11) generates an stock price response (D) having an unambiguous transaction identifier and sends it to the intermediary calculator (4,13), the intermediary calculator (4,13) directs a commercial request (H) and the transaction identifier to the central processor (2,11) and the central processor (2,11) transmits a commercial confirmation (I,K) to the price calculator (6,15,16,36) and/or the intermediary calculator (4,13) if the transaction identifiers coincide, characterised in that the price calculator (6,15,16,36) transmits the current price (E) to the central processor (2,11) whenever the price is modified or in regular time intervals for a presettable time period, the central processor (2,11) generates a stock price update (F) with an unambiguous transaction identifier at each price modification and sends it to the intermediary calculator (4,13), wherein a stock price update channel is provided for the stock price update (F) in the interface (3,12) between the central processor (2,11) and the intermediary calculator (4,13), there being no other communication on this channel, the intermediary calculator (4,13) directs the commercial request (H) together with the last transmitted transaction identifier to the central processor, and the central processor compares the transaction identifier transmitted with the commercial request (H) with the current transaction identifier. The Board found this claim to be novel over the closest prior art, document D4. It then pursued with the inventive step analysis. *** Translation of the German original *** Objective technical problem [6] From a technical point of view, the distinguishing features, when taken together, solve the objective problem of continuously updating the data that are transmitted from a processor to a calculator (e.g. in real-time […]) and of identifying in the processor what the update level of the calculator is whenever the calculator generates feedback based on the data for the processor. This problem is not based on a cognitive (e.g. commercial) content (Bedeutungsinhalt) of the data. Therefore, the Board considers the problem to be technical. A 56 – Inventive step [7.1] A 56 requires a non-obvious technical contribution, see T 641/00 (Comvik) [headnote 1]. Therefore, obvious contributions and non-technical (e.g. commercial) contributions cannot fulfil the requirements of this article.
1976 | 3398
T 1686/07 – On Things You Would Not Do
K’s Law – The ebook
[7.2] The problem of possible overlaps between stock price updates and commercial requirements necessarily occurs in the operation of a commercial system and is also mentioned in the prior art, see, for example, D4 […] Therefore, the underlying technical problem of ensuring great up-to-dateness (Aktualität) of data that are exchanged between two communication partners and of allowing to check this up-to-dateness is obvious. Therefore, an inventive contribution could only reside in the features if the solution, which are assessed in what follows. [7.3] According to D4, a great up-to-dateness of the stock exchange data in the commercial system is obtained by [ensuring] that the price calculator (rate server 8) receives a continuous flux of price data (“price feeds, such as Reuters price feeds”). It is technically obvious to use the received updated (stock price) data in other places of the computer system where the updated data can be useful from a commercial point of view (in particular in the central processor and in the intermediary calculator): the price calculator, which receives the updated data from outside (price feeds) only needs to transmit them within the computer system – if this is desired at all […]. Therefore, an inventive contribution could only reside in the way in which the data are transferred. [7.4] If a great data transmission speed is required [for the data transmission] between the central processor and the customer’s intermediary calculator, then it would be obvious to modify the technical infrastructure by providing a channel for the desired stock price transmission and, in extreme cases, to use this channel exclusively for transmitting those data, i.e. not to use it for transmitting other data as well. This corresponds to the known concept of a dedicated line which is allocated exclusively to one user so that this user can transmit his data without delay, without having to wait for the establishment or the clearance of a connection. Providing a particular dedicated line should be obvious at least for the known “Reuters price feeds” (D4) and would lend itself more generally for any data transmission where, for whatever reasons, speed is the highest priority. The economic drawback of a line that is used exclusively, i.e. the higher costs generated by this implementation, is both predictable and known, and the skilled person has to weigh it against its technical usefulness. However, the economic decision to accept the greater costs does not correspond to a technical contribution and, therefore, cannot support the assumption of inventive step. As already mentioned (also by the appellant) a fast transmission of stock price data can even be technically detrimental […]. It is true that the mere acceptance of a drawback is not something that the skilled person would envisage, but it nevertheless does not correspond to a technical contribution and, therefore, cannot support the assumption of an inventive step. (see T 157/97 [4.2.4]) […] [7.5.3] Therefore, the technical contribution made by the computerized commercial system of claim 1 with respect to D4 is obvious. As a consequence, the claim does not involve an inventive step. Should you wish to download the whole decision (in German), please click here. The file wrapper can be found here.
1977 | 3398
T 786/08 – Only Words
K’s Law – The ebook
T 786/08 – Only Words 22 Aug 2011
The applicant filed an appeal against the decision of the Examining Division (ED) to refuse its application. The reason given for the refusal was that the request on file did not comply with A 123(2), A 83, and A 84. Claims 1 and 5 of the application as filed read: 1. A substantially pure JNK-interacting protein 1 (JIP-1) polypeptide or a biologically active fragment thereof. 5. The polypeptide of claim 1, said polypeptide comprising an amino acid sequence substantially identical to SEQ ID NO:1. (my emphasis) The application as filed also contained the following paragraph :
Claim 1 of the request before the Board read: 1. A c-Jun NH2 terminal kinase (JNK)-interacting protein 1 (JIP-1) polypeptide, said polypeptide comprising SEQ ID NO:1, or SEQ ID NO:1 with at least one conservative amino acid substitution, wherein the polypeptide specifically inhibits the activity of JNK. (my emphasis) In what follows, the Board examines whether this claim fulfills the requirements of A 123(2): [2] The ED […] came to the conclusion that the wording “with at least one conservative amino acid substitution” had no basis in the following passage of the published WO application […]: “A substantially identical polypeptide sequence differs from a given sequence only by conservative amino acid substitutions or by one or more non-conservative substitutions, deletions, or insertions located at positions which do not destroy the function of the polypeptide compared to wild-type JIP-1”. [3] The ED noted that present claim 1 no longer comprised the term “only” […], which was present [in] the published WO application, and concluded that the expression in claim 1 “with at least one conservative amino acid substitution” went beyond the application as filed because it did not exclude “additional modifications” other than conservative amino acid substitutions, unlike the original wording. [4] It should be established whether or not the expression in claim 1 “with at least one conservative amino acid substitution” goes beyond the application as filed. The board observes that the passage […] of the original WO application […] relates to two different options linked by the term “or” (exclusive), namely (i) a polypeptide is “substantially identical” to the given polypeptide if it differs from a given sequence only by conservative amino acid substitutions or (ii) a polypeptide is “substantially identical” to the given polypeptide if it differs from a given sequence only by non-conservative amino acid substitutions, deletions or insertions. Therefore, it cannot be derived from this passage (with or without the term “only” […]) that a polypeptide is “substantially identical” to the given polypeptide if it differs from a given sequence by a combination of conservative and non-conservative amino acid substitutions, deletions or insertions. 1978 | 3398
T 786/08 – Only Words
K’s Law – The ebook
[5] It follows that the board neither sees that the selection of option (i) […], with the omission of “only”, resulting in the expression in present claim 1 “with at least one conservative amino acid substitution”, goes beyond the application as filed, nor that claim 1 relates (as the ED suggested […]) to “additional modifications” other than conservative amino acid substitutions. [6] Therefore, the subject-matter of claim 1 does not go beyond the content of the application as filed. I always find such Boolean reasonings mind-bending. Let us simplify the notation. “A” shall stand for “conservative amino acid substitutions” and “B” for “one or more non-conservative substitutions, deletions, or insertions located at positions which do not destroy the function of the polypeptide compared to wild-type JIP-1” The description provides the following “definition”: A substantially identical polypeptide sequence differs from a given sequence only by A or by B. This is where the first problem comes in. What is “only by A or by B” supposed to mean? Does the “only” concern “by A” exclusively or “by A or by B”? In other words we have to read – I call this “option S” (for “short”) – A substantially identical polypeptide sequence differs from a given sequence (only by A) or by B. or rather – let me call this “option L” (for “long”) – A substantially identical polypeptide sequence differs from a given sequence only (by A or by B). I believe “option L” is more likely, for both linguistic and substantial reasons. Second problem: is the “or” exclusive or non exclusive? This question only makes sense when option L is chosen, because the sequence cannot differ simultaneously “only by A” and “by B”. So, if option L is chosen and the or is non-exclusive (what I call “option LN”), we have A substantially identical polypeptide sequence differs from a given sequence only (by A or by B or by (A and B)). which should be equivalent to A substantially identical polypeptide sequence differs from a given sequence by A only, or by B only, or by (A and B) only. Alternatively, if the “or” is exclusive, we have what I refer to as “option LE”: A substantially identical polypeptide sequence differs from a given sequence by A only, or by B only. For some reason that is not clear to me, the Board – ex cathedra - opts for an exclusive or. And indeed, it seems to understand the “definition” along option LE, because this is what the Board appears to say in the first paragraph of point [4] of the decision. Claim 1 claims a polypeptide having “at least one A”. The insertion of the “at least one” is not a problem, because it is implicit in the “definition”. However, there is a problem : the “only” has disappeared, which means that a polypeptide that differs from the given sequence by both at least one A and by B would be covered by the claim as amended, whereas it does not qualify as “substantially identical” according to option LE. So I would think that the ED was right to criticize the amendment. Let me try to state things more graphically. To do so, I introduce alternative “C” which shall correspond to substitutions etc. which are different from both A and B.
1979 | 3398
T 786/08 – Only Words
K’s Law – The ebook
For instance, a point lying in the intersection of domain A and domain C represents a polypeptide which differs from SEQ ID NO:1 by both “A-type” and “C-type” modifications, etc. The “definition”, if understood according to option LE, covers the following shaded domain:
The claim as rejected by the ED covers sequences differing by [at least one] A:
I believe that this claim covers subject-matter not covered by the definition (understood along LE), because it also covers the whole domain of intersection between domains A and C. In other words, we have an A 123(2) problem. What if the “or” is inclusive (option LN), which is, in my opinion, what the drafter of the patent intended? I would say that in this case also, there is an A 123(2) problem. The domain covered by the definition (option LN) is:
1980 | 3398
T 786/08 – Only Words
K’s Law – The ebook
Still, the claim as depicted above covers a domain that extends beyond the domain covered by the definition (option LN), i.e. it also covers the intersection of A and C, which is not covered by the definition. Obviously, the difficulty would disappear if the word “only” was inserted into the claim, because then the claim would cover the following domain:
which is of course covered by the definition, according to both LE and LN. So, at the end of the day I have to agree with the ED and disagree with the Board. Is there an error in my reasoning? If so, please let me known where. NB: I would like to thank my colleague Alban Sidhu who has been willing to dive into this complex subjectmatter with me. Should you wish to read the whole decision, click here. The file wrapper can be found here.
1981 | 3398
T 1700/10 – Bad Company
K’s Law – The ebook
T 1700/10 – Bad Company 20 Aug 2011
A 19(2) governs the composition of Opposition Divisions (OD) : An OD shall consist of three technically qualified examiners, at least two of whom shall not have taken part in the proceedings for grant of the patent to which the opposition relates. An examiner who has taken part in the proceedings for the grant of the European patent may not be the Chairman. Before a decision is taken on the opposition, the OD may entrust the examination of the opposition to one of its members. Oral proceedings (OPs) shall be before the OD itself. If the OD considers that the nature of the decision so requires, it shall be enlarged by the addition of a legally qualified examiner who shall not have taken part in the proceedings for grant of the patent. In the event of parity of votes, the vote of the Chairman of the OD shall be decisive. Some time ago, we have seen decision T 1349/10 where an OD was criticized because its chairman had taken part in the proceedings for the grant of the opposed patent, which is a violation of A 19(2), second sentence. Apparently (and surprisingly to me) such errors are not so rare. The present decision deals with a case where A 19(2), first sentence was not complied with. [2] Under A 19(2), first sentence, “[a]n OD shall consist of three technically qualified examiners, at least two of whom shall not have taken part in the proceedings for grant of the patent to which the opposition relates.” (emphasis added) [3] In the present case, the first and the second examiner of the OD (Mr M.S. and Mr J.S.M.) had taken part in the proceedings for the grant of the opposed patent. For example, they had signed Form 2035.4 (dated 22 October 2007) and they had been identified as first and second examiners in the communication under R 51(4) EPC 1973 posted on 26 November 2007. As members of the OD, Mr M.S. and Mr J.S.M., inter alia, were present at the OPs before the OD and signed the decision of the OD dated 8 June 2010. Only one of the examiners signing the decision of the OD had not taken part in the proceedings for the grant of the patent. For this reason, the composition of the OD violated A 19(2), first sentence. [4] Violations of A 19(2) were considered to be substantial procedural violations which led to a remittal of the case under A 111(1) and to the reimbursement of the appeal fee in several cases (see decisions T 251/88, T 939/91, T 382/92, T 476/95, T 838/02, T 1349/10). [5] The Board is aware that in two of the cases mentioned above (T 251/88 and T 838/02), the boards asked the appellant or all parties whether they invoked the procedural violation before they decided on the remittal. In both cases, the patent had been revoked by the OD. In the judgment of this Board, violations of A 19(2) should lead to a remittal regardless of the parties’ position at least in situations where third parties are affected by the outcome of the defective first instance proceedings, like in the present case where the patent was maintained in the opposition proceedings (see also decision T 1349/10 [5]). [6] The decision under appeal therefore has to be set aside and the case has to be remitted to the department of first instance. As the remittal is the consequence of a substantial procedural violation, the reimbursement of the appeal fee under R 103(1)(a) is equitable in the Board’s judgment. Should you wish to download the whole decision, click here. You can find the file wrapper here.
1982 | 3398
T 967/08 – D-ISO-lation
K’s Law – The ebook
T 967/08 – D-ISO-lation 19 Aug 2011
Most patent drafters are well aware that when you characterise an invention by parameters which have to be measured, it is necessary to unambiguously define the measurement method. When the inventor provides a well documented measurement standard, such as an ISO or ASTM standard, everything looks fine. But is it? Not necessarily, as the present decision shows. The decision deals with an appeal against the refusal of the application under consideration by the Examining Division. Claim 1 before the Board read: A process for the Direct Synthesis of trialkoxysilane of formula HSi(OR)3 wherein R is an alkyl group containing from 1 to 6 carbon atoms using a member selected from the group consisting of nanosized copper, nanosized copper oxides, nanosized copper chlorides, other nanosized copper salts, and mixtures thereof, having an average particle size in a range from 0.1 to 100 nanometers, as sources of catalytic copper, said process comprising: (a) forming a reaction mixture comprising a thermally stable solvent, silicon metal, a catalytically effective amount of said nanosized copper catalyst precursor; (b) agitating and heating this mixture to form copper-activated silicon in situ and injecting into said reaction mixture an alcohol to react with said copper-activated silicon to produce said trialkoxysilane; and (c) recovering said trialkoxysilane from the reaction product. (my emphasis) [2.1] The Board mentioned in its communication that document D4 stated the following […]: “The general description of an average particle size within a powder is thus dependent upon both the type of size distributions and the method of calculation from moments of the particle size mean.” The appellant did not provide any evidence for its statement that the values of average particle sizes determined by different methods were similar. Moreover, it is known that these values may differ considerably. Reference is made to T 1819/07, where the following is stated under point 3.2 of the reasons: “... average particle sizes (more precisely: mean particle diameters) such as the arithmetic mean diameter (or count mean diameter) ð, the volume or mass mean diameter ðv and the mean surface area diameter ðs are among the most commonly used quantities for describing the average diameter of a particle population (...). The values of the average particle sizes ð, ðv, and ðs differ for any particle size distribution (...). … Hence, there are different methods for determining the average particle size yielding values for the same particle distribution and these generally differ, under particular conditions by one or two orders of magnitude.” [2.2] The appellant referred to the first complete sentence in the right-hand column on page 13 of document D4 which reads as follows: “Equations for the calculations of average particle sizes or average particle diameters from a given particle size distribution are defined in ISO 9276-2(39) to give a unique definition of average size, derived from the moments of a size distribution.” The respective standard D7 does not, however, give one definition of average particle size but rather provides equations for calculating the different kinds of averages (see document D7, third page (page 1 of ISO 92762:2001), namely the arithmetic averages (chapter 5.1), weighted averages (chapter 5.2) and further average particle diameters (Annex B); see page 5, fourth to second line from the bottom, which refer to length, surface and volume averages). [2.3] For these reasons the Board concludes that 1983 | 3398
T 967/08 – D-ISO-lation
K’s Law – The ebook
the person skilled in the art would equally consider several methods when determining average particles sizes, and these different methods yield considerably different values.
Claim 1 refers to a range of average particle sizes without indicating which type of average is to be taken or by which method it is to be determined. Hence, for a given particle size distribution, the average particle size determined by one method may be within the range indicated in claim 1 whereas it may be outside said range when determined by another method. Therefore, this feature is unclear. [2.4] “A claim comprising an unclear technical feature, ... entails doubts as to the subject-matter covered by that claim. This applies all the more if the unclear feature is essential with respect to the invention in the sense that it is designed for delimiting the subject-matter claimed from the prior art, thereby giving rise to uncertainty as to whether or not the subject-matter claimed is anticipated.” (T 728/98 [3.1]). The latter applies to the feature “average particle size” in the present case […]. [2.5] For these reasons claim 1 of the main request and of auxiliary request II is unclear. So when you cite a standard, it might be a good idea to actually have a look at it. ;-) To read the whole decision, click here. The file wrapper can be found here.
1984 | 3398
T 1680/08 – Iron Lung
K’s Law – The ebook
T 1680/08 – Iron Lung 18 Aug 2011
The “White Book”, in its paragraph I.B.4.4 makes the following statement: “In G 1/07 the Enlarged Board emphasised the difficulty of providing a definition of the term “treatment by surgery.” The boards of appeal would be better suited to define the boundaries of a more narrowly construed concept of “treatment by surgery” in situations other than the one underlying the referral. The boards of appeal may choose a similar case-by-case approach with regard to the concept of treatment by therapy.” (my emphasis) The present decision is such a post-G 1/07 decision. It deals with a method for determining pressure levels of a lung ventilated by an artificial ventilator. To be more precise, claim 1 of the main request before the Board read : 1. Method for determining airway pressure levels at which certain lung conditions of a lung ventilated by an artificial ventilator occur, comprising the steps of: a) obtaining data samples of the CO2 concentration of the expired gas over a single breath, b) selecting a plurality of data samples from said obtained data samples, c) calculating a mean tracing value being sensitive to changes of alveolar dead space on the basis of said selected data samples, d) repeating steps a), b) and c) for obtaining a plurality of mean tracing values, and e) changing the airway pressure of the artificial ventilator, wherein from the observation of the resulting course of the plurality of calculated mean tracing values the airway pressure level at which alveolar opening or lung overdistension or lung open condition or alveolar closing occurs is detected. The patentability assessment raises interesting questions. Traditionally, it was held that therapy relates to the treatment of a disease in general or to a curative treatment in the narrow sense as well as the alleviation of the symptoms of pain and suffering (see e.g. T 144/83 [3]). Subsequent decisions have somewhat extended this definition. See, for instance, T 24/91 [2.7], which dealt with a treatment for myopia: The meaning of the term “therapy” is not restricted to curing a disease and removing its causes. Rather, this term covers any treatment which is designed to cure, alleviate, remove or lessen the symptoms of, or prevent or reduce the possibility of contracting any disorder or malfunction of the human or animal body. But what about keeping a person alive? Does this qualify as therapy? Is death an illness or a disorder of the human body? Or is the above definition still too narrow? [2] Pursuant to the transitional provisions relating to the Act revising the EPC of 29 November 2000 as decided by the Administrative Council on 28 June 2001, A 53 applies to European patent applications pending at the time of its entry into force, and thus to the application under dispute in the present case. [2.1] Claim 1 refers to a method for determining airway pressure levels at which certain lung conditions of a lung ventilated by an artificial ventilator occur. The aim of the method is to determine the pressure levels at which alveolar opening or lung over distension or lung open condition or alveolar closing (hereinafter called relevant pressure levels) occur. The knowledge of these relevant pressure levels for an ailing lung is important to be able to determine the ventilator settings for the optimal, most efficient, ventilation of the patient and most efficient recruitment manoeuvre. In essence the method consists of connecting the patient to the artificial ventilator, changing (increasing or decreasing) the airway pressure of the artificial ventilator step by step and for each of them calculating a plurality of mean tracing values being sensitive to changes in the dead space on the basis of a plurality of data 1985 | 3398
T 1680/08 – Iron Lung
K’s Law – The ebook
samples of the CO2 concentration of the expired gas over single breaths, from which the relevant pressure levels can be determined. This method is explained in details in the description of the patent application. It is however immediately apparent that the above method requires the patient to be connected to the artificial ventilator in order to apply pressure to its lungs and to measure the concentration of CO2 in the expired gas. It is also apparent that each pressure level applied to the lungs of the patient by the artificial ventilator when the airway pressure is changed according to the claimed method is not in any way superimposed on a “normal” ventilation pressure, but is the only pressure actually applied to the patient’s lungs. In other words, the method is not applied on top of any normal artificial ventilation of the patient but during the ventilation phase in which the method is carried out it is the only artificial ventilation effectively applied to the patient. Therefore this, so to say, testing phase is just as vital for the survival of the patient than any other normal artificial ventilation. It follows that the ventilation phase during which the method is executed cannot be distinguished from the normal artificial ventilation applied to the patient. Further, the step of changing (increasing or decreasing) the airway pressure of the artificial ventilator in order to determine the relevant pressure levels cannot be distinguished from what a medical doctor would do in order to adapt an artificial ventilation to a given patient. As a matter of fact, the same parameter, namely the airway pressure, which is used to adapt or adjust a normal artificial ventilation to a given patient, is changed when the claimed method is carried out. It is further to be noted that the claimed method cannot be considered as a momentarily short change of the ventilation parameters without any influence on the ongoing therapy. As a matter of fact, the claim defines neither any restrictive period of time for the measurements nor any specific intensity of the airway pressure changes. And according to the description of the specific embodiment (falling under the scope of the claim), in particular in relation to Figures 2 and 8, the detection phase extends over several tens of breaths, so that this period of time is clearly not insignificant but part of the ongoing therapy time.
Thus there is a functional and indissociable link between the claimed method and any artificial ventilation practised on a connected patient. It is indisputable that artificial ventilation is a therapeutic method because it aims at keeping the patient alive. Whilst it is admitted that the primary intention of the appellant was not to protect a method for treatment but a method for determining the relevant pressure levels, the Board is of the opinion that this is of little importance since the Enlarged Board has confirmed in G 1/07 that the presence of a single therapeutic or surgical step is sufficient to exclude the method from patentability: “... in the EPC revision the European legislator deliberately maintained the exclusions under A 52(4) EPC 1973 in the now A 53 c). Thereby the principle has been confirmed that medical and veterinary practitioners’ freedom to use the best available treatments to the benefit of their patients uninhibited by any worry that some treatment might be covered by a patent is protected by excluding these activities from patentability. Excluding from patentability also multi-step methods which comprise or encompass a therapeutic or a surgical step serves to give full effect to that legislative purpose. Therefore, the principle developed in the jurisprudence that the presence of one therapeutic or surgical step in a multi-step method 1986 | 3398
T 1680/08 – Iron Lung
K’s Law – The ebook
excludes that method from patentability is not only formally justified by the fact that the exclusion under A 53 c) does not contain any limitation as to the defined methods being excluded only when claimed as such. More importantly, it is also justified as to substance, i.e. it serves to enable achieving the legislative purpose served by the exclusion.”(emphasis added). For the above reasons the Board considers that the claimed method falls under the exclusion of A 53(c). [2.2] The appellant submitted that the present method did not cure any particular disease, and therefore did not qualify as therapy. The Board does not share this opinion because, as already mentioned above, the present method cannot be distinguished from normal artificial ventilation, the very first aim of which is to keep an anesthetised patient alive, which clearly must be considered as a therapeutic treatment since it avoids the death of the patient by artificially maintaining respiration. The appellant further submitted that step e) introduced a malfunction in order to determine certain lung conditions. According to the wording of this feature, it requires changing the airway pressure of the ventilator and, as already mentioned above, such airway pressure changes belong to the normal activities of a doctor when adapting the ventilation conditions to the patient. Hence, any step by step increase or decrease of airway pressure when applying the method will necessarily merge with values used for the ventilation therapy itself. Therefore it is irrelevant whether the doctor uses the limit pressures levels for the ongoing therapy or not. The appellant further submitted that case T 1102/02 should apply by analogy, the claimed method also being a test phase. The aim of the invention in that case was to determine the influence of the delivery tubing on the gas flow pattern delivered to the patient in order to correct the operating parameters of the artificial ventilator and to make sure that the gas flow pattern effectively delivered to the patient corresponded to the desired flow pattern, i.e. the aim was to optimise the flow of gas delivered by the delivery device. The present invention differs because it aims at detecting relevant lung conditions of a particular patient for him to benefit most from the ongoing artificial ventilation. As previously mentioned, in the present invention the testing phase runs over tens of breathing cycles, as shown for example in Figures 2 or 8, so that the said phase cannot be distinguished from the normal artificial ventilation. The appellant further submitted that a medical doctor would never be hampered by the claimed method as it was executed by a computer. The EPC excludes from patentability any methods of treatment by therapy in general. This has been confirmed by the Enlarged Board in G 1/07 [3.2.3.2] “… There is, however, no term in A 53 c) which would allow concluding that hampering of the practitioner’s freedom is a prerequisite for the exclusion to apply in the individual case considered. The only condition defined in A 53 c) for a claim to be excluded from patentability is that it contains subject-matter being a method for treatment of the human or animal body by surgery or therapy or a diagnostic method. If so, it is excluded from patentability and it is then irrelevant whether in the individual situation under consideration a medical practitioner would or could infringe the claim.” Finally the appellant submitted that the present case is comparable to that in T 245/87 and should therefore be allowed. In case T 245/87 the method is for measuring the flow of liquid passing through a tubular element which can, among other things, belong to an implantable device for controlled drug administration. In order to measure the flow rate, the electrical resistance of the flowing liquid is measured between two points. It is thus clear that the measuring method has no influence whatsoever on the flow rate per se with which the liquid is administered to the patient. The present method is quite different, since the airway pressure “administered” to the patient under artificial ventilation has to be changed in order to determine the relevant pressure levels. In the present method, again, an obvious functional link exists between the claimed method and the therapy applied to the patient. The main request was rejected. The case was finally remitted to the Examining Division, based on auxiliary request 2, which only comprised apparatus claims. I find it helpful to compare the above findings to post-G 1/07 decision T 992/03, where Board 3.4.02 found that the claimed method for MR imaging the pulmonary and/or cardiac vasculature of a subject, using dissolvedphase polarized Xenon gas was patentable because “the method claims are not left to encompass the step of delivering polarised 129Xe gas to a subject, which step may have a surgical character at least if it is carried out by an injection.”
1987 | 3398
T 1680/08 – Iron Lung
K’s Law – The ebook
In the MR imaging case, it is possible to distinguish the imaging method from the (surgical) injection step and to consider it separately. In the present case, if my understanding is correct, this distinction is not possible because the claimed method is inextricably linked to the (apparently therapeutical) ventilation method. BTW, the Board found it self-evident that maintaining life is a therapeutic activity, and this sounds reasonable indeed. However, this understanding would call for a new definition of therapy because the definitions provided so far (see above) appear to be too narrow. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
1988 | 3398
T 1411/08 – Not Notorious
K’s Law – The ebook
T 1411/08 – Not Notorious 17 Aug 2011
The present case concerns the refusal of a Euro-PCT application by the Examining Division (ED) for lack of inventive step. The EPO, acting as ISA, had found that no search was to be performed, because the claims related, essentially, to a method of doing business, and had issued a corresponding declaration, under Article 17(2)(a) PCT. The ED had not carried out an additional search. Claim 1 of the sole request before the ED read : A method comprising: maintaining a database (106) of personal information relating to a consumer (102), the database (106) being a component of a system; receiving a request initiated by a consumer (102) and transmitted over a global communication network to the system, wherein the system is associated with a plurality of domain names, wherein the request includes one of the plurality of domain names, and wherein each of the domain names includes a common domain name element, and an identification of a subject of the request without specifying a specific provider thereof; identifying at least one provider (104a, 104b, 104c) of goods and/or services related to the subject matter of the request in response to the received request, based upon the received request and the personal information relating to the consumer (102) in the database (106); forwarding information regarding the or each identified provider from the system to the consumer (102), wherein the consumer (102) is subsequently capable of choosing a provider from the or each identified provider (104a, 104b, 104c) to communicate therewith; facilitating completion of a transaction between the consumer (102) and a provider selected from the or each identified provider; and updating the personal information based on the completed transaction, wherein the updated personal information is accessible by the system (150) for use in connection with a subsequent request initiated by the consumer (102). The Board finds the ED to have acted light-heartedly: [1] The ED refused the application due to a lack of inventive step. No document was cited as evidence, but the decision identifies differences over the prior art in the following way […] : In comparison with a normal http request-response sequence, the ED identified three differences: 1) When parsing a URL, it is usually the part that follows the actual resource which is parsed (a query, the content of a form), in this case it is the domain name that is parsed. 2) A central database containing information about the consumer. 3) The update of the information about the consumer based upon the transaction. [2] The decision then goes on to discuss these three differences. 1) is said to result from a technically straightforward implementation of a business idea. Of 2), it is said to be well known that websites store information about the user’s behaviour, and to do this using a central database is just one of two well-known alternatives, each with
1989 | 3398
T 1411/08 – Not Notorious
K’s Law – The ebook
well-known advantages and disadvantages. The other alternative is to store the information in a cookie. 3) is, again, seen as a technically straightforward implementation of a business idea. [3] The ED’s argument, then, relies on an understanding of the prior art. For the argument to work, it must be the case that the claimed invention actually does differ in the three points identified, and it must also be the case that there were websites which tracked the behaviour of users. [4] In general, when a Search Division has found that no search is to be performed, it is not always necessary for the ED to carry out an “additional search” before raising an inventive step objection. T 1242/04 [9.2] explains it this way: According to the established case law of the boards of appeal it is possible to raise an objection of lack of inventive step without documented prior art ? That should be allowable where the objection is based on “notorious knowledge” or indisputably forms part of the common general knowledge (CGK). Such cases, however, are exceptional, and a search is otherwise essential. [4.1] Under the term “notorious”, the present Board understands, firstly, prior art which is so well known that its existence at the date of priority cannot be reasonably disputed. This is to be distinguished from the skilled person’s CGK, which is something that generally can be reasonably questioned. [4.2] Further to that, the present Board understands “notorious” as implying that technical detail is not significant. The examination of a combination of features in relation to inventive step normally involves questions such as what advantages and disadvantages the combination is said to have, and in what technical areas it is used. This is the sort of information a search should uncover. On the other hand, a claim may be so drafted that such questions do not arise. It is prior art reflecting such generic features that the Board understands as “notorious”. Thus a “computer for sending a message” is notorious, whereas a “32-bit computer for sending a message” would not be, when, for example, questions of advantages and disadvantages of 32-bit computers arise. [5] In the present case, the ED has not identified the prior art as “notorious” or an indisputable part of the skilled person’s CGK. In the Board’s understanding of those terms, neither the normal http request-response sequence, nor the websites which store information about the user’s behaviour falls within their meaning. The issue of what constituted the normal http request-response sequence at the priority date is certainly open to question, and it is certainly something towards which a search can be directed. The same goes for websites storing information on user behaviour. [6] The Board, therefore, concludes that in the present case, the ED could and should have ensured that a search was performed before refusing the application for lack of inventive step. [7] The Board considers that the failure to carry out an “additional search” constitutes a substantial procedural violation and that the reimbursement of the appeal fee must be ordered. The reasons are as follows. [7.1] The consequence of the lack of search is that the decision is founded on prior art which cannot reasonably be assessed. It may be true that the invention defined in claim 1 differs from the normal http request-response sequence precisely as the ED states, but neither the appellant nor the Board can see whether that is the case. Nor can the appellant or the Board assess whether or not there were websites which stored information on user behaviour before the priority date. The appellant cannot prove that there were not, other than by providing all the previously published technical literature and saying that it cannot be found there. Such an assessment of the literature is what the search is supposed to provide. [7.2] In T 1515/07 the Board found that the ED must be held to have committed a substantial procedural violation in the sense of R 103(1)(a) because it did not perform an additional search that was manifestly necessary. [7.3] In the present case, the additional search was manifestly necessary since, as set out above, the invention claimed contained technical features which cannot be regarded as notorious. The Board, therefore, finds that a substantial procedural violation was committed. […] For these reasons it is decided that: 1. The decision under appeal is set aside. 1990 | 3398
T 1411/08 – Not Notorious
K’s Law – The ebook
2. The case is remitted to the department of first instance for further prosecution, which should include an additional search. 3. The appeal fee is to be reimbursed. Should you wish to download the whole decision, click here. The file wrapper can be found here. NB: There is a post on this decision on Laurent Teyssèdre’s blog.
1991 | 3398
T 1698/09 – Prior Rights Ain’t Prior Art
K’s Law – The ebook
T 1698/09 – Prior Rights Ain’t Prior Art 16 Aug 2011
The wording of A 54(3) appears to be pretty straightforward, but the creativity of parties to opposition proceedings is not to be underestimated, as the present decision shows. The opponent appealed against the decision of the Opposition Division to reject its opposition. The opposed patent had been filed on December 5, 2002 and claimed a German priority filed on December 13, 2001 (“D10”). The opponent pointed out that the claimed subject-matter was not novel over German utility model (Gebrauchsmuster) DE 201 20 040, filed on December 7, 2001 and published on April 10, 2003. This document was referred to as D9. *** Translation of the German original *** [2.2.1] D9, which was filed by the [opponent] only during the oral proceedings, and, therefore, belatedly, is a German utility model. Its day of recordation (Eintragungstag), i.e. the day on which it was made available to the public, is December 10, 2003. Therefore, it does not constitute state of the art within the meaning of A 54(2) for the opposed patent, even if the latter could only benefit of its filing date of December 5, 2002 and not of its priority date of December 13, 2001. [2.2.2] The [opponent] also pointed out that D9 had been filed on December 7, 2001, which date was prior to the priority dated, and that it had been made available to the public after the priority date and the filing date of the opposed patent, respectively. Therefore, it had to be considered as state of the art under A 54(3) because Germany was one of the states that was designated by the opposed patent. Irrespective of the question how an inadmissible ground for opposition, i.e. lack of novelty pursuant to A 54(3), would have to be examined – in application of the principles laid down in G 7/95 – in view of lack of inventive step, the following is to be observed: According to A 54(3), the content of European patent applications, the dates of filing of which are prior to the effective date (Zeitrang) of the opposed patent and which were published only after that date, are to be considered as comprised in the state of the art. A German utility model is not a patent application, nor is it a European patent application. The fact that Germany was designated in the opposed patent cannot alter that fact. [2.2.3] The discussion of D10, which has been mentioned by the [opponent] in connection with D9, and which is the priority document of the opposed patent, is, therefore, irrelevant. [2.2.4] For the above mentioned reasons the Board decides to exercise its discretion pursuant to A 114(2) and not to take into account D9 and D10. To read the whole decision (in German), click here. The file wrapper can be found here.
1992 | 3398
J 25/10 – Mere Assertions Won’t Do
K’s Law – The ebook
J 25/10 – Mere Assertions Won’t Do 15 Aug 2011
The present decision deals with an appeal against the decision of the Examining Division (ED) not to refund the examination fees for a Euro-PCT application that had been withdrawn. The application under consideration was filed on December 6, 2007. It claimed a priority of December 13, 2006. The EPO acted as ISA. On July 13, 2009, the application entered the European phase. The applicant filed form 1200 and paid the filing fee, the designation fee and the examination fee. On July 29, 2009, the Receiving Section (RS) issued a communication pursuant to R 161. By letter dated and received on March 23, 2010, the applicant withdrew the European patent application and requested that a refund of fees be made. The formalities officer acting for the ED informed the applicant that a refund of 75% of the examination fee was no longer possible since substantive examination had already begun. The applicant was asked to inform the EPO whether it wished to maintain the withdrawal. By letter dated May 20, 2010, the applicant confirmed the withdrawal of the application and maintained the request for a partial refund of the examination fee. The formalities officer acting for the ED maintained the finding that a refund was not possible. As the primary examiner had confirmed that he had already started with the substantive examination when the application was withdrawn, a partial refund of the examination fee was no longer possible. By decision dated July 14, 2010, the request to refund the examination fee at a rate of 75% was refused. The present appeal was directed against this decision. Here is the verdict of the Legal Board of appeal: [2] According to Article 11(b) RRF the examination fee is refunded at a rate of 75% if the European patent application is withdrawn after the EDs have assumed responsibility but before substantive examination has begun. As rightly pointed out by the appellant, this provision does not leave any room for discretion, but rather lays down two conditions which must be met for the examination fee to be refundable. These two conditions must therefore be examined. [3] As to the first condition, the ED is responsible for the examination of a European patent application under A 94(1) from the time when a request for examination is filed (R 10(2)). The request is not deemed to be filed until the examination fee has been paid (A 94(1), second sentence). The request for examination in this case was contained in box 4 of Form 1200, which was filed on 13 July 2009. On the same day, the examination fee was paid. Thus, as from this day the ED assumed responsibility. Notice of withdrawal was received after this date, i.e. on 23 March 2010. [4] The second condition gives rise to the point in dispute, namely whether it has been established that at the date of the withdrawal substantive examination had already begun. Substantive examination is the examination of whether the European patent application and the invention to which it relates meet the requirements of the Convention, as set out in A 94(1), first sentence. This examination is only performed upon request. According to A 18(1), it is the ED which is responsible for this examination. [5] For reasons which will become apparent, it is not necessary to consider precisely what kind of act or acts amount to the beginning of substantive examination in any particular case. It is only necessary to say that it requires a concrete act of the ED as regards substantive examination after the request for examination has been filed.
1993 | 3398
J 25/10 – Mere Assertions Won’t Do
K’s Law – The ebook
[6] In the present case there is no indication whatsoever in the file showing, by reference to objective criteria, that the ED had performed a concrete act of any kind which could be regarded as a start of substantive examination in the regional phase after the request for examination had been filed. [7] It is clear that the written opinion issued by the EPO during the international phase according to Rule 43bis.1 PCT cannot be considered as an act of substantive examination, and indeed the ED in the decision appealed from did not assert that it could be so considered. In the written opinion, the International Searching Authority establishes whether the claimed invention appears to be novel, to involve an inventive step, and to be industrially applicable, as well as whether the international application complies with the requirements of the PCT in so far as checked by the ISA. This opinion is drawn up in the international phase and is governed by the provisions of the PCT. It is not part of the procedure before the EPO as designated or elected Office and does not give any assessment of whether the requirements of the EPC are met. Under the PCT, the international phase and the regional phase are clearly conceived as separate. Therefore, for the purpose of deciding whether substantive examination before the EPO as a regional patent granting authority has begun, acts performed by the EPO as an international authority under the PCT are not relevant (J 37/03 and J 38/03 [6]). Moreover, as set out above, substantive examination can only be carried out upon request (A 94(1), first sentence). Thus, acts performed during the search stage without a valid request for examination cannot be part of the examination procedure. [8] It then remains to be decided whether it can be accepted in this case that substantive examination can have already started when there had been no communication and when there is also no other indication in the file that the ED had taken up its substantive work. [9] In the decision under appeal the ED first stated that “the assessment regarding the start of the examination procedure lies entirely in the responsibility of the ED” […]. This is true in the sense that the ED has to make the assessment, and that often it will only be the ED which has access to the relevant information needed to make this assessment. But it does not mean the ED can take the decision without reference to the relevant facts. [10] The only point on which the refusal for the partial refund was then based was “that the primary examiner confirmed that he started already with substantive examination” […]. This is no more than an unsubstantiated assertion. Article 11(b) RRF establishes clear conditions which must be fulfilled in order for a partial refund of the examination fee to be made. Whether these conditions have been fulfilled in any particular case is a question of fact. If the request is to be refused on the basis that these conditions have not been met, the ED must give reasons why the conditions are not met, having established what the facts are. It is not sufficient simply to assert that a condition of a provision is not met without reference to underlying facts which objectively demonstrate that this is so. To do so would amount to an arbitrary decision which is not verifiable and goes against all legal certainty. In G 3/08 [7.2.1] the Enlarged Board of Appeal said that “the predictability and verifiability of all state action are indispensable elements of a democratic legal order”, these being amongst the principles which the EPO must support. The Board further said: “Another essential element of a democratic legal order is the principle that a public authority is bound by law and justice. This is supplemented by the principle of uniform application of the law. Both principles are designed to ensure predictability of jurisdiction and hence legal certainty by preventing arbitrariness” (point [7.2.3] of the Reasons). A mere assertion that a condition laid down in a legal provision is not met, without sufficient substantiation by reference to the underlying facts, violates these principles. [11] As the appellant points out, without factual information relevant to the criteria of when substantive examination began, the date of this event cannot be objectively determined. In the present case this resulted in the determination appearing to be at the discretion of the ED. The appellant points out that the ED had been asked for the exact date of the start of substantive examination and the criteria applied to its assessment. However, no such information was provided. Without such information, the appellant could not determine the correctness of the decision. The Board would add that without such information it also cannot determine whether the decision that substantive examination had begun was correct or not. The decision was therefore neither predictable nor verifiable, contrary to the principles set out in G 3/08. [12] It appears to the Board that the application of these principles is particularly important in the present case for two reasons. First, since the decision which the Office, via the ED, is required to take involves its own financial interests, it is important for the public confidence in the Office that the decision-making process should be transparent. For the same reason it is also important that such decisions should be reviewable by the Boards of Appeal. Second, in the present case any relevant information lay solely within the knowledge of the Office. It is 1994 | 3398
J 25/10 – Mere Assertions Won’t Do
K’s Law – The ebook
not a case in which, for example, a communication had been sent to the applicant, so that there were externally verifiable facts on which a decision to refund fees could be based and reviewed. This makes it important that the applicant (and the Board of Appeal) knows what the actual underlying facts are on which the decision was based. [13] In conclusion, it cannot be accepted as established in this case that substantive examination had already begun when the application was withdrawn. [14] The Board is aware that in the meantime the Office has changed its practice as regards the refund of the examination fee as outlined in the Notice dated 22 October 2009 (OJ EPO 2009, 542), to which the appellant has referred. However, the Board notes that it is still Article 11 RRF which is applicable and therefore a 75% refund of the examination fee can still only be denied if substantive examination has already begun. As already made clear, this requires a concrete act of the ED with regard to substantive examination. Reimbursement of the appeal fee [15] According to R 111(2) decisions which are open to appeal shall be reasoned. The reasons should deal with the facts of the case and should enable the appellant and the Board to understand how the department of first instance came to its conclusion. The Board must be in a position to assess on the basis of the reasoning given in the decision under appeal whether the conclusion drawn by the first instance from the established facts was justified or not (T 278/00; T 850/95). This is not the case here. The lack of any sufficient reasoning by reference to established facts constitutes a substantial procedural violation which justifies the reimbursement of the appeal fee (R 103(1)(a)). I have been in this situation more than once but I have never had the perseverance to appeal against the decision not to refund the examination fee. From the attorney’s point of view, the fact that the ED cannot simply refuse a reimbursement without providing evidence that substantial examination has indeed begun is certainly to be approved. To read the whole decision, click here. Alternatively, you can wait for the OJ, where this decision is to be published. The file wrapper can be found here. NB: I have discovered this decision after two weeks of (very enjoyable) Internet abstinence. Some restless fellow bloggers have already reported it (e.g. here and here).
1995 | 3398
Oldies But Goldies – Arbitrary Selection
K’s Law – The ebook
Oldies But Goldies – Arbitrary Selection 13 Aug 2011
T 939/92, one of the major decisions dealing with arbitrary selections was issued by Board 3.3.01 on September 12, 1995. The underlying appeal was filed by the applicant whose application had been refused by the Examining Division (ED). Claim 1 on file before the Board read: The triazole sulphonamides of the formula:
and salts thereof, where: R1 represents hydrogen, alkyl of 1 to 6 carbon atoms, phenyl, or substituted or unsubstituted pyrimidin-2-yl; R2 represents hydrogen, alkyl of 1 to 6 carbon atoms, phenyl, amino, alkylamino of 1 to 4 carbon atoms, or 2,5-dimethylpyrrol-1-yl; and R3 represents optionally substituted phenyl; with the following provisos: (a) R1 and R2 are not simultaneously hydrogen; (b) when R1 represents hydrogen and R3 simultaneously represents phenyl or 4 methylphenyl, R2 does not represent phenyl; (c) when R1 represents hydrogen, R2 does not represent amino. [2.1] The Board is satisfied that Claim 1 […] meets the requirement of A 123(2), and that the claimed subjectmatter is novel. Since the decisive questions in this appeal are those of clarity and support by the description (A 84) and of inventive step (A 56), under which the appeal fails for the reasons set out below, it is not necessary to give any reason for this finding. [2.2] The first issue to be decided is whether the present claims are objectionable under A 84. The ED has raised this objection under two headings, the first being lack of clarity, and the second being lack of support by the description. [2.2.1] As to the first heading, the ED held that e.g. the term “substituted” cannot be given its ordinary meaning, since the claim related to chemical compounds having a biological activity. However, the present independent claim covers certain chemical compounds per se, and not just those compounds having a particular biological activity. Hence the biological activity of these compounds is not an essential technical feature of the claimed subject-matter, and thus not part of the definition of the claimed subject- matter, so that there is no reason for the term “substituted” not to have its ordinary technical meaning, namely “substituted by absolutely anything” […]. This meaning is, moreover, the one that was clearly intended by the [applicant]. On this basis, Claim 1 is, in the Board’s judgment, clear in the sense of A 84. [2.2.2] As to the second heading, the ED held that Claim 1 of the main request was an unreasonable generalisation of the examples contained in the description. However, in the Board’s judgment, it does not follow from A 84 that a claim is objectionable simply because it is “unreasonably broad”. In particular, this does not follow from the requirement that the claims must be supported by the description (which, pursuant to R 27(1)(e), need not include examples). Rather, the expression “support by the description” means that the 1996 | 3398
Oldies But Goldies – Arbitrary Selection
K’s Law – The ebook
technical features stated in the description as being essential features of the described invention must be the same as those used to define the invention in the claims (see decision T 133/85 [2] and T 409/91 [3.2]), for otherwise the claims would not be true definitions but mere descriptions. As was further pointed out in decision T 409/91 [3.3-4], a claim covering subject-matter which is not disclosed in the description in the manner required by A 83 is, in addition, not supported by the description within the meaning of A 84. In the present case, […] the ED had no doubts as to the possibility of preparing the claimed compounds. Furthermore, the ED did not find that the description mentioned technical features as being essential features of the claimed invention which were not part of the definition of the present Claim 1, nor could the Board find any such feature. Instead, the ED relied upon the fact that a skilled person upon reading the application documents would not have believed that all claimed compounds would or could be likely to possess the alleged herbicidal activity, which feature is, as already stated, not part of the definition of the subject-matter for which Claim 1 seeks protection. Therefore, the facts of the present case differ from those underlying decision T 409/91, so that an objection of lack of support by the description cannot, in the Board’s judgment, be validly raised in the present case. [2.2.3] This does not mean, however, that the properties (or the technical effect) of the claimed subject-matter are irrelevant to the issue of the patentability of the claimed compounds, as was submitted by the [applicant]. In the Board’s judgment, this issue may not only arise under A 84, but is also intimately linked to the issue of inventive step under A 56, under which heading it will now be considered. [2.3] It hardly needs re-stating that the question of inventive step can only be considered on the basis of the relevant state of the art, see A 56. However, A 54(2) does not limit the state of the art to written disclosure in specific documents; rather it defines it as including all other ways (“in any other way”) by which technical subject-matter can be made available to the public. Therefore, the absence of a reference to a particular document does not mean that there is no state of the art, as this could reside solely in the relevant common general knowledge (CGK), which, again, may or may not be in writing, i.e. in textbooks or the like, or be simply a part of the unwritten “mental furniture” of the notional “person skilled in the art”. It is also clear that in the case of any dispute as to the extent of the relevant CGK this, like any other fact under contention, has to be proved, e.g. by documentary or oral evidence (see also T 766/91 [8.2]). As in the present case, during the oral proceedings (OPs), the [applicant] has abandoned his earlier contention that the starting materials and the synthetic methods necessary for preparing the claimed compounds were not available to those skilled in the art, taking into account the relevant CGK, it is no longer necessary to do this. It suffices to accept D9 as a fair representation of the CGK. [2.3.1] D3 relates inter alia to a class of compounds having the following general formula
wherein R1 to R4 are selected from hydrogen or aliphatic substituents and wherein each substituent has at most eighth carbon atoms […]. R3 may also mean phenyl, which may be substituted by 1 to 3 halogen atoms. These compounds are said to have herbicidal activity […]. In addition, this document describes as starting material for obtaining the above compounds a class of compounds having the general formula
wherein R3 and R4 have the above meanings […]. If R4 is hydrogen, these compounds correspond to compounds of formula I of present Claim 1, wherein R1 and R2 are each hydrogen. Such compounds are excluded from present Claim 1 by proviso (a). [2.3.2] D7 and D8 each relate to similar groups of compounds corresponding to the general formula
1997 | 3398
Oldies But Goldies – Arbitrary Selection
K’s Law – The ebook
wherein the substituents of the phenyl ring as well as the substituents R4 and R5 contain at most four carbon atoms. These compounds may be used as herbicides […]. [2.3.3] These documents together with the now accepted CGK form the state of the art on the basis of which the issue of the inventive step of the claimed compounds needs to be decided in this appeal. [2.4] During the OPs the [applicant] argued that the only question arising under A 56 in the present case was whether or not, in the light of the above state of the art, a skilled person would have prepared, or tried to prepare, the claimed compounds of formula I (see point IV above), wherein R3 was optionally substituted phenyl. A 56 did not expressly require, so he submitted, that the subject- matter of a patent application had to solve a technical problem, and that, accordingly, the issue of inventive step had to be decided without regard to the solution of any technical problem. [2.4.1] Whilst the Board agrees with the [applicant] that the above question is the one which has to be answered under A 56, it does not agree with his inference that the existence of a technical problem and its solution, including the problem of proposing alternatives to known activities (e.g. chemical processes) or physical entities (e.g. chemical compounds), is irrelevant to answering this question and so deciding the issue. [2.4.2] The reason for this is, that it has for long been a generally accepted legal principle that the extent of the patent monopoly should correspond to and be justified by the technical contribution to the art (see T 409/91 [3.34] and T 435/91 [2.2.1-2]). Now, whereas in both the above decisions this general legal principle was applied in relation to the extent of the patent protection that was justified by reference to the requirements of A 83 and A 84, the same legal principle also governs the decision that is required to be made under A 56, for everything falling within a valid claim has to be inventive. If this is not the case, the claim must be amended so as to exclude obvious subject-matter in order to justify the monopoly. Moreover, in the Board’s judgment, it follows from this same legal principle that the answer to the question what a skilled person would have done in the light of the state of the art depends in large measure on the technical result he had set out to achieve. In other words, the notional “person skilled in the art” is not to be assumed to seek to perform a particular act without some concrete technical reason: he must, rather, be assumed to act not out of idle curiosity but with some specific technical purpose in mind. [2.4.3] For this reason, the Boards of Appeal consistently decide the issue of obviousness on the basis of an objective assessment of the technical results achieved by the claimed subject-matter, compared with the results obtained according to the state of the art. It is then assumed that the inventor did in fact seek to achieve these results and, therefore, these results are taken to be the basis for defining the technical problem (or, in other words, the objective) of the claimed invention (which problem may, as already stated above, be to provide a further - or alternative - process or physical entity, here a group of chemical compounds). The next step is then to decide whether the state of the art suggested the claimed solution of this technical problem in the way proposed by the patent in suit (see e.g. T 24/81 [4]). If the state of the art consists of written disclosures, it is often convenient, for practical reasons (see T 439/92 [6.2.1]), to base this examination on one document which is most closely related to the claimed subject-matter as starting point, and to consider whether the other documents suggest to obtain the technical results which distinguish the claimed subject-matter from this “closest state of the art”. [2.4.4] The Board of Appeal is aware of decision T 465/92. Although it was held in [9.1] of the reasons of this decision that the “problem and solution approach” is not a sine qua non for the determination of inventiveness by the EPO, it follows, in the Board’s judgment, from the detailed explanations given in the following points [9.2] to [9.6] of the reasons, that in that case the Board refrained from identifying a certain document as “closest state of the art” and formulating a “technical problem” on the basis of such a state of the art. In the present case, however, the question of selecting a particular document as “closest state of the art” is not at issue. However, in T 465/92 [5, and in particular, 5.3] the Board defined the results which had been objectively achieved by the claimed invention, and then proceeded, on that basis, to deciding whether or not the cited state of the art, as a whole, would have suggested to the skilled person to achieve these results in the way indicated in the patent under consideration. This is exactly the procedure set out […] above. Therefore, this decision cannot, in the 1998 | 3398
Oldies But Goldies – Arbitrary Selection
K’s Law – The ebook
Board’s judgment, support the [applicant’s] allegation that the examination of inventiveness should be performed without regard to any technical problem that the claimed invention sets out to solve. [2.5] Using the above approach of the Boards, and having regard to the cited state of the art, in this case the Board considers that, if the claimed compounds were to be assumed not to have any technically useful property, then it could be postulated that the technical problem which is solved by the claimed compounds (or, in other words, the technical result achieved by them, on the basis of which the question of inventive step has to be decided), would be the minimalist one in such a situation, namely the mere provision of further (or alternative) chemical compounds as such, regardless of their likely useful properties. [2.5.1] Although the Board is not convinced that, in the absence of any technically useful properties, the claimed compounds could be regarded as being a technical invention at all (see decision T 22/82 [6], where it was held that a chemical compound was not patentable merely because it potentially enriched chemistry, and that structural originality had no intrinsic value or significance for the assessment of inventive step as long as it did not manifest itself in a valuable property in the widest sense, an effect or an increase in the potency of an effect), the Board has nevertheless examined whether the notional person skilled in the art would have considered the claimed compounds as a solution of such a hypothetical “technical problem”. [2.5.2] In this context, the [applicant] submitted that the skilled person would have faced thousands of possibilities of solving this problem, since even on the basis of known starting compounds and known synthetic methods, a practically unlimited number of chemical compounds would have had to be considered, and that a particular selection from this unlimited number of possibilities should be regarded as inventive, even if it was arbitrary, unless there was a direct pointer to the preparation of just these very compounds in the state of the art. [2.5.3] This argument must, however, fail, since in the Board’s judgment the answer to the question as to what a person skilled in the art would have done depends on the result he wished to obtain, as explained […] above. If this result is only to be seen in obtaining further chemical compounds, then all known chemical compounds are equally suitable as the starting point for structural modification, and no inventive skill needs to be exercised in selecting, for instance, the compound of formula XIV of D3 for this purpose. Consequently, all structurally similar chemical compounds, irrespective of their number, that a skilled person would expect, in the light of the cited prior art, to be capable of being synthesised, are equally suitable candidates for solving such a hypothetical “technical problem”, and would therefore all be equally “suggested” to the skilled person. It follows from these considerations that a mere arbitrary choice from this host of possible solutions of such a “technical problem” cannot involve an inventive step (see also e.g. T 220/84 [7]). In other words, the Board holds that, in view of the underlying general legal principle set out […] above, the selection of such compounds, in order to be patentable, must not be arbitrary but must be justified by a hitherto unknown technical effect which is caused by those structural features which distinguish the claimed compounds from the numerous other compounds. This consideration is also in line with a number of previous decisions of the Boards of Appeal of the EPO, such as for example decision T 1/80 [6-8]. In the case T 119/82 [16], where in considering the argument that a person skilled in the art would neither consider nor propose an alternative process for preparing a known product which is “exotic” or even disadvantageous, the deciding Board reached a similar conclusion, holding that a chemical process was not obvious only when the skilled person would have seen all its advantages, but also when he could clearly see its disadvantages or would not expect any improvement, provided that his assessment of the totality of the consequences was indeed correct. [2.5.4] It follows directly from these considerations that a technical effect which justifies the selection of the claimed compounds must be one which can be fairly assumed to be produced by substantially all the selected compounds (see also e.g. T 131/87 [8], T 742/89 [7.4], T 626/90 [4.3.2], and T 741/91 [4.2-3]). [2.6] Therefore, the Board holds that, contrary to the [applicant’s] submission, the assessment of the technical contribution to the art must take account of the actual technical reason for providing the very compounds now being claimed, as distinct from the host of other theoretically possible modified chemical compounds. In this respect, the description [...] asserts that all claimed compounds do have herbicidal activity. Herbicidally active chemical compounds which are structurally similar to the claimed ones, since they are also triazole derivatives, are known from D3, D7 and D8 [...]. Any one of these documents may therefore serve as the “closest state of the art” in the present case. In view of this state of the art the technical problem which the present patent application asserts to solve is the provision of further (alternative) chemical compounds with herbicidal activity. However, in the light of the Board’s finding [...] above, this technical problem could only be taken into account if it could be accepted as having been solved, i.e. if, in deciding the issue under A 56, it would be credible that 1999 | 3398
Oldies But Goldies – Arbitrary Selection
K’s Law – The ebook
substantially all claimed compounds possessed this activity [...]. Accordingly, the Board has examined whether this requirement is fulfilled. [2.6.1] According to the [applicant’s] submission, in a case such as this one, where the credibility of the alleged herbicidal activity is at issue, the burden of proof that the presence of the alleged herbicidal activity is not credible rests on the EPO, here upon this Board of Appeal. This submission is clearly contrary to the legal principle that any one who alleges a fact has the onus of proving his allegation (in these proceedings to the standard of the balance of probabilities) by appropriate evidence (see T 219/83 [12, fourth paragraph], and T 20/81 [3, last paragraph]. Thus, if neither the ED nor the Board of Appeal is in the position to discharge this burden to the above or to any other standard, and if it is evident that the number of compounds claimed is such that it is inherently unlikely that all of them, or at least substantially all of them, will possess the promised activity, then the burden of proof of that fact, i.e. the possession of that activity, can indeed rest only upon the shoulders of the person alleging it. [2.6.2] In the present case, the [applicant’s] submission that the test results contained in the description show that some of the claimed compounds are indeed herbicidally active, cannot be regarded as sufficient evidence to lead to the inference that substantially all the claimed compounds possess this activity. The reason for this is that there is no proven CGK to show that the type of substituent that may be present in the claimed compounds would be irrelevant to the existence of the alleged herbicidal activity. On the contrary, the Board accepts the [applicant’s] own submission that the structural differences between the compounds disclosed e.g. in D3, D7 and D8 on the one hand, and the claimed compounds on the other hand, are such that a person skilled in the art would have been unable to predict on the basis of his CGK that the claimed compounds would have herbicidal activity [...], and that it can therefore be accepted as undisputed CGK that even small structural modifications may cause major differences in biological activity. Nevertheless, it is also well accepted that the properties of chemical compounds do indeed largely depend on their chemical structure, and that a skilled person would therefore normally expect that the properties of two compounds would become the more similar the more similar their chemical structures became (see decision T 181/82 [5]). In view of all the above considerations, the Board finds that reasonable predictions of relations between chemical structure and biological activity are in principle possible, but that there is a limit beyond which no such prediction can be validly made. [2.6.3] In the Board’s judgment, this limit has to be established on the basis of the available facts and the evidence submitted for this purpose in each particular case. However, if the only evidence available is the CGK, then this CGK must be the same as that applicable to the question as to whether or not the skilled person would have expected a certain biological activity in view of the existence of structurally similar chemical compounds having the same biological activity (see also T 964/92 [2.8]). Therefore, if additional evidence is necessary in order to establish that an alleged prediction of a relationship between activity and structure is not obvious, but nevertheless reasonable, then such evidence cannot form part of the undisputed CGK, but must specifically relate to a particular case. [2.6.4] For this reason, the [applicant’s] general statements that sometimes structural modifications were of little influence on biological activity, for example, if a part of the compound would be eliminated during an intended application based on the alleged biological activity [...], cannot help the Board to answer the question as to the reasonable predictability of the biological activity in the present case. This could have been remedied by evidence that the alleged elimination did actually occur during the application of the claimed compounds. However, such evidence was not submitted. It also follows from the above considerations that even if some other patents, as submitted by the [applicant] during the appeal proceedings, had been granted with claims containing broad definitions such as “optionally substituted”, this is of no relevance to the present case. [2.6.5] In the tests which are reported [in] the description a great number of compounds were used. However, in all these compounds R1 was always either unsubstituted phenyl or 2-pyrimidinyl optionally substituted by methyl groups and R3 was always phenyl substituted by halogen atoms or methyl groups. Thus, despite of the number of tested compounds, these test results do not support the alleged herbicidal activity of compounds in which e.g. the phenyl ring in position R3 may be substituted by absolutely everything, having regard to the CGK relied upon by the [applicant] himself, namely that the influence of structural modifications on the desired herbicidal activity is unpredictable. [2.6.6] Such an allegation is likewise not supported by the content of documents D3, D7 and D8, which all disclose classes of herbicidally active compounds with limited substitution possibilities [...]. [2.6.7] The [applicant] had been informed about the insufficiency of the evidence submitted by him in the present case, and had also been given ample opportunity either to restrict his claims to such a group of compounds for which the Board was prepared to accept the credibility of their alleged herbicidal activity [...], or 2000 | 3398
Oldies But Goldies – Arbitrary Selection
K’s Law – The ebook
to provide further evidence, either by test results or by other means, that in the present case the kind of substitution of the phenyl ring R3 is not relevant to the herbicidal activity. Despite these clear and helpful leads, which the Board was not obliged to afford, neither appropriate amendments nor further evidence were forthcoming. [2.7] For these reasons, and on the basis of what evidence there is in the case, the Board is not satisfied that substantially all compounds now being claimed are likely to be herbicidally active. Since, as set out above [...], only those of the claimed chemical compounds could possibly involve an inventive step which could be accepted as solutions of the technical problem of providing further herbicidally active compounds, the subject-matter of the main request extends to compounds which are not inventive and therefore does not meet the requirement of A 56. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
2001 | 3398
T 1202/07 – Where Not To Look
K’s Law – The ebook
T 1202/07 – Where Not To Look 12 Aug 2011
In this case the opponent filed an appeal after the Opposition Division had maintained the opposed patent in amended form. Claim 1 of the main request before the Board read: A vertical position control system which receives input signals including selected altitude (hs), selected vertical speed (ĥs), current altitude (h), and current vertical speed (ĥ), the control system including (a) a command processor (24) that computes a command trajectory in terms of a commanded altitude (hc) and a commanded vertical speed (ĥc); (b) a first combining unit (26) operatively connected to an output of said processor and for combining current altitude (h) with commanded altitude (hc) to produce a differential commanded altitude signal (∆hc); (c) a first multiplier (29) operatively connected to an output of said first combining unit for converting the differential commanded altitude signal (∆hc) into a proportional pitch attitude command (∆θc); (d) a smoothing integrator (62) operatively connected to an output of said first multiplier and having an output representing pitch attitude command (θc), (e) a second combining unit (68) operatively connected to a combination of the output of said integrator and the output of said first multiplier for combining the pitch attitude command (θc) and a current pitch attitude (θ) to form a pitch attitude error (Eθ), and (f) a second multiplier (72) operatively connected to the output of said second combining unit for filtering the pitch attitude error, characterized in that the command processor includes a filter having a damping ratio which is variable, the filter being dependent on a feedback component resulting from the intermediate commanded vertical speed (ĥ’c) and the intermediate commanded vertical altitude (h’c) wherein the intermediate commanded vertical speed (ĥ’c) is multiplied by a factor including the damping ratio which may be set to any desirable constant or may be a variable calculated at the time of engagement or other convenient time to adjust the response of the control system in relation to a respective flight maneuver. The crucial question before the Board was whether this claim complied with the requirements of A 123(3). If so, the patent proprietor was stuck in the inescapable trap. [2.1] The present case concerns the conflict between A 123(2) and (3) EPC which was considered in decision G 1/93 of the Enlarged Board of Appeal (EBA). In G 1/93 […] it is stated that “If a European patent as granted contains subject-matter which extends beyond the content of the application as filed within the meaning of A 123(2) and which also limits the scope of protection conferred by the patent, such patent cannot be maintained in opposition proceedings unamended, because the ground for opposition under A 100(c) prejudices the maintenance of the patent. Nor can it be amended by deleting such limiting subject-matter from the claims, because such amendment would extend the protection conferred, which is prohibited by Article 123(3) EPC. Such a patent can, therefore, only be maintained if there is a basis in the application as filed for replacing such subject-matter without violating A 123(3)”. [2.2] In the present case the wording of claim 1 of the granted patent “the command processor includes a filter having a damping ratio which is variable dependent on a feedback component” (which feature the OD held to infringe A 123(2)) was amended to “the command processor includes a filter having a damping ratio which is variable, the filter being dependent on a feedback component” (board’s emphasis). It has to be decided whether this amendment extends the scope of protection, since, in accordance with A 123(3), “The European patent may not be amended in such a way as to extend the protection it confers”. [2.3] Considering the wording of claim 1 from a linguistic point of view, it is clear to the board that the phrase “dependent on a feedback component” in the granted version of claim 1 is associated with the word “variable” 2002 | 3398
T 1202/07 – Where Not To Look
K’s Law – The ebook
which immediately precedes it. As it is not disputed that the term “variable” refers to the damping ratio (indeed, this aspect is retained in the amended version), it follows that claim 1 as granted requires, in a linguistic sense, a damping ratio that is variable dependent on a feedback component. [2.4] It is not in dispute that that the description provides no support for a damping ratio that is variable dependent on a feedback component. The extent of protection conferred by a claim feature not consistent with the description was considered in decision T 1018/02. In accordance with decision T 1018/02 [3.8], “… the description cannot be used to give a different meaning to a claim feature which in itself imparts a clear, credible technical teaching to the skilled reader. This also applies if the feature has not been initially disclosed in the form appearing in the claim. Otherwise third parties could not rely on what a claim actually states (cf. A 69(1): The terms of the claims determine the extent of protection whereas the description is only used to interpret the claims) and A 123(2) would become meaningless in respect of amendments to the claims”. [2.5] In order to determine whether the claim feature in itself imparts a clear, credible technical teaching, it is necessary, in the board’s view, to examine whether (a) the feature as claimed is in itself meaningful and plausible from a technical point of view, and (b) there is, prima facie, any inherent incompatibility with the remaining features of the claim. [2.6] The technical plausibility of a damping ratio which is variable dependent on a feedback component is in the board’s view not in doubt. The respondent argued at the oral proceedings (OPs) that such a measure would be “unusual”, leading the skilled person to conclude that this was not the intended meaning. However, in the board’s view, whether or not a feature is in common use cannot in itself be a factor leading the skilled person to doubt its meaning. [2.7] Further, in the board’s view, there is in the present case no inherent incompatibility with the remaining features of claim 1. Although claim 1 as granted later stipulates that the damping ratio “may be set to any desirable constant or may be a variable calculated at the time of engagement or other convenient time”, it is perfectly possible, in the board’s view, that the setting of the damping factor to a desirable constant (e.g. a choice of one value amongst a set of constants) or to a calculated variable can be made dependent on the feedback component, e.g. such that a different constant/variable is used during different phases of the maneuver. The respondent argued that the correct interpretation of the claim was that once the damping ratio is set to a desirable constant or a calculated variable, it remains fixed at the same value throughout the maneuver, this being entirely incompatible with a dependency of the damping ratio on a feedback component. However, the board observes that claim 1 does not require that the damping ratio remain fixed throughout a maneuver. On the contrary, it provides that the damping ratio may be “a variable calculated at the time of engagement or any other convenient time” (board’s underlining). Claim 1 therefore embraces changing the value during a maneuver. [2.8] The remaining arguments of the respondent put forward at the OPs can be summarised as follows: (i) Claim 1 is ambiguous, in that it has two possible meanings. The first meaning is that the damping ratio is dependent on a feedback component, the second being that the filter itself is dependent on the feedback component. The skilled person has to read the claim with a mind desirous of understanding. He would therefore appreciate that there is an inconsistency between a damping ratio which is variable dependent on a feedback component and the later feature that the damping ratio may be set to a constant. In resolving this inconsistency, the skilled person would come to the only true interpretation of the granted claim which is that it is not the damping ratio which is dependent on a feedback component, but the filter itself. Since the amendment relates to taking only one of the two possible meanings of granted claim 1, the scope of protection has not been extended. (ii) In order that the command processor produce output values of commanded altitude and commanded vertical speed, the skilled person would know that the feedback component must be fed back to the filter input rather than be used to control the damping ratio.
2003 | 3398
T 1202/07 – Where Not To Look
K’s Law – The ebook
[2.9] Re (i): As explained above, the board disagrees that the claim is either linguistically or technically ambiguous in the sense that the feature “a filter having a damping ratio which is variable dependent on a feedback component …” has more than one meaning. Re (ii): Claim 1 does not exclude that the feedback component is fed back to the filter input as well as being used to control the value of the damping ratio. The board therefore finds these arguments of the respondent unconvincing. [2.10] The board concludes that claim 1 as granted was limited in the sense that the damping ratio was variable dependent on a feedback component. As claim 1 of the main request no longer includes such a limitation, the board concludes that protection conferred by the patent has been extended, contrary to A 123(3). [2.11] In the impugned decision, the OD relied on decisions T 190/99 and T 749/03 as well as T 108/91 and T 438/98, all of which had been cited by the patent proprietor during opposition proceedings. The [patent proprietor] referred again to these decisions in the written phase of these appeal proceedings. In the light of these decisions, the OD concurred with the view of the proprietor that, having regard to A 123(3) EPC, it was “possible to amend a granted claim to replace an inaccurate technical statement, which is evidently inconsistent with the totality of the disclosure of the patent, with an accurate statement of the technical features” [board’s note: this corresponds to the headnote of T 108/91]. The OD stated further that “The only sensible interpretation of claims 1 and 7 [as granted] in view of the disclosure in the patent specification implies that it is the filter which is dependent on the feedback component: with such a reading, the claims are not only clear and consistent in themselves but also clear and consistent with the totality of the disclosure of the patent”. It concluded that A 123(3) was not infringed by claim 1 of the present main request. [2.12] As already stated, the board agrees that in the present case “a damping ratio which is variable dependent on a feedback component” has no basis in the description. However, the board has explained above […] why it is not possible to use the description to give another meaning to this feature than the one deriving from the wording used in the claim. Moreover, the board observes that T 190/99 [2.3.4] adopts the standpoint of the earlier decision T 108/91. With regard to T 108/91, it is noted that the feature in question, the deletion of which, in that board’s view, did not contravene A 123(3), was considered to run against the implicit technical objective of the invention (cf. point [2.2]). Without going into whether this is still a valid approach in the light of the later-published decision G 1/93, the board notes that this aspect does not apply to the present case, since varying the value of the damping ratio dependent on a feedback component does not prima facie run counter to the aim of improving the flight response of the aircraft. T 749/03 also concerns a different situation to the present case in that, in the case at issue in T 749/03, certain features could only be made sense of by reference to the description and drawings (cf. point [2.2.9]). Finally, in decision T 438/98 the amendment concerned the correction of an obvious clerical error (cf. point [3.1.3]). Therefore the board disagrees with the view of the OD and the appellant as to the relevance of these decisions to the present case. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
2004 | 3398
T 1657/09 – Putting One’s Finger On The Difficulty
K’s Law – The ebook
T 1657/09 – Putting One’s Finger On The Difficulty 11 Aug 2011
The opponent appealed against the decision of the Opposition Division (OD) to reject the opposition. Claim 1 of the main request before the Board read (my English translation): Gate leaf (Torblatt) for a sectional gate, in particular a roll-up gate (Deckengliedertor), wherein a wicket door (Schlupftür) is integrated in the gate leaf, the wicket door comprising a door leaf (Türblatt) and a frame (Zarge) for framing the door leaf, the gate leaf being movable along a predetermined path comprising an arcuate portion between an opening position and a closure position, wherein the gate leaf comprises a plurality of panels which are arranged one behind the other along the predetermined path and which are joined to one another [by means of] articulations comprising articulation axes that run perpendicular to the predetermined path, and wherein the frame comprises at least two segments(40,50;340,350) that are fixed to successive panels (10,20) of the gate leaf, characterised in that at least in the closure position a distance (x) corresponding to at least the thickness of a finger is left free between the segments (40,50), in a direction running parallel to the predetermined path, at least in the region of a boundary surface (14,24) of the gate leaf that is facing away from one of the articulation axes (32), [feature 1.5] and/or the width of the mouth region (Mündungsbereich) of a gap (62) formed between the segments (50,60) facing the boundary surface (14,24) facing away from one of the articulation axes (32) along part of the arcuate portion of the predetermined path that can still be reached with the hands when the gate is being operated, is less than what is needed to allow a finger to be inserted. [feature 1.6] (my emphasis)
The Board raises an insufficiency objection:
2005 | 3398
T 1657/09 – Putting One’s Finger On The Difficulty
K’s Law – The ebook
[2] The characterising part of granted claim 1 consists of the two features 1.5 and 1.6, which are related to each other by means of an “and/or”. The [patent proprietor] points out that the distance (x) between the segments (feature 1.5) and the width of the gap (62) between the segments (feature 1.6) are two different measures so that it was perfectly possible that the first was greater and the second smaller than a finger. This could be seen from figures 1 and 2, wherein an obvious error had occurred in figure 2 in the representation of the line of reference (62).
However, it is not apparent from the patent as a whole that the line of reference (62) in figure 2 is obviously erroneous. It is even less obvious how this alleged error should be corrected. The opposed patent does not disclose either that the width of the gap is to be measured at a different position than the distance between the segments. Claim 1 rather defines the distance between the segments as the distance “at least in the region of a boundary surface of the gate leaf that is facing away from one of the articulation axes”, “in a direction running parallel to the predetermined path” and the width of the gap is defined as the width of the mouth region of a gap formed between the segments facing the boundary surface facing away from one of the articulation axes. As it is not indicated how the region and the mouth region differ, it is to be assumed that the distance (x) and the width of the gap (62) have the same measure (Maß), i.e. the size of the gap between the frame elements. Feature 1.5 requires this measure to correspond to at least the thickness of a finger, whereas feature 1.6 requires the same measure to be less than what is needed to allow a finger to be inserted. As the same measure cannot simultaneously be greater and smaller than a given value, the claimed “and”-relationship is not achievable. Claim 1 does not comply with the requirements of A 83. The patent was finally revoked. To download the whole decision (in German), click here. The file wrapper can be found here.
2006 | 3398
T 1761/07 – Three Out Of Four Ain’t Bad
K’s Law – The ebook
T 1761/07 – Three Out Of Four Ain’t Bad 10 Aug 2011
In this case all the parties filed appeals against the decision of the Opposition Division to maintain the opposed patent in amended form. Claims 1 and 2 as granted read: 1. Process for manufacturing an oxirane by reaction between an olefin and hydrogen peroxide in a reactor containing a liquid phase, in the presence of water, one or more organic solvents, a catalyst and one or more compounds for increasing the selectivity of the catalyst toward epoxidation reactions, characterized in that: - if the process is performed in batchwise mode, the liquid phase present in the reactor when the reaction starts - if the process is performed continuously, all of the liquid phases that are fed continuously into the reactor has/have a total organic solvent content of at least 0.1 g/kg and of not more than 675 g/kg, and a total content of water plus hydrogen peroxide of at least 100 g/kg. 2. Process according to Claim 1, characterized in that the total organic solvent content in the liquid phase or all of the liquid phases is not more than 600 g/kg. and page 4, lines 9 to 13 of the original description read:
The request before the Board contained two independent claims 1 and 11 which read (changes with respect 1 as granted are underlined) 1. Process for manufacturing 1,2-epoxy-3-chloropropane by reaction between allyl chloride and hydrogen peroxide in a reactor containing a liquid phase, in the presence of water, one or more organic solvents, a catalyst and one or more compounds for increasing the selectivity of the catalyst toward epoxidation reactions, characterized in that: - if the process is performed in batchwise mode, the liquid phase present in the reactor when the reaction starts - if the process is performed continuously, all of the liquid phases that are fed continuously into the reactor has/have a total organic solvent content of at least 0.1 g/kg and of not more than 675 g/kg, and a total content of water plus hydrogen peroxide of at least 100 g/kg. 11. Process for manufacturing 1,2-epoxypropane by reaction between propylene and hydrogen peroxide in a reactor containing a liquid phase, in the presence of water, one or more organic solvents, a catalyst and one or more compounds for increasing the selectivity of the catalyst toward epoxidation reactions, characterized in that: - if the process is performed in batchwise mode, the liquid phase present in the reactor when the reaction starts - if the process is performed continuously, all of the liquid phases that are fed continuously into the reactor has/have a total organic solvent content of at least 0.1 g/kg and of not more than 600 g/kg, and a total content of water plus hydrogen peroxide of at least 100 g/kg. The Board dealt with the question of whether this amendment complied with the requirements of A 123(2). 2007 | 3398
T 1761/07 – Three Out Of Four Ain’t Bad
K’s Law – The ebook
[2.1] In the main request the single independent claim 1 of the patent as granted, referring to a process for the manufacturing of an oxirane (epoxide), has been split into two independent claims, limited to the manufacture of two specific epoxides, in order to avoid an objection of lack of novelty raised by [the opponents]. Independent claim 1 is directed to the manufacture of 1,2-epoxy-3-chloropropane from allyl chloride; the total organic solvent content compared to claim 1 as granted remained unchanged, namely at least 0.1 g/kg and not more than 675 g/kg. Independent claim 11 is directed to the manufacture of 1,2-epoxypropane from propylene; the total organic solvent content has changed to 0.1 g/kg and not more than 600 g/kg. [2.2] According to [opponent 1] these amendments extended the subject-matter of the patent in suit beyond the content of the application as originally filed, as they impart to the person skilled in the art a new technical teaching, namely to select the upper limit of the content of organic solvent in relation to the olefin to be used. Such a differentiation between olefins was not clearly and unambiguously derivable from the application as filed, where all olefins were considered equivalent. In support for its arguments [opponent 1] referred to […] the application as originally filed, where the upper limit of the organic solvent was disclosed only in combination with the generic term “olefins”. A general definition of the olefins and the corresponding epoxides could be found on page 4, lines 1-13 of the application as filed. Allyl chloride and propylene were mentioned in lines 12-13 of that page, but no distinction was made between these olefins. [Opponent 1] also argued that in order to determine whether or not an amendment offended against A 123(2) it was not sufficient to establish whether each amended claim per se was supported by the application as filed, but whether as a consequence of the amendments technical information was introduced which a skilled person would not have objectively and unambiguously derived from the application as filed. Even amendments which did not concern the claims could result in subject-matter extending beyond the application as filed. In support of this argument, [opponent 1] referred to the decision T 1239/03 [3.3.2]. In this context the [opponent] also pointed out that the description, which had been amended during the opposition procedure, showed quite clearly the new technical information introduced into the patent in suit, namely to select different contents of organic solvents for different olefins. [2.3] The Board is not convinced by the arguments of [opponent 1]. [2.3.1] Claim 1 of the application as originally filed refers to the epoxidation reaction of an olefin whereby depending on the reaction mode either the liquid phase present in the reactor when the reaction starts or all the liquid phases that are fed continuously into the reactor has/have a total organic solvent content of at least 0.1 g/kg and not more to 675 g/kg. Dependent claim 2 as originally filed is directed to a preferred embodiment with an upper limit of the total organic solvent content of 600 g/kg. It is furthermore clearly apparent from the application as originally filed that the use of allyl chloride, resulting in the formation of 1,2-epoxy-3-chloropropane, and the use of propylene, leading to the formation of 1,2epoxypropane, are particularly preferred embodiments. This is already clear from the very first paragraph of the description as originally filed, as well as from page 4, lines 11-13. Further indications, although in a more specific context, can be found in the paragraph bridging pages 5 and 6 or in claim 7 as originally filed. Thus, the use of these preferred olefins in a process according to any of the claims of the application as filed, for example claims 1 or 2 or claim 3, which refers back to claims 1 and 2 and discloses the total water and hydrogen peroxide content, is clearly and unambiguously derivable for the skilled reader (selection from one list). In other words, the manufacturing process for either 1,2-epoxy-3-chloropropane or 1,2-epoxypropane with a total content of organic solvent of at least 0.1 g/kg to not more than 675 g/kg and a total content of water plus hydrogen peroxide of at least 100 g/kg (claims 1 and 3 as originally filed) or, more preferably, with a content of 0.1 g/kg to not more than 600 g/kg (claims 2 and 3 as originally filed) is clearly disclosed. The main request has been amended by deleting just one of these clearly and unambiguously derivable possibilities, namely the manufacturing of 1,2-epoxypropane with a content of organic solvent of 0.1 to 675 g/kg. Independent claims 1 and 11 refer to the remaining three possibilities, which are also clearly derivable from the application as filed. This deletion of one of the possibilities does not change the technical information conveyed to the skilled reader; it merely excludes one of the previously disclosed possibilities from the scope of 2008 | 3398
T 1761/07 – Three Out Of Four Ain’t Bad
K’s Law – The ebook
the claims. Nor can it be said that these amendments amount to a new teaching for the skilled reader, namely to select different reaction conditions, i.e. different organic solvent contents, depending on the olefin to be chosen. There are no indications in the application as filed that different effects may be related to the use of an organic solvent content in the area between 600 and 675 g/kg compared to the area between 0.1 to 600 g/kg. Consequently, no “differentiation” between propylene or allyl chloride is apparent. [2.3.2] Concerning the amended description, [patent proprietor] during oral proceedings explicitly declared that this amended description did not form part of its main request. The description would have to be adapted to the claims if the Board concluded that the requirements of the EPC were met. Consequently, there was no need for the Board to decide on the description as amended during opposition procedure. [2.3.3] The reference to decision T 1293/03 (sic) cannot support [opponent 1]’s case either. The Board notes that this decision concerns a rather different situation, where it had to be decided whether or not the meaning of an unclear term which was used in the claims and which allowed two ways of interpretation, none of which was clearly and unambiguously excluded by the application as filed, had changed by deleting two examples. With regard to the statement in T 1239/03 [3.3.2], the Board does not dispute the fact that any amendment to a patent presenting the skilled person with information which is not clearly and unambiguously derivable from the application as filed infringes A 123(2). However as set out in point [2.3.1] above, the subject-matter of the main request is clearly und unambiguously derivable from the application as filed and does not add new information for the skilled reader. [2.4] From the above, the Board concludes that the subject-matter of the main request does not extend beyond the content of the application as filed. Thus, the requirements of A 123(2) are satisfied. The amendments made result in a restriction of the scope of the claims as granted and therefore of the protection conferred. Hence, A 123(3) is complied with, which was never contested by [the opponents]. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
2009 | 3398
T 673/09 – Forget The Figures
K’s Law – The ebook
T 673/09 – Forget The Figures 9 Aug 2011
For a claim to lack inventive step, it is not necessary that all its features be shown in the prior art. Other considerations may prevail, such as what the skilled person would do under certain circumstances. The present decision illustrates this fact. Claim 1 before the Board read (in English translation): Storage device with variable storage capacity, in particular for storing rod-shaped products, the storage device comprising: [a] an input area (47), an output area (48) and [b] a continuous conveying element (62) connecting the input area (47) to the output area (48) in such a way that the storage device (10) operates on the principle of “first in-first out” (FiFo store), [c] the conveying element (62) being guided by guide elements in a looping manner from the input area (47) to the output area (48), whereby [d] the continuous conveying element defines a multi-layered storage area, normally provided with products, namely a so-called full strand (66, Volltrum), [e] and a multi-layered return area, normally free of products, namely a so-called empty strand (67, Leertrum) [f] the two areas being compensated in length, depending on the state of fullness of the storage device (10), in such a way that the overall length of the conveying element (62) is constant, [g] wherein the full strand (66) and the empty strand (67) are arranged in a common horizontal plane and comprise separate guide elements (19,20,33,34,51,53), characterised in that [h] wherein the full strand (66) and the empty strand (67) are arranged behind one another in the longitudinal direction of the storage device (10) and [i] to each layer of the full strand (66) is allocated a corresponding layer of the empty strand (67) in the same plane, and in that [j] the storage device (10) comprises along its both longitudinal sides guide sheets (61) for guiding the conveying element (62) [k] so that the full strand (66) and the empty strand (67) use the same guide sheets (61) for guiding the conveying element (62).
In what follows, the Board examines whether this claim involves an inventive step. D2 is found to be the closest prior art. *** Translated from the German *** 2010 | 3398
T 673/09 – Forget The Figures
K’s Law – The ebook
[4.3] The storage device according to claim 1 differs from the one of D2 by a first group of distinguishing features (hereinafter: “first group of features”), i.e. the part of feature [g] concerning the arrangement of full strand and empty strand, as well as feature [h]. According to those features, the full strand and the empty strand are arranged in a common horizontal plane and are arranged behind one another in the longitudinal direction of the storage device. Moreover, the storage device according to claim 1 differs from the one of D2 by a second group of distinguishing features (hereinafter: “second group of features”), according to which – according to feature [i] to each layer of the full strand is allocated a corresponding layer of the empty strand in the same plane, and – features [j] and [k] - the storage device comprises along its both longitudinal sides guide sheets for guiding the conveying element so that the full strand and the empty strand use the same guide sheets for guiding the conveying element. Effect of the distinguishing features / Problem [4.4] The first group of features (part of feature [g] and feature [h]) concerns the spatial arrangement of full strand and empty strand. As discussed during the oral proceedings (OPs), it has the effect that the space requirements of the storage device is modified with respect to the device according to D2. Instead of the arrangement of Figure 1 of D2, where empty strand and full strand have the same longitudinal direction and are disposed on top of each other, they are, according to feature [h], arranged behind one another in the longitudinal direction of the storage device.
The effect of the second group of features (first part of feature [g] and features [i] to [k]) consists in that, based on an arrangement of the full strand and the empty strand corresponding to the first group of features, use is made of an opportunity offered by the arrangement of the guide sheets for the full strand and the empty strand, as has been mentioned by the [opponent]. Considering the first group of features, the first problem [solved by] claim 1 with respect to the storage device according to Figure 1 of D2 can be said to configure the storage device so that it fits into a certain available volume. This problem essentially corresponds to the one retained in the impugned decision according to which, starting from D2, a storage device that is compact as to its height is to be developed. […] Considering the second group of features, the second problem [solved by] claim 1 with respect to the storage device according to Figure 1 of D2 can be said to design the guide sheets, which are distinct for the full strand and the empty strand, taking into account the respective arrangement of the full strand and the empty strand. As the second problem uses the opportunities offered by the arrangement of full strand and empty strand according to feature [h], it has to be considered to be subordinate to the first problem. Obviousness (Naheliegen)
2011 | 3398
T 673/09 – Forget The Figures
K’s Law – The ebook
[4.5.1] When assessing inventive step, one first has to check to what extent the solution to the first problem according to claim 1, wherein, according to the first group of features, the full strand and the empty strand are arranged behind one another in the longitudinal direction, is to be considered obvious or not […]. If, as in the present case, the solution to the first problem is not considered to be inventive, one has then to examine to what extent, starting from a storage device wherein the full strand and the empty strand are arranged according to the first group of features, an inventive step is involved when the existing guide sheets of the full strand and the empty strand are designed according to the second group of features. [4.5.2] As far as the first step is concerned, the Board considers that the [opponent] is right in pointing out that the question of how to arrange the empty strand with respect to the full strand depends on the intended use of the storage device. For instance, if the storage device is used as buffer storage in the manufacture and packaging of cigarettes, then the arrangement or the layout of the storage device, and in particular the spatial arrangement of the full strand and the empty strand is determined by the space that is available for the storage device between adjacent machines that are to be connected by means of the storage device in view of the product flow. Starting from the storage device of Figure 1 of D2, the Board considers it to be obvious to arrange the full strand and the empty strand behind one another in a common horizontal plane, according to the first group of features if the space required is available, and thereby to go beyond the arrangement of the full strand and the empty strand depicted in Figures 2, 4 and 5 of D2.
The Board considers that such an arrangement is indeed required when, as pointed out by the [opponent], the space available allows for such an arrangement. Therefore, the incitation to arrange the full strand and the empty strand behind one another, which has been contested by the [patent proprietor], results from the space that is available for the installation of the storage device alone. This assessment is also supported by the fact that, as pointed out by the [opponent], the full strand and the empty strand according to D2 can be seen as two independent modules which, as can be seen from Figures 2 to 5, can be arranged differently with respect to each other. [4.5.3] It is indeed true that, as has been argued by the [patent proprietor], there the full strand and the empty strand are in each case arranged in different horizontal planes, which is different from feature [g]. However, the Board is of the opinion that this cannot prevent the skilled person from arranging the full strand and the empty strand in a common plane, differently from D2, if the available space requires him to do so, which corresponds to the arrangement of full strand and empty strand according to Figure 1 of D5.
2012 | 3398
T 673/09 – Forget The Figures
K’s Law – The ebook
If the available space does not allow for an arrangement of the full strand and the empty strand according to Figure 1 of D5, then the skilled person will modify the arrangement of the full strand and the empty strand so as to adapt to the actual conditions. One of the options mentioned during the OPs is to arrange the full strand and the empty strand in a common horizontal plane, wherein the empty strand is provided in the space delimited by the full strand, such as shown in Figure 2 of D5.
The Board is unable to adopt the argument of the [patent proprietor] according to which the mere fact that an arrangement wherein the full strand and the empty strands are arranged according to the first part of feature [g] and to feature [h] is not shown in the present prior art allows to conclude that the solution of the first problem involves an inventive step. On the one hand, the aspect of whether a solution according to the invention is depicted concerns the question of novelty, which is not relevant in view of D2. On the other hand, a figure showing the arrangement of full strand and empty strand according to claim 1 – which is not provided in the prior art cited – is not relevant for the assessment of inventive step when, as explained above, it has to be assumed that the skilled person would arrive at the arrangement of full strand and empty strand according to the invention without any inventive activity when the space that is available requires him to do so. In this context, the Board can not see why the statement of the summons to OPs, according to which “in contrast to the impugned decision, when assessing inventive step, it is not quite relevant whether other inventive solutions for the problem under consideration exist – what counts is whether the solution that is defined in claim 1 is obvious or not” is incorrect in the present case. As a matter of fact, as explained above, the absence of a figure in the prior art showing a storage device having the full strand and the empty strand arranged as in features [h] and [i] cannot be understood to constitute an indication of inventive step of this arrangement is to be considered obvious starting from D2 as closest prior art. 2013 | 3398
T 673/09 – Forget The Figures
K’s Law – The ebook
[4.5.4] The further argumentation of the [patent proprietor] according to which substantial, non obvious modifications would be needed to transform the superposed arrangement of the full strand and the empty strand according to Figure 1 of D2 into an arrangement according to claim 1, where they are arranged behind one another, cannot persuade the Board because no measures going beyond what a skilled person would do were mentioned. In this context, the Board considers that the displacement of the tensioning device 25 and the need to guide the conveyor 8 from the full strand to the empty strand and back to the full strand in a different way than shown in Figure 1 do not go beyond what a skilled person would do. Moreover, as mentioned in the OPs before the Board, there are no features directed to the displacement and return of the conveyor in claim 1. [4.5.5] As far as the assessment of inventive step related to the above mentioned second problem is concerned, the Board is of the opinion that in the present case, where the arrangement of the full strand and the empty strand behind one another is to be considered as obvious, it is an obvious option to design and arrange the full strand and the empty strand in such a way that there is a corresponding position of the empty strand in the same plane for each position of the full strand. As explained by the [opponent], this follow almost as a necessity from Figure 1 of D2, where full strand and empty strand are substantially identical. Independent from that, such a design and correspondence of full strand and empty strand also follows in an obvious manner from the consideration that the guide bars 26 for the full strand and the empty strand, which according to Figure 1 of D2 are distinct, lie in the same planes and that they can be combined in order to simplify the construction of the storage device according to feature [k]. In this context, the Board considers that the [opponent] is right in considering that the design and the arrangement of the full strand and the empty strand according to the second group of features results from taking advantage of the opportunity that automatically results from the spatial correspondence (Lagezuordnung) of full strand and empty strand according to feature [h] while taking into account the guide bars 26 according to D2. Therefore, it may remain open to which extent the common guiding of the conveying element for the full strand and the empty strand of D7 (Figure 3) can be considered as a hint for using the same guide sheets within the full strand and the empty strand. [4.5.6] The argument of the [patent proprietor] according to which the design of the storage device according to the second group of features cannot be considered to be obvious because there were no constructive hints in D2 cannot be endorsed. On the one hand, it is neither evident nor has it been demonstrated that the design and the arrangement of the full strand and the empty strand and the design of the guide sheets according to this group of features requires measures that go beyond what a skilled person would do. On the other hand, no such measures are found in claim 1. [4.5.7] As mentioned above, neither the solution to the first problem nor the subsequent solution to the second problem involve an inventive step. Therefore, the storage device according to claim 1 cannot be considered to involve an inventive step (A 56). The patent was finally revoked. I do not say that the Board was wrong in its assessment, but what strikes me here is that the Board uses partial problem approach (see Guidelines, C-IV 11.6) without explicitly mentioning it. However, this approach is to be used only when the underlying problems are independent. The very formulation of the partial problems in this decision seems to indicate that they are not independent. Be that as it may, based on decision like this one, one could say that inventive step can be compared to resistance in a parallel circuit. If there is one low resistance path (i.e. obviousness) between point A (a document belonging to the prior art) and point B (the claimed subject-matter) then the fact that there are high resistance (possibly inventive) paths between those points does not alter the fact that the overall resistance (inventiveness) is low between those points. To download the whole decision (in German), click here. The file wrapper can be found here.
2014 | 3398
T 1274/07 – A Letter Can Matter
K’s Law – The ebook
T 1274/07 – A Letter Can Matter 8 Aug 2011
Claim 1 of the patent as granted read (in English translation) Tablet with two end faces and a circumferential face, characterized in that the mutually opposite end faces of the tablet a) are on the whole non-planar and are arranged at least approximately parallel to one another, and b) are provided with a score on each of the top and bottom sides, the scores lying in the centre of the tablet parallel to and above one another, and characterized in that the tablet is provided at the edges, on the top and/or bottom side, with two crescent-shaped phases (Phasen) in each case. The Opposition Division (OD) decided to revoke the patent for lack of sufficiency. It refused the request of the patent proprietor to correct the claim by replacing the word “phase” (Phase) by “chamfer” (Fase). According to the OD, the expression was sufficiently explained in the patent and, therefore, there was no “obvious error”. Claims 1 and 2 of the main request before the Board read: 1. Tablet with two end faces and a circumferential face, characterized in that the mutually opposite end faces of the tablet a) are on the whole non-planar and are arranged at least approximately parallel to one another, and b) are provided with a score on each of the top and bottom sides, the scores lying in the centre of the tablet parallel to and above one another, and characterized in that the tablet is provided at the edges, on the top and/or bottom side, with two crescent-shaped chamfers (Fasen) in each case. 2. Tablet according to Claim 1, characterized in that the halves of the tablet divided by the core form an angle of 130 to 177°. The Board did not followf the OD: *** Translated from the German *** [2] The term “phase” does not make any sense in claim 2 (sic) as originally filed, inter alia because phases as known from the theory of oscillations, such as current phases, or from thermodynamics, such as liquid phases […], do not fit into the context. Also, the shape of illumination of a celestial body, such as a phase of the moon, only leads to a tautology when used with the adjective “crescent-shaped” (halbmondförmig) and, when understood as a “crescent-shaped phase of the moon”, in combination with the rest of the sentence, does not provide a representation of what the tablet should indeed have on the top and/or bottom side. The description […] provides the definition “(= facet (Facette), slant (Schräge))”, which only fits to “chamfer”, which simply indicates a typo. Moreover, the expression “crescent-shaped facet” (halbmondförmige Facette) […] can be easily understood in this way. Furthermore, the reference to a “chamfer” of the tablet is also clear from the explanation following the definition “(= facet, slant)”, i.e. “so that the load which the ram can apply when pressing the tablet is increased”, which is generally known for tablet manufacture. Moreover, the criteria, according to which a correction is not needed for understanding the patent and the need for correction had not been recognized “immediately” (sofort) in a temporal sense are not found in the EPC as criteria for the interpretation of R 139. The Board then discussed the admissibility of the requests and pursued by discussing sufficiency of disclosure of the main request:
2015 | 3398
T 1274/07 – A Letter Can Matter
K’s Law – The ebook
[4.2] The “non-planar” form of the tablet surface can already be derived from the existence of chamfers. To this extent, this feature is clearly present in chamfered tablets and the description of further possible embodiments is not relevant as a feature of the claim for the assessment of patentability or for the assessment of sufficiency of disclosure. [4.3] The manufacture of tablets having approximately parallel surfaces completing the circumferential face is also commonly known. The feature should allow to distinguish [the claimed subject-matter] from spheres or polyhedral shapes derived from spheres, which have no such circumferential face. The question of whether it is possible to measure an angle that is formed by “the halves of the tablet divided by the score when the end faces are non-planar is not relevant because the teaching of claim 1 can be carried out over its breadth, in view of the feature that the end faces are parallel. [4.4] In the patent as granted, after the “crescent-shaped phase” has been corrected to read “crescent-shaped chamfer”, it has the following characteristics (Ausprägungen), depending on whether claim 1, the description together with its figures, or a synopsis of all the elements is considered:
The wording of claim 1, understood literally, would describe round or oblong tablets which are chamfered at one or both end faces in such a way that two semi-circular surfaces are formed. In the case of oval tablets one is led to imagine surfaces that are delimited by a straight line and by an ellipsoidal arc. As polygons can be derived from a circle by reducing the number of the – initially infinite – number of vertices , the “crescent-shaped chamfers” would be planar formations (Flächengebilde) that are delimited by a straight line and a circular arc that is more or less segmented, depending on the number of vertices. In the case of quadrangular tablets this would be half a square if one edge is chamfered or a triangle of two edges are chamfered at the corner. If one adopts the interpretation that “crescent-shaped” means “sickle-shaped”, which is possible and not uncommon in everyday German, then the boundary lines of the chamfers (Abfasungen), which are represented in a planar manner, are the same as those described above, with the exception that they are delimited by a circular arc of an ellipsoid rather than by a straight line. Moreover, the two chamfers per surface then do not have to be in contact with each other but can be provided on opposing edges of the chamfered tablet, without there being any direct contact. As the expression “crescent-shaped” appears to allow for a great number of abstractions, a normal chamfer extending around the upper edge of a flat cylindrical tablet, at first with constant width, could also be seen as “two crescent-shaped phases”, in particular if the magnitude of the chamfer varies to some extent at two positions. Then the overall shape, when looked upon from above, would look like two adjacent rings delimited by equidistant or not equidistant circular arcs, possibly with varying diameter.
2016 | 3398
T 1274/07 – A Letter Can Matter
K’s Law – The ebook
It follows from the synopsis with the description that the wording of claim 1 not only allows for those design options but assumes them to be self-evident. For instance, among other things, polygonal tablets are considered (“for example, rectangular and square, respectively” […]). Moreover, tablets with a chamfer 5 are represented and described (see figures 2, 3, and 4 and their discussion […]), which provides support for the perception of adjacent circular arcs. Under these circumstances it has to be stated that the adjective “crescent-shaped” in claim 1 covers such a great variety of design options that practically any chamfer provided on a tablet which possesses the other claim features can be understood to be crescent-shaped. Therefore, on the one hand, the teaching of this claim is sufficiently disclosed (A 100 b). On the other hand, this feature has practically no delimiting meaning with respect to common chafers on tablets belonging to the prior art. […] The impugned decision is set aside. The request for correction is granted. The case is remitted to the first instance for further prosecution. Should you wish to read the whole decision (in German), just click here. The file wrapper can be found here.
2017 | 3398
T 644/09 – Over The Top
K’s Law – The ebook
T 644/09 – Over The Top 6 Aug 2011
It is true that amendments of the description can sometimes lead to inadmissible extensions of a patent, in particular when the amendments concern statements with respect to the prior art. Examples can be found here and here. The present case shows a situation where the opponent, who had filed an appeal against the decision of the Opposition Division to maintain the opposed patent in amended form, argued that an amendment of the description infringed A 123(2). Inter alia, the amendment of paragraph 38 was criticized.
The Board was not persuaded: *** Translation of the German original *** [1.3.1] The [opponent] criticized the insertion of the expression “according to the invention” (erfindungsgemäß) into paragraph 38 of the opposed patent as granted. According to the [opponent], the skilled person would learn from this paragraph that an embossed layer 8 can be arranged below or above the layers 10 to 13. [1.3.2] Paragraph 38 explains the embodiment of figure 8.
Both in the figure and in the corresponding text on page 11 of the version as originally filed, the order of the layers is determined without ambiguity: a screened metal layer is provided on top of a transparent lacquer layer, and a thermochromic layer is provided below. [1.1.3] This corresponds to the wording of claim 1 and, therefore, can be said to be “according to the invention”. There is no extension. To download the whole decision (in German), click here. 2018 | 3398
T 644/09 – Over The Top
K’s Law – The ebook
The file wrapper can be found here.
2019 | 3398
T 1824/08 – Do It Yourself
K’s Law – The ebook
T 1824/08 – Do It Yourself 5 Aug 2011
This case, which an anonymous commentator has invited me to report (here), concerns an appeal against the decision of the Examining Division (ED) to refuse an application for lack of inventive step. Claim 1 of the application on which the decision was based read: 1. A compound of the formula:
wherein Ring A is benzo; Z1 and Z2 independently are S or O; R1 and R2 independently are H, optionally substituted aliphatic, optionally substituted aryl, hydroxyl, halogen, alkoxy, heterocycle, cyano, amino, or, are taken together to form an optionally substituted cycloaliphatic or optionally substituted aryl; R3 represents H, optionally substituted aliphatic, and optionally substituted aryl; R4 and R5 independently are H, optionally substituted aliphatic, optionally substituted aryl, heterocycle, aryloxy, carboxy, or, are taken together to form an optionally substituted heterocycle or optionally substituted heteroaryl; R6 represents H, optionally substituted aliphatic, optionally substituted aryl, alkoxy, carboxy, amino, heterocycle, aryloxy, and optionally substituted therewith a targeting agent; L represents a linker group; and L is connected to the quaternary amine by a hydrolyzable bond. Together with its statement of grounds of appeal, the applicant filed amended claims. The product claims were replaced by product-by-process claims. The ED did not grant interlocutory revision. Claim 1 of the main request before the Board read: A compound which is obtainable by a process comprising reacting Compound 2
wherein, 2020 | 3398
T 1824/08 – Do It Yourself
K’s Law – The ebook
Z1 and Z2 are S or O; R1 and R2 independently are H, optionally substituted aliphatic, optionally substituted aryl, hydroxyl, halogen, alkoxy, heterocycle, cyano, amino, or, are taken together to form an optionally substituted cycloaliphatic or optionally substituted aryl; R3 represents H, optionally substituted aliphatic or optionally substituted aryl; R4 and R5 independently are H, optionally substituted aliphatic, optionally substituted aryl, heterocycle, aryloxy, carboxy, or, are taken together to form an optionally substituted heterocycle or optionally substituted heteroaryl; with a halomethyl ester of formula
where hal is a halogen atom, R7 is -CH2-, -CH(CH3), -CH(Ph), C(CH3)(COOH) or CH(CH(CH3)2, Z3 and Z4 are O and R6 represents H, optionally substituted aliphatic, optionally substituted aryl, alkoxy, carboxy, amino heterocycle, aryloxy, any of which are optionally substituted with either a targeting agent to form a group R6-T, or second functional group which can covalently bond to a targeting agent, and thereafter if required, covalently linking any second functional groups present to a targeting group to form a group R6-T. The Board is not very happy to have to deal with the appeal: [2] In the decision under appeal the sole ground for refusing the application was lack of inventive step of the claimed N-alkylated compounds of the following formula:
In particular, the ED held that the N-alkylated benzo(thio)pyranones or benzo(thio)pyranthiones according to the formula of claim 1 were obvious in view of document (1), which disclosed a benzopyranone compound (LY294002) of the following formula
2021 | 3398
T 1824/08 – Do It Yourself
K’s Law – The ebook
and document D8 which referred to the designing of prodrugs and bioprecursors. According to the ED, document D8 gave a clear hint to the skilled person to use soft quaternary ammonium salts, i.e. N-alkylated compounds, which can be easily cleaved in the body, in order to solve the underlying technical problem of providing “pro-compounds” having improved pharmacokinetik and pharmacodynamic properties. [3] The amended main and auxiliary requests filed with the statement setting out the grounds of appeal are no longer directed to N-alkylated benzo(thio)pyranones or benzo(thio)pyranthiones. Claim 1 of both requests refers instead to a compound obtainable by the reaction of a benzo(thio)pyranone or benzo(thio)pyranthione compound with a halomethylester. The reason for changing the form of the claims was the [applicant’s] recent finding that the compounds it had prepared using this method starting from LY294002 or a LY294002 derivative (emphasis added by the Board) corresponded in fact to “O- or S-alkylated” compounds illustrated by the following formula
and that N-alkylated compounds were not obtained. [4] The [applicant’s] realisation that an incorrect formula had been used to define the compounds it had prepared and its attempt to remedy this deficiency by characterising the obtained compounds by their process of production have altered the case in such a way that the reasons for the decision based on the obviousness of the N-alkylated compounds are no longer relevant. Compounds wherein the C=O or the C=S group of the benzo(thio)pyranone or benzo(thio)pyranthione had been alkylated were never considered by the ED. It is not even apparent to the Board whether or not these compounds were properly covered by the search. One is therefore faced with a fresh case concerning subject-matter which was not considered before by the ED and which may not have been properly searched. In these circumstances, the Board judges it appropriate to exercise its power under A 111(1) and remit the case to the ED for further prosecution. [5] In its preliminary opinion, the Board raised the question whether or not the product by process claims are, in the absence of any reaction conditions, in compliance with A 123(2). This issue was never addressed by the ED, which did not rectify its decision, although it could and, therefore, should have done so (T 139/87). Furthermore, the Board appreciates that in order to address fully the question whether or not and in what form a product by process claim in the present case may be considered allowable, further investigations into the scientific literature and further experimental work by the [applicant] appear to be necessary. Depending on these results, further substantive examination may be required, and this is normally the task of the ED. The Board further notes that the outcome of a further search, which might turn out to be necessary, may well influence the answer to this question.
2022 | 3398
T 1824/08 – Do It Yourself
K’s Law – The ebook
[6] In these circumstances and in order to give the [applicant] a fair chance to defend its whole case before two instances, the Board considers it appropriate to allow the [applicant’s] request for remittal of the case to the ED without deciding on the issue of A 123(2). Should you wish to download the whole decision, just click here. The
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NB: This decision has been commented on Le blog du droit européen des brevets.
2023 | 3398
found
here.
T 53/08 – The Closer
K’s Law – The ebook
T 53/08 – The Closer 4 Aug 2011
This is an appeal against the decision of the Opposition Division revoking the opposed patent. It contains some interesting paragraphs on the determination of the closest prior art. Claim 1 before the Board read (in English translation): 1. A herbicide/safener combination, which comprises A) as herbicidally active compound a compound of the formula (A1)
or a salt thereof, and B) one or more safeners a) from the group of the compounds of the formulae (B1)
in which X is hydrogen, halogen, (C1 -C4)alkyl, (C1 -C4)alkoxy, nitro or (C1 -C4)haloalkyl, Z is OR1, SR1 or NR1R2 or is a saturated or unsaturated 3- to 7-membered heterocycle having at least one nitrogen atom and up to 3 hetero atoms which is linked to the carbonyl group in (B1) via the nitrogen atom and which is unsubstituted or substituted by radicals from the group consisting of (C1 -C4)alkyl, (C1 -C4)alkoxy or substituted phenyl, R1 is hydrogen or an unsubstituted or substituted aliphatic hydrocarbon radical, R2 is hydrogen, (C1 -C6)alkyl, (C1 -C6)alkoxy or substituted phenyl, n is an integer from 1 to 5, W is a divalent heterocyclic radical from the group of the partially unsaturated or heteroaromatic five-membered heterocycles having 1 to 3 hetero ring atoms of the type N and O, wherein one oxygen atom and at least one nitrogen atom are present in the ring. *** Translation of the German original *** [3] When applying the problem-solution approach, it is necessary to first determine the closest prior art. [3.1] Documents D1 and D10 – as well as the impugned patent - concern herbicides which are used on weeds in corn, rice and cereal cultures […]. [3.1.1] Document D1 discloses the herbicide of formula (A1)
2024 | 3398
T 53/08 – The Closer
K’s Law – The ebook
and its combination with other active substances […]. The subject-matter of D1 differs from the subject-matter of the claims of the impugned patent only in that the combinations of D1 do not comprise a compound of the formula (B1):
[3.1.2] Document D10 discloses compositions containing substituted isoxazoline derivatives, wherein the isoxazoline derivatives act as safeners. The generic formula of the isoxazoline derivatives overlaps with the generic formula of compounds (B1) of the impugned patent. In particular, the safeners (B1-9) and (B1-11) that are preferred according to the impugned patent […] are also described in document D10 […]. It is true that document D10 discloses that pyridylsulfonylurea-type herbicides can be combined with safeners of formula (B1) […] but it does not disclose the specific pyridylsulfonylurea derivative (A1) as defined in the claims of the impugned patent, wherein the pyrimidinyl and the pyridinyl rings can be substituted by alkoxy groups and a haloalkyl group, respectively. […] Therefore, the subject-matter of document D10 differs from the subjectmatter of the claims of the impugned patent. [3.2] The disclosure of each of the two documents differs from the impugned patent by one single feature only. When assessing which of documents D1 or D10 is to be considered as the closest prior art, the following is to be taken into account: It is apparent from the impugned patent […] and the application as originally filed […] that the selectivity of highly active herbicide substances is often insufficient. Moreover, the application of small amounts of these active substances does not lead to the elimination of the undesirable weeds without harming the useful plants (Kulturpflanzen). Therefore, the objective of the patent was to further develop the highly active substance of formula (A1) in such a way that it does not harm useful plants in a significant way when used in herbicidally active concentrations. Therefore, the natural starting point for the invention is the document which discloses the the active substance of formula (A1), i.e. document D1 (see T 487/95 [6.1-2]) Although suggestions on how to solve the problem can be found in document D10, this document primarily concerns the development of isoxazoline derivatives as safeners and, therefore, prima facie the skilled person would not consider this document as starting point for improving the selectivity of a specific herbicide. [3.3] Thus document D1 is the closest prior art. Problem [3.4] Starting from document D1, the problem to be solved can be seen in providing herbicidal compositions having an improved tolerability (selectivity) for the useful plants. [3.5] From comparative data D12 and D13 it follows that the harmful effects of compound (A1) is reduced when a safener is added. Document D12 proves that the damage in corn is reduced by 75 to 25% when the safener (B1-9) is added […]. Document D13 shows that the selectivity in wheat of the Rektor type, barley of the Baronesse and Duet types and wheat of the Triso type is increased when these plants were treated with compounds according to the invention […]. Therefore, the problem mentioned under [3.4] was indeed solved. Solution
2025 | 3398
T 53/08 – The Closer
K’s Law – The ebook
[3.6] When starting from document D1 and looking for a solution to the problem mentioned under [3.4], the skilled person would come across document D10, which also deals with the selectivity of herbicides with respect to cereals, rice and corn […] As mentioned above (see point [3.1.2]), document D10 discloses isoxazoline derivatives as safeners, which overlap with the generic formula of the (B1)-compounds of the impugned patent, and in particular the two specific safeners (B1-9) and (B1-11), which are also mentioned in the impugned patent. Moreover, the generic description of the pyridylsulfonylurea derivatives comprises specific compound (A1) […]. Therefore, the skilled person would expect that the selectivity of compound (A1) according to D1 is increased when a safener according to document D10 is added. Therefore, the skilled person would arrive at the compounds according to the invention without exercising any inventive activity (see T 288/98 [2.10]). [3.7] In its trials D12 and D13 the [patent proprietor] has also shown that the safener (B1-9) displays a higher activity when the pyridylsulfonylurea derivative H.2 tested in document D10 is replaced by the (A1) compound according to the impugned patent. The Board agrees with the [patent proprietor] that in view of those experimental results, one could come to the conclusion that the subject-matter of the present claims involves an inventive step if document D10 was considered to e the closest prior art. However, according to the established case law of the Boards of appeal, when there is more than one document that could be considered to be the closest prior art, then the document from which the skilled person would arrive at the subject-matter of the invention most easily has to be considered to be the closest prior art (see T 824/05 [6.2]). In the present case, this is document D1 […]. For this reason, the Board cannot follow the arguments of the [patent proprietor] in respect of inventive step of the main request. [3.8] Therefore, the subject-matter of the main request does not involve an inventive step (A 56). Finally, the appeal was dismissed. To download the whole decision (in German), click here. The file wrapper can be found here.
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T 1926/08 – Looking Back
K’s Law – The ebook
T 1926/08 – Looking Back 3 Aug 2011
The possibility of having different claims for different designated states is nowadays governed by R 138. As a matter of fact, this provision has undergone some change when the EPC 2000 entered into force. Here is a comparison between R 138 EPC 2000 and R 87 EPC 1973:
This change became necessary because under the EPC 2000, prior art under A 54(3) is novelty destroying for all contracting states, irrespective of which states were designated in the prior art, which was not the case under the EPC 1973. In the present case the question arose of whether R 87 EPC 1973 was applicable or not. The patent was based on a European patent application filed on September 18, 1998 and claimed the priority of an Italian application filed on October 3, 1997. The designation fees were validly paid for the contracting states BE, CH, DE, DK, ES, FR, GB, LI, LU, NL. The mention of the grant of the patent was published on November 16, 2005. One of the relevant documents of the prior art, D1, was a European patent application published on January 27, 1999 and claiming the priority of a German application filed on July 23, 1997. The designation fees were validly paid for the contracting states BE, DE, ES, FR, GB, IT, NL, SE. The opponents filed an appeal after the Opposition Division had decided to maintain the patent in amended form. The decision under appeal was based on a request including a first set of claims for the contracting states BE, DE, ES, FR, GB, NL and a second set of claims for the contracting states CH, DK, LI, LU. With their statement setting out the grounds of appeal, one of the opponents submitted questions of law to be referred to the Enlarged Board of Appeal (EBA). (1) Do amendments of a European patent, which have been requested after entry into force of EPC 2000, have to comply under application of A 123(1) EPC 2000 with all the requirements of the Implementing Regulation to EPC 2000, in particular also of R 138 EPC 2000? (2) Which point in time is decisive for the question, whether A 123(1) EPC 2000 is to be applied to a request for amendment of a European patent which has been granted before entry into force of EPC 2000? a) the time at which the decision on admissibility of the amendment is taken, b) the time at which the request, which is the object of the decision, was submitted, or c) the time at which the amendment was requested for the first time during the proceedings? Here is what the Board had to say on this topic: [3] D1 is a European patent application with a validly claimed priority date (its priority document is identical to the application as filed) which is prior to the priority date of the patent in suit and a publication date which is after the filing date of the patent in suit. It belongs therefore to the state of the art under A 54(3).
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T 1926/08 – Looking Back
K’s Law – The ebook
[3.1] The present patent was granted before the date of entry into force of the EPC 2000. By virtue of Article 1 of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the EPC of 29 November 2000 (Special edition No.1 of OJ EPO 2007, 197), A 54(4) EPC 1973 still applies. [3.2] According to R 23a EPC 1973, which is an implementing regulation of A 54(4) EPC 1973, D1 is only state of the art with respect to novelty for the common contracting states for which the designation fees have been validly paid (BE, DE, ES, FR, GB, NL). In order to establish novelty with respect to document D1 the patent proprietors filed a first set of claims for these states and a second set for the further contracting states designated in the patent in suit (CH, DK, LI, LU). Since the admissibility of a second set of claims has been objected to by the opponents, the legal framework relating to the possibility of filing different claims, description and drawings for different states needs to be analysed. [3.3] Article 2, first sentence, of the Administrative Council’s decision of 7 December 2006 amending the Implementing Regulations to the EPC 2000 (Special edition No.1 of OJ EPO 2007, 89) reads: “The Implementing Regulations to the EPC 2000 shall apply to all European patent applications, European patents, ..., in so far as the foregoing are subject to the provisions of the EPC 2000.” [3.4] In decision J 10/07 [1.3] the Legal Board of Appeal (LBA) stated that this can only mean that a Rule of the Implementing Regulations to the EPC 2000 is to be applied where, or in so far as, the European patent application in question is subject to the Article of the EPC 2000 to which that Rule relates and which is specified and supplemented by it. Otherwise, irresoluble contradictions and legal discrepancies would arise between the applicable Articles of the EPC 1973 and the applicable provisions of the Implementing Regulations to the EPC 2000, which cannot have been the legislator’s intention. [3.5] In J 3/06 [3] the LBA stated further that in an assessment of which Article relates to a particular Rule, it should be noted that a Rule in the Implementing Regulations can affect different EPC Articles in very different ways. Within the meaning of the provision, a Rule does not apply to an Article purely by virtue of mentioning that Article. However, a Rule in the Implementing Regulations can be assumed to apply to a particular EPC 2000 Article when it puts a more detailed construction on that Article, in keeping with the purpose of “implementing” the EPC. [3.6] According to Article 7 of the Act revising the EPC (Special edition No.1 of OJ EPO 2007, 196) in connection with the Administrative Council’s decision of 28 June 2001 on the transitional provisions (supra), A 54(4) EPC 1973 shall continue to apply to European patents granted before 13 December 2007, while A 123 EPC 2000 is applicable to patents granted before that date. This has not been contested. The point of dispute rather is whether or not R 87 EPC 1973 is a Rule implementing A 54(4) EPC 1973 and consequently could be applied, or whether the situation is covered by A 123 and R 138 EPC. Indeed R 87 EPC 1973 allows different claims, description and drawings for different states both in the case of an earlier European patent application which is part of the state of the art under Article 54(3) and (4) EPC 1973 and when a prior national right exists, while R 138 EPC 2000 foresees only the latter case. [3.7] As set out by the LBA, a Rule can affect different Articles and this Board does not deny that R 87 EPC 1973 also affects A 123 EPC. However the clear purpose of R 87 EPC 1973 is to take account of the situation that a conflicting application constitutes prior art only for some and not for all designated states. It governs the procedure when this situation arises and thus is clearly linked to A 54(4) EPC 1973. A Rule does not only implement an Article when it defines its substance in more detail, like R 23a EPC 1973 does by setting up a condition for the territorial scope of the conflicting application, but also when it provides a procedure to enforce the substance of the Article. [3.8] If one did not allow a separate set of claims, the patent proprietor would have to limit his patent for all designated states. This would mean that the conflicting application had effect for all designated states. This is the situation under the EPC 2000 which, however, in the present case is not yet applicable. Not providing a procedure to enforce what is laid down in A 54(4) EPC 1973 is in contradiction to the legislator’s intention because it would make A 54(4) EPC 1973 redundant. Thus R 87 EPC 1973 is applicable and a separate set of claims for the contracting states CH, DK, LI and LU is admissible. Referral to the EBA
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T 1926/08 – Looking Back
K’s Law – The ebook
[4] According to A 112(1)(a) EPC 1973 EPC the Board of Appeal shall refer a point of law to the EBA in order to ensure uniform application of the law or if a point of law of fundamental importance arises and if it considers that a decision of the EBA is required. [4.1] [Opponents 1] seem to suggest that coming to the conclusion that R 87 EPC 1973 was a Rule implementing A 54(4) EPC 1973 instead of A 123 EPC was contradictory to the jurisprudence of the LBA in J 3/06. The Board does not see such a contradiction. In J 3/06 the LBA clearly said that a Rule can affect different EPC Articles and that a Rule can be assumed to apply to a particular Article when it puts a more detailed construction on that Article, in keeping with the purpose of “implementing” the EPC. The present Board followed this line and came to the conclusion that the purpose of R 87 EPC 1973 is to provide a procedure for the situation underlying A 54(4) EPC 1973 and thus implements this Article. Furthermore, from this it follows that the questions [opponents 1] wanted to have referred to the EBA are irrelevant because they concern A 123 EPC which does not play a role for answering the relevant question of whether or not a separate set of claims is admissible. [4.2] For these reasons, the Board does not consider that a decision of the EBA is required. Should you wish to download the whole decision, click here. The file wrapper can be found here.
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T 172/07 – Table Dancing
K’s Law – The ebook
T 172/07 – Table Dancing 2 Aug 2011
The opponent filed an appeal against the decision of the Opposition to maintain the patent in amended form. Claim 1 as granted read : 1. A hair cleansing composition comprising the following components:
Claim 1 of the main request before the Board read : 1. A hair cleansing composition comprising the following components:
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T 172/07 – Table Dancing
K’s Law – The ebook
In what follows, the Board examines whether the main request on file complies with the requirements of A 123(3). Amendments [3] Compared with Claim 1 as granted, Claim 1 according to the main request (request underlying the decision under appeal) comprises the feature (B) one or more acids selected from malic acid, succinic acid and maleic acid : 0.01 to 5 wt.% as a replacement of the feature of Claim 1 as granted (B) one or more acids selected from alpha-hydroxy acid, beta-hydroxy acid, 1,2-dicarboxylic acid, 1,3dicarboxylic acid, aromatic carboxylic acid : 0.01 to 5 wt.%. [3.1] Succinic acid [HOOC-(CH2)2-COOH] (IUPAC name butanedioic acid) is also known as ethane-1,2dicarboxylic acid. Malic acid [HOOC-CH2-CHOH-COOH] (hydroxybutanedioic acid) is also known as hydroxysuccinic acid. Maleic acid is the (cis form)-Butenedioic acid (IUPAC name (Z)-Butenedioic acid) of formula HOOC-CH=CHCOOH. Therefore, succinic, malic and maleic acids are all (ethane or ethene) 1,2-dicarboxylic acids and malic acid also belongs to the class of alpha-hydroxy acids. [3.2] The amendments made to granted Claim 1 thus consist in: (a) the deletion of the classes beta-hydroxy acid, 1,3-dicarboxylic acid and aromatic carboxylic acid; and
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T 172/07 – Table Dancing
K’s Law – The ebook
(b) the restriction or narrowing down of the classes alpha-hydroxy acid and 1,2-dicarboxylic acid to three of their specific acids, all belonging to the class 1,2-dicarboxylic acid, one of which (malic) also belongs to the class of alpha-hydroxy acids. [3.3] Whilst the definition of the chemical nature of the component (B) of the composition defined in Claim 1 as granted has been amended as indicated above, the amount of component (B) has not been altered. Scope of Claim 1 as granted [4] Claim 1 as granted essentially consists of a table with three columns, the first identifying the component (A, B or C), the second defining its chemical nature and the third specifying the amount of the component. [4.1] Having regard to the itemization of component, chemical nature and amount (of the component) given in Claim 1, it is immediately apparent that the amount defined in Claim 1 relates to the component as such, rather than to each of its possible, specific constituents. [4.2] This immediate recognition is fully in line with the description of the patent in suit, as apparent from Paragraph [0012], stating “As the component (B), one or more of the above-described acids can be used. The component (B) is added in a proportion of from 0.01 to 5 wt.%, preferably from 0.05 to 3 wt.%, notably from 0.1 to 2 wt.% based on the whole composition.”. No further passages of the description deal with the proportion of component (B). In the examples (Table 1), an amount of acid of 0.5 wt.% is illustrated. [4.3] Claim 1 as granted thus encompasses any hair cleansing composition comprising 0.01 to 20 wt.% of component (A), 0.01 to 5 wt.% of component (B) and 5 to 40 wt.% of component (C). As regards component (B), Claim 1 as granted unambiguously requires that it be one or more acids selected from alpha-hydroxy acid, beta-hydroxy acid, 1,2-dicarboxylic acid, 1,3-dicarboxylic acid and aromatic carboxylic acid and that the total amount of the one or more acids making component (B) be in the range of 0.01 to 5 wt.%. Scope of Claim 1 of the main request [5] Claim 1 of the main request encompasses any hair cleansing composition comprising 0.01 to 20 wt.% of component (A), 0.01 to 5 wt.% of component (B) and 5 to 40 wt.% of component (C). As regards component (B), Claim 1 of the main request requires that it be one or more acids selected from malic, succinic and maleic acids and that their total amount be in the range of 0.01 to 5 wt.%. No requirement whatsoever is established for 1,2-dicarboxylic acids other than malic, succinic and maleic acids. Nor is any requirement stipulated for e.g. 1,3dicarboxylic, beta-hydroxy or aromatic carboxylic acids. Alleged extension of the protection conferred [6] To illustrate with a case in point whether or not the protection conferred has been extended, the Board considers a hair cleansing composition comprising, in addition to components (A) and (C) within the amounts given in Claim 1, 4 wt.% of malic acid and 6 wt.% of fumaric acid (malic and fumaric acids are illustrative 1,2dicarboxylic acids according to the patent in suit, Paragraph [0010], first sentence). Fumaric acid is the (trans form)-Butenedioic acid (IUPAC name (E)-Butenedioic acid) of formula HOOC-CH=CH-COOH. [6.1] The illustrative composition is not encompassed by Claim 1 as granted, for the following reasons: (a) the amount of fumaric acid is 6 wt.% (i.e. the amount of one item of one of the defined classes of acids making up Component B is already above 5 wt.% as defined); and, (b) since malic and fumaric acids are both 1,2-dicarboxylic acids, Component (B) is made up of 1,2-dicarboxylic acids in a total amount of 10 wt.% (again, well above 5 wt.% as defined). [6.2] By contrast, the same illustrative composition is encompassed by Claim 1 of the main request, as: (a) malic acid is present in amount of 4 wt.%, i.e. within the range of 0.01 to 5 wt.% as defined; and, (b) since Claim 1 of the main request no longer defines any quantitative conditions for the class of 1,2dicarboxylic acids, let alone for fumaric acid, the presence of 6 wt.% of fumaric acid (a 1,2-dicarboxylic acid not 2032 | 3398
T 172/07 – Table Dancing
K’s Law – The ebook
defined as such in Claim 1 of the main request) is not excluded by the open formulation of Claim 1 of the main request (as comprising = including what is defined but not excluding further components not defined, unless otherwise specified). [6.3] The Board arrives at the same conclusion if the illustrative composition mentioned by the parties during the appeal proceedings is considered, namely a hair cleansing composition comprising 4 wt.% of malic acid and 4 wt.% of an aromatic carboxylic acid, in addition to components (A) and (C) within the amounts given in Claim 1. Phthalic acids are illustrative aromatic carboxylic acids according to the patent in suit, Paragraph [0010], last sentence. Phthalic acids include o-phthalic acid, i.e. benzene-1,2-dicarboxylic acid of formula C6H4-1,2(COOH)2. Hence, considering the 4 wt.% of malic acid and the fact that malic and o-phthalic acids are both 1,2dicarboxylic acids, Component (B) of the illustrative composition is made up of two 1,2-dicarboxylic acids in a total amount of 8 wt.%, i.e. above 5 wt.% as defined. Therefore, the illustrative composition is not encompassed by Claim 1 as granted. [6.4] By contrast, again, the same illustrative composition is encompassed by Claim 1 of the main request, as: (a) malic acid is present in amount of 4 wt.%, i.e. within the defined range of 0.01 to 5 wt.%. And, (b) Claim 1 of the main request no longer defines any quantitative conditions for the class of 1,2-dicarboxylic acids, let alone for o-phthalic acid, so that the presence of 4 wt.% of o-phthalic acid (a 1,2-dicarboxylic acid) is not excluded by the open formulation of Claim 1 of the main request. [6.5] Therefore, embodiments that were not encompassed by Claim 1 as granted are in fact encompassed by Claim 1 of the main request, so that the protection conferred has been extended, contrary to A 123(3). [6.6] Consequently, the main request is not allowable. Alleged divergence between two decisions of the Boards of Appeal Request of a referral to the Enlarged Board of Appeal (EBA) [7] It follows from the foregoing that in the present case the extension of the protection conferred is immediately apparent, so that the Board need not refer to the decision invoked by the [patent proprietors] (T 1556/07) nor to that invoked by [opponent 2] (T 2017/07). [7.1] As to the request of the parties for a clarification of the impact on the present case of the decisions invoked, the Board, by way of obiter dictum, may only note that: [7.1.1] T 2017/07 concerned the following amended Claim 1 (compared with Claim 1 as granted): “1. A hair dye composition which comprises (A) an acid dye and (B) an alkylene carbonate having 3-5 carbon atoms in total, said composition exhibiting a pH of 2-6, and having a buffer capacity of 0.007-0.5 gram equivalent/L, wherein the content of the alkylene carbonate having 3-5 carbon atoms in total is 0.5-50% by weight, the alkylene carbonate being propylene carbonate, and wherein the composition contains neither benzyloxyethanol nor benzyl alcohol.” The amendment concerned the narrowing down of a class of compounds (alkylene carbonate) to an entity thereof (propylene carbonate). The competent Board decided that the amendment was not allowable under A 123(3), as other alkylene carbonates with 3-5 carbon atoms might be present in any amount after the amendment. The decision was based inter alia on the implicit proviso (Claim 1 as granted) that Component B was to be 0.550 wt.% in total. [7.1.2] T 1556/07 concerned the following amended Claim 1 (compared with Claim 1 as granted): “1. Composition for the decolouring or bleaching of hair, which is mixed directly prior to use with an aqueous oxidizing agent preparation and is characterized in that it is in the form of a bleaching composition suspension and comprises a combination of (a) 0.1 to 80 per cent by weight of at least one organically lipophilic compound from the group of plant and animal fats, oils and waxes, of paraffin hydrocarbons, of higher alcohols and ethers, of aliphatic and aromatic esters, and of silicone oils; 2033 | 3398
T 172/07 – Table Dancing
K’s Law – The ebook
(b) 0.1 to 40 per cent by weight of at least one inorganic or organic thickener with lipophilic character which, with the lipophilic compound, forms an oleogel or lipogel which is chosen from alkali metal carboxylates, alkaline earth metal carboxylates, aluminium carboxylates, copolymers of alkenes, cross-linked organic polymers and lipophilicized sheet silicates, or mixtures of these thickeners; (c) 0.1 to 40 per cent by weight of at least one inorganic or organic thickener with hydrophilic character, which is chosen from polymers from the group of celluloses, alginates, polysaccharides and acrylic acids; (d) 10 to 65 per cent by weight of at least one inorganic persalt; (e) 10 to 45 per cent by weight of at least one alkaline-reacting salt; and optionally auxiliaries and additives.” The amendment concerned the deletion of one option for component (b), the class “alkali metal carboxylates”. The Board found that the wording of Claim 1 was clear per se, so that to fulfil its requirements it was sufficient that the composition contained 0,1 to 40 wt% of at least one of the thickeners chosen from the given list of classes, or 0,1 to 40 wt% of any mixtures of them, independently of whether or not further thickeners were present (point [3.2.2] of the reasons). That clear definition could not be changed by a general statement in the description that a total amount of 0.1 to 40 wt% of thickeners should be used (point [3.2.3] of the reasons). Hence, the decision did not acknowledge any implicit proviso by Claim 1 as granted that component (b) was to be 0.1-40 wt.% in total. [7.2] Since the present case shares with T 2017/07 a narrowing down of a claimed class (1,2-dicarboxylic and alpha-hydroxy acids) to some of its entities, the conclusions of T 2017/07 apply to the present case. [7.3] As a matter of fact, the Board arrives at the same conclusion as T 2017/07, and the implicit proviso cited by T 2017/07 is in the present case rather explicit (point [4.1], supra), so that no divergence from T 2017/07 arises. [7.4] Consequently, the narrowing down of the classes 1,2-dicarboxylic and alpha-hydroxy acids to 3 specific entities thereof, as carried out for Component (B) in the definition of Claim 1 of the main request, which openly defines a composition, broadens the scope of protection, with the consequence that such amended claim in appeal proceedings extends the protection conferred by the granted patent (A 123(3)). [7.5] That the narrowing down of classes to species as decided in T 2017/07 is a different situation from the deletion of a class as in T 1556/07 is acknowledged in T 1556/07 itself (point [3.2.5] of the reasons), and thus need not be detailed further. [7.6] Given the circumstances (a decision is possible on the facts of the case, which arrives at the same conclusion as a previous decision of another Board on a similar case (T 2017/07), it may be left undecided whether or not in the present case the deletion of a class (e.g. aromatic acids, 1,3-dicarboxylic acids, betahydroxy acids) from the definition of Component (B) in Claim 1 of the main request extends the protection conferred, i.e. whether or not the ratio of T 1556/07 applies. [7.7] Attention is however drawn to the fact that the present situation is rather different from that decided in T 1556/07, at least because the definition of the amount of Component (B) in Claim 1 is specifically itemized in its own column in the Table and is clearly in line with the disclosure of the amount of component (B) in the patent specification, so that the requirement of how much of Component (B) can be present in the claimed composition is unambiguously fixed (points [4], supra). [7.8] Less important differences arise from the fact that not one (as in T 1556/07) but more classes of Claim 1 as granted have been deleted and from the fact, apparent from Paragraphs [0009] and [0010] of the patent in suit, that illustrative acids such as mandelic, salicilic, o- and m-phthalic acids belong to more than one of the classes alpha-hydroxy acid, beta-hydroxy acid, 1,2-dicarboxylic acid, 1,3-dicarboxylic acid and aromatic carboxylic acid. Hence, the classes defined in Claim 1 as granted overlap, with the result that the deletion of one class, e.g. aromatics, does not remove all of its elements but only those other than alpha-hydroxy, beta-hydroxy, 1,2dicarboxylic or 1,3-dicarboxylic acids. [7.9] Therefore, the situation at issue is different from that decided in T 1556/07, so that it is not apparent that the ratio of T 1556/07 applies in the present case.
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T 172/07 – Table Dancing
K’s Law – The ebook
[7.10] Since a decision is possible on the facts of the case at issue, which arrives at the same conclusion as a previous decision of another Board on a similar case (T 2017/07), there is no need for a referral to the EBA in view of the alleged contradiction between the two decisions invoked. Nor is it apparent that the deletion of a class of chemical entities in a claim for a composition openly formulated concerns a point of law of fundamental importance that cannot be decided on the facts of each case. Therefore, the request for a referral is refused. Should you wish to download the whole decision, click here. The file wrapper can be found here.
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T 1075/06 – Bloody Monday
K’s Law – The ebook
T 1075/06 – Bloody Monday 1 Aug 2011
This decision deals with an appeal following the refusal of an application by the Examining Division, based on A 54 and A 52(4). Claims 1, 24, 27, and 33 before the Board read : 1. A blood processing system (10) comprising
a donor flow channel (266, 300) to convey fluid to and from a donor, a blood processing flow channel (18, 290, 312) including a blood separation chamber (18) to separate a blood component from donor blood, a blood component collection flow channel (292, 294, 306) including a blood component collection container (304, 308), a pump station (PP1, PP3) communicating with and adapted to receive fluid from the donor flow channel, the blood processing flow channel, and the blood component collection flow channel, and a controller (16) to operate the pump station (PP1, PP3) in multiple modes, including a processing mode, during which the pump station is operated to convey blood in the donor flow channel (266, 300) into the blood processing flow channel (18, 290, 312) for separation of the blood component in the blood separation chamber, and a collection mode, during which the pump station is operated to convey at least some of the blood component in the blood processing flow channel into the blood component collection flow channel (292, 294, 306) for collection in the blood component collection container (304, 308).
24. A blood processing method comprising the steps of:
providing a blood processing circuit comprising a multi-function pump station (PP1, PP3), a donor flow channel (266, 300) for conveying fluid to and from a donor, a blood processing flow channel (18, 290, 312) including a blood separation chamber (18) to separate a blood component from donor blood, and a blood component collection flow channel (292, 294, 306) including a blood component collection container (304, 308), wherein the pump station is coupled to and adapted to receive fluid from the donor flow channel, the blood processing flow channel and the blood component collection flow channel, and operating the pump station in multiple modes, including a processing mode, during which the pump station is operated to convey blood in the donor flow channel into the blood processing flow channel for separation of the blood component in the blood separation chamber, and a collection mode, during which the pump station is operated to convey at least some of the blood component in the blood processing flow channel into the blood component collection flow channel for collection in the blood component collection container.
27. A method according to Claim 24 further including coupling the pump station to a utility flow channel including a processing fluid container, and operating the pump station during a blood component return mode to convey processing fluid in the utility flow channel into the donor flow channel for mixing with the blood component that is to be returned to the donor. 33. A method according to Claim 32 further including coupling the pump station to a utility flow channel including a processing fluid container, and operating the pump station during a blood component return mode to convey processing fluid in the utility flow channel into the donor flow channel for mixing with the red blood cells that are to be returned to the donor. The Board also came to the conclusion that this subject-matter was excluded from patentability : 2036 | 3398
T 1075/06 – Bloody Monday
K’s Law – The ebook
[2.1] The claimed method relates to an on-line blood fractionation technique […] wherein whole blood is drawn from a donor and separated into its liquid and cellular components, with certain components being collected and the remaining components being returned to the donor. The method is performed intermittently, with a predetermined sequence and repetition of various modes (in particular “collection mode”, “processing mode”, “processing fluid transfer mode”, “blood component return mode” as defined in the claims, each mode comprising various cycles and phases […]). It has to be decided whether the claimed blood processing method is a method for treatment of the human body by surgery or therapy falling under the exclusion clause of A 53(c). In particular with respect to the aspect of surgery, the criteria developed in decision G 1/07 of the Enlarged Board of Appeal (EBA) have to be taken into consideration. Before dealing with these in detail below and in response to the [applicant’s] assertion that exclusions from patentability should be construed narrowly, it is to be noted that the EBA found in G 1/07 [3.1] that a provision containing exclusions or exceptions from patentability is to be interpreted in the same manner as any other requirement for patentability, i.e. in such a manner that it takes its effect fully and achieves the purpose for which it was designed. Surgery [2.1.1] Independent method claim 24 comprises the step of “providing a blood processing circuit comprising a multi-function pump station (PP1, PP3), a donor flow channel (266, 300) for conveying fluid to and from a donor ...”. From the description and drawings it becomes clear that the claimed blood processing method is performed online and that the donor forms part of the blood processing circuit […]. This is also reflected by the expression “for conveying fluid to and from a donor” comprised in method claim 24.
Access to the donor’s vasculature is achieved by means of venipuncture, i.e. performing an incision into the donor’s vein by means of a phlebotomy needle 268, 268’ […]. Consequently, the claimed method encompasses the implicit step of venipuncture […]. According to G 1/07 [headnote 1 and 4.1, last §] a claim which comprises a step encompassing an embodiment which is a “method for treatment of the human or animal body by surgery” within the meaning of A 53(c) cannot be left to encompass that embodiment. Moreover, the claimed method involves “conveying fluid to and from a donor”, wherein the “fluid” may include whole blood conveyed from a donor, or blood components or additives conveyed to a donor […]. It therefore has to be decided whether or not the steps of venipuncture and blood extraction are of a surgical nature according to the criteria developed in G 1/07. This has to be done on a case-by-case basis, with each category of cases being assessed on its own merits (G 1/07 [3.4.2.6]). Venipuncture [2.1.1.1] As ruled in G 1/07 [headnote 1; cf. 3.4.2.7, last §], a method which “comprises or encompasses an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise, is excluded from patentability as a method for treatment of the human or animal body by surgery pursuant to A 53(c)” (emphasis added). 2037 | 3398
T 1075/06 – Bloody Monday
K’s Law – The ebook “Substantial physical intervention”
In this Board’s view, venipuncture represents a substantial physical intervention on the body. It is not comparable to treatments such as tattooing, piercing, hair removal by optical radiation, or micro abrasion of the skin, i.e. invasive techniques performed on uncritical parts of the body generally carried out in a non-medical, commercial environment which should not fall under the exclusion clause (G 1/07 [3.4.2.2]). Donor blood is commonly obtained from the median cubital vein, which can hardly be regarded as an “uncritical part of the body”, with a phlebotomy needle of a cannula diameter which is sufficiently large in order to collect and process the desired quantities of blood (for instance up to 1000 ml of red blood cells […]). The procedure generally takes place in a medical environment, usually a blood bank or a transfusion or apheresis centre with the required emergency equipment, under the supervision and presence of a physician. “Professional medical expertise” Venipuncture is usually carried out either by a physician or by a phlebotomist specifically trained in blood collection techniques, i.e. a medical practitioner having the necessary skills and knowledge of the respective anatomy, needle and catheter insertion techniques, associated health risks and precautions to be taken. Accordingly, performing a venipuncture belongs to the kind of interventions which represent “the core of the medical profession’s activities, i.e. the kind of interventions for which their members are specifically trained and for which they assume a particular responsibility” (G 1/07 [3.4.2.3]). There is no doubt that venipuncture requires professional medical expertise to be carried out. Even though by itself not decisive (“whether or not a method is excluded from patentability under A 53(c) cannot depend on the person carrying it out” G 1/07 [3.4.1] see also G 1/04 discussed therein), this criterion gives a further indication that the claimed method might fall under the exclusion clause. “Substantial health risks” Even when carried out with the required professional care and expertise, venipuncture entails certain health risks for the donor. In some countries, the responsible physician is legally required to inform the donor about all these risks, including their likelihood and severity, prior to the donation procedure (see for instance § 6 of the German “Transfusionsgesetz”). Known complications associated with venipuncture include infection, bleeding and hematoma, secondary vein perforation, phlebitis, tendon injury, and nerve irritation and injury. While some of these injuries are well treatable if necessary, others may lead to serious irreversible effects. In particular, traumatisation of nerves (for instance the medial antebracheal cutaneous nerve) may lead to chronic pain and even permanent paralysis of the surrounding tissue. Even though these risks may be rare, they are undoubtedly substantial. If follows that venipuncture of blood donors represents a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise. Shortly after the present case was decided at the oral proceedings, the Board became aware of the recent decision T 663/02 from another Board, dated 17 March 2011, which deals with the intravenous injection of a contrast agent (see point [3.2]). This is a procedure closely related to yet different from venipuncture for extracting large quantities of blood from a donor. As explained above, the assessment of the present case, following the criteria developed in G 1/07, is also different in a number of respects and would not have changed in the light of T 663/02. Blood extraction [2.1.1.2] The claimed method includes a “processing mode, during which the pump station is operated to convey blood in the donor flow channel into the blood processing flow channel ...”. Moreover, claim 24 states that “the pump station is coupled to and adapted to receive fluid from the donor flow channel”. Since the donor flow channel is in fluid communication with the vasculature of the donor (who remains connected to the blood processing circuit during the whole procedure until the final phase […]), this implies that large quantities of blood are being removed, via the donor flow channel, from the donor’s vasculature (if 1000 ml of red blood cells are to be collected as mentioned above, a considerably larger volume of whole blood has to be processed). Accordingly, the applicant’s argument that blood is merely conveyed from the donor flow channel of the blood processing circuit rather than from the donor himself is not accepted by the Board. Moreover, in a medical sense, blood is a (flowing) organ of the human body, performing numerous functions which are essential to the health of the donor. Accordingly, the withdrawal of blood can be regarded to some 2038 | 3398
T 1075/06 – Bloody Monday
K’s Law – The ebook
extent as partial removal of an organ. As further specified in G 1/07 [3.4.2.5], manipulating a body part is traditionally considered surgical (even if the intervention were not invasive and did not require that tissues are penetrated, as is the case here). Therefore, in the Board’s view, the removal of large quantities of blood from the donor’s body also qualifies as a “substantial physical intervention on the body which requires professional medical expertise to be carried out”. It may result in hypovolemic reactions of the circulatory system (e.g. dizziness, nausea, fainting, collapse), i.e. “substantial health risks even when carried out with the required professional care and expertise”. As mentioned above […], the responsible physician may even be legally required to inform the donor about these risks, at least in some countries, and the transfusion centre or blood bank is required to hold available the necessary emergency equipment and personnel. Furthermore, during the blood extraction process, the donor has to be kept under continuous medical surveillance by a physician, who must be able to interrupt the procedure in case of health problems and complications. Therapy [2.1.2] The claimed method (see dependent claim 27) furthermore comprises the step of “operating the pump station during a blood component return mode to convey processing fluid in the utility flow channel into the donor flow channel for mixing with the blood component that is to be returned to the donor”. A similar wording is used in claim 33. Since the donor flow channel is in fluid communication with the donor’s vasculature as mentioned above, this implies that processed blood components are being returned to the donor […]. Accordingly, the applicant’s argument that blood is merely conveyed to the donor flow channel of the blood processing circuit rather than to the donor himself is not accepted by the Board. The processing includes the removal of certain blood components such as red blood cells, platelets or plasma (which are to be collected) and the addition of an anticoagulant […]. [T]he purpose of the procedure may not only be storage, but also therapeutic (“blood component therapy”, “therapeutic plasma exchange”). In patients with pathologically elevated quantities or malignant properties of certain blood components, their removal by the claimed blood processing method and the return of the remaining components does indeed have a therapeutic effect. Moreover, anticoagulants are medicaments and their administration to the donor via the return mode also results in a therapeutic effect on the donor’s body, namely the reduction of blood clotting, thus preventing, for instance, deep vein thrombosis, pulmonary embolism, myocardial infarction and stroke. According to the established jurisprudence of the boards of appeal, the term “therapy” also covers prophylactic methods for treatment (see “Case Law of the Boards of Appeal of the EPO”, 6th ed. 2010, I.B.4.4.1). Consequently, the blood component return mode according to dependent claims 27 and 33 results in the readministration of processed blood components which may generate various therapeutic effects on the human body. Methods with both therapeutic and non-therapeutic indications fall under the exclusion clause of A 53(c) as long as they are not limited to non-therapeutic applications (see “Case Law of the Boards of Appeal of the EPO”, 6th ed. 2010, I.B.4.4.2). Independent claim 24, on which claims 27 and 33 depend, also covers the return mode (“conveying fluid to and from the donor”) and thereby relates to a method for treatment of the human body by therapy. Method for operating a device [2.1.3] A method which is only concerned with the operating of a device without any functional link between the claimed method and the effects produced by the device on the body does not qualify as a method for treatment within the meaning of A 53(c) EPC 1973. If, on the contrary, there is such a functional link, the method is excluded from patentability. This principle, initially developed for devices for use in a therapeutic treatment (see, for instance, T 245/87 [3.2.3]), has been endorsed by the EBA for treatments by therapy as well as surgery (G 1/07 [4.3.2])). Whether or not a claimed method only concerns the operation of a device without any functional link to the effects of the device on the body “requires an evaluation of the overall technical circumstances of the case and is therefore a matter to be determined ... in the individual cases under consideration”. As explained above under points [2.1.1.2] and [2.1.2], the claimed steps of operating the pump station in a processing mode and in a blood component return mode do have direct surgical and therapeutic effects on the donor’s body. Consequently, there is a direct functional interaction between the claimed method and the effects produced by the pump station on the body. Since the functional link is necessarily present in the case under consideration here, the method is excluded from patentability.
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T 1075/06 – Bloody Monday
K’s Law – The ebook
The present case is quite different from that underlying T 329/94, referred to by the [applicant], which related to a blood extraction assistance method for facilitating sustained venous blood flow though a human limb towards a venous blood extraction point. In that case it was found that none of the method steps claimed had a therapeutic effect in themselves, and consequently there was no functional link or physical causality between the measure implemented and any therapeutic effect produced on the body to which the measure was applied. Furthermore, it was found that the blood extraction itself did not form part of the claimed subject-matter. If that would have been the case, it was stated that withdrawal of blood would fall under the exclusion clause of A 52(4) EPC 1973 three times, namely as treatment by therapy and surgery and as a diagnostic method (point [4] of the Reasons). With respect to the last two aspects it has to be noted, however, that decision G 1/07 and opinion G 1/04 have been subsequently issued by the EBA and the criteria developed therein have now to be taken into consideration. Finally, the [applicant’s] argument that the claimed method could also be carried out with stored blood is not convincing since the claimed method clearly refers to the donor (“conveying fluid to and from a donor”). [2.1.4] From the above it follows that claims 24 to 37 are directed to a method for treatment of the human body by surgery and therapy which is excluded from patentability under A 53(c). Should you wish to download the whole decision, click here. The file wrapper can be found here.
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Oldies But Goldies – Failure To Forward
K’s Law – The ebook
Oldies But Goldies – Failure To Forward 30 Jul 2011
J 3/80 deals with a request for re-establishment of rights in a case where the applicant was not responsible for having missed a time limit. The applicant had filed a European patent application at the United Kingdom Patent Office (UKPO), London, on August 28, 1979. The application claimed a priority of August 28, 1978. The UKPO issued a “secrecy direction” under section 22 of the Patents Act 1977, one effect of which was that the application could not be forwarded to the EPO unless and until the Ministry of Defence gave notice to the UKPO that the “secrecy direction” could be revoked. The “secrecy direction” was subsequently revoked and the notice informing the appellant that this had been done was issued on October 29, 1979. By letter dated October 30, 1979, the UKPO informed the Receiving Section (RS) of the EPO that the application “would now be forwarded … in the normal way”. This letter was received by the EPO on November 2, 1979. The application itself arrived there on November 5, 1979. As the period of fourteen months had already expired, the RS issued a notice in accordance with R 69(1) that, pursuant to A 77(5), the application was deemed to be withdrawn. The applicant applied for restitution of rights pursuant to A 122. The RS refused restitution of rights on the single ground that A 122 provides only for restoration of rights where there has been failure to observe a time limit which it is for the applicant to observe, whereas the time limit not observed in the present case was one which it was for the UKPO to observe. The Board agrees with the RS: [2] While it is clear that the appellant and its representative were in no way responsible for what has happened and did all they could to see that it did not happen, it is, however, not possible to interpret the provisions of either A 77 or A 122 in the manner contended for or in any other way that would entitle the appellant to succeed on this appeal. [3] The appellant does not contest the proposition of the RS that A 122(1) refers to a time limit for the observation of which vis-à-vis the EPO the applicant for or proprietor of a European patent is responsible. That proposition is plainly correct. [4] The appellant asserts that A 77(3), in contrast to A 77(1) and (2), does not attribute responsibility for forwarding applications to any specific party and that the applicant has overall responsibility for observance of the relevant time limits. This assertion cannot be accepted. The obligation to forward European patent applications filed nationally to the EPO rests, and rests alone, upon the relevant central industrial property office, in accordance with A 77(1), to which the provisions of A 77(3) are merely supplementary. The central industrial property office is in no sense the agent of the applicant, so far as concerns the forwarding of the application. It follows that the appellant cannot bring itself within the language of A 122(1) by any argument that it had responsibility for forwarding the application. [5] It is clear from the provisions of A 77(5), taken together with A 135(1)(a) and A 136(2), that an applicant who suffers the misfortune suffered by the present appellant should not be entitled to claim restitution of rights under A 122. On the contrary, A 77(5) expressly provides for refund of the filing, search and designation fees and A 135(1)(a) and A 136(2) provide facilities for conversion to national patent applications on request filed within three months after notification has been made that the European patent application is deemed to be withdrawn. It follows that there is no scope for an argument that the spirit of A 122 should be invoked: specific alternatives to restoration of rights are provided. [6] It is, of course, true, as Mathély has pointed out (“Le droit européen des brevets d’invention” Librairie du Journal des Notaires et des Avocats, Paris 1978, p. 244), that the sanction of A 77(5) EPC is grave, because it is imposed on the applicant for a default for which he is not responsible, but neither Mathély nor any other author 2041 | 3398
Oldies But Goldies – Failure To Forward
K’s Law – The ebook
whose writings are known to the Legal Board of Appeal, suggests that A 122 is applicable to relieve the applicant in such circumstances as those of the present case. Van Empel (“The Granting of European Patents” Sijthoff, Leyden 1975, para. 382) observes that once the time limit referred to in A 77(5) has expired without the European application reaching the EPO, the applicant’s “only hope” for obtaining a patent resides in the possibility of conversion of the European application into national ones. [7] Van Empel also rightly points out that the loss of the European application represents a loss to the applicant. In the present case, the extra expenses incidental to conversion are likely to be considerable as no fewer than nine national applications would have to be made to secure the applicant’s lost position. However, any complaint or claim for compensation against a national authority is a matter for national law exclusively. Some of the appellant’s submissions in this appeal may be relevant to such a complaint or claim but are not relevant to the matters with which this Board has to deal. [8] In the circumstances, the Decision of the RS was correct in all respects and must be affirmed. Nowadays, the relevant provisions are A 77 and R 37, but as far as I can see, the logic and the time limits are still the same. To
read
the
whole
decision,
click
here.
NB: I shall be absent for a fortnight and might not have any Internet access. I have pre-programmed posts for the case law addicts among you, but I will not be able to react to comments etc. Have a good time !
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T 963/08 – Substantially Unclear
K’s Law – The ebook
T 963/08 – Substantially Unclear 29 Jul 2011
When drafting claims, one is sometimes tempted to insert expressions such as “substantially” in order to allow for some margin. However, there is a real risk of making the claims unclear by using such expressions, as the present case illustrates. The Board had to deal with an appeal against the decision of the Examining Division (ED) to refuse an application. Having found the main request before it to lack inventive step, the Board examines the first auxiliary request, claim 1 of which read: A method comprising:
precoding a plurality of symbol vectors (I) using a linear complex field matrix that comprises a square complex field matrix having substantially a row-wise Vandermonde structure to produce precoded symbol vectors, each symbol vector comprising a plurality of symbols (203), the plurality of symbols (203) being modulation symbols (203); grouping the precoded symbol vectors into two or more groups (209) respectively comprising a plurality of layers (207) of precoded symbol (203) vectors; applying power coefficients to each modulation symbol within the groups (209) of layers (207), wherein the power coefficients are arranged to produce unequal power allocations among at least a subset of the layers (207); mapping the precoded modulation symbols (203) of the precoded symbol vectors to respective subcarriers of a plurality of subcarriers of a multicarrier communication channel and to respective spatial channels of a plurality of spatial channels based on a precoded modulation symbol’s group and a precoded modulation symbol’s layer.
The Board raised a clarity objection that had already been made by the ED: [4] The subject-matter of claim 1 of this request is distinguished from that of the main request by further specifying that the plurality of symbols are modulation symbols and that for pre-coding a linear complex field matrix is used that comprises a square complex field matrix having substantially a row-wise Vandermonde structure. [4.1] Regarding the use of a linear complex field matrix, by using the term “substantially” the problem under A 84 as argued in […] the decision under appeal persists. The appellant addresses this objection merely by alleging that such a relative term “would be clearly understood by the skilled person”, without giving reasons why. [4.2] The only information found in the description is that a Vandermonde matrix is a type of matrix that arises in the polynomial least squares fitting, Lagrange interpolating polynomials and the reconstruction of a statistical distribution from the distribution’s moments […]. A Vandermonde matrix of order n in general is in the form:
The solution of an n x n Vandermonde matrix equation requires O(n²) operations. The determinants of Vandermonde matrices have a particularly simple form. 2043 | 3398
T 963/08 – Substantially Unclear
K’s Law – The ebook
The board would like to note that a special Vandermonde matrix is the discrete Fourier transform matrix. Regarding the use of a Vandermonde matrix in the context of the invention, the application only uses the expression “substantially row-wise Vandermonde structure” several times, without disclosing how such a matrix is used for the invention. [4] The ED presented a concrete argument by raising the question whether a “substantially” row-wise Vandermonde structure encompassed a true Vandermonde matrix or not. The appellant failed to address this argument. The mere reference of the appellant to decision T 378/02 is not a convincing counter-argument. In the aforementioned decision it was ruled that relative terms in claims are allowable if they are clear in view of the complete specification. This, however, is not the case for the present application, because the application as filed fails to provide any explanation as to what is to be understood by a “substantially” row-wise Vandermonde structure. The board therefore agrees with the reasoning of the ED regarding the term “substantially” and maintains the objection under A 84. So when you use the “substantially” language in your claims, make sure that the description explains what is meant and, if possible, provide a definition that could be inserted into the claim, should the ED require you to do so. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1769/10 – Non-technical Constraints
K’s Law – The ebook
T 1769/10 – Non-technical Constraints 28 Jul 2011
The applicant appealed against the refusal of its application by the Examining Division, for lack of inventive step over document D1. Claim 1 before the Board read: A gaming system comprising: a plurality of game outcome servers (210), each game outcome server having stored thereon a plurality of selectable wagering games, each game outcome server (201) having a communication interface for allowing, in use, the game outcome server (201) to communicate with both a plurality of remote client devices (210, 216-228) and a physically separate and remotely located player management server (200, 202), each game outcome server (201) comprising: a processor designed or configured to: a) communicate with the client device (2 10-228) and with the player management server (200, 202) via the communication interface, b) receive information (608) from the player management server (200, 202) allowing a communication session to be established with the client device, c) in response to receiving information in process (b), send (603) to an identified client device (210) first commands, first instructions, first data or combinations thereof that allow an interface (601) for playing a wager-based game to be generated (605) on a client interface of the identified client device, d) receive from the identified client device (210) information (607) indicating a request to play the wager-based game and a wager amount, e) in response to receiving information in process (d), send (611) information to the player management server (200, 202) requesting authorization of the wager amount wherein the player management server (200, 202) maintains a player balance relating to game play on the identified client device, f) receive an authorization message (617) from the player management server (200, 202) indicating the wager amount is authorized, whereafter a game outcome for the game is generated (631) and only an adjustment to the player balance calculated (631) by the game outcome server (201), g) send to the identified client device second commands, second instructions, second data or combinations thereof (633) that allows a presentation of the game outcome to be generated on the client interface; and h) send (641) the calculated adjustment to the player balance to the player management server (200, 202) to effect an update of the player balance maintained at the player management server, wherein: each game outcome server (201) functions as an application service provider that hosts games; the player management server (200, 202) is remotely located from the game outcome servers by network infrastructure (206);the player management server (200, 202) functions to support account management of players stored in a player database (259), the account management including player registration and banking data; each game outcome server not allowed direct access to the player database, with interactions with the player management server (200, 202) based on a transactional approach that allows the player balance maintained on the player management server to be updated by the game outcome server; and; the player may navigate to each game outcome server (201) through a game access interface (282) offering game links to game outcome server-supported games at the game outcome servers (201), the game access interface (282) being supported by the player management server (200, 202) and displayable by the identified client device (210, 216-228), player navigation arising without the player having to register or log-on into the game outcome servers (201). 2045 | 3398
T 1769/10 – Non-technical Constraints
K’s Law – The ebook
The Board found Claim 1 to be novel over D1 and then continued: [4.1] Document D1 is considered to provide the closest prior art. The […] differences of the subject-matter of claim 1 over D1 allow maintaining player anonymity in the game transactions between the game outcome servers and the player management server. As stated in the application, “One of the most important and valuable resources of an on-line casino may be its player database. The transactional approach described above may allow multiple on-line casinos to use functions provided by a game outcome server without having to worry that their customer database is revealed to the providers of the game outcome server or to another provider of another on-line casino” […]. Furthermore, the […] differences allow offering a player a wider variety of games running on different (game outcome) servers, possibly developed on different software platforms, without the need to provide a dedicated player management server in each case. Moreover, player’s convenience is served by not having to register or log-on into different game outcome servers. [4.2] At least some of the above aims to be achieved are in the non-technical field of schemes, rules and methods of playing games and doing business, and may thus, in accordance with established jurisprudence, legitimately appear in the formulation of the technical problem to be solved, in particular as a constraint that has to be met (cf. Case Law of the Boards of Appeal, 6th edition 2010, I.D.8.1; T 641/00 [7]). As far as the appellant’s allegation that the current case law of the boards of appeal was insufficiently developed and was in fact unclear and inconsistent as to when features in mixed inventions bestowed patentability is concerned, it is noted that the above established jurisprudence provides a methodology for applying the problemsolution-approach, generally adopted in the EPO for assessing inventive step, to inventions involving aspects in the non-technical field. In fact, the Enlarged Board of Appeal noted that, while numerous board of appeal decisions cited the earlier decisions defining this methodology, it was not aware of any divergence in this case law, suggesting that the boards were in general quite comfortable with it, and concluded that it would appear that the case law, as summarised in T 154/04, had created a practicable system for delimiting the innovations for which a patent may be granted (G 3/08 [10.13.2]). Still, this does not prevent the application of this methodology to an individual case, on occasions, to be complex. This, however, is not different in the application of the problem-solution-approach in general. It is furthermore noted that, contrary to what is argued by the appellant, also decision T 1051/07, issued by this board, follows the above methodology. In particular, the appellant’s contention that somehow the consideration in this decision of “how” the aim in the non-technical field is achieved in terms of a technical solution involving technical means would diverge from this methodology is unfounded. In the problem-solution-approach, the objective technical problem to be solved is formulated based on the technical effect caused by the distinguishing features of the claim over the prior art, and thus depends on the individual case. This is also the case for inventions involving aspects in the non-technical field. Accordingly, depending on the available prior art and what is claimed, the objective technical problem to be solved may be formulated generally as to implement technically (the constraints as imposed by) the aim to be achieved in the non-technical field. In the case where some general form of implementation of the aim to be achieved in the nontechnical field is already known from the prior art, the objective technical problem to be solved may be formulated more specifically as how to implement technically the aim in the non-technical field, or, reworded, to provide a technical solution involving technical means how to achieve the aim in the non-technical field. [4.3] In the present case the requirements to be met deriving from the above aims in the non-technical field, are to improve the player’s access to games and to maintain confidentiality of the player’s data in the player database. Accordingly, the objective technical problem to be solved may be formulated as modifying the system of D1 so as to improve the player’s access to games while maintaining confidentiality of the player’s data in the player database. Or, in other words, how to improve the player’s access to games while maintaining confidentiality of the player’s data in the player database in terms of a technical solution using technical means. [4.4] The technical solution involving technical means as claimed to the above technical problem essentially is to let the server for maintaining the player database communicate with a plurality of game outcome servers, with respective, different games. The server for maintaining the player database is physically separate and located remote from the game outcome servers. The game outcome servers are not allowed direct access to the player 2046 | 3398
T 1769/10 – Non-technical Constraints
K’s Law – The ebook
database, such that confidentiality of the player database is maintained. Player access is improved by letting the player navigate to each game outcome server through a game access interface offering game links to game outcome server-supported games at the game outcome servers through a game access interface supported by the player management server and displayable by the identified client device and without the player having to register or log-on into the game outcome servers. As indicated above, in the document D1 the “player management server” neither communicates with a plurality of “game outcome servers”, nor does it support a game access interface accessible by the player offering game links to game outcome server-supported games at the game outcome servers, without the player having to register or log-on into the game outcome servers. In D1, the “player management server” merely maintains the player database and the casino server has direct access to the player database. Accordingly, the above technical solution involving technical means as claimed is not rendered obvious by D1. As it is also not suggested in any of the remaining cited prior art or otherwise rendered obvious to the skilled person, the subject-matter of claim 1 is considered to involve an inventive step in the sense of A 56. To read the whole decision, click here. The file wrapper can be found here.
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T 411/10 – Octopus Defence Rejected
K’s Law – The ebook
T 411/10 – Octopus Defence Rejected 27 Jul 2011
Invoking a lack of clarity of one’s own application is always a risky endeavour. In the present case the patent proprietor, whose patent had been revoked by the Opposition Division (OD), thought that the A 123(2) objection could be overcome by pointing out that a feature that had been omitted was devoid of meaning. The claims under consideration, which are directed at a process for producing an aldehyde, are quite lengthy, so I will not reproduce them. What is decisive is that the OD found that the step of the process according to claim 1 as granted, where the aldehyde was separated from the reaction solution by distillation at a temperature of at most 150ºC under a pressure of 1 to 755 mmHg, was not disclosed in the application as filed, and that, therefore, A 123(2) was violated. When justifying those features, the patent proprietor referred exclusively to paragraph 44 of the application as filed (which is found on page 44 of the application as filed, lines 17 to 23):
According to the patent proprietor, the expression “when the boiling point of an aldehyde product is high” had no precise meaning, since there was no distinction between high boiling point and low boiling point aldehydes. Following the established case law of the Boards of Appeal of the EPO ac cording to which unclear terms had to be construed broadly the relative term “high” could not be a distinguishing feature, without a basis for comparison. Hence, the passage in paragraph could not be construed in a way to exclude low boiling point aldehydes. The Board could not endorse this reasoning. [2.1] The patent in suit has been opposed inter alia on the ground that the subject-matter of the patent extended beyond the content of the application as filed (A 100(c)). Inter alia, the feature in granted claim 1 relating to the separation of the aldehyde from the reaction solution “by distillation at a temperature of at most 150ºC under a pressure of 1.33 x 10**(2) to 1.004 x 10**(5) Pa (1 to 755 mmHg)” was objected to for having no basis in the application as filed. [2.2] In order to determine whether or not the subject-matter of a claim in a patent extends beyond the content of the application as filed it has to be examined whether that claim comprises technical information which a skilled person would not have directly and unambiguously derived from the application as filed. [2.3] With respect to support in the application as filed of the step of the distillation of the aldehyde under the required pressure range of from 1 to 755 mmHg, the [patent proprietor] referred exclusively to page 44, lines 17 to 23. This section of the application as filed, however, discloses that when the boiling point of an aldehyde product is high, it is preferable to employ vacuum distillation under a reduced pressure in the range of from 755 mmHg to 1 mmHg. It concerns therefore only the distillation of particular aldehydes, namely those with a high boiling point, and not the distillation of any aldehydes independently of their boiling point. The disclosure in the application as filed of a feature concerning the distillation of particular aldehydes does not form a proper basis to the claimed feature relating to the distillation of any aldehydes regardless of their boiling point, since a generalisation must be made to arrive at the process of claim 1 covering a process for producing any aldehyde by reacting an olefinic compound with carbon monoxide. To generalise a feature relating to the distillation of specific aldehydes to the distillation of any aldehyde provides the skilled person with technical information which is not directly and unambiguously derivable from the application as filed. The amended claim 1, thus, is not based on the disclosure of the original application and extends beyond the content thereof.
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T 411/10 – Octopus Defence Rejected
K’s Law – The ebook
Hence, the Board concludes that the subject matter of claim 1 as amended contravenes the provisions of A 123(2). [2.4] The [patent proprietor] argued that the requirement “when the boiling point is high” defining the aldehyde to be distilled under reduced pressure in the application as filed was so unclear that it could merely be ignored. However, although the expression “when the boiling point of an aldehyde is high” is vague, it makes clear that the feature relating to vacuum distillation under the reduced pressure in the range of 755 to 1 mmHg incorporated into claim 1 is not disclosed for any aldehydes encompassed by amended claim 1, but is restricted to high boiling point aldehydes. Hence, omitting this restriction in the definition of the aldehyde to be distilled under reduced pressure provides the skilled with new subject-matter. This argument of the [patent proprietor] must be rejected. The [patent proprietor] further argued that the preceding lines of page 44 taught that the temperature must be kept as low as possible implying therefore that the vacuum distillation under reduced pressure should be used for any aldehyde, and that anyway the skilled man for practical and economical reasons would always carry out the distillation of the aldehydes under reduced pressure. However, this argument is not supported by the fact since it is clear from the disclosure in passage of page 44, lines 20 to 23 of the application as filed that the distillation under reduced pressure of high boiling point aldehydes is preferred, i.e. optional, and thus not compulsory. Furthermore the finding of whether or not the subject-matter of a claim in a patent extends beyond the content of the application as filed is not a matter of how the skilled man would carry out a teaching, but rather the matter which technical information a skilled person would directly and unambiguously derive from the content of the application as filed. In the present case, the distillation under reduced pressure in the range of from 1 to 755 mmHg is disclosed exclusively for high boiling aldehydes, so that the pressure range now required by claim 1 for the distillation of any aldehyde provides the skilled person with technical information which is not directly and unambiguously derivable from the application as filed. Thus, the application as filed does not provide a proper basis for amended claim 1. [2.5] For these reasons, the Board concludes that granted claim 1 extends the subject-matter claimed beyond the content of the application as filed thus justifying the ground for opposition pursuant to A 100(c). Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1363/08 – Trouble With The Two-Part Form
K’s Law – The ebook
T 1363/08 – Trouble With The Two-Part Form 26 Jul 2011
The applicant filed an appeal after the Examining Division (ED) had refused its application for lack of inventive step. Claim 1 of the main request read: A vehicle antenna system for use in a keyless entry system with bidirectional communication between a driver’s proprietary card (19) and the vehicle antenna system, the vehicle antenna system comprising: a vehicle antenna (35) comprising at least a core (21) made of a magnetic material and a coil (23) wound around the outer surface of the core (21); a vehicle mirror composed of a fixing portion (16) and a movable fold-away portion (17); and metal components for revolving the vehicle mirror, characterised in that the metal components are contained in the fold-away portion (17); and in that the vehicle antenna (35) is housed within the fixing portion (16). The decision contains an interesting reasoning based on the two-part form of the claim, and yet another use of “Wunderwaffe” Article 12(4) RPBA. Main request and auxiliary request 2 [2.1] The vehicle antenna system of claim 1 of the main request and the auxiliary request 2 comprises “metal components for revolving the vehicle mirror”, which metal components “are contained in the fold-away portion (17)” of the vehicle mirror. [2.2] A 84 EPC 1973 requires that the claims shall be clear. The claimed metal components are only defined by their function of revolving the vehicle mirror and their arrangement in the fold-away portion of the vehicle mirror. The nature of these metal components can be inferred from […] the application as filed (see “such metal components as motor, cam, etc.”). Claim 1, however, is unduly general and vague. First, the claim does not otherwise specify the structure of the metal components. Second, it does not state whether all the metal components for revolving the vehicle mirror are contained in the fold-away portion. Last but not least, it does not exclude that other metal components, which may impair the claimed bidirectional communication, are housed within the fixing portion of the vehicle mirror together with the antenna. Therefore, claim 1 of the main request and auxiliary request 2 does not meet the requirements of A 84 EPC 1973 as lacking clarity. [2.3] A 83 EPC 1973 requires that the “application” shall disclose the invention in a manner sufficiently clear and “complete” for it to be carried out by a skilled person. The requirement of completeness of the application implies, according to Rule 27(1)(e) EPC 1973, that the “description” shall describe “in detail” at least one way of carrying out the invention claimed. The application as filed does not describe at all how the vehicle mirror is revolved by means of metal components contained in the fold-away portion. In particular, the disclosure […] already mentioned above is completely insufficient in this respect. The appellant, however, held that the present invention did not concern a special system for revolving a vehicle mirror. Rather, it dealt with the interference that metal components might have on the claimed bidirectional communication.
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T 1363/08 – Trouble With The Two-Part Form
K’s Law – The ebook
In the Board’s view, such an argument is not convincing. As it results from the two-part form of claim 1, the claimed invention consists in the arrangement of the vehicle antenna in the fixing portion of the vehicle mirror, whereas the metal components for revolving the vehicle mirror are placed in the fold-away portion. The vehicle antenna is thus separated from the source of interference represented by such metal components. With this understanding, Rule 27(1)(e) EPC 1973 requires that the description describes in detail at least one example how the vehicle mirror can be revolved by means, i.e. the claimed metal components, that are contained in the foldaway portion. This is not the case. Therefore, the requirement of Rule 27(1)(e) EPC 1973 is not met. [2.4] It follows that the main request and the auxiliary request 2 are not allowable. Auxiliary requests 1 and 3 were found to lack inventive step. The Board then dealt with auxiliary requests 4 and 5. Claim 1 of auxiliary request 4 on file read: A vehicle antenna system for use in a keyless entry system with bidirectional communication between a driver’s proprietary card (19) and the vehicle antenna system, the vehicle antenna system comprising: a vehicle antenna (35) comprising at least a core (21) made of a magnetic material and a coil (23) wound around the outer surface of the core (21); a vehicle mirror assembly composed of a mirror, a movable portion (17) holding the mirror, and a fixing portion (16) for mounting the vehicle mirror assembly to the outside of a vehicle body; and metal components for revolving the mirror, characterised in that the movable portion (17) is adapted to be able to be folded away by the driver; the metal components are contained in the movable portion (17); and the vehicle antenna (35) is housed within the fixing portion (16), wherein the vehicle antenna (35) further comprises a holding portion (22) composed of a dielectric film sheet wound on an outer surface of the core (21) and a linear conductor being wound around the holding portion (22). [5.1] Claim 1 of the auxiliary requests 4 and 5 includes the feature that the vehicle antenna further comprises a holding portion composed of a dielectric film sheet wound on an outer surface of the core and a linear conductor being wound around the holding portion. [5.2] With a communication of 17 February 2005 the ED confirmed an objection of lack of unity under A 82 EPC 1973 raised by the search division. The application was considered to relate to two different inventions. A first invention was claimed in claims 1-6 of the application as filed and concerned “an antenna device comprising a coil antenna with tapered magnetic core, said coil antenna being positioned and encapsulated within a housing and further comprising a thin holding portion carrying the coil windings”. A second invention was claimed in claims 7-9 of the application as filed and concerned “a vehicle antenna system comprising a coil antenna mounted on the fixing portion of a vehicle mirror”. The ED held that there was no single general inventive concept which linked the subject-matter of the two inventions. With a reply of 13 June 2005 the appellant, then applicant, filed new claims 1-6 based on claims 7-9 of the application as filed and held that the objection of lack of unity had thus been overcome. [5.3] According to the procedure relating to lack of unity during substantive examination, as laid down in the Guidelines for Examination in the EPO (C-III,7.10), if the applicant has taken the opportunity to have two or more inventions searched, then it may determine that the application is to proceed on the basis of one of these, the other(s) being deleted. In the present case, both inventions mentioned above have been searched and the appellant determined that the application was to proceed on the basis of the second invention. For the first invention the appellant had the opportunity to file a divisional application, if it liked. Claim 1 of the auxiliary requests 4 and 5 thus represents an attempt to deviate from the choice made with the letter of 13 June 2005. Clearly, such requests could have been presented in the first instance proceedings. This was, however, not the case as these requests were presented for the first time during the appeal proceedings. 2051 | 3398
T 1363/08 – Trouble With The Two-Part Form
K’s Law – The ebook
[5.4] In view of the foregoing, the Board holds the auxiliary requests 4 and 5 inadmissible in the exercise of the power conferred by Article 12(4) RPBA. […] The appeal is dismissed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1882/08 – A Smouldering Wick
K’s Law – The ebook
T 1882/08 – A Smouldering Wick 25 Jul 2011
The applicant filed an appeal against the decision of the Examining Division to refuse its application, but then omitted to pay the renewal fee for the seventh year so that the application was deemed to be withdrawn before the date on which oral proceedings (OPs) were to be held. What will the Board do in this situation? [3] According to the information available to the Board, the renewal fee for the 7th year and the corresponding additional fee had not been paid and the prescribed period of grace for payment according to R 51(2) had expired before the date of the OPs. Thus, at the time of the OPs the application was deemed to be withdrawn. In this situation the Board could have simply awaited the further course of action to be taken by the Office, i.e. the delivery of the obligatory noting of loss of rights according to R 112, and a potential reaction of the appellant. Despite the fact that, in the present situation, the application was deemed to be withdrawn before the date of the OPs, the Board recognizes that the noting of loss of rights (which has not yet been issued) due to non-payment of the renewal fee and the additional fee could theoretically still be challenged under R 112(2) by the appellant, or that reestablishment of rights pursuant to A 122 could be requested. In view of these factors, which may potentially prolong the proceeding, and in view of the fact that appeal proceedings are independent from proceedings concerning the payment of renewal fees, the Board decided in the present case to continue the appeal with the arranged OPs. In arriving at this decision the Board also took into account the fact that, since the appellant had refrained from providing any indication concerning its intended course of action, the members of the Board had to be - and in fact were - fully prepared in substance for the OPs. Moreover, the Board was aware that a substantive decision taken at the end of the OPs could bring all pending proceedings in the present application to a speedy conclusion, in the interest of the EPO as well as of the general public. Of course, had the Board arrived in its deliberation at the end of the OPs at a view which in substance would have been positive for the claimed subject-matter, it would have had to let the procedure under R 112 and/or A 122 run its course. As you might have deduced from the last statement, the Board finally snuffed out the smouldering wick, for lack of compliance of the requests on file with the requirements of A 123(2). To
download
the
whole
decision,
click
here.
The
Also reported on Le blog du droit européen des brevets.
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file
wrapper
can
be
found
here.
Oldies But Goldies – Bonus Effect
K’s Law – The ebook
Oldies But Goldies – Bonus Effect 23 Jul 2011
Today
we
consider
T
21/81
of
September
10,
1982.
The applicant appealed against the refusal of its application by the Examining Division. The reason given for the refusal was that the subject-matter of the claims did not involve an inventive step. Claim 1 before Board 3.5.1 read: 1. An electromagnetic device comprising a housing; a stationary core comprising laminations of ferromagnetic material disposed within the housing, the core having a base and a pair of legs extending substantially perpendicularly from the base, said core having a centre pole face and a pole face at the end of each leg; a freely movable armature of ferromagnetic material having a centre pole face and two end pole faces, the armature being disposed in the housing so that each pole face on the core is opposite a corresponding pole face on the armature and the armature being loosely guided within the housing for rectilinear straight line motion; a region of decreased magnetic permeability including an air gap being provided between the centre pole faces of the core and the armature to aid separation thereof; an energising coil associated with the core, so that when the coil is energised a magnetic force is induced which moves the armature from an open position to a closed position in which a three-legged magnetic circuit is formed; characterised in that means is provided for giving an audible signal of the need to replace the device, the said means comprising, on at least one of the centre pole faces, but not on any of the end pole faces a layer of a hard non-magnetic coating of a non magnetic material having much greater resistance to wear than the ferromagnetic material constituting the end pole faces of the armature and the core.
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Oldies But Goldies – Bonus Effect
K’s Law – The ebook
During oral proceedings before the Board, the applicant limited his claims to the use of tungsten carbide, after the Board of Appeal has expressed the opinion that in the expression “hard non-magnetic coating of a nonmagnetic material having much greater resistance to wear than” the terms “hard” and “much” did not have a precise meaning, so that the claims were not allowable under A 84. [2] Devices as described in the introductory part of Claim 1, comprising the combination of either a substantially U-shaped core and T-shaped armature or of a substantially E-shaped core and armature, and in which an airgap is present to aid separation of core and armature, are generally known. It is also well established practice that in such devices, where the armature executes a linear movement, the armature is loosely guided to prevent it from sticking to its guiding channel and to diminish friction losses and wear (cf. US 3 185 902 and GB 1 272 916). Finally, it has been proposed to realise such an airgap by providing at least part of the pole faces with a layer consisting of a non-magnetic wear-resistant material, such as tungsten carbide (cf. US 3 573 690, DT 1 158 174). [3] According to the application as filed the invention is intended to provide a remedy to the problem that coating all the pole faces is time-consuming and costly and that the added reluctance caused by the non-magnetic material adversely affects the operation of the device. This is a problem of which the person skilled in the art is of course well aware. [4] From FR 1 408 864 an electromagnetic device having a pivoting armature is known in which only one of the central pole faces defining an airgap is covered with a non-magnetic wear-resistant material “to prevent the airgap from disappearing and the consequential sticking of the armature if the faces of the other two poles are worn away”. […]. It is well known that in order to prevent magnetic sticking of the armature due to residual magnetism an airgap must be provided somewhere in the magnetic circuit. Although not explicitly stated in the document, it is immediately clear to the person skilled in the art that the solution proposed in the FR specification to retain such an airgap under conditions of substantial wear is a simpler one than covering all the pole faces, as is apparently implicit in the other cited documents. Therefore, although this measure is described in connection with a relay having a pivoting armature it is obvious that it can be applied for the same purpose to an electromagnetic device having a linearly moving armature. The facts that substantial clearances are not likely to be present in the device according to the FR specification, at least before the device has been in use for some time, and that possibly the amounts of wear occurring on the different pole faces may in the case of a pivoting armature be different from those in the case of a linearly moving armature, do not seem significant here and would certainly not deter the person skilled in the art from applying this known measure to a device with linear movement for the same purpose. In the Board’s opinion it must be expected from a designer who is faced with a problem concerning a device with a linearly movable armature to consult also the prior art in the very related field of devices with pivoting armatures if the problem is common to these two types of device, which is clearly the case here. For the same reason it is immaterial whether the device according to the FR specification could be regarded as a heavy duty contactor or not. (Incidentally the application does not contain any limitation which would exclude such devices from the protection sought.) [5] With respect to the non-magnetic material, the FR-specification states that this material should be “a nonmagnetic material, preferably plastic, having a great resistance to wear by compression and friction such as for example Teflon”. No reason is given, however, for this preferred choice […]. As far as selection of materials is concerned, the Board generally considers it as forming part of the normal activities of the man skilled in the art to select from the materials which are known to him as suitable for a certain purpose the most appropriate one, and this also in the case where he is presented with no more than an unreasoned preference for a specific material in a document forming part of the prior art. Now it is well known that tungsten carbide is one of the small group of materials which have been proposed in the prior art as having a greater resistance to wear than the material normally used for the core and armature of electromagnetic devices of the kind under consideration (cf. documents cited in the search report). Moreover it is known that its use is not limited to cases where pole faces are subject to continuous impacts but that this material can be used in a general sense in magnetic devices to create an anti-corrosion effect or a magnetic insulation. (See DT 1 158 174 […]). Finally, it is known that tungsten carbide has several advantages over other materials used for the same purpose and that it can be relatively easily applied (see DT 1 158 174 […] and the description of the application […]). The Board therefore considers that no inventive step is present in the selection of this particular material. 2055 | 3398
Oldies But Goldies – Bonus Effect
K’s Law – The ebook
[6] The applicant has stressed that the choice of the material has the advantage that a clear chatter is obtained without any further measures at the end of the useful life of the device. The Board considers, however, that if having regard to the state of the art it would already have been obvious for a person skilled in the art to arrive at something falling within the terms of a claim, because an advantageous effect could be expected to result from the combination of the teachings of the prior art documents, such claim lacks inventive step, irrespective of the circumstance that an extra effect (possibly unforeseen) is obtained. [7] The application referring in particular to the passage in the FR specification where it is stated that the nonmagnetic material “... at the time of closing fills, completely or not, the small airgap which is generally present...” […], contends that it would follow that an embodiment having an airgap already completely filled at the beginning of the useful life of the device must be considered as the preferred embodiment according to the FR specification. The applicant furthermore contends that it would follow then that a hard material, such as tungsten carbide, is excluded because in this preferred embodiment a compressible material is required since otherwise airgaps would develop in the two outer branches of the magnetic circuit which after a short time of use would make the device unsuitable for its purpose. However, from the fact that the FR specification mentions only a preference for plastic it is clear that other known materials, i.e. metallic ones, were also contemplated and could be used for the purpose, which materials can hardly be regarded as comprehensible (sic). Moreover the applicant’s reasoning on this point is only applicable in a situation where indeed the airgap is filled completely from the beginning, which is, in the opinion of the Board, not the most likely situation, in view of the stated purpose of the coating […] above. It is more likely therefore that the person skilled in the art would read the passage on the completely filled or not completely filled airgap as referring to a situation where the airgap is not completely filled at the beginning, but becomes so after the outer poles have worn down. [8] Consequently the subject-matter of Claims 1 and 5 does not involve an inventive step and the same applies to the alternative claims presented by the applicant. These claims therefore are not allowable. […] The appeal […] is dismissed. To read the whole decision, click here. The file wrapper can be found here.
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T 1196/08 – Romanian Rhapsody
K’s Law – The ebook
T 1196/08 – Romanian Rhapsody 22 Jul 2011
The present decision deals with an interesting case of third party intervention. The patent proprietor had extended its European patent to Romania. The patent was opposed, but the Opposition Division rejected the opposition (in 2008). The opponent filed an appeal against this decision. In February 2009, a Romanian company (SC Gedeon Richter Romania SA, hereinafter referred to as “SC”) filed a notice of intervention. The patent proprietor had indeed instituted infringement proceedings in Romania on November 26, 2008. The question to be answered by the Board was whether this intervention was admissible or not. NB: The would-be intervener also requested the Board to refer questions to the Enlarged Board of appeal (EBA) and raised a R 106 objection because the Board had not heard the European Patent Organisation and the State of Romania on the topic to be decided. *** Translation of the French original *** [3.1.1] Subject to certain conditions, A 105(1)(a) and R 89 allow a third party to intervene in opposition proceedings after the opposition period has expired, if the party proves that proceedings for infringement of the same patent have been instituted against it. [3.1.2] In the present case, the declaration of intervention has been filed during the opposition appeal proceedings, which is admissible according to decision G 1/94 of the EBA. [3.1.3] Moreover, in order for an intervention to be admissible, the infringement proceedings have to be based on the very patent which is the subject of the proceedings at which the intervention is directed (see T 338/89 [4.1.2] and T 446/95 [2.1]). [3.1.4] Therefore, it is appropriate to first clarify what is the subject of the present European opposition proceedings in application of the European Patent Convention (hereinafter referred to as “Convention”). A 99(1), first sentence, EPC, provides that within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin, any person may give notice to the EPO of opposition to that patent. The Convention defines the notion of “European patent” in A 2(1) EPC 1973, which states that patents granted under the Convention shall be called European patents. According to A 3 EPC 1973, the grant of a European patent may be requested for one or more of the contracting states. Therefore, the opposition proceedings concern a European patent which has been granted for at least one contracting state. However, it is irrelevant for the opposition proceedings if the effects of this patent have been or will be extended. This clearly follows from R 84(1) according to which the opposition proceedings may be continued only at the request of the opponent if the European patent has been surrendered in all the designated contracting states or has lapsed in all those states. This is why the Board concludes that “the same patent” [French version : ce brevet] within the meaning of A 105(1)(a) is a European patent within the meaning of A 2(1) EPC 1973, i.e. a patent granted under the Convention for one or more of the contracting states, which is, as underlined by the [patent proprietor] a system of law for the grant of patents for invention that is common to the contracting states, pursuant to A 1 EPC 1973. Consequently, the infringement proceedings before national jurisdictions have to be instituted based on a European patent which has been granted under the Convention for at least one contracting state if the conditions of A 105(1)(a) are to be fulfilled. [3.1.5] In accordance with the evidence filed by the SC company, the infringement proceedings before the Romanian court are based on Romanian patent RO/EP 1108424 which has been obtained by extension of the European patent to Romania. [3.1.6] The SC company is of the opinion that the Romanian patent resulting from an extension of a European patent has to be considered to be the same patent as a European patent granted under the Convention because the fact that Romania was not party to the EPC at the relevant date only constitutes a difference in view of the legal 2057 | 3398
T 1196/08 – Romanian Rhapsody
K’s Law – The ebook
basis of the effects of the European patent, and not a difference in view of the fact that it is still (encore) a European patent. (NB: The whole sentence is unclear in the French original.) The Board does not share this opinion, for the following reasons. [3.1.7] The extension of the effects of European patents to Romania was possible as from October 15, 1996, i.e. the date on which the Agreement between the Government of Romania and the EPO on cooperation in the field of patents (“Cooperation Agreement”) entered into force (see OJ EPO 1994, 746 and 1996, 601). The Cooperation Agreement is part of the international agreements which the President of the EPO is empowered to conclude subject to the approval of the Administrative Council (A 33(4) EPC 1973). As a bilateral ordinance, the Cooperation Agreement essentially deals – exhaustively and strictly separately from the EPC – with matters pertaining to the integration of extended European applications and protective rights into the national law of the state allowing (autorisant) the extension and their relationship to national applications and rights based on the national Law on industrial property (see, for example, J 14/00 [1.3.2]). [3.1.8] The extension system provides European patent applicants with a simple and economical means of obtaining patent protection in the states for which a Cooperation Agreement with the EPO has entered into force (states allowing the extension) (see, for instance, “Extension of European patents to Romania”, OJ EPO 1994, 746, (EEPR1), second paragraph, “Extension of European patents to Slovenia”, OJ EPO 1993, 574, (EEPS1) third paragraph, and OJ EPO 1994, 75, (EEPS2), I. Basic principles, second paragraph). Upon request of the applicant and subject to the payment of the prescribed fee, the effects of European patent applications (direct and Euro-PCT applications) and European patents extend to the state allowing the extension, which, however, is not party to the EPC. These effects are the same as those of national applications and national patents (see, for instance, “Extension of European patents to Romania”, OJ EPO 1996, 601, (EEPR2), points 8 and 9, and articles 4 and 5(1) of the Romanian extension ordinance (EO); EEPS2, I. Basic principles, second paragraph, and article 1 of the EO of the Slovenian government, OJ EPO 1994, 80). As underlined by the [patent proprietor], the extension system may be considered to be an intermediate step for a state before it becomes a party to the Convention. This also follows from the preamble of the Romanian Cooperation Agreement, which stipulates that Romania, whishing to become a party to the EPC, wishes, as an intermediate step, to have a system allowing to extend the effects of a European patent to its territory (extension system). [3.1.9] Although the extension proceedings essentially correspond to the system provided by the EPC, which is applicable to the states that are party to the Convention, the validity of the extension system is not based on the direct application of the EPC but exclusively on national law inspired by the EPC (see, for instance, EEPR2, point 15; EEPS2, I. Basic principles, second paragraph; J 14/00 [1.2.2]; J 9/04 [1.2.2]; J 2/05 [1.2.2], Singer/Stauder, EPÜ, fifth edition in German, 2010, article 2, point 9). As a consequence, the national law of the state allowing the extension governs the extension proceedings and the legal effects of the extension. As a matter of fact, the legal provisions governing the extension system in Romania, including all the conditions and all the legal effects of the extension, appear in the Romanian EO “Monitorul Oficial al Rômanei, Anul VIII, n° 195, August 21, 1996, 2, 4”, i.e. in an ordinance of the government of the state allowing the extension (see EEPR2, second paragraph). [3.1.10] As far as the applicability of the EPC is concerned, the provisions of the Convention, of its implementing regulations and of the rules relating to fees of the EPO apply only to the extent to which the national provisions refer to them (see, for instance, article 10 of the Romanian EO and article 10 of the Slovenian EO; EEPR2, point 15; Singer/Stauder, op.cit., article 79, point 40). The wording of the Romanian EO makes it very clear that its references to the provisions of the Convention are exhaustive (see also J 14/00 [1.3.1]) on the subject of the Slovenian EO). According to the Romanian provisions, the only references to the EPC concern the time limits and the means of payment of the extension fee (see article 3 of the Romanian EO and EEPR2, point 15). [3.1.11] It follows from what has been said that the European patent under consideration extends to the Romanian territory exclusively on the basis of Romanian national law and that, according to article 5(1) of the EO, it has the same effects as a national patent (see also EEPR2, point 9). However, as explained by the SC company, the European patent under consideration the effects of which extend to Romania is not a national patent granted by the Romanian national office. This legal evaluation is based on the wording of certain provisions of the EO, such as for example articles 5(1), 8, and 9, according to which a distinction is made between a European patent the effect of which extends to Romania and a national patent (see 2058 | 3398
T 1196/08 – Romanian Rhapsody
K’s Law – The ebook
also EEPR2, points 9, 12, and 14). In the present case, the facts, therefore, differ from the facts on which decision T 446/95 was based, so that the latter is not relevant for the present case. [3.1.12] As for the European patent within the meaning of article 2(1) EPC 1973, it is granted under the Convention by the EPO, for each of the contracting states that are designated pursuant to A 79 EPC 1973. Once it is granted, a European patent has, in each of the contracting states for which it is granted, the effect of a national patent granted by that state (A 2(2) and A 64(1) EPC 1973). It follows that the European patent system, including the effects of a European patent in the contracting states, is based exclusively on the direct application of the EPC. [3.1.13] Although there are some parallels between the extension system and the European patent system, there are some fundamental differences between those two systems. The extension system, including all the conditions for and all the legal effects of the extension, is exclusively based on the application of national law, unless there are explicit references to the EPC. Moreover, the European patent system and the effects of a European patent in the contracting states are exclusively based on the direct application of the EPC, it being understood that some provisions of the EPC refer to national law. Therefore, it follows from the extension of the effects of a European patent under the national law of the state allowing the extension that the European patent has the effects of a national patent, whereas the designation made pursuant to A 79 EPC 1973 has the consequence that the European patent is granted by the EPO based on the Convention, with effect for the designated contracting states (see Singer/Stauder, op.cit., article 79, point 40). In view of this different legal situation, the Board concludes that a patent extended to the territory of a state allowing the extension is not a European patent within the meaning of A 2(1) EPC 1973. It may well be that the Romanian patent resulting from the extension has its origin in a European patent application and, subsequently, in the European patent granted on the basis of this application in accordance with the Convention, but, even if this were admitted, it follows from the legal situation explained above that the extension and the legal consequences resulting from it are exclusively based on national law. As a consequence, the patent resulting from the extension does not have the legal nature of a European patent within the meaning of A 2(1) EPC 1973. [3.1.14] According to the Board, as far as the present case is concerned, it follows that Romanian patent RO/EP 1108424, which has been obtained by extension to Romania of the European patent under consideration and which is the subject of the infringement proceedings before the Romanian court, is not a national patent granted in Romania. The Board also concludes that the Romanian patent is exclusively based on national law, i.e. on Romanian law, and not on the Convention. In other words, the Romanian patent is not a patent that has been granted by the EPO for Romania, in application of the Convention. This is why the Board is of the opinion that the Romanian patent is not a European patent within the meaning of A 2(1) EPC 1973. As a consequence, Romanian patent RO/EP 1108424 does not correspond to European patent EP 1108424, which is the subject of the present opposition appeal proceedings. Consequently, the intervention does not satisfy one of the requirements of admissibility enshrined in A 105(1)(a). (see point [3.1.3] above). [3.1.15] Moreover, the provisions of the Romanian EO do not refer to the provisions of A 105. The references of the Romanian EO to the provisions of the EPC being exhaustive (see point [3.1.10] above), the question of whether A 105 can be applied by analogy does not even arise. [3.1.16] The SC company invokes the Treaty on European Union (TEU) and the TRIPS (Trade-Related aspects of Intellectual Property rights) Agreement and requests that articles 23 and 49 TEU and articles 41(2) and 49 of the TRIPS Agreement be taken into consideration when the applicability of A 105 is interpreted. The Convention is a system of law, common to the contracting states, for the grant of patents for invention (A 1 EPC 1973). It constitutes a special agreement within the meaning of article 19 of the Paris Convention for the Protection of Industrial Property and a regional patent treaty within the meaning of article 45 PCT (see the third paragraph of the preamble of the Convention). The Convention does not come under Community law (see EPÜ, Münchner Gemeinschaftskommentar, 1998, article 1, III, 1.a)) The European Patent Organisation is not party to the TRIPS Agreement (see G 1/97 [5a]). However, the provisions of this agreement, very much like decisions of the European and international Court of justice and national decisions, are to be taken into account by the Boards of appeal, which nevertheless are not bound by them (G 2/02 and G 3/02 [8.6]; T 1173/97 [2.2]) However, the EBA has also declared: “Whereas it is legitimate for the boards of appeal to use the TRIPS Agreement as a means to interpret provisions of the EPC which admit of different interpretations, specific provisions of TRIPS cannot justify ignoring express and unambiguous provisions of the EPC. To do so would usurp the role of the legislator.” (G 2/02 and G 3/02 [8.6]) 2059 | 3398
T 1196/08 – Romanian Rhapsody
K’s Law – The ebook
The Board is of the opinion that these considerations also apply for the TEU. The Board has explained (see points [3.11-15] above) that the provisions of the Convention as it stands and in particular A 105, as well as the national provisions of the Romanian EO clearly exclude the possibility of intervening in the proceedings based on infringement proceedings concerning a Romanian patent resulting from the extension of a European patent to Romania. Therefore, it is not possible to come to a different conclusion based on the provisions of the TEU or the TRIPS Agreement. On the contrary, it is up to the competent lawmaker to provide the possibility of intervening in such a situation. [3.1.17] The SC company has also pointed out that it had interest to act against the Romanian patent resulting from the extension because of the proceedings pending before the Romanian court, and in particular in having the nullity proceedings stayed until the outcome of the present appeal proceedings was known. The Board accepts that such an interest to act may exist. However, taking into account the legal situation described above concerning the intervention pursuant to A 105(1)(a), the SC company has to act before the Romanian national legal institutions. [3.1.18] As a consequence, the intervention of company SC, based on the infringement proceedings before the Romanian court based on Romanian patent RO/EP 1108424 resulting from the extension to Romania of the European patent under consideration, is inadmissible because it does not comply with the requirements of A 105(1)(a). [3.2] A 115, first sentence, provides that in proceedings before the EPO, following the publication of the European patent application, any third party may present observations concerning the patentability of the invention to which the application or patent relates. The documents filed by the SC company concerning the patentability of the invention that is the subject of the patent under consideration are considered to be third party observations pursuant to A 115, first sentence. However, the Board underlines that, pursuant to A 115, second sentence, the SC company is not a party to the proceedings. As to the substance of the case, the letters dated February 24, 2009, December 15, 2009 and October 27, 2010, which are considered to be third party observations pursuant to A 115, do not contain elements that had not been mentioned by the appellant yet. Referral to the EBA [4.1] The SC company has asked the Board to refer a question to the EBA in case it would decide that the EO would lead to issuing national patents. According to the SC company, the question of the legal nature of a European patent that has been extended to Romania and the related question of whether an intervention pursuant to A 105 was admissible constitute points of law of fundamental importance. [4.2] According to A 112(1) EPC 1973, the Board of Appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required. A question involves a “point of law of fundamental importance” within the meaning of A 112(1)(a) if it is relevant in a substantial number of similar cases and is therefore of great interest not only to the parties in the present appeal but to the public at large. (see, for instance, T 271/85). However, a question that involves a point of law of fundamental importance does not necessarily have to be referred to the EBA if the Board itself can answer it without doubt (see, for instance, J 5/81; T 198/88; J 22/95; Case Law, 6th edition 2010, VII.E.14.2). The Board has explained in detail (see points [3.1.7-14] above) why Romanian patent RO/EP 1108424, which has been obtained by extension to Romania of the European patent under consideration, is not a national parent granted in Romania, but a patent that is exclusively based on national law, i.e. on Romanian law, and not on the Convention. The Board has also explained why Romanian patent RO/EP 1108424 is not a European patent within the meaning of A 2(1) EPC 1973 and why the intervention pursuant A 105(1)(a) is, therefore, inadmissible. [4.3] As mentioned above (see points [3.1.1-18] above), the present Board has no doubts that in the present case the intervention is inadmissible because Romanian patent RO/EP 1108424 does not correspond to European patent EP 11108424, which is the subject of the present opposition appeal proceedings. Consequently, one of the conditions of A 105(1)(a) is not fulfilled. Therefore, there is no point of law of fundamental importance which would have to be clarified by the EBA. [4.4] These reasons have led the Board to decide that there is no need for referring the questions of the SC company to the EBA.
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T 1196/08 – Romanian Rhapsody
K’s Law – The ebook
R 106 objection [5] The objection raised under R 106 has to be rejected for the following reasons: A 113(1) EPC 1973 provides that the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. The right to be heard within the meaning of A 113(1) EPC 1973 applies to all proceedings before the EPO and to all parties to the proceedings (Singer/Stauder, op.cit., article 113, 2). Third parties which, according to A 115, second sentence, are not parties to the proceedings, cannot invoke the right to be heard (G 4/88 [2]). Neither the European Patent Organisation nor the State of Romania are parties to the present proceedings under A 107 EPC 1973. Consequently, in the present case, the fact that the Board has not given the European Patent Organisation and the State of Romania the opportunity to file observations does not violate the right to be heard. A hardly surprising outcome. On a teleological level, one might add that the possibility of intervening in opposition proceedings is justified by the fact that the fate of the patent can be decisive for the outcome of the infringement proceedings: a revocation of the opposed patent will deprive the infringement proceedings of their very cause. There is no equivalent justification here because even if the European patent is revoked, the Romanian spin-off is not (at least not automatically). It may be found to be valid by a Romanian court. In other words, there is no direct effect of the revocation (or limitation) on the infringement proceedings before the Romanian court. To read the whole decision (in French) or have a look at the file wrapper, click here. NB:
The
decision
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also
commented
on
Le
You can listen to the Romanian rhapsody here.
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blog
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européen
des
brevets.
T 1130/09 – Two Will Do
K’s Law – The ebook
T 1130/09 – Two Will Do 21 Jul 2011
The applicant appealed against the decision of the Examining Division (ED) to refuse its application based on the finding that the subject-matter lacked novelty. Claim 1 of the main request before the Board read (in English translation): Substrate having a micro-structured surface at least part of which comprises a biocompatible polymer of the following general formula (I)
wherein n goes from 2 to infinity, R1 to R6 are the same or different and represent an alkoxy, an alkylsulfonyl, a dialkylamino, or an aryloxy residue, or a heterocycloalkyl or heteroaryl residue where the hetero atom is nitrogen, and wherein the surface structures have a dimension of between 10 nm and 100 μm. In what follows the Board answers the question of whether this claim is novel. *** Translation from the German *** [3.1] The subject-matter of claim 1 concerns a substrate having a micro-structured surface at least part of which comprises a biocompatible polymer of general formula (I)and wherein the surface structures have a dimension of between 10 nm and 100 μm. [3.2] In the impugned decision only document D2 was cited in respect of novelty. Document D2 also discloses a substrate the surface of which is coated with a polyphosphazene according to formula (I) of the application under consideration. The substrate can also be micro-structured […]. The only disclosure concerning structural dimensions […] reads: “One is not limited by the structural size of the substrate. Therefore, structures of the order of nanometres, microns or even larger or smaller can be manufactured.” It is true that document D2 does not disclose a specific range defined by specific upper and lower limits, but by referring to structures of the order of nanometres or microns and by referring to the substrates as being microstructured substrates it defines a range of dimensions that is limited to such microstructures. The impugned decision invoked the principle of selection inventions by applying the three criteria of decision T 198/84 [7]. This principle is to be applied when a narrow sub-domain is selected from a greater domain. The description […] of document D2 discloses that the structural dimensions are of the order of microns or nanometres. Thus the specific claimed domain of between 10 nm and 100 μm is a narrow selection, as already mentioned in the impugned decision. Moreover, as there are no exemplary values in D2, this selection has to be considered to be remote from the central embodiments of document D2. Thus the two first criteria of T 198/84 are satisfied. However, the third criterion, according to which a technical effect is to be established, cannot be considered in the assessment of novelty, because novelty and inventive step are two distinct requirements of patentability. A 2062 | 3398
T 1130/09 – Two Will Do
K’s Law – The ebook
technical effect that occurs in the more narrow claimed domain cannot justify the novelty of a domain of values that is novel as such, but can only confirm the novelty of this more narrow claimed domain. However, the question of whether there is a technical effect or not is related to inventive step (see T 1233/05 [4.4], T 230/07 [4.1.6]). Therefore, the Board is of the opinion that document D2 does not disclose the claimed domain of 10nm to 100 μm and that the subject-matter of original claim 1 is novel over document D2 within the meaning of A 54. The Board then referred the case back to the ED. I think this approach is to be approved. It has been criticized in the legal doctrine, for example by Prof. Vigand in the French periodical Propriété Intellectuelle, Décembre 2010, p. 17, in an article dedicated to T 1233/05 (my translation of the French original): … When the prior art is prior art that is relevant for novelty only (A 54(3) EPC), it is absolutely indispensable to have demanding and precise standards for applying the criterion of novelty. Therefore, the third condition is necessary because if it is not included, the second applicant, who has not invented anything, can annex considerable portions of the domain claimed by the first applicant. Thus, if the first [applicant] had covered a domain from 1 to 100, with one example at 80, the subsequent applicants could obtain sub-domains by slices of 10 (from 1 to 10, from 10 to 20, and so on) as long as the first patent has not yet been made accessible to the public. … With due respect, I do not find this plea very convincing. By abandoning the third criterion, the Board puts an end to mixing novelty and inventive step. In my opinion, the fact that this may lead to regrettable results when the prior art is of the A 54(3) type is more related to the logic behind A 54(3) – which has its flaws – than to selection inventions. In other words, I find it untoward to introduce a dose of inventive step into criteria for novelty assessment in order to mask undesirable side effects of the A 54(3) novelty-only regime. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here. NB: There was a post on T 230/07 on this blog, plus some interesting comments left by readers.
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T 578/06 – You Bear The Burden First
K’s Law – The ebook
T 578/06 – You Bear The Burden First 20 Jul 2011
The applicant filed an appeal after the Examining Division (ED) had refused its application for lack of inventive step. The Board saw things in a different light, and made some interesting statements regarding the assessment of inventive step especially in the pharmaceutical field. [5] The pivotal point to be decided in this appeal is whether or not the subject-matter of claim 1 involves an inventive step. Closest prior art [6] For assessing whether or not a claimed invention meets the requirements of A 56, the boards of appeal apply the “problem and solution” approach, which requires as a first step the identification of the closest prior art. In accordance with the established case law of the boards of appeal, the closest prior art is a teaching in a document conceived for the same purpose or aiming at the same objective as the claimed invention and having the most relevant technical features in common, i.e. requiring the minimum of structural modifications to arrive at the claimed invention. [7] The claimed invention concerns “the use of somatostatin or a somatostatin agonist in the formulation of a pharmaceutical formulation or preparation for the treatment of a human patient in receipt of transplanted isolated pancreatic islet cells, wherein the pharmaceutical composition is administered until the transplanted cells have become established and fully functional, whereby the functional life of the isolated transplanted pancreatic islet cells is extended relative to untreated transplanted isolated pancreatic islet cells”. [8] Both the appellant and the ED considered the closest prior art to be represented by document D10. Document D10 discloses the administration of a new immunosuppressant (15-deoxyspergualin) to human patients receiving pancreatic islet transplantation to protect the islet cells from host immune assault, thereby sustaining the function of the cells (see abstract). In fact, document D10 is the sole document cited in the examination proceedings which addresses the effect of extending the functional life of transplanted pancreatic islet cells. The board therefore concurs with the appellant and the ED that document D10 represents the closest prior art. [9] The board also largely concurs with the ED’s formulation of the problem to be solved by the claimed invention. Based on the technical teaching in document D10, and in the absence of any argument for or evidence of an improvement over the teaching in that document, the problem to be solved by the claimed invention is the provision of an alternative means to prolong the functional survival of transplanted pancreatic islet cells in human patients. Is the problem solved? [10] In the decision under appeal the ED reasoned […] that the formulated technical problem had not been shown to be solved by the claimed invention and, consequently, that the requirements of A 56 were not met […]. It was argued in essence that the patent application as filed did not comprise experimental data showing the claimed effect. Furthermore, the experimental results in post-published documents D11 and D12 did not reflect those of the required test experiments. The ED concluded that, since in ex parte proceedings it was the applicant who bore the burden of proof for the facts in his favour, it was not credible that the formulated technical problem had been solved. [11] The application as filed summarises the invention by stating that “[t]he present invention relates to a method of prolonging the survival of transplanted pancreatic cells in a patient” […]. Most of the description relates to somatostatin and its agonists as such, to the synthesis of the latter and to somatostatin receptor binding assays, but it also contains a final part entitled “Survival of Transplanted Pancreatic cells” […] which deals, albeit in a theoretical manner, with syngeneic islet transplantation in rats and human ß-islet xenografts in nonimmunocompetent mice and which discloses an experimental methodology to test the ability of somatostatin 2064 | 3398
T 578/06 – You Bear The Burden First
K’s Law – The ebook
receptor binding compounds to extend the functional life of transplanted pancreatic islet cells. On the basis of this disclosure the board notes that the application explicitly addresses the effect(s) claimed. [12] The ED based its negative decision on the fact that neither the application as filed nor post-published documents “illustrated” the use of somatostatin by way of experimental data showing the claimed effect. In relation to the latter, the ED considered that other tests were needed which the applicant had not been able to carry out. The board notes that neither in its decision nor during the prosecution of the application has the ED produced arguments which could discredit the plausibility of the claimed invention. Also the board sees no reasons to doubt the usefulness of somatostatin to attain the claimed effect. [13] The board notes that the EPC requires no experimental proof for patentability and considers that the disclosure of experimental data or results in the application as filed and/or post-published evidence is not always required to establish that the claimed subject-matter solves the objective technical problem. This is in particular true in the absence of any formulated substantiated doubt as is the case here. [14] The boards of appeal have indeed dealt with cases where, in the context of the assessment of inventive step, there could only be an invention if the application made it at least plausible that its teaching did indeed solve the problem it purported to solve and in which to establish plausibility the disclosure of experimental results in a patent application, or, under certain circumstances, by post-published evidence, was considered necessary (see decision T 716/08 [14-16] for a summary of the case law). [15] The board re-emphasises in this context however that this case law considers the establishment of plausibility only relevant when examining inventive step if the case at hand allows the substantiation of doubts about the suitability of the claimed invention to solve the technical problem addressed and when it is thus far from straightforward that the claimed invention solves the formulated problem. This is all the more clear from decisions where an inventive step was in fact denied because the formulated problem was not considered to have been solved. By way of example the board refers to the following two decisions: [15.1] In T 893/02 [12] […] the board agreed […] with the appellants that the technical effect of inducing immunoprotection against melanoma would “probably not be expected” by the skilled person since the prior art taught that gp75 was not a protein present at the surface of melanoma cells and that anti-gp75 auto-antibodies are only very rarely found in the sera of melanoma patients. [15.2] In T 1329/04 […] the same board, albeit in a different composition, dealt with the situation where allegedly a new member (GDF-9) of the TGF-ß superfamily had been described. However, the board noted in point [7] of the reasons for the decision that GDF-9 as disclosed did not exhibit the most striking structural feature which served to establish whether or not a polypeptide belonged to the TGF-ß superfamily: namely the presence of seven cysteine residues with their characteristic spacing. Any change in the TGF-ß characterising pattern of cysteins and their invariant spacing was expected to have significant repercussions on the function of any TGF-ß family member. In point [8] of the reasons for the decision the board noted moreover that GDF-9 was also far from fulfilling the homology criterion as its sequence was stated to be significantly divergent from those of other family members. The board concluded […] that these findings lead to the conclusion that GDF-9 could “not be clearly and unambiguously identified” as a member of the TGF-ß superfamily by only using a “structural approach”. [16] In the present case, the appellant has argued, based mainly on the disclosure in post-published document D11, that the administration of somatostatin or its analogs to a transplanted patient induced a ß-cell rest in the transplanted islet cells which resulted in the inhibition of the glucose-induced endocrine function of those cells, thereby rendering the transplanted cells less liable to an attack by the host immune system. Furthermore, the administration of somatostatin or its analogs to a transplanted patient resulted in a reduced energy requirement of the transplanted islet cells. Both the above actions of somatostatin administration extended the functional life of transplanted islet cells as compared to non-treated transplanted cells. [17] The board has established in point [12] above that it has no reason to doubt the usefulness of somatostatin for the claimed effect. Under these circumstances, post-published evidence may be taken into account. Document D11 concludes indeed […] that the use of somatostatin analogs could be envisaged in cases where a decrease in ß-cell function could contribute to reduce antigen expression and thus diminish an immune assault against these cells as was the case following islet transplantation.
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T 578/06 – You Bear The Burden First
K’s Law – The ebook
Furthermore, post-published documents D13 and D14 demonstrate that the treatment of a recipient of an islet graft with a compound that blocks glucose-induced insulin secretion (diazoxide) improves the islet cell transplant function, by preventing desensitisation of the cells upon transplantation […]. A compound shown to be capable of blocking glucose-induced insulin secretion in vitro was somatostatin […]. Further evidence that somatostatin (analogs) can mimic the effects of diazoxide in vivo comes from postpublished document D12 which discloses that both diazoxide and octreotide, being a somatostatin analog, are capable of inducing ß-cell rest […]. [18] The board accepts that the data referred to in this post-published literature do not constitute an explicit proof of the claimed effects. Nevertheless, they at the least constitute proof that the claimed effects are plausible. In this context also the argument of the ED that survival of transplanted islet cells might not only depend on their insulin production cannot weaken the finding on plausibility. [19] In view of the above considerations, the board considers that it is plausible that the technical problem is solved by the claimed subject-matter. [20] In the present case, the ED further considered, as a basis for requiring experimental proof that it was credible that the formulated technical problem had been solved by using any of the claimed compounds, that it was the applicant, in ex parte proceedings, who bore the burden of proof for the facts in his favour. [21] It is an accepted principle in proceedings before the EPO that he who raises an objection has the burden of proof for it, i.e. evidence, facts or any other sort of substantiation must be provided to support the objection. In the board’s view it follows firstly that in examination proceedings, as far as issues relating to patentability requirements are concerned, the burden of proof cannot lie initially with the applicant. It follows, secondly, that if an ED raises an objection, it must appropriately be substantiated. In the present case, the ED failed to provide such substantiation (see point [12] above). Thus, the board is not convinced by the ED’s argument […], which is, in the context of the present case, understood to mean that in ex parte proceedings the burden of proof is on the appellant even without a substantiated objection by the ED. [22] In fact, the ED’s proposition as referred to in point 20, above, seems to originate from the EPO publication “Case Law of the Boards of Appeal of the EPO” and is still present in its 6th Edition (English version) published in 2010 in the paragraph bridging pages 564 and 565. The board notes however that the cited passage exemplifies the proposition by reference to cases holding that a document cited by an ED does not form part of the state of the art (decision T 160/92), that the conditions laid down in A 123 have been met (decision T 383/88), or that a limitation of the claims is admissible (decision T 2/81). Furthermore, the passage continues by observing, in the context of sufficiency of disclosure, that the applicant is obliged to provide evidence of the skilled person’s relevant knowledge if there is reason to believe the disclosure may not cover all the subject-matter claimed (decision T 82/07). The board notes that all the procedural situations referred to in this passage are those where, in response to a substantiated objection from the ED, the applicant was required to support his/her contention. Consequently, also the passage (apparently) relied on by the ED does not support its view that in ex parte proceedings the applicant has the burden of proof for facts in his favour. It therefore appears that the proposition cited by the ED has been taken out of its context. [23] In view of the above considerations the board is satisfied that the claimed invention should be considered to solve the formulated technical problem in accordance with the requirements developed in the case law of the boards of appeal. Obviousness [24] The ED stated in the reasons for its decision that, provided the applicant had been able to show that the effect of prolonging the survival of transplanted isolated islet cells by the use of somatostatin or its agonists, the application might possibly have been recognised as making an inventive contribution to the art. The board takes from this that the fact that the formulated technical problem had allegedly not been proved to be solved was the only reason for the ED to refuse the application.
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T 578/06 – You Bear The Burden First
K’s Law – The ebook
In view of this positive votum of the ED and in absence of any reason for deciding differently, the board therefore accepts that the invention as claimed involves an inventive step as required by A 56. To
read
the
whole
decision,
click
here.
The
Laurent Teyssèdre has a nice summary on his blog (here).
2067 | 3398
file
wrapper
can
be
found
here.
T 324/09 – First Or Not?
K’s Law – The ebook
T 324/09 – First Or Not? 19 Jul 2011
In EQE papers the question of whether a priority application is a « first application » within the meaning of A 87(4) is often relevant and gives rise to quite tricky situations. In real life, I have not encountered it very often, but the question sometimes arises, as in the present case. Both opponent I and the patent proprietor filed appeals against the decision of the Opposition Division maintaining the opposed patent in amended form. Claim 1 as granted read: A fastener (20) comprising a riveting barrel portion (22), a flange portion (24) which extends radially from the barrel portion generally perpendicular thereto and a fastener portion (26) generally opposite the barrel portion (22), wherein said flange portion includes an outer panel bearing surface (38), characterised in that an annular groove (40) is provided adjacent to and surrounding the barrel portion (22) radially inside the outer annular panel bearing surface (38); in that a plurality of spaced radial ribs (42) bridge said groove (40); and in that said fastener potion (26) comprises a threaded or smooth bore coaxially aligned with said barrel portion (22).
According to the opponent, the priority claim was invalid. The Board could not agree: The subject-matter of the invention [2] The claimed invention relates to a fastener of the self-piercing type. These types of fasteners comprise: “riveting elements” and “pressform elements” as defined in Exhibit 5 which is a datasheet of the “DVSDeutscher Verband für Schweißen und verwandte Verfahren”. This document defines a “riveting element” as an element with a portion which is deformed after having been inserted into the object with which it has to be connected by form fit (“Einnietbare Funktionselemente sind gekennzeichnet durch einen Abschnitt, der nach dem Einbringen in das Werkstück umgeformt und mit diesem formschlüssig verbunden ist”). This definition clearly states that a riveting element is characterised by a deformation of a portion of the riveting element itself. 2068 | 3398
T 324/09 – First Or Not?
K’s Law – The ebook
Following this definition it is specified that the form fit can be achieved either by deformation of only a portion of the riveting element or by deformation of both the riveting element and the object with which it has to be connected (“Die Formschlüssigkeit ist entweder durch Umformen des Nietabschnittes allein und/oder durch Umformen der Lochwandumgebung mit dem Nietabschnitt in Kombination erreicht”). The interpretation of [opponent I] according to which the second part of the definition has to be interpreted in the sense that either the riveting element or the object with which it has to be connected can be deformed, is not correct. The two parts of the definition cited above have to be read in combination. Since the first part specifies the deformation of a portion of the riveting element, the second cannot be construed as giving the alternative of deforming either the riveting element or the other object. Exhibit 5 goes on to define “pressform elements” as elements which are not deformed when inserted into the element with which they have to be connected (“werden beim Einbringen in das Bauteil nicht umgeformt”). It is the other element which is deformed by pressing it into contact with the pressform element (“Umgeformt wird der Bauteilwerkstoff dessen Lochwandumgebung an die oben genannte Abschnitts bereiche der Funktionselemente angepresst wird.”). It is evident from the definitions of “riveting element” and “pressform element” that these two elements conceptually represent two fundamentally different ways of connecting a fastener with another object. In one case the fastener is deformed (alone or in combination with the other object), in the other the fastener is not deformed. Since claim 1 as granted refers to a fastener comprising a riveting barrel portion which according to all embodiments of the patent in suit is deformed (see Figures 9, 11 and 14), the invention clearly belongs to the category of “riveting elements” and not that of “pressform elements”.
Priority [3] The patent in suit claims the priority of D27 which itself claims the priority of D28. [Opponent I] argues that, since D28 disclosed all features of claim 1 as granted, D27 was not the first filed application referring to the present invention and that the priority was not validly claimed. D28 discloses in Figures 14 and 16 a fastener comprising shaft 16 which is connected to plate 52 by the deformation of the plate into grooves 20 of the fastener.
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T 324/09 – First Or Not?
K’s Law – The ebook
There is no disclosure in D28 of any purposive deformation of the shaft in order to connect it with the plate. Moreover, the bulk shape and the thickness of shaft 16 do not suggest any deformation upon insertion into plate 52 either. Therefore, the fastener described in D28 clearly belongs to the pressform element type. Contrary to the submissions of [opponent I], the passage in column 10, lines 8 to 16, cannot be understood in such a way that the shaft is intended to be deformed, let alone in order to connect the fastener to the plate. This passage merely describes a means to avoid an unintentional minor deformation of shaft (16), due to the deformation of the plate, which results in a restriction of the cross-section of the bore (82). NB: The passage in column 10, lines 8 to 16 reads (in English translation): “On the bottom side of element 10 of the middle bore 82 there is a portion 86 the diameter of which is extended. This portion primarily serves to avoid that a deformation of the shaft portion 16 of the nut element leads to a narrowing of the opening section (Durchgangsfläche) of the bore 82 as a result of the plastic deformation of the sheet piece into the zones 20 and the recess 28, which narrowing would hinder the bearing part (Lagerteil) from being introduced into element 10.” The argumentation of [opponent I] according to which shaft 16 was suitable to be deformed and hence represented a riveting element cannot be followed either. The question to be answered is not only whether shaft 16 is suitable to be used as a riveting portion, but whether - more importantly - it was designed and intended to be deformed and hence used as a riveting part in D28. Since, as stated above, shaft 16 was explicitly not intended to be deformed, it does not represent a riveting portion. Since D28 does not disclose all features of claim 1 of the patent in suit, D27 represents the first filing of the invention according to the patent in suit. Hence its priority is validly claimed. The Board then found the claim to be inventive and rejected the opposition. To read the whole decision, click here. The file wrapper can be found here.
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T 1129/09 – Be Exhaustive
K’s Law – The ebook
T 1129/09 – Be Exhaustive 18 Jul 2011
When you appeal against the decision of an Examining Divison (ED) to refuse your application, be sure to address all the objections raised. Otherwise, you might end up as the applicant in the present case. The relevant procedural facts are exposed in the decision. [1] In section 3.1 of its last communication dated 30 January 2009 the ED informed the [applicant] that “[i]f the applicant is interested in a speedy appealable decision, he can ask for a “decision according to the state of the file” and withdraw his request for oral proceedings (OPs). Then the ED will issue a decision of a standard form referring to the previous communications (see Guidelines C-VI, 4.5) this decision is appealable like any decision announced after an OPs”. [2] With its fax of 2 March 2009 the [applicant] withdrew its request for OPs and requested a decision to be “rendered according to the state of the file”. [3] In the resultant decision of standard form, reference is merely made to the communications of the ED dated 27 April 2007, 28 January 2008 and 30 January 2009. [4] The first communication only made a novelty objection based on D1, which after reply of the [applicant] was subsequently withdrawn. In the second communication an objection for lack of clarity (definition by the result to be achieved) and lack of sufficiency was raised. In the reply thereto the [applicant] traverses these objections by reference to the examples in the description. In the last communication again an objection for lack of clarity is raised, this time for absence of features in the main claim which are essential for solving the problem posed (section 2.2.1), as well as a further elaboration of the sufficiency objection already made (section 2.2). The earlier objection for lack of clarity is apparently dropped as it is not repeated nor referred to. In section 2.3 an objection of lack of inventive step is raised (A 56), based on the object to be achieved by the invention, as seen by the ED. [5] With its appeal the [applicant] filed amended claims requests and supplied the statement of grounds of appeal in respect of novelty and inventive step of the subject-matter of claim 1 of each of these requests. [6] In its communication the Board observed that the appeal appeared to concern only the issues of novelty and inventive step in respect of the newly filed claims, but not the other issues (A 83 and A 84) of the decision under appeal. The amendments to claim 1 of the main and the auxiliary request neither seemed to address these issues. Regarding the possible inadmissibility of the appeal the Board referred also to decision T 844/05. [7] In its letters of 4 and 17 February 2011 the [applicant] did not address the issue of admissibility of the appeal as raised by the Board, other than by asking that the appeal be “permitted” and by supplying arguments, now regarding sufficiency of disclosure and clarity of the claims. [8] During the OPs before the Board the discussion therefore concentrated on the admissibility of the appeal and focused on the content of the ED’s last communication, the [applicant’s] statement of grounds of appeal and the amended claims filed with the appeal. [9] A 108, third sentence, provides that “[w]ithin four months of notification of the decision, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations”. Pursuant to R 99(2), “[i]n the statement of grounds of appeal the [applicant] shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based”.
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T 1129/09 – Be Exhaustive
K’s Law – The ebook
[10] Under the established case law the grounds for appeal should specify the legal or factual reasons on which the case for setting aside the decision is based. If the [applicant] submits that the decision under appeal is incorrect, the statement setting out the grounds of appeal must enable the Board to understand immediately why the decision is alleged to be incorrect and on what facts the [applicant] bases its arguments, without first having to make investigations of its own (see T 220/83 [4], followed by numerous decisions, such as T 809/06 [2] and T 844/05 [1]). [11] As it is the statement of grounds of appeal which has to fulfil by itself these requirements the supplying of reasons regarding grounds of the impugned decision, for the first time with the letter of 4 February 2011, outside of the applicable time-limit cannot remedy the deficiency that they have not been supplied with the statement of grounds. [12] The admissibility of the appeal therefore depends in the present case on whether the letter of 29 April 2009, together with the two sets of claims and description page 6 annexed to said letter, can be regarded as a valid statement of grounds of appeal. [12.1] It is therefore to be examined whether the impugned decision is based in substance only on inventive step. If that is not the case, it must be apparent from the arguments presented in the statement of grounds and/or from the attached amended claims that the reasons for refusal based on lack of sufficiency (A 83) and lack of essential features (clarity/support, A 84) are implicitly addressed or that at least the amended claims clearly overcome them. The Board is of the opinion that this requirement is not met in the present case, for the following reasons. [12.2] The communication of 28 January 2008 already contains a very brief objection under A 83 that the skilled person only receives vague indications on how to achieve a plastic which is highly stretched and on how the geometry allows a uniform repartition of the forces. In the communication of 30 January 2009 this objection is expanded in that explanation is considered lacking in the patent as to how a further reduction in wall thickness and weight of the bottom is achieved (for arriving at a weight ratio of more than 4:1 for the wall: bottom, as claimed) while at the same time maintaining/improving the mechanical properties of the container. Both are clear objections under A 83, insufficiency of disclosure. In the latter communication, based on the same deficiencies as the information contained in the patent, an objection for lack of essential features in claim 1, to define the invention, was made. It is consistent case law of the Boards of Appeal that such an objection is one for lack of clarity/support, see Case Law, 6th edition 2010, Chapter II.B.1.1.4. [12.3] The [applicant’s] statement of grounds of appeal does not contain any arguments regarding the lack of sufficiency (A 83) or the lack of essential features (clarity/support, A 84) but only arguments in respect of lack of novelty and inventive step. This fact was not disputed by the [applicant]. The [applicant] was also not in a position to identify any part of the two sets of claims and amended description page 6 annexed to said letter which related to these objections and clearly overcame them. [12.4] The [applicant] argued that even if sections 2.2 and 2.2.1 of the last communication of the ED were to be seen as objections under A 83 and A 84, due to the fact that said sections also refer to comparisons between the subject-matter of claim 1 and the disclosure of D1 and/or D2, the [applicant] was led to believe that the only issue at stake was a lack of inventive step and that by filing, together with the corresponding arguments, new sets of claims overcoming in its opinion this ground an admissible appeal had been filed. [12.5] The Board cannot follow said argument for the following reasons: [12.5.1] In the first place, both for sufficiency of disclosure as well as for lack of clarity/support, there is an arguable case for taking account of the features by which the claimed invention distinguishes itself from the prior art, being D1 or D2. These are the features which are important for the invention, as it is the invention as claimed which needs to be sufficiently disclosed, if not in the claim, then with the help of the description and the general technical knowledge of the skilled person, see T 1011/01 and T 226/85 cited in Case Law of the BoA, Chapter II.A.1.
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T 1129/09 – Be Exhaustive
K’s Law – The ebook
The same applies even more for distinguishing features, essential to the invention so as to comply with the requirement of clarity in/support for the claims, see Case Law of the BoA, Chapter II.B.4.2, in particular T 1055/92 cited therein. [12.5.2] In the second place the [applicant] should have made its position on the issue clear, by at least submitting that lack of sufficiency and lack of clarity/support have nothing to do with the “distinguishing features”, or that by filing arguments and amended claims as a response to the issue of inventive step it assumed that it automatically responded also to the objections raised under A 83 and A 84. Both are not the case. [13] The [applicant] argued further that according to the case law of the Boards of Appeal by filing an amended set of claims the [applicant] does not need to address every single objection of the impugned decision and that therefore in the present case it did not need to address the objections concerning lack of sufficiency of disclosure (A 83) and lack of clarity/support (A 84) explicitly. The Board cannot follow said argument for the following reasons: [13.1] The Board establishes that, other than this general statement, the [applicant] did not put forward any supporting case law. Also the present Board is not aware of any case law supporting such a general statement. In the present case, without arguments directed to the amended features when compared with the objections under A 83 and A 84, it would require anyway that the Board performs further investigations on its own to examine the possibility whether the amended claims evidently address these issues, which goes, in the present case, beyond its duties, see point [10] above. [13.2] The cases cited in the Case Law of the Boards of Appeal of the EPO, 6th edition 2010, Chapter VII.E.7.6.2 d in this respect relate to either submitting claims which already had been accepted before by the department of first instance (T 729/90), clearly overcome a novelty objection by adding to the claim a novel feature (T 105/87) or clearly put the established lack of inventive step into question (T 563/91). None of these situations apply here. [13.3] Even if the Board had examined the nature of the amendments in the new sets of claims, it would not have been evident that they also overcome the objections based on insufficiency of disclosure and on lack of clarity/support: [14] The amendments concern the hemispherical shape of the feet and the tangentially shaped connection of the feet to the hemispherical bottom. The objections related however to the wall/bottom weight ratio being at least 4 and to the question whether the invention was sufficiently claimed and described insofar as the wallthickness/weight of the container’s bottom was reduced, while maintaining, or even improving, at the same time the mechanical properties of the container. The feature of the wall/bottom weight ratio being at least 4 has remained, however, unchanged in claim 1 and the application does not give any indications that the “substantially hemispherical” shape of the feet or their connection to the hemispherical bottom, address the issue of the weight reduction, let alone in connection with the mechanical properties. Finally, the present case does not fall within the other exceptions, listed in Chapter VII.E.7.6.2 of the Case Law of the Boards of Appeal of the EPO, to the principle that the statement of grounds should be complete. [15] It follows from the above that the statement of grounds of appeal, read together with its annexes, does not enable the Board to understand immediately why the decision is alleged to be incorrect as regards the findings of lack of sufficiency of disclosure (A 83) and lack of essential features in claim 1 (clarity/support, A 84). This would have been necessary because these grounds constitute a sufficient basis for the refusal of the application. It was therefore not sufficient to only make submissions in relation to A 56, which is a further ground on the basis of which the present application was refused, independently of the two other grounds. In conclusion, the [applicant] did not file any submission that can be regarded as a sufficient statement of grounds of appeal within the meaning of A 108, third sentence. Therefore the appeal is inadmissible. To download the whole decision, click here. The file wrapper can be found here.
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Oldies But Goldies – Deleting Claimed Features
K’s Law – The ebook
Oldies But Goldies – Deleting Claimed Features 16 Jul 2011
This week we had a decision citing T 331/87, so I thought it would be appropriate to have a closer look at this important decision itself. The decision dealt with an appeal of the patent proprietor against the decision of the Opposition Division (OD) to maintain the patent in amended form. Claim 1 as granted differs from Claim 1 as filed in the following way (deleted parts in red, additions in blue):
The Board agrees with the patent proprietor that the opposition should have been rejected. [2] Claim 1 as granted differs mainly from Claim 1 as originally filed by omitting the feature “... laser cutting head carried by the main frame” and replacing it by the feature “... laser cutting head (17) carried in fixed horizontal relationship to the frame (12)”. It is the excision of the feature concerning the attachment of the 2074 | 3398
Oldies But Goldies – Deleting Claimed Features
K’s Law – The ebook
cutting head to the frame, which was considered by the impugned decision to contravene A 123(2), because it allegedly extended the subject-matter of the application of the European patent beyond the content of this application as filed. [3] For the determination whether an amendment of a claim does or does not extend beyond the subject-matter of the application as filed, it is necessary to examine if the overall change in the content of the application originating from this amendment (whether by way of addition, alteration or excision) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application, even when account is taken of matter which is implicit to a person skilled in the art in what has been expressly mentioned (Guidelines, Part C, Chapter VI, No. 5.4). In other words, it is to examine whether the claim as amended is supported by the description as filed. [4] In the decision T 260/85 [12 and headnote][…] the Board of Appeal 3.5.1 came to the conclusion that “it is not permissible to delete from a claim a feature which the application as originally filed consistently presents as being an essential feature of the invention, since this would constitute a violation of A 123(2)”. In that case the application as originally filed contained no express or implied disclosure that a certain feature (“air space”) could be omitted. On the contrary, the reasons for its presence were repeatedly emphasised in the specification. It would not have been possible to recognise the possibility of omitting the feature in question from the application (point [8]). It could be recognised from the facts that the necessity for the feature was associated with a web of statements and explanations in the specification, and that its removal would have required amendments to adjust the disclosure and some of the other features in the case. [5] Nevertheless it is also apparent that in other, perhaps less complicated technical situations, the omission of a feature and thereby the broadening of the scope of the claim may be permissible provided the skilled person could recognise that the problem solving effect could still be obtained without it (e.g. T 151/84 - 3.4.1). As to the critical question of essentiality in this respect, this is a matter of given feasibility of removal or replacement, as well as the manner of disclosure by the applicant. [6] It is the view of the Board that the replacement or removal of a feature from a claim may not violate A 123(2) provided the skilled person would directly and unambiguously recognise that (1) the feature was not explained as essential in the disclosure, (2) it is not, as such, indispensable for the function of the invention in the light of the technical problem it serves to solve, and (3) the replacement or removal requires no real modification of other features to compensate for the change (following T 260/85). The feature in question may be inessential even if it was incidentally but consistently presented in combination with other features of the invention. Any replacement by another feature must, of course, be examined for support in the usual manner (cf. Guidelines, Part C, Chapter VI, No. 5.4) with regard to added matter. [7] It is therefore necessary to examine whether the person skilled in the art reading the application as filed would consider the feature “carried by the main frame” in respect of the cutting head as essential or not to the function of the machine as described in the application. [7.1] From US-A-4 063 059 being the prior art coming closest to the subject-matter of Claim 1 it is known to equip an automatic machine tool punch press with a plasma-arc torch which is able to cut large and/or irregularly shaped holes in the workpiece to be treated. Such cutting torches have the disadvantage that they cause relatively large kirfs, ragged edges and large heat distort areas adjacent to the cut […]. [7.2] It is also generally known to utilise laser beam cutting machines for cutting large holes in workpieces without the aforementioned disadvantages. In addition laser beam cutting machines can be used as devices which permit surface marking of workpieces of a precisely predetermined position. However, as the laser beam generators are highly sensitive to shocks and vibrations such laser beam cutting machines are not yet combined in operation with a machine tool punch press which is subjected to pounding vibrations during punching operations […]. [7.3] According to the application as filed “it would represent a major advance in the art of machine tools to provide a single machine tool capable of high speed, high accuracy workpiece punching, cutting and surface marking wherein all functions are controllable from a central automatic control and wherein workpiece movement is accomplished by a single mechanism so as to eliminate the necessity of workpiece handling between operations”. 2075 | 3398
Oldies But Goldies – Deleting Claimed Features
K’s Law – The ebook
During the oral proceedings the [patent proprietor] explained that the term “single” machine tool would stand for a unit consisting of individual devices being controlled from one central control. This interpretation corresponds to the object of the invention as specified in the application as filed […]: “to provide a combined automatic turret punching machine tool and automatic laser cutting tool wherein both the punching tool and the cutting tool share a common control and a common workpiece movement system”. [7.4] Having in mind this problem and knowing the advantages and disadvantages of a laser beam cutting machine […] it is clear to the person skilled in the art that for the solution of the problem it is necessary
to position the laser beam generator independently from the machine tool punch press, to position the laser cutting head in a fixed horizontal relationship to the punch tools, and to provide control means for alternatively controlling.
Only when these conditions are fulfilled, is the laser beam generator not affected by the jarring vibratory operation of the machine tool punch press and the laser cutting head can share the automatic control and the workpiece movement assembly of the machine tool punch press. [7.5] From this it results, without being mentioned expressis verbis in the application as filed, that the embodiment of the invention as described in the original application, namely the cutting head being mounted to the mainframe or being carried by the main frame, only represents an advantageous embodiment of the invention. The disclosure never emphasised the strict necessity of this particular solution. Specific embodiment is not indispensable to the function of the invention. The removal of this from Claim 1 does not require any modification of the other features of the invention. Only the requirement for horizontal fixing in relation to the frame enters in lieu of the excised feature itself. Therefore, the excision of the feature “carried by the main frame” by replacing it by a feature being essential to the solution of the above-mentioned problem does not contravene A 123(2). [8] Since novelty and inventive step have never been disputed by the [opponent], there is no need to give in this decision reasons in detail. [9] Consequently, the Grounds for Opposition mentioned in A 100 do not prejudice the maintenance of the patent unamended. To read the whole decision, click here. The file wrapper can be found here.
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T 641/11 – Don’t Know You
K’s Law – The ebook
T 641/11 – Don’t Know You 15 Jul 2011
The present decision is a good reminder of the provisions governing authorisations. The European patent under consideration was refused by a decision of the Examining Division (ED). The decision was notified to the authorized professional representative, Mr H., having his place of business in Germany. A notice of appeal was filed and the appeal fee was paid by Mr L., a new professional representative having his place of business in the United Kingdom. The new and the previous representative were not members of the same association. Neither was an authorization filed for the new representative nor was the EPO notified by the previous representative that his authorization had terminated before the appeal was filed. With communication dated February 23, 2011, the EPO informed the new representative that, according to R 152(1) in conjunction with Article 1(2) of the Decision of the President of the EPO dated 12 July 2007 on the filing of authorizations (OJ EPO 2007, L.1), an authorization in his favour had to be filed within a period of two months from the notification of the communication. Otherwise any procedural steps taken by him would be deemed not to have taken place. On March 21, 2011, the new representative withdrew the appeal and requested refund of the appeal fee. No authorization was filed by him within the time limit referred to above. With letter dated April 1, 2011, the previous representative laid down representation. Consequently, the new representative was informed by the EPO that he was recorded in the Register of European patents as professional representative for the patent application. [1] According to R 152(8) a representative shall be deemed to be authorized until the termination of his authorization has been communicated to the EPO. The previous representative, Mr H., was therefore authorized until 1 April 2011 when he laid down representation. [2] The new representative, on the other hand, did not file an authorization of the applicant when he had been requested by the EPO to do so. The legal consequence is that, according to R 152(6), any procedural steps taken by him before 1 April 2011 are deemed not to have been taken. Consequently, the notice of appeal filed by him on 19 January 2011 is deemed not to have been filed. The same is true for the withdrawal of the appeal. Since the appeal fee was therefore paid without reason it is to be reimbursed. [3] On 1 April 2011, i.e. on the date when the previous representative laid down representation, the change of representatives has taken effect due to Article 1(2) of the Decision of the President of the EPO dated 12 July 2007 referred to above. Thus, according to R 130, the present decision is to be notified to the new representative. I guess this could be used by a company that is not quite sure whether to appeal or not and that needs to buy some time (e.g., if the Opposition Division has maintained the opposed patent in amended form and the patentee will only file an appeal if the opponent does so). If the appeal is filed by a non-authorised representative who is not in the same association as the representative acting so far, then there is a two-month window starting with the notification during which the authorisation can be filed, so that the appeal is validly filed. If the company comes to the conclusion that the appeal should not be filed, then it just has to wait, and the appeal fee will be reimbursed. But as you need a second attorney, it might be cheaper for the company to file an appeal and to withdraw it later on if the appeal is not useful. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 777/08 – Crystals Are A Girl’s Best Friends
K’s Law – The ebook
T 777/08 – Crystals Are A Girl’s Best Friends 14 Jul 2011
This appeal was directed against the decision of the Opposition Division (OD) to revoke the patent. Claim 3 of the main request (and claim 1 of the auxiliary request) read: Crystalline Form IV atorvastatin (i.e. [R-(R,R*)]-2-(4-fluorophenyl)-ß,δ-dhihydroxy-5(1methylethyl)-3-phenyl-4-[(phenylamino)carbonyl]-1H-pyrrole-1-heptanoic acid hemi calcium salt)hydrate characterised by the following X-ray powder diffraction pattern expressed in terms of the 2θ, d-spacings, and relative intensities with a relative intensity of >15% measured using CuKα radiation:
The Board dismissed the appeal because it found this claim to lack inventive step. [5.1] [… C]laim 3 of the main request and claim 1 of the auxiliary request are identical and relate to form IV of crystalline atorvastatin hydrate. The board considers, in agreement with the [patent proprietor], that the amorphous form of atorvastatin, as obtained according to the processes of documents D1 and D2, represents the closest state of the art. The [patent proprietor] defined the problem to be solved in view of this prior art as lying in the provision of atorvastatin in a form having improved filterability and drying characteristics. The solution as defined in claim 3 of the main request and claim 1 of the auxiliary request relates to a specific polymorph of atorvastatin. Having regard to the experimental results reported in document D25, which demonstrate shorter filtration and drying times for form IV compared to the amorphous form, the board is satisfied that this problem has been solved.
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T 777/08 – Crystals Are A Girl’s Best Friends
K’s Law – The ebook
[5.2] It remains to be investigated whether the proposed solution would have been obvious to the skilled person in the light of the prior art and the relevant common general knowledge. The skilled person in the field of pharmaceutical drug development would have been aware of the common general knowledge as reflected by documents D10, D27 and D28. It is noted in this context that the [patent proprietor] has disputed that document D10 forms part of the state of the art within the meaning of A 54(2). This document was printed in the July 1995 issue of the journal “Pharmaceutical Research”, that is, in the same month as the present priority date of 17 July 1995. Although the exact day on which it was made available to the public could not be established, it is noted that document D10 is a review article, which is, by definition, an account of the common general knowledge and the state of the art prior to its own publication date. As will be explained in more detail below, this is corroborated by the disclosures of documents D27 and D28. Hence, the board considers document D10 to provide a legitimate basis for evidence of the common general knowledge of the skilled person at the priority date of the patent in suit (cf. T 1110/03 [2]). From his common general knowledge, the skilled person would firstly be aware of the fact that instances of polymorphism are commonplace in molecules of interest for the pharmaceutical industry, as can, for instance, be inferred from the following passage of document D28 […]: “Polymorphs have crystal lattices which differ in the ways in which the same molecule is bound in the unit cell. The differences may reflect different ways of packing molecules in the cell, or conformational changes, which can be large. Hydrogen-bonding will be involved for most molecules of interest to the pharmaceutical industry.” The skilled person would also have known it to be advisable to screen for polymorphs early on in the drug development process, as explained in document D28 […] (cf. also document D10 […]): “In giving each development candidate the best chance of progressing, it seems better to search for polymorphs rather than to leave their appearance to time and chance with the consequent disruption.” Indeed, the skilled person would also have been aware of regulatory requirements to provide information on the occurrence of polymorphic, hydrated, or amorphous forms of a drug substance (cf. document D10 […]). Moreover, he would be familiar with routine methods for screening for polymorphs by crystallisation from a range of different solvents under different conditions (cf. document D28 […]; document D10 […]). It follows from the above that, at the priority date of the patent in suit, it belonged to the routine tasks of the skilled person involved in the field of drug development to screen for solid-state forms of a drug substance. For the sake of completeness, the board therefore wishes to note that, in the absence of any technical prejudice, which has not been alleged by the [patent proprietor], the mere provision of a crystalline form of a known pharmaceutically active compound cannot be regarded as involving an inventive step (contrary to the statement in the patent in suit, paragraph [0011]). However, in the present appeal proceedings, as outlined above under point [5.1], the [patent proprietor] relied in support of the presence of an inventive step on the improved filterability and drying characteristics of form IV atorvastatin hydrate compared to the amorphous form. It must therefore be decided whether there was an incentive for the skilled person to arrive at the present solution in the expectation of achieving these improved characteristics. As pointed out by the [patent proprietor], amorphous forms are generally known to be more soluble and have greater bioavailability than their crystalline counterparts. However, several disadvantages can also generally be expected for the amorphous form, namely, with respect to chemical and physical instability (see document D27 […], document D10 […], section entitled “Amorphous Forms”). In addition, the following is stated in document D28 […]: “Crystalline products are generally the easiest to isolate, purify, dry and, in a batch process, handle and formulate.” Thus, in view of his general knowledge, as reflected in this excerpt from document D28, the skilled person, starting from the amorphous form of a pharmaceutically active compound as closest prior art, would have a clear expectation that a crystalline form thereof would provide a solution to the problem as defined under point [5.1] above. Although this might not be true of every crystalline form obtained (cf. document D28 […]), it was 2079 | 3398
T 777/08 – Crystals Are A Girl’s Best Friends
K’s Law – The ebook
nevertheless obvious to try this avenue with a reasonable expectation of success without involving any inventive ingenuity. The board cannot accept the [patent proprietor’s] contention that the skilled person would be dissuaded from attempting to obtain a crystalline form by the prospect of a potential loss of solubility and bioavailability when compared to the amorphous form. On the contrary, the skilled person would regard this as being a matter of trade-off between the expected advantages and disadvantages of these two classes of solid-state forms, as outlined above. The [patent proprietor] further argued that the presence of an inventive step was supported by the fact that a specific polymorph was being claimed rather than crystalline forms in general. The board does not deny that there may be other options for solving the problem posed (see e.g. patent in suit, paragraph [0036]). However, an arbitrary selection from a group of equally suitable candidates cannot be viewed as involving an inventive step. [5.3] Therefore, the subject-matter of claim 3 of the main request and claim 1 of the auxiliary request represents an obvious solution to the problem posed and does not involve an inventive step. Since a decision can only be taken on a request as a whole, none of the further claims need be examined. Consequently, the [patent proprietor’s] main and auxiliary requests are rejected for lack of inventive step of claims 3 and 1, respectively. Should you wish to download the whole decision, just click here. The
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My friend Laurent has provided a nice summary here. NB: Apparently this decision was found worthy of being published in the OJ EPO. Don’t ask me why.
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here.
T 747/10 – Let’s Be Subjective
K’s Law – The ebook
T 747/10 – Let’s Be Subjective 13 Jul 2011
T 331/87 is a decision that any serious EQE candidate ought to know. It deals with the question of whether a feature can be deleted from a claim without there being a violation of A 123(2). Today’s decision applies this teaching to a concrete case. Here the Examining Division had refused an application. Claim 1 of the main request before the Board (as compared to claim 1 as filed) read (additions in blue, deleted parts in red colour):
The Board finds this amendment not to comply with A 123(2): [2.1.1] Claim 1 of the main request differs from claim 1 as originally filed, inter alia, in that the feature according to which the computer interface permits to supply power to the light emitting assembly has been deleted. In the letter of 14 March 2011, the [applicant] submitted that the deletion of this feature fulfilled the three point test defined under section C-VI, 5.3.10 of the Guidelines for examination according to which the removal of a feature from a claim does not violate A 123(2) if the skilled person would directly and unambiguously recognise that: (i) the feature was not explained as essential in the disclosure; (ii) the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve; and (iii) the replacement or removal requires no real modification of other features to compensate for the change. The [applicant] elaborated further on this issue in his letter of 31 March 2011, providing arguments why, in his view, each of the three criteria defined in this passage of the Guidelines was fulfilled. [2.1.2] It is acknowledged, as a preliminary remark, that the fact that the computer interface is consistently associated throughout the original disclosure to the function of supplying power to the light emitting assembly does not, as such, constitute an obstacle to its removal from the original claims. This view conforms to the approach developed in decision T 331/87, which constitutes the actual basis for the passage of the guidelines relied upon by the [applicant]. This passage in decision T 331/87 was indeed followed by the statement according to which “The feature in question may be inessential even if it was incidentally but consistently presented in combination with other features of the inventions” (cf. T 331/87 [6]). The Board had thus to decide whether, under the present circumstances, the conditions set out in said passage of the Guidelines and construed in the light of decision T 331/87, allowed the removal of the feature relating to the ability of the computer interface to supply power to the light emitting assembly. [2.1.3] A first step of the analysis to be carried out consists in identifying the subjective problem solved by the invention (cf. T 331/87 [7.1-7.4]), i.e. the problem defined by the applicant in the original description by reference to the prior art, as it was known to him at that time.
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T 747/10 – Let’s Be Subjective
K’s Law – The ebook
While the passage of the description on page 2, lines 25-27, defines it as an object of the invention to make it possible for a user to perform deskwork when being exposed to light therapy, thus addressing the problem associated with light sources harsh to the eyes […], the passage on page 2, lines 17-20, suggests that another object of the invention is to solve the problem of limited portability encountered with prior art LED sources. This view is confirmed by the statement on page 2, lines 28, 29, introducing the definition of the invention, according to which “the above-mentioned and other objects are fulfilled by provision of a light therapy apparatus”, wherein the following definition of the apparatus does incorporate inter alia the feature of the computer interface for power supply of the light emitting assembly, which addresses the problem of limited portability. Moreover, although particular emphasis has been put in the course of the examination proceedings and the ensuing appeal proceedings on the aspect related to the possibility for the user to perform deskwork during treatment, the Board observes that the original disclosure actually privileges the aspect of portability which appears to reflect the main concern of the [applicant] when filing the application. It is worth noting, in this respect, that original claim 1 reproduces the passage of the description on page 2, lines 29-35, but omits the indication concerning simultaneous deskwork. The passages on page 3, lines 1-7, confirm this view insofar as they underline the advantages conferred by the invention or some of its embodiments in terms of size and weight of the light emitting assembly. Consequently, the main problem actually addressed by the invention as originally disclosed concerns the aspect of limited portability of conventional light therapy apparatuses. [2.1.4] The feature as to the ability of the computer interface to supply power permits the use of light emitting assemblies which do not, therefore, require additional large cumbersome batteries. The deleted feature is thus directly involved in the solution of the technical problem identified above. The present case differs, hence, from the case underlying decision T 331/87, in which the deleted feature only represented an advantageous embodiment of the invention, not contributing to the solution of the problem. For these reasons, the board then concluded in T 331/87 that the deleted feature defined an inessential feature of the invention which could be deleted without introducing new subject-matter in the application. An a contrario interpretation of this principle would imply that a feature contributing to the solution of the problem defines an essential feature of the invention and could accordingly not be deleted. Such an interpretation must, however, be rejected, since it would conflict with the established practise at the EPO according to which a structural limitation in a claim may well be replaced by an equivalent, insofar as a support for the alternative configuration may indeed be derived from the application as filed. In the Board’s judgement, the criterion of essentiality is therefore met, if the feature in question is not only involved in the claimed solution but defines the sole alternative actually derivable from the original application documents. In other terms, a feature is essential if the skilled person would not have considered any other configuration as the one actually disclosed in order to solve the problem underlying the invention. Under the present circumstances, the description does not disclose any other substitute to the computer interface for supplying power to the light emitting assembly. The passage referred to by the [applicant] on page 2, lines 16-24, which evokes a built-in battery pack, refers to some drawbacks of the prior art. It does not constitute sufficient evidence that such battery packs have indeed been considered in the framework of the present invention. Moreover, battery packs would not provide full satisfaction in view of the subjective problem actually addressed by the invention since they would still contribute to the size and weight of the light assembly. The third paragraph on page 3 merely suggests that the computer interface may have taken the form of a USB interface, but does not establish that the actual capacity of the computer interface to supply power, as such, can be optional. Similarly, the passage on page 5, lines 3-6, which describes a “preferred embodiment” of the invention, is not sufficient to establish that other means for supplying power were considered. The use of the term “preferred” seems to refer, in this context, to the use of two light emitting assemblies, and does not imply, contrary to the [applicant’s] view, that the computer interface for power supply evoked in this paragraph is purely optional. Consequently, since the deleted feature contributes to solve the subjective problem of limited portability associated to conventional light emitting diodes and since the skilled person would not be able to derive from the application as filed any other configuration as the one consistently disclosed throughout the description, the Board concludes that the feature of the computer interface being adapted to supply power constitutes an essential feature of the invention. Its deletion results in the skilled person being presented with information which is not directly and unambiguously derivable from that originally presented in the application contrary to the principle underlying A 123(2).
2082 | 3398
T 747/10 – Let’s Be Subjective
K’s Law – The ebook
What I find interesting here is that the subjective problem is considered and not the objective problem (with respect to the closest prior art) that would be relevant for inventive step. A feature is essential in this particular context if the drafter of the application thought it to be essential for solving the subjective problem. This is indeed one of the rare cases where the subjective problem is relevant, even in a case where the objective technical problem is quite remote from it. I think this approach is correct for condition (i) of T 331/87, which has indeed a subjective flavour. Things are less clear-cut for condition (ii), but I think the problem again has to be the subjective problem because the objective problem depends on something which, as a rule, is not contained in the application as filed. Making an A 123(2) assessment dependent on such an external element does not sound right, does it? To download the whole decision, click here. The file wrapper can be found here.
2083 | 3398
J 24/10 – The Day Before
K’s Law – The ebook
J 24/10 – The Day Before 12 Jul 2011
Can a divisional application be validly filed just a few hours before the mention of the grant of its parent application is published? That is the question with which the Legal Board of appeal had to deal here. The Receiving Section had decided that the application would not be treated as a divisional application although the applicant had filed it at 11:49, that is to say before the publication of the mention of the grant of its parent application, at 14:00 of the same day. [2] The main issue in the present case is whether or not the parent application was still pending within the meaning of R 36 on the date on which the divisional application was filed. More precisely, did the publication of the mention of the grant of the patent in the European Patent Bulletin on dd.mm.yy exclude the pendency of the parent application for this entire day or only as from 14:00, when the European Patent Bulletin ../.. became publicly available via the internet? [3] The Board finds that this question has already been answered by decision G 1/09 of the Enlarged Board of Appeal (EBA) dated 27 September 2010. According to its obiter dictum under point [4.3.2] of the Reasons, the EBA held that in the procedural situation when a patent is granted “the pending status of the European patent application normally ceases on the day before the mention of its grant is published since from that point in time substantive rights under the EPC are no longer derived from the patent application, but now derive from the granted patent”. Although this statement was given as an obiter dictum the procedural situation underlying the present case was fully considered by the EBA and the Board has not the slightest doubt as to the correctness of this statement and the applicability of this line of reasoning to the present case. Consequently, it must be stated that the pendency of the parent application ended with the day before the mention of the grant of the European patent in the European Patent Bulletin. [4] It must be added that the above statement of the EBA relates only to the wording of R 25(1) EPC 1973 but it is clear from the further deliberations in the reasons for this decision that the same interpretation also applies to the wording of R 36(1) applicable to the present case. [5] As a further reason why the applicant cannot file a divisional application on the date on which the mention of the grant of a patent for the parent application is published in the European Patent Bulletin, it was already pointed out in the reasons of decision J 7/04 of the Legal Board that: “With the mention of the grant of the earlier patent, the applicant and the EPO no longer exercise any influence over the patent, which becomes autonomous and has to be treated as though it had been conferred by a national authority in accordance with A 64(1). On the date of the publication of the mention of the grant of the earlier application the patent is deemed to be outside the EPO’s jurisdiction, and a divisional application could not be filed on the same date because the application is definitively removed from the EPO’s sphere.” The other decisions cited by the [applicant] do not deal with the procedural situation after grant of the European patent and its publication and are, therefore, not appropriate to answer the question as to the pendency of an application in the present case. [6] The cited decisions J 7/04 and G 1/09 are based on the wording of former A 97(4) EPC 1973 (now A 97(3)). According to this wording the smallest time unit is the date (German version: der Tag; French version: la date) as such and not an hour or the chronological order of events on a specific date. Furthermore, A 64(1) stipulates that the date of the publication and not the event of publication as such is the precondition for conferring the protection provided for by that Article.
2084 | 3398
J 24/10 – The Day Before
K’s Law – The ebook
Apparently, the lawmaker’s intention was to implement an incontestable and foreseeable point in time at which jurisdiction passes to the national instances and at which the patent confers on its proprietor the rights defined in A 64(1) in relation to third parties. In order to provide legal certainty for the applicant, the decision to grant a patent regularly contains the scheduled date of the mention of the grant of the European patent so that the applicant is informed beforehand of this date. [7] Summing up the foregoing considerations, the Board comes to the conclusion that in the present case the parent application was no longer pending before the EPO on dd.mm.yy, the date on which the publication of the mention of the grant of the patent took place. Therefore, the requirement of a pending (parent) application pursuant to R 36 was not fulfilled at the filing date of the present application. [8] As regards the [applicant’s] suggestion for referral of a point of law of fundamental importance to the EBA, the Board has explained in the above paragraphs how the answer to this question can be deduced directly and unequivocally from the provisions of the EPC and from the obiter dictum in case G 1/09. Furthermore, as none of the decisions cited by the [applicant] runs contrary to the present Board’s conclusions, in which case a further ruling by the EBA with a view to ensuring uniform application of the law might have been be necessary (A 112(1)), referral to the EBA would actually be inadmissible. Therefore, the Board does not follow the [applicant’s] suggestion in this respect. [9] In summary, the request that the divisional application be treated as a validly filed divisional application is not allowable, and the appeal is therefore dismissed. To read the whole decision, click here. For some strange reason, the application number has been hidden, so I cannot even provide a link to the file wrapper of the parent application.
2085 | 3398
T 1387/08 – On The Edge
K’s Law – The ebook
T 1387/08 – On The Edge 11 Jul 2011
The opponent filed an appeal after the Opposition Division (OD) had maintained the opposed patent in amended form. The Board tackles the question of whether the invention is sufficiently disclosed. [2.1] During the first instance opposition proceedings and after filing the notice of opposition, the [opponent] argued that the invention as defined in claim 1 was not sufficiently disclosed. The objections raised in this context were not admitted into the proceedings by the OD as they constituted a new ground of opposition under A 100(b) that was late-filed and not prima facie relevant. This aspect of the decision was challenged by the [opponent]. [2.2] The contested part of claim 1 of the main request refers to a powdered human milk fortifier comprising - a protein component in a quantity of 24 wt/wt% to 55 wt/wt% of the powdered human milk fortifier, - a fat component in a quantity of 1 wt/wt% to 30 wt/wt% of the powdered human milk fortifier, - a carbohydrate component in a quantity of 15 wt/wt% to 75 wt/wt% of the powdered human milk fortifier, - and “further comprising at least one additional nutrient consisting of calcium, wherein said calcium source is insoluble”. [2.3] The [opponent’s] first argument with regard to insufficiency of disclosure was that a fortifier of claim 1 containing 75 wt% carbohydrates could not be reproduced, as such a fortifier would comprise more than 100 wt% of ingredients (75 wt% carbohydrates + the minimum level of 24 wt% protein + the minimum level of 1 wt% fat + insoluble calcium source). [2.3.1] This alleged deficiency was already present in granted claim 2, which depends on claim 1 and relates to the presence of additional nutrients such as calcium. Hence, the [opponent’s] objection could have been raised in the notice of opposition. Therefore, as stated in the OD’s decision, this objection was indeed late-filed. [2.3.2] This late-filed objection in fact relates to the question of where the boundaries of claim 1 lie with regard to the upper limit of the carbohydrate content. More particularly, to avoid the components of claim 1 adding up to more than 100 wt%, the skilled person has two possibilities to interpret the claim: (i) the upper limit for the carbohydrate amount is in fact below 75 wt%, based on all the components of the fortifier, or, (ii) the upper limit for the amount of carbohydrate is not based on all the components of the fortifier but only on the macronutrients (carbohydrates, proteins and fats) contained therein. The upper limit of the carbohydrate amount is thus ambiguous. Although the board accepts that, depending on the circumstances, an ambiguity (or lack of clarity) may lead to an insufficiency objection, it should be borne in mind that, as pointed out in T 608/07 [2.5.2], for an insufficiency objection, it is not enough to show that an ambiguity exists. It would normally be necessary to prove that the ambiguity deprives the skilled person of the promise of the invention by not enabling him to obtain the desired effects. In the present case, however, the ambiguity exists only at the very edge of the scope of claim 1 (the upper limit of the carbohydrate amount), and does not permeate the whole claim. Therefore, the [opponent’s] objection in effect merely relates to the determination of the exact scope of the claim, which is a matter of A 84 rather than A 83. Consequently, in line with the OD’s decision, the [opponent’s] first objection cannot form a prima facie relevant ground of opposition. [2.4] The [opponent’s] second argument with regard to insufficiency of disclosure was that it is not clear what is meant by “insoluble calcium” in claim 1. [2.4.1] Again, this deficiency was already present in granted claim 3. Hence, this objection could have been raised in the notice of opposition. Therefore, as set out in the OD’s decision, this objection was late-filed as well.
2086 | 3398
T 1387/08 – On The Edge
K’s Law – The ebook
[2.4.2] Moreover, in the same way as with regard to the upper limit of the carbohydrate amount, this objection relates to the question of where the boundaries of claim 1 lie, this time with regard to the solubility of the calcium source. No evidence has been provided that this alleged ambiguity prevents the skilled person from obtaining the effects aimed at by the claimed invention. Thus, again, the [opponent’s] objection relates to clarity rather than sufficiency of disclosure and for this reason alone the [opponent’s] second objection cannot form a prima facie relevant ground under A 100(b). [2.4.3] Moreover, with regard to the insoluble calcium source, the opposed patent defines the term “insoluble calcium” in paragraph [0025] as follows: “The term “insoluble calcium” refers to food grade calcium sources listed in the CRC Handbook of Chemistry and Physics as sparingly soluble in water.” From this CRC Handbook (D13), it can be deduced that the solubility of those calcium salts that are described in paragraph [0056] of the opposed patent as insoluble (calcium carbonate, calcium citrate, calcium phosphate dibasic and calcium phosphate tribasic) differs from the solubility of typical soluble calcium salts by several orders of magnitude. In particular, the solubility (expressed in grams per 100 cc) of calcium carbonate is between 0.0014 and 0.0019 (cold and hot water), that of calcium citrate between 0.085 and 0.096, that of calcium dibasic phosphate between 0.0316 and 0.075 and that of calcium tribasic phosphate is 0.002, while e.g. soluble calcium acetate has a solubility between 29.7 and 34.7. The opposed patent thus provides sufficient guidance to make it possible to differentiate between insoluble and soluble calcium sources. Also for this reason, the [opponent’s] objection with regard to the insoluble calcium source does not constitute a prima facie relevant ground of opposition under A 100(b). [2.5] As regards the exact scope of claim 1 with respect to “75% wt/wt carbohydrate”, this feature would have to be interpreted broadly if it became decisive to be able to distinguish the claimed subject-matter from the relevant prior art. Since, however, this is not an issue in the present case, there is no need to elaborate further on the interpretation of this feature in claim 1. [2.6] In summary, the board therefore does not see any reason to overturn the OD’s decision not to admit the new ground under A 100(b). Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
2087 | 3398
T 1497/08 – No Kitting
K’s Law – The ebook
T 1497/08 – No Kitting 9 Jul 2011
As we have seen in the preceding post, the main request filed by the patent proprietor was found to lack clarity. During the oral proceedings (OPs) before the Board, the proprietor also filed a seventh auxiliary request claim 1 of which read: A process for producing a fried flour-based product, comprising the steps of: (a) preparing a dough comprising flour, water and an added lipolytic enzyme which has phospholipase activity in the range of 0.5-45 kLEU per kg flour, (b) holding the dough during or after mixing, and (c) frying the dough to obtain the fried product, wherein phospholipase activity (LEU) is measured as the release of free fatty acids from lecithin, wherein 50 myl 4% L-alpha-phosphatidylcholine, 4% Triton X-100, 5 mM CaCl2 in 50 mM HEPES, pH 7 to which is added 50 myl enzyme solution diluted to an appropriate concentration in 50 mM HEPES, pH 7, wherein the samples are incubated for 10 min at 30ºC and the reaction stopped at 95ºC for 5 min prior to centrifugation (5 min at 7000 rpm), wherein free fatty acids are determined using the NEFA C kit from Wako Chemicals GmbH, and wherein 1 LEU equals the amount of enzyme capable of releasing 1 mymol of free fatty acid/min at these conditions. 1 kLEU = 1000 LEU. (my emphasis) The Board finds this request not to be admissible: [7] During the OPs before the board, the [patent proprietor] submitted a seventh auxiliary request. Claim 1 of this request differs from claim 1 of the previous request inter alia by the requirement that “the free fatty acids are determined using the NEFA C kit from Wako Chemicals GmbH”. [7.1] The [opponent] requested that this late-filed request should not be admitted into the proceedings. It argued that the NEFA C kit was equivalent to a trademark the meaning of which could change over time. In the present case, an employee of Wako Chemicals had confirmed on the phone that this kit was no longer available. It was thus not clear in the [opponent’s] opinion how the amount of free fatty acids was to be determined. In view of the fact that different methods led to different results, the introduction of this kit into claim 1 rendered the claim unclear. Finally, the [opponent] explained that in order to substantiate the non-availability of the kit, it would need more time to obtain e.g. a declaration from Wako Chemicals GmbH. Concerning the [patent proprietor’s] argument that a datasheet for the NEFA C kit was available on the Internet and provided sufficient information to determine free fatty acid amounts, the [opponent] argued that this datasheet was not on file. Even if it was, more time would be needed to study the content of this sheet, in particular with regard to its date of publication. [7.2] In the board’s judgement, if the NEFA C kit should indeed no longer be available and/or the datasheet should not provide sufficient information, the skilled person would not know which method to apply in order to determine the amount of free fatty acids. In this situation, claim 1 would be unclear with regard to the amount of free fatty acids and hence the phospholipase activity, unless all methods led to the same result. In view of this, the clarity of claim 1 of the seventh auxiliary request hinges on the availability of the NEFA C kit or the information content of the datasheet related to this kit and the question of whether different methods for determining the amount of free fatty acids lead to different results. [7.3] The [opponent] was confronted with a claim relating to the NEFA C kit at an extremely late stage, namely towards the end of the OPs. As set out above (point 7.2), the introduction of this feature into claim 1 raised new issues that could not be resolved in the OPs. As foreseen by Article 13(3) RPBA, in this situation, the amendment is not admissible. Said amendment and with it the seventh auxiliary request were therefore not admitted into the proceedings (Article 13(3) RPBA). [7.4] The [patent proprietor] argued that D28 showed that the NEFA C kit had been available in 2008. However, this argument is irrelevant to the above-discussed question as to whether the kit is still available now.
2088 | 3398
T 1497/08 – No Kitting
K’s Law – The ebook
The [patent proprietor] further argued that the seventh auxiliary request constituted a serious attempt to overcome the objections raised by the [opponent] during the OPs and that the request should therefore be admitted into the proceedings. However, this does not alter the fact that the request raised new issues that were not resolvable during the OPs. The [patent proprietor] finally argued that the subject-matter of the seventh auxiliary request did not diverge from the subject-matter previously claimed and that therefore the seventh auxiliary request should be admitted. However, this is not correct as the NEFA C kit had not been contained in the claims of any of the previous requests before the board and hence, the subject-matter of the seventh auxiliary request in fact does diverge from the subject-matter previously claimed. [7.5] The [patent proprietor’s] arguments were therefore not convincing and hence could not change the above finding that the seventh auxiliary request could not be admitted into the proceedings. To read the whole decision, click here. The file wrapper can be found here.
2089 | 3398
T 1497/08 – Tell Me All
K’s Law – The ebook
T 1497/08 – Tell Me All 8 Jul 2011
One of the opponents filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form. Claim 1 of the main request before the Board read: A process for producing a fried flour-based product, comprising the steps of: (a) preparing a dough comprising flour, water and an added lipolytic enzyme which has phospholipase activity in the range of 0.5- 45 kLEU per kg flour, (b) holding the dough during or after mixing, and (c) frying the dough to obtain the fried product. In the proceedings before the Board, the question of clarity proved decisive: [2.1] During the opposition proceedings, the parameter “phospholipase activity in the range of 0.5-45 kLEU per kg flour” was inserted into claim 1 of the main request. The claim does not specify how this phospholipase activity has to be measured. According to […] the description of the opposed patent, the phospholipase activity “may be determined by the plate assay in WO 02103805 (PCT/DK 01/00472) or by an assay WO 2000/32758, e.g. the PHLU, LEU, monolayer or plate assay 1 or 2”. A specific method for determining phospholipase activity is given in paragraphs [0042] and [0043] of the opposed patent. It has to be examined whether, under these circumstances, the insertion of the phospholipase activity into claim 1 meets the requirements of A 84, in particular in view of the fact that no information is contained in the claim as to how to determine this activity. [2.2] According to A 84, the claims define the matter for which protection is sought. This implies that the claims must be clear in themselves when being read by the competent technical expert exercising normal skills, without the need to resort to information derived from the description of the patent. As is set out in numerous decisions (e.g. T 1156/01 [2.2-3], T 412/02 [5.6-9], T 908/04 [3.1-8] and T 555/05 [3.2.7-10]), this implies that the method for measuring the parameter (or at least a reference thereto) must appear completely in the claim itself, if the invention is characterised by a parameter. [2.3] As set out above, in the present case, no such method (or reference thereto) is contained in claim 1 of the main request. [2.4] In this situation, the requirements of A 84 would still be met if it could be shown that (i) knowing which method to employ belongs to the skilled person’s common general knowledge, or (ii) all the methodologies known in the relevant technical field for determining this parameter yield the same result within the appropriate limit of measurement accuracy (see e.g. decision T 1156/01 [2.3]). [2.4.1] As regards point (i), no evidence has been provided by the [patent proprietor] that it is indeed part of the skilled person’s common general knowledge to know which method to employ to measure phospholipase activity. In fact, the opposed patent itself acknowledges […] that different methods may be used to determine phospholipase activity. This is confirmed by D13, D35, D36 as well as by […] the opposed patent, where various measurement methods are described that differ inter alia in terms of pH and temperature. More particularly, pH and temperature vary as follows:
pH 5 and 37ºC (“PLU” method described [in] D13), pH 7 and 30ºC (“PHLU” method described [in] D13 and LEU method in […] the opposed patent), pH 7 and 37ºC (point 2.3 [in] D36) and 2090 | 3398
T 1497/08 – Tell Me All
K’s Law – The ebook
pH 8 and 40ºC ([…] D35).
The skilled person reading claim 1 would not know which of these methods to apply, and in particular which pH and temperature to use when determining the phospholipase activity required by this claim. The [patent proprietor] argued in this context that the [opponent] itself did not specify the method for determining phospholipase activity when referring to this activity in its own patent applications D37-D39. In the [patent proprietor’s] view this proved that the skilled person, on the basis of common general knowledge, would know which measurement method to apply. However, three single patent applications cannot in general constitute proof of what the skilled person’s common general knowledge is. Moreover, D37-D39 focus on amylases rather than phospholipases, and no reference to phospholipase activity is made in any of the claims of these documents. It is thus not surprising that no measurement method for determining the phospholipase activity is given in these documents. In view of this, it remains unclear to the board how the omission of the method for determining phospholipase activity in D37-D39 can constitute proof that the skilled person, on the basis of common general knowledge, would know which method to apply and in particular which pH and temperature to use when determining phospholipase activity. The [patent proprietor’s] argument therefore must fail. [2.4.2] As regards point (ii), namely the question whether all measurement methods yield the same value for the phospholipase activity, it follows from table 4 of D13 that the phospholipase activity strongly depends on the pH employed during the measurement. More particularly, by varying the pH from 5 to 8, which is the range of pH values used in D13, D35, D36 and the opposed patent […], phospholipase activity determined for one and the same enzyme changes by 375%. Equally, by varying temperature from 30ºC to 40ºC, which is the range of temperatures used in D13, D35, D36 and the opposed patent […], phospholipase activity determined for one and the same enzyme changes by 18% ([…] D13). The same can be observed when pH and temperature are changed simultaneously. More particularly, for one and the same enzyme, phospholipase activity is
1454/mg-1458 LEU/mg (opposed patent […]) when measured at pH 7 and 30ºC, 1540 LEU/mg when measured at a pH of 8 and a temperature of 40ºC ([…] D35), or 225 LEU/mg when measured at pH 7 and 37ºC ([…] D13, “PHLU” is equivalent to LEU […]).
[2.5] In summary, the skilled person reading claim 1 would not know which method to apply for the determination of the phospholipase activity and when trying different measurement methods, he would obtain different activities for one and the same enzyme. The activity range required by claim 1 is therefore unclear, which implies that claim 1 of the main request does not meet the requirements of A 84. [2.6] The [patent proprietor] argued that claim 1 met the requirements of A 84 as a measurement method was given in […] the opposed patent. The [patent proprietor] referred in this context to decision T 94/82. However, this decision nowhere contains a general statement that it is sufficient for a measurement method to be contained in the description when a claim refers to a parameter. In fact, the decision refers to the specific case in which the parameter is “usual in the art” and “can conveniently and reliably be obtained in following the instructions given in the description and in accordance with the German standard DIN 53840 mentioned therein” (point [2.3] of the reasons). This clearly differs from the present case, in which the only specific method mentioned in the description does not constitute a generally recognised German or other national standard and it is even explicitly acknowledged in the description that various methods can be applied […]. Accordingly, the decision referred to by the [patent proprietor] and the reference in […] the opposed patent to a specific measurement method cannot invalidate the above finding that claim 1 lacks clarity. I for one do not approve of this approach because, as I have already said somewhere, this will only lead to clumsy claims, without any real benefit for whomsoever. The reader of a patent can be expected to look for measuring methods etc. in the description. But this decision clearly indicates the direction into which we are moving. To read the whole decision, click here. The file wrapper can be found here.
2091 | 3398
R 1/11 – Off Topic
K’s Law – The ebook
R 1/11 – Off Topic 7 Jul 2011
The petition stems from decision T 128/10 (reported here). In this decision, the Board rejected an appeal against the revocation of the patent under consideration as inadmissible because it had been filed by the transferee before the requirements for recording the transfer had been met. The ‘appellant’ also requested the following questions to be referred to the Enlarged Board (EBA): “Is it sufficient to provide documentary evidence in relation to the transfer of a patent under appeal which was in fact submitted before the expiry of the period for filing the notice of appeal, according to R 20(3) [EPC 1973] or R 22(3) [EPC], so that a transfer shall have effect vis-à-vis the EPO? If yes, is the appeal receivable? If No, should the Board of Appeal have drawn attention of the appellant on incorrect designation of the Appellant and have invited the representative to modify the incorrect designation of the Appellant? Is there in EPC 1973 or 2000, a Rule stating that to be an entitled-Appellant you should be recorded on the Register of European Patent, and in such case what is the utility of R 22(3) [EPC]?” The Board had refused to refer those questions with the following justification: “[6.1] Pursuant to A 112(1)(a), “in order to ensure uniform application of the law”, or “if a point of law of fundamental importance arises”, the Board of Appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required for the above purposes. If the Board of Appeal rejects the request, it shall give the reasons in its final decision. [6.2] In the present case, the alleged appellant’s auxiliary request essentially concerns the interpretation of the requirements of R 22 EPC and the correction of the designation of the appellant in the notice of appeal. Since the jurisprudence of the boards of appeal with regard to both issues is consistent, there is no need to refer a question to the EBA to ensure uniform application of the law. In view of this, the Board does not see that a point of law of fundamental importance arises, that would need a clarification by the EBA.” In their petition for review, the petitioners pointed out several shortcomings of T 128/10. Among other things, they criticized the refusal to refer a question to the EBA. They finally referred the questions themselves, because the petition for review included the following questions: Is the production of the documents providing evidence of the transfer of the patent under appeal, before the expiry of the period for filing the notice of appeal, sufficient under R 22(3) so that the transfer has effect vis-à-vis the EPO? If yes, is the appeal admissible? If no, what is the purpose of R 22 (3)? Should the board of appeal allow a request for correction of the notice of appeal? To which extent is the decision T 97/98 to be considered when assessing the admissibility of an appeal filed by an appellant whose identification is incorrect and whose representative is the same as in the first instance proceedings? Here is what the Board had to say on these issues: [3] Petitioner 1 contends that the lack of reasons for refusing to refer questions to the EBA amounts to a breach of A 112(1). The EBA is not clear about what is meant under this contention because there is no logical link between the lack of reasons alleged and the violation of A 112(1). A 112(1) would rather concern the refusa1 to refer per se, while the lack of reasons might be seen as a potential procedural defect under A 112a(2) or R 104. As concerns the latter aspect, it is clear from the decision under review that the Board of Appeal did decide on this issue and that it gave the reasons why it refused to refer the questions to the EBA (see paragraph [6] of the decision). 2092 | 3398
R 1/11 – Off Topic
K’s Law – The ebook
Insofar as petitioner 1 seems to contend that the refusa1 to refer itself might be considered to be a breach of A 112(1) because it hinders the uniform application of the law […], the EBA notes that neither A 112a nor R 104 include in their list of deficiencies the refusa1 to refer questions to the EBA. [4] The question of uniformity of the application of the law also underlies the questions the EBA is asked by petitioner 1 to answer. It is immediately apparent that they overlap the questions submitted to the Board of Appeal as a request for referral to the EBA, which request was rejected by the Board of Appeal […]. The treatment of such questions pertains to a different procedure governed by a completely different legal framework and thus falls outside the ambit of the present proceedings (see Explanatory remarks to A 112a, point 5, where it is clearly stated that the function of the petition for review is to remedy intolerable deficiencies occurring in individual appeal proceedings, not to further the development of EPO procedural practice or to ensure the uniform application of the law, OJ Special edition 4, 2007). You might remember R 7/08 (reported here) where the EBA (in its composition pursuant to R 109(2)(a)) refused to refer a question to itself (pursuant to A 112(1)(a)) and justified this refusal by pointing out that the EBA was “not a “Board of Appeal” within the meaning of” A 112(1)(a). The whole decision can be downloaded here. The file wrapper can be found here.
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T 258/09 – It’s Contagious
K’s Law – The ebook
T 258/09 – It’s Contagious 6 Jul 2011
I find this decision interesting because it shows that there are disclaimer-transmitted diseases (DTD): a disclaimer may transmit a deficiency such as a lack of clarity from the disclaimed prior art to the claim comprising the disclaimer. The appeal was directed against the decision of the Opposition Division to revoke the patent. Claim 1 before the Board read (in English translation): The use of an adhesive tape having a tape-like backing of non-woven material, which is coated on at least one side with an adhesive, the web being a staple fibre web which is mechanically consolidated or wet-laid, the staple fibre web being consolidated further by the addition of binders, for bandaging cable harnesses as used in particular in the automotive industry, wherein the binders are not melt-blown fibres (Schmelzfasern) if their fraction in the fibres of the staple fibre web is between 2 and 50%. (the underlining marks the additions with respect to claim 1 as filed) In dealing with the main request on file, the Board raises a clarity issue: *** Translated from the German *** [2.1] Claim 1 of the main request differs from claim 1 as granted in that it contains a disclaimer of subject-matter disclosed in D4. [2.2] According to decision G 1/03 [headnote II.1] a disclaimer that has not been disclosed in the application as filed can be allowable if it serves to restore novelty by delimiting the claim against state of the art under A 54(3) and (4) EPC 1973. The disclaimer must meet the requirements of clarity and conciseness of A 84 (see G 1/03 [headnote II.4]). [2.3] In the present case the disclaimer requires that the “the binders are not melt-blown fibres if their fraction in the fibres of the staple fibre web is between 2 and 50%”. The content of the melt-blown fibres is given in “%”. The [opponent] rightly criticizes that this indication as such does not disclose whether weight percent or volume percent are meant. It is not disputed that D4 does not provide any information on this indication. [2.4] The [patent proprietor] expressed the opinion that it was usual in the field to use weight percent and that, therefore, the skilled person would a priori suppose that the percentages in D4 and, consequently, in claim 1, were weight percent. It also pointed out that weight percents were used in the opposed patent […]. [2.5] However, this argument does not persuade the Board. There is no indication in D4 that the indication “%” referred to weight percents. Statements in the opposed patent cannot be used for interpreting the disclaimer that has its origin in D4. Moreover, the claims have to be clear to the skilled person using his common general knowledge, so that he does not have to consult the description of the patent under consideration when interpreting the claim. Therefore, the argument of the [patent proprietor] based on the description cannot succeed. [2.6] Moreover, the disclaimer also lacks clarity because, according to paragraph [0025] of the patent, additives such UV stabilizers or flame retardants can be added to the backing of non-woven material. However, the disclaimer does not disclose whether the fraction of the melt-blown fibres in the fibres of the staple fibre web has to be calculated before or after a possible addition of additives. [2.7] It follows from the above that the disclaimer of claim 1 is not clear. Therefore, claim 1 cannot be granted. If my understanding is correct, you cannot disclaim an unclear teaching. Either you disclaim it, unclear as it is, and the disclaimer will contaminate the claim. Or you make the disclaimer clear, but then it does not fit the prior art any more, and the disclaimer will not comply with the requirements of G 1/03. Either way, trouble ahead.
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T 258/09 – It’s Contagious
K’s Law – The ebook
One more reason to avoid disclaimers whenever you can. To download the whole decision (in German), click here. The file wrapper can be found here.
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T 152/09 – On Problems And Difficulties
K’s Law – The ebook
T 152/09 – On Problems And Difficulties 5 Jul 2011
The present appeal was directed against the decision of the Examining Division (ED) to reject the application under consideration on the ground of lack of inventive step. Claim 1 of the main request before the Board read (in English translation): Cosmetic composition for making up keratin fibers, characterised in that it comprises at least one wax, in that it has a solids content of greater than or equal to 45.5% by weight and a plateau Gp modulus of rigidity of greater than or equal to 5,500 Pa and less than 60,000 Pa, and in that it combines at least one non-ionic surfactant with an HLB of greater than or equal to 8 and at least one gelling polymer selected from the group consisting of homopolymers or copolymers of acrylic or methacrylic acid, and the salts and esters thereof, copolymers of acrylic acid and of acrylamide, polyacrylic acid/alkyl acrylate copolymers, AMPS (polyacrylamidomethylpropane-sulphonic acid), AMPS/acrylamide copolymers, AMPS/polyoxyethylenated alkyl methacrylate copolymers, and mixtures thereof. The Board found the reasoning of the ED to be deficient. *** Translated from the French *** [3] A decision to refuse an application under A 111(2) has to be reasoned. The purpose of this requirement is to enable the party who is adversely affected and, in case of an appeal, also the Board of Appeal to examine whether the decision can be considered to be justified or not. To this aim, the decision has to contain, in logical sequence, those arguments which justify the tenor. This implies that the facts, evidence and arguments which are essential to the decision must be discussed in detail in the decision and arranged to form the reasoning that leads to the decision, so that the reasoning allows to understand how the legal provisions are applied to the circumstances of the case (see T 278/00 [2]). [4] When assessing inventive step, as here, the approach to be chosen results from A 56 itself: it has to be examined whether, having regard to the state of the art within the meaning of A 54(2), the invention is obvious or not to a person skilled in the art. It is to this aim that the Boards of appeal have developed the “problemsolution” approach. This approach also has to be applied in first-instance proceedings (see the “Guidelines for Examination in the EPO”, part C-IV). It appears that the ED in the impugned decision did not intend to depart from this approach (see point 12 of the decision) but it has applied it in an atypical manner in order to “avoid its pitfalls”, which, as will be demonstrated, makes its reasoning deficient and results in non-compliance with R 111(2). [5] For the ED (see page 7 of the decision, point 3), the basic notion is the notion of “difficulty” encountered in order to reach the “target aimed at” (but fixé). This is an autonomous notion that is completely disconnected from the prior art, the prior art being considered in the impugned decision only to check whether the solution to the difficulty was already taught therein. [6] The ED has started the analysis of the case (page 7 and 8, point 5) by asserting that “the reality of the difficulty” of obtaining a solids content of greater than or equal to 45.5% by weight and a plateau Gp modulus of rigidity of less than 60,000 Pa had not been established. Then, having asserted that the “type of formulation sought by the applicant (aqueous mascara)” was known to the skilled person, and so were the non-ionic surfactants with an HLB of greater than or equal to 8 and the gelling agents defined in claim 1, the ED has pointed out that “the composition claimed by the applicant [did] not present any objective (within the meaning “on the basis of the facts brought to the attention of the division”) formulating difficulty for the skilled person” and that, therefore, the subject-matter of claim 1 lacked inventive step. This global and abstract analysis is the very exemplification of a subjective approach. At no time the ED cites the prior art corresponding to the aqueous mascara itself, which is said to be known, to the non-ionic surfactants with an HLB of greater than or equal to 8, and to the gelling agents, which are also said to be known, which would enable to know what led the ED to conclude that, having regard to the state of the art within the meaning 2096 | 3398
T 152/09 – On Problems And Difficulties
K’s Law – The ebook
of A 54(2), the invention was obvious to a person skilled in the art. The argument according to which the nonionic surfactants with an HLB of greater than or equal to 8 and the gelling agents defined in claim 1 are known or available on the market does not as such constitute a description of the prior art based on which the obviousness of the invention and, therefore, the correctness of the impugned decision with regard to inventive step can be verified. [7] Despite the conclusion mentioned in point 5 of the reasons for the decision (page 8), the ED has then checked, in points 6 and 7 of the reasons, whether, in view of the examples of the application and the comparative trials according to annex II filed by fax on May 28, 2008, the non-ionic surfactants with an HLB of greater than or equal to 8 could be considered to have a fluidifying effect in aqueous compositions containing waxes. However, the ED has not assessed the fluidifying effect of non-ionic surfactants with an HLB of greater than or equal to 8 within the context of the prior art. The analysis of the examples of the application and of the comparative trials according to annex II filed by fax on May 28, 2008 alone cannot establish whether the invention was obvious to a person skilled in the art, having regard to the state of the art within the meaning of A 54(2). [8] The only example of the prior art that has been cited, D1, mentioned in the notification of September 15, 2005, has been discarded during the oral proceedings on the ground, given in the written decision, that the question of whether the solids content was increased with respect to D1 was tantamount to a tautology and that the document was not relevant. [9] The ED then provided a lengthy theoretical justification for its having taken liberties with the problemsolution approach. However, in point 12 of pages 12 and 13, its decision notes that it was important to know the known mascaras and the research carried out by the applicant in order to objectively establish the particular technical effect invoked. Thereby the ED admits that the assessment of inventive step can only be carried out by starting from the prior art and it condemns its own approach. [10] When reading the decision, the reader is confused to the point that when he reaches the passage entitled “Decision” (page 15) according to which the present application is refused for lack of inventive step, he wonders whether the reason is that the there is no fluidifying effect of non-ionic surfactants with an HLB of greater than or equal to 8 in aqueous compositions containing waxes, or the absence of a “difficulty”. In both cases, he is not enabled to know on which concrete elements these conclusions are based. By replacing the conventional objective approach by an approach based on the notion of “difficulty” and on the obviousness of the solution, without any relation to the prior art according to A 54(2), the ED has taken a decision that does not allow [the Board] to check whether the analysis of the facts and the conclusions drawn are correct. Therefore, this decision is not properly reasoned within the meaning of R 111, which is a major [procedural] violation that requires the case to be remitted to the first instance. [11] The Board also notes that these same reasons which deprived the [applicant] of the possibility of preparing an appeal also left it destitute in the first instance proceedings. Although it expected to discuss inventive step in view of prior art D1 as well the question of whether adding a gelling polymer involved an inventive step or not, as was indicated in the annex to the summons for oral proceedings, it could not contest the unknown and vague notions of “difficulty” and “target aimed at” which it was confronted with in the decision, nor could it answer in a useful way the objections made [by the ED] which were not based on any prior art within the meaning of A 54(2). This qualifies as a violation of the right to be heard. The Board then set aside the decision and remitted the case for further prosecution. To download the whole decision (in French), click here. The file wrapper can be found here.
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J 12/10 – Too Many Cooks Spoil The Broth
K’s Law – The ebook
J 12/10 – Too Many Cooks Spoil The Broth 4 Jul 2011
Inventors who conduct the proceedings before the EPO themselves often omit to pay the renewal fee for the third year, but it can also happen when professional representatives are in charge as the present case shows. It is one of those cases where you have the troika “U.S. attorney + EP attorney + fee company”, without which there would be much less restitutio case law. Here the renewal fee for the third year fell due on April 30 2008. On June 4, 2008, the Receiving Section (RS) sent the [applicant] a notice in the usual form drawing attention to the fact that the renewal fee had not been paid and that the payment of that fee, together with the additional fee, could still be validly effected within six months following the due date. However, the EPO had received no payment by the expiry of that period. So the RS informed the applicant, in a communication pursuant to R 112(1) dated and received on December 10, 2008, that the application was deemed withdrawn under A 86(1). By letter dated and received on February 19, 2009, the representative on behalf of the [applicant] filed a request for re-establishment of rights under A 122. He paid the renewal fee for the third year, the additional fee and the fee for re-establishment of rights on the same date. In this request, the [applicant] stated that responsibility for the payment of the renewal fee had been delegated to the US attorney handling the case. Furthermore, the renewal fees were paid annually by a U.S. service company, Computer Packages Inc. (CPI). The applicant argued that it had exercised all due care by delegating this responsibility to persons that professionally dealt with the payment of annuities. It added that the removal of the cause of non compliance occurred on January 9, 2009, when the European representative was informed by the new US attorney that the case had been transferred to him rather than when the European representative received the notice of loss of rights from the EPO. The RS rejected the request for re-establishment; the present appeal is directed against this decision. Here is the verdict of the Legal Board of appeal: [1] According to established jurisprudence (Case Law of the Boards of Appeal of the European Patent Office, 6th edition 2010, page 496), when a time limit has been missed, the removal of the cause of non-compliance occurs on the date on which the person responsible for the application is made aware of the fact that the time limit has not been observed. The decisive factor here is when the person concerned ought to have noticed the error if he had taken all due care. The representative has conceded that he received the notification of the loss of rights pursuant to R 112(1) on 10 December 2008 […]. Receipt of notification under R 112(1) is relevant to the question of when the cause of non-compliance with a time limit is removed. The significant date is that on which notification was actually received by a person responsible for the application (see J 7/82 [3-4]). According to the established jurisprudence, no further ten days under R 126 will be added to this two months period. (T 428/98 and T 1063/03 [2]). The European representative no longer appears to dispute that. [2] The European representative has submitted that he did not consider himself responsible for the administration of renewal fees. According to the representative, the US attorney handling the case was responsible for this matter. Furthermore, the renewal fees were paid annually by a service company, Computer Packages Inc. (CPI). Therefore, when notified of the loss of rights, he as the European representative was not aware that the time limit for paying the third renewal fee plus surcharge had been unintentionally missed. The representative adds that he was informed by the US attorney by letter dated 9 January 2009 that the proceedings were now being managed by a new US attorney (Annexes 5 and 6), and that by letter dated 12 2098 | 3398
J 12/10 – Too Many Cooks Spoil The Broth
K’s Law – The ebook
January 2009, he advised both the old and the new US attorneys of the notice of loss of rights dated 10 December 2008. The representative concludes that 12 January 2009 was the date when the new US attorney discovered the error and that the request for re-establishment of rights should therefore be admissible. The Board does not agree with these arguments. [3] It is established jurisprudence of the boards of appeal that a European representative, once appointed - and even if the renewal fees are paid by someone else - remains otherwise fully responsible for the application, and that this includes a continuing obligation to monitor time limits, send reminders to the applicant, etc. In the decision J 4/07 [4.1], the board noted that even if renewal fees are paid by someone else (e.g. a US attorney, a service company or even by the applicant himself), the appointed professional representative remains responsible for the proceedings before the EPO and has to take the necessary steps to ensure payment, if intended. This includes a reliable monitoring system and reminders to the applicant (see also J 11/06 [8]). Nothing else can be derived from decision J 27/90 and especially from point [2.3], paragraphs 6 and 7 of the reasons, where it is stated that using an external agency to pay renewal fees does not constitute “circumstances to the contrary” which would affect the date of removal of the cause of non-compliance, and that the European representative remains responsible for the application. Hence, in the present case, the date of the removal of the cause of the non-compliance is the date on which the European representative, taking all due care, would have noticed that the time limit had inadvertently been missed. There is no evidence on file to indicate timely actions taken by the European representative in order to ensure that the renewal fee for the third year, plus surcharge were actually paid, or that an error was subsequently discovered. Shortcomings on the part of third parties do not affect the date on which the European representative could have become aware of the non-payment of the fee. The representative has acknowledged that he did not monitor the time limit for paying the renewal fee, and accordingly sent no reminder to the [applicant’s] US representative before expiry of the time limit for payment of the renewal fee plus surcharge. Had he done so, he could have established even before the expiry of that time limit that the [applicant] intended to pay the renewal fee. Upon receipt of the noting of loss of rights on 10 December 2008, the representative should have known that something had gone wrong and that payment had been unintentionally missed. Furthermore, even if the representative did not positively know that the [applicant] intended to pay the renewal fee, upon receipt of the noting of loss of rights it would have been his duty to immediately inform the US patent attorney so as to ascertain whether non-payment had occurred inadvertently, or whether the [applicant] actually intended to let the application lapse. The European representative has not filed any evidence for his initial submission that he informed the US representative “immediately” after receipt of the noting of loss of rights. Instead, he has filed evidence - at a later stage - showing that he waited for more than one month before forwarding the loss of rights communication to the [applicant’s] US representative on 12 January 2009. [4] For these reasons, the Board takes the view that the cause of non-compliance was removed on the date the European representative actually received the communication under R 112(1) pointing out that the renewal fee for the third year plus surcharge had not been paid in time and that a loss of rights had thus ensued. This was also the European representative’s opinion in the request filed on 19 February 2009. It is apparent from the wording of […] the request for re-establishment of 19 February 2009 that the representative’s reasons for regarding the request as having been filed in time on that day was his - mistaken belief that the ten-day arrangement under R 126(2) applied when calculating the date of removal of the cause of non-compliance. [5] Hence, the Board is of the opinion that the Receiving Section was correct in rejecting the request for reestablishment of rights as inadmissible. The appeal must therefore be dismissed.
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J 12/10 – Too Many Cooks Spoil The Broth
K’s Law – The ebook
Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1244/07 – One Click Clipped
K’s Law – The ebook
T 1244/07 – One Click Clipped 2 Jul 2011
This decision deals with the refusal of a divisional application from Amazon’s (in)famous “1-click” application for lack of inventive step. The crucial document is D1, “Implementing a Web Shopping Cart” an article by Baron C. et al in Dr. Dobb’s Journal of September 1996.
Claim 1 of the main request before the Board read: A method for ordering an item using a client system, the method comprising:
receiving from a server system a client identifier of the client system when the client system first interacts with a server system; persistently storing the client identifier at the client system, wherein the client identifier is from then on included in messages sent from the client system to the server system and retrieved by the server system each time a message with an identifier is received from the client system by the server system; storing at the server system for that client and other clients a customer table containing a mapping from each client identifier identifying a client system to a purchaser last associated to said client system; storing at the server system customer information for various purchasers or potential purchasers, said customer information containing purchaser-specific order information, including sensitive information related to the purchaser; connecting at a later point in time, when a purchase is intended, the client system to the server system, comprising the steps of: sending from the client system a request for information describing an item to be ordered along with the client identifier; determining at the server system whether single-action ordering is enabled for that purchaser at the client system; if enabled sending from the server system the requested information to the client system along with an indication to perform a single action to place the order for the item; displaying at the client system information identifying the item and displaying an indication of a single action that is to be performed to order the identified item, performing at the client system that single action and in response to that indicated single action being performed, sending to a server a single action order to order the identified item and automatically sending the client identifier whereby a purchaser does not input identification information when ordering the item, and completing at the server system the order by adding the purchaser-specific order information including said sensitive information that is mapped to the client identifier received from the client system.
The Board essentially confirmed the finding of the Examining Division (ED). [14] The Board therefore considers that the subject-matter of claim 1 differs from D1 in that the purchaser’s identification information is not inputted when ordering the item, but looked up in the customer table using the client identifier received from the client and that the “single action” indication is only sent if it is “enabled”. [15] These features can be seen to solve the two above-mentioned problems in the application and stressed by the [applicant], namely to reduce the number of user interactions involved in selecting items, which makes ecommerce easier, faster and more comfortable, and also to reduce the amount of sensitive information sent over the Internet, which may be intercepted.
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T 1244/07 – One Click Clipped
K’s Law – The ebook
In the Board’s view the skilled person would have tried to solve these problems because they are both explicitly mentioned in the comment referred to by the ED in “Listing One” […] of D1:
This essentially refutes the [applicant]’s argument that the idea of the invention went against the thinking at that time about internet security because it dispensed with the need for the purchaser to identify or authenticate himself. Although the idea behind the invention might not have been commonly known, the programmer in D1 had in fact already realised that it actually increased security. [16] In order to read the sensitive data from the database, one would need a key that identifies the purchaser in question. In the Board’s view it would be self-evident to use the user identifier or cookie already available in D1 to do this. The Board thus considers that the skilled person would have been led to modify the third embodiment of D1 to dispense with the need to input this data for every order and arrive at the situation described by the ED […]. Thus, a user using a client would be presented after some interactions with a check-out page like the one in Figure 4, where the details that can be found in the database (name, shipping address, card type, number and expiration date) would be omitted, and would be given an indication in the form of a “Submit Order” button, which is an indication of a single action to order the contents of the shopping cart, i.e. the claimed single action to order an item. [17] Moreover, it was known, e.g. from D3, at the priority date to use cookies to keep track of purchaser-specific data. The [applicant] argued that in D3 the purpose of using a persistent cookie to store registration information so that a user did not have to enter a login and password each time they visited a site was different from the invention. The website, e.g. the New York Times cited on page 2 of D3, gave the user a cookie in return for information about himself. The cookie did not identify the user for the purposes of purchasing, but rather as an “entrance ticket” to the site. This was analogous to an entrance ticket for a football match where one had to be identified, but no one was actually interested in using the ticket to look up data relating to the ticket holder. This might be true of the examples on page 2, such as the New York Times, but in the Board’s view, D3 discloses more than this. Specifically, at page 5, third paragraph, D3 states In most all cases Web sites store minimal information in the persistent cookie on the user’s system but use the cookie as an index into the database where more details are stored. In other words, it appears that in most cases there is in fact an interest in looking up data about the ticket holder. In view of the indexing function of cookies, the skilled person would have realised that any sensitive data traditionally requiring a login could be accessed by cookies. The obvious trade-off between the two processes, namely security vs. simplicity, cannot establish an inventive technical contribution. [18] Concerning enabling the single action, the Board first notes that this feature is so broad that it covers the situation, described in the application at paragraph 17, that if there is not enough information about the purchaser available to perform a single-action order, it is simply not possible to offer single-action ordering and it is therefore by definition not enabled. The claim thus covers a statement of the self-evident. In appeal, the [applicant] argued that the feature was a broader part of the whole invention and was connected to the security of the system. In particular, the single-action order possibility meant that items could be purchased inadvertently so that it was apparently a necessary feature to mitigate some purchasers’ apprehension about the lack of security inherent in such a single-action possibility. However, this merely shifts the responsibility for the security to the purchaser who judges whether the single-action ordering should be enabled or not. The decision
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T 1244/07 – One Click Clipped
K’s Law – The ebook
not to enable it might depend on whether the purchaser’s computer is used by other people who should not be allowed to order items on the computer owner’s account. Such a decision relates to forms of human behaviour and thinking that fall under mental acts, which are excluded from patentability. According to the jurisprudence of the EPO (see e.g. G 3/08 [10.13.2]) these cannot contribute to inventive step. Its implementation by means of a determination and a conditional sending step are clearly routine matters of design and also cannot contribute. [19] The [applicant] argued that it was important to avoid using hindsight when judging the inventive step. By the time of this appeal, the present invention was so well known and used that it was easy to think that it was “trivial”. This was also pointed out [in] the Campbell article (“Not All Bad: An Historical Perspective on Software Patents”, Campbell-Kelly M., 11 Mich. Telecomm. Tech. L. Rev. 191, 2005, pages 191 to 248) submitted by the applicant during the examination proceedings. The Board agrees that there is generally room for argument when asserting what the skilled person would do as a matter of routine design in certain cases. However, the scope for discussion is substantially reduced in this case in the light of the above-mentioned comment in “Listing One” in D1 that gives such a decisive indication of the programmer’s thinking, especially considering the remaining supporting disclosure relating to cookie technology. [20] Finally, the Board notes that a long felt want is often an indicator of inventiveness, usually overshadowing aspects of commercial success. However, in the present case, according to D1 at the top of page 68 cookies were first proposed in 1996 shortly before the invention was made. Thus the invention was not a situation of a long felt want, but more an immediate application of this new programming feature as soon as it had become available in that field. In the Board’s view, this outweighs the fact that the invention was subsequently very successful. [21] Even if claim 1 can be distinguished or seen to be distinguished over D1 by the lack of an intermediate page in the purchasing process, this difference would concern omitting confirmation steps in an ordering process. Quite apart from the question of whether omitting steps would be obvious in the light of the general desire to simplify computer interactions, the Board considers that such steps relate to a method of doing business and, moreover, optional ones depending on the user’s preferences. Again, such steps cannot contribute to inventive step. [22] Thus, in the Board’s view, the subject-matter of claim 1 would have been obvious to a skilled person (A 56 EPC 1973). Should you wish to download the whole decision, just click here. The file wrapper can be found here. This decision has also been commented on Visae Patentes long ago, and (today) on Le blog du droit européen des brevets.
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K’s Law – The ebook
Publish or perish (ctd.)
Publish or perish (ctd.) 2 Jul 2011
I just had a look at the number of decisions published on the DG3 site this year. It confirmed my impression: we are way behind the figures for the preceding years. Now it is true that the DG3 site has undergone some facelifting and this may well have perturbed the publication process, but the facts are there. Typically, something like 800 decisions are published during the first two quarters, but this year there were only about 550. For the case law blogger that I am, this has direct consequences. Less decisions means less noteworthy decisions. As I try to have one decision per day – because I find it is a good and feasible daily exercise to consider one decision – I face supply difficulties. This week I almost had to stop posting as not a single decision had been published in almost three weeks. A year ago, I had a reservoir of more than forty decisions, which allows you to face such low activity periods – this year I have a stock of one or two. So if during the weeks to come you find that K’s law remains silent, it is just this: I will have run out of decisions. Well, enough with the whining. There are more important things in life than EPC case law, n’est-ce pas? I wish you all happy summer holidays.
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T 1289/10 – Quarantine Horrors
K’s Law – The ebook
T 1289/10 – Quarantine Horrors 1 Jul 2011
After its application had been refused by the Examining Division, in a decision posted on December 8, 2009, the representative of the (American) applicant filed a notice of appeal, together with a request for re-establishment, on March 22, 2010. The applicant argued that the time limit for filing an appeal was missed in spite of all due care having been taken: The applicant’s US attorney and its European representative were well aware of the time limit ending on 18 February 2010. Several emails were exchanged and finally the European representative was instructed to file an appeal. A corresponding email was sent on 17 February 2010 at 20:01 hours Central European Time (CET). It was classified as a potential threat and stored in the quarantine area of the representative’s email server and found there on February 19, 2010 after the US attorney had sent a reminder concerning the appeal on February 18, 2010 at 17:43 hours CET. Unfortunately, at that time the European representative and his team had already had left the office. During oral proceedings before the Board, the applicant’s European representative explained how mail was normally processed in his office. There was a central post room where all incoming mail was checked. On 18 February 2010, two people were in charge as usual. Email was printed on blue paper, date-stamped and put into the paper file. Additionally it was forwarded to the responsible person in an electronic format. The staff in question were well aware of the quarantine area of the email system and the issues arising therefrom. They had access to this quarantine area. The staff concerned were not in a position to recall why they did not check that area on that day. Documents dating from February or before indicating any specific office policy concerning regular checks of the quarantine area of the email system could not be provided. The Board found the request for re-establishment not to be allowable: [3] The request is not allowable. At least the European representative could not establish that all due care had been exercised in handling the case. All due care - general remarks [3.1] Both the applicant and its representatives have to take all due care required by the circumstances (see J 5/80 [headnote I]). All due care required by the circumstances means appropriate conduct by the appellant and its representatives. In this respect it has to be assessed how a competent party or representative would reasonably have acted. As a general rule, a representative acting reasonably would at least take account of known problems and apply known solutions to avoid them. Due care on the part of the European representative [3.2] It is clearly a well-known problem that email filters do not always work reliably. That was not disputed by the appellant. More specifically it is common ground that legitimate mail from time to time is wrongly marked as a possible threat and processed accordingly. In the statement of grounds concerning the request for reestablishment of rights the European representative did not address this issue. As a result it seemed initially that he was not aware of this generally known problem. However in his oral submissions he stated that the staff concerned were well aware of these problems. To remedy them the staff were provided with access to the quarantine area and the instruction to check these filters. It can be left open whether these statements might constitute an inadmissible new case that goes beyond the reasons provided during the time limit for filing grounds in support of the request for re-establishment of rights (see J 5/94 [headnote III]). In any case they are not sufficient to convince the Board that all due care was exercised by the European representative when providing an email account for the receipt of urgent and important mail. Staff in the mail department should have been instructed about the fact that an urgent email might arrive at any time and could wrongly be classified as a potential threat by the email system. It appears in this case that an instruction to perform a daily check might have been sufficient. By applying this simple measure the wrongly marked email would probably have been detected in time. The Board wishes to clarify that if a European representative provides a contact email address for all kinds of mail, including mail that may require immediate action by the representative, it is essential to perform a mail check at least at the end of each business day. Given the known problem that legitimate mail 2105 | 3398
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from time to time is wrongly marked as a possible threat it is evident that this check must include the quarantine area of the email system. Due care on the part of the American representative and the appellant [3.3] The reasons for missing the time-limit for filing an appeal are at least threefold: There was a lack of appropriate organisation of the handling of mail stored in the quarantine area in the office of the European representative […]. The email instruction by the American representative was sent very late, whether because he was instructed by the appellant at such a late stage or for other reasons. Also the email reminder by the American representative - apparently the only attempt to confirm whether the first mail was actually received by the European representative - was sent very late, in fact after European office hours. As the appellant cannot even establish that all due care was taken on the part of the European representative it can be left open whether the American attorney, at such a late stage, was well-advised to use email at all to instruct the European representative to file an appeal. However if it is to be used, the potential dangers must clearly be borne in mind. Email was never meant to be an instant messaging medium and indeed email may, under normal circumstances, be delayed for several hours or even days or occasionally even get lost. Given these (well-known) facts, it would appear necessary for the sender of an urgent and important email to check whether it has actually been received in time, possibly by using a different means of communication, such as the telephone. […] The request for re-establishment of rights concerning the right to file an appeal is rejected. The appeal is dismissed as inadmissible. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1067/08 – No Forum Shopping
K’s Law – The ebook
T 1067/08 – No Forum Shopping 30 Jun 2011
The patent proprietor appealed against the decision of the Opposition Division (OD) to revoke the patent. Claim 15 of the patent as granted read: A granulate comprising dried granules formed from a phytase and a solid carrier which comprises at least 15% (w/w) of an edible carbohydrate polymer. During the opposition proceedings, the patent proprietor filed an auxiliary request file 5 of which read: A granulate comprising dried granules formed from a phytase and a solid carrier which comprises at least 30 % (w/w) of starch, wherein the range of size of the granulate is from 100 mym to 2000 mym, preferably 200 to 1800 mym and most preferably 300 to 1600 mym. As the OD made A 123(2) objections, the patent proprietor filed an amended main request claim 3 of which read: A granulate comprising dried granules formed from a phytase and a non-fibrous solid carrier which comprises at least 30 % (w/w) of starch, wherein the range of size of the granulate is from 100 mym to 2000 mym and the granulate has an activity of at least 6000 FTU/g. During the oral proceedings (OPs), the OD informed the parties that this request did not comply with A 123(2). The patent proprietor then filed a set of amended claims to become its sole request. Claim 1 of this request read: A granulate comprising dried granules formed from a phytase and a non-fibrous solid carrier which comprises at least 15% (w/w) of an edible carbohydrate polymer and the granulate has an activity of at least 6000 FTU/g. The Board having announced that this request was “not allowable”, the patent proprietor affirmed that he did not want to file any further request. Thus the patent was revoked. The patent proprietor filed an appeal and requested that the latest main request be admitted into the proceedings and the patent be maintained on the basis of that request. [2] The patent in suit was revoked for non-compliance with A 113(2), following the OD’s decision not to admit the proprietor’s sole request as filed during the OPs (that is what was clearly intended by the OD and what was understood by the parties, even if the division said the request was “not allowable” […]) and the subsequent 2107 | 3398
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refusal of the proprietor to amend that request and/or to file auxiliary requests. Whether or not the decision under appeal correctly relied on the absence of a text of the patent submitted or agreed by the proprietor depends, thus, on the answer to the preliminary question whether or not the OD was right in not admitting the proprietor’s final request filed during the OPs on the ground that its filing constituted an abuse of the proceedings. [3] In principle, during opposition proceedings a patent proprietor is free to withdraw at any time a request which contains limitations made in an attempt to overcome objections raised against its patent, or to amend it subsequently and, in particular, resume a defence of the patent as granted, unless this would constitute an abuse of procedural law (established case law starting with T 123/85). In line with this principle, R 71a EPC 1973, now R 116, gives the OD the discretionary power to refuse new requests for amendments, if amended claims are presented after the final date fixed under that provision. This applies in particular to requests which are, like the one under consideration, presented for the first time during the OPs (case law of the boards of appeal, see e.g. T 64/02). The purpose of this provision is in particular to prevent parties from seeking unjustified procedural advantages by abusive tactics (nemo auditur propriam turpitudinem allegans - T 1705/07, it being, however, in this board’s view, not a requirement for procedural abuse that the party responsible also acted in bad faith) in disregard of procedural economy and to the disadvantage of other parties. Therefore, any amendment has to be carried out in the most expedient manner, which has to be established by the OD taking into account the interests of all parties (T 382/97), and the power to refuse late requests must be exercised by considering all relevant factors which arose in a particular case, taking account inter alia of whether there were good reasons for the late filing, whether the other parties are taken by surprise and whether new issues are raised by the amendments made. [4] The OD’s finding that the filing during the OPs of the new claims according to the proprietor’s sole and final request lacked adequate justification and disregarded the legitimate interests of the other parties, and therefore amounted to an abuse of procedure, was based on the following facts and considerations:
The [patent proprietor’s] conduct up to the OPs suggested that it intended to defend the patent only in a restricted form, within the amendments made in preparation for the OPs. There was no indication that the proprietor would defend any broader subject-matter and what it might be. There were no adequate objective reasons which would have justified the other parties having to prepare and discuss any further issues arising from the submission of the much broader claims comprising the feature “at least 15% (w/w) of carbohydrate polymer”, but no longer any feature regarding the particle size. There was nothing preventing the proprietor, who was aware, inter alia from the preliminary opinion of the OD, of the objections under A 123(2) to the feature “at least 30% (w/w) of starch”, from filing the new claims according to his final request in time. As these claims comprised a more general definition of the subject-matter and would involve reviewing a large number of submitted prior-art documents, the proprietor should have realised that the filing of such new claims in advance of the OPs was required, having regard to the legitimate interests of the other parties to the proceedings, including their right to duly prepare for discussion of the new claims. The proprietor’s contention that the negative finding on compliance with A 123(2) of the then pending request came as a surprise was unfounded: proprietors should be aware that new sets of claims have to be examined for compliance with A 123(2), even more so in the present case where the critical feature had already been questioned by the opponents and by the OD during the written proceedings.
[5] As regards the [patent proprietor’s] arguments in support of its contention that the opponents could not have been taken by surprise by the late filing of the eventual single request, the board observes the following: [5.1] The [patent proprietor’s] submission that the subject-matter of the new request was identical to the subjectmatter as granted and thus had been discussed since the beginning of the opposition proceedings […] is not supported by the facts. Claim 1 according to the eventual single request submitted during the OPs before the OD is not at all identical to the text of the corresponding Claim 15 as granted. That text had never been discussed, since the [patent proprietor] had already submitted an amended version (Claim 5) in response to the notices of opposition. [5.2] The same is true for the [patent proprietor’s] contention, during the OPs before the board, that the opponents had already been familiar with all the features of the final request and the relevant documents. 2108 | 3398
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There is nothing which could justify such an assumption. Quite to the contrary. In the claims filed during the OPs the [patent proprietor] also deleted the feature concerning the particle size, a feature which had not been objected to at all. This feature had been introduced into the claims as a first reaction to the notices of opposition. It could thus have been assumed by the [opponents] that this would be one of the essential features of the subject-matter pursued during the opposition proceedings. While it can be admitted that the replacement of the feature “at least 30% (w/w) of starch” following the OD’s negative finding on its compliance with A 123(2) was foreseeable, the [patent proprietor] has not given any reason, nor is there any apparent, for the deletion of the particle size which led to a considerable broadening of the subject-matter at a very late stage of the opposition proceedings. Such an inconsistent course of action by the proprietor was not to be anticipated by the other parties or the OD. In addition, the new request would have raised new issues, not least because its claims differed from the subjectmatter of the granted claims by a feature taken from the description, namely the “non-fibrous” solid carrier. [5.3] Under these circumstances it is irrelevant that the replacement as such of the feature objected to in amended claims could not have been a surprise to the other parties. Nor is it relevant that, as the [patent proprietor] alleged before the board, the opponents were facing as a result of their attacks, considerably less complex claims. As regards the [patent proprietor’s] argument that the admission of the amended claims would have been justified in view of the fact that three of the four opponents were apparently willing to discuss the new claims after a (substantial) break for preparation […], it is pointed out that the concept of procedural abuse is not limited to conduct necessitating an adjournment of the OPs, and that such necessity is not solely determined by the affected parties’ view of whether or not an adjournment of the OPs is necessary or appropriate. [6] For the reasons given by the OD and those given above, the board is satisfied that the OD, in taking the view that the filing of the amended claims during the OPs was an abuse of procedure and therefore declining to admit them into the proceedings, has correctly exercised its discretionary power, namely on the basis of the given relevant facts, in accordance with the right principles and in a reasonable way. There is therefore no reason to overrule the OD’s discretionary decision not to admit the late-filed claims (cf. G 7/93). Main request [7] The [patent proprietor’s] main request is identical to the (then sole) request which was not admitted into the opposition proceedings. The [patent proprietor] argued that during the OPs before the OD it had seen no reasonable chance of success with that request or any new requests, and had therefore decided to seek redress at the department of second instance. Therefore, it should be given the opportunity to defend that request before the board of appeal. [7.1] The purpose of the inter partes appeal procedure is mainly to give the losing party a possibility to challenge the decision of the OD on its merits and to obtain a judicial ruling on whether the decision of the OD is correct (G 9/91 and G 10/91). The appeal proceedings are not about bringing an entirely fresh case; rather, the decision of the board of appeal will in principle be taken on the basis of the subject of the dispute in the first-instance proceedings. The appeal proceedings are thus largely determined by the factual and legal scope of the preceding opposition proceedings and the parties have only limited scope to amend the subject of the dispute in secondinstance proceedings (T 1705/07 [8.4]). [7.2] This means that appeal proceedings are not just an alternative way of dealing with and deciding upon an opposition and that - contrary to the [patent proprietor’s] view, which apparently prompted it in the opposition proceedings to eventually limit itself to the request under consideration - parties to first-instance proceedings are not at liberty to bring about the shifting of their case to the second instance as they please, and so compel the board of appeal either to give a first ruling on the critical issues or to remit the case to the department of first instance. Conceding such freedom to a party (and/or to the department of first instance) would run counter to orderly and efficient proceedings. In effect, it would allow a kind of “forum shopping” which would jeopardise the proper distribution of functions between the departments of first instance and the boards of appeal and would be absolutely unacceptable for procedural economy generally. In order to forestall such abusive conduct, Article 12(4) RPBA provides that the Board has the power to hold inadmissible any requests which were not admitted in the first-instance proceedings. [7.3] Hence, in the present case, neither the fact that the claims according to the main request were filed together with the notice of appeal (Article 12(1)(a) RPBA) nor the [patent proprietor’s] motives for limiting itself to the 2109 | 3398
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set of claims according to the single request eventually submitted in the opposition proceedings are, in themselves, a valid reason for admitting those claims into the appeal proceedings. [7.4] Quite to the contrary: given the history of these claims, their admission by the board would be incompatible with the judicial nature of the inter partes appeal procedure and would in effect render pointless the OD’s correct decision not to admit them. Moreover, to admit the [patent proprietor’s] main request in the given circumstances would put the [opponents] in a worse position than if the request had been admitted and decided upon already by the OD. Either the subject-matter of that request would be dealt with only by the board as department of second instance, meaning higher costs and loss of one instance to the opponents, or - much more likely, as the OD has not yet decided on novelty and inventive step - the case would be remitted to the department of first instance, as requested by the [patent proprietor]. As pointed out in particular by [opponent 3], this could entail a further delay of several years before the present case would be finally settled. Such a prolongation of the proceedings is incompatible with procedural economy and would for a long time and without good reason deprive the other parties and the public of legal certainty about the validity of the patent in suit. [7.5] For these reasons, the board has decided to exercise its power under Article 12(4) RPBA not to admit the main request into the appeal proceedings. Auxiliary requests [8] Similar considerations are valid for the [patent proprietor’s] auxiliary requests. Article 12(4) RPBA makes it clear that new claims, even if filed together with the notice of appeal, are unlikely to be considered if they ought to have been presented in the first-instance proceedings (T 339/06). [8.1] Auxiliary Request 1 is, due to the deletion of the feature “non-fibrous”, even broader than the main request. The claims of Auxiliary Requests 2 and 3 contain the feature “30% w/w of starch”, Claim 1 of the latter request being identical to Claim 3 of the (main) request which the [patent proprietor] had withdrawn in reaction to the negative opinion of the OD regarding that feature’s compliance with A 123(2). By withdrawing any claim containing that feature and refusing to file any amended and/or auxiliary requests, the [patent proprietor] prevented the OD from giving a reasoned decision on that issue. Thus, if the [patent proprietor] had intended to pursue it, it ought not to have withdrawn all claims containing that feature from the proceedings (cf. T 933/04). [8.2] As mentioned earlier, in opposition proceedings a proprietor is free to refrain at any time from filing further requests, and may then file different (new) requests in the appeal proceedings. However, contrary to what the [patent proprietor] suggested, this does not mean that these new requests then have to be admitted into the proceedings as of right. Rather, the admissibility of a request first submitted in appeal proceedings and relating to an independent claim which, although within the scope of the opposition, had not been considered in the firstinstance decision has to be decided in the light of whether it could have been submitted earlier (T 339/06). [8.3] According to the [patent proprietor], the reason for not already submitting these or similar requests in the opposition proceedings was its incorrect assumption as to the procedural consequences of not doing so. No objective reason preventing the [patent proprietor] from following the invitation by the OD has been put forward or is apparent to the board, in particular in respect of Auxiliary Request 3 which is identical to a request withdrawn in reaction to the negative (preliminary) ruling of the OD on compliance with A 123(2). The [patent proprietor’s] purported view that any new requests submitted to the opposition had no reasonable chance of success was mere speculation. [8.4] For these reasons, the board, in due exercise of its discretionary powers, has decided not to admit Auxiliary Requests 1 - 3 into the proceedings. [9] As there were no further requests, the procedural situation is the same as that prevailing at the end of the opposition proceedings, namely that there is no text of the patent in suit which meets the requirements of A 113(2). This is quite consistent with the recent decisions invoking Article 12(4) RPBA, which we have seen in earlier posts (e.g. here). Made me think of a Leonard Cohen song: “… I’ve seen the future, brother. It is murder. …” :-) Should you wish to download the whole decision, just click here. The file wrapper can be found here. 2110 | 3398
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K’s Law – The ebook
NB: The decision is also commented here.
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T 1634/06 – Improve Your Figure
K’s Law – The ebook
T 1634/06 – Improve Your Figure 29 Jun 2011
Auxiliary requests normally consist of amended claims. The present case is noteworthy because there were auxiliary requests that consisted in amendments to the drawings. Here the applicant appealed against the decision of the Examining Division to refuse its application for lack of inventive step. Claim 1 before the Board read: A method for use in an interactive television program guide implemented on user television equipment (22) for displaying programs and associated program data, the method characterised by: storing on a digital storage device programs and program data that is associated with the programs using the interactive television program guide; maintaining on the digital storage device a directory of the program data for the stored programs using the interactive television program guide, and providing to the user a list of selectable options, wherein a first selectable option is provided for allowing the user to access information for at least one broadcast television program and at least one recorded program stored on the digital storage device, and wherein a second selectable option is provided for allowing the user to access a list of currently stored programs from the directory. During the appeal proceedings, on January 26, 2007, the applicant filed a new figure 5b
to replace figure 5b then on file:
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In an annex to the summons to oral proceedings (OPs), the Board indicated that the new figure might be objectionable under A 123(2). The applicant then filed claims according to a new main request, a new figure 5b (“Auxiliary request #1”) and figure 5b as originally filed (“Auxiliary request #2”).
During the OPs, the applicant filed claims 1 to 8 and withdrew all previous requests. Its final requests were that the decision under appeal be set aside and a patent granted on the basis of claims 1 to 8 filed in the OPs before the board with the description and drawings on which the decision under appeal was based, except for figure 5b, which according to the main request should be that filed with the letter dated January 26, 2007. As a first auxiliary request only figure 5b of the main request should be replaced by figure 5b filed as “Auxiliary Request #1” with the letter dated 4 February 2011. As a second auxiliary request only figure 5b of the main request should be replaced by figure 5b as originally filed. The Board found the main request to lack inventive step. When coming to this conclusion, the Board made an interesting statement on converging fields of technology: [2.1.2] [T]he invention concerns both television technology - in particular television program guides which allow digital storage of information - and computer and computer-interface technology. In this context the board takes the view that it was well known, before the priority date of the present application, that these two areas of technology were converging. Therefore, the common general knowledge of a person skilled in the art of television program guides included common general knowledge of computers and computer interfaces in so far as it related to television technology and television program guides. This is indeed a (novel ?) alternative to construing teams of skilled persons. 2113 | 3398
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The Board also made the following comments on the auxiliary requests: [3.1] The interpretation of claim 1 is not dependent on the content of the respective version of figure 5b. In the present case, the different presentation of the program listings grid does not change the meaning of the selectable options as claimed and is merely a matter of allowability of the respective amendment made. Hence the above analysis concerning inventive step is not dependent on the particular version of figure 5b which is part of the documents forming the basis on which grant of a patent is requested. This has also been acknowledged by the appellant. From this it follows that the first and second auxiliary requests are not allowable because of lack of inventive step of the claimed subject-matter. [3.2] Under these circumstances there is no need for a decision on whether the inclusion of figure 5b according to the main request and the first auxiliary request respectively meets the requirements of A 123(2). To read the whole decision, click here. The file wrapper can be found here.
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T 2003/07 – Two In One, Clarity Gone
K’s Law – The ebook
T 2003/07 – Two In One, Clarity Gone 28 Jun 2011
When amending claims in order to overcome prior art objections raised in opposition proceedings, one has to be careful, in particular when the claim as amended is intended to cover several distinct embodiments. It may then be preferable to have several independent claims rather than trying to find an all-encompassing claim 1. Otherwise, one might end up with unclear claims, and it will not be sufficient to insist on a particular interpretation of the claim terms to overcome clarity objections. The present appeal was filed by the opponent after the Opposition Division (OD) had maintained the opposed patent in amended form. Claim 1 before the Board read: 1. A door inner panel assembly (10) including a door inner panel (12) formed from a sheet material and a window regulator drive means, the window regulator drive means having a drive portion and an output shaft (32) projecting from the drive portion, the inner panel having an abutment portion (26) for cooperation with the drive portion and a shaft support portion for co-operation with a portion of the shaft remote from the drive portion to support the shaft, the abutment portion and shaft support portion being integrally formed from the same sheet material and further including a window regulator drum (44) secured on the shaft and positioned between the drive portion and the shaft support portion in which the door inner panel comprises a door inner skin connected to a door outer skin. The opponent pointed out that the amendment (the addition of the underlined part) made the claims unclear. The patent proprietor argued that there were two ways in which auxiliary components could be fixed to car doors. They could either be attached to a module plate (paragraph 5 of page 2) or placed in cavities of an integral pressing (“door inner skin”; paragraph 6 of page 2). The description from the final paragraph of page 2 onwards was applicable to both types of arrangement. Whilst the claims as granted covered both module plates and door inner skins, the amended claims were restricted to embodiments incorporating a door inner skin. It was clear that the term “comprise” had the narrow meaning of “consist in”, i.e. that the door inner panel was a door inner skin. [2.1] In order to overcome an objection of lack of novelty of the subject-matter of claim 1 as granted the claims were amended in the course of the oral proceedings before the OD. The amendment consists in the introduction of the following feature taken from […] the originally filed application documents: “in which the door inner panel comprises a door inner skin connected to a door outer skin” (hereinafter called feature i)). [2.2] In their response to the statement of the [opponent] setting out the grounds of appeal, the [patent proprietor] contended that the word “comprises” in feature i) should be construed narrowly and simply meant that the door inner panel is the door inner skin itself […]. [2.3] Questioned by the Board the [patent proprietor] confirmed that the present wording of claim 1 was intended to relate to two arrangements. In the first, the door inner skin is connected to the door outer skin and then the window regulator drive means and window regulator drum are mounted on the door inner skin using the integrally formed abutment portion and shaft support portion. They argued that after this had been done there resulted a “door inner panel assembly” within the terms of the claim. In the second arrangement the door inner skin, window regulator drive means and window regulator drum were pre-assembled before the door inner skin was connected to the door outer skin. On the other hand the amendment was intended to exclude an arrangement deemed by the OD to belong to the state of the art, in which the window regulator drive means and the window regulator drum were pre-assembled
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on an inner panel which was then mounted on a door inner skin to close a substantially sized opening in the latter. [2.4] In the view of the Board these intentions cannot be effectively served by the amendment made to claim 1 in a manner which is consistent with the requirements of clarity (A 84). The first problem resides in the reference to a “door inner skin connected to a door outer skin” (emphasis added). With respect to the second alternative which the claim is intended to cover as described above it might, with some latitude, be possible to interpret this requirement in the sense that the door inner is to be connected to the door outer skin, in other words as a sort of confirmatory statement as to the nature and character of a “door inner skin”. However, with respect to the first alternative described above this is not possible and the contentious term can only be understood a meaning that the door inner skin has actually been connected to the door outer skin, since it is only in this state, after the addition of the further components involved, that any form of “assembly” as required by the claim is created. But this has the consequence that the claim is not longer directed to a “door inner panel assembly” as stated but in effect to a door including such an assembly, and is thus inherently unclear. The second problem stems from the use of the word “comprises” in feature i). Certainly, one possible interpretation of this is the one proposed by the [patent proprietor], namely that the door inner panel is constituted by the door inner skin alone. The claim itself does not however contain anything which would make this restricted reading of “comprises” obligatory. Indeed, constructions can be readily envisaged in which a door inner panel assembly comprises a pre-assembled door inner skin and mounting plate which supports further ancillary equipment. Thus this feature is also unclear, particularly as its intended function of distinguishing the claimed subject-matter from the most relevant state of the art is not achieved. [2.5] Given that the amendment in question was freely chosen by the [patent proprietor] in the course of these opposition proceedings, the Board is of the opinion that is should be clear in its own right, without any undue recourse to the description to interpret it. However, even if that view of the legal situation were incorrect, the Board notes that there is nothing in the description that could assist in overcoming the lacks of clarity identified above. The reason for this lies in the fact that the feature added to the amended claim is based solely on a substantially coterminous passage of the particular description, the rest of which is concerned with a specific embodiment no longer intended to be covered by the claims. […] The patent is revoked. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 282/09 – The Hidden One
K’s Law – The ebook
T 282/09 – The Hidden One 27 Jun 2011
This appeal was filed against the decision of the Opposition Division to revoke the opposed patent for lack of inventive step. Claim 1 of the patent as granted read: 1. A structured matrix in the form of a structure foil or a press plate for the manufacture of a decorative thermosetting laminate (21), which laminate (21) includes a decor paper in the form of a web or a sheet (11 and 1 respectively), provided with a decor pattern having pattern sections with different directions, characterised in that the matrix (12 and 2 respectively), is provided with a number of surface-structure sections being structurally independent from each other and coinciding at least mainly but preferably completely with corresponding decor sections of the decor paper (1, 11) of the decorative thermosetting laminate (21), which décor paper (1, 11) has positioning means (3) such as colour dots, holes, code lines, indentations or the like, that said positioning means (3) are placed in a predetermined relation to the direction variations of the décor pattern and that these positioning means (3) in the décor paper (1, 11) are used for properly positioning the matrix toward the décor paper (1, 11) thereby achieving above desired match between the décor pattern and the surface structure. Claim 1 of the main request before the Board read: 1. A use of a structured matrix in the form of a structure foil or a press plate in the manufacture of a decorative thermosetting laminate (21), which laminate (21) includes a decor paper in the form of a web or a sheet (11 and 1 respectively), provided with a decor pattern having pattern sections with different directions, wherein the matrix (12 and 2 respectively), is provided with a number of surface-structure sections being structurally independent from each other and coinciding at least mainly but preferably completely with corresponding decor sections of the decor paper (1, 11) of the decorative thermosetting laminate (21), which décor paper (1, 11) has positioning means (3) such as colour dots, holes, code lines, indentations or the like, said positioning means (3) are placed in a predetermined relation to the direction variations of the décor pattern and that these positioning means (3) in the décor paper (1, 11) are used for properly positioning the matrix toward the décor paper (1, 11) thereby achieving above desired match between the décor pattern and the surface structure and thereby getting a decor surface with a surface structure, the different directions of which corresponds with the directions of the different pattern sections of the decor pattern. The Board finds this request not to comply with A 123: [2.1] The patent as granted comprised a sole independent product claim directed to a structured matrix in the form of a structure foil or press plate, together with dependent claims directed to preferred embodiments of the structured matrix of claim 1. The claims of the main request as amended now comprise only use claims, which have replaced the product claims. These use claims, namely independent claim 1 and dependent claims 2 to 5, are directed to the “use of a structured matrix ... in the manufacture of a decorative thermosetting laminate”. [2.2] In the present case, product claim 1 of the patent in suit as granted, i.e. before amendment to the use claims, confers absolute protection to the claimed matrix, that is to say, for the particular matrix and for all its uses. [2.3] However, according to EPO practice (see, for instance decision T 401/95 [4.3.2]) a claim directed to “the use of a physical entity to produce a product” is to be considered as a process claim comprising physical steps for producing the product using the physical entity, with the consequence that this type of use claim is a process claim within the meaning of A 64(2). Pursuant to that article of the EPC, the product, insofar as it is directly obtained by that process, is also protected. Hence, the product, when obtained by that process for producing the product, is within the scope of protection conferred by that type of use claim (see decision G 2/88 [5.1]).
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T 282/09 – The Hidden One
K’s Law – The ebook
In the present case, use claim 1 comprises the physical step of manufacturing a decorative thermosetting laminate. Thus, use claim 1 confers protection on the claimed use of the particular structured matrix and, additionally, pursuant to A 64(2), to the decorative thermosetting laminate obtained by the manufacturing process. [2.4] When comparing the protection conferred by the granted claims […] with the protection conferred by the amended claims […], it is clear that the protection conferred after amendment extends beyond that conferred before, contrary to the requirements of A 123(3), because the decorative thermosetting laminate obtained using the structured matrix was not protected before the amendment of the claims, but is now protected as a result of the amendment. [2.5] Consequently, the change of category from the product claim as granted to the use claim as amended, in the present case, extends the protection conferred. The subject-matter of claim 1 of the main request thus offends against A 123(3) and the main request is not allowable. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 646/07 – A Sense Of Purpose
K’s Law – The ebook
T 646/07 – A Sense Of Purpose 25 Jun 2011
Both the patent proprietor and the opponent filed an appeal after the Opposition Division (OD) had maintained the opposed patent based on the fifth auxiliary request. Claim 22 of the patent as granted read: 22. An apparatus for packaging a substrate, said apparatus comprising: a substrate having a first surface (110) and a second surface (120), said first surface comprising a probe array; a body having a mounting surface with a fluid cavity, said second surface attached to said cavity; and a cover attached to said mounting surface for sealing said cavity; wherein said cavity comprises an inlet port and an outlet port, said inlet and outlet ports permitting fluids to circulate into and through said cavity. (my emphasis) In what follows the Board deals with the novelty of this claim. [3] The OD found that the devices depicted in Figure 8a of document D1, Figure 11 of document D2 and Figure 3 of document D4 comprised all the individual elements of the apparatus defined in claim 22 as granted, and that, consequently, the subject-matter of this claim lacked novelty. [4] The board does not share the view of the OD. While it is true that each of the structural elements of the apparatus specified in claim 22 (i.e. a substrate, a body and a cover) is present in the devices described in documents D1, D2 and D4, the board notes that, in its reasoning for the finding of lack of novelty in respect of the subject-matter of claim 22, the OD failed to take into account the feature “for packaging a substrate” characterising the claimed apparatus. In the board’s view, this feature introduces a limitation concerning the purpose of the claimed apparatus which distinguishes it from the devices known in the art at the relevant date. [5] According to the jurisprudence of the Boards of Appeal (see T 523/89 as well as further decisions cited in “Case Law of the Boards of Appeal of the EPO”, chapter I.C.5.3.3), a statement of purpose made in a claim in respect of a product is to be interpreted as meaning that the claimed product is suitable for the stated purpose. Thus, a product known in the art at the relevant date having all the structural features specified in the claim at issue and being suitable for the same purpose as the claimed product, is considered to destroy novelty. [6] Applying the principles established by the Boards of Appeal to the present case, the feature “for packaging a substrate” in respect of the apparatus of claim 22 must be construed as meaning “suitable for packaging a substrate”. While neither appellant disagreed with this interpretation, two issues were subject of dispute between the parties: (a) what the expression “for packaging” means, and (b) whether or not the devices depicted in documents D1, D2 and D4 can be regarded as suitable for packaging a substrate. Meaning of the expression “for packaging” [7] Since the feature “for packaging a substrate” is not expressly defined in the patent specification - a circumstance that [the patent proprietor] did not deny -, it was argued by [the opponent] that, when assessing novelty of the claimed apparatus, the expression “for packaging” should be given its broadest meaning. This is, in fact, the approach consistently taken by the Boards of Appeal, though with the reservation that the chosen meaning not only must make sense from the technical point of view in the context of the claimed invention, but also must not be in contradiction with the description and the drawings. [8] Generally, the verb “to package” has the following meanings: (i) to make or put into a package; (ii) to design and manufacture a package for a product or series of related products; 2119 | 3398
T 646/07 – A Sense Of Purpose
K’s Law – The ebook
(iii) to group or combine (a series of related parts) into a single unit; (iv) to combine the various elements of (a tour, entertainment, etc.) for sale as a unit. [package. Dictionary.com. Dictionary.com Unabridged (v 1.1). http://dictionary.reference.com/browse/package (accessed: July 30, 2009)]
Random
House,
Inc.
In the same reference dictionary, the noun “package” is similarly defined as “a finished product contained in a unit that is suitable for immediate installation and operation, as a power or heating unit”. [9] Among the meanings of the verb “to package” quoted above, the board regards the meaning under (iii) (“to group or combine (a series of related parts) into a single unit”) as the broadest meaning which also makes technical sense in the context of the present invention. Accordingly, the feature “for packaging a substrate” in claim 22 is interpreted as meaning that the claimed apparatus is suitable for combining a substrate with a body and a cover to form a unit, this unit being suitable for immediate installation and operation. This interpretation is in line with the statements in the description and the drawings of the patent in suit […]. [10] In spite of the fact that the wording of claim 22 appears, at first sight, unclear due to the use of the term “apparatus”, having regard to the patent specification as a whole the board is persuaded that, what is actually claimed in claim 22 is a self-contained unit, i.e. a “cartridge-like” unit containing the substrate, as maintained by [the patent proprietor]. Suitability of the devices in documents D1, D2 and D4 for packaging a substrate [11] A further question to be decided with respect to the issue of novelty vis-à-vis documents D1, D2 and D4 is whether or not the devices depicted in these documents are apparatuses suitable for packaging a substrate within the meaning of claim 22, i.e. self-contained, “cartridge-like” units comprising a body and a substrate. [12] The board is not persuaded that this is the case. There is no clear indication in any of the documents cited by [the opponent] that the body and the substrate may form a “cartridge-like” unit. Rather, the figures on which [the opponent] relies seem to show a flow cell to which a substrate has been attached temporarily. [13] This is particularly apparent from the passage on page 50 of document D2 in which the apparatus depicted in Figure 11 of the same document is described. It is stated in this passage that “[T]the present invention provides a new use for an apparatus comprising a reaction chamber and a scanning apparatus which can scan a substrate material exposed to the chamber.
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T 646/07 – A Sense Of Purpose
K’s Law – The ebook
Figure 11 illustrates a system and a schematized reaction chamber to which is attached a silicon or glass substrate” [104] ([…] emphasis added by the board). In the board's view, the substrate is not described in this passage as an integral part of the apparatus, but rather as a separate item which needs to be attached to the reaction chamber [106] for operation. [14] Similarly, in the reactor system [100] illustrated in Figure 8A of document D1, which includes a body [102] with a cavity [104], in order for the desired polymers to be synthesized on a prepared substrate [112], the substrate has to be mounted above the cavity of the reactor system [100] […].
Similar statements are found [in] document D4.
Device disclosed in D4. 402 refers to a flow cell, 406 to a substrate. [15] In view of the above, the board concludes that none of documents D1, D2 and D4 describes an apparatus for packaging a substrate as defined in claim 22. Thus, novelty of the claimed apparatus vis-à-vis these documents is acknowledged. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1044/08 – Together We Fall
K’s Law – The ebook
T 1044/08 – Together We Fall 24 Jun 2011
In this case the opponent filed an appeal against the decision of the Opposition Division (OD) to reject the opposition. The opposition had been based on the grounds of lack of novelty, lack of inventive step as well as insufficiency of disclosure. The notice of opposition explained that independent claim 1 and all dependent claims 2 to 22 were lacking inventive step … and that dependent claim 15 (depending on claim 1 only) also lacked novelty. Claim 15 read: The coating composition of claim 1 further containing high-boiling organic liquid and said high-boiling organic liquid is an oxohydroxy liquid selected from the group consisting of tri- and tetraethylene glycol, di- and tripropylene glycol, the monomethyl, dimethyl, and ethyl ethers of these glycols, liquid polypropylene glycols, diacetone alcohol, the low molecular weight ethers of diethylene glycol and mixtures of the foregoing. As claim 1 had not been attacked on the ground of novelty, the OD concluded that claim 1 was novel.
In its notice of appeal, the opponent contested this formal approach and pointed out that the novelty attack against claim 15 encompassed claim 1. The patent proprietor argued that this was a new ground as far as claim 1 was concerned and that it refused its consent to treat this ground. The Board does not share this view: [2.1] The [opponent] argued that the ground for opposition under A 100(a) in combination with A 54 had been substantiated as required in R 55(c) EPC 1973, now R 76(2)(c), within the time limit prescribed in then applicable A 99(1) EPC 1973. In support of this position the [opponent] referred to page 16 of the notice of appeal filed on 29 September 2005. The [opponent] submitted further that the novelty objection to claim 1 raised in the statement setting out the grounds of appeal was based on facts and arguments which had been set out in the cited passage of the notice of opposition. The [patent proprietor] maintained that the ground for opposition under A 100(a) in combination with A 54 should be disregarded since the opponent, in his notice of appeal, had merely objected to dependent claim 15 lacking novelty. Since novelty of an independent claim had not been in dispute during opposition proceedings, that ground for opposition had not formed part of the legal framework of those proceedings. The objection under A 100(a) in combination with A 54 against claim 1 had to be considered a fresh ground for opposition. As the patentee, he did not agree to its introduction at the appeal stage. [2.2] Hence, it has to be examined whether or not the objection of lack of novelty against claim 1 was substantiated in the statement setting out the grounds of opposition which, therefore, did not require the consent of the patentee to examine it in the appeal proceedings. As to the required substantiation of the ground(s) of opposition, the function of R 55(c) EPC 1973 (now R 76(2)(c)) is, inter alia, to establish the legal and factual framework within which the substantive examination of 2122 | 3398
T 1044/08 – Together We Fall
K’s Law – The ebook
the opposition is in principle to be conducted, thereby giving the patentee a fair chance to consider his position at an early stage of the proceedings (see G 9/91). Therefore, according to established case law, an objection raised in opposition must be substantiated in the notice of opposition in such a way that the facts and arguments are sufficient for the EPO and the patent proprietor to understand the case against the patent without further investigation (T 2/89 [3]). In decision T 222/85 [4], the board held that the requirement in R 55(c) was only satisfied if the contents of the notice of opposition were sufficient for the opponent’s case to be properly understood on an objective basis, from the point of view of a reasonably skilled man in the art to which the opposed patent related. [2.3] Regarding the extent to which the European patent is opposed, the [opponent] on page 1 of the notice of opposition as well as on page 2 of Form 2300, both filed on 29 September 2005, requested revocation the patent in its entirety. The grounds for opposition were indicated on page 1 of the notice of opposition as well as on page 2 of Form 2300 as being A 100(a) in combination with A 54 (lack of novelty) and A 56 (lack of inventive step), as well as A 100(b). [2.4] The issue of novelty was explicitly addressed on page 16 in the context of dependent claim 15. In this passage it is stated that example 1 of document D5 had disclosed all the features of claim 1 of the patent in suit with the exception of the presence of a low-boiling organic liquid. The [opponent] further argued that, since silanes undergo hydrolysis, low-boiling organic liquids like methanol and ethanol are formed that remain in the composition. Thus, due to hydrolysis of 3-glycidyloxypropyltrimethoxysilane (GLYMO) mentioned in example 1 of document D5, methanol and GLYMO were both present in the composition. As a consequence, the coating composition according to example 1 of document D5 contained more than 1 weight percent of a low-boiling organic liquid as required. [2.5] As the [opponent] appropriately pointed out, the novelty objection to claim 1 raised in the statement setting out the grounds of appeal was based on the facts and arguments set out on page 16 of the notice of opposition summarised in the previous paragraph. Although the presentation of the objection under A 100(a) in combination with A 54 in the context of dependent claim 15 was not straightforward, the skilled reader, giving full consideration to the explicit reference to example 1 of document D5 and the arguments regarding hydrolysis of silanes, was able to recognise and understand the gist of the attack on the patent under said ground of opposition which included the subject-matter of claim 1. Inferring from page 16 of the notice of opposition that the opponent had acknowledged novelty of claim 1 and merely objected to dependent claim 15 is not an objective assessment of the [opponent’s] submissions. Therefore, the board is of the opinion that, in so far as the ground for opposition under A 100(a) in combination with A 54 is concerned, the opponent’s submissions were sufficient for the OD and the patent proprietor to understand the [opponent’s] case without further investigation. [2.6] It follows that in the present case the ground for opposition under A 100(a) in combination with A 54 was substantiated as required by R 55(c) EPC 1973 (now R 76(2)(c)) and did not constitute a fresh ground for opposition. Therefore, its consideration by the board of appeal did not require the [patent proprietor’s] approval (see decision G 10/91). The Board finally found claim 1 to be novel but to lack inventive step. The patent was revoked. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 494/07 – A 64 Billiards
K’s Law – The ebook
T 494/07 – A 64 Billiards 23 Jun 2011
This decision is in no way spectacular but it deals with a rather unexpected use of A 64 and contains some other noteworthy statements. The applicant filed an appeal after the Examining Division (ED) had refused its application. Claims 1 and 20 to 22 read as follows: 1. A method of classifying an item of currency (2) using a currency tester (50), the method comprising sensing variable characteristics of a currency item (2) and deriving a data vector (X) using values of the sensed characteristics, characterised by transforming the data vector so that the variables represented by at least first and second sets of components (Y1, Y2) of the transformed vector are substantially independent, so that the mahalanobis distance of X is substantially equivalent to the sum of the mahalanobis distances of the components (YI, Y2), and calculating a mahalanobis distance in at least two parts using said first and second sets of components. 20. A method of programming a currency tester (50) comprising storing data for executing a method as claimed in any preceding claim in a currency tester. 21. A method as claimed in claim 20 comprising deriving an acceptance threshold for a currency item using a Hotelling test. 22. A currency tester comprising means for executing a method as claimed in any one of claims 1 to 19. The ED gave the following reasons for the refusal:
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T 494/07 – A 64 Billiards
K’s Law – The ebook
The applicant argued that claims 20 and 21 related to a method of programming a currency tester rather than to a program for computers and were therefore not excluded from patentability. Claim 22 referred to method claims 1 to 19 in a “short format” which was regarded to be clear in the decision T 410/96 of the boards of appeal. Furthermore, the language regarding the claim dependencies in claim 22 was conventional and clear. Refund of the appeal fee was requested because the decision T 410/96 was not followed even though the relevant facts were the same, which amounted to a substantial procedural violation. Unsurprisingly, the Board smashes the A 52 argument, but it also has something to say on the claim drafting and the alleged procedural violation. NB: All legal provisions refer to the EPC 1973. Patentable inventions (A 52) [2] According to A 52(1), European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application. Patent protection is thus available for technical inventions of all kinds. The term “invention” in A 52(1) is therefore to be construed as “subject-matter having technical character” (see Case Law of the Boards of Appeal of the EPO, 6th edition, section I.A.1.1). Claim 20 relates to a method of programming a currency tester. The claimed method therefore involves technical means, namely a currency tester, and is therefore regarded to have technical character (see the decision T 258/03 [4]). In particular, the claimed method involves the step of storing data in a currency tester, with the effect that the data are in fact stored in the currency tester once the step has been carried out. This is to be contrasted to a sequence of computer-executable instructions, i.e. a computer program, which merely have the potential of achieving an effect when loaded into and executed by a computer. Thus, the claim category of the claimed method is distinguished from that of a computer program.
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T 494/07 – A 64 Billiards
K’s Law – The ebook
The question whether A 64(2) should be taken into consideration when assessing whether the claimed subjectmatter is an invention in the sense of A 52(1) does not appear relevant as the result of performing the method of claim 20 is not a computer program but a programmed currency tester, which is a technical device. Claim 21 is dependent on claim 20 and as such includes all features of claim 20, so that the comments above also apply to that claim. The method defined in claim 21 is therefore also considered as an invention within the meaning of A 52(1). Therefore the board considers the method defined in claims 20 and 21 as an invention within the meaning of A 52(1). Clarity (A 84) [3] The features of the independent apparatus claim 22 are defined by reference to method claims 1-19 (see T 410/96 [7 to 11]). It might be argued that claim 22 allows different interpretations, namely on the one hand that a single means carries out all steps and on the other hand that respective means are provided. This is however also the case for a claim directed to an apparatus and including as features explicit “means for” carrying out each of the specified steps, as such a formulation does not exclude the possibility that it is in fact the same means which carry out several or all steps. The above-mentioned possibility of different interpretations is therefore regarded to be a sign of adequate scope of protection rather than indicating a lack of clarity. The manner in which the reference to claims 1-19 is formulated is also regarded to be adequate as shorthand for 19 separate references to claims 1-19, respectively. Therefore the board considers claim 22 to be clear. Remittal to the department of first instance (A 111(1)) [4] The board notes that the novelty and inventive step of the subject-matter of claims 20 and 22 depend on the novelty and inventive step of the subject-matter of claims 1-19. The ED has indicated in the appealed decision as obiter dictum that claims 1-19 seemed to fulfil the requirements of the EPC. However, the board has doubts regarding inventive step of the subject-matter of claim 1 in view of document D1 (EP 0 924 658 A2), specifically paragraph [0057]. In order to preserve the right of the appellant to argue before two instances, the board considers it therefore appropriate under these circumstances to remit the case to the department of first instance for further prosecution, as requested by the appellant. Reimbursement of the appeal fee (R 67) [5] A 111(2) states that the department whose decision was appealed is bound by the ratio decidendi of the Board of Appeal, if the Board of Appeal remits the case for further prosecution to that department. However, the strict legal obligation to follow the ratio decidendi of a decision of a board is limited to the same application and the same instance whose decision has been contested in the appeal, but does not extend to other applications (or even to other instances in the same application). This is so even if the subject-matter of the two applications is highly similar (see J 27/94 [3]). At most, it can only be regarded as an error of judgement if two apparently similar case constellations are decided differently. Not following T 410/96 does therefore not constitute a substantial procedural violation within the meaning of R 67 and reimbursement of the appeal fee is not justified. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 1644/08 – Hindsight Anticipation
K’s Law – The ebook
T 1644/08 – Hindsight Anticipation 22 Jun 2011
Although there is only one A 54, there are indeed several concepts of novelty, depending on the technical field that is considered. The present decision shows that biotech has its particularities. The present appeal was filed by the opponent after the Opposition Division had rejected its opposition. Independent claims 1 and 10 of the main request before the Board read: 1. A DNA construct comprising a DNA sequence encoding an enzyme exhibiting endoglucanase activity, which DNA sequence comprises a) the DNA sequence shown in SEQ ID No. 8, or the DNA sequence obtainable from the plasmid in Saccharomyces cerevisiae DSM 10081, or b) an analogue of the DNA sequence shown in SEQ ID No. 8 or the DNA sequence obtainable from the plasmid in Saccharomyces cerevisiae DSM 10081, which i) has at least 90% identity with the coding region of the DNA sequence shown in SEQ ID No. 8 or the DNA sequence obtainable from the plasmid in Saccharomyces cerevisiae DSM 10081, or ii) encodes a polypeptide which has at least 90% identity with the polypeptide encoded by a DNA sequence comprising the DNA sequence shown in SEQ ID No. 8 or the DNA sequence obtainable from the plasmid in Saccharomyces cerevisiae DSM 10081. 10. An enzyme exhibiting endoglucanase activity, which enzyme is a) encoded by a DNA construct according to any of claims 1-4, or b) at least 90% identical to the amino acid sequence shown in SEQ ID No. 9. Having found this request to be admissible and to comply with A 123 and A 84, the Board deals with the novelty objections raised by the opponent: [10] Document D1 discloses the cDNA sequences encoding the (~ 43 kD) endoglucanases from Humicola insolens DSM 1800 and from Fusarium oxysporum DSM 2672 as well as the amino acid sequences of both enzymes […]. Document D1 defines a homologue of these enzymes as “… a polypeptide encoded by DNA which hybridizes to the same probe as the DNA coding for the endoglucanase enzyme with this amino acid sequence (of the appended Sequence Listing) under certain specified conditions …” […]. In Example 2, it is stated that for screening a cDNA library from Humicola insolens and for cloning a cDNA encoding the endoglucanase “(t)he oligonucleotide probes were made on the basis of amino acid sequences of tryptic fragments of the purified ~ 43 kD endoglucanase” and several probes are disclosed in Table 1 of document D1 […]. Homologous endoglucanases derived from other microorganisms producing cellulolytic enzymes are also contemplated and a list of possible microorganisms is explicitly given in document D1 […]. [11] It is not contested that the specific sequences of the endoglucanases disclosed in document D1 do not fall within the scope of the claims of the main request and that the homologues referred to in that document are disclosed only in a generic form without providing any particular examples thereof. Moreover, there is no mention of Thielavia, let alone of Thielavia terrestris NRRL 8126, as a possible source for cloning these homologous endoglucanases in the list of microorganisms disclosed in document D1. [12] Nevertheless, the [opponent] argues that, in view of the high (~70%) degree of identity between the enzymes of document D1 and the endoglucanase from Thielavia terrestris NRRL 8126, their amino acid sequences share long stretches of identity […] and probes based on these identity regions will hybridize with a DNA sequence encoding the endoglucanase from Thielavia terrestris NRRL 8126 and with DNA sequences encoding these endoglucanases of document D1. Therefore, the former enzyme falls within the definition of homologues given in document D1 and, in line with decision T 1120/00, these homologues anticipate the endoglucanase of the patent-in-suit […].
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T 1644/08 – Hindsight Anticipation
K’s Law – The ebook
[13] The board does not share this view. The presence of stretches of identity between the amino acid sequences of the endoglucanases - and the DNA sequences encoding them - disclosed in document D1 and in the patent-insuit is not contested. However, the determination of these stretches and the selection of specific oligonucleotide probes within these regions, i.e. the common probes, require hindsight based on the knowledge of the patent-insuit, namely the amino acid and nucleotide sequences disclosed therein. This is all the more so since, to arrive at subject-matter falling within the scope of the claims - starting from the disclosure of document D1, common probes have to be used in the screening of a cDNA library from Thielavia, and more particularly from the strain used in the patent-in-suit - Thielavia terrestris NRRL 8126, none of them being mentioned in document D1. Thus, the board considers the [opponent’s] arguments, which might be of importance for assessing inventive step, lack of relevance for the assessment of the novelty of the subject-matter claimed in the main request. [14] Whereas the subject-matter of the main request is directed to the specific amino acid and DNA sequences derived from Thielavia terrestris NRRL 8126 and to an intermediate generalization, namely a limited group of related sequences having at least 90% identity to these specific sequences, the homologues referred to in document D1 represent a broad generalization of the specific sequences disclosed in that document since both the (shared) probe and the hybridization conditions are only broadly defined […]. This situation is completely different from that underlying decision T 1120/00, wherein the claims then under consideration and the disclosure of a prior art document contemplated comparable levels of generalization, in particular, a broad generalization defined in similar terms (“substantially homologous”). In the board's view, an essential message that this decision seeks to convey is that the same standard must be applied to the disclosure of a patent or a patent application and to that of the prior art (cf. T 1120/00 [15]). In the present case, the intermediate generalization (limited group of related sequences) represents a fair and reasonable extension of the specific sequences disclosed in the patent-in-suit which cannot be compared to the broad generalization made in document D1. This limited group of related sequences is not seen as being clearly, directly and unambiguously anticipated by the broad generalization of document D1. [15] The main request is thus considered to fulfil the requirements of A 54. The main request also complied with the requirements of A 56; the patent was maintained on this basis. Should you wish to download the whole decision, just click here. The file wrapper can be found here. Another decision on novelty in the biotech realm can be found here.
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T 1421/05 – No, But Yes
K’s Law – The ebook
T 1421/05 – No, But Yes 21 Jun 2011
This decision also has an interesting passage on a point related to the res judicata doctrine. Claim 1 of the patent as granted (priority date: February 13, 1990) read: A single cell-edible oil characterized in that docosahexaenoic acid (DHA) makes up at least 15% of the oil by weight, preferably at least 20%, more preferably at least 30% and most preferably at least 35%. The patent was revoked by the Opposition Division (OD) on October 12, 2000, for lack of novelty over document D4. The patent proprietor appealed (this appeal is referred to in the present decision as “the First Appeal”) and filed several requests. Claim 1 of the first auxiliary request read: A single cell-edible oil wherein docosahexaenoic acid (DHA) makes up at least 35% of the oil by weight, said oil being directly obtainable from a unicellular organism by hexane extraction. (my emphasis) In its decision T 1091/00 (July 2, 2002) the Board rejected the main request but held that the introduction of the word “directly” into claim 1 of the first auxiliary request did not violate A 123 and that the claims were novel. The Board also stated that the rejection of the main request as well as the findings in relation to the first auxiliary request under A 123, A 83 and A 54 were res iudicata. It remitted the case to the OD for further prosecution. Before the OD, opponent II argued that the claim lacked inventive step and also raised a lack of clarity (A 84) objection. In its decision of August 4, 2005, the OD found the new main request (identical to the first auxiliary request before the Board in T 1091/00) to be allowable. The OD did not admit the clarity objection because it held that the Board in T 1091/00 had implicitly decided on clarity – otherwise it could not have taken a decision on novelty. Opponent II filed an appeal. We have seen in the preceding post that the Board found this appeal to be admissible. The Board then deals with the objection under A 84. Is this a case of res judicata or isn’t it? [9] Claim 1 of the patent as granted read: “A single cell-edible oil characterized in that docosahexaenoic acid (DHA) makes up at least 5% of the oil by weight, preferably at least 208, more preferably at least 30% and most preferably at least 35%.” [10] In the First Appeal, the main request of the proprietor, as filed during the oral proceedings (OPs), was for maintenance of the patent in amended form, whereby inter alia the oil was now defined as being “obtainable from a unicellular organism by hexane extraction” and wherein the DHA content was restricted to a value of “at least 35%”. As a first auxiliary request, also filed during the OPs, the word “directly” was introduced into Claim 1 before the term “obtainable”. [10.1] The decision of the Board in the First Appeal […] records that the opponent contested the admissibility of the newly filed sets of claims under A 123(2), inter alia as regards the introduction of word “directly” into the first auxiliary request. As to novelty, it argued that the term “being obtainable by hexane extraction” was not a restriction on the claimed oil, so that any prior art oil containing more than 35% DHA was novelty-destroying for this claim. [10.2] As regards the main request, the Board rejected the objections under A 123(2) and A 100(b) but held that the subject matter of Claim 1 was not novel. As regards the first auxiliary request, the Board rejected the argument under A 123(2) relating to the introduction of the word “directly”. As regards novelty, the Board observed that: 2129 | 3398
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“Contrary to the main request, claim 1 is now directed to the product “directly” obtainable from a unicellular organism by hexane extraction. There is now a clear restriction to the claimed oil for the skilled person ... .” The Board went on to hold that its subject matter was not anticipated by the cited prior art. [10.3] The Board then had to consider the conflicting requests for remittal, i.e., the proprietor’s request that the case be remitted to the OD for further prosecution and the opponent’s request that the Board should itself examine inventive step of the auxiliary request without remitting the case […]. As to this the Board said: “The rejection, by the Board, of the present main request and its findings in relation to the present first auxiliary request under Articles 123(2)(3), A 83 and A 54 are res judicata. […] The OD decided that claim 1 was not patentable on the grounds of lack of novelty but left out the essential issue of inventive step (A 52(1), A 56). This issue, however, forms, inter alia, the basis for the requests of the [opponents] that the patent be revoked in its entirety and must therefore be considered as an essential substantive issue in the present case.” […] [10.4] The Board concluded that it was necessary to remit the case to the OD for further prosecution on the basis of the set of claims of the first auxiliary request. It further noted that opponent I (who had filed written submissions but who had not appeared at the appeal hearing) would “have the opportunity to give its view on the issue of inventive step which remains to be decided by the first instance.” […] On this basis, the Board set aside the decision under appeal and remitted the case to the OD for further prosecution. [11] There were then extensive exchanges and delays before a further hearing before the OD took place. In the course of these, the [patent proprietor] filed various new requests, although always retaining the feature of “directly obtainable” in Claim 1 of the main request. In a communication from the OD dated 5 June 2003 sent in accordance with A 101(2) EPC 1973 and R 58(1)-(3) EPC 1973, the OD recorded that its task was to decide on the issue of inventive step of the claims according to the first auxiliary request accepted by the Board of Appeal as a basis for remittal of the case and, as appropriate, to decide on the allowability of any amendments to this request as subsequently filed by the [patent proprietor]. On 24 November 2003, [opponent II] replied at length, pointing out that it was only the issue of inventive step which had to be considered by the OD, and making detailed comments on this issue, and raising objections to the further amendments which had now been made. Then, in its letter dated 27 June 2005 [opponent II] raised for the first time the argument that the introduction of the term “directly obtainable” gave raise to a clarity objection under A 84, which it argued remained open for discussion. The argument was that it was clear from the description that an intermediate step was conducted between culture of the cells and hexane extraction and that therefore the skilled man would not know what “directly obtainable” in the claim meant. [12] In its decision dated 5 September 2005, the OD concluded that the clarity of the claim had been considered by the Board in the First Appeal and that the issue should be regarded as having been implicitly dealt with. The OD took the view that the Board could not have taken a decision on the issue of novelty without considering the clarity of the claims […]. It added that the Board had issued an unequivocal interpretation of the claim which was binding on the Division […] and that in an any event if the Board had wished to entertain further discussion on the clarity of the wording it would have said so. The OD concluded that the clarity objection under A 84 was not open for discussion. [13] In the present appeal, the [patent proprietor] argues that the issue of clarity is res judicata. For the reasons which follow, the Board does follow this approach although for other reasons it nevertheless accepts that [opponent II] is not entitled to raise this objection. [13.1] A 111(2) provides that: “If the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same. …” [13.2] The “ratio” of any decision is “the ground or the reason for making it, in other words, the point in a case which determines the outcome of the judgment.” (see T 934/91). In the First Appeal the Board expressly decided that Claim 1 of the first auxiliary request did not contravene A 123(2) and was novel over the cited prior art, but did not expressly decide that the amendments made to the granted claims did not give rise to a breach of A 84. 2130 | 3398
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The present Board has reservations about the OD’s statement that the Board in the First Appeal could not have taken a decision on the issue of novelty without considering the clarity of the claims […] because in principle a claim can be novel although unclear. As to the OD’s statement that the Board had issued an unequivocal interpretation of the claim which was binding on the Division […], the Board’s statement about the meaning of the amended claim was made only in the context of novelty, to the effect that with the introduction of the word “directly” there was now a clear restriction to the claimed oil for the skilled person, and that the wording implied that the amount of 35% of DHA must already be present in the extracted neutral lipid fraction of the unicellular organism […]. The Board cannot see this as an interpretation of the claim which rules out the particular clarity argument put forward by [opponent II]. Finally, the OD’s statement that if the Board had wished to entertain further discussion on the clarity of the wording it would have said sol while understandable, is not really in point. [13.3] However, in the present Board’s view these arguments on res judicata do not take into account a wider, more general point. As is generally well known, it is the practice and indeed the obligation of the Boards of Appeal when amended claims are filed during appeal proceedings to examine the claims ex officio for forma1 compliance with the EPC (see G 9/91 [19]) and at the same time also to give the opponent the opportunity to make its own objections on these grounds. Such objections include both objections under A 123(2) and A 123(3) and under A 84. If and when any such objections are cleared away, the claims are then ready to be examined for novelty and/or inventive step, as the case may be, either directly by the Board or by the OD after remittal of the case. [13.4] Thus in T 952/99 [1.3], cited by the [patent proprietor], the Board said this of the practice of the Boards in the past: “In particular, the Boards of appeal allowed amended or auxiliary requests during the appeal procedure provided such requests were bona fide attempts to overcome objections raised and furthermore were clearly allowable, i.e. it was immediately clear that the requirements of A 123(2) and A 123(3), A 84 and preferably A 54 were met (T 840/93, [3.2.1]).” And in T 301/87 [3.8] the Board said: “... when amendments are made to a patent during an opposition, A 102(3) requires consideration by either instance as to whether the amendments introduce any contravention of any requirement of the Convention, including A 84 …” [13.5] This is clearly what took place in the First Appeal. As it happened, no objection was raised by the Board or the opponent […] under A 84. The present Board can only conclude that this was because no one considered that the claims were unclear. The objections under A 123(2) and A 83 then having been cleared away, and the claims having been found to be novel over the cited prior art, the case was ready for a decision on inventive step. This was abundantly clear to everyone, not least [opponent II], who in fact wanted the Board to decide this issue there and then, and who then, after the case had been remitted, made its position clear that inventive step was the only remaining live issue. [13.6] In T 446/00 the Board identified two types of behaviour as being abuses, namely (a) not to comply with a procedural direction of the Board requiring a party to take a certain step or steps and (b) for a party to adopt an unequivocal position on an issue and subsequently to depart from that position without explanation. The latter type of behaviour was held particularly capable of being an abuse in inter partes proceedings, in which the other party is entitled to rely on that position as part of the case it has to meet. At the same time the Board made it clear that these types of behaviour did not form an exhaustive list of procedural abuses. T 446/00 was later referred to in T 762/07, as follows: “[5] [Opponent II] referred to T 446/00 of 3 July 2003 in which a patentee specifically stated, in answer to a challenge from the opponent, that it would not rely on a certain claim and then later re-introduced that claim without explanation. That was held to be an abuse of procedure […] . In the present case there was no such specific retraction, but the effect of three years silence broken only at the very last possible opportunity must be viewed as having much the same effect. In T 1449/03 (sic) [2.8-9], a patentee’s departure for the first time at OPs from a position previously and persistently held was not allowed inter alia because the opponent might have been lulled into a feeling of false security.
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T 1421/05 – No, But Yes
K’s Law – The ebook
[6] In all the circumstances, the Board finds that the manner in which [the patent proprietor] 1 reverted to the claims as granted was an abuse of procedure which the OD should not have allowed.” [13.7] A 114(2) gives the EPO the right to disregard “facts or evidence” which are not submitted in due time by the party concerned. The A 84 point raised by [opponent II] was not a new fact or new evidence, but rather a new argument based on the existing material and the law. However, in T 951/91 [5.15] the Board said: “The discretionary power given to the departments of the EPO pursuant to A 114(2) serves to ensure that proceedings can be concluded swiftly in the interests of the parties, the general public and the EPO, and to forestall tactical abuse. Parties must take into account the possibility that late-filed material will be disregarded and do their best to submit the facts, evidence and arguments relevant to their case as early and completely as possible. If a party fails to do so without adequate excuse, and admitting the evidence would lead to an excessive delay in the proceedings, the Boards of Appeal are fully justified in refusing to admit it in exercise of the discretion provided by A 114(2).” [13.8] In T 201/92 [3.8] the Board referred to the distinction between facts and evidence on the one hand, and arguments on the other: “The submission of facts and evidence is different from the mere submission of arguments (see also: T 92/92). They need not be restricted insofar as they do not essentially change the procedural situation. However, in written proceedings the filing or exchange of submissions has also to be brought to an end, in particular when OPs are going to follow.” [13.9] Further, the Departments of First Instance and Boards of Appeal have an inherent power to control proceedings before them with a view to their economical and fair disposal. As the Board said in T 201/92 [3.5]: “… it follows clearly from the provisions of the EPC as well as from the nature and the purpose of appeal proceedings (see inter alia A 110(2), A 111, A ll4(l)(2), A ll6(l), A 117, A 122, A 125) that it is the competent Board who has the duty to direct and control the proceedings before it. Due to the fact that every legal and judicial procedure has to come to an end within due time, the principle of procedural economy is inherent in any procedural law, as it appears in the EPC inter alia in A 114(2) and also clearly follows from the Travaux Préparatoires of the EPC (see: T 951/91). That means that any party, and not least the attacking ones, has to observe a fair degree of procedural vigilance.” [13.10] Each case will turn on its own facts, and while [opponent II] cannot be accused of precisely the above types of behaviour in the present case, the Board finds the above statements helpful. In the present case the Board in the First Appeal had remitted the case for further prosecution in the clear and shared belief that the only remaining issue in the case was inventive step. [Opponent II] not only shared this belief at the time but subsequently affirmed it. It then later changed its position and thereby sought to change the “procedural situation” (see the citation from T 201/92, above). It did not give an explanation for doing so although it is a reasonable inference that it was because, with a change of representative, the new point had only just been thought of. [13.11] In these circumstances the Board considers that it would not have been in accordance with normal procedural efficiency and principles of fairness to have allowed [opponent II] to re-open questions relating to the formal allowability of the claim and attempt to raise a new issue that it had had the opportunity to raise and which it should have raised at an earlier stage of the proceedings, and in doing so to resile from its previous position. To allow it to do so would not have been fair on the [patent proprietor] and could have led to further delay and increased cost. This was particularly so given that the Board in the First Appeal had examined the amended claim for formal compliance with the EPC and it had not occurred to the Board that there might be a problem with A 84. The OD would therefore have been entitled not to allow this argument to be raised. It does not matter whether one terms such procedural manoeuvring an abuse of process or not, the result is the same. [13.12] For the same reason the Board did not allow this issue to be raised in the appeal proceedings. To download the whole decision or have a look at the file wrapper, click here.
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T 1421/05 – From The Grave
K’s Law – The ebook
T 1421/05 – From The Grave 20 Jun 2011
This decision deals with an interesting case of transmission of the opponent status. The original opponent transferred its business assets to another company and then ceased to exist. Nevertheless, an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form was filed in the name of the original opponent. Is this appeal admissible? In its decision, the Board goes to great lengths, as is reflected by the length of today’s post. In case you only want to know the outcome, just read the first paragraph. [2] The [patent proprietor] identifies as one of the key questions for the Board as being to decide: if an opponent transfers the business assets in the interests of which the opposition was filed to another company and then ceases to exist, is a later appeal filed in the name of the non-existent company admissible? The answer to this question in the present case is, yes. It is easiest to deal with the numerous arguments raised by the [patent proprietor] by considering them in relation to the chronological sequence of the relevant events, the three important ones being: (a) the execution of the Technology Transfer Agreement (TTA) dated 14 April 2000; (b) the dissolution of the original opponent, Aventis R&T, on 31 May 2003; and (c) the filing of the notice of appeal and statement of grounds of appeal in the name of Aventis R&T on 4 November 2005 and 5 January 2006, respectively. The effect of the TTA [3.1] In its written submissions the [patent proprietor] argued, relying on G 4/88, that since an opposition is an inseparable part of the assets in relation to which the opposition was filed and cannot be transferred inter partes separately from those assets, this means that when such assets are transferred inter partes, the opposition is ipso facto also transferred. This argument was not elaborated on in the course of the oral proceedings (OPs) and is clearly untenable on the basis of the jurisprudence of the Boards of Appeal. Nevertheless, since the argument pervades many of the proprietor’s other arguments, it is appropriate to say something in detail about it here. [3.2] The conclusion which the [patent proprietor] seeks to draw from G 4/88 is not correct. There, the Enlarged Board (EBA) held that an opposition may be transferred or assigned to a third party as part of the opponent’s business assets together with the assets in the interests of which the opposition was filed (see the Order of the EBA). As part of the reasons for this, the EBA said that where the opposition had been instituted in the interest of the opponent’s business: “… the opposition constitutes an inseparable part of those assets. Therefore, insofar as those assets are transferable or assignable under the applicable national laws, the opposition which is part of them must also be regarded as transferable or assignable in accordance with the principle that an accessory thing when annexed to a principal thing becomes part of the principal thing.” (point [6]). [3.3] Despite saying that “the opposition constitutes an inseparable part” of the assets in respect of which it was filed, the EBA did not say that the opposition was automatically transferred with the business assets; rather, that it was transferrable (sic). Indeed, as pointed out in T 19/97 [2] the EBA did not deal with the procedural requirements for the valid transfer of opponent status; it has been left to subsequent case law to work this out. Such case law makes it clear that where the business assets in relation to which the opposition was filed have been transferred and at the same time the transferor has contractually agreed to transfer the opposition to the transferee, the status of opponent stays with the transferor until (a) evidence has been filed with the Office sufficiently evidencing the transfer and (b) a request has been filed to recognise the transfer of the status of opponent. See T 19/97 [5], and also T 1137/97 [4]: “For the purpose of EPO proceedings, the effective date of the transfer of an opposition must be taken as the date when the transfer has been requested at the EPO and adequate evidence provided. … [A] transfer of an opposition is . something that has to be requested at the EPO together with supporting evidence before it can take effect.” [3.4] Until such a request has been made and evidence of the transfer has been provided to the Office, the transferor-opponent continues to have the relevant rights and obligations. See T 670/95 [2], T 413/02 [3]. In T 2133 | 3398
T 1421/05 – From The Grave
K’s Law – The ebook
6/05 [1.6.4] the Board made it clear that in a case where the status as opponent is agreed to be transferred together with the assignment of business assets the party status may either remain with the original opponent or be transferred to the new opponent: “In the case of transfer by assignment of particular business assets from one (legal) person to another … the original opponent continues to exist … [Tlhe original opponent may continue the opposition proceedings. If the assignee who acquired the particular business assets wishes to become a party to the opposition proceedings, it is justified to grant it party status only at the date when sufficient evidence has been produced, because the original opponent only then loses, as a consequence, its party status.” [3.5] The [patent proprietor] seeks to distinguish T 1137/97 and T 670/95 on the basis that they do not deal with the case of an inter partes transfer where the transferor has later ceased to exist. But this point is not relevant to the present stage of the argument, which is only concerned with the effect of an inter partes transfer. [3.6] In T 136/01 a similar argument to that advanced by the [patent proprietor] was advanced, also based on the same reading of G 4/88, and was similarly rejected: see point [1.6] of the Reasons. There, the original opponent was Hoechst AG, on whose behalf an appeal was filed, although the assets in respect of which the opposition had been filed had in the meantime been transferred (as it happens, to Aventis R&T and then to Axiva). The Board said: “As long as the requested transfer has not been sufficiently substantiated, and has not been accepted by the competent department, the original opponent retains the status of party to the opposition proceedings.” (point [1.4.10] of the Reasons) [3.7] The reason for the above requirement of a request coupled with supporting evidence is procedural certainty: the proprietor and the Office must be in a position to know with certainty who is the person entitled to prosecute the opposition at any particular time. See e.g. T 1137/97 [4] and T 956/03 [7]. [3.8] The [patent proprietor] advanced a rather obscure point based on submissions as to the nature of opponent party status […]. According to the patent proprietor, the present case was concerned with a distinction between a legal fact and a legal fiction. The legal fact here was that the person aggrieved (i.e., adversely affected – see A 107) by the decision was Nutrinova (the food ingredients business of Celanese Ventures GmbH, to which company the relevant business assets had been transferred in July 2002). The legal fiction is that there is such a thing as “party status”, this being something for which there is no basis in the EPC and which is merely an administrative convenience for the EPO. The persons named in the proceedings from which an appeal may be filed enjoy “party status”, even if there has been a transfer from that party. This legal fiction enables the EPO to administer appeal proceedings without investigating whether there has been a change in the legal fact situation. This implies that “party status” is inextricably linked to the name of the party. If this “party status” can be transferred, then it must have been transferred in the present case by the TTA, and the appeal is inadmissible. If it cannot be transferred, then it cannot be transferred by universal succession and the appeal is again inadmissible. However, the status of opponent is merely a procedural status created by the filing of an opposition. By this act the opponent becomes a party to the proceedings and thus becomes entitled to a bundle of procedural rights (G 3/97 [2.1]; G 4/88 [2], in particular the right to a legal remedy or remedies (T 724/05 [5]). The basis on which the status of opponent is obtained and enjoyed is thus a matter of procedural law (G 3/97 [2.1]). See also the commentary on A 99 in Singer/Stauder, 5th edition, 2010, at point 58 “Im Gegensatz zum Patentinhaber hat der Einsprechende keine materiellrechtliche, sondern nur eine verfahrensrechtliche Rechtsposition.” and in Schulte, 8th edition, 2008, para. 59, point 154 “… die Stellung als Einsprechender … [ist] eine jedem Dritten offen stehende prozessuale Möglichkeit.” [3.9] This status, consisting of the right to prosecute an opposition and to the accompanying remedies, is not dependent on any interest, financial or otherwise, in having the patent revoked. Thus the EBA in G 3/97 [3.2.1] made it clear that an opposition may be filed, in the absence of any relevant abuse (as to which see point [5], below), by someone with no financial, commercial or other interest in the opposition:
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K’s Law – The ebook
“… the EPC legislator explicitly designed the opposition procedure as a legal remedy in the public interest which, according to A 99(1), is open to “any person”. It would be incompatible with this to require that the opponent show an interest, of whatever kind, in invalidating the patent.” [3.9.1] For the same reasons it is not necessary for an opponent to show, subsequent to the filing of the opposition, any continuing interest, of whatever kind, in invalidating the patent. See T 1204/97 [1.2]: “Moreover, as a legitimate interest is not a requirement for an opposition to be admissible (G 3/97 and G 4/97 [3.2.1 et seq.], see also Singer/Stauder, loc.cit., A 99, note 17 et seq.), it can also not be required as a condition for being entitled to continue an opposition as the legal successor of the original opponent.” (emphasis added) [3.9.2] Even if the opponent might in some circumstances be considered to be acting on behalf of the transferee, he remains the true opponent. This was established by the EBA in G 3/97 [2.1,3] in the case of an original opponent acting on behalf of a third party. The argument that a person acting on behalf of a third party is not acting in his own name was rejected. The present Board considers that the position is the same following a transfer of relevant business assets by an opponent. There is no objection to this in the absence of additional reasons establishing an abuse. [3.10] Finally, the [patent proprietor] argues that the Office had constructive knowledge of the TTA because evidence of it had been filed in separate opposition proceedings (against EP 0443861). The suggestion is apparently that a transfer of the present opposition should have been recognised by the Office as from that moment. No case was cited to the Board in support of this novel proposition. However, first, there is no principle known to the Board under which the Office can be deemed to have notice in one set of proceedings of matters filed in other proceedings. Second, there was in any event no request filed in the present proceedings for transfer of the present opposition. [3.11] It follows that so far as the Office and the parties were concerned, Aventis R&T remained the opponent after the effective date of the TTA (apparently 1 January 2000) when, so the [patent proprietor] alleges, Aventis R&T assigned to Axiva the relevant business assets, including its interest in the present opposition. The effect of the dissolution of Aventis R&T [4.1] It next needs to be considered what was the effect of the events which took place in 2003. This is summarised in the declaration April 9, 2009, filed by Sanofi-Aventis, and is substantiated by extracts from the relevant company registers, various declarations and also expert evidence of German company law filed on behalf of [opponent II]. [4.2] Aventis R&T was originally established as a limited partnership (“Kommanditgesellschaft”) in 1998 (under the then name of Hoechst Research & Technologies Deutschland GmbH & Co. KG). The partners were (a) Hoechst AG (as the sole limited partner, or Kommanditistin) and (b) Hoechs t Research & Technology Deutschland Verwaltungs GmbH (as sole general partner). Hoechst Research & Technology Deutschland Verwaltungs GmbH subsequently changed its name to Aventis Research & Technologies Verwaltungs GmbH. With legal effect from 31 May 2003, Hoechst AG withdrew from the limited partnership (“ist ausgeschieden” : see the relevant company regis ter, Handelsregister des Amtsgericht Frankfurt am Main HRA 28517). This had the effect of dissolving the limited partnership, with the result that Aventis R&T ceased to exist (“Die Gesellschaft ist aufgelöst. Die Firma ist erloschen.”: see the entry in the same register for 18 June 2003). On Aventis R&T ceasing to exist, Aventis Research & Technologies Verwaltungs GmbH became the universal successor of the limited partnership, so that all the assets of the partnership were transferred by operation of law to this latter company. With effect from 29 August 2003, this company was merged into Aventis Pharma Deutschland GmbH, with the effect that this latter company became the legal successor to all the assets of the former. This latter company subsequently changed its name to Sanofi-Aventis Deutschland GmbH (referred in this decision as Sanofi-Aventis). Thus in 2003, and so before the notice of appeal was filed, Aventis R&T had ceased to exist and Sanofi-Aventis had became the universal successor to Aventis R&T. These facts were not challenged by the [patent proprietor]. [4.3] Dr Ahrens, a professional representative acting under an authorisation dated 8 March 2001 (see Z16), had been representing Aventis R&T in the opposition proceedings before the company was dissolved. After Aventis R&T1s dissolution, the opposition in fact continued to be prosecuted by Dr Ahrens in the name of Aventis R&T. Thus at the hearing before the OD on 5 September 2005, the “opponent”, named as Aventis R&T, was represented by Dr Ahrens and Mr Taormino, of the firm Hoffmann Eitle (the latter acting under a sub2135 | 3398
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authorisation given by Dr Ahrens on 6 July 2005). The decision of the OD was subsequently notified to Dr Ahrens on the same basis. [4.4] [Opponent II] argues that the effect of these events was that Aventis Research & Technologies Verwaltungs GmbH, and later Sanofi-Aventis, became the person entitled to pursue the opposition as universal successor of Aventis R&T. The fact that the opposition was in fact continued in the name of Aventis R&RT was a mistake. [4.5] The [patent proprietor] argues, first, that even if its earlier arguments are wrong, and Aventis R&T retained the status of opponent after the effective date of the TTA, opponent status cannot in general be transferred to a universal successor: the principles applicable to the case of a universal successor of a proprietor, such as T 15/01, cited by [opponent II], do not apply to the case of an opponent. Secondly, it was argued that even if in general opponent status can be so transferred, it cannot be transferred in a case such as the present one where the “opponent” had previously transferred the relevant business assets: there was nothing left to be transferred to a universal successor. These two arguments are considered in turn. No automatic transfer of opposition to universal successor? [4.6.1] The first line of argument was put forward in the [patent proprietor’s] written submissions but again was not developed during the OPs, and again is clearly untenable, as demonstrated by many decisions of the Boards of Appeal. Thus in T 956/03 [2] it was said: “It is well-established that oppositions, while they may not be freely transferred, can be transferred in certain circumstances - from one natural or legal person to another together either with those assets of a business in the interest of which the opposition was commenced or by universal succession to all assets, as for example by merger”. (citations omitted) [4.6.2] See also e.g. T 670/95 [2], where it was said: “Die Stellung als Einsprechender ist nicht rechtgeschäftlich frei übertragbar …. Sie geht allerdings bei einer Gesamtrechtsnachfolge (Universalsukzession) auf den Gesamtrechtsnachfolger über, so z. B. im Fa11 der Eingliederung oder Verschmelzung juristischer Personen … ” . (citations omitted) [4.6.3] T 425/05 [1], cited by [opponent II], and referred to in more detail below (point [6.10]) is to the same effect. No automatic transfer where prior inter partes transfer? [4.7.1] The Board also considers that this argument is not correct. There does not appear to be any justification for the distinction drawn by the [patent proprietor] that such an automatic transfer cannot take place where the opponent has already transferred the assets in the interests of which the opposition was filed. On the above analysis, Aventis R&T had the right to prosecute the opposition in its name immediately before it ceased to exist and there seems no reason why, as a matter of principle, this right could not pass automatically to Sanofi-Aventis as universal successor. [4.7.2] As already explained, the status of opponent is purely a procedural status and does not, in the absence of any relevant abuse (as to which see point [5], below), require the opponent to have a financial or other interest in the prosecution of the opposition (see point [3.9], above). Even where the right to prosecute is completely bare (i.e., where the opponent possesses no other rights) no authority was cited to the Board, whether concerning the position under the EPC or under German national law, to show that such a bare right is of a kind which cannot pass to a universal successor, and the Board can see no reason why it cannot do so. [4.7.3] In G 4/88 [5] the EBA expressly left out of consideration the question whether an opposition could be transmitted or assigned independently of the existence of an interest in instituting the opposition, but noted that transmission of the opposition to the opponent’s heirs is acknowledged implicitly in R 60(2) EPC 1973 and that the Guidelines for Examination also allowed, by analogy, for the opposition to be transmitted to the opponent’s universal successor in law (see Part D, Chapter 1.4 of the Guidelines). This has of course since been confirmed by decisions of the Boards of Appeal, e.g., those cited in point [4.6.1], above. In none of the decisions have the Boards held that, in order for transmission to a universal successor to take effect, the opponent must also possess relevant assets which are at the same time transferred to the successor. Of course in none of these cases were the Boards presented with the unusual facts of the present case. However, it should be born (sic) in mind that it is not necessary for an opponent to carry on any business at all, whether of a kind related in some way to the subject matter of the patent, or otherwise. See point [3.9], above. There thus seems no good reason why the right to 2136 | 3398
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prosecute an opposition should not be capable of passing to the universal successor of an opponent who filed an opposition without having any business assets relating to the opposition. Given this, there also seems no good reason why, in the unusual circumstances of the present case, the right to prosecute an opposition should not be capable of passing to the universal successor of an opponent who did have such assets when the opposition was filed but has since parted with them. There does not appear to be any danger of “trafficking” in the opposition in such circumstances (see T 298/97 [6]) and, to the extent that it gives rise to the possibility of abuse, the case law already provides for this (see point [5], below) . [4.8] The [patent proprietor] accepts that the logical conclusion of its arguments is that (assuming its previous argument that the opposition had already been transferred to Axiva GbmH and then to Lonza Ltd is wrong) when Aventis R&T ceased to exist, the right to prosecute the opposition disappeared, but argues that there is nothing objectionable about this. However, while it is quite correct that where an opponent has no universal successor the right to opponent status may simply disappear when the opponent ceases to exist (see T 525/94 and T 353/95), here there is a universal successor. The “certainty” argument [4.9.1] The [patent proprietor] argues that it is intolerable that the right to pursue an opposition could be vested in two different people at the same time, namely the transferee under an inter partes transfer and also the universal successor of the transferor. (It should be noted that this argument, if valid, would apply to inter partes transfer cases generally, not just in the unusual facts of the present case.) [4.9.2] It is of course not in doubt that: “… clear legal principles are necessary for assessing who may be a party to the proceedings before the EPO … . At any given time throughout the proceedings, there should be no doubt as to who may validly exercise procedural rights and to whom officia1 actions by the EPO are to be addressed.” (G 2/04 [1.3]). [4.9.3] But on the above analysis it is clear in whom the right is at any time vested, both in the case of an inter partes transfer and in the case of a universal successor. The same is true where both types of transfer are present. There is no question of opponent status being vested in two different persons at the same time. In the case of an inter partes transfer it has already been pointed out that the requirement of a request coupled with supporting evidence is based precisely on the need for legal certainty (see point [3.7], above). In the case of a transmission of opposition status to a universal successor, as stated in T 6/05 [1.6.4]: “… there can only be one (legal) person who has rights and obligations, with the consequence that there is necessarily and automatically a continuation of the existing legal status as opponent from the date of the merger. It can thus be established unambiguously and without any legal uncertainty, at any point in time in the proceedings who in fact is the opponent having party status, regardless of the date when sufficient evidence to this effect was filed.” If both types of transfer are present, as here, the position is therefore also clear. The argument of the [patent proprietor], if correct, would have quite the contrary effect; it would create uncertainty. [4.9.4] The Board is not confronted by a situation in which the successor to the business assets in respect of which the opposition was filed and the later universal successor of the original opponent are disputing who has the better right to the status of opponent. This type of problem can be dealt with as and when it arises. Abuse The [patent proprietor] argues that the transfer of opposition status to Sanofi-Aventis should not be recognised because it is capable of giving rise to abuse. The [patent proprietor] only faintly suggested the existence of actual abuse and in OPs concentrated rather on the possibility of abuse […]. As with the previous argument, the implications of this argument are not limited to the unusual facts of the present case but in fact concern the case of inter partes transfer of opponent status generally. [5.2] As already made clear, no financial, commercial or other interest is required as a condition of filing or pursuing an opposition. The EBA in G 3/97 made it clear in the following passages that the fact that an opponent may be acting on behalf of or at the instance of a third party does not by itself mean that the opposition is inadmissible: there are only limited circumstances in which the filing of an opposition can be regarded as an abuse:
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“… acting on behalf of a third party cannot be seen as a circumvention of the law unless further circumstances are involved. The purpose of opposition proceedings alone does not offer sufficient grounds for regarding an opposition on behalf of another person as an abuse of the procedural provisions.” (point [3.2] of the Reasons) “… the opponent’s motives are of no consequence for the EPO, at least as long as no conduct involving an abuse of process arises from additional circumstances.” (point [3.2.2] of the Reasons) “If, for the purpose of opposition, the opponent does not need to show an interest in the invalidation of the patent, then no harm is done if a third party has an interest in the invalidation of the patent. The question of the interna1 legal relationship between the opponent and any third parties has, as a matter of principle, no legal significance for external purposes, i.e. vis-à-vis the EPO and the patent proprietor.” (point [3.2.2] of the Reasons) [5.3] The EBA concluded that where the person named as opponent was acting on behalf of a third party the opposition would be inadmissible only if the involvement of the opponent were to be regarded as circumventing the law by abuse of process. This might arise where the opponent was either (a) acting on behalf of the patent proprietor or (b) acting on behalf of a client in the context of activities which, taken as a whole, were typically associated with professional representatives, but where the opponent did not have the relevant qualifications required by A 134: see paragraph l(c) of the EBA’s order. [5.4] The present Board considers that the same considerations must apply to the continuation of an opposition or an opposition appeal. [5.5] The [patent proprietor] did not suggest that the opponent in the present (whoever it might be) case was in fact circumventing the law by abuse of process by either of the above means. While the categories of abusive behaviour were not stated by the EBA to be limited to the two examples given, the [patent proprietor] did not suggest a third category into which the actions of [opponent II] in the present case would fall. As stated by the EBA, the burden of proof in establishing any abuse falls on the party alleging the abuse (point [5] of the Reasons). [5.6] The argument is therefore rejected. The filing of notice of appeal and statement of the grounds of appeal. [6.1] The notice of appeal in this case was filed on 4 November 2005 by the firm Hoffmann Eitle, acting by a professional representative. The notice stated: “In the name of, and by authorisation of Our client Aventis Research & Technologies GmbH + Co. KG we herewith lodge an appeal …”. In its heading the notice referred inter alia to Aventis Research & Technologies GmbH + Co. KG (i.e., Aventis R&T) as “Opponent II”. The notice sought inter alia reversa1 of the first instance decision and revocation of the patent. A statement of the grounds of appeal was filed on 5 January 2006 on the same basis by Hoffmann Eitle, again acting by a professional representative. Hoffmann Eitle were acting under a sub-authorisation given by Dr Ahrens on 6 July 2005; their authority to act on behalf of Sanofi-Aventis has been subsequently affirmed by Sanofi-Aventis (see, e.g., the declaration from Sanofi-Aventis dated 1 July 2010 and confirmation of Dr Ahrens’ authority dated 14 May 2009: Z 8 ). [6.2] The [patent proprietor] argues that an appeal filed by a universal successor of an opponent which has previously transferred away the assets in respect of which the opposition was filed is inadmissible since the universal successor can have no interest in the proceedings, and thus cannot be prejudiced within the meaning of A 107 by an order of the OD. (Again it should be noted that this proposition, if it held good, would apply not just in the special case of an appeal filed by a universal successor of an inter partes transferor, but in the more general case of any appeal filed by an inter partes transferor.) This is largely a repetition of previous arguments, and again the Board does not consider it to be correct. A party is prejudiced by a decision if it does not accede to one of its substantive requests: see e.g., T 234/86. This condition was clearly satisfied in the present case. The Board has already explained that it is not necessary that an opponent has a continuing interest, financial or otherwise, in the prosecution of the opposition or appeal (see point [3.9], above). [6.3] T 1324/06 was relied on heavily by the [patent proprietor]. There, the proprietor argued that the opponent had no legitimate interest in pursuing the opposition appeal since (so the proprietor alleged) several divisions of the opponent Company had been sold. It offered no evidence for this, although it was accepted that the opponent 2138 | 3398
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had been declared bankrupt. The Board, after citing G 2/04 to the effect that an inter partes transfer of an opposition requires a concurrent transfer of the material assets, said: “Since a transfer of material assets by the initial opponent may thus result in its inability to further pursue the opposition or appeal, allegation of facts that would entai1 such grave consequences should be proven beyond any reasonable doubt. Yet, all the patentee could offer in this respect was some hearsay evidence about the alleged sale of assets, and the fact that one of documents filed in appeal [sic] did not originate from [the original opponent], but another source. Taken alone or together, these allegations are insufficient to prove beyond reasonable doubt that [the original opponent] should no longer be entitled to pursue the appeal.” (point [1.3] of the Reasons) [6.4] The [patent proprietor] in the present case argues that since it is clear beyond doubt that Aventis R&T had previously transferred all its material assets (something which is disputed by [opponent II]), it is no longer able to pursue the opposition or appeal. It is not entirely clear what the Board inT 1324/06 intended by saying that the original opponent might be unable to pursue the opposition or appeal, but the present Board cannot take it as a statement (which in any event would only have been obiter) that if there is evidence of a transfer by an opponent of the relevant assets, the opponent from that point on is no longer entitled to pursue the opposition or an appeal. This would be wholly contrary to the jurisprudence of the Boards of Appeal already discussed relating to when a transfer can be acknowledged (point 3, above) or the fact that it is not necessary for an opponent to have a continuing financial, commercial or other reason in revoking the patent. [6.5] It might appear that support for the [patent proprietor’s] argument is also to be found in T 298/97 [7.5], where the Board said: “… if the original opponent has transferred the relevant assets to other companies, it no longer possesses the “business” (that is, the economic activity carried on by it - see G 4/88 [5]) in respect of which the opposition was brought and thus not having, as the party adversely affected by the decision under appeal, filed the Grounds of Appeal, it cannot in law have any further interest in the appeal.” However, this observation should not be taken out of context. The Board was considering a different point, namely, whether both the original opponent and a transferee of the business assets could be appellants. The Board was not concerned with the case of an opponent which had transferred the relevant business assets but had not requested or substantiated a transfer of the opposition. Indeed the Board said later: “Under A 99(1) “any person” may oppose a European patent: no commercial or other interest whatsoever need be shown. If the opposition fails, the opponent can as an “adversely affected party” appeal under A 107: again, no commercial or other interest is required.” (point [12.2] of the Reasons) [6.6] Reference has already been made by the Board to T 136/01 when rejecting an earlier, similar argument of the [patent proprietor] (see point [3.6], above). Somewhat perversely, the [patent proprietor] in fact relies on this decision, particularly sub-paragraphs (c) and (d) of the following passage: “… it has therefore to be ascertained whether [the original opponent and appellant]: (a) were a party to the opposition proceedings, (b) were adversely affected by the impugned decision. (c) were still enjoying the status of a party at the time the appeal was filed, (d) have not, subsequently, lost the status of a party to appeal proceedings for any legal or factual reasons.” (point [1.3] of the Reasons) [6.7] The [patent proprietor] says that Aventis R&T was not enjoying the status of a party at the time the appeal was filed and had lost the status of a party to appeal proceedings for legal and factual reasons. However, the decisions cited above show that Aventis R&T still enjoyed party status after the effective date of the TTA. As already shown, after the date of its dissolution, opponent status automatically became vested in Sanofi-Aventis. This company still enjoyed the status of a party at the time the appeal was filed and had not lost the status of a party to appeal proceedings for legal or factual reasons. [6.8] Given, then, that an appeal filed by the universal successor of a transferor-opponent is in principle admissible, the question is then whether the present appeal is admissible in the circumstances that the notice of appeal and statement of grounds of appeal were filed in the name of Aventis R&T, the original opponent, a dissolved company, and not in the name of Sanofi-Aventis, the universal successor. Coupled with this question is whether correction of the name of name of (sic) [opponent II] from Aventis R&T to Sanofi-Aventis should be allowed.
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[6.9] The [patent proprietor] argued in this respect that even if it is possible for a universal successor to acquire the status of opponent, evidence must be filed with the Office to establish the succession before any appeal can be validly filed by such a successor. It was argued that since in the present case no relevant evidence had been filed before the expiry of the appeal period, the right to prosecute the opposition appeal had disappeared. The [patent proprietor] relied inter alia on T 656/98, which establishes that for a transferee of a patent to be entitled to appeal, the necessary documents must be filed first. [6.10] On one view, the filing of the notice of appeal and the statement of the grounds of appeal in the name of Aventis R&T was in fact completely correct and no correction of the name is required. This conclusion most clearly follows from the decision cited by [opponent II], namely T 425/05 […], the facts of which are similar to those of the present case. There, an appeal was filed in the name of an opponent at a time when it had already been dissolved, following its bankruptcy, but having a universal successor. The appeal was filed by the representative who had previously been authorised to act on behalf of the opponent, whose authority had never been rescinded, and whose authority to act on behalf of the successor had subsequently been affirmed (after expiry of the appeal period). The appellant apparently requested correction of the name, citing T 15/01 […]. The [patent proprietor] argued that the mistake in the notice of appeal could not have been a mere clerical error which could be corrected, since the representative could not have been acting on behalf of the successor at a time when he had not yet been authorised […]. The Board observed that, after dissolution, the original opponent’s assets had passed into the hands of its successor, who had thus succeeded the original company as opponent and therefore also as client of the representative. The Board pointed out that the representative’s authorisation to act on behalf of the original opponent had never been contested or rescinded, and its authority to act on behalf of the successor had since been confirmed. The Board therefore considered . that the appeal filed by the representative had been implicitly but necessarily (“implicitement mais nécessairement”) filed on behalf of the successor. Absurd consequences would follow if the representative’s authorisation to act were to be taken as having lapsed at the date when the original opponent ceased to exist: the notification of the OD’s decision would not have been effective, so that the time for filing an appeal would not yet have started to run (see point [1.3] of the Reasons). Although the Board noted the request for correction, it merely observed that the identification of the original opponent as appellant had been a clerical error which had in fact since been corrected in the register (see point [1.3] of the Reasons). The Board did not, however, actually make an order correcting the name of the appellant in the notice of appeal. It is not clear from the public file when the correction took place, but it cannot have been before 21 April 2006, and thus before the time for filing the notice of appeal had expired. [6.11] Although it is not entirely clear what the Board meant by the phrase “implicitement mais nécessairement” in this context, the facts of that case are indisputably very close to those of the present one. The appeal here was filed by the representative who had previously been authorised to act on behalf of the opponent and whose authority had never been rescinded, and whose authority to act on behalf of the successor has subsequently been affirmed. [6.12] As regards this decision, the [patent proprietor] seeks to distinguish it on the basis that in the present case there had been a transfer of the opposition and relevant assets before Aventis R&T ceased to exist and before the appeal was filed. But these points have already been dealt with. [6.13] The [patent proprietor] relied on T 956/03 […]. There, an appeal was filed in the name of an opponent’s universal successor before any evidence concerning the succession was filed. The appeal was held to be inadmissible, the Board concluding that the rules relating to the recognition of a transfer in the case of a universal successor were the same as in the case of an inter partes transfer: “In the present Board’s view, the case law shows a definite balance in favour of the view that a transfer can only be acknowledged from, at the earliest, the date when adequate evidence to prove the transfer has been filed. This is desirable in the interest of legal certainty and, within that principle, to ensure the identity of an opposing party is known. If the transfer takes place before the appeal period expires then the entitlement of the transferee to replace the opponent must be established by filing the necessary evidence before the appeal period expires. Accordingly, since that was not done in the present case, the appeal of appellant III is inadmissible.” (point [7] of the Reasons). [6.14] It is implicit from this decision that had the appeal been filed in the name of the original opponent, it would have been admissible. The decision in T 425/05 (see point [6.10], above), which had only very recently been published, does not appear to have been cited to the Board and understandably the Board appears not to have been aware of it. In any event, it is not clear from the facts of T 956/03 whether the original opponent had ceased to exist at the date the notice of appeal was filed, but given that this seems to have been the same SanofiAventis Deutschland GmbH as in the present case, presumably it did still exist.
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[6.15] The [patent proprietor] also relies on T 6/05, […] in which neither T 956/03 nor T 425/05 appears to have been cited to the Board. Here, in contrast to T 956/03, the Board held that an appeal filed by a universal successor before any evidence of the succession is filed is admissible: a universal successor acquires opponent status from the moment of succession and not first when evidence of the transfer has been supplied. The Board noted that as regards transfer of ownership of a patent, the position in the case of transfer to a universal successor is different than in the case of an inter partes transfer. In the case of a universal successor of the patent proprietor, the successor automatically acquires party status from the date on which the succession becomes effective and not only once sufficient evidence of it has been produced. Since according to the jurisprudence of the Boards of Appeal the principles for transferring a European patent were to be applied mutatis mutandis to the transfer of opponent status, it was justified to apply the same considerations and conclusions with respect to the transfer of the opponent status due to universal succession. “Thus, in the case of transfer of the opposition by way of universal succession, the universal successor automatically acquires the bundle of procedural rights of his predecessor and hence party status from the date on which the merger became effective and not only once sufficient evidence to this effect has been produced.” (point [1.7] of the Reasons) [6.16] Since in that case the appeal had been filed in the name of the universal successor of the opponent and since it had automatically acquired party status, it was adversely affected by the decision under appeal, and the appeal was admissible even though no evidence of the transfer had been filed (see point [1.9] of the Reasons). Again, it is not clear from the facts of that case whether the original opponent had ceased to exist at the date when the notice of appeal was filed. [6.17] It appears to the Board that the decisions in T 956/03 and T 6/05 are conflicting. On one view it is not necessary to decide between the two because: (a) T 425/05 points clearly to a solution in the present case; (b) the appeal in the present case was filed in the name of the original opponent, not its universal successor, so that the decisions in T 956/03 and T 6/05 are prima facie not relevant; and (c) in any event in the present case there is a request for correction. Nevertheless, the apparent conflict between the two cases does present a difficulty, because on one view the consequence of T 6/05 is that, subject to the issue of correction, the appeal in the present case filed in the name of the original opponent is inadmissible (although the Board in T 6/05 was not concerned with the kind of facts present here and obviously said nothing about the position) and that of T 956/03 that, while the appeal in the present case is admissible, it is not a case where correction of the name of [opponent II] is appropriate, since it was only later, after evidence of the universal succession was filed, that the status of Sanofi-Aventis as successor could be acknowledged. It is also not clear from T 956/03 whether the original opponent was still in existence, and what difference this might have made to the decision. (It should be noted that there was no request for correction in T 956/03 because the appeal had clearly been deliberately filed in the name of the universal successor as opponent, and there was no mistake). Further, the decision in T 15/01, referred to in point [7.6] below, indicates that correction is appropriate. The request for correction [7] Taking the view therefore that the position is uncertain, and assuming, without deciding the issue, that it may be correct that the appeal and statement of grounds of appeal filed in the name of the original opponent in the present case were defective, is this a case where correction should be allowed? [7.1] In the present case the period for filing the notice of appeal and the grounds of appeal expired before the coming into force of EPC 2000 on 13 December 2007. The provisions of the EPC 1973 therefore apply: see T 157/07 [1.6]. [7.2] The request for the correction of the name of [opponent II] in the notice of appeal and statement of grounds of appeal was made under R 64(a) EPC 1973 in conjunction with R 65(2) EPC 1973, alternatively under R 88 EPC 1973 (corresponding to R 101(2) and R 139 EPC 2000 respectively). As to these alternatives, as was pointed out in T 715/01, R 88 EPC 1973 appeared in chapter V of part VII of the Implementing Regulations to the Convention, which relates directly to part VII of the Convention, and not to part VI relating to the appeal procedure. R 65(2) EPC 1973 provides an explicit remedy for deficiencies in the name and address of the notice of appeal as it refers to R 64(2) EPC 1973, sub-paragraph (a). The Board in T 715/01 therefore considered that the relevant provision was R 65(2) EPC 1973. The present Board follows this approach and in the event it has not been necessary to examine whether a correction of the name of [opponent II] in the notice of appeal could also be allowed under R 88 EPC 1973 (as was accepted in T 814/98 [1] and T 460/99 [1]) 2141 | 3398
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[7.3] The rule provides: “(2) If the Board of Appeal notes that the appeal does not comply with the provisions of R 64, sub-paragraph (a), it shall communicate this to the appellant and shall invite him to remedy the deficiencies noted within such period as it may specify. If the appeal is not corrected in good time, the Board of Appeal shall reject it as inadmissible.” R 64(a) provides that the notice of appeal should contain the name and address of the appellant in accordance with the provisions of R 26, paragraph 2(c) EPC 1973. [7.4] The principles for correction under R 65(2) EPC 1973 were set out in T 97/98. In that case the opposition had been filed by, and the decision of the OD given against, Fresenius Medical Care Deutschland GmbH but in the notice of appeal, a different legal entity, namely Fresenius AG, was indicated as “opponent” and thus as appellant (see point [1.1] of the Reasons). The appeal was filed by the same representative who had represented the opponent before the OD. It was explained that Fresenius Medical Care Deutschland GmbH and Fresenius AG were separate legal entities within the same group of companies. There was no question of any transfer of the opposition; the indication of Fresenius AG in the notice of appeal simply constituted an error. The Board held (point [1.3] of the Reasons) that correction was possible: “What is required under R 64(a) and R 65(2) is that there was indeed a deficiency, i.e. that the indication was wrong, so that its correction does not reflect a later change of mind as to whom the appellant should be but on the contrary only expresses what was intended when filing the appeal. It must be shown that it was the true intention to file the appeal in the name of the person, who is, according to the request, to be substituted.” The Board added that, for the purposes of R 64(a) and R 65(2) EPC 1973 it must be possible on the expiry of the time limit for appeal to determine whether or not the appeal was filed by a person entitled to appeal in accordance with A 107. For this, it is sufficient if: “… it is possible to derive from the information in the appeal with a sufficient degree of probability, where necessary with the help of other information on file, e.g. as they appear in the impugned decision, by whom the appeal should be considered to have been filed …” (point [1.3] of the Reasons). In a later passage (point [1.6] of the Reasons), the Board also indicated that the identity of the true appellant should be derivable within the appeal period by a person not knowing all the details later presented to the Board. [7.5] In that case an appeal had been filed in the name of someone who was not the opponent but the Board considered it sufficiently probable that it was the intention to file the appeal on behalf of the person who was the opponent. The present case is in some respects different, since it would not have been possible to derive from the information in the appeal, even with the help of other information on file, but not knowing all the details presented later to the Board, that it was the intention to file the appeal in the name of the original opponent’s universal successor. Nevertheless, the Board does not read T 97/98 as making this a necessary requirement for correction; the Board in that case was not only dealing with a different factual case but also merely said that it was “sufficient” if this requirement was satisfied. The significant point in the present case is that it is highly probable that it was the intention to file the appeal on behalf of the person who was the opponent (see point [7.10], below). [7.6] The facts of T 15/01 […] are similar to those of the present case. There, an appeal was filed in the name of the original proprietor (SIDD) but at a time when it no longer existed and when, as a matter of substantive law, a universal successor (SDLO) had become the proprietor of the patent. Correction of the name of the appellant was requested, which the Board considered was possible both under R 65(2) EPC 1973 and R 88 EPC 1973 (see point [14] of the Reasons). The Board said that: “… when an applicant or patentee ceases to exist, his universal successor in law immediately and automatically acquires the party status in proceedings pending before the EPO. Since SDLO was, as of 4 September 1998, the successor in universal title of SIDD, it automatically became party to the opposition proceedings on that date. No interruption of the proceedings occurred … Since the OD was not informed of the change, it continued to use the old name of the legal predecessor of SDLO as designation of the proprietor. So did the representatives. This, however, only amounts to a wrong designation of the true party; it does not have the consequence that procedural acts which occurred after the change were made on behalf of or against a legal person who had ceased to exist. Thus, SDLO was the true party to the proceedings when the appealed decision was given and was adversely affected by it.” (point [12] of the Reasons) 2142 | 3398
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[7.7] The Board was satisfied that the it was the intention to file an appeal on behalf of SDLO: “To decide otherwise would not only be overly formalistic, but would also undermine the procedural mechanism provided for in Rule 90(1)(a), second sentence, and R 101(7) EPC. … [Tlhis mechanism ensures that in cases of universal succession a representative may continue to act in proceedings pending before the EPO. The mechanism works even if the representative does not yet know the identity of the successor in law (who in the event of death of a natural person may be uncertain for a considerable period of time) and even if the representative is not informed about the fact itself that a succession in law has occurred. Thereby procedural efficiency is also increased in so far as a representative does not need to ascertain himself every time before acting in the proceedings whether or not a succession in law has occurred. This mechanism would be seriously damaged if a representative who designates the appellant by the name of the applicant or patentee on record who has already ceased to exist rather than by the name of the successor in law could not correct this objectively wrong designation.” (point [15] of the Reasons) [7.8] The Board therefore allowed the requested correction (although such order for correction does not form part of the final order) and the appeal of appellant 1 was held admissible (see point [16] of the Reasons). In some respects the approach taken in this decision was different from that taken in the later case of T 425/05 (see point [6.10], above), in which T 15/01 appears not to have been cited to the Board. As already pointed out, in that case it was considered in similar circumstances that the notice of appeal had been implicitly and necessarily filed on behalf of the successor, and no order for correction appears to have been made (see point [6.10], above). [7.9] The [patent proprietor] argues that T 15/01 is not relevant as it concerned an appeal by a proprietor, as to which the rules are different (in particular R 90(1)(a) EPC 1973, quoted in the decision, above). It also did not concern an appeal by an opponent who had previously transferred the relevant assets and who then had ceased to exist. However, the reasoning in the case applies equally to the wrong designation of an opponent/appellant, as is clear from T 97/98, above, which concerned such an appeal, and more generally since the same principles applicable to the status of proprietor should be applied mutatis mutandis to opponent status (see T 6/05, point [6.15], above). While it is correct that R 90(1)(a) EPC 1973 deals with the status of proprietor, R 101(7) EPC 1973, cited with it in T 15/01, deals with the position of termination of authorisations in general. [7.10] As to the facts of the present case, reference has already been made to the contents of the notice of appeal and statement of grounds of appeal. These documents were filed by the representative who had been acting in the opposition proceedings and whose authority to act on behalf of Sanofi-Aventis has been affirmed subsequently. [Opponent II] explained that because of the uncertainty about how the Office would treat a request to transfer the opposition following the TTA, a deliberate decision was taken to continue to conduct the opposition proceedings in the name of Aventis R&T. […] In its communication dated 24 March 2010, the Board queried why the opposition and the appeal had continued to be conducted in the name of Aventis R&T after May 2003, at a time when the relevant parties might have been expected to know that this company no longer existed. The answer provided was that although it had been decided that the party position should remain unchanged (i.e., that Aventis R&T should remain as opponent), it was also decided that the overall conduct of the proceedings (and opposition proceedings against another patent, EP 0512997), and the responsibility for the costs, should be undertaken by the purchasers of the business from Aventis R&T under this agreement. The overall control of the opposition had therefore been left in the hands of these purchasers (namely, Axiva, Celanese Ventures GmbH, Nutrovina Nutrition Specialities & Food Ingredients GmbH, as well as subsequently Lonza Ltd), who had instructed Dr Ahrens and Hoffmann Eitle directly through a company coordinating the proceedings. Because of this, Sanofi-Aventis, the successor to Aventis R&T, had had little conduct with Dr Ahrens and had not informed her or her sub-agent of the merger of this company and succession to Sanofi-Aventis. From their side, Dr Ahrens and Hoffmann Eitle had seen no break in the continuity of their instructions and had been unaware that they were continuing to act, and had filed a notice of appeal and a statement of grounds of appeal, in the name of a company that no longer existed. Their intention, however, was to continue to act for the opponent. […] [7.11] The Board accepts this explanation. Adapting the wording of T 15/01 [15] (cited above), the Board is therefore satisfied that it was the intention to file a notice of appeal and statement of grounds of appeal on behalf of the person who had party status as opponent during the opposition and who was adversely affected by the appealed decision, and that this person was Sanofi-Aventis. The fact that these acts were done in the name of Aventis R&T was a mistake. [7.12] Finally, the [patent proprietor] also says that correction is not possible here because the mistake which was made was one of law, not fact, relying on T 656/98 [5]. The Board there was considering the effect of R 88 EPC 1973, not R 64(a) EPC 1973. But even so, the present Board has concluded that the notice of appeal and
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T 1421/05 – From The Grave
K’s Law – The ebook
statement of grounds of appeal were filed by representatives in the name of Aventis R&T being unaware that this company no longer existed and that it had a universal successor. This was a mistake of fact. [7.13] The principles which are applicable to correction of the notice of appeal under R 65(2) apply also to the correction of the statement of the grounds of appeal: see T 715/01 [10] and T 15/01 [14]. It also does not matter for the purposes of R 65(2) EPC that it was not the Board but the [patent proprietor] who raised the point about [opponent II’s] identity. See e.g., the facts of T 15/01 and T 157/07. [7.14] The Board therefore considers that it is appropriate to order the correction of the name of [opponent II] in the notice of appeal and in the statement of grounds of appeal to Sanofi-Aventis. In the circumstances it is not necessary to consider whether the terms of the TTA were such that, if sufficient evidence of it had been filed with the Office together with an appropriate request, the Office would have acknowledged a transfer of opposition status. There is more to be noted in this decision, as we shall see in a separate post. To
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NB: This decision is also very well summarized and discussed on Le blog du droit européen des brevets.
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here.
Oldies But Goldies – On Neighbours
K’s Law – The ebook
Oldies But Goldies – On Neighbours 18 Jun 2011
What are the technical domains to be taken into account when assessing inventive step? Where will the skilled person go to find solutions to the technical problem he has to solve? In decision T 176/84 of November 22, 1985, Board 3.2.1 provided some answers to these questions. In this case, the applicant (Moebius) filed an appeal after the Examining Division (ED) had refused its application for lack of inventive step. Claim 1 on file before the Board read (in English translation): 1. A hand-operated pencil sharpener having a container to collect the shavings, enclosed to prevent egress of shavings, in which the aperture through which the pencil to be sharpened is inserted can be completely closed when the sharpener is not in use, preventing such egress, and in which the container consists of a support element (2,2') for the sharpener (3) and the slide member (1,1'), an upper portion (5) mounted on the support element and secured thereon, and a receptacle (6) for the shavings, into which the support element can be slidably fitted, characterised in that the slide member (1, 1') has a contact surface (15,15',15") to receive the point of the pencil to be inserted so shaped or at such an angle to the direction (B,C,B',C') of slide of the slide member that the pressure (A) of the pencil point moves the slide member to the open position and return springing means (16,16') are provided to move the slide member automatically to the position shutting off the inside of the container so as to prevent egress of shavings, and that the contact surface guides the pencil point to the insertion aperture (10,11).
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Oldies But Goldies – On Neighbours
K’s Law – The ebook
DE 1 003 093 [2] The pre-characterising portion of the claims is based on a pencil sharpener of the kind disclosed in German application (Auslegeschrift) 1 003 093. This does not give rise to any objections. A pencil sharpener approximating more closely to the subject-matter of Claim 1 has not been found. Nor is there any objection to the way the features are apportioned between the first part and the characterising part of the claim. Those features of the sharpener which were also present in the sharpener according to the above-mentioned German “Auslegeschrift” are all in the pre-characterising portion. Claim 1 accordingly complies in that respect with the formal requirements of the Convention. [3] The subject-matter of Claim 1 is hence distinguished from the pencil sharpener according to German application (Auslegeschrift) 1 003 093 by the features set out in the characterising portion of the claim. It is further distinguished from the pencil sharpeners disclosed in the other cited documents by its design in the form of a container consisting of a support element, an upper portion and a receptacle for shavings, specified in the pre-characterising portion. The pencil sharpener according to Claim 1 is therefore new in terms of the relevant state of the art. [4] In the case of the pencil sharpener according to German application (Auslegeschrift) 1 003 093, the slide member in the support element acting as a cover for the insertion aperture has to be moved by hand to the closed as well as the open position. According to the description, the applicants find this mode of operation cumbersome. There is also the danger that after the sharpener has been used, the slide member, which is held in the open or closed position by springing means will not be returned to the closed position and that shavings may escape from the container as a result. [5] On the question of whether it was obvious to overcome these disadvantages by designing a sharpener as set out in Claim 1, the following points need to be noted: [5.1] Persons skilled in the art have previously attempted to solve the problem underlying the application insofar as it involves automatically preventing the egress of shavings through the insertion aperture after the sharpener has been used.
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Oldies But Goldies – On Neighbours
K’s Law – The ebook
DE 2 513 051 [5.1.1] Thus according to the teaching of German application (Offenlegungsschrift) 2 513 051, the sharpener housing is fitted with a lid under pressure of a spring which holds the lid in a position covering the insertion aperture when the sharpener is not in use, so that before the pencil is inserted, the lid has to be moved manually against the action of the spring to the position affording access to the aperture and held in that position at least while the pencil is being inserted.
DE 2 819 134 [5.1.2] A spring operating in the direction of the closed position and therefore automatically shutting the insertion aperture is also provided for in the sharpener according to German application (Offenlegungsschrift) 2 819 134. It too, like the subject-matter of Claim 1, involves a closing element consisting of a longitudinally moving slide member. However, as in the case of the lid of the sharpener according to German application (Offenlegungsschrift) 2 513 051, it has to be moved manually to the open position before the pencil is inserted. For this purpose it is fitted with externally projecting gripping means. [5.2] While the pencil sharpener according to Claim 1 also uses the idea of a return spring acting on the slide member in the closing direction to ensure that the insertion aperture is not left open after the sharpener has been used, it also combines that idea with the idea of using the pencil as the operating means for the slide member: the slide member is not moved to the open position until the pencil is inserted. The aforementioned applications, either individually, in combination with each other or in conjunction with US Patent Specification 2 169 908, would not suggest the possibility of implementing the overall idea by the means set out in Claim 1.
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Oldies But Goldies – On Neighbours
K’s Law – The ebook
US 2 169 908 According to the US document’s teaching, the egress of shavings is prevented by removing a lid containing a passageway for the pencil and replacing it in reverse position. [5.3] Whether the pencil sharpener according to Claim 1 represents a modification, suggesting itself to a person skilled in the art, of the securing mechanism for the slot of a savings box according to German application (Offenlegungsschrift) 1 960 978, as the ED maintains but the applicants dispute, need not be considered here as it is not material.
DE 1 960 978 The ED arrived at its conclusion because it was of the opinion that a person skilled in the art wishing to improve the sharpener according to German application (Auslegeschrift) 1 003 093 could be expected to take into account also the field of securing mechanisms for savings-box slots. Such securing mechanisms represented a neighbouring field because both pencil sharpeners and savings boxes belonged to the “broader field of the closing of containers”. The Board is unable to share this view. [5.3.1] While it is indeed perfectly reasonable to expect a person skilled in the art if need be, i.e. in the absence of useful suggestions in the relevant field as to how a given problem might be solved, to look for suitable parallels in neighbouring fields, the question of what is a neighbouring field is one of fact and the solution depends, in the opinion of the Board, on whether the fields are so closely related that the person skilled in the art seeking a solution to a given problem would take into account developments in the neighbouring field. It is furthermore quite reasonable to expect a skilled person to refer to the state of the art in the general field of technology in which the same problems or problems similar to those in the special field of the application extensively arise and of which a person skilled in the art must be expected to be aware. [5.3.2] In the present case, even adopting the same premise as the ED that the person skilled in the art by abstracting the problem would eventually, in his search for suggestions as to how he might solve the problem underlying the application, turn to the broader, that is to say general field of container closing, while he would then have entered what the ED considers to be the generic field, he would not have reached the field of securing mechanisms for savings-box slots. In view of the technological differences between the two fields - storage of 2148 | 3398
Oldies But Goldies – On Neighbours
K’s Law – The ebook
coins in a container as opposed to sharpening of pencils with provision for collection of shavings - there is no reason why it should occur to a skilled person to refer to this specific area - which the ED considers to be part of the same broader field - to see how similar problems had been solved there. [5.3.3] Nor does the IPC direct the skilled person’s attention to the field of securing savings-box slots, since class B 43 L, sub- class 23/00 and its subsidiary groups do not contain a cross- reference to class A 45 C, much less to savings boxes. [5.3.4] The field of such securing mechanisms is therefore not one of the neighbouring fields to which a skilled person concerned with the development of pencil sharpeners would also refer, should the need arise, in search of appropriate solutions to his problem. [5.4] In terms of what is therefore the sole relevant state of the art for pencil sharpeners, the subject-matter of Claim 1 accordingly involves an inventive step under A 56 as has been shown. [6] Claim 1 is hence allowable (A 52). The file wrapper can be found here.
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R 13/10 – The End Of An Error
K’s Law – The ebook
R 13/10 – The End Of An Error 17 Jun 2011
The present petition for review was filed after the Board 3.2.05 had issued decision T 678/08 revoking the opposed patent. In support of this ground the petitioner put forward that: “an immediately obviously erroneous statement going to the root of the invention is made in the Decision by the Appeal Board and, because the serious error by the Board could not have been known by the Petitioners’ Representative at the Oral Proceedings, the Petitioner had no opportunity of pointing out the error to the Board at the Oral Proceedings.” According to the petitioner, a vital feature of the invention of Claim 1 was that the heat-storing thermoplastic portion of the article is heated to a temperature no higher than the melting point of the thermoplastic of that portion. The Board, in its assessment of inventive step, referred to document D4, which includes the statement that “[t]he surface temperature of the element is above the fusion temperature of the plastic material so as to quickly heat this circular area 35 above its melting point”, but nevertheless drew the conclusion that “there is no suggestion that the material of the article should be heated to a temperature above its melting point”. The Enlarged Board (EBA) finds the petition to be admissible and then deals with its allowability: [3] The following documents, the relevance of which had already been stressed in the Board of Appeal's communication dated 23 September 2009, are referred to in the decision under review: D1: US-A-4,507,168 D4: US-A-3,498,868. The Board of Appeal as to the teaching of Document 4, concluded as follows: “Whilst document D4 refers at column 2, line 70 to column 3, line 6 and at column 4, lines 2 to 6, to temperatures above the melting point of polyethylene, these passages relate to the temperature of the heating element itself and teach that the contact of the element with the plastic should only be of a short duration. Thus, there is no suggestion that the material of the article should be heated to a temperature above its melting point. Rather, as set out in claim 1, the heat of the article is such that heat of less than the fusion temperature of the film is applied to the film.” This finding indeed corresponds to the line of argumentation followed by the appellant […] and it cannot for this very reason be disputed that the petitioner was given the opportunity to reply to this argument. Therefore in the absence of any reaction from the petitioner, who neglected to attend the oral proceedings (OPs) held before it, the EBA sees no reason to depart from its provisional opinion set out in its communication that the content of Document D4 has been thoroughly discussed in writing as well as during the OPs held on 29 June 2010 before the Board of Appeal and that the right to be heard of the petitioner in this respect has not been in any way violated. [4] On the other hand the petition relies on the contention that the decision under review contains a contradiction in its reasoning in the form of an “obviously erroneous statement”. It is established case law of the Enlarged Board of Appeal that under the provisions of A 112a it has no jurisdiction and competence whatsoever to enter into the merits of the case. (See R 1/08 to R 22/10). Therefore, even if assuming for the sake of argument that the petitioner were right, this could not alter the fact, that an erroneous statement in the reasons for the decision of a Board of Appeal does not, as a matter of principle, qualify as a ground in the exhaustive list of grounds for review pursuant to A 112a. [5] Hence the present petition for review is clearly unallowable and must be rejected as such. 2150 | 3398
R 13/10 – The End Of An Error
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T 1050/09 – You Can’t Rely
K’s Law – The ebook
T 1050/09 – You Can’t Rely 16 Jun 2011
Imagine two parties before the Opposition Division (OD). Only the opponent has (unconditionally) requested oral proceedings (OPs) to be held. The request has been filed together with the notice of opposition:
The OD has informed the parties that it intends to revoke the patent but still the patent proprietor has not requested OPs. Does the OD commit a substantial procedural violation if it revokes the patent without appointing OPs? In other words, can the patent proprietor rely on the request made by the opponent? E-III 2 of the Guidelines, which deals with OPs to be held at the request of a party, has something to say on that topic: “… If the competent department considers that a decision on the matter may be reached on the basis of the written evidence obtained and intends to take a decision (e.g. in accordance with A 97, A 101 or A 105b) which fully concurs with the case put forward by the party or parties which requested the OPs, the party or parties concerned should be informed accordingly and asked whether the request or requests for OPs will be maintained even though the decision concurs with the case put forward; this will not apply if the party concerned has indicated that the request for OPs has been made solely as a precaution to cover the eventuality of the case put forward by him not being accepted. If the request is not expressly withdrawn, OPs must be held.” (my emphasis) In the present decision the Board deals with such a situation. However, in contrast to what the Guidelines provide, the OD had not asked the opponent whether it maintained its request and had revoked the patent without any OPs. The patent proprietor pointed out that it could rely on the request of the opponent; accordingly, the failure to appoint OPs was a substantial procedural violation, as established in particular by T 795/91. The Board does not agree: [2] In deciding to revoke the patent the OD did not commit a substantial procedural violation. The right to OPs regulated by A 116(1) forms a substantial part of the right to be heard granted by A 113(1). From this it follows that non-compliance with a request for OPs deprives the party of an important opportunity for presenting his case in the manner he wishes and using the possibilities open to him under the EPC (see T 209/88 [4.3]). A 113(1), however, does not confer a formal position on a party to proceedings before the EPO but serves to ensure fair conduct of those proceedings. A successful party has no reason to doubt the correctness of the procedure leading to the decision in its favour. In accordance with the established case law of the boards of appeal (see Case Law, 6th edition, chapter VI.C.2.) the board consequently states that in the case of a request for OPs by a party the OD has no power to issue a decision adversely affecting such party without first appointing OPs (see T 686/92 [3]; T 795/91 [3]). In the present case, however, in view of the positive conclusion in favour of the opponent the OD had reached regarding the question of novelty (see its communication dated 23 May 2008), OPs at the unconditional request of the opponent would have served no purpose. The OD thus treated the opponent’s request for OPs as merely conditional in accordance with A 113(1) and A 116(1) (see T 494/92 [2]).
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T 1050/09 – You Can’t Rely
K’s Law – The ebook
As stated above, it is true that a party to proceedings before the EPO has the right to present its case in the manner it wishes and using the possibilities open to it under the EPC. The party’s right to OPs, however, is subject to a clear request for such proceedings. With communication dated 23 May 2008 the OD informed the parties of its opinion that claim 1 was not novel and that revocation of the patent could be expected. Having received this communication without summons to OPs it was up to the [patent proprietor] to make a clear request for OPs. The OD had no reason to investigate the proprietor’s motivation with regard to procedural requests made by the opponent. I wonder whether the patent proprietor should have invoked the principle of legitimate expectations, in view of the text of the Guidelines and the absence of an explicit withdrawal of the request on behalf of the opponent. To read the whole decision, click here. The file wrapper can be found here.
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T 238/08 – Defining Moments
K’s Law – The ebook
T 238/08 – Defining Moments 15 Jun 2011
Both the opponent and the patent proprietor filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form. In what follows the Board deals with the question of whether the subject-matter of the main request is novel. Claim 10 of this request read: A process of making a microdevice for conducting unit operations on a fluid comprising: - stacking a plurality of shims, each shim having an aperture such that a continuous flow path is formed through the shims; - wherein the flow path extends in a direction substantially parallel to shim thickness; - wherein the plurality of shims comprises at least three shims through which the flow path is formed and wherein a straight, unobstructed line is present through the flow path in said at least three shims; - wherein the plurality of shims are configured such that a unit operation can be performed on a fluid in the flow path; and - bonding the shims to form a device capable of performing a unit operation on a fluid; the device as a laminated device comprising a first set of microchannels wherein each microchannel has an inlet and an outlet, a header connected to the inlets of the first set of microchannels; a footer connected to the outlets of the first set of microchannels; and comprising a header or footer structure, wherein the header has a surface that curves toward at least a portion of the inlets of the first set of microchannels, or the footer has a surface that curves toward at least a portion of the outlets of the first set of microchannels, or the footer comprises a roof, located on a side of the footer opposite the side that is connected to the outlets of the first set of microchannels, and the roof is sloped relative to the outlets of the first set of microchannels. [2.1] D17 (claims 1 and 2; Figures 1 to 3 - reproduced hereinafter) discloses a stacked assembly of plates, the stack having an inlet (12) and an outlet (14) for a first fluid and an inlet (24) and an outlet (34) for a second fluid, characterised in that a first portion of the length of the assembly is formed of first perforated plates (26), each first perforated plate being perforated to define a first series of slots (36) spaced across the plate and a second series of slots (46) spaced across the plate, each slot (36) of the first series being positioned between a pair of slots (46) of the second series, whereby the slots (36) define first passageways through the first portion of the length for a first fluid and the slots (46) define second passageways through the first portion of the length for a second fluid, the first series of passageways being connected to said inlet (12) and outlet (14) for the first fluid, a second portion of the length of the assembly being formed of one or more second perforated plates (20,22), each second perforated plate being perforated to define a first (36A) and a second (46A) series of slots corresponding to the slots of the first plates so as to provide continuing passageways in line with the first and second passageways of the first portion, each slot (46A) of the second series opening at one of its two ends into a feeder slot (50) extending across the second plate and connected to the inlet (24) for the second fluid.
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T 238/08 – Defining Moments
K’s Law – The ebook
[2.2] Figure 1 shows that the number of plates through which the gas flow path is formed is higher than three and Figure 3 shows that the feeder slot (50) has a “surface that curves toward at least a portion of the inlets” of the passageways (46A), as required by claim 10 at issue. [2.3] [The patent proprietor] argued that the subject-matter of claim 10 was novel over document D17, because in the latter neither a microdevice nor microchannels having a diameter of 2 mm or less were disclosed. D17 also did not disclose a header that “has a surface that curves toward at least a portion of the inlets” of microchannels, because in the header according to Figure 3 the flow path was horizontal, while in claim 10 at issue the flow path was vertical, both in the microchannels and in the header. 2.4 The board does not accept the above arguments for the following reasons: First of all, it is to be noted that the terms “microdevice” and “microchannel” are very general and do not have a well-known recognised technical meaning in the field at issue, let alone as regards the dimensions that a microdevice or a microchannel should have.
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T 238/08 – Defining Moments
K’s Law – The ebook
On the one hand, it is true that the term “microchannel” is defined in the contested patent as having certain dimensions (“at least one dimension of 2 mm or less” (paragraph [0031]); “each tubular channel can have a cross-sectional diameter of preferably less than 5 mm and more preferably less than 2 mm” (paragraph [0038])).
On the other hand, according to established jurisprudence (T 1208/97 [4]; T 932/99 [4.3.3]), reading limitations derived from the description into claims in order to avoid objections based on novelty and inventive step is not acceptable. This would contravene the principle that the claims are crucial in fixing the boundaries of the protection, and for this reason, they must be clearly and unambiguously formulated in terms of the technical features of the invention (G 2/88) in order to ensure that there is a reasonable degree of legal security for third parties. So, in the present situation, if a certain dimension of the microchannel or of the microdevice ought to be a novelty establishing feature, it should have been defined and included in the claim at issue. This not being the case, the board does not see any reason not to hold the device according to D17 as being a “microdevice” and the slots (36, 36A, 46, 46A) as being “microchannels” in the sense of claim 1 at issue. As regards the flow path in the alleged invention, it can be seen in particular from Figure 6c (reproduced hereinafter)
- contrary to what has been alleged by [the patent proprietor] - that the flow path is not necessarily vertical in the device, in particular the header, according to the alleged invention. In the device according to D17, the feeder slot (50) - i.e. a header - illustrated in Figure 3 (see point [2.1] above) has a surface that curves toward the inlets of microchannels and so the device disclosed in D17 is clearly and unambiguously disclosed according to the wording of claim 10 at issue. [2.5] It follows from the above reasoning that the device according to D17 comprises all the features of claim 10 at issue. The subject-matter of claim 10 is not novel and hence does not meet the requirements of A 54(1) and (2). Since the main request is not allowable, there is no need to deal with T 840/93 cited by appellant I in respect of claims 2 and 3 of this request. I respectfully disagree, as our American colleagues like to say, with the above treatment of definitions in the specification. The application as filed contained a definition for the term “microchannel” and the fact that it was not reproduced in the claim as such is not sufficient not to take it into account. It is a long-standing practice that the applicant can act as his own lexicographer. T 480/08 [9] has stated this very clearly: It is established practice, that, when drafting an application, an applicant has the right to choose the definitions of terms used therein and to have its own lexicography. 2156 | 3398
T 238/08 – Defining Moments
K’s Law – The ebook
I think this practice should not be hampered, because it makes claim interpretation more straightforward and less arbitrary. And indeed the case law cited in support of the present Board’s approach does not really support it. T 1208/97 dealt with a case where the patent proprietor tried to use A 69 to read limitations into the claim. The Board refused this approach, and rightfully so. But as far as I can see, there were no explicit definitions provided in the specification. T 932/99 is even less appropriate, because it states, in point [4.3.3] of the reasons: “However, a distinction should be drawn between, on the one hand, the fact that it might be necessary to take into account any explicit definition as given in the description for interpreting a claim’s term and, on the other hand, the tentative to use A 69 as a basis for reading limitations derived from the description into claims in order to avoid objections based on lack of novelty or inventive step. The latter approach to claim interpretation by the [patent proprietor], whereby features mentioned only in the description are read into Claim 1 as necessary limitations is incompatible with the EPC (T 1208/97 [4]).” (my emphasis) In other words, T 932/99 rather provides support for the position that explicit definitions should be taken into account. This being said, I would agree to say that the “definition” provided in the patent is not much of a definition. But that is another matter. To
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T 2112/09 – Like Mother, Like Daughter
K’s Law – The ebook
T 2112/09 – Like Mother, Like Daughter 14 Jun 2011
This appeal concerns the refusal of an application by the Examining Division (ED). As a matter of fact, the application under consideration was a divisional application from a parent application that had been granted and was then revoked by the Opposition Division (OD). The patent proprietor had filed an appeal (T 1292/09), but this appeal was dismissed on October 22, 2010. Following the refusal of the divisional application, the applicant filed an appeal. The case was examined by the same Board of appeal in almost the same composition as in the opposition appeal case (2 members identical), only two months after the decision on the parent patent. So it was perhaps not so good an idea to file a main request that encompassed the claim that had been found not to be allowable in the opposition appeal case … *** Translated from the German *** [2.1] The main request was filed as part of written submission made on November 22, 2010, i.e. more than a year after the submission of the statement of grounds of appeal and less than one month before the oral proceedings. Pursuant to Article 13(1) RPBA such a request may be admitted at the Board’s discretion. The discretion is to be exercised in view of the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy. If, as here, the request is amended at a very late stage, the need for procedural economy requires the request to be admitted only if the amended claims forming the request are clearly allowable (also see, for instance, T 153/85 [2.1]). [2.2] The present main request concerns a divisional application to the parent patent that has been revoked by decision T 1292/09, which is final (rechtskräftig). Therefore, it has to be examined whether the objection of lack of inventive step that has been raised in decision T 1292/09 also applies to the main request and, therefore, hinders the latter from being considered to be clearly allowable. [2.3] Claim 1 of the main request and of the patent that was revoked in decision T 1292/09, which is final, have the following wording: Main request (divisional application): 1. The use of an organic polymer which is suitable for feedstuffs for increasing the pelletizing stability of a raw granulate containing enzymes. Parent patent: 1. The use of an organic polymer which is suitable for feedstuffs for increasing the pelletizing stability of granulated feedstuff additives containing enzymes by coating with a polymer, wherein the coating … (followed by several coating alternatives with specific organic polymers suitable for feedstuffs) Claim 1 of the main request is broader than claim 1 that has been found not to be allowable in T 1292/09 and completely overlaps with it, because in contrast to claim 1 of the parent patent, claim 1 of the main request neither limits the granulated component containing enzymes to feedstuff additives nor the polymers to organic polymers suitable for feedstuffs, whereas the remaining features of the claims are identical. It follows directly that the objection of lack of inventive step that was raised by the Board against the subjectmatter of claim 1 of the parent patent applies to the subject-matter of claim 1 of the main request by analogy. There is no indication justifying a different assessment, either. [2.4] Thus the main request does not fulfil the requirement of clear allowability. Consequently, the request is not to be admitted into the proceedings. [2.5] In view of this factual situation, the question of whether there is a res iudicata effect based on the decision of the Board of appeal concerning the parent patent, which is relevant for the divisional application, as discussed in T 51/08 [3], and whether the main request cannot be admitted for this reason alone, may be left unanswered.
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T 2112/09 – Like Mother, Like Daughter
K’s Law – The ebook
As the auxiliary request was found to be unclear, it was not admitted either. So there was no request on file and the appeal had to be dismissed. To read the whole decision (in German), click here. The file wrapper can be found here.
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T 23/10 – They Come In Threes
K’s Law – The ebook
T 23/10 – They Come In Threes 13 Jun 2011
Not long ago, I have reported two cases (here and here) where the Board found auxiliary requests inadmissible because they could have been filed or were withdrawn after having been filed before the Opposition Division (OD). In both cases, Article 12(4) RPBA was invoked, and this article seems to be en vogue. Here is another decision refusing to admit the requests on the same basis. Here the OD revoked the patent because all requests contained claim 11 as granted which was found not to comply with the requirements of A 123(2). Before doing so, the OD had asked the patent proprietor whether it wished to file more requests, but it had declined this offer. The patent proprietor filed an appeal. One main and 15 auxiliary requests were filed together with the statement of grounds of appeal. In each of the auxiliary requests 8 to 15, claim 11 was deleted. Before the oral proceedings (OPs), the patent proprietor withdrew its main request and auxiliary requests 1 to 7. So only auxiliary requests 8 to 15 remained on file. In the following paragraphs, the Board deals with the admissibility of those auxiliary requests. [2.1] In its response to the statement of grounds of appeal, the [opponent] argued that the [patent proprietor] could and should have presented during opposition proceedings amended requests in which the contested claim 11 of the previous main request was deleted. The [patent proprietor] had been invited by the OD to submit new sets of claims addressing its objections under A 100(c) together with A 123(2) regarding dependent claim 11. The [patent proprietor] had however deliberately refused to file amended claims which the OD could have considered as regards the other grounds of opposition raised by the opponents. In the [opponent’s] view, the [patent proprietor] had thereby implicitly waived any rights to have his case heard by two instances. Moreover, the [opponent] believed that the [patent proprietor] had deliberately sought to prolong proceedings by refusing to file amended claims in opposition proceedings and requesting remittal for consideration of outstanding issues in opposition appeal proceedings. The filing of amended claims in appeal proceedings was thus considered to be an abuse of proceedings. Although these arguments were intertwined with the [opponent’s] request relating to remittal, they pertained, upon an objective reading, to the admission into proceedings of auxiliary requests 8 to 15. [2.2] According to the principles developed by the Enlarged Board of Appeal, the appeal procedure is a judicial procedure, separate from the preceding purely administrative opposition procedure, in which an administrative decision of an OD is reviewed by a judicial authority (G 1/97 [5c], G 8/91 [7]). As a consequence, the function of the opposition appeal procedure is mainly to give the losing party an opportunity to challenge the administrative decision against it and to obtain a judicial ruling on whether this decision is correct (G 10/91 [18]). Since the purpose of the appeal is not to conduct the case anew, the issues to be dealt with on appeal are determined by the dispute underlying the opposition proceedings. While this does not preclude new submissions (requests, facts or evidence), their admission is restricted and hinges on the procedural stage at which the submissions are made (T 356/08 [2.1.1], T 1685/07 [6.4]; both decisions cite Brigitte Günzel, The treatment of late submissions in proceedings before the boards of appeal of the EPO, Special edition OJ EPO 2/2007, 30, No. 5). [2.3] A patentee who has lost before an OD thus has the right to have the rejected requests reconsidered by the competent board of appeal. If however the patentee wants other requests to be considered, admission of these requests into the proceedings implies the discretion of the appeal board. This discretion has to be exercised appropriately which requires the appeal board to consider and weigh up the relevant factors having regard to the particular circumstances of each case (Brigitte Günzel, loc. cit., No. 4.1 and 4.2). Examples of factors to be taken into consideration by the boards of appeal when exercising their discretion are the state of the file, the complexity of the new submissions, and the general interest in the appeal proceedings being conducted in an effective and reliable manner. [2.4] The procedural principles developed in the case law regarding the treatment of new submissions in appeal proceedings have been codified at least in part in the Rules of Procedure of the Boards of Appeal (RPBA). 2160 | 3398
T 23/10 – They Come In Threes
K’s Law – The ebook
Article 12(4) RPBA is of relevance in the present case. According to this provision, an appeal board can hold inadmissible facts, evidence or requests that could have been presented in the opposition proceedings. The boards of appeal thus retain discretion, as a review instance, to refuse new material including requests (claim sets) not submitted during opposition proceedings (T 240/04 [16.2], T 1705/07 [8.4]). The discretion given to the boards of appeal pursuant Article 12(4) RPBA serves the purpose of ensuring fair and reliable conduct of judicial proceedings. By requiring all parties to complete their relevant submissions during opposition proceedings, the moment in time when the parties’ case has to be complete is not determined by the procedural strategy chosen by the parties. According to Article 12(4) RPBA, admission of auxiliary requests 8 to 15 into proceedings hinges on the question whether a party to appeal proceedings was in a position to make its submission earlier, and whether it could have been expected to do so under the circumstances. [2.5] Point 34 of the OD’s minutes of the OPs of 27 October 2009 show that the [patent proprietor], after the chairman had announced that the subject-matter of claim 11 did not meet the requirements of A 123(2) and that this conclusion would apply mutatis mutandis to all requests, was asked whether he had any further requests. After an interruption (evidently for consideration of new requests), the [patent proprietor] announced that it had no further requests. These facts were confirmed by the [opponent] in its reply to the statements of grounds and not contested by the [patent proprietor]. The [patent proprietor] thus was given the opportunity to file amended requests but did not avail himself of this option. [2.6] The [patent proprietor] advanced as the reason for its conduct of the proceedings that it had been necessary to study the decision in writing before amendments could have been made. The [patent proprietor] referred to decision T 269/02. This decision however is not to the point: the reasoning to which the [patent proprietor] referred is concerned with a request for apportionment of costs pursuant to A 104(1), which implies considerations proper to this provision. Moreover, while this request turned on the issue of whether the claim sets on appeal could have been submitted during opposition proceedings, the facts underlying the decision are distinct from the present case: two features of an independent claim which had been deleted in the granting procedure were objected to on the ground of A 100(c) together with A 123(2). At OPs before the OD, this issue was first discussed with the parties, although the OD, in the communication accompanying the summons to OPs, had not mentioned that deletion of these features would possibly be a point which needed to be discussed for the purposes of the decision to be taken. At the end of the debate, the chairman directly announced that the requests before the OD did not meet the requirements of A 100(c) together with A 123(2). The [patent proprietor] was not given the opportunity to consider and file amended requests as in the present case. In its decision, the OD found the deletion of only one of the features to be an inadmissible broadening of the claims. This finding was not made known to the patentee during OPs. Under these circumstances, the board of appeal held that the patentee could not have anticipated that the deletion of the features objected to would prejudice, in whole or in part, the maintenance of the European patent in opposition proceedings. The dispute dealt with in decision T 269/02 is thus different from the present case. Besides, the [patent proprietor] gave no explanation as to why it had needed to study the decision of the OD in writing in order to be able to decide on the formulation of appropriate requests. As the [opponent] pointed out, the objections regarding dependent claim 11 were no surprise to the [patent proprietor] and did not involve complex issues that justified the need to await the decision of the OD. The deletion of dependent claim 11 in all requests under consideration was a straightforward amendment suitable to address the OD’s objections that had been made known to the [patent proprietor]. Thus, the board cannot accept that the [patent proprietor] could not have been expected to submit amended requests because their drafting required difficult technical considerations. [2.7] The [patent proprietor] further argued that it was its right not to be pushed into making amendments it did not want to make. The patentee did not want to delete dependent claim 11 as granted because of the commercial interest in the subject-matter claimed therein. According to the principle of party disposition, it is the patentee’s sole right and responsibility to define the subject-matter of the patent in opposition proceedings. The board therefore concurs with the [patent proprietor’s] position that it is the patentee’s right to decide whether or not to file amended claim sets. The principle of party disposition is however counterbalanced by the general interest in the proceedings being conducted in an effective and reliable manner. Moreover, the extent to which a party may have its case examined depends on whether the proceedings are before an administrative or judicial authority […]. Therefore, the principle of party disposition cannot give rise to a right of the [patent proprietor] to have requests automatically admitted at any stage of opposition and opposition appeal proceedings.
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T 23/10 – They Come In Threes
K’s Law – The ebook
Like any party to opposition proceedings, the patentee is under an obligation to conduct them with due care. In order to render the procedure transparent, fair, and effective and in order to achieve legal certainty, Article 12(4) RPBA requires all parties to complete their relevant submissions during opposition proceedings […]. The [patent proprietor], in the present case, was thus under the procedural obligation to file its claim requests at that stage of proceedings, unless there were compelling reasons for being given an opportunity to amend the claims at a later stage. The [patent proprietor] has not presented any good reason in this regard. Concerning the [patent proprietor’s] alleged commercial interests in the embodiment of dependent claim 11, the board notes that the [patent proprietor] could have maintained the requests which the OD had found to be unallowable and could have submitted new claim sets in addition to these requests. It would then have been incumbent on the OD to give a reasoned decision on all requests found unallowable. The [patent proprietor] would thus have preserved its right for judicial review and could still have evaluated the commercial interest on appeal without delaying the proceedings. [2.8] No other reason has been advanced that could satisfy the board that the [patent proprietor] has conducted its proceedings with the required diligence. On the contrary, the [patent proprietor], when seeking remittal on the basis of new claim sets on appeal, acted in a manner inconsistent with its prior conduct: during opposition proceedings, the [patent proprietor] chose not to file claim sets in which dependent claim 11 was deleted. Since the wording of the claims constitutes the basis on which maintenance of the patent is judged, the [patent proprietor], by retaining such claim requests, deliberately limited the dispute before the OD and prevented the OD from considering other grounds for opposition than A 100(c). On appeal, the [patent proprietor], on the basis of new claim sets which it had previously chosen not to submit, requested that the case be remitted to the OD for consideration of outstanding issues which the [patent proprietor] had previously prevented from being considered. To admit auxiliary requests 8 to 15 into the proceedings would allow the [patent proprietor] to take advantage of its inconsistent conduct of the proceedings: the [patent proprietor] could complete its case on appeal and thus extend the scope of discussion as determined by the decision under appeal. Since the appeal board cannot be expected, as a review instance, to deal with all the outstanding issues after the amendment of the [patent proprietor’s] case, admission of auxiliary requests 8 to 15 into the proceedings would give the [patent proprietor] the opportunity to compel the board to remit the case (cf. T 240/04 [16.3]). This would disadvantage the [opponent]s who could have reasonably expected that the requests considered by the OD would form the substantial basis for appeal proceedings. Moreover, the [opponent]s would be forced to either accept remittal and prolongation of proceedings or, in the alternative, to abandon the option of having the case considered by the OD, in which case the [opponent]s would need to convince the board to exercise the powers within the competence of the OD under A 111(1). Admission of auxiliary requests 8 to 15 into proceedings would thus be contrary to a reliable and fair conduct of proceedings. When exercising its discretion under Article 12(4) RPBA, the board is required to prevent the use of the appeal procedure in a way which runs counter to the interest in a fair and reliable conduct of judicial proceedings. A patentee withholding claim requests in opposition proceedings should thus be precluded from having those requests admitted on appeal, since the patentee would otherwise be permitted to disadvantage the adverse parties by conducting appeal proceedings contrary to its actions before the OD. In view of the foregoing, the board concurs with decision T 1705/07 [8.7] which refers to the principle “nemo auditur propriam turpitudinem allegans”. [2.9] To the [patent proprietor’s] improper conduct of proceedings must be added, in the present case, its failure to substantiate its new claim requests as required. Although this is not crucial to the present decision, the board notes that where sufficient grounds within the meaning of A 108, third sentence, have not been furnished in relation to a new claim request, the board could not admit these requests for that reason alone (see T 382/96 [5.5], T 509/07 [2.1-3]). [2.10] In conclusion, the board, having regard to the facts and arguments presented to it, decided to make use of its discretionary powers according to Article 12(4) RPBA not to admit auxiliary requests 8 to 15 into the proceedings. Since no other requests were submitted, the appeal is to be dismissed. If generalised, this approach is going to change the way in which opposition proceedings have to be conducted by patent proprietors. I think the EPO should publish one of these decisions in the Official Journal so that more people than just case law blog readers become aware of this trend. To read the whole decision, click here. The file wrapper can be found here.
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T 23/10 – They Come In Threes
K’s Law – The ebook
NB : Laurent Teyssèdre has already commented this decision here.
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T 1854/07 – It’s Broad, Says The Board
K’s Law – The ebook
T 1854/07 – It’s Broad, Says The Board 11 Jun 2011
The present decision deals with an appeal by the opponent (Greenpeace) against the decision of the Opposition Division (OD) to maintain the patent in amended form. Claim 1 and 11 on file read: 1. Sunflower seeds that contain an oil having an oleic acid content of more than 5% and less than 65% by weight based upon the total fatty acid content, a linoleic acid content of more than 1% and less than 65% by weight based upon the total fatty acid content, a palmitic acid content of more than 20% and less than 40% by weight based upon the total fatty acid content, a stearic acid content of more than 3% and less than 15% based upon the total fatty acid content, characterized in that the palmitoleic acid content is less than 4% based upon the total fatty acid content, and the asclepic acid content is less than 4% based upon the total fatty acid content, obtainable by crossing the high stearic line CAS-3, deposited on 14 December 1994 with the ATCC under deposit accession number ATCC-75968 with a high palmitic line to introduce the stearoyl desaturase enzymatic activity of the high stearic line in the high palmitic line, and selecting seed of F2 generations in which the amount of palmitoleic is decreased to less than 4% based upon the total fatty acid content and the amount of asclepic acid is decreased to less than 3% based upon the total fatty acid content. 11. Seeds according to any one of claims 1-10, obtainable by crossing sunflower seeds of the mutant sunflower line IG-1297M deposited on 20 January 1998 with ATCC under deposit accession number ATCC-209591 with the mutant sunflower line CAS-3, deposited on 14 December 1994 with the ATCC under deposit accession number ATCC-75968. The opponent argued inter alia that Claim 1 was excluded from patentability under A 53(b), in particular because it referred to an essentially biological process for the protection of plants, and because it was directed to and inevitably resulted in a plant variety. The Board did not adopt this reasoning: [4] For the purpose of the present decision, although claims 1 and 11 are directed to sunflower seeds, the latter will be interchangeably considered as plants, given that plants may be grown from seeds, which represent one stage in the life cycle of the plant. [5] Claim 1 refers to a product defined in terms of the process by which it is produced. Such “product by process” claim remains a product claim irrespective of the process it refers to. [Opponent’s] argument, that claim 1 refers to an essentially biological process for the protection of plants which is excluded from patentability according to A 53(b), must therefore fail. [6] For the following consideration of the requirements of A 53(b), the board has to draw the parties’ attention to the exact wording of this Article, which reads: “European patents shall not be granted in respect of: (b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof”. [7] As the Enlarged Board of Appeal (EBA) observed in decision G 1/98 [3.3.1], “[w]hereas the exclusion for processes is related to the production of plants, the exclusion for products is related to plant varieties. The use of the more specific term ‘variety’ within the same half-sentence of the provision relating to products is supposed to have some meaning. If it was the intention of the legislator to exclude plants as a group embracing in general varieties as products, the provision would use the more general term plants as used for the processes.” In G 1/98 [3.10] the EBA states 2164 | 3398
T 1854/07 – It’s Broad, Says The Board
K’s Law – The ebook
“[t]hat A 53(b) defines the borderline between patent protection and plant variety protection. The extent of the exclusion for patents is the obverse of the availability of plant variety rights. The latter are only granted for specific plant varieties and not for technical teachings which can be implemented in an indefinite number of plant varieties. This is not a question of arithmetical logic but based on the purpose of plant variety rights to protect specific products which are used in farming and gardening.” [8] One of the questions (question 2) referred to the EBA and answered by it in decision G 1/98 read: “Does a claim which relates to plants but wherein specific plant varieties are not individually claimed ipso facto avoid the prohibition on patenting in A 53(b) even though it embraces plant varieties?” The answer of the EBA to this question was the following: “A claim wherein specific plant varieties are not individually claimed is not excluded from patentability under A 53(b), even though it may embrace plant varieties.” [9] The [opponent’s] major argument in this appeal was that decision G 1/98 was exclusively concerned with plant varieties as products of recombinant gene technology and was therefore not applicable in the present case. The claims in the present case referred to plants (seeds) produced by classical plant breeding methods consisting of crossing and selection and were accordingly directed to plant varieties which were excluded from patentability by A 53(b). According to the [opponent’s] interpretation of decision G 1/98 the EBA has decided that plants defined by the introduction (e.g. via a transgene) of a single identifiable trait (i.e. the claimed phenotype) were patentable whereas patenting was prohibited when the plants were the result of the interaction of several genetic components (including whole genomes), as occurs in traditional plant breeding by methods based on crossing and selection. The [opponent] concluded that the EBA considered plants to be patentable only when the genetic basis of their characterising trait (the underlying DNA) could be indentified, i.e. when the trait could be transferred between species. [10] The board cannot agree with the [opponent’s] interpretation of decision G 1/98 and the conclusions drawn therefrom. [10.1] The decision (in point [3.1]) cites the exact definition given for a “plant variety” in Article 1(vi) of the UPOV Convention 1991, which is identical in substance to the definition given in Article 5(2) of the EC Regulation on Community Plant Variety Rights and in R 26(4) (former R 23b(4)), which reads: “(4) ‘Plant variety’ means any plant grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective of whether the conditions for the grant of a plant variety right are fully met, can be: (a) defined by the expression of the characteristics that result from a given genotype or combination of genotypes, (b) distinguished from any other plant grouping by the expression of at least one of the said characteristics, and (c) considered as a unit with regard to its suitability for being propagated unchanged.” [10.2] The decision goes on to conclude that: “The reference to the expression of the characteristics that results from a given genotype or combination of genotypes is a reference to the entire constitution of a plant or a set of genetic information.” The decision then states that “[i]n contrast, a plant defined by single recombinant DNA sequences is not an individual plant grouping to which an entire constitution can be attributed. … It is not a concrete living being or grouping of concrete living beings but an abstract and open definition embracing an indefinite number of individual entities defined by a part of its genotype or by a property bestowed on it by that part.” [10.3] Decision G 1/98 is not concerned with methods or steps for obtaining a new plant, be it a variety or not, but exclusively with the issue whether this new plant is a variety or not. This becomes evident from the answer given by the EBA in response to question (4) referred to it, which answer reads: “The exception to patentability in A 53(b), 1st half-sentence, applies to plant varieties irrespective of the way in which they were produced. Therefore, plant varieties containing 2165 | 3398
T 1854/07 – It’s Broad, Says The Board
K’s Law – The ebook
genes introduced into an ancestral plant by recombinant gene technology are excluded from patentability.” [10.4] Thus, although it is evident that the actual technical situation underlying decision G 1/98 refers to a plant produced by recombinant gene technology, in the present board’s view the decision does not contain any basis for the assumption that the findings of the EBA, particularly its answer to question (2) referred to it (see point [8] above), only apply to genetically manipulated plants. On the contrary, decision G 1/98 makes clear beyond doubt that, whether or not a plant is considered to be a plant variety depends only on whether or not it meets the criteria set out in the definition in R 26(4) (former R 23b(4)). The method for its production, be it by recombinant gene technology or by a classical plant breeding process, is not relevant for answering this question. It is not called into question that a plant variety may be the product of crossing and selection […] but, contrary to the [opponent’s] view, it cannot be derived from decision G 1/98 that a plant by definition is not a variety when the claimed phenotype has been obtained by introduction of a transgene, whereas it is automatically a variety when the plant having the desired phenotype is achieved in a more traditional way, for example by mutagenesis or by crossing and selection. [11] The presently claimed sunflower plants (seeds) are characterised by having a preferred fatty acid profile, mainly characterised by a high content of the desired oleic acid and a low content of the undesired palmitoleic acid. According to claim 1, they are obtained by a process including crossing the defined and deposited “high stearic line” CAS-3 with a “high palmitic line”, and selecting seeds of plants of the F2 generation. According to claim 11 the “high palmitic line” is the defined and deposited breeding line IG 1297-M. [12] According to the [opponent], the claimed phenotypic trait (the fatty acid pattern) is not a result of a single transgene but of the interaction of a plurality of genetic components, or even of the entire genotype or combination of genotypes together with epigenetic effects and could only be stably transmitted by these as a whole and not as a single identifiable and transferable technical feature or genetic building block. This would have the consequence that the plants (seeds) obtained by the process referred to in claim 1 meet all criteria of the definition of a plant variety given in R 26(4) (former R 23b(4)). [13] The board disagrees with the [opponent’s] proposition. The trait as presently claimed (a change in the fatty acid composition of the sunflower plant) is determined by a limited number of enzymes (and DNAs encoding them) rather than by a complete genetic constitution […]. This part of the genotype which is responsible for the claimed trait can be bestowed upon many different sunflower lines. The lower stearoyl-ACP-desaturase gene from CAS-3 can indeed be introduced into “high palmitic” sunflower lines thus reducing the levels of palmitoleic and asclepic acids […]. Example 4 of the patent and post-published document D6 show that this trait can be bestowed upon different “high palmitic” sunflower lines. The genetic equipment defining one specific trait of a plant (seed), namely its fatty acid pattern which is regulated by a limited number of enzymes, does not constitute its “genotype”, which defines its entire genetic makeup. The claimed plants (seeds) are not therefore “defined by the expression of the characteristics that result from a given genotype or combination of genotypes” (R 26(4)(a)). [14] Following a different line of argument, the [opponent] maintained that a strict reading of R 26(4)(b) had to lead to the conclusion that a single phenotypic trait (e.g. in the present case the claimed fatty acid profile) was sufficient for the plant to fall within the definition of plant variety, provided the single phenotypic trait allowed the plants to be distinguished from any other plant grouping and the single phenotypic trait was stably passed on during propagation. In the light of the board’s findings in point [13] above this argument is also without merit. [15] It remains to be established whether carrying out the method recited in claim 1 (crossing the CAS-3 line with a “high palmitic” sunflower line, and selecting seeds of plants of the F2 generation) inevitably results in a plant variety, as the [opponent] argues. [16] The parent CAS-3 line is a sunflower breeding line. The [patent proprietor] pointed out that an application for variety protection was not successful. While a consensus seems to have existed between the parties during the opposition procedure that a “breeding line” contains more phenotypic variation than a plant variety […], in the oral proceedings before the board of appeal, the [opponent] took the view that a breeding line (in German “Linie”) and a variety (in German “Sorte”) 2166 | 3398
T 1854/07 – It’s Broad, Says The Board
K’s Law – The ebook
defined the same entity with the only exception that a variety was registered and a breeding line not. No evidence was provided for this assumption. The only further information relating to CAS-3 appears from the declarations of Juan Fernandez-Perez and Ricardo R. Siciliano Giner filed by the [patent proprietor] on 26 March 2007, stating that this line was not uniform. Therefore, in the light of the evidence on file, the board has no reason to assume that the parent CAS-3 line is a plant variety. The “high palmitic” line referred to in claim 1 is not restricted to any particular deposited line or variety. Thus the claim allows the use of any sunflower provided it has a high palmitic acid content. There is also no requirement in the claim that the genetic background of the high palmitic lines be the same as that of the high stearic line (CAS-3). Therefore, the only possible way in which the claimed progeny could result in a variety or group of varieties is if the stabilisation of the desired phenotype through backcrossing led to phenotypic homogeneity. In the present case, the wording of the claim (“selecting seed of the F2 generation”) only requires a single backcross. There is no evidence before the board that this single backcross would result in a plant variety. [17] In claim 11 the “high palmitic” parent line is defined as being the deposited line IG 1297-M. This line does not possess the same genetic background as CAS-3, and is not uniform […]. There is no evidence before the board, either, that a single backcross, as required by the claims would result in a plant variety. [18] Accordingly, the board arrives at the decision that both claims 1 and 11 do not individually claim a plant variety even though they may embrace plant varieties. Therefore, following decision G 1/98 […] the subject-matter of these claims, as well as that of claims 2 to 10 and 13 to 15, is not excluded from patentability under A 53(b). To read the whole decision, click here.
The file wrapper can be found here.
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T 1837/07 – Wiping The Slate Clean
K’s Law – The ebook
T 1837/07 – Wiping The Slate Clean 10 Jun 2011
The present appeal was filed after the Examining Division (ED) had refused an application because its subjectmatter did not comply with the requirements of A 52(4), A 84, A 123(2), A 56 or A 56. In two communications dated December 21, 2004 and April 3, 2006, the ED had held that independent claims 1 and 17 did not comply with A 84 and A 123(2). In its response the applicant requested oral proceedings (OPs) to be held if the ED considered refusing the application. On October 31, 2006, the ED summoned the applicant to OPs to be held on January 15, 2007. It was announced that objections under A 84 and A 123(2) against the main request and three auxiliary requests were to be discussed. About one week before the OPs, the applicant informed the ED that it would not attend the OPs and filed another auxiliary request. During the OPs (in the absence of the applicant) the ED confirmed several objections and raised new objections. It gave the applicant the opportunity to comment on the latter in writing. The applicant filed a response on May 29, 2007 and requested a patent to be granted on the basis of the former main request or two new auxiliary requests. It also requested suspension of the proceedings in view of the then pending referral G 1/07 and OPs to be held in case the ED intended to refuse the application. On June 2007 the ED issued the impugned decision refusing the application. In its decision the ED stated that it had not admitted the latest auxiliary requests. The Board found that the decision was insufficiently reasoned, which amounted to a violation of R 68(2). The decision also contains some interesting paragraphs on the application of R 86(3) EPC 1973. NB: It is true that the provisions which are applicable today are somewhat different (thanks to EPC 2000 and the Raising the Bar initiative), which means that the following paragraphs are of more historical interest. Nevertheless it is stimulating to compare the situation under the EPC 1973 with what we have today. [3] Pursuant to R 86(3), first sentence, EPC 1973, after receipt of the first communication from the ED, the applicant may, of his own volition, amend once the description, claims and drawings provided that the amendment is filed at the same time as the reply to the communication. Hence, under this provision, amendments have to be considered by the ED even if they are not specifically aimed at answering the objections raised in the first communication. A fortiori amendments aimed at answering such objections must be taken into account. Pursuant to R 86(3), second sentence, EPC 1973, only further amendments require the consent of the ED. It is recalled that under R 51(3) EPC 1973, any communication under A 96(2) EPC 1973 shall contain a reasoned statement covering, where appropriate, all the grounds against the grant of the European patent. This applies in particular for the first communication. This means that if, for whatever reason, the ED chooses not to mention all the grounds in the first communication and mentions some of them only in a further communication, this communication is the first communication for these reasons according to R 86(3) EPC 1973 and the ED cannot refuse to consider an attempt to overcome these newly raised objections in the subsequent response of the applicant. In the present case, apart from the objections under A 84 and A 123(2) EPC 1973 against claim 1 of the main request already raised earlier, the ED raised the objections under A 52(4) and A 56 EPC 1973 against this same 2168 | 3398
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claim for the first time in the minutes of the OPs, sent on 19 January 2007, and then as the next step refused to consider the first and second auxiliary requests filed with the answer to the minutes. As a matter of fact the first and second auxiliary requests were not introduced into the procedure because the ED had “warned” the appellant in the minutes of the OPs that “amendments which are not prima facie allowable may not be admitted into the proceedings pursuant to R 86(3)” and, as already mentioned above, the ED considered that the requests were clearly not allowable under A 52(4), A 84 and/or A 123(2) EPC 1973 and moreover were late filed. However, in the opinion of the Board, at least the second auxiliary request must be considered as an attempt to overcome all objections raised by the ED against claim 1 of the main request:
the objections under A 84 and A 123(2) EPC 1973 because the original wording of the first part of claim 1 has been maintained, which part was never objected to under A 84 EPC 1973, and; this originally filed wording can obviously not infringe A 123(2) EPC 1973; the objection under A 56 EPC because additional features have been introduced into claim 1, and the objection under A 52(4) EPC 1973 because a disclaimer has been introduced into claim 1.
For this reason the Board is of the opinion that the provision of R 86(3), second sentence, EPC 1973, is in fact not applicable to the second auxiliary request at all as the objections of lack of inventive step and exclusion from patentability under A 52(4) EPC 1973 against claim 1 of the main request were raised for the first time in the communication (i.e. the minutes of the oral proceedings) preceding the refusal to introduce the second auxiliary request into the proceedings. These minutes of the ED have to be considered as the first communication within the meaning of R 86(3), first sentence, EPC 1973, with regard to these objections, and hence, claim 1 according to the second auxiliary request filed with letter of 29 May 2007 being an attempt to overcome the objections made in these minutes, there is no room to refuse these claims under R 86(3), second sentence, EPC 1973. R 86(3) EPC 1973 thus has not been applied in a reasonable way in relation to the second auxiliary request, and this is an additional procedural violation. In contrast to R 51(3) EPC 1973, which has remained unchanged as to its substance when becoming R 71(2)EPC 2000:
A 94(3) has undergone some change (as compared to A 96(2) EPC 1973):
and R 137(2) and (3) as in force today is quite different from R 86(2) and (3) EPC 1973: 2169 | 3398
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If my understanding of the situation is correct, nowadays the applicant uses its single opportunity to amend without the consent of the ED when answering the notification under R 70a (or R 161 in case of a Euro-PCT). This means that the exact logic applied by the Board to the case above would not operate because R 137 as applicable today does not refer to a first communication any more. Does this mean that the situation is completely different today? I guess not, because in case the ED raises new objections later on, under A 94(3), it will have to give the applicant the opportunity to amend the application so as to overcome the objections. What then is the difference? My view of things (but I am open to correction) is that amendments the applicant makes “of his own volition” can be very profound, e.g. the applicant can switch from product claims to method claims, etc. (provided there is a basis in the application and there were no limitations of the search, that is). This makes sense when the amendments are made in response to the search report, and this possibility has remained unchanged with respect to the EPC 1973. Amendments made in response to communications under A 94(3) will as a rule have to stick to the objections made and profound changes as the one mentioned above might well be refused if they do not help to overcome the objections. Under the EPC 1973, the ED could not object to such amendments, whereas now it can. So, if my view of things is correct, under R 86 EPC 1973, as understood by Board 3.2.02, the applicant could have profoundly modified its claims in response to the new objections of the ED without having to ask for the approval of the ED (because they constituted a new “first communication” within the meaning of R 86(3) EPC 1973), but the same is not true under R 137 as in force today. This being said, even today the ED would have to admit auxiliary requests filed in response to a communication under A 94(3), if they constitute a serious attempt to overcome the objections, and not admitting such requests would still be a procedural violation. Admittedly, most of this is somewhat bookish, and it may well be that your practice regarding amendments has hardly changed since we have been offered the EPC 2000 and Raising the Bar. Mine certainly has not (except for the fact that R 161 notifications have to be answered). It would be interesting to hear what things look like from the Examiner’s point of view. Has your practice with regard to amendments changed in any significant way? If so, how? To download the whole decision, click here. The file wrapper can be found here.
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T 1878/08 – Significant?
K’s Law – The ebook
T 1878/08 – Significant? 9 Jun 2011
When amending claims during examining proceedings by adding features, thereby limiting the scope of protection, one has to be very careful because such amendments can lead into the most famous of the “inescapable traps”. If the added feature is not directly and unambiguously disclosed in the application as filed, deleting the feature in post-grant proceedings will lead to an extension of the scope of protection, which is contrary to A 123(3). Nevertheless, one cannot keep the feature because the patent will not comply with A 123(2) as long as the feature is present. G 1/93 has dealt in detail with this situation and found that “such a patent can, therefore, only be maintained if there is a basis in the application as filed for replacing [this feature] without violating A 123(3).” But if there is no such basis in the application, is there anything that can be done? G 1/93 [headnote 2] indicates a last possible way out: “A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed in the sense of A 123(2). The ground for opposition under A 100(c) therefore does not prejudice the maintenance of a European patent which includes such a feature.” In other words, one can try to persuade the Opposition Division (OD) or the Board of appeal that the feature does not provide any technical contribution. This is what the patent proprietor tried to do in the present case. Claim 1 as filed read: 1. A working fluid composition comprising: (A) a heat transfer fluid comprising a mixture of at least two compounds selected from the group consisting of hydrofluoroalkanes and fluoroalkanes; and (B) sufficient to provide lubrication of a lubricant which is at least partially soluble in each component of the heat transfer fluid. In response to objections by the Examining Division (ED), the applicant filed amended claims. Claim 1 as amended read: 1. A working fluid composition comprising: (A) a heat transfer fluid comprising a mixture of at least two hydrofluoroalkanes selected from the group consisting of difluoromethane, 1,1,1,2-tetrafluoroethane and pentafluoroethane; and (B) a sufficient amount of a lubricant to provide for lubrication of a compressor wherein the lubricant is at least partially soluble in each component of the heat transfer fluid and comprises one or more compounds of general formula:
wherein R is the hydrocarbon radical remaining after removing the hydroxyl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol or the hydroxyl containing hydrocarbon radical remaining after removing a
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proportion of the hydroxyl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol; each R1 is, independently, H, a straight chain (linear) aliphatic hydrocarbyl group, a branched aliphatic hydrocarbyl group, or an aliphatic hydrocarbyl group (linear or branched) containing a carboxylic acid or carboxylic acid ester substituent, provided that at least one R1 group is a linear aliphatic hydrocarbyl group or a branched aliphatic hydrocarbyl group; and n is an integer. The amendment of part (B) was justified as follows:
The second paragraph on page 2 reads:
The patent was finally granted as amended. The Opposition Division (OD) found the feature “a sufficient amount of a lubricant to provide for lubrication of a compressor” not to be disclosed in the application as filed and revoked the patent. Here is what the Board had to say on the main request (patent as granted): [3.1] In order to determine whether or not an amendment adds subject-matter extending beyond the content of the application as filed, it has to be examined whether technical information has been introduced which a skilled person would not have directly and unambiguously derived from the application as filed, either explicitly or implicitly. [3.2] In the decision under appeal, the OD found that the feature “a sufficient amount of a lubricant to provide for lubrication of a compressor” had no support in the application as filed. Thus, this feature will hereinafter be examined for its basis in the application as filed. [3.3] Claim 1 as granted is directed to a working fluid composition comprising a mixture of at least two hydrofluoroalkanes and a lubricant. During examination proceedings the amount of lubricant, which according to 2172 | 3398
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the original wording had to be “sufficient to provide lubrication” has been amended to “a sufficient amount of a lubricant to provide for lubrication of a compressor”. [3.4] This feature is not explicitly disclosed in the application as filed, as conceded by the [patent proprietor]. He submitted, however, that this feature was implicitly disclosed, citing in particular page 2, line 16 and page 20, lines 29 to 30. The passage on page 2 relates to conventional working fluids on basis of fluoroalkanes, which use mineral oil to ensure proper lubrication of the compressor and the passage on page 20 discloses that the working fluid compositions of the patent in suit are suitable for use in all types of compression cycle heat transfer devices.
page 20, lines 29 and 30 Even though the claimed working fluid compositions were replacing the conventional working fluids a skilled man when selecting an amount of lubricant sufficient to provide lubrication would not necessarily have selected the amount of lubricant to be sufficient to provide lubrication of a compressor, since, as stated on page 1, paragraph 2 of the application the heat transfer devices of the mechanical compression type comprise moving parts other than the compressor, such as pumps or valves, which also need lubrication. Further, as conceded by the [patent proprietor], there existed compressors that do not even need any internal lubrication. Therefore, a skilled person, when reading the application would not have derived directly and unambiguously the information that an amount of lubricant “sufficient to provide lubrication”, as in the original wording of claim 1, was necessarily “a sufficient amount to provide for lubrication of a compressor”. Consequently, the feature relating to “a sufficient amount of a lubricant to provide for lubrication of a compressor” constituted technical information extending beyond the content of the application as filed. [3.5] In referring to decision G 1/93 the [patent proprietor] argued that the amount of lubricant, which according to the original wording was “sufficient to provide lubrication” directly corresponded to the amended wording “a sufficient amount to provide for lubrication of a compressor”, since the skilled man would have considered the compressor as being the only moving part that needed lubrication. Therefore, the amendment did not have any technical contribution. However, as admitted by the technical expert the amount of lubricant which is sufficient to lubricate a compressor is dependent on the design and type of the heat transfer device used, on the type of compressor used and on the chemical components used in the working fluid. Therefore, the technical feature relating to “a sufficient amount to provide for lubrication of a compressor” is restricting the scope of granted claim 1 and is technically significant. Therefore, the situation in the present case is different from that referred to in decision G 1/93, with the consequence that the amendment does offend against A 123(2). In the end, the patent proprietor did not manage to get out of the inescapable trap; the appeal was dismissed. To read the whole decision, click here. The file wrapper can be found here.
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T 1001/07 – Anointed Yet Doomed
K’s Law – The ebook
T 1001/07 – Anointed Yet Doomed 8 Jun 2011
This appeal deals with the refusal of an application by the Examining Division (ED). Claim 1 of the application as filed read: 1. Pharmaceutical ointment for use in the therapy of dermatologic diseases consisting of Vaseline, Hydrochloric Acid solution 37%, Boric Acid, and Oil of Black Cedar in the following proportions: - 1000 gr of Vaseline used as an excipient; - 100-150 ml of Hydrochloric Acid solution 37%; - 30 gr of Boric Acid; - 30 gr Oil of Black Cedar. The ED refused the application because claim 1 did not comply with the requirements of A 83 and A 84. The term “Black Cedar” could be understood as three different unrelated plant species which resulted in the fact that the subject-matter of the claim was not clearly defined (A 84) and not disclosed in the application in a manner sufficient for a skilled person to put it into practice (A 83). Together with the notice of appeal, the applicant submitted a new set of claims. Claim 1 of this set of claims read: 1. Pharmaceutical ointment for use in the therapy of dermatologic diseases consisting of Vaseline, Hydrochloric Acid solution 37%, Boric Acid, and Oil CADE in the following proportions: - 1000 gr of Vaseline used as an excipient; - 100-150ml of Hydrochloric Acid solution 37%; - 30 gr of Boric Acid; - 30gr Oil CADE (oil of Juniperus Oxycedrus). In what follows the Board deals with the question of whether this amendment complies with A 123(2): [4] A 123(2) requires that the application shall not be amended so as to contain subject-matter which extends beyond the content of the application as filed. [5] The present claim 1 refers first to “Oil CADE” and subsequently to “Oil CADE (oil of Juniperus Oxycedrus)” instead of to “Oil of Black Cedar” on both occasions in the claim as originally filed. [6] There is no explicit basis in the application as filed for either of the expressions “Oil CADE” or "oil of Juniperus Oxycedrus". Based on evidence contained in documents D1 to D3, the ED found, in the decision under appeal in the context of the assessment of compliance with A 83 and A 84, that the term “Black Cedar” was not an accepted common denomination for any particular plant species. In fact, it established that document D1 referred to Black Cedar in its scientific denomination as being Thuja occidentalis Nigra, document D2 as being Nectandra pisi, whereas according to the priority document for the application Black Cedar was equivalent to CADE, which according to document D3 corresponded to Juniperus oxycedrus. [7] In accordance with established case law of the boards of appeal, the relevant question to be decided in assessing whether an amendment adds subject-matter extending beyond the content of the application as filed is whether the proposed amendment is “directly and unambiguously” derivable from the application as filed (see Case Law of the Boards of Appeal of the European Patent Office, 6th Edition 2010, III.A.7). [8] In view of the above finding by the ED, and contrary to the argument of the appellant that the term “Black Cedar” is synonymous with either of the terms CADE or Juniperus oxycedrus, there exists no unambiguous technical correspondence for these terms in the relevant technical field. The board therefore necessarily concludes that neither “Oil CADE” or “Juniperus Oxycedrus” is directly and unambiguously derivable from the application as filed. 2174 | 3398
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[9] The appellant has argued that oil of black cedar (oil cade) was found “in the market” where the appellant bought it for the preparation of the ointment (document De) and could there also be found as Juniperus oxycedrus – oil cade. Document (De), a certificate of analysis dated 2 June 2006 for a certain batch of “cade oil” ordered by a person different from the appellant, has been filed in this context. [10] It is accepted in the case law of the boards of appeal that a disclosure implicit in the patent application, i.e. what the person skilled in the art would consider necessarily implied by the patent application as a whole, is also relevant when assessing the requirements of A 123(2). For an overview of the case law relating to the definition of the notion “skilled person” the board refers to the publication "Case Law of the Boards of Appeal of the EPO", 6th Edition, 2010, chapter I.D.7. [11] The board accepts that it may well be that for the production of her ointment the appellant has in fact always used oil derived from the species Juniperus oxycedrus. Nevertheless, in view of the finding in point [8], above, it cannot be accepted by the board that this establishes that it would be considered necessarily implied by the skilled person that the patent application equates Black Cedar with Cade or Juniperus oxycedrus. Accordingly, this argument must fail. [12] The appellant has furthermore referred to the Greek patent application 20030100419 which was filed on 15 October 2003 and from which the present application claims priority. The appellant argued that the claims of this application had been amended before the Greek patent office on 4 December 2003. These amendments had however not been attached by the Greek Office to the priority certificate provided to the EPO. The pharmaceutical ointment comprising oil of black cedar (oil cade) disclosed in the Greek priority application filed on 15 October 2003 was the same as the ointment disclosed in the present European patent application. The omission of the term "oil cade" in the European application was due to the translator who translated only the first term appearing in claim 1 of the Greek priority application.
Claim 1 of the Greek priority document (as filed) [13] Also in the context of this argument, the board emphasises that the relevant reference point for assessing the compliance of amendments with the requirements of A 123(2) is the application as filed. It notes that neither of the documents representing the European application, be it in the Greek language or the English language, refers to oil CADE but instead refers to oil of Black Cedar, although it is true that the priority document as filed in the Greek language makes reference to oil CADE (see e.g. example 2 and claim 1). However, it has been established in the case law of the boards that “the content of the application as filed” as referred to in A 123(2) does not include any priority documents (see e.g. decision T 260/85). Such document can therefore not be taken into account when assessing compliance of claimed subject-matter with the requirements of A 123(2). Also this argument must therefore fail. [14] Accordingly and in view of the above considerations the board decides that claim 1 does not meet the requirements of A 123(2). […] The appeal is dismissed. Dura lex (casus) sed lex. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 144/09 – When No Means Never
K’s Law – The ebook
T 144/09 – When No Means Never 7 Jun 2011
When an Opposition Division (OD) raises new objections during oral proceedings (OPs) and asks you whether you wish to file amended claims, think twice before declining the offer, because doing so may shut the door to filing such amendments in appeal proceedings. In the present case, the patent proprietor had introduced the feature “… so that the space requirement in the building is substantially limited to the space required by the elevator car and counterweight on their paths including safety distances and the space needed for the hoisting ropes” into claim 1 in a submission that was received by the OD after the issue of a summons to OPs. During the OPs, the OD found this feature of the main request not to comply with the requirements of A 123(2). The chairman of the OD then stated that the auxiliary requests on file seemed to have the same problem. Having been asked whether it would file any further requests, the patent proprietor did not avail himself of the opportunity to do so. Thus the chairman announced the decision to revoke the patent. Together with its grounds of appeal, the patent proprietor requested that the patent should be maintained on the basis of its (new) requests. In claim 1 of the main request and of the first and second auxiliary requests, the feature “so that the space requirement...”, was not present. This situation gave the Board the opportunity to discuss the precise meaning of Article 12(4) RPBA, which reads : Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under (1) [i.e. in the notice of appeal and statement of grounds of appeal, any written reply of the other parties filed in due time, any communication sent by the Board and any answer thereto] shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in (2) [i.e. the complete case of each party, including all the facts, arguments and evidence relied on, should be contained in the statement of grounds of appeal and its response thereto, respectively]. [1.1] The OD issued a summons to OPs dated 11 January 2008. This did not mention the need to include the space requirement feature (i.e. the feature “so that the space requirement in the building is substantially limited to the space required by the elevator car and counterweight on their paths including safety distances and the space needed for the hoisting ropes”). In its submission dated 26 August 2007 (sic), which was received at the EPO on 8 September 2008, a new main request and three new auxiliary requests were filed, each of which included the space requirement feature. It may also be noted that the written submission with which these requests were filed made no mention at all of having included the space requirement feature, nor where it had its basis in the application as filed. The fact that during the OPs of 7 October 2008 an objection under A 123(2) was found to exist by the OD concerning the inclusion of the space requirement feature, is thus considered to be entirely in line with the normal course of proceedings. [1.2] The OD, as also indicated in the minutes of the OPs at 11:40 and 11:50, not only explained the reason for its finding under A 123(2) but also asked the proprietor explicitly whether he would file any request that would overcome the objection. [1.3] The proprietor’s choice not to file any amended or auxiliary request in light of these circumstances is found by the Board to be of importance in considering the admissibility of certain new requests in the appeal proceedings in accordance with Article 12(4) RPBA. [1.4] Article 12(4) RPBA reads as follows: “(4) Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance
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proceedings, everything presented by the parties under (1) shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirement in (2).” It follows from Article 31 of the Vienna Convention on the Law of Treaties that the EPC should be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of the treaty’s object and purpose (see J 9/07 [13]). The same applies to the interpretation of the Implementing Regulations on the Grant of European Patents and the Rules of Procedure of the Boards of Appeal, as they are part of the EPC (A 164(1)) or have their basis in the Implementing Regulations (R 12(3)). Article 12(4) RPBA thus allows the Board, to hold any such request as inadmissible if it could have been presented in the first-instance proceedings. Thus, when deciding on this issue, the Board should state the facts that show why the specific request(s) now on file could have been presented in first instance proceedings. In particular, the Board should take into account all relevant circumstances. It is evident that a request can be held inadmissible under Article 12(4) RPBA when, as in the present case, added subject-matter held unallowable during proceedings before the OD is not removed at least by way of an auxiliary request filed in those proceedings, but only by way of a request filed during the appeal proceedings. [1.5] The amendments made by way of the main request and the first and second auxiliary requests, all involved inter alia deletion of the space requirement feature. However, the simple removal of that feature which the proprietor had itself added as an amendment during the opposition proceedings, could evidently have been done by way of presenting a request to this effect during OPs before the OD so as to overcome the objection of the OD. This is particularly so in light of the fact that the OD chairman explicitly asked the proprietor whether he would file a request which overcame the objection. [1.6] Although the proprietor argued that it was a complete surprise to be presented with an A 123(2) objection because the annex to the summons had stated that a flat drive machine unit was not essential, this does not provide an overriding reason as to why the proprietor, when offered the chance of filing requests to overcome that objection, did not do so. Not only can an OD depart from its preliminary opinion, in view of argumentation by the parties for example, but in the Board’s view the proprietor should not at all have been surprised that a feature it introduced by way of amendment was subject to objection. Moreover, the OD had not indicated in its annex to the summons that a flat drive machine unit was not essential in combination with the space requirement feature, because the space requirement feature was not in any of the claims on file at that time. Any comment in the annex to the OPs summons concerned a differently worded claim. [1.7] The appellant’s contention that the space requirement feature had been an essential part of the whole “machine room-less” concept in the other family members is not found to be convincing in relation to admissibility of the various requests in appeal proceedings, since by the amendments made in the main request and the first and second auxiliary requests, the space requirement feature has been entirely removed, whereas the OD did not object to the space requirement feature being introduced into the claims per se, but instead that the application as filed required that a flat drive machine unit also be included when considering the space requirement feature. [1.8] Further, in regard to the reliance placed on decision T 545/01 by the appellant, the independent claim found allowable by the Board in that case (see page 3 of that decision) included not only the space requirement feature but also the drive machine unit of a flat construction. In the Reasons [1.3] of that decision, it is also stated that the application as originally filed disclosed to the skilled person that a flat machine was essential. Even on this basis alone, the appellant should thus not have been surprised that the OD also found that a flat drive machine was an essential feature of the disclosure. [1.9] The appellant’s argument that the proprietor “did not want to follow this invitation, as the limitation to ‘flat machines’ would have effectively reduced the scope of protection to the content of maintained EP 784 030”, shows only that the proprietor had made a conscious and deliberate choice not to overcome the objection made by the OD for reasons unconnected with the objection itself. The Board therefore does not find such an argument persuasive. On the contrary, the proprietor’s deliberate choice not to file any request to overcome the objection, despite the offer to do so, is a further indication as to why a request filed only with the appeal grounds should not be admitted into the appeal proceedings. [1.10] The further argument that the proprietor did not know the reasons why the OD had reached its conclusion and that this meant the proprietor had to completely revise its defence strategy is also found unconvincing in relation to why no further request was filed during opposition proceedings. The amendment to the claim to include the space requirement feature was made of the proprietor’s own volition at a late stage of proceedings (about 1 month before the OPs) and it should have been expected that objections may have arisen and it could thus likewise be expected that the proprietor should have taken this possibility into account. 2177 | 3398
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[1.11] The further argument of the appellant that a deletion of the space requirement feature during those OPs would have resulted in objections from the opponents due to late filing is also unconvincing. Merely because an objection might be raised, whether or not such an objection would be justified, is not a hindrance to filing a request, not least when the chairman invited the proprietor to do so. [1.12] The Board is also not convinced by the appellant’s argument that the necessity to drop the space requirement feature only became clear after receiving the decision, because the OD explained at the OPs what the objection was. Indeed, the OD explained in detail the nature of the objection, as is clear from the minutes of those proceedings. [1.13] The appellant’s argument that the Board, by not admitting certain requests, would be disrespecting the proprietor’s right to have its patent examined on claims it has agreed and would thus be in violation of A 113(2) as made evident in T 1854/08, is also not found convincing. A 113(2) does not require that a request must be found admissible, merely because it has been filed. Nor is the Board deciding on requests which have not been submitted to it. Merely because a request is filed, does not prevent the Board from finding the request inadmissible. This is evident from the straightforward wording of Article 12(4) RPBA. Further, the case T 1854/08 cited by the appellant concerns an ex parte matter, in which new requests were filed and, due to a perceived lack of clarity of the claims in those requests reported to the applicant by email, a decision was taken on a previous set of claims which had however been replaced. In the present case, the Board would not be deciding on a previous set of claims, since those claims are not the subject of this decision. T 1854/08 thus concerns an entirely different matter and does not add any support to the appellant’s argument. [1.14] The appellant further argued that any new request made on appeal could, as a general rule, have been filed in the first instance proceedings, so that a restrictive use of Article 12(4) RPBA in this manner to prevent the proprietor from filing claims in this case would lead to a situation where claims could never be forwarded which have not already been forwarded in the first instance, and that this could not have been the intention of Article 12(4) RPBA. This interpretation of Article 12(4) RPBA is not considered to be in line with the intention addressed by this Article. Although from the very wording of Article 12(4) RPBA it is clear that such claims can be held inadmissible, it is up to the Board to exercise its discretion in such matters, having regard to the particular circumstances of the case. It is certainly not so that any request not filed in the first instance proceedings should not be admitted into the appeal proceedings; far from it. The Board has also […] admitted a new request, the third auxiliary request, into proceedings. In so far, the circumstances of the present case are particularly noteworthy, since the considered and deliberate choice made by the proprietor not to file a further request, despite being given the opportunity to do so after the objection had been explained, is found by the Board to precisely correspond to the intention of Article 12(4) RPBA. Indeed, the primary purpose of an appeal is to provide the opportunity for a final instance review of the decision of a previous instance, thereby (in inter partes proceedings) allowing the losing party to challenge the decision of an OD on its merits and to obtain a judicial ruling as to whether the decision of the OD is correct (G 9/91 and G 10/91). The appeal proceedings do not have the purpose of starting a new examination of different subject matter, in particular where such subject matter involves broadening of claims considered by an OD. For an interpretation in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of the treaty’s object and purpose (see point 1.4. above), additional reference is made to CA/133/02 e, the document put to the Administrative Council concerning the change to the RPBA when introducing Article 10a(4) (which later became Article 12(4)), where the following is stated (see page 12): “… and the boards will retain their discretion, as a review instance, to refuse material excluded at first instance or not submitted during first instance proceedings.” Also from this, it is evident that the function of the Boards of Appeal was not only recognised to be that of a review instance, but that one way of ensuring this function was respected was codifying, in the Rules of Procedure, that material not submitted at first instance could be refused. Article 10a(4) refers to such material as “facts, evidence or requests” (see CA/133/02 e, page 15), as does current Article 12(4) RPBA. [1.15] The appellant also stated that a contravention of A 113(1) would occur if the requests were not admitted. However, the Board fails to see any such contravention. The appellant, in writing […] and orally during the OPs, 2178 | 3398
T 144/09 – When No Means Never
K’s Law – The ebook
both had and took the opportunity to present its arguments as to why its requests should be found admissible and allowed into the appeal proceedings. The fact that the Board finds its arguments unconvincing does not mean that the appellant has not had an opportunity to present its arguments on the matter or that the Board had ignored the appellant’s submissions in this respect. [1.16] In consequence of the aforegoing, the Board decided not to admit the main request and the first and second auxiliary requests into the appeal proceedings, based on the provisions of Article 12(4) RPBA. [1.17] For the same reasons, the Board also holds the fourth auxiliary request filed by the appellant with its submission of 20 April 2011 as inadmissible with respect to Article 12(4) RPBA, as claim 1 of this request also omits the space requirement feature. In this regard it should be noted that Article 12 RPBA is entitled “Basis of Proceedings”, and whilst Article 12(4) RPBA makes a reference to Articles 12(1) and (2) RPBA, this reference only concerns which matters are to be taken into account when considering the appeal. It does not state that Article 12(4) RPBA is restricted in its application by the time limit for filing the grounds of appeal or any reply thereto. Indeed, a restriction in that sense would not seem to serve any useful purpose and might even result in a possibility of artificially circumventing Article 12(4) RPBA, irrespective of whether Article 13(1) RPBA might be a further provision of the Rules of Procedure that could provide a different barrier to filing such requests. [1.18] The sixth auxiliary request, filed during the OPs after discussion of the previous requests, does include the space requirement feature as per the claim considered by the OD in its decision. Additionally the further feature is added that the drive machine unit “is of a flat construction as compared to its width” (in addition to the space requirement being "irrespective of hoisting height" which was added first in the fifth auxiliary request). A claim including this particular combination of features, in view of the objection made by the OD during OPs and the offer to file amendments, is a claim which the Board finds could have been filed during opposition proceedings in order to overcome the A 123(2) objection. Again, the deliberate choice of the appellant not to file such a claim with this or similar wording during the OPs before the OD, in the knowledge of the A 123(2) objection, is held by the Board to result in this being an inadmissible request in appeal proceedings, for the same reasons as given above on the basis of Article 12(4) RPBA. The appellant’s arguments that the subject matter of the claim was the subject matter of a dependent claim and was not complex do not alter the aforegoing conclusion on admissibility of the request, since neither the complexity of the request nor the fact that the feature was in a dependent claim relates to the reasons for the Board’s conclusion. [1.19] The appellant’s arguments concerning G 1/05 and the subsequent revision of the implementing regulations limiting the possibility of filing serial divisional applications over the lifetime of an application do not alter any of the aforegoing conclusions. The findings in G 1/05 do not relate to the finding of non-admissibility of certain requests under Article 12(4) RPBA, even if the conclusions reached therein may have been of importance had any request been both admitted and found to meet the requirement of A 123(2). The appellant also did not further explain why G 1/05 would be of consequence for the present decision in this regard. This approach certainly increases the pressure on representatives acting before ODs. Waiting for the outcome of the opposition proceedings and then adapting the strategy certainly becomes more and more risky. To
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T 1801/07 – When Witnesses Disagree
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T 1801/07 – When Witnesses Disagree 6 Jun 2011
The present decision contains an interesting discussion on the reality of an alleged prior disclosure. The opponent (Osram) filed an appeal against the decision of the Opposition Division (OD) to maintain Toshiba’s patent in amended form. [2.1] Document A21 is a copy of the original brochure allegedly distributed to the participants of the meeting “Arbeitstagung für Leuchtenhersteller” in January 1996. All the witnesses heard by the opposition division confirmed that these meetings were held annually by Osram, were attended by about 50 participants and that no secrecy agreement was involved. The meeting was held twice on two consecutive days (i.e. 15-16 and 17-18 January) in which substantially the same subject-matter was presented to different audiences, once in German and once in English. At these meetings the new lamps developed so far were presented so that manufacturers of lighting fixtures could adapt their products to the new lamps to be introduced in the market. Two witnesses (Mr D. and Mr W.) declared that the brochure was placed on the participant’s chair in the meeting room while the two other witnesses (Mr H. and Mr M.) stated that it had been distributed at the meeting’s reception desk. Mr M. and Mr D. confirmed that the brochure was a bound volume (“Tagungsband”) and contained copies of the overhead transparencies presented at the meeting, although it could not be ruled out that more specific information could have been presented orally at each workshop […]. The front page of A21 identifies the meeting’s audience: the manufacturers of lighting fixtures (“Arbeitstagung für Leuchtenhersteller”), the meeting’s dates (15./16.01.1996 and 17./18.01.1996) and the meeting’s location (“Osram-Haus, München”). The board considers therefore that the questions of “when”, “what” and “under which circumstances” can be answered satisfactorily based on the witnesses’ testimony and document A21. The board is aware that these questions are usually posed in the context of public prior use (although in those cases they take often the form of the four W questions, i.e. “when”, “where”, “what” and “by whom”). They are however also relevant when assessing written state of the art, although in the majority of those cases these questions do not need to be explicitly posed, since they can be answered in a self evident manner from the document itself (a published patent or patent application or an article from a technical journal or encyclopaedia). Document A11a is a copy of the front page and the pages corresponding to the T5 FH (Fluorescent High Efficiency), T5 FQ (Fluorescent Quintron) and T5 FC (Fluorescent Circline) lamps of document A21. In the following discussion on inventive step document A11a will be used for ease of reference. [2.2] The [patent] proprietor objected that none of the witnesses could positively confirm that document A21 had been distributed in 1996. He pointed out, in particular, that the witnesses contradicted each other with reference to where and when the brochure had been made available to them (i.e. at the reception desk or on the seats of the meeting’s room). [2.3] This, however, is not the issue. It would be very unusual that a witness could recall after more than ten years the exact circumstances of an event, unless something special made it remarkable. That some of the witnesses recalled obtaining the brochure at the reception desk while others remembered finding them on their seats is something that can reasonably be expected. It does not shed doubts on that they received the brochure, since both ways of distribution are usual at conferences and meetings. [2.4] The witnesses also declared that the meetings were structured the same way each year and that a brochure that contained copies of the material presented at the different workshop sessions was always distributed to the participants without any agreement, implicit or explicit, of secrecy. According to the minutes of the witnesses’ testimony, Mr W. presented at the oral proceedings (OPs) before the OD an original of document A21 on which the dates, audience and location of the meeting were indicated […]. According to the minutes of the OPs before the OD, the opponent brought forward a copy of the original brochure the next day of the hearing. This copy was compared with the original by the opposition division and introduced into the proceedings under A 114(2) as document A21 […]. These facts were not contested in the appeal proceedings. 2180 | 3398
T 1801/07 – When Witnesses Disagree
K’s Law – The ebook
[2.5] The opponent thus has a credible case that copies of document A21 were distributed to the participants of the meeting in January 1996. The burden of proof therefore shifts to the [patent] proprietor who has to show counterevidence for e.g. that the brochure was only available at a later date than the date shown on the document, that the content of document A21 was not that of the brochure distributed at the meeting or that a secrecy agreement existed. [2.6] The present circumstances therefore differ from an allegation of prior use in which all the evidence is in possession of the opponent and in which the proprietor is restricted to point out loopholes or contradictions in the chain of evidence. The board also does not share the view of the [patent] proprietor that it was impossible to him to prove nondistribution or non-publication and that therefore the burden of proof lay wholly on the [opponent’s] side. The [patent proprietor] had the possibility of disproving public availability of the document in question, e.g. by contacting further participants of the meeting who might testify that the documents handed out had different content, were given out much later, etc. [2.7] From the foregoing considerations, the board concludes that the public availability of document A21/A11a has been sufficiently proven and agrees with the finding of the OD that document A21/A11a was made available to the public on the first day of the meeting, i.e. 15 January 1996. Since this date lies before the first priority date claimed by the patent (i.e. 5 March 1996), document A21/A11a is part of the state of the art under A 54(2) EPC 1973. I wonder if the patentee should have insisted on the standard of proof rather than discussing who was to bear the burden of proof. The reasoning of the Board appears to be correct if the balance of probabilities is the standard to be applied. The fact that the witnesses contradicted each other as to the way in which the document was distributed does not - in my opinion - counterbalance the rest of the evidence. As Osram was the opponent, the patentee could have argued that the alleged prior disclosure in Osram’s premises created a situation where the standard “beyond reasonable doubt” was to be applied. Then the contradiction might perhaps (?) have been found to create some reasonable doubt as to the reliability and correctness of the testimonies. Should you wish to download the whole decision, click here. The file wrapper can be found here.
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Oldies But Goldies – Incorporation By Reference
K’s Law – The ebook
Oldies But Goldies – Incorporation By Reference 4 Jun 2011
In recent decision T 1378/08 (April 29, 2011, Board 3.3.05) the applicant appealed against the decision of the Examining Division (ED) to refuse its application. Claim 1 before the Board read (in English translation): Method for manufacturing fired sanitary ceramics using a fired body and a surface that is coated with an oleophobic and/or hydrophobic layer, wherein the body is fired in an elongate tunnel furnace, characterised in that perfluoroalkyl silanes, which have a measurable vapour pressure at high temperatures and in which spacer groups are provided between Si atoms and fluorine atoms in the molecule, the length of which is at least the length of –(CH2)2–, are damped (aufdunsten) onto the body in the furnace, in the cooling zone of the furnace when the end of the furnace is open, under atmospheric conditions, wherein the perfluoroalkyl silanes which have been brought into the cooling zone have a lower temperature than the body that passes by, and wherein the material cross-links and hardens during the cooling of the body. In the following paragraphs the Board examines the allowability of the amendments: *** Translation from the German *** [1.1] The subject-matter of the only remaining method claim is based on the disclosure of the application as filed (see the published application WO 2004/026793 A1), in particular on a combination of method claims 1 (firing of the sanitary ceramics in a tunnel furnace, damping of the coating material in the cooling zone of the furnace), 4 (“when the end of the furnace is open, under atmospheric conditions”), 6 (nature of the coating material), and 8 (lower temperature of the coating material) in combination with page 5 of the description, second and last paragraphs (preferred, oleophobic and/or hydrophobic coating material according to international application PCT/DE00/02988) and page 7 of the description (lower temperature of the coating material). Thus the disclosure of the specific coating materials to be used according to the claim is found in the application as filed in the form of a reference to international application PCT/DE00/02988 (published as document [WO 01/23101] on April 5, 2001, i.e. before the priority date of the application under consideration). Only these particular coating materials are concretely disclosed in D3 and referred to as preferred. Therefore, in the present case the conditions for incorporation of features from a reference document have clearly been complied with (see e.g. T 689/90 [2.2]). […] What are the key decisions on incorporation by reference ? The first decision that has explicitly allowed incorporation by reference appears to be T 6/84 (February 21, 1985, Board 3.3.1), where we read: [2] There is no formal objection to the current version of the claims. The main claim relies for the definition of the synthetic offretite on p. 8, lines 25 to 27 of the specification. The relevant passage refers to CA-A-934 130 (D2) which, in turn, specifies (cf. Claims l, 2 and 4 on pages 19 and 20 of that document) the offretites used for the present invention as aluminosilicates having the given mole ratios for the oxides and a characteristic X-ray powder diffraction pattern. It is the view of the Technical Board that structural features of a means for performing a chemical process which are not mentioned in the application documents themselves but in a document to which they refer may be incorporated into a patent claim if they unequivocally form part of the invention for which protection is sought. However, all the essential structural features thus disclosed which belong together must be incorporated into the claim; it is not permissible to single out a particular one of their number.
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Oldies But Goldies – Incorporation By Reference
K’s Law – The ebook
[3] As to the amendment of the main claim by incorporating certain characteristics from document D2 in order to define the offretites used for the purposes of the invention claimed in the present application, the Board is therefore of the opinion that the mere limitation to a silica/ alumina mole ratio of 5 to 10, as claimed before the ED, is insufficient. In the absence of evidence that this feature alone, together with the general term “offretite”, is a sufficient characterisation, it is necessary to recite fully the other components of the structure and the diffraction pattern figures, as they were originally disclosed and defined in document D2. Nevertheless, the further criterion also mentioned is the same document , i.e. the capability of absorbing cyclohexane at least to a specified degree, is considered unnecessary in the circumstances since this condition is assumed to be fulfilled in consequence of the essential features of the claim. […] This was then condensed in the following headnote: Structural features of a means for performing a chemical process (here: the catalyst “offretite”) which are not mentioned in the application documents themselves but in a document (here: a Canadian Patent specification) to which they refer may be incorporated into a patent claim if they unequivocally form part of the invention for which protection is sought. However, all the essential structural features thus disclosed which belong together must be incorporated into the claim; it is not permissible to single out a particular one of their number (here: a silica/aluminia ratio). More information is given in the decision already cited above, T 689/90 (January 21, 1992, Board 3.4.1) [1.2] The appeal raises a general question as to the circumstances in which it is permissible for a European patent application to include a cross-reference to another document, and as to the effect of such a cross-reference, in particular when some of the contents of the cross- referenced documents are sought to be included in the main claim of the application by way of amendment. A basic requirement for a European patent application is set out in A 78(1)(b), namely that such an application “shall contain a description of the invention”. Prima facie, therefore, all the essential features of the invention for which protection is, or may be, sought should be included in the description as such and as originally filed. This view is reflected in the Guidelines, paragraph C-II, 4.18, where it is stated that “the patent specification should, regarding the essential features of the invention, be self-contained, i.e. capable of being understood without reference to any other document”. This statement is specifically in the context of satisfying the requirements of A 83, i.e. disclosure of the invention, however. The above-identified paragraph of the Guidelines goes on to state the circumstances in which a cross-referenced document may be taken into account, in a situation where the document in question was not available to the public before the filing date of the application: namely, provided that a copy of the document was filed at the EPO on or before the filing date, and provided that the document was made available to the public no later than the date of publication of the application. Although in those circumstances the Guidelines indicate that a cross-referenced document may be “taken into account”, implicitly for the purpose of satisfying the requirements of A 83, the Guidelines are silent as to the effect of such a cross-referenced document in the context of A 123(2). [1.3] The information which was supplied by the [applicant] in his observations dated 15 January 1992 has satisfied the Board that on the basis of originally disclosed bibliographic data document D1 could have been unambiguously identified on or after the publication date of the application, and that the requirements for taking this document into account which are set out in the above-identified paragraph of the Guidelines were fulfilled. This was made clear to the [applicant] at the beginning of the oral proceedings. [1.4] The question remains, however, as to whether features which were only disclosed in the cross-referenced document D1 can be incorporated into the main claim of the application after filing. In this connection, the question to be considered under A 123(2) is whether the amended application “contains subject-matter which extends beyond the content of the application as filed”. In considering this question, it is relevant that under A 93 “the description, the claims and any drawings as filed” of every European patent application are published at an early date after filing of the application. Thus, after such publication, the skilled reader should be able to know, by reading the published application, the extent of the subject-matter which is within “the content of the application as filed”, and thus the extent of the subject-matter for which protection is or may be sought. In the Board’s view, in normal circumstances a reader of a published European patent application is entitled to expect that the “description of the invention” which it must contain pursuant to A 78(1)(b) will itself identify all the features of the described invention for which protection is or may be sought. It is only under particular 2183 | 3398
Oldies But Goldies – Incorporation By Reference
K’s Law – The ebook
conditions that features which have not been included in the description of the invention as originally filed but which are only described in another document which is identified in the description as originally filed can subsequently be introduced by way of amendment into the claims of the application as essential features of the invention for which protection is sought. Prima facie, such features are not within “the content of the application as filed”, which for the purpose of A 123(2) is constituted by the description of the invention, the claims, and any drawings, in accordance with A 78(1). If this were not the case, the content of an application containing in its description numerous references to other documents, whether other patent specifications or handbooks for example, would become almost limitless; especially if such documents themselves contain references to other documents, and so on. [2.1] The only previous decision of a Board of Appeal of which the Board is aware in which features which had not been included in the description of the invention in the application as originally filed, but which were included in another document which was referred to in the description, were subsequently allowed to be introduced into the main claim of the application, is decision T 6/84, which was relied upon by the [applicant] in the present case […]. In that case, the originally filed Claim 1 had the following wording: “1. A process for catalytic dewaxing a waxy hydrocarbon oil which comprises contacting said oil with a catalyst at dewaxing conditions, characterised in that the catalyst is synthetic offretite.” The text in the original description […] which identified the features disclosed by reference was worded: “Synthetic offretite is a well-defined zeolite, with a known X-ray diffraction pattern and a proposed crystal structure … The synthetic offretite useful in the present invention and its method of preparation are disclosed in Canadian patent 934130 …”. It is thus clear that the catalyst “synthetic offretite” referred to in the characterising portion of the main claim as originally filed was an identified material, and that further characterising parameters of such material, as well as its method of preparation, were stated in the description of the invention as originally filed to be set out in the cross-referenced Canadian patent. The further characterising parameters of such synthetic offretite which were incorporated from the Canadian patent into the main claim were the mole ratio of the oxides contained in synthetic offretite and the X-ray powder diffraction pattern with defined Bragg angles and intensities. Such parameters were already implicitly present in the main claim, and simply defined in greater detail the synthetic offretite which was already an essential feature of the invention as described and claimed in the application as originally filed. Having regard to the above facts of the case with which Decision T 6/84 was concerned, it is clear that the further characterising parameters of synthetic offretite (namely the mole ratio of oxides and the X-ray powder diffraction pattern) which were included in the main claim by way of amendment were indeed features which unequivocally formed part of the invention for which protection was already sought; because the use of synthetic offretite as a catalyst was already the only characterising feature in the claim as originally filed, and the features which were added to that claim simply defined such synthetic offretite better. Thus the facts of the case with which Decision T 6/84 was concerned are very different from the facts of the present case. Furthermore, in the Board’s view, the principles which are set out in the headnote to that decision cannot properly be applied to the facts of the present case, either so as to help the present [applicant], or at all. [2.2] Nevertheless, having regard partly to what is set out in the headnote to decision T 6/84, in the Board’s view, when determining whether features which are not mentioned in the description of the invention but only in a cross-referenced document may be incorporated into a claim of a European patent application, it is necessary to consider whether the description of the invention as filed leaves no doubt to a skilled reader: (a) that protection is or may be sought for features which are only disclosed in the reference document; (b) that the features which are only disclosed in the reference document contribute to achieving the technical aim of the invention and are thus comprised in the solution of the technical problem underlying the invention which is the subject of the application; (c) that the features which are only disclosed in the reference document implicitly clearly belong to the description of the invention contained in the application (A 78(1)(b)) and thus to the content of the application as filed (A 123(2)); and (d) that such features are precisely defined and identifiable within the total technical information within the reference document. If the above particular conditions are satisfied, in the Board’s view it is permissible for the features which are only disclosed in the reference document to be introduced into the claims of the application without contravening
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Oldies But Goldies – Incorporation By Reference
K’s Law – The ebook
A 123(2) because such features are then properly to be considered as within “the content of the application as filed”. The Board then found these conditions not to be satisfied by the claim under consideration. There is more to be said on incorporation by reference, but let this be enough for today.
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T 1414/08 – It’s 84 (Not 83)
K’s Law – The ebook
T 1414/08 – It’s 84 (Not 83) 3 Jun 2011
I owe the knowledge of this decision to a kind colleague. There is some disagreement between the Boards concerning the question of whether insufficiency of the disclosure of how to measure claimed parameters can result in insufficiency of disclosure within the meaning of A 83 (and A 100(b)) or not. T 1119/05 [3.2] has well summarised the situation: As regards the inaccuracy of a parameter caused by the lack of indication of the exact measuring conditions it appears that the case law does not show such a clear direction. There is indeed case law which stresses that, in order to carry out the invention, the skilled person must be in a position to establish whether a product falls within the area covered by the claim and reliably to prepare the claimed product (T 256/87, T 387/01, T 252/02 and T 611/02). On the other hand, there is also case law which states that “the lack of the indication of certain measuring conditions is not detrimental to the sufficiency of the disclosure but could raise a clarity problem with the consequence that the particular value must be interpreted in a broad manner …” (T 299/97 [1.2]). This situation indicates that the relationship between A 83 and A 84 is not simple. The present decision, dealing with the revocation of the opposed patent by the Opposition Division (OD), goes along the second path. Claim 1 as granted had the following wording: 1. A soft, single ply-tissue product formed by conventional wet pressing of a cellulosic web, adhering said web to a Yankee dryer and creping the web from the Yankee dryer, said singleply tissue including (a) a temporary wet strength agent comprising an organic moiety, and (b) nitrogenous softener agent, and said single-ply tissue having a serpentine configuration, and low sidedness, a basic weight of at least total g/m2 pound 24.4 g/m2 (15 lbs/3000 sq. ft.) ream, a specific tensile strength of between 8.4 and 41.9 N/m per g/m2 (between 40 and 200 grams per three inches per pound per 3000 square foot) ream, a cross direction specific wet tensile strength of between 0.576 and 4.2 N/m per g/m2 (between 2.75 and 20 grams per three inches per pound per 3000 square foot) ream, the ratio of MD tensile to CD tensile of between 1.25 and 2.75, a specific geometric mean tensile stiffness of between 0.314 and 2.0 N/m/percent strain per g/m2 (between 0.5 and 3.2 grams per inch per percent strain per pound per 3000 square foot) ream, a friction deviation of less than 0.25, and a sidedness parameter of less than 0.3. In its decision, the OD reasoned that due to the absence in the patent of any precise method of measurement for the claimed strength parameters, a skilled person would be unable both, to establish which tissue products fall under the scope of the claims and to reliably prepare the claimed product. The Board does not agree. [1] The gist of the [opponent’s] objection concerning lack of sufficiency consists in that an ambiguity with respect to the end values of the range for the dry and wet tensile strengths of the claimed tissue product arises from the fact that there exist different standard tests and different possibilities for carrying out those tests which all produce different results of measurement. Since the patent in suit did not disclose which specific method of measurement had to be applied, the ranges of tensile strength mentioned in the claims were undefined. Apart from that, the standard methods did not use the sample size required in the patent in suit so that a skilled person would not use any of those methods.
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T 1414/08 – It’s 84 (Not 83)
K’s Law – The ebook
As a result and contrary to the established Case Law of the Boards of Appeal as illustrated in T 611/02, a skilled person was unable both, to put the invention into effect across the whole scope of the claims and to determine whether he is working within the forbidden area of the claims or not. Hence, the patent in suit did not meet the fundamental requirements under A 83 or respectively A 100 b). According to A 100 b) an opposition may be filed on the ground that a European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. In other words, a European patent shall fulfil the same requirements as defined in A 83 for a European patent application. [3] The Board observes that sufficiency of disclosure might be questionable if specific values of an unusual parameter are formulated in a patent as essential to the invention but no method of measuring that parameter is either known in the art or disclosed in the patent (Case Law of the Boards of Appeal of the EPO, 6th edition, 2010, chapter II.A.3.d), first paragraph). [4] In the present case, the parameter in question is tensile strength, hence not unusual. Whilst being true that no specific method of measuring this parameter is disclosed in the patent in suit, there exist in the art several standardised test methods for determining the dry and wet tensile properties of paper and paperboard including tensile strength. There is no doubt that variations in the test conditions, e.g. the sample size, the jaw speed or elongation speed, have an influence on the result of the measurement. However, as it is known from the standard methods that deviations from the specified conditions are possible, in particular deviations in sample size and jaw speed (e.g. document D6 [… and] D9 […]), a skilled person had no reasons not to use any of those wellknown test methods. Hence, the problem to be considered here boils down to the fact that, depending on the method of measurement, there exists an uncertainty as to the actual end values of the range for the tensile strength mentioned in the independent claims. This problem remains the same, however, even if a specific method of measurement was disclosed in the description since the claims would not be restricted to that method. [5] The [opponent] pointed to the second sentence of A 69(1) by arguing that the description should be used to interpret the claims. A 69(1) relates to the extent of protection conferred by a European patent of patent application. According to the Protocol on the Interpretation of A 69 which was adopted as an integral part of the EPC to provide a mechanism for harmonisation of the various national approaches to the interpretation and determination of the protection conferred by a patent, this should be done so as not to overestimate either the literal wording of the claims or the general inventive concept disclosed in the description (see also G 2/88 [2.1,3.3,4]). [6] However, this does not mean, that the scope of protection conferred by a claim is limited by the description. In decision G 2/88, the Enlarged Board of Appeal was concerned with questions relating to A 123(3) with respect to a change in category from a claim for a physical entity to a claim for a second non-medical use. The Board took the view that upon proper interpretation within the terms of A 69 such a use claim would implicitly contain a functional feature as a technical feature (reasons [9]). It was held that the use claim which was in effect a claim to a physical entity only when it is used in the course of the particular physical activity (of the use) conferred less protection than a claim to a physical entity per se which conferred absolute protection upon such physical entity, no matter where it exists and what is its context (reasons [5]). [7] Transferred to the present case, where a tissue product is claimed and different methods of measuring the tensile strength of that product are known in the art which give different results, this means that the end values of the range for the tensile strength remain ambiguous, irrespective of whether a specific test method is disclosed in the patent or not. In other words, if - for the purpose of sufficiency of disclosure - it was a requirement that a person skilled in the art must know the scope of the claims, the disclosure of the claimed subject-matter would be insufficient except where a complete method was included in the claim.
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T 1414/08 – It’s 84 (Not 83)
K’s Law – The ebook
[8] The Board notes that the scope of protection as defined in A 69 may have some relevance for the purposes of A 84 and A 123(3) which both mention the protection sought for or conferred by a patent. In contrast, A 83 concerning sufficiency of disclosure is completely silent about that issue. For these reasons, the Board takes the view that under the present circumstances the question of whether a skilled person can know what is covered by the claims is a question of definition of the claimed subject-matter, hence A 84, rather than of sufficiency of disclosure (A 83). [9] The Board further observes that the question of whether a skilled person is able to carry out the invention within the full scope of the claims is based on an assumption that their scope might extend to undisclosed variants. However, such doubts have to be substantiated by verifiable facts (see also e.g. T 1886/06 [1.4.2]). No evidence in this respect has been presented by the [opponent]. On the contrary, it has been shown by way of the [opponent’s] experiments Dl9 that there exists a correlation between the measured tensile strength value and the jaw speed which can be varied within wide limits and adapted according to circumstances. [10] Hence, the Board is of the opinion that the ambiguity of the end values of the ranges concerning tensile strength of the presently claimed tissue product is not a matter to be addressed under A 83 but a question of A 84 which requires that the claims shall define the matter for which protection is sought and be clear and concise as well as supported by the description. Due to the thus reduced significance of the values, this means that in opposition and appeal proceedings more prior art may be considered for the assessment of novelty and inventive step, namely that concerning tissue products which when measured in a technically reasonable way according to any of the known test methods give strength values within the claimed range. [11] Concerning sufficiency of disclosure, the Board observes that a skilled person is not only in a position to measure the strength of the tissue product but also that the patent contains the information required for producing that product […]. The latter has not been contested by the [opponent]. The Board, therefore, concludes that the patent satisfies the requirements of A 100(b). Remittal [12] The patent was revoked on the grounds of A 100(b). Whether the patent meets the other requirements of the EPC, in particular those of A 54(1) (2) and A 56, has not yet been established. Since it is the function of appeal proceedings to give a judicial decision upon the correctness of a separate earlier decision taken by a first-instance department (Case Law of the Boards of Appeal, 6th ed. 2010, VII.E.l), the Board finds it appropriate to make use of its power under A 111(1) and remits the case to the first instance for further prosecution, thereby allowing the respective request of both parties.
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T 1858/07 – Late Arrival
K’s Law – The ebook
T 1858/07 – Late Arrival 2 Jun 2011
The applicant filed an appeal against the decision of the Examining Division (ED) refusing its application. Claim 1 of the main request before the Board was identical with the claim which the ED had found to lack novelty: An asymmetric optical storage medium (10) comprising a plurality of layers, said plurality of layers including a substrate layer (20), a data layer (30) and at least one high modulus layer (40), which improves dimensional stability in said medium, said high modulus layer comprising a cured high modulus organic polymer having a tensile modulus of at least one Gigapascal, and at least one film layer (50) which is in direct contact with said high modulus layer.
Together with the statement of grounds of appeal, the appellant filed claims according to an auxiliary request. Claim 1 of this request the last feature reads as follows: An asymmetric optical storage medium (10) comprising a plurality of layers, said plurality of layers including a substrate layer (20), a data layer (30) and at least one high modulus layer (40), which improves dimensional stability in said medium, said high modulus layer comprising a cured high modulus organic polymer having a tensile modulus of at least one Gigapascal, and at least one thin film layer (50) which is in direct contact with said high modulus layer and is a homopolymer, a copolymer, a thermoplastic, a thermoset or any mixture thereof. The Board confirms that claim 1 of the main request is not new and then deals with the admissibility of the auxiliary request: [3.1] In claim 1 according to the auxiliary request, the thin film layer material has been specified by features set out in original claim 17. However, original claim 17 was present only in the international phase. It was not present in the first-instance proceedings, i.e. the European phase. More specifically, original claim 17 was not present in any of the claim sets submitted to the first instance and the features of original claim 17 have not been discussed in first-instance proceedings. [3.2] The thin film layer materials specified in claim 1 of the auxiliary request are not disclosed in the description, with the exception of the specific example of a “co-polycarbonate-ester thin film of about 75 micron thickness” […]. The function or technical meaning of this thin film layer, however, is not disclosed in the application. In particular, the application does not disclose which function this thin film layer has in the context of improving dimensional stability. Nor has the appellant submitted any arguments concerning the relevance and function of the thin film layer specified in claim 1 of the auxiliary request in the context of inventive step, particularly in view of the reasoning as to lack of inventive step given in the decision under appeal. Hence admission of the auxiliary request would result in the need for further investigations at least as to inventive step.
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T 1858/07 – Late Arrival
K’s Law – The ebook
[3.3] In the board’s view, the applicant could have presented this or a similar request in response to one of the objections of lack of novelty based on D3 in the first-instance proceedings, so that the ED could have carried out a complete examination in the present case after duly exercising its power of discretion under R 137(3). The board could then have carried out its primary task of examining the correctness of the decision under appeal. [3.4] In addition, the appellant’s case in respect of the auxiliary request is incomplete. If the board had decided to exercise its power within the competence of the examining division in accordance with A 111(1) EPC 1973, it could not have ordered the grant of a patent without further investigations. The decision under appeal gave reasons why it may have been obvious to a person skilled in the art to provide certain additional layers to an (optical) disc. However, the appellant’s arguments concerning this reasoning’s relevance in view of the auxiliary request are not on file. Nor has the appellant discussed the further documents (D2 and D4) mentioned in the board’s communication dated 21 June 2010 or their relevance in view of the auxiliary request. The appellant has merely argued that these additional features established novelty, and decided not to attend the oral proceedings scheduled by the board. [3.5] In view of the above, the board does not admit the auxiliary request into the appeal proceedings (Article 12(4) RPBA). […] The appeal is dismissed. To download the whole decision, click here. The file wrapper can be found here.
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T 606/10 – Rest Not In Peace
K’s Law – The ebook
T 606/10 – Rest Not In Peace 1 Jun 2011
The present appeal was filed by the opponent against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. The patent under consideration was based on a divisional application. The parent patent was upheld in 2002 after opposition and appeal proceedings. The examination of the divisional application was frozen during the parent opposition and appeal proceedings and resumed only in 2003. Thus, the patent under consideration was granted as late as May 2005, only a few months before it expired in October 2005. Despite its expiry, an opposition was filed in February 2006. The patent was upheld at oral proceedings in October 2007 but a written decision was not issued until as late as January 2010. The present appeal was filed even though the patent expired nearly five years ago. In reply to the grounds of appeal, the patent proprietor requested as main request that the appeal proceedings be terminated and, as auxiliary request, that the patent be revoked. It pointed out that as the patent lapsed several years ago, in accordance with R 84(1) and in line with decisions such as T 329/88, T 749/01 and T 1128/07, the present appeal proceedings should be terminated. According to the patent proprietor, R 84(1) did not make any distinction between oppositions filed before or after expiry of the patent. It referred to “opposition proceedings” in general, i.e. if the opposed patent had fully lapsed or surrendered then R 84(1) applied. There was no reason to think that this lapse or surrender had had to occur after the opposition was filed. Nor did R 84 suggest that its effect had to be modified depending on whether R 75 applied. In addition, no appeal decision on R 84 (or previous R 60 EPC 1973) could be identified that made a distinction between pre-expiry and post-expiry oppositions. Therefore, it was not understood why R 84(1) could not apply merely because the patent had already expired before the opposition proceedings began. Such oppositions were permitted under R 75, but there was no statutory basis for the view that R 84 could be applied differently in these post-expiry circumstances. The Board did not find the main request allowable: [Patent proprietor’s] main request; R 75 and R 84(1) [1.1] Pursuant to A 63(1) and A 76(1), second sentence, EPC 1973, the opposed patent had expired 20 years after the filing date of the parent application, i.e. on 30 October 2005 […]. Thus it had already lapsed before the opposition against it was filed in February 2006. [1.2] The [patent proprietor] bases its main request that the appeal proceedings should be terminated on R 84(1). According to this provision, if the European patent has been surrendered in all the designated Contracting States or has lapsed in all those States, the opposition proceedings may be continued at the request of the opponent filed within a specified time limit. The [patent proprietor] appears to deduce from this provision that, in the absence of a request by the [opponent] to continue the proceedings, the board may terminate the appeal proceedings in the present case. [1.3] In the case law of the boards of appeal, R 84(1) and its predecessor R 60(1) EPC 1973 have been applied per analogiam in appeal opposition proceedings (see R 100(1) and R 66(1) EPC 1973) when the opponent was the sole [opponent]. In a number of cases in which the opponent, following a notification by the board pursuant to R 60(1) EPC 1973, did not request the continuation of the proceedings, the appeal proceedings were terminated. This conclusion was reached not only where the appeal was directed against the rejection of the opposition by the first instance (see T 329/88; T 165/95; T 749/01; T 436/02 and T 289/06), but also where the appeal was directed against an interlocutory decision according to which the opposed patent could be maintained in amended form (see T 762/89 and T 714/93). In the latter context the further issue arises whether the board should terminate merely the appeal proceedings or both the opposition proceedings and the appeal proceedings. [1.4] However, none of the above cited cases nor the further decision T 1128/07 referred to by the [patent proprietor] dealt with the situation where - as in the present case - the patent had already lapsed prior to the filing of the opposition. The board observes that the EPC contains a separate legal provision dealing specifically with 2191 | 3398
T 606/10 – Rest Not In Peace
K’s Law – The ebook
this situation: R 75 (which corresponds to A 99(3) EPC 1973) explicitly states that an opposition may be filed even if the opposed patent has been surrendered or has lapsed in all the designated Contracting States. With respect to appeals in opposition proceedings, a similar provision is contained in R 98 (corresponding to previous A 106(2) EPC 1973). [1.5] It is the board’s understanding of this legislative framework that R 84(1) does not apply to the situations regulated by the separate legal provisions of Rule 75 and R 98 EPC. In those situations, the opponent when filing the opposition or the appeal will normally be very well aware that the patent has already lapsed so that the notice of opposition or appeal clearly shows his interest in the revocation of the patent with retro-active effect (see A 68). Thus, it is difficult to see any need for the mechanism provided for in R 84(1) according to which the EPO has to inform the opponent of the lapse of the patent and the proceedings may be continued only after the filing of a corresponding request by the opponent. [1.6] The above understanding of the legislative framework finds support in the Travaux Préparatoires of the EPC 1973. During the Diplomatic Conference in Munich 1973 the Main Committee I examined a proposal submitted by the Member States of the European Communities according to which provisions for dealing with the consequences of lapse and surrender of a patent should be introduced in what later became A 99, A 106 EPC and R 60 (see Doc. M/14 dated 12 April 1973, points 4, 6 and 16). The legislative motive underlying the proposed amendment to future Rule 60 EPC was explained in that document in the following way: “This proposal supplements the proposal for the insertion of a new paragraph 2a in Article 98 [...] The Member States of the European Communities considered that if any party interested is granted the right to institute proceedings against a European patent which has been surrendered or which has lapsed for all the designated States, it would logically be necessary to grant the opponent the right to have the opposition proceedings continued where the European patent is surrendered or lapses whilst the proceedings are taking place.” [emphasis added by the board] [1.7] The proposal was agreed on by the Main Committee I with very little discussion. The minutes of the proceedings record the following further explanation (See Minutes of the Munich Diplomatic Conference for the Setting Up of a European System for the Grant of Patents, page 94, point 2284): “Speaking on behalf of those States, the delegation of the Federal Republic of Germany said that this amendment was merely the consequence of the acceptance of the proposal by the Member States of the European Communities concerning Article 98. It would therefore appear logical to recognise an opponent’s right to have opposition proceedings continued where a European patent had been surrendered or had lapsed while opposition proceedings were still in progress.” [emphasis added by the board] [1.8] It can thus be deduced from the Travaux Préparatoires that the scope of application of R 60(1) (now R 84(1)) was intended to be limited to the situation where the opposed patent has been surrendered or has lapsed during on-going opposition proceedings. [1.9] Thus, in view of the foregoing considerations, the board cannot allow the [patent proprietor’s] main request. [Patent proprietor’s] auxiliary request and [opponent’s] request [2.1] The [patent proprietor’s] auxiliary request and the [opponent’s] request are identical, namely to set aside the decision under appeal and to revoke the patent-in-suit in its entirety. […] [2.2] It follows from the principle of party disposition in opposition appeal proceedings that a request by the patent proprietor for revocation of the opposed patent has to be granted. In this respect it is irrelevant whether the proprietor states that he no longer approves the text in which the patent was granted or maintained by the first instance and will not be submitting an amended text or whether he directly requests that the patent be revoked (see the decisions cited in “Case Law of the Boards of Appeal of the EPO”, 6th edition 2010, page 738). [2.3] Therefore, the [patent proprietor’s] auxiliary request, which is identical to the [opponent’s] request, namely to set aside the decision under appeal and to revoke the patent-in-suit in its entirety, is allowed. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 663/02 – G 1/07 Injection
K’s Law – The ebook
T 663/02 – G 1/07 Injection 31 Mai 2011
The present case is one of the cases where the Board decided to await the outcome of referrals to the Enlarged Board (EBA). It is only after decisions G 1/04 and G 1/07 had been issued that the Board resumed its work, which explains that a “02” decision is issued in 2011 only, almost nine years after the revocation of the opposed patent by the opposition division (OD). Claim 1 of the main request before the Board was identical with claim 1 as granted: A method of imaging an artery in a region of interest in a patient using magnetic resonance imaging and a magnetic resonance contrast agent, the method containing the steps of: injecting the magnetic resonance contrast agent into a vein remote from the artery; monitoring the region of interest by using a series of magnetic resonance radio frequency pulses and measuring the response of the region of interest to the series of magnetic resonance radio frequency pulses; detecting the arrival of the contrast agent in the region of interest by comparing the response of the region of interest to the series of magnetic resonance radio frequency pulses before injecting the contrast agent to the patient to the response of the region of interest to the series of magnetic resonance radio frequency pulses during or after injecting the contrast agent to the patient; generating an imaging initiation signal after detecting the arrival of the contrast agent in the region of interest; collecting magnetic resonance image data in a magnetic resonance imaging sequence in response to the imaging initiation signal, wherein the magnetic resonance image data which is representative of the central portion of k-space is collected at the beginning of the imaging sequence and the data which is representative of the periphery of k-space is collected thereafter; and constructing an image of said artery, using the magnetic resonance image data, wherein the artery appears distinct from the adjacent veins and background tissue. The decision is interesting because it is one of the first to deal with the new situation created by G 1/07 and does so in a very detailed and pedagogical manner, admittedly at the expense of conciseness. Diagnostic methods practised on the human or animal body (A 53(c)) Opinion G 1/04 of the EBA [3.1.1] In its opinion G 1/04 [5] the EBA stated that there was no reason to deviate from the established jurisprudence of the boards of appeal, according to which “the method steps to be carried out when making a diagnosis as part of the medical treatment of humans or the veterinary treatment of animals for curative purposes include: (i) the examination phase involving the collection of data, (ii) the comparison of these data with standard values, (iii) the finding of any significant deviation, i.e. a symptom, during the comparison, and (iv) the attribution of the deviation to a particular clinical picture, i.e. the deductive medical or veterinary decision phase”. In this context, the EBA considered the question “whether the diagnostic methods referred to in A 52(4) EPC [1973] comprise only the deductive medical or veterinary decision phase consisting in attributing the detected deviation to a particular clinical picture, i.e. the diagnosis for curative purposes stricto sensu, or whether they are also meant to include one or more of the preceding steps related to examination, data gathering and comparison”. The conclusion drawn by the EBA was that
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T 663/02 – G 1/07 Injection
K’s Law – The ebook
“The diagnostic methods referred to in A 52(4) EPC [1973] include the method step related to the deductive medical or veterinary decision phase, i.e. the diagnosis stricto sensu, representing a purely intellectual exercise” (Reasons, [7]). Moreover, “in order that the subject-matter of a claim relating to a diagnostic method practised on the human or animal body falls under the prohibition of A 52(4) EPC [1973], the claim is to include (in view of A 84 EPC [1973]) the feature pertaining to the diagnosis for curative purposes as a purely intellectual exercise representing the deductive medical or veterinary decision phase …, as well as the features relating to … the preceding steps which are constitutive for making the diagnosis …, and … the specific interactions with the human or animal body which occur when carrying those out among said preceding steps which are of a technical nature …” (Reasons, [8]). Present case [3.1.2] In the present case, the method of claim 1 of the granted patent does not include the deductive medical or veterinary decision phase, i.e. the diagnosis stricto sensu. Rather, it only includes the preceding steps of gathering information which are constitutive for making the diagnosis (“monitoring …, detecting …, generating …, collecting …, constructing …”), and the specific interactions with the human or animal body (“injecting …”) which occur when carrying out said preceding steps. [3.1.3] Therefore, the subject-matter of claim 1 of the granted patent does not constitute a diagnostic method practised on the human or animal body within the meaning of A 53(c). Methods for treatment of the human or animal body by surgery (A 53(c)) Opinion G 1/04 of the EBA [3.2.1] In its opinion G 1/04 [6.2.1] the EBA stated that “Methods of surgery within the meaning of A 52(4) EPC [1973] include any physical interventions on the human or animal body in which maintaining the life and health of the subject is of paramount importance”. Moreover, the EBA confirmed the established jurisprudence of the boards of appeal, according to which “a method claim falls under the prohibition of A 52(4) EPC [1973] if it includes at least one feature defining a physical activity or action that constitutes a method step for treatment of the human or animal body by surgery or therapy”. Therefore, the surgical or therapeutic nature of a method claim can be established by a single method step. The EBA also considered the development of medicine with regard to diagnostic methods. In particular, “technological advances penetrate human and veterinary medicine and the medical and veterinary profession. Today, and more than at any time before, technology is about to fundamentally alter how and by whom health care is administered, with the result that human and veterinary medicine is gradually being reshaped by technology. In a changing medical or veterinary environment brought about by technological progress, the need for reconsidering the relationship between medical or veterinary practitioners and non-medicinal support staff will become more pressing than ever before. This will have implications for the non-medicinal support staff in terms of profile and expansion in that a great variety of diagnostic and other information will have to be procured and gathered by these persons” (Reasons, [6.3]). These considerations have a general character and, therefore, should not be limited to diagnostic methods only. Decision G 1/07 of the EBA [3.2.2] In its decision G 1/07 [3.3.6] the EBA held that the introduction of the exclusion of surgical methods from patentability (A 53(c)) derived from socio-ethical considerations and considerations of public health (“Medical and veterinary practitioners should be free to use their skills and knowledge of the best available treatments to achieve the utmost benefit for their patients uninhibited by any worry that some treatment might be covered by a patent”. This is the ratio legis of the exclusion clause. 2194 | 3398
T 663/02 – G 1/07 Injection
K’s Law – The ebook
In the judgement of the EBA, the broad construction of the kind of interventions being of a surgical nature developed in decision T 182/90 (“any non-insignificant intervention performed on the structure of an organism by conservative (“closed, non-invasive”) procedures such as repositioning or by operative (invasive) procedures using instruments including endoscopy, puncture, injection, excision, opening of the bodily cavities and catheterisation”) should be considered “as being or having become overly broad when considering today’s technical reality” (Reasons, [3.4.2.1-2]). It is noted that the explicit referral to the “today’s technical reality” shows a manifest parallelism with the considerations made in opinion G 1/04 6.3]) pointing to the importance of “technological advances”. Moreover, the EBA again referred to the today’s technical reality with regard to the application of routine interventions in the medical field. In particular, the EBA held that “Today, numerous and advanced technologies do exist in the medical field concerning the use of devices which in order to operate must in some way be connected to the patient. Methods for retrieving patient data useful for diagnosis may require administering an agent to the patient, potentially by an invasive step like by injection, in order to yield results or at least they yield better results when using such a step. Considering this technical reality, excluding from patentability also such methods as make use of in principle safe routine techniques, even when of invasive nature, appears to go beyond the purpose of the exclusion of treatments by surgery from patentability in the interest of public health” (Reasons, [3.4.2.2]). Consistently with the criticism of T 182/90, the EBA held that the definition given in G 1/04 (“any physical intervention on the human or animal body …”; Reasons, [6.2.1]) also appeared too broad (Reasons, [3.4.2.2]). Thus, the EBA consistently pleaded for a narrow construction. “Hence, a narrower understanding of what constitutes by its nature a “treatment by surgery” within the meaning of A 53(c) EPC is required” (Reasons, [3.4.2.3]). The wording used by the EBA (“is required”) clearly underlines the necessity of a new definition consistent with the today’s technical reality in the medical field. Such a need was indeed already acknowledged in G 1/04 [6.3], as mentioned above. In order to find elements of a narrower understanding, the EBA stated that “any definition of the term “treatment by surgery” must cover the kind of interventions which represent the core of the medical profession’s activities, i.e. the kind of interventions for which their members are specifically trained and for which they assume a particular responsibility” (Reasons, [3.4.2.3]). The used wording (“any definition … must …”) is categorical about the need of concentrating on the “core of the medical profession’s activities”. The core referred to above concerns “the physical interventions on the body which require professional medical skills to be carried out and which involve health risks even when carried out with the required medical professional care and expertise. It is in this area that the ratio legis of the provision to free the medical profession from constraints by patents comes into play. Such a narrower understanding rules out from the scope of the application of the exclusion clause uncritical methods involving only a minor intervention and no substantial health risks, when carried out with the required care and skill, while still adequately protecting the medical profession” (Reasons, [3.4.2.3]). In this statement, the concepts of “professional medical skills”, “medical professional care and expertise”, “health risks” and “substantial health risks” are introduced as criteria which help in differentiating between major physical interventions on the body to be excluded from patentability and uncritical methods for which the exclusion clause should not apply. Further criteria may be the “degree of invasiveness” or the “complexity of the operation performed” (“the required medical expertise and the health risk involved may not be the only criteria which may be used to determine that a claimed method actually is a “treatment by surgery” within the meaning of A 53(c). The referring decision and the President have mentioned the degree of invasiveness or the complexity of the operation performed …”; Reasons [3.4.2.4]) 2195 | 3398
T 663/02 – G 1/07 Injection
K’s Law – The ebook
With regard to health risks, the EBA also considered the potentially negative side effects of the administration of diagnostic contrast agents. In this respect, it was clarified that “there is an exclusion from patentability as a surgical method only if the health risk is associated with the mode of administration and not solely with the agent as such” (Reasons, [3.4.2.3]). Present case [3.2.3] The question to be decided in the present case concerns whether, in the context of claim 1 of the granted patent concerning a method of imaging an artery in a region of interest in a patient using magnetic resonance imaging and a magnetic resonance contrast agent, the step of “injecting the magnetic resonance contrast agent into a vein remote from the artery” has a surgical character. According to the granted patent, this step implies the placement of an intravenous catheter through which the contrast agent may then flow into the vascular system. It may here be left open whether the injecting action stricto sensu, i.e. pumping the contrast agent into the vein, immediately follows or not the placement of the catheter. It is not for the Board to develop a new narrow construction of what should be regarded as surgical activities excluded from patentability. This would indeed exceed the limits of the present case. Rather, the Board has to judge on the applicability of the exclusion clause to the present method claim in the light of G 1/04 and G 1/07 referred to above. If the step mentioned above is considered as surgical, the claimed imaging method including this step would then fall under the prohibition of A 53(c) as a method for treatment of the human or animal body by surgery (G 1/04). Core of the medical profession’s activities [3.2.4] The EBA explicitly held in G 1/07 that “any” narrower definition of treatment by surgery “must” cover the interventions which represent the “core of the medical profession' activities”. Thus, it has to be assessed whether the injection of a magnetic resonance contrast agent into a vein belongs to the said core. This assessment should be made in the light of the technical development mentioned by the EBA. In particular, technology is today about to fundamentally alter human medicine, in particular how and by whom medical care is administered (G 1/04). As a matter of fact, the placement of an intravenous catheter is one of the most common invasive procedures performed in hospitals and consulting rooms. Physicians are traditionally responsible for this intervention. But the increasing qualification level of paramedical professionals (the term “paramedical” is used as relating to professions which supplement and support medical work but do not require the level of a fully qualified doctor) has led to the adoption in national healthcare systems of regulations allowing physicians to delegate some activities which were in the past of their exclusive pertinence. This trend appears to reflect social changes like the higher life expectancy, the increasing demand for health services and the need to contain health costs. For instance, in a current home healthcare system a nurse provides individualized care for patients in their own home following a hospital stay or for long-term care patients. The nurse is thus responsible for carrying out a therapy at home if necessary, which may include the administration of drugs prescribed by a physician through a peripheral venous access. This requires from the nurse adequate levels of training, expertise and experience. Moreover, the increasing qualification level of paramedical professionals has led to the development of new professions like, for example, that of radiographers meanwhile officially acknowledged in the United Kingdom. A radiographer is a radiologic technologist who assists a radiologist, i.e. a physician specialised in radiology, in the practice of the medical profession. For example, a diagnostic radiographer interacts with patients and supervises the appropriate radiographic techniques to be used for obtaining the images required by the delegating radiologist. As a matter of fact, a duly trained and qualified radiographer may be delegated to make intravenous injections of a contrast agent when carrying out a magnetic resonance imaging procedure. This happens under the supervision of the delegating radiologist. Therefore, it appears that in current healthcare systems a physician may delegate medical acts, for example intravenous injections, to paramedical professionals duly trained and qualified for carrying out the delegated act. The delegation is governed by regulations which may differ depending on the national healthcare systems. These regulations define all the acts which may be delegated. Alternatively, they establish the criteria which have to be met for the delegation to be possible and the limits which have to be respected. The delegating physician usually evaluates the risks to the patient, delegates only those acts for which a paramedical professional has been
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T 663/02 – G 1/07 Injection
K’s Law – The ebook
specifically trained, and supervises the work of the delegated professional. De facto, qualified hospital nurses are today entrusted with taking venous blood probes, giving infusions and making intravenous injections. In view of this development, delegated acts can hardly be considered as belonging to the core of medical activities. As already stated, current regulations, in the interest of an efficient service to the patients, allow a physician to delegate minor interventions which do not imply substantial health risks, when carried out by a qualified paramedical professional with due care and skill. Delegation does not apply to the core of the medical activities which, within the meaning of G 1/07, cover the physical interventions which involve substantial health risks even when carried out with the required medical professional care and expertise and for which the physician assumes particular responsibility. In summary, an intravenous injection can today be delegated by a physician to a qualified paramedical professional. This gives an indirect hint at the fact that such an injection may be considered as representing a minor routine intervention which does not imply substantial health risks when carried out with the required care and skill. It thus follows that the step of intravenously injecting a contrast agent would be ruled out from the scope of the application of the exclusion clause (A 53(c)) following the narrow understanding advocated by the EBA (G 1/07). Substantial health risks [3.2.5] In the following, it is worth to try assessing the health risks of intravenous injections with the aim of verifying whether the indirect hint mentioned above can also be derived in a direct way. Known complications of intravenous injections are infection, phlebitis, extravasation, bleeding and haematoma. An effective way of assessing risks is to use a so-called risk matrix. The likelihood that a complication of an intravenous injection may happen is represented on a first scale (x-axis). The health impact of that complication is represented on a second scale (y-axis). According to a simple model, the likelihood is subdivided in three levels, i.e. “unlikely”, “likely” and “very likely”. The health impact is also subdivided in three levels, i.e. “minor”, “moderate” and “major”, wherein “minor” would cover negligible effects which do not need any treatment, “moderate” reversible effects which can be easily treated, and “major” serious irreversible effects or even death. The risk matrix thus permits to combine the levels of likelihood and health impact of a complication with regard to a large number of patients so as to obtain statistical health risk scores which may be used to decide what action should be taken, for instance whether or not the intravenous injection may be delegated to a paramedical professional. Due to its definition, the risk matrix is subdivided in various sectors. A first sector is defined by the levels “unlikely” and “minor”, a second sector by the levels “likely” and “minor”, and so on up to the last sector corresponding to the levels “very likely” and “major”. The heath risk score assigned to each sector increases when moving from the first to the last one. In the Board’s view, such an assessment based on the risk matrix would be in agreement with the understanding of the EBA (G 1/07) in that the sectors with low health risk scores, at least that with the levels “unlikely” and “minor”, would correspond to the uncritical methods involving only a minor intervention and no substantial health risks and the sectors with high health risk scores, at least that with the levels “very likely” and “major”, would correspond to the physical interventions on the body which require professional medical skills to be carried out, which involve substantial health risks even when carried out with the required medical professional care and expertise, and for which the physicians assume a particular responsibility. In the present case, there should be no doubt that all the complications of intravenous injections mentioned above are reversible and can be solved with standard treatments, if necessary. Thus, the above risk assessment gives a further direct hint at the fact that intravenous injections may be considered as minor routine interventions involving no substantial health risks. During the appeal proceedings, a serious complication of intravenous injections of a specific magnetic resonance contrast agent was mentioned. Patients with acute or chronic renal insufficiency who receive a gadolinium-based contrast agent appear to be at an increased risk for developing a Nephrogenic Systemic Fibrosis (NSF). This complication, however, only depends on the injected substance. As a further complication, allergic reactions may be mentioned which also depend on the injected substance.
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T 663/02 – G 1/07 Injection
K’s Law – The ebook
In this respect, the EBA clarified in G 1/07 that there was an exclusion from patentability as a surgical method only if the health risk was associated with the mode of administration and not solely with the agent as such. Therefore, the complications concerning NSF and allergies are irrelevant for the issue of assessing whether the claimed method should be excluded from patentability under A 53(c). Degree of invasiveness and complexity of the operation performed [3.2.6] The Board holds that an intravenous injection is an invasive intervention. However, the degree of invasiveness and the complexity may be considered as being low, at least with regard to injections into superficial arm or leg veins, as it is envisaged in the patent in suit. Therefore, even considering these criteria, the same conclusions mentioned above could be drawn. [3.2.7] Therefore, it results from the foregoing that the method according to claims 1-11 of the granted patent does not relate to a method for treatment of the human or animal body by surgery falling under the prohibition of A 53(c). This conclusion is consistent with G 1/07. The Board found the main request to be allowable and ordered the patent to be maintained as granted. To
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An earlier decision implementing G 1/04 and G 1/07can be found here.
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wrapper
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T 823/07 – Logorrhoea
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T 823/07 – Logorrhoea 30 Mai 2011
The present decision deals with an appeal filed by the applicant after the Examining Division (ED) had refused its application. Claim 1 of the main request before the Board read: 1. Searching apparatus configured to identify commercial suppliers (111, 112, 113) in response to a specified keyword, the apparatus comprising:
input means arranged to receive an input keyword; searching means (401) configured to search a database (402) indexed with respect to specified keywords to identify displayable text items related to said input keyword, each item regarding one of said commercial suppliers (111, 112, 113); image storage means (405) arranged to store graphical images, each graphical image identifying or being associated with a commercial supplier (111, 112, 113); linking means configured to link each stored graphical image with a respective one of the displayable text items to form a respective stored results entry, the stored results entry in use being arranged to present the text item and graphical image for simultaneous display; and output means (403) configured to supply data defining a displayable list of said stored results entries assembled by said linking means, thereby enabling a user to identify a desired commercial supplier from the list of stored results entries when the list is displayed, based upon the graphical image of each stored results entry.
In what follows the Board discusses the presence of an inventive step with respect to document D1. [4] It is uncontroversial that the invention claimed is distinguished from the search engine of document D1 in that (A) the images stored by the image storage means identify or are associated with commercial suppliers; (B) the linking means links such images, i.e. images which identify or which are associated with commercial suppliers, with the corresponding text item to form listings (stored results entries) to display each text item and corresponding graphical image simultaneously; (C) so that when the listings are displayed the user is enabled to readily identify a desired commercial supplier from the graphical image. [5] These features, however, derive in a straightforward manner from an underlying concept which lacks technical character and does thus not provide a technical contribution to the prior art. In fact, displaying logos of commercial suppliers in combination with information concerning products, services etc provided by such suppliers is a presentation of information which exclusively addresses the mental and cognitive activities of users. There is no direct causal relationship to the technical solution of a technical problem. Even if it is true that presenting information according to this concept enables the user to identify the desired supplier and the associated listings more easily and quickly than with the prior art system, this result would be entirely subjective depending on the mental furniture of the user. [6] As follows from decision T 1143/06 [5.4], the manner how cognitive content is presented to the user may only contribute to the technical solution of a technical problem if the manner of presentation (exceptionally) shows a credible technical effect. Non-technical features and aspects of an invention should not be given any weight in assessing inventive step. If they belong to the general framework in which the invention evolves, they may be used in formulating the relevant technical problem (see decision T 641/00).
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T 823/07 – Logorrhoea
K’s Law – The ebook
[7] There has been no proof of any such technical effect of the present concept of presenting information, beyond the alleged advantages which concern the mental and cognitive activities of the user. The only credible technical effects result from the computer implementation of this concept. This circumstance distinguishes the case from the decisions cited by the appellant in support of its arguments […]. In all these decisions, the board concluded on the existence of a technical contribution over the prior art. The technical contribution resulted from overcoming physical limitations of the size and resolution of computer screens (T 643/00, T 928/03) and from the functions of a “new input device” conferring technical character (T 333/95). Neither one of the decisions derives the technical character of a feature or activity from the mental effort required or any similar effect; these are only secondary considerations. Moreover, in the context of inventive step, caution is required in applying old decisions concerning non-technical subject-matter like decision T 333/95 since the relevant case law has experienced some important development as explained in decision T 154/04 […]. In the present case, the only relevant technical aspects of the invention are standard programming features for implementing the idea of displaying search results in connection with supplier logos on a computer system. The programming and implementation of this idea is obvious in the light of the prior art. [8] In fact, document D1 already indicates that “[if] some other graphic is to be displayed, then the name of that graphics image format file is entered into this field” […]. Striving to solve the technical problem of providing the search engine of document D1 with the additional functionality of combining individual logos of commercial suppliers with the associated search results, a skilled person would immediately recognise from document D1, figure 17 that merely the name in field 1750 had to be changed from pointing to a more or less fixed graphic (bullet) to a logo associated with the commercial supplier identified in name field 1705.
There are no technical difficulties to overcome in providing an image database of commercial supplier logos and establishing an appropriate cross reference to the said name fields 1705 and 1750 of the data stored in the yellow pages database 245 of the prior art system. [9] For these reasons, the invention according to claim 1 of the main request does not meet the requirement of inventive step. To read the whole decision, click here. The file wrapper can be found here. 2200 | 3398
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Oldies But Goldies - Proof For Prior Use
Oldies But Goldies - Proof For Prior Use 28 Mai 2011
As new decisions are scarce these days, I have decided to follow a suggestion that a member of the Boards has made to me not long ago. It is an idea I had had in the past but which I had never reduced to practice because back then I was snowed under with fresh decisions. The idea is to present old decisions which are still cited today but which not all of those who cite them have actually read. So, from time to time, I shall present key passages of such decisions. Feel free to let me know whether you like the idea or not. Of course, there are some risks in presenting old case law, because the EPC has changed here and there and some statements may simply be obsolete. Also, my knowledge of case law is limited and I might miss relevant decisions. Should I fall into one of those traps, please leave a comment. I have decided to start with decisions mentioned in my previous post – decisions that deal with prior use and the standard of proof required for establishing the reality of such a use. T 270/90 is a relatively early decision (March 21, 1991) of Board 3.3.3 tackling the question of which standard is to be applied. The Board nicely summarised the “balance of probability” principle developed in earlier decisions (e.g. T 381/87 and T 182/89) and then applied it to prior uses: [2] [… T]he objection of lack of novelty boils down to an objection of prior public use based on the analytical results of Noryl samples submitted by the [opponents]. [2.1] In relation to the issue of prior use the [patent proprietor] strongly argued that, as a matter of law, this ground of objection needed to be proved more strictly than any of the other grounds of objection available under A 100. Indeed, he went so far as to say that the evidential test for establishing prior use under the EPC must be at least as strict as the strictest of tests applied by any of the relevant judicial organs of the Contracting States. In effect, he submitted that prior use had to be established not on the balance of probability but beyond reasonable doubt, that is to say established with the same degree of strictness as applies, for example, to criminal proceedings in the United Kingdom. The Board wishes to restate the principles of law that apply to appeal proceedings under the EPC, for these principles are tacitly assumed in many cases, but are seldom expressly spelt out. The Boards of Appeal are judicial bodies, adjudicating, in the case of oppositions, in contentious civil matters. The matters are contentious because there is an opposition to a granted patent, and they are civil because they pertain to a species of intellectual property. Although it is true that the Boards are possessed of inquisitorial powers (A 114(1)), these powers do not convert them from judicial into administrative tribunals. In consequence, when arriving at their decisions, the Boards, in addition to exercising their inquisitorial powers (should this be necessary), decide the issues before them on the basis of the evidence adduced by the parties. Their decision need not, and indeed in most cases could not, be based on absolute conviction, but has, instead, to be arrived at on the basis of the overall balance of probability, in other words, on the footing that one set of facts is more likely to be true than the other (see decision T 182/89). As far as each of the parties to the proceedings is concerned, they carry the separate burdens of proof of any fact they allege. The weight of that burden is the balance of probability as distinct from “beyond all reasonable doubt” or “absolute conviction”. In the course of an appeal, therefore, each party must seek to prove facts alleged by it to this degree of proof and, as was said above, it is the function of the Board to decide, applying the same standard, which set of facts is more likely than the other to be true. These principles clearly apply to all facts and matters alleged in relation to all grounds of opposition, including public prior use. Accordingly, the [patent proprietor’s] submission that 2201 | 3398
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Oldies But Goldies - Proof For Prior Use
the evidential test or burden of proof for prior public use needs to be stricter than that for other grounds of objection under the EPC is rejected. […] In T 472/92 (November 20, 1996) the same Board introduced a caveat with respect to this approach: [3.1] Concerning the standard of proof that needs to be applied, the established legal practice of the Boards is to use the self-same standard of proof in prior public use objections as it does in others covered by A 100 : the balance of probability (see, e.g. T 270/90). In that case, the Board expressly refused to accept a submission that the much more rigorous standard of “beyond all reasonable doubt” should apply, even if, as was the case there, both parties were able to access and to adduce evidence relating to the decisive issue of confidentiality of the transactions alleged to constitute prior public use. The Board reaffirms this approach, subject to the following caveat. Deciding any fact at issue by applying the above standard requires making a choice as to which one of the two contradictory propositions espoused by the parties is more likely to be true, since two contradictory propositions cannot, in logic and therefore in law, be either true or false. In judging the truth or falsity of either, regard must be had to the nature, content and likely source of the evidence that is available and can be adduced by the parties. Generally speaking, in cases not involving the issue of prior public use, both parties are able to obtain and to adduce the evidence upon which their respective case rests. By contrast, in the majority of prior public use cases practically all the evidence in support of an alleged prior public use lies within the power and knowledge of the opponent, so the patentee seldom has any ready, or indeed any access to it at all. All he can, in practice, do is to challenge that evidence by pointing out any inconsistencies contained in it or to draw attention to any gaps in the chain of commercial transactions that needs to be established by the opponent in order to succeed on this ground. In consequence, an opponent must prove his case up to the hilt, for little if any evidence will be available to the patentee to establish the contradictory proposition that no prior public use had taken place. […] In February 2003, Board 3.5.01 issued decision T 55/01 where it found an exception to the exception: [4.1] […] It is true that, in cases where only one party has access to information about an alleged public prior use, the case law has tended towards expecting that the public prior use be proved beyond any reasonable doubt (“up to the hilt”), answering the typical questions “What?”, “When?”, “Where?”, “How?” and “To whom?”, since the other party was reduced to merely pointing out inconsistencies or gaps in the chain of evidence; see T 472/92 [3.1]. The case law has however taken into account that cases of mass-produced consumer goods which are widely advertised and offered for sale to customers who often remain anonymous may require different treatment; see T 241/99 [4.2]. Indeed, to demand a complete chain of proof in such cases would make it unreasonably complicated for a party to successfully rely on a sale or an offer for sale to prove public availability. […] I’ve had a look at T 241/99 (December 6, 2001; Board 3.5.2 ; in German). Here is my translation of the most relevant paragraphs: [4.1] As correctly noted by opponent 02, according to the case law, one single proven sale is sufficient for making the sold object available to the public (T 482/89 [3]). However, the Board is of the opinion that in such a case the requirements of R 55 c) [EPC 1973] would only be complied with if the name and the address of the single buyer were given within the time limit for filing an opposition. The Board does not see any difference between the indication “client X” and the absence of any indication with respect to the client. [4.2] [Opponent] 02 insisted that the situation was to be assessed differently when there were sales to a plurality of clients, as in the present case. It is indisputable that sales on a market place or over the counter are to be assessed differently as regards the indication of facts and evidence than the case of a single sale; however, the Board is of the opinion that the present 2202 | 3398
K’s Law – The ebook
Oldies But Goldies - Proof For Prior Use
case does not belong to this kind of sale of bulk goods (Massenware) to anonymous clients. […] If I understand things correctly, this obiter dictum from T 241/99 does not contradict T 472/92. It does not say that in a case where all the evidence in support of an alleged prior public use of bulk goods lies within the power and knowledge of the opponent, the balance of probabilities should be applied, but that the indication of facts and evidence should be assessed differently. When putting together T 472/92 and T 241/99, I would come to the conclusion that the standard of proof is still “up to the hilt” but that “up to the hilt” can mean something different when mass sales are considered. To be more precise, in order to establish beyond reasonable doubt that such a sale has taken place, you would not have to provide the names of the buyers, but other evidence as to the reality of the sale would do. Therefore, I am not sure that T 55/01 has really drawn the right conclusion from T 241/99. Of course, there is much more case law out there and the doctrine of the Boards is not as clear-cut as might appear from this presentation. Your personal conclusions might also differ from mine. Be that as it may, I think these three decisions are well worth reading again.
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T 278/09 – On Sheets And Other Paperwork
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T 278/09 – On Sheets And Other Paperwork 27 Mai 2011
The present appeal was directed against the decision of the Opposition Division (OD) revoking the opposed patent. The decision contains an interesting discussion of whether some of the documents cited against the patent were indeed available to the public before the priority date of the patent under consideration (1/9/99). It shows how hard it can be for an opponent to prove the existence of a prior public use/disclosure. *** Translated from the German *** [1.3.1] Document D2 is a product specification sheet issued by Engelhard Corporation describing the product Biju® BVW. This document has at its bottom left a so-called revision date REV-3 from 1994. There is no date of impression or publication.
D2 - click to enlarge It can be seen from the declaration of Mr Ozimek, filed as document D15, that Mr Ozimek has been working in the pigment distribution business for Mearl Corporation (from 1994 to 1996), for Engelhard Corporation, which had merged with Mearl Corporation (from 1996 to 2006) and for BASF Corporation, which has merged with Engelhard Corporation (since 2006). […] NB: BASF Corporation acts as opponent in the present case. According to this declaration the product Biju® BVW was sold by Mearl Corporation from 1994 to 1996; it was only from 1997 onwards that the product was sold by Engelhard Corporation. […]
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T 278/09 – On Sheets And Other Paperwork
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Moreover, document D15 contains the declaration that product specification sheets were sent to the clients on the date of revision indicated at their bottom left, or shortly afterwards. […] However, document D15 does not mention whether the specific product specification sheet D2 was transmitted to the clients without any obligation of secrecy and whether this version has been made available to the clients at all. The Board also notes that document D2 of Engelhard Corporation could not have been sent to the clients on the mentioned revision date of 1994 or shortly afterwards because, as can be seen from document D15, Engelhard Corporation only could sell the Biju® BVW product from 1997 onwards, after its merger with Mearl Corporation. Moreover, it is unknown whether the original revised version of 1994 – which has not been filed – was made available to the clients by the then product proprietor Mearl Corporation without any obligation of secrecy, or has been sent to the clients at all. Furthermore, the statement in document D15 according to which the product Biju® BVW was sold, without there being any evidence for a sale to a buyer who was not bound by an obligation of secrecy, is insufficient as proof for a prior public use (see T 472/92 [3.1-2] and “Case Law of the Boards of appeal of the EPO”, 6th edition, 2010, I.C.1.8.8(a), page 76) or public availability of document D2. Moreover, the indications, which are provided below the product properties in D2 only indicate that the product described therein was only potentially intended to be sold but do not provide proof that a product having the disclosed properties has indeed been sold without any obligation of secrecy. In this context, the Board is of the opinion that a product specification sheet only presents the composition and the properties of newly developed or improved products and as such does not reveal anything on its commercialisation and potential public availability. The decision on commercialisation and on the moment of commercialisation can be based on other circumstances, such as the general economic situation or the commercialisation policy of the company under consideration. Moreover, the positive decision to commercialise a product does not necessarily entail that a product specification sheet is to be made available to the public, because it can also be distributed under obligation of secrecy. Therefore, in such a case it is not sufficient to merely strike the balance of probabilities for the public availability of an allegedly novelty destructive product specification sheet, the public availability of which is only based on presumptions (see also T 738/04 [3.4]). [1.3.2] Document D13 of Mearl Corporation also concerns the product Biju® BVW and has a revision date 2/18/93, i.e. of 1993.
D13 - click to enlarge
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T 278/09 – On Sheets And Other Paperwork
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As Mr Oziek was not yet working for Mearl Corporation in 1993 […] his declaration is irrelevant in respect of the availability of document D13. Document D13 contains a barely readable passage with three signatures at its bottom right. Therefore, it is not clear to the Board whether this document is an internal document of Mearl Corporation or a product specification sheet to be given to clients. Moreover, it is unknown whether this document was indeed made available to clients without there being any obligation of secrecy and whether it has been sent to the clients at all. The arguments made in respect of document D2 also apply to document D13 in an analogous way. [1.3.3] As far as the decisions T 804/05, T 743/89 and T 55/01 are concerned, the Board is of the following opinion:
Decision T 804/05 dealt with the public availability of an advertising leaflet, which is normally distributed among interested circles and which has a date on its cover sheet; the competent Board decided that in the absence of proof to the contrary one had to presume that the advertising leaflet had been made available to interested clients without any obligation of secrecy during the months following this date (see point [2] of the reasons). However, this case differs from the present case because a loose product specification sheet, which is not part of an official advertising leaflet, does not, as explained above, necessarily qualify as information that is meant for the public;
T 743/89 concerned a commercial flyer which was normally to be distributed among interested circles and which had a date (see point [3] of the reasons); in this case also it was decided that one had to presume that the flyer was made available to the public during the months following the date of impression. Therefore, this case is not to be equated with the present case, where the Board has to decide on the public availability of a loose product specification sheet without any date of impression, which is not part of an official advertising leaflet and does not necessarily qualify as information that is meant for the public;
T 55/01 dealt with the question of whether an operating manual for the satellite receiver of certain TV set brands, which had a date of impression, had been made available to the public. The competent Board decided (see point [4.1] of the reasons) that TV sets were mass-produced goods that were distributed on the market very quickly in order to be sold or retailed. As they are certainly sold or retailed very quickly, they are to be considered as having been made available to the public even if there is no specific proof for a sale. Therefore, the operating manual that was delivered together with a TV set had to be offered for sale during the months following the date of impression, and, as a consequence, had been made available to the public. This case is not to be equated with the present case either because pigment mixtures cannot be considered to be mass products.
[1.3.4] Therefore, the Board comes to the conclusion that there is no proof whatsoever that the documents D2 and D13 and the product disclosed therein had been publicly available before the priority date or the filing date of the impugned patent. [1.3.5] The documents D8a, D8b and D8d are product specification sheets of the products Biju® Ultra UXD of the BASF Corporation, Timica Extra Large Sparkle Product No. 110S of the Mearl Corporation and Suspending Lacquer SLF-2 of the Mearl Corporation. Document D8a of the BASF company has a revision date Rev.3 (3/7/95) of 1995 and another date of 2007. Thus there is no doubt that this document is not part of the state of the art.
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T 278/09 – On Sheets And Other Paperwork
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D8a - click to enlarge Although document D15 explains in point 9 that the product Biju® Ultra UXD was sold by the Mearl corporation and the Engelhard corporation between 1994 and 1999, there is no evidence that a product specification sheet with the features listed in document D8a was indeed made available to the clients during this period without any obligation of secrecy, or that the original revised version of 1995 – which has not been filed – had been made available to the clients of the then product proprietor, the Mearl corporation, without any obligation of secrecy or had been sent to the clients at all. The product specification sheets D8b and D8d have the dates 10/81 and 3/87 and 11/85, respectively, which point towards periods before 1990. Therefore, the declaration of Mr Ozimek, who had only been hired by the Mearl company in 1994, are irrelevant in respect of those documents.
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T 278/09 – On Sheets And Other Paperwork
K’s Law – The ebook
D8b - click to enlarge
D8d - click to enlarge Moreover, the word “obsolete”, which means “out-dated”, has been stamped on those sheets. Although the [opponent] has declared during the oral proceedings that the word was stamped by the BASF corporation, i.e. after 2006, in order to mark products that were not commercialised any more, there is no evidence whatsoever that this had not been done by the previous product proprietors and that those sheets have been made available to the clients without any obligation of secrecy, or had been sent to the clients at all. 2208 | 3398
T 278/09 – On Sheets And Other Paperwork
K’s Law – The ebook
The further arguments made above in respect of documents D2 and D13 also apply to those documents in an analogous way. [1.3.6] As it has not been proven that documents D2, D8a, D8b, D8d and D13 were available to the public before the priority date or the filing date of the impugned patent, these documents are not to be taken into account any more. The Board then found the main request to be novel and remitted the case to the OD for further prosecution. I may be wrong but I think that the Board should have mentioned one important fact: In the present case, the alleged prior use/disclosure was made by the opponent company itself, which means that the facts have to be proven “up to the hilt”. As a matter of fact, T 472/92, which is cited in the present decision, has established that “[a]lthough the standard of proof is the same for all objections covered by A 100 (cf. T 270/90), in those prior public use cases, where practically all the evidence in support of an alleged prior public use lies within the power and knowledge of the opponent, the latter has to prove his case up to the hilt.” In T 804/05 the advertising leaflet was issued by Italian company Kariba S.p.a, which had no apparent link with the opponent, Italian company Crevan. In T 743/89, the flyer was issued by Borg-Warner Chemicals Inc.; the opposition was filed by Ciba-Geigy. Finally, in T 55/01, the opposition was filed by Interessengemeinschaft für Rundfunkschutzrechte GmbH; the operating manual was sold by the Metz company. So in all those cases, the standard to be applied was the balance of probabilities, whereas in the present case, the more strict “up to the hilt” standard is appropriate. For this reason alone, the cited decisions are not relevant and the Board’s arguments concerning the different nature of flyers and product specification sheets etc. appear to be unnecessary.
To download the whole decision (in German), click here. The file wrapper can be found here.
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T 126/09 – Selected With Care
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T 126/09 – Selected With Care 26 Mai 2011
This decision deals with the refusal of an application by the Examining Division (ED), on the ground of lack of novelty with respect to document D4. Claim 1 before the Board read (in English translation): Arrangement for carrying out surgical laser treatments of the cornea, the arrangement being adapted to emit pulsed treatment radiation with a wavelength of between 340 nm and 360 nm and a pulse duration in the femtosecond range, wherein the pulse energy of the treatment radiation is between 0.1 nJ and 5 μJ, preferably at most about 10 nJ. Here is the outcome of the novelty assessment by the Board: *** Translated from the German *** [3.1] D4 primarily deals with the determination of the fluence threshold for the fluence threshold for the optical breakdown and the determination of a point at which there is a change of the characteristic curve describing the fluence threshold as a function of laser pulse width for a variety of materials to which laser radiation is applied […]. The lasers used to this aim generally also work in the femtosecond range, with pulse energies that are within the domain cited in claim 1 […]. In the second paragraph of column 3 the wavelength range from 200 to 1000 nm is cited. Under “Example 3” […] the (in vitro) examination of cornea tissue with a wavelength if 770 nm is also disclosed. D4 does not mention any reasons for the choice of the wavelength value, nor does it refer to other wavelengths [suitable] for this material. [3.2] Thus the subject-matter of claim 1 differs from D4 only by the claimed wavelength range between 340 and 360 nm. [3.3] Therefore, the distinguishing feature concerns the selection of a sub-range within the broader parameter range disclosed in D4. As far as the assessment of novelty is concerned, the established case law of the Boards of appeal (see, e.g. T 198/84) requires that the following criteria be taken into consideration: the selected sub-range has to be (a) narrow, which is doubtlessly the case here (20 nm) and (b) sufficiently far removed from the known boundary values and examples, respectively, which is also the case here. Finally, it must (c) not be an arbitrary selection without there being a new technical teaching. This criterion is also fulfilled here, for the following reasons: On the one hand, the lower limit of the selected wavelength range ensures that the treatment radiation penetrates deep enough into the cornea (as a rule, the shorter the wavelength, the lower the penetration depth; the cornea becomes significantly transmissive at about 300 nm). On the other hand, the upper limit avoids the radiation to have undesirable secondary effects on other tissues of the eye, in particular the retina […]. In this context it is important to consider the transmissivity of the lens under the cornea, which significantly increases below about 400 nm, so that radiation of greater wavelength can reach the rear parts of the eye, as far as the retina, almost without being attenuated (mehr oder weniger ungehindert), and can damage them. The selected (narrow) wavelength range from 340 to 360 nm is sufficiently remote from both limits (300 and 400 nm, respectively) so as to allow for patient specific variations of those limits of transmissivity. [3.4] The technical effect related to the upper boundary value cannot be considered to be “speculative” (as stated in point [1.3] of the decision refusing the application) because it can be clearly seen from the relevant technical literature that the transmissivity of the human eye lens significantly increases above 400 nm. It is further clear from point [1.4] of the decision refusing the application that the ED considered it mandatory that said technical effects were found in the selected sub-range exclusively. However, the Guidelines for examinations cited in this context (C-IV 9.8, version December 2007) only make the (positive) statement that criterion (c) is met if the technical effect occurring in the selected sub-range does not occur in the whole of the known range (see also T 198/84 [7]). This does not allow to derive the requirement construed by the ED. As 2210 | 3398
T 126/09 – Selected With Care
K’s Law – The ebook
correctly stated in the statement of grounds of appeal […], such a requirement would hardly ever be met and is, therefore, out of touch with reality (realitätsfremd). [3.5] Thus the claimed wavelength range is not an arbitrary cut-out of the range known from D4 and, therefore, not lacking novelty. Under these circumstances, it may remain open whether the lasers mentioned in general terms in D4 are “arrangements for carrying out surgical laser treatments of the cornea” within the meaning of claim 1. [3.6] As none of the other documents of the state of the art discloses the claimed combination of features, the subject-matter of claim 1 is novel within the meaning of A 54(1) and (2). To read the whole decision (in German), click here. The file wrapper can be found here.
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T 394/10 – No Shortcuts Please
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T 394/10 – No Shortcuts Please 25 Mai 2011
When applicants respond to a notification under R 71(3) by amending what the Examining Division (ED) was ready to grant, they sometimes invite trouble. In the present case the ED sent a communication under R 71(3) wherein it proposed two amendments : one in the description (where the term “preferably” was to be deleted in one paragraph) and another in claim 1 (where “is chosen from” (“man ... wählt aus ...”) was replaced by “consists of” (“... aus ... besteht”)).
In its reply the applicant requested the correction of an orthographic error and stated that the amendments proposed were not appropriate, in particular because the term “consists” led to an undue limitation of the finish (1) whereas the original expression was open. It therefore requested the patent to be granted without the proposed amendments (main request). The applicant also filed two auxiliary requests :
Auxiliary request 1: claims as proposed by the ED, plus an additional feature intended to “open” claim 1 as amended (“wherein the finish (1) may also comprise …”) Auxiliary request 2: claims as proposed in the communication under R 71(3).
The ED granted the patent according to auxiliary request 1 (NB: the English and French translations published in the B1 document correspond to the main request). The applicant filed an appeal and pointed out that the ED had not given any reasons for refusing the main request. The Board finds this complaint to be justified: *** Translation from the German *** [2] Pursuant to A 113(2) the EPO shall examine, and decide upon, the EP application or the EP only in the text submitted to it, or agreed, by the applicant or the proprietor of the patent. In order to ensure [compliance with] this [provision], pursuant to R 71(3), the ED informs the applicant of the text in which it intends to grant it before it decides to grant the patent. This text may include amendments and corrections made by the ED on its own initiative which it can reasonably expect the applicant to accept (Guidelines for examination in the EPO, CVI 14.1) Pursuant to A 113(2), such an amended version may only be adopted as a basis for the decision if it has been approved by the applicant. This is also explained in the Guidelines E-X 3. 2212 | 3398
T 394/10 – No Shortcuts Please
K’s Law – The ebook
In the present case the applicant has clearly stated that it did not approve the proposed version and has insisted on its original request. Moreover, it has filed two auxiliary requests. [3] When a main and further auxiliary requests are filed, then [the ED] has to examine the main request first and then the auxiliary requests, in the order given by the applicant. If the ED considers an auxiliary request to be allowable, then it has to inform the applicant and to provide reasons why the higher ranking request(s) cannot be allowed. This way of proceeding is stipulated both in Legal Advice n° 15/05 and in the Guidelines (C-VI 4.1) and is based on the case law of the Boards of appeal (T 1181/04, T 1255/04). It is also to be applied when a main and auxiliary requests are filed in response to a communication pursuant to R 71(3). [4] The main request filed by the applicant contains an amendment with respect to the version according to the communication pursuant to R 71(3). The applicant has filed translations of the claims of its main request and paid the fees for grant and publication within the time limit under R 71(3). According to R 71(4), it is, therefore, deemed to have approved the grant of the patent as amended. As a consequence, the ED was entitled to immediately grant a patent on the basis of this request alone. If the ED did not consent to the amendments, then, pursuant to R 71(5), it has to give the applicant an opportunity to comment before taking a decision. However, it has not done so. [5] Therefore, R 71(5) has been violated. At the same time, there has been a violation of A 113(2) because the ED has granted a patent without asking the applicant for its approval beforehand. As a consequence, there have been two substantial procedural violations justifying a reimbursement of the appeal fee pursuant to R 103(1)(a). […] The case is remitted to the first instance for further prosecution. To read the whole decision (in German), click here. The file wrapper can be found here.
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T 1122/09 – The Deadly Four
K’s Law – The ebook
T 1122/09 – The Deadly Four 24 Mai 2011
The Boards’ requirements concerning the admissibility of auxiliary requests appear to be more and more restrictive. If you file auxiliary requests (1) that are not clearly allowable (2) belatedly and (3) in an unclear order, (4) without stating how those requests overcome the objections made so far, you have optimized your chances of having them rejected as being inadmissible. In the present case, the patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke the opposed patent. The Board finds the claim as granted not to comply with A 123(2) and then deals with the admissibility of the auxiliary requests: *** Translated from the German *** [3] In its statement of grounds of appeal the [patent proprietor] only requested that the impugned decision be set aside and explained that it was of the opinion that the requirements of A 123(2) had been complied with. It is only in its written submissions of February 28, 2011, i.e. after the summons to oral proceedings (OPs) sent on January 17, 2011, and about one month before the OPs that the [patent proprietor] filed 23 auxiliary requests. In its letter it did not explain why those requests were filed at so late a moment in time, nor did it set out how the amendments should overcome the objections raised. This behaviour on behalf of the [patent proprietor] is out of line with the Rules of proceedings of the Boards of appeal of the EPO (RPBA) […] and the corresponding case law (see “Case Law of the Boards of appeal of the EPO”, 6th edition (2010), VII.E.16), in several respects. Pursuant to Article 12(2) RPBA the statement of grounds of appeal shall contain a party’s complete case. According to the established case law, this comprises not only all the arguments, facts and evidence but also all requests (see, e.g. T 764/03 [6.7]). Besides the very general request to set aside the first instance decision, in a letter of February 28, 2011, containing a request to maintain the patent as granted, the [patent proprietor] has not filed any explicit request together with the statement of grounds of appeal. NB: The last sentence of the statement of grounds of appeal read as follows (my translation from the German): “Moreover the written submissions filed during the opposition proceedings so far are maintained (gelten) in respect of the further arguments of the opponents, which were not discussed in the impugned decision.” Pursuant to Article 13(1) RPBA any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of the complexity of the submission, the state of the proceedings and procedural economy. Pursuant to Article 13(3) RPBA, amendments sought to be made after OPs have been arranged shall not be admitted if they raise issues which require adjournment of the OPs. When the patent proprietor intends to file amended claims during the appeal proceedings, this should be done at the earliest possible moment in time. A request that has not been filed in time will only be taken into account in exceptional circumstances, provided that the late filing is justified and the reason for the amendments is explained (see, e.g. T 95/83 [8]). None of these two criteria has been satisfied in the present case. The [patent proprietor] has not explained why the auxiliary requests were filed so late, nor did it state how the objections that had been raised were overcome by the proposed amendments. The Board does not see any reasons for this either. As the A 123(2) objection mentioned in the summons had already been part of the impugned decision, requests intended to overcome this objections could and should have been filed together with the statement of grounds of appeal. Moreover, it is not obvious to the Board in which order the auxiliary requests 1 to 11, A and 1’ to 11’ were to be treated. In its written submission of February 28, 2011, the [patent proprietor] links these requests in an inadmissible way to certain requirements, which, moreover, are not clear. 2214 | 3398
T 1122/09 – The Deadly Four
K’s Law – The ebook
NB: The patent proprietor’s fax of February 28, 2011, referred to a main request (claim 1 as granted), auxiliary requests 1 to 11 (“already on file before the OD and which were referred to in the statement of grounds of appeal”), an auxiliary request A, “to be discussed in case the main request is not granted”) and auxiliary requests 1’ to 11’’ (“which contain the limiting feature of the preamble of auxiliary request A […] but which, apart from that, correspond to auxiliary requests 1 to 11). Finally, requests which, as the present requests, have been filed only shortly before OPs, are not to be taken into account if they are not clearly allowable (see, e.g. T 95/83). This is a decisive shortcoming of the present claims because all 23 auxiliary requests, very much like the main request, contain the combination of the features “projecting engaging means” and “sleeve”, which as shown above under point [2], violate the requirements of A 123(2). The fact that the “projecting engaging means”, according to auxiliary request A (and auxiliary requests 1’ to 11’), has the shape of a bulge or a needle pinch (Nadelquetschung) cannot alter this fact. For this reason alone, all 23 auxiliary requests are not clearly allowable. Based on the reasons given above, the Board decides not to admit the 23 late filed auxiliary requests. To read the whole decision (in German), click here. The file wrapper can be found here.
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T 1546/08 – Unexplored?
K’s Law – The ebook
T 1546/08 – Unexplored? 23 Mai 2011
Both the patent proprietor and the opponent filed appeals against the decision of the Opposition Division (OD) to maintain the patent in amended form. Claim 1 of the main request before the Board read: “1. An intravascular stent (300) having an outer surface (302) and an inner surface (301), the improvement comprising: at least one groove (400) disposed in the inner surface (301) of the stent (300), wherein the at least one groove (400) has a width, a length having a dimension greater than the width, and a depth less than the distance between the inner surface and the outer surface of the stent, the at least one groove (400) promoting migration of endothelial cells onto the inner surface (301) of the stent (300) when the stent (300) is implanted.” Having found the requests on file to comply with the requirements of A 123(2), the Board considers the sufficiency of disclosure (paragraph [4] of the reasons) : It has been contested that the disclosure is entirely silent about how the at least one groove has to be configured in order to promote migration of endothelial cells onto the inner surface of the stent when the stent is implanted, a feature which is present in both independent claims according to all requests. This feature relates to the technical problem of increasing the rate and/or speed of migration of these cells onto the inner surface […]. For the assessment of the requirements of A 83 it is not necessary for the Board to determine whether a desired effect, i.e. in the present case the promotion of migration of endothelial cells, has actually been obtained. It is also not the function of the Board to verify if an invention works properly. The disclosure is not required to comprise an explanation of how the desired effect is actually obtained, i.e. an indication of the underlying mechanisms. An invention is in principle sufficiently disclosed if at least one way is clearly indicated enabling the person skilled in the art to carry out the invention, and if the disclosure comprises the necessary technical information that permits the intended result to be achieved at least in some realistic cases (T 487/91 [5]). It should at least be plausible from the disclosure that its teaching does indeed solve the problem it purports to solve (T 1329/04 [12]). In the Board’s view, this is the case in the situation under consideration here. As convincingly explained by one of the inventors, Mr. J. C. Palmaz, it is perfectly plausible that the edges of a groove influence the otherwise zigzag type of migration of the endothelial cells on a flat surface such that they are guided by the edges of the groove to follow these edges. Their average velocity vector component along the groove thus increases and their migration rate hence becomes accelerated or “promoted” compared to that on a flat surface. All of the grooves depicted in the drawings clearly exhibit edges, and it is not necessary that the term “edge” as such and the resulting effect of guidance be explicitly mentioned or further described in the patent in order to enable the skilled person to carry out the invention as claimed. The reference to construing the term “groove”, inter alia, as a “rounded indentation” in column 6, lines 7 to 10 of the specification is to be understood as relating to the U-shaped configuration of the groove shown in Figure 10 which also has edges, thus being in line with the explanation given above. The fact that in paragraphs [0009] and [0022] the expression “It is believed that ...” is used with respect to the property of the groove increasing the rate of migration represents the understanding of the authors, but does not imply a lack of sufficiency of disclosure. In document D5 […] one of the inventors of the patent in suit (J. C. Palmaz) stated that introducing texture on a stent surface may have a beneficial effect on migration, but referred to this effect as a hypothesis which “has not yet been explored”. However, such a general and open statement does not mean that this effect does not exist or is impossible to achieve. It is per se not suited to raise serious doubts with regard to the sufficiency of the disclosure of the patent in suit. Moreover, the symposium where the respective presentation was made took place from 15 to 17 October 1997, i.e. several weeks before the priority date of the patent in suit. At least within this period, it is quite possible that the unexplored hypothesis was actually verified. 2216 | 3398
T 1546/08 – Unexplored?
K’s Law – The ebook
Furthermore, a researcher familiar with the patenting system, like the above-mentioned co-inventor, is unlikely to take the risk of disclosing the details of a potentially patentable invention at a research conference before protecting it by filing a patent application. In document D9 it is stated that grooves having a depth of 0.5 microns were found to have no effect on cell proliferation […]. However, this result relates to the proliferation of rat dermal fibroblasts, which are quite different from endothelial cells, which have the capability of forming monolayers. Moreover, these studies were performed on silicon substrates […], a material not normally used on stent surfaces. Accordingly, the teaching of this document does not cast any doubt on the sufficiency of the disclosure of the patent in suit. The introductory statement […] that the fundamental mechanisms of cell control by guidance in response to surface topography were still unknown is, like the sentence referred to in D5, very general and does not call into question the effect as such. The same applies to the statement […] where the influence of micro-geometrical surface patterns on cellular behaviour is referred to as a “hypothesis”. If, in opposition appeal proceedings, the parties make contrary assertions regarding facts considered an obstacle to patentability, as in the present case, the patentee is given the benefit of the doubt, and the burden of proof lies primarily with the opponent (cf. Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VI.H.5.1.1). The argument that routine in-vitro screening studies would not be sufficient for determining whether the grooves promote endothelialisation, which could only be established by means of in-vivo clinical trials representing an undue burden on the opponent, is not accepted by the Board. The decision T 63/06 cited by the opponent in this respect is not applicable to the situation under consideration here since, as indicated above, the patentee has in fact presented plausible arguments on how the grooves promote endothelialisation, whereas the opponent has failed to present convincing counter-arguments or evidence raising serious doubts with respect to workability. Under these circumstances it is not justified to shift the burden of proof to the patentee. The evidence provided by the opponent (mainly based on D5 and D9) is not sufficient to call into question the sufficiency of the present disclosure. Such an objection is in principle justified only if there are serious doubts substantiated by verifiable facts (cf. Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VI.H.5.1.1). Neither condition is fulfilled in the present case. Accordingly, the invention as described in the present patent and defined in the claims according to the various requests is disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art as required by A 83. Should you wish to read the whole decision, just click here. The file wrapper can be found here.
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T 1819/07 – Average Danger
K’s Law – The ebook
T 1819/07 – Average Danger 21 Mai 2011
The applicant filed an appeal against the decision of the Examining Division (ED) to refuse its European patent application for lacking unity of invention. Claim 1 of the main request before the Board read: 1. A method for Direct Synthesis of organohalosilanes comprising the steps of : providing a silicon metal; providing an organohalide of formula RX wherein R is a saturated or unsaturated aliphatic or aromatic hydrocarbon radical having from 1 to 10 carbon atoms, and X is a halogen; providing a copper catalyst precursor selected from the group consisting of copper metal, copper (I) oxide, copper (II) oxide, copper (I) chloride, copper (II) chloride, copper (I) carboxylates, copper (II) carboxylates, other copper salts, and mixtures thereof, said copper catalyst precursor having an average particle size from 0.1 to 600 nanometers; providing one or more promoters; and reacting said silicon metal, said organohalide and said copper catalyst precursor for a time and temperature to effectuate D/T selectivity (gravimetric ratio of R2SiX2/RSiX3) of greater than 10. The Board found this claim to lack clarity: [3.1] Claim 1 of the Main Request and of both Auxiliary Requests characterises the copper catalyst precursor by indicating a range for the “average particle size” of from 0.1 to 600 nanometers or of less than 600 nanometers. [3.2] Document D5 states that average particle sizes (more precisely: mean particle diameters) such as the arithmetic mean diameter (or count mean diameter) đ, the volume or mass mean diameter đv and the mean surface area diameter đs are among the most commonly used quantities for describing the average diameter of a particle population […]. The values of the average particle sizes đ, đv, and đs differ for any particle size distribution […]. “It is not unusual for a polydispersed particle population to exhibit a diameter of average mass as being one or two orders of magnitude larger than the arithmetic mean of the diameters.” […] Hence, there are different methods for determining the average particle size yielding values for the same particle distribution which generally differ, under particular conditions by one or two orders of magnitude. [3.3] The Appellant considered the method described in document D6 to be the most common one by which the person skilled in the art would determine the average particle size […]. [3.3.1] This document mentions that the “Determination of particle size may be done by transmission electron microscopy (TEM) or high resolution scanning electron microscopy (HRSEM).”. [3.3.2] The present application deals with the Direct Synthesis of organohalosilanes, i.e. the copper catalysed reaction of silicon with organohalides […]. Of the prior art documents cited by the ED, documents D1, D2 and D4 also deal with said Direct Synthesis […]. Document D1 states that the “mean particle size … indicates a median diameter known as dP50 corresponding to 50% on a volume basis cumulative distribution curve …” ([…]; emphasis added by the Board). According to document D2 “… an average particle size means the mass median particle size as measured with …” ([…]; emphasis added by the Board). Document D4 considers it “desirable that the area mean diameter of the particles” be within a certain range ([…]; emphasis added by the Board)).
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T 1819/07 – Average Danger
K’s Law – The ebook
Hence, there is no reason to assume that there is a most common method of determining the average particle size in the field of the Direct Synthesis of organohalosilanes. Moreover, the values determined by calculating the volume or mass average will differ from those taking the area average […]. [3.4] Finally, the appellant argued that the claims were clear as the method for determining the average particle size was disclosed in U.S. patent D6 as the respective patent application was referred to in the application as filed […]. [3.4.1] On the one hand, A 84 requires that the claims shall be clear. “This implies that the claims must be clear in themselves when being read with the normal skills, but not including any knowledge derived from the description of the patent application …” (T 908/04 [3.5]). Therefore, a reference in the description can generally not render an otherwise unclear claim clear. [3.4.2] On the other hand, the appellant relies on references to the US patent application on which the patent D6 was granted. Said references are found in the application as published […]. These references are the following (emphasis added): “It is preferred that the nanosized copper and copper oxides used in the present invention are prepared by the methods taught ..., and, most preferably, by the method taught in co-pending patent application entitled PREPARATION OF NANOSIZED COPPER AND COPPER COMPOUNDS, Attorney Docket No. 0066-OS, filed on even date herewith.” “Nanosized copper (I) oxide was prepared by thermal decomposition of KOCIDE® Cu(OH)2 in NALKYLENE® 500 as taught in co-pending patent application entitled PREPARATION OF NANOSIZED COPPER AND COPPER COMPOUNDS, Attorney Docket No. 0066-OS.” This means that the nanosized particles could be made according to the method disclosed in this document, not that the average particle size is to be determined according the method described in said U. S. patent application. For this reason, the methods for determining the average particle size as disclosed in document D6 […] do not form part of the disclosure of the present application as filed. Hence, these methods can neither establish clarity of the claims nor form the basis for an amendment which might render the claims clear. [3.5] Therefore, the parameter “average particle size” in claim 1 of the main request and of the first and second auxiliary requests renders these claims unclear. As claim 1 is the only independent claim in each of these requests, the parameter “average particle size” forms part of a mandatory feature in each claim of these requests, thus rendering all these claims unclear. [3.6] Hence, the claims of the main request and of the first and second auxiliary requests do not meet the requirement of A 84 that the claims shall be clear. As no other set of claims was filed as a basis for a further auxiliary request, the Board had to dismiss the appeal. To download the whole decision, click here. The file wrapper can be found here. NB: This decision has already been presented on Le blog du droit européen des brevets.
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T 2193/10 – The Other Side
K’s Law – The ebook
T 2193/10 – The Other Side 20 Mai 2011
The applicant filed an appeal against the decision of the Examining Division (ED) refusing its patent application. In a first communication (June 23, 2006) the Examiner made a novelty objection based on D1. This objection was upheld in a second communication (March 31, 2008) and in the document annexed to the summons to oral proceedings (OPs; scheduled for June 17, 2010). The applicant filed new claims one day before the OPs. On the very same day, there was a telephone discussion during which the request for OPs was withdrawn and the applicant’s representative announced that he would not attend the OPs. The OPs were maintained. The ED found the claims on file not to comply with A 123 and refused the application. The Board considered this objection to be ill-founded. It then raised (of its own motion) the question of whether the applicant’s right to be heard has been violated: [3] The Guidelines for Examination E-III, 8.3 deals with the situation in which a party who has been duly summoned to OPs does not appear at OPs. The penultimate paragraph of this Section (April 2010) reads: “An absent party cannot be considered taken by surprise if during OPs the other side attempts to overcome objections raised before the OPs. In particular, a submission during OPs of a more restricted and/or formally amended set of claims with a view to overcoming the objections of the opponent is not considered a ‘new fact’ (…). Nor is it unexpected that amended claims are examined for formal admissibility and for compliance with A 123(2) and (3) (see T 341/92).” The ED cited the above paragraph in point 3 of the decision under appeal. It considered the applicant-appellant as the “absent party” and the ED as the “other side”. However, it is clear that the “absent party” and the “other side” in the cited paragraph stand for the absent opponent and the patent proprietor, respectively. That the above paragraph pertains to inter partes OPs is also clear from the discussion in the two preceding paragraphs of the decision G 4/92, which only relates to inter partes OPs, see point [1] of the Reasons. The last sentence of the cited paragraph refers to the situation in which a patent proprietor has filed amended claims prior to OPs, which it does not attend. In the inter partes case underlying decision T 341/92 the patent proprietor had deleted a feature in an independent claim. The Board stated that “According to established board practice, ..., amended claims are checked by the board of its own motion during the opposition appeal proceedings for formal admissibility and, in particular, the possibility of an infringement of A 123(2) and (3). There is an obvious need to check for this latter possibility if the patent proprietor deletes a feature in an independent claim. … It was therefore to be expected that a comparison of the amended claims with those of the granted patent for the purposes of A 123(3) would form part of the discussions at the OPs, …”. In the judgment of the Board, it is questionable whether, in an ex parte case, the possibility of an infringement of A 123(2) must in general be expected by an applicant who filed amended claims prior to OPs and simultaneously announces that it will not attend the OPs. Since the appellant did not claim that its right to be heard with respect to A 123(2) had been violated, and did not even mention the A 123(2) issue in its statement setting out the grounds of appeal, the Board refrains from investigating whether the requirements of A 113(1) are met, taking into account that a remittal without examining the novelty objection (formulated as an obiter dictum in the decision under appeal) would likely lead to a second refusal. The Board then found the claims to be novel and remitted the case to the ED for further prosecution. To read the whole decision, click here. The file wrapper can be found here.
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T 2193/10 – The Other Side
K’s Law – The ebook
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T 854/09 – Ultimate Responsibility
K’s Law – The ebook
T 854/09 – Ultimate Responsibility 19 Mai 2011
The patent proprietor filed an appeal against the division of the Opposition Division (OD) revoking the opposed patent. The Board finds the second auxiliary request to be allowable and then deals with the question of whether costs should be apportioned. [5.1] The proprietor also appeals the OD’s decision to apportion 50% of either opponent’s costs to the proprietor under A 104(1). The OD held […] that this was justified as the proprietor had filed a new request based on material from the description towards the end of oral proceedings (OPs), and this necessitated adjournment to allow the opponents to react and also to deal with the remaining requests. [5.2] By invoking its statutory right to OPs, A 116, a party can ensure that it is heard before any decision adverse to it is taken, A 113(1). OPs thus provide a final opportunity to be heard and, with the pronouncement of the decision, will normally conclude the procedure. With this general purpose of OPs in mind, parties should conduct themselves accordingly. Their actions should therefore not intentionally or irresponsibly jeopardize the taking of a decision at the OPs. [5.3] In the present case the proprietor submitted new main and auxiliary requests at the beginning of the first OPs held 3 July 2007 and in the course thereof amended the first auxiliary request several times […]. As a direct consequence of the proprietor’s filing of new requests and repeated amendment of the first auxiliary request during the OPs, where further requests still needed discussion, the case could not be concluded at the first OPs and a further OPs became necessary. It is certainly true that the OD could have used its discretion under R 116 not to admit such a late filed request based on material from the description to ensure timely conclusion of the case, but failed to do so. Nevertheless, responsibility for filing amended requests so late ultimately lies with the proprietor, who is taking a calculated risk. Nor is it apparent to the Board from the file that the late filing might somehow have been justified by points newly raised by the OD or the opponents during the OPs. It was the proprietor himself who at the OPs first mentioned the feature in question - superficial exposure - and its significance […]. [5.4] As the adjournment was primarily the result of the late filing of the new first auxiliary request, though it need not have been admitted, the Board finds it equitable to apportion part of the ensuing costs to the proprietor as foreseen in A 104(1). The Board therefore confirms the OD’s decision to apportion 50% of opponents’ costs to the proprietor. The costs concerned are those reasonably incurred by either opponent in connection with the second OPs, that is the expenses of a single representative for each opponent preparing for and attending the second proceedings, including travel and accommodation. Should you wish to download the whole decision, click here. The file wrapper can be found here.
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T 980/09 – Light But Serious
K’s Law – The ebook
T 980/09 – Light But Serious 18 Mai 2011
The opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form. Instead of contesting the reasons for the decision given by the OD, the appellant only filed a new document (D5) and argued that the patent was not novel and inventive over D5. Is this enough for the appeal to be admissible? *** Translated from the German *** Admissibility of the appeal [1.1] The [patent proprietor] argued that the appeal was not admissible, mainly for two reasons: (a) The statement of grounds of appeal did not state why the impugned decision was to be set aside. As only document D5 was discussed, which was mentioned in the appeal proceedings for the very first time, there was no discussion of the reasons for the decisions; therefore, the appeal only served to prolong the opposition proceedings. (b) The appeal was inadmissible, be it only because the only document that was discussed as to its content was late filed and, therefore, not to be admitted; as a consequence, there was no statement of grounds of appeal. [1.2] The appellant pointed out that D5 was filed together with the statement of grounds of appeal, and, therefore, in due time. It referred to the case law of the Boards of appeal of the EPO. [1.3] The Board notes that the argument of the appellant that D5 was filed together with the statement of grounds of appeal, i.e. within the four-month time limit pursuant to A 108, third sentence, is correct. Moreover, lack of novelty and lack of inventive step were given as grounds for opposition by the opponent in the opposition proceedings; this fact has not changed in the appeal proceedings. Therefore, there have not been any fresh grounds for opposition in the appeal proceedings. The remaining question is whether the almost exclusive reference to D5 in the statement of grounds of appeal, without any in-depth discussion of the arguments provided by the OD in its decision, constitutes a statement within the meaning of A 108 and R 99(2). [1.4] According to the established practice of the Boards of appeal an appeal is not inadmissible only because it is based on evidence that has been submitted in the statement of grounds of appeal for the first time (see T 389/95 and T 1029/05, both cited by the appellant, but also T 1063/98 [1.1-2]). This also holds true when there is no discussion of the reasons for the decision at all, provided that the new facts (Tatbestand) deprive the decision of its legal basis (Case law of the Boards of appeal of the EPO, 6th edition, 2010, chapter VII E.7.6.1, fifth paragraph, and J [902/87] [first headnote ; 1.4] as well as T 147/95 [1.2]). [1.5] In the present case a new document was cited in order to challenge novelty and inventive step of the impugned patent. If the assertions of the appellant are found to be correct, one has to assume that the decision is deprived of its legal basis. [1.6] Moreover, it is true that the appellant has not addressed the arguments of the OD in detail and has instead discussed novelty and inventive step in respect of D5. However, the examination of admissibility pursuant to A 108 and R 99(2) does not depend on whether D5 is admitted into the proceedings (see above, [1.4]). [1.7] In its statement of grounds of appeal, filed within four months after delivery of the decision of the OD, the appellant has given a detailed statement that the impugned patent had to be revoked for lack of novelty and lack of inventive step and that this should be done on the basis of evidence D5.
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T 980/09 – Light But Serious
K’s Law – The ebook
[1.8] Moreover, the appellant has mentioned in its statement that it also invoked documents D1 to D4 for objecting to the patentability of claims 2 to 6 and 8 to 19. Therefore, the Board is not of the opinion that no reasons for the appeal have been given. However, even in this case it remains to be examined whether the appeal was sufficiently and convincingly reasoned, which could lead to its dismissal but does not have any effect on its admissibility. [1.9] Thus the Board considers that the requirements of A 108 and R 99(2) have been fulfilled; the appeal is admissible. Introduction of document D5 into the appeal proceedings [2.1] The [patent proprietor] requested not to admit D5 into the proceedings before the Board because this document was filed belatedly. [2.2] The document was added to the statement of grounds of appeal and was filed in time with respect to A 108 and Article 12(1) RPBA. [2.3] As the disclosure of D5, if [the assertions of the appellant are] correct, would also be potentially relevant for the claims of broader scope filed during the opposition proceedings, it has to be clarified why D5 was not already cited during the opposition proceedings and whether there might have been an abuse of proceedings. [2.4] According to the appellant, D5 was not on hand during the opposition proceedings and was only discovered at a later time. The appellant further explained that D5 was introduced into the (appeal) proceedings, and therefore used to support the statement of grounds of appeal, only shortly after it had been found. The [patent proprietor] has not commented this assertion. [2.5] The Board shares the opinion of the [patent proprietor] that D5 was only introduced into the proceedings at a relatively late stage. However, the present version of the set of claims before the OD was only drafted during the oral proceedings before the OD. This means that the statement of grounds of appeal was the first opportunity for the appellant to react to the present set of claims. Therefore, it is indeed plausible that a new search, carried out in response to the argumentation of the OD in its reasons for the decision, led to the discovery of D5. [2.6] The [patent proprietor] has not provided any evidence that this presentation of facts is incorrect, that the appellant was in possession of D5 at an earlier stage [of the proceedings] or that the filing of D5 was abusive. [2.7] Therefore, D5 is admitted into the proceedings. Remittal to the first instance [3.1] The [patent proprietor] requested a remittal of the proceedings to the first instance; the appellant agreed to this request. [3.2] The Board exercises its discretion pursuant to A 111(1) in order not to deprive the parties of the opportunity of having two instances decide on the patentability of the invention and remits the case to the first instance for further prosecution. To read the whole decision (in German), click here. The file wrapper can be found here.
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T 1809/07 – On Drafting And Drawings
K’s Law – The ebook
T 1809/07 – On Drafting And Drawings 17 Mai 2011
The applicant filed an appeal against the decision of the Examining Division to refuse its application. Claims 1 and 14 of the sole request before the Board read: 1. An article comprising: a transparent conductive surface; two or more polygonal parallel rows of conductive segments disposed on the conductive surface, each edge of each row comprising two end conductive segments and one or more middle conductive segments disposed between the two end conductive segments; wherein for each edge of each row, the middle segments are equal in length, and the segments are separated by gaps of equal length; wherein for each edge, the length of the middle segments in an inner row along the edge is smaller than the length of the middle segments in an outer row along the same edge; and wherein at least one segment in a row is connected via one or more conductive bars to a segment in an adjacent row. 14. An article according to claim 1, wherein at least some portions of electrically nonfunctional sections of connected conductive segments are removed. The applicant chose not to attend the oral proceedings before the Board, which found the request to lack both clarity (A 84 EPC 1973) and inventive step (A 56 EPC 1973). The decision is not stunning but it deals with some drafting mistakes that are easily made and features that can be taken from schematic drawings - in other words, very practical stuff. A 84 - clarity [3.1] In the second feature of claim 1 the alternatives “one or more middle conductive segments …” are specified. However, the first alternative option with only one middle segment does not make sense from a technical point of view, because if there is only a single middle segment this has a certain length which cannot be regarded as “equal” in length to other non-existing segments in an edge of a row. Claim 1 therefore lacks clarity in the sense of A 84. [3.2] Dependent claims 9 and 14 are defined by negative features by specifying that certain sections of connected conductive corner segments “are removed” rather than defining the corresponding subject-matter by using positive features. A claim’s subject-matter is normally defined in terms of positive features indicating that certain technical elements are present. Negative limitations may be used only if adding positive features to the claim would not define more clearly and concisely the subject-matter still protectable. In present claims 9 and 14, however, it is possible to clearly and concisely define the limitations by positive features. Claims 9 and 14 therefore lack clarity. A 56 - Inventive step [4.1] Notwithstanding the aforementioned objection concerning the lack of clarity of claim 1, the board judges that all of the features of claim 1 are known from document D2 except for the last feature of the claim, i.e. that at least one segment in a row is connected via one or more conductive bars to a segment in an adjacent row. [4.2] D2 explicitly discloses in accordance with the features of claim 1 a transparent conductive surface […] with a rectangular structure with four bent “rows”, i.e. polygonal parallel rows, of conductive segments CS (see figure 6) with two end conductive segments and a plurality of middle conductive segments in between for each edge.
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T 1809/07 – On Drafting And Drawings
K’s Law – The ebook
In figure 6 the shown conductive segments CS are of equal length in each of the rows. In accordance with decision T 748/91 relative dimensions in drawings and size ratios can be inferred from a schematic drawing such as figure 6 of D2. The same is true for the length of the gaps between those middle segments for each edge as can be also seen from figure 6. In addition, figure 6 shows that the length of the conductive segments CS in an inner row along the edge is smaller than the length of the middle segments in an outer row along the same edge (see also claim 20 of D2). [4.3] Figure 6 of D2 can be interpreted in the light of the corresponding description in column 6, lines 60 to 64 in a way that there are “connecting parts” between the rows. However, D2 does not explicitly disclose that these “connecting parts” have the form of conductive bars for connecting at least one segment in a row to a segment in an adjacent row as required in the last feature of claim 1. The objective technical problem underlying this difference is considered to be that the connection between the rows is integrated in the pattern of electrodes. [4.4] Figure 7 of D2 shows an alternative embodiment of a pattern of electrodes in which there are conductive bars between conductive segments CS’ of adjacent rows.
When starting with the embodiment shown in figure 6 and assessing the requirement of inventive step in the light of the further embodiment of figure 7 of D2, the technical difference leading from the design disclosed in figure 6 of D2 to that in figure 7 of D2 is that “the function of the connecting parts in FIG. 6 is incorporated into the pattern of conductive segments CS’, reducing the outside dimensions of the device and the amount of resistive material required” […]. From reading prior art document D2 the skilled person was thus motivated to consider such conductive bars according to the last feature of claim 1 in order to solve the objective problem posed.
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T 1809/07 – On Drafting And Drawings
K’s Law – The ebook
The board judges that in the light of such an explicit motivation in D2 it was merely an obvious design option lying within the routine competence of the skilled person to design the connecting parts foreseen in the embodiment of figure 6 in the form of conductive bars in order to integrate them in the pattern of electrodes by connecting a segment of a row to a segment in an adjacent row, in particular in the light of the following statement found in the present application which relates to different design choices for the conductive bars: “In general, connecting conductive bars can have different shapes and assume different orientations with respect to the conductive segments they connect.” […]. [4.5] The board therefore judges that the skilled person starting from the design in figure 6 of D2 would also consider the use of direct connections between adjacent rows without departing from the design of segments of equal length as an obvious alternative solution to the connecting parts as referred to in D2, column 6, line 61 with regard to figure 6. There is no inventive technical contribution required for such a modification. [4.6] During the first instance proceedings the appellant argued in favour of an inventive step, because despite the long time between the date of publication of D1 to D3 and the priority date of the present application, nobody had come up with segments of an equal length before the priority date. This argument, however, is not convincing in the light of the disclosure in figure 6 of D2. [4.7] The subject-matter of claim 1 therefore lacks an inventive step in the light of D2 combined with the skilled person’s common general knowledge. […] The appeal is dismissed. To read the whole decision, click here. The file wrapper can be found here.
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T 789/07 – Searching Deep
K’s Law – The ebook
T 789/07 – Searching Deep 16 Mai 2011
The outcome of the present appeal is likely not to please some of the Examiners among the readers of this blog. The appeal was directed against the decision of an Examining Division (ED) to refuse the application under consideration. Claims 1, 4 and 8 before the ED were drafted as follows (English translation): 1. Method of protecting a microcomputer system (10) against manipulation of data (2) stored in a memory assembly (27) of the microcomputer system (10), in particular for protecting a program stored in the memory assembly (27), characterised in that the data (2) are transmitted to the memory assembly (27) in at least partially signed or encrypted form, obtained by means of an asymmetrical encryption method, when the microcomputer system (10) is newly programmed or reprogrammed. 4. The method according to any one of claims 1 to 3, characterised in that the signed or encrypted data (2,7) are checked or decrypted in the microcomputer system (10) by means of a freely accessible public key (12). 8. The method according to claim 4 or 5, characterised in that the checking of the signed or the decrypting of the encrypted data (2,7) is performed in the microcomputer system (10) when the data (2) are being processed. Claim 1 of the main request before the Board read: 1. Method of protecting a microcomputer system (10) against manipulation of data (2) stored in a memory assembly (27) of the microcomputer system (10), wherein the data (2) are at least partially signed by means of an asymmetrical encryption method and transmitted to the memory assembly (27) when the microcomputer system (10) is newly programmed or reprogrammed, characterised in that the checking of the signed data (2,7) is performed in a microcomputer system (10) when the data (2) are being processed, wherein the checking is a process of lower priority, in that, each time the process is called, part of the [data] of the memory assembly (27) is checked, so that after a predefinable time period the whole content of the memory assembly (27) has been checked. and claim 1 of the auxiliary request read: 1. Method of protecting a microcomputer system (10) against manipulation of data (2) stored in a memory assembly (27) of the microcomputer system (10), wherein the data (2) are at least partially signed by means of an asymmetrical encryption method and transmitted to the memory assembly (27) when the microcomputer system (10) is newly programmed or reprogrammed, characterised in that the checking of the signed data (2,7) is performed in a microcomputer system (10) when the data (2) are being processed, by checking part of the data of the memory assembly (27) whenever the data processing leaves sufficient computing time, so that after a predefinable time period the whole content of the memory assembly (27) has been checked. *** Translation from the German *** [2] The invention concerns a microcomputer system which checks newly loaded data by means of a cryptographic signature so as to protect itself against unauthorised manipulation of the data. [2.1] The characterising part of claim 1 of both requests contains the feature (a) that the checking of the signed data is carried out when the data are processed. Claim 1 of the main and auxiliary request define this feature more precisely by features (b) and (c), respectively, in the following way:
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K’s Law – The ebook
(b) wherein the checking is a process of lower priority, in that, each time the process is called, part of the [data] of the memory assembly is checked, so that after a predefinable time period the whole content of the memory assembly has been checked, and (c) by checking part of the data of the memory assembly whenever the data processing leaves sufficient computing time, so that after a predefinable time period the whole content of the memory assembly has been checked, respectively. [2.2] The appellant argues that the features (b) and (c) merely make specific feature (a) of the original claim 8 on the basis of the description […]. Therefore, they are not to be objected to under R 86(4) EPC 1973. [2.3] On the other hand, the decision […] explains that the original claims 1 to 9 on one hand and claim 1 according to both requests on the other hand solve different and technically unrelated problems with respect to the prior art. Based on a feature of the original claim 3, claims 1 to 9 are understood to solve the problem of reducing the amount of data to be signed, whereas claim 1 of both requests are held to solve the problem of keeping with certain time requirements by using priorities when checking [the data]. Therefore, none of the new claims 1 was unitary with the original claims 1 to 9 and, as a consequence, claim 1 of both requests was inadmissible under R 86(4) EPC 1973. [2.4] Moreover, the decision argues as follows: i) Original claim 8 was drafted in so broad a manner that it did not necessarily refer to keeping certain time requirements. Feature (a) was equivalent to the feature “processing during the operating time of the microcomputer system”. This feature was there to avoid data manipulation during the operating time, but was not related to priorities or time requirements […]. ii) Pages 8 to 9 of the description were contradictory with the original claims because the original claims still comprised the option to use encrypted data instead of signed data. The appellant had implicitly acknowledged this contradiction by limiting the claims to signed data […]. iii) The advantages linked to the new features (b) and (c) were not related in any obvious way to avoiding an unauthorised manipulation, which was the only problem mentioned in the description, and the Guidelines for examination (C-IV 9.8.2) did not allow a corresponding reformulation of the problem […]. [3] R 86(4) EPC 1973 lays down that amended claims may not relate to (1) unsearched subject-matter which (2) does not combine with the originally claimed invention or group of inventions to form a single general inventive concept. [4] The Board is of the opinion that the claims of the main and auxiliary request as amended do not fulfil any of the two requirements which presuppose the application of R 86(4), but that they have to be considered both searched and combining with the originally claimed invention or group of inventions to form a single general inventive concept. Extent of the search [5] A 92 requires the European search report to be drawn up on the basis of the claims, with due regard to the description and any drawings. This requirement is explained in the Guidelines for examination in the EPO B-III 35 (both in their present version and in the version in force at the time of search (June 2005)), in the following way, which the Board considers appropriate: “In principle, and insofar as possible and reasonable, the search should cover the entire subject-matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended.” [5.1] The European search report of November 14, 2003, lists five documents and marks them as relevant for all claims 1 to 15. A limitation of the extent of search is not mentioned. Therefore, it has to be presumed that original claim 8 was indeed searched. [5.2] The board is of the opinion that, as a rule, in order to be able to completely search a claimed feature within the meaning of A 92 – and in line with the Guidelines – the Search Division (SD) has to establish how this 2229 | 3398
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K’s Law – The ebook
feature is to be interpreted in the light of the description and the drawings. It is only by proceeding in this way that the SD can come to a reasoned assessment of which amendments may be expected in the course of the examining proceedings, within the framework of the application as filed. For example, it is to be expected that an applicant clarifies unclear features within the framework of the disclosure and specifies in more detail functional or otherwise broad features. As far as original claim 8 is concerned, this is true in particular for feature (a). Concerning argument i) of the decision [6.1] In a fax received on March 11, 2005, the applicant had filed a claim 1 the characterising part of which establishes “that the signed or encrypted data are checked or decrypted and if the checking or decryption is successful, an identifier is stored in a predefinable memory area of the memory assembly, and a content of the memory area is checked during the operating time of the microcomputer system using the identifier”. [6.2] There is no doubt that these features were disclosed in the original application (see, in particular, page 7 […]). However, according to them, what takes place “during the operating time of the microcomputer system” is not the checking of the signature or the decryption of the data but the “content of the memory area” into which an identifier or a checksum has been stored before, but after successful checking of the signature or decryption of the data, and in order to provide evidence for the latter, [is checked]. In this embodiment (page 7-8 […]), the checking of the signature or the decryption, as the case may be, itself takes place immediately “following a new programming or reprogramming of the memory assembly” (page 7 […]), i.e. precisely not during the data processing. [6.3] Feature (a) also appears in almost identical wording on page 8 as the feature of another embodiment and is discussed in more detail (page 8-9 […]). In this context features (b) and (c) are disclosed as examples for how the “check is carried out in conjunction with the processing of the data” is to be understood in detail. [6.4] Under these circumstances the Board considers it to be obvious that feature (a) is not to be interpreted in the light of the embodiment disclosed on pages 7-8 but of the one disclosed on pages 8-9. [6.5] Accordingly, the Board is of the opinion that at the time of the search it was to reasonable to expect that the applicant could consider to clarify or specify in more detail the original claim 8 on the base of pages 8-9 in the course of the examination, and in particular via the features (b) or (c). Concerning argument ii) of the decision [7.1] The ED justifies the existence of the contradiction by pointing out that a decryption of the data necessarily had to take place before their processing and that, therefore, the decryption could not be carried out with lower priority than the data processing. [7.2] The Board concedes that in principle data have to be decrypted before they can be processed. However, as a rule, the processing will start with a small fraction of the data. As soon as this fraction of the data is decrypted, the processing can begin, and the decryption of the remaining data may be expedited by means of a process of lower priority. It is true that even then it may happen that the processing has to wait for the decryption of data but in principle this does not conflict with concurrent processing, as claimed. [7.3] In particular – in contrast to the decision of the ED – it is possible to interpret claim 1 in a way that does not render “the check ineffective” and does not deprive the claimed priorities of “any effect” […]. [7.4] The ED does not find a contradiction if the data are signed rather than encrypted. As, therefore, one of the options of original claim – and thus also of claims 8 – according to the embodiments disclosed on pages 8-9 is considered feasible, the Board is of the opinion that this embodiment should not have been ignored when carrying out the search, even if the argument of the ED had been correct. Experience shows that during the examination of an application a plurality of originally claimed alternatives is often limited to several of those alternatives. Concerning argument iii) of the decision [8.1] The Board does not see how the Guidelines C-IV 9.8.2 (in their version of June 2005, which was in force at the time of the search, nowadays 11.5.2) would prohibit a reformulation of the problem. Quite to the contrary, it (appropriately) states that “what the applicant presented as ‘the problem’ in his application … may require reformulation”, and that “as a matter of principle any effect provided by the invention may be used as a basis for the reformulation of the technical problem, as long as said effect is derivable from the application as filed”. 2230 | 3398
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K’s Law – The ebook
[8.2] Applicants often legitimately react to an objection of the ED by adding features taken from the description to the original claims in order to distinguish the latter from the cited prior art, in application of A 94(3). In the present case the Board does not see how the new features would introduce a completely new inventive concept which does not technically relate to the inventive concept behind the original claims. It is true that the new features (b) and (c) do not ensure protection against manipulations as such, but they ensure the protection in such a way that simultaneously time requirements can be met. The Board is of the opinion that thereby the original inventive concept is defined with greater precision in a way that is appropriate, admissible and predictable. [9] Therefore, the Board comes to the conclusion that the search of original claim 8 within the meaning of A 92 would have had to take into account the embodiment disclosed on pages 8-9 and that, as a consequence, claim 1 according to both the main and the auxiliary request has to be considered as searched within the meaning of R 86(4) EPC 1973. Unity [10] According to the indications given in the European search report all original claims have been completely searched. There was no limitation due to a lack of unity (R 46(1) EPC 1973), nor was there a statement that the search had been carried out for all claims despite a lack of unity. [10.1] It is true that the search report cites four of the documents as being very relevant (“X”) for all claims, but there has not been a concrete objection against the original claim 8 during the examination proceedings. The first notification of the ED contains a sweeping objection of lack of novelty and inventive step, respectively, but the following justification does not mention claim 8 or discuss its features […]. [10.2] The Board is unable to see that feature (a) is known from D1 or that it is prima facie obvious with respect to D1, at least if it is correctly interpreted in the light of the discussed disclosure of pages 8-9. [10.3] Thus feature (a) represents a contribution of the claimed invention as a whole to the state of the art. Moreover, feature (a), when correctly interpreted, has to be ascribed the same effect as features (b) and (c), i.e. to ensure the protection against data manipulation in such a way that certain time requirements can be met. [10.4] Therefore, claim 1 of both the main and auxiliary request certainly combines with original claim 8 – and therefore also with the originally claimed invention or group of inventions – to form a single general inventive concept. The fact that the originally claimed group of inventions possibly can be ascribed a further inventive concept (in respect of original claim 3) […] does not contradict this conclusion. Summary [11] As a consequence, the Board reaches the conclusion that the ED would have had to admit the present claims pursuant to R 86(4) EPC 1973. After entry into force of the EPC 2000, R 137(4) is to be applied in the version that was in force from December 13, 2007, to March 31, 2010, because the latter refers to A 123 (see J 10/07 [1.3]) However, as the wording of R 137(4) is identical with that of R 86(4), it directly follows that both the main and the auxiliary request are to be admitted under R 137(4). Additional search [12] The ED states that, as a matter of fact, the relevant features have not been searched […]. However, as they would have had to be searched, as explained above, a corresponding additional search is to be carried out when the examining proceedings are resumed, as appropriately and explicitly foreseen in such a case in the Guidelines B-II 4.2 i). […] The application is remitted to the ED for continuation of the examining proceedings. To read the whole decision (in German), click here. The file wrapper can be found here.
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T 725/08 – 123 Strikes Again
K’s Law – The ebook
T 725/08 – 123 Strikes Again 14 Mai 2011
In the present case the patent proprietor and the opponent filed appeals against the decision of the Opposition Division (OD) to maintain the patent in amended form. The decision contains two interesting paragraphs related to compliance with A 123(2). Main request [3.1] The word “comprising” used to characterize the milling mixture in claim 1 has been replaced by the expression “… consisting essentially of …”. Such an amendment is to be examined in the light of the requirements of A 123(2). [3.2] This expression is not mentioned explicitly in the application as originally filed. Thus the board has to examine on the basis of the submissions of [the patent proprietor] whether it is directly and unambiguously derivable from the content of the application as originally filed. [3.3] The decisions of the Boards of Appeals cited by [the patent proprietor], namely T 759/91; T 522/91 and T 457/02 do not relate to A 123(2) and are not relevant in that respect. T 759/91 [2.2], T 522/91 [2.2]: “Considering that the term “comprising substantially” in Claim 1 lacks clear explicit boundaries, its scope needs interpretation, there being no legal basis for objection to this lack of clarity under A 84 at the present stage of the proceedings. While in common language the word “comprise” may have both the meanings “include” or “comprehend” and “consist of” (“The Concise Oxford Dictionary of Current English”, 8th Ed. by R.E.Allen, Clarendon Press, Oxford, 1990), in drafting patent claims legal certainty requires its interpretation to be normally restricted to the broader meaning “include” or “comprehend”. The word “substantially”, imposes a restriction on the word “comprising”, in the sense that “to a large extent only that is comprised which is specified”. The boundaries of the term “comprising substantially” are therefore to be drawn where the essential characteristics of the specified subject-matter cease. The scope of the term “comprising substantially” is therefore interpreted as being identical to that of “consisting essentially of” (see T 472/88 [3]). However, due to the unequivocal character of the words “consisting of” as compared to “comprising” the expression “consisting essentially of” is to be given preference.” T 457/02 [4.2-3] : “The OD considered that D8 was novelty- destroying for the subject-matter of Claim 1 because the use of the term “comprising” did not exclude the possibility of additional steps between steps (a) and (b) of the claim. The Board agrees with the interpretation of the term “comprising” by the OD. As correctly stated in the Guidelines for Examination in the EPO, Part C, Chapter III, 4.13, in patent claims the term “comprising” is interpreted as “including”, “containing” or “comprehending” and consequently does not exclude the presence of additional steps.” The “Headnote” of the decision of the Enlarged Board of Appeal G 1/93 relates to a specific fact situation which is not analogous with that of the present case. NB: The patent proprietor had referred to the second paragraph of the headnote (“A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of A 123(2). The ground for opposition under A 100(c) therefore does not prejudice the maintenance of a European patent which includes such a feature.”) since the expression “consisting essentially of” was meant to exclude non technical features. 2232 | 3398
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K’s Law – The ebook
[3.3.1] It is, therefore, concluded that in the absence of either an explicit or an implicit disclosure of a process involving a milling mixture “consisting essentially of”, the process defined in Claim 1 of the main request extends beyond the content of the application as originally filed. [3.4] Hence, claim 1 of the main request contravenes the requirements of A 123(2). Auxiliary requests 1 to 3 [4.1] Claim 1 of the auxiliary requests 1 to 3 comprise the feature: “the milling additive is selected from inorganic compounds, surfactants, dispersants other than the aromatic polyalkylene oxide dispersants specified above, wetting agents, defoamers, grinding aids, latices, or mixtures thereof, … or one or more inorganic and/or organic bases.” [4.2] This feature was not present in the claims as granted and it must be verified whether or not the amendment complies with the requirements of A 123(2) in accordance with A 101(3)(a). [4.3] The passage of the description illustrating the milling additives which could be added to the milling mixture reads as follows: “Milling additives may also be added in conventional quantities (e.g., 0.1 % to 50% by weight relative to the pigment) to a milling mixture. Examples of suitable milling additives include inorganic compounds (such as metal salts), surfactants, dispersants other than the aromatic polyalkylene oxide dispersants specified above (such as sulfonamide, carboxamide, or aminoalkyl derivatives of organic pigments, particularly of perylenes, phthalocyanines, or quinacridones), wetting agents, defoamers, grinding aids, latices, or mixtures thereof. In certain cases, one or more inorganic and/or organic bases may be added, especially if the aromatic polyalkylene oxide dispersant contains acidic functional groups”. […] [4.4] The description as originally filed states that “In certain cases, one or more inorganic and/or organic bases may be added”. This means that the elements following it, may be added to the elements preceding it. That “one or more inorganic and/or organic bases” are present alone as milling additive is not disclosed. The word “or” involves an alternative related to “one or more inorganic and/or organic bases” as a milling additive. This alternative, that the milling additive can only be one or more inorganic and/or organic bases extends beyond the content of the application as originally filed as already found by the OD […]. [4.5] Consequently, claim 1 of the first to third auxiliary requests contravenes the requirements of A 123(2). To read the whole decision, click here. The file wrapper can be found here.
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T 1610/07 – Choosing Between Two Ends
K’s Law – The ebook
T 1610/07 – Choosing Between Two Ends 13 Mai 2011
In the present case the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form. In its response to the statement of grounds of appeal, the patent proprietor stated: “The above-mentioned European patent is herewith withdrawn.” [1] The respondent, i.e. the patent proprietor declared that it withdraws the patent at issue. In other words, it appears to request the withdrawal of the patent. However, “withdrawal” of a patent on request of (or even by) the patent proprietor is not as such foreseen in the procedure according to the EPC. [2] The boards have followed two different ways of dealing with requests by patent proprietors for withdrawal of their patent […]. Either such a request is interpreted as expressing disagreement with the text of the patent (see for example decisions cited in the Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VII. C.6.1.2, second paragraph and also decisions T 904/05, T 535/00, T 348/00). Or such a request is interpreted as the patent proprietor's agreement with the opponent's request for revocation of the patent (see for example decisions cited in the Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VII. C.6.1.2, fourth paragraph and also T 820/94 [6]). [3] The respondent explains in its letter of 24 March 2011 that it agrees with the text in which the patent was granted, but that it is no longer interested in the maintenance of the patent and therefore will refrain from taking further actions to maintain the patent […]. [4] Given that these statements are in reaction to the board's communication, the board interprets the respondent's request for withdrawal of the patent therefore as a request for revocation of the patent […]. 5. Hence, both the appellant and the respondent request that the decision of the OD be set aside and that the patent be revoked. [6] The parties’ requests are granted. [7] According to the case law (see for example decisions cited in the Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VII. C.6.1.2, third paragraph) the present decision can be given without substantive examination as to patentability and thus also without detailed reasons. [8] Moreover, the board could take the decision in the written proceedings since it follows the appellant's main request and the respondent has made no request for oral proceedings. […] The patent is revoked. I wonder what the Board would have done if the opposition had been limited to some of the claims. Interpret the withdrawal as an agreement to limit the patent to the claims that had not been attacked? Or as a request for (complete) revocation? But normally such a request is not free of charge ... Perhaps the best way out would be to ask the patent proprietor to state that after all it did not agree with the text. Should you wish to download the whole decision, just click here.
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T 1610/07 – Choosing Between Two Ends
K’s Law – The ebook
The file wrapper can be found here.
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T 105/09 – Useful Reminders
K’s Law – The ebook
T 105/09 – Useful Reminders 12 Mai 2011
The present decision deals with an appeal against the revocation of the opposed patent by the Opposition Division (OD). The decision is not surprising at all but it contains a very clear and pedagogical exposition on admissibility of requests in appeals against decisions of the OD and the appropriateness of remittals to the OD. Admissibility of the first auxiliary request [1.1] Claim 1 of the first auxiliary request is identical with claim 1 of the patent as granted besides some minor punctuation amendments. Said request was filed in the appeal proceedings together with the grounds of appeal. The filing of said request can be seen as the [patent proprietor’s] reaction to the OD’s decision revoking its patent. [1.2] In numerous decisions, stemming from decision T 123/85, the Boards of Appeal have permitted an appellant/patent proprietor, whose patent has been revoked, to seek maintenance of the patent as granted even though its main request before the OD had only been the maintenance of the patent in more limited form. There is nothing in principle to prevent a patent proprietor from later seeking to amend its request so as to request for the patent to be maintained in the form as granted (or in other, less limited terms), either in the course of proceedings before the OD or on appeal. In this respect the Board concurs with decision T 755/00 [5-9]. The exception to this principle is where it would amount to an abuse of procedure to allow the patent proprietor to revert to the granted claims. [1.3] In the present case both oppositions sought revocation of the patent as a whole. Originally the proprietor had requested the rejection of the oppositions, i.e. the maintenance of the patent as granted. The OD summoned to oral proceedings (OPs) with a preliminary opinion that the systems of claims 1 and 2 of the patent as granted did not present novelty. The patent proprietor then sought maintenance of the patent in amended form, which was then rejected for the amendments not complying with A 123(2). In the appeal proceedings, the first auxiliary request, reverting back to essentially the claims as granted, was filed together with the grounds of appeal. It is not difficult to understand that this request clearly overcomes at least the reasons for the impugned decision, which manner of proceeding can hardly be seen as an abuse of procedure. [1.4] The objection of [opponent II] that the admittance of this request into the appeal proceedings would lead to an inacceptable (sic) delay of the present proceedings, due to the unavoidable remittal of this request to the OD, becomes moot due to the Board’s conclusion not to remit the case with said request, see below. [1.5] [Opponent II] argued that the only point in consideration for the appeal should be whether the impugned decision is confirmed or has to be reversed, but only on the elements discussed before the OD. Consideration of any other point would “create a serious uncertainty for the third party’s legal security”. This means to the Board that the appellant/patent proprietor would not have the right to file in the appeal proceedings any claims other than the ones dealt with in the impugned decision, or more limited ones: the extent of the protection defended ultimately for the decision under appeal would constitute the upper limit of what could come out of the appeal proceedings. The Board cannot concur with this, as it would amount to an abandonment of subject-matter for which there is no basis, unless it has been clearly presented as such at the time. That is not the case here. Secondly, until the final decision in the appeal proceedings (which are a continuation of the opposition proceedings) the legal security for the parties continues to find its limits in the form of the claims of the patent as granted, which would have been the result if the oppositions had been rejected. The requirements of A 123(3) make sure that third parties are never affected worse than that. [1.6] For the above mentioned reasons, the request of [opponent II] not to admit the [the patent proprietor’s] first auxiliary request into the proceedings is refused. 2236 | 3398
T 105/09 – Useful Reminders
K’s Law – The ebook
Remittal of the first auxiliary request to the OD [2.1] After having its first auxiliary request admitted into the appeal proceedings the [patent proprietor] requested the remittal of the case on the basis of this request to the OD for considering novelty and inventive step. The [patent proprietor] took the position that the framework within which the Board could operate in this respect was determined by its appeal filed pursuant to A 106(1). As the decision under appeal was limited to the question of inadmissible amendment it was negatively affected only in that respect and could only appeal to that extent. As a consequence the Board’s examination of the appeal pursuant to A 110 and its decision on the appeal pursuant to A 111(1), first sentence, were limited to this issue only. [2.2] The Board cannot concur with this. A 106(1) stipulates that appeals lie from decisions. This means that the framework of the appeal is determined by the final result of the decision, rather than by the grounds of such a decision. When the impugned decision revokes the patent, as it is the case here, the whole case is before the Board and the jurisdiction of the present Board therefore extends from allowing the appeal according to the [patent proprietor’s] requests (setting aside the decision under appeal and remitting the case to the OD as the objections under A 123(2) of the impugned decision have been overcome) on the one hand, to dismissing it on the other hand, which is not less than what was denied to the [patent proprietor] by the OD, nor different from what the [opponents] request. There thus cannot be here a case of “reformatio in peius”. [2.3] The [patent proprietor] argued that there was a contradiction between what is stipulated in A 106 on the one hand, and A 111(1), second sentence, on the other. The first mentioned determined clearly for the [patent proprietor], the Board and the other parties to stay within the boundaries set by the reasons of the decision appealed and the appeal filed against it. The second appeared to open up for the Board the possibility to move outside of these boundaries, whereas the parties had to stay within. [2.4] Point [2.2] above has dealt with the question as to what constitutes the framework of the appeal. In that respect the Board cannot see a contradiction with A 106 arising out of A 111(1), second sentence, as it clearly further defines the two possibilities the Board has within its – broader than wished for by the [patent proprietor] – jurisdiction: it can deal with the outstanding issues of the opposition proceedings itself or remit the case for further prosecution to the OD. Naturally, limits on the Board’s jurisdiction are set by the original extent of opposition and the grounds of opposition raised by the opponent(s) and/or the OD itself (G 9/91 and G 10/91). The ground of opposition for lack of novelty has been raised in the oppositions against claim 1 of the patent as granted, therefore the Board is not stepping out of its bounds here either. [2.5] The [patent proprietor] takes the position that it has the legitimate and fundamental right to have a reasoned written decision by two instances on its request. As the request was not decided upon in the decision under appeal, the case should be remitted to the OD to address that issue in a decision, so that the [patent proprietor] could properly challenge this decision on appeal. A legal basis for this position, however, could not be produced. [2.6] The Board has no knowledge of any such requirement in the EPC, nor its Implementing Regulations. The consistent case law of the Boards of Appeal, to the contrary, is that there is no absolute right to two instances (see e.g. T 133/87 [2]), i.e. for having each and every issue decided by two instances. This is all the more evident in view of the discretion established for the Boards of Appeal, by virtue of A 111(1), second sentence, to exercise any power within the competence of the department which was responsible for the decision appealed, or to remit the case for further prosecution. [2.7] The [patent proprietor] contended that it was established case law to remit a case to the department of first instance for the issue of novelty, if that issue had not been dealt with in the decision appealed. In support it referred to T 915/98. [2.8] The present Board is not aware of any case law fit to be applied to the circumstances of this case. It is these circumstances which determine the Board’s exercise of discretion. The case referred to in this respect is not an appropriate example, as the circumstances are already different. The deciding Board states in point [6] of the Reasons of said decision that 2237 | 3398
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K’s Law – The ebook
“[h]ad the OD decided – or at least given a reasoned opinion – also on the questions of novelty and inventive step, the Board may well have been able to take a final decision on the case at this point instead of having to remit it” (emphasis added by the Board). In the present case, however, the OD has given a reasoned opinion on the question of novelty in its annex to the summons to OPs. This is not affected by its presentation as a preliminary opinion. Thus, the conditions set by the Board in that decision to be fulfilled for not remitting the case are perfectly met. [2.9] The [patent proprietor] argued further that the Board incorrectly assumed in its preliminary opinion that the OD would have confirmed its provisional opinion on the novelty issue in its final decision. However, that opinion was non-binding on the division and could have changed in the light of further submissions and the discussion at the OPs. [2.10] The [patent proprietor’s] assumption appears to be based on the premise that the Board is limited in its present examination of the appeal to what has been (or to what could have been) decided by the OD. A 111(1), second sentence, and points [2.2], [2.4] and [2.6] above show that that premise does not apply in the opinion of the Board. What could have happened in the opposition proceedings, had the request been maintained is insofar irrelevant, as the Board in its own examination of the appeal had come to the same preliminary result as the OD; no more, no less. [2.11] Finally the [patent proprietor] argued that in the written proceedings also [opponent I] was initially in agreement with a remittal to the OD and that [opponent II] had not expressed an opinion on this matter. Therefore the Board should not of its own motion refuse to remit the case. [2.12] The Board notes that [opponent II] had taken an even stronger standpoint, namely that the auxiliary requests should not even be admitted. To construe this as a tacit consent in the written proceedings to a remittal would go too far. Further, it is the Board which considers what is appropriate as regards the exercise of its discretion in view of the circumstances of the case, to which the parties may provide their views. In the present case the Board finds it appropriate for efficient proceedings to deal with the question of novelty of the subjectmatter of claim 1 of the first auxiliary request itself, and to examine the remaining request for compliance with the requirement the infringement of which led to the impugned decision: the admissibility of the amendments (A 123(2) and (3)). [2.13] The request to remit the case with the claims of the first auxiliary request to the OD is therefore refused. Finally, the Board remitted the case to the OD for further prosecution on the basis of the fifth auxiliary request. To read the whole decision, click here. The file wrapper can be found here.
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T 1857/09 – Not Exclusive
K’s Law – The ebook
T 1857/09 – Not Exclusive 11 Mai 2011
The present decision deals with an appeal against the decision of the Opposition Division to revoke the opposed patent. Claims 1, 8 and 9 of the patent as granted read: 1. A transdermal therapeutic system (ITS) consisting of an active compound-impermeable back layer, at least one matrix layer based on polyacrylate and comprising fentanyl, and a protective layer to be removed before use, characterized in that the polyacrylate is selfadhesive and free of carboxyl groups, is synthesized only from monomeric esters of alcohols comprising 1 to 8 C atoms, the alcohols having optionally a hydroxyl group, and of acrylic and/or methacrylic acid and, if appropriate, vinyl acetate in an amount of up to 50 percent by weight, and has a saturation solubility for fentanyl of between 3 and 20 percent by weight, and in that the active compound-containing layers contain at least 5 percent by weight of the incorporated fentanyl (und daß die wirkstoffhaltigen Schichten mindestens 5 Gewichtsprozent des eingearbeiteten Fentanyls enthalten), 80 percent by weight thereof being in molecularly disperse dissolved form. 8. The ITS as claimed in any of claims 1 to 7, characterized in that it additionally contains a control membrane as a further layer. 9. The ITS as claimed in claim 8, characterized in that it additionally contains a self-adhesive layer situated toward the skin on the control membrane for fixing to the skin. The patent proprietor requested a correction of claim 1 under R 139: the word “incorporated” (eingearbeitet) was to be displaced so that “the active compound-containing layers contain at least 5 percent by weight of the incorporated fentanyl” (und daß die wirkstoffhaltigen Schichten mindestens 5 Gewichtsprozent des eingearbeiteten Fentanyls enthalten) would read “at least 5 percent by weight of the fentanyl are incorporated in the active compound-containing layers” (und daß die wirkstoffhaltigen Schichten mindestens 5 Gewichtsprozent des Fentanyls eingearbeitet enthalten). According to the patent proprietor, this amendment qualified as correction under R 139 because it was clear from the application as filed that the active compound was only incorporated into the glue from which the compound-containing layer was made. The Board will not allow this correction: *** Translated from the German *** [3] In the present case the proposed correction concerns the feature “and in that the active compound-containing layers contain at least 5 percent by weight of the incorporated fentanyl” (“und daß die wirkstoffhaltigen Schichten mindestens 5 Gewichtsprozent des eingearbeiteten Fentanyls enthalten”; see claim 1 as granted). According to the [patent proprietor] this feature is to be amended such that the word “incorporated” follows the word “fentanyl”, so that the following feature is obtained “in that at least 5 percent by weight of the fentanyl are incorporated in the active compound-containing layers” (“und daß die wirkstoffhaltigen Schichten mindestens 5 Gewichtsprozent des Fentanyls eingearbeitet enthalten”). However, when a request for correction is filed, it has to be examined whether the part of the European patent concerned by the request contains such an obvious error that a skilled person is in no doubt that this information cannot be meant to read as such (see G 3/89 and G 11/91). Pursuant to R 139, linguistic errors, errors of transcription and mistakes in any document filed with the EPO may be corrected on request. If the request for such correction concerns the description, claims or drawings, the correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction. This requirement is not fulfilled in the present case. It is true that when reading claim 1 as granted, one notes that not all of the fentanyl is found in the at least one matrix layer, although the ITS only consists of an active compound-impermeable back layer, at least one matrix layer comprising active substances, and a protective layer, wherein, according to the [patent proprietor] neither the back layer nor the protective layer contain active substances.
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T 1857/09 – Not Exclusive
K’s Law – The ebook
However, the skilled person, when reading the claims as granted, comes to the conclusion that the ITS may contain further layers besides the three layers that have already been mentioned, i.e. a control membrane and another self-adhesive layer (see claims 8 and 9 as granted). Therefore, the skilled person concludes that in the present case the expression “consisting of” has no exclusive meaning but has to be understood as a synonym for “comprising”, so that fentanyl may be found within the ITS in the form of further layers or, as there is a control layer, even in the form of a reservoir. Consequently, there is no obvious error which could be corrected under R 139. Therefore, the displacement of the word [“incorporated”] mentioned above is to be seen as an amendment that has to comply with A 123. As a matter of fact, A 123 proved fatal to the requests on file. Should you wish to download the whole decision (in German), just click here. The file wrapper can be found here.
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T 1587/07 – Withdrawn Shall Not Come Back
K’s Law – The ebook
T 1587/07 – Withdrawn Shall Not Come Back 10 Mai 2011
The present appeal deals with the refusal of an application by the Examining Division (ED) based on the finding that the claims on file did not comply with A 123(2). The Board summoned the applicant to oral proceedings (OPs) to be held on December 10, 2010. It expressed the opinion that the claims as amended did not comply with A 123(2). In its reply, the applicant filed two new sets of claims. On December 6, 2010, it informed the Board that it would not attend the OPs. Procedural matters [2.1] As announced in advance, the duly summoned appellant did not attend the OPs. The proceedings were however continued without the appellant in accordance with R 71(2) EPC 1973. According to A 15(3) RPBA, the “Board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party duly summoned who may then be treated as relying only on its written case”. The purpose of OPs is to give the party the opportunity to present its case and to be heard. However a party gives up that opportunity if it does not attend the OPs. This view is supported by the explanatory note to Article 15(3) (former Article 11(3) RPBA) which reads: “This provision does not contradict the principle of the right to be heard pursuant to A 113(1) since that Article only affords the opportunity to be heard and, by absenting itself from the OPs, a party gives up that opportunity” (see CA/133/02 dated 12 November 2002). [2.2] It is established case law of the boards of appeal that an appellant who submits amended claims shortly before the OPs and subsequently does not attend these proceedings must expect a decision based on objections which might arise against such claims in his absence (see e.g. T 602/03 [7]). Therefore, an appellant who submits new claims after OPs have been arranged but does not attend these proceedings must expect that the board decides that the new claims are not allowable because of deficiencies, such as for example lack of clarity (see e.g. T 991/07 and T 1867/07 [3.5]), or lack of inventive step (see e.g. T 1704/06 [7.6]). However, it is the board’s view that the appellant must also expect a decision not admitting a new request into appeal proceedings pursuant to Article 13 RPBA in his absence. This is in particular the case, if the appellant’s attention was drawn to the provisions of Article 13 RPBA in the communication annexed to the summons to OPs. [2.3] In the present case, the amendments filed were not admitted into the appeal proceedings for the reasons as detailed below. The appellant had to expect a discussion on the admission of its newly filed set of claims during OPs, in particular because reference was made to Article 13 RPBA in the communication under Article 15(1) RPBA. Due to the appellant’s absence in the OPs, relevant issues regarding Article 13 RPBA could not be discussed with the appellant as for example the reason for reintroducing features which were deleted in first instance proceedings at a late stage of the appeal proceedings. However, a duly summoned appellant who by his own volition does not attend the OPs cannot be in a more advantageous position than he would have been, if he had attended. The voluntary absence of the appellant can therefore not be a reason for the board not to raise issues it would have raised if the appellant had been present. Since the appellant did not appear in order to explain why the amendments to its case should be admitted into the appeal proceedings the board could only rely on the appellant’s written submissions. In this context, the board notes that, although the appellant was informed in the communication under Article 15(1) RPBA that amendments would be subject to Article 13 RPBA and that compliance with, inter alia, A 84 would have to be discussed, no comments on these matters were presented in writing. The voluntary absence of the appellant was not a reason for delaying a decision and the board was also in a position to decide at the conclusion of the OPs, since the case was ready for decision (Article 15(5) and (6) RPBA). 2241 | 3398
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K’s Law – The ebook
Admission of the main and auxiliary requests (Article 13 RPBA) [3.1] According to Article 12(2) RPBA, the statement of the grounds of appeal shall contain a party’s complete case. Any amendment to a party’s case after it has filed its grounds of appeal may, according to Article 13(1) RPBA, be admitted and considered at the board’s discretion. The discretion shall be exercised in view of, inter alia, the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. [3.2] The sets of claims submitted as a main request and an auxiliary request were filed with the letter dated 19 November 2010, i.e. after the board’s communication under Article 15(1) RPBA and shortly before the OPs. Hence the amendments to the appellant’s case were filed after the statement of the grounds of appeal. Thus the new requests are an amendment to the appellant’s case within the meaning of Article 13(1) RPBA. The admission of these requests is therefore at the board’s discretion. [3.3] When exercising its discretion under Article 13(1) RPBA, the board cannot ignore what happened during the proceedings before the ED. During the examining proceedings, with the letter dated 22 January 2007, the appellant submitted new requests with a method claim which contained the steps (1)E to (4)E replacing features (I) to (V) of the claims according to the request then on file […]. According to the submissions in this letter […], these claims had been revised to address the ED’s clarity objections […]. [3.4] With the statement of the grounds of appeal, the appellant filed a new set of claims wherein features (1)E to (4)E of claim 1 were replaced by features (1)A to (4)A. The appellant stated that the claims had been revised to overcome the objections in the decision under appeal relating to added subject-matter (A 123(2)), in particular, the added-subject matter objections concerning the features (1)E to (4)E […]. [3.5] In its reply to the summons to attend OPs before the board, the appellant submitted two new sets of claims as a main and an auxiliary request, to overcome the objections raised in the annex to the summons to OPs regarding added subject-matter under A 123(2). However, the appellant reintroduced in claim 1 of the main request and auxiliary request the features which are essentially the same as features (I) to (V) which had been deleted from the method claim in examination proceedings to overcome the clarity objections under A 84 […]. Consequently, the objections regarding the lack of clarity of features (I) to (V), raised by the ED in the communication annexed to the summons to OPs, also concern claim 1 of the present main request and auxiliary request. [3.6] The newly filed claims raise thus the same issues which have already been raised in the proceedings before the ED and which could have been dealt with in the decision under appeal if the appellant had not replaced the features (I) to (V) of claim 1 by the features (1)E to (4)E. Thus, in the board’s view, the appellant could have presented requests comprising claims with features which are essentially the same as the features (I) to (V) during the examination proceedings. [3.7] In view of the particular circumstances of the first instance proceedings, the board considers it appropriate, when exercising its discretion under Article 13(1) RPBA, to take into account also the provisions of Article 12(4) RPBA. According to Article 12(4) RPBA, the board has the discretionary power to hold inadmissible requests which could have been presented or were not admitted in the first instance proceedings. It is the board’s view that this applies all the more to requests that were filed and subsequently withdrawn in the first instance proceedings, since such a course of events clearly shows that these requests could have been presented in the first instance proceedings. These criteria, which are applied by the board when exercising its discretion under Article 12(4) RPBA, can also be applied by the board when exercising its discretion under Article 13(1) RPBA (see also T 361/08 [13]). The fact that the appellant had chosen to file the present main request and auxiliary request after it filed the grounds of appeal should not put the appellant in a better position than if it had filed this request with the statement of grounds for appeal. Otherwise it would be easily possible for the appellant to circumvent the provisions of Article 12(4) RPBA. [3.8] In the present case, the appellant withdrew its request filed with letter 20 March 2006 comprising claim 1 with the features (I) to (V) during the first instance proceedings […]. If the appellant had filed a request comprising claims with the features (I) to (V) with the statement of grounds of appeal, the board would have exercised its discretion according to Article 12(4) RPBA and would have most likely not admitted this request 2242 | 3398
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into the appeal proceedings. Consequently, the fact alone that the request comprising claim 1 with the features (I) to (V) was submitted and subsequently withdrawn in the first instance proceedings is for the board a sufficient reason not to admit the main request and auxiliary request, both comprising claims with features which are essentially the same as the features (I) to (V), into appeal proceedings. In addition, the present main request and auxiliary request were submitted at a very late stage of the appeal proceedings and new issues concerning clarity (A 84) could well arise due to the presence of claims for which a decision of the first instance was not given because of the appellant’s withdrawal of the request filed with the letter dated 20 March 2006. Therefore the board takes the view that the appellant’s behaviour counteracts procedural economy. [3.9] In view of the above, the board did not admit the main request and auxiliary request to the appeal proceedings, exercising its discretion pursuant to Article 13(1) RPBA [4] The appellant stated in the letter dated 19 November 2010 that the new sets of claims were filed as a main request and an auxiliary request “to replace the claims on file”, thereby effectively withdrawing the previous requests. As the board does not admit the main and auxiliary request into the proceedings, there is no admissible request. Consequently, the appeal must fail. […] The appeal is dismissed. So it may be dangerous to withdraw requests before the ED, as Article 12(4) RPBA may create a sort of estoppel situation, not so much because the requests were withdrawn but because the withdrawal proves that they could have been presented (but finally were not). To download the whole decision, click here. The file wrapper can be found here.
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T 1388/10 – Fourty-Three Pleasures
K’s Law – The ebook
T 1388/10 – Fourty-Three Pleasures 9 Mai 2011
This decision deals with a request for reimbursement of the appeal fee following interlocutory revision by the Examining Division (ED). The application as filed contained three independent product claims two of which (1 and 22) were directed to a filter and one (18) to a filter element. The European search report contained an objection pursuant to A 84 together with R 29(2) EPC 1973. In it’s communication pursuant to A 96(2) EPC 1973 dated October 16, 2007, the ED referred to the written opinion of the search report and invited the applicant to amend the application so as to overcome the objection. In its response dated April 25, 2008, the applicant filed an amended set of claims containing two independent claims, wherein one of which was a limited version of claim 1 as filed and the other was equivalent to claim 22 as filed. The applicant also stated that it reserved the right to revert to the original claims. The ED then refused the application. The applicant then filed an appeal as well as a new set of claims. The ED granted interlocutory revision but did not grant the request for reimbursement of the appeal fee. Therefore, this request had to be dealt with by the Board: *** Translated from the German *** [1] In the present case the ED granted interlocutory revision but did not order reimbursement of the appeal fee. Pursuant to R 103(2) it is the board of appeal which would have been competent to deal with the substantive issues of the appeal if no interlocutory revision had been granted that is competent to decide on the request (G 3/03 [answers 1 and 2]). The only remaining object of the appeal is the question of whether the appeal fee is to be reimbursed. [2] Pursuant to R 103(1)(a), the appeal fee shall be reimbursed in the event of interlocutory revision, if such reimbursement is equitable by reason of a substantial procedural violation. Therefore, it has to be examined whether there have been one or more substantial procedural violations during the examination proceedings, as pointed out by the appellant. [3] It can be seen from the facts of the case that in its written opinion regarding the European search report the Search Division (SD) raised the objection that the independent claims 1, 18, and 22 then on file did not fulfil the requirements of A 84 together with R 29(2) EPC 1973 (now R 43(2)). The SD justified this objection by pointing out that an application could only contain more than one independent claim in a given category if the subjectmatter of the application corresponded to one of the following exceptions: (a) a plurality of interrelated products, (b) different uses of a product or apparatus, (c) alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim. The present case did not correspond to any of those exceptions. [4] The ED adopted the objection of the SD and informed the applicant in its communication dated October 16, 2007, inviting him to file observations within a time limit of four months and/or to amend the application so as to overcome the deficiency. Moreover, the application was told that the application could be refused under A 97(1) EPC 1973 (now A 97(2)) if the deficiency was not overcome. [5] According to the Board, the objection pursuant to R 29(2) EPC 1973 (now R 43(2)) against the original claims 1, 18 and 22 was clear and unambiguous. The three claims were directed to three different products, i.e. two filters and one filter element, and, therefore, belonged to the same category. The essence of the objection was that the subject-matter of those claims was not “a plurality of interrelated products”, nor did it correspond to 2244 | 3398
T 1388/10 – Fourty-Three Pleasures
K’s Law – The ebook
“alternative solutions to a particular problem”. That the claims represented “different uses of a product or apparatus” could be excluded by merely considering the claim category because the claims on file were product claims and not use claims […]. Accordingly, the ED expressed the opinion that the above mentioned requirements of R 29(2) EPC 1973 (now R 43(2)) for the allowability of several independent claims of the same category were not fulfilled. [6] The Board is of the opinion that notwithstanding its concise wording, the objection contained the essential legal and factual reasons which led to the statement in the impugned decision according to which the existence of several independent claims of the same category violated A 84 together with R 43(2). According to its wording, the objection was directed not only to the existence of the then three independent claims 1, 18 and 22 but more generally to the presence of “more than one independent claim of a given category”, which includes the co-existence of two independent claims. [7] The appellant is of the opinion that the ED would not only have had to give detailed reasons why the original independent claims 1, 18 and 22 did not comply with the requirements of R 43(2) but also whether the objection referred to all three claims or – if not – whether only certain of the parallel (nebengeordnet) claims were concerned. […] [7.1] It has to be replied that the objection of the ED was worded unambiguously, so that the applicant had no reason to assume that the ED could possibly consider that one or several combinations of two of the three claims 1, 18 and 22 complied with R 43(2). […] [7.2] Moreover, the burden of explanation and proof for the existence of an exceptional situation (here: an exception pursuant to R 43(2)) lies with the party claiming the benefit of the exception. In the present case, this is the applicant, who is responsible for the wording of the claims and, therefore, decides on how many claims of the same category the application should contain. [7.3] If an applicant wishes to have more than one claim of the same category and the ED raises an objection against this request, then the applicant has to provide convincing reasons showing that the additional independent requests fall under one of the exceptions listed in R 43(2) (see, e.g. T 56/01 [5] as well as the texts concerning the modification of R 29(2) by the Administrative Council of the European Patent Organisation dated December 10, 2001, CA/128/01, Rev. 2, page 2, number 6). [7.4] In the present case, the applicant has in no way discharged its burden of proof with its letter dated April 25, 2008. [7.5] The amendments of the claims, which essentially consisted in that original claim 18 was deleted and claim 1 was further limited by an additional feature, were not suitable for overcoming the objection raised in the statement of November 13, 2006. The set of claims still contained several independent claims of the same category, i.e. the product claims 1 and 18, and there were no reasons given by the applicant as to why it was of the opinion that the independent claims 1 and 18 filed together with the letter of April 25, 2008, could fall under one particular exception pursuant to R 43(2). [7.6] Quite to the contrary, the applicant reserved the right to revert to the original claims. This follows from the wording “the applicant might come back to the original claims to a later stage” (see letter dated April 25, 2008, page 1, first paragraph). [7.7] The a posteriori declaration of the appellant, according to which this wording was not meant to contest that the objection of the ED was founded […] cannot change this. Even if this is assumed, the fact remains that the applicant has not presented any reasons why it assumed that the modified set of claims filed together with the letter dated April 25, 2008, complied with the requirements of R 43(2). [7.8] Under these circumstances the question as to whether the reservation of the applicant only meant to explicitly confirm that the subject-matter of the deleted claims would possibly be the object of a divisional application […] may remain unanswered. The question of how the reservation was meant or to be understood is irrelevant for the present decision. [7.9] As the procedural situation was at that time, the ED could not know why the appellant assumed that one of the exceptions pursuant to R 43(2) applied. Accordingly, the ED had no reason to revisit its objection under R 43(2) and possibly provide further explanations.
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T 1388/10 – Fourty-Three Pleasures
K’s Law – The ebook
[8] The response of the applicant dated April 25, 2008 filed in response to the communication dated October 16, 2007, which itself refers to the written opinion contained in the extended European search report of November 13, 2006, therefore did not generate any legal necessity for issuing another communication pursuant to A 94(3). All the ED could have done in a further communication was to raise the objection under R 43(2), which it had already raised before, a second time. [9] The appellant has also argued that the refusal of the application also was deficient because a refusal after a first objection was only admissible in cases where the applicant had not made serious efforts (“bona fide”) to deal with the first communication. However, in the present case, the response of the applicant dated April 25, 2007, was a “bona fide” attempt to overcome the objections of the ED. Therefore, the application could not have been refused without a further “warning” of the applicant. […] [9.1] The Board notes that there are no doubts that the response of the applicant dated April 25, 2007 is serious. However, the appellant is wrong when arguing, based on decision T 802/97, that this alone would have required a further communication. Such an obligation cannot be derived from A 94(3). How often the ED requests the application to comment lies within its discretion. [9.2] According to the Guidelines for examination there should be a further written communication, a telephone discussion or a personal interview if there are good prospects of bringing the proceedings to a positive conclusion, in the form of a decision to grant (see Guidelines, April 2010 edition, C-VI 4.3, last paragraph). [9.3] However, it should be noted in this context that the Guidelines for examination can only be considered to be general instructions intended to cover normal cases. The responsibility of applying of the Guidelines to concrete particular cases lies with the ED, which can deviate from the Guidelines in exceptional cases. In contrast to the EPC and its implementing regulations, the Guidelines do not form legal provisions (cf. Guidelines, April 2010 edition, general part, 3.3.2). [9.4] When examining decisions of the ED the Board of appeal does not assess whether the ED has acted according to the Guidelines but whether the limits fixed by the EPC and its implementing regulations have been respected when the ED exercised its discretion. It is not the function of a Board of Appeal to review all the facts and circumstances of the case as if it were in the place of the first instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first instance department (cf. G 7/93 [2.6]). Therefore, the Board only overrides the way in which the ED has exercised its discretion if it comes to the conclusion that the ED has gone beyond its margin of discretion. [9.5] The Board is of the opinion that the ED has acted within its margin of discretion when deciding that in the present case no further communication under R 94(3) was required after the first communication. In this respect, there was no procedural violation. [9.6] Nor did the ED have the duty to arrange oral proceedings (OPs). There was no such request on behalf of the applicant. The ED should only have organised OPs of its own motion if it considered this to be expedient (A 116(1)). However, manifestly the ED did not consider OPs to be expedient. [9.7] The Board does not see this to constitute a deficient exercise of discretion. It is not expedient to have OPs when the applicant expresses that it considers a particular objection to have been overcome but does not provide any arguments as to why it holds this conviction. The applicant’s response to the first communication, dated April 25, 2008, did not contain such reasons although it was the applicant who bore the burden of proof. [10] Nor was the Examiner in charge required to have a telephone interview or any other form of personal consultation, in order to tell the applicant that the objection under R 43(2) is maintained for the claims as amended. […] [10.1] The Board does not agree with the opinion of the appellant according to which it would have been obvious for the Examiner that a telephone interview might have made the appeal proceedings unnecessary. [10.2] The appellant submits that on the basis of the submission of April 25, 2008, the ED had to assume that the applicant would not maintain one of the independent claims 1 or 18 rather than have the patent application refused, or that it would file a divisional application, as the case might be. The Board is of the opinion that the ED would only have had to take this into consideration if the appellant had not expressly written “the applicant might come back to the original claims to a later stage”, or if the appellant had expressly acknowledged that the objection under point 1.1 of the written opinion on the European search dated November 13, 2006, was justified. 2246 | 3398
T 1388/10 – Fourty-Three Pleasures
K’s Law – The ebook
[10.3] Admittedly it lies within the dutiful discretion of the Examiner to decide on whether in a particular case there should be an informal consultation or not. Therefore, the Board does not see any hint that the Examiner, when considering the statement of the applicant, has gone beyond his margin of discretion when deciding not to have a telephone interview. [11] It follows from all this that the impugned decision is not based on one or several substantial procedural violations. [12] Therefore, the requirements for reimbursement of the appeal fee pursuant to R 103(1)(a) are not fulfilled. […] The request for reimbursement of the appeal fee is dismissed. Once again, so much trouble and effort could have been avoided had the applicant filed a precautionary request for OPs together with its response to the A 94(3) communication. To download the whole decision (in German), click here. The file wrapper can be found here.
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T 1693/07 – No Problemo
K’s Law – The ebook
T 1693/07 – No Problemo 7 Mai 2011
[8.1] Since D14 does not even address the same problem as the patent in suit, the skilled person seeking to provide a process for the production of a polyamide prepolymer would have no reason even to consult D14. Thus this document cannot provide a valid closest state of the art according to the problem-solution approach, the existence of superficial similarities between the method disclosed in D14 and that specified in the operative claims 1-17 not withstanding (cf. T 506/95 [4.1, second section] and the decisions discussed therein). From time to time the Boards make such statements. Please feel free to disagree, but I can’t help finding this reasoning faulty. If this statement were true in all its generality, prior uses – which do not disclose any particular problem solved at all - could never be the closest prior art. This cannot be true. What is the closest prior art? How is it to be determined? I have had a look at the Case Law Book (after all, the problem-solution approach is a case law creature) and the Guidelines (in order to see what the EPO expects Examiners to do). Section I.D.3.1 of the Case Law Book deals with the determination of the closest prior art in general: “… The boards have repeatedly pointed out that the closest prior art for assessing inventive step is normally a prior art document disclosing subject-matter conceived for the same purpose or aiming at the same objective as the claimed invention and having the most relevant technical features in common, i.e. requiring the minimum of structural modifications (T 606/89, T 686/91, T 834/91, T 482/92, T 298/93, T 380/93, T 59/96, T 730/96, T 650/01). A further criterion for the selection of the most promising starting point is the similarity of technical problem (see T 495/91, T 570/91, T 439/92, T 989/93, T 1203/97, T 263/99). …” (my emphasis) I find the first approach mentioned in I.D.3.1 perfectly reasonable. You first consider the prior art documents disclosing subject-matter conceived for the same purpose or aiming at the same objective as the invention. The condition of same purpose will in particular limit the search to a given technical domain. Among the documents that fulfil this condition, you then look for those that are structurally closest. The closest prior art should be among them. The second approach (similarity of technical problem) is much more problematic (in every meaning of the word), in particular when considering the further steps of the problem-solution method where the objective technical problem is derived from the differences of the claimed subject-matter with respect to the closest prior art. Consequently, the objective technical problem is undefined as long as the closest prior art is not determined. So what problem should be considered? The subjective problem mentioned by the inventor? I do not think that this is reasonable, be it only because this would allow patent drafters to have an influence on the outcome of the inventive step assessment, by providing exotic problems to be solved. We need objective criteria. Curiously, the Guidelines for search appear to privilege the similarity-of-technical-problem approach. B-IV 2.5 provides the following instructions to the search divisions: “… It may happen that the examiner does not find any documents published before the earliest priority date which prejudice the novelty or the inventive step of the claimed invention. In such cases, the examiner should, whenever possible, cite in the search report at least that prior art found in the course of search which discloses a solution to the same problem as that underlying the claimed invention (wherein this problem may change depending on the prior art retrieved (C-IV, 11.5.2) and wherein the known solution is technically the closest to the claimed solution (“closest prior art”). …” (my emphasis) So the fact that the problem may change is explicitly mentioned but somewhat left open. More information is provided in C-IV 11.5.1 “Determination of the closest prior art”: “The closest prior art is that which in one single reference discloses the combination of features which constitutes the most promising starting point for an obvious development 2248 | 3398
T 1693/07 – No Problemo
K’s Law – The ebook
leading to the invention. In selecting the closest prior art, the first consideration is that it should be directed to a similar purpose or effect as the invention or at least belong to the same or a closely related technical field as the claimed invention. In practice, the closest prior art is generally that which corresponds to a similar use and requires the minimum of structural and functional modifications to arrive at the claimed invention (T 606/89). …” (my emphasis) Fortunately, there is no reference to the similarity of technical problem and the first approach mentioned above seems to prevail. My personal opinion is that this approach is to be privileged and that references to a problem solved should be banned from this stage of the problem-solution approach. This being said, once the closest prior art is identified, one can determine an objective problem and the similarity-of-problem approach can be useful in the determination of the prior art to be combined with the closest prior art. It makes sense to use only documents that deal with the same (or at least a similar) technical problem, and there may be more or less promising candidates, considering the objective technical problem. And if the prior art cited in the application or patent is indeed the closest prior art, then the problem mentioned in the application or patent may be the relevant technical problem and is to be taken into account. Coming back to our decision of the day, I had a look at the decision cited therein, T 506/95. The relevant passage (translated from the German) reads: “When choosing the closest prior art, it is decisive that its solution is directed towards the same purpose (Zweck) or the same effect (Wirkung), respectively. Otherwise it cannot lead the skilled person to the claimed invention; see T 606/89, T 570/91 and T 1040/93. Mere external similarities – which can be established in retrospect – are not sufficient to qualify a document as closest prior art to an invention. Rather, their suitability for the purpose that the invention serves have to be disclosed or clearly recognizable (cf. T 273/92).” (my emphasis) Again, it is the purpose that is taken into consideration, and not some sort of hypothetical problem. One might object that this is mere word-picking and that there is a purpose to each problem (namely to solve the problem) and a problem to each purpose (to reach the purpose). Still, as we have seen, the case law distinguishes the approaches and indeed they are not completely equivalent. For instance, it is relatively easy to attribute a purpose to the object of a prior use whereas it may be more difficult to determine a problem to be associated with it. Be that as it may, faulty or not, the reasoning of our decision of the day may serve your case from time to time, so be aware that it exists. Should you wish to download the whole decision, just click here. To
have
a
look
at
the
file
wrapper,
NB: Should I have overlooked an aspect or got it completely wrong, please leave a comment.
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click
here.
T 1171/08 – On Purpose
K’s Law – The ebook
T 1171/08 – On Purpose 6 Mai 2011
In the present case the opponent filed an appeal against the decision of the Opposition Division to maintain the opposed patent in amended form. The Board spots an A 123(2) problem: *** Translated from the German *** [1] The claims as filed concerned, on the one hand, a process for removing COS and other acid gases from a hydrocarbonaceous fluid stream containing CO2, COS and, as the case may be, other acidic gases as impurities (claim 1), and, on the other hand, a scrubbing liquor for removing of COS from hydrocarbonaceous fluid stream containing COS (claim 9). The process was characterised in that the fluid stream is brought in intimate contact with a scrubbing liquor consisting in an aqueous amine solution containing from 1.5 to 5 mol/l of an aliphatic alkanolamine of from 2 to 12 carbon atoms and from 0.4 to 1.7 mol/l of a primary or secondary amine as activator, in that COS is essentially completely removed from the fluid stream and in that the substantially decontaminated fluid stream and the COS-loaded scrubbing liquor are separated and discharged from the absorption or extraction zone. Product claim 9 was characterised by its specific composition, i.e. an aqueous amine solution containing from 1.5 to 5 mol/l of an aliphatic tertiary alkanolamine and from 0.8 to 1.7 mol/l, preferably from 0.8 to 1.2 mol/l, of a saturated 5- or 6-membered N-heterocycle used as activator, which optionally contains further heteroatoms selected from oxygen and nitrogen. Claim 1 before the Board is directed to the use of a scrubbing liquor consisting of an aqueous amine solution for selective removal of COS with respect to CO2, from fluid streams comprising CO2, COS and, as the case may be, further acidic gases. The scrubbing liquor that is used comprises from 1.5 to 5 mol/l of an aliphatic tertiary alkanolamine of up to 12 carbon atoms and from 0.8 to 1.7 mol/l of an activator selected from piperazine, methylpiperazine and morpholine. [2] Thus the scrubbing liquor that is used in claim 1 is not necessarily identical with the one defined in claims 1 and 9 as filed. Also, the scrubbing liquors according to claim 1 and 9 as filed can differ with respect to each other. [3] According to the established case law of the Boards of appeal (see also “Case Law of the Boards of appeal”, 6th edition, 2010, Chapter III.A.7) the relevant question for the allowability of amendments is whether the proposed amendments are directly and unambiguously derivable from the application as filed. [4] The [patent proprietor] is of the opinion that there cannot be an unallowable extension, be it only because all the conditions for reaching the selective removal of COS are implicitly contained in the claim via the indication of purpose (Zweckbestimmung). [5] The indication of purpose as a functional feature in a use claim limits the claim to the embodiments wherein the purpose is achieved. It is only in this respect (insofern) that the indication of purpose can implicitly comprise features that are required for achieving the desired purpose. However, it cannot possibly serve to replace the essential features that are concretely disclosed in combination in an application. If this were the case, then there would be no need to identify the essential ingredients of the scrubbing liquor and their concentration in claim 1 under consideration. However, this would clearly lead to an extension with respect to the content of the application as filed because the latter only discloses scrubbing liquors which necessarily contain certain quantities of concrete aliphatic alkanolamines and concrete primary or secondary amines as activators. As a consequence, as far as A 123(2) is concerned, it is necessary to determine which features can be directly and unambiguously derived, in the context of the purpose of use, from the application as filed in the present case. […] 2250 | 3398
T 1171/08 – On Purpose
K’s Law – The ebook
The Board finally came to the conclusion that claim 1 did not comply with the requirements of A 123(2) and revoked the patent. To read the whole decision (in German), click here. The file wrapper can be found here.
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T 1691/08 – Don’t Speculate
K’s Law – The ebook
T 1691/08 – Don’t Speculate 5 Mai 2011
The present appeal deals with a refusal of an application by the Examining Division (ED). According to the decision, the application did not fulfil the requirements of A 84; insofar as claim 1 could be understood, its subject-matter did not involve an inventive step. The wording of independent claim 1 before the Board was as follows: A long-period grating with a center wavelength λp having enhanced stability to variations in temperature comprising: an optical fiber (10) including a core (11) having an effective mode index of refraction ncore, a cladding (12,13) surrounding said core (11) having an effective mode index ncladding less than ncore, said core (11) having a grating region (14) comprising a plurality of perturbations (15) in its refractive index spaced apart by a periodic distance Λ to form the long period grating with a center wavelength λp ; and characterized in that: a polymeric overcoat layer (20) is located on said cladding (12,13), said cladding (12,13) being located between said grating region (14) and said polymeric overcoat layer (20), said polymeric overcoat layer (20) having a refractive index np that is lower than an index of refraction of the cladding (12,13) and has a first derivative with respect to temperature dnp/dT, and wherein np and dnp/dT are chosen so that the rate of change of λp with respect to temperature is less than 1 nm/100°C. The Board does not agree with the ED’s findings. Here is what it had to say on the clarity objection: [2.2.1] In the Decision objection was raised under A 84 for the reason that the analysis of the temperature dependence of the centre wavelength λp of the long-period fiber grating concentrated on the influence of the refractive index change of the polymer cladding with temperature but that, according to the ED, it was immediately apparent that for a proper solution the inclusion of stress and strain related effects was necessary. Since this influence was not taken into account claim 1 was unclear and not supported by the description. [2.2.2] The Board does not share this position. The Board notes that the present patent application discusses the underlying technical problem in the Section “Principles of design”. In this section the patent application discloses the solution to this problem and illustrates in Figure 5 the obtained improvement by showing a comparison of a long-period fibre without coating (curve 1) and an exemplary recoated fibre (curve 2).
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T 1691/08 – Don’t Speculate
K’s Law – The ebook
Furthermore the Board understands that the lower dependency of temperature in the recoated fibre is obtained by selecting the value of the refractive index of the polymer overcoat layer np and its first derivative with respect to temperature dnp/dT […]. [2.2.3] It appears to the Board to be mere speculation whether a further inclusion of stress and strain-related effects in the problem analysis would have led to an even “better” technical solution, but such a consideration is irrelevant for the question whether the conditions of A 84 are met: as is set-out in point [2.2.2], the technical problem of prior art long-period gratings defined in the preamble of claim 1 is solved by the further features defined in the characterising portion of the claim. Thus it appears that claim 1 is not objectionable under A 84. The same conclusion holds for the further claims of the main request. Should you wish to have a look at the whole decision, just click here. The file wrapper can be found here.
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T 2232/08 – An Error With Consequences
K’s Law – The ebook
T 2232/08 – An Error With Consequences 4 Mai 2011
This decision deals with an appeal against the decision of the Opposition Division (OD) to revoke a patent belonging to the MS Development (“MS”) company. In the notice of appeal, the professional representative indicated that the Zurflüh Feller (“ZF”) company was the new patent proprietor and requested its entry into the European Patent Register, based on the enclosed deed of assignment (acte de cession). This deed concerns the transfer of 201 shares representing the total capital (capital social) of the MS company. The question arose as to whether the appeal was admissible. The appellant argued that the intention clearly was to file the appeal in the name of ZF. The entry of the transfer had been notified to the professional representative on December 17, 2008, indicating November 25, 2008, i.e. the date on which the request for entry into the Register and the notice of appeal were received at the EPO, as the effective date. The opponent submitted that the deed of assignment only concerned the shares (parts sociales) of the MS company and did not prove that the patent had been transferred because the legal entity (personne morale) of the patent proprietor still existed on the date on which the appeal was filed. Therefore, according to the opponent, the appeal was filed by a company different from the patent proprietor and had to be declared inadmissible. What did the Board conclude? *** Translated from the French *** Admissibility [1] It is established and undisputed that the appeal was filed in the name of ZF on November 25, 2008. From on the deed of assignment and the copy of the excerpt from the commercial register, which have been filed by the parties, one can see that the assignment concluded between the proprietors of the totality of the shares of the MS company on the one hand and the ZF company on the other hand only concerned the shares of the patent proprietors, i.e. the control of the company, but that the legal entity of the patent proprietor still existed at the date on which the notice of appeal was filed. There was no other document providing evidence for the transfer of the patent. As a consequence, the Board is of the opinion that the entry of the change of proprietor should not have been made and has to be cancelled. Hence it has to be examined whether the appeal filed in the name of ZF is admissible. A 107 provides, inter alia, that only parties to the proceedings that have led to the impugned decision can validly file an appeal. In this context, “party” is to be understood as meaning a person that has taken part in the proceedings before the EPO. Although a party may cease to be a party if it is decided that it is not entitled to take part in the proceedings, this does not mean it never was a party, only that it is no longer entitled to take part in the proceedings. In other words, its position cannot change retrospectively from that of having been a party to that of never having been a party (T 1178/04 [3] and T 1081/06 [3]). In the present case, the entry of the transfer of the patent from the original patent proprietor MS to the appellant ZF has become effective on November 25, 2008, the day on which the notice of appeal was filed. Consequently, the appellant was a party to the proceedings within the meaning of A 107 when it filed the notice of appeal. The fact that the transfer was entered into the Register erroneously (sur base erronnée) cannot mean that ZF was not party to the proceedings on the day on which it filed its notice of appeal (T 1178/04 [4] and T 1081/06 [3]). 2254 | 3398
T 2232/08 – An Error With Consequences
K’s Law – The ebook
Thus the Board considers that the appeal is admissible. Continuation of the proceedings [2] In the present case the transfer has been entered into the Register during the appeal proceedings only. Thus the entry did not affect the decision of the OD and a remittal to the first instance on this basis is not justified (as opposed to T 1178/04 [43-47]). As far as the appeal proceedings are concerned, they have been initiated and pursued by the professional representative having taken part in the whole proceedings starting with the filing of the patent application, and who has also declared in his letter dated November 9, 2010, that he also represented the interests of the MS company. This assertion has not been contested by the [opponent] and the Board has no reason to challenge it. In the light of these elements, the Board considers itself able to continue the proceedings dealing with substantive matters (au fond), including the arguments submitted by the professional representative of the [patent proprietor]. The situation is somewhat weird. Had the EPO refused to enter the transfer into the Register, as it should have, the appeal would have been inadmissible. But as it did enter it, the appeal was found admissible. Once the entry is canceled, who is party to the proceedings? MS again? What if it does not exist any more? This could have raised difficult questions had the Board decided to remit the case. This being said, in the end all those considerations had no practical consequences because the appeal was finally dismissed: the claimed subject-matter had been found to lack novelty. To download the whole decision (in French), click here. The
file
wrapper
is
NB: Laurent Teyssèdre also comments this decision (here).
2255 | 3398
found
here.
T 423/09 – Agitation Recommended
K’s Law – The ebook
T 423/09 – Agitation Recommended 3 Mai 2011
The opponent filed an appeal against the decision of the Opposition Division rejecting the opposition. Independent claims 1 and 21 of the main request before the Board read: 1. A milk sampling apparatus for use with an automated milking system, said apparatus comprising a cassette (7) wherein milk sample collecting elements (9) are placed, and at least one filling member (27) capable of being placed above a selected one of said milk sample collecting elements (9) by means of a positioning system, and capable of bringing a milk sample, representatively taken from milk yielded during the milking of an animal by means of said automated milking system, into said selected one of said milk sample collecting elements (9), characterized in that said milk sampling apparatus comprises agitating means (5) capable of agitating said milk sample.
21. A method for milk sampling in a milk sampling apparatus comprising a cassette (7) wherein milk sample collecting elements (9) are placed, and at least one filling member (27) movable above said milk sample collecting elements (9) by means of a positioning system, and capable of bringing a milk sample, representatively taken from milk yielded during a milking of an animal by means of an automated milking system, into anyone of said milk sample collecting elements (9), characterized by
bringing said milk sample into a selected one of said milk sample collecting elements (9); and agitating said milk sample.
In the following paragraphs the Board examines whether this subject-matter involves an inventive step. [3.1] D13 is undisputedly the closest prior art document and discloses the prior art portion of claims 1 and 21. Auxiliary request 1 further specifies with respect to the main request that said milk sample is: “in said selected one of said milk sample collecting elements (9)”. This further feature is also disclosed in D13. [3.2] The milk sampling apparatus of claim 1 according to the main and first auxiliary request differs from that of D13 in that it comprises agitating means capable of agitating said milk sample. The milk sampling method of claim 21 according to the main and first auxiliary request differs from that of D13 by the step of agitating said milk sample. [3.3] As stated in the patent specification, [...] “… the sample tubes are typically prepared with a preservative prior to sampling …” or [...] “The sample tubes are typically delivered to the farmer in a cleaned and preservative prepared condition…”. It is therefore implicit that a standard milk sample collecting element already contains a preservative before the milk sample is added. [3.4] Starting from D13 as closest prior art, the problem the invention seeks to solve may thus be seen in improving preservation of the milk quality of the milk samples, when using an automated milk sampling system of the kind disclosed in D13. D3 is a document intended to serve as a field manual on preservation of milk samples which gives guidance as to the best practice for manual collection of samples. This document thus illustrates the common general knowledge of the skilled person in relation to milk sample preservation. D3 recommends inter alia the following practice (page 11, section 3.2): 2256 | 3398
T 423/09 – Agitation Recommended
K’s Law – The ebook
i) the milk tubes into which the milk samples are to be delivered are provided with a chemical preservative and ii) after milking, the sample box should be turned over three or four times in order to mix the preservative and the milk well. Thus common general knowledge in relation to milk sample preservation does include the step of agitating the collected milk sample, so as to mix the milk sample with the preservative. D9 [...] states: “Make sure you mix the milk and preservative well by rotating the bottles as they are filled… Thorough mixing with the preservative is especially important in the summer months”. D8 [...] specifies “Milk … was dispensed … into … plastic bags…” and “Thus, on closing the bags [sample collecting element] and dissolving the tablets [preservative] by gentle shaking …” [3.5] The fact that D3, D8 or D9 refer to manual collection of milk samples is irrelevant. These citations define the recommended practice for the preservation of milk quality of collected milk samples which includes agitating the sample collecting element so as to mix or dissolve the preservative in the collected milk sample. [3.6] The [patent proprietor] argued that the idea underlying the present invention is to improve the preservation of the milk quality of the collected milk samples by enabling strongly accelerated dissolution of the preservative in the milk samples and that this idea is not taught by the cited prior art. However, D9 “National Dairy Herd Improvement Handbook” deals with practices to be followed with regard to milk sample preservation. On page 2 of the handbook “Protect sample quality” the recommended practice is as follows: “Make sure you mix the milk and preservative well by rotating the bottles as they are filled or by gently rotating the whole box after you complete milking”. It goes without saying that the skilled person following this recommended practice would also consider agitating the milk sample collecting element as it is filled and would thus “strongly” accelerate the dissolution of the preservative in the milk sample. Under established Board case law an enhanced effect cannot be adduced as evidence of inventive step if it emerges from obvious tests, see in particular T 296/87 [8.4.1]. In the present case the enhanced effect, that is the strongly accelerated dissolution of the chemical preservative, does not emerge from routine tests but from the practice to be followed according to the rules and recommendations of the handbook D9. The skilled person following the recommended practice prescribed in this handbook, and thus acting only routinely would inevitably obtain this enhanced effect which therefore cannot be taken as an indication of inventive step. [3.7] The [patent proprietor] submitted that D3 does not provide a clear teaching since it also warns the reader against any rough handling of the milk samples such as shaking or stirring. However, this article addresses the skilled practitioner who knows that excessive agitation might be detrimental to the milk sample and that only a gentle agitation is required (as indicated in D8 [...]). The [patent proprietor] submitted also that it would not have been obvious to equip the automated sampling apparatus of D13 with an agitating means. However, according to the routine described in particular in D3, the sample collecting box containing the sample collecting elements has to be agitated such as to thoroughly mix the preservative with the milk sample in the sample collecting elements. There would be no difficulty for the skilled person, here the specialist of automated sampling apparatuses who also knows the procedures to be followed with regard to milk sample preservation to provide these sampling apparatuses with automated agitating means. [3.8] Consequently, the subject-matter of claims 1 and 21 according to the main request or the first auxiliary request does not involve an inventive step. To read the whole decision, click here. The file wrapper can be found here.
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T 826/06 – No Causal Link
K’s Law – The ebook
T 826/06 – No Causal Link 2 Mai 2011
The present decision deals with an appeal filed by several opponents after the Opposition Division (OD) had maintained the opposed patent in amended form. Claim 1 as granted read: Use of at least one dye, which dye is capable of staining tissue without diffusing through said tissue, for the manufacture of a staining composition for visualizing a lens capsule in an eye during performance of a capsulorhexis. NB: Capsulorhexis is a technique used to remove the lens capsule during cataract surgery. Claim 1 of the main request before the Board was identical with the claim as maintained by the OD: 1. Use of at least one dye, which dye is capable of staining tissue without diffusing through said tissue, said dye being represented by the formula (I)
wherein R1 and R2 are the same or different aryl groups, and wherein R3 and R4 are independently chosen from hydrogen, methyl, ethyl, methoxy, amino, hydroxyl and sulfonate for the manufacture of a staining composition for visualizing a [sic] the anterior lens capsule in an eye during performance of a capsulorhexis. The OD was of the opinion that the Swiss-type form claim was adequate in view of the fact that the surgical method relating to the capsulorhexis could be considered as a method of treatment of the human or animal body under A 52(4) EPC 1973. As a consequence, the conditions for the legal fiction set out in Enlarged Board of Appeal decision G 5/83 directly applied. The Board sees things in a different light: [2.1] Methods for treatment of the human and animal body by surgery are listed among the methods excluded from patentability according to A 52(4) EPC 1973 (A 53(c) EPC 2000). Therefore, the conditions set out in decision G 5/83 for claims directed to further medical indications in methods for treatment by therapy apply in principle to chemical products to be used in methods for treatment by surgery. Decision G 5/83 institutes the Swiss-type form for claims relating to further medical indications. Thus, the Swiss-type form concerns a legal fiction that allows a specific medical use for a known product to act as a functional feature conferring notional novelty on the use of the product for the manufacture of a medicament which is otherwise known per se. [2.2] Therefore, the wording in claim 1 of the main request has to be investigated in order to determine whether or not the definitions contained in the claim reflect functional features of the product (in the present case the dye) whose use is addressed. Formally, claim 1 of the main request is drafted in a Swiss-type form. The claim relates to: (a) Use of at least one dye ..., said dye represented by formula I (the dye is the chemical product) (b) for the manufacture of a staining composition (the word “medicament” is not appropriate here since the staining composition may be useful in a method for treatment by surgery, but it is not a medicament stricto sensu) 2258 | 3398
T 826/06 – No Causal Link
K’s Law – The ebook
(c) for visualizing the anterior lens capsule in an eye during performance of a capsulorhexis (emphasis added). [2.3] Capsulorhexis means the controlled opening by making a continuous circular tear in the anterior lens capsule of an eye. Accordingly, capsulorhexis per se is not a complete method for treatment by surgery, but it may only be a step in other surgical methods. According to the patent in suit, one complete method for treatment by surgery is the surgical procedure for cataract extraction. However, claim 1 of the main request does not specify the surgical procedure for cataract extraction. Therefore, in the absence of any specification in claim 1 of the main request in relation to the fact that capsulorhexis is a step of a complete method for a defined treatment by surgery, the legal fiction conferred by the Swiss-type form according to G 5/83 does not apply, and the use claimed is only a method for the manufacture of a staining composition which is known per se (see inter alia documents D8 and D7 which disclose staining compositions containing the vital dye trypan blue). Thus, claim 1 of the main request lacks novelty. [2.4] Moreover, even assuming in favour of the respondent that capsulorhexis is limited to an act of surgery and thus inevitably part of a method for treatment by surgery, a precise scrutiny of the claim's wording also shows that there is no causal link between the staining function of the dye and the method of opening expressed in the claim by the words “during capsulorhexis”. [2.5] Leaving aside the parties’ dispute whether “visualizing” is merely a mental act performed by the observer (in that case a surgeon), “visualizing” is performed “during capsulorhexis”. It has to be recalled that a technical effect may confer novelty on the use of a known product only if there is a causal link between the product and the “new” technical effect for which the use is claimed (see G 1/07 [5.10.9]). Only if such a functional link is shown novelty may be conferred on the use. In the present case the product for which the use is claimed is a dye, thus the technical effect may be a selective dying. The technical effect cannot, however, be a capsulorhexis which is a mode of opening performed by the surgeon. The mention of capsulorhexis in the claim is made only by way of a circumstantial expression “during capsulorhexis” which remains deprived of any causal link to the dye product. Thus, “visualizing” has to be taken in its broadest sense as a synonym (as its direct result) for staining the anterior lens capsule of the eye (to an extent which is not specified in claim 1 of the main request). [2.6] Consequently, the establishment of a temporal condition (“during capsulorhexis”) cannot confer novelty on the use claimed by means of providing for a functional feature of the dye, since in the claim the action of staining the anterior lens capsule and the time in which the observer looks at the stained capsule are not causally linked. [2.7] Therefore, document D8 which discloses staining of an anterior lens capsule in an eye by using trypan blue deprives claim 1 of the main request of novelty (A 52(1) and A 54(2)). [2.8] Decision G 2/08 has put an end to the Swiss-type format (for applications filed after its publication date plus a certain time limit). Moreover, in the case underlying the referral G 2/08 the claim mentioned hyperlipidaemia as the ailment treated by medicament therapy. Thus, following the logic in decision G 2/08, dosage regimen might be acknowledged as the feature conferring notional novelty on a purpose-related product claim within the meaning of A 54(5) EPC 2000, since it is a step pertaining by its nature to a therapeutic method concretised by the administration of the medicament containing the product. [2.9] Moreover, even following the respondent’s argumentation that, in analogy to decision G 2/08, a particular dosage regimen might also confer notional novelty to the use of a known product in a method for treatment by therapy in a Swiss-type form, there are still insurmountable differences with the present case. A staining composition is not a medicament stricto sensu, and capsulorhexis is not necessarily part of a therapeutic treatment attained by the dye product. Capsulorhexis pertains by its nature to a controlled opening technique of the lens capsule which is not inevitably part of a method for therapy resulting from the use of the product mentioned in the claim. Thus, in contrast to the situation with the dosage regimen in which there is a direct link between the administration of the medicament and the product for which the use is claimed, capsulorhexis is an act of the surgeon independent from the application of the dye as a staining composition to an eye. Accordingly, capsulorhexis is causatively and sequentially disconnected from staining in claim 1 of the main request.
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T 826/06 – No Causal Link
K’s Law – The ebook
[2.10] Additionally, the fact that document D8 only reports a partial staining of the anterior lens capsule does not help to overcome the lack of novelty of the claimed subject-matter, since the claim does not clearly define the quality or extension of the staining. [2.11] Consequently, claim 1 of the main request fails for lack of novelty over document D8. Should you wish to download the whole decision, click here. The file wrapper can be found here.
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T 1389/08 – Boundaries
K’s Law – The ebook
T 1389/08 – Boundaries 30 Apr 2011
The present decision will not at all surprise those who are familiar with the case law concerning ranges of values, but I have to say that I never really got used to it. The appeal was filed against the decision of the Opposition Division to revoke the opposed patent. Having found the main request before it to lack novelty, the Board then considers the auxiliary request, claim 1 of which read: Brazing sheet having either a two-layer structure having a core sheet made of an aluminium alloy core and on one side thereof a brazing layer of an aluminium alloy containing silicon as main alloying element and said two-layer structure is devoid of a sacrificial anode clad layer, or a three-layer structure having a core sheet made of an aluminium alloy core material and on both sides thereof a brazing layer of an aluminium alloy containing silicon as main alloying element, wherein the aluminium alloy of the core sheet has the composition (in weight %):Mn 0.7 to 1.4 Cu 0.8 to 1.5 Si 0.3 to 0.4 Mg < 0.03 Fe < 0.3 Ti < 0.15 Cr 0.05 to 0.25 Zr 0.05 to 0.25 Zn < 0.25 balance aluminium and unavoidable impurities, with the proviso (Cu+Mn) > 2.0, and wherein said brazing sheet has a post-braze 0.2% yield strength of at least 50 MPa and having a corrosion life of more than 20 days in a SWAAT test without perforations in accordance with ASTM G-85. The opponent pointed out that the subject-matter of this claim was not disclosed in the parent application as filed. The reason was that in a first step the patent application defined the Si-content as being 0.3 to 0.4 wt% by combining the lower limit disclosed for its broader definition, namely 0.3-1.5 wt%, with the preferred lower limit of 0.4 wt%. This Si-content was then in a second step combined with a proviso that (Cu+Mn) > 2.0 wt%, coupled with specific values for the other elements of the core alloy. The combination of these values was not disclosed in the originally filed earlier application. In the following paragraphs the Board examines whether or not the subject-matter complies with A 76(1) EPC 1973: [5.1] Claim 1 of the Auxiliary Request corresponds to Claim 1 of the parent application combined with preferred embodiments stemming, on the one hand, from dependent claims of the parent application as filed:
Claim 8 (the two-layer structure is devoid of a sacrificial anode clad layer), Claim 2 (Mg < 0.03 wt%), Claim 4 (Mn: 0.4 to 1.4 wt%), Claim 5 (Cu: 0.8 to 1.5 wt%), Claim 7 (corrosion life of more than 20 days),
and, on the other, from preferred embodiments disclosed in the parent application as filed:
page 7, lines 14-15 (most preferred Fe-content), page 6, lines 22-24 (Si-content), page 7, lines 20-21 (more preferred Cr-content), 2261 | 3398
T 1389/08 – Boundaries
K’s Law – The ebook
page 7, lines 25-26 (more preferred Zr-content), and page 7, lines 1-2 (most preferred proviso (Cu+Mn) > 2.0).
[5.2] In particular with regard to the Si-content of 0.3 to 0.4 wt% required in Claim 1, this range is based on a combination of the lower limit of the general range for Si, namely 0.3 to 1.5 wt% (Claim 1, page 4, line 27), with the more suitable minimum level for Si of 0.40 wt% (page 6, line 24). Thus the claimed Si-content derives from the limitation of the originally filed Si-content of 0.3 to 1.5 wt% by splitting it into two ranges:
one being a “suitable” range of 0.4 to 1.50 wt%, which corresponds to the preferred range of the parent application (page 6, line 24; page 10), the other being the implicitly considered “less suitable” range of 0.3 to 0.4 wt%, which is claimed in present opposed patent (“divisional”).
The fact that the Si-content range of 0.3 to 0.4 wt% is considered less preferred would not prevent the skilled reader from applying “the invention” in this range. On the contrary, in the Board’s opinion the skilled reader would seriously contemplate exploiting the whole Si-range disclosed, i.e. including core alloys having a Sicontent of 0.3-0.4 wt%. There is also nothing in the parent application as filed or the common general knowledge which would cause the skilled reader to exclude the possibility of working in that range. This finding is, as pointed out by the Appellant, supported by T 1170/02 and T 956/07. Finally, the Respondent did not provide any evidence that the invention would not work in this Si-content range. [5.3] With regard to the combination of a Si-content range of 0.3 to 0.4 wt% with preferred features stemming from dependent claims and the description, the Board considers that this combination is directly and unambiguously derivable from the originally filed parent application. The skilled reader would seriously contemplate combining the most preferred embodiments with the whole originally disclosed Si-content range, i.e. also with the range of 0.3 to 0.4 wt%. Furthermore, the majority of the examples in the patent in suit had a Si-content very close to 0.4 wt%. Thus, the combinations leading to Claim 1 do not generate “new” subjectmatter. [5.4] Claims 2 to 5 of the Auxiliary Request correspond to Claims 9 to 13 of the parent application as filed. [5.5] In view of the above considerations the subject-matter of the Auxiliary Request is considered to fulfil the requirements of A 76 EPC 1973. Although I am more relaxed on this topic than some of the A 123 hardliners I have come across, I have never been comfortable with the case law allowing to claim disclosed preferred lower limits as new upper limits or vice versa. According to me, this goes beyond the teaching of the application as filed. But then, let us face it : this is very ancient (T 2/81!) and clearly established case law, … and it may come in handy from time to time. To read the whole decision, click here. The file wrapper can be found here.
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R 18/10 – Last Day Action
K’s Law – The ebook
R 18/10 – Last Day Action 29 Apr 2011
Remember J 8/09? In this decision, which I have presented in an earlier post, the Legal Board of appeal dismissed a request for re-establishment filed by a Portuguese physician acting on his own, who had forgotten to pay a renewal fee. It is one of those cases where you can see that professional help is needed in proceedings before the EPO, and this becomes frightingly clear when looking at the way in which the petition proceedings were conducted. The decision of the Legal Board was dated August 23, 2010 and posted on August 31, 2010. So the 2 month time limit for filing a petition (A 112a(4)) expired on November 10, 2010. The applicant sent the following letter to the Legal Board on October 14.
The same letter was sent to the Chairman of the Administrative Council (!) on October 19. The applicant paid the fee for the petition on the very last day, i.e. November 10. It was credited to a bank account held by the EPO on November 11. On the same day, he sent a more formal petition for review to the EBA. It was received on November 19 and contained the following letter:
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R 18/10 – Last Day Action
K’s Law – The ebook
In the proceedings before the Enlarged Board (EBA), the applicant submitted that he posted his request for review on 10 November 2010, i.e. in due time because in Portugal the date of the receipt of a registered letter was considered the same as the date of posting. Needless to say, the petition did not succeed, but at least the petitioner recovered the petition fee: [1] Pursuant to A 112a(4) in conjunction with R 108(1) a petition for review based on the grounds of violation of right to be heard (A 113) or another fundamental procedural defect under R 104 shall be filed within two months of the notification of the contested decision. Within the same period the prescribed fee has to be paid. [2] The calculation of periods in cases before the EPO is governed by the provisions of the EPC and not, as the petitioner seems to assume, by Rules of the national law of the Contracting States. Thus, R 131(2), last sentence, applies. This provision rules that where a procedural step is a notification, the relevant event shall be the receipt of the document notified, unless otherwise provided. According to R 126(2) in cases where notification is effected by registered letter such a letter is deemed to be delivered to the addressee on the tenth day following its posting. The decision in case J 8/09 was posted on 31 August 2010 with the consequence that regardless of the fact that actual notification occurred on 6 September 2010 the two months time limit under A 112a(4) ended pursuant to R 126(2) on 10 November 2010. [3] With respect to the Decision of the President of the EPO dated 14 July 2007 (OJ EPO Special Edition No. 3, 2007, I.1, p. 119) concerning the application of R 133(1) on the late receipt of documents an exception is made in so far as a document is deemed to be received in due time if it was posted five days before the expiry of the relevant time limit. [4] The question, however, whether this is the case here and the petition for review dated 19 November 2010 has to be considered filed in good time and is therefore admissible or not can be left open, since the fee for the petition for review prescribed in A 112a(4) was not paid in due time. [5] It is acknowledged that the bank order was given by the petitioner on the last day of the period, but the money was only credited to a bank account of the EPO on 11 November 2011. Pursuant to Article 7(1) of the Rules relating to fees (RRF), when deciding whether a relevant act has been made in due time, it is to be considered that the date of payment is the date on which payment is actually received by the office and not the date the order was given. Thus, the payment effected by the petitioner is considered to be late. [6] The EBA is aware that, according to Article 7(3)(b) RRF, a payment effected within the period in which it should have been made may be considered to be effected in good time under the condition that a surcharge of 10% on the relevant fee, but not exceeding 150 Euro, is paid. However, the petitioner has not paid any surcharge. Thus, the legal consequence is, that the petition is not deemed to have been filed (A 112a(4), Article 7(4) RRF). […] The fee for the petition for review is reimbursed. To read the whole decision, click here. The file wrapper can be found here. 2264 | 3398
T 1834/09 – Missing? Not Quite
K’s Law – The ebook
T 1834/09 – Missing? Not Quite 28 Apr 2011
Can the absence of experimental data in the priority document make the priority claim invalid? That is the question the Board had to deal with in the present case. The applicant lodged an appeal against the decision of the Examining Division (ED) refusing its application. In its summons to oral proceedings, the Board expressed the view that the claimed subject-matter was not new inter alia over document D4, which was prior art under A 54(3). According to the applicant, document D4 was not entitled to rely on its earliest priority date for two reasons. First, for an invention relating to newly identified members of a protein family which was known to have a highly divergent range of biological activities, such as the TNRF superfamily to which the polypeptide of document D4 belonged, it was necessary to provide in the priority document a credible disclosure of an exploitable specific function or activity. This position was supported by decisions T 81/87 and T 77/97. The earliest priority document of document D4 failed to disclose such a function. Second, the failure to identify a specific function or activity of a protein in a previous application in a scientifically credible manner had the consequence that it was not possible to take advantage of the priority of that application as it did not disclose the industrial applicability of the protein as required by A 57. Since it was not entitled to its earliest priority date, document D4 was not relevant for the novelty assessment of the claimed polypeptide. The Board sees things differently : [1] Claim 1 is directed to any polypeptide characterised by having about 80% amino acid sequence identity with the native sequence Apo-2DcR polypeptide comprising amino acid residues 1 to 259 of Figure 1A as represented in SEQ ID NO:1. This sequence identity is the sole essential feature which is required for a polypeptide to fall within the scope of the claim. Claim 1 encompasses a polypeptide consisting of the sequence SEQ ID NO:1. [2] The ED, finding that document D4 disclosed that particular polypeptide, concluded that claim 1 was not new. D4, which is a Euro-PCT application published after the international filing date of the application at issue, claims the priority dates of 14 January 1997 and 7 August 1997. It was cited under A 54(3). [3] The appellant has argued that document D4 and its earliest priority document (application US 60/035,496 filed on 14 January 1997) did not describe the ‘same invention’, as a specific function of the polypeptide disclosed has been identified only in document D4. Therefore, document D4 was not entitled to claim priority from its earliest priority document. As the application at issue was entitled to its priority date of 28 June 1997, document D4 did not belong to the state of the art for the novelty assessment of the subject-matter of claim 1. [4] The legal standard to be applied when assessing whether a claim is entitled to a priority date pursuant to A 87(1) is given by decision G 2/98 in the answer to the point of law referred to the Enlarged Board of Appeal which reads: “The requirement for claiming priority of “the same invention”, referred to in A 87(1), means that priority of a previous application in respect of a claim of a European patent application in accordance with A 88 is to be acknowledged only if the skilled person can derive the subjectmatter of the claim directly and unambiguously, using common general knowledge from the previous application as a whole”. [5] The respective descriptions of document D4 and its earliest priority document (application US 60/035,496) are very similar, insofar as the polypeptide in question (denoted “TRID” in document D4 and “TNFR-5” in the priority document) and all aspects related thereto, including its preparation and its therapeutical uses, are concerned. The descriptions differ insofar as three experimental examples (Example 4 showing the tissue distribution of TRID mRNA expression, Example 5 showing that the extracellular domain of TRID binds the 2265 | 3398
T 1834/09 – Missing? Not Quite
K’s Law – The ebook
cytotoxic ligand-TRAIL and blocks TRAIL-induced apoptosis, and Example 6 showing that TRID protects cells from TRAIL-induced apostosis) have been added in document D4. [6] The earliest priority document of document D4 teaches that the TRID/TNRF-5 polypeptide is capable of interacting with a TNF-family ligand, i.e. a potent inducer of apoptosis, a function which qualifies said polypeptide as an appropriate compound for the treatment of immune system-related disorders associated with increased apoptosis or the inhibition of apoptosis […]. [7] It has to be decided whether this teaching, which is not supported by experimental data, amounts to a credible disclosure rather than a pure speculation. [8] A significant statement in this respect can be found on page 4, lines 20 to 24, of the earliest priority document. There, it is stated that the TNFR-5 polypeptide shares sequence homology with other TNF receptors and that it shows the highest degree of sequence homology with the translation product for the human mRNA for nerve growth factor receptor, including multiple conserved cysteine rich domains. [9] According to a well established principle in the field of biology, an identified DNA sequence and the putative encoded protein are assigned to a known protein family or superfamily on the basis of sequence comparison such as by degree of homology, the presence of highly conserved domains, motifs and/or signatures. Thus, once an unambiguous consensus sequence has been defined, the skilled person is prepared to accept that a peptide belongs to the family/superfamily, and performs the same or similar biological function(s) as the other members thereof, if it exhibits this consensus sequence. [10] The board takes the view that the sequence homology disclosed in the earliest priority document of document D4 has to be considered as being a strong and reliable indication that the TNRF-5 polypeptide is capable of interacting with a member of the TNF ligand family. This is regarded as being a clear sign that the TNRF-5 polypeptide is useful in the treatment of a number of immune system-related disorders associated with increased apoptosis or the inhibition of apoptosis and is, therefore, susceptible of industrial application. [11] Appellant’s argument that such prediction of a biological function or property based solely on sequence analysis and on the mere presence of a particular domain or motif in a polypeptide sequence cannot reasonably be made in case of the TNFR superfamily has not been substantiated by any sort of written evidence, and is to be considered as an unproven allegation only. [12] Based on the evidence on file, the board does not agree that the earliest priority document (US 60/035,496) and document D4 do not describe the ‘same invention’ in that only the latter discloses a specific function of the polypeptide in question. [13] The two decisions cited by the appellant in support of its position that document D4 was not entitled to its earliest priority date are not relevant for the present case as they were concerned with different technical situations. In decision T 77/97 the competent board had to decide whether claims referring to compounds not explicitly described in the priority document were entitled to the priority date, and in the case underlying decision T 81/87 the decisive question to be answered was whether the priority documents disclosed all the ‘critical’ features of the claimed invention. [14] The board concludes that the ‘same invention’ (in accordance with decision G 2/98) is described in document D4 and its earliest priority document. Therefore, document D4 is entitled to the priority date of 14 January 1997 pursuant to A 87(1) and, as such, is part of the state of the art according to A 54(3). [15] The sequence of the TRID polypeptide (identically contained as SEQ ID NO:2 in both document D4 and its earliest priority document) and the sequence of the Apo-2DcR polypeptide (see SEQ ID NO:1 of the application at issue) are identical. This fact is not contested by the appellant. [16] Therefore, a particular embodiment of claim 1 is explicitly disclosed in document D4. Thus, the subjectmatter of claim 1 lacks novelty and the main request does not comply with the requirements of A 54. I understand that if the priority document had been merely speculative, its disclosure of the polypeptide would not have been sufficient to serve as basis for a valid priority claim. This is because the priority document has to disclose the ‘same invention’ and not merely the same subject-matter.
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T 1834/09 – Missing? Not Quite
Should
you
wish
K’s Law – The ebook
to
download
the
The file wrapper can be found here.
2267 | 3398
whole
decision,
click
here.
R 19/10 – Be Explicit
K’s Law – The ebook
R 19/10 – Be Explicit 27 Apr 2011
This petition for review concerns decision T 945/09 wherein the Board set aside the Opposition Division’s decision to reject the opposition and revoked the patent of the petitioner (see also my post on this decision). The petition is based on the grounds of A 112a(2)(c) and (d) in combination with R 104(b). The patent proprietor submitted that the Board had failed to address or to decide on a relevant request of the patentee when revoking the patent. According to the patent proprietor, it had requested in the appeal proceedings that the Board of Appeal “uphold the novelty of the patent in suit, on the basis, inter alia, that whatever was disclosed prior to the priority date of the patent in suit by the authors of D3, was not enabling but merely speculative and did not support the efficacy of the claimed medical use”. However, in its decision, the Board completely failed to address or to decide on this issue. The Board thereby breached A 112a(2)(d), because it had decided on the appeal without deciding on a request relevant to that decision, contrary to R 104(b) EPC. This was also a breach of A 112a(2)(c), as it constituted a fundamental violation of the patentee’s right to be heard under A 113. The Enlarged Board (EBA) found the petition to be admissible but not to be allowable. Here is why: [5] With regard to the objection under A 112a(2)(d) in combination with R 104(b), the [patent proprietor] refers to its request to uphold the novelty of the patent in suit, on the basis, inter alia, that whatever was disclosed prior to the priority date of the patent in suit by the authors of D3, was not enabling but merely speculative and did not support the efficacy of the claimed medical use […]. On the other hand, according to the minutes of the oral proceedings (OPs), the [patent proprietor] had requested “that the appeal be dismissed” before the chairman of the Board of Appeal declared the debate closed […]. The question therefore arises which was the [patent proprietor’s] request relevant to the decision within the meaning of R 104(b). [5.1] It is true that, as submitted by the [patent proprietor], the EPC does not contain an explicit definition of the term “request”. However, according to the common practice in the proceedings before the EPO, requests are in general directed to executable legal consequences sought by the parties. The arguments provided by the parties in support of these legal consequences do not normally belong to the legally binding requests as can be concluded from A 114(1). [5.2] In the circumstances of the present case it is, however, not necessary to further consider this issue. As follows from the file the relevant request confirmed by the [patent proprietor] under Article 15(5) RPBA was that “the appeal be dismissed”. In view of this fact and the common practice referred to above, the Board of Appeal had no reason to assume that the [patent proprietor] requested anything else. This is all the more so as the alleged request which included supporting arguments of the [patent proprietor] was never explicitly formulated during the appeal proceedings. As a basis for it, the [patent proprietor] refers to its observations in the letter of 21 December 2009 under the heading “Insufficient Data for Establishing Disclosure” on pages 10 to 13. However, this passage contains an argumentation without any recognizable request. It is not a procedural duty of the Boards of Appeal under R 104(b) to analyse the submissions of the parties in order to identify potential requests which were not explicitly made by the parties. [5.3] For these reasons, the [patent proprietor’s] objections based on A 112a(2)(d) in combination with R 104(b) […] are clearly not justified. [6] As to the objection pursuant to A 112a(2)(c) it is to be contemplated whether the Board of Appeal fundamentally violated the right to be heard of the [patent proprietor] with regard to its argument that the results reported in document D3 did not establish an enabling prior use […]. [6.1] In point VII of the written decision, the Board of Appeal summarized the arguments of the [patent proprietor]. In particular, the argument of a non-enabling and therefore legally irrelevant prior use was summarized as follows:
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R 19/10 – Be Explicit
K’s Law – The ebook
“Not everything the authors of document D3 could have done and known before the priority date of the patent in suit had been established as a successful method. They only were beginning to try anything to help a patient in need of some therapy while suffering repeated catheter-related bloodstream infections with no explanation of their origin. Whether this action or any other accompanying administration of antibiotic or antiseptic substances led to success in treating this single - and therefore statistically irrelevant - patient was not known and at that time could not possibly be seen. Consequently, even if the information to be derived from document D3 was clearly disclosed, it was far from an established teaching capable of constituting prior use”. From this summary it follows that the Board of Appeal had, in fact, duly taken note of the argument of the [patent proprietor] that the patent could not be found to be invalid for lack of novelty, even if a non-confidential prior public disclosure of the teaching of document D3 was assumed, since this teaching was not based on sufficient data with regard to the existence of a therapeutic effect. [6.2] The [patent proprietor] further submits that A 113(1) not only enshrines a party’s right to be heard before a decision is issued against it, but also guarantees its right to have the relevant grounds fully taken into account in the written decision […]. The EBA in principle agrees. However, this principle is not without any limitation as explained in decision T 1557/07 referred to by the [patent proprietor] itself: provided that the reasons given enable the parties concerned to understand whether the decision was justified or not, the deciding organ is under no obligation to address each and every argument presented by the party concerned. [6.3] In the circumstances of the present case the EBA is satisfied that the reasons given in the decision under review enabled the parties to understand, on an objective basis, the grounds for the decision of the Board of Appeal. As stated in point [3.4] of the reasons, the Board of Appeal based “its conclusions on the knowledge of the patient being clear and concise enough that he could take notice of the technique used after replacement of heparin-lock by taurolidine-lock, representing the teaching of claim 1. There was also no reason for him to treat this knowledge as a secret, because at that time the acting doctors simply tried to apply taurolidine of whatever provenance using a technique they derived freely and easily from the state of the art common to them at that time”. Accordingly, the Board of Appeal concluded in point 3.5 of the reasons “that this teaching was performed beginning from July 1995 in the full knowledge of the patient without any obligation of confidentiality and thus was publicly available before the priority date of the patent in suit”. The decision of the Board of Appeal is therefore clearly based on the finding that what constituted the public prior use was the knowledge of the treated patient himself, as a member of the public. This argument had been introduced into the appeal proceedings by the appellant already with the statement of the grounds of appeal […] and was therefore known to the [patent proprietor]. Against this background it is apparent that it did not matter for the reasoning of the Board of Appeal whether or not the results reported in document D3 provided any clinical evidence of efficacy, as this had no bearing on the public prior use constituted by the direct knowledge of the applied technique by the treated patient, as a member of the public. This was indicated by the Board of Appeal in point [4.4] of the reasons according to which “the action in the Canadian hospital of using the taurolidine-lock was not typical of a clinical or even an experimental approach because it was dictated by the instant necessity to help a patient in a very desperate situation and thus had not been planned systematically as a scientific experiment”. [6.4] In summary, the written decision makes it sufficiently clear that, in the opinion of the Board of Appeal, the public prior use was constituted by the knowledge of the treated patient himself, as a member of the public, so that the issue of whether the teaching of document D3 provided any clinical evidence of efficacy or satisfied the standards of a clinical study was not relevant for deciding on the novelty of the subject-matter of claim 1. Whether or not this finding is correct in substance cannot be the subject of the review proceedings (see R 2/08 [5]; R 9/08 [6.3]). In any case, the EBA is satisfied that the alleged fundamental violation of Article 113 EPC did not occur in the proceedings under review. […] 2269 | 3398
R 19/10 – Be Explicit
K’s Law – The ebook
The petition for review is rejected as clearly unallowable. To download the whole decision, click here. The file wrapper can be found here.
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T 933/10 – You Have To Tell Why
K’s Law – The ebook
T 933/10 – You Have To Tell Why 26 Apr 2011
Curious as it may seem to attorneys who are not based in the Bavarian capital, some Munich based colleagues seem to consider that attending oral proceedings (OPs) in The Hague rather than in Munich is unacceptable. Not long ago, we have seen case T 689/05 where Board 3.5.04 refused to remit the case to the Examining Division (ED) and pointed out that “the procedural violation [i.e. that the impugned decision was not reasoned with regard to the refusal of the applicant’s requests to transfer the OPs to Munich] did not affect the entire proceedings and can thus not amount to a fundamental deficiency within the meaning of Article 11 RPBA.” The facts underlying the present case are similar. During the course of the examination proceedings the ED issued, on July 2, 2009, summons to attend, on December 8, 2009, OPs at the EPO in Rijswijk (The Hague). By letter dated 11 August 2009 the applicant submitted: “Our client is concentrating its patent activity in Munich and it is therefore respectfully requested to hold the OPs scheduled for December 8, 2009 in Munich instead of Rijswijk.” In a “Brief Communication” (EPO form 2008A) dated 1 September 2009 the ED stated: “The OPs will take place as planned in Rijswijk. It is not forseen for the ED, which is located in Rijswijk, to travel to Munich for OPs during the examination procedure.” In a letter dated 30 November 2009 the applicant confirmed, following a telephone conversation with the primary examiner, that it would neither attend nor be represented during the OPs if they took place in The Hague. However for the case that the OPs would take place in Munich it was indicated that the applicant would be represented during the OPs. The decision of the ED records in the final paragraph of the “Summary of Facts and Submissions”: “In preparation for the OPs the applicant filed a reply on 11-08-2009 and 30-11-2009 and requested to hold the OPs in Munich instead of Rijswijk. The Applicant further stated that he neither will attend or be represented during the OPs if the OPs take place in The Hague.” The first paragraph of the Reasons for the Decision read: “The present decision is based solely on the grounds of lack of novelty (A 52 and A 54), lack of inventive step (A 56) and clarity (A 84) which was communicated to the applicant with the communication dated 05-02-2008 and the summons for OPs dated 02-07-2009. The applicant did not attend the OPs and further evidence was not provided by the applicant.[…] Refusal of the application at this stage is justified and does not violate the applicants right to be heard (A 113(1)).” The remaining reasons of the decision dealt with the substantive aspects of the application, i.e. A 54, A 56 and A 84. The applicant filed an appeal and requested the case to be remitted to the ED with the order to hold OPs in Munich. It also requested, as an auxiliary request, that the following question be referred to the Enlarged Board (EBA): “Can a request by a party to conduct OPs at the EPO in Munich instead of at the branch office in The Hague be denied?” Board 3.3.03 comes to another conclusion than Board 3.5.04 in T 689/05. A 113 / R 111 [2] R 111(2) (corresponding to R 68(2) EPC 1973) requires that decisions of the EPO which are open to appeal shall be reasoned. By this is meant that the decision has to contain the logical chain of reasoning which led to the relevant conclusion. See for example T 292/90 [2] and T 52/90 [2] as well as the various other decisions discussed in section VI.J.5.3.4 of “Case Law of the Boards of Appeal of the EPO”, 6th edition. 2271 | 3398
T 933/10 – You Have To Tell Why
K’s Law – The ebook
It is also the established case law of the EPO that the failure to provide reasons pursuant to R 111(2) (R 68(2) EPC 1973) constitutes a substantial procedural violation justifying reimbursement of the appeal fee - see T 493/88 [7] as well as section VII.E.17.4.4 of “Case Law of the Boards of Appeal of the EPO”, 6th Edition. [2.1] The “Brief Communication” of 1 September 2009 issued by the ED in response to the request of the Applicant to hold OPs in Munich instead of The Hague […] merely stated that it was “not forseen” for an ED which was located in Rijswijk to travel to Munich for OPs. This statement does not do more than elaborate the physical circumstances associated with the refusal of the request. The communication thus contains nothing that can be regarded as “reasoning” justifying the refusal of the request concerning the venue of the OPs. Nor were any legal norms, e.g. Articles or Rules of the EPC or Information or Directives issued by the Office invoked by the ED to support its conclusion. Accordingly this communication cannot be regarded as containing any reasons at all in support of the conclusions reached, let alone as providing a “logical chain of reasoning” justifying the conclusions. [2.2] Regarding the status of this communication, as held in T 1012/03 [6], there was no need to decide whether the communication issued by the division was a non-appealable interlocutory decision or only a precautionary indication to the applicant. Either way, the refusal of the request to hold OPs in Munich was the subject of and therefore appealable with the final decision. [2.3] In the present case, however, the written final decision also contained nothing that can be regarded as providing reasons to justify the refusal of the request of the applicant to hold oral proceedings at the EPO in Munich instead of in The Hague (Rijswijk). Although this matter was referred to in the Facts and Submissions of the decision under appeal […], this is not further mentioned in the reasons for the decision. [2.4] Pursuant to R 111(2) the absence of any reasoning in either the communication […] or the decision […] concerning the refusal of the request regarding the venue of OPs constitutes a serious procedural violation which according to the established case law (see above) would justify reimbursement of the appeal fee. [2.5] Further, an argument presented by the appellant/applicant in support of this request was not dealt with in the decision under appeal:
In its submissions to the ED (letter of 11 August 2009 […]) the Applicant gave a reason for its request to hold OPs in Munich, namely the concentration of the patent activities of the client in Munich; Neither in the communication issued by the division, nor in the written decision is there even a reference to this argument, let alone a logical chain of reasoning showing why this argument would have to fail […]; On the contrary it is recalled that the first paragraph of the reasoning states […]: “The present decision is based solely on the grounds of lack of novelty (A 52 and A 54), lack of inventive step (A 56) and clarity (A 84) which was communicated to the applicant with the communication dated 05-02-2008 and the summons for OPs dated 02-07-2009. […]”.
[2.5.1] According to the established jurisprudence of the boards of appeal, the opportunity to present comments and arguments guaranteed by A 113(1) is a fundamental principle of the examination, opposition and appeal procedures - see T 1123/04 [2.2.4]. [2.5.2] This is not just a right to present comments, but also to have these duly considered - see T 508/01 [4] which decision was also cited in the aforementioned T 1123/04. [2.5.3] The fact that the decision under appeal failed to take account of an argument of the appellant/applicant represents a further violation of the right to be heard and consequently a further substantial procedural violation which would also justify reimbursement of the appeal fee. [2.6] Summarising, the decision under appeal suffers from two substantial procedural violations […]:
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T 933/10 – You Have To Tell Why
K’s Law – The ebook
No reasons were given for the refusal of the request of the applicant to hold OPs in Munich instead of The Hague, which is contrary to R 111; There is no evidence that an argument presented by the Applicant in support of this request was taken into account by the division in reaching its decision, i.e. the applicant had de facto been denied the right to be heard, which is contrary to A 113(1).
[3] Since each of these violations justifies in the Board's view referral back to the first instance and reimbursement of the appeal fee, it would be premature for the Board further to assess the probative value of the appellant/applicant's other arguments, for instance those based on T 1012/03 with respect to the seat of the Office. For these reasons it is decided that: 1. The decision under appeal is set aside. 2. The case is remitted to the first instance for further prosecution. 3. Reimbursement of the appeal fee is ordered. Please note that the Board did not order (as requested by the applicant) that OPs be held in Munich. I guess it does not even have the power to issue such an order. Although formally justified, I do not find the remittal helpful. It is just a waste of time because the OD may be expected to decide as it did before, except that it will provide some reasons why the OPs are not held in Munich (which should not be too difficult). I much prefer the approach chosen in T 689/05. To read the whole decision, click here. The file wrapper can be found here. NB: T 689/05 is now also discussed on Le blog du droit européen des brevets.
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T 189/06 – Nine Not One
K’s Law – The ebook
T 189/06 – Nine Not One 25 Apr 2011
Readers familiar with the case law of the Boards of appeal know that Boards are reluctant to change the dates of oral proceedings (OPs) once the summons have been sent. But what about the hour of beginning – is it possible to have afternoon proceedings? In the present case, the appellant requested OPs on an auxiliary basis and that any OPs be held as close to 1.00 pm as possible in order to reduce its costs. [16] The request to start the OPs as close as possible to 1.00 pm could not be granted for the following reasons: Scheduling OPs to start at 1.00 pm can only be accepted in certain exceptional cases. In general this creates a risk that the OPs are not finished at a reasonable time and thus have to be adjourned. In the present case five sets of claims (main request and four auxiliary requests) were submitted with the grounds of appeal and five prior-art documents (D1 to D5) might have had to be discussed during the OPs. The present case thus appeared inappropriate for making an exception. The OPs therefore started at the usual time of 9.00 am. To read the whole decision, click here. The file wrapper can be found here.
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T 1744/08 – Wrong Base
K’s Law – The ebook
T 1744/08 – Wrong Base 23 Apr 2011
The present decision deals with the refusal of a patent application. The Examining Division (ED) found the claims on file to lack inventive step. Claim 1 reads as follows: A process for preparing submicron sized particles of a pharmaceutically active compound comprising the steps of:
providing a multiphase system having an organic phase and an aqueous phase, the organic phase containing a pharmaceutically active compound dissolved in a water immiscible solvent; and sonicating the multiphase system to evaporate a portion of the water immiscible solvent of the organic phase to cause precipitation of particles of the pharmaceutically active compound having an average effective particle size of less than 2 μm in the aqueous phase and wherein the sonicating step is effective to remove nearly all the water immiscible solvent in the system.
The decision contains an interesting statement on inventive step and sufficiency of disclosure: [2] The refusal of the main request and of all auxiliary requests was based on the conclusion that there was no evidence in the original application that the sonicating step was able to remove nearly all the water immiscible solvent in the system. The ED concluded therefrom that there was lack of inventive step […]. If, however, the sonicating step is not able to remove nearly all the water immiscible solvent in the system, then the process as a whole cannot be carried out, as the said solvent removal step is an essential part of the process as claimed. As a consequence, the refusal is factually based on insufficiency of disclosure (A 83) rather than lack of inventive step (A 56). When I first read this, I thought the Board had got it wrong. Absence of evidence for the technical effect should concern inventive step (as it is not established that a problem is indeed solved) rather than sufficiency of disclosure (which corresponds to the requirement that the skilled person has to be able to carry out the invention, which may be possible irrespective of whether there is evidence for the alleged effect). Nevertheless, there are some exceptions to this reasoning. In a recent post, we have seen that claims directed at further therapeutic applications contain the latter as functional features, so that if no evidence for the therapeutic effect is given, one of the features is not described, and an A 83 objection appears to be justified. The present case shows yet another exception. After some thinking, I believe the reasoning of the Board to be correct because the effect has been incorporated into the claim. In such a case, the skilled person trying to carry out the claimed subject-matter does not know how to get there, and an A 83 objection seems appropriate. Having said this, I think the situation would be different if the effect had been asserted in the application – without there being any evidence that it was indeed obtained – but was not a feature of any of the claims. Then, as far as I can see, an A 56 objection would be more appropriate than an A 83 objection. To read the whole decision, click here. To have a look at the file wrapper, click here.
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T 1162/07 – Carrying One’s Burden
K’s Law – The ebook
T 1162/07 – Carrying One’s Burden 22 Apr 2011
The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke the patent for lack of novelty over document D3. Claim 1 of the main request before the Board read: Use of metal complexes of an azo compound which conforms to the formula (I) or to one of its tautomeric structures
where R and R’ are independently OH, NH2, NH-CN, acylamino or arylamino and R1 and R1’ are independently -OH or -NH2, and which hosts at least one guest compound, the metal complexes corresponding to the mono, di-, tri- and tetra-anions of the azo compounds of the formula (1) with the metals Li, Cs, Mg, Cd, Co, Al, Cr, Sn, Pb, particularly preferably Na, K, Ca, Sr, Ba, Zn, Fe, Ni, Cu, Mn and La, as a pigment in colour filters for liquid-crystal displays. The Board examines the novelty of this claim with respect to D3: *** Translated from the German *** [3.1] Document D3 is a Japanese patent application filed on November 11, 1997 and claiming a priority of April 28, 1997. It was published on January 22, 1999. it discloses the use of “BABYPLAST Yellow 5GN 01” as “C.I. Pigment Yellow 150” for the manufacture of LCD colour filters […]. [3.2] The annexes to document D8 provide evidence for the following facts: A fax from Bayer AG to Bayer Ltd. in Tokyo, sent on March 15, 1999, refers to the delivery of 600 kg of “BABYPLAST Yellow 5GN1 01” of batch FA 320 016. According to the English translation of the fax of the “East Japan Division of Yamamoto Trading Co. Ltd.”, sent on July 22, 1999, 100 grams of this batch (FA 320 016) were shipped by Bayer (Osaka) to the [opponent]. According to document D9, “BABYPLAST Yellow 5GN1 01” of batch FA 320 016 was analysed and the pigment fraction was identified as a melamine coordination compound of azobarituric acid 1:1 Nickel complex […]. [3.3] In opposition appeal proceedings, the parties to the proceedings carry the separate burdens of proof of any fact they allege (see T 270/90 [2.1]). If one party has submitted convincing evidence for facts it alleges then it has discharged its burden of proof. The evidence provided does not necessarily have to prove these facts with absolute certainty in order to be convincing; evidence showing high probability is sufficient. If a party has discharged its burden of proof, then the adverse party, which tries to invalidate the facts that have been established convincingly by submitting adverse arguments bears the burden of proof for those arguments (see T 109/91 [2.10], T 239/92 [2.4.2-3], T 525/90 [4]). [3.4] The facts described above in paragraphs [3.1] and [3.2] were not contested by the parties, and the Board having thoroughly examined them, does not contest them either. However, it was disputed
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T 1162/07 – Carrying One’s Burden
K’s Law – The ebook
on one hand, whether, when novelty is examined, the pigment “BABYPLAST Yellow 5GN 01” on sale on the priority date of document D3 or the pigment on sale on its date of publication (for which D9 provided a chemical analysis) was to be taken into account; on the other hand, whether, as submitted by the [patent proprietor] the pigment “BABYPLAST Yellow 5GN 01” on sale on the priority date of document D3 was not a melamine coordination compound of azobarituric acid 1:1 Nickel complex.
[3.4.1] As far as the second disputed question is concerned, it has to be determined who carries the burden of proof for the alleged fact. In order to do so, it first has to be ascertained whether the [opponent] has discharged its burden of proof concerning the lack of novelty of the claimed subject-matter in view of document D3. As the facts mentioned under [3.1] and [3.2] have not been contested, the evidence provided by the [opponent] can only be considered to be insufficient if the fact asserted by the [patent proprietor] is probable. [3.4.2] The [patent proprietor] suggested that the “BABYPLAST Yellow 5GN 01” product used in document D3 did not contain any melamine. It based this argumentation
on one hand, on the supposition that the composition of products sold under a trade name, such as PERSIL®, often changes, and on the other hand, on documents D24 and D26 to D28 showing that the recipe of “BABYPLAST Yellow 5GN 01” had indeed been modified by the addition of melamine.
The trade name PERSIL is used for selling detergents, i.e. products that are destined to end users. “BABYPLAST Yellow 5GN 01”, however, is a pigment preparation, i.e. a product that is delivered to processing companies which use this product for manufacturing coloured intermediate or end products. During the processing steps, the pigment can come in contact with a great variety of components and devices and has to be compatible with them under the chosen processing conditions. Therefore, a change of the recipe of such a pigment preparation can have effects not only regarding the end product - as is the case for PERSIL® - but may also lead to perturbations of the processing. As a consequence, the manufacturer of “BABYPLAST Yellow 5GN 01” has committed itself to comprehensively inform and consult its customers in writing before any change of the specification of the product at constant quality […] (See the English translation of the annex to document D10:
(highlighting added) Therefore, each modification of the recipe of “BABYPLAST Yellow 5GN 01” implied great effort. As a consequence, it has to be assumed that such modifications cannot have been commonplace (die Regel). Thus the Board cannot follow the argument of the [patent proprietor] according to which the composition of trade names such as “BABYPLAST Yellow 5GN 01” was subject to frequent change. Therefore, the Board comes to the conclusion that the [opponent] has discharged its burden of proof to provide evidence for the lack of novelty of the subject-matter of the claims in view of document D3.
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T 1162/07 – Carrying One’s Burden
K’s Law – The ebook
[3.4.3] Consequently, the [patent proprietor] carries the burden of proof for its assertion that the pigment “BABYPLAST Yellow 5GN 01” on sale on the priority date of document D3 was not a melamine coordination compound of azobarituric acid 1:1 Nickel complex. As far as apportionment of the burden of proof is concerned, it is not relevant whether the [patent proprietor] had easier access to the corresponding evidence than the [opponent]. Therefore, the argument of the [patent proprietor] according to which it was independent from the then manufacturer of “BABYPLAST Yellow 5GN 01” and was not able to provide further evidence, is not relevant. [3.4.4] As a consequence, it has to be examined whether, as pointed out by the [patent proprietor], the recipe of “BABYPLAST Yellow 5GN 01” had indeed been modified by the addition of melamine between the priority date of document D3 and the priority date of the opposed patent. The [patent proprietor] relied on documents D24 and D26 to D28. Documents D24 and D26 disclose “C.I. Pigment Yellow 150” to be a nickel complex of the formula
[…] Document D27 discloses in its example 2 the production of such a complex. However, these disclosures do not exclude that the commercial product “BABYPLAST Yellow 5GN 01” also contained additional embedded melamine. Document D28 informs on a modification of the manufacturing process of “BABYPLAST® Gelb 5GN 01” which made the product “clearly more green, brilliant and transparent”. However, this document does not disclose whether this process modification involved a change of the starting materials, let alone whether it concerned the addition of melamine to the reaction mixture. Therefore, the arguments and the evidence provided by the [patent proprietor] cannot substantiated that the “BABYPLAST® Gelb 5GN 01” product available on the priority date of document D3 did not contain melamine as clathrate (Einschlussverbindung). Consequently, one has to assume that the pigment “BABYPLAST Yellow 5GN 01” that was on sale on the priority date of document D3 also was a melamine coordination compound of azobarituric acid 1:1 Nickel complex. Therefore, the disputed question mentioned first under [3.4] above is not relevant for the present decision. However, the Board wishes to add that according to the established case law of the Boards of appeal as far as the extent of disclosure of a document that is part of the state of the art within the meaning of A 54(2) is concerned, it is the date of publication that is decisive (T 205/91 [4, last paragraph]). [3.5] As a consequence, the subject-matter of claim 1 of the main request is not novel. The Board can only consider requests as a whole and, therefore, has to reject the main request. To read the whole decision (in German), click here. The file wrapper can be found here.
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T 1027/08 – Measuring Well-being
K’s Law – The ebook
T 1027/08 – Measuring Well-being 21 Apr 2011
The present decision deals with the refusal of an application by the Examining Division (ED). Claim 1 before the Board read (my translation from the German) : Device for therapeutically influencing at least parts of a living being by means of an irradiation device for irradiating [the living being] with electromagnetic waves, consisting in a high frequency oscillator stage for generating a high frequency wave train, wherein the high frequency oscillator stage generates a frequency that can be tuned in the range from 130 MHz to 170 MHz; a low frequency oscillator stage, which generates a tuneable modulation frequency; a modulation unit, to which the high frequency oscillator stage and the low frequency oscillator stage output are fed, so that a modulated wave train is generated; and a final amplifier, to which an transmitting antenna can be connected in the emitting range of which tissue to be treated or a person can be positioned, characterised in that the frequency of the low frequency oscillator stage(4) can be tuned in a frequency range from 0.5 to 40 Hz, in that the device for influencing (1) further comprises a device for acoustic irradiation (Beschallung) (13) for simultaneously and additionally acoustically influencing [the living being], by means of which a low frequency that can be generated in a low frequency oscillator stage (4), amplified by an amplifier (16) and tuned in frequency, can be fed to an loud speaker (17) acting as an acoustic source and can be radiated as an acoustic signal to the tissue to be treated or a person (12), respectively, in that the frequency of this acoustic signal corresponds to a low frequency modulation frequency that is tuned in a frequency range from 0.5 to 40 Hz, or an integer multiple thereof, up to 3000 Hz at most, and in that the low frequency oscillator stage (4) of the irradiation device (2) is also used as low frequency stage having a downstream frequency multiplier for multiplying by an integer, for the acoustic irradiation device (13), so that the electromagnetic modulation frequency and the acoustic signal frequency are automatically coupled.
(Click to enlarge) In the following paragraphs the Board examines the presence of an inventive step: 2279 | 3398
T 1027/08 – Measuring Well-being
K’s Law – The ebook
*** Translated from the German *** [2.2.1] Starting from D1, the problem indicated in the application […] consists in the development of the known irradiation device in order to increase the therapeutic influence, and in particular the physical well-being. This problem may appear to be reasonable at first sight, but it raises the question of how the increase of the therapeutic influence can be objectively proven. The [applicant] is of the opinion that the essential advantage of the invention lies in the fact that an increased therapeutic effect is obtained with respect to irradiation according to D1 by providing an additional acoustic irradiation as claimed. This was to be explained by the synchronisation of acoustic and electromagnetic waves that simultaneously acted on a living being, which was the outcome of coupling the irradiation device and the acoustic irradiation device as claimed. The [applicant] further submitted that effects obtained with devices for therapeutically influencing could, as a matter of principle (grundsätzlich), not be measured with technical means. Therefore, it was difficult to formulate a technical problem in this domain, although the subject-matter of the claim was a technical device. In this context it was pointed out that the ED’s requirement to provide convincing evidence for the effect obtained was inappropriate (unangebracht). As a matter of fact, none of the other patent offices dealing with the present application had requested [such evidence], nor had the EPO in the proceedings that had let to the grant of a patent on the basis of D1. In the present case, the alleged effect of increasing the therapeutic influence, in particular of the physical wellbeing, with respect to D1, has not been proven or at least made credible. The explanation of the [applicant] according to which the effect was related to a “synchronisation” of the emitted radiation and acoustic waves, which synchronisation was not defined in more detail, is not convincing, because one can assume that, unless specific measures are taken, normal synchronisation obtained by means of a common low frequency stage will be lost as a consequence of phase shifts in the irradiation device and in the acoustic irradiation device. Moreover, there is no plausible hint that there is a causal relationship between the claimed subject-matter and the problem according to the application. Therefore, it cannot be excluded that a possible subjectively improved well-being is based on a sort of placebo effect. The Board is well aware of the difficulty mentioned by the [applicant] to objectively prove therapeutic effects. However, it is the applicant’s duty to prove or at least make credible the alleged effect of the claimed subjectmatter, with respect to the closest prior art, over the whole claimed domain, e.g. by providing appropriate (sachgerecht) and reproducible comparative trials which are as objective as possible. According to the case law of the Boards of appeal, alleged effects to which the applicant merely refers with respect to the closest prior art, for which there is not sufficient evidence, cannot be taken into consideration in determining the problem underlying the invention and, therefore, in assessing inventive step (Case Law of the Boards of appeal of the EPO, 6th edition, 2010, I.D.4.2). There is no reason to deviate from this case law, which is based on the understandable principle that a solution that is claimed to be non obvious can only justify the grant of a patent if it is indeed obtained (Singer/Stauder, EPÜ, 5th edition, A 56, marginal number 42). Therefore the problem exposed in the application cannot be deemed to have been solved and has to be modified (Singer/Stauder, EPÜ, 5th edition, A 56, marginal number 46). Starting from D1 as closest prior art the problem underlying the present invention is seen in extending the usability of the known irradiation device such that other forms of therapy than irradiation can be carried out. You will not be surprised to hear that, based on this alternative problem, the invention was found not to comply with the requirements of A 56. The appeal was dismissed. To
read
the
whole
decision
The file wrapper can be found here.
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(in
German),
click
here.
T 1547/08 – With A Little Help From My Friends
K’s Law – The ebook
T 1547/08 – With A Little Help From My Friends 20 Apr 2011
Although Boards have to be strictly impartial in inter partes proceedings, they may sometimes provide some help to parties in ex parte proceedings. This appears to have happened in the present case where an applicant filed an appeal against the decision of the Examining Division (ED) to refuse its application because the invention was insufficiently disclosed. Claim 1 on file before the Board read: A device (12) for regenerating the phase of an optical signal (Se) carrying an information encoded by modulating the phase of said signal, the device comprising: an optical modulation converter (14;42) for converting the signal carrying the information encoded by phase modulation into at least one secondary signal (S’1, S’2) carrying said information encoded by amplitude modulation; at least one optical amplitude regeneration module (16;44) for regenerating the amplitude of the secondary signal; and an optical modulation converter (18;14;42) for converting the regenerated secondary signal into a signal (Ss) carrying the information encoded by phase modulation. There was a telephone interview with the rapporteur of the Board (again something that is not likely in inter partes proceedings, see T 263/07), who, inter alia, drew the applicant’s attention to documents A1 and A2, which appeared to confirm its arguments in support of sufficiency of disclosure. *** Translated from the French *** [2.2] In its decision the ED, although it did not cast doubt on the fact that the technical means disclosed in the application were sufficient for carrying out the [steps of converting the signal carrying the information into a secondary signal, regenerating the amplitude of the secondary signal and concerting the regenerated secondary signal into the signal Ss] individually, considered that neither the sequence of steps mentioned nor the assembly of technical means carrying out the different steps were capable of obtaining the claimed effect, i.e. regenerating the phase of an optical signal carrying an information encoded by modulating the phase. In particular, the ED pointed out that the embodiments proposed in the description did not allow to suppress, even partially, the phase noise of the optical signal, for the following reasons: as there was noise in the original signal Se, each of both complementary intermediary signals S’1 and S’2 contain amplitude noise and also a phase noise having a spectral density corresponding to the spectral density of the original signal; the amplitude regeneration module, which was implemented e.g. as an saturable absorber, only had the role of suppressing the intermediary signal having an amplitude close to zero – thus the complementary intermediary signal having a high amplitude would be transmitted without phase modification; and therefore, the regeneration module allowed to regenerate the amplitude but this amplitude regeneration had no effect on the phase of the optical signals and the output signal Ss would still carry the phase noise of the original signal. [2.3] The applicant submitted that the device suppressed the phase noise stemming from the low levels (issu des niveaux bas) of the output signal by neutralizing the power of the intermediate signals at low levels (sur les niveaux bas) by eliminating their fluctuation amplitude close to the low levels. Having studied the questions raised by the ED and the arguments submitted by the [applicant], the Board considers that even though the doubts expressed by the ED are not unfounded on a technical level, the arguments presented by the [applicant] make it credible that the claimed effect can indeed be obtained, at least (as stated in the application […]) to a certain degree. 2281 | 3398
T 1547/08 – With A Little Help From My Friends
K’s Law – The ebook
As a matter of fact, it is undisputed that the low amplitude component of the intermediary signals issued by the first optical modulation converter is eliminated by the amplitude regeneration module. As this eliminated component itself carries phase noise stemming from the phase noise of the original signal and as the signal that is reconstructed from the high power component and issued by the second modulation converter does not contain any contribution of the eliminated component, the Board is of the opinion that one may expect that the reconstructed signal carries phase noise that is reduced with respect to the phase noise of the same signal that is reconstructed without suppressing said intermediary low amplitude component, as can be seen from the constellation diagrams of the intermediary signals on the input and the output of the regeneration module that are shown in the statement of grounds of appeal. Moreover, as pointed out by the [applicant] in its argumentation, any action of the amplitude regeneration module on the amplitude fluctuations of the high power component could only amplify or at least maintain the mentioned effect. Incidentally, this conclusion is confirmed by the documents known to the Board and brought to the attention of the [applicant], i.e. documents A1 and A2. Each of these documents discloses a device for treating a modulated signal of the DPSK (“differential phase-shift keying”) type, which is the type considered in the application […], the devices being of the same type as the claimed device and using saturable absorbers of the type used in the embodiments disclosed in the application […]. These documents show in detail that the phase nose of the signal issued by the devices is partially eliminated […]. They have been published after the filing date of the application but nevertheless constitute proof (see e.g. decision T 1264/04 [5-7]) for the [applicant’s] assertions according to which the means disclosed in the application and available at the date of filing of the application are capable of reducing or partially eliminating the phase noise of the optical signal encoded by phase modulation. Thus the device that is claimed and disclosed in the application allows to obtain the claimed effect of regenerating, at least to some extent, the phase of an optical signal carrying information encoded by modulating the phase of the signal. [2.4] On the basis of what has been said, the Board comes to the conclusion that the reasons given by the ED for refusing the application are not convincing and that the application discloses the claimed invention in a manner sufficiently clear and complete for it to be carried out on the filing date by a person skilled in the art, as required by A 83. Should you wish to read the whole decision (in French), please click here. The file wrapper can be found here.
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T 2225/09 – Classy Stuff
K’s Law – The ebook
T 2225/09 – Classy Stuff 19 Apr 2011
This decision deals with the refusal of an application by the Examining Division (ED). Claim 1 as filed read (my translation from the German) : Separation device for cleaning a gas flow, in particular for cleaning crank case gases, comprising a mother cyclone (10) and a daughter cyclone (13),
wherein the mother cyclone (10) has an inlet for the gas to be cleaned, a segregation chamber (12) and an outlet (23), wherein the daughter cyclone (13) is provided in the segregation chamber (12) of the mother cyclone (10), wherein the daughter cyclone has an inlet opening (15) which communicates with the segregation chamber (12) of the mother cyclone (10), and wherein the daughter cyclone (13) has a separating chamber (14), an outlet opening (16) for the cleaned gas and a discharge opening (17),characterised in that at least three daughter cyclones (13) are provided in the segregation chamber (12) of the mother cyclone (10), wherein the daughter cyclones (13) are connected in parallel and all daughter cyclones can be streamed at the same time, and wherein the outlet openings (16) run into a common outlet (26).
Claim 1 of the main request before the Board read : Crank-case gas cleaning segregation device for cleaning a gas flow, comprising a mother cyclone (10) and a daughter cyclone (13),
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T 2225/09 – Classy Stuff
K’s Law – The ebook
wherein the mother cyclone (10) has an inlet for the gas to be cleaned, a segregation chamber (12) and an outlet (23), wherein the daughter cyclone (13) is provided in the segregation chamber (12) of the mother cyclone (10), wherein the daughter cyclone has an inlet opening (15) which communicates with the segregation chamber (12) of the mother cyclone (10), and wherein the daughter cyclone (13) has a separating chamber (14), an outlet opening (16) for the cleaned gas and a discharge opening (17), characterised in that at least three daughter cyclones (13) are provided in the segregation chamber (12) of the mother cyclone (10), wherein the daughter cyclones (13) are connected in parallel and all daughter cyclones can be streamed at the same time, and wherein the outlet openings (16) run into a common outlet (26).
The applicant pointed out that claim 1 differed from the segregation device known from document D1 by (a) the mother cyclone with its features according to claim 1, and (b) the designation of the claimed device as a “crank-case cleaning segregation device”. The Board does not agree: *** Translated from the German *** [1.1] As the [applicant] has not contested that the remaining features of the subject-matter of claim 1 are known from D1, the assessment of novelty depends on whether the skilled person can find the features (a) and (b), which the [applicant] considers to be distinguishing, in D1. The Board then shows that D1 discloses a mother cyclone as claimed and continues: [1.3] As far as feature (b) is concerned: [1.3.1] As has been shown in paragraphs [1.1] and [1.2], all remaining structural and functional features of claim 1 are known from D1. It remains to be decided whether the sole designation of the subject-matter of claim 1 as “crank-case gas cleaning segregation device for cleaning a gas flow” […] defines subject-matter that is different from the segregation device known from D1. [1.3.2] The [applicant] argued that as the segregation device claimed in claim 1 was directed to the cleaning of gases […] generated in a crank case, claim 1 concerned a device which was exclusively suitable for segregating liquids from gases and, therefore, could not be anticipated by the device from D1 which concerned the segregation of solid particles. The Board cannot endorse this argument, for the following reasons: [1.3.3] The application itself […] indicates that the device according to the invention can be used for cleaning any fluid comprising components of different specific weight. For instance, it is possible to segregate liquids of particles from gases, such as mixtures of air and water, mixtures of air and dust in the intake air of combustion engines or mixtures of air and oil from crank cases of a combustion engine. This means that the device defined in the claims as filed was structurally suitable for use in both fields of application. Claim 1 under consideration does not add any further structural features which would make the device suitable for segregating liquids from gases only. The [applicant] has not provided evidence for its assertion that the purpose of use given in claim 1 implicitly meant that the device was of small dimension or made from plastic. As far as the dimensions are concerned, the claim can cover not only crank cases for automotive engines but also relatively big combustion engines such as ship engines (it being noted that the application under consideration does not contain any indications of dimension for the device). The material from which the segregation device is made is not relevant because it is not even mentioned in claim 1. Therefore, the indication of the field of application does not include any further technical features which could distinguish [the claimed device] from the device according to D1.
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T 2225/09 – Classy Stuff
K’s Law – The ebook
[1.3.4] The question that remains to be answered is whether the device according to D1 is not suitable for the purpose given in claim 1, or if it would have to be modified in order to fulfil this purpose, respectively (see “Case Law of the Boards of appeal, 6th edition, 2010, chapter I.C.5.3.3). D1 discloses a segregation device made of steel that is suitable for segregating solid particles from hot gases having temperatures of between 600° and 800°C […]. As the segregation device known from D1 has all the structural and functional features of the device of claim 1 […], it also has to be suitable of segregating liquids such as oil particles from crank case gases, in accordance with the indications given in the application […]. D1 does not contain any hint that the device disclosed therein would not be suitable for segregating liquids from gases (e.g. at lower temperatures). Also the dimension of the device according to D1 is not decisive for a possible use for crank case gases because, as mentioned above, claim 1 does not contain any indication concerning the dimensions. [1.3.5] The [applicant] has also submitted that the fact that oil removal from a hot gas flow in crank cases was mentioned as indication of purpose in the IPC classification of class F01M 13/04, i.e. as “having means for purifying air before leaving crankcase, e.g. removing oil” was additional proof for the fact that the new definition of the subject-matter of claim 1 as “crank-case gas cleaning segregation device for cleaning a gas flow” […] defined subject-matter different from the device known from D1, which was suitable for the segregation of solid particles from a hot flow of air in Fluid Catalytic Cracking processes. However, this argument could only be successful if this class was the sole class applicable. As a matter of fact, both the present application and D1, when they were classified according to the IPC by the EPO, have been classified in groups B04 5/26 (multiple arrangement of cyclones for series flow) and B04C 5/28 (multiple arrangement of cyclones for parallel flow). Thus both concern devices that are similar from a technical point of view, i.e. segregation devices for cleaning gases, irrespective of what (solid or liquid particles) is segregated from which gas. This is also corroborated by the second paragraph on page 2 of the application […] according to which the device according to the invention is suitable for segregating both liquids and solid particles from gases generated in any type of device. Incidentally, it is noted that the German application (DE 102004006834 A1) the priority of which is claimed by the present application has been classified also in the higher-ranking class B04C 5/24 by the DPMA. Board of appeal decision T 542/00, which the [applicant] has cited in this context, concerns the consideration of the purpose given in the claim when the closest prior art is to be determined in the assessment of inventive step and, therefore, does not find application when the novelty of the subject-matter of claim 1 under consideration is to be assessed. Decision T 312/94, also cited by [the applicant], is not relevant either because in the present case the Board has indeed construed document D1 in the context of the contents of the document as a whole, as required by this decision. [1.4] It follows from all this that the subject-matter of claim is anticipated by the segregation device known from D1. Therefore, the requirements of A 54 are not fulfilled. To
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(in
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T 2213/08 – Unlimited?
K’s Law – The ebook
T 2213/08 – Unlimited? 18 Apr 2011
Claims 1 and 23 of auxiliary request 4 before the Board read: 1. A manufacturing method of water-absorbent agent powders from water-absorbent resin powders having a carboxyl group in which surface regions are crosslinked by a crosslinking agent having an epoxy group, a residue of the crosslinking agent being present in the water absorbent resin powders, characterized in that the water-absorbent resin powders have a water content of <10% by weight and in that the water-absorbent resin powders are postprocessed by adding water as a nucleophilic reagent to the heated water-absorbent resin powders in powder form, wherein the nucleophilic reagent is used in an amount of from 1 to 30 parts by weight based on 100 parts by weight of the water-absorbent resin powders."
23. Water-absorbent agent powders, characterized by comprising at least partially porous water-absorbent resin powders having a carboxyl group, wherein said water-absorbent agent powders are crosslinked by a crosslinking agent having an epoxy group, an amount of a residue of the crosslinking agent is not more than 2 ppm, and an absorbency under load of 50 g/cm**(2) with respect to a physiologic saline solution is not less than 25 g/g, and wherein said water-absorbent agent powders are obtainable by a manufacturing method as said [sic] forth in any of the preceding claims. In what follows the Board deals with the sufficiency of disclosure of this request: [6.1] The objection raised by [the opponent] concerning sufficiency of the Auxiliary Request 4 relates to the use of the wording “not less than 25 g/g” when defining the absorbency under load of the water-absorbent agent powders of Claim 23. In its opinion this open-ended range was unduly broad so that it would embrace values of absorbency under load such as 50 g/g, which are not known. The patent specification did not disclose how these values could be obtained and therefore did not enable the full scope of the invention to be carried out. In this context, [the opponent] referred to decision T 1008/02, wherein it is stated that a single value cannot be considered to provide sufficient support for a claim to a range of absorbency under load having no upper limit. [6.2] This objection of [the opponent] is based on an erroneous interpretation of the subject-matter covered by the claims. It is clear for a skilled reader that a claim such as present Claim 23 including an open-ended range is limited in practice. In fact, values of the parameter not obtainable in practice would not be regarded by the skilled reader as being covered by the claim and thus could not justify an objection of insufficiency of disclosure (see Case Law of the Boards of Appeal of the EPO, 6th edition 2010, Section II.A. 6.1; see also T 1018/05 [2.3] and T 297/90 [2.2], both cited therein). [6.3] In the present case the patent specification includes a detailed description of the claimed method and specific examples resulting in water-absorbent powders having the desired properties, including values of absorbency under load up to 26 g/g. Moreover Appellant 01 has amended the claim by incorporating the feature “obtainable by a manufacturing method as said [sic] forth in any of the preceding claims”. The skilled reader would immediately understand the practical implication of this limitation, namely that the method of producing the water-absorbent agent powders sets the actual limits of the absorption under load. [6.4] [The opponent] neither questioned the examples in the patent in suit nor submitted experimental evidence showing that the invention could not be performed. Consequently, the board is satisfied that the requirement of sufficiency of disclosure is met. [6.5] In reaching this conclusion the board also considered decision T 1008/02 cited by [the opponent]. In that decision the board concluded that the auxiliary request under consideration did not fulfil the requirements of sufficiency because none of the examples showed the claimed properties, in particular an absorbency under load of “at least 27 ml/g”, and no evidence had been produced that super-absorbent having the required properties were available to the skilled person (see points [3.3] and [3.4] of the reasons). Thus, the situation in that case
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T 2213/08 – Unlimited?
K’s Law – The ebook
differs from the present one where the patent provides four examples with values of absorbency of not less than 25 g/g. Insofar as [the opponent] relied on the “obiter dictum” in the last paragraph of point [3.5] of T 1008/02 “However, this single value cannot be considered to provide sufficient support for a claim to a range for the AUL value starting at 24 ml/g, but having no upper limit.”, it is pointed out that also such a situation is different from the present case, where the claim is drafted in the form of a product-by-process and the specification includes two examples fulfilling the requirements of the claim. As set out above, the method of producing the water-absorbent agent powder implies the practical limits of the parameter having no upper limit. It is also noted that sufficiency of disclosure was not the reason for the rejection of the request discussed in T 1008/02 [3.5]. Should you wish to download the whole decision, just click here. The file wrapper can be found here.
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T 2348/08 – Copyright and Secrecy
K’s Law – The ebook
T 2348/08 – Copyright and Secrecy 16 Apr 2011
The prohibition of reproducing a document can it prevent the document from being considered available to the public? *** Translated from the German *** [4.1] The [patent proprietor] asserted that document E6b had not been made available to the public. E6b consists in operating instructions for a Laser sintering machine of the EOSINT M 250 Xtended type. On page 2 of the operating instructions the edition is indicated as 08.99 together with © 2000. In addition, in response to the sales agreement with Nolato Mobile […], the [opponent] has sent a letter on June 13, 2000, wherein the operating instructions in English (E6b) are referred to as annex. Therefore, it is credible that the operating instructions have been made available to the public before the filing date of the opposed patent (November 7, 2002). [4.2] The [patent proprietor] further explained that, as a consequence of the legal notice on page 1.2 of E6b, the operating instructions were not to be disclosed and, therefore, had not been made accessible to the public. The first paragraph of page 1.2 of E6b reads: “The operating instructions must not be electronically or mechanically reproduced … without the express written approval of EOS GmbH Electro Optical Systems”. The Board follows the opinion of the [opponent] and holds that this paragraph is a usual copyright statement. It does not imply a secrecy agreement, so that the whole content E6b is not to be considered confidential. I wonder whether oral transmission is covered by the prohibition of mechancical reproduction. ;-) To read the whole decision (in German), click here. The file wrapper can be found here.
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T 385/09 – Cool Cows
K’s Law – The ebook
T 385/09 – Cool Cows 15 Apr 2011
This decision deals with the revocation of the opposed patent by the Opposition Division (OD). Claim 1 as filed read A method of cooling animals, such as cows, whereby a liquid is applied between the hairs and/or on the skin of the animal, whereupon air is blown over the liquid. Claim 1 as granted read: A method of cooling animals, such as cows, whereby a liquid is applied between the hairs and/or on the skin of the animal, and wherein air is blown over the liquid, characterized in that, after applying the liquid air is blown over the liquid. Claim 1 before the Board read: A non-therapeutic method of cooling animals, such as cows, whereby a liquid is applied between the hairs and/or on the skin of the animal, and wherein air is blown over the liquid, and after applying the liquid air is blown over the liquid characterized in that the animals are cooled in a milking stall, in which milking stall a milking robot is disposed, so that the animals go to the milking stall spontaneously. The Board delves into the questions of whether this claim contravenes A 53, whether the undisclosed disclaimer “non therapeutic” is allowable and whether the invention is sufficiently disclosed. Allowability of the disclaimer [2] The addition of the disclaimer “non-therapeutic” has not been objected to per se by the [opponent], even though the wording was not disclosed in the application as filed, nor was the difference between a therapeutic and non-therapeutic application of the method explicitly explained in any other manner. However, the Board is satisfied that the application does contain teaching of a method which may possibly be regarded as therapeutic (cooling of cows in a heat stress), but also teaching of a method which is clearly not therapeutic, neither in view of its main purpose, nor because of any unavoidable side effect (cooling of healthy cows for luring them to the milking stall, see below). The patent was revoked in the first instance for contravening A 53(c). Thus the disclaimer was also necessary for disclaiming subject-matter being excluded from patentability. Following decisions G 1/03 and G 2/03 [headnote II.1], such disclaimers are allowed even when not disclosed. The Board is also satisfied that the disclaimer is appropriately formulated, has no bearing on novelty or inventive step, and is sufficiently clear and concise (G 1/03 and G 2/03 [headnote II.2-4]) Exceptions to patentability under A 53 [3.1] According to A 53 “European patents shall not be granted in respect of: (a) inventions the commercial exploitation of which would be contrary to “ordre public” or “morality” … (b) … (c) methods for treatment of the … animal body by … therapy … practised on the … animal body…” [3.2] The [opponent] contended that if the method were non-therapeutic, it would result in cooling an animal which is in a normal state so that its temperature would fall below an abnormal level. This however would cause suffering to the animal and therefore be contrary to morality according to A 53 a). This cannot be followed. According to claim 1 the method should have the effect that “the animals go to the milking stall spontaneously”. An animal would only behave so in expectation of a reward, i.e. if the animal is 2289 | 3398
T 385/09 – Cool Cows
K’s Law – The ebook
subjected to a treatment which is perceived as pleasant. Hence the skilled person would clearly exclude from the scope of the claimed method the possibility of reducing the animal's body temperature to such a degree that it would cause suffering to the animal. [3.3] With reference to the case law on the meaning of “therapy” it is understood that therapy is concerned with bringing a body from a pathological state back into its normal healthy state or preventing a pathological state (see decision T 774/89 [2.3.4]). As pointed out in decision T 329/94 [headnote] when a method step has to be assessed with regard to the exclusion of subject-matter from patenting under A 53(c) the most important point is the purpose and inevitable effect of the step at issue. [3.4] In the present case the method is aimed at cooling animals subjected to heat […]. It is understood that this means heat caused by common and natural circumstances (typically weather conditions) so it is also understood that such temperature ranges, even if being defined as “heat” in the patent, will in most cases not cause any particular harm to the animals. Further, the animals to be cooled by the claimed method are animals such as cows; such animals are able to regulate their body temperature in response to the ambient temperature. When temperature raises, an animal such as a cow may feel “hot”. However, this by itself does not mean that the animal is in a pathological state and therefore a moderate cooling of this animal does not result in preventing a pathological state either, since such an animal is still able to regulate its body temperature naturally within certain limits. As the [patent proprietor] has pointed out, the maximal temperature to which an animal can be exposed in its cowshed is fixed by various regulations in many states. But even apart from that, the skilled person would know that unbearable temperatures should never be allowed. Consequently, cooling this animal does not cure, alleviate, remove or lessen the symptoms of any disorder or malfunction of the animal's body, nor does cooling prevent or reduce the possibility of contracting any disorder or malfunction, since no such disorder or malfunction would normally occur if the animal would not be cooled. As stated in decision T 774/89 a therapeutic treatment starts from (an existing or likely imminent) pathological state, whereas a non-therapeutic treatment starts from (and of course ends in) a normal, healthy state. The Board finds that there is ample room for carrying out the invention on cows that are neither in a pathological state nor are likely to develop one. [3.5] In other words, in the present case the claimed method (since non-therapeutic) must be construed as being directed at a treatment of animals which are in a normal, healthy state, even if feeling hot. Accordingly, the claimed method is not a method for treatment of the animal body by therapy but a method for providing a pleasant sensation to a healthy animal so that it enjoys going to the milking stall in order to experience this pleasant feeling again. [3.6] The [opponent] argued that discomfort is a sign of a pathological state irrespective of the origin of discomfort and that therefore its relief is always to be considered as a therapy. This cannot be accepted either. For example, an animal can feel discomfort because it is hungry. If the [opponent] were right in stating that providing relief is to be considered as a therapy, then feeding this animal would be a therapy too. This approach would thus encompass even the most natural and common everyday activities as therapeutic methods. The absurdity of this interpretation is evident. Accordingly the Board finds that providing relief from discomfort is not necessarily a therapy. Objection under A 100 b) [4] As a preliminary remark, the Board notes that this ground of opposition was not decided on in the decision under appeal. In spite of that, the Board finds it expedient to treat this issue, irrespective of the remittal for novelty and inventive step […]. In the present case this appears sensible, given that the argumentation of the [opponent] with respect to A 53(c) was in close relationship with its arguments on A 100(b). [4.1] The [opponent] argued that it is not clear why a non-therapeutic method of cooling of animals (i.e. which does not provide any relief) should entice these animals to go to a milking stall spontaneously. As already explained, the aim of the claimed method is to provide an animal (even if the animal is not ill) a pleasant feeling. 2290 | 3398
T 385/09 – Cool Cows
K’s Law – The ebook
Accordingly, the Board finds it plausible that a healthy animal can be enticed to go to the milking stall in expectation of a pleasant sensation, and that this pleasant sensation may be provided, depending on the circumstances, by a cooling liquid applied to the skin. [4.2] The [opponent] further argued that the patent specification does not indicate any temperature range, so that it would amount to an undue burden for the skilled person to find out the adequate temperature for carrying out the claimed method. However, it is clear for the skilled person that the animal should not be cooled to a degree which would render the treatment unpleasant. Thus, the temperature range within which cooling can be carried out is narrow. Accordingly, it is not an undue burden for the skilled person to determine by trial and error the adequate temperature within a narrow range. The Board adds that within the framework of a cowshed with a milking stall, in the absence of any further pointer in the patent, the skilled person would simply use tap water, or at least start to experiment with tap water, which typically has a temperature of 10-15 ºC. [4.3] It has also been argued that because the claimed method is “non-therapeutic” which means that it solely concerns healthy animals, A 100(b) (A 83) is only fulfilled if the skilled person is able to distinguish the therapeutic application of the cooling method from the non-therapeutic one, and information to this effect is not given in the patent […]. Formulated differently, the skilled person is not given any teaching to carry out the method in a manner that would safely keep him within (or out of) the non-therapeutic application, i.e. within the scope of the claims. This means, according to the [opponent], that the skilled person can not carry out the invention as required by A 100(b). [4.4] The Board notes that it would not be very equitable towards patentees to allow a non-disclosed disclaimer on the one hand and then to require a specific disclosure, i.e. technical teaching how the invention should be carried out right up to, but not entering the scope of the disclaimed subject-matter. This approach would in practice only allow disclosed disclaimers. In fact, this issue is irrelevant for compliance with A 100(b). This article mirrors A 83, which is only concerned with the question whether the teaching is sufficient to carry out the invention (over its whole scope at least, but unproblematic if beyond). However, A 100(b) is not concerned with the question whether the exact limits of the scope of protection ought to be or can be determined from a legal point of view. The first question is directed at the skilled person, the second at the patent lawyer. At most, this latter may be a question of clarity of the claims (A 84). That said, the Board holds that the skilled person can be expected to distinguish between healthy and ill animals. Further, a diligent farmer is supposed to be cautious when treating ill animals, so it is likely that he would apply any unusual method on ill animals only very carefully, probably only after having consulted a veterinarian. The patent itself teaches that the application of the method should be made dependent on the health condition of the animal […]. This by itself should be sufficient for the skilled person to keep the therapeutic and non-therapeutic applications apart. Concerning the technical realisation of the cooling, this can be done irrespectively of whether the animal is in a normal state or not. In other words, although the method is not intended for ill animals, there is no technical hindrance which would preclude from carrying it out if the animal were ill. The Board then remitted the case to the OD for further prosecution. To read the whole decision, click here. The file wrapper can be found here. NB: This decision has also been discussed on Le blog du droit européen des brevets.
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T 783/09 – Deletion vs. Selection
K’s Law – The ebook
T 783/09 – Deletion vs. Selection 14 Apr 2011
The question of whether combinations of elements taken from several lists are directly and unambiguously disclosed as such in an application, so that each combination may be isolated and claimed as such, is one of the questions where there is – as far as I can see – no clear consensus between the Boards. The present decision offers an interesting and somewhat unusual approach. [2] A 123(2) stipulates that the European patent may not be amended in such a way that it contains subjectmatter which extends beyond the content of the application as filed. [3] In accordance with established jurisprudence the relevant question to be decided in assessing whether or not an amendment adds subject-matter extending beyond the content of the application as filed is whether the skilled person would derive the proposed amendment directly and unambiguously from the application as filed. [4] Amended claim 1 relates to a combination comprising (S)-1-[(3-hydroxy-1-adamantyl)acetyl-2-cyanopyrrolidine (also denoted as “LAF237”), in free form or in acid addition salt form, and at least one further compound selected from the group of pioglitazone, rosiglitazone or troglitazone or the pharmaceutically acceptable salt of such a compound. [5] A first issue in the present case is whether or not the skilled person would derive directly and unambiguously each of the three “basic” combinations to which claim 1 pertains, i.e. LAF237 combined with either of pioglitazone, rosiglitazone or troglitazone from the application as filed. [5.1] As to the relevant content in the application as filed, there is a general disclosure of the invention - it relates to a combination of a DPP-IV inhibitor with at least one further antidiabetic compound […]. This is succeeded by the description of numerous groups, subgroups and individual compounds of DPP-IV inhibitors […] and the description of numerous groups, subgroups and individual compounds of further antidiabetic compounds […]. [5.2] The subsequent fifth paragraph on page 21 reads: “In a very preferred embodiment of the invention, the DPP-IV inhibitor is selected from (S)1[(3-hydroxy-1-adamantyl) amino] acetyl-2-cyano-pyrrolidine (note by the board: also denoted as “LAF237”) and (S)-1- {2-[5-cyanopyridin-2-yl) amino] ethyl-aminoacetyl}-2-cyanopyrrolidine (note by the board: also denoted as “DPP728”), and the further antidiabetic compound is selected from the group consisting of nateglinide, repaglinide, metformin, rosiglitazone, pioglitazone, troglitazone, glisoxepid, glyburide, glibenclamide, acetohexamide, chloropropamide, glibornuride, tolbutamide, tolazamide, glipizide, carbutamide, gliquidone, glyhexamide, phenbutamide, tolcyclamide, glimepiride and gliclazide, or the pharmaceutically acceptable salt of such a compound.” [5.3] Thus, the fifth paragraph on page 21 indicates two individual DPP-IV inhibitors, among them the one according to claim 1, namely LAF237, and twenty-two individual anti-diabetic compounds, among them the three according to claim 1, namely pioglitazone, rosiglitazone and troglitazone. [5.4] The skilled person would derive from this paragraph that “very preferred” combinations of the invention are (i) those having the compound “LAF237” as DPP-IV inhibitor in combination with any one of the disclosed twenty-two compounds as the further antidiabetic compound and (ii) those having the compound “DPP728” as DPP-IV inhibitor in combination with any one of the disclosed twenty-two compounds as the further antidiabetic compound. Thus, the skilled person would directly and unambiguously recognize forty-four individual combinations, among them the three “basic” combinations referred to in claim 1. [5.5] Since it was stated in decision T 12/81 [13] that if 2292 | 3398
T 783/09 – Deletion vs. Selection
K’s Law – The ebook
“two classes of starting substances are required to prepare end products and examples of individual entities in each class are given in two lists of some length, then a substance resulting from the reaction of a specific pair from the two lists can nevertheless be regarded for patent purposes as a selection and hence as new”, the boards have denied in many cases a direct and unambiguous disclosure for an individualised subject-matter that was only derivable from a document by combining elements from lists. [5.6] However, given the term “can” in the citation from decision T 12/81, the absence of a direct and unambiguous disclosure for individualised subject-matter is not a mandatory consequence of its presentation as elements of lists. Thus, the “disclosure status” of subject-matter individualised from lists has to be determined according to the circumstances of each specific case by ultimately answering the question whether or not the skilled person would clearly and unambiguously derive the subject-matter at issue from the document as a whole […]. [5.7] As noted above […], in the present case this evaluation results in the finding that all combinations resulting from the combination of the elements of the two lists according to the passage on page 21 are directly and unambiguously disclosed in that passage. [5.8] The further alternative features of the combinations according to claim 1, i.e. that LAF237 is in free or in acid addition salt form and that the further antidiabetic compound is in the form of a pharmaceutically acceptable salt, are derivable from claim 6 and the fifth paragraph on page 21, respectively. [5.9] Thus, each of the combinations according to claim 1 is disclosed in an individualised manner in the application as filed and therefore there is no breach of A 123(2) in this respect. [6] A further issue in the present case is whether or not the claiming of only three of the forty-four combinations disclosed en bloc in the passage on page 21 extends the content of the application as filed in an unallowable way […]. [6.1] The above-cited passage from page 21 of the application as filed advertises the forty-four combinations as “very preferred embodiments”. By this statement the skilled person is taught that each of the forty-four combinations has the same quality, i.e. they are all very preferred combinations in the context of the invention. Nothing else is derivable from the remainder of the application, i.e. a particular quality, for example a particular technical effect, is neither attributed to the three combinations of claim 1 nor to the remaining forty-one. [6.2] Hence, the group of combinations in claim 1 cannot be considered as the result of a selection of three qualitatively equal elements from a list of forty-four qualitatively non-equal elements - for which selection there would be no hint in the application as filed and the claiming of which group therefore would have to be considered as adding matter. Rather the group of claim 1 is to be considered as the result of the deletion of fortyone elements from a list of forty-four qualitatively equal elements. [6.3] In the board’s judgement, under these circumstances, claim 1 is not directed to subject-matter extending beyond the content of the application as filed. [6.4] The present board’s view is supported by case law, for example decision T 10/97 [2]: “It is true that not all the compounds listed in original claim 46 and Table 1 have been included in amended claim 1. However, [...] the claimed group of compounds is not obtained by restricting an originally disclosed generic definition of a substituent in a generic formula to a specific one selected from worked examples, but by deleting some members from a list of individualised equally useful compounds in order to improve the chances of patentability over the available prior art. In the Board’s view, such deletions must be considered admissible in accordance with the case law of the boards of appeal (see decision T 393/91 [2.2]). For the remaining compounds, a particular technical effect has neither been disclosed nor alleged.” [6.5] The board concludes that the claiming of only three of the forty-four combinations disclosed en bloc in the passage on page 21 does not extend the content of the application as filed in an unallowable way. [7] Hence, in summary, the subject-matter of claim 1 complies with the requirements of A 123(2). This outcome might upset A 123(2) hardliners. Others might approve the outcome but find the selection vs. deletion reasoning a little bit strained. What do you think? 2293 | 3398
T 783/09 – Deletion vs. Selection
K’s Law – The ebook
To read the whole decision, click here. The file wrapper can be found here. NB: This decision has also been discussed on Le blog du droit européen des brevets.
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T 689/05 – Muskets For Butterflies
K’s Law – The ebook
T 689/05 – Muskets For Butterflies 13 Apr 2011
In the present case an applicant requested that oral proceedings (OPs) before the Examining Division (ED) be held in Munich instead of in The Hague or that the EPO should bear the additional costs incurred to the OPs taking place in The Hague. The applicant also refused that the OPs be held as a video-conference. In its appeal against the decision of the ED refusing not only this request but also the grant of a patent, the applicant resorted to drastic arguments including that the principles of human rights had been violated and that the Diplomatic Conference did not have the power to amend the EPC. [3] Article 11 of the Rules of Procedure of the Boards of Appeal of the EPO (RPBA) […] stipulates that a board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first-instance proceedings, unless special reasons present themselves for doing otherwise. [4] The appellant argues that the decision was not reasoned regarding the requests to transfer the OPs to Munich and to refund (hereinafter “reimburse” because the travel costs were actually not paid to the EPO) the travel costs to The Hague and that this lack of reasoning amounted to a fundamental procedural violation which justified setting aside the impugned decision and remitting the case to the department of first instance. [4.1] Firstly the board has to establish whether or not the reasoning of the impugned decision complies with the relevant provisions of the EPC 1973, in force at the date of the decision. R 68(2), first sentence, EPC 1973 provides that decisions of the EPO open to appeal shall be reasoned. According to the established jurisprudence of the Boards of Appeal, to satisfy the requirement of R 68(2) EPC 1973 a decision must contain, in logical sequence, those arguments which justify its order. The conclusions drawn by the deciding body from the facts and evidence must be made clear. Therefore all the facts, evidence and arguments which are essential to the decision must be discussed in detail in the decision, including all the decisive considerations in respect of the factual and legal aspects of the case. The purpose of the requirement to reason the decision is to enable the parties and, in the case of an appeal, also the board of appeal to examine whether the decision could be considered to be justified or not (see e.g. T 278/00). The board agrees with the appellant that the impugned decision is not reasoned with regard to the refusal of the applicant’s requests to transfer the OPs to Munich and reimburse the travel costs to The Hague, as announced by the chairman of the ED at the OPs (see point VI supra). To that extent, the decision does indeed not comply with 2295 | 3398
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R 68(2), first sentence, EPC 1973. In the board’s view, this (partial) lack of reasoning amounts to a procedural violation. [4.2] However, the board is not convinced that, in the present case, this procedural violation constitutes a fundamental deficiency in the first-instance proceedings within the meaning of Article 11 RPBA justifying setting aside the decision under appeal and remitting the case to the ED. In the board’s view a fundamental deficiency is not caused by all procedural violations but rather by a substantial procedural violation. A “substantial procedural violation” is an objective deficiency affecting the entire proceedings (J 7/83). In the present case, however, the above established procedural violation does not affect the entire proceedings before the ED for the reasons that follow. [4.3] The subject and the main issue of the present appeal is the ED’s decision to refuse the present application. It is undisputed that the decision under appeal contains reasoning which complies with R 68(2), first sentence, EPC 1973 as far as the grounds for refusal of the application are concerned, namely that, in the view of the ED, the subject-matter of claim 1 according to the main request then on file did not involve an inventive step, contrary to A 56 EPC 1973, and that the subject-matter of claim 1 according to the auxiliary request then on file did not meet the requirement of sufficiency of disclosure under A 83 EPC 1973. The impugned decision undisputedly contains, in logical sequence, those facts and arguments which justify its order. The course of the appeal proceedings also shows that the reasons of the impugned decision enabled the appellant as well as the board to examine whether the refusal of the application could be considered to be justified or not. In the statement of grounds of appeal the appellant discussed the reasons and arguments indicated in the first instance decision for lack of inventive step of the subject-matter of the main request then on file. The appellant argued in detail as to why the decision on this main request was wrong and put forward arguments in support of inventive step. The appellant also dealt with the reasons of the impugned decision for rejecting the auxiliary request under A 83 EPC 1973 and argued as to why the ED’s conclusion was wrong. The board, too, was in a position to examine the first instance decision to refuse the application on the basis of the reasons given for lack of inventive step and insufficient disclosure, as can be seen from the provisional opinion given in the communication annexed to the summons to OPs. Also at the beginning of the OPs, the board and the appellant discussed in detail the patentability of the subject-matter of the claims according to the main and auxiliary requests, this being the main issue of the present appeal. This discussion raised no doubts as to the sufficient reasoning of the impugned decision as far as the refusal of the application was concerned. Up to and also during this discussion the appellant never submitted that the case required immediate remittal to the first instance because of the alleged procedural violation (insufficient reasoning). To the contrary, the appellant had requested a decision by the board to grant a patent on the basis of the claims according to the main request or the first or second auxiliary request. It was only after the information on the board’s negative opinion regarding the allowability of any of these requests and the discussion on the reimbursement of the appeal fee and travel costs that the appellant requested that the decision be set aside and that the case be remitted to the first instance department because of the insufficient reasoning of the impugned decision. [4.4] From the foregoing it can be concluded that, since the reasons of the impugned decision for refusing the present application comply with R 68(2), first sentence EPC, 1973, the board and the appellant were in a position to examine and discuss the reasons for the decision to refuse the application of the ED and that the missing part of the reasoning of the impugned decision had no influence on that discussion. Hence the first instance proceedings are not deficient as far as the reasons of the decision to refuse the present application are concerned. Consequently, the procedural violation as established above (see point [4.1]) did not affect the entire proceedings and can thus not amount to a fundamental deficiency within the meaning of Article 11 RPBA. Hence it would not be justified to set aside the impugned decision and to remit the case to the first instance department under Article 11 RPBA and A 111(1) EPC 1973 for that reason alone. [4.5] The procedural violation as established above […] concerns the ED’s decision not to transfer the OPs to Munich and not to pay the travel costs to The Hague. The board considers both issues rather to be a subsidiary matter in the present case. Moreover the board was in a position to take a decision on the main issue of the present appeal at the OPs. Therefore the board is also of the view that it would have been disproportionate to set aside the entire impugned decision and to remit the case to the ED pursuant to Article 11 RPBA because of the partial lack of reasoning of the decision under appeal.
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[5] The appellant alleged a further procedural violation in the statement of grounds of appeal. It submitted that there was no legal basis for holding OPs according to A 116 EPC 1973 at any other place than Munich and that, therefore, conducting OPs in The Hague amounted to a procedural violation. [5.1] The right to OPs pursuant to A 116 EPC 1973 is a codified part of the procedural right to be heard under A 113(1) EPC 1973. This right to be heard at OPs also includes the right of a party to present its arguments at the correct place according to the EPC provisions (see also T 1012/03 [25]). Hence, in the present case, the appellant’s right to be heard pursuant to A 113(1) EPC 1973 would have been violated if the summons to OPs in The Hague were contrary to the relevant provisions of the EPC applicable at the date of the OPs. Such a violation would then have been a fundamental deficiency within the meaning of Article 11 RPBA even if the appellant had accepted that OPs were held as a video conference. [5.2] In the present case OPs before the ED took place on 13 February 2004 in The Hague and thus after the Diplomatic Conference in November 2000 and before the revised EPC entered into force on 13 December 2007. Hence the facts of the present case are comparable to those of case T 1012/03, in which OPs before the ED took place on 3 June 2003 in The Hague. [5.3] The present board concurs with the view taken in decision T 1012/03. In that decision it was held that the justification for conducting OPs before an ED in The Hague after the Diplomatic Conference in November 2000 and before the revised EPC entered into force on 13 December 2007 could be deduced from A 116 EPC 1973 in conjunction with A 10(1),(2)(a),(b) EPC 1973 since Articles 16 and 17 EPC were provisionally applicable as from 29 November 2000 pursuant to Article 6 of the Revision Act and clearly indicated that the Convention no longer restricted the competence of the President of the EPO to decide which transactions of the EPO departments should be carried out in Munich and which in The Hague (see [22-59]). [5.4] Although the present board referred to decision T 1012/03 in the communication annexed to the summons to OPs, the appellant maintained the objection that holding OPs in The Hague at the relevant time violated procedural rights of the appellant because A 16 to A 18 EPC were not provisionally applicable in the present case. [5.5] Turning now to the appellant’s arguments in support of the point of view that the provisions of A 16 to A 18 EPC were not provisionally applicable in the present case, the board takes the following view. [5.6] The appellant argues that the Diplomatic Conference did not have the power to amend the EPC and, consequently, also not the power to declare an amendment to be provisionally applicable. The board, however, is of the opinion that this argument must fail since A 172(1) EPC 1973 clearly stipulates that the EPC 1973 “may be revised by a Conference of the Contracting States”. On this legal basis a Diplomatic Conference of the EPC Contracting States met in Munich from 20 to 29 November 2000 and amended the EPC 1973. The Revision Act was unanimously adopted by the Conference on 29 November 2000 and has been signed by 17 Contracting States by 1 September 2001 (the end of the period for signature in accordance with Article 4(1) of the Revision Act). That this Revision Act was subject to ratification concerned its entry into force according to A 172(3) EPC 1973 and Article 4(2) of the Revision Act and not the competence of the Diplomatic Conference to revise the texts of the EPC 1973. Hence the conference had the power to amend the EPC 1973. [5.7] The appellant further argues that the provisions of A 16 to A 18 EPC were not applicable to European patent applications filed before 29 November 2000 since those provisions were not “purely organisational and institutional” and therefore, according to item 2 of the Explanatory remarks on the Transitional provisions of the EPC […], Article 7’s transitional provisions applied to the revised A 16 to A 18 EPC. The board, however, does not agree with the appellant. [5.8] First of all, Article 6 of the Revision Act has to be distinguished from Article 7 of the Revision Act. The transitional provisions pursuant to Article 7 of the Revision Act in conjunction with the Decision of the Administrative Council of 28 June 2001 provide for the applicability of the provisions of the revised version of the EPC at its entry into force and thereafter. Article 6 of the Revision Act, however, contains no transitional provisions but lays down the provisional application of parts of the Revision Act from the date of its adoption on 29 November 2000 and thus already before its entry into force […]. This means that these parts were effective as from 29 November 2000 […]. [5.9] The formal validity of Article 6 of the Revision Act and its ruling that inter alia the revised text of some Articles of the EPC took effect as from the date of the adoption of the Revision Act has already been
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acknowledged by the decisions J 13/02 [2.1] and T 1012/03 [54]. There is no reason for the board to disagree with these. In particular the provisional application pursuant to Article 6 of the Revision Act does not contravene Article 25 of the Vienna Convention on the Law of Treaties of 23 May 1969 (hereinafter “Vienna Convention”). This Article stipulates that “a treaty or a part of a treaty is applied provisionally pending its entry into force if the treaty itself so provides”. This is exactly what happened when the Conference adopted Article 6 of the Revision Act. [5.10] In the board’s view, it is not a prerequisite for the provisional application of the revised text of some of the EPC provisions pursuant to Article 6 of the Revision Act that these provisions should be purely organisational and institutional. Article 6 of the Revision Act merely states that “Article 1, items 4-6 and 12-15, Article 2, items 2 and 3 and Articles 3 and 7 of this Revision Act shall be applied provisionally”. Article 1, items 4-6 of the Revision Act contain only the amended text of A 16 to A 18 EPC. This clearly indicates that the provisional application of the amended A 16 to A 18 EPC is not dependent on whether these articles are of a purely organisational and institutional nature (see also T 1012/03 [53]). Since Article 6 of the Revision Act exclusively provides for the immediate provisional application of the revised A 16 to A 18 EPC, the Explanatory remarks cannot introduce a further condition for the provisional application of parts of the Revision Act. Moreover, the Explanatory remarks state under item 16: “Special transitional arrangements are not necessary for the revised text’s purely organisational and institutional provisions […], i.e. Articles 4a, 11, 16, 17, 18, 21, 22, 23, 33, 35, 37, 38, 42, 50, 130, 134, 134a, 140, 149a and 164, the new Protocol on the Staff Complement, and revised Section I of the Protocol on Centralisation. These will apply as from the revised text’s entry into force, except that, under Article 6 Revision Act, Articles 16 to 18, 37, 38, 42 and 50, the Protocol on the Staff Complement and Section I of the Protocol on Centralisation apply provisionally as from 29 November 2000.” [5.11] The board also does not agree with the appellant’s further argument that the provisional application of the amended A 16 to A 18 EPC as from 29 November 2000 was contrary to the “general principles of all modern democratic countries, and to the principles of human rights as applied by the European Court of Human Rights” and to the provisions of Article 28 of the Vienna Convention since this would retroactively interfere with the individual rights of applicants who had filed European patent applications before that date. [5.12] The principle of non-retroactivity of treaties is established in Article 28 of the Vienna Convention, which reads: “Unless a different intention appears from the treaty or is otherwise established, its provisions do not bind a party in relation to any act or fact which took place or any situation which ceased to exist before the date of the entry into force of the treaty with respect to that party.” It is clear from the wording of this provision that the parties to a treaty are not prevented from giving to provisions of the treaty retroactive effect provided that their “intention appears from the treaty or is otherwise established”. [5.13] The board notes that unlike Article 7 of the Revision Act, Article 6 of the Revision Act does not differentiate with regard to the provisional application between European patent applications which were filed before or after a specific date and, therefore there are no transitional provisions in respect of it for pending applications. This fact alone, however, does not mean that the general legal principle of "non-retroactivity" has been violated (see also T 1012/03 [55]). However, it does not mean either that the Conference intended to give to the provisionally applicable provisions any retroactive effect. Hence, in the absence of any indication of such an intention, the principle of non-retroactivity of international treaties had to be observed in the present case when revised A 16 to A 18 EPC were applied provisionally. This position of the board is supported by the Explanatory remarks […] which explain that the provisions which apply provisionally under Article 6 of the Revision Act, can apply only to measures taken after the date on which the Revision Act was adopted, i.e. after 29 November 2000. [5.14] The present application was filed on 22 November 1996 and therefore before the date on which Article 6 of the Revision Act was adopted by the Diplomatic Conference. In view of this fact it has to be examined whether the summons to OPs before the ED on 13 February 2004 in The Hague, which was posted on 6 2298 | 3398
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November 2003 and thus after the date of adoption of the Revision Act, infringed the non-retroactivity principle under Article 28 of the Vienna Convention. [5.15] It is generally accepted that the principle of non-retroactivity only guarantees that a new treaty is not applied to acts or facts which were already completed when the new treaty entered into force and that, therefore, “if an act or fact or situation which took place or arose prior to the entry into force of a treaty continues to occur or exist after the treaty has come into force, it will be caught by the provisions of the treaty” (see Wetzel/Rauschning, “The Vienna Convention on the Law of Treaties - Travaux Preparatoires”, Metzner, Frankfurt am Main, 1978, page 220, paragraph (3), with further references). In other words, the principle of nonretroactivity under Article 28 of the Vienna Convention is observed if a treaty is applied to matters that occur or exist on or after the entry into force of that treaty, even if these matters are based on an event prior to the entry into force of that treaty. It follows from this that the principle of “non-retroactivity” does not mean that, for example, procedural provisions cannot be amended during the pendency of a European patent application. The principle of “non-retroactivity” and the above general rules also apply under the European Convention on Human Rights (formally European Convention for the Protection of Human Rights and Fundamental Freedoms): see for example Wetzel/Rauschning, "The Vienna Convention on the Law of Treaties - Travaux Preparatoires", Metzner, Frankfurt am Main, 1978, page 220, paragraphs (2) - (4), with further references, and Article 7 of the European Convention on Human Rights, which, however, prohibits the retrospective criminalization of acts and omissions. As far as the “general principles of all modern democratic countries” are concerned, the board is not aware of any exception to the above general rules. [5.16] The board considers that, taking into account the above general rules in the present case, the provisional application of the revised A 16 to A 18 EPC did not retroactively interfere with the applicant’s individual rights. Although the present application was filed before the date on which Article 6 of the Revision Act was adopted, the examination proceedings initiated by that filing were still pending and therefore “continued to exist” when the applicant was summoned to OPs after that date. Moreover, the summons and the OPs themselves occurred after the provisional application under Article 6 of the Revision Act was adopted. [5.17] Further, the board accepts that the provisional application of the revised A 16 to A 18 EPC had a direct economic impact on applicants who had filed a European patent application before 29 November 2000 and appointed a representative in Munich (or nearby) if they were confronted with travel costs for OPs in The Hague. However, the board is of the view that, when filing a European patent application before the adoption of the Revision Act, applicants could have no legitimate expectation that they could never be summoned to OPs in The Hague. It is obvious from the wording of A 116(2) and (3) EPC 1973 that OPs could take place before the Receiving Section, which was set up exclusively in The Hague in accordance with the provisions of A 16 EPC 1973, valid until the provisional application of the amended A 16 EPC. Hence it was not excluded under the EPC 1973 that parties or their representatives would have to travel to The Hague if the Receiving Section summoned them to OPs pursuant to A 116(1),(2) and Rule 71(1) EPC 1973. The board is aware that, in first instance proceedings, OPs only exceptionally take place before the Receiving Section, but are usual before the examining or opposition division. However, it is the board’s view that recognising a legitimate expectation in the present case on the basis of “chances” would undermine the seriousness of the concept of the protection of legitimate expectations. [5.18] In view of the above considerations the board concludes that, in accordance with Article 6 of the Revision Act, A 16 to A 18 EPC as revised by the Revision Act provisionally applied to the present European patent application as from 29 November 2000 without any retroactive effect and that the transitional provisions under Article 7 of the Revision Act do not apply. Hence the appellant’s contention that the revised A 16 to A 18 EPC were not applicable in the present case and thus that there was no legal basis in the EPC for holding OPs in The Hague in the present case does not succeed. Consequently, the provisions of A 116 EPC 1973 in conjunction with Article 10(1),(2)(a),(b) EPC 1973 form the legal basis for conducting OPs before the ED in The Hague. As the appellant was summoned in proper form, in sufficient time before the OPs and to the correct place, the right to be heard in OPs (A 113(1) and A 116(1) EPC 1973) was not violated in the present case.
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Thus there is no reason to apply Article 11 RPBA. Conclusions [6] For the above reasons, the appellant’s request to set aside the impugned decision and remit the case to the department of first instance because of a fundamental deficiency must be refused. Don’t know why, but this case made me think of Talleyrand’s bon mot “Tout ce qui est excessif est insignifiant” (“All that is excessive is insignificant”). To read the whole decision, click here. The file wrapper can be found here.
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T 1495/09 – No Panacea
K’s Law – The ebook
T 1495/09 – No Panacea 12 Apr 2011
In the present decision the Board had to deal with requests filed by two of the opponents (Premium and Cathay) to correct the decision to grant by deleting the designation of GB. [7] Premium and Cathay requested the Board to correct the decision to grant under R 140 by deleting the designation of the Contracting State GB since in their view, said designation contained an obvious mistake. Premium and Cathay assert that it lies within the competence of the Opposition Division (OD) to correct the Examining division’s (ED) decision to grant a patent pursuant to R 140 (identical with former R 89 EPC 1973). However, the present Board agrees with Virgin and believes that only the ED is entitled to correct its own decision. R 140 reads as follows: “In decisions of the EPO, only linguistic errors, errors of transcription and obvious mistakes may be corrected.” The Board agrees with Premium and Cathay that R 140 does not specify the competence to correct errors in a decision. The Board also notes that there is no other provision in the EPC specifying the competence for such a correction decision. Therefore, an interpretation of R 140 is necessary on this issue. The case law of the Enlarged Board of Appeal (EBA) and the Boards of Appeal has dealt with the question of which EPO department of first instance is competent to correct the decision for grant. In its decision G 8/95 [3.4] the EBA held: “The competence to correct errors in a decision under R 89 EPC [1973] lies with the body which has given the decision. Hence, in the examination procedure the ED has to decide on a request to correct errors in the decision to grant.” In the decision T 850/95 leading to the referral, the facts indeed differed from those of the present case since the request for correction was submitted prior to the mention of the grant of the patent and therefore prior to the date on which the decision to grant took effect according to A 97(4) EPC 1973. Consequently, no opposition proceedings were pending at the time when the request for correction was filed. However, according to the case law of the Boards of Appeal, the ED has the competence to correct its own decision to grant also in situations where the request for correction was submitted after the initiation of opposition proceedings (T 226/02 and T 268/02). In both decisions the Board referred to G 8/95 and held that the competence to correct errors in a grant decision lied with the ED which had taken that decision. In T 226/02 [5.1], where the OD had corrected the grant decision pursuant to R 89 EPC 1973, the Board came to the conclusion that “the OD acted ultra vires in taking a decision under R 89 EPC [1973] to correct a decision of the ED”. In decision T 79/07 the Board acknowledged the ED’s competence for correcting the grant decision even after the OD had revoked the patent by a decision which was the subject of the appeal proceedings. In the Board’s view the reason for acknowledging the ED’s exclusive competence to decide on a request for correction of the grant decision could be seen in the requirement developed by case law that the correction of a decision is admissible only if the text of the decision is manifestly other than intended by the department concerned. Hence there is an obvious mistake in a grant decision within the meaning of R 140, if the text given for grant is not and obviously cannot be what the ED actually intended, and the text erroneously indicated can be replaced by that on which the ED actually wanted to base its decision (see T 850/95 [3] and T 1093/05 [7]). Premium argue that, in accordance with A 114(1) EPC 1973, the OD had to correct the grant decision since, as stated in decision T 156/84, it had the duty vis-à-vis the public not to grant or maintain patents which were not
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legally valid, irrelevant of how and when the EPO became aware of the circumstances being relevant for the legal validity of a patent. The Board, however, does not agree with this argument. The principle of examination by the EPO of its own motion as set out in A 114(1) EPC 1973 applies in all proceedings before the EPO. However, this principle cannot justify acting ultra vires and it therefore only applies to the extent to which the EPO department acts within its competence. This finding is also in line with decision T 156/84. The Board of Appeal concluded there that for establishing whether a granted patent can be maintained the OD was obliged to examine the relevance of cited state of the art even if it was introduced after expiry of the opposition period because the principle of examination by the EPO of its own motion (A 114(1) EPC 1973) took precedence over the possibility to disregard late-filed facts or evidence (A 114(2) EPC 1973). Decision T 156/84 concerned the question of how the OD had to deal with latefiled evidence which was filed in support of the ground for opposition under A 100(a) EPC 1973. However, there is no indication in decision T 156/84 that A 114(1) EPC 1973 could establish any competence. Consequently, neither A 114(1) EPC 1973 nor decision T 156/84 provides a basis for a competence of the OD for correcting the grant decision. Lastly, the Board turns to the argument that the principle of good faith and the principle of proportionality, which were applicable pursuant to A 125 EPC 1973 in proceedings before the EPO, would establish a competence of the OD for correcting the grant decision. The purpose of A 125 EPC 1973 is to fill any gaps that may occur in the application of the procedural provisions of the EPC. However, the Board considers that these principles also do not establish a competence of the OD to correct the grant decision for the following reasons. According to A 19(1) EPC 1973 the ODs are responsible for the examination of oppositions against any European patent. The substantive examination of the opposition is prescribed in A 101. If the opposition is admissible, the OD examines whether at least one ground for opposition laid down in A 100 EPC 1973 prejudices the maintenance of the European patent (A 101(1)). A 100 EPC 1973 lays down the exclusive grounds for opposition being limited to and essentially the same as some grounds for revocation under national law (A 138(1)(a)-(c) EPC 1973). The function of this provision is to provide, within the framework of the EPC, a limited number of legal bases, i.e. a limited number of objections on which an opposition can be based (G 1/95 [4.1]). An incorrect designation of a Contracting State is not one of the grounds for opposition under A 100 EPC 1973. This has also not been disputed by Premium and Cathay. It is established Board of Appeal case law that further grounds which would lead to a refusal of a European patent application in the examination proceedings cannot be successfully presented in opposition proceedings (see for example G 1/91; J 22/86 [18]; T 99/85 [4]; T 127/85; T 301/87 [3.3-4]; T 550/88 [4]; T 428/95 [4.2]). In view of this established case law and the relevant EPC provision, the Board considers that the opposition procedure is not designed to remedy all possible deficiencies of the granting procedure or of a granted patent. For example, an objection on the basis that the granted patent claims are not concise and clear cannot be considered by the OD (see for example T 336/96). Also defects and errors of a purely formal character in the granting procedure cannot lead to a revocation of the patent in opposition proceedings since such defects are properly regarded as cured by the act of grant (J 22/86 [18]). Hence the scope of opposition proceedings is limited as regards the grounds for challenge to granted European patents. Also after grant observations of third parties under A 115, first sentence EPC are only admissible if they oppose the patentability of the invention to which the patent relates. “Patentability” refers only to the substantive requirements set out in A 52 to 57 as the identical heading of Chapter I, Part II of the EPC suggests. The provisions of A 99 et seq. and A 115 were drafted with the public interest in mind (see also T 60/91 [9.5]). Therefore, in inter partes opposition proceedings before the EPO account must not only be taken of the interests of the parties involved. The Board shares the view that the EPO also has a duty vis-à-vis the public not to grant or maintain patents which it is convinced are not legally valid and that the public has to be enabled to rely as far as possible on the legal validity of a patent granted by the EPO (see T 156/84 [3.5]). However, this duty is subject to restrictions. As set out above, opponents in opposition proceedings and third parties filing observations can challenge the patent only in a limited scope. This means that neither the public nor opponents have legitimate expectations that any deficiency of the granted patent would be remedied by the EPO. Consequently, in the present case, the 2302 | 3398
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public could not legitimately expect that the designation of the Contracting State GB would be corrected in opposition proceedings. Therefore, the principle of good faith does not apply in the present case. For similar reasons the principle of proportionality does not apply in the present case. It is obvious from the EPC provisions concerning post-grant proceedings that the legislator did not envisage empowering the OD to set aside all legal and factual consequences of any mistake which occurred in examination proceedings. It is therefore the Board’s view that the authority conferred to the OD by the EPC provisions cannot be extended because of the principle of proportionality. In view of the above the Board concludes that in the present case the OD in opposition proceedings had no competence to correct the decision taken by the ED. Thus the OD would have acted ultra vires if it had corrected the grant decision. The same applies to the Board of Appeal in opposition appeal proceedings (A 111(1), second sentence EPC 1973). Consequently, the request for correction of the decision to grant must be rejected. To read the whole decision, click here. The file wrapper can be found here. A related decision was discussed in a previous post.
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T 528/08 – On Devolution
K’s Law – The ebook
T 528/08 – On Devolution 11 Apr 2011
Consider a situation where a patent is maintained in amended form by the Opposition Division (OD). Both the patent proprietor and the opponent file an appeal. None of the requests of the patent proprietor corresponds to the claims as maintained by the OD. Does this mean that the patent proprietor has given up those claims? Or does the Board have to examine the set of claims as maintained if it finds the requests that the patent proprietor has filed not to be allowable? [1.1] The Opponent submitted, that the Proprietor has failed to file a formal request for maintenance of the patent on the basis of the set of claims as maintained by the OD. According to the Opponent this should be a proof that the Proprietor has renounced to this set of claims. [1.2] With his notice of appeal of 14 March 2008 and the corresponding grounds of appeal of 21 May 2008 the Proprietor requested the patent to be maintained on the basis of the main request as filed during the first instance procedure. With the letter of 15 December 2008 the Proprietor additionally filed an auxiliary request. None of these requests is identical with the set of claims as maintained by the OD. No further submissions were made concerning the set of claims as maintained, neither did the Proprietor state that he was no longer interested in this set of claims. The Board could not find any explicit indication of such an intention - neither in the grounds of appeal nor in any subsequent submissions filed by the Proprietor. [1.3] The purpose of the appeal in inter partes procedures is to examine the challenged decision of he first instance on its merits (G 9/91 [18]; T 26/88 [12]). Thus, the principal issue to be answered by the Board of Appeal in inter partes procedures is to decide whether a first instance decision should be upheld or overturned (T 369/91 [6.6]). The Board’s power is determined by the principle of devolution effect of the appeal (tantum devolutum, quantum appelatum) and by the requests stated by the Appellants in their grounds of appeal (G 9/92 [1,3]; T 1382 (sic) [8]). [1.4] In the present case, as stated by the Proprietor, his request is to maintain the patent on the basis of the main request as filed during the first instance proceedings. It should be considered that filing an appeal was the only possibility for the Proprietor to defend the patent beyond the claims as maintained in amended form by the department of first instance (G 4/93 [10]). Furthermore, the auxiliary request was only filed with the letter of 15 December 2008 as a reaction to the Board’s communication of 4 June 2008 and the Opponent’s statement of 02 December 2008. Notwithstanding the fact that in the present case the Proprietor appealed the decision of the OD with the aim of requesting the maintenance of the patent on the basis of a higher ranking set of claims, this alone cannot lead the Proprietor to risk endangering the result which was achieved before the department of first instance (G 9/92 [11]; G 4/93 [12]), all the more that in the absence of a request or reply from the Respondent in appeal proceedings indicating that the decision of the OD should not be amended or cancelled, a Board must still examine and decide whether the appeal is allowable in accordance with A 110 and A 111 (T 501/92 [1.9]). [1.5] Consequently, if the situation occurs in which the Board does not contemplate revocation of the patent and also does not contemplate to grant a patent on the basis of the higher ranking request as filed by the Proprietor, the appeal of both the Opponent and Proprietor should be dismissed with the consequence that the patent is still maintained in amended form as by the OD. […] Having found the main request not to involve an inventive step (and the auxiliary request to violate A 123(3)) the Board then examines the claim as maintained by the OD: [4.3] Claim 1 of the set of claims as maintained by the OD is identical with Claim 10 of the main request. Therefore, identical considerations as for the main request apply. […] The patent is revoked. 2304 | 3398
T 528/08 – On Devolution
K’s Law – The ebook
To read the whole decision, click here. The file wrapper can be found here.
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T 658/06 – Innovative Is Not Enough
K’s Law – The ebook
T 658/06 – Innovative Is Not Enough 9 Apr 2011
Innovation is one of the mantras of modern life, one of the key words any self-respecting politician has to place in any speech on the future of our societies. As far as patents are concerned, invoking innovation will not do – what is needed is inventive stuff. The present appeal was against the decision of the Examining Division (ED) to refuse the European patent application under consideration for lack of inventive step. Here is my translation of Claim 1 of the main request before the Board: Method for operating a bonus treatment system of a telecommunication network for subscribers to the telecommunication network, in particular a mobile communication network, wherein, on call of a subscriber to the telecommunication network to another subscriber to a telecommunication network via this telecommunication network the bonus treatment system checks, immediately or at a later time, whether the calling subscriber to the telecommunication network is stored in a bonus participant list and wherein, if he is stored in the bonus participant list, a bonus entry is stored in a bonus list of the bonus treatment system as a consequence of his call to the other subscriber to a telecommunication network, characterised in that
the identity of subscribers to the telecommunication network is stored in a list (55) of potential participants stored in the bonus treatment system (1), when a subscriber (8) calls or dials in at a unit (10,11) of the bonus treatment system for receiving new participants to the bonus system, after his identity, and in particular the identity that had been declared when calling, has been checked, the identity of this subscriber is stored in the bonus participant list only if at least one comparison of his identity with identities stored in the list (55) of potential participants is positive, i.e. his identity is stored in this list, and in case the identity of a subscriber to the telecommunication network is stored in the bonus participant list (52) of the bonus treatment system, a code number is determined, wherein this code number is stored in his entry in the bonus participant list and the mailing of the code number to him is prompted, wherein in a future call of this subscriber to the telecommunication network, actions concerning this subscriber are accepted by the bonus treatment system only if a comparison of the code number supplied by the user and the code number stored in his entry is positive.
The Board finds this subject-matter to lack inventive step: *** Translated from the German *** [6.2] The method according to claim 1 differs from the bonus treatment system of D5 in that: [6.2.1] a client of the network provider is inserted into the group of bonus participants by dialling in at a unit for receiving new participants to the bonus system, which incorporates his identity data into the bonus participant list if he is found in the list of potential participants (i.e. is indeed a customer of the network provider), and [6.2.2] a code number is determined for the newly admitted participant to the bonus programme, the number is mailed to him and the subscriber to the telecommunication network is requested to supply it when calling the bonus treatment system at a later time before actions concerning this subscriber are accepted. A 56 EPC 1973 – Inventive step Only contributions having technical character are taken into account in the assessment of inventive step (T 641/00 [headnote 1]). The existence of an inventive step can only be asserted when the claimed method comprises at least one technical contribution solving a technical problem. Non-technical contributions do not 2306 | 3398
T 658/06 – Innovative Is Not Enough
K’s Law – The ebook
have to be examined in regard to obviousness or non-obviousness (and, therefore, cannot be used for the formulation of the problem, T 641/00 [headnote II]). When discussing the subject-matter of the claim with the [applicant], the Board has made a detailed search for an inventive technical teaching. [7.1] The application as such does not disclose an explicitly technical background to the motives for subscriptions to the bonus programme on behalf of customers. The incentive for a caller to become a customer in order to be allowed to participate in the bonus programme, is a matter of sales psychology. The simplification that is aimed at is of an administrative nature; it transfers the expenditure of time from the provider to the customer. “Great security in view of access restrictions” […] may constitute a technical aspect, but it is already present in D5, where the potential participation to the bonus programme us also limited to the clients of the network […]. [7.2] The appeal points out that the technical effect consists in that the expenditure of the network provider for selecting customers that are entitled to the bonus programme is omitted because the entry into the bonus participant list is triggered by the customer, and that the use of a compact bonus participant list (instead of a complete customer data base) simplifies all subsequent treatment steps. As far as the latter point is concerned, the Board points out that the bonus participant list according to D5 does not comprise all the customers of the network provider, either. Therefore, the subsequent treatment steps are already facilitated to the same extent as in the method according to the application. Consequently, this facilitation is not a contribution of the application and, incidentally, it would only qualify as an administrative circumvention of a technical bottleneck; the bottleneck remains unchanged (T 258/03 [headnote II]). [7.3] Therefore, only the feature that the bonus participant list is established by registering calling customers as participants to the bonus programme remains to be discussed. [7.3.1] The patent application does not disclose any detailed implementation, which implies that it is the skilled person who is in charge of the technical implementation. The [applicant] admits that the individual means of implementation (i.e. for taking calls and storing customer data) have not been invented by it, and stresses that it does not want to protect the means as such, but the general application that customers have themselves registered in the bonus participant list. [7.3.2] The Board is of the opinion that the basic idea does not have any inventive technical contribution. The idea that not all of the existing customers of the network provider participate in the bonus programme is known from D5 […]. The Board does not see any technical criterion for selecting the participants in the present application (either). The offer according to the application that any client, without any restriction of number, can enlist in the bonus programme is not of a technical nature. That the bonus programme is open to customers who enlist themselves is a decision of administrative nature. [7.3.3] From the point of view of the network provider, the registration process comprises the following basic steps:
a call is taken; it is checked whether the caller is an admissible “potential” participant (i.e. customer); if so, his identity is added to the bonus programme.
(a) The (manual or automatic) answering of a call and the examination of the identity of the caller contain technical aspects, but they do not go beyond actions of the skilled person. The skilled person is always inclined to automate human activities. The applicant has not asserted that a specific technical difficulty has been overcome in the present case, and the Board cannot see any, either. (b) The decision to add a calling customer to a known bonus programme may be innovative, but it is of an administrative nature and does not require any inventive technical consideration. From a technical point of view, this addition means that a subset of (customer) data is formed, which can be treated in a way that is different from the treatment of the remaining (customer) data. This, however, is a foreseeable filtering effect of any information in a data base. Such an effect is already given in D5: the selected customers are treated differently from customers that have not been selected. The only difference is that the selection is done differently in the present application, based on a different administrative decision.
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T 658/06 – Innovative Is Not Enough
K’s Law – The ebook
[7.3.4] The argument of the [applicant] according to which there was no model for automatic subscription of customers to a bonus programme in the prior art, directs the examination of inventive step to viewing the claimed subscription process as a whole. However, the Board is of the opinion that the overall purpose of opening the known bonus programme to customers that enlist is precisely a consideration of administrative nature, which cannot contribute to inventive step, whereas the problem-solution-pairs that are found on the level of implementation only reflect the knowledge of the skilled person (automatic taking of calls, storing the identity of a customer/caller). [7.4] The method step that follows the registration, i.e. that a code number is established for each new participant to the bonus programme in view of authorising access to his bonus account, is a technical means of access control, but it is a known means (password, PIN) for protecting accounts. Therefore, its use for bonus accounts of a provider of telecommunications is an obvious answer to the obvious risk of abusive access. [7.5] The “urgent need” for the creation of a powerful and safe bonus system which has been pointed out in the statement of grounds of appeal refers to a non-technical problem (opening the bonus system) and concerns, from a technical point of view, system features that are obvious in view of D5 and considerations of the skilled person. Moreover, an “urgent need” is not to be equated with a long-standing need, which could be taken into account as an indication of inventive step. In the present case, the solution of technical problems was obvious as soon as the administrative need arose. [7.6] The assessment of the present case is in line with the case law of the Board, which states that the simplification of the man-machine-interaction can comprise a non-obvious technical contribution. However, as far as man-machine-interaction is concerned, the present claim 1 only requires the use of an interface technique between a telephone and a data base of the provider (which has not been invented by the [applicant]), whereas the data that are transmitted differ from conventional data by their cognitive content (the calling customer wishes to participate in the bonus programme) only. The claim is directed neither to an inventive interface technique nor to an inventive functional data structure; the description sketches the interface only as an element to be programmed by the skilled person. [7.7] Therefore, the Board does not see any inventive contribution to the art in the main request. The auxiliary requests failed for the same reason; the appeal was dismissed. Should you wish to have a look at the whole document (in German), just click here. The file wrapper can be found here.
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T 830/08 – Stuttering
K’s Law – The ebook
T 830/08 – Stuttering 8 Apr 2011
The present decision contains some interesting statements on clarity. Main request Independent claim 3 of this request read: 3. Use of rimcazole for the preparation of a medicament for the preferential induction of apoptosis in a first population of cells compared to a second population of cells, wherein the cells of the first population are tumour cells. [1] A 84 stipulates inter alia that the claims shall be clear. [2] The meaning of a claim is determined from the skilled person’s point of view reading the claim with his/her background knowledge in the context of all of the claims and the whole specification. [3] Claim 3 relates to the “[u]se of rimcazole for the preparation of a medicament for the preferential induction of apoptosis in a first population of cells compared to a second population of cells wherein the cells of the first population are tumour cells”. [4] A claim directed to a second medical use is considered as clear only if the disease to be treated is clearly defined in it (for example decision T 1048/98 [2.1-5]). In the present case the disease to be treated is defined in functional terms as “the preferential induction of apoptosis in a first population of cells compared to a second population of cells wherein the cells of the first population are tumour cells”. The question is whether or not the skilled person could clearly attribute a disease or group of diseases to this functional definition. [5] In the board’s view, the skilled person reading this definition in claim 3 would be struck, on the one hand, by the explicit mention and the specific definition of the first population of cells and by the explicit mention, but absence of specific definition of the second population of cells, on the other hand. [6] Had the disease in claim 3 be defined simply as, for example, the “induction of apoptosis in tumour cells” the skilled person would certainly, in particular in the context of the present application […], have implicitly complemented this explicit definition by considering that the type of cells which should not be affected by apoptosis are non-tumour cells and would thus have interpreted claim 3 as relating to the treatment of cancer. However, the explicit, but unspecified reference to a second population of cells in claim 3 raises uncertainty about which cells, in addition to non-tumour cells, are concerned and thus which diseases in addition to cancer are defined by the expression at issue. [7] Hence, the board concludes that claim 3 does not clearly and unambiguously define the disease or disorder to be treated with rimcazole. Therefore, the main request is refused because claim 3 does not fulfil the requirements of A 84. Auxiliary requests 1 to 2 Claims 13 and 14 of this request read: 13. A kit comprising: (a) a composition comprising a sigma receptor ligand as defined in claim 1 in a pharmaceutically acceptable carrier; and (b) directions instructing administration of the composition in a manner which would result in the preferential induction of apoptosis in a first population of cells compared to a second population of cells, wherein the cells of the first population are tumour cells and the cells of the second population are non-tumour cells. 2309 | 3398
T 830/08 – Stuttering
K’s Law – The ebook
14. The kit of claim 13 wherein the kit is for the treatment of cancer. [8] Claim 13 relates to a kit comprising, inter alia, “directions instructing administration of the composition in a manner which would result in the preferential induction of apoptosis in a first population of cells compared to a second population of cells, wherein the cells of the first population are tumour cells and the cells of the second population are non-tumour cells”. [9] In view of the explicit indication in claim 13 of the induction of apoptosis in tumour cells, but not in nontumour cells, the skilled person would prima facie, and in particular in the context of the present application […], perceive that claim 13 relates to a kit for the treatment of cancer […]. [10] Claim 14 is dependent on claim 13 and is directed to “[t]he kit of claim 13 wherein the kit is for the treatment of cancer.” [11] Thus, prima facie and when regarded separately, the meaning of both claims 13 and 14 is clear, i.e. they both relate to the same subject-matter. [12] However, as noted in point [2] above, the meaning of a claims is determined in the context of the whole application, i.e. also in context with other claims. [12.1] When claim 13 is regarded in context with claim 14 an uncertainty about the meaning of claim 13 arises in because claim 14 is dependent on claim 13, yet covers the same subject-matter. Thus, since it is therefore not clear which subject-matter is defined by claim 13, an objection of lack of clarity arises. [13] All the above observations apply equally to auxiliary request 2 in which claims 13 and 14 are identical with claims 13 and 14 of auxiliary request 1. [14] Hence, auxiliary requests 1 and 2 are rejected because they do not fulfil the requirements of A 84. So repeating a clear statement creates a lack of clarity. We-eeell... To read the whole decision, click here. The file wrapper can be found here.
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T 1981/07 – How?
K’s Law – The ebook
T 1981/07 – How? 7 Apr 2011
This decision deals with the refusal of an application by the Examining Division (ED), on the ground of lack of inventive step. The Board sees an even greater problem. *** Translated from the German *** [2] The present application covers an electric motor which differs from a conventional electric motor essentially in that its windings are formed by “band capacitors” that are connected in series. According to claim 1, the band capacitors have the following features:
their planes of extension (Erstreckungsebenen) are oriented perpendicular to the poles of the magnetic core segments and arranged on them; each of them is formed by two ring-shaped metal plates that are interrupted by a gap; between their metal plates there is a dielectric.
[2.1] According to the description […] an alternating electric current flows through the windings formed by the band capacitors, “irrespective of whether the rotor is locked or rotates, rotates slowly or at high speed. This is precisely the physical basis of the newly structured motor, which allows to control the speed of the rotation independently of the current frequency. In order for the motor to turn at the desired speed of rotation, it is necessary, in the embodiment of Fig. 1, to uncouple (abkoppeln) the rotor locking.
Then the rotor turns to the position wherein the magnetic flux is maximised, i.e. the magnetic poles on the stator and on the rotor have to reach a magnetic axis N-S, S-N. Without further action the rotor will remain in this magnetic axis, but the alternating current will continue to flow through the windings 6,7. In this position the locked torque (Anzugsmoment) is zero. The circuit in Fig. 4 shows how to pursue the rotation of the rotor and how to control it. …
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T 1981/07 – How?
K’s Law – The ebook
The windings 7 are directly connected to the AC generator 14 by means of contact brushes 19. A similar electric circuit makes clear that the windings 6 on the magnetic core segments 2 of the stator are also connected to the AC generator via connections 20. Between the windings 6 and the AC generator 14 there is a control unit 21 for controlling the speed of rotation, the function of which is to control the magnetic core system of the stator such that there is always an angle between the axis of the rotating field and the magnetic axis of the rotor. The control unit 21 for controlling the speed of rotation is connected to the rotor by means of a known optical sensor, which provides the precise position of the rotor for the electronic data treatment.” (underlining added) Moreover, the description […] indicates that the speed of rotation of the rotor can be set with a high precision of about ± 0.3%. “Such a precision of the nominal speed of rotation is possible because the torque moment can be controlled within milliseconds by feeding or throttling electric energy. The supply is controlled/throttled by changing the current frequency and/or by changing the amplitude of the alternating current. This can be done very easily because the windings 6,7 each form an electric capacity from the point of view of the underlying physics. In electric motors according to the invention, the well-known characteristic torque/speed curve is completely different from the curves belonging to the state of the art.” (underlining added) [2.2] The circuit “allowing to pursue the rotation of the rotor and to control it” is not described in more detail in the application. There is only the statement that the motor control is obtained “by feeding or throttling electric energy” and that this is obtained “by changing the current frequency and/or by changing the amplitude of the alternating current”. [2.3] As shown in Figures 5 and 6, the windings of an electric motor according to the invention consist in a plurality of band capacitors that are connected in series. Each of them comprises two C-shaped metal plates arranged on a magnetic core segment and a dielectric that is provided between the metal plates.
As the electric motor according to the invention has a stator and a rotor of conventional construction, it has to be assumed that the band capacitors are to create a magnetic flux in the corresponding magnetic core segments. As a matter of fact, the application […] mentions “that the engine power (Leistung) of all electrical machines is directly proportional to the magnetic flux. Moreover, the magnetic flux is proportional to the ampere-turn.” [2.4] As is generally known, an electric current flowing through a capacitor builds up a positive charge on one of the electrodes and a negative charge on the other. The current flowing between the electrodes is a displacement current; it is an expression of the rate of change of the electrical flux between the electrodes. Document D4 (see Fig. 3) shows that the displacement current flowing between the electrodes of a plate capacitor generates a magnetic field having circular, concentric magnetic field lines extending parallel to the electrodes. In other words, the displacement current of the band capacitors cannot create an axially oriented magnetic field.
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T 1981/07 – How?
K’s Law – The ebook
[2.5] Therefore, the question arises of how an arrangement of band capacitors such as the one claimed and depicted in Figures 5 and 6 can serve as winding of a stator or rotor pole and generate a magnetic field that is parallel to the longitudinal axis of the corresponding magnetic core segment. [2.6] The applicant has pointed out that the particular C-shaped geometry of the metal plates depicted in Figures 5 and 6 results in the current flowing into the band capacitor and out of the band capacitor, respectively, having a circular current path when an alternating current is applied. Moreover, by providing the connections of adjacent metal plates on opposite sides of the gap that interrupts the metal plates, it can be ensured that that the circular currents in the metal plates are aligned (gleichgerichtet). [2.7] As far as the currents flowing at the C-shaped plate electrodes are concerned, the application does not disclose whether and, if so, under which conditions those currents could generate an axially directed magnetic field in the magnetic core segments that would be sufficient for operating an electric motor. The application does not explain in detail the arrangement of the connections, which, as emphasized by the applicant, was decisive for giving rise to aligned circular currents generating an axially oriented magnetic field. It could perhaps be derived from Figure 6 only. Also, the application does not establish a link between a current path in the metal plates that is allegedly circular and the C-shaped geometry of the plates. [2.8] The description […] emphasizes that the type of construction of the electric motor according to the invention has “a completely different structure” “than all electric motors according to the state of the art”. “In the electric motor that is described here, the interaction between the magnetic fields of stator and rotor are defined in a completely different way, according to the underlying physics, than the interactions in all known electric motors. Figures 1, 2 and 4 show that the magnetic flux is closed only by the magnetic core segments 2 and 5 and also by the slit 15 between the rotor and the stator.” […] Despite the underlined differences between conventional electric motors and the claimed electric motor the application does not contain any indications concerning the conditions and the technical measures that are required for generating aligned arc-shaped currents in the metal plates of the band capacitors, so that each metal plate would indeed act as a winding of a corresponding coil. The Board is of the opinion that in the present case the skilled person cannot be expected to complete the incomplete teaching of the application with his knowledge because, as pointed out by the [applicant], the mode of operation of a motor according to the invention is not comparable with the state of the art. […] [3] To sum up, the Board is of the opinion that the application does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (A 83). Should you wish to read the whole document (in German), just click here.
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T 1981/07 – How?
K’s Law – The ebook
To have a look at the file wrapper, click here. For a similar decision, click here.
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R 1/10 – Independence
K’s Law – The ebook
R 1/10 – Independence 6 Apr 2011
The present petition for review aimed at setting aside decision T 1888/06 where the Board had revoked the opposed European patent. Unsurprisingly, the petition was dismissed as clearly inadmissible: the R 106 cudgel was used against the petitioners. There is, however, an interesting passage in the decision. As a matter of fact, the petitioners made a very desperate move and pointed out that the Boards of appeal were not entitled to revoke granted patents. They referred to the statement of position by the advocates general at the ECJ, presented on July 2, 2010 (Opinion 1/09) wherein they denied that the Boards of appeal fulfilled the requirements of an independent court. However, the independence of courts was an absolute object of legal protection (absolutes Rechtsgut) anchored in Article 6(1) ECHR, as also acknowledged by the Enlarged Board (EBA). The consequence of the absence of independent judges was that the Boards of appeal were not entitled to revoke patents. Therefore, the contested decision had no legal basis and was to be set aside. The review proceedings were to be suspended until the ECJ had expressed its opinion in case 1/09. You might not be surprised to hear that the EBA did not adopt this reasoning. Here is why: *** Translation from the German *** [1] Based on the principles that constitute a state founded on the rule of law (Rechtsstaat), i.e. separation of powers, lawfulness of all public action and acknowledgement of human rights, the EBA is unable to share the concerns raised by the petitioners - under reference to the submissions of the advocate general of the ECJ in its opinion 1/09 – against the Boards of appeal being constituted (Verfasstheit) in accordance with the rule of law (rechtstaatlich), and in particular its judicial (richterlich) independence. [1.1] In doing so, the EBA does not stand alone. As a matter of fact, contrary to the opinion of the petitioners and the advocate general, several high national courts of the contracting states to the EPC have referred to the Boards of appeal as independent courts within the meaning of the rule of law in the past. They have acknowledged the decisions [of the Boards of appeal] to be decisions of an independent court to be taken into account in the progress of their jurisprudence (see, for example, the decision of the [German] Bundesgerichtshof (BGH) dated October 26, 2010, X ZR 47/07, marginal number 31, “Display of topographic information”). This holds true, in particular, for the Patents Court of the United Kingdom, the German Bundesgerichtshof and the German Bundesverfassungsgericht [i.e. the Federal Constitutional Court], the case law of which is invoked repeatedly by the petitioners. See
Patents Court, December 20, 1997 – Lenzing [1997] R.P.C. 245; Verwaltungsgericht (Administrative Court), Munich, judgment dated July 8, 1999 Verwaltungsgericht (Administrative Court), Munich, judgment dated November 20, 2006 (GRUR Int. 2007, 352) G 1/86 [14] of the EBA G 6/95 [2] of the EBA G 3/08 [7.2] of the EBA
See also:
Pignatelli in: Benkard, EPÜ, A 21, marginal number 33; Stauder in: Singer/Stauder (ed.), EPÜ, 5th edition, 2010, A 21, marginal number 1 et seq.
[1.2] Only recently the EBA has had the opportunity to repeatedly express itself accordingly (see its opinion dated May 12, 2010). In its opinion G 3/08 it explains why the Boards of appeal are an independent judiciary within the European patent system that is based on the principle of separation of powers. It refers to A 21 and A 2315 | 3398
R 1/10 – Independence
K’s Law – The ebook
23 which establish the separation of instances, the irremovability of members of the Boards of appeal and the fact that they are not bound by any instructions (Weisungsfreiheit), which are essential characteristics of judicial independence. Moreover, these principles are flanked by particular provisions of the civil servant statutes of the EPO concerning members of the Boards of appeal (cf. Luginbühl in: Singer/Stauder, op. cit., A 23, marginal number 9). [1.3] Moreover, the contracting states to the EPC, which are organised as states founded under the rule of law almost without exception, are prohibited from signing an international treaty which would transfer their sovereign right to grant industrial property rights having effect in their territories to an international organisation without there being the possibility of examining decisions of rejection issued by this organisation via an independent court bound by the principles in accordance with the rule of law (G 3/08 [7.2.1]; see also BVerfG 2 BvR 2368/99, marginal number 13) [1.3.1] Not least for this reason, the German Federal Constitutional Court allows constitutional complaints filed against acts of public authority not only if they are directly imputable to the national public authority, and examines legal acts of international organisations in view of their compatibility with the German constitution, in particular with the principles in accordance with the rule of law that are expressed therein and which are widely respected internationally. The acts of the EPO, which, pursuant to Article 24(1) of the German constitution, exercises sovereign powers with effect in the German territory, is also concerned by this examination (see BVerfG 2 BvR 2368/99, marginal number 12 ; as far as the EU is concerned, Article 23(2), second sentence, of the constitution also applies) [1.3.2] In the ruling cited above, wherein the underlying constitutional complaint was not accepted for decision, the Federal Constitutional Court, after having closely examined their legal organisation, has attested to the Boards of appeal of the EPC that they issue court rulings and essentially satisfy the principles in accordance with the rule of law of the German constitution and the requirements under constitutional law that result from the jurisprudence of the Federal Constitutional Court, in particular because of the qualification and independence of their members as well as the strict separation between first instance grant and opposition proceedings on the one hand and appeal proceedings on the other hand (see BVerfG 2 BvR 2368/99, marginal numbers 19,20). According to the Federal Constitutional Court, this also held true for the principles of the right to be heard and the right to a fair trial pursuant to Article 6 ECHR. Summing up, the Federal Constitutional Court held that the EBA and the Boards of appeal, pursuant to A 113 et seq. EPC have acknowledged procedural and organisational rules for all administrative proceedings before the EPO and thus have ensured that the proceedings before the EPO are in accordance with the rule of law (see BVerfG 2 BvR 2368/99, marginal number 21). The ECHR also shares this opinion in its decision dated June 16, 2009 (individual complaint n° 40382/04 Rambus Inc./Germany, GRUR Int. 2010, 840/842 et seq.) and it is not clear why other national courts of the contracting states to the EPC should come to an essentially different opinion. [1.3.3] The explanations of the Federal Constitutional Court make clear that the Boards of appeal, in the absence of a particular legal empowerment, are not authorised to examine the EPC as to its compliance with human rights and the constitutions of the contracting states. All the Boards of appeal have to do is to interpret the provisions (Normen) of the EPC, doubtlessly in the light of principles acknowledged under international law such as the rules of interpretation now standardized in Articles 31 and 32 of the Vienna Convention on the Law of Treaties (concerning the analogous application of the Vienna Convention in the framework of the EPC, see G 1/83, J 8/82). When doing so, they are of course allowed to examine, within the system of provisions of the EPC, whether some subordinated provisions (implementing rules, rules of proceedings, etc.) are compatible with the articles of the Convention and, as the case may be, not apply such provisions because they are not compatible with law of higher rank. However, they are prohibited from setting aside articles of the EPC because they are not in line with other national or international codifications or treaties. Situations of the latter kind could possibly be entrusted to national or international courts such as, in the case of Germany, the Federal Constitutional Court or the ECHR in Strasbourg, as the case may be. However, the latter has already expressed doubts as to its competence for examining procedural violations made by an international jurisdiction (Gerichtsbarkeit), in particular according to the EPC, because the national patent system subsisted besides the European patent system and the applicant had the choice which system, including its judicial remedies (gerichtlicher Rechtsschutz), he wished to use (see ECHR, GRUR Int. 2010, 840/842, Rambus Inc./Germany) [2] A suspension of the present review proceedings until the decision of the ECJ in the proceedings concerning the referral questioning the compatibility of the draft agreement on the introduction of a European patent court is out of the question. As a matter of fact, a decision of the ECJ denying the independence of the Boards of appeal within the meaning of a jurisdiction (Gerichtsbarkeit) in accordance with the rule of law, would not be binding on the Boards of appeal. The reason is that the EPC is not part of the EU legislation but, by instituting the 2316 | 3398
R 1/10 – Independence
K’s Law – The ebook
European Patent Organisation, institutes an distinct international subject that is, according to its very essence, independent of the European Union, comprising not only all the EU member states but also non-EU member states. Apart from that, the opinion 1/09, which has been issued in the meantime by the plenum of the ECJ on March 8, 2011, does not call for adopting another point of view. To read the whole decision (in German) or have a look at the file wrapper, click here.
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T 2292/08 – When Theory Meets Reality
K’s Law – The ebook
T 2292/08 – When Theory Meets Reality 5 Apr 2011
The patent under consideration was revoked by the Opposition Division because the latter found the requests on file to lack sufficient disclosure. The Board does not agree: [4.1] The invention defined in claim 1 of the main request relates to an article having loosely woven fabric layers that have a defined fabric tightness factor. The ground of opposition under A 100(b) raises the question as whether the patent discloses the invention in a manner sufficiently clear and complete for it to be carried out by the skilled person. [4.2] A method for determining the fabric tightness factor is given in paragraphs [0026] and [0027] of the disputed patent. The equations given in paragraph [0026] include the parameters dw (width of warp yarn in the fabric) and df (width of fill yarn in the fabric). The [opponent] made a fabric in accordance with Example 3 and measured the widths of the yarns in the fabric using an electron microscope. Calculating the fabric tightness factor on the basis of these measurements gave values above 1.3, which is in excess of the 0.6 indicated in example 3 and the range (0.3 to 0.6) defined in claim 1. [4.3] It is thus apparent that either the examples given in the patent are not examples of the claimed invention, or there is something wrong with the method set out in paragraphs [0026] and [0027]. The examples are, however, quite clear in showing that, with the given material parameters, the alleged effect can be achieved; this tends to indicate that there is a deficiency regarding the disclosed method. The question is therefore whether the skilled person would readily notice the deficiency and how it would be corrected. [4.4] The fabric tightness factor calculated by the [opponent] was above 1.3. A fabric tightness factor of 1.0 means that the measured cover factor was greater than the theoretical maximum, indicating that the fabric is jammed with yarns being compressed together. This result is clearly not in agreement with the basic teaching of the patent, whose purpose is to produce layers of loosely woven fabric (see paragraph [0009] of the patent specification), and also does not correspond to the appearance of the fabric actually produced by the [opponent]. Faced with such a curious result, the skilled person would immediately recognise that there was a problem concerning the way the fabric had been made. [4.5] The [patent proprietor] has submitted extracts from textbooks (D8, D9 and D10) and declarations (D22 to D24), which show that it is well known in the art to use the theoretical diameter of the yarn when designing fabrics. This is because yarn woven into a fabric is distorted to such an extent that meaningful results based on actual measurements are difficult to obtain. Being well aware of the use of a theoretical diameter for the yarn, it would occur to the skilled person that by using this approach, rather than by measuring values, a more appropriate result in line with the teaching of the patent might be obtained. [4.6] There is more than one way to calculate the diameter of the yarn. Although the results provided by the [opponent] in Table 3 of declaration D26 differ greatly, it was accepted by the [opponent] that these had been based on an incorrect calculation (see letter of 23 September 2010). The results calculated for example 3 (see Tables 1 and 2 of D26), although different, still fall within the claimed range. Unlike the results based on measured values for the diameter of the yarn, they are in line with the claimed invention. [4.7] It would not amount to an undue burden for the skilled person to calculate the diameter of the yarn according any one of the equations put forward by the parties, as this means simply evaluating the data by a different equation, and does not involve the repetition of experiments to obtain more data, as was argued by the [patent proprietor]. [4.8] It is also clear that the degree of porosity of the yarn has a bearing on the estimation of the yarn diameter, and is determined largely by the factors referred to by the [opponent] (number of filaments in the yarn, crosssectional shape of the filaments and construction of the yarn). The porosities of the fibers of the examples in the patent are not given, but a nominal value of 0.60 or 0.65 is commonly taken in practice for the purpose of 2318 | 3398
T 2292/08 – When Theory Meets Reality
K’s Law – The ebook
calculating the yarn diameter. Since example 3 defines the linear density of the yarn (dtex), the only other variable that could have a significant influence on the diameter of the yarn is porosity. Should use of the typical values for porosity not lead to a fabric tightness factor within the claimed range, it would be a simple matter for the skilled person to calculate on the basis of yarns having a different porosity. So, on obtaining the unusual experimental values a skilled person would realise that the extremely high cover factor (and therefore the unrealistic tightness factor) could be corrected by choosing a yarn having an appropriate porosity value. [4.9] The [opponent] has suggested that the different results of the various calculations lead to ambiguity at the limits of the claimed range, meaning that it is not possible to determine with certainty whether a particular woven fabric falls within the scope of the claim. Regarding this point, the [patent proprietor] referred to T 608/07, which considered that ambiguity at the edges of a claim is a matter for A 84, an article that specifically concerns the scope of the claims. A 83 and A 100(b) concern sufficiency of disclosure and, in the words of T 608/07, whether an ambiguity deprives the skilled person of the promise of invention. Given that it is possible for the skilled person to obtain the claimed ballistic resistant article, the alleged ambiguity does not give rise to a objection under A 100(b). Summary [4.10] In summary, faced with an unrealistic result, the skilled person would be alerted to an error in the method by which the fabric tightness factor is calculated using measured values for the yarn diameter, and would be aware that this can be corrected by using theoretical values instead, as is commonly done in the art. The Board therefore considers that the patent specification contains sufficient information for the skilled person to carry out the invention. To read the whole decision, click here. The file wrapper can be found here.
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T 571/09 – That Was Quick!
K’s Law – The ebook
T 571/09 – That Was Quick! 4 Apr 2011
This decision deals with an appeal against the decision of the Opposition Division (OD) to reject the opposition against a European patent. The opposition had been filed on September 11, 2007, and the patent proprietor had submitted a response dated December 17, 2008. The EPO transmitted this response to the opponent on December 24, 2008. The Office decided to reject the opposition in a letter dated February 6, 2009. The opponent filed an appeal and pointed out that its right to be heard had been violated. The short time between the receipt of the response of the patent proprietor and the decision of the OD had made it impossible to comment, all the more as there was a holiday period between December 24 and January 6. The case was not yet mature for a decision as the opponent had not been heard on the problem-solution approach. The opponent requested the following question to be referred to the Enlarged Board of appeal (EBA): “Has the right to be heard be violated when the response of the patent proprietor dated December 12, 2008, comprising auxiliary requests, has been transmitted to the opponent in a registered letter dated December 23, 2008 and delivered on January 2, 2009 (R 126(2)) and the decision has been handed over to the postal service on February 2, 2009, i.e. even before a time limit of only one month had expired? Here a one-month time limit is clearly too short. The time between December 24 and January 7 is a general holiday season, so that the treatment of the letter could only take place after January 7. Moreover, the subject-matter was complex and there were additional auxiliary requests, where a waiting period of at least two months would have been appropriate (“Case law” 2010, T 263/93). Has the right to be heard been violated if the decision is based on reasons on which the opponent has not been heard before and raises questions (“not clear”) which could have been clarified by the opponent during the first instance if it had been requested to do so?” The Board first deals with the patentability of the request before it and comes to the conclusion that the subjectmatter of this request is both novel and inventive. It then deals with the request for reimbursement of the appeal fee and the question to be referred to the EBA: *** Translated from the German *** Reimbursement of the appeal fee [5.1] Whether R 67 EPC 1973 (cf. T 630/08) or R 103(1)(a) EPC (see T 616/08) is applicable in the present case may be left open because both provisions require the reimbursement to be equitable by reason of a substantial procedural violation if, as here (sic), the appeal is allowed. [5.2] The [opponent] is of the opinion that the decision on the opposition, which has been taken without requesting further clarifying comments or at least giving [the opponent] an appropriate period of time of two months after transmission of the written submissions of the adverse party, constitutes a substantial procedural violation affecting the opposition proceedings. Pursuant to A 113(1) the decisions of the EPO may only be based on grounds on which the parties concerned have had an opportunity to present their comments. This [provision] obliges the EPO to grant the right to be heard. As is generally accepted, the right to be heard has been violated when the OD has ignored submissions or has not taken them into account in its decision, or when it has used knowledge (Erkenntnisse) on which a party to the proceedings has not had an opportunity to present comments. [5.3] The latter case may entail the duty to inform a party (Hinweispflichten), in particular when the party cannot see which facts it has to comment on in order to succeed. This duty may differ depending on the type of proceedings. As far as opposition appeal proceedings are concerned, the EBA has considered that post-grant opposition proceedings under the EPC are in principle to be considered as contentious proceedings between parties normally representing opposite interests (see G 9/91 [2]), which entails greater responsibility of the parties for the completeness of their submissions. There may be a duty to inform [a party] on obvious and easily 2320 | 3398
T 571/09 – That Was Quick!
K’s Law – The ebook
remediable cases of incompleteness. [However,] the opponent itself is responsible for the comprehensibility of its submissions concerning the substantive requirements for patentability. [5.4] In the present case the OD has only examined the submissions of the opponent and has found them inconclusive. Even if it had made an error, which is not the case, this would not amount to a procedural violation bit only an erroneous application of the substantive law. The OD is not allowed to base its reasoning on facts on which the opponent has not had an opportunity to present its comments, but it has not done so. [5.5] A party to the proceedings cannot present its comments when it has not been given enough time to do so. In this context the [opponent] points out that
the decision of the OD had been handed over to the postal service on February 2, 2009, although the written submission of the patent proprietor was deemed to have been delivered on January 2, 2009, pursuant to R 126(2); the time between December 24 and January 7 is generally considered to be a holiday season; and the requests under consideration were complex, involving auxiliary requests, a case where T 263/93 had found that a minimum time limit of two months was necessary before taking a decision.
[5.6] These submissions do not provide evidence for a violation of the right to be heard, either. The written submission of the patent proprietor dated December 17, 2008, was posted on December 22, 2008. Pursuant to R 126(1) this written submission is deemed to have been received on January 1, 2009, and, as this is a day on which one of the filing offices of the EPO is not open […], on the following day (R 134(1)), here Friday, January 2, 2009. The decision is dated February 6, 2009; sheet 2 has the annotation “to the postal service on 02.02.2009”. This raises doubts on whether the decision was taken on February 6, 2009, or already on February 2, 2009. The question of whether February 6, 2009 is the correct date of the decision, because the transmission of the decision could have been stopped until this date, may be left open, because even if the decision was taken on February 2, 2009 the opponent’s right to be heard was not violated. The written submission of the patent proprietor was sent to the [opponent] for information. It did not contain an invitation to comment. In such a case the [opponent] had to assume that a decision was imminent, because this way of proceeding necessarily means that the OD considered the case to be ready for a decision (entscheidungsreif) and that the submission of the patent proprietor was irrelevant (keine Rolle spielt) as otherwise the OD would have given the opportunity to comment. In such a situation the [opponent] has to approach the OD and either to make further factual submissions or – exceptionally – announce such factual submissions to be made within an appropriate time limit. The waiting period to be kept by the OD only depends on these requirements. In this situation, one month – as here (legal fiction of delivery : January 2, 2009, earliest date of decision: 2 February, 2009) – was certainly sufficient. The Board is of the opinion that in this situation it is not relevant whether the submission of the patent proprietor, which has not been taken into account by the OD, was complex. If the submission was found to be complex, then a careful representative will at least request the possibility to comment before the OD. What is more, the Board is of the opinion that the factual submissions were not complex. As a matter of fact, [the opponent] has not provided reasons why it found the submissions complex. In any case, the mere existence of an auxiliary request – without any discussion of its contents – cannot justify the allegation of complexity. [5.7] Moreover, it is irrelevant that the period from December 24, 2008, to January 6, 2009 partially (i.e. from January 2, 2009 on) overlapped with the period between delivery and decision. It is true that there was an additional holiday on January 6, 2009. However, there is no provision and no generally admitted principle established by the [opponent] according to which working days had a particular status in this period. The period from December 23, 2008, the day of the real delivery, to January 1, 2009, precedes the occurrence of the deemed delivery (Zustellungsfiktion). A party has to bear the risk resulting from its practice not to sufficiently inspect the incoming post during the last working days of a year and the first working days of the following year. Consequently, as there was no procedural violation, there cannot be a reimbursement of the appeal fee, be it only for this reason. Referral to the EBA
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T 571/09 – That Was Quick!
K’s Law – The ebook
[6.1] Pursuant to A 112(1)(a) EPC 1973, a Board of appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required in order to ensure uniform application of the law, or if an important point of law arises. As far as the first alternative in which a referral is possible is concerned, the requirement of a non-uniform case law is not fulfilled. In decision T 914/98 the Board was of the opinion that the seventeen day period which elapsed between the appellants receiving the reply of the respondents and the handing over of the decision to the EPO internal postal service was manifestly too short to give the appellants an adequate opportunity for comment. Given the case law, the appellants could not reasonably have expected a decision to be issued so quickly. The question regarding what period of time is sufficient for this purpose is a question of fact which has to be answered on the basis of the merits of each individual case; see “Case Law of the Boards of appeal of the EPO”, VII.D.5.2.4. Therein several approaches are expressed, i.e. that as a rule, i.e. in the absence of any exceptional circumstances, an adequate period of time for presenting comments should not be shorter than the shortest possible period specified [by the EPO] for filing comments, i.e. two months, regardless of whether or not the action required within such a time limit is simple or can be performed immediately (T 263/93) and that in the case of a communication which was issued for information purposes only and which did not set a time limit for response, a period of one month was, as a rule, sufficient to comply with the requirements of A 113 in this respect. In another case in which difficult technical questions had to be considered, not even a time period of about one month was considered sufficient to give the appellant a realistic opportunity to inform the opposition division of its intention to file a substantive reply and to ask for an appropriate time limit for this purpose, let alone to present substantive comments (T 263/93). However, all these decisions are based on different factual evaluations which cannot be answered as if there was an abstract legal question. [6.2] As there is no legal question, the requirements of the second alternative of A 112(1)(a) are not fulfilled, either. Moreover, it has to be noted that even an important point of law does not require a referral if the Board if it can resolve it itself without any doubt (see “Case Law of the Boards of appeal of the EPO”, VII.E.14.2), because the interpretation of the EPC is primarily the responsibility of the Boards of Appeal (see G 3/08 [7.2.5]). The present questions do not raise doubts; the Board is of the opinion that they are clearly to be answered in the way exposed above. Therefore, no question will be referred to the EBA. To avoid that kind of bad surprise, be sure to request oral proceedings when you file an opposition. To read the whole decision, click here. The file wrapper can be found here. Another decision on this topic is found here. More on quick decisions can be found here.
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T 2052/10 – You Got It
K’s Law – The ebook
T 2052/10 – You Got It 2 Apr 2011
Applicants sometimes believe that interlocutory revision opens the right to having the appeal fee reimbursed. This assumption will often prove false. Following the refusal of its patent application, the applicant filed an appeal, submitted amended claims and requested reimbursement of the appeal fee. The Examining Division (ED) granted interlocutory revision on the basis of the amended claims. The applicant then again requested reimbursement of the appeal fee: “Fortunately, in the matter of the above mentioned European patent application, appeal proceedings could be avoided, as the competent EPO ED now accepts the application documents as amended, which had been filed on March 2, 2010. Therefore, we request that the appeal fee be reimbursed to our deposit account n° … kept at the EPO”
(click to enlarge) The ED did not grant this request, nor does the Board of appeal: (NB : all legal provisions refer to the EPC 1973) *** Translated from the German *** [2] Reimbursement of the appeal fee is ordered when the situation is such that the law requires reimbursement (gesetzlicher Rückzahlungstatbestand) (see J 3/09 [4.3]) or when the appeal fee has been paid without legal justification (ohne Rechtsgrund). [2.1] Pursuant to R 67 reimbursement of appeal fees shall be ordered in the event of interlocutory revision if the reimbursement is equitable by reason of a substantial procedural violation. [2.1.1] In the present case, the applicant has neither asserted nor proven that a substantial procedural violation occurred during the examination proceedings. [2.1.2] The Board cannot see any such substantial procedural violation, either. The decision was taken on the basis of the version of the claims filed with its letter of August 8, 2008. This version had been submitted and agreed upon by the applicant (A 113(2)), the right to be heard was granted and no requests had been overlooked. Therefore, the request for reimbursement cannot be granted. [2.2] Also, the reason for reimbursement mentioned by the applicant, i.e. that the appeal proceedings could be avoided […] is not valid, because this is not a situation where the EPC provides for reimbursement (Rückzahlungstatbestand). [2.3] Moreover, in the present case, there is also a legal justification for the payment of the appeal fee. [2.3.1] Claim 1 on which the decision of the ED to refuse the grant of a patent had been based was significantly amended by the addition of the features of dependent claims when the appeal was filed. Interlocutory revision was granted pursuant to A 109(1), on the basis of this amended claim 1 after the appeal had been filed. 2323 | 3398
T 2052/10 – You Got It
K’s Law – The ebook
[2.3.2] Pursuant to A 109(1), interlocutory revision presupposes that the department of the first instance whose decision is contested considers the appeal to be admissible and well-founded (see G 3/03 [3.3]). This presupposes that the appeal fee has been paid, as pursuant to A 108 an appeal is only deemed to have been filed after the fee for appeal has been paid. [2.3.3] In the present case, the ED which granted interlocutory revision necessarily had to consider the appeal filed, admissible and allowable before it could grant interlocutory revision. Thus the appeal fee, without which, as seen above, interlocutory revision would not have been possible, has not been paid without legal justification. [2.4] As the EPC does not provide for reimbursement in situations other than [the situation referred to in] R 67 (see [2.1] above), the request for reimbursement cannot be granted. Should you wish to download the whole decision (in German), just click here. To have a look at the file wrapper, click here.
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K’s Law – The ebook
Publish Or Perish (ctd.)
Publish Or Perish (ctd.) 2 Apr 2011
At the end of each quarter I usually dedicate a post to the number of decisions published on the DG3 site. As the site has undergone some facelift recently, which has seriously perturbed the publishing of decisions, I am not sure whether the comparison with the previous years is meaningful. Anyway, here are the numbers:
(click to enlarge) It is definitely too early to say whether 2011 will bring a good harvest or not; for the time being, the number of decisions made public is close to the average of the previous years. As I am into statistics, let me mention a noteworthy change concerning the readers of this blog. When looking at the overall pageviews by countries since the beginning of this blog, about one and a half year ago, you obtain the following ranking:
The lion’s share goes to France, for historical reasons, but this share has been decreasing ever since. If you look at the figures for last month, Germany has taken over leadership:
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K’s Law – The ebook
Publish Or Perish (ctd.)
I have no particular explanation for this relatively recent trend; maybe it is due to word-of-mouth. There is some irony in the fact that an Austrian would have a blog in English (and sometimes translate German decisions into English) when German readers are the largest reader group ...
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K’s Law – The ebook
T 128/10 - No Money No Transfer
T 128/10 - No Money No Transfer 1 Apr 2011
This decision deals with the revocation of a patent - owned by XIRING - by the Opposition Division (OD) and the subsequent appeal, filed on behalf of Gemalto SA (hereinafter referred to as “alleged appellant”). The appeal fee was paid on January 22, 2010. An assignment document signed by Gemalto SA as transferee and XIRING as assignee was produced with the notice of appeal. On February 16, 2010 the EPO drew attention to deficiencies in the “request dated 23 January 2010” for entry of a change in the European Patent Register (EPR) concerning the name of the patent proprietor. In particular, the administrative fee pursuant to R 22(2) had not yet been paid. It was requested to remedy the deficiency within a period of two months from notification of the communication. The administrative fee was paid on February 25, 2010. A statement setting out the grounds of appeal was filed on March 10, 2010. The opponent submitted that the appeal should be held inadmissible as Gemalto SA was not entitled to file the appeal. On September 21, 2010 correction of the name of the appellant was requested. Moreover, an accordingly amended notice of appeal was filed on behalf of XIRING against the decision of the OD. During oral proceedings before the Board, the alleged appellant requested that the appeal be found to be admissible. According to it, paragraphs 1 and 2 of R 22 concerned the registration of a transfer in the EPR, thus information for third parties. Conversely, paragraph 3 related to the effect of a transfer vis-à-vis the EPO. R 22 thus dealt with the conditions for recording a transfer in the EPR so that the transfer became available to the public and, moreover, the condition for a transfer having effect vis-à-vis the EPO. These two situations were different and should not be mixed up. As an auxiliary request, the alleged appellant that the following point of law be referred to the Enlarged Board of Appeal (EBA): “Is it sufficient to provide documentary evidence in relation to the transfer of a patent under appeal which was in fact submitted before the expiry of the period for filing the notice of appeal, according to R 20(3) [EPC 1973] or 22(3) [EPC], so that a transfer shall have effect vis-à-vis the EPO? If yes, is the appeal receivable? If No, should the Board of Appeal have drawn attention of the appellant on incorrect designation of the Appellant and have invited the representative to modify the incorrect designation of the Appellant? Is there in EPC 1973 or 2000, a Rule stating that to be an entitled-Appellant you should be recorded on the Register of European Patent, and in such case what is the utility of R 22(3) [EPC]?” The opponent requested that the appeal be rejected as inadmissible or, as an auxiliary request, that the following point of law be referred to the EBA: “Can the unambiguous identification of a non-party as the appellant in a notice of appeal be considered an error for which correction under R 101(2) or R 139 is available, if said nonparty is a purported transferee of the European patent for which, at the expiry of the period for filing the notice of appeal, documentary evidence had been submitted but the requirements of R 22(2) had not been fulfilled?” Here is what the Board had to say: Preliminary remarks
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K’s Law – The ebook
T 128/10 - No Money No Transfer
[1] According to the European Patent Bulletin 2005/32 of 10 August 2005 and the decision of the opposition division of 27 November 2009, XIRING was the patent proprietor. The notice of appeal of 23 January 2010, however, was filed on behalf of Gemalto SA. [...] R 22 [3.1] The procedure for recording the transfer of a European patent in opposition appeal proceedings is defined by R 22 in connection with R 85 and R 100(1). [3.2] According to R 22(1) in conjunction with R 85 the transfer of a European patent shall be recorded in the EPR “at the request of an interested party, upon production of documents providing evidence of such transfer.” It should be noted that the request of the party and the production of documents are conditions sine qua non for recording the transfer. However, paragraph 1 does not require that the request be filed and the documents be produced at the same date. In the present case, on 24 January 2010 the alleged appellant filed the notice of appeal dated 23 January 2010, produced an assignment document at the same time, but failed to file a request for transfer of the patent as required by R 22(1). The official communication of 16 February 2010, however, includes the mention of a “request dated 23 January 2010”. In view of the fact that the only document on file bearing the date of 23 January 2010 is the notice of appeal, the Board assumes that the Client Data Registration considered the production of the assignment document with the notice of appeal as an implicit request for recording a transfer of the patent in the EPR. Since A 22(1) does not require a particular form of the request, the Board has no reason to disagree with the view of the Client Data Registration. [3.3] According to R 22(2) “The request shall not be deemed to have been filed until an administrative fee has been paid.” It is not required that the request for transfer be filed and the administrative fee be paid on the same date. In the case that these actions are performed on different dates, the date of payment of the fee prevails over the date of filing the request. In the present case, the administrative fee was paid on 25 February 2010. It follows that the request implicitly filed on 24 January 2010 with the notice of appeal was not deemed to have been filed until 25 February 2010. [3.4] Pursuant to R 22(3) “A transfer shall have effect vis-à-vis the EPO only at the date when and to the extent that the documents referred to in paragraph 1 have been produced.” Paragraph 3 regulates the date on which the transfer becomes effective vis-à-vis the EPO. The wording “only at the date when and to the extent that the documents referred to in paragraph 1 have been produced” makes any earlier date mentioned in the assignment document obsolete from the viewpoint of the EPO. The earliest date on which the transfer may take effect vis-à-vis the EPO is the date on which the documentary evidence has been produced. Of course, a prerequisite for the transfer to become effective is that a request for recording the transfer has been made. This request is only deemed to have been filed when the requirement of paragraph 2 has been fulfilled. [3.5] In summary, according to R 22 in conjunction with R 85, the procedural requirements to be fulfilled for recording the transfer of a patent consist in the filing of a request of the interested party, the production of documents providing evidence of the transfer, and the payment of an administrative fee. These requirements do not need to be fulfilled at the same time. If they are met on different dates, the transfer shall only have effect visà-vis the EPO at the date on which all the requirements mentioned above are fulfilled. Indeed, only at this date it is ensured that all the requirements of R 22 are met. This interpretation of R 22 is commonly accepted in the legal literature (Singer/Stauder, Europäisches Patentübereinkommen, Fifth Edition, 2010, Art 71, margin No. 12; Visser, The annotated EPC, updated till 15 November 2009, R 22, page 404). It is also consistent with the official line adopted by the EPO (Guidelines for Examination in the EPO, December 2007 and April 2010, E-XIII, 1) and the jurisprudence of the boards of appeal (Case Law of the Boards of Appeal of the EPO, December 2006, VII.D.5.2.2 and July 2010, VII.C.5.2).
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K’s Law – The ebook
T 128/10 - No Money No Transfer
[3.6] In the present case, this means that the provision of R 22(3) cannot lead to the conclusion that the transfer would have effect at the date, 24 January 2010, on which the notice of appeal with the enclosed copy of the assignment document was received. Rather, according to R 22(2), until the administrative fee has been paid, no request may be deemed to have been filed. Hence, despite the fact that the representative of the appellant Gemalto SA did not explicitly request the registration of the transfer of the patent in the notice of appeal, the Client Data Registration correctly concluded in the communication of 1 April 2010 that the registration had taken effect vis-à-vis the EPO on 25 February 2010, the date on which the administrative fee had been paid. [3.7] The alleged appellant’s interpretation of R 22 is in evident disagreement with the commonly accepted construction of the legal norm from which there is no reason to depart. Moreover, it is not convincing. Indeed, it is based on the artificial assumption that paragraphs 1 and 2 of R 22 should concern the effect vis-à-vis third parties, whereas paragraph 3 should be considered in isolation and have application vis-à-vis the EPO. As the EBA stated in G 2/04 [2.1.2], “Legal certainty requires that it is clear at any given time who the parties to the proceedings are” (Reasons, [2.2.2(a)]). Moreover, “In the case of the proprietor, the industrial property right may be transferred and such transfer may have effect vis-à-vis the EPO if it is registered in accordance with R 61 in conjunction with R 20 EPC [1973]. This allows the new proprietor to defend his patent in opposition proceedings before the EPO. Hence, the procedural status of the proprietor cannot be transferred without the substantive title”. Therefore, the EPO registers the transfer of a patent to a new proprietor during the opposition period or during opposition procedure (R 85) or a possible subsequent appeal procedure (R 100(1)). The EPO will regard the new proprietor as a party to the proceedings only if it is duly recorded as such, that is if the formalities as laid down in R 22 have been completed. If the new proprietor wishes to participate in proceedings before the EPO, the registration under R 22 is mandatory and allows a precise and simple determination of the parties, thus avoiding that the EPO is involved in complicated investigations as to the relations between a recorded party and an alleged successor. The alleged appellant’s argumentation fails to appreciate this aim of R 22. Even if its view would be accepted, which it is not, and assuming for the sake of argument that the EPO could be considered as a “third party” in transactions between an assignee and a transferee, the provisions for having effect vis-à-vis third parties, thus paragraphs 1 and 2 of R 22 in the alleged appellant’s view, would have to be applied together with those of paragraph 3 with respect to the effect vis-à-vis the EPO, as the [opponent] submitted. This would lead to the conclusions drawn above by the Board. [3.8] In conclusion, the Board is of the view that the effective date of transfer of the patent to Gemalto SA is the date of payment of the administrative fee pursuant to R 22(2), which falls outside the period for filing a notice of appeal as laid down in A 108. Thus, the appeal was not filed by a party to the proceedings which led to the decision under appeal. It follows that the [opponent’s] conclusion that the appeal filed on 24 January 2010 in the name of Gemalto SA should be rejected as inadmissible (R 101(1)) is correct. [3.9] With regard to the amended notice appeal lodged on 21 September 2010 on behalf of XIRING, it must also be rejected as inadmissible (R 101(1)) because it was not filed within two months of notification of the decision of the opposition division (A 108). Moreover, on 21 September 2010 XIRING was no longer adversely affected by the decision under appeal (A 107) because the transfer of the patent to Gemalto SA became effective vis-à-vis the EPO on 25 February 2010. The cited jurisprudence T 656/98 [4.1.1] In T 656/98 the board was confronted with the fact that the representatives on record for the patent proprietor Genencor Inc filed on 30 June 1998 a notice of appeal on behalf of “The proprietor: Genencor International Inc”. The appellant stated the patent had been transferred from Genencor Inc to its associated company, Genencor International Inc, before the appeal was filed. With a letter of 4 November 1998, received on 6 November 1998, a certified copy of the assignment of the patent from Genencor Inc to Genencor International Inc was filed. The transfer fee was also paid. The EPO recorded the transfer of the patent with effect from 6 November 1998. An opponent (respondent) objected that the appeal was inadmissible on the
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K’s Law – The ebook
T 128/10 - No Money No Transfer
ground that at the time of filing the appeal the appellant was not a party to the proceedings. The board rejected the appeal as inadmissible. [4.1.2] The alleged appellant held that the facts underlying T 656/98 and the present case were different. First, in T 656/98 the document providing evidence of the transfer was not produced with the notice of appeal. Second, Genencor Inc did not exist anymore at the date of the appeal in T 656/98, whereas XIRING still existed in the present case on 24 January 2010. Moreover, in T 656/98 the representative of Genencor Inc received a communication from the board of appeal, dated 9 September 1998, querying the fact that the name and address on record at the EPO were not those stated for the appellant. The representative thus had an opportunity to clarify the situation and to confirm the intention to designate Genencor International Inc as the appellant. In the present case, however, the representative of the alleged appellant did not receive the Board’s communication dated 2 September 2010 until 8 September 2010 indicating a deficiency concerning the name of the appellant. A correction was then requested (R 101(2)). [4.1.3] The mentioned differences are not sufficient for regarding T 656/98 as irrelevant. Quite on the contrary, in both the present case and T 656/98 a notice of appeal was filed designating as the appellant a patent proprietor who differs from the proprietor recorded in the EPR. Moreover, for a decision to be considered relevant, it is not mandatory that all the facts are identical. [4.1.4] In T 656/98 [headnote] the board held that “For a transferee of a patent to be entitled to appeal, the necessary documents establishing the transfer, the transfer application and the transfer fee pursuant to R 20 EPC [1973] must be filed before the expiry of the period for appeal under A 108 EPC [1973]. Later recordal of the transfer does not retroactively validate the appeal”. In the present case, the Board has no reason to depart from these conclusions which, as already stated above, are consistent with the official line adopted by the EPO and the jurisprudence of the boards of appeal. [4.1.5] As already mentioned above, the alleged appellant also submitted that, unlike in case T 656/98, the deficiency concerning the name of the appellant in the notice of appeal of 23 January 2010 had not been notified until the Board sent the communication of 2 September 2010. This submission is not correct, as the [opponent] noted. Indeed, the Client Data Registration sent the communication of 16 February 2010 in which the alleged appellant was informed of a deficiency in the request under R 22 and was invited to correct it. The deficiency was identified as non-payment of the administrative fee under R 22(2). The alleged appellant reacted by paying the due fee on 25 February 2010. Moreover, attention is drawn to the fact that the Client Data Registration sent the further communication of 1 April 2010 informing that the registration of the transfer had taken effect on 25 February 2010, i.e. after the expiry of the period for filing a notice of appeal under A 108. The alleged appellant did not reply to this communication, although it had been informed of the EPO’s interpretation of the requirements according to R 22 in the communication of 16 February 2010 and thus had been made aware of the legal consequences. T 15/01 [4.2.1] In T 15/01 the board distinguished between the situation where a party acquired a patent through a transfer and through a merger. It held that “R 20(3) EPC [1973] does not apply in the context of universal successions in law. The universal successor of a patent applicant or patentee automatically acquires party status in proceedings pending before the EPO” [headnote, II]. [4.2.2] T 15/01, cited by the alleged appellant, does not apply to the present case because the document, produced with the notice of appeal of 23 January 2010, provides evidence of the transfer of the patent and its American and Canadian members of the same patent family from XIRING to Gemalto SA. There is no evidence of a merger behind this transfer. [4.2.3] Therefore, the Board concludes that R 22(3) applies in the context of the present case. Correction of the appellant’s name in the notice of appeal 2330 | 3398
K’s Law – The ebook
T 128/10 - No Money No Transfer
[5.1] The alleged appellant submitted that it was its true intention to file the appeal of 23 January 2010 in the name of the patent proprietor, but it was neglected to indicate XIRING as the appellant until the registration of the transfer of the patent took effect vis-à-vis the EPO. In such a case, a correction of the appellant’s name in the notice of appeal should be possible. [5.2] In T 97/98 an appeal in the name of Fresenius AG was lodged against a decision of the opposition division to maintain the patent in an amended form. Later on the appellant submitted that Fresenius AG was erroneously indicated in the notice of appeal as being the name of the opponent. The true intention was to file the appeal in the name of Fresenius Medical Care Deutschland GmbH. Correction of the appellant’s name was requested. Thus, the situation was that on expiry of the time limit under A 108 EPC 1973 the appeal did not expressly indicate the true name of the person in whose name the appeal was intended to be filed. In the board’s view “What is required under R 64(a) and R 65(2) EPC [1973] is that there was indeed a deficiency, i.e. that the indication was wrong, so that its correction does not reflect a later change of mind as to whom the appellant should be, but on the contrary only expresses what was intended when filing the appeal. It must be shown that it was the true intention to file the appeal in the name of the person, who is, according to the request, to be substituted” [1.3]. The board then concluded that “correction of the name of the appellant to substitute a natural or legal person other than the one indicated in the appeal is allowable under R 65(2) EPC [1973] in conjunction with R 64(a) EPC [1973], if it was the true intention to file the appeal in the name of said person and if it could be derived from the information in the appeal, if necessary with the help of other information on file, with a sufficient degree of probability that the appeal should have been filed in the name of that person” ([1.4; headnote]). [5.3] It should be noted that the conclusions drawn in T 97/98 are endorsed by the EBA in G 2/04. In particular, “Considering the overriding interest that a party must be identifiable”, the EBA saw “no reason for a broadening of the scope of application of R 65(2) or R 88, first sentence, EPC [1973]” ([3.1]). [5.4] In the present case, the alleged appellant itself declared that it was its true intention to file the appeal of 23 January 2010 on behalf of Gemalto SA which in its view was the patent proprietor at the filing date of the appeal. According to T 97/98, in such a situation, there is no deficiency in the notice of appeal concerning the name of the appellant which may be remedied in accordance with R 99(1)(a) in conjunction with R 101(2) nor an error which may be corrected pursuant to R 139, first sentence. Thus, the Board agrees with the [opponent’s] submissions. Auxiliary requests for referring points of law to the EBA [6.1] Pursuant to A 112(1)(a), “in order to ensure uniform application of the law”, or “if a point of law of fundamental importance arises”, the Board of Appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required for the above purposes. If the Board of Appeal rejects the request, it shall give the reasons in its final decision. [6.2] In the present case, the alleged appellant’s auxiliary request essentially concerns the interpretation of the requirements of R 22 and the correction of the designation of the appellant in the notice of appeal. Since the jurisprudence of the boards of appeal with regard to both issues is consistent, there is no need to refer a question to the EBA to ensure uniform application of the law. In view of this, the Board does not see that a point of law of fundamental importance arises, that would need a clarification by the EBA. Therefore, the alleged appellant’s auxiliary request is not allowable. [6.3] As the [opponent’s] main request is allowable, the [opponent’s] auxiliary request need not be considered. [...] The appeal is rejected as inadmissible. To have a look at the whole decision, just click here. The file wrapper can be found here. 2331 | 3398
K’s Law – The ebook
T 128/10 - No Money No Transfer
NB: This decision has been discussed on the Blog du droit européen des brevets.
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T 120/08 – A Vacuous Expression
K’s Law – The ebook
T 120/08 – A Vacuous Expression 31 Mrz 2011
When drafting patent applications, it is crucial to well define parameters that are relevant for characterising the invention. Using parameters habitually used by the inventors but not necessarily understood without ambiguity by the skilled person may kill a patent, as can be seen from the present decision, which deals with an appeal against the decision of the Opposition Division (OD) to reject the oppositions. The main claim under consideration was directed at a method of production of goods based on meat wherein olive oil was substituted to animal fat. The method included a step where the food mixture was encased “with simultaneous application of vacuum 1000 mbar”. It is this particular feature that triggered a discussion on whether the invention was sufficiently disclosed. [3] Pursuant to A 83 the “European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art”. According to the jurisprudence of the boards of appeal the standard of disclosure for this requirement is that it must be possible to reproduce the invention on the basis of the original application documents without any inventive effort and undue burden, whereby the skilled person may use his common general knowledge to supplement the information contained in the application, textbooks and general technical literature forming part of the common general knowledge (see e.g. decisions T 629/05, T 206/83, T 772/89). [4] The subject-matter of Claim 1 as granted discloses the invention as consisting in a process for the production of goods based on meat, which process is characterised by four essential process steps (a) to (d). Process step (c) provides that the mixture produced in steps (a) and (b) “goes to filling machines where it is encased with simultaneous application of vacuum 1000 mbar …”. The equivalent wording can be found in original Claim 1. No further information on the value of the vacuum to be applied in step (c) is found in the application as filed or in the patent specification. Hence, in the present case it has to be examined first whether a skilled person having read the application as filed would be able, on the basis of his general knowledge and without undue burden, to reliably define “vacuum 1000 mBAR” or “vacuum 1000 mbar”, as it was granted, because keeping to that parameter during the vacuum encasing step (c) is a prerequisite for carrying out the solution to the technical problem for which protection is sought in Claim 1. “Vacuum 1000 mbar” [5.1] For technical purposes, a vacuum is commonly defined as being present where inside a container/apparatus the (absolute) gas pressure is lower than the gas pressure outside the container/surrounding the apparatus (see e.g. D57 […]). [5.2] A commonly used unit for indicating the gas pressure is “bar” or “millibar” (“mbar”), the latter unit being used in the patent in suit. [5.3] A gas pressure is normally measured as an absolute pressure relative to the absolute vacuum (pressure of zero). In contrast, where the pressure is measured relative to the given surrounding pressure (“barometric pressure”) - i.e. so-called “gauge pressure” - one speaks either of an overpressure or, if the pressure is lower than the surrounding pressure, of a reduced/lower pressure or vacuum. The latter is made clear by putting “(rel)” or ““ before the value of the vacuum, e.g. “-50 kPA” […]. [6] It is against this background that in order to be able to carry out the claimed process the person skilled in the art must and therefore would try to establish the meaning of “vacuum 1000 mbar” in Claim 1, because the patent (and the underlying application as originally filed) is silent on the meaning of that value (as well as of “vacuum 960 mbar” mentioned in the description of step (b) of the claimed process). [6.1] Giving “vacuum 1000 mbar” its literal meaning, i.e. that of an absolute pressure, immediately leads to difficulties, even contradictions, which would prevent the skilled person from such an understanding: 2333 | 3398
T 120/08 – A Vacuous Expression
K’s Law – The ebook
An absolute pressure of 1000 mbar would be so close to that prevailing at sea level (around 1013 mbar) that it would not constitute an reduced/lower pressure (and thus a vacuum) in the larger part of the inhabited regions of the world, with the consequence that either it would be a feature of the claimed process that it had to be carried out at or close to sea level, or the performing of the invention would be geographically restricted. There is no technical reason indicated in the application or otherwise evident to the skilled person which in the given technical context could support such an understanding. Even the proprietor did not adopt such an interpretation. [6.2] As regards the second possible understanding of “vacuum 1000mbar”, namely as a gauge pressure, here of -1000 mbar, that is a “significant” reduction of the pressure (not to, but by 1000 mbar), as Appellant I argued and the respondent’s technical expert Dr. Genigeorgis stated before the OD (point II, above), the same difficulties arise. Again, such a gauge pressure (= a reduced/lower pressure […]), by its very definition, can only be present at places with an atmospheric/barometric pressure higher than 1000 mbar (absolute), i.e. close to sea level, and there is nothing pointing to such an understanding by the person skilled in the art. That being so, it is immaterial whether or not [opponent I] was actually able to carry out the vacuum encasing step at a pressure of -1 bar […]. Equally, it is irrelevant whether the encasing step is indeed not feasible at an absolute pressure of 13.25 mbar since the vacuum would break down because of the low boiling temperature of the water in the mixture […], or for other technical and/or cost reasons. Therefore, these issues need not be pursued further. [6.3] According to the proprietor’s position the true meaning of the term “vacuum 1000 mbar” as understood by the skilled person is, however, yet another one, namely the standard atmospheric pressure of 1013.25 mbar minus 1000 mbar = 13.25 mbar below the surrounding atmospheric pressure at a given place, i.e. a weak vacuum of 13,25 mbar gauge pressure. [6.3.1] This interpretation was accepted by the OD, but without any substantiated reasoning, in fact nothing more than because “[t]his interpretation had been confirmed by the patent proprietor” […]. In respect of this crucial issue the decision under appeal thus suffers from a deficiency under R 111(2), first requirement. [6.3.2] Documents A and B filed in response to the communication which the board had issued in preparation of the OPs and in which it gave also a preliminary view on that issue (A 100 (b)) do not support the respondent’s position […]. This is also true for document C according to which the term “Vacuum” describes the state of a fluid in a volume at a pressure below the atmospheric pressure at normal conditions, and the range between 1000 and 1 hPa (= mbar) is called “Grobvakuum” (weak vacuum). It is clear from the values indicated for the further ranges (strong, high, ultrahigh, … vacuum), that all these values are absolute values unrelated to the surrounding pressure, not gauge pressures related to the surrounding atmospheric pressure. Therefore, also from this document it cannot be derived that a “vacuum 1000 mbar” means an reduced/lower pressure (“mild vacuum” as the respondent put it) of (exactly) 13.25 mbar in relation to any surrounding pressure. [6.3.3] Beyond this, the [patent proprietor] has not put forward any technical argumentation for his contention that the skilled person reading the specification and the claims of the patent in suit would unambiguously interpret the term “vacuum 1000 mbar” as referring to a weak vacuum of 13.25 mbar below the surrounding atmospheric pressure, a view which was not even shared by all of the respondent’s own experts […]. In particular, the respondent has not shown anything in the patent documents or in the common general knowledge from which the skilled person would conclude that the solution of the problem underlying the invention is conditional upon such a weak/”mild” vacuum. [6.3.4] Rather, this is questionable in view of the resulting wide range of the absolute pressure at the encasing step of the claimed process, depending on the geographical location/altitude of the meat processing plant. It is furthermore questionable whether a skilled person intending to remove oxygen in order to avoid oxidation according to paragraph [0020] of the patent in suit would consider it appropriate to reduce the air pressure only marginally by 13.25 mbar. [6.3.5] The respondent furthermore relied on the fact that [opponent I] in its own patent documents D and E used the analogous terms “vacuum 940 mbar” and “vacuum 940 to 980 mbar”. However, apart from the assertions by one of the opponents’ experts that the experiments relating to these documents had been carried out at gauge pressures in the range of 940 to 980 mbar, i.e. in a strong vacuum, an undefined term used in a patent document does not become meaningful to the person skilled in the art simply by the use in patent documents of a competitor (here opponent I), in particular where, as in the present case, it is strongly disputed that the terms in question have the same meaning in the document(s) of each side.
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T 120/08 – A Vacuous Expression
K’s Law – The ebook
[6.3.6] The respondent’s eventual contention that a “vacuum 1000 mbar” at the encasing step is not essential for carrying of the claimed process is not convincing, quite the contrary. It is because of a deliberate choice by the respondent as the then applicant that the term in question appears in the application as originally filed and the specification of the patent in suit. In general, as pointed out in decision T 815/07, the purpose of a parameter contained in a claim is to define an essential feature of the invention. Its significance is that the presence of this technical feature contributes to the solution of the technical problem underlying the invention. So, if this contention was true, the use of the critical term in the patent in suit would in addition be misleading. [7] From the above it follows that a skilled person is at a loss when trying to perform the “application of vacuum 1000 mbar” at the encasing step of the process claimed in either of the respondent’s main and auxiliary request. Therefore, neither of these requests is allowable due to non-compliance with Article 83 EPC, a provision whose purpose is to ensure a fair and complete disclosure of the subject-matter for which protection is sought. […] The patent is revoked. NB: The revocation was announced at the end of the OPs. Subsequently, the patent proprietor requested an amendment of the minutes. The Board having refused this request, the proprietor “respectfully insist[ed]” on its request, which it considered decisive in view of a petition for review. This triggered another noteworthy statement by the Board: [2] As regards the respondent’s request for amendment of the minutes, i.e. actually for a more detailed version of the minutes of the OPs, the board is bound by the decision to reject this request communicated to the parties on 19 November 2010 and can no longer change it itself. Thus, this board is no longer empowered to assess whether the minutes as they stand and/or the refusal to amend them according to the respondent's suggestions constituted a violation of any of the parties’ rights. The possibility to correct a decision under R 140 is limited to linguistic errors, errors of transcription and obvious mistakes. The respondent did not rely on any such error or mistake and the board too is not aware of any such deficiency of the decision to reject the requested amendment. To read the whole decision, click here. The file wrapper can be found here.
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T 1635/09 – Claims Pregnant With Meaning
K’s Law – The ebook
T 1635/09 – Claims Pregnant With Meaning 30 Mrz 2011
In the present case, the patent proprietor and three of the four opponents filed appeals against the decision of the Opposition Division (OD) to maintain the patent in amended form. The decision is somewhat lengthy; if you are happy with a summary, here is a translation of the headnotes provided by the Board: 1. The use of a composition for oral contraception, where the claimed concentrations of the hormons contained in the composition are chosen sufficiently low to avoid or reduce the pathological secondary effects that are to be expected in oral contraception, constitutes a method for treatment by therapy that is excluded from patentability pursuant to A 53 c).
2. As the question of whether a claimed use is therapeutic or non-therapeutic is to be decided exclusively on the basis of the actions carried out during this use and/or the effects obtained, the exclusion from patentability pursuant to A 53 c) cannot be overcome by limiting [the claim] to a “non-therapeutic use” in the case of a therapeutic method wherein a nontherapeutic use (contraception) is inseparably linked with a therapeutic use (avoiding or reducing the pathological secondary effects).
3. The transformation of a claim directed to the use of a substance or composition for a certain purpose into a Swiss-type claim or a purpose-limited product claim pursuant to A 54(5) leads to an extension of the scope of protection.
4. When considering whether series of trials needed for reproducing a claim may reasonably be expected (zumutbar), the question of whether they could have been avoided is also to be taken into account. One may not reasonably expect that time consuming and ethically questionable series of trials are carried out when [the applicant] could have defined the claimed subject-matter by means of features which would have made said series of trials – in view of reproducibility by the skilled person - unnecessary, without reducing the scope of the claim. The decision provides some insight into the exclusion from patentability under A 53 c), possible ways to circumvent this problem and the scope of protection offered by the different types of claims that are used when further medical uses are to be protected. Let tribute be paid to the patent proprietor who greatly enriched this decision by fighting like a devil and proposing a great variety of claim alternatives. *** Translated from the German (*) *** Main request – A 53(c) 1. Use of an oral monophasic dosage form comprising 0.015 to 0.020 mg of ethinylestradiol; and a gestagen selected from 0.05 to 0.075 mg of gestodene, 0.075 to 0.125 mg of levonorgestrel, 0.06 to 0.15 mg of desogestrel, 0.06 to 0.15 mg of 3-ketodesogestrel, 0.2 to 0.3 mg of norgestimate, and > 0.35 to 0.75 mg of norethisterone, for contraception for a woman of fertile age who has not yet reached the premenopause, by administering the dosage form for 23 or 24 days, starting on day one of the menstrual cycle, followed by 5 or 4 pill-free or placebo pill days, for a total of 28 days in the administration cycle. 2336 | 3398
T 1635/09 – Claims Pregnant With Meaning
K’s Law – The ebook
[3.1] Claim 1 under consideration concerns the use of an oral monophasic dosage form comprising ethinylestradiol as well as a gestagen, selected from a list of six specific compositions, for contraception for a woman of fertile age who has not yet reached the premenopause. When considering the question of whether the use under consideration is an activity which is excluded from patentability pursuant to A 53 c), first of all it has to be taken into account that, according to the established case law of the Boards of appeal, pregnancy is not an illness and, as a consequence, that contraception is not a therapeutic treatment, not even within the meaning of prevention (T 820/92 [5.2 et seq., confirmed by T 74/93 [2.2.3]) However, it has also to be noted that the purpose of use given in claim 1 “for contraception for a woman of fertile age who has not yet reached the premenopause” is not the sole criterion for the existence or absence of an exclusion from patentability (Patentierungsverbot) pursuant to A 53 c). Rather, it has to be examined whether the subject-matter of the claim taken as a whole comprises one or several therapeutic steps and/or therapeutic effects, because, as has been stated in decision T 820/92 cited by the patent proprietor, there is an exclusion from patentability pursuant to A 53 c) (and A 52(4) EPC 1973, respectively) even though they concern only part of the claimed subject-matter (see [5.3]). When analysing claim 1 it has to be noted that all active substances, the ethinylestradiol as well as each of the six gestagens, are characterised by indications of concentrations, wherein the chosen domains show that the product is a low-dose contraceptive. From the description (see paragraph [0008]) it can be seen that it is hoped that the reduction of the daily hormone dose reduces the undesirable secondary effects and that epidemiologic data confirm the desired tendency towards the improvement of low-dose compositions in view of cardiovascular complications. Moreover, paragraph [0009] of the patent specification presumes a link between the estrogen dose and the incidence of cardiovascular disorders. In this context it has to be underlined that the reduction of the concentrations of active substances does not lead to an improvement of the contraceptive efficiency but exclusively to avoiding or reducing the above mentioned secondary effects. In the above mentioned paragraph [0009] of the patent specification it is unambiguously stated that an extreme reduction of the daily estrogen dose conflicts with contraceptive efficiency and makes a satisfying cycle control difficult. Thus claim 1 under consideration indeed claims a non-therapeutic use, but at the same time the choice of the concentrations of active substances as defined in the claim results in preventing secondary effects to be expected during the non-therapeutic use. This prevention, which is anchored in claim 1 via the indication of the concentrations of active substances and which clearly is to be classified as therapeutic because of the pathologic nature of the secondary effects (e.g. cardiovascular or thrombolytic complications), is inseparably linked with obtaining the contraceptive effect, which as such is non-therapeutic. Therefore, the subject-matter of claim 1 of the main request under consideration as a whole includes a therapeutic method. According to the established case law of the Boards of appeal a claim falls under the exclusion from patentability pursuant to A 53 c) even if part of the claimed subject-matter is a method for treatment of the human or animal body by therapy (G 1/04 [6.2.1], confirmed by G 1/07 [3.2] and G 1/08 (sic) [5.6]). Therefore, claim 1 of the main request is excluded from patentability pursuant to A 53 c). [3.2] Decisions T 144/83 and T 36/83, which have been cited by the patent proprietor are not relevant for the present case, for the following reasons: T 144/83 [3.2.1] In decision T 144/83 the Board came to the conclusion that the wording of the main claim, which was directed at the use of naltrexone for improving the bodily appearance, wherein the naltrexone is orally administered until a cosmetically beneficial loss of body weight has occurred, clearly encompassed a cosmetic method and did not concern a therapeutic treatment of the human or animal body. The fact that a chemical substance has both a cosmetic and a therapeutic effect cannot render the cosmetic treatment unpatentable (see paragraphs [3-4]). It is true that naltrexone belongs to the group of opioid antagonists and is a pharmacologically highly active substance, so that one cannot exclude that there are further effects parallel to the non-therapeutic effect claimed, which further effects can indeed be of a therapeutic kind. However, this is irrelevant in the context of A 53 c) if the additional, potentially therapeutic effects can be clearly separated from the non-therapeutic use and are not covered by the claimed subject-matter. The essential difference with respect to the use claimed in claim 1 under consideration consists in that in case T 144/83 the wording of the claim encompasses only non-therapeutic uses. Naltrexone is administered to persons not suffering from obesity in sufficient doses until a cosmetically 2337 | 3398
T 1635/09 – Claims Pregnant With Meaning
K’s Law – The ebook
beneficial loss of body weight has occurred. Incidentally, if read in a reasonable and appropriate way, such a claim cannot be considered to correspond to the prevention of obesity. In contrast, claim 1 under consideration is worded so as to encompass a use wherein the non-therapeutic part is inseparably linked to a therapeutic part and the preventive-therapeutic part is an essential part of the claimed method (cf. T 290/86 [3.2]) T 36/83 [3.2.2] In case T 36/83 the Board came to the conclusion that the uses disclosed for thenoyl peroxide were of both therapeutic (acne) and cosmetic nature (comedolytic effect). As far as the admissibility if the claim directed to the cosmetic use was concerned, the Board considered that the question of whether the cosmetic use can be distinguished from the therapeutic use was essential. Based on the indications provided in the description, the Board came to the conclusion that those uses could be distinguished (see paragraph [6]). Although the cosmetic treatment could sometimes comprise a therapeutic treatment (see [6.1]), the cosmetic application assisted in skin cleansing, which the Board regarded as clearly belonging to the field of non-medical body hygiene (see [6.2]). Therefore, this situation is analogous to the situation of decision T 144/83: an exclusively cosmetic and thus nontherapeutic effect is possible and this is all that the wording of claim 1 of the main request claimed. Therefore, in case T 36/83 there is no inseparable link of a non-therapeutic and a therapeutic step, such as the one found in claim 1 of the main request under consideration. [3.3] Based on this fundamental difference the decision that the subject-matter of claim 1 of the main request under consideration falls under the exclusion from patentability pursuant to A 53 c) is not contradictory with decision T 36/83. A referral to the Enlarged Board of appeal pursuant to A 112(1), as requested by the patent proprietor, is not indicated. […] Auxiliary request 1 1. Non-therapeutic use of an oral monophasic dosage form comprising 0.015 to 0.020 mg of ethinylestradiol; and a gestagen selected from 0.05 to 0.075 mg of gestodene, 0.075 to 0.125 mg of levonorgestrel, 0.06 to 0.15 mg of desogestrel, 0.06 to 0.15 mg of 3-ketodesogestrel, 0.2 to 0.3 mg of norgestimate, and > 0.35 to 0.75 mg of norethisterone, for contraception for a woman of fertile age who has not yet reached the premenopause, by administering the dosage form for 23 or 24 days, starting on day one of the menstrual cycle, followed by 5 or 4 pill-free or placebo pill days, for a total of 28 days in the administration cycle. [5] The wording of claim 1 of auxiliary request 1 differs from claim 1 of the main request in that the disclaimer “non-therapeutic” has been inserted. In a claim that comprises both therapeutic and non-therapeutic uses which can be separated on a factual, and therefore objective (gegenständlich) level, such a disclaimer allows to exclude the therapeutic uses, so that the remaining subject-matter is not concerned by the exclusion from patentability pursuant to A 53 c). However, such a disclaimer cannot define a use which necessarily comprises one or several therapeutic steps to be non-therapeutic, because the question of whether a claimed use is therapeutic or nontherapeutic is to be decided exclusively on the basis of the actions carried out during this use, or the effects obtained, respectively. As has been stated above under [3.2.1] the subject-matter of claim 1 concerns a use where a non-therapeutic part is inseparably linked to a therapeutic part and wherein the preventive-therapeutic part concerns essential features of the claimed use. Therefore, the exclusion from patentability pursuant to A 53 c) also applies to the subject-matter of claim 1 of auxiliary request 1, despite the introduction of the disclaimer “non-therapeutic”. Moreover, as the disclaimer “non-therapeutic” contradicts the use that is defined in the claim and which, when considered according to its content, is of therapeutic nature, the subject-matter of claim 1 of auxiliary request 1 does not comply with the requirements of A 84. […] Auxiliary request 2 – A 83 5. Use of a composition comprising 0.020 mg of ethinylestradiol; 2338 | 3398
T 1635/09 – Claims Pregnant With Meaning
K’s Law – The ebook
and a gestagen selected from 0.25 mg drospirenone up to a dose of drospirenone equivalent to 0.075 mg of gestodene, and 0.1 mg of cyproteron acetate up to a dose of cyproteron acetate equivalent to 0.075 mg of gestodene, for the manufacture of a medicament for an oral monophasic ovulation inhibiting dosage form for contraception for a woman of fertile age who has not yet reached the premenopause, by administering the dosage form for 23 or 24 days, starting on day one of the menstrual cycle, followed by 5 or 4 pill-free or placebo pill days, for a total of 28 days in the administration cycle. [7] The subject-matter of claim 5 of auxiliary request 2 concerns the use of a composition for the manufacture of a medicament for an oral monophasic ovulation inhibiting dosage form, wherein the quantities of active substances are as follows: 0.25 mg drospirenone up to a dose of drospirenone equivalent to 0.075 mg of gestodene, and 0.1 mg of cyproteron acetate up to a dose of cyproteron acetate equivalent to 0.075 mg of gestodene. [7.1] According to the established case law of the Boards of appeal, an invention is sufficiently disclosed only if [the disclosure] allows to carry out the [the invention] over substantially the whole claimed domain. In the present case, it has become apparent during the grant proceedings that the quantities of active substances that had been disclosed for drospirenone and cyproteron acetate (i.e. 0.1 to 0.3 mg and 0.1 to 0.2 mg, respectively, see claim 1 of the application as filed) were chosen ten times too small, as the result of an error (see submission of the then applicant dated August 25, 2003, paragraph “Amendments pursuant to R 88”), from which it can be concluded that neither drospirenone nor cyproteron acetate may be expected to have an ovulation inhibiting effect below a dose of 1 mg. This means that considerable domains of the claimed use cannot be carried out because no ovulation inhibiting effect can be obtained in the whole lower domain of concentrations (0.25 mg to about 1 mg drospirenone and 0.1 mg to about 1 mg cyproteron acetate). For this reason alone the subject-matter of auxiliary request 5 under consideration does not comply with the requirements of A 83. [7.2] Moreover it is to be noted that the skilled person is not able to determine whether a certain product has an ovulation inhibiting effect or not without carrying out time consuming trials. As a matter of fact, the skilled person not only has to face the fact that there is no ovulation inhibiting effect in the lower domain of the claimed concentrations of the active substances (see [7.1] above). He will also find that even for the determination of the upper limit trials will be required because, as will be shown hereafter, the dose of drospirenone and cyproteron acetate equivalent to 0.075 mg of gestodene, cannot be determined by simple calculation, as alleged by the patent proprietor, even if it is assumed, in favour of the patent proprietor, that the dose of both active substances mentioned above that is equivalent to 0.075 mg of gestodene can indeed be determined in proportion, based on the minimum ovulation inhibiting dose. Minimum ovulation inhibiting dose of gestodene [7.2.1] As explained by the patent proprietor […] the prior art gives varying values for the minimum ovulation inhibiting dose of gestodene, i.e. 40 μg per day in documents D24, D94, D107, D111, D 112, D120 and D121, and 30 μg per day in documents D1, D101 and D122. However, the Board cannot endorse the argument presented by the patent proprietor according to which the skilled person would immediately realize that, as far as the minimum ovulation inhibiting dose of gestodene is concerned, the first series of documents, which postulates 40 μg per day, were more reliable than documents D1, D101 and D122. It is indeed true that in said documents D1, D101 and D122 there is no description of how the minimum ovulation inhibiting dose was determined. However this appears not to be necessary because, as also pointed out by the patent proprietor, the method for its determination was well known to the skilled person. Moreover, the skilled person would take interest in document D1 because this document is recommended in the application as filed […] as reference for the determination of dose equivalents of several gestagene active substances. Faced with contradictory indications in documents that are equivalent as far as credibility is concerned, the skilled person would come to the conclusion that a series of trials was required in order to determine the correct minimum ovulation inhibiting dose of gestodene. Minimum ovulation inhibiting dose of drospirenone [7.2.2] The minimum ovulation inhibiting dose of drospirenone cannot be determined unambiguously from the prior art either and, therefore, also has to be determined experimentally by means of corresponding series of trials. In its argumentation, the patent proprietor relied in particular on document D 109 from which it can be seen that the administration of 2 mg of drospirenone over a period of 21 days did lead to an ovulation inhibiting effect, whereas this effect was not found when 1 mg were administered over the same period […]. It cannot be derived from this information that the minimum ovulation inhibiting dose of drospirenone is equal to 2 mg; it can only be derived that ovulation inhibition can certainly be obtained with a daily dose of 2 mg and that the 2339 | 3398
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minimum ovulation inhibiting dose for drospirenone is somewhere between 1 and 2 mg. Also, this conclusion is not rendered moot by “Study 2” presented in document D109, wherein the effects of a daily administration of 2 mg of drospirenone over a period of two monthly cycles were compared with an administered dose of 1 mg of cyproteron acetate over the same period. The patent proprietor referred to document D113 and argued that the minimum ovulation inhibiting dose of cyproteron acetate was found to be 1 mg and that a comparative study was meaningful only if equivalents were compared, from which the skilled person would unmistakably conclude that the minimum ovulation inhibiting dose of drospirenone was equal to 2 mg. The same would apply for “Study II” presented in document D21a. The Board is of the opinion that it is not possible to unambiguously derive from “Study 2” of document D109 or from “Study II” of document D21a that the minimum ovulation inhibiting dose is 2 mg. The purpose of both studies (Study 2 and Study II) consisted in examining the effect of the administration of drospirenone as ovulation inhibitor in view of the concentrations of sodium, potassium and aldosterone-18-glucuronide in urine, the concentrations of sodium and potassium in serum as well as the plasma renin activity and the plasma aldosterone concentration. To this purpose, it was reasonable to choose a dose with ovulation inhibiting effect and to exclude the dose of 1 mg, which did not yield the desired effect. Even if the comparison was carried out with 1 mg of cyproteron acetate, i.e. the minimum ovulation inhibiting dose of cyproteron acetate, this does not mean that for reasons of equivalence the minimum ovulation inhibiting dose of drospirenone has to be 2 mg. It is equally plausible that in both studies mentioned above, as the precise minimum ovulation inhibiting dose of drospirenone was unknown, a dose had been chosen for which an ovulation inhibition effect was certain. [7.3] It follows that for both gestodene and drospirenone the minimum ovulation inhibiting dose has to be determined experimentally. Only for cyproteron acetate the value that is uniformly defined to be 1 mg (see e.g. documents D1 […], D24 […] or D 101 […]) can be adopted. As far as these series of trials are concerned, the patent proprietor has pointed out, both during oral proceedings and in written submissions […] that for ethical reasons the trials had to be reduced to a minimum, so that the question arises whether such trials can reasonably be expected (Frage der Zumutbarkeit). In the context of reproducibility, it is often necessary to carry out trials when claims are formulated in terms of results to be obtained (aufgabenhaft) or defined via parameters and when it is not possible, without unduly limiting the claimed subject-matter, to define the subject-matter by means of concrete structural features. However, claim 5 of auxiliary request 2 under consideration is fundamentally different from this situation because a concrete active substance (drospirenone) is defined with a concentration range (Mengenbereich) that is, in principle, concrete. In such a case third parties, as a rule, do not have to carry out trials as far as reproducibility is concerned. However, in claim 5 under consideration, the upper limit of the concentration range (Mengenbereich) for drospirenone is not defined by “x mg of drospirenone” but by a “dose of drospirenone equivalent to 0.075 mg of gestodene”. By choosing this indirect definition, for which there is no necessity related to the scope of the claim, because it does not change the claimed subject-matter with respect to the direct definition via “x mg of drospirenone”, [the patent proprietor] forces third parties wishing to reproduce the claim to carry out time consuming and ethically questionable series of trials. The Board is of the opinion that when considering whether series of trials needed for reproducing a claim may be expected, the question of whether they could have been avoided is also to be taken into account. One may not expect that time consuming and ethically questionable series of trials are carried out when, as in the present case, the applicant could have defined the claimed subjectmatter by means of features which would have made said series of trials – in view of reproducibility unnecessary, without reducing the scope of the claim. For this reason also, the invention defined in claim 5 of auxiliary request 2 does not comply with the requirements of A 83. […] Auxiliary request 23 – A 123(3) 1. Use of a composition comprising 0.015 to 0.020 mg of ethinylestradiol; and a gestagen selected from 0.05 to 0.075 mg of gestodene, 0.075 to 0.125 mg of levonorgestrel, 0.06 to 0.15 mg of desogestrel, 0.06 to 0.15 mg of 3-ketodesogestrel, 0.2 to 0.3 mg of norgestimate, and > 0.35 to 0.75 mg of norethisterone, 2340 | 3398
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K’s Law – The ebook
for the manufacture of a medicament for an oral monophasic dosage form for contraception for a woman of fertile age who has not yet reached the premenopause, by administering the dosage form for 23 or 24 days, starting on day one of the menstrual cycle, followed by 5 or 4 pill-free or placebo pill days, for a total of 28 days in the administration cycle. [14] Claim 1 of auxiliary request 23 differs from claim 1 as granted in that the granted use claim was rewritten in the so-called Swiss-claim form, i.e. as a claim directed to the use of a substance or composition for the manufacture of a medicament for a certain therapeutic application. When examining whether this amendment has extended the scope of the claim, the established case law of the Boards of appeal requires that the whole set of claims as granted be taken into account. In the present case, the set of claims as granted comprises not only the use claims 1 to 8 but also product claims 9 to 19. However, as far as the concentration of ethinylestradiol of 0.015 mg to less than 0.020 mg is concerned, the subject-matter of claim 1 of auxiliary request 23, wherein ethinylestradiol is present with concentrations ranging from 0.015 to 0.020 mg, extends beyond the scope of product claims 9 to 19 as granted, where the part of ethinylestradiol is limited to 0.020 mg. [14.2] Thus it has to be checked whether the reformulation of a claim directed to the “use of an oral dosage form comprising … for contraception …” towards a claim directed to the “use of a composition comprising … for the manufacture of … an oral dosage form for contraception …” is in line with the requirements of A 123(3). In this context it is of decisive importance whether the Swiss-type claim wording is to be understood as a claim directed to (a) the use of a substance or a composition for a certain purpose, or (b) to the manufacture of a medicament. An interpretation as a use claim is not reconcilable with EBA decision G 1/83. According to this decision, a claim directed to the “use of a substance or composition for the treatment of the human or animal body by therapy” is in no way different in essential content from a claim directed to “a method of treatment of the human or animal body by therapy with the substance or composition” (G 1/83 [13]). The opinion according to which a use claim included the manufacture of a pharmaceutical product, with instructions for use in the treatment of illness (“augenfällige Herrichtung”), whereas a method claim did not, was rejected by the EBA (G 1/83 [11,17,18]). Faced with this question, the EBA found it to be justified to admit patent claims directed to a substance or composition being used for the manufacture of a medicament, even though the method of manufacture as such does not differ from a known method, wherein the same active substance is used. This is justified as follows in the third paragraph of point [21] of the reasons: “Based on the general order to grant patents anchored in A 52(1), it seems justifiable to derive the novelty of the manufacture of a substance or composition known as such from its new therapeutic use, irrespective of whether a pharmaceutical use of the substance or composition is known or not.” (emphasis by the Board) NB: This is my translation of G 1/83 (which was issued in German). The English equivalent (G 5/83) has a wording that is somewhat different from the wording of its German counterpart. Consequently, in point [21] of the reasons the Swiss-type claim form is understood as a method of manufacture, wherein, however - similar to the exceptional provision for the so-called first medical use pursuant to A 54(5) EPC 1973 – the purpose of use of the manufactured product exceptionally constitutes a feature that justifies the novelty of the method of manufacture. It was this way of looking at things alone that allowed the exclusion from patentability pursuant to A 53 c) (or A 52(4) EPC 1973) to be considered to have been overcome. If the Swisstype claim form, considered according to its content, was equivalent to a use claim within the meaning that a substance or a composition is used in order to obtain a certain technical effect, instead of being equivalent to a method of manufacture, then, according to the ratio decidendi of decision G 1/83, it would still fall under the exclusion from patentability pursuant to A 53 c) (A 52(4) EPC 1973) because it defines a method wherein the core of the invention would reside in the claimed new use, i.e. the treatment of the human or animal body by therapy, without being directed to the previous manufacture of a medicament. Thus the amendment underlying claim 1 of auxiliary request 23 has resulted in a change of category from a claim that was limited to a certain use of a product towards a claim comprising the previous manufacture of this product. When examining of a change of category of claims complies with the requirements of A 123(3), one has to compare the scope of protection offered by the claim category of the previous version of the claim to the scope of protection of the new claim category that has been introduced by the amendment (G 2/88 [4.1]) As far as the scope of protection of a manufacturing claim is concerned, as compared to [the scope of protection of] a use claim, the EBA has made the following statement in its decision G 2/88, considering in particular A 64(2): 2341 | 3398
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“A 64(2) is not directed to a patent whose claimed subject-matter is the use of a process to achieve an effect (this being the normal subject of a use claim): it is directed to a European patent whose claimed technical subject-matter is a process of manufacture of a product; the Article provides that for such a patent, protection is conferred not only upon the claimed process of manufacture, but also upon the product resulting directly from the manufacture. Thus, provided that a use claim in reality defines the use of a particular physical entity to achieve an “effect”, and does not define such a use to produce a “product”, the use claim is not a process claim within the meaning of A 64(2).” It follows that the manufacturing method claimed in claim 1 of auxiliary request 23, considered according to its content extends beyond the scope of protection of the use claims as granted: Pursuant to A 64(2), when a claim is directed to a manufacturing method, the protection conferred extends to the “products” (of whatever kind they may be) of the method, whereas a use claim does not include the manufacture of the pharmaceutical product (G 1/83 [11]) and its scope of protection, therefore, does not extend to the product that is directly obtained by the method. Therefore, the requirements of A 123(3) are not fulfilled. Auxiliary request 24 1. Monophasic dosage form comprising 0.015 to 0.020 mg of ethinylestradiol; and a gestagen selected from 0.05 to 0.075 mg of gestodene, 0.075 to 0.125 mg of levonorgestrel, 0.06 to 0.15 mg of desogestrel, 0.06 to 0.15 mg of 3-ketodesogestrel, 0.2 to 0.3 mg of norgestimate, and > 0.35 to 0.75 mg of norethisterone, for contraception for a woman of fertile age who has not yet reached the premenopause, by administering the dosage form for 23 or 24 days, starting on day one of the menstrual cycle, followed by 5 or 4 pill-free or placebo pill days, for a total of 28 days in the administration cycle. [15.1] In auxiliary request 24 the Swiss-type claim form of claim 1 of auxiliary request 23 was transformed into the corresponding purpose-limited product claim (zweckgebundener Produktanspruch), with reference to A 54(5) EPC 2000. As far as the applicability of A 54(5) EPC 2000 to the present case is concerned, it has to be taken into account that the opposed patent was granted on November 2, 2006, i.e. before entry into force of the EPC 2000. According to the transitional provisions applicable to the EPC 2000, A 54(5) is not to be applied to European patents that had been granted before the entry into force of the EPC 2000 (see OJ EPO 2007, Special edition n° 1, table on page 217). Apart from the fact that A 54(5) EPC 2000 is not applicable in the present case, which means that a claim wording of the “purpose-limited substance claim” (zweckgebundener Stoffanspruch) type would only be admissible for the first medical use, the transformation of the use claims 1 to 8 of the patent as granted into a purpose-limited product claim corresponds to an extension of the scope of protection that is inadmissible pursuant to A 123(3). This is because the latter is directed to the product itself, which means that the manufacture of the product is comprised in the scope of protection of this claim type, which is not the case for a use claim (see point [14.2]). [15.2] Concerning the determination of the scope of protection of product claims 9 to 19 as granted and its comparison with claim 1 of auxiliary request 24, which is needed for examining whether there is an inadmissible extension within the meaning of A 123(3), the Board refers to point [14.1], which also applies to the subjectmatter of claim 1 if auxiliary request 24. [15.3] Thus the subject-matter of claim 1 of auxiliary request 24 does not comply with the requirements of A 123(3). […] The patent is revoked. To read the whole decision (in German), click here.
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To have a look at the file wrapper, click here. (*) This decision is going to be published in the OJ, so a better translation will become available.
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T 822/07 – Bulb Fiction
K’s Law – The ebook
T 822/07 – Bulb Fiction 29 Mrz 2011
Making a great discovery is one thing. Transforming it into a valid patent is quite another, as can be seen in the present decision, which deals with a refusal of an application by the Examining Division (ED). As we will see, the applicant fell into the insufficiency trap. Claim 1 before the Board read as follows: A glucocorticoid receptor antagonist (GRA) for use in treating mild cognitive impairment (MCI) in a patient suffering therefrom to prevent or slow further memory impairment, wherein the patient is 45 years or older and has normal levels of cortisol for a human population of that age, wherein the patient meets the following criteria : (i) obtains at least one perfect score on the Folstein Mini Mental Status Exam in three administration of said Exam; (ii) receives a rating of 0.5 on the Clinical Dementia Rating Scale, and (iii) scores 1.5 standard deviations or more below the age- and education-adjusted normal value on a paragraph recall test; wherein the GRA preferentially binds to the GR rather than the mineralcorticoid receptor (MR) at a rate of at least 100-fold. The appellant submitted that claim 1 was drafted as purpose-delimited medical use claim. Thus, the claim sought protection for the use of any thinkable (i.e. known and/or unknown substances) GRA, which preferentially bound to the glucocorticoid receptor (GR) rather than to the mineralcorticoid receptor (MR) at a rate of at least 100fold, for the treating mild cognitive impairment (MCI) in a particular group of patients. The specific subgroup of patients defined in the claim was suffering MCI, which was a disease on its own right. Questioned by the Board, whether the treatment defined in claim 1 encompassed the treatment of MCI independently from its cause, meaning that the treatment claimed also encompassed the treatment of patients who had suffered from a stroke (without diagnostic), or suffering an untreated diabetes condition, hormonal imbalance (brain fog) etc., the appellant answered that it did. The appellant further contended that the application concerned a “break-through invention” and that claim 1 was not a reach-through claim, since the claim was not a compound “per se” claim looking for absolute product protection. The “invention” lay on the function of the substances for a particular use. The gist of the invention was the fact that the antagonist blocks GR for its natural ligand. The present invention was like a “light-bulb invention”, it came as a conclusion of observations in a variety of places in relation to the compound mifepristone, which is representative for the GRA group. That was the proof that the principle worked … [2.1] A 83 requires that the European patent application discloses the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. It is to be reminded that the content of the whole patent application including the description and the examples, has to be investigated by the skilled person in the light of the general common knowledge of the technical field involved. It is the claimed “invention” which has to be investigated. The general legal principle is that the claims define the matter for which protection is sought and the examples illustrate specific ways of performing the invention. As for the amount of technical detail needed for a sufficient disclosure, this is a matter which depends on an assessment of the facts of each particular case, such as the character of the technical field, and the actual technical detail disclosed. The presently claimed “invention” is based on an alleged new and inventive medical use of an infinite number of compounds, which encompass known and unknown substances, defined by their function as a glucocorticoid receptor antagonist (GRA) (binding preferably, by a factor of about 100-fold higher, to the glucocorticoid receptor (GR) rather than to the mineralcorticoid receptor (MR)). The medical use concerns the treatment of mild cognitive impairment (MCI) independently from its aetiology (except from the exclusion of Cushing’s syndrome) in a particular patient subgroup which is characterised by including relatively young patients (45 2344 | 3398
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years or older), not suffering from dementia (delimited in the claim by the criteria (i) to (iii)) and having normal levels of cortisol (for a population of that age). The technical effect specified in the claim is “to prevent or slow further memory impairment”. Thus, the “invention” claimed in the main request addresses the general principle that each and every GRA (binding preferentially to GR rather than to MR) is able to prevent or slow further memory impairment in the particular subgroup of patients defined in the claim, independently from the cause or origin of its cognitive impairment. Thus, there are two aspects to be investigated in relation to sufficiency of the claimed “invention” which concern the biochemical basis regarding the definition of the substance to be used as GRA (binding to GR rather than to MR) and the medical basis relating to the choice of a particular subgroup of patients to be successfully treated. These two aspects require sufficient disclosure for a credible functional link to the technical effect claimed, which is to prevent or slow further memory impairment in the particular group of patients. An inspection of the description of the application as filed shows the following passages, which have been cited by the appellant as a basis for the complete disclosure. In the general introduction, where the background is dealt with, it is stated: “Cortisol, which is secreted in response to ACTH (corticotropin), shows circadian rhythm variation, and further, is an important element in responsiveness to many physical and psychological stress. It has been proposed that, with age, the cortisol regulatory system becomes hyperactivated in some individuals, resulting in hypercortisolemia. It has additionally been postulated that high levels of cortisol are neurotoxic, particularly in the hippocampus, a brain structure that is thought to be central to the processing and temporary storage of complex information and memory” […]. On page 3, first paragraph, it can be read: “There has been no evidence prior to this invention, however, that a glucocorticoid receptor antagonist can be an effective treatment for memory impairment in a mature population, especially in patients having cortisol levels that fall within a normal range”. This statement is followed by further comments about patients in which the cortisol levels increase and about those “mature individuals who have experienced an aging-associated increase in basal cortisol levels” who “can have a level of glucocorticoid receptor activity that, with time, directly or indirectly results in impaired memory function”. However, claim 1 of the main request addresses the treatment of young patients (45 years or older) with normal levels of cortisol for their age. Therefore, the mentioned passages of the description do not disclose the intended effects and functions claimed. Additionally, at the end of the first paragraph on page 3, the compound RU486 (mifepristone) is identified as being one GRA which does not antagonise MR functions, and thus it is mentioned to be an appropriate substance for the use according to the “invention”. However, further on page 3, lines 20-21, it is stated: “There have been no studies, however, that have shown that RU486 can improve memory function”. The next paragraph on page 3 […] includes the mere statement that: “The present inventors have determined that glucocorticoid receptor antagonists such as RU486 are effective agents for specific treatment of age-associated memory impairment that is not affiliated with dementia in mature patients with normal cortisol levels”. This statement has only a declaratory nature. As regards the detailed description of the claimed “invention”, the description does not contain any model disclosing the alleged improvements in memory function attained by the use of the GRA. Neither a model based on biochemical or pharmacological in vitro assays, nor an animal model showing any beneficial effects on memory for the GRA, can be found in the description. There is also no disclosure relating to any in vivo assays, or clinical assays, irrespective of the group of MCI patients to be treated. In particular, there is a lack of disclosure in relation to the intended technical effect for the subgroup of younger patients with normal cortisol levels defined in claim 1. The statements relating to the “selective” blockade of GR by the substance to be used, without affecting the MR in order to avoid undesirable effects, are insufficient for providing a clear and complete disclosure in relation to the claimed beneficial effects on memory function in the intended medical treatment of the particular group of patients suffering from MCI. In fact, the whole description is devoid of any data which could have served to fill the gap of an insufficient disclosure. Although part number 4, […] is dedicated to “Treatment of MCI using the glucocorticoid receptor antagonists” it does not contain any specific information relating to the claimed “invention” but only refers to the 2345 | 3398
T 822/07 – Bulb Fiction
K’s Law – The ebook
general knowledge known in the pharmaceutical field for physically providing pharmaceutical formulations and dosage forms for medical use. It has to be kept in mind that the claimed “invention” relates to a particular medical use linked to an intended technical effect for which sufficient support and disclosure should have been provided in the description. The only passage cited by the appellant, when asked directly by the board during the oral proceedings, was the following: “In one embodiment, the methods of the invention use agents that act as GR antagonists, blocking the interaction of cortisol with GR, to treat or ameliorate MCI” […]. This teaching is clearly insufficient for a clear and complete disclosure of the general principle claimed, which relates to the prevention of memory impairment, or retardation of further memory impairment, in MCI patients of 45 years (or older), independently from aetiology (apart from the exclusion of patients suffering from Cushing’s syndrome) and which have normal levels of cortisol for their age. Even if considering in favour of the appellant that the description of the application as filed establishes the existence of a link between high levels of cortisol and cognitive impairment, including memory function, in the light of which the suitability of using a GRA devoid of MR activity would appear plausible, there is still a lack of sufficiency of disclosure of the “invention” claimed. The claimed “invention” for which sufficient disclosure is lacking concerns the treatment of younger patients with normal cortisol levels, suffering mild cognitive impairment deriving from unknown causes. Moreover, there is a further lack of disclosure for the technical effect relating to a memory function improvement and/or preservation in those patients. In this respect the description rather invites the skilled person to perform a scientific research program than contains a complete disclosure of the “invention” within the sense of A 83. Therefore, the main request does not meet the requirements of A 83. Since the main request fails for lack of sufficiency of disclosure (A 83) in relation to the medical treatment specified by means of the technical effect on a particular group of patients, it is not necessary to further investigate the broad functional definition given in claim 1, for identifying the compounds to be used, within the sense of A 84 (clarity and support in the description) and A 83 (in relation to the method for determining the GRA activity). As regards the appellant’s argument that the claimed invention is based on several observations in different places, unfortunately, these are not part of the content of the description. Additionally, the argument that after the present “invention” all the development went in the sense predicted in the application, had been already answered with the board’s communication sent on 29 June 2010. With said communication the board informed the appellant that, in view of the fact that the documents it had filed with its letter of 13 May 2010 have been published several years after the effective filing date of the application in suit (one of them more than nine years later), they could not serve as a basis for defining the knowledge of the skilled person at the time of the invention, nor could they be used to fill the gap of the specification in the application in suit in order to ensure a sufficient disclosure within the meaning of A 83. In relation to the alleged plausibility of the existence of a preventive beneficial effect on memory preservation owing to the hindrance of the binding of the natural ligand cortisol to GRs in the brain, a straight line should be drawn between the establishment of a scientific hypothesis or theory, which encourages scientific research to prove or disprove it, and the requirements for a clear and complete disclosure under A 83 justifying a broad patent protection, and its corresponding monopoly, for a particular medical use of an infinite number of compounds. Should you wish to read the whole decision, just click here. The file wrapper can be found here.
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T 1549/07 – What’s In Is In (*)
K’s Law – The ebook
T 1549/07 – What’s In Is In (*) 28 Mrz 2011
Thought everything had been said on late filed grounds for opposition? Well, perhaps not. The present case deals with an opposition that had been rejected by the Opposition Division (OD). But let us have a closer look at the proceedings that led to this verdict. When filing its notice of opposition, the opponent raised objections under A 100 (a), all based on one single document D1. In its summons to oral proceedings (OPs) the OD referred only to grounds of opposition under A 100 (a). In a written submission dated February 12, 2007, the opponent introduced documents D2 and D3. It explained that those documents disclosed the very same methods and, therefore, products as the opposed patent and added: “In case this is contested, the question arises whether there is [reason to raise] a ground for opposition pursuant to A 100 (b) because the disclosure is insufficient.” In its response dated April 27, 2007, the patent proprietor contested that the methods according to D1, D2 and D3 would necessarily lead to a product according to the opposed patent. It further stated: “Therefore, it is not necessary to examine the ground for opposition pursuant to A 100 (b). Moreover, no such ground was formulated (aufgeführt).” In its letter of June 28, 2007, the opponent state once more that in case the arguments of the patent proprietor in favour of novelty were accepted, then “the ground for opposition pursuant to A 100 (b) [would have] to be examined”. It also submitted results of studies (referred to as “VB1”) intended to show that the claimed effect was not reached under the conditions of example 1 of the opposed patent. As already mentioned, the OD dismissed the opposition. In its statements of grounds of appeal, the opponent contested the way in which the OD had dealt with the questions of insufficient disclosure, novelty and inventive step. In its response, the patent proprietor requested the Board not to deal with the ground for opposition pursuant to A 100 (b). In what follows the Board tackles this problem. *** Translated from the German *** Ground for opposition pursuant to A 100 (b) [1] This ground for opposition was not raised within the time limit for filing an opposition and, therefore, has to be considered as belated. This also holds true for the VB1 data. [1.1] In its opinion G 10/91, the Enlarged Board of appeal (EBA) […] has found that exceptionally, the OD may, in application of A 114(1), consider other grounds for opposition which, prima facie, in whole or in part would seem to prejudice the maintenance of the European patent. Moreover, it was decided in decision T 1002/92 that late filed evidence and corresponding arguments were to be admitted into the proceedings in exceptional cases only, if prima facie relevant reasons suggested that the late filed documents would prejudice the maintenance of the patent. Therefore, the Board of appeal notes that in principle the OD had the right to admit or introduce, respectively, both the new ground for opposition pursuant to A 100 (b) and the late filed data VB1 into the proceedings, even during the OPs.
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T 1549/07 – What’s In Is In (*)
K’s Law – The ebook
[1.2] However, the case law of the Boards of appeal of the EPO has established that when new grounds for opposition are introduced into the proceedings by the OD, this has to be done in such a way that it is ensured that the proprietor is informed not only of the new ground for opposition (i.e. the new legal basis for the opposition), but also of the legal and factual reasons (i.e. its substantiation) that substantiate the new ground: the patent proprietor has to be fully informed of the case which he has to meet, and have a proper opportunity to present comments and to prepare an appropriate defence against the new grounds for opposition (see Case Law, 6th edition, VII-D 3.2.3 c) i)). In particular, the stages (Phasen) of admission/introduction and assessment/substantiation should be treated. In principle, the parties should be informed on the new objections in writing, as soon as possible (T 433/93; T 1164/00; T 64/03). [1.3] In the present case the Board notes that the late submission and the admission of the new ground for opposition into the proceedings have not been mentioned in writing or orally. The OD has not mentioned those matters in its notification of June 2, 2006, and has never informed the patent proprietor during the opposition proceedings that it intended to introduce this new ground. In particular, it can be seen from the minutes of the OPs before the OD […] that the discussions concerned exclusively the substantiation of the ground for opposition pursuant to A 100 (b). The discussions were terminated after a pause for deliberation by the OD, via the announcement of the decision that the requirements of A 83 were fulfilled. In other words, the OD simultaneously informed the patent proprietor on the – implicit – admission of the ground for opposition pursuant to A 100 (b) and its unsuccessfulness. The late submission of the ground for opposition pursuant to A 100 (b) and of the VB1 data during the opposition proceedings has never been criticized by the patent proprietor. It can be seen from both the minutes […] and the decision […] that the patent proprietor had the possibility to comment on this ground for opposition (A 113(1)), but on the other hand, neither the decision nor the minutes of the proceedings contain indications as to which criteria and reasons determined the decision of the OD when it exercised its discretion to admit the ground for opposition pursuant to A 100 (b) and the experimental data VB1, which were filed belatedly in order to substantiate this ground for opposition, into the proceedings and whether the OD has indeed weighed the pros and cons of whether it should exercise its discretion. Considering the late submission of new legal and factual elements (rechtlicher und tatsächlicher Sachverhalte), it would have been necessary to expose the considerations that appeared relevant when weighing the pros and cons […] The question of whether the first instance has exercised its discretion according to the wrong principles, or without taking into account the right principles, or in an unreasonable way can be examined by the Board of appeal (cf. Case law, 6th edition, VII-E 6.6). [1.4] In the present case the Board has to note that the decision to introduce the new ground for opposition pursuant to A 100 (b) and to admit the VB1 data has not been justified by the OD. Therefore, the Board cannot examine which criteria were decisive for the OD’s introduction of the new ground for opposition as well as the VB1 data. Thus, the question arises whether there has been a substantial procedural violation which justifies that the decision be set aside and the case be remitted to the first instance (cf. Article 11 RPBA). As far as this question is concerned, the Board is clearly of the opinion that the insufficiently reasoned decision of the OD constitutes a procedural violation, but that it was never criticized during the OPs and has not led to a decision that adversely affects the patent proprietor. In view of this, a remittal to the first instance based on this reason only would not make any sense. Request of the [patent proprietor] concerning A 100 (b) [2] The [patent proprietor] has requested that “the ground for opposition pursuant to A 100 (b) not be dealt with any more”. [2.1] The EPC does not contain any provisions, nor does [the Board] know any other regulations (in contrast to the request to exclude certain documents from file inspection, for example) allowing to grant such a request aiming at excluding from the proceedings, at the appeal stage, a ground for opposition that has been introduced into and discussed in the proceedings. This way of proceeding has no legal basis and would violate the right of the opponent to have the competent department of the EPO examine the grounds for opposition which it has raised and which have been introduced – perhaps, wrongly (zu Unrecht) – into the proceedings (A 101(1)). [2.2] Quite to the contrary, the Board is of the opinion that this request is inadmissible, for the following reasons: [2.2.1] According to R 100(1) the provisions relating to proceedings before the department which has taken the decision impugned – here, the OD – shall apply to appeal proceedings, unless otherwise provided. In the present case, pursuant to A 101(1), the OD had the duty to examine, in accordance with the IR, whether at least one ground for opposition under A 100 prejudices the maintenance of the European patent.
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T 1549/07 – What’s In Is In (*)
K’s Law – The ebook
[2.2.2] Normally, the OD only examines the grounds for opposition which have been duly submitted and substantiated, pursuant to A 99(1) together with R 55 c) EPC 1973, i.e. in the present case, A 100 (a) together with A 54 and A 56. [2.2.3] However, in the present case the OD has decided to admit the ground for opposition pursuant to A 100 (b) into the proceedings, which, as has already been explained, is possible in application of A 114(1). […] [2.2.4] This decision of the OD has the consequence that the ground pursuant to A 100 (b) is not a “fresh ground” within the meaning of the opinion G 10/91 of the EBA. As a matter of fact, in decision G 1/95 [5.3] the EBA has declared that when opinion G 10/91 used the term “fresh ground for opposition” it intended to refer to a ground for opposition “which was neither raised and substantiated in the notice of opposition, nor introduced into the proceedings by the OD in application of A 114(1) and in accordance with the principles set out in G 10/91 [16]”. NB: Why do the Boards so often cite G 10/91, which is an empty shell referring to G 9/91? To find the reasons, you have to go to G 9/91. Consequently, as there is no “fresh” ground for opposition within the meaning of opinion G 10/91 in the appeal proceedings, there is no need for the approval of the patent proprietor in view of the introduction of the ground for opposition pursuant to A 100 (b). Thus the OD’s admission of the ground for opposition pursuant to A 100 (b) constitutes a new, additional legal basis with respect to the legal basis indicated in the notice of appeal (A 100 (a)); the opposition is now based on these grounds. [2.2.5] Moreover, the EBA has made the following statement in its opinion G 10/91: “The purpose of the appeal procedure inter partes is mainly to give the losing party the possibility of challenging the decision of the OD on its merits. It is not in conformity with this purpose to consider grounds for opposition on which the decision of the OD has not been based.” It should be noted that the impugned decision has dismissed the opposition and has maintained the patent unamended. Therefore, the patent proprietor has not been a “losing” party that could contest the decision of the OD. The fact that the OD has insufficiently reasoned its decision on the admission/introduction of the late filed ground for opposition does not alter this fact. In particular the Board of appeal is not entitled (befugt) to set aside this decision for this reason, the decision of the OD not having led to a final decision by which the patent proprietor was adversely affected. Quite to the contrary, as the OD has carried out an examination of the ground for opposition pursuant to A 100 (b), as the impugned decision has dealt with (sich auseinandersetzen) the belated ground of appeal in detail […] and as the [patent proprietor] has elaborated on this topic in its statement of grounds of appeal, the Board is clearly of the opinion that it is necessary for it to comment on this ground for opposition. [2.3] To sum up, the ground for opposition pursuant to A 100 (b) has been admitted into the proceedings by the OD and, therefore, is part of the impugned decision. Thus the ground for opposition pursuant to A 100 (b) has to be further examined by the Board of appeal and the request of the [patent proprietor] “not to deal any more” with this ground has to be dismissed by the Board of appeal. The Board then examined the evidence filed by the opponent (both the VB1 data and additional evidence VB2 filed during the appeal proceedings) and found that the factual situation had completely changed. It then pursued: [4] The present case corresponds to a somewhat unusual situation: although the new ground for opposition pursuant to A 100 (b) and the trials VB1 that had been filed belatedly by the [opponent] had been admitted into the proceedings by the OD, the OD has decided that the VB1 data did not sufficiently substantiate this ground. Thus the invention of the impugned patent was considered to have been sufficiently disclosed. Consequently, the decision of the OD to admit a late filed, supposedly prima facie highly relevant, but finally unsuccessful ground for opposition, appears not to adversely affect the patent proprietor at first sight […] However, the present case shows that this decision of the OD can entail very serious, negative consequences for the patent proprietor and could even cause the revocation of the patent, in the worst case scenario for the patent proprietor.
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T 1549/07 – What’s In Is In (*)
K’s Law – The ebook
This being said, the patent proprietor has not criticized the legitimacy (Rechtmässigkeit) of this admission during the opposition proceedings. Moreover, as the opposition was rejected, the patent proprietor had no possibility to file an appeal against this decision (A 107). However, the opponent could do so and use the appeal proceedings to further substantiate the late filed ground for opposition with new and more relevant evidence, and it has done so by filing VB2. Thus the opponent has been allowed, at a very late stage of the proceedings, well beyond the time limit for filing an opposition, to significantly extend the framework of the factual reasons for the opposition, and, consequently, its factual submissions (Sachvortrag). Therefore, it is particularly appropriate in this situation to remit the case to the first instance pursuant to A 111(1) in order to ensure that the [patent proprietor] is not deprived of an instance for examining this late submission. To read the whole decision (in German), click here. To have a look at the file wrapper, click here. (*) Austrian subtitle: Wos ligt des pickt.
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T 143/06 – Clear & Close
K’s Law – The ebook
T 143/06 – Clear & Close 26 Mrz 2011
Independent claim 1 of the main request read: An uncoated nanocomposite dense sintered silicon carbonitride ceramic cutting tool, obtainable by cold pressing a spray-dried flowable granulate of a nanosized powder of αSi3N4 and SiC, the mean particle size of α-Si3N4 and SiC being lower than 200 nm, containing an amount lower than 30% by weight of nanosized SiC particles, in the presence of an amount of from 3% to 6% of sintering aids Y2O3 and Al2O3 and of further additives consisting of polyethylene glycol with a molecular weight ranging of from 400 to 12000, by sintering the so obtained pressed products at a temperature of from 1800°C to 1900°C, for a time of from 0.5 to 2 hours and with an over-pressure of inert gas to a product having density close to the theoretical maximum and by machining the cutting tool from the so obtained sintered near net shape blank. The Examining Division (ED) had found the expressions “close” and “near” to be unclear. The Board comes to a different conclusion:
Clarity of the claims (A 84) [11] It has to be decided, whether the following features are sufficiently clear within the meaning of A 84, or not: (i) a density “close to the theoretical maximum”; (ii) “the sintered near net shape blank”. [12] As to the first feature, the board notes that neither the claims nor the description contain an indication, how close the density is in respect to the theoretical maximum. [12.1] According to the description, the sintered blanks are characterised by high densities […]. Such high densities are achieved by using the process for preparing the cutting tools set out in claims 1 and 7, respectively, particularly by cold pressing of the spray-dried flowable granulate of a nanosized powder of α-Si3N4 and SiC in the presence of Y2O3 and Al2O3 as sintering aids, followed by gaspressure assisted sintering […]. It has been found that the sintered blanks thus obtained have densities which are close to the theoretical maximum, which means that they contain little or no porosity […]. In the case of example 1, a value of 3.26 g/cm3 or “nearly 100 % of the theoretical full density” was achieved […]. Compared to the theoretical full density of 3.27 g/cm3, i.e. the theoretical density of a product having no porosity at all, this corresponds to about 99.7 % of the theoretical maximum […]. In example 2, nearly the identical result was obtained […], whereas in example 3, a density of “>98.5%”, i.e. at least 98.5 % of the theoretical maximum was found […]. [12.2] Ideally, the product of the sintering step is free of pores, so that a density of 100 % of the theoretical maximum is achieved. In practice, it will hardly be possible to reach the theoretical maximum. Minor deviations towards lower values will occur and may be tolerated, as long as the densities are “close” to the theoretical maximum. The examples 1 to 3 provide specific information on acceptable densities in terms of percents of the theoretical maximum, namely 99,7 % (examples 1 and 2) and > 98.5 % (example 3). In particular, the density of > 98.5 % in example 3 has to be regarded as representing a specific value, which is sufficiently close to the theoretical maximum of 100 %, to be qualified as acceptable. In example 1, it is stated that after analysis and characterisation, the product was “found to be fully dense (nearly 100% of the theoretical full density) and pore free” […]. Thus, the density of the product is a functional feature of the process conditions and, as such, inextricably linked to these conditions. The density of the sintered product, which is obtained whenever the claimed process is carried out, is a property of said product, as opposed to the features of the process as such. In other words, it is a technical effect or a function of the process steps set out in claims 1 and 7, respectively.
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T 143/06 – Clear & Close
K’s Law – The ebook
Having regard to the specific densities obtained in examples 1 to 3, and in the absence of any evidence to the contrary, the board is of the opinion that it is justified to assume that, whenever the process features set out in claims 1 and 7 are put into practice, the resulting densities of the products will reach values of some 98.5 % or more, compared to the theoretical maximum. Such high values may be regarded without difficulty as being “close to” 100 %. [12.3] In the board’s view it would not be appropriate to restrict the scope of the claims by defining a fixed numerical value of the minimum density, since the effect of the density on the mechanical properties of the sintered products is gradual. In this respect, the examples 1 and 3 are informative: Whereas the product of example 1 with its density of about 99.7 % of the theoretical maximum gave rise to a hardness HV5 of 1785 ± 25 and a Palmqvist toughness of 7.0 ± 0.7 MPa m1/2, the somewhat reduced density of roughly 98.5 % of the theoretical maximum of the product of example 3 led to a hardness HV5 of 1552 ± 26 and a Palmqvist toughness of 6.5 ± 0.7 MPa m1/2 […]. Under these circumstances, the relative term “close to the theoretical maximum” can be considered as sufficiently clear in the context of the application read as a whole. Therefore no objection of lack of clarity arises under A 84. [13] Another issue, which has to be examined, is whether the expression “the sintered near net shape blank” has a sufficiently clear meaning within the context of the present application, or not. In this respect, the appellant referred to page 9, lines 3 to 7 of the description, where it is stated that in order to obtain a cost-effective manufacture of ceramic cutting tools, production of “near net shape items” is required. What is meant by the term “near net shape” can be derived from the following explanation contained in the description: “For the preparation of cutting tools meeting the dimensional specifications laid down in the standard ISO products, hard metal dies of appropriate geometry and dimensions are used such that the parts after sintering are of dimensions larger, by a controlled amount, than the required final tool dimensions in order to allow for machining to precise final dimensions” […]. [13.1] For practical reasons the amount of machining, which is required for bringing the sintered blanks into the final dimensions, is kept to a minimum in order to achieve an effective manufacture of the cutting tools, while avoiding unnecessary loss of material. Therefore the sintered blanks are only slightly oversized. This is illustrated by example 4, where special care was taken to adjust the size of the pressing die and the pressing pressure to the shrinkage characteristics of the powder during firing, “such that slightly oversized cutting tool blanks were produced appropriate for the accurate diamond grinding of the standard tool geometry” […] (emphasis added by the board). [13.2] Consequently, the term “near net shape” has to be construed to mean that the dimensions of the blanks are only slightly larger than the precise final dimensions of the cutting tools. Such a definition is in conformity with the recognised terminology in the technical field of ceramics. It concurs also with relevant handbooks, for example the “Dictionary of Ceramic Science and Engineering” (H1), referred to by the appellant. There, the following definition of the term “near net shaping” is given: “Forming process designed to limit the amount of final grinding and polishing needed to meet specification” […] (emphasis added by the board). [13.3] Having regard to the considerations set out above, it is clear that, although it is desirable to limit the amount of final machining, the degree of oversizing of the blanks may vary within wide ranges. In the board’s view, it is acceptable to define the oversizing in relative terms such as “near net shape”, particularly because the degree of oversizing has no impact on the essential properties of the claimed cutting tools, namely the mechanical characteristics. [13.4] For these reasons the board is satisfied that the feature “the sintered near net shape blank” is sufficiently clear within the context of the present application, so that no objection of lack of clarity arises under A 84. [14] In the decision under appeal, the ED argued that the range of 50 to 200 nm for the particle size of the starting powder forms part of the essential features. Therefore, said range should have been included in the independent claims relating to the cutting tool and the process for its preparation. In this respect, the ED relied on a statement made by the applicant (now the appellant), according to which the present application teaches the preparation of an uncoated cutting tool material by using spray dried powder “obtained with raw materials based 2352 | 3398
T 143/06 – Clear & Close
K’s Law – The ebook
on silicon nitride - silicon carbide having a particle size distribution in the range of about 50-200 nm” […] (emphasis added by the board). [14.1] The board notes that no corresponding statement is comprised in the application. In particular, nowhere in the application there is any disclosure of a lower limit of the particle size of 50 nm. According to claims 1 and 7, respectively, a “nanosized powder of α- Si3N4 and SiC, the mean particle size of α-Si3N4 and SiC being lower than 200 nm” (emphasis added by the board) is used in the spray-drying step. [14.2] As far as the examples are concerned, it is indisputable that the treatment of the starting material in example 1 led to a nanosized powder having a mean particle size of α-Si3N4 and SiC lower than 200 nm, as required by claims 1 and 7, respectively […]. Nothing in example 1 or the remaining examples implies, however, that there was a lower limit of 50 nm of the particle size. [14.3] It follows from the foregoing, that the statement made by the applicant in its letter […], according to which the silicon nitride and the silicon carbide have a particle size distribution in the range of “about 50-200 nm”, has to be regarded merely as an indication of a typical range of the distribution of the particle size. It cannot be derived from said statement, that the value of 50 nm represents the lower limit of the particle size of α-Si3N4 and SiC, let alone that this value is an essential feature of the claimed subject-matter. [14.4] For these reasons the board is of the opinion that there is no need to include the feature of a range of 50 to 200 nm in the claims. The board observes that, in any case, the specific range of 50 to 200 nm does not have a proper basis in the application as originally filed. Thus, its incorporation into the claims would contravene A 123(2). [15] The board concludes that the set of amended claims 1 to 11 according to the main request, submitted together with the grounds of appeal, concurs with the requirements laid down in A 123(2) and A 84. Boards
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Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here.
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days,
huh?
K’s Law – The ebook
T 1349/10 - Back To Square One
T 1349/10 - Back To Square One 25 Mrz 2011
The present decision deals with appeals against the maintenance of the opposed patent by the Opposition Division (OD). The decision was signed, inter alia, by Mr M. as Chairman of the OD. Mr M. had also signed the decision of the Examining Division (ED) to grant the patent (as second examiner). Both the patent proprietor and the opponent filed appeals. The Board of appeal observed that the composition of the OD did not satisfy the requirements of A 19(2) since one of the members of the ED which granted the patent-in-suit was also the Chairman of the OD. [2] Under A 9(2) (sic), “[a]n OD shall consist of three technically qualified examiners, at least two of whom shall not have taken part in the proceedings for grant of the patent to which the opposition relates. An examiner who has taken part in the proceedings for the grant of the European patent may not be the Chairman.” (emphasis added) [3] In the present case, the Chairman of the OD had taken part in the proceedings for the grant of the opposed patent when he signed Form 2035.4 (dated 14 December 2006) which established the text of the patent to be granted. For this reason, the composition of the OD violated A 19(2), second sentence. [4] Violations of A 19(2) are considered to be substantial procedural violations which led to a remittal of the case under A 111(1) and to the reimbursement of the appeal fee in several cases (see decisions T 251/88, T 939/91, T 382/92, T 476/95, T 838/02). [5] The Board is aware that in two of the cases mentioned above (T 251/88 and T 838/02), the boards asked the appellant or all parties whether they invoked the procedural violation before they decided on the remittal. In both cases, the patent had been revoked by the OD. In the judgment of this Board, violations of A 19(2) should lead to a remittal regardless of the parties’ position at least in situations where third parties are affected by the outcome of the defective first instance proceedings, like in the present case where the patent was maintained in the opposition proceedings. [6] The decision under appeal therefore has to be set aside and the case has to be remitted to the department of first instance. [7] The requests of Appellant 1 with regard to the location of possible oral proceedings (OPs) before the OD after remittal of the case and the auxiliary request of Appellant 2 for OPs relate to issues that have to be decided by the OD and should therefore be addressed to the OD. Should you wish to read the whole decision, click here. The file wrapper can be found here.
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T 1259/09 – No Party
K’s Law – The ebook
T 1259/09 – No Party 24 Mrz 2011
The present appeal was filed against a decision of the Examining Division (ED) not to correct a decision for grant pursuant to R 140. The mention of grant of the patent under consideration was published on May 30, 2007. Three notices of opposition were filed. One of the notices of opposition was filed in common by Premium Aircraft Interiors Group Limited and Premium Aircraft Interiors UK Limited (hereinafter referred to as “Premium”). With a letter dated November 5, 2008 Premium requested a correction of the decision to grant pursuant to R 140, by deleting GB from the list of designated Contracting States. In the heading of their letter, Premium was indicated as “opponent”. With a brief communication dated February 23, 2009, the Opposition Division (OD) informed all parties to the opposition proceedings as follows: “The request for correction of the decision to grant a European patent in respect of GB has been forwarded to the ED who had taken the decision. It will consider of its own motion, instigated by a letter from a third party, whether the decision should be corrected. Please note however that the EPO is bound by its decisions and that in decisions of the EPO only linguistic errors, errors of transcription and obvious mistakes may be corrected (R 140). No separate communication to the third party will be issued in this respect.” On April 17, 2009 the OD posted further brief communications referring to the request for correction, stating, inter alia, that “the ED has noted that after examination of the designation of GB on the basis of the documents on file and their treatment in the course of examination proceedings it had come to the conclusion, that it was not necessary to correct the decision with regard to GB” and the reasons for this statement were set out in brief. The communication had no indication of the addressee and was signed by all three examiners of the ED.
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T 1259/09 – No Party
K’s Law – The ebook
On June 15, 2009 Premium filed a notice of appeal “against the decision communicated by the EPO with the communication dated April 17, 2009” and paid the appeal fee on the same day. In what follows, the Board deals with the admissibility of this appeal. [2] A 107 EPC 1973 determines the persons entitled to appeal and to be parties to appeal proceedings. Only parties involved in the first instance proceedings before the EPO have the right to file an appeal provided they were adversely affected by the decision of the department of first instance (A 107, first sentence EPC 1973). [3] The appellants assert that the communication dated 17 April 2009 constituted an appealable decision of the ED on their request for correction and, therefore, they were a party to the first instance proceedings within the meaning of A 107, first sentence EPC 1973. [4] It is undisputed in the present proceedings that the ED has the competence to correct its own decision to grant under R 140 EPC (identical with former R 89 EPC 1973) (see G 8/95), even in situations where opposition proceedings are pending (T 226/02, T 268/02 and T 79/07). [5] The dispute at issue is whether the appellants, by filing their request for correction, initiated proceedings before the ED which were separate from the ex parte examination proceedings with the consequence that the appellants had become a party to the proceedings before the ED. [6] In its decision G 8/95 [3.3-4] the Enlarged Board of Appeal (EBA) concluded that a party’s request for correction of the decision to grant concerns the grant of the patent and that therefore the decision on the correction must also concern the grant of the patent within the meaning of A 21(3)(a) EPC 1973, since it is the request of the party which defines the subject of the dispute. With regard to the subject of the dispute in the second instance, the EBA ruled that the decisive criterion in A 21(3)(a) EPC 1973 is not that the decision under appeal is the decision to grant itself, but that it is sufficient for the decision to “concern” the grant and that this must necessarily be the case if the subject of the decision is the text in which the patent is to be or has been granted, since this is the result of the substantive examination and defines the rights conferred by the patent ([4]).
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T 1259/09 – No Party
K’s Law – The ebook
The EBA concluded that the technical boards of appeal as defined in A 21(3)(a) and (b) EPC 1973 have to decide on appeals from a decision of an ED refusing a request under R 89 EPC 1973 for correction of the decision to grant ([6]). [7] From this reasoning of the EBA the present board draws the conclusion that a positive or negative decision of an ED on a correction of the grant decision under R 140 concerns the grant of a patent in examination proceedings. Thus proceedings concerning a correction of the grant decision are a continuation or extension of the examination proceedings and not new proceedings which are separate from examination proceedings. This finding does not conflict with the appellants’ argument that R 140 belongs to Part VII of the EPC and does therefore not relate to the grant proceedings. The provisions in Part VII of the EPC and of the Implementing Regulations are rules common to all proceedings of the EPO and can therefore be applied in any proceedings provided for in the EPC. However, in the board’s view, these provisions cannot be the basis for any proceedings sui generis. [8] Examination proceedings are as a rule ex parte proceedings which involve only the applicant(s). This can be derived from several EPC provisions. A 60(3), for example, provides that the applicant is deemed to be entitled to exercise the right to a European patent in proceedings of the EPO. It is therefore the applicant who is entitled to file requests in grant proceedings before the EPO (see for example A 93(1)(b) (request for early publication), R 70(1) (request for examination) and R 71(4) (request for amendments)). It is also the applicant who receives the EPO communications regarding the European patent application (see for example R 55, 56(1), first sentence, and (2), second sentence, R 58, R 60, R 65, R 69(1), R 70(2) and A 94(3) together with R 71). [9] The provisions of the EPC foresee a few exceptional situations where, apart from the applicant, a person other than the applicant (so-called “third party”) is involved as a party in proceedings prior to the grant of the patent, with the result that such proceedings are inter partes proceedings involving opposing parties. Such a situation arises for example in the event of requests for stay of proceedings (R 14) or requests for correction of the designation of the inventor (R 21(1)). In these provisions it is clearly indicated that a third party may file the respective request. R 140 EPC, however, is silent on whether a third party may request the correction of a grant decision. Hence the general principles of third parties in examination proceedings apply. According to A 115, first sentence, third parties may present observations concerning the patentability of the invention in respect of which the application has been filed. However, third parties filing observations are not party to the proceedings before the EPO (A 115, second sentence). From this it follows that, according to A 115, third parties are not entitled to file requests in examination proceedings. Therefore, if they file a request as a third party within the meaning of A 115, they cannot expect a communication or decision from the ED on their request. Third parties cannot become a party to the examination proceedings, simply by filing a request. [10] In the present case, in the course of the opposition proceedings, the appellants, being one of the opponents, filed observations on the validity of the designation of the Contracting State GB and requested the correction of the grant decision, by deleting that designation. This can also be derived from the heading of Premium’s letter dated 5 November 2008 where Premium is indicated as “opponent”. As to this, it is important to bear in mind that opposition is an independent procedure following the grant procedure and is not to be seen as a continuation or extension of the examination procedure (see decisions G 1/84 [9]; G 9/91 and G 10/91; and for example decision T 198/88). Consequently, with respect to their observations and their request for correction, the appellants have to be considered as third parties in examination proceedings, since corrections of the grant decision concern the ex parte proceedings before the ED […]. Hence the board agrees with the respondent that the grant procedure could not become inter partes proceedings only because the appellants filed a request for correction. [11] The appellants argue that they acquired party status in examination proceedings by the way the EPO departments of first instance handled their request dated 5 November 2008. The board, however, cannot agree with the appellants.
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T 1259/09 – No Party
K’s Law – The ebook
[12] First of all, it is the board’s view that, when deciding how the actions of the first instance department are to be understood, all circumstances have to be taken into account and it has to be assessed how these actions have to be construed in good faith by a reasonable addressee taking part in proceedings with the EPO. [13] In the present case the OD forwarded Premium’s letter dated 5 November 2008 to the ED. In its communication dated 23 February 2009, the OD informed not only Premium but all parties to the pending opposition proceedings about this. In the same communication, the OD made very clear that the ED would consider of its own motion, “instigated by a letter from a third party”, whether the grant decision was to be corrected under R 140 and that no separate communication would be issued to the third party. The board considers that from this communication it should have been clear to all parties to the opposition proceedings that the letter from the opponent Premium was treated as a letter of a third party as far as the issue of correction was concerned. Moreover, the board notes that the appellants have not objected to the communication in first instance proceedings. [14] Turning now to the communications of the OD dated 17 April 2009. The appellants argue that the communication notified to them constituted an appealable decision since not its form but its content was decisive. It is indeed established jurisprudence of the Boards of Appeal that whether a document issued by the EPO constituted a decision or a communication depends on the substance of its content, not on its form or heading (see for example J 8/81; J 2/93; T 222/85, T 55/90). However, the criterion of substance has to be assessed in its procedural context (T 713/02 [2.1.4]). [15] The communication dated 17 April 2009 which was notified to the appellants by the OD differs from that which was notified to the other parties on the same day. The only difference which can be found is that the wording of the subject of the communication sent to Premium refers to “your request for correction” instead of “request for correction”. The board considers that this difference is a logical consequence of the fact that the opponents Premium filed the request for correction in opposition proceedings. As stated […] above, it was clear from the previous communication of the OD that Premium was considered as a third party with regard to its request for correction. Therefore, in its procedural context, the reference to “your request” could not be interpreted in such a way that the communication was a decision on the request. In the text of the communication reference was also made to the enclosed “communication” of the ED. The board cannot see how any recipient could draw the conclusion from this reference that a decision on the opponents’ request was enclosed. In the attached communication which was signed by all examiners of the ED there is no reference to any request. The communication does also not mention any addressee. What the text of the communication indicates is that the ED looked into the issue of the designation of the Contracting State and came to the conclusion that there was no need for a correction. It may well be that only because of the letter of the third party the ED came to this conclusion. In the board’s view it is the normal mechanism that third party’s observations can effect an action of the ED or even a decision. Even if the communication at issue was a decision under R 140 of the ED’s own motion, the appellants could not become party to the examination proceedings […]. Moreover the board considers that, with its communication, the ED envisaged to merely inform the OD that no correction of the grant decision would take place. This information was indeed helpful because the opposition proceedings could be continued on the basis of the patent as granted. [16] The appellants submit that it did not matter which EPO department notified the communication of the ED to the third party. This argument cannot be successful in the present case. Premium as opponents in opposition proceedings filed a request for correction which was forwarded as the observations of a third party to the ED, being the competent department for a correction of the grant decision […]. This was also indicated in the first communication of the OD. From the communications dated 17 April 2009 it was clear that all opponents and the patentee were informed on the ED’s conclusion on the designation of the Contracting State GB in the grant decision. There is no indication that the OD forwarded a decision of the ED. [17] Lastly, the board turns to the principle of good faith which is applicable pursuant to A 125 EPC 1973 in proceedings before the EPO. The board is convinced that the appellants could not have legitimately expected a decision from the ED on their request for correction since it was indicated from the outset that they were treated as a third party in this respect.
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T 1259/09 – No Party
K’s Law – The ebook
Moreover the appellants did not object to the treatment as a third party at any stage of the first instance proceedings. [18] In view of the above, the board agrees with the respondent and believes that, irrespective of whether the ED took an appealable decision within the meaning of A 106, the appellants were not a party to the proceedings before the ED and thus not entitled to file an appeal in accordance with A 107, first sentence EPC 1973. Hence the appeal must be rejected as inadmissible in accordance with R 65(1) EPC 1973. The whole decision can be found here. To have a look at the file wrapper, click here.
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T 263/07 – Rapporteurs Don’t Chat
K’s Law – The ebook
T 263/07 – Rapporteurs Don’t Chat 23 Mrz 2011
The present appeal was against the decision by the Examining Division (ED) to refuse a European patent application of the appellant on the basis that the subject-matter of the claims did not involve an inventive step. The Board issued a summons to oral proceedings (OPs) to be held on January 18, 2011. The appellant filed amended claims and stated that it would not be represented at the OPs. On January 10, 2011 a letter was received from the appellant requesting that the rapporteur telephone the appellant’s representative to discuss whether the application could be found in order for grant in accordance with one of the appellant’s requests prior to the OPs so that the OPs could be cancelled. In a communication dated January 11, 2011 the board informed the appellant that the date for OPs was maintained. OPs were held on January 18, 2011 in the absence of the appellant. The appeal was dismissed. The decision contains a noteworthy statement on the request for a telephone interview. [2.1] In the letter received on 10 January 2011 the appellant essentially requested a telephone interview with the rapporteur to discuss the allowability of the requests on file. As established in the case law of the boards of appeal, as a matter of principle, the EPC foresees the absolute right to OPs under A 116(1) EPC 1973, but not the right to a telephone interview (cf. Case Law of the Boards of Appeal of the EPO, 6th edition, 2010, VII.B.2.7.2 concerning the department of first instance, in particular). [2.2] As to appeal proceedings more specifically, Articles 4 and 5 RPBA (Rules of Procedure of the Boards of Appeal of the European Patent Office, OJ EPO 2007, 536, the wording of which remains unchanged after the entry into force of EPC 2000) provide that certain steps in the proceedings may be taken by the rapporteur. Where this is the case the rapporteur’s duties consist of either ensuring, under the board’s supervision, that the procedural rules or the directions of the board of appeal are complied with by the parties, or, where it comes to substantive matters (Article 5(3) RPBA), of acting on behalf of the board. This, in other words, implies that the other members of the board have been informed and put in the position to give an informed opinion on the action to be taken. To this end it is important that the same case is presented to all of the board’s members. If one of the board’s members were privy to evidence or arguments not available to the other members then this would be a breach of the principle of collective decision making and would be in conflict with A 21 EPC 1973; see T 1109/02 [1]. [2.3] Since the requested telephone interview could have led the rapporteur to take a position on an issue where a collective decision would have been required, or to commit the board without preliminary discussion, the request was refused as not being compatible with the above mentioned principle and rules governing appeal proceedings. [2.4] A further communication by the board after the summons to OPs was not necessary and had also not been requested by the appellant. Under R 100(2) (corresponding to A 110(2) EPC 1973 in conjunction with R 66 (1) EPC 1973) the board shall invite the parties “as often as necessary” to file observations. In the present case OPs were arranged as requested by the appellant and because it was the most efficient procedural course of action to be taken at this stage. The purpose of OPs is to give the party the opportunity to present its case and to be heard. However a party gives up that opportunity if it does not attend the OPs. By filing amended claims before the OPs and then not attending those OPs the appellant must also expect a decision based on objections which may be raised against such claims in its absence, Article 15(3,6) RPBA. In the present case the board had already raised objections regarding inter alia clarity and inventive step against the claims then on file (now auxiliary requests II and III) in the annex to the summons to OPs.
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T 263/07 – Rapporteurs Don’t Chat
K’s Law – The ebook
Since essentially the same objections also applied to the claims of the appellant’s new main request and auxiliary request I, the board considered a further communication to be unnecessary. Should you wish to have a look at the whole document, just click here. The file wrapper can be found here.
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J 7/08 – Paid
K’s Law – The ebook
J 7/08 – Paid 22 Mrz 2011
As we have seen in the previous post, the present decision deals with a request for re-establishment into the time limit for paying the renewal fee for the third year. The EPO sent a notification pursuant to R 69(1) EPC 1973 dated March 16, 2006. On May 26, 2006, the attorney-at-law representing the applicant requested reestablishment and pointed out that the renewal fee plus the additional fee had already been paid on December 23, 2005 at a German bank. Evidence for the payment was included, as well as a declaration in lieu of oath by the person who had made the payment. It was not clear why the bank had not transferred the fee to the EPO. The accountancy concerning payments and receipts was done by a tax advisors office quarterly. Therefore, the law firm could only have had feedback on a transfer that had not taken place on March 31, 2006, at the earliest, i.e. after the notification of loss of rights. The bank had declared that close to the turn of year, it happened from time to time that an order was overlooked among the great number of transfers of small amounts, because forms stuck together. The EPO refused re-establishment, pointing out that a professional representative was necessarily aware of the fact that money transfers sometimes are not carried out and that he would have had to check whether the transfer order had been executed. It was not line with the requirement of all due care to rely on the fact that the order had been filed at the bank. In what follows the Board deals with this aspect of the impugned decision: Starting point [2.1] The formalities officer has dealt with the appellant’s request as if it was a request for re-establishment, without even considering that possibly there was no need for re-establishment because the payment of the renewal fee for the third year plus additional fee can be deemed to have been carried out within the applicable time limit. If this were the case, the request for re-establishment would be pointless. However, when interpreting statements made by the applicant, the Office has to examine the objectively discernable will of the applicant and cannot pin the applicant down to the wording of statements, in particular when this leads to the applicant being adversely affected (see J 6/08 [7]). Therefore, the Board first has to examine whether the time limit for payments has been missed. Relevant legal provisions [2.2] For payments made before the entry into force of the Rules relating to fees (RRF) revised in the light of the EPC 2000, the RRF in force at that time are to be applied (see Article 2.3 of the Decision of the Administrative Council (AC) of 7 December 2006 amending the RRF, Special edition n° 1, OJ EPO 2007, p. 199 et seq.). The revised RRF entered into force on the same day as the EPC 2000 (see Article 2.1 of the Decision referred to above), i.e. on December 13, 2007. In the present case, the transfer order was made on December 23, 2005, and the time limit for the payment ended on January 31, 2006. Therefore, the RRF in force before the entry into force of the revised RRF is relevant. Article 8 of this version, which was in force between January 3, 2002 (see the Decision of the AC of 28 June, OJ EPO 2001, p. 378 et seq.) and the entry into force of the revised version, and which will be referred to as “RRF 1973” below, is entitled “Date to be considered as the date on which payment is made”. Parts of this article, which is identical to corresponding Article 7 of the RRF 2000, read as follows: (1) The date on which any payment shall be considered to have been made to the EPO shall be as follows : (a) in the cases referred to in Article 5(1)(a) and (b) : the date on which the amount of the payment or of the transfer is actually entered in a bank account or a Giro account held by the EPO ; […] (3) Where, under the provisions of paragraph 1 […], payment of a fee is not considered to have been made until after the expiry of the period in which it should have been made, it shall be
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J 7/08 – Paid
K’s Law – The ebook
considered that this period has been observed if evidence is provided to the EPO that the person who made the payment (a) […] in a contracting state within the period within which the payment should have been made : […] (ii) duly gave an order to a banking establishment or a post office to transfer the amount of the payment ; […] and (b) paid a surcharge of 10% on the relevant fee or fees, but not exceeding EUR 150 ; no surcharge is payable if a condition according to sub-paragraph (a) has been fulfilled not later than ten days before the expiry of the period for payment. (4) The EPO may request the person who made the payment to produce evidence as to the date on which a condition according to paragraph 3(a) was fulfilled and, where required, pay the surcharge referred to in paragraph 3(b), within a period to be specified by it. If he fails to comply with this request or if the evidence is insufficient, or if the required surcharge is not paid in due time, the period for payment shall be considered not to have been observed. As far as payments by bank transfer are concerned, Article 8(3)(a)(ii) RRF 1973 only requires that an order be given in due form and time. If the transferred amount reaches the EPO after the expiry of the time limit, the time limit is considered to have been observed under Article 8(4) RRF 1973 if the [party] provides evidence to the EPO - after having been requested to do so – that it fulfilled the requirements of Article 8(3)(a)(ii) RRF 1973 and paid the additional fee, if applicable. If these requirements are fulfilled the payment is deemed to have been made in time: “By paying the surcharge the person making the payment effectively buys the right to exploit the time period up until the very last day without needing to worry about the date the payment reaches the EPO.” (Singer/Stauder, Third edition, 2003, Appendix 5, Article 8 RRF, marginal number 16) Application of the relevant legal provisions [2.3.1] The Board is convinced that the appellant has established that its then representative had given a banking establishment the order to transfer the amount to be paid, in due form, within the meaning of Article 8(3)(a)(ii) RRF 1973, more than ten days before the expiry of the time limit for paying the fee. As a matter of fact, a colleague of the then representative has ordered a bank in Munich to transfer the amount due for the renewal fee for the third year plus additional fee (altogether 418 €) to the German bank account of the EPO more than five weeks before the expiry of the time limit. The evidence was provided in the form of the remittance slip stamped by the bank and of the declaration in lieu of oath that had been filed. [2.3.2] However, this money transfer had not been executed by the bank. However, when filing its request for reestablishment, the appellant has made a replacement payment by filing a cheque for deposit as payment for the renewal fee for the third year plus additional fee. This cheque was filed on May 26, 2006, together with the request for re-establishment, and was cashed by the EPO. [2.3.3] Thus the Board has to examine the question of whether a time limit for a payment is also to be deemed to have been observed within the meaning of Article 8(3) RRF 1973 if the money that has reached the EPO after the expiry of the time limit is not caused (zurückzuführen) by the original transfer order but due to another act of payment that has been made in the meantime. In decision J 22/85 the Legal Board of appeal has accepted this – albeit without any detailed justification – in a case where the applicant had cancelled the transfer order before the expiry of the time limit because it had realized that it would not be executed in due time, and had replaced it by another payment method (cheque) after expiry of the time limit. […] In view of the earlier European patent application n° 00402334.7, where the Office had accepted a replacement payment, the Board has invited the then President pursuant to Article 18 RPBA to comment [on the case]. The President explained in her answer that there were other cases where the EPO had accepted replacement payments in application of Article 7(3) RRF. This provision was intended to make it possible to exclude risks due to delays in money transfers, on which the person having made the payment had no influence, by means of payments that were ordered ten days before the expiry of the time limit for the payment at the latest. In this situation the successful realization of the payment (Eintritt des Leistungserfolges), e.g. the credit entry on an account of the EPO, was not relevant because it was outside the sphere of influence [of the person ordering the payment]. According to the President, the previous individual decisions appear to have been based on the consideration that cases in which transfer orders have not been executed, without there being any fault on behalf of the person making the payment, were not to be treated in a less favourable way than cases in which the payment transfer had been delayed. 2363 | 3398
J 7/08 – Paid
K’s Law – The ebook
[2.3.4] The Board is of the opinion that this result is appropriate. Article 8(3) RRF 1973 does not contain any limitation in time concerning the moment after the expiry of the time limit at which the delayed amount has to have reached the Office in order to maintain the legal fiction under Article 8(3) RRF 1973 that the time limit was observed. This provision only refers to the chronological relation (zeitliches Verhältnis) between the expiry of the time limit and the order for the transfer. Therefore, a payment that reaches the Office after a notification of loss of rights has been issued can still be subsumed under the wording of Article 8(3) RRF 1973. This is in line with decisions T 842/90 and J 20/00 where it was considered possible that the payment of an additional fee amounting to 10%, which was a prerequisite for considering that the payment had been made in time, be made long after the expiry of the time limit, upon invitation by the Board. The Board is of the opinion that there is no justification for distinguishing [cases] according to whether the late receipt of the payment after the expiry of the time limit was caused by the original order or whether it was obtained by means of a replacement payment, because the applicant had found out in the meantime that the original order had not been executed. As a matter of fact, in both cases the successful realization of the payment is outside the sphere of influence of the person making the payment. [2.3.5] In the present case the appellant has made a replacement payment when filing its request for reestablishment, by filing a cheque for deposit as payment for the renewal fee for the third year plus additional fee in the amount of 10% of the renewal fee. There was no need for paying another additional fee in respect of this total amount pursuant to Article 8(3)(b) RRF 1973 because the original transfer order, which had not been executed, had been given more than ten days before the expiry of the time limit. The cheque for deposit reached the EPO together with the request for re-establishment, on May 26, 2006, and was cashed by the EPO. Indeed, the applicant has paid too high an amount. As a matter of fact, it has paid an amount of 440 € (400+40) that exceeds the amount given in the EPO letter dated September 2, 2005, i.e. 418 € (380+38). However, only the payment of the amount mentioned in the letter was missed; fee increases that have taken place in the meantime are not to be taken into account. Outcome [2.4.1] As a consequence of all this, the requirements of Article 8(1)(a), 8(3)(a)(ii), second clause, RRF 1973 are fulfilled and the time limit for the renewal fee for the third year plus additional fee is deemed to have been observed. Therefore, there is no need for re-establishment, and the appellant’s request for re-establishment is pointless. Thus the corresponding fee has been paid without legal justification and is to be reimbursed. The impugned decision is to be set aside without there being any need for considering further questions of legitimacy, in particular questions of competence. [2.4.2] The amount paid in excess for the renewal fee for the third year plus additional fee, i.e. 22 € (440 € minus 418 €) has also been paid without legal justification. It has to be reimbursed, too, because this is not an insignificant amount within the meaning of Article 10(c) RRF 1973 and Article 1 of the Decision of the President of the EPO of 6 September 2001 (OJ EPO 2001, 521), which amounts to 10 €. Request for reimbursement of the appeal fee The appellant points out that the request for reimbursement of the appeal fee is justified because of the formal deficiencies of the impugned document, which did not state which department of the EPO had issued it, so that the appellant was not able to examine whether the department was competent. To the extent that this document was not a decision, the appeal fee had been paid without legal justification. Assuming the existence of a first instance decision, this decision had to be set aside because of its formal deficiencies, so that even in this case the appeal fee was to be reimbursed. For the following reasons, the Board cannot endorse this submission. As mentioned under [1.2], the impugned document dated February 13, 2008, is to be classified as a decision. Thus there was a legal justification for paying the appeal fee.
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J 7/08 – Paid
K’s Law – The ebook
The only legal basis for a possible reimbursement is R 67, first sentence, EPC 1973, or corresponding R 103(1)(a) EPC 2000. As the latter implements A 109 and A 111 EPC 2000, which are not comprised in the list of Article 1 of the Decision of the AC of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000 (Special edition n° 1/2007 OJ EPO, p. 197 et seq.), R 67, first sentence, EPC 1973 is to be applied (see T 630/08 [1]). According to this provision, the reimbursement of the appeal fee shall be ordered, inter alia, where the Board of appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation. It may be true that the impugned decision as such does not expressly state which department of the EPO has issued it. As already established by the Board (see [1.2]), it is clear from the circumstances that the formalities officer has drafted the impugned decision on behalf of the Examining Division. Therefore, the appellant’s assertion, it had been unable to check whether the decision had been issued by a competent department of the EPO is not correct. Thus the Board is unable to confirm the alleged substantial procedural violation. The Board cannot see other procedural violations, nor has the appellant submitted that there were any. It is true that the formalities officer has erroneously dealt with the appellant’s request as if it was a request for reestablishment, without checking the prerequisites of Article 8(3) RRF 1973. However, this is a material error, which is not comprised by R 67, first sentence, EPC 1973. Thus there is no reimbursement of the appeal fee pursuant to R 67 EPC 1973. The Board cannot see any other legal justification for a reimbursement. Should you wish to read the whole document, just click here. To have a look at the file wrapper, click here.
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J 7/08 – Let’s Be Formal
K’s Law – The ebook
J 7/08 – Let’s Be Formal 21 Mrz 2011
At the beginning of this case, there was a failure to pay the renewal fee for the third year. The EPO sent a notification pursuant to R 69(1) EPC 1973 dated March 16, 2006. On May 26, 2006, the attorney-at-law representing the applicant requested re-establishment and pointed out that the renewal fee plus the additional fee had already been paid on December 23, 2005 at a German bank. The request for re-establishment was refused in a document dated February 13, 2006. EPO Form 2901 was used, which comprises the paragraph headers “Decision” (Entscheidung), “Reasons for the decision” (Entscheidungsgründe) and “Information on legal remedies” (Rechtsmittelbelehrung). On the right upper margin of the form the contact details for the The Hague Office of the EPO are given in small print. Below the indication “formalities officer” (Formalsachbearbeiter) as well as a name and telephone numbers in Munich and The Hague are given. On the bottom left there was the official seal of the EPO.
(click to enlarge) The applicant’s reaction – now filed by a professional representative - was twofold. First, it contested that the document was indeed a legally effective decision, because the document was seriously deficient on a formal level: it could not be seen from the “decision” which department of the EPO had made it, which made it impossible for the applicant to check whether this department was competent. As a precaution, the applicant also filed an appeal against the “decision”. In what follows, the Board deals with the formal objection. Its musings on the substance of the decision will be the object of a forthcoming post. *** Translated from the German ***
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J 7/08 – Let’s Be Formal
K’s Law – The ebook
Starting point [1.1] The Board can only deal with the written submission of the applicant […] it has to decide on the appeal filed by way of precaution - against the document issued by the EPO on February 13, 2008. As a matter of fact, pursuant to A 21(1) EPC 1973, the Boards of appeal are responsible for the examination of appeals from the decisions of the Receiving Section, Examining Divisions (ED), Opposition Divisions and of the Legal Division. Pursuant to A 106(1) also, appeals can be filed against the decisions of these departments only. The EPO document dated February 13, 2008, therefore, would have to be a decision of one of these departments. The applicant has made it clear that, when stating that there was no “legally effective” decision, it presumed that there was no decision at all. As a matter of fact, the applicant has filed its appeal by way of precaution only and has requested that if a new first instance decision was to be taken, the arguments made in the statement of grounds of appeal be taken into account. The Board points out that it would have to leave the treatment of the applicant’s submission dated April 9, 2008 to the first instance if there was no decision. This would hold true, irrespective of the fact that the formalities agent had referred the appeal to the Board.. The existence of a decision [1.2] According to the case law of the Boards of appeal, in case of doubt, the question of whether a document constitutes a “decision” or not depends on the substance of its content and not on its form (see “Case Law of the Boards of appeal of the EPO”, 6th edition, 2010, VII.E.7.2.2, in particular J 8/81). The document under consideration here, dated February 13, 2008, deals with the applicant’s request for reestablishment into the time limit for paying the third renewal fee plus additional fee. EPO Form 2901 comprises the paragraph headers “Decision”, “Reasons for the decision” and “Information on legal remedies”. The reasons for the decision, which were annexed (EPO Form 2916) present the facts of the case, and the paragraph bearing the header “Reasons for the decision” explains why, based on the applicable law, the request of the applicant has to be refused. The document finishes with a “decision phrase” (Entscheidungsformel) which expressly rejects the request for re-establishment. It follows from all of this that the document is to be classified as a decision, both according to form and contents. The applicant is of the opinion that there is no decision because the document under consideration does not state which department of the EPO has issued it. The Board points out that pursuant to R 9(3) EPC 1973 (now R 11(3) EPC), the issuing of decisions can be entrusted to formalities officers as an allocated duty. Moreover, it can be seen from the circumstances of the present case that the formalities officer has taken the impugned decision for the ED. This follows from the following considerations: It is true that the decision does not state the department for which the formalities officer was acting. However, the “communication pursuant A 113” dated August 21, 2006, which refers to the request for re-establishment dated May 24, 2006, and which had prepared the decision under consideration, was signed by the very same formalities officer as the one [who signed] the decision under consideration (indicating the Munich telephone number that was also given in the impugned decision), expressly “in the name of the ED”. The notification of loss of rights dated March 16, 2006, was also issued by the ED, which was expressly mentioned at the end of the communication (although the letter head indicated “EPO customer service”. Therefore, it is clear that the formalities officer has also issued the impugned decision in the name of the ED. This assumption is not contradicted by the fact that the letter of the “EPO customer service” of DG1 of the EPO, dated September 2, 2005, contained a reference to A 86(2) EPC 1973 and Article 2.5 RRF 1973 concerning the payment of the renewal fee for the third year, on EPO Form 2522, without any indication of an employee. As a matter of fact, this [letter] is a voluntary service of the Office. The EPC does not contain any provision according to which the Office has to notify the applicant or its representative that fees – and, therefore, also the renewal fee for the third year – have not been paid in due time (see J 12/84 [4]). Therefore, the activities of the “EPO customer service” do not allow to draw the conclusion that the formalities officer acted for a department other than the ED when issuing the impugned decision. All these circumstances could have been known (erkennbar) by the applicant. As a consequence, its assertion that it was unable to check whether the department issuing the decision was competent is not correct. 2367 | 3398
J 7/08 – Let’s Be Formal
K’s Law – The ebook
As the formalities officer acted in the name of the ED, there is a decision of this department mentioned in A 21(1) EPC 1973 and A 106(1) EPC. This holds true, not only in view of the substance of the content, which the case law of the Boards of appeal considers decisive, but also in view of the possibility of recognizing (Erkennbarkeit) the department issuing the decision. The question of whether such a perceptibility is a prerequisite for acknowledging that [a document] is a decision may, therefore, be left open. Incidentally, it is irrelevant for the existence of a decision whether this decision has been issued in a legally effective way. A decision that is legally defective can, as a rule, only be overcome if a Board of appeal sets it aside after an appeal has been filed. Therefore, as far as the existence of a decision and the necessity of filing an appeal to set it aside are concerned, it is also irrelevant, in the present case, whether the formalities agent was indeed competent for issuing the decision. Rather, it was necessary to file an appeal so that the issued decision could possibly be set aside, as requested by the appellant. Therefore, the appeal filed by way of precaution has to be understood as an appeal and the applicant is to be considered as appellant. Whether the decision was issued by a competent department is to be examined when the allowability of the appeal is assessed. This question cannot render moot the admissibility of the appeal (T 9/00 [1a]). Outcome [1.3] As the EPO document dated February 13, 2008, is a decision, the letter of the applicant dated April 9, 2008, is to be considered as an appeal. As there are no reasons to doubt that the remaining admissibility requirements are fulfilled, the appeal against this decision is admissible. We shall have a look at the allowability of the appeal in a forthcoming post. Should you wish to download the whole document (in German), just click here. To have a look at the file wrapper, click here.
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T 1202/04 – Too General To Point
K’s Law – The ebook
T 1202/04 – Too General To Point 19 Mrz 2011
[3.1] The invention is concerned with blood processing systems, in particular with a system for the separation of whole blood on the one hand (see claim 1), and a method for collecting diluted mononuclear cells obtained from the separation of whole blood (see claim 4). [3.2] D1 discloses a system and a method for the centrifugal processing of a liquid, for example whole blood, to collect species which are sparse within the liquid, for example mononuclear cells […]. [3.3] The board regards D1 as representing the closest prior art, as did the appellant. [3.4] Starting from D1, the technical problem underlying the application may be defined as the provision of a system and a method for the separation of whole blood leading to a product of mononuclear cells which remains pure after dilution with plasma […]. [3.5] As the solution to this technical problem, the application proposes a blood processing system according to claim 1 and a method according to claim 4, characterised in that
whole blood is separated into distinct fractions of packed red blood cells, platelet-poor plasma, plateletrich plasma and mononuclear cells; thereby the process is operated under process conditions to retain platelets and mononuclear cells in the separation chamber whilst allowing for the removal of platelet-poor plasma […]; the platelet-poor plasma is collected in a first container and subsequently used for diluting the collected mononuclear cells in a second container […]; the platelet-rich plasma is a) removed in turn under conditions to retain mononuclear cells in the separation chamber; and b) eliminated from the process through a path that bypasses both the container for the platelet-poor plasma and the container for the mononuclear cells […].
[3.6] The appellant argued that the technical problem set out above is successfully solved by the claimed system and method, because only platelet-poor plasma is used to dilute the collected mononuclear cells to the desired concentration, thereby avoiding the contamination of the mononuclear cells with platelets […]. [3.7] In the absence of any evidence to the contrary, the board accepts this explanation. In particular, it is plausible to the board that the separation of the plasma into two fractions under the specific conditions set out in claim 1, namely into a platelet-rich plasma fraction and a platelet-poor plasma fraction, allows for the use of the platelet-poor plasma thus obtained for the purpose of diluting the mononuclear cells. Thus, the level of platelets in the diluted mononuclear cell product will be low. Moreover, contamination of the mononuclear cells with red blood cells is prevented by removing the latter from both the platelet constituents and the mononuclear cells […]. Therefore, the resulting product will be in a relatively pure state. Therefore, the board is satisfied that the technical problem posed is solved by the claimed subject-matter. [3.8] It remains to be decided whether the claimed solution is obvious having regard to the prior art. [3.8.1] In the blood processing system and method according to D1, the mononuclear cells are accumulated behind a barrier and, once a sufficient volume of the mononuclear cells has accumulated, they are caused to spill over the barrier into a collection well […]. During the period in which mononuclear cells are being accumulated, both platelets and plasma flow continuously past the barrier. The platelets accumulate in a well beyond the barrier. Subsequently they are removed from the blood processing system through a collect line and returned to the donor. The remaining platelet-poor plasma is collected by another collect line […]. During the collection of mononuclear cells, platelet-poor plasma is also collected at the plasma exit port […]. In the blood processing system and method of D1, platelet-poor plasma is never collected whilst both platelets and mononuclear cells are retained in the separation chamber. According to D1 platelets and platelet-poor plasma are both collected continuously whilst the mononuclear cells are being accumulated during the accumulation phase […].
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T 1202/04 – Too General To Point
K’s Law – The ebook
[3.8.2] The board agrees with the appellant’s argument according to which nothing in D1 provides an incentive to operate under specific process conditions to retain platelets and mononuclear cells in the separation chamber whilst allowing for the removal of platelet-poor plasma. [3.8.3] The board is aware of the statement contained in D1, according to which “it may also be desirable to collect some plasma in order to dilute the white blood cell collection to a desired volume before freezing it” […]. In the board’s view this statement confirms what is already known from the general technical knowledge of the skilled person, namely that plasma is a suitable diluent for the “white blood cell collection”, i.e. blood fractions containing mononuclear cells. In view of the fact that the statement referred to above is of a very general nature, it cannot be regarded as a pointer towards the solution of the technical problem underlying the present invention. [3.8.4] It follows from the above that the disclosure of D1 does not provide the skilled person with an incentive to look for the claimed system and method in order to solve the technical problem posed. [3.9] The board concludes, therefore, that the subject-matter of independent claims 1 and 4, respectively, involves an inventive step as required by A 52(1) and A 56. Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here.
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T 609/07 – Not So Trivial
K’s Law – The ebook
T 609/07 – Not So Trivial 18 Mrz 2011
The present decision concerns an appeal filed by the patent proprietor after the Opposition Division (OD) had revoked its patent. The Board rejects the main request on file because it comprises undisclosed subject-matter (A 100 c)/A 123(2)). It then deals with the first auxiliary request which contains two independent claims: 1. An implant for use within a body, said implant being made of a crosslinked ultrahigh molecular weight polyethylene having a polymeric structure of less than 45% crystallinity after irradiation sterilization as measured by DSC, so as to increase the wear resistance of said implant within the body. 8. A method of producing an implant with improved wear resistance, comprising the steps of: crosslinking a polyethylene to produce a crosslinked ultrahigh molecular weight polyethylene having a polymeric structure characterized by less than 45% crystallinity after irradiation sterilization as measured by DSC, and annealing the crosslinked ultrahigh molecular weight polyethylene to preshrink and stabilize its size before making it into an implant. The Board finds these claims to comply with the requirements of A 123(2). It then considers whether the claims, and in particular claim 8, are sufficiently disclosed. Interpretation of Claim 8 [4.1] The process of Claim 8 comprises the step of “crosslinking a polyethylene to produce a crosslinked ultrahigh molecular weight polyethylene having a polymeric structure characterized by less than 45% crystallinity after irradiation sterilization”. One way of achieving the desired crystallinity of less than 45% after irradiation sterilisation is to crosslink the polymer in a first step and to irradiate the crosslinked polymer in its solid state at a sterilisation dose in a second step (Claim 4 as filed). The crosslinking of the polymer in the first step is not carried out by irradiating the polymer in the solid state but by a method selected from (a) irradiation crosslinking of the polymer in the molten state, (b) photocrosslinking and (c) crosslinking with a free radical generating chemical (Claim 5 as filed). The first step reduces the crystallinity of the starting UHMWPE enough so that after sterilisation by irradiation (which inherently increases the crystallinity) the crystallinity is below 45%. This embodiment is clearly described in the application as filed, something that was not disputed by the parties. However, the process of Claim 8 is not restricted to this embodiment, but includes the possibility that crosslinking and sterilisation by irradiation are carried out in one and the same step, namely in the solid state. In fact, both the proprietors and the [opponent] insisted that the process of Claim 8 also includes this embodiment. This implies that Claim 8 covers process variants in which a UHMWPE is sterilised by irradiation in such a way that a crosslinked polymeric structure with less than 45% crystallinity is obtained. Applicability of and criteria established by T 435/91 and T 409/91 [4.2] Claim 8 is directed to a process which is defined by a result to be achieved, namely the provision of a crystallinity of less than 45%. Though decisions T 435/91 and T 409/91 deal with cases in which the result to be achieved is part of a product claim, the board takes the view that these decisions equally apply to process claims. This is confirmed by the statement made in T 435/91 [2.2.1, 3rd §] where it was held that “the criteria for determining the sufficiency of the disclosure are the same for all inventions, irrespective of the way in which they are defined”. As follows from these decisions (T 435/91 [2.2.1, § 5 and 6] and T 409/91 [3.5, § 2), in order for an invention claimed by means of a result to be achieved to be sufficiently disclosed, the available information must enable the skilled person to achieve the envisaged result over the whole ambit of the claim without undue difficulty.
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T 609/07 – Not So Trivial
K’s Law – The ebook
As is explicitly set out in T 409/91 [3.4, penultimate paragraph], the presence of one way of carrying out the invention therefore does not automatically imply that the invention is sufficiently disclosed. Examination of sufficiency of disclosure over the whole ambit of claim 8 [4.3.1] Based on the principles established in T 435/91 and T 409/91, it has to be analysed whether or not the specification discloses a technical concept fit for generalisation which makes available to the skilled person the host of variants encompassed by the functional definition given in Claim 8, in particular those in which the desired crystallinity is achieved via crosslinking by means of irradiation sterilisation. [4.3.2] The opposed patent contains only one embodiment which could be considered to represent an embodiment of a process where crosslinking and sterilisation are carried out simultaneously by irradiation. This is the first experiment of Example 1 […]. In this example, a UHMWPE specimen with a crystallinity of 49.2% […] is irradiated with γ-rays at a sterilisation dose of 3.4 Mrad […]. However, the crystallinity obtained by this process variant is not within the range cited in Claim 8, but significantly above the upper limit of this range (55.8% versus less than 45%). Consequently, it is evidenced by the opposed patent itself that purely applying irradiation sterilisation to crosslink a UHMWPE as covered by Claim 8 does not suffice to obtain the desired result of Claim 8. [4.3.3] Knowing that process variants in which crosslinking is effected solely by irradiation sterilisation do not give the crystallinity as required by Claim 8, the skilled person might try to modify these process variants such that a crystallinity as cited in Claim 8 is obtained. However, as was not disputed by the [patent proprietors], the opposed patent itself does not contain any teaching at all in this respect. [4.3.4] It remains to be examined whether the skilled person on the basis of his common general knowledge would have been able to modify the above-discussed process variants such as to obtain the desired crystallinity. The [patent proprietors] in this respect argued that it would have been trivial to select a UHMWPE starting material that had a sufficiently low degree of crystallinity such that, even after an increase in crystallinity caused by irradiation sterilisation, the obtained values would still be below the upper limit of the crystallinity range cited in Claim 8. The [patent proprietors] in particular referred to the UHMWPE with a crystallinity of 38% as disclosed in Table I of D10 as an example of such a starting material. However, this polyethylene represents an annealed sample […]. No information on the annealing conditions is present in D10. Furthermore, as is apparent from a comparison of the values of the polyethylenes “as received” with the values of the annealed samples in Table I of D10, the crystallinities obtained after annealing do not correlate with the crystallinities of the polyethylenes “as received”. For example, the “as received” sample with the lowest crystallinity value (54%) in Table I does not have the lowest crystallinity value after annealing. Starting from the [patent proprietors’] assumption, the skilled person would therefore have to take several measures in order to arrive at a process variant in which crosslinking by means of irradiation sterilisation leads to a crystallinity as required by Claim 8. In particular, the skilled person:
would have to realise that what needs to be done is to look for starting materials with sufficiently low crystallinity, though no guidance is present in this respect in the opposed patent; would have to realise on the basis of D10 that in order to obtain such a starting material, the material would have to be annealed; in the absence of any information available in D10 about the annealing conditions and in view of the fact that crystallinity obtained after annealing does not correlate with the initial crystallinity, would have to run a variety of annealing experiments with a variety of starting materials to find out how to obtain an annealed starting material with sufficiently low crystallinity; and despite the general teaching of the opposed patent to reduce crystallinity, would have to apply irradiation sterilisation, which inherently increases the crystallinity of the starting material.
In conclusion, it would only have been in deviation from and even in contradiction to the teaching of the opposed patent, and after a multiplicity of thought steps in combination with a variety of experiments, that the skilled person could have arrived at process variants in which crosslinking by irradiation sterilisation leads to a crystallinity as required by Claim 8. Therefore, what the [patent proprietors] consider “trivial” in fact amounts to 2372 | 3398
T 609/07 – Not So Trivial
K’s Law – The ebook
nothing less than setting up a new research program which deviates or even contradicts the teaching of the opposed patent. The method referred to by the [patent proprietors] would therefore not have been at the disposal of the skilled person when simply reading the opposed patent and using his common general knowledge. In other words, on the basis of the opposed patent and common general knowledge, the skilled person applying process variants where UHMWPE is crosslinked by means of irradiation sterilisation would not be able to obtain a crystallinity as required by Claim 8. Consequently, Claim 8 covers process variants that are insufficiently disclosed. The invention defined by this claim therefore does not meet the requirements of A 83. [4.5] This finding is in agreement with the general legal principle that the protection covered by a patent should correspond to the technical contribution to the art made by the disclosure of the invention described therein (T 435/91 [2.2.1, § 4] and T 409/91 [3.4-5]). This principle excludes the patent monopoly from being extended to subject-matter, such as the above-discussed process variants covered by Claim 8, which, after reading the patent specification, would not be at the disposal of the skilled person. [4.6] The [patent proprietors] argued during oral proceedings (OPs) that the burden of proof that Claim 8 covers embodiments that do not lead to the crystallinity required by this claim was on the [opponent]. As the [opponent] had not submitted any experimental data in this respect, the [opponent’s] burden of proof had not been discharged. The board cannot agree with this view. Additional experimental evidence does not constitute a necessary precondition for the discharge of the burden of proof. On the contrary, any such discharge of the burden of proof can be considered to have taken place as soon as evidence is available that renders a party’s position more probable than not (see T 109/91 [2.10]). As has been set out above and as was discussed at length during the OPs, this evidence exists in the present case in the form of the first experiment of Example 1 of the opposed patent. Furthermore, this evidence was even not disputed by the [patent proprietors]. More particularly, the [patent proprietors] did not question that using a starting material with a crystallinity above 45%, such as 49.2% in Example 1 of the opposed patent, and applying irradiation sterilisation will not lead to a crystallinity as required by Claim 8. Thus, the [patent proprietors’] argument cannot succeed. [4.7] In summary, the first auxiliary request is not allowable in view of A 83. Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here.
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K’s Law – The ebook
R 14/10 - Speak!
R 14/10 - Speak! 17 Mrz 2011
The present petition for review concerns decision T 147/09 revoking the European patent of the petitioner. The patent as granted contained an independent claim 1 for a waterproofing process and an independent claim 20 for the semi-manufactured product. The patent was maintained by the opposition division (OD) in amended form with product claims 1 to 19 as granted and amended process claims 20 to 24. The opponent filed an appeal. The patent proprietor requested that the patent be maintained as amended. It also filed four auxiliary requests, the first comprising an amended claim 1 and the other three each comprising an amended version of claim 20. At the oral proceedings (OPs), the discussion only concerned product claim 20 in its different versions. In the course of the proceedings the patent proprietor filed a further version of product claim 20. After this discussion but before the debate was formally closed, the Chairman read out the requests of the parties as follows: “The appellant (opponent) requested that the decision under appeal be set aside and that the European patent No. 1 307 115 be revoked ... The respondent (patentee) requested that the appeal be dismissed and the patent be maintained in the amended form held allowable by the OD, or, in the alternative, that the patent be maintained on the basis of claim 1 and claim 20 according to any of the first, second and third auxiliary requests filed with the letter of 23 April 2010, or on the basis of the further amended claim 20 according to a fourth auxiliary request filed at the OPs before the Board”. After deliberation of the Board of Appeal the decision was given that the patent was revoked. Immediately after, the patent proprietor objected that the Board had not considered its request for the maintenance of the patent based only on claims 1-19. Before closing the OPs, the Chairman dismissed this objection on the grounds that there was no identifiable request in the procedure which only contained the process claims and that the requests, which all included both the process and the product claims, had been read out prior to deliberation of the Board and the announcement of the final decision. With letter dated 7 July 2010 the patent proprietor requested a correction of the minutes to indicate that only claim 20 in its different versions was discussed during the OPs and that its request should read that the patent be “... maintained on the basis of claim 20 according to any of the first, second ...”. The Board answered that this request for correction could not be granted since the requests as recorded in the minutes and read out before the Board took its final decision were correct. The patent proprietor then filed a petition for review.
In what follows the Enlarged Board of appeal (EBA) discusses the allowability of the petition for review. [5] As follows from the facts referred to above, the Board of Appeal, when taking the decision under review, had no doubts about the requests of the petitioner. The first question to be considered is whether this position was justified by the circumstances of the case. [5.1] It is not contested by the petitioner that the Chairman of the Board of Appeal, before he declared the debate closed, read out the requests as recorded in the minutes [...]. As the petitioner pointed out, this did not mean that the claims in each request were thoroughly read one by one. Nevertheless, it is clear from the text as read out by the Chairman, that the requests contained a first, a second and a third auxiliary request filed with letter of 23 April 2010, each requesting the maintenance of the patent on the basis of a claim 1 and a claim 20, and a fourth auxiliary request concerning a further amended claim 20 filed at the OPs. As clearly follows from this text the Board of Appeal was not aware of a still further “first” auxiliary request limited to (process) claims 1 to 19 without (product) claim 20.
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K’s Law – The ebook
R 14/10 - Speak!
[5.2] The EBA cannot find fault with this view of the Board of Appeal. The petitioner’s arguments based on the letter of 23 April 2010 are not convincing in this respect. The auxiliary requests submitted with this letter were clearly marked as 1**(0), 2**(0) and 3**(0) auxiliary request, wherein the 1**(0) auxiliary request contained a (process) claim 1 and a (product) claim 20. The established system of main and auxiliary requests in the proceedings before the EPO provides that parties, when filing alternative sets of claims must indicate the order of preference for each set of claims (see e.g. Legal advice from the EPO No 15/05 (rev. 2), OJ EPO 2005, 357). Contrary to the submissions of the petitioner, this normally rules out the understanding that a request of a certain order of preference could comprise alternative sets of claims. The latter is only possible in exceptional cases, as e.g. provided for in R 138. Against this background, it would not have been reasonable for the Board of Appeal to conclude that claim 1 of the 1**(0) auxiliary request and claim 20 of the 1**(0) auxiliary request could belong to separate requests even if these claims were independent and filed on separate sheets. [5.3] On the other hand, the indications in the letter of 23 April 2010 invoked by the petitioner [...] were not sufficient to express the petitioner’s intention to present claim 1 of the 1**(0) auxiliary request alone and in isolation from claim 20 of the 1**(0) auxiliary request. In any case, the fact that the requests were read out at the end of the OPs for confirmation by the parties means that any previous requests were superseded (cf. point [6.1] below). It is to be emphasized in this respect that, according to the principle of party disposition (A113(2)), it is the applicant’s or patentee’s responsibility to define the subject-matter of the application or the patent. This responsibility cannot be shifted to the EPO or other parties to the proceedings (see e.g. T 382/96 [5.2]). [5.4] The EBA therefore finds that, in the circumstances of the present case, the Board of Appeal correctly decided on the basis of the requests as read out at the end of the OPs. [6] The petitioner further submitted that the Board of Appeal, if it had found anything in the requests to be unclear, would have had the duty to ask for clarification. Failing to do so in the case in suit was, in the petitioner’s eyes, a violation of R104(b) and misinterpreting a request constituted a substantial violation of A113(2). [6.1] The EBA agrees with the petitioner that in cases where a request of a party is considered unclear, it is the duty of the deciding body to ask for clarification before deliberation. It is therefore not necessary to have this principle confirmed by a legal opinion as requested by the petitioner. However, as already set out, the Chairman of the Board of Appeal read out the requests of the parties, before declaring the debate closed (cf. point III(e) above). He thereby acted in conformity with Article 15(5) RPBA, the aim of which is to avoid ambiguities in the parties’ request. According to the established practice, the closing of the debate then marks the last moment in the OPs at which parties can still make submissions (see decision G 12/91 [3]). Thus, if the requests as read out by the Chairman did not correspond to the petitioner’s intention, it was his duty to intervene at that point in the proceedings in order for the Board of Appeal to continue the debate on a subjectmatter restricted to independent claim 1 as a further auxiliary request. From the fact that the petitioner did not do so, the Board of Appeal could conclude that the requests as read out corresponded to the intention of the petitioner. Any violation of A 113(2) or R 104(b) by the Board of Appeal cannot be acknowledged in this connection. [6.2] The petitioner further argued that he could not know, and was therefore surprised, that the requests as read out would be interpreted as his final requests. However, the fact that the Chairman also read out the opponent’s request “that the decision under appeal be set aside and that the European patent No. 1 307 115 be revoked” [...] indicated beyond any reasonable doubt that, after the closure of the debate, the Board intended to deliberate on the patentability of independent claims 20 as discussed before and that, depending on the outcome of said deliberation, it could pronounce the revocation of the patent as a whole. [6.3] Hence, for this very reason, the fact that after deliberation the Board of Appeal did not continue the OPs with a discussion of claim 1 of the first auxiliary request alone cannot be considered as a violation of A 113(1) or (2). There is no obligation under the EPC to carry out the examination of a European patent application or patent in its entirety, i.e. in respect of all pending claims if a claim considered unallowable was maintained and no auxiliary request relating to a set of claims not comprising this unallowable claim was submitted. In such a case the application or patent fails to meet a requirement of the EPC and is open to refusal or revocation (cf. T 228/89 [4.2] referring to T 5/81 [3]). 2375 | 3398
K’s Law – The ebook
R 14/10 - Speak!
[6.4] From these reasons it follows that the Board of Appeal has not decided “infra petita” and that the condition set out in R 104(b) is not met. The petition for review is therefore clearly unallowable. Should you wish to read the whole decision, just click here. The file wrapper can be found here.
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K’s Law – The ebook
J 15/10 - Tell Me More
J 15/10 - Tell Me More 16 Mrz 2011
The present appeal is directed against the decision of the Examining Division (ED) rejecting the request of the applicant for re-establishment in relation to the period for payment of the renewal fee for the sixth year. The renewal fee for the sixth year had fallen due on June 30, 2008. On August 4, 2008, the Office sent the applicant a notice drawing his attention to the fact that the renewal fee had not been paid and that the fee, together with an additional fee, could still be validly paid within six months following the due date. However, the EPO received no payment by the expiry of that period. With a communication pursuant to R 112(1) dated February 6, 2009, the EPO informed the applicant that the application was deemed to be withdrawn. By letter received on April 6, 2009 the representative filed a request for re-establishment of rights. In his request, the applicant stated that responsibility for payment of the renewal fees had been transferred to Diamond Wood International (“DWI”), a company that had the right to use the invention. The applicant further set forth that the fees in question had remained unpaid due to a misunderstanding on the part of the owner of the right. In a letter received on July 14, 2009, the applicant maintained that responsibility for payment of the renewal fees had been transferred to DWI, and to his representative. He argued that he had exercised all due care by delegating this responsibility to a representative and the party being entitled to use the invention. He contended that his representative had been responsible for advising DWI on the due dates and amounts to be paid and that the representative had discharged his duty by sending a reminder (by e-mail) for payment on December 16, 2008. In a communication dated September 28, 2009, the applicant was informed of the intention of the ED to reject the request for re-establishment of rights. A single reminder two weeks before the final deadline for payment of the renewal and the additional fee was considered to be insufficient to meet the required standard of care. In his response received on December 7, 2009, the applicant argued that his representative had had no reason to verify payment by DWI at the end of December 2008, because the time limits for payment had been observed by DWI in the previous years. Thus, this payment arrangement had worked well up to December 2008 when DWI forgot to pay. By decision of January 27, 2010, the ED rejected the request for re-establishment of rights on the grounds that the applicant had failed to show that all due care had been taken: a single reminder two weeks before the final deadline for payment was considered to be insufficient to meet the required standard of care. Here is what the Board had to say: [3.1] Pursuant to A 122(2) and R 136(2), first sentence, the request for re-establishment of rights must state the grounds on which it is based and must set out the facts on which it relies. As a condition for the admissibility of the request, a statement of grounds which is sufficiently substantiated must be submitted within the time limit for filing the request for re-establishment of rights (J 19/05 [4]). If this requirement has been fulfilled, it is then admissible to supplement the facts on condition that the supplementary submissions do not extend beyond the framework of the previous submissions (J 5/94 [2.3]; J 19/05 [5]; T 585/08 [9]). [3.2] A request for re-establishment of rights complies with the requirement of R 136(2), first sentence, if a conclusive case is made, setting out and substantiating the grounds and facts on which the request relies. Thereby it is ascertained that the factual basis for the requested decision is not altered after the expiry of the time limit for the request (cf. J 19/05 [4-5]; T 585/08 [9]). Therefore, the request for re-establishment of rights must set forth the precise cause of non-compliance with the time limit concerned (i.e. a fact or obstacle preventing the required action within the time limit), specify at what time and under which circumstances the cause occurred and was removed, and present the core facts making it possible to consider whether all due care required by the circumstances had been taken to comply with the time limit concerned (cf. J 19/05 [4]). [3.3] In the request for re-establishment of rights dated 6 April 2009, the [applicant] merely stated that responsibility for payment of the renewal fees had been transferred to DWI, who had the right to use the 2377 | 3398
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invention. The [applicant] further set forth that the omission (i.e. non-compliance with the time limit for payment of the renewal fee) was due to a “misunderstanding” on the part of DWI. [3.4] Although the [applicant] invoked a misunderstanding as obstacle preventing payment of the renewal fee, he did not give any explanation as to of what kind the alleged misunderstanding was, nor when and under which circumstances it had occurred. Nor did he explain how the error led to the omission and why it should be considered excusable. Thus, the actual circumstances surrounding the misunderstanding that allegedly led to the omission were not addressed at all in the request for re-establishment of rights. Moreover, there were gaps in the submissions regarding the respective duties and responsibilities of the persons involved in the payment of the renewal fees. [3.5] The board cannot gather, from the submissions filed within the time limit for the request for reestablishment of rights, facts or grounds which could be considered as a conclusive explanation for the failure to observe the time limit for the payment of the renewal fee. The request relies on general statements only and contains no specific facts. Given the a priori indefinite number of possible “misunderstandings” as reasons for non-observance of the time limit, as well as the total lack of any specific facts in the request, variable explanations are conceivable as to who had misunderstood what and when this had happened. Since the submissions filed within the time limit for filing the request for re-establishment of rights do not substantiate a set of circumstances allowing to determine whether any subsequent introduction of new grounds or facts in support of the request would make out a new factual case or would as such be a complement to the submissions filed within the time limit, the latter do not satisfy the requirement for substantiation under R 136(2), first sentence. [3.6] Neither the [applicant’s] submissions dated 14 July 2009 nor his letter dated 7 December 2009 filed in response to the communications of the first instance [...] assist the [applicant’s] case. A failure to submit, within the time limit for filing the request for re-establishment, a statement of grounds containing at least the core facts on which the request relies cannot be subsequently remedied by the addition of further facts, as the case law only allows the [applicant] to supplement, but not to alter, the facts set out in the submissions made within the time limit for filing the request for re-establishment. Facts submitted only with the statement of grounds of appeal are even less able to remedy a lack of substantiation of the initial request for re-establishment of rights (J 18/98 [4, 7]). [3.7] But even if the [applicant’s] letters dated 14 July 2009 and 7 December 2009 were to be taken into consideration, these submissions would not remedy, but on the contrary would confirm, the inadequate substantiation of the initial request for re-establishment. In his letter of 14 July 2009, i.e. more than three months after the filing of the request for re-establishment and well after the expiry of the period for requesting reestablishment of rights, the [applicant] submitted as a new element of fact that his representative had been responsible for giving renewal advice to DWI. The [applicant] contended that the representative had discharged his duty by sending a reminder for payment on 16 December 2008. In response to the communication pursuant to A 113(1) dated 28 September 2009, the [applicant] introduced a further element of fact by arguing that his representative had had no reason to verify payment by DWI at the end of December 2008, because the time limit for payment had been observed by DWI in the previous years. On the other hand, the [applicant] no longer relied on a misunderstanding on the part of DWI as the reason for non-observance of the time limit. The [applicant] did not advance any other fact or obstacle that had prevented the payment of the renewal fee by DWI and could be regarded as pertinent for excusing the omission. Instead, he acknowledged in his letter of 7 December 2009 that “the payment of the renewal fee for the EP-application was forgotten by DWI”. The variation in the [applicant’s] submissions and the resulting diversity of conceivable explanations for the omission show that the initial request for re-establishment did neither set out or substantiate in sufficient detail the core facts making it possible to consider whether all due care required by the circumstances had been taken to comply with the time limit concerned. [3.8] In view of the above the board comes to the conclusion that the submissions filed by the [applicant] before the expiry of the period for requesting re-establishment of rights neither state grounds nor set out facts in support of such a request as required by R 136(2), first sentence. The request for re-establishment of rights is therefore inadmissible. The whole decision can be found here. To have a look at the file wrapper, click here.
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T 267/08 - An Original Sin
T 267/08 - An Original Sin 15 Mrz 2011
I owe the knowledge of this interesting decision to Le blog du droit européen des brevets. It illustrates that replacing one professional representative with another requires some care. Eyegate Pharma SA filed an opposition against a European patent. The opponent was represented by Mr C. of a Paris law firm. The Opposition Division (OD) finally rejected the opposition. The opponent filed an appeal against this decision. The notice of appeal was filed by Mr M. of a London law firm. On January 25, 2008, Mr M. was informed by telephone that a professional representative had to file an authorisation if the EPO had not been notified of the termination of the previous representative's authorisation. Mr M. immediately confirmed by fax that he had assumed responsibility for the conduct of the appeal proceedings and on 26 February 2008, he faxed “an authorisation signed on behalf of Eyegate Pharma SA”. This authorisation, signed by Mr Stephen From (“President and CEO”) consisted of a letter on notepaper headed “EyeGate Pharmaceuticals, Inc.” and bearing the logo “EyeGate pharma”. The text confirmed that conduct for the appeal has been transferred to Mr M. This letter contained no reference to the opponent Eyegate Pharma SA.
On May 6, 2008, both Mr M. and Mr C. were informed of amended entries in the Register of European Patents, the appointment of a representative having been registered as from 25 January 2008. On November 24, 2008 the Board warned Mr M. that the required authorisation had not been provided and invited him to file an authorisation specifically for Eyegate Pharma SA within a period of two months. He was warned that it was to be expected that the appeal would be rejected as inadmissible. On January 28, 2009, two identical fax communications were received at the EPO both containing a copy of the official EPO Form 1003 signed by Mr Stephen From, this time in his capacity as president of Eyegate Pharma SA and authorising Mr M. to act on his behalf. A “Noting of loss of rights pursuant to R 112(1)” was issued by the Board on February 18, 2010. It was held that an authorisation fulfilling the necessary requirements had not been filed and that the notice of appeal was deemed not to have been filed. During oral proceedings, Mr M. requested (i) correction under R 139 of the authorisation filed on February 26, 2008, (ii) that the noting of loss of rights dated February 18, 2010 be disregarded and (iii) that the authorisation filed on January 28, 2009 be considered as validly filed. As an auxiliary measure, it was requested that the following question be referred to the Enlarged Board of Appeal (EBA): a) If an authorisation is filed by facsimile, does the facsimile represent a copy in accordance with the Decision of the President [of the EPO dated 12 July 2007 on the filing of authorisations (OJ Special Edition 3/2007, L1, page 128)]; b) If yes, is the EPO obliged in accordance with the Decision to inform the representative that an authorisation has not been filed on the basis that a copy was filed but not the original; c) If the EPO considered a facsimile of an authorisation to be validly filed, can they then after the expiry of the original time limit raise the deficiency retrospectively without providing the representative with an opportunity to correct the deficiency. Here is the verdict of the Board: Notation [1.1] The professional representative who acted for the opponent in the proceedings before the opposition division will be referred to hereinafter as “the previous representative”.
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[1.2] The professional representative who purportedly acted for the opponent in proceedings after the notification of the decision of the opposition division will be referred to hereinafter as “the new representative”. The prescribed procedure in the present case with respect to the change of representation [2.1] In the present case, a change of representation was notified by the new representative together with the notice of appeal. The previous representative did not contact the EPO to indicate that his authorisation had terminated. [2.2] In such cases, the procedure to be followed is governed by R 152 in combination with the Decision of the President of the EPO dated 12 July 2007 on the filing of authorisations (OJ Special Edition 3/2007, L1, page 128). This decision will be referred to hereinafter as “the Decision of the President L1”. The relevant portions of these provisions may be summarised as follows: R 152(1) sets out that the President shall determine the cases in which an authorisation shall be filed. R 152(2) sets out that where a representative fails to file such an authorisation, the EPO shall invite him to do so within a period to be specified. The Decision of the President L1 states that in cases of a change of representation, and where the EPO has not been notified of the termination of the previous representative's authorisation, “the new representative must file, together with the notification of his appointment, an individual authorisation (original and one copy) or a reference to a general authorisation already on file. If he does not, he shall be requested to do so within a period to be specified by the EPO.” [2.3] Consequently, in the present case, the EPO is obliged to request the representative to file an individual authorisation or a reference to a general authorisation within a specified period. An individual authorisation must be filed as an original and one copy. Did the EPO follow the prescribed procedure? [3.1] With the telephone consultation of 25 January 2008, the new representative was informally requested by a formalities officer of the EPO to file an authorisation. No time limit was set. [3.2] In response to this informal request, the new representative filed a statement by fax on 26 February 2008. This statement was written on notepaper bearing the letterhead “EyeGate Pharmaceuticals, Inc.” and a logo “EyeGate pharma” and was signed my Mr Stephen From (“President + CEO”) confirming that responsibility for the conduct of the appeal had been transferred to the new representative. Following receipt of this statement, the change of representative was entered in the Register of European Patents with effect from 25 January 2008 and both the previous representative and the new representative were informed accordingly. [3.3] Having realised that the above-mentioned statement had not been signed in the name of the registered opponent, the Board - using EPO Form 3047 - informed the new representative that the required authorisation had not been provided and requested that an authorisation from the named opponent, namely from Eyegate Pharma S.A., be filed. A two-month time limit was set for filing any observations to this communication. [3.4] The Board accepts that EPO Form 3047 which was used to communicate this information was the incorrect form. Instead of indicating that the sanction for not providing the required authorisation would be that any procedural steps taken by the representative shall be deemed not to have been taken (in accordance with R 152(6)), EPO Form 3047 made reference to A 108 and R 101(1) and stated that the appeal would be rejected as inadmissible. Nevertheless, the Board is of the opinion that the invitation was clear and that the action called for was unmistakeable. Whether or not the correct sanction was identified is - at least in this respect - immaterial. [3.5] The new representative submitted that the information contained in EPO Form 3047 was misleading because none of the provisions cited in R 101(1) with which the appeal shall comply concern the filing of an authorisation. [3.6] However, the Board is convinced that the request provided on EPO Form 3047 to file an authorisation, this time in the name of the opposing party, did not contain any misleading information in this respect. What was required of the new representative was to file an authorisation in the name of the opponent. The instruction on the form was unambiguous, it fulfilled the legal obligation under R 152(2) to invite the representative to file a (valid) authorisation and it was indeed effective, insofar as it prompted the representative to file a copy of the authorisation, albeit by fax. Thus, the Board considers that the prescribed procedure has been followed. 2380 | 3398
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Interpretation of the Decision of the President L1 [4.1] The new representative was convinced that the Decision of the President L1 places an obligation on the EPO to explicitly request the filing of an original if this has not been submitted. Specifically, it was argued that if the new representative did not file an individual authorisation in an original version and one copy thereof, then it is this missing act which the Decision of the President L1 obliges the EPO to draw attention to. Since the EPO has never requested the filing of an original, either in respect of the authorisation filed on 28 February 2008 or in respect of the authorisation filed on 28 January 2009, the new representative was of the opinion that the EPO did not comply with the Decision of the President L1 and did not fulfil its legal obligation to request the filing of an original. Consequently, it was submitted that the Board had committed a substantial procedural violation. [4.2] The Board cannot agree that the Decision of the President L1 should be read in the sense indicated by the new representative. The Decision reads “[...] the new representative must file, together with the notification of his appointment, an individual authorisation (original and one copy) or a reference to a general authorisation already on file. If he does not, he shall be requested to do so within a period to be specified by the EPO.” This provision must be read in the light of R 152(2) EPC which sets out that where a representative fails to file an authorisation (when required to do so by the President), the EPO shall invite him to do so within a period to be specified. Thus, the Decision L1 merely amplifies the provisions of R 152(2). The Board is convinced that the Decision of the President L1 unambiguously indicates that if the new representative does not file an individual authorisation as prescribed then he shall be requested to do so within a specified period. These provisions suggest neither that the invitation to file an authorisation should explicitly refer to all formal requirements of an authorisation nor that the professional representative should repeatedly be given the opportunity to comply with these requirements. In the present case, where only a copy of the authorisation was filed in response to the invitation under R 152(2) to file an authorisation, this means that the EPO is under no legal obligation to additionally request the filing of the original. [4.3] The alleged ambiguity in the Decision of the President L1 was the basis for the proposed referral of questions (a) and (b) to the EBA. However, as shown, the Board is of the opinion that the Decision of the President L1 is itself clear and that a “uniform application of the law” is not at stake in this respect. There is therefore no basis on which to refer such questions. Legitimate expectations [5.1] The new representative submitted that the invitation of 24 November 2008, which read “the required authorisation has not been provided. An authorisation should be filed for EyeGate Pharma S.A. SPECIFICALLY”, made no reference to the need to file an original. This led him to believe that the naming of the opponent was the only defect with the authorisation. He mistakenly concluded that only the name of the authorising party had to be corrected and not the form in which the authorisation was presented. If a missing original had been a problem, then the EPO should have drawn attention to this deficiency. Referring to decision G 2/97 of the EBA, the new representative was of the opinion that the principle of protection of legitimate expectations required that “communications addressed to applicants must be clear and unambiguous, i.e. drafted in such a way as to rule out misunderstanding on the part of the addressee.” The fact that the invitation of 24 November 2008 made no reference to the necessity to file the original version of the authorisation meant that the EPO did not act in accordance with the legitimate expectations of the user. [5.1.1] The Board is of the opinion that this detail should not have to be spelled out to a professional representative: as the proprietor has insisted, the filing of a valid authorisation for Eyegate Pharma S.A. must, of necessity, entail the filing of the original, and a professional representative should know this. The Board considers that it should be sufficient to simply request that an authorisation be filed. The acceptable form of the authorisation is derivable from the Decision of the President L1. Moreover, the Decision of the 2381 | 3398
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President of the EPO dated 12 July 2007 concerning the filing of patent applications and other documents by facsimile (OJ Special Edition 3/2007, A3, page 7, Article 3) states that after the filing of an application, documents filed subsequently with the exception of authorisations and priority documents may be filed by facsimile. Furthermore, the Guidelines for Examination in the EPO, Part A, Chapter IX, 2.5 makes clear that authorisations may not be filed by fax. So it should be clear to a professional representative that a fax filing of an authorisation will not be accepted. [5.2] However, the new representative further argued that the conduct of the EPO on a previous occasion had misled him into believing that the filing of an authorisation by fax would be sufficient. In particular, with letter of 6 May 2008 both the new representative and the previous representative were notified that the appointment of a representative had been recorded in the Register of European Patents as from 25 January 2008. This was the date on which the new representative informed the EPO by telephone that he had taken charge of the case; on that occasion, the supporting documentary evidence had only been filed by fax. With reference to decisions J 27/94 and J 14/94 of the Legal Board of Appeal, the new representative argued that he had derived a legitimate expectation from this course of action and that the EPO could not now contradict its earlier conduct of the proceedings. He maintained that if the EPO had registered the change of representative in spite of the fact that the original version of the authorisation was missing, then he could not now be expected to realise just how indispensable the original version was and he could not now be expected to provide an original version when requested to file an authorisation; the path he took was to be expected in view of the history of the case. [5.2.1] It would appear to the Board that the formalities officer at that time overlooked the requirement that an original version must be filed and apparently due to this oversight, recorded the change of representative despite the missing original. The Board acknowledges that a change of representative should not have been registered without the necessary documentation having been filed in the prescribed form. Indeed, the fax filed by the new representative on 26 February 2008 was deficient in two aspects: the authorisation was not made out by the opponent and an original copy of the authorisation was not provided. Nevertheless, and although the present Board would normally not employ such strong language, the Board follows the position adopted by the Legal Board of Appeal in decision J 5/02. Here, it was held that even if the EPO provided a professional representative with incorrect information, in his capacity as professional representative, he should not have come to the conclusion that the relevant legal provisions are no longer applicable. If he did not realise that the information was incorrect, he was guilty of a fundamentally inexcusable ignorance of the law; if he did realise it was incorrect, he was not misled (reasons, section [3.2]). [5.2.2] Given that professional representatives must be expected to be acquainted with all notices published by the EPO which are relevant to patent practice, the new representative should have realised that the relevant provision - in this case, the Decision of the President L1 - explicitly requires an original copy of the authorisation to be filed and that the Decision of the President A3 forbids filing of authorisations by fax. The fact that the new representative was previously notified that the change of representative had been registered as of 25 January 2008 should not have misled him into believing that a faxed version of an authorisation would suffice. Only a “fundamentally inexcusable ignorance of the law” (J 5/02) could lead him to this conclusion. The further invitation of 24 November 2008 to file an authorisation had to be understood as an invitation to file an authorisation in the prescribed form, irrespective of any previous experience which may suggest otherwise. [5.2.3] With regard to the question (c) which the new representative requested be referred to the EBA, the Board considers that the manner in which this question is worded does not accurately reflect the situation encountered in the present case. Although a facsimile of the authorisation was (mistakenly) accepted by the EPO, a new request - with a time limit - was issued by the Board. In response to this request, a valid authorisation should have been filed in the prescribed form. The Board therefore sees no reason to refer question (c) to the EBA. As a result, and with reference to the conclusion of paragraph 4.3 above, none of the proposed questions need to be referred o the EBA. [5.3] With reference to decision J 13/90, the new representative was of the opinion that, in accordance with the principle of good faith, a warning of the failure to provide the original should have been issued, particularly in view of the fact that sufficient time remained for the deficiency to be corrected within the corresponding time limit. [5.3.1] In decision G 2/97 the EBA had to consider whether the principle of good faith imposes an obligation on the Board to inform the appellant of failure to pay the appeal fee when the notice of appeal was filed so early that the appellant could react and pay the fee in time, even though there was no indication from which it could have been inferred that the appellant would otherwise miss the time limit for payment of the fee. 2382 | 3398
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The EBA held that “the appellant could not reasonably have expected a warning that the appeal fee was missing because there was no readily identifiable indication in the appellant's notice of appeal which would have made a clarification or reminder necessary.” (reasons, section [3.4], emphasis added). Citing J 12/94 [4.1], the EBA held that “[t]he protection of legitimate expectations also requires the EPO to warn the applicant of any loss of rights if such a warning can be expected in all good faith. This presupposes that the deficiency can be readily identified by the EPO within the framework of the normal handling of the case at the relevant stage of the proceedings and that the user is in a position to correct it within the time limit” (reasons, section [4.1], emphasis added). Furthermore, “[u]sers of the European patent system have the responsibility to take all necessary steps to avoid a loss of rights.” The EBA saw “no justification for the suggestion that the principle of good faith imposes an obligation on a board to warn a party of deficiencies within the area of the party's own responsibility” (reasons, section [4.2]). [5.3.2] It has to be assumed that a professional representative is familiar with all procedural requirements and knows the form in which an authorisation should be presented. Applying the finding of the EBA in G 2/97, the current Board was under no obligation to warn a party of deficiencies in this respect, the party itself having the responsibility to take all necessary steps to avoid a loss of rights. Responsibility for filing a valid authorisation cannot be devolved to the Board. [5.3.3] However, the Board has nevertheless considered whether the deficiency could have been readily identified by the EPO within the framework of the normal handling of the case at the relevant stage of the proceedings and therefore whether it would have been appropriate to expect a warning in all good faith. A copy of the requested authorisation was received by fax on 28 January 2009, seven days before expiry of the two-month time limit set in the invitation of 24 November 2008. There was no readily identifiable indication in the accompanying letter of 28 January 2009 that the representative did not intend to file the original version of the authorisation within the next seven days. Since the filing of an original is obligatory, the Board could only assume that the original was on its way. The deficiency could not be readily identified by the EPO within the framework of the normal handling of the case at the relevant stage of the proceedings; the deficiency only became clear once the time limit had expired and no original had been filed. However, this leads to the further question of whether, knowing that authorisations may not be filed by fax, the EPO should, on receipt of the faxed version, have alerted the new representative to the fact that authorisations may not be filed by fax and that the original had not yet been filed. In the opinion of the Board, in view of the fact that clear instructions exist in two separate Decisions of the President and in the Guidelines for Examination, it is perfectly legitimate for the Board to await the arrival of the original version: this is after all the only way in which an authorisation can be validly filed. [5.3.4] Failure to explicitly request an original after the fax copy had been received cannot therefore be seen to be an omission on the part of the EPO. [5.4] Thus, the Board considers that the principle of protection of legitimate expectations cannot be relied upon in the present case and that the filing of the authorisation in the prescribed form lies within the area of the representative's own responsibility. Additional Arguments [6.1] The new representative further alleged that the EPO no longer enforces one of the requirements of the Decision of the President L1 in that a copy of the authorisation is no longer required. It was argued that “the EPO is not entitled to discriminate or place greater emphasis on one aspect of the requirements for filing authorisations to the detriment of an applicant/appellant that fails to comply with another of said requirements”. It is not necessary to take a position on this allegation since the Decision of the President A3 clearly forbids the filing of authorisations by fax. Whether or not the EPO now systematically dispenses with the need to file a copy of the authorisation is immaterial since the filing of an authorisation by fax (as performed by the new representative) is not allowable anyway.
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[6.2] The new representative drew attention to the fact that Mr Stephen From, as President and CEO of Eyegate Pharmaceuticals, Inc., can execute documents on behalf of both Eyegate Pharma S.A. and EyeGate Pharmaceuticals, Inc. It was submitted that if the Board had any doubts concerning the legal entity for which Mr From was signing, then evidence should have been requested to confirm that Mr From was in fact signing as President of Eyegate Pharma S.A. In the present case, it is immaterial who signed the authorisation and in what capacity. The problem remains that no original version of the authorisation has been filed. Whether or not evidence had been requested and/or filed to show that Mr From was indeed authorised to sign on behalf of the opponent Eyegate Pharma S.A., changes nothing in respect of the filing of an original. The request for correction of the authorisation under R 139 does not change this fact since the original version has never been filed and it is this deficiency which leads to the current finding. [6.3] The new representative also argued at length that his right to be heard had been violated since the “Noting of loss of rights pursuant to R 112(1)” (EPO Form 3061) of 18 February 2010 was issued before he had been given an opportunity to comment on the objections. This allegation derives from a fundamental misunderstanding of the procedure. R 112(1) sets out that “If the EPO notes that a loss of rights has occurred [...], it shall communicate this to the party concerned.” EPO Form 3061 is used to communicate this finding. Under R 112(2), “[i]f the party concerned considers that the finding of the EPO is inaccurate, it may, within two months of the communication under paragraph 1, apply for a decision on the matter. The EPO shall take such decision only if it does not share the opinion of the party requesting it [...]”. Thus, the “Noting of loss of rights pursuant to R 112(1)” does not constitute a decision: the decision is only taken if requested by the party concerned. Moreover, the procedure set out in R 112 has a built-in mechanism to guarantee that the party concerned will be able to present his comments before a decision is issued. The right to be heard has therefore not been violated in the present case. [7] In view of the fact that the original version of the authorisation has not been provided, the question of whether the authorisation inadequately identified the new representative due to an alleged omission of his address details, as submitted by the proprietor, may be left open. [8] To conclude, the required authorisation was not filed. The legal consequence of this is that the procedural steps taken by the new representative are deemed not to have been taken (R 152(6)). Consequently the notice of appeal is deemed not to have been filed and an appeal does not exist. In the absence of an appeal, there is no basis for payment of the appeal fee which is therefore reimbursed. [9] The Board is aware that this decision may appear particularly formalistic and disproportionately harsh. Indeed, the consequences of what may appear to a relatively trivial oversight are, in the present case, fatal for the appeal. However, the Board emphasises that the filing of an authorisation as prescribed by the Decision of the President L1 is of fundamental importance for establishing whether the EPO is dealing with the entitled representative person. The previously registered representative in this case had, at no time in the procedure, notified the EPO that he had relinquished his responsibility for the case. In the absence of any such notification, the EPO cannot continue prosecution of the proceedings with another named representative unless it has been conclusively shown that the new representative is indeed authorised to act for the party concerned. The only evidence that the EPO accepts in this respect is the original version of the authorisation. No other documentation will do. Order For these reasons it is decided that: 1. The notice of appeal of 24 January 2008 is deemed not to be filed. 2. The appeal fee is reimbursed.
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Should you wish to read the whole decision, just click here. The file wrapper can be found here.
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J 18/09 - Not Yet Pending
J 18/09 - Not Yet Pending 14 Mrz 2011
Is an international application that designates EP pending in Europe before it actually enters the European phase? Is it possible to divide it at that stage? These are questions the Board had to answer in the present decision. On July 22, 2008, the application under consideration (hereafter referred to as the “Divisional Application” and abbreviated as “DA”) was filed as a divisional application to an international application (hereafter referred to as “IA”), which designated inter alia EP and for which the EPO had allocated an EP number and had acted as ISA. The 31-month period for IA, for entering the European phase expired on July 23, i.e. one day after the filing date of DA, without the steps as required under Article 22 PCT in conjunction with R 159(1) having been taken. Consequently, the EPO issued a notification that the European application corresponding to IA was deemed to be withdrawn. As regards DA, the Receiving Section (RS) issued a communication noting a loss of rights pursuant to R 112(1) on 15 October 2008 informing the applicant that the application would not be dealt with as a divisional application because IA could not be recognised as a pending European patent application, since it had not validly entered into the European phase. The applicant requested and obtained an appealable decision. In the reasons for this decision, the RS mainly argued as follows: Under the provisions of A 76 EPC in conjunction with R 36(1) EPC, the applicant may file a divisional application in respect of any pending earlier European patent application. From this it is to be concluded that the earlier application must be a “European patent application” which is pending before the EPO. For processing an international application and for it to maintain effect under Article 11(3) PCT before the EPO, A 153(5) EPC stipulates that an international application shall be treated as a European patent application if amongst other things the conditions laid down in R 159 EPC have been fulfilled. R 159(1) EPC lays down the acts to be performed for the entering of an international application under A 153 EPC into the European phase within a time limit of 31 months from the date of filing or, if one has been claimed, from the date of priority. In the present case the necessary acts to enter into the European phase could have been performed at any time before the expiry of the 31-month time limit on 23 July 2008. As none of the acts laid down in Article 22(1) PCT and R 159(1) EPC for entry into the European phase had been taken in respect of IA when DA was filed, IA could not be regarded as a pending European patent application as required under R 36(1) EPC, which is a precondition for allowing a divisional application to be validly filed. The applicant filed an appeal against this decision. Here is the Board’s verdict: Applicable provisions [1] The Board agrees with the [applicant] and the RS that the provisions of EPC 2000 and its Implementing Regulations apply to DA and to IA. In this respect the Board refers to Article 7(1), first sentence and Article 8 of the Revision Act of 29 November 2000 (OJ EPO 2001, Special Edition No 4, 50), Article 1(5), first sentence of the Decision of the Administrative Council of 28 June 2001 and Article 2 of the Decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the EPC 2000 (OJ EPO 2007, Special Edition No 1, 89). The IA is also subject to the provisions of the PCT and its Regulations. The different opinions with respect to R 36 EPC [2] R 36(1) EPC as in force when the DA was filed reads as follows: 2386 | 3398
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J 18/09 - Not Yet Pending
The applicant may file a divisional application relating to any pending earlier European patent application. In the present case, the main question to be answered is how the term “any pending earlier European patent application” is to be understood. In the appealed decision a different conclusion was reached to that argued for by the [applicant]. [3] The [applicant] submitted that IA was at least pending between the international filing date and the last day when the time limit defined in R 159(1) EPC expired because, according to Article 11(3) PCT, an international patent application shall have the effect of a regular national application in each designated State as of the international filing date. As the time limit pursuant to R 159(1) EPC expired in the present case on 23 July 2008, the DA was validly filed on 22 July 2008. [4] The reasons in the appealed decision are mainly based on the grounds that: (a) the term “pending earlier European patent application” in R 36(1) EPC includes the requirement that the parent application must be pending before the EPO; and (b) an international application which has not fulfilled the requirements of R 159(1) EPC for entering the regional phase is not pending before the EPO and therefore cannot be considered a pending earlier European patent application pursuant to R 36(1) EPC. The meaning of the term “pending earlier European application” in R 36(1) EPC [5] The Board notes that the term “pending” in R 36(1) EPC is defined neither in the higher-ranking A 76 EPC (concerning the filing of divisional applications) nor in any other provision of the EPC. The established case law also does not provide a definition for the term “pending earlier European patent application” as a general dogmatic concept but only by reference to decisions on specific procedural situations concerning whether or not a particular application was pending. In this regard the Board points out that this wording of R 36(1) EPC is identical to the wording of the former R 25(1) EPC 1973 and, therefore, the corresponding case law can be taken into account. [6] The present Board agrees with the statement of the Legal Board of Appeal in decision J 18/04 that the term “pending earlier European patent application” in R 25 EPC 1973 did not establish a time limit having a point in time at which the pending status of an application begins and ends, but rather stipulates a substantive requirement (J 18/04 [7-8]). However, even though the term stipulates a substantive requirement and not a time limit, the requirement is still not thereby exhaustively defined and its meaning must be construed in the context of other relevant procedural provisions and in accordance with general accepted rules of interpretation and, if appropriate, in the light of the higher ranking provisions of the PCT. This is because in the case of conflict, the provisions of the PCT and its Regulations prevail over the provisions of the EPC (A 150(2), third sentence EPC). The literal interpretation of the term “pending application” indicates a procedure that has been initiated before the competent authority and is not yet completed. Thus, as a minimum requirement, proceedings must have been initiated before the competent authority. It appears to be obvious and needs no further explanation that proceedings are not initiated when an application is filed with an incompetent authority. The present Board shares the opinion of the RS that the term “pending earlier European patent application” under R 36(1) EPC includes the requirement that the application must be pending before the EPO acting as patent granting-authority according to the EPC. This can be deduced from the word “European” and the context of the EPC in which R 36 EPC is embedded. A European patent application is directed towards the grant of a European Patent on the basis of the proceedings according to the Provisions of the EPC (cf. Art. 2(1) EPC). Thus, in principle, only applications pending before the EPO can be European patent applications. The possibility of filing a European patent application not only with the EPO but also with other competent authorities as stipulated by A 75(1)(a) EPC does not change the legal fact that an application filed with one of those authorities is the subject of proceedings according to the EPC before the EPO. [7] From the foregoing it can be concluded that an international application filed according to the provisions of the PCT is pending before the competent PCT authorities (RO, ISA, IPEA), one of which may be the EPO. However, the EPO does not act as European patent granting-authority during the international phase and at this stage international applications designating EP are not regular European patent applications in accordance with
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J 18/09 - Not Yet Pending
R 36(1) EPC (which refers to “earlier European patent application[s]”) and are, therefore, not pending before the EPO but rather before an International Authority according to the PCT. This can also be deduced from Article 11(3) PCT which reads as follows: “Subject to Article 64(4), any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) and accorded an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.” If an international application (designating EP) were ipso facto a regular European patent application the legal fiction stipulated for by Article 11(3) PCT would not be necessary. Hence, in accordance with Article 11(3) PCT an international application designating EP is not as such a European patent application but only has the effect of such by virtue of the legal fiction contained in Article 11(3) PCT. Scope of the legal fiction in Article 11(3) PCT in the context of other provisions of the PCT [8] Therefore, it remains to be decided what legal consequences must be drawn from the stipulated legal fiction according to Article 11(3) PCT that an international application shall have the effect of a regular national application as of the international filing date. It must be noted that the wording of Article 11(3) PCT does not refer to the pendency of a national application but only to the legal effect resulting from a national application, e.g., the substantive rights to a specific priority, filing date or designation. This is the reason why this provision needs to contain the reference to Article 64(4) PCT, this reference acting as a restriction on the equating, for prior art purposes, of the priority date claimed under the Paris Convention with the actual filing date of the application. The [applicant] takes the view that the legal fiction of Article 11(3) PCT includes the procedural consequence that an international application is to be regarded as pending before the EPO as from the international filing date because Article 11(3) PCT contains no procedural restriction other than the reference to Article 64(4) PCT. In the Board’s view, this interpretation is incorrect and would contradict other provisions of the PCT, in particular Article 23(1) PCT, which stipulates for a delay of national procedure, and is not in line with the common understanding of the procedure under the PCT, as it will be explained in the following paragraphs. [9] The Board does not dispute that a Euro-PCT application remains the same application through both the international and European phases. However, the application is subjected to different procedures under the PCT and under the EPC. It is the very essence of the unitary filing system drawn up by the PCT that in the international phase the international application is subject to the procedural rules of the PCT and not to those of the national laws (possibly divergent from those of the PCT) which may become applicable once the international application has entered the national or regional phase before the competent national or regional office. This is also brought out by A 150(2) EPC, where it is stated: “International applications filed under the PCT may be the subject of proceedings before the EPO”. The grant-proceedings before the EPO concerning a Euro-PCT application can only be initiated either by a request for abandoning the PCT-route under Article 23(2) PCT or by performing the procedural acts stipulated by Article 22 PCT. In the present case no such request was filed nor was the required national fee (filing fee) according to Article 22(1) PCT in conjunction with R 159(1)(c) EPC paid by the [applicant]. In contrast, in case J 17/99 [3,5] referred to by the [applicant] a request for early entry into the regional phase before the EPO was filed and the necessary fees were paid […]. Thus, in that case proceedings before the EPO as European patent granting-authority were validly initiated by this request and, therefore, the legal situation was different to the present application and cannot be taken as a basis for deciding the present case. [10] The present Board has scrutinised the travaux préparatoires concerning the EPC and the amendments to the different versions of R 25(1) EPC 1973 and R 36(1) EPC respectively since the EPC entered into force. It has, however, not found any indication that the EPO or the respective law maker ever considered an international
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J 18/09 - Not Yet Pending
application which had not entered the European phase to be an earlier application pursuant to R 36(1) EPC or R 25(1) EPC 1973 respectively. Accordingly, the EPO Guidelines for Examination (A-IV, 1.1.1.1, version in force before April 2010) simply informed the public that: “A European patent application may be divided when it is pending. In order to divide a European application, the applicant files one or more European divisional applications. It is irrelevant what kind of application the European patent application which is divided, i.e. the parent application, is. The parent application could thus itself be an earlier divisional application. In the case of the parent application being a Euro-PCT application, a divisional application can only be filed once the Euro-PCT application is pending before the EPO acting as a designated or elected Office, i.e. the Euro-PCT application must have entered the European phase.” (Underlining by the Board). From this it appears that the EPO has always considered an international patent application that has not yet entered the European phase not to be a pending European patent application in the sense of R 36(1) EPC. [11] It is also the case that the Contracting States of the PCT discussed over many years the introduction of provisions into the PCT which would allow the filing of a divisional application during the international phase of an international patent application (see, e.g., WIPO, Patent Cooperation Treaty (PCT), Working Group on Reform of the Patent Cooperation Treaty, fifth Session, Geneva, November 17 to 21, 2003, Meeting Code PCT/R/WG/5/6, here). These discussions concerned the division of an international application into two different international applications under the PCT during the international phase. It is to be noted that this procedural situation is to be distinguished from the question whether or not the filing of a divisional application under the national patent law is possible when the parent application is still in the international phase. However, it is to be pointed out that the working group justified the proposed amendment to the PCT in point 11 of this document on the basis that: “Obviously, the introduction of a procedure allowing the applicant to file an international application as a divisional application of an initial international application (“divisional application”) would greatly simplify, from the applicant’s perspective, the processing of the international application where the International Searching Authority or the International Preliminary Examining Authority makes a finding of lack of unity of invention, replacing the need to individually file, after national phase entry, divisional (national) applications with each designated or elected Office concerned.” (Underlining by the Board). Apparently, the possibility of filing a national (regional) divisional application during the international phase of an international application was never considered. The same line of reasoning is repeated in point 33 of this document: “While that result could be achieved by proceeding into the national phase with the internally divided initial international application, to be followed by its division separately during the procedure before each national Office, it would be simpler to enable the initial international application to proceed into the national phase, from the outset, as separate divisional applications.” (Underlining by the Board). Both cited passages indicate that the working group took the view that as a matter of law a national (regional) divisional application relating to an initial international application can only be filed when the international application is the subject of proceedings before the national (regional) Office. This view includes the perception that an international application is not pending before the national (regional) Office before its entry into the national (regional) phase and that the pendency before the national Office is an important requirement for filing a national divisional application. [12] The EPO’s view, namely that as a matter of law an international application which has not entered the European phase is not pending before the EPO, was originally supported by the wording of A 150(3) EPC 1973, which stated that: “An international application, for which the EPO acts as designated Office or elected Office, shall be deemed to be a European patent application.”
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It is self-explanatory that the EPO could only act as designated or elected Office after an international application had entered the European phase. However, the wording of A 150(3) EPC 1973 was amended by the new A 153(2) EPC implemented by the Revision 2000 of the EPC, and now reads as follows: “An international application for which the EPO is a designated or elected Office, and which has been accorded an international date of filing, shall be equivalent to a regular European application (Euro-PCT application).” The latter wording appears to correspond better to the wording in Article 11(3) PCT but, as with that provision, does not contain any reference to the pendency of a Euro-PCT application as a European patent application. The new wording only reflects the intention of the PCT that an international patent application shall be treated as equal to a national or regional application unless specific provisions of the PCT require or allow a different treatment. The PCT’s legislative intent of equal treatment can furthermore be deduced for example from Article 48(2)(a) PCT, which stipulates that: “Any Contracting State shall, as far as that State is concerned, excuse, for reasons admitted under its national law, any delay in meeting any time limit.” However, this very same article also reflects the existence of a potentially different procedural treatment of an international application in its international phase as compared with a national application, because the benefit of a national provision excusing “any delay in meeting any time limit” cannot be claimed during the international phase but only after the international application has entered the national (regional) phase. Therefore, Article 48(2) PCT stipulates a procedural restriction not mentioned in Article 11(3) PCT. The [applicant’s] contention that the legal fiction in Article 11(3) excludes the application of procedural restrictions according to other PCT provisions is, therefore, incorrect. [13] The wording in Article 11(3) PCT “...shall have effect of a regular national application in each designated State as of the international filing date...” is a legal fiction which does not lead to the result that the proceedings under the PCT become national ones. On the contrary, the proceedings in the international phase under the PCT are special ones and are governed by the provisions of the PCT. Proceedings under national law are expressly excluded during the international phase of an international application. This can be deduced from Article 23(1) PCT (the article being headed “Delaying of National Procedure”), wherein it is stated that: “No designated Office shall process or examine the international application prior to the expiration of the applicable time limit under Article 22.” Apparently, Article 23(1) PCT restricts the procedural effect of an international application in the international phase, as regards the applicability of national law, and thereby also limits the legal effect of the international application stipulated for by Article 11(3) PCT if this provision were to be interpreted in the way claimed by the [applicant]. Insofar as paragraph 2 of Article 23 PCT allows any designated Office to process or examine an international application at any time, it must be noted that the required express request of the applicant to proceed in this way has the effect that the international phase, and thus the proceedings under the PCT, are terminated. As already stated under point [9] above, in the present case such an express request under Article 23(2) PCT had not been filed and cannot be regarded as implicit from the mere filing of the DA, as the [applicant] argued during the oral proceedings. Such an interpretation does not comply with the requirement of an express request according to Article 23(2) PCT and for the EPO it would not have been clear that the [applicant] intended the application to enter the regional phase. Thus, in the present case, the filing of the divisional application cannot be construed as a request under Article 23(2) PCT to process or examine the international application. As in the present case this requirement of an express request was not met it does not have to be decided what further acts under R 159 EPC have to be performed to initiate an earlier entry in the regional phase (cf. with respect to possible different views: Singer/Stauder (Hesper), EPC, 5th ed., A 153 notes 78 to 80). The wording of A 150(2) EPC also reflects the separate nature of international and regional proceedings, where it is stated: “International applications filed under the PCT may be the subject of proceedings before the EPO”. In the Board’s view the distinction between pending proceedings during the international phase and those during the regional phase of an international patent application is therefore justified by the EPC as well as the PCT. As regards an international patent application designating EP, proceedings before the PCT authorities are initiated as
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J 18/09 - Not Yet Pending
from the filing date and proceedings before the EPO only as from the day on which the requirements for entering the regional phase prescribed by Article 22(1) PCT have been fulfilled. [14] The reasoning of the RS that the term “pending earlier European patent application” refers to proceedings pending before the EPO as the competent authority to decide on the earlier application under the EPC is, therefore, absolutely correct. The procedural term “pendency” in the sense of R 36 EPC implies that the EPO has become competent to decide on the request for grant. [15] A further restriction for filing a divisional application relating to an international application under R 36 EPC derives from Article 23(1) PCT. As already explained in point [13] above, according to Article 23(1) PCT the EPO has no competence during the international phase of an international application to proceed and examine an application under the provisions of the EPC with respect to the patentability of the subject matter claimed by the international application or with respect to procedural requirements. The EPO only becomes competent as European patent granting-authority when the requirements for the entry into the European phase according to Article 22(1) PCT are fulfilled or an express request for entry into the European phase pursuant to Article 22(2) PCT has terminated the international phase of an international application. It must be noted that the time limit of 30 months according to Article 22(1) PCT is extended to 31 months by virtue of R 159(1) EPC. The prohibition on proceeding and examining the Euro-PCT application during the international phase has a direct procedural effect as regards the required examination of the related divisional application filed with the EPO, as explained in the following paragraph. [16] The filing of a divisional application under R 36(1) EPC requires that the RS of the EPO examines, immediately after the filing, whether or not a filing date can be accorded to the divisional application. This examination includes a decision on the procedural status of the earlier European application. If the earlier application is an international one which is still in the international phase, the RS cannot take such a (implicit) decision on the international application because Article 23(1) PCT forbids a designated Office from examining the international application during this phase. Therefore, it appears from the PCT that R 36(1) EPC must be construed in the sense that the term “pending earlier European patent application” refers to an application pending before the EPO as competent EPC authority. This interpretation follows from the term “European” and is consistent with the legal fiction in Article 11(3) PCT being restricted by Article 23(1) PCT. Summing up the above arguments and conclusions, the present Board confirms the statement of the Receiving Section that, on the basis of the provisions of the PCT and EPC, a Euro-PCT-application not having entered the European phase is not a pending earlier European application in the sense of R 36(1) PCT. Discussion of [applicant’s] further arguments [17] The [applicant’s] conclusion that the EPO’s communication, which allocated a European application number to its IA designating EP, makes it clear that the earlier application was a pending European application is incorrect because the allocation of such an application number is simply an administrative act to make it easier for the EPO to handle any incoming documents. Such a purely administrative act cannot be taken as a basis for interpretation of the term “pending earlier European patent application” in R 36(1) EPC. [18] Furthermore, it is true that the EPO issued a communication in relation to the earlier application indicating: “The European patent application cited above is deemed to be withdrawn”. However, even if the use of the term “European patent application” in that statement corresponds to the wording in R 160(1) EPC, the statement that the European patent application was deemed to be withdrawn was not a constitutive procedural act but only a declaratory one with respect to the non-pendency of the proceedings before the EPO. Such a statement did not initiate grant proceedings before the EPO as is required by R 36(1) EPC for IA but made it clear that IA was not being proceeded with under the EPC and only informed the applicant that IA had not become pending before the EPO to be further prosecuted as a European patent application. [19] Furthermore, the Board points out that the PCT does not provide a right to file a divisional application or to proceed with unsearched matter during the regional phase. In addition, the [applicant’s] reference to American and British patent law and procedure is not an appropriate basis for interpreting R 36(1) EPC. The [applicant’s] submissions concerning cost effectiveness and equal treatment relate to IA as such and are arguments which at best could be used to question the restriction of IA to subject matter which was dealt with in the international search report. 2391 | 3398
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J 18/09 - Not Yet Pending
Consequently, if the requirements according to R 36 EPC are not fulfilled, a right to file a divisional application cannot be based on arguments of cost effectiveness and non-discrimination or be justified by reference to the procedural possibilities which are provided by national foreign law. Referral to the Enlarged Board of Appeal (EBA) [20] As regards the [applicant’s] request for referral of a point of law of fundamental importance, the Board has explained in the above paragraphs how the answer to this question can be deduced directly and unequivocally from the provisions of the EPC and PCT. The necessity to interpret R 36(1) EPC in the light of the provisions of the PCT does not limit the Board’s competence to decide itself on this question and does not mean that this question requires a decision of the EBA. Therefore, the situation in the present case does not correspond to the situation which led to the reference of a legal question to the Enlarged Board of Appeal in case G 1/09. Furthermore, the Board does not know of any decisions which run contrary to the present Board’s conclusions and which would necessitate a ruling by the Enlarged Board of Appeal with a view to ensuring uniform application of the law (A 112(1) EPC). [21] In summary, neither the request for treating the DA as a validly filed divisional application nor the request for referral of a point of law to the EBA is allowable. Should you wish to read the whole decision, just click here.
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T 695/08 – Just Too Vague
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T 695/08 – Just Too Vague 12 Mrz 2011
This decision deals with the appeal of the patent proprietor against the revocation of its patent by the Opposition Division (OD), on the ground of lack of inventive step. Claim 1 of the patent as granted read: A process for making a viscous reaction product and making this into a solid component, comprising the steps of: a) reacting at least two compounds with one another to form a first active material to form a viscous mixed product which has a viscosity of at least 500cps or even at least 1000cps at 20°C, and mixing this with a second active material that is a perfume mix; b) mixing the product of step a) with a liquid carrier material, whereby step b) is followed by c) mixing the mixture of step b) with a solid granulation agent to form a solid component; d) optionally forming the solid component of step c) into granules. According to the OD, the benefits of the invention alleged in the opposed patent in terms of improved deposition, fabric substantivity and ease of processing had not been demonstrated by experimental comparisons reported in the patent or by subsequently filed experimental proof. Thus, these alleged effects could not be considered when assessing the presence of an inventive step. The objective technical problem was therefore the provision of an alternative process. Since a perfume would be nothing else than another liquid carrier suitable for adjusting the viscosity of the viscous product, it was obvious for the skilled person searching for a mere alternative to the prior art, to mix the viscous product disclosed in this citation with a liquid perfume mix before a second liquid carrier was added. These findings are confirmed by the Board: [1.1] The [patent proprietor] has explicitly confirmed at the oral proceedings before the Board that the wording of step “a)” of claim 1 (in particular the passage reading “to form a first active material to form a viscous mixed product”) can only be interpreted as requiring the initial formation of the product possessing the viscosity indicated in the claim, followed by the addition thereto of the perfume mix. Since this interpretation appears the only reasonable to the Board, claim 1 is found to define a process for making a solid component mandatorily comprising:
step “a)” wherein at least two compounds (i.e. [the] active reagent and the co-reagent) are initially reacted to produce a viscous product which is then mixed with a perfume mix; step “b)” wherein the final product of step “a)” is mixed with a liquid carrier and step “c)” wherein the mixture of step “b)” is mixed with a solid granulation agent to form the solid component.
[1.2] The Board sees no reason to deviate from the findings of the OD, undisputed by the Parties, that the prior art process disclosed in document D1 represents a suitable starting point for the assessment of inventive step for the patented process. In particular, any of the processes described in paragraphs [0110] to [0125] of this citation appears a suitable starting point. It is also undisputed that the sole feature characterizing the process of claim 1 vis-à-vis this prior art is the addition of a perfume mix into to the viscous product, before the addition thereto of the liquid carrier and of the solid granulation agent. [1.3] The [patent proprietor] has argued that the OD has erred in disregarding the advantages of the invention indicated in the patent-in-suit simply because these latter were not supported by experimental evidence. In the opinion of the [patent proprietor], the burden of proving that a technical advantage disclosed in the patent-in-suit had not been achieved rested with the [opponent]. Therefore, in the absence of any evidence to the contrary, these advantages were to be considered in view of the definition of the technical problem effectively solved.
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K’s Law – The ebook
[1.3.1] The Board notes, however, that the sole passage in the patent-in-suit that clearly refers to the advantages possibly descending from the addition of a perfume mix (indicated in this passage as the “additional active material”) in the viscous product, is the portion in paragraph [0026] that reads: “The addition of such additional active material can also help to get the required viscosity. Of course the main advantage is that this active material benefits also from the improved deposition and fabric substantivity and ease of processing.” The Board notes further the absence in the remaining patent description of any evidence (e.g. an experimental comparison) or any other clarification of the statements contained in this passage. Under these circumstances, the Board concludes that the patent-in-suit neither identifies in respect to which (prior art of) reference the achieved level of deposition and delayed release of the perfume mix is to be considered “improved”, nor clarifies whether this improvement has been experimentally observed or just predicted on the basis of some undisclosed theoretical reasons (cf. the “Of course”, in the above cited paragraph). Thus, the expressions used e.g. in paragraph [0026] are found too generic to be associated to a technical advantage of the invention also plausibly existing in respect of the prior art identified above. Hence, the Board concurs with the OD that the advantages of the invention vaguely alleged in the patent-in-suit cannot be taken into consideration in the identification of the technical problem solved. [1.3.2] Since the patent-in-suit has been found to contain no disclosure of a plausible technical advantage produced by the addition of the perfume mix into the viscous product (i.e. by the feature characterizing the claimed subject-matter vis-à-vis the prior art), the Board finds not relevant the [patent proprietor’s] argument that the burden of proving that a technical advantage disclosed in the patent-in-suit had not been achieved rested with the [opponent]. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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J 20/10 – No Fallback On Inventors
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J 20/10 – No Fallback On Inventors 11 Mrz 2011
What is noteworthy in this decision is not so much the outcome or the reasoning of the Board but the arguments presented by the applicant, whose request for re-establishment into the time limit for paying the renewal fee had been rejected by the Examining Division (ED) in a decision taken on April 12, 2010 and notified to the applicant on April 18, 2010. The applicant (the SVAB company) filed an appeal on May 20, 2010. The statement of grounds of appeal was received by the EPO on July 9, 2010. In a letter dated August 1, 2010, the applicant requested an extension of the time limit for paying the appeal fee. Unsurprisingly, the EPO replied that such a request could not be granted. Finally, the appeal fee was paid on August 3, 2010. The applicant was informed on September 30, 2010, that the appeal was deemed not to have been filed. In a letter dated October 23, 2010, the applicant requested that the consequences of the late payment not be opposable to Mr Eckendorff, inventor and manager of the SOREV company, which was the sole shareholder of the SVAB company. The applicant pointed out that Mr Eckendorff, who was not a party to the proceedings, was not responsible for the fact that the renewal fee, which should have been paid by the SVAB company, had not been paid. When confronted with these shortcomings, he had decided to dissolve this company and to pay himself the sums that were due in order to maintain the patent. The applicant also indicated that it was only after the time limit had expired that the EPO pointed out that the time limit for paying the appeal fee could not be extended. *** Translated from the French *** [1] Pursuant to A 108 the notice of appeal, to be filed within two months of notification of the decision, shall not be deemed to have been filed until the fee for appeal has been paid. [2] In the present case, it is not contested that the appeal fee has not been paid within this time limit. The payment was made on August 3, 2010, but it should have reached the EPO on June 22, 2010, at the latest. [3] The answer to the request for extension of the time limit filed on August 1, stating that this time limit could not be extended, was given as early as August 9, 2010. It is a fact that on the day on which the extension was requested, the time limit had already expired. Nevertheless, in case this was the argument underlying the explanations of the applicant, it has to be noted that this situation was not caused by the EPO. Incidentally, the EPO is not obliged to remind the applicants which fees have to be paid, and which are the applicable time limits. [4] The EPC does not contain any provision allowing a legal consequence of a failure to pay appeal fees to be deemed not to be opposable to the inventor or without effect as far as the inventor is concerned, thereby allowing him to pursue the proceedings in his name. It should be noted that no request for a transfer of the application under consideration has been filed with the EPO and that the EPO is not officially aware of the dissolution of the SVAB company. [5] As the time limit for payment has expired on June 23, 2010, as indicated above, [the Board] can only note that the appeal is deemed not to have been filed and close the file. For some reason unbeknownst to me, the Board did not order the reimbursement of the appeal fee. Should you wish to download the whole document (in French), just click here. 2395 | 3398
J 20/10 – No Fallback On Inventors
K’s Law – The ebook
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T 1905/07 - Too Cool
T 1905/07 - Too Cool 10 Mrz 2011
The present decision deals with the decision of the Examining Division (ED) to refuse an application. The procedural situation is interesting. After a first communication (June 12, 2006), wherein the ED raised objections under A 54 and A 56, the applicant amended the description as well as the claims. The ED then summoned the applicant to attend oral proceedings (OPs) to take place on May 10, 2007. The applicant filed several requests and offered to discuss the application by telephone in order to either avoid OPs or to facilitate them. There was a telephone call on May 8, 2007. On the very same day, the applicant sent an e-mail to the first examiner, comprising an informal proposal for claim 1. A second telephone conversation took place on May 9, 2007. The applicant’s representative declared that he intended not to come to the OPs but that he would file new submissions to be considered during the OPs. The Examiner reminded him that, in order for them to be considered, the submissions would have to be sent by fax before the opening of the OPs. Still on May 9, the applicant filed several requests, by hand at the EPO in Munich. The applicant was not represented at the OPs. The ED found no new requests and found the requests on file not to be allowable. It therefore refused the application. In its written decision, the ED mentioned that “[t]he submissions filed by hand (thus not via the official fax number) with letter dated 09.05.2007 reached the ED four days after the OPs. Therefore, these late filed submissions were not considered.” The appellant complained about the use of document D4 during the OPs. It had understood that D4 was only used in combination with document D1 for assessing inventive step. However, the decision was based on D4 alone. The right to be heard (A 113(1) EPC 1973) [2.1] Claim 1 of the main request filed in response to the summons to OPs, on which the decision under appeal was based, combines in particular features of claims 1, 12 and 13 as originally filed. D1 was expressly considered by the ED to represent the most relevant state of the art, both in the first communication […] and in the summons to OPs. D4 was considered relevant for additional features of the dependent claims 12 and 13. An inspection of the file up to the telephone conversation on 9 May 2007 shows that the then applicant could expect a reasoning based on a combination of D1 with D4 substantially similar to that raised in the first communication, and had grounds to understand that D4 taken alone did not call inventive step into question. [2.2] However, the reasoning in the decision is based solely on D4, after the first examiner had outlined a new line of argumentation based on D4 alone for the first time in the telephone conversation on 9 May 2007. [2.3] The board is of the opinion that such an oral communication could in principle have allowed the then applicant to exercise the right to present comments enshrined in A 113(1), either orally (for instance in the OPs foreseen on the next day) or in writing. However, it has to be borne in mind that presenting new grounds in a telephone conversation should not be equated with presenting the same grounds in formal OPs or in a formal written communication. Firstly, mere verbal communication by telephone is more prone to misunderstandings, in particular when, as is the case here, no minutes of the essentials of the conversation were available to the representative before OPs took place. Secondly, a party also has a right to be heard by the organ which takes the decision, i.e. the ED in the present case. A telephone conversation with only one of the examiners of that division does not safeguard this right in the same way as OPs.
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T 1905/07 - Too Cool
Therefore caution is required when there is insufficient time for the party to present comments on new grounds presented only in a telephone conversation. Whether or not a party’s fundamental right to be heard was infringed depends on the particular circumstances of the case. [2.4] Concerning the objections raised by the first examiner in the telephone conversation the day before the OPs, the board relies on the account given in the minutes which has not been contested by the appellant. [2.5] The minutes indicate that the first examiner addressed during the telephone conversation one difference (the upper cover being rotatable about a supporting point) between the device of D4, when the arrangement according to figures 1 and 2 was rotated upside down, and the subject-matter of claim 1. He omitted to address the other differences identified in the decision under appeal (the document holder not being moveable with respect to the upper cover; and the supporting mechanism for the image reading unit being movable toward the document holder, with the biasing unit biasing the image reading unit toward the document holder). These further differences contribute to reducing the size of the upper cover, which was identified as the problem to be solved […]. They are therefore clearly essential for the assessment of inventive step and they needed to be dealt with in order to provide a complete reasoning. As a result, the first examiner provided during the telephone conversation a new line of argumentation based on facts derived from D4 alone which did not deal with a number of features of claim 1, which were essential for the assessment of inventive step. The reasoning was thus deficient in essential aspects and it did not allow the then applicant to present comments on the essential reasoning later set out in the decision under appeal. [2.6] In the letter of 9 May 2007 filed in direct reaction to the telephone conversation, the applicant concentrated on D1 and did not hold D4 so relevant as to call for a separate argumentation. The appellant further mentioned in the statement of grounds of appeal that his understanding then was that D4 would be relevant in combination with D1. [2.7] The board notes that the applicant deliberately chose not to attend the OPs on 10 May 2007. He also repeatedly expressed in writing the wish to avoid the need for OPs. Procedural economy and legal certainty for third parties require that an applicant should not be allowed in this way to prevent an ED from carrying out the examination in an efficient manner, for instance by delaying the decision or postponing the OPs (see also R 71(2) EPC 1973). The same applies to the last-minute filing of amendments. However, the circumstances of the present case are exceptional, because the ED changed essential facts of the case on which it relied in the decision one day before OPs and, more importantly, this reasoning was deficient. [2.8] From the above, the board is convinced that not all the essentials of the line of argumentation followed in the decision under appeal were communicated to the applicant before that decision was taken. As a result, the decision was based on grounds on which the applicant had no opportunity to present comments, contrary to A 113(1). This deficiency amounts to a substantial procedural violation. [3] The decision under appeal […] mentions that the new requests filed on 9 May 2007 by the applicant reached the Office one day before the OPs but reached the ED four days after the OPs, so that the decision in the OPs was based on superseded previous requests. The division therefore did not decide upon the application in the text submitted to it or agreed by the applicant. Whether or not in this respect the decision under appeal was contrary to A 113(2) can remain an open question. Likewise, what the consequences are of the ED noticing the mistake and deciding not to grant interlocutory revision pursuant to A 109(1) EPC 1973 need not be decided in the present case. Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here.
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K’s Law – The ebook
T 1936/06 - No Blank Cheques, Please
T 1936/06 - No Blank Cheques, Please 9 Mrz 2011
The present decision deals with a case where the Opposition Division (OD) had taken a rather unusal course of action: The third auxiliary request filed during the oral proceedings (OPs) was found to comply with A 84, A 54 and A 56 on the basis of hypothetical amendments still to be carried out. The patent proprietor was given two months to introduce suitable disclaimers and adapt the description. When it did so, the OD maintained the patent in amended form. The details of the proceedings are quite complex and can be found in the body of the decision. NB: All the legal provisions refer to the EPC 1973. [3.1] The first question to be decided in this appeal is whether the first instance decision was sufficiently reasoned. Therefore the board has to establish whether the impugned decision complies with the relevant provisions of EPC 1973, in force at the date of said decision. [3.2] R 68(2), first sentence, provides that decisions of the EPO open to appeal shall be reasoned. According to established jurisprudence of the Boards of Appeal, to satisfy the requirement of R 68(2) a decision must contain, in logical sequence, those arguments which justify its tenor. The conclusions drawn by the deciding body from the facts and evidence must be made clear. Therefore all the facts, evidence and arguments which are essential to the decision must be discussed in detail in the decision including all the decisive considerations in respect of the factual and legal aspects of the case. The purpose of the requirement to reason the decision is to enable the parties and, in case of an appeal, also the board of appeal to examine whether the decision could be considered to be justified or not (see e.g. T 278/00). [3.3] Therefore, even if the opponent chose not to file any further observations on the new third auxiliary request filed with the letter dated 17 May 2006, the OD should have given the reasons for the dismissal of the objections previously submitted by the opponent in opposition proceedings and which were still applicable to the amended claims. [3.4] Reasoning does not mean that all the arguments submitted should be dealt with in detail, however, it is a general principle of good faith and fair proceedings that reasoned decisions contain, in addition to the logical chain of facts and reasons, at least some motivation on crucial points of dispute insofar as this is not already apparent from other reasons given (see for example T 740/93 [5.4]). This ensures not only that the party concerned has a fair idea as to why its submissions were not considered convincing so that it can react accordingly, but also that the board of appeal is in a position to review the decision taken by the first instance department, as is the primary purpose in appeal proceedings (see inter alia G 10/93; T 534/89). [3.5] In the present case, several amendments were introduced in the claims of the third auxiliary request filed with the letter of 17 May 2006, which formed the basis for the OD’s decision to maintain the patent in amended form in accordance with A102(3) and A 106(3). According to the Enlarged Board of Appeal decision G 9/91 [19], in case of amendments made by the proprietor during the opposition proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC, e.g. A 123. [3.6] In the board’s judgement, the above principles for a sufficiently reasoned decision have not been followed by the OD for the reasons as follows. [3.6.1] Although the patent proprietor filed at the OPs an incomplete version of claim 1 with the last version of the third auxiliary request (annex 8), the OD asserted the following at the end of point 10 of the facts and submissions: “At the end of the OPs, the patentee was given a time limit of two months upon receipt of the minutes to file a clean-typed version of the accepted claims and a description adapted thereto” (emphasis added). This is in clear contradiction with the reading of the minutes and their accompanying annexes 7 and 8, which makes it clear that the disclaimers in claim 1 had to be completed. Thus, the last third auxiliary request filed at the OPs(annex 8) was incomplete and required, as expressed in the minutes, further amendments to the disclaimers. 2399 | 3398
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T 1936/06 - No Blank Cheques, Please
[3.6.2] On top of that, the patentee’s letter dated 17 May 2006 makes it absolutely clear that the third auxiliary request filed with said letter contained further, not yet discussed amendments. Therefore, it was manifest from the content of the letter dated 17 May 2006 that the enclosed third auxiliary request was not a “clean-typed version” of any version “accepted at the OPs before the OD”. In fact, the patent proprietor stated in said letter that the new claim’s wording (meaning amended claim 1) was the result of the analysis it had made about the relevance of the international applications D5 and D7 in consideration of the validity of their respective priority (for this purpose it filed a copy of the priority documents of D5 and D7, namely D5P and D7P, respectively). [3.6.3] However, the decision under appeal does not give any reasons in relation to the international applications D5 and D7 as prior art documents, nor about the validity of their respective priority. In fact, it is unclear from the decision under appeal whether the OD considered the content (or part of the content) of the international applications D5 and D7 as forming part of the state of the art within the meaning of A54(3), or even within the meaning of A54(2). Thus, the decision under appeal is not reasoned in respect of the disclaimers in claim 1 of the third auxiliary request which were introduced in view of the international applications D5 and D7. This lack of reasoning affects the assessment of the allowability of the disclaimers under A123(2) and of the novelty of the subjectmatter claimed (and it may even affect the assessment of inventive step). [3.7] Since the patent proprietor’s letter dated 17 May 2006 is explicitly mentioned in the OD decision, and the amended set of claims of the third auxiliary request filed with said letter was annexed to the decision under appeal (together with an adapted description), it is to be assumed that the OD had that particular set of claims when the decision of maintenance in amended form was issued and sent to the parties. The reasons why the amended set of claims filed with the letter of 17 May 2006 was wrongly qualified in the OD’s decision as “clean copy” of the claims accepted at the OPs remain unclear, but are irrelevant for achieving the conclusion that the decision under appeal is deficient in view of a lack of reasoning. [3.7.1] Moreover, it has to be stressed that novelty of the subject-matter claimed in the patent in suit was challenged right from the beginning in the opposition proceedings (i.e. with the notice of opposition) vis-à-vis (inter alia) documents D5 and D7. The objections of lack of novelty vis-à-vis these international applications were never abandoned by the opponent, as can be inferred from the content of the minutes of the OPs before the OD, since even after the second filing of the third auxiliary request (annex 8 according to the minutes of the OPs) by the patent proprietor, the opponent still raised an objection of lack of novelty vis-à-vis document D5 (see facts and submissions, above). As a consequence of this specific objection raised by the opponent in the OPs, the OD asked the patent proprietor to provide for further disclaimers into claim 1 and gave the patentee two months time for the introduction of the appropriate disclaimers. [3.7.2] Additionally, the apparent reasons for the presence of the disclaimers are stated in the facts and submissions of the OD’s decision (to be found on page 4 within the account given on the OPs): “It was recorded that the provisos were intended to exclude compounds known from D5, D5P and D7”, D5P is the priority document of the application D5, (emphasis added). This statement implies a discussion with the parties in relation to the validity of the priority of the international application D5 (followed by a conclusion of the OD in this respect) which is neither reflected in the minutes of the OPs nor in the reasons given in the decision under appeal for the maintenance on the basis of the third auxiliary request. [3.7.3] In point 3 of the Reasons for the impugned decision under the heading “3rd Auxiliary Request”, the OD dealt with novelty only in relation to documents D1 and D3 and, as already said, remained silent in relation to the reasons why the amendments introduced into claim 1 serving as basis for the maintenance (in particular the introduction of several disclaimers) complied with the requirements A 84 and A 123(2). [3.7.4] The reasons for the introduction of the individual disclaimers are not self-evident and required therefore, inter alia, a detailed examination of several documents and their priority documents in order to conclude which parts, if any, of the international applications D5 and D7 form part of the state of the art within the meaning of A54(3) (depending on the validity of the priority of these two applications), or (also depending on the validity of the priority of the patent in suit) within the meaning of A 54(2). Hence, the OD should have stated in the decision under appeal the reasons for the compliance of the amendments with A 84 and A 123(2) and the specific reasons why the amendments were considered to be sufficient for establishing novelty over the international applications D5 and D7.
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T 1936/06 - No Blank Cheques, Please
[3.8] The first instance decision is the maintenance of the patent in amended form, therefore the OD had to fully examine the amendments as to their compatibility with the requirements of the EPC before it decided to maintain the patent in amended form (see A 102(3) and G 9/91). Additionally, the opponent had raised objections under A 84 during the OPs before the OD. Finally, disclaimers were introduced in claim 1 of the third auxiliary request to delimit and distinguish the claimed subject-matter from the state of the art on file (in particular D5 and D7). Since some of the disclaimers were introduced in the claims during the opposition proceedings, it was necessary before deciding on novelty, to establish their allowability (A 84 and A 123), since it would have been futile to acknowledge novelty on the basis of an unallowable disclaimer. [3.9] As a matter of fact, in view of the lack of any specific reasoning in relation to claim 1 of the third auxiliary request and its compliance with A 84 and A 123, and A 54 (in relation to the international applications D5 and D7), the board cannot assess whether or not the OD examined all amendments, including the disclaimers, as to their compatibility with the requirements of the EPC. It remains also unclear whether the objection and arguments submitted by the opponent with respect to A 84 have been considered by the OD and, if they were considered, for which reasons this objection does not anticipate the maintenance of the patent in amended form. [3.10] Therefore, in the absence of any reasoning in relation to the allowability of the amendments introduced in the claims of the third auxiliary request, the board cannot review the decision under appeal as to its merits, and the parties cannot express any opinion as to whether or not they consider the reasons for the decision to be justified. Additionally, in view of this lack of reasoning in relation to A 84, the appellant-opponent cannot challenge the impugned decision in relation to the allowability of the amendments. Thus, the logical chain of reasoning is missing in relation to A 84 and A 123(2) and the decision is also deficient in this respect. [3.11] Therefore, the decision of maintenance of the patent in amended form based on the amended third auxiliary request is not reasoned with respect to allowability of the disclaimers and is not sufficiently reasoned in relation to novelty, contrary to the requirements of R 68(2). [3.12] Summarising, the omission of reasoning for the allowability of the amendments in claim 1, in particular in relation to the reformulated disclaimers as a means for establishing novelty of the subject-matter in claim 1, and the insufficient reasoning for establishing novelty (this also applies to inventive step) pre-empted the filing of specific grounds of appeal properly challenging the OD’s decision as to its merits. The lack of sufficient reasoning in relation to amended claim 1 of the third auxiliary request filed with letter of 17 May 2006 also hinders the board of appeal to perform a substantive revision of the first instance decision. Hence, the violation of R 68(2) amounts to a procedural violation of a substantial nature since it affects the entire proceedings. The Board then remitted the case to the OD and ordered the reimbursement of the appeal fee. The whole decision and the file wrapper can be found here.
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T 2285/09 - Not Beyond Doubt
T 2285/09 - Not Beyond Doubt 8 Mrz 2011
This decision also contains some interesting paragraphs on the compliance of the auxiliary requests 3 to 9 with the requirements of A 123(3). Claim 1 of those requests were drafted to overcome the A 76 objection we have seen in the preceding post. They read: Use of an extract from the leaves of Olea Europea, obtainable by dipping the leaves into water and subjecting the infusion to ultrasounds, as an antiradical for the preparation of cosmetic products for skin protection against UV rays. [3.1] A 123(3) requires that the claims of a patent as granted may not be amended during opposition/appeal proceedings in such a way as to extend the protection conferred. In order to decide whether or not an amendment of the patent in suit satisfies that requirement, it is necessary to compare the protection conferred by the claims before amendment, i.e. as granted, with that of the claims after amendment. In that respect, it is established Case Law that a very rigorous standard, namely that of “beyond reasonable doubt” is to be applied when checking the allowability of amendments under A 123(3) (see, for example, T 307/05 [3.3-4]), such that the slightest doubt that the scope of the patent as amended could cover embodiments not covered by the unamended patent would preclude the allowability of the amendment. [3.2] Claim 1 of auxiliary requests 3 to 12 is directed to the use of an extract from the leaves of Olea Europea, obtainable by dipping the leaves into water and subjecting the infusion to ultrasounds. Claim 1 of the patent as granted is directed to the use of an extract from the leaves of Olea Europea, obtainable by dipping the leaves into water. [3.3] Thus the question to be answered is whether claim 1 of the amended auxiliary requests covers the use of an extract which was not covered by claim 1 as granted. It thus needs to be examined whether the addition of the feature of subjecting the infusion to ultrasounds may result in a different extract than that obtainable by dipping the leaves into water only. [3.4] The difficulty associated with determining the scope of protection conferred by a feature defined in terms of a “product-by-process” lies in defining the precise contribution of each process step to the nature of the product obtained (see T 223/96 [17] and T 552/91 [5.2]). [3.5] That ultrasounds have a technical effect on the extraction of the leaves in water is uncontested, since it is explicitly mentioned in the parent application as filed [...] that ultrasounds accelerate the extraction and that a process including the use of ultrasounds allows to obtain an extract containing 7% by weight of oleoeuropeine. In addition, it cannot be excluded that ultrasounds also have an effect on the relative amounts and type of components which are extracted, thus resulting in extracts having a different composition than those obtainable by merely dipping into water. The [patent proprietor] may thus now have extended the scope of protection to embodiments which were not covered by the claims as granted. [3.6] For the following reasons, the Board is not convinced by the[patent proprietor’s] submissions that the amendments did not extend the protection conferred. [3.6.1] The [patent proprietor] relied upon the experimental reports D15 and D20 [...] to show that the use of ultrasounds merely accelerated the extraction but did not result in qualitatively different compositions. However, even if these experiments show that under specific conditions (for example, temperature and ultrasound frequency), the same type of extract, insofar as its components can be detected by HPLC 215nm UV, can be obtained by dipping the leaves into water with or without ultrasounds, these tests do not show beyond all reasonable doubt, that under any conditions encompassed by the definition given in claim 1 for the process by which the extract may be obtained, the additional step of subjecting the infusion to ultrasounds would not lead to an extract which would not be obtainable by dipping the leaves into water only. [3.6.2] The [patent proprietor] submitted that the burden of proof lay with the [opponents] to show that the amendments did in fact extend the protection conferred. 2402 | 3398
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T 2285/09 - Not Beyond Doubt
However, it is the [patent proprietor] who amended the patent as granted who is responsible for demonstrating, beyond all reasonable doubt, that said amendment does not extend the protection conferred. [3.6.3] The [patent proprietor] argued that claim 1 as granted, which related to the use of an extract obtainable by dipping the leaves into water included the use of an extract obtainable by additionally subjecting the infusion to ultrasounds, since the claim was open with regard to the process defining the extract, and thus did not exclude the use of an extract obtainable via additional process steps, insofar as these additional process steps did not alter the nature of the extract, as was the case when subjecting the infusion to ultrasounds. However, at least for the reason that the additional step of subjecting the infusion to ultrasounds does indeed potentially affect the nature of the extract obtained (see point [3.5] above), this argument must be rejected. [3.7] For these reasons, the Board concludes that claim 1 of the auxiliary requests 3 to 12 is amended in such a way that there are considerable doubts that the extent of the protection conferred has thereby not been extended. The Board therefore has to conclude that claim 1 of auxiliary requests 3 to 12 offends against A 123(3) and, consequently, these requests cannot be allowed. Should you wish to read the whole decision, just click here. To have a look at the file wrapper, click here.
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T 2285/09 - Three Times No
T 2285/09 - Three Times No 7 Mrz 2011
The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke its patent. Claim 1 of the main request before the Board read: Use of an extract from the leaves of Olea Europea, obtainable by dipping the leaves into water, as an antiradical for the preparation of cosmetic products for skin protection against UV rays. The Board examines whether this claim complies with the requirements of A 76: [2.1] The patent in suit is based on European patent application No. 03 078 256.9 which is a divisional application of the earlier European patent application No. 99 102 534.7. For the requirements of A 76(1) to be fulfilled, it is thus necessary that the content of the patent in suit does not go beyond the content of the parent application as filed. [2.2] In accordance with the established jurisprudence of the Boards of Appeal, the relevant question to be decided in assessing whether an amendment adds subject-matter extending beyond the content of the parent application as filed, is whether the proposed amendment was directly and unambiguously derivable from the parent application as filed, either explicitly or implicitly, implicit disclosure meaning no more than the clear and unambiguous consequence of what is explicitly disclosed. [2.3] Claim 1 of the main request and of auxiliary requests 1 and 2 is directed to the use of an extract from the leaves of Olea Europea, obtainable by dipping the leaves into water. The claim thus defines the extract which is used by virtue of the process for obtaining it. The only passages in the parent application as filed which describe how the extract may be obtained are at page 2, lines 14 to 15, said passage requiring that the extract is prepared by dipping the leaves into water, and subjecting the infusion to ultrasounds, and claim 14, which requires that the extract is obtained by extraction with water, with the aid of ultrasounds. [2.4] There is thus no disclosure in the parent application as filed for the use of an extract obtainable exclusively by dipping the leaves into water without the aid of ultrasounds, said two steps being disclosed in combination only, such that subject-matter has been added which extends beyond the content of parent application as filed. [2.5] According to the [patent proprietor], who conceded that an extract obtainable exclusively by dipping the leaves into water was not explicitly disclosed in the parent application as filed, such an extract was nevertheless implicitly disclosed therein. [2.5.1] In support of this argument, the [patent proprietor] submitted that the step of subjecting the infusion to ultrasounds was not described in the parent application as filed as being essential, and could thus be deleted. However, the passages at page 2, lines 14 to 15 and claim 14 of the parent application as filed do not indicate that the step of subjecting the infusion to ultrasounds is optional, but rather these two process steps are only disclosed in combination with each other. Said passage on page 2 also clearly indicates that the second process step has a technical effect, since it is described as accelerating the extraction, such that it cannot be viewed as a non-technical feature. Hence, the [patent proprietor’s] argument that this feature could be deleted because it was not “essential” must fail. [2.5.2] The [patent proprietor] further submitted that the feature was not indispensable for the function of the invention in the light of the technical problem it solved, since the invention lay in the use of an aqueous extract as opposed to the prior art alcoholic extracts. As such, the essential feature was that the extract was an aqueous extract, not that is was obtainable by subjecting the aqueous infusion to ultrasounds, such that this process step may be deleted. However, the disclosure requirement of A 76(1) requires merely that the subject-matter of the divisional shall not extend beyond the content of the parent application as filed. The distinction between features which are allegedly 2404 | 3398
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T 2285/09 - Three Times No
“dispensable” or “indispensable” in order to solve a technical problem is irrelevant to the question of what is directly and unambiguously disclosed in the parent application as filed. Hence, this argument of the [patent proprietor] must also be rejected. [2.5.3] Finally, the [patent proprietor] argued that the subject-matter of claim 1 of these requests fell within that of claim 1 of the parent application as filed, which related to the use of an extract from the leaves of Olea Europea obtainable by any means. However, merely because the claimed subject-matter falls within the subject-matter disclosed in the parent application as filed does not mean that said restricted subject-matter is actually disclosed therein (see T 288/92 [3.1]), for which the only criterion to be applied is whether the proposed amendment, even if it results in a restriction of the claimed subject-matter, is directly and unambiguously derivable from the parent application as filed. [2.6] For these reasons, the Board concludes that claim 1 of the main request and auxiliary requests 1 and 2 is amended in such a way that subject-matter extending beyond the content of the parent application as filed is added, contrary to the requirement of A 76(1), there being neither an explicit nor an implicit disclosure in the parent application as filed for the use of an extract from the leaves of Olea Europea, obtainable by dipping the leaves into water only, with the consequence that the main request and auxiliary requests 1 and 2 are not allowable. We shall see another aspect of this decision in a forthcoming post. Should you wish to read the whole decision, just click here. To have a look at the file wrapper, click here.
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T 1446/06 – That’s What It’s All About
K’s Law – The ebook
T 1446/06 – That’s What It’s All About 5 Mrz 2011
This appeal is against the decision of the Examining Division (ED) to refuse the patent application. The appellant requested the refund of the appeal fee. It argued that the ED’s procedure with regard to this case constituted a substantial procedural violation, as any communication notifying the applicant that the application did not meet the requirements for grant of a patent should contain a reasoned statement covering all the grounds against the grant of a patent. The “grounds” were the essential reasoning, both legally and factually, which led to refusal of the application. If the applicant was not given enough time to provide a reply to such grounds then there was a substantial procedure violation of A 113(1). During examination of this application, the applicant had been informed in communications that the invention defined in the claims lacked novelty and/or an inventive step over D1. The applicant had responded in writing pointing out to the examiner that D1 did not disclose certain features. On being summoned to oral proceedings (OPs), the representative telephoned the examiner, as neither the representative nor the applicant understood how the examiner could maintain his objection when, clearly, there was no explicit disclosure of this feature in D1. During the telephone call, the examiner simply reiterated the reasoning given in the written communications and at no point embellished or provided further reasoning for his objections. It was only on attending OPs that the applicant was told that the ED believed the feature of the mapping to be implicitly taught in D1. This reasoning was completely different to that given in the written communications and in the telephone conversation. Clearly, the ED had plenty of opportunity to present these arguments to the applicant before the OPs and was even prompted to do so by the applicant, but failed to take these opportunities. The applicant therefore felt “ambushed” by the ED, not having had sufficient time to consider these arguments and formulate a considered and substantive response. Providing the grounds for refusal of the application for the first time during OPs constituted a substantial procedural violation under A 113(1) that warranted a refund of the appeal fee. The Board does not agree: [16] Since the appellant’s appeal is not allowable, the request for reimbursement of the appeal fee must also be rejected (R 67 EPC 1973) and the issue of the alleged procedural violation need not be considered. Nevertheless, the Board cannot see how providing new arguments at the OPs, even if they differ from ones previously used, could be seen as a procedural violation. The applicant had the chance to discuss fully these arguments at the OPs and could have asked for more time to study any parts of D1 not previously referred to. Thus the decision is not based on any grounds or evidence on which the parties concerned did not have had an opportunity to present their comments that would have been contrary to A 113(1). Moreover, if no new arguments are to be given at the OPs, the Board wonders what the purpose of OPs is.
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2406 | 3398
T 592/08 – Trials, Trials, Trials
K’s Law – The ebook
T 592/08 – Trials, Trials, Trials 4 Mrz 2011
The present decision deals with an appeal of the patent proprietor after the Opposition Division (OD) had revoked its patent for lack of novelty and lack of inventive step. Claim 1 of the main request read: Composition for the oxidation dyeing of human keratin fibres, and in particular of human keratin fibres such as the hair, comprising, in a medium that is suitable for dyeing: - at least one oxidation base chosen from 4,5-diamino-1-hydroxyethylpyrazole and the addition salts thereof with an acid representing from 0.0005% to 12% by weight relative to the total weight of the dye composition, and - at least one mineral compound chosen from silicas, aluminium oxides or hydroxides, aluminium, magnesium and iron hydrosilicates alone or as a mixture, and zinc salts; the said composition not containing a combination of an oxidation base of the 4,5diaminopyrazole type, a zinc salt and a derivative of 1,4-diazacycloheptane or a salt thereof, having the following formula:
in which R1, R2, R3 and R4, which may be identical or different, denote a hydrogen, a C1-C4 alkyl or hydroxyalkyl, or a C2-C4 dihydroxyalkyl; Z1 and Z2, which may be identical or different, denote hydrogen, chlorine, fluorine, a Cl-C4 alkyl, a Cl-C4 hydroxyalkyl, a Cl-C4 aminoalkyl, a C1-C4 alkoxy, a C2-C4 dihydroxyalkyl or an allyl group; R5 and R6, which may be identical or different, denote a hydrogen or a Cl-C4 alkyl. The Board finds document D8 to be the closest prior art and then continues: ** Translated from the French ** [4.2] The [patent proprietor] has pointed out that the technical problem to be solved when starting from D8 was to provide compositions for oxidation dyeing leading to colorations the chromaticity and resistance to shampoo of which was improved. [4.3] The solution proposed by the patent under consideration is the composition according to claim 1, characterised by the presence of a mineral compound as defined in claim 1. The [patent proprietor] has indicated during the oral proceedings (OPs) before the Board that the choice of 4,5diamino-1-hydroxyethylpyrazole as particular oxidation base among the diaminopyrazoles disclosed in document D8 was not causally linked to the improvement of the chromaticity and resistance to shampoo. As a consequence, and according to the established case law of the Boards of appeal, this feature has to be ignored in the assessment of inventive step based on the technical problem related to the above mentioned effects, i.e. improving the resistance to shampoo and the chromaticity of the colorations. Therefore, the examination of whether the proposed solution successfully solves this problem is limited to the other features of claim 1 (T 22/81 [5.1,7]; T 26/01 [4.3] and T 176/04 [5.5]). Success 2407 | 3398
T 592/08 – Trials, Trials, Trials
K’s Law – The ebook
[4.4.1] The [patent proprietor] refers in particular to the results of comparative trials […] comparing the resistance of the claimed compositions to shampoo with that of the compositions of D8, in order to demonstrated that the desired improvement of the resistance to shampoo has its origin in the claimed compositions. These trials compare the resistance to shampoos of colorations obtained with a “comparative” composition A comprising 2.3% by weight of 4,5-diamino-1H-pyrazole-1-ethanol sulphate (oxidation base), 1.2% by weight of 1-methyl 2-hydroxy 4-aminobenzene (coupling agent) and reflecting a composition according to document D8, and colorations obtained with compositions B and C according to the invention and differing from composition A exclusively by the presence of 1.2% by weight of a mineral compound, i.e. a hydrophobic pyrogenated silica or kaolin. The results obtained establish a greater coloration difference between a permed lock of hair comprising 90% of white hair, before and after 8 washings with shampoo when the coloration is done with composition A according to the invention (sic) (ΔE=22.9) with respect to the colorations obtained with comparative compositions B (ΔE=18.5) and C (ΔE=18.9). This demonstrates in a convincing way that the particular composition of the comparative trial comprising 4,5diamino-1H-pyrazole-1-ethanol as an oxidation base and 1-methyl 2-hydroxy 4-aminobenzene as coupling agent leads to a coloration that resists the effect of shampoo better than a coloration obtained with a composition according to document D8, which does not comprise the mineral compound. [4.4.2] The [opponent] refers to the results of comparative trials filed […] in order to show that the improvement of the resistance to shampoo is not obtained for all the claimed compositions. In a first trial, the resistance of a coloration to shampoo on 80% natural grey hair obtained with a composition Ia comprising 0.70% by weight of 4,5-diamino-1H-pyrazole-1-ethanol sulphate (oxidation base), 0.5% by weight of 1-methyl 2-hydroxy 4-aminobenzene (coupling agent) and corresponding to a composition according to document D8 is compared to that of a coloration obtained with a composition Ib according to the invention, which differs from composition Ia only by the presence of 0.5% by weight of a silica (Aerosil 200). The results obtained in respect of resistance to shampoo also indicated that the coloration difference between a lock of natural grey hair before and after an ultrasonic bain in the presence of a detergent, which is equivalent to the effect of six consecutive washings with shampoo, is more pronounced when the coloration is obtained with comparative composition Ia (ΔE=1.8) than when it is obtained with comparative composition Ib according to the invention (ΔE=1.3). Therefore, the results of this first comparison fully confirm those of the [patent proprietor], i.e. that a dyeing composition comprising 4,5-diamino-1H-pyrazole-1-ethanol sulphate as oxidation base and 0.5% by weight of 1-methyl 2-hydroxy 4-aminobenzene as coupling agent results in a coloration that resists the effect of shampoo much better than a composition containing silica. However, in a second trial, the resistance to shampoo of colorations on natural grey hairs obtained with a composition IIa containing 0.7% by weight of 4,5-diamino-1H-pyrazole-1-ethanol sulphate (oxidation base), 0.5% by weight of 3-aminophenol (coupling agent) and corresponding to a composition according to document D8 is compared to that of a coloration obtained with a composition IIb according to the invention, which differs from composition IIa only by the same presence of 0.5% by weight of silica. It turns out that those results show that this time the coloration difference is greater for the composition IIb according to the invention (ΔE=3.5), to be compared with ΔE=3.2 obtained with the comparative composition IIa without silica. [4.4.3] It is true that the [patent proprietor] has provided comparative trials showing that the resistance of colorations is improved for compositions comprising a specific coupling agent (1-methyl 2-hydroxy 4aminobenzene). The [opponent] has shown that this improvement disappears when this specific coupling agent is replaced by 3-aminophenol, which means that the mere presence of a mineral compound is not sufficient for obtaining an improvement of the resistance to shampoo of colorations obtained with a composition according to document D8 and comprising 4,5-diamino-1H-pyrazole-1-ethanol sulphate as oxidation base. It follows that the Board cannot ignore the fact that the improvement of resistance to shampoo does not necessarily result from the mere addition of a mineral compound, but that it can depend on other factors such as the presence of a particular coupling agent. 2408 | 3398
T 592/08 – Trials, Trials, Trials
K’s Law – The ebook
Claim 1 does not contain any limitation as regards the structure of the coupling agent or its presence in the compositions. It follows that claim 1 comprises the embodiment where the composition comprises 3aminophenol, for which it has been shown by the [opponent] that no improvement of the resistance to shampoo is found when the coloration is obtained with a composition comprising the association of 4,5-diamino-1Hpyrazole-1-ethanol and 3-aminophenol. As a consequence, these comparisons allow to conclude that the part of the technical problem relating to the improvement of the resistance of colorations to shampoo, as defined by the [patent proprietor] (see point [4.2] above) is not solved by all the compositions covered by claim 1. Given that an effect can only be taken into account for the definition of the technical problem if it is possible to obtain it over the entire range that is covered by the claim (see T 626/90 [4.3.2]; T 939/92 [2.5.4]) and that it has been established above that the resistance of the coloration is not improved for the all the claimed compositions, the technical problem defined above (see point [4.2]) needs to be reformulated in a less ambitious way that does not include the improvement of the resistance to shampoo. [4.4.4] According to the [patent proprietor] the counter trials of the [opponent] made on natural hair could not reduce the value of the [patent proprietor’s] trials on permed hair because the effects obtained on natural hair could not be transposed to permed hair. However, the [opponent] has supplied experimental data showing without ambiguity that the improvement of the resistance of the coloration on natural hair to shampoo was not obtained for all the claimed compositions, thereby highlighting the influence of other features, in particular of the presence of a particular coupling agent, on whether the effect is obtained. The [patent proprietor] has only put forward that the effect on the resistance of the coloration is reversed for permed hair with respect to natural hair, without relying on any document or providing any experimental evidence. Its only argument is that the amplitude of the effect is different, and this argument is not relevant here because what is at stake is the reversal of the effect and not its weakening. The [opponent] having provided evidence for the absence of the effect on the resistance of the coloration on natural hair, the onus of proof is on the [patent proprietor] for establishing that an improvement that is not found on natural hair would be found on permed hair. In the absence of any evidence confirming that the claimed effect is obtained on permed hair for compositions comprising 3-aminophenol as coupling agent, or of any argumentation which would make it credible, the mere allegation of it being obtained over the whole region covered by the claim is purely speculative and cannot be taken into account in the assessment of inventive step. As a matter of fact, the established case law of the Boards of appeal, each party to the proceedings shall carry the onus of proof for the facts it alleges, and if a decisive fact is not proven, the decision is taken to the detriment of the party that is unable to discharge its onus of proof, i.e. in the present case the [patent proprietor] (see T 270/90 [2.1]; T 355/97 [2.5]). As a consequence, even under the assumption that the technical problem was [to improve] the resistance of colorations on permed hair to shampoo, which the [patent proprietor] refused to accept - despite an indication by the Board during the OPs – as far as the main request was concerned, the alleged improvement of the resistance of the composition to shampoo cannot be taken into account in the assessment of inventive step. [4.4.5] As far as the improvement of chromaticity is concerned, the [patent proprietor] has filed […] comparative trials intended to show that the presence of mineral compounds such as silica, alumina, boehmite, montmorillonite, or zinc sulphate in a dyeing composition results in an improvement of the chromaticity of the coloration. However, other comparative trials, here the trials of the technical note 2 of June 6, 2008, based on which the [patent proprietor] argued that the resistance of the coloration was improved (see point [4.4.1] above) show that the chromaticity of a coloration obtained on permed hair with a dyeing composition comprising 4,5-diamino-1hydroxyethylpyrazole (comparative composition A; a*=31.5, b*=19.5) is not improved when kaolinite (composition C according to the invention; a*=30.0, b*=18.8), which is a aluminium hydrosilicate mineral compound that is part of the proposed solution, is used, but rather reduced. This fact has not been contested by the [patent proprietor].
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T 592/08 – Trials, Trials, Trials
K’s Law – The ebook
An effect can only be taken into account in the definition of a technical problem if it can be obtained over the whole region covered by the claim (see T 626/90 and T 939/92). As in the present case it has not been established that the technical effect concerning the chromaticity of the colorations, on which the [patent proprietor] wanted to base the inventive step, can be obtained for all the solutions proposed in the patent under consideration, the technical problem as defined above (point [4.2]) needs to be reformulated in a less ambitious manner that does not include the chromaticity of the coloration. [4.5] Under these circumstances, as the [patent proprietor] has not proposed another effect that could be taken into account, the problem is to propose an alternative to the prior art compositions for the oxidation dyeing of keratin fibres. As so often when this conclusion is reached, the request was found not to involve an inventive step. Finally the appeal was dismissed. Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here. For a similar case involving the same parties, click here.
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T 984/07 – For An An
K’s Law – The ebook
T 984/07 – For An An 3 Mrz 2011
Claim 1 of auxiliary request 1B on file corresponded to the following amendment of claim 1 as granted (click to enlarge):
The Board examines whether the amendment complies with the requirements of A 123(2): [2.1] Claim 1 of this request includes in particular the feature that the “downstream terminations (188, 187) of the opposed surfaces are each sloping away from respective planes defined by the opposed flow restricting surfaces (156, 158) at an angle (β) from 5 to 90°” (emphasis added by the board). With this amendment, the appellant seeks protection for an apparatus having downstream terminations (188, 187) which do not necessarily slope away from the opposed flow restricting surfaces with the same angle (β), as in the set of claims maintained by the opposition division, but which slope away therefrom with angles (β) which may be different one from another. [2.2] The appellant submitted that the above amendment was in particular disclosed in the application as filed in the second paragraph at page 13, which reads: “More generally, wall effects from the valve surface 156 and valve seat 158 will not otherwise arise as long as the chamfering angle β, which is illustrated as 45 degrees, does not approach the angle of divergence of the turbulent mixing layer, α, which is 5.7 degrees. Usually, the angle β is at least 10 degrees to avoid the risk of any attachment of the laminar flow to the wall.”. [2.3] As regards the teaching of the passage just cited, the board can accept the appellant’s arguments that: − the skilled person gets the clear and unambiguous teaching from this passage that wall effects (i.e. any attachment of the laminar flow to the wall) occur at both the valve surface and the valve seat; − the solution to avoid this problem is to provide a chamfering angle β for both the valve surface and the valve seat; − the scope of protection is not limited to the embodiment illustrated in Figure 6 with the same chamfering angle β (= 45°) at both the valve surface and the valve seat. The board however does not accept the further argumentation of the appellant that the two chamfering angles β had clearly and unambiguously not to be the same, because the passage in question is without any doubt totally silent as to the question whether the chamfering angles at the valve surface and at the valve seat might be identical or different. [2.4] In the board’s view, the above amendment to claim 1 of this request does not meet the requirements of A 123(2) for the following reasons: − The application as filed does not explicitly disclose that the angle (β) at the valve surface termination can be different from the angle (β) at the valve seat termination. − In Figures 3, 5 and 6 - reproduced below - the sloping angle at the valve seat termination (187) is manifestly the same as the angle at the valve surface termination (188):
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T 984/07 – For An An
K’s Law – The ebook
− The passage at page 9, lines 20 to 23 of the application as filed [“on the downstream, low pressure side of the gap 102, the valve seat slopes away from the valve surface at an angle from 5 to 90° or greater, 45° in the illustrated embodiment”] discloses […] that the valve seat slopes away from the valve surface at an angle (β) from 5 to 90°. The passage does not however disclose that the valve surface simultaneously slopes away from the plane defined by the opposed flow restricting surface at an angle of 5 to 90°, let alone that these angles might be different. [2.5] In this context, there is no direct and unambiguous disclosure in the application as filed for the amendment to claim 1 of this request. This amendment corresponds to a broadening of the original disclosure as regards the introduction of the word “an”. Hence, it is concluded that claim 1 of the auxiliary request 1B does not meet the requirements of A 123(2). Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here.
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T 1705/07 – Face Your Failure
K’s Law – The ebook
T 1705/07 – Face Your Failure 2 Mrz 2011
The present decision deals with an appeal against the revocation of the opposed patent by the Opposition Division (OD). The patent as granted contained claims directed to processes for hydrogenating a benzenepolycarboxylic acid, claims directed to the use if cyclohexanedicarboxylic esters and various product claims, and so did the requests before the OD and the main request and auxiliary requests 1 to 5 before the Board. Auxiliary requests 6 and 7 before the Board only contained product and use claims. The Board comes to the conclusion that the main request as well as auxiliary requests 1 to 5 lack inventive step. It then deals with the admissibility of auxiliary requests 6 and 7. [8.1] In the auxiliary requests 6 and 7, which were filed in the appeal proceedings for the first time, all process claims, on which the impugned decision was based, were deleted. Those two requests only have claims belonging to another claim category. On the one hand, there are product claims, directed to specific chemical compounds, to mixes and plastic compositions containing them, as well as use claims, and on the other hand, there are product claims that are exclusively directed to mixes and plastic compounds, as well as use claims. [8.2] [One of the opponents] criticized that the auxiliary requests 6 and 7, which are exclusively directed to product and use claims, should have had filed before the first instance already. As the appeal proceedings are intended to review (überprüfen) the first instance decision, which had decided on the process claims only, and as those auxiliary requests had not been submitted to the first instance, this amounted to an abuse of proceedings by the patent proprietor. Therefore, auxiliary requests 6 and 7 were not to be admitted pursuant to Article 12(4) RPBA. [8.3] Therefore, it is to be decided of whether those requests are to be admitted into the appeal proceedings. [8.4] As far as inter partes proceedings, which are foreseen by the EPC, are concerned, the Enlarged Board (EBA) has developed the principle that these proceedings above all serve the right of the losing party and the other parties to the proceedings to have the first instance reviewed in judicial (gerichtsförmig) proceedings. EBA decisions G 9/91, G 8/91, G 7/91 and G 1/99 have underlined that inter partes appeal proceedings are to be considered as judicial proceedings proper to an administrative court. In particular, G 9/91 has stated that the main purpose of inter partes appeal proceedings is to give the losing party the possibility of challenging the decision by which it is adversely affected and to obtain a judicial decision on the correctness of the first instance decision. Thus the factual and legal framework of opposition proceedings, as defined in G 9/91 [6], determines, as a rule, the subsequent appeal proceedings. It directly follows that in second instance proceedings the parties can modify the matter of dispute (Streitstoff) only to a limited extent. This principle has its equivalent in the actual version of the RPBA, Article 12(4) of which explicitly confers the Boards the power to hold inadmissible requests which could have been presented by the patent proprietor in the first instance proceedings. Therefore, the Board has the discretion, taking into account all the relevant circumstances of the particular case, to admit modifications of the submissions (Vorbringen) of a party or not to consider submissions of a party if there were reasons to make them during the first instance (T 240/04 [16.1-2], and T 339/06 [6.3]). [8.5] In the present case, the [patent proprietor] filed requests which did not contain the process claims, on which the impugned decision was based, but which only contained claims of different categories (i.e. product and use claims […]) for the first time during the appeal proceedings. It is true that these claims were comprised in the patent under consideration as independent claims and had also been attacked in the opposition proceedings, but they had never been the sole object of a request. [8.5.1] It can be seen from the minutes of the oral proceedings (OPs) […] before the OD that the OD has accepted three additional auxiliary requests on behalf of the patent proprietor after having told the parties the subject-matter of the process claims 1 of the requests that were the main request and auxiliary requests 1 and 2 at that time did not involve any inventive step […]. Therefore, the [patent proprietor] objectively had an opportunity to file additional (auxiliary) requests before the first instance and has in fact taken this opportunity. 2413 | 3398
T 1705/07 – Face Your Failure
K’s Law – The ebook
According to the principle of party disposition (Verfügungsgrundsatz), the party filing a request is sole responsible for the kind and subject-matter of (auxiliary) requests and it alone has the right to determine their contents. Accordingly, the [patent proprietor] has legitimately decided in the opposition proceedings to maintain the process claims in the three auxiliary requests filed at that time. Once the OD had stated that none of the requests on file could be granted because the process claims were not patentable, the product and use claims comprised in all requests had not to be decided upon any more. Therefore, the OD has properly decided on the process claims alone. [8.5.2] Auxiliary requests 6 and 7 filed during the appeal proceedings, however, do not concern process claims, which were the only object of the impugned decision, any more, but they concern a fundamentally different subject-matter, i.e. product and use claims only. Therefore, their admission would result in the appeal proceedings having a fundamentally different matter of dispute, both from the factual and legal point of view, so that, as a rule, it would lead to a remittal to the first instance. This would extend the duration of the proceedings and both the parties and the public would be denied legal certainty concerning the validity of the patent, which is not compatible with the principle of procedural economy. [8.6] The [patent proprietor] submitted that it was surprised by the final decision of the OD, so that it was not possible any more to file further requests at that stage of the proceedings. However, it has to be noted that it can be seen from the minutes of the OPs before the OD that the patent proprietor objectively still had the opportunity of filing further requests, and has taken this opportunity […]. Therefore, auxiliary requests 6 and 7, which contained only product and use claims, could and would have had to be filed already during the opposition proceedings. Moreover, it was clear from the notice of opposition from the further correspondence during the opposition proceedings and from the annexes to the summons to OPs that the discussion during the OPs before the OD would at first be limited to the process claim 1. Therefore, the patent proprietor must have been aware, before the OPs, that the whole patent would be revoked if the subject-matter of process claim 1 as granted, according to the main request at that time, or as amended, according to auxiliary requests 1 and 2 at that time, was found not to be patentable with respect to the prior art. The fact that during the OPs before the OD further requests maintaining the process claims were filed […] makes clear that the [patent proprietor] deliberately stuck to the protection conferred by the process claim 1 and was not interested in filing an auxiliary request comprising only the independent product and use claims. As a consequence, the [patent proprietor] thereby deliberately took an action that was decisive for the proceedings (verfahrensleitend) and which determined the orientation further proceedings. The patent proprietor was sole responsible for this action. Therefore, it could not be surprised by the decision of the OD which was to be expected as a consequence of this behaviour. [8.7] The [patent proprietor] submitted that it was only equitable if it made use of its right to defend all granted claims. It had to be allowed to maintain only the product and use claims of auxiliary requests 6 and 7 and to have them discussed and decided upon, which had not been done so far. However, it has to be noted that the product and use claims had not been discussed and decided upon only because the [patent proprietor] had failed to file corresponding requests directed only to this subject-matter during the opposition proceedings. If they were discussed and decided upon during the appeal proceedings, the [patent proprietor] would have the opportunity to make good for the failure, for which it was responsible, to its sole advantage. According to the legal principle “nemo auditor propriam turpitudinem allegans”, however, a party may not take advantage of its own failure, as this would not be equitable with respect to the other parties. [8.8] The [patent proprietor] also submitted that it had the right to two instances in view of the examination of auxiliary requests 6 and 7, which had not been carried out so far, i.e. that the requests 6 and 7 should be remitted to the OD for examination. However, it has to be stated that before it can be decided whether two instances are to be granted, i.e. whether the auxiliary requests 6 and 7 are to be remitted to the OD, those requests would have to be admitted into the proceedings by the Board. Therefore, this questions is to be decided only after the prerequisite, i.e. the admission of the auxiliary requests 6 and 7, is fulfilled, which is not the case here (see below). [8.9] At the end of the proceedings before the Board the [patent proprietor] withdrew the objection that nonadmission of auxiliary requests 6 and 7 would be tantamount to a violation of the right to be heard, which objection it had raised during the OPs before the Board. Therefore, it is not necessary to decide on this objection which is not maintained. As a matter of fact, this objection would not be successful (durchgreifen) because it is the Board alone that has to decide on the admission of auxiliary requests 6 and 7 and because the [patent proprietor] had been offered the right to be heard on this decision, and had made use of it. 2414 | 3398
T 1705/07 – Face Your Failure
K’s Law – The ebook
[9] For the above reasons, the Board makes use of its dutiful discretion and decides not to admit auxiliary requests 6 and 7 pursuant to Article 12(4) RPBA. I find this approach very severe, but that is the direction where the Boards appear to be heading. Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here.
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T 1553/07 – One Train May Hide Another
K’s Law – The ebook
T 1553/07 – One Train May Hide Another 1 Mrz 2011
*** Translated from the German *** NB : All provisions refer to the EPC 1973. [10] The [patent proprietor] points out that the Opposition Division (OD) has made a legal error in its application of R 71a(1) when it considered that [the patent proprietor’s] submissions concerning the prior use Elsen were new facts and did not admit them into the proceedings. [The patent proprietor] considers this to constitute a substantial procedural violation. [11] According to R 71a(1), new facts and evidence presented after the final date [for making written submissions] mentioned in the summons do not have to be considered, unless admitted on the grounds that the subject of the proceedings has changed. Both R 71a(1) and underlying A 114(2) refer to late filed facts and evidence, but not to new arguments, which can be filed during the whole proceedings (T 131/01, T 926/07). Thus, according to the case law, new arguments [that are submitted] in order to support facts that have already been submitted have to be taken into account under R 71a(1), even if they are submitted after the date mentioned in the summons, and cannot be rejected on the basis of A 114(2) either (T 131/01, T 926/07). The Board is of the opinion that this has to hold true even when new counter arguments based on facts that have already been submitted, are presented. [12] Thus in the present case what is decisive is whether the submissions of the patent proprietor during the oral proceedings (OPs) are to be considered as new facts or as new arguments. “Facts” within the meaning of A 114(2) are alleged facts (Sachverhalte) which are to be proved by evidence, as the case may be (T 926/07 and Singer/Stauder, EPÜ, 5th edition, A 114, marginal number 48). In its opinion G 4/92 [10], the Enlarged Board acted on the assumption that new arguments are not a new submission as such but a corroboration of facts that have already been submitted. According to the Board, arguments comprise submissions which are directed against facts that have already been submitted (including evidence, as the case may be). During the OPs the patent proprietor explained the reasons for which it was of the opinion that the public prior use “Elsen”, which had been alleged by the opponent, was not completely established by the late filed documents D14 to D21. As can be seen from the minutes, the patent proprietor dealt with the factual assertions of the opponent and in particular with the contents of written submissions D15 to D18 and pointed out what it considered to be contradictions and deficiencies. By doing so, its submissions have evaluated the allegations of the opponents and, above all, the evidence which the opponent had filed in order to provide proof for the public prior use it alleged, and explained why it was of the opinion that, in contrast to the explanations of the opponent and the provisional opinion of the OD contained in the summons, there was no complete chain of evidence. The Board is of the opinion that such challenging the public prior use that has been alleged by the opponent cannot constitute the submission of new facts. Rather, these explanations correspond to the submission of arguments in view of facts that are already on file and evidence related thereto. The same situation occurs, for example, when a patent proprietor explains why, in contrast to the assertions of the opponent, the claimed subject-matter is not obvious over the written prior art invoked by the opponent. As for the above mentioned reasons the explanations of the patent proprietor are to be considered as arguments, neither R 71a nor A 114(2) provide a legal basis for the decision of the OD not to admit the submission of the patent proprietor. Thus the OD has incorrectly decided not to admit the submissions of the patent proprietor concerning the proof for the alleged prior public use. This way of proceeding of the OD was based on the incorrect finding that the submissions of the patent proprietor corresponded to the presentation of new facts. The Board is of the opinion that this finding amounts to a misjudgement by the first instance. However, a misjudgement is not the same thing as a substantial procedural violation (see also “Case Law of the Boards of appeal of the EPO”, 5th edition 2006, VII.D.15.4.5). 2416 | 3398
T 1553/07 – One Train May Hide Another
K’s Law – The ebook
[14] However, the Board finds that the OD has committed a substantial procedural violation by issuing a decision that is insufficiently reasoned. [15] The decision of the OD has been taken and reasoned before December 13, 2007, the date on which the revised version of the EPC entered into force. Therefore, when the question of whether the decision is sufficiently reasoned, it is decisive whether the requirements of the then applicable R 68(2), first sentence, have been complied with. [16] According to R 68(2), first sentence, decisions which are open to appeal have to be reasoned. According to the established case law, a decision has to contain, in logical sequence, the essential factual findings and legal considerations which justify the tenor. Moreover, the conclusions drawn from the facts and evidence must be made clear. Therefore, all the relevant facts and evidence must be discussed in detail in the decision including all the decisive considerations in respect of the factual and legal aspects of the case (see T 278/00 [2]). The mere reproduction of the result of considerations does not satisfy the requirement of a reasoned decision. The requirement to provide reasons for a decision aims at giving the parties and, in case, for example, of opposition appeal proceedings, the Board of appeal, the possibility of checking whether the decision that has been taken is justified in view of the decisive considerations, facts and evidence. [17] In the section entitled “Prior public use” […] the OD explains which submissions of the parties it admits into the proceedings. The submissions of the patent proprietor during the OPs were not admitted into the proceedings (see [10] to [13] above). Concerning the evidence D14 to D21 the OD states that the patent proprietor is of the opinion that those exhibits have been filed belatedly and should not be considered, because they concerned different facts (Tatbestand), but that the OD is of the opinion that those exhibits are relevant for the proceedings and were admitted into the proceedings. The OD then further explains that the patent proprietor had not availed itself of the offer to hear witnesses, which had been made by the opponent in the notice of opposition, and that during the whole written proceedings the patent proprietor had not submitted any facts which could cast doubt on the prior public use, but quite to the contrary, had reacted by filing amended claims. The Board is of the opinion that these explanations concern the questions of whether the factual assertions of the opponent were challenged by the patent proprietor. Whether factual assertions are challenged or not concerns the question of whether these assertions need to be proven and does not allow to draw conclusions on the relevance of the evidence that has been filed in this context. Therefore, the Board is of the opinion that in this part of the reasons for the decision it has not been shown for which reasons the OD considered the late filed evidence nD14 to D21 relevant and has admitted it into the proceedings. [18] In the subsequent section of the reasons for the decision, which is entitled “Novelty” […] the OD only makes the following statement on the prior art that is relevant for novelty: “The prior public use of a spring brake actuator, as proven by documents D1 to D21, is considered to be the closest prior art.” [19] According to the wording of this statement the OD has based its reasoning on a single “prior public use …, as proven by documents D1 to D21”. However, during the first instance proceedings, several prior public uses have been invoked by the opponent. In the notice of opposition, it has already alleged two different prior public uses “Lenze” and “Jungheinrich”. In its later submissions dated August 9, 2005, and July 10, 2006, the opponent first invoked the delivery of an industrial truck of the “ERE” 20 type to the company Hubert Elsen GmbH & Co. KG. In its letter dated November 9, 2006, the patent proprietor has submitted that it considered this delivery to be a late filed new submission of facts for another prior public use. Although the opponent has asserted that there were at least two different prior public uses, the reasons for the decision do not give any indication which prior public use has finally been considered by the OD. Nor do the reasons disclose whether the OD considered the alleged delivery of an industrial truck of the “ERE” 20 type to the to the company Hubert Elsen GmbH & Co. KG to be a complementary submission concerning a prior public use that had already been alleged in the notice of opposition or if it acted on the assumption – as the patent proprietor did – that this was a submission of new facts concerning a further prior public use. The global
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T 1553/07 – One Train May Hide Another
K’s Law – The ebook
reference to documents D1 to D21 does not allow to understand which prior public use is referred to in the reasons for the decision, as none of the prior public uses is concerned by all exhibits D1 to D21. Therefore, the parties and the Board cannot understand which prior public use and, as a consequence, which object that had been made accessible to the public by a prior use, is concerned. Therefore, it is not clear what forms the prior art under A 54(2) in the impugned decision. Moreover, the Board cannot check whether the OD has taken into account the patent proprietor’s objection referring to a belated submission of facts by the opponent. [20] It can be seen from the reasons for the decision that the OD has come to the result that exhibits D1 to D21 prove a prior public use. However, the mere reproduction of the result of the consideration of evidence cannot be considered to constitute reasons. The OD would have had to expose, in the reasons for the decision, in logical sequence, on which evidence its conviction is based, and why. However, the OD has not done so. Therefore, the Board is unable to understand how the evidence has been considered by the OD and why it came to the conclusion that a prior public use is established by exhibits D1 to D21 and, therefore, part of the prior art. Therefore, the Board cannot examine whether the evidence has been considered in a way that complies with the basic rules for the law of evidence (Beweisrecht) and the procedures for taking evidence applicable at the EPO. In this context, the Board wishes to point out that facts concerning a prior public use which have been asserted during opposition proceedings and which are relevant for the decision need to be proven unless they are undisputed. However, the OD can establish the circumstances of a case which are relevant for the decision of its own motion, even when the adverse party does not dispute the submission of facts or even explicitly admits it. This follows from the principle that the Office shall examine of its own motion (Amtsermittlungsgrundsatz) under A 114(1), according to which the EPO shall examine the facts of its own motion, without being restricted by the submissions or the requests of the parties. It is also part of this duty [for the EPO] to take evidence of its own motion. Investigations [made by the EPO acting] of its own motion may, for example, be required when the OD has justified doubts or when the factual assertions or evidence that has been submitted in order to support them are contradictory. In its response to the opposition dated February 28, 2005, the [patent proprietor] has already contested the public nature of the alleged public prior use “Lenze” and the technical features of the object of the prior use “Jungheinrich”. In its decision he OD has referred to the fact that “during the whole written proceedings the patent proprietor had not submitted any facts which could cast doubt on the prior public use” but that “quite to the contrary [it had] reacted by filing amended claims”. Even though the [patent proprietor] has indeed filed new requests comprising amended claims in its letter dated March 16, 2007, this cannot be interpreted to be as an acknowledgement of the alleged prior public use on behalf of the patent proprietor. Moreover, it is not relevant whether the [patent proprietor] has availed itself of the opponent’s offer to hear witnesses. Whenever, during opposition proceedings, parties submit or offer evidence, it is the duty of the OD to decide on its admission or rejection, taking into account the relevance of this evidence (T 142/97). [21] In the impugned decision the assessment of novelty was only based on the “prior public use according to D12” and the spring brake actuator disclosed in D12 […]. However, the reasons for the decision do not contain any indication why the assessment of novelty was based exclusively on the public “prior use according to D12” and the disclosure if the schematic drawing D12, which had been filed as evidence, although only the “The prior public use …, as proven by documents D1 to D21” was acknowledged as prior art and the exhibits D1 to D21 contain several drawings. Therefore, the Board holds that the decision is not understandable also in this respect. [22] For the above reasons the OD has not indicated in the impugned decision on which it based its conviction that the prior public use, as proven by documents D1 to D21, is considered to be part of the prior art, and how it came to this conclusion. Nor is it understandable which considerations have led the OD to the conclusion that, as far as novelty assessment is concerned, the technical features of the object of the prior use have to be taken from schematic drawing D12 […] alone. As the impugned decision does not contain this justification, the Board cannot examine whether the conclusions of the first instance were justified. Thus the Board has reached the conviction that the impugned decision is not reasoned within the meaning of R 68(2), first sentence. The Board then decided to refund the appeal fee and to remit the case to the OD. Should you wish to download the whole document (in German), just click here. To have a look at the file wrapper, click here.
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T 1553/07 – Enough Is Enough
K’s Law – The ebook
T 1553/07 – Enough Is Enough 28 Feb 2011
The present decision deals with the admissibility of an opposition based on a prior public use – raised for the first time during appeal proceedings - and gives a useful overview of the relevant case law developed by the Boards of appeal on the substantiation of prior public uses, taking into account the offer that witnesses be heard. NB: All legal provisions refer to the EPC 1973. *** Translated from the German *** [2] In its statement of grounds of appeal the [patent proprietor] pointed out for the first time that the opposition was inadmissible because it was not sufficiently substantiated. The EPO has to examine the admissibility of an opposition of its own motion, at any stage of the opposition and subsequent opposition appeal proceedings (T 289/91). This means that the Board has to examine the admissibility of the opposition in appeal proceedings even if the objection of inadmissibility is, as in the present case, raised during the appeal proceedings for the first time (see T 289/91 [2.1]). [3] Whether an opposition is sufficiently substantiated is to be assessed by taking into account the content of the notice of opposition as well as further documents submitted during the time limit for filing an opposition, as the case may be, because it is not possible to correct deficiencies after expiration of this time limit (see also T 522/94). As a consequence, as far as the question of whether the [opponent] has complied with its duty to substantiate and whether its opposition may be considered admissible is concerned, only the legal and factual situation at the expiration of the time limit for filing an opposition is relevant (see T 1019/92). As the time limit for filing an opposition under A 99(1) had already expired on December 13, 2007, the moment of entry into force of the revised version of the EPC, the relevant provisions of the EPC 1973 are to be applied for answering the question of whether the opposition was sufficiently substantiated. [4] According to the case law of the Boards of appeal the requirement of R 55 c) is fulfilled if the contents of the notice of opposition are sufficient for the opponent’s case to be properly understood on an objective basis, so that both the patent proprietor and the Opposition Division (OD) know what the case is about (see T 222/85 [4]). The facts submitted for substantiating the opposition have to be sufficient for the Board and the patent proprietor to be able to understand the submission without further investigations. (see T 222/85 and T 2/89). However, it is acceptable that they have to undertake a certain amount of interpretation (T 199/92 [1.2]). Nor is it necessary that the facts and evidence submitted for justifying [the opposition] be so complete that a definitive examination is possible on this basis alone (see T 1069/96). Moreover, it is not required that the notice of opposition be valid (stichhaltig) (see T 222/85) or sound (in sich schlüssig) (see T 234/86). [5] In the case of an alleged prior use, an opposition is deemed to be sufficiently substantiated if [the notice of opposition] indicates, within the opposition period, all the facts which make it possible to determine the date of prior use, what has been used, and the circumstances relating to the alleged use, as well as the evidence [presented in support of the grounds of opposition]. (see T 328/87). Thus the notice of opposition – possibly taking into account other documents filed within the time limit for filing an opposition - must indicate “what” was made available “when” and under what circumstances, in particular “to whom” (see T 522/94). [6] The present opposition as presented in the notice of opposition is based exclusively on two prior uses concerning a spring brake actuator for industrial trucks (Flurförderzeuge). [7] As far as the first public prior use (“prior use Lenze”) is concerned, the notice of opposition as a whole and the submissions under point 4.1 in particular contain the allegation that the company Lenze GmbH &Co. KG had supplied two-stage spring brake actuators bearing the reference 14.442.12.100 to the [opponent] since 1993, without there being any secrecy obligation. Thus, the notice of opposition already indicated when (since 1993) and under which circumstances (delivery of a product by one company to another without any secrecy obligation) the prior public use allegedly has taken place.
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T 1553/07 – Enough Is Enough
K’s Law – The ebook
The [patent proprietor] has expressed doubts regarding the “prior use Lenze” by referring to the copyright note on drawing D10 and to the supply of “prototypes” according to the facsimile D8, because there was a customary, tacitly agreed secrecy obligation when companies joined in view of a common product development. Therefore, [the patent proprietor] was of the opinion that there was no indication in the submissions related to the opposition that [the product] had been made accessible to the public, so that the opposition was inadmissible. The Board cannot endorse this opinion. There was a concrete assertion in the notice of opposition that the delivery was made “without any obligation of secrecy”. Whether this assertion is correct - i.e. whether the alleged prior use was indeed made accessible to the public – is not relevant for the admissibility (see T 1022/99 [2.2]) Thus the objections of the [patent proprietor] are not relevant for the assessment of the admissibility of the opposition, but only, as the case may be, for the substantive assessment – that is to say, for the examination of the allowability of the opposition. [8] As far as the object of the “prior use Lenze” is concerned, the submissions in the notice of opposition regarding the features of the delivered spring break actuator explicitly refer to the filed drawings (D6, D9, D10 and D12) and to the extracts from post-published manuals (D3 and D7). As a rule, the features of the claim under consideration have to be compared with the features of the object of the prior use and the technical relationships have to be pointed out (T 28/93 [4.1]). However, when the factual situation is simple, as in the present case, such indications may be omitted if they are directly understandable for the average skilled person (see T 1069/96 [2.3.3]) The technical features of the spring break actuator that is the object of the alleged prior use can be gathered from the submissions in the notice of opposition, and in particular construction drawing D6. In line with the indications of schematic diagram D12, a complete break, including the additional hydraulic activator, can be recognized in construction drawing D6. How the break functions can be seen from the schematic drawing D12 and the extracts from the post-published manuals D3 and D7. The Board is of the opinion that this discloses the technical features of the spring brake actuators that have been used and allows for a comparison with the features of claim 1 as granted, without requiring undue efforts. It is irrelevant whether the used object really had those features because the validity or soundness of the submissions related to the opposition is not relevant for the assessment of admissibility (see point [4] above). Whether the documents already filed or indicated (including the designation of a witness for a later hearing) provide evidence for the factual assertions of the opponent or not – for example, because they are contradictory – is a question related to the consideration of evidence, which has to be treated when assessing the allowability of an opposition. Therefore, the submissions of the opponent concerning the object of the alleged prior use are sufficiently substantiated, too.
D6 (click to enlarge) [9] Together with the notice of opposition, the opponent has filed written evidence and offered witnesses as proof for the prior use Lenze which it alleges. The Board agrees with the [patent proprietor] that a global offer of a witness hearing cannot replace deficient factual submissions. However, in the present case, the facts regarding the alleged prior use were substantiated within the time limit for filing an opposition (see points [7] and [8] above). However, the Board cannot share the opinion of the [patent proprietor] that for an opposition to be admissible, it is necessary, not only to designate witnesses, but also to indicate what the designated witnesses are to declare. Pursuant to R 55 c), the notice of opposition only has to indicate the evidence. The evidence itself can be filed 2420 | 3398
T 1553/07 – Enough Is Enough
K’s Law – The ebook
after the expiration of the time limit for filing an opposition, because R 55 c) does not provide that the indicated evidence has to be filed within the time limit for filing an opposition (see T 328/87). Therefore, the designation of witnesses for a later hearing is to be considered to be a sufficient indication if evidence, provided that it is clear which factual assertions are concerned by the witness designation (für welche Tatsachenbehauptungen der Zeuge benannt wird). However, the Board does not consider an indication of the concrete allegation to be proved (Angabe eines konkreten Beweisthemas) to be necessary. It is not necessary to indicate what the witness can declare on the alleged facts, either. In the present notice of opposition, the opponent offered evidence by means of witness hearings regarding the alleged prior use Lenze, which the Board believes to be sufficient for complying with the requirements of R 55 c). Moreover, this requirement is already complied with by the written submissions contained in the notice of opposition. The argument of the [patent proprietor] according to which the witnesses offered for establishing the public nature [of the prior use] cannot be considered as evidence because the witnesses cannot report on the delivery based on their own experience, also addresses the question of whether the evidence is sufficient for acknowledging the existence of a prior public use. However, this is only to be assessed during the examination of the allowability of the opposition. Thus at least the prior use Lenze, which has been pointed out in the notice of opposition within the 9-month time limit for filing an opposition under A 99(1), has been substantiated. The Board is convinced that the indications related to the facts and evidence justifying the grounds of opposition that have been raised are sufficient for complying with the requirements of R 55 c). Therefore, the opposition is admissible, be it only for the first alleged public prior use Lenze. As a consequence, the second alleged public prior use Jungheinrich is not decisive for the admissibility of the opposition any more. I shall report on another aspect of this decision in a forthcoming post. Should you wish to download the whole document (in German), just click here. To have a look at the file wrapper, click here.
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To All The EQE Candidates …
K’s Law – The ebook
To All The EQE Candidates … 26 Feb 2011
… the best of luck! May there be no need for further processing in 2012. NB: I shall be very close to some of you, because I am invigilating in Taastrup this year.
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K’s Law – The ebook
Interpretational Spotlight: « Uploading »
Interpretational Spotlight: « Uploading » 26 Feb 2011
[2.3] The appellant argued that “transmitting” data cannot always be equated with “uploading” data, since “uploading” requires that the transmitter initiates the data transmission. In the board’s view, however, the term “uploading” should be given the meaning and scope it normally has in the relevant art, namely that of transferring data, etc., from one computer or device to another, especially to one which is larger or remote from the user, or is functioning as a server; it is not relevant which side initiated the transfer. Hence, by transmitting data from [a] portable audio device to [an] external device […], the data is uploaded. The argument is therefore not convincing. Should you wish to download the whole decision (T 264/09), just click here. To have a look at the file wrapper, click here.
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T 264/09 – Back To Search
K’s Law – The ebook
T 264/09 – Back To Search 25 Feb 2011
More of a reminder, really. [4.1] The board notes that the Examining Division (ED) did not admit a first auxiliary request for the reasons that claim 1 of that request differed from claim 1 of a main request by the addition of a feature which was not present in the claims as originally filed, had not been searched, and did not combine with the originally claimed invention to form a single inventive concept. Consequently, the claim was held not to meet the requirements of R 137(4) (as then in force). The feature in question related to the portable handheld audio device of the system according to claim 1 as originally filed and further specified that it was adapted to transmit audio data from the portable handheld audio device to the external source. [4.2] In the board’s view, if a feature which has not been searched and which further defines an element which was already part of a claim which had been searched, is taken from the description and added to this claim in order to overcome an objection under the EPC, e.g. lack of inventive step, this does not result in a claim which has been amended such that it relates to unsearched subject-matter which does not combine with the originally claimed invention to form a single general inventive concept. The board thereby follows the well-established case law on the interpretation of R 86(4) EPC 1973 see, e.g., T 708/00 [17], T 274/03 [5,6] and T 141/04 [5], it being noted that R 86(4) EPC 1973 has the same wording as R 137(4) (as in force at the date the ED took its decision), which, as from 1 April 2010, is included in R 137(5). The board notes that the Guidelines for Examination in the EPO (April 2010) are drafted accordingly, cf. section C-VI 5.2(ii) which explicitly mentions the possibility of carrying out an additional search in connection with the examination of amended claims. [4.3] It follows that in respect of the then first auxiliary request referred to at point [4.1] above the ED was wrong in raising an objection under R 137(4). [4.4] Turning to claim 1 of present auxiliary request III, this claim includes, inter alia, the additional features that the display means of the portable audio device is suitable for displaying a menu image and that the portable audio device includes means for selecting desired audio data from a menu image which indicates a plurality of pieces of audio data which are stored in the external source. The situation referred to at point [4.2] above applies to this claim in that it includes additional features which were not part of the claims as originally filed and which give rise to the question of whether or not an additional search as provided for in the Guidelines, B-II 4.2(i) and C-VI, 5.2(ii) and 8.2, is required in order to be able to examine the question of whether or not the claimed subject-matter meets the requirements of the EPC, in particular A 52(1) in combination with A 54 and A 56. [4.5] Having regard to the considerations set out above at points [4.1] to [4.4], the board is of the view that, in the present case, the above-mentioned question of whether or not an additional search is required, is a matter to be considered by the ED. [4.6] The board therefore judges that it be appropriate pursuant to A 111(1) to remit the case to the ED for further prosecution on the basis of the claims of auxiliary request III. Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here.
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T 891/07 – On The Sufficiency Of Humanoids
K’s Law – The ebook
T 891/07 – On The Sufficiency Of Humanoids 24 Feb 2011
In the present decision the Board deals with the refusal of an application by the Examining Division (ED). The application was refused on the ground that the invention was not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (A 83). Additional comments were provided in the contested decision indicating that the ED was also of the view that the claims were not supported by the description (A 84). Claim 1 on file before the Board read: A system for gathering information from an environment, the system comprising : - RFID tags to be provided on objects and transmitting information on the associated objects, and - a humanoid robot provided with a computing device, the computing device comprising: visual sensing means for gathering visual information on objects in the environment, the environment being an area surrounding the computing device, wherein the computing device gathers said visual information and receives said information transmitted from said RFID tags of said objects located within said area, antenna means for wirelessly receiving said information from said RFID tags of said objects, means for combining the visual information as well as the wirelessly received RFID information for making a decision on objects identified by the visual information and the RFID information and for generating output signals based on said decision in order to drive a manipulator of the humanoid robot. A 83 and A 84 (EPC 1973) - general remarks [6.1] Both the requirement that the claims be supported by the description (A 84) and the requirement that the invention be sufficiently disclosed (A 83) are designed to reflect the principle that the terms of the claim should be commensurate with, or be justified by, the actual contribution to the art (T 409/91 [3.5]). It is the actual contribution to the art which defines the invention and for which protection may be sought. [… T]he independent claims have been directed to the general concept of combining visual and RFID information. It is this concept which is currently considered to represent the contribution to the art. [6.2] The Board supports the idea that an invention which opens up a whole new field is entitled to more generality in the claims than one which is concerned with advances in a known technology (Guidelines for Examination in the EPO, C-III, 6.2). In view of the fact that multimodal integration was known at the priority date of the application (as can be seen from US-A1-2003/0149803, cited in the application), whether the present invention really opens up a whole new field may perhaps be questioned. Nevertheless, if the assessment of novelty and inventive step shows that the combination of visual and RFID information in a humanoid robotic context is new and inventive, then the Board considers that the appellant would be entitled to protection at this level of generality. This illustrates the interrelation that exists between A 84, A 83 and A 52(1) and highlights the risk that a broad claim will be more vulnerable to a novelty or inventive step objection. A 83 [7.1] A 83 requires that the invention be disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. For an application to be refused on this ground, the skilled person, equipped only with the description, claims and drawings of the application, and his general knowledge, would have to be unable to produce a working version of the claimed system. It cannot be expected that the skilled person will have to resort to inventive ingenuity in order to fill any gaps in the teaching of the application.
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T 891/07 – On The Sufficiency Of Humanoids
K’s Law – The ebook
[7.2] Before it can be considered whether the skilled person would be able to carry out the invention, it is first necessary to establish what qualifications and level of knowledge the skilled person holds. The Board accepts the position of the appellant that the skilled person in this particular field will be very highly qualified. In particular in the field of humanoid robotics, the skilled person will typically come from a background of computer science, but will require expertise in the fields of mechanics, electronics, biomechanics, computer programming and humanoid signal processing. Consequently, the “skilled person” in this field will comprise a team of experts, this team being technically very highly skilled and having a vast range of technical literature at its disposal. [7.3] The invention, as it is set out in the independent claims, concerns the use of two signals, one emanating from the visual sensing means and one emanating from the RFID transmitter. These two signals are combined for making a decision on objects identified by the two information sources. The invention does not lie in the details of the manner in which the signals are combined, but instead in the mere fact that they are combined. [7.4] The ED considered that A 83 was not satisfied since the application did not provide sufficient information to enable the skilled person to perform the combination of visual and RFID information without undue burden. No information was provided as to how the combination was performed, how the decision was taken, nor indeed as to the nature of the decision. No explanation of the specific processing required for multimodal integration was contained in the application, so the skilled person would not know how to perform the necessary data fusion. Even when referring to the specific example provided on page 5 of the application, no details were provided as to how the information integration should be performed. Clearly, processing the visual and the RFID signals to make a decision will involve a certain degree of programming skill and signal processing knowledge: this task is certainly not trivial. It is noted however that data fusion in a multi-sensory environment is presented in the description as being the starting point of the invention […]. The skilled person must therefore be considered to be conversant with such data fusion techniques. Moreover, the description refers to US-A1-2003/0149803 which concerns multimodal integration. The skilled person may therefore also be considered to be conversant with multimodal integration techniques. Thus it must be assumed that the skilled person having the level of knowledge set out above will know how to process the data received from the two different sources and be in a position to draw a conclusion based on the combined data. The Board observes that, at a very basic level, this data could, for example, simply be a change in contrast boundaries sensed by the visual sensing means and information sent by the RFID tag establishing the identity of the object. As pointed out by the appellant, the decision which is taken need not even be correct. The Board is therefore convinced that the skilled person in this field will have sufficient knowledge to provide a “means for combining the visual information as well as the wirelessly received information for making a decision on objects identified by the visual information and the RFID information” and for generating a corresponding output signal. [7.5] Moreover, the ED noted that the application contained no guidance on how the vision system formulated the hypotheses mentioned on page 5 of the description, nor did it instruct on a general framework of formulating hypotheses which could be applied in the context of heterogeneous data fusion. The ED therefore concluded that the “essential components of the invention, in particular those concerning object recognition during the process of data fusion are missing from the application as filed” […] and that the skilled person would have to resort to inventive activity in order to integrate the visual and the RFID data. The Board notes that the invention as claimed does not require that any hypotheses be determined. Indeed, as contemplated above, depending on the decision to be taken and on the data acquired from the two sources, the combination of the visual and RFID information may in fact be a very straightforward operation. The Board is therefore of the view that details of the hypotheses-forming procedure are not categorically required in order to carry out the invention. Notwithstanding this finding, the appellant submitted that the skilled person in this field would nonetheless know how to form hypotheses for viewed objects. The Board tends to agree with this opinion and notes that the hypothesis need not be of a complex nature. For example, motion information from the visual sensor may be sufficient for the vision system to supply a hypothesis suggesting the possible identity of the object being viewed. [7.6] The ED maintained that “taking a decision” in claim 1 must involve a process of object recognition or identification […] and held that, since no information was provided as to how to perform object recognition, the invention is insufficiently disclosed. The Board sees no basis for interpreting the “decision” in this manner. As 2426 | 3398
T 891/07 – On The Sufficiency Of Humanoids
K’s Law – The ebook
argued by the appellant, the decision is unspecified and depends entirely on what information is received from the two sources. [7.7] The ED further objected to the fact that the application did not contain sufficient details to enable the invention to be carried out over the whole breadth claimed […], basing this objection on the problem of correct data association in the specific scenario in which two objects are present (but not necessarily distinguishable as two objects) in the visual scene and two RFID signals are received. This scenario was covered by claim 1 but no explanation was provided as to how to correctly associate the two RFID signals to the respective visually-sensed objects. A 83 requires that the invention be disclosed in such manner as to allow it to be carried out. A 83 does not require that details should be provided to enable each and every construction covered by the claims to be implemented; indeed, this would be an impossible undertaking when the claims are drafted in functional terms. In the view of the Board, even if hypothetical, non-implementable constructions may be conceived, this does not prevent the general principle being claimed in its full breadth if the skilled person is not put in a position where he systematically has to resort to inventive ingenuity in order to carry out the invention. The example given on page 5 of the description is a very specific illustration of one scenario in which the invention could be employed. The invention does not hinge on whether two visually-sensed objects may be distinguished from each other, but that visual and RFID information may be used to augment each other and to permit decisions to be taken with little effort […]. It is in this breadth that the invention has been set out in the description and it is in this breadth that it is now claimed. Whether the skilled person will know how to analyse each and every scene presented to the computing device and to derive specific information from that scene is not essential for assessing whether A 83 is satisfied. What is important is whether the skilled person will know how to carry out the invention, which in the present case resides merely in the combination of visual and RFID information. In the Board’s view, the examination of A 83 should not be reduced to a quest for a single construction which cannot be implemented on the basis of the information provided in the application. A 83 concerns whether the invention has been sufficiently disclosed rather than whether scenarios exist for which a full explanation has not been provided. [7.8] In the present case, the Board therefore considers A 83 to be fulfilled. A 84 [8.1] The ED held that “the description fails to support to a sufficient extent” the means for combining the visual information with the RFID information, since the application contained no clear teaching on how to successfully implement the invention when two objects were viewed and information was received from two RFID tags. The Board has understood this objection to be a lack of support by the description (A 84) over the whole breadth claimed. Indeed, the RFID information and the visual information were initially not defined in the claims as pertaining to the same object. There was no teaching in the description which suggested that information other than objectcentred information may be combined with the visual information, the implication being that the two types of information must relate to one and the same object. No other combination had been envisaged and no justification appeared to exist for generalising this concept to allow for the combination of visual information with non-related RFID information. During the appeal proceedings claim 1 was amended and now sets out, using the wording of the original description, that the decision is taken on objects identified by the visual information and the RFID information. The Board considers that this serves to clarify that both information sources are used in the identification of the objects. That the objects may be identified by the visual and the RFID information means that enough information must be provided by each information source to enable the correct association of the data such that object identification is possible. Consequently, the claims have been restricted to the combination of information pertaining to the same object and so are now supported by the description in this respect. [8.2] The Board acknowledges that the claims are still very broad, relating to the general concept of combining visual information about an object with RFID information about that object. However, the Board does not consider that this generality goes beyond what is warranted by that which the appellant presents as being the contribution to the art and which is described in the application as the mere combination of the visual and the
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T 891/07 – On The Sufficiency Of Humanoids
K’s Law – The ebook
RFID signals. As will be clear from the remarks concerning A 83 above, the Board considers that the invention may currently be seen to lie at this level of generality. In view of the fact that novelty and inventive step have not yet been considered - this being the subject of the examination still to be performed by the ED - any limitation at this stage of the proceedings to more specific embodiments would be unduly restrictive. [8.3] Consequently the Board is of the opinion that the claims are supported by the description. The Board then remitted the case to the ED. Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here.
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T 2149/08 – Come In
K’s Law – The ebook
T 2149/08 – Come In 23 Feb 2011
Should you want to refresh your knowledge on the admissibility of third party interventions, this decision might be of interest to you. The relevant facts of the case are as follows:
November 30, 2006 : lawsuit for ruling of non-infringement, filed by the intervening party (hereinafter referred to as “opponent OII”) at the Court in Milan, Italy, as established by document P5 November 14, 2007 : invalidity action filed by the intervening party, as established by document P6 November 23, 2007 : infringement action in Zaragoza, Spain February 22, 2008 : intervention
Obviously, one of the crucial questions is whether it is the infringement action that triggers the 3 month time limit under R 89(1) or whether the non-infringement lawsuit or the invalidity action do (in which the case the intervention is belated). [1.1] The intervention by opponent OII was filed on 22 February 2008. This had annexed thereto an unsigned copy of an infringement suit dated 23 November 2007 together with an English translation thereof. This is not in dispute. [1.2] The three-month time limit in R 89(1) for filing the notice of intervention is met, only if it is proven that proceedings had been instituted in accordance with A 105(1). [1.2.1] The date of drafting of the infringement lawsuit in Zaragoza bearing a date of 23 November 2007 is at first sight the earliest date on which the lawsuit could possibly have been filed, unless the lawsuit had been postdated. The subsequent filing of the intervention on 22 February 2008 and payment of the fee on the same day were thus within three months of, seemingly, the earliest possible date. [1.2.2] It can be left undecided whether an unsigned copy and translation alone provide insufficient evidence for proving the date of institution of proceedings, or indeed whether proceedings were instituted at all. In the present case opponent OII later filed evidence to that effect on 18 April 2008, in the form of E1. The [patent proprietor] also agreed that the earliest possible date of institution of proceedings was proven by E1. [1.2.3] Since, according to R 89(2), R 76 and R 77 are also applicable to interventions, and since it is stated in R 77(2) that any deficiency which is not a deficiency under A 99(1) or R 76(2) can be remedied within a period specified, it follows that opponent OII indeed filed E1 in good time because no period under R 77(2) had yet been set by the EPO for doing so. [1.2.4] Although E1 is in Spanish and was not filed with a translation into one of the official languages of the EPO, the [patent proprietor] had acknowledged that E1 was evidence showing that the lawsuit had been filed at the earliest on 23 November 2007. A translation was thus not required, although translations of E1 to E3 were indeed filed by way of opponent OII’s submission of 19 November 2010, in response to the Board’s mention of this in its communication sent prior to oral proceedings (OPs). [1.3] The infringement action in Zaragoza bearing a date of 23 November 2007 was the first proceedings falling within the terms of A 105(1). [1.3.1] A 105(1) states: “Any third party may, in accordance with the Implementing Regulations, intervene in opposition proceedings after the opposition period has expired, if the third party proves that (a) proceedings for infringement of the same patent have been instituted against him, or
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T 2149/08 – Come In
K’s Law – The ebook
(b) following a request of the proprietor of the patent to cease alleged infringement, the third party has instituted proceedings for ruling that he is not infringing the patent.” [1.3.2] Contrary to the [patent proprietor’s] submissions, none of the court actions according to P5 […], P6 […], nor the verification proceedings in Zaragoza (of which a copy was not anyway filed in the appeal procedure), is an action under A 105(1) which would have caused the three-month time limit for filing an intervention to end earlier. [1.3.3] P5 […] is a lawsuit brought by opponent OII against the [patent proprietor], requesting inter alia nullification of the European patent […] and a declaration that the products of opponent OII […] did not infringe this patent. However, neither of these claims constitutes proceedings under A 105(1), because the law suit is not a proceedings for infringement instituted against opponent OII as in A 105(1)(a), nor is the lawsuit a proceedings instituted by opponent OII “following a request of the proprietor of the patent to cease alleged infringement” as in A 105(1)(b). [1.3.4] Nowhere in P5 […] is there any statement indicating that the intervener had been requested to cease alleged infringement. On page 3, it is stated that “It is likely...that (the [patent proprietor]) will undertake further judicial measures”. Additionally on page 4, it is stated that “in consideration of the assumed behaviour by (the [patent proprietor]) in Germany and France, the grounds subsist also to fear the now (the [patent proprietor’s]) suits in Italy on the aforementioned patent titles against (opponent OII)”. However, none of these statements concerns a proceedings for infringement instituted against opponent OII, nor does any of these statements imply a request of the proprietor of the patent to cease alleged infringement in Italy. Instead, the statements merely indicate that the lawsuit of opponent OII was an attempt to pre-empt any action of the proprietor in which it might request the ceasing of alleged infringement. [1.3.5] As regards the fact that a verification procedure in Zaragoza had been instituted earlier, which was not contested as such by opponent OII, the [patent proprietor] supplied no evidence which would indicate that these verification proceedings would constitute an “equivalent or even more than” a request to cease alleged infringement, as it had argued in its written submissions. This was also mentioned in the Board’s communication prior to OPs and no new evidence was supplied by the [patent proprietor] in response thereto. [1.3.6] Instead, in its letter of 24 November 2010, the [patent proprietor] argued that the rationale of the “request” mentioned in A 105(1)(b) was to allow a party with a legitimate interest to enter the EPO proceedings and that this was so because in many countries a legitimate interest had to be shown before a lawsuit for a declaration of non-infringement could be filed. However, the [patent proprietor] has merely put this forward as an argument, without providing any evidence which would support its interpretation of the alleged intent of A 105(1)(b) when it was drafted. The Board thus sees no reason to alter its provisional opinion. Further, the [patent proprietor’s] argument that a “request” need not be in writing and that it should merely be understood as a serious intent not to tolerate patent infringement which would result in the third party understanding that the proprietor would sue it for patent infringement, is also entirely unsupported by any evidence to that effect. Merely because a possibility, or even a likelihood, exists that a proprietor may sue a potential infringer, there is no evidence on file which would allow the Board to equate this to be a “request ... to cease alleged infringement.” Also, the actions undertaken in other countries by the [patent proprietor] also against other companies in the same group as opponent OII do not constitute a request by the proprietor of the patent to cease alleged infringement. [1.3.7] P6 […] relates to the lawsuit for nullity filed in Barcelona, but this however gives no indication that the [patent proprietor] had started an infringement proceedings against opponent OII according to A 105(1)(a), nor that the nullity suit is equivalent to a request for a non-infringement ruling and was made following a request of the proprietor to cease alleged infringement under A 105(1)(b). Again, the [patent proprietor] has provided no evidence which shows that a request to cease alleged infringement had been made. [1.4] The [patent proprietor] argued further that opponent OII was not a “third party” in accordance with A 105(1). The Board however finds otherwise.
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T 2149/08 – Come In
K’s Law – The ebook
[1.4.1] P7 and P8 were supplied as evidence by the [patent proprietor] to demonstrate that because opponent OII belonged to the same group of companies as opponent OI, opponent OII should not be understood as independent, nor a “third party” in the terms of A 105(1). [1.4.2] P7 indeed appears to show that opponents OI and OII are within the same group of companies, but provides no information which could lead to a finding that each is not a separate legal entity. The Board finds that the terminology “Any third party” in A 105(1) cannot be given an interpretation other than that each party must be a separate legal entity. This was also mentioned in the communication sent to the parties in preparation for OPs, and the [patent proprietor] did not then contest the fact that each party was a separate legal entity, nor did it provide evidence to the contrary. [1.4.3] P8 also adds nothing to the aforegoing, since it merely shows that the company (Inventio AG) which forms the patent department was able to claim costs for one of the subsidiaries of the holding group. The presumption that opponents OI and OII may be licensees of the patent department company which may further indemnify opponents OI and OII in respect of actions against it by third parties holding intellectual property rights, does not serve to undermine the status of opponent OI and opponent OII as being separate legal entities. [1.4.4] The [patent proprietor’s] allegation that allowing the opponent OII to intervene was an attempt to abuse the opposition procedure is not followed by the Board. The fact that opponent OII may intervene at all lies entirely within the sphere of responsibility of the [patent proprietor], by its choice to institute proceedings against opponent OII during opposition proceedings. [1.5] The Board thus finds, based on the evidence and arguments provided by the parties, that the intervention during opposition proceedings was admissible. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here. For a similar decision (involving the same parties), click here. Another interesting decision on third party interventions can be found here.
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T 156/08 – Open Frame
K’s Law – The ebook
T 156/08 – Open Frame 22 Feb 2011
When a patent application in the field of genetic engineering contains a claim referring to a nucleotide sequence and there are slight differences between the sequence of the application and the sequence of the priority document, is the priority claim invalid? Not necessarily - it depends on what, precisely, is being claimed. The appeal was against the decision of the Examining Division (ED) to refuse the patent application under consideration, because it did not comply with A 123(2) and because the subject-matter was not novel. When examining the requests before it, the Board came to the conclusion that the objections under A 123(2) did not apply any more. It then dealt with the novelty objection. [5] With regard to the second auxiliary request the examining division decided that the subject-matter of its claims 1, 3 and 5 was not novel over the disclosure in document D2. The document was considered as prior art pursuant to A 54(2) because the claims could enjoy priority only from the fourth priority document. This was so because the nucleotide sequence of the BRCA2 gene referred to in the claims of the second auxiliary request, i.e. SEQ ID No. 1, was only identical to that disclosed in the fourth, but not to that disclosed in the third priority document. [6] Present claim 1 of the main request relates to “[a] method for determining variation in the open reading frame (ORF) defined by SEQ ID No. 1 which comprises determining in a tissue sample of a subject a frameshift mutation in said ORF, wherein said mutation causes protein truncation ...”. Present claim 3 of the main request relates to “[a] method for diagnosing a lesion in a human subject for neoplasia which comprises determining in a tissue sample from said lesion a frameshift mutation in the open reading frame (ORF) defined by SEQ ID No. 1 wherein said mutation causes protein truncation and is indicative of neoplasia ...”. [7] Thus, in other words, the methods of claims 1 and 3 require determination of the open reading frame of the BRCA2 gene from the tissue sample and its comparison with the open reading frame “defined by SEQ ID No. 1” as the “reference” open reading frame. Consequently, the “open reading frame defined by SEQ ID No. 1” and not “SEQ ID No. 1” is a feature of the claimed methods. [8] Establishing a “reading frame” is a way of breaking a nucleotide sequence into portions of three nucleotides called triplets or codons. The “open reading frame” is the one that contains a start and a stop codon in the same frame. Also, it is the one supposed to be translated into a protein. Each three-nucleotide codon is translated into one amino acid. [9] Hence, for determining any reading frame of a nucleotide sequence, including an “open reading frame”, knowing the actual sequence of nucleotides, i.e. the kind of nucleotide at a given position, is not necessary. [10] The nucleotide sequence according to SEQ ID No. 1 as disclosed in the third priority document differs from that disclosed in the application in the kind of nucleotide at positions 2014, 4553, 4815, 5782-5789, 5841, 5972 and 8716. These alterations neither affect the length of the sequence to be translated nor the codon which “opens” the reading frame, i.e. the start codon. Therefore, despite the variations in the sequence, the open reading frame defined by SEQ ID No. 1 according to the third priority document and the application as filed remains the same. Thus, the feature at issue here, i.e. the “open reading frame defined by SEQ ID No. 1” is disclosed in the third priority document. [11] Consequently, in the board’s view, the non-identity of the nucleotide sequence disclosed in SEQ ID No. 1 according to the third priority document and the application as filed is not a reason for denying the third priority 2432 | 3398
T 156/08 – Open Frame
K’s Law – The ebook
date for the subject-matter of the present claims 1 to 3 and accordingly is also not a reason for considering document D2 as prior art pursuant to A 54(2). Therefore, the ED’s objections of lack of novelty and inventive step are not tenable. [12] The finding in point 11 above, first half-sentence, is in line with the reasoning in two decisions issued after the decision under appeal was taken, i.e. decision T 80/05 [37] and T 666/05 [40]. Also in the cases underlying these decisions the claims related to diagnostic methods involving the determination of frameshift mutations, the “reference open reading frame” was defined in relation to a specific sequence and the issue of the entitlement to priority arose because in both cases only the fifth priority document disclosed a sequence exactly corresponding to that referred to in the claims. Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here.
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T 1171/06 – More On Models
K’s Law – The ebook
T 1171/06 – More On Models 21 Feb 2011
This decision deals with an appeal against the decision of the Examining Division (ED) to refuse an application belonging to the modelling realm. Claims 1 and 3 of the main request before the Board read: 1. Method for modelling a mechatronic system in a motor vehicle, wherein the mechatronic system is structured in a plurality of components between which there are pregiven communication relationships, such as inquiry, invitation and order; wherein a mapping requirement is provided by means of which said components and communication relationships of the system are converted into elements of an object-oriented modelling language, preferentially the UML language; characterised in that said components are divided into an envelope and at least one subcomponent, wherein said subcomponent comprises the existing functions of the component and said envelope comprises at least one interface for said communication relationships, wherein said envelope is devised as a UML stereotype. 3. Device for modelling a mechatronic system in a motor vehicle, wherein the mechatronic system is structured in a plurality of components between which there are pregiven communication relationships, such as inquiry, invitation and order; wherein a mapping requirement is provided by means of which said components and communication relationships of the system are converted into elements of an object-oriented modelling language, preferentially the UML language; characterised in that said components are divided into an envelope and at least one subcomponent, wherein said subcomponent comprises the existing functions of the component and said envelope comprises at least one interface for said communication relationships, wherein said envelope is devised as a UML stereotype. Here is what the Board had to say: ** Translated from the German ** [2] The invention concerns the modelling of a mechatronic system in a motor vehicle wherein the structuring of the system in components and communication relationships is converted into an object-oriented modelling language by means of a mapping requirement. [2.1] The independent claims of [the requests on file] state that the object-oriented modelling language is preferentially the UML language, but they also state that it has to comprise a “UML stereotype”. The Board is of the opinion that thereby the claim determines that UML is the object-oriented modelling language as claimed. The Board notes that, as far as the following discussion is concerned, this interpretation is in favour of the appellant. [2.2] According to the preamble, the independent claims are directed to a method or a device “for modelling a mechatronic system”. The analysis of the object to be modelled, in order to choose the relevant elements, attributes and relationships, is an essential part of a modelling method. This step – in the present case, e.g. the specification of vehicle electronics by means of Cartronic – is not comprised by the subject-matter of claim 1 but precedes it and is presupposed by it […]. Thus the subject-matter of claim 1 is not a complete modelling method but at best part of it. Therefore, the Board interprets claim 1 to refer to a “method (suitable) for (use during the) modelling a mechatronic system”. The same holds true for claim 3. [2.3] Neither the mechatronic system as such nor its components are specified in more detail in the claims. When dealing with the communication relationships, claim 1 distinguishes, for example, between “inquiry” (Abfrage), “invitation” (Aufforderung) and “order” (Auftrag). The term “invitation” (Aufforderung) appears to be a clerical error “request” and has been corrected to read “request” (Anforderung) in the auxiliary request. [2.4] The Board is of the opinion that the wording of claim 1 does not make it clear whether the claimed structuring is a factual limitation of the system to be modelled (that is to say, to a system having the required components and communication relationships) of whether it designates a model that describes the mechatronic 2434 | 3398
T 1171/06 – More On Models
K’s Law – The ebook
system via the required components and communication relationships. However, as the constructs of a modelling language, to which said components and relationships are to be converted by means of the “mapping requirement”, constitute a description of the mechatronic system, it appears to be more straightforward to assume that a description is at the basis of this mapping. This interpretation is confirmed by the application, wherein Cartronic is referred to as “ordering concept” allowing for, inter alia, the claimed types of communication […] and by which models – i.e. descriptions – of mechatronic systems are established […]. [2.5] It is the intention of the invention to relate to methods and a device for mapping a Cartronic model into the object-oriented modelling language UML […]. The appellant has not contested this interpretation expressed in the notification by the Board. Consequently, what follows is based on this interpretation. Questions related to the clarity of terminology that is proper to Cartronic or UML (such as “inquiry”, “request”, “order”, “UML-language”, “UML stereotype”) or the concrete identifiers («interface» and «interfaceorder») and their precise signification can be left open in this decision. [3] In decision T 354/07 the competent Board has explained (cf. its headnote) that “as a rule, […] conceptual methods and meta-methods of software creation do not possess technical features relevant for patentability and, therefore, cannot establish inventive step, unless in a particular case it can be shown that there is a direct causal connection with a technical effect that is relevant for the solution of a technical problem.” Moreover, it has been said (cf. point [4] of the reasons) that “the design […] of complex systems [required the person carrying out this work] to act like an engineer and to apply technical expertise but [that] the achievement aimed at and obtained […] does not consist in providing a technical solution to a technical problem, but [for example] a model for data, processes and/or functions […].” [3.1] Claim 1 discussed in T 354/07 is directed to a method for generating of software programs (31) using an electronic data processing system” wherein the software program has to carry out, inter alia, “controlling and/or regulation tasks” and wherein a “second function chart is established by means of a platform-independent first function chart (7)”, “the second function chart being adapted to specific requirements of [a] target platform.” Function charts within the meaning of the applications are “graphical representations of a model of the control system to be established, on different levels of abstraction, without there being an interaction with the system or the control procedures” (see point [7] of the reasons). [3.2] This subject-matter is very close to the subject-matter of the method claimed in the present case. Both methods concern the modelling of comparable technical systems. Both methods refer to two models or their representations, respectively, in a notation that is typically graphical, as well as to the mapping of one of those models into another. [4] In what follows, the Board endorses the explanations of decision T 354/07 cited above (point [3]). [4.1] Therefore, it is to be examined whether it is possible, for the method of claim 1 of both requests, to establish a causal link with a technical effect that is relevant for the solution of a technical problem. [4.2] The present application does not refer to the object to be modelled as an unspecific controlling or regulation system only but also – more narrowly - as a “mechatronic system in a motor vehicle”. However, even this indication is very generic and does not allow to deduce a concrete modelling task of a technical problem that has been considered in this context. [4.3] In contrast to the situation in T 354/07, there is no disclosure in the present application of an automatic (“using an electronic data processing system”) conversion of the models. Claims 1 and 2 of both requests do not refer to any computer assistance. Claim 1 is directed to a “device” but it remains open which method steps are assisted by the device, and how. [4.4] Again in contrast to the object of T 354/07, the present application does not deal with the automatic generation of program code from a model, as the representative appears to have confirmed during the oral proceedings (OPs) […]. Indeed, neither Cartronic (referred to as “preformal” in the description […]) nor UML are suitable for easily generating program code in an automatic way. 2435 | 3398
T 1171/06 – More On Models
K’s Law – The ebook
[4.5] The application refers to the life cycle of software, which comprises very different phases such as problem analysis, systems specification, but also implementation, operation and maintenance. In this context, so goes the disclosure, the object-oriented procedure makes it possible to re-use “components and concepts” in a phase overlapping manner […]. When doing so, the graphic-based models, serving as documentation elements, support, inter alia, the communication between the groups of persons who participate in the development, among which vehicle manufacturers or software developers. However, the Board is of the opinion that a model is not imparted a technical effect because it serves the documentation of the system or because it simplifies communication, even if the system as such is technical. [4.6] There are a number of commercial software development tools available for UML, and it is one of the declared objectives of the application to make those tools available for models specified in Cartronic […]. However, those tools are neither claimed nor disclosed in detail. It may, therefore, be left open whether a technical effect is generated by the intended application of such a known tool to a Cartronic model converted to UML. [4.7] Therefore, the Board is unable to find a technical effect which is relevant for the solution of a technical problem and which has a causal connection with one of the claimed methods. The appellant has not named any such technical effect in order to overcome this objection raised in the summons to the OPs, either. [4.8] As a consequence, the Board comes to the conclusion that the subject-matter of claims 1 and 2 of both requests is not technical but corresponds to a method for a conceptual or mental activity and, as such, is excluded from patentability under A 52(2)(c) and (3). [4.9] In conformity with the established case law (see e.g. T 258/03), claim 3 of both requests, which is directed to a device, is considered to be an invention within the meaning of A 52(1). However, the mere unspecific indication of a “device for” assisting a non-technical method does not make any perceptible technical contribution beyond any commercially available PC known at the priority date. Therefore, the subject-matter of claim 3 lacks an inventive step under A 56. [5] As none of the requests complies with the requirements of the EPC, the appeal is to be dismissed. Should you wish to download the whole document (in German), just click here. To have a look at the file wrapper, click here. For a translation of the relevant parts of T 354/07, see my previous post dedicated to this decision.
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T 1225/08 – Drawing The Line
K’s Law – The ebook
T 1225/08 – Drawing The Line 19 Feb 2011
This decision deals with an appeal filed by the patent proprietor against the revocation of its patent by the Opposition Division (OD). Claim 1 on file before the Board (which corresponds to claim 1 as granted) read:
A method of optically scanning a vehicle wheel, in particular a motor vehicle wheel, in which in a measuring step a wheel location is sensed by means of a light beam emitted by a light source and reflected to a position-sensitive receiver and the spacing of the sensed location relative to a reference location is measured from the directions of the emitted beam and the reflected beam, wherein for successive measuring steps the emitted beam and the position-sensitive receiver are pivoted synchronously about a common axis in a measuring plane which intersects the rim surface of the motor vehicle wheel at an obtuse or approximately right angle and which is below the horizontally arranged wheel axis, characterised in that the contours of the inward side, which is directed towards the wheel axis, of the wheel rim and of the radial wheel disc portion are ascertained from the measured spacings of adjoined wheel locations. The decision contains an interesting paragraph on how to interpret a drawing of the closest prior art, document E4a, which is the international application published as WO 96/07880. ** Translated from the German ** [3] Document E4a discloses a method for balancing a wheel by means of balance weights, wherein the inner outline of the wheel rim is scanned and the scanned values are transmitted to a calculator. The calculator determines the inner outline of the wheel rim from the scanned values and then the optimized values and positions of the balance weights from the computed outline of the wheel rim […]. [3.3.1] Document E4a discloses several devices for determining the inner outline of the rim (Figures 1 to 4), 2437 | 3398
T 1225/08 – Drawing The Line
K’s Law – The ebook
(Click to enlarge) wherein the device disclosed in connection with Figure 3 is provided with a pivotally mounted distance meter.
In this embodiment the distance between the pivotally mounted distance meter and the respective point addressed at the outline of the rim is detected, and then the outline of the rim of the wheel is determined […]. Figure 3 shows a distance meter 6 mounted in a pivoting drive 9 and a dashed line 7 that extends from the distance meter to the wheel rim. According to the description of document E4, te distance meter depicted in Figure 3 may be “a mechanical, optical, ultrasonic or electrical (inductive or capacitive) distance meter.” […] In its decision the OD endorsed the opinion of the [opponent] according to which
an optical distance meter necessarily contains a light source and a receiver, and it follows from document E4a, and in particular its Figure 3, that the receiver consists in a position sensitive receiver and that the light beam emitted by the light source as well as the receiver are synchronously pivoted around a common axis.
However, Figure 3 is a merely schematic drawing of a pivotally mounted distance meter, which is to represent not only an optical but also, as explained above, a mechanical, ultrasonic or electrical (inductive or capacitive) distance meter. In such a simplified, undifferentiated and merely schematic representation, which is to comprise so different embodiments, the dashed line 7 extending from the distance meter to the wheel rim can also be understood to be a merely schematic representation of the distance or the connecting line between the distance meter and the respective point addressed at the outline of the rim, respectively. As a consequence, the skilled person implementing the optical embodiment mentioned in document E4a would understand the dashed line in Figure 3 to be merely the scanning direction of the optical distance meter, and would not take it as a hint that in such an implementation the dashed line is to represent a light beam that is emitted from a distance meter and that is reflected back to the distance meter by the rim. It follows that document E4a does not disclose how the rotatable optical distance meter is to be equipped and which optical measurement principle is to be used. It also follows that the parts of the document E4a which deal with an optical implementation of the pivotally mounted distance meter do not teach the skilled person that the distance meter in such a configuration has to be a position sensitive receiver and that in addition to an optical receiver a light source that pivots in the same way as the receiver, or something of that kind. In particular, the disclosure of document E4a does not exclude a pivotable optical receiver functioning with a stationary light source or without any scanning (antastend) emitted light beam (e.g. when a pivotable distance meter based on image acquisition is used).
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T 1225/08 – Drawing The Line
K’s Law – The ebook
Therefore, the Board is of the opinion that – in contrast to the understanding of the [opponent] and of the OD – document D4 does not directly and unambiguously disclose that the optical implementation of the pivotable distance meter comprises a position sensitive receiver functioning with a scanning (antastend) light source, and even less so that – as claimed – the emitter is pivoted together with the beam emitted by the light source synchronously about a common axis. Therefore, all those features are novel over document E4a. Finally, the Board maintained the patent as granted. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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T 1364/08 – Old And Young Together
K’s Law – The ebook
T 1364/08 – Old And Young Together 18 Feb 2011
This decision deals with an appeal subsequent to a refusal of an application by the Examining Division (ED). Claim 1 on file before the Board read: An adenovirus in which the VAI gene is lacking or mutated and which is capable of replicating in cells having an activated Ras-pathway but not in normal cells for treating a Ras-mediated cell proliferative disorder in a mammal, whereby the adenovirus is to be administered to proliferating cells in a mammal having a Ras-activated pathway under conditions which result in substantial lysis of the proliferating cells or for treating a neoplasm suspected of having an activated Ras-pathway in a mammal, wherein after the surgical removal of substantially all of the neoplasm the adenovirus is to be administered to the surgical site in an amount sufficient to result in substantial oncolysis of any remaining neoplasm. The Board considers whether the invention is sufficiently disclosed: [1] [As stated in the application,] “Genetic alteration of the proto-oncogen Ras is believed to contribute to approximately 30% of all human tumours. The role that Ras plays in the pathogenesis of human tumours is specific to the type of tumour” […]. [2] Protein kinase R (PKR), is an interferon-induced, double-stranded (ds) RNA-activated protein kinase which protects cells against viral infections. In situations of viral infection, the dsRNA created by viral replication binds to the N-terminal domain of PKR and thus activates it. Once active, PKR is able to phosphorylate the translation initiation factor eIF2a. This inhibits further cellular mRNA translation, thereby also preventing viral protein synthesis such that viral replication and thus also cell lysis is prevented. [3] Claim 1 refers to an adenovirus in which the VAI gene is lacking or mutated and which is capable of replicating in cells having an activated Ras-pathway but not in normal cells for treating a Ras-mediated cell proliferative disorder in a mammal. [4] It has been established by case law that for a claim referring to a therapeutic application of a substance or composition, it is a requirement according to A 83 that it is demonstrated that the claimed compound has a direct effect on a metabolic mechanism specifically involved in the disease to be treated. This mechanism can be either known from the prior art, or be shown in the application per se, for example by the provision of experimental tests. Once this evidence is available, post-published evidence may be taken into account to back up these findings (see decision T 609/02 [9]). [5] The application does not provide any experimental data proving that an adenovirus of claim 1 is able to replicate in cells having an activated Ras-pathway but not in normal cells. No data is present demonstrating that such a virus can be useful for the treatment of Ras-mediated cell proliferative disorders. [6] However, […] the application as published contains a detailed summary of the “state of the art”. Reference is made to document D16 of the list of documents given on pages 1 and 2 of the application, which is also document D16 in the present case. Page 5, lines 7 to 8 of the present application read: “It has been demonstrated that in Ras transformed cells, dsRNA-mediated activation of PKR was blocked at the level of autophosphorylation.” Document D16 itself moreover discloses that reoviruses, being dsRNA viruses, in their wild-type form lack an effective PKR counteracting mechanism. They cannot therefore replicate in normal cells but only in cells having an activated Ras pathway because downstream effectors of Ras inactivate PKR. This makes them a useful tool for the treatment of Ras-mediated cell proliferative disorders.
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This is also disclosed in document D8, a published International patent application whose inventors and applicants are the authors of document D16. On page 6, lines 12 to 13 it is stated that reoviruses use the host cell’s Ras pathway machinery to down-regulate PKR and thus reproduce. Claim 1 of document D8 reads: “Use of reovirus for the manufacture of a medicament for treating Ras-mediated neoplasm in a mammal.” [7] It was known that, contrary to reoviruses, various other viruses have evolved PKR inhibitory functions as a mechanism of defence against the host’s antiviral response in order to counteract viral replication restrictions. This is acknowledged [in] the application as published where the different “strategies” of four viruses to inhibit PKR activation in response to their presence are described. [8] [Moreover] it is said that adenovirus produces large amounts of VAI RNA which inactivates PKR by acting as a competitive inhibitor of the full length viral dsRNA. PKR bound to VAI RNA is not activated. Reference is made to document D8 of the application’s own reference list, which is document D21 in the present case. In the section “Materials and Methods” under “Cells and virus” […] the authors of document D21 mention that the used adenovirus mutant has been described previously and was provided to them by the authors of a prior art document which is document D20 in the present case. A further document on file, published by the authors of document D20, is document D7, which reports that a significant number of adenoviruses, in which the VAI gene has been mutated, lost their ability to counteract the cellular antiviral response mediated by the interferon-induced, dsRNA-activated protein kinase PKR (abstract), which made them unable to replicate in normal cells. [9] Besides the description of the viral anti-PKR strategies of Vaccinia virus and of Parapoxvirus, the present application […] describes also that the Herpes simplex virus (HSV) infected cell protein 34.5 (ICP34.5) encoded by the γ34.5 gene of HSV prevents the antiviral effects exerted by PKR. [… T]he application refers to document D32 of its own reference list (which is document (14) in the present case), by saying that it “generically describes methods for selectively killing neoplastic cells which utilize altered viruses that are capable of replication in neoplastic cells while sparing surrounding normal tissue”. Document D14 refers to the use of a HSV mutant that is incapable of expressing a functional γ34.5 gene product (see claim 1). [10] The Board is of the opinion that the disclosure in the prior art is such that it is plausible that the adenovirus of claim 1 is useful for the therapeutic application referred to in the claim. Under these circumstances the disclosure in post-published document T1 can be taken into account to back up these findings. In fact, document T1 contains experimental data demonstrating that an adenovirus in which the VAI gene is lacking or mutated can be used for oncolytic virotherapy of Ras-mediated cell proliferative disorders such as pancreatic tumours […]. Therefore the application is considered to disclose the invention in a manner sufficiently clear and complete to be carried out by a person skilled in the art as required by A 83. NB: This decision was first reported on a nice weblog dedicated to French patent case law. The author notes that the case law relied upon, T 609/02, dealt with Swiss-type claims. The reasons for this decision contain the following paragraph: “[9] Where a therapeutic application is claimed in the form allowed by the Enlarged Board of Appeal in its decision G 5/83 i.e. in the form of the use of a substance or composition for the manufacture of a medicament for a defined therapeutic application, attaining the claimed therapeutic effect is a functional technical feature of the claim (see G 2/88 and G 6/88 [headnote III; 9], for non-medical applications, see also T 158/96 [3.1]). As a consequence, under A 83, unless this is already known to the skilled person at the priority date, the application must disclose the suitability of the product to be manufactured for the claimed therapeutic application.”
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Although the present decision presents its conclusion as a mere application of the established case law, it extends the reasoning to claims covering second or higher therapeutic applications that are not drafted in Swissclaim form. The underlying assumption is that even in non-Swiss claims the claimed therapeutic effect is to be understood as a functional technical feature of the claim. Sounds reasonable to me. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here. A post on a similar decision can be found here.
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T 625/09 – A Question Of Tonality
K’s Law – The ebook
T 625/09 – A Question Of Tonality 17 Feb 2011
The following decision deals with a request for reimbursement of the appeal fee in a case where the Examining Division (ED) had granted interlocutory revision. *** Translated from the French *** [2.1] In order for a request for reimbursement to be allowed, three conditions have to be satisfied. - the appeal or the petition for review have to be found allowable; - there has to be a substantial procedural violation leading to the impugned decision; - reimbursement has to be equitable. [2.2] The first condition is fulfilled. As far as the substantial procedural violation is concerned, it has been submitted that the examination proceedings had been conducted in a way that did not comply with the criteria of common practice, regardless of the principle of good faith of the applicant. The deficiencies put forward by the requesting party can be summarised as follows. The ED has introduced document D9 when it summoned [the applicant] to oral proceedings (OPs). This document had changed the course of the proceedings as it convinced the applicant that its claims had to be amended. From this moment on, OPs were not required because - as the requesting party points out in a slightly contradictory manner – on one hand, only details were concerned and, on the other hand, it could not carry out the required amendments within the time limit set by the ED. The applicant agreed with the substantial analysis offered by the Examiner and, in its opinion, a patent could be granted provided that some minor adjustments were carried out. However, the necessary consequence was a new notification or at least the continuation of the proceedings in writing. In any case, the tone of the Examiner on the phone comforted it in its opinion that there was no use in attending the OPs. [2.3] First of all, the Board points out that it can base its decision only on objective elements. As far as the telephone conversation is concerned, it only has at its disposal the minutes, the content of which is not disputed, the requesting party complaining about the tone which had dissuaded it from attending the OPs. [2.4] A 94(3) and R 71(1) give the ED a discretionary power the exercise of which depends on the circumstances of each individual case. Only the violation of a fundamental principle, such as the right to be heard, could justify calling into question the way this discretionary power is exercised (see, for instance, T 1578/05). [2.5] Here the decisive question is whether the ED has committed a violation of a general principle of procedure by maintaining the OPs and by rejecting the latest set of claims as inadmissible, in the absence of the applicant, instead of sending a third notification, as the applicant would have wished. [2.6] The Board cannot see any ground for such a procedural violation, for the following reasons. The OPs have been summoned after two notifications of the ED. It is true that document D9 has been introduced at a late stage, but as the requesting party admitted, the amendments that resulted from it were only adjustments. The claims filed in response to the summons to OPs one week before have been rejected, in the absence of the applicant, not only because they were filed belatedly but because they lacked clarity and did not comply with A 123(2). Finally, in its letter dated July 27, 2009, [sent] during the interlocutory revision phase, the requesting party precisely “adjusts” the points raised in the paragraph “additional remarks” of the decision of October 20, 2008. It follows from this sequence of events that the deficiencies of the set of claims that was rejected and subsequently accepted could have been overcome during the OPs. Leaving aside the tone and the aggressiveness mentioned by the requesting party – which correspond to an unverifiable experience – the terms of the minutes dated September 8, 2009, received by the requesting party are clear. On one hand, they express an opinion (“The new claims are not admissible pursuant to R 116(1) and the Guidelines E-III 8.6 because at first sight (a priori) (emphasis by the Board) they do not comply with the requirements of A 84 and A 123(2)”), on the other hand, the deficiencies raised are of the kind that generally appear when new requests are filed and which find a 2443 | 3398
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solution during the OPs in the case of late filed requests. As a matter of fact, the OPs had been maintained at the original date. [2.7] It follows from the minutes together with the additional remarks of the decision that the admissibility of the filed claims, which have led to the interlocutory revision, could not be excluded at once. [2.8] Contrary to the submissions of the requesting party, an objective assessment of all of the stages of the examining proceedings […] leads one to think that the OPs could have played their role of allowing the requesting party to finalize the claims it had filed together with the statement of grounds of appeal, without further extending the proceedings. The position of the requesting party, which consists in judging in advance that these proceedings were useless, cannot be justified. By choosing the option of OPs rather than a third notification, the ED has acted within the margin of manoeuvre provided by A 94(3) and R 71(1). In the absence of other facts that would infringe the principle of good faith, the Board cannot find any ground for a substantial procedural violation. [2.8] Under these circumstances, the Board cannot see how the good faith of the requesting party would have been surprised. […] The request for reimbursement of the appeal fee is dismissed. Should you wish to download the whole document (in French), just click here. To have a look at the file wrapper, click here.
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T 1962/08 – Cross With The Cross-Check
K’s Law – The ebook
T 1962/08 – Cross With The Cross-Check 16 Feb 2011
The present decision deals with a request for re-establishment. The applicant had missed the time limit for filing an appeal against the decision of the Examining Division (ED) to refuse the application under consideration. There had been an internal mistake when the time limit for filing an appeal had been recorded. As a consequence, the appeal was not filed. The representative had noted this mistake when he was alerted that the time limit for filing the statement of grounds of appeal was expiring soon. The representative questioned the requirement of an independent cross-check. The case law suggested such a cross-check but did not make it mandatory, or, at least, it created the impression that it was not mandatory. He pointed out that the fact that his firm’s system had worked satisfactorily over decades showed that is was normally effective. There had been no incentive to consider potential sources of mistakes. There was no reason to have more stringent requirements for due care in monitoring time limits because one single error in the subsequent steps could also lead to a loss of rights. He also contested the distinction made between small and large firms because both required a system in writing. Moreover, the German Bundesgerichtshof (BGH) did not require a redundant cross-check … The representative also requested the following questions to be referred to the Enlarged Board (EBA): 1. Does the practice of requiring large firms/companies to have an independent cross-check and not to require this from a small firm/company by referring to the close personal collaboration of the persons involved constitute a case of disproportionate discrimination? 2. Is the principle of proportionality safeguarded when an independent cross-check is required although other legal systems explicitly do not require it (*) and although mistakes in domains different from monitoring of time limits can lead to a loss of rights? 3. Is an independent cross-check – at least for large firms/companies – a mandatory requirement or merely a recommendation for proving all due care? (*) This is a reference to a judgment of the German Bundesgerichtshof (BGH) of June 29, 2000, which explicitly denied the need for a cross-check. In the following you will find the part of the decision dealing with the allowability of the request for reestablishment. It is rather lengthy, so if you just want a short summary, here is the headnote provided by the Board: “In general it is part of the requirements of due care concerning a system for monitoring time limits that the monitoring of time limits is not entrusted to one single person but that there is a general cross-checking mechanism incorporated into the chosen system for monitoring time limits, which mechanism is independent of the person responsible for the monitoring of time limits (confirmation of T 428/98). This cross-checking mechanism can be provided within one single system for monitoring time limits. If the cross-checking mechanism is implemented by means of a second system for monitoring time limits, the latter has to be independent of the first system (complement to T 1465/07).” For the sake of brevity, I have used the following abbreviations. ADuCaRC : all due care required by the circumstances MoTiL : monitoring time limits MoTiL system is short for “system for monitoring time limits” PeRMoTiL : person responsible for monitoring time limits *** Translated from the German *** Due care taken by the applicant and its representative
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[5.1] The request is allowable if the applicant, in spite of all due care having been taken, was unable to observe the time limit for filing an appeal. According to the general rules concerning the onus of proof the applicant bears the burden of proof. The request for re-establishment of an applicant with a professional representative acting on his behalf is only allowable if both the applicant himself and his representative have met the necessary standard of care (J 1/07 [4.1]) because a failure of its representative is imputed to the applicant. Thus, when an applicant is represented by a professional representative, a request for re-establishment cannot be acceded to unless the representative himself can show that he has taken the due care required of an applicant by A 122(1). (see J 5/80 [headnote 1]). Taking of all due care by the representative General statements on due care [5.2.1] The following statements are extracted from the Case Law Book (Fifth edition). […] In numerous decisions the boards have ruled on the “all due care required by the circumstances” (ADuCaRC) issue. In considering it, the circumstances of each case must be looked at as a whole […] The obligation to exercise due care must be considered in the light of the situation as it stood before the time limit expired. […] For cases where the cause of noncompliance with a time limit involves some error in the carrying out of the party’s intention to comply with the time limit, the case law has established the criterion that due care is considered to have been taken if non-compliance with the time limit results either from exceptional circumstances or from an isolated mistake within a normally satisfactory monitoring system […] 6.2.2 Isolated mistake within a satisfactory MoTiL system (a) General principles An isolated mistake in a normally satisfactory system is excusable (see for example T 1024/02, T 165/04 and T 221/04); the appellant or his representative must plausibly show that a normally effective MoTiL system prescribed by the EPC was established at the relevant time in the office in question (J 2/86, J 3/86 […] and J 23/92). The fact that this system operated efficiently for many years was evidence that it was normally satisfactory (see T 30/90, J 31/90, J 32/90, T 309/88). […] (b) Small firms/companies […] (c) Large firms/companies In J 9/86 the board was of the opinion that in a large firm where a large number of dates had to be monitored at any given time, it was normally to be expected that at least one effective crosscheck was built into the system […]. The relevant content of the “Case Law” publication [5.2.2] The applicant’s representative pointed out that the publication “Case Law” (in its German version) indicated that the existence of an independent cross-check was not a mandatory requirement. This submission was based on sub-paragraph VI.E.7.3.3.c) of the 6th edition of the “Case Law” book as far as it is identical to the 5th edition (see sub-paragraph VI.E.6.2.2.c)). The use of the expression “effective” (effizient) in the context of the requirement of a “normally effective MoTiL system” in sub-paragraph VI.E.7.3.3.a) of the 6th edition, which, as far as this point is concerned, is identical to VI.E.6.2.2.a) of the 5th edition of the “Case Law” book, also spoke in favour of there being no mandatory requirement. He pointed out that he had the right to rely on the content of those extracts of the “Case Law” book (which have been partly reproduced in the preceding paragraph), even without reading the decisions cited therein. It should be noted here that the private practice of the representative is a large firm within the meaning of the extract of the “Case Law” book cited above: the letterhead mentions seven patent attorneys and three attorneysat-law for the Munich office alone, and the representative has mentioned that the firm has to deal with between 2446 | 3398
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5000 and 10000 time limits every year. During the OPs, the representative has not disputed that the firm was indeed a large firm within the above meaning […]. Decisions of the Board concerning large firms are summarized under the same heading of the 5th edition of the “Case Law” book, in the above mentioned paragraph VI.E.6.2.2.c), together with decisions concerning large companies […]. Thus, whoever wished to rely on this book alone, would have to expect that large companies and large firms would be treated in the same way. When reading the book, he/she would find, among other things, that the second section of part VI.E.6.2.2.c) mentions, in its discussion of the decision in case T 828/94, that a monitoring system “should contain an independent cross-check” (emphasis by the Board) and could understand this to mean that such a cross-check does not mandatorily have to be implemented but rather is optional. Moreover, the preceding, above cited first paragraph of this section states: “In J 9/86 the board was of the opinion that in a large firm where a large number of dates had to be monitored at any given time, it was normally to be expected that at least one effective cross-check was built into the system …” (emphasis by the Board) This extract, in particular the expression “it was normally to be expected” also could allow the deduction that an independent cross-check was not always necessary. However, it is also stated, in view of the findings of another Board in case T 686/97 […]: “The provision of a “redundant” or “failsafe system” is an essential component of a normally satisfactory reminder system in corporate departments.” In any case, this passage unambiguously requires an independent, second cross-check system. If one was to approve the representative and understand this to be in contradiction with the text of T 828/94 reproduced in the “Case Law” book and, moreover, to J 9/86, and if one was also to assume, as does the representative, that it was possible to rely on the “Case Law” book alone, then the question would arrive as to how the representative would have to deal with such a contradiction in the context of the requirement of “taking ADuCaRC” under A 122(1). The Board is of the opinion that when a professional representative comes to the conclusion that, when dealing with the same question, some decisions of the Boards of appeal have formulated more severe requirements than others, he/she would follow the decision that formulated the most severe requirements, unless it was clear that this decision was an exception. Only this understanding complies with the wording of the provision that requires that ADuCaRC is to be taken. In the present case, this would have meant that the representative would have had to apply T 686/97, wherein, according to the “Case Law” book, a “redundant” or “failsafe” cross-check system is mandatorily required. The reference, in section VI.E.6.2.2.a) of the 5th edition, that a “normally effective” MoTiL system was sufficient does not change this finding. This already follows from the fact that this section is entitled “General principles” and that the following sub-paragraph c) provides a more specific sub-paragraph for large firms and companies, and, therefore, prevails. Should the representative assume that the two sections were of the same importance, he/she would have to see a contradiction and stick to the more severe requirements. Therefore, the representative’s submission that in view of the above mentioned part of the “Case Law” book, there was no mandatory requirement for a cross-check is unsuccessful. [5.2.3] This notwithstanding, a professional representative cannot rely on the “Case Law” book alone. A careful professional representative can be expected to get familiar with the decisions that are relevant for the factual situation under consideration and does not inform him/herself exclusively by means of a collection of extracts or summaries of selected decisions established by somebody else. This also holds true for the “Case Law” book, the 5th edition of which mentions the editor to be the “Legal Research Service for the Boards of Appeal, DG3, EPO”. The foreword to this edition is of particular interest. Its author, the chairman of the EBA and vice-president of DG3, makes the following statements (emphasis by the Board): “The book follows the same general pattern as in the previous editions: dividing the case law into topics and illustrating each by short summaries of selected decisions. … The purpose of this book is to help users of the European Patent system identify the decisions they need. No summary, however careful, can replace study of the actual decision. All the decisions handed down since 1980 are available free of charge on the EPO’s Internet site (www.european-patent-office.org). They can be accessed via the reference number or via search terms. They are also available on the Espace Legal CD-ROM (or DVD), which is 2447 | 3398
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published twice a year. … This latest report on the case law of the EPO boards of appeal will provide information for everyone concerned with European patent law and should be read in conjunction with the annual “Board of Appeal Case Law” Special Editions to the EPO Official Journal.” It should be noted that the aim of the book is to help finding relevant decisions but not no replace the study of the actual decision. It is also important to note that all decisions handed down since 1980 are available free of charge on the Internet. By the way, the foreword also is in line with T 494/95, where the Board has refused the appellant’s argument of “good faith” based on a misleading statement in the “Case Law” book in its 1996 edition, in particular for the following reason: “Moreover, this book is only a summary of decisions and not a text of law. Such summaries cannot replace the study of the decisions but can only provide references to decisions that might be relevant. The reader may be expected to read the individual decisions cited in the book if he/she wishes to base his/her arguments on these decisions” (emphasis by the Board) Were it only for the above mentioned explicitly declared intention of the “Case Law” book, it is impossible to construe a responsibility of the Office for incomplete, misleading or erroneous statements in the book, in application of the principle of good faith (see “Case Law”, 6.A.VI.A.1). Quite to the contrary, the book explicitly did not establish a relationship of good faith (Vertrauenstatbestand) from which it could be derived that the summaries of decisions provided therein could replace the study of the decisions under consideration. Having said all this, it is necessary to consider all the relevant decisions that have been made available by the Office before the expiration of the time limit. The submissions of the representative are examined on the basis of those decisions. [5.2.4] The practice of the Boards of appeal a) Content of the decisions of the Boards of appeal The representative points out that, according to the case law of the Boards of appeal, an independent cross-check is not mandatory. Moreover, it was not clear what such a cross-check was meant to comprise. As far as [the Board] can see, a system with an effective “cross-check” was mentioned for the first time in decision J 9/86 [9] […]: “in a large firm where a large number of dates have to be monitored at any given time, it is normally to be expected that at least one effective cross-check is built into the system.” According to the (third) headnote of T 428/98 […] “generally speaking, to satisfy the requirement of all due care, a MoTiL system must not leave MoTiL in the hands of just one person, but must incorporate at least one effective crosscheck.” In any case, the extract from this decision that is given below shows that the cross-checking mechanism has to be independent of the PerMoTiL, even if one were inclined not to see this requirement in the wording of the headnote […]. The Board is of the opinion that it is indispensable (unumgänglich) that a representative having doubts concerning the content of a headnote also reads the reasons for the decision, in particular if, as is the case here, the relevant section is explicitly referred to in the headnote. In any case, as a rule, only the reasons for the decisions contain the relevant justification of a decision. The relevant passage of the decision reads: “[3.5] However, case law rules that in such a case it must also be demonstrated that the law office operated a normally efficient MoTiL system (see case law references in: Case Law, loc. cit.) which had failed only for very specific reasons. Under case law, one of the requirements of care applicable to a MoTiL system is generally that monitoring should not be left in the hands of just one person; the chosen monitoring system should incorporate at least one effective cross-check (Case Law, VI-E, 9.2.3; see for example T 828/94 [2 et seq.], with other case law references). … In very special circumstances, the boards of appeal have been prepared to consider a representative to have exercised all due care even though there was no all-purpose crosscross-checking mechanism independent of the PerMoTiL; but that was only in cases where 2448 | 3398
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the representative’s office was a small unit in which he essentially bore sole responsibility for substantive processing of the files and the demand for MoTiL was accordingly limited, and where MoTiL also involved intensive personal co-operation between the representative and his assistant (see for example J 31/90 [4 et seq.], and T 166/87 [2]). The exceptional nature of this ruling has been stressed …” However, the Board admits that – in contrast to the case J 31/90, which has been cited as an exception in this passage – decision T 166/87 has considered that in a patent department with seven full time employees a crosscheck was not indispensable, whereas the Board, in the very same decision [T 428/98], found that a private practice with six full time employees dealing with proceedings concerning industrial property rights found that “the present situation is not comparable” (see [3.5, last paragraph]). As a consequence, the Board reaffirmed the fundamental requirement of a cross-check mechanism independent of the PerMoTiL. Moreover, there has been a series of decisions wherein re-establishment was granted in cases where time limits had been recorded in a deficient way or not been recorded at all, without there having been a cross-check, and wherein the Board had neither explicitly referred to the size of the private practice, nor mentioned that its conclusion was exceptional (see T 309/88 [2.6], T 1/99 [11] as well as T 567/92 [3] and T 374/95. For the sake of completeness, the decision in case T 869/90, which had been insisted upon by the representative, should also be mentioned. In this case there had not been any cross-check during the last ten days before the expiry of the main time limit, but the representative alone was responsible for MoTiL. Nevertheless, his mistake was excused by the Board. However, the Board had considered the principle of proportionality when examining whether ADuCaRC had been taken. When examining the required due care, the Board considered that in cases where possibly all due care had not been taken, the “circumstances” comprised the fact that the consequence of such a lack of due care was that the time limit was missed by one day only. The [present] Board (although in different composition) has already rejected this approach in decision T 1465/07 [16], for reasons that are explained in detail in this decision, and it maintains this rejection also in its present composition. The questions of whether and to which extent the last mentioned decisions are irreconcilable with T 428/98 and whether T 428/98 indeed corresponds to a “confirmation of the previous case law”, as has been stated at the end of headnote 3, may be left open. As a matter of fact, on the one hand – as explained above – decisions J 9/86, T 828/94 and T 686/97 (to which one should add T 36/97 [16]) have required a cross-check before T 428/98 was issued. That the word “soll” (should) in the German summary in the “Case Law” book of the decision in case T 828/94 is to be understood as “muss” (has to) follows from the English original and from point [2] of the reasons for the decision. On the other hand, the Board has not found any decision issued after the posting of decision T 428/98, wherein a cross-check has not been required. However, such a cross-check has been required in the following decisions: T 1172/00 [3.2] T 622/01 [2.3], T 1561/05 [2.2.1], T 257/07 [2.2], J 13/07 [5.2.1.3], T 1726/08 [13] and, very recently, in T 529/09 [11]. In order to reach the conclusion that ADuCaRC had been taken, [the Boards] required that two persons, who were independent of each other, were responsible for MoTiL (or, as in T 257/07, that an automatic system was used instead of the second person), but keeping a second deadline calendar was not considered to be mandatory. In decisions T 902/05 [6], T 261/07 [2.7] and T 1465/07 [19] [the Boards] explicitly required the existence of a “redundant, failsafe” system, as in the previous decision T 686/97 [8] cited above, each time referring to this decision. However, in those decisions, the appeals have been dismissed because the cross-check was not independent, and not because there were not two monitoring systems. Among other things, it was criticized that both systems were checked by one and the same person. The situation in J 9/86 [9] and J 1/07 [4.8, referring to J 9/86] was similar, although a “redundant, failsafe” system was not explicitly mentioned. In case T 785/01 [4.4], however, [the Board] found that there was a “redundant” system with an independent cross-check and reestablishment was granted. Therefore, the Board holds that at least since the beginning of the present decade, the case law has established that a cross-check is (1) required and (2) the two checks have to be independent of each other. Independence can be ensured by providing a system wherein the acts of one person are supervised by another person or [by providing] two systems each of which is checked by a different person. The Board has no doubts that a MoTiL system (or two systems, as the case may be) can be run electronically. Whenever a cross-check comprising one (or two) such system was considered insufficient, this was – as far as is apparent – not due to the electronic nature of the system, but to a lack of independence (see T 902/05 [6]), a lack 2449 | 3398
T 1962/08 – Cross With The Cross-Check
K’s Law – The ebook
of suitability of the concrete system (as in T 1726/08 [19]) or a lack of plausibility check of the time limit generated by a computer by the representative (T 473/07 [3.4]). As explained above, when discussing the question of whether an independent cross-check was required, the representative also referred to the first paragraph of section VI.E.6.2.2.a) of the 5th edition of the “Case Law” book (the content of which is also found in section VI.E.7.3.3.a) of the 6th edition in identical form), according to which the case law of the Boards of appeal did not require a cross-check but only a normally efficient MoTiL system. The Boards had considered that the fact that a system had efficiently functioned over years was proof for it being normally reliable. This requirement was fulfilled for the system used in [his] firm. As far as the PerMoTiL in his firm, Ms. J., was concerned, during the ten years of her oversight there had not been a single case - before the time limit under consideration had been missed - wherein an error on her behalf had required re-establishment. The Board first points out that the decisions referred to in the above mentioned first paragraph of said section, in the context of MoTiL systems, all bear file references (Aktenzeichen) from years between 1986 and 1992 (decisions T 1024/02, T 165/04 and T 221/04 do not refer to errors in MoTiL). Concerning the general principles mentioned in this paragraph, the Board repeats what it had stated in T 1465/07 [19] (in different composition) (confirmed in T 1726/08 [25]): Evidence that such a monitoring system operated efficiently for many years will weigh in favour of a finding of a normally satisfactory character but will be counterbalanced by evidence that main features of such a character, such as an independent cross check, go missing. In that case a satisfactory character will be excluded. The “Case Law” book has been completed accordingly in its 6th edition (see VI.E.7.3.3.a)). The Board is of the opinion that the this conclusion necessarily follows from the case law on cross-checks mentioned above, issued since T 428/98 and the previously mentioned decisions having file references between 1986 and 1992 are obsolete – as far as they contradict this conclusion. In T 428/98 the request for re-establishment was dismissed although it had been pointed out that “the clerk had worked in the appellant’s representatives’ law office for 33 years, was an extremely reliable specialist and had never missed a time limit before”. […] In J 13/07 the appellant was unsuccessful when submitting that there was no need for an independent check of whether the clerk in charge of the payment of renewal fees in the patent department had fulfilled her duties, inter alia, because the internal proceedings had always worked. [Even] a single oversight in a well working system could be excused (only) if the appellant or its representative could present a credible case that at the moment in time under consideration its office had a normally efficient system for monitoring time limits under the EPC and that auxiliary personnel used to carry out routine work had been carefully selected and supervised in regular intervals by means of an independent cross-checking mechanism (see [5.2.1.3]) Incidentally, based on the above analysis of the case law of the Boards the present Board is of the opinion that the word “effizient” in the expression “in der Regel effizientes System” (“normally efficient system”) was used by the Boards, not in order to express an optimal relationship between the goal to be reached and the means to be used – as the representative believes – but in the meaning of “effizient” (“efficient”), i.e. expressing that the goal has effectively (wirksam) been reached. This is why the English version of the “Case Law” publication refers to “a normally effective MoTiL system” (emphasis by the Board) (see 5th edition, VI.E.6.2.2.a)), an expression used in the decision J 23/92 [3], issued in English, cited therein (see also T 836/09 [5.2, second paragraph], which also refers to “a normally effective MoTiL system”). This being said, the following sentence of the cited passage of the “Case Law” publication begins with the words: “The fact that this system operated efficiently for many years …” (emphasis by the Board). Moreover, there was no reason for the Boards to decide on which way of MoTiL represents the optimal balance between reaching the goal and use of means in a private practice or a company, i.e. which way is “efficient”. This question has to be answered by the persons that are in charge in those structures. The only point that has to be checked in this context is whether the access to the courts is not rendered difficult in a way that is out of proportion. (see below, under b) ii)). To sum up, this means that the general requirement of due care, in the context of MoTiL systems, comprises the requirement that the monitoring is not entrusted to one single person but that a general cross-checking mechanism that is independent of the PerMoTiL is incorporated into the chosen MoTiL system. This crosschecking mechanism can be provided within one single MoTiL system. If a second MoTiL system is provided to act as a cross-checking mechanism, it has to be independent (sometimes referred to as “redundant”) of the first system. Therefore, the complaint of the representative, according to which the case law did not require a cross-check and it was not clear what it had to comprise, is not correct. However, the Board has to admit that a certain amount of research and analysis of the case law of the Boards is required to come to this conclusion. This being said, it is part of the duties of a careful representative to make this effort. 2450 | 3398
T 1962/08 – Cross With The Cross-Check
K’s Law – The ebook
b) Compliance of the case law with the general principles of equal treatment and proportionality Now that it has been established that the case law, in any case since T 428/98, clearly requires that there be an independent cross-check within the meaning exposed above, it has to be checked whether such a requirement is legitimate. The representative complains that it constitutes an inadmissible discrimination (Ungleichbehandlung). […] i) Discrimination The general principle of equal treatment (Gleichheitssatz) has been introduced into Article 20 of the Charter of fundamental rights of the European Union, which states “Everyone is equal before the law.” The principle of equal treatment requires that “similar situations should not be treated differently and that different situations should not be treated identically unless such differentiation is objectively justified” (ECJ, 217/91, 1993, I-3923, paragraph 37). The Board presumes for the time being that those principles also apply in the Contracting states of the EPC. It is of the opinion that when the principle of equal treatment is applied, a particular interpretation of provisions of the EPC within the framework of common interpretation must not lead to distinctions which the EPC lawmaker is not allowed to make. Such an application of a provision of the EPC by a Board would violate the principle of equal treatment. - Monitoring of time limits and subsequent activities The representative complains that there was no justification for distinguishing the MoTiL from subsequent steps, such as putting documents in envelopes or sending them by fax. There was the same potential for errors in both domains. The decision in case rule of equality, rejected by the representative, concerned the erroneous insertion of a statement of grounds of appeal that was to be sent to the EPO in the firm’s mail box for mail to be sent to the German Patent and Trademark Office. In this case the Board has made a difference between MoTiL and the treatment of mail to be posted and has explained why, as a rule, there was no need for a cross-check in the latter case (see T 836/09 [5.2, third paragraph]). It justified this distinction by referring to T 178/07 [1.1.3] and stated that, in contrast to MoTiL, the risk of making errors was small in the treatment of mail to be posted because this treatment, as a rule, comprised the execution of simple steps. The present Board is also of the opinion that MoTiL requires more intellectual effort than putting documents into envelopes, putting the envelopes into the corresponding internal mail box or sending the documents by fax. There may only be oversights in those latter activities, whereas the recording of erroneous time limits may also be due to miscalculations or ignorance of legal provisions to be applied in the calculation of time limits. The greater intellectual effort entails a higher risk of making mistakes. Therefore, the Board is of the opinion that the situations are not comparable and there is an objective justification for a different treatment by the case law. - Large/small firm The representative also complains that the distinction between small and large firms was not understandable as far as the duty of due care was concerned, because an attorney working alone could not rely on his memory or the memory of his only secretary or assistant (Patentanwaltsfachangestellte) but needed a functioning, MoTiL system in writing, as did a large firm. Concerning this matter, it has to be pointed out that the apparently first decision based on the requirement of a cross-check – i.e. J 9/86 – this requirement was formulated for a large firm, in which a considerable number of dates has to be monitored at all times. In contrast to this (demgegenüber) T 428/98 – as explained in detail – has pointed out that, as a rule, a cross-check was required, which had been abandoned by the Boards only in the exceptional case of small units, i.e. the Board presumed a rule/exception relationship (Regel-/AusnahmeVerhältnis). As far as [the Board] can see, this relationship has not been questioned in the subsequent case law. The Board is of the opinion that the fact that a small unit, such as a one-man-firm, consisting of one representative and his secretary, has to monitor a relatively small number of time limits, is not the only circumstance justifying an objective distinction. In addition to this, the monitoring is also less complex than in a large firm where the greater number of representatives alone makes the monitoring more complex. 2451 | 3398
T 1962/08 – Cross With The Cross-Check
K’s Law – The ebook
- Result Having considered all this, there is no discrimination, neither in view of the treatment of MoTiL as compared to subsequent activities, nor in view of the treatment of large and small firms. Therefore, it is not necessary to dwell in more detail on the cause of validity (Geltungsgrund) of the general principle of equal treatment. ii) Proportionality The Board (in different composition) has made extensive statements on the question of proportionality of the requirement of due care established in the case law, which consists in the requirement to incorporate a general control mechanism that is independent of the PerMoTiL into the chosen MoTiL system, in T 1465/07. It maintains those findings in its present composition. The relevant part is reproduced in the 6th edition of the “Case Law” (under VI.E.11.): “In T 1465/07 the board interpreted A 122 EPC 1973 in the context of the right of access to a court taking into account the case law of the European Court of Human Rights and the European Court of Justice and came to the following conclusions: The principle of proportionality applies to limitations of the right of access to the boards of appeal, such as rules on time limits, by legislative measures or their application. This means that those measures or their application must not exceed the limits of what is appropriate and necessary in order to attain the objectives legitimately pursued by the legislation in question; when there is a choice among several appropriate measures or ways of applying them recourse must be had to the least onerous, and the disadvantages caused must not be disproportionate to the aims pursued. As for the application of A 108 EPC 1973 in conjunction with A 122 EPC 1973, the principle of proportionality has the consequence that the interpretation of those provisions must not impose means that are inappropriate, unnecessary or disproportionate in relation to the aim to be achieved, namely legal certainty and the proper administration of justice by avoiding any discrimination or arbitrary treatment. Correspondingly, the conditions for granting re-establishment, in particular the requirement of due care, must not be interpreted in an excessive manner that unreasonably restricts access to the board and thus prevents the board from deciding on the merits of the case. This is the balance between legal certainty and proper administration of justice on one hand and substantive justice on the other, which has been struck under the EPC in this context. It follows that the principle of proportionality must always be applied in connection with the interpretation of those conditions, which determine whether or not an application for re-establishment can be allowed.” The above mentioned general principles are – as far as [the Board] can see – comparable to the principles of the German Federal Constitutional Court (Bundesverfassungsgericht) mentioned by the representative. As stated above, it is part of the requirements of due care in view of MoTiL systems in general that the monitoring is not entrusted to one single person but that a general cross-checking mechanism that is independent of the PerMoTiL is incorporated into the chosen MoTiL system. This cross-checking mechanism can be provided within one single MoTiL system. If a second MoTiL system is provided to act as a cross-checking mechanism, it has to be independent (sometimes referred to as “redundant”) of the first. The Board is of the opinion that the requirement of due care consisting in an independent cross-check within the above meaning is both suitable and necessary for minimizing the risk of losing a patent or – as here – of a patent application. This requirement of due care is not inappropriate (unangemessen). First, according to the case law of the Boards of appeal (as shown above) keeping a second deadline calendar is not mandatory, very much as in the decision of the Bundesgerichtshof cited by the representative. Moreover, one (or more) electronic system can be used for MoTiL. The Board is of the opinion that in the present case an independent cross-check could have consisted in that a person different from Ms. J. checked the entry of the relevant time limits that had been marked by hand on each incoming document on the central deadline calendar that was filled in by Ms J. alone and consulted (nachsehen) the time limits to be kept on each working day. Suitable organisation measurements would have allowed to reduce the negative impact on the work carried out by Ms J. as far as possible (e.g. the deadline calendar could have been accessible at certain hours of the day only), and could have completely avoided by the introduction of an electronic deadline calendar to be filled in by Ms. J., and to which the persons in charge of the cross-check could have had access. The Board is of the opinion that the requirement of due care via a cross-check is compatible with the principle of proportionality both generally and in the present case.
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T 1962/08 – Cross With The Cross-Check
K’s Law – The ebook
Although it is desirable that the case law of the Boards of appeal and of the national jurisdictions be uniform, the assessment of what due care means is in the sole responsibility of the relevant deciding body. Insofar certain differences cannot always be avoided. In the present case, the Board cannot subscribe to the assessment of the German BGH given above, which may be more generous. Outcome [5.2.5] In the case under consideration the monitoring or the time limits was entrusted to one single person, i.e. Ms. J. In the chosen MoTiL system there was no general cross-checking mechanism that is independent of the PerMoTiL, as required in the case law in any case since T 428/98. Contrary to the understanding of the representative, it is not possible to consider that the checking of the time limits marked on incoming documents by himself and his secretary is tantamount to such a cross-checking mechanism because there was no corresponding verification of the entries in the deadline calendar. The fact that the MoTiL system in the representative’s firm worked well over years is irrelevant because the required independent cross-check was missing. The argument that the MoTiL in this firm was handled as a separate “one-person-department”, which falls under the case law for “small departments”, is off the mark. Whenever the case law made exceptions to the requirement of due care by cross-checks, it concerned – as explained above – small work units, in the case of J 31/90 a firm consisting of a representative and his secretary, in the case of T 166/87 a “relatively small” department of a company. Both cases, therefore, dealt with small work units which not only managed time limits but also did the corresponding work. This obviously does not hold true for the “one-person-department” formed by Ms. J. It follows that in the representative’s firm the requirements of due care in view of a MoTiL system were not complied with because the required general independent cross-checking mechanism that is independent of the PerMoTiL, Ms. J., was lacking. Finally, the fact that the notice of appeal had been finished long before the expiration of the time limit, as pointed out by the representative, is irrelevant for answering the question of whether the representative had fulfilled his duty of due care. What counts is only whether the appeal has been filed in due time and in compliance with the formal requirements (cf. T 1465/07 [16, under “The intent to appeal”]. If follows from the above that the representative has not proven that he had taken ADuCaRC under A 122(1). Due care taken by the applicant itself [5.3] As the representative has not taken ADuCaRC, the question of whether the applicant itself has taken all due care is not relevant any more. Both the applicant and its representative have to take the required measure of due care. [5.4] Therefore, the request for re-establishment is not justified and cannot be granted. Referral to the EBA [6] According to A 112(1)(a) EPC 1973 […], in order to ensure uniform application of the law, or if an important point of law arises: the Board shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required. Ensuring uniform application of the law [6.1.1] The Board has found above that at least since T 428/98 […] the case law is uniform in that it belongs to the requirements of due care concerning MoTiL systems in general that the MoTiL is not entrusted to one single person but that a general cross-checking mechanism that is independent of the PerMoTiL is incorporated into the chosen MoTiL system. The fact that in some decisions a “redundant” fail-proof system was required has not resulted in rejection of requests for lack of two control systems. This was only done on the ground that the crosscheck was not independent. The Board does not see any reason to depart from this practice and has criticized the MoTiL system because there was no independent control mechanism within the MoTiL system in the representative’s firm, and not because there was no second, “redundant” control mechanism. 2453 | 3398
T 1962/08 – Cross With The Cross-Check
K’s Law – The ebook
As far as the decisions issued before T 428/98 are concerned, as far as they are in contradiction with this decision, they have lost their relevance in the course of the evolution of the law. Therefore, it is not possible to derive a divergence of the case law from them (see G 3/08 [7.3.8]). Important point of law [6.1.2] The Board was able to take a decision on the questions filed by the representative in view of a referral to the EBA, without there being any doubts. Moreover, what was missing in the present case was the independence of the cross-check within the MoTiL system based on a deadline calendar. The question of whether a second, “redundant” system is required, which the Boards have answered differently, is not decisive here. Result [6.1.3] As there is no divergence of the case law that would be relevant for the practical case, and as the legal question of whether a second, “redundant” control mechanism is mandatory is irrelevant, the Board is of the opinion that a referral to the EBA is not required.
I fear that many firms and companies have internal procedures that would not resist the scrutiny of the Boards. What about yours? Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here. NB: The official date of this decision is December 12, 2010, i.e. a Sunday. ;-)
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T 5/08 – Locked Out
K’s Law – The ebook
T 5/08 – Locked Out 15 Feb 2011
The appeal was against the decision of the Opposition Division (OD) to revoke the opposed patent. The Board found the main request on file not to comply with A 123(2) because the disclaimer inserted by the patent proprietor was not large enough and, therefore, did not fulfil the conditions fixed by G 1/03. The Board then deals with the admissibility of the auxiliary request that was filed during the oral proceedings (OPs), after several versions had been filed and withdrawn. [11] Articles 12(2),(4) and 13(1) RPBA are relevant for assessing the admissibility of the auxiliary request. Article 12(2) RPBA requires the statement of grounds of appeal to contain the appellant’s complete case. Article 13(1) RPBA leaves to the board’s discretion to consider and admit any amendment to a party’s case after it has filed its grounds of appeal or a reply thereto. In the exercise of its discretion, account is to be taken of inter alia the current state of the proceedings. Article 12(4) RPBA refers to the power of the board to hold inadmissible requests which could have been presented in the first instance proceedings. [12] The subject-matter of the auxiliary request at issue is directed to a pair of oligonucleotides consisting of a first and a second oligonucleotide consisting, respectively, of the sequences SEQ ID NO: 1 and 5 […]. The combination of this pair of oligonucleotides is disclosed in the patent-in-suit and in the application as filed as “a most preferred pair of oligonucleotides according to the invention” […] and, accordingly, it is the subject-matter of a dependent claim in the claims as granted (claim 3) and in the original claims of the application as filed (claim 5). However, both in the patent-in-suit and in the application as filed, the pair of oligonucleotides is not directed to the very specific oligonucleotides of sequences SEQ ID NO: 1 and 5 but to general sequences having a total length of 10-50 nucleotides (original and granted claims) - or 10-26 nucleotides (granted claims) - and comprising a fragment of at least 10 nucleotides of these SEQ ID NO: 1 and 5 (original and granted claims). [13] A similar subject-matter is also found in the requests dealt with at the OPs before the first instance and decided upon by the OD as well as in several of the claim requests filed by the [patent proprietor] with its statement of grounds of appeal. However, none of these requests - either in the opposition or in the appeal proceedings - contemplated a pair of oligonucleotides with the first and second oligonucleotides restricted to the very specific oligonucleotides of sequences SEQ ID NO: 1 and 5, respectively. This is all the more surprising since the experimental reports filed by the [patent proprietor] in the opposition proceedings and with its statement of grounds of appeal contained data derived from such a specific pair of oligonucleotides. [14] Thus, even though the objection of lack of inventive step put forward by the OD in the decision under appeal was mainly based on the scope of the claims, in the words of the OD “ … it is even reasonable to assume that not all the primer pairs … are effective in amplifying HIV. Hence, the problem is not solved over the whole claimed range and consequently the claim is not inventive over the whole claimed scope …” (underlining added by the board), the [patent proprietor] chose not to file a request specifically directed, and limited to, a pair of oligonucleotides as that claimed in the present auxiliary request which was characterized, both in the patent-in-suit and in the application as filed, as a preferred embodiment of the invention. Nor was such a request filed in the [patent proprietor’s] reply to the board’s communication pursuant to Article 15(1) RPBA, even though the pair of oligonucleotides of sequences SEQ ID NO: 1 and 5 was identified in that communication (albeit in the context of A 123(2),(3)) and the issue concerning the scope of the claims was also mentioned therein […]. [15] It was only at the beginning of the OPs before the board that the [patent proprietor] filed - as its second auxiliary request - a request which intended to limit the claimed subject-matter to the specific pair of oligonucleotides consisting of a first and a second oligonucleotide of the sequences SEQ ID NO: 1 and 5, respectively. However, this auxiliary request presented several deficiencies which required the [patent proprietor] to necessarily introduce further amendments and modifications. In all, five different versions of the auxiliary request were submitted at the OPs before the board, each time replacing the previously submitted version. Except for the last version, all other versions of the auxiliary request were withdrawn before the board decided on their admissibility […] 2455 | 3398
T 5/08 – Locked Out
K’s Law – The ebook
[16] There is no doubt that the auxiliary request is a very late filed request. No convincing reasons have been provided by the [patent proprietor] to justify its filing at this very late stage of the proceedings. Indeed and in view of the above mentioned facts, the board considers that such a request limited to a preferred embodiment of the invention could well have been filed at an earlier stage of the appeal or the opposition proceedings, either with the [patent proprietor’s] statement of grounds of appeal - so as to have a complete case as required by Article 12(2) RPBA, in reply to the board’s communication pursuant to Article 15(1) RPBA, or even at first instance in order to overcome the objection of the opposition division regarding the breadth of the claims (Article 12(4) RPBA). The [patent proprietor’s] choice not to file such a request deprived the respondents of the opportunity for preparing and presenting their case appropriately and it certainly did not contribute to the procedural economy of the present case. [17] This situation is further aggravated by the fact that the present auxiliary request, as such, has not been directly put forward by the [patent proprietor] itself but it is the final result of a lengthy discussion between the respondents, the [patent proprietor] and the board that took place at the OPs and occasioned the introduction of several amendments, modifications and changes, in several different versions of a first filed auxiliary request […]. This chain of events is not in line with the function of an appeal proceedings as established in the case law of the Boards of Appeal, namely to give a judicial decision upon the correctness of a separate earlier decision taken by a department of the EPO (cf. “Case Law of the Boards of Appeal of the EPO”, 6th edition 2010, VII.E.1, page 821). As repeatedly stated in the case law, it is not the purpose of an appeal proceedings to give the patent proprietor the opportunity to recast its claims as it sees fit and to have all its requests admitted into the appeal proceedings a principle mirrored in Articles 12(4) and 13 RPBA (cf. inter alia decision T 361/08 [14]). [18] As for the [patent proprietor’s] argument that the auxiliary request represents the [patent proprietor’s] last chance to save the patent […], the board considers this argument inappropriate to justify, in the present case, the very late filing of the auxiliary request and the complete chain of events or the history of its prosecution as cited above. It has also been clearly established by the Boards of Appeal that there is no absolute right for a patentee to such a last chance. On the contrary, the admissibility of a late filed request is always a matter of the board’s discretion (cf. inter alia T 446/00 [3.3]). Although not part of the present appeal proceedings, the fact that a divisional application is still pending before the first instance speaks also against the [patent proprietor’s] argument (cf. “Case Law”, 6th edition 2010, VII.E.16.5.5, page 903). [19] In view of the complete chain of events cited above and the particular circumstances of the present case, it is the board’s conviction that not even the principle of procedural economy can assist the [patent proprietor’s] request to have its late filed auxiliary request admitted into the appeal proceedings. First, the [patent proprietor’s] auxiliary request is not clearly and directly allowable but requires further examination as to the substantive requirements of the EPC, at least for those of A 56. Second, the conduct of the [patent proprietor] during the OPs, in particular the filing, modification and replacement of a fairly large number of auxiliary requests in a short time, is not seen as being in accordance with a party’s obligation to take care not to act in a manner detrimental to the efficient conduct of OPs (cf. “Case Law”, 6th edition 2010, VII.E.16.5.4, page 902). This is all the more important specially in those cases, as in the present one, in which a decision taken by the board in appeal proceedings might be of relevance for pending divisional applications and for possible subsequent litigations before national courts. In these cases, the respondents should be given at least an opportunity to prepare and present their case appropriately. This was not so in the present case. Reasons of procedural economy cannot, in principle, override the actual purpose of an appeal proceedings or excuse [a patent proprietor] from complying with the basic requirements of these proceedings, such as an early filing of amendments and an efficient conduct at OPs. [20] In view of the foregoing considerations, the state of the appeal proceedings and the complete prosecution history of the present auxiliary request, the board, in the exercise of its discretion under Article 13(1) RPBA, decides not to admit the auxiliary request into the appeal proceedings. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here. For another decision on the “last chance” argument, click here. 2456 | 3398
T 1073/06 – Purely Mental
K’s Law – The ebook
T 1073/06 – Purely Mental 14 Feb 2011
This decision deals with an appeal against the decision of the Examining Division (ED) to refuse the application under consideration for lack of inventive step. Claim 1 on file before the Board read: Simulation apparatus for processing a simulation model including a first and a second object (54) between which a relationship condition exists, the apparatus comprising: a processor (502); a memory (503) storing modelling software (520) operable to cause said processor to perform simulation operations utilizing a constructed simulation model; input means (510;512) for receiving input data identifying a first object, a second object (54) and a relationship condition identifying a relationship between said first and second objects; and display generation means (80,82,84) for generating display data including respective first and second node representations (115,117) for the first and second objects (54) and a graphical link representation (118; ... ;128) linking said first and second node representations (115,117), characterized in that: said memory (503) is further configured to store data associating a plurality of different relationship conditions each with a graphical link representation (118; ... ;128) of a plurality of visually distinct graphical link representations (118-128); and in that said processor (502) is configured to: construct a simulation model including first and second objects between which a relationship condition exists on the basis of received input data; and utilize said data stored in said memory (503) to select a graphical link representation (118; ... ;128) to be displayed as linking a first and a second node representation (115,117) in a generated display so that the graphical link representation (118; ... ;128) in a generated display corresponds to the graphical link representation (118; ... ;128) associated by said data with the relationship condition between said first and second objects in said constructed simulation model. The Board considered the graphical user interface (GUI) for generating a display of a simulation model, acknowledged as prior art in figure 1 of the application, to be the closest prior art.
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T 1073/06 – Purely Mental
K’s Law – The ebook
It then continued: [5.1] The subject-matter of claim 1 differs from the disclosure of the closest prior art in the features that: a. said memory is further configured to store data associating a plurality of different relationship conditions each with a graphical link representation of a plurality of visually distinct graphical link representations; and b. said processor is configured to utilize said data stored in said memory to select a graphical link representation to be displayed as linking a first and a second node representation in a generated display so that the graphical link representation in a generated display corresponds to the graphical link representation associated by said data with the relationship condition between said first and second objects in said constructed simulation model. [5.2] The effect of the above difference features is that, whilst in the closest prior art the graphical link representation displayed between the first and second objects in the constructed simulation model is independent of the relationship condition between said objects (see the arrows 16 in figure 1), according to claim 1 the processor utilizes the association data stored in the memory to cause the link between said first and second objects in the simulation model to be displayed with the associated graphical link representation. Figure 9 of the application shows examples of the graphical link representations, namely symbols “S” and “P” in links 126a and 120a, respectively.
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T 1073/06 – Purely Mental
K’s Law – The ebook
[5.3] The appellant has argued that an objective technical problem can be seen in improving the ease with which a user can construct such a simulation model, the claimed solution avoiding the “drilling down” required in the prior art to understand the relationships between the objects in the simulation model. The improvement in the ease of constructing a model alleged is thus confined, in fact, to improving the ease of comprehension of a model, which is thus the actual problem allegedly solved. The board judges however that an improvement in the comprehension of a model is a purely mental effect, so that the problem solved is not seen as being technical. Further, the solution is also not seen as having any technical implications beyond, possibly, routine implementation details, being simply a choice of where and in what form in a process of visualisation of a model to display certain information, i.e. an issue of “presentations of information”, as mentioned in A 52(2)(d). [5.4] On its broadest interpretation, the simulation model, of which the relationship conditions between objects are a part, can be of a wholly abstract nature and thus a system of equations which are merely a mathematical method and thus non-technical. Indeed the simulation model shown in figure 9 of the application is an example of such a non-technical simulation model in that it represents a predator-prey system involving wolves and rabbits. The claimed “graphical link representations” relate to the state of the simulation model, rather than to the state of the claimed 2459 | 3398
T 1073/06 – Purely Mental
K’s Law – The ebook
simulation apparatus, and thus constitute presentations of information and are therefore also non-technical; see T 528/07 [3]. Thus there can be no argument made for a technical contribution to the prior art based on the fact that it is a model that is visualised rather than any other piece of data in a computer. Consequently the difference features set out above do not have a technical effect (going beyond those inherent in running any computer program) and thus lack technical character and cannot contribute to inventive step; see T 154/04, [5(F)]. [5.5] According to the appellant in the statement of grounds of appeal, various decisions had found that improvements of the sort achieved in the present case involved an inventive step; see T 605/93, T 333/95 and T 769/92. Detailed arguments based on these decisions were not made. The board has considered the decisions cited by the appellant, but finds that they are not relevant to the facts in the present case. [5.6] Consequently the board finds that the subject-matter of claim 1 cannot be considered to involve an inventive step, A 56 EPC 1973. Should you wish to download the whole decision, just click here. To
have
a
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the
You can find a post on a similar decision here.
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file
wrapper,
click
here.
T 47/07 – Arbitrary
K’s Law – The ebook
T 47/07 – Arbitrary 12 Feb 2011
The applicant filed an appeal against the decision of the Examining Division (ED) to refuse its patent application. Claim 1 of the main request before the Board read (the differences with respect to the claim as refused by the ED are apparent; click to enlarge):
The Board examines whether the amendments comply with the requirements of A 123(2): [4.1] Claim 1 as originally filed relates to − prevention and − treatment of three different diseases namely a heart disease chosen from − cardiac insufficiency, − chronic heart failure, and − acute heart failure. In addition, original claim 13, referring to original claim 2 which itself refers to original claim 1, concerns a list of − eleven therapeutic agents for the combined therapy, used each alone or in mixture with another one. [4.2] Claim 1 of the main request essentially relates to − treatment of − chronic heart failure − in combined therapy with another therapeutic agent selected from the restricted group consisting of seven agents. Nothing in the wording of the claims as originally filed links the disease “chronic heart failure” specifically to “treatment” in combined therapy with another therapeutic agent selected from a restricted group consisting of seven agents instead of eleven. Nor is such a link supplied by any text in the description as originally filed. Accordingly, the teaching of claim 1 of the main request cannot be regarded as individualised and thus is not recognisable as such in the application as originally filed. [4.4] As a consequence, the teaching of claim 1 of the main request represents an unallowable extension of the content of the application as originally filed (A 123(2)). […] [7.1] The appellant argued that he was entitled to restrict to “treatment” alone since “prevention and treatment” was contradictory. However, even if the board were to refrain from reading “for prevention and treatment” as a short form of “for a disease (sic) selected from prevention and treatment” which usually is accepted, the only amendment following from this argumentation is to replace the word “and” by “or”. There is absolutely no need to prefer either “prevention” or “treatment” when dismissing one of the terms in order to remove the alleged contradiction. Thus, the choice of “treatment” is arbitrary and not inevitable; the latter being necessary for allowability of this choice in the context of the other amendments of the subject-matter as claimed.
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[7.2] A similar argumentation applies to the amendment of the list of other therapeutic agents for combined therapy. Since there is no real need to adjust this list to a new perception of agents normally used in heart therapy nowadays, the amendment is arbitrary and not inevitable; it is not allowable in the context of the subject-matter as claimed. […] Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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T 1326/06 – Tales From The ‘Crypt
K’s Law – The ebook
T 1326/06 – Tales From The ‘Crypt 11 Feb 2011
Claims 1, 9 and 10 of the international application as filed read: 1. A method for calculating the modular inverse (R) of a value (E) in relation to a module (M), in particular for cryptographic applications, with the steps: a) determining (10) a breakdown of the module (M) into at least two factors (M1, M2), b) calculating (12,14) a respective auxiliary value (R1, R2) for each of the factors (M1, M2) determined in step a), wherein each auxiliary value (R1, R2) is the modular inverse of the value (E) in relation to the respective factor (M1, M2) as module, and c) calculating (16) the modular inverse (R) of the value (E) in relation to the module (M) at least using the auxiliary values (R1, R2) calculated in step b). 9. A computer program product which has program commands to cause a processor to carry out a method having the features of one of claims 1 to 8. 10. A portable data carrier, in particular a chip card or chip module, set up to carry out a method having the features of one of claims 1 to 8. The EPO acting as ISA declared that it would not establish a search report because the claims referred to a mathematical theory. This objection was confirmed by the Examining Division (ED) after the application had entered the European phase: claims 1 to 8 were excluded from patentability under A 52(2)(a) because they were directed at an abstract mathematical method. The computer program product of claim 9 had only effects in domains excluded from patentability and, therefore, was not patentable under A 52(2)(c) and A 52(3) either. The known portable data carrier did not solve a technical problem and, as a consequence, was not inventive. The applicant filed an appeal against the decision to refuse the application. Claim 1 on file before the Board read: 1. A computer implemented method for determining of key pairs for an RSA encryption or signature method by calculating the modular inverse (R) of a value (E) in relation to a module (M) by means of the following steps: a) determining (10) a breakdown of the module (M) into at least two factors P-1 and Q-1, wherein P and Q are the prime numbers that are defined by RSA, b) calculating (12,14) a respective auxiliary value (R1, R2) for each of the factors (P-1,Q-1) determined in step a), wherein each auxiliary value (R1, R2) is the modular inverse of the value (E) in relation to the respective factor (P-1, Q-1) as module, and c) calculating (16) the modular inverse (R) of the value (E) in relation to the module (M) at least using the auxiliary values (R1, R2) calculated in step b). The Board finds the request to comply with A 123(2) and A 83 and then goes on: *** Translated from the German ***
A 52(2) and (3) [5] According to the established case law, the subject-matter of all of the claims has technical character and, therefore, complies with A 52(2) and (3) because the claims are directed at a computer implemented method (cf. T 258/03 [headnote 1] and G 3/08 [10.7]). [5.1] This dispels the only objection that has been directly raised against the original method claims. There are no more claims directed at a computer program product and a portable data carrier. 2463 | 3398
T 1326/06 – Tales From The ‘Crypt
K’s Law – The ebook
[5.2] However, the ED was of the opinion that the computer program product as originally claimed had only effects in domains excluded from patentability. The Board presumes that the ED would have been of the same opinion in regard of the method claims if they had been said to be “computer implemented”. [5.3] Therefore, a direct remittal to the first instance is likely to lead to another refusal based on the same arguments but invoking A 56 rather than A 52(2) and (3). [5.4] Therefore, the Board considers it to be appropriate to examine, within the powers conferred to it by A 111(1), whether the methods according to claims 1 to 4 have a technical effect that goes beyond its computer implementation. Technical nature [6] RSA is an asymmetric encryption system that can be used both for encryption and for digital signatures. It uses key pairs consisting in a private key, which is used for decrypting or signing data, and a public key, which is used for encrypting and examining signatures. The private key is kept secret and can only be calculated from the public key with extremely high effort, if at all. [6.1] Keys and messages are represented as figures and both the determination of the key pairs and the en/decryption or the signature of messages are described in terms of mathematical operations: the choice of two big prime numbers P and Q and the calculation of N=P*Q and M=(P-1)*(Q-1), the choice of a number E, where E and M are relatively prime, and the determination of the modular inverse of E in relation to module M (for the determination of the key pair), as well as the exponentiation modulo N (for en/decrypting and signing, respectively). Moreover, the fact that the private key is kept secret is based on the founded mathematical assumption that prime factorization is, as a rule, a difficult problem and that, in particular, the factorization of N in its prime factors P and Q is practically impossible. Therefore, to a great extent, RSA appears to be a purely mathematical method. [6.2] On the other hand, asymmetric cryptography deals with the concrete problem of how to safely exchange electronic messages and at the same time facilitate the exchange of keys and secrecy. In contrast to symmetric cryptography, when asymmetric cryptography is used, each user of the system only has to keep his own private key secret. [6.3] The Board is of the opinion that the safe exchange of electronic messages is a technical effect and the problem to achieve this effect has to be considered to be a technical problem. [6.4] RSA solves this problem by using mathematical means. RSA allowed a breakthrough in the development of cryptography. It is held that RSA is the first viable, concretely implemented asymmetric cryptography system and nowadays it is a central component in many cryptographic security systems. The underlying mathematics, therefore, directly serves the solution of a concrete technical problem. [6.5] Therefore, the Board is of the opinion that methods for de/encrypting or signing electronic messages by means of RSA have to be considered to be technical methods even though they are essentially based on mathematical methods. [7.1] This assessment of the Board is consistent with decisions T 953/04 and T 27/97. In T 953/04 [3.3] it was stated that
“The use of cryptographic methods in the technical context of electronic data processing and communication has certainly technical character.”,
and T 27/97 [3] comes to the conclusion that “a method for encrypting or decrypting a message in the form of a digital word by means of algorithms using a public key of the RSA type […], intended to be used in electronic systems, is not excluded from patentability under A 52(2) and (3), even if the invention is based on an abstract algorithm or a mathematical method”. [7.2] The preamble of claim 1 is directed at a computer implemented method for determining key pairs for an RSA encryption or signature method. 2464 | 3398
T 1326/06 – Tales From The ‘Crypt
K’s Law – The ebook
The Board is of this opinion that this wording results in claim 1 going beyond claiming the mere suitability of the determination of key pairs for RSA. Rather, it defines, in a limitative manner, that the key pair determination is in fact embedded in a encryption or signature method using RSA and that it is functionally related to it. Therefore, this limitation contributes to the technical character of the claimed subject-matter. The wording leaves open how the RSA encryption or signature method is implemented and how the relevant method steps are distributed between different programmes, data carriers or computers. [8] The claimed calculation steps exclusively refer to the determination of key pairs, wherein the keys that are calculated in this way are exactly the known keys, as defined by RSA. Therefore, the claimed way of calculating the results (Rechenweg) has no impact on the RSA encryption or signature method in a narrow sense. [8.1] This being said, the calculation of the key pairs undoubtedly constitutes an essential component of the RSA encryption system: as explained above, asymmetric cryptography is unthinkable without keys having the relevant mathematical properties. [8.2] Therefore, the Board is of the opinion that the claimed calculation of the RSA key pair including all the calculation steps contributes to the technical character of the invention according to claim 1. [9] According to the established case law of the Boards of appeal, the features which contribute to the technical character of the invention have to be taken into account when the inventive step of an invention is assessed (cf. T 641/00 [headnote 1] and G 3/08 [12.2.1-2]). [9.1] The calculation of the modular inverse according to claim 1 is not carried out with one of the conventional calculation methods mentioned in the description, which are based on the Euclidean algorithm […]. [9.2] The Board has no indication justifying the assumption that the claimed method is notoriously known or indisputably forms part of the common general knowledge (cf. T 1242/04 [9.2]). [9.3] As a consequence, it is not possible to decide on novelty and inventive step without the documents of the prior art, so that the file is remitted in order for the announced additional research to be carried out and the examination to be pursued. NB: The decision also comprises a take-away headnote: “Methods for encrypting/decrypting or signing electronic messages have to be considered to be technical methods, even if they are essentially based on mathematical methods.” Should you wish to download the whole document (in German), just click here. To have a look at the file wrapper, click here.
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T 1544/07 – Between Consenting Adults
K’s Law – The ebook
T 1544/07 – Between Consenting Adults 10 Feb 2011
In this case one of the opponents (but not the patent proprietor) filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. This would normally be a situation where the prohibition of reformatio in peius applies. But apparently it does not have to … [2.1] The process according to claim 8 as maintained by the OD was characterized, inter alia, by the feature “adding from 10% to 90% by weight, based on the dialkylperoxydicarbonate, of compound of Structure I”. Claim 1 of both the main request and the auxiliary request, which are based on claim 8 as maintained by the OD, merely specify the feature “adding from 10% to 90 % by weight of compound of Structure I” […]. The deletion of the reference point for the weight range of the compound of structure I of from 10% to 90%, namely “based on the dialkylperoxydicarbonate”, results in an unclarity of that feature, i.e. in the reference point to be used. The use of a reference point other than the weight of the dialkylperoxydicarbonate […] results in the claim now covering a process employing amounts of a compound of structure I not covered by claim 8 as maintained by the OD. The deletion of the reference point therefore results in an extension of the independent process claim vis-à-vis that as maintained by the OD. [2.2] As a result, the deletion of the reference point for the weight range in claim 8 as maintained by the OD and the resulting extension of its scope means that the patent covers embodiments which were not covered by the patent as maintained by the OD, and, consequently, that the appellant is put in a worse position than if it had not appealed (reformatio in peius; see, e.g. T 724/99 [3.2-3]). In principle, an amended claim, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected (cf. G 1/99). If the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, the patent proprietor is primarily restricted during the appeal proceedings to defending the patent in the form in which it was maintained by the OD (cf. G 4/93 and G 9/92 [16]). [2.3] The [patent proprietor] deleted the reference point from claim 8 as maintained by the OD in reaction to an objection raised by the [opponent]. The Board considers that said amendment arising from the appeal proceedings is necessary and appropriate and thus does not see any reason to question the admissibility of the amendment for procedural reasons. [2.4] During OPs, the appellant was asked by the Board whether it objected to the deletion of the reference point as a possible reformatio in peius. In reply, the appellant indicated that it had no objections thereto even if it would thereby put itself in a worse position than if it had not appealed. In this situation, the question arises whether the Board has to apply the prohibition of reformatio in peius of its own motion if the party affected deliberately refrains from making use of its right to invoke it. This question has not been addressed by the Enlarged Board of Appeal (EBA) in the pertinent decisions (cf. G 9/92 and G 1/99). [2.5] The EPC does not contain any provisions which stipulate that a decision terminating appeal proceedings must not place an appellant in a worse position than it was in as a result of the contested decision (cf. G 9/92 [7]). If the opponent and sole appellant does not invoke the prohibition of reformatio in peius against a claim request submitted by the respondent/patentee which extends the scope beyond that of the claims as maintained by the first instance, the Board does not see any reason why it should apply the principle of the prohibition of reformatio in peius of its own motion. Following the principle of party disposition governing the appeal proceedings, any right protecting the appellant against an outcome that puts it in a worse position than if it had not appealed, may be waived (volenti non fit iniuria). [2.6] For any amendment after grant of a patent, the Boards examine ex officio whether the amendment complies with the requirement of A 123(3). If claims are extended in appeal proceedings vis-à-vis claims maintained in an 2466 | 3398
T 1544/07 – Between Consenting Adults
K’s Law – The ebook
interlocutory decision of the OD, the interests of third parties, i.e. the public, are not affected unless there is a violation of A 123(3). However, the Board has found that the amended claim was within the limits of A 123(3). Therefore, the Board does not see the interests of the public to be affected, which could justify questioning ex officio the allowability of the claims extending beyond those maintained by the OD. [2.7] As the Appellant has not objected to the extension of the claims beyond the claims as maintained by the OD, the Board does not examine of its own motion whether the amendment constitutes a reformatio in peius (cf. T 714/98 [2.2]). Claim 1 is thus admitted into the proceedings. The patent was finally revoked for lack of inventive step. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here. This is another decision the knowledge of which I owe to fellow EC member Manolis.
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T 485/09 – Be Quick
K’s Law – The ebook
T 485/09 – Be Quick 9 Feb 2011
If you want to postpone oral proceedings (OPs) before a Board of appeal you have to have good reasons: indeed, the EPO has published an exhaustive list of situations that may justify a change of date, such as previously booked holidays, for example. But even in case you cannot attend OPs for one of the reasons accepted by the EPO, make sure you inform the Office as soon as possible. In the present case, the parties were summoned to OPs scheduled to take place on November 17, 2010 in a communication dated August 10 and received on August 12. On September 17, the appellant’s representative requested postponement of the OPs because he had already booked a vacation at the date of the OPs. He argued that his substitution by another representative of the same firm or of an outside firm would give rise to substantial additional and unnecessary costs. Concerning the late filing of his request the representative stated that he had just “returned from a week of absence from the office, which was preceded by several consecutive full day meetings”. [2.1] In accordance with the notice of the Vice-President of Directorate-General 3 dated 16 July 2007 (Special edition No. 3 OJ EPO 2007, H1) a change of date for OPs may be requested if, amongst other reasons, it clashes with firmly booked holidays. This appears to correspond to the present case and proof regarding the booking of the holidays was supplied. A change of date may therefore normally have been granted. [2.2] When a summons to OPs is received an attorney will normally immediately consult his work diary to check his availability. The work diary of an attorney should necessarily contain booked holidays, since although they are private matters they mean that the attorney is not available on those dates. Such a check requires a matter of minutes and even writing a letter explaining the situation takes little time. A rapid indication of the situation to the Board can therefore be expected. [2.3] In the present case the attorney waited five weeks before informing the Board of his non-availability. The attorney explained that he had just returned from a week’s absence and that beforehand there had been some day-long meetings. This may explain the last two weeks, though even some day-long meetings might not exclude informing the Board of the non-availability. This does not, however, explain why no action was taken during the first three weeks after receipt of the summons. Since the clash of dates would have been immediately apparent there is no reason why a prompt response could not have been given. [2.4] The Board considers that an attorney who wishes a change in the date of OPs has an obligation to inform the Board promptly of this desire. In the present case the attorney did not do this, so that the Board considered it was not appropriate to change the date. [2.5] The attorney argued that it was inappropriate for the case to be taken over by another attorney because of the extra cost involved. The said notice of the Vice-President does indeed require (see point 2.3 thereof) that the request for a change of date should explain why a change of representative is not possible instead. This consideration could have applied to a prompt request. However, the Board considers that when the attorney does not act promptly but allows a number of weeks to go by before acting then it must accept that this may result in extra costs. Should you wish to download the whole decision, just click here. To NB:
have I
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Posts on related decisions can be found here, here and here
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wrapper, to
my
click friend
here. Manolis.
T 689/09 – Not Subject To Change
K’s Law – The ebook
T 689/09 – Not Subject To Change 8 Feb 2011
The present decision deals with an appeal filed by a patent proprietor whose patent had been revoked by the Opposition Division (OD). The notice of appeal was worded as follows:
The opponent challenged the admissibility of the appeal. [1.1] According to R 99(1)(c) EPC 2000, which applies in the present case, the notice of appeal shall contain “a request defining the subject of the appeal” (emphasis added by the Board). This requirement pertains to one of the main functions of the notice of appeal in defining an appellant’s initial request, see the explanatory remarks for R 99 in the Special Edition 5 of the Official Journal 2007: “Revision of the European Patent Convention (EPC 2000), Synoptic presentation EPC 1973/2000 - Part II: The Implementing Regulations”: “[the] requirement of R 99(1)(c) EPC 2000 takes into account that the appellant’s initial request - according to the case law of the Enlarged Board of Appeal (see G 9/92, G 4/93 and G 1/99) - defines the subject of the appeal and thereby the framework of appeal proceedings.” [1.2] R 99(1)(c) EPC 2000 revises corresponding R 64(b) EPC 1973, according to which the notice was required to include “a statement identifying ... the extent to which amendment or cancellation of the decision is requested” (emphasis added). The above-mentioned explanatory remarks state that that requirement has been moved to R 99(2) EPC 2000 which defines the statutory contents of the statement of the grounds of appeal. This revision makes allowance, as expressly stated in the explanatory remarks, for the case “where the appellant is the patent proprietor [and] the amended claims are ... filed with the statement of the grounds for appeal ... [I]t is only then that the precise nature of the requested amendment of the decision impugned becomes apparent”. That situation applies to the present case as is clear from the opening paragraph of the notice of appeal: It is the proprietor who gives notice against the decision to revoke his patent […]. In view of the explanatory remarks to R 99(1)(c) and (2), the notice of appeal need not indicate the precise nature of the amendment of the decision to be included in the statement of the grounds of the appeal, i.e. it is sufficient that the claims now being pursued by the appellant proprietor are only put forward in the statement of the grounds of appeal, as indisputably happened in the present case as well. Insofar the revised rules confirm the existing practice. [1.3] What then does R 99(1)(c) require the notice of appeal to state in the present case? The explanatory remarks give the following general guidance (in addition to that cited above […]): “As a rule, the notice of appeal should already clarify whether the decision under appeal is contested as a whole or only partially, and define the extent of the issues raised in the appeal proceedings”. [1.4] The interpretation of “subject of the appeal” as used in R 99(1)(c) has been addressed by previous decisions.
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T 689/09 – Not Subject To Change
K’s Law – The ebook
Decision T 1108/08 [1], without detailed reasoning, simply equates it with the requirement of identifying the extent to which cancellation of the [impugned] decision is requested […]. Given the wording of R 99(2) referring to the “extent to which [the impugned decision] is to be amended”, it has to be presumed that the deciding Board of T 1108/08 did perceive a difference between the “amendment” and the “cancellation” of a decision and realised that only the “extent of the amendment” requirement had been moved from R 64(b) EPC 1973 to R 99(2). It may have inferred from the explanatory notes […] that the “subject of the appeal” still encompasses the “extent of cancellation” requirement. This latter conjecture is somewhat tentative as the explanatory notes - apart from not being legal provisions themselves - use a different formulation, “extent of issues”, which may refer to a separate, additional or alternative, requirement, but could be synonymous with the “whole or partial” contesting of the impugned decision. [1.5] The question is further analysed in great detail by decision T 358/08 […]. There the deciding Board established that the Implementing Regulations themselves or the supplementary means of interpretation, such as the “Travaux Préparatoires” to R 99 provides little information as to the exact meaning of the term “subject of the appeal”, apart from the fact that no significant changes were intended by the legislator to the existing practice. On the contrary, the changes merely reflect and thus confirm the development of the case law, in particular the possibility to defer the filing of new claims forming the basis of the appeal to the grounds of appeal (see points [1-5], in particular point [5]: “the Board concludes that the change in the wording in the Implementing Regulations has not altered the previous law as to the requirements of either the notice of appeal or the statement of grounds of appeal as regards the nature of the appellant’s requests.” [1.6] This latter statement of the deciding Board of T 358/08, taken together with its finding that even the provisions of the previous R 64 EPC 1973 concerning the required extent of cancellation/amendment were “somewhat toothless” (see point [2.4]) results in the finding that an appeal statement worded “we hereby appeal against the decision of the OD ... we ask that the decision … be set aside and the patent maintained” is to be treated as a request defining “the subject of the appeal”, see point [5.1]. Otherwise, the deciding Board of T 358/08 declined to give a positive definition, stating that “it is not necessary for the Board to say precisely what it does mean”, see point [4.12]. Nevertheless, the Board found that a possible interpretation of R 99(1)(c) and (2) for the purposes of a practicable system should be made with an eye to the usual forms of orders made in appeal decisions, in the sense that the notice of appeal need only imply the first part of the order as desired by the Appellant, namely the setting aside of the impugned decision. The next part of the order that, in the Appellant’s view, should replace the order of the first instance (here the form in which the patent is to be maintained) may then appear in the grounds at the latest. [1.7] The preparatory materials point to certain decisions of the Enlarged Board as explanation for the requirement of identifying the “subject of the appeal”. These decisions base their ratio decidendi on the generally recognised procedural principle of party disposition (Antragsgrundsatz, ne ultra petita) governing the appeal proceedings under the EPC, see G 9/92[1]. Taking the explanatory notes to the revised rules at their face value, it appears legitimate to consider R 99(1)(c) to be an expression of this principle. As such, it is not a requirement of form but of substance. It does not matter in what form the subject of the appeal is identified, as long as it is clear. The meaning of this principle is that the appeal can not extend to issues that the appellant himself did not wish to be a subject of the appeal, nor can the extent of the rights be decided beyond the extent requested. On this basis, this Board interprets the “subject of the appeal” (Beschwerdegegenstand, l’objet du recours) to pertain to the substantive legal effects in general that are sought to be eliminated or achieved through the appeal (and essentially corresponding to the legal effects achieved by the impugned decision), keeping in mind that the “extent” of these legal effects need only be specified later. Thus the notice of appeal must assist in identifying those legal issues which may be treated and decided on during the appeal proceedings. In the Board’s view it suffices if the Board and any other party can deduce in some way from the information in the notice of appeal what general legal effects are sought to be achieved by the appeal, including further by implication, if necessary, those legal effects which are necessary for achieving the desired legal effects. [1.8] This interpretation is also consistent with the possibility that an impugned decision is only partially contested or the extent of the issues raised in the appeal is limited when compared to the legal effects of the
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T 689/09 – Not Subject To Change
K’s Law – The ebook
impugned decision, for example where the decision has several independent legal effects, see decisions J 27/86 and T 420/03. The board notes that it is also aware of case law, according to which the distinction between different legal effects of a decision also falls under the “extent to which the impugned decision is to be amended” pursuant to R 99(2), see T 1382/08 [8]. However, this approach leaves the notion of the “subject of the appeal” even more diffuse and elusive. [1.9] The general legal effect of the decision under appeal is to revoke the patent. The effect of revocation can be inferred from A 68: the application or patent is deemed not to have had - from the outset, ab initio - any of the rights conferred under A 64 and 67 (to the extent it has been revoked). The Board notes that even though A 68 leaves room for the interpretation that the legal term “revocation” can also mean a partial loss of rights, i.e. encompass the maintenance in an amended form, in the overwhelming majority of the patent profession “revocation” is used exclusively to indicate full revocation, i.e. a complete loss of substantive patent rights. Thus the words “decision to revoke the patent” in the notice of appeal is also understood in this sense by the Board. [1.10] As noted above, the proprietor does not need to indicate in the notice of appeal the extent to which the impugned decision is to be amended, since this “extent” is to be defined through the scope of the claims being pursued on appeal. Thus the “subject” of the appeal need only relate to a more general legal effect than the specific legal effects of a grant of a patent, being specific in the sense that the specific scope of protection - i.e. its “extent” in the sense of R 99(2) - is defined by the claims. This leaves us with the notion that the subject of an appeal may be the general legal effect of grant, or as its legal counterpart, a revocation. However, staying on this general level of legal effects, the only conceivable general relief sought against the single and indivisible legal effect of the revocation is that the deemed loss of rights does not take effect, i.e. all the substantive rights residing in the patent as granted do persist as if nothing had happened. From this follows that a statement of the proprietor that he wishes rights to persist, that is cancellation of the decision and its legal effect, should suffice. [1.11] Nor need the proprietor expressly state that he seeks cancellation. This is implied in an appeal, given that cancellation is the only possible relief available to a proprietor appealing against a decision to revoke. Accordingly, in the present case, the mere statement that the “decision ... revoking ...the patent” is appealed is enough to make clear to the Board and any other party that the appeal concerns at least the cancellation of the revocation. This is clear from the notice of appeal, even without perusing the decision under appeal or other documents of the file. For this reason the Board concludes that the notice of appeal meets the requirements of R 99(1)(c) EPC 2000. See also T 407/02 [1.1], deciding that in case of revocation the declaration of appealing the impugned decision must be treated as a request for the cancellation of the decision in its entirety (on the basis of R 64(b) EPC 1973). [1.12] In light of the above, the Board is satisfied that the subject of the appeal has been properly identified, so that the appeal goes beyond an empty statement of appeal against some undefined legal effect. Insofar the Board need not address the possible consequences of the wording of R 99 on existing case law, nor the question whether it is permissible to identify the subject of the appeal for the purposes of R 101(1) in light of the decision under appeal. That said, the Board concurs with the findings of T 358/08, i.e. that it is not apparent that the legislator would have intended any significant change to the developed procedural requirements of appeal. Though the Board in principle agrees with the [opponent] that in theory, a more strict practice could also be justified by the wording of the applicable rules, it does not see the need to depart from the established, admittedly appellant-friendly approach with respect to the admissibility of the appeals. [1.13] As all other requirements of A 108 and R 99 are met the Board finds that the appeal is admissible. Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here.
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T 761/08 – Beware Of Disclaimers
K’s Law – The ebook
T 761/08 – Beware Of Disclaimers 7 Feb 2011
Disclaimers are a very dangerous way of overcoming patentability objections, as the present case shows once more. The appeal is against the decision of the Opposition Division (OD) to maintain the patent in amended form. Claim 1 of the main request on file read: A process for separating mixtures which comprise oxygen and argon by cryogenic distillation in a distillation system comprised of at least one argon separation rectification column that produces an oxygen stream and an argon stream from a vapour feed stream consisting essentially of oxygen and argon and wherein an argon rich liquid inventory is returned to the column after an interruption of flow of said feed stream into the argon-separation column, characterised in that during an interruption of flow of said feed stream into the argonseparation column, argon-rich liquid inventory in said column is recirculated, prior to and during re-startup of said column, to a separation section of said column that is above the location of withdrawal of said inventory; excluding processes in which said liquid inventory is collected from the sump of the argonseparation column or, when the system has two argon-separation columns, jointly from the sumps of each argon-separation column of the system and is recirculated through the or each of the columns. The opponent pointed out that the disclaimer was drafted too broadly. [2.1] [Document] D1 constitutes prior art under A 54(3) for all of the contracting states DE, FR & GB for which the patent has been nationalised […]. This document […] describes: a process for separating mixtures which comprise oxygen and argon by cryogenic distillation in a distillation system comprised of at least one argon-separation distillation column […] that produces an oxygen stream and an argon stream from a feed stream […] consisting essentially of oxygen and argon and wherein an argon rich liquid inventory […] is returned […] to the column […] after an interruption of flow of said feed stream into the argon-separation column, wherein during an interruption of flow of said feed stream […] into the argon-separation column […], argon-rich liquid inventory […] in said column is recirculated, prior to and during re-startup of said column, to a separation section of said column that is above the location of withdrawal of said inventory. [2.2] Thus, apart from the disclaimer, the subject-matter of claim 1 is known from D1. Since D1 is prior art under A 54(3) it is permissible to restore novelty by using a disclaimer (see G 1/93 [2.1]). However, the disclaimer should not remove more than is necessary to achieve this (see G 1/93 [headnote 2.2]). NB: The reference to G 1/93 appears to be erroneous and should be to G 1/03. [2.3] The disclaimer added to claim 1 reads: “excluding processes in which said liquid inventory is collected from the sump of the argon-separation column or, when the system has two argon-separation columns, jointly from the sumps of each argon-separation column of the system and is recirculated through the or each of the columns.” The board agrees with the [patent proprietor] that the disclaimer is split into two parts. The first part refers to a single argon column configuration as shown in figures 3 and 4 of D1. The second part refers to a system having two argon-separation columns as shown in figure 5 of D1. Furthermore, the [opponent] has explicitly confirmed this interpretation in writing […]. [2.4] The disclaimer also does not remove any more than is necessary to restore novelty with respect to D1 since it is based on the embodiments disclosed in figures 3,4 and 5 of D1. [2.5] The board agrees with the [patent proprietor’s] view that the system in D8 comprises a denitrogenisation column as opposed to an argon-separation column as required by claim 1. 2472 | 3398
T 761/08 – Beware Of Disclaimers
K’s Law – The ebook
[2.6] Thus, with respect to D1 the disclaimer meets all the requirements laid out in G 1/03. [3.1] The [opponent] has also presented several lines of argument to show that, despite the addition of the disclaimer, the subject-matter of claim 1 is still not new with respect to D1. The board does not find any of these arguments convincing. […] [4.1] As regards D10, this document shows that liquid from the sump of the argon-separation column always contributes to the re-circulated liquid inventory. Figure 4 of this document discloses: a process for separating mixtures which comprise oxygen and argon by cryogenic distillation in a distillation system comprised of at least one argon-separation rectification column […] that produces an oxygen stream and an argon stream from a feed stream […] consisting essentially of oxygen and argon and wherein an argon rich liquid inventory from trough […] and the sump is returned […] to the column […] after an interruption of flow of said feed stream […] into the argonseparation column, wherein during an interruption of flow of said feed stream […] into the argonseparation column […], argon-rich liquid inventory in said column is recirculated […] prior to re-startup of said column, to a separation section […] of said column that is above the location of withdrawal of said inventory. [4.2] Thus, disclaimer apart, the only contentious feature is whether liquid is also re-circulated to the column “during re-startup of said column”. [4.3] In order to assess this it is necessary to define the term “re-startup”. According to the description of the contested patent […], “the re-startup process is over when the column reaches its steady state conditions” and […] the sidearm column “approaches steady state conditions” during the startup process. A process interruption is defined […] as being something which causes the vapour stream […]to be reduced or cease flowing altogether. Thus, the patent refers to three distinct phases: steady state, process interruption and restartup. In the event of an interruption and subsequent re-startup, the system would therefore pass through the following cycle: steady state conditions, interruption, re-startup and finally back to steady state. Accordingly, the re-startup phase is all of the period between the end of interruption and reattainment of the steady state. In view of this, the board considers that the re-startup phase commences as soon as the process interruption is terminated by re-establishing flow in the vapour feed line to the argon column. [4.4] D10 […] states “Lorsque la vanne est fermée, on poursuit le redémarrage comme décrit plus haut” which indicates that the re-startup phase of D10 is “continued” rather than “effected”. [… I]t is indicated that the condenser is started (“on démarre le condenseur”), and only then is a progressive closing of the valve undertaken (“on referme progressivement la vanne”). In order for the condenser to function vapour must be flowing through the feed stream […]. Thus, the valve […] is still open and allowing argon-rich liquid to be recycled to the upper part of the distillation section […] when the condenser starts working and vapour starts flowing through line […]. [4.5] The progressive closing of the valve […] is accompanied by a progressive opening of the valve […] in order to direct an increasing flow of liquid to the low-pressure column 5, thereby maintaining the liquid level N2 in the sump of column 2 constant […]. [4.6] The [patent proprietor’s] argument that the supplemental return in Figure 4 is only to reduce the level of liquid in the column from the stoppage level N3 above the vapour feed from the main air separation system to a level N2 below that feed in order to permit re-startup of the column is not entirely correct. [4.7] The process according to D10 comprises a pre-startup stage whereby the liquid level in the sump is reduced from N3 to just below the distributor plate to free up the mouth of the vapour feed line […], allowing vapour to be fed into the column and the condenser to be restarted. The point at which the vapour feed into the column in D10 is resumed corresponds to the beginning of the re-startup phase in the contested patent as outlined above. [4.8] However, since both valves […] are closed and opened “progressively”, in the manner described above, after the condenser has been restarted by terminating the interruption of the vapour supply through line 27, it must also be that liquid is re-circulated to the column at least during part of the re-startup phase of said column. [4.9] The notion of a progressive reduction in recirculated liquid inventory is also mentioned in the contested patent […] where it is stated that “Moreover, as the sidearm column advances from being shut-down to its normal operating conditions, the amount of liquid inventory being recirculated is progressively reduced.” 2473 | 3398
T 761/08 – Beware Of Disclaimers
K’s Law – The ebook
[4.10] Consequently, the only difference between the subject-matter of claim 1 and that of the process according to figure 4 of D10 lies in the disclaimer. Therefore this feature alone establishes novelty. [4.11] In this case, since D10 is prior art under A 54(2), it is also inevitably relevant for the question of inventive step. [4.12] However, according to G 1/03 [headnote 2.3]: “A disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to A 123(2).” [4.13] Thus, with respect to D10, the disclaimer does not meet the provisions of A 123(2) and claim 1 of the main request is not allowable. The Board remitted the case to the OD for further prosecution on the basis of the auxiliary requests. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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R 16/10 – He Once Was One of Us
K’s Law – The ebook
R 16/10 – He Once Was One of Us 5 Feb 2011
This petition for review concerns decision T 699/07 (also mentioned in a previous post). It was based on two alleged deficiencies: 1. 2.
that the Board had misinterpreted the patent proprietor’s submissions, and that a Board member was partial within the meaning of A 24: As a matter of fact, the chairman of Board 3.3.01 was employed from January 1986 to January 1991 as a patent specialist by Rhone Poulenc Agrochimie, which is the legal predecessor of the patent proprietor, Bayer CropSciences SA. Exhibits were filed providing evidence of his qualification as a European representative and of his European patent filing activities as representative of Rhone Poulenc Agrochimie.
The Board dismisses the first ground as being equivalent to a request for declaring the Board’s reasoning insufficient or wrong, which is not the aim of review proceedings. It then deals with the second ground: [2.3] As to the second ground of the petition, according to A 112a(2)(c), the partiality of a member of a Board of Appeal may be a ground for a petition for review insofar as a member took part in the decision in breach of A 24(1), or despite being excluded pursuant to a decision under A 24(4). [2.3.1] The petitioner submits that the wording of A 24(1): “Members of the Boards of Appeal or the Enlarged Board may not take part in a case in which they have any personal interest, or if they have previously been involved as representatives of one of the parties, or if they participated in the decision under appeal.” includes not only the specific situation where one of the members has represented a party in the case in question but also the general situation where a member has previously acted as representative of that party in any matter. [2.3.2] However the petitioner’s interpretation of this article does not match that of a normal reader reading it in its proper context. There was only a slight amendment of the English text in EPC 2000 by which the words “may not take part in any appeal if they have any persona1 interest therein” were replaced by “may not take part in a case in which they have any persona1 interest”. This amendment shows that the previous English wording was not completely satisfactory compared to that of the other two languages, which were not amended. While the amended English text remains less clear than that of the other two versions, when paragraph 1 is read as a whole, it becomes unambiguously clear that it deals with three separate cases each governed by the words “in a case in which”. Moreover the reference to “previously been involved” is such that the “involvement” is immediately understood by the reader as referring to the “case in which” and no other case. [2.3.3] Further, this paragraph cannot be given a different meaning in English to that in the two other languages. It is clearly stated in the German and French versions (“in der sie vorher als Vertreter eines Beteiligten tätig gewesen sind”; “s’ils y sont personnellement intervenus en qualité de- représentant de l’une des parties” [emphasis added by the Enlarged Board]) that the cause of exclusion relates to the involvement in the particular case in question and not to any past representation. [2.3.4] Accordingly, the meaning of the English text of A 24(1) EPC taken as a whole, in its proper context and with respect to the text of the other two languages, is clear. No further investigation as to the intention of the legislators is necessary.
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R 16/10 – He Once Was One of Us
K’s Law – The ebook
However, the Enlarged Board notes that A 24(1) EPC quickly met with the approbation of al1 the contracting States in the wording of EPC 1973, the travaux préparatoires showing that the authors were concerned with a similar rule as the then existing A 16 (now Article 18) of the protocol of the statutes of the Community Court of Justice (document IV/8221/61-F). [2.3.5] As the petitioner made clear during the oral proceedings that it did not intend to base its petition on the second ground provided by A 24(1) it results from the above paragraphs that the composition of the Board complied with Article 24(1). [3] The upshot is that the petition based on the alleged breach of A 24 (1) is also clearly unallowable. Should you wish to download the whole decision or have a look at the file wrapper, just click here. NB : This decision is also discussed on Le blog du droit européen des brevets.
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T 2291/08 – Prima Facie
K’s Law – The ebook
T 2291/08 – Prima Facie 4 Feb 2011
This highly interesting decision deals with a situation where the Opposition Division (OD) introduced a new ground of opposition (A 100 (c)) of its own motion. The Board finds that it should not have done so, in particular because this ground had already been examined - and found not to be relevant - in an appeal against the refusal of the underlying application by the Examining Division (ED). There are also some very interesting statements on a possible case of partiality of an OD member and on how ODs should (or should not) be composed. [2] The contested patent has been revoked for containing subject-matter that extends beyond the content of the application as originally filed (A 100(c)). This ground had not been raised by the Opponent in the notice of opposition, but had been introduced into the proceedings by the OD exercising its discretion under A 114(1). The question facing the Board in the present case is whether the OD had exercised its discretion correctly. [3] Whilst the OD is entitled, pursuant to R 81(1) to examine grounds for opposition not invoked by the opponent, the circumstances in which an OD should consider raising a ground of its own volition are set out in the decisions of the Enlarged Board (EBA) G 9/91 and G 10/91. The view held by the EBA is that the notice of opposition, which includes a statement of the grounds on which the opposition is based (R 76(2)), has the purpose of establishing the legal and factual framework within which the substantive examination of the opposition in principle is to be conducted. This was considered important in order to give the patentee a fair chance to consider its position at an early stage of the opposition proceedings (see G 9/91 [6]). [4] The EBA emphasised that consideration of grounds not covered in the notice of opposition is an exception to the above principle, and should only take place where prima facie there are clear reasons to believe such grounds are relevant and would in whole or in part prejudice the maintenance of the patent (G 9/91 [16]). [5] The [patent proprietors] in the present case argue that the ground under A 100(c) vis-à-vis A 123(2) was not prima facie relevant, and thus should not have been admitted. [6] It is relevant here that the application for the contested patent had initially been refused, and the decision appealed and heard as T 1190/01 before a different board of appeal from the present one. The Board in T 1190/01 [2] concluded that the disputed claim met the requirements of A 123(2). [7] It is well established case law of the boards of appeal that a decision taken in examination appeal proceedings is not binding in subsequent opposition proceedings (see Case Law of the Boards of Appeal of the EPO, VII.E.1, penultimate paragraph). This means that, contrary to the suggestion of the [patent proprietors], the board’s decision concerning A 123(2) is not res judicata and was open to challenge, for example by an opponent citing A 100(c) in the notice of opposition; this would be comparable to the situations arising in T 1099/06 and T 167/93. The question though is whether the OD was right to raise the ground later of its own volition. [8] The message of the EBA in G 9/91 and G 10/91 is clear; as stated above, new ground can only be introduced by an OD in exceptional circumstances and only when prima facie relevant. The [patent proprietors] are correct in stating that the expression “prima facie” means “at first sight” or “on the face of it”. This indicates that it should not be necessary to conduct a detailed examination of the new ground before determining whether or not it is relevant. [9] The Board in T 1190/01 concluded that the amendments met the requirements of both A 123(2) and A 84. This is expressly stated in paragraph [2] of the Reasons for the Decision, which gives page 7, lines 28 to 30 as the basis for the amended feature “cooling at >10°C/s down to 480 and 750°C”. The cited passage in the description of the original application is part of a discussion about the different types of microstructures that can be achieved, and states that a “cooling speed of >10°C/s in the temperature interval 750-480°C encourages the formation of non equiaxed ferrite grains”. Thus, a cooling rate of >10°C/s from the hot deforming temperature down to the defined temperature range (Tavv), where coiling takes place, is not expressly defined in the original application. Nevertheless, examples of cooling rates >10°C/s down to this temperature range are disclosed (see for example Figure 2), with the maximum being 80°C/s. Although the claim does not now define an upper limit for the cooling rate, it might be argued that an appropriate value in practice would be readily apparent to the skilled person. 2477 | 3398
T 2291/08 – Prima Facie
K’s Law – The ebook
[10] The OD was also of the view that there was no support for the amendment of the claim to include the feature of “maintaining the austenite grain dimensions larger than 150 µm” in the hot deforming step. As indicated by the Board in T 1190/01, this feature is disclosed in the original application on page 7 (lines 30 to 31), where it is said to encourage the formation of non equiaxed grains. It would seem that this feature is indeed presented as being of relevance to all the steels contemplated by the application. [11] Regarding claims 2 and 3, the OD was of the view that the omission of the expressions “as cast” and “a continuous pattern of the stress-strain diagram of the material” amounts to an unallowable generalisation contrary to A 123(2). The [patent proprietors] argue that the invention only concerns as cast structures […], and hence the claimed subject-matter must also relate to such steel strip, whether or not it is explicitly defined. The feature of “a continuous pattern of …” describes a property inherent to the steel product, hence failure to mention of this property neither adds nor detracts from the claimed subject-matter. There are thus plausible reasons why these amendments may be allowable. Summary [12] It is of no concern here whether, after detailed consideration, a claim has been amended to contain added subject-matter, but rather whether, given the exceptional circumstances of the late stage of the proceedings, the alleged objection is prima facie highly relevant. [13] Given that the previous Board had expressly stated, together with a reference to a passage in the original application, that the amendments find support, and in addition, when the application as a whole is considered it is also plausible that the amended features were disclosed, it cannot be said that the allegations under A 100(c) are prima facie highly relevant. [14] Consequently, the Board is of the view that introduction of the ground for opposition under A 100(c) by the OD of its own volition is contrary to G 9/91 and G 10/91 and, given the circumstances of the present case, constitutes a procedural violation. [15] Since this was the sole ground cited by the OD for revocation of the patent, it is serious and justifies reimbursement of the appeal fee (R 103(1)(a)). Main and First Auxiliary Requests [16] The [patent proprietors] request that the decision under appeal be set aside and the granted patent (main request) or the claims filed with the grounds of appeal (first auxiliary request) be examined with respect to the grounds cited by the Opponent, without remittal of the case to the OD. [17] Grant of the patent was opposed for lack of novelty and inventive step (A 100(a)) and for insufficient disclosure (A 100(b)). None of these grounds has been dealt with by the OD, and it is not the function of an appeal board to decide upon issues arising for the first time during the appeal proceedings. The case can only receive procedurally correct treatment if it is remitted to the department of first instance. [18] Consequently, the main and first auxiliary requests of the [patent proprietors] are not allowed. Second Auxiliary Request [19] The [patent proprietors] request that the decision be set aside and the patent as granted or amended according to the first auxiliary request be remitted to an OD having a different composition. The reason given by the [patent proprietors] for this request is that the first examiner of the OD had “manifested an incontestable negative attitude against the patentability of the invention”, and that this examiner was also the first examiner of the ED that had dealt with the contested patent. [20] The mere fact that the view held by an examiner on any particular issue differs from that of a party is per se insufficient for requesting a change in composition. In addition, the appointment of examiners to an OD is primarily an administrative function for which the director of the relevant department of first instance is responsible; the boards of appeal are limited to merely reviewing a case to establish whether the requirement of impartiality has been fulfilled (see T 838/02 [8]). [21] Nevertheless justice must not only be done, but it must be seen to be done, and it is well established case law of the boards of appeal that a suspicion of partiality or bias may be sufficient to invalidate a first instance 2478 | 3398
T 2291/08 – Prima Facie
K’s Law – The ebook
decision (see Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VI.J.3), even though in the vast majority of cases in which suspicion of partiality is raised, no actual bias is established (see T 900/02 [4]). In the present case, the combination of the following facts cast serious doubt on the impartiality of the OD: - the merits of the disputed amendment had already been decided by a board of appeal; - the ground under A 100(c) which led to revocation of the patent had not been raised by the opponent, but was introduced ex officio by the OD; - the same primary examiner had acted in both decisions under appeal. Such doubts are sufficient to declare the impugned decision null and void ab initio. In addition, there should be no ground for dissatisfaction with the conduct of the further proceedings in this case, such as might be if the same OD were to revoke again the patent, even after an impeccably conducted proceedings. [22] For these reasons the Board considers it appropriate to recommend that the case be heard by an OD having a different composition. [23] The present case gives grounds for questioning whether the current arrangement, in which the same examiner may be responsible for drawing up the search report, drafting the European search opinion, and then carries out the function of first examiner in both the examination and ODs, can be considered judicially fair. In particular, opposition is an independent procedure and is not to be seen as a continuation or extension of the examination procedure (see G 1/84 [9] and G 9/91 and G 10/91). A 19(2) requires that at least two members of the ED are replaced, and that the first examiner of the ED cannot become the chairman of the OD. However, this does not prevent the same examiner from carrying out the primary task of examining in both examination and opposition, which may lead to a continuity of views that blurs the independence of the two procedures. Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here.
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T 79/08 – When Rods Spoil ... The Patent
K’s Law – The ebook
T 79/08 – When Rods Spoil ... The Patent 3 Feb 2011
This decision deals with an appeal of the patent proprietor after the Opposition Division (OD) had revoked its patent for lack of inventive step. Claim 1 of the main request before the Board read: A dispersion comprising non-melt-processible fluoropolymer particles having an SSG of less than about 2.225 in aqueous medium, said fluoropolymer particles comprising a core of high molecular weight polytetrafluoroethylene and a shell of lower molecular weight polytetrafluoroethylene or modified polytetrafluoroethylene, wherein at least about 1.5 weight % to about 20 weight % of said fluoropolymer particles comprise substantially rod-shaped particles having a length to diameter ratio of greater than about 5. The Board discusses sufficiency of disclosure: General considerations [3.1] It is disputed between the parties whether the feature relating to the content of rod-shaped particles was sufficiently disclosed. [3.2] It is helpful to recall the development of the relevant arguments: [3.2.1] During the proceedings before the OD and in the initial stages of the procedure before the Board this dispute focussed on the question of analysing the diagrams in order to count and measure the particles […]. [3.2.2] However in the latter stages, commencing with the submission of the Poggio affidavit the question of the calculations performed on the data retrieved from the counting was raised […]. [3.3] The guiding principle in the large body of case law developed with respect to A 83 EPC is that the skilled person should, after reading the description be able readily to perform the invention over the whole area claimed without undue burden and without needing inventive skill (cf. T 694/92 [5, final section]. [3.4] Accordingly in a first step it is necessary to examine whether the teaching of the patent in suit provides a disclosure of all relevant aspects relating to the determination of the content, expressed as weight %, of rodshaped particles. The amount of rod shaped particles - disclosure in the patent in suit [4.1] According to […] the patent in suit the content of rod-shaped particles is determined as follows:
Dispersions are prepared on substrates and images are obtained by scanning electron microscope; The images are visually inspected; Particles are hand counted; Counted particles are modelled as cylinders whose height is the long axis and whose diameter is the short axis; Particle dimensions are measured with a ruler in mm and converted to nm using the scale given on the SEM image.
This passage thus teaches only how to obtain the images and how to retrieve the data relating to particle dimensions form the images. There is no teaching here regarding the calculations to be performed on the data. [4.2] In example 1 it is disclosed in relation to the determination of the content of rods […]:
Typical particle shape is cylindrical with rounded ends;
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T 79/08 – When Rods Spoil ... The Patent
K’s Law – The ebook
A hand count of 230 particles gave a distribution of long and short axis (depicted graphically in figure 4 of the patent in suit):
Those particles having a ratio of long axis to short axis of greater than 5 comprised 10% by number of particles counted; Modelling these as cylinders gave a weight percent of these particles of 2.8 wt%; The rod-shaped particles had average dimensions of 900 nm of length and 68 nm of diameter; The average length of all particles was 413 nm and the average diameter was 183 nm (emphases of the Board).
Thus the report of this example provides the following information:
The total number of particles considered (230) The proportion of these having a l/d ratio of greater than 5, i.e. rod-shaped particles; The weight proportion of these in these particles is reported (2.8 wt%). This language, in particular the use of “these” indicates that the weight percentage is based on the totality of particles analysed i.e. the 230 particles counted. The average length and diameter of the entire population of particles and of the rod-shaped particles.
[4.3] At this stage of the disclosure there is however no explicit statement relating to the calculations carried out in order to obtain the reported figure for weight proportion. The OD understood from the examples of the patent in suit that the reported averaged values were to be used […]. This finding was not disputed by the patent proprietor either at the oral proceedings (OPs) before the OD or in its statement of grounds of appeal since, according to it submissions at the first OPs before the Board the significance thereof had not been appreciated […]. The Board however notes the diverging statement made in relation to the same issue at the second OPs before the Board at which the patent proprietor submitted that the reason for not raising this matter was that it had been assumed that everyone would realise that the reasoning of the opposition had been wrong […]. [4.4] As shown by submissions made by both parties during the appeal procedure, carrying out this calculation on the data provided in the patent in suit would yield results with varying degrees of agreement with the values reported […]: − Based on the data given in example 1 a value diverging upwardly from that reported in the patent in suit would be obtained, i.e. 3.0 wt% instead of 2.8 wt% […]; − The data of example 2 would yield the same value as that reported in the patent in suit (1.9 wt%) […]; − Employing the data of example 4 would yield a value of 10.9 wt%, thus diverging downwardly from the value reported in the patent in suit (14.6 wt% […]). [4.5] The patent in suit provides no prior art references relating to the determination of the weight percentage of particles of a particular morphology in such dispersions. This lack of any pertinent prior art references is consistent with the presentation of the patent in suit and the position of the patent proprietor that the realisation
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T 79/08 – When Rods Spoil ... The Patent
K’s Law – The ebook
that the content of rod-shaped particles was critical was at the heart of the invention to which the patent in suit relates […]. [4.6] The argument of the patent proprietor […] that the skilled person would understand, on the basis of paragraph [0067] that only the individual method – “Method A” would lead to meaningful results not only fails to take account of the explicit teaching of the examples of the patent in suit which refer to the average values, but also advances no explanation as to why, despite the absence of any explicit reference to the properties of the individual particles in the patent in suit and apparently in direct contradiction to the explicit teaching of the examples in respect of the average values, the skilled person would assume that the individual values were to be used. [4.7] Accordingly the Board can come to no conclusion other than that, based on the disclosure of the patent in suit itself, there is no sufficient disclosure of the manner in which the content of rod-shaped particles is to be determined. [4.8] Accordingly the patent in suit cannot provide a basis for recognising sufficiency of disclosure (A 83). [5] It thus needs to be investigated whether the skilled person, could by other means, e.g. by reference to common general knowledge, arrive at an understanding of how to determine this feature of the claim. [5.1] As held in T 629/05 [4] in the assessment of sufficiency of disclosure the skilled person may use common general knowledge to supplement information contained in the application and may even recognise and rectify errors in the description on the basis of such knowledge, the central criterion being that it must be possible to reproduce the invention without any inventive effort and undue burden. [5.2] It appears to be a matter of consensus between the parties that the skilled person would recognise an incoherence, in some cases, in the disclosure of the patent in suit between the reported contents of rod-shaped particles and those which emerge from the data reported relating directly to the properties of the particles (average dimensions). [5.3] The question to be answered is whether the skilled person would on the basis of general knowledge be in a position to supplement the teaching of the patent in suit and so reconcile this incoherence. [5.4] As already explained […] above there is no prior art identified in the patent in suit which could provide a basis for such a rectification. [5.5] Regarding the general knowledge of the skilled person, the only evidence available is that provided by the various statements made during the procedure. [5.6] The evidence provided by the patent in suit itself is that the inventor was not aware of the significance of the manner of calculating or even of a distinction between different methods. The statement of the patent proprietor at the first OPs is consistent with this […]. Interestingly the patent proprietor appears to have reviewed its position on this by the time of the second OPs […] when it was stated that the reason for not commenting on this was that it had been assumed that the skilled person would realise that the calculation on the basis of the average values was incorrect. [5.7] According to the expert of the opponent - as reproduced in the Poggio affidavit it seems that it was also not realised prior to the first OPs before the Board that the manner of calculation, i.e. whether the particles were treated individually or collectively was of significance. On the contrary according to Poggio it appears to have been assumed that the two values were interchangeable […]. [5.8] At the first OPs the confusion over this matter was emphasised since the representatives themselves took positions at odds with the statements of their respective experts […] regarding the manner of calculation. This alone constitutes a strong indication that the skilled person would not have known from other sources which method was to be employed. [5.9] The submissions of the patent proprietor at the second OPs […] that the divergences in the results reported in the patent in suit and those obtainable on the basis of the reported average values would reveal that the individual method, not the collective method was to be used relies on making an assumption for which no evidence has been advanced, namely that there are only two methods of calculation possible.
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T 79/08 – When Rods Spoil ... The Patent
K’s Law – The ebook
[5.10] On the contrary there is evidence that the matter is not as clear-cut as implied by the patent proprietor. This evidence is provided on the one hand by the diverging statements made by the patent proprietor with respect to the calculation method set out in the decision under appeal […] and by the Poggio affidavit according to which a hybrid calculation was employed in which the rod-shaped particles were treated individually but the entire population was treated collectively, employing average values. [5.11] Thus the evidence provided by the submissions of the parties is that these experts were not even necessarily aware that the manner of calculating the content of rod-shaped particles was of significance, let alone that this had to be performed in a highly specific manner. [5.12] The patent proprietor also argued that the skilled person would not only note that there was a divergence between the reported values for the content of rod-shaped particles and the value that would be obtained based on calculations employing the data reported but would also note that the magnitude of the divergence increased with higher contents of particles, understand the significance of this and thus come to the conclusion that it was necessary to employ the method of treating the particles individually rather than collectively. Disregarding for the moment that this submission is irreconcilable with the statement made by the patent proprietor at the first OPs held before the Board that the significance of the calculation method as set out in the decision under appeal had not been appreciated […], it is the opinion of the Board that to arrive at such a conclusion, in the absence of any indication of pertinent general knowledge demands of the skilled person, a level of insight and understanding which approaches that required for inventive step. However the pertinent case law emphasises that the same level of skill is to be applied when the questions of sufficiency of disclosure and inventive step are considered (cf. T 60/89 [3.2.5]). [5.13] Even accepting, for the sake of argument, that such insight would be within the range of normal, noninventive ability of the skilled person, there remains the obstacle that the patent in suit itself provides no means by which the validity of such an insight could be tested. Raw data is provided only in the nature of images of extremely poor quality. In this connection it is recalled that the images provided by the then opponent during the opposition proceedings […] were considered by the patent proprietor to be of insufficient quality to allow analysis (counting of the particles) notwithstanding that these images appear to be significantly clearer and of higher quality than those contained in the patent in suit. [5.14] Also complete repetition of the examples of the patent in suit does not provide a route - without undue burden - to clarify this aspect since doing so involves multiple stages, each of which is prone to error and thus any divergence could have one of a number of sources, no means being provided in the teaching of the patent in suit to exclude one or other source of error. [5.15] Accordingly the patent proprietor has failed to show that the skilled person would be in a position to understand the cause of the varying degree of agreement between the reported values of rod content and those values that would be obtained on the basis of calculations performed on the data provided in the patent in suit, and having done so to rectify this based on either common general knowledge or the data in the patent in suit. [5.16] Indeed the Board is aware that the entire foregoing section relies on making a key assumption - namely that the skilled person would identify the nature of the calculation as being the source of the divergences. This has in fact been assumed by both parties. However this assumption is in the Board’s view not valid. For example it takes no account of the possibility of alternative sources of error such as clerical errors in the patent in suit, or even errors in collating and analysing the data, e.g. instrumental errors. [5.17] Thus it has not been shown that the skilled person would necessarily even realise that the calculation method was at the source of the divergences, let alone that the skilled person would be in a position to identify precisely the nature of the problem with the calculation method, how to correct it and, on the basis of the data in the patent in suit, confirm that this was in fact the correct calculation method. [5.18] On the other hand, it is clear that the promise of the invention (PTFE dispersions of higher CCT) is only accessible via a reliable fulfilment of the crucial condition set out in claim 1, namely that: “at least about 1.5 weight % to about 20 weight % of said fluoropolymer particles comprise substantially rod-shaped particles having a length to diameter ratio of greater than about 5.” which in turn requires the preparation of a dispersion having the correct fraction of substantially rod-shaped particles. However, as shown above, the necessary information to achieve this is absent from the patent in suit. [6] It is therefore concluded that the patent in suit does not provide sufficient information to allow the skilled person to reproduce the claimed invention. Nor is the skilled person in a position - without undue burden and 2483 | 3398
T 79/08 – When Rods Spoil ... The Patent
K’s Law – The ebook
without inventive effort - to make good this deficit. Accordingly it has to be concluded that the requirements of sufficiency of disclosure are not satisfied. As the claims of all request rely on the definition of the content of rod-shaped particles, this objection applies to all requests. Accordingly none of the sets of claims on file meets the requirements of A 83. […] The appeal is dismissed. Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here.
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T 1077/06 – The Right To Be Heard, Again
K’s Law – The ebook
T 1077/06 – The Right To Be Heard, Again 2 Feb 2011
[1] Against the grant of the patent in suit four oppositions were filed. The four opponents cited in their respective notices of opposition thirty documents, D1 to D30, which were presented in a consolidated list submitted by the patent proprietor as annex to a letter dated 6 November 2003. [2] With additional submissions opponents 01, 02 and 03 filed nine additional documents. The patent proprietor added these documents to the already existing list as documents D31 to D39 and provided an updated list […]. In addition, opponent 02 […] filed a first “Research report Product Development”, referred to as document D46 […]. [3] On page 2 of his letter of 6 May 2005 the patent proprietor argued: “Documents D31 to D39 and the test results submitted by opponent 02 were filed too late, because there were not filed within the opposition period. It is requested not to admit these documents and test results into the opposition proceedings.” This passage is followed by a statement of why the Opposition Division (OD) should allow this request. With the same letter the patent proprietor filed four additional documents (D40 to D43). Document D44 was cited by opponent 04 in its note of Opposition […] and was subsequently referred to in the proceedings by this number. [4] In a communication […] annexed to the summons to attend oral proceedings (OPs), the OD informed the parties that they considered the newly filed documents to be prima facie relevant and therefore to be admissible into the proceedings. However, they continued that “[t]he admissibility of the new evidence will be further discussed at the OPs.” [5] OPs were scheduled for 28 to 29 March 2006. The date for the parties to make final submissions in preparation for the OPs was set to be no later than two months before this date. [6] With letter dated 25 January 2006 opponent 02 filed a second “Research report Product Development”, referred to as document D47 […]. With letter dated 27 January 2006 the patent proprietor filed a new document D45. [7] According to the minutes of the OPs before the OD, […] at the OPs the Chair announced “ … that all citations D1 through D27, D29 through D41 and D44, and all the experimental evidence provided by 02 were admitted into the proceedings as they were regarded prima facie as particularly relevant (pursuant to A 114)(1).” The minutes do not indicate that the parties were heard on this issue before the Chair announced this decision. [8] After the announcement the Chair summarized the parties’ requests. The patent proprietor’s request not to admit documents D31 to D39 and D46 […] was not mentioned. The minutes state that all parties confirmed their requests […]. Only after the OD had decided that Patent proprietor’s main request before it contravened the requirements of R 57a, did the patent proprietor protest against the admittance of the late filed documents. The discussion was focussed on the admittance of opponent 02’s second “Research report Product Development” D47. The [corresponding] sentences […] of the minutes read: “The admission of the experimental data of 25.01.2006 thus was not considered as a procedural violation by the OD but only as its prerogative under A 114. The Patentee was informed of his right to appeal to a higher instance.” [9] The decision under appeal deals in point (I) with the “admissibility of documents D31-D43, D45 and technical evidence of 25.01.06 by 02. In point (I)(1) of its decision the OD deals with patent proprietor’s arguments submitted with his letter dated 6 May 2005. In point (I)(2) of its decision the OD comments on the arguments submitted by the patent proprietor at the OPs after the decision was announced by the Chair that D1 through D27, D29 through D41 and E44, and all the experimental evidence provided by O II were admitted into the proceedings. 2485 | 3398
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In point (I)(3) of its decision the OD expresses its surprise that the patent proprietor objected to the admittance of opponent 02’s second “Research report Product Development” […] at such a late stage of the procedure, as this would have been possible earlier, firstly directly after the filing of this document and secondly at the OPs when the Chair summarised the parties’ requests. Finally it is remarked that the document has “not been considered for the present decision.” A reasonable interpretation of this part of the decision is that the parties were not heard by the OD on this issue at the OPs before the Chair announced the decision to admit, among others, documents D31 to D39, D46 and D47 into the procedure. [10] According to A 113(1) the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. This provision is a guarantee for the parties that proceedings before the EPO will be conducted openly and fairly (cf. J 20/85 [4] and J 3/90 [11]). The right to be heard is intended to ensure that the parties to proceedings are not taken by surprise by grounds mentioned in an adverse decision (cf. decision T 892/92 [2.1]). The parties may present their comments either in writing, or orally during OPs. The express right to OPs is enshrined in A 116. [11] The minutes of the OPs before the OD do not contain an indication that the parties were heard on the issue of whether or not documents D31 to D39, D46 and D47 should be allowed into the procedure. According to the minutes, the Chair of the OD announced at the very beginning of the OPs that documents D1 to D27, D29 to D41, D44, D46 and D47 were admitted into the proceedings. [12] The Board at the OPs asked the parties for their recollections of whether or not the parties at the OPs before the OD were heard on the issue of allowing documents D31 to D39, D46 and D47 into the procedure. Those parties, respectively their representatives who were present at the OPs before the OD, namely opponents 01 and 03 […], confirmed that the parties were not heard before the Chair made the announcement to allow the documents in question into the procedure. [13] Contrary to the argument presented by the [opponents] it was not necessary for the [patent proprietor] to file a renewed request at the OPs before the OD not to admit the documents, as this request was made in writing on 6 May 2005. [14] [The opponents’] argument, that a party’s right to be heard is satisfied if said party, which had requested OPs according to A 116, has had the opportunity to argue in writing, cannot be followed by the Board. If this interpretation of A 113(1) were to be followed, the parties’ right to OPs safeguarded by A 116 would be redundant, with the unacceptable consequence that an OD or a Board of Appeal with regard to a controversial issue discussed during written procedure, would be entitled to give a decision on this issue right at the beginning of OPs without hearing the parties (see T 594/00 [4]). [15] Moreover, the [opponents] emphasised that only one of the documents in question, namely D31, was actually referred to in the decision under appeal. Thus the decision is not therefore tainted by the disclosure in the remaining ten documents concerned. The Board does not agree that the actual number of documents which have been referred to in the appealed decision is a factor which has decisive weight in a decision as to whether or not the patent proprietor’s right to be heard has been violated. [16] As a consequence, the decision under appeal is based on grounds and evidence on which the patent proprietor has not had an opportunity to present his comments during the OPs and thus contravenes the requirements of A 113(1). [17] According to Article 11 RPBA, “[a] Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise” (emphasis added by the Board). When deciding whether or not to remit the case according to A 111(1) the Board examined if such special reasons exist in the present case. [18] According to the case law of the Boards of Appeal the violation of the principle of the right to be heard is considered as a fundamental deficiency in proceedings (see T 125/91).
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It is, however, also acknowledged that there is no absolute right of a party to have every aspect of a case examined in two instances (T 133/87 [2]). Other criteria, e.g. the general interest that proceedings are brought to a close within an appropriate period of time, have also to be taken into account. [19] The [opponents] argued that, considering the aspect of procedural efficiency, it was within the discretion of the Board, even if new evidence was submitted during the appeal procedure, to allow it into the procedure and to decide the case without remitting it to the department of first instance. Attention was directed to decision T 416/07 [9-11], where this Board in a different composition, for reasons of procedural efficiency, had decided not to remit a case to the department of first instance but to decide itself. In the case underlying decision T 416/07, the Board had to decide whether or not several documents submitted by the appellant/opponent after expiry of the time limit according to A 99(1), should be admitted into the procedure. Two of these documents had been filed at the OPs before the department of first instance and had not been admitted into the procedure by the OD. The remaining documents had been filed with [… the] appellant/opponent’s ground for appeal. The appellant/opponent had requested that the case be remitted to the department of first instance should all these documents not be admitted into the procedure. The Board decided to admit the two documents submitted by the appellant/opponent at the OPs before the OD (T 416/07 [2-3]), but not to admit the documents submitted with its grounds for appeal (T 416/07 [5-7]). Finally the Board decided, for reasons of procedural efficiency, not to remit the case to the department of first instance (T 416/07 [9-11]). As is apparent from the above the factual and procedural situation underlying decision T 416/07 is different and therefore the Board does not consider it to be relevant for the present case. [20] Since the patent proprietor whose right to be heard has been violated requests the remittal of the case to the first instance, in the specific situation of the present case this request has precedence over apprehensions regarding an undue delay of the procedure (see T 594/00 [9]). [21] The opponents argue that remittal to the first instance for further consideration of the question of admissibility of documents D31 to D39, D46 and D47 would be of no practical use and would only delay the procedure and prolong the period of legal uncertainty, as the patent proprietor has already made its arguments in writing, which have already been dealt with by the OD in the decision under appeal and which have been found to be insufficient to make a case for the non-admission of these documents. However, the reasoning for this decision was given in writing after the OPs and is based on grounds and evidence on which the patent proprietor did not have an opportunity to present his comments in accordance with A 113(1) as they were not given the opportunity at the OPs to address this issue. Thus, any argument the patent proprietor wanted to present in this respect at the OPs, which it considered to be pertinent for the decision, could not be made, and is therefore neither dealt with nor mentioned in the decision under appeal. One cannot know if, and to which degree, the patent proprietor’s arguments, if allowed, might have influenced the decision taken by the OD. Since the patent proprietor’s right to be heard has been violated by the OD, being an authority of the first instance, this violation cannot be repaired by hearing the patent proprietors on this issue before an authority of the second instance, but only by remitting the case to the first instance (see T 594/00 [10]). This situation is not therefore one which lends itself to the application of the principle that there is no absolute right to a party to be heard at two instances (see T 133/87). [22] The opponents moreover argued that the patent proprietor has abandoned his right to be heard by not attending the OPs before the Board. The Board cannot identify a legal basis in the EPC from which it could be concluded that a party, appealing against a decision of a department of first instance, which had been taken in violation of its right to be heard, when it does not appear at OPs before the department of second instance has retrospectively abandoned its right to be heard before the department of first instance. [23] The Board concludes that there are no special reasons in the sense of Article 11 RPBA not to remit the case. It is emphasised that the precise and correct definition of those documents which belong to the state of the art is of utmost importance for the realization of a legally correct and reliable procedure before the departments of all instances of the EPO. Therefore, the case is remitted to the first instance for further prosecution (A 111(1)). […] I tend to agree with the opponents: the present remittal, although justified on formal grounds, appears to have been a mere waste of time.
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T 1077/06 – The Right To Be Heard, Again
K’s Law – The ebook
By the way, in the meantime the OD has revoked the patent again, but this time, so it seems, the patent proprietor did not appeal the decision. Should you wish to download the whole decision, just click here. You can have a look at the file wrapper by clicking here.
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T 1309/07 – No Common Interest
K’s Law – The ebook
T 1309/07 – No Common Interest 1 Feb 2011
Claim 1 of the main request (and of the patent as granted) read: 1. Piston for an internal combustion engine having an annularly arranged cooling duct which has inlet and outlet openings, it being possible to feed cooling oil through a cooling-oil nozzle as a free oil jet via an inlet channel into the inlet opening and therefore into the cooling duct and to lead cooling oil away through at least one outlet opening via an outlet duct, characterized in that the cooling duct (2) has at least three openings (3,4,5), two inlet openings (3,5) to be used alternately being arranged, as seen in the plane of the cooling duct, so as to lie opposite the one outlet opening (4), and in that the openings (3,5) are arranged symmetrically with respect to a centre axis extending through the outlet opening (4).
*** Translated from the German *** Prior use by delivery of pistons What was delivered ? [3.1.1] Drawings E4, E5A, E6 Both drawing E4 and drawing E5a refer in their upper corner to drawing E6 (number of drawing 1K42147/23). In the number of the blank (Rohling) or pre-product given in the right upper corner of drawing E6 “A8” refers to a “piston blank with variances (Abweichungen)”, “+” to certain core forming process steps, and “B1” to further machining steps (see […] E5a). Moreover, all figures E4, E5a and E6 refer to the same order number 85271. Therefore, the Board has no doubts that the figures E4 and E5a and E6 show different manufacturing steps for the production of the piston shown in drawing E6. [3.1.2] Assignment of the drawings E4 to E6 to the delivery notes (Lieferscheine) E7 a) The column “Désignation Article N° Commande – Pays d’Origine” consistently refers to “080V191X7A08B1-1 CL”. The Board is convinced by the explanation of [Opponent 1], according to which the abbreviation “X7” was chosen in the delivery notes instead of the designation of the core forming process steps in the drawings by means of a certain number of plus signs, also because the particular graphical arrangement of the plus signs in these drawings cannot be easily reproduced with a typewriter keyboard. Moreover, it appears plausible to the Board that, for data processing reasons, leading zeros have been inserted, so that the reference “80V191A8” used in the drawings becomes “080V191X7A08” in the delivery notes. b) The fact that the following indications of the delivery notes can be assigned to the drawing E6 has also contributed to this conviction of the Board. In the centre of the drawing, on the right hand side, there is a horizontal table in which certain dimensions are assigned to the reference “KH”. Those dimensions have their counterpart in the delivery notes, where the dimension “KH”, i.e. height of the piston […], is given as “HA”, the abbreviation of the French designation for the height. As the dimensions for the piston height and also for the 2489 | 3398
T 1309/07 – No Common Interest
K’s Law – The ebook
piston diameter correspond to each other in E7 and E6, the product designation in the delivery notes clearly refers to the pistons according to drawings E4 to E6. [3.1.3] Summing up, the Board finds that from these documents it can clearly be derived that 17 520 pistons according to drawing E6, designed according to drawings E5a and E4, have been delivered to Renault before the priority date of the present patent. Does this delivery make the pistons available to the public ? [3.2.1] As a matter of principle, according to the case law of the Boards of appeal, a piece of information is to be deemed available to the public (a) if at least one single member of the public can obtain this piece of information and understand it, and (b) if there is no obligation of secrecy (see T 1081/01 [5]). [3.2.2] [Opponent 1] is a typical supplier to the car industry. It has delivered pistons for the R19 and Mégane vehicles to the car manufacturer Renault. If the pistons had been sold without any conditions, Renault would have had to be considered as a member of the public because it could dispose of them without restriction. However, there have been no submissions regarding the terms of delivery, in particular on whether there was a secrecy agreement or not. Therefore, it has to be assessed whether the circumstances of the business relationship lead to the conclusion that there was a tacit obligation of secrecy. Was there a tacit obligation of secrecy at the time of delivery of the pistons ? [3.2.3] a) According to the case law of the Boards of appeal, one may presume a tacit obligation of secrecy – inter alia – when the business partners have a common interest in secrecy. This would, for instance, be the case if the development partners supply each other with samples for experimental purposes. However, such an interest could only be presumed until the pistons are delivered for mass production (Serienproduktion), because from this time on the pistons are destined to be incorporated into vehicles to be sold and thus made accessible to the public. In other words, as soon as the pistons are delivered for mass production one cannot presume a common interest in secrecy (T 1512/06 [4.2.5.a]) Therefore, in the present case, it is decisive whether the pistons that have been delivered were experimental pistons or pistons for the mass production of vehicles. b) The delivery notes E7 show that between November 14, 1997 and January 5, 1998, i.e. in a period of less than two months, more than 17 000 pistons have been delivered. Such a great quantity as such militates against the presumption that the pistons could have been experimental pistons. Moreover, the delivery note of November 14, 1997, explicitly states that it is the first delivery for mass production (Serienlieferung). Even if, as submitted by the [patent proprietor], four pistons were needed for an engine test, this would mean that more than 4000 engine tests would have been required. As an engine test run costs about 70 000 Euros, as the [patent proprietor] has submitted, this argument appears not to be convincing. Even more so in view of the argument of the [patent proprietor] that the pistons that had been delivered could have been experimental pistons for testing a modification of the mass production pistons. The piston reference “80VA91” does not suggest that the pistons were pistons for experimental purposes. As a matter of fact, it can be seen from exhibit E5b that it was a “piston blank with variances”. It is true that in its third column a “piston blank for experiment” is referred to with reference V, but this reference is provided in a different place than in exhibits E4 to E7. c) Catalogue B1 i) Together with the statement of grounds of appeal, the [patent proprietor] has repeated the submissions it had made during the opposition proceedings, according to which the pistons had not been accessible to the public because the pistons were not pistons for mass production bit experimental pistons. Moreover, it has asked [Opponent 1] to provide proof that the pistons were not experimental pistons. By filing this exhibit [Opponent 1] has reacted to the submissions of the [patent proprietor] in its statement of grounds of appeal. Its purpose was to meet the submissions of the [patent proprietor] concerning a possibly missing link in the chain of arguments. 2490 | 3398
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K’s Law – The ebook
As the exhibit is not to be considered late filed, it has been admitted to the proceedings. ii) Exhibit B1 bears a copyright notice of 1997; obviously it is an extract from a catalogue of considerable volume. Therefore, the Board considers unlikely that a catalogue of such a volume was not put in circulation. Therefore, the Board is convinced that exhibit B1 was made accessible to the public in 1997. iii) It can be seen in the second row on page 580 (under the entry “Renault”) that the pistons having the reference 80 V 191 concern the Diesel in-line engines F 8 QT-610/740/768/784/785 of vehicles R19 and Mégane. As drawing E6 depicts a piston of the F8QT740 type (see the bottom on the right hand side), it follows from exhibit B1 that it offered pistons of this type of construction. As, according to the statements of the [patent proprietor], B1 is an extract from a spare parts catalogue, the mass production of the F8QT-740 engines must have been started at the time of publication of this catalogue. At this moment in time one cannot presume a common interest in secrecy any more. d) Considering these circumstances, the Board is of the firm conviction that the pistons that have been delivered were pistons for mass production of vehicles and that no interest in secrecy cannot be presumed any more. [3.2.4] Therefore, the pistons according to drawings E4 to E6 have been made accessible to the public before the priority date of the application.
As the pistons according to the main request and the auxiliary requests were found to lack novelty and inventive step, respectively, in view of this prior use, the appeal was dismissed. Two personal remarks: (1) I find it interesting that the Board states that “a piece of information is to be deemed available to the public (a) if at least one single member of the public can obtain this piece of information and understand it …”. Personally, I do not think that understanding is required. If the person cannot understand the information but can, for example, record it and transmit it to others, this should be sufficient. (2) If there was an experimental phase, wherein the delivery of the pistons was covered by a tacit secrecy agreement (a case envisaged by the Board), the mere fact that at a certain time the pistons are delivered for mass production does not, in my opinion, make them available to the public. It is the first sale of a vehicle comprising such a piston that makes them available. If the car manufacturer did assemble vehicles but, for some reason, did not sell them right away but kept them in its facilities for some time, the pistons would not yet be available to the public during that time, I would say. I think that this situation is analogous to T 1081/01 where it was said that “information provided subject to a confidentiality agreement does not become available to the public merely by reason of the expiry of the obligation to keep it confidential. Some separate act of making it available to the public would be needed.” Should you wish to download the whole decision (in German) or have a look at the file wrapper, just click here.
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T 206/08 - Unexplored Fields
T 206/08 - Unexplored Fields 31 Jan 2011
One of the more delicate questions for patent drafters is how many examples have to be disclosed in order for the invention to be sufficiently disclosed. Obviously, this depends on the breadth of the claimed subject-matter and on the relevant skilled person. In the mechanical realm, very often one exemplary embodiment will be enough, but in the field of chemistry more than that may be required. The present appeal is from the decision of the Opposition Division (OD) to revoke the opposed patent. Claim 1 of the main request before the Board (which was also the first auxiliary request before the OD) read: 1. A detergent composition comprising a protease and from 0.00018% to 0.06% pure enzyme by weight of total composition of: (a) α-amylase characterized by having a specific activity at least 25% higher than the specific activity of Termamyl® at a temperature range of 25°C to 55°C and at a pH value in the range of 8 to 10, measured by the Phadebas® α-amylase activity assay comprising diluting said αamylase in 50 mM Britton-Robinson buffer, adding 1 ml of this α-amylase solution to 5 ml 50 mM Britton-Robinson buffer containing one Phadebas® tablet suspended therein and measuring the absorbance at 620 nm after 10 or 15 minutes of incubation (testing time) in the range of 0.2 to 2.0 absorbance units; and/or; (b) α-amylase according (a) comprising the amino sequence shown in SEQ ID No. 1 or an αamylase being at least 80% identical with the amino acid sequence shown in SEQ ID No.1 and/or; (c) α-amylase according (a) comprising the amino sequence shown in SEQ ID No.2 or an αamylase being at least 80% identical with the amino acid sequence shown in SEQ ID No.2 and/or; (d) α-amylase according (a) comprising the following amino sequence in the N-terminal: HisHis-Asn-Gly-Thr-Asn-Gly-Thr-Met-Met-Gln- Tyr-Phe-Glu-Trp-Tyr-Leu-Pro-Asn-Asp (SEQ ID No.3) or an α-amylase being at least 80% identical with the amino acid sequence shown (SEQ ID No.3) in the N-terminal and/or; (e) α-amylase according (a-d) wherein the α- amylase is obtained from an alkalophilic Bacillus species and/or (f) α-amylase according to (e) wherein the amylase is obtained from any of the strains NCIB 12289, NCIB 12512, NCIB 12513 and DSM 935 and/or; (h) Variant of a parent α-amylase, which parent α- amylase (i) has one of the amino acid sequences shown in SEQ ID No. 1 , ID No.2 or ID No.4 respectively, or (ii) displays at least 80% identity with one or more of said amino acid sequences, in which variants: (i) at least one amino acid residue of said parent α-amylase has been deleted; and/or (ii) at least one amino acid residue of said parent α-amylase has been replaced by a different amino acid residue; and/or (iii) at least one amino acid residue has been inserted relative to said parent αamylase; said variant having an α-amylase activity and exhibiting at least one of the following properties relative to said parent α-amylase: increased thermostability, increased stability towards oxidation, reduced Ca ion dependency, increased stability and/or a-amylolytic activity at neutral to relatively high pH values, increased a-amylolytic activity at relatively high temperature and increase or decrease of the isoelectric point (pI) so as to better match the pI value for α-amylase variant to the pH of the medium. The Board raises a sufficiency problem. [3.1] This claim […] defines detergent compositions containing protease and a defined amount of α-amylases (AA). In particular, the claimed compositions may comprise any AA that displays a superior amylolytic activity in the PAA assay as defined in feature “(a)” (due to the option “and/or” at the end of this feature). [3.2] According to the established jurisprudence of the Boards of Appeal the requirement for sufficient disclosure should be objected to by rendering credible that there exist serious doubts, substantiated by verifiable facts, that the disclosure provided is insufficient for carrying out the invention.
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K’s Law – The ebook
T 206/08 - Unexplored Fields
It is also established jurisprudence of the Boards of Appeal that, even though a reasonable number of trial and error experiments is permissible, there must be available adequate instructions in the specification or on the basis of common general knowledge which would lead the skilled person necessarily and directly towards success through the evaluation of initial failures or through an acceptable statistical expectation rate in the case of random experiments (see Case Law of the BoA of the EPO, 6th edition 2010, point II.A.4.2). [3.3] In the present case, the definition of the AAs suitable for preparing the claimed detergent compositions only in terms of the superior activity to be verified as described in feature “(a)” extends the area in which the skilled person should possibly search further suitable AAs to all naturally occurring or engineered amylolytic enzymes. On the other hand, the patent in suit just discloses (also via the reference to documents D1 and D2) only a few examples of the AAs complying with feature “(a)” all manifestly similar in their structure, in particular at the Nterminal. Under these circumstances, the fact brought forward by the [opponents], and undisputed by the [patent proprietor], that there exist many other sorts of AAs whose structures can be completely different from those of the AAs exemplified in the patent in suit, renders evident that the person skilled in the art enters a totally unexplored field when searching for further embodiments of the claimed subject-matter among the AAs substantially different from the few exemplified in the patent in suit. Accordingly, he cannot have any particular expectation of success when randomly attempting the PAA assay among these AAs. Alternatively, the skilled person is obliged to start a complete research program in the hope of finding any criteria (e.g. as to which other segments of amino acid sequence, in addition to those present in the sequences already specified in claim 1, are more frequently associated with the required superior enzymatic activity) for selectively limiting the group of AAs in which to search. Hence, the Board concludes that the skilled person is very likely to face a large amount of experimental work, before being able to realize embodiments of the claimed detergent composition based on AAs substantially different from the few exemplified. [3.4] Therefore, the Board finds that the subject-matter of claim 1 is not sufficiently disclosed and, thus, that the Appellant’s main request is not allowable in view of A 83. Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here.
2493 | 3398
K’s Law – The ebook
T 206/08 - Active, Passive, All The Same ?
T 206/08 - Active, Passive, All The Same ? 29 Jan 2011
This appeal is from the decision of the Opposition Division to revoke the opposed patent. The Board found the main and first auxiliary requests on file to lack sufficiency of disclosure under A 83. Claim 1 of the second auxiliary request on file read: 1. A detergent composition comprising from 0.005% to 0.1% pure enzyme by weight of total composition of a protease and from 0.00024% to 0.048% pure enzyme by weight of total composition of: (a) an α-amylase characterized by having a specific activity at least 25% higher than the specific activity of Termamyl® at a temperature range of 25°C to 55°C and at a pH value in the range of 8 to 10, measured by the Phadebas® α- amylase activity assay comprising diluting said α-amylase in 50 mM Britton-Robinson buffer, adding 1 ml of this α-amylase solution to 5 ml 50 mM Britton-Robinson buffer containing one Phadebas® tablet suspended therein and measuring the absorbance at 620 nm after 10 or 15 minutes of incubation (testing time) in the range of 0.2 to 2.0 absorbance units; and (b) the α-amylase according to (a) comprising the amino sequence shown in SEQ ID No. 1 or an α- amylase being at least 80% identical with the amino acid sequence shown in SEQ ID No.1 or; (c) the α-amylase according (a) comprising the amino sequence shown in SEQ ID No.2 or an α- amylase being at least 80% identical with the amino acid sequence shown in SEQ ID No.2 or; (d) the α-amylase according (a) comprising the following amino sequence in the N-terminal: His-His-Asn-Gly-Thr-Asn-Gly-Thr-Met-Met-GlnTyr-Phe-Glu-Trp-Tyr-Leu-Pro-Asn-Asp (SEQ ID No.3) or an α-amylase being at least 80% identical with the amino acid sequence shown (SEQ ID No.3) in the N-terminal wherein the α-amylase is obtained from an alkalophilic Bacillus species and/or is obtained from any of the strains NCIB 12289, NCIB 12512, NCIB 12513 and DSM 935. The opponents argued that the expression “obtained from” did not comply with the requirements of A 123(2). The Board does not agree: [5.1] In the [opponents’] opinion the wording “obtained from”, present twice in the final part of claim 1 of the second auxiliary request (for specifying the microorganisms from which the α-amylases (AAs) must be obtained […]), is not supported in the patent application as originally filed, because the meaning of this wording is possibly technically encompassed but not directly and unambiguously disclosed by the passages in the original description that define the AAs of the invention as “obtainable from” the relevant microorganisms. Nor would the expression “produced by” present in the […] originally filed description […] correspond to “obtained from”. The Board notes that the [opponents] have provided no supporting evidence for the allegation that the expressions “produced by” and “obtained from” would be generally acknowledged to possess clearly distinct meanings. It appears instead to the Board that the expression “produced by” is used in the referred passage […] “In the context of the present invention, the term “obtainable from” is intended not only to indicate an amylase produced by a Bacillus strain but also an amylase encoded by a DNA sequence isolated from such a Bacillus strain and produced in an host organism transformed with said DNA sequence.” to express substantially the same meaning normally given to “obtained from”, i.e. just to indicate that the enzyme has been synthesized by the specified microorganism(s).
2494 | 3398
K’s Law – The ebook
T 206/08 - Active, Passive, All The Same ?
Hence the Board concludes that the wording “obtained from” introduced in claim 1 does not violate A 123(2) already because it corresponds to the expression “produced by” of the above-cited passage of the original patent application. Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here.
2495 | 3398
T 917/07 – Ticking Is Not Enough
K’s Law – The ebook
T 917/07 – Ticking Is Not Enough 28 Jan 2011
One of the trickier questions concerning the grounds for opposition is whether by raising – and, as the case may be, substantiating - the ground of inventive step an opponent also implicitly raises the ground of novelty, and vice versa. In G 7/95 [headnote], the Enlarged Board (EBA) has made it clear that “In a case where a patent has been opposed under A 100(a) on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon A 52(1) and A 54 is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee. However, the allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding upon the ground of lack of inventive step.” I am not aware of an EBA decision dealing with the converse situation where the patent had been opposed on the ground of novelty only and where the ground of lack of inventive step had been raised only during the appeal proceedings. However, the same reasoning should hold true, and this is indeed the conclusion of T 928/93 [3]. Of course, the normal precautionary reaction of opponents would be to raise both grounds, even if at the time of filing one had only arguments for one of them. Therefore, the Boards have spent some thought on what to do with unsubstantiated grounds. T 131/01 has pointed out that “In a case where a patent has been opposed under A 100(a) on the grounds of lack of novelty and inventive step having regard to a prior art document, and the ground of lack of novelty has been substantiated pursuant to R 55(c), a specific substantiation of the ground of lack of inventive step is neither necessary - given that novelty is a prerequisite for determining whether an invention involves an inventive step and such prerequisite is allegedly not satisfied - nor generally possible without contradicting the reasoning presented in support of lack of novelty. In such a case, the objection of lack of inventive step is not a fresh ground for opposition and can consequently be examined in the appeal proceedings without the agreement of the patentee.” Does this also hold true for the converse situation, where the grounds of lack of novelty and lack of inventive step have been raised but where only the lack of inventive step has been substantiated? That is the question dealt with in the present decision. *** Translated from the German *** [3] On form 2300.1, which can be used for filing an opposition, the box “lack of novelty” had been ticked, but the lack of novelty was not discussed in the notice of opposition, nor in the subsequent opposition proceedings. According to the established case law of the Boards of appeal (see, for instance, T 105/94) a ground for opposition that has not been substantiated is deemed not to have been raised. According to decision G 10/91 [18] of the EBA, in order for a new ground of opposition to be examined in appeal proceedings, the patent proprietor has to give its approval to the introduction of a this new ground. In the present case the [patent proprietor] has refused its approval, so that the ground of lack of novelty cannot be admitted in the appeal proceedings. Should you wish to download the whole document (in German), just click here. To have a look at the file wrapper, click here. To read a post on a related question, click here.
2496 | 3398
T 1795/07 – Acting As If
K’s Law – The ebook
T 1795/07 – Acting As If 27 Jan 2011
From time to time there are errors in decisions to grant a patent. The normal remedy is to request correction under R 140, which states: “In decisions of the EPO, only linguistic errors, errors of transcription and obvious mistakes may be corrected.” Such a correction may take place during opposition proceedings (you might remember that there is a pending referral to the EBA on that topic : G 1/10), but apparently this is not the only way to overcome an error in a decision to grant. The present decision shows that the Opposition Division (OD) and the Board of appeals may act as if the correction had been carried out. Claim 1 as granted read: 1. A detergent composition containing (a) a water-soluble builder; and (b) an enzyme wherein a means is provided for delaying the release to a wash solution of said enzyme relative to the release of said water-soluble builder such that in the T50 test method herein described the time to achieve a concentration that is 50% of the ultimate concentration of said water-soluble builder is less than 60 seconds and the time to achieve a concentration that is 50% of the ultimate concentration of said enzyme is more than 50 seconds, wherein the means comprise a coating which delays the release of the enzyme and also comprise one or more of (1) a coating on the builder which accelerates release of the builder and (2) selection of the particle size of the builder to less than 1200 µm and an average particle size of 1100 to 500 µm. The published claim differs from its originally granted version (the “Druckexemplar” prepared by the Examining Division (ED)) in that the expression “50 seconds” of the published claim was instead “90 seconds” in the originally granted version. In its response to the notice of opposition, the patent proprietor requested, inter alia, the correction of the error of transcription:
This issue resurfaced before the Board of appeal, after the OD had revoked the patent: [1.1] It is apparent that claim 1 of the published version of the patent in suit contains an error of transcription in respect of the version originally approved by the patent proprietor and that the ED has decided to grant. This error was already mentioned during the opposition proceedings and the decision under appeal is manifestly based on the originally granted version of this claim. 2497 | 3398
T 1795/07 – Acting As If
K’s Law – The ebook
Accordingly, also the following decision is reasoned as if the wording of granted claim 1 would not contain such evident transcription error and, thus, would define the minimum T50 of the enzyme as “more than 90 seconds” (rather than “more than 50 seconds”). I wonder what the legal basis for “acting as if” might be. Where does this discretion come from? Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
2498 | 3398
T 1329/07 – Beyond Established Science
K’s Law – The ebook
T 1329/07 – Beyond Established Science 26 Jan 2011
This appeal is against the refusal of an application by the Examining Division (ED), on the ground of insufficiency of disclosure (A 83). Claim 1 of the main request on file read: Apparatus for interrogating a sample that exhibits molecular rotation, the apparatus comprising: a container adapted for receiving said sample, said container having both magnetic and electromagnetic shielding, an adjustable Gaussian noise injector for injecting Gaussian noise into the sample, with the sample in said container, and for adjusting the level of the injected Gaussian noise such that a low- frequency electromagnetic emission at the sample is enhanced, a detector for detecting an electromagnetic time-domain signal composed of the enhanced low-frequency electromagnetic emission of the sample and the injected Gaussian noise, a storage device for storing said time-domain signal and a second timedomain signal separately detected from the same or a similar sample, and an electronic computer which is adapted to receive the stored signals from the storage device, and to process the detected time-domain signal to generate an output that includes information relating to low-frequency signal components that are characteristic of the sample.
2499 | 3398
T 1329/07 – Beyond Established Science
K’s Law – The ebook
A 84 [2.1.1] Claim 1 defines an apparatus for interrogating a sample that exhibits molecular rotation. According to the claim, an adjustable Gaussian noise generator is employed to enhance a low-frequency electromagnetic emission at the sample, the term “enhance” implying that the sample is (steadily) emitting a low-frequency radiation. Thus the sample has the following properties: i) it exhibits molecular rotation; and ii) it emits low-frequency electromagnetic radiation. [2.1.2] It is noted that the appellant in its Grounds of Appeal argued that the patent application takes the existence of low-frequency emission of a sample as a fact. Apparently, apart from the requirement that the sample exhibits molecular rotation, no further conditions for this phenomenon to occur are required, at least the patent application does not disclose such conditions. Rather the sample may be in gaseous, liquid or even solid form other than a solid metal […]; and the sample is enclosed in a container having both magnetic and electromagnetic shielding […], implying that, without the noise applied, the sample is not exposed to an external electromagnetic or magnetic field.
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T 1329/07 – Beyond Established Science
K’s Law – The ebook
[2.1.3] In its Communication of 4 May 2009 the Board explained that, while the effect of a moving or rotating dipole in an external magnetic field producing electromagnetic radiation is known from the field of electrodynamics, a phenomenon of a sample spontaneously emitting electromagnetic radiation is unknown in established electromagnetic theory. In particular the established theory of electrodynamics does not leave room for a spontaneous emission of low-frequency radiation by a sample that exhibits (i.e. that is able to undergo) molecular rotation, unless the molecule actually moves/rotates in an external magnetic field. [2.1.4] Therefore the Board finds that the expression “such that a low-frequency electromagnetic emission at the sample is enhanced” is obscure for which reason the claim does not meet the requirements of A 84. A 83 [2.2.1] In its decision, the ED reasoned that, according to the known theories on molecular spectroscopy as documented in textbooks, for identifying rotational or vibrational levels in molecules, electromagnetic waves having wavelengths in the infrared part of the electromagnetic spectrum are needed and that electromagnetic waves in the frequency range lower or equal to 50KHz (“low-frequency”) would not be able to cause a detectable effect in such molecules. The Board concurs with this position in that, at least according to wellestablished theory, applying such a low-frequency signal to a sample that exhibits molecular rotation does not lead to any measurable effect. Therefore, in attempting to reproduce the claimed apparatus and method for interrogating a sample, the skilled person could not rely on the established theory on molecular spectroscopy for predicting any result. [2.2.2] In the Grounds of Appeal […] it is argued that “sample-molecules emit low-frequency signals” which emission is […] already present, even without the application of a Gaussian noise signal. The established theory of electrodynamics does not leave room for a spontaneous emission of low-frequency radiation by a “sample that exhibits” (i.e. that is able to undergo) molecular rotation, unless the molecule actually moves/rotates in an external magnetic field […]. Therefore, even if the purported effect that the so-called “sample-source emission” would be present, the skilled person in attempting to reproduce the claimed apparatus and method could not use the theory of electrodynamics for predicting any result. [2.2.3] [… T]he appellant argues that “the fact that the underlying physical mechanisms … are not exactly understood in the art can not be regarded as prejudicial for the patentability of the present invention”. The Board concurs with this argument insofar as the EPC does not exclude the patenting of “revolutionary” inventions. However, as explained in decision T 541/96 [6.2], the provisions of A 83 require that the European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by the skilled person and that, in particular “if the invention seems, at least at first, to offend against the generally accepted laws of physics and established theories, the disclosure should be detailed enough to prove to a skilled person conversant with mainstream science and technology that the invention is indeed feasible (i.e. susceptible of industrial application). This implies, inter alia, the provision of all the data which the skilled person would need to carry out the claimed invention, since such a person, not being able to derive such data from any generally accepted theory, cannot be expected to implement the teaching of the invention just by trial and error”. Contrary to the opinion of the appellant, that this decision is “vague” in defining the level or reference for a disclosure to be sufficient, the Board finds that the requirements summarised in decision T 541/96 [6.2] are quite unambiguous. The Board also notes that these criteria have also been applied in other more recent decisions, see T 1785/06 [3.4.3] and see the Case law of the Boards of Appeal, 6th edition 2010, Section II.A.7. [2.2.4]
Concerning
the
present
patent
application
it
is
observed
that:
i) An interrogation of a sample exhibiting molecular rotation using low-frequency electromagnetic waves for identifying or detecting sample properties is, according to the theory of molecular spectroscopy, not possible, therefore the skilled person is not able to derive any data from this theory; ii) Classical electrodynamics does not describe or explain “electromagnetic sample-source emissions”, at least not without the simultaneous presence of magnetic fields and moving charges; hence, this theory cannot be used by the skilled person to predict or verify the proper conditions for reproducing the claimed apparatus and/or 2501 | 3398
T 1329/07 – Beyond Established Science
K’s Law – The ebook
method in a successful way; iii) This implies that, for a successful reproduction of the apparatus, method and the results in Figures 11 - 15, the skilled person would have to rely entirely on the original application documents, because the general accepted theory of electromagnetic waves and spectroscopy are of no use to him. [2.2.5] In this respect in the Board’s opinion the skilled person, if studying the present disclosure, is left with a number of questions, because details, necessary for its successful reproducing, are lacking: i) [… T]he sample may be temperature controlled to a preset or selected temperature. However, with respect to the Examples […] no temperatures are disclosed; the appellant has referred to paragraph [0122] which discloses that the sample is “typically a liquid sample” from which the appellant concludes that it should be recorded at liquid phase temperature. However in the same sentence it is disclosed that the sample “… may be gaseous or solid or semi-solid as well, as long as at least one component of the sample has one or more rotational degrees of freedom”. Therefore this passage does not allow one to draw a conclusion concerning the temperatures applied. ii) The Examples also do not disclose values of the applied magnetic field at the Helmholtz coils. In this respect the statement […] that “noise is applied and adjusted until the noise is 30 to 35 decibels above the molecular electromagnetic emissions sought to be detected” is of no assistance since, as explained before, the skilled person familiar with the field of electrodynamics and molecular spectroscopy cannot obtain any information about the expected level of “molecular electromagnetic emissions” from the established theories; iii) Finally, although Figures 11 - 15 show “spectral plots” in dependence of frequency, and “data” are listed in Tables 1 to 3, the skilled person does not have information to relate such data to a deterministic model which would enable him to reproduce the claimed “interrogation of a sample that exhibits molecular rotation” in a predictable way. It therefore appears that the skilled person, while not being able to derive from the description the teaching necessary for reproducing the claimed apparatus from established scientific theories because the purported conditions are in apparent contradiction with these theories, is also not presented with all the data to implement the invention without undue experimentation. [2.2.6] [… T]he appellant has argued that in its opinion the patent application disclosed all the required data so that the apparatus and method can be reproduced by the skilled person, as was illustrated by the declarations of Dr. Herr and Mr. Fugal. [2.2.7] These arguments are not found to be conclusive by the Board: as explained in the Board’s Communication of 2 February 2010, it understands from the declaration of Dr. Herr that he was not involved in the generation and collection of the data, and had only been involved in the data processing. [2.2.8] The data discussed in the context of the declaration of Mr. Fugal cannot convince the Board, because apparently these data have been collected at the premises of the appellant, presumably employing the apparatus of the appellant. Therefore the collection of these data is not comparable with the position in which the skilled person finds himself if, starting from scratch and only having at his disposal the original patent application and his background in the technical field of physics, tries to reproduce the apparatus and method as originally disclosed. This in particular because, on the one hand, he understands that a sample exhibiting molecular rotation and emitting low-frequency radiation is the basis of the disclosure but, on the other hand, he is not in a position to provide such a sample with the desired behaviour, at least not starting from established physics theories. This implies that in the original patent application there is essential information missing. […] [2.2.10] For these reasons the main request is not allowable. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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K’s Law – The ebook
T 491/08 - Insufficient
T 491/08 - Insufficient 25 Jan 2011
The appeal concerns the refusal of an application by the Examining Division (ED). Claim 1 of the main request on file read: Use of (1) a nucleic acid vaccine and (2) a recombinant NYVAC or ALVAC pox virus vaccine encoding one or more of the same antigens encoded by the nucleic acid vaccine in the preparation of a first and second medicament respectively to potentiate a CD8+ response to human immunodeficiency virus-1 (HIV-1) epitopes in a human, wherein the nucleic acid and recombinant pox virus vaccines are capable of entering the cells of the human and intracellularly producing HIV-specific peptides that are presented on the cell’s MHC class I molecules in an amount sufficient to stimulate a CD8+ response, and further, wherein administration of the first and second medicaments potentiates an immune response compared to administration of either the nucleic acid or the recombinant pox virus by itself. [1] Under the EPC 1973 a patent for a further medical application could, pursuant to case law established by decision G 5/83, be granted for a claim directed to the use of a substance or composition for the manufacture of a medicament for a specified therapeutic application (“Swiss-type claim”). [2] Claim 1 of the main request, which like claim 1 of all other of Appellants’ requests is drafted in the so-called Swiss-type format, relates to the use of a nucleic acid vaccine and of a recombinant NYVAC or ALVAC pox virus vaccine for the preparation of a first and second medicament respectively. The two vaccines which encode one or more of the same antigens potentiate the CD8+ response to HIV-1 epitopes in a human. [3] The application […] contains two examples. Example 1 describes the administration of DNA priming vaccines in combination with NYVAC-SIVgag-pol-env to Rhesus macaques. The Board has no reason to doubt that the macaque/SIV system is an animal model for human/HIV. The study design included 24 animals which were divided into three groups. Group A was vaccinated with a nonrecombinant NYVAC virus, group B was vaccinated with NYVAC-SIVgag-pol-env and the animals of group C were vaccinated with DNA plasmids constructs expressing the gag and env proteins of SIV239, followed by vaccination with NYVAC-SIVgag-pol-env. The exact inoculation protocol is shown in figure 1. Groups A and B received four vaccinations (at weeks 0, 4, 24 and 52), group C was primed with DNASIVgag-env in weeks 0, 4 and 12 and boosted with NYVAC-SIVgag-pol-env in weeks 24 and 52. The results are presented in figures 2 to 8 and discussed on pages 19 to 22. The animals of group C showed a tenfold higher lymphoproliferative response to p27 Gag and Env than the group B animals, they responded to more SIV groups and the responses were higher and their virological outcome was ameliorated after challenge with pathological SIV. [4] Page 22, lines 5 to 6, at the end of example 1 reads: “ALVAC-based vaccine are similarly analyzed demonstrating that they also potentiate the immune response when used in conjunction with DNA vaccines.” Example 2 mentions “a vaccine regimen of a DNA priming vaccine followed by inoculation with a vaccine such as NYVAC or ALVAC”, for humans at risk for HIV infection or for HIV infected patients. The DNA priming vaccine, of which multiple inoculations are typically administered, is said to express the HIV-1 gag,pro,tat,nef,rev and env genes. The patient, subsequently, is injected with a vaccine comprising about 108 pfu of a recombinant pox virus, e.g. NYVAC, expressing HIV-1 gag,pro,tat,nef, rev and env epitopes. The combination of these two vaccines is said to provide “a protective immune response in uninfected patients and a therapeutic effect in those individuals already infected with HIV-1”. [5] The only experimental data disclosed in the application refer to the animal model used in example 1 with the specific study design described therein, i.e. use of defined antigens and of a specific viral vector and inoculation 2503 | 3398
K’s Law – The ebook
T 491/08 - Insufficient
following a precisely defined administration protocol. The application discloses no data for any other animal model study with a different experimental design, nor for any test carried out with humans. [6] Where a therapeutic application is claimed in the form allowed by the Enlarged Board of Appeal in its decision G 5/83, i.e. in the form of the use of a substance or composition for the manufacture of a medicament for a defined therapeutic application, attaining the claimed therapeutic effect is a functional technical feature of the claim (see G 2/88 and G 6/88 [headnote III;9]. As a consequence, under A 83, unless this is already known to the skilled person at the priority date, the application must disclose the suitability of the product to be manufactured for the claimed therapeutic application. Taking into account the intrinsic difficulties for a compound to be officially certified as a drug (many years of experimental tests and high developmental costs), the patent system does not require an absolute proof that the compound is approved as a drug before it may be claimed as such. However, it is required that the patent application provides some information in the form of, for example, experimental tests, to the effect that the claimed compound, administered as stated in the claims, has a direct effect on a metabolic mechanism specifically involved in the disease, this mechanism being either known from the prior art or demonstrated in the application per se. Once this evidence is available from the patent application, then post-published evidence may be taken into account, but only to back up the findings in the patent application in relation to the use of the ingredient as a pharmaceutical, and not in itself to establish sufficiency of disclosure (cf. T 609/02 [9]). [7] In the present case, the application provides experimental data concerning the results of one specific example only, namely the animal model of claim 1. The example is carried out by following a study design wherein the antigens, the viral vector and the inoculation protocol are clearly defined (see point [3] above). In contrast to this, the subject-matter of claim 1 of Appellants’ main request refers to the use of two compounds for the preparation of a first and second vaccine medicament respectively, wherein neither the antigens encoded by said compounds (“one or more of the same antigens”), nor the viral vector (“a recombinant NYVAC or ALVAC pox virus”) are defined as in example 1. No inoculation protocol is mentioned in claim 1. [8] Consequently, the patent application itself does provide any information that the generically described compounds according to claim 1, when administered to a human by whatever inoculation protocol, have a direct effect on a metabolic mechanism specifically involved in HIV-1 infection. Following the rationale of decision T 609/02 it has to be examined if such a mechanism, which could form an acceptable basis for generic claim 1, is known from the prior art. [9] Document D1 discloses studies with mice and macaques evaluating a consecutive immunization strategy involving priming with DNA and boosting with rFPV vaccines encoding common HIV-1 antigens. The exact study design, including construction of plasmids and recombinant poxviruses as well as immunization protocols, is given on pages 10181 to 10182 (“Materials and Methods”). Document D4 demonstrates the immunogenicity of primeboost vaccination against retroviral antigens in rhesus macaques who were given consecutive inocula of DNA and modified vaccinia virus Ankara (MVA) encoding SIVgag sequences as multiepitope constructs (see abstract). High levels of CTL’s specific for the used epitope were elicited in the animals. The exact study design is indicated on pages 7525 to 7526). Document D5 discloses that a particular sequence of subunit immunizations with pre-erythrocytic antigens of Plasmodium berghei, consisting of single dose priming with plasmid DNA followed by a single boost with recombinant MVA expressing the same antigen, induced unprecedented complete protection against P. berghei sporozite challenge in two strains of mice (abstract). The study shows that the protection, among others, depends on the specific vaccinia virus strain used […]. [10] Thus, all these relevant prior art documents, referring to prime-boost vaccination using a nucleic acid vaccine and a recombinant viral vector conditions, disclose a defined study design including number and kind of used antigens, construction and nature of used DNA plasmids and recombinant viral vectors and the precise inoculation protocol. Nothing in their disclosure can be interpreted as permitting data obtained by studies with a defined experimental set-up to be extrapolated to other studies with different or generically defined parameters. [11] The Appellants argued that the disclosure in post published document D16 should be taken into account, showing that the therapeutic effect of claim 1, potentiation of a CD8+ response to HIV-1 in humans, is indeed achieved by the claimed vaccines.
2504 | 3398
K’s Law – The ebook
T 491/08 - Insufficient
Document D16, published almost eight years after the priority date of the present patent application, reports phase I trials evaluating the safety and immunogenicity of a prime-boost regimen comprising recombinant DNA and the poxvirus vector NYVAC, both expressing a common immunogen consisting of Env, Gag, Pol, and Nef polypeptide domain from HIV-1clade C isolate, CN54. 40 volunteers were randomized to receive DNA C or nothing on day 0 and at week 4, followed by NYVAC C at weeks 20 and 24. The primary immunogenicity endpoints were measured at weeks 26 and 28 by the quantification of T cell responses […]. The Board notes that, not only does document D16 report trials following a defined and specific study design (definition of immunogens and vectors plus a precise inoculation protocol), but also that this study design differs considerably from the study design of the animal model trial in example 1 and the, rather hypothetical, experiment in example 2 of the patent application. According to decision T 609/02, the disclosure in post-published document D16 might only be taken into account for the question of sufficiency of disclosure if it was used to backup the findings in the patent application and not to establish sufficiency of disclosure on its own (see point [6] above). However, document D16, just like the disclosure in the patent application per se, does not allow any conclusion to be drawn on the medical applicability of the vaccines according to claim 1, which are only generically described and for which no inoculation protocol is indicated. [12] The Board holds that a presumption exists that, in general, a patent application relates to an invention which is disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The weight of arguments and evidence required to rebut this presumption depends on its strength. A strong presumption requires more substantial arguments and evidence than a weak one. If, as in the present case, a patent application does not contain detailed information of how to put the invention into practice; this requires less substantial arguments and evidence. Serious doubts whether the skilled person can carry out the invention as claimed, e.g. in the form of comprehensible and plausible arguments, are sufficient (see for instance decision T 63/06 [3.3.1]). In the light of the disclosure of the present application and considering the disclosure in the prior art and in postpublished documents, the Board does not agree that the objection under A 83, lack of sufficient disclosure, is based on hypothetical plausibility considerations only and not, as required by decision T 19/90, on serious doubts, substantiated by verifiable facts. As a consequence, the Board decides that the application does not disclose the invention according to claim 1 of the main request in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, as required by A 83. Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here.
2505 | 3398
T 195/09 – Dangers Of Mono & Poly
K’s Law – The ebook
T 195/09 – Dangers Of Mono & Poly 24 Jan 2011
The present decision deals with appeals of all parties against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. Claim 1 as granted read: 1. A method for washing soiled dishes through a series of sequential cycles comprising a penultimate rinse cycle and a final rinse cycle, the method comprising charging a mechanical dishwashing composition comprising: (A) an anti-scaling polymer formed from
50-99% by weight of the polymer of an olefinically unsaturated carboxylic monomer; 1 to 50% of at least one monomer unit selected from the group consisting of copolymerizable sulfonate polymers, copolymerizable nonionic monomers and mixtures thereof;
(B) 0.1 to 99.9% of a vehicle releasing the anti- scaling polymer into the penultimate and final rinse cycle of a dishwashing sequence, characterised in that the dosage of the anti-scaling polymer is such that the weight ratio of the level of dosed antiscalant in the penultimate rinse cycle to that in the final rinse cycle is from about 1:10 to about 10:1. The OD found that the original documents of the application did not contain any support for the use of an antiscaling polymer formed from copolymerizable sulfonated polymers. It therefore found claim 1 as granted not to comply with A 123(2). As a matter of fact, the application as filed referred to copolymerizable sulfonated monomers; the reference to polymers had been introduced via a claim amendment filed in response to a communication under A 96(2). (Does this ring a bell? Trap ahead!) As regards claim 1 according to then pending first and second auxiliary requests - wherein the wording “copolymerizable sulfonated polymers” contained in claim 1 as granted had been amended into “copolymerizable sulfonated monomers” - the OD found that this amendment could not be considered to be an obvious correction of an error since it was not immediately evident that the reference to copolymerizable sulfonated polymers was erroneous. However, by considering that claim 7 as granted and the overall description of the patent in suit related extensively to anti-scaling polymers formed from copolymerizable sulfonated monomers, the protection of the granted patent had to be understood as including both types of anti-scaling polymers formed from copolymerizable sulfonated polymers or copolymerizable sulfonated monomers; therefore, claim 1 according to the first and second auxiliary requests did not contravene the requirements of A 123(3). Main request (patent as granted) A 123(2) [1.1.1] Claim 1 as granted relates to a method for automatic dishwashing wherein the used machine dishwashing composition contains the anti-scaling polymer (A) and 0.1 to 99.9% by weight of a vehicle (B) capable of releasing such an anti-scaling polymer during the last two rinse cycles. Moreover, the anti-scaling polymer (A) is formed from (i.e. consists of) 50 to 99.9% by weight of olefinically unsaturated carboxylic monomers and 0.1 to 50% by weight of copolymerizable sulfonated polymers, nonionic monomers or mixtures thereof. It is undisputed that the original documents of the application do not disclose copolymerizable sulfonate polymers as possible monomers of the anti-scaling polymer (A).
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T 195/09 – Dangers Of Mono & Poly
K’s Law – The ebook
[1.1.2] As found in the decision under appeal, it was common general knowledge that so-called macromonomers or macromers, i.e. oligomers or polymers with a polymerizable end group, can be used as monomers in the preparation of copolymers […]. Therefore, the skilled person, in reading claim 1, would not have considered the wording of this claim, requiring inter alia the use of sulfonate polymers as comonomers of the anti-scaling polymer (A), to be manifestly incorrect and would have interpreted the claim as it stands, i.e. as relating also to the use of anti-scaling polymers (A) formed by copolymerizing sulfonated polymers with olefinically unsaturated carboxylic acids. Since these polymers are not disclosed in the documents of the application as originally filed, the Board concludes that claim 1 as granted does not comply with the requirements of A 123(2). This was not contested by the patent proprietor. Auxiliary request (patent as maintained by the OD) A 123(3) [2.1.1] Claim 1 of the set of claims according to the auxiliary request differs from claim 1 as granted inter alia insofar as the wording “copolymerizable sulfonated polymers” contained in claim 1 as granted has been amended into “copolymerizable sulfonated monomers”. Therefore, this claim extends to methods in which the used composition comprises as anti-scaling polymers (A) those formed from olefinically unsaturated carboxylic monomers and copolymerizable sulfonated monomers, which polymers were not encompassed by the definition of the anti-scaling polymers (A) of granted claim 1. Moreover, the remaining claims are all dependent on claim 1. Therefore, claim 1 represents the broadest scope of the patent in suit according to the auxiliary request. [2.1.2] According to A 69(1), the extent of protection conferred by a European patent shall be determined by the claims, which shall be interpreted by using the description and the drawings, if available. In the patent proprietor’s view, by considering that the description of the patent in suit does not mention copolymerizable sulfonated polymers and relates instead extensively to copolymerizable sulfonated monomers, claim 1 as granted would have been interpreted by the skilled person to relate not only to the use of anti-scaling polymers (A) formed from copolymerizable sulfonated polymers but also to the use of anti-scaling polymers (A) formed from copolymerizable sulfonated monomers. This interpretation would be supported by the wording of granted claim 7 relating to specific sulfonated monomers. However, in the Board’s view, the fact that the description relates extensively to copolymerizable sulfonated monomers and not to copolymerizable sulfonated polymers amounts only to a discrepancy between granted claim 1 and the description but, in the absence of any specific indication in the description, it cannot be considered to be a teaching that the wording “copolymerizable sulfonated polymers” in claim 1 should be interpreted as having a broader meaning than what would be understood by the skilled person. Moreover, even though the granted claim 7, which is dependent on claim 1, lists specific sulfonated monomers, the skilled person would interpret this dependent claim only as relating to the anti-scaling polymers (A) of claim 1 containing additionally such specific sulfonated monomers. Therefore, as explained in point [1.1.2] above, claim 1 as granted would have been understood by the skilled person as it stands, i.e. as relating also to the use of anti-scaling polymers (A) which are formed from olefinically unsaturated carboxylic monomers and copolymerizable sulfonated polymers, which anti-scaling polymers (A) do not include polymers formed solely from olefinically unsaturated carboxylic monomers and generic sulfonated monomers as encompassed by claim 1 according to the auxiliary request. [2.1.3] The patent proprietor submitted also that, by considering the description, the skilled person would have understood that the granted claim 1 referred erroneously to copolymerizable sulfonated polymers instead of copolymerizable sulfonated monomers and that the amended claim 1 according to the auxiliary request, by reporting the truly intended technical features of the invention, would not extend the scope of the granted patent.
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T 195/09 – Dangers Of Mono & Poly
K’s Law – The ebook
However, as explained in points [1.1.2] and [2.1.2] above, claim 1 as granted would have been understood by the skilled person as it stands. Therefore, also this argument of the patent proprietor cannot justify the allowability under A 123(3) of the auxiliary request. [2.1.4] The Board remarks also that the decisions G 3/89 and G 11/91, cited by the patent proprietor during oral proceedings, regard only the allowability of a request for correction of an error and the relationship between R 88 EPC 1973 and A 123(2). Therefore, these decisions cannot apply to the present case wherein it has to be decided on the allowability of the amended patent under A 123(3). [2.1.5] The patent proprietor referred also to the decision T 108/91, in which it was decided that an inaccurate technical statement in a granted claim, which statement is evidently inconsistent with the totality of the disclosure of the patent and would contravene the requirements of A 123(2), can be replaced with an accurate statement of the technical features involved without infringing A 123(3) (see headnote and points [2.2] and [2.3]). However, the Board remarks that this decision is older than the decision G 1/93 of the Enlarged Board of Appeal of the EPO, which ruled on a similar point of law. In particular, it was decided in G 1/93 (headnote 1 and point [13]), that if a European patent as granted contains subject-matter which extends beyond the content of the application as filed within the meaning of A 123(2) and which also limits the scope of protection conferred by the patent (for example, an inaccurate technical statement inconsistent with the totality of the disclosure of the patent), such a patent cannot be maintained in opposition proceedings unamended, because the ground for opposition under A 100(c) prejudices the maintenance of the patent. Nor can it be amended by deleting such limiting subject-matter from the claims, because such amendment would extend the protection conferred, which is prohibited by A 123(3). Such a patent can, therefore, only be maintained if there is a basis in the application as filed for replacing such subject-matter without violating A 123(3), i.e. for replacing the unallowable technical feature limiting the scope of protection conferred by the patent as granted with another technical feature which restricts the scope of the granted patent. Therefore, according to G 1/93, it is not allowable to replace a technical feature of a granted claim with another technical feature which causes the claim to extend to subject-matter which was not encompassed by the granted claim. In this respect decision T 108/91 has been clearly overruled by G 1/93. Moreover, the conclusions of the decision G 1/93 are also applicable to the present case wherein the technical feature “anti-scaling polymer (A) formed from copolymerizable sulfonated polymers” limiting the scope of the granted patent and being unallowable under A 123(2), was replaced by the technical feature “anti-scaling polymer (A) formed from copolymerizable sulfonated monomers” which does not restrict the scope of the granted patent but extends its scope to subject-matter not encompassed by the granted claims. [2.1.6] Therefore, the Board concludes that the patent according to the auxiliary request contravenes the requirements of A 123(3). […] The patent is revoked. Unfortunately, in Epoland some traps are inescapable. Perhaps a future revision of the EPC might find inspiration in a special remedy available to Monopoly players:
Should you wish to download the whole decision, just click here. To
have
a
look
at
the
file
wrapper,
NB: The blog du droit européen des brevets has also published a post on this topic, here.
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click
here.
T 892/08 – Arbitrary Selection, Again
K’s Law – The ebook
T 892/08 – Arbitrary Selection, Again 22 Jan 2011
The patent proprietor appealed against the decision of the Opposition Division (OD) to revoke its patent. Claim 1 on file read: A detergent granule or tablet comprising an anionic surfactant system which comprises an anionic sulphate surfactant and an anionic suphonate surfactant and other detergent active ingredients, the granule or tablet comprising at least a first and a second particulate component and optionally a binding agent, characterised in that the ratio of anionic sulphate surfactant to anionic sulphonate surfactant in the particulate components and, when present, in the binding agent, is less than 1:4 or more than 4:1, or even less than 1:5 or more than 5:1; and in that the first particulate component comprises an anionic sulphonate surfactant and a waterinsoluble builder material, wherein the ratio of the anionic sulphonate surfactant to the waterinsoluble builder material in the component is less than 1:6 or more than 6:1; and in that the second particulate component comprises an anionic sulphate surfactant and an inorganic salt, wherein either (a) the ratio of the anionic sulphate surfactant to the inorganic salt in the component is less than 1:5 or more than 5:1; or (b) the detergent granule or tablet comprises a polymeric builder material, provided that when the polymeric builder material is present in a particulate component or binding agent comprising an anionic sulphate or even any anionic surfactant, the ratio of the anionic surfactant or anionic sulphate surfactant to polymeric builder material is less than 1:4 or more than 3:1. The Board finds the claim to be novel but to lack inventive step: [1.6] The Board notes the undisputable fact that, as extensively discussed by the [opponent] already in its written reply to the grounds of appeal, the examples in document D5 and D7 disclose non-homogeneous detergent granules made from multi-component particulates whose ingredients are present at the same or at about the same amount ratios as those defined in claim 1 under consideration. Hence, the Board finds that the skilled person, starting from the prior art of example 1 of document D4, and aiming at alternative ways to put into practice the technical teaching of this citation (i.e. to avoid intimate mixing of sulphate and sulphonate) would arrive at the subject-matter of present claim 1 without exercising any inventive ingenuity, by just arbitrarily selecting among the other particulate streams that have already been used for producing nonhomogeneous detergent granules in which sulphate and sulphonate are present in distinct phases within the granules, the multi-component particulates used in the examples of document D5, or of document D7 or slight modifications thereof. [1.7] The [patent proprietor] has also argued that, in case the Board found that the objective technical problem solved consisted in the provision of an alternative, the claimed invention was still inventive over document D4 because this latter gives no motivation to the skilled person to include water-insoluble builder materials and inorganic salts into the surfactant ingredients in the manner required by claim 1; therefore, while the skilled person could make such a selection it was unfounded to state that he would. It referred to the Case Law of the Boards of Appeal such as T 2/83, T 9/84 and T 7/86 that would substantiate that even if a skilled man could (rather than would) make a selection, this did not render that selection obvious. The Board finds that the cited Case Law (whereby the decision indicated as “T 9/84” appears to be that of case T 90/84) only addresses situations in which the skilled person is expecting some improvement or advantage by means of the selection (see T 2/83 [7]; T 90/84 [9] and T 7/86 [6.6]). Therefore, these decisions are not applicable to the present case relating to the provision of an alternative only. The Board considers instead relevant in the present case the established Case Law that, when the technical problem is simply that of providing a further composition of matter or a further method, i.e. simply that of providing an alternative to the prior art, any feature or combination of features already conventional for that sort of composition of matter or method represents an equally suggested or obvious solution to the posed problem.
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T 892/08 – Arbitrary Selection, Again
K’s Law – The ebook
Indeed, the Boards have repeatedly established that the simple act of arbitrarily selecting one among equally obvious alternative variations is deprived of any inventive character (see e.g. T 939/92 [2.5.3] or T 311/95 [2.5.7]). Hence, even if the skilled person “could” also have taken into consideration other conventional modifications of the prior art, the existence of such other obvious solutions does not render inventive the one leading to the presently claimed subject-matter. [1.8] Thus, the Board concludes that the subject-matter of claim 1 of the sole request of the [patent proprietor] does not involve an inventive step vis-à-vis the prior art. Hence, this request is found not allowable in view of A 56. Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here. For a similar decision, click here.
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T 314/06 – Let Not Man Put Asunder …
K’s Law – The ebook
T 314/06 – Let Not Man Put Asunder … 21 Jan 2011
… what the application hath joined together. This is, in a nutshell, what the present decision has to say on the subject of a divisional application which had been refused by the Examining Division (ED) on the ground of a violation of A 76(1), second sentence, EPC 1973. It also contains the correction of a surprising faux pas of the ED and a noteworthy statement on a broad statement intended to create a basis for specific combinations of the disclosed features. NB: All references to EPC articles refer to the EPC 1973. [4] According to A 76(1), second sentence, a European divisional application “may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed”. […] [5] According to the established jurisprudence of the boards of appeal it is a necessary and sufficient condition for a divisional application to comply with A 76(1), second sentence, that anything disclosed in the divisional application must be directly and unambiguously derivable from what is disclosed in the earlier application as filed (see G 1/06 [order]). [6] In the present decision according to the state of the file, the ED argued that in order to comply with A 76(1), second sentence, the claims of a divisional application should be derivable from the claims of the earlier application, not merely from the description of the earlier application as filed. The ED based its reasoning in particular on considerations regarding the legal security of third parties. [7] The board does not agree with the ED’s interpretation of A 76(1), second sentence, EPC 1973. The Enlarged Board of Appeal (EBA) explained in decision G 1/06 [5.3;9.2] why the legal security of third parties is sufficiently protected when A 76(1), second sentence, is interpreted as referring to the whole technical content of the earlier application as filed, rather than only to the claimed subject-matter of the earlier application as filed. [8] Hence the relevant question in the present case is not, as argued by the ED, whether the subject-matter of claims 1 and 4 of the present application could be derived from the claims of the earlier application as filed, but, as argued by the appellant, whether the subject-matter of claims 1 and 4 was directly and unambiguously derivable from the whole technical content of the earlier application as filed. Disclosure of the earlier application as filed [9.1] Disclosure of the claims Independent claim 1 of the earlier application as filed reads as follows: “A method for calibrating a printing device, comprising the steps of: - printing by said printing device a first wedge (10, 11, 12, 13); - printing by said printing device a second wedge (10, 11, 12, 13), different from said first wedge (10, 11, 12, 13); - determining for at least one patch (21) of said first wedge (10, 11, 12, 13) a first magnitude of a first quantity, wherein said first quantity is selected from the group of a psychophysical quantity and a psychovisual quantity; - using said first magnitude in calibrating said printing device; characterised in that the method further comprises the steps of: - determining for at least one patch of said second wedge (10, 11, 12, 13) a second magnitude of a second quantity, wherein said second quantity is different from said first quantity; - using said second magnitude in calibrating said printing device.” Independent claim 9 of the earlier application as filed is directed at a system having features essentially corresponding to the steps of the above method of claim 1. Hence both independent claims 1 and 9 of the earlier application relate to a calibration using a first quantity selected from the group of a psychophysical quantity and a psychovisual quantity, and a second quantity different from said first quantity. 2511 | 3398
T 314/06 – Let Not Man Put Asunder …
K’s Law – The ebook
The features of the method of claim 1 according to the present divisional application are found only in claim 7, dependent on claim 1, of the earlier application as filed. Accordingly, it can be concluded from the above that the claims of the earlier application disclose the features of claim 1 of the present divisional application only in combination with the features of claim 1 of earlier application, i.e. as a further refinement of the invention claimed in claim 1 of the earlier application. The above conclusion is not disputed by the appellant. However, the disclosure of the remaining parts of the earlier application as filed, i.e. the description and drawings, must also be considered. Disclosure of the description and drawings of the earlier application as filed “Objects of the Invention” section [9.2] The section of the description entitled “Objects of the invention” […] defines the objects of the invention as follows: - to provide a calibration method and a system therefor that take into account changes of characteristics of the printing system; - to provide a calibration method and a system therefor that are robust with respect to printer instability. “Summary of the Invention” section The section entitled “Summary of the invention” […] starts […] by stating that “The above mentioned objects are realised by a method and a system in accordance with the present invention as claimed in the independent claims. The dependent claims set out preferred embodiments”. In the remainder of the “Summary of the invention” section […] except paragraph [0045] discussed in the next paragraph below, the invention is presented as relating to a calibration method or system using a first quantity selected from the group of a psychophysical quantity and a psychovisual quantity, and a second quantity different from said first quantity, i.e. as relating to subject-matter corresponding to the method of claim 1 and to the system of claim 9 of the earlier application as filed. Importantly, the “Summary of the invention” section does not disclose any of the main features of dependent claim 7 of the earlier application as filed, i.e. the mapping of a first value for printing a 100% patch to a second smaller value. In other words, the “Summary of the invention” section, paragraph [0045] excepted, consistently presents the invention as being what is claimed in independent claims 1 and 9, and does not present the features of claim 7 of the earlier application as filed as an independent invention. There is however also paragraph [0045] in the “Summary of the invention” section which reads: “As will become apparent from the following description and drawings, some of the disclosed embodiments do not require all the features of the invention as claimed in the independent claims; some of these disclosed embodiments may be the subject of a divisional application of the present patent application.” Paragraph [0045], however, does not indicate which features of the invention are not required and for which embodiments. It is thus left open whether or not the expression “some of the disclosed embodiments” was meant to include the third embodiment. The board considers that the broad statement of paragraph [0045] does not by itself render any specific combination of features from the disclosed embodiments directly and unambiguously derivable as a separate invention. “Detailed Description of the Invention” section This section […] discloses four embodiments of the invention. The embodiment comprising the features in claim 1 of the present divisional application and in claim 7 of the earlier application as filed is the third embodiment. The description of the third embodiment in […] the earlier application as filed does not contain any statement making it unambiguously clear that the third embodiment was meant to be more than just an embodiment of the invention. 2512 | 3398
T 314/06 – Let Not Man Put Asunder …
K’s Law – The ebook
The third embodiment is also mentioned in [a passage] where it is stated that the mapping of a first value for printing a 100% patch to a second smaller value, which is specific to the third embodiment, could preferably be applied as a first step before carrying out, as a second step, a calibration method according to claim 1 of the earlier application as filed. However, whereas the first step is described as optional […], there is, by way of contrast, no indication in these two paragraphs that the second step might be optional. [Two other paragraphs] which also mention the third embodiment, do not provide such an indication either. Thus, summarising, the disclosure of the description and drawings is consistent with the disclosure of the claims of the earlier application as filed in presenting the subject-matter of claim 1 of the present divisional application, not as a separate invention, but as features which must be taken in combination with the features of claim 1 of the earlier application as filed. Thus the subject-matter of present claim 1 is not directly and unambiguously derivable from the earlier application. The [applicant’s] arguments [10] The appellant’s arguments have been summarised and listed as (a) to (g) […]. NB : Most of these arguments have already been dealt with above or are not really relevant to the case. Argument (g) is more interesting: (g) In a similar situation in decision T 211/95 [4.3.3;4.4], the board held that it was clear to the person skilled in the art that the earlier application contained two different teachings, the two teachings each pertaining to a different problem, and realised by different, independent technical features. Thus, the claimed invention of the earlier application solved a first problem ([4.1]) and the claimed invention of the divisional application solved a second problem ([4.2]), different from the first one. The two teachings were technically unconnected and could each be claimed separately. The skilled person would clearly see that the set of features according to the subjectmatter claimed in the parent application was not essential to the subject-matter claimed in the divisional application. In the present case, the invention of claim 1 of the present divisional application solves the problem of […] “a printing device that is not stable due to the fact that the maximum amount of marking particles, that the device applies to the receiving substrate, changes over time for one or more colorants”, whereas the invention of claim 1 of the earlier application pertains to a calibration method that incorporates characteristics of the human visual system and wherein the quantities that are used to calibrate the different colorants of the printing device are optimally chosen […]. Hence the two inventions in the earlier application are based on two unconnected teachings and solved by different, independent technical features. For the reasons underlying T 211/95, the two inventions should be allowed to be claimed separately. Regarding argument (g), based on decision T 211/95, the present board reaffirms that the necessary and sufficient condition established by the case law of the boards of appeal, in particular by the EBA (see, for instance, G 1/06 [order]), for deciding whether a divisional application meets the requirement of A 76(1), second sentence, is that anything disclosed in the divisional application must be directly and unambiguously derivable from what is disclosed in the earlier application as filed. This strict criterion is the same as is applied for determining whether a claimed subject-matter is novel with respect to a prior art disclosure. In decision T 211/95, the board reached the conclusion that the earlier application as filed contained two separate inventions, even though only one of them was claimed. In order to reach this conclusion, the board took into account the whole disclosure of the earlier application as filed, including the problems and teachings of the two inventions, and came to the conclusion that the two inventions were technically unconnected and could be claimed separately. The present board understands the board’s reasoning in T 211/95 as being that the requirement of A 76(1), second sentence, was complied with because it was implicit from the whole disclosure of the earlier application as filed that there were two separate inventions which could be claimed separately. This is apparent from the repeated reference in T 211/95 to the “technical teachings” (“technische Lehren”) contained in the earlier application, which were considered as pertaining to different problems and independent technical features for the solution of the problems. In other words, the board in T 211/95, based on the different facts of that case, held that the whole disclosure of the earlier application as filed contained at least implicitly two separate inventions.
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T 314/06 – Let Not Man Put Asunder …
K’s Law – The ebook
In the present case, the board explained […] why the whole disclosure of the earlier application as filed does not present the subject-matter of claim 1 of the present divisional application as a separate invention. Moreover, the technical teachings in the present case, taking particular account of underlying problems and the direct and unambiguous disclosure of inventions solving these problems, do not change the board’s conclusion for the following reasons. The third embodiment deals with cases where the maximum amount of marking particles changes over time for one or more colorants […]. The earlier application […] explains that a calibration method using densities and dot gain does not work in this case. By contrast, the calibration method of the third embodiment is said to compensate for this effect […]. The board understands this to mean that the changes over time are compensated by the calibration method of the invention including the maximum amount (100 % patch), whereas the mapping as now claimed is merely a possible solution to the setting of the 100 % patch which is applied to the calibration curve in the beginning (the standard state) before any changes occur which are then compensated by the calibration method of the invention. This has the effect that, for a specific change (chroma decreasing over time), even the 100 % patch may be compensated by the calibration method of the invention (by increasing the amount of colorants beyond the setting in the beginning), and printing of the 100 % patch remains stable […]. This understanding is confirmed by the last nine words of claim 7 of the earlier application (“when said printing device comes fresh from the factory”). Conclusion [11 For the above reasons, the board concludes that the present divisional application does not meet the requirement of A 76(1), second sentence. Hence, the appealed decision cannot be set aside. […] The appeal is dismissed. Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here.
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T 1926/09 – No Spanking Here
K’s Law – The ebook
T 1926/09 – No Spanking Here 20 Jan 2011
From time to time, “appellants” who have not filed a notice of appeal in due time try to argue that the payment of the appeal fee should be sufficient to establish that an appeal had been filed. This attempt invariably fails, but it sometimes gives the boards an opportunity to make a point or two. [1] According to A 108, notice of appeal must be filed within two months of notification of the decision. The applicant does not dispute that no notice of appeal was filed in due time. [2] The applicant however contends that a de facto notice of appeal existed in that the appeal fee was paid in time, thus clearly indicating that an appeal was being made which could only have been directed against the decision of 23 April 2009. [3] The board cannot accept this argument. It was already decided in J 19/90 [2.1.2 to 2.1.4] that merely paying the fee for appeal does not constitute a valid lodging of an appeal. According to said decision, this applies even if the object of the payment was indicated as being a “fee for appeal” relating to an identified patent application and the form for payment of fees and costs was used. This decision was confirmed in subsequent decisions of the boards of appeal, for example T 445/98 [3] and T 371/92 [3.2, 3.4-5]. Furthermore, the board draws attention to decision T 778/00 [2.1,2,4]. This decision again confirms that the mere appeal-fee payment is no substitute for the procedural act of filing the appeal as prescribed in A 108, first sentence, in conjunction with R 99(1)(b) and (c) (R 64(a) and (b) EPC 1973), because the appeal fee could have been paid by the representative before the party concerned has decided whether or not an appeal should be filed. [4] The applicant argues that decisions J 19/90 and T 445/98 were both taken in opposition cases rather than ex parte proceedings, where different considerations in the exercise of any discretion should apply. However, the present board is of the opinion that it is in the public interest in both ex parte and inter partes proceedings to be informed with certainty about the applicant’s intention of challenging a first-instance decision. Consequently, there can be no discretion regarding the procedural acts prescribed in A 106 to A 108 in conjunction with R 99 for the filing of an appeal. Therefore, the present board does not see any valid ground to depart from the case law cited. [5] The applicant also raised the issue of “natural justice”. It was argued that if a patent application was refused without appeal, the applicant was being unjustifiably “punished” for a perceived “offence”. The applicant was thus forced to seek protection by filing a divisional application of the parent application of the current case which was still pending. It was the applicant’s understanding that filing such divisional applications was not considered by the EPO to be in the public interest and might even constitute an abuse. Therefore, it was unacceptable and improper for the EPO to infer an understanding of the EPC which promoted such a course of action. The present board wishes to observe the following. The board is far from “punishing” anybody for “offences” perceived or real, but is bound to administer the law as laid down in the Convention. Considerations relating to the filing of a divisional application are not relevant for the present case and cannot, therefore, be taken into account by the board. [6] For these reasons, the appeal must be rejected as inadmissible (R 101(1)).
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T 1926/09 – No Spanking Here
K’s Law – The ebook
Note that the Board found the appeal to be inadmissible and, therefore, refused to reimburse the appeal fee. One might have argued that the appeal should have been deemed not to have been filed, which would have had the consequence that the appeal fee was to be refunded: “Reimbursement of appeal fees is possible in a case in which no notice of appeal is filed or deemed to have been filed within the time limit prescribed by A 108, so that no appeal has ever existed.” (T 41/82 [1]) Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here. NB: This decision was also reported here.
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T 137/09 – Waking Up Late
K’s Law – The ebook
T 137/09 – Waking Up Late 19 Jan 2011
The present decision, the knowledge of which I owe to fellow EC member Manolis, deals with an appeal against the revocation of the opposed patent by the Opposition Division (OD). The admissibility of the appeal was questioned by the opponents on three grounds: (1) The patent proprietor had filed with the grounds of appeal only new requests which were different from the one upon which it was decided at first instance and had not submitted any statement that the decision under appeal was incorrect; moreover, even though the notice of appeal mentioned as request the maintenance of the patent as granted, this request had not been maintained in the statement of the grounds of appeal; therefore, the statement of the grounds of appeal did not contain any discussion of the decision under appeal and was inadmissible. (2) The patent proprietor had not attempted during opposition proceedings to overcome the objections raised by the opponents even knowing the OD’s opinion on the only request pending and had not even replied in writing to the objections raised; therefore, his appeal should have been limited to defend the only request pending before the department of first instance (reference was made to G 9/91). (3) Since the objections which had led to the revocation of the patent were known to the patent proprietor at least from the summons to the oral proceedings (OPs) before the first instance, he could have submitted amended claims already during the first instance proceedings; since he had submitted new requests for the first time with the grounds of appeal and these requests did not originate from objections which became known for the first time from the decision under appeal, the appeal was inadmissible as found in the similar case T 39/05. One of the opponents submitted also that a question had to be referred to the Enlarged Board (EBA) if the present appeal, contrary to T 39/05, would have been found admissible by the Board. [1.1] Since the patent in suit was revoked by the OD the patent proprietor was adversely affected by the decision of the department of first instance and was entitled under A 107 to file an appeal against this decision (see e.g. T 457/89 [1]). The requirements for the admissibility of the appeal are governed by A 108 and R 99. It has not been disputed that the patent proprietor’s appeal complies with the requirements of A 108, first and second sentence, and R 99(1)(a),(b) and (c) and R 99(3) and that a statement of the grounds of appeal was filed within four months of notification of the decision as required by A 108, third sentence. The Board has also no doubt that the appeal complies with these requirements. [1.2] A 108, third sentence, requires also that the statement of the grounds of appeal is filed in accordance with the Implementing Regulations. In particular, R 99(2) specifies that the statement of the grounds of appeal shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based. It was not disputed that all the requests submitted with the statement of the grounds of appeal, which requests are different from the only request pending before the department of first instance, i.e. the rejection of the oppositions, intend to overcome the novelty objection based on the disclosure of document D20b which led to the revocation of the patent; moreover, the statement of the grounds of appeal contains a discussion of the novelty of the claims of the new requests with respect to the disclosure of document D20b and of the other documents cited during the opposition proceedings. Therefore, even though the statement of the grounds of appeal does not discuss explicitly the reasoning of the decision under appeal with respect to the then pending only request, it is immediately apparent that
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K’s Law – The ebook
the new requests try to overcome the objections of the department of first instance contained in the decision under appeal and establish therewith a causal link with the decision; the statement of the grounds of appeal indicates the reasons for setting aside the decision impugned; the statement of the grounds of appeal indicates the facts and evidence on which the appeal is based.
Therefore, the appeal complies in the Board’s view also with the requirements of A 108, third sentence, and R 99(2) (see also Case Law of the Boards of Appeal VII.E.7.6.2(a) on pages 856 and 857 as well as VII.E.7.6.2(d) on pages 858-859 and decisions T 162/97 [1.2-3] and T 934/02 [headnote 1;2]). Moreover, the above finding is not contrary to the decision G 9/91 [18], which states that “The purpose of the appeal procedure inter partes is mainly to give the losing party the possibility of challenging the decision of the OD on its merits. It is not in conformity with this purpose to consider grounds for opposition on which the decision of the OD has not been based … This approach also reduces the procedural uncertainty for patentees having otherwise to face unforeseeable complications at a very late stage of the proceedings, putting at risk the revocation of the patent, which means an irrevocable loss of rights.” In fact, this decision specifies that to challenge the decision under appeal on its merits is the main purpose of the appeal but not its only purpose and relates in particular to the introduction in appeal of fresh grounds for opposition which would cause an unacceptable procedural uncertainty for patentees, i.e. it relates in particular to a legal situation very different from the present one (see also T 162/97 [1.2, last §]). Furthermore, G 9/91 [19], by stating that a patent amended during appeal proceedings is to be fully examined as to its compatibility with the requirements of the EPC, confirms implicitly that new requests based on amended claims do not render automatically the appeal inadmissible and that the patentee cannot be bound to defend its patent only on the basis of requests submitted already before the department of first instance. Therefore, the decision G 9/91 confirms implicitly also that an appeal based only on new requests can be admissible. [1.3] As regards the [opponents’] submissions that during the opposition proceedings the [patent proprietor] had not replied to the objections raised by the opponents and by the OD and had not tried to overcome these objections by filing amended claims, the Board remarks that there are no requirements in the EPC which oblige the patent proprietor to submit any argument during opposition proceedings. Therefore, the patent proprietor’s behaviour during opposition proceedings cannot have any bearing on the admissibility of its appeal which is governed only by A 108 and R 99 (see e.g. T 457/89 [1]). [1.4] Moreover, the fact that the [patent proprietor] had requested in its notice of appeal the maintenance of the patent as granted and that the grounds of appeal were based instead only on amended sets of claims has also no bearing on the admissibility of the appeal since, according to R 99(1)(b) and (c), the notice of appeal has to indicate which decision is impugned and a request defining the subject of the appeal, i.e. the extent to which amendment or cancellation of the decision is requested, whilst the appeal’s requests for the maintenance of the patent in a particular form have to be defined according to R 99(2) in the grounds of appeal (see T 358/08 [catchwords 1 and 2]). This has been complied with in the present case since the notice of appeal specified the request to set aside the decision under appeal whilst the grounds of appeal clarified in which form the patent was requested to be maintained. [1.5] According to the [opponents] it was decided in T 39/05 [1.1.2] that an appeal should not be admissible if the grounds of appeal relate to new requests which do not originate from objections which became known for the first time in the reasoning of the decision under appeal. Therefore, according to the [opponents], this decision would apply to the present case in which the objection of lack of novelty over document D20b which had led to the revocation of the patent was already known to the patent proprietor at least from the summons to the OPs before the department of first instance. The Board remarks that the reasoning for the inadmissibility of the appeal in case T 39/05 consists of two distinct parts. The first part of the decision, including said point [1.1.2], concerns the entitlement of the patent proprietor to file an appeal as governed by A 107; in particular, it is specified in the decision that the Boards of Appeal of the EPO had already found admissible appeals based only on new requests (see point [1.1.1] which also refers to T 162/97 discussed above); moreover, it is stated that the appeal in the specific case could have been considered to be possibly admissible if the new requests would have originated from objections become known to the patent proprietor for the first time in the reasoning of the decision under appeal (point 1.1.2). 2518 | 3398
T 137/09 – Waking Up Late
K’s Law – The ebook
However, the Board notes that it is clear from the last full paragraph of point [1.1.2] that this decision concerns in particular the filing of requests based on claims having a different category from that of the claims discussed before the department of first instance; moreover, since it could not be deduced from these new requests which objections raised before the department of first instance by the opponents would be overcome, such new requests could not be considered to have been filed with the intention to overcome the objections upon which the decision under appeal was based. Therefore, case T 39/05 concerns a legal situation different from the present one in which the requests submitted during appeal are in the same category as the only request pending before the department of first instance and are to be considered a reply to the novelty objection on which the decision is based. The Board thus finds that at least this part of the decision T 39/05, concerning a different legal situation, is not applicable to the present case. The second part of this decision, relating to the requirements of A 108(3), third sentence and therefore also to those of R 99(2), states the necessity of filing a statement of the grounds of appeal according to the Implementing Regulations and the necessity of the new requests to contain a causal link with the decision under appeal (see points [1.2.1] and [1.2.2]), requirements which have been complied with in the present case as explained in point [1.2] above. Therefore, also this decision confirms the finding of the Board that the present appeal complies with all the requirements of A 108 and R 99 and is admissible. [1.6] Under Article 112(1) EPC it is within the discretion of the Boards of Appeal to refer a case to the EBA if this appears necessary for ensuring uniform application of the law or a point of law of fundamental importance arises. Since in the present case the Board’s decision on the admissibility of the appeal is not contrary to T 39/05, as explained above, and thus a point of law of fundamental importance does not arise, there is no necessity to refer [the opponent’s] question to the EBA for ensuring uniform application of the law. [The opponent’s] request to refer to the EBA thus is to be refused. Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here.
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T 555/07 – Do It Differently
K’s Law – The ebook
T 555/07 – Do It Differently 18 Jan 2011
It is not advisable to file unannounced experimental evidence just one month before oral proceedings (OPs), because in most cases the Board will refuse to take such evidence into account. This is what happened in the present case. The case is interesting because the OPs were finally postponed (due to the general air traffic breakdown following the eruption of Eyjafjallajökull in Iceland) and because the patent proprietor had some good reasons for filing the results belatedly. [1.1] According to Article 13(1) RPBA […], an amendment of the party’s case after it has filed its grounds of appeal or its reply thereto may be admitted and considered at the Boards discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. Article 13(3) RPBA states that amendments made after oral proceedings (OPs) have been arranged shall not be admitted if they raise issues which the Board or the other party cannot reasonably be expected to deal with without adjournment of the OPs. [1.2] The Board notes the following facts, undisputed by the [patent proprietor]: - the new data have been submitted by the [patent proprietor] almost three years after the [opponent’s] statement of the grounds of appeal and only about one month before the initially arranged date for OPs before the Board of 21 April 2010 […]; - these data aim at demonstrating an advantageous technical effect of the CW method of the invention vis-à-vis the prior art disclosed in document D23, - the relevance of this citation in respect of inventive step, although not expressly considered in the decision under appeal, was at least extensively discussed in the grounds of appeal, - after the grounds of appeal the [opponent] has made no further submission preceding (and, thus, possibly justifying) the filing of new experimental data, - the [patent proprietor] has not expressed in its reply to the grounds of appeal the intention to carry out experimental tests, nor has announced immediately after receiving the summons to OPs that experimental results were going to be filed before the hearing, - it was not possible for the [opponent] to verify the new data or to provide counter evidence in the few weeks comprised between the date of filing of these data and the date initially scheduled for OPs, or in the additional few weeks available in consequence of the postponement of the OPs from 21 April to 18 June 2010 due to unforeseeable force majeure. The Board concludes therefrom that the unannounced filing of the new data about one month before the initially arranged date for the OPs constitutes an amendment of the [patent proprietor’s] case that takes by surprise the Board and the [opponent] and that raises issues that this latter cannot reasonably be expected to deal with without adjournment of the hearing. [1.3] The Board finds irrelevant in this respect the [patent proprietor’s] argument that the [opponent] should have - in the [patent proprietor’s] opinion - either preventively requested in the grounds of appeal sufficient time for providing counter evidence in the hypothetical case that experimental data were subsequently filed by the [patent proprietor], or at least reacted to the filing of the new data on 19 March 2010 by requesting a postponement of the hearing. In the opinion of the Board, neither the presence or absence of a preventive generic declaration of intention in the grounds of appeal (to provide counter evidence to any experimental data possibly filed by the counterpart in the subsequent appeal proceedings) nor the [opponent’s] choice on how to react to the filing of the new data have any bearings on the question whether the unannounced filing of the new data about one month before the already arranged OPs takes by surprise the Board and the [opponent] and raises issues that these latter cannot reasonably be expected to deal with without adjournment of the hearing. Moreover, the Board finds the further submission of the [patent proprietor] that the main reason for the belated filing of the new data was the difficulty (also mentioned by the [opponent]) in obtaining some of the ingredients needed for replicating the examples of document D23, insufficient for rendering admissible the filing of previously unannounced experimental data. 2520 | 3398
T 555/07 – Do It Differently
K’s Law – The ebook
Indeed, even assuming that this difficulty was actually the sole reason for the delayed filing of the new data, still the [patent proprietor] should have acted differently in order to avoid taking by surprise the Board and the other party at such late stage of the appeal proceedings. For instance, it should have promptly informed the Board and the other party on the nature of the difficulty encountered and on the then ongoing attempts to overcome this difficulty. Moreover, when the needed ingredients had become available, the [patent proprietor] should have again promptly informed the Board and the [opponent] that experimental work was finally going to be started, possibly announcing also the expected date for the filing of the results. [1.4] Therefore, the Board has decided not to admit the new data into the appeal proceedings. Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here.
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T 1088/08 – Dangerous Percentages
K’s Law – The ebook
T 1088/08 – Dangerous Percentages 17 Jan 2011
The applicant appealed against the decision of the Examining Division to refuse its application. Claim 1 before the Board was drafted as follows: 1. Dietary food for use in the complementary dietary treatment of diabetes mellitus, comprising a lipid phase (Fettphase), wherein the composition in the lipid phase contains: (a) 10 to 30% of triglycerides of octanoic and/or decanoic acid (caprylic acid; C8:0 and/or capric acid; C10:0); (b) 20% to 60% of oleic acid; (c) 10 to 35% of linoleic acid; (d) 3 to 10% of α-linolenic acid. The Board raised a clarity objection. *** Translation from the German *** [3.1] The appellant is to be approved in that in the present case the objection of lack of clarity was first raised by the Board of appeal. However, this way of proceeding is consistent with the principle established by G 10/93 [headnotes] according to which the board can include requirements which the ED did not take into consideration in the proceedings if there is reason to believe that such a requirement has not been met. The appellant has been given sufficient opportunities to express its opinion in regard of the objection of lack of clarity raised by the Board, as the objections had already been raised in the written proceedings in the notifications dated March 24 and July 23, 2010. [3.2] In claim 1 the content of components (a) to (d) is given in “%”. The appellant has not contested that this indication as such leaves open whether this means percents by weight, percents by volume or mol percents. [3.2.1] The appellant has expressed the opinion that based on the indication of grams on page 12 and in the example of the application as filed, it was clear that the percentages in claim 1 have to be percents by weight. However, as already mentioned in T 1129/97 [2.1.2], the clarity requirement enshrined in A 84, as the EPO’s boards of appeal have consistently ruled, demands that the claims be clear per se for a person skilled in the art with general knowledge of the technical field in question, without the need to refer to the description of the patent in suit. As a consequence, the appellant’s argument based on the description cannot succeed. [3.2.2] It remains to be checked whether the skilled person, based on his general knowledge, would have understood the indication “%” in claim 1 to mean percent by weight. In this context the appellant referred to D13 […] where it is stated that the percentages in D13 refer to weight. D13 discloses guidelines (Leitsätze) for edible fats and oils. First it has to be stated that claim 1 does not necessarily contain edible fats or edible oils. Rather, claim 1 is very generally directed to dietary food comprising a lipid phase. Even the reference in the application as filed […] to olive, colza, canola and sunflower
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T 1088/08 – Dangerous Percentages
K’s Law – The ebook
oil as sources for the acids of the claimed lipid phase does not imply that those oils have to be contained in a composition according to the claims. Therefore, general knowledge that is possibly evidenced by D13 in the context of edible fats and oils cannot be taken into account for the interpretation of claim 1 that is not limited to edible fats and oils. Thus the appellant’s argument based on D13 cannot succeed. Independently, the appellant’s argumentation is not consistent with the publication referred to as D9 in the examination proceedings, which concerns polyunsaturated fatty acids found in edible oils of maritime origin. In particular, Table 1 of this document shows unambiguously that fatty acid contents of fish and seal oils are also given in mol percents. Therefore, even if the lipid phase referred to in claim 1 were limited to edible fats and edible oils, the percentages in claim 1 would not necessarily refer to percents by weight. The appellant has also pointed out that the skilled person would read percentages as percents by weight if the final product as claimed was a (semi)solid product such as for example margarine or fatty spread (Streichfett). Even if this argument were correct, it cannot apply to the whole extent of claim 1 because this claim is not limited to margarine or fatty spread. Thus this argument of the appellant is not persuasive either. From the above it follows that it is not clear to the skilled person having general knowledge whether the percentages in claim 1 refer to percents by weight, percents by volume or mol percents. However, depending on [the nature of the percentage], claim 1 covers different contents of components (a) to (d). Thus the contents of these components in the composition of claim 1 are unclear. The appeal was dismissed. Should you wish to download the whole decision (in German), just click here. To have a look at the file wrapper, click here.
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T 1931/07 – Vae absentibus
K’s Law – The ebook
T 1931/07 – Vae absentibus 15 Jan 2011
In a comment to a recent post, a commentator mentioned the Examiner’s fear that applicants may not show at oral proceedings (OPs). The Boards do not have the same problem, because they have Article 15(3) RPBA, which is indeed very powerful. [1.1] In the OPs before the Board the [opponent] presented a further objection with regard to the main request: in the course of the discussion it turned out that Claim 1 was considered to extend the protection conferred. [1.2] The Board had to clarify the question whether the objection raised for the first time in the OPs was to be admitted, in particular since the [patent proprietor], although duly summoned, was not present at the said proceedings. [1.3] Article 15(3) RPBA […] reads as follows: “The Board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party duly summoned who may then be treated as relying only on its written case.” [1.4] Furthermore, it is common practice at the EPO and in particular at the Boards of Appeal to examine amended claims with regard to the requirements of A 123(2) and (3) (see T 341/92, [2.3.4]; also T 915/02 [3.3]). The [patent proprietor] must therefore have been aware that such an examination would take place and that further objection could be raised in the OPs, all the more given the fact that with regard to the amended wording of the main request the [patent proprietor] should have been conscious that the extension of the protection conferred would arise from the comparison of the wording of the respective claim according to the patent as granted and the corresponding claim of the main request. [1.5] By not reacting to the objections already raised in the annex to the summons and in particular by not attending the OPs the [patent proprietor] consciously decided not to present (further) comments. [1.6] Thus, the Board decided to admit the objection with regard to A 123(3) of Claim 1 of the main request. This objection proved fatal to the main request on file. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here. NB: This decision has already been reported on Le blog du droit européen des brevets.
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T 520/07 – Appeal = New Deal
K’s Law – The ebook
T 520/07 – Appeal = New Deal 14 Jan 2011
** Translated from the German ** [2] In its decision G 4/95 the Enlarged Board of appeal (EBA) found that there is no legal right to oral submissions by an accompanying person in oral proceedings (OPs) in opposition and opposition appeal proceedings. Rather, such oral submissions can only be made with the agreement and within the discretion of the EPO. In the exercise of this discretion, the criteria developed by the EBA have to be taken into account. If a request is made at the OPs, it should in the absence of exceptional circumstances be refused unless each opposing party agrees to the making of the oral submissions requested. (G 4/95 [10]). In the present case the written submission dated January 16, 2009, only indicated that the employee of the [patent proprietor] [acting as] professional representative would represent the [patent proprietor] in the OPs [and that he would be] accompanied by Mr. S., and that the professional representative would make his submissions in the French language. The written submission did not contain a request for the accompanying person to present oral submissions before the Board. This request was made for the first time during the OPs before the Board. The Board is of the opinion that there are no exceptional circumstances which would justify an admission of the oral submissions. In particular the Board does not share the opinion of the [patent proprietor] that its request could not take the [opponent] by surprise because the same accompanying person already made oral submissions during the OPs before the Opposition Division (OD). Appeal proceedings are wholly separate and independent from the first instance proceedings. (T 34/90). Consequently, requests that have been made during first instance proceedings are not effective in subsequent appeal proceedings but have to be made during the Board of appeal (T 34/90 and T 501/92). Therefore, it cannot be argued that the [opponent] should not have been surprised by oral submissions of the same accompanying person. Rather, it had the right to expect that for such oral submissions to be allowed during the OPs before the Board there would have to be another request taking into account the conditions laid down in G 4/95. As the [opponent] has not accepted these oral submissions, the [patent proprietor’s] request that oral submissions of an accompanying person be admitted had to be dismissed. Should you wish to download the whole decision (in German), just click here. If you want to have a look at the file wrapper, click here.
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T 2274/08 – Milky Ways
K’s Law – The ebook
T 2274/08 – Milky Ways 13 Jan 2011
Claim 1 of the opposed patent differs as follows from claim 1 as filed (click to enlarge):
In its appeal against the decision of the Opposition Division (OD) to reject the opposition, the opponent pointed out that this amendment violated A 123(2). *** Translated from the German *** [2.1] During the examining proceedings the feature “flowing out via the floor region” has been inserted into the independent claims. This process feature is not literally disclosed in the application as originally filed. However, from Figures 2f, 2g and 2h it is apparent that the milk leaves the measuring chamber flowing out via the floor region. From the illustration of the embodiment, the reader skilled in the art can see that the floor region of the measuring chamber consists in a wall having no holes or openings, so that the milk that is in the measuring chamber can only leave the measuring chamber by flowing over the floor region without traversing it.
The yellow highlighting has been added by me. [2.2] The opponent has pointed out that although this process feature could be extracted from the figures, it represented an inadmissible intermediate generalisation because it had been taken in isolation from the other features disclosed in combination by those figures. [2.3] According to the established case law of the Boards of appeal, this is only allowable if the corresponding feature has not been disclosed with the other feature such that it cannot be separated from them, i.e. in the
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T 2274/08 – Milky Ways
K’s Law – The ebook
absence of any clearly recognisable functional or structural relationship among said features (see, for example, T 1067/97 [2.1.3]). [2.4] In the present case, Figures 2f to 2h disclose not only the feature objected to but also fill level sensors, a closing body and a discharge edge. The fact that the milk in the measuring chamber can leave the measuring chamber “flowing out via the floor region” only depends on the structure of the floor region, which has no holes or openings. Therefore, there is no relationship between this process feature, the fill level sensors, the closing body and the discharge edge. As a consequence, the amendments that have been carried out in the independent claims do not violate the requirements of A 100(c). Should you wish to download the whole document (in German), just click here. To have a look at the file wrapper, click here. Related decisions can be found here and here.
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T 9/08 – Documentum Ex Machina
K’s Law – The ebook
T 9/08 – Documentum Ex Machina 12 Jan 2011
This case is interesting because the Board raised a substantial procedural violation of its own motion and remitted the case to the first instance although none of the parties had requested such a remittal. [5.1] According to A 113(1) the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. [5.2] In the present case the contested decision found that the subject-matter of claim 1 as granted involved an inventive step. Under the heading “Inventive step (A 56)” the Opposition Division (OD) gave […] its reasoning on inventive step. It stated that with regard to the problem-solution approach “[t]he closest prior art is identified in a fluorescent polymer having one or more repeating units of formula 1 and a molecular weight comprised within the claimed range. This polymer is described for example in document EP-A- 0 964 045”. Thus, document EP-A-0 964 045 was clearly identified as representing the closest state of the art and starting point for the assessment of inventive step in the decision under appeal. [5.3] The Board, after having inspected the content of the file, noted in its communication pursuant to Article 15 RPBA that the closest prior art document EP-A-0 964 045 had not been introduced into the proceedings before the department of first instance, but was mentioned for the first time in the written decision under appeal. A comparison of the minutes and the decision under appeal further revealed that at the oral proceedings (OPs) before the OD held on 16 October 2007 the parties relied on the arguments in their written submissions […], so that even at the OPs before the OD it had not been discussed with the Parties that the closest state of the art in the assessment of inventive step was this fresh document. Thus, in relying on a closest prior art document which had never been discussed with the parties, and which was cited for the first time in the written decision under appeal, the OD’s decision violated the parties’ right to be heard pursuant to A 113(1). [5.4] For the above reasons the Board holds that the OD’s handling of the case constitutes a substantial procedural violation which justifies the remittal of the case to the first instance for further prosecution. [5.5] The decision under appeal rejects the [opponent’s] objection against novelty in finding that the subjectmatter of the patent in suit according to the then pending claims was novel and that document D12 supporting that objection was not admitted into the proceedings before the OD. Therefore, the [opponent] in any case had to file an appeal so that the reimbursement of the appeal fee, which was not requested, is not equitable. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here. This decision was also reported on Laurent Teyssèdre’s blog. If your command of the French language is sufficient, you should definitely have a look at Laurent’s post as well as his readers’ comments (don’t miss the one reporting a - hopefully rare - case of renvoi during first instance proceedings).
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T 4/05 – Doubts Are Not Enough
K’s Law – The ebook
T 4/05 – Doubts Are Not Enough 11 Jan 2011
** Translated from the German ** [2.1] The [patent proprietor] pointed out that the opposition was inadmissible because the identity of the opponent could not be determined without any doubt. In the notice of opposition filed on July 8, 2002, the opponent is unambiguously identified as “3M Company” having the postal address “PO Box 33427, St Paul, Minnesota, 55133-3427, USA”. The trade name “3M Company” designates the opponent in an unambiguous way and does not leave any room for interpretation. [2.2] The [patent proprietor] submitted that the opposition had been filed in the name of the “3M Company” having the above postal address, but that the patent register entry of the opposed patent indicated that the opponent was the “Minnesota Mining and Manufacturing Company”. An extract of the patent register was filed as evidence together with the statement of grounds of appeal. Moreover, the power of attorney that was filed before the proceedings before the Board of appeal gave a different postal address and, therefore, also a different registered office (Firmensitz), i.e. “3M Center, Saint Paul, Minnesota 56144, USA”. Also, three companies (“Minnesota Mining and Manufacturing Company”, “3M Innovative Properties Company” and “3M Innovative Properties Company Office of Intellectual Property Counsel”) had the same postal address. Evidence for this was provided in the form of extracts from the patent register filed together with the statement of grounds of appeal. The use of different company names suggested that the designation “3M Company” was an acronym behind which several legal persons could be expected. Therefore, the real identity of the opponent at the time of filing the opposition was unclear. The [patent proprietor] also referred to decisions G 3/99, G 3/97 and G 4/88 as support for his argumentation. [2.3] However, it is not sufficient to submit doubts concerning the identity of an opponent in order to negate the admissibility of the opposition. What is needed are factual submissions together with cogent evidence that corroborate them. Nothing of that kind has been filed in the present case. The entry into the patent register, an extract of which has been filed by the [patent proprietor] has been made by the EPO alone and cannot be imputed to the opponent, irrespective of whether it identifies the opponent correctly or not. Therefore, this entry cannot affect its party status. The general power of attorney # 33692, issued on February 22, 2001, only concerns the powers of the professional representative but does not affect the party status of the opponent. Moreover, the professional representative is sufficiently authorised by the General Power filed by the 3M Company on September 12, 2005. The [patent proprietor] has not filed the extract from the commercial register which, according to its submissions during oral proceedings (OPs) before the Board, showed a different company name. Consequently, this cannot be considered as evidence showing that the opponent’s identity was unclear – as indeed the [patent proprietor] acknowledged at the OPs. The [patent proprietor’s] objection that two other companies were trading at the same address also has to fail because this is a mere observation and cannot affect the party status of the opponent, who had been unambiguously identified, in the proceedings. The decisions cited by the [patent proprietor] concern the party status in common oppositions (G 3/99), the transfer of an opposition to a third party (G 4/88) and the filing of an opposition by a straw man (G 3/97). Therefore, they deal with questions that are different from the present case and, consequently, are not relevant. For the reasons given above, the Board comes to the conclusion that the opposition complies with the requirements of A 99(1) EPC 1973 and R 55a) EPC 1973, which were in force at the time when the opposition was filed and, therefore, are to be applied (see T 1366/04 [1.2]).
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T 4/05 – Doubts Are Not Enough
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T 1049/07 – Licence To Delete
K’s Law – The ebook
T 1049/07 – Licence To Delete 10 Jan 2011
When a claim as granted contains a misleading feature, can you eliminate it without infringing A 123(3)? In the present case, such an amendment was found to comply with A 123. Claim 1 as granted read: 1. A substantially boron-free glass composition comprising the following by mole percent: 62-68% SiO2 / 2-6% Al2O3 / 10-16% Na2O / 0-6% K2O / 3-10% CaO / 0-8% MgO / 0-3% BaO / 2-6% ZnO / 02% TiO2 / 0-2% F2 wherein the total amount of Na2O and K 2O is less than 18 mol% and wherein the composition further contains Li2O in an amount no greater than 8 mol% and in an amount sufficient to render the HTV of the glass composition between about 1010°C (1850°F) and about 1204°C (2200°F), the liquidus temperature of the glass composition being at least 139°C (250°F) below said HTV, said HTV being defined as the temperature at which glass viscosity is 100 Pa•s (1000 poises). Claim 1 of the request as maintained by the Opposition Division (OD) read: 1. A substantially boron-free glass composition comprising the following by mole percent: 62-68% SiO2 / 2-6% Al2O3 / 10-16% Na2O / 0-6% K2O / 3-10% CaO / 0-8% MgO / 0-3% BaO / 2-6% ZnO / 02% TiO2 / 0-2% F2 wherein the total amount of Na2O and K2O is less than 18 mol% and wherein the composition further contains Li2O in an amount no greater than 8 mol%, the glass composition having an HTV of between about 1010°C (1850°F) and about 1204°C (2200°F), the liquidus temperature of the glass composition being at least 139°C (250°F) below said HTV, said HTV being defined as the temperature at which glass viscosity is 100 Pa.s (1000 poises). The opponent filed an appeal and pointed out that this claim violated A 123(3). The Board does not agree: [1.2] The [opponent] held claim 1 as maintained in the contested decision to contravene A 123(3). In this respect, it argued that the feature: “the composition further contains Li2O in an amount no greater than 8 mol% and in an amount sufficient to render the HTV of the glass composition between about 1010°C (1850°F) and about 1204°C (2200°F)” in granted claim 1 had been replaced in claim 1 as maintained in amended form by the following allegedly nonequivalent feature reading: “the composition further contains Li2O in an amount no greater than 8 mol%, the glass having an HTV of between about 1010°C (1850°F) and about 1204°C (2200°F)”. Consequently, claim 1 as maintained encompassed compositions which were not covered by claim 1 as granted, in particular compositions containing almost no Li2O and wherein the HTV parameter was regulated by other oxides such as Na2O. It argued in particular that in claim 1 as maintained the amount of Li2O could be chosen freely between 0% and 8 mol%, whereas in accordance with claim 1 as granted, the amount of Li2O was functionally linked to the achievement of an HTV in the claimed range. Hence, it had necessarily to exceed the lower limit of 0%. Consequently, claim 1 as granted excluded glass compositions having 0% Li2O, whereas the claim maintained by the opposition division allowed such compositions. The scope of protection conferred by the claims had thus been extended.
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T 1049/07 – Licence To Delete
K’s Law – The ebook
[1.3] The board does not share the [opponent’s] view for the following reasons. [1.3.1] According to A 123(3), “the European patent may not be amended in such a way as to extend the protection it confers”. Therefore, in assessing whether claim 1 at issue meets the requirements of A 123(3), the extent of protection conferred by claim 1 as granted has to be compared with that of claim 1 as maintained. [1.3.2] In the present case, it is observed that both claims under dispute (i.e. claim 1 as granted and as maintained) contain the feature “the composition further contains Li2O in an amount no greater than 8 mol%”. Although a lower limit is not explicitly stated in the claim(s), this feature clearly indicates that Li2O is a mandatory constituent. As a logical consequence, in both glass compositions claimed the lowest possible amount of Li2O cannot be zero, as alleged by the [opponent]. As regards the lowest possible amount of Li2O in claim 1 as maintained, the board - in the absence of any convincing counter-argument - accepts the respondent’s argument that this amount has to be set as being “above the analytical detection limit for Li2O”. In claim 1 as granted, the amount of Li2O is not only defined as being “no greater than 8 mol%” - as in claim 1 as maintained - but also as being “sufficient to render the HTV of the glass composition between about 1010°C (1850°F) and about 1204°C (2200°F)”. The board recognises that on reading this claim version, the skilled person might be misled to assume the presence of an exclusive functional link between the amount of Li2O in the glass composition and the HTV being between about 1010°C and about 1204°C. However, the study of the description - which in the present case is necessary for the detailed assessment of the extent of protection of this claim - reveals that no such link (or at least not an exclusive one) in fact exists, for the following reasons. Although paragraph [0027] of the patent in suit indicates that Li2O acts as a glass viscosity reducer, it can be seen from paragraphs [0023], [0024] and [0025] that Li2O is not unique. Other components, such as fluorine, TiO2, CaO and MgO, are also disclosed as having this property of reducing glass viscosity. Since Li2O is thus not the sole viscosity-reducer in the glass composition claimed, it is impossible to estimate its contribution to the viscosity and what the contribution of the other components is. For the same reason, it is impossible to assess whether Li2O contributes to the high temperature viscosity (HTV) and what that contribution is. In fact, the contested patent itself confirms that Li2O does not automatically lead to an HTV of between about 1010°C and about 1204°C, since Example 1 of the contested patent discloses a glass composition not containing Li2O but having a HTV within that range. [1.3.3] For the above reasons, the board is convinced that the patent has not been amended in such a way as to extend the protection it conferred in its version as granted. Therefore claim 1 as maintained, and independent claims 6 and 12 - amended in the same way as claim 1 - fulfil the requirements of A 123(3). Strange, isn’t it? Anyway, it is interesting to see that the feature “in an amount no greater than 8 mol%” is understood to exclude an amount of 0 mol%. That the minimum amount is set to be equal to “the analytical detection limit” is somewhat problematic as it will necessarily change as a function of the progress of analytical methods. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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K’s Law – The ebook
Interpretative Spotlight: « Angle Sensor »
Interpretative Spotlight: « Angle Sensor » 8 Jan 2011
When expounding claim features in the specification, one often tries to draft very general statements, so as to cover a great variety of embodiments. This practice is not without risks. Should the feature become critical to patentability, the Boards will, as a rule, not accept restrictions with respect to what had been disclosed in the application as filed. In the present case, the patent proprietor appealed against the revocation of its patent by the Opposition Division (OD). Claim 1 of the main request read: Method for operating a milking installation (1) with at least two milking stations (3), arranged on a movable platform (2), in which a change of position of the platform (2) is determined relative to a reference point by means of a position detection unit (8, 15) with the aid of at least one angle sensor (20). One of the crucial points before the Board is the interpretation of the term “angle sensor”. The description contains some statements on this item: *** Translation from the German *** [0026] The angle sensor is preferably a shaft encoder. Here, absolute shaft encoders, but also incremental encoders, can be used. Multi-turn shaft encoders can also be used. [0027] Preferably, the angle change is determined with at least one angle encoder, especially with an absolute angle encoder. The angle encoder can also be an incremental angle encoder. [0028] The angle output can be analogous or digital. Angle encoders are advantageous, while in the analogous method, time changes of the signal are possible. [0029] For example, an optical sensor can also be considered (denkbar) for position determination. For example, on the outer periphery of a carousel, a periodic, for example, sinusoidal or saw tooth thin line can be present, where the local height of the line and angle on the carousel can be assigned unequivocally. By determination of the height of the line with the aid of an optical, magnetic or other sensor, in such a case, an essentially unequivocal assignment of the angle from a measuring signal can be performed. [2.1] The [patent proprietor] has submitted that the claimed “angle sensor” was defined in paragraphs [0026] to [0028] of the opposed patent and could only be a sensor where the output is an angle. The sensors for position determination mentioned in paragraph [0029] referred to embodiments that were not claimed any longer and did not qualify as angle sensors within the meaning of claim 1. The Board cannot endorse these explanations. Paragraph [0029] starts with the words “For example, an optical sensor can also be considered (denkbar) for position determination …”; moreover, it is said that “the local height of the line and angle on the carousel can be assigned unequivocally”, and the last sentence adds “By determination of the height of the line with the aid of an optical, magnetic or other sensor, in such a case, an essentially unequivocal assignment of the angle from a measuring signal can be performed.” It follows, for those skilled in the art, that the sensors mentioned in this paragraph refer to a carousel milking facility and that an angle sensor within the meaning of the claimed invention does not have to directly determine the angle but only has to assign an angle to a measured signal. Should you wish to download the whole decision (T 151/09, in German), just click here. To have a look at the file wrapper, click here. 2533 | 3398
T 1284/09 – Payback Revisited
K’s Law – The ebook
T 1284/09 – Payback Revisited 7 Jan 2011
When an opponent and its legal successor both file appeals against the decision of the Opposition Division (OD), and later on withdraw the appeals, will the EPO reimburse at least one of the appeal fees? In the present case, the OD rejected the opposition - against a patent concerning bandages containing maggot secretions (!) - on March 30, 2009. On June 8, the opponent (Bro Morgannwg NHS Trust) filed an appeal. On the very same day, another company (Zoobiotic Ltd.), which declared itself to be the “opposition assignee”, also filed an appeal. On July 31, 2009, both appellants filed identical statements of grounds of appeal. On August 5, 2010, both appellants withdrew their appeals and requested reimbursement of the appeal fee “to the extent possible”. *** Translated from the German *** [3] The appellants have not given any reason why one or both appeal fees should be reimbursed. The Board does not see any such reason. [4] As the appeal proceedings were initiated only after the entry into force of the EPC 2000, A 108 in its revised version is to be applied. Thus for the reimbursement of the appeal fee, R 103 EPC 2000 is to be applied instead of R 67 EPC 1973 […]. [5] Boards of appeal order the reimbursement of the appeal fee if: (i) the appeal is deemed not to have been filed pursuant A 108, second sentence, because the appeal fee has not been paid in due time, (ii) interlocutory revision is granted or when the Boards of appeal deem an appeal to be allowable and such reimbursement is equitable by reason of a substantial procedural violation (R 103(1)(a)), or (iii) the appeal is withdrawn before the filing of the statement of ground of appeal and before the period for filing that statement has expired (R 103(1)(b)). [6] None of these alternatives applies here: As the appeal fees have been paid in due time, this is no situation according to (i). The appeals were withdrawn before the Boards had the possibility of deeming them allowable. There was no possibility of interlocutory revision in opposition appeal proceedings (A 109(1), second sentence). Thus reimbursement under (ii) is excluded as well. The appeals were withdrawn after the time limit for filing the statements of grounds of appeal had expired and after the filing of those statements. Therefore, reimbursement under R 103(1)(b) (point (iii) above) is not an option either. When a situation does not correspond to R 103(1)(b), the (full or partial) reimbursement of the appeal fee cannot be triggered by a withdrawal of the appeal ( R 103(1)(b) e contrario; T 372/99, T 1142/04 ; T 1216/04). [7] Reimbursement of fees is also ordered when there has been a payment without legal justification (ohne Rechtsgrund), e.g. when a payment has been made by error or when too high an amount has been paid (cf. Article 12 RRF e contrario […]). [8] Appellants I and II both filed an appeal against the same decision of the OD and both paid one appeal fee. Even if the appeals were directed against the same decision and if one appeal was filed by the original opponent and the other by a possible successor, in the case of two appeals two appeal fees become due (G 2/04 [3.2.5(a)]). The filings and the payments were made before the time limit under A 108, first sentence, together with R 126(2) 2534 | 3398
T 1284/09 – Payback Revisited
K’s Law – The ebook
[…] had expired. Therefore, the payment of two appeal fees had become due and there was no payment without legal justification. [9] As a consequence, the request for reimbursement of the appeal fees cannot be granted. Should you wish to download the whole decision (in German), just click here. To have a look at the file wrapper, click here.
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T 1829/06 – New Jobs For Straw Men
K’s Law – The ebook
T 1829/06 – New Jobs For Straw Men 6 Jan 2011
Straw men not only file oppositions, they also engage in commercial activities as the present decision shows. [3.1] The opponent contended that a photovoltaic module produced by the company EPV Energy Photovoltaics Inc., Princeton (US) (“EPV-module” hereinafter) and supplied to the EPO as evidence had been made available to the public by use before the priority date of the application in suit and thus was comprised in the state of the art, pursuant to A 54(2). In particular, the [opponent] contended that the EPV-module number 326-17, supplied to the EPO as evidence, had been produced by EPV on 15 January 1999. As confirmed by the declaration of Mr. G., executive vice president of EPV Solar, the successor of EPV [...] the date “01-15-99” engraved in the module corresponded to the manufacturing date, the number “326” to the run number and the number “17” to the serial number of the plate in the run. Document A3 was an accompanying data sheet relative to I/V measurements performed by EPV on this module no. 326-17 [...]. The predecessor of the opponent at that time, the company ASE GmbH, became aware of the existence of the EPV-module and was interested in analysing it. However, being a competitor to EPV, it feared that EPV would be reluctant to deliver and thus instructed one of its employees, Mr. G. H., to order the module as a private person, thereby acting as a straw man for the opponent [...]. Thereupon Mr. G. H. contacted EPV and ordered three modules including the above EPV-module no. 326-17, as confirmed by the email exchanges between Mr. G. H. and Mrs. C. from EPV [...], the customer order dated 14 January 1999 [...] and the corresponding invoice dated 17 February 1999 [...]. Mr. G. H. billed ASE for his expenses incurred in the purchase on 3 February 1999 [...]. The modules, including module no. 326-17 were analysed and tested by ASE on 2 February 1999 and thereafter [...]. Accordingly, by the sale of the EPV-module no. 326-17 to Mr. G. H., the module was made available to the public before the priority date of the patent. [3.2] The [patent proprietor] argued that the sale to a straw man, as in the present case, did not render the module available to the public, as not the whole public had access to it. In particular, the opponent would not have been able to buy the module. Moreover, no evidence was provided of any further sales of the module. Furthermore, an agreement of confidentiality between EPV and Mr. G. H. had to be assumed as the copies of the e-mail correspondence submitted [...] were incomplete and an early e-mail from EPV stated “We would be happy to work with you”. Moreover, the evidence provided of the sale contained a number of oddities, casting sufficient doubts for it to be dismissed. In particular, the bill issued by Mr. G. H. was dated earlier than the invoice, it had no receipts annexed to it and there was no apparent reason for the VAT (“MwSt”) to appear on it. Furthermore, it was unclear why the customer order contained handwritten details of the products and who made them. Finally, little was known about Mr. G. who provided a declaration regarding EPV [...]. [3.3] According to established jurisprudence, information is considered to be made available to the public even if only one member of the public had access to it and there was no bar of confidentiality restricting the use or dissemination of such information. The fact that this member of the public acted as a straw man or that the opponent itself may have had difficulties in obtaining the module from EPV is immaterial. Furthermore, in the board’s opinion, based on the evidence on file there can be no reasonable doubt that the sale of the EPV-module to Mr. G. H. took place before the priority date of the patent and was free of any obligation to maintain confidentiality. Accordingly, the EPV-module no. 326-17 was made available to the public by use before the priority date of the patent. The EPV-module thus is comprised in the state of the art in accordance with A 54(2). 2536 | 3398
T 1829/06 – New Jobs For Straw Men
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T 1435/06 – Down To The Roots
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T 1435/06 – Down To The Roots 5 Jan 2011
The present decision deals with the refusal of an application by the Examining Division (ED). Claim 1 of the main request read: A dental root canal sterilising and sealing kit comprising: (a) a flowable photosensitiser which is absorbed by bacteria; (b) an optical fibre (4,20) having a portion (5,21) at or close to the distal end which is shaped to spread radiation around and along a dental root canal (2) said fibre being adapted for introduction into a root canal so that the tip is capable of reaching the apical third of the root canal, said optical fibre being connectable proximally with means (41) for generating laser light capable of being absorbed by the photosensitiser; and (c) obturating means for sealing the canal (2). The applicant pointed out that the term “dental root canal sterilising and sealing kit” in claim 1 imported the feature of use in root canals unequivocally as an absolute requirement and a specific, purposively limiting feature, to be distinguished from mere suitability for the stated purpose. D1 only related to the treatment of carious lesions with simple spherical cavities in the dentine, which were entirely different from excavated root canals with many side branches, or laterals. An optical fibre designed for caries treatment was clearly distinguishable from that for an endodontic procedure. The reference to the root canal in D1 was erroneous, as became clear from the first priority document of D1. The fact that the treatment of root caries was also contemplated in D1 did not imply that the disclosed device was actually used in the root canal. The claimed optical fibre was clearly not the same as that of D1. The spherical, isotropic tip disclosed in D1 would provide less than optimum illumination and reduced activation of the photosensitiser in an elongate root canal, unless carefully moved up and down by the dentist during use. Accordingly, the fibre of D1 did not have a portion at or close to the distal end, which was shaped to spread radiation around and along a dental root canal, as defined in claim 1 in suit. With respect to the obturating means, there was no suggestion in D1 that the materials disclosed therein were suitable for sealing the root canal. [2] Document D1 discloses a dental root canal sterilising and sealing kit comprising: (a) a flowable photosensitiser which is absorbed by bacteria […]; (b) an optical fibre 4 having a portion 5 at or close to the distal end which is shaped to spread radiation around and along a dental root canal […], said fibre being adapted for introduction into a root canal so that the tip is capable of reaching the apical third of the root canal, said optical fibre being connectable proximally with means 41 for generating laser light capable of being absorbed by the photosensitiser; and (c) obturating means […] for sealing the canal. The term “dental root canal sterilising and sealing kit” does not imply any limitations further than that the claimed kit is to be suitable for sterilising and sealing the root canal. The Board considers that the wording “dental root canal sterilising and sealing kit” is in fact equivalent to the wording “kit of parts for use in sterilising and sealing a dental root canal”, employed by the applicant in a previous version of the claim during examination proceedings. This interpretation implies that the intended use of the kit is taken into consideration when assessing novelty, namely to the extent that any kit disclosed in the prior art which is unsuitable for this use is not prejudicial to the novelty of the subject-matter of the claim (T 637/92 [4.5]). In the present case, the claim is clearly directed to a product, viz. a kit, and the wording “dental root canal sterilising and sealing” before the term “kit” does not change the product claim into a use claim (cf. T 303/90 [3.1.2, 3.2]). Moreover, a mere difference in wording as in the claim in suit is insufficient to establish novelty (see also Case Law of the Boards of Appeal of the EPO, 6th edition 2010, I.C.3.2.1). There is no reason to believe that the above-cited reference in D1 to the root canal […], is erroneous or does not represent the technical reality intended by its author. On the contrary, there are various references to the treatment of root caries […], indicating that the disclosure of D1 is not limited to the treatment of normal caries in the dentine, but that treatment of the root is also envisaged.
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T 1435/06 – Down To The Roots
K’s Law – The ebook
Contrary to the appellant’s assertion, the priority documents of D1 do not belong to the disclosure content of D1 and are not to be taken into account when assessing novelty. Furthermore, the spherical portion or tip 5 at the distal end of the fibre 4 disclosed in D1 is shaped to spread radiation “around and along” a dental root canal. Since the light is spread around an arc of up to 360° […], a certain portion of the radiation is spread laterally, i.e. radially from the longitudinal axis of the fibre and thus “around a dental root canal”, and another portion forwardly, i.e. in the direction of the longitudinal axis and thus “along a dental root canal”. This is even more clearly the case when a configuration as described in the penultimate paragraph of page 8 is used, wherein the reflective outer layer of the optical fibre is removed over a certain distance from the distal end, thus forming an isotropic light-emitting tip. For the skilled reader it is implicit that the laterally spread radiation necessarily also reaches any side branches or laterals of the root canal. Moreover, the wording of the claim does not require that the radiation is spread around and along the entire dental root canal. The fibre 4 as disclosed in D1 is furthermore adapted for introduction into a root canal so that the tip 5 is capable of reaching the apical third of the root canal. This becomes evident from lateral dimensions of the tip (800 microns or less) […], which are the same or even smaller than those mentioned […]. Finally, the obturating means disclosed in D1 are also suitable for sealing the root canal, as defined in feature (c) of claim 1 in suit. Contrary to the appellant’s assertion, it is not necessary that D1 comprises an explicit suggestion that the materials described there are suitable for use in dental root canals. The evidence provided with the statement of grounds of appeal with respect to distinctions between endodontic procedures and the treatment of dental caries does not reveal any differences that are reflected in the wording of claim 1 in suit. It follows that document D1 takes away the novelty under A 54(3) of the subject-matter of claim 1. Should
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R 15/10 – No Foretelling
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R 15/10 – No Foretelling 4 Jan 2011
In this decision the Enlarged Board (EBA) deals with a complaint against Board 3.4.02’s decision to revoke the opposed patent (T 2030/07). The petition for review is based on an alleged violation of the right to be heard. As a matter of fact, the Board had found the third auxiliary request to lack clarity because the mathematical formula for the curvature Cp of a refractive surface of the claimed progressive multifocal lens - which the patent proprietor had introduced into claim 1 in order to overcome an objection of lack of clarity by the Opposition Division (OD) - was itself unclear. The petitioner argued that this decision was based on grounds on which it did not have an opportunity to present arguments. [4] It appears from the petition itself […] that the petitioner was at the oral proceedings (OPs) before the Board of Appeal heard on the only matter with which the petition is concerned – namely, the mathematical equation in claim 1 of the petitioner’s auxiliary request 3. Indeed, the petition recites that the Board invited the petitioner’s representative to explain the use of the equation […], what the representative said by way of such explanation […], and that the Board understood what it was told […]. [5] The petition also refers to several passages in the written decision to show that the Board understood the petitioner’s submissions. The […] Board’s summary […] of the petitioner’s arguments in support of its auxiliary request 3 […] is an almost verbatim reproduction of the relevant text of the petitioner’s arguments in its letter of 30 March 2010. [6] [In] point [5.2] of the “Reasons for the Decision” […] the Board of Appeal records that the petitioner referred to the minutes of the OPs before the OD and then summarizes the arguments of the petitioner and the opponents […]. The EBA also notes there are further references to the petitioner’s (and the opponents’) submissions on the equation in point [5.1] of the reasons. [7] It is therefore beyond all possible doubt that the petitioner was heard in this respect. Indeed, as indicated above, the petitioner relies specifically upon both its written and oral submissions on this issue as recorded by the Board of Appeal in its decision. It is abundantly clear, and not disputed by the petitioner, that the Board heard the arguments of all parties and then decided that those of the opponents should prevail. However, the petitioner’s complaint is that in its subsequent written decision the Board of Appeal took a view of the clarity of the claim containing the equation which was not, but should have been, put to the petitioner so that it could have presented arguments on that view. [8] However, as the EBA has already indicated in several previous decisions on petitions for review, such complaints do not disclose a denial of the right to be heard. There can be no such denial if a Board of Appeal, after hearing the appellant in ex parte proceedings, or both or all parties in inter partes proceedings, subsequently reaches its own conclusion which is then recorded in its written decision. [9] That in the present case the Board did not at the OPs indicate, or invite comments on, its own conclusion cannot be a denial of the right to be heard, let alone a denial amounting to a fundamental procedural deficiency. In all but the most clear cut cases a Board will simply not know before it has finished hearing the parties what its own conclusion may be, let alone the reasons it may give for such a conclusion. However, even if that should not be the case, it would be contrary to a Board’s necessary neutrality to assist a party by giving possible reasons for deciding against it (see R 1/08 [3.1]; R 18/09 [14]). As is clear from the EBA’s jurisprudence, parties are not entitled to advance indications of the reason or reasons for a decision before it is taken (see the summary of the case-law in R 12/09 [11] and the several other decisions there referred to; and subsequent decisions R 15/09 [4]; and R 18/09 [14-15;18]). [10] It follows that the petitioner’s further argument […] - that the reason why the Board of Appeal may not have given any indication of its own view was that the OPs were conducted under time pressure - makes no difference. Since the Board was quite correct not to have given the parties any advance indication of its decision, the suggestion (even if correct) that time pressure may have been the reason for not doing so is irrelevant: observing proper procedure, even if paradoxically for an improper reason, cannot amount to a procedural violation. 2540 | 3398
R 15/10 – No Foretelling
K’s Law – The ebook
In any event, the EBA notes that the petitioner argues […] that it was entitled to be told of the Board’s view of the clarity of the equation “no matter whether there was time pressure”, which entirely neutralizes the time pressure argument. Although T 506/91 […] was concerned with a different situation, the EBA agrees with the observation in the decision ([2.7]) that shortness of time is not in itself a violation of proper procedure. [11] Similarly, the fact that the petitioner was surprised by the Board’s decision can also make no difference. The Board heard both parties and then made a decision by which one party necessarily had to lose. That party may, on reading the decision, be surprised and feel that, if it had known the reasons in advance, it would have argued against them. But such purely subjective surprise cannot with hindsight form the basis for claiming a right to advance notice of reasons for a decision (see R 12/09 [13]). While no finding on the point is required, the EBA notes that in fact the Board of Appeal’s decision shows that, in its own view, it concurred with the arguments of the opponents which had been first raised in the opposition proceedings and reiterated on appeal in which case, objectively viewed, the petitioner should not have been surprised […]. [12] The petitioner also argues, although only to support the alleged fundamental nature of the alleged procedural violation, that in its decision the Board of Appeal took a position which is beyond the well established principles of assessment of clarity under A 84 […]. Since the EBA finds that there was no denial of the right to be heard and therefore no procedural violation, there is no question of whether a violation was fundamental. However, it appears that the petitioner’s underlying concern, and the source of its surprise on receiving the Board’s written decision, was the (as the petitioner believes) more stringent than usual criteria used by the Board for assessing the clarity requirement of A 84. Such matters clearly concern the substantive case decided by the Board of Appeal and it is not open to the EBA in petition proceedings to review the correctness or otherwise of the Board’s decision on the application of substantive law (see R 1/08 [2.1] and the travaux préparatoires cited there). [13] While again no finding on the point is required, the EBA also notes that in fact the Board of Appeal’s decision shows that, as regards A 84, it was the requirement of support rather than that of clarity which was not satisfied. It appears that lack of support was the thrust of the opponents’ argument with which the Board, after hearing all the parties, ultimately agreed […]. [14] The EBA accordingly finds the petition clearly unallowable. Should you wish to download the whole decision or have a look at the file wrapper, just click here. NB: I have reported on another aspect of decision T 2030/07 in a previous post.
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T 743/07 – Acceptable Danger
K’s Law – The ebook
T 743/07 – Acceptable Danger 3 Jan 2011
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In a recent post we have seen that the skilled person is a rather conservative and cautious person. This does not mean, however, that he/she cannot face danger at all. [3.7.9] Finally, the [patent proprietor] argued that the skilled person would have been deterred from using a methanol solution of hydrogen peroxide in view of the teaching in document D2 that the handling of anhydrous or near-anhydrous organic solutions of hydrogen peroxide is unsafe. [3.7.10] The Board is not convinced by the [patent proprietor’s] arguments. The passage in document D2 on which the [patent proprietor] relies is merely a warning for the skilled person that when using potentially dangerous organic solutions of hydrogen peroxide he has to act with care and may have to take precautionary measures. It does not suggest in any way that these solutions would be unsuitable for the oxidation reaction or detrimental to its outcome. This passage therefore does not deter the skilled person from using these solutions. Furthermore, the Board notes that despite this disadvantage, anhydrous or near-anhydrous solutions of hydrogen peroxide have been used before in the oxidation of olefins, as indicated in document D2 […]. Should
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T 1741/07 – He Knows It All
K’s Law – The ebook
T 1741/07 – He Knows It All 1 Jan 2011
The present decision deals with the decision of the Examining Division to refuse a patent application for lack of inventive step over a combination of documents D1 and D2. Claim 1 of the main request read: A railway monitoring system (100), comprising: an optical fiber (101) having a plurality of parts spaced apart along the length of the optical fiber, each part of the plurality being attachable to a respective portion of one of a pair of rails (103,105) of a track, an optical signal emitter (107) connected to the optical fiber (101) for emitting an optical signal into the optical fiber, and an optical signal analyzer (111) connected to the fiber for receiving and analyzing altered optical signals; characterised in that the plurality of parts comprises a first plurality of Bragg gratings (S), each Bragg grating (S) having a distinct reflected wavelength which is altered upon a change in strain arising from a respective portion of the rail, and said optical signal analyzer (111) receives altered optical signals in the form of reflected signals and is adapted to detect shifts in the reflected wavelengths of the Bragg gratings, a shift being indicative of a change in strain at a respective portion of the rail. The appellant argued, inter alia, that the relevant skilled person, a railway engineer with experience in the field of network monitoring systems, was of a very conservative nature, and would not have considered introducing new unproven technologies. [2.1] The document D1, like the present application, to railway monitoring systems based on optical sensors, and is the only available prior art document relating to such systems. Thus it is considered to represent the best starting point for the assessment of inventive step. [2.1.1] It is noted that the appellant has argued extensively, in particular with reference to the two “witness statements” […], that the person skilled in the art is a railway engineer with experience in the field of network monitoring systems, and that such persons are of a very conservative nature, and would thus not consider it obvious to introduce new unproven technologies (contrasted to the conventional systems using electro-magnetic sensors). In the present case, the implication of this argument is that the skilled person would not consider replacement of the conventional system using electro-magnetic sensors with a system based on optical fibres, since these have not previously been used in the railway network, and would thus not consider D1. [2.1.2] This argument appears to the board to be based on the assumption that the skilled person is starting from a situation in which only electro-magnetic sensors were known. However, it is part of the established case law of the boards of appeal that the skilled person is aware of all of the prior art in the relevant technical field. Thus, in the present case he would be aware of the teaching of D1, and for the reason indicated in paragraph [2.1] above, the skilled person would adopt this document as his starting point and hence assume the use of optical fibres in a railway monitoring system. Unsurprisingly, the request was rejected for lack of inventive step. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here. NB: This decision has already been reported on Kluwer Patent Blog.
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K’s Law – The ebook
Publish Or Perish (ctd.)
Publish Or Perish (ctd.) 1 Jan 2011
Cumulative plot of the number of decisions published by DG3 in 2008, 2009 and 2010 As can be seen from the above graph, the 2010 harvest was not so good for case law bloggers: the Boards have published much less decisions than in 2009, and hardly more than in 2008. After a good start, the activity was particularly low during the second half of 2010. As a consequence, my reservoir is almost empty: if the Boards do not publish new decisions in the near future, this blog might experience the first “delivering problems” in its history.
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T 1051/07 – It’s All About Money
K’s Law – The ebook
T 1051/07 – It’s All About Money 31 Dez 2010
I owe the knowledge of the present decision – which had escaped my scrutiny - to the Kluwer Patent Blog. It is one of those decisions where one can see that the problem-solution approach sometimes leads to, um, surprising results. The Board had to deal with the refusal of an application by the Examining Division. Claim 1 on file read : A transaction system (100) for providing a financial transaction service to a subscriber, said transaction system (100) comprising: (a) a service control unit (120) which processes financial transaction services for the subscriber; (b) a subscriber service interface (160) for providing a service menu to a mobile terminal of the subscriber through a communication network (200) and for outputting (S110; S210) a corresponding charging or realization service request message to said service control unit (120) to provide a corresponding financial transaction service when an item of said service menu is selected; (c) a transaction service interface (150) connecting said service control unit (120) by means of a financial network (300) to at least one bank settlement system (410; 420) which upon a settlement request message transmitted by said service control unit (120) by means of said financial network (300) to said bank settlement system (410; 420) processes a first transfer of money between a bank account of the juridical body providing the financial transaction service opened in said bank settlement system (410; 420) and a bank account of the subscriber; and (d) a database (110) for storing data processed in said service control unit (120), said database (110) including a service account of the juridical body providing the financial transaction service and a mobile account granted to a cellular phone number of a mobile terminal of the subscriber, wherein the service control unit (120) processes a second transfer of a corresponding amount of money between the service account of the juridical body providing the financial transaction service and the mobile account of the subscriber. Having found this claim to be novel, the Board assesses its inventive step : [3.2] Document D2 discloses a secure payment system allowing a user (payer) to pay, using e.g. a mobile phone, a service provider (payee) via a host computer. […] at least the following features of claim 1 are not disclosed in D2: - a subscriber service interface for outputting a corresponding charging or realization service request message to said service control unit to provide a corresponding financial transaction service when an item of said service menu is selected (cf feature (b)); - a transaction service interface (150) connecting said service control unit (120) by means of a financial network (300) to at least one bank settlement system (410; 420) which upon a settlement request message transmitted by said service control unit (120) by means of said financial network (300) to said bank settlement system (410; 420) processes a first transfer of money between a bank account of the juridical body providing the financial transaction service opened in said bank settlement system (410; 420) and a bank account of the subscriber (cf feature (c)); - a database including a service account of the juridical body providing the financial transaction service (cf feature (d)); - wherein the service control unit processes a second transfer of a corresponding amount of money between the service account of the juridical body providing the financial transaction service and the mobile account of the subscriber (cf feature (d)). […] [4.1] The closest prior art is considered to be provided by document D2. The above distinguishing features over D2 allow a user (subscriber) to load money on his account in the host computer. Accordingly, the objective problem to be solved relative to D2 is to provide the system with means allowing a user to load money on his account in the host computer (or realise money from his account). 2545 | 3398
T 1051/07 – It’s All About Money
K’s Law – The ebook
[4.2] As none of the documents cited in the search report or otherwise cited in the course of the examination procedure address the above objective problem to be solved or contain any indication as to its solution, the subject-matter of claim 1 is not considered to be obvious to a person skilled in the art. [4.3] In the decision under appeal the claim then under consideration was in substance held to be the straightforward technical implementation of an administrative banking procedure lying outside the patentable regime. The board generally agrees that reloading the host computer account fundamentally constitutes (part of) a business method and, thus, would lack technical character. However, insofar as administrative banking procedures indeed lack technical character, present claim 1 is not confined to merely reciting an administrative banking procedure alongside straightforward technical means for its implementation, but rather provides a technical solution, involving technical means to the technical problem of how to reload such an account. The solution as claimed is, as discussed above, not considered obvious. Accordingly, the subject-matter of claim 1 involves an inventive step in the sense of A 56. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here. The decision has also been commented on Visae Patentes.
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T 1612/07 – Insufficient Reasons (Remix)
K’s Law – The ebook
T 1612/07 – Insufficient Reasons (Remix) 30 Dez 2010
Not long ago, we have seen a decision where Board 3.2.07 found a “decision by reference” of the Examining Division (ED) to be insufficiently reasoned. Here is another example. [3] The ED issued its decision, which was requested to be taken “according to the state of the file”, in a standardised form, replacing an explicit reasoning by a mere reference to the reasons contained in three preceding communications, as follows: “In the communication(s) dated 12.04.2006, 24.11.2006, 17.04.2007 the applicant was informed that the application does not meet the requirements of the EPC. The applicant was informed of the reasons therein. The applicant filed no comments or amendments in reply to the latest communication but requested a decision according to the state of the file by a letter received in due time on 23.04.2007. The application must therefore be refused.” [4] R 68(2), first sentence, EPC 1973, states that decisions of the EPO which are open to appeal shall be reasoned. This means, according to established case law, that a decision must contain, in logical sequence, those arguments which justify the tenor and that all facts, evidence and arguments which are essential to the decision must be discussed in detail (T 278/00; T 963/02 [2]; T 897/03 [3 et seq.]). Consequently, if a decision is merely reasoned by a reference to one or more preceding communications, the requirement of R 68(2), first sentence, EPC 1973 is only met if the referenced communications themselves fulfil the above defined requirements. The reasons for the refusal of the relevant requests must be clear from these communications both for the party concerned and for the board of appeal. [5] In the present case, this condition is not met for several reasons. [5.1] Doubts arise from the fact that the contested decision makes reference to three communications, each of which contains a plurality of different objections raised against different claim versions. It would appear from the phrase “The applicant was informed of the reasons therein” that the grounds for the decision under appeal are constituted by all of the reasons which have been indicated in the respective communications. However, given the substantive amendments made to the application documents in the course of the examination proceedings, not all of the objections raised still apply to the latest set of documents filed. On the other hand, in view of the fact that the third communication contains explicit references to objections raised already in the two earlier communications, it would appear plausible that the decision is based only on those reasons which are mentioned in the third communication. In that case, however, the question arises why the decision makes reference to the first two communications at all. For these reasons, it is not unambiguously clear which of the various objections comprised in the first and second communications still apply to the version of the application documents on which the contested decision is based. [5.2] Another deficiency of the contested decision lies in the fact that the second and the third communications of the ED merely re-state objections as to lack of clarity and inventive step which had been raised in the respective preceding communication(s), but do not contain any indication as to why respective arguments and explanations submitted by the applicant had been found unconvincing. Particular reference is made in this respect to the objection raised as to lack of inventive step. In its first communication […], the ED’s reasoning started from document D1. It was argued that the teaching of D1 left an obvious desire still to be met. Solutions to that desire were however considered to be suggested by the teaching of each of documents D2 and D3. Documents D4 and D5 were only mentioned in passing. The second communication […] did not add any substantive matter to this reasoning, nor did it deal with the arguments put forward by the applicant in support of inventive step in its reply […]. 2547 | 3398
T 1612/07 – Insufficient Reasons (Remix)
K’s Law – The ebook
Finally, the third communication […] noted that a combination of D1 with D2 or D3 was not the only line of reasoning that led to the conclusion of lack of inventive step and that it would appear that the subject-matter of the independent claims then on file lacked inventive step even with respect to each of documents D2, D3 and D5 taken in isolation. Again, no explanations were given as to why the arguments submitted by the applicant […] had not been found convincing. Thus, since the communications do not deal with the applicant's arguments, neither does the standardised final decision. [6] In the board’s judgment, the decision under appeal is not sufficiently reasoned in the sense of R 68(2) EPC 1973 and the above deficiencies in the reasoning amount to a substantial procedural violation which requires, in line with other decisions of the boards of appeal (see e.g. T 278/00 and T 897/03), that the decision under appeal be set aside. Moreover, the procedural deficiency justifies, in application of A 111(1), the remittal of the case to the ED, as has been requested by the appellant. In consequence, the appeal is deemed to be allowable and the board considers it to be equitable, by reason of the substantial procedural violation incurred, to reimburse the appeal fee (R 67 EPC 1973). [7] For the avoidance of misunderstandings, the board notes that it does not generally object to a refusal of an application with reasons drafted in a standardised form by making reference to one or more preceding communications, in cases in which an applicant has requested a decision “according to the state of the file”. However, this form of decision should be chosen only exceptionally in clear-cut cases in which the reference to previous communication(s) amounts to a complete reasoning, avoiding any ambiguities as to the exact content and extent of the grounds for refusal and in which the communications have dealt with the applicant's arguments (if any). Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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T 70/08 – Too Late
K’s Law – The ebook
T 70/08 – Too Late 29 Dez 2010
[7] The appellant has requested the reimbursement of the appeal fee relating to an earlier notice of appeal dated 13 September 2004 filed against a previous decision dated 15 July 2004 refusing the application and subsequently rectified by the Examining Division (ED) under A 109(1) on 28 December 2004. This request was already formulated before the ED during the subsequent first-instance proceedings following rectification of the first decision and in its second decision […] the ED considered the request as “deemed not to have been filed” on the grounds that the request was filed on 29 July 2005 (although wrongly dated 27 October 2004) and thus after rectification of the decision, i.e. after completion of the corresponding appeal procedure. As already noted by the Board in its communication dated 22 March 2010, the request for reimbursement of the appeal fee is not allowable because the request was formulated by the appellant for the first time after the ED had already decided to rectify the first decision under A 109(1). Consequently, neither the ED nor the Board are able to order under R 103(1)(a) the reimbursement of the appeal fee of an appeal that has been fully allowed by the first-instance department and therefore closed before the appellant requested for the first time the reimbursement of the corresponding appeal fee (see in this respect decisions T 21/02 [3-8] and T 242/05 [1-2]). This preliminary opinion of the Board was not disputed by the appellant in its letter of reply, and the Board sees no reason to depart from it. In addition, the appellant confirmed during the proceedings that the auxiliary request for oral proceedings concerned the allowability of the appeal itself and not the request for reimbursement of the appeal fee relating to the previous appeal […], and in these circumstances there is no reason for the Board to arrange oral proceedings. In view of all these considerations, the request for reimbursement of the appeal fee relating to the earlier appeal is refused for the reasons given above and already communicated to the appellant in the Board’s communication. Should you wish to download the whole decision, just click here.
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T 1450/07 – Plausible Function
K’s Law – The ebook
T 1450/07 – Plausible Function 28 Dez 2010
The requirement of industrial applicability is not a very stringent one. Objections of non compliance with A 57 are rare, and hardly ever successful … except in the domain of biotechnology, where applicants are sometimes tempted to try to protect polynucleotides before knowing what they could be used for. Claim 1 on file read : 1. A polynucleotide selected from the group consisting of (a) polynucleotides encoding a polypeptide comprising the amino acid sequence as shown in Seq.ID No.2; (b) polynucleotides encoding a polypeptide comprising the amino acid sequence from residues 1 to 329 as depicted in Seq.ID No.2; (c) an allelic variant of the polynucleotide of (a) or (b); or the complementary strand of such a polynucleotide. Having dealt with A 123(2) and A 56, the Board has to answer the question of whether this claim fulfils the requirements of A 57. [5] The existing case law establishes the criteria to be fulfilled for industrial applicability to be acknowledged (see e.g. T 898/05). The information in the application as filed should make plausible the identity of the claimed compound. Thus, the compound may be attributed to a known family of molecules on the basis of a comparison between its primary structure and that of molecules known in the art. Then, its putative functions must be disclosed. Experimental evidence is not necessarily needed. A number of reasonable assumptions may be made by taking into account the known functions of other family members as well as, for example and not exclusively, by taking into account the distribution of the claimed compound in the body. It should also be clear that the treatments therein mentioned are in relation to the function plausibly attributed to the molecule. Post-published evidence backing up these assumptions is always welcome. In fact, the more information, the better and the quality of the information is also fundamental. As often repeated, each case must be evaluated on its own merit. [6] The present application identifies TGFα-HII as a member of the EGF/TGF family of transforming growth factors on the basis that it comprises a domain with six cysteine residues characteristic of that family and exhibits a degree of identity of 26% and a degree of similarity of 46% with the first isolated TGFα molecule over a 236 amino acid stretch […]. These are the features previously used in the art as characterizing features of EGF/TGF family members even if the percentages of homology, 33% in case of mouse, rat TGF and murine EGF […], or of similarity, 50% between betacellulin and rat TGFα […] are somewhat different. In the board's judgment, this comparison makes it plausible that TGFα-HII is indeed a member of the EGF/TGF family. [7] As regards the properties of TGFα-HII itself, it is mentioned on page 6, lines 7 to 9, that: “A polynucleotide encoding a polypeptide of the present invention may be obtained from human brain and early stage brain tissue.” Its putative functions and the therapeutic benefits to be drawn therefrom have been defined essentially as those earlier established for members of the EGF/TGF family. For example, it is mentioned […] that: “There appears to be a widespread distribution of TGFα in various regions of the brain ... Accordingly, in instances where neurological functioning is diminished, an administration of the polypeptide of the present invention may stimulate the brain and enhance proper physiological function.” and, “TGFα-HII or soluble form thereof may also be employed to treat ocular disorders, for example, corneal inflammation. A variety of experiments have implicated members of the TGFα gene family in such pathologies.” and,
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T 1450/07 – Plausible Function
K’s Law – The ebook
“Treatment may also be related to liver regeneration or liver disfunction, since TGFα and its homologs and hepatocyte growth factor trigger hepatocyte regeneration after partial hepatectomy and after acute cell liver necrosis...”. [8] Several post-published documents have been cited which experimentally confirm the information provided by the patent application. Document D15 […] shows that a protein with the same sequence as TGFα-HII, namely TAT137 is overexpressed in prostate cancer. In document D20 […], it is described that an anti- TGFα-HII (identified as TMEFF2) monoclonal antibody conjugated to the cytotoxic agent auristatin E was used with success to treat immunodeficient mice bearing xenografted prostate cancers. Document D4 reports that TMEFF2 is widely expressed in the brain and that a fragment consisting of the extracellular domain of TMEFF2 increases survival of neurons. […] The authors conclude that: “These findings indicate that TMEFF2 holds promise as a candidate for use in the treatment of neurodegenerative disorders such as Parkinson's disease.” [9] There is no doubt that the properties attributed to TGFα-HII make it suitable for use in the pharmaceutical industry. [10] In accordance with the above mentioned case law and taking into account the sum total of this information, it is decided that the requirement of industrial applicability is fulfilled. Should you wish to download the whole decision, just click here. To
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here.
T 814/08 – Don’t Look Behind The Fence
K’s Law – The ebook
T 814/08 – Don’t Look Behind The Fence 27 Dez 2010
Some time ago, we have seen a case where a patentee tried to argue that the allegedly novelty destroying document was not enabling – without success. The present decision shows a case where this argument proved successful. Claim 11 as maintained by the Opposition Division (OD) read: 11. A boron containing ceramic-aluminum metal composite having a density of at least 95 percent of theoretical density and being comprised of at least 60 percent by volume aluminum metal or alloy thereof, with the boron containing ceramic and at least one reaction product of the boron containing ceramic and aluminum dispersed within the aluminum metal or alloy thereof, wherein the amount of boron containing ceramic is at least 50 percent by volume of the total amount of boron containing ceramic and reaction product present in the composite. [2.1] The [opponent] cited document D5 (“the Lucas paper”) as novelty-destroying for the subject-matter of product claim 11. [2.1.1] D5 concerns the matrix microstructure and interfacial precipitation of Al-7Si metal matrix composites (MMCs) containing B4C and SiC particulates processed by a stircast technique […]. One of the MMCs under investigation comprised 25 vol.-% of B4C as a particulate material and an Al matrix alloy A 356 containing 7 wt-% Si and minor amounts of Mg, Ti and Fe […].This composite material was supplied by Dural Aluminium Composites Corporation, La Jolla, Ca., USA, in bar form. D5 […] states: “Details of the casting technique are considered proprietary by the manufacturer, but the basic processing steps include surface preparation of the reinforcement and then combining the reinforcement with the matrix by stir casting which facilitates suspension of the reinforcement in the molten metal. In all cases, the cast composites were hot isostatically pressed to reduce casting porosity.” The microstructure of the Al-B4C-MMCs is shown in the micrographs of Figure 2 on page 224 and reveals extensive reaction of the Al alloy matrix on and near the B4C interface, extending approximately 5 μm inward from the particulate surface.
The typical reaction products of B4C reinforcement and aluminium are reported to be AlB and Al4C3 […]. 2552 | 3398
T 814/08 – Don’t Look Behind The Fence
K’s Law – The ebook
In his second affidavit Dr Chen subjected three of the micrographs of the Lucas paper to image analysing by high resolution digitising, handtracing of the various phases identified and software calculating the surface areas. He finds a value of 56% of the total B4C content of the composite of Figure 2a […]. In his first affidavit, Dr Chen estimated the porosity of the composite after densification by hot pressing to be between 1% and 2%, or, in other words, the density of the hot pressed material of Lucas as 98% to 99% of theoretical density. Dr Chen finally states: “While I appreciate that on the one hand the Patentee describes in European Patent No. 1425254 only the production of composite form metal powder using an infiltration technique whilst on the other hand Lucas describes in his paper only the production of composites by stir-casting, it is my opinion that both of these production techniques could result in composite material which is very similar, if not identical. Indeed, just looking at the micrographs of the Lucas paper, I could not say by which method the illustrated composites were formed.” Dr Chen concludes that at least some of the composite material of the Lucas paper would fall within what the patentee defined in the opposed patent as novel material. [2.1.2] In the board’s view, these arguments are neither convincing as such nor sufficient to deny novelty of the subject-matter of claim 11. Firstly, D5 does not reveal the claim feature according to which “the amount of boron containing ceramic is at least 50 percent by volume of the total amount of boron containing ceramic and reaction product present in the composite.” Secondly, Dr Chen’s assumption of a theoretical density of 98 to 99% is a mere estimation which is not supported by a corresponding disclosure in D5, but apparently based on data obtained from hot pressing of Al castings […]. The board doubts whether results obtained from HIP experiments of a cast Al alloy IN738 can be readily transferred to composites containing a substantial amount of ceramic, such as boron carbide. Lastly, and most importantly, the board is of the opinion that D5 in itself is not an enabling disclosure of a preparation method for the Al-B4C MMCs under investigation, because the paper clearly states that the process of manufacture is proprietary (i.e. kept secret by the supplier of the MMCs) and involves undisclosed process steps such as surface preparation of the reinforcement, the processing temperatures, and the details of the stir casting which were not part of the skilled person’s common knowledge at the relevant time of the opposed patent. It is mere speculation when Dr Chen in his first affidavit […] tries to fill the disclosure gaps of D5 as regards the method of producing the MMCs by referring to the so-called Duralcan process (D6, published in 1988). Although D6 does disclose a stir casting process for making Al MMCs, nothing in D5 indicates with the required certainty that the process described in D6 had indeed been used by Dural Aluminium Composites Corporation in the production of the composite material supplied to Lucas and co-workers. [2.1.3] The [opponent] cited T 77/87 “as making clear that where in a single document relied on there is an inconsistency or lack of teaching, then it [was] legitimate to look behind the document to another document or relevant teaching in order to understand properly the disclosure of that document.” The [opponent] argued that a person skilled in the art in 2001 reading D5 and faced with a “stir casting” technique that was described in 1991 as proprietary would have no difficulty in selecting the Duralcan process and thus be equipped readily to reproduce the teaching of D5. The board cannot accept this argument, for the following reasons. Decision T 77/87 [4.1.6] states: “Summarising, the inconsistency between abstract document (7) and its basic original document (7’) would lead the man skilled in the art to ignore the abstract as erroneous and to consider as relevant teaching only the description according to the basic document”. Thus T 77/87 refers to an inconsistency (an obvious error, a technical impossibility) in a document and how it is resolved by the skilled person. It does not deal with a situation where essential information is missing or deliberately withheld, as in the present case. 2553 | 3398
T 814/08 – Don’t Look Behind The Fence
K’s Law – The ebook
In the case of D5 there is no error or technical impossibility which could or should be resolved by referring to some related basic document. [2.1.4] According to T 1437/07 [25], a “disclosure in a prior art document is novelty-destroying only if the teaching it contains is reproducible. This need for an enabling disclosure is in conformity with the principle expressed in A 83. Thus, the requirements of sufficiency of disclosure are identical for a prior art document and a patent.” As pointed out above, the Lucas paper does not enable a person of ordinary skill in the art to produce the MMCs under investigation. It is also not clear and proven beyond reasonable doubt that the composite material supplied by Dural Aluminium Composites Corporation, La Jolla, Ca., USA, was made by the Duralcan process disclosed in D6. [2.1.5] The board therefore concludes that D5 does not anticipate the subject-matter of claim 11. Should you wish to download the whole document, just click here. To have a look at the file wrapper, click here. NB: This decision has already been reported on Le blog du droit européen des brevets.
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R 17/09 – Man In The Street
K’s Law – The ebook
R 17/09 – Man In The Street 25 Dez 2010
Board members have to be very cautious in the way they address parties, lest they be accused of partiality, as the present decision on a petition for review shows. The applicant whose application for a revolutionary invention (published as WO 2004/114595) had been refused - and whose appeal was deemed not to have been filed because the appeal fee was not paid in time (decision T 1465/08) – filed a lengthy petition for review in which he raised inter alia an objection of partiality: “ […] There are elements which can support the hypothesis of the existence of the requirements prescribed by the article 24(3). As concerns the representative’s work, the appellant could raise the same doubts, even if this is not relevant for the petition. I. The appellant thinks that the Board changed the grounds of its decisions, after having received the letter dated July 20th. In this way, he contravened the art. 15.5 of rpba in order to support its grounds (see points 1.1 and 1.2 of the present document). II. The Board seemed to know that this request of patent is linked to many multinational interests (see letter dated July 20th) even if no other multinational company has opposed this patent. As a matter of fact, in case of the issue of a patent, other multinational companies should pay the rights or to be sued for penal and civil reasons. The Board has defined the applicant as “the man in the street”. After they had used this expression too many times, the applicant highlighted the fact that his application was linked to the interests of many multinational companies. The Board members answered they knew it and then they stopped using the expression “man in the street”. On the appellant’s opinion, this reaction is very strange, and he could assume that the Board could have been affected by the principles of the art. 24(3) where the suspect about the Boards possible interests is sufficient in order to be judged in relation to the article. In fact, no multinational company opposed to the appellant’s patent. However, the appellant is already in touch with the representatives of several multinational companies which are using the idea and principles of this patent demand. Some multinational companies contested the validity of his Italian patent, already issued, and they said to be confident of EPO’s decision. However, the same multinational companies have not opposed to the Italian patent how it is legally demanded, and how the appellant told them to do. Other multinational companies, when the European application was just being carried out, they contested the validity of the patent request, on the basis of grounds not legally valid. For this reason, if the appellant’s European patent was accepted, they would be subjected to serious legal, civil and penal consequences. That’s why, it is possible to assume that the Board’s actions and decisions (violating several articles and rules of EPC) could be linked to those interests. […]”. The Enlarged Board does not share this opinion: [5] The first ground raised in the petition is under A 112a(2) (a), namely that members of the Board 3.5.03 took part in the case despite the provisions of A 24(3) in view of a suspicion that the Board’s actions and decisions could be linked to the interests of multinational companies opposed to the petitioner’s patent application. The only evidence relied on for any such link is that Board 3.5.03 used the term “man in the street” of the petitioner. But this was in the context of Board 3.5.03 stating that it treated al1 parties equally. In English the term “man in the street” has no pejorative associations, but is commonly used to describe an average citizen. The Enlarged Board can see no support whatsoever for the allegation that members of Board 3.5.03 were influenced in their decision by any bias against the petitioner or any bias in favour of large multinational companies. The petition thus cannot succeed on this ground. […] Should you wish to download the whole decision or have a look at the file wrapper, just click here.
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T 1624/08 – Still Credible
K’s Law – The ebook
T 1624/08 – Still Credible 24 Dez 2010
As the Boards have often pointed out, when comparative tests are chosen to demonstrate an inventive step, the nature of the comparison with the closest state of the art must be such that the effect is convincingly shown to have its origin in the distinguishing feature of the invention (see e.g. T 197/86). As we shall see in the present decision, this does not mean that minor differences in the experimental conditions cannot be accepted, especially when the effect obtained is considerable. The patent proprietor filed an appeal after the Opposition Division had revoked its patent. After having found the claimed subject-matter to be novel, the Board assesses compliance with A 56. [4.1] The patent in suit is directed to a method for producing an amide involving the preparation of an intermediate mixed anhydride. It is not disputed by the parties that document D3 also relates to such a method, involving the same starting products than the process according to claim 1 in dispute and that document D3 discloses already the combination of Boc-amino protecting groups (named tertiarybutyloxycarbonyl) with the use of N-methylmorpholine as a base […]. Although document D3 describes a specific order of addition of the reactants, namely the addition of the carboxylic acid activating agent, i.e. isobutyl chloroformate, to Nmethylmorpholine and an acid, i.e. carbobenzoxyglycyl-L-phenylalanine […], it is further accepted by both parties that document D3, in its general teaching, does not define the order of addition of the reactants […], so that the presently claimed process is encompassed by the teaching of document D3. Therefore, the Board considers, in agreement with both parties, that document D3 represents the closest state of the art and, hence, takes it as the starting point for assessing inventive step. [4.2] Having regard to this prior art, the [patent proprietor] submitted that the technical problem underlying the patent in suit was to provide a method for producing an amide improving the selectivity for the desired product, and improving thereby the yield of the reaction. [4.3] The solution to this problem proposed by the patent in suit is the method according to claim 1, which is characterized by the specific order of addition of the reactants, i.e. adding the carboxylic acid and the Nmethylmorpholine to a solution of a carboxylic acid activating agent. [4.4] In order to demonstrate that the technical problem as defined above has effectively been solved by the claimed method the [patent proprietor] relied on the results observed in example 12 and comparative example 2 of the patent specification. According to example 12 the claimed process involving the required order of addition of reactants, i.e. adding a substrate solution containing the acide and N-methylmorpholine to the carboxylic acid activating agent isobutylcarbonate, achieves a yield of 96,0% of the desired amide. When reverting the order of addition of the reactants in comparative example 2, namely when adding the isobutylcarbonate to the acide and Nmethylmorpholine the yield achieved is only 60.7%. It is thus credible that the claimed process which is characterized by the specific order of addition of the reactants improves the yield of desired product. The Board is thus satisfied that the technical problem as defined above is effectively solved by the claimed process. The [opponent] contested the fairness of the comparison arguing that during the work-up of the product the acidic treatment was not exactly the same in example 12 and in comparative example 2. In addition, the method used for determining the yield was also different. However, in both examples the obtained organic layer was treated with the same acid, i.e. hydrochloric acid which differed only in its concentration (1% versus 1.8%). In addition liquid chromatography was used for the determination of yields in both examples, although example 12 was carried out with high performance liquid chromatography whereas comparative example 2 involved silica gel liquid chromatography.
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T 1624/08 – Still Credible
K’s Law – The ebook
The [opponent] who contested the results observed and had thus the onus of proof of his allegation did not rely on any evidence substantiating that these minor differences have an impact on the yield obtained. In these circumstances, in the present case where a large difference of yield in the desired amide is observed, i.e. 60% according to the comparison versus 96% according to the invention, which represents an increase of about 50% in yield, the improvement shown by the [patent proprietor] is so large that it remains credible irrespective of the above differences (see T 1711/06 [3.5.2]). This argument of the [opponent] must therefore be rejected. Notwithstanding this finding, the Board finally found the requests on file to lack inventive step and dismissed the appeal. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here. For related decisions, click here and here.
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T 1079/07 – A Matter Of Courtesy
K’s Law – The ebook
T 1079/07 – A Matter Of Courtesy 23 Dez 2010
The Opposition (OD) having revoked the opposed patent for the reason that the claimed invention was not sufficiently disclosed, the patent proprietor filed an appeal. The Board comes to the conclusion that none of the requests on file are allowable. It then deals with the opponent’s request for apportionment of costs. [4.1] A 104(1) provides that “each party to the opposition proceedings shall bear the costs it has incurred, unless the Opposition Division (OD), for reasons of equity, orders, in accordance with the Implementing Regulations, a different apportionment of costs”. By virtue of A 111(1) this provision applies also to opposition appeal proceedings. [4.2] In support of its request for an apportionment of costs, the [opponent] has made reference to decision T 937/04 of the boards of appeal, in which it was held that [a patent proprietor], by informing solely the EPO and not the other parties only one working day before the oral proceedings (OPs) of its intention not to attend the OPs, had failed to exercise all due care required. The then deciding board based this finding on the understanding that, if a party decided only shortly before the date scheduled for OPs that it was not going to attend them, its equitable obligations extended to informing any other parties to the appeal proceedings of its decision not to attend OPs (see point [5.1] of the reasons for the decision). In the present board’s view, the factual situation of the case at issue is decisively distinguished from that of case T 937/04 because of the fact that the [patent proprietor] had informed the EPO of its intention not to attend the OPs already two weeks before the scheduled date of the OPs. Under these circumstances, the [patent proprietor] cannot be held responsible for an unfortunate course of actions as a consequence of which the information reached the [opponent’s] representative only two working days before the scheduled date, nor for the fact that travel arrangements for the representative had been such that they could no longer be cancelled at that time. Already for this reason a different apportionment of costs in favour of the [opponent] is not considered to be equitable. [4.3] Besides, the board does not share the standards based on which the discretion in case T 937/04 was exercised. In the present board’s view, a party to proceedings before the EPO has a right to be heard in OPs but has no obligation to attend OPs to which it had been summoned (see for instance T 544/94 [5]). Thus, to inform the EPO and any other party to the proceedings about the intention not to attend OPs in due time before the scheduled date is a matter of courtesy and respect rather than a procedural obligation to be met. In order to judge a late announcement of an intended absence to OPs as constituting a “culpable action of an irresponsible or even malicious nature” (see T 937/04 [5.1] of the Reasons) strong supporting evidence for such an allegation would be required. Moreover, the mere fact that a party does not attend OPs does not mean by itself that its case will be lost, making the presence of the other party unnecessary. The outcome of a case cannot be certain until the board has taken its final decision. There can be no doubt in this context that views expressed in a board’s preliminary communication are nothing but provisional assessments which are by no means binding. Thus, however critical such views would be, there is no guarantee that they reflect the final decision. Therefore, each party is obliged to decide on its own and independently from the behaviour of another party to the proceedings whether or not to attend OPs. […] The request of the [opponent] for apportionment of costs is rejected. Should you wish to download the whole decision, just click here. 2558 | 3398
T 1079/07 – A Matter Of Courtesy
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T 716/08 – Does It Work?
K’s Law – The ebook
T 716/08 – Does It Work? 22 Dez 2010
This decision deals with the refusal of an application by the Examining Division (ED). Claim 1 of the main request on file read: 1. Use of an 48 kD infectious Salmon anaemia virus (ISAV) protein or an immunogenic fragment of said protein, said protein or immunogenic fragment thereof having an amino acid sequence that is at least 70% homologous to the amino acid sequence as depicted in SEQ ID NO: 2, for the manufacturing of a vaccine for combating ISAV infections. The Board carries out an inventive step assessment, and dwells on one of the less known steps of the problemsolution approach (incidentally, the one which, as far as I can see, candidates are not expected to implement in papers B and C of the EQE): the evaluation of whether the objective technical problem is indeed solved. [11] Starting from document D6 and in the absence of evidence of an improvement over the subject-matter disclosed in that document, the problem to be solved is considered to be the provision of an alternative vaccine against ISAV. [12] The solution to this problem as stated in the claims is the use of a 48 kDa protein having the sequence described in SEQ ID No. 2, variants thereof or related compounds, such as recombinant DNA molecules. [13] A first issue in the present case is whether or not the disclosure in the application provides evidence that the problem [...] above has been solved. In the decision under appeal the ED held that it was not plausible, on the basis of the disclosure in the application and in particular Examples 4 and 5, that the solution, as then claimed in claims 10 to 16, solved the problem underlying the application. [14] The boards have regularly considered in the context of the evaluation of inventive step whether or not “the problem is solved” (see for example T 187/93 [19] or T 939/92 [2.4.1 or 2.5.1]) and have in cases where they were not satisfied that this was so, i.e. that what was claimed was de facto a solution to the problem, denied an inventive step (see for example T 210/02 [5, § 10 et seq.] or T 1329/04 [6-11]) or required a reformulation of the problem (see for example T 939/92 [2.5-6] or T 87/08 [6.3]). [15] The verification of whether or not the claimed solution actually solves the problem, i.e. that the claimed subject-matter actually provides the desired effect, is according to T 1329/04 [12] to be made on the basis of data in the application. Common general knowledge at the priority date may be used to interpret the teaching in an application or a patent (see for example T 293/04 [21] or T 665/05 [16]). Post-published evidence can only be used to back-up the teaching derivable from the application (for example T 1329/04 [12]). [16] As to the quality of the evidence, “absolute proof” of the achievement of an effect is not required for the effect to be “plausible”. Thus, in the case of a vaccine, it is not required that protective immunity is actually demonstrated in the target organism. It suffices that the data indicate that a compound could be a useful candidate for a vaccine (for example T 903/05 [19]; T 391/07 [20]; T 394/06 [13, in combination with page 6, last paragraph to page 8, first paragraph of “Facts and Submissions”.) [17] The present application discloses in Example 2 that the 48 kDa protein of ISAV was found by screening of a bacteriophage lambda cDNA library with an anti-ISAV polyclonal rabbit serum. [18] In a lambda bacteriophage cDNA library each bacteriophage particle expresses on its surface a protein corresponding to the cDNA contained in that particle. By probing such a library with a monoclonal antibody preparation or a polyclonal serum, proteins reacting with the antibodies, and thus also the corresponding cDNAs, are identified. [19] In the present case the antibodies used for probing the library are in the form of a polyclonal serum obtained from rabbits immunized with whole ISAV particles. 2560 | 3398
T 716/08 – Does It Work?
K’s Law – The ebook
[20] At the priority date it was known from document D4 that ISAV had four structural proteins having molecular masses as determined on an SDS-gel of 74, 53, 43 (or 46 depending on the virus isolate) and 26.5 kDa [...]. [21] The appellant submits that the 53 kDa protein disclosed in document D4 is equivalent to the 48 kDa protein of the application. The board has no reason to doubt this submission. Thus, it is concluded that the 48 kDa protein of the application is one of the four viral structural proteins of ISAV as disclosed in document D4. [22] It is, as the appellant agreed at oral proceedings, common general knowledge that structural proteins of a virus, i.e. the proteins involved in formation of the viral capsid, or in the case of enveloped viruses, additionally those situated in the viral envelope, are potential candidates for the inclusion in subunit vaccines. This is so because structural proteins are present at the outside of the virion and are thus exposed to the immune system. Therefore, it is expected that upon infection with ISAV, antibodies are preferably elicited against these structural proteins and that these antibodies may achieve neutralization of the virus. Therefore, vaccine preparations containing, instead of for example the whole inactivated virus, only one (or more) of the structural proteins, i.e. so-called subunit vaccines, would also be expected to have the same effect, i.e. to elicit neutralizing antibodies. [23] That common general knowledge of the skilled person is reflected by the disclosure in document D6. It reports that one of the structural proteins of ISAV, SP-1 which, as submitted by the appellant at the oral proceedings, corresponds to the 74 kDa protein disclosed in document D4, was identified by screening with a polyclonal anti-ISAV rabbit serum [...] and that this protein is expected to induce a protective immune response in fish against infection with ISAV [...]. [24] In view of the case law referred to in points [15] and [16] above and in the light of the observations in points [17] to [23], in particular point [22] above, the board considers that the mere presence of antibodies against the 48 kDa protein in the rabbit serum used for screening the lambda bacteriophage cDNA library according to Example 2 of the application is evidence that the 48 kDa protein is antigenic and, consequently, could also be a useful constituent of a subunit vaccine. [25] The polyclonal serum according to the application was obtained after immunisation of rabbits with ISAV particles. The target organism for vaccination with the 48 kDa protein is however salmon. In the decision under appeal the examining division states that immunogenicity in rabbits does not provide a basis to a claim to vaccines for fish [...]. The board notes however, that there is no evidence before it demonstrating that the properties of the immune system of salmon and rabbits are of a totally different nature. [26] Thus, in conclusion the board is satisfied in view of Example 2 that the subject-matter of the claims is a solution to the problem formulated above, i.e. the provision of an alternative vaccine against ISAV. [27] As a consequence the post-published evidence, i.e. document D7, is not needed to back up the disclosure in the application. However, for completeness, the board notes the following with regard to the examining division’s view on document D7 [...]. [28] Document D7 discloses that salmon were vaccinated with the 48 kDa protein expressed in E. coli (two groups) or with saline (two groups), respectively. All groups were challenged eight weeks after vaccination by infection with ISAV. The cumulative mortality of the saline group was 75%, that of the vaccinated group 57% [...]. Thus, in the board’s view, these data demonstrate that the E. coli-expressed 48 kDa ISAV protein has a protective effect against IASV infection. Whether or not this effect is “very significant” is irrelevant, since absolute proof of the usefulness of the compound as a vaccine is not necessary […]. Finally the Board found the claims on file to be inventive. Should
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T 1098/07 – A Pardonable Error
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T 1098/07 – A Pardonable Error 21 Dez 2010
This decision deals with an appeal by the opponent following the rejection of the opposition by the Opposition Division (OD). The Board comes to the conclusion that there is no reason not to maintain the patent as granted. It then deals with a request for reimbursement of the appeal fee, based on a procedural violation. The Board is of the opinion that not all failures to consider evidence are substantial procedural violations: some are more pardonable than others. [8.1] The [opponent’s] contentions in this regard concern the decision’s failure to mention or discuss in detail material and arguments submitted in the course of the opposition proceedings. Drawing E1 and photograph E2 are undoubtedly absent in the decision, as is any mention of the sketch drawn on a flipchart during the oral proceedings (OPs) before the Board. E3 to E11 on the other hand, though indicated, are not discussed in any detail. [8.2] Failure to consider evidence will normally constitute a substantial procedural violation in that it deprives a party of basic rights enshrined in A 117(1) and A 113(1). Thus, in T 135/96 [3], ignoring documents (and arguments) relevant to inventive step was found to violate the party’s right to be heard. T 1110/03 made a similar finding where indirect evidence substantiating an allegation of fact relevant to novelty was disregarded. [8.2.1] In this Board’s opinion, certain factors may nevertheless mitigate the severity of the violation. Thus, whether or not a failure of the decision to expressly mention material offered by a party in support of its case constitutes a substantial procedural violation, in particular of the rights to present evidence and be heard, will depend on the (prima facie) significance and evidentiary value of such material. Here the questions to be asked are: what facts is it intended to prove, how relevant is it to these facts and how likely is it that it will prove them? The circumstances under which the material is submitted - e.g. whether its role is made sufficiently clear and whether it is accompanied by arguments - may conceivably also play a role. [8.2.2] Turning first to E1 and the sketch, the Board notes that E1 is merely an enlargement of part of a figure in D1, produced to better view its contents. The sketch is intended to illustrate the play of forces in the claimed coupling as understood by the [opponent]. Both serve merely as aids in distilling facts from the patent and the prior art and should rather be considered an integral part of the arguments. In as far as these are addressed in the decision […] the Board sees no reason why such aids should find an express mention in the decision. [8.2.3] Photograph E2 of a coupling element was presented (together with E1) with the submission of 5 September 2006 “for easy assessment of the disclosures of D1”. E3 to E11 were said to pertain to an object sold by the Proprietor and were intended for “a better understanding/assessing of the ... patent” […]. As noted above, such material, which has no apparent link to D1 respectively the patent, can have little bearing on the relationship between D1 and the claimed invention. That is determined solely by the terms of D1 and the patent respectively. The significance and evidentiary value of this material are plainly limited. What is more, this material was accompanied by little or no written comment. The only relevant passages are found in the letter of 5 September 2006 […] and 14 March 2007 […]. These state that it serves a better understanding of D1 and the patent, while describing E2 as “upper, front and side real size photographic views of the collar 11 of Figure 1 [of D1]”. No detail is given as to the material’s origin or how it might improve an understanding of D1 or the patent. Otherwise the submissions refer only to D1 (or D2) and the terms of the patent. Likewise, the minutes of the OPs before the OD, which are uncontested by the [opponent], also do not record extensive arguments concerning the above material. In summary E2 to E11 thus, objectively, have little bearing on the main issues, and the [opponent] has made little effort to demonstrate otherwise before the OD. It appears unreasonable to the Board to require the OD to fully acknowledge, i.e. mention and discuss in detail, such prima facie irrelevant material, especially where the [opponent] has himself not made this effort. The Board would agree that the OD’s failure to do so may not demonstrate the highest level of procedural rectitude. However, given that the underlying issue is addressed […], it is a pardonable error that has not deprived the [opponent] of any fundamental rights. 2562 | 3398
T 1098/07 – A Pardonable Error
K’s Law – The ebook
[8.3] As regards the further contention that the decision fails to address crucial arguments and (as a result) does not present a full line of reasoning, the Board firstly notes that according to established jurisprudence, cf. T 70/02, R 68(2) EPC 1973 does not require a decision to deal with all arguments in detail. In addition to the logical chain of facts and reasons, it should include some reasoning regarding the crucial points of dispute. [8.3.1] In this regard, the decision does in fact address the central discussion concerning the terms “conical” and “tapering”, which E1 to E11 and the sketch were intended to illuminate, see reasons 5, first three paragraphs. The first paragraph summarizes the [opponent’s] arguments as “conical ... also encompasses tapered elements” and “a frustum-conical piece ... could also be used to describe a straight-sided one”. In the following paragraph the decision then refutes these arguments by stating that “anything that is defined as conical is by definition curved and tapered”. These passages are admittedly somewhat succinct. However, it shows that the OD identified as a central point of contention differences in interpretation of the term “conical” and that it understood this term in a narrower sense than just “tapered”. In the third paragraph this interpretation then serves to differentiate the invention from D1, which, in the division’s view, does not possess conically shaped tongues or a frustum-conical support element. [8.3.2] These elements together constitute what the Board recognizes as a line of reasoning, which gives a fair idea of where the division saw differences between the invention and D1, and why. In the Board’s view this information should be sufficient to enable the adversely effected party to identify cardinal points of dispute namely the differences in interpretation of “conical” - and to draft its appeal accordingly. Here also the Board is unable to detect a substantial procedure violation. [8.4] The Board cannot allow the appeal on its merit, see above, nor has it found that a substantial procedural violation occurred. As neither of the conditions for reimbursement of the appeal fee under R 67 are met, the request for reimbursement must fail. Should you wish to download the whole decision, just click here. To look at the file wrapper, click here.
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T 296/08 – Essential Yet Unclaimed?
K’s Law – The ebook
T 296/08 – Essential Yet Unclaimed? 20 Dez 2010
When a feature is presented as essential in an application, does it have to be incorporated into the claims ? The present decision suggests that there are special cases where it does not. Claim 1 of the divisional application refused by the Examining Division (ED) read: 1. A coning compensation method for use in a strapdown inertial navigation system, the method utilizing the incremental angles of rotation of a coordinate system expressed as a vector Δθ(k,n,m) and measured in successive time periods to obtain an estimate of the coning compensation for NK successive time periods, Δθ(k,n,m) corresponding to the (mNK+nK+k)’th time period, k being equal to 5, the method comprising calculating the R(m) component of the coning compensation according to the formulas
n taking on integer values from 1 to H, H being equal to 3, U(h,k) and V(h,k) being predetermined numbers for all values of h and k, W(h) being a predetermined number for each value of h, and the symbol x denoting the vector cross-product operation. The Board first states that the claims on file overcome the A 76 objection and then continues: [2] A further objection under A 84 raised by the ED with respect to the independent claims 1 and 13 is not confirmed by the Board in view of extensive arguments put forward by the appellant in its statement of grounds. The ED argued that the term 1/2 R(0,m) + R(m) was an essential feature of the invention because it was stated in the description of the parent application as originally filed: “The sum of quantities 1/2 R(0,m) and R(m) is the coning compensation and corresponds to the integration of the second and third terms in equation (2).” This term should therefore appear in the independent claims to meet the requirements of A 84. [3] However, the original versions of the corresponding claims 1 and 3 of the parent application do not contain this feature. It is rather indicated in these claims (see the last feature in each), that: “...the estimate of the coning compensation comprising R(m)”. Therefore the estimate of the coning compensation includes R(m) as an essential element. This is, however, not in contradiction to the coning compensation being the sum of 1/2R (0,m) and R(m). As far as the problem underlying the claimed subject-matter is concerned, the relevant prior art determines whether there is a difference solving a reasonable technical problem, which would be the objective technical problem, accordingly. However, in the absence of any relevant prior art - only documents describing technical background (category A) are cited in the European Search Report - there is no reason to limit the claims any further and reformulate the technical problem.
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T 296/08 – Essential Yet Unclaimed?
K’s Law – The ebook
[4] Therefore the Board concludes that the subject-matter of the independent claims meets the requirements of A 76 and A 84 and sees no reason to question novelty and inventive step over the prior art. […] I may be wrong, but I understand this to mean that even if a feature was described as essential in the application (which is not beyond all doubt in the present case), it does not have to be incorporated into the claims if the claims as filed did not contain it. In such a case, will it be necessary to amend the description in order to eliminate the discrepancy between the description and the claims? The Guidelines (C-III 4.3(ii)) have an interesting paragraph on inconsistencies regarding apparently essential features: … it may appear, either from general technical knowledge or from what is stated or implied in the description, that a certain described technical feature not mentioned in an independent claim is essential to the performance of the invention, or, in other words, is necessary for the solution of the problem to which the invention relates. In such a case, the claim does not meet the requirements of A 84, because A 84, first sentence, when read in conjunction with R 43(1) and (3), has to be interpreted as meaning not only that an independent claim must be comprehensible from a technical point of view but also that it must clearly define the subjectmatter of the invention, that is to say indicate all the essential features thereof (see T 32/82). If, in response to this objection, the applicant shows convincingly, e.g. by means of additional documents or other evidence, that the feature is in fact not essential, he may be allowed to retain the unamended claim and, where necessary, to amend the description instead. The opposite situation in which an independent claim includes features which do not seem essential for the performance of the invention is not objectionable. This is a matter of the applicant’s choice. The examiner should therefore not suggest that a claim be broadened by the omission of apparently inessential features; ... (my emphasis) I for one would be very reluctant to amend the description because such an amendment definitely invites A 123(2) objections in later opposition or nullity proceedings. Depending on the exact wording of the application before and after the amendment, such objections might be very hard to counter. So unless the Examiner obliged me to do so, I would not take the initiative of amending the description. Should
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Interpretative Spotlight: “a”
K’s Law – The ebook
Interpretative Spotlight: “a” 18 Dez 2010
[1] Claim 1 as granted was directed to “a method to detect the presence of a bacterial species” (in bold by the board), whereas claim 1 of the main request relates to “a method to simultaneously detect the presence of bacterial species” […]. In the board’s judgment, it is clear from this initial wording that both methods are concerned with different subject-matter. Indeed, when reading the description of the patent-in-suit, these two methods correspond to two different preferred embodiments, namely a first embodiment directed to detection of a single bacterial species and a second embodiment directed to the simultaneous detection of several bacterial species […]. The subjectmatter of claim 1 as granted has thus now been changed to a different embodiment and thereby, the scope of protection of the claim has been extended. [2] Contrary to [the patent proprietor’s] argumentation […], the board does not see any indication in granted claim 1 or in any of its dependent claims that could cast serious doubts on the meaning indicated above of granted claim 1. The board fails to see any ambiguity in the initial wording of granted claim 1 nor is this ambiguity introduced by any of the other granted claims. As stated in the description of the patent-in-suit […], the use of several primers specific for a single bacterial species in a multiplex amplification or multiplex PCR may well be performed to increase the ubiquity of the assay […], as rightly pointed out by [the opponent]. Granted claim 8 may also be understood as referring to a sample consisting of one or more bacterial colonies (isolates or strains) of a single bacterial species (target species or species of interest) which might be used to check both the ubiquity and the specificity of the primer or probe used, as also explained in the patent-in-suit […]. [3] [The patent proprietor] referred to three decisions of the Boards of Appeal, namely decisions T 190/99, T 579/01 and T 371/88 […], which, in its opinion, support its case […]. The board cannot however follow [the patent proprietor’s] arguments for the following reasons: [3.1] As stated [above], the initial wording of granted claim 1 has a clear and unambiguous technical meaning and no ambiguity is introduced by any of the dependent claims or by claim 1 itself. For a mind willing to understand, as defined in decision T 190/99, the meaning of, or the interpretation given to, granted claim 1 is clear and technically meaningful. Indeed, it corresponds to one of the preferred embodiments explicitly disclosed as such in the patent-in-suit. Thus, there is no need to seek for alternative or different interpretations of granted claim 1. [3.2] Indeed, as indicated in decision T 579/01, the “scope of protection” refers to the total protection conferred by the granted claims and not by the individual granted claims. However, the subject-matter of claim 1 of the main request cannot be seen as being comprised within the “total scope of protection” conferred by, or associated with, the claims as granted because none of the granted claims, explicitly or implicitly, covers a method to simultaneously detect the presence of several bacterial species, i.e. the subject-matter of claim 1 of the main request. [3.3] According to decision T 371/88, the first condition for deleting or replacing a restrictive feature from a granted claim by a less restrictive feature is that the restrictive feature is so unclear in its technical meaning in the context of the claim that the extent of protection can only be determined by interpreting the claim by reference to the description of the patent (cf. T 371/88 [part (a) of the headnote]). In the present case, this first condition is certainly not given, since, as discussed [above], the technical meaning of the feature “a bacterial species” in granted claim 1 is completely clear, unambiguous and not open to interpretation. Thus, the first criterion set out in decision T 371/88 does not apply to the present case. [4] Therefore, the main request is considered to contravene the requirements of A 123(3). 2566 | 3398
Interpretative Spotlight: “a”
K’s Law – The ebook
Should you wish to download the whole decision (T 837/07), just click here. To have a look at the file wrapper, click here.
2567 | 3398
T 837/07 – One Last Chance?
K’s Law – The ebook
T 837/07 – One Last Chance? 17 Dez 2010
The main request and the first and second auxiliary requests on file having been found to contravene A 123(3), A 84 and A 123(2), respectively, the Board has to deal with the request to adjourn the oral proceedings (OPs) in order to give the patent proprietor the possibility of drafting and submitting a further auxiliary request. In case you had doubts – this request is not successful: [12] Article 12(2) of the Rules of Procedure of the Boards of Appeal (RPBA) requires the statement of grounds of appeal to contain a party’s complete case. Article 13 RPBA, which deals with the amendments to a party’s case, states in paragraph (1) that “any amendment to a party’s case after it has filed its grounds of appeal ... may be admitted and considered at the Board’s discretion” and that this discretion “shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.” [13] The objections of lack of clarity of the subject-matter of claim 1 of the first auxiliary request were already raised and discussed in detail at the OPs before the first instance […]. Although, in contrast to the board […], these objections were considered not to arise from the amendments made during the opposition proceedings and they were not decided upon by the opposition division (OD) […], they were nevertheless on file and part of the proceedings - as shown by their presence in [the opponent’s] statement of grounds of appeal, even though admittedly under other EPC articles […]. However, none of the claim requests filed by [the patent proprietor] in its grounds of appeal or in its reply to those of [the opponent] - took into account these objections. [14] It was only after the board’s communication issued under Article 15(1) RPBA in which the parties’ attention was drawn again to these objections […], that [the patent proprietor] filed - one month before the date scheduled for the oral appeal proceedings - a second auxiliary request specifically addressing them and maintaining a first auxiliary request that clearly did not address any of these objections […]. [15] It derives directly from the review nature and the judicial character of the appeal proceedings (cf. “Case Law”, supra, VII.E.1, page 821), that claim requests filed at the OPs in appeal before the board are to be considered in principle as late-filed requests and, as a result thereof, their admissibility into the appeal proceedings is to be fully justified before the board can examine them and decide thereupon. In the present case and in view of the facts mentioned […] above, the board considers that, at this stage of the proceedings and in the light of the amendments introduced into [the patent proprietor’s] second auxiliary request […], the introduction of a new auxiliary request into the appeal proceedings with the sole purpose to overcome the very same formal objections which allegedly were already addressed by that second auxiliary request, cannot be justified. [16] According to [the patent proprietor], it is established case law of the Boards of Appeal that the patentee should always be given a “last chance” to save its patent […]. It has been thoroughly discussed and clearly established by the Boards of Appeal that there is no absolute right for a patentee to such a “last chance” request. On the contrary, the admissibility of a late filed request is always a matter of the board’s discretion. Moreover, as stated inter alia in decision T 446/00 [3.3], the concept of a “last chance” suggests one last chance at the end of the proceedings and not multiple “last chances” on numerous occasions during the course of the appeal. In the present case, the possible admission into appeal proceedings of a new auxiliary request could hardly be seen as the patentee’s “last chance” since that new request would only be filed to overcome formal issues discussed at length and in detail during both opposition and appeal proceedings but it would still leave completely open to discussion substantive issues on novelty and inventive step raised during these proceedings […]. [17] Thus, the board comes to the conclusion that [the patent proprietor’s] request for an adjournment of the OPs in order to draft and submit a set of claims as a further auxiliary request is, at this stage of the proceedings and after consideration of all the above facts, not allowable and cannot be granted. […] The patent is revoked. 2568 | 3398
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K’s Law – The ebook
Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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T 1728/07 – On Chemical Nonsense
K’s Law – The ebook
T 1728/07 – On Chemical Nonsense 16 Dez 2010
This decision contains an interesting discussion of whether a correction of chemical formulae in the claims led to an inadmissible extension. Claim 1 of the sole request before the Board was very similar to claim 5 of the patent as granted: 1. A process for producing florfenicol ([R-(R*, S*)]-2,2,-dichloro-N-[1-(fluoromethyl)-2-hydroxy-2-[4ethylsulfonyl) phenyl]ethyl]acetamide), which comprises: (a) preparing a compound of formula (I):
wherein R is CH3S02; and R” is aryl, halo aryl, benzyl, substituted benzyl, C1 to C6 alkyl, C3 to C7 cycloalkyl, and haloalkyl, and the configuration of the oxazoline ring is 4R trans by contacting a compound of formula II:
wherein R is as described above, and R’ is H, C1 to C6 alkyl, C3 to C7 cycloalkyl, benzyl, substituted benzyl, or aryl; with a reducing agent in a protic solvent, in a suitable reaction vessel, to obtain a compound of formula III:
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K’s Law – The ebook
wherein R is as described above, (b) then in the same reaction vessel reacting said compound of formula III, with a compound of the formula IV: R" - C ≡ N (IV) to obtain a compound of the formula I, and (c) converting said compound of formula (1) to florfenicol. Here is what the Board had to say on the alleged inadmissible extension: [2.1.1] The sole objection raised under A 100(c) concerned the question of whether or not the amendments of the structural formulae representing oxazoline derivatives, found to be allowable under R 88 EPC 1973 (now R 139 EPC 2000) during examination proceedings, introduced subject-matter extending beyond the content of the application as filed. Since these formulae are still present in the main request […], it must be decided whether these amendments represent corrections of an obvious error within the meaning of R 139. [2.1.2] Throughout the patent application as originally filed, the compounds of formula (I) are depicted as bearing an amino substituent at position 4 of the oxazoline ring, as illustrated by the following formula appearing in claim 1 as originally filed […]:
In the corresponding formulae disclosed in the main request, and in the specification of patent in suit, the amino substituent at position 4 of the oxazoline ring (H2N-) has been replaced by hydrogen (H-).
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K’s Law – The ebook
According to R 139, second sentence, “the correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction”. This means that it must be immediately apparent to the skilled person that (i) an error had occurred and (ii) how it should be corrected. [2.1.3] Concerning requirement (i), it is noted that the application as originally filed discloses the oxazoline compounds of formula (I) as being obtained by reaction of an aminodiol of formula (III) with a nitrile of formula (IV) […]. In examples 1 and 2, the aminodiol sulfone, referred to as ADS […], is reacted with benzonitrile and dichloroacetonitrile, respectively. Mapping atoms from the starting material to product, the skilled person would immediately recognise that there was an inconsistency in the substitution pattern of the carbon atom bearing an amino substituent in formula (III) and the corresponding carbon atom in formula (I), that is, between the H2N┼H fragment in the former and the H2N┼N fragment in the latter. Furthermore, in the application as originally filed, it is stated that “the present invention relates to intermediates to florfenicol” […], which is a known compound having the following structure (reproduced from document D2):
On examining the structure of florfenicol (see 2’-position) and comparing it to that of formula (III), the skilled person would have immediately recognised that the H2N┼H fragment was intended to be conserved in the desired end product, and would therefore have identified the H2N┼N fragment in formula (I) as being erroneous. This would have further been confirmed by the fact that the configuration at the oxazoline ring is specified to be “4R trans” in the application as originally filed […]. The term “trans” in this context can only be intended to denote the relative arrangement on opposite sides of the ring of a substituent at position 4 and a substituent at position 5. The skilled person would therefore note a further contradiction, since the designation “trans” does not make any chemical sense for the structure depicted for formula (I) as originally filed, owing to the presence of two substituents at position 4. The [opponent’s] argument that it could not be excluded that formula (I) as originally filed was in fact the intended structure owing to the use of the terms “analogs” and “comprising” is not convincing: There is no mention whatsoever in the originally filed application of the presence of an oxidising agent or of the possibility of an additional oxidising step. It is noted that the error in the oxazoline formula is also present in the examples, where an oxidising agent is certainly not present. Moreover, the wording used in claim 1, step (b), namely, “reacting a compound of formula III, with a compound of the formula IV ... to obtain a compound of the
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formula I” (emphasis added) makes it clear that the compound of formula (I) is the direct product of the reaction between the compounds of formulae (III) and (IV) […]. The skilled person would therefore recognise that an oxidation of the carbon atom at position 4 of the oxazoline ring was not intended and disregard this as being a chemical nonsense, particularly in view of the stated aim of providing “an efficient and economical process for preparing florfenicol” […]. As explained above, an oxazoline intermediate containing an H2N┼N fragment would not be suited to this aim. Therefore, the board concludes that the skilled person would have no doubt that an error had occurred in the structure depicted for formula (I) as originally filed (cf. requirement (i)). [2.1.4] With respect to requirement (ii), it must be decided whether the corrected feature is directly and unambiguously derivable from the content of the application as originally filed taken as a whole. The application as originally filed contains the following cross-reference to document D9 […]: “The intermediates described in the present specification can be used to prepare florfenicol as can be seen, for example, in U.S. Pat. No. 4,876,352, which is hereby incorporated by reference”. The only intermediates disclosed in document D9 that match those disclosed in the present application as originally filed are the oxazolines of formula (II) […]. Specific embodiments thereof are disclosed in document D9 […], and as starting materials in the examples, for example, in examples 7 and 8 for the synthesis of florfenicol. In all these intermediates, the oxazoline ring bears a hydrogen atom and not an amino substituent at the position 4. Based on this information, the person skilled in the art would have no doubt that the H2Nsubstituent present in the pictorial representations of formula (I) was a misprint that should be replaced by H-, thus removing all the contradictions outlined above. The [opponent’s] argument that the skilled person would not know how to correct the error once detected, is not considered to be convincing. It is true that the formation of a second regioisomer is possible in the reaction of an aminodiol of formula (IV) with a nitrile of formula (III) (cf. e.g. document D2, page 5292, scheme, compounds 6 and 8:
document D8, column 1, lines 25 to 30:
and document D21, formula (I):
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T 1728/07 – On Chemical Nonsense
K’s Law – The ebook
However, it is evident from the cross-reference to document D9 that this is not the intended product, since said second regioisomer is not disclose therein. Moreover, the skilled person would a priori not consider the structure of the second regioisomer as a possible correction since it is structurally remote from the erroneous structure and does not include a stereocentre at position 4 of the oxazoline ring; the required “4R trans” configuration is therefore not possible for this structure. Thus, the second requirement for allowing a correction in the sense of R 139 is also fulfilled in the present case. [2.1.5] Accordingly, the amendment to formula (I) is allowable under R 139 and does not introduce subjectmatter that extends beyond the content of the application as originally filed. The ground for opposition according to A 100(c) does not therefore prejudice the maintenance of the patent on the basis of the main request. [2.2] The [opponent] did not raise any further objections under A 123(2) and A 123(3) resulting from the amendments made to the main request […], and the board sees no reason to differ. The amended set of claims of the main request is therefore also considered to meet the requirements of A 123(2) and A 123(3). Personally, I find the Board quite generous, and I am somewhat intrigued by its extended use of the crossreferenced document; did not T 200/89 state that “the proposed correction must be obvious to such a skilled reader on reading the patent text in its entirety but in isolation, and without reference to any other documents (such as the file history)” ? Documents incorporated by reference might be an exception though. Having said that, I have to admit that I am not much of a chemist and, therefore, I shall leave the debate to those skilled in this art. Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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K’s Law – The ebook
T 1442/09 - Mere Allegations
T 1442/09 - Mere Allegations 15 Dez 2010
In the present decision the Board examines in detail the correspondence between an Examining Division (ED) and an applicant. The Board finds too many allegations and too little reasoning in the ED’s communications leading to the impugned decision. The story is long, but the moral is short. If you are happy with a short take-away, here is the headnote of the decision: “A decision as referred to in R 111(2) should in principle be complete and self-contained and be comprehensible.” So be it. [1.1] The first substantive communication of the ED dated 14 December 2005 and referred to in the impugned decision was based on claims 1-10 as originally filed. [1.1.1] The single independent claim 1 as originally filed reads: 1. A method for preparing an article having a thermal-spray coating (46) thereon, comprising the steps of providing a substrate article (44) having a surface (42); forming a coated article (40), the step of forming including the step of thermally spraying a coating material (41) onto the surface (42) of the substrate article (44), wherein a surface of contact between the coating material (41) and the substrate article (44) is a bondline (48); and nondestructively testing the coated article (40), wherein the step of nondestructively testing includes the steps of directing a transmitted ultrasonic signal (68) into the coated article (40), receiving a received ultrasonic signal (72) from the coated article (40), and evaluating a near-bondline region (50) of the coated article (40) located adjacent to the bondline (48) using the received ultrasonic signal (72). [1.1.2] In point 2 of this communication the ED raised a novelty objection with respect to the subject-matter of claim 1 in view of D1 by stating “D1 discloses an adhesion measuring method for thermal spray deposit by measuring the intensity of the reflected wave generated when a specific ultrasonic wave is fed to the interface between the the [sic] thermal spray deposit and the substrate. The frequency of the ultrasonic wave is set to 5-20 MHz.” (emphasis added by the Board). In points 3 and 4 of this communication only a short description of the disclosures of D2 and D3 was given: “D2 discloses a nondestructive method for determining the thickness of a metallic protective layer on a metallic base material (e.g. turbine blade) by detection of a different type of intervening layer wich [sic] is situated between the metallic protective layer and the metallic base material, by e.g. ultrasound thermography ( see abstract).” and “D3 discloses a nondestructive method for measuring the thickness of a metallic layer on a substrate by directing an ultrasonic signal on the substrate, receiving and evaluating the received ultrasonic signal from the coated substrate ( see claims 1,2; fig.1).”. In point 5 of this communication it further considered that “Dependent claims 2-10 do not appear to contain any additional features which, in combination with the features of claim1 to which they refer, meet the requirements of the EPC with respect to novelty and/or inventive step, the reasons being as follows: the features are known from D1, D2 and/or D3.” (emphasis added by the Board). [1.1.3] It is thus apparent from a comparison of the wording of claim 1 as originally filed […] with the statement made in point 2 of the first communication […] that this communication neither contains an explanation as to why the adhesion measuring method according to D1 fulfils all the requirements as set out by the features of said claim 1, nor does it indicate why the subject-matter of dependent claims 2-10 as originally filed would either be anticipated by D1 - the English abstract of D1 is silent with respect to a method step of “evaluating a nearbondline region of the coated article located adjacent the bondline” as well as to any “delamination” of the coating - or would be rendered obvious by the cited prior art.
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T 1442/09 - Mere Allegations
Points 2 and 5 of the first communication contain only allegations without giving any reasoning for the lack of novelty or lack of inventive step, e.g. as to why the person skilled in the art would combine the adhesion measuring method of D1 with the thickness measuring methods of either D2 or D3, i.e. which objective technical problem should be solved by the person skilled in the art. The allegation additionally made in point 5 further does not give any references in the cited documents D1 to D3 for the features of the dependent claims allegedly known therefrom. [1.2] As a response to the first communication the appellant filed with its letter dated 22 June 2006 an amended set of claims 1-8. It stated that new claim 1 includes the features of claims 8 and 9 as originally filed and submitted arguments concerning novelty and inventive step: D2 and D3 relating to measuring thickness were not believed to be concerned with the problem presented and solved by the claims of the present application which are directed to a method of preparing an article having a thermal spray coating thereon including, in part, non-destructively testing the coating article by the steps recited in new claim 1. Since the operating parameters may cause the coated article to have flaws in a near-bondline region which may cause the coating to perform in an unsatisfactory manner it is important to determine when such flaws are present and when the coated article is free of such flaws. D1 is not concerned with the above problem but with determining adhesion. However, “delamination” is not the same as adhesion. Figure 4 of the application illustrates a structure having a bondline delamination wherein the thermal spray coating is physically separated from the surface, leaving a gap therebetween. Thus a delamination not only has zero adhesive strength, but also requires a physical separation. Nor does D1 give any disclosure or suggestion for a method for concluding the presence of a mechanical bond and appears to deal with a different ultrasonic parameter than that of the subject claims. [1.2.1] Claim 1 of this set of claims reads as follows (amendments as compared to claim 1 as originally filed are in bold; emphasis added by the Board): 1. A method for preparing an article having a thermal-spray coating (46) thereon, comprising the steps of providing a substrate article (44) having a surface (42); forming a coated article (40), the step of forming including the step of thermally spraying a coating material (41) onto the surface (42) of the substrate article (44), wherein a surface of contact between the coating material (41) and the substrate article (44) is a bondline (48); and nondestructively testing the coated article (40), wherein the step of non-destructively testing includes the steps of directing a transmitted ultrasonic signal (68) into the coated article (40), receiving a received ultrasonic signal (72) from the coated article (40), and evaluating a near-bondline region (50) of the coated article (40) located adjacent to the bondline (48) using the received ultrasonic signal (72), wherein the step of evaluating includes the steps of concluding the presence of a delamination if there is a strong return in the received ultrasonic signal from the near-bondline region, and concluding the presence of a mechanical bond if there is a weak return in the received ultrasonic signal from the near-bondline region. [1.2.2] The second substantive communication of the ED, of 16 July 2007, was based on these amended claims 1-8. Initially it stated “Your arguments have been carefully considered by the ED, however following objections remain”. Thereafter D1 and the new D4 were referred to. In point 4 of this communication the ED maintained its objection of lack of novelty, in stating: “D1 discloses a non-destructive method for judging “the quality of adhesion” and the “level degree of adhesion” of a thermal-sprayed coating on a substrate by measuring the intensity of a reflected wave generated when a specific ultrasonic wave is fed to the interface between the thermal sprayed coating and the substrate. Apart from the fact [sic] the frequency of the ultrasonic wave is the same as in the application (5-20 MHz), it is clear that a possible delamination will be detected and registred [sic] by the method of D1”. It further stated that “D4 discloses a non-destructive method to detect defects, such as exfoliation and cracks, of a spray deposit on a surface of a substrate by directing an ultrasonic signal in the coated substrate, by receiving the ultrasonic signal, evaluating the received ultrasonic signal and so detecting the presence of a possible delamination adjacent to the bondline of the spray deposit and the substrate (see fig. 1-5, page 1-3)” (emphasis added by the Board).
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T 1442/09 - Mere Allegations
In point 5 it is concluded that “At least some of the objections raised above are such that there appears to be no possibility of overcoming them by amendment. Refusal of the application under Article 97(1) EPC is therefore to be expected.”. [1.2.3] This second communication clearly does not contain anything dealing with the arguments submitted by the appellant, particularly not as to why they cannot be accepted. Furthermore, also this second communication does not contain any comprehensible reasoning as to why the methods disclosed in documents D1 and D4 would fulfil the requirement of evaluating a near-bondline region as now more exclusively defined in the amended claim 1 […]. In this context the Board remarks that the English abstract of D4 is silent with respect to a method step of “evaluating a near-bondline region of the coated article located adjacent the bondline … concluding the presence of a delamination if there is a strong return in the received ultrasonic signal from the near-bondline-region, and concluding the presence of a mechanical bond if there is a weak return in the received ultrasonic signal from the near-bondline region”. Furthermore, this abstract only mentions “a spray deposit” and not a thermal-spray deposit. [1.3] As a response to this second communication the appellant filed with its letter dated 17 January 2008 an amended set of claims 1-7 based on a combination of claims 1, 8, 9 and 10 as originally filed in combination with an adapted description. The amendments were again supported by arguments concerning novelty and inventive step. In particular it was argued that “Claim 1 has been clarified to specify the evaluation steps in the method and also to specify more clearly the aspect of the received ultrasonic signal that is used to determine the nature of the bond in the near-bondline region. In D1 and D4 methods of evaluating adhesion of a coating to a substrate are disclosed which comprise transmitting an ultrasonic wave and receiving the reflected ultrasonic wave generated from the interface between the coating and the substrate. In D1 the intensity of the reflected wave is used and D4 a frequency analysis is performed. Neither D1 nor D4 disclose evaluating the nature of the bond using the return peak of the reflected wave. Nor do D1 or D4 disclose that the evaluation discriminates between a delamination, a mechanical bond and a metallurgical bond on the basis of the nature of the peak reflected wave”. [1.3.1] Claim 1 of this amended set reads as follows (amendments as compared to claim 1 filed with letter of 22 June 2006 are in bold with deletions in brackets; emphasis added by the Board): 1. A method for preparing an article having a thermal-spray coating (46) thereon, comprising the steps of providing a substrate article (44) having a surface (42); forming a coated article (40), the step of forming including the step of thermally spraying a coating material (41) onto the surface (42) of the substrate article (44), wherein a surface of contact between the coating material (41) and the substrate article (44) is a bondline (48); and nondestructively testing the coated article (40), wherein the step of non-destructively testing includes the steps of directing a transmitted ultrasonic signal (68) into the coated article (40), receiving a received ultrasonic signal (72) from the coated article (40), and evaluating a near-bondline region (50) of the coated article (40) located adjacent to the bondline (48) using the received ultrasonic signal (72), [wherein] characterisied [sic] in that the step of evaluating includes the steps of: concluding the presence of a delamination (80) if there is a strong return peak (86) in the received ultrasonic signal from the near-bondline region (50); [and] concluding the presence of a mechanical bond (88) if there is a weak return peak (90) in the received ultrasonic signal from the near-bondline region (50); and concluding the presence of a metallurgical bond if there is substantially no return in the received ultrasonic signal (72) peak from the nearbondline region (50). [1.3.2] The third substantive communication of the ED dated 19 June 2008 was annexed to the summons to oral proceedings (OPs) before the ED scheduled for 26 November 2008. It was based on this amended set of claims 1-7. Therein it was initially stated “The applicant’s explanations submitted with his letter of 17.01.2008 have been carefully considered. However it is the preliminary opinion of the ED that the new claims submitted on 17.01.2008 do not comply with the requirements of the EPC and the 2577 | 3398
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T 1442/09 - Mere Allegations
application should be refused (A 97 (1)). According to your request OPs are summoned. The reasons for the preliminary opinion are given below.” (emphasis added by the Board). Under point 3 of this communication it was then stated “As already mentioned in communication dated 16 July 2007, it is clear that D1 and D4 not only disclose the same non-destructive method of judging the interface between a substrate and a sprayed coating layer on the substrate, but also disclose the evaluation of the nature of this interface by detecting possible delaminations. It is implicit that the nature of the bond is being evaluated and that a possible delamination will be detected and registred [sic] by the method of D1.” (emphasis added by the Board). Subsequently, in point 4 the ED remarked “In any event the claims as a whole lack an inventive step with respect to D1 and D4” and “the subject of the OPs will be whether the claimed subject-matter involves novelty in the sense of A 54(1) and (2).” (emphasis added by the Board). Finally in point 6 it was considered “Furthermore the application does not meet the requirements of Article 84 EPC in that the matter for which protection is sought is not clearly defined. It is clear from the description that a nondestructively testing of a sprayed coating on a substrate is claimed and not a method for preparing an article having a thermal-spray coating thereon”. [1.3.3] From the above it is already clear that also this third communication contains only allegations. It neither deals with the appellant’s arguments in support of the amendments made to claim 1, nor does it contain any comprehensible reasoning as to why D1 and/or D4 would be novelty destroying for the subject-matter of amended claim 1. It further does not explain why its arguments still hold in the light of that amended claim 1, let alone does it give the required reasoning concerning inventive step. [1.3.4] With respect to the alleged lack of clarity the Board further notes that the basic features of claim 1 as originally filed - which defines a method for preparing an article having a thermal-spray coating thereon comprising principally the steps of providing a substrate article having a surface and forming a coated article by thermally spraying a coating material on that surface, and then non-destructively testing the coated article […] have only subsequently been amended in the later versions of claim 1 to more precisely define the nondestructive testing step of the coated article […]. Its original character as “a method for preparing an article having a thermal spray coating thereon”, however, has not changed in this final version. The ED’s allegation that “it is clear from the description that a nondestructively testing of a sprayed coating on a substrate is claimed and not a method for preparing an article having a thermalspray coating thereon” and that for this reason the application contravenes A 84 therefore cannot hold since it is incorrect not only with respect to this claim 1 but also with respect to the whole specification of the present application which makes it clear that it is a method for preparing an article having a thermal spray coating thereon which is claimed […]. Furthermore, the ED has not quoted any passage in the application which would provide support to its allegation. [1.4] The impugned decision according to the state of the file merely refers to “the communication(s) dated 14.12.2005, 16.07.2007, 19.06.2008” and states that “the applicant was informed that the application does not meet the requirements of the EPC. The applicant was also informed of the reasons therein” and that the applicant filed no comments or amendments in reply to the latest communication (emphasis added by the Board). [1.4.1] From the above analysis of the content of these three substantive communications it is evident that the impugned decision falls short of revealing the reasons which led the first instance to conclude lack of novelty and/or lack of inventive step, or lack of clarity for that matter. [1.4.2] Furthermore, contrary to what is stated in the second and third communication (“the applicant’s explanations … have been carefully considered”) it is apparent that the ED ignored all the appellant’s arguments since these communications and therefore the decision are silent in this respect. Consequently, the impugned decision is also not reasoned in that respect. [1.4.3] It is evident that the ED, when issuing the impugned decision, did not follow the Guidelines […], according to which the reasoning must contain in logical sequence those arguments which justify the order. Furthermore, the reasoning should be complete and independently comprehensible and the reasoning should contain important facts and arguments which speak against the decision (see the Guidelines, chapter E-X, 5). The
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latter means that the decision should address the arguments of the losing party (not in the least to also comply with the right to be heard). [1.4.4] Moreover, even though claim 1 of the three sets of claims has been amended twice by incorporating further features so that the subject-matter of claim 1 of the three different requests has been substantially restricted, the impugned decision refers to all three substantive communications. This means that it is left up to the Board to construct the applicable reasons by having to “mosaic” the various arguments from the file, or that it leaves the Board in doubt as to which arguments apply to which claim version. This does not meet the requirement of a “reasoned” decision in accordance with R 111(2) (see e.g. T 1309/05 [3-3.7]; T 1356/05 [15]; and T 1709/06 [1.2-1.2.5]). To be able to benefit from a “decision on the state of the file as it stands” an ED should make sure that its communications are well-structured, deal sufficiently with the counterarguments put forward and provide reasoned support for what it alleges. [1.5] The lack of reasoning in a decision is a substantial procedural violation since it results in the appellant being deprived of any reasoning which it can properly address in appeal and the Board being unable to properly examine the reasons why the ED came to the conclusions of lack of novelty and/or lack of inventive step, or lack of clarity. [2] In view of the aforesaid substantial procedural violation the Board considers that it is appropriate to set aside the decision under appeal for this reason alone and to remit the case to the department of first instance for further prosecution in accordance with A 111(1). […] [3] For the above reasons it is also equitable to reimburse the appeal fee pursuant to R 103(1)a). Should you wish to download the whole decision, just click here. To have a look at the file wrapper, click here.
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T 70/08 – Good News For The Log Lady
K’s Law – The ebook
T 70/08 – Good News For The Log Lady 14 Dez 2010
The present decision deals with an appeal against the decision of an Examining Division (ED) to refuse the patent application under consideration. Claim 1 of the main request read as follows:
Procedure for determining the properties of a moving log (5), in which procedure the moving log (5) is radiographed by means of more than one radiation source (4) each emitting radiation capable of penetrating matter to form a respective radiographic projection, and each of the radiographic projections is received by means of one or more detector array(s) (8) each including more than one detector (9) wherein the procedure involves utilization of knowledge relating to the typical geometry, density and other properties of the moving log, such as the stemwood and knots in a log and anomalies associated with knots, as well as to the interdependencies between said properties, wherein to allow sorting according to quality, the radiographic information is analyzed to locate objects and parts of objects haying the shape of a knot or other anomalies (11), that differ from the normal material of the log being inspected, and wherein: - array sums are calculated from the radiation received by the detector array(s) (8), from which the positions of knots are to be determined; - each knot mass is projected to volumetric elements (6) of sectors (3) in a system of cylindrical coordinates (α, r, z), wherein each knot is lying within a sector that contains no other knots; - stemwood portions are filtered out from radiographic projections; and - back-projecting the filtered radiographic projections to a system of 3-D coordinates and repeating said backprojection but only for selected rotational angles by omitting those sectors that are not regarded as knot sectors. In the following passage, the Board deals with sufficiency of disclosure. [4.1] In its decision the ED held that the disclosure of the invention was insufficient within the meaning of A 83 with respect to features defined in the claims of the requests then on file, and in particular with respect to the feature according to which “wood type specific knowledge” was used in the step relating to the identification of knots and other anomalies in the moving logs. The objected features, however, have been omitted in the claims amended according to the present main request, and in this sense the objections raised by the ED no longer apply to the presently claimed invention. [4.2] Notwithstanding, according to present claim 1 “knowledge relating to the typical geometry, density and other properties of the moving log, such as stemwood and knots in a log and anomalies associated with knots” is used in the claimed procedure, and thus the question arises whether the objection raised by the ED with regard to 2580 | 3398
T 70/08 – Good News For The Log Lady
K’s Law – The ebook
the use of “wood type specific knowledge” in the former claims casts doubts on sufficiency of disclosure of the invention as defined in present claim 1. According to the description of the application, knowledge on typical wood structure […] is used at different stages of the procedure of the invention […], and in particular - as already noted by the ED in its decision - in the claimed step of back-projecting the filtered radiographic projections and identifying the possible knot sectors of the log. More particularly, the description specifies that the claimed step of back-projecting the filtered radiographic projections can be carried out in terms of back-projection coefficients that take into account the typical geometric properties of knots and trunk […], and that the further step of identifying stemwood and knots in the log on the basis of knowledge of the typical geometry and density of stemwood and knots defined in present dependent claim 2 can be carried out on the basis of truth values for possible knot sectors obtained from evidence values determined in terms of experimental parameters and the measured density values and representing probability values as to whether the corresponding volumetric element is part of a knot […]. Thus, the description teaches how knowledge of typical wood structure is taken into account in the aforementioned claimed steps, and although the description does not provide detailed guidance or exhaustive examples as to how the back-projection coefficients or the evidence values are determined, the Board is of the opinion that the competent skilled person working in the technical field of analysing by means of imaging techniques the inner structure of objects such as moving logs has good overall knowledge of the techniques commonly used in object identification by image data processing and is therefore in a position to implement the claimed invention by taking appropriately into account - for instance, using appropriate graphical techniques and/or computational algorithms known in the art - the typical wood structure of a log when processing the radiographic measurement data for identifying the knot regions in the specific log being measured and in particular when calculating the aforementioned back-projection coefficients and evidence values. [4.3] This conclusion is not affected by the view also expressed by the ED in its decision that the application did not provide a description in full detail of one way of carrying out the invention defined in the claims then on file within the meaning of R 42(1)(e) and that a detailed disclosure of a particular way of implementing it could only be found in document D3, this document having been published according to the ED after the priority date of the application. First of all, as regards the invention defined in the present claims, the description explains in detail the different aspects of the steps of the invention […] and also illustrates with reference to Figures 5 to 8 an example of implementation of the claimed invention; the description therefore does provide a sufficiently detailed description of at least one way of carrying out the presently claimed invention, using examples and referring to the drawings as stipulated by R 42(1)(e). Secondly, document D3 - a PhD thesis by one of the named inventors of the application - is directed to the detection of knots in logs using x-ray imaging techniques, discloses a method of determination of the properties of a moving log involving aspects similar to those of the claimed method, and - as pointed out by the ED contains an exhaustive and extensive detailed description of some processing techniques and algorithms that can be used in the procedure and involving, among others, the use of shape mask functions in the reconstruction of the knot structure […] and of equations for deriving the truth values from the evidence values […]. However, the standards of disclosure required by A 83 and R 42(1)(e) do not necessarily correspond to those generally met by a PhD thesis such as document D3, and the mere fact that document D3 discloses specific implementations of some of the aspects of the claimed invention with a higher degree of detail than the present application is not detrimental to the issues under consideration; more particularly, the extensive and exhaustive disclosure in the PhD thesis D3 does not by itself imply that the description of the application would - contrary to the conclusion in the former paragraph - not describe in sufficient detail at least one way of carrying out the claimed invention within the meaning of R 42(1)(e), let alone that the invention is not sufficiently disclosed within the meaning of A 83 since for the purposes of this article it is sufficient if the application as a whole discloses (as the present application does,[…]) the invention with a degree of detail such that the person skilled in the particular art under consideration can perform the claimed invention. [4.4] The remaining claimed features are sufficiently clear and self-explanatory and the Board sees no reason to doubt that the application contains a sufficient disclosure for them to be carried out without undue burden by the person skilled in this art. The Board concludes that the application documents as presently amended meet the requirements of A 83.
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T 70/08 – Good News For The Log Lady
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T 1986/08 – Side By Side
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T 1986/08 – Side By Side 13 Dez 2010
This decision contains an interesting statement on intermediate generalisation. Claim 1 of the main request read : Dispenser head (1,20,40,60) with a discharge channel (2,22,42, 62) for the discharge of products such as foams, for example shaving foam or gel, self-foaming products and other products able to be applied by a pressurecharged system, from a dispenser container normally standing under an excess pressure, which dispenser head can be plugged onto the discharge valve of the dispenser container and which opens the discharge valve of the dispenser container by an external mechanical pressure exerted thereon and a thereby triggered tipping movement of its upper part (10,30,50,70) about a fulcrum so that the product flows at excess pressure from the discharge valve into the discharge channel (2,22,42,62) of the dispenser head (1,20,40,60) and issues through the discharge opening (3,23,43,63) thereof, wherein the dispenser head (1,20,40,60) is constructed with an additional closure device (1’,21,41,61) with a resetting element (6,26,46,66) by which the discharge opening (3,23,43,63) of the discharge channel (2,22,42,62) is opened and is closed again after conclusion of the dispensing process, characterised in that the resetting element (6,26,46,66) is resiliently biased into the closed setting and is so constructed that the opening and/or closing of the discharge opening (3,23,43,63) takes place automatically and the automatic opening and/or closing is assisted by the product standing under excess pressure.
The Board found this claim to lack novelty. It then dealt with auxiliary requests II and III. Both auxiliary requests had an additional feature in the preamble: … wherein the closure device (1’,21,61) consists in a valve housing (4,24,64) forming part of the discharge channel (2,22,62), a pin-shaped valve body (5,25,65) with a valve head (7,27,67) for closing the discharge opening (3,23,63) and a resetting element (6,26,66), … Auxiliary request II also had a different characterising part: … characterised in that the resetting element (6,26,66) is resiliently biased into the closed setting and is so constructed that it is displaced by the tipping movement of the upper part (10,30,70) and thereby automatically opens and closes the discharge opening (3,23,43,63) and the opening and/or closing of the discharge opening (3,23,43,63) takes place automatically and the automatic opening and/or closing is assisted by the product standing under excess pressure. Auxiliary request III also had an additional feature in the characterising part: … characterised in that the valve body (5,25,65) is movable between the open and the closed position by displacing its rear end (12,26’,72’) that is guided against a fixed bar (9,29,69) and in that the resetting element (6,26,46,66) is resiliently biased into the closed setting and is so constructed that the opening and/or closing of 2583 | 3398
T 1986/08 – Side By Side
K’s Law – The ebook
the discharge opening (3,23,43,63) takes place automatically and the automatic opening and/or closing is assisted by the product standing under excess pressure. *** Translated from the German *** [4.1] Auxiliary requests II and III both add features to claim 1 in order to more precisely define the movements automatically opening or closing. According to the [patent proprietor] these features are disclosed in the description; it cites passages where the information is found for both auxiliary requests and for all the embodiments I, II and IV to be covered. [4.2] None of these passages provides a literal basis. Moreover, the cited passages also contain other features that have not been incorporated into claim 1. One may, for example, cite – referring to the passages cited by the [patent proprietor] – the guiding of the resetting element having the shape of an elastic dome on a circular path towards a fixed bar, triggered by the tipping movement (embodiment I […]); or the rear part of the double wall of a valve body casing formed to be an elastic resetting element which is guided on a circular path towards a fixed bar (embodiment II […]); or the elastic rear end of the valve in the shape of a double wall of a valve body, which serves as a resetting element and which is guided by the tipping movement from its locked position, by means of a projecting rib of a fixed bar (embodiment IV […]). [4.3] As a rule it is not admissible under A 123(2) to extract isolated features from a set of features which had originally been disclosed in combination, unless it is obvious that there is no clearly recognisable functional or structural relationship among the features under consideration (see Case Law of the Boards of Appeal, 5th edition, December 2006, III.A.A, page 240, and decisions T 1067/97 and T 25/03 cited therein). The Board is of the opinion that in principle it is possible that the skilled person, when looking at different embodiments side by side, immediately and unambiguously recognises structural and functional correspondences (Übereinkünfte) and that he thereby is enabled to abstract and to claim a general teaching that comprises these correspondences. [4.4] In the present case the three embodiments I, II and IV appear to have in common that the lateral displacement of the valve body is caused by the fact that the resetting element that is connected to the valve body is guided via a fixed bar when the head undergoes the tipping movement, which allows automatic opening or closing. To the extent that a general teaching can be derived from looking at embodiments I, II and IV side by side and is claimed, the claim would at least have to contain the common features. This is not the case for claim 1 according to auxiliary requests II or III: for example, claim 1 according to auxiliary request II does not contain the guidance of the resetting element via a fixed bar or the valve body, whereas claim 1 according to auxiliary request III mentions the bar and the valve body but does not mention the guidance of the resetting element via the bar or the activation of the valve body via the resetting element. Therefore, in both cases claim 1 comprises teachings that are broader than the general teaching which the skilled person possibly could have deduced from the original disclosure. Thus claim 1 according to auxiliary requests II or III go beyond the content of the application as originally filed, [which violates] A 123(2). Should
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T 1293/06 – What’s Hidden Won’t Help
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T 1293/06 – What’s Hidden Won’t Help 11 Dez 2010
Independent claim 1 as granted read as follows: “A pharmaceutical composition comprising ceftiofur hydrochloride, a biocompatible oil, and 0.5 to 200 mg/ml water.” The Opposition Division (OD) revoked the patent. Claim 1 of the main request before the Board differed from claim 1 as granted, in particular with regard to the definition of the range of water being present. It was worded as follows: “A pharmaceutical composition comprising ceftiofur hydrochloride, a biocompatible oil, and 2.5 to 22.0 mg of water/ml of composition.” The Board found this claim to be novel and then examined its compliance with A 56. The opponent presented experiments showing that there was no amelioration of the physical stability of the claimed products and a worsening of the chemical stability in the time of storage, such that the problem of improvement was not solved over the claimed range of water content. The patent proprietor dismissed these experiments by pointing out that results at odds with its own experiments could find their explanation solely in steps used during the production procedure by the respondent, that were not “perfect” in the art of production of dispersions. In particular the phenomenon of caking would have been avoided by the skilled person in routinely optimising the order of the preparation, stirring and dissolution steps. Here is the verdict of the Board: [4.1] Document D11 represents the closest state of the art. [4.2] The definition of the technical problem underlying the patent in suit relies on the claimed effect, i.e. the improvement of the physical stability of the pharmaceutical formulation in the form of resuspendability while not abandoning the usefulness of the preparation in the pharmaceutical field in the form of the chemical stability of ceftiofur hydrochloride as far as required by the authorities, meaning usually less than 10% decrease in potency during shelf life […]. In order to establish a valid basis for the assessment of inventive step, this effect necessarily must be caused by the sole feature in the claim differing from the state of the art, i.e. the amount of water incorporated in the pharmaceutical composition of the claimed invention (see point 3.1 of this decision). [4.2.1] Since claim 1 of the main request concerns a product per se, the claimed subject-matter is independent of the manner of its production. Vice versa, with respect to the question of patentability based on the claimed effect, this effect also has to be achievable independently, i.e. the product as claimed has to exhibit this effect no matter how it is produced, as far as it is “prepared by any method known in the art for the preparation of injectable suspensions”, as inherently confirmed by the [patent proprietor] via the patent in suit […]. [4.2.2] The [opponent], in the production of its samples, undoubtedly used another process of preparation than the [patent proprietor]. As a reaction to the questions raised by the [patent proprietor …], the [opponent] explained its process of production during the oral proceedings. The [patent proprietor] at least in part commented on differing steps as used in its own process of preparation. On this basis, the board has no reason to doubt the [opponent’s] professional conduct of its process of preparing the samples of documents D12 and D20. Consequently, the board finds that the claimed effect of better resuspendability could not be affirmed in the case of application of the process of production as conducted by the [opponent], who is a skilled person applying his knowledge with usual care. 2585 | 3398
T 1293/06 – What’s Hidden Won’t Help
K’s Law – The ebook
As set out in documents D12 and D20, two lots falling under the scope of the claim were assessed: lot B-1 (11,1 mg of water per ml of composition) exhibiting at least no better resuspendability than lot A (2.3 mg/ml) after 15 days and 3 months, and lot B-2 (21.0 mg/ml) exhibiting an even worse one. Lot A was produced according to document D11 as closest prior art, since the components ceftiofur hydrochloride and biocompatible oil were used as mentioned there without adding water […]. According to claim 1 of the main request, with ceftiofur hydrochloride and biocompatible oil as the only mandatory components in the claimed composition, there was no addition of lecithin and sorbitan monooleate. [4.2.3] Consequently, the effect of better resuspendability is not exclusively caused by the choice of the claimed amount of water alone, but at least also or even only by undefined other effects, e.g. another “method known in the art for the preparation of injectable suspensions”. Therefore, this effect cannot be acknowledged as a basis for the problem to be solved when assessing inventive step. [4.2.4] Thus, the problem underlying the invention, i.e. the improvement of the physical stability of the pharmaceutical composition, is not successfully solved by the provision of a pharmaceutical composition characterised by the features of claim 1 of the main request, and has therefore to be reformulated in a less ambitious way. It is therefore only to be seen in providing a further pharmaceutical composition containing ceftiofur hydrochloride. [4.3] According to claim 1 of the main request, one solution to this problem is the adjustment of the water content in a pharmaceutical composition comprising ceftiofur hydrochloride and a biocompatible oil to 2.5 to 22.0 mg of water/ml of composition. [4.4] The board is convinced that this problem has been solved. [4.5] In [… D2], however, it is disclosed that ceftiofur hydrochloride based on this process of preparation may contain 0.5% to 7% of water or other solvents, usually 1% to 3%, meaning in a 1 ml sample according to example 7 of document D11 a content of 100 mg of ceftiofur hydrochloride and as the upper limit 7 mg or 3 mg of water. Accordingly, the teaching of the application in suit only puts into practice what is already known to the skilled person from document D11 together with document D2; at most, the teaching of the patent in suit presents itself as an arbitrary modification of the preparation of the state of the art (document D11) with respect to its water content, the variations of which are known from document D2. [4.6] Consequently, the board concludes that the subject-matter of claim 1 of the main request does not involve an inventive step (A 56). Should
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G 1/08 – Leave Mendel Alone
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G 1/08 – Leave Mendel Alone 10 Dez 2010
You might remember that T 83/05 (“Broccoli”) referred the following questions to the Enlarged Board of appeal (EBA): (1) Does a non-microbiological process for the production of plants which contains the steps of crossing and selecting plants escape the exclusion of A 53(b) merely because it contains, as a further step or as part of any of the steps of crossing and selection, an additional feature of a technical nature? (2) If question 1 is answered in the negative, what are the relevant criteria for distinguishing non-microbiological plant production processes excluded from patent protection under A 53(b) from non-excluded ones? In particular, is it relevant where the essence of the claimed invention lies and/or whether the additional feature of a technical nature contributes something to the claimed invention beyond a trivial level? and that T 1242/06 (“Tomatoes”) referred a similar set of questions to the EBA: 1) Does a non-microbiological process for the production of plants consisting of steps of crossing and selecting plants fall under the exclusion of A 53(b) only if these steps reflect and correspond to phenomena which could occur in nature without human intervention? (2) If question 1 is answered in the negative, does a non-microbiological process for the production of plants consisting of steps of crossing and selecting plants escape the exclusion of A 53(b) merely because it contains, as part of any of the steps of crossing and selection, an additional feature of a technical nature? (3) If question 2 is answered in the negative, what are the relevant criteria for distinguishing non-microbiological plant production processes excluded from patent protection under A 53(b) from non-excluded ones? In particular, is it relevant where the essence of the claimed invention lies and/or whether the additional feature of a technical nature contributes something to the claimed invention beyond a trivial level? 2587 | 3398
G 1/08 – Leave Mendel Alone
K’s Law – The ebook
Well, we just got the answers. If you can, you should study the whole decision, which is well worth reading. There is a link at the end of this post. If you are interested in the answer only, you will find it at the bottom of this post. If you want to know a little bit more but do not wish to read the 72 pages of the decision, here is a short summary: First the EBA deals with the question of whether the EPC 1973 or the EPC 2000 is to be applied. Based on the transitional provisions, the EBA comes to the conclusion that A 53 as revised and its implementing rule R 26(5) are to be applied. The discussion then focuses on the question of whether the Administrative Council (AC) is allowed to lay down provisions concerning substantive law in the Implementing Regulations. According to the EBA, there is no reason to believe that it cannot do so. The Board then deals with the question of legitimate expectations in the context of interpretation of substantive patent law: “There can be no ‘legitimate expectation’ that an interpretation of a substantive provision governing patentability given in a decision of the Boards of appeal will not be overruled in the future by the EBA, since recognising such an expectation as legitimate would undermine the function of the EBA. This holds particularly true for issues on which there is no solid body of decisions all to the same effect but where instead the relevant jurisprudence consists of a very limited number of individual decisions, as is presently the case. In the past, the EAB has granted a transitional period in cases in which the EBA’s decision has brought about a change in relation to an established procedural practice which change the parties could not be expected to foresee. By contrast, for the reasons given above, the existence of ‘legitimate expectations’ has never been acknowledged for issues before the EBA concerning the correct application, i.e. interpretation, of substantive patent law.” After having given an overview of the relevant case law, the EBA then delves into the heart of the matter, starting from the relationship between R 23b(5) EPC 1973 (now R 26(5) EPC) and A 53(b). The first fundamental question to be answered is whether R 26(5) is meant to provide an exhaustive definition of when a process is “essentially biological.” It is the Biotech Directive (Recital 33), where this rule comes from, that confirms that this is indeed the case. The EBA then deals with the terms “crossing” and “selection”. Based on the principles of the Vienna Convention (Article 31(1)), the EBA comes to the conclusion that in the context of production of plants, crossing and selection are characterised by the fact that the breeder intervenes in order to achieve a desired result. “Hence, in that context, crossing and selection are not natural phenomena but are method steps which generally involve human intervention.” Based on this result, the EBA finds that “the wording of R 26(5) is ambiguous, if not contradictory.” It nevertheless refuses to jump to the conclusion that the ambit of R 26(5) is to define crossing and selection as natural phenomena by way of a legal fiction. As the wording of R 26(5) originated in the Biotech Directive, the Board looks for further clarification in the this Directive and in particular in its (eventful) legal history. The EBA notes that “mainly as a consequence of the consecutive amendments voted for by the European Parliament – the terms of the definitions in the earlier versions gradually shifted from a very narrow to an at least partially broader construction of the exclusion.” As a matter of fact, the situation is rather complex because, as the Board finds, “the objective meaning of the definition given in Article 2(2) Biotech Directive corresponds neither to the amendments voted for by the European Parliament nor to the substance of the earlier drafts, but rather is definitely something different.” This difficulty finally leads the Board to abandon its attempt to base its interpretation on the legislative history of the Biotech Directive: “As a result, the legislative history of the Biotech Directive does not assist in determining what the legislator intended to say by the wording which was eventually adopted for Article 2(2)
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G 1/08 – Leave Mendel Alone
K’s Law – The ebook
Biotech Directive. On the contrary, it must be concluded that the contradiction between the terms of the provision cannot be further clarified.” So even though the EBA admits that the AC can provide for issues of substantive law in the Implementing Regulations, it points out that “in order to enable the Article to which a Rule pertains to be interpreted by means of the Rule, such Rule must at least be clear enough to indicate to those applying it in what way the legislator intended the Article to be interpreted by means of that Rule. This is not the case for R 26(5).” So the EBA comes to the conclusion “that R 26(5) does not give any useful guidance on how to interpret the term “essentially biological process for the production of plants” in A 53(b)” and that the EBA itself has to interpret that term. When doing so, the EAB first excludes a limitative reading of the expression “for the production of plants”: this expression cannot be read to be limited to the production of plant varieties. The EBA also points out that the potential differences of meaning between the English, French, and German versions of the EPC appear not to be relevant. The EBA passes in review several possible approaches of interpretation. It rapidly excludes the analogy to the approach used under A 52(4) EPC 1973 for surgical and therapeutic methods: the mere presence of a biological feature in a process cannot automatically confer an essentially biological character on the process as awhole. The same holds true for the converse approach based on an analogy to computer related inventions where the existence of a single technical feature confers technicality to the claimed subject matter. The analogy is not convincing, be it only for the very different wording of A 52(2) and A 53b. The approach (outlined in T 320/87) where some of the criteria for deciding the question depend on the state of the art, is also rejected as flawed “because it conflates the considerations which are relevant for patentability with those relevant for novelty and inventive step.” Moreover, the approach is detrimental to legal certainty because prior art discovered at a late stage might reverse the finding on exclusion from patentability. The fourth and last approach examined by the EBA is based on “human intervention”. T 320/87 and T 356/93 both have envisaged such an approach. The EBA undertakes to determine what the purpose of the exclusion in A 53(b) was when the EPC 1973 and the Preliminary Draft (SPC) Convention of the Council of Europe were drafted. An early amendment from “purely biological processes” to “essentially biological processes”: “According to the explanations given, the (essentially biological) processes for the production of plants or animals should include those which may produce known varieties as well as those which may produce new ones. Selection or hybridization of existing varieties are mentioned as examples of such processes. The replacement of “purely” by “essentially” is explained by the reasoning that it was evident that the exclusion should be extended to cover processes which were fundamentally of this type, even if, as a secondary feature, “technical” devices were involved (use of a particular type of instrument in a grafting process, or of a special greenhouse for growing a plant), it being understood that while such technical devices may perfectly well be patented themselves the biological process in which they are used may not.” The EBA notes that “the exchange of the word “purely” for “essentially” was deliberate and reflects the legislative intention that the mere fact of using a technical device in a breeding process should not be sufficient to give the process as such a technical character and should not have the effect that such process is no longer excluded from patentability.” This intention is still to be respected. “Hence, in more general terms, the conclusion to be drawn is that a process for the production of plants which is based on the sexual crossing of whole genomes and on the subsequent selection of plants, in which human intervention, including the provision of a technical means, serves to enable or assist the performance of the process steps, remains excluded from patentability as being essentially biological within the meaning of A 53(b). However, if a process of sexual crossing and selection includes within it an additional step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in a genome of the plant produced, so that the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen for sexual crossing, then that process 2589 | 3398
G 1/08 – Leave Mendel Alone
K’s Law – The ebook
leaves the realm of the plant breeding, which the legislator wanted to exclude from patentability. Therefore, such a process is not excluded from patentability under A 53(b) but qualifies as a potentially patentable technical teaching. The above applies only where such additional step is performed within the steps of sexually crossing and selection, independently from their number of repetitions. Otherwise the exclusion of sexual crossing and selection processes from patentability under A 53(b) could be circumvented simply by adding steps which do not properly pertain to the crossing and selection process, being either upstream steps dealing with the preparation of the plant(s) to be crossed or downstream steps dealing with the further treatment of the plant resulting from such crossing and selection process. Any such additional technical steps which are performed either before or after the process of crossing and selection should therefore be ignored when determining whether or not the process is excluded from patentability under A 53(b). For the previous or subsequent steps per se patent protection is available. This is the case, for example, for genetic engineering techniques applied to plants which techniques differ profoundly from conventional breeding techniques as they work primarily through the purposeful insertion and/or modification of one or more genes in a plant (cf. T 356/93). However, in such cases the claims should not, explicitly or implicitly, include the sexual crossing and selection process. As a result this means that, while the presence in a claim of one feature which could be characterised as biological does not necessarily result in the claimed process as a whole being excluded from patentability under A 53(b), this does not apply where the process includes sexual crossing and selection. […] The questions referred to the EBA are answered as follows: 1. A non-microbiological process for the production of plants which contains or consists of the steps of sexually crossing the whole genomes of plants and of subsequently selecting plants is in principle excluded from patentability as being “essentially biological within the meaning of A 53(b). 2. Such a process does not escape the exclusion of A 53(b) merely because it contains, as a further step or as part of any of the steps of crossing and selection, a step of a technical nature which serves to enable or assist the performance of the steps of sexually crossing the whole genomes of plants or of subsequently selecting plants. 3. If, however, such a process contains within the steps of sexually crossing and selecting an additional step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, so that the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen for sexual crossing, then the process is not excluded from patentability under A 53(b). 4. In the context of examining whether such a process is excluded from patentability as being “essentially biological” within the meaning of A 53(b), it is not relevant whether a step of a technical nature is a new or known measure, whether it is trivial or a fundamental alteration of a known process, whether it does or could occur in nature or whether the essence of the invention lies in it. ” Good reading, well reasoned, and a tangible outcome : I like it. You
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Addendum: This decision has created much less of a buzz than the previous EBA decisions: my fellow bloggers appear not to be excited. Tufty the Cat has some interesting comments here. A French summary can be found here.
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T 1903/06 – We Are Not Always Nice
K’s Law – The ebook
T 1903/06 – We Are Not Always Nice 9 Dez 2010
Sometimes a zero changes everything … Yesterday we have seen decision T 193/06 where the Board remitted a case to the first instance although the claims on file were not allowable as such. Although the applicant was not represented during the oral proceedings (OPs) before the Board, the Board felt that “a dismissal of the appeal due to the remaining deficiencies in the request would not be justified”. The Boards are not obliged to do so, and indeed they sometimes do not, as decision T 1903/06 shows. Again, the Board deals with an appeal following the refusal of an application by the Examining Division (ED). The appellant requested OPs but then decided (and announced the day before the OPs) that it would not attend. Perhaps this was not a very good idea. [2.1.5] In summary, claim 1 of the main request does not meet the requirements of A 84 concerning clarity and support by the description. [2.2] Claim 6 of the main request has the wording “In a method of a magnetic resonance imaging ..., characterized in that ..., wherein the coil ..., and the method comprising ...”. This formulation is inadequate and renders the claim unclear. [2.3] Claim 7 of the main request is deficient in that it refers to “claim 7”. Auxiliary request [3] The auxiliary request is not allowable too (sic). The considerations mentioned above […] also apply mutatis mutandis to claims 1, 5 and 6 of the auxiliary request. Procedural matters [4] According to R 115(2), if a party duly summoned to OPs does not appear as summoned, the proceedings may continue without that party. Article 15(6) RPBA prescribes that a case should normally be ready for decision at the conclusion of oral proceedings. Furthermore, according to A 113(2), the Board shall decide upon the patent application only in the text submitted to it, or agreed, by the applicant. [4.1] In the present case, the appellant requested OPs, as an auxiliary request, with the notice of appeal. On 10 March 2009 the appellant was duly summoned to OPs scheduled to take place on 27 May 2009. A communication dated 24 March 2009 was issued in preparation for the OPs. As mentioned in paragraph V of this communication, any written submission should have been filed at the latest one month before the OPs. The appellant’s representative, however, did not make any further submission apart from informing the Board on 26 May 2009 that he would not attend the OPs. The OPs thus took place in his absence. In such a case, according to Article 15(3) RPBA the appellant may then be treated as relying only on its written submissions. Under these circumstances, the Board took a decision at the end of the OPs on the basis of the appellant’s main and auxiliary requests on file. The decision is based on the ground under A 84. [4.2] In G 4/92 [10] the Enlarged Board of Appeal held that “As regards new arguments, the requirements of A 113(1) have been satisfied even if a party who has chosen not to appear consequently did not have the opportunity to comment on them during OPs, insofar as such new arguments do not change the grounds on which the decision is based. In principle, new arguments do not constitute new grounds or evidence, but are reasons based on the facts and evidence which have already been put forward.”.
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T 1903/06 – We Are Not Always Nice
K’s Law – The ebook
In the present case, issues under A 84 in relation to the main and auxiliary requests on file were addressed in the Board’s communication of 24 March 2009 as well as in the decision under appeal by way of referral to an examining division’s brief communication of 17 May 2006. Thus, the appellant had an opportunity to present its comments on this ground (A 113(1)). New arguments mentioned in the present decision do not offend the right to be heard in agreement with G 4/92, insofar as they do not change the ground for the refusal of the application. [4.3] The Board is aware of the fact that the objections mentioned against the main and auxiliary requests on file could have been met by suitable amendments, if the appellant’s representative would have been present at the OPs. However, the Board has to decide upon the application only in the text submitted to it by the appellant (A 113(2)). In this respect, the Board agrees with the following conclusions in decision T 1000/03 [2.5] (NB : the Board cites the following text in German): “The duly summoned appellant could have easily remedied the deficiency mentioned above as well as several other minor deficiencies during the OPs. There was no need to postpone the decision in order to remedy them (cf. Article 11(3) RPBA). In application of A 113(2) the Board has to stick to the text submitted to it by the applicant. By not attending the OPs, the appellant has accepted the risk that the application might be rejected even if the deficiencies could have been easily remedied.” Thus, the appellant has to bear the consequences of the failure to appear at the OPs before the Board. The appeal is dismissed. Should you wish to download the whole decision, just click here.
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T 193/06 – Let’s Be Nice
K’s Law – The ebook
T 193/06 – Let’s Be Nice 8 Dez 2010
What happens when a Board finds, during oral proceedings (OPs) in the absence of the applicant, that the main claim on file overcomes the objections that led to the refusal by the Examining Division (ED) but that the amendment has caused clarity and A 123(2) problems in the dependent claims? Will the Board dismiss the appeal, as there is no allowable request on file? [14.3] In view of the foregoing, the board concludes that the prior art of record is not prejudicial to the inventive step of the invention as now defined in claim 1 of the second auxiliary request. Deficiencies in the dependent claims [15.1] The board notes that there are deficiencies in the dependent claims of the second auxiliary request as detailed below. [15.2] The expressions “the available storage capacity” (claim 2) and “the available data capacity” (claims 3 and 4) lack an antecedent basis in view of the amendments to independent claim 1 and thus render the definition of the matter for which protection is sought unclear. [15.3] The expressions “an amount of unused data storage in the first communication device” (claim 3) and “the amount of data stored in the first communication device” (claim 4) are not specifically limited to the unused data storage or the data stored in the output buffer of the communication device. The wording of claims 3 and 4 in this respect thus represent generalisations which are not supported over their full breadth by the description. [15.4] Insofar as “the amount of data output” recited in claim 5 is intended to correspond to the “measure of data outputed [sic]” recited in claim 1, the subject-matter of claim 5 appears to be redundant. The unnecessary repetition in a dependent claim of subject-matter which is already present in an independent claim constitutes a lack of conciseness in the formulation of the claims as a whole, contrary to the requirements of A 84. [15.5] In view of the foregoing, the board finds that the dependent claims of the request do not comply with the requirements of A 84. Conclusions [16.1] Claim 1 of the second auxiliary request defines the matter for which protection is sought in a manner which, in the board’s judgement, overcomes the objections under A 84 upheld against the preceding requests. Moreover, in view of the clarifying amendments to the claim, the board finds that the available prior art is no longer prejudicial to the patentability of the claimed subject-matter. [16.2] Notwithstanding the board’s findings in respect of claim 1 of the second auxiliary request, the request as a whole is not allowable in view of the deficiencies in the dependent claims as detailed under 15. above. [16.3] Despite these deficiencies, the board takes the view that the request could, without undue difficulty, be amended to comply with the requirements of the EPC. Such amendment would require appropriate adaption (sic) of the dependent claims. The minor linguistic error in claim 1 […] should also be corrected. [16.4] The board notes that the appellant’s non-attendance at the scheduled OPs was not conducive to procedural efficiency because, in principle, it would have been possible to amend the remaining deficiencies in the request during OPs had the appellant attended or been represented. [16.5] Nevertheless, the board accepts that the amendments filed with the letter dated 5 May 2009 represent a bone fide attempt to address the objections raised in the communication accompanying the summons to OPs. Given that claim 1 of the second auxiliary request effectively overcomes those objections, the board concludes that a dismissal of the appeal due to the remaining deficiencies in the request would not be justified.
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T 193/06 – Let’s Be Nice
K’s Law – The ebook
[16.6] Under the given circumstances, the board judges that the most appropriate course of action is to remit the case to the first instance for further prosecution pursuant to A 111(1). The purpose of the remittal is to provide an opportunity for the dependent claims of the second auxiliary request to be amended such that the request as a whole may be brought into conformity with the requirements of the EPC. So the Board was applicant-friendly and remitted the case back to the ED. It could as well have dismissed the appeal, without committing any procedural violation, and it might well have done so in inter partes proceedings. But even in ex parte proceedings this approach cannot be taken for granted, as we shall see in a forthcoming post. So if you want to reduce the risk of losing a patent for minor details, you better show up at the OPs. Should you wish to download the whole decision, just click here.
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T 2058/08 – The Wrong Person
K’s Law – The ebook
T 2058/08 – The Wrong Person 7 Dez 2010
What happens when a company that is not party to the opposition proceedings is the sole appellant against the decision of the Opposition Division (OD) to reject the opposition? Can the appeal fee be reimbursed? And may the other parties request an apportionment of costs? In the present case, an opposition was filed by the BOC group and Pfeiffer Vacuum. The OD rejected the oppositions. In a fax dated October 13, 2008, the professional representative who had represented the BOC Group filed an appeal on behalf of the Edwards company. The notice of appeal was very explicitly filed in the name of Edwards:
*** Translation from the German *** Admissibility of the appeal under A 107 [1] In the annex to its summons to oral proceedings (OPs) on May 12, 2010, the Board had already made the following statement in paragraph 1: “Under A 107 only parties to proceedings who are adversely affected by a decision are entitled to file an appeal. In the present case, only the opponent is adversely affected by the decision to reject the opposition. However, the Board notes that the name of the legal person mentioned as appellant in the notice of appeal - Edwards Ltd. – as well as its address do not match the name and address of the opponent – BOC Group plc. The file does not contain any indication that there was a transfer of the opponent status within the meaning of G 4/88, from BOC Group plc to Edwards Ltd. Therefore, it appears that the appeal was filed by a legal person who is neither party to the proceedings nor adversely affected by the decision. In this case the appeal would be inadmissible. The Board points out that according to the established case law a legal transfer is only effective when the transfer has been explained in a conclusive way (schlüssig) and evidence has been provided (see also T 428/08 [4, 2nd paragraph] as well as Case Law of the Boards of appeal, 5th edition, 2006, VII.D.5.2.1).” None of the parties has made statements of provided evidence that such a legal transfer has taken place before the [notice of] appeal reached the EPO. Therefore, there is no good reason for the Board to deviate from its statement that the appeal has been filed by a [legal person] who is not party to the proceedings. Thus the appeal does not comply with A 107, first sentence, and has to be rejected as inadmissible under R 101(1). Request for reimbursement of the appeal fee [2] R 103(1) provides the conditions under which the appeal fee is to be reimbursed. In the present case there was no interlocutory revision nor was the appeal found to be allowable (R 103(1)(a)), nor was the appeal withdrawn before the period for filing the statement of grounds of appeal had expired (R 103(1)(b)). Thus the requirements for reimbursement under R 103 are not fulfilled. The request for reimbursement cannot be granted. Request for apportionment of costs 2595 | 3398
T 2058/08 – The Wrong Person
K’s Law – The ebook
[3] According to the established case law apportionment of costs under A 104(1) is ordered when and if this is equitable, see Article 16(1) RPBA. In the present case the appellant has announced in due time that it would not attend the OPs and has withdrawn its request for OPs in due time. Therefore, it has done everything in its power in order to avoid the OPs that had already been summoned and to save expenses for the other parties. Consequently, the Board considers that a different apportionment of costs than provided in A 104(1) is not equitable. The request for apportionment of costs cannot be granted. Should you wish to download the whole decision (in German), just click here.
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T 294/07 – A Nice Hat-Trick
K’s Law – The ebook
T 294/07 – A Nice Hat-Trick 6 Dez 2010
I like the present decision because the patent proprietor, whose patent had been revoked by the Opposition Division (OD), for lack of inventive step, overcame three serious hurdles: it convinced the Board both to accept post-published evidence to establish inventive step and to generalise its teaching and it dispelled doubt concerning the presence of a bonus effect. Claim 1 as granted read: 1. An anaesthetic formulation comprising xenon and an alpha-2 adrenergic agonist. The patent proprietor argued that there was surprising and unexpected synergistic neuroprotective effect and that this effect was a class effect of all alpha-2 adrenergic agonists. The combination of xenon and alpha-2 adrenergic antagonists was not obvious upon a combination of documents D3 and D2 and the synergistic effect could not therefore be considered as being merely a bonus effect. According to the opponent, the patent did not contain any evidence to substantiate the existence of a synergistic neuroprotective effect of the claimed formulations. Alpha-2 adrenergic agonists were known as anaesthetic agents and their choice was purely arbitrarily and did not result in any unexpected effect. Here is what the Board found to say: [4] The problem to be solved by the patent in suit was the provision of an improved anaesthetic formulation […]. The claimed formulation is distinguished from the preparations according to document D3 by containing an alpha-2 adrenergic agonist. [5] In order to decide whether the requirements of A 56 are met, it has to be examined if the problem as formulated above has indeed been solved by the subject-matter claimed, and if the claimed solution is not obvious in the light of the disclosure in the prior art. [6] N-Methyl-D-Aspartate (NMDA) antagonists, like xenon, are known to be neuroprotective under many clinically relevant circumstances […]. Also alpha-2 adrenergic agonists are known to be neuroprotective, for instance during ischemic insults […]. According to […] the application as published […], the neuroprotective action of the claimed formulation “is more efficacious as a result of the complementary action of the two components”. [7] The patent does not contain experimental data proving the existence of a synergistic neuroprotective effect of the claimed anaesthetic formulations containing xenon and an alpha-2 adrenergic agonist. However, during the opposition procedure […], the Appellant has submitted Annex 2, disclosing the results of in vitro and in vivo experiments investigating the neuroprotective activity of combined xenon an dexmedetomidine dosage. The in vivo data are derived from seven-day old postnatal rat pups which underwent right common carotid artery ligation. One hour after recovery from surgical procedure, they were exposed to a hypoxic environment and concurrent administration with either air (control), 6.25 μg/kg subcutaneous dexmedetomidine, xenon or a combination of both. The data show that xenon or dexmedetomidine alone had no significant neuroprotective effect. In contrast, where a combination of both agents was used, there was a marked reduction in infarction size, indicative of a significant neuroprotective effect. Statistical analysis confirmed that the effect was synergistic […]. [8] The Board is aware of decision T 1329/04, wherein the competent Board stated that the definition of an invention as being a contribution to the art, i.e. solving a technical problem and not merely putting forward one, requires that it is at least plausible by the disclosure in the original application that its teaching indeed solves the problem it purports to solve. Therefore, although supplementary post-published evidence may in the proper 2597 | 3398
T 294/07 – A Nice Hat-Trick
K’s Law – The ebook
circumstances also be taken into consideration, it may not be considered at all if it is the first disclosure going beyond mere speculation. The invention in the present case is concerned with an anaesthetic formulation comprising two compounds which per se are known in the art to be used as anaesthetics and which are described as having some neuroprotective activity in certain clinical situations. The application as published contains a statement that the neuroprotective activity of a formulation containing both agents is higher than it could be expected to be […] and comprises six examples wherein the claimed formulations were administered to human patients. In the light of the principles underlying decision T 1329/04 the Board considers this to be a case where from the disclosure of the original application it is plausible that the problem underlying the invention, namely to provide an improved anaesthetic formulation, has indeed been solved. Thus, in addition post published evidence (Annex 2) may also be taken into consideration. This evidence discloses a synergistic neuroprotective effect of the claimed formulation. [9] Annex 2 exclusively refers to a formulation comprising xenon and dexmedetomidine, the latter being one member of the group of alpha-2 adrenergic agonists. Thus, results in the form of experimental data which show that the technical problem underlying the present application has indeed been solved, have only been provided for one member of a group of compounds. [10] According to established case law of the Boards of Appeal, the extent of the monopoly conferred by a patent should correspond to and be justified by the technical contribution to the art. This general principle of law also applies to decisions under A 56 because everything covered by a legally valid claim has to be inventive (see Case Law of the Boards of Appeal, 5th Edition 2006, Chapter I.D.1). [11] Decision T 939/92 contains fundamental rulings on broad claims in the field of chemistry. The Board in case T 939/92 held that in view of the state of the art the technical problem which the patent in suit addressed was provision of further chemical compounds with herbicidal activity. It was necessary for all the claimed compounds to possess this activity. The question as to whether or not such a technical effect was achieved by all the chemical compounds covered by such a claim might properly arise under A 56, if this technical effect turned out to be the sole reason for the alleged inventiveness of these compounds. The Patent Proprietors’ submission that the test results contained in the description showed that some of the claimed compounds were indeed herbicidically active could not be regarded as sufficient evidence to lead to the inference that substantially all the claimed compounds possessed this activity. In such a case the burden of proof rested with the Appellants. The requirements of A 56 had not therefore been met. Claim 1 of the main request of the application underlying decision T 939/92 referred to a triazole sulphonamide defined by its formula, which contained three residues designated (R1), (R2) and (R3). A list of possible substituents for each of these three residues was indicated in the claim, which also included three provisos. Thus, the claim, although not referring to an indefinite number of compounds, encompassed a large group of compounds whose exact size could not be judged at first sight. Moreover, as stated in detail in T 939/92 [2.6.2], the Appellants’ own submissions with regard to several prior art documents on file were such that a person skilled in the art would have been unable to predict, on the basis of his general knowledge, that all claimed compounds would have herbicidal activity. [12] Contrary to this, the [patent proprietor] in the present case has put forward detailed arguments why the synergistic effect detected in the examples described in Annex II was not restricted to dexmedetomidine, but was a class effect shared by all members of the group of alpha-2 adrenergic agonists. In detail it was highlighted that alpha-2 adrenergic agonists constituted a class of drugs, which, independent of their chemical structure, were defined by their specific target, namely the alpha-2 receptors. Dexmedetomidine, an example of this group, demonstrated a 1600-fold selectivity for alpha-2 over alpha-1 receptors. The actions of dexmedetomidine could therefore be attributed solely to its effects on the alpha-2 receptor. It has been shown that the action of dexmedetomidine can be blocked by atipamezole, a highly selective alpha-2 antagonist […]. Accordingly, because dexmedetomidine and atipamezole were so selective for alpha-2 receptors, it could be stated with confidence that synergy would also occur with other alpha-2 agonists. Further support for this argument could be found by considering the mechanicsm of the synergy on neuronal level, and in particular at the synaptic junction. Xenon had been shown to block the action of glutamate on NMDA receptors and to hyperpolarize the post synaptic membrane. Likewise the alpha-2 agonist dexmedetomidine acted on alpha-2 receptors, either preor post-synaptically, to cause hyperpolarisation. 2598 | 3398
T 294/07 – A Nice Hat-Trick
K’s Law – The ebook
However, when xenon and dexmedetomidine were administered in combination, the hyperpolarisation synergistically enhanced the efficacy of xenon as an NMDA antagonist. As the synergy could be explained functionally, there was every reason to believe it would hold true for other alpha-2 agonists, irrespective of their structure. [13] In the light of these arguments, which have not been called into question or even commented on by the [opponent], the Board is convinced that the present case can be distinguished from T 939/92. […] 15. The OD decided in the decision under appeal that a skilled person, trying to solve said problem, would have combined the teaching in document D3 […] with the teaching in document D2 and would have arrived at the claimed subject-matter in an obvious way. It found that the synergistic effect evidenced by the Patent Proprietor was “merely a bonus effect of the obvious combination”. [16] According to the established case law of the Boards of Appeal, an effect which was to be expected as the result of an obvious measure could not contribute to recognition of the required inventive step, even if the scale of this effect was surprising to the skilled person. In such a case an effect whose scale surpassed the skilled person’s hopes merely represented a bonus effect following inevitably from the use of an obvious measure and obtained by the skilled person without an inventive effort on his part (see Case Law of the Boards of Appeal of the EPO, 5th Edition, 2006; Chapter I.D.9.7). It has to be examined therefore, whether the combination of xenon and alpha-2 adrenergic agonist was an obvious measure for the skilled person, that is, as repeatedly formulated by the Boards of Appeal, whether the skilled person was in a “one-way-street” situation, when being confronted with the problem underlying the patent in suit. [17] Document D3 itself discloses […] a list of roughly fifty substances that could be added to xenon as a further anaesthetic, analgesic, seditative of muscle relaxant. This list does not contain alpha-2 adrenergic agonists. Moreover, document D3 does not mention that the addition of any of the listed substances has any influence on the neuroprotective activity of xenon. Document D2 demonstrates that dexmedetomidine, an alpha-2 agonist, produces a hypnotic-anaesthetic response in rats and concludes, that, if the animal data can be extrapolated to the clinical paradigm, it “may be more useful as an adjunctive anaesthetic agent.” […] The document does not refer to the neuroprotective activity of dexmedetomidine or to its influence on the neuroprotective activity of another anaesthetic agent. [18] The patent, disclosing […] that alpha-2 agonists such as dexmedetomidine, are known in the art to have neuroprotective activity, refers also to various considerations a skilled person would have before applying alpha2 agonists in a clinical setting. It is stated […] that “the use of alpha-2 adrenoceptor agonists in general anaesthetic practice has been hampered by their lack of anaesthetic potency and side-effect profile.” The lack of potency required the use of very high doses which could result in peripheral vasoconstriction with an increase in blood pressure. Furthermore, alpha-2 agonists have been found to be preconvulsant in some models of epilepsy. Finally, […] it is said that biologically important adaptations to the immediate effects of alpha-2 agonists, a phenomenon generally termed “tolerance”, may lead to a diminished drug effect over time. While tolerance to certain actions are considered to be desirable, “it may mitigate the clinical utility of alpha-2 agonists for chronic pain relief and prolonged sedation in the intensive care setting.” [19] Accordingly, the Board sees no “one-way-street” situation for a skilled person, who, starting from the disclosure in document D3, tries to provide improved anaesthetic formulations. Rather on the contrary, being aware of the undesired side-effect profile of alpha-2 adrenergic agonists, the skilled person would have a tendency not to add it to a xenon containing anaesthetic formulation. The Board decides therefore that the claimed subject-matter is not obvious in the light of the disclosure in document D3 when combined with the teaching in document D2 or any other document on file. The determined synergistic neuroprotective effect of the claimed formulation is not therefore a bonus effect following inevitably from an obvious measure. The Board finally ordered the patent to be maintained as granted. Should you wish to download the whole decision, just click here.
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Interpretative Spotlight: “Resulting”
K’s Law – The ebook
Interpretative Spotlight: “Resulting” 4 Dez 2010
Independent claim 1 of the opposed patent read: A process for producing an epoxidized product of olefins, which comprises (a) a preparation process of an alcohol medium solution of hydrogen peroxide produced by catalytically reacting hydrogen with oxygen in an alcohol single medium using a halogen compound of the platinum group metal without requiring formaldehyde and (b) an oxidation process of olefins using the resulting medium solution of hydrogen peroxide in the presence of an oxidizing catalyst. The opponent appealed the decision of the Opposition Division rejecting the opposition. [2.1] The [opponent] has challenged novelty of the subject-matter of claim 1 of the patent in suit in view of the disclosure in document D1, particularly examples 4 and 5 of that document. [2.2] Document D1 describes the preparation of epoxides from olefins, hydrogen and oxygen using an oxidation catalyst on the basis of titanium or vanadium silicates containing specific platinum group metals, whereby these metals are present in at least two different bond energy states (document D1, claim 7). Examples 4 and 5 of document D1 disclose the single-step preparation of propylene oxide from propene, hydrogen and oxygen in the presence of an oxidation catalyst prepared according to examples 1 and 2 of document D1. The oxidation catalyst is suspended in butanol (example 4) or methanol (example 5) in a pressurized glass reactor and contacted for 30 minutes with hydrogen gas. Thereafter, a gaseous mixture of propene, hydrogen, oxygen and nitrogen is introduced. Chromatographic analysis shows the formation of mainly propane and small amounts of propylene oxide. The oxidation catalyst in examples 4 and 5 of document D1 has been prepared by impregnating a titanium silicate with a Palladium(II)-tetraminochloro complex followed by partial reduction. In the finished catalyst, three bond energy states of the Pd-3d5/2 photoelectrons were identified by means of X-ray photoelectron spectroscopy, which formally correspond to the oxidation states +2, +1 and 0. [2.3] According to the [opponent], claim 1 of the patent in suit encompasses a process for producing an epoxidized product of olefins whereby the processes a) and b) are performed simultaneously as disclosed in examples 4 and 5 of document D1. In its opinion, the wording of the claim merely indicates a causal correlation between both processes. It does not however imply that the processes a) and b) are necessarily separated in space and time. The [opponent] argued that it is part of the general knowledge of the person skilled in the art that a process with two process steps can be run in such a way that both steps are carried out in the same apparatus and the same reaction medium. In this way, the solution of the intermediate in the reaction medium obtained in the first step can be used without isolation of the solution in the second step. The person skilled in the art would therefore understand claim 1 of the patent in suit in such a way as to include the single-step process of examples 4 and 5 of document D1. Furthermore, the [opponent] argued that claim 1 of the contested patent as it stands is clear and that therefore there is no need for interpretation, and in particular there is no justification for a narrower interpretation of its meaning and scope. Such a narrow interpretation is also not in accordance with the description of the patent in suit. In support the [opponent] referred to paragraph [0012] of the contested patent. [2.4] The Board is not convinced by the [opponent’s] arguments. Claim 1 of the disputed patent refers to the production of an epoxidized product of olefins comprising two processes: a) the catalytic reaction of hydrogen and oxygen in an alcoholic single-medium in the presence of a catalyst to form an alcohol single-medium solution of hydrogen peroxide and b) the oxidation of olefins in the presence of a catalyst using the resulting medium solution of hydrogen peroxide. In the understanding of the Board the wording of the claim, and in particular the wording “using the resulting medium solution of hydrogen peroxide”, clearly refers to the use of the product, namely the hydrogen peroxide solution, obtained at the end, i.e. as the result, of the first process 2600 | 3398
Interpretative Spotlight: “Resulting”
K’s Law – The ebook
as one of the starting products in the second process. It does not describe a situation where both processes take place simultaneously and hydrogen peroxide, which may be formed in situ, immediately reacts with the available propene. This understanding of the Board is also confirmed by the description of the contested patent. Nowhere in the description is there an indication that the consecutive running of steps a) and b), which is the way in which the skilled reader would normally understand the wording of the claim, is merely a preferred option. In paragraph [0021] it is explicitly mentioned that “In the present invention the alcohol medium solution of hydrogen peroxide thus obtained is used in an epoxidation reaction step of olefins as the following step”. Thus, the skilled person, despite any general knowledge he may have as to how two-step processes could in theory be conducted, has no reason to interpret claim 1 of the contested patent differently from the way in which he would normally understand it. The Board cannot see either in what sense paragraph [0012] supports the [opponent’s] interpretation of claim 1, since the content of the cited paragraph is identical to the wording of claim 1 of the contested patent. [2.5] In view of the above, the Board concludes that in the process according to the present invention the processes a) and b) are at least separated in time. The subject-matter of claim 1 of the patent in suit is therefore not anticipated by the single-step process according to examples 4 and 5 of document D1 and meets the requirement of A 54. Should you wish to download the whole decision (T 743/07), just click here.
2601 | 3398
T 608/08 – No Sliding
K’s Law – The ebook
T 608/08 – No Sliding 3 Dez 2010
After the patent had been maintained in amended form, the opponents filed appeals. The Board decided to revoke the patent for lack of inventive step. One of the opponents requested the appeal fee to be reimbursed because it had been denied an overhead projector in the oral proceedings (OPs) before the Opposition Division (OD). The denial of the overhead projector appears to really have upset the opponent; it requested that two questions be referred to the Enlarged Board (EBA): (1) whether the OD had the right to decide an important procedural question, in particular the question if a party was allowed to base its presentation on slides (Folien), before the beginning of OPs and without hearing the parties; (2) whether an overhead projector was a common means of expression and whether it could be denied to a party to the proceedings during the OPs without justification and in particular without hearing the parties. *** Translated from the German *** [10] The request for reimbursement of the appeal fee is dismissed because there is no substantial procedural violation as required by R 103(1)(a). [11] The [opponent] invoked the fact that the OD had refused its request that an overhead projector (Tageslichtprojektor) be made available, already before the OPs and, therefore, had violated its right to be heard. According to […] the minutes of the OPs drafted by the OD, the OD has made the following declaration: “VW’s request for making available an overhead projector, requested in the belated written submission of January 14, 2008, is not granted because it is not clear from the written submission what is to be shown and because no corresponding documents have been enclosed.” [12] The [opponent] has explained during the OPs before the Board of appeal that its request would have had to be granted, even though it had not given any corresponding indications what it wanted to show with the overhead projector.
2602 | 3398
T 608/08 – No Sliding
K’s Law – The ebook
The Board does not share this opinion and refers to the decision T 1122/01 [2] cited by the [patent proprietor]. In Regarding the similar legal situation in Germany, the Board refers to the explanations given in the commentary Schulte, PatG, 8th edition, §91, number [4]. Contrary to the explanation of the [opponent], the use of an overhead projector does not constitute the use of an oral means of expression but a visual means of expression. Admitting such technical means may be useful in the interest of a streamlined and more comfortable way of conducting the proceedings as well as a common practice, but as a matter of principle within the discretion of the deciding instance, as it is the latter who conducts the OPs. A 116 is a concrete form of the general right to be heard under A 113(1) and only confers a right to oral expression, but not a right to use technical means. As the [opponent] was able to express itself during the OPs, the fact that no overhead projector was available did not violate its right to OPs or its right to be heard. These provisions also do not oblige the OD to “cursorily” check the slides brought along by the [opponent] during the OPs. It was up to the [opponent] to file the documents such as slides for overhead projection in time before the OPs. The [opponent] cannot construe an obligation of the OD to screen and examine [such slides] during the OPs. The procedural situation is very similar to the situation where an accompanying person is to be allowed to make oral statements to concrete legal and technical questions. Concerning this matter, the EBA has decided inter alia (G 4/95 [headnote 2]) that such a request should specify the subject-matter of the proposed oral submissions and should be made sufficiently in advance of the OPs so that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions. In order to protect the adverse party against a surprising submission it is necessary to ensure, when technical means are used, that the party is protected against manipulative presentations using those means, which justifies the requirement that the subject-matter be made known in due time before the OPs and, if necessary, that hardcopies of the slides that are to be projected with the overhead projector be filed. However, the [opponent’s] request before the OD did not comply with these requirements. Thus the fact that no overhead projector was made available does not constitute a procedural error. Therefore, the Board does not have to deal with the correctness of the allegation of the [opponent] that the request for use of an overhead projector was actually “decided” before the OPs. [13] Moreover, the [opponent] was wrong in invoking a violation of its right to be heard based on the fact that the person of the OD drafting the minutes (? Protokollführer) did not grant the request of the [opponent] for a short period of time for studying the new request situation, although the patent proprietor had been given more than an hour for preparing the new auxiliary requests. The person drafting the minutes had wrongfully justified this refusal by stating that the opponent always had to be able to express its opinion on any requests, even without having time for studying the requests. In principle the Board agrees with the [opponent] that when the patent proprietor files new claims, an opponent has to be offered an opportunity to study the new request situation, which means that at least the OPs have to be interrupted, possibly for a long time. However, it has to be emphasized that this only applies if claims the content of which is new have been filed. In the present case the OD has maintained the patent on the basis of auxiliary request III, which means that a procedural violation which allegedly concerns requests IV to VI cannot have been causative for the decision. Auxiliary request III differed from the main request in that the former characterising feature was incorporated into the preamble and in that the features of dependent claims 3 and 11, which formerly depended on claim 1 were added as characterising features: “… characterised in that the source of light is a LED and in that the LED projects in part into the entry opening of the cover part.” As claim 11 of the main request also referred back to its claim 3, the new text of auxiliary request III does not establish a new combination of claims. To this extent the limiting combination of claims coincided with the subject-matter of the claims of the main request. Therefore, the preparation required for the OPs on the basis of the main request filed also automatically included the subject-matter of auxiliary request III. The admission of auxiliary request III, therefore, did not create a new procedural situation necessitating an interruption of the OPs by the OD. This distinguishes the present case from the case underlying decision T 783/89 cited by the [opponent] where a completely new wording of claim 1 introduced a new feature which was not explicitly disclosed, neither in the requests on file by then, nor in the application (see reasons for the decision, [VI] and [4.3]). The Board does not ignore the fact that even a new combination of features from dependent claims can be so complex that the need for a fair trial and the right to be heard necessitate an interruption of the OPs in order to allow the adverse party to study the case, even though the requests on file already (partly) contained the subject2603 | 3398
T 608/08 – No Sliding
K’s Law – The ebook
matter of the newly filed limiting combination of claims. However, in the present case there was no such procedural situation because the technical feature of dependent claims 3 and 11 were modest (anspruchslos) on a technical level and did not set the technical subject-matter of what was the main request until then into a new, more complex technical context. Based on this legal situation, the Board did not deem it necessary to answer the question of whether a legal opinion expressed by the person drafting the minutes can constitute a decision of the OD and of whether the [opponent] has failed to bring about such a decision. Therefore, it is certain that the impugned decision was not based on a substantial procedural violation within the meaning of R 103(1). [14] The requirements for a referral of legal questions to the EBA under A 112(1) were not fulfilled. The corresponding requests of the [opponent] had to be dismissed and did not form a basis for a referral by the Board of its own motion. The questions formulated by the [opponent] in its written submission dated May 19, 2010, cannot be referred, if only because there is no general answer to the questions to be referred, because they are formulated in a way that is ambiguous from the point of view of procedural law (prozessrechtlich) or because in the case under consideration the answer depends to a great degree on the concrete facts of the case. From the above explanations of the Board it is clear that it is always possible to make the provision of an overhead projector dependent on the timely submission of the content of the planned projection before the OPs. This legal opinion of the Board is in keeping with the decision T 1122/01 cited above and the principles for the preparation of OPs as set out by decision G 4/95 of the EBA. The Board is of the opinion that the differing legal opinion held by the [opponent] is not a sufficient reason that would require a referral to the EBA under A 112(1). As to the second legal question raised by the [opponent], whether it is necessary to interrupt the OPs when new claims are filed by the patent proprietor, the Board has not taken its decision based on a legal understanding that differs fundamentally from the opinion expressed by the [opponent]. This also holds true for combinations of claims taken from dependent claims, if they create a new procedural situation for the [opponent] to which it did not have to be prepared. The question of whether the actual situation is such a situation is a factual question that has to be answered taking into consideration the circumstances of the case. Such a question cannot be referred to the EBA. In any case the differing legal opinion held by the [opponent] is not a sufficient basis that would require a referral to the EBA under A 112(1). […] The request for reimbursement of the appeal fee is dismissed. NB: I am not quite sure what is meant by ‘Protokollführer’ of the OD, so I translated by ‘person drafting the minutes’. It could be that the chairman or a registrar of the OD is meant. If one of my readers can clarify this detail, please leave a comment. Should you wish to download the whole decision (in German), just click here.
2604 | 3398
T 1138/09 – No Transformation
K’s Law – The ebook
T 1138/09 – No Transformation 2 Dez 2010
This decision deals with the decision of the Opposition Division to reject the oppositions filed against the patent under consideration. Claim 1 of the patent as granted read: A surgical tissue coagulator (A) comprising an elongate, biocompatible, tube (10) having an open distal end (12) and a proximal end (14); means (22) for connecting the proximal end (14) of said tube (10) with a source (24) of an inert, ionizable gas so that a stream of said gas can flow through said tube (10) and exit the distal end (12) of said tube (10); a handle 18 attached to said tube (10) adjacent the proximal end (14) of the tube (10) for maneuvering said tube (10); a wire (28) within said tube (10) for conducting radiofrequency current, the wire (28) having a distal end (30) for positioning adjacent the distal end (12) of said tube (10), and means (32) at the distal end (30) of said wire (28) for discharging an arc (34) of radiofrequency energy away from the distal end (30) of said wire (28) within said stream of inert gas exiting the distal end (12) of said tube (10) so as to form an ionized gas stream which is capable of coagulating tissue (38) during endoscopic surgery within a patient, the wire (28) having a proximal end (40) opposite the distal end (30) of the wire (28), and means (42) for connecting the proximal end (40) of the wire (28) with a source (44) of radiofrequency energy, characterized in that said tube (10) and said wire (28) are flexible, the tube has further an external diameter of less than about 5 mm, is insertable into a surgical endoscope (16) having a length of at least about 35 cm, and in that said handle is adapted for maneuvering said tube (10) within said endoscope (16) while said handle (18) is outside said endoscope (16).
When discussing inventive step of this claim, the Board makes a statement on A 53: [4.3] In the Board’s judgment, the inventive step of the claimed solution resides in the combination of all features of the claim, i.e. the structural features of the coagulator (K1 to K3) and the fact that the coagulator is
2605 | 3398
T 1138/09 – No Transformation
K’s Law – The ebook
specifically designed for insertion into an endoscope as defined by features K4 to K6, which are functional features. The coagulator according to the invention involves an inventive step since the claimed solution permits the coagulator to be used in single-port endoscopic surgery with direct and continuous observation of the treatment site. The operation can be performed and observed through a single endoscope which may be flexible and can remain in the desired position to which it was previously manoeuvred. Contrary to the assertions of the appellants, A 53(c) is not relevant in the present case since the claim is directed to a coagulator, i.e. a physical entity, and not to a method of treatment by surgery or therapy, i.e. a physical activity, which represents a different category of claim (G 2/88 [2.2]). In general, a claim to a physical entity confers absolute protection, which also encompasses all its uses (G 2/88 [5]). A 53(c), second sentence, explicitly states that the exclusion provision does not apply to products for use in such methods. Whereas method claims are absolutely forbidden in order to leave the physician free to act unfettered, product claims are allowable provided their subject-matter is new and inventive (G 2/08 [5.7]). The fact that some features of the claimed apparatus are functional, as in the present case, does not in itself transform the claim into a method claim (T 712/93 [3]). There is no reason to disregard advantages achieved in the use of the claimed coagulator when assessing inventive step, even when this use relates to surgery or therapy. Should you wish to download the whole decision, just click here.
2606 | 3398
T 530/08 – It’s For Real
K’s Law – The ebook
T 530/08 – It’s For Real 1 Dez 2010
The present case deals with appeals filed after the Opposition Division (OD) had maintained the patent in amended form. Claim 1 before the Board read: Composition for dyeing keratinous fibres and in particular human keratinous fibres such as hair, containing in an appropriate dyeing medium, (i) at least compound chosen from those of the following formulae [follow 77 formulae filling 33 pages (!) in the decision], the said composition being characterized in that it contains, in addition, (ii) at least one anionic surfactant chosen from the group comprising: (ii-1) - acyl isethionates; (ii-2) - acyl taurates; (ii-10) - mixtures thereof. In order to establish inventive step, the patent proprietor filed comparative trials, which were criticized by the opponents. The Board had some interesting things to say on such trials. *** Translated from the French *** [3.1.3] The Board agrees with the parties and the OD and considers that document D2 constitutes the closest prior art and, therefore, the starting point for the assessment of inventive step. [3.2] According to the [patent proprietor] the technical problem to be solved with respect to this prior art was to provide dyeing compositions resulting in colorations on keratinous fibres having improved selectivity. [3.3] The solution proposed by the impugned patent is the composition according to claim 1 characterised by the presence of a surfactant chosen among acyl isethionates, acyl taurates and mixtures thereof. [3.4] The [patent proprietor] refers to the results of comparative trials […] comparing the selectivity of colorations obtained with one of the claimed compositions and with one composition according to D2, in order to demonstrate that the desired improvement had its origin in the claimed compositions. The trials allow a comparison of the selectivity of colorations obtained with a comparative composition B containing the direct cationic colouring agent, Basic Red 51, and sodium lauryll ether carboxylate (Akypo RLM 45 N) as surfactant, and reflecting a composition according to document D2, on the one hand, and with composition C according to the invention, which differs from composition B only by the equimolar replacement of the sodium lauryll ether carboxylate by sodium methyl cocoyl taurate, on the other hand. The results obtained establish a higher colouring difference on natural hair comprising 90% of white hair, with respect to permed hair comprising 90% of white hair, when the coloration is obtained with composition B according to the prior art (selectivity ΔE = 2.8) as compared to the colour obtained with composition C according to the invention (ΔE = 0.7). These comparative trials, therefore, demonstrate in a convincing manner that the replacement of the surfactant in the composition of document D2 by an acyl taurate leads to a coloration of improved selectivity, and which, as a consequence, is more homogeneous, when compared to the coloration obtained with the composition according to document D2. The acyl taurate surfactants and the acyl isethionates have the general formula R1-CH2-CH2-SO3(-)M(+) and, therefore, possess the same ethylsulfonate function which is linked to the acyl group via un oxygen or nitrogen atom, respectively. These surfactants are structurally very close, which makes it credible that the effect on selectivity demonstrated with an acyl taurate is also obtained with an acyl isethionate. Furthermore, the Board notes that during the oral proceedings, when confronted with one of its questions, the [opponents] have declared that they did not object to the breadth of claim 1 as finally filed by the [patent proprietor].
2607 | 3398
T 530/08 – It’s For Real
K’s Law – The ebook
[3.4.1] Nevertheless, the [opponents] have objected to the relevance of those trials that composition B illustrating the prior art did not exactly reproduce the composition exemplified in document D2 but in particular used a different cationic surfactant. The Board cannot follow this argumentation which would imply that a comparative trial could only be carried out by reproducing exactly a composition exemplified by the prior art. As a matter of fact, a comparative trial is also relevant if it shows that the alleged effect has its origin in the feature(s) distinguishing the invention from the closest prior art (see T 197/86 [6.3]). In the case under consideration, the [opponent] has not contested the fact that the composition according to the invention causes a reduced selectivity difference when compared, under identical conditions, to a composition of the closest prior art, wherein the difference consists only in the nature of the surfactant, which is the feature distinguishing the invention from the prior art. Therefore, the comparative trials carried out by the [patent proprietor] are sufficient because they convincingly show that the improvement of the selectivity is caused by the distinguishing feature of the invention. Thus the trials are convincing and the argument of the [opponents] has to be dismissed. [3.4.2] According to the [opponents], the selectivity difference observed when comparing a coloration obtained with a composition according to the invention and a composition according to the prior art is not significant because it is a difference of only two units, which falls within the margins of error. However, the selectivity differences reported in the comparative trials have been demonstrated by carrying out measurements with a spectrophotometer. Thus the differences have been measured objectively. Moreover, the selectivity difference observed during those trials comparing the colorations is not negligible because a difference of two units in ΔE is considerable with respect to the absolute values measured, i.e. 2.8 and 0.7, respectively. As a consequence, in the absence of evidence to the contrary, which is incumbent on the parties contesting the experimental results, i.e. the [opponents], the improvement of the coloration selectivity is considered credible. Therefore, in the case under consideration, the credible results of the trials filed by the [patent proprietor] cannot be dismissed on the basis of the mere allegation of the [opponent] that the improvement is within the margins of error (see T 1050/07 [4.4.2]). [3.4.3] The [opponents] have also pointed out that the improvement was imaginary because the selectivity difference that had been demonstrated was not perceptible to the naked eye. The Board cannot follow this speculation because, in the present case, the technical effect is significant and it is demonstrated by means of a precise and reproducible technical measurement method. Therefore, this unfounded argument also has to be dismissed (see T 235/04 [4.5]). [3.4.4] Finally, the argument according to which there was no improvement of the coloration intensity has to be dismissed as not relevant, because the intensity is only one of the three parameters that make up the selectivity. As a matter of fact, the [patent proprietor] has demonstrated a significant improvement of the coloration selectivity which comprises not only a parameter related to the intensity of the coloration but also the chromaticity parameters a* and b*. The reader having come so far will not be surprised to learn that the Board concluded that the claims under consideration involved an inventive step. Should you wish to download the whole decision (in French), just click here.
2608 | 3398
T 1985/09 – He Who Rows Wind Reaps A Refusal
K’s Law – The ebook
T 1985/09 – He Who Rows Wind Reaps A Refusal 30 Nov 2010
The present decision deals with the refusal of a divisional application by the Examining Division (ED). Claim 1 of the application read: Rotary windrower (1) with swath circles that are driven about essentially vertical axes, arranged staggered behind one another in travelling direction (F) and supported on the ground by rotating wheels, for raking up the harvested crop, wherein the swath circles can be pivoted up from the working position into a transport position and vice versa, wherein the swath circles are connected to an underframe (5) attached to radial arms in joint axes, characterised in that the rotary windrower (1) is formed by swath circles (2,2’,3,3’,4,4’) forming at least three staggered rows (10,11,12), so that at least one basic structure (8) is arranged between the leading staggered row and the rear staggered row (10,12) and in that the distance (61) between the two staggered rows (10,11) that are foremost in the travelling direction (F) is smaller than the distance (62) between the two staggered rows (10,12) that are rearmost in the travelling direction (F). *** Translated from the German *** [2.1] According to the established case law, the assessment of whether a divisional application complies with the requirements of A 76(1) with respect to the former parent application is carried out according to the same principles that have been developed for A 123(2), see Case Law of the Boards of Appeal, 5th edition, 2006 (hereinafter “Case Law”), section III.F.1.3, or G 1/05 [5.1]. Thus the subject-matter of the divisional application has to be directly and unambiguously derivable from the former (parent) application, the content of which is formed by the description, the claims and the drawings. The drawings may in principle serve as basis for the features to be introduced, in particular when [their] function and structure are directly, completely and unambiguously apparent to the skilled person (Case Law, III.A.1.3). As a general rule, an isolated feature may only be extracted from a combination of features in the absence of any clearly recognisable functional or structural relationship among that features (see decisions T 1067/97, T 714/00 and T 25/03 cited in Case Law, III.A.1, p. 240). This principle also applies to the incorporation of features from drawings (see, e.g. T 191/93 or T 676/90). [2.2] As compared to claim 1 of the parent application, claim 1 of all requests now contains the new feature that the distance between the two staggered rows that are foremost in the travelling direction is smaller than the distance between the two staggered rows that are rearmost in the travelling direction. As acknowledged by the appellant, there is no verbatim basis for this feature in the description or in the claims of the parent application. Rather, the figures serve as basis for this feature. The Board is of the opinion that the figures are sufficiently detailed so as to enable the derivation of relative dimensions. For example, all figures consequently show different distances between the rows, which suggests an intention on behalf of the author.
2609 | 3398
T 1985/09 – He Who Rows Wind Reaps A Refusal
K’s Law – The ebook
[2.3] However, the figures also contain many other features, among which the appellant has set apart as relevant for the invention solely the actual feature of claim 1. When assessing the admissibility, the question arises of whether the skilled person, in view of the figures in their relationship with the whole content of the parent application and taking into account his basic knowledge, would directly and unambiguously recognize that this very feature that has been set apart is of particular technical importance, i.e. plays a paramount role in obtaining a particular technical function or effect. The Board is convinced that no such direct and unambiguous teaching can be found in the parent application. [2.4] As already mentioned, the text (description or claims) of the parent application does not expressly mention this feature, and even less so a function or effect that is closely related to it. Paragraphs [0004] and [0008] deals with the general problem of how to safely guide a rotary windrower having a great working width in road traffic, as well as with a profile ensuring this. Paragraphs [0010], [0025], [0026] and [0048], however, deal with the possibility of modifying the length of the radial arms bearing the circles, which allows to deposit great swaths and transfer swaths under different circumstances of use. Finally, paragraph [0048] describes the use of a stock edge guiding system or a system for identifying obstacles. Even when putting together these passages, the Board cannot find therein that the arrangement that is disclosed allows better deposit when cornering or results in constructive tolerance for situating the basic structure. The “optimum distances” mentioned in paragraph [0010] […] refer to the general possibility of producing different swath deposits mentioned in the preceding lines, inter alia also by varying the allocation of directions of rotation, whereby the rotary windrower can be used in a more flexible way […]. The manoeuvrability is mentioned […] exclusively in relation with the (independent) steerability of the rotating wheels. The relative distance of the staggered rows is not mentioned there, neither explicitly nor implicitly. [2.5] Even if the Board assumed that said effect – better deposit when cornering plus constructive tolerance – results from such an arrangement, their effect would depend on many other factors and not only from the relative distance of the staggered rows. The general geometry of and the relative dimensions of the different structural elements, such as, for example, the relative dimensions of the swath circles, their relative distance with respect to the underframe, the relative length of the underframe, the position and relative dimensions of the basic structure, etc., may be expected to also have a considerable influence on the improved deposit of swaths when cornering. The Board is not convinced that the skilled person, if he had derived the alleged effect from the parent application at all, would have recognized immediately and without further ado that the relative distance plays a paramount role. [2.6] Moreover, it does not necessarily follow from the parent application that the greater distance between the two rearmost staggered rows is related to the lodging of the underframe or that it would make it possible. For instance, paragraph [0021] also discloses other arrangements of the basic structure between the first and the third staggered rows. Whether the basic structure can be lodged between the rear staggered rows even when the latter are pivoted up does not only depend on their distance but also on their length, see Figures 9 and 10.
2610 | 3398
T 1985/09 – He Who Rows Wind Reaps A Refusal
K’s Law – The ebook
[2.7] As a result, the Board notes that the skilled person would clearly and without further ado recognize the greater distance between the rear staggered rows (from the figures) but would not directly and unambiguously recognize the technical meaning of this single feature – i.e. the technical effect or function resulting from this feature alone – from the whole content of the parent application. As this feature has been isolated and set apart from many other features, it gains a new, particular meaning. Therefore, claim 1 of the divisional application, which is common to all requests, adds a new fact, which goes beyond the content of the parent application. Thus none of the requests complies with the requirements of A 76(1). The appeal is dismissed. Should you wish to download the whole decision (in German), just click here.
2611 | 3398
T 1440/08 – In Through The Back Door
K’s Law – The ebook
T 1440/08 – In Through The Back Door 29 Nov 2010
Claims 1, 6, 7, and 8 of the patent as granted read: 1. Torsional vibration damper having a driving transmission element which is connected, by means of a damping device (79) which acts in the circumferential direction, to a driven transmission element (53) which can move rotationally relative to the driving transmission element (36), at least the driven transmission element (53) having a centrifugal mass element (51) which is composed of a deformable sheet steel plate, is connected in a rotationally fixed manner by means of at least one first connecting face (94) to a hub disc (39), said hub disc (39) centring the driven transmission element relative to the driving transmission element, holds a friction clutch (55) by means of at least one second connecting face (96), and provides a friction face for a friction lining of a clutch disc (63) of the friction clutch, characterized in that the centrifugal mass element (51) is formed as a cutout portion (92) from a steel sheet (90) and has substantially the same surface quality as the steel sheet (90), it being possible on account of said surface quality to dispense with remachining even at the connecting faces (94, 96) of the centrifugal mass element (51) [feature B]. 6. Torsional vibration damper according to one of Claims 1 to 5, characterized in that [feature C:] a profiling (106) is formed on the rear side (104), which faces away from the friction face (98), of the centrifugal mass element (51) by means of the forming process, in which profiling (106) planar profiling faces (108) are provided alternately with grooves (110) which dip into the centrifugal mass element (51). 7. Torsional vibration damper according to Claim 6, characterized in that [feature D:] the profiling (106) is embodied so as to form a waffle pattern (112) having grooves (110a, 110b) running in two substantially perpendicular planes of extent. 8. Torsional vibration damper according to Claim 7, characterized in that [feature E:] the grooves (110a) in a first direction of extent (114) run in substantially the same direction of extent as a grain structure (118) of the centrifugal mass element (51), while the grooves (110b) cross the grain structure (118) in the substantially perpendicular direction of extent (116) to the latter. Claim 8 of the first auxiliary request corresponded to a combination of claims 1, 6 (feature C), 7 (feature D), and 8 (feature E) as granted. ** Translated from the German ** [4] According to the established case law of the Boards of appeal of the EPO (see T 310/87 NB: This citation is erroneous, it shouls read T 301/87) objections under A 84 are admissible in opposition and opposition appeal proceedings, if they are based on amendments of the patent. It was argued that, in view of T 367/96 [6.2], it is not possible to examine conformity with A 84 in opposition and opposition appeal proceedings when the amendment consists in the combination of several claims as granted. However, T 367/96 concerns specific objections against a lack of support of the claims in the description, whereas the present case concerns contradictions within a claim arising from the amendment. If the combination of claims as granted makes the invention appear in a different perspective, giving rise to a lack of clarity which was already present in the patent as granted, the established case law of the Boards of appeal of the EPO (see e.g. T 472/88, T 420/00, T 681/00) definitely allows the Boards to examine objections under A 84. This is true in particular when, as in the present case, the lack of clarity concerns features which are decisive in the assessment of novelty and inventive step (see T 1459/05) In the present case claim 1 was amended by adding features C to E, which correspond to claims 6 to 8 as granted. The introduction of these features gives rise to a lack of clarity of claim 1, or to a contradiction between features B and C. However, when the addition of a feature leads to a contradiction in the wording of claim 1, one has to consider that the lack of clarity is due to the amendment. As the lack of clarity is directly due to the amendment, the Board can examine whether the claim complies with the requirements of A 84 or not (T 310/87). 2612 | 3398
T 1440/08 – In Through The Back Door
K’s Law – The ebook
Feature C provides a forming process on the rear side of the centrifugal mass element, which, as can be seen from paragraphs [0010] and [0020] of the opposed patent, is carried out in order to increase the surface quality. As a consequence, the forming process is to be understood as remachining in view of a modification of the surface quality and is in contradiction with feature B, which excludes remachining. The [patent proprietor] explained that the aim of the forming process according to feature C is to improve the conduction of heat by structuring the rear side of the centrifugal mass element, that the slight modification of the surface quality of the grinding surface was a side effect and that the grinding surface had essentially the same surface quality as the sheet steel plate. However, the Board cannot endorse this argumentation because there is no indication of such an effect of the rear side machining in the description. Quite to the contrary, the description explicitly explains that the aim of the remachining is an increase of the surface quality. As a consequence, this effect cannot be seen to be a side effect and it is not possible to presume that the grinding surface had “essentially the same surface quality” as the sheet steel plate after [the remachining]. Thus there is a contradiction between the features B and C of claim 1 such that the wording of the claim is unclear and does not comply with the requirements of A 84.
Personally, I do not like this approach because it sort of introduces clarity as a ground of opposition through the back door. The lack of clarity was already present in the patent as granted, and so was the combination lacking clarity. This being said, it is clear that in most cases the Examining Divisions do not check the clarity of all the possible combinations contained in the claims as granted, and it may well be that the Boards, as stated in T 1459/05, “need to have a power of discretion in order to be able to deviate, on a case-by-case basis and as an exception to the generally admitted practice”. To complete the case law given in the decision, one may also cite T 656/07 (3.2.02), but also T 1659/07 (3.5.03), where T 656/07 is said to be “a particular case that cannot be generalised”, and T 1484/07 (3.3.10). One has the impression that the Boards have not reached a consensus on this topic yet. Should you wish to download the whole decision (in German), just click here.
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T 479/09 – Skilled, Not Stupid
K’s Law – The ebook
T 479/09 – Skilled, Not Stupid 27 Nov 2010
The skilled person may not be the brightest person in the world (you might remember that T 60/89 [2.2.4] had found that “the skilled person in the field of genetic engineering in 1978 [was] not to be defined as a Nobel Prize laureate, even if a number of scientists working in this field at that time were actually awarded the Nobel Prize”), but he/she is not a dummy either. [2] The [opponent] argued that “all disclosure in the patent specification relating to the claimed pad gives the weight of the cigarette paper in the units gm² or g m². The dimension expressed by this unit is … the dimension of a moment of inertia” and that therefore, the skilled person would be completely confused and unable to carry out the invention. This point of view cannot be shared. Any skilled person in the paper industry will have no problem in understanding the units involved as the units gm2 or g m2 are well understood and commonly used to mean grams per square metre, all the more, because as indicated inter alia in D5 which is a glossary defining paper print terms “gm2” is a way of expressing the weight of paper in grams per square metre. Should you wish to download the whole decision, just click here.
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T 754/08 – Yes But
K’s Law – The ebook
T 754/08 – Yes But 27 Nov 2010
In the present decision the Board also deals with a nice attempt by the opponent to take advantage of the lack of precision of the patent under consideration. [3.2] Starting from the device disclosed in D9, the object underlying the claimed invention has to be regarded as to provide a suitable tool for operating this device without the need to provide an element adapted to abut against a neighbouring stationary object […]. To achieve this object, claim 1 proposes a fluid-operated ratcheting tool exhibiting the features according to the characterising portion of the claim. The rotatable outer projection is connected with the rotatable tool element to rotate it. The inner non-rotatable projection is connected with the non-rotatable tool element and provides the necessary reaction force without the need for an element adapted to abut against a neighbouring stationary object. [3.3] D26 shows a hydraulic ratcheting tool (ULC-type with auto-back-up wrench) which, in operation, has an element (an arm with a rectangular opening) which holds a bolt stationary while another element (a rotatable element with a hexagonal opening) applies a rotation to the nut surrounding the bolt. Therefore, the movement realised is, from a kinematic point of view, the same as that required by D9, i.e. the rotation of a tool element surrounding a non-rotatable element. [3.4] However, as acknowledged by the [opponent] itself, the tool of D26 cannot be used as such to operate the device of D9, but needs to be modified for this purpose. Contrary to the submission of the [opponent], said modifications cannot be considered minor. Not only had both the rotatable and the stationary elements of the tool to be modified to project from the housing of the tool; also the way in which the tool engages with the elements to be held stationary and to be rotated had to be changed, since the inner part 4 and the outer part 3 of the device of D9 are engaged with on their inner surface, while the bolt and the nut shown in D26 are engaged with on their outer surfaces. Moreover, these modifications, changing the way of engaging the different rotatable and stationary elements, imply a different way of applying the torque. Since the tool shown in D26 is designed for applying high torques, the person skilled in the art would be dissuaded from changing the application of the torque in a way which might impair the tool’s functioning. Therefore, it was not obvious for the person skilled in the art to try to achieve the given object by selecting the ULC-type tool with auto-back-up wrench shown in D26 and modifying it according to claim 1. [3.5] This finding cannot be challenged by the [opponent’s] argument according to which the alleged lack of detail of the patent in suit proved that the common general knowledge of the person skilled in the art enabled him to modify the tool shown in D26 to operate the device of D9. It is not disputed that the person skilled in the art was in a position to perform these modifications. However, the relevant question when examining inventive step is not whether the person skilled in the art could have carried out the claimed invention, but whether he would have done so in the hope of achieving the object underlying it. For the reasons explained above, in the present case this question is to be answered in the negative. […] [3.8] In view of the above, the subject-matter of claim 1 of the main request involves an inventive step. Should you wish to download the whole decision, just click here.
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J 11/09 – Call Of Duty
K’s Law – The ebook
J 11/09 – Call Of Duty 26 Nov 2010
One of the more delicate situations a professional representative can encounter is when his/her client does not settle the bills. The present decision shows a case where such a situation led an experienced attorney to act in a way that was found to violate his duty to exercise all due care. The Board found the appeal and the request for re-establishment to be formally admissible. The following passage deals with the allowability of the request: *** Translated from the German *** [3.2.1] According to the established case law of the Boards of appeal, a request for re-establishment can only be granted if the party filing the request under A 122 has taken all due care required by the circumstances and nevertheless could not observe a time limit. All the circumstances of each case must be looked at as a whole. The obligation to exercise due care must be considered in the light of the situation as it stood before the time limit expired. In other words, the steps the party took to comply with the time limit are to be assessed solely on the basis of the circumstances applying at that time (see: Case Law, 5th edition, 2006, chapter VI.E.6, p. 372) By “all due care” in this context is meant all reasonable care, that is to say, the standard of care that the notional reasonably competent patentee/applicant/ representative would employ in all the relevant circumstances (cf. T 30/90 [3]). When determining the standard of due care, it has to be taken into account that during the whole examining proceedings the appellant was represented by a professional representative who declared that he had paid all due fees in advance. In this context it also has to be taken into account that the private practice of the professional representative is a small office, the only other employee being the representative’s wife, who was in charge of the accounting, as well as the fact that the representative followed a – partly inpatient and partly ambulatory – medical treatment between march 2008 and January 2009. [3.2.2] For the request for re-establishment and, therefore, the present appeal to be justified, it is decisive whether both the applicant himself and his professional representative have taken all due care required by the circumstances, both in the general organisation of the internal procedures and in the concrete handling of the payment of the renewal fee for the third year. [3.2.3] The appellant has presented the following particular circumstances which hindered him from concretely and correctly handling the payment relating to the renewal fee for the third year and the additional fee: (1) a staff member of the private practice accidentally forgot to pay the renewal fee; (2) the professional representative was temporarily unavailable, due to health reasons, between March 2008 and January 2009; (3) the applicant faced financial difficulties. […] [3.2.4] Insofar as the appellant refers to an accidental omission to pay the renewal fee, it is decisive whether all due care required by the circumstances was taken, both in the general organisation of the internal procedures and in the concrete handling of the payment of the renewal fee for the third year. [3.2.4.1] Apart from the fact that the submissions of the appellant concerning the circumstances that hindered him from correctly handling the payment which have been given during the proceedings before the Examining Division (ED) and in the present proceedings are not congruent, none of the circumstances that have been presented can excuse the omission to pay the renewal fee for the third year in due time under A 86(1) or at least the grace period under R 51(2), with an additional fee. 2616 | 3398
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[3.2.4.2] According to the submissions related to the appeal (Beschwerdevorbringen), which the appellant has again confirmed in his statement in response to the opinion of the Board […] the professional representative of the appellant had de facto taken over the task of advancing the patent fees falling due, including renewal fees, and charging the appellant after the payment. It was also the professional representative who took the initiative of paying the fourth renewal fee for all applications […] as well as the fees for re-establishment and the appeal fees. To this extent the payments of the fees were made independently of the appellant. Moreover, it can be seen from the submissions related to the appeal that the professional representative had not made the payment of the third renewal fee because he did not want to advance it again, as the appellant had not settled other invoices. As a consequence, the omission of the payment of the third renewal fee plus the additional fee was not accidental but conscious. Moreover, after the invoice of July 23, 2008, the representative of the appellant has not asked the latter again if the fee was to be paid or warned him of the danger of a loss of rights. Also no reasons have been given – nor does the Board see any – why the appellant did not react to the invoice sent by his professional representative on July 23, 2008. Accordingly the submissions related to the appeal makes it impossible to consider that both the appellant and his representative had taken all due care. [3.2.4.3] Irrespective of the conscious omission to pay the renewal fee, which as such already excludes the required re-establishment, the appellant cannot in addition point out that the assistant of the professional representative had made a mistake when calculating the grace period for the payment of the renewal fee for the third year plus the additional fee, as he has done in the proceedings before the ED. This mistake is a mere mistake of calculation because it is based on a misinterpretation of R 51(2). According to the established case law, however, ignorance or misinterpretations of a provision of the EPC cannot justify reestablishment (J 31/89 [3]; Case Law, chapter VI.E.6.3.2b), p. 380 et seq.). The period of six months, calculated from the due date of the renewal fee that had been missed (due date: May 31, 2008; end of the grace period: December 1, 2008) follows from R 51(2) EPC. The assistant – as well as the representative of the appellant in the appeal proceedings – have misinterpreted (verkannt) this provision. On that subject, the appellant cannot successfully assert that the late payment was still possible until the end of January 2009, as this corresponded to the end of the month in which the payment was due (Fälligkeitsmonat). This understanding of the legal situation (Rechtsauffassung), which the appellant presented in his statement of February 25, 2010 / March 1, 2010 filed as a response to the notification of the Board dated December 29, 2009, is not in harmony with R 51. It is true indeed that the renewal fess for a European patent application in respect of the coming year fall due on the last day of the month which has the same name as the month containing the date of filing of this application (R 51(1)) but this provision concerns the regular payment. To the extent to which R 51(2) allows the late payment of a renewal fee that has not been paid until the due date (Fälligkeitseintritt), the wording of this provision provides a period of six months after the payment was due, in the present case after expiry of the normal period for paying the fee under A 86(1) and R 51(1). There is no legal basis in the EPC for mixing those two rules in the way presented by the appellant in his statement filed as a response to the notification of the Board, coming to the conclusion that the grace period ended only after expiration of the sixth month after the communication of the ED dated July 4, 2008. The appellant also misinterprets (verkennt) the corresponding hint of the Board in its notification of December 29, 2009. […] [3.2.5] As far as the alleged unavailability of the professional representative for health reasons is concerned, the general organisation of the internal proceedings in his private practice are relevant. [3.2.5.1] It is true that the case law of the Boards of appeal acknowledges that when the question is to be answered whether all due care required by the circumstances has been taken in order to observe a time limit, there may be different requirements for small private practices and companies, concerning the organisation of the monitoring of time limits, depending on the size and the type of private practice or the company, as the case may be, and on the number of delays that have to be monitored. Unlike the situation in a big private practice or a big company having a patent department, one may consider that there is no need for a checking mechanism in a small private practice or a small company where, as a general rule, reliable staff works in an efficient and personal way (J 11/03 [7]; T 166/87 [2]). In the present case, however, there was no presentation of the usual work process in the private practice if the 2617 | 3398
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K’s Law – The ebook
professional representative of the appellant as far as checking of fee payments is concerned. The Board, in its notification dated December 29, 2009, has expressly pointed out this fact, but the appellant has not filed any further submissions on this topic in his statement. [3.2.5.2] The fact that the professional representative – who declared himself to be “one of the first pioneer representatives” (Pioniervertreter der ersten Stunde) – has not made a single mistake so far, as he pointed out, is not a suitable argument for convincing the Board that there was a functioning system for checking payments and time limits within the meaning of the case law of the Boards of appeal (cf. J 2/86 and J 3/86 ; J 23/92 ; T 491/89 [6]). The general reference to an “error free” functioning of the management of the fee list by the professional representative’s wife as well as her technical training, professional qualification and experience with fee payment over a period of twenty years cannot be sufficient for establishing that the requirements for due care have been observed, either. [3.2.5.3] Moreover, the professional representative apparently was not continuously unavailable, due to health reasons, over the whole relevant period of time, [so as to be unable] to act as a patent attorney for the patent application under consideration. According to his submissions during the proceedings before the ED and during the appeal proceedings, he underwent a short inpatient medical treatment in March and suffered from medical problems in the following weeks and months, in particular from November 2008 until the expiry of the grace period for the payment of the renewal fee plus the additional fee. However, the appellant did not argue that these problems had completely hindered him from working. Moreover, it has not been shown whether and which precautions the representative of the appellant had taken in order to guarantee that in case of his being unavailable for health reasons other persons would act in order to observe the time limits. Such precautions may be expected from a professional representative in the framework of his duty to exercise all due care (J 41/92; T 324/90). [3.2.5.4] Moreover, the professional representative of the appellant admitted that he consciously had not paid the third renewal fee because some invoices had not been settled (see above [3.2.4.2]), so that the omission to pay the fee cannot be said to be due to an isolated mistake in an otherwise satisfactory system in the private practice of the professional representative. [3.2.5.5] Finally, after [having sent] the invoice to the appellant on July 23, 2008, the professional representative has not asked him once more if the fee was to be paid or warned him of the danger of a loss of rights. This omission as such is a violation of the duty of a professional representative to exercise all due care. [3.2.5.6] Given that the only statement of the appellant regarding the question in the notification of the Board […] concerning the usual work process for fee payments is that he might (wohlmöglich) use the services of a professional third party for future fee payments, this statement is not relevant for the decision. Irrespective of the fact that the letter of the PAVIS invoicing, information and service organisation of the patent attorneys in Germany, dated February 4, 2010, is only a service offer without any legal obligation, it is in any case irrelevant for the payment that had been missed in 2008, which underlies the appeal proceedings. [3.2.6] As far as the – alleged – financial difficulties of the appellant are concerned, the Board has acknowledged in earlier cases that financial difficulties for which [the requesting party] was not responsible (unverschuldet) and which led the party to miss time limits for fee payments, can be a reason for allowing re-establishment. Such requests can only be allowed if the financial difficulties were serious and due to circumstances for which the requesting party is not responsible (die der Antragsteller nicht zu vertreten hat) and if the requesting party has exercised all due care in seeking financial assistance (J 22/88 ; J 9/89 [3]; T 822/93 [8]). The appellant has not given any details concerning his financial difficulties, nor has he made credible (R 136(2)) that during the period under consideration (May to December 2008) he had no means that would have allowed him to make the payments, so that he was completely unable of paying the fees, and that he insistently sought financial assistance […]. In its notification dated December 29, 2009, the Board has expressly made the appellant aware of this lack of substantiation, but he has not made any further submissions on this topic in his statement of February 25 / March 1, 2010. His remark that he “requested an oral hearing of the appellant for explaining the difficult financial situation of the appellant … if the Board considers this to be necessary to establish [this point] in a credible way” is not sufficient as substantiation. Article 13 RPBA together with R 100(2) EPC would stand in the way of a substantiation within the framework of oral proceedings.
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J 11/09 – Call Of Duty
K’s Law – The ebook
[4] For the reasons explained under [3] and in particular under [3.2.1] to [3.2.5], the professional representative has not taken the required due care concerning the payments under consideration, so that the requirements of A 122(1) are not complied with and the appeal is unfounded (unbegründet). […] The appeal is dismissed. Should you wish to download the whole decision (in German), just click here. NB: Cases J 12/09, J 13/09 and J 14/09 are parallel cases.
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T 1397/07 – Silence Won’t Deter
K’s Law – The ebook
T 1397/07 – Silence Won’t Deter 25 Nov 2010
[7.1] According to the established jurisprudence of the Boards of Appeal it is necessary, in order to assess inventive step, to establish the closest state of the art, to determine in the light thereof the technical problem which the invention addresses and successfully solves, and to examine the obviousness of the claimed solution to this problem in view of the state of the art. This “problem-solution approach” ensures assessing inventive step on an objective basis and avoids an ex post facto analysis. The closest prior art is normally a prior art document disclosing subject-matter aiming at the same objective as the claimed invention and having the most relevant technical features in common. [7.2] The patent in suit is directed to a process for dimerising an olefinic feedstock with high selectivity to the dimer […]. A similar process already belongs to the state of the art in that document D6 discloses a process for dimerising isobutene having all the features of present claim 1 apart from the location of the side draw […], wherein said dimerisation is enhanced and further oligomerisation is suppressed […]. [7.2.1] The [patent proprietor] submitted that document D10 represented the closest prior art, since it was more recent than document D6, but conceded that in view of the absence of a side draw in any distillation column disclosed in document D10, document D6 had more technical features in common with the claimed invention. The Board notes, however, that A 56 requires the assessment of inventive step to be made “having regard to the state of the art”, A 54(2) defining the state of the art “to comprise everything made available to the public”, without addressing any time frame (see T 113/00 [3.7]). As a consequence, there is no legal basis in the EPC to preclude a particular state of the art, in the present case document D6, from being taken into account when assessing inventive step, merely because of being published some years earlier than another one. Furthermore, no technical reason has been submitted as to why the skilled person would disregard document D6 for the only reason that its publication date lies further in the past than that of document D10. [7.2.2] Thus, the Board considers, in agreement with the [opponent], that in the present case the process of document D6 […] represents the closest state of the art and, hence, takes it as the starting point when assessing inventive step. [7.3] In view of this state of the art, the [patent proprietor] submitted that the problem underlying the patent in suit was the provision of a more versatile process in order to make more oxygenates available for the process. [7.4] As the solution to this problem, the patent in suit according to the auxiliary request I proposes that the at least one flow comprising oxygenate is withdrawn from the side of at least one distillation column from a plate higher than the feed plate. [7.5] Said solution thus covers processes wherein MTBE is the oxygenate. However, MTBE is the oxygenate used in the process according to the closest document D6. Thus, at least insofar as the oxygenate is MTBE, the claimed process cannot be more versatile than that of document D6, with the consequence that the purported improvement cannot be achieved for this embodiment. [7.6] Since in the present case the alleged advantage, i.e. improved versatility of the process with respect to the oxygenate, is not achieved throughout the entire ambit of the claimed subject matter, the technical problem […] needs to be redefined in a less ambitious way. In view of the teaching of document D6, and as conceded by [patent proprietor] in the oral proceedings (OPs) before the Board, it can merely be seen in the provision of an alternative process for dimerising olefin feedstocks (see T 939/92 [2.5.4]). [7.7] Finally, it remains to be decided whether or not the proposed solution to the problem underlying the disputed patent is obvious in view of the cited prior art. [7.7.1] Document D6 embraces merely two possibilities for the positioning of the side draw in the distillation column, namely above or below the feed plate, there being no other conceivable configuration, as agreed by both parties. Hence, withdrawing the side stream at a plate above the feed plate is neither critical nor a purposive choice from within the teaching of document D6 for solving the objective problem underlying the patent in suit, since no unexpected effect has been shown to be associated with this position of withdrawal vis-à-vis the only 2620 | 3398
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K’s Law – The ebook
other possibility. The act of positioning the side draw above the feed plate is thus within the routine activity of the skilled person faced with the mere problem of providing an alternative process for dimerising olefin feedstocks. Therefore, the arbitrary choice of withdrawing the oxygenate-containing side stream from a plate higher than the feed plate cannot provide the claimed process with any inventive ingenuity. [7.8] For the following reasons the Board cannot accept the [patent proprietor]’s arguments designed for supporting inventive step. [7.8.1] The [patent proprietor] submitted that the skilled person would have been deterred from locating the side stream above the feed plate, there being no pointers in document D6 to placing the side draw above, but rather strong pointers to placing it below the feed. More particularly, there was no teaching in document D6 that MTBE could be present in the distillation column above the feed. On the contrary, since it was indicated at column 2, line 55 that the MTBE and oligomers were withdrawn as a bottoms product, and in claim 12 that a diisobutene fraction containing MTBE was recycled to the reactor, dimers/oligomers being heavy products, the skilled person, wishing to recycle a stream high in MTBE and containing some oligomers would have placed the side draw towards the bottom of the column, and thus, below the feed plate, in order to be sure of withdrawing an MTBE-containing stream. However, there is no specific teaching in document D6 regarding the positioning of the side draw with respect to the feed plate, the lack of a specific positive teaching to place the side draw above the feed plate not being tantamount to a deterrent. Indeed such a teaching, had it been present, would have rendered said document novelty destroying for the presently claimed process. The skilled person thus takes the teaching of document D6 at face value, which means that he would have expected that all processes described specifically therein, as well as those processes falling within the general teaching thereof, would have been suitable for dimerising an olefin feedstock. Thus even if there had been a hint in another document discouraging the skilled person from positioning the side draw above the feed, the skilled person would still have expected all processes within the teaching of document D6, including that of positioning the side draw above the feed, to successfully dimerise an olefinic feedstock. Nothing was submitted by the [patent proprietor] from which the Board could reasonably conclude that the skilled person has been deterred from following the straight teaching of that document, such that the [patent proprietor’s] arguments do not convince the Board. With regard to there being no teaching in document D6 that MTBE could be present in the distillation column above the feed, when assessing inventive step it is not necessary to establish that the success of an envisaged solution of a technical problem was predictable with certainty. In order to render a solution obvious it is sufficient to establish that the skilled person would have followed the teaching of the prior art with a reasonable expectation of success (see decisions T 249/88 [8]; T 1053/93, [5.14]). In the present case, the Board cannot agree with the [patent proprietor]’s argument that due to some purported uncertainty about the predictability of success, the skilled person would not have contemplated locating the side draw above the feed plate in order to merely provide an alternative process for dimerising olefin feedstocks, particularly when said alternative falls within the teaching of document D6. It was only necessary for him to confirm experimentally by routine work that placing the side draw above the feed plate in that process embodiment of document D6 […] indeed resulted in a successful process for dimerising olefin feedstocks, thus arriving at the claimed invention without inventive ingenuity. Finally, with regard to the alleged pointers toward placing the side draw below the feed, the two passages in document D6 referred to by the [patent proprietor] […] do not describe the embodiment in this document which is the closest to the presently claimed process, […] wherein it is specified that the first distillation may be carried out with an intermediate draw stream in the distillation column which can be recycled to the oligomerisation reaction. In both passages referred to by the [patent proprietor], this first distillation is carried out without withdrawal and recycling of a side stream, such that any teaching which may be derived therefrom is not relevant to the closest prior art embodiment which is the starting point in the assessment of inventive step. [7.8.2] The [patent proprietor] also submitted that although the skilled person could have adapted the process according to document D6 and thereby arrived at something falling within the terms of the claims, he would not necessarily have done so. 2621 | 3398
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K’s Law – The ebook
However, if the problem is merely the provision of an alternative process, the skilled person would modify the process according to document D6 in any way that he could, particularly, when, as in the present case, said modification lies within the general teaching of said document […]. [7.8.3] Finally, the [patent proprietor] submitted that the commercial success of the claimed process as witnessed by the significantly lower investment costs required therefor supported the presence of an inventive step. However, according to established case law commercial success alone is not to be regarded as indicative of inventive step. Such secondary indicia are no substitute for the assessment of inventive step vis-àvis the state of the art on an objective basis following the “problem-solution approach”. Secondary indicia represent auxiliary considerations for the assessment of inventive step and are only relevant in cases of doubt when the objective evaluation of the prior art has not provided a clear picture (see decisions T 24/81 [15]; T 351/93, [5.6]; T 645/94 [4.7]). In the present case, however, there are no doubts as to the absence of an inventive step, since the objective evaluation of the state of the art following the “problem-solution-approach” gives a clear picture, albeit a negative one […]. In any case, it has not been shown that any purported economical advantages of the claimed process are causally linked to the distinguishing feature of the invention, namely the specific location of the side draw and for that reason too, this argument is not convincing. [7.9] For these reasons, the solution proposed in claim 1 to the problem underlying the patent in suit is obvious in the light of the prior art. [8] As a result, the Appellant’s auxiliary request I is not allowable for lack of inventive step pursuant to A 56. Should you wish to download the whole decision, just click here.
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T 12/07 – Where Could/Would Ends
K’s Law – The ebook
T 12/07 – Where Could/Would Ends 24 Nov 2010
When assessing inventive step within the framework of the problem-solution approach, the EPO often invokes the so-called “could/would” approach, following T 2/83 [7], where it was stated that “[t]he question regarding the inventive step, in relation to the modification of the layered tablet of the state of the art as suggested by the present applicants, is not whether the skilled man could have inserted a barrier between the layers but whether he would have done so in expectation of some improvement or advantage”, and T 143/86 [5] where we read: “It is perhaps worth while pointing out in this respect that, in order to avoid an ex post facto analysis, the test to be applied when considering the question of whether the combination of the teachings of two prior art documents involves an inventive step is whether the man skilled in the art would have combined them, and not whether he could have combined them.” The present decision shows that there are cases where the should/would approach is not to be applied. [4.1.1] The present invention relates to methods of preventing or reducing aggregate formation of growth hormones, growth factors, insulin, monoclonal antibodies and interferons upon dehydration and rehydration […]. [4.1.2] Document D15 relates to the stability of proteins during freeze-drying […]. For deciding whether document D15 qualifies as the closest prior art, it is important to evaluate whether or not stability in the context of document D15 includes prevention or reduction of aggregate formation. In the light of the disclosure [of D15], the board is convinced that this is the case. The relevant passage reads as follows: “Manufacturers can minimize the degradation that arises from aggregation and other mechanisms by paying careful attention to the details of the freeze-drying process. Most often, however, stability problems are addressed by varying the formulation. For example, excipients, or lyoprotectants, are added to improve stability of the dried product.” The board concludes from this passage that lyoprotectants are used for improving stability and that prevention or reduction of aggregation is one aspect of stability according to document D15. Further evidence that resistance to aggregate formation is comprised in the term stability is provided by the specific examples […] (“The stability (resistance to aggregate formation)of …”)). It is not denied that loss of protein activity and denaturation are not necessarily linked to aggregation, as was pointed out by the appellantpatentee. However, this fact is of no relevance, as document D15 contains the teaching that the lyoprotectants disclosed therein, which include trehalose as one of the preferred lyoprotectants […], are inter alia used for protecting the proteins against aggregation. [4.1.3] As a consequence, document D15 constitutes the closest prior art and the problem to be solved can be defined as the provision of a further method of preventing aggregation during lyophilisation and rehydration of proteins. This problem was solved by the method as claimed in claim 1 of the main request, i.e. by choosing trehalose as protective agent for growth hormones, growth factors, insulin, monoclonal antibodies or interferon. In the light of the data in Tables 1 and 2, the board is satisfied that the problem defined above was plausibly solved. [4.1.4] In view of the teaching that the lyoprotectants according to document D15 […] are all suitable to suppress or reduce aggregate formation during freeze-drying and storing of proteins in general, the specific combination of trehalose with one of the proteins according to present claim 1 is nothing but an arbitrary selection, which in the absence of any non-obvious effect does not involve an inventive step. The skilled person concludes from the teaching of document D15 that the problem defined [above] could be solved no matter whether trehalose or any of the other lyoprotectants according to document D15 was chosen. Such an arbitrary selection cannot give rise to an inventive step. [4.1.5] The appellant-patentee held that the proteins defined in present claim 1 were used parenterally [NB: According to Wikipedia, parenteral is a route of administration that involves piercing the skin or mucous 2623 | 3398
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membrane; parenteral nutrition refers to providing nutrition via the veins.] and in multiple doses. Although not specifically mentioned in the claims, this feature was implicitly disclosed by the selection of the proteins. As a consequence, the skilled person would not select trehalose, sucrose, human serum albumin or bovine serum albumin, which had the drawback of not having an established history in the formulation of pharmaceutical products for parenteral therapy […]. Not having an established history in the formulation of pharmaceutical products for parenteral therapy does not mean, however, that these lyoprotectants are not suitable. It simply means that this suitability must possibly be verified by standard tests, which do not require inventive skill and which do not keep the skilled person from taking these lyoprotectants into consideration. On the contrary: as trehalose and the three further lyoprotectants mentioned above are commonly used as lyoprotectants […], they are preferred by the skilled person, as their stabilising effect and, as a consequence, their aggregate-reducing effect is beyond any doubt. This argument can therefore not succeed, even it is assumed in favour of the appellant-patentee that the parenteral application in multiple doses is an implicit feature of claim 1. [4.1.6] The appellant-patentee further argued that the skilled person, starting from the teaching of document D15, had no reasonable expectation of success by selecting trehalose in combination with the specific proteins as defined in claim 1, in view of the numerous options that were at his disposal. He could but would not have made this selection. As was mentioned above […] the skilled person made an arbitrary selection from the teaching of document D15 in order to arrive at the claimed invention. The method according to present claim 1 is just one of many possibilities for solving the problem defined […] above. As a consequence, the “could/would-approach” does not apply in the present case. [4.1.7] As a consequence, the subject-matter of claim 1 and of dependent claims 2 to 4 does not meet the requirements of A 56. Should you wish to read the whole decision, just click here.
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T 1989/08 – A Firm Belief
K’s Law – The ebook
T 1989/08 – A Firm Belief 23 Nov 2010
This decision also contains some interesting statements on prejudice. [4.3] The Respondent asserts that a prejudice against varying additive concentration in the fuel would dissuade the skilled person from following any of the above paths. As explained [in the patent specification …] complex on-board dosing control is necessary to avoid overdosing which would deplete stored additive, but also lead to an increased ash burden in the Diesel particular filter (DPF). [4.3.1] The Board finds that such a prejudice has not been conclusively proven. In the jurisprudence a technical prejudice in a particular field is generally held to relate to an opinion or preconceived idea widely or universally held by experts in the field, see the Case Law of the Boards of Appeal, 5th edition, 2006 (CLBA hereinafter), I.D.9.2, page 161, final paragraph, and the case law cited therein. To demonstrate prejudice requires a high standard of proof, as is evident from the immediately following paragraphs of the cited section of the CLBA. Thus, expression of the prejudice in standard works or a textbook is normally required, raising the level of proof close to that needed for proving common general knowledge. It is for example not enough that the opinion or idea is held by a limited number of individuals or that it is a prevalent view within a given firm, however large. [4.3.2] Including evidence subsequently filed in the appeal procedure, all the evidence offered in support of the alleged prejudice, amounts to no more than 10 documents, all of which are either specialist papers or patents. This small number of publications intended for a select readership in the field is in itself a tenuous basis for asserting prejudice. [4.3.3] Importantly, none of these documents expressly indicates that variation in additive concentration should be avoided. D9, which is given special significance in proving prejudice, only instructs avoiding additive contamination in the fuel in the main tank, as does D10. Both publications, the Board notes, share an author (Wiedemann) and originate in the same firm (Volkswagenwerk AG). Even if D9 and D10 had expressed the alleged belief, that would be a belief held in only one firm, not one prevalent across the whole breadth of the vehicle industry. [4.3.4] Moreover, some of the evidence contradicts the alleged prejudice. D10 […] discusses a system with constant additive dosing rate (3ml/h) into the supply line. Fuel is supplied from a separate tank within the fuel tank to which excess additive rich fuel is again returned. Fuel is topped up from the remaining part of the tank to meet demand, whereas flow in the opposite direction is prevented to keep the fuel in the main tank pure. It is clear that depending on the engine operating conditions additive concentration in the separate tank (and supply and return lines) must fluctuate: low return of additive rich fuel means greater top-up with pure fuel which will decrease additive content, while high return means less top-up resulting in an increase in additive content. This is similar to the fluctuations described in the patent specification […], with the difference that the relative size of the separate chamber to the tank imposes greater limits on the amount of fluctuation. [4.3.5] Likewise, D1, as discussed previously, generally regards the variation of the concentration of a fuel additive in the fuel to be advantageous, in particular in stop-and-go operation, with the concentration varying between a low value for high fuel consumption and a high value for low consumption. D1 may not mention catalytic additives for DPF regeneration, but its teaching is of general scope that applies to a wide range of additives independent of their purpose. Such a teaching surely inclines the skilled person towards, rather than away from a variation of additive concentration. [4.3.6] If any common opinion does emerge from the various citations it most likely relates to dosing at optimum levels, high enough to ensure efficient and regular DPF regeneration in all operating conditions but not so high as to consume too much additive and/or saturate the DPF […]. This does not exclude variations in additive concentration, nor does it bar the skilled person continuing along any of the obvious paths described above. Mindful of such optimum dosing he will adjust various parameters - for example in the course of routine tests or trial and error - to ensure that he does not exceed optimum levels. This appears similar to the way the patent 2625 | 3398
T 1989/08 – A Firm Belief
K’s Law – The ebook
itself doses at a rate fixed at “a mean value between that ideally required for maximum and minimum fuel flows” […]. [4.4] In the light of the above the Board concludes that the dosing process defined in claim 1 of the main request lacks inventive step contrary to A 52(1) in combination with A 56. Should you wish to download the whole decision, just click here.
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T 1989/08 – Not Automatic
K’s Law – The ebook
T 1989/08 – Not Automatic 22 Nov 2010
Will a third party intervention filed during opposition appeal proceedings and raising new objections automatically lead to a remittal to the first instance? Not necessarily, as the present case shows, where the Board found a way to avoid a remittal. [2] The Board agrees with the [patent proprietor] that consideration of the new case based on new evidence and brought by the intervener at this late stage would normally require postponement or possibly remittal of the case. In order not to unreasonably prejudice the position of the opponent, the Board finds it however expedient to deny the request for immediate remittal and initially limit consideration of the case to the legal and factual framework defined by the original appeal as lodged by the [opponent] and subsequent submissions in response thereto, and without relying on any of the new evidence and facts presented by the intervening party or submitted responding thereto. That claim 1 of all requests includes a feature (retrofitting) which, according to the [patent proprietor], addresses the intervening party’s case is also no impediment to the Board considering the case within the original framework of the appeal. Firstly, the [patent proprietor] cannot expect to have the Board consider amendments filed at such a late stage in the proceedings, i.e. one week before the oral proceedings (OPs), if he is not also prepared to discuss them unconditionally at this stage of the proceedings. Both the [opponent] and the intervening party were moreover prepared to discuss the new feature at the OPs within the framework of the original appeal, and indeed have done so. Both also argued against remittal: the desire for legal certainty of these parties, who represent the public interest, must outweigh any interest the [patent proprietor] may have for a first instance consideration of what can be decided within the initial framework. The Board was therefore justified in denying the [patent proprietor’s] preliminary request for remittal. Given that it can decide the case within the framework of the original appeal, as is apparent from the reasons that follow, the question of remittal is in any case moot. I think that the Board was right not to remit because otherwise the third party intervention, the aim of which was to have the patent revoked, would have had the effect of significantly delaying the revocation, which was possible on the basis of the grounds of opposition already discussed before the Opposition Division. We shall see more of this decision next time. Should you wish to download the whole decision, just click here.
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T 365/09 – Nothing New Under The Sun
K’s Law – The ebook
T 365/09 – Nothing New Under The Sun 20 Nov 2010
The present decision corresponds to the second appeal in this case. First the Opposition Division (OD) had revoked the patent on the ground of lack of novelty. The patent proprietor filed an appeal. In its decision T 785/05, the Board set aside this revocation and remitted the case to the OD, which maintained the patent in amended form. The opponent filed an appeal. A statement of the opponent made the Board consider whether novelty was still an issue: [2] The question of lack of novelty, initially raised by the opponent and already decided in case T 785/05 was indirectly addressed again by reference to another case in the Opponent’s letter of 29 September 2008 […]. Hence, the Board has considered the question of whether the decision on novelty had become final (res judicata) or was again open to discussion. [2.1] According to the EPC 1973, a decision which had become final and the reasons on which this decision had been based (ratio decidendi), were no longer open to discussion, nor could the Board in a further prosecution of the same case depart therefrom (cf. T 934/91 [2-3]; T 843/91 [6-6.3]; and also Case Law, chapters VII.D.10.1 and VII.D.10.2). These findings were confirmed by the Enlarged Board of Appeal (EBA) in G 1/97 [2(a)], wherein, in its first paragraph, reference was made, first of all, to the suspensive effect of an appeal against a decision of a department of the EPO provided for by A 106(1) EPC 1973 and then to the consequences of this effect: “This effect prevents a decision from becoming final and is therefore limited to ordinary appeals, i.e. those against decisions which are not yet final (…). Since, …, decisions of the boards of appeal become final as soon as they are issued, there can be no possibility of appeal under A 106 against these decisions. This is confirmed, moreover, by A 21 and A 106, which do not include the boards of appeal in the list - which must be regarded as exhaustive of departments whose decisions are open to appeal” (emphasis added). [2.1.1] The only further question, which could still arise in this respect, was of whether these findings would still be applicable under the revised version of the EPC 2000. [2.1.2] As can most easily be seen in the OJ EPO, Special Edition 4/2007, “Synoptic presentation EPC 1973/2000 - Part I: The Articles”, the wording of A 21 and A 106, to which articles reference had been made in G 1/97, has not been amended to “include the boards of appeal in the list - which must be regarded as exhaustive - of departments whose decisions are open to appeal.” (cf. G 1/97, as quoted in [2.1], above). [2.1.3] However, the question remains to be examined of whether the situation has changed by the introduction of the new A 112a “Petition for review by the EBA”. [2.1.4] A first difference between appeal and petition lies evidently in the fact that, unlike A 106(1), A 112a(3) clearly excludes a suspensive effect of the petition. [2.1.5] Moreover, a petition for review can, according to A 112a, only be based on fundamental procedural violations or defects during the appeal proceedings, which do not include questions relating to patentability as defined in Chapter I of Part II (A 52 to A 57) of the EPC. This can be derived from the, in the Board’s opinion, exhaustive list of fundamental procedural violations and defects in A 112a(2) and R 104 and R 105. This view has, in the meantime, been confirmed in G 3/08 [7.2.5]. [2.2] Consequently, this Board takes the view that the rulings and rationes decidendi in the above decisions, in particular in G 1/97, are still valid under the revised provisions of EPC 2000. In other words, the facts and findings dealt with in T 785/05 are not open to discussion in these appeal proceedings. Nor can arguments, which are contrary to the ratio decidendi or the result of decision T 785/05, be taken into account for the assessment of inventive step.
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T 365/09 – Nothing New Under The Sun
K’s Law – The ebook
[2.3] Hence, the matter to be decided in this case concerns only the question of whether the subject-matter as claimed in any one of the [patent proprietor’s] requests is based on an inventive step and, if the main request and the first and second auxiliary requests failed, furthermore the question of whether the third auxiliary request contravened or complied with A 123(2) […]. Should you wish to download the whole decision, just click here.
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T 2249/08 – Lost Without A Guide
K’s Law – The ebook
T 2249/08 – Lost Without A Guide 19 Nov 2010
This decision deals with an appeal by the opponent following the maintenance of the opposed patent in amended form. The Board came to the conclusion that the patent was to be revoked for lack of novelty over document D3, which the opposition division (OD) had refused to admit. The part I found most noteworthy concerns the opponent’s request for reimbursement of the appeal fee. [6.1] The OD held that “no opinion can be reached as to whether D3 is prima facie relevant or not and hence exercises discretion and decides not to allow the novelty objection based on D3 into the proceedings (R 116).” […]. Thus it is apparent that the OD exercised its discretion to disregard “facts and evidence” presented belatedly, i.e. after a final date in preparation for oral proceedings (OPs). Such discretionary decisions are normally not subject to review, unless the decision was based on the wrong principles or was otherwise manifestly unreasonable (see CLBA 5th edition (2006), Chapter VII.D.6.6). Thus any finding of a substantial procedural violation through a discretionary decision also presupposes such grave errors, as opposed to mere errors of judgement (see CLBA Chapter VII.D.15.4.5). Further, it is also required that the criticised discretionary decision was decisive for the outcome of the decision under appeal (see cases T 712/97, J 14/99, J 21/98, J 6/99, cited in CLBA Chapter VII.D.15.4.1) [6.2] In the present case the decision of the OD was reasoned with the following arguments: (a) no specific argumentation based on D3 with respect to lack of novelty ... had previously been submitted (b) throughout the written procedure no indication had been given that D3 might potentially be considered relevant for assessing novelty... (c) no full, uncontested translation of D3 being presented and the provided translation being ambiguous […]. [6.3] As to the arguments a) and b), the appellant submitted that D3 has been timely mentioned during the opposition procedure as being basis for a possible novelty attack. As to the argument c, pursuant to R 3(3), a party is not required to file a translation of a document being in a non-official language of the EPO, unless being explicitly invited to do so. In that case, the party must be given a reasonable time limit to file a translation. Given that document D3 has been in the proceedings from the very beginning, both the OD and the proprietor had ample opportunity to demand a translation, and the fact that a translation was filed only during the OPs ought not have entailed adverse consequences for the opponent. Accordingly, the appellant maintained that the decision of the OD not to admit D3 into the proceedings for the question of novelty was manifestly wrong, amounting to a substantial procedural violation. Timeliness of D3 as a novelty attack on its own [6.4] Document D3 was cited in the notice of opposition. The grounds for opposition were inter alia based on A 100(a), explicitly mentioning lack of novelty and inventive step. The facts and arguments accompanying the notice of opposition (referred to as F&A) further explicitly dealt with documents D1 and D2 as both depriving novelty of the patent in suit. D3 is first mentioned in the passages dealing with inventive step, being identified as the priority document of D2 and cited to illustrate the purpose of the spatula employed in D2. As such, no independent novelty attack based on D3 per se is elaborated in the detailed grounds of opposition. On the contrary, it appears that the specific arguments for a novelty objection based on D3 were raised only in the OPs. This is also illustrated by filing only during the OPs a translation of the relevant parts of D3 […]. [6.5] However, as submitted by the appellant, […] the F&A states: “In case ... [ the claims were to be limited in a certain manner] ... , the Opponent would object to such a limitation in view of the fact that the same would not be novel and/or inventive in view of the cited documents D1-D3”.
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T 2249/08 – Lost Without A Guide
K’s Law – The ebook
In fact, the claims were limited in the auxiliary request as foreseen by the opponent. Thus at least formally, D3 has been indicated as novelty destroying even in case of a more limited claim, so that argument (b) of the OD […] is unfounded. The validity of argument (c) is equally questionable, as the wording of R 3(3) explicitly permits parties to file documents without translation. If doubts arise, the party must be given an appropriate time limit for filing the translation, which - when filed within the time limit - apparently cannot be regarded as late, and hence cannot be ignored. See R 3(3), last sentence: “If a required translation is not filed in due time, the EPO may disregard the document in question.” (emphasis added by the board). [6.6] That said, argument (a) of the OD […] still has some merit even on its own. While it is true that arguments can normally be advanced at any stage of the proceedings (as opposed to new evidence, such as a new document), in the given case the new arguments could not have been verified by the OD without a translation. However, the possibility of demanding a translation as foreseen by R 3(3), but only at a relatively late stage, e.g. due to an issue which arises only in OPs - clearly contradicts with the need for the parties to have their case completely prepared for the OPs so that the case may be ready for a decision (R 116 (1) in combination with R 111(1)). The board notes that the Guidelines appear to be completely silent on the application of R 3(3), and the board is also not aware of any applicable case law. In the absence of clear guidelines in case of such a contradiction the OD cannot be reprimanded for having decided in a manifestly unreasonable manner or for having relied on the wrong principles (see also T 234/86). [6.7] Further, it is also questionable if the decision under appeal would have had a different outcome, had document D3 been considered for the issue of novelty. After all, this document and the disputed parts were taken into consideration for the examination of inventive step […], and the OD found that the patent as amended is not obvious in light of these documents. Thus, it appears to the board that a fortiori these documents could also not have taken away the novelty of the patent as amended, as least in the opinion of the OD. In other words, the decision of the OD not to discuss D3 for novelty does not appear to have been decisive, hence the procedural violation, if any, could not have been substantial. The fact the finding on novelty or inventive step could have been erroneous or that it has been overturned by the board does not alter the character of this finding with respect to the question of a substantial procedural violation. [6.8] Based on the above, the board finds that the OD did not commit a substantial procedural violation which could justify the reimbursement of the appeal fee. Arguments that a reimbursement would be equitable for other reasons have not been put forward […] The request for reimbursement of the appeal fee is refused. Should you wish to download the whole decision, just click here.
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T 754/08 – Trouble With An Ex
K’s Law – The ebook
T 754/08 – Trouble With An Ex 18 Nov 2010
This decision deals with an appeal of the opponent against the decision to maintain the patent in amended form. The patent proprietor requested that Mr R., a former patent attorney who, as announced by letter, accompanied the professional representative of the appellant, not be allowed to make oral submissions. The patent proprietor did not dispute that Mr R. had the knowledge of a technical expert in the field of the patent in suit. However, since he was the former patent attorney of the opponent in this case, his submissions would be those of a professional representative. Since he was not authorised to act in the latter function, he should not be allowed to speak during the oral proceedings (OPs). [2] The Enlarged Board of Appeal dealt with the issue of oral submissions by a person accompanying the professional representative of a party in its decision G 4/95. According to this decision (see points (1) and (2) of the order), said accompanying person may make oral submissions on specific legal or technical issues on behalf of that party, in addition to the complete presentation of the party’s case by the professional representative with the permission of and at the discretion of the EPO (see point (3)(a) of the order). When exercising its discretion the EPO should consider in particular the following criteria (see point (3)(b) of the order): (i) The professional representative should request permission for such oral submissions to be made. The request should state the name and qualifications of the accompanying person, and should specify the subject-matter of the proposed oral submissions. (ii) The EPO should be satisfied that oral submissions by an accompanying person are made under the continuing responsibility and control of the professional representative. Furthermore, the Enlarged Board decided that the same criteria applied to qualified patent lawyers of countries which were not contracting states to the EPC, without any further special criteria (point 3(c) of the order and point [13] of the reasons). [2.1] In the present case the appellant had announced in due time […] that Mr R., a consultant of the appellant for technical questions, was going to participate in the OPs to make oral submissions on technical issues. It has not been disputed that his education and his present activity as technical expert in the field qualify Mr R. as a technical expert. Furthermore, the professional representative stated that the submissions of Mr R. would be made under his continuing supervision and would concern exclusively specific technical issues, in other words they would not replace but merely complement the case as presented by him. [2.2] Mr R. is not disbarred simply because he is a former European patent attorney. The conditions set out by the decision G 4/95 are applicable to any accompanying person. Therefore, there is no reason to exclude a former European patent attorney as such. The respondent’s fear that his oral submissions could be those of a patent attorney rather than those of an expert is unfounded, since the professional representative of the appellant has explicitly stated that Mr R. would only speak about specific technical issues, while he himself would present the case. [2.3] Under these conditions, the board sees no reason not to allow Mr R. to make oral submissions during the OPs. Should you wish to download the whole decision, just click here.
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T 1536/08 – Don’t Ignore The Offer
K’s Law – The ebook
T 1536/08 – Don’t Ignore The Offer 17 Nov 2010
[2.1] It is established jurisprudence of the Boards of Appeal, see inter alia J 7/82, T 94/84 and T 135/96, that the right to be heard enshrined in A 113(1) also guarantees the right to have relevant grounds that could potentially influence the outcome taken into account in the written decision. In the case of a decision rejecting the opposition, it must therefore take into account the ground(s) for opposition raised as well as facts and evidence put forward in support of these grounds, inter alia the cited prior art documents. Failure to consider evidence will normally constitute a substantial procedural violation of this fundamental right as it deprives the party of the right to have its case fully heard. [2.2] In the opposition as filed the opponent rested his case squarely on O1 to O3 as evidence of prior art. This evidence was provided in the form of photocopies of the relevant pages. The notice of opposition, […] however, stated: “The enclosed documents O1-O3 are copies from the original printed versions and if considered necessary original printed versions can be provided in a limited number (at least one), if considered necessary”. This constitutes a clear and unmistakable offer to give evidence on the authenticity of O1 to O3 if this is “considered necessary”. This conditional offer can only be read as meaning: if authenticity should become an issue. [2.3] In the subsequent procedure authenticity did indeed become an issue. After initially accepting O1 to O3 as closest prior art [in] its communication under A 101(2) and R 58(1) to (3) EPC, the opposition division (OD) in its written decision then decided otherwise. […] It held that, “no proof was provided that the subsequent pages showing the technical details of the machines actually belong to the aforesaid manuals because the printing number is not mentioned on these pages. The Opponent didn’t bring up an original bound manual either.” For these reasons it decided that “O1 to O3, cannot be considered as prior art in the sense of A 54(2)”. [2.4] The decision to reject the opposition ultimately rests on the OD’s negative finding regarding authenticity of O1 to O3. Had it admitted O1 to O3 the division would have needed to consider this prior art before it could have conclusively decided the case made against the patent based thereon. However, the decision completely ignores the unambiguous offer by the opponent in the notice of opposition to provide the original printed versions of O1 to O3. Given the fact that the opponent’s offer to provide the original printed versions was made in due time and that such evidence is central to the opponent’s case - which could only be decided conclusively by considering O1 to O3 - the failure to consider this offer constitutes a violation of the right to be heard. As a result the first instance proceedings are fundamentally flawed and have been subject to a substantial procedural violation. [2.5] As the procedure leading to the decision under appeal is fundamentally deficient the Board is compelled to set the decision aside without any consideration of the merits of the appeal. Remittal and reimbursement of the appeal fee [3.1] Article 11 RPBA provides for the remittal of the case to the department of first instance if a fundamental deficiency is apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise. The Board is unaware of any such reasons and in fact both parties request remittal as main request. It therefore decides to remit the case to the OD in order to procure and inspect the originals of documents O1 to O3 and in the light of such evidence to then decide the case on the basis of the remaining (auxiliary) requests. Such remittal shall be without prejudice to the merits of the case, nor does it abrogate the parties’ right under A 116 to have their complete case heard at oral proceedings in accordance with their final auxiliary requests.
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T 1536/08 – Don’t Ignore The Offer
K’s Law – The ebook
[3.2] The violation of this fundamental procedural right has directly led the opponent to seek redress by lodging an appeal. For this reason the Board finds it equitable to reimburse the appeal fee in accordance with R 103(1)(a). Apportionment of Costs [4] The appeal is the direct result of the division’s failure to procure evidence already offered by the opponent, rather than that it is due to a culpable error or oversight on the part of the latter. The Board therefore holds that a different apportionment of costs than provided for under A 104(1) is not equitable and refuses this request by the [patent proprietor]. Should you wish to download the whole decision, just click here.
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T 1316/06 – Limited Transfer
K’s Law – The ebook
T 1316/06 – Limited Transfer 16 Nov 2010
As is well known to most practitioners, the Boards of appeal of the EPO hold that the state of the art to be considered when assessing inventive step includes not only the documents in the specific field of the application, but also relevant documents in neighbouring fields and/or a broader general field of which the specific field is part, that is to say any field in which the same problem or one similar to it arises and of which the person skilled in the art of the specific field must be expected to be aware (T 176/84). This does not mean, however, that the skilled person will necessarily transfer teachings from one field to the other, as the present decision illustrates. ** Translated from the French ** [6.2] Document D4, also cited by the [opponent] in order to demonstrate the obviousness of the solution, concerns detergent and conditioning compositions intended to be applied onto skin. It is undisputed that it teaches the skilled person to add silicone in a non-emulsioned form, which, due to the greater size of the silicone particles with respect to the pre-emulsioned form, provokes an increase of the silicone deposit on skin and, therefore, an improvement of the conditioning effect on skin […]. There is no doubt that at the date of filing of the application, the person skilled in the field of conditioning shampoos could not ignore the existence of document D4, which belongs to the neighbouring field of skin detergent compositions. Nevertheless, this does not mean that for the skilled person any teaching applying to skin would apply in the same way to a substrate of different structure, such as hair, and even less so for a property that only concerns hair, such as smoothing. The [opponent] has not provided any evidence or document whatsoever showing that the skilled person would have transferred a technical teaching concerning skin to a technical application aiming at conditioning hair. The argument according to which the shampoo obtained by the claimed process would automatically be in contact with the scalp and thus with skin is not relevant because the problem to be solved is to improve the smoothing of dry hair and not, as in document D4, the improvement of the hydration and nourishing of skin. Document D4 can at best confirm the ex post facto explanation provided by the [patent proprietor] according to which the improvement of the smoothing obtained by the introduction of the oil in a non-emulsioned form is due to the greater size of the silicone oil drops. Should you wish to download the whole decision (in French), just click here.
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T 1625/06 – Gimme More
K’s Law – The ebook
T 1625/06 – Gimme More 15 Nov 2010
The present decision comprises some interesting statements on an affidavit which was filed by the applicant whose application had been refused, in order to establish sufficiency of disclosure (click to enlarge):
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T 1625/06 – Gimme More
K’s Law – The ebook
(Click to enlarge) The Board does not consider this document persuasive: [7.1] With respect to the signed affidavit […] referred to by the appellant as “Annex 4” the following observations are made. [7.2] In the board’s communication, it was noted that when assessing the sufficiency of disclosure in the light of common general knowledge, the relevant knowledge is that of the average skilled addressee and the question was raised as to whether the deponent might not be too highly qualified to be regarded as a notional, i.e. average, skilled addressee. The appellant did not make any submissions or provide any further information which would have helped to clarify this matter. [7.3] As far as the content of the affidavit is concerned, the board finds that it essentially comprises a series of assertions to the effect that various technical requirements of the invention, in particular the identification of spectrum use and availability and the placement of subcarriers throughout a span of frequencies, could have been realised by the notional skilled person without undue burden. No further evidence has been offered in support of these assertions. As such, the content of the affidavit does not go beyond the mere expression of an opinion by the deponent that the application provides a sufficient disclosure for the invention to be put into effect […]. [7.4] Even if it were to be accepted for the sake of argument that the deponent could properly be regarded as a person of average skill in the relevant technical field, the board takes the view that an affidavit which merely expresses the opinion of a single person concerning matters of general knowledge and sufficiency of disclosure cannot, under the given circumstances, be regarded as a satisfactory proof that specific technical information which would have to be read into the application to make it complete would have been readily available to those of ordinary skill in the art. 2637 | 3398
T 1625/06 – Gimme More
K’s Law – The ebook
[7.5] The board further notes that reference is made to “methods and systems for identifying spectrum use and availability” in the third paragraph of the affidavit. The techniques referred to are effectively limited to the determination of channel occupancy in the frequency domain. Thus, even if it were to be accepted for the sake of argument that such techniques were generally known at the priority date of the application, the board judges that they would not have been sufficient to enable the sensing of spectrum holes over multiple dimensions of the signal space as required by the present invention […]. [7.6] In view of the foregoing, the board concludes that the submitted affidavit lacks any probative value for the purpose of establishing compliance with the requirements of A 83. If you wish to download the whole decision, just click here.
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T 41/09 – Dangerous Savings
K’s Law – The ebook
T 41/09 – Dangerous Savings 13 Nov 2010
The present decision deals with an appeal against the decision of the opposition division (OD) to revoke a European patent owned by a Spanish company. The Dutch representative filed the notice of appeal in Dutch, with an attached translation in English. The reduced appeal fee was paid on the same day. The Board expressed its preliminary opinion that the notice of appeal filed in Dutch by a legal entity having its principal place of business in Spain was not in compliance with A 14(4) and that it intended to deem the appeal as not having been filed. The patent proprietor challenged the Board’s preliminary opinion along the following lines: (a) To the notice of appeal in Dutch, dated 19 December 2008, was attached the same letter in English, which has to be considered by itself as the notice of appeal in the official language of the proceedings. (b) The principle of equity underlying R 6(3), which Rule aims at providing a positive compensation to applicants and parties from a Contracting State not having an official EPO language, as interpreted in decision G 6/91 [17], should allow for a remedy. (c) A warning from the EPO was legitimately expected by the appellant. Since the EPO was aware of the patent proprietor’s nationality, the language deficiency associated with the notice of appeal was readily identifiable and a timely warning from the EPO would have offered the patent proprietor the possibility to correct it in due time. (d) By payment of the reduced appeal fee, only 20% of that fee were missing, which should be considered as a small amount lacking in the meaning of Article 8(1) RRF. The patent proprietor also requested re-establishment of rights under A 122. It asserted an isolated clerical mistake having been made by the administrative department of its professional representative in the exceptional circumstances of exceptional work pressure since a colleague had left the administrative department and because the testing phase of a new digital document management system was being executed. Having signed the notice of appeal in Dutch, the professional representative had noticed the error and signed a corrected document in English. However, his assistant, in the above-mentioned context, placed the wrong document in an envelope and sent it out. When checking the file, the head of the department of portfolio assistants noticed the copy of the letter in English in the file and as a consequence removed the pending deadline from the monitoring system. This was a one-time error in a well-functioning system of monitoring time-limits and performing crosschecks, i.e. despite all due care. A new notice of appeal, also dated 6 July 2009, accompanied the request for reestablishment of rights. Notice of appeal in Dutch [2.1] It is not challenged by the appellant that under A 14(4) the notice of appeal filed in Dutch is in a non admissible non-EPO official language for a patent proprietor having its principal place of business in Spain. The residence or principal place of business of the professional representative used is of no relevance in that matter (T 149/85 [6]). Therefore, in accordance with A 108, the corresponding appeal is deemed not to have been filed. Translation in English [2.2] The letter in English, also dated 19 December 2008, expressly indicates that it is “a translation of the notice of appeal” of the same date filed in Dutch. Therefore, its legal effect depends on said notice of appeal filed in Dutch and it cannot be considered as such to be the proper notice of appeal. The Board is of the opinion that G 6/91 [10] and T 1152/05 [2.4-6] have to be followed in the present case. These decisions indicate in the clearest possible way that a “translation cannot become the original”. 2639 | 3398
T 41/09 – Dangerous Savings
K’s Law – The ebook
G 6/91 [12], cited by the appellant, is directed to the question of a possible confusion between the “translation” and the original document, when the “translation” is filed earlier than the original. The present case clearly distinguishes itself from such a situation, since the translation was expressly qualified as such, making absent any possible confusion, and filed together with the original notice of appeal. Therefore, in the present case, the Board does not see point [12] as more relevant than point [10], nor even simply relevant. The appellant also points out that the facts of the case having led the referral to the Enlarged Board of Appeal in G 6/91 are different to the ones of T 1152/05 and of the present case. The Board sees G 6/91 [10] as a legal analysis the conclusions of which not being restricted in any way to the specific facts of the case referred. The appellant finally refers to the difference in legal consequences between T 1152/05, where only the appeal of the patent proprietor was deemed not to have been filed but the appeal proceedings were in any case continued on the basis of the opponent’s appeal, and the present case, where a complete loss of rights would result from the patent proprietor’s appeal being deemed not to have been filed. First of all, the Board sees no legal basis for a possible distinction in applying the relevant A 14(4) on the basis of the possible legal consequences. Further, the legal consequence of the appeal being deemed not to have been filed is the same in both cases, i.e. the loss for the party concerned of the right to be an appellant and to challenge in its favour the impugned decision. Principle of equity underlying R 6(3) [2.3] The appellant supports that the “principle of equity underlying R 6(3)” should allow for a remedy in the present case. The Board cannot see in R 6(3) a “principle of equity” to be broadly applied. G 6/91 [17] only refers to R 6(3)’s aim of equity in interpreting that provision. Further, R 6(3) is the implementing rule to A 14(4) and explicitly restricts its scope of application to the natural or legal persons referred to in said article, i.e. those having filed an appeal in a language admitted by that provision. In the present case, on the contrary, Dutch is not a language to be admitted for the filing of an appeal by a patent proprietor having its principal place of business in Spain. Therefore, neither A 14(4) nor the specific content of its implementing R 6(3) can find any application in the present case. Legitimate expectations [2.4] The appellant further argues that the EPO should have warned it, for correction in due time, of the impending loss of rights following from the easily identifiable deficiency of using a non-admissible non-EPO language in its notice of appeal. It cites J 13/90 [9], stating that if, contrary to the principle of good faith, the EPO fails to draw the applicant’s attention to a deficiency, it cannot claim that a loss of rights has ensued if the deficiency is later corrected. The principle of protection of legitimate expectations, or of good faith, is effectively recognised by the case-law of the Boards of Appeal. However, this principle does not impose any obligation on a Board to notify an appellant if there is no indication in the notice of appeal or in any other document filed in relation to the appeal from which it could be inferred that the lack of such notification would result in a loss of rights for the appellant (G 2/97 [order]). There is no obligation on a Board to warn a party of deficiencies within the area of the party’s own responsibility. To take the principle of good faith that far would imply, in practice, that the Boards of Appeal would have to systematically assume the responsibilities of the parties to proceedings before them, a proposition for which there is no legal justification in the EPC, nor in general principles of law (G 2/97 [4.2]). This distinguishes the facts of the cited J 13/90 from the situation of the present case. In this decision, the deficiency was further readily apparent from the request itself whereas in the present case it is not readily apparent from the notice of appeal, only referring to the name of the appellant, without any indication of the location of its principal place of business. The Board therefore sees in the present case no breach of the legitimate expectations of the appellant. [2.5] In view of the above, the Board concludes that the appeal of the patent proprietor, on the basis of both its letters dated 19 December 2008, is deemed not to have been filed under A 14(4) in accordance with A 108. The payment of the respective appeal fee has, as a consequence, no legal basis and is to be reimbursed. Small amount of fee lacking 2640 | 3398
T 41/09 – Dangerous Savings
K’s Law – The ebook
[2.6] The appeal being deemed not to have been filed, there is no need for the Board to examine whether or not the missing 20% of the appeal fee should be considered as a small amount lacking in the meaning of Article 8(1) RRF. In any case, even following the appellant’s position that the English translation should be considered as the notice of appeal, the Board would follow the reasoning of T 905/90 […], i.e. the missing 20% of the appeal fee could not be considered a small amount lacking, with the same outcome that the appeal would be deemed not to have been filed. Request for re-establishment of rights [3] The appellant asserts an isolated clerical mistake having been made by the administrative department of its professional representative in the exceptional circumstances of exceptional work pressure since a colleague had left the administrative department and because the testing phase of a new digital document management system was being executed. A 122(1) requires for a re-establishment of rights to the patent proprietor that he demonstrates having missed the time limit despite all due care having been taken as required by the circumstances. According to the established case-law of the Boards of Appeal, due care is considered to have been taken if the non-compliance with the time limit results either from exceptional circumstances or from an isolated mistake within a normally satisfactory system, in particular a proper organisation of administrative procedures. In the present case, the error has been made by the assistant of the professional representative, who prepared a notice of appeal in Dutch language for a patent proprietor having its principal place of business in Spain, and by the professional representative who signed that document. Although having been noticed by the professional representative after his signature, the error has not been effectively corrected. [3.1] An excessive work pressure is usually not recognised as an exceptional circumstance. It is part of the representative’s organisational duty in exercising all due care to make contingency arrangements to ensure that all professional duties are fulfilled and that office services are maintained (Singer/Stauder, The European Patent Convention A Commentary, third edition, Article 122, marginal number 95). As concerns the fact that a colleague had left the administrative department, it is not demonstrated among others how recent that was or whether it was unexpected, nor which measures had been taken to compensate for that absence and to ensure correct functioning of the administrative department nor the causal relation between the absence of that person and the problem at issue. The installation of a new computer system is also not an exceptional circumstance, the resulting burden on employees has to be considered as foreseeable and containable, had appropriates measures been taken in good time (T 489/04 [5]). This seems to apply by analogy to the testing phase of the new digital document management system of the present case. [3.2] Since the Board in the present case does not see exceptional circumstances, it has to consider if an isolated mistake occurred within a normally satisfactory system. From the general description given by the appellant, it appears that it was the intention of the professional representative’s firm to have a system of monitoring and checking in place, able to detect and to correct errors. In the present case, the error has been noticed by the professional representative after signature of the wrong document. However, even after signature of a new corrected document, the wrong document has not been shredded or at least definitively isolated from the file. On the contrary, it has been placed by his assistant in an envelope and sent out. Further, when placing the documents back in the file, the assistant did not see that the corrected document had not been sent out but was still present as an original in the file. When checking the file for removing the deadline from the management system, also the head of the department of portfolio assistants did not notice that the original to be sent out was still in the file, with the copy of the corrected letter, and therefore did not perform an effective check. The deadline was then removed on the basis of a document which had not been sent. In the circumstances of this case, the assistants of the professional representative had to be aware of the particular importance of the notice of appeal to be filed in the correct language, of the absolute criticality of the error detected by the professional representative and of its possible fatal consequences for the appeal and for the patent at issue. That should have justified a particular attention to the document to be sent out. From the above and in particular from the cascade of failures to effectively correct the error detected, the Board considers that the present situation does not result from an isolated mistake in a normally satisfactory system.
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T 41/09 – Dangerous Savings
K’s Law – The ebook
The Board is as a consequence of the opinion that the appellant has not demonstrated to have taken all due care in the specific circumstances of the present case. Therefore, the Board considers that the request for reestablishment of rights has to be refused. Second notice of appeal [4] Since the Board refuses the request for reestablishment of rights, the notice of appeal dated and filed on 6 July 2009, i.e. more than two months after the notification of the impugned decision, does not comply with A 108 and is therefore deemed not to have been filed. As a consequence the payment of the corresponding appeal fee, requested by letter dated 6 July 2009 to be debited from the appellant’s account lacks legal basis and is as a consequence also to be reimbursed. […] The appeals are deemed not to have been filed. Should you wish to download the whole decision, just click here. NB: This decision has already been reported on Laurent Teyssèdre’s blog. I much like the (dare I say, tongue-incheek) illustration he chose.
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R 2/10 – Too Late Or Too Early
K’s Law – The ebook
R 2/10 – Too Late Or Too Early 12 Nov 2010
In the present case, the applicant had not approved the version of the claims which the Examining Division (ED) was ready to grant. Therefore, the application was refused under A 97(2). The applicant paid the appeal fee but did not file her statement of grounds in due time. In its decision T 1479/09, posted on December 28, 2009 (not yet published but available on Register Plus) the Board of appeal found that no appeal had been filed and ordered the reimbursement of the appeal fee. The applicant then paid the petition fee but again did not file a statement in due time. She finally sent a document, but it only reached the EPO on March 10, 2010. Most of this document has been blackened but it still can be seen that the applicant accused the EPO of abuse of office (Amtsmissbrauch) and other criminal acts. ** Translated from the German ** [1.1] If a petition for review of a decision of the Boards of appeal is based on A 112a(2)(a)to (d), it has to be filed within two months of notification of the decision of the Board of appeal. If the petition is based on A 112a(2)(e), it has to be filed within two months of the date on which the criminal act has been established (A 112a(4)). [1.2] As follows from the file, in the present case the sole document that is to be interpreted as petition for review has been received on March 10, 2010, i.e. outside the time limit expiring on March 8, 2010, which is calculated as follows: • December 28, 2009: the impugned decision is sent, • January 7, 2010 : deemed date of delivery under R 126(2) and start of the period (Fristbeginn) under R 131(1), • March 8, 2010 : end of the period under A 112a(4), second sentence, together with R 131 and R 134(1). NB: March 7, 2010 is a Sunday. Thus the petition for review is to be rejected as inadmissible under R 108(1). [1.3] As for the time being (zur Zeit) none of the alleged criminal acts has been finally established by a court (R 105) it also has to be rejected as inadmissible under A 112a(4), third sentence. [1.4] In its response, received on July 30, 2010, the applicant has not filed a request for re-establishment for the expired time limit under A 112a(4). The corresponding time limit under R 136(1) in fine has expired since May 10, 2010. NB: May 8, 2010 is a Saturday. [1.5] According to the established case law of the Boards of appeal (J 19/90, T 371/92, T 778/00) the mere payment of the appeal fee does not constitute a sufficient means for validly filing an appeal. The same principle applies mutatis mutandis for the extraordinary remedy under A 112a. [1.6] For these reasons the Enlarged Board in its composition under R 109(2)(a) unanimously rejects the petition for review as clearly inadmissible. I found this decision stimulating because it made me ponder when a petition has to be filed in a situation (as here) where criminal acts are alleged. A 112a(4) provides that such a petition “shall be filed within (innerhalb von; dans un délai de) two months of the date on which the criminal act has been established and in any event no later than five years from notification of the decision of the Board of appeal”. R 105 adds that the act has to be finally established, which, incidentally, may make it difficult or even impossible to file within the five years in countries where the courts are slow. 2643 | 3398
R 2/10 – Too Late Or Too Early
K’s Law – The ebook
Is it possible to file the petition in a precautionary way before the criminal act has been finally established, so as not to miss the two month time limit ? I guess not. The wording of A 112a(4) appears to suggest otherwise, and so does the present decision, because if a precautionary filing was possible, the Board would have had to wait for five years before it could make a statement such as the one in point [1.3] of the reasons. Still, the wording of point [1.3] is strange. When stating that “for the time being” (zur Zeit) none of the alleged criminal acts has been finally established, which moment does the Board refer to? I trust it did not mean that on the day of deliberation (November 3) no such final decision had been taken, but the wording is ambiguous and could even be understood to mean that, … … unless, of course, the text is truncated and “zur Zeit” (at present, for the time being) was meant to read “zur Zeit der Antragstellung” (at the time of filing the petition), which I would interpret to be the time when the petition was complete, i.e. March 10. Should you wish to download the whole decision (in German), just click here.
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T 230/07 – Two Is Enough
K’s Law – The ebook
T 230/07 – Two Is Enough 11 Nov 2010
The present decision contains some very interesting statements on the famous three criteria fixed by T 279/89 for selection inventions. The Board comes to the conclusion that the third criterion, which conceptually is the most obscure, is not needed for a novelty assessment. Claim 1 as granted read as follows: 1. Method for the preparation of a colloidal silicate dispersion containing silica and alumina, comprising − dissolving a particulate mineral material containing silica and alumina in a molar ratio in the range of 2-12 in an aqueous solution, to form a solution containing nucleated re-precipitated particles from the material, − stabilizing the so obtained solution to form a dispersion, and − optionally adjusting the dry matter content of the dispersion. [4.1.1] The contested patent was filed on 19 June 2001 and claims priority of 20 June 2000 […]. Prior art document D5 - filed on 20 June 2000 and published on 4 January 2001 - claims priorities of 24 June 1999 (D6) and 1 October 1999 (D7). Its content - with the exception of the one and only example on page 10, which does not benefit from any of these priority dates - thus forms part of the state of the art pursuant to A 54(3). [4.1.2] Bearing in mind the above remark regarding the example, document D5 (claim 1) discloses a method for making a binder comprising the following steps: − dissolving a particulate mineral material having a glassy amorphous structure in an aqueous solution, to form a solution containing nucleated reprecipitated particles from the material, − stabilizing the so obtained solution to form a sol having the desired particle size, and optionally − adjusting the dry matter content of the sol. Claim 8 further discloses that the aqueous solution is acidic. According to D5 […], the particulate mineral material can be a waste mineral wool product obtained from mineral wool production, or alternatively, a mineral wool product used as heat insulation in constructions. According to a specific embodiment […], the sol contains predominantly silica in combination with other metal oxides stemming from the starting mineral material, such as calcium oxide, magnesium oxide, aluminium oxide, and possibly further metal oxides in smaller amounts. [4.1.3] The opponent argued that the disclosure of a sol containing predominantly silica in combination with aluminium oxide corresponded to the implicit disclosure of a sol containing these ingredients in a molar ratio of “at least 1”. As the sol claimed did not give rise to any particular advantage over the one disclosed in document D5, the sub-range of “2 to 12” defined in claim 1 at issue was to be considered as an arbitrary choice in view of the established jurisprudence (T 12/90, T 124/87 and T 279/89). [4.1.4] The board wants to underline that in order to conclude in favour of a lack of novelty, there must be a direct and unambiguous disclosure in a prior art document (here document D5) which inevitably leads the skilled person to something falling within the scope of what is claimed. In the present case, the sole disclosure in document D5 for the preparation of a silica-based sol containing other metal oxides is […] in the passage reading: “According to the invention it is thus possible to provide sols containing predominantly silica in combination with other metal oxides stemming from the starting mineral material, such as calcium oxide, magnesium oxide, aluminium oxide and possibly further metal oxides in smaller amounts.” The question whether this passage is a direct and unambiguous disclosure for a sol containing silica and alumina is - according to established jurisprudence - to be answered positively, because in order to arrive at this 2645 | 3398
T 230/07 – Two Is Enough
K’s Law – The ebook
combination of features the skilled person has to make only one choice in the list of “other metal oxides stemming from the starting mineral material”. As to the further question, whether said critical passage directly and unambiguously discloses a sol containing silica and alumina in a molar ratio of 2 to 12, the board notes that document D5 neither discloses explicitly a concrete value nor a range of values regarding the molar ratio between silica and any other metal oxide. [4.1.5] As to the [opponent’s] argument that a silica to alumina molar ratio of “at least 1” was implicitly disclosed in the passage […] of D5, the board examined whether the alleged molar ratio of “at least 1” would be novelty-destroying with respect to the molar ratio of “2 to 12” defined in the subject-matter of claim 1 at issue. According to decision T 279/89 [4.1] (see also T 198/84), a selection of a sub-range of numerical values from a broader range is to be considered as novel when: − the selected sub-range is narrow (criterion 1); − the selected sub-range is sufficiently far removed from the known range illustrated by means of examples (criterion 2); − the selected area does not provide an arbitrary specimen from the prior art, i.e. is not a mere embodiment of the prior description, but another invention (purposive selection)(criterion 3). In the present case, as regards criteria 1 and 2, the board comments as follows: (a) the open-ended range “> 1” defined by [the opponent] is unquestionably broad in comparison to the narrow range “2 to 12” defined in claim 1 at issue; (b) the upper (infinite) limit of the range “>1” is far away from the upper limit “12” of the range “2 to 12” defined in claim 1 at issue; (c) the lower limit “1” of the range “>1” is well below the lower limit “2” of the range “2 to 12” claimed (in terms of percentages, a silica to alumina ratio of 1 corresponds to 50% of each component, while a ratio of 2 corresponds to 66.6/33.3 % of alumina and silica, respectively, which values are far removed from the value 50% of a silica to alumina ratio of 1). It follows from the above comments that the selected sub-range of “2 to 12” is narrow and far removed from the range “>1”. According to [the opponent] the sub-range of “2 to 12” was implicitly disclosed in D5. Document D5, however, does not disclose any specific value as regards the alumina and/or silica content of the prior art sol […]. [4.1.6] The question arises whether a technical effect over the sub-range is decisive for acknowledging novelty or not. In other words, is the presence of an effect only a confirmation of novelty of the sub-range, can or should said effect be ignored when assessing novelty, or is the presence of an effect mandatory for establishing a delimitation vis-à-vis the state of the art? According to T 198/84 [7], T 666/89 [8] and T 720/96 [2.1.3], such a particular effect is neither a prerequisite for novelty nor can it as such confer novelty, its existence merely serving to confirm a finding of novelty already achieved. In the board’s view, the question whether the so-called “third criterion” according to decision T 279/89 or T 198/84 is fulfilled or not is for the following reasons of no relevance for assessing novelty of a sub-range singled out of a larger range. Regarding specifically the condition of novelty for patentability, the board draws the attention to the following passage in decision T 198/84 [7]: “when examining so-called selection inventions as to novelty, […] the sub-range singled out of a larger range is new not by virtue of a newly discovered effect occurring within it, it must be new per se”, to which principle the board fully adheres. For the board - in order to avoid any misunderstanding - the effect occurring in the sub-range should not be the decisive condition conferring novelty, because - the board following here decision T 1233/05 [4.3-4] - the presence of an effect falls back upon considerations to be taken into 2646 | 3398
T 230/07 – Two Is Enough
K’s Law – The ebook
account in the assessment of inventive step, and since inventive step and novelty are two distinct requirements for the patentability of an invention, different criteria are to be applied for their assessment. The consequence of this conclusion is that the examination of the presence and relevance of an effect occurring in the sub-range is to be made under A 56. The two criteria, i.e. the narrowness of the sub-range (“the selected sub-range should be narrow”) and the sufficient distance (“the selected sub-range should be sufficiently far removed from the known range illustrated by means of examples”) remain conditional requirements for establishing novelty of a sub-range of numerical values from a broader range. The meaning of the expressions “narrow” and “sufficiently far removed” has to be decided on a case-by-case basis. [4.1.7] During the discussion relating to the presence or absence of an effect - the so-called “third criterion” – [the opponent] referred to the following citations in document D17: “Al is not incorporated into the silica network”; “the gel network mainly consists of silica with the other cations dissolved in the pore liquid” and argued that the silicate binder claimed would not have the alleged “improved glassiness” disclosed in the contested patent. The board does not accept this argument because the above citations simply disclose that aluminum is not incorporated into the silica network, what however does not constitute evidence that an improved glassiness was not obtained. As to the effect underlying the invention, the contested patent […] discloses that the high alumina content of the dispersion provides for improved stability as compared to ordinary alkali water glasses, the alumina providing for improved glassiness and reduced crystallinity of the binder. The board notes that this technical teaching is however not directly and unambiguously derivable from the disclosure of document D5. This means that even if the criteria laid down in decisions T 279/89 and T 198/84 had been applied, the selected area (molar ratio of “2 to 12”) in the subject-matter of claim 1 ought to be considered as a “purposive selection” in the sense of these decisions, and not as an arbitrary choice from the prior art, as argued by [the] opponent or as concluded by the opposition division. The board points out that independently of the fact that the third criterion would anyway be fulfilled in the case at stake, it is however not this finding which renders the subject-matter of claim 1 at issue novel, since the technical effect has not been retained as the decisive condition conferring novelty. […] [4.1.9] It follows from the above reasoning that in the present case, criterion 1 (narrow range) and criterion 2 (sub-range sufficiently far removed from the known range illustrated by means of examples) are met, and the critical passage in D5 […] cannot be considered as a direct and unambiguous disclosure which inevitably leads the skilled person to something falling within the scope of what is claimed. 4.1.10 With respect to the further decisions referred to by [the opponent], the board observes that the present case concerns the selection of a sub-range of numerical values from a broader range, so it is not comparable with T 12/90, where the novelty of a vast family of chemical compounds defined by a general structural Markush formula had to be assessed in the light of a prior art disclosing another family defined by a general structural Markush formula and overlapping with the first family. For the same reason, the present case is also not comparable with T 124/87, which concerned a further problem of overlapping of classes of compounds. [4.1.11] Consequently, having regard to the reasons given [above], the subject-matter of claim 1 at issue, in particular the selected silica to alumina molar ratio of 2 to 12, is not directly and unambiguously derivable from the disclosure of document D5. The subject-matter of claim 1 is therefore novel in respect of document D5 (A 54(1)(3)). Should
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decision,
NB: There is a post dedicated to this decision on Le blog du droit européen des brevets.
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just
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here.
R 15/09 – Blame Yourself
K’s Law – The ebook
R 15/09 – Blame Yourself 10 Nov 2010
This petition for review deals with the revocation of the opposed patent by the Board of appeal in decision T 1068/06. Claim 1 of the main request under consideration read: 1. An electric device (4) comprising a current terminal and a conductor arrangement consisting of a nonconductive carrier material (1) with at least one transparent electrically conductive layer (2), characterized in that at least one means (7) to be supplied with current is connected to the current terminal via the conductor arrangement, and the transparent electrically conductive layer (2) comprises a cross-sectional area of Asch and a specific resistance of δsch wherein the ratio is δsch/Asch ≤ 0.4 ohms/mm, preferably ≤ 0.3 ohms/mm. The petitioner pointed out that its right to be heard had been violated. According to the petitioner, the decision to revoke the patent for lack of sufficiency of disclosure (A 100(b)) was based on arguments that had not been discussed during the oral proceedings (OPs) before the Board. The discussions were directed to the lower limit of the claimed δsch/Asch ratio and there had not been enough time to discuss the upper limit. Moreover, the auxiliary requests had not been discussed at all during the OPs. Finally, there had not been any decision on these auxiliary requests and on a request for an interlocutory decision filed by one of the opponents.
** Translated from the German ** Allowability of the petition [4] As far as the fundamental violation of A 113 by not granting the right to be heard (A 112a(2)(c)) is concerned: [4.1] Based on fundamental considerations, the Board has refrained from taking evidence concerning the concrete course of the debate during the OPs. [4.1.1] The course of OPs is an event so unique and complex that it cannot be reproduced reliably and completely. One cannot expect the taking of evidence to produce an objective image of all the aspects that possibly influence the behaviour of parties during the proceedings. This is particularly true for hearing the parties to the proceedings as witnesses after the event and/or using their notes and reports. As a consequence, as far as possible, proceedings under A 112a should be based only on the minutes of the proceedings and the presentation of the facts in the decision to be reviewed. This limitation also serves the purpose of OPs as a forum allowing a direct and free personal dialogue between all the parties and the deciding organ and complies with general procedural principles, such as the principle of immediacy (Unmittelbarkeitsgrundsatz). [4.1.2] Moreover, the attempt to reconstruct [the course of OPs] in a comprehensive and detailed way would not be in phase with the nature of the review proceedings, which are an extraordinary legal remedy (außerordentliches Rechtsmittel). As a matter of fact, the review of decisions of the Boards of appeal under A 112a being the last instance, it is in a strained relationship (in einem Spannungsverhältnis) to the principle of legal effect, and, therefore, to legal certainty. In order to take into account this strained relationship, the review of decisions of Boards of appeal under A 112a(2)(d) is expressly limited to “fundamental” procedural defects. This designates only such violations of rules which contradict the principles of legal proceedings in so fundamental a way that they are clearly visible and stand out from the detailed events of the OPs on which the parties do not agree. [4.2] During the appeal proceedings the petitioner had competent advice. Its written and oral statements before the Board demonstrate this competence. As shown by the reasons for the decision on page 9 (and the petitioner has conceded before the Board that this is correct), the petitioner has made the following statement during the OPs:
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R 15/09 – Blame Yourself
K’s Law – The ebook
“Moreover, it was obvious for the skilled person that both the length of the conductor arrangement and the current to be transmitted had an influence on the conduction losses. The skilled person could be expected to solve the problem of choosing an optimal cross-sectional area Asch of the conductive layer corresponding to the length of the conductor arrangement and complying with the condition δsch/Asch ≤ 0.4 ohms/mm mentioned in claim 1.” This statement, which is not isolated but which has been made when discussing the fulfilment of the requirements of the EPC is hardly reconcilable with the assertion that during the OPs the discussions only concerned the undefined lower limit for the claimed domain δsch/Asch ≤ 0.4 ohms/mm (more precisely, the sufficiency of disclosure of the invention in view of the fact that the δsch/Asch ratio of claim 1 had no lower limit and comprised the impossible value 0). Rather this statement is closely related to the concrete reasons which are given in the decision for the lack of compliance with A 83 […]. The statement was made by the competent professional representative of the petitioner, who could be expected to be aware of the consequences of the questions and indications of the Board of appeal and the arguments of the adverse party, to question unclear explanations, to address possible misunderstandings and to oppose his own view of things to the views of the Board and the adverse party (see also R 12/09 [11]). This duty of co-operating in the proceedings in an active and responsible way was incumbent on the [representative of] the petitioner as a party to the appeal proceedings, all the more as such proceedings require more autonomy than grant proceedings. As a matter of fact, in inter partes proceedings, the neutrality of the deciding panel (Spruchkörper) and the principle of equal treatment of the parties require that the Board refrains from giving too extensive indications (allzu weitgehende Hinweise) both in OPs (see R 11/08 [14]) and in its communications to the parties (see R 3/09 [5.1-2] and R 12/09 [11,13]). Even assuming (but the Board does not see any indication for this) that the representative of the petitioner was not aware of his duty to co-operate (Mitwirkungspflichten), this statement shows that he had the opportunity to present his comments on the reasons for the decision within the meaning of A 113(1) and has done so, quite to the point within the meaning of the reasons for the decision, even though he has not been successful. [4.3] This is underlined by the fact that during the OPs the petitioner was given the opportunity of adapting its requests to the current state of discussion, which it has taken by filing a new first auxiliary request. In this request, very much like in all the other requests filed before, the domain δsch/Asch ≤ 0.4 ohms/mm has remained unamended, i.e. the very domain the allegedly undefined lower limit of which has been the sole object of discussion during the OPs, according to the petitioner. [4.4] The necessity to decide on all factual requests (Sachanträge) in connection with the right to be heard (A 113) does not mean that these requests have to be formally invoked in the order given by the patent proprietor and that each and every factual and legal aspect has to be discussed individually with the parties. Rather, when there are several main and auxiliary requests, it is possible and it may even be mandatory, for reasons of procedural economy and in the interest of a factual discussion, to discuss at once a problem they have in common. In the present case, as long as it was clear or at least discernable to the parties that [the Board was dealing with] a reason for not granting the patent that was common to all requests, and as long as they had the opportunity to present their comments to this deficiency, at the latest during the OPs, the final decision according to which, as a consequence of this deficiency, none of the requests can be granted and, therefore, the patent is revoked, does not violate A 113(1). [4.5] Given these circumstances, the core argument of the petitioner, according to which the upper limit of the ratio δsch/Asch ≤ 0.4 ohms/mm given in claim 1 was deemed decisive for the sufficiency of disclosure of the problem under A 83 for the first time in the decision, cannot succeed, neither from a factual nor from a legal point of view. Even if the upper limit of the δsch/Asch ratio was not concretely and/or explicitly addressed during the OPs (which is not confirmed by the written submissions (? Berichtsschreiben) of the representative of the petitioner), it is clear also from the statements of the petitioner […] that the requirements of A 83 were discussed during the OPs in a way that was not limited to the question of whether the lower limit of the domain was defined in an unambiguous way (and not limited to part of the requests of the patent proprietor, either). The corresponding arguments of the reasons for the decision […] do not refer only to the upper limit of this domain (and/or to only part of the requests). [4.6] The petitioner’s impression that the reasons and the tenor of the decision are not supported by the results of the discussion of the factual and legal situation (Sach- und Streitstand) is obviously due to a misunderstanding of the meaning of the upper and lower limits of the δsch/Asch parameter in the debate and/or the reasons for the decision. This misunderstanding may have made the petitioner think that its auxiliary requests, which suffered from the same deficiency as the main request, had not been discussed and that the importance of the δsch/Asch 2649 | 3398
R 15/09 – Blame Yourself
K’s Law – The ebook
parameter as far as its upper limit is concerned, had remained without discussion. However, each party bears the responsibility for subjective misunderstandings, even and particularly if they lead to surprises because the parties to the proceedings have been talking at cross purposes. A 112a cannot relieve (entbinden) a party of this risk (see R 4/08 [3.3] and R 12/09 [13]). OPs serve the comprehensive discussion of the case, including new questions that may arise from the discussion, because otherwise written proceedings would be sufficient. However, when this discussion takes place, a Board of appeal does not have to address (ansprechen) all imaginable reasons for later decisions and discuss them with the parties, as long as their introduction (Einbeziehung) into the considerations have at least been addressed (angesprochen) in the proceedings and the awareness of their importance can be expected from a technically and legally (patentrechtlich) trained party (R 12/09 [11] referring to the established case law). In the present case the importance of the upper limit for the sufficiency of disclosure of the invention was obvious and it was up to the petitioner to complete its explanations or at least to enquire. It may not have seen any reason to do so, but it is not possible to do so afterwards, once the decision is known, not even in review proceedings under A 112a. [5] The alleged violation of A 112a(2)(d) together with R 104(b), because there had not been any decision on the patent proprietor’s request to maintain the patent within the scope of the auxiliary requests, does not exist: The decision to revoke the patent necessarily contains the refusal of all auxiliary requests (directed to maintaining the patent in an alternative version). [6] The alleged violation of A 112a(2)(d) together with R 104(b), because there had not been any decision on the request of one of the respondents for an interlocutory decision concerning the expression “transparent”, does not exist either: Irrespective of whether the fact that a request for an interlocutory decision has been ignored can adversely affect, within the meaning of A 112a(1), parties which have not filed the request and irrespective of whether the interpretation of the expression “transparent” could possibly be the object of an interlocutory decision, it is within the discretion of the Board to take such an interlocutory decision or not to take it. By definition, such an interlocutory decision cannot be a factual or legal prerequisite for the final decision, which means that it cannot be relevant within the meaning of R 104(b). [7] Thus the petition for review cannot succeed on the basis of A 112a(2)(d) together with R 104(b) or on the basis of A 112a(2)(c). The petition for review is dismissed. Should you wish to download the whole decision (in German), you can do so here.
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J 8/09 – Out Of Proportion
K’s Law – The ebook
J 8/09 – Out Of Proportion 9 Nov 2010
This decision is a good reminder of some principles that apply to requests for re-establishment. The applicant appears to have acted on his own, without any professional help. As is often the case in this configuration, the applicant forgot to pay a renewal fee. To be more precise, the renewal fee for the fourth year, which fell due on 30 November 2007, was not paid. By a letter dated 4 January 2008 the EPO drew the appellant’s attention to the possibility of paying the fee plus an additional fee within a grace period of six months (R 51(2)). Since no fee was received a “Noting of loss of rights under R 112(1)” communication was sent on 10 July 2008, informing the appellant that the application was deemed to be withdrawn and that he might request reestablishment of rights. The communication was returned undelivered to the EPO and re-sent first on 7 August 2008 and again on 5 September 2008. On 16 September 2008, an employee of the EPO telephoned the appellant concerning a payment made by him which could not be allocated to a specific file. In that conversation he was at his request told how to apply for reestablishment of rights. By a letter dated 24 September 2008, received at the EPO on 13 October 2008, the appellant requested reestablishment of rights and paid all the relevant fees. [4.1] Under A 122(1), an appellant for a European patent, who in spite of having taken all due care required by the circumstances, was unable to observe a time limit vis-à-vis the EPO which has the direct consequence of causing in particular, the deeming of the application to have been withdrawn, shall upon request have his rights re-established. [4.2] In considering whether “all due care required by the circumstances” has been taken, the circumstances of each case must be taken as a whole (see T 287/84) and must be judged in view of the situation existing before the time limit expired. That means the measures taken by the party to meet the time limit must only be judged with regard to the circumstances as they were at that time. Not disregarding the fact that the appellant is an individual appellant acting in person, i.e. without the help of a professional representative, the Board must take into consideration whether he exercised the required care in the course of all the procedural steps to ensure that he did what was necessary in time to avoid any loss of rights (see J 27/01 [3.3.1]). In this respect, the fact that the appellant is a surgeon without any specific knowledge about procedure and formalities under the EPC does not constitute a ground for re-establishment of rights. In general, a mistake or ignorance of the law is an insufficient ground for re-establishment: see J 5/94 [3.1], J 27/01 [3.3.1], J 2/02 [8] and J 6/07 [2.4-5]. In the last cited decision, this Board expressed the view that “Taking of due care requires that a person engaged in proceedings before the EPO, even when a layman, should acquaint himself with the relevant rules” and further that “The requirement to take all due care means that he must take all possible steps to ensure that he can do, properly and punctually, whatever is required during the grant procedure to prevent any loss of rights.” Accordingly, the circumstance that the appellant was absent from his usual residence between 1 January 2006 and 30 June 2008 because he was then working in Aveiro, in the North of Portugal, does not play any relevant role in the present case. The Board can understand that this period of time was a specially difficult one for the appellant and also that it could have caused some disruption in attending to his personal affairs. However, these explanations are all related to the fact that the appellant was waiting for a reminder from the EPO which he never received (namely the letter dated 4 January 2008 ) and not to his awareness of the due date for the payment of the renewal fee. As already stated by the Examining Division (ED), following established case law, the Notice drawing attention to the due date for the payment of the renewal fee is a voluntary service on the part of the EPO and no claim for 2651 | 3398
J 8/09 – Out Of Proportion
K’s Law – The ebook
re-establishment can be derived if the EPO fails to issue or if an applicant fails to receive such a communication. Consequently, the argument based on the reliability or otherwise of the Portuguese postal service is not relevant either. [4.3] As correctly stated by the ED, the appellant did not provide any information regarding his system for monitoring fee payments, so the Board cannot assess whether this system, if any, is efficient enough to avoid undue delay. [4.4] The circumstance that the appellant filed a second and later patent application is also irrelevant insofar that there is no evidence in the file that, for instance, the appellant paid renewal fees for one application instead of the other, or in any way made a mistake based on actual confusion between the two applications. [4.5] Concerning the principle of proportionality, the appellant relies on the fact that the present patent application is the subject of an agreement with a Swiss company which is already producing the system to which the application relates and argues that, since the loss of rights would jeopardise the production, the consequence of a single late payment of the renewal fee would be disproportionate. In his latest submission he added that this company refuses now to pay royalties and is trying to copy the system using another name. The Board agrees with the appellant that the principle of proportionality can be defined as a duty for a court or an administration to find a balance between a party’s error and the legally ensuing consequences when a margin of weighing the importance of the circumstances exists (see J 5/97 [5]). However, when the Boards of Appeal refer to the principle of proportionality in the case law, it is never as a main ground but in support of other grounds already substantiating, to a certain extent, the allowance of the appeal especially when a reliable system for managing the time limits and an isolated mistake within such a system can be assessed (see J 44/92 and J 48/92). As already stated above […], the Board cannot find in the submissions of the appellant any description of a system for managing the time limits for the payment of fees. Since the appellant fails to place the Board in a position to assess the reliability of any such system, the Board is unable to assess whether an error in such a system could be treated as an isolated mistake so as to allow re-establishment. For these reasons, the principle of proportionality does not apply in the present case. […] The appeal is dismissed. Should you wish to download the whole decision, just click here.
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T 1857/07 – The Importance Of Being Dependent
K’s Law – The ebook
T 1857/07 – The Importance Of Being Dependent 9 Nov 2010
A little bonus especially for my American readers, who now rank third (!) in pageviews behind my readers from France and Germany. [2.4.2] Claim 11 as originally filed refers to Claim 1, which has no limitation as to the wavelength used for irradiating the photoresist. Only Claim 2 cites “below about 200 nm” and Claim 3 mentions 193 nm. However, as Claims 2 and 3, like Claim 11, exclusively refer to Claim 1, a combination of the features of Claims 1, 3 and 11 is not disclosed. […] The requirements of A 123(2) are not met.
This is something that applicants from countries where multiple dependent claims are not usual or even forbidden should be aware of. In Europe, multiple dependent claims may provide a basis for claiming combinations that might otherwise be rejected as contrary to A 123(2). So when drafting PCT applications that are to enter, inter alia, into the European regional phase, you might consider drafting the application with an original set of claims comprising multiple dependencies, so as to create a basis for combinations that might prove useful during the examination in Europe. When entering into the U.S., Chinese, etc. national phases, you then eliminate the multiple dependencies. Overall, you should be better off: you gain some “freedom to combine” in Europe but you do not lose anything elsewhere. If you start with a PCT application without any multiple dependent claims, you might not have to amend the claims when entering the U.S., Chinese, etc. national phases, but in Europe you could face the same problem as the patentee in the decision above. An alternative would be to provide cookie-cutter sentences stating that all the particular embodiments can be combined in all possible ways, but this is less explicit and more risky, given the EPO’s harsh line on A 123(2). Should you wish to download the whole decision, just click here.
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T 511/07 – No Harm Done
K’s Law – The ebook
T 511/07 – No Harm Done 8 Nov 2010
In its statement of grounds of appeal, the appellant, whose application had been refused by the Examining Division (ED), raised a certain number of “procedural aspects”: (a) In the second A 96(2) communication the ED introduced new prior art as a result of a secondary search, some of which was not clearly pre-published. (b) The applicant’s right to be heard was not respected as it did not have the chance to comment on the newly cited prior art. In particular, the ED gave the impression that its mind was already made up to refuse the application regardless of arguments brought forward by the applicant or whether oral proceedings(OPs) were held. Hence the applicant opted to request a decision according to the state of the file in order to obtain an appealable decision. (c) The decision was unclear as regards the reasons for lack of inventive step. It was not clear whether the decision is based on a combination of D4 and D5 only, or whether also in combination with D1. The term “asserted inventive contribution”, which is unknown from the EPC, the Guidelines for Examination, or the case law further confused the situation. Further, the problem-solution approach has not been applied. Finally, document D6 was referred to without indicating its relevance. The Board’s answer contains some noteworthy statements: [2.1] The board has considered whether these comments, although raised in connection with a different request to that currently on file (and, moreover, not in connection with a request for reimbursement of the appeal fee, cf. R 67 EPC 1973), identify a substantial procedural violation committed by the ED that would justify in itself remittal of the case to the first instance. Re (a): [2.2] The appellant apparently disputes the publication dates of documents D4, D5 and D6. However, the board considers that the publication date of a document forms part of the factual framework of substantive examination. Hence, an error of publication date, even if it had occurred, would be an error of fact and not of procedure. Nevertheless, the appellant appears to argue that the ED did not follow the correct procedure by not investigating properly the dates of publication. In respect of Internet citations, (cf. OJ 8-9/2009, p. 456 ff., e.g. 3.3), as with other citations, it may be necessary that an examiner provide proof of a publication date, inter alia, if the applicant gives reasons for questioning the date of publication. However, in the present case, the appellant challenged the publication dates for the first time in these appeal proceedings. As regards D5, the appellant comments that it is impossible to judge without further investigation whether the original version of this document corresponds to that downloaded [from the Internet] by the ED. However, in the board’s view, document D5 is not an Internet citation per se whose content might be open to doubt but is merely a downloaded version of a printed document with a high probability of authenticity (cf. T 1134/06 [4.2]). Given the date on the document of 1993, the board sees no reason why the ED needed to further verify that the document was available to the public at the priority date of the present application [i.e. March 18, 1999]. In the case of document D4, the appellant has plausibly argued in the statement of grounds that its content may have been published after the priority date of the application, despite the earlier date on the document. Nevertheless, the applicant did not question the publication date of D4 during the examination procedure, but, following its introduction, merely requested a decision on the state of the file. Under these circumstances the board concludes that the ED, from a procedural point of view, was reasonably entitled to base its decision on this document. 2654 | 3398
T 511/07 – No Harm Done
K’s Law – The ebook
As regards D6, although the board agrees that the ED should not have assumed that the content of this document was available to the public before the priority date, it is mentioned more as an aside and does not form part of the main argument with respect to inventive step, which relies on documents D1, D4 and D5. Thus the publication date of D6, in a procedural sense, can be regarded as moot. The board adds that, in the absence of an admissible set of claims […], there is no need for the board to investigate further the publication dates of the aforementioned documents. Re (b): [2.3] The second point raised by the appellant is that it was denied the right to be heard (cf. A 113(1)). [2.3.1] In accordance with A 113(1), the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to comment. In this respect, the board notes that the applicant, aware of the objections raised by the ED in its second communication dated 16 March 2006, requested a decision on the state of the file. In so doing, the applicant chose voluntarily to forgo the opportunity to respond to the ED’s objections either in writing or by maintaining its request for OPs, including those objections based on the documents newly cited in the ED’s second communication. Under these circumstances, the present decision according to the state of the file is based on grounds or evidence on which the applicant has had an opportunity to comment and therefore complies with A 113(1). [2.3.2] The board infers from the appellant’s remarks that the applicant regarded it as futile to present comments either in writing or orally because the ED had already made up its mind to refuse the application. The board however can find no evidence to support this point of view. Although the ED stated that a refusal was “to be expected” and that OPs would be held “before refusing the application”, in the board’s view this was to be seen only as an indication of the ED’s current assessment of the case and a confirmation that OPs would be held before any final decision was taken, and does not imply that the application would be refused in any event. The ED accordingly invited the applicant to file new claims and arguments in support […]. Hence the board finds the appellant’s argument unconvincing. Re (c): [2.4] The appellant has argued implicitly that the decision is not reasoned. [2.4.1] In accordance with R 68(2) EPC 1973 all decisions issued by the EPO must be reasoned, i.e. the decision should contain a logical chain of argumentation explaining why the decision has been taken. In the present case, the appellant appears to argue mainly that the decision is incomprehensible because it is not clear whether claim 1 is attacked on the basis of D4 and D5 only, or in combination with D1. [2.4.2] However, in the board’s view, the two communications referred to in the impugned “decision according to the state of the file”, seen in the context of the appellant’s reply dated 07 September 2004, form a logical and comprehensible argument. [2.4.3] In this respect, in the communication of 19 May 2004, the ED argues that the subject-matter of claim 1 lacks novelty with respect to the disclosure of D1. In the applicant’s reply dated 07 September 2004, it is argued that certain features of claim 1 are missing from D1. In the second communication dated 16 March 2006, the ED cited documents D4 and D5 as disclosing the missing features and argued that the subject-matter of claim 1 lacked an inventive step. Reading the two communications referred to in the impugned decision and the appellant’s reply in the correct sequence, it is clear to the board that the inventive step argument starts out from the disclosure of D1 and is based on combining it with the disclosures of D4 and D5. The board finds this to be a logical chain of argumentation, and the decision is thus reasoned within the meaning of R 68(2) EPC 1973. [2.4.4] The appellant argues that the problem-solution approach has not been used. However, in accordance with the Guidelines, C-IV, 9.8 (June 2005 edition), “the examiner should normally apply the so-called “problem-and-solution approach””(board’s underlining). Thus the use of the problemsolution approach was not obligatory to meet the requirements of a reasoned decision.
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T 511/07 – No Harm Done
K’s Law – The ebook
The appellant also makes comments to the effect that it is not indicated where certain features are disclosed in the cited documents. However, the board notes that in the first communication at point 4 and in the second communication at point 3, specific passages of D1, D4 and D5 are referred to by the ED. In the present case the board considers these references to be sufficient in order to be able to understand the reasoning of the ED. Further, the board sees no objection to the use of the term “asserted inventive contribution”, which appears to be merely an alternative expression for “alleged inventive contribution”. Finally, as already stated above, the mentioning of D6 in the communication dated 16 March 2006 appears to be intended more as an aside and does not form part of the main argument based on D1, D4 and D5. Hence, its citing in this manner by the ED without a detailed explanation does not mean that the decision is not reasoned. [2.5] In consequence, the board concludes that no substantial procedural violation was committed that would require the board to remit the case to the ED. Should you wish to download the whole decision, just click here.
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T 301/10 – Once May Be Enough
K’s Law – The ebook
T 301/10 – Once May Be Enough 6 Nov 2010
In the present decision the Board reverses the finding of lack of inventive step by the Examining Division (ED). It then deals with the question of whether the appeal fee should be reimbursed because the ED had refused the application after one single exchange of letters. What does A 94(3) really say? [5] The appellant has requested the reimbursement of the appeal fee on the grounds that the refusal of the application after one single official communication amounted to a procedural violation. [5.1] The relevant facts can be summarised as follows: a) In the official communication pursuant to A 94(3) dated 19.06.2008 the ED referred to the objections raised in the European search opinion accompanying the extended ESR dated 11.03.2008 and issued according to R 62(1). In this opinion it was held inter alia that the subject-matter of claim 1 did not involve an inventive step […]. b) In its reply dated 18.09.2008 the appellant filed amended application documents. In particular, claim 1 was amended by insertion of reference signs relating to the drawings and by the insertion of the expression “traversing back through the jet” in the resulting amended claimed feature “an ultrasonic transducer (68) for generating ultrasonic waves through the liquid jet and for detecting echoes traversing back through the jet of the ultrasonic waves [...]” (emphasis added). In its reply the appellant also submitted counterarguments in response to the view of the ED that the subject-matter of claim 1 did not involve an inventive step. c) The ED then refused the application by the decision dated 26.11.2009 now under appeal. In its decision the ED - held that the insertion in claim 1 of the expression “traversing back through the jet” constituted an amendment of a “purely linguistic nature” […] - noted that no oral proceedings (OPs) were requested by the appellant […], and - held that claim 1 did not involve an inventive step, gave reasons identical to those already given in the European search opinion, and found the counterarguments of the appellant insufficient to challenge its view on the issue of inventive step […]. 5.2 The Board first notes the following: i) The insertion of the expression “traversing back through the jet” in claim 1 subsequently rejected by the ED although representing in the Board’s view more than just an amendment of “a purely linguistic nature” as held by the ED - appears to have the sole effect of specifying explicitly a feature that was implicit - or at least was considered by the ED as manifestly implicit - in the subject-matter of the unamended claim. Consequently, the amendment to claim 1 did not have any impact on the claimed subject-matter as construed by the ED by reference to the European search opinion, not at least to the extent of affecting the ED’s assessment of inventive step of the claimed invention. It follows that, contrary to the submissions of the appellant, there was no need for the ED to re-examine the amended claimed subject-matter as its previous assessment of inventive step was already based on a construction of the unamended subject-matter in which the transducer detected echoes traversing back through the liquid jet. ii) As noted by the ED in its decision, the appellant did not request OPs. iii) The reasons given by the ED for the refusal consisted of those previously notified to the appellant by reference to the European search opinion, and in its decision the ED also reasoned why the counterarguments submitted by the appellant were, in its opinion, not persuasive. Consequently the decision was sufficiently reasoned within the meaning of R 111(2) and, in addition, was based on grounds on which the appellant already had an opportunity to comment (A 113(1) EPC 1973). [5.3] The appellant has submitted that the circumstances of the case did not justify a refusal after only one exchange of letters and that consequently the refusal constituted an abuse of process contrary to A 96(2).
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T 301/10 – Once May Be Enough
K’s Law – The ebook
The appellant appears to refer here to A 96(2) EPC 1973 and the Board understands these submissions as referring to the corresponding article of the EPC 2000 applicable in the present case (see Article 1 of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000, published in OJ EPO, Special edition No. 1 2007, 197), i.e. A 94(3) which, as far as the issues raised by the appellant are concerned, has the same text as the earlier article, i.e. that in case “the examination […] reveals that the application or the invention to which it relates does not meet the requirements of this Convention, the ED shall invite the applicant, [...] as often as necessary, to file his observations” (emphasis added). According to the established case law developed in relation to A 96(2) EPC 1973 and also applicable, as far as the issues raised by the appellant are concerned, to A 94(3), the expression “as often as necessary” in this article indicates that the ED has a discretion which has to be exercised objectively in the light of the circumstances of the case (see for instance decisions T 162/82 [12], T 300/89 [9.1], and T 726/04 [7]). Thus, as far as the alleged procedural violation is concerned, the question to be addressed by the Board is whether the ED, by not inviting the appellant again to comment on the same assessment previously communicated to it before contemplating the refusal of the application, exercised its discretion under A 94(3) in an incorrect way. In the present case, nothing in the appellant’s response to the first communication brought the ED to change its mind in respect of the issue of inventive step since, apart from the amendment referred to above which had no effect on the ED’s assessment of the claimed subject-matter (paragraph [5.2]-i) above), the counterarguments put forward by the appellant failed to convince the ED that the claimed subject-matter did involve an inventive step. In these specific circumstances - and irrespective of the fact that the substantive assessment of the case by the ED is not being followed by the present Board […] - it became legitimate for the ED to reject the application without issuing a further communication. In addition, contrary to the appellant’s submissions, neither A 94(3) alone nor this article in conjunction with the remaining procedural requirements of the EPC (and in particular with those of A 113(1) EPC 1973) require that the applicant be given a repeated opportunity to comment on the argumentation of the ED so long as the decisive objections against the grant of a patent remain the same insofar as the grounds for these objections have been presented to the applicant, completely and in due time (see for instance T 162/82 [13] and T 726/04 [7]). The Board also does not agree that because the expression “as often as necessary” is synonymous with “as many times as necessary”, the word “often” itself implies more than once; rather, “as many times” also includes one single instance. The further argument of the appellant that there was still a possibility of restricting the claimed invention and that one can hardly maintain that the possibility for amendment has been exhausted during the examination procedure cannot be followed by the Board. The Boards sees no legal basis in the EPC and no general procedural principle that would support the view that a rejection cannot be issued if there are still ways of restricting the claimed subject-matter or before all possibilities for amendment have been “exhausted” as appears to be the position of the appellant. On the contrary, it is incumbent upon the appellant to maintain unamended or to amend - optionally on an auxiliary basis - the application documents upon which examination is to be carried out and a decision eventually to be reached (A 94 and A 97 together with A 113(2) EPC 1973) (see T 300/89 [9.1]), and not upon the ED to prolong the examination procedure beyond the procedural framework set out in the EPC (see in this respect A 123(1) together with R 86(3) EPC 1973) until the applicant opts for amending the application and eventually “exhausts” all possibilities for amendment, as this would seriously undermine the principle of procedural economy. As regards the submissions of the appellant that it was necessary for the ED to issue a further communication in order to acquire a full understanding of the invention, the Board notes that the ED manifestly found itself in a position to form an opinion on the substantive issues under consideration and in particular on the counterarguments presented by the appellant. In these circumstances, the question of whether the ED was objectively right in believing that it did in fact have a full and correct understanding of the invention and the further question of whether or not the ED’s understanding of the substantive matters of the case was correct or is shared by the appellant or by the present Board constitute by their very nature a matter of judgment on substantive issues and, contrary to the appellant’s submissions, they are immaterial to the procedural question of whether a further communication was necessary within the meaning of A 94(3). The Board acknowledges that the amendments made to the application documents in response to the first communication overcome other objections raised by the ED by reference to the European search opinion (claims excluded from patentability by A 53(c) EPC 1973 and inconsistent use of reference signs in the description and 2658 | 3398
T 301/10 – Once May Be Enough
K’s Law – The ebook
drawings) and can certainly be qualified, as submitted by the appellant, as a serious attempt to overcome the corresponding objections raised by the ED. However, none of these amendments had an impact on the subjectmatter of claim 1 or on the ED’s assessment of inventive step (paragraph [5.2]-i) above), and therefore the appellant’s submissions in this respect have no effect on the issues under consideration. As regards the appellant’s submission that no OPs were requested because it was “felt that the application was in order for grant”, the Board notes that this is no excuse for having failed to request OPs because, first, unless otherwise expressly stated, it is generally assumed that the application documents on file at each stage of the examination procedure are from the point of view of the applicant in order for grant (see A 97(1) EPC together with A 113(2) EPC 1973) and, second, pursuant to A 116(1) EPC 1973 it is incumbent upon the appellant to request or not OPs - possibly only on an auxiliary basis - in accordance with the circumstances (see T 300/89 [9.2]). In these circumstances, the Board is unable to identify any reason to conclude that the ED had exercised its discretion under A 94(3) in an incorrect way. [5.4] In view of the above considerations, the Board does not see any reason to consider that in the circumstances of the present case the refusal of the application immediately after the reply to the first and sole official communication of the ED constituted a violation of A 94(3) or of any other procedural principle enshrined in the EPC. In addition, the Board is unable to identify any other procedural violation in the first-instance proceedings (point [5.2] above, last paragraph), let alone a substantial procedural violation that would justify the reimbursement of the appeal fee under R 67 EPC 1973 as requested by the appellant. Should you wish to download the whole decision, just click here. NB: This decision has also been discussed on Le blog du droit européen des brevets.
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T 979/06 – Back To Business As Usual
K’s Law – The ebook
T 979/06 – Back To Business As Usual 5 Nov 2010
The present decision deals with the refusal of a patent application by the Examining Division (ED), based on the grounds of lack of clarity and lack of inventive step. Claims 1 and 11 of the main request read as follows: 1. A method of reducing luminance flicker in a video image sequence comprising a plurality of video images produced by a camera, comprising: digitally filtering on a per pixel basis, using a finite impulse response filter of maximum length N+1, temporally successive video images of the video image sequence; said digitally filtering comprising: adjusting a filter length, measured in terms of a number of pixel values, corresponding to a current image pixel value of the finite impulse response filter to increase the filter length if an absolute difference between the current image pixel value and a correspondingly spatially disposed previous pixel value of respective current and previous temporally spaced successive images of the video image sequence is less than a threshold value up to the maximum filter length of N+1, and otherwise setting the filter length to one, measured in terms of a number of pixel values. 11. A computer program comprising computer program code means adapted to perform all the steps of claims 1 to 4 when the program is run on a computer. [4.1] The opinion of the Enlarged Board of Appeal (EBA) in case G 3/08 [headnotes 6 and 7] found inter alia that there was no divergence between decisions T 424/03 and T 1173/97 which would make the referral to the EBA. Furthermore the EBA in its analysis held that the definition of the “further technical effect” given in decision T 1173/97 stood as the established case law (see G 3/08 [10.3-4, in particular point 10.4, in fine]). In its opinion, the EBA came to the conclusion that the referral by the President of the EPO was inadmissible under A 112(1)(b). [4.2] Hence the board follows the approach concerning computer programs which has become established case law. In particular the board has examined whether the subject-matter of claims 11 and 12 has a technical character because the claimed program, when run on a computer, causes a “further technical effect” (see T 1173/97 [9.4]). The computer programs of claims 11 and 12 have the effect, when run on a computer, that luminance flicker in a video image sequence comprising a plurality of video images produced by a camera (and input into the computer) is reduced. The board finds that this effect is a “further technical effect”. Hence the computer programs of claims 11 and 12 are not objectionable as being excluded from patentability under A 52(2)(c) and (3). Should you wish to download the whole decision, just click here.
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T 485/05 – The Skilled Person Fiddles Around
K’s Law – The ebook
T 485/05 – The Skilled Person Fiddles Around 4 Nov 2010
The present decision deals with an appeal from the decision of the Opposition Division (OD) to revoke the opposed patent. Having shown that claim 1 on file, which was directed to a water treatment system with dosing control, lacked novelty over documents O4 and O6, the Board also examined an alleged case of prior use: [3.3.1] The [opponent] contended that water treatment devices exhibiting all features recited in claim 1 of the patent in suit had been sold to a large number of customers before the date of priority of the patent in suit, i.e. before 20 May 1997. [3.3.2] In support of the allegation of prior public sales, the [opponent] submitted the documents O11, O12, O13 and O14. [3.3.3] In the board’s view none of the documents O11 to O14 is conclusive regarding certain circumstances relating to the sales, notably the respective dates at which the water treatment devices were effectively delivered and installed, so that it became possible for the customers to gain knowledge of the devices and to use them. In this context the board observes that the date of sale is not necessarily identical with the date at which the object of the sale is made available to the customer, since the two dates may be different. For these reasons the documents O11 to O14 cannot be regarded as a sufficient substantiation of the alleged prior public sale. [3.3.4] Documents O16, O18, O19 and O21 provide comprehensive information on two specific sales which took place before the priority date of the patent in suit. These facts were not contested by the [patent proprietor]. According to O16, a declaration in writing by Ms A. Michaud, an employee of “Collège de France”, Paris, the “Milli-Q Academic” device having the serial number F7CM29628K was delivered, installed and put into operation on 16 May 1997 at “Collège de France”, Paris […]. This is confirmed by the installation report O18 dated 16 May 1997 and signed by Ms A. Michaud in her capacity as representative of the customer. There existed no express agreement of confidentiality or secrecy between the seller “Millipore S.A.” and the customer “Collège de France” […]. On the basis of the evidence on file, there existed no tacit confidentiality agreement either. According to O19, a declaration in writing by Mr J.-M. Pagès, an employee of the “Faculté de medicine”, Marseille, the “Elix 5” device having the serial number F6PM23758D was delivered, installed and put into operation in January 1997 at the “Faculté de medicine”, Marseille […]. This is confirmed by the installation report O21 dated 3 January 1997 and signed by Mr J.-M. Pagès in his capacity as representative of the customer. Again there is no evidence that there existed an express or tacit agreement of confidentiality or secrecy between the seller and the customer […]. [3.3.5] The “Milli-Q Academic” device having the serial number F7CM29628K and the “Elix 5” device having the serial number F6PM23758D were the object of a demonstration effected by the [opponent] during oral proceedings (OPs) held on 18 January 2005 before the OD. According to the minutes of the OPs, it was demonstrated that the speed of the pump of the “Milli-Q Academic” device can be varied while the system is dispensing water […]. In order to get access to this function, three of the four buttons or keys of the keyboard, namely “Measure”, “Cleaning” and “Menu” have to be pushed down simultaneously.
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As a result a service menu appears on the display, which allows to adjust the speed of the motor of the pump continuously by setting a value between 18 % and 100 %, depending on the desired flow rate at the outlet valve […]. Furthermore it was shown during the demonstration that the menu of the “Elix 5” device provides also the option to set a variable factor of the flow […]. [3.3.6] Apparently no internal inspection of the “Milli-Q Academic” device and the “Elix 5” device was made during the course of the OPs before the OD. Nevertheless the results of the demonstration imply that the following components formed part of the configuration of the two devices: (i) a variable speed motor, (ii) a regulating device for controlling the pump output, connected to the variable speed motor, (iii) an input device in the form of a keyboard allowing to set a desired value on the display, and (iv) a controller for converting the input signal to a corresponding motor control signal. [3.3.7] Having regard to the foregoing, the board concludes that the “Milli-Q Academic” and the “Elix 5” devices which were the object of the demonstration before the OD exhibited all features of the water treatment system as defined in claim 1 of the patent in suit. [3.3.8] The [patent proprietor] did not contest the date and the precise object of the prior use. What was contested, however, were the circumstances of the prior use. In the [patent proprietor’s] view the service manual O8b indicates that the variation of the pump motor of the “Milli-Q” device was not intended to be accessible to customers […]. When demonstrating the “Milli-Q” device, the [opponent’s] technical expert had to use software described in O8a as being accessible only to service engineers, namely the menu “ADJUSTMENT”, which includes a sub category “SERVICE ADJUST. V. MOTOR" […]. To vary the speed of the motor of the pump during the outflow of water from the “Milli-Q” device, the technical expert of the [opponent] had to access and operate the service menu whilst holding a cup for the outflow of water and holding the outlet arm. This did not form part of the public teaching of O4. Moreover, the “Milli-Q” device had no “desired flow rate” entity in its own right as required by claim 1 of the patent in suit […]. Therefore, the [patent proprietor] concluded that the prior use of the "Milli-Q" device is not prejudicial to the novelty of the water treatment system according to claim 1 of the patent in suit. [3.3.9] In short, the [patent proprietor] contended that the function of the adjustment of the speed of the pump motor had not been made available to the public, since only “service engineers” were able to access the service menu containing this functionality. Thus, the variation of the speed of the motor and, consequently, the adjustment of the flow of water to a desired value, represented a “hidden” feature, which was not disclosed as such by the use of the “Milli-Q” device. [3.3.10] The board is not convinced by this argumentation. As has been shown by the [opponent], access to the service menu of the “Milli-Q” device, including the sub category of the adjustment of the voltage of the pump motor, could be achieved by a simple operation, namely by pressing down simultaneously three buttons or keys of the keypad. The skilled person was in a position to explore the various functions accessible via the keypad, including the adjustment of the speed of the motor, by analysing the device from the outside, if necessary by means of trial and error. There was no need to open or disassemble any parts of the device for this purpose, since the access to the service menu by using the keypad was expressly foreseen by the manufacturer of the “Milli-Q” device. Moreover, the analysis of the functions of the device did not require any specific instructions provided by the manufacturer, for example in the form of a service manual or a description of the software of the system. In this respect, the board refers to the decision of the Enlarged Board of Appeal G 1/92, according to which the composition of a product is contained in the state of the art when the product as such is available to the public and can be analysed and reproduced by a skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition (see G 1/92 [headnotes]). [3.3.11] When arguing that the possibility of adjusting the speed of the pump motor of the “Milli-Q” device was not made available to the public in the absence of an explicit instruction, the [patent proprietor] introduces, in fact, an additional requirement for the device to be available to the public with all its functions. This additional requirement is that the skilled person should be able to recognise a priori, on the basis of the common general knowledge, which functions the commercially available device might have. However, such an additional requirement would not be in agreement with the essence of the decision G 1/92, where only the analysability and reproducibility of the product are required for its composition to be state of the art.
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T 485/05 – The Skilled Person Fiddles Around
K’s Law – The ebook
[3.3.12] Regarding the need to access and operate the service menu whilst holding a cup for the outflow of water and holding the outlet arm during the demonstration of the “Milli-Q” device, the board observes that said demonstration did not take place in a laboratory under standard laboratory conditions, but as part of OPs before the OD. Therefore, it is immaterial that the demonstration may have involved a number of minor practical inconveniences. [3.4] For the reasons given above the board concludes that the water treatment system according to claim 1 of the main request lacks novelty having regard to each of the disclosures provided by O4, O6 and the prior public use of the “Milli-Q” device, respectively. Should you wish to download the whole decision, just click here. NB: Laurent Teyssèdre was the first to report this decision; to read his post, click here.
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T 2193/09 – Fatal Silence
K’s Law – The ebook
T 2193/09 – Fatal Silence 3 Nov 2010
The present appeal was filed after the Examining Division (ED) had refused the patent application. In the proceedings before the ED, the applicant had several times filed amended claims in reply to communications. Following the filing of new claims with a letter dated 20 December 2005, the ED, in a communication dated 22 September 2006, set out new objections under both A 84 and A 56. In reply, the applicant filed a new set of claims with a letter dated 2 April 2007 and requested that examination should proceed on the basis of the new claims on file. In a communication accompanying the summons to oral proceedings (OPs) the ED informed the applicant that the claims were not acceptable under R 137(3). In its response the applicant withdrew the request for OPs but did not change the request to proceed on the basis of the claims filed with the letter dated 2 April 2007. The grounds for the decision under appeal read as follows (click to enlarge):
The statement of grounds of appeal (11 pages) comprises a main request (pages 5 to 8) and an auxiliary request (pages 9 to 11) and statements as to their basis in the application as filed, their novelty and their inventive step (pages 1 to 4). The Board raises an admissibility problem: [1] Admissibility of the appeal (A 108 and R 101(1)) [1.1] Pursuant to A 108, third sentence, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations within four months of notification of the decision. An appeal which does not comply with this requirement shall be rejected as inadmissible (see R 101(1)).
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T 2193/09 – Fatal Silence
K’s Law – The ebook
[1.2] According to established case law the statement setting out the grounds of appeal should specify the legal or factual reasons on which the case for setting aside the decision is based. The arguments must be clearly and concisely presented to enable the board to understand immediately why the decision is alleged to be incorrect, and on what facts the appellant bases his arguments, without first having to make investigations of its own (see Case Law of the Boards of Appeal, 5th edition 2006, VII.D.7.5.1). [1.3] In the present case, the applicant had requested the grant of a patent on the basis of a set of claims to which the ED did not give its consent under R 137(3). The application was refused on the ground that the ED, pursuant to A 113(2) EPC 1973, was bound to decide on a text submitted to it. Thus the decision under appeal was based on the ground that there was no admitted set of claims. Implicitly this meant that a patent could not be granted (A 97(1) in conjunction with A 78(1)(c) EPC 1973), and had to result in the refusal of the application (A 97(2)). [1.3.1] In this context the relevant legal question is whether the statement of grounds of appeal sets out why, according to the appellant, the ED was not correct in basing its decision on the ground that there was no set of claims admitted under R 137(3). [1.3.2] The text of R 137(3) which is applicable to the present case reads as follows: “After receipt of the first communication from the ED, the applicant may, of his own volition, amend once the description, claims and drawings, provided that the amendment is filed at the same time as the reply to the communication. No further amendment may be made without the consent of the ED” (emphasis by the board). [1.4] The statement of grounds of appeal in the present case does not give any reasons why the decision is alleged to be incorrect. The lack of claims underlying the decision under appeal is not discussed in the statement of grounds of appeal. The appellant does not contest that there was no admitted set of claims and that the ED was entitled to refuse the application as a consequence. Nor does the appellant contest that the ED was entitled to exercise its discretion under R 137(3) or that it had exercised this discretion in accordance with the right principles. Instead the statement of grounds of appeal gives arguments as to why the subject-matter of the (amended) main request filed with the statement of grounds of appeal is both new and inventive in view of the references cited in the decision under appeal and states that the appellant’s arguments as to novelty and inventive step “have not been duly considered by the contested decision”. Regarding the auxiliary request, the appellant merely submitted that these claims specified the amendment that had been required by the ED, but did not provide arguments as to why the re-filing of the claims (with an additional feature) overcame the objection of a lack of claims admitted under R 137(3), or why the claims should be admissible on appeal. Thus the submissions in the statement of grounds of appeal do not set out the relevant reasons why the decision of the ED not to give its consent to the amendments under R 137(3) and to refuse the application for lack of admissible claims is alleged to be incorrect or not to have been taken in accordance with the right principles. [1.5] It is established case law that, in exceptional circumstances, claims filed with the statement of grounds of appeal may suffice for the appeal to be admissible even if the statement of grounds of appeal does not explicitly set out why the decision under appeal is alleged to be incorrect. This may, for instance, be the case if from the decision under appeal and the statement of grounds of appeal it is clear that the claims of an auxiliary request filed with the statement of grounds of appeal overcome all the objections raised in the decision under appeal (see Case Law of the Boards of Appeal, 5th edition 2006, VII.D.7.5.2(d)). [1.5.1] In the present case, however, there are no such exceptional circumstances as far as the main request is concerned. The wording of the amended claims according to the main request filed with the statement of grounds of appeal does not enable the board to immediately understand why the ED should have exercised its discretion under R 137(3) in a different manner. In particular, the additional feature is not concerned with re-introducing a feature (“a 7 pole, 2 zero, equiripple filter”) the removal of which had led the ED to refuse its consent. [1.5.2] The statement of grounds of appeal, in conjunction with the wording of the amended claims according to the auxiliary request filed with the statement of grounds of appeal, makes clear that the claims of the auxiliary request are an attempt to re-introduce the feature the removal of which had been indicated in the decision under appeal as a reason for not giving consent to the amendment. However, the appellant did not set out legal or 2665 | 3398
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factual reasons why the filing of these claims with the statement of grounds of appeal removed the deficiency of a lack of a set of admitted claims. Also, the board fails to see how the mere filing of these claims in separate appeal proceedings addressed the issue of the ED’s not having given consent to different claims in examination proceedings. Furthermore, the appellant did not set out reasons why the ED should have rectified its decision (A 109(1) EPC 1973) or why the board should set it aside. Moreover, the appellant did not argue, and there is no indication in the file, that the claims of the auxiliary request overcome objections under A 84 EPC 1973 which had been raised by the ED […]. [2] The admissibility of the appeal is a prerequisite for the examination and decision as to the allowability of the appeal (see A 110 and A 111 EPC 1973). If the board finds that that the appeal is inadmissible, examination and decision as to its allowability are not possible. Hence, in section [1] of this decision concerning the admissibility of the appeal, the board has considered the appellant’s arguments submitted after the time limit for filing the statement of grounds of appeal (see A 108) only to the extent that they may be relevant for the assessment of whether the statement of grounds of appeal suffices to render the present appeal admissible. In the present case this means that the board has examined whether the arguments presented in the letter dated 14 June 2010 and in the OPs have an impact on the board’s understanding of the statement of grounds of appeal or the decision under appeal. [2.1] In the letter dated 14 June 2010 the appellant submitted the argument that, at least implicitly, the reason for not admitting the set of claims submitted to the ED was lack of novelty or lack of inventive step of the subjectmatter claimed; but the appellant did not indicate any particular statement in the decision under appeal supporting that argument. The decision under appeal, however, discusses inventive step only in a hypothetical context of non-admitted claims in a paragraph headed “The following is not part of this decision”. [2.2] The appellant’s argument in the letter dated 14 June 2010 that, under A 125, it should be sufficient to explain the facts of the case since the board could be assumed to know the legal framework is not convincing, as the facts of the present case which led to the refusal of the application were not the facts given in the statement of grounds of appeal (see in particular points [1.3] and [1.4] above). The appeal is rejected as inadmissible. Although the applicant certainly was to blame for not having converged towards an acceptable set of claims in due time, I find this decision a little tough on the appellant. Perhaps the appeal would have been found admissible if the statement of grounds of appeal had not been silent on why the new claims should be accepted by the ED via interlocutory revision. All things considered, it seems more tricky to file an admissible appeal after a (justified) rejection following admissibility problems under R 137(3) than after a (justified) rejection for say lack of novelty, in particular when there are other issues (inventive step, clarity) under the surface of the contested decision. Should you wish to download the whole decision, just click here.
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T 985/07 – Claims Under Fire
K’s Law – The ebook
T 985/07 – Claims Under Fire 2 Nov 2010
*** Translated from the French *** Claim 1 of the main request read: Bullet-proof armoured laminated glazing comprising, on at least part of its periphery, one or more rigid protuberances, each of these belonging substantially to a plane parallel to the surface defined by the glazing or in line with this surface, and having a thickness enabling it to be at least partly introduced, temporarily or permanently, into the rebate in the window opening, characterised in that the said or at least one of the said protuberances consists of an insert (3), in particular metallic, positioned in each case partly inside the laminated structure constituting the glazing, in line with one or more adjacent sheets (2) constituting it made from glass or vitroceramic or plastics material.
The Board found it necessary to dwell on the interpretation of the wording of this claim: [4.1] The subject-matter of claim 1 concerns the structure of a bullet-proof armoured laminated glazing. The Board notes that the feature “bullet-proof armoured” which supposedly makes the structure of the glazing more specific is not defined, neither in the claim, nor in the description of the impugned patent. The Board also notes that that the expression “armoured” (blindé) has been interpreted by the Opposition Division (OD) on the basis of document D9 [i.e. Ullmanns Enzyklopädie der technischen Chemie, 4th edition, volume 8, Verlag Chemie GmbH, 1974, p. 331]. This document had been introduced by the OD, which considered that it reflected the general knowledge of the skilled person in this technical field. Moreover, this interpretation has not been contested by the opponents. The Board has no reason not to accept this interpretation. According to D9, laminated glazing is “armoured” if the glass structure comprises at least three sheets of glass the total thickness of which varies between 24 and 200 mm. Such a glazing necessarily offers a certain degree of
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antiballistic protection, which means that, in the absence of any definition of a bullet-proof armour in the patent the “armoured” laminated glazing of D9 implicitly comprises the “bullet-proof” feature. Finally the Board found the claim to lack novelty over document D15. It then considered the first auxiliary request where claim 1 had been amended so as to be directed to a use: Use of a bullet-proof armoured laminated glazing as a bullet-proof armoured glazing comprising, on at least part of its periphery, one or more rigid protuberances, each of these belonging substantially to a plane parallel to the surface defined by the glazing or in line with this surface, and having a thickness enabling it to be at least partly introduced, temporarily or permanently, into the rebate in the window opening, characterised in that the said or at least one of the said protuberances consists of an insert (3), in particular metallic, positioned in each case partly inside the laminated structure constituting the glazing, in line with one or more adjacent sheets (2) constituting it made from glass or vitroceramic or plastics material. The Board found this claim to lack clarity: [5.1] Claim 1 of the first auxiliary request concerns the use (utilisation) of a bullet-proof armoured laminated glazing such as defined in claim 1 of the main request as a bullet-proof armoured glazing. Thus the subjectmatter of this claim comprises the double use (double emploi) of the expression “bullet-proof armoured”: once for defining the glazing, because, as mentioned above (section [3.1] NB: should read [4.1]), this expression, in the absence of any definition in the patent, has to be interpreted as corresponding to the structural features of the glazing, and once for defining the purpose of the use of the glazing. However, the double use (double emploi) of this expression introduces a lack of clarity: either the repetition leads to something meaningless (non sens), if one is not aware of the fact that in its first use (emploi) the expression defines what is to be meant by armoured glazing, as opposed to the second use (emploi) intended to define the purpose of the use (utilisation), or it generates an antagonism between the structure and its use, both being described in the same way and, therefore, leads to an intrinsic ambiguity of the claimed subject-matter. Therefore, the Board has come to the conclusion that the subject-matter of claim 1 is not clear, and that the request is not patentable. [5.2] The Board does not share the opinion of the [patent proprietor] according to which claim 1 of this request should automatically be considered to be clear because it corresponds to a transformation of a product claim into a use claim on the basis of G 2/88. The Board would like to distinguish between the principle of amending a claim directed to a product so that it becomes a claim directed to the use of that product, which in view of G 2/88 [headnote 2] is not to be objected under A 123(3), and the other conditions of patentability which are not automatically satisfied by such a transformation. In the present case, as explained above, the amendment does not fulfil the requirements of clarity. The patent proprietor then tried to overcome this objection by filing the second auxiliary request, claim 1 of which read: Use of a laminated glazing as a bullet-proof armoured glazing comprising, on at least part of its periphery, one or more rigid protuberances, each of these belonging substantially to a plane parallel to the surface defined by the glazing or in line with this surface, and having a thickness enabling it to be at least partly introduced, temporarily or permanently, into the rebate in the window opening, characterised in that the said or at least one of the said protuberances consists of an insert (3), in particular metallic, positioned in each case partly inside the laminated structure constituting the glazing, in line with one or more adjacent sheets (2) constituting it made from glass or vitroceramic or plastics material. The Board is not satisfied, on another ground: [6] Claim 1 of auxiliary request 2 […] concerns the use of a glazing which is merely defined by being “laminated”, as a bullet-proof armoured glazing. This claim follows from the transformation into a use claim of a product claim concerning a “laminated glazing”, and not a “bullet-proof armoured laminated glazing”, as claimed in the patent as granted. It should be noted that according to D9 (see point [4.1] above) the expression “bullet-proof armoured” implies specific structural features which a glazing that is defined as being “laminated” does not necessarily have. It follows that the amendment of the definition of the glazing as being “bullet-proof laminated” to “laminated” is a generalisation of the claimed subject-matter and inadmissible under A 123(3). As the subject-matter of claim 1 does not comply with the requirements of A 123(3) subsidiary request 2 also has to be rejected.
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T 985/07 – Claims Under Fire
K’s Law – The ebook
There being no escape between the Scylla of clarity and the Charybdis of A 123(3), the patent proprietor finally came back to a product claim. Claim 1 of the third auxiliary request was very similar to Claim 1 of the main request, only the alternative “or plastics” having been deleted. The Board found this request to be allowable. Should you wish to read the whole decision (in French), you can download it here.
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T 672/07 – Trouble With A Date
K’s Law – The ebook
T 672/07 – Trouble With A Date 1 Nov 2010
A recurrent problem the Boards have to deal with is related to oral presentations given at conferences. Very often such conferences issue proceedings containing the text of the presentations. Is it possible to consider that the content of this text was disclosed at the date of the conference? There has been some disagreement between the instances of the EPO on that topic. The Guidelines for examination in the EPO (D-V 3.3) contain the statement that “if information is made available by means of a written description and use or by means of a written and oral description, but only the use or the oral description is made available before the relevant date, then in accordance with C-IV, 6.1, the subsequently published written description may be deemed to give a true account of that oral description or use, unless the proprietor of the patent can give good reason why this should not be the case. In this case, the opponent must adduce proof to the contrary in respect of the reasons given by the proprietor of the patent.” The Boards are not bound by the Guidelines and indeed seem not to follow this approach: T 153/88 [7.4] has held that “where a written disclosure is published which is based on an oral disclosure at a public conference held some years earlier, it cannot as a rule be assumed that the written disclosure is identical to the oral disclosure, unless there is convincing evidence to the contrary (cf. T 77/94 [2.2]). T 348/94 [3.2] confirms: “Unless there is proof to the contrary, a written publication which is supposed to be based on a paper previously read at a public meeting held some time earlier, cannot be assumed to be identical to what was orally disclosed but may contain additional information.” See also the more recent decisions T 759/03 [21] and T 729/05 [2.5]. The present decision deals with an even more complex situation where the date of the written publication of the presentation was unclear, too. [2.1] The [patent proprietor] requested that document D13 be not admitted into the proceedings as it had not been proven that it was publically (sic) available before the priority date of the patent in suit. However, D13 had been already filed by opponent 02 […] with its notice of opposition. Although the proprietor had noted that D13 did not have any date, this issue was not dealt with in the decision under appeal. In fact, there is merely a passing reference to D13 in paragraph 2.3 of the opposition division’s decision when dealing with novelty of the claimed subject-matter. Thus, it appears that D13 is in the proceedings and its admissibility cannot be questioned. Rather the relevant question is whether D13 has to be considered as state of the art in accordance with A 54. [2.2] Document D13 is the publication of the work presented by R.N. Campbell and A.M. Chatterjee at a conference held in Houston, Texas, between 26 February and 1 March 1995. The copy filed by the [opponent] carries on the front page […] a handwritten amendment with the words “(February 1995)”. Furthermore, the bibliographic data provided on a separate sheet, inter alia contains the line “Accession Number- 576289 Update- 199604”, which appears to indicate that the copy filed by the [opponent] relates to an updated version dated April (04) 1996. This date is after the priority date of the patent in suit (26 January 1996). In view of this situation, the board had asked the [opponent] to provide evidence for the actual publication date of D13. In its reply the [opponent] had stated that no original copy of D13 was available to it, but filed documents D15 to D17 as indirect evidence that D13 had been published before 1996. As is apparent from the cover page of D13 itself, the authors of D13 presented their work at the conference in Houston for the Shell Company. Since the propylene business of Shell was sold to Union Carbide in November 1995 (as demonstrated by D15), and thereafter the authors of D13 filed patent applications in the name of Union Carbide (D16, D17), the [opponent] concluded that D13 must have been published before the priority date of the patent in suit. However, the board does not find this line of argument conclusive. The fact that the authors of D13 had been working for Shell at the time they presented their work to the conference is no proof of the actual publication date of document D13 itself. For example, D13 might have been published after the acquisition of Shell’s polypropylene business by Union Carbide. Perhaps even April 1996 (appearing in bibliographic data provided with D13) is the correct publication date of D13, which is after the priority date of the patent in suit. Thus, D15 D17 cannot demonstrate the actual publication date of D13. 2670 | 3398
T 672/07 – Trouble With A Date
K’s Law – The ebook
The board can also not accept the argument of the [opponent] advanced during the oral proceedings that the content of D13 was orally presented in the conference. There is simply no evidence on file for the [opponent’s] assertion that the content of oral presentation at the conference was identical with the content of D13. It follows from the above that the publication date of D13 is not known and, consequently, D13 cannot be considered as state of the art in accordance with A 54(2). If you wish to download this decision, just click here.
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T 1478/07 – Three Words That Matter
K’s Law – The ebook
T 1478/07 – Three Words That Matter 30 Okt 2010
This decision also deals with objections under A 100(c) against the main request and several auxiliary requests. [6.1] In claim 1 of each of these requests, the coating composition is prepared by a process comprising at least two steps: the first ethylene polymer having a value of melt flow rate MFR12 comprised between 50 g/10min and 2000 g/10min is prepared, the second ethylene polymer having an MFR22 value lower than MFR12 is prepared. Moreover, in claims 1 of these requests, it is specified that the process of making the multimodal polymer contains at least two steps which can be performed in any order (emphasis added by the board). This combination of characteristics was also present in claim 1 as granted. [6.2] First, the melt flow rate MFR12 of the first ethylene polymer between 50g/10min and 2000g/10min, which is the polymer with low molecular weight since its MFR is higher than the MFR of the second ethylene polymer, is explicitly mentioned in the application as originally filed. However, this MFR for the first ethylene polymer is mentioned in conjunction with the condition that the said first ethylene polymer is made in the first step. The application states: “However, it is preferential that in said first step a hydrogen amount is used, leading to a melt flow rate MFR12 of said first ethylene polymer of from 50 g/10min to 2000 g/10min, most preferentially from 100g/10min to 1000g/10min, provided that said first step is performed before said second step.” […]. [The patent proprietor] acknowledged that the disclosure of this feature was such that the first step is performed before the second step […]. [6.3] The question is whether the skilled person with his common general knowledge would have derived directly and unambiguously from the content of the application as filed that the steps of preparation of the ethylene polymers can be performed “in any order”, namely that the preparation of the first ethylene polymers having an MFR between 50g/10min and 2000g/10min can be performed in the second step. [6.4] The specification makes it clear that the preferred embodiment is to prepare the low molecular weight component first […]. The general principle is however that the steps can be performed in any order […]. It is also stated that when feeding the first ethylene polymer into the mixing step, the melt flow ratio MFR12 of the first ethylene polymer is preferentially from 50 to 2000 g/10min. [The patent proprietor] argued that it is common general knowledge that the low molecular weight component can be produced in the first or the second step. Therefore, the disclosure of the melt flow rate MFR12 when the low molecular weight component is prepared in the first step automatically also applies to the embodiment in which the low molecular weight component is prepared in the second step. The melt flow rate is a property of the ethylene polymer itself and has nothing to do with the step sequence. Therefore, the skilled person will understand that the same preferred melt flow rate MFR12 of 50g/10min to 2000g/10min will apply if the low molecular weight component is prepared in the second step. [6.5] In assessing whether an amendment is objectionable or not under A 100(c), care should be taken not to confuse what is to be derived by a person skilled in the art from the content of a disclosure with what is to be derived directly and unambiguously by a person skilled in the art from the content of the same disclosure. The first notion is based on what is generically or conceptually disclosed, the second is based on what is disclosed without ambiguity. Thus, in the present case, if it might have been admitted using the first notion, that one of the obvious possibilities which can be derived from the passage […] which reads: “the preferred embodiment is to prepare the low molecular weight component first […]. The general principle is however that the steps can be performed in any order […]. It is also stated that when feeding the first ethylene polymer to the mixing step, the melt flow ratio MFR12 of the first ethylene polymer is preferentially from 50 to 2000 g/10min.” is that the first ethylene polymer having a value of melt flow rate MFR12 comprised between 50 g/10min and 2000 g/10min (ethylene polymer of lower molecular weight) is prepared in a second step, this not the sole 2672 | 3398
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possibility, because the application also states that when the first ethylene polymer has a value of melt flow rate MFR12 comprised between 50 g/10min and 2000 g/10min it must be prepared in the first step. This ambiguity (several possibilities) is an insuperable objection when assessing the allowability of an amendment. Should you wish to download the whole decision just click here.
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T 1478/07 – No Need To Hear
K’s Law – The ebook
T 1478/07 – No Need To Hear 29 Okt 2010
I owe the knowledge of this decision, which has not been published on the DG3 site yet, to a kind colleague. Among other things, the decision deals with the question what an Opposition Division (OD) has (or rather does not have) to do when introducing a new ground of opposition. [5.1] The patent in suit was opposed only on the basis of A 100(a) for lack of novelty and lack of inventive step. The opposition division introduced the ground of opposition based on A 100(c) during oral proceedings (OPs). [5.2] [The patent proprietor] disputed that this new ground of opposition had been properly introduced into the opposition proceedings, given that it had not been given the opportunity to argue as to whether this new ground of opposition was prima facie relevant. Decisions G 9/91, G 10/91 and T 433/93 were cited in that respect. Failure to respect the right to be heard regarding that issue constituting a procedural violation (A 113(1)) which justified the refund of the appeal fee as well as the remittal of the case to the department of first instance. [5.3] In view of the content of the minutes of the OPs before the OD and the submissions of [the patent proprietor], it appears that the legal framework of the admissibility of a new ground of opposition was discussed […]. After adjournment of the OPs, this new ground was admitted by the OD […]. [5.4] It cannot be inferred either from the content of decision G 9/91 (or G 10/91) or from decision T 433/93 […] that in order to meet the requirements of A 113(1), the OD must, before discussing the substantive reasons for the objection, give the parties the opportunity to express their views as to the prima facie relevance of the introduction of a new ground of opposition (A 114(1)). In that respect no procedural violation occurred. [5.5] The board may, however, assess whether the OD exercised its discretion to admit this new ground of opposition in an unreasonable way. In the board’s judgment, when an objection under A 100(c) is raised during OPs, one of the requirements justifying the introduction of this ground is that the contested amendment has no explicit basis in the application as originally filed. That is actually the case here since on the one hand the feature that the MFR12 value of the first ethylene polymer is from 50g/l0min to 2000g/l0min is only explicitly disclosed in the application as filed in connection with the additional features that i) an amount of chain transfer agent was used and ii) step 1 was performed first and on the other hand the feature that the melt flow rate MFR22 lower than the first MFR21 not disclosed. This is sufficient to raise a prima facie relevant objection because there are clear reasons to believe that such ground is relevant. This prima facie relevant objection can be reversed based on the arguments presented by the proprietor on the substance of the case. [5.6] It is concluded that the OD exercised its discretion in an appropriate manner when it decided to introduce the new ground of opposition based on A 100(c) and that no substantial procedural violation occurred. This ground of opposition is therefore de facto in the appeal proceedings. [5.7] [The patent proprietor] argued that an objection based on A 83 had been introduced during OPs. This also amounted to a procedural violation in accordance with A 113(1), since it had not been aware of the argument in support of this new ground and thus was not prepared to provide an appropriate reply. [5.8] The arguments of [the patent proprietor] are based on a misinterpretation of the decision at first instance. A 100(b) was not introduced by the OD. The fact that the OD checks whether an amended version of a set of claims as granted as far as the amendments are concerned meets the requirement of A 83 is in line with the requirement of A 101(3)(a). This does not mean that the objection under A 100(b) EPC has been introduced. Therefore, [the patent proprietor’s] request is no longer applicable. Should you wish to download the whole decision just click here.
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T 138/08 – Two Will Do
K’s Law – The ebook
T 138/08 – Two Will Do 28 Okt 2010
Imagine that you have filed an opposition and that the patent proprietor has made substantive observations, which the EPO has just transmitted to you for information. How much time do you have for reacting? I always presumed that unless there were particular reasons not to do so, the Opposition Division (OD) would wait for four months, the time you normally have to respond to a substantive notification. The present decision has now disabused me of this idea. [6] The appellant complains that he was not given sufficient time to reply to the observations of the patentee filed in response to the opposition. On the basis of the documents on file, the circumstances are the following: − During opposition proceedings the patentee filed observations with letter dated 25 July 2007, received by the EPO on 26 July 2007; − the letter was forwarded by the EPO for information to the opponent with communication of 6 August 2007 and received by him on 9 August 2007 […]; − the decision in opposition proceedings was signed on 1 November 2007, is dated 21 November 2007, was communicated to the opponent by fax on 19 November 2007, was sent to the opponent by post on 21 November 2007 and received on 27 November 2007. Starting from the earlier date on which the decision was taken (1 November 2007), the above means that the OD waited 2 months and 21 days from the opponent’s receipt of the observations of the patentee (9 August 2007) before it took its decision. The question is whether the opponent had sufficient time to comment or, more specifically, whether 2 months and 21 days represent a sufficient time to do so. The appellant referred to the Guidelines for examination in the EPO (December 2007) E-VIII 1.2 - to be applied by analogy - which stated that the length of the time period explicitly given for reply should be based in principle on the amount of work which is likely to be required to perform the operation in question. The uniform practice adopted by the Guidelines was as follows: − if simple acts are requested: two months; − for communications from the OD raising matters of substance: four months. The appellant argued that in this case four months should have been given, since the communication raised matters of substance. This view however cannot be shared. The communication of the observations of the patentee was made merely for information (see in the communication: “Please take note”). The OD did not raise any matter of substance in the communication. The opponent was free to decide whether to comment on it or to remain silent. Had he decided to remain silent no act would have been required; had he decided to react to the letter of the patentee, the simple act of sending a request for the time considered necessary for the reply would have sufficed. For that simple act a period of two months as indicated in the Guidelines is considered sufficient by the Board. The objection of the appellant that the communication of the OD raised matters of substance, as proved by the complexity of the reply of the appellant himself of 22 March 2010, is not convincing since the proof cannot consist in an action lying within the freedom sphere of the appellant. Accordingly, reimbursement of the appeal fee under R 103(1)(a) is not justified. Remittal to the first instance is justified only in order to maintain the patent on the basis of the version established with the present decision.
So in order to avoid trouble, it might be wise (i) to react quickly, or (ii) if this is not possible, to explicitly ask for time, and (iii) to request oral proceedings, if you have not already done so when filing the opposition. Should you wish to download the whole decision, just click here. 2675 | 3398
T 699/06 – A Bilocation Problem
K’s Law – The ebook
T 699/06 – A Bilocation Problem 27 Okt 2010
The present decision goes into some detail to explain why a request for postponement (well, as we shall see, the Board would not use this word) of oral proceedings (OPs) could (should) have been refused. [1] Article 15(2) RPBA provides as follows: “A change of date for OPs may exceptionally be allowed in the Board’s discretion following receipt of a written and reasoned request made as far as in advance of the appointed date as possible.” Some guidance is to be found in the Notice dated 16 July 2007 concerning OPs before the boards of appeal (“the Notice” - last published in OJ EPO, 1/2010, Supplement, pages 67-68, paragraphs 2.1 and 2.2) as to reasons for non-attendance at OPs by a party (not, it must be noted, non-attendance by a representative per se) which may or may not be accepted as sufficient to fix a new date. [2] It is to be noted that the official texts use the expressions “change of date” and “fix a new date” rather than “postponement”. In the Board’s view this is significant. Postponement of OPs to a later date necessarily has the consequence that the later date becomes unavailable for OPs in another appeal and thus all the appeals pending before the Board in which OPs may be necessary are, however minimally, postponed. This is unfair on those parties in other appeals who do not want postponements but who must thereby wait at least a little longer for OPs and for a decision. This effect on other parties to other appeals is a consideration the Board must take into account in exercising its discretion […]. It is also why the Board, if satisfied that a change of date is necessary, will usually consider first the possibility of bringing forward rather than postponing the OPs. [3] It is inherent in the discretionary nature of the decision whether or not to change a date for OPs that a request will not simply succeed just because the reasons for it fall within the examples of acceptable reasons in the Notice. It must be noted that those examples are given as “serious substantive reasons to request the change of date of OPs” ([…], emphasis added). It is significant that they are called “reasons to request the change of date” and not “reasons to allow the change of date”. That can only mean that those reasons, or other comparably serious substantive reasons, are required before a request will even be considered but that such reasons are not in themselves bound to or, according to the circumstances, even likely to result in a change of date. This is supported by case law which shows that one of the exemplified reasons (in that case, pre-booked holidays) may not in itself be sufficient: “...while holiday is a possible valid basis for a request, it is not necessarily a sufficient reason for postponement. All circumstances of the case and all the criteria referred to in the Notice have to be taken into account by the Board when exercising its discretion” (see T 1102/03 [2]). [4] The Notice also provides […] that, “Every request for fixing another date for OPs should contain a statement why another representative within the meaning of A 133(3) or A 134 cannot substitute the representative prevented from attending the OPs.” Therefore, when the reason for a request to fix another date is based on the non-attendance of a representative, there are two stages in the Board’s discretionary decision. First, it must decide whether the representative in question is prevented from attending. Second, if and when the Board is satisfied that the representative is prevented from attending, it must then consider whether another representative can substitute for the prevented representative. The [patent proprietor’s] requests to postpone the OPs [5] Applying these provisions to the present case, the Board had no difficulty in deciding that the [patent proprietor’s] requests, both as originally presented and in their renewed form, did not justify a change of date of OPs.
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K’s Law – The ebook
[6] The reason given for making the original request was that the representative was due to speak at a conference which ran from 12 to 14 April 2010. He did not then give the exact date on which he was due to speak, although it appeared from his later request that this was in fact 13 April 2010 (in fact, the day before the OPs). Such a commitment - to speak at a conference - is additional to the normal professional responsibilities of a representative. A representative who undertakes such a commitment does so in the knowledge that this will make him unavailable to his clients, and unavailable to appear at any OPs, on the date or dates in question. Therefore, as a reason for changing the date of OPs, it is a reason which by definition results from excessive work pressure excessive if only because it is a commitment which the representative was not obliged to undertake but which, having undertaken it, makes him unavailable. Excessive work pressure is specifically mentioned in the Notice as a non-acceptable reason […]. In view of the clear meaning of “reasons to request” in paragraph 2.1 of the Notice […], the examples of non-acceptable reasons in paragraph 2.2 are equally clearly examples of reasons which are unacceptable as reasons even to request a change of date. Accordingly, such reasons cannot attract a favourable exercise of the Board’s discretion. [7] In his renewed request for postponement of the OPs, the representative wrote, with reference to the Board’s communication of 19 January 2010 refusing his original request, that he was surprised that the reasons supporting his previous request were considered insufficient as work pressure reasons, and that he had not intended to convey that his reasons were of a work pressure nature but simply that he could not “be in two places at one time”. The Board entirely accepts that he did not intend to convey that his original reason (there was only one reason the conference speaking engagement) was a work pressure reason. However, he should not have been surprised that the Board should view that reason as a work pressure reason. As his later letter put it, he could not “be in two places at one time”: when that situation arises for work-related reasons, then it is quite clearly “excessive work pressure”. [8] The Board considers it likely that what the representative really meant was that he was surprised that a conference speaking commitment was not regarded as an adequate reason. As indicated above […], the Board cannot see how such a commitment can ever in itself be an acceptable reason for a change of date. Several requests for change of date are based on such engagements - speaking at conferences, lecture tours, attending trade shows, even staffing stands at exhibitions. Such marketing activities are now commonplace activities for professionals such as lawyers, patent attorneys and others who act as representatives and are no doubt considered an important part of their business activities. However, the sheer frequency or importance to representatives of such activities does not make them any more acceptable as reasons to request a change of date. On the contrary, the more they are frequent and/or important, the more must those who undertake them ensure that they do not prevent attendance at OPs (if necessary, by a substitute […]). No responsible representative would deliberately delay his or her client’s case for a marketing opportunity. If a representative asked a client “Do you mind if I postpone your case while I market my firm’s services to others?” the answer would be obvious. The Board’s refusal to entertain such marketing commitments as reasons to request changes of OPs dates is merely the equivalent answer, not just for itself but also on behalf of other parties and the public […]. [9] The renewed request of the [patent proprietor’s] representative identified a new reason for requesting postponement of the OPs, namely that he had a pre-booked holiday from 9 to 16 April 2010. (Curiously, since his previous reason was that he would be attending a conference from 12 to 14 April 2010, this meant that for three days he would in fact, to use his own expression, be in two places at one time.) The Notice […] gives pre-booked holidays as an example of an acceptable reason to request a change of date. As already indicated […], that does not mean a change of date is to be allowed without more, but it does mean the request must then be considered in the light of all the circumstances. In the present case the Board assumed at this stage that the new reason could be acceptable and proceeded to the question of substitution. Substitution of another representative [10] In a case such as the present, where the putative non-attendance is that of a representative, one of those circumstances is the possibility of substitution by another representative - indeed it is a necessary second step in the Board’s consideration […]. When, regardless of other circumstances, it may be conclusive for the request, it becomes appropriate to consider it once the requesting party has demonstrated an acceptable reason for making the request.
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A key factor in the assessment of the substitution question is the time available between, on the one hand, the date of making the request and, on the other hand, the date appointed for the OPs. If the time between those two dates is on any objective view sufficient to allow a replacement representative to prepare adequately then, as regards this consideration, the Board cannot exercise its discretion in favour of a change of date. (Article 15(2) RPBA requires the request to be made “as far as in advance of the appointed date as possible”; thus, if the request has not been made promptly on receipt of the summons to OPs, the date to be taken for measuring the start of the time period available should clearly be the date when the request could and should have been made. Otherwise, those seeking to delay could circumvent the substitution question by simply waiting until the near the date of the OPs.) [11] In the present case, the need to consider the question of substitution did not arise on the request as first made although the Board did, in its communication of 19 January 2010 refusing that first request, state that, even if it had been satisfied that the [patent proprietor’s] representative was not prevented from attending, it was not satisfied that another representative could not substitute for him. In this respect the representative had submitted that his firm’s “Life Science team [were] all committed to attend” the conference at which he was to speak. Thus essentially the same work pressure reason was put forward for the inability of any other representative (at least within the same firm […]) to substitute for the current representative. The summons for OPs had been sent to the parties with the Board’s letter dated 15 December 2009, thus almost four months before the scheduled date of 14 April 2010 - which was also the last day of the conference. At the date of the communication, there still remained almost three months until the OPs which clearly allowed ample time either to change the date of the representative’s talk at the conference, or to find an alternative speaker, or for another representative to familiarise him- or herself with the case. Moreover, as mentioned above […], it must be incumbent on representatives who undertake marketing activities to ensure that their other duties can be dealt with. Thus to accept a conference speaking engagement without arranging for such duties as may arise to be covered by others must entail a risk. To send all those who might provide such cover to the same marketing event entails the yet higher risk of no-one being able to perform those duties at all. [12] As indicated above […], when the renewed request to change the date of OPs was made, the Board treated the representative’s pre-booked holiday as an acceptable reason for making the request and thus proceeded directly to the question of a substitute. In this respect, the representative argued that a party has the right to select a representative and, if he is unable to attend OPs, it is unreasonable to insist that he be replaced. The Board agrees entirely with the first statement and disagrees entirely with the second. A party does indeed have the right to be represented by the representative of its choice. However, that does not then give the selected representative the right to a postponement of OPs by reason of any other commitment he or she may have undertaken. If that was the case, paragraph 2.3 of the Notice would serve no purpose. There is no question of the Board, or anyone else, insisting on a replacement - if a representative has by his own choice made himself unavailable, the Board must exercise its discretion under Article 15(2) RPBA and take account of other factors as well as the selected representative’s convenience. To allow a change of date purely for such convenience would allow one party (indeed, one party’s representative) to make its own arrangements and then to dictate changes to others which would be inherently unfair. No one party can arrogate to itself, let alone one representative arrogate to him- or herself, the management of the Board’s proceedings. [13] It follows that the Board cannot envisage a combination of the following circumstances as being “exceptional” as required by Article 15(2) RPBA, namely: (a) the non-availability of a party’s representative (which, if for a non-acceptable reason such as a marketing event, is the end of the matter […] or, if for a satisfactory reason, is only a reason for making the request and still requires consideration of all the circumstances including a possible substitute […]); and (b) that party’s natural preference for that representative (which is the party’s right but which may not dictate a change of date […]); and (c) adequate time to instruct an alternative (adequate time being an objective question to be decided on the facts of each case […]). A request for postponement in such circumstances amounts (without more) to a request to meet the convenience of one person (the unavailable representative) to the possible prejudice of others. To allow such a request would thus be inherently unfair.
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K’s Law – The ebook
[14] As regards the [patent proprietor’s] representative’s additional submissions for non-substitution, the Board could not accept either the age of the patent and/or the advanced stage of the proceedings as reasons for nonsubstitution - on the contrary, both were self-evidently equally good (if not better) reasons for ensuring the appeal was disposed of without further delay. As for the submission that there was only one possible substitute in the representative’s firm (not, the Board notes, a “team” who were “all” unavailable as previously submitted) who was also unavailable because he would not only be speaking at the conference as well but also be manning an exhibition stand, the Board’s views expressed above […] apply with the same if not more force. If European representatives wish to speak at conferences (even with the approval of clients whose cases are thereby delayed), the work of the Boards of Appeal and the interests of their clients’ adversaries and the public should not be affected as a result. [15] The Board also notes that paragraph 2.3 of the Notice refers to “another representative within the meaning of A 133(3) or A 134”. That is quite clearly not limited to another representative from the same firm as the representative putatively prevented from attending OPs. The question which that paragraph of the Notice addresses is why another representative cannot substitute and not why one of the representative’s colleagues cannot substitute. The question asked is objective and calls for an objective answer; the particular circumstances of the representative’s firm, the availability of others within that firm, the possible inconvenience or cost to that firm or to the party in question are all irrelevant - these are either internal matters for the representative and his or her firm or at most matters which concern only them and their clients. The inquiry called for by paragraph 2.3 is posited entirely on the non-availability of one European representative or authorised employee and it requires only explanation as to why another European representative or authorised employee cannot take his or her place. The Board sees no scope for reading more into paragraph 2.3. Consideration of all the circumstances [16] The Board is obliged to consider requests to change the date of OPs in all the circumstances and not just in the light of the submissions supporting the request. Primarily, this means the board must consider the interests of others. In the immediate context of the present appeal, that means the [opponent]. Of course, if both or all parties to an appeal are agreed that OPs should be postponed, then the Board can in principle agree (see T 1102/03 [2.2]) subject to having notice adequate enough to allow the appointment of OPs in another appeal on the date thereby vacated, so as to avoid any delay to pending appeals. But, absent any such agreement, the Board has to assume that delay may prejudice other parties and respondents in particular since (unless also appellants) they did not choose to have appeal proceedings. There must be highly persuasive reasons to allow Appellants to delay proceedings they themselves began. The Board must also consider the interest of parties in other appeals whose cases will be delayed by a postponement […]. It must also consider the wider general public interest in the administration of justice, which can only be served by disposing of appeals as expeditiously as possible, and in having as soon as possible a final decision about the existence or extent of a monopoly right. [17] Since there was adequate time either for the [patent proprietor’s] representative to change his conference speaking arrangements or for the [patent proprietor] to instruct another representative, the Board was not satisfied that the arguments for a change of date of the OPs, either as originally or subsequently presented, should exceptionally outweigh the other interests it must consider. Accordingly, both requests for such a change had to be refused. However, since another pending appeal which could be expedited permitted an exchange of dates, the Board took that course. It must be observed such opportunities very seldom arise and are not to be relied on to solve representatives’ availability problems. This decision leaves a strange impression. The Board finally switched dates but discusses in length why this was a favour rather than a right. It may well be that the postponement (sorry, the change of date) was not justified, but I do not find the Board’s reasoning very convincing. In particular, the “reasons to request” argument (point [3]) and the qualification as “excessive work pressure” (paragraphs [6-7]) sound artificial. I would prefer the Board to bluntly refuse a postponement rather than beat around the bush with far-fetched ad hoc arguments (all the more as the latter then clutter up the case law :-)). Also, I find it weird to see a Board tell a representative that he better take care of his clients rather than doing his self-promotion in conferences. But there are some 2679 | 3398
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indications in the text which make me think that the representative had seriously irritated the Board, which might explain and excuse some of the stranger arguments. Should you wish to download the whole document, just click here
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T 331/08 – No More Lacuna
K’s Law – The ebook
T 331/08 – No More Lacuna 26 Okt 2010
The present decision deals with an appeal that had been filed via epoline at a time when this was not allowed. We have already seen this situation discussed in the case law, but there are some interesting complements in this decision. Applicable Law General [1.1] The decision of the examining division was dated 7 September 2007 and posted on 19 September 2007. Thus the last date on which a notice of appeal could be filed was two months and ten days after 19 September 2007 (R 78(2) EPC 1973). This is prior to the entry into force of the revised EPC (EPC 2000, entry into force 13 December 2007). Thus the applicable law is EPC 1973. NB: All articles and rules referred to hereafter correspond to the EPC 1973. Electronic Filing [1.2] The pertinent provisions are those set out in the Decision of the President of the European Patent Office dated 29 October 2002 (OJ EPO 2002, 543) and the related Notice from the EPO concerning the electronic filing of documents within the meaning of R 36 dated 3 December 2003 (OJ EPO 2003, 609). According to Art. 1 of the Notice of 3 December 2003 documents other than priority documents could be filed electronically in grant proceedings. It is however explicitly stated therein that “This possibility is not yet available in opposition and appeal proceedings; in such proceedings, therefore the electronic filing of documents is not admissible.” (De: “nicht zulässig”, Fr: “pas permis” (emphasis of the Notice). [2] According to R 36(2) all documents (other than the description, claims, drawing and abstract, i.e. those covered by R 27, R 29 and R 32-35) shall normally be typewritten or printed. R 36(5) provides that the President may nevertheless permit documents filed after filing of the European patent application to be transmitted to the EPO by other means of communication and to lay down conditions governing their use. [2.1] The Notice of December 2003 thus enacted provisions, as foreseen in R 36(5) for the filing of documents other than priority documents - during the grant proceedings by “other” means, namely electronic means. [2.2] Opposition and appeal proceedings were however explicitly excluded from these provisions. [2.3] Therefore the applicant employed a non-permitted means to file the notice of appeal. [2.4] Furthermore no confirmation of this electronically filed submission by other (permitted) means was provided. [3] This situation is in the Board’s view comparable with that forming the basis of T 514/05 […]. [3.1] This decision, which was taken during the period that the Notice of December 2003 was in force, after a detailed analysis, came to the conclusion that pursuant to R 36(5) an appeal filed by non-permitted means of communication, specifically via the epoline® system, could not have any legal effect, absent explicit permission of the President (T 514/05 [10]). [3.2] Further the payment of an appeal fee did not constitute constructive notice of appeal (T 514/05 [11], with reference to J 19/90). [3.3] Accordingly the consequence of the use of a non-permitted means for filing the notice of appeal was that no appeal had been filed. 2681 | 3398
T 331/08 – No More Lacuna
K’s Law – The ebook
[3.4] By the same logic, the notice of appeal in the case in suit is deemed not to have been filed. [3.5] This conclusion is analogous to the situation underlying T 971/05 […]. [3.5.1] In that case although a notice of appeal had been filed (by permitted means), the appeal fee was not paid and hence no appeal was in existence (T 971/05 [8]). [3.5.2] Specifically, this Board held in T 971/05 that according to A 108 for an appeal to come into an existence two prerequisites had to be met: − The valid filing of a notice of appeal and − Payment of the appeal fee. [3.5.3] The consequence of the failure to meet one of these conditions - in the case of T 971/05 payment of the appeal fee - was that there was no appeal in existence. [3.5.4] In the case in suit the failure to meet the other condition - valid filing of a notice of appeal - leads therefore to the same conclusion. Request for the Board to confirm that the appeal had nevertheless been filed [4] In its pleadings […] inter alia the applicant noted that electronic filing of appeals was now permitted and hence that the Board should, in the light of this deem the appeal to have been correctly filed. [4.1] This request of the applicant cannot be complied with since the Board does not have the power to do this. [4.2] As explained in […] T 514/05 [7] a Board of Appeal is not entitled to exercise discretionary power to consider whether the appeal, filed by epoline® might be deemed to have been filed since: − To do so would be tantamount to exercising a legislative power; − Such legislative power is however clearly delegated in R 36(5), i.e. that provision to which the Notice of 3 December 2003 relates, to another authority within the European Patent Organisation, namely the President; − Thus pursuant to A 23(3) the Board is precluded from examining whether this purported notice of appeal could be deemed to have been received, since such a procedure would be ultra vires; − It is immaterial that this means of communication is now permitted for the filing of appeals. At the time in question, i.e. 12 November 2007 this was not permitted, and it is the law and instructions in place at this time which have to be applied to this case. Aspect of “good faith” or “legitimate expectations” [5.1] It is true that a number of communications were sent by the office - either from the examining division or the Board relating to the purported appeal. [5.2] Such communications are however of merely administrative nature and the existence thereof does not prejudge substantive examination of the facts of the case by the Board (T 781/04 [2] and T 781/04 [28]). Furthermore parties cannot shift responsibility for complying with the provisions of the EPC to the EPO (T 991/04 [28]). [5.3] This Board is of course aware that the Board responsible for T 781/04 held it to be appropriate to exercise the principle of good faith and thus allowed restitutio in integrum, whilst in T 781/04 the Board held that the principle of good faith required that the Board deem the appeal to have been validly filed. However the then prevailing situation with respect to epoline® was different from that existing at the time of the case in suit. As noted in T 781/04 [10.1-3] and T 991/04 [31] there was - at the relevant time in those cases - no on-screen warning in epoline® that filing of appeals by electronic means was not permitted. Such a warning was however introduced subsequently in the light of a number of problems, as reported in T 781/04 [10.3], i.e. as a consequence of a “lacuna” in the system (see also T 991/04 [31]). [5.4] This consideration however does not apply in the present case since at the time the applicant submitted the “notice of appeal” the warnings the absence of which was referred to in T 781/04 and T 991/04 were in place both on the website and also on the electronic form to be filed with the submission. These warnings explicitly alerted the users of the system that this was not permitted for filing appeals.
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T 331/08 – No More Lacuna
K’s Law – The ebook
[5.5] Accordingly in view of the manifold steps taken by the EPO to ensure users would be aware of the restrictions placed on the use of the epoline® system, not only by means of the announcements in the OJ, of which it could be expected that a professional representative would be aware but also, as a further precaution, by means of warnings on the website, the Board can identify no justification for application of the principle of “good faith” or “legitimate expectations” to lead the Board to deem the “appeal”, filed by non-permitted means, nevertheless to have been filed, notwithstanding the fact that the Board does not have the competence to do so […]. On the contrary, as held in T 781/04 [10.3] and T 991/04 [28] it is the responsibility of the professional representative to ensure the relevant instructions of the Office are followed and that the appropriate means for making submissions is employed and this responsibility cannot be transferred to the EPO. [5.6] These considerations are not changed by the fact that in the intervening period electronic filing of appeals has become possible. As explained […] above, the relevant provisions are those in force at the relevant time, not those that came into force at a later time, or which had been in force at an earlier time. Request for restitutio in integrum [6.1] As explained above with regard in particular to T 971/05, since no valid appeal was filed within the time limit […] an appeal procedure was never initiated and consequently there are no rights to be re-established. [6.2] This notwithstanding the Board recalls that according to A 122(1) this provision is applicable to an applicant or proprietor who “in spite of all due care required by the circumstances having been taken” fails to observe a time limit (emphasis of the Board). [6.3] Although in a number of cases involving electronic filing of documents in the appeal proceedings e.g. that underlying the aforementioned T 781/04 the Board was prepared to grant restitutio in integrum, […] these findings relied on the observation that that at the relevant time there was a “lacuna” in the EPO system since the epoline® website contained no warning or reminder that electronic filing of appeals was not permitted (T 781/04 [10.1]). T 781/04 (and T 991/04) - both dating from the latter half of 2005 - note that the problem had in the meantime been addressed by introduction of a warning on the website. [6.4] However in the case in suit the applicant was made aware of the restrictions on the use of the epoline® system - over and above the announcements in the Official Journal: − By means of the warning on the website and − was also required as a prerequisite for making the submission to sign – electronically - a document which stated unequivocally that the submission was not in relation to an appeal […]. [6.5] Accordingly the evidence is that the applicant in electing to file a notice of appeal by non-permitted (i.e. electronic) means overlooked not only the information published in the official journal but also ignored two warnings, one of which was on the electronic document signed by the representative. [6.6] The Board is unable to consider this conduct, involving as it does a triple failure, to be evidence of the exercise of “all due care” in filing the appeal, and thus finds that the availability of the provisions of A 122(1) in respect of the filing of the notice of appeal is precluded. Should you wish to download the whole decision, just click here.
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T 945/09 – Doctors Are Talkative
K’s Law – The ebook
T 945/09 – Doctors Are Talkative 25 Okt 2010
The present decision deals with an interesting case of prior public use in the context of clinical studies. In order to come to a conclusion the Board had to consider the question of how scientific articles are elaborated and tackle the problem of who should bear the burden of proof. Finally the question of whether a patient is bound by an implicit confidentiality agreement turns out to be relevant. The opponent had pointed out that the patent (priority date : December 23, 1996) lacked novelty because of a prior public use reported in document D3, i.e. an article in a scientific journal. This article reported on the use of “taurolidine 2% as an antimicrobial lock solution for prevention of recurrent catheder-related bloodstream infections.” There was an indication in document D3 that the article had been received for publication on May 28, 1997 and was accepted for publication on November 18, 1997. The OD concluded that on the basis of the information reported in document D3 the use of 2% taurolidine solutions to fill catheters started before the priority date of the contested patent, in a time-frame which spanned July 1995 and October 1996, depending on whether the date when the article was submitted or finally published was taken into account. This use occurred before the priority date. However, the OD also concluded that all information concerning the use of taurolidine as catheter lock available to the acting medical team, to the patent proprietor (supplier of taurolidine) and to the patient was covered by an implicit obligation of confidentiality which stemmed from the specific circumstances of the case. In this situation the burden of proof was upon the opponent to establish that no implicit obligation of confidentiality existed, or that notwithstanding this obligation the invention was disclosed to the public. The opponent had not discharged this burden. The Board sees things in a different light: [3.1] In one of the alternative embodiments the claimed subject-matter of the patent in suit relates to − the use of taurolidine in the manufacture of a solution − for preventing infection and sepsis − in a delivery system for administration of a desired liquid material to a patient, − wherein said solution is employed to fill the system between each said administration − so as to act as an antimicrobial seal − serving to prevent said infection and sepsis. [3.2] Document D3 teaches − the use of taurolidine in the manufacture of a solution […] − for preventing infection and sepsis […] − in a delivery system for administration of a desired liquid material to a patient […], − wherein said solution is employed to fill the system between each said administration […] − serving to prevent said infection and sepsis […]. The person skilled in the art of total parenteral nutrition at the priority date of the patent in suit knows that the catheter lumen must be sealed during times when it is not used for administration of the nutrient, and refers to it as the lock-technique. This seal may be performed using heparin solution as is referred to in document D3 […]. Thus, the remaining feature − so as to act as an antimicrobial seal is also inevitably comprised in the teaching of document D3. Consequently, the teaching of document D3 in the form of the reported use of taurolidine solution as a lock represents all the features of claim 1 of the patent in suit.
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T 945/09 – Doctors Are Talkative
K’s Law – The ebook
[3.3] Concerning the question of when this teaching of taurolidine-lock was performed, and in particular when it began to be performed, there is prima facie the clear-cut normal case that a paper is ready before it is sent to a journal for publication and there is normally no need for substantial amendments after the date of receipt. First there is the record of a success, then the idea and realisation of publication follow. In the current case there is evidence for the particular date of receipt at the bottom of page 242 of document D3, left column: “Received for publication, May 28, 1997”. Since any decision to publish a paper inevitably must lie in the period before its receipt for publication, the authors of document D3 must have decided to publish their experience in the time before May 1997. Following the time frame proposed by the [patent proprietor], this would have been just shortly after they had removed the catheter and implemented systemic antibiotic treatment (ten months after March 1996, which was January 1997) - stripped of the experience of a further 12 months free of infection. According to these considerations, the board is satisfied that the starting date for the use of the taurolidine-lock can be set at 22 months before the date of receipt for publication, i.e. July 1995. Doubting this normal sequence of actions, under the circumstances of the current case as set out, requires tangible evidence and not just one example of differing experience in another case and statements based on several mere assumptions (see e.g. following point [4.2] of this decision). The maxim “reus in excipiendo fit actor” applies here. The burden is on the [patent proprietor] to show that the actual facts and their sequence in truth were different. [3.4] In document D3 it is pointed out that “Ten months before the last infection, the patient was instructed to instil 1.5 mL taurolidine 2% daily into his central line after finishing his HPN (home parenteral nutrition) infusion and has continued to do so 2 years to date” (parenthesis inserted by the board). Thus, the teaching according to claim 1 of the patent in suit was used by a patient while having “home parenteral nutrition” (HPN). Such a patient, aged around 30, after his long history of complications leading to multiple replacements of the catheter […] usually knows what is happening to him and he is interested in the nature of all actions intended to bring him relief. In addition, the “evaluation of the patient’s protocol of site care” mentioned in document D3 […] would not have been possible without exact explanation for instance of the purpose of the daily instillation of 1.5 mL of heparin solution. Consequently, it is also to be seen as a prerequisite that the intention connected with the heparin replacement by 1.5 mL of taurolidine solution […] was sufficiently explained to him. In addition, there is no remark in document D3 indicating anything to the contrary. Therefore, the board has to base its considerations and conclusions on the knowledge of the patient being clear and concise enough that he could take notice of the technique used after replacement of heparin-lock by taurolidine-lock, representing the teaching of claim 1 of the patent in suit. There was also no reason for him to treat this knowledge as a secret, because at that time the acting doctors simply tried to apply taurolidine of whatever provenance using a technique they derived freely and easily from the state of the art common to them at that time […]. Obviously, they never saw anything special about that treatment, and consequently there is no indication of confidentiality in document D3. [3.5] Accordingly, the board concludes that this teaching was performed beginning from July 1995 in the full knowledge of the patient without any obligation of confidentiality and thus was publicly available before the priority date of the patent in suit. [4] In these circumstances the arguments of the [patent proprietor] cannot lead to success. [4.1] To the extent that the [patent proprietor] calls for standards for a chain of evidence and arguments on the basis of the balance of probability, the board sees the argumentation of the appellant as being based on an indicative document, whereas the [patent proprietor] itself tries to establish a chain of evidence and arguments to cast doubt on a document which prima facie appears to be decisive. Thus, the required standards have a priori to be applied to the arguments of the [patent proprietor]. [4.2] The [patent proprietor] concludes from the age 29 mentioned at the beginning of document D3 and the following series of episodes of catheter-related bloodstream infections (CRBSIs) and line changes that the letter 2685 | 3398
T 945/09 – Doctors Are Talkative
K’s Law – The ebook
of authorisation dated 12 March 1996 (document D20b) is related to the same patient mentioned in this letter as “HP” at the age of 30. Since, as reported in documents D12 and D20a, it was the first shipment of taurolidine from the [patent proprietor] to the Canadian team after a long break, the [patent proprietor] draws the further conclusion that there were no reserves from the last shipment, and the beginning of the taurolidine treatment of the patient reported in D3 thus could not have started before this shipment of March 1996. Disclosure of document D3 was consistent with this view on the basis of a simple update before printing. But this chain of various indicia, put together from different documents that are not all known in their full context, together with the attempt to establish the identity of the patient through indirect conclusions, is not wellfounded enough to cast doubt on the straightforward starting date of taurolidine lock treatment of catheter-related bloodstream infections derived from the disclosure of document D3. In particular, the mere statement that there was an amendment of the text of document D3 is not sufficient to make such an event a reality. [4.3] The fact that the taurolidine-lock treatment at least at the beginning of the last twelve months (“New tunnelled subclavian” from table 1 of document D3) was accompanied by systemic therapy with vancomycin and was maybe in parallel at any time with taurolidine as an additive to the nutritional solution (Ninewell’s method) is irrelevant with respect to the clear intention of the Canadian team to interrupt the pattern of catheter-related bloodstream infections by use of the taurolidine-lock technique. The test was made using the taurolidine-lock and in full awareness of the problems of the patient with regard to repeated sepsis originating from the catheter and with the intention of fighting this problem by using this lock technique […]. Addition of systemic vancomycin occasionally during this episode merely underlines that the lock-technique per se was directed to fight the sepsis originating from the catheter and not systemic sepsis. Finally, document D3 even reports the authors as being convinced of the success of their use of antimicrobial taurolidine-lock with respect to infection being catheter-related […]. [4.4] Since the [patent proprietor] no longer maintains its argument that a real confidentiality agreement existed between itself as a supplier of taurolidine and the Canadian team as user, and since it merely affirms that confidentiality was inherent, only this inherency is to be assessed, in particular in relation to the decision of a technical board of appeal cited by the [patent proprietor] (T 1057/92): In the cited decision the acting doctor is held not to be an appropriate witness to state what information was public […]. In the current case, however, it is sufficient that the patient was aware of the treatment he received, and public prior use does not depend on the doctor being a witness. In addition, in the cited decision novelty was discussed with regard to whether a trace of another compound was present or absent (see point [5] of the decision), while in the current case the straightforward use of a compound as such was crucial for assessment of novelty. Moreover, the action in the Canadian hospital of using the taurolidine-lock was not typical of a clinical or even an experimental approach because it was dictated by the instant necessity to help a patient in a very desperate situation and thus had not been planned systematically as a scientific experiment. [4.5] Thus, the subject-matter of the sole request does not meet the requirements of A 54. Should
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to
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the
whole
decision,
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here.
Once more, great minds thought alike: the decision was reported almost simultaneously on Le blog du droit européen des brevets.
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W 4/09 – Nothing Special
K’s Law – The ebook
W 4/09 – Nothing Special 23 Okt 2010
I do not resist the temptation to report what might well be the last W decision to be published. Under the EPC 2000, PCT protests are no longer entrusted to the Boards of appeal, but apparently there still were some residual files awaiting treatment. (It should be noted, however, that the decision, although published recently, was taken on July 1, 2009 already, by a Board chaired by Ms. Kinkeldey.) The decision concerns the international application published as WO 2008/121132 and having the title “Gene expression profiling for identification, monitoring and treatment of prostate cancer”. Independent claim 1 read as follows: “1. A method for evaluating the presence of prostate cancer in a subject based on a sample from the subject, the sample providing a source of RNAs, comprising: a) determining a quantitative measure of the amount of at least one constituent of any constituent of any one table selected from the group consisting of Tables 1, 2, 3, and 4 as a distinct RNA constituent in the subject sample, wherein such measure is obtained under measurement conditions that are substantially repeatable and the constituent is selected so that measurement of the constituent distinguishes between a normal subject and a prostate cancer-diagnosed subject in a reference population with at least 75% accuracy; and b) comparing the quantitative measure of the constituent in the subject sample to a reference value.” There were four more independent claims and 18 dependent claims. All the independent claims refer to the Tables 1 to 4, each of which contains dozens of genes. The EPO acting as ISA informed the applicant in an invitation under Article 17(3)(a) PCT and Rule 40.1) PCT that the application did not comply with the requirement of unity of invention (Rule 13.1 PCT) and invited the applicant to pay within a time limit of one month 290 (!) additional search fees. The applicant paid one additional search fee under protest. [6] According to Rule 13.3 PCT the determination of whether a group of inventions is so linked as to form a single inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. […] [9] The board agrees to the ISA’s finding in the invitation to pay additional fees that the use of “constituents” or marker genes that are differentially expressed in healthy subjects and in subjects suffering from prostate cancer was known in the state of the art. Indeed, document D1 discloses methods and compositions for gene expression profiling of prostate cancer marker genes based on quantitative RT—PCR, suitable for assessment of the presence of prostate cancer, as well as prognosis, progression and recurrence following therapy […]. The document particularly discloses e.g. ADAMTS1, EGR1, IGFBP3, JUN, MCAM and NRAS as marker genes, suitable for such expression profiling […]. Similarly, document D2 discloses expression profiling of ca. 26.000 genes (amongst them Muc1), allowing subtyping of prostate cancer, progression prognosis and recurrence prediction […]. Also document D3 discloses expression profiling of 12.625 genes, including FOS (table 1), allowing the prediction or recurrence of prostate cancer with 90% and 75% accurancy (sic), based on a so-called “gene expression—based recurrence predictor algorithm” […]. Document D5 discloses profiling of prostate cancer gene expression (291 genes) by quantitative real—time RT—PCR and reveals 46 genes which are differentially expressed in prostate cancer, and four which are especially suitable for assessment of progression and recurrency […].
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W 4/09 – Nothing Special
K’s Law – The ebook
Similarly, document D6 discloses gene expression profiling and the identification of 277 genes which are differentially expressed between prostate cancer and normal tissue, as measured by quantitative RT—PCR. This allowed prognosis and recurrence prediction […]. [10] In view of this prior art, the technical problem underlying the two searched inventions was the provision of alternatives to the known “constituents” or marker genes that are differentially expressed in healthy subjects and in subjects suffering from prostate cancer. As solutions to this problem the first searched invention provides the ABCC1 gene and the second searched invention provides the CDH1 gene. [11] The board cannot recognise structural characteristics or effects common to the two genes provided according to the searched group of inventions common to all claims which go beyond that they are differentially expressed in healthy subjects and in subjects suffering from prostate cancer and could hence represent “special technical features” within the meaning of Rules 13.2 and 13.3 PCT. Therefore the board must conclude that the solutions to the above technical problem as provided by the two searched inventions do not share a technical relationship involving one or more of the same or corresponding special technical features in the sense of Rule 13.2 PCT a posteriori. [12] The above analysis of prior art cited in the partial search report provided by the ISA, thus establishes that the technical relationship as defined above between the two searched inventions does not involve “special technical features” and can therefore not provide unity of invention in accordance with Rule 13.2 PCT. [13] The applicant has argued that the ISA had failed to search the invention as defined in the claims and specification and that the restriction of the primary invention to a single gene was improper. [14] The board notes however, that, as can be taken from the wording of independent claims 1 to 4, the claimed methods concern “determining a quantitative measure of the amount of at least one constituent of any constituent (of any one table selected from the group consisting) of Tables 1, 2, 3, and 4 as a distinct RNA constituent” (claim 1) or similarly “determining a quantitative measure of the amount of at least one constituent of any constituent of Tables 1, 2, 3, and 4 as a distinct RNA constituent” or similarly “at least 1 constituent from Tables 1, 2, 3, and 4 (claims 2 to 4) (emphasis added by the board). The kit of claim 23 is stated to be “comprising at least one reagent for the detection or quantification of any constituent measured according to any one of claims 1 to 22”. The board therefore also concurs with the ISA that both the identified invention relating to gene ABCC1 and the invention defined by the applicant with respect to the CDH1 gene […] are subjectmatter of the claimed invention. [15] In addition the board notes that the wordings of the claims do not mention statistical methods (e.g. stepwise logistic regression analysis) to analyse the expression levels of genes that had been implicated in ovarian cancer in a sample isolated from a subject. Nor do the claims commonly refer to a cut off of 75% classification accuracy for selecting gene models capable of distinguishing between the two subject groups or gene models disclosed in tables 1A-4A of the application as published which recites all of the possible one- and two-gene combinations (i.e. gene models) for the genes shown in tables 1 to 4, capable of distinguishing between healthy, normal subjects and prostate cancer subjects with at least 75% classification accuracy using the claimed methods. Only for this reason therefore the further arguments of the applicants that the search should not have been restricted to one gene must fail. [16] As a consequence of the above considerations the two groups of inventions searched by the ISA are not so linked as to form a single inventive concept. Consequently, the application is considered not to comply with the requirements of unity of invention under Rule 13.1 PCT, and the invitation to pay additional fees with respect to the invention identified in relation to the DLC1 gene was justified. The protest under Rule 40.2(c) PCT is dismissed. Should you wish to download the whole decision, just click here.
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T 1491/07 – Not Quite Fresh
K’s Law – The ebook
T 1491/07 – Not Quite Fresh 22 Okt 2010
The present decision deals with the appeal of the opponent after the Opposition Division (OD) had maintained the opposed patent in amended form. The opposition had been filed on the ground of lack of novelty and inventive step. During the oral proceedings (OPs) before the OD the opponent had withdrawn the objection of lack of novelty against the set of claims that the OD then found to be patentable. The decision contained a short statement indicating that the OD found the request to be novel. During the written phase of the appeal proceedings, the opponent argued that the claims as maintained were lacking novelty over late filed document D4. The patent proprietor pointed out that the opponent had withdrawn this ground and that, as a consequence, the ground of lack of novelty had to be considered as a fresh ground that could only be introduced with the patent proprietor’s agreement. The Board does not think so, and makes us delve into some good old case law. *** Translation from the French *** [1.1] The Board considers the appeal to be admissible and the [patent proprietor’s] arguments to be unfounded, for the following reasons: [1.1.1] In the present case the ground of opposition based on a lack of novelty initially was part of the notice of opposition. During the OPs before the OD the [opponent] has made a declaration according to which it did not maintain this ground […]. [1.1.2] According to decision T 274/95 […] a ground of opposition which is substantiated in the notice of opposition but which is subsequently not maintained before the OD, if sought to be re-introduced during appeal proceedings is not a “fresh ground of opposition” within the meaning of opinion G 10/91, and may consequently be re-introduced into the appeal proceedings without the agreement of the patent proprietor, in the exercise of the Board of Appeal's discretion. In the case underlying this decision the ground of opposition based on an inadmissible extension (A 100(c)) had been substantiated in the notice of opposition but during the OPs before the OD the opponent declared that it did not maintain this ground. The fact that the OD had not dealt with (abordé) this ground in its decision had no impact on the above finding. [1.1.3] According to decision T 877/01 the Board has examined the ground of opposition – based on an inadmissible extension (A 100(c)) - of its own motion. This ground of opposition had been substantiated in the notice of opposition but during the OPs before the OD the opponent has declared that it would not maintain this ground. In its decision the Board referred to opinion G 10/91 and decisions T 274/95 and T 520/01 and found the re-introduction of this ground during the appeal proceedings to comply with these three references - as a consequence, the re-introduction of the ground into the proceedings can be authorised without the agreement of the patent proprietor – even if the opponent has not introduced it in its statement of grounds of appeal. The present Board is of the opinion that there is no reason to deviate from this case law in the present case. Consequently, the ground of lack of novelty does not constitute a fresh ground of opposition within the meaning of opinion G 10/91. [1.1.4] Decision T 520/01, which was cited by the [patent proprietor], concerns a case that differs from the present case. The ground of opposition (A 100(b)) had been substantiated in the notice of opposition and was not maintained by the sole opponent, who had made a corresponding declaration during the OPs before the OD, but the OD had not dealt with (abordé) this ground in its decision, and consequently the Board – following opinion G 10/91 – had considered that the re-introduction of said ground during the appeal proceedings constituted “a fresh ground of opposition” within the meaning of G 10/91, which, as a consequence, could only be admitted with the agreement of the patent proprietor. [1.1.5] However, in the present case, the OD had dealt with the ground of lack of novelty in the contested decision […]. 2689 | 3398
T 1491/07 – Not Quite Fresh
K’s Law – The ebook
Hmm ... My understanding from all this is that the patent proprietor cannot hinder the Board from raising anew a ground that had been withdrawn if the OD has expressed its opinion on that ground in its decision. All decisions cited above appear to agree on this conclusion, which applies in the present case. The situation is not so clear when the OD has not made any statement on that ground. T 274/95 does not require such a statement (it ignores the question), whereas T 520/01 sees the need for such a statement. I found it interesting to check what T 520/01 had to say on T 274/95: “[1.9] In Decision T 274/95 the circumstances may seem similar to those of the present case. The Board admitted the ground into the appeal proceedings on the basis that the ground had been fully argued pursuant to R 55(c) and that the opinion G 10/91 was concerned with grounds that had not been substantiated in accordance with R 55(c). As set out in point [11(c)] of their decision, the Board considered that the ground was not sufficiently relevant to prejudice the maintenance of the patent which would justify rejection of the ground as inadmissible. In view of this, and the fact that the ground was considered to have “limited extent”, the Board decided to admit the ground and then to reject the ground for substantive reasons. No remittal was necessary and the proceedings were not delayed. In this result T 274/95 differs from the present case.” Also, T 877/01 [4] has a statement on both T 274/95 and T 520/01 (my translation from the German): “… T 520/01 linked the question of whether in such a case the ground of opposition can be taken up afresh (wiederaufgenommen) in the appeal proceedings without the agreement of the patent proprietor, to the additional requirement that the OD has made statements on (Stellung genommen) the ground of opposition in the contested decision. However, in the present case the contested decision […] comprises such a statement, so that even according to T 520/01 there is no objection to a re-introduction of the ground of opposition under consideration. Moreover, it is irrelevant whether a ground of opposition that has been taken up afresh by the Board had been mentioned in the statement of grounds of appeal or not, because even here the principle that the Office has to examine of its own motion applies: the EPO is not limited to facts, evidence and arguments of the parties (A 114(1)). Decision T 274/95, which has been cited by the [patent proprietor] does not say otherwise. In this case the Board found that it could examine and decide on a ground of opposition, which was not new, without the agreement of the patent proprietor. There were no other requirements. In particular, the question of whether the opponent or the Board takes up the ground afresh does not play any role in case T 274/95.” If you need more of this stuff, have a look at the Case Law Book, VII D 3.2.3 c) ii) (page 793 et seq. in the English version). Should you wish to download the whole decision (in French), just click here.
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T 641/07 – Surviving In The Jungle Of Standards
K’s Law – The ebook
T 641/07 – Surviving In The Jungle Of Standards 21 Okt 2010
Claim 1 as granted read: Use of organic fibres having a melting point smaller than 300°C, an average length 1 greater than 1 mm and a diameter Ø not exceeding 200 μm, in an ultrahigh-performance concrete in order to improve the fire resistance of the concrete, the amount of organic fibres being such that their volume ranges between 0.1 and 3% of the volume of the concrete after curing and the concrete having a characteristic 28-day compressive strength of at least 120 MPa, a characteristic flexural strength of at least 20 MPa and a spread value in the unhardened state of at least 150 mm, these values being given for a concrete stored and maintained at 20°C, said concrete consisting of a hardened cementitious matrix wherein metal fibres are dispersed, which is obtained by mixing, with water, a composition which comprises, apart from the fibres: (a) cement; (b) aggregate particles having a particle size D90 not exceeding 10 mm; (c) pozzolanic-reaction particles having an elementary size ranging between 0.1 and 100 μm; (d) at least one dispersing agent; and meeting the following conditions: (1) the percentage in weight of water based on the combined weight of the cement (a) and of the particles (c) lies within the 8-24% range; (2) the metal fibres have an average length l1 of at least 2 mm and an l1/Ø1 ratio of at least 20, Ø1 being the diameter of the fibres; (3) the ratio, V1/V, of the volume V1 of the metal fibres to the volume V of the organic fibres is greater than 1 and the ratio, l1/l, of the length of the metal fibres to the length of the organic fibres is greater than 1; (4) the ratio R of the average length l1 of the metal fibres to the size D90 of the aggregate particles is at least 3; (5) the amount of metal fibres is such that their volume is less than 4% of the volume of the concrete after curing. The request based on this claim was rejected by the Opposition Division which considered that the measurement of the spread value in the unhardened state was not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The patent proprietor filed an appeal against the revocation of the patent. The Board first establishes that the skilled person reading the patent specification is enabled to reproduce the claimed invention. It then goes on:
*** Translated from the French *** [2.1] According to the case law of the Boards of appeal, when the definition of an invention refers to one or more parameters – such as here : the 28-day compressive strength, the flexural strength and the spread value in the unhardened state – the skilled person has to be able, not only to carry out the invention over all its claimed extent, but also to check whether said parameters are complied with when the invention is carried out (au cours de son exécution). [2.2] Considering the two parameters that apply to the concrete after hardening, i.e. the compressive strength and the flexural strength, it has not been contested that the skilled person can check these values when the invention is carried out. In view of the fact that, moreover, the patent specification […] describes the method allowing to determine the numerical values of these parameters in a way that is presumed to be complete, the Board does not see any reason to doubt their validity. [2.3] As far as the third and last parameter is concerned, the [opponent] has not denied that a concrete having a spread value in the unhardened state as claimed – i.e. of at least 150 mm – can be prepared. However, it firmly contested that the skilled person is enabled to check the value in the light of the pieces of information contained in the patent specification. 2691 | 3398
T 641/07 – Surviving In The Jungle Of Standards
K’s Law – The ebook
[2.4] The Board notes that considering the checking of this parameter, the sole information contained in the patent specification is limited to the indication that “the spread value is measured by the shock table technique (20 blows) according to the standards ASTM C320, ISO 2768-1, EN 459-2” (page 8, lines 37 and 38). [2.5] Considering this sole indication, the [opponent] has pointed out that the ASTM C 320 standard does not correspond to any listed standard, that the ISO-2768 standard did not concern concretes but tolerances for linear and angular dimensions without individual tolerance indications, and that the EN 459-2 standard concerned measurement methods for building limes. Consequently, none of those standards described a method for measuring the spread value in the unhardened state of a fresh concrete using the shock table technique (20 blows). [2.6] Notwithstanding the fact that none of the cited standards explicitly refers to a measurement of said spread value, the Board notes that the relevant question is not whether, when taken as such, the information provided in lines 37 and 38 of page 8 of the patent allows the skilled person to check said value, but whether this information, when associated with the global content of the patent specification, allows him to check [the value]. [2.7] When answering this question, it first has to be said that the skilled is the concrete specialist and it is clear that he is aware of the standards that apply to the domain under consideration. This is why – in agreement with decisions T 171/84, T 226/85 and T 203/83 (sic), which state that the skilled person is able to recognise that there is an error in the specification and rectify it using his knowledge – the Board has no doubt to conclude in the present, case where the error is simply due to the inversion of two figures, that the skilled person is able to identify without any difficulty the error of transcription in the reference to standard “ASTM C 320” and rectify it to read “ASTM C230”, without any undue effort being needed for this rectification. [2.8] The [opponent] has pointed out that regardless of the above mentioned error in the reference to standard “ASTM C320”, the skilled person would nevertheless have been dissuaded from using “corrected” standard ASTM C 230 because this standard (see document D12) does not describe the measurement of the spread value in the unhardened state of fresh concrete by the shock table technique (20 blows) but rather provides a “flow table” allowing to evaluate the consistency of mortars based on hydraulic cements. The [opponent] added that the terms “flow” and “spread” and “mortar” and “concrete”, respectively, were not synonyms and that D12 does not describe 12 blows, as in the patent, but 25 drops. The Board cannot follow these arguments because the opposed patent describes that the ultra high performance concretes “conventionally have a spread value of at least 150 mm, […] the spread value being measured by the shock table technique, a standardized technique used in general for mortars” (emphasis by the Board). Thus the skilled person reading the patent specification would receive the information that a technique belonging to the domain or mortars – and not concretes – is to be used for determining the spread value under consideration. As far as the terms “flow” and “spread” are concerned, it is true that they are not interchangeable in the absolute. However, as the ASTM C230 standard aims at measuring the consistency of mortars and as the term “spread” is used in the same context for concretes in the patent, the skilled person would easily recognize the term “flow” to be a synonym for “spread”. The fact that the patent indicates a number of blows that differs with respect to the ASTM C230 standard does not make it incompatible with the latter, because the indication of a number of blows that differs from the number given in said standard makes it abundantly clear that the standard is not to be followed literally but has to be carried out in a different way, in particular by applying a number of blows that is different from the number given in the standard. Anyhow, as explained hereafter (paragraph [3.2]), if the skilled person had any doubt as to how many blows were to be applied, he would only have to repeat one of the examples of the patent and to check whether the spread value obtained corresponds to 20 blows or a different number of blows. [2.9] The [opponent] has also pointed out that the skilled person reading the patent specification would also be dissuaded from using the other standard cited, i.e. standard EN 459-2, because it concerns building limes and does not describe how a shock table (20 blows) is to be used. It rather describes how to use a jolting flow table (15 blows) in order to measure the diameter of flow of a lime mortar. The Board does not share this opinion. It cannot be denied that that the shock table measuring technique is different from the jolting table technique – as can be seen from the existence of a specific standard for measuring the spread of fresh concrete by the shock table technique, i.e. standard EN 12350-5 (D5) – but it is clear for the skilled person that the latter standard is not used in the patent because it requires a truncated cone diameter that is much greater (200 mm) than the spread values illustrated by the examples (at least 150 mm). 2692 | 3398
T 641/07 – Surviving In The Jungle Of Standards
K’s Law – The ebook
The Board is of the opinion that the reader of the opposed patent would not be dissuaded from consulting standard EN 459-2, for the same reasons as those mentioned above under point [2.8], and more particularly because the patent mentions that “the spread measurement uses a technique related to mortars” […] Yet it is a mortar that is used in the “flow” value measurement according to EN 459-2. […] [2.10] Based on these arguments, the Board comes to the conclusion that the work to be supplied by the skilled person in order to determine that it is the devices for measuring the flow diameter of mortars disclosed in the standards ASTM C230 and EN 459-2 which are used for measuring concrete spread values according to the impugned patent, does not amount to an undue burden. As far as standard ISO 2768-1 is concerned, it (as well as standard ASTM C230) being cited in standard EN 459-2 […], the skilled person would have easily recognized that its citation in the patent was related to measurement tolerances for the devices used in the two other standards and not to measurements of the spread values of the concrete. [2.11] The experimental report D19 filed together with the notice of appeal summarizes the spread value measurements carried out on a concrete that is close to the concrete of example 4 of the patent, using both the flow table described in standard ASTM C230 and the flow table described in standard EN 459-2. The [opponent] has contested the results of D19 by pointing out that there were major differences between the concrete composition according to example 4 of the revoked patent and the composition according to D19, in particular as far as the diameter of the metallic fibres (D19 : diameter: 175 μm ; example 4 of the patent: 200 μm) and the mixer (patent : Eirich RV02 type mixer, having “high turbulence with high turbulence and rotation of the vessel” […]; D19 : Rayneri type mixer, which, according to the [opponent] is a “much simpler” mixer). The Board does not contest that the differences may have an influence on the measured spread value but notes that the concrete formulation according to D19 – although slightly different from that of example 4 of the patent – complies with the subject-matter which claims 1 and 16 intend to protect. Moreover, as the [opponent] has not provided any tangible evidence for its objections raised against document D19, the Board does not see any particular reason to doubt the validity of the results that are summarized in this experimental report. As the spread values measured with the flow tables described in both standards are substantially identical (212.5 mm / 212 mm), the Board accepts D19 as proof that both measurements methods mentioned in the contested patent lead to the same results. The argument of the [opponent] according to which the concrete sample of D19 has undergone 15 blows – instead of the 20 blows mentioned in the patent – is not accepted by the Board because the [patent proprietor] has explained during the oral proceedings that the values that have led the [opponent] to calculate 15 blows were due to a transcription error of the operator. As there was no proof to the contrary, the [patent proprietor’s] argument is accepted. Nor does the Board follow the argument according to which the cone used for measuring the spread value did not comply with European standard NF EN 459-2 (D13FR) because despite the mention that said cone had to be manufactured from a metal that could resist the corrosive action of the mortar (stainless steel, brass), the Board accepts the technical explanation provided by the [patent proprietor] according to which the duration of the contact between the aluminium mould and the concrete is so short that the influence on the measurement, if any, is tiny. […] [3.1] Taking into account the above, the only question that remains to be answered is whether, when the above parameter is measured, the skilled person is able to identify the number of blows (or shocks) to be undergone by the device used for measuring the spread value in the unhardened state of a fresh concrete, i.e. one of the flow tables described in standards ASTM C230 or NF EN 459-2. In order to answer this question, the Board first of all points out once again that – as mentioned above – the examples of the contested patent can be reproduced and that the skilled person is enabled to reproduce them simply by reading the patent specification. In this context, the skilled person will only have to: first, prepare a concrete according to the claimed invention, by reproducing one of the examples of the contested patent, and secondly, to check whether the spread value of the concrete prepared corresponds to a measurement carried out by applying 20 blows to said measurement device – as mentioned in […] the patent specification – or, alternatively, whether said value corresponds to a measurement carried out by applying 15 or 25 blows to the same device, such as indicated in standards NF EN 459-2 and ASTM C230 cited above.
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T 641/07 – Surviving In The Jungle Of Standards
K’s Law – The ebook
In the present case the Board is of the opinion, very much as in a similar case having led to decision T 485/00 [1.6] that such a checking procedure – where, in order to identify the measuring method for a parameter, the skilled person only has to reproduce one of the examples of the patent and to compare the value obtained for said parameter to the value specifically described in the patent – cannot reasonably be considered to be an undue effort. From the above the Board concludes that the instructions provided in the patent are sufficient for the skilled person to check the spread value in the unhardened state of a fresh concrete. The case was then remitted to the first instance for further processing. Should NB:
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T 784/06 – Mental Interaction?
K’s Law – The ebook
T 784/06 – Mental Interaction? 20 Okt 2010
The main request before the Board comprised the following method claim: 1. A method of determining the genotype at a locus within genetic material obtained from a biological sample, the method comprising: A. reacting the material at the locus to produce a first reaction value indicative of the presence of a given allele at the locus; B. forming a data set including the first reaction value; C. establishing a distribution set of probability distributions, including at least one distribution, associating hypothetical reaction values with corresponding probabilities for each genotype of interest at the locus; D. applying the first reaction value to each pertinent probability distribution to determine a measure of the conditional probability of each genotype of interest at the locus, and E. determining the genotype based on the data obtained from step (D). Inventive step [2] Claim 1 is directed to a five-step method of determining the genotype at a locus within genetic material obtained from a biological sample. In step A the material is reacted to produce a first reaction value. In steps B to E each the following mental activities are performed based on the application of mathematical methods: (i) forming a data set (step B ), (ii) establishing a distribution set of probability distributions (step C ), (iii) applying the first reaction value to each pertinent probability distribution (step D) and (iv) determining the genotype based on the data obtained from step D (step E). Thus, the claimed method is defined as a mix of technical and “non-technical” features, the latter, particularly steps C and D, being argued by the patentee to be core features of the invention. [3] Such a method is to be considered an invention within the meaning of A 52(1) (see decision T 641/00 [4]), which, to be patentable, should inter alia satisfy the requirement of inventive step, being reminded in this respect that A 52(2) does not exclude from patentability any subject-matter or activity having technical character, even if it is related to the items listed in this provision, including mathematic methods, since, according to A 52(3), these items are only excluded “as such” (see decision T 154/04 [5(C)]. [4] It is established case law that non-technical features, such as mental activities, are not to be ignored in assessing inventive step, insofar as they interact with the technical subject-matter of the claim for solving a technical problem and thereby contribute to the technical character of the claimed subject-matter. This principle was laid down in decision T 208/84 [16], re-affirmed in decision T 154/04 [8(G)] and recently confirmed in opinion G 3/08 [10.7.1, 10.13.2 (citing T 154/04), and 12.2.2]). It is in conformity with decisions T 931/95 [8], T 641/00 [6], T 258/03 [5.3] and T 531/03 [2.5] which stipulate that for the assessment of inventive step account should be taken of only those features which contribute to the technical character of the claimed subject-matter. [5] Thus, for assessing inventive step of the method of claim 1, the first and fundamental question to be answered is whether, also in the light of the description […], the mental activities of steps B to E interact with the technical activity of step A so as to yield a tangible technical result. This question is answered positively by appellant 1 which sees in the data treatment the key for the determination of the genotype of the biological sample. Appellant II answers negatively as in its view the data treatment steps are too general to provide any technical contribution beyond a trivial one. 2695 | 3398
T 784/06 – Mental Interaction?
K’s Law – The ebook
[6] It is observed that steps B to C in claim 1 are indeed very generally formulated […]. The description of the patent specification is in this respect no more generous than the claims in terms of information. In fact, the section entitled “Summary of the Invention” […] is no more that a mere repetition of the claims and an outline of the flow of data treatment with no concrete details. As regards the [part of the] description […] with appendix A […] and the drawings, which are under the heading “Detailed Description of Specific Embodiments”, they concern an unspecified embodiment wherein the data treatment is carried out using computer processing employing a computer software called “GetGenos”. This section does not provide a truly useful example of how to proceed within the framework of the outlined method. In fact, the mathematic reasoning starting from an actual experimental value determined according to step A and ending with the determination of a precise genotype according to step E is not described in detail. Moreover, it fails to supply a reasonably complete and sufficient description of the software “GetGenos” especially developed by the inventors to produce GBA data, some aspects of the processing of which are discussed […]. This deficiency is remedied neither by the mathematic formulae referred to […] nor by the mere code lines written in C language contained in Appendix A […], which are said […] to serve the purpose of generating probability distributions. No informational content can be attributed to the constants, variables and functions mentioned therein. [7] The above observations are seen as relevant here within the framework of the discussion on inventive step in that the stated deficiencies deprive the skilled reader of the information he/she needs to understand how to proceed from the first reaction value collected in step A through steps B, C and D to the determination on a probabilistic basis of the genotype of step E. Under these circumstances, no interaction can be established between the technical activity of step A with the mental activities of steps B to E leading to a tangible technical result, as required by the case law. The features of steps B to El which pertain to a general manner of analysing the data, are thus to be ignored in assessing inventive step, which assessment can therefore rely on a reasoning focusing only on the technical features of step A. [8] A method of determining the genotype at a locus within genetic material obtained from a biological sample as featured in step A of the method according to claim 1, i.e. comprising reacting the material at the locus to produce a first reaction value indicative of the presence of a given allele at the locus, is known from the prior art, as represented, for example, by documents D7 and Dl3 on file. [9] In document D7, a method for apo E genotyping is disclosed. Namely, the three-allelic polymorphism of the apolipoprotein E (apo E) gene in a population of six individuals is ana1ysed.b~c ombining PCR amplification with a simple solid-phase step reaction to detect the variable nucleotides in two given loci of the apo E gene with radioactive labels. After completion of the detecting step reaction, the radioactivity resulting from the incorporated radioactive isotopes is measured, giving a reaction value indicative for each locus of the presence of a given allele. [10] In document D13, a method for determining the genotype of an organism at a given genetic locus is disclosed, which comprises obtaining from the organism a sample containing genomic DNA and carrying out assays using genetic bit analysis (GBA), i.e. the method especially referred to in the patent […], to produce a colorimetric value that is indicative of the presence of a specific allele at a given locus. Example 6 […] describes the method in relation to genotyping at a given human or equine locus. [11] Thus, if the inventive step involved in the method of claim 1 has to be evaluated merely on the basis of the contribution offered by the general and broad wording of step A, the manifest conclusion is that there is no inventive step involved therein. Therefore, the main request does not satisfy the requirements of A 56 and, as such, cannot form the basis for the maintenance of the patent in an amended form. The Board finally revoked the patent. Should you wish to download the whole decision, you can find it here.
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T 266/07 – A Questionable Springboard
K’s Law – The ebook
T 266/07 – A Questionable Springboard 19 Okt 2010
In the preceding post we have seen how the Board came to the conclusion that claim 1 of the sole request on file was not excluded from patentability under A 53(c). The claim having been found to be novel, the Board now considers whether it fulfills the requirements of A 56 (inventive step). The passage dealing with the question of whether document D1 is a suitable “closest prior art” is not without interest: [6.1] In general terms, D1 discloses a two-dimensional MRI method in which a projection reconstruction technique is employed. In D1, two types of image are created. In order to monitor the imaging process, a series of intermediate “rough” images are produced. These rough images are acquired from undersampled k-space data sets, each of which is derived from different, interleaved radial projection views, the number of radial projection views for each rough image being less than the number required for fully-sampled k-space. These rough images can be displayed individually and employed in their own right to monitor any time-lapse variation of the slice being imaged. The “final” image, which corresponds to fully-sampled k-space, is produced by combining all of the interleaved data sets. However, it is the method of producing the “rough” images which the Board considers to represent the closest prior art. [6.2] The method of claim 1 is distinguished from the method of producing the rough images in D1 at least in the following respects: (a) No reference is made in D1 to the application of a phase encoding gradient along a first axis or indeed to the repetition of the pulse sequence with a set of different phase encoding gradient values and the Fourier reconstruction of a 3D volume image of the entire field of view from the sparsely sampled k-space data set. (b) No reference is made in D1 to the mask subtraction step. (c) No specific reference is made in D1 to the production of an angiogram. Whether D1 may be considered to disclose the use of a contrast agent in combination with MRI was the subject of some debate. However, as will become apparent in the following, this point is in fact purely academic and so can be left open. [6.3] Each of the above-identified differences gives rise to a different technical effect. In particular, the technical effect of difference (a) is that three dimensional imaging is achieved: positional information in the third dimension is obtained by the phase encoding. The technical effect of difference (b) is that the quality of the final image is improved by removing the artifacts. The technical effect of difference (c) is that a specific organ, namely the vasculature, is imaged. These technical effects represent an aggregation of isolated effects which have no interdependence. When assessing inventive step, each of the above-identified differences may therefore be considered separately; for the subject-matter of the claim to be considered inventive, it suffices to show that just one of these differences is not obvious (T 345/90 [5] and T 701/91 [6.4-5]). Since the Board considers that it is not obvious to combine the method of producing the rough images of D1 with phase-encoding and Fourier reconstruction in the third dimension, the question of whether differences (b) and (c) involve an inventive step – and indeed the question of whether D1 discloses the use of a contrast agent in combination with MRI – may be left open. [6.4] Although D1 is the one document which appears to contain the largest number of relevant technical features in common with claim 1, the Board considers that D1 does not actually represent a suitable starting point for an attack on inventive step. In particular, when applying the problem-solution approach, the objective problem which is formulated must be one which the skilled person would realistically consider addressing when setting out from the starting point. A conscious choice of starting point, made in the knowledge of the respective benefits and drawbacks of the various prior art disclosures, not only determines the subject-matter serving as a starting point but also defines the framework for further development (T 439/92 [6.2.4]). Taking the disclosure of D1 as the starting point, the skilled person cannot ignore the fact that the very reason for resorting to the rough images in D1 is to enable fast image acquisition: it is in order to achieve rapid imaging that the quality of the intermediate images is willingly sacrificed. The speed of imaging is consequently an inseparable part of the disclosure of D1 and defines that framework within which any further development of the imaging method of D1 must be carried out. In view of 2697 | 3398
T 266/07 – A Questionable Springboard
K’s Law – The ebook
this context, the Board is of the opinion that the construction of any argument which involves the development of the imaging method of D1 in a manner which would compromise the speed of imaging would be counterintuitive and can only be seen as the result of an ex-post facto analysis. Although it may be argued that the combination of two-dimensional PR imaging of D1 with phase encoding and Fourier reconstruction along the zdirection may present the most obvious way in which to obtain 3D images from the 2D PR images of D1, the speed of imaging is of such fundamental importance in D1 that the skilled person starting from D1 would not forfeit this aspect. [6.5] The examining division (ED) argued that there was an obvious desire to extend the technique of D1 to the acquisition of 3D data. The Board does not agree. In view of the fast-imaging framework of D1, the Board agrees with the appellant that the inevitable delay involved in the processing time when employing phase encoding along the z-axis is so contrary to the declared aim of D1 that the skilled person would simply not consider adapting the method of producing the rough images in D1 to include phase encoding and Fourier reconstruction in the third dimension. Starting from D1, an “obvious desire” to extend to 3D imaging cannot therefore be recognised. [6.6] The ED further argued that the purpose of the technique of D1 was to obtain an early indication of any problems which may have arisen during the imaging and which may corrupt the final image such that they can be corrected as soon as possible. If the final image is to be a 3D image, then the rough, early warning images must also contain 3D information. The Board agrees that, in principle, it may be desirable to provide intermediate 3D images during a 3D scan. However, this implies starting from a 3D imaging method and developing it to provide intermediate images. This approach will be discussed in relation to D4 below. [6.7] The Board is therefore of the opinion that starting from D1, the skilled person would not consider it obvious to adopt the combination of 2D PR rough imaging with phase encoding and Fourier reconstruction in the third dimension. Starting from D1, the subject-matter of claim 1 is therefore not obvious. Should you wish to download the whole decision, just click here.
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T 266/07 – Using The New Blinkers
K’s Law – The ebook
T 266/07 – Using The New Blinkers 18 Okt 2010
The present decision is interesting because it puts into practice the teaching of G 1/07: Independent claim 1 of the sole request reads as follows: “Method for producing a magnetic resonance angiogram of selected vasculature in a subject, wherein a contrast agent has previously been introduced into the selected vasculature so that the intensity of the NMR signal of the vasculature dominates the intensity of NMR signals in other materials within an entire field of view, comprising the steps: a) operating the MRI system to perform a pulse sequence which includes: i) producing an RF excitation pulse to excite spins in the entire field of view which includes the selected vasculature; ii) applying a phase encoding gradient along a first axis; iii) applying a radial gradient directed at an angle θ in a plane perpendicular to the first axis; and iv) acquiring an NMR signal during the application of the radial gradient to sample an angular projection of the data in k-space having NR data points radially spaced along a projection; b) repeating step a) with a set of different phase encoding gradient values for each of a plurality of different radial gradient angles θ until k-space is sampled, wherein the plurality of different radial gradient angles θ is less than NR π/4 in number so that a sparsely sampled three-dimensional k-space data set is acquired; c) Fourier reconstructing along the first axis a three-dimensional volume image of the entire field of view from the sparsely sampled k-space data set, whereby the spacial resolution of the resulting image is not affected by the sparse angular sampling and the artifacts associated with the sparse angular sampling are acceptable being no more than a few percent of the signal associated with the tissue surrounding the vasculature, d) providing reduction of image artifacts generated by the sparse sampling by subtracting from the image reconstructed in step c), a mask image of the selected vasculature that was acquired before the contrast agent was introduced into the selected vasculature; and e) displaying the reconstructed image produced in step d). The Examining Division (ED) refused the application because it implicitly comprised a surgical step. [4.1] In paragraph 1 of the reasons for the contested decision, the ED found that the claimed method of producing a magnetic resonance angiogram (MRA) implicitly included the invasive step of introducing – by injection – a contrast agent into the vasculature of a patient to be examined, and refused the claims under A 52(4) EPC 1973 on the grounds that the method had a surgical character. The Board does not agree with this finding. [4.2] It is noted that since the contested decision was issued, the Enlarged Board of Appeal has handed down decision G 1/07, in view of which the objection under A 52(4) EPC 1973 raised in is no longer valid. In particular, G 1/07 [4.3.2] holds that “Methods which are merely directed to the operating of a device without themselves providing any functional interaction with the effects produced by the device on the body are teachings in which the performance of a physical activity or action that constitutes a method step for treatment of a human or animal body by surgery or therapy is not required in order for the teaching of the claimed invention to be complete. Hence, even if in such a case the use of the device itself requires the application of a surgical step to the body or is for therapeutic treatment the same does not apply to the claimed method for operating the device.” [4.3] In the present case, the claimed method is directed to the operating of a magnetic resonance imaging (MRI) system. Whilst the presence of a contrast agent is indeed obligatory for the imaging method defined in claim 1, the method for operating the MRI device is not functionally related to the actual administration of the contrast agent. Claim 1 must be interpreted as only covering the production of an MRA of a vasculature into which a
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T 266/07 – Using The New Blinkers
K’s Law – The ebook
contrast agent has already been introduced. Thus, the actual step of introducing the contrast agent into the vasculature is not included within the scope of the method claim. [4.4] When this interpretation is invoked the method according to claim 1 represents a technical method for producing an MRA of a selected vasculature by means of a magnetic resonance imaging system, and not a surgical method. Claim 1 is therefore not concerned with a method of surgical treatment of the human or animal body within the meaning of A 53(c) and is, therefore, not excluded from patentability under this provision. Should you wish to download the whole decision, just click here. Should you want to re-read relevant passages of G1/07, you can do so here.
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T 1088/07 – Risky Multitasking
K’s Law – The ebook
T 1088/07 – Risky Multitasking 16 Okt 2010
As we have seen in the preceding post, Claim 1 of the main request read: A stabilized, concentrated, acidic antimicrobial composition characterized by forming a substantially clear diluted aqueous treatment composition upon dilution, said stable, concentrated, acidic antimicrobial composition comprising: (a) from 5% to 95%, by weight of said concentrated composition, of an organic acid; (b) from 1% to 80%, by weight of said concentrated composition, of a surfactant; (c) a stabilizing agent; (d) optionally, a buffer; (e) optionally, optionally, [sic] toxicologically acceptable anti-foaming agent; (f) optionally, toxicologically-acceptable preservative; (g) optionally, perfume, flavoring agent, and/or coloring agent; and (h) the balance comprising compatible, toxicologically-acceptable inert and/or minor ingredients; wherein said concentrated composition has a pH of from 2 to 5 upon dilution; and wherein a ratio of said stabilizing agent to said surfactant is from 10:1 to 1:20. During the oral proceedings, the respondent filed auxiliary request 1 to 3 to replace the previously filed auxiliary requests. The respective claims 1 of these requests differed from claim 1 according to the main request in that they each included the following proviso inserted at the end of the claim: “wherein, if an ingredient from the above list can appear in more than one place, it appears in the first place that it can appear.” Here is what the Board had to say: [4.1] The composition according to claim 1 of auxiliary request 1 is characterised by means of a structurally defined component (a), and a number of functionally defined mandatory and optional components. In addition, claim 1 comprises a proviso according to which, “if an ingredient from the above list can appear in more than one place, it appears in the first place that it can appear.” Since this proviso was introduced in the course of appeal proceedings, it must be examined whether claim 1 so amended meets the requirements of A 84. A 84 stipulates that the claims shall define the matter for which protection is sought. Thus, the question to be answered in the present case is whether it is possible to reliably determine whether a particular composition falls within claim 1 or not. It has not been disputed that a given ingredient may perform more than one function. Examples of such ingredients that can be derived from the patent in suit include polysorbates (nonionic surfactant and stabilizing agent […]), sodium carbonate (stabilizing agent and buffer […]), or polypropylene glycol (stabilizing agent and anti-foaming agent […]). The present proviso attempts to define a hierarchy for the classification of these ingredients. However, it is apparent that there are no clear and reliable criteria for establishing whether, in the context of a particular composition, a specific ingredient should be viewed as being multifunctional, or whether a particular functionality must be viewed as being dominant and any remaining functionalities disregarded. Thus, for example, in claim 6 of auxiliary request 1, which depends on claim 1, “polysorbates” are listed as being one of the preferred stabilizing agents. This is inconsistent with the proviso in claim 1, according to which polysorbate should be placed “in the first place that it can appear”, that is, it should be classified as a surfactant (cf. patent in suit, paragraph [0038]). An analogous inconsistency is present in Example III of the patent in suit, wherein TweenTM 81, which is a polysorbate, is said to be a stabilizing agent rather than a surfactant. Similarly, the block copolymers known under the trade name Pluronic are classified as stabilizing agents in the patent in suit (paragraph [0046]), and as surfactants in document D3 […]). The proviso thus introduces a subjective element into the determination of the subject-matter for which protection is sought. Different conclusions may be reached as to whether a given composition falls within the scope of the claim depending on an arbitrary step of classification. Consequently, the person skilled in the art on 2701 | 3398
T 1088/07 – Risky Multitasking
K’s Law – The ebook
reading the claim 1 of auxiliary request 1 is not able to derive a clear definition of what is intended to be claimed. The respondent effectively argued that claim 1 was clear since the skilled person would be able to understand wording used in the claims. However, as explained above, the claims must also be clear in their purpose of defining the subject-matter for which protection is sought, a requirement that is not fulfilled in the present case. Consequently, claim 1 of auxiliary request 1 does not fulfil the requirements of A 84. Should you wish to download the whole decision, just click here.
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T 1088/07 – Dilute To Taste
K’s Law – The ebook
T 1088/07 – Dilute To Taste 15 Okt 2010
In a recent post we have seen decision T 1898/07 where a claim directed to a liquid composition contained features of the syringe in which the liquid was to be contained. Rather than making a clarity objection (as examiners are told to do in the Guidelines C-III 4.14), the Board disregarded those features in its novelty assessment. The present decision also favours this approach, which proves useful in cases where a clarity objection is impossible, i.e. when the claims under consideration are the claims as granted. Claim 1 of the main request read: A stabilized, concentrated, acidic antimicrobial composition characterized by forming a substantially clear diluted aqueous treatment composition upon dilution, said stable, concentrated, acidic antimicrobial composition comprising: (a) from 5% to 95%, by weight of said concentrated composition, of an organic acid; (b) from 1% to 80%, by weight of said concentrated composition, of a surfactant; (c) a stabilizing agent; (d) optionally, a buffer; (e) optionally, optionally, [sic] toxicologically acceptable anti-foaming agent; (f) optionally, toxicologically-acceptable preservative; (g) optionally, perfume, flavoring agent, and/or coloring agent; and (h) the balance comprising compatible, toxicologically-acceptable inert and/or minor ingredients; wherein said concentrated composition has a pH of from 2 to 5 upon dilution; and wherein a ratio of said stabilizing agent to said surfactant is from 10:1 to 1:20. When assessing the novelty of this claim, the Board had to interpret the characterising part: [3.1] Claim 1 of the main request is directed to “a stabilized, concentrated, acidic antimicrobial composition”, which comprises at least three components, namely, an organic acid (component (a)), a surfactant (component (b)) and a stabilizing agent (component (c)). A concentration range is defined for components (a) and (b), as well as a range for the ratio of components (c) to (b). The balance is defined under (h). Two further features are present in claim 1, namely, “characterized by forming a substantially clear diluted aqueous treatment composition upon dilution” and “wherein said concentrated composition has a pH of from 2 to 5 upon dilution” (emphasis added). However, claim 1 relates to a concentrate, and it is evident that the pH and appearance of the diluted solution will not only depend on characteristics of the corresponding concentrate, but also on the nature and properties of dilution medium used (e.g. pH, hardness), as well as the degree of dilution. These parameters are not defined in claim 1. In the absence of all the required information, the pH and appearance of the final compositions cannot be correlated with characteristics of the concentrate. Consequently, the features relating to the pH and appearance of the final composition upon dilution cannot be viewed as features delimiting the product claimed in claim 1, and must therefore be disregarded in assessing novelty. Accordingly, claim 1 properly understood encompasses any acidic antimicrobial composition that comprises at least one organic acid, a second component falling within the functional definition “surfactant” and a third component falling within the functional definition “stabilizing agent”, in the concentrations and proportions defined in claim 1. Finally the Board found the claim to lack novelty. Should you wish to download the whole decision, just click here.
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R 18/09 – Joint Action
K’s Law – The ebook
R 18/09 – Joint Action 14 Okt 2010
The petition for review concerns the decision in appeal T 128/08 revoking the opposed patent. The petitioners are the three joint proprietors of the patent, namely Johnson Matthey plc, Daimler AG, and HJS Fahrzeugtechnik GmbH & Co. KG (“HJS”). The decision contains some interesting statements on representation in petition for review proceedings. The petition for review was filed by fax on October 7, 2009, by Mr L. The petition stated it was filed in the name of and on behalf of HJS. In a letter dated 13 October 2009 and received at the EPO by fax on the same date, the common representative of the joint proprietors of the patent, Mr S., withdrew as representative and stated that Mr L. would be the new representative. On 16 October 2009 the EPO sent letters to both Mr S. and Mr L. confirming the change of representative. Mr L. sent three replies to the EPO’s letter to him of 16 October 2009. First, in a letter dated November 5, 2009, Mr L. stated that he was not the representative of the other two proprietors (Johnson Matthey plc and Daimler AG) and that official communications could be sent directly to those companies and gave for that purpose the names and addresses of persons at each Company. Second, Mr L. wrote to the EPO on December 3, 2009, stating that in September 2009 Johnson Matthey plc and Daimler AG had transferred their interests in the patent to HJS evidence of which would follow. Finally, Mr L. wrote to the EPO on December 18, 2009, stating that his firm also represented Johnson Matthey plc and Daimler AG (though not saying since when and not filing any additional authorisations) and that the petition for review had been filed in the name of all the patent proprietors. Admissibility of the petition – joint proprietors, common representative [4] Regardless of the confusion in which the petitioners placed themselves in the present case, the fact is that, although the petition was originally filed in the name of and behalf of HJS only, HJS was at all material times (and even despite submissions to the contrary) one of the three joint proprietors of the patent and the petition was never retracted, either by HJS or its (purported) representatives. [5] However, it is also a fact that HJS, being only one of three joint proprietors, was not entitled to file the petition on its own. The Enlarged Board (EBA) held in decision G 3/99 that an opposition filed by several persons in common is to be dealt with as an opposition filed by only one party and such a group of common opponents is to be considered as a single party represented by a common representative (see Reasons, point [15]). It further held that, if such a group of common opponents should file an appeal, they can only do so jointly as a single party acting through their common representative (see Reasons, point [17]). The same principle has been applied to the filing of an appeal by one of joint patent proprietors (see T 1154/06 [1]). [6] It is also to be noted that R 151, which concerns the appointment of a common representative, is stated to apply to joint proprietors of a European patent and also applies in appeal proceedings, if not on its face then beyond doubt by reason of R 100(1). It also applies to review proceedings by virtue of R 109(1) which provides that provisions relating to proceedings before the Boards of Appeal shall apply in proceedings under A 112a unless, as is not the case here, otherwise provided. It follows that the principle that a plurality of persons acting in common be treated as a single party (a “group party”) and the requirement that such a group party acts through a common representative both apply to petition proceedings. [7] It was also held in G 3/99 that there is no practical need to acknowledge the validity of procedural acts of one member of a group party who is not its common representative. Since such a procedural act is treated by the EPO in the same way as a missing signature, each member of the group party or any other person on his behalf can perform such an act to avoid missing a time limit, provided the deficiency is remedied within a further time limit set by the Board in a communication. Hence, where an appeal is filed by a non-entitled person, it shall be 2704 | 3398
R 18/09 – Joint Action
K’s Law – The ebook
considered as not duly signed and the common representative be invited to sign it within a given time limit (see G 3/99 [20 and order, paragraph 2]). Applying this approach […] to petition proceedings and specifically to the present case, the procedural deficiency was that the petition was originally filed by and on behalf of only one of three joint proprietors and by a representative who clearly was not the joint representative at the time. However, the joint proprietors subsequently – but only at the third attempt, and apparently after considerable confusion amongst themselves and their representatives - succeeded in remedying the procedural deficiency by supplying the signature of the new common representative before a time limit was formally set by the Office. […] The petition for review was finally found to be unallowable. The decision contains some more interesting paragraphs: Apportionment of costs [20] The [opponent’s] request for an apportionment of costs related solely to the issue of the joint proprietors. It argued that it would have incurred less costs if the petitioners had not first filed the petition in the name of HJS only, then produced several different stories, and then finally an explanation said to be the result of misinformation. The [opponent] claims this was a misuse of the proceedings. The petitioners say there was no deliberate misuse. The EBA can agree to that extent with the petitioners - no-one would have deliberately filed the inconsistent and self-contradictory letters of 5 November, 3 December and 18 December 2009. However, those letters were merely the superficial aspect of a question which, once raised, needed to be resolved, namely whether one of several joint proprietors of a patent may file a petition for review. To make one party pay the other’s costs of dealing with that issue, which may in time have implications for others beyond the present case, would not be equitable. Acceleration [21] The petition requested acceleration of these proceedings […]. While the reason for the request (to minimise free third party use under A 112a(6)) is readily understandable, that could apply in every case where a patentee is petitioner. The EBA’s view is that petition proceedings should by their nature be dealt with as speedily as possible and therefore acceleration requests are unnecessary.
The decision also allows to enrich our collection of grounds that will not be accepted in petition for review proceedings. As a matter of fact, the petitioner argued that Article 6 of the European Convention on Human Rights (“ECHR”) had been violated in the appeal proceedings. [19] Although the petitioners argue at some length that A 112a(2) and R 104 must be so construed as to allow a complaint under Article 6 ECHR, the EBA has in decision R 16/09 [2.3.5-6] held that the list of grounds contained in those two provisions is exhaustive and that an alleged procedural defect which does not appear on that list cannot form the basis of a petition for review (see also R 10/09 [2.4-5]). Accordingly, since a contravention of Article 6 ECHR does not appear on that list, this ground of the petition is per se unallowable. Should you wish to download the whole decision, you can do so here.
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T 1411/07 – Looking For The Train Of Thought
K’s Law – The ebook
T 1411/07 – Looking For The Train Of Thought 13 Okt 2010
Sometimes Opposition Divisions (OD) give only very concise statements on the admissibility of an opposition. This concision may become problematic if the patent proprietor raised objections against the admissibility. The present decision deals with the rejection of an opposition by the OD. The impugned patent had been opposed on the grounds of lack novelty and lack of inventive step. The patent proprietor contested the admissibility of the opposition because the opponent only cited documents but did not justify how they were destructive of novelty and/or inventive step. As stated in T 448/89, a mere reference to documents was not sufficient. However, the OD found the opposition to be admissible. In its decision, it only stated that “the opposition fulfils the requirements of A 99(1) and A 100 EPC [1973] as well as R 55 EPC [1973] and is, therefore, considered to be admissible.” In its answer to the statement of grounds of appeal, the patent proprietor criticized the impugned decision because it did not contain any justification for considering the opposition to be admissible. This argument did not fall on deaf ears: *** Translation from the German *** [3] According to the established case law of the Boards of appeal an appealable decision, in accordance with R 111(2) (R 68(2) EPC 1973), has to demonstrate in a logical train of though the considerations (Erwägungen) that justify the statement made. Moreover, the conclusions drawn from the facts and evidence have to be exposed in a clear manner. Therefore, all the relevant facts and all the evidence, as well as the decisive considerations concerning the legal and factual circumstances of the case have to be appreciated in detail (ausführlich) (see T 278/00 [2-5]). [4] The requirement of a reasoned decision aims at giving the parties, and, in the case of appeal proceedings, also the Board of appeal, the possibility of examining whether the decision is justified (or not) in view of the decisive considerations, facts and evidence. When, as in the present case, a decision on the admissibility of the opposition is taken, it is necessary to indicate the logical train of thought as well as the decisive considerations regarding the factual and legal circumstances of the case on which the decision that the opposition is admissible is based. [5] In the present case the admissibility of the opposition had been contested already in response to the notice of opposition (i.e. in the submissions dated December 28, 2004). The [patent proprietor] had exposed in detail that the opposition was not substantiated because the notice of opposition did not satisfy the requirements of the then applicable R 55 c) EPC 1973. After the OD, in a notification dated August 11, 2008 [NB: should read 2006], had only stated that the opposition was considered to be admissible, the [patent proprietor], in a submission dated December 8, 2006, repeated its objection against the admissibility of the opposition and made further detailed statements. Thus the objection that the opposition was inadmissible was clearly discernible as such to the OD. Nevertheless, in the impugned decision it was only stated that the opposition was admissible, without there being any indication which considerations taking into account the submissions of the [patent proprietor] and the legal and factual circumstances of the case had led the OD to this decision. [6] The absence of any indication of those considerations on behalf of the OD, in view of the factual and legal circumstances of the case, and the complete absence of a logical train of thought keep both the parties and the Board guessing which considerations have led the OD to the conclusion that the opposition had to be considered as sufficiently substantiated. Therefore, the Board is of the opinion that the impugned decision is not reasoned within the meaning of the then applicable R 68(2) EPC 1973 (R 111(2)). [7] However, the admissibility of an opposition is to be treated before (vorgreiflich) deciding on the substance of the matter because there are no proceedings if the opposition is inadmissible and the patentability of the patent in disputed is not to be decided upon. Therefore, the lack of reasoning of a decision that has to be taken first (vorgreiflich) constitutes a substantial procedural violation. 2706 | 3398
T 1411/07 – Looking For The Train Of Thought
K’s Law – The ebook
The Board then remitted the case to the first instance. Should you wish to download the whole decision, just click here.
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T 1547/09 – Game Over
K’s Law – The ebook
T 1547/09 – Game Over 12 Okt 2010
Claim 1 of the main request read : A system for playing a game, which system comprises a game unit (1) and a number of mobile terminals (2) which can communicate with the game unit, which game unit is adapted to send a game code (4) to one or more mobile terminals and which mobile terminals are adapted to send at least one reply message (5) to the game unit, wherein each reply message comprises an identification code of the mobile terminal, characterized in that the game code (4) is a number comprising two or more digits, wherein one or more of said digits identify a key of a mobile terminal, and each reply message (5) is a word or a part of a word composed of one or more letters which have been selected by means of the key(s) identified by digits of the game code, wherein the game unit is adapted to verify the letters of the reply message on their correspondence to the digits of the game code.
[2.1] The invention is concerned with a gaming system where game play takes place between a central game unit and mobile terminals. The game unit sends a game code to the mobile terminals in the form of a number comprising two or more digits, each of which identifies a key on the mobile terminal. Participants can respond by sending a reply message from their mobile terminal to the game unit. The reply message includes code identifying the terminal as well as a word (or part of a word) composed of the letters using the keypads identified by the game code digits. In the main example […] game code and reply messages are in the form of SMS messages, and the game is played on mobile telephones in a mobile telephone network. Claim 1 is directed at a system, independent claim 9 to a method for playing the game, while further independent claim 17 defines the game unit for use in the claimed system. [2.2] The subject-matter of these claims undoubtedly has technical character following the generally accepted approach of T 931/95 and T 258/03. Thus, claims 1 and 17 are directed at the physical features of an entity - a system with interacting game unit and mobile terminals, respectively the game unit alone - while claim 9 defines the various sending and verifying steps in terms of the use of these technical means. This basic requirement of technicity as expressed in A 52(1) that an invention be “in all fields of technology” is thus met. Inventive step [3.1] The Board assesses inventive step using the generally accepted problem-solution approach. This fundamentally technical approach requires an analysis of the claimed invention in terms of a technical solution to a technical problem. Differences over a notional closest prior art are established and the associated technical effects determined so as to formulate the objective technical problem solved by the invention. Of particular interest are those inventions that encompass both technical and non-technical aspects. “Non-technical” is a
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T 1547/09 – Game Over
K’s Law – The ebook
shorthand way of referring to matter which the EPC regards as excluded from patentability for one reason or another, such as the matter mentioned in A 52(2). For “mixed” inventions established case law, see for example T 641/00, considers only those features that contribute to a claimed invention’s technical character when assessing inventive step. That requirement cannot rely on excluded (non-technical) subject-matter alone, however original that matter might be. For example, new and ingenious business methods or games are inevitably rooted in the physical world when they are carried out, and so may be perceived to acquire technical character. The mere fact of carrying out these methods or games however should not by itself lead to patent protection; in other words that something excluded is technically implemented cannot form the basis for inventive step. Decisive for inventive step is the question how it has been technically implemented, and whether such implementation is obvious in the light of the prior art. As explained in reasons T 1543/06 [2.7-2.9], such a consideration focuses on any further technical effects associated with implementation of the excluded subject-matter over and above those inherent in the excluded subject-matter itself. The exact formulation of the technical problem and the extent to which features contribute to its solution is therefore critical. [3.2] Turning now to the present case, digital mobile communications networks based on GSM or higher standard using SMS capability are well known. D1 uses this technology for gaming purposes, with SMS messages […] 22 used to transmit game actions between players from their respective mobile terminals 12 via a central service provider 24 […]. The provider 24 may relay the messages via an agency 26 […]. The agency may in turn be connected to a game computer as a game play opponent […]. As is standard, the SMS messages also include identification code […]. A typical exchange sequence for play against a game computer will have it sending a game action message or “code” to a player mobile terminal, which responds with a reply message encoding its play action. Any reply message will of course need to be verified as a valid response, as is evident from the example of chess cited in D1 where the computer must check that SMS-ed moves are valid chess moves. D2 discloses a similar mobile network based gaming system (though without specific mention of SMSing) as acknowledged in the application […]. [3.3] The gaming system of claim 1 of the main request differs from this prior art in the characterizing features that specify the nature of the game code and reply message, and of the verification process. The game code is in the form of digits designating keys on the mobile terminal to be used in forming a word(-part) to be transmitted back in the reply message and verified as a validly composed word. [3.4] [The d]escription […] expressly identifies the associated object as “to provide a system and method [according to the preamble of the claim] by means of which a game can be played, wherein the level of knowledge and/or dexterity of the player determines the output of the game”. This stems from a typical gaming insight that giving a player more control and a better sense of achievement can make a game more appealing. Neither insight nor object are technical in nature and neither can serve as a basis for formulating the objective technical problem required for assessing inventive step. [3.4.1] Looking at the way the stated object is achieved the Board sees this to be done in typical game fashion, by proposing a new game which is designed to make better use of a player’s SMSing skills. This new game’s central precept is as follows: form words from the letters on the keys designated by the digits of a numerical game code. Whether or not a player is successful now depends on his ability to associate letters with digits and recognize possible letter combinations, and his agility in then forming the reply message using the keys. The resultant game is no longer based on chance but on skill. A player readily recognizes that this game is different from chance games that use SMS technology. This is because in his perception the rules as encapsulated in the central precept are different. Here the Board recalls what game rules are (cf. T 336/07 [3.3.1]) : they define an agreed regulatory framework concerning conduct, conventions and conditions that are meaningful only in a gaming context. That framework is an inherently abstract, mental construct; its individual rules are also inherently abstract. The rules’ execution interfaces with the real world, see above, and normally requires technical means - for example dice or a game board, or, as here, transmission of data in particular formats - and will so be technical. This should however not detract from the fact that the core concept underlying the invention is the proposition of a new game based on the above central game precept.
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T 1547/09 – Game Over
K’s Law – The ebook
[3.4.2] As explained above inventive step cannot be based merely on the fact that excluded subject-matter, such as game rules, has been technically realized. The question to be asked is how is it technically implemented? In the present case and departing from the central game precept the notional objective technical problem can then be formulated as follows : how to implement on a gaming system such as that of D1 or D2 a game the central rule of which is : compose words using the keys designated by the digits of a numerical game code. [3.5] This problem is addressed to the relevant skilled person in the present field, a software or systems engineer specializing in gaming systems. This skilled person is generally responsible for the technical implementation of gaming ideas developed by a games developer. The two may form a team but it is only from the former’s point of view that the intrinsically technical assessment of inventive step can proceed. [3.6] Given the above task of implementing the new game on a gaming system as in D1 or D2 the skilled person in the course of his normal duties will reconfigure the system in accordance with the new game rules. He need do no more than adapt the game logic in the central game unit and the mobile terminals so that game play unfolds according to the central game rule. This means reprogramming the central game unit and the mobile terminal to issue appropriately formatted game code and reply messages: a numerical game code and a reply message containing the composed word. The game logic changes will naturally encompass also the verification steps carried out by the game unit, which must now check that the reply message contains a properly composed word, made up of the right letters. These tasks pose no particular problem to the gaming software engineer. In carrying them out and reconfiguring the system he arrives at the system of claim 1 (main request) using only routine skills, that is without an inventive step. The Board reaches the same conclusion for claim 17 to the game unit on its own, as well as for the method of claim 9, which merely reformulates the central idea of the claimed invention in terms of the way the system of claim 1 must operate. [3.7] The Board is further unable to identify any further effect as discussed above that might speak in favour of inventive step. Any effects are those that are inherent in the new game concept itself or that follow directly from its implementation on the game system. The Board is unconvinced that there is any reduction in data traffic. The gaming system implements an entirely new game and neither replaces nor modifies prior art systems but rather adds to the variety of existing games and gaming systems. The Board adds that the application as filed also makes no mention of a possible data reduction. The data reduction described by the Appellant is with respect to a hypothetical, non-existing game that is also not apparent from the description or cited prior art and thus appears to be the result of an ex post facto consideration of the invention’s potential benefits. […] [3.9] From the above the Board concludes that the subject-matter […] of the main […] request lacks inventive step and thus fails to meet the requirement of A 52(1) and A 56. Should you wish to download the whole decision, just click here.
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T 566/07 – Well Hidden In Switzerland
K’s Law – The ebook
T 566/07 – Well Hidden In Switzerland 11 Okt 2010
In my preceding post, I announced another decision on Swiss-type claims. Indeed, the claim under consideration is a very particular and rather unusual Swiss-type claim: 1. Use of at least one vital dye for the manufacture of a composition for staining a retinal membrane in an eye to visually distinguish the retinal membrane from the underlying retina in a method for performing retinal membrane removal. Applicable law [3.1] The present decision was taken after the revised EPC entered into force on 13 December 2007. Since the European patent in suit was granted before that date, A 53(c) applies and A 54(5) does not apply to it, in accordance with Article 7(1), second sentence, of the Act revising the EPC […] and Article 1 Nos. 1 and 3 of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the EPC […]. [3.2] According to decision G 5/83 [point 2 of the order], a European patent may be granted with so-called Swiss-type claims directed to the use of a substance or composition for the manufacture of a medicament for a specified new and inventive therapeutic application. This approach was a “special approach to the derivation of novelty” (see G 5/83 [21]) and therefore constituted a narrow exception to the principles governing the novelty requirements which was not intended to be applied in other fields of technology (see G 2/08 [7.1.1]). Since the intention of the legislator was clearly not to exclude second therapeutic indications of a known medicament from the field of patentability the so-called Swiss-type claim constituted the adequate but exceptional solution (see G 2/08 [7.1.1]). In view of these considerations, the board takes the view that this exception to the general novelty requirement is only justified if a claim is indeed drafted in a clear Swiss-type format. The abolition of Swiss-type claims as decided by the Enlarged Board of Appeal in its decision G 2/08 has no retroactive effect (see G 2/08 [7.1.4]) and does therefore not apply in the present case. Moreover, the board notes that A 54(5) does not apply to the present patent (see point [3.1] above). Claim 1 of the main request is drafted as a Swiss-type claim, but differs from the Swiss-type format adopted by the Enlarged Board of Appeal in its decision G 5/83 in that it comprises several applications: the composition manufactured by using at least one vital dye is to be used (a) for staining a retinal membrane in an eye (b) for distinguishing the retinal membrane from the underlying retina (c) in a method for performing retinal membrane removal. It therefore has to be evaluated how the various applications are related to each other and to the composition manufactured from the vital dye. [3.3] The board is of the opinion that there is a causal link between features (a) and (b) in that feature (b) further specifies the staining of the retinal membrane. The combination of features (a) and (b) defines a single staining method, in which the retinal membrane is stained but the retina or the adjacent tissue in general is either not stained or stained with a different intensity and/or a different hue. Identical staining of the retinal membrane and the adjacent tissue, which would inhibit differentiation, is thereby excluded. [3.4] As regards the interrelationship of features (a)/(b) on the one hand and feature (c) on the other hand, the respondent argued that claims had to be read in a reasonable way taking into account the technical teaching of the patent and the general knowledge of the skilled person. The technical teaching of the contested patent excluded the concept of two separate methods, i.e. a diagnostic method followed by a separate method of surgery, for the following reasons: [3.4.1] The staining of the retinal membrane could not be carried out for purely diagnostic purposes, as the diagnosis, i.e. the verification of the presence of a retinal membrane, had already been made before. The board wants to point out that [the] fact that the presence of the retinal membrane had already been established does not exclude a second diagnostic step by means of staining. According to the patent […] the vital 2711 | 3398
T 566/07 – Well Hidden In Switzerland
K’s Law – The ebook
dye to be applied provides sufficient staining for a useful colouring to be visible, which means that the staining step allows a better view of the retinal membrane and thus a better identification of its form and structure, which constitutes a method of diagnosis. [3.4.2] The vital dyes used in the present invention were not suitable for purely diagnostic purposes, as a visual distinction could only be made during retinal membrane peeling. The board notes that this argument of the respondent is not in line with the technical teaching of the contested patent. Again, reference is made to the passage in column 3, lines 2-8 (“ … the minimum amount of dye which is necessary to provide sufficient staining for a useful coloring to be visible should be so low …” [emphasis by the board]). The board therefore concludes that the staining may be performed in order to increase visibility of the retinal membrane. The respondent further explained that in view of its position between the vitreous and the retina, the retinal membrane covered and therefore hid the retina and that was the reason why a differentiation between the stained retinal membrane and the unstained or differently stained retina was possible only during retinal membrane peeling. This argument is not convincing, as, firstly, there are retinal membranes which do not completely cover the retina and, secondly, even if they do, the staining nevertheless improves their visibility, even if the underlying retina is not discernible in this case. [3.4.3] The respondent further reasoned that the staining step is technically not separable from the membrane removal step, as the dye is in a preferred embodiment directly applied onto the retinal membrane after removal of the vitreous. It is correct that example 2 of the contested patent describes such a staining technique, which is, however, as correctly pointed out by the respondent, a preferred embodiment of the invention. The subject-matter of claim 1 is not restricted to a specific method of applying the vital dye. As a consequence, other methods conventionally used such as intravenous or intravitreal injection, which allow a separation between staining of the retinal membrane and its removal, are included. Finally, reference is made to column 4, lines 53-56 of the contested patent, which indicates that retinal membrane staining is preferably [emphasis by the board] employed as part of a vitreo-retinal surgical procedure, which means that separate staining, e.g. for diagnostic purposes, is envisaged as a less preferred embodiment. [3.5] As a consequence, the board concludes that it is reasonable, both technically and in view of the teaching of the contested patent, to regard the staining procedure as a first activity, which is then followed by a second surgical method. [3.6] Moreover, the concept of two separate subsequent methods is not excluded by the wording of claim 1. In this context, the term “in a method …”, which forms the link between staining and membrane removal but does not precisely define the nature of said link, is of particular interest. In the board’s view, the term “in a method …” may imply that the staining procedure is embedded in the membrane removal procedure, but it also has the meaning that the staining of the retinal membrane is simply carried out in the larger context of membrane removal surgery. Thus, the wording of claim 1 includes the situation that a retinal membrane, whose presence has already been diagnosed, is stained in order to improve its visibility so that more details can be recognised, which is a further diagnostic step. Then, in the light of these results, the ophthalmologist can decide whether or not to remove it. In view of the fact that the dye can be applied intraveneously or intravitreously, there is no obligation to perform the membrane removal right after the staining procedure. [3.7] To summarise: [3.7.1] In the light of the teaching of the contested patent two options are technically reasonable. The present invention may relate to (a) a single method comprising both staining of the retinal membrane and its removal; or (b) a first method of staining the retinal membrane followed by a separate method of its removal. [3.7.2] In connection with the wording of present claim 1, it was concluded in point [3.6] above that the link between staining and membrane removal (“in a method …”) also includes both options (a) and (b). [3.8] For determining whether the skilled person would read present claim 1 as a single method or as a sequence of two independent activities, the purpose defined in the Swiss-type wording is of critical importance: claim 1 is 2712 | 3398
T 566/07 – Well Hidden In Switzerland
K’s Law – The ebook
directed to the “use of at least one vital dye for the manufacture of a composition for staining a retinal membrane …” [emphasis by the board]. The indication of the purpose “for staining a retinal membrane” defines the activities encompassed by the Swiss-type format: all steps relating to the staining are comprised. The removal of the retinal membrane is not part of the staining procedure. It would therefore not be reasonable to include the important step of retinal membrane removal in a method defined as “use of at least one vital dye for the manufacture of a composition for staining a retinal membrane …”. The inclusion of this step would even be contradictory to the purpose mentioned above. [3.9] The board therefore had to conclude that present claim 1 has to be read as a sequence of two separate activities: a use of at least one vital dye for the manufacture of a composition for staining a retinal membrane, drafted in the Swiss-type format and therefore not in conflict with A 53(c), followed by a separate surgical method of removing the retinal membrane, which is not drafted in the Swiss-type format and is therefore excluded from patentability pursuant to A 53(c). Cited decisions [3.10.1] The respondent cited decision T 1020/03 in support of the allowability of present claim 1 under A 53(c). In said decision (point [79]) the case was remitted to the first instance “for further consideration of novelty and inventive step, depending on whether the intended method of therapy was itself novel and inventive, taking into account all the features of the use in the claim …” [emphasis by the board]. The board is of the opinion that decision T 1020/03 is not relevant for the subject-matter as claimed in claim 1 of the present main request, as the claim which was the subject of said decision was a Swiss-type claim defining a single method of therapy which apart from the therapeutic indication comprised the dosage regimen as an additional feature. The same applied in decision G 2/08, also cited by the respondent in this context. However, neither of these two decisions concerned a claim including two separate sequential activities, one of which is excluded from patentability pursuant to A 53(c). [3.10.2] A further decision cited by the respondent in this context was decision G 1/07. However, this decision is not relevant for the present case for the same reasons as outlined above in point [3.10.1]. It does not relate to a situation, where a claim refers to two separate sequential activities, one of which is excluded from patentability pursuant to A 53(c). [3.11] As claim 1 includes a separate method of surgery, the claim as a whole is excluded from patentability pursuant to A 53(c). [3.12] In view of the board’s finding as regards claim 1, an evaluation of the dependent claims is not necessary. Should you wish to download this decision, just click here.
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T 1758/07 – Can’t Have ‘Em Both
K’s Law – The ebook
T 1758/07 – Can’t Have ‘Em Both 9 Okt 2010
As you certainly know, Swiss-type claims are a dying species (following G 2/08 ; some days ago, there was an EPO communication on that topic but it appears to have been deleted from the website since then). Decisions dealing with such claims are, therefore, of decreasing interest. Nevertheless, I have retained two recent decisions on claims of that kind. The first one discusses the possibility of co-existence of two types of claims for the same subject-matter. The outcome is not really a big surprise. General remarks The patent was granted before EPC 2000 entered into force. Therefore EPC 1973 applies for consideration of medical uses. In the case of a first medical indication, it is permissible under A 54(5) EPC 1973 to grant a patent with claims directed to a substance/composition for the treatment by therapy according to A 52(4) EPC 1973, even if the additive as such belongs to the state of the art, provided that its use for the above therapy is not comprised in the state of the art. Second and subsequent medical indications can be protected in accordance with decision G 1/83 by claims which are directed to the use of a substance/composition for the manufacture of a medicament for a specified new and inventive therapeutic application (headnote II in conjunction with [19]). Instead of use claims it is possible to formulate claims directed to a process for preparing the medicament which is characterised by the use of the substance/composition (e.g. T 958/94 [headnote]). [3.2] … The set of claims of the first auxiliary request contains a Claim 2 directed to a “Procedure for preparing a feed additive, to be used for the prevention of gastric disorders and intestinal diseases … and the product obtained in the hydrolysis is used as such non-fractionated”, which is, in accordance with G 1/83 and T 958/94, in the form of a second medical use. On the other hand, Claim 8 pertains to a “Feed additive for the prevention of intestinal diseases … and the additive comprises the non-fractionated product obtained as such” by analogy with A 54(5) EPC 1973. Thus, in the first auxiliary request the same subject-matter is claimed both as a first medical use (Claim 8 as a purpose-related product claim) and as a second medical use (Claim 2 as a reformulated Swiss-type claim). [3.3] It is uncontested that the prevention of gastric disorders and intestinal diseases by using the feed additive according to Claims 1 and 8 represents a method for treatment of the human or animal body by therapy within the meaning of A 52(4) EPC 1973. G 1/83 only applies to second (and further) medical indications. From this it follows that the legal fiction behind G 1/83, namely that the therapeutic treatment according to A 52(4) EPC 1973 is a limiting feature, is applicable only if a therapeutic treatment is indeed a second (or further) medical indication. If, however, the claimed subject-matter relates to the first medical indication, G 1/83 provides no legal basis for additionally claiming the same subject-matter as a second medical indication. [3.4] In the present case the question therefore arises whether Claim 8 has to be considered as representing a claim in accordance with A 54(5) EPC 1973 (first medical use claim). In this context the following two questions have to be answered:
(a) Is the feed additive as such (i.e. the additive resulting from hydrolytic treatment of a yeast raw material comprising the non-fractionated product obtained as such) comprised in the state of the art? (b) Is the use of the additive for the prevention of intestinal diseases and gastric disorders (i.e. the therapeutic treatment according to A 52(4) EPC 1973) comprised in the state of the art?
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T 1758/07 – Can’t Have ‘Em Both
K’s Law – The ebook
Novelty of the additive - Question (a) [3.4.1] It is uncontested by the parties that [D14] discloses a feed additive which has been prepared by hydrolytically treating a yeast raw material with an acid [… ;] the hydrolysate is dried and concentrated. The board does not agree with the respondent’s view as expressed at the oral proceedings […] that concentration is tantamount to fractionation. According to the patent in suit […] the term “concentration” is mentioned besides “fractionation”, from which it can be concluded that "concentration" and "fractionation" are distinguishable technical features within the meaning of the invention. Therefore, there is no reason to assume that a concentrated yeast hydrolysate according to [D14] is necessarily a fractionated product. Since there is no disclosure in [D14] that the acid-hydrolysed yeast product is fractionated, it is reasonable to assume that the additive according to [D14] comprises the non-fractionated yeast hydrolysate as such. Thus, [D14] anticipates the feed additive according to Claims 2 and 8 and question (a) has to be answered in the affirmative. Therapeutic use of the additive - Question (b) [3.4.2] According to [D14], the yeast hydrolysate is used for improving the palatability of oral ingesta for animals, e.g. animal feed […]. The improvement in the palatability of a feed has as its aim to induce an animal to eat more of the feed and not the treatment of an actual disease. The second alternative for the additive according to [D14] is the improvement in the palatability of medicaments […]. In this case, the active component for treating a disease is the medicament and not the additive, which serves only as an aid to ease administration of an oral medicament to animals by improving its palatability. This is clearly indicated in […] the document. Thus, [D14] does not disclose the use of the yeast hydrolysate as an active composition for therapy of a disease within the meaning of A 52(4) EPC 1973. Question (b) has therefore to be answered in the negative. Conclusion [3.4.3] Since
the feed additive as defined in Claims 2 and 8 belongs to the state of the art (question (a) to be answered in the affirmative); and its use for a therapeutic treatment within the meaning of A 52(4) EPC 1973, i.e. for the prevention of intestinal diseases and gastric disorders, is not comprised in the state of the art (question (b) to be answered in the negative),
the first medical indication applies in accordance with A 54(5) EPC 1973 and the feed additive can be protected by claims directed to a feed additive for the prevention of intestinal diseases and gastric disorders. This means, however, that the legal fiction in G 1/83 relating to the second and further medical indications no longer applies. Consequently, there is no room to protect the feed additive once more by claims formulated as second medical use claims. Therefore, the feature “to be used for the prevention of gastric disorders ...” in Claim 2 is not limiting, with the result that the subject-matter of Claim 2 is not novel because, as shown under point [3.4.1], the preparation of a feed additive by hydrolysis of a yeast raw material with an acid and its use in non-fractionated form is anticipated by [D14]. [3.5] In consequence, the first auxiliary request is not allowable. Should you wish to download the whole decision, just click here.
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T 628/07 – Return To Sender
K’s Law – The ebook
T 628/07 – Return To Sender 8 Okt 2010
The present appeal was filed after the Examining Division (ED) had refused an application claiming a data rate negotiation method. The Board deals with the question of what should be considered to be the closest prior art. [3.1] A home phone line network, a typical hardware-software interface for it and a method for rate negotiation are disclosed in the section of the application entitled “Background of the Invention” […]. The technical problem set out in the description is formulated on the basis of this acknowledged background art. [3.2] According to established case law of the Boards of Appeal (see for example: T 654/92, T 691/94, T 87/01, T 730/05, T 1449/05, T 211/06), the prior art cited and acknowledged in a patent application for the purpose of formulating the technical problem may be used as starting point for assessing novelty and inventive step (cf. in particular T 87/01 [5.2]). [3.3] The appellant did not respond to the board’s observations concerning the public availability of the HPNA 2.0 specification document submitted with the letter of 19 October 2006 […] and thus it has not been established to the board’s satisfaction that this document was in the public domain at the claimed priority date. However, the inventive step argumentation submitted by the appellant in its letter of 1 June 2010 was based on the omission of a specification in the HPNA 2.0 standard as to how the PHY MSE reaches the upper level driver […]
thereby implicitly accepting the opinion expressed in the board’s communication that the background art acknowledged in the application represents the closest prior art. In view of the foregoing, the board judges that despite the absence of a specific publicly available document relating thereto this background art may be taken as the closest prior art in the present case particularly in view of the fact that the appellant has not made any attempt to resile from it. Should you wish to download the whole decision, just click here.
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T 224/08 – A Lightened Burden
K’s Law – The ebook
T 224/08 – A Lightened Burden 7 Okt 2010
The old Romans coined the general legal principle that “he who asserts something positive has the burden of proof”, or, as they put it: “Affirmanti incumbit probatio” and “Ei incumbit probatio qui dicit non qui negat” (cf. T 792/00 [9]). However, this principle has some limits. The present decision draws a borderline concerning the burden of proof for a prior public use. ** Translation from the German **
[3.1] The Board shares the opinion of the Opposition Division (OD) that the operating manual E6 together with the commercialised lamps “Acculux LED 2000” (invoice E8) had been made available to the public and that their content is part of the prior art under A 54(2). The [patent proprietor] has contested this during the oral proceedings by pointing out that the immediate link (Zusammenhang) between E6 and E8, that is to say that introduction E6 was contained in the folded box wherein the lamps were sold, had never been proven (nachgewiesen). The Board considers this to constitute a borderline case of the general principle according to which the opponent bears the burden of proof, as the opponent has produced all the written documents to which its position gave it access and therefore has proven (nachgewiesen) the circumstances and the object of the commercialisation of the lamps, which as such has not been contested, as far as this could be done at all. In the present case, the company of the [patent proprietor] itself has issued the invoice E8 and sold the Acculux LED 2000 lamps. If, against normal expectations, the operating manual that had been written for the product carrying the same name had not been included with the product then the distributor (that is to say, the patent proprietor) would have been at liberty to provide objectively comprehensible reasons, declarations or at least concrete clues as to the contested circumstances of the distribution at that time. In this regard the Board finds that during the opposition proceedings the patent proprietor […] has only formally contested the prior public use for which E6 and E8 provide evidence (“… hereby expressly contested …”) without providing any concrete, objective argument […]. Given the evidence before the Board, the Board has no – even rudimentary – reason to doubt that E6 was made available to the public via the inclusion of the operating manual E6 that had been written for the lamps according to invoice E8 and carrying the same title “Acculux LED 2000”, as this had been asserted and acknowledged by the OD. Should you wish to download the whole decision (in German), just click here.
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T 2253/08 – Shaky Foundation
K’s Law – The ebook
T 2253/08 – Shaky Foundation 6 Okt 2010
*** Translation from the French *** [3.5] The only open question is whether the solution which the opposed patent provides to the problem can be derived in an obvious manner from the available prior art, i.e. whether it was obvious for the skilled person to associate, in a targeted way (de façon ciblée), a dialkyl tartrate and filters of a type derived from benzylidene camphor and/or dibenzoylmethane in order to improve its photoprotective power. [3.5.1] Document D2 does not mention any UV filter and, therefore, obviously cannot as such suggest that the photoprotective power is improved when dialkyl tartrate is associated with filters of a type derived from benzylidene camphor and/or dibenzoylmethane. [3.5.2] According to the [opponent] it was not surprising that these particular UV filters allow such an improvement because the [patent proprietor] itself acknowledged in paragraph [0008] of the patent under consideration that it was unexpected that other UV filters did not allow to improve the photoprotective index. A contrario this meant that the skilled person expected an improvement when using the claimed compositions. However, this reasoning has to be rejected because it is not based on the prior art but on the conclusions of the [patent proprietor] when it made the invention (see paragraph [0008] of the patent: “the applicant has found …”). These conclusions cannot be an obstacle to inventive step as the latter is assessed on the basis of the prior art (A 56). If you wish to download the whole decision (in French), please click here.
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T 114/09 – Still Pending
K’s Law – The ebook
T 114/09 – Still Pending 5 Okt 2010
In G 1/09 we have seen that there are at least two types of pendency under the EPC: both applications and proceedings can be pending. The present case deals with the question of whether a request for oral proceedings (OPs) was filed in time, which, as we shall see, is related to the question of whether the proceedings were still pending. The Opposition Division (OD) had sent a copy of the notice of opposition to the patent proprietor and invited him to file observations within a time limit of four months (R 57(1)) expiring on June 7, 2005. On May 17, the patent proprietor requested an extension of this time limit, which was granted, so that the time limit then expired on August 7. On July 29, the patent proprietor requested another extension, which was also granted (!), pushing the time limit to October 7. On October 4, the patent proprietor reiterated its request (!!) but this time the OD did not accept to go any further. The EPO refused the request in a manner which, incidentally, I find somewhat confusing (especially for Latinists):
On November 10 the patent proprietor requested that the opposition be rejected and filed a precautionary request for OPs. It announced that it would provide arguments against the opposition before the end of November. Apparently these arguments were never filed. Three years later, the opponent asked the OD to finally revoke the patent. In November 2008, the patent was revoked without any OPs having been held. [2] The impugned decision must be set aside, without an examination of its substantive merits, for the sole reason that the opposition division has made a substantial procedural error in violating the appellant’s fundamental right to be heard enshrined in A 113. [2.1] Indeed, an inspection of the opposition file confirms that the […] patent proprietor made a request by letter of 10 November 2005, received at the Office by telefax the same day, for oral proceedings (OPs) according to A 116 to be held, if the OD intended to revoke the patent “Should the OD nevertheless consider to revoke the patent, we request that OPs within the meaning of A 116 be summoned.” (NB: translated from the French) The Board considers this request to be clear and unequivocal and therefore valid. [2.2] The decision of the OD to revoke the patent was taken on 11 November 2008 and dispatched on 21 November 2008, as the conclusion of a procedure conducted entirely in writing and three years after the request 2719 | 3398
T 114/09 – Still Pending
K’s Law – The ebook
for OPs was received and placed on file. This protracted delay and the fact that the promised response to the opposition, made by the appellant in the same letter, never seems to have been sent does not detract from the validity of the request for oral proceedings to be held. It is also of no consequence to the validity of the request that it was made after the refusal to extend the time limit to respond pursuant to R 84 EPC 1973 using EPO form 2944C had been dispatched. The right to be heard in OPs subsists so long as proceedings are pending before the EPO (T 556/95 [4.4], T 598/88 [3]). Thus, at the time the contested decision was taken a valid request for OPs was on file which should have been respected. It is consistent case law of the Boards of Appeal that a failure to do so constitutes a substantial procedural violation. [2.3] Since a substantial procedural violation has been made the appeal fee must also be reimbursed (R 103(1)(a)) if this is otherwise equitable. In view of the fact that the contested decision makes no mention of a request for OPs, the Board can only assume that it was overseen. In consideration of the fact that the appellant was thereby denied the opportunity of submitting further arguments during such OPs which may have had influence on the decision in question, reimbursement of the appeal fee is deemed justified in the present case. [3] Furthermore, despite the severe delay in the opposition procedure incurred so far, the Board has no choice but to set the contested decision aside as null and void and to remit the case to the department of first instance in order that the appellant’s right to be heard be respected (T 560/88 [6]). Should you wish to download the whole decision just click here.
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T 305/08 – Special Reasons (Not To Remit)
K’s Law – The ebook
T 305/08 – Special Reasons (Not To Remit) 4 Okt 2010
In a preceding post, we have seen that the Board admitted two third party interventions, each of which raised new issues, in particular under A 100(c). This made the patent proprietor request a remittal to the Opposition Division (OD). NB : All legal provisions refer to the EPC 1973. [2.1] The respondent requested that, if the Board concluded that the interventions were admissible, the case should be remitted back to the OD not only for consideration of the new ground of opposition as should normally be the case in accordance with G 1/94 [13], but also the new evidence raised in respect of the grounds under A 100(a) and (b). [2.2] In regard to a new ground of opposition under A 100(c), it is noted that the Enlarged Board of Appeal (EBA) stated in G 1/94 [13] that if a fresh ground for opposition is raised by the intervener the case “should be remitted to the first instance for further prosecution unless special reasons present themselves for doing otherwise, for example when the patentee himself does not wish the case to be remitted.” It is clear from this statement, that the EBA foresaw further situations where remittal to the first instance might not be suitable. The Board finds that in the present case a special reason for doing otherwise exists. [2.3] The objections raised by the appellant under A 100(b) already gave rise to serious doubt as to the allowability of the claims. Indeed the Board stated this in its communication prior to oral proceedings (OPs). Since A 100(b) was a matter which had already been decided by the OD, the Board found it suitable not to remit the case only because further opponents had now provided new lines of argumentation within this ground of opposition. Thus the Board found that examination of all the objections under A 100(b) was appropriate. [2.3.1] Although the respondent argued that the subject matter of claim 1 could only be considered under A 100(b) once a form of claim had been arrived at which fulfilled the requirements of A 100(c), the Board finds that A 100(c) requirements do not outweigh the requirements under A 100(b), nor that there should be a presumption that the claims would necessarily be found unallowable under A 100(c) and thereby result in amendments which would also obviate any problems under A 100(b). [2.3.2] It also should not be overlooked that in the infringement proceedings in Germany an interlocutory injunction had already been enforced, and that the Düsseldorf Landgericht had requested the EPO to accelerate proceedings. Although it is correct that the Landgericht Düsseldorf could have stayed its proceedings until an outcome had been reached after remittal of the case to the EPO first instance and possibly also after a further appeal, this is generally undesirable in the interests of legal certainty and in the existence of a prima facie problem with A 100(b) which objection had already been examined by the OD, unjustified. It is thus of no consequence that opponent 3 would allegedly suffer no disadvantage due to a bond having been placed by the respondent with the Court. Likewise, the respondent was not unfairly disadvantaged by the lack of a remittal, since the appellant had already objected under A 100(b) and the reasons of the OD were already given in the decision under appeal. It should also be noted that absent any intervention, that ground would anyway have been considered by the Board. [2.4] That being the case however, the Board instructed the parties at OPs that it would, as a first step, not take into account any fresh evidence introduced by the interveners in relation to A 100(b) with their interventions or subsequent submissions, and would reconsider the matter of remittal only if use of any such fresh evidence were required. The rest of the decision is also well worth reading, in particular the passages dealing with the insufficiency of disclosure of the main request (paragraph [3] of the reasons) and the refusal to adjourn the OPs (even to the 2721 | 3398
T 305/08 – Special Reasons (Not To Remit)
K’s Law – The ebook
next day, although the OPs had been arranged to last until that day ; paragraph [6] of the reasons). The Board finally revoked the patent. Should you wish to download the whole decision, just click here.
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T 305/08 – When Third Parties Intervene
K’s Law – The ebook
T 305/08 – When Third Parties Intervene 2 Okt 2010
This case is interesting because there were two interventions the admissibility of which was contested by the patent proprietor. The case offers a good opportunity for getting more familiar with A 105 and its implementing rules: there were all sorts of lawsuits, but not all of them can trigger interventions. Following the rejection of the opposition (on the grounds of A 100(a) and (b) only) on December 4, 2007, the opponent, Inventio AG, filed an appeal. Then, on February 22, 2008, Schindler SA (hereafter “Opponent 2”) filed an intervention based on an infringement suit lodged by the patent proprietor against it in the Zaragoza Mercantile Court bearing a date of 23 November 2007. In support of its arguments, Opponent 2 filed an unsigned copy of said infringement suit, together with a translation thereof into English. Opponent 2 raised objections under Article 100(a), (b) and (c) EPC 1973. On March 15, 2008, a further intervention under Article 105 EPC was filed by Schindler Aufzüge und Fahrtreppen GmbH (hereafter “opponent 3”), including objections under Article 100(a), (b) and (c) EPC 1973. The intervention was filed with respect to a request for an interlocutory injunction in respect of infringement lodged at the Landgericht Düsseldorf, against opponent 3, bearing a date of 10 January 2008. A copy of the request for an interlocutory injunction was filed. The patent proprietor requested that the interventions also be dismissed as being inadmissible. In support of its arguments, it filed the following documents:
OT1: Nullity lawsuit filed in Milan on 30 November 2006 by inter alia opponent 2 against the patent proprietor) + OT1a: translation of OT1; OT2: Order from Zaragoza Commercial Court dated 21 September 2007 in respect of “Preliminary Findings” regarding a complaint filed by the patent proprietor against opponent 2 + OT2a: Translation of OT2; OT3: Nullity lawsuit dated 13 November 2007 filed by opponent 2 against Otis Elevator Company + OT3a: Translation of OT3; OT4: “Financial Statements and Corporate Governance 2007”, Section 8, Schindler Holdings Ltd.; OT5: Letter dated 4 August 2008 to Landgericht Düsseldorf regarding a request for costs.
In a letter dated September 15, 2009, the Landgericht Düsseldorf requested the Board to accelerate proceedings in light of an ongoing patent infringement lawsuit concerning the German part of European patent number 1 140 689. The Board informed the parties that it would accede to the request of the Landgericht. Here is the part of the decision dealing with the admissibility of the interventions: [1.1] The intervention by opponent 2 was filed on 22 February 2008. This had annexed thereto an unsigned copy of the infringement suit dated 23 November 2007 together with an English translation thereof. [1.2] The three-month time limit in R 89(1) for filing the notice of intervention is met, only if it is proven that proceedings had been instituted in accordance with A 105(1). [1.2.1] The date of drafting of the infringement lawsuit in Zaragoza dated 23 November 2007 is at first sight the earliest date on which the lawsuit could possibly have been filed, unless the lawsuit had been post-dated. The subsequent filing of the intervention on 22 February 2008 and payment of the fee on the same day were thus within three months of, seemingly, the earliest possible date. [1.2.2] Although an unsigned copy and translation alone provided insufficient evidence for proving the date of institution of proceedings, or indeed whether proceedings were instituted at all, opponent 2 later filed evidence to
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T 305/08 – When Third Parties Intervene
K’s Law – The ebook
that effect on 18 April 2008, in the form of E1. The [patent proprietor] did not contest that the lawsuit had indeed been filed as later proven by E1, nor that this lawsuit was indeed the lawsuit dated 23 November 2007. [1.2.3] Since, according to R 89(2), R 76 and R 77 are also applicable to interventions, and since it is stated in R 77(2) that any deficiency which is not a deficiency under A 99(1) or R 76(2) can be remedied within a period specified, it follows that opponent 2 indeed filed E1 in good time because no period under R 77(2) had yet been set by the EPO for doing so. [1.2.4] Although E1 was in Spanish and was not filed with a translation into one of the official languages of the EPO, it is to be noted that the Board first invited the opponent to remedy the deficiency of filing E1 in Spanish only, when issuing its communication subsequent to the summons to oral proceedings (OPs). The translation of E1 was also filed in due time (i.e. at least 20 days prior to the oral proceedings as specified in the communication), by way of the letter of 15 January 2010. [1.3] The infringement action in Zaragoza dated 23 November 2007 was the first proceedings falling within the terms of A 105(1). [1.3.1] A 105(1) states: “Any third party may, in accordance with Implementing Regulations, intervene in opposition proceedings after the opposition period has expired, if the third party proves that (a) proceedings for infringement of the same patent have been instituted against him, or (b) following a request of the proprietor of the patent to cease alleged infringement, the third party has instituted proceedings for ruling that he is not infringing the patent.” [1.3.2] Contrary to the [patent proprietor’s] submissions, none of the court actions according to OT1, OT2 and OT3 is an action under A 105(1) which would have caused the three-month time limit for filing an intervention to end earlier. [1.3.3] OT1 was a lawsuit brought by opponent 2 against the [patent proprietor], requesting inter alia nullification of the European patent number 1 140 689 […] and a declaration that the products of opponent 2 […] did not infringe this patent. However, neither of these claims constitutes proceedings under A 105(1), because the law suit is not a proceedings for infringement instituted against opponent 2 as in A 105(1)(a), nor is the lawsuit a proceedings instituted by opponent 2 “following a request of the proprietor of the patent to cease alleged infringement” as in A 105(1)(b). [1.3.4] On page 2 of OT1a under the heading “The competition”, it is stated that the f[patent proprietor] “began a campaign of systematic aggression towards” opponent 2, and that “The feeling of the plaintiff (opponent 2) is that Otis (the [patent proprietor]) wishes to intimidate the Schindler Group companies, so as to discourage it from continuing in the production, sale and installation of systems ...”. On page 3, it is stated that “It is likely...that (the [patent proprietor]) will undertake further judicial measures”. Further a “saisie-contrefaçon” of 11 September 2006 is also mentioned “on the basis of the assumption that such elevators systems would constitute infringement of ... EP 1140689 B1 ...”. Additionally, it is stated that “in consideration of the assumed behaviour by (the [patent proprietor]) in Germany and France, the grounds subsist also to fear the now (the [patent proprietor’s]) suits in Italy on the aforementioned patent titles against (opponent 2)”. However, none of these statements concerns a proceedings for infringement instituted against opponent 2, nor does any of these statements imply a request of the proprietor of the patent to cease alleged infringement in Italy. Instead, the statements merely show that the lawsuit of opponent 2 was an attempt to pre-empt any action of the proprietor in which it might request the ceasing of alleged infringement. [1.3.5] As regards the fact that a “saisie-contrefaçon” (seizure procedure) in Zaragoza/Spain had been instituted earlier, it is stated in A1 (see item 2a) that this procedure does not constitute infringement proceedings. In order to find the correct definition of infringement proceedings in the sense of A 105 reliance has to be placed on the specific national law. The [patent proprietor] provided no evidence which could lead to a contrary interpretation under Spanish national law than that given in A1. [1.3.6] OT2 is an order regarding the findings of a seizure procedure according to a Court resolution of 29 December 2006 […] providing conclusions as to the patent of the present appeal […] stating that “we cannot determine if there exists hints of a potential violation as the information is not sufficient ...”. In accordance with 2724 | 3398
T 305/08 – When Third Parties Intervene
K’s Law – The ebook
Article 130 of the Spanish Patents Act […], it is evident that the procedure does not simply continue as though an infringement action has been brought, but that a new procedure must commence. In as far as concerns Article 130 of the Spanish Patents Act […] a judge must indeed order the opening of a separate file in cases where “the Judge considers that it is not presumable that the devices inspected serve to execute the violation of the patent.” The case relating to OT2 is therefore also not proceedings which correspond to A 105(1)(a) or (b). The [patent proprietor] has provided no evidence to counter the submission supported by A1 in this regard. [1.3.7] OT3 […] is an ordinary action for a declaration of nullity brought by opponent 2 against the [patent proprietor]. Reference is made […] to an alleged opinion of the [patent proprietor] that certain lifts infringe its patents. OT3 however gives no indication that the [patent proprietor] had started an infringement proceedings against opponent 2 according to A 105(1)(a), nor that proceedings had been opened for a ruling that opponent 2 was not infringing the patent or even that the nullity suit was made following a request of the proprietor to cease alleged infringement under A 105(1)(b). Again, the [patent proprietor] has provided no evidence to the contrary. [1.3.8] Consequently, the first action from which an intervention could have been filed was the action in Zaragoza dated 23 November 2007 in which proceedings were instituted on 29 November 2007, and the intervention was validly filed within the three-month time limit from that date. [1.4] The proceedings instituted by the [patent proprietor] against opponent 3 in the Landgericht Düsseldorf on 10 January 2008 were the first proceedings instituted between the [patent proprietor] and opponent 3 under A 105(1). The [patent proprietor] has not disputed the evidence put forward by opponent 3 in this regard, nor has evidence concerning an earlier instituted proceedings against opponent 3 been supplied. Thus the Board finds that the intervention was validly filed within the applicable three-month time limit under R 89. [1.5] The [patent proprietor] however argued that both opponents 2 and 3 were not a “third party” in accordance with A 105(1). The Board however finds otherwise. [1.5.1] OT4 and OT5 were supplied as evidence that opponents 2 and 3 belonged to the same group of companies as the appellant and that therefore these allegedly supported the [patent proprietor’s] contention that neither of these parties could be seen as independent, nor a “third party” in A 105(1) EPC. [1.5.2] OT4 indeed appears to show that opponents 2 and 3 are within the same group of companies as the appellant, but provides no information which could lead to a finding that each is not a separate legal entity. The Board finds that the terminology “Any third party” in A 105(1) cannot be given an interpretation other than that each party must be a separate legal entity. This was mentioned in the communication sent to the parties in preparation for OPs, and the [patent proprietor] did not then contest the fact that each party was a separate legal entity, nor did it provide evidence to the contrary as will be explained below. [1.5.3] According to the [patent proprietor], OT5, which is a request for costs drafted on behalf of the appellant in a national proceedings, allegedly demonstrates that the appellant acts as the patent department of opponent 3 which itself has no patent department, and that opponent 3 is a licensee to the appellant which further indemnifies opponent 3 in respect of actions against it by third parties holding intellectual property rights. Its representative indeed also claimed costs for representing opponent 3. However, the Board finds that this does not alter the fact that the appellant and opponent 3 are separate legal entities. Indeed it is quite common that an employee of one company may be named as a legal representative of another company in the company statutes. [1.5.4] OT7 to OT10 do not provide any evidence which would alter the conclusion that the appellant and opponents 2 and 3 are separate legal entities. These documents merely show that a particular employee of the appellant may represent not only the appellant but also opponent 3, and can receive costs for this representation. The allegation that the appellant has no presence on the market by which it can be held liable for infringement does not alter this conclusion either. [1.5.5] The [patent proprietor’s] allegation that allowing the interventions would be the same as allowing the appellant effectively to late-file oppositions via opponents 2 and 3 under its control, and thus introduce new evidence, is not found convincing. The Board finds no reason which should prevent opponents 2 and 3 filing new evidence when filing their interventions (see G 1/94 [13], where the Enlarged Board stated that if an intervener were prevented “from making use of all available means of attacking the patent, which he is accused of infringing, including the raising of new grounds for opposition under A 100 not relied upon by the proper opponent, (this) would run contrary to this purpose of intervention”), since they are a “third party” under A 105(1).
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T 305/08 – When Third Parties Intervene
K’s Law – The ebook
[1.5.6] Whilst the [patent proprietor] argued that the intention of A 105 was to allow parties who had not had a chance to file an opposition, to do so when court proceedings relating to infringement were started, the [patent proprietor] provided no evidence of this alleged intention underlying A 105. The wording of A 105 itself is quite clear in allowing “any third party” to file an intervention, and is not restricted to any third party who had not had a chance to file an opposition, it being noted that all third parties always have the possibility to file an opposition within the nine month time limit for filing an opposition. Likewise, there is no evidence supporting the [patent proprietor’s] allegation that it would be contrary to the intention of A 105 to allow a party to arrange its company structure so that, in particular, the patent department being one company could file oppositions on behalf of the other companies. Further, there is also no evidence that the opposition filed by opponent OI was filed on behalf of the other companies; it was filed solely in its own name. Whether the [first] opponent chooses to indemnify the other opponents for possible consequences of this is entirely outside the scope of A 105. [1.5.7] The allegation that allowing the opponents 2 and 3 to intervene would be abusing the opposition procedure is not agreed. The fact that opponents 2 and 3 are allowed to intervene lies entirely within the sphere of responsibility of the [patent proprietor], by its choice to institute proceedings against the opponents. [1.5.8] The argument of the [patent proprietor] that the interventions had the character of straw man oppositions in accordance with G 3/97 since they were a circumvention of the law by abuse of due process cannot be followed. In G 3/97 [4], an abuse of due process is assigned to the cases where the proprietor is represented by a straw man in order to file an opposition or where an unauthorised representative acts in the role of a professional representative before the EPO. Moreover, in as far as a straw man might be filing an opposition on behalf of a third party this was found anyway to be acceptable (see e.g. G 3/97 [3.3]). In the present case, neither of these circumstances arises and there is no evidence showing a parallel circumstance to the use of a straw man to circumvent the law, since due process is indeed being adhered to by opponents 2 and 3 filing interventions, as this was only possible by the actions of the [patent proprietor] against them. Without such action by the [patent proprietor], the interveners would not have been able to file their oppositions at all. Merely because the appellant was not a party which the [patent proprietor] was able to sue for infringement cannot alter this conclusion. We shall see another aspect of this decision in a forthcoming post. Should you wish to download the whole decision, just click here.
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K’s Law – The ebook
Publish Or Perish (ctd.)
Publish Or Perish (ctd.) 2 Okt 2010
Cumulative plot of the number of decisions published by DG3 in 2008, 2009 and 2010 As can be seen from the above graph, 2010 most likely will not beat the records in terms of decisions published on the DG3 site. After a strong start, we are now very close to the 2008 numbers, but hopefully (from a caselaw blogger’s point of view) there will be a little more activity towards the end of the year. Otherwise the blogslave might face difficulties in providing your daily jurisbreadence.
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T 1579/08 – Trouble With The Greek
K’s Law – The ebook
T 1579/08 – Trouble With The Greek 1 Okt 2010
If accidentally in your priority document you have referred to mm instead of μm and if you have rectified the error in the application claiming the priority, can you still validly claim priority? That is the question the Board had to deal with in the present decision. Claim 1 of the main request read: 1. A softening laundry detergent tablet comprising clay and laundry surfactant, wherein the clay consists of smectite clay, and wherein the tablet is a compressed mass of particles, and at least 50% by weight of the clay is present as granules which have a size of at least 100 μm, the clay granules containing at least 50% by weight of the clay. [1.2.1] It is established jurisprudence of the Boards of Appeal of the EPO that the priority of a previous application in respect of a claim in a European patent application in accordance with A 88 is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole (see G 2/98 [headnote]). [1.2.2] Claim 1 of the priority document of the patent in suit requires that the clay granules have a size of at least 100 mm (millimetres), whilst claim 1 of the patent in suit […] requires that such granules have a size of at least 100 μm (micrometres), i.e. a lower limit thousand times smaller than in the priority document. It is undisputed that all the particle size values of the clay granules in the priority document are expressed in mm and that the priority document as a whole requires that the clay granules have a size of at least 100 mm and that the amount of fines, i.e. clay particles having a size below 20 mm, is limited […]. However, since the tablets of the invention have preferably a diameter between 20 and 60 mm […] and the specific tablets made of the particulate material of table 2 have a circular shape with a diameter of 54 mm […], which diameters are smaller than the clay particle size required in claim 1 and listed in table 2 and on pages 34 and 35, it would appear highly probable that the value of particle size of the clay granules in claim 1 is erroneous and that the correct particle size value should be smaller. It thus remains to establish if it would have been immediately evident to the skilled person that nothing else was intended in claim 1 of the priority document than the correction chosen by the Respondent in the application as filed and contained in claim 1 as granted, i.e. a particle size of at least 100 μm. [1.2.3] The priority document discloses also the size of other particulate materials different from clay. In fact, it discloses other coarse particles having a size typically above 1 mm […]; aluminosilicates with a size of 0.1 to 10 microns, i.e. 0.1 to 10 μm […]; percarbonate bleach with an average particle size from 500 to 1000 micrometers (i.e. 500 to 1000 μm) […]; flocculants having a size of at least 100 mm […]; citric acid of example B having such a particle size distribution that no more than 8% of the particles have a size greater than 1.4 mm and no more than 12% of the particles are smaller than 150 um […]; and micronised citric acid having at least 80% of particles smaller than 150 um […]. The Board thus remarks that there is not a consistent use of units of particle size in the priority document. In fact, even though the very similar values given in mm for the clay and the flocculant particle size are probably erroneous, and the units value um used for the citric acid particles does not exist in this technical field and is erroneous as agreed by both parties during oral proceedings, the other apparently correct particle size values given are expressed in μm as regards aluminosilicates and percarbonate bleach and in mm as regards citric acid and other coarse particulate material. Therefore, since some of particle size values are expressed in mm and other in μm, it cannot be derived from the content of the priority document that the values for the clay particles should have been expressed in μm instead of in mm.
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T 1579/08 – Trouble With The Greek
K’s Law – The ebook
To the contrary, the passage “ … by forming the tablet from the granules of clay and other coarse particulate material, typically above 1 mm” […] seems to associate the clay particles to such other coarse particles having a size typically above 1 mm. Therefore, it appears that, in the light of this passage, at least the interpretation of the erroneous value of at least 100 mm as a value of at least 1 mm by inserting a decimal point (1.00 mm) is also equally possible as the correction chosen by the Respondent. [1.2.4] The priority document refers to document E3 in the part of the description relating to the background of the invention. This document expresses the size of the particles constituting the matrix of the detergent tablet disclosed therein in units of μm […]. However, according to the established jurisprudence of the Boards of Appeal of the EPO the common general knowledge of a skilled person is normally represented by encyclopaedias, textbooks, dictionaries and handbooks on the subject in question or even patent specifications and scientific publications in the case that the field of research is so new that technical knowledge was not available from textbooks (see case law of the Boards of Appeal of the EPO, 5th edition 2006, I.C.1.5). Therefore, document E3, which is a patent specification published about seven years before the claimed priority date of the patent in suit, cannot be considered to represent the common general knowledge of the skilled person. Moreover, the technical terminology used in this document is sometimes very different from that used in the priority document since in the former document particles are considered to be “fines” if their size is equal or less than 180 μm […] whilst according to the priority document “fines” are regarded to have a size of less than 20 mm […] (according to paragraph 14 of the patent in suit less than 20 μm). Therefore, in the absence of any specific indication to this effect in the priority document, the technical information contained in document E3 cannot be considered to be also part of the invention disclosed in the priority document, which has to be understood on the basis of the technical information given in its description and the common general knowledge of the skilled person at the priority date. Therefore, the fact that the particle sizes are expressed in μm in document E3 cannot be considered to be evidence that the clay particle sizes in the priority document had also to be expressed in μm and not in mm and that the value of claim 1 had to be understood as relating in reality to a value of at least 100 μm. [1.2.5] According to document E20 […] it would be evident that the clay particle size in the priority document should have been expressed in μm since the particulate detergent compositions of the type referred to in the priority document are conventionally measured in units of μm and the second paragraph of page 23 refers to particulates in units of micrometers which unit is consistent with the other references to particulates throughout the priority document. As regards the expert’s opinion contained in document E20, it cannot be considered to constitute common general knowledge for the reasons mentioned above (point [1.2.4]); moreover, it is undisputed that the particle size of particulate detergent compositions can have an upper limit above 1 mm as shown, for example, in document E3 wherein the particle size can amount up to 2000 μm, i.e. 2 mm […] and that the priority document itself refers to the particle size of coarse particulate material and citric acid by using units of mm (see point [1.2.3] above). Therefore, this opinion cannot be considered as evidence that it was common general knowledge to express the size of clay particles in detergent compositions in units of μm. As regards the allegation in E20 […] that the second paragraph of page 23 refers to particulates in units of micrometers which unit would be consistent with the other references to particulates throughout the priority document, it has been already explained above (point [1.2.3]) that the priority documents is not consistent in the use of particle size units and that it relates to the size of other particulate materials both in units of μm and mm. Therefore, also document E20 cannot prove that the skilled person would have understood that the clay particle size of the priority document should have been expressed in μm. [1.2.6] The Board concludes that, on the basis of the content of the priority document and of the common general knowledge of the skilled person, it was not derivable that nothing else was intended in claim 1 of the priority document than the correction chosen by the Respondent in the application as filed and contained in claim 1 as granted, i.e. a particle size of at least 100 μm. Since claim 1 of the patent in suit requires that the clay granules have a size of at least 100 μm, i.e. a lower limit thousand times smaller than the value of at least 100 mm required in claim 1 of the priority document, the patent in suit and its priority document refer to different inventions. 2729 | 3398
T 1579/08 – Trouble With The Greek
K’s Law – The ebook
Consequently the claimed priority date of 30 April 1999 is not valid. Should you wish to download the whole decision, just click here.
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G 1/09 – Pending Matters
K’s Law – The ebook
G 1/09 – Pending Matters 30 Sep 2010
The Enlarged Board of appeal (EBA) has spoken again! Interlocutory decision J 2/08 had referred the following point of law to the EBA: “Is an application which has been refused by a decision of the Examining Division (ED) thereafter still pending within the meaning of R 25 EPC 1973 (R 36(1) EPC) until the expiry of the time limit for filing a notice of appeal, when no appeal has been filed?” Here is what the EBA had to say: Rules of interpretation [3.1] It is common ground that the EPC does not contain a definition of the notion ‘pending European patent application’. In particular, the EPC does not define the points in time at which the pending status of an application begins and ends in all possible situations. An interpretation of the expression ‘pending European patent application’ is therefore necessary in view of the referred question. It is the established jurisprudence of the EBA to apply, for the interpretation of the EPC, the rules for interpretation laid down in the Vienna Convention on the Law of Treaties (VCLT) (see e.g. G 5/83 [2-5]; G 1/07 [3.1]; G 2/08 [4]). According to the general rule of interpretation of Article 31(1) VCLT “a treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose”. According to Article 32 VCLT “recourse may be had to supplementary means of interpretation, including the preparatory work of the treaty ( . . . ) , in order to confirm the meaning resulting from the application of Article 31 VCLT, or to determine the meaning when the interpretation according to Article 31: (a) leaves the meaning ambiguous or obscure; or (b) leads to a result which is manifestly absurd or unreasonable”. Thus, before considering the legislative history of Rule 25 EPC 1973, in particular document CA/127/01, the meaning of the expression ‘pending European patent application’ is to be determined based on the general rule of interpretation enshrined in Article 31 VCLT. ‘Pending European patent application’ [3.2.1] In the legal system of the EPC a European patent application involves two aspects. On the one hand, it is an object of property (A 71 EPC 1973 ff.) deriving from the right of the inventor to a European patent (A 60(1) EPC 1973) and conferring on its proprietor, inter alia, provisional protection under A 67 EPC 1973. On the other hand, in proceedings before the EPO a European patent application also involves procedural rights which the applicant is entitled to exercise (A 60(3) EPC 1973). The term ‘European patent application’ may therefore stand for substantive rights as well as for procedural rights of the applicant. [3.2.2] Concerning the term ‘pending’ (‘anhängig’, ‘en instance’), it is to be noted that the EPC does not use this term in a uniform manner. It is not only used in connection with pending patent applications (R 25(1) and A 175(2) EPC 1973), but also in connection with proceedings pending before the EPO (see e.g. R 13(3) EPC 1973 and A 175(3) EPC 1973). The meaning of ‘pending’ is not the same in these contexts. If e.g. proceedings are no longer pending before the EPO because they have been stayed according to R 13 (1) EPC 1973, the patent application remains nevertheless, by definition, pending as it cannot be withdrawn during suspension. On the other hand, opposition proceedings before the EPO can only be made pending after grant of the patent, i.e. when the patent application is no longer pending.
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G 1/09 – Pending Matters
K’s Law – The ebook
It is to be emphasised in this connection that R 25 EPC 1973 refers to “any pending patent application” rather than to proceedings pending before the EPO. It is thus not relevant for Rule 25 EPC 1973 whether or not proceedings are pending before the EPO. [3.2.3] R 25 EPC 1973 implementing A 76 EPC 1973 has been amended several times. In the version according to the decision of the Administrative Council (AC) of 10 June 1988 it contained, for the first time, the explicit requirement of a pending earlier application. It read: “Up to the approval of the text, in accordance with Rule 51, paragraph 4, in which the European patent is to be granted, the applicant may file a divisional application on the pending earlier European patent application.” Whereas the deadline set by the approval of the text is clearly a procedural provision (G 10/92 [4]), the requirement of a pending earlier patent application is of a different nature. It rather reflects the applicant’s substantive right under A 76 to file a divisional application on an earlier application if the subject matter of the earlier application is “still present” at the time the divisional application is filed (see G 1/05 [11.2]). By the decision of the AC of 18 October 2001, the procedural deadline of the approval of the text was removed from R 25 EPC 1973 and only the substantive requirement of a pending application remained in the version to be applied to the present case. [3.2.4] As follows from the above observations, a ‘pending (earlier) European patent application’ in the specific context of R 25 EPC 1973 is a patent application in a status in which substantive rights deriving therefrom under the EPC are (still) in existence. This interpretation conforms with the view of the Legal Board of Appeal in decision J 18/04 according to which the term “pending … patent application” in R 25 EPC 1973 does not establish a time limit, but rather a substantive requirement (J 18/04 [7 ff.]). [3.2.5] Clearly, the pending status of an earlier European patent application does not mean that a divisional application relating to it can always be filed. This may be excluded by procedural provisions, such as e.g. R 13 EPC 1973, which prevents, as lex specialis, the filing of a divisional application, if the proceedings for the pending earlier application are stayed (J 20/05 [3]). Similarly, Article 23(1) PCT, which provides that no designated Office shall process or examine the international application prior to the expiration of the time limit under Article 22 PCT takes precedence, in accordance with A 150(2) EPC 1973, over R 25 EPC 1973 and thus prevents the filing of divisional applications relating to pending Euro-PCT applications before they are processed by the EPO acting as a designated or elected Office. Finally, R 36 as presently in force sets certain procedural time limits for filing divisional applications during the examination procedure. Existence of substantive rights deriving from European patent applications [4.1] The above interpretation of the legal term ‘pending European patent application’ […] leads to the further question of until when are substantive rights deriving from European patent applications in existence. For answering this question a distinction has to be made between the refusa1 of the application and the grant of a patent. Refusal of the application [4.2.1] The substantive rights of an applicant include provisional protection, pursuant to A 67 EPC 1973, conferred by the European patent application after publication […]. A 67(4) EPC 1973 clearly indicates until when such substantive rights deriving from a European patent application are in existence if a patent is not granted. In particular, it provides that the European patent application shall be deemed never to have had the effects of provisional protection when it has been withdrawn, deemed to be withdrawn or “finally refused” (German version: “rechtskräftig zurückgewiesen” - French version: “rejetée en vertu d’une décision passée en force de chose jugée”). Substantive rights of the applicant under A 67 EPC 1973 may therefore continue to exist after refusa1 of the application until the decision to refuse becomes final (rechtskräftig, passée en force de chose jugée). Third parties using the invention before the decision to refuse has become final incur the risk of becoming liable under national law based on A 67 EPC 1973.
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G 1/09 – Pending Matters
K’s Law – The ebook
[4.2.2] As the Legal Board of Appeal observed in point [17] of the referral decision J 2/08, it is “accepted that the final (res iudicata) character of a first-instance decision (Rechtskraft) will only ensue upon expiry of the time limit for filing an appeal”. This concept is indeed well-established in the Contracting States. Reference is made, for example, to the Code of Civil Procedure of Germany (§ 705, Zivilprozessordnung), of France (Article 500, Code de Procédure Civile) and of Austria (§ 411, Zivilprozessordnung); for Switzerland reference is made to Vogel/Spühler, Grundriss des Zivilprozessrechts, 8. Auflage 2006, § 40, No. 62. These national provisions in essence provide that decisions do not become final until the expiry of the respective period for seeking ordinary means of legal redress. There is no reason to deviate from this generally accepted principle in the context of A 67 (4) EPC 1973 (see also Schennen in Singer/Stauder, “Europaisches Patentübereinkommen”, 5th edition 2010, Article 67, marginal number 25). [4.2.3] The legal consequences of A 67(4) EPC 1973 referred to above are independent of the suspensive effect of a possible appeal, nor do they depend on the point in time when the decision to refuse of the first instance becomes effective within the meaning of decision G 12/91 [2]. A 67(4) rather is a self-contained provision indicating the point in time at which substantive rights conferred by a European patent application and therefore its pending status must end. The retroactive effect of a final decision to refuse on the rights conferred upon the applicant under A 67 EPC 1973 does not influence the pending status of the application before such a decision is final. [4.2.4] From the above the EBA concludes that under the EPC a patent application which has been refused by the ED is thereafter still pending within the meaning of R 25 EPC 1973 until the expiry of the period for filing an appeal and, on the day after, is no longer pending if no appeal is filed. The same conclusion applies to R 36(1) EPC 2000 both in its former and its current version. [4.2.5] The interpretation given above does not contradict preparatory document CA/127/01 drawn up in view of the amendment of R 25 EPC 1973 by the decision of the AC of 18 October 2001 and referred to by both the appellant and the President of the EPO. Point 6 of this document deals with the question of how long “grant proceedings” are pending . However, as mentioned above, pending proceedings cannot simply be equated with a pending application. Moreover, as the President correctly pointed out, document CA/127/01 mainly deals with the pending status of an application in the case of grant. Nevertheless, concerning refusal, it is stated in point 6 that “grant proceedings are pending […] until the date that an application is finally refused […].” There is no reason to assume that the authors of this document intended to give the term ‘finally refused’ (rechtskräftig zurückgewiesen - définitivement rejetée) any meaning other than its ordinary and generally accepted meaning[…]. [4.2.6] In any case, the interpretation of R 25(1) EPC 1973 given here complies with the purpose, indicated in document CA/127/01, of making the final date for filing a divisional application more transparent for the applicant and for third parties. According to the existing practice of the EPO under R 25(1) EPC 1973, an application ceases to be pending on notification of the decision to refuse in written proceedings or on the pronouncement of the decision in oral proceedings, as the case may be. In contrast, on the interpretation adopted by the EBA, the application in both cases is pending until the expiry of the period for filing an appeal and is no longer pending on the day after, if no appeal is filed. This can always be determined from the notification of the first-instance (written) decision (A 108 EPC 1973), a fact which may help to prevent unexpected legal consequences of decisions to refuse and to avoid the need for appeals filed for the sole purpose of making a refused application “pending again”. Grant of a patent (obiter dictum) [4.3.1] The President of the EPO also commented on the question of until when is a European patent application pending within the meaning of R 25(1) EPC 1973 in the case of grant. The President referred to the established practice of the EPO according to which, based on A 97(4) EPC 1973, the application is deemed to be still pending during the period between the decision to grant the patent and the publication of the mention of grant . [4.3.2] It may be noted that the view of the President referred to above is not in contradiction with the EBA’s interpretation of R 25(1) EPC 1973 according to which a European patent application is pending as long as substantive rights deriving therefrom under the EPC are in existence […].
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G 1/09 – Pending Matters
K’s Law – The ebook
For the case of grant, A 64(1) EPC 1973 provides that, from the date of publication of the mention of the grant, it is no longer the patent application but the granted patent which confers on its proprietor the same rights as would be conferred by a national patent granted in that State. Article 64(1) EPC 1973 is in conformity with Article 97(4) EPC 1973 according to which the decision to grant shall not take effect until the date of publication of the mention of the grant. Thus, in the case of a decision to grant, the pending status of the European patent application normally ceases on the day before the mention of its grant is published since from that point in time substantive rights under the EPC are no longer derived from the patent application, but now derive from the granted patent. [4.3.3] The President of the EPO further addressed the issue of whether the filing of a divisional application would be allowed irrespective of an (obviously) inadmissible appeal being filed with regard to the parent application. As a consequence of the interpretation of R 25 EPC 1973 set out above, if no appeal has been filed, the deadline for filing a divisional application is either the date of expiry of the time limit for filing a notice of appeal or the day before the date of publication of the mention of the grant, depending respectively on whether a decision to refuse or a decision to grant has been issued. In neither of these situations is the filing of an appeal necessary to ensure pendency of the application. The further issue addressed by the President however concerns divisional applications filed after the respective deadline for the case where an (obviously) inadmissible appeal has been filed in order to maintain pendency of the application past the deadline. The point of law referred to the EBA however only concerns the case in which no appeal is filed. The further issue addressed by the President is therefore not covered by the referral decision and requires no answer in this decision. Order For these reasons, the question of law which was referred to the EBA is answered as follows: In the case where no appeal is filed, a European patent application which has been refused by a decision of the ED is thereafter pending within the meaning of R 25 EPC 1973 (R 36(1)) until the expiry of the time limit for filing a notice of appeal. In my opinion, the present decision shows the EBA at its best: the decision is well reasoned, concise, to the point (quite unlike the IPKat, I did not spot “much pontification”) and provides a simple, practical solution to a delicate problem. A job well done, I would say. Given the new R 36 time limits, the decision is likely not to have a great impact, but I definitely would consider it to be a must-read for people intending to tackle EQE paper D during the years to come. The whole decision can be downloaded from Register Plus. Once more, Laurent Teyssèdre was the first to report this decision. You can find his post here. Having taken a nap, the IPKat finally also woke up. The rest of the blogosphere is expected to follow soon.
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T 1392/08 – Desperately Seeking S … ynergy
K’s Law – The ebook
T 1392/08 – Desperately Seeking S … ynergy 29 Sep 2010
I owe the knowledge of this decision to Le blog du droit européen des brevets. The decision deals with an appeal against the refusal of an application by the Examining Division (ED). Claim 1 of the main request before the ED read : 1. A deodorant composition comprising at least one phenolic compound and at least one enzyme capable of oxidizing. the at least one phenolic compound into a compound having a quinone structure, characterized in that said deodorant composition further comprises at least one of flavor and fragrance that comprises at least one compound selected from the group consisting of one or several volatile compounds having a molecular weight lower than 500 Dalton; an essential oil; and plant, vegetable or fruit extracts, said at least one of flavor and fragrance producing a synergistic deodorizing effect when mixed with said phenolic compound(s) and enzyme(s). The ED found this claim to lack clarity and sufficiency of disclosure and finally rejected it for a lack of inventive step. Here is what the Examiners had to say on clarity (click to enlarge):
As far as sufficiency was concerned, the ED studied the comparative trials provided by the appellant and then concluded:
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T 1392/08 – Desperately Seeking S … ynergy
K’s Law – The ebook
The same arguments were found to apply to claim 1 of the second auxiliary request, which is almost identical to claim 1 of the main request before the Board: 1. A deodorant composition comprising at least one phenolic compound and at least one enzyme capable of oxidizing the at least one phenolic compound into a compound having a quinone structure, characterized in that said deodorant composition further comprises at least one of flavor and fragrance that comprises at least one compound selected from the group consisting of one or several volatile compounds having a molecular weight lower than 500 Dalton; an essential oil; and plant, vegetable or fruit extracts, said deodorant composition comprising said at least one of flavor and fragrance in an amount producing a synergistic deodorizing effect when mixed with said phenolic compound(s) and enzyme(s); wherein said at least one of flavor and fragrance is citrus-type fragrance, mint-type fragrance, wood-type fragrance, fruit-and floral-type fragrance, greeneryand floral-type fragrance, peppermint-type flavour, mint-type flavour, lemon-type flavour or perilla-type flavor. Here is what the Board had to say : [2.1] Claim 1 of the main request is directed to a deodorant composition comprising at least one phenolic compound and at least one enzyme capable of oxidizing the phenolic compound and further at least one of flavour and fragrance. The amount of flavour and fragrance is defined using a functional feature, namely that the composition comprises “the at least one of flavour and fragrance in an amount producing a synergistic deodorizing effect when mixed with said phenolic compound(s) and enzyme(s)”. [2.2] Thus Claim 1 requires the use of an amount of flavour or fragrance to obtain a deodorant composition “producing a synergistic deodorizing effect”, that is to say an additional effect that goes beyond the sum of the effect of each component taken in isolation. [2.3] A 83 requires that the European patent application disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The requirements of A 83 are met if at least one way is clearly indicated in the patent specification enabling the skilled person to carry out the invention, and if the disclosure allows the invention to be performed in the whole area claimed without undue burden, if necessary applying common general knowledge. In the present case the requirements of A 83 will be fulfilled if the skilled person knows, without exceeding his normal skills and knowledge, what he has to do in order to obtain compositions showing a synergistic deodorizing effect. [2.4] The application as originally filed indicates the amounts of the single components, phenolic compound, enzyme and flavour and fragrance to be used in the composition […], but is silent about the amount to be used in order to achieve a synergistic deodorizing effect. Moreover, none of the examples in the application demonstrates that a synergistic deodorizing effect is achieved. The experimental results reported in the application […] demonstrate that the urine smell can be suppressed using the claimed deodorizing compositions but they do not show that a synergistic effect is obtained. The results on Table 18 indicate that the malodour smelling index is reduced from 5.0 to 0, but this result can also be explained by an additive effect of the components as conceded the appellant during the OPs. Concerning the other results in Table 18, it is again noted that very good results are obtained for the freshness index, cleanliness index and pleasant feeling index when using all the components of the deodorant compositions, but the data given in the table do not allow the conclusion that these results are achieved by the presence of a “synergistic effect”. The same considerations apply for the experimental results described on Tables 19 - 35 of the application as filed. [2.5] It follows that the examples in the application do not allow the skilled person to prepare compositions wherein the flavour and fragrance is present “in an amount producing a synergistic effect”. Moreover, the absence of any other instructions as to the factors which affect the occurrence of a synergistically increased deodorizing effect obliges the skilled person to rely exclusively on trial and error experiments to establish which amounts may be used in the claimed compositions. [2.6] According to EPO practice (see the “Case Law of the Boards of Appeal of the EPO”, 5th edition 2005, Chapter II.A.4, page 177), when trial and error experiments are required the disclosure in the patent should
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T 1392/08 – Desperately Seeking S … ynergy
K’s Law – The ebook
provide adequate information leading necessarily and directly towards success through the evaluation of the initial failures and, therefore, only a few attempts should be required to transform failure into success. [2.7] In the present case, the person skilled in the art attempting to arrive at suitable compositions can only start by arbitrarily selecting random amounts of phenolic compound, enzyme and flavour or fragrance and then verify if the chosen amounts provide the intended effect. However, in the case of initial failure the skilled person is left without any guidance as to how to modify the compositions to obtain one with the desired synergistic deodorizing effect. The extent of trial and error experiments for the preparation of deodorizing compositions according to Claim 1 amounts to an undue burden. [2.8] This conclusion is not affected by the further experimental evidence filed by the appellant during the appeal proceedings […]. In these experiments the amount of phenolic compound and enzyme used was reduced by 7.5 times when compared with the amount used in the embodiment of Table 18 (and in all other examples). Independently of the question whether or not a synergistic effect is shown when using such small amounts, the board notes that there is no information in the application as filed pointing to the fact that in order to obtain compositions showing a synergistic deodorizing effect the compositions of the examples should be modified by drastically reducing the amount of phenolic compound and enzyme used. [2.9] For these reasons the requirements of A 83, sufficiency of disclosure, are not met. The Board then turns to claim 1 of the first auxiliary request as filed during the oral proceedings (OPs), which reads as follows: 1. A deodorant composition comprising at least one phenolic compound and at least one enzyme capable of oxidizing the at least one phenolic compound into a compound having a quinone structure, characterized in that said deodorant composition further comprises at least one of flavor and fragrance that comprises at least one compound selected from the group consisting of one or several volatile compounds having a molecular weight lower than 500 Dalton; an essential oil; and plant, vegetable or fruit extracts, said deodorant composition comprising said at least one of flavor and fragrance in an amount sufficient to remove the last remaining trace of odours which cannot be inactivated by said at least one phenolic compound and at least one enzyme; wherein said at least one of flavor and fragrance is citrus-type fragrance, mint-type fragrance, musk- and woodtype fragrance, fruit-and floral-type fragrance, greenery- and floral-type fragrance, peppermint-type flavour, mint-type flavour, lemon-type flavour or perilla-type flavor. NB: One might wonder whether the deletion of the synergistic effect from claim 1 is in conformity with A 123(2), but it turns out that it is because this feature was only contained in claim 2 as filed, whereas claim 1 of the auxiliary request is a combination of claims 1 and 3 as filed. [3.1] Claim 1 of auxiliary request 1 is also directed to a deodorant composition wherein the amount of the components is defined using a functional feature. The functional feature now requires that the flavour and fragrance is present “in an amount sufficient to remove the last remaining trace of odours which cannot be inactivated by said at least one phenolic compound and at least one enzyme”. [3.2] The amended claims no longer require the production of a synergistic affect and overcome the objections of the board in relation to the main request. The requirements of A 83 will now be fulfilled if the skilled person knows, without exceeding his normal skills and knowledge, what he has to do in order to remove the last remaining trace of odours which cannot be inactivated by the phenolic compound and the enzyme. [3.3] The examples of embodiments 1 to 10 in the application […] clearly allow the skilled person to put the invention into practice. The compositions of embodiments E1 to E10 show that the last trace of odours not eliminated by the phenolic compound and the enzyme is removed by the addition of certain amounts of a flavour or fragrance. Thus, for instance, the results of Table 18 indicate that the weak urine odour that remains using only a phenolic compound and an enzyme can be removed by the addition of 10 μl of citrus-type fragrance […]. On the basis of the examples and comparative examples of the present application, the skilled person thus obtains sufficient guidance with regard to the amount of flavour or fragrance to be applied in order to eliminate the last trace of odours. [3.4] The board is also satisfied that the invention can be performed in the whole area claimed. The subjectmatter of Claim 1 is limited to the nine specific flavours or fragrances for which experimental evidence was provided in the application as filed. In these examples several phenolic compounds and enzymes were also used. There is no reason to doubt that when using other phenolic compounds or enzymes similar results would be obtained. 2737 | 3398
T 1392/08 – Desperately Seeking S … ynergy
K’s Law – The ebook
[3.5] The board concludes that sufficient information and guidance is at the skilled reader’s disposal, enabling him to successfully carry out the invention. Hence the requirements of A 83 are met. Should you wish to download the whole decision, just click here.
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T 299/08 – Bad Tactics
K’s Law – The ebook
T 299/08 – Bad Tactics 28 Sep 2010
** Translation from the German ** [1] When issuing the summons for oral proceedings (OPs) on February 10, 2010, the Board has presented its provisional opinion in the present case and given a time limit of two months for filing statements. The [patent proprietor] has not taken advantage of this time limit although it had to be aware that the maintenance of its patent was in danger. It rather presented an auxiliary request for the first time during the OPs, without any plausible explanation for the belatedness. The only argument of the [patent proprietor] was that the amendment was very simple and easily comprehensible, consisting in the mere introduction of features of a hitherto dependent claim into the main claim. It is precisely because of the simplicity of the amendment that the [patent proprietor] could and should have filed the auxiliary request within the time limit set by the Board for responding to its notification of February 10, 2010. Therefore, the filing of the auxiliary request during the OPs is tantamount to tactical behaviour aiming at surprising the [opponent] with new facts and arguments. The Board considers such a way of proceeding to be procedurally abusive (verfahrensmissbräuchlich). Therefore, the auxiliary request is not to be taken into account. If you wish to download the whole decision (in German), please click here.
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T 1370/08 – Weighed And Found Too Light
K’s Law – The ebook
T 1370/08 – Weighed And Found Too Light 27 Sep 2010
The present decision deals with the refusal of an application by an Examining Division (ED), primarily for lack of support in the description (A 84), but there were also other deficiencies under A 56, A 83 and A 123(2). The applicant then filed an appeal and sent the following statement of grounds of appeal (click to enlarge):
The Board saw an admissibility problem: [2.1] A 108 in conjunction with R 99(2) requires that a statement setting out the grounds of appeal is filed which indicates the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based. In this respect, the jurisprudence of the boards of appeal has developed the general principle applicable to statements of grounds of appeal that the grounds of appeal should specify the legal or factual reasons on which the request for setting aside the decision is based (see for instance T 220/83). The arguments must be clearly and concisely presented to enable the board to understand immediately why the decision is alleged to be incorrect. [2.2] In the present case, the grounds given consist, on the one hand, of a reference to reasons presented in earlier letters […] and in a facsimile […] and, on the other hand, of the allegation that the examiner had not properly understood the invention and was not correct in his assessment of the value of the invention. This is followed by a brief explanation as to the merits of the invention […]. [2.2.1] Statements of grounds of appeal which merely refer generally to submissions made in the first instance proceedings are normally not considered to be adequately substantiated since they do not clearly indicate which grounds of the decision are regarded as mistaken, and why, and therefore make it impossible for a board to immediately consider and decide upon the merits of the appeal without making investigations of its own (see for instance decisions T 646/92, T 188/92, T 287/90 or T 349/00). 2740 | 3398
T 1370/08 – Weighed And Found Too Light
K’s Law – The ebook
In the case at hand, the situation is even worse : the submissions referred to in the statement of grounds of appeal include an acknowledgement that one of the reasons presented in the decision is in fact correct. The facsimile of 11 February 2008 responded to a communication of the ED […] which directly preceded its decision and which had raised concrete objections under A 56, A 83 and A 84. The facsimile reproduces the text of an email with comments which one of the inventors had sent to the appellant’s representative. Insofar as these comments make reference to the said communication of 15 November 2007, they acknowledge that the mathematical expression “1 - hp(x,l)” which appears in claim 1 of what is still the appellant’s main request is erroneous. In other words, the most recent submission made in the first instance proceedings to which reference is made as substantiation of the grounds of appeal amounts to an admission that the decision is correct in this respect and, as far as the reasons for refusal under A 84 are concerned, does not even attempt to defend the request on which the contested decision is based and which is maintained as the main request for the appeal. As a matter of fact, the objection of lack of support in the description for a “weight” of the claimed value of “1 hp(xi,l)” was not addressed by the appellant in any of their responses. [2.2.2] The remainder of the facsimile merely alleges a fundamental misunderstanding of the invention on the part of the ED. It constitutes in fact the only substantive submission in the grounds of appeal presented. However, it does not address the question as to why the findings of the ED, in particular the finding of the said lack of support of the claimed subject-matter in the description of the application, were wrong but, instead, briefly explains why the appellant considers his invention to be of value and useful. Besides, this brief explanation refers to technical items, ie “three portions of the final corpus of training entries” and “collection of utterances data”, which are not the subject of the independent claims of the requests made with the statement of grounds of appeal. [2.2.3] It follows that the statement of grounds of appeal does not specify any legal or factual reason why the objection identified by the ED in paragraph 1 of the reasons for the decision may be regarded to be wrong and therefore lacks adequate substantiation. [2.3.1] Exceptionally, an appeal may be considered admissible even if its grounds fail to deal with the reasoning of the contested decision. In decision T 934/02 [2] the board found that an appeal which does not state any substantive reasons as to why the contested decision is wrong may nevertheless be regarded as being substantiated merely by the fact that amended claims are filed which deprive the contested decision of its basis. Similarly, in decision T 729/90 [1.3], the board held that the fact alone that the statement of grounds of appeal contained a set of claims forming an auxiliary request rendered the appeal admissible. However, in each of these cases, the respective board required that a causal link between the amended claims and the reasons given in the contested decision must be apparent. This causal link was evident either in the fact that the amended claims corresponded to a proposal of the ED or in the fact that an explanation had been provided as to why certain amendments had been performed and why the decision was therefore no longer valid. [2.3.3] In the present case an auxiliary request was filed on 28 June 2008 with the statement of the grounds of appeal. However, a causal link has not been demonstrated between the amended claims and the reasons set out in the contested decision. In particular, the appellant’s statement of grounds of appeal does not contain any explanation as to the significance of the amendments made in the auxiliary request nor as to why these amendments address the objections raised by the ED, in particular in sections 2 and 3 of the reasons for the decision. Consequently, the mere act of filing an auxiliary request together with the statement of grounds of appeal in the present case does not make up for the necessary substantiation. [2.4] For the above reasons, the statement of grounds of appeal filed in the present case amounts to no more than a mere assertion that the contested decision is incorrect, without stating the legal or factual reasons why that decision should be set aside (see T 432/88 [2]), and thus does not satisfy the provisions of A 108 in conjunction with R 99(2). […] The appeal is rejected as inadmissible. If you wish to download the whole decision, please click here.
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R 9/10 – The Right Not To Remit
K’s Law – The ebook
R 9/10 – The Right Not To Remit 25 Sep 2010
I feel that I will soon give up reporting on R decisions because we now know the story. Unless the lawmaker changes A 112a (which, even if envisaged, would take some years) or the Administrative Council opens up R 104, petition for review proceedings will be of little real interest for parties to appeal proceedings. Still, from time to time there are interesting details to be gleaned in those decisions of the Enlarged Board of appeal (EBA). The present decision deals with a petition for review of decision T 893/07, which we have reported in an earlier post. [5] The only ground relied on in the petition is A 112a(2)(c) which specifies a fundamental violation of A 113. The only applicable provision of that Article can be A 113(1) which provides that decisions of the EPO (which includes the Boards of Appeal) may only be based on grounds or evidence on which the parties have had an opportunity to be heard – in short, the right to be heard. The petitioner’s case that its right to be heard was denied is based solely on the Board’s decision to refuse to remit the case to the first instance in accordance with the petitioner’s auxiliary request […]. That refusal, according to the petitioner, denied it the chance of dealing adequately, i.e. at two instances, with document D3. [6] The EBA generally agrees with the petitioner’s submissions […] that the right to be heard means an adequate opportunity to be heard. However, these submissions do not affect the present case. On the issue which the petitioner itself calls the “main issue” […] – namely whether or not the case should have been remitted to the first instance - the petitioner was, as the petition itself acknowledges, heard. There was quite clearly no denial of the right to be heard on that issue since the petitioner relies on the summary in the decision (see T 893/07 [3.1]) of its own arguments and makes no complaint whatsoever that it was denied any opportunity to be heard on this issue. [7] As mentioned above […], the petitioner’s case that its right to be heard was denied is based solely on the Board’s decision to refuse to remit the case to the first instance. Thus the petitioner’s one and only real complaint is not that it was not heard on the issue of remittal but that the Board of Appeal, after hearing the petitioner, did not order remittal. This appears not only from its reasons for setting the decision aside […], but also from its opening argument […] and its argument about R 106 that its right to be heard was breached by the refusal to remit […]. However, and apart from what is said in point [6] above, there are several reasons why the actual decision cannot be reviewed in petition proceedings. [8] First, there is no right to a remittal, only a discretion which may or may not be exercised in a party’s favour under A 111(1) and which is the subject of considerable case-law. The petition itself acknowledges this in the first part of its long attack on T 111/98 […] and in its expression of hope that the EBA will “confirm the correct principles to be applied by the Board of Appeal” […]. [9] Second, the right to be heard which has allegedly been lost is that of being heard again at first instance. However, if there is no right to a remittal, there is no right to a further hearing before the first instance so no right to be heard can have been denied. If, as in this case, there was no denial of the right to be heard in arriving at the decision on the remittal request, then al1 arguments as to other steps which might have been taken if remittal had been ordered are speculative and irrelevant (see R 12/09 [8]). [10] Third, the issue whether to remit or not was a matter of substance in the appeal proceedings which the EBA cannot consider in petition proceedings (see R 1/08 [2.1]). The petitioner itself demonstrates this by basing the petition on its disagreement with the Board’s interpretation of the case-law […]. Further, the EBA cannot in petition proceedings act as a third instance or second-tier appellate tribunal (see again R 1/08 [2.1]). However, that is exactly what the petition seeks when it asks the EBA for a decision setting out the principles to be applied by the Board of Appeal in a re-opened case […]. [11] For completeness, the EBA notes there are two other comments in the petition which are critical of the Board of Appeal - that it raised new objections in its communication only ten weeks before the oral proceedings 2742 | 3398
R 9/10 – The Right Not To Remit
K’s Law – The ebook
(OPs) and that it raised another new objection at the OPs […]. Neither of those criticisms is used to support the alleged fundamental procedural defect as such but, even if they were, the EBA’s view would not be different. [12] The first of those points - that new objections were raised in the Board’s communication - cannot have any bearing on the petition at al1 since it appears from the petition itself […] that the petitioner overcame all objections in both the decision under appeal and the Board’s communication. The Board’s written decision confirms this by only dealing with the objection of lack of inventive step over D3 which was apparently first raised at the OPs. [13] The second point - namely, that the objection of lack of inventive step over document D3 was only raised at the OPs - simply forms part of the misguided argument that the refusa1 to remit the case to the first instance was a denial of the right to be heard. Even if one accepts that the objection was raised late (and, since novelty over D3 was an objection raised in the communication, inventive step over D3 was at least a foreseeable objection from that point in time too), this appears to be the true reason why the petitioner wanted remittal. By “true reason” the EBA means that, although the petitioner observes that the objection was only raised at the OPs, its stated complaint is of inadequate opportunity to deal with D3 without remittal. D3 was raised in the communication ten weeks before the OPs, there was no request to adjourn those proceedings, and the petitioner came prepared to argue novelty over D3, did so and succeeded. In truth, the request for remittal was only maintained, not because D3 was introduced ten weeks before, but because the Board, at the OPs, considered inventive step over D3 and ultimately found against the petitioner on that. But, as already explained […], the petitioner was heard on its request for remittal which was refused in the exercise of the Board’s discretion which was part of the substance of the case. [14] Thus, even if the petitioner’s criticisms are elevated to the status of supporting arguments, there is no question of a denial of the right to be heard and no fundamental procedural defect. The petition is clearly unallowable. Should you wish to download the whole decision, you can do so here.
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T 1002/09 – Improving Gut Feelings
K’s Law – The ebook
T 1002/09 – Improving Gut Feelings 24 Sep 2010
Claim 1 of the main request before the Board read: 1. A liquid nutritional composition for use in promoting gut health in an elderly patient comprising a protein source, a source of digestible carbohydrates and a source of dietary fibre, characterised in that it has an energy density of 1.3-1.8 kcal/ml and dietary fibre in an amount of more than 2.5g/100ml. In its assessment of novelty, the Board is confronted with the need to qualify this claim: is it a claim directed to a first medical application or not? The qualification of the indication of use (“for use in promoting gut health in an elderly patent”) will prove decisive: [3.1] As in Claim 1 of the main request before the examining division (ED) the liquid nutritional composition according to Claim 1 is characterised in that it has an energy density of 1.3- 1.8 kcal/ml and dietary fibre in an amount of more than 2.5 g/100ml. The board shares the view of the ED that such a composition is novel over the prior art cited in the examining procedure in particular with respect to D3 and D5. [3.1.1] D3 discloses a nutritional composition for elderly patients. In one embodiment, the composition comprises a protein source, a carbohydrate and a lipid source wherein the carbohydrate source includes a source of dietary fibre having a soluble fibre to insoluble fibre ratio of about 1:4 to 4:1 (Claim 2). D3 recommends that the level of fibre should be low with levels of between 0.8 and 1.5 g/100 ml […]. A higher fibre content, let alone in combination with the energy density required in Claim 1, is not disclosed in D3. [3.1.2] D5 relates to a nutritional composition, suitable for enteral administration, comprising dietary fibre, characterised in that it contains 5-120 g of fibre per daily dosage of the composition, and the fibre consists of 1550 wt.% of soluble non-starch polysaccharides, 15-45 wt.% of insoluble non-starch polysaccharides, and 8-70 wt.% of oligosaccharides and/or resistant starch (Claim 1). D5 discloses that fibre plays an important role not only in the nutrition of healthy people but also of hospital patients or persons with constipation or with diarrhoea […]. However, very little guidance is given as to the actual composition of such a nutritional composition. As far as fibre content is concerned, this may vary between 0.5 and 12 g/l00 ml with 1 to 2 g/ l00 ml being disclosed in Example 2. The only guidance on energy content suggests a fibre content of 0.5-l2 g/100 ml at an energy content of 2 kcal/ml (derived from Claims 7 and 9). The combination of an energy density of 1.3- 1.8 kcal/ml with an amount of dietary fibre of more than 2.5 g/100ml is not clearly and unambiguously derivable from this document. [3.1.3] The board therefore notes that novelty of the claimed composition is given irrespective of the technical meaning of the wording “for use in promoting gut health in an elderly patient”. [3.2] In order to assess whether the feature in Claim 1 “… for use in promoting gut health in an elderly patient” has merely a descriptive character or represents a further technical feature with the result that Claim 1 has to be considered as a claim in accordance with a first medical indication in analogy to A 54(4), the relevant question to be answered is whether the intended use represents a treatment by therapy in the sense of A 53(c). Considering that malnutrition is a cause of digestive and gastro-intestinal disorders, associated with gut discomfort and pain, the invention aims at providing a nutritional composition to regulate gut motility and improve digestive tract health. In the board’s judgment, alleviation of pain and suffering by promoting gut health in applying measures which regulate gut flora and improve intestinal transit are therefore therapeutic measures (at least in the sense of prophylaxis) for preventing malfunctions or illness of the human body. This view is in line with the definition given for therapy in the case law of the boards of appeal where it is stated that therapy “clearly relates to the treatment of a disease in general or to a curative treatment in the narrow sense as well as the alleviation of the symptoms of pain and suffering” (e.g. T 144/83 [3]). As regards the reference “in an elderly patient” this implies a clear limitation of the therapy to this demographic group. It is only plausible that different age groups have different needs concerning the nutrition (e.g. due to a change in the metabolism with age). Thus, in analogy to A 54(4) (“first medical use of a known compound”) Claim 1 is directed to a purpose-related product. 2744 | 3398
T 1002/09 – Improving Gut Feelings
K’s Law – The ebook
If you wish to download the whole decision, please click here.
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T 996/09 – Silence With Consequences
K’s Law – The ebook
T 996/09 – Silence With Consequences 23 Sep 2010
Once a Board has ordered the Opposition Division (OD) to maintain a patent in amended form with an adapted description, one might think that the opposition proceedings will come to an end soon. The present decision shows a case where the OD messed things up at such a late stage. It’s amazing to see how many procedural violations were made by a little silence. A 113(1) - Right to be heard [1] According to A 113(1), a decision of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comment. The right to be heard is a fundamental guarantor for the parties that proceedings before the EPO will be conducted fairly and openly (cf. J 20/85, [4(a)] and J 3/90) and is intended to ensure that the parties to the proceedings are not taken by surprise by grounds mentioned in an adverse decision (cf. inter alia T 669/90; T 892/92; T 594/00 and T 343/01, see “Case Law of the Boards of Appeal of the EPO, 5th edition 2006, VI.B.1, page 322). According to the constant case law of the Boards of Appeal, the infringement of the right to be heard is a substantial procedural violation that justifies the reimbursement of the appeal fee (cf. “Case Law”, supra, VII.D.15.4.3, page 655). [2] In inter partes proceedings the right to be heard is inextricably linked to the principle of equal rights which requires the opposition division (OD) to ensure that the parties can exchange their submissions in full and have equal opportunity to comment on them. Furthermore, the parties can legitimately expect to be informed about the conduct of the proceedings (cf. “Case Law”, supra, VI.A.1, page 311 and VII.C.2, page 533). [3] In the present case, the board notes that, in the first appeal proceedings, the decision of the then competent board was sent to the parties on 6 February 2008. In a communication pursuant to A 101(1) and R 81(2) to (3) sent to the parties on 16 April 2008, the OD requested the patentee to provide, within a period of four months of notification of the communication, a description adapted to claims 1 to 27 of the first auxiliary request filed during the oral proceedings (OPs) before the board. [4] On 28 April 2008, opponent 04 inquired by fax […] whether the OD wanted the opponents to file observations within the same time period set for the patentee in the above communication or, whether it intended to set the opponents a period for observations once the patentee/respondent had filed an adapted description. Precautionary, opponent 04 also requested OPs before any decision of the OD was taken. No reply was given to that enquiry of opponent 04 by the OD. [5] In the absence of any reply from the OD, opponent 04 filed by fax of 14 August 2008 […] eight pages of observations on the criteria to be used for adapting the description and on the paragraphs of the description which, in its view, required such adaptation. On 20 August 2008, the OD forwarded these submissions to the other parties […]. [6] On 28 August 2008, the patentee provided by fax […] the adapted description, which, as shown by enclosed copies of a patentee’s letter and of an acknowledgment of receipt by the EPO, had already been sent to the OD on 31 July 2008. No mention was made in these submissions to those filed by opponent 04 on 14 August 2008 nor could any have been made since they were earlier […] than those made by opponent 04. OPs were also precautionarily (sic) requested in case of a decision of the OD adverse to the patentee/respondent. On 4 September 2009, the OD forwarded these submissions of the patentee to all opponents, including opponent 04. No comments were made to the submissions of the patentee or to those of opponent 04. The OD set a time period of 2 months for the parties to file observations. This time limit expired with no submissions received from any of the opponents, not even from opponent 04. [8] The now appealed interlocutory decision was issued on 13 March 2009 by the OD without further submissions from the parties or a communication from the OD. 2746 | 3398
T 996/09 – Silence With Consequences
K’s Law – The ebook
[9] In view of the above indicated course of events in the opposition proceedings, the board considers that the OD failed to clearly inform the parties on both its opinion and its intentions and, as a result thereof, the parties were taken by surprise by the OD issuing an interlocutory decision without sending a further communication to the parties or summoning them to OPs. The mere forwarding of the patentee’s submissions with the adapted description cannot be seen, in the absence of any comment, as an acknowledgment by the OD of not having any objections thereto, let alone that this description overcame those objections raised by opponent 04 in its letter of 14 August 2008. All the less so, since no reply had ever been given to opponent 04 submissions by the OD or by the patentee in any of its submissions. Although, by forwarding the patentee’s adapted description to the opponents, the OD gave them an explicit opportunity to comment on that description, the fact that opponent 04 did not seize this opportunity - not even by way of back-reference to its submissions of 14 August 2008 - cannot be considered as an acknowledgment of its agreement with that description or as a withdrawal of all its objections raised earlier in the proceedings. In the absence of any reply to its submissions of 14 August 2008 by the OD or of any comment thereto by the patentee, opponent 04 could not have expected that these submissions would have been merely disregarded by the OD and that an interlocutory decision would immediately be issued by the OD without previously informing the parties of its intention. The more so, in view of the fact that its precautionary request for OPs filed on 28 April 2008 had never been withdrawn. [11] In line with the above mentioned principles of good faith governing procedural matters between the EPO and the concerned parties, as established by the constant case law of the Boards of Appeal, the board considers that, in the present case, the OD contravened the requirements of A 113(1). R 111(2) - Form of the decisions [12] According to R 111(2), decisions of the EPO which are open to appeal shall be reasoned. The failure to provide adequate reasoning in a decision at first instance in accordance with R 111(2) is considered by the established case law of the Boards of Appeal to be a substantial procedural violation in itself justifying the reimbursement of the appeal fee (cf. “Case Law”, supra, VII.D.15.4.4, page 657). [13] In the present case, the board notes that, in the decision under appeal, no reference is ever made to the submissions of opponent 04 filed on 14 August 2008 - not even in the “Summary of Facts and Submissions”. In that part of the decision under appeal, it is only stated that no comments or observations were received in reply to the communication of the OD dated 4 September 2008, wherein the amended description and documents filed by the patentee on 28 August 2008 were forwarded to the opponents. Nevertheless, as stated [above], opponent 04 submitted, at an earlier stage of the procedure, observations and objections in its letter dated 14 August 2008. [14] Even if the OD would have considered the arguments and submissions made by opponent 04 in its letter of 14 August 2008 as not admissible or irrelevant, for which there is not a shred of evidence on file, the OD could not simply have ignored them, but should have reasoned its decision according to R 111(2), in order to give the party a fair idea of why these submissions were not considered convincing or inadmissible, if at all. [15] So far the appealed decision was taken without any consideration of opponent 04’s submissions of 14 August 2008, which were not even mentioned by the OD, the decision under appeal should be considered as based on inadequate reasons or at least as not sufficiently reasoned and thus, not fulfilling the requirements of R 111(2). A 116(1) - Oral proceedings [16] Whereas A 113(1) establishes the parties’ right to be heard in general, A 116(1) establishes in particular the right to OPs at the request of any party. According to the case law of the Boards of Appeal, the right to OPs is an extremely important procedural right which the EPO should take all reasonable steps to safeguard. If a request for OPs has been made, such proceedings have to be appointed. This provision is mandatory and leaves no room for discretion. If such a request is ignored, even due to an oversight, the decision must be set aside as null and void (cf. “Case Law”, supra, VI.C.1, page 333). In line thereof, the established case law of the Boards of Appeal considers also the infringement of A 116(1) to be a substantial procedural violation justifying in itself the reimbursement of the appeal fee (cf. “Case Law”, supra, VII.D.15.4.2, page 654). [17] In the present case, the board notes that, in its letters of 28 April 2008 and 14 August 2008, opponent 04 unambiguously requested OPs before any decision being taken by the OD.
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T 996/09 – Silence With Consequences
K’s Law – The ebook
[18] As stated in point [13] supra, none of these letters is mentioned in the decision of the OD dated 13 March 2009 and now under appeal. It becomes apparent that they were merely ignored by the OD since, at no moment in the opposition proceedings, the OD gave the parties any information about its opinion on these requests for OPs from opponent 04 nor was any reason given in its final decision for not granting them. [19] In line with the above mentioned case law of the Boards of Appeal, all parties to the opposition proceedings and, in particular opponent 04, could legitimately have expected to be informed by the OD in case that it did not intend to grant these requests for OPs and, in that case, to be given the opportunity to comment on such an important procedural issue. [20] Therefore, in view of the facts of the present case, the board considers that, for this reason alone, a substantial procedural violation has occurred in the first instance proceedings and that the requirements of A 116(1) had not been fulfilled. The Board then remitted the case to the first instance. It may be a detail without importance, but I am astonished to see how often the Board cites the Case Law book, indicating even the page number, instead of citing the relevant decisions given therein. If you wish to download the whole decision, please click here. NB: This decision has also been discussed here.
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R 20/09 – The R 104 Guillotine Again
K’s Law – The ebook
R 20/09 – The R 104 Guillotine Again 22 Sep 2010
Most readers of this blog are certainly aware of the fact that petitions for review hardly ever succeed. This is essentially due to the fact that the lawmaker gave these proceedings a very limited domain of application. A 112a(2), together with its implementing rule R 104, provides a very short list of grounds, and the Enlarged Board (EBA) recently ruined the hopes – based on the word “may” in R 104 – that this list was not exhaustive (see the recent post on R 16/09). The present decision gives yet another case where the A 112a(2) + R 104 guillotine was applied. The petitioner complained that it had been refused a fair trial in case T 2351/08. The case underlying the petition appears to be one of those (hopefully, rare) cases where things get out of hand and accusations fly. Apparently, the petitioner suspected Board members of having “fixed” the minutes, in particular to prepare disciplinary proceedings against one of its representatives (The file is not very clear on this matter but it could be related to the fact that a person accompanying the representative declared at the end of the oral proceedings (OPs) that he had recorded the proceedings, which is strictly forbidden.) Obviously, most of the relevant documents are not open to public inspection, so it is impossible to have a clear idea of what was going on. Be that as it may, the petition did not survive the guillotine test. The petitioner filed two petitions: a first one “by way of precaution”, based on the minutes of the OPs, and a second one “merely by way of precaution”, after it had received the decision in writing. *** Translated from the German *** [3.1] In the first request/submission the petitioner asserted that a substantial procedural violation falling under A 112a(2)(d) had occurred because there had been, as the petitioner put it, a “violation of the right to a fair trial (Verfahrensgestaltung)”:
The minutes of the proceedings did not contain a summary of the facts (R 102 (f)) and the indication of the reasons (R 102 (h)) was missing. Therefore, the decision concerning the appeal could not be understood at all. This could not have been objected to during the proceedings on September 8, 2009.
The Board had not accepted to insert certain legally relevant statements of the representative of the petitioner into the minutes of the proceedings.
As far as the Annex A of the request for insertion into the minutes (Protokollierungsantrag) was concerned, the minutes contained a presentation of the course of the OPs and of the requests filed by the petitioner that was abbreviated beyond recognition.
The minutes did not contain any decision on the requests that had been filed orally or in writing during the proceedings.
The Board was not competent for excluding documents from public inspection.
Notwithstanding relevant remarks made by the representative of the petitioner, the Board could not be brought to act in a comprehensible way and to hear or to take into account the evidence produced. As the Board had not made statements as to the substance during the proceedings, it was not possible, in spite of repeated remarks, to find out whether the Board had “finally intellectually assimilated” a certain submission of the representative which was decisive in the eyes of the petitioner.
[3.2] None of these procedural shortcomings – assuming that the elements cited are indeed shortcomings and have existed – is cited in R 104 or elsewhere in the Implementing Regulations. The representative of the petitioner appears to have missed that, according to the express wording of A 112a (2)(d), other severe procedural defects can only be considered if they are cited in the Implementing Regulations.
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R 20/09 – The R 104 Guillotine Again
K’s Law – The ebook
The assertion that the minutes did not contain any decision on the requests that had been filed orally or in writing during the proceedings, is, as regards content, only an objection against the minutes (Protokollrüge), that is to say an objection against the incompleteness of the minutes of the proceedings, and does not qualify as substantiation of a severe procedural defect under R 104 (b), all the more as the petitioner did not indicate any concrete request that was relevant for the proceedings and which had not been decided upon. [3.3] The assertion of the petitioner that it had objected to this “way of proceeding” during the OPs as a violation of its right to be heard (A 113, A 112a(2)(c)), which was also stated in the minutes – although “mutilated beyond recognition”, cannot change this: deficient minutes, lack of competence of the Board for deciding on exclusion from public inspection, or the impossibility of knowing whether the Board had “finally intellectually assimilated” a certain submission of the representative cannot constitute a violation of A 113 within the meaning of A 112a (2)(c), even on a conceptual level, and, therefore, even less so a severe violation of this provision. [3.4] In its second statement of grounds for the request […] the petitioner pointed out: [3.4.1] During the OPs, the representatives of the petitioner came to the conviction, in view of the announcement of the Board that it would refuse to hear and to take into account evidence that had been produced, scientific publications and the arguments of the petitioner, that the right of the petitioner to be heard had been violated; they insisted that the deficiency had to be remedied. A petition for review would not become necessary if the Board granted the right to be heard and took into consideration the facts, evidence and arguments presented when drafting its decision. As regards content, this does not go beyond the request dealt with above under paragraph [3.3]. Whether facts, evidence and arguments are taken into account concerns the correctness of a decision as regards its substance, whereas A 113(1) relates to the question of whether the parties to the proceedings were able to express themselves in respect of the reasons on which the decision is based, irrespective of whether they are correct or not. The nature of the reasons is often only clear from the (written) reasons; as a matter of fact, there is no obligation to raise objections under R 106 in this case, because “such objection could not be raised during the appeal proceedings”. Alternatively, if the basic reasons of the decision to be taken can be foreseen during the proceedings, one has to assume that the parties were able to express themselves in this regard within the meaning of A 113(1), unless they were hindered from doing so by concrete circumstances, such as a certain way of proceeding of the Board during the OPs. Whether a representative assesses things differently and, therefore, feels compelled to raise an objection during the OPs is not relevant, neither for [answering] the question of whether this objection qualifies under R 106 (a question that the Board expressly leaves open here, because it is not relevant for the decision […]), nor for the requirements under A 113(1), that is to say that the reasons under considerations have to be decisive for the decision. The petitioner did not make any statement in this respect. [3.4.2] Moreover, the submission points out that one could not seriously consider that reasons for the decision posted on February 19, 2010, at a time when the first request for petition was already known, have anything to do with the decision announced on September 8, 2009, or could support the latter […]. The reasons for the decision omitted facts that were relevant for the decision but contained unimportant passages which were legally irrelevant with respect to the decision […]. Neither in the OPs nor in the reasons for the decision had the Board dealt with the relevant assertions of the petitioner as given in its submission of September 7, 2009 […]. The intrinsic contradictions contained in the decision announced on September 8, 2009 had not been dissolved by the reasons for the decision but had even been amplified. This submission is limited to sweeping statements and judgments that are not understandable on a factual level (sachlich nicht nachvollziehbar). It was not indicated, nor is it obvious, which of the grounds for setting aside a decision mentioned in A 112a and/or R 104 had been realized. As a general rule, an (alleged) deficiency of a decision of a Board of appeal in respect to its substance does not fulfil the requirement. [3.4.3] The petitioner further submitted that the reasons given for rejecting the request for insertion into the minutes of the statement of the [patent proprietor], also contained in Annex A, were incorrect and were contradictory with respect to the other entries into the minutes (Protokollierungen) which partly pursued objectives that were alien to the proceedings, that is to say the initiation of disciplinary proceedings against one of the representatives of the petitioner. Such proceedings were indeed initiated following a complaint (Anzeige) of the representative of the patent proprietor and respondent. It appeared likely (liege nahe) that there had been a consultation between the latter and the chairwoman, which had left the Board shortly after the drafting of the reasons for the decision. The chairwoman had abused her powers to decide on the content of the minutes by not recording in writing legally relevant explanations of the parties and by recording “alleged declarations” which were not to be mentioned in the minutes, according to the rules established by herself […], in order to pursue objectives that were alien to the proceedings. There were no precise reasons for the exclusion from file 2750 | 3398
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inspection in the reasons for the decision. The way in which the Board proceeded, which incidentally exceeded the competence entrusted to it, was only understandable if such circumstances alien to the proceedings played a role. As far as these submissions are to be understood as an objection of partiality of the chairwoman, it is to be noted that, in the absence of any objection of any of the parties under A 24(3) there has not been a decision on this matter. However, such a decision is a requirement for a situation (Tatbestand) to which A 112a (2) (a) is directed. The Board cannot see how a decision on exclusion from public inspection could give rise to a ground for setting aside a decision under A 112a(2) and/or R 104 c, and the petitioner has not brought forward any arguments in this regard. [3.4.4] Finally the petitioner pointed out that, as could be seen from the reasons for the decision, the Board considered itself entitled not to take into account submissions and arguments of the petitioner as well as documents it had filed, as being belated. This was based on a wrong understanding of the case law with respect to A 114(2). Proceedings before the Board of appeal were similar to court proceedings (gerichtsähnliches Verfahren). As a matter of fact, an independent examination of administrative acts of the Examining and Opposition Divisions by the Boards were only possible if the principle according to which the Board was to examine [the case] of its own motion (Amtsermittlungsgrundsatz) was to be applied without any limitation, which means that, in application of A 114(1), a Board has to take into account all the matter at issue (Prozessstoff) in order to come to a decision that is correct as far as the substance of the case is concerned (materiell richtig). A 114(2) would not lead to a different conclusion. Rather, the Board had violated R 116(1) because the summons to OPs did not contain any indication to questions that had to be discussed and no point in time before which preparatory submissions had to be filed. As a consequence, the Board had not prepared the OPs as required, which in itself was sufficient for making it impossible not to take into account facts and evidence as well as grounds for opposition and appeal, lest the right to be heard of the petitioners then acting as appellant be violated. Article 10a of the Rules of Procedure, which had not been adopted by the Contracting states as such but only by the President, was based on a misunderstanding in regard of the position of the Boards. Moreover, Article 18 RPBA provides that the Rules of Procedure shall be binding upon the BA, provided that they do not lead to a situation which would be incompatible with the spirit and purpose of the Convention. Discretion as to whether the Board admits grounds of appeal, and if so, which grounds, and discretion as to which facts and evidence the Board takes into account and, therefore, which facts it decides upon, would lead the principle according to which a Boards is to examine [a case] of its own motion (Amtsermittlungsgrundsatz), as well as the spirit and purpose of the EPC expressed therein, ad absurdum and was, therefore, not covered by the EPC. The Board had not considered any of this in the proceedings; the reasons drafted by the chairwoman of the Board were also silent on this topic. Thus the decision was deficient for having violated the right to be heard and was to be set aside […]. Apart from the fundamental misunderstanding concerning the regulatory content (Regelungsgehalt) of A 114 expressed in this reasoning, a violation of this provision is not a situation (Tatbestand) to which A 112a (2) (a) and/or R 104 are directed. In the absence of arguments, it is not comprehensible how this [situation] constituted a violation of the right to be heard. Moreover, the Board once more points out that the correctness of a decision, as regards its substance, is not object of proceedings under A 112a, and that – quite in keeping with the predominant practice of national courts – under Article 5(5) RPBA the mandatory written reasons for decisions of Boards of appeal are “drafted” by the rapporteur and not by the chairman or chairwoman, who (together with the Registrar) authenticates the decision by signature (R 102). Also, the Rules of Procedure of the Boards of Appeal are not adopted by the President (of the EPO or any other institution). In this respect the submissions (of the representative) of the petitioner are inconsistent with the applicable law. [4] It is obvious from all that has been said that neither the proceedings preceding the impugned decision of Board 3.3.04 nor the decision itself allow to bring to bear any of the grounds for setting aside the decision mentioned under A 112a and/or R 104 and invoked by the petitioner. The request for petition is rejected as being clearly unallowable. Should
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wish
to
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the
whole
decision,
you
NB: This decision is being published simultaneously on Laurent Teyssèdre’s blog.
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can
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so
here.
T 737/08 – Can’t Have It Both Ways
K’s Law – The ebook
T 737/08 – Can’t Have It Both Ways 21 Sep 2010
This decision deals with an interesting configuration where several appeals were filed against the revocation of the patent by the Opposition Division: one by a licensee, another one by the official patentee and a third one by a company to which the patent had been (unofficially) transferred. The opponent thought that not even one of them should be admitted. The Board disagrees. Appeal of Appellant I, H3B Holdings Ltd [1.1] A notice of appeal requesting that the decision be set aside was filed by this appellant on 8 April 2008, asserting that it was “Master Licensee” acting on behalf of the proprietor of the patent in suit, namely “Franz Haase” (Appellant II). However, H3B Holdings Limited did not claim to be and was not at the time either the proprietor of the patent in suit (see below) or able to represent the proprietor in proceedings before the EPO (see A 134(1)). For this reason alone, this appeal must be rejected as inadmissible. Appeal of Appellant II, Franz Haase III [1.2] A notice of appeal was filed by a representative on behalf of this appellant on 10 April 2008, claiming to be the registered proprietor. The patent in suit had been granted in the name of Franz Haase III, who also was and still is named as proprietor in the Register of European Patents, and who as proprietor was also a party to the decision to revoke the patent. Prima facie therefore, the notice of appeal was filed by a person adversely affected by the decision to revoke the patent (A 107). A statement of grounds of appeal was subsequently filed on behalf of this appellant on 11 June 2008. [1.3] However, the above notice of appeal filed on behalf of Appellant II also stated that there had been a transfer of rights from Franz Haase III to Kwench Systems International LLC (Appellant III) and that “for the avoidance of doubt” notice of appeal was also given on behalf of Appellant III. A single appeal fee was paid. At that stage, no evidence of any transfer had been filed with the EPO, no request had been made to register any such transfer and no appropriate transfer fee had been paid. The notice as signed by the representative was followed by the words “Professional Representative for Kwench Systems International LLC, Association No. 177”. [1.4] The Respondent argues that the appeal by Franz Haase III is inadmissible. It is argued, first, that while it is legitimate to file a single appeal in the name of alternative appellants where there is uncertainty as to the correct appellant (see G 2/04 [3.2]), in the present case there was no uncertainty because no transfer of proprietor had been requested and so no appeal could have been filed on behalf of Appellant III. However, the Respondent goes on to argue that no appeal could have been filed on behalf of Appellant II either since at the relevant time it was no longer the proprietor of the patent. The Board understands this to be a reference to the fact that a transfer of the patent, based on an assignment dated 22 September 2005, had in fact been registered in the United Kingdom register of patents on 22 May 2006. Although the Board considers this latter argument to be wrong (see paragraph [1.8]), the Respondent cannot have it both ways: the mere fact of the argument, even if wrong, shows that it was legitimate for a notice of appeal to be filed in the names of alternative appellants. [1.5] The Respondent argues, secondly, that the notice of appeal was filed by the representative expressly on behalf of Appellant III, and therefore was not filed on behalf of Appellant II. Further, although an earlier authorisation dated 28 November 2006 had been filed by the representative, this named Franz R. Haase as the client and there was nothing to show that this was the same person as Appellant II (Franz Haase III). In any event, at this date, the United Kingdom patent had already been transferred to Appellant III and so the authorisation could not have been effective. [1.6] The Board cannot accept these arguments. Although the words underneath the signature to the notice of appeal indicate that the representative was acting on behalf of Appellant III, this does not contradict the earlier statement in the notice that the notice of appeal was also given on behalf of the registered proprietor, Appellant II. Subject to the point made by the Respondent about the precise identity of the client, the representative had 2752 | 3398
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K’s Law – The ebook
been acting for Appellant II in the opposition proceedings and there is nothing to suggest that he no longer had authority to act when the notice of appeal was filed. Given the background circumstances, the ordinary reading of the notice is also that the representative was claiming authority to act for both named appellants. As to the identity of his client, the Board has no reason to believe that Franz R. Haase was not the same person as Appellant II (Franz Haase III). The letter dated 20 December 2006 enclosing the authority ran as follows: “Re: EP 1,132,528 B1 Proprietor: Haase, Franz III .... I act on behalf of the proprietor (Franz Haase) of the above patent, and enclose a copy of a letter dated 28th November 2006, which authorises [the representative’s firm] to represent the proprietor in relation to patents held in his name. ...” The position could hardly have been clearer. [1.7] The appeal of Franz Hasse III is therefore admissible. Appeal of Appellant III, Kwench Systems International LLC [1.8] For a transferee of a patent to be entitled to appeal, the necessary documents establishing the transfer, the transfer application and the transfer fee must all be filed before the expiry of the period of appeal: see T 656/98 [headnote]. This was not done in the present case, so that as far as the EPO is concerned Franz Haase III was still the proprietor at the date of the notice of appeal. On any basis therefore, this appeal must be rejected as inadmissible. Should you wish to downlaod the whole decision, just click here. NB: This decision has already been reported on Laurent Teyssèdre’s blog.
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T 313/07 – Wrong Approach
K’s Law – The ebook
T 313/07 – Wrong Approach 20 Sep 2010
Claim 1 of the main request (identical to claim 1 as granted) read : 1. A whey protein dominant baby milk food including hydrolysed food obtainable [in] that those whey proteins or whey powders, which are normally employed in the form of whey powders and/or whey protein concentrates for the production of baby milk foods, are used which originate from a) sour whey and/or b) GMP-free or GMP-reduced sweet whey and which have not been subjected [to] any other change with respect to their protein composition. NB: GMP is short for the milk protein glycomacropeptide. The Board deals with the ground for opposition under A 100(b). Having rejected a first argument of the opponent, the Board then goes on to say: ** Translation from the German ** [4.1.2] The other objection [set forth] by the opponent pursuant A 100(b) EPC 1973 is essentially based on [the argument] that the “product-by-process” wording of claim 1 makes it impossible to unambiguously characterise the product. For instance, the starting material is partly subject to considerable variations with respect to the protein profile. Moreover, the feature “which have not been subjected to any other change with respect to their protein composition” was not sufficiently well defined. The skilled person being in possession of the final product could not know whether or not he was within the scope of the claimed invention, i.e. whether or not he infringed the patent. First it has to be established that A 100(b) and A 83 EPC 1973, respectively, do not concern the question of whether a patent is infringed. Theses articles rather concern the disclosure of the invention, i.e. the question of whether the European patent discloses the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. However, as far as the present “product-by-process” claim is concerned, it is possible to carry out the invention, for the following reasons: According to claim 1 as granted whey proteins or whey protein hydrolisates made from a) sour whey and/or b) GMP-free or GMP-reduced sweet whey are to be used. The skilled person trying to carry out aspect b) of the invention, therefore, has to completely or partly remove the GMP from the initial sweet whey. Moreover, the impugned patent unambiguously teaches that besides the step of removing or reducing the GMP, which can be carried out according to document D20 cited in the patent or according to other known processes, and the optional hydrolysis the protein composition must not be modified. There cannot be any doubt that the skilled person can carry out these process steps using very different starting products and, therefore, carry out the invention. This also means that whosoever carries out the invention also knows which process steps he has carried out. Therefore, he always knows whether he was within our outside the claimed domain of protection. This is why the present case is not comparable with the problems which T 256/87 and T 252/02 had to deal with. These cases concern the question to which extent an incompletely defined measuring method could have a negative impact on the possibility to carry out the invention. [4.1.3] The objection of the opponent under A 100 b) EPC 1973 appears to be motivated by the consideration that there could be products which could be identical with the subject-matter of claim 1 in spite of having been produced with a different process. Thus, as a consequence of the varying protein profiles of the starting sweet whey, whey proteins obtained without any GMP reduction could be identical with whey proteins obtained from different sweet whey via GMP reduction. However, the Board is of the opinion that such considerations cannot be treated under A 83 or A 100 b) EPC 1973, respectively. If a whey protein dominant baby milk food 2754 | 3398
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K’s Law – The ebook
containing such identical whey proteins, which had been obtained without a GMP reduction/removal, was available before the filing or priority date, as the case may be, this would have to be taken into account under A 54. In this case the “product-by-process” feature of the claim could not establish novelty any more. If a whey protein dominant baby milk food containing such identical whey proteins was made available to the public only after the filing or priority date, this could indeed constitute an infringement of the patent. This however is not to be decided by the EPO in opposition appeal proceedings. To read the whole decision (in German), you may click here.
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R 16/09 – Woe To Him That Addeth …
K’s Law – The ebook
R 16/09 – Woe To Him That Addeth … 18 Sep 2010
This decision has also some interesting paragraphs on partiality and the precise interpretation of A 112a and its implementing rule: R 104. [2.3.1] The petitioner contended at the OPs before the EBA that a fundamental violation of any general procedural principle may be a procedural defect “defined” in A 112a(2) (d) and its implementing rule R 104. It deduced from the word “may” in R 104, “a fundamental procedural defect may have occurred …” (emphasis by the EBA) that the two defects were to be understood as members of a list which is not exhaustive. It referred to J7/83 for the definition of a procedural violation and to G 9/91 for the general principle of impartiality. [2.3.2] Under the heading of “violation of the principle of impartiality” the petitioner complained about a wrong exercise of its discretion by the Board of Appeal which refused to admit the proposed auxiliary request in circumstances where it was expected to be admitted according to the general practice and case law of the Boards of Appeal and the personal experience of the representative. [2.3.3] The EBA finds it necessary to make it clear that the principle of impartiality according to the EPC and, also in its natural and ordinary meaning, does not cover the currently alleged procedural defect. Under the EPC, this principle addresses the question of suspected partiality of the members of the Board of Appeal pursuant to A 24. The violation of this principle is mentioned by A 112a(2)(a) which is clearly not applicable here. [2.3.4] Turning to what the petitioner is really complaining about, this appears in fact to be a criticism of the course of action taken, and of the merit of the decision made by the Board of Appeal on the admissibility issue, compared to the petitioner’s understanding of the case law. [2.3.5] That having been said, the EBA firstly notes that the alleged violation is not included in the list of fundamental procedural defects of R 104. This rule implements A 112a(2)(d) which provides: “any other fundamental procedural defect as defined in the Implementing Regulations”. The wording of A 112a(2)(d) is quite clear:
a petition for review can only be filed on the grounds it specifies it leaves it to the Implementing Regulations to define further procedural defects which may justify a petition for review. This implies that what is not defined by the Implementing Regulations does not qualify as a procedural defect in the sense of A 112a(2)(d).
Among the Documents of the Travaux préparatoires relating to the discussion of A 112a, Document MR/21/00,d,e,f which relates to A 112a is especially illuminating: Under the reasons given to explain the proposed wording of the paragraph (d) of the said article, which became the final wording, it is commented that “the proposed A 112a(2) lists the possible reasons for a ‘Petition for review by the EBA’. A 112a(2)(d) provides that further fundamental procedural defects on which a petition for review may be filed may be defined in the Implementing Regulations, if the need arises”. R 104 is the implementing rule providing two additional fundamental procedural defects to wit, (a) the Board did not hold OPs despite a request to this end; or (b) it omitted to decide upon a request. Consequently it is clear that the list of grounds specified in A 112a is exhaustive and if an alleged defect which is neither on the list of A 112a nor one defined by its implementing rule it cannot form a basis for a petition for review. [2.3.6] Since the list of grounds for review mentioned in R 104 is exhaustive and since the Board decided on the request to file an auxiliary request R 104 is of no relevance here, and the arguments of the petitioner based on this rule must fail.
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R 16/09 – Woe To Him That Addeth …
K’s Law – The ebook
[2.3.7] Secondly, as already noted above […], the Board of Appeal exercised the discretion provided by Article 13 RPBA; the petitioner admitted that it was a matter of discretion but criticised the way in which the Board of Appeal exercised it referring to particular decisions of the Boards of Appeal. [2.3.8] In the light of the above, the EBA sees no procedural violation in the present case. In fact the petition seeks no more than a review of the Board of Appeal’s assessment of the circumstances and criteria it took into consideration in applying Article 13 RPBA. As is apparent from the case law of the Boards of Appeal, there is room for discretion of the boards of appeal when making the balance between the criteria and choosing to which precedence must be given with respect to the circumstances of each case. To find otherwise would require the EBA first to re-examine whether or not the Board of Appeal was right in its judgement, which is a substantive and not a procedural issue. [2.3.9] This review is thus outside the scope of A 112a which is an exceptional legal remedy limited to fundamental procedural defects in an individual case and not a means for further development of the EPO procedural practice or for ensuring a uniform application of the law, and under no circumstances can it be used to review the application of the substantive law. [3] Consequently the petition is clearly unallowable. Should you wish to download this decision, you can do so here.
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R 16/09 – Substance Does Not Always Come First
K’s Law – The ebook
R 16/09 – Substance Does Not Always Come First 17 Sep 2010
This petition for review was filed by the patent proprietor after its patent had been revoked in decision T 764/06. The proprietor was upset by the decision of the Board not to admit any auxiliary requests during the oral proceedings (OPs), a decision taken before the proprietor could explain the subject-matter of the auxiliary requests. The petitioner based its petition on two alleged defects: a violation of the right to be heard (A 112a(2) (c) and A 113) and a violation of the principle of impartiality, A 112a(2)(d) and R 104. We will deal only with the first defect today and leave the impartiality argument for a subsequent post. [2.1] […] In its oral submissions the petitioner fastened on the fact that it had been heard only on admissibility issues in general and not on the subject-matter of the proposed auxiliary request, and could not comment on the substance; this amounted, in its view, to a violation of its right to be heard. In addition, the fact that the Board of Appeal had refused the filing of auxiliary requests without knowing the subject-matter thereof amounted to an abuse or a misuse of discretion and also to a breach of the principle of impartiality because in such circumstances it was general case law of the Boards of Appeal to admit new requests. The right to be heard [2.2] The petitioner focused on the allegation that the Board of Appeal misused its discretion because it decided in general without a proper set of claims in hand, leaving the petitioner no opportunity to comment on the subject-matter. In other words, if the Board of Appeal had let the petitioner expand on the technical issues of a precise set of claims, it would at least have stood a chance. [2.2.1] Considering the facts […], the petitioner had been aware of the new challenge under A 100(c) raised by the opponent II in the grounds of appeal three years prior -to the oral proceedings (OPs) before the Board of Appeal. It had objected in its written submissions of 5 March 2007 and 29 December 2008, to the admissibility of this objection and also replied concerning its merits […]. The petitioner chose not to file an auxiliary request because it was sure that this new attack under A 123(2) was scientifically hopeless, as it argued during the OPs before the Enlarged Board (EBA) and had contended in its written submissions in appeal […]. It is thus important to note that it was only during the closing stages of OPs before the Board of Appeal, when it became clear that its main and sole request would not be allowed, that the petitioner started to express its intention to present an auxiliary request, and this evidently in the absence of a prepared set of claims in text form. Consequently the request of the patent proprietor is to be understood as a request for authorisation to file at least a set of claims as an auxiliary request. Under these circumstances, where there had been opportunities to file auxiliary requests far earlier […], the Board of Appeal dealt with this last minute attempt by the petitioner to change the course of events, as an announced amendment to the case pursuant to Article 13 RPBA. This article leaves to the discretion of the Board of Appeal the question of the admissibility of amendments to a case. [2.2.4] Article 13 RPBA makes a distinction between any amendment to a party’s case made after the filing of the grounds of appeal or the reply (Article 13(1)), and amendments sought to be made after OPs have been arranged (Article 13(3)). This article furthermore gives in paragraph (1) examples of criteria to be taken into consideration by the Board of Appeal when exercising its discretion: complexity of the new subject-matter, current state of the file and the need for procedural economy. In compliance with the wording of Article 13(1) RPBA which refers to the criteria as “inter alia” the boards of appeal have applied these criteria in different combinations depending on the circumstances of the case, considering them as exemplary and not cumulative. Therefore in the EBA’s view a situation may arise where the importance of one of them may outweigh the others.
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R 16/09 – Substance Does Not Always Come First
K’s Law – The ebook
[2.2.5] The question to be decided with respect to the alleged violation of the right to be heard, is whether the Board of Appeal decided not to admit auxiliary requests without giving the petitioner the opportunity to comment on the issues on which it based its decision. [2.2.6] According to the petitioner, there was a debate about the forma1 admissibility of new requests; as it appears from its written submissions and as acknowledged during the OPs before the EBA, it was not limited in its pleading for the admissibility of auxiliary requests. It could explain the reasons why it intended to file this request, in particular the absence of a preliminary communication from the Board of Appeal informing it that the objection under A 100 c) would be admitted. [2.2.7] It is evident from […] the Reasons of the decision under review that the criteria which weighed :’ with the Board of Appeal were as follows: “It was clear in the given circumstances, that amended sets of claims, even if they were found to meet the requirements of A 123(2) (the same requirements as under A 100(c)), would have had to be examined in respect of all other formal and substantive requirements of the EPC, the board and the opponents not having had the opportunity for the necessary discussion of all issues raised by the amended claims, which were unknown to them and whose filing they didn’t expect given the late stage of the proceedings and the respondent’s behaviour up to then (cf. A 13 (3) EPC (sic): ‘Amendments sought to be made after OPs have been arranged shall not be admitted if they raise issues which the Board or the other party cannot reasonably be expected to deal with without adjournment of the OPs’)”. [2.2.8] In other words, the Board of Appeal evidently exercised its discretion on the basis of all the exemplified criteria: the procedural stage which had been reached (terminally late), the subject-matter proposed to be admitted (an amended set of claims with the associated need for full examination) as well as the unexpectedness of the proposa1 […] which would militate against the need for procedural economy. [2.2.9] Consequently, the EBA is satisfied that the petitioner could submit its arguments about the procedural issues on which the Board of Appeal based its decision to refuse auxiliary requests, especially the possible exceptional circumstances namely the reasons of a such late filing, put forward to justify the late filing. [2.2.10] Seen against this background, the main argument of the petitioner, that no opportunity was given to speak to the subject-matter of the proposed auxiliary request, i.e. to the text of any amended claims to be filed is not relevant. [2.2.11] It is the view of the EBA that it belongs to the discretion of the boards of appeal to decide which criteria are to have precedence according to the circumstances of the case. [2.2.12] Much speaks, in the view of the EBA, for the criterion of lateness, in appropriate circumstances, to outweigh the criterion of the subject-matter to be submitted, in the exercise of discretion on admissibility of amended claims. [2.2.13] In fact, the EBA sees no legal basis for an obligation incumbent on the Board of Appeal to hear the petitioner on substantive issues before deciding the issue of admissibility of a proposed auxiliary request if, given the particular circumstances of the case, these issues are found not to correspond to the relevant decisive criterion. A requirement for a party in any case to be invited to formulate and supply a text before any decision is taken as to the admissibility of a proposed auxiliary request, regardless of the relevant surrounding circumstances, would in the view of the EBA be to deprive the boards of appeal of the discretion explicitly provided by Article 13 RPBA. [2.2.14] Equally irrelevant, and for the same reasons as set out above, is the petitioner’s argument that the Board of Appeal could not exercise its discretion in an informed and therefore appropriate way, in the absence of a knowledge of the text of the claims to be submitted. [2.2.15] This argument on which the petitioner insisted at the OPs before the EBA, is in any case weakened by the statements in its written submissions, according to which, firstly the specific crystalline modification of the compound which was the subject-matter of the patent in suit could only be claimed in an auxiliary request by additional physical measurement parameters […] and secondly, in view of the statements, appearing no less than three times in the petition for review, that it had been indicated by the Respondent to the Board of Appeal during the OPs that the auxiliary request to be filed “will be based on the set of claims as originally filed”.
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R 16/09 – Substance Does Not Always Come First
K’s Law – The ebook
[2.2.16] These written statements, which contrast with the thrust of the petitioner’s oral arguments before the EBA, tend to indicate that neither the Board of Appeal nor the other party could have been in any appreciable doubt as to what the text of the proposed auxiliary request would be. [2.2.17] Nor is it of any significance in the present case that the Board of Appeal had not issued a communication to inform the patent proprietor of its provisional opinion prior to the OPs. The critical issue had already been raised by the appellant in its statement of grounds of appeal […], three years before the OPs before the Board of Appeal. As results from Article 12 RPBA and as already recalled in the decision R 21/09 […], the framework of the appeal proceedings in inter partes cases as in any judicial procedure is also defined by the written submissions of the parties. This is also a particular consequence of the general procedural principle of party disposition as defined for example in G 9/92 [1]. The communication of the Board of Appeal, if any, is a means at the Board’s disposa1 to streamline the appeal proceedings and above all the OPs. […] [2.2.19] Consequently the EBA comes to the conclusion that the petitioner was fully able to explain its case as it stood at that time, when the only outstanding request, apart from the main request, was to be allowed to file an auxiliary request. Thus there was no violation of its right to be heard. Should you wish to download this decision, you can do so here.
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T 1052/07 – Unfair Criticism
K’s Law – The ebook
T 1052/07 – Unfair Criticism 16 Sep 2010
This decision also contains an interesting statement on the value of computer simulations: [4.3] It is also undisputed between the parties that the condenser of granted claim 1 differs explicitly from [the] prior art only in the additional presence of the SICC duct. The parties have however disputed whether this explicitly defined distinguishing feature also implies the inevitable achievement of the advantageous technical effect of the invention identified above over the whole claimed range, and, thus, of the solution of the technical problem of an increase in yield vis-à-vis the prior art. [4.3.1] The proprietor has argued in this respect that any technically reasonable realization of the features of claim 1 as granted implies sizing and arranging e.g. the SICC duct so that the entire circulation downwards only occurs through this duct and, thus, also inevitably implies that all of the condenser’s tubes are exclusively used for the carbamate condensation. Such exclusive use would then, for any given size of the condenser’s shell, necessarily correspond to an increase in the heat surface available for the condensation and, thus, in yield. The Board takes the view that such gain is substantial not only in the manifest case of the embodiments of the invention wherein the SICC duct is external, but also when such duct is arranged coaxially to the condenser shell. As also shown by the results of computer simulations reported in the grounds of appeal, in the latter case too the volume in the condenser’s intermediate section occupied by the coaxial SICC duct is significantly smaller than that occupied by the plurality of tubes required for the same circulation downwards in the condensers of the prior art. [4.3.2] The opponent has refuted the relevance of such results because computer simulations are, in its submissions, no reliable source of information. Hence, in the opinion of this Party, neither the patent-in-suit nor these results make it plausible that simply retrofitting the condensers of the prior art with a SICC duct would necessarily turn the tubes in these condensers previously used for the flow downwards of the carbamate solution, into tubes for the flow upwards of the reagent mixture for the carbamate condensation. Hence, the claimed subject-matter would embrace condensers in which the heat exchange surface would remain unchanged. Accordingly, the technical problem solved over the whole of the claimed range would merely be the provision of an alternative to the prior art. The Board then delves into the subject-matter and establishes that the technical problem put forward by the patent proprietor is indeed solved. It then continues: [4.3.3] […] This conclusion of the Board is not based on the results of the computer simulations which were provided by the proprietor without details of how these simulations were made. Nevertheless, in the absence of any evidence to the contrary, the Board finds unjustified the criticism of the opponent to their meaningfulness. Indeed, computer simulations are a standard tool for the evaluation and design of industrial chemical reactors. Moreover, it is apparent that these data only aim at quantifying the saving in volume obtainable when a single larger duct is used instead of a plurality of smaller tubes for fluid circulation, i.e. a saving in volume that the opponent itself has expressly acknowledged as self-evident. If you wish to download the whole decision, please click here.
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T 1052/07 – Hidden Depths
K’s Law – The ebook
T 1052/07 – Hidden Depths 15 Sep 2010
Decision T 131/01 is well known for having established that “in a case where a patent has been opposed under A 100(a) on the grounds of lack of novelty having regard to a prior art document and lack of inventive step having regard to the same prior art and the ground of lack of novelty has been substantiated pursuant to R 55(c), a specific substantiation of the ground of lack of inventive step is neither necessary nor generally possible without contradicting the reasoning presented in support of lack of novelty. In such a case, the objection of lack of inventive step is not a fresh ground for opposition and can consequently be examined in the appeal proceedings without the agreement of the patentee.” In the present case claim 1 was not opposed for inventive step but for novelty only. Later in the proceedings, the opponent made an inventive step objection against claim 1. The Opposition Division (OD) considered the case comparable to T 131/01. The patent proprietor objected that T 131/01 was not applicable situation, since in the case dealt with in T 131/01, an inventive step attack was submitted as a precaution in the notice of opposition itself. [1.1] The proprietor has disputed the finding of the OD that lack of inventive step had also been raised as a ground of opposition against claim 1. The only argument in this respect presented by the proprietor in the appeal proceedings is that the present situation is different from that considered in T 131/01, to which the Department of first instance referred in the decision under appeal. Indeed, in the present case no mention of lack of inventive step was contained in the notice of opposition. [1.2] The Board considers the proprietor’s argument insufficient already because there are other aspects in the notice of opposition and in the statement of grounds of opposition of the present case, that appear unambiguously indicative of an implicit objection of lack of inventive step against claim 1 as granted. Indeed, in the present case […], the box in the standard EPO form indicating that the patent-in-suit lacks of an inventive step is crossed, and the objection under A 56 explicitly raised and substantiated in the statement of grounds in respect of claims 2 and 3 dependent on claim 1, necessarily imply the same objection of lack of inventive step at least against those portions of the subject-matter of claim 1 corresponding to claims 2 and 3. Hence, the Board sees no reason to depart from the finding of the OD on this point. I wondered what was meant by “statement of grounds of opposition” as opposed to the notice of opposition. It turns out that the Board distinguishes between the EPO form 2300 (which corresponds to the “notice of opposition”) and its annexes (the “statement of grounds of opposition”). The expression is rare: only 39 decisions on the DG3 site contain it. If you wish to download the whole decision, please click here.
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K’s Law – The ebook
Birthday Musings
Birthday Musings 14 Sep 2010
It is one year ago today that this blog came into existence. It all started in a relatively spontaneous manner. Armand Grinstajn published some posts on decisions he had found interesting. He did not know whether this would become periodic, but he thought that daily publications were a good rhythm for a weblog. But would there be enough decisions worth reporting to keep this pace? It turned out that there would. Being an experimentalist, Armand decided that he would not do any advertising for his blog. He only left his url when making comments on other IP blogs. How long would it take to have readers? But this experiment came to a sudden end when Laurent Teyssèdre, to whose popular blog Armand had made some minor contributions, discovered the existence of K’s Law and informed his readers. Armand had made a mistake when giving pieces of information on himself. He had (rightfully) declared being a European patent attorney. As curious people looked up his name in the register and could not find it, trouble began. He was accused of being a deceiver, or alternatively of violating the rules of conduct by providing false information. His case was examined in higher spheres, but without much outcome. As the reason for having a pseudonym had disappeared in the meantime, it was decided that Armand should leave and Oliver take over. Now, one year later, the blog has a bit more than 100 visitors per working day; there have been almost 25000 visits so far. Readers appear to include patent attorneys, patent attorney candidates, but also EPO examiners and even some members of the Boards themselves. Where do my readers come from? Here is a graph provided by my web counter:
The great number of French readers has historical reasons ; their share is actually decreasing. The Netherlands were quite strong from the very beginning, but I have been told that EPO staff, even when located in Munich or Berlin, appear as Dutch when connecting from their workplace. I had relatively few UK readers until recently when Jeremy Phillips kindly mentioned the blog among other Wednesday Whimsies. Germany has not been very present until recently, either. I have no explanation to offer for the considerable number of American readers. One of my major disappointments concerns the comments left by readers. I had imagined that K’s law could call into being a web community of people interested by case law. It just did not happen. Most comments are anonymous, and sometimes we have those weird discussions between anonymi. This might be due to the fact that 2763 | 3398
K’s Law – The ebook
Birthday Musings
the blog is of a semi-professional nature and that the IP community is relatively small. As a matter of fact, most IP blogs are contaminated with the anonymity virus. I can fully understand that people do not wish to reveal their real identity, but there are other ways to stay under cover. On most blogs outside the IP domain which I follow, there are indeed communities, where people use pseudonyms. This allows to “get to know” each other without actually knowing each other’s names. On K’s law, I am always pleased to see Rimbaud or pat-agonia. I have no clue who they are, nor do I need to know, but they are people with a name. Pseudonymity allows for some warmth, whereas anonymity is utterly cold. But there is not much that I can do about that. Coming back to my own contributions, there have been 360 posts on about 340 different decisions. Looking back, I would say that the last year was not an outstanding vintage: as far as I can see, there have been no real landmark decisions. Still, I believe to have shown that there were lots of useful things to grasp. Will there be a full second season for K’s Law ? Honestly, I can’t tell. As you can imagine, there is much work behind such a blog. Any major event, be it professional or private, could take me out. Also, I do not believe that it is man’s chief end to glorify case law, and to enjoy it for ever, if you know what I mean. But for the time being, EPC case law blogging is still fun and I intend to have K’s law go on for some more time. See ya then!
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T 2043/07 – Not Quite Up To The Hilt
K’s Law – The ebook
T 2043/07 – Not Quite Up To The Hilt 13 Sep 2010
The present decision gives an example of how difficult it may be to convince the EPO that a prior use has taken place. [3] Lack of novelty has been alleged based on public prior use of the product D-KX412CS. [3.1] A number of pieces of evidence have been submitted in support of this objection:
[…] a copy of a writ served on the present appellant/opponent by the respondent/patent proprietor relating to infringement of a patent by D-KX412CS (D5); […] D16: two invoices relating to transactions involving 4000 kg and 3200 kg of D-KX412CS, the invoices bearing dates of 17 July 1997 and 11 November 1997; […] it was explained that the lot number indicated on the invoices forming D16 (670626) indicated that the product in question had been made on 26 June 1997; […] an invoice relating to a transaction involving 2140 kg of D-KX412CS. The invoice recorded the shipping date as 8 May 1996 and the date of receipt as 9 May 1996. The invoice bore two lot numbers, 660314 and 651223. It was explained that the lot 660314 had been produced in 1996, employing an extruder with a die diameter of 2.5mm. It was stated that some samples of the lot 660314 had been found and that the joint venture partner KJE had been able to retrieve the invoice. The properties of KX412CS from lot number 660314 were reported, all of which fell within the scope of the corresponding features of operative claim 1. Further an affidavit (“Imachi”) was provided which stated inter alia that particle size distribution was not a sales or product specification and that the particle size distribution of KX412CS would likely differ slightly from production lot to production lot.
[3.2] Regarding the evidence provided by the writ D5 it is apparent from pages 2 and 3 thereof that the claims of the patent of which infringement was being alleged did not specify the bulk density, the particle size distribution or the total pore volume of the polymer, i.e. features (e)-(g) of operative claim 1. Nor is there any further statement in D5 relating to these properties. Accordingly D5 fails to establish even the existence of an allegation that D-KX412CS exhibited all the features of operative claim 1. This conclusion is not altered by the theoretical possibility, as argued by the appellant/opponent that these properties could have been determined by the skilled person. [3.3] The invoices submitted as part of D16 provide only a disclosure of the product grade (D-KX412CS) and the production batch (670626). However as no details were provided of the properties of this product there is no evidence that this exhibited the properties required by operative claim 1. [3.4] The invoice submitted together with the letter of 7 August 2008 records two batch numbers. For one of these an analysis has been provided. [3.4.1] With respect to the presence of two lot numbers on the invoice, it has been submitted by the opponent and not challenged by the patent proprietor, that polymer from the different lots would be separately packaged (into 20kg sacks) and that the packages would be marked with the respective lot numbers. In the light of this uncontested statement the Board has no grounds for doubting that polymer resulting from production lot 660314 would have been delivered - as part of the consignment recorded in the invoice - in a pure, unmixed form and hence product of the specified grade identifiably derived from this production batch would have been made available and could have been analysed. [3.4.2] The Board is satisfied that the amount delivered - over 2 tonnes - constitutes an amount which could plausibly be seen as a commercial delivery rather than a sample e.g. for test purposes. In this connection the Board considers that it is immaterial precisely which proportion of the consignment was derived from the lot or batch for which analytical data had been provided. As submitted by the opponent at the 2765 | 3398
T 2043/07 – Not Quite Up To The Hilt
K’s Law – The ebook
oral proceedings […], and not contested by the patent proprietor, such a transaction would be in respect of a specified amount of a defined (commercial) grade of polymer, not of a specific production batch thereof. Accordingly the Board is satisfied that the delivery reported was of a commercial nature and that the entirety thereof was made available to the recipient on a non-restricted commercial basis. [3.4.3] However a number of questions arise regarding the determination of the properties of the product. In the letter of 7 August 2008 it is stated that some samples of KX412CS, lot number 660314 had been “found”. It is however not stated where and under what circumstances these had been “found”, for example to whom it had originally been delivered, or when. No information is provided about “KJE”, or the nature of the joint venture. There is furthermore no information relating to the manner in which the sample had been stored in the period between manufacture (1996) and being found (2008) - a period of 12 years. Thus it is not possible to conclude that no changes to the product constitution had occurred during the period of storage or even to estimate the nature of the likely changes. Further it is not possible on the basis of this information to ascertain whether the “found” sample derived from batch 660314 corresponded in all respects, specifically particle size, to that which had been delivered according to the invoice submitted. In particular, as witnessed in the Imachi affidavit of 11 June 2008 attached to the 7 August 2008 letter, particle size was not a sales or product specification. Consequently there is no basis for assuming that the particle size of that portion of the named batch which had been “found” necessarily and inevitably corresponded to the particle size of that portion of the batch which had been delivered according to the invoice submitted. The doubts in this respect are only compounded by the absence, noted above, of any information concerning the identity of the recipient of the batch that was “found” and analysed. [3.4.4] The report of the properties of this product in the letter of 7 August 2008 is also deficient and, as established by statements made by the opponent […], incomplete. In particular only results are presented. There is no information in the letter of 7 August 2008 regarding by whom or when the analyses were carried out. No information is provided regarding the precise manner in which the analyses had been carried out, nor are the underlying data which gave rise to the reported values and conclusions reported. It was only in the letter of 14 December 2009 that it was disclosed that the analytical data had been obtained by Kraton Polymers in collaboration with the Delft University of Technology, and that the analyses had been carried in accordance with the methods described in the patent. However even at this point no detailed report of the analyses was provided, for example the date of the analyses, who carried out the analyses, their qualifications, precise equipment/conditions employed and the raw data obtained. In particular since the porosity analyses had been carried out by a different laboratory it would in the Board’s view have been necessary to provide information relating to the history, handling and conditioning of the samples employed in order to demonstrate that the samples subjected to analysis in the two laboratories were in all respects identical i.e. that no variations in handling occurred which could have influenced the analytical results of the respective sample portions analysed at the two laboratories. [3.5] The case law of the Boards of appeal sets a high threshold for proving public prior use. In particular it has to be established (cf. T 300/86 [2.7]; T 93/89 [8.1]):
What was made available, Where it was made available, When it was made available, How it was made available, By whom it was made available.
Further the case law identifies two levels or standards of proof to be applied - either the “balance of probabilities” or “up to the hilt”. The standard of “balance of probabilities” is applicable when both parties involved, i.e. the patent proprietor and the opponent had access to the material of which public prior use is alleged (cf. T 472/92 [3.1]). Although D5 appears to establish that the patent proprietor had access to a product of the grade designated D-KX412CS it has not been established that the patent proprietor had access to the specific batch of this product referred to in the letter of 7 August 2008, and as established by E2 the properties of D-KX412CS varied from batch to batch. Thus there is no basis for concluding that all batches of this product grade are identical. In circumstances where only one party had access to the material, public prior use of which is being alleged then a higher standard of proof is to be applied, namely “up to the hilt” (T 472/92 [3.1]). 2766 | 3398
T 2043/07 – Not Quite Up To The Hilt
K’s Law – The ebook
[3.6] Regarding the question of “what” was made available as explained above, the chain of evidence contains gaps. Although it has been established that product derived from a given production lot had been made available in a commercial transaction, and an analysis has been presented for a portion of product derived - at some unspecified point in time - from that production lot, as explained above, nothing is known about the history of the analysed portion of this production lot between production and analysis. It is, for example, not known:
where this sample was found; in whose possession it had been in the intervening period of ca 12 years between production and the presumed - date of analysis; under which conditions (e.g. heat/humidity) it had been stored during this period; no information has been provided which would permit it to be concluded that the particle size of the portion subjected to analysis was identical to that of the portion of the production batch which had been delivered according to the invoice.
Thus there exist a number of sources of doubt as to whether the portion of batch 660314 subjected to analysis was indeed identical to and representative of that portion of the indicated production batch which was the subject of the delivery witnessed by the invoice. Further doubts or uncertainties arise because, as explained above neither the original submission of 7 August 2008 nor the later written and oral submissions provide a complete record of the history and treatment of the sample or the analyses carried out or establish that, despite analyses being carried out in two different institutions, the samples of product submitted to analysis had undergone precisely the same history. [3.7] In view of these uncertainties it is not possible to conclude, even on the “balance of probabilities”, let alone “up to the hilt” that the sample subjected to analysis was necessarily identical to that product which was the subject of the delivery documented by the invoice. Accordingly the evidence submitted falls short of the standard required to establish that the product sold was identical to that according to the subject-matter of the operative claims. [3.8] Accordingly the allegation of lack of novelty due to public prior use of the product identified as “DKX412CS” has not been proved. [3.9] Consequently it is concluded that the subject-matter of the patent-in suit meets the requirements of A 54. To read the whole decision, please click here.
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R 7/10 – Just Say It
K’s Law – The ebook
R 7/10 – Just Say It 11 Sep 2010
Some time ago, I’ve reported a decision concerning request for re-establishment. An anonymous reader pointed out that a petition for review had been filed in this case and that this petition for review had little if any chances to succeed. Well, he or she was right on both counts. In the petition for review, it was submitted that the Board of Appeal should have initiated a hearing of the assistant as a witness according to A 117 and R 117 to R 124 “as requested”. Without a statement of the assistant, the representative was not in a position to present all necessary evidence. As he had pointed out in the oral proceedings (OPs) before the Board of Appeal, he was not in a position to force the assistant to be present as a witness. Attempts to contact her had been unsuccessful. Since the assistant was not summoned by the Board, the representative did not have the full right to be heard guaranteed by A 113. Should this not be considered as a fundamental violation of A 113, it was submitted that “at least fundamental procedural defects occurred in the appeal proceedings”. As an auxiliary measure the petition was therefore based on A 112a(2)(d). [1] The petitioner is adversely affected by the decision T 516/09 […] dismissing the appeal. The petition for review refers to the grounds of A 112a(2)(c) and (d). Assuming, in favour of the petitioner, that the invoked procedural defect […] might fall under the ground of A 112a(2)(c), the petition complies with the provisions of A 112a(l) and (2). [2] The written decision in case T 516/09 was notified by registered letter posted on 26 February 2010. The two months period for filing the petition for review expired on Saturday, 8 May 2010. It extended, according to R 134, to Monday, 10 May 2010. This is the day on which the petition was filed and the fee was paid. The petition therefore also complies with A 112a (4). [3] The Enlarged Board of Appeal (EBA) composed according to R 109(2)(a) will decide on the basis of the petition for review (R 109(3)). A petition for review under A 112a(2) (a) to (d) is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board except where such an objection could not be raised during the appeal proceedings (R 106). It therefore has to be examined whether the petitioner complied with this requirement. [3.1] The petitioner has not commented on the issue of R 106. The petition neither contains any indication that an objection was raised during the appeal proceedings nor any explanation why such an objection could not have been raised. [3.2] In view of the procedural defect invoked by the petitioner, the objection under R 106 EPC should have concerned the fact that the Board of Appeal intended to decide on the appeal without previously hearing the witness “as requested”. However, neither in the minutes of the OPs before the Board of Appeal nor in any other part of the file is there any indication that the appellant had objected to the closure of the debate by the Board without having heard the witness. It does not emerge from the file whether and, in the affirmative, in which form the appellant had requested that the assistant be heard as a witness and to which facts she should testify. In this connection it is observed that the Board of Appeal assumed in favour of the appellant that the assistant had health problems. [3.3] The petitioner has not submitted that the minutes of the OPs before the Board of Appeal and/or the facts and submissions in the written decision were wrong or incomplete. [3.4] It must therefore be concluded that the petitioner indeed failed to raise an objection under R 106 during the appeal proceedings. As a consequence, the obligation under R 106 has not been met for the procedural defect invoked by the petitioner under A 112a(2)(c). Therefore, as far as this ground is concerned, the present petition for review is clearly inadmissible.
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R 7/10 – Just Say It
K’s Law – The ebook
[4] According to R 107(2) the petition shall indicate the reasons for setting aside the decision of the Board of Appeal, and the facts and evidence on which the petition is based. If the petition does not comply with this provision within the period under A 112a(4) EPC, it shall be rejected as inadmissible. [4.1] Regarding the second ground for review under A 112a(2) (d) EPC raised “as an auxiliary measure”, the petitioner neither specified any of the grounds a) or b) as defined in R 104 EPC nor indicated any facts and evidence concerning one of these grounds, as required by R 107(2). [4.2] Thus, as far as the second ground for review is concerned, the petition does not meet the requirements of R 107(2) and is clearly inadmissible for this reason. […] The petition for review is rejected as clearly inadmissible. We’ve seen this before, but I think this decision is a good reminder. So please bear in mind: when you feel that a Board is not handling things as it should, do not forget to raise an objection under R 106. Not doing so may kill a subsequent petition for review on purely formal grounds. If you wish to download the whole decision (and parallel decision R 6/10), you can do so here.
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T 1252/07 – Seeing Things Differently
K’s Law – The ebook
T 1252/07 – Seeing Things Differently 10 Sep 2010
Some time ago, we have seen a decision where a Board adopted an unreasonably harsh stance on A 123(2): even a combination of the main claim and a dependent claim was considered to violate A 123. But the Boards are far from unanimous on this topic; the present decision shows a case where a Board proved much more openminded. [2.1] [… C]laim 1 [of the main request] was amended in comparison to claim 1 [as granted]. The question must, thus, be answered whether or not the main request comprises subject matter corresponding to an amendment of the claims in the course of opposition or appeal proceedings which would justify that its compatibility with the requirements of the EPC, including with regard to the provisions of A 123 (2), be examined by the board (see G 9/91 [19]). Claim 1 corresponds to the combination of claim 13 [as granted], with claim 1 [as granted] and part of claim 6 [as granted]. Considering that claim 13 [as granted] was depending on “any preceding claim” and that claim 6 [as granted] was depending on “any one of claims 1 to 3”, the mere combination of these three claims does not amount to a substantive amendment of the subject matter claimed in the granted patent and does not correspond, therefore, to an “amendment” in the sense of G 9/91 [19]. This conclusion is in agreement with constant case law of the boards of appeal see e.g. T 381/02 [2.3; 2.3.7, 2.3.8], as well as the other decisions cited therein. Although this passage of T 381/02 addressed the question of whether the clarity of amendments made to granted claims may be examined for the first time at the appeal stage, the same reasoning applies and the same conclusion would be reached regarding whether a board may examine for the first time during the appeal proceedings if amendments of granted claims fulfil the requirements of A 123(2). Considering that in the present case claim 13 [as granted] has, however, not been combined with claim 6 [as granted] as a whole but only with a part of it (three specific compounds have been extracted out of the list of ten products), it remains to be examined whether or not this modification could amount to an amendment in the sense of G 9/91 [19], i.e. if it may represent a substantive amendment of the granted claims. Claim 6 [as granted] was written as a list of ten individualised compounds and is, therefore, formally equivalent to a series of ten separate dependent claims, each directed to one these ten embodiments. Hence, the combination of claim 13 [as granted] with any of these ten compounds corresponds to a mere rewording of the granted claims, taking account of their dependency, which does not modify the substance of the subject matter claimed. There is in particular no new teaching or new information provided to the skilled person and created through this amendment. Contrary to the objection of the appellant the board does not consider that this amendment has led to the creation of a new “genus” as compared to claim 6 [as granted] or represents an “arbitrary selection” within its ambit. The amendment merely amounts to the combination of claim 13 [as granted], dependent on claim 6 [as granted], itself dependent on claim 1 [as granted], with three compounds listed as independent alternatives in claim 6 [as granted]. The board does not consider this splitting of claim 6 [as granted] as representing a substantive amendment. In reaching its conclusion the board in particular disagrees with the appellant that an unallowable amendment emerges from the fact that in claim 1 [as granted] the terms oligomeric HALS and polymeric HALS have been maintained as such, whereas the term high molecular weight HALS has been replaced by three compounds of claim 6 [as granted]. Indeed, the amendment merely amounts to the restriction of the subject matter covered by one of the three independent embodiments of claim 1 [as granted]. The appellant has objected in this regard that the original classification of claim 1 [as granted], which distinguished between polymeric, oligomeric and high molecular weight HALS, was not clear because of the lack of an accepted definition for these terms. Even if this might be true, it does not affect the conclusion of the board since the partitioning of claim 6 [as granted] which was done is not related to whether or not a specific category of HALS may be attributed to the ten specific compounds. The amendment made, indeed, does not change the subject matter claimed which is 2770 | 3398
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related to oligomeric or polymeric HALS and only restricts that part which is directed to the high molecular weight HALS to three compounds already recited as individual embodiments in claim 6 [as granted] and which, in the board’s view indisputably correspond to high molecular weight HALS in the sense of the patent in suit. The argument of the appellant in this regard, that it would not be clear that the three selected compounds are high molecular weight HALS, did not convince the board. From their chemical structure, these compounds may at most be considered as dimers, i.e. the smallest possible form of oligomers. There is, however, no evidence on file demonstrating that the skilled person would consider such dimers as oligomeric HALS, as argued by the appellant. The board is further of the opinion that the skilled reader, to which the patent is addressed, would consider from the information provided in the patent that such compounds fall under the category of high molecular weight HALS. This, incidentally, also corresponds to the findings of the opposition division […]. The appellant has further criticised in this respect that the compound recited at lines 57-58 of claim 6 [as granted] (“Reaction products of (…)”) may either be a monomeric, oligomeric, or polymeric HALS depending on the reaction conditions used. Even if this might be true, this does not imply that the amendment made by the respondent corresponds to an “arbitrary selection”: it only restricts the high molecular weight HALS of claim 1 [as granted] to three of the compounds corresponding to this definition in claim 6 [as granted]. Whether a further compound may also be a high molecular weight HALS is irrelevant. The board further notes that the three categories of HALS (oligomeric, polymeric, high molecular weight) were already recited in claim 1 [as granted] so that their clarity may not be objected to at this stage of the proceedings for the same reasons as above (G 9/91) and because lack of clarity is not a ground for opposition according to A 100. To conclude, the replacement of the term high molecular weight HALS of claim 1 [as granted] by three compounds of claim 6 [as granted] corresponding to such HALS is not an “amendment of the claims (…) of a patent in the course of opposition or appeal proceedings” in the sense of G 9/91 [19] which would have had to be fully examined as to its compatibility with the requirements of the EPC, in particular with A 123(2) in the present case. Finally, the board reached the same conclusion regarding the dependent claims 2-15 [as granted]. Therefore, the objections of the appellant with respect to A 123(2) EPC are rejected. If you wish to download the whole decision, you can do so here.
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T 690/09 – Don’t Wake The Dead (Without Consent)
K’s Law – The ebook
T 690/09 – Don’t Wake The Dead (Without Consent) 9 Sep 2010
[8] The appellant further complained that the decision under appeal was taken on the basis of claims that had not been approved in accordance with A 113(2) EPC 1973. In the minutes the following statement is found after the chairman announced the decision not to admit the sets of claims filed on 8 September 2008: “Consequently the latest admitted request filed by the applicant with the letter dated and received 07.07.2005 will be the basis for further discussion during the oral proceedings (OPs). After being asked by the chairman, the applicant confirmed that the main request and two auxiliary requests dated 08.09.2008 were maintained. The applicant was informed that this decision and its reasoning will be furnished to him in written form, which may be subject to appeal” (emphasis added). The appealed decision was finally taken on the basis of the set of claims filed with letter of 7 July 2005 with further minor amendments. A 113(2) states that the EPO shall consider and decide upon the European patent application or the European patent only in the text submitted to it, or agreed, by the applicant for or proprietor of the patent. Here the examining division (ED) refused to consent to the introduction into the procedure of the claims submitted on 8 September 2008, which had been put forward in substitution for the claims put forward with letter of 7 July 2005, and then proceeded to discuss and refuse the claims of 7 July 2005 which were, at the time, not put forward by the appellant for consideration. Deciding to refuse an application on the ground that claims are not allowable contravenes A 113(2) if the applicant is no longer putting forward these claims, and amounts to a substantial procedural violation (see e.g. T 946/96 [3]; T 647/93 [2.6]). If the ED refuses consent to the latest submitted amended set of claims under R 137(3) this does not automatically revive the previous set of claims that the ED had consented to consider, unless the applicant has indicated that he was relying on these as an auxiliary request. There was no such indication here. A question by the chairman on the status of the “old” requests would have been necessary. In contrast the applicant had to continue with the set of claims he wanted to replace. The fact that those claims were further amended by the applicant later during OPs does not imply the applicant’s consent under A 113(2). The correct procedure would have been to notify the applicant of the grounds for intending to refuse consent to admit the latest set of claims and to ask him whether he wanted a decision on that basis. If the applicant then maintained his request solely on the basis of these claims (as was the case - see the minutes), and any further arguments by the applicant did not persuade the ED to change its mind, then a decision should have been given in which the reasons for the refusal of consent under R 137(3) were stated, and the application was refused under A 97(2) and A 78(1)(a) on the basis that the application contained no claims to which the applicant had agreed. Thus, the ED decided on sets of claims which were neither submitted, nor agreed by the applicant, in violation of Article 113(2). This provision is a fundamental procedural principle, being part of the right to be heard and is of such prime importance that any infringement of it must be considered to be a substantial procedural violation (see T 647/93 [2.6]). To read the whole decision, you may click here.
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R 10/09 – Discretion Means Just That
K’s Law – The ebook
R 10/09 – Discretion Means Just That 8 Sep 2010
When requests or documents are not admitted into the proceedings by a Board, is this enough to justify a petition for review? Only under very special circumstances, says the Enlarged Board (EBA). Because discretion is not an empty word. [2.1] According to the petitioner, the decision not to admit an auxiliary request that had been filed within the time limit set by the Board of Appeal itself was a total surprise for it since it was given no opportunity at all to comment on the merits of a request which indeed represented a mere limitation of the granted patent by way of incorporation of dependent claims into claim 1. Further being the respondent in the appeal proceedings it saw no need when filing the auxiliary request in writing to explain why the newly defined subject-matter would be inventive, all the more in a case like this where the patent had been maintained unamended by the Opposition Division. [2.2] That notwithstanding, the decision to admit or not to admit a request into the appeal proceedings is at the discretion of the Board of Appeal. Therefore the way in which this judicial body has exercised its discretion on a procedural matter falls outside the jurisdiction of the EBA since this would need a review of all facts and circumstances of the case, which necessarily would mean entering on the merits of the substantive issue. Moreover the petitioner, who recognises that admission of new requests is at the discretion of the Board of Appeal, cannot claim that its right to be heard has been infringed in this respect since the issue of admissibility of the auxiliary request has been the object of debate during the oral proceedings (OPs) held before the Board of Appeal. This is confirmed in the petition itself […] and also in the decision of which review is sought […] Finally the mere fact that a time limit for filing new submissions set by the Board of Appeal in a communication prior to OPs, has been respected by a party does not necessarily mean that any timely submission becomes for that reason alone admissible. [2.3] The discretionary power contained in A 114(2), as well as in Article 13(1) RPBA, is as such not subject to review by the EBA, unless under A 112a(2) c) a fundamental violation of A 113 occurred while exercising this discretionary power. Precisely this cannot be the case here since the issue of the admission of the auxiliary request was, as admitted by the petitioner, the object of debate during the OPs held before the Board of Appeal. [2.4] That having been said and concerning A 112a(2)(d), the EBA notes that the alleged violation is not included in the list of fundamental procedural defects of R 104. This rule implements A 112a(2)(d) which provides: “any other fundamental procedural defect as defined in the Implementing Regulations”. The wording of A 112a(2)(d) is quite clear:
a petition for review can only be filed on the grounds it specifies it leaves it to the Implementing Regulations to define further procedural defects which may justify a petition for review. This implies that what is not defined by the Implementing Regulations does not qualify as a procedural defect in the sense of A 112a(2)(d).
R 104 is the implementing rule providing two additional fundamental procedural defects to wit, (a) the Board did not hold OPs despite a request to this end; or (b) it omitted to decide upon a request. [2.5] Since the list of grounds for review mentioned in R 104 is exhaustive and since the Board decided on the admission of an auxiliary request R 104 is of no relevance here. [3] The decision to accept late-filed documents E25 and E26 into the appeal proceedings, but to refuse the request for remittal to the first instance and further to revoke the patent on the basis of one of these documents also constitutes in the view of the petitioner a violation of A 113 pursuant to A 112a(2)c) as a second instance 2773 | 3398
R 10/09 – Discretion Means Just That
K’s Law – The ebook
was denied the patent proprietor whereas given to the opponent. The petitioner added in this respect that the purpose and function of A 113 were inter alia to ensure that the parties be fairly and equally treated in the proceedings before the EPO. It referred to the principles set out in the Vienna Convention on the Law of Treaties, the European Convention on Human Rights and Fundamental Freedoms, and the TRIPS, more particularly to Article 65 of the latter. In its view it was fundamental that judicial decisions remain predictable, and that in inter partes proceedings, both parties be guaranteed due process of law, which required equality of treatment. [3.1] The EBA considers that there is no need in the present case to decide whether the .provisions of the European Convention on Human Rights and Fundamental Freedoms of 4 November 1950 directly apply to the proceedings before the EPO which is not a party to said treaty. Nor can a mere imprecise reference to such other Treaties be decisive in the case in suit. Indeed the guarantee of due process of law requires primarily that the relevant provisions of law be applied to the facts under consideration; i.e. in the case in suit A 114(2) together with Article 12(2) and (4) RPBA, as well as A 111(1) last sentence respectively. [3.2] On the one hand it is standing case law under A 114(2) and Article 12(4) RPBA that the admission of new requests in appeal proceedings, the purpose of which is mainly to review the decision of the department of first instance, is a matter for the board’s discretion and not a right of any party. On the other hand similarly, under A 111(1) last sentence the Boards of Appeal have the power either to decide on the appeal themselves or to remit the case to the department of first instance for further prosecution. The Boards of Appeal have developed a body of case law regarding the criteria for exercising this discretion. In particular, when applying Article 12( 2 )(a) RPBA, boards usually consider that documents filed together with the statement of grounds of appeal by the appealing party adversely affected by the decision of the first instance are presumed admissible if the introduction of these documents does constitute a legitimate reaction to the reasoning underlying the appealed decision. [3.3] Moreover both issues have been the subject-matter of debate before the Board of Appeal, and were also addressed by the petitioner in its submissions in writing. Therefore for this very reason the petitioner cannot now claim that its right to be heard was violated in this respect. In any case the EBA is not empowered under the provisions of A 112a to decide on the merits of a case, which also necessarily implies that it has no power to control the normal exercise a board makes of its discretion in respect of admission of late-filed documents or remittal of the case under consideration to the first instance. After former Opponent 1 withdrew its opposition the registrar erroneously notified the remaining parties that the case was to be considered closed. This error was corrected later on. The registrar has no judicial function to decide an appeal, so no particular rights can be derived from this error. Moreover an administrative action cannot exhaust the rights of an appellant […] to have its case decided by the competent board of appeal. Relying on this error as a ground is therefore manifestly void of merit, even leaving aside the fact that it does not appear in the exhaustive list of grounds of review contained in A 112a(2)(a) to (e) together with R 104 (a) and (b), respectively. [5] The issue of the admissibility of the appeal was discussed at large in writing […] as well as, on the petitioner’s ,, own admission, during the OPs held before the Board of Appeal. This body decided that point on the merits, and the EBA cannot identify anything in that respect that could constitute a procedural defect falling under the list of grounds of A 112a(2) and R 104, which, as has been mentioned above […], contains an exhaustive list. [6] To summarise, none of the grounds relied on by the petitioner has been made out and the EBA sitting in its composition under R 109(2)(a) rejects the petition for review as clearly unallowable. The petition for review is rejected as clearly unallowable. You can download the whole decision here.
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R 10/09 – Discretion Means Just That
K’s Law – The ebook
2775 | 3398
T 820/08 – Conservative And Fearful
K’s Law – The ebook
T 820/08 – Conservative And Fearful 7 Sep 2010
This decision, albeit not very exciting in itself, provides some insight into the attitudes of the skilled person. Claim 1 as maintained was directed at a gel dishwashing composition (DC) comprising an encapsulated bleach and 15% to 80% by weight of water in a water-soluble sachet (WSS). The Board agreed with the Opposition Division (OD) that the unit dose DC of example 5 of document D2 represented the most promising starting point for the assessment of inventive step. [1.3] The Board also concurs with the findings of the OD, undisputed by the [opponent], that:
the sole distinction between the subject-matter of claim 1 as maintained and example 5 of document D2 lies in the fact that in the WSS of claim 1 the DC is in the form of a gel containing 15% to 80% by weight of water, and not a dry granulate; and the technical problem credibly solved by the subject-matter of claim 1 as maintained vis-à-vis this prior art is the provision of a (further) DC in unit dose, i.e. the provision of an alternative to the prior art.
[1.4] The [opponent] has objected to the reasoning in the decision under appeal by arguing that the person skilled in the art starting from example 5 of document D2 would considered [sic] it obvious to solve the technical problem identified above by replacing the solid DCs in the WSSs of document D2 with the gel DCs of either of document D4 or D5. This party has not disputed the finding of the OD that document D2 does not mention at all DCs in gel or other water containing forms and that documents D4 and D5 are totally silent as to the nature of the materials that could be used for packaging or containing gel DCs during storage. It has however interpreted these facts as necessarily implying that these citations cannot possibly disclose any reason that could have deterred the skilled person from combining their teachings. In addition, the [opponent] has considered of no relevance in this respect either the references in document D2 to problems caused by “moisture” or the fact that the material used in this citation for coating the encapsulated bleach is probably water soluble. [1.4.1] The Board notes as a preliminary point that, as already expressly established in the jurisprudence of the Boards in the field of biotechnology (see the Case Law of the Boards of Appeal, fifth edition 2006, I.D.7.1.3), the notional skilled person has a conservative attitude. The Board cannot see any reason why such attitude would be restricted to skilled persons working in the field of biotechnology. Moreover, it is apparent to the Board that, in the present case, the finding of the OD is actually based on the assumption that the person skilled in the art would have at least feared as possible, if not expected, that fluid aqueous formulations could dissolve the water soluble materials used for forming WSSs. This can be deduced from the whole reasoning given in this respect in the decision under appeal, as evident, for instance, from the relevance attributed to the fact that the available prior art does not contain any suggestion “that gel compositions with 15-80 wt % water could be stably contained in water soluble sachets” (emphasis added by the Board). Hence, even if the Board disregards in document D2 - for the sake of an argument favourable to the [opponent] the references to problems caused by moisture and the presumably water soluble nature of the encapsulated bleach, still it is immediately apparent that the assumption of the OD, if found credible, would be sufficient to deter the cautious person skilled in the art from the combination of the teaching of document D2 with that of either of document D4 or D5. [1.4.2] The Board takes the view that this assumption is per se logical and, thus, sees no reason for departing from the finding of the OD as to the incompatibility of these citations. In particular, the facts relied upon by the [opponent] are manifestly insufficient to make it credible that the skilled person would have no doubts or negative expectations as to the stability of packaging made of water soluble materials, when filled with water containing fluid formulation. Indeed, the absence in document D2 of any mention of DCs containing water could possibly reflect (as implied by the [opponent’s] reasoning) the expected equivalence of any form of DCs, as well as (as argued by the [patent 2776 | 3398
T 820/08 – Conservative And Fearful
K’s Law – The ebook
proprietors]) the general consensus in the technical field that it was impossible to store water rich formulations stably in a sachet that is water soluble. Similarly, the absence of explicit indications in document D4 or D5 as to whether the gel DCs may or may not be stably contained or packaged in materials that are water soluble, could as well be due to the expectation that these water rich gels are not comparable to water in terms of their dissolving abilities (and, thus, suitable for packaging in water soluble materials too) as to the presumption that it was unnecessary to indicate expressly that only packaging materials that are not water soluble could be used for stably storing these gel DCs. [1.4.3] For this reason alone, the Board concludes that the arguments brought forward by the [opponent] are insufficient to make it credible that the person skilled in the art did not fear that substantial stability problems could possibly arise from the contact between the water soluble material forming the WSS of document D2 and the water contained in the gel DCs of document D4 or D5. Hence, the cautious person skilled in the art would be deterred from combining the teachings given in these citations. […] [1.6] Thus, the Board concludes that the [opponent’s] arguments are insufficient to reverse the finding of the OD as to the compliance of the subject-matter of claim 1 as maintained with the requirements of A 56. If you wish to download the whole decision, please click here.
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T 1630/07 – Single Or Double?
K’s Law – The ebook
T 1630/07 – Single Or Double? 6 Sep 2010
T 332/87 is one of the major decisions of the Boards of appeal concerning combination of features inside a document of the prior art. In point [2.2] of the reasons, we find the following statement: Normally, […] the disclosure of a document has to be considered as a whole and not only on the basis of the examples thereof. It is the overall disclosure which the skilled person can unambiguously take from a document which is decisive for establishing whether such disclosure is novelty destroying or not. This means that, when examining novelty, different passages of one document may be combined provided that there are no reasons which would prevent a skilled person from such a combination. In general the technical teaching of examples may be combined with that disclosed elsewhere in the same document, e.g. in the description of a patent document, provided that the example concerned is indeed representative for the general technical teaching disclosed in the respective document. The present case deals with the question of whether this decision is applicable. The Opposition Division (OD) decided that T 332/87 did not allow to combine within document D6 the disclosure of example 2-3 (or 2-15) with that of the optional use of inorganic electrolytes such as, among others, sodium, magnesium or calcium sulphates, because the specific examples 2-3 and 2-15 differed from other examples e.g. for the additional presence of a fatty acid, and thus could not be seen as illustrative of the general teaching. To arrive at the claimed subject-matter required the combination within D6 of one of the examples given for the FC composition disclosed in this citation with one of the optional inorganic electrolyte ingredients exemplified in the description. Thus, applying the “selection within two lists” principle, the OD acknowledged the novelty of the claims as maintained vis-à-vis D6. The opponent filed an appeal and contested this reasoning. In its opinion, example 2-3 and 2-15 of this citation were representative of the general technical teaching of D6 despite the presence therein of the optional unsaturated fatty acid, because this was perfectly in line with the disclosure in this citation as to the sorts and the relative amounts of the essential and optional ingredients, as well as with the common general knowledge of the skilled person on how to control the equilibrium of saponification of esterquats suspended in waters. Hence, similarly to the case of T 332/87, it was perfectly allowable to combine any of these examples with the optional incorporation of inorganic electrolytes such as, among others, sodium, magnesium or calcium sulphates, also disclosed in D6. Accordingly, one arrived at the claimed subject-matter by the single selection of one of the sulphate salts from the list of examples of the inorganic electrolytes. [1.1] [Claim 1] defines a FC composition comprising a water dispersed esterquat, an alkali metal or alkaline earth metal sulphate and an unsaturated C8-C24 fatty acid at a given esterquat / fatty acid ratio […]. [1.2] The [opponent] has disputed the novelty of this claim only on the basis of D6. It has considered erroneous the conclusion of the OD that the example 2-3 and 2-15 was not representative of the general technical teaching of D6 […]. Hence, in the opinion of [opponent], it was allowable under the ruling given in T 332/87 to combine within D6 the disclosure of the FC composition of example 2-3 (or 2-15) with that of the optional incorporation therein of inorganic electrolytes as disclosed in the passage at page 11, lines 48 to 51, (“the cited passage”) and reading “The composition of this invention can incorporate therein such an inorganic electrolyte as NaCl, CaCl2, MgCl2, NaNO3, NaNO2, Na2SO4, MgSO4, or CaSO4 for the adjustment of the viscosity thereof. …”. This combination thus rendered available to the skilled person a FC composition as that of example 2-3 added with any of these specific examples of inorganic electrolyte ingredients. Accordingly, one arrived at the claimed subject-matter by means of a sole selection in a list of alternatives, that required for selecting any of the three exemplified sulphate salts. [1.3] The Board notes that the decision T 332/87 [2.2], after having recalled that normally the disclosure of a document has to be considered as a whole, rules that
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T 1630/07 – Single Or Double?
K’s Law – The ebook
“the technical teaching of examples may be combined with that disclosed elsewhere in the same document, e.g. in the description of a patent document, provided that the example concerned is indeed representative for the general technical teaching disclosed in the respective document”. It is thus immediately apparent to the Board that the situation decided in this case law is at most comparable to just a segment of the whole [opponent’s] line of reasoning based on D6. Indeed, in the present case, as explicitly acknowledged by the [opponent] too […], the relevant point is not just whether the prior art patent document renders available to its skilled reader the combination of an example with a generally applicable instruction (that to possibly add an inorganic electrolyte) also contained in this patent document, but rather if it renders available this combination as well as the further needed selection within such combination (i.e. the selection of the sulphates among the exemplified inorganic electrolytes). Moreover, the Board notes that D6, which is essentially concerned with esterquats and liquid softening compositions containing them, teaches that several optional components may be incorporated in such compositions. In particular, it is disclosed […] that the esterquat compositions may further comprise one of several components for improving certain properties. One of those components is a fatty acid for enhancing the softness and only examples 2-3 and 2-15 are describing such compositions in a ratio esterquat / fatty acid according to present claim 1. Thus, as observed by the OD, the example 2-3 (or 2-15) cannot be considered representative for the general technical teaching of D6, but just for a specific embodiment thereof, which may only be derived from D6 by selecting one of the possible optional components. Hence, the Board finds that the whole line of argument of the [opponent] cannot possibly be justified by just the ruling in T 332/87, and that the segment of this line of argument most similar to that considered in this decision is not supported by this case law. [1.4] The Board notes instead that the skilled reader of D6, in order to arrive at the disclosure of the subjectmatter of claim 1 as maintained, must (at least) first select example 2-3 (or 2-15) among the examples representative for specific embodiments disclosed therein, and then select any of “Na2SO4, MgSO4, or CaSO4” among the specific examples of the optional inorganic electrolytes listed in the cited passage. Thus, the Board finds that the present case is rather to be decided according to the established case law already recalled in the decision under appeal, i.e. by taking into account that a prior art document does not render available matter whose identification requires twofold selection among two lists of alternatives in that document (see Case Law of the Board of Appeal, 5th Edition, 2006, I.C.4.2.3). [1.5] Therefore, the Board concurs with the finding of the OD that the subject-matter of claim 1 as maintained is novel vis-à-vis the disclosure of D6, and concludes, thus, that this claim complies with the requirements of A 54(1) and (2). If you wish to download the whole decision, just click here.
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T 1667/07 – On File?
K’s Law – The ebook
T 1667/07 – On File? 4 Sep 2010
Can an opponent rely on documents that had been filed as third party observations during the examination proceedings? Is there any objection to citing them for the first time in response to summons for oral proceedings (OPs) before the Board? In other words, are such documents “on file” and instantly available to the opponent without further ado? Nope, says the Board. NB: All articles and rules refer to the EPC 1973. [10] Documents E11, E12 and E13 are copies of submissions made by third parties during the examination of the application on which the present patent was granted. The submissions were treated by the examining division as observations under A 115. As evidence in support of grounds for opposition under A 100(a) and (b), these documents were filed one month before the OPs before the board. At the OPs, the [opponent] maintained that the documents in question were part of the file and that, in its view, the board had no discretion whether or not to admit them as evidence into the proceedings, but was bound to consider them. [11] The board does not share this view. First, as far as documents E11, E12 and E13 have been submitted as evidence in support of fresh grounds for opposition raised for the first time on appeal, in particular lack of novelty, it is, in fact, correct that the board has no discretion when deciding whether the documents are considered or disregarded. Since according to decision G 10/91 the board cannot consider the fresh grounds of opposition put forward by the [opponent] for the first time in appeal proceedings - as the patent proprietor opposed to their introduction into the proceedings -, it cannot consider evidence submitted in their support either. [12] Second, in the board’s view, as far as documents E11, E12 and E13 have been submitted as evidence in support of grounds for opposition put forward in the statement under R 55(c) (i.e. grounds for opposition under A 100(b) and A 100(a) in conjunction with A 56), they were not filed in due time and, consequently, the board is empowered to exercise the discretion conferred by A 114(2) to disregard them. [13] The question whether or not evidence has been filed in due time has to be decided taking into account the circumstances of the particular case. In the present case, the grounds for opposition under A 100(b) and A 100(a) in conjunction with A 56 were put forward within the opposition period provided for in A 99(1). Thus, in principle, any evidence in support of these grounds had to be submitted within the opposition period, unless there were valid reasons not to do so. [14] In the statement under R 55(c), only the observations under A 115 filed as document E13 in appeal proceedings were mentioned as evidence in support of the ground for opposition under A 100(b), in particular in connection with the objection that the patent failed to disclose leukapheresis as the technique which must be applied in order to prepare the pluripotent cells required as starting material in the method according to claim 1. Neither a copy of document E13 nor of documents E11 and E12 was filed within the opposition period or at a later stage of the opposition proceedings. [15] The evidence in question could possibly have been submitted together with the statement of grounds of appeal, as a reaction to the adverse decision of the opposition division. However, in its statement of grounds the [opponent] neither relied on documents E11, E12 and E13 nor filed copies thereof. Incidentally, it should be also noted that the adverse finding of the opposition division concerning the objection of lack of disclosure of leukapheresis in the patent was not even contested by the [opponent] in its statement of grounds of appeal. 16. It was only in its submission in reply to the communication under Article 15(1) RPBA sent by the board in preparation for the OPs that the [opponent] relied on documents E11, E12 and E13 and filed copies thereof. However, no reasons were given which justified the documents having been submitted at this late stage of the proceedings, except for the remark that the documents in question were already “on file”. It should be noted here that the evidence in question was certainly not filed pursuant to directions of the board (see Article 12(1)(c) RPBA), as the board had given no directions in this respect in its communication. [17] In view of the circumstances outlined above, the board judges that the evidence in documents E11, E12 and E13 on which the [opponent] relied for the first time in its submission filed one month before the OPs before the 2780 | 3398
T 1667/07 – On File?
K’s Law – The ebook
board, was not submitted in due time. The fact that these documents were identical to observations filed by third parties during the examination proceedings, a copy of which was - as the [opponent] stressed – “on file”, does not change this judgement because, in the board’s view, the decisive issue is whether or not the [opponent] relied on these documents in due time for the board to be able to evaluate any possible evidence contained therein, and for the respondents to react thereto. If you wish to download the whole decision, please click here.
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T 27/07 – How To Shoot Oneself In The Foot
K’s Law – The ebook
T 27/07 – How To Shoot Oneself In The Foot 3 Sep 2010
Remember R 7/09? This petition for review was the first (and, as far as I can see, the only) petition to succeed so far. The patent proprietor, whose patent had been revoked, obtained that the decision under review be set aside and the proceedings before the Board of Appeal re-opened. The present decision shows what happened afterwards. Claim 1 of the main request on file read: An endoscope capable of being autoclaved, comprising: an insertion unit having a soft member; an internal endoscope space including the internal space of said insertion unit that is sealed at a first sealing level at which the internal space is sealed in a watertight manner relative to an outside; and contents all or part of which are arranged in said internal endoscope space; wherein said contents include at least one hermetically sealed unit composed of a plurality of airtight partition members and formed at a second sealing level higher than the first sealing level by joining the sealing surfaces of said airtight partition members using an airtight joining means; wherein even when high-pressure high-temperature steam permeates through said soft member of said insertion unit which is made of a soft polymeric material as at least part of an insertion unit casing, and invades into said internal endoscope space formed at the first sealing level, the high-pressure high-temperature steam will be hindered from invading into the hermetically sealed unit included in said contents and formed at the second sealing level; and wherein said hermetically sealed unit includes at least one of optical members and electronic parts or both the optical members and electronic parts. The Board considers document D3 to be the closest prior art. [3.2] […] D3 does not disclose the feature of claim 1 in suit according to which the soft member of the insertion unit is made of a soft polymeric material and that the internal space of the insertion unit is sealed relative to the outside in a watertight manner at a first sealing level, whereas the hermetically sealed unit is sealed in an airtight manner, i.e. at a second sealing level higher than the first watertight sealing level. The technical problem presented in the contested patent […] of providing an endoscope capable of avoiding high-pressure high-temperature steam invading into the interior of the endoscope and the optical system during autoclaving has already been addressed in D3 […]. It is solved in this document by the provision of an endoscope entirely sealed in an airtight manner […]. However, even if the outside fitting parts of the endoscope are made airtight, there is still a risk of high-pressure high-temperature steam entering the interior of the endoscope during sterilisation […]. If the device of D3 was really entirely airtight, as it is supposed to be, the above-mentioned risk would not be present any more. Therefore, it is likely that the outer tube 152, 157 shown in Figures 29 and 30 might only be watertight, as is generally the case in conventional endoscopes. Moreover, as explained in the patent itself […], for endoscopes known as airtight endoscopes and having a bending ability (as in the case in D3), the steam given off during autoclaving can barely be prevented from invading into the interior of the endoscope. Furthermore, it is well known from the state of the art presented in the application itself that conventional endoscopes have a soft, bendable insertion unit comprising a tube made of soft polymeric material, thus providing a watertight sealing level […]. Additionally, D2 […] discloses an example of rubber used as a suitable material for the bending portion, as recited in […] the contested patent concerning the soft polymeric material. Starting from the disclosure of D3, even if it is assumed that the outer tubes 152, 157 are such as to provide an airtight sealing level, the skilled person would indeed consider lowering this level to a still acceptable watertight sealing level, on the basis of his common general knowledge as given in the application as filed, the more so since lowering the sealing level of the internal space of the insertion unit from airtight to watertight has no bearing on the level of protection of the internal hermetically sealed unit, which remains airtight anyway. In fact, the plurality of airtight partition members such as optical members and electronic parts are all formed at a higher 2782 | 3398
T 27/07 – How To Shoot Oneself In The Foot
K’s Law – The ebook
airtight sealing level and are sufficiently protected against high-pressure high-temperature steam entering the interior of the endoscope during autoclaving. It is true that, as submitted by the respondent, common general knowledge needs to be substantiated if challenged by a party. In the present case, however, the information emerges from the applicant himself in the application as originally filed. It is not the responsibility of the Board or the other party to provide evidence whether the state of the art presented in the application as filed, now no longer acknowledged by the respondentproprietor, is correct or not. On the contrary, it is the proprietor’s responsibility to provide the EPO with a text ready for grant, i.e. agreed by him (A 113(2)). It results therefrom that the subject-matter of claim 1 of the main request does not involve an inventive step within the meaning of A 56 with respect to the disclosure of D3, having regards to the general knowledge of the person skilled in the art. The first auxiliary request having been found to lack inventive step and the second auxiliary request having been refused as belated, the patent was revoked, for the second time. So the only successful petition for review finally led to a confirmation of the Board’s verdict. Vanity of vanities ... If you wish to download the whole decision, just click here.
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T 993/07 – Stay Focused
K’s Law – The ebook
T 993/07 – Stay Focused 2 Sep 2010
This decision deals with the question of which amendments are acceptable in opposition proceedings. It gives a nice overview over the case law developed by the Boards in this respect. [1.1] R 80 (previously R 57a) stipulates that “the description, claims and drawings may be amended, provided that the amendments are occasioned by a ground for opposition under A 100, even if that ground has not been invoked by the opponent”. It is a lex specialis for amendments during opposition proceedings, analogous to R 137 (previously R 86) for amendments during examination proceedings. These rules place limitations on the right to amend the patent specification and the patent application, respectively. [1.2] The board interprets R 80 such that in opposition proceedings the proprietor’s right to amend the patent, for example the claims as granted, is limited to making amendments in order to overcome an objection based on a ground for opposition as specified in A 100, thereby possibly avoiding a revocation of the patent. In the board’s view, this interpretation is in accordance with the general principles concerning opposition proceedings as set out by the Enlarged Board of Appeal (EBA). More specifically, the purpose and intention of opposition proceedings is to give the public the opportunity to challenge the validity of the patent in question (G 1/91 [4.2]; G 9/93 [3]). The opposition procedure is not designed to be, and is not to be misused as, an extension of the examination procedure (G 1/84 [9]). Rather, opposition proceedings are conceived as a simple, speedily conducted procedure in which, on the one hand, relevant objections to patentability should be given appropriate consideration and, on the other hand, a decision on the validity of the patent should be reached as quickly as possible, in the interests of both parties (G 3/97 [3.2.3]; G 2/04 [2.1.4]) [1.3] In line with the above interpretation of R 80, the board notes that it is common practice that a proprietor is allowed to make amendments to the patent specification, in particular in order to overcome an inventive step objection against the subject-matter of an independent claim, by adding one or more features to the independent claim, either by combining the claim with one or more of the dependent claims as granted or by taking features from the description. [1.4] Following a consistent line of decisions, including T 674/96 [3.10] and T 223/97 [2], it would however contravene the requirement of R 80 and the above principles set out by the EBA if a patent proprietor were allowed to amend the claims as granted during opposition proceedings by adding one or more dependent claims, since the addition of one or more (truly) dependent claims leaves the subject-matter of the independent claim to which they refer unchanged and is therefore not in order to overcome an objection based on a ground for opposition against the claims as granted. For example, if the subject-matter of the independent claim is held to involve an inventive step, this would necessarily also apply to the subject-matter of any of its dependent claims, whereas if the subject-matter of the independent claim is held to lack an inventive step, the request as a whole is not allowable, i.e. irrespective of the addition of dependent claims. [1.5] In the board’s view, analogous considerations apply to the case in which one or more further independent claims are added to an opposed independent claim as granted, if the latter claim is maintained, either as granted or in amended form, since the addition of one or more further independent claims leaves unimpaired the question of whether or not arguments submitted by the proprietor and/or amendments made to the opposed independent claim overcome an objection based on a ground for opposition against that claim. The above case is to be clearly distinguished from the case in which the proprietor amends the claims as granted by completely deleting the opposed independent claim, e.g. claim 1 as granted, in order to overcome an objection based on an opposition ground against that claim, and by explicitly including all of the features of the deleted independent claim in each one of the dependent claims as granted which were dependent on the deleted claim. In this case, the amendments to the dependent claims, which are thereby reformulated as independent claims, are merely in consequence of the complete deletion of claim 1 (see also T 1416/04 [5.1]).
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T 993/07 – Stay Focused
K’s Law – The ebook
[1.6] [The patent proprietor] argued that R 57a EPC 1973 (now R 80) did not require that an amendment must provide a contribution to avoid the revocation of the patent and, hence, did not prohibit the presentation of several independent claims in lieu of a single, opposed independent claim, where the respective differences between the several claims and the single claim could be seen as being occasioned by grounds for opposition. It argued that R 57a could simply be interpreted as prohibiting amendments which fall outside the legal framework of the opposition, e.g. amendments that merely tidy up dependent claims unaffected by the opposition. Further, [the patent proprietor] argued that the rights of the proprietor would be unduly curtailed if the proprietor’s options were limited to either claiming the specific embodiments of the granted dependent claims or a single embodiment taken from the patent specification, since he would thereby be forced to accept a suboptimal strategy for overcoming the opposition, instead of saving the commercially relevant scope of the patent by a parallel presentation of several specific embodiments disclosed in the specification. For example, where the parallel solutions screws, bolts or rivets, in lieu of “fastening means”, disclosed in the patent specification constituted the commercially most viable amendments, the option of choosing solely one of these solutions was unappealing, as it would open the door for competitors to pursue the other parallel solutions, even though these solutions fell within the scope of the granted patent, were originally disclosed, and could have been claimed had the proprietor been aware of the necessity to claim such solutions prior to grant. Such awareness could not have been expected if a so-called “accidental” anticipation was cited for the first time in opposition proceedings. [The patent proprietor] also noted that after grant, i.e. during opposition proceedings, divisional applications could not be filed. [1.7] The board does not find these arguments convincing. The opposition procedure is not designed to be an extension of the examination procedure, see point [1.2] above. In examination proceedings, it is the applicant’s task and responsibility to draft the claims on the basis of which the grant of a patent is requested, A 78 and A 113(2). This involves, inter alia, determining for which matter protection is to be sought, how many independent claims and of which category are required in order to adequately define the matter to be protected, and whether or not dependent claims are to be included and, if so, which particular embodiments these claims should be concerned with. The latter, in turn, involves considerations as to the commercial relevance of each of these embodiments. As to the number of dependent claims, additional costs caused, such as claims fees and translation costs, are to be taken into account as much as the question of whether or not dependent claims are important as valuable fall-back positions for the case that the corresponding independent claim is found unallowable, for whatever reason, in opposition proceedings or national revocation proceedings. It also has to be considered whether or not it is necessary to file separate patent applications, e.g. in parallel or by way of divisional applications, in order to obtain exclusive rights for different aspects of the invention as comprehensively as possible. In the board’s view, for the same reasons as set out above, see point [1.2], opposition proceedings are not to be understood as an opportunity for the proprietor to, fix any, from his perspective, shortcomings in the patent, such as an insufficient number of independent and/or dependent claims in order to define all commercially valuable embodiments. The fact that the addition of one or more independent and/or dependent claims may improve the fall-back positions in any future revocation proceedings before a national court is clearly not the purpose and design of either R 80 or the opposition procedure, as set out above. The board observes that, whereas R 80 is a lex specialis for amendments during opposition proceedings, a limitation procedure pursuant to A 105a, which offers the proprietor the opportunity to limit the patent by amending the claims, is not subject to the same requirement as set out in R 80. As to the example of replacing “fastening means” by “screws, bolts or rivets”, the board notes that R 80 does not prohibit making amendments in opposition proceedings to an opposed independent claim, e.g. in order to overcome an inventive step objection, by replacing a general term in the claim by a number of specific alternatives disclosed in the specification. It is however noted that the examination as to whether or not the amendments comply with the requirements of A 84 (see G 9/91 [19]) that the claims shall be clear and, both individually and in their entirety, be concise, is a different matter. The examination of these requirements clearly depends on the specific facts of the case, cf. T 79/91 [2.2-2.5], and T 246/91, point 7 (both not published in OJ). [1.8] In connection with the interpretation of R 57a EPC 1973 (now R 80) [the patent proprietor] referred to decisions T 1138/02, T 181/02, T 223/97, T 610/95, G 1/84, G 9/93, and G 1/05. It was argued that T 1138/02 and T 181/02 were inconclusive as regards the presentation of numerous independent claims in lieu of a single, opposed independent claim. Further, it was argued that T 610/95 misinterpreted the wording of R 57a EPC 1973. 2785 | 3398
T 993/07 – Stay Focused
K’s Law – The ebook
The board notes however that, even if [the patent proprietor’s] understanding of T 1138/02, T 181/02 and T 610/95 were followed, on the facts of the present case, this would not affect the board’s own considerations as set out above at points [1.1-1.7]. In any case, the board is of the view that the considerations made in T 610/95 are fully in line with the considerations set out above at points [1.1-1.7], see T 610/95 [2.1-2.2], the relevant passages of which read as follows: “The EPC does not guarantee a patent proprietor the right to have proposed amendments incorporated in opposition or subsequent appeal proceedings.” “Opposition proceedings are not an opportunity for the patentee to propose amendments to the text of a patent for purposes which are not clearly related to meeting a ground of opposition raised under A 100. In particular, the addition of claims to the text of the granted patent during opposition or subsequent appeal proceedings, which have no counterpart in the granted version of the claims of the patent in suit, cannot normally be regarded as an attempt to respond to an objection under A 100 and is, therefore, not admissible (see T 295/87, [end of 3]).” and “In this respect reference should also be made to decision G 1/84 [9]. In that decision the EBA made it clear that the opposition procedure is not designed to be, and is not to be misused as, an extension of the examination procedure. It would, in the board’s opinion, contravene those principles set out in G 1/84, if it was considered admissible to amend the text of a granted patent during opposition proceedings, while maintaining the sole independent claim under opposition, by incorporating an additional new independent claim which as such has no counterpart in the granted patent and, accordingly, was neither the subject of substantive examination in the examination procedure nor open to opposition owing to its non-existence in the granted patent.” As to T 223/97, [the patent proprietor] noted that two independent claims directed to respective specific embodiments covered by the independent claim as granted, in lieu of a single opposed independent claim, were allowed. The board notes however this relates to an auxiliary request which was considered in T 223/97, in which two independent claims were filed as a replacement of claim 1 as granted, without any further claims being maintained or filed. In the present case, the facts are significantly different. According to the main and first auxiliary requests, claim 1 as granted is not deleted but amended by the inclusion of further features from the description, whilst nineteen, respectively nine, independent claims, are added […]. These requests are more similar to the main request considered in T 223/97, which included, in addition to an amended independent claim 1, two new independent claims. As to this request the board held that (see T 223/97 [2.2]): “Il est clair que l’ajout de deux nouvelles revendications indépendantes ne saurait être recevable puisque cette addition, qui ne modifie en rien le sort de la revendication 1 mise en cause, ne saurait être considérée comme une restriction apportée à la revendication 1 ellemême pour répondre au motif d’opposition invoqué à son encontre.” (*) In the present board’s view, this consideration is fully in line with those set out above at points [1.1] to [1.7] with reference to G 1/84 and G 9/93. G 1/05 referred to by [the patent proprietor] is not concerned with the interpretation of R 57a EPC 1973 (now R 80) but with amendments in examination proceedings concerning divisional applications. With reference to the travaux préparatoires as regards earlier proposals for R 57 [the patent proprietor] argued that the chosen formulation of R 57a (now R 80) differed significantly from the stricter wording of earlier proposals for R 57. In the board’s view, however, even if this argument were accepted, it would not affect the board’s interpretation of R 80 (previously R 57a) as set out above. [1.9] The arguments submitted by [the patent proprietor] as to how R 80 should be interpreted are therefore not convincing. (*) “It is clear the addition of two new independent claims could not possibly be admitted, as this addition, which does not change the fate of impugned claim 1 could not be considered as a limitation of claim 1 itself in response to the ground of opposition that was raised against it.” If you wish to download the whole decision, just click here.
2786 | 3398
K’s Law – The ebook
J 1/10 - Desynchronize
J 1/10 - Desynchronize 1 Sep 2010
An application was filed on 17 December 2008. No priority was claimed. In a communication dated 29 January 2009, the Receiving Section informed the appellant that the designation of the inventor was missing from the request for grant. It invited him to remedy that deficiency within the prescribed time limit (R 60(1)). After having been sent the extended European search report, the appellant requested (by letter dated 27 July 2009) that the application be published as soon as possible under A 93(1)(b). On 19 August 2009 the Receiving Section (RS) informed the appellant that the application would be published on 16 September 2009. Since the designation of the inventor had not been filed, on 13 October 2009 the RS issued a decision refusing the application on the grounds that the prescribed time limit had not been observed. In two telephone conversations, the appellant was informed on 23 October 2009 that “... a request for early publication .... means that before starting the technical preparations for publication the applicant should have filed the designation of inventor. Thus the 16-month time limit ceases to exist ...”, and that “.... R 60 was interpreted in a way that the designation of inventor would have to be filed in any case before the termination of the technical preparations for publication, since it was clear that the designation of inventor is considered part of the application.” The applicant then filed an appeal. Here is what the Legal Board had to say: [2.1] A 81 stipulates that European patent applications must designate the inventor. This must be done in the request for grant or a separate document (R 19(1)). Failure to file the designation of the inventor together with the European patent application is a deficiency which may be rectified within 16 months of the filing or priority date, this period being deemed to have been observed if the designation of the inventor is filed before completion of the technical preparations for publication, R 60(1)). The RS advises the applicant of the deficiency (A 90(3) and (4)). The 16-month period is thus a time limit for performing a specific action, i.e. in this case for the applicant to rectify the deficiency brought to his attention. If he fails to do so before completion of the technical preparations for publication, the application must be refused pursuant to A 90(5). [2.2] The R 60(1) time limit was set at 16 months (or before completion of the technical preparations for publication of the application if later) to enable the applicant to provide the information about the designated inventor in the European patent application as published; under A 93(1)(b) publication occurs at 18 months as from the filing date. R 20(1) duly provides that the designated inventor must be mentioned in the published application. The reason for that is that this information needs to be available to the public as well as the EPO. It is therefore entered in the European Patent Register (A 127, Rule 143(1)(g)) and also published in the European Patent Bulletin (A 129(a)). [2.3] Under R 60(1), the 16-month period is deemed to have been observed if the information is communicated before completion of the technical preparations for publication of the European patent application. That extra clause is a “quasi-extension” of the period; it does not change its nature, i.e. that of a time limit for performing a specific action. If the designation of the inventor is filed after the 16-month period but still before completion of the technical preparations for publication, the time limit is deemed to have been observed. This extra clause was included in R 60(1) EPC as part of the 2006 revision of the Implementing Regulations without any detailed explanations, as it was modelled on several PCT provisions (see CA/PL 17/06, pages 186 and 187, and the minutes of the 30th meeting of the Committee on Patent Law, CA/PL PV 30, page 18). It enables the information about the inventor to be included in the European patent application as published, because publication occurs slightly later (18 months after filing), and the fiction that the 16-month period has been observed means that no decision refusing the application can then be issued. [2.4] In the present case, no priority was claimed, so the 16-month time limit expired on 19 April 2010 (Monday) (filing date: 17 September 2008; expiry of the 16-month time limit: 17 April 2010, Saturday, extended under Rule 134(1) EPC to Monday, 19 April 2010). The communication under R 60(1) is dated 29 January 2009 and 2787 | 3398
K’s Law – The ebook
J 1/10 - Desynchronize
was sent by registered mail. The statement of the grounds for appeal indicates that the communication was validly notified. The appellant filed the designation of inventor on 2 December 2009, i.e. well before the end of the 16-month period. [3.1] The issue arising in this case is whether the legal position regarding designation of the inventor is changed by early publication of the European patent application at the applicant’s request under A 93(1)(b), which can mean that the European patent application as published does not tell the public who the inventor is. In the board’s judgement, early publication under A 93(1)(b) has no effect on the provisions governing designation of the inventor. If it did, it would be to shorten the 16-month period for filing the designation of the inventor. But there is no legal basis for assuming any connection between early publication and a reduction in the 16-month period. Nor can this be inferred from R 60(1) or the provisions governing the procedure for rectifying deficiencies (A 90(3) and (4)). [3.2] Also, the board can see no reason why the provisions concerning publication of the European patent application (A 93(1) and R 20(1)) should take precedence over those governing filing of the designation of inventor. It is desirable – and was indeed the legislator’s intention – that the application when published should contain the information about the inventor. The periods for publication and for filing the designation of inventor (18 and 16 months respectively) are therefore synchronised and run in parallel. But the public can also be informed after publication as to who the inventor is, in the form of - for example announcements in the European Patent Register (A 127, R 143(1)(g) and the European Patent Bulletin (A 129(a)). Therefore, the information about the designated inventor would be available to the public in the sense intended by the legislator. [3.3] Another potential scenario in which the application cannot be refused is that for some reason the RS issues the communication under R 60(1) EPC only shortly before or indeed after the 16-month period expires, and it is thus despatched or notified after the application’s publication under A 93(1)(a). Notification of this communication is the sole condition triggering a loss of rights and possibly a decision refusing the application. Hence, from a legal point of view, the already published application is of no significance as regards the missing designation of inventor. [3.4] For the reasons outlined above, the appeal is to be allowed. The decision under appeal is wrong in its interpretation that the 16-month time limit for filing the designation of the inventor is shortened if the European patent application is published early. Reimbursement of the appeal fee [4.1] Reimbursement of the appeal fee is ordered where a board of appeal deems an appeal to be allowable and reimbursement is equitable by reason of a substantive procedural violation (R 103(1)(a)). [4.2] According to A 113(1), EPO decisions may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. This provision is a guarantor for the parties that proceedings before the EPO will be conducted openly and fairly (cf. J 20/85 [4(a)] and J 3/90). The right to be heard is intended to ensure that the parties to proceedings are not taken by surprise by grounds mentioned in a decision adversely affecting them (cf. e.g. decisions T 669/90 and T 892/92). [4.3] The reasons for refusing the application under A 90(5) were not put to the appellant first, to enable him to comment on them. Nor does the decision itself give him the reasons why he was considered not to have observed the 16-month period for filing the designation of the inventor. Quite the contrary: the appellant was informed of them only after notification of the decision and after he telephoned the RS to ask about it. Accordingly, the decision under appeal is based on grounds on which the appellant did not have the opportunity to present comments; it thus contravenes the requirements of A 113(1). Therefore, a substantial procedural violation occurred in the first-instance proceedings. [4.4] Since the decision of the first instance contravenes A 113(1) and the appeal is allowed, it is equitable to reimburse the appeal fee pursuant to R 103(1)(a).
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K’s Law – The ebook
J 1/10 - Desynchronize
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T 716/07 – The Long And Winding Road To Inventive Step
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T 716/07 – The Long And Winding Road To Inventive Step 31 Aug 2010
The present decision is in no way spectacular but it presents in a very pedagogical manner how inventive step is nowadays assessed by the Boards in the chemical realm: Novelty of the subject-matter having been acknowledged, the assessment of inventive step begins with the search for the closest prior art. The closest prior art [4.1] The closest state of the art is normally a prior art document disclosing subject-matter with the same objectives as the claimed invention and having the most relevant technical features in common. The objective of the patent in suit was to recover thermally instable N-vinyl-2-pyrrolidone by continuous distillation from its reaction mixture […]. Document D6 discloses the distillation of a ternary mixture. It neither mentions N-vinyl-2-pyrrolidone nor the distillation of any other thermally instable compounds. Document D13 does not relate to continuous distillation. In contrast thereto, document D7 discloses the continuous distillation of N-vinyl-2-pyrrolidone and addresses the thermolability of this compound […]. Therefore, document D7 rather than document D6 or D13 represents the closest prior art. The next step is to determine the problem solved by the difference(s) of the claimed subject-matter with respect to the closest prior art: The problem to be solved [4.2] The [patent proprietor] argued that a comparison between example 3 of document D7 with the examples of the patent in suit showed that a higher percentage of N-vinyl-2-pyrrolidone is recovered by means of the process claimed in the patent in suit […]. In particular, the [patent proprietor] pointed out that - in example 3 of document D7 300 g/h of N-vinyl- 2-pyrrolidone were fed into the distillation column whereas only 185 g/h of pure N-vinyl-2- pyrrolidone were withdrawn from the column under steady state condition, which meant that only 62% of the N-vinyl-2-pyrrolidone was recovered […]. In contrast to this - in examples 1 and 2 of the patent in suit, 96% and 95%, respectively, of the N-vinyl-2-pyrrolidone was recovered at a purity of 99.9% by weight […]. This finding can be used to reformulate the problem to be solved only if - said examples of document D7 and of the patent in suit are comparable to the extent that the alleged effect is convincingly shown to have its origin in the distinguishing feature of the invention (see T 197/86 [6.1.3]), and, in the affirmative, that - it is probable that this effect is achieved over the whole range of the claims of the patent in suit, and - that the effect is related to the problem to be solved as disclosed in the respective application as filed (see T 1188/00 [4.5]). [4.2.1] Hence, it is first to be assessed whether or not the comparison of the example 3 of document D7 with examples 1 and 2 of the patent in suit shows that this increase in the portion of N-vinyl-2-pyrrolidone recovered in high purity is due to the distinguishing feature. A feature which distinguishes the subject-matter claimed from the disclosure in document D7 as the closest prior art is that the claims of the patent in suit require that an additional column is present in which water is distilled off […]. However, the process of examples 1 and 2 of the patent in suit does not differ only from that of example 3 of document D7 in that an additional column was used but also in that - the mixtures to be separated in the patent in suit contained water whereas no presence of water is reported in document D7, and in that - the distillation temperatures in the examples of the patent in suit were higher.
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T 716/07 – The Long And Winding Road To Inventive Step
Consequently, the increased portion of high purity N-vinyl-2-pyrrolidone recovered in examples 1 and 2 of the patent in suit can only be clearly attributed to the distinguishing feature if the presence of water and the higher distillation temperature do not contribute to this effect. As both parties pointed out, document D12 discloses that N-vinyl-2-pyrrolidone may - hydrolyse in acidic aqueous solutions into 2-pyrrolidone and acetaldehyde, and may - polymerise at high temperatures so that vacuum distillation at “temperatures above 120°C should be avoided” […]. Hence, the presence of water in the mixture separated in the examples of the patent in suit is rather expected to decrease the portion recovered due to hydrolysis of part of the N-vinyl-2-pyrrolidone. The increase in temperature from - 95°C in example 3 of D7 […], to - 160°C and 195°C in the distillation columns used in example 1, and 178°C and 205°C in example 2 […], i.e. to temperatures well above those recommended in document D12 in order to inhibit polymerisation of N-vinyl-2-pyrrolidone, is also expected to decrease the portion of N-vinyl-2-pyrrolidone recovered. Hence, the observed increase in the recovered portion of N-vinyl-2-pyrrolidone can be attributed to the fact that an additional distillation column is used in examples 1 and 2 of the patent in suit, namely to the feature distinguishing the subject-matter of the present claims over the disclosure of document D7. [4.2.2] Then it is to be determined whether it is probable that this effect is achieved over the whole range of the claims of the patent in suit. The only independent claim requires - a pressure of 2.66x104 Pa or less and a temperature of 180°C or less in the first column, and - a pressure of 1.33x104 Pa or less and a temperature of 230°C or less in the second column […]. Document D12 recommends vacuum distillation of Nvinyl 2 pyrrolidone. There is no indication in this document that the application of a reduced pressure might affect the stability of N-vinyl-2-pyrrolidone. High temperatures do, however, accelerate its polymerisation and thus lead to a decrease the recovery of N-vinyl-2pyrrolidone […]. The increased recovery of N-vinyl-2-pyrrolidone can be considered to be demonstrated over the whole range of the claims if the respective examples work under the most unfavourable conditions, namely close to the maximum temperatures indicated in the claims. This is indeed the case in example 2 where the bottom liquid temperature of the first column is 178°C in the first and 205°C in the second column (which is close to the maximum values of 180°C and 230°C indicated in present claim 1). Hence, it has been shown that the effect is achieved over the whole range of the claims. [4.2.3] Finally, it is to be assessed whether the effect is related to the problem to be solved as disclosed in the respective application as filed. According to the application as filed, the problem to be solved was to provide “... a process ... which makes it possible to recover chemically unstable N-vinyl-2-pyrrolidone efficiently and steadily and in high purity …” […]. The demonstrated increase in the portion of high purity N-vinyl-2pyrrolidone recovered thus is related to the problem initially disclosed. [4.2.4] Therefore, the problem posed and solved in view of document D7 as the closest prior art may be redefined as to provide a continuous distillation of a liquid composition containing N-vinyl-2-pyrrolidone, N-(2hydroxyethyl)-2-pyrrolidone and water, resulting in an increased recovery of highly pure chemically unstable Nvinyl-2-pyrrolidone. [4.2.5] The cause of this problem as disclosed in document D7 is the thermolability of N-vinyl-2-pyrrolidone, namely its tendency to decompose at high temperatures […]. It still remains to be shown that the solution to this problem involved an inventive step: Was the solution obvious? [4.3] The [opponent] argued that it was obvious for the person skilled in the art to combine the disclosure of document D7 with that of D6 or D13 and thus to end up with the subject-matter of the present claims […]. The fact that the features of a claim of a patent not disclosed in the closest prior art are preferred features of another document of the prior art does not suffice to consider the subject-matter of this claim to be obvious. Obviousness requires additionally that said other document gives an indication that said preferred features contribute to the solution of the problem solved in the patent. Such an indication can be an explicit one if the other document mentions that said preferred features solve the problem, it can be an implicit one if said other document informs how to avoid conditions which are known to be a cause of the problem. 2791 | 3398
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T 716/07 – The Long And Winding Road To Inventive Step
K’s Law – The e
[4.3.1] Document D7 as such gives no indication that the distillation might be performed using two distillation columns. [4.3.2] Document D6 mentions that the continuous countercurrent distillation of multicomponent mixtures containing N components requires N-1 columns if all the components are to be obtained in pure form. Otherwise, when a single column is used, either the top or the bottom product consist of more than one component […]. Figure 10.71 on page 721
shows a system of two columns for separating a three component mixture ABC, where the bottom product of the first column containing B and C is fed to a second column separating these components by distilling off component B. However, document D6 does not relate to the problem of increasing the recovery of thermolabile monomers, let alone of N-vinyl-2-pyrrolidone. Thus, it gives no explicit indication to the person skilled in the art in charge of solving this problem to modify the process disclosed in document D7 by splitting up the distillation into two distillation steps in two different columns. Moreover, it does not address the conditions which are known to have an effect on the recovery of N-vinyl-2- pyrrolidone, i.e. to the presence or absence of heat, light, air or water during distillation […]. Therefore, the person skilled in the art would not consult document D6 when solving the problem mentioned above. [4.3.3] Document D13 claims a process for making N-vinyl compounds by decomposition of the respective alphaalkoxyalkyl compounds (see claim 1). In example 5 the catalytical elimination of methanol from N-2methoxyethyl-2-pyrrolidone yields N-vinyl-2-pyrrolidone. Most of the methanol is distilled off during the reaction and the product is purified by fractional distillation. The [opponent] argued that document D13 suggested to distil off the lowest boiling compound first (namely the alcohol) and thus to perform the distillation in two steps which required two columns if performed continuously […]. However, there is no hint in document D13 that a two step distillation process might increase the recovery of thermolabile N-vinyl-2-pyrrolidone. Therefore, also document D13 does not give an indication that a modification of the process disclosed in document D7 by splitting up the distillation into two steps might be helpful for solving the problem mentioned above. [4.3.4] Consequently, the subject-matter of claim 1 involves an inventive step. The same holds for the subjectmatter of dependent claims 2 and 3. If
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NB: Great minds think alike. Laurent Teyssèdre has reported this decision not later than yesterday (here).
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here.
T 811/06 – A Matter Of Judgment
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T 811/06 – A Matter Of Judgment 30 Aug 2010
NB: All articles and rules refer to the EPC 1973. [4.1] The examining division (ED) asserted in the refusal of claim 1 of the main request that the division of a memory in two interchangeable separate areas according to the characterising portion of claim 1 was known in many fields, for instance as a “ping-pong” memory architecture and was thus common general knowledge. [4.2] The appellant argues that the ED, by not providing a prior art document in support of this assertion, failed to sufficiently reason its decision, and prevented him from formulating a cogent response. The question arises as to whether the behaviour of the ED in the proceedings up to refusal deprived the applicant of the right to be heard (A 113(1)), and whether the decision was sufficiently reasoned (R 68(2)). [4.3] Decision T 939/92 referred to by the appellant in the statement of grounds of appeal (followed for instance in T 1242/04 [9.2]) sets out that A 54(2) does not limit the state of the art to written disclosure in specific documents. Rather it defines it as including all other ways (“in any other way”) by which technical subjectmatter can be made available to the public. Therefore, the absence of a reference to a particular document does not mean that there is no state of the art, as this could reside solely in the relevant common general knowledge, which, again, may be in writing, i.e. in textbooks or the like, or be simply a part of the unwritten “mental furniture” of the notional “person skilled in the art”. It is true, and the board agrees with the appellant in this respect, that in the case of any dispute as to the extent of the relevant common general knowledge this, like any other fact under contention, has to be proved, for instance by documentary or oral evidence (see also T 329/04 [45]). [4.4] According to the minutes of the oral proceedings (OPs) held before the ED, the applicant accepted that conventional structures known as “double-buffering” or “ping-pong” memory architecture might be used to increase the throughput of data streams. The board thus deduces that the applicant did not dispute that a pingpong memory architecture and its benefit were common general knowledge. By contrast, the appellant stated that he was unaware of an example in the context of look-up tables […]. [4.5] Claim 1 of the refused main request sets out separate (active and pending) tables for selecting packets and does not expressly set out look-up tables. The last paragraph on page 4 of the decision under appeal refers to examples of ping-pong memory architectures with separate memory areas in general and also does not specifically refer to the use of such areas as look-up tables. [4.6] The device of D2 uses a memory containing a single table (operating indeed in practice as a look-up table) to select data packets […]. This was not contested by the appellant. The question whether a person skilled in the art would have combined the teaching of D2 with the (uncontested) common general knowledge of a ping-pong architecture having two interchangeable memory areas is a matter of judgment. Documentary evidence for the feature of ping-pong architecture “in the context of look-up tables” was thus not necessary, and the ED was not required to provide documentary evidence for their argumentation. [4.7] In view of the above, and since the reasoning in the decision only reflects issues which have been debated in the OPs (which the appellant did not contest), the appellant was not deprived of an opportunity to present comments on the issues relevant to the outcome of the case in the proceedings up to refusal (cf. A 113(1)). [4.8] R 68(2), first sentence, aims to put the appellant in a position to ascertain the reasons for the decision in order to defend his rights, in particular by setting out grounds of appeal, and the board to exercise its power of review of the legality of the decision. As explained in the foregoing, the reasoning in the decision under appeal […] built on facts disclosed in D2 and uncontested common general knowledge to conclude that the subjectmatter of claim 1 lacked an inventive step. The argument qualified by the appellant as a bold assertion of “common general knowledge” did not prevent him from understanding the reasoning in the decision and from formulating counter-arguments in the statement of grounds of appeal. Therefore, the decision is also considered to be sufficiently reasoned. 2793 | 3398
T 811/06 – A Matter Of Judgment
K’s Law – The ebook
[4.9] As a result, the ED did not commit a substantial procedural violation and the appellant’s request for reimbursement of the appeal fee is not allowable. If you wish to download the whole decision, please click here.
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T 1918/07 – Bad Example(s)
K’s Law – The ebook
T 1918/07 – Bad Example(s) 28 Aug 2010
[3.1] During the proceedings the application has been amended so that the claimed invention is directed to the formation of a layer of indium-doped zinc oxide on a polymeric substrate made of one of the specific polymeric materials specified in claim 1. As a result of the limitations imposed by these amendments, all the specific examples 1 to 23 disclosed on pages 21 to 32 of the description and relating all to the formation of a coating on a substrate made of glass do not represent examples of the claimed invention. The fact that none of the specific examples 1 to 23 given in the description constitutes an example of the claimed subject-matter was objected by the examining division pursuant to A 84 EPC 1973. However, in the view of the Board the fact that all these examples - which have been maintained in the description as presently amended for illustrative purposes only - do not constitute examples of the claimed invention does not constitute an objectionable deficiency, let alone a deficiency giving rise in the circumstances of the present case to an objection under the EPC. In particular, the description specifies several alternative coating techniques that can be used in the formation of a coating of indium-doped zinc oxide on a transparent polymeric substrate as claimed […] and also contains a detailed description of several apparatuses that can be used in the formation of the claimed indium-doped zinc oxide coating together with the operation of the same […]. In addition, the specific examples 1 to 23 on pages 21 to 32 of the description - although all involving only substrates of glass - illustrate indirectly how the coating techniques and apparatuses referred to above can be applied to substrates made of the claimed polymeric materials. It follows that the claimed invention is fully supported by the description within the meaning of A 84, second sentence, and is also sufficiently disclosed within the meaning of A 83. In addition, although none of the specific examples labelled 1 to 23 on pages 21 to 32 of the description constitutes an example of the claimed invention, the requirements of Rule 42(1) (e) EPC are complied with since this rule requires that the description “shall [...] describe in detail at least one way of carrying out the invention claimed using examples where appropriate” and, as already noted above, the description contains a detailed description of several ways of carrying out the invention. As regards the “examples” referred to in R 42(1)(e), the Board considers that in the circumstances of the present case in which the amended application documents satisfy the requirements of A 83 and A 84 and the description describes in detail at least one way of carrying out the invention within the meaning of R 42(1) (e), specific examples are not indispensable and therefore the fact that none of the specific examples given in the description constitutes an example of the claimed invention does not give rise to any objection under R 42(1)(e) EPC which only requires specific examples of the invention “where appropriate” (see in this respect decision T 990/07 [3], regarding R 27(1)(e) EPC 1973, the text of which is identical to R 42(1)(e)). If
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NB: This decision has also been reported on Le blog du droit européen des brevets. Post related to similar decisions can be found here and here.
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Interpretative spotlight: “maintain”
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Interpretative spotlight: “maintain” 28 Aug 2010
[1.1] The opponents have objected that the appeal was inadmissible under R 101 because it did not contain a statement defining the extent to which amendment or cancellation of the decision was requested, R 99(2). Furthermore since there was a contradiction between the request in the notice of appeal […] and the reasoning in the statement of grounds of appeal […] the appeal was not substantiated and the procedural situation was unclear. Therefore, according to the opponents, the appeal should be considered as inadmissible, because it did not meet the provisions of R 101(1). [1.2] The board does not concur with this position of the opponents. Rather, as pointed out by the proprietor, in its notice of appeal […] the proprietor requested: “Reversal of the decision and maintaining the patent”. Contrary to the perception of the opponents, the board does not interpret this request as “maintaining the patent as granted”. Instead the basis for the decision of the opposition division (OD) to revoke the patent was the set of claims filed with the letter of 18 October 2004 […] which was the only remaining request, because the proprietor had withdrawn the auxiliary requests during the oral proceedings […]. Accordingly reversal of the decision as requested would automatically lead to maintenance of the patent in the only version before the OD. Therefore the board finds that the notice of appeal complies with R 99(1). [1.3] R 99(2) defines the requirements to be respected in the statement of grounds of appeal. These shall “indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based”. The board has no doubt that the patent proprietor in its letter containing the statement of grounds of appeal […] has complied with these provisions. The board in particular notes that the statement of the grounds of appeal comprises detailed reasons why the claims of the only request before the OD and the board should be considered allowable. The opponents’ argument that it is not clear from the statement which claims, from those as granted and those before the OD, are meant by the appellant patentee is not convincing: these claims differ only in that dependent claim 8 as granted has been deleted and in that the expression “astigmatism correcting properties” in the granted independent claims 1 and 17 explicitly refer to “eye astigmatism correcting properties” in the remaining independent claims 1 and 16 before the OD. As pointed out by the patentee, the statement of the grounds of appeal clearly address the contribution provided by the amended reference to “eye astigmatism” […], and also refer to independent method claim 16, which is absent from the set of claims as granted […]. [1.4] The opponents have made reference to decision T 501/92 for supporting their view that a request made by the patent proprietor at the first instance opposition proceedings was not applicable at the appeal proceedings and therefore not procedurally effective if this request had not been filed anew. The board, however, finds that the situation in the present appeal case has little in common with the situation in the cited decision: in case T 501/92 the OD had rejected the opposition, not revoked the patent, the appeal had been filed by the opponent, not the patentee, and the patentee had not formulated any request whatsoever in his response to the opponent’s statement of grounds of appeal. [1.5] It is concluded that the appeal is formally admissible. If you wish to download the whole decision (T 2030/07), please click here.
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T 926/06 – Stuck In-Between
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T 926/06 – Stuck In-Between 27 Aug 2010
The present decision deals with an amended set of claims: the patent proprietor had added a feature taken from the drawings. The Board examines whether the amendment complies with the requirements of A 123(2). [19.1] Among the features which are intended to define the invention more clearly is the requirement that the spacer 22 is provided between the elastic plate and the nozzle plate. According to the [patent proprietor], this feature is based on the drawing of Figure 5.
[19.2] It is established case law of the boards of appeal that there is no objection in principle against further defining by reference to the drawings any features which were already claimed. This extends to features shown only in the drawings being introduced into the claim for greater precision. (T 169/83 [2.5]). [19.3] The incorporation into the claim of features taken from the drawings is, nevertheless, subject to the same restrictions that apply to any amendment, which is to say that the feature concerned - unless found expressis verbis in the application as filed - must be clearly and unambiguously derivable by the skilled person from the content of the application as a whole. If it is not, the amendment does not comply with A 123(2). [19.4] It is also established case law that while it is permissible to use the drawings as a basis for providing greater precision in respect of features already claimed, it is not permissible to introduce new features which are selected arbitrarily from among the features of the drawings in the sense that it is not directly derivable from the application as originally filed that the feature can be isolated from other features of the drawings (T 191/93 [2.1]). [19.5] In the present case, the feature introduced into the claim from the drawings, in particular from Fig 5 of the drawings, is that a “spacer (22) is provided between the elastic plate (1) and said nozzle plate (35)” (emphasis added by the board).
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T 926/06 – Stuck In-Between
K’s Law – The ebook
The [patent proprietor] submitted that the term “between” is clear in that its meaning can be ascertained from the description (published application, column 7 line 41 onwards) which indicates the order in which the layers are stacked. Thus, the term “between” itself served to set up the defining geometry of plate, spacer nozzle plate. [19.6] However, as convincingly argued by the [opponent], the alleged structure of the spacer being located “between” the plate and the nozzle plate is itself not uniquely defined by the drawings, since Figure 5, which the [patent proprietor] stated as basis for the claim amendment (as well as other Figures of the drawings (Fig. 6, Fig. 7)), show the presence of several other layers separating the plate 1 from the nozzle plate 35. The requirement of being in between the plate and the nozzle plate would be satisfied by any position of the spacer among the other layers, which clearly also satisfy the condition of being located between the plate and the nozzle plate. A clear and precise meaning for the term “between” is thus not directly and unambiguously derivable from the application as originally filed in the sense that this particular feature can be isolated from other features of the drawings. The board therefore concludes that the amendment introduced into claim 1 of the sixth auxiliary request does not comply with the requirements of A 123(2). To read the whole document, please click here.
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T 369/08 – Let’s Talk Money … Later
K’s Law – The ebook
T 369/08 – Let’s Talk Money … Later 26 Aug 2010
[7.1] D7 was cited at a very late stage of the procedure, i.e. after oral proceedings (OPs) had been convened. This fact is not in dispute. [7.2] The patent proprietor objected to the manner in which D7 had been introduced to the procedure, i.e. the tardiness, which ultimately resulted in the decision to remit and requested that all future costs of the procedure be borne by the appellant/opponent […]. [7.3] In considering whether to order an apportionment of costs it has to be examined whether there is a cogent reason, e.g. strong mitigating circumstances for the late submission of this document (see for example T 611/90 [5], T 874/03 [5], and T 931/06 [6.3].) [7.4] D7 was cited, according to the opponent […] in response to the communication issued by the Board accompanying the summons to attend OPs […]. In this communication the Board indicated that it - provisionally - concurred with the conclusions given in the decision under appeal […] and also with arguments put forward by the patent proprietor in the rejoinder to the statement of grounds of appeal […] with respect to the relevance of the teachings of D1. [7.5] D7 had been cited in the pre-grant proceedings (designated “D3”) and played a prominent role in those proceedings: [7.5.1] In the International Preliminary Examining Report (IPER) the International Preliminary Examining Authority (IPEA) indicated that an inventive step could probably be recognised with respect to this teaching if the thermal stability was to be defined more precisely, indicating in particular the features oriented film and the nature of the measurement, i.e. the mechanical properties specified in the operative claim. [7.5.2] During the examining proceedings before the EPO, the examining division (ED) followed this approach, and further required definition of the temperature at which the aging was to be carried out be introduced into the claim. [7.5.3] Thus the opponents at the time of formulating the notices of opposition would have been aware from the examination file - which was publicly available and consultable online - of the teachings of D7 and the role this document had played in the pre-grant proceedings. [7.6] It may well have been the case that when formulating the oppositions the opponents had come to the conclusion, in the light of the correspondence from the examination proceedings, that the teachings of D7 were not likely to lead to revocation of the patent. However in its rejoinders to the notices of opposition the patent proprietor argued that D1 did not relate to the stability of the polyesters per se but to the phosphorus compounds during the manufacture of the polyesters. This view was also taken by the opposition division (OD) in its communication accompanying the summons to attend OPs. Also in the decision this assessment of the relevance of D1 remained, as explained herein above. [7.7] Thus at the very latest after receipt of the decision of the OD the opponents would have been aware that D1 on its own was unlikely to result in revocation of the patent precisely because (in the view of the opposition division) the teaching of D1 was restricted to the stability of the phosphorus compounds during the preparation of the polyesters and not to the stability of the ultimate copolyesters. [7.8] The arguments of the patent proprietor in its rejoinder to the appeal were […] consistent with this finding of the decision under appeal. [7.9] Thus the opponent has failed to demonstrate that there was any development during the appeal proceedings themselves which would have - on its own - led to a reappraisal of the significance of the prior art cited in the notices of opposition, in particular D1. On the contrary the only reason advanced was an internal one, i.e. that it had reviewed the documents upon receipt of the communication of the Board and changed its assessment of the significance of D7 […]. 2799 | 3398
T 369/08 – Let’s Talk Money … Later
K’s Law – The ebook
In this context it is important to recall that the Board in its communication merely reflected the findings of the decision under appeal with respect to D1 but did not offer any new insights of its own. [7.10] Consequently the Board has to conclude that no mitigating circumstances or cogent reason for the late submission of D7 can be identified […]. [7.11] The late citing of D7 in effect has, furthermore, resulted in an entirely new case being presented for the patent proprietor to answer and this only 6 weeks before the OPs before the Board. The consequence of this tardiness is that a further procedure before the OD and possibly the Board of appeal is required, which might not have been the case had this document been cited in a more timely fashion, i.e. at the latest at the outset of the appeal proceedings. [7.12] However it is apparent that the costs arising will depend on the course of the future proceedings. The consequence of this is that the Board necessarily is not in possession of the necessary facts to decide upon an apportionment of costs. Consequently the Board considers it appropriate not to make an “open ended” order of apportionment of costs as was done in the aforementioned T 611/90 but instead to follow the approach adopted in T 758/99 [5] in which the Board responsible refrained from making an “open-ended” award of costs and concluded that the appropriate course of action was to order that a decision on the request for apportionment of costs be taken at a later stage. [8] It is therefore incumbent upon the OD in its further prosecution of the case consequent upon the remittal to it by the Board, to consider and decide upon the issue of apportionment of costs in the light of the facts before it, in accordance with the power conferred upon it by A 104(1). If you wish to download the whole decision, please click here. NB: This decision was also reported on Le blog du droit européen des brevets.
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T 233/06 – Unfounded Presumption
K’s Law – The ebook
T 233/06 – Unfounded Presumption 25 Aug 2010
** Translation from the French ** [10.3] When carrying out comparative trials in order to demonstrate the problem solved by the claimed subjectmatter, the comparison has to be such that it convincingly shows that the distinctive feature(s), here the use of an alkyl(C8-C20)betaine, indeed allows to solve said problem in respect of the closest prior art. [10.4] When dealing with complex cosmetic systems comprising a blend of a plurality of components that may have interactions [with each other], it is not possible to affirm a priori that in such compositions replacing one component by another of different structure but having the same function will necessarily lead to the same sensorial properties. For the same reasons, it is not possible to consider that an improvement of the smoothing (lissage) that is obtained by replacing cocoamidopropyl betaine and disodium cocoamphodiacetate by cocoylbetaine within the particular context of compositions B and C tested in document D14 would also have to be observed when the same substitution is made within the different context of example 11 of document D4, which is the closest prior art. As a consequence, in the absence of evidence or technical arguments which would make it credible, it cannot be considered that the improvement of smoothing that was found with respect to compositions B and C used in document D14 proves that such an improvement is also obtained with respect to the compositions of example 11 of document D4. [10.5] The patent proprietor has argued that the comparison offered in document D14 rested on the principle put forward in decision T 197/86, according to which it could be necessary to modify the elements of comparison such that they differed by the distinctive feature only. However, in order for it to be possible to draw conclusions from the comparison offered in view of the problem solved with respect to the closest prior art, this [approach] presumes that the influence of the modification carried out on the closest prior art, in order to bring out the role of the distinctive feature, can be estimated in a reliable manner, which has not been demonstrated for the present trials. Therefore, the experimental report contained in document D14 cannot persuade the Board. The Board then considers the comparative trials according to document D15, which are not found to provide credible evidence for the whole domain of claimed compositions. The Board concludes: [10.9] According to the case law of the Boards of appeal, each party to the proceedings separately bears the burden of proof for the facts it alleges. If a fact which is important for the decision is not proven, the decision is taken to the detriment of the party which carries the burden of proof for this fact (see Case Law of the Boards of appeal of the EPO, 5th edition, 2006, VI.K.5.5.1.1). In the present case, it follows from the above that the allegation of the patent proprietor according to which the use of an alkyl(C8-C20)betaine, as compared to the use of cocoamidopropyl betaine or disodium cocoamphodiacetate, all other tings being equal, would result in an improvement of the smoothing of both wet and dry hair, has not been made credible in view of the technical arguments and the elements of proof cited. As a consequence, the improvement of the smoothing over the whole claimed domain is pure speculation and the shifting of the burden of proof in favour of the patent proprietor cannot possibly take place. If you wish to download the whole decision (in French), please click here.
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T 1548/08 – Ex Machina Claim Of No Avail
K’s Law – The ebook
T 1548/08 – Ex Machina Claim Of No Avail 24 Aug 2010
This decision deals with an appeal following the revocation of the opposed patent by the Opposition Division (OD). During the appeal proceedings, the patent proprietor filed a certain number of auxiliary requests, some of which (auxiliary requests 4, 5 and 8 to 11) were filed one month before the oral proceedings (OPs) and others (auxiliary requests 12 and 13) were filed during the OPs. Obviously, the admissibility of these late filed requests is an issue before the Board. The patent proprietor pointed out that auxiliary requests 12 and 13 both included the feature of dependent claim 4, which was not explicitly opposed and thus not a subject of the decision of the OD. In view of G 9/91, the decision of the OD was therefore to be considered null and void since the patent could not be revoked without dealing with dependent claim 4. Accordingly, these requests did not amend the appellant’s case and should not come as a surprise to the respondent. The Board does not agree: [2] According to Article 12(4) RPBA, the Board can hold inadmissible requests that could have been presented in the first instance proceedings. Pursuant to Article 13(1) RPBA the admissibility of amendments to a party’s case after it has filed its grounds of appeal is subject to the discretion of the Board. The discretion is to be exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy. Furthermore, according to Article 13(3) RPBA, amendments submitted after OPs have been arranged shall not be admitted if they raise issues which the Board or the other party cannot reasonably be expected to deal with without adjournment of the OPs. The Board cannot see any justification for the late filing of auxiliary requests 4, 5 and 8 to 13. The explanation that these requests were filed in reaction to the Board’s communication is not acceptable in the present case since the objections of extended subject-matter and lack of novelty mentioned in this communication correspond to the respective objections already raised in the first instance proceedings which led to the revocation of the patent. Consequently, all these requests could have been filed in the first instance proceedings or with the grounds of appeal. Accordingly, they are inadmissible under Article 12(4) RPBA. Furthermore, the features introduced into claim 1 of auxiliary requests 8 to 11 (specifying the geometrical shape of the apertures) were never claimed before. They are taken from the drawings and relate to unsearched subjectmatter. Moreover, these requests gave rise to further objections by the respondent under A 84 and A 56. This would justify an adjournment of the OPs and possibly even require a remittal to the first instance. Accordingly, their admission would be contrary to the principle of procedural economy. These requests are therefore not admitted under Article 13(1) and (3) RPBA. With respect to the late filing of auxiliary requests 12 and 13, the appellant’s arguments are not convincing. A dependent claim is for logical reasons a subject of the decision of the OD to revoke the patent, even if it has not been explicitly mentioned in the decision or in the notice of opposition, because a dependent claim cannot be maintained if the impugned independent claim from which it depends is not allowable. In the present case, no request was submitted during the opposition proceedings which included an independent claim comprising the features of dependent claim 4. Therefore, the subject-matter of dependent claim 4 was a subject of the decision of the OD, which was entitled to revoke the patent in its entirety even if this dependent claim was not explicitly impugned or examined. Auxiliary requests 12 and 13 are therefore amendments to the appellant’s case, and their admissibility is also subject to the discretion of the Board under Article 13(1) RPBA. They could have been filed earlier, either during the first instance proceedings or in the appeal proceedings. The appellant has not given any justification for the late filing of these requests during the OPs in appeal. They are not admissible for the reasons already given above. Accordingly, late-filed auxiliary requests 4, 5, and 8 to 13 are not admitted into the present appeal proceedings under A 114(2) in conjunction with Articles 12(4), 13(1) and (3) RPBA. 2802 | 3398
T 1548/08 – Ex Machina Claim Of No Avail
K’s Law – The ebook
If you wish to download the whole decision, please click here.
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T 1218/06 – Best Before
K’s Law – The ebook
T 1218/06 – Best Before 23 Aug 2010
Proving dates can be a difficult task. In the present case, the appellant appeared to have solid arguments: the document under consideration comprised a photograph of a product that was marked “best before” a date that was prior to the priority date of the opposed patent. However, this evidence did not resist the scrutiny of the Board: [2.1] D24 is a sworn declaration in Spanish by an employee of Nutricia S.R.L. Madrid, Mr Irzo Asensio. As apparent from the English translation D25, Mr Irzo Asensio declares that he has submitted at least one copy of [brochure] D15 to an institution/person without any obligation to secrecy during the period prior to 23 June 1997 (the priority date of the opposed patent). D24 and D25 were filed at a very late stage of the appeal proceedings […], i.e. eight and three days prior to the date of oral proceedings (OPs) before the board. [2.2] According to Article 12(2) of the Rules of Procedure of the Boards of Appeal, the statement of the grounds of appeal shall contain the appellant’s complete case. Furthermore, it is established case law of the boards of appeal that late-filed evidence should only very exceptionally be admitted into the proceedings in the appropriate exercise of the board’s discretion under A 114(2), if such new material is prima facie highly relevant in the sense that it can reasonably be expected to change the eventual result and is thus highly likely to prejudice maintenance of the European patent (see T 1002/92 [3]) as an illustration of this case law). [2.3] In the present case, already during OPs before the opposition division (OD) […], it had been decided that D15 did not form prior art. Consequently, the appellant knew at the latest from that date on that the public availability of D15 had not been sufficiently proven. Therefore, any evidence overcoming this deficiency should have been provided with the statement of grounds of appeal, in accordance with Article 12(2) of the Rules of Procedure of the Boards of Appeal. [2.4] During OPs before the board, the appellant stated that filing D24/D25 only shortly before the date of OPs was due to difficulties in finding a person that could confirm the public availability of D15. However, this argument is not convincing, because the person who gave the declaration, Mr Irzo Asensio, still is an employee of Nutricia S.R.L., i.e. the company which issued D15. No reasons were given why an inquiry within said company could not have been made earlier. [2.5] Furthermore, the filing of D24/D25 cannot be considered as a reaction to any of the respondent’s replies or the board’s communication. On the contrary, as has been set out above, the public availability of D15 has already been an issue in the decision under appeal. [2.6] Thus, the filing of D24 and D25 was not in due time in the sense of A 114(2). [2.7] With regard to prima facie relevance of D24/D25, the situation is as follows: [2.7.1] The declaration does not contain any details about the question of who has received copies of D15, but only cites in general terms medical institutions and health professionals. The declaration does also not contain any concrete date at which said copies have been distributed, but only refers in general terms to the time period prior to 23 June 1997. Thus, in the board’s view, the declaration lacks corroboration about the exact circumstances at which the alleged events took place. [2.7.2] The appellant held the view that the statements in D24/D25 were corroborated by the expiry date “BEST BEFORE 18-06-97” printed on the product depicted in D15, which was prior to the priority date of the opposed patent, and the market authorisation D6 for this product which was issued equally prior to the priority date of the opposed patent. However, the appellant’s argumentation is not convincing for the following reasons:
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T 1218/06 – Best Before
K’s Law – The ebook
The words “BEST BEFORE 18-06-97” are just legible on the photograph of a tube-feeding bag at the top right of the first page of Dl5 (at least on the enlarged view D20 [NB: I have added a red marker]).
This date presumably means 18 June 1997 which is 5 days before the priority date of the patent in suit. However, the date shown on the bag depicted in D15 does not relate directly to the date of D15 as a document. As pointed out by the respondent, it is merely a date printed on the particular bag that was photographed as the date by which the product should be used but there is no evidence as to whether this photograph shows a real product, a prototype or even a dummy product. Even if the photograph shows a real product from an actual production batch, the significance of the date is very limited in that the only assumption that can be made is that the photograph cannot have been taken before the date on which batches with that “best before” date would have been packaged, but no evidence has been presented as to what that date might have been. The fact that the photograph could not have been taken before a particular date does not mean that it was taken on or near to that date and it could have been taken at any time thereafter, quite possibly well after the priority date. Similarly, and even more importantly, the brochure D15 including the photograph could have been produced at any time after the photograph was taken. As regards D6, this document purports to be a marketing authorisation regarding “Pentaset Fibra” (i.e. the product referred to in D15) issued by the Ministry of Health and Consumer Affairs (Ministerio de Sanidad y Consumo) in Spain. However, a marketing authorisation does not prove that anything was ever marketed, and even if this were to be the case, it still cannot possibly provide evidence that brochures apparently relating to the product were part of the state of the art before the priority date of the patent in suit. [2.7.3] In summary, D24 and D25 cannot be considered to be prima facie highly relevant according to the established case law (see T 1002/92).
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T 1218/06 – Best Before
K’s Law – The ebook
[2.8] In view of the above, the board exercised its discretion not to admit D24 and D25 into the proceedings (A 114(2)). To read the whole document, please click here.
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T 529/09 – Counter-Evidence Needed
K’s Law – The ebook
T 529/09 – Counter-Evidence Needed 21 Aug 2010
When an Opposition Division (OD) decides to maintain an opposed patent in amended form, it invites the proprietor to pay the corresponding fees and to file translations of the claims as amended within a period of three months (R 82(2)). If the proprietor does not react, there is another communication in which the EPO points out the failure to observe the time limit and the possibility to perform the required acts within two months, provided that a surcharge is paid (R 82(3)). This communication is sent by registered letter. If the patent proprietor asserts that it has not received the communication, the EPO has to provide evidence that the delivery has indeed taken place. If the EPO is capable of doing so, is there something the proprietor can still do if it really has not received the letter? This is the situation addressed in the present decision, which gives a nice summary of the appropriate case law. [4] A communication pursuant to R 82(3) was sent out on 8 September 2008 by registered letter. The letter was addressed to the proprietor’s representative. According to R 126(2) a registered letter is deemed to be delivered to the addressee on the tenth day following its posting, unless it has failed to reach the addressee or has reached him at a later date; in the event of any dispute, it shall be incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee. However, “delivered to the addressee” does not mean that the notification in question has to be actually brought to the attention of the professional representative in person. It suffices that the registered letter is received by a person authorized to take delivery, e.g. an employee of the representative’s office (see T 743/05 [1.6]). [5] In the present case, the Deutsche Post has confirmed that, following an investigation by the foreign mail operator, the letter was delivered on 12 September 2008 to an authorized recipient. After having been informed of this result of the EPO inquiry by a communication of the board, which included a copy of the confirmation letter, the appellant did not submit any further arguments or evidence in order to demonstrate that the Deutsche Post’s confirmation failed to establish that the registered letter reached its destination. In these circumstances, the evidence on file has to be regarded as sufficiently reliable and complete for proving the proper delivery of the letter. [6] The board is aware of the decisions of the Legal Board of Appeal J 9/05 and J 18/05 […] where a similarly worded confirmation letter by the Deutsche Post was held not to be sufficient to prove the receipt of an EPO notification. However, in those cases the appellant had filed a considerable amount of counter-evidence and pointed out specific reasons why the letter might not have been received by the representative’s office. Thus, there is a significant difference to the present case. [7] The board therefore considers it to be established that the communication pursuant to R 82(3) was actually delivered to the appellant’s representative on 12 September 2008. In view of the legal fiction contained in R 126(2), this communication is deemed to be delivered to the addressee on the tenth day following its posting (which occurred on 8 September 2008), i.e. on the 18 September 2008. Since the appellant did not perform the acts mentioned in the communication within two months of the notification, it missed the time limit provided for in R 82(3), first sentence. It was thus procedurally correct for the OD to revoke the patent in accordance with R 82(3), second sentence. If
you
wish
to
download
the
whole
decision,
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NB: This decision has already been reported on Le blog du droit européen des brevets.
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may
click
here.
Interpretative spotlight : “highly soluble”
K’s Law – The ebook
Interpretative spotlight : “highly soluble” 21 Aug 2010
The main request before the Board was found not to comply with the requirements of A 123(2). Claim 1 of auxiliary request I read: A solid composition comprising (a) a drug in a pharmaceutically acceptable solubility-improved form selected from a crystalline highly soluble salt form of the drug, a high-energy crystalline form of the drug, a hydrate or solvate crystalline form of the drug, an amorphous form of the drug, a mixture of the drug with a solubilizing agent; and (b) a polymer selected from hydroxypropyl methyl cellulose acetate succinate, hydroxypropyl methyl cellulose phthalate, cellulose acetate phthalate and cellulose acetate trimellitate; wherein the drug-to-polymer weight ratio is 0.01 to 5. [5] Having regard to the written submissions on file and the outcome of the oral proceedings, there is no evidence that the person skilled in the art per se would know which level of solubility-improvement a drug has to fulfil to be classified “solubility-improved”. This lack of evidence in particular applies to a hydrate or solvate crystalline form of the drug or to an amorphous form of the drug, and is also relevant with respect to the question as to when a crystalline soluble salt is to be called a crystalline highly soluble salt. Consequently, the skilled reader of the application in suit is bound to particular definitions within this application in order to be able to clarify the subject- matter of solubility-improved drugs or “crystalline highly soluble salt” forms. The application in suit contains an effort to give an exact definition on page 31, lines 20 to 25. “Preferred highly soluble salt forms” are defined as “those salt forms that have aqueous solubility at least 1.25-fold, preferably at least 2-fold, and more preferably at least 5-fold, the aqueous solubility of the more soluble of the crystalline free base and the crystalline hydrochloride salt forms”. But as the facts on file stand, this attempt to define the term “solubility-improved” relates only to particular cases not referred to in the current requests and therefore is of no general use. With respect to a hydrate or solvate crystalline form as contained in auxiliary request I, there is no definition to be found at all, while as far as “an amorphous form of the drug” is concerned, the skilled person finds that he has to compare in at least an in vitro test medium a maximum concentration of the drug to the equilibrium concentration of the drug provided by the drug in crystalline form. However, in this case it is not clear what crystalline form is meant; it could be exactly the purely crystalline form of the same salt as the amorphous form that is tested, or the crystalline form of the lowest solubility form of the drug itself, whether salt or not or anything else. Consequently, with the definition either missing altogether or based on a comparison to an undefined reference with respect to a hydrate or solvate crystalline form of the drug or to an amorphous form of the drug, the feature of the solubility-improved drug form has to be regarded as unclear under A 84 in auxiliary request I. The Board then turns to auxiliary request II. The single claim of this request read: A composition comprising (a) a drug in a pharmaceutically acceptable solubility-improved form being a crystalline highly soluble salt form of the drug; and (b) a polymer selected from hydroxypropyl methyl cellulose acetate succinate, hydroxypropyl methyl cellulose phthalate, cellulose acetate phthalate and cellulose acetate trimellitate; wherein the drug-to-polymer weight ratio is 0.01 to 5. [6] In the case of “crystalline highly soluble salts” there is a definition in the description that tells the skilled person to compare in at least one in vitro test medium the maximum concentration of the drug to the equilibrium 2808 | 3398
Interpretative spotlight : “highly soluble”
K’s Law – The ebook
concentration provided by the lowest solubility form of the drug […] which may be measured as indicated in the examples given. He can work this out in the framework of reproducibility or repeatability of measurements, even if he will find that this condition is met by nearly all forms of a drug except the only one that is the lowest solubility form. The term “lowest solubility form of the drug” is to be understood with respect to the state of the art at the priority date of the application […]. Thus, this feature is the basis for a very broad claim, but it is at least clear under A 84. The case was then remitted to the first instance for further prosecution. Should you wish to download the whole decision (T 1638/06), just click here.
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T 1327/07 – Doing Things In The Right Order
K’s Law – The ebook
T 1327/07 – Doing Things In The Right Order 20 Aug 2010
Claim 1 of the opposed patent read: Method for the anonymisation of telecommunications operations and relations in telematics applications, wherein an anonymising device (3) logically located between telecommunications network (2) and telematics service centre (4) removes all characteristics identifying the end subscriber from the communications operation in relation to the operator/provider of telematics services, replaces them by a unique, varying, temporary identification unknown outside the device, and for a limited time ensures projection of the permanent identification onto the temporary identification, characterised in that, when using cryptographic methods to ensure confidentiality and security of communications operations against manipulation, if the latter use parameters individual to the subscriber, the anonymising device (3) logically located between telecommunications network and telematics service centre performs cryptographic transformations (3.2) for the separation of code circuits used in the cryptographic methods. The patent under consideration had been opposed, inter alia, under A 100 c). The opponent pointed out that the amendment of feature “… for the separation of the code circuits …” (application as filed) to “… for the separation of code circuits used in the cryptographic methods …” (claim 1 as granted) was inadmissible. The Opposition Division came to the conclusion that no interpretation other than that the code circuits are used in cryptographic methods was possible. The Board confirms this opinion: ** Translation from the German ** [2.3] […] It follows from the meaning of the features of the characterising part of claim 1 [as determined by the Board], which [meaning] encompasses the execution of cryptographic methods at the level of end subscribers, that code circuits are formed at this point and used by the cryptographic methods. In the original disclosure it was stated – without any prior reference to “code circuits” – that “cryptographic transformations are carried out in order to separate the code circuits” (original claim 6, emphasis added by the Board). Within the framework of the interpretation of claim 1 [adopted by the Board], the only technically meaningful understanding of this feature which results from the original disclosure is that those code circuits are separated which have been created, and therefore, used, beforehand by cryptographic methods. [2.4] The [opponent’s] argumentation referred to decision T 792/94. According to this decision, a request that cannot be understood in an unambiguous way allows for an interpretation which goes beyond the teaching of the application as filed and which, therefore, violates A 123(2). However, this is not the case here as the Board bases its decision on a possible inadmissible extension on an unambiguous interpretation of claim 1. Moreover the [opponent] was not able to exemplify (durch ein Beispiel aufzeigen) a potential ambiguity of the request. [2.5] It follows that claim 1 has not been amended in a way that extends its object beyond the content of the application as filed. […] The patent complies with the requirements of A 123(2). My understanding of this matter is that before examining the extent of protection (and its possible inadmissible extension) one has to come to a conclusion regarding the correct interpretation. The mere existence of an interpretation that would lead to the conclusion of inadmissible extension is not sufficient. The A 123(2) objection will succeed only if the skilled person would retain this particular interpretation. Should the skilled person hesitate between two possible interpretations, both might be considered under A 123(2). If one of them violated A 123(2), there might be trouble ahead. To read the whole decision (in German), you may click here.
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T 704/08 – Potential Matters
K’s Law – The ebook
T 704/08 – Potential Matters 20 Aug 2010
In this case the Opposition Division (OD) had maintained the patent in amended form. The Board of appeal (decision T 1505/06) then remitted the case to the OD because it could not exclude that a substantial procedural violation had occurred. The OD finally revoked the patent on the basis of late filed documents D11 to D14. The patent proprietor filed an appeal and pointed out that another substantial procedural violation had occurred: [1.2.1] The [patent proprietor] considered that the decision of the OD did not give any reasoning why D11 to D14 were more relevant than those already in the proceedings. The [patent proprietor] is correct in so far as the OD in its decision merely stated with respect to their admittance that they were prima facie relevant to the question of novelty and/or inventive step […]. However, the OD came to the conclusion that the subject-matter of independent claims 1 and 7 of the main request lacked novelty over D14 […]; that the subject-matter of independent claim 1 of the second auxiliary request lacked an inventive step over the combination of D12 and D14 […]; and that the subject-matter of independent claim 7 of the second auxiliary request lacked novelty over D13 […]. The reasons why the OD admitted D12 to D14 into the proceedings are thus absolutely clear from this further reasoning in the decision. The Board would furthermore note that a document does not have to be more relevant than documents already in the proceedings in order for it to be admitted into the proceedings. It is sufficient that it could influence the outcome of the proceedings, for example in combination with a document already in the proceedings. With regard to D11 the decision neither explicitly nor implicitly explained its relevance. It may be noted, however, that a document may be admitted into proceedings if it could affect the decision at the time of its admittance. The fact that it turned out that the document did not affect the decision does not mean that the OD committed a procedural violation in not providing supporting reasons for its admittance since there could arise other reasons, as in the present case, for revoking the patent. [1.2.2] The Board concludes that no procedural violation was committed in this respect, let alone a substantial one. To read the whole decision, you may click here;
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T 704/08 – Mind Your Own Business
K’s Law – The ebook
T 704/08 – Mind Your Own Business 19 Aug 2010
Is it possible to request a remittal to the Opposition Division (OD) based on a substantial procedural violation committed against the adverse party, although this party does not wish to have the case remitted? This is a question that arose in the present appeal proceedings. However, the Board found a way not to decide on this issue. [1.1.1] In response to the summons by the OD to the second oral proceedings (OPs) the representative of the opponent indicated that he had already booked a holiday on that date and requested that another date be set. The representative of the proprietor with letter of 4 January 2008 supported the request of the opponent, but expressed surprise that the representative of the opponent could not be replaced by another representative from the same practice. The opposition division did not change the date of the OPs. The representative of the opponent was replaced by another from the same practice and this representative stated at the OPs that he did not want a postponement of the OPs. [1.1.2] The [patent proprietor] has argued that the OD committed a substantial procedural violation in not postponing the OPs at the request of the opponent when this request was supported by the proprietor. The arguments of the [patent proprietor] concern the right to be heard of the [opponent]. The [opponent], however, does not consider that its right to be heard was infringed by the OD. The question arises as to whether a request by a party based on an alleged infringement of the rights of another party is an admissible request. In the present case the Board does not find it necessary to consider this question further since the request is manifestly without foundation. [1.1.3] The opponent was represented in the second OPs before the OD by a representative who considered that he did not need a postponement of the OPs. It follows therefore that the right to be heard of the opponent was respected and that there was no procedural violation. [1.1.4] The [patent proprietor] further argued that the availability of another representative from the same practice should not play a role since it concerns the internal relationship between the representative and his client. The Board notes that it was the proprietor who initially indicated […] that it was surprised that the representative of the opponent could not be replaced by another representative from the same practice. The Board considers that in any case this somewhat inconsistent argumentation does not apply in the present case since the opponent chose to change its representative and does not consider that its right to be heard was infringed as a result of this change. [1.1.5] The [patent proprietor] indicated during the OPs before the Board that it desired a general statement from the Board concerning the circumstances under which an OPs should be postponed. The Board does not consider that it is a purpose of appeal proceedings to issue such general statements in circumstances where they are irrelevant for the case to be decided, irrespective of whether a Board should issue general statements at all. The Board therefore declined to consider this point further. [1.1.6] The Board concludes that no procedural violation was committed in this respect, let alone a substantial one. To read the whole decision, you may click here.
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T 1877/08 – Continua Are Special
K’s Law – The ebook
T 1877/08 – Continua Are Special 18 Aug 2010
[2.1] The patent in suit claims two priority dates, the first priority date being that of US 558 346 of 26 July 1990, the second priority being that of US 681 565 of 5 April 1991. The [opponent] cited document D2 in the proceedings as representing the closest state of the art in the assessment of inventive step. This document is an intermediate document having a publication date between the first priority date of the patent in suit, which is 26 July 1990, and the filing date thereof. Since the question arises whether document D2 is to be considered as state of the art according to A 54(2), the matter of whether or not claim 1 of the patent in suit is entitled to the claimed right of the first priority date of 26 July 1990, has to be decided by the Board. [2.2] Pursuant to A 87(1), a right of priority may only be enjoyed in respect of the same invention. Therefore, in deciding whether claim 1 of the patent in suit is entitled to the claimed priority, it needs to be decided whether in the priority document the same invention is disclosed as in present claim 1. The requirement for claiming priority of “the same invention”, referred to in A 87(1), means that priority of a previous application in respect of a claim in a European patent (application) in accordance with A 88 is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole (see G 2/98). In the present case the priority document US 558 346 relating to the priority date of 26 July 1990 discloses refrigerant mixtures being a blend of from 30 to 55 percent by weight of chlorodifluoromethane, from 35 to 65 percent by weight of pentafluoroethane and from 2 to 10 percent by weight of propane […]. However, there is no disclosure in the priority document of a composition consisting of from 30 to 65 percent by weight of chlorodifluoromethane, from 33 to 69 percent by weight of pentafluoroethane and from 1 to 10 percent by weight of propane, as defined in present claim 1.
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T 1877/08 – Continua Are Special
K’s Law – The ebook
[2.3] Thus, claim 1 discloses ranges of numerical values different from those disclosed in the priority document. As the person skilled in the art cannot derive the subject-matter of claim 1 directly and unambiguously, using common general knowledge, from the previous application as a whole, it follows that the priority based on that previous application cannot be acknowledged. [2.4] The [patent proprietor] argued that although the limiting values of the ranges specified in claim 1 differed from those disclosed in the priority document, the latter ranges were comprised within those claimed in the patent in suit. Consequently, at least for the overlapping portion of the ranges the subject-matter of claim 1 was entitled to the earlier priority date of 26 July 1990. A 88(3) stipulates that if one or more priorities are claimed, the right of priority shall cover only those elements of the European patent application which are included in the application whose priority is claimed. The expression “elements” has to be understood as relating to separable alternative embodiments (G 2/98 [4. and 6.7]). In the present case, however, the claimed amounts represent a continuum of a numerical range of values which does not correspond to distinctive alternative embodiments. Consequently, no separable alternative embodiments, i.e. elements in the sense of A 88(3), can be identified within that continuum, which could enjoy the claim to the first priority date of 26 July 1990. [2.5] For these reasons, the Board concludes that the subject-matter of independent claim 1 as a whole is not entitled to the claimed priority right regarding the first priority date of 26 July 1990. Thus, the effective date for claim 1 of all requests is later than the publication date of document D2. Consequently, document D2 is a prior art document pursuant to A 54(2) for the subject-matter of claim 1. It may, therefore, be a bad idea to “push the limits” in the second application (the one claiming priority) when a search report for the first application shows that the ranges could have been defined more broadly. When doing so, it is advisable to keep a claim (or at least parts of the description) with the original limits because a claim based on these limits may validly claim the priority, whereas the extended claim may not.
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T 1877/08 – Continua Are Special
K’s Law – The ebook
To read the whole decision, please click here.
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T 1252/07 – Closer Than Closest
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T 1252/07 – Closer Than Closest 17 Aug 2010
The Board and the parties agreed that D2 was to be considered as the closest prior art. When assessing the question of whether the objective technical problem was indeed solved, it was questioned whether the comparative trials were relevant, as the comparison was done with prior art different from the examples of D2. Here is what the Board had to say: [5.4] It is true that none of the documents analysed above specifically deals with an article according to an example of D2. It is, however, considered that the evidence on file represents variants lying closer to the invention than any disclosure of D2, in particular example 3 or 13, so that the advantageous effect attributable to the distinguishing feature(s) of the invention is in fact more clearly demonstrated (T 35/85 [4]; T 197/86 [4, 6.1 and 6.1.2]). Example 13 of D2 for instance differs in two features from the subject matter claimed, namely the class of HALS and the HALS:triazine ratio). The examples of D10, D12, D16, D25, D26, D28 and D29, although they do not illustrate D2, are closer to the claimed subject matter and only differ therefrom in a single feature, namely the HALS:UV absorber ratio. These examples further show that at a given amount of HALS, varying the quantity of UV absorbers within the range claimed leads to a synergy in the UV stabilisation. Finally, the board considers that since the effect has been demonstrated under even more stringent conditions, the same effect is deemed to be also present in comparison to the closest prior art. These facts, thus, support the presence of a technical effect at least over part of the scope of the claims. If you wish to download the whole decision, you can do so here.
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T 759/09 – Looking Under The Carpet
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T 759/09 – Looking Under The Carpet 17 Aug 2010
This decision deals with the refusal of an application by the Examining Division (ED). In its decision the ED held that the application did not meet the requirements of A 84 for lack of clarity. It also commented on added subject-matter and lack of inventive step, though these comments were said not to form part of the decision. The Board answers the question whether it can deal with the inventive step assessment: Though the decision under appeal mentions clarity, the Board has chosen to exercise the power afforded it under A 111(1) to examine the application for other requirements as foreseen in G 10/93 [headnote]. For assessing compliance of amendments with A 123(2) this goes without saying. As concerns inventive step the appealed decision in point 2 of the section “additional comments” said not to form part of the decision, refers to an objection raised in paragraphs 2.4 to 2.7 of the communication of 19 October 2007 issued in examination and which the division still held to be valid. The relevant paragraphs set out in a reasoned manner the case against inventive step, starting from a document D1, that is EP-A-0 882 424. Even if this reasoning has not been included as formal ground in the decision under appeal - though it could and should have been (the underlying need for procedural economy would not require the reasoned statement of a communication under R 71(2) to cover “all the grounds against the grant” unless the reasoning of a first instance decision under R 111 were equally comprehensive) - it is evident that a first instance consideration of the issue of inventive step has already taken place. The Board has therefore also extended examination to this requirement. If you wish to download the whole decision, please click here.
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T 1257/08 – No Self-Administered Justice
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T 1257/08 – No Self-Administered Justice 16 Aug 2010
The opponent filed an appeal against a decision of the Opposition Division (OD) posted 7 May 2008 which on its cover sheet states that the opposition against European patent 982502 is rejected. He simultaneously paid the appeal fee and submitted the statement of the grounds of appeal. With letter dated 10 July 2008 the EPO issued a second decision, this time identified on the cover sheet as an interlocutory decision to maintain the above patent in amended form. The cover sheet is further headed, in handwriting, “correction” and states “please ignore our decision rejecting the opposition (A 101(2)) dated 7.5.08”. The annexed reasons for the decision are identical to those notified previously. The Appellant in response with letter received 18 August 2008 submitted a “corrected” notice of appeal against the second decision. [1] The first written decision posted 7 May 2008 was duly notified in accordance with R 111 and R 113. Under the presumption of legal validity, it constitutes the OD’s only legally valid written decision, cf. T 830/03 [1.1-2]. The OD is bound by it and cannot itself set it aside. The subsequent second written decision posted 10 July 2008 with instruction to disregard the first therefore has no legal effect. In so far as it is headed “correction” it attempts to correct an obvious inconsistency between the first written decision’s tenor as stated on its cover page and that expressed in the reasons and minutes accompanying it. At best therefore the notification of 10 July 2008 can be regarded as a correction (albeit in formally incorrect form) to the first decision of an obvious mistake, R 140, with retrospective effect, see T 116/90. As it is legally void as a decision, the second notice of appeal filed against it also has no effect. The Board adds that a procedurally proper correction of the first decision is moot in view of the present decision. Only the first written decision as legally valid decision is appealable, and admissibility is decided in relation to that decision. In the present case the first notice of appeal and the statement of grounds of appeal were filed and the appeal fee paid within the statutory time periods prescribed therefor by A 108 and R 126(2) and starting from the date of posting of the first written decision. As all other formal requirements are indisputably met, the Board concludes that the appeal is admissible. If you wish to download the whole decision, please click here.
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T 1252/07 - (Un)sworn Enemy
T 1252/07 - (Un)sworn Enemy 16 Aug 2010
During the appeal proceedings, the question arose as to the exact date at which document D19 was made available to the public. The opponent filed the following sworn declaration (click to enlarge):
The Board is not satisfied: [4] Document D19a was filed by the appellant in order to further clarify [that brochure D19 was publicly available in 1975] but did not convince the board either. Although it is presented as a sworn declaration made by Mr. Lei Chenwei, a Chinese citizen, there is no evidence of the legal authority in front of which this sworn statement would have been made. This document is, thus, equivalent to an unsworn statutory declaration but may not be considered as a sworn statement according to A 117(1)(g), and this, even if such a reference is made on the front page of D19a. If you wish to download the whole decision, you can do so here.
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T 1287/07 – You May Have Second Thoughts
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T 1287/07 – You May Have Second Thoughts 14 Aug 2010
The patent in suit was based on divisional application, which was filed with a text identical to that of an earlier divisional application, which had been withdrawn and converted into an Italian utility model. According to the opponent, since the conversion into a national right was intended as a compensation for an application which had been withdrawn, the re-filing of the same subject-matter was an abuse of procedure, which, albeit not explicitly contravening any provision of the EPC, justified the revocation of the patent in suit. The Board is not persuaded: [3] The appellant submitted that re-filing the same subject-matter comprised in an earlier divisional application which had been withdrawn and converted in a national right was an abuse of procedure. However, as acknowledged by the appellant itself, this re-filing does not fall under the grounds for opposition listed in A 100 EPC 1973, which may lead to revocation of the patent in opposition proceedings according to A 102(1) EPC 1973. Since the list of grounds for opposition of A 100 is exhaustive, there is no legal basis for revoking the patent in suit on this basis. Therefore, the alleged re-filing of the same subject-matter cannot result in the revocation of the patent in suit. If you wish to read the whole decision, you can download it here.
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Interpretative Spotlight: “surface protection”
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Interpretative Spotlight: “surface protection” 14 Aug 2010
The Opposition Division maintained the patent in amended form. Both the patent proprietor and the opponent filed an appeal. Claim 1 of the main request was identical with claim 1 of the patent as granted and read: 1. Ball joint consisting of a joint housing (l), which is open at least on one side and has a housing recess (2), a joint pin (4), which is mounted in the housing recess (2) with its joint bal1 (3) provided with a surface protection and whose pin portion projects out of a housing opening (18), a bearing shell (5), which is disposed between the joint housing (1) and the joint bal1 (3), and a locking ring (7), which closes the housing recess (2) of the joint housing (1) and secures the bearing shell (5) disposed therein in the joint housing (1) and substantially follows the outer contour of the bearing shell(5) with its inner contour through a bevel or a formed radius, characterised in that the locking ring (7) to be inserted in the joint housing (1) is fixed in position in the joint housing (1) and comprises a sealing lip (17), lying against the joint bal1 (3) under an elastic preload, on the side of the housing opening (1 8) through which the pin portion of the joint pin (4) projects out of the joint housing (1). Claim 1 of auxiliary request 1 had the additional feature that “the joint ball (3) has an extremely small (äußerst geringe) surface roughness as a consequence of the surface protection treatment.” Claim 1 of auxiliary request 2 further specified that “the maximum surface roughness (Ry) of the joint ball is between 1 and 5 μm.” ** Translation from the German ** Main request [3] The [patent proprietor] contests that the joint ball [of document E1] is provided with a surface protection […]. The wording of the claim “provided with a surface protection” does not further specify the nature of the surface protection and, therefore, has to be interpreted broadly. In its paragraph [0016] E1 discloses a lubricant which is applied to the joint ball. This necessarily reduces the friction between the joint ball and the bearing shell, which in its turn results in reduced wear. Therefore, the joint ball according to E1 can be said to be provided with a surface protection. […] The auxiliary request was rejected for lack of clarity as the relative feature extremely small (äußerst gering) was found not to have any generally accepted technical meaning. The Board then deals with the second auxiliary request. Document E3 was found to be the closest prior art. Auxiliary request 2 [6.5] The [patent proprietor] has submitted that the expression “provided with a surface protection” was to be interpreted as the subsequent application of a protective layer onto the joint ball and that processes which only resulted in a surface treatment, such as polishing or rolling were not covered by this expression. However, it was not able of indicating a passage in the opposed patent where the application of such a protective layer onto the joint ball was disclosed but derived this interpretation only from its own understanding of the verb “provide” (versehen). As there is no explanation of what the expression “provided with a surface protection” means in the context of the invention and as neither the description nor one of the figures disclose a protective layer hat is applied to the joint ball, this expression cannot be limited to a protective layer but has to be interpreted broadly. The skilled person knows that a reduced surface roughness results in a lower friction coefficient, which has a positive effect on the wear behaviour. When he/she wishes to obtain that the joint elements wear as little as possible, he/she would obviously consider to reduce the surface roughness of the joint ball as much as possible, 2821 | 3398
Interpretative Spotlight: “surface protection”
K’s Law – The ebook
e.g. by rolling, polishing or lapping. The thereby reduced wear results in protection for the surface. Therefore, a treatment of the joint ball which results in a reduction of the surface roughness has to be considered as a surface protection treatment within the meaning of the impugned patent which provides the joint ball with a surface protection. The patent was revoked. If you wish to read the whole decision (T 1313/08, in German), you download it here.
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T 356/08 – Desperate Measures
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T 356/08 – Desperate Measures 13 Aug 2010
This decision deals with the appeal of the patent proprietor following the maintenance of the patent in amended form by the Opposition Division (OD). The opponent did not appeal. The proprietor filed several requests having a larger scope of protection than the request found allowable by the OD. The Board did not admit these requests under Article 12(4) RPBA because the requests could already have been (but had not been) filed before the OD. The Board also refused to remit the case to the OD. So the opponent thought his time had come. ** Translation from the German ** [3] The opponent has pointed out that the patent proprietor in its requests did not defend the patent in its version according to the auxiliary request 1 [that had been found allowable] in the interlocutory decision of the OD any more. This was tantamount to waiving the right to have the patent maintained in this version (in diesem Umfang). The prohibition of reformatio in peius was not applicable any more and the request for revocation of the patent was justified. [3.1] [The patent proprietor] is the sole appellant against an interlocutory decision on the maintenance of the patent in amended form. Thus neither the Board of appeal nor the opponent who has not filed an appeal and who is a party as of right under A 107(2) EPC 1973 (sic), may challenge the version of the patent according to the interlocutory decision (G 9/92 [headnote 1]). By filing an appeal, the [patent proprietor] aims at replacing the version of the patent which the OD has declared allowable by another version proposed by it, or, if this request is not allowed, at a dismissal of the appeal (G 9/92 [14]). Therefore the [patent proprietor] has not waived its right to have the patent maintained in the version of the auxiliary request 1 [found allowable] in the interlocutory decision of the OD. Therefore, the [opponent’s] request for revocation of the patent is inadmissible. This is coherent with what we have seen in T 426/07 (see the recent post dedicated to this decision) where the Board stated that “[f]rom a procedural point of view, a request [identical with the set of claims held allowable by the OD in its interlocutory decision] per se may be considered formally inadmissible, given that in respect of this request, the appellant is not adversely affected by the decision under appeal as required by A 107. However, this request is interpreted by the Board as in substance being a request for the dismissal of the appeal …” To read the whole decision (in German), you may click here.
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T 699/07 – Let The Colour In
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T 699/07 – Let The Colour In 13 Aug 2010
[2.3] During oral proceedings before the Board the [opponent] filed a coloured copy of a table summarising the experimental results of Tables 1-4 of the patent in suit (document D23). The [patent proprietor] requested the Board not to admit this very late filed document. This document is nothing more than a summary of results already present in the contested patent and was merely submitted for enhanced comprehensibility of the [opponent’s] arguments. It did not confront the [patent proprietor] with new facts or new evidence. Merely representing a summary of the data of the patent in suit, it can not be considered either as an attempt to surprise the [patent proprietor] or the Board. Furthermore, a black and white copy of this table had already been filed in the procedure before the first instance in support of the [opponent’s] arguments concerning inventive step, and in its reply to the grounds of appeal the [opponent] explicitly referred to its submissions before the first instance. Hence, the Board decided to admit this document into the procedure (Article 13(1) and 13(3) RPBA). If you wish to download the whole decision, please click here.
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T 1943/09 – Money Can’t Do It All
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T 1943/09 – Money Can’t Do It All 12 Aug 2010
** Translation from the German ** Following the refusal of his application, the applicant paid the appeal fee but did not file any grounds for appeal within the time limits fixed by the EPC. [3] The question of whether an appeal can be considered to have been validly filed when no notice of appeal has been filed but an appeal fee has been paid within two months after delivery [of the decision] has been the object of several decisions of the Boards of appeal (e.g. J 19/90 [3.1.1], T 445/98 [3.2.1], T 778/00 [3.2.4], T 275/86 [3.3.1]). With the exception of decision T 275/86, which considered the payment of the appeal fee sufficient under certain circumstances, all decisions have come to the conclusion that it is mandatory to file an appeal in writing if the appeal is to be considered as having been filed at all. [4] The Board is of the opinion that this also follows necessarily from the requirements of the EPC. Even under the old version of A 108, which was in force under the entry into force of the new version in December 2007, it was stipulated that the appeal has to be filed in writing at the EPO. In its new form A 108 refers to the Implementing Regulations (“Notice of appeal shall be filed, in accordance with the Implementing Regulations …”). Corresponding R 99(1) lists the mandatory content of the notice of appeal (“The notice of appeal shall contain …”). Thereby the lawmaker, when revising the EPC, has emphasized (herausgestellt) the importance of the notice of appeal as a fundamental (konstitutiv) element by which appeal proceedings are instituted (eröffnet) in the first place. After this revision, there is even less doubt that the mere payment of the appeal fee cannot replace the notice of appeal, even if it is made within two months after the delivery of the decision that is to be appealed. [5] From this it follows that in the present case there is no appeal. Thus the appeal fee is to be reimbursed. [6] As to the applicant’s argument that his wrong assessment of the legal situation was a consequence of the unclear wording of A 108, the Board cannot see anything that could have given rise to a misunderstanding. Quite to the contrary, the content of A 108 and R 99(1) is clear and unequivocal as explained above under point [4]. Moreover it is to be noted that form 2019 12.07 annexed to the decision of the Examining Division contains all necessary pieces of information. Not much to be said, except that I find the Board’s argument lame. The fact that an explicit requirement (“… in writing …”) has been deleted from A 108 and not even reproduced in the new Implementing Regulations is presented as evidence for the legislator’s will to emphasize this requirement. Not extremely convincing, is it? If anything is to be deduced (but I do not think there is!), it would be that the legislator cares less about the written form requirement than before. Please note, however, that the German version of the EPC has Beschwerdeschrift for “notice of appeal”, which in itself suggests a written form. You may download the whole decision (in German) here.
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T 1898/07 – Pick And Choose
K’s Law – The ebook
T 1898/07 – Pick And Choose 11 Aug 2010
One could easily make four or five posts from this decision. If you read the whole story, you will find interesting things on T 352/04 and on the requirements of R 80. But there has to be an end, all the more as something tells me that this decision will not be considered to be a landmark decision. Be that as it may, it also contains an interesting passage where the various features of a somewhat unorthodox claim are analysed in view of a novelty assessment: [33] Claim 1 of auxiliary request 11 refers to a liquid composition which (a) comprises an interferon-beta, (b) comprises an amino acid stabilizing agent selected from the group consisting of 0.5% to 5% (w/v) arginineHC1, 0.50% to 2.0% (w/v) glycine, and 1.47% to 2.94% (w/v) glutamic acid, (c) has not been reconstituted from lyophilized interferon, (d) is not further lyophilized, (e) does not comprise serum albumin, (f) is contained within a syringe, (g) wherein the syringe has a head space flushed with inert gas, and (h) wherein the syringe is contained in a package. […] [34] The claims shall define the matter for which protection is sought in terms of the technical features of the invention (R 43(1)). The primary aim of the wording used in a claim must therefore be to satisfy such requirements, having regard to the particular nature of the subject[-matter of the] invention, and having regard also to the purpose of such claims. It follows that the technical features of the invention are the physical features which are essential to it. When considering the two basic types of claims (e.g. claims to physical entities and claims to physical activities […]), the technical features of a claim to a physical entity are the physical parameters of the entity (decision G 2/88 [2.5]). In the present case, the physical parameters defining the structure of the claimed liquid formulation are described in features (a), (b) , (e) and (i) […]. According to established case law of the Boards of Appeal, a product can also be defined in a claim in terms of a process for its production (“product-by-process” claim). However, such claims are admissible only if the product itself fulfils the requirements of patentability (see Case law of the Boards of Appeal of the EPO, 5th Edition 2006, chapter II.B.6). The combination of product parameters and process parameters in one and the same claim has been considered to be admissible (decision T 148/87). In the present case feature (c) is considered to refer to the process of producing the claimed liquid composition […]. [36] Feature (d), referring to a process step, performed, or rather not performed, on the claimed entity after providing it in the claimed form, does not contribute to the characterisation of the claimed physical entity. Features (f) , (g) and (h) characterise a container, i. e. a syringe, filled with the claimed physical entity and a further container, i.e. a packaged kit, comprising the syringe. The features do not define the claimed product but describe merely the form in which it is presented. It follows that features (d), (f), (g) and (h) are not technical features of the claimed liquid formulation in the sense of R 29(1) and decision G 2/88. These features will not be taken into consideration for the examination of novelty under A 54. [37] Document D2 refers to pharmaceutical compositions of recombinant beta-interferon and formulation processes. The disclosed formulations are for parenteral administration […] and are in liquid form or lyophilized […]. According to claim 2, the compositions comprise an additional solubilising or stabilizing agent. The list of these additional stabilising agents […] includes glycine.
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T 1898/07 – Pick And Choose
K’s Law – The ebook
Example 15 […] discloses a liquid composition containing interferon beta and 2% w/v glycine. The composition does not comprise serum albumin and has not been reconstituted from lyophilized interferon. Consequently, the subject-matter of claim 1 of auxiliary request 11 is anticipated by the disclosure in document D2. If you wish to download the whole decision, you can do so here.
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T 1898/07 – Packaging Issues
K’s Law – The ebook
T 1898/07 – Packaging Issues 10 Aug 2010 This decision also contains an interesting application of A 123(3): [18] Claim 37 (and claims 38 to 40 dependent thereon) of the application as published refer to a kit for parenteral administration of a liquid interferon formulation. Contrary to this, claims 1 to 69 as granted do not contain such claim. The independent claims as granted refer to a liquid composition (claim l), to a liquid pharmaceutical composition (claim 32) and to methods for stabilizing interferon in a liquid pharmaceutical composition (claims 43 and 58). Claim 1 of [patent proprietor’s] main request and of each of auxiliary requests 1 to 10 refers to “[A] packaged kit for parenteral administration of an interferon-beta, the kit containing a syringe pre-filled with a liquid composition comprising the interferon-beta and an amino acid stabilizing agent …”. [19] A 123(3) provides that during opposition proceedings the claims of the European patent may not be amended in such a way as to extend the protection conferred upon grant. The object of A 123(3) is to prevent any procedural situation where an act which does not infringe the patent as granted becomes an infringing act as a result of an amendment after grant (cf. also T 59/87 [2]; T 604/01 [2.3]). In accordance with the established case law of the Boards of Appeal (cf. T 49/89 [3.2.2]; T 402/89 [2]), the Board holds that the legal notion “protection conferred” in A 123(3) refers to the totality of protection established by the claims as granted and not necessarily to the scope of protection within the wording of each single claim as granted. Under A 123(3), the patentee is generally allowed to redraft, amend or delete the features of some or al1 claims and is not bound to specific terms used in the claims as granted as long as the new wording of the claims does not extend the scope of protection conferred as a whole by the patent as granted (and does not violate the requirements under A 123(2)). Thus, in order to assess any amendment under A 123(3) after grant, it is necessary to decide whether or not the totality of the claims before amendment in comparison with the totality of the claims after amendment extends the protection conferred. There are basically two different types of claims, namely claims to a physical entity (e.g. product, apparatus) and claims to a physical activity (e.g. method, process, use). These two basic types of claims are referred to as the two possible “categories” of claims. Within these two basic types of claims various sub-classes are possible (e.g. a compound, a composition, a machine; or a manufacturing method, a process of producing a compound, a method of testing, etc.); (see decision of the Enlarged Board of Appeal (EBA) G 2/88). Decision G 2/88, which was relied on by the [patent proprietor] in order to substantiate its argument that in the present case the scope of protection has not been expanded, is concerned with the considerations to be taken into account when deciding, with regard to A 123(3), on the admissibility of amendments involving a change of category (from a “compound” claim to “use of that compound in a composition for specified purpose”) . That situation differs from the one underlying the present case. Here claim 1 of the main request refers to a physical entity (a packaged kit). Also claims 1 and 32 of the claims as granted refer to a physical entity, namely a liquid composition, and belong therefore to the same “category”. Claims 43 and 58 of the granted claims refer to a physical activity. The relevant change in claim 1, from a liquid composition to a packaged kit, is not therefore a change in “category”, but a change of sub-class within the same “category”. The [patent proprietor] argued that a claim referring to a packaged kit containing the liquid composition of claim 1 as granted is in fact narrower in scope than a claim referring to the liquid composition, as this claim encompasses the liquid formulation in any possible container, vessel, package or reservoir. Moreover, granted claim 3 already referred to a liquid composition contained in a vessel, which according to claim 13 was defined as being a syringe. [22] The Board agrees with the [patent proprietor] in so far as the scope of protection covered by a claim referring to a physical entity should be considered to encompasses the physical entity in any possible package or container. However, it is self-evident that “a packaged kit” is a different physical entity than “a liquid composition”. It must not be overlooked that claim 1 of the main request is not directed to “a liquid composition contained in a packaged kit” but to “a packaged kit containing a syringe pre-filled with a liquid composition.” In 2828 | 3398
T 1898/07 – Packaging Issues
K’s Law – The ebook
the Board’s view the content of a package is not a characterising feature of the package per se. This has the consequence that the scope of protection covered by claim 1 of the main request also encompasses the “packaged kit”, being a box, package or other container, whether it comprises a syringe prefilled with the liquid composition according to the present invention or not. Thus, a procedural situation is created where an act, for instance the production of the box, package or other container, which did not infringe the patent as granted becomes an infringing act as a result of an amendment after grant (cf. T 59/87 and T 604/01). Exactly this situation should be prevented by the requirements of A 123(3). [23] The [patent proprietor] submitted that a negative decision on this issue would be contradictory to the case law of the Boards of Appeal and would therefore require a referral of questions to the EBA according to A 112(l)(a). It referred in this respect to decision T 579/01, taken by this Board in a different composition. In this case independent claim 1 and dependent claims 2 to 6 of the new main request were directed to a “vegetable plant”, while the respective claims as granted were directed to a “cell in a vegetable plant”. The Board said that in the understanding of the skilled person the term “a cell of a plant”, not being qualified as “isolated”, included various physiological and morphological states of such a cell, including both differentiated and undifferentiated states. The cells in the different states in which they existed in a (developing) plant fell within the protection conferred by the claim to the “cell of a vegetable plant” as granted, and the protection conferred by such claim also extended to such cells in a plant. Furthermore, the biological notion “cells of a plant” encompassed such differentiated cells which were morphologically and functionally organised to constitute a plant. That implied that morphologically and functionally organised aggregates of plant cells, e.g. plants, likewise fell within the protection conferred by the granted claim to “a cell of a plant”. The Board also decided that any plant as subjectmatter of claim 1 of the new main request fell within the protection conferred by a claim to “a cell of a plant”, and finally that the “plant” now claimed was characterised by the same genetic features as recited in the granted claim to “a cell of a plant”. The Board also decided that any plant as subject-matter of claim 1 of the new main request fell within the protection conferred by a claim to “a cell of a plant”, and finally that the “plant” now claimed was characterised by the same genetic features as recited in the granted claim to “a cell of a plant”. This situation differs drastically from the present one, where it goes without saying that a liquid composition does not differentiate and develop into a packaged kit, and that these two entities are not characterised by the same genetic features. Accordingly decision T 579/01 does not apply to the present case. [24] A further decision referred to was T 352/04. In this case claim 1 as granted referred to a hair conditioner, characterised by its components, while amended claim 1 referred to the hair conditioner characterised by its components, wherein the conditioner took the form of an aerosol hairspray or of a non-aerosol hairspray with a mechanically driven spraying device ([…] emphasis added by this Board). Both claim 1 as granted and claim 1 as amended refer to a hair conditioner, thus they belong to the same subclass within the same “category” of claims. As this situation differs from the present one, decision T 352/04 has no bearing for the main request. [25] In the light of the above considerations (see especially point [22] above), the Board arrives at the decision that the patent according to [patent proprietor’s] main request has been amended in a way as to extend the protection it confers. The main request violates the requirements of A 123(3). The same applies to auxiliary requests 1 to 10. I have to say that I am not persuaded by this application of A 123(3). When a claim is directed at a packaged kit containing a liquid-filled syringe, how can it be affirmed that the scope of protection extends to a package that does not contain such a syringe? To my eyes, this sort of claim interpretation is flawed. The key sentence in the reasoning of the Board appears to be that “the content of a package is not a characterising feature of the package per se.” Now this may be right, but the claimed subject-matter is not a package per se but a packaged kit containing a syringe. Unless I miss something important, a package without a syringe could never be seen to literally infringe the claim. This leads me to another thought. I like the teleological reading of A 123(3) proposed by the Board: “The object of A 123(3) is to prevent any procedural situation where an act which does not infringe the patent as granted becomes an infringing act as a result of an amendment after grant.” Having said this, invoking infringement in proceedings before the EPO is not unproblematic. For the time being, the assessment of patent infringement is not within the competence entrusted to the EPO but is left with the national jurisdictions. Some national patent laws, such as for instance French law, retain complex forms of infringement, such as contributory infringement. Under certain, rather strictly defined circumstances, selling a package without a syringe could perhaps 2829 | 3398
T 1898/07 – Packaging Issues
K’s Law – The ebook
constitute a (contributory) infringement of claim 1. But of course, the EPO could never take into consideration such tricky aspects of national patent law. There is simply no legal basis for doing so. Therefore, it would perhaps be more prudent to say: “The object of A 123(3) is to prevent any procedural situation where any product/process which does not reproduce all the features of a claim as granted reproduces all the features of the claim as amended after grant.” Tomorrow
we
shall
see
one
more
If you wish to download the whole decision, you can do so here. For another surprising decision dealing with A 123(2), click here.
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aspect
of
this
decision.
T 1898/07 – Things That Judges Won’t Do
K’s Law – The ebook
T 1898/07 – Things That Judges Won’t Do 9 Aug 2010
I owe the knowledge of this decision to a kind colleague. The decision deals with an appeal of the patent proprietor following the revocation of its patent by the Opposition Division (OD). The first point of interest deals with the admissibility of auxiliary requests 13 and 14 which had been filed during the oral proceedings (OPs) before the Board. But the discussion is much more general and includes interesting statements on the role of the Boards in appeal proceedings. [1] The [patent proprietor] was correct in its submission that it had throughout the appeal proceedings requested to file further requests consisting of “combinations” of actual requests […] and either requested, or claimed to “reserve the right”, to file additional or amended auxiliary requests […]. It is also clear from its submissions that the [patent proprietor] considered this approach was required for various reasons
the large number of objections it had to deal with […]; the absence in the Board’s communication of a provisional opinion on every one of those objections […]; and its expectation that at the OPs it would receive, rather than one final decision after all the parties had been heard, a number of decisions on individual issues and individual claims within requests followed by the opportunity to file new auxiliary requests, whether “combinations” or amendments of previous requests […].
However, the [patent proprietor’s] view of appeal procedure was unfortunately mistaken. [2] The matter is governed by Articles 12 and 13 RPBA […]. In particular Article 12(2) RPBA requires that a party’s statement of grounds of appeal (or reply - the requirement applies equally to both sides of an inter partes case) contains its complete case; and Article 13(1) RPBA requires that any amendment to a party’s case after it has filed its grounds of appeal or reply - and a new set of claims is clearly such an amendment - is admissible, not as of right, but at the Board’s discretion. [3] As the Board has recently observed (see T 316/08 [19]), the fact that Article 12(1)(c) RPBA provides that appeal proceedings shall be based on, in addition to the grounds of appeal and reply, any communication sent by the Board and any answer thereto, cannot mean that any new requests filed with such an answer are per se admissible since otherwise parties could withhold less preferred requests until after obtaining the Board’s provisional opinion on more preferred requests: a tactic which would largely negate the function and value of provisional opinions but on which the [patent proprietor] in this case relied heavily. Article 12(4) RPBA requires the Board to take into account everything presented by the parties under Article 12(1) RPBA if and to the extent it relates to the case under appeal and meets the requirements in Article 12 (2) RPBA, which includes the complete case requirement. Thus the Board is quite clearly not required to take into account-anything which does not satisfy that requirement, such as requests which could have been filed with the statement of grounds of appeal but were not. [4] In the present case, it follows axiomatically from the [patent proprietor’s] own submissions on possible further auxiliary requests in the form of “combinations” or amendments of existing requests that it had foreseen other requests than those it actually filed. Accordingly, it is implicit in its own case that it could have filed such other requests (including auxiliary requests 13 and 14) either with its statement of grounds of appeal or, at the very latest, in response to the Board’s communication. Similarly, it is implicit that the statement of grounds of appeal did not contain the [patent proprietor’s] complete case. [5] The [patent proprietor’s] arguments can be conveniently dealt with by reference to the recent jurisprudence of the Enlarged Board of Appeal (EBA) relating to procedural questions raised in petition proceedings under A 2831 | 3398
T 1898/07 – Things That Judges Won’t Do
K’s Law – The ebook
112a. The [patent proprietor] argues that it did not know the Board’s opinion on all the issues in the appeal, that it did not want to file a large number of requests, that it had constantly requested to file further requests or combinations of existing requests, and that these would depend on the decisions taken by the Board on each of these separate issues at the OPs. The [patent proprietor] clearly expected that the Board would announce a separate decision on each such issue and then allow the [patent proprietor] to tailor its requests to the new situation which might then arise. However, as the EBA observed in R 12/09 [11]: “It is for each party to make its own case and for a Board then to decide on the basis of the parties’ submissions. In doing so a Board should not in inter partes proceedings assist one of the parties by giving it a hint in advance, either during OPs (see R 11/08 [14]) or in a communication (R 3/09 [5.1]). A party which wants a decision in its favour must play a full part in proceedings and submit arguments in support of its case on its own initiative and at the appropriate time (see R 2/08 [8.5, 9.10]). It is part of the professional task of representatives to decide independently – that is, without assistance from the Board – how to pursue their cases (see T 506/91 [2.3] cited with approval in R 11/08 [10]).” (Translation by the Board from the German text of the decision.) [6] The present case bears a close resemblance to R 11/08 in which, in proceedings before a Board of Appeal, the petitioners (as the Patentees appealing against a revocation decision) had filed a main and fifteen auxiliary requests and further stated in their grounds of appeal that they were ready to file further auxiliary requests to solve potential problems by deleting claims from or combining claims of different auxiliary requests and, as a precautionary measure and to avoid numerous further auxiliary requests, they also requested that the patent be maintained based on at least one of the independent claims of any of the auxiliary requests. (This last request was referred to in the EBA’s decision as “the general request”.) The Board of Appeal had dismissed the general request (which it called a “pick and mix” approach) because it would have required the Board to assist the [patent proprietor]s by giving them a “pre-decision” before they finalised their requests (see T 221/06 [2.3-4]). [7] The EBA dismissed the [patent proprietor’s] arguments (as petitioners) that their approach only called for deleting one or more claims and avoided filing many further requests by observing that such arguments in themselves showed that the requests in question were not immediately ascertainable (see Reasons, point [12]). To the argument that the [patent proprietor’s] approach was the only way to obtain the broadest possible protection in the face of numerous objections, the EBA observed the objections were to the claims the patentees themselves had put forward and there was no explanation why the conventional approach, of a sequence of specific requests in descending order of preference, had not been possible (see Reasons, point [13]). Further, the EBA held it was inherent in the petitioners’ further argument
that many variants of their requests were needed because the Board had not supplied an opinion on various issues; that, if the Board had provided such views, it would thereby have assisted the petitioners to frame their requests.
The EBA concluded that the petitioners’ complaint was in effect that the Board in question was, quite properly, impartial (see Reasons, point [14]). [8] The Board follows those views of the EBA in the present case in which the [patent proprietor’s] arguments are very substantially the same. The Board could not assist the [patent proprietor] to frame further requests by giving “predecisions” at various points during the OPs – indeed, despite its earlier hopes that the Board would take decisions on each of separate issues at the OPs, the [patent proprietor] conceded at the OPs that it was not entitled to any provisional opinion from the Board. To the extent such an opinion is given in a communication, it is intended to assist both or al1 parties and if, as in the present case, that communication records that the Board has not yet been convinced by an argument or has not yet formed an opinion on an issue, that can only mean what it says – that the Board is as yet undecided even on a provisional basis – and carries no implicit offer of a further opinion before the proceedings are concluded. [9] The function of the Board is to hear the parties’ cases and only thereafter to decide. It is not, as the [patent proprietor] appeared to believe, to say which of two or more alternatives it prefers […] or to suggest deletions of claims from otherwise acceptable requests […] or to provide interim decisions so as to allow a patentee to combine requests […]. To the extent a Board provides any opinion before its final decision, it can quite clearly only be provisional and 2832 | 3398
T 1898/07 – Things That Judges Won’t Do
K’s Law – The ebook
not binding, as indeed the law states (see Article 17(2) RPBA) . In the present case, this was also expressly stated in the Board’s communication […] which also drew the parties’ attention to the provisions of Articles 12 and 13 RPBA which include the complete case requirement and the provisions on amendment of a party’s case […]. The [patent proprietor] argued that, if it was not allowed to file auxiliary requests 13 and 14 which it produced at the OPs, it would be disadvantaged by being denied the right to be heard. The Board’s view is quite to the contrary namely that, if it had complied with the [patent proprietor’s] approach, it would have inevitably assisted the [patent proprietor] to the disadvantage of the respondents. Accordingly, the [patent proprietor’s] request to introduce auxiliary requests 13 and 14 at the OPs was denied. There
is
enough
in
this
decision
to
make
some
If you wish to download the whole decision, you can do so here.
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more
posts,
as
we
will
see.
T 421/09 – Don’t Be So Quick To Replace
K’s Law – The ebook
T 421/09 – Don’t Be So Quick To Replace 7 Aug 2010
The present decision shows that in appeal proceedings it may be dangerous to replace existing requests by late filed requests. The Examining Division had refused the application. The applicant filed an appeal. During oral proceedings (OPs) before the Board it filed a new main and a new auxiliary request to replace all requests on file. The Board of appeal uses its discretion under Article 13(1) RPBA not to admit these late filed requests and then pursues: [4] By at the OPs expressly replacing all requests then on file with the present main and auxiliary request, the Appellant has effectively withdrawn the previous requests. (This situation contrasts with one in which requests are filed as subsidiary to those already on file). As the Board does not admit the replacing requests, there is no longer a valid text of the claims submitted by the applicant as appellant upon which the EPO can decide upon the European patent application, A 113(2). Such a valid text is a fundamental procedural prerequisite for the Board to be able to review the decision under appeal. Absent a valid text the appeal must fail. Now perhaps there was not much hope for the replaced requests either, but if the applicant had added new requests to the requests on file rather than replacing the latter, the Board would at least have had to deal with those requests. To read the whole decision, please click here.
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Interpretative spotlight: “compatible”
K’s Law – The ebook
Interpretative spotlight: “compatible” 7 Aug 2010
Claim 1 of the auxiliary request read: 1. Procedure for the production of stirred and drinking fermented milk products, characterized by the production of two or more individual different products made in a set of parallelly arranged fermenters, wherein the different fermenters each contain different subjects of fermentation, the subjects of fermentation being selected each from the group consisting of (a) one species of microorganisms, (b) a group of different but compatible microorganisms, (c) a symbiotic union of microorganisms, wherein the individual different products thus made are then cooled and mixed in a desired proportion to make a new product. The Board raises a clarity issue: [3.1] Claim 1 of [this] auxiliary request differs from Claim 1 as granted inter alia in that the different fermenters each contain different subjects of fermentation and in that the subjects of fermentation are selected each from the group consisting of (a) one species of microorganisms, (b) a group of different but compatible microorganisms, (c) a symbiotic union of microorganisms. [3.2] The meaning of “compatible” is unclear, since - according to the opposed patent - cultures which were obviously long considered to grow together in one fermenter, and were thus regarded as being compatible in the field, are no longer considered to grow together in view of the patent (paragraphs [0004] to [0015]). The problem addressed in the patent thus requires the skilled person to adopt a re-definition of the term “compatibility”. Yet, the opposed patent does not give any further guidance. In the absence thereof, it leaves the skilled person to guess precisely when microorganisms are to be considered compatible and in what respects. For example, for microorganisms to qualify as compatible, is it enough if one microorganism is not eaten up by the other? Or does compatibility mean that the growth of one microorganism is not inhibited by the presence of the other microorganism? Or should the microorganisms have similar growth conditions? In the last case, the skilled person would not even know the degree of similarity that is required to consider microorganisms as being compatible. [3.3] As the term “compatible microorganisms" was introduced into Claim 1 by way of amendment and was not present in the only granted claim, said amendment is open to an objection under A 84. [3.4] Consequently, auxiliary request I [does] not meet the requirements of A 84. If you wish to download the whole decision (T 1736/06), please click here.
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T 1736/06 – This Way Won’t Lead To Novelty
K’s Law – The ebook
T 1736/06 – This Way Won’t Lead To Novelty 6 Aug 2010
The single claim of the patent read: Procedure for the production of stirred and drinking fermented milk products, characterized by the production of two or more individual different products made in a set of parallelly arranged fermenters, cooled and mixed in a desired proportion to make a new product. The Opposition Division revoked the patent for lack of novelty over document D12. In its appeal, the proprietor argued the description had to be used to interpret the claims in line with A 69. Therefore, Claim 1 had to be read as being directed to a process wherein one and the same starting material - raw milk - was used and wherein different subjects of fermentation were applied in each of the parallelly arranged fermenters. In view of this, novelty had to be acknowledged. The Board disagrees: [2.1] The appellant argued that Claim 1 as granted had to be read in the light of the description pursuant to A 69. Therefore, the process of Claim 1 was, in the appellant’s view, restricted inter alia in that different subjects of fermentation had to be used in each of the parallelly arranged fermenters. [2.2] However, the appellant’s approach is not in line with the established jurisprudence of the EPO, according to which A 69 does not offer any basis for reading into a claim features which can be found in the description. Reference is made for instance to
T 1129/97 [2.1.9]: “...the practice of using an ambiguous and therefore imprecise term in the wording of a claim, and relying for its interpretation on an implicit but essential reference to the description, must remain prohibited. The principle of the self-sufficiency of the claim must be retained.”;
T 1208/97 [4(b)]: “A 69 does not offer any basis for reading into a claim features which can be found in the description when judging novelty.”; and
T 223/05 [3.5]: “A 69 and its Protocol do not provide a basis for excluding what is literally covered by the terms of the claims. ... In particular, A 69 does not offer any basis for reading into a claim features which can be found in the description when judging novelty (see T 1208/97 [4(b)].”
[2.3] According to the appellant, its view on the interpretation of a claim was confirmed by T 476/89, T 544/89, T 565/89 and T 952/90. These decisions refer exclusively to cases in which a claim contains an unclear feature whereas in the present case there is no ambiguity in Claim 1 as granted. It is unambiguously clear from the wording of Claim 1 that any subject of fermentation, including both the same or different subjects of fermentation, can be present in the parallelly arranged fermenters. The decisions cited by the appellant are thus irrelevant to the present case. Moreover, the description does not contain any indication that the invention is restricted to different subjects of fermentation present in each of the fermenters. Therefore such a restriction could not be read into the claim even if one were to take the description into account. […]
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T 1736/06 – This Way Won’t Lead To Novelty
K’s Law – The ebook
[2.5] Consequently, the subject-matter of Claim 1 of the main request lacks novelty in view of D12. A 100(a) thus prejudices the maintenance of the opposed patent as granted. If you wish to download the whole decision, please click here. A post on a similar decision can be found here.
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T 585/08 – Formalities Agents Aren’t Detectives
K’s Law – The ebook
T 585/08 – Formalities Agents Aren’t Detectives 5 Aug 2010
We have seen yesterday that the applicant who had filed the appeal and the request for re-establishment was unsuccessful in convincing the Board that all requirements in view of re-establishment had been fulfilled in due time. His second line of defence was to invoke the principle of good faith. [13] Turning now to the appellant’s argument that the principles of good faith as set out in decision T 14/89 and confirmed in case J 13/90 should be applied in the present case if the board finds that the facts to substantiate the request for re-establishment were not filed in due time. [14] T 14/89 concerns an appeal by a patent proprietor who filed a request for re-establishment of rights well within the time limit for doing so. This request had two deficiencies: the fee for re-establishment had not been paid and the facts to substantiate the request had not been filed. The Board found (point [5] of the Reasons) that under the principle of good faith, “...the EPO should not fail to draw the appellant’s attention to obvious deficiencies in his acts. This obligation certainly exists if, as in the present case, the obvious deficiencies can be expected to be remedied within the time limit for reestablishment”. It is to be noted that in case T 14/89 the EPO had ample time, about 6 weeks before the expiry of the time limit for requesting re-establishment, in which to inform the proprietor of the deficiencies of his request. In its decision G 2/97 [3.4] the Enlarged Board of Appeal commented upon decision T 14/89 and found that this decision “... related to the particular facts of that case and that there is no generally applicable principle to be derived therefrom”. [15] Decision T 14/89 was followed in decision J 13/90, where in another case of re-establishment of rights the Board found that the principle of good faith requires the EPO to warn the applicant of any impending loss of rights, if such a warning can be expected in all good faith, and that such a warning may be expected if the deficiency is readily identifiable for the EPO and the applicant can still correct it within the time limit. In that case, it was clear from a letter addressed to the EPO by the appellant that the latter was in error with regard to the need to make payment of a renewal fee within the two-month period for re-establishment of rights. The Board found that the EPO must not omit any acts which the party to the proceedings could legitimately have expected and which might well have helped avoid a loss of rights (point [5] of the Reasons). However, the Board also found that: “It would be taking the principle of good faith too far to expect the Office to warn the applicant of deficiencies in every case - even when the deficiency is not readily identifiable ...”. [16] The appellant argues that, in view of the above mentioned decisions, the EPO should have advised the former representative of the missing grounds and facts regarding his request for re-establishment of rights since the deficiencies were obvious and could be expected to be remedied within the relevant time limit for requesting re-establishment. [17] As set out above, according to the jurisprudence of the boards of appeal, the duties of the EPO under the principle of good faith are limited in that the EPO can only be expected to warn a party of a deficiency if the deficiency is readily identifiable by the EPO and the party can still correct it within the relevant time limit. [18] In the present case, however, the deficiency was not readily identifiable. Firstly, a number of letters were filed. Secondly, it would only have been possible to detect the deficiency if these letters had been studied carefully. […] However, in the board’s view, the principle of good faith does not impose any obligation on the EPO to scrutinize several letters on file to establish whether grounds and facts with respect to a request for reestablishment are missing. 2838 | 3398
T 585/08 – Formalities Agents Aren’t Detectives
K’s Law – The ebook
Moreover, in his letter dated 16 January 2008 the appellant had announced that the former representative would file explanations as to the personal circumstances having caused the delay. Hence, there was an indication on file that the appellant and his former representative were aware of what had to be done in the present case. [19] The appellant’s argument that a cursory reading of the letter setting out the statement of grounds of appeal would have shown that it did not deal with the request for re-establishment of rights is not convincing. First of all, the deficiency would not have been readily identifiable by a cursory reading of said letter alone since said letter comprised three pages of reasoning which did not refer to the request for reestablishment at all. As already set out above, the preceding submissions dated 13 February 2008 and 16 January 2008 gave the impression that the representative was aware of what had to be done in the present case. Therefore, it was not obvious that a particular reasoning in respect of the request for reestablishment of rights was missing, in the sense that it had been omitted here in error. In addition, even if the EPO had been in a position to notice this deficiency at the time of receipt of the statement of grounds (14 February 2008), it was not evident that there would still have been enough time for the EPO to warn the appellant about the deficiency in respect of the request for re-establishment of rights. In the documents then on file there was no explanation whatsoever about the circumstances in respect of missing the time limit for filing an appeal. Hence, there was no submission as to what the cause of non-compliance was or when the removal of the cause of non-compliance occurred. In fact, it was only possible to establish the date of the removal of the cause of non-compliance during the oral proceedings before the board after a discussion in great detail and on the basis of the written submissions and the Statutory Declaration, both filed after oral proceedings had been arranged. In the absence of any indication or submission as to the cause of noncompliance, from the point of view of the EPO, the date of removal could just as well have been the next day (or only a few days) after expiry of the time limit for filing an appeal on 14 December 2007. In such a case the time limit for filing a request for re-establishment could have already expired on 15 February 2008 and not on 5 March 2008 as it eventually turned out. Accordingly, there was no indication that there was enough time for the EPO to warn the appellant about any deficiency. The board arrives at the same conclusions in respect of the notice of appeal and the request for re-establishment of rights, since they were effectively filed a few days later on 19 February 2008 when the respective fees were paid. [20] In view of the above, neither T 14/89 nor J 13/90 can assist the appellant. The deficiency in question was not readily identifiable, and hence, under the principle of protection of legitimate expectations, the EPO had no duty to warn the appellant. Since a warning could not be expected, the EPO was not obliged to set a period in which the appellant could correct the deficiency. To
read
the
whole
decision,
NB: This decision was also reported on Le blog du droit européen.
2839 | 3398
you
may
click
here.
T 585/08 – Don’t Announce It, Do It
K’s Law – The ebook
T 585/08 – Don’t Announce It, Do It 4 Aug 2010
This decision deals with a request for re-establishment. After the refusal of his application by the Examining Division (ED), the applicant had filed an appeal, but only after the expiry of the two-month time limit for doing so. He then filed a request for re-establishment but did not explain the grounds on which the request was based nor facts to support it. [8] [… T]he two-month period for filing a request for re-establishment of rights and for performing the omitted act expired on 5 March 2008 (R 131(4)). The appellant observed this time limit to the extent that the request for re-establishment of rights and the notice of appeal were filed on 13 January 2008 and the respective fees were paid on 19 February 2008. This request was also filed within one year of expiry of the unobserved time limit for filing an appeal. [9] However, according to R 136(2), first sentence, the request for re-establishment of rights must also state the grounds on which it is based and set out the facts on which it relies. According to the established jurisprudence of the boards of appeal, such a statement of grounds, containing at least the core facts on which the request relies, has to be filed within the time limit for filing the request (see for example J 18/98). The facts must also plausibly explain that the events stated were the cause of the failure to observe the time limit (T 13/82). As pointed out by the appellant it is admissible to present facts in another document provided this document is filed before expiry of the time limit for filing the request for re-establishment of rights (T 287/84). It is also possible to supplement the facts on condition that the supplementary submissions do not extend beyond the framework of the previous submissions (J 5/94 [2.3]). [10] The appellant argues that in the present case the letters filed before 5 March 2008, the date of expiry of the two-month time limit pursuant to R 136(1), indicate grounds on which the request for reestablishment is based and set out facts on which this request relies. [11] However, the board does not concur with the appellant for the reasons that follow. It is clear that neither the fax of 13 February 2008, by which the request for re-establishment was filed, nor the fax of 14 February 2008 contain any grounds on which the request is based or any core facts which would support it. Moreover, this finding has not been contested by the appellant. Nor do the submissions made by the former representative in the fax dated 11 January 2008 assist in discerning the grounds or at least the core facts on which the request for re-establishment of rights relies. In this letter the former representative set out what, from his point of view, happened during the proceedings before the ED and in particular during the telephone conversation on 8 August 2007. He also stated that, due to said telephone conversation, he was expecting a communication from the ED setting out the date from which the one-month period for submitting further amendments and/or arguments would run, but that he had never received such a communication. The board takes the view that these submissions put forward facts and grounds in support of a procedural violation which possibly occurred in first instance proceedings and the misunderstanding resulting therefrom. However, these submissions do not explain why the time limit for filing an appeal was missed. Rather they indicate why the contested decision could possibly be set aside or why the appeal fee could possibly be reimbursed, in the event that the present appeal was admissible and allowable. Thus these submissions do not assist the appellant’s case. The board considers that the appellant’s fax dated 16 January 2008 does not explain either why the notice of appeal was not filed in due time. What the text of the letter indicates is that there was a failure in communication between the former representative Mr B. and the examiner as well as between the former representative Mr. B. and his client. However, it is not explained what the circumstances for this breakdown of communication were. Moreover it is stated in this letter: 2840 | 3398
T 585/08 – Don’t Announce It, Do It
K’s Law – The ebook
“I was not informed of the examiner’s decision until three months later when I received a letter from Mr B. dated January 5th 2008. I have now had the opportunity to discuss the response to the French Specification No. 1 269 288 with Mr B.. He will write to you again explaining the personal circumstances which have led to this delay.” The Board considers that it could reasonably be understood from this statement that there was a delay with regard to a reaction to the decision of the ED and that a letter of the former representative with explanations on the personal circumstances causing the delay would follow. This, however, was a mere announcement of submissions, which is not sufficient for a substantiated request for re-establishment of rights. Finally, the fax of the former representative dated 13 February 2008 indicates that there seemed to be a wrong entry on the epoline website which caused some confusion, and that this should be corrected and taken into account in relation to an appeal that was being filed by a further fax on the same day. However it contains no reference to the payment of the fee for reestablishment of rights mentioned in said further fax or to a delay of filing the appeal. Moreover, the board does not gather from this letter any facts or grounds which could be considered as a plausible explanation for the cause of the failure to observe the time limit for filing the notice of appeal. [12] In view of the above the board comes to the conclusion that the documents on file before the expiry of the period for requesting re-establishment of rights neither state grounds nor set out facts in support of such a request as required by R 136(2), even if all these documents are read together and considered as a whole. Admittedly, this outcome is not surprising. However, the case is of some pedagogical interest because it shows that meeting the deadline for establishing a case in view of re-establishment is crucial. It will not be sufficient to state that you request re-establishment and that the relevant facts will follow. If they reach the EPO only after the expiry of the deadline, the request is very likely to be dismissed. This point was well explained in J 19/05 [4-5]: For a request for RII to be admissible, sufficient substantiation within the meaning of A 122(3) has to be supplied within the corresponding time limit. The request has to designate a well defined (genau individualisierbares) event concerning the way and the moment of the apparition of the obstacle and has to report the factual circumstances of the knowledge concerning the removal of the cause of non-compliance, so that a subsequent change in justification and a circumvention of the time limit can be ruled out. Adding new facts which concern another reason justifying the non-compliance (Hindernisgrund) is not admissible. Also, an application for RII relying on general statements and containing no specific facts is not considered to satisfy the requirement for substantiation. The statements are insufficiently specified if the actual reason for non-compliance and the moment and reason for its apparition and removal are not understandable (nachvollziehbar) to the EPO and allow to add variable explanations (beliebig variierbare Sachverhaltsdarstellungen) in view of the ultimate justification. […] Thus, in order to be admissible, a timely filed application has to give the core facts which led to the non-compliance with the time-limit. Subsequent exposition of facts can only be taken into account if these facts complete the core facts (Sachverhaltskern) ; they cannot be considered if the factual justification is only established by the new facts. Tomorrow
I
shall
report
on
another
To read the whole decision, you may click here.
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aspect
of
this
decision.
T 339/08 – Thus Speaketh The White Book
K’s Law – The ebook
T 339/08 – Thus Speaketh The White Book 3 Aug 2010
This decision has retained my attention because the “White Book” (which is not white any more) is cited as if it was “the Good Book.” The proprietor requested some late-filed documents not to be admitted to the procedure. The relevance of the late-filed documents was only a minor consideration to be made in deciding whether to admit them to the procedure. More important was that the case examined at appeal should have the same legal framework as that before the first instance, reference being made to the summary of case law provided in the “White Book”, i.e. “Case Law of the Boards of Appeal”, 5th Edition page 393, section 3.1.2 regarding exercise of discretion in admitting late filed material to the appeal procedure. In the present appeal, however an entirely new case had been constructed. Further, according to decision T 49/85, T 101/87 and page 399 of the “White Book” documents submitted for the first time with the statement grounds of appeal were not to be considered as having been filed in due time unless they provided counter evidence for a newly emphasised reason given in the decision under appeal, which condition did not apply in the present case. The Board remains unpersuaded but accepts to do some White Book exegesis as well: [2.8] Regarding the submissions of the patent proprietor at the oral proceedings that maintaining the “legal framework” had a higher priority than considerations of relevance in deciding whether to admit late filed documents […], the Board observes that the cited section 3.1.2 of the “White Book” is entitled “Examination as to relevance with respect to G 9/91 and G 10/91” (emphasis of the Board). The phrase “legal and factual framework” occurs in this section in the discussion of decision T 212/91 which decision in section 2 of its reasons in coming to the conclusion not to admit the late-filed evidence gives high or even highest precedence to the aspect of relevance (“possibly, most significantly…”). Thus neither the cited passage of the “White Book” taken alone nor the case law to which it refers supports the contention of the patent proprietor that maintaining the “legal and factual framework” takes precedence over relevance in deciding on the admissibility of newly filed evidence. As regards the further submissions referring to T 49/85, T 101/87 and page 399 of the “White Book” where these decision are discussed, the Board observes the following. In the decision under appeal an attack based on D1 was rejected due to the fact that D1 required a water sensitive polymer and a hydrophobic polymer rather than two water sensitive polymers […]. In reaching this conclusion, the opposition division dismissed the arguments of the opponent that the systems of D1 contained only polymers which could be designated “water sensitive”, in particular with a view to obtaining products with good blocking resistance […]. T 49/85 [2] states that a document filed for the first time with the statement of grounds of appeal is not submitted in due time (A 114(2)) unless representing effective counter evidence to a newly emphasized reason given in the decision. It is however within the discretion of a Board of appeal pursuant to A 114(1) to admit such a document into the proceedings in view of its relevance (emphasis of this Board). T 101/87 concerned a case where upon appeal four new documents were cited and as a consequence new evidence and arguments presented which “bore little relation to those filed in the original opposition” and produced in effect an entirely new opposition at the appeal stage. This which was considered to constitute an abuse of the appeal procedure. This was contrasted with the case that new documents were filed in order to address deficiencies in the argument, e.g. to close a “missing link” in a chain of argument which was considered to be admissible (T 101/87 [2]). The Board is satisfied that the opponent in formulating its appeal and citing new documents acted in accordance with the findings of this case law in that the newly cited documents were directed to overcoming deficiencies in the evidence thus far submitted, identified in the decision under appeal. The conclusion is that the case law referred to by the patent proprietor does not support its position that the newly filed documents should not be admitted to the procedure. 2842 | 3398
T 339/08 – Thus Speaketh The White Book
K’s Law – The ebook
Personally I think that the White Book is just a handy summary of case law and should not be treated as if it was more than that. When it comes to legal arguments, the precise wording of the White Book and its titles appear to be irrelevant; exegesis should be limited to legal provisions and perhaps the decisions themselves, as the case may be. The only possible exception that comes to my mind is that a good faith argument could perhaps be based on the wording of the White Book. If you wish to read the whole decision, you may download it here.
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T 991/07 – Too Bad You Weren't There
K’s Law – The ebook
T 991/07 – Too Bad You Weren't There 2 Aug 2010
This decision deals with an appeal against a refusal of an application by the Examining Division (ED). The applicant requested oral proceedings (OPs) before the Board but then finally decided not to attend.them. The Board is faced with a difficulty because the claims as amended give rise to a new objection of clarity: [2.1] The Board accepts that the objections relating to the lack of clarity, which were raised by the Board in its communication pursuant to Article 15(1) RPBA, have been resolved by the amendments to independent claim 1 filed on 26 February 2010. However, in the Board’s judgement, these amendments create new ambiguities as to the claimed subject-matter. Thus, the question arises whether the Board can base a decision on objections which would be new to the appellant, but which could not be communicated to it, due to the fact that it was not present at the oral proceedings (OPs), without infringing the appellant’s right to be heard (A 113(1)). [2.2] Article 15(3) RPBA reads: “The Board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party duly summoned who may then be treated as relying only on its written case”. The jurisprudence of the Boards of Appeal has underlined that this provision is to be interpreted in combination with Article 12(2) RPBA, according to which the statement of grounds of appeal shall contain a party’s complete case (cf. Singer/Stauder Europäisches Patentübereinkommen, 5th. edition, A 113, § 42). This approach, however, cannot be taken to extremes, since a party’s case may be amended in the course of the appeal proceedings and thus may give rise to new objections to be dealt with as a consequence of these amendments being admitted and considered by the Board in the exercise of its discretional power (Article 13(1) RPBA). The Board is nevertheless of the opinion, in line with established case law (cf. e.g. decisions T 823/04 [1], T 1059/04 [1]), that in such a situation an appellant who has decided not to attend OPs has nonetheless had the opportunity to do so and that the requirements of A 113 are thus met. [2.3] As underlined in decision T 1704/06 [7], this approach is corroborated by the explanatory note to Article 15(3) RPBA (former Article 11(3) RPBA), which note reads: “This provision does not contradict the principle of the right to be heard pursuant to A 113(1) since that Article only affords the opportunity to be heard and, by absenting itself from the OPs, a party gives up that opportunity” (cf. CA/133/02, 12 November 2002). Since it is incumbent on both the EPO and users of the European patent system who are parties to proceedings before it to act in good faith (G 2/97 [4.2]), a further justification for this approach may be seen in the fact that a party who files substantive amendments to its case and then deliberately absents itself from OPs in order to avoid any adverse decision being reached would infringe this general principle. This would especially be true in situations such as the present, where the appellant had initially requested that OPs be held. The Board further observes that a different conclusion, in particular one that would recognise under such circumstances the need for further exchanges between the board and the appellant before a decision could be taken, might imply that such amendments to a party’s case would have to be considered inadmissible under Article 13(1) RPBA as being contrary to the principle of procedural economy. [2.4] Consequently, as observed in decision T 1704/06: “in the situation where an appellant submits new claims after OPs have been arranged but does not attend these proceedings, a board has a number of different options. It can continue the examination in writing, remit the case, grant a patent, or reject the claims as inadmissible. But it can also refuse the new claims for substantive reasons, specifically lack of inventive step, even if the claims have not been discussed before and were filed in good time before the OPs. 2844 | 3398
T 991/07 – Too Bad You Weren't There
K’s Law – The ebook
This will in particular be the case if an examination of these substantive requirements is to be expected in the light of the prevailing legal and factual situation” (cf. T 1704/06[7.6]). In the present situation, the Board stresses that the appellant had to expect that the conformity of the amended claims with the requirements of A 84 would be examined (cf. also T 915/02 [3]). This decision has also been reported on Le blog du droit européen des brevets. If you wish to download the whole decision, please click here.
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T 832/08 – Trials And Tribulations
K’s Law – The ebook
T 832/08 – Trials And Tribulations 31 Jul 2010
[1.1] The [patent proprietor] has filed nine new auxiliary requests 1 to 9 and a document D48 after the summons for oral proceedings (OPs), in a letter dated February 11, 2010, i.e. about six weeks before the OPs, and thereby amended its case (Vorbringen) with respect to the statement of grounds of appeal. The admission of amendments of the case of an appellant after the filing of the statement of grounds of appeal is at the Board’s discretion. In particular, Article 13 RPBA provides: “Amendments sought to be made after OPs have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the OPs.” [1.2] Late filed document D48 contains comparative trials with respect of the subject-matter disclosed in document D28. However, neither the statements of grounds of appeal nor the response to the summons to OPs dated October 14, 2009 announced comparative trials. Thus the [opponents] had less than six weeks to assess these comparative trials in the light of all requests, including the new auxiliary requests 1 to 9 and possibly prepare comparative trials of their own. Therefore, the time left to these parties is much shorter than the period of four months that Article 12(1) RPBA imparts for filing a reply to the statement of grounds of appeal. It is irrelevant that some of the [opponents] […] had knowledge of document D48 at least since July 2009 from another case, as did the [patent proprietor], because the [patent proprietor] had not announced any comparative trials. Therefore, the [opponents] could not expect the filing of the document at so late a point in time. Moreover, the trials of document D48, even if known from another case, had to be assessed afresh in the light of the claims and arguments of the present proceedings. The Board is also of the opinion that when filing comparative trials it is necessary to give the other parties to the proceedings sufficient time lest the principle of equal treatment of the parties be infringed. As in the present case it would have been necessary to postpone the OPs in order to have sufficient time for analysing document D48, this document is not to be admitted under Article 13(3) RPBA. [1.3] Subsequent to the extensive replies by the opponents, the last of which was filed on January 23, 2009, the [patent proprietor] has filed nine new auxiliary requests only six weeks before the OPs. Only the introduction of document D48 into the proceedings was given as a reason for justifying the late filing of these requests. As document D48 is not admitted into the proceedings, the Board cannot accept this reason for the late filing of the new requests. […] Thus the auxiliary requests 1 to 9 are not admitted, pursuant Article 13(3) RPBA. The moral of the story: when you intend to file comparative trials before OPs, don’t forget to announce them as early as you can. To read the whole decision (in German), please click here.
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Interpretative Spotlight: “may”
K’s Law – The ebook
Interpretative Spotlight: “may” 31 Jul 2010
[2.6] Further, claim 1 has been amended by deleting the term “may” at two occurrences. The first deletion results in the amendment that water no longer “may exit” but “exits” the device. Since the original wording “may exit” has the meaning “optionally exits”, the deletion of the term “may” corresponds to the deletion of the term “optionally”, which is not to be objected to under A 123(2). The second deletion of the term “may” modifying the expression “no ultraviolet radiation may be transmitted” into the expression “no ultraviolet radiation is transmitted” does not alter the technical meaning, but clarifies the absence of any transmission. Therefore, these amendments to claim 1 are not to be objected to under A 123(2). If you wish to download the whole decision (T 1628/07), please click here.
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T 972/04 – Over The Top?
K’s Law – The ebook
T 972/04 – Over The Top? 30 Jul 2010
The application as filed contained the following claims: 1. A method for treating acute myelogenous leukemia in a human comprising administering to a human with acute myelogenous leukemia a therapeutically effective amount of arsenic trioxide. 2. A method for treating chronic myelogenous leukemia in a human comprising administering to a human with chronic myelogenous leukemia a therapeutically effective amount of arsenic trioxide. 3. A method for treating solid cancer in a human comprising administering to a human with a solid cancer a therapeutically effective amount of arsenic trioxide. 4. The method of claim 3 in which the solid cancer is cancer of the digestive tract, soft tissues, oesophagus, liver, stomach, colon, lung, skin, brain, bone, breast, or prostate gland. 5. A method for treating leukemia resistant to treatment with retinoids in a human comprising administering to a human in need thereof a therapeutically effective amount of arsenic trioxide or melarsoprol. 6. A method for treating leukemia, lymphoma, or solid tumors in a human, comprising administering to a human in need thereof a therapeutically effective amount of melarsoprol. 7. The method of claim 1, 2, 3, 4, or 5, wherein about 2.5 to 4.5 mg of arsenic trioxide is administered per day . 8. The method of claim 1, 2, 3, 4, or 5, wherein about 0.15 mg of arsenic trioxide per kg body weight of the human is administered per day. […] Claim 1 of the main request before the Examining Division read as follows: The use of arsenic trioxide for manufacturing a medicament for the treatment of acute myelogenous leukaemia by administering to a human a therapeutically effective amount of about 0.15 mg of arsenic trioxide per kg body weight of the human per day. This claim was rejected for lack of novelty. The applicant filed an appeal and presented a new main request claim 1 of which read: Arsenic trioxide for use in a method of treating acute myelogenous leukaemia in a human, wherein said treatment comprises administering about 0.15 mg of arsenic per kg per day to said human. The Board finds this claim unallowable under A 123(2), for the following reasons: Claims as originally filed as a source of original disclosure [3.1.1] Claims 1 to 5 as originally filed relate to four different diseases to be treated by means of arsenic trioxide since claims 2 to 5 after claim 1 do not concern particular embodiments of the subject-matter of claim 1 but independent alternatives having equal weights without any preference, namely − acute myelogenous leukaemia (claim 1) − chronic myelogenous leukaemia (claim 2) − solid cancer (claim 3) − leukaemia resistant to treatment with retinoids (claim 5). In addition, also claims 7 and 8 - both claims referring to claims 1,2,3,4, or 5 in unison - concern two independent alternatives, namely − administration of about 2.5 to 4.5 mg of arsenic trioxide per day (claim 7) and − administration of about 0.15 mg of arsenic trioxide per kg body weight of the human per day (claim 8). 2848 | 3398
T 972/04 – Over The Top?
K’s Law – The ebook
[3.1.2] Claim 1 of the main request essentially relates to − arsenic trioxide − for treating acute myelogenous leukaemia by way of − administering about 0.15 mg … per kg per day to said human. [3.1.3] Nothing in the wording of the claims as originally filed links the regimen “administering about 0.15 mg … per kg per day” (original claim 8) specifically to the disease “acute myelogenous leukaemia” (original claim 1). Accordingly, the teaching of claim 1 of the main request cannot be regarded as individualised in the set of claims as originally filed. The description as originally filed per se or in context with the claims as the source of the original disclosure [3.2.1] There is no teaching in the description as originally filed that “acute myelogenous leukaemia” was the preferred disease or the preferred leukaemia to be treated. [3.2.2] On page 20, lines 14 to 20 of the application as originally filed, the following statement can be found: “An exemplary course of treatment of a patient with leukemia, lymphoma, or solid cancer can involve daily administration by intravenous infusion of arsenic trioxide in an aqueous solution …. Preferably, about 0.15 mg arsenic trioxide per kg body weight per day is used.” This means at the utmost a clear and unambiguous disclosure that − either leukaemia − or lymphoma − or solid cancer is to be treated by way of a dose regimen of − 0.15 mg arsenic trioxide per kg body weight per day. But the teaching that this dose regimen is linked to “acute myelogenous leukaemia” is missing and cannot be derived from claim 1 as originally filed either because that claim itself only represents one of four alternatives without any preference. [3.2.3] Thus, there is no suggestion anywhere in the application as originally filed that the regimen “administering about 0.15 mg … per kg per day” relates specifically to the disease “acute myelogenous leukaemia”. As a consequence, the teaching of claim 1 of the main request is not individualised in the application as originally filed and represents an unallowable extension of its content (A 123(2)). In my opinion this decision went well “over the top.” The Board appears to suggest that by limiting the application to a combination of claims 1 and 8 as filed, the applicant has unduly singled out one of the treatments proposed in the application. I have some understanding for prohibiting singling out of alternatives within a claim, but to extend this prohibition to the application as a whole is simply “too much”. To download the whole decision, you may click here. NB: Laurent Teyssèdre was probably the first to report this decision; you can find his post here.
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T 788/06 – Double Agents Are Troublesome
K’s Law – The ebook
T 788/06 – Double Agents Are Troublesome 29 Jul 2010
Claim 1 of the main request read: A pharmaceutical composition in the form of a tablet, wherein said composition comprises, based on weight: (a) from 20 to 70% irbesartan or a pharmaceutically acceptable salt thereof, (b) from 1 to 70% diluent, (c) from 2 to 20% binder, (d) from 1 to 10% disintegrant, (e) from 0.1% to 5% antiadherent, (f) from 0.2 to 5% lubricant, (g) from 0.2 to 6% surfactant, wherein the surfactant is a poloxamer, wherein the tablet formed from said composition has a dissolution performance such that 80% or greater of the irbesartan or salt thereof contained in said tablet dissolves within 30 minutes.
[3.1] A 100(b) defines lack of the invention to be disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art as a ground for opposition. One of the provisions for the resulting requirements to be fulfilled is that the skilled person must be in a position to recognise whether or not the result of one of his reproductive experiments corresponds to the teaching of the patent in suit. [3.2] In the present case, claim 1 in all the requests seeks protection for a pharmaceutical composition as a product per se. The pharmaceutical composition is characterised by %ranges for the ingredients selected from at least five groups of substances: (b) diluents, (c) binders, (d) disintegrants, (e) antiadherents, (f) lubricants, The %ranges are essential technical features in the corresponding claims since they characterise the limits within which the sums of percentages of different ingredients (substances) selected from any of the groups must remain. In order to enable the skilled person to produce an embodiment as subject-matter covered by such a claim, the groups and the %ranges for them in the product as claimed must be defined unequivocally. [3.3] The groups from which the ingredients of a pharmaceutical composition are to be selected are characterised in terms of the functions that any ingredient should perform in the pharmaceutical composition and not in structural terms of chemical substances (main request and auxiliary request 1) or in structurally defined groups of substances with their function as additional remarks (auxiliary requests 2 and 3). [3.3.1] In the description of the patent, it is set out that a single compound may perform two or more functions […]. In particular, from claim 4 of the main request and auxiliary request 1 and claim 1 of auxiliary requests 2 and 3 follows that alginic acid, sodium alginate, carboxymethylcellulose sodium, starch and pregelatinized starch may be binder or disintegrant. Microcrystalline cellulose may be diluent or disintegrant. Talc may be antiadherent or lubricant. 2850 | 3398
T 788/06 – Double Agents Are Troublesome
K’s Law – The ebook
[3.3.2] If, under these circumstances, for instance, a pharmaceutical composition − contains binder in an amount at the upper limit claimed for binder (20%) and − the binder already contains starch − and now a certain amount of additional starch is added, there are two arbitrary ways of classifying this additional amount of starch: − as a disintegrant or − as further binder. Depending on the outcome of that choice, the pharmaceutical composition resulting from the addition of starch is or is not contained in the claimed subject-matter. If the additional starch is classified as a disintegrant and its percentage remains beneath the upper limit of the %range claimed for disintegrant materials, the pharmaceutical composition resulting from the addition must be regarded as subject-matter as claimed. If, however, the additional starch is classified as binder, the claimed range of binder is exceeded and the resultant pharmaceutical composition constitutes subject-matter which is beyond the limits of the claim. Thus, two totally different conclusions can be reached in answering the question whether the pharmaceutical composition is subject-matter as claimed or not, despite the material having the identical composition. These two conclusions, one being the complete opposite of the other, are simply the result of the fact that some of the ingredients of the pharmaceutical composition can be classified arbitrarily. [3.3.3] The same effect is to be observed when the amount of ingredients of the different groups is changed slightly compared with the example mentioned above; for instance, it is not at all necessary to start with binder in an amount exactly equal to the upper limit as claimed. This special case has only been taken above for convenience and ease of explanation of the facts and effects. [3.3.4] Thus, in quite a lot of cases, the skilled person trying to carry out the teaching of the claims, i.e. the claimed invention, does not know whether or not he will get a pharmaceutical composition as claimed, which amounts to the problem that he cannot carry out the teaching at all. [3.3.5] The question of starch belonging to both the binder and the disintegrant groups applies to all of the main request and auxiliary requests 1 to 3. The same problem arises with the other functionally defined groups of ingredients as defined above under point [3.3.1] of this decision. [3.4] To summarise, for the skilled person, with respect to the main request and auxiliary requests 1 to 3, there is no unequivocal definition in the patent in suit of the %ranges for binder and disintegrant, for diluent or disintegrant, or for antiadherent or lubricant in the pharmaceutical composition as claimed. Consequently, this feature leaves the actual subject-matter covered by the claim in doubt. Therefore, in the board’s judgement, claim 4 according to the main request and auxiliary request 1 and claim 1 of the auxiliary requests 2 and 3 fail to meet the requirement of sufficient disclosure imposed by the ground for opposition under A 100(b). […] [4] In addition, the further argument of the respondent cannot succeed: The skilled person may be able to recognise the primary function of an ingredient, but only in general terms when looking at a particular composition. A sound, clearly distinguishing correlation will not be possible for each and every percentage being claimed and for each and every environment as given by the percentages of the other ingredients. Moreover, even the wording “primary function” already indicates that there may be a doubt as to whether or not the secondary function would have to be taken into account or even if it would prevail in a particular case. Thus, the teaching with respect to the compositions as claimed supplies no clear and complete basis for carrying it out. If you wish to download the whole decision, just click here.
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T 765/07 – What Is Essential?
K’s Law – The ebook
T 765/07 – What Is Essential? 28 Jul 2010
The case law has elaborated the so-called “essentiality test”, also referred to as “is it essential?” test, for evaluating whether the deletion of a feature from a claim is allowable in view of A 123(2). According to T 331/87, the replacement or removal of a feature from a claim may not be in breach of A 123(2) if the skilled person would directly and unambiguously recognise that (1) the feature was not explained as essential in the disclosure, (2) it was not, as such, indispensable for the function of the invention in the light of the technical problem it served to solve, and (3) the replacement or removal required no real modification of other features to compensate for the change. [1.1] In accordance with A 76(1), “[a European divisional application] may be filed only in respect of subjectmatter which does not extend beyond the content of the earlier application as filed”. In the present case the earlier application is the parent application […]. The established criterion, analogous to A 123(2), is that the subject-matter of a divisional application must be directly and unambiguously derivable from the parent application. This is the criterion adopted by the board in the present case. [1.2] In the view of the board, the feature of claim 1 of the main request “wherein the spreading code generated by the spreading code generator is supplied to the delay circuit (319, 319’)” is not directly and unambiguously derivable from the parent application as filed. In accordance with this wording, the delay circuit could be placed anywhere on the output side of the generator, i.e. anywhere between the generator and antenna. The appellant argues that the claim wording is supported by claims 19 and 21 as well as the passage at column 9, lines 6-10 of the published parent application. However, in all these passages it is explicitly mentioned that the signal from the delay circuit 319 is output to the multiplier/modulator 320 (see also Fig. 3), without there being any suggestion that an alternative position of the delay might be contemplated. Hence, claim 1 includes matter not directly and unambiguously disclosed in parent application as filed, contrary to A 76(1). [1.3] In the oral proceedings the appellant argued that the skilled person would recognise that the location of the delay circuit between the code generator and the modulator was not an essential aspect of the invention and hence could be omitted from the claim in accordance with the “essentiality test” used in decision T 331/87. In the letter of reply to the summons to oral proceedings, it was also apparently argued (albeit in respect of a different claim wording), with reference inter alia to decision T 1067/97, that the delay circuit and the modulator/multiplier 320 have no close functional or structural relationship, and that therefore it was allowable that the modulator/multiplier 320 be omitted from claim 1. [1.4] However, as indicated above, the board considers that the correct criterion to apply is whether or not the claimed matter is directly and unambiguously derivable from the parent application as filed. As stated above, there is no basis in the parent application for any other position of the delay circuit. Moreover, with regard to the appellant’s arguments, the board is not convinced that the location of the delay circuit between the code generator and the modulator should not be regarded as “essential”, as other locations of the delay circuit would have plausibly undesirable consequences such as adding delay to the data signal input to the modulator. Hence, the “essentiality test” is not applicable in the present case. Furthermore, in the board’s view the case law exemplified by T 1067/97 does not apply to the present application since the code generator, the delay circuit, and the modulator clearly interact closely to provide a spread spectrum signal with the correct phase. They therefore have a close functional and structural relationship. Hence, the board finds the appellant’s arguments unconvincing. [1.5] The board therefore concludes that claim 1 of the main request does not comply with A 76(1). This case deals with rather complex subject-matter and it may well be that the Board was right in rejecting the deletion of the feature under consideration. However, I am not convinced that the argument used by the Board is satisfying. If I understand the Board correctly, it says that the feature should be considered as essential because its deletion would have undesirable consequences. I am not sure that this is what essentiality is about. I would 2852 | 3398
T 765/07 – What Is Essential?
K’s Law – The ebook
think that a feature is essential if it is necessary for the solution of the objective technical problem. If the problem is still solved after deletion of the feature, even if other drawbacks appear, I would believe the feature not to be essential. Perhaps the Board considered condition (3) of T 331/87 and thought that the replacement or removal required a real modification of other features to compensate for the change in order to get rid of the above mentioned undesirable consequences? If so, I think the Board went beyond what T 331/87 had in mind: condition (3) stems from T 260/85 where the compensation clearly is related to solving the objective technical problem. If you wish to read the whole decision, you may click here NB:
To
read
another
post
dedicated
to
the
essentiality
test,
just
click
here.
p.s.: I will be abroad for some time, without any certainty concerning Internet access. Therefore, I have to activate comment moderation. Sorry for the inconvenience.
2853 | 3398
T 1764/06 – Is It There?
K’s Law – The ebook
T 1764/06 – Is It There? 27 Jul 2010
Sometimes patent drafters - by choice or for necessity - resort to drafting claims containing somewhat exotic parameter features that are not known in the prior art. As a result, the Office is in a difficult position when it comes to assessing novelty and inventive step. Will the Office give the benefit of the doubt to the applicant? Not necessarily, as the present decision shows. The application was refused by the Examining Division for lack of novelty. Claim 1 of the main request before the Board was amended with respect to the claims as filed, in particular by addition of a feature related to an index X: 1. A photocatalyst comprising a titanium oxide and a metal-containing compound other than titanium oxide on the surface of the titanium oxide, wherein the metal-containing compound is a metal oxide having an acid site, the photocatalyst has a BET specific surface area of 55 m2/g or larger, and the photocatalyst has an index X calculated by equation (I): X=B/A (I) of 0.2 or more, wherein A represents an integrated value of absorbance within a wavelength range of from 220 nm to 800 nm along an ultraviolet-visible diffuse reflection spectrum of the photocatalyst, and B represents an integrated value of absorbance within a wavelength range of from 400 nm to 800 nm along the ultraviolet-visible diffuse reflection spectrum. Here is what the Board had to say: [2.2.8] It follows from the above that D1 discloses a photocatalyst prepared according to a method as defined in claims 4 and 8 of the Main Request and comprising all the features of Claims 1 to 3 of the Main Request (supra) but the Index X. [2.3] According to Claim 1, the photocatalyst has an index X of 0.2 or more, calculated by equation X = B/A (I), wherein A represents an integrated value of absorbance within a wavelength range of from 220 nm to 800 nm along an ultraviolet-visible diffuse reflection spectrum of the photocatalyst, and B represents an integrated value of absorbance within a wavelength range of from 400 nm to 800 nm along the ultravioletvisible diffuse reflection spectrum. Hence, the claimed photocatalyst also has a performance related characteristic expressed by a parameter feature. [2.4] In their letter dated 23 March 2006 […], the applicants offered the following interpretation of Index X: “A” represented the amount of absorption of a broad wavelength range of light, including both the ultraviolet and the visible region; “B” represented the amount of absorption in the visible region of light; “Index X”, which was 2854 | 3398
T 1764/06 – Is It There?
K’s Law – The ebook
equal to “B/A”, therefore showed the proportion of ultraviolet-visible light that was absorbed in the visible region; the larger the Index X, the larger the proportion of light that was absorbed within the visible region; Index X thus related to the strength of the colour of the titanium oxide; when the titanium oxide was white Index X was about 0.1; the claimed photocatalyst had an Index X of more than 0.2, i.e. it absorbed enough light within the visible region and was not white. [2.5] The Board notes that: (a) None of the documents cited in the proceedings as representing the prior art ever mentions such an Index X. Not even D5 (Masakazu Anpo, “Photocatalysis on titanium oxide catalysts, Approaches in achieving highly efficient reactions and realizing the use of visible light”, Catalysis Surveys from Japan, 1(1997), pages 169-179), which concerns the use of visible light in the photocatalysis on titanium oxide catalysts, ever mentions Index X. (b) No evidence whatsoever that “Index X” was common general knowledge in the field of photo-catalysis or had already been disclosed or used has ever been offered either. (c) D7, alleged to represent the history of the development of visible light photo-catalysis, does not mention either any Index X. (d) The characterization of the photocatalysts disclosed by D1 does not include the assessment of the colour. Nor does D2 or D6. [2.6] Hence, the only expressed distinction between the definition of the claimed photocatalyst and the photocatalyst of D1 relies on a parameter feature that is not usual, let alone common, for the skilled person. [2.7] Furthermore, if the significance of Index X given by the applicants were retained, i.e. that it is related to the strength of the colour of the titanium oxide, nothing of this would be found in the application as filed. Instead, from D1 […], it is learnt that an excess of iron, as in samples having more than 3% mol of iron, a fortiori the sample having 5% mol, produces, on the catalyst, surface layers and/or islands of inactive amorphous and/or crystalline material such as hematite. Hematite is generally known to be coloured, which fact must have an impact on the colour of the titanium oxide catalyst and on its capacity of absorbing visible light. [2.8] Also, the method of preparation of the samples illustrated in D1 is as defined in Claims 4 and 8 of the Main Request, and as described in the paragraph bridging pages 4 and 5 of the application as filed. In particular, in D1, ammonia is added dropwise, hence until completion of the reaction. As regards the loading, the examples of the present application illustrate 3% mol of metal. Concerning Index X, the present application shows that also the comparative samples obtained by impregnation of commercially available titanium oxide (which have not been shown to have been produced by the alleged excess of ammonia) attain an Index of as high as 0.2 (Comparative Example 2), with a loading of 3% mol. Hence, no proven distinction appears to result from the method of preparation either, let alone from the alleged excess of ammonia, which further is not a feature required by any of the claims. [2.9] Summing up, the applicants have not provided any items of evidence showing that the samples of D1, e.g. those having a high iron content, do not attain an Index X as required. However, the onus of the proof in that respect lay on them, and no proven distinction has ever been shown. [2.10] Therefore, in these circumstances, the presumption that the claimed catalyst is not novel (as detailed throughout the examination and appeal proceedings), having regard to e.g. D1, has not been displaced by evidence. 2.11 Consequently, the condition required by A 52 (... provided that they are new ...) is not fulfilled by the catalysts defined in Claim 1, and a European patent cannot be granted on the Main Request. [2.12] As regards the invoked “benefit of doubt”, to be accorded to the applicants in complex situations without direct disclosure, the position of the Board is as follows: in a situation where the applicants have used an unusual parameter feature to define their product, which unusual parameter feature represents the only distinction over otherwise identical known products, and the applicants have decided not to provide evidence that the parameter feature as such represents a difference of the claimed products from the known products, no benefit of doubt can be accorded. A 52 requires that the invention (here, the claimed photocatalyst) be novel. [2.13] The above objections extend to the subject-matter defined in Claims 2 and 3 as well as to the method of preparation as defined in Claims 4 and 8. 2855 | 3398
T 1764/06 – Is It There?
K’s Law – The ebook
[2.14] Therefore, the Main Request is not acceptable. If you wish to download the whole decision, please click here. To read a previous post on a similar decision, click here.
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T 1482/09 – Shootin’ From The Hip
K’s Law – The ebook
T 1482/09 – Shootin’ From The Hip 26 Jul 2010
The present decision is a useful reminder that Board of appeal decisions can be very quick, in particular in ex parte proceedings where no oral proceedings (OPs) have been requested. [1.1] The examining division (ED) in its decision explained why in its opinion the subject-matter of claim 1 lacks an inventive step. [1.2] In its grounds of appeal the appellant explained why it disagreed with that decision. The appellant did not file any new request. It is therefore the task of the Board to decide whether it is convinced by the arguments of the appellant that the decision was wrong. [1.3] In accordance with Article 12(1)(a) Rules of Procedure of the Boards of Appeal (RPBA) the appeal proceedings is based on the notice of appeal and the grounds of appeal. Paragraphs (b) and (c) of that article do not apply in the present case as there is only one party and the Board has not issued a communication. [1.4] In accordance with Article 12(3) RPBA the Board may decide the case in proceedings with only one party at any time after the statement of grounds has been filed, subject to A 113 and A 116. No request for OPs under A 116 has been made by the appellant. With regard to A 113 the present decision is based on the set of claims filed by the appellant with letter of 19 June 2008 during the first appeal proceedings. The impugned decision of the ED was also based on this set of claims. No amendments have been filed in the present appeal proceedings and the appellant expressly requested in its notice of appeal dated 29 June 2009 that a patent be granted on the basis of this set of claims. The present decision is also based on grounds and evidence on which the appellant has had a chance to comment. No new documents or grounds have been cited during the present appeal proceedings and only the reasoning of the examining division and the appellant have been considered, as will become apparent below. [1.5] The Board concludes therefore that it may take the present decision without recourse to a preceding communication to the appellant. As the claims on file were found to lack an inventive step, the appeal was finally dismissed. Overall duration of the appeal proceedings: less than 11 months. Of course, if the appellant had requested OPs in its notice of appeal, the Board would have been obliged to grant this request, which would have given the appellant one last opportunity to persuade the Board. To read the whole decision, you may click here.
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T 1791/08 – Complete Search Presumed
K’s Law – The ebook
T 1791/08 – Complete Search Presumed 26 Jul 2010
[1] As apparent from the minutes of the oral proceedings, after the discussion on the inventive step of the first embodiment of claim 1 (polystyrene) had taken place and the board had signalled a positive finding, the [opponent] requested that the request not be admitted into the proceedings, insofar the method of claim 1 involved the use of a container made or coated with polyethylene terephthalate, the reason put forward for this procedural request being that said embodiment had not been specifically searched. [2] Indeed a claim directed specifically to such an embodiment had never been submitted until the main request was filed on 11 February 2010. Nevertheless, claim 1 as filed, on the basis of which the search was carried out, with the general expression “a material inhibiting the activation of a substance degrading the peptides”, when read in the light of the description […], included inter alia polyethylene terephthalate as one of the preferred materials. Thus, it can be reasonably presumed that the search was complete. To read the whole decision, please click here.
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T 1349/08 – No Partying Here
K’s Law – The ebook
T 1349/08 – No Partying Here 24 Jul 2010
The recent referral to the Enlarged Board of appeal (EBA) pending as G 1/10 has drawn some attention to the difficulties that may arise when the Examining Division (ED) acts under R 140 during opposition proceedings. The present decision is an interesting complement because it shows an opponent desperately trying to reverse a decision of the ED taken during the opposition period. The decision to grant the opposed patent was published in the Bulletin on March 20, 2002. A decision to correct the decision to grant under R 89 EPC 1973 was taken on July 5, 2002. The decision to correct was not published in the Register. The patent was then opposed on December 20, 2002. In a letter to the ED, the opponent requested that the original decision to grant the patent be reinstated. The ED issued a ‘decision’ dated May 20, 2008, holding that the opponent, not being a party to the examining proceedings, was not entitled to request reinstatement of the first decision to grant. The present appeal is directed against this decision. Party status of [the opponent] [2.1] The ED, in a decision dated 5 July 2002, corrected the decision to grant a European patent issued on 7 February 2002 pursuant to R 89 EPC 1973. On a request of the [opponent], the ED, in a “decision” dated 20 May 2008, decided that the [opponent] was not a party to examination proceedings and was thus not entitled to request reinstatement of the original decision to grant and all its requests were thus rejected as inadmissible. [2.2] The object underlying this dispute is the request of the [opponent] to the ED to cancel its decision to correct the decision to grant and to reinstate its original decision to grant. Thus the present dispute lies within the framework of examination proceedings, the [opponent’s] request being directed to the ED and the “decision” under appeal dated 20 May 2008 being issued by the ED. The question arises, whether the [opponent], being neither the applicant nor the patentee, could nevertheless become a party to the examination proceedings. [2.3] The correction of the decision to grant a European patent as well as the decision refusing the [opponent’s] request to withdraw said decision to correct and to reinstate the original decision to grant underlying the present dispute belongs to the examination proceedings pertaining to said European patent and have been taken by the competent ED. Examination proceedings are ex parte proceedings between the EPO and the applicant/patentee (see A 60(3) and A 94(3)). Analogous to A 115, which stipulates that a person submitting observations concerning the patentability of an invention shall not be party to the proceedings before the EPO, a person contesting the allowability of a correction of a decision to grant a European patent under R 140 EPC 2000 and requesting reinstatement of the original decision to grant, cannot thereby become a party to the proceedings. The [opponent], being neither the applicant nor the patentee, thus cannot be party to the examination proceedings. Therefore the [opponent], not being party to the examination proceedings, has no party status in the present examination proceedings. This was the conclusion of the ED in its “decision” of 20 May 2008 and the Board shares this view. Consequently, irrespective of whether or not the [opponent] is adversely affected by said “decision”, it cannot acquire the quality of party status to the examination proceedings. [2.4] Therefore, the appeal is to be dismissed. [2.5] For the following reasons, the Board is not convinced by the [opponent’s] submissions as to why it should indeed be regarded as a party to the examination proceedings. [2.5.1] The [opponent] submitted that it was at least a party to the opposition proceedings concerning the patent in suit, that these opposition proceedings were affected by the “decision” of the ED dated 20 May 2008 not to reinstate the decision to grant dated 7 February 2002, and the [opponent] was adversely affected thereby in these opposition proceedings. However, the party status of an opponent in opposition proceedings cannot be transferred to examination proceedings, opposition proceedings and examination proceedings being separate proceedings (see T 198/88 [2.1]). Whether the opposition proceedings are affected or not by a decision issued in the course of examination proceedings is irrelevant to the matter of whether the [opponent], who is opponent in opposition proceedings, may acquire party status in the examination proceedings in view of the separate nature of these proceedings. The submission that the [opponent] might be adversely affected by the “decision” of the ED dated 20 May 2008 may give the [opponent] an interest to act, but is irrelevant to the legal question of party 2859 | 3398
T 1349/08 – No Partying Here
K’s Law – The ebook
status, an interest to act not in itself conferring party status in proceedings to which the [opponent] was not a party. [2.5.2] The [opponent] further argued that in the particular circumstances of this case it was indeed party to the examination proceedings because the Opposition Division (OD), by virtue of its decision of 17 September 2004 cancelling the date for oral proceedings already fixed and indicating that a new date would be fixed after the requested decision of the ED had become final, had thereby recognised that the ED should address the [opponent’s] request for an appealable decision by the ED regarding the decision to correct the decision to grant dated 5 July 2002, the [opponent] hereby acquiring party status. However, irrespective of whether or not the communication of the OD dated 17 September 2004 bore all the characteristics necessary for qualifying as a decision and, thus, could in fact constitute a decision, and whether or not the OD indeed had the power to refer the case back to the ED, examination proceedings are ex parte proceedings (see point [2.3] above) which are separate from opposition proceedings (see point [2.5.1] above) which by nature are inter partes proceedings. As such, no action of the OD could confer party status to an opponent in examination proceedings on the same case, it indeed being questionable whether or not opposition and examination proceedings may coexist for the same application/patent. [2.5.3] The [opponent] further submitted that correction of a decision to grant a European patent did not form part of the examination proceedings but was an isolated procedural measure, citing J 27/96 [3.2] in this respect, thus the [opponent] was entitled to be party to this isolated procedural measure. However, decision J 27/96 is concerned with R 88 EPC 1973 (R 139 EPC 2000), which applies to corrections of errors in documents filed before the EPO, whereas the [opponent] is objecting to a decision concerning a correction under R 140 EPC 2000 (R 89 EPC 1973), which applies to decisions of deciding bodies of the EPO. In any case, the [opponent] cannot be party to an isolated procedural measure, but only to proceedings as a whole, the decision J 27/96 merely stating that the applicant which requested a correction of a mistake in documents was not thereby reinstated in a particular procedural phase which would thereby have made said whole procedural phase available to him again. Thus, the decision J 27/96 is not relevant to the present case, the correction of a decision to grant a European patent being within the scope of examination proceedings. [2.5.4] The [opponent] cited A 125, stating that if the EPO were to take into account the principles of procedural law generally recognised in the Contracting States, the [opponent] would become a party to the examination proceedings. However, the Board notes that A 125 provides for taking such principles into account only in the absence of procedural provisions in the EPC. This Article thus does not refer to the absence of a procedure but only to the absence of procedural provisions. Since there is no procedure in the EPC for creating party status for a third party in examination proceedings, indeed on the contrary, it is specifically provided for in A 115 that a third party shall not be party to the proceedings before the EPO (see point [2.3] above), there can be no absence of procedural provisions. In any case, the [opponent] did not substantiate its argument and did not provide corroborating evidence that in the majority of, or in any particular Contracting States, there existed some modus for creating party status for a third party in examination proceedings on patent applications. Thus regardless of whether procedural provisions are absent in the EPC, the absence of such provisions being a prerequisite for the application of A 125, the Board concludes that in the absence of any evidence of relevant procedural principles from the Contracting States, said Article cannot serve as a basis for creating a special legal remedy making it possible for a third party to attain party status in examination proceedings (see G 1/97 [3]). [2.5.5] The [opponent] submitted that its legitimate expectations had not been protected, the published text of the patent it had opposed, namely European patent No. 952 132, having been amended post-grant in an unallowable manner, the [opponent] being adversely affected thereby as it was now prevented from challenging the postgrant amendment in opposition proceedings under A 123(3). However, any legitimate expectations the [opponent] may have resulting from the publication of the decision to grant of European patent No. 952 132 may be relevant only to the opposition proceedings pending on this case (see point [5.3] below) to which the [opponent] would appear to be a party, namely in its quality as opponent. Regardless of whether or not the [opponent] has any legitimate expectations in the examination proceedings, legitimate expectations are not in themselves a ground for generating party status to the present examination proceedings, just as they would not be for any other member of the public, which may also have legitimate expectations in examination proceedings. [3] Since the [opponent] has no party status in these examination proceedings, the appeal is not allowable, party status being a prerequisite for the Board to allow any of the [opponent’s] main, first and second auxiliary requests. Referral to the EBA
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T 1349/08 – No Partying Here
K’s Law – The ebook
[4.1] According to A 112(1)(a), a referral to the EBA is only admissible if a decision is required in order to ensure uniform application of the law or if an important point of law arises. The answer to the referred question should not be merely of theoretical or general interest, but has to be decisive, i.e. essential, to reach a decision on the appeal in question (see, for example, G 3/98 [1.2.3]). [4.2] The question put forward by the [opponent] concerns the issue of whether an opponent could be an adversely affected party to proceedings relating to correction of a decision to grant under R 140 EPC 2000 (or R 89 EPC 1973). Since, however, the decision for correction itself dated 5 July 2002 is not the decision under appeal in the present proceedings, but rather the “decision” of 20 May 2008 concerning the reinstatement of the original decision to grant, the answer to the proposed question cannot be decisive in the present case. [4.3] The issue addressed in the proposed question thus being merely of theoretical nature, any answer of the EBA to that question is irrelevant for deciding on the present appeal, and hence the request for referral of the question must be refused. [5] The following comments of the Board do not form part of the ratio decidendi of this decision. However, in view of the unusual nature of this case, inter alia the following points may need attention when the opposition proceedings pending on this case resume. [5.1] Under A 99(1) and A 101(1), the OD shall examine whether or not at least one ground for opposition prejudices the maintenance of the European patent. Thus the OD should identify the subject-matter of the patent which forms the basis of the opposition proceedings in order to determine the object of the legal dispute, this being the competence and duty of every deciding body. [5.2] Thus it appears that the subject-matter of the opposed patent should be determined. This is usually the subject-matter as defined in the published granted patent. If, as in the present case, an amendment has been carried out after mention of grant of the European patent in the Bulletin, then the deciding body, in this case the OD, may need to decide whether or not this amendment may further define the subject-matter of the opposed patent to be decided upon in opposition proceedings under A 101. [5.3] When deciding on whether the amendment should be taken into account, the OD may need to consider whether or not the amendment carried out after publication of the decision to grant in the Bulletin (see A 97(4)) has any effect, particularly in view of any “cut-off” effect of said publication (see T 777/97 [3, last paragraph] and J 42/92 [5,6]) due to the jurisdiction passing to the Contracting States from this date (see A 64(1)). The question thus may arise whether or not the ED had the competence to act after this date due to an exhaustion of its competence ratione materiae as well as ratione legis. Furthermore, the interests of the public in respect of legal certainty may also have to be taken into account (see G 1/97 [3(c)] and T 713/02 [2.2.6]), the date of publication of the decision to grant in the Bulletin being the starting date for the nine month period in which opposition may be filed (A 99(1)). [5.4] If an amendment has been allegedly carried out under R 140 EPC 2000, the OD may need to determine whether or not said amendment was in fact a genuine correction under R 140 (see T 1093/05 [7] and T 850/95 [headnote I]). The OD may indeed not have the right to verify the substance of a correction under R 140 (see T 79/07 [3 to 23]), but, in view of the discretionary nature of the decision to correct, it may have the competence and duty to verify whether the proper criteria were applied in determining whether the correction made did indeed qualify as a correction pursuant to R 140, or whether the use of R 140 as a legal basis was unjustified, e.g. the ED, under R 140, had in fact reopened examination proceedings. To download the whole decision, you may click here.
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T 232/08 – Too Late
K’s Law – The ebook
T 232/08 – Too Late 23 Jul 2010
If, when preparing oral proceedings (OPs) in an opposition appeal case, you realize that a document you used in an inventive step argument (but which you did not use in your - first instance - novelty attacks) is in fact destructive of novelty, are there any chances of having the novelty argument examined in the OPs? Well, it always depends on the Board, but chances are not good, as illustrated by the present decision. [2] In accordance with Article 12(2) of the Rules of Procedure of the Boards of appeal (RPBA) “the statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld and should specify expressly all the facts, arguments and evidence relied on”. [3] Article 13(1) RPBA leaves it to the discretion of the board to admit amendments to a party’s case after it has filed its grounds of appeal or reply. Aspects to be looked at when exercising the discretion are according to Article 13(1) RPBA inter alia the complexity of the new subject-matter, the current state of the proceedings and the need for procedural economy. [4] However, a stricter criterion is applied to amendments sought to be made after OPs have been arranged. According to Article 13(3) RPBA these amendments “shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the OPs.” Thus, the parties’ right to be heard and/or procedural economy take precedence over other considerations. [5] The objection of lack of novelty based on document D11 was raised for the first time during the whole opposition and appeal proceedings at the OPs before the board. [6] Although lack of novelty was mentioned as a ground of opposition and was dealt with in the decision under appeal, it was not relied on at all in the statement of the grounds of appeal. Furthermore, document D11 was only introduced during the appeal proceedings and then only in the context of inventive step and even then only as evidence of common general knowledge of particle size […]. Thus, in the board’s view, the [patent proprietor] had every reason to believe that novelty was no longer pursued as a ground of opposition in the appeal and that document D11 formed only a limited part of the [opponent’s] case on inventive step. [7] Moreover, in the board’s view the disclosure in document D11 of possibly novelty-destroying subject-matter is not particularly striking. This view is supported by certain of the [opponent’s] submissions: although the summary of the teaching in document D11 submitted with the statement of the grounds of appeal […] mentions hyaluronic acid, spray-drying and a particle size range falling under the one mentioned in claim 1, the document is only cited in the context of inventive step. Further, the [opponent] conceded at the OPs that the noveltydestroying character of the disclosure in document D11 only occurred to it during preparation for OPs. Therefore, in the board’s view, it cannot be expected that the [patent proprietor] would have foreseen the objection of lack of novelty on the basis of document D11 itself. [8] In all the circumstances of the present case, the board considers that the [patent proprietor’s] right to be heard with regard to the novelty-objection based on document D11 would have been respected only if the OPs had been adjourned or the case had been remitted to the department of first instance in order to allow the [patent proprietor] adequate consideration of the [opponent’s] objection. Consequently, applying Article 13(3) RPBA, the board has decided not to allow the [opponent] to present its novelty objection based on document D11. If you wish to download the whole decision, please click here.
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T 1560/05 – The Skilled Person Reads Magazines
K’s Law – The ebook
T 1560/05 – The Skilled Person Reads Magazines 23 Jul 2010
In the present case, the patent proprietor, whose patent had been revoked by the Opposition Division, argued that there was no technical teaching in document E3, a review article published in a professional magazine (“Funkschau”). Citing decision T 172/03, the proprietor asserted that E3 could not be used as a starting point for assessing inventive step. In T 172/03 the patent proprietor complained that the Examining Division had rejected its application based on some fictitious prior art. The Board came to the following conclusion: … It can hardly be assumed that the EPC envisaged the notional person skilled in the (technological) art to take notice of everything, in all fields of human culture and regardless of its informational character. A consistent construction of the patentability provisions requires the term “everything” in A 54(2) to be understood as concerning such kind of information which is relevant to some field of technology. From these considerations it follows that anything which is not related to any technological field or field from which, because of its informational character, a skilled person would expect to derive any technically relevant information, does not belong to the state of the art to be considered in the context of A 54 and A 56, even if it had been made available to the general public before the relevant priority date. However, in the present case, the Board does not find T 172/03 to be applicable: [3.3] E3 reviews cable television networks in the USA before the priority date. In the board’s view, the skilled person would derive technically relevant information from such a review, such as information on the different kinds of television programs transmitted in the USA and on the (interactive) services offered for subscription or purchase using, for instance, a back channel. Thus the circumstances differ from those referred to in case T 172/03 [10]. Consequently the board does not accept the appellant’s argument that there is no technical teaching in E3. In the judgement of the board E3 is comprised in the state of the art as defined in A 54(2). To read the whole decision, please click here.
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T 714/08 – Harsh As Harsh Can Be
K’s Law – The ebook
T 714/08 – Harsh As Harsh Can Be 22 Jul 2010
This is another example for the very severe application of A 123(2) by the Boards. Claim 1 as granted was directed at a hair dyeing composition comprising at least one first oxidation base chosen from two compounds and their salts, at least one coupler chosen among some particular derivatives having a generic formula (I) and at least one second oxidation base chosen among some particular derivatives having a generic formula (II). Claim 3 as granted gave a list of twelve derivatives of formula (I). The opposition division revoked the patent for lack of inventive step. The main request filed before the Board corresponds to a combination of claims 1 and 3 and the deletion of one of the alternatives for the first oxidation base. The figure (click to enlarge) gives a comparison of claim 1 of the main request and a combination of claims 1 and 3 as granted:
** Translation from the French ** [3.1] Claim 1 of the main request has been amended by limiting the first oxidation base to paraphenylenediamine and its salts and the list of couplers to 12 specific individual compounds and their salts.
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T 714/08 – Harsh As Harsh Can Be
K’s Law – The ebook
[3.2] When assessing whether an amendment complies with the requirements of A 123(2) it is necessary to establish whether it introduces technical information which the skilled person would not have deduced directly from the patent application as filed (see T 288/92 [3.1] and T 680/93 [2]) It is undisputed that the application as filed cites (prévoit) para-phenylenediamine among others as first oxidation base and the twelve individual compounds listed in claim 1 as amended (see claims 1 and 3 of the application as filed) among others as couplers. However, by limiting the first oxidation base to para-phenylenediamine and its salts alone and the couplers to twelve specific individual compounds and their salts, claim 1 as amended individualises twelve base-coupler combinations, for instance the combination of para-phenylenediamine and 2,4-diamino-1-ethoxybenzene or [the combination] of para-phenylenediamine and 2 amino-1-(β-hydroxyethyloxy)-4-methylaminobenzene. However, these specific couples are not disclosed in the application as filed which provides that the composition comprises at least one first oxidation base chosen from para-phenylenediamine and 2-methyl-para-phenylenediamine (claim 1) but does not define which particular base is combined with which particular coupler. Thus the specific combination of para-phenylenediamine with each of the twelve couplers of claim 1 as amended cannot be deduced directly and unambiguously from the patent application as filed. [3.4] According to the [patent proprietor] para-phenylenediamine is already individualised as preferential first oxidation base in the patent application as filed on page 14, lines 8 to 11. Therefore, its combination with each of the twelve specific couplers as required by claim 1 as amended was already foreseen in the application as filed. Thus claim 1 as amended did not extend the subject-matter of the patent beyond the content of the application as filed. However, the passage on page 14 to which the [patent proprietor] refers is limited exclusively to the particular example 6 which associates para-phenylenediamine and 2,4 diamino1 (β hydroxyethyloxy)benzene dihydrochloride and thus cannot be interpreted as a general teaching limiting the first oxidation base to paraphenylenediamine and associating it with each of the twelve specific couplers according to claim 1 as amended. Therefore, this argument has to be dismissed. Moreover, the case differs from the cases where limitations have been carried out in chemical formulas of the Markush type as in decisions T 615/95 and T 50/70. As a matter of fact, in those cases the limitation does not result from the individualisation of particular combinations as in the present case, but conserve the generic nature of the chemical formula defining the claimed products (T 615/95 [6] and T 50/70 [2.1, 3rd paragraph]). [3.5] Consequently, the amendment of claim 1 according to the main request extends the subject-matter of the patent beyond the content of the application as filed and, therefore, does not comply with the requirements of A 123(2). As a consequence, the request has to be dismissed. I guess many of us will have to change their drafting techniques in view of this severe application of A 123(2). I plan to deal with this question after we have seen some more recent A 123(2) decisions. If interested in Markush claims, you might also have a look at another recent post. To read the whole decision (in French), you may click here.
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T 847/07 – Try And See?
K’s Law – The ebook
T 847/07 – Try And See? 22 Jul 2010
Claim 1 of the patent as granted (and of the main request) read as follows: 1. A pharmaceutical formulation suitable for subcutaneous, intramuscular or intradermal administration, comprising highly purified recombinant coagulation factor VIII in a concentration of at least 1000 IU/ml. The claim having been found to lack novelty, an amended claim 1 was filed during oral proceedings before the Board: 1. A pharmaceutical formulation which has a volume of 0.1 to 2 ml and is suitable for subcutaneous, intramuscular or intradermal administration, comprising highly purified recombinant coagulation factor VIII in a concentration of at least 1000 IU/ml. This amendment provided novelty over prior art disclosing an intravenous administration of the coagulation factor. The following is an extract from the discussion of inventive step: [68] The board has considered whether or not the skilled person faced with the disclosure in document D8 would be in a “try and see” situation. The board in decision T 1599/06 [20.2] comes to the conclusion that the “try and see” approach has been applied in the assessment of inventive step in situations where, in view of the prior art, the skilled person had clearly envisaged a group of compounds or a compound and then could determine by routine tests whether or not such compound(s) had the desired effect. [69] It follows however from the observations above that highly purified factor VIII had not been identified as a candidate for an administration route other than the intravenous one, i.e. it was never envisaged for injection volumes in the range of 0.1 to 2 ml. Consequently, applying the rationale of the decisions which have used the “try and see” approach as summarised by the board in decision T 1599/06, the board concludes that in the present case the skilled person is not in a “try and see” situation in the light of the disclosure in document D8. [70] Finally, in the board’s view, it is questionable whether the skilled person would adopt a “try and see” attitude at all in cases such as the present one where extensive in vivo animal and ultimately human testing would be necessary in order to determine whether or not a compound has a certain property. To read the whole decision, please click here.
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T 800/08 – Follow The Guide
K’s Law – The ebook
T 800/08 – Follow The Guide 21 Jul 2010
It has been decided that an Examining Division (ED) does not commit a substantial procedural violation when it fails to follow the Guidelines, unless it also violates a rule or principle of procedure governed by the EPC or one of the implementing regulations (T 42/84 [9]; T 647/93 [4.1]): the failure of a department of the EPO to follow a procedure set out in the Guidelines does not qualify as a substantial procedural violation as the Guidelines are not legally binding (J 24/96 [4]). But what if the ED does follow the Guidelines and ignores a clear decision of a Board of appeal? [2.1] The applicant argues that since the omitted feature - the struts - is clearly presented as optional in the previous applications, the three conditions set out in T 331/87 should not be applied to the present case and that therefore, obviously, this feature could be removed from the claim without contravening the requirements of A 76(1). Both the parent […] and the grandparent application […] specify that one of the objects of the invention is to provide panels “which may have struts”. This wording clearly indicates that the presence of the struts is not compulsory and hence optional. Therefore, the removal of this feature from the independent claim is not subject to the conditions set out in T 331/87. It follows that since the removed feature was described as being optional in both the parent and the grandparent applications, it can be taken away from the independent claim of the divisional application without extending its subject-matter beyond the content of either of the previous applications as filed and hence without contravening the requirements of A 76(1). Even if a specific strength of the panel has to be maintained while optimising the quantity of foam to be used […], this object is not necessarily to be associated with the presence of struts but can be achieved by other means fully compatible with the invention as claimed. Refund of appeal fee [3] According to R 103(1)(a), the appeal fee shall be reimbursed where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation. In the present case the appellant argued that the ED committed a substantial procedural violation since it refused to take into consideration decision T 331/87. However, the ED is not bound by any decision of the Technical Boards of Appeal apart from the one concerning the specific case under appeal (see A 111(2)). Since EDs have to follow the instructions of the Guidelines, they were correct in using the conditions as set out therein. Therefore, since this conduct does not imply any procedural violation, there is no reason to refund the appeal fee. To download the whole decision, please click here.
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T 893/07 – Remittal? No Way
K’s Law – The ebook
T 893/07 – Remittal? No Way 21 Jul 2010
[3.1] The appellant’s representative reminded the Board that the summons to attend oral proceedings (OPs) before the examining division (ED) had been issued after a single communication of the ED and that, as a consequence, the appellant/applicant had had only limited opportunities to defend his case before the first instance department. She further emphasized that the current request remedied all objections relied upon by the ED in its refusal and that the jurisprudence of the boards of appeal implied, in such situations, that the case be remitted back to the ED in order to ensure that the applicant had the benefit of two instances. In support of this view, reference was made inter alia to decisions of the boards of appeal T 180/95, T 47/90 and T 139/87. Finally, the appellant stressed that the document reflecting the closest prior art had been introduced ex officio by the Board of appeal for the first time into the proceedings in the annex to the summons to attend OPs before the Board. In conclusion, the appellant’s representative held that the balance between conflicting principles such as, on the one hand, the right of the appellant to be heard and, on the other hand, the right of the public to have a fair knowledge of the rights resulting from a patent application within a reasonable period of time was on the side of the appellant. [3.2] The argument based on the fact that the ED issued just one communication before it summoned to OPs and thus deprived the applicant from further opportunities to defend its case is not convincing. Apart from the fact that the course of action followed by the ED is in line with common examination proceedings, it is noted that the applicant even did not seize the opportunity to defend its position before the ED and withdrew its request for OPs one month before they took place. As a consequence, OPs were held in the absence of the applicant. The Board further observes that document D3 is a family member of a document cited in parallel proceedings before the US Patent Office and that its content was thus known to the appellant. In this context, the appellant could not be considered unprepared to the introduction of D3 into the appeal proceedings. Furthermore, the Board notes that, contrary to the view defended by the appellant, the jurisprudence of the boards of appeal is not unanimous when deciding on the possible remittal of a case to the department of first instance. As for instance stressed in decision T 111/98, remittal depends on the circumstances of the case. In particular, “Amendment of the claims in response to the citation of a new document during appeal proceedings is not as such a sufficient reason to remit the case to the department of first instance” (cf. T 111/98 [headnote; 1.2]). In view of this decision, what actually appears to be essential when a board exercises its discretion to remit a case is whether the factual framework has substantially changed during the appeal proceedings. In the Board’s judgement, the introduction of D3 into the present appeal proceedings does not, however, amount to a substantial change in the factual framework. As may be derived from the file wrapper, the problem-solution analysis carried out by the Board starting from document D3 is quite similar to the analysis made by the ED when starting from document D1. In particular, the distinguishing feature of the claimed invention still resides in the sole feature of the controller being adapted to variably control the reactance value. Similarly, the objective problem to be solved is still considered to be the desire to improve the degree of freedom in the control of the antenna configuration in order to control the antenna device, as established by the ED in its decision with regard to former dependent claim 5. [3.3] The position of the ED with regard to current claim 1 can thus be reasonably estimated from the previous proceedings before the ED as may be appreciated from the file wrapper. A remittal to the ED would therefore appear to be a purely formalistic act and contrary to the principle of procedural economy. For these reasons, the request that the case be remitted to the ED for further prosecution is rejected.
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T 893/07 – Remittal? No Way
K’s Law – The ebook
To read the whole decision, click here.
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T 683/06 – No Second Date
K’s Law – The ebook
T 683/06 – No Second Date 20 Jul 2010
Reality sometimes definitely has a “paper D” flavour … At the beginning of this story there is a late night fax transmission at the very end of the priority year. Some of the parts of the application (pages 1 and 2 of the description, claims 1 to 47 and Figures 1 to 3) were received at the EPO before midnight, i.e. on June 14, 1995, some only after midnight (pages 3 to 16 of the description), i.e. on June 15. The EPO followed its internal instructions and asked the applicant to choose between (1) keeping only the parts filed before midnight, which allowed to have June 14 as date of filing and to keep the first priority claim, and (2) keep the whole document and have June 15 as date of filing, thereby losing the first priority claim. The applicant chose solution (1). Later it filed a divisional application based on parts of the first application which had been received after midnight. The EPO refused this application because it went beyond the content of the parent application. The present appeal deals with this decision. The applicant requested that the date of filing of the parent application be fixed to June 15 (correction under R 139). ** Translation from the German ** [2] The main request of the appellant aims at obtaining that June 15, 1995, be acknowledged as date of filing of the parent application. If this was done, all the documents filed by fax at that time would have to be taken into account and the divisional application would have support in the application as filed. [2.1] The EPC does not provide the possibility of an ex post shift of a date of filing after it has been fixed. Only R 56 makes it possible to shift a date of filing to later dates when missing drawings or parts of the description are filed at a later date. Moreover, a correction of errors in documents filed with the EPO pursuant R 139 can also lead to a correction of the date of filing. However, the present case does not concern such a correction. What is aimed at here is not to correct an erroneous indication of the date of filing of the parent application in the application documents. Rather the date of filing of the parent application is to be changed. Therefore, R 139 cannot serve as legal basis for fixing anew the date of filing, all the more as the provision cannot be applied any more after the grant proceedings have been terminated. Even a correction under R 140, which is available for linguistic errors, errors of transcription and obvious mistakes in decisions of the EPO, is out of the question. The indication of June 14, 1995 as date of filing in the corresponding documents of the Office is, as the case history clearly shows, not an error or an obvious mistake at all, but is the result of a decision-making process. Therefore, it cannot be corrected in this way even if the result of this decision-making process were wrong. [2.2] The Board does not share the view of the appellant according to which there was no need for a legal basis for fixing anew a date of filing because the fixing of the date of filing was only binding on the Office and interests of the public were not concerned. Quite to the contrary, the date of filing is of central importance in the patent system as a whole and has numerous effects on the concrete grant proceedings including remote effects in possible divisional applications. The present proceedings in particular show the importance of the date of filing. Therefore, the Board does not see itself in a position to fix anew the date of filing in the terminated proceedings concerning the parent application. [2.4] Finally it has to be pointed out that the regulations concerning applications by fax which are received partly before and partly after midnight (mitternachtsüberschreitend) as stipulated under point [5.1] of the Communication of the EPO dated June 2, 1992 [OJ 1992, 309], are applicable to the present case. It is not clear why this regulation should not be applicable in a case where the application contains two inventions (assuming that the present case is such a case). Moreover, it is to be noted that this regulation does not offer the applicant the possibility to determine the date of filing in a subjective manner, but only to choose between two objectively conceivable options, in the exercise of legitimate interests (interessensgerecht).
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T 683/06 – No Second Date
K’s Law – The ebook
[3] In its first auxiliary request the appellant wishes to obtain that the Board, with regard to the present proceedings, act on the assumption […] that all the documents had been received on June 14, 1995, because the contrary cannot be asserted. [3.1] As far as divisional applications are concerned, is questionable whether it is possible to assume a different date for the receipt of the documents of the parent application than the date which the parent application has received as date of filing. But even assuming that this was in principle “virtually” possible for the date of receipt of the application documents, this assumption cannot lead to fixing the date of receipt of the documents to June 14, 1995. [3.2] In its internal note dated June 19, 1995, the Receiving section has listed which parts of the documents of the parent application had been received on June 14, 1995 (all except pages 3 to 16 of the description) and which parts had only been received after midnight, on June 15, 1995. The applicant has been informed accordingly, e.g. in the letter dated August 3, 1995. Even if those facts are challenged, the Board will use them as basis for its decisions because they have been established by the Office, unless there are justified doubts as to their correctness or other circumstances which could be suitable for calling them into question. [3.3] In the present case, there are indeed such circumstances. As a matter of fact, the corresponding pages of the electronic file of the Office do not contain any impressions of a fax machine documenting the date and time of receipt in the EPO, i.e. of the receiving fax machine. However, the emission data (Sendevermerke) of the office of the representative who represented the party at that time can be seen. [3.4] The file of the parent application has been scanned at a later time (“backscanning”). It cannot be determined from the electronic file whether the reception data (Empfangsvermerke) of the fax of the EPO are only invisible on the individual pages of the electronic file or if they are indeed missing. On the other hand, it is conspicuous that the assignment of the documents to the two dates (June 14 and 15, 1995), as made by the Board, corresponds exactly to the times that appear on the emission data. [3.5] Therefore, it appears to be likely that at that time the Receiving section – for what reasons ever – has carried out the chronological assignment of the documents on the basis of the emission data of the fax machine of the attorney’s private practice. However, this can hardly be adequate for a sufficiently safe assignment. If the question of the precise [moment of] receipt were decisive, it would be necessary to accede to the appellant’s motion to take evidence by consulting the original file and to pursue the investigations. [4] However, the Board is of the opinion that the question as to when precisely the individual documents were received is not decisive. As a matter of fact, the applicant, in a letter dated November 6, 1995, has explicitly and unambiguously defined the object of the grant proceedings. [4.1] In its letter dated August 3, 1995, the Receiving section has exposed in detail, to the representative who represented the applicant at that time, which variants corresponded to which documents and has asked for information on which date of filing was to be fixed and which claims were to be searched. The representative has responded in a letter dated November 6, 1995, that the search was to be carried out on the basis of the documents that had been received before midnight on June 14, 1995. [4.2] This statement is unambiguous and has been made in full awareness of the relevant facts. It means that the date of filing is fixed to June 14, 1995, and cannot reasonably be understood in another way. At the same time, in view of the Communication of the EPO dated June 2, 1992, it means that the other documents have been abandoned. The then representative must have been aware of this fact. The appellant has to stick to that declaration even today. This means that the pages 3 to 16 of the then received pages of the description are not relevant. [5] For the same reasons, the second auxiliary request, which aims at a fragmentation of the documents according to a precise date of receipt still to be determined, cannot be granted either. Even the appellant’s motion to take evidence is irrelevant for the decision on the case and had to be dismissed. [6] The third auxiliary request aims at setting aside the impugned decision and at a remittal of the case to the first instance for further decision. It aims at a continuation of the examining proceedings on the basis of the disclosure of the documents which had been received on June 14, 1995, before midnight, i.e. form F 1001, claims 1 to 27 of the divisional application, which are almost identical with claims 1 to 27 of the parent application, of pages 1/26 and 2/26 of the divisional application as well as Fig. 1 and 2. The Board does not see any reason which would be in conflict with a 2871 | 3398
T 683/06 – No Second Date
K’s Law – The ebook
continuation of the examining proceedings on the basis of the disclosure of those documents. [...] The case is referred to the first instance for further decision. NB: This decision has recently been commented by Privat Vigand, to whom I owe much of my knowledge on EPC matters. His comments have been published in Proprieté Industrielle, Juillet-août 2010, p. 29. Prof. Vigand writes (my translation from the French): “[...] Taking into account the date of filing of the patent under consideration, the EPC 2000 was not applicable. It is nevertheless interesting to note that if the same situation occurred after the entry into force of this convention, it could be treated without referring to the Communication of 1992. As a matter of fact, new R 56(1) provides that when the EPO finds that some parts of the application are missing (which is clearly the case here) it imparts a time limit (two months) to the applicant for filing them. If the latter sends the missing parts to the EPO within the time limit, a new date of filing is given to the application, this new date being the date on which the missing parts were received (R 56(2)), unless the missing parts are found in exactly the same form (à l’identique) in the priority document, in which case the date of filing is not changed (R 56(3)). For the sake of completeness it has to be added that if the date of filing has been modified, the applicant has the “right to repent” within one month and to withdraw the missing parts in order to obtain anew the original date of filing (R 56(6)). In any case, when this time limit has expired, the date of filing is irrevocably fixed and the applicant will not be able to request its modification any more.” Personally, I am not so sure that R 56 would be applicable in such a situation (as the missing parts are missing only a posteriori, so to say). Be that as it may, the last sentence of Prof. Vigand’s statement is certainly what we should retain from this decision. To download the whole decision (in German), you may click here.
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T 1960/08 – No Remittal Of A Pig In A Poke
K’s Law – The ebook
T 1960/08 – No Remittal Of A Pig In A Poke 19 Jul 2010
[5.1] The Board considers the appellant’s request for remittal submitted by fax dated 2 March 2010 “if the Appeal Board is minded to refuse the Main, First, and Second Auxiliary requests, it be so kind as to allow remittal to the department of first instance so that the appellant can pursue a suitably amended Third Auxiliary request that complies with A 84 and A 123(2), in addition to being novel and involving an inventive step” (emphasis added by the Board) to be unclear for the following reasons: According to this request it is not known whether such a remittal should be based on the claims of the third auxiliary request, as filed with the grounds of appeal, or on the basis of “suitably amended” claims of said third auxiliary request to be filed in the future. [5.2] The first alternative would imply that the Board should remit to the first instance a third auxiliary request which it considered not to be allowable under A 84 so that the appellant at the first instance then could amend it to overcome the objections made by the Board. The second alternative would imply that the Board should remit the case to the first instance on the basis of a “suitably amended third auxiliary request that complies with A 84 and A123(2)” without knowing what the subject-matter of this request should be, since the appellant has not submitted such a “suitably amended” third auxiliary request with its last submission which would meet the requirements of A 84 and A 123(2). [5.3] An unclear request, however, has to be rejected by the Board. Furthermore, both alternatives represent no basis for an allowable remittal to the first instance. [5.4] Furthermore, the appellant stated that its request for remittal took account of point 6 of the Board’s communication wherein it was remarked “Provided that a request were to meet the requirements of A 84 and A 123(2) and of novelty, the Board will consider remittal of the case to the department of first instance or may exercise competence for further prosecution, i.e. examination of inventive step” (emphasis added by the Board). [5.4.1] The proviso in said passage “provided that a request were to meet the requirements of A 84 … “implies that first there has to be a request on file which subject-matter is defined and which fulfils the requirements of A 84, A 123(2) and A 54. Only then the Board may exercise its discretion in accordance with A 111(1) to either remit the case to the first instance or to exercise its competence for further prosecution. [5.4.2] Since the appellant has not submitted such a request which would meet the said proviso – and thus the requirements of A 84, A 123(2) and A 54 – there is neither a basis for a remittal of the case to the first instance nor for a further prosecution of the case by the Board. To read the whole decision, please click here. For a similar decision, click here.
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T 316/08 – Complexities
K’s Law – The ebook
T 316/08 – Complexities 19 Jul 2010
Article 13(1) of the Rules of Procedure of the Boards of appeal provides that “[a]ny amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy.” In the present case the parties could not agree on whether the amendment was complex or not. Here is what the Board had to say: [19] These auxiliary requests were filed one month before the oral proceedings (OPs) […]. Article 12(2) RPBA requires that the statement of grounds of appeal contains an appellant’s complete case, setting out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and specifying expressly all the facts, arguments and evidence relied on. While Article 12(1)(c) RPBA provides that appeal proceedings shall be based on, in addition to the grounds of appeal and reply, any communication sent by the Board and any answer thereto, this cannot mean that any new requests filed with such an answer are per se admissible since otherwise parties could withhold less preferred requests until after obtaining the Board’s provisional opinion on more preferred requests, a tactic which would largely negate the function and value of provisional opinions. [20] Article 12(4) RPBA requires the Board to take into account everything presented by the parties under Article 12(1) RPBA if and to the extent it relates to the case under appeal and meets the requirements in Article 12(2) RPBA, which includes the complete case requirement. Thus the Board is quite clearly not required to take into account anything which does not satisfy that requirement, such as requests which could have been filed with the statement of grounds of appeal but were not. [21] This is complemented by Article 13(1) RPBA which requires that any amendment to a party’s case after it has filed its grounds of appeal or reply - and a new set of claims with a new feature is clearly such an amendment - is admissible not as of right but at the Board’s discretion, and that discretion is to be exercised in view of inter alia three criteria, namely the complexity of the new subject matter, the current state of the proceedings, and the need for procedural economy. Further, Article 13(3) RPBA provides that amendments sought to be made after OPs have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings. [22] As for the criteria in Article 13(1) RPBA, the complexity of the new subject-matter is unsurprisingly the subject of substantial difference between the parties. The appellants argued that the addition of the feature of a bone tunnel was not technically complex - in the sense of technical complexity, that argument appears quite correct - and the feature was readily understandable. [23] However, the Board cannot accept that the concept of “complexity” in Article 13(1) RPBA is confined merely to the technical content of a proposed amendment to a party’s case. It must also extend to any procedural complexity the amendment would entail and, in this connection, the Board accepts that the Respondent’s arguments carry considerable weight - the new feature in the present case is taken from the description, has never been relied on or even discussed previously at any stage of the opposition or appeal proceedings, and was not taken into account in any searches. At the very least the Respondent would want to conduct its own prior art searches and assess the results. Thus, as regards the complexity criteria, the Board finds the Respondent’s arguments the more persuasive. I find it difficult to believe that the drafters of the RPBA thought of procedural complexity when writing “complexity of the new subject matter submitted”. This somewhat far-fetched interpretation is not needed as the list given in Article 13 is manifestly not intended to be exhaustive (“… in view of inter alia …”). To read the whole decision, you may click here.
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T 1226/07 – Too Late For Not Being Premature
K’s Law – The ebook
T 1226/07 – Too Late For Not Being Premature 17 Jul 2010
Those who have been following EPC case law for some time will remember decision T 1181/04 where an appeal filed against a communication under R 51(4) EPC 1973 succeeded. The present decision reminds us that this was very exceptional and that by now, as a general rule, such appeals will be found premature and thus inadmissible. [1.1] R 51 EPC 1973 implements the examination procedure established under A 96 and 97 EPC 1973. In particular, R 51(4) stipulates that the examining division (ED) has to communicate to the applicant the text in which it intends to grant the patent and invite him to pay the fees and file the translation. According to the last sentence of this provision, the payment of the fees and the filing of the translation is considered to be implicit approval of the text proposed by the examining division. The function of a communication under R 51(4) is therefore to establish whether the applicant approves the proposed text of the patent as foreseen in A 97(2)(a) and A 113(2) EPC 1973. If, after receiving the communication under R 51(4), the applicant approves the version of the patent proposed by the ED and fulfils the formal requirements for grant, the ED issues a decision to grant according to A 97(2). If the applicant does not approve the text, the application is to be refused according to A 97(1), since the EPC does not provide any other sanction in this case. The way in which R 51(4) and A 97(1) and (2) operate indicates that a communication under R 51(4) is not intended to terminate the examination procedure but is rather a preparatory action and is therefore as such not appealable. An appeal against a communication under R 51(4) is therefore normally to be considered inadmissible (see T 1181/04 [3-6]). [1.2] In case the communication under R 51(4) refers to an auxiliary request and, in an annex, the reasons why the main request or a higher ranking auxiliary request does not fulfil the provisions of the EPC are set out, the boards of appeal have acknowledged admissibility of an appeal, when EPO form 2004 07.02CSX was used (see decisions of the boards of appeal T 1181/04 and T 560/05). The reasons were that in this form, the EPO removed from the appellant the possibility of influencing the procedure and obtaining a decision on the refusal of his higher ranking requests and of filing an appeal against it (see T 1181/04 [§ 2, first sentence]). [1.3] In the current case, however, decision T 1181/04 was already more than two years old and thus deemed to be known, and EPO form 2004 01.06CSX was used which advised the applicant “If this communication is based upon an auxiliary request, and you reply within the time limit set that you maintain the main or a higher ranking request that is not allowable, the application will be refused (A 97(1), see also Legal Advice 15/05 (rev. 02), OJ EPO 6/2005, 357)”. Further it was set out that in other cases, except those of this cited paragraph and one other paragraph, if the relevant fees were not paid or the translation not filed in due time, the European patent application would be deemed to be withdrawn (emphasis added by the board). Thus, in the case in suit the provisions covering exceptional admissibility of an appeal as reply to a communication under R 51(4) are not fulfilled. In addition, the applicant has not raised any objection to the board’s interpretation of events. Therefore, the board comes to the conclusion that the appeal is not admissible but rather premature. To read the whole decision, click here.
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R 4/09 – Ignorance Is Not Bliss
K’s Law – The ebook
R 4/09 – Ignorance Is Not Bliss 17 Jul 2010
The present decision on a petition for review deals with a case where the petitioner based its argumentation on its attorney’s ignorance of a decision of the Enlarged Board of Appeal (EBA). As a matter of fact, during the oral proceedings (OPs), the Board pointed out that decision G 1/99 prohibits reformatio in peius. The patentee studied the contents of G 1/99 after the end of the appeal proceedings, and noted that G 1/99 in fact provided an exception to the principle of prohibition. So the proprietor contended that in the course of the oral proceedings he had been wrongfully informed of the real ambit of decision G 1/99 which actually provides for an exception to the principle of prohibition of reformatio in peius whereas on the contrary during oral proceedings said decision G 1/99 had been alleged to establish said prohibition. [2.2] In the case in suit the petition is based on the alleged misleading information given by the Board during OPs which according to the petitioner constituted a fundamental violation of A 113, since the Board adopted in its reasoning in writing a completely contrary approach to the indications it gave in the OPs, thus depriving the petitioner of its right to comment on the grounds that directly caused the revocation of the patent. […] [2.3.1] The petition for review filed with the EBA appears indeed to concern the scope of application of the principle of good faith also known as the principle of the protection of legitimate expectations, in proceedings before the EPO, rather than the right to be heard. This principle is generally recognised among the Contracting States of the EPC and is well established in European Union Law (G 2/97). The Boards of Appeal have developed a substantial body of case law relying on the principle of good faith to be applied in the procedures before the EPO and which implies that measures taken by the EPO shall not violate the reasonable expectations of parties to such proceedings (G 5/88, G 7/88 and G 8/88, OJ EPO 1991, 137). [2.3.2] The protection of this principle requires that the user of the European patent system, here the patent proprietor in opposition appeal procedure, does not suffer a disadvantage as a result of having relied on erroneous information received from the Board of Appeal (G 2/97 [4.1]). Nevertheless users of the European patent system, who are parties in proceedings before the EPO must act in good faith, and have the responsibility to take all necessary procedural actions to avoid a loss of right. The EBA, therefore, saw no justification for the suggestion that the principle of good faith imposes on a Board of Appeal an obligation to warn a party of deficiencies within the party’s own responsibility (G 2/97 [4.2]). [2.3.3] In the case in suit, even if for the sake of argument it is assumed that the information of the Board during OPs was not clear enough, it remains nevertheless that the party, at least where, as here, it is represented by an authorized representative, is deemed to know the case law, and cannot plead lack of such knowledge as an excuse, “Ignorantia legis non excusat”. Moreover the petitioner had the opportunity if he was not aware of the principles set forth in decision G 1/99 to ask for a break in order to study said decision. Furthermore, in the case in suit the Board could not have, without departing from its duty of neutrality in inter partes proceedings, suggested to the petitioner any possible wording of a claim in order to escape the prohibition. The petitioner, duly informed by the communication annexed to the summons to the OPs, was deemed to be aware of the fact that the invention claimed according to his main request might lack the claimed priority, and should have accordingly drafted his auxiliary requests. [2.3.4] The question whether the exception mentioned in G 1/99 applies to the case at hand or (as stated in the impugned decision, [6.2]) it does not, concerns the merits of the case and is therefore outside the scope of the present proceedings. [2.4] To summarise:
it is not established that the Board gave any misleading information in the course of the OPs, a party to the proceedings is expected to be aware of the relevant law and case law, at least where, as here, it is represented by an authorized representative, 2876 | 3398
R 4/09 – Ignorance Is Not Bliss
K’s Law – The ebook
it is established that decision G 1/99 had been discussed during the OPs, and that the petitioner who should have been aware of its teaching, did not ask for an interruption of the proceedings in order for him to react, it is not for the EBA in its competence under A 112a to examine the merits of the decision and to go into the substance of a case.
[2.5] Therefore, the petition for review is clearly unallowable and must be rejected. If you wish to download the whole decision, you can find it here. NB: This decision has already been reported on Le blog du droit européen.
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T 1703/06 – Don’t Push Too Hard On Clarity
K’s Law – The ebook
T 1703/06 – Don’t Push Too Hard On Clarity 16 Jul 2010
The EPO sets high standards on sufficiency of disclosure of measurement methods, but there are limits. It all depends on what the skilled person may be expected to understand. [7.1] Claim 1 requires that the polymers of components (A) and (B) are such that i) the value of the refractive index of the electrostatic polymer should be in-between those of the polycarbonate and the cycloaliphatic copolyester resins and further so that ii) the refractive index of the electrostatic resin be matched within a value of 0.005 units to that of the miscible mixture of the polycarbonate and the cycloaliphatic copolyester. According to the EPO case law the unambiguous characterisation in a claim of a product by a parameter (here the refractive index) necessarily requires that the parameter can be clearly and reliably determined (see e.g. T 555/05 [3.2.8]). This requirement is in particular necessary in order for the public to know whether they are working within the claims or not. In the present case whilst the information provided in D6 […] which is considered by the board to be generally representative of the common general knowledge at the relevant filing date, shows that there are various methods available in the art to determine the refractive index […], it is made clear that the refractive index of a material that is quoted in the literature is the index at 23 °C or 25 °C and at the specific wavelength of the D line of the sodium emission spectrum which is 589.3 nm […]. Furthermore it is stated that the standard for the plastics industry, ASTM D 542 calls for two methods of index measurement, one of which is accurate to three decimal places and possibly four, and the second of which is only accurate to approximately two decimal places […]. It is conspicuous to the board in this connection that the refractive indices are quoted in the application in suit to three decimal places. Consequently and even though there are details given on later pages of the same document which were not cited by the appellant but which were […] discussed during the oral proceedings, of how refractive index can vary with the temperature of measurement, the wavelength of measurement and the moisture content of the atmosphere during measurement, it is nevertheless considered by the board that in spite of the absence of any precise definition in the application in suit itself of the way in which the refractive index is to be measured, this is indeed a well known and even standardised parameter […] for which there is no evidence for assuming a degree of variance in the values obtained by measuring it according to the relevant standard which would lead to an objectionable lack of clarity in the sense of A 84. On the contrary the board takes the view that the skilled person reading the application in suit at the filing date would immediately understand that any values of the refractive index would be those measured according to ASTM D 542 to the appropriate degree of accuracy. The fact that there may be a purely theoretical lack of mathematical precision in the values quoted owing to the environmental variables mentioned above does not in the board’s view in the present case lead to any real doubt as to whether a given composition would fall inside or outside the scope of claim 1 as regards the refractive index requirements of the latter, depending on whether it was measured at, say, 23 °C or 25 °C. In other words the use of the term “refractive index” in claim 1 is clear in the sense of A 84. To read the whole decision, click here.
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K’s Law – The ebook
Questions For The Wise
Questions For The Wise 16 Jul 2010
If you visit the EPO website from time to time, you will have noted that an interlocutory decision in appeal case T 1145/09 has referred two questions to the Enlarged Board (EBA). The questions are pretty much selfexplaining: 1. Is a patent proprietor’s request for correction of the grant decision under R 140 which was filed after the initiation of opposition proceedings admissible? In particular, should the absence of a time limit in R 140 be interpreted such that a correction under R 140 of errors in decisions can be made at any time? 2. If such a request is considered to be admissible, does the Examining Division have to decide on this request in ex parte proceedings in a binding manner so that the Opposition Division is precluded from examining whether the correction decision amounts to an unallowable amendment of the granted patent? The little case law there is (T 268/02, T 79/07) appears to be contradictory, so let us hope the EBA is willing to provide insight. The referral is pending as G 1/10. A kind reader has sent me the minutes of the oral proceedings in another appeal case, T 1068/07, where another question was referred to the EBA. This question relates to disclaimers and might be of greater practical interest: Does a disclaimer infringe A 123(2) if its subject-matter was disclosed as an embodiment of the invention in the application as filed? This is a tricky question, all the more so as it will have to build on G 1/03, which provided a pragmatic but (in my opinion) intellectually/legally rather unsatisfactory solution to the disclaimer problem. “Bon courage” to the members of the EBA! My educated guess is that this will become G 2/10.
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T 1150/08 – The Untaught Link
K’s Law – The ebook
T 1150/08 – The Untaught Link 15 Jul 2010
[2.1.2] Claim 1 is further amended by addition of the feature […] according to which the insert pocket comprises a base surface from which the lower and upper support walls extend generally uprightly from the base surface. Since the walls are straight in side view, as explained above, this feature implies that the lower and upper support walls are generally planar. The [opponent] raised an objection of lack of clarity under A 84 in respect of this feature due to the presence of the term “generally”. Although this feature was already present in claim 12 as granted, and, in principle, A 102(3) does not allow objections to be based upon A 84 if they do not arise out of the amendments made (see e.g. T 301/87), the Board considers that in the present context the term “generally” is sufficiently clear in that it indicates that the support walls are to a great extent perpendicular to the base surface, i.e. excluding portions at their boundaries where deviations may be present due e.g. to a radius of curvature or a chamfer. The [opponent] also argued that this feature was only disclosed in the specific combination of claim 13 of the application as filed, which includes the feature that the base surface is abutted by a given protruding polygon of the cutting insert. According to the case law of the Boards of Appeal of the EPO, the isolated extraction of a feature from a set of features is justified on the basis of the specific condition that the skilled person could have readily recognised the absence of any functional or structural relationship among said features (see e.g. T 201/83 or T 714/00). According to the teaching of the application as filed, whilst the lower support wall, the upper support wall and the base surface of the insert holder have the function of positively locking the cutting insert in the insert pocket […], the provision of a protruding pentagon on the side surface of the cutting insert is not related to the locking of the cutting insert. Indeed the protruding pentagon provides a suitable shape of the side surface that allows a given side wall thereof to be coplanar with the end surface of the insert holder, thereby maximizing the contact area between the insert and the insert holder without reducing the depth of cut […]. The skilled person would therefore readily recognize that there is no teaching implying the presence of a functional or structural relationship between the feature relating to the upper and lower support wall extending generally uprightly from the base surface and the feature relating to the presence of a protruding pentagon. In this respect it is noted that in a mechanical device such as the metal cutting tool described in detail in the application as filed, it could be speculated that some kind of functional and/or structural link can always be found between the various features of the device (for instance because a feature related to the shape of the insert might e.g. affect the overall mechanical rigidity of the tool). However, the assessment of whether an amendment consisting in extracting a feature from a disclosed combination of features introduces subject-matter extending beyond the content of the application as filed presupposes determining whether the link forms part of a technical teaching given by the application as filed in respect of the disclosed combination. If, as discussed above, this is not the case, then the extraction of a feature from a set of features disclosed in combination does not provide a new technical teaching. To read the whole decision, click here.
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T 1066/08 – Persuasion Is Not For Free
K’s Law – The ebook
T 1066/08 – Persuasion Is Not For Free 15 Jul 2010
The present decision deals with a rather unusual request for reimbursement of the appeal fee. It is the problem rather than the response by the Board that has attracted my attention. The Examining Division (ED) had refused a patent application for lack of inventive step. The decision was based in particular on documents D4 and D5. The applicant filed an appeal. The Board introduced documents D7 and D8 into the proceedings and expressed its opinion that claim 1 did not involve an inventive step in view of these documents. The applicant was summoned to oral proceedings (OPs). The applicant then sent the following letter to the Board: In response to the summons to OPs pursuant R 115(1) […] the request for OPs is withdrawn. By [introducing] documents D7 and D8, the Board has convinced the applicant […] that the present application is not patentable within the meaning of the EPC. Documents D7 and D8 clearly corroborate the point of view of the EPO. If the EPO had produced these documents already during the examination proceedings, the applicant […] would not have filed the appeal. Therefore, the impugned decision of the ED was insufficiently reasoned. Thus the [applicant] requests reimbursement of the appeal fee and, for all other matters, withdraws the appeal. Unsurprisingly, the Board rejects this request: ** Translation from the German ** [V] R 67, first sentence, EPC 1973 reads as follows: The reimbursement of appeal fees shall be ordered in the event of interlocutory revision or where the Board of appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation. In the present case interlocutory revision has not been granted. As the appeal, apart from the request for reimbursement of the appeal fee, has been withdrawn, the Board cannot possibly take a decision allowing the appeal. Therefore, a reimbursement of the appeal fee is not possible based on the wording of R 67, first sentence. Moreover, the Board does not see any other legal justification (rechtlicher Gesichtspunkt) for a reimbursement. In this context, the Board would like to point out that a possible wrong assessment by the first instance cannot constitute a substantial procedural violation. [3] Therefore, the request for reimbursement of the appeal fee is to be dismissed. To read the whole decision, please click here.
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T 680/08 – To The Bitter End
K’s Law – The ebook
T 680/08 – To The Bitter End 14 Jul 2010
As we have seen last time, claim 1 of the main request contained a lower limit for the total drive specific energy (SEC) applied on the polyethylene composition of 0.330 whereas the priority document disclosed a lower value of 0.325. Although the Board came to the conclusion that the invention was the same within the meaning of G 2/98, it held the priority claim to be invalid because the new lower limit could not be derived directly and unambiguously from the priority document. As the priority document was a European patent application that had been published, it destroyed the novelty of the claimed subject-matter. The patent proprietor then filed an incredibly bold auxiliary request in order to overcome the objection - and it worked. Admissibility [3.1] The first auxiliary request differs from the main request in that a disclaimer for the SEC value of 0.330 kWh/kg is introduced into feature b) of claim 1. This first auxiliary request, filed by the [patent proprietor] during the oral proceedings (OPs), is regarded as being intended to deal with the lack of novelty under A 54(3) of the main request with respect to the published priority document D1. Therefore, this is an aspect which is in accordance with one of the requirements concerning disclaimers set out in EBA decision G 1/03. Although a similar argument concerning the validity of the priority had already been raised by the Board in the summons to OPs, the arguments concerning the lack of novelty arose in this form for the first time during the OPs. Furthermore, the amendment to claim 1 merely involves a disclaimer for the value not enjoying the priority of document D0 and, with respect to the decision under appeal, does not raise issues which the Board or the other parties cannot reasonably be expected to deal with without adjournment of the OPs. Thus, the Board is of the opinion that it is appropriate to exercise their discretion and admit the request into the procedure in accordance with Article 13 of the Rules of Procedure of the Boards of Appeal. Entitlement to priority [3.2] The effect of the disclaimer is to exclude methods carried out at SEC values of 0.330 kWh/kg from the subject-matter of claim 1 according to the first auxiliary request. As concluded from the priority discussion in point [1] [see the preceding post], methods carried out at claimed SEC values other than 0.330 kWh/kg, i.e. the subject-matter of claim 1 according to the first auxiliary request, concern the same invention as is disclosed in document D0. Therefore, the subject-matter of claim 1 according to the first auxiliary request is entitled to the priority of document D0 (A 87(1)(b)). Document D1 and novelty [3.3] As the subject-matter of claim 1 according to the first auxiliary request is entitled to the claimed priority of document D0, document D1 does not belong to the prior art and is therefore not relevant for the assessment of novelty. Now this is where the weird concept of two inventions that are the same but which cannot be derived directly and unambiguously from each other bears its bitter fruit. Once the value 0.33 is disclaimed, the invention is still “the same” but the problematic lower limit is eliminated, which re-establishes the validity of the priority claim. I see at least two problems: First, the auxiliary request has modified the claimed domain from [0.33, 0.415] to ]0.33, 0.415]. Sure enough, the former lower limit - i.e. 0.33 - was not disclosed in the priority document, but the new lower limit - i.e. ] 0.33 - is not, either. 2882 | 3398
T 680/08 – To The Bitter End
K’s Law – The ebook
Second, by allowing this disclaimer, the Board accepts a disclaimer that not only re-establishes novelty over an A 54(3) document, which is acceptable under G 1/03, but also (in the eyes of the Board) re-establishes priority, which is not something that G 1/03 had allowed. All in all, a very questionable decision. If
you
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whole
decision,
you
can
download
Addendum: You might also want to read the article on T 680/08 on Le blog du droit européen.
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it
here.
T 680/08 – Still The Same?
K’s Law – The ebook
T 680/08 – Still The Same? 13 Jul 2010
The present decision contains some rather surprising findings concerning the validity of a claim to priority. Claim 1 according to the main request read as follows: 1. Method of compounding a multimodal polyethylene composition in a compounding device, wherein a) the total residence time of the polyethylene composition in the compounding device is at least 3 minutes, b) the total drive specific energy (SEC) applied on the polyethylene composition is from 0.330 to 0.415 kWh/kg, c) optionally, a specific cooling energy (SCC) of at most 0.200 kWh/kg is applied on the polyethylene composition, d) the total specific energy, which is the difference between the total drive specific energy SEC and any specific cooling energy SCC, applied on the polyethylene composition is from 0.220 to 0.330 kWh/kg. The value of lower limit for the total drive specific energy (SEC) applied on the polyethylene composition was 0.325 kWh/kg in the European patent application the priority of which was claimed and had been modified to 0.330 kWh/kg when the opposed patent was filed. This change appears not to have been triggered by prior art (the search report for the priority document was positive) and was not even due to rounding up; the patent proprietor later attributed it to “sloppiness” in drafting. Issues relating to priority [1] The subject-matter of claim 1 of the main request corresponds to the disclosure in the priority document D0 with the exception of the explicit mention of the value of total drive specific energy (SEC) of 0.330 kWh/kg. In consequence, in claim 1 of the main request, the only contested issue is the validity of the claim to priority in view of the value 0.330 kWh/kg used as lower boundary of the total drive specific energy (SEC) range of feature b). Same invention [1.1] According to A 87(1)(b), a claim to priority can only be validly claimed in respect of the “same invention”. Claim 1 according to the main request concerns a process whose value of total drive specific energy is constrained to lie within the particular range of values from 0.330 to 0.415 kWh/kg. The priority document D0 discloses that “in the method according to the invention, the total drive specific energy (SEC) applied on the polyethylene composition is preferably at least 0.325 kWh/kg” and that “the total drive specific energy (SEC) applied on the polyethylene composition preferably does not exceed 0.415 kWh/kg” […]. When filing the patent in suit, the lower bound value of the range of total drive specific energies was therefore increased from 0.325 kWh/kg to 0.330 kWh/kg, i.e. to a value which lies inside the range disclosed in the priority document. On the basis of this disclosure, the priority, if claimed accordingly, would be valid for methods wherein the total drive specific energy is chosen to be in the range of 0.325 to 0.415 kWh/kg and thus includes all methods whose actual value for the SEC is anywhere within the range of 0.325 to 0.415 kWh/kg, i.e. also for SEC values which were not mentioned explicitly in the priority document such as 0.330 kWh/kg. However, before a conclusion concerning the validity of the priority can be arrived at, it is necessary to consider the arguments against it. Technical effect
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T 680/08 – Still The Same?
K’s Law – The ebook
[1.2] One aspect to be considered is whether the technical effect associated with SEC values from 0.330 to 0.415 kWh/kg differs from the one associated with SEC values from 0.325 to 0.330 kWh/kg. It was proposed on the part of the [opponents] that when comparing the examples set out in tables 1 and 2 of the patent in suit, differences in applied SEC comparable to the 0.005 kWh/kg increase produce significant differences in properties such as white spot dispersion, gel count and pigment distribution. However, these examples are not directly comparable, because of additional changes in other parameters, such as residence time and/or the use of different polymers. […] The resulting differences in white spot dispersion, gel count and pigment distribution are therefore not necessarily primarily due to changes in applied SEC. Furthermore, taken as a whole, the examples set out in tables 1 and 2 of the patent in suit show that the claimed processes of compounding multimodal polyethylene are naturally subject to variations in properties such as the number of gels. The Board therefore considers that, on the basis of these examples alone, it is not possible to attribute a given property - such as, for example, the difference in the numbers of gels/kg - directly to a change in SEC alone. It was also proposed on the part of the [opponents] that in view of figure 2.1 of document D23, an applied energy of 0.330 kWh/kg would bring the tested multimodal polyethylene composition critically close to its decomposition temperature, such that even a small change in applied energy might have a decisive technical effect concerning the thermal destruction, or not, of the multimodal polyethylene composition. The method claimed in the present invention concerns compounding a multimodal polyethylene composition, which process loses its purpose should the composition be thereby heated to destruction. The skilled person would therefore only use the claimed compounding method without operating near the thermal destruction of the multimodal polyethylene composition. It was further alleged on the part of the [opponents] that no change would be made to the claimed range of SEC values without good reason. However, no such reason or proof of a change in technical effect was supplied. Furthermore, it was alleged on the part of the [patent proprietor] - and not denied by the [opponents] - that the 0.005 kWh/kg increase in the lower bound value of SEC is allegedly comparable to other sources of natural variations in applied energy such as temperature fluctuations due to the seasons or efficiency variations in mechanical agitators, motors and gearboxes. The Board therefore concludes that there is no proof that the increased SEC lower bound value of 0.330 kWh/kg results in any identifiably other technical effect compared to the technical effect associated with the larger range disclosed in the priority document. Enlarged Board of Appeal (EBA) Opinion G 2/98 [1.3] It was suggested on behalf of the [opponents] that, in view of the strict requirements set out in the EBA opinion G 2/98, the mere fact that the value 0.330 kWh/kg was not mentioned in document D0 was enough to lose the priority claim for the whole of the subject-matter of claim 1 of the main request. As the Board has not found any indication in opinion G 2/98 that the EBA explicitly considered the particular case of a process in which a value is constrained to lie inside a range whose lower bound has been marginally moved inwards, the response to the above argument requires a closer look at the reasoning used in that EBA opinion. In arriving at its conclusions in opinion G 2/98, the EBA took into account possible adverse effects of alternative assessments of the validity of a claimed priority. In the present case, denying the claim to priority for the subject-matter of claim 1 across the whole range of SEC values would lead to the following adverse effect: A third party could file an application for a process claiming the SEC upper bound value of 0.415 kWh/kg in the interval between the filing of the priority document D0 and of the filing of the application for the patent in suit. Such a document, once published, would form prior art according to A 54(3) for the upper bound value in the patent in suit. The proprietor would therefore be effectively forced to restrict his claim to exclude this upper bound, although he was the first to disclose it in his own priority document D0. The Board considers that this goes against the principle of fairness, as the [patent proprietor] would effectively be punished for increasing the lower bound value - a measure not foreseen anywhere in the EPC. It was further argued on behalf of the [opponents] that the [patent proprietor] had a choice when drafting the application with respect to the claimed priority. However, this does not make the above adverse effect any more acceptable. 2885 | 3398
T 680/08 – Still The Same?
K’s Law – The ebook
Other decisions [1.4] Reference was made on behalf of the [opponents] to decisions T 1443/05, T 118/99, T 136/01 and T 494/03. Decision T 1443/05 [4.1] concerned the addition of a disclaimer in the subsequent European application for which the priority was considered to be invalid. Although some examples did not contain the substance “CMIT”, the application as filed did not contain any indication from which the skilled person could directly and unambiguously derive the disadvantages of CMIT and the consequent exclusion of CMIT from the invention. The situation is therefore different from the present case. In decision T 118/99 [3.2], the Board considered that it was implicitly stressed that the difference of one unit is technically relevant for the claimed process so that the residence times are technically different. In decision T 136/01 [3.3], evidence was provided to the effect that the change in the lower end point of the temperature range has direct consequences on the polymers obtainable by the claimed treatment. In decision T 494/03, the increased lower bound value was already explicitly disclosed in the priority document and there was no evidence that the difference is of significance. Therefore, the cases underlying these decisions differ from the present situation. Conclusion [1.5] The Board therefore considers that with the exception of the explicit reference to the particular SEC lower bound value of 0.330 kWh/kg, the subject-matter of claim 1 of the main request concerns the “same invention” as that disclosed in the priority document D0.
Entitlement to priority [2.1] It is an undisputed fact that the value of 0.330 kWh/kg is not explicitly mentioned in the priority document D0. As the lower bound value of SEC of 0.330 kWh/kg cannot be directly and unambiguously derived from document D0, the subject-matter of claim 1 according to the main request - insofar as a method carried out at the lower bound value of 0.330 kWh/kg is concerned - is not entitled to the priority of document D0 (A 87(1)(b)). As the priority document D0 was a European patent application that had been published as document D1, there is trouble in the air. Novelty with respect to A 54(3) document D1 [2.2] Document D0 was filed 14 June 2001 and published as document D1 on 18 December 2002. The designated contracting states correspond to those of the patent in suit. In consequence, document D1 belongs to the state of the art under A 54(3) for all designated contracting states of the patent in suit. In accordance with opinion G 3/93 of the EBA, a priority document which is published during the priority interval belongs to the state of the art for the later European application under A 54 insofar as the claim to priority is not valid. For the subject-matter of claim 1 of the main request, the claim to priority is not valid for a method carried out at the particular SEC lower bound value of 0.330 kWh/kg. Claim 3 of document D1 refers back to claim 1 and thereby discloses a method of compounding a multimodal polyethylene composition in a compounding device, wherein a) the total residence time of the polyethylene composition in the compounding device is at least 3 minutes, b) the total drive specific energy (SEC) applied on the polyethylene composition is from 0.240 to 0.450 kWh/kg, c) optionally, a specific cooling energy (SCC) of at most 0.200 kWh/kg is applied on the polyethylene composition, d) the total specific energy, which is the difference between the total drive specific energy SEC and any specific cooling energy SCC, applied on the polyethylene composition is from 0.220 to 0.330 kWh/kg. The subject-matter of claim 1 of the main request for a method carried out at a SEC value of 0.330 kWh/kg does not meet the requirements of a selection invention, because the value of 0.330 kWh/kg is close to the value of 0.325 kWh/kg disclosed in […] document D1. 2886 | 3398
T 680/08 – Still The Same?
K’s Law – The ebook
Furthermore, as argued above in point [1.2], there is no proof that an SEC value of 0.330 kWh/kg gives rise to any identifiably other technical effect than that associated with the larger range disclosed in document D1. Therefore, at the SEC value of 0.330 kWh/kg, the subject-matter of claim 1 of the main request does not constitute a purposive selection giving rise to any new technical teaching. In consequence, the subject-matter of claim 1 according to the main request is not novel with respect to document D1 under A 54(3). In my opinion, as far as the “same invention” criterion is concerned, the present decision departs from the strict teaching of G 2/98, which is regrettable from the point of view of legal certainty. Nevertheless, the priority claim is invalidated because the “directly and unambiguously” criterion is found not to be satisfied. The Board thereby ignores that this criterion is at the very heart of the definition that G 2/98 has given of the “same invention”: “The requirement for claiming priority of “the same invention”, referred to in A 87(1), means that priority of a previous application in respect of a claim in a European patent application in accordance with A 88 is to be acknowledged only if the skilled person can derive the subjectmatter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole. To sum up, the Board appears to have seen two criteria where in reality there is only one, but fortunately it has held that it was sufficient for the priority claim to be invalid that of them was not fulfilled. So the final outcome (loss of the priority claim) appears to be correct, but the way to get there is astonishing, to say the least. Next time we shall see the even more surprising way in which the revocation of the patent was avoided. If you wish to read the whole decision, you can download it here.
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T 528/07 – Com, Vick, And TRIPS It As Ye Go
K’s Law – The ebook
T 528/07 – Com, Vick, And TRIPS It As Ye Go 12 Jul 2010
From time to time Board of appeal decisions show a knowledgeable colleague trying to take advantage of one of the recent patent related conventions such as the TRIPS agreement. In most cases these attempts are unsuccessful, but you almost always learn something interesting or useful in the Board’s response. [1] The invention in accordance with claim 1 is a computer system for providing a business-to-business relationship portal. Its purpose is to facilitate the exchange of information between parties for example in business launch centres (which is the preferred embodiment […]). It presents business opportunity information to permissioned users. In case of a business launch centre an “opportunity” is e.g. “any e- business that is being evaluated by one of the launch centers” […]. “Business opportunity information” is e.g. company background information or financial information, and “permissioning” refers to users' rights to view and/or modify information […]. The channels, which may appear as boxes on the user's screen, contain links to portal applications and may include summaries of aggregated data from the applications […]. “Applications” are in the Board's understanding application programs. Inventive step Article 27 TRIPS [2.1] The invention as claimed consists of a mixture of technical and non-technical features, the non-technical features relating to a business-to-business relationship portal such as a launch centre, i.e. an entity arranged to provide new businesses with resources for rapidly and successfully building, launching and scaling their business […]. In order to examine this type of subject-matter the Board would normally apply the “Comvik approach” (cf. T 641/00). The appellant has however argued that since A 52(1) in its revised version had been brought into line with Article 27(1) TRIPS it had to be interpreted in the light of the object and purpose of this agreement. The wording of A 52(1): European patents shall be granted for any inventions, in all fields of technology … implied not only that there could be no “non-inventions” (i.e. exclusions of the kind enumerated in A 52(2)) in a field of technology, but also that the examination for inventive step had to be handled in a way to ensure that patents were indeed “available and patent rights enjoyable”, as required by Article 27(1) TRIPS. It was not permitted to treat features involving non-technical aspects as part of the object to be achieved by the invention. Business-driven aspects (such as the aim to develop profit-bringing products) were behind every invention, and were regularly ignored in the formulation of the problem. All features of a claim contributed to an inventive step, although it was permissible to attach more weight to the technical ones. [2.2] The Board is aware that the Comvik approach often leads to the conclusion that an invention involving non-technical aspects merely solves a trivial technical problem. But this is not an inevitable outcome. As soon as an invention solves a technical problem in a non- obvious way patent protection is in principle available even if the claim in addition contains non-technical features (cf. T 769/92). A frequent case is however that technical features, such as the client-server system in the present case, are known as such but are used for a non-technical purpose. According to the Comvik approach, a claim feature is regarded either as being a mere expression of a non-technical “framework” or as constituting a technical feature that contributes to an inventive step. The appellant seems to argue that such a grouping of features should not be performed, or at least that the “framework” should to some degree also contribute to the inventive step. [2.3] The Board does not share the appellant's opinion that TRIPS would require a modification of the Comvik approach. Article 27(1) TRIPS stipulates that, subject to the provisions of its paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. At the revision conference in the year 2000, A 52(1) was amended to include the expression “in all fields of technology” to bring it explicitly into line with the TRIPS agreement. TRIPS does not give a definition of the term “technology” but leaves it to the 2888 | 3398
T 528/07 – Com, Vick, And TRIPS It As Ye Go
K’s Law – The ebook
member states and their jurisdiction to define and apply this concept (cf. J. Straus, “Bedeutung des TRIPS für das Patentrecht”, GRUR Int. 1996, No. 3, 179, points 35 and 36). The Board accepts that in the present case the claimed subject-matter is technical, i.e. an invention within the meaning of A 52(1), and therefore open to patent protection. However, under Article 27(1) TRIPS a patent shall only be granted if it is new and involves an inventive step. Again, TRIPS does not stipulate how these requirements are to be applied. Article 27(1) TRIPS reflects on the one hand a minimum consensus and on the other hand the member states’ unreadiness uniformly to define the patentability requirements (cf. J. Straus, loc. cit. point 47). The TRIPS member states are free to adopt different standards for each patentability requirement, such as inventive step (cf. Nuno Pires de Carvalho, “The TRIPS Regime of Patent Rights”, 2nd edn., The Hague, 2005, 191). The Comvik approach is one facet of the standard applied by the EPO. The jurisprudence of the Boards of Appeal [3.1] The appellant has cited several decisions of the Boards of Appeal in order to demonstrate that the display of data can have technical character. One of these decisions is T 717/05. The appellant quotes its point [5.4]: … any display of information of the internal state of an apparatus conveys a cognitive content to the user, as this is the fundamental reason for its existence. To exclude all such systems from patent protection cannot be seriously envisaged. [3.2] Decision T 717/05 concerned a game apparatus. Its internal state reflected the state (outcome) of game events. The present Board is inclined to agree with the appellant that if the display of information about the outcome of games played on a computer has technical character, as held in the cited decision, then it may well follow by analogy that the information displayed in present claim 1, albeit not concerned with games, contributes to an inventive step. The Board will therefore review the jurisprudence of the Boards of Appeal on this point. [3.3] T 717/05 relies for authority (see its point [5.5]) on decision T 115/85 […, which] states (at point [7]) that “giving visual indications automatically about conditions prevailing in an apparatus or system is basically a technical problem”. This statement was explained in decision T 833/91 [3.1] in the following way: “Even though the decision [i.e. T 115/85] does not specify said ‘event’ or ‘condition’ by way of examples, it is therefore to be concluded that they were basically of a technical nature such as, for instance, an event calling for an error message”. [3.4] Thus two different interpretations of decision T 115/85 exist in the jurisprudence: either the visual indications must concern technical conditions of the system in order to relate to a technical problem (T 833/91), or they may also concern non-technical conditions (T 717/05). [3.5] The present Board will follow the more restrictive approach according to which only technical conditions of a system can be taken into account. This line has also been taken in other decisions of the Boards of Appeal (see e.g. T 790/92 [4.6]; T 953/94 [3.1]; T 1161/04 [4.5]; T 1567/05 [3.7]; T 756/06 [13]). Moreover, the clear character of exception of this approach appears to be more consistent with the exclusion of “presentations of information” pursuant to A 52(2)(d). [3.6] The present Board will therefore regard features that indicate non-technical conditions of the claimed system, such as data relating to a business undertaking, as not contributing to an inventive step. The Board then examines the features having technical character and comes to the conclusion that the claim does not contain any feature making a non-obvious technical contribution to the prior art. It then continues: [5.7] The appellant has argued that the overall combination of the features has a synergistic effect because they cooperate to solve the technical problem of facilitating the exchange of information and supporting rapid information sharing […]. The Board is not convinced that there is an (unexpected) synergistic effect since features do not interact merely because they have a common goal. But even if there was such an effect it could only exist on a business level. On a technical level nothing in the claim is surprising: the use of a client-server system facilitates the exchange of information and support information sharing (that is what it is for); and the kind of information displayed or transmitted (opportunities, catalogues) has nothing to do with the rapidity with which signals travel from user to user. Furthermore, if the invention has the effect of reducing the traffic load on the net - as has been argued - this is due to user restrictions rather than, say, a protocol determining how the computers transmit data packets over the communication channel. In other words, the load is reduced by nontechnical rather than technical means (also referred to in the jurisprudence of the Boards as a “circumvention” of the technical problem).
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T 528/07 – Com, Vick, And TRIPS It As Ye Go
K’s Law – The ebook
[5.8] It follows that the subject-matter of claim 1 does not involve an inventive step (A 56 EPC 1973). If you wish to download the whole decision, you may find it here. p.s.: If you find the title of this post somewhat obscure, it is an allusion to John Milton’s Allegro, line 33 et seqq.: ... Com, and trip it as ye go / On the light fantastick toe / And in thy right hand lead with thee / The Mountain Nymph, sweet Liberty ...
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J 3/09 – A Modern Hans-in-luck
K’s Law – The ebook
J 3/09 – A Modern Hans-in-luck 10 Jul 2010
The present decision made me think of the Grimm brothers’ fairy tale “Hans in luck” where a young fellow earns a lump of gold. He then exchanges his gold against other things. After a series of foolish exchanges nothing is left. In the present case an applicant paid a considerable amount of claims fees but got indeed very little in exchange. But as the applicant got something (at least potentially), the Board does not accede to its request for reimbursement. To be more specific, the applicant had filed a PCT application comprising 68 claims. The EPO was acting as ISA and found the claims to be non-unitary. Only claims 1 to 15 were searched. Upon entry into the European phase, the applicant paid claims fees for the claims in excess (58 x 45 = 2610 €; times have changed: nowadays 16640 € would have to be paid). The Examining Division (ED) confirmed the lack of unity and invited the applicant to limit the application to the searched inventions. The applicant requested reimbursement of the claims fees but this request was refused. The applicant then filed an appeal against this decision, arguing inter alia that the fee payment did not have any legal basis. I recommend that you read the whole decision, which is well argued. If you wish to do so, you can download it here. If you want to content yourself with extracts, please read on: Before deciding on this matter, the Board explains the relevant proceedings under the EPC 1973 and under the EPC 2000. Unity and search report on entry into European phase. [3.5.1] Under R 112 EPC 1973, where, as here, only part of an international application had been searched by the ISA following an objection of lack of unity, and the applicant had not taken the opportunity to pay the relevant additional fees to the ISA, the EPO was required to consider whether the application in fact complied with the requirement of unity. If it considered that it did not comply, the applicant was to be told that a European search report (ESR) could be obtained in respect of the unsearched parts of the application if a search fee was paid. The Search Division was then to draw up a ESR for those parts of the international application in respect of which search fees had been paid. [3.5.2] The Rules did not state what was to happen if the EPO considered, contrary to the view of the ISA, that the application did comply with the requirement of unity. However, the responsibility for establishing whether or not the application met the requirements of unity of invention under A 82 EPC 1973 ultimately rested with the Examining Division (ED), and the opinion of the EPO acting as the ISA on lack of unity was not final or binding on the ED, see T 631/97 [3.8]. If the ED disagreed with the conclusion in the search report on lack of unity an additional search would have had to be and would have been carried out without payment of any additional fee, since, subject to R 45 EPC 1973, an applicant was entitled to have a unitary invention completely searched. The examination would then have been conducted on the basis of all claims (see T 631/97 and the Guidelines for Examination, C-III, 7.10, and C-VI, 3.1-4). [3.5.3] The equivalent rule under the EPC 2000 is R 164. Under R 164(2), where the ED considers that the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention or protection is sought for an invention not covered by the international search report (ISR), it is to invite the applicant to limit the application to one invention covered by the ISR. This was the procedure followed by the Office in the present case. […] [3.5.4] The procedure on entry into the European phase (i.e., R 112 EPC 1973; R 164) therefore changed with the coming into force of the EPC 2000, as explained in the remarks to the new rule published by the EPO (see OJ EPO 2007, Special Edition 5, 256), “New R 164 simplifies the procedure, and the opportunity to have multiple inventions searched within the framework of one application will be limited to the international phase. On entry into the European phase, non-unitary subject matter should be deleted. The new procedure does not involve any loss of rights for the applicant. The result is just that the applicant will 2891 | 3398
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have to use the appropriate way of having any further inventions searched and examined by filing divisional applications. This will bring the Euro-PCT procedure in line with the Eurodirect procedure.” [3.5.5] It is this change in procedure which has clearly given rise to the present appeal. [3.5.6] As with the position under R 112 EPC 1973, R 164 does not state what is to happen if the ED considers, contrary to the view of the ISA, that the application does comply with the requirement of unity of invention. However, the Board does not consider that the position in this respect has altered with the coming into force of the EPC 2000. Although the procedure has changed as explained in point [3.5.4] above, the Board considers that responsibility for establishing whether or not the application meets the requirements of unity of invention still ultimately rests with the ED, and the opinion of the EPO acting as the ISA on lack of unity is not final or binding on the ED. Indeed the practice of the ED in this respect remains as before, see the Guidelines for Examination, C-III, 7.10 and 7.11.1 (especially 7.11.1(v)). The explanatory remarks (see point [3.5.4] above) appear to the Board to have put the matter correctly by referring to the new limit on the possibility of having multiple inventions searched, while saying nothing about the more general possibility of having hitherto unsearched subject-matter searched. In this respect the legal situation remains unchanged, so that to the extent that an objection of non-unity raised by the ISA in the international phase turns out to be unjustified, the applicant is entitled as of right to have the whole subject matter of his unitary invention searched. [3.5.7] This is also apparent from the wording of R 164(2) giving the EPO the power to invite the applicant to limit the application to one invention covered by the ISR. This implies that where there is in fact only “one” invention there is no sanction. [3.5.8] As it happened, in the present application the ED in fact came to the conclusion that the previous opinion of the EPO acting as the ISA on the lack of unity was correct […]. Legal basis for claims fees [4.1] When on 8 November 2007 the appellant filed the requisite documents for the entry of the application into the European phase and paid the claims fees now in dispute, it was on the basis of R 110(1) EPC 1973. [4.2] While the Board can accept the general principle that fees paid without a legal basis are refundable, the Board cannot accept the appellant’s basic argument in this case that the payment of claims fees in respect of claims 16 - 68 in the application had no legal basis. There clearly was such a legal basis, namely R 110(1) EPC 1973. The wording of the Rule is clear and straightforward. Apart from Rules 110(2) and (3), there is nothing to be found in the rules or elsewhere which modifies the effect of the rule or deprives it of its effect, for example, where claims are later withdrawn or abandoned. [4.3] The Board would add that under the EPC the general principle is that fees, once validly paid, are not refundable unless provision to the contrary is made. This means that fees paid on a legal basis are not normally refundable, even if for example the proceedings are terminated shortly after the fee is paid and the objects for which the fees were paid are not achieved. In other words, the reimbursement of a fee requires there to be special provision (see for example decision J 33/86). As regards the refund of claims fees, as already noted, the appellant does not rely on any specific provision of the EPC in support. [4.4] The basic premise of the appellant’s appeal is therefore false. [4.5] There is therefore no need for the Board to enter into a discussion about what the precise purpose of the provisions requiring payment of claims fees is. Even if it is to compensate for the extra work involved for the EPO with a large number of claims it follows from the above that the claims fee to fall due whether or not any extra work has actually been done in the case in question. The appellant has asked rhetorically whether an examiner could validly make an objection under R 43(5) in respect of claims for which claims fees had already been accepted. The answer is clearly yes. Claims fees are payable within a prescribed time in accordance with the Rules Relating to Fees and have nothing to do with the ED’s assessment under R 43(5) of what is a reasonable number of claims. [4.6] The Board would also point out that, following the Office’s communication of 16 January 2008 under R 161 and R 162 EPC 2000, the appellant had the opportunity to file amended claims and, if appropriate, obtain a 2892 | 3398
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refund of excess claims fees. The legal consequences of such action would have been no different than if it had directly entered the European phase with such reduced number of claims. For whatever reason, however, the appellant did not take such opportunity. Inevitable abandonment of subject matter [5.1] In any event, the Board also does not accept the further premise which the appellant asserts, namely that it was inevitable that the subject matter of the unsearched claims could not be prosecuted in the application, and must therefore be considered as having been (at some unspecified stage) “abandoned”. [5.2] As explained in points [3.5.2] and [3.5.6] above, it was perfectly possible, either before or, more realistically, after the EPC 2000 came into force, that the ED would have concluded that the objection of lack of unity had been wrong, in which event an additional search would have been carried out and the examination conducted on the basis of all claims. [5.3] The appellant has cited the decision of the Enlarged Board (EBA) in G 2/92, where in the concluding opinion it was said that: “An applicant who fails to pay the further search fees for a non-unitary application when requested to do so by the Search Division under R 46(1) EPC [1973] cannot pursue that application for the subject-matter in respect of which no search fees have been paid. Such an applicant must file a divisional application in respect of such subject-matter if he wishes to seek protection for it.” [5.4] This statement was considered in decision T 631/97 [3.7.2], where the Board observed that the reference to “a non-unitary application” in this passage: “... means that the application is non-unitary when the ED upon review agrees with the opinion of the search division.” [5.5] The Board in that decision also noted (see points [3.7.4-3.9.1] of the Reasons) that the practice of the EPO as set out in the then current version of the Guidelines for Examination, C-III, 7.10 and C-VI, 3.4, whereby the ED itself considers the issue of unity and a further search is if necessary carried out, was fully consistent with decision G 2/92. [5.6] The Board also does not consider that decision G 2/92 is authority for the proposition put forward by the appellant that subject-matter which has not been searched is to be regarded as abandoned. The expression “abandoned” had been used in decision T 178/84 and the EBA in decision G 2/92 [II] observed that: “It seems that the word “abandoned” as used in this decision [i.e. T 178/84] is not intended to refer to a public renunciation of the applicant’s desire to obtain patent protection for the relevant subject-matter but is used in a narrower sense simply to refer to the fact that protection for the relevant subject-matter per se within that particular patent application is no longer possible.” As already explained, protection within the present application for unitary subject-matter, even if unsearched, remained possible. [5.7] Although the appellant asserts that the Guidelines for Examination, C-III, 7.11, explaining R 164(2), support the approach that subject matter in respect of which a search fee has not been paid cannot obtain protection in that application and should be regarded as “abandoned”, subject only to pursuing it via a divisional application, in fact this paragraph of the Guidelines states, in conformity with the Guidelines at paragraphs C-III, 7.11.1(v) and B-II, 4.2(iii), referred to above: “(ii) if, during the international search, an objection of lack of unity has been raised and the applicant has neither taken the opportunity to have the other invention(s) searched by paying additional search fees for them, nor amended the claims so that they are limited to the invention searched, and the examiner agrees with the objection of the ISA, he will then proceed to issue a communication under Rule 71(1) and (2), dealing exclusively with the subject-matter of the one and only invention which has been searched.” (Emphasis added by the Board) As already noted in points [3.5.2] and [3.5.6] above, the Guidelines at C-III, 7.11.1(v) go on to state what happens where the examiner does not agree with the objection of the ISA. [5.8] In this regard, the Board generally cannot accept the appellant’s argument that this state of affairs altered following the introduction of the BEST system of examination in 1990. While it is true that following the 2893 | 3398
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introduction of this system the same person who gave the opinion on unity on behalf of the EPO acting as ISA may carry out the examination for unity of invention as principal examiner on behalf of the ED, this will not necessarily be the case and is in any event irrelevant. It cannot be assumed, as the appellant apparently does, that the ED will fail to carry out its obligation to consider the question of unity. Not only are the Guidelines for Examination on this matter clear, as already explained, but any finding may be made the subject of formal decision and an appeal to the Boards of Appeal. [5.9] Furthermore, in the frequent case of an a posteriori objection of non unity, even if justified, the claims may usefully serve as a basis for later limiting the claimed subject-matter to a more specifically defined but now unitary and searched invention. Admittedly, the extent to which this is possible depends on the circumstances of the individual case, but it remains the position that the payment of claims fees for claims exceeding the number of ten may have a useful purpose on its own independently from the question whether all the claims concern unitary subject-matter. The Board then deals with arguments of the appellant concerning the entry into force of the EPC 2000 and an alleged “delay” of the office. The final request of the appellant is more surprising: [8.1] The appellant alternatively requests to be permitted to prosecute all claims in the application subject to payment of additional search fees, with a refund of all fees paid on the related divisional application EP 08164537.6 (which would then be withdrawn). [8.2] The appellant has not suggested any legal basis for the making of such an order, and the Board cannot itself see any basis for doing so in the context of the present appeal proceedings. The only subject of the present appeal proceedings is the appealed decision, i.e. its rejection of the appellant’s request for refund of claims fees paid. Nothing else having been decided by the ED, any decision on the appellant’s requests referred to above would exceed the decision making power of the Board in the present proceedings. Personally, I have never seen the ED invalidate an objection of lack of unity made by the EPO acting as ISA, and I guess it hardly ever happens. So my personal approach would be never to pay claims fees for claims that have not been searched by the EPO/ISA but to file divisionals for the unsearched claims I need to have examined. If the lack of unity objection was made by an ISA other than the EPO, the situation is quite different because there will be a complementary search.
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K’s Law – The ebook
Publish Or Perish (ctd.)
Publish Or Perish (ctd.) 10 Jul 2010
Some time ago, we have seen that the Board of appeals have published a lot more decisions in 2009 than in 2008. What are the tendencies for 2010 ? Here is a first status report (click to enlarge):
During the first half of 2010, the number of publications was generally higher than in 2008 and 2009. However, things appear to have slowed down a bit by now. Will we go beyond 2000 published decisions in 2010 ? I guess not, but bets are still being accepted. NB: The numbers are not precise to the last digit as the Boards sometimes publish decisions twice and also publish translations (for the decisions published in the Official Journal) separately. Please note that what is counted here is the number of decisions made available on the DG3 site and not the number of decisions taken by the Boards.
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T 520/08 – Quick Inspection
K’s Law – The ebook
T 520/08 – Quick Inspection 9 Jul 2010
** Translation from the German ** [3.1] Document D4 is an Australian provisional application which was not available to the public. However, the priority of document D4 has been claimed in European application D1, which had been published two days before the priority date of the impugned patent. Pursuant A 128(4), after the publication of a European patent application, the files relating to the application may be inspected on request. This ensures public availability. The [patent proprietor] pointed out that for practical reasons file inspection could not possibly have been obtained only two days after the publication at that time, but they have not filed any evidence proving this assertion. Therefore, the Board follows the argument of the [opponent] according to which document D4 was available to the public before the priority date of the impugned patent and constitutes prior art under A 54(2). This is tough but quite logical. I sometimes check how long it takes before documents I have filed via Epoline appear on Register Plus. It is not uncommon that I have to wait for several days. At the priority date of the patent under consideration (October 1999) Register Plus had not yet gone live and it appears to be very unlikely that the priority document was de facto publicly available two days after the publication of application D1. Perhaps the patentee could have obtained an affidavit in this regard. However, as it did not submit any evidence, the Board logically followed the argument of the opponent. To read the whole decision (in German), please click here.
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T 2013/08 – Singling Out Prohibited
K’s Law – The ebook
T 2013/08 – Singling Out Prohibited 8 Jul 2010
In the preceding post we saw that the main request was found to be a “wish claim” to be rejected for lack of clarity (and also for lack of inventive step). The first and second auxiliary requests shared this fate. The applicant also filed a third auxiliary request claim 1 in which it included details on the materials to be used, as suggested by the Board: Tubular target with a cylindrical carrier tube and at least one target tube arranged on its outer surface, wherein a connecting layer is arranged between the target tube and the carrier tube, characterised in that the connecting layer is electrically conducting and has a wetting degree of >90%, in that the degree of wetting is present both on the exterior surface of the carrier tube and on the interior surface of the target tube, in that the carrier tube is made of steel or titanium, in that the connecting layer has a solder material formed of In, which is arranged directly on the carrier tube, in that the carrier tube is optionally coated with a nickel-based adhesive layer, and in that the material of the target tube is formed of Mo. ** Translation from the German ** [2] Claim 1 of the third auxiliary request is based on claims 1, 3, 6, 9, 11 and 12 and page 3, lines 7 to 8 (carrier tube “made of steel or titanium”). [2.1] However, the deletion of all the materials except Mo from the list of possible target tube materials according to original claim 6 of the application (“Cu, Al, Zr, Mo, W, Ti, Cr, Ni, Ta, Nb, Ag, Zn, Bi, Sn, Si, or an alloy based on at least one of these elements or of a ceramic material”) is a first purposeful (gezielte) selection. The limitation of claim 1 to a solder material according to original claim 9 is a second selection among the two disclosed possibilities (“conducting adhesive or a solder material”) and the purposeful selection of “In” among the list of solder materials of original claim 11 (“contains or is formed of In, Sn, InSn, SnBi, or other low melting solder alloys having a liquidus temperature below 300° C”) is a third selection. Finally, the limitation of claim 1 according to which the optional nickel-based adhesive layer is provided on the carrier tube only is a fourth selection from the three possibilities named in claim 12, i.e. that “the carrier tube and/or the target tube are coated with a nickel-based adhesive layer.” [2.2] Thus it is obvious that these four selections have resulted in a “singling out” from several lists, whereby an embodiment corresponding to a combination of features has been created in an artificial way, which embodiment as such has no basis in the application as filed (see T 894/05 [1.4], T 555/04 [6.2.2], T 801/02 [2.2.1-2.2.2], T 994/97 [3], T 942/98 [2.1,2.4]). [2.3] On the other hand, when departing from the second exemplary embodiment of the application, according to which a steel carrier tube was provided with a Ni intermediate layer and then soldered to a Mo tube the interior surface of which has also been provided with a Ni layer, by means of In solder material, i.e. where a Ni adhesive layer is provided on the carrier tube and on the target tube, there has been an intermediate generalisation concerning the carrier tube material titanium while at the same time omitting the second Ni adhesive layer provided on the target tube and rendering optional the first Ni adhesive layer on the carrier tube, respectively. This has no basis in the application documents as filed either. […] [2.4] The [applicant] has argued that although there is no explicit basis for omitting the second Ni adhesive layer during the manufacture of a tubular target according to the second exemplary embodiment, the skilled person would have seen an implicit disclosure of this omission of the Ni layer. This argument cannot be accepted because according to the Board there is no implicit general disclosure in the original documents which would make the skilled person realize, unambiguously and doubtlessly, that when the target tube is made of molybdenum the second nickel-based adhesive layer on the target tube can be omitted and that the first nickel-based adhesive layer does not necessarily have to be provided on the carrier tube, respectively. In particular, when considering the second exemplary embodiment, wherein a molybdenum tube is used […], the skilled person is taught the contrary. 2897 | 3398
T 2013/08 – Singling Out Prohibited
K’s Law – The ebook
[2.5] It follows from what has been said that claim 1 of the third auxiliary request does not comply with the requirements of A 123(2). As a consequence, this request cannot be granted. There is much to be said on the present application of A 123(2) by the Boards, and we will come back on this subject in several forthcoming posts. The present decision is not spectacular but it demonstrates the tendency of the Boards to consider that choices among alternatives in claims and the resulting “singling out” can result in violations of A 123(2). It is not because you provide alternatives in a claim that you have provided possible fallback positions. Obviously, this will have an impact on how patents are to be drafted, but we will deal with this question later. If you wish to read the whole decision (in German), you may find it here.
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T 2013/08 – Wishful Thinking?
K’s Law – The ebook
T 2013/08 – Wishful Thinking? 7 Jul 2010
One of the easiest ways to fail paper A of the EQE is to write a “wish claim”. (Been there, done that. ☺) Nevertheless, in real life such claims are not uncommon and often granted. However, when a claim comes under close scrutiny during appeal proceedings, the applicant/proprietor may wish not to have written a wish claim. Claim 1 of the main request read: Tubular target with a cylindrical carrier tube and at least one target tube arranged on its outer surface, wherein a connecting layer is arranged between the target tube and the carrier tube, characterised in that the connecting layer is electrically conducting and has a wetting degree of >90%, in that the degree of wetting is present both on the exterior surface of the carrier tube and on the interior surface of the target tube, and in that the material of the target tube is formed of Cu, Al, Zr, Mo, W, Ti, Cr, Ni, Ta, Nb, Ag, Zn, Bi, Sn, or an alloy based on at least one of these elements or of a ceramic material. ** Translation from the German ** [1.1] The explanations made by the applicant with regard to the percentage of the degree of wetting […] appear to be acceptable. […] The Board agrees with the Examining Division that the degree of wetting first and foremost depends on the materials used (i.e. the material of the carrier tube, the target material, the adhesive layer and the solder material) as these materials determine the thermal expansion coefficient and the tendency of these materials to form alloys with each other or the tendency of a material to oxidise under the soldering conditions. The [applicant] has argued that the wetting degree as such is independent from the materials involved […] but it has not provided any evidence for this assertion, so that the assertion cannot be accepted. Claim 1 of all requests defines a connecting layer that “has a wetting degree of >90%”. The appellant argues that such a wetting degree is not reached in the exemplary embodiment of [document] D1. However, D1 apparently does not teach to carry out any other process steps than the description of the present application in its description of the manufacturing of the claimed tubular targets according to claim 1. Either the feature “has a wetting degree of >90%” defines a desideratum without there being a disclosure of the necessary process steps in the description or without claim 1 […] containing these necessary features in the form of a product-by-process claim, respectively. Otherwise the process of the prior art, e.g. according to D1, would have to obtain the same desired results when using adhesive layers using nickel and copper – which are preferred layer materials according to the present application […] – and the same Indium solder material […]. Incidentally, the wetting degree has not been determined for any of the examples 1 to 4 of the present application – which have been realized with the metals Al, Mo, Cr and Al. The present application does not describe a method for non destructively determining the wetting degree on target materials […]. If claim 1 does not define a desideratum, then one has to assume that the wetting degree depends on the material. Then claim 1 should define all possible materials for the carrier tube and the solder material to be used, as well as the optional and preferred adhesive layers, in order to fulfil the requirements of A 84. […] Thus the wetting degree does not appear to be suitable to clearly distinguish the subject-matter of claim 1 from the subject-matter of D1. Incidentally, we have discovered a more learned way of saying “wish claim”: just say “claim defining a desideratum”. ☺ Next time we shall see what happened when the applicant followed the advice of the Board and introduced certain materials into the claim. 2899 | 3398
T 2013/08 – Wishful Thinking?
K’s Law – The ebook
If you wish to read the whole decision (in German), you may find it here.
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T 8/06 – Sunscreen Fatality
K’s Law – The ebook
T 8/06 – Sunscreen Fatality 6 Jul 2010
Now that the hot days are back, let us study a sunscreen decision. This decision shows once again how dangerous an unfortunately worded disclaimer can become. Claim 1 as filed read: 1. A method of inhibiting the harmful effect of UVR exposure to the human skin comprising topically applying a therapeutically effective amount of genistein to the skin at a time sufficiently close to the time of UVR exposure to inhibit UVR-induced damage to the skin. Following a negative search report, the claim was amended to a Swiss-type claim: 1. Use of genistein in the preparation of a chemopreventive agent, said chemopreventive agent not being merely a sunscreen, for treating human skin in order to inhibit the harmful exposure to ultraviolet radiation. Claim 1 was finally granted as follows: 1. Use of genistein for the preparation of a topical chemopreventive medicament, said chemopreventive medicament not being merely a sunscreen, for the treatment of human skin in order to inhibit the harmful effect of exposure to ultraviolet radiation. The opposition division (OD) maintained the patent in amended form. At the oral proceedings before the Board the patent proprietor defended the maintenance of the patent on the basis of a new main request reading as follows: 1. Use of a therapeutically effective amount of genistein for the preparation of a topical chemopreventative medicament for the treatment of human skin in order to inhibit UVR-induced aging or UVR induced photocarcinogenesis by chemoprevention, said medicament applied at a time sufficiently close to the time of UVR exposure to inhibit said aging or photocarcinogenesis. [3.1] Claim 1 as granted is subject to a proviso, namely “said medicament not being merely a sunscreen”. According to the [patent proprietor], this meant that sunscreens acting exclusively by blocking UV radiations were excluded. Hence this proviso in granted claim 1 excludes from the protection conferred the preparation of medicaments being only sunscreens. This finding was not contested by any Party. [3.2] Claim 1 as amended differs from claim 1 as granted mainly in that the proviso had been deleted. With the deletion of the proviso, claim 1 no longer explicitly requires that the medicament is not a mere sunscreen. [3.2.1] According to the [patent proprietor] the feature “in order to inhibit UVR-induced aging [or UVR induced photocarcinogenesis] by chemoprevention” indicated the mode of action of the medicament which action therefore comprised necessarily a physiological action, thereby excluding pure UVR blocking action, as a mere sunscreen would do. [3.2.2] Claim 1 is formulated according to the Swiss-type claim format which is designed to protect a further new and inventive therapeutic application, in the present case, the preparation of a medicament for the inhibition of UVR-induced aging. Claim 1 further stipulates that the therapeutic application is achieved by chemoprevention. However, the mode of action of a medicament is not a technical feature in a Swiss-type claim, but is merely a technical insight into how the medicament may work. The indication of the mechanism of action of a medicament does not add any new technical feature to the Swiss-type claim, because the mechanism of action necessarily underlies the therapeutic use of that medicament. In the present case, the technical effect which is achieved by the topical application of the medicament comprising genistein, irrespective of any mechanism of action, is simply the prevention of UVR-induced aging, which is a technical feature already indicated in the claim. Accordingly, the [patent proprietor’s] attempt to promote a technical insight, here the 2901 | 3398
T 8/06 – Sunscreen Fatality
K’s Law – The ebook
mechanism of action, into a “technical effect" cannot succeed, the actual technical effect underlying the use of genistein for preparing the medicament being the prevention of aging. [3.2.3] The [patent proprietor’s] further argument that the discovery of the mechanism of action opened new ways of treating UVR-induced aging cannot change the above findings, because the technical features reflecting these new modes of treatment, which would exclude the medicament from being merely a sunscreen, are not reflected in the claims. As regards the mode of treatment, claim 1 requires merely that the medicament be applied “at a time sufficiently close to the time of UVR exposure to inhibit said aging”, which requirement does not exclude the medicament from being a sunscreen. [3.2.4] Therefore, the Board concurs with the [opponent] that claim 1 as amended covers the possibility of the medicament being a mere sunscreen, all the more so because paragraph [0018] of the patent-in-suit foresees that the composition comprises UV blockers. [3.3] Thus, claim 1 as amended according to either request encompasses the preparation of mere sunscreens, which embodiment was excluded from claim 1 as granted. Hence, the deletion of the feature “said medicament not being merely a sunscreen” in claim 1 has the effect of broadening the scope of the amended claim vis-à-vis claim 1 as granted with the consequence that claim 1 […] has been amended in such a way as to extend the protection conferred by the granted patent contrary to the requirement of A 123(3). […] The patent is revoked. To read the whole decision, click here.
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T 809/07 – Trouble Between Examples
K’s Law – The ebook
T 809/07 – Trouble Between Examples 5 Jul 2010
Claim 1 of the main request was identical with claim 1 as granted: Paint and coating material system comprising a) at least one solid component comprising at least one organic or inorganic white, black or chromatic pigment, organic or inorganic fillers, or mixtures thereof, and b) at least one binder component; characterised in that the components of the system in water, with an energy input of less than 150 J/cm3, based on the sum of the volumes of the components and water, result in an aqueous dispersion having a fineness-ofgrind (Körnigkeit) of <60 μm (determined in accordance with ISO 1524: 1983). In the following passage the Board deals with the ground for opposition under A 100(b) (insufficiency of disclosure). ** Translation from the German ** [3.1] Present claim 1 describes the invention via the definition of components a) and b) and via the condition “that the components of the system in water, with a specific energy input of less than 150 J/cm3, based on the sum of the volumes of the components and water, result in an aqueous dispersion having a fineness-of-grind (Körnigkeit) of <60 μm (determined in accordance with ISO 1524: 1983).” This condition fixes values below which the parameters “energy input” and “fineness-of-grind” have to lie. In order to obtain a composition according to claim 1, the skilled person has to know, without any inventive input (Zutun), how to choose and process, as the case may be, the components so as to make the parameters lie below these values (see T 516/99 [3]). When carrying out the claimed invention, the skilled person may rely on the disclosure of the patent as well as his/her common general knowledge on the date of priority of the patent (see T 219/85 [2.3.2]). [3.2] The [patent proprietors] expressed the opinion that in order to obtain the domains fixed in claim 1 for the parameters “energy input” and “fineness-of-grind”, it was sufficient to provide the solid components with desired fineness (Feinverteilung) of <60 μm. Paragraph [0098] of the patent contained the instructions allowing the skilled person to grind the solid components such as to obtain this fineness. It may be assumed that the fineness of the solid components has an influence on the energy input that is required in order to obtain a dispersion having a fineness-of-grind of <60 μm when dispersing in water. However, claim 1 is not limited with respect to the particle size (Korngrößen) of the components. Moreover, even when the components are ground to particle sizes of <60 μm it cannot be guaranteed that such a composition fulfils the requirements defined in the characterising part of claim 1. The [opponent] is right in referring to paragraph [0014] of the patent: “Solid component a) is not limited in respect to its form. In particular, it is possible to use powders, granules, slugs (Schülpen) and pellets.” However, the last three forms mentioned in this paragraph are obtained by granulating, compressing and pelletising, i.e. they are agglomerated. Thus, even when the component is ground to a particle size of <60 μm, these forms have a secondary particle size that is significantly greater than 60 μm. Moreover, it is precisely paragraph [0098] cited by the [patent proprietors] that states that the solid components tend to form aggregates or agglomerates, for example when being dried after the preferred wet crushing treatment. […] Whether such secondary particles which have grown through agglomeration can be broken with an energy input of less than 150 J/cm3 when being dispersed in water, as required by claim 1, and if so, how it can be done, is something that the skilled person cannot find neither in the patent, nor in the common general knowledge.
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T 809/07 – Trouble Between Examples
K’s Law – The ebook
Comparative examples 1 and 2 of the patent provide evidence that the skilled person encounters problems when he/she tries to obtain “energy input” and “fineness-of-grind” values as required in claim 1. In these examples much higher energy input was required in order to obtain the desired fineness-of-grind (497 J/cm3 in comparative example 1 and more than 4000 J/cm3 in comparative example 2 […]). The examples and comparative examples of the patent do not contain information on the particle size distributions of the starting materials used or the fineness-of-grind of the components before they are dispersed in water. Thus the argument of the [patent proprietors] according to which additional grinding work (Zerkleinerungsarbeit) was required in the comparative examples is not supported by the patent. Therefore, the skilled person cannot find in the examples and comparative examples of the patent how to proceed in order to generally avoid the high energy input which is required in the comparative examples. As a consequence, the skilled person cannot anticipate how a particular combination of the components a) and b) will behave with respect to the parameters mentioned in the characterising part of claim 1. If he/she wishes to implement the subject-matter of claim 1 over its whole breadth, he/she has to find out via extensive trials how to choose components a) and b) and how to process them so that the compositions fulfil the requirements set out in this claim. This, however, cannot be expected from (zuzumuten) the skilled person (see T 516/99 [3.1, last two paragraphs]). [3.3] The [patent proprietors] have pointed out during the written proceedings that the comparative trials filed on February 1, 2007 show that the opponent was capable without further ado to “establish that certain examples taken from the prior art have an energy input lying in the claimed domain.” […] However, this does not change the fact that in each particular case the skilled person has to determine the suitability of the components for compositions according to the invention by trial and error, by determining the energy input needed for and the fineness-of-grind after dispersing in water. Therefore, this argument is not in conflict with the conclusions drawn under point [3.2]. [3.4] Consequently grounds under A 100(b) make it impossible to maintain the patent according to the main request, which corresponds to the patent as granted. NB: In the headnote, the Board accepts to generalize a bit: “If the claims require that a certain target is reached (in the present case, that a parameter lies below a certain value) then feasibility (Ausführbarkeit) pursuant A 100(b) EPC is not given if the patent does not provide any hint to the skilled person how he/she can reach this target without unacceptable research efforts outside the exemplary embodiments.” To
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the
whole
decision
(in
German),
NB: This decision is simultaneously reported on Le blog du droit européen.
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you
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here.
T 426/07 – Interpreting Silence
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T 426/07 – Interpreting Silence 3 Jul 2010
In the present case the Opposition Division (OD) had maintained the opposed patent in amended form. Both parties filed an appeal. The Board rejected the main request (claims as granted) for lack of inventive step and did not admit late filed auxiliary request 1. The following discussion concerns the second auxiliary request, which corresponds to the claims as maintained by the OD. ** Translation from the French ** [4.1] The patent proprietor, who in its written submissions had been silent on its position with respect to the decision of the OD to maintain the patent in amended form – which is contested by the appeal filed by the opponent – has declared during the oral proceedings (OPs) that it did not abandon this version of the patent, which has become its auxiliary request 2. Moreover, the Board has seen in its statement of grounds of appeal (page 11) that [the patent proprietor] fully agreed with the opinion of the OD […]. The patent proprietor acknowledged that it had not responded to the objection under A 123(2)(3) but pointed out that this was because the objection was manifestly unfounded, as he would show during the OPs. [The proprietor] requested that the appeal filed by the opponent be dismissed. [4.2] The opponent has objected to [the request] which during the proceedings has become the second auxiliary request, because of its belated filing. The explanations provided by the opponent during the OPs show that the opponent is of the opinion that the dismissal of the patent proprietor’s appeal entails the setting aside of the first instance decision and that the patent proprietor’s silence [with respect to this decision] in its written submissions until the OPs is to be understood as the expression of its disagreement with the text of the patent as maintained by the OD. According to the opponent, the request to dismiss the appeal filed by the opponent and, therefore, to maintain the patent in its version accepted by the OD, which request was first made during the OPs, is a new request. [4.3] This being said, it has to be noted that both the patent proprietor and the opponent have filed requests and each has attacked the part of the decision by which it was adversely affected, in conformity with A 107. The Board’s dismissal of the main request on which the patent proprietor’s appeal is based and the refusal to admit its subsidiary request 1 result from the examination of the decision of the OD dismissing the patent proprietor’s main request. This dismissal has not required the assessment of the decision to maintain the patent in its amended form (auxiliary request 2). Consequently, the dismissal of the patent proprietor’s appeal does not ipso facto entail the setting aside of the decision of the OD. Quite to the contrary, this decision is confirmed: the part of the decision that is attacked by the patent proprietor is confirmed by the dismissal of its appeal. The part of the decision granting the patent proprietor’s request cannot be questioned by the latter, as [the patent proprietor] is not entitled to act [against this part of the decision] under A 107. [4.4] It is true that the patent proprietor, as a respondent to the appeal filed by the opponent, has not explicitly requested in its written submissions that this appeal be dismissed. It contented itself with requesting that the decision refusing its main request (corresponding to its present main request […]) be set aside. However, on one hand, this silence has no impact on the decision of the first instance, which survives the dismissal of the patent proprietor’s appeal and remains valid as long as it has not been set aside. On the other hand, the interpretation of this silence as being the expression of the patent proprietor’s disagreement with the text of the request that had been maintained (A 113(2)) is tantamount to the presumption that the patent proprietor has abandoned its right to a patent. Such an interpretation goes against the established case law according to which the abandonment of a right cannot be presumed. If it is implicit, it has to be clearly confirmed by the proprietor’s behaviour (for an 2905 | 3398
T 426/07 – Interpreting Silence
K’s Law – The ebook
illustration of this principle applying to various kinds of rights, see J 11/87 [3.6], J 7/87 [6], J 11/94, T 942/01 [1.3] and T 344/02 [2]). In the present case, the patent proprietor has never given the impression that it abandoned this request. Neither has it given the impression that its main request which it defended within the framework of its appeal was to replace the auxiliary request 2 which the OD had allowed, which very decision has been appealed by the opponent. [The patent proprietor’s] appeal has [tried to] uphold a broader version of the patent. The intuitive (spontanée) interpretation of this behaviour is that to its mind, the request to dismiss the other side’s appeal necessarily followed from its own appeal aiming at a broader patent. Conversely, deducing from its silence that it abandoned the benefits of the decision of the first instance with respect to the maintenance of the patent in amended form is a mere speculation that is not coherent with the circumstances of the case. It follows from what has been said that the patent proprietor as respondent has to be granted the right to defend the appealed decision. The lack of arguments in its written submissions can only have an impact on the extent of the means he may assert in application of Article 12 RPBA. Alas, the auxiliary request was found not to comply with A 123(2) and the patent was revoked. To read the whole decision (in French), you may click here.
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Interpretative Spotlight: “consists”
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Interpretative Spotlight: “consists” 3 Jul 2010
It is generally held that the term “comprising” opens a claim whereas “consisting” closes it. The present decision shows that this cannot be taken for granted if the application suggests otherwise. Claim 1 as granted read: 1. Exhaust gas recirculation system for an internal combustion engine, in particular a diesel or spark ignition engine, with an exhaust gas recirculation valve for recirculating exhaust gases into the air supply system of the internal combustion engine, the exhaust gases flowing through a cooling device, also with a bypass pipe (17) which bypasses the cooling device (10) and with a separating filter (18; 19), the inlet of which is connected to an exhaust gas recirculation line and has two passages, one of which is connected to the cooling device (10) and the other of which is connected to the bypass pipe (17) in such a way that the exhaust gases can flow controllably alternatively through the cooling device (10) or the bypass pipe (17), wherein the separating filter (18; 19) is spring-controlled (21) for one operating position and pressure-controlled for the other operating position and is held in the normal operating position by a spring (21), characterised in that the separating filter (18; 19) is arranged in front of the cooling device (10) and is an integral component of the cooling device (10) and consists [language of proceedings: besteht] of precisely one bypass valve (18) or precisely one bypass shutter (19), which is arranged in the junction in front of the cooling device (10) and the bypass pipe (17) and in a first operating position closes the cooling device (10) and in a second operating position the bypass pipe (17). ** Translation from the German ** [2.2.1] The parties do not agree on whether the term “consists” (besteht) in claim 1 is to be understood as being a closed term or not […]. [2.2.2] (a) In principle the terms used in patent documents are given the usual meaning they have in the prior art, unless the description unambiguously requires a special meaning (see, for example, T 1321/04). If a patent document explicitly uses terms in a meaning that is different from the usual meaning, then this meaning is decisive (geht vor). (b) Claim 1 as originally filed discloses a separating filter the “inlet of which is connected to an exhaust gas recirculation line and which has two passages”. […] Moreover, it is disclosed that the valve 18 and the shutter 19 are bypass elements and form a separating filter. It follows that the separating filter has both an inlet and two passages as well as the valve 18 and the shutter 19. The characterising part of claim 1 claims a separating filter having precisely one bypass valve or precisely one bypass shutter. The term “precisely” only determines the number of bypass valves or bypass shutter but does not exclude that the separating filter has more features, such as a housing, valve seats etc. (c) Thus one may conclude from the application as filed that claim 1 does not use the term “consists” as a closed term (im abschliessenden Sinne). To read the whole decision (T 523/08, in German), you may click here.
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T 1749/06 – Brain Inspection Refused
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T 1749/06 – Brain Inspection Refused 2 Jul 2010
The present decision deals with the refusal of an application by the Examining Division (ED). Claim 1 of the main request read: 1. A computer-readable medium (54) encoded with a data structure for use in providing a graphical icon (12) for display on a display (14) of a portable communications device (10), characterized in that said data structure is encoded as digital data indicative of said graphical icon defined by alternating light and dark stripes (30, 32), that selected stripes of said light and dark stripes change from light to dark and back to light to indicate a shadow adjacent an edge of said icon and from dark to light and back to dark to indicate a highlight adjacent another edge of said icon, and that altogether said light and dark stripes with shadows and highlights provide said icon with a three-dimensional appearance. The only difference with respect to the claim rejected by the ED was the addition of the reference numbers. [4.1] The ED objected in the decision under appeal that some features of the claims were directed to the presentation of information, as they described the cognitive information of the icon, and could therefore not be considered when assessing inventive step. [4.1.1] The Guidelines for Examination (C-IV 2.3.7, June 2005, the version in force at the time of the decision under appeal. The text has remained unchanged through to the April 2009 version currently in force) state that “a presentation of information defined solely by the content of the information is not patentable” and that “the arrangement or manner of representation, as distinct from the information content, may well constitute a patentable technical feature”. The present application relates to the manner of representation of the icon and not to its contents, i.e. whether the icon depicts a house or a butterfly. [4.1.2] In decision T 1194/97 [headnote I], invoked by the ED to support their conclusion, the then deciding board held that “A record carrier characterised by having functional data recorded thereon is not a presentation of information as such and hence not excluded form patentability by A 52(2)(d) and (3)”. The converse, however, i.e. that from the lack of functional data the presentation of information as such can be inferred, is not true. Hence decision T 1194/97 does not support the conclusion of the ED. 4.1.3 The present board agrees with the finding of T 1194/97 and the statements of the Guidelines cited above. Presentation of information arises when “what is displayed” is claimed without specifying “how it is displayed”. Claim 1 comprises the feature of an icon formed of dark and white stripes having thus a three-dimensional effect, but does not comprise the icon’s cognitive content, i.e. its specific shape. The latter feature, i.e. the icon representing e.g. a butterfly, is a presentation of information, but not the former. [4.1.4] The board finds for these reasons that the features of the characterizing portion of claim 1 do not fall under the category of presentation of information within the meaning of A 52(2)(d). [4.2] The ED further invoked decision T 1121/02 for ignoring the features of the claim leading to an icon’s three-dimensional appearance when assessing inventive step, as these features depended only on the perception of the viewer (“happens in the brain of the viewer”) and were therefore not technical. [4.2.1] Claim 1 of the application leading to decision T 1121/02 was directed to an elongate fencing element having along its surface contrasting markings resembling the warning pattern of an animal (e.g. a bee) which acted as a deterrent to another animal (e.g. a horse or cow). The then deciding board found that the contrasting markings were not technical features, as the explanation provided in the application for the deterring effect was only a theory (the animals had a built-in instinct which warned them that other creatures bearing dark and light colouring were harmful and should be avoided), although it provisionally accepted that the markings had an effect on the animal seeing them. The contrasting markings therefore did not contribute to the solution of any technical problem by providing a technical effect and hence had no significance when assessing inventive step (Summary of facts and submissions, points V and VII).
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T 1749/06 – Brain Inspection Refused
K’s Law – The ebook
[4.2.2] The present board is aware of the difficulty of assessing whether or not a feature contributes to the technical character of a claim. It agrees, however, with the approach followed in decision T 258/03 [4.6] that even a so familiar activity such as the act of writing using pen and paper has technical character. Applying the same approach to the medium of claim 1, the board finds that the feature of modifying the edge of an icon with alternate dark and light stripes has technical character and should be considered when assessing inventive step. [4.2.3] The board is further of the view that the test “happens in the brain of the viewer”, invoked by the ED, is not useful for deciding whether a feature contributes to the technical character of a claim or not. Inventions such as the cinematograph are based on an effect which only “happens in the brain of the viewer”, namely that the projection of a rapid succession of still images on a screen creates the illusion of fluent motion. Although the illusion of perceiving a real action is only created in the viewer’s brain, nobody would seriously contest that the cinematograph is an invention based on technical features. It may be argued that the apparatus of the cinematograph comprises technical elements with the ultimate purpose to create the illusion of motion in the viewer’s brain. However, in the present case the dark and light stripes are also technical elements which contribute to creating the three-dimensional illusion. [4.3] For these reasons, the board considers that the features of the characterizing portion of claim 1 have technical character and should be considered when assessing inventive step. To read the whole decision, click here.
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T 1349/07 – Not Just Good-Lookin’
K’s Law – The ebook
T 1349/07 – Not Just Good-Lookin’ 1 Jul 2010
Claim 1 of the main request before the Board read: 1. A transparent or translucent heavy duty liquid composition in a clear bottle comprising: (a) 10 to 85% by wt. of a surfactant selected from the group consisting of anionic, nonionic, cationic, amphoteric, zwitterionic surfactants and mixtures thereof; (b) 0.001 to 5% by wt. of an enzyme selected from the group consisting of proteases, lipases, cellulases, oxidases, amylases and mixtures thereof; and (c) 0.001 to 3% by wt. of an antioxidant selected from ascorbic acid, BHA, BHT and mixtures thereof; wherein the composition has 50% light transmittance or greater using a 1 cm cuvette at wavelength of 410-800 nanometers; and wherein the bottle has a light transmittance of greater than 25% at wavelength of 410-800 nm. Its novelty not being disputed, the Board deals with the assessement of inventive step: [1.2.1] The Board concurs with the proprietors that the technical problem mentioned in the patent-in-suit (see paragraphs [0001], [0009] and [0010]) is understood by the skilled reader as that of rendering available enzyme-containing TTHDL compositions bottled in clear bottles that possess improved enzyme protection against UV-damage (e.g. during storage in the sunlight). This has not been disputed. [1.2.2] The opponents have argued however that the aspects of the invention referring to transparency, translucency and clearness were merely aesthetic properties, not contributing to the solution of any technical problem and, thus, the purely esthetical features of present claim 1 were not to be considered as part of the technical problem solved for the purpose of assessing inventive step, as established in T 641/00. [1.2.3] The Board notes preliminarily that, as also indicated by the Opposition Division in the decision under appeal, the cited T 641/00 explicitly acknowledges (e.g. at point [7] of the Reasons, also reflected in the Headnote) that even a non-technical aim may legitimately appear “as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met”. However, in the present case, it is apparent to the Board that the visible-light transparencies of the composition and of the bottle defined in claim 1 under consideration (also in the quantitative terms of their visible-light transmittances) are not just esthetical desiderata contributing to the framework of the technical problem to be solved, but also technically relevant constraints of such technical problem. Indeed, the visible-light transmittance requirements contribute to the definition of the nature of the possible ingredients of the composition and of the materials and production methods to be possibly used for making the bottle, thereby also necessarily contributing in determining the level of harmful UV radiation actually reaching the enzyme(s) e.g. during storage in the sunlight of the bottled composition and against which the enzyme(s) must be protected. Hence, they also contribute in specifying technical aspects of the technical aim to be achieved. [1.2.4] Therefore, the Board has no reason for disregarding any part of the technical problem mentioned in the patent- in-suit as identified above at point [1.2.1], for the purpose of assessing inventive step. To download the whole decision, you may click here.
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T 506/07 – Embryologists Are Farsighted
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T 506/07 – Embryologists Are Farsighted 30 Jun 2010
When inventive step was discussed, the [patent proprietor] argued that the skilled person in the art was an embryologist and would never have consulted any of the documents E3 to E5 belonging to the field of crystallography. He would also not have used the loops that were known for spreading bacterial cultures, inter alia because these loops were not used to form thin films. The Board does not agree: [5.3] The Appellants’ argument that the person skilled in the art of embryology would not have been aware of documents E3 to E5 was based on point 6 of both affidavits E13 and E14. These affidavits do, however, not take into account that the problem to improve the handling is not a problem specific to embryology but a mechanical one. When solving this mechanical problem, the person skilled in the art would have consulted the art in neighbouring fields where the same problem could occur and might have been solved when vitrifying biological samples. Consequently, he would have been aware of document E3. This document deals with cryocrystallography and discloses flash cooling of macromolecular crystals such as proteins in a loop […], optionally in the presence of a cryoprotective additive […]. Document E3 mentions that the introduction of “a loop-mounting technique was a major advance ...” as compared to glass capillary tubes, fine glass fibres or small glass spatulas […]. Therefore it was obvious to the expert to improve the handling of the samples on an electron microscopy grid by attaching the grid to a loop as disclosed in document E3. Hence, the subject-matter of claim 1 of the Main Request and of the First Auxiliary Request does not involve an inventive step. To read the whole decision, please click here.
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T 452/08 – Description Leading Into The Trap
K’s Law – The ebook
T 452/08 – Description Leading Into The Trap 29 Jun 2010
The present decision gives a textbook example of how an amendment of the description can lead into the inescapable trap. ** Translation from the German ** [2.1] Claim 1 concerns a package “comprising a plurality of coiled rolls of plastic film wrapped insulation material panels made of mineral wool, in particular glass wool, that are designed to be laid as wedging felt (Klemmfilz)”. […] [2.2] When assessing whether the subject-matter of claim 1 has been amended in a way that extends beyond the content of the application as originally filed and, therefore, violates the requirements of A 123(2), the meaning of the expression “wedging felt” plays a decisive role. [2.3] The expression “wedging felt” was only mentioned in the second and third paragraphs of the application as filed. It was not mentioned in the claims as originally filed. [2.4] The second paragraph of the originally filed description consisted in the following four sentences: “1 Insulation material panels made of mineral wool are used in various ways for insulating heat. 2 One major domain of application is the insulation of roofs, in particular the insulation of steep roofs. 3 To this aim, the insulation material panels are fixed between the rafters (Dachsparren); for the insulation of new constructions and for the insulation of old buildings that are to be renovated one mostly uses so-called “wedging felts”. 4 Wedging felts are insulation material panels bearing marks provided transversely to the longitudinal direction of the panels such that, depending on the distance between the rafters between which the insulation material is to be inserted, a corresponding portion of an insulation material panel is cut to length, using the transverse marks as guiding line for cutting, and then wedged (mit Klemmsitz … eingebracht) between the rafters” (bold text and sentence numbering introduced by the Board). Hereby the application as originally filed defines which insulation material panels according to the invention are to be subsumed under the expression “wedging felt”. A binding agent content of 6 to 7 wt. % is not disclosed anywhere in the initially filed application for the [wedging felts ?] mentioned above, nor for the wedging felts according to the invention, neither explicitly nor implicitly. [2.5] After having received the communication pursuant R 51(4) EPC 1973 the applicant filed an amended second paragraph of the description […], together with an amended claim 1 comprising the additional sentence “designed to be laid as wedging felt”. The amended second paragraph of the description then constituted paragraph [0002] of the patent as granted. Paragraph [0002] of the new main request is identical with paragraph [0002] of the patent as granted, with the exception of the corrected number of the German patent mentioned therein: “1 Insulation material panels made of mineral wool are used in various ways for insulating heat. 2 One major domain of application is the insulation of roofs, in particular the insulation of steep roofs. 3 To this aim, the insulation material panels are fixed between the rafters; for the insulation of new constructions and for the insulation of old buildings that are to be renovated one mostly uses so-called “wedging felts”. 4 Wedging felts are insulation material panels bearing marks provided transversely to the longitudinal direction of the panels such that, depending on the distance between the rafters between which the insulation material is to be inserted, a corresponding portion of an insulation material panel is cut to length, using the transverse marks as guiding line for cutting, and then wedged between the rafters. 5 Such wedging felts are known from DE 36 12 857 C 3. 6 Here the insulation material panel is coiled in a roll. 7 Cuts are made along the marks provided on the insulation material panel, whereby a 2912 | 3398
T 452/08 – Description Leading Into The Trap
K’s Law – The ebook
portion is separated of the insulation material panel, the length of which portion corresponds to the distance between the rafters. 8 The separated portion is then rotated by 90° and laid between the rafters, where it is wedged (mit Klemmsitz gehalten). 9 Such wedging felts have an increased binding agent content of about 6 to 7 wt. % and are characterised by a greater stiffness” (bold text and sentence numbering introduced by the Board). [2.6] The expression “such wedging felts” used for the first time in sentence 5 indicates that wedging felts according to the invention, i.e. wedging felts mentioned in the preceding sentence 4, are known from DE 36 12 857 C 3. This has not been contested by the [patent proprietor]. The following sentences 6 to 8 are not relevant for the present case. However, sentence 9, which among other things attributes a binding agent content of about 6 to 7 wt. % to the wedging felts, using again the expression “such wedging felts”, is relevant. [2.7] Whereas the [patent proprietor] submitted that the repeated use of the expression “such wedging felts” exclusively referred to the wedging felts known from DE 36 12 857 C 3, and therefore, to wedging felts that do not correspond to the invention, the [opponents] argued that this reference, which repeats the first expression, clearly referred to the preceding sentences and, therefore, to wedging felts according to the invention. Thus the reference defined the latter to have a binding agent content of about 6 to 7 wt. %, without there being a disclosure for such contents in the application as originally filed. [2.8] For the sake of argumentation, the Board assumes, following the submissions of the [patent proprietor], that the expression “wedging felt” is a “terminus technicus” which in its broadest interpretation by the skilled person defines insulation material panels falling under the definition of wedging felts provided in sentence 4 of paragraph [0002]. In the present case the Board can also follow the argument of the [patent proprietor] that the patent comprises (or corresponds to) its own lexicon that determines how the different expressions used in the description and the claims are to be understood by the skilled person. [2.9] However, in such a case the whole context of such definitions has to be considered when – as here – further sentences ascribe further or different qualifications to an expression that defines a specific object in the prior art. Then this expression receives a special meaning that overrides (überlagernd) the usual content of the expression (see also T 500/01 [6]). [2.10] In the present case the Board finds that an interpretation of sentences 5 to 9 of paragraph [0002] which is correct both on a grammatical and a semantic level, unambiguously leads to the conclusion that the expression “such wedging belts” used for the second time therein, very much like the first use of the expression in sentence 5, refers to the wedging belts mentioned in sentences 1 to 4 and, therefore, also to the wedging belts according to the invention. Via this expression the wedging belts according to the invention are explicitly stated to have a binding agent content of about 6 to 7 wt. %. [2.11] The Board moreover notices that there is no basis for the requirement of a binding agent content of about 6 to 7 wt. % for the wedging belts according to the invention in the application as originally filed. This fact was not contested by the [patent proprietor]. [2.12] Therefore, the application does not comply with the requirements of A 123(2) […]. [2.13] The Board cannot endorse the argument of the [patent proprietor] according to which the sentences 5 to 9 of paragraph [0002] clearly and exclusively refer to the content of the German patent mentioned therein, for the following reasons: The beginning of the sentence “Such wedging felts …”, both in sentence 5 and sentence 9, establishes a clear reference to the preceding sentences 1 to 4, i.e. to the wedging felts according to the invention. Secondly, the argument is in conflict with the contrary submissions of the [patent proprietor] during the opposition and appeal proceedings. […] Article 123(3) [3.1] In the description of the patent according to auxiliary request 1a the four last sentences (6 to 9) of paragraph [0002] were deleted, so that the existence of a binding agent content of about 6 to 7 wt. % in the wedging felts is not mentioned any more. In the description according to amended auxiliary request 1b and to auxiliary requests 1 to 3 the last sentence 9 of paragraph [0002] was amended such that this binding agent content is presented as an optional feature. 2913 | 3398
T 452/08 – Description Leading Into The Trap
K’s Law – The ebook
[3.2] According to points [2.9] and [2.10] above the Board considers that the existence of a binding agent content of about 6 to 7 wt. % in the wedging felts according to the invention, as mentioned in sentence 9 of paragraph [0002] of the patent as granted, is an additional (übergeordnet) requirement of the claimed invention. Pursuant A 123(3) the patent may not be amended in such a way as to extend the protection it confers. Pursuant A 69 and its Protocol the extent of protection is determined by the claims, but the description and the drawings are to be used to interpret the claims. Considering the explanations provided in points [2.9] to [2.13] above, this has the effect that the binding agent content of about 6 to 7 wt. % in wedging felts according to claim 1 has to be understood as a requirement limiting the extent of protection conferred by this claim. [3.3] The deletion or amendment of the last sentence 9 of paragraph [0002] in auxiliary request 1a and in amended auxiliary request 1b as well as in the auxiliary requests 1 to 3, respectively, corresponds to abandoning this requirement or to presenting it as optional. [3.4] Therefore, the deletion or the amendment of the last sentence of paragraph [0002] results in that the expression “wedging felt” in claim 1 of these requests comprises insulation material panels not having a binding agent content of about 6 to 7 wt. %. As this extends the protection conferred by claim 1, claim 1 of each of these requests does not comply with the requirements of A 123(3). So when the Office obliges you to acknowledge prior art in the description, be very careful in how you present it. To read the whole decision (in German), click here.
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T 279/07 – Deadly Prodrugs
K’s Law – The ebook
T 279/07 – Deadly Prodrugs 28 Jun 2010
Following a refusal of its application by the Examining Division, the applicant filed an appeal as well as a new set of claims. Claim 1 of this set read: 1. Use of androst—5—ene—3ß,17ß—diol or prodrug thereof, for the manufacture of a pharmaceutical composition for treating or reducing the likelihood of acquiring, in a female patient in need thereof or benefitting therefrom, an indication where an estrogenic effect is desired to a greater extent than is an androgenic effect and in which lower androgenic activity than provided by DHEA is desired, the indication selected from the group consisting of hypogonadism, skin atrophy, skin dryness, vaginal atrophy, and urinary incontinence. The Board came to the conclusion that this claim was unclear: [2.1] Under A 84 the claim(s) shall define the matter for which protection is sought. Thus, the question to be answered with respect to clarity under A 84 EPC is whether it is possible to determine if an embodiment falls within the scope of the claims or not. In the present case, the chemical structures in independent claim 1 are mainly defined by a functional feature, namely “androst-5-ene—3ß,17ß-diol or prodrug thereof” (emphasis added). According to the description, “prodrugs” of 5-Diol are defined as compounds “converted thereto in vivo”, and two specific structures, i.e. the 3-acetylated derivative of 5-Diol and a 3,17-succinic ester of 5-Diol, and 5-Diol fatty acids are disclosed […]. The Board has no doubt that the skilled person is perfectly able in most cases to decide whether or not a steroid derivative will be converted to 5-diol in vivo, in particular when the chemical entity differs from the 5-diol skeleton merely by the presence of usual hydrolysable hydroxyl protecting groups such as esters, carbonate esters, phosphate esters, acyloxyalkyl ethers a.s.o.. However, the Board is also convinced that, in order to establish whether a structurally more remote steroid derivative constitutes a prodrug of 5—diol, in other words in order to clearly establish the scope of protection of the claims, the skilled person would sometimes have no other choice than to synthesize a labeled sample of the steroid to be tested and to follow its biochemical transformations in vivo to determine whether or not the chemical structure under consideration is a biological precursor of 5-diol. In addition, toxicological studies might also be necessary. According to the Case Law of the Boards of Appeal (e.g. T 68/85), clarity demands not only that a skilled person be able to understand the teaching of the claim but also that he be able to implement it. In other words, the feature must provide instructions which are sufficiently clear for the expert to reduce them to practice without unreasonable burden, if necessary with routine experiments. The clarity requirement is therefore not met in the present case since, as shown above, the skilled person would have to find out in some cases merely by trial and error whether a steroid derivative meets the functional requirement set out in the claim, i.e. by making his own investigations, similar to a research programme. Under these circumstances, the Board concludes that claim 1 of the main request does not fulfill the requirement of A 84. To read the whole decision, you may click here.
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T 87/08 – Mere Repeating Won’t Do
K’s Law – The ebook
T 87/08 – Mere Repeating Won’t Do 26 Jun 2010
[6.2] In the present case, the deciding body, here the Opposition Division (OD), decided, against [the patent proprietor] that the claimed subject-matter of the patent as granted did not involve an inventive step and, against [the opponent], that the subject-matter of the auxiliary request then pending involved an inventive step (A 56). A 56 requires that the assessment of inventive step is made “having regard to the state of the art”. Accordingly, the logical chain of reasoning of the OD in the decision under appeal, to justify the above conclusions under A 56, has to contain a proper assessment of the question of obviousness in the light of the prior art. [6.3] The only part of the section “Reasons for the Decision” of the written decision under appeal dealing with the issue of inventive step in relation with the main request is to be found in section C, point 3 comprising three paragraphs. Since paragraph 3.2 thereof only repeats the arguments of the proprietor of the patent in suit and does not reflect the OD’s own considerations, this paragraph in fact should rather belong to the section “Facts and Submissions” of the written decision under appeal. The mere summary of a party’s submission is not per se a reasoning proper to the deciding body. Consequently, paragraphs 3.1 and 3.3 are the sole portions of the written decision under appeal which may reveal the reasoning of the OD on the issue of inventive step and, thus, are the sole portions of the decision which could justify the OD’s conclusion of lack of inventive step in relation to the main request. However, there is no reference at all in these paragraphs to any prior art, paragraph 3.1 merely stating that the claimed subject-matter did not comply with the requirements of A 56 since the technical problem had not been solved, i.e. the purported effect not achieved, over its whole scope and paragraph 3.3 being limited to the mere statements that “the technical problem has not been solved over the whole scope claimed” and that the “subject-matter is considered to be too broadly defined”. Therefore, the OD arrived in the appealed decision at the conclusion that the subject-matter of the main request lacked inventive step merely by stating that a purported effect has not been achieved, i.e. this technical problem had not been solved, without reformulating the problem in a less ambitious way and without assessing obviousness of the claimed solution to that reformulated problem in the light of the cited prior art. Since, the requirement of inventive step defined in A 56 is based on “the state of the art”, the decision of the OD, by arriving at a conclusion of lack of inventive step without reference to prior art, is insufficiently reasoned in the sense of R 68(2) EPC 1973 (R 111(2) EPC 2000). Paragraph [6.4] consists in similar observations for the auxiliary request filed by the patent proprietor. [6.5] Due to these deficiencies in the reasons for refusing the then pending main request and allowing the then pending auxiliary request, the Board and the appellants are left in the dark as to how the first instance came to its conclusions. Hence, the appellants and the Board were not able to examine whether the decision could be considered to be justified or not, the appellants being moreover hindered in deciding whether to file an appeal against the decision and in drafting the grounds for appeal. This failure amounts to a substantial procedural violation requiring that the decision under appeal to be set aside and the case be remitted to the first instance (see T 278/00). The appeals of both parties are thus deemed to be allowable and the Board considers it to be equitable by reason of that substantial procedural violation to reimburse the appeal fees of both parties in the present case pursuant to R 67 EPC 1973 (R 103(1)(a) EPC 2000). To read the whole decision, click here. NB: This decision is also commented on Laurent Teyssèdre’s blog.
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Interpretative spotlight: “complete”
K’s Law – The ebook
Interpretative spotlight: “complete” 26 Jun 2010
[4.1] In the appealed decision the application was found not to meet the requirements of A 83 and A 84 due to the presence in all independent claims of the features that the Group IB metals present in the catalytically active metal phase should be partially reduced and the Group VIII metals present in the same phase should be completely reduced. In the new main request both the product and the method claim have been limited so as to include only completely reduced Group VIII metals in the catalytically active metal phase, no partially reduced Group IB metal being present in said phase. Therefore, the grounds of refusal related to the feature “partially reduced” have been removed. [4.2] The expression “complete reduction” is defined in the original application on page 7, lines 14-17, where it is stated: “By complete reduction it is meant the metal sites largely consist of a single species, more particularly the highest number of species exhibit the elemental state of charge, i.e., zero”. Such a definition is in agreement with what the skilled person would understand from the wording of the claims alone. In particular, in the method claim it is indicated that a support material is impregnated with a salt of a catalytically active metal phase wherein the active metal phase is nickel and cobalt or nickel and iron and that the impregnated support material is calcined and activated so as to completely reduce said nickel and cobalt or nickel and iron. The skilled person would understand from those process steps that the metals present in the salt in an ionised state are later reduced so as to obtain the metal in their unionised elemental form. A more specific definition of the starting state is not necessary as long as it is clear that the metals are transformed from one of their possible ionised forms into their unionised elemental form. This is similarly clear in the product claim where the Group VIII metals (i.e. nickel and cobalt or nickel and iron) are defined to be present as completely reduced metals, i.e. as metals in their unionised elemental form. [4.3] In addition, it is clear to a person skilled in the art that the feature “completely reduced” cannot be understood as implying that each and every atom of the metal is in its elemental form, since there is hardly a situation in chemical processing where each atom is present in a single defined state. For this reason, the presence of the term “largely” in the expression “largely consist of a single species” in the definition of complete reduction cannot be considered as resulting in a lack of clarity of the feature “completely reduced” in the claims. To read the whole decision (T 1465/05), you may click here.
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T 1711/08 – Prettier Ain’t Always Healthier
K’s Law – The ebook
T 1711/08 – Prettier Ain’t Always Healthier 25 Jun 2010
** Translation from the German ** [3.1] Claim 1 of the main request concerns a cosmetic process for improving the growth of hair by treatment with an agent that comprises customary carrier substances, active ingredients and auxiliaries and a mixed salt of carnitine and tartaric acid. [3.2] Although the wording of claim 1 is not explicitly directed to a method for the treatment of the human or animal body by therapy under A 53(c), according to the impugned patent, the used agent is to be considered as a pharmaceutical agent, too (see e.g. claim 1 as granted [“Pharmaceutical and cosmetic agents for the treatment of hair, comprising …”]). As a consequence, it has to be determined whether the cosmetic effect disclosed in the patent can be distinguished from the therapeutic effect or if both effects are inseparably linked (see Case Law of the Boards of appeal, 5th edition, 2006, I.A.2.3.2). [3.3] It is to be noted that the intention to improve the growth of hair can exist even in the absence of a disease. The desire to have longer or more dense hair is often due to cosmetic and aesthetic reasons and not immediately linked to a disease of the person concerned. In particular it is possible to distinguish the two uses of the agent because they concern clearly different groups of persons. The first group consists in patients who have lost hair due to a disease, whereas the second group consists in persons who do not suffer from such a disease and who are interested in improving their appearance. [3.4] In contrast to the situation in decision T 780/89, which has been cited by the [opponent], where the therapeutic effect of an immunostimulating agent was inseparably linked to the claimed effect for the non therapeutic stimulation of the body’s own defences of animals, because the improved meat production resulting from the stimulation was also due to the better state of health of the animals, in the present case the state of health is not directly concerned as there is no information that the improved hair growth resulting in an improved appearance of the hair is linked to the health of the person receiving the treatment. [3.5] The present case also differs from the cases underlying T 290/86 and T 1077/93. In T 290/86 the claimed method for removing plaque from teeth inevitably had a therapeutic effect, i.e. the effect of preventing caries and periodontal diseases, which effect was confirmed in the impugned patent. In T 1077/93 it was shown that the protective effect protecting the skin against UV radiation obtained with the agent in use was due to an interaction with cellular mechanisms (Zellgeschehen) in the epidermis, which interaction prevented pathological consequences. However, in the present case there is no proof that the cosmetic treatment necessarily has a prophylactic effect. In particular, the results filed in document D6 only show that the agent had an effect on the hair growth factors, but the [opponent] has not proven that this effect necessarily results in prophylaxis against possible diseases. [3.6] The fact that the agent was always defined as pharmaceutical and cosmetic agent does not mean that its cosmetic and therapeutic uses are inseparable, but it only confirms that it was in the [patent proprietor’s] interest to protect both effects, as shown in claims 12 and 13 as granted, which are directed to a cosmetic method for improving hair growth and to the use of mixed salts of carnitine and tartaric acid for preparing a pharmaceutical agent, respectively. [3.7] Consequently the process of claim 1 of the main request is not covered by the exception enshrined in A 53(c). To read the whole decision (in German), you may click here.
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T 1079/08 – A Medical Error
K’s Law – The ebook
T 1079/08 – A Medical Error 24 Jun 2010
What is the correct ground for rejection when the claimed subject-matter does not achieve the alleged technical effect? Lack of inventive step? It really depends on the claim wording. In the present case the Examining Division (ED) rejected the application for lack of inventive step. Claim 1 under consideration was directed at the use of the metabolites of venlafaxine for the preparation of a medicament for the treatment of various diseases. [2] The ED rejected the application for lack of inventive step merely by finding that the technical effect underlying the invention had not been credibly achieved. The ED arrived at this conclusion by considering that document D5 comparing the monoamine uptake inhibition activity of venlafaxine with that of its metabolites represented the closest prior art and by defining the technical problem to be solved as the provision of alternative uses for the known metabolites of venlafaxine. The ED found that this problem was not credibly solved, since there was no evidence provided showing that the metabolites were effective for the treatment of the diseases listed in claims 1 and 5. [3] However, claims 1 and 5 then pending had the format of a second medical use Swiss-type claim. The Board observes that the use of the metabolites of venlafaxine for the preparation of a medicament for the treatment of the diseases listed in then pending independent claims 1 and 5 is the solution proposed by the application and the purpose of preparing a medicament for the treatment of the diseases indicated in then claims 1 and 5 is a technical feature defining the subject-matter claimed. Accordingly, being technical features of the use claims said preparation of a medicament for treating the listed diseases does not form part of the technical problem to be solved, but is the solution thereof. [4] Actually, the ED rejected the application only because the prepared medicament was not shown to be suitable for the treatment of the diseases listed in then independent claims 1 and 5, i.e. because it was not shown that the technical effect underlying the claimed use was achieved. In decision G 1/03 [2.5] the Enlarged Board of Appeal indicated that a lack of reproducibility of the claimed invention is relevant under the requirements of sufficiency of disclosure if the technical effect is a technical feature of the claim, since then it is a feature characterising the subject-matter claimed. Hence the ED rejected the application under A 56 for reasons relevant to the matter of sufficiency of disclosure pursuant to A 83. The same considerations and conclusions apply to the new format of present claims 1 and 5, i.e. purpose related product claims pursuant to A 54(5). [5] The application was refused by the ED for lack of inventive step on the basis of reasons relevant to the matter of sufficiency of disclosure pursuant to A 83. However, the issue of sufficiency of disclosure had never been addressed during the examining proceedings before the first instance, although compliance with A 83 is normally a prerequisite to assess inventive step on a proper basis. In reply to the communication of the Board, the Appellant made some submissions with respect to the requirement of sufficiency of disclosure, but requested the case to be remitted back to the ED for consideration of that issue. [6] In order to have the essential issue of sufficiency of disclosure under A 83 be considered by two instances, the Board considers it appropriate to exercise the power conferred to it by A 111(1) to remit the case to the ED for further prosecution. [7] When resuming examination proceedings the first instance should take into account that in the decision under appeal, it arrived at the conclusion that the subject-matter of the main request lacked inventive step (A 56) merely by finding that the technical problem underlying the application had not been credibly solved without reformulating the problem in a less ambitious way and without assessing obviousness of the claimed solution to that reformulated problem in the light of the cited prior art. 2919 | 3398
T 1079/08 – A Medical Error
K’s Law – The ebook
However, A 56 requires that “an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art”. Thus, when it comes to the issue of inventive step pursuant to A 56 the ED should assess obviousness vis-à-vis the state of the art (see T 278/00 and T 87/08). To
read
the
whole
decision,
A similar decision is discussed here.
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please
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T 997/06 – To Know The Mother, Know Her Kids
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T 997/06 – To Know The Mother, Know Her Kids 23 Jun 2010
The following claims were part of the application as filed: 15. An insulin preparation according to any of the preceding claims, comprising: 0 to 5 mg/ml, preferably 0 to 4 mg/ml, of a phenolic compound. 16. An insulin preparation according to claim 15, comprising: 0.5 to 4.0 mg/ml, preferably 0.6 to 4.0 mg/ml, of m-cresol or 0.5 to 4.0 mg/ml, preferably 1.4 to 4.0 mg/ml, of phenol, or a mixture thereof. Independent claim 1 of the main request read: 1. A parenteral pharmaceutical formulation comprising an aqueous insulin preparation comprising: Asp^B28 human insulin, glycerol and/or mannitol, 5 to 100 mM of a halogenide, a mixture of 0.5 to 4.0 mg/ml, preferably 0.6 to 4.0 mg/ml, of m-cresol and 0.5 to 4.0 mg/ml, preferably 1.4 to 4.0 mg/ml of phenol as phenoloic compounds, wherein the content of phenolic compounds is not more than 5 mg/ml, 10 to 40 μg Zn/100 U insulin, preferably 10 to 26 μg Zn/l00 U insulin, and a phosphate buffer. This claim, some features of which were said to be based on claims 15 and 16 as filed, was attacked both for non compliance with A 123(2) and lack of clarity. According to the opponent, claim 15 as filed referred to “a phenolic compound”. The upper limit could therefore not support the upper limit of a total content of a mixture of more than one phenolic compounds (i.e. m-cresol and phenol). The Board does not agree: A 123(2) [5] The board considers […] that the subject-matter of claims 15 and 16 of the application as published suffices for the amendment concerning the mixture of phenolic compounds to comply with the requirements of A 123(2). The dependency of claim 16 on claim 15 in the application as published and the explicit reference to a mixture of m-cresol and phenol unambiguously predetermine the notion “a phenolic compound” in claim 15 to be of generic nature and not to exclude the presence of different phenolic compounds in the insulin preparation. [6] In view of the above considerations, the board is satisfied that claim 1 complies with the requirements of A 123(2). A 84 [7] The respondent has argued that claim 15 as originally filed and the passage on page 5, line 22, refer merely to “0 to 5 mg/ml, ..., of a phenolic compound”. The upper range of 5 mg/ml in the amended claims 1 and 6 was therefore unclear as it referred to a total content of a mixture of more than one phenolic compounds (i.e. cresol and phenol). [8] The board considers, however, as reiterated in point [5], that the dependency of claim 16 on claim 15 in the application as published and the explicit reference to a mixture of m-cresol and phenol in claim 16 predetermine the notion “a phenolic compound” in claim 15 unambiguously to be of generic nature and thus also to embrace different phenolic compounds present in the insulin preparation. [9] As follows from the above considerations claims 1 and 6 are clear pursuant to A 84. To read the whole decision, please click here. 2921 | 3398
T 7/08 – Late Change Of Category
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T 7/08 – Late Change Of Category 22 Jun 2010
[3.1] The [opponent] objected to the admissibility of the [patent proprietor’s] request. The final form of the claims of this request was filed in the oral proceedings (OPs) but was based on a request - the admissibility of which was also contested - filed by the [patent proprietor] in response to the board’s communication. The [opponent] submitted that the change of category from claims directed to a horn antenna according to the patent as granted to claims concerning a specific use of a horn antenna according to the present request came very late in the opposition appeal proceedings and constituted a significant change of the matters in dispute. The [patent proprietor] had had ample opportunity to present use claims in the course of the opposition proceedings. It was however a generally observed principle that the purpose of appeal proceedings was predominantly to review the validity of the decision rendered by the first instance and that the factual framework of appeal proceedings should not significantly differ from that of the proceedings in the first instance. Therefore, a party to appeal proceedings was not allowed to significantly change the matters in dispute. In accordance with decision G 9/91 of the Enlarged Board of Appeal and decision T 240/04 the appellant’s present request should thus not be admitted into the proceedings under Article 13(1) RPBA. [3.2] The [patent proprietor] pointed out that a request directed to use claims had in fact already been filed during opposition proceedings. However, in order to get other amendments considered in OPs before the opposition division (OD) the [patent proprietor] had felt obliged to drop such claims. The return now to a request directed to use claims was motivated by the board’s critical assessment of the patent as given in the communication annexed to the summons to OPs. At any rate, it was disputed that the limitation of the scope of protection to a specific use could be considered a significant change in the factual framework. Moreover, given the fact that the claimed use formed part of the definition of the horn antenna according to the claims as granted, the new request did not include an element of surprise to the board and the other party. [3.3] Article 13(1) RPBA stipulates that “Any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.” Article 13(3) RPBA complements this by stating that “Amendments sought to be made after OPs have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the OPs.” [3.4] In the Board’s view, the change from a claim directed to a “Fluid-level-measuring horn antenna for downward facing operation in an atmosphere causing condensation on the horn antenna and for the transmission of microwaves” (claim 1 of the patent as granted) to a claim concerning the “Use of a fluid-level-measuring horn antenna in a tank for downward facing operation in an atmosphere causing condensation on the horn antenna and for the transmission of microwaves” (present claim 1) amounts to a substantial limitation of the scope of protection but does not constitute a substantial change of the factual framework of appeal proceedings. For this reason, decision G 9/91 and the ensuing case law of the boards of appeal (such as T 240/04 which was referred to by the respondent) which define the extent to which the factual framework may be changed in appeal proceedings are not applicable to the present case. On the other hand, according to the criteria of Articles 13(1) and (3) RPBA, the appellant’s present request is indeed late-filed. However, the specific use of the antenna which is now claimed already formed part of the antenna’s definition in claim 1 of the patent as granted. Thus, although this use did not constitute a limiting feature for the antenna as such, the present limitation does not increase in any manner the complexity of the case nor does it raise issues which cannot reasonably be dealt with during the OPs. This is even more so the case as, throughout the opposition and appeal proceedings, the appellant’s argumentation consistently relied on the specific use of the antenna as an inventive aspect of the claimed subject-matter. Furthermore, the request including the change of category to a use claim was presented well before the date of the OPs. The further amendments made to present claim 1 during the OPs concern the definition of the geometry and mutual arrangement of antenna elements which, according to the context of the original disclosure, are functionally decisive for successfully overcoming the problem to be solved. These amendments respond to a number of objections under A 84 EPC 1973 and A 123(2) which came up during the OPs. For these reasons, after 2922 | 3398
T 7/08 – Late Change Of Category
K’s Law – The ebook
discussion with the parties to the proceedings, the Board decided to exercise its discretion in favour of the appellant and thus to admit the [patent proprietor’s] sole request into the appeal proceedings. To read the whole decision, click here.
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T 1659/07 – Back To The Roots
K’s Law – The ebook
T 1659/07 – Back To The Roots 21 Jun 2010
It is well known that clarity is not a ground for opposition under A 100 and that objections of lack of clarity against claims will not be accepted in opposition proceedings unless the lack of clarity is generated by postgrant amendments. The Boards have admitted only very few exceptions to this principle. T 656/07 has provided a rather surprising exception. As this decision is a recent one, I cite the most relevant passages for those who are not familiar with it: [2.1] It is the position of the Board that the lack of clarity arose - at least in part - from the amendments carried out after grant. The invention as granted was defined in independent claim 1, directed to a pouch, and in independent claim 3, directed to a wafer. Claim 1 was objectively unclear since it sought to define the pouch coupling means by making reference to the wafer. The amendment to claim 1 of the main request submitted during the opposition proceedings introduces in claim 1 further features - in relation to the pouch coupling means - which were formerly contained in dependent claim 2. This makes it necessary to reconsider the coupling means claimed in claim 1 on the light of these new incorporated features - which are now considered essential due to the amendment - and also to reconsider in this new light the fact that the coupling is to be taken in connection with a body-side mounting wafer. It follows that one cannot ignore the fundamental lack of clarity generated by the cross-references. More specifically, while the cross-reference to the wafer was already present in claim 1 as granted, the incorporation into claim 1 of further features concerning the coupling means makes it necessary to reconsider the interaction of the pouch with the wafer and as a result an objection of lack of clarity due to this new interaction emerges. Therefore, the amendments introduced into claim 1 substantially affect the clarity of claim 1 as a whole, since its subject-matter is not clearly defined. This general lack of clarity makes it impossible to compare the subject matter of claim 1 to the state of the art and to proceed further with the substantive examination of said claim. [2.2] This lack of clarity can be objected to in opposition proceedings because it is generated by the amendments made during this procedure, even if the contested feature as such was already present in the claims as granted but in another combination. In fact, it is not enough formally to state that a feature was present in the granted version in order to limit the power of investigation of the Board as far as clarity objections arising from an amendment is concerned. It is also necessary to ascertain the effect produced by the amendments introduced into the claim as a whole since a feature of a claim is not to be seen in isolation, but through its interaction with the other features of the claimed combination. A new combination of features is also an amendment in itself. As pointed out in T 472/88 [2], in the statement contained in decisions T 227/88 and T 301/87: “fresh objections based on A 84 are not allowed if such objections did not arise out of the amendments so made”, the word “arise” should be broadly construed. Among the meanings of this word registered in the cited decision and taken from the Concise Oxford Dictionary there is “bring into notice”. This means that a lack of clarity also arises out of an amendment when this amendment brings into notice an ambiguity that has existed all along. This is also the case here with the aggravating circumstance that the lack of clarity already present in claim 1 has been extended and reinforced by the amendment. [2.3] The respondent cited decision T 367/96 in order to support its opinion that, in the present case, clarity should not be examined by the Board. However, T 367/96 [6.2], is principally concerned with a lack of support by the description, which is a separate aspect of A 84, and not with lack of clarity. Furthermore the decision cited does not state that an objection of lack of clarity cannot be raised against a combination of granted claims, but only that the lack of support was already there and has not been introduced after grant of the patent. T 367/96 [6.2] refers to a previous decision (T 301/87), but only to reiterate the generally recognized principle that the clarity objection should arise out of the amendments made. T 853/02 [3.1.1] of the reasons, stresses also that the unclarity did not concern the amendments. These decisions do not contain any definition of an amendment. In fact, whether an amendment is given and in what it consists is a question of fact to be determined on a case by case basis.
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T 1659/07 – Back To The Roots
K’s Law – The ebook
In the opinion of this Board it cannot be stated that there is a general rule in the jurisprudence that a combination of granted claims should not be challenged for lack of clarity.
Now in the present decision the opponents tried to follow the path opened by T 656/07: ** Translation from the German ** [5] The opponents pointed out that the claims of the main request had become unclear as a consequence of the contraction of granted claims 1 and 6. The lack of clarity only appeared as a consequence of the contraction of the two claims because this amendment modified the focus (Schwerpunkt) of the claimed subject-matter. Thus the situation was the same as in case T 656/07. The Board agrees with the opponents insofar as the claims as granted are seriously deficient with respect to clarity, which make it difficult to appropriately understand the claimed subject-matter […]. The Board is of the opinion that these deficiencies with respect to clarity should have been corrected during the substantive examination preceding the grant, and that the Examining Division should have insisted on the need for a precise determination of the subject-matter for which protection is sought. However, the Board cannot see how the contraction of the features of claims 1 and 6 as granted, and the shift of focus (Fokus) of the claimed invention resulting from it, could entail a new lack of clarity. Moreover, the opponents have not specified the alleged new lack of clarity in a concrete manner. As a rule, contracting claims without otherwise amending their wording in opposition proceedings cannot open up the possibility to attack deficiencies with respect to clarity under A 84 that already existed in the claims as granted. The Board is of the opinion that decision T 656/07 cited by the opponents concerns a particular case that cannot be generalised. A lack of clarity of the granted claims is not as such a ground for revocation. Rather, an unclear claim has to be interpreted and the grounds for opposition have to be assessed on the basis of this interpretation. T 656/07 opened the door a bit wider for pleading lack of clarity in opposition (and opposition appeal) proceedings. I remember that the decision was welcomed by some colleagues who dream of a revision of the EPC that would allow lack of clarity to be used as a ground for opposition. I am definitely not one of them because I think that clarity is a very subjective thing. Nothing is clear to him who does not want to understand (and opponents very often are not desirous to understand, are they?). Be that as it may, I am happy to see that T 656/07 is reduced to a “particular case that cannot be generalised”, and thus isolated. Nobody loses face and we may perhaps forget a somewhat weird decision ... To
read
the
whole
decision
(in
German),
NB: There was a post on T 656/07 on Le blog du droit européen.
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you
may
click
here.
T 1312/08 – The Extension Trap Again
K’s Law – The ebook
T 1312/08 – The Extension Trap Again 19 Jun 2010
In a recent post, we have seen a case where surprisingly, adding features to a claim led to an extension of the extent of protection conferred by the claim. The present decision provides another example of such a situation. Yesterday we have seen that the patent under consideration lost its priority claim, which resulted in additional prior art and the rejection of the main request for lack of inventive step. The patent proprietor then presented a first auxiliary request, simply adding an (apparently limiting) feature (click to enlarge):
Here is what the Board had to say: [2.1] Claim 1 according to the first auxiliary request differs from claim 1 according to the main request, which is claim 1 as granted, substantially insofar as protease (c) having an α-keratin-hydrolyzing activity at 10°C of not less than 0.09x10^-3 μg/mPU·min is produced from a microorganism that is (I) Bacillus sp. KSM-KP 43, (II) Bacillus sp. KSM-KP 1790 (III) Bacillus sp. KSM-KP 9860 (IV) a mutant of Bacillus sp. KSM-KP 43, Bacillus sp. KSM-KP 1790 or Bacillus sp. KSM-KP 9860, or (V) a transformant containing a gene from Bacillus sp. KSM-KP 43, Bacillus sp. 1790 or Bacillus sp. KSM-KP 9860 coding said protease. The Board remarks that claim 1 as granted did not contain any limitation as to the specific type of protease (c) apart from the required α-keratin-hydrolyzing activity at 10°C that had to be not less than 0.09x10^-3 μg/mPU·min. Moreover, claim 1 as granted required inter alia an amount of proteases (c)+(d) equal to 0.01 to 0.5% by weight (as powdered enzyme product). The amended claim 1 allows because of its wording “A detergent composition comprising ...” the presence of arbitrary amounts of additional components apart from those specifically listed as components (a) to (d). Moreover, the wording of this claim, by requiring that the composition comprises as component (c) a protease whose α-keratin-hydrolyzing activity at 10°C is not less than 0.09x10-3 μg/mPU·min and that the protease (c) is selected from the classes (I) to (V), does not exclude the possible presence of additional proteases having an αkeratin-hydrolyzing activity at 10°C that is not less than 0.09x10^-3 μg/mPU·min apart from those specifically
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T 1312/08 – The Extension Trap Again
K’s Law – The ebook
listed in the claim as component (c), which additional proteases were part of the original protease (c) in the claim as granted but are no longer part of this specific component in the amended claim. As a consequence, claim 1 according to the first auxiliary request allows an amount of, for example, 0.5% by weight, of proteases (c) plus (d) and an additional amount of 0.1% by weight of additional proteases having an αkeratin-hydrolyzing activity at 10°C that is not less than 0.09x10-3 μg/mPU·min not belonging to the five classes specifically listed in the claim. In such a case, the amended claim 1 would encompass compositions containing a total amount of proteases (c) and (d) as defined in the granted claim of 0.6% by weight, i.e. an amount of proteases greater than the upper limit of granted claim 1. Consequently, the extent of protection of amended claim 1 according to the first auxiliary request has been extended with respect to that of the granted claim 1 (see, for example, T 2017/07 [headnote]). Consequently, this request contravenes the requirements of A 123(3). Now that the Boards are aware of the possibility of extending the protection by adding features, be very careful when amending composition claims. To read the whole decision, you may click here.
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Interpretative spotlight : “volatile”
K’s Law – The ebook
Interpretative spotlight : “volatile” 19 Jun 2010
Claim 1 of the main request read: Cosmetic composition, characterized in that it comprises, in a cosmetically acceptable medium, at least one fixing polymer, wherein the fixing polymer or polymers are present in concentrations of between 0.1 and 10% by weight, relative to the total weight of the composition, at least 5% by weight of a non-volatile aryl silicone and at least one volatile silicone, wherein the volatile silicone or silicones are present in concentrations of between 5% and 40% by weight relative to the total weight of the composition, and wherein the non-volatile aryl silicone or silicones are present in concentrations of between 5% and 40% by weight relative to the total weight of the composition. The Board deals with the novelty of the claim with respect to document D9 (U.S. patent 5 106 609). In this assessment, the meaning of the expression “volatile” is crucial. ** Translation from the French ** [5.2] The objection of lack of novelty with respect to document D9 is based on the disclosure of example XIII concerning a hair styling conditioner composition comprising, relative to the total weight of the composition, 3% of a fixing polymer, 0.5% of a silicone gum, 3% of octamethyl cyclatetrosiloxane and 9% of phenyl pentamethyl disiloxane. It is undisputed that octamethyl cyclatetrosiloxane is a volatile silicone, but the parties did not agree on whether the phenyl pentamethyl disiloxane was volatile or not. It is important to keep in mind that a claim must not be read without considering its function, i.e. delimitating the extent of protection that is sought by using language that is recognized (reconnu) in the field under consideration. In the present case, the relevant question is not whether there is an absolute, clearly-defined border line between silicones that are said to be volatile and silicones that are said not to be volatile. The relevant question is whether, within the context of the present claim, that is to say in the context of cosmetics, the skilled person would be able to assign one of these categories to the silicones used in example XIII of document D9, without there being any ambiguity. The absence of an absolute definition of the terms “volatile” and “non-volatile” in the field under consideration cannot be used as a pretext to arbitrarily (i.e. without any documents that provide corresponding evidence) place this border line between the two silicones used in example XIII of document D9. The aryl silicone used in the composition according to example XIII is mentioned as a solvent and referred to as a volatile silicone in the same way as octamethyl cyclotetrasiloxane and decamethyl cyclopentasiloxane (col. 24, lines 45 to 47), the term “volatile” being assigned to materials having a measurable vapour pressure (col. 16, lines 54 to 55), in the very same way as in the impugned patent (paragraph [0031]). In the absence of any proof that phenyl pentamethyl disiloxane is also referred to as non-volatile silicon in the field of cosmetics, the Board has to conclude that the composition of example XIII of document D9 does not contain a non-volatile aryl silicone but a volatile aryl silicone. Moreover, the quantity of the volatile silicone required by claim 1 as amended excludes the quantity disclosed in example XIII of document D9. As a consequence, the disclosure of the composition of example XIII of document D9 cannot destroy the novelty of the claimed subject-matter. To read the whole decision (T 488/05), please click here.
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T 1312/08 – The Devil’s In The Detail
K’s Law – The ebook
T 1312/08 – The Devil’s In The Detail 18 Jun 2010
Claim 1 of the main request read: 1. A detergent composition comprising (a) 15 to 40% by weight of an anionic surfactant, (b) 0.5 to 5% by weight of a chlorine scavenger, (c) a protease whose α-keratin-hydrolyzing activity at 10°C is not less than 0.09x10^–3 μg/mPU∙min and (d) a protease whose α-keratin-hydrolyzing activity at 10°C is less than 0.09x10^–3 μg/mPU∙min, wherein (c)+(d)=0.01 to 0.5% by weight (as powdered enzyme product), (c)/(d)=1/5 to 5/1 and [(c)÷(d)]/(b)=1/100 to 1/2 (weight ratio as powdered enzyme product), and a polyoxyalkylene alkyl or alkenyl ether whose HLB (Griffin’s method) is 11.5 to 17. The Board first deals with the validity of the priority claim: [1.1.1] It is established jurisprudence of the Boards of Appeal of the EPO that the priority of a previous application in respect of a claim in a European patent application in accordance with A 88 is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole (see G 2/98 [headnote]). It is undisputed that claim 1 as granted reads as the combination of claims 1 and 3 of document D20, which is the certified English translation of the Japanese priority document of the patent in suit. However, it is also undisputed that PU, one of the units contributing to the value of the α-keratinhydrolyzing activity expressed as μg/mPU·min, which characterizes in claim 1 both proteases (c) and (d), is defined differently in the patent in suit and in document D20. Precisely, the patent in suit defines 100PU as the amount of protease that produces acids-soluble peptides equivalent to one micromole of Ltyrosine per minute in the measurement of caseinhydrolyzing activity of the description whilst document D20 defines for the same measurement 1 PU as the amount of enzyme that produces acid-soluble peptides equivalent to one millimole of L-tyrosine per minute. Therefore, because of this different definition of PU, the α-keratin-hydrolyzing values of a protease measured by using the respective definition of PU differ of the factor 10^5, i.e. the limits of the α-keratin-hydrolyzing activity which characterize proteases (c) and (d) in each claim 1 of the patent in suit and of the priority document, even though numerically apparently identical, differ in reality of a factor 10^5 because of the different definition of PU. Since the [patent proprietor] submitted that the definition of PU in the patent in suit is correct and that the definition in the priority document is erroneous and should have been the same, it should be evaluated if the skilled person would have derived the definition of PU used in the patent in suit directly and unambiguously, using common general knowledge, from the whole content of document D20 as a whole. [1.1.2] It has not been contested by the [patent proprietor] during oral proceedings that the skilled person would not have been able to notice that the definition of PU in document D20 is erroneous by simply reading the content of this document. In fact, the Board remarks that both the measurements of the α-keratin-hydrolyzing activity and of the casein-hydrolyzing activity of the description in which the definition of PU is used are not recognized standard methods but are methods set up by the [patent proprietor] for the specific needs of the present invention. Moreover, there did not exist at that priority date any widely recognised standard values for the α-keratin-hydrolyzing activity or the casein-hydrolyzing activity or a recognised standard definition for the PU belonging to the common general knowledge of the skilled person. Therefore, the skilled person, even considering his common general knowledge, would not have been able to recognise any error in the definition of PU or in the values of α-keratin-hydrolyzing activity simply by reading document D20. [1.1.3] The [patent proprietor] submitted that the skilled person, in applying his common general knowledge to the teaching of document D20, for example by repeating the examples of the priority document and controlling the α-keratin-hydrolyzing activity of the proteases used in these examples, would have noticed that the values of 2929 | 3398
T 1312/08 – The Devil’s In The Detail
K’s Law – The ebook
α- keratin-hydrolyzing activity measured by means of the method indicated in the description of document D20 making use of the definition of PU given hereinabove do not correspond with the values indicated in the examples and would not satisfy at once the requirements of the claim for both proteases (c) and (d). Moreover, by comparing the measured results with those of the example, he would have found that the value had to be corrected by a factor of 10^5 in order to comply with the requirements of the claim for both proteases (c) and (d) and that the error could arise from the erroneous definition of PU. However, the Board remarks that according to the established jurisprudence of the Boards of Appeal of the EPO the common general knowledge of a skilled person is normally represented by encyclopaedias, textbooks, dictionaries and handbooks on the subject in question or even patent specifications and scientific publications in the case that the field of research is so new that technical knowledge was not available from textbooks (see case law of the Boards of Appeal of the EPO, 5th edition 2006, I.C.1.5). Therefore, it cannot encompass the application of tests like the measurement of the α-keratin-hydrolyzing activity of document D20 which is an integrative part of the invention itself and relates to parameters which are not standard in the prior art as explained hereinabove. Therefore, the reworking of an example and especially of a method which is not a standardized one and is not reported in encyclopaedias, textbooks, dictionaries and handbooks cannot be considered to be the application of common general knowledge. As a consequence, the mere fact that it is necessary to carry out a test, which is not part of common general knowledge, in order to find out whether the definition of PU in document D20 is erroneous makes clear that the different definition of PU used in the patent in suit is not derivable directly and unambiguously, using common general knowledge, from the whole content of document D20. Therefore, the Board concludes that claim 1 of the patent in suit relates to an invention which is different from that disclosed in document D20 and cannot benefit from the claimed priority date of 17 March 1999. I shall come back on this decision tomorrow. To read the whole decision, you may click here.
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T 659/07 – There’s Nothing We Can Do
K’s Law – The ebook
T 659/07 – There’s Nothing We Can Do 17 Jun 2010
In this case the patent was opposed on the grounds based on A 100(a), (b) and (c). During the proceedings, the opponent withdrew its objection based on A 123(2) against the feature “at regular intervals”. The Opposition Division (OD) finally maintained the patent in amended form. New claim 1 still contained the feature “at regular intervals”. Only the patent proprietor filed an appeal. Before the Board, the opponent requested a remittal to the OD and justified this request by invoking a fundamental deficiency: according to the opponent, the OD coerced it to withdraw the objection based on A 123(2). Procedural issues [2.1] Before descending on the substantive merits of the claim requests on file, the Board needs to examine whether the case may require a remittal to the department of first instance as a result of the alleged substantial procedural violations, as requested by the [opponent]. [2.2] In this respect, the Board concurs with the [opponent] that the principle of the prohibition of reformatio in peius is not an absolute one, as demonstrated by G 1/99 [headnote]. A remittal of the case should normally be ordered if the first instance proceedings are tainted with a fundamental deficiency (Article 11 RPBA). A substantial procedural violation may certainly be regarded as a fundamental deficiency justifying a remittal. However, the fact that only the proprietor filed an appeal, changes the picture. This means that the decision under appeal is scrutinized only to the extent that it did NOT allow the maintentance of the patent as requested by the proprietor. Thus it is an open question if a substantial procedural violation by itself is sufficient reason for ordering a remittal against a proprietor who is a sole appellant especially in light of the fact that the opponent invoking the substantial procedural violation was not prevented from recognising this violation and filing an appeal himself. But even that question needs not be answered by the Board in the present case, as the Board sees no prima facie case of a substantial procedural violation. The Board then examines the minutes and the statements of the parties and comes to the conclusion: [2.3.4] [… T]here is no conclusive evidence before the Board that the OPs before the opposition were tainted with a substantial procedural violation. The Board also sees no reason to examine the issue any further on its own, because such a further examination of this question would go beyond the scope of these appeal proceedings. [2.3.5] The [opponent’s] second main argument for a remittal is a contradiction between the order of the decision under appeal and the reasons of the decision, following the principles laid down in decision T 1178/04. In that case the deciding Board held that under certain circumstances the principle of ex officio examination takes precedence over the principle of the prohibition of reformatio in peius. For example, certain absolute or indispensable procedural pre-conditions (“Absolute, unverzichtbare Verfahrensvoraussetzungen”) are always to be examined ex officio. The deciding Board of case T 1178/04 takes this statement of principle from the commentary “Patentgesetz mit Europäischem Patentübereinkommen”, 7th edition (2005), by Dr Rainer Schulte and others, paragraph 7.6.1, note 72, at page 986 which concerns the appeal procedure under German law. This very same citation also lists specific examples which fall under those absolute or indispensable procedural preconditions which need to be examined ex officio, among them the existence of a contradiction between the order and the reasons of the decision under appeal (loc. cit. paragraph 8.2.(g), note 77, at page 987. (“Widerspruch zwischen Tenor und Gründen der angefochtene Entscheidung”). [2.3.6] However, in the light of the finding that a procedural violation during the first instance proceedings is not conclusively proven, the Board holds that the second argument of the [opponent] concerning the insufficient reasoning of the decision under appeal has no merit either. Having established that the opposition grounds under A 100(c) were withdrawn (except for the feature “wall”), there was no need for the OD to elaborate this question in more detail in its decision. The feature “wall” was duly examined in the decision […]. In this manner there is no recognisable contradiction between the order and the reasons of the decision under appeal. 2931 | 3398
T 659/07 – There’s Nothing We Can Do
K’s Law – The ebook
[2.3.7] The reasoning why the OD did not pursue the issue of the “at regular intervals” feature on its own motion need not be particularly lengthy and detailed, given that it is within the discretionary power of the OD to maintain an opposition ground ex officio or not. It is noted that in the present case the opposition as a whole was not withdrawn, only an aspect of an opposition ground was withdrawn. Under such circumstances the OD could presume that the opponent wants to concentrate on those grounds and aspects which are more promising for the purpose of having the patent revoked. Certainly it can not be expected from an OD to oppose a patent even more vigilantly than the opponent himself would do, at least as long as the opponent himself does not withdraw the opposition and remains an active party in the proceedings. Under such circumstances any overly active involvement of the OD on the side of the opponent could easily be perceived as a bias in favour of the opponent. Accordingly, the Board holds that the decision under appeal is sufficiently reasoned and in itself free from contradictions. It is another matter whether the Board would have arrived at the same conclusions given the same facts. [2.3.8] Thus in the absence of a proven procedural violation the Board sees no reason to remit the case to the department of first instance, and is not precluded from deciding on the matter before it. The Board then examines the main request and the first auxiliary request and comes to the conclusion that both do not comply with A 123(2) because of the feature “at regular intervals” (!). It then deals with the second auxiliary request: [5.1] The set of claims of this request is identical with the set of claims held allowable by the OD in its interlocutory decision. [5.2] From a procedural point of view, such a request per se may be considered formally inadmissible, given that in respect of this request, the appellant is not adversely affected by the decision under appeal as required by A 107. However, this request is interpreted by the Board as in substance being a request for the dismissal of the appeal, in the sense that the Board should not issue a decision even more adverse to the appellant, such as a revocation of the patent as requested by the opponent in the present case. Exception to the prohibition of “reformatio in peius” [5.3] As stated above […], the Board holds that the [opponent] failed to prove that any substantial procedural violation occurred, and therefore the Board needs not to decide if such a violation would have justified an exception to the principle. It remains to be decided if the “manifestly invalid” patent could be revoked, thus creating an exception to the principle, based on the fact that the Board has found that the “regular interval” feature contravenes A 123(2). [5.4] It is noted that neither the decisions G 4/93 and G 9/92, nor the cited decision T 1178/04 appear to support such an interpretation. Whether or not this principle should be applied does not depend on the extent to which the claimed subject-matter is patentable or not. It is clear from the reasons of G 4/93 and G 9/92 that when arriving at its answer, the Enlarged Board (EBA) considered the purely procedural aspects of the appeal proceedings, without considering the - undoubtedly undesirable - consequences of the maintenance of “invalid” patents. The Board sees no reason to deviate from the view expressed in G 4/93 and G 9/92 that it is the appeal of the sole appellant which determines the extent of the appeal proceedings. In G 4/93 [1] the EBA pointed out that the “initial request” of the appellant determines the extent of the proceedings. This is known as the principle of party disposition (“ne ultra petita”). In G 4/93 [14] which relates specifically to appeals where the patent proprietor is the sole appellant, the EBA considered that if the non-appealing opponent files a request for revocation of the patent, the scope of the appeal is exceeded, so that such a request cannot be examined. Further as noted by the EBA in decision G 1/99 [4.1]: “It is undisputed that decision G 4/93 decided that the principle of the prohibition of reformatio in peius should be applied in cases where the patent proprietor is the sole appellant against an interlocutory decision maintaining the patent in amended form. This is clearly the wording of paragraph 1 of the order. A patent proprietor can therefore not be placed in a worse position than if it had not appealed. This means that the patent as maintained by the OD in its 2932 | 3398
T 659/07 – There’s Nothing We Can Do
K’s Law – The ebook
interlocutory decision cannot be objected to by the Board of Appeal, either at the request of the respondent/opponent or ex officio. This is balanced by the option open to the opponent to file a request for the revocation of the maintained patent at the national level.” This makes clear that the maintained patent cannot be objected to ex officio by the Board of Appeal. Moreover, in G 4/93 [6], the EBA said that: “The extent of the power of the Boards of Appeal to decide upon the proper scope of the patent should be considered in conjunction with the effect of withdrawal of the appeal” and added that: “Once the or each appeal has been withdrawn, there is no power to continue the proceedings”. The present Board only adds that it is normally expected from parties to administrative and court proceedings that they cooperate with the other party and the deciding body in all stages of the proceedings, in order to arrive at a decision. Such cooperation is made difficult if a sole appellant must constantly be prepared to withdraw its appeal, in order to prevent a decision which would put him in a more unfavourable situation than his starting position. [5.5] From this it follows that the applicability of the legal principle of the prohibition of reformatio in peius depends on the procedural status of a case, and the examination of this procedural status must precede any examination of the substantive merits of a request. This is also in line with the cited decision T 1178/04 [24-26], which restricts the necessity of ex officio examination to procedural preconditions. However, there can be no doubt that the issue raised here, i.e. the invalidity concerns the very substance of a patent and has nothing to do with the procedural preconditions. In this manner there is simply no room to establish to what extent a request or a patent may or may not fulfil the usual substantive criteria, so from a legal point of view there is also no room to establish whether there is any invalidity. In other words, even if this fact should be manifestly apparent for all parties and the Board, the Board can not order any legal consequences thereof. This can best be illustrated by the fact that a patent proprietor is not even required to present a request on appeal which would correspond to the version of the patent as upheld by the first instance. In that case it is perfectly clear that a Board is simply procedurally barred from examining, and even less deciding on that form of the patent. On the other hand, this does not hold for procedural preconditions and such facts, which are apparent from the decision under appeal, and which can be examined even without having to examine the actual substantive requests (i.e. the claim requests) in the appeal. [5.6] As explained above, since there is no reason why the above mentioned decisions G 9/92, G 4/93 and G 1/99 should not apply to the present case, the patent as maintained by the OD in its interlocutory decision cannot be objected to by the Board of Appeal either at the request of the non-appealing opponent as a party to the proceedings as of right under A 107, second sentence, EPC 1973, or ex officio even if the patent as maintained would otherwise have to be revoked on the ground that a feature present in both claim 1 as granted and amended claim 1 as maintained introduces added subject-matter contrary to A 123(2). Moral of the story: It is a dangerous thing to withdraw grounds of opposition without good reason. It may relieve the OD of some work, but you might regret your kindness later on. And: If ever a decision of the OD adversely affects you, you may want to seriously consider filing an appeal. Otherwise, the prohibition of reformatio in peius may make you regret not having spent the 1180 Euro appeal fee. To read the whole decision, you may click here.
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T 2271/08 – No Referral For Review
K’s Law – The ebook
T 2271/08 – No Referral For Review 16 Jun 2010
From time to time the Boards are confronted with legal creativity. In the present case, the patent proprietor filed a hybrid request mixing elements of legal means provided under A 112 and A 112a. The resulting request could be qualified as “referral for review”. ** Translation from the German ** [4] The third auxiliary request filed during the oral proceedings reads: “Alternatively it is requested, as a third auxiliary request, that the decision be referred to the Enlarged Board of appeal (EBA) for review, in order to ensure uniform application of the law concerning inventive step, and in particular of the interpretation and the application of the socalled “could-would approach”.” It is to be noted that the Board is not competent to decide on a petition for review based on A 112a. The Board understands from the explanations of the [patent proprietor] that a request for referral under A 112(1)(a) is meant as it aims at uniform application of the law and as the request was filed during the proceedings before the Board. Moreover, none of the grounds referred to in A 112a(2) have been given. Referrals to the EBA are governed by A 112. The aim of a referral is to ensure uniform application of the law (if there are contradictory decisions of the Boards) or to answer legal questions of fundamental importance (which, if necessary, can also be referred if the legal question arises for the first time). However, it is established case law of the Boards of appeal that no technical questions but only legal questions of fundamental importance can be considered for a referral (see “Case Law of the Boards of Appeal of the EPO, 5th edition (2008), chapter VII.D.13.2). According to A 112(1)(a) the Board concerned can also refer a question to the EBA following a request from a party to the appeal if the Board considers that a – preceding – decision of the EBA is needed in order for it to come to a decision on the substance of the case (see also T 520/01 [4.1]). It can be deduced that a referral to the EBA is only possible if the Board cannot answer a question that is relevant for its decision or sees itself unable to derive a uniform answer to such a question from the case law. It follows that the decision of the EBA (and a fortiori the referral) in any case has to precede the decision by the Board. In contrast, the request of the [patent proprietor] explicitly (ausweislich) aims at the review of the decision of the Board by the EBA, which would only be possible after [a decision has been taken] (nachträglich). As a consequence, the request aims at something that has not been provided for by the lawmaker under A 112. Consequently, the request has to be dismissed. To read the whole decision, please click here.
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T 2271/08 – Time Factor Denied
K’s Law – The ebook
T 2271/08 – Time Factor Denied 15 Jun 2010
From time to time decisions of the Boards of appeal refer to the so-called “secondary indicia” for inventive step such as the existence of a prejudice, commercial success of the invention, and so on. The present decision deals with a case where the patent proprietor argued that the time factor played in favour of inventiveness, and provided some corresponding evidence. ** Translation from the German ** [2.3.4] According to the case law of the Boards of appeal, a period of 23 years between the date of publication of the document disclosing the closest prior art and the priority date of the impugned patent can be considered to be an indication of inventive step [if the relevant technical field is] a highly active (stark bearbeitet) technical field of economic importance. In the present case there is no evidence that the claimed subject-matter [an immersion pump] is part of a technical field of economic importance. Even the hardcopy of search results in class F04D 13/14 showing 527 documents for the period since 1900 does not prove that there has been a particularly high activity during the 20 years that separate the publication date of document E1 and the priority date of the present patent. Moreover, it cannot be excluded that commercial considerations deterred the skilled person from industrially applying the immersion pump according to E1 with corresponding modifications. As a matter of fact, if the users considered the old technology to be satisfying and if this technology left margin for improvement, there was no reason to invest the high amounts needed for industrially applying the new technology. [2.3.5] Therefore, the subject-matter of claim 1 […] does not involve an inventive step as required by A 56 EPC 1973. We will come back on this decision tomorrow, if you like. To read the whole decision, please click here.
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T 795/06 – Extent Of Protection Of A Use Claim
K’s Law – The ebook
T 795/06 – Extent Of Protection Of A Use Claim 14 Jun 2010
Claim 1 as granted read: Use of the botulinum neurotoxins from Clostridium botulinum of type A, B, C, D, E, F or G or a mixture of two or more of these neurotoxins, characterised in that the neurotoxin or mixture of neurotoxins is free from the complexing proteins which naturally form complexes with the botulinurn neurotoxins, for the manufacture of a pharmaceutical preparation for cosmetic treatment or treatment of dystonia or disorders of the nervous system in a human or animal patient who has already formed neutralizing antibodies against botulinum neurotoxin complexes. Claim 1 of the main request before the Board was identical to Claim 1 as granted. Claim 2 of the main request read: Use of a pharmaceutical preparation comprising botulinum neurotoxins from Clostridium botulinum of type A, B, C, D, E, F or G or a mixture of two or more of these neurotoxins, characterised in that the neurotoxin or mixture of neurotoxins is free from the complexing proteins which naturally form complexes with the botulinurn neurotoxins, for cosmetic treatment or treatment of dystonia or disorders of the nervous system in a human or animal patient who has already formed neutralizing antibodies against botulinum neurotoxin complexes. No such use claim was comprised in the claims as granted. The Board deals with the question of whether A 123(3) has been infringed. It has some very interesting remarks on A 64(2) and G 2/88. ** Translation from the German ** [6.1] A 123(3) prohibits amendments of the granted claims during opposition proceedings if these amendments extend the extent of protection of the European patent. As confirmed in decision G 2/88 [headnote 1] of the Enlarged Board of appeal (EBA), the extent of protection conferred by the claims before and after the amendments have to be compared. The first step that is required when doing so is to determine the extent of protection conferred by the claims as granted, because it is mandatory to establish what the extent of protection conferred by the unamended patent corresponds to. The determination of the extent of protection has to be carried out in accordance with A 69(1) and its Protocol, which provides a guide to the manner in which the technical features of the claim are to be interpreted. (G 2/88 [4]). Interpretation of use and process claims [6.2.1] The EPC allows both process claims and use claims. According to the EBA in decision G 1/83 [11], it is often only a matter of preference whether an applicant claims an activity as a process for carrying out the activity, setting out a sequence of steps, or whether he seeks protection for the activity, which may naturally comprise a series of steps, as the use (Anwendung oder Verwendung) of a thing for a stated purpose. The EBA did not consider this to constitute a substantive (sachlich) difference. [6.2.2] In its decision T 958/94 [3.4], the Board examined whether there was a substantive difference between a claim directed to “a process for manufacturing a medicament intended for the new therapeutic use, characterised in that the substance is used” and a claim directed to the “use of a substance to manufacture a medicament intended for a new therapeutic use”. Considering the fact that manufacturing a medicament does in practice involve a sequence of mandatory and standardized steps, the Board came to the conclusion that according to decision G 1/83, both claims encompass in the same way the activity of formulating the active substance for a medicament, i.e. the process for manufacturing the medicament. The subject-matter of the claimed invention remained the same, which meant that the two claims were substantively equivalent. 2936 | 3398
T 795/06 – Extent Of Protection Of A Use Claim
K’s Law – The ebook
[6.2.3] In the case underlying decision T 292/04 [5-6], claim 1 concerned the use of a substance in the manufacture of an antimicrobial agent and was drafted in the Swiss-claim format. On one hand, the agent was intended for use in methods which are referred to in A 52(4), on the other hand it was also intended for use in processes not referred to in this provision, for example for formulating contact lens solutions. When assessing whether the claim was novel and inventive with respect to the prior art, following the principles set out in G 1/83, the Board came to the verdict that the claim, insofar as it was not restricted to a therapeutic use of the manufactured agent, has to be understood as referring to a process for the manufacture of a liquid antimicrobial agent. Extent of protection of claim 1 of the patent as granted [6.3.1] Having in mind this case law of the Boards of appeal, the Board is of the opinion that the aspect of claim 1 as granted which refers to the use of botulinum toxins for the manufacture of a pharmaceutical preparation for cosmetic treatment in a human or animal patient cannot be distinguished, on a substantive level, from a claim directed to a process for the manufacture of a pharmaceutical preparation using botulinum toxins. As both claims concern the same activity and naturally comprise the same process steps, they also confer the same extent of protection (see also T 279/93 [4]). [6.3.2] A 64(2) provides that if the subject-matter of a European patent is a process, the protection conferred by the patent shall extend to the products directly obtained by such process, even if the latter are not patentable per se. Consequently, the extent of protection conferred by a claim directed to a process for the manufacture of a pharmaceutical preparation using botulinum toxins also extends to the pharmaceutical preparations directly obtained by this method. [6.3.3] The protection conferred by A 62(4) [sic] for products directly obtained by a process depends on the breadth of the wording of the claimed manufacturing process. In the present case the only step that characterises the manufacturing process is the use of botulinum toxins. Therefore, the Board comes to the conclusion that the protection conferred by A 64(2) extends to all pharmaceutical preparations which are directly obtained by any manufacturing process using botulinum toxins. [6.3.4] As taught in G 2/88 [5, 3rd §], it is a principle underlying the EPC that the protection conferred by a claim directed to a substance (Stoffanspruch) is “absolute”; that is, it comprises, among other things, any kind of use of the substance, regardless of whether it has been disclosed or known by the inventor. In view of this principle the EBA has come to the understanding that whenever claims directed to a substance or a composition comprising this substance are amended so that the amended claims are directed to the use of that substance or the use of the composition for a particular purpose, the amended claims are not open to objection under A 123(3) [headnote 2]. [6.3.5] In summary, the Board notes that part of claim 1 as granted refers, in substantively equivalent form (in sachlicher Äquivalenz), to a process for the manufacture of a pharmaceutical preparation using botulinum neurotoxin. Pursuant A 64(2) and in view of the fact that granted claim 1 does not comprise any feature defining this manufacturing process in detail (see [6.3.3] above) the protection conferred by this claim would cover any pharmaceutical preparation comprising any botulinum neurotoxin. In view of the principles established by the EBA in G 2/88, present claim 2, which corresponds to the use of a pharmaceutical preparation comprising botulinum neurotoxins for the cosmetic treatment of certain patients, is not open to objection under A 123(3). Applicability of A 64(2) [6.4.1] In view of the outcome of the above analysis, the question of whether A 64(2) is applicable in the determination of the extent of protection of claim 1 is crucial. [6.4.2] In decision G 2/88 [3.3] the EBA has established that there is a clear distinction between the extent of a protection conferred by a patent and the rights which are conferred by a European patent. Whereas the protection conferred by a patent is determined by the content of the claims (A 69(1)) and in particular by the categories of such claims and their technical features, the rights conferred on the proprietor of a European patent (A 64(1)) result from the legal provisions of the designated Contracting States. [6.3.4.] A 64(2) refers to the “rights conferred by a European patent”. Therefore, the question of whether A 64(2) is to be taken into consideration for the determination of the extent of protection of a granted claim has to be answered.
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T 795/06 – Extent Of Protection Of A Use Claim
K’s Law – The ebook
[6.3.5] In its decision G 2/88, the EBA has examined the effect of A 64(2) on the answer to the question of whether an amendment consisting, for instance, in a change from a claim directed to a substance to a claim directed to a use of this substance increases the extent of protection. Thereby the EBA has indicated that A 64(2) is to be taken into account in the assessment of the extent of protection conferred by a claim. The EBA has established that an amended “use claim” which is equivalent to a manufacturing process using the originally claimed substance, would extend the protection to the product of this process according to A 64(2), which would correspond to increasing the extent of protection within the meaning of A 123(3). However, in the case that was actually presented to the EBA, wherein the amended “use claim” corresponded to a claim directed to a process using the originally claimed substance in order to achieve an effect (and not to manufacture a product), the EBA came to the conclusion that as a rule, there was no such effect of A 64(2), as this use claim was not a process claim within the meaning of A 64(2). [6.4.5] A number of decisions of Boards of appeal have followed the EBA in this application of A 64(2) (see, for example, T 5/90 [4.1]; T 73/92 [7]; T 20/94 [4.3.1]; T 277/95 [7]; T 401/95 [4.3.2]; T 570/96 [2.3-6]; T 1013/96 [2]; T 651/03 [4.2]; T 423/04 [3]; T 1026/04 [23.2] and T 304/08 [3.3.2]). [6.4.6] The Board is aware of decision T 1286/05 [2.5] wherein the competent Board explained in an obiter dictum concerning A 123(3): “the change from the only independent claim of the patent as granted relating to a process of preparation (“Use of a lipophilic surfactant component for the manufacture of a pharmaceutical composition …”) to a claim referring to a use for achieving a particular effect (“Use of a lipophilic surfactant component for reducing the inhibitory effect of the hydrophilic surfactant …”) would extend the protection conferred.” However, as this opinion is not reasoned in decision T 1286/05, the Board is not in a position to examine its correctness. [6.4.7] Therefore, the Board is convinced that A 64(2) is to be taken into account when considering the extent of protection conferred by claims. This holds true both for the assessment of the extent of protection of an amended claim such as the claim in the case presented to the EBA in G 2/88, and for the assessment of the extent of protection of a granted claim. [6.5] As already mentioned in paragraph [6.3.5] above, the Board is convinced that claim 2 complies with the requirements of A 123(3). NB: When translating this decision, I encountered the difficulty of translating the term ‘Verfahren’. The EPC itself is not consistent; when the German version says ‘Verfahren’, the English version sometimes has ‘method’ (e.g. A 53c)) and sometimes ‘process’ (e.g. A 64(2)). To make the confusion complete, the present decision also sometimes refers to a ‘Prozess’. As far as I can see, the terms ‘method’ and ‘process’ are used interchangeably in the case law and these terms are strictly equivalent under the EPC. To read the whole decision, please click here.
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R 14/09 – On The Right To Be Heard
K’s Law – The ebook
R 14/09 – On The Right To Be Heard 12 Jun 2010
[5] The Petitioner argues in essence, that he had not been given a reasonable chance to realise in time, i.e. before the Board of Appeal took the decision under review, the relevance which the Board attributed to Attachment A, so that he was not able to comment on it as it is his right pursuant to A 113(1). This contention is, however, not supported either by the facts or by the law: [6] True, when the Petitioner received that document more than 14 months before the oral proceedings (OPs), at the end of which the decision under review was taken, the members of the Board of Appeal had been replaced as required by A 24(4). However, this interim composition of the Board did not and could not have any bearing on the decision on the substance of the case. What matters is rather the fact that the document in question is nothing else than a set of colored drawings with commentaries, all made up by the then appellant (patent proprietor) and submitted for an enhanced comprehensibility of his arguments in support of the patentability of the claims according to the “1st Auxiliary Request” and that the parties, about three months before the OPs, were informed by the Board of Appeal in its second communication, that the reasoning provided in support of inventive step would be relevant also in respect of the appellant’s main request. Under these circumstances the Petitioner, even if he (wrongly) assumed that Attachment A was not formally in the proceedings, he could not reasonably have trusted that this document would not be considered at all by the Board of Appeal. The Petitioner did not allege and there are no indications whatsoever, that during the OPs he had been hindered by the Board of Appeal to comment on that document or on the Petitioner’s arguments referring to it before or after he had, according to his own account, unsuccessfully objected to the use of that document. [7] It follows that the Petitioner had actually been given the opportunity to present his comments within the meaning of A 113(1) also on Attachment A insofar as it is to be considered as grounds or evidence on which the decision under review is based. [8] It is then irrelevant for the purposes of A 113(1), whether and when Attachment A became (legally) part of the file within the meaning of R 147(1), and it is immaterial that, as the Petitioner maintains, he became aware of the purported relevance of that document only when reading the reasons for the decision. That would certainly have been too late for a successful plea, but could not alter the fact that his right to be heard before the Board of Appeal decided against him was not infringed. It is pointed out in this context, that it is not the purpose of that right to provide – and the A 112a(2) (c) and A 113(1) may not be construed as providing – to any party to the proceedings a further opportunity to argue its case. [9] The Petitioner relies also on purported violations of A 114 in conjunction with R 116(1) and (2) or, respectively, R 101 and 99(2). However, these provisions are not listed in A 112a(2) or R 104 as grounds on which a petition may be filed. [10] The “Technical Opinion on the Submissions of the Patent Proprietor concerning the Parameters of EP 0 802 341 B1” was filed during the period provided in A 112a(4), first alternative. However, the right to be heard or “the opportunity to present comments” (A 113(1)) is by definition not related to the content and/or the merits of the comments. Hence, there is no need that the party affected demonstrate that it would have produced convincing evidence (or arguments) if sufficient opportunity to comment had been given to it. It follows that the “Technical opinion” cannot be considered in the review of the impugned decision, irrespective of whether it contained “substantiated and substantive submissions, which would have considerably influenced the decision of the board of appeal”. You can download this decision here.
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Interpretative spotlight : “comprising”
K’s Law – The ebook
Interpretative spotlight : “comprising” 12 Jun 2010
[29] The meaning of the word “comprising” is generally interpreted as encompassing all the specifically mentioned features as well as optional, additional unspecified ones, whereas the term “consisting of” only includes those features as specified in the claim. Therefore, “comprising” includes as a limiting case the composition specified by “consisting of”. The board is satisfied, therefore, that the amendment from the former into the latter does not extend beyond the content of the application as originally filed (see also e.g. decisions T 457/98 [2.1.1] and T 425/98 [3.1]). Admittedly, this finding is not surprising, but it is always good to have a decision where it is clearly stated. To read the whole decision (T 997/06), please click here.
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T 360/07 – Striving For Purity
K’s Law – The ebook
T 360/07 – Striving For Purity 11 Jun 2010
[3.2] Document D3 discloses […] the production of amorphous (S)-omeprazole magnesium salt by dissolving (S)-omeprazole magnesium salt in ethanol and introducing the solution into CO2 as an antisolvent. [3.3] Whereas claim 4 of the main request requires that the magnesium omeprazole has “a residual organic solvent content of less than 7% by weight”, document D3 does not specify the organic solvent content of the products disclosed therein. Therefore, it is to be assessed whether or not this feature of claim 4 renders its subject-matter novel. [3.4] The [patent proprietor] considered decision T 142/06 to apply to this case rather than T 990/96 […].
[3.4.1] Decision T 990/96 [7] states that “... a document disclosing a low molecular chemical compound and its manufacture makes available this compound to the public in the sense of Article 54 EPC in all grades of purity as desired by a person skilled in the art” if “Conventional methods for the purification ... such as recrystallisation, distillation, chromatography, etc., which normally can be successfully applied in purification steps, are within the common general knowledge of those skilled in the art.” This statement is preceded by the following: “It is common general knowledge that any chemical compound obtained by a chemical reaction will normally contain impurities for various reasons, such as sidereactions, incomplete conversion of starting materials, etc., and that it is not possible for thermodynamical reasons to obtain a compound, which is - in the strict sense - completely pure, i.e. totally free of any impurity.” (see point [6] of the reasons). This clearly indicates that the conclusion drawn in point [7] of the reasons for the decision not only applies to the type of impurity of the specific case (here the threo isomer in the respective erythro isomer) but to impurities in general, namely to any undesired compound present in the desired product. [3.4.2] The [patent proprietor] considered residual solvent not to be an impurity. It referred to US patent D20 which defines that “references herein to ‘impurities’ are to be understood as not including residual solvents ...” […]. However, the word “herein” in this citation indicates that said definition was made only for the purpose of this document, possibly in contrast to the general meaning of the term “impurity”. Magnesium omeprazole is used as an active agent in pharmaceutical compositions (see document (D7) […]). High contents of organic solvents in general are undesirable and even moderate contents of methanol (the most preferred solvent according to the patent in suit) inacceptable in pharmaceutical compositions (see document D22 […]). Consequently, residual organic solvents in general and methanol in particular are to be regarded as impurities whenever present in magnesium omeprazole. Hence, the decision T 990/96 might be relevant for the present case. [3.4.3] Decision T 142/06 [3.27-3.3.2] refers to T 990/96. Under point [3.29] of the reasons it bases its deviation from T 990/96 on the fact that only the low content of chlorine in the latex enables the production of films of the desired oxygen barrier and boil blushing properties. The present case differs from the one of T 142/06 in that here the desired therapeutical effect is only based on magnesium omeprazole as such. Therefore, the reasons to deviate from T 990/96 indicated in T 142/06 do not apply to the present case. Consequently, there is no reason to apply the conclusions drawn in T 142/06 to the present case. [3.4.4] Decision T 990/96 [7] states that the absence of impurities cannot contribute to novelty only if said purification can be achieved by conventional means. Such conventional means include the evaporation of the solvent as suggested in example 6 of document D7. Furthermore, detailed methods for the effective removal of residual solvents by drying were known from the review article D22 […].
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T 360/07 – Striving For Purity
K’s Law – The ebook
[3.4.5] Consequently, there is no reason to deviate from the decision T 990/96. All the features of claim 4 are explicitly disclosed in […] D3 except the requirement that the residual organic solvent content has to be less than 7% by weight. As this range for the organic solvent content cannot contribute to novelty, the subject-matter of claim 4 of the Main Request lacks novelty under A 54(3) […]. To read the whole decision, click here.
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T 349/09 – Wrong Target
K’s Law – The ebook
T 349/09 – Wrong Target 10 Jun 2010
The present decision reminds us that unlike oppositions, appeals attack decisions, not patents. Therefore, it is risky to file a statement of grounds of appeal that only restates the arguments set forth in the notice of opposition without pointing out the shortcomings of the decision against which the appeal has been filed. [4] The appellant conceded that the statement of grounds of appeal is “more or less an adaptation or condensation of the notice of opposition”. There can be no doubt at all that the statement of grounds of appeal was prepared by simple editing of the earlier notice of opposition so as, for example, to refer to claims numbered as in the request allowed by the Opposition Division (OD). Moreover, the editing was clearly done in great haste and/or with insufficient attention so that some obvious misspellings occurred and an objection in the notice of opposition (that under A 53a) was retained even though, as a result of the decision under appeal, it had become redundant. The respondent almost correctly observed that the only reference to the decision under appeal was in the request to set it aside - in fact there were two such references, on each on the first and last pages of the statement of grounds of appeal, and a third mention of the decision also on the first page in the sentence beginning "Claim 1 of the opposed patent as mentioned with the Interlocutory Decision pertains to...". That third reference immediately precedes the use of some twenty-one pages of text, recycled with slight editing from the notice of opposition, which contain no other reference whatsoever to the decision under appeal, let alone any attempt to relate its content to that decision. The respondent was beyond doubt correct to say it was a “copy and paste” version of the notice of opposition. The appellant was beyond doubt correct to say that there is no verbatim or explicit link between the grounds of appeal and the decision. [5] A 108, third sentence, is the basic legal provision relating to statements of grounds of appeal. It requires that: Within four months of notification of the decision, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations. The importance of this provision is that, by requiring a statement of grounds of appeal, it calls for something more than, and different from, submissions made at first instance. As to what form that should take, one must turn to the Implementing Regulations. [6] The relevant provision of the Implementing Regulations is R 99(2) which sets out in general terms the required contents of a statement of grounds of appeal. It reads: In the statement of grounds of appeal the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based. This makes quite clear that the statement of grounds of appeal must, first, supply the appellant’s reasons for attacking the decision under appeal and, second, put forward the facts and evidence on which the appeal is based. Again, it is significant that R 99(2) refers here to the appeal and not to the opposition. Of course, R 99 governs appeals against other decisions than those of the OD. However, even within the limited ambit of opposition proceedings, the obligatory requirement is to substantiate the appeal and not just refer to or repeat the substantiation of the opposition. This distinction - namely, that oppositions attack patents, but appeals attack decisions - is crucial and the attack must be presented accordingly. [7] Additionally, Article 12(2) of the Rules of Procedure of the Boards of Appeal (RPBA) requires: The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on. The similarity of Article 12(2) RPBA to R 99(2) is clear. Again, there is the requirement to give reasons for attacking the decision under appeal and to put forward the facts, arguments and evidence relied on, which clearly means relied on in the appeal. Additionally, the statement of grounds of appeal must contain an appellant’s 2943 | 3398
T 349/09 – Wrong Target
K’s Law – The ebook
complete case (if only because later amendments are not necessarily allowable - see Article 13(1) RPBA) and the facts, arguments and evidence must be specified “expressly”. [8] Similarly, the case-law of the Boards of Appeal has consistently considered it to be incumbent on an appellant to file, by the end of the four month time limit, a statement of grounds which (either in itself or together with the notice of appeal) presents the Board with the appellant’s case why it considers the decision under appeal to be wrong. A detailed survey of the case-law in question is at pages 621 to 625 of “Case Law” in the section VII.D.7.5 entitled “Statement of grounds of appeal”. It is sufficient to mention here the general principles established by early case-law, namely that (a) the statement of grounds of appeal should specify the legal or factual reasons on which the case for setting aside the decision is based, present clear and concise arguments to enable the board and the other party or parties to understand immediately why the decision is alleged to be incorrect, and on what facts the arguments are based, without first having to make investigations of their own; and (b) to be sufficient for admissibility, the grounds of appeal must be analysed in detail vis-à-vis the main reasons given for the contested decision. [9] Just as there is a noticeable similarity between R 99(2) and Article 12(2) RPBA as already noted (see [7] above), so there is also an equally noticeable similarity between Article 12(2) RPBA and the basic principles of the case law (see [7] and (a) and (b) in [8] above). This is not coincidental. As has been observed elsewhere (see T 87/05), the RPBA are in part at least a codification of the case-law on procedural practice. It would indeed be surprising if the RPBA did not reflect the case-law. This means that compliance with the basic principles of the case-law on substantiation will often ensure compliance with Article 12(2) RPBA - and vice versa. It also means that recourse to the case-law is unlikely to avoid a finding of inadmissibility if Article 12(2) RPBA has not been complied with. Article 12(2) RPBA provides the essential test of substantiation which the case-law supplements but over which it does not take precedence. The [opponent] referred to Article 12(2) RPBA as “crucial” and the Board agrees. [10] To summarise, the legislation and the case-law are unanimous in the requirement that a statement of grounds of appeal must present a reasoned case against the decision under appeal. All of A 108 and R 99(2) and Article 12(2) RPBA require reasons to support the appeal and both R 99(2) and Article 12(2) RPBA require those reasons to say why the decision under appeal is attacked. While clearly implicit in those legislative requirements, the caselaw adds that the grounds of appeal must be analysed vis-à-vis the reasons in the decision under appeal and must enable the board and the respondent to understand immediately why the decision is alleged to be incorrect: what the Board in its communication called the need for “argument or reasoning linking the matters set out in the statement of grounds with the reasons given by the OD in its decision”. The legislation does not say in more detail how that link is to be made but, by requiring a complete case setting out expressly the facts, arguments and evidence relied on, Article 12(2) RPBA indicates it should, to use the appellant’s word, be verbatim. If not spelled out in terms, the link must be at the very least be apparent from the expressly-stated contents of the statement of grounds of appeal, since the board and the other party or parties must be able to understand the appellant’s case from the statement without having to make investigations of their own (see point 8(a) above). […] The appeal is rejected as inadmissible. To read the whole decision, please click here. NB: This decision has already been reported on the Blog du droit européen.
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T 938/09 – Mind Your Guide
K’s Law – The ebook
T 938/09 – Mind Your Guide 9 Jun 2010
Why entrust an appeal to a professional representative? Wouldn’t it be cheaper to be represented by an employee (or, as far as small businesses are concerned, by the CEO)? Wouldn’t it be simpler to entrust the appeal to the legal practitioner who already represents the party before national jurisdictions? That may well be. But these persons, although allowed to represent a party before the EPO, might be insufficiently familiar with proceedings under the EPC. And this is what appears to have happened in the present case. Here an application of the Symbasis company was refused by the Examining Division on January 27, 2009. Mr. Z., a legal practitioner (Rechtsanwalt) took over the representation and filed an appeal on March 11, 2009. A second appeal was filed by the CEO of Symbasis, Dr. T. No appeal fee was paid. The renewal fee for the seventh year having fallen due on October 31, 2008, Dr. T. enquired on March 25, 2009 whether it was correct that he could still pay the renewal fee. The EPO having confirmed this possibility, a payment of 1500 € was received on March 31, 2009. On April 21, 2009, Mr. Z. enquired why he had not received any confirmation for the filing of the appeal nor an invoice concerning the appeal fee. The EPO replied that it was too late for paying the appeal fee but that reestablishment could be requested. Mr. Z. followed this advice. He explained that in a telephone call made on February 26, 2009, he and Dr. T had agreed that Symbasis would pay the appeal fee. Dr. T. had asked his associate, Mr. S., to transfer the appeal fee. Mr. S. had transferred 1500 € on March 30, 2009. The EPO had entered this as a payment of the renewal fee. Dr. T. might have confounded the fees because he was professionally overburdened at that time. Both Dr. T. and Mr. S. filed declarations in lieu of oath (eidesstattliche Versicherungen) that it was intended to pay the appeal fee and that there had been a confusion. Here is what the Board had to say: ** Translation from the German ** [3] Pursuant A 122(1) the applicant who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit shall, upon application, have his rights re-established. If the party is represented by a professional representative, re-establishment can only be granted if it can be shown that both the applicant and the representative have taken all due care (J 5/80 [headnote 1]). It is part of the duties of a representative to ensure that current time limits are met so as to avoid unintentional losses of rights. In doing so he has to know the relevant legal provisions. Ignorance of the law is not a valid ground for re-establishment (see e.g. J 6/07 [2.4]). [4] In the present case the representative apparently did not now the regulations concerning time limits and fees because he told the EPO in his letter dated April 21, 2009, that he had not received an invoice concerning the appeal fee that had fallen due and that he requested such an invoice. Apparently he acted on the assumption that he would receive a request for payment and did not know that the appeal fee had to be paid within two months of delivery of the decision and that the amount to be paid is fixed in the Rules relating to fees. The Board cannot endorse the argument of the representative that this letter was legally irrelevant (unbeachtlich) because it was written after the expiration of the time limit for the payment. As a matter of fact, when assessing whether all due care was taken the overall circumstances always have to be taken into account. Also it is not clear how the letter could be an office error (Büroversehen) because it had been signed by the representative himself. [5] Even assuming that the representative, in his telephone call on February 26, 2009, mentioned the need to pay the appeal fee in due time, it would have be part of his duties to mention the amount of the fee to be paid and how concretely the time limits would expire. Apparently the applicant is not familiar with patent matters and insufficiently informed on how time limits operate. This can be seen, for instance, in its request for an extension of the time limit to file an appeal (February 26, 2009) or in its enquiry concerning the payment of the renewal fee (March 25, 2009). In such a case, it is the duty of the representative to explain to the applicant until when a fee is to be paid and what the amount is. He cannot have done so in the telephone call on February 26, 2009, because he himself was not aware of these matters, as can be seen from his letter dated April 21, 2009. 2945 | 3398
T 938/09 – Mind Your Guide
K’s Law – The ebook
[6] The Board cannot endorse the argument of the representative according to which, even if he had not known the time limit on April 21, 2009, he must have known it at least on February 26, 2009, because otherwise he could not have mentioned the need to pay the appeal fee in due time. This does not fit the common experience of life (allgemeine Lebenserfahrung). It rather appears that the representative mentioned the need to pay the appeal fee in due time in general terms (pauschal) without concretely explaining what this means in detail. He left it to the applicant to procure itself the relevant pieces of information. This is not in conformity with the due care a representative [is expected to take]. For this reason alone, the request for re-establishment cannot be granted. As my boss once said, “if a blind man leads a blind man, both will fall into a pit”. (Mt 15.14) To read the whole decision (in German), please click here.
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T 760/08 – Too Short On Substance
K’s Law – The ebook
T 760/08 – Too Short On Substance 8 Jun 2010
The present decision deals with an appeal against the decision of the Opposition Division (OD) to revoke the patent for lack of novelty of claim 1 with respect to documents D2 and D3. The patent proprietor filed a new set of claims and the following statement: “New claim 1 according the main request has the features of claims 1 and 4 as granted, wherein the features of claims 1 and 4 as granted form the preamble of new claim 1 and the feature of claim 6 as granted forms the characterising part of new claim 1. New claim 1 is followed by new claims 2 to 12 which correspond to claims 2, 3, 5 and 7 to 14 as granted, only the references to preceding claims having been adapted. As the prior art does not contain a heating with all the features of claim 1, in particular with the characterising feature of new claim 1, the subject-matter of claim 1 according to the main request is novel over the prior art. Moreover, [its] subject-matter also involves an inventive step because the prior art does not disclose the feature of the characterising part of new claim 1, so that combinations of two documents of the prior art cannot lead to the subject-matter of the main request in an obvious way. Therefore, the request to set aside the decision dated February 12, 2008 and to maintain the patent in amended form is fully justified.” The Board deals with the question of whether the appeal is admissible: ** Translation from the German ** [2] In conformity with the case law the Board assumes that a statement of grounds of appeal can be considered to be sufficiently substantiated if a new factual situation (Tatbestand) which deprives the contested decision of its basis (T 252/95) is presented, in particular via the filing of new sets of claims (T 934/02). The Board is of the opinion that the appellant has two options as regards the statement of grounds of appeal. Either it attacks the decision of the OD by claiming that an error has been made and that this error would oblige the Board to completely set aside the decision if the Board followed the statement of facts (Sachvortrag) made by the appellant. This requires a conclusive statement of facts concerning all the grounds on which the decision is based on behalf of the appellant. Or the appellant makes it possible for the Board to redress its situation by filing amended sets of claims, which the appellant believes to be suitable for remedying the deficiencies that have been objected in the decision. [3] However, in the latter situation it is not sufficient to simply file a new set of claims without any comment. Rather the appellant has to justify why and to what extent the amended set of claims takes into consideration the factual and legal appreciations on which the OD has based its decision and overcomes them to the extent that the decision is to be set aside. (T 220/83 and T 145/88) What matters is not the length (Umfang) of the statement of grounds of appeal but its factual content: The requirement of A 108 is for a statement which sets out the substance of the Appellant’s case; that is, the reasons why the appeal should be allowed and the decision under appeal should be set aside. […] a well-drafted Statement of Grounds of Appeal should contain reasoning that is full but concise. And, in general, it is obvious that the less reasoning that a Statement contains, the greater will be the risk that the appeal will be rejected as inadmissible for non-compliance with A 108. (J 22/86 [2]) [4] These considerations are reflected in Article 12(2) of the Rules of Procedure of the Boards of appeal (RPBA): The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed […] and should specify expressly all the facts, arguments and evidence […] (emphasis by the Board)
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T 760/08 – Too Short On Substance
K’s Law – The ebook
[5] One may expect from a statement of grounds of appeal which contains the complete case (Sachvortrag) of the appellant within the meaning of Article 12(2) RPBA that it is self-consistent (widerspruchsfrei), unambiguous and sufficient. [6] In the present case the patent has been revoked for lack of novelty of the subject-matter of claim 1. When filing the statement of grounds of appeal, the appellant has presented a new main request and has explained it as cited above. The first paragraph of the statement refers to the amendments that have been made, the second paragraph deals with novelty and the third with inventive step. [7] Paragraph 1 of the statement of grounds of appeal first indicates that as far as the newly filed main request is concerned, “the features of claims 1 and 4 as granted form the preamble of new claim 1”. Claim 4 of the patent as granted refers to an electrical resistance heating. However, this feature is not in the preamble but in the characterising part of new claim 1, which now has two new features, i.e. the electrical resistance heating from claim 4 as granted and the thick-layer heating body from claim 6 as granted. Therefore, the justification is to some extent contradictory. [8] The second paragraph of the statement of grounds of appeal refers to the “characterising feature” (Merkmal des Kennzeichens), which feature is not unambiguous, for the reasons mentioned above. As a matter of fact two new features have been incorporated into the characterising part. Apparently only one of them is suitable for restoring novelty. Moreover, the second paragraph does not deal with the decision of the OD and the documents D2 and D3 cited by it but only mentions the “prior art” in general terms. As the OD has justified the objection of lack of novelty with documents D2 and D3, one might presume that the “prior art” designates those documents. However, this is not unambiguous because the third paragraph, which deals with inventive step, also mentions the “prior art” but arguably refers to other documents than only D2 and D3. Therefore, there is no unambiguous reference to the prior art from which the appellant wishes to distinguish itself. [9] Because there is no unambiguous definition of the prior art and of the “characterising feature” (Merkmal des Kennzeichens) the last two paragraphs of the statement of grounds of appeal reads as if they were standard phrases which do not refer to the impugned decision in a concrete manner. If the term ‘heating’ was replaced by the term ‘device’, they could be found in submissions (Schriftsatz) in any patent case in the field of mechanics. Therefore, these paragraphs are not suitable for dealing with the impugned decision in a concrete manner. They do not point out which features justify novelty or why these features are novel over D2 or D3. The appellant leaves it to the Board to clarify the contradictions in the first paragraph, to define the prior art mentioned in paragraphs 2 and 3 and to consider which of the two features that have been incorporated into the characterising part, isolated or together, the appellant believes to make the claims novel or patentable. [10] During the written proceedings and partly also during the oral proceedings, the appellant has cited the following decisions in order to support its submissions on the requirements for statements of grounds of appeal: J 2/87, T 563/91, T 729/90, T 105/87, T 162/97, T 833/00. In J 2/87 the written approval to the grant of a patent was accepted as statement of grounds of appeal. This case is not comparable with the present case because there were no amendments requiring an explanation. In T 105/87 it was stated that “by limiting the subject-matter of the claim and by submitting reasons for the patentability of such a claim the Appellant has sufficiently dealt with the ground of the decision of the first instance”. Therefore, in this case there were reasons for the patentability of the claim, which means that the case is not comparable with the present case. In T 833/00 [1.2] the appellant had requested that the patent be maintained on the basis of the claims which the OD had considered allowable and had filed again all the arguments in favour of patentability of the remaining claims it had already presented. Therefore, this case is not comparable either. On the other hand, T 563/91 [1.2], T 729/90 [1.2] and T 162/97 [1.1.2] are decisions that could support the position of the patent proprietor. However, there are several other decisions that have not been cited by the patent proprietor which establish rather more strict requirements for statements of grounds of appeal. In particular, one may cite T 220/83 and T 1045/02 [5] where a similar factual situation triggered the following statement: “If an application is rejected on the ground of lack of novelty the statement of grounds of appeal should at least make it clear which feature of the claimed object the appellant believes not to have been disclosed in the relevant prior art (here D2). The duty of justification has not been complied with when the Board has to speculate for which reasons the appellant considers that the impugned decision is incorrect”. 2948 | 3398
T 760/08 – Too Short On Substance
K’s Law – The ebook
[11] This Board has already made clear in decision T 922/05 that it considers that the principles underlying Article 12(2) RPBA appear to be a suitable standard (Maßstab) for the admissibility of an appeal that generalises the above case law which is not always uniform and which in most cases depends on the concrete circumstances of the individual cases. For the reasons given in points [7] to [9], the present statement of grounds of appeal does not comply with these principles. [12] Therefore, the Board comes to the conclusion that the statement of grounds of appeal filed by the appellant is insufficient. Arguments filed after the time limit fixed in A 108 cannot be taken into consideration for assessing the admissibility of the appeal. Thus the appeal is to be rejected as inadmissible under R 101(1). I find this decision very tough on the appellant. Maybe something happened during the proceedings which exasperated the Board? Be that as it may, the decision is a useful reminder that statements of grounds of appeal should be drafted very carefully. To read the whole decision (in German), click here.
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T 354/07 – Bad News For Meta-Methodists
K’s Law – The ebook
T 354/07 – Bad News For Meta-Methodists 7 Jun 2010
This decision deals with the patentability of meta-methods used for software creation. ** Translation from the German ** [2] The lack of inventive step already results from actual claim 1, which concerns a method for creating software programs by means of an electronic data processing system. As a rule, such a method comprises both technical and non-technical features. However, as long as such non-technical features and aspects of the invention do not have a direct interaction with technical features, in view of a technical effect, they cannot establish an inventive step (see T 154/04 [14 et sequ.]). [3] As far as information modelling as a stage of software development is concerned, the Board has already stated that it is as such an intellectual activity (gedankliche Tätigkeit) and, therefore, in analogy to the objects and activities mentioned in A 52(2)(a) and (c), not an invention within the meaning of A 52(1) (see T 49/99 [57]). The Board (differently composed) has come to a very similar conclusion in the more ancient decision T 204/93 for the transposition of generic program specifications into a concrete software program. [4] Software development and software creation comprise several stages, starting with the analysis of needs (Anforderungsanalyse), encompassing various design phases and ending in the software implementation. During all these phases it is essentially (dem Wesen nach) an intellectual activity, which may be compared to an engineer’s construction activity even though this work may be supported by programming tools and even though the object of the construction is a technical system. The design and programming in particular of complex systems require [the person carrying out this work] to act like an engineer and to apply technical expertise but the achievement aimed at and obtained in each of these stages does not consist in providing a technical solution to a technical problem, but a specification of needs, a model for data, processes and/or functions, or a program code. This assessment is all the more true for meta-methods which on an even more abstract level concern the process of software creation itself, e.g. by providing instructions (Handlungsanleitung) to the software developer on how to structure and organise the development process or which modelling methods are to be used. As a rule, such conceptual methods and meta-methods of software creation do not possess technical features relevant for patentability and, therefore, cannot establish inventive step, unless in a particular case (im Einzelfall) it can be shown that there is a direct causal connection with a technical effect that is relevant for the solution of a technical problem. [5] As the production of software is object of the claimed invention, the assessment of inventive step requires a careful distinction between the technical and the non-technical aspects of the invention. The present invention mentions that the invention aims at creating an improved method (and device) for porting (Portierung) software to a target platform, by means of an electronic data processing system […]. [The invention] is said to make it possible to port technical solutions that have already been conceived (erdacht) to a new target platform with as little need for modification as possible. This problem is said to be solved by the invention by means of a new method for porting software to a target platform, by means of an electronic data processing system comprising the following steps: “1. Establishing of a first function chart (Funktionsplan) for a problem to be dealt with by a software program, the first function chart being independent of the platform. 2. Establishing a second function chart by means of the first function chart, the second function chart being adapted to specific requirements of the target platform. 3. Creating the software program for the target platform by means of the second function chart.” 2950 | 3398
T 354/07 – Bad News For Meta-Methodists
K’s Law – The ebook
[6] The expression “function chart” is used with very different meanings in the common technical usage (Sprachgebrauch), both for graphic representations of processes, programs, etc., as for designating particular graphical programming languages or programs that have been graphically encoded on the basis of such languages. The ambiguity of the expression requires an interpretation on the basis of the present application. In paragraph 0011 of the A1-document the “first function chart” is described as “a graphical representation of a technical solution that is clear (übersichtlich) for the expert”. The first functional charts could be established by means of graphic editors wherein the functional blocks (Funktionsbausteine) would be placed in a working area (Arbeitsbereich), parameterised, and connected (verschalten). […] They could, for instance, be materialised as hardcopies on paper or as an electronically readable data file (Datei). The second function chart represented the software program in graphical form, which could be executed on the target platform […]. This required the transposition of the pieces of information contained in the second function chart into software code […]. [7] Therefore, the function charts within the meaning of the present application are nothing but graphical representations of a model of the control system (Steuerungs- und Regelungssystem) to be established, on different levels of abstraction, without there being an interaction with the system or the control procedures (Steuerungsprozesse) as it could be the case, for example, for a graphical user interface for a device control (Anlagensteuerung). The first function chart shows the functions and processes that are control-related (steuerungsrelevant), e.g. from the point of view of a system analyst, whereas the second function chart shows the model from the point of view of the programmer who has to take into account details of the implementation. An influence on the portibility (Portierbarkeit) of software, as claimed in the application, exists only to the extent that the software developer can re-use the pieces of information contained in the function chart that is independent of the platform. However, it is a common feature of all information models that they are applicable in an area the extent of which depends on the level of abstraction on which the model is based, such that that it is possible to concretely express the model in this area in view of different hardware requirements. The claimed concept which consists in establishing two function charts is a meta-method for structuring the modelling process. As no technical effect causally connected with the application of this method is apparent, this concept cannot be taken into consideration in the assessment of inventive step. [8] The claimed method also comprises aspects the technical nature of which is indisputable. The software programs are created “by means of an electronic data processing system” and the elements (connection, interface, etc) of the first function chart are transposed into elements of the second function chart “by means of a rule base (Regelbasis) deposited in the electronic data processing system”. [9] The Board and the appellant agree that document D1 is the closest prior art and a suitable starting point for the assessment of inventive step. This document already discloses a method for creating a software program by means of an electronic data processing system (“on IBM AT and compatibles”). In this method, a first function chart (“block diagram”) is established in a first step by means of a graphic programming tool (“The Realizer by Actum Solutions … a fully graphics oriented program”). This first function chart is platform independent. The platform independence results from the indication that the block diagram drawn with the programming tool consists of standardized symbols (“standardized industrial control symbols”). Then the programming tool creates an “intermediate software” […] from the block diagram. This software is platform dependent because the programming tool relies on particular micro-controllers and controllers programmable from memory (speicherprogrammierbare Steuerungen) which are specific to certain manufacturers (“86HC05, Siemens PLCs, …”). Finally the software program for the target platform is created with the intermediate software (“a postprocessor is started to refine the intermediate software for a specific hardware environment”). [10] The only differences between the method of the present claim 1 and the method known from document D1 are that the intermediate software, or the model on which the intermediate software is based, respectively, is represented graphically as (second) function chart and that the automatic transposition of the elements of the first function chart into the corresponding elements of the second function chart is carried out by means of a rule base deposited in the electronic data processing system. The graphic representation in the form of a second function chart only concerns the organisation and structuring of the development process, i.e. when which information model is visualised during the development process, without there being any direct causal connection with obtaining a technical effect. Structuring the development 2951 | 3398
T 354/07 – Bad News For Meta-Methodists
K’s Law – The ebook
process in such a way may facilitate the intellectual work carried out by the software developer, but it does not make any technical contribution to the state of the art and, therefore, cannot be taken into account in the assessment of inventive step. Finally, the method step according to which the elements of the first function chart are transposed into corresponding elements of the second function chart “by means of a rule base deposited in the electronic data processing system” cannot provide a basis for acknowledging inventive step. As is well known, a rule base is an integral part of “intelligent” knowledge-based methods, which have found various applications also in programming tools for developing software and which are generally known to the person skilled in the field of software development. This is also expressed in document D1 which refers to “intelligent” allotment of resources by the programming tools. The feature of obtaining such (artificial) intelligence by means of a knowledge-based method is obvious with respect to the general technical knowledge. Therefore, the subject-matter of claim 1 lacks inventive step and cannot be patented. Thus even the method claim in the version as it stands cannot be granted. As there is no version of the claims that can be granted, the appeal has to be dismissed. To
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German),
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T 862/08 – Let Lexicographers Be Warned
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T 862/08 – Let Lexicographers Be Warned 5 Jun 2010
[5.1] Document D6 is concerned with laser-glazing of a binary eutectic Fe83B17 alloy. This process comprises remelting at least in part the surface of the material through a laser-glazing pass to produce a track of an amorphous structure […]. This first laser-glazing pass complies with the step (1) of the claimed method. The second laser-beam pass according to the known process overlaps part of the first laser-glazed pass so that the overlapping zone is re-crystallized at least in part because of heat affecting. As a consequence thereof, ultrafine precipitations of primary crystals are formed in the heat affected zone (HAZ) which satisfies claimed step (2) of devitrifying at least a portion of the metallic glass to a nanocrystalline grain size […]. The [patent proprietor’s] argument that document D6 did not disclose explicitly the formation of nanocrystalline grain sized material cannot be followed for the following reasons. Firstly, the term “nanocrystalline” as such is open to interpretation in that it does not clearly define a specific range for the grain size. The patent itself explains that the nanocrystalline grains can be “in the order of 10^–9 m” […], or “below 1 μm” […]. Hence, the term “nanocrystalline” fails to permit a clear distinction from the “ultra-fine precipitations of primary crystals” identified in the HAZ according to document D6. The appellant referred to the definition of “nanocrystalline” which was accepted as being below 100 nanometres in the professional community, as confirmed by statements of Mr Jeffrey E. Shield and Dr Kureti of the University of Karlsruhe (D21). Since however the patent specification itself gives the above mentioned meaning of the term “nanocrystalline”, the statements of Mr Shield and Dr Kureti cannot lead to a different explanation of this term. However, the appellant’ argument that document D6 is concerned with a binary eutectic Fe83B17 alloy which neither comprises carbon nor a metal of the group of elements specified in claim 1 is agreed with. The subject mater of claim 1 of the main request is therefore novel. To NB
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Interpretative Spotlight : “desired”
K’s Law – The ebook
Interpretative Spotlight : “desired” 5 Jun 2010
Claim 1 of the main request read: 1. A printed document of value having at least one authenticity feature in the form of a luminescent substance based on a host lattice doped with at least one rare earth metal which absorbs and is excitable substantially in the visible region of the spectrum and is transparent in at least parts of the IR spectral region, whereby the rare earth metal is holmium and the luminescent substance is present in the volume of the document of value in a concentration such that the desired properties (gewünschte Eigenschaften) of the document of value are only just not impaired. The Board comes to the conclusion that this claim lacks clarity: ** Translation from the German ** [2.2] The wording of a patent claim has to be clear so that it is possible to examine whether an object is inside the extent of protection of the claim or not. Claim 1 of the main request […] contains the following wording: “such that the desired properties of the document of value are only just not impaired.” In order to verify whether a document of value reproduces this feature, it is necessary to know whether its “desired properties” are impaired. This presupposes knowledge of what are the desired properties of the document are. There is no definition of these properties in the claim itself. The expression “desired properties” is found in paragraphs [0010] and [0040] of the description of the impugned patent. However, there is no explanation of what is meant. A skilled person having to assess any document of value among the great number listed in paragraph [0016] of the impugned patent, is not able to ascertain in each and every case which properties were desired by the manufacturer of the respective object. Even if the person carrying out the assessment knew in a particular case, he could not know, when comparing two objects, whether the conformity or the difference concerning one property were desired or not. Therefore, the wording: “such that the desired properties of the document of value are only just not impaired” is so unclear that it cannot unambiguously characterize the document of value. [2.3] In [parallel] case T 1312/07 the [patent proprietor] had explained that “desired properties” designated the respective product specification. Even if this interpretation were to be followed, the expression would have to be considered as unclear. It cannot be excluded that product specifications change for various reasons over the period of manufacture of the product. This could entail that an object that did not comply with a specification does so at a later moment in time, or vice versa. In such cases it would not be clear which of the properties are the “desired” properties. There are no indications in the impugned patent that the specification that is valid at the moment of manufacture is decisive. However, a patent claim has to be clear on its own. It follows that the above mentioned interpretation presupposes that the claim, or at least the description, mentions a specification, which the impugned patent does not. Thus even the interpretation put forward in case T 1312/07, i.e. that the desired properties of a document of value were to be understood as the product specifications of the product of value, cannot lead to a clear claim. […] [2.5] Thus claim 1 of the main request […] worded in a clear manner and, therefore, does not comply with the requirements of A 84. To read the whole decision T 1313/07, please click here.
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T 1365/09 – Dealing With Contradiction
K’s Law – The ebook
T 1365/09 – Dealing With Contradiction 4 Jun 2010
What happens when an Opposition Division (OD) revokes a patent during oral proceedings (OPs) but then sends a communication stating that the patent is maintained in a form that corresponds to the patent as granted? What is the legal basis for dealing with such a contradiction? ** Translated from the German ** [1.2] The reasons for the decision mentioned in the impugned decision concern the rejection of the main request and of all auxiliary requests for lack of inventive step. However, the written decision sent to the parties used form EPA 2327 and declared that the patent […] was maintained “in amended form” on the basis of the description, pages 2 to 5, of claims 1 to 13 and the figures 1 to 5 of the patent specification, these documents being apparently equivalent to the patent as granted. [1.3] This contradiction had the consequence that the [patent proprietor] was not able to understand whether the patent was maintained or revoked. Moreover, [the proprietor] was not represented during the OPs where the decision was given. Therefore, the [patent proprietor] had to assume, by way of precaution, that the patent was revoked. The mere contradiction concerning the effect of the decision adversely affects [the proprietor] and entitles him to file an appeal (A 107). [1.4] Thus the appeal is admissible. Rule 111(1) [2.1] R 111 concerns the form of decisions and communications of the EPO. According to R 111(1) decisions may be given orally during OPs held before the EPO. Such decisions are then to be put in writing and notified to the parties. Obviously, the decision given during the OPs has to be the same as the decision put in writing as both sentences of R 111(1) mention only one decision. This is clear especially in the English version (“… the decision may be given orally. The decision shall subsequently be put in writing …”). [2.2] The written version of the decision of revocation that had been given orally differed at least from the printed form EPA 2327 which mentions the maintenance of the patent […] in amended form. However, there can only be one unambiguous decision. Therefore, the requirements of R 111(1) have not been complied with. As a consequence, the impugned decision is unclear and has to be set aside. Lack of reasoning According to R 111(2), first sentence, decisions of the EPO which are open to appeal shall be reasoned. The impugned decision also violates this requirement because the reasons sent on April 14, 2009 do not give any reasons for the maintenance of the patent. Therefore, the impugned decision is to be set aside. Reimbursement of the appeal fee (R 103) [4.1] According to R 103(1)(a) the appeal fee shall be reimbursed if the appeal is successful and if the reimbursement is equitable by reason of a substantial procedural violation. It is therefore necessary to examine whether there is such a substantial procedural violation. [4.2] The decision notified in writing violates the duty to provide a reasoning (Begründungspflicht) pursuant R 111(1). This duty to provide a reasoning is a particular embodiment of the right to be heard enshrined in A 2955 | 3398
T 1365/09 – Dealing With Contradiction
K’s Law – The ebook
113(1), as a party also has a fundamental right to know why a decision having the stated effect has been taken. According to the established case law of the Boards of appeal of the EPA, a violation of the right to be heard is a substantial procedural violation. The contradiction between the decision that had been given orally and the decision that had been notified in writing violates the requirements of R 111(1) and also constitutes a substantial procedural violation (see T 666/90 [2.2.2], where R 68(1) EPC 1973 was applied). [4.3] Both substantial procedural violations justify the reimbursement of the appeal fee for reasons of equity. To read the whole decision (in German), click here.
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T 867/05 – Reinstatement Questioned
K’s Law – The ebook
T 867/05 – Reinstatement Questioned 3 Jun 2010
[11.1] The claims of the requests underlying the decision under appeal concerned artificial kidneys and a method of producing a polymeric membrane material. [11.2] The claims of the requests annexed to the statement setting out the grounds of appeal of the proprietors appellants respectively concerned:
an artificial kidney (Main, and Subsidiary Requests 1 to 7), a use, in in vitro dialysis, of the membrane material (Subsidiary Requests 8 to 10) and a method of producing an artificial kidney (Subsidiary Requests 11 and 12, as well as most of the previous requests as a further independent claim).
[11.3] In response to a communication of the Board in preparation for oral proceedings, the proprietors appellants, with their letter dated 11 September 2009, submitted 18 fresh requests concerning respectively:
an artificial kidney (Main, 1st, 2nd and 15th Auxiliary Requests); a membrane material for use in an artificial kidney (3rd to 5th and 16th Auxiliary Requests); a membrane material as defined in the claims as granted (6th Auxiliary Request); a more limited membrane material as in Claim 7 as granted (7th, 8th and 17th Auxiliary Requests); a method of producing an artificial kidney (9th and 12th Auxiliary Request); a method of producing a polymeric membrane comprising the features of Claims 1, 7 and 13 as granted (10th, 11th and 14th Auxiliary Requests); a method of producing a membrane for use in an artificial kidney (13th Auxiliary Request).
[11.4] As regards the requests containing claims directed to a membrane material […], the opponents objected that the patent proprietors were not adversely affected by the decision under appeal, which did not deal with a membrane material, so that those requests were inadmissible. [11.5] The question of whether or not a party is adversely affected by a decision taken by an authority as defined in A 106 arises in connection with A 107 in order to establish who may appeal. In the present case, the proprietors were adversely affected by the decision of the Opposition Division (OD), which did not accede to e.g. their Main Request, so that the appeal of the patent proprietors was admissible, which fact is not contested. [11.6] The objection raised by the opponents indeed concerns the question of whether or not in opposition appeal proceedings broader claims (i.e. broader than those underlying the decision under appeal) may be reinstated (Case Law of the Boards of Appeal of the EPO, 5th edition 2006, VI.J.3.2.2(b)). [11.7] According to the case law, where as in the present case the patent is maintained in amended form and the patent proprietors are themselves appellants, they may in appeal proceedings pursue claims which are broader than those held to be allowable by the OD. [11.8] However, the opponents have referred to T 528/93, mentioned in the case law, in which it was decided that in appeal proceedings the patent proprietors may only pursue claims which were the subject of the decision at first instance, as they were not adversely affected with respect to claims requests that were not the subject of the decision under appeal, e.g. because the claims requests had been withdrawn before the OD. According to the opponents, that case was similar to the present one. [11.9] The case law also mentions decision T 168/99 [1], in which it was decided that withdrawal of subjectmatter (there, of the granted claims before the OD had commented on them) did not necessarily mean that it had formally been abandoned. Hence, the reinstatement of the claims as granted as the Main Request was allowed, in particular because objections under A 123, paragraphs 2 and 3, had been raised against the requests containing amended claims. 2957 | 3398
T 867/05 – Reinstatement Questioned
K’s Law – The ebook
[11.10] It is apparent from the above that T 528/93 deals with claims being substantially identical, withdrawn before the OD and represented before the Board, whereas T 168/99 concerns a case in which there was no explicit abandonment of the claims as granted and issues under A 123(2)(3) were raised against the claims of the auxiliary requests. [11.11] Since in the present case the claims as granted had not been explicitly abandoned, Claim 1 of the 4th Auxiliary Request had never been presented before the OD and issues under A 123(2)(3) were raised against the claims of the Main and 1st to 3rd Auxiliary Requests, the present case is similar to T 168/99 rather than to T 528/93. [11.12] Hence, there is no conflict with T 168/99 and the conflict between T 528/93 and T 168/99, if any, does not affect the present case. [11.13] In view of the case law and in the absence of any conflicting decision to the present case, a referral to the Enlarged Board of Appeal as invoked by the opponents is not necessary. [11.14] Therefore, the […] request is admissible. To read the whole decision, please click here.
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T 867/05 – You Must Be Kidneying
K’s Law – The ebook
T 867/05 – You Must Be Kidneying 2 Jun 2010
The patent as granted contained independent claims directed to a membrane material (for use in dialysis) and a method of producing such a membrane. During the opposition proceedings, the patent proprietor filed requests concerning an artificial kidney using such a membrane, but the Opposition Division rejected these requests as violating A 123(3) and maintained the patent on the basis of a claim directed to a membrane. The Board reconsiders whether the “artificial kidney” claim complies with A 123(3): [5.1] The opponents have also objected that the amendment “artificial kidney” extends the protection conferred by the patent as granted. [5.2] According to the proprietors’ arguments, an artificial kidney contains not only a membrane suitable for haemodialysis but also more components such as tubing, fittings and controls, which fact is no longer disputed by the opponents. [5.3] Hence, the amendment “artificial kidney” implicitly imports in Claim 1 as granted not only more specific properties of the membrane, which actually would restrict the scope of protection of Claim 1 as granted, but also operative components of an apparatus, which were not defined in any of the claims as granted and which (as the casing, the tubing, the valves, etc.) have no interrelationship with the membrane, i.e. are not suitable to impart any limitation to the membranes. [5.4] Since the product claims as granted defined a composition of matter (membrane material of Claims 1 to 9 and permselective material for use in dialysis of Claim 12), and since the amended product claims define an apparatus (an artificial kidney), there has been a shift of the definition of the invention from a physical entity to a more complex physical entity which was not encompassed by the terms of the claims as granted. That shift implies that further components of an apparatus are encompassed by the terms of the present claims. This extends the protection conferred by Claim 1 as granted to subject-matter which is foreign to that as granted (aliud), and so violates A 123(3). The decision has a slightly American flavour (“composition of matter”); it would have been perfect statutory language to call the kidney a “machine” rather than an “apparatus”. More seriously, I am somewhat surprised by the reasoning. The claim as granted covered a specific membrane and would have allowed the proprietor to prohibit any exploitation whatsoever of this membrane, for example in an artificial kidney. How could a claim to such an artificial kidney comprising the membrane be said to extend the protection conferred by the patent? I can’t believe that the Board got it right. I may be wrong but I think that if the reasoning of the Board were correct, then it would NOT be possible, for instance, to accept an amendment “from a claim to a physical entity per se ... to a claim to a physical activity involving the use of such physical entity” (to use the language of G 2/88 [5]). However, such an amendment has been explicitly allowed by the EBA. It might be appropriate to recall what T 1149/97 [6.1.10] has called the “guiding principle under A 123(3)”: once a European patent has been granted, an act by a third party which would not infringe the patent as granted should not be able to become an infringing act as a result of amendment after grant. I believe that the amendment from a claim directed to a membrane to a claim directed to an artificial kidney comprising such a membrane does not go against this guiding principle. What do you think? To read the whole decision, please click here.
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T 1726/08 – What Does Cross-Check Mean?
K’s Law – The ebook
T 1726/08 – What Does Cross-Check Mean? 1 Jun 2010
[12] In accordance with A 122(1), an applicant shall have his rights re-established upon request if he was unable to observe a time limit vis-à-vis the EPO “in spite of all due care required by the circumstances having been taken”. Where the applicant has authorised a professional representative to represent itself before the EPO, the due care requirement applies to the professional representative (see, e.g., decision J 3/93 of [2]). It is the established case law of the Boards of Appeal that this due care requirement is fulfilled if the non-compliance with the time limit results from an isolated mistake within a normally satisfactory system for monitoring time limits (see, e.g., decision T 428/98 [3.3]). The systems used for the monitoring of time limits may include the use of specialised computer systems or software. However, whether any system fulfils the requirement of the taking of “all due care” depends on the individual circumstances of each case (see, e.g., decision T 902/05 [6]). [13) To qualify as a “normally satisfactory” time monitoring system, the case law has established that such system needs to include an independent cross-check which could, for example, be implemented through a check by a third person (i.e., neither the representative nor his or her assistant) near the due date whether or not an action listed in the time monitoring system has been performed (e.g. decisions T 828/94 [2], T 1465/07 [19]). Only in cases where the representative is working in a small unit or firm, a system without such cross-check mechanism may be satisfactory for A 122(1) (e.g., decision T 428/98 [3.5]). Since the representative’s firm employed some 40 attorneys at four locations, such exception for small firms/units cannot apply in the present case. [14] The time monitoring system used by the representative and his assistants was exclusively based on the software “Patricia”. After the decision under appeal was notified to the representative, the term no. 670 associated with the status text “Refusal by patent office, external due date” and the required action “shall the refusal be appealed?” was entered into the system on 21 April 2008, together with the next due date of 18 June 2008. These text entries, which could be viewed by the person operating “Patricia”, appeared partially on the personal term lists of the attorney and his assistants, i.e., only the action texts appeared. The text did not change until the term was actively acknowledged by the person operating “Patricia” and therefore not until the required action had been performed before or on the due date. [15] The board considers it relevant that term no. 670 and its text entries reminded of the due date for filing an appeal but did not contain any separate reference to the payment of an appeal fee. On the other hand, the board finds it irrelevant that the standard text entries (terms) could, if necessary, manually be changed or replaced by the person operating “Patricia” as such modification of the term was not part of the standard procedure at the firm and was not effectuated in the present case. [16] The action text “shall the refusal be appealed?” in term no. 670 may be understood as implicitly referring to two actions; filing of the notice of appeal and payment of the appeal fee. Indeed, the appellant argued that the representative knew about the requirement to pay the appeal fee within the time limit for filing the notice of appeal and that the assistant regularly cross-checked that all formal requirements were fulfilled as provided by the action to which the submission was in reply. The appellant argued that said cross-check performed by the assistant constitutes a cross-check as required by the case law. [17] The representative’s knowledge and the assistant’s checking the appealed decision before the appeal is filed is not what in the case law is considered as a reliable reminder that the fee payment requirement is fulfilled. On the one hand, the legal knowledge of the representative cannot be considered to be part of a reminder system if it has not materialised as concrete action-specific information recorded in a paper-based or software-based information system. On the other hand, it is not adequate to rely on the assistant’s check for formal requirements if an entire procedural step, the payment of the appeal fee, cannot be monitored separately (see point [15] above). [18] The board notes furthermore in this context that the decision under appeal (like any decision refusing a European patent application) did not include any explicit reference to the appeal fee. The standard text accompanying the appealed decision mentioned that the decision was open to appeal, and referred to A 106 to A 108. Only by looking up A 108, second sentence, the representative’s assistant could have read and be reminded that the filing of the notice of appeal had to be accompanied by the payment of the appeal fee. 2960 | 3398
T 1726/08 – What Does Cross-Check Mean?
K’s Law – The ebook
[19] The board concludes that the information that the appeal fee had to be paid before or on the due date for the listed action was not compelling from the “Patricia” term no. 670 for the persons involved in the prosecution of the file at the firm, taking into account that said term did not contain any explicit reference to the appeal fee and that said term was not accompanied by any other reminder (such as a separate term) related to the appeal fee. Consequently, the personal term lists available before the filing of the notice of appeal could not reliably remind the representative and his assistant of the necessity to pay the appeal fee. [20] The appellant argued that the standard procedure at the representative’s firm also involved a second crosscheck as required by the case law for a “normally satisfactory” reminder system. After the representative and his assistant had reacted to the entry in the term list and the notice of appeal had been signed by the representative, the assistant performed the next step in the standard procedure by closing term no. 670 and thereby adding term no. 680 in “Patricia”. Only after this change, an explicit reference to the appeal fee appeared for the first time in the system (“Formal appeal and appeal fee sent to patent office” / “request new due date”). As, according to the appellant, term no. 680 is only relevant for proceedings before the Swedish Patent Office, the representative’s assistant immediately acknowledged term no. 680 by clicking “OK”, thereby triggering term no. 681 with the action text “file complete appeal” and a reference to the next action due date 18 August 2008. [21] However, these steps cannot be considered as a crosscheck, i.e. a back-up of a first reminder. Firstly, there was no first reminder of the due date for the fee payment. In fact, the described interactions with “Patricia” were performed by the representative’s assistant only. The representative himself, when consulting his updated term list, could not see any reference to the fee payment even after the terms had been changed because the term lists only showed the relevant action text (“file complete appeal”). [22] The assistant was presented, only after having processed the notice of appeal and performed the first term change, the changed status text “Formal appeal and appeal fee sent to patent office”. However, the system did not require the assistant to confirm separately the filing of the notice of appeal and the payment of the appeal fee. The assistant was only required to confirm the next action “request new due date”, which was not applicable in the EPO proceedings, in order to trigger the next term with a maintained status text and a new action text “file complete appeal”. Under these circumstances, the assistant’s attention was not drawn properly to the necessity to pay the appeal fee, said necessity being a legal requirement per se. [23] The representative’s involvement ended after signing the notice of appeal […]. He was not involved and was not supposed to be involved in the described “Patricia” updating process. Unlike a person actively operating Patricia, he could therefore not see the status message containing the reference to the fee payment. The fact that only the representative’s assistant, operating Patricia, could have been reminded of the required fee payment means that the cross-check, if the term changes in Patricia were to be considered a cross-check at all, was not independent. [24] In the board’s judgment, a software-based time monitoring system that does not explicitly remind of the required payment of the appeal fee (an action distinct from the filing of the notice of appeal) on any to-do-list or term list before and after the due date for such payment and only refers to the payment in a status text after the notice of appeal is signed (when the time-monitoring system is updated by the representative’s assistant) is inadequate to monitor the timely payment of the appeal fees. [25] The appellant further referred to four other appeals that had been filed by the professional representatives at the representative’s firm during the last five years without any fee payment issues […). The board notes that evidence for the efficient operating of a monitoring system during many years may weigh in favour of a finding of a normally satisfactory character but will be counterbalanced by evidence that main features of such a character, such as an independent cross-check, go missing (see decision T 1465/07 [19]). [26] The appellant has further argued that according to decision T 1465/07, the principle of proportionality requires that the due care requirement pursuant to A 122 must not be interpreted in an excessive manner. In this respect, the board concurs with the finding in the referred to decision T 1465/07 [19] where it was held that the requirement of an independent cross-check was not disproportionate. [27] For the sake of completeness, the board notes that even if the knowledge of the representative of the requirement to pay the appeal fee and the regular checking of the formal requirements by the assistant, together with the acknowledgement by the assistant of the status text referring to the completed payment, was considered a normally satisfactory system for the monitoring of the time limits for paying the appeal fee, the time monitoring system as operated in the representative’s firm failed in two respects.
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T 1726/08 – What Does Cross-Check Mean?
K’s Law – The ebook
Firstly, the representative’s assistant who was finalising the notice of appeal failed to submit a payment instruction (EPO Form 1010) to the representative. Secondly, the representative signed the notice of appeal without realising that the notice of appeal should be accompanied by a payment instruction. Two mistakes cannot be considered an isolated error in a normally satisfactory system (see decision T 808/03 [2.2]). [28] For the reasons set forth above, the time limit monitoring system used in the present case did not qualify as a normally satisfactory system. The due care requirement of A 122(1) was not met. Consequently, the appellant’s request for reestablishment of rights has to be refused. To read the whole decision, please click here.
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K’s Law – The ebook
A Word On Translations
A Word On Translations 1 Jun 2010
As you will know, most but not all decisions of the Boards of appeal are given in English. Some of them are given in German, relatively few in French. Only very few decisions (i.e. those found worthy of being published in the Official Journal) are translated into the other official languages of the EPO. Nevertheless, on this blog, all the extracts cited are in English. This is because I translate the relevant passages of German or French decisions, so as to bring them within the reach of a greater number of readers. It now occurred to me that I should state this clearly so as to avoid any misunderstanding. The translations given here are in no way official or approved by the EPO. They are just a courtesy service I provide to the readers of this blog. As I am not a professional translator, I cannot guarantee the exactness of the translations, and even if a were a perfect professional, I would still have to face the traduttore traditore problem. If ever you have to rely on a decision the translation of which you found on this blog, and if you cannot cope with the original, please have the translation checked. I do my best but sometimes I might get things wrong.
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T 1726/08 – Good Faith And Appeal Fees
K’s Law – The ebook
T 1726/08 – Good Faith And Appeal Fees 31 Mai 2010
The present decision is a straightforward application of G 2/97. Its particularity lies in the fact that the applicant had evidence that somebody at the EPO had noticed that the appeal fee had not been paid: for some unknown reason an incomplete internal EPO memo “Processing of an appeal” was accessible through Epoline file inspection. But this element does not really bear on the logic of G 2/97. [1] In its decision G 2/97 [4.1-2], the Enlarged Board of Appeal (EBA) held that the principle of good faith does not impose any obligation on the board of appeal to notify an appellant that an appeal fee is missing when the notice of appeal is filed so early that the appellant could react and pay the fee in time, if there was no indication – either in the notice of appeal or in any other document filed in relation to the appeal – from which it could be inferred that the appellant would, without such notification, inadvertently miss the time limit for payment of the appeal fee. [2] In decision J ../87, the Legal Board of Appeal held that in the absence of any circumstances which may create a legitimate expectation to receive a warning or notice, the EPO has no obligation to inform an applicant or his representative that a fee has not been paid in due time. [3] By referring to a printout of an incomplete internal EPO memo “Processing of an appeal” (Form 2701), the appellant argued that somebody at the EPO had noticed that, although the notice of appeal had been filed, the corresponding appeal fee had not been paid at a moment in time when there was still time enough to pay the appeal fee within the time limit. [4] The board notes however that it is unclear from the referred to document whether the EPO had noticed the lack of payment of the appeal fee before or after the time limit for the payment had expired since the same document indicates that the statement of the grounds of appeal had already been filed (which was actually filed on 21 August 2008). The appellant had no explanation for this fact. [5] Although the board cannot exclude that indeed an earlier (incomplete) version of Form 2701 had been present in the electronic file and therefore had been accessible via online file inspection before the completed form was added to the same file on 2 September 2008, the board considers it actually irrelevant whether or not the incomplete Form 2701 was produced and made accessible on 12 June 2008. Even if an officer at the EPO had noticed on 12 June 2008 that the notice of appeal had been filed but the corresponding appeal fee had not been paid, he or she had no information as to whether any non-payment might not be on purpose and therefore conclude that the appellant, in the absence of any notification, would inadvertently fail to pay the appeal fee within the time limit. [6] There was still enough time to pay the appeal fee between 12 June 2008, when the EPO arguably had noted that the fee payment was lacking, and the end of the two month period of A 108, which ended on 30 June 2008 while it was recorded by the appellant’s representative as ending on 18 June 2008 to avoid any risks related to the application of R 126(2). The appellant argued however that, in contrast to the case underlying decision G 2/97 (where the notice of appeal was filed five weeks before the expiry of the time limit), the time period during which the fee could be paid after the filing of the notice of appeal in the present case was much shorter, i.e. one week if the ten day period under R 126(2) was not considered. This period could therefore not be construed as so long that the appellant could react and pay the appeal fee in time, as it was in the case underlying decision G 2/97. [7] The board notes that it is not uncommon in the field of patenting that the payment of an appeal fee is handled separately from the filing of the notice of appeal (i.e., by third parties processing payments), which means that a payment may well arrive at the EPO later than the notice of appeal but still within the time limit. It may well be that the payment of appeal fees is withheld deliberately, both in inter-partes and in ex-parte proceedings. For example, a representative may file a notice of appeal and withhold the payment of the appeal fee until final instructions on the effective lodging of the appeal are received (see, for example, decision T 1465/05 [VII]). In fact, nothing in the EPO file indicated that the appellant may inadvertently fail to pay the appeal fee within the time limit. Therefore, the board cannot see any factual difference to the case underlying decision G 2/97 which would justify a different legal position. 2964 | 3398
T 1726/08 – Good Faith And Appeal Fees
K’s Law – The ebook
[8] Further in this respect, the present case also differs from earlier cases referred to by the appellant […]. In the case underlying decision T 923/95, the appellant paid an insufficient appeal fee. In the case underlying decision J 13/90 […] the applicant, in a request for re-establishment after its failure to pay a renewal fee, announced to pay this renewal fee only after re-establishment was granted (disregarding the provision that the omitted payment should be completed within the time-limit for filing the request for reestablishment). In both cases the filed documents indicated that some error(s) had occurred on the appellant’s side and that the appellant was likely to inadvertently fail to make a timely payment. [9] In the present case however, no evidence is on file that the EPO could have inferred from the filed documents that without a notification, the appellant would inadvertently miss the time limit for paying the appeal fee. Therefore and following the general findings in decisions G 2/97 and J ../87 the board decides that the principle of legitimate expectations does not apply. We shall see another aspect of this decision tomorrow, if you like. To read the whole decision, please click here.
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R 19/09 – You Need A Causal Link
K’s Law – The ebook
R 19/09 – You Need A Causal Link 29 Mai 2010
The present petition for review deals with decision T 1874/06 where the opposed patent was revoked. [5] The discussion during the appeal proceedings mainly concerned inventive step pursuant to A 56 in view of document E2A and, in particular, the following question: Was it obvious for the skilled person aiming at further improving the performance of tools to increase the QI value of the layer system known from E2A to a value of at least 5? It is in this context that the petitioner referred to measuring results disclosed in tables 1 and 2 of his patent. Together with the grounds of appeal he filed “sketch A” representing the values of these tables in the form of two characteristics showing the cutting performance versus the QI values. It was submitted that both characteristics showed an unexpected increase of the cutting performance of the tool at QI values of at least 5. This was one of the proprietor’s arguments in support of inventive step. [6] Neither in the Board’s communication annexed to the summons to oral proceedings (OPs) nor anywhere else in the file is there any indication that the issue of an allegedly “wrong comparison” between the QI values of the top characteristic and those of the bottom characteristic in “sketch A” was raised. It therefore appears that this reason of the Board of Appeal for not acknowledging an unexpected effect […] was indeed never discussed in the appeal proceedings. Thus, it cannot be ruled out that the petitioner’s right to be heard was disregarded in this respect. [7] In […] the petition and at the OPs before the Enlarged Board of Appeal […] the petitioner submitted that the violation of his right to be heard was fundamental as there was a causal link between this violation and the final decision (thereby implicitly applying the jurisprudence of the Enlarged Board of Appeal in case R 1/08). As conceded by the petitioner such a link can only be assumed to exist if the Board had refused to acknowledge an unexpected effect solely based on the “wrong comparison” argument (on which the petitioner was not heard). If, on the other hand, the Board had refused to acknowledge the unexpected effect also for other reasons on which the petitioner was heard it could not be argued that the procedural deficiency causally determined the final decision. [8] The “wrong comparison” argument referred to above is discussed in point [5.5.1] of the decision under review. Point [5.5.1] is clearly devoted to a discussion of the arguments forwarded by the petitioner. These considerations are preceded, in point [5.5], by a comprehensive reasoning of the Board concerning inventive step having regard to document E2A. Based on the teaching of document E2A alone, in particular of its examples 1 and 7, the Board comes to the conclusion that “the application of a bias voltage of -50V in combination with the discharge current and the nitrogen pressure being held constant at those of examples 1 and 7 (...) would inevitably produce a QI value above 5. Therefore the person skilled in the art would inevitably arrive at the subject-matter of claim 1 of auxiliary request II without any inventive skill”(emphasis added). Whether this argumentation is correct in substance cannot be the subject of review proceedings (see R 2/08 [5]; R 9/08 [6.3]). In any case the line of reasoning in point 5.5 is independent of a possible unexpected effect of the claimed subject-matter and therefore independent of “sketch A”. 9. For this reason it is highly questionable whether the procedural deficiency referred to in point [6], supra, could have been causal for the final decision. However, this question can be left open since, as will be shown in the following, the “wrong comparison” argument was not the only reason of the Board for not acknowledging an unexpected effect. [9.1] Point [5.5.1] of the reasons deals, in a first paragraph, with the appellant’s counter-arguments in respect of the teaching of document E2A. In a second paragraph the Board then analyses appellant’s “sketch A” in view of the alleged unexpected effect. Based on the “wrong comparison” argument the Board concludes that “it has not been shown that this effect has its origin in the distinguishing feature”. Then the Board goes on to state: “Furthermore, as evident from examples 1-7 a higher QI value does not imply an increased cutting distance”, followed by an analysis of the QI values and the corresponding cutting distances of various examples of table 1 of the patent. 2966 | 3398
R 19/09 – You Need A Causal Link
K’s Law – The ebook
Independently of whether or not this analysis is correct in substance, it shows that the Board considered the alleged effect of an increased cutting distance at higher QI values not only under the aspect of a supposedly “wrong comparison” between two different layer systems, but also based on an analysis of the QI values and the cutting distances belonging to one specific layer system. Even if it is true that the Board of Appeal did not explicitly refer to “sketch A” in this connection, its analysis refers to measuring values substantially as contained in the bottom characteristic of “sketch A” from which the petitioner derived the existence of an unexpected effect. The conclusion drawn by the Board from these measuring values that “a higher QI value does not imply an increased cutting distance” is to be considered as a direct answer to the appellant’s argumentation of an unexpected effect. The Board thus denied the existence of an unexpected effect for a second reason on the same factual basis as “sketch A” submitted and discussed by the appellant/petitioner during the appeal proceedings. The question whether or not this finding of the Board of Appeal was correct in substance cannot be the subject of the review proceedings. [9.2] The Enlarged Board of Appeal therefore concludes that the “wrong comparison” argument was only one of two grounds for which the Board did not acknowledge the existence of an unexpected effect and that the second ground given in the decision under review was a reaction to the submissions of the appellant on this issue. Consequently, for this reason alone there is no causal link between the procedural deficiency as specified in [6], supra, and the decision under review. Due to such a lack of causal link the violation of A 113 is clearly not fundamental within the meaning of A 112a(2)(c). To read the whole decision, click here. NB : This decision has also been discussed on the Blog du droit européen.
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Interpretative Spotlight : “about”
K’s Law – The ebook
Interpretative Spotlight : “about” 29 Mai 2010
Claim 1 of the request under consideration read: 1. A method for cultivating L.intracellularis bacteria comprising obtaining culture cells infected with L.intracellularis, incubating said infected cells at an oxygen concentration of less than about 18 percent while maintaining said infected cells in suspension, wherein harvesting is done when greater than about 70% of the cells as determined by the TCID50 method are infected. [7] An objection for lack of clarity was raised against the term “about” in the expression “wherein harvesting is done when greater than about 70% of the cells as determined by the IFA method are infected”. In accordance with the case law (e.g. T 190/99), a patent must be construed by a mind willing to understand, not a mind desirous of misunderstanding. Here, the skilled person would be fully aware that, because of the number of parameters which may influence cell growth, it will not be possible exactly to predict when the number of cells will reach a defined mathematical value (70%). Yet, he/she would have no problem in evaluating when the cell culture has reached an essentially equivalent stage (here “about 70%”). For this reason, there is no lack of clarity in claim 1. To read the whole decision (T 692/08), click here.
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T 281/07 – Revival Is Possible
K’s Law – The ebook
T 281/07 – Revival Is Possible 28 Mai 2010
When a request has been withdrawn in opposition proceedings, can it be resurrected in appeal proceedings ? In T 390/07 the Board had found such a request inadmissible. The purpose of an appeal being to review what has been decided at first instance (and, by necessary corollary, not to review what has not been decided), the only basis on which a request withdrawn at first instance might be admitted on appeal - so the Board - was that, as in the case of any other request filed on appeal, it might overcome the reasons for the decision actually given on another request. The present Board is more relaxed. It allows the resurrection of a formerly withdrawn request and explains why the reasoning of T 390/07 should not apply. [2.1] Claim 1 of the […] main request is identical with claim 1 of auxiliary request 3 that had been filed during oral proceedings before the Opposition Division […] and then withdrawn, so that it is not part of the impugned decision. […] However, the claims as granted (main request during the opposition proceedings), which had been found not to be patentable under A 123(2) because of an unallowable disclaimer, are part of the impugned decision. […] These claims have been maintained as main request upon filing of the appeal and have been replaced by the present main request by a letter dated October 13, 2009. Therefore, the present case differs from the situation underlying decision T 390/07 where the auxiliary request that had been withdrawn during the opposition proceedings was again filed as main request from the very beginning of the appeal proceedings (see T 390/07 [X]). Moreover, also in contrast to T 390/07, the main request in the appeal proceedings has been filed with the intention to overcome the ground of opposition mentioned in the impugned decision and to improve the position with regard to novelty and inventive step by limiting the claimed subject-matter to particularly preferred embodiments. This is a legitimate way of proceeding that corresponds to the aim of the appeal proceedings. Therefore, the Board has exercised the discretion conferred to it by Article 13(1) RPBA and admitted the amended main request. To read the whole decision (in German), click here.
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R 21/09 – Autonomous But Not Autistic
K’s Law – The ebook
R 21/09 – Autonomous But Not Autistic 27 Mai 2010
This decision deals with an alleged violation of the right to be heard. The crucial fact was that the Board had accepted evidence filed before the High Court of Justice – Chancery Division – Patents Court, which had led to the revocation of the UK part of the patent, without examining in detail all the documents that had been filed before that Court. After having established that the petition was not clearly inadmissible, the Enlarged Board of appeal (EBA) deals with its allowability: [2.1] The petitioner distinguishes between the violation of its right to be heard and the violation of the principle of independence of the law under the EPC with respect to national law, which principle gives a party to appeal proceedings before the Boards of appeal the right to independent proceedings (instance indépendante). When asserting that the right to be heard has been violated, the petitioner criticizes the Board for not having allowed a new discussion of the whole set of documents that had been filed before the English jurisdictions. The second point of the petition for review points out in detail why the Board, therefore, was believed to have adopted the position of the English judge without examining directly the evidence. The EBA considers that in reality each of these two infringements concerns the right to be heard: the petitioner has been deprived of its right to present a complete defence because the decision has taken into account partial elements, i.e. elements taken from the English decisions, without allowing for a discussion of the whole set of evidence that had been filed before these jurisdictions. [2.2] The central point of the impugned decision is to know whether example 3D of document D1 destroyed the novelty of claim 1 of the patent under consideration and, more precisely, whether crystalline form α was a direct implicit and inevitable result of this example. The Board of appeal has come to the conclusion that this crystalline form α was indeed produced when example 3D of D1 was carried out.. It is the elements of proof (elements de prevue) on which it relies that are criticized by the petitioner. [2.3] As far as principles are concerned, the EBA fully agrees with the petitioner. The proceedings before the Boards of appeal are autonomous and decisions of national jurisdictions have no legal authority (autorité en droit). This principle has been asserted in the case law of the Boards of appeal already at a very early stage (see T 452/91 [5.4]). It follows that before the Boards of appeal the parties may expect to dispose of intact rights as to the organisation of their defence. Any infringement of this principle would not only affect the integrity of the rights of the parties but would also be incompatible with the principle of independence of the members of the Board of appeal asserted in A 23(3), which members shall comply only with the provisions of this Convention and shall not be bound by any instructions. [2.4] However, this principle does not exclude a certain interaction between national judicial systems and the European system, in particular in view of the elaboration of a harmonious European jurisprudence (see for example the decision of the High Court of Justice, Court of Appeal (Civil Division) in case n° A3/2009/0675 Actavis UK Ltd. V. Novartis AG, where the English judge analyzes the problem-solution approach as practised by the EPO and concludes in paragraph 63 that the decision on the obviousness of the solution provided by the patent under consideration to which he had come would have been the same if the problem-solution approach had been applied). [2.5] In its decision T 665/95 (cited by the impugned decision) the Board has not considered this principle to be an obstacle when it refused further taking of evidence and relying on testimonies taken in Dutch proceedings. It is true that there is nothing to be said against parties introducing national decisions or documents filed during a national law suit into proceedings before the Boards of appeal of the EPO, but the Boards have to take utmost care when treating such facts and evidence which are somewhat different from ordinary documents, so that the independence of mind (liberté d’esprit) is safeguarded during the assessment of these documents so that the Board can come to a conviction of its own. 2970 | 3398
R 21/09 – Autonomous But Not Autistic
K’s Law – The ebook
[2.6] Anyway, the filing of documents that have already been filed before national jurisdictions and of decisions of these jurisdictions has to comply with the general rule according to which each of the parties has to file the documents which it intends to use in the various proceedings, respectfully of the defence or the right to be heard. As matter of fact, even if the parties are the same, the appeal proceedings are distinct proceedings from national proceedings, and autonomous. [2.7] These principles having been recalled, what is criticized in the decision [of the Board] is not that it had taken into account documents that had not been part of the proceedings (mis aux débats) but that it had not allowed the petitioner to discuss the documents filed, which according to the petitioner are incomplete, within the general context from which they had been extracted. [2.8] Therefore, it is necessary to examine if the circumstances of the filing of the English decisions have deprived the petitioner of the right to be heard (A 113). This requires [the EBA] to check whether the petitioner has had the time needed to be prepared to discuss these decisions and the elements pertaining to these decisions, depending on whether it had to expect that they would be discussed during the oral proceedings. [2.9] In its conclusion that crystalline form α was inevitably present in example 3D of document D1, the Board relied both on the experimental results filed by the opponents during the opposition proceedings […] and on the statements of experts before the English court […]. [2.10] In its preliminary communication, the EBA had already pointed out that the elements taken from the decision of the English first instance judge had not been the sole basis for the revocation of the patent and, therefore, there was no causal link between the alleged procedural violation and the decision to revoke the patent. Thereupon, the petitioner has made a distinction between the effects proven on laboratory scale and on industrial scale. According to the petitioner, the Board had entirely relied on the assessment made by the English judge in the second case. [2.11] Without entering into the discussion of the evidence retained by the Board of appeal, which corresponds to a substantial re-examination (réexamen au fond) and as such cannot be object of revision proceedings, the EBA comes to the conclusion that it is not true that the petitioner has been deprived of the right to defend itself using all of the elements taken into consideration by the Board of appeal, comprising those filed before the English jurisdiction, for the following reasons. [2.12] There is no trace in the written submissions (écritures) filed by the petitioner during the appeal proceedings, nor in the minutes of the oral proceedings before the Board of appeal, nor in its decision [that would corroborate] the argument raised after the communication annexed to the [summons to ?] oral proceedings before the EBA, according to which the trials that Apotex had filed two months before the oral proceedings as third party observations did not correspond to those filed before the English jurisdiction. Apotex had presented these trials as the trials filed before the English jurisdiction. In its written submission, […] Apotex declares that it has carried out four trials for the purpose of presenting them in the law suite in the UK and explains how the experimental conditions under which the trials were carried out could be guaranteed. It also indicates that the minutes of the trials and the X-ray diffraction pattern of the product are attached. […] [2.13] In its written submissions filed as a response to these observations, the patent proprietor has expressed its astonishment […] that Apotex “made up its mind about two years after having filed them in the English proceedings …”. Then it criticized the results as to their substance (sur le fond) but did not allege that the trials were different from the trials presented to the English judge. [2.14] The arguments made by the petitioner before the EBA in order to establish that the trials were not the same as those filed before the English jurisdiction reaffirm its arguments as to the substance of the case (de fond) made before the Board of appeal and do not contribute anything new as to the characterisation of the violation of its right to be heard. In particular, […] the petitioner has not established that it was unable to obtain the trials filed before the English jurisdiction for confidentiality reasons, as it mentioned orally when answering the questions of the EBA. [2.15] In conclusion, it follows […] from the preceding assessment that the petitioner, who as the patent proprietor was a party to the proceedings before the English jurisdiction, knew two months before the oral proceedings before the Board of appeal that Apotex, its opponent in the infringement proceedings, had filed trials presented as those filed before the English judge. It has not pointed out, at that time, that the trials were 2971 | 3398
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K’s Law – The ebook
different and that it had been refused access to the trials, or the whole set of trials, used by the English judge. Quite to the contrary, it has referred to their filing before the English judge. It has also discussed the substance of these trials. Moreover, the English decision had been filed as soon as September 3, 2007. [2.16] Under these circumstances, it is not unreasonable to expect the patent proprietor to use all the means at its disposition for defending its patent, without compartmentalizing between the different proceedings which have to decide on the validity of the title. The attention of the patent proprietor had been drawn to trials that were potentially detrimental to the maintenance of the patent because they had already been decisive for the revocation of the patent by the English judge. It is true that these trials were only referred to in third party observations, but the third party, Apotex, was also the opponent in a law suite that ended in the revocation of the patent. As from this moment in time, it was predictable that the elements introduced into the proceedings by Apotex and presented as those already filed before the English judge, resulting the known consequences, could be used by the opponents in the appeal proceedings, as well as the decisions based on them. The petitioner chose not to complete the file of appeal with other documents examined by the English judge and which, according to the petitioner, could foil the documents filed by its opponents by providing a global vision of the trials only part of which had been retained. [2.17] The fact that the Board of appeal had not referred to the decisions and trials in its preliminary communication cannot possibly characterize a violation of the right to be heard. On one hand, article 17(2) of the Rules of proceedings of the Boards of appeal (RPBA) points out that the communication cannot bind the Board. The communication expresses a preliminary opinion that the Board holds at a certain moment in time but which the Board may reconsider if the arguments made, in particular in response to this communication, were able to bring about changes in the case. In this very instance, the Board only gave a list of numbered documents, which was sent before Apotex filed its observations, in order to facilitate the preparation of the oral proceedings. It did not specify at all how the Board considered the case. [2.18] Finally, as the proceedings were inter partes proceedings, it is clear that the framework of the discussions is also defined by the written submissions of the parties. As the trials had been introduced into the proceedings by a third party, they represented a potential danger for the patent proprietor. It was normally predictable that these documents could be used against it, the English decision being already part of the file. [2.19] It follows from what has been said that the criticism in reality addresses the assessment by the Board of appeal of what it considered to be elements of proof. Under the pretext of a violation of the right to be heard, the EBA is requested to control the decision as to its substance (au fond), by checking whether the elements of proof which it retained were to be retained, and if they were sufficient or not. However, the choice between the elements of proof that have been filed and the assessment of their probative value fall within the sovereign assessment by the Board and are clearly outside the scope of revision proceedings. [3] As a consequence of all that has been said above, the petition for review has to be dismissed as clearly unallowable. You can download the whole decision (in French) here.
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T 3/07 – Sufficiency Despite Obvious Errors
K’s Law – The ebook
T 3/07 – Sufficiency Despite Obvious Errors 26 Mai 2010
[7.4.1] Dependent claim 5 refers to the presence of a lotion further comprising an antiviral composition whereby the antiviral composition comprises from about 0.05% to 80% by weight of said lotion and wherein the antiviral composition is a water soluble metal ion. The [opponent] argued that it is impossible to produce a lotion composition comprising 80% metal ions, which is the antiviral compound, from the metal salts listed in the patent in suit. For example in a salt like copper sulfate only 40% of the weight can be attributed to the copper ion. A composition of 80% by weight of copper ions can therefore not be produced as the composition would have to comprise more than 100% by weight of the sulfate anion. In other words, even if the “lotion” would consist of 100% antiviral composition and the antiviral composition of a 100% of copper sulfate, the amount of copper ions would not exceed 40%. According to the [opponent] the same applies to all the salts mentioned in the patent in suit where the metal ion generally accounts for less than half of the weight of the metal salts, including the presently claimed aluminium salts. [7.4.2] The Board does not dispute the [opponent’s] calculation. An upper limit of 80% by weight of the metal ion is obviously incorrect when using the claimed aluminium salts. The Board is, however, of the opinion that the person skilled in the art when trying to put the embodiment of claim 5 into practice would readily identify this obvious mistake and know how to correct it. The Board has not doubts that the skilled person is in a position to calculate for a given aluminium salt the maximum amount of aluminium ion, which can be attributed to that particular salt, in the same way as the [opponent] did for the copper sulfate. It would also be immediately obvious to him that this value represents the theoretical upper limit, which cannot be surpassed when formulating a lotion. The obvious error in claim 5 is therefore not considered detrimental to the sufficiency of disclosure. To read the whole decision, click here.
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T 1468/08 – How To Recover ‘Lost’ Claims
K’s Law – The ebook
T 1468/08 – How To Recover ‘Lost’ Claims 25 Mai 2010
Following the revocation of the patent under consideration by the Opposition Division (OD), the board of appeal in T 1468/08 set aside this decision and remitted the case to the OD “for further prosecution on the basis of the main request as filed during the oral proceedings before the Board” (which consisted of claim 1 only). The patent proprietor then requested correction under R 140 of the decision, “or other appropriate clarification”, to reflect that granted claims 2 to 10 “remain”. The Board does not allow this request but indicates another way out of the dilemma. [1] R 140, which is concerned with the correction of errors in decisions, states that: “In decisions of the EPO, only linguistic errors, errors of transcription and obvious mistakes may be corrected”. A decision contains an obvious mistake if the text thereof is not and obviously cannot be what the Board actually intended (see T 1093/05 [7]). R 140 does not pave the way to re-examination of the factual or legal issues on which a decision was based, nor to reversal of any conclusion derived by the deciding body from a consideration of these issues (see T 367/96 [2]). [2] In the present case, it was clearly the intention of the Board in the above decision T 1468/08 to decide upon a single claim of a single request, reference being made hereto in the point IV of the Facts and Submissions of said decision, the Facts and Submissions being consistent with the Reasons for the Decision wherein only claim 1 is referred to […], and with point 4 which refers to remittal to the OD for further prosecution on the basis of “the claim according to the main request”. Thus, there being no obvious mistake in the decision, there is nothing to correct. [2.1] In the minutes of the oral proceedings (OPs) held before the Board […], said minutes having been sent to the [patent proprietor] with a communication dated 28 December 2009, the final request of the [patent proprietor] as stated by the Chairman according to Article 15(6) RPBA before declaring the debate closed, was confirmed by the [patent proprietor] and recorded as being “that the decision under appeal be set aside and the patent be maintained on the basis of the main request as filed during the OPs before the board”. Said main request as filed during the OPs before the Board consisted of a single claim, namely claim 1 as indicated under the section entitled “Documents presented” on page 1 of the minutes. Thus the decision T 1468/08 is based on the request as filed at OPs before the Board, as reflected in the minutes thereof. [2.2] The principle of party disposition as enshrined in A 113(2) allows the Board to decide only on a request submitted or agreed by the Proprietor of the patent. In the present case, the Board was thus only empowered to decide on the request as filed during the OPs before the Board, as this was the only pending request submitted by the [patent proprietor], as reflected in points IV and VII of the Facts and Submissions of the above decision T 1468/08 [IV] specifying that said request superseded all previous requests. With regard to the [patent proprietor’s] statement in its letter […] that it was illogical and procedurally incorrect that the granted claims 2 to 10 should have been deleted, the question of deletion of claims does not arise. The principle of party disposition requires any party to identify in a positive manner those issues and objects it wants the deciding body to take a decision upon. In the present case, the [patent proprietor] identified the issues and objects as being claim 1 according to the main request as filed during OPs before the Board. Should the [patent proprietor] had wished to have a decision comprising also granted claims 2 to 10, then it fell within the exclusive competence of the [patent proprietor] to formulate such a request. It was thus logical and procedurally correct that the above decision T 1468/08 discussed only claim 1, said claim being the only claim submitted to the Board in the request as filed during the OPs before the Board, said claim being the only claim under review by the Board and the only claim decided upon in the above decision of the Board (see points [2.2] and [3.6] of the Reasons for the Decision). [2.3] Therefore, the reference in point [IV] of the above decision T 1468/08 to “The only claim” correctly reflects the facts of this case. Having decided on the sole pending request as a whole, the Board thus sees no reason to correct its decision in this respect.
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T 1468/08 – How To Recover ‘Lost’ Claims
K’s Law – The ebook
[3] With regard to the [patent proprietor’s] “belief” that the remittal should have referred to further prosecution also on the basis of the description, figures and claims 2 to 10 as granted, even if this “belief” were understood to be a request, this cannot be a request for correction under R 140, since the amendment desired would amount to a modification to the substance of the decision, such a modification not qualifying as a correction under R 140 […]. In any case, the Board notes that the description and figures never formed part of the [patent proprietor’s] request. As such, they could not be decided upon and therefore could not be reflected in the Order, as the [patent proprietor] apparently now wishes. [4] With regard to the [patent proprietor’s] request for other appropriate clarification with regard to the status of granted claims 2 to 10, the Board may not explain its decision, which has to be taken at face value. The department of first instance, during further prosecution, is bound only by the ratio decidendi of the Board’s decision pursuant to A 111(2), the Board’s decision in this case being directed solely to claim 1 of the main request filed during OPs before the Board. Thus the Board notes that independent of the decision taken, during further prosecution of the case before the OD the [patent proprietor] may submit requests containing one or more of granted claims 2 to 10 as appropriate. Since limitation of claims during inter partes proceedings is regarded as a formulation attempt to respond to the objections raised rather than implying an irrevocable renunciation of subject-matter claimed, the [patent proprietor] thus still has every opportunity to submit such claims during the further prosecution of the case. To read the whole decision, click here.
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T 149/07 – Sophisticated Obviousness
K’s Law – The ebook
T 149/07 – Sophisticated Obviousness 24 Mai 2010
The present decision gives a useful reminder concerning “common general knowledge”. It has also retained my attention because it concludes on lack of inventive step based on a rather sophisticated combination of documents. In a recent post, we have seen that the Boards do accept demonstrations of lack of inventive step based on more than two documents. Here the claim (effective date: 1995) was rejected as obvious over a combination of prior art D1 (1979) and D3 (1988), complemented by common general knowledge (for which D7 (1985) was considered to provide evidence). The fact that D7 also disclosed the drawback of the claimed alternative (its complexity) was considered to have been made obsolete at the date of the claim as a result of ongoing technical progress. [...] D1 discloses a Fairchild-Automatic-Intercept-and-Response-System (FAIRS) which comprises a central command station controlling fixed or mobile transportable remote sites. The system is intended for carrying out signal surveillance, monitoring, direction finding and accurate location of hostile transmitters. It was not disputed that D1 represents the closest state of the art showing a system of surveillance according to the precharacterising part of claim 1. [3.1] The [opponent] considered claim 1 as including a mere aggregation of features independent from each other. In particular, the group of features concerning activation/deactivation and operation mode of the cells ([h], [j] and [k]) could be regarded separately from that pertaining to TOA measurement ([l] and [m]). This view is convincing. A combination invention would imply a functional relationship between features or groups of features resulting in a combinative effect beyond the sum of the individual effects. Such a combinative effect cannot be identified in the present case at least with regard to the groups of features referred to above. In particular, claimed characteristics of a cell concerning activation, deactivation, communication with the information centre and loading of parameters, on the one hand, and features for determining the bearing of a phenomenon on the basis of a time-of-arrival measurement, on the other hand, are functionally not so linked together that a synergistic effect results from their combination. Thus, when assessing inventive step, each group of features may be considered per se. The [patent proprietor] objected that this approach resulted in a mosaic combination of different features out of their context. This objection, however, is not conclusive in view of the foregoing. [3.2] […] D1 is considered to disclose not only the precharacterising part but also feature [i] of claim 1. [3.4] […] D3 discloses feature [h] of claim 1. In the Board’s view, D3 also discloses feature [j] of claim 1. [3.5] […] With regard to feature [k] of claim 1, D1 […] discloses that the receivers at each remote site are commanded from the command centre to scan particular portions of the RF spectrum wherein a threat transmitter is thought likely to operate. As soon as a threat signal is detected, signal recognition is carried out, an alarm is registered, a bearing is taken and the alarm is transmitted to the command centre. Thus, the receiver at a remote site operates in an active mode in response to a command from the command centre and reports to the command centre upon detection of a threat signal in accordance with given criteria. In the light of this disclosure, the Board finds convincing the [opponent’s] submission that a standardized protocol is necessary for the communication between remote receiver and command centre. Thus, the feature concerning the standardized protocol is either implicit to the disclosure of D1 or trivial for a skilled person. [3.6] Features [l] and [m] of claim 1 concern a TOA measurement on the basis of two cells with synchronised internal time. In its interlocutory decision […], the opposition division (OD) considered that documents D1 and D3 did not render obvious the use of two different cells for a TOA measurement. In its view, although TOA measurements were known in the art at the priority date of the present patent, a skilled person got no incentive from the prior art 2976 | 3398
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K’s Law – The ebook
to apply this technique to the system of D1. Even if the skilled person tended to introduce this technique, he/she would not consider the claimed solution of providing the bearing of a phenomenon by comparison of signals of two distant cells. On the contrary, the more straightforward way would be to introduce the TOA technique in the setup shown in D1 […], i.e. to rely on a measurement based on two antennas of the same cell, which could be placed far enough to give sufficiently accurate results. Indeed, the use of antennas of two different cells had the drawback that an accurate time determination in both cells was needed. Such a feature, however, was not disclosed, either explicitly or implicitly, in D1. Rather, the arrangement of D1 was based on a single cell and had the advantage that the accurate time determination was not necessary. The Board would agree with this argumentation on the basis of the disclosure of D1 only. The OD, however, had no knowledge of textbook D7 filed with the notice of appeal. D7 […] is concerned with the interception of radar signals, in particular with the issue of how to use various receivers in interception applications. Other major topics concern direction finding and location. Chapter 5, which deals in extenso with the issue of emitter location techniques, presents two major approaches. Emitter location estimation using multiple angle-of-arrival (AOA) measurements is the classic approach, the basic idea of which changed little since the 1940s. The time-difference-of-arrival (TDOA) technique is more complex, and its use is more recent and much less widespread. According to the leading-edge (LE) TDOA technique, the arrival time of the leading edge of a radar pulse is determined at a receiver. The difference between the arrival times of the same pulse at two widely separated ground-based sites gives the TDOA with respect to the baseline between the two receivers. This TDOA measurement establishes an iso-delay line on the surface of the earth that passes through the emitter location. A similar TDOA measurement with respect to another baseline establishes another iso-delay line. The intersection of these iso-delay lines determines the location of the emitter (Figure 58). The [patent proprietor] contested that document D7 reflected common general knowledge […]. Moreover, in its view, the outcome of the present case would not be changed by the consideration of D7 […]. Thus, two issues need to be considered. First, whether D7 reflects common general knowledge. Second, whether a skilled person would consider introducing the leading-edge TDOA technique according to D7 into the system of surveillance known from D1. With regard to the first issue, the jurisprudence of the boards of appeal has defined the common general knowledge of a skilled person working in a particular technical field as being normally represented by the content of encyclopaedias, textbooks and dictionaries on the subject in question (T 890/02 [2]). Three aspects have been identified for assessing the common general knowledge of the skilled person (T 890/02 [3]). Firstly, the skills of such a person include not only basic general knowledge of a particular field of technology, but also the ability to look up such knowledge in encyclopaedias, textbooks and dictionaries. Secondly, it cannot be expected that, in order to identify this common general knowledge, the skilled person will carry out a comprehensive search of the literature covering virtually the whole state of the art. No undue effort in such a search can be required from the person skilled in the art. Thirdly, the information found must be unambiguous and usable in a direct and straightforward manner without doubts or further research work. In the present case, the Board does not have any reason for diverging from this jurisprudence that would lead to the conclusion that textbook D7 represents common general knowledge. In particular, it may be expected that the skilled person, designing systems of surveillance such as the one known by D1, would be aware of a textbook like D7 dealing inter alia with radar emitter location by a TDOA technique that represents an embodiment of the present invention covered by the claimed subject-matter. Thus, contrary to the [patent proprietor]’s view, the Board considers that D7 represents background knowledge. With regard to the second issue mentioned above, the [opponent] submitted in the grounds of appeal […] that D1 described an operational system. At the publication date (1979) of this document and a fortiori at the time the described system was designed, computers with a computational power sufficient for making TDOA measurements on the basis of two cells with synchronised internal time were not yet available. For this reason, the system of D1 relied on AOA measurements. At the priority date of the present patent (1995), however, a skilled person, knowing from D7 that the TDOA technique could be used in systems like the one known from D1, would immediately consider that such a technique represented an obvious alternative to the AOA measurements on which the system of D1 relied. D7 itself prided support for this conclusion. Indeed, AOA and TOA/TDOA measurements were disclosed as two viable alternatives […] that might even be combined […].
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T 149/07 – Sophisticated Obviousness
K’s Law – The ebook
The [patent proprietor] did not dispute that the TDOA technique per se was known. What was relevant, however, was its application in a system of surveillance as claimed. No document on file suggested such an application. On the contrary, the complexity of the TDOA technique, which was acknowledged in D7, played an essential role against its application and should be duly considered when contemplating the combination of D1 and D7. The [opponent]’s submissions are substantially based on the approach that the skilled person was led by the technical progress to consider alternatives to the AOA technique disclosed by D1. This view is not invalidated by the [patent proprietor]’s argument concerning the complexity of the TDAO technique. Indeed, this drawback would be compensated by the ongoing computer progress, on the one hand, and by the improvement in location accuracy that may be achieved […], on the other hand. The former aspect is clearly at the basis of the development of the more recent TDOA approach […], which may regarded as an alternative to the classic AOA approach, as the [opponent] convincingly submitted. It should also be taken into consideration that D7 […] points out that, in an operational emitter location system, the AOA approach will be needed along with the TDOA approach. In a dense environment of emitters, it will be difficult to determine which pulse is coming from which emitter at separated receiver platforms. By using the AOA approach, only those pulses having appropriate bearings need be considered in the TDOA processing. In the Board’s view, this disclosure gives the skilled person a hint at integrating the TDOA processing in the system of D1 rather than replacing the disclosed AOA technique. Therefore, D7 represents common general knowledge of the skilled person, discloses features [l] and [m] of claim 1, and incites the skilled person to complement the system of surveillance of D1 with these features. [3.7] In conclusion, keeping in mind the aggregation character of the features of claim 1 of the maintained patent, as mentioned above, the subject-matter of claim 1 at issue lacks inventive step (A 56) in view of documents D1, D3 and D7. [3.8] To read the whole decision, click here.
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T 358/08 – Let’s Not Change
K’s Law – The ebook
T 358/08 – Let’s Not Change 22 Mai 2010
Does the change of wording between R 64 EPC 1973 and R 99 EPC 2000 have an impact on how a notice of appeal and/or a statement of grounds of appeal has to be drafted? That is the question the Board deals with in the present decision. If you are happy with a short answer, it’s “No”. If you want to know why, please read on. [1.1] Before the OD the appellant requested maintenance of the patent as granted (main request) alternatively maintenance of the patent on the basis of a first auxiliary request. The OD rejected both requests and revoked the patent. In its notice of appeal filed on 13 February 2008, the appellant stated: “... we hereby appeal against the decision of the OD ... We ask that the decision of the OD be set aside and the patent maintained.” [1.2] Even when construed in the context of what had taken place in the proceedings, it cannot be determined from the notice of appeal in precisely what form the appellant wished the patent to be maintained. Only when the appellant filed its statement of grounds of appeal did this become clear. [1.3] R 99 EPC 2000 is applicable to the present appeal. […] [1.4] The issue which arises is whether the notice of appeal in this case complied with the requirement that it should contain “a request defining the subject of the appeal.” Taken by itself, it is not easy to say what this requirement entails. The words must therefore be construed in the context of the other provisions of the EPC 2000 to discover the true meaning of the expression, but help may also be obtained by examining: (a) what the position was before the new rule was introduced and (b) any relevant travaux préparatoires. The expressions used in German and French texts do not take the matter any further […] Position before coming into force of the EPC 2000 [2] R 99 is to be compared to the previous relevant rule, R 64 EPC 1973[…]. [2.1] As helpfully suggested by the appellant, the changes can be more easily appreciated by comparing the rules in tabular form:
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T 358/08 – Let’s Not Change
K’s Law – The ebook
[2.2] As to what were the requirements of R 64 when it stated that the notice of appeal should contain “a statement identifying ... the extent to which amendment or cancellation of the decision is requested”, the answer becomes apparent from considering decisions of the Boards of Appeal which dealt with the construction of notices of appeal. [2.3] As to this, it was recognised that the requirements of R 64 were formal in nature only […] and that a notice of appeal should be construed objectively to determine its content […]. The “extent” to which the impugned decision was requested to be amended or cancelled could therefore often be inferred, even when the notice of appeal contained no express statement in this respect. Thus where, for example, the notice of appeal stated merely “An appeal is hereby lodged,” or words to similar effect, this was often construed in the context of the case as a request to set aside or cancel the decision in its entirety; this was “the extent to which amendment or cancellation of the decision” was requested. […] Having reviewed a bunch of decisions, the Board continues: [2.4] In the great majority of cases, therefore, the requirement to state the extent to which amendment or cancellation of the decision was requested was somewhat toothless. Almost always the appellant wanted the decision set aside in its entirety and replaced by a different order. It was for this reason that the Boards of Appeal were able to construe very basic notices of appeal as satisfying the provisions of R 64(b). Where, however the decision contained two elements, e.g., an order relating to the patent and an order as to costs, the rule now had real bite. The notice of appeal had to say whether both elements were being appealed or only one, and the course of the appeal proceedings was thereby determined […]. [2.5] At first sight, some cases, including some of the above, might appear to go further, since they also say that such a notice of appeal (e.g., in the form “an appeal is hereby lodged”) also implicitly included a request to grant the last request before the Division below. […] [2.6] However, the Board does not read into these decisions any statement that the notice of appeal should in fact have contained a request, even if only implicit, as to the order which the Board of Appeal was being asked to make, whether it be a request to grant the last request before the Division below or some other request. The decisions merely say how, in these particular cases, the Board construed the notice of appeal. [2.7] Such a requirement would have given rise to difficulties, as exemplified by the facts of the present case, where an applicant-proprietor merely requested that the patent “be maintained” and it could not be objectively determined from these words, even in the context of what had taken place at first instance, in what form the 2980 | 3398
T 358/08 – Let’s Not Change
K’s Law – The ebook
proprietor wished the patent to be maintained, in particular, whether the proprietor wished the patent to be maintained as granted or in accordance with its auxiliary request before the Division or on some other basis. [2.8] That this was not in fact a requirement of R 64(b) is made clear by other decisions of the Boards of Appeal, which are to the effect that although the notice of appeal must specify whether it is being requested that the decision be set aside in whole or in part, in the case of an appeal by an applicant or patentee the precise form in which the patent is requested to be granted or maintained is a matter for the grounds of appeal. […] Again the Board cites and comments a whole series of decisions. It then continues: [2.12] The Board therefore concludes that R 64(b) did not require, in the case of appeal by an applicant or proprietor, that the notice of appeal should contain, whether expressly or implicitly, a statement as to the form in which the appellant was requesting the Board of Appeal to grant or maintain the patent. This was a matter for the grounds of appeal. […] The Board then deals with the travaux préparatoires for the EPC 2000: [3] The EPC was revised following the Diplomatic Conference of November 2000 in the form a new text adopted by the Administrative Council in June 2001. As regards the time limits and the form of appeals to the Boards of Appeal, minor changes were made to A 108, […] [3.2] It does not appear from the [declared overall objective of these revisions] that it was one of the purposes of these changes to alter the way in which appeal proceedings were conducted, whether in regard to the contents of the notice of appeal or the grounds of appeal. The Board then delves into the details of the travaux préparatoires. It comes to the following conclusions: [3.13] In conclusion, although the travaux préparatoires are not entirely clear: [3.13.1] They do not suggest that the existing position in relation to the requirements of the notice and grounds of appeal, summarised above, was giving rise to problems or criticisms. [3.13.2] They do not indicate an intention to make a substantive change in the requirements of the notice or grounds of appeal in this area, a change which would have far-reaching effects for many appeals. [3.13.3] In general, they show an intention to bring the wording of the rules in relation to notices and grounds of appeal into line with the practice as developed by the Boards of Appeal. [3.13.4] It appears that the requirement which is now found in new R 99(1)(c) to state “the subject matter of the appeal” was being equated with the former requirement of R 64(b) that the notice of appeal should contain a statement of the extent to which the amendment or cancellation of the decision is being requested as this requirement had been interpreted by the Boards of Appeal. Finally, the Board gets down to a construction of R 99: [4] Generally, the requirements as to the notice of appeal under R 99(1) and the statement of the grounds of appeal under R 99(2) must be read together to try and arrive at a coherent and sensible structure. The requirements must also be construed as applying to appeals of all possible types and not just appeals by a proprietor, which is the focus of the present appeal. [4.1] As a further general remark, the Board takes into account that if it was required that the notice of appeal by an applicant or proprietor should contain a request for the grant or maintenance of the patent in a specified form, it is not clear what the position would be if the appellant later wished to amend this request, whether to broaden the claims or restrict them. On the assumption that the appellant was able to amend the request, then “defining the subject of the appeal” at the outset by reference to a set of claims which later might change would serve no useful purpose. On the alternative assumption that the appellant was not able to amend the request, this would make appeal proceedings extremely inflexible and would also be contrary to the existing practice in appeals. [4.2] On the contrary, if a proprietor must in the grounds of appeal at the latest specify the form in which the patent is requested to be maintained, the respondent will still know at a relatively early stage in the appeal proceedings what case it has to deal with and can frame accordingly any reply which it chooses to file under A 12(1)(b) of the Rules of Procedure of the Boards of Appeal (RPBA). The appeal will then be based on these 2981 | 3398
T 358/08 – Let’s Not Change
K’s Law – The ebook
documents (together with any communication sent by the Board and any answer thereto), subject only to any amendment to a party’s case which is thereafter allowed at the Board’s discretion (Articles 12(1), 13(1) RPBA). This system provides a logical and practical framework for determining such appeals. [4.3] Turning to the rules themselves, as already pointed out, it is not immediately clear from the wording of R 99(1) what has to be contained in the notice of appeal. If, however, R 99(2) were to make it clear that certain matters are required to be included in the grounds of appeal then this would obviously make it easier to reach a conclusion that it was not necessary to include such matters in the notice of appeal, and thus what R 99(1)(c) means. [4.4] Unfortunately, the wording of the R 99(2) also raises problems as to its meaning. Broken out, it reads as follows: “In the statement of grounds of appeal the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based.” [4.5] The first problem is that in some situations at least […] the rule requires the grounds to state “the extent to which the decision impugned is to be amended”. However, under R 64(b) , what appears to be the same requirement (a statement of “the extent to which amendment ... of the decision is requested”), had been part of the requirements of the notice of appeal, so that at first sight it would appear that this requirement has been moved from the notice of appeal to the grounds of appeal (assuming the requirement has not just been duplicated). As explained above, the requirement in R 64(b), being a part of the requirement to state “the extent to which amendment or cancellation of the decision is requested”, had been construed by the Boards of Appeal in a limited way as requiring the appellant merely to state whether it was requested that the decision be set aside in whole or part. If this requirement is now a requirement of the grounds of appeal, what is left as regards the requirements of the notice of appeal? [4.6] Second, the wording of the rule is at first sight also curious because under R 64(b) a distinction appeared to be made between “amendment” of a decision and “cancellation” of a decision (“The notice of appeal shall contain ... a statement identifying ... the extent to which amendment or cancellation of the decision is requested”), these apparently being alternative forms of order which the appellant could request […]. This distinction appears at first to be perpetuated in the new rule in the form of a distinction between “setting aside” a decision and amending it to some extent, these again being alternatives. But if this is a valid distinction, why should the appellant now be required to indicate the reasons for setting aside the decision impugned, but not any reasons for amending it to any extent? [4.7] The versions of R 99(2) in the German and French texts do not appear to take the matter any further. […] [4.8] These considerations are puzzling, not least having regard to the fact that it does not appear from the travaux préparatoires to have been the intention to create a substantive change in the practice in this area. [4.9] The Board considers that the answer to this puzzle is to be found by considering the forms of order normally made on appeal. When an appeal is successful the order made by the Boards of Appeal is often in the form: “The decision under appeal be set aside and the patent is ordered to be maintained as granted/in amended form/revoked”, etc, and this is also the common form of requests made by appellants. The Board considers that R 99(2) EPC 2000 should be understood in this light, and as requiring the appellant to say, first, why the decision under appeal was wrong and should thus be set aside and then, second, what the appellant wants the Board of Appeal to order in its place (if anything). […] [4.10] Although it is not decisive for present purposes, the RPBA are consistent with this approach, although the wording is not precisely the same. A 12(2) RPBA provides inter alia that the statement of grounds of appeal shall contain an appellant’s complete case and set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld. Although the rules do not expressly state that a proprietor/applicant-appellant should state in what form it is requested that the patent be maintained, the rules are of course framed in general terms to deal with all forms of appellants, not just applicants and proprietors. The requirement that an appellant state its “complete case” in the grounds of appeal can be understood as requiring inter alia a proprietor/applicant-appellant to indicate the extent to which the decision under appeal is to be amended, if this is not already clear. [4.11] The reason why R 99(2) is framed as it is, as compared to the R 64 , can perhaps be understood on the basis that it was apparently considered, as appears from the travaux préparatoires considered above, that the wording of R 64(b) (“The notice of appeal shall contain ... a statement ... identifying ... the extent to which 2982 | 3398
T 358/08 – Let’s Not Change
K’s Law – The ebook
amendment or cancellation of the decision is requested.”) was not satisfactory, even though it had been interpreted by the Boards of Appeal in a relatively restrictive way that was not in fact giving rise to problems or objections. At the same, it was apparently felt that it was unsatisfactory that the rules did not expressly say anything about the grounds of appeal, even though the Boards of Appeal had developed an interpretation of what was required which again was not giving rise to problems or objections. R 99 was no doubt an attempt to restate the position using clearer language. The requirement that the notice of appeal should contain a request “defining the subject of the appeal” was no doubt thought to be a better description of the requirement that the notice should indicate whether the decision should be set aside in whole or part, since the effect of such a request was in fact to define the subject (the “extent” or “scope”) of the appeal. Again, it was no doubt thought that the requirement that the grounds of appeal should indicate the extent to which the decision was to be amended was an appropriate formulation of the requirement that the appellant should, where appropriate, state what order the appellant wanted the Board of Appeal to make in place of the order of the first instance department. [4.12] This conclusion means that in the case of an appeal by an applicant or proprietor who wishes to have the patent maintained in a different form than that ordered by the first instance department, the grounds of appeal are required to contain a statement as to (“shall indicate”) the form in which the Board of Appeal is being requested to maintain the patent and thereby to alter the decision of the department of first instance. This then also means that such a requirement cannot also sensibly be part of the requirements of the notice of appeal under R 99(1)(c), so that whatever the expression “a request defining the subject of the appeal” in R 99(1)(c) means (and it is not necessary for the Board to say precisely what it does mean), it cannot be understood as requiring this. [4.13] The Board also does not have to consider how precise the indication in the grounds of appeal of “the extent to which [the decision] is to be amended” has to be, because in the present case it is not in doubt that the grounds of appeal contained a sufficiently precise indication, namely a request that the decision under appeal be set aside and the patent be maintained as granted or alternatively on the basis of sets of claims according to the first to third auxiliary requests which were filed with the grounds of appeal. Summary and conclusion [5] In the end, and taking all of the above matters into consideration, the Board concludes that the change in the wording in the Implementing Regulations has not altered the previous law as to the requirements of either the notice of appeal or the statement of grounds of appeal as regards the nature of the appellant’s requests. R 99(1)(c) is satisfied if the notice of appeal contains a request, which may be implicit, to set aside the decision in whole or (where appropriate) only as to part. Such a request has the effect of “defining the subject of the appeal” within the meaning of R 99(1)(c). In the case of an appeal by an applicant or proprietor, it is not necessary that the notice of appeal should also contain a request for maintenance of the patent in any particular form. This is something which relates to “the extent to which [the decision] is to be amended”, and which is therefore a matter for the statement of grounds of appeal under R 99(2). [5.1] The notice of appeal in the present case contained the statement “... we hereby appeal against the decision of the OD ... We ask that the decision of the OD be set aside and the patent maintained.” In accordance with the principles set out earlier in this decision this is to be interpreted as a request to set aside the decision of the OD in whole. This request defined the “subject of the appeal” within the meaning of R 99(1)(c). The request “to maintain the patent” was not inconsistent with this but otherwise added nothing. [… T]he grounds of appeal contained an adequate indication under R 99(2) of the extent to which the decision was being requested to be amended. [5.2] The appeal is therefore admissible. To read the whole decision, please click here. NB: This decision has already been commented on Laurent Teyssèdre’s blog.
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Interpretative Spotlight: “added”
K’s Law – The ebook
Interpretative Spotlight: “added” 22 Mai 2010
From time to time I shall dedicate a small bonus post to interpretative issues. Of course, these questions are strongly linked to their context and could be answered very differently in other cases. There is nothing like precedent in this domain. Nevertheless, I sometimes find it interesting to see to which conclusions the Boards come when putting claims under the microscope. Claim 8 of the patent as granted read (in its English translation): Process for the manufacture of a solution of dialkyl peroxydicarbonate in which the alkyl radicals contain 2 or 3 carbon atoms, characterized in that, in a first stage, a dialkyl peroxydicarbonate in which the alkyl radicals contain 2 or 3 carbon atoms is manufactured by reacting, in water, appropriate quantities of alkyl haloformate with an inorganic peroxide in the presence of an inorganic salt added (French original: ajouté) in sufficient quantity to increase the density of the aqueous reaction mixture and, in a second stage, the dialkyl peroxydicarbonate manufactured is isolated by extraction by means of a water-insoluble solvent in order to produce a solution of dialkyl peroxydicarbonate in this solvent. The word “added” was not present in the corresponding claim of the application as filed. The opponent pointed out that this addition was a violation of A 123(2). The patent proprietor argued that by inserting this term it had limited the claim to situations where the inorganic salt was added voluntarily, in contrast to in-situ production. Here is what the Board had to say: [3.2] The argument of the [patent proprietor] according to which the claimed addition of inorganic salt is limited to situations where the operator voluntarily adds [the salt] but does not include addition by in-situ production is not convincing. As a matter of fact, in the absence of any specification (précision) in the claim and in the patent under consideration, this term is to be interpreted in its broadest possible meaning. It, therefore, covers all forms of adding inorganic salt that are conceivable in the context of the claimed processes. The Board came to the conclusion that A 123(2) had not been violated, but the claim was interpreted broadly and found to lack novelty over the prior art. To read the whole decision T 1374/06 (in French), please click here.
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T 2016/07 – Two Is Not A Magic Number
K’s Law – The ebook
T 2016/07 – Two Is Not A Magic Number 21 Mai 2010
At the end of the oral proceedings before the Board, the patent proprietor requested that the following question be referred to the Enlarged Board of appeal: Can inventive step be negated if more than two documents have to be combined [in order to come to this conclusion] and if one claim feature is not at all known from the state of the art? [9.4] According to the established case law of the Boards of appeal, the assessment of inventive step is usually carried out in accordance with the methodology provided by the problem-solution approach. In doing so, the first step is to determine the state of the art that is closest to the claimed subject-matter. Based on the effect of the features that distinguish the claimed subject-matter from the closest state of the art (distinguishing features) it has to be established whether and, if applicable, which technical problem is solved by the claimed subject-matter. When assessing whether the claimed solution is obvious, prior art other than the closest state of the art, including the common general knowledge, may have to be taken into account. In doing so, it has to be checked in each individual case to which extent there is an incitation to take into account such prior art in combination with the closest state of the art. Thereby it can be ensured that the assessment of inventive step is not based on hindsight resulting in further prior art being taken into consideration based on knowledge of the claimed subject-matter and combined with the closest prior art. The number of documents to be taken into account when the problem-solution approach is applied is not limited and depends on the circumstances of the individual case. In addition to the complexity of the claimed subjectmatter, one has to take into account, for instance, whether the claimed subject-matter solves one or several problems and whether these problems are independent with respect to each other. The same holds true for the features of the claimed subject-matter solving the corresponding problems. The same also applies to the prior art that is taken into account when providing evidence for the existence of alternative solutions. [9.5] Therefore, the question formulated by the [patent proprietor] concerns an aspect that depends on the circumstances of the individual case under consideration, i.e. the combination of features of claim 1 under consideration and the prior art that is to be taken into account, which aspect concerns facts underlying the present proceedings only. Thus the question to be referred can only be answered by taking into account the facts underlying the present proceedings. In contrast to the requirements laid down in A 112(1) it does not contribute to ensuring uniform application of the law, nor is it a point of law of fundamental importance. [9.6] This is also true for the aspect of the question to be referred according to which a feature of the claim under consideration is not at all known from the prior art. The abovementioned application of the problem-solution approach requires that also for such a feature – as a feature of the claim under consideration – it has to be established whether it has the alleged technical effect. Based on this it needs to be examined, taking into account the problem attached to such a distinguishing feature, to which extent this feature, in combination with the other features of the claim to be examined, can be considered to involve an inventive step. Therefore such a feature has no special status for the assessment of inventive step. The same applies for the assessment of the request for referral under consideration. In addition it should be noted that it is not unusual to consider claimed subject-matter as obvious although not all features are known from the state of the art to be taken into consideration and which contains several documents. For instance, the skilled person to be taken into account also possesses knowledge and know-how that is common in the technical field [under consideration]. 2985 | 3398
T 2016/07 – Two Is Not A Magic Number
K’s Law – The ebook
Therefore, the request for a referral to the Enlarged Board is to be dismissed. NB: This decision (see in particular point 6.5 of the reasons, 4th and 5th paragraphs) also contains some interesting statements concerning the use of industrial designs (Geschmacksmuster) as closest prior art. The patent proprietor argued that the outward appearance of the claimed container could not possibly be rendered obvious by the container disclosed in industrial designs O1 and O1’. The Board rejected this argument by pointing out that the skilled person knew that in an industrial design the outward appearance was prominent and that the industrial design precisely had the effect of making the skilled person aware that providing and arranging grooves was a possibility for obtaining an aesthetic design. In other words, the industrial design could be an incentive for creating and modifying the outward appearance. To read the whole decision (in German), please click here.
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T 31/08 – An Exception To An Exception
K’s Law – The ebook
T 31/08 – An Exception To An Exception 20 Mai 2010
[2] The request as amended during the oral proceedings (OPs) is admitted into the proceedings. The single independent claim of this request consists in the combination of claim 1 as granted combined with the features of dependent claim 17 as granted. Claim 17 as granted refers to subject-matter that had not been attacked in the opposition. [2.1] Article 13 of the Rules of Proceedings of the Boards of appeal (RPBA) leaves it to the discretion of the Board not to consider any amendment to a party’s case after it has filed its grounds of appeal in particular if the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy speak against it. According to the Board the new subject-matter submitted is not too complex, nor do the current state of the proceedings and the need for procedural economy speak in favour of dismissing the request. The Board is of the opinion that this request is an adequate reaction to the preliminary opinion of the Board as exposed in the summons, wherein the patentability and the admissibility of all requests pending at that time was questioned. [2.2] The Board cannot endorse argument of the [opponent] according to which the request filed during the OPs also violated Article 12(4) RPBA. Article 12 explicitly and exclusively refers to the notice of appeal and any reply. In the notice of appeal at first the patent was defended as granted. The [patent proprietor] then again submitted the request which it had withdrawn during OPs before the Opposition Division (OD), in the form of auxiliary request III filed together with the notice of appeal. Later on, the [patent proprietor] has withdrawn this request during the appeal proceedings, for reasons the Board can understand, and has filed a new request which is not identical with auxiliary request III filed together with the notice of appeal and not even a subset of this request. This request has been submitted first during the OPs. Therefore, the Board only has to decide, in the exercise of its discretion under Article 13 RPBA, if the request is admitted, having taken into consideration the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. [3] According to decisions G 9/91 and G 10/91 [10] the examination of an opposition is limited to the extent to which the patent is opposed in the notice of opposition. If the opponent limits the opposition to particular subject-matter (einzelne Gegenstände), the residual subject-matter is not subject to any “opposition” within the meaning of A 101 and A 102 EPC 1973 nor are there “proceedings” within the meaning of A 114 and 115 EPC 1973 in existence concerning such subject-matter. However, according to the Enlarged Board, there is one limitation of this principle: “even if the opposition is explicitly directed only to the subject-matter of an independent claim of a European patent, subject-matters covered by claims which depend on such an independent claim may also be examined as to patentability, if the independent claim falls in opposition or appeal proceedings, provided their validity is prima facie in doubt on the basis of already available information” (point 11 of the reasons). [3.1] In the present case the opposition is not directed against the subject-matter of the single independent claim only, but also against the subject-matter of several of the claims dependent from this claim. According to the notice of opposition, the opposition is directed against the patent as granted within the scope of independent claim 1 and claims 2 to 9, 11, 12, 25, 26, 28, 31, 33 and 34 that depend from this claim. The [opponent] explained during the oral proceedings that the opposition was in fact not directed against claim 17 as granted. The features of claim 17 define a wedge mechanism (Keilgetriebe) that is provided in order to produce the movement of the pivotal element. Claim 13, which has not been opposed either, also claims a wedge mechanism for restraining certain parts. Claim 18 provides that the same wedge mechanism serves for displacing the pivotal element and for restraining. Claims 19 and 20 describe a motorised drive driving the wedge mechanism. None of the claims against which the opposition was directed deals with such a mechanism or its drive. Therefore, the Board is of the opinion that the opponent has limited the opposition to particular subject-matter (einzelne Gegenstände) cited in the notice of opposition, whereas other claims, among which the claims defining the wedge mechanism and its drive, have not been referred to and, therefore, are not subject to any “opposition” within the meaning of A 101 and A 102 EPC 1973 nor are there “proceedings” within the meaning of A 114 and 115 EPC 1973 in existence concerning such subject-matter. 2987 | 3398
T 31/08 – An Exception To An Exception
K’s Law – The ebook
[3.2] Considering the fact that the opponent has not attacked the single independent claim only but also some of the dependent claims, the exception provided in G 9/91 and G 10/91 [11] cannot be applied in the present case. Therefore, the principle exposed by the Enlarged Board in these decisions (point 10 of the reasons) concerning the legal and factual framework, within which the substantive examination of the opposition shall be conducted, is to be applied. Thus the Board is not free to perform a substantive examination of present claim 1 which is a combination of claims 1 and 17 as granted. […] [4] The patent is to be maintained as amended. The
Board
thus
confirms
the
approach
taken
To read the whole decision (in German), click here.
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in
T
653/02
and
T
646/02.
T 600/07 – Working In The Forbidden Area
K’s Law – The ebook
T 600/07 – Working In The Forbidden Area 19 Mai 2010
Once upon a time there was decision T 256/87 [17], which stated that “all that is necessary is that the skilled person reading the specification be put in the position of being able to carry out the invention in all its essential aspects and of knowing when he is working within the forbidden area of the claims”. As this decision was mentioned in the Case law book and as most attorneys devour the Case law book (at least) when preparing an appeal, this way of looking at sufficiency of disclosure became quite popular. Some decisions confirmed the approach (e.g. T 387/01, T 252/02, T 611/02), but in most cases the Boards did not follow this path and considered that the question of the forbidden area rather concerned clarity (e.g. T 960/98, T 619/00, T 943/00, T 452/04, T 466/05). T 608/07 [2.5.2] pointed out that “care has to be taken that an insufficiency objection arising out of an ambiguity is not merely a hidden objection under A 84”. The present decision concurs. [2.2.1] The [opponent] considered it to be problematic that there was neither a basis nor a measurement method for the claimed size of the carrier material. As different results are obtained depending on whether the indicated particle size is the modal value, the median value or the mean value, and a number-average or a weight average, respectively, and also depending on the measurement method used, the skilled person does not know when he is working within the forbidden area covered by the claims (im verbotenen Schutzbereich). Therefore the invention could not be carried out over the whole claimed range and did not comply with A 83 and A 100(b). [2.2.2] This argument is not persuasive because, in the opinion of the Board, the use of an undefined expression in the claims is a problem under A 84 (see also T 1886/06 (*)). A 84 requires, among other things, that the claims define the matter for which protection is sought. During opposition and appeal proceedings, this leads to the consequence that for the purpose of assessing novelty and inventive step one has to take into consideration prior art corresponding to all technically reasonable possibilities of interpretation of an undefined expression because this expression cannot delimit the area covered by the claims (Schutzbereich) of the claims. If such an expression has no concrete meaning at all, it completely loses its limitative effect with respect to the prior art that has to be taken into consideration. However, A 83 does not deal with the scope of protection of the claims of the patent or the patent, respectively. This provision only requires that the patent discloses the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The question of whether a competitor can know when it works within the forbidden area covered by the claims is at best [equivalent to] the question of whether the claims have the clarity required to satisfy A 84. Therefore the Board has come to the conviction that the objection of lack of sufficiency of disclosure is not justified. The requirements of A 83 are considered to be satisfied. (*) There is a post dedicated to this decision. To read the whole decision (in German), please click here.
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T 600/07 – Dangerous Markush
K’s Law – The ebook
T 600/07 – Dangerous Markush 18 Mai 2010
Here is another example of an extremely severe application of A 123(2) by the Boards of appeal. Claims 1 and 4 to 7 as originally filed read: 1. Detergent and cleaner additive comprising a) 40 to 98.9% by weight of carrier material with an oil absorption capacity of at least 20 g/100 g b) 1 to 50% by weight of one or more binders which are liquid at temperatures up to 40°C c) 0.1 to 40% by weight of a detergent and cleaner ingredient from the group of enzymes, pH extenders, fluorescent agents, dyes, foam inhibitors, antiredeposition agents, optical brighteners, greying inhibitors, colour transfer inhibitors and corrosion inhibitors and mixtures thereof. 4. Detergent and cleaner additive according to one of claims 1 to 3, characterized in that the detergent and cleaner additives comprise one or several substances taken from the group of polyethylene glycols and polypropylene glycols, glycerol, glycerol carbonate, ethylene glycol, propylene glycol, propylene carbonate as well as perfume oils, paraffins, silicon oils and ethoxylated fat alcohols as binders which are liquid at temperatures up to 40°C. 5. Detergent and cleaner additive according to one of Claims 1 to 4, characterized in that it comprises the carrier material in amounts of from 50 to 95% by weight, preferably from 55 to 85% by weight and in particular from 60 to 80% by weight, in each case based on the additive. 6. Detergent and cleaner additive according to one of claims 1 to 5, characterized in that the binder(s) which are liquid at temperatures up to 40°C are used in amounts of from 5 to 47.5% by weight, preferably from 7.5 to 45% by weight, and in particular from 10 to 40% by weight, in each case based on the additive. 7. Detergent and cleaner additive according to one of Claims 1 to 6, characterized in that it comprises the detergent and cleaner ingredient from the group of enzymes, pH extenders, fluorescent agents, dyes, foam inhibitors, antiredeposition agents, optical brighteners, greying inhibitors, colour transfer inhibitors and corrosion inhibitors and mixtures thereof in amounts of from 1 to 15% by weight, preferably from 2 to 10% by weight and in particular from 2.5 to 5% by weight, in each case based on the additive. Claim 1 of the main request filed by the patent proprietor read: 1. Detergent and cleaner additive comprising a) 55 to 85% by weight of carrier material with an oil absorption capacity of at least 20 g/100 g and a particle size of less than 200 μm, b) 10 to 40% by weight of one or more binders which are liquid at temperatures up to 40°C, taken from the group of polyethylene glycols and polypropylene glycols, glycerol, 4-hydroxymethyl-l,3-dioxolan-2-one, ethylene glycol, propylene glycol and 4-methyl-l,3-dioxolan-2-one and perfume oils, c) 2 to 10% by weight of a detergent and cleaner ingredient from the group of enzymes, pH extenders, fluorescent agents, dyes, foam inhibitors, antiredeposition agents, optical brighteners, greying inhibitors, colour transfer inhibitors and corrosion inhibitors and mixtures thereof. The Board comes to the conclusion that A 123(2) has not been complied with: [1.2] In claim 1 according to the main request […] the detergent and cleaner additives now comprise 55 to 85% by weight of carrier material, 2 to 10% by weight of small component ingredients as well as 10 to 40% by weight of one or more binders which are liquid at temperatures up to 40°C, the latter being chosen from the group of polyethylene glycols and polypropylene glycols, glycerol, 4-hydroxymethyl-l,3-dioxolan-2-one, ethylene glycol, propylene glycol and 4-methyl-l,3-dioxolan-2-one as well as perfume oils. [1.3] According to the established case law of the Boards of appeal (see also “Case Law of the Boards of appeal”, 5th edition 2006, Chapter III.A.2) it is decisive for the allowability of amendments under A 123(2) that the amendments are directly and unambiguously derivable from the application as filed. 2990 | 3398
T 600/07 – Dangerous Markush
K’s Law – The ebook
[1.4] According to the [patent proprietor] original claim 6 discloses the range of from 10 to 40% by weight of binder as preferred range and claim 4 discloses the possibility of using one or several of the eleven substances listed therein as binder(s). Therefore claim 4 also disclosed the combinations of selected members of the list of substances, such that claim 1 resulted from the original claims alone, without there being a need to delete or add anything. [1.5] The Board can follow this argument insofar as original claim 6 discloses the claimed range of from 10 to 40% by weight as particularly preferred variant in addition to two less preferred ranges (5 to 47.5% by weight and 7.5 to 45% by weight). Original claim 4 also discloses that the eleven substances of said list can be used as binders in detergent and cleaner additives. However, only this single list of eleven substances is concretely disclosed […]. In contrast, the list of eight binders given in claim 1 as amended is not mentioned anywhere in the original application and it is not clear to what extent the selected eight substances are to be preferred over the three substances (paraffins, silicon oils and ethoxylated fat alcohols) that have been omitted. Therefore, the present selection of eight substances does not enjoy any priority. Hence the [patent proprietor], when defining the subject-matter of claim 1, has selected the preferred range of from 10 to 40% by weight and combined it with a group of eight substances that has been arbitrarily extracted from the list of eleven substances. This subject-matter is encompassed by the original application but not disclosed as such therein. The Board is of the opinion that for this reason alone the requirements of A 123(2) are not complied with because for the skilled person, in the absence of any indication, the new combination of features is not directly and unambiguously derivable from the original application. [1.6] In addition, the two other ranges for the carrier material and for the small component are also disclosed in the original application but not as particularly preferred ranges (cf. original claims 5 and 7 and the corresponding part of the description) and never in combination with the preferred range of from 10 to 40% by weight for the binder(s). Among the six examples originally present, which all were covered by the original combination of ranges, two (examples 3 and 5) are not encompassed by the new combination because they either have too little (0.5% by weight) or too much (13% by weight) small components. There is no indication of any preference for the remaining four examples in the original application. [1.7] Thus for the skilled person the specific combination of more or less preferred ranges is not directly and unambiguously derivable from the original documents, and even less so in combination with the now reduced list of binders. [1.8] Therefore, claim 1 of the main request [...] does not satisfy the requirements of A 123(2) and cannot be granted. This decision shows that extreme caution has to be taken when combining basic, preferred and particularly preferred ranges. Moreover, it raises the question of how to interpret a Markush claim. Is a Markush claim nothing but a convenient and concise way of merging a certain number of claims into one? If so, selecting only some of the elements of the list and omitting the others should not be a problem, because (if we let aside the question of claims fees) the same objective could have been reached with drafting one claim per element. (And as far as I know, nobody has ever argued that the mere deletion of claims could violate A 123(2).) However, the present decision appears to say that things are more complicated: taking some elements from the Markush claim and leaving the others is understood as a selection, with tough consequences for the patent proprietor. To read the whole decision (in German), please click here.
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T 143/07 – The Draughtsman’s Freedom
K’s Law – The ebook
T 143/07 – The Draughtsman’s Freedom 17 Mai 2010
Is it possible to base amendments of claims on features that are found in drawings only? No, say the French courts. Yes, says the EPO (e.g. T 169/83). But even the EPO does not accept any amendment just because the feature may appear in a drawing. The Guidelines C-VI 5.3.2 state that “care should be taken when amendments are based on details which may only be derived from the schematic drawings of the original application. The manner in which a particular feature is depicted in the drawings may be accidental”. The present decision comes to a similar conclusion, although via a detour: by invoking a mysterious person very seldom encoutered in the caselaw: the draughtsman. The patent as granted claimed a probing member (90) for use in an apparatus for determining surface topology of a teeth portion, […] in the form of an elongated transparent body having a front face, and end mirror (95), and top, bottom and side walls extending therebetween […], said front face being inclined relative to said top wall so as to ensure that light beams incident on the front face perpendicularly thereto impinge said top wall at an angle providing their total internal reflection therefrom and further bouncing, by means of total internal reflection, between the top wall and […] the bottom wall towards said end mirror (95) to be redirected thereby […].
The Opposition Division (OD) revoked the patent. It found that the structure and the function of the feature “light beams incident on the front face perpendicularly thereto” as such was not clearly, unmistakably and fully derivable from the schematic figures 2A and 2B as filed because: no incident light beams were represented in the figures 2A and 2B; no symbolic indication was given for a perpendicularity of the beams (99) in the figures 2A and 2B; the measurement of the schematic figure 2B did not precisely lead to an angle of 90°; and only light rays which bounce off the walls of the probing member at an angle in which the walls are totally reflective and finally bounce onto mirror (94) and reflect from there out through the sensing face (97) for a particular but unknown incidence angle were disclosed. Finally, no explicit indication was given in the rest of the application as filed to support the view that the given angle should be 90°. The patent proprietor filed an appeal. It pointed out that the figures were “constructional-like” rather than schematic and that the skilled person would have derived the claimed feature from the drawings. Here is what the Board had to say:
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T 143/07 – The Draughtsman’s Freedom
K’s Law – The ebook
[2.1] The parties did not disagree with the OD that there was no explicit disclosure in the description and claims as filed of the feature “so as to ensure that light beams incident on the front face perpendicular thereto impinge said top wall at an angle providing their total internal reflection”. The board will refer to this feature as the “perpendicularity feature” in the following. [2.2] Turning to the disclosure of the drawings, in particular Figures 2A and 2B of these Figures, particularly Figure 2B, light rays inside the probing member [90] and exiting therefrom are, to use the wording of the description, “represented schematically”, but “light beams” incident on the front face are not represented at all, which is consistent with the description of Figure 2B […] reciting “depicting also some exemplary rays passing therethrough”. In other words, the drawings too provide no explicit disclosure of the “perpendicularity feature”. Of course, there must be some incident rays, the board concluded that the OD was correct in considering there is a disclosure thus of incidence of the rays but not of angle of incidence. [2.3] In the board’s view, a significant disclosure is contained in the original documents […], namely “Three light rays are 99 are represented schematically. As can be seen, they bounce at the walls of the probing member at an angle in which the walls are totally reflective and finally bounce on mirror 94 and reflected from there out through the sensing face 97.” [2.4] As the incident rays onto the probe are not mentioned, this explicit disclosure is just what the draughtsman represented in Figure 2B […] and is also consistent with the description of the drawings “light rays passing therethrough”. An element of draughtsman’s artistic freedom or licence is, in the view of the board, involved in portraying the ray paths shown in Figure 2B. The draughtsman had only to illustrate the bouncing on the walls then mirror and exit from the probe, choosing to show the latter as a straight line. The incident ray path was left open. The board therefore considers the refracted ray path actually shown in the probe as not to be a reliable indication of the angle of incidence. In a way, the [patent proprietor] confirms this assessment of draughtsman’s artistic freedom or licence of the draughtsman by referring to the Goldmeier effect that small angles cannot be differentiated by the human eye, i.e. implying the path shown is unreliable, and to “assuming perpendicular incidence”, i.e. the draughtsman left it out. [2.5] Significantly, there is no teaching at all in the description, of how the paths shown give an indication that the relationship between the wedge angle and perpendicular incidence is pertinent to meeting the bouncing and exiting constellation as set out in point [2.3] above. The situation concerning this relationship is not therefore unlike that set out, for instance, in decision T 666/07 [3.4] – “... relationship introduced ... has been singled out from amongst equally feasible other features, which selection is an arbitrary one as there is no basis for it in the originally filed application ...”. [2.6] The board cannot therefore agree with the [patent proprietor] that the skilled person would draw any conclusion about the relationship between wedge angle and perpendicular incidence as applied to the path through and exiting the probe. In fact, the approach of the [opponent] appears persuasive in arguing that the skilled person would simply ensure the angle of the ray impinging on the top wall is smaller or the same as the critical angle and the inclination range of incident angle on the front face takes account of refraction. Thus, even if the board accepts the interpretation of decisions T 261/90 and T 748/99 (sic) advanced by the [patent proprietor], i.e. the drawings are constructional like drawings in relation to wedge angle which can be seen to be more than 45°; this does not imply any disclosure beyond that argued by the [opponent]. [2.7] Supposing, arguendo, that the Figures are taken to give a specific teaching of ray path, then since Figure 2B does show a slightly off-perpendicular refracted ray path in the probe, this is what the skilled person is taught. While, as the [patent proprietor] argued, there are many possible angles of incidence, there is no reason in the documents as filed with the wedge angle drawn then to consider any refracted ray path other than that disclosed as necessary to provide the path through and exiting in a straight line from the probe exactly as shown. In particular, the wedge angle does not define perpendicular incidence in the drawings. Where is then the direct and unambiguous disclosure that the angle of incidence is modifiable with the knock-on effect of changing the path through the probe and exit angle? Thus, while the board would not dispute that the skilled person could, as a kick-off criterion, choose perpendicular incidence and dimension the probe accordingly, this choice is simply not disclosed in the documents as filed. Similarly, even if the skilled person can deduce that the wedge angle shown is greater than 45°; this still offers no reason to modify the ray path. Whether the probe would be larger for off perpendicular incidence may play a 2993 | 3398
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K’s Law – The ebook
role for instance in respect of fitting and space criteria, but it does not compel the skilled person to assume perpendicular incidence nor to add the missing disclosure to the documents as filed. […] [3.2] The board can only concur with the remark of the [opponent] at the oral proceedings that the disclosure simply does not go far enough to provide the reference to perpendicular. As a consequence, the Board rejected the request on the ground of non compliance with A 123(2). To read the whole decision, please click here.
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T 1673/07 – No Retraction From Removal
K’s Law – The ebook
T 1673/07 – No Retraction From Removal 15 Mai 2010
Readers interested in ‘surprising’ new case law only should not read on as the present decision is not of the surprising kind. Its main interest lies in the fact that it applies the established case law concerning the withdrawal of applications to the “removal” of designations. In the course of the examination proceedings the designated contracting states were restricted to DE, FR and IT. In response to a communication of the Examining Division (ED), stating that claims on file were allowable for IT, the applicant filed separate claims for FR and DE. Subsequently, the applicant’s representative wrote to the Office (April 5, 2005): Further to our communication today concerning the above-captioned application, please be informed that Applicant requests that Germany and France be entirely removed from the present application. Accordingly, Applicant requests the Examiner to expedite the issuance of the communication under R 51(4) for the above-captioned application for Italy. With reference to that letter the Formalities Officer responded as follows (April 12, 2005): I hereby confirm that designated states Germany (DE) and France (FR) have been withdrawn from the above mentioned patent application. Italy (IT) is the sole remaining designated state. Then the communication under R 51(4) indicating IT as the sole designated state was issued (June 10, 2005). The applicant filed a divisional application designating DE and FR (September 20, 2005) and expressed its approval to the grant (October 11, 2005): ... we would like to confirm that the applicant approves the documents intended for grant.... We herewith request that the Decision to Grant be issued .... Later on (December 29, 2005) the applicant’s representative requested confirmation that the communication of April 12, 2005 confirming withdrawal of the designations of DE and FR was issued in error and that the divisional application had been correctly filed. In support of that request it was submitted that in a telephone consultation with the Examiner (April 5, 2005) the latter insisted on the removal of DE and FR before the allowable claims for IT could proceed, thereby forcing the applicant to confirm “removal”. It was understood that the applicant wished to maintain the rights for DE and FR and that “removal” did not prejudice those rights. Accordingly, the applicant had still been under the impression that he would be able to obtain a single patent with two sets of claims. Here is what the Board has to say: [2] A valid notice of withdrawal which has been received at the EPO is binding on the applicant. It should only be accepted without question if it is completely unqualified and unambiguous (see J 11/87 in respect of a request for withdrawal of a EP application). Where there is even the slightest doubt as to the applicant’s actual intent such a declaration should be construed as a declaration of withdrawal only if the subsequent facts confirm that such has been the true intent. [3] The requests in the letter dated 5 April 2005, namely that “Germany and France be entirely removed from the present application” and that “the issuance of the communication under R 51(4) for the above-captioned application for Italy” are clear and unambiguous. They leave no room for interpretation, either in view of the wording or in the given procedural context: Also where use was made of the possibility of having different sets of claims under R 87 EPC 1973, first alternative, the grant procedure continued to be a single one for the application concerned, so that only one communication under R 51(4) EPC 1973 and one single decision to grant were issued. Given this, it was a not uncommon course of action by applicants to withdraw the designation of states which gave rise to contentious prior art issues pursuant to A 54(3) EPC 1973 in order to obtain a swift grant for the other designated states. [4] Even if the Office, for whatever reason, had or should have had any doubt as to whether the applicant really wished to abandon the designations in question, any such doubt would have been removed by the subsequent events, in that the applicant did not react to the communication dated 12 April 2005 in which the Office 2995 | 3398
T 1673/07 – No Retraction From Removal
K’s Law – The ebook
explicitly informed the applicant of its understanding that the letter of 5 April 2005 constituted a notice of withdrawal; rather, following the communication under R 51(4) EPC 1973 which again explicitly indicated IT as the sole Contracting State, an unqualified approval of the documents intended for grant was given and grant itself was requested - again an unambiguous and also plausible procedural declaration consistent with the earlier withdrawals of the designations of DE and FR. [5] The appellant further argued that it should be allowed under R 88 EPC 1973 (which corresponds to R 139 EPC 2000) to resile from the withdrawal of the designations, since it had been made under an erroneous assumption. However, according to the established case law of the Boards of Appeal, one precondition for such a retraction is that the relevant request is made before the withdrawal has been officially notified to the public (see e.g. decisions J 15/86 and J 25/03). This is in the interest of legal certainty and balancing the interests of the applicant and of third parties, in particular in being able to rely on information officially published, and is an objective criterion which applies irrespective of the true intentions or mindset of the person who made the relevant statement. In the present case the withdrawal was published in the EP Bulletin 21/2005 of 25 May 2005, i.e. about half a year before the validity of the withdrawal of DE and FR was contested for the first time by letter of 29 December 2005. [6] In conclusion, the withdrawal of the designation of DE and FR was valid and cannot be retracted. To read the whole decision, click here.
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T 1261/06 – Important But Not Essential
K’s Law – The ebook
T 1261/06 – Important But Not Essential 15 Mai 2010
[2.5] The board notes that the definition of the matter for which protection is sought in claim 1 is somewhat broader than the preferred embodiment of the invention. In particular, the claim does not specify that the first information is “important information” as in the case of the preferred embodiment […]. Likewise, the definition of the modulation scheme in the claim is not limited to the 8PSK scheme illustrated in Fig.2. However, in the present case the board judges that these generalisations of the claimed subject-matter are permissible when due account is taken of the disclosure as a whole. [2.5.1] Although the first information is designated as “important information” in the preferred embodiment of the invention […], the board judges that this is not an essential technical feature of the invention. It is noted in this regard that the description states more generally that the information to be placed on the first and/or second bit of the group of bits is “information selected from all information to be communicated” […] and, likewise, that the specification “important information” does not in itself imply any particular technical limitation in respect of the first information. Moreover, as may be inferred from the description, the recited placement of bits of the first information on bit positions which are less susceptible to errors results in an optimal error rate characteristic for the first information […]. This in turn implies an inherent prioritisation of the “first information” over the “second information”. On this basis the board concludes that an explicit specification to the effect that the first information is “important information” is not necessary. [2.5.2] Concerning the definition of the modulation scheme it is noted that claim 1 specifies that a first and a second bit position of each group of bits are less susceptible to errors than the remaining bit positions and that the bits of the first information are placed on the first and/or the second bit position of each group of bits associated with a modulation symbol. The board is satisfied that the skilled person would be able to infer from the specific example of the preferred embodiment that the invention can be practised more generally as long as the modulation scheme is such that a first and a second bit position of each group of bits are more reliable (i.e. less susceptible to errors) than the remaining bit positions. Provided that the modulation scheme fulfils this criterion, the technical effect on which the invention is based, i.e. providing an optimal error rate characteristic for the first information, can be achieved by selectively placing the bits of the first information on the more reliable bit positions. Therefore, in the board’s judgement, it is not necessary to limit the definition of the modulation scheme to the specific example of the 8PSK scheme illustrated in Fig.2. [2.6] In view of the foregoing, the board is satisfied that claim 1 now provides a definition of the matter for which protection is sought which expresses the essential technical features of the invention with adequate clarity and in a manner supported by the description. On this basis, the claim is found to comply with the requirements of A 84. To read the whole decision, click here.
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T 170/07 – Fatal Step
K’s Law – The ebook
T 170/07 – Fatal Step 14 Mai 2010
The present decision concerns an invention in the field of haemodialysis. It deals with the question of whether a claim comprising a step which is formulated in terms so general that it includes configurations where a therapeutic effect is obtained, may be held patentable. In other words, is the presence of a step that is potentially (but not necessarily) therapeutic sufficient to exclude a method from patentability? Claim 1 as granted read: Method of determining a parameter (D, K, Kt/v, Cbin) indicative of the effectiveness of an extracorporeal treatment of blood, consisting in making a patient’s blood and a treatment liquid flow one on each side of the semipermeable membrane of a membrane exchanger, characterized in that it includes the steps of:
making a treatment liquid flow through the exchanger, a treatment liquid having a characteristic (Cd) which has an approximately constant nominal value (CdOin) upstream of the exchanger; varying the value of the characteristic (Cd) upstream of the exchanger for a time tc–ta, at the end of which the characteristic (Cd) is returned to its nominal value (CdOin) upstream of the exchanger; measuring and storing in memory a plurality of values adopted by the characteristic (Cd) of the treatment liquid downstream of the exchanger in response to the variation in the value of this characteristic (Cd) caused upstream of the exchanger;
characterized in that it includes the steps of:
determining the area (Sout) of a downstream perturbation region bounded by: o
a baseline passing through two values given by the characteristic (Cd) at two times flanking the perturbation, at which times the characteristic (Cd) is not, or respectively is no longer, influenced by the perturbation; and
o
a curve representing the variation with respect to time of the characteristic (Cd), established from the values of the characteristic (Cd) which are measured downstream of the exchanger between two times t1 and t3 flanking the perturbation, at which times the characteristic (Cd) is not, or respectively is no longer, influenced by the perturbation; and
calculating the parameter (D, K, Kt/v, Cbin) indicative of the effectiveness of a treatment from the area (Sout) of the downstream perturbation region and from the area (Sin) of an upstream perturbation region bounded by: o o
a baseline consisting of the nominal value (CdOin) of the characteristic (Cd), and a curve representing the variation with respect to time, over the period tc–ta, of the characteristic (Cd) upstream of the exchanger.
[2.1] A 53 lists certain exceptions to patentability. Its paragraph c) points out that European patents shall not be granted in respect of methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body. In its opinion G 1/04 [6.2.1], the Enlarged Board of appeal has studied the question from which point on a method had to be considered as a diagnostic method practised on the human body. In this context, it has stated that methods for treatment of the human body by surgery or therapy practised on the human body [sic] had to be distinguished from diagnostic methods and that a method could fall under the exclusion provided by A 53 c) if only one of its steps were to be considered as surgical or therapeutic.
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T 170/07 – Fatal Step
K’s Law – The ebook
[2.2] The fundamental question under consideration is whether the method of determining a parameter claimed in the opposed patent includes a step that has to be considered as being of therapeutic or surgical nature. The wording of claim 1 as granted does not explicitly comprise a surgical step. Therefore, the Board has concentrated on the question of whether one of the steps that are explicitly claimed had to be considered as being of therapeutic nature. [2.3] The claimed method is a method of determining a parameter indicative of the effectiveness of an extracorporeal treatment of blood. A method of extracorporeal treatment of blood consists in making a patient’s blood and a treatment liquid flow one on each side of the semipermeable membrane of a membrane exchanger such that there is an exchange of liquids and of substances between the patient’s blood and the treatment liquid through the membrane. The treatment liquid has a composition chosen such that the composition of the patient’s blood is modified in a predetermined way. A haemodialytic treatment that allow to treat the blood of patients suffering from renal deficiency is such an extracorporeal treatment of blood. In fact the unique embodiment of the invention in the opposed patent is such a haemodialytic treatment. The dialysis liquid has several properties, and in particular a certain sodium concentration for a given conductivity. The idea underlying the invention is to vary one of the properties of the dialysis liquid, such as the sodium concentration, upstream of the exchanger, to measure the perturbation induced downstream of the exchanger in order to be able to mathematically deduce a parameter indicative of the effectiveness of the treatment from the perturbations measured upstream and downstream of the exchanger. The practitioner or the physician then changes (or does not change) the ongoing treatment in view of a predetermined therapeutic objective as a function of the value of this parameter. The decisive step in claim 1 under consideration thus consists in “varying the value of the characteristic (Cd) upstream of the exchanger for a time tc–ta, at the end of which the characteristic (Cd) is returned to its nominal value (CdOin) upstream of the exchanger”. [2.4] First it has to be noted that the wording of this step does not give any information concerning the amplitude, the duration or the frequency of the induced variation. In other words, all amplitudes, durations and frequencies suitable for serving the determination of the given parameter are covered by the scope of the claim. It is also useful to consider the teaching of D1 published in December 1994, i.e. three years before the priority date of the opposed patent. This document concerns a device that allows to avoid the problems related to hypotension which are observed for certain patients during the dialysis. More precisely, this device allows to automatically deliver a suitable dose of sodium to the patients when the first symptoms of hypotension appear, so that the hypotension is avoided. To this aim the patient presses a button when the symptoms appear and the dialysis machine automatically increases the sodium concentration of the dialysate (for example by 16 meq/l) for a predetermined duration (for example, 10 minutes […]). The increase of the sodium concentration and the duration of the application are variable and adapted to the needs of the patients […]. As a matter of fact, the [patent proprietor] has acknowledged that the injection of sodium was a common means for fighting against hypotension problems observed for certain patients during a dialysis session. Document D1 shows that for at least certain durations and variations of the sodium concentration (which is a characteristic of the treatment liquid) there certainly is a therapeutic effect that is acknowledged in certain patients. As the wording of the contested step of the method does not contain any range of values, the execution of this step, therefore, necessarily has a therapeutic effect on the patients suffering from hypotension when the characteristic varies in the proportions and during the durations indicated in D1. The preceding considerations are sufficient for imparting a therapeutic step within the meaning of A 53 c) and, therefore, for excluding it from patentability. [2.5] The [patent proprietor] has acknowledged that the execution of the claimed method might have a physiological effect on the patient. However, according to it, in order for the method to be considered as therapeutic, there would have to be a therapeutic purpose, as well as a therapeutic effect. In other words, there would have to be an indication of a disease or an ill-being to be avoided or healed and a precise treatment, i.e. the injection of a well-defined component at a well-defined moment for a well-defined duration. Such an interpretation would be contrary to the principle according to which, in a claim “the general covers the specific”. The claim in its generality covers a multitude of treatment liquids, the dose, and injection times. Therefore, it also covers the case in which the chosen treatment liquid, the dose and the injection time will have a beneficial effect on a patient showing the symptoms of hypotension. In other words, the method of determining a parameter such as claimed in claim 1, that is to say, defining an indeterminate value of the variation of a characteristic of 2999 | 3398
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K’s Law – The ebook
the treatment liquid during an indeterminate duration necessarily includes the case in which it will have a beneficial effect on a patient showing the symptoms of hypotension, as disclosed in D1. The [patent proprietor] has not been able to persuade the Board that the doses and durations of application recommended in D1 could not be used in the claimed method. Quite to the contrary, the doses and durations indicated by the [patent proprietor] are of the same order of magnitude as those needed for the treatment of hypotension. [2.6] The [patent proprietor] insisted on the fact that the doses required for the measures had no effect on the therapeutic treatment of the patient. Furthermore, the physician of a hospital using several dialysis machines having a system for measuring the dialysance based on the injection of a peak of sodium similar to the claimed one, had confirmed that these peaks of sodium had no influence on the therapy. On one hand, the [patent proprietor] has not supplied any precise test or proof allowing to corroborate its affirmations. On the other hand, what matters is not whether the machines of the prior art sending a sodium peak to patients for reasons of measurements produce a therapeutic effect or not, nor does it matter whether there are values in the claimed range of values for which there is no therapeutic effect or even a negative effect on the patent. The question is only whether the values or the ranges of values that lead without any doubt to a therapeutic effect are covered by the wording of the claim. As for the passage in the description of the opposed patent according to which the patient is exposed to a treatment liquid different from the prescribed treatment liquid for a very short period of time, it does not allow to affirm that no therapeutic effect is obtained. It rather indicates that if the time or exposition (cumulated or not) is badly chosen, it will necessarily have a negative influence on the ongoing haemodialysis. Moreover, the duration is not specified in the claim under consideration. [2.7] The [patent proprietor] considers that it should not be hindered from obtaining a patent for a method including one single step that could be therapeutic because this would prevent it from suing a possible infringer whereas a physician reproducing only the critical step could not be sued for infringement anyway because he would not reproduce the method as a whole. Even if one admits that the purpose of the exclusion under A 53 c) is to avoid that the medical corps be hindered in exercising its functions, the Board is bound by the text of the EPC. The Board is forced to recognize that through the wording of A 53 c) the legislator has not chosen to exclude only the methods that could be prescribed by a physician for a therapeutic purpose, but, more generally, methods for treatment of the human or animal body by therapy practised on the human or animal body. To this aim, as has been stated by the Enlarged Board of appeal in its opinion G 1/04, the presence of one single therapeutic step is sufficient for excluding a method practised on the human body from patentability. Thus a method practised on the human or animal body and claimed in general terms, as in the claim under consideration, and which originally has no declared therapeutic purpose but which, under certain circumstances, inevitably generates a therapeutic effect when executed, falls under the exclusion according to A 53 c). [2.8] The [patent proprietor] argues that A 53 c) does not contain any wording such as “relative to a therapeutic treatment” or “which are useful for the purpose of a therapeutic treatment”, which means that the claimed method should not be excluded from patentability. The method claimed in the opposed patent cannot be considered as being merely “relative to a therapeutic treatment” as it inevitably produces a therapeutic effect in patients having symptoms of hypotension. A method for the production of one of the components of the dialysis liquid would, for instance, be a method “relative to a therapeutic treatment”. Nothing of that kind is claimed here. [2.9] The [patent proprietor] has also pointed out that the EPO had already granted a great number of patents concerned with the determination of a parameter during a therapeutic treatment and that the Office had to remain coherent with itself and thus grant a patent. As provided in A 23, the members of the Boards of appeal are independent in the exercise of their duties. In particular, A 23(3) states that in their decisions the members of the Boards shall not be bound by any instructions and shall comply only with the provisions of this Convention. The existence of patents granted for methods that are similar to the method claimed here, therefore, could not possibly bind the Board, even in the case where the Board departed from the interpretation or explanation of the Convention in an earlier decision of one of the Boards (see Article 20 RPBA). 3000 | 3398
T 170/07 – Fatal Step
K’s Law – The ebook
To read the whole decision (in French), click here.
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G 3/08 – The Right To Differ
K’s Law – The ebook
G 3/08 – The Right To Differ 13 Mai 2010
There are farewell gifts you’d rather not receive. I cannot help thinking that Mrs Brimelow would have preferred another answer to her last referral to the Enlarged Board of appeal (EBA). In substance, the EBA found this referral inadmissible because the alleged divergences in case law were inexistent or of a kind that cannot justify a referral to the EBA. Welcome back to square one. Although this outcome is not unexpected, the opinion is not without interest because the EBA dwells on how case law is elaborated and what sort of divergences may arise in the process before convergence is finally reached. [7] The key to assessing the referral’s admissibility is determining the meaning to be assigned to the undefined legal term “different decisions” / “abweichende Entscheidungen” / “décisions divergentes” in A 112(1)(b). Do decisions differ if for example they come to the same verdict on different grounds? What about two decisions that are far apart in time? In such cases, does a Technical Board clearly stand by earlier case law cited in support of a difference, or has it explicitly or implicitly abandoned it in the meantime? What if the claimed differences are the result of long-term legal developments affecting the patentability assessment of new subject-matter? How do different decisions relate to other case law of the Boards? [7.1] The meaning to be assigned to the key term “different decisions” as this expression is used in A 112(1)(b) must initially be determined on the basis of the provision’s wording in all official versions of the EPC, these all having equal status (A 177(1)). Yet the wording does not seem to give a clear answer. The English, German and French terms used (“different”, “abweichend” and “divergent” respectively) do not appear to have entirely the same connotations. Cassell’s English-German Dictionary, 1978 edition, translates “different” with German words such as “anders, verschieden, andersartig, abweichend, ungleich, verschiedenartig”, whereas according to Harrap’s Shorter Dictionary French-English (1988 Reprint) the French term “divergent” equates to “divergent” in English, not “different”, and in German is according to Larousse Grand Dictionnaire Allemand- Français, 1999 edition, equivalent to terms like “divergierend, auseinanderlaufend, abweichend”. This results in variations in semantic content (abweichend/different/divergent) between the three language versions. “Different decisions” could apparently be ones that are far apart in time, regardless of whether they actually still have a claim to validity in view of intervening changes in case law. “Divergent decisions” by contrast would suggest ones which do not take the same line, which in other words vary in their substantive content, while being close together in time. Thus a clear answer cannot be derived from the wording of the provision alone. [7.2] Ambiguous wording in international treaties, including industrial property conventions, has to be interpreted in the light of its object and purpose (Article 31 of the Vienna Convention on the Law of Treaties (VCLT) whose rules for the interpretation of treaties are to be applied to the EPC (see G 5/83 [3 ff.]; G 2/02 and G 3/02 [5.2 ff.]; G 1/07 [3.1]; G 2/08 [4]), and if we consider the object and purpose of A 112(1)(b) in the context of the EPC, there is much to suggest that it means divergent decisions in the second sense mentioned in paragraph (a) above […]. [7.2.1] According to current constitutional thinking, the predictability and verifiability of all state action are indispensable elements of a democratic legal order based on the separation of powers, the rule of law and respect for human rights including fundamental procedural rights. These principles have been subscribed to in substance at national level by all the EPC contracting states, despite differing constitutional traditions and despite several reservations made by different states. As a democracy is prohibited from signing an international treaty which would undermine its citizens’ constitutional guarantees, the EPO must therefore support these fundamental principles either explicitly (e.g. A 113) or implicitly (e.g. liberty, equality) (see for example G 3/98 [2.5.3]; G 2/02 and G 3/02 [7.2]; T 377/95 [33-36]; T 1193/02 [10]; T 190/03 [10]). The European Patent Organisation is an international, intergovernmental organisation, modelled on a modern state order and based on the separation of powers principle, which the sovereign contracting states have entrusted with the exercise of some of their national powers in the field of patents. Thus the EPC assigns executive power to the Office to grant patents and to its President to manage the Office in organisational respects (A 4(3) and A 10 ff.), while to the Administrative Council it assigns limited legislative powers restricted to lower-ranking rules 3002 | 3398
G 3/08 – The Right To Differ
K’s Law – The ebook
(A 33), along with financial and supervisory powers. Finally, the Boards of Appeal, which in their decisions are bound only by the EPC (A 23(3)), are assigned the role of an independent judiciary in this patent system (A 21 to A 23; see also G 6/95 [2 ff.]), even if for the present, pursuant to A 4(2) and to EPC Part 1 Chapter III, they are not an independent organ of the Organisation but structurally integrated departments of the Office under A 15. [7.2.2] Like the judiciary of any democratic entity based on the separation of powers principle, the EPO’s Boards of Appeal as an independent judiciary guarantee the due process of law within the Organisation. They are also assigned interpretative supremacy with regard to the EPC in terms of its scope of application (see also A 23(3)). Under A 21(1) they are responsible for reviewing decisions taken by the Office in grant and opposition proceedings. Their interpretation of the EPC is the basis for the practice established by the Office for the examination of patent applications and oppositions to granted patents. Otherwise there would be no need for the President’s right of referral. On the other hand, the interpretation of the EPC or equivalent national regulations by the courts of the Contracting States has no direct consequences for Office departments; but that does not mean that in interpreting the Convention the Boards of Appeal should not take account of relevant national decisions on harmonised European patent law, in keeping with normal practice. This is implied by the harmonisation philosophy behind the EPC. [7.2.3] Another essential element of a democratic legal order is the principle that a public authority is bound by law and justice. This is supplemented by the principle of uniform application of the law. Both principles are designed to ensure predictability of jurisdiction and hence legal certainty by preventing arbitrariness. Those subject to the law, in the case of the EPC the parties to proceedings before the Office, but also the public, must be able to expect that the Office as patent granting authority and consequently the Boards of Appeal will settle cases of the same nature in the same way and will apply comprehensible arguments and methods to justify any substantive differences in such decisions. For the stated reasons, these principles also constitute essential precepts for administration and jurisdiction in the European patent system as codified in the EPC. Ensuring compliance with them is ultimately the task of the Boards of Appeal, including the EBA, the latter though only in the context of referrals by the Boards of Appeal and the President under A 112(1) and concerning petitions for review (A 112a). [7.2.4] In keeping with these principles, A 112 - like corresponding provisions in the legal orders of the Contracting States - defines the conditions in which legal uniformity within the European patent system may be established by means of a referral to the EBA of Appeal. It requires the Boards (A 112(1)(a)) or the President (A 112(1)(b)) to deem the referral necessary in order to ensure uniform application of the law or if points of law of fundamental importance arise, and a further admissibility criterion for a referral by the President is that two Boards of Appeal must have given different decisions on the question referred. Hence the EBA does not rule on abstract points of law, but only ever on real issues arising from the cited differing decisions, as well as on specific legal questions adduced in the referral […]. It is to be noticed that the President is not a party in a referral procedure because she or he can not be adversely affected by answers given by the EBA. [7.2.5] Thus it is clear that the interpretation of the EPC is primarily the responsibility of the Boards of Appeal. As a rule they have interpretative supremacy with regard to the EPC because their decisions are subject to review only under the narrowly defined conditions of A 112(1) and A 112a(2). It is only when these apply that the EBA has the last word. The fact that the EBA takes action only on a referral from the Boards of Appeal or the President (with the exception of petitions for review under A 112a, which however concern procedural matters and have a very narrow scope) and thus does not constitute a further instance ranking above the Boards of Appeal within the EPC judicial system is a clear indication of the extent of its significance for legal uniformity. The exhaustive list of admissibility criteria for a referral under A 112(1)(a) and (b) implies that the EBA takes decisions on specific legal questions and that neither the Boards of Appeal nor the President are authorised to consult it whenever they so wish in order to clarify abstract points of law. For that purpose the President can call upon a separate Legal Department within the Office. [7.2.6] On the same restrictive grounds, A 112(1)(b) as an additional constraint for a referral by the President as opposed to one by a Board of Appeal requires there to be differences in the rulings of two Boards of Appeal (in the sense already discussed) on a point of law. The “different decisions” criterion would appear to show that the President is only intended to be allowed to refer a question to the EBA when there is a divergence or, better, conflict in the case law making it difficult if not impossible for the Office to bring its patent granting practice into line with the case law of the Boards of Appeal. It is of course immaterial whether the initiative behind the referral comes from a third party, as long as there is objective evidence of divergent applications of the law.
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G 3/08 – The Right To Differ
K’s Law – The ebook
[7.2.7] Given its object and purpose, the right of referral does not extend to allowing the President, for whatever reason, to use an EBA referral as a means of replacing Board of Appeal rulings on CII patentability with the decision of a putatively higher instance. For example, a presidential referral is not admissible merely because the European Parliament and Council have failed to adopt a directive on CII patenting or because consistent Board rulings are called into question by a vocal lobby […]. Even the essentially commendable desire for harmonisation expressed by Lord Justice Jacob in the Aerotel/Macrossan judgment can be taken up by the EBA only to the extent possible under the EPC, even if his suggestion might significantly advance the cause of legal uniformity in Europe. When judiciary-driven legal development meets its limits, it is time for the legislator to take over. [7.3] The notion of legal development is an additional factor which must be carefully considered when interpreting the notion of “different decisions” in A 112(1)(b), as has occasionally been pointed out in the literature […] and various amicus curiae briefs. [7.3.1] Development of the law is an essential aspect of its application, whatever method of interpretation the judge applies, and is therefore inherent in all judicial activity. In that light an element of legal development can even be seen whenever a specific case is subsumed under an abstract regulation. That is especially true of AngloSaxon law, where a decision on an individual case has far greater implications as a precedent than judgments in continental civil law. Consequently, legal development as such cannot on its own form the basis for a referral, only because case law in new legal territory does not always develop in linear fashion, and earlier approaches may be abandoned or modified. Otherwise the “different decisions” feature of A 112(1)(b) would lose its meaning. While the development of the law may superficially appear to give rise to different decisions within the meaning of that provision, on its own it cannot justify a referral to the EBA. A referral is justified only if at least two Board of Appeal decisions come into conflict with the principle of legal uniformity. The object and purpose of A 112(1)(b) is to have an EBA decision re-establish legal uniformity when it has clearly been disrupted, not to intervene in legal development. This is discussed in more detail in the following. [7.3.2] The EPC as it stands assigns interpretation of the EPC with its numerous undefined legal terms ultimately to the Boards of Appeal (see [7.2.5] above). They are responsible for defining how the law is to be applied and where appropriate adapted to developments in patent law. To a greater or lesser extent the issue in every case is whether or not the situation is covered by an abstractly formulated regulation. Thus over time case law has given e.g. the notions of invention, novelty, inventive step and industrial applicability increasingly precise meanings with which the Office and other patent system stakeholders can align themselves in their daily practice. Hence in view of the direction that patent law has taken by means of the Boards’ case law, appeals against decisions of the Examining and Opposition Divisions mostly operate within legally secure bounds. [7.3.3] Particularly in the field of new technologies, the Technical Boards often have to subject their established case law to critical review, applying accepted judicial procedure and general legal principles to decide whether the often broadly formulated undefined legal terms in the EPC are applicable to the specific nature of the new field, i.e. in particular whether the existing widely accepted case law also yields acceptable solutions in the new field. It is entirely conceivable that the interpretation of undefined legal terms in the light of the EPC’s purpose and principles will necessitate drawing further distinctions which, depending on what they include or exclude, may determine whether a patent is granted or refused in a specific case. [7.3.4] Where jurisprudence enters new legal territory, caution is required to avoid making statements that will prove untenable in the very next case to arise. Yet it cannot be ruled out that repeated amendments will be necessary in the course of time if legal solutions that the Boards initially deem correct prove to be mistaken in new situations and cease to be convincing jurisprudence. Such changes of direction in legal development are a normal part of judicial activity, and there is no need to speak of different decisions within the meaning of A 112(1)(b) simply because departures from earlier practice are deemed necessary when homing in on the right solution to a specific case […]. [7.3.5] Thus even a radical shift in jurisprudence need not necessarily be construed as a different decision within the meaning of A 112(1)(b) vis-à-vis earlier case law, provided that the Board corrects itself and - mostly in explicit fashion - declares its earlier practice to be no longer relevant. The President does not acquire the right of referral simply because he prefers the earlier decision […]. Such corrections are a normal part of the application and development of the law and do not constitute a difference that could be corrected by means of a presidential referral to the EBA, overriding the interpretative power of the Boards. In fact, shifts of this kind when identified as such leave the Office as patent granting authority in no doubt how the EPC is to be interpreted according to the Boards’ latest findings. This may entail altering the Examination Guidelines, but not having the case law reviewed by the EBA. It is another matter if the Boards themselves see a need to refer points of law to the EBA in the light of a change in their practice. 3004 | 3398
G 3/08 – The Right To Differ
K’s Law – The ebook
[7.3.6] The same should apply where the Boards’ case law has developed over an extended period and in the course of several decisions has gradually arrived at solutions which clearly and justifiably move away from the initial premise, even if the public and the patent granting authority have found earlier solutions acceptable. In that way, too, legal development has followed a course which, while not entirely linear, as long as it is transparent does not justify speaking of different decisions that could be grounds for a referral. [7.3.7] Legal rulings are characterised not by their verdicts, but by their grounds. That is the only way of assessing the courts’ opinion, and the ability to assess that is in turn the key to legal certainty. The EBA has already taken this line in its decision G 3/93 [2], where it took obiter dicta into account in examining a divergence […]. [7.3.8] The conclusion that must be drawn is that the EBA cannot develop the law in the same way as the Boards of Appeal, because it does not have to decide on facts of pending appeals, but only in specific instances and only in the aforementioned context of points of law referred to it under A 112(1). This applies a fortiori to referrals by the President, which do not even arise from a specific appeal. If, as required for a referral by the President, there are different decisions on points of law, the EBA may follow the legal approach of one of the decisions and reject the other as inappropriate, or it may find a third way appropriate. Thus the only way it can influence the assessment of individual issues is by breaking with previous practice and pointing in a new direction or by confirming the approach adopted by a Board. In the process however the EBA must also consider whether the divergent decisions might not be part of a constant development, possibly still ongoing, in jurisprudence on recent patent law issues, in the course of which older decisions have lost their significance and so can no longer be considered in connection with newer decisions. Such putative differences do not justify presidential referrals, legal development being one of the principal duties of the Boards of Appeal, in particular in new territory. Hence the President has no right of referral under A 112(1)(b) simply in order to intervene, on whatever grounds, in mere legal development if on an interpretation of the notion of “different decisions” in the sense of conflicting decisions there is no need for correction to establish legal certainty. You can download the whole decision here. NB: I owe the knowledge of the publication of the opinion to Laurent Teyssèdre’s blog twitter. Meanwhile most patent related blogs have spread the news.
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T 384/08 – A Frozen Business
K’s Law – The ebook
T 384/08 – A Frozen Business 12 Mai 2010
Yesterday we have seen how the transfer of opponent status relates to the question of reformatio in peius. The substantive questions related to the transfer under consideration are also of interest, as we will see today. [11] According to the established case law (see G 2/04), an opponent status is not freely transferable. It does however move to the successor in title in case of universal succession such as a takeover or merger of legal persons. Furthermore, it may be transferred or assigned to a third party as part of the opponent’s business assets, together with the assets in the interests of which the opposition was filed (see G 4/88). In this context, the term “business” has to be understood in a broad sense as describing an economic activity which is or could be carried on by the opponent and which constitutes a specific part of his business assets (G 4/88 [5]). [12] When the original opponent Protogene filed its opposition in October 1999, it was conducting scientific research and development in the field of micro-arrays. The company had been founded in 1996 by Dr Brennan and Dr Molinari. Dr Brennan was its chief scientist until August 2000, a member of the board of directors and its major shareholder. […] Dr Molinari was Protogene’s Chief Executive Officer from 1996 to 1999 and vice president from 1999 to April 2000. He was appointed to the board of directors in April 2001 […]. [13] During the first few years of its existence, Protogene funded itself by forming R&D partnerships with other companies interested in utilizing or co-developing Protogene’s technology. Protogene did not manufacture and sell its own micro-arrays. However its R&D efforts resulted in several granted patents and pending patent applications […]. [14] The appellant has argued that at the time when Protogene filed its opposition there was no appropriate economic activity upon which a relevant legal interest could have been based. If, however, such an economic activity existed at all, it could only have been the envisaged chip development collaboration with the corporation Incyte Pharmaceuticals, in the context of which Protogene was encouraged to file the opposition. [15] The board does not find these arguments persuasive. Since the subject-matter of the opposed patent concerns high-density arrays of nucleotide or amino acid sequences, the patent fell squarely within Protogene’s core activity of scientific research and development in the field of micro-arrays. The opposition was directly connected to this economic activity which, in accordance with the decision G 4/88, qualifies as the “business” in the interest of which the opposition was filed. As the term “business” has to be understood in a broad sense, it also encompasses the economic activities of a biotechnological R&D firm in a development stage. Thus there is no basis for the proposition that Protogene’s opposition was not linked to any business at all or that it was exclusively linked to one specific joint collaboration project. [16] After Protogene had filed its opposition, its business situation worsened. Dr Brennan left the company in late 2000, but he remained a majority shareholder and developed a plan to start a new company that would continue Protogene’s work on a smaller scale […]. Protogene lost money at an increasing rate until the company was running on bridge loans from its investors in early 2001. In April 2001, the board of directors ordered the company to lay off approximately 60% of its employees […]. [17] During the summer of 2001, Dr Brennan, on behalf of a newly formed company Creogen, began negotiating with Protogene’s board of directors to purchase all of the equipment and technology necessary to enable Creogen to continue Protogene’s custom oligonucleotide arrays and array PCR business […]. In September 2001 the board of directors voted to restructure the company which involved winding down the day to day operations and selling off certain physical assets, in order to make the company a more attractive takeover or merger candidate. On 1 November 2001 an auction took place where most of the equipment was sold to over one hundred different parties […]. However, in accordance with an understanding reached before the auction took place, laboratory equipment necessary for the microassay R&D business was set aside in view of its future sale to Creogen […]. [18] The board considers that while the auction led to the transfer of many tangible assets owned by Protogene and generated a considerable amount of money, it did not involve a transfer of business. It is noted in particular that the physical assets were sold to many different persons and that the auction did not concern intangible assets 3006 | 3398
T 384/08 – A Frozen Business
K’s Law – The ebook
such as Protogene’s patent portfolio. Thus none of the buyers at the auction acquired Protogene’s micro-array business or a specific part of it. [19] Creogen was reincorporated as Metrigen in July 2002 […]. On 20 December 2002 an Asset Purchase Agreement (hereafter: “the Agreement”) was concluded between Protogene as the seller and Metrigen as the buyer and became effective on 21 December 2002 […]. In the introductory part of the Agreement it is stated that the seller is engaged in the business of DNA micro-arrays, methods to perform highly parallel experiments on micro-arrays, single nucleotide polymorphism genotyping, and other drug discovery products and services and that the buyer desires to purchase from the seller certain assets of the business. [20] […] The purchased assets inter alia include
all tangible personal property listed on a schedule 2.1(a), all IP listed or described on a schedule 2.1(b) together with o o o o o o
(i) all of the seller’s IP rights associated therewith, (ii) goodwill associated therewith, (iii) licenses and sublicenses granted and obtained with respect thereto, (iv) rights thereunder, (v) remedies against infringements thereof, and (vi) rights to protection of interests therein under the applicable laws of all jurisdictions,
all causes of action, lawsuits, judgments, claims and demands of any nature available to or being pursued by the seller with respect to the seller’s personal property, seller’s IP, or contracts, including the seller’s EPO opposition against the [opposed] patent, it being acknowledged that the opposition constitutes an inseparable part of the seller’s IP and the assets.
[21] Schedule 2.1(a) lists the laboratory equipment which was set aside during the auction in November 2001 […] [22] IP rights are defined in Article 1 of the Agreement as including, inter alia, all trade secrets and other rights in know-how and confidential or proprietary information. Schedule 2.1(b) contains a list of 40 patent applications and patents related to the results of Protogene’s research and development. [23] […] Certain assets are excluded from the Agreement, in particular contractual employment arrangements as well as cash, cash equivalents, marketable securities and accounts or notes receivable of the seller. [24] While the Agreement explicitly refers to Protogene’s opposition against the European patent in suit as “an inseparable part of the Seller Intellectual Property and the Assets”, this as such is not sufficient for a transfer of opponent status since according to the established case law oppositions are not freely transferable (see point 11 above). Rather, in accordance with decision G 4/88, it has to be ascertained whether, by means of the Agreement, those business assets of Protogene in the interests of which the opposition was filed were transferred to Metrigen. [25] The appellant takes the view that, at the time of the conclusion of the Agreement, Protogene had no business activities any more. All the business terminated in autumn 2001 so that by the end of 2002 Protogene had neither customers nor employees. The appellant in particular relies on a declaration […] which reads as follows: “Protogene had ceased on-going commercial efforts and was no longer selling product, remaining management attention being completely focused from then on at providing liquidity to investors by selling business assets as part of the shut down.” [26] With respect to Protogene’s patent portfolio, the appellant argues that the holding of IP rights should not be equated with a business as an economic activity since patents are only negative rights and do not give a positive right to use the claimed invention. Furthermore, since all the employees had already left the firm, trade secrets which have to be regarded as a key component of any business and as being of significant importance for R&D businesses could not be transferred any more. [27] The board does not agree with this line of argument. Even a firm which has closed its day-to-day operations and is going to be dissolved in view of financial difficulties has a business as long as there are business assets which allow the carrying out of a business activity connected with them. While in such circumstances one may 3007 | 3398
T 384/08 – A Frozen Business
K’s Law – The ebook
possibly speak of a business “in a frozen state” or a “residual” business, there is nevertheless still a business (see decision G 4/88 [5]: “an economic activity which is or could be carried on” [emphasis added by the board]). [28] In the present case, when the Agreement was concluded, Protogene still owned valuable tangible and intangible property relating to its business as defined in the introductory part of the Agreement. Furthermore, the plan of the company’s majority shareholder Dr Brennan was to continue Protogene’s work on a smaller scale within a new company […]. In accordance with this plan, certain laboratory equipment was set aside in the auction of November 2001 with the purpose of being later transferred to the new company (see point 17 above). Therefore the board concludes that Protogene still had a business that could be transferred when the Agreement was concluded. [29] The next issue to be decided is whether the opposition division (OD) was correct in holding that the Agreement had the effect of only transferring certain items of property and did not result in the transfer of Protogene’s business or a specific part of it. [30] The board accepts that according to the case law of the boards of appeal there may well be situations in which a transfer of industrial property rights is not sufficient for accepting the claimed transfer of opponent status, in particular where the relevant business activity is continued by a person different from the assignee of the industrial property rights (see T 659/92 [3.2]). On the other hand, the mere fact that certain assets are explicitly excluded in an assignment contract is as such not sufficient for concluding that the contract did not result in the transfer of a business or a specific part of it (see T 799/97 [2.4]). [31] In the present case, the board is convinced that, following the plan conceived by Protogene’s majority shareholder and former chief scientist Dr Brennan, the Agreement was executed for the purpose of transferring to Metrigen all the business assets considered to be relevant for continuing Protogene’s core business, i.e. research and development in the field of microarrays. It is noted in particular that the Agreement related to the selling company’s patent portfolio and to essential laboratory equipment. […] [32] It is true that, as correctly stated by the OD and the [patent proprietor], the Agreement did not encompass all of Protogene’s assets without exception. However, these exceptions concern assets which, as persuasively explained by [the opponent], were of no importance for continuing the micro-array business. For example, it is perfectly understandable that Metrigen did not see any need to acquire Protogene’s remaining trademarks which could be regarded as valueless since no commercial sales had been generated or even as having negative connotations in the marketplace in view of Protogene’s lack of success […]. The [patent proprietor] was unable to point to any asset remaining with Protogene which could be reasonably considered as relevant, let alone as essential, for continuing the micro-array business. [33] When taking into account the intentions of Protogene’s majority shareholder and of Metrigen’s CEO […], the provisions of the Agreement and Protogene’s economic situation in December 2002, there is nothing to suggest that Protogene intended to retain and revitalize its microarray business or any part of it after the conclusion of the Agreement. What remained of Protogene afterwards was an empty shell. [34] The board therefore comes to the conclusion that the business assets in the interest of which the original opponent 02 Protogene filed its opposition were validly transferred to Metrigen. This has the consequence that, following Metrigen’s corresponding request and its submission of appropriate evidence in the course of the proceedings before the OD, the opponent status has validly been transferred from Protogene to Metrigen. Thus Metrigen is the correct respondent I in the present appeal proceedings. To read the whole decision, click here.
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T 384/08 – There Is An End To The Prohibition
K’s Law – The ebook
T 384/08 – There Is An End To The Prohibition 11 Mai 2010
The CAFC may have Pauline Newman, we have Ursula Kinkeldey. I know neither of these ladies personally, but I do know that the patent world owes them lots of decisions well worth reading. Whenever I see a decision by a Board chaired by Mrs. Kinkeldey, (or a dissenting opinion by Mrs. Newman) I look forward to some stimulating and well-argued statements. The present decision is no exception. It deals with interesting aspects of a transfer of opponent status. Can the Board be hindered from examining the allowability of a transfer by the prohibition of reformatio in peius? [1] An issue in the present proceedings is whether the status of opponent was transferred from the original opponent Protogene Laboratories, Inc. (“Protogene”) to Metrigen, Inc. (“Metrigen”). As a matter of principle, the boards of appeal have to examine the question of party status ex officio before dealing with the substance of the cases (see G 2/04 [3.2.5], specifically addressing a procedural situation where there is uncertainty about the validity of a transfer of opponent status). However, the appellant takes the view that the board is precluded from examining the transfer of opponent status since the transfer was not accepted by the opposition division (OD) and neither Protogene nor Metrigen appealed the decision. The core of appellant’s argument is that its own appeal does not concern this part of the decision (which was favourable to the appellant) so that the issue of the transfer of opponent status remains finally determined and cannot be decided differently without infringing the principle of prohibition of reformatio in peius. [2] According to the established case law of the boards of appeal, the doctrine of reformatio in peius does not apply separately to each point or issue decided, or to the reasoning leading to the impugned decision (see T 149/02 [3.2.1]). This case law finds a basis in a passage in decision G 9/92 [11] according to which a nonappealing party as a respondent has the opportunity to make what it considers to be appropriate and necessary submissions in the appeal proceedings to defend the result obtained before the first instance [emphasis added by the board]. In decision T 327/92 [1], the board stated the following: “In the present case the patent was revoked so there is nothing the Board can refuse the Appellant which the OD has not already denied it. The doctrine of reformatio in peius cannot be extended to apply separately to each point decided by the OD. Rather the Board of Appeal must examine all material before the OD [...] as to its relevance to the grounds of invalidity raised in the opposition, and then decide for itself on the requests made on appeal.” The same view was taken in the decision T 401/95 [2]: “If an appeal is lodged against an adverse decision of the first instance about the main request, then the whole request is before the Board of Appeal and within its jurisdiction (see decisions T 327/92 [1], T 583/95 [2]). It is the Board’s power and duty pursuant to A 111(1) and A 102(3) to decide for itself upon each matter and each issue with regard to the main request and the Board is not bound by any finding of the decision under appeal. Thus, the Board is empowered to reopen and decide upon matters which have been an issue before the OD [...].” [3] The above principles apply independently of the nature of the issue decided by the OD in favour of the appellant, i.e. also where the issue concerns the status of a party or the admissibility of an opposition. On numerous occasions, the boards have held that the admissibility of the opposition is an indispensable procedural requirement for the substantive examination of the opposition submissions at every stage of the proceedings (see also G 3/97 [6]). Thus even where an opponent is the sole appellant, the admissibility of its opposition has to be ascertained by the board of appeal on its own motion (see e.g. T 289/91 [2]; T 960/95 [2]). As illustrated by decision T 28/93, this may have the consequence that a decision which rejected an opposition on substantive grounds is set aside and the opposition rejected as inadmissible. [4] Furthermore, decision T 1178/04 [24] has taken the view that where what is at issue is the admissibility of an opposition or a person’s right to be a party, the principle of no reformatio in peius is of no application. In that 3009 | 3398
T 384/08 – There Is An End To The Prohibition
K’s Law – The ebook
case, the OD had considered the transfer of opponent status to be valid, and only the new opponent had appealed the substantive decision. The board considered it to be its duty ex officio to examine the validity of the transfer of the opposition and concluded that this duty arises whether or not the issue has been raised by the proprietor and whether or not it has already been the subject of a decision by the OD. It also followed that it was irrelevant whether or not the proprietor could have appealed or had in fact appealed (see T 1178/04 [34-36]). [5] The appellant referred to decision T 898/91. In that decision the present board in a different composition was confronted with the situation that the OD had rejected one of several oppositions as inadmissible and had revoked the opposed patent on the basis of the other oppositions. Only the patent proprietor appealed. The board came to the conclusion that the opponent whose opposition was held inadmissible should have appealed that part of the decision if it wished to remain party to the appeal proceedings. In the absence of such an appeal, that part took full legal effect and was not touched by the suspensive effect of the patent proprietor’s appeal (see T 898/91 [1]). [6] The board understands the approach adopted in decision T 898/91 as resulting in an exception from the general principles set out above (see points 2 to 4 above). If this approach were to be followed, a distinction with respect to the binding effect of findings of the department of first instance would have to be made between a situation where the admissibility of an opposition was accepted by the OD and a situation where it was not accepted: whereas in the first situation the board of appeal is not prevented from reconsidering the issue of admissibility even if the opponent is the sole appellant (see T 289/91, T 28/93 and T 960/95), in the second situation it would be prevented from reconsidering the issue unless the opponent concerned has also filed an appeal. [7] The board has difficulties in finding a legal justification for such a distinction. Furthermore, the approach adopted in decision T 898/91 leads to the rather unfortunate consequence that one of several opponents whose opposition was rejected as inadmissible but who is fully satisfied with the substantive outcome of the opposition proceedings (e.g. revocation of the patent) would have to file an own appeal merely in order to safeguard its status as a party in appeal proceedings possibly initiated by the proprietor. This would amount to a kind of precautionary appeal which, in the view of the board, is conceptually foreign to the EPC. In addition, awkward procedural situations might then arise if the proprietor does not file an appeal himself. Dealing with the only appeal of one of several opponents whose opposition was held inadmissible if the proprietor does not appeal against the revocation decision, might amount to a legal conundrum: whereas the patent would have to be regarded as finally revoked, the board would still be concerned with the question whether the appealing party was correctly denied its party status. [8] The board furthermore notes that the procedural situation in the present case which concerns the refusal of a requested transfer of opponent status is not wholly identical to the situation underlying the decision T 898/91 where the relevant issue was the admissibility of one of several oppositions. If in the present case the board considered itself bound by the OD’s determination of the issue of transfer, it would have to treat the original opponent Protogene as respondent and would be barred from examining whether Protogene had lost its opponent status due to a transfer. The board would thus be obliged to accept a person as a party to the proceedings which upon examination might reveal itself as not having a proper status. [9] The [patent proprietor] has also pointed to the provision of A 106(2), according to which a decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows a separate appeal. The argument is made that it would follow from this provision that if proceedings for one of the opponents are terminated by the department of first instance, an appeal can be taken from that part of the decision, even if the decision did not make termination a separately appealable matter and even if the decision resulted in the revocation of the patent. The board is unable to see why A 106(2) should be given such an extensive reading. The provision is concerned with the admissibility of appeals against interlocutory decisions. In the present case the OD dealt with all the formal and substantive issues it considered necessary to address in its final reasoned decision. The decision included the issue of transfer of the status of opponent and no separate reasoned decision was taken on this point. Thus there is no need to consider what the procedural consequences would have been if the OD, before taking a final decision, had decided on the issue of transfer of opponent status in a separate reasoned interlocutory decision. [10] In view of the reasons set out above, the board comes to the conclusion that, notwithstanding the fact that neither Protogene nor Metrigen appealed the OD’s decision, it has to examine the question of the transfer of status of the opponent ex officio before dealing with the substance of the case. The board has noted the appellant’s request to refer, in the context of this issue, three questions of law to the Enlarged Board of Appeal (EBA). However, such a referral is considered to be neither necessary nor appropriate for reaching a decision in the present case. The principles developed by the decisions of the EBA (see in particular G 9/92, G 3/97 and G 3010 | 3398
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2/04) and by the case law of the boards of appeal give a sufficiently clear guidance to the board for determining the issue itself. To read the whole decision, click here. NB: This decision has already been reported on the Blog du droit européen des brevets.
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T 836/09 – The Lady And The Box
K’s Law – The ebook
T 836/09 – The Lady And The Box 10 Mai 2010
What would a patent attorney be without his/her assistant? Unfortunately, on a case law blog, assistants are mentioned only when they make mistakes (see my recent post) or even go crazy (another recent post). The present decision is no exception. It deals with a request for re-establishment following an error by Mrs P. who inadvertently sent a statement of grounds of appeal to the German patent office (DPMA) instead of sending it to the EPO. Some time ago (until December 1, 2005), there was an Administrative Agreement between the EPO and the DPMA which would have avoided any loss of rights, but the President of the EPO was criticized for having exceeded his powers when signing this Agreement and the Agreement was terminated. The whole decision is worth reading, but it is the part dealing with the admissibility of the request which I found most interesting. [4.1] Compliance with the two-month time limit Pursuant to R 136(1), first sentence, the request shall be filed within two months of the removal of the cause of non-compliance with the period, but at the latest within one year of expiry of the unobserved time limit. In its decision in T 315/90 [6] (recently affirmed by T 1465/08 [2.1]), the board held that the date of the removal was the date at which the appellants should have discovered the committed error if they had taken all due care, due care being a permanent obligation. In that case, the date of removal was not necessarily the date of receipt of the communication notifying a loss of rights. More generally, holding that due care was an obligation extending over the whole of the proceedings, the case law of the boards of appeal recognises that the cause of noncompliance may be removed already at the point in time when a representative taking all due care would have become aware that the time limit had been missed, even though in reality he or she had become aware thereof at a later stage only (cf. T 1561/05 [2.1.3] and the cases cited there). In the present case, the appellant’s representative, Mr K., was unable to observe the deadline for filing the statement of grounds of appeal, which expired on 16 March 2009. As set out above, non-compliance with that period was the consequence of the fact that his assistant, Ms P., inadvertently put the statement of grounds into the DPMA outbox, which, as evidenced by the indications on that statement, ultimately led to its being delivered at the DPMA on 13 March 2009 and at the EPO on 23 March 2009. According to the credible statement by Ms P., the error was discovered in the appellant’s patent law firm on 15 April 2009, when the acknowledgment of receipt returned by the EPO was received. That date of receipt is also evidenced by the “Received” stamp of the law firm on that document. The question arises whether 15 April 2009 is also the date when the cause for noncompliance with the time limit for filing the statement of grounds was removed or whether the representative or Ms P. should have become aware of the error earlier on. The representative submitted that, where an acknowledgment of receipt could not be stamped by the EPO’s filing office because it was delivered after office hours, such acknowledgment would usually be returned by post in the following days. In the present case however it was more than one month after delivery of the statement of grounds intended for the EPO that the acknowledgment was received by the patent law firm. The question therefore is whether, under the principle of due care, the representative was under an affirmative duty to inquire with the EPO whether they had received the statement of grounds, as no acknowledgment had yet been received, or to check receipt in the EPO’s online register, and within which maximum time frame such an inquiry or check would have had to be made. Should it have had to be made within a matter of days from 13 March 2009 (the date when the statement of grounds was dispatched) and in any case in less than 12 days from that date, i.e. before 25 March 2009, then the appellant, in filing the request for re-establishment on 25 May 2009, would not have respected the two-month time limit. In the board’s view it was not necessary for the representative to make an inquiry about the whereabouts of the statement of grounds with the EPO, nor even to check in the EPO’s online register whether it had been added to their electronic file. The board considers that the due care requirement, if it applies in the context of compliance with the time limit of two months of the removal of the cause of non-compliance following the case law cited above (in the second paragraph of the present section 4.1), does not include an obligation to seek confirmation by the EPO in whatever way of the receipt of documents directed to them. An acknowledgment of receipt 3012 | 3398
T 836/09 – The Lady And The Box
K’s Law – The ebook
enclosed with the documents sent and returned with a confirmation by the EPO makes it easier for the sender to prove the filing of those documents with the EPO should a document go astray. An acknowledgment of receipt stamped by the EPO is however not the only way to prove receipt. Evidence to that effect can be furnished by any appropriate means; see, for instance, the decisions of the boards of appeal cited in the EPO publication “Case Law of the Boards of Appeal of the EPO”, 5th ed. 2006 at VI.K.4.3.6. Therefore taking all due care does not require a party to attach to documents intended for the EPO an acknowledgment of receipt for return by the EPO nor to make an online inspection of the file. As a consequence, any failure to monitor timely return of an acknowledgment or check the contents of the electronic file in the EPO’s register cannot amount to a failure to take all due care either. Thus, in the case before the board, the representative was under no duty to take such steps. As there is no suggestion from the documents on file that the appellant or anyone in its patent law firm could have become aware of the error before receipt of the acknowledgment on 15 April 2009, the cause of non-compliance with the time limit was removed on that date. Consequently the period of two months from the removal of that cause was complied with by the request for reestablishment of rights received on 25 May 2009. This request was also filed within one year of expiry of the unobserved appeal time limit of 16 March 2009. [4.2] […] The request for re-establishment is consequently admissible. The request was also found allowable and was, therefore, granted. To read the whole decision, click here.
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T 990/07 – Enough Said
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T 990/07 – Enough Said 8 Mai 2010
In a recent post, I have cited a decision stating that there was no mandatory requirement for an example under the EPC and that the sufficiency of disclosure with regard to claimed subject-matter had to be judged on the basis of the whole disclosure in a patent and not only on that given by the examples. The present decision confirms this approach and provides some complementary considerations. [3.1] R 27(1)(e) EPC 1973 requires the description to “describe in detail at least one way of carrying out the invention claimed using examples where appropriate and referring to the drawings, if any”. The only concrete examples disclosed in the present application are those of Figures 7, 8 and 11 which, however, do not embody the claimed subject-matter. Moreover, even if there is no doubt that these Figures are erroneous, their correction and the correction of the corresponding passages in the description is not permitted under R 139 (former R 88 EPC 1973). Such corrections would only have been allowable if it had been immediately evident what the correction should have been. Since, however, a multiplicity of distinct configurations describing single loops exist, this condition cannot be fulfilled, several different corrections being possible. Moreover, the selection of one specific configuration and the inclusion of the details necessary to define this configuration would necessarily contain fresh matter and thus contravene A 123(2). In the absence of any other example actually embodying the claimed invention, the Board has to decide whether a request which fulfils the requirements of A 83 EPC 1973 should nevertheless be rejected on the basis of R 27(1)(e) EPC 1973. [3.2] It has already been decided that where the application disclosed the claimed invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, it then necessarily disclosed “at least one way of carrying out the invention claimed”, as required by R 27(1)(e) EPC 1973, with the necessary details being derivable from the description including the prior art referred to therein (cf. T 389/87 [5.3-4]; T 561/96 [4.3]). Although the case underlying decision T 561/96 differs from the present situation in that the description and the drawings were not erroneous (cf. [4.2]), the Board also held in this decision that in cases where examples were not indispensable, their omission did not contravene R 27(1)(e) EPC 1973 which only required the insertion of such examples “where appropriate”. The jurisprudence of the boards of appeal draws thus a clear distinction between the concepts of “way of carrying out the invention claimed” and “examples” referred to in R 27(1)(e) EPC 1973. According to this jurisprudence, the detailed description of one way of carrying out the invention claimed has to be interpreted in the light of A 83. It constitutes a condition to be met by the description as a whole and is clearly mandatory. In contrast, the presence of examples would only be indispensable if the description would otherwise not be sufficient to meet this requirement. Hence, the purpose of the “examples” evoked in R 27(1)(e) EPC 1973 appears primarily to be to complete an otherwise incomplete teaching. In the case underlying decision T 134/82, relied upon by the ED in its refusal of the present application, the Board held that a misleading example or the absence of example was not appropriate and eventually refused the application. This decision was the consequence of the finding that crucial information for carrying out the invention was actually missing in the application. The conclusion reached in decision T 134/82 is thus consistent with the case law referred to above in that it applied the same criterion, namely, whether sufficient information for reproducing the invention could have been gathered from the application as a whole. The present case differs however from the situation underlying decision T 134/82 in that the examples of Figures 8 and 11, although erroneous, are not as such misleading since the skilled person would have undoubtedly been able to appreciate that they contained errors and would have realised how they should have been adapted to describe a (single) loop in the sense of independent claim 1. 3014 | 3398
T 990/07 – Enough Said
K’s Law – The ebook
The description of the connection structure contained in paragraphs [0035] to [0042] of the published application makes it clear that the antenna wiring portions are connected into a loop form by means of vias and intralayer wiring. The Board considers that this passage - although it relates to erroneous drawings - describes in detail one way of carrying out the invention in that the skilled reader is provided with the teaching necessary to enable the connection of the antenna wiring portions. [3.3] Consequently, since the present description contains sufficiently detailed information to carry out the invention, as set forth above under section 2, the Board concludes that it is not necessary to include an example embodying the invention and that the requirements of Rule 27(1)(e) EPC 1973 are therefore met. To read the whole decision, click here. NB: This decision has already been reported on Le blog du droit européen des brevets.
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T 448/07 – Much Talk About A Mute Witness
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T 448/07 – Much Talk About A Mute Witness 7 Mai 2010
Need for a hearing [1.1] Together with the notice of opposition the opponent has filed a written declaration by Mr. Mandrioli. The declaration was based on annexes 1 to 7. Annexes 1 to 4 concern a prior use by sale of a device without any obligation of confidentiality. Annexes 5 to 7 are leaflets and manuals concerning further prior uses. As far as the latter are concerned, Mr. Mandrioli gives details including the serial number but does not use any of the evidence and does not indicate how he obtained knowledge on these further prior uses. [1.2] The [opponent] has offered the hearing of Mr. Mandrioli as a witness. In the communication of the Opposition Division (OD) dated September 5, 2006, which was enclosed with the summons to oral proceedings (OPs) the OD has told the parties that it was of the opinion that a hearing of Mr. Mandrioli was not necessary. Together with its submission of December 5, 2006, and during the OPs before the OD the [patent proprietor] has pointed out that there were loopholes in the evidence and contradictions between the Annexes. In the reasons for the contested decision the OD considers that Annex 1, which is an invoice from 1992 constitutes proof for a prior use by sale of a G.D. 2001 device. [1.3] When answering the question as to which features this device had, the OD bases its reasoning on the pictures in Annex 4 which apparently have been taken at some time in the year 2000, i.e. after the priority date. It implicitly follows Mr. Mandrioli’s declaration because he has indicated the date at which the pictures were taken and affirmed that the condition of the device had not changed since its delivery in 1992. According to the contested decision, the pictures show a G.D. 2001 device having the same serial number as mentioned in the invoice. The OD further states that the pictures show that the device has remained substantially unchanged over the years and, therefore, corresponded to the condition of the device sold in 1992. Moreover, the OD believes to be able to perceive the content of the box from the pictures, i.e. that it is a control box. [1.4] As to the argument of the [patent proprietor] that the alleged box was of different colour than the other parts of the device, the OD has objected that both colours looked as if they had the same age and that all the colours were “soiled in the same manner by age and use”. However, the decision does not state how it came to this conclusion. [1.5] When asked whether the device had not been modified over the years, Mr. Mandrioli has declared that in 1995 the device still had had its original configuration, as could also be seen in the pictures taken at a later time. Mr. Mandrioli having not been heard, it is not known why he was able to declare this, for instance how he had known the original configuration. [1.6] The Board comes to the conclusion that the OD based its reasoning on the declarations of Mr. Mandrioli at least for determining the object of the alleged prior use. [1.6.1] In a case where a patent is revoked or maintained in amended form on the basis of the declaration of a single person, it is necessary to very carefully examine the evidence, including as a rule the hearing of this person as a witness if such hearing is – as in the present case – offered. Such a hearing is indeed necessary in order to find out how the witness remembers the alleged facts and to receive an impression concerning his/her credibility. As the [patent proprietor] has explained, it was initially essentially limited to pointing out possible loopholes and contradictions in the evidence. As a rule it is necessary to hear the witness in order to confirm or eliminate such loopholes and contradictions. [1.6.2] It results from the present evidence that the contradictions alleged by the [patent proprietor] could indeed be real. 3016 | 3398
T 448/07 – Much Talk About A Mute Witness
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For instance, the different colours of parts of the device constitute such a contradiction. During the OPs before the OD there were, according to the minutes, only declarations by the representative of the opponent and his accompanying person that this was usual and did not indicate a subsequent modification. Only the accompanying person but not the representative was present – as asserted – when the pictures were taken. However, neither of them was heard as a witness concerning this fact. The Annexes 2 and 3 and the declaration by Mr. Mandrioli also contain such contradictions. Annex 2, page 2, contains a “note” according to which an instruction manual (“libro istruzioni”) was provided in the Italian language. However, on page 4 of Annex 2 there is a reference to documents for the customer (“documentazione per cliente”) which concerns a manual in the Italian language (“Manuali istruzioni copie : 1 ITA). Annex 3, which, according to the declaration by Mr. Mandrioli, “corresponds’ to the instruction manual, is, however, written in the English language. Also the fact that Mr. Mandrioli has not declared that Annex 3 was supplied with the device, but only that it corresponds to the documents supplied with the device only allows to suspect what has exactly been supplied. The presence of such contradictions or loopholes can under certain circumstances render moot the whole evidence so that it is as a rule necessary to clarify them in order to be able to correctly appreciate the evidence. [1.7] Moreover the declaration by Mr. Mandrioli concerns a series of further alleged prior uses. It is not clear which of these facts Mr. Mandrioli can personally attest and which of them are only based on information provided by third parties, such as his colleagues. The need for determining which facts Mr. Mandrioli has learned from third parties and which he can personally attest is another reason for hearing Mr. Mandrioli as a witness. [1.8] The Board therefore comes to the conclusion that a hearing of the witness Mr. Mandrioli is necessary. Procedural violations due to not hearing the witness [2.1] The [patent proprietor] expressed the opinion that it had implicitly required a hearing of the witness Mr. Mandrioli during the opposition proceedings. There was no explicit request, as the [patent proprietor] admitted during the OPs before the Board. [2.2] Mr. Mandrioli was offered for a hearing together with the notice of opposition. In its response dated March 11, 2004, the [patent proprietor] did not request his hearing as a witness but has only dealt with the evidence by pointing out: that Annexes 2 and 4 were not to be taken into account because Annex 2 was post-published and the pictures of Annex 4 were taken after the priority date of the impugned patent; that there was a contradiction between Annexes 2 and 3 concerning the language in which the instruction manual was written; that there was no evidence for the affirmation that the G.D. 2001 device had been delivered without any secrecy obligation; and that in any case it was not clear that the control box units of this device had received monitoring and steering organs. The missing features were in none of the documents of the prior art and, therefore, justified novelty and inventive step. In order to be understood as an implicit request for a hearing of witnesses, this submission would have to have only this interpretation. However, the above submission can also be understood to mean that the [patent proprietor] limited itself to excluding certain evidence from the proceedings, to attacking certain alleged facts and to affirm that they, even if they were real, could not cast doubt on the novelty and the inventive step. [2.3] In its communication accompanying the summons to OPs, the OD has stated that it would not hear Mr. Mandrioli as a witness. […] At this moment at the earliest [sic] the [patent proprietor] knew that it had to explicitly request a hearing if it considered such a hearing to be necessary. This is all the more true as the [opponent], in its letter dated October 6, 2006, again inquired whether Mr. Mandrioli was summoned as a witness. Then the OD had called it and informed it that the OD did not intend to do so. The corresponding minutes were sent to the [patent proprietor] on November 24, 2006. [2.4] In its letter dated December 5, 2006, the [patent proprietor] then again only dealt with the evidence, which leads to the same result, i.e. that this reaction cannot be understood as an implicit request for a hearing of the witness. Quite to the contrary, the [patent proprietor] has requested that the declaration of Mr. Mandrioli not be taken into account. [2.5] During the OPs at the latest the [patent proprietor] should have realized that its written submissions were not understood as an implicit request. Nevertheless, it has not filed a request for a hearing of the witness and there is no indication in the minutes that it had pointed out the necessity for such a hearing in any other form. Therefore, the Board cannot share the opinion of the [patent proprietor]. 3017 | 3398
T 448/07 – Much Talk About A Mute Witness
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[2.6] The [patent proprietor] has also explained that the OD has not complied with its duty to act of its own motion, by not deciding to summon and hear the witness. However, the [patent proprietor] fails to see that the witness had been offered by the [opponent], in order to corroborate its declarations, and not by itself, and that the OD had considered the question and has made use of its discretion under A 114(1) such that it came to the conclusion that it could allow the requests of the [opponent] without any hearing. If the position of the [patent proprietor] were adopted, it would lead to the situation where the OD would have to accept any offer of a witness and, therefore, lose its power of discretion. [2.7] The [patent proprietor] has also cited decision T 474/04. The facts underlying this decision differ from the facts of the present case in that the concerned [patent proprietor] had filed an explicit request for a hearing of the witness offered by the [opponent] already during the opposition proceedings, which had been ignored or overseen by the OD. In the present case there has not been any explicit or implicit request. Therefore, this decision is not relevant. [2.8] For the above mentioned reasons the Board does not see any procedural violation on behalf of the OD. The Board then remitted the case to the OD. The patent proprietor had asked the Board not to do so, but the Board rejected this request because the required hearing would transform the appeal proceedings into first instance proceedings. It pointed out that the patent proprietor had contributed to the long delay caused by the remittal, by not requesting a hearing of the witness during the opposition proceedings. To read the whole decision (in German), click here.
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T 564/07 – Extrinsic Illumination
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T 564/07 – Extrinsic Illumination 6 Mai 2010
The Guidelines (C-III 4.14) explain that “where a claim in respect of a physical entity (product, apparatus) seeks to define the invention by reference to features relating to the entity's use, a lack of clarity can result. This is particularly the case where the claim not only defines the entity itself but also specifies its relationship to a second entity which is not part of the claimed entity (for example, a cylinder head for an engine, where the former is defined by features of its location in the latter) […]”. Does this reasoning apply when a claim refers to a feature (such as a given frequency or wavelength) that is not inherent to the object itself? That is the question which T 564/07 and T 614/04 try to answer. In T 564/07, Claim 1 of the application read: A surface acoustic wave (SAW) identification tag, comprising: a piezoelectric substrate having a SAW transducer located thereon for generating a signal having a known frequency that travels down the substrate as a SAW; a number of reflectors […] arranged to reflect a portion of the SAW back to the transducer […], wherein for the known frequency each reflector is positioned at one of predetermined allowable positions, each allowable position being associated with a predetermined time shift and phase, wherein the phase has a phase step relative to a phase associated with an adjacent allowable position, to enable discrimination of overlapping reflected portions of the SAW. […] By specifying that each reflector is positioned at one of predetermined allowable positions and by defining said allowable positions by reference to a “known frequency” generated by the transducer, the relationship existing between adjacent allowable positions has been clarified in both independent claims 1 and 8. Although these allowable positions do not constitute, as such, structural elements of the claimed tag, the relationship which is to exist between said positions leads by reference to concrete limitations as to the distribution of the reflectors on the substrate. It follows from the description that the distribution of the reflectors indeed constitutes the key element in order to permit discrimination between reflected portions of the SAW in case such reflected signals would overlap; such overlap would namely result from the proximity of reflectors in view of the pulse width of the signal generated by the transducer. Although the “known frequency” or “given frequency” referred to, respectively, in claims 1 and 8 does not constitute an inherent feature of the transducer since the bandwidth of the signal generated depends, inter alia, on the interrogation signal generated by an external reader, the Board is satisfied that the requirements of A 84 EPC 1973 as to clarity are met. As ruled in decision T 614/04 [2.4], concerning the examination of clarity, “the aspect whether a device having the concrete features of claim 1 and used with a wavelength not fulfilling the mentioned conditions falls within the scope of claim 1, is irrelevant during the examination of a patent application. [...] The Board considers that in an optical device comprising features dependent upon wavelength it is appropriate to introduce this dependence in a generalised way, e.g. by definition of a grating period as a function of wavelength...”. Applied to the present case, this teaching implies that the fact that a tag having the concrete features of claim 1 could possibly be used with an external reader generating a signal with a frequency for which the relationship between the reflectors on the substrate and consequently the associated discriminating effect would not be provided, is not a valid criteria to justify a lack of clarity of the claimed subject-matter. As stressed in decision T 614/04, it is essential that “if a predetermined wavelength is selected, the remaining features can be adapted to provide the required function...”, which is the case for the SAW identification tag of claim 1: the knowledge of the frequency permits to determine, for a selected phase step, the allowable positions and accordingly the position of the encoding reflectors. [3.1] As the reasoning of the Board is essentially based on the findings of T 614/04, I had a look at this decision. It dealt with a rejection for lack of clarity concerning a reference to a predetermined wavelength:
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T 564/07 – Extrinsic Illumination
K’s Law – The ebook
[…] Claim 1 defines an optical device comprising inter alia a pair of low and high refractive index layers disposed on a multilayer mirror and a diffraction grating in the high refractive index layer. From mathematical relations indicated in the claim it can be derived that for a predetermined wavelength λ and suitable materials having at this wavelength a low and high refractive index, respectively, the period of the diffraction grating Λ is determined in dependence on the wavelength λ and the effective refractive index ne of the high refractive index layer for the polarisation mode for which the reflectivity of the multilayer is lowered. This is due to a phase shift of π occurring when this polarisation mode is coupled by the grating in the high refractive index layer […]. Therefore this definition is sufficiently clear for the skilled person to understand for which invention protection is sought. [2.1] The ED agues in its decision that conditions in claim 1 to be fulfilled critically depend on the wavelength which is not part of the claimed subject-matter, and only apply to normal incidence. In this context reference was made to the Guidelines C-III, 4.[14]. Moreover, a claim for a device seeks protection for the device per se irrespective of the use to which it may be put. In the present case a device having the concrete features of claim 1 would fulfil the conditions in claim 1, when used with one wavelength, but not when used at other wavelengths. [2.2] The Board however finds this argument unconvincing. The wavelength in the mentioned conditions serves to define the claimed device in terms of functional features. If a certain wavelength is selected, the remaining features can be adapted to provide the required function, i.e. the materials of the layers and the grating period can be chosen, accordingly. Expressed the other way round, for a completed device the appropriate wavelength can be determined. Normal incidence is implicit, since equation (2) in claim 1 does not contain a factor depending on the angle. Point C-III 4.[14] of the Guidelines mentioned above is related to the “definition by reference to use or another entity”. It is stated there that a lack of clarity can result where a claim seeks to define an invention by reference to features relating to the entity’s use. This would particularly be the case where a claim not only defines the entity itself but also specifies its relationship to a second entity which is not part of the claimed entity. In contrast to that, the present claim specifies an optical device working at a predetermined wavelength, which is evidently not a use of the kind discussed in the Guidelines cited. [2.3] In the Board’s view the aspect of whether a device having the concrete features of claim 1 and used with a wavelength not fulfilling the mentioned conditions falls within the scope of claim 1, is irrelevant during the examination of a patent application. A 84 requires that the matter shall be defined, for which protection is sought. The Board considers that in an optical device comprising features dependent upon wavelength it is appropriate to introduce this dependence in a generalised way, e.g. by definition of a grating period as a function of wavelength as in the present case. Such a definition is evidently clear. It is in the present case also supported by the description, as is further required by A 84. Any other definition, e.g. based on absolute dimensions, would lead to undue restriction. [2.4] To read the whole decision, click here.
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T 1437/07 – Amendments Based On Disclosed Speculation
K’s Law – The e
T 1437/07 – Amendments Based On Disclosed Speculation 5 Mai 2010
[5] Furthermore, the [opponents] rely on decisions T 158/96, T 715/03 and T 630/04 and put forward the following argument: In the three above-cited decisions the boards have ruled that “speculative” or “hypothetical” disclosures do not anticipate claimed subject-matter. Therefore, in analogy to the rationale of these decisions, Example 9 of the patent cannot be used as a basis for an amendment because it is “speculative” or “hypothetical” as well, since it has not actually been carried out. [5.1] In decisions T 158/96 [3.6-3.6.2] and T 715/03 [2.2] the boards regarded it as “speculative” to infer from the information that a medicament is undergoing clinical phase evaluation that a particular therapeutic effect has been achieved. In T 630/04 [2.2.1-2.3] a statement in a document was denoted as a “hypothetical speculation” in the sense that it could not be interpreted as disclosing the claimed subject-matter. Thus, in the three cited decisions the teaching in a document was considered as “speculative” or “hypothetical” because it was not clearly and unambiguously derivable from the document. Hence, in contrast to what is implied by the [opponents’] argument, the boards’ reason for accepting novelty in the cited decisions was not that the subjectmatter in the prior art documents was not disclosed in an enabling manner. Consequently, decisions T 158/96, T 715/03 and T 630/04 do not help the [opponents’] case. [5.2] With regard to the [opponent’s] view that a “hypothetical” example cannot be used as the basis for an amendment, the board considers that the question of whether or not the disclosure in an application is sufficient to enable a skilled person to carry out the claimed invention is not relevant for the assessment of whether or not the requirements of A 123(2) are fulfilled. This is so, because the basis for amendments is the “content” of the application, i.e. what the skilled person would have clearly and unambiguously derived from the written disclosure as a whole. For the determination of the mere information content of a document it is not relevant whether or not what is disclosed has in fact been carried out. To read the whole decision, click here.
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T 1437/07 – When A Title Entitles
K’s Law – The ebook
T 1437/07 – When A Title Entitles 4 Mai 2010
[1] The issue is whether or not the skilled person would clearly and unambiguously derive the subject-matter of claim 1 from the disclosure in the parent application or the application as filed, in particular, from the heading of example 9. [2] The description of the parent application and the application as filed are identical. Thus, Example 9 (i.e. the first of two examples each entitled “Example 9”) of both applications reads: “ “Example 9 The Use of Botulinum toxin Types A-G in the Treatment of Muscle Spasms and Control of Pain Associated with Muscle Spasms in Smooth Muscle Disorders Such as Gastrointestinal Muscles [0061] A female, age 35, with spastic colitis, is treated with 1-100 units of Botulinum toxin divided into several areas, enema (1-5 units) delivered in the standard enema volume, titrate dose, starting with the lowest dose. Injection is to the rectum or lower colon or a low dose enema may be employed. Cramps and pain associated with spastic colon are relieved in 1-10 days.” [3] The [opponents] argue that a heading could not provide a basis for a claim because the purpose of a heading is merely to structure a text and therefore it could not be considered as “disclosing” anything. It is submitted that the special character of a heading becomes evident when considering that the title of a patent could be amended by the EPO without informing the applicant or patent proprietor. [3.1] However, the only titles that may be amended by the EPO are those printed on the cover sheet of a patent application (for the amendment procedures, see the Notice dated 13 March 1991 concerning the amendment of the title of the invention in European patent applications, OJ EPO 1991, 224; Guidelines, A-III, 7.2). This “title of the invention” is also part of the abstract (R 47(1)). Both the abstract and the title of the invention serve for information and documentation purposes. In decision T 246/86 [2.2], the board found that the abstract does not form part of the disclosure for the purposes of A 123(2). Consequently, the title of the invention may not be used as a basis for any amendments of a claim as well. [3.2] In contrast, amended claim 1 is based on a heading which is not on the cover sheet, but which is within the description of the application as filed. According to A 76(1) and A 123(2) the allowability of an amendment is judged on the “content” of the application. The term “content” relates to the parts of a EP application which determine the disclosure of the invention, namely the description, claims and drawings (Case Law of the Boards of Appeal, 5th edition 2006, III.A.1.1, first paragraph). Thus, headings that are situated within any of these parts form part of the disclosure content of an application and therefore amendments may be based on them. [4] The [opponents] further maintain that, even if the heading of Example 9 was regarded as a “disclosure”, the skilled person would have considered it to be limited to the content of the specific disclosure which follows. [4.1] However, the disclosure content of a document is to be determined on the basis of the document as a whole. In the present case, in the paragraph bridging pages 4 and 5 the invention is described in general terms: “The present invention provides a method for relieving pain, associated with muscle contractions, [...], and a method for treating smooth muscle disorders, including, but not limited to, spasms in the sphincter of ...”. On page 9, lines 18 to 19 it is stated that the invention “will now be illustrated by reference to the following nonlimiting examples”. In the board’s view, these passages convey to the skilled person that the invention is not limited to the specific examples. This is also what the skilled person would derive from the Examples part of the description. Each of the twelve examples has a title disclosing in a "claim-like" manner a particular concept of use which is followed by a specific disclosure which illustrates it.
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T 1437/07 – When A Title Entitles
K’s Law – The ebook
Not much to be said, except that this is the first time that I realize that the title of an application is part of its abstract. You never stop learning. We shall come back on this decision tomorrow. To read the whole decision, click here.
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T 512/07 – Deadly Decibels
K’s Law – The ebook
T 512/07 – Deadly Decibels 3 Mai 2010
The applicant filed an appeal against the decision of the examining division (ED) refusing a European patent application because the invention was not disclosed in a manner sufficiently clear and complete for it to be carried out by a skilled person (A 83 in combination with R 27(1)(e) EPC 1973). [3] During the appeal proceedings, the appellant has extensively amended the application documents. Objections under A 83 may under some circumstances be overcome by amending the claims, since thereby the “invention” referred to in A 83 may be so changed that it no longer depends on the insufficiently disclosed aspects of the application for its realisation. However such objections cannot be overcome by amendment of the description and drawings, since the amendment would then add subject-matter to the application as filed. In general, the presently claimed subject-matter has to be examined for compliance with A 83 on the basis of the application documents as originally filed. In the present case the objection raised by the examining division concerned the disclosure of how to determine the powers of the ACK and NACK signals. This determination remains essential to carrying out the invention as defined in the independent claim of each of the present main and auxiliary requests.
Fig. 1 of the application 3024 | 3398
T 512/07 – Deadly Decibels
K’s Law – The ebook
[4] The appellant essentially argued that in original figures 1 and 2 the y-axis pointing upwardly from 0(DTX) showed the power level on a linear scale for the transmission power to be used for ACK signals. Similarly, the yaxis pointing downwardly from 0(DTX) showed the increasing power level on a linear scale for the transmission power to be used for NACK signals. The transmission power of the ACK and NACK signals was of opposite polarity. In the introductory portion of the specification it was explained with regard to figure 1 that the background art receiver utilized one bit to transmit the response signals […]. In general the term “one bit signal” […] was used to refer to the digital signal which could have the logical value “0” or “1”. Thus, ACK could be represented as “1” (or “0”) and NACK could be presented as “0” (or “1”). Further, the first paragraph on page 3 indicated that the ACK/NACK signals were transmitted as “+1” or “-1”, referring to the analogue form. In contrast, the first paragraph on page 16 of the description as filed was argued to be related with the logical or digital value of the acknowledgment bit that did not refer to the analogue or physical form […]. [5] However, the board finds these arguments neither clear nor convincing and agrees with the reasoning of the appealed decision that the application considered as a whole does not describe in detail at least one way of carrying out the invention claimed, as required by R 27(1)(e), and does not disclose the invention sufficiently clearly and completely for it to be carried out by a skilled person, as required by A 83. In particular, the teaching of figures 1 and 2 as originally filed, even if interpreted in the light of the corresponding parts of the description […], does not allow a skilled person to carry out the invention, for the following reasons. [5.1] The y-axis of original figures 1 and 2 shows the power level in a logarithmic decibel (dB) scale […] according to which a power level P=0 equals minus infinity. According to the original description […] the actual DTXsignal (Discontinuous Transmission, i.e. no response) occurrence is “to occur at 0 power level”. On a logarithmic scale, the reference “0(DTX)” would therefore have to be indicated at minus infinity on the y-axis. This, however, is not the case. “0(DTX)” is shown somewhere in the middle of the y-axis, which rather leads the skilled reader to the interpretation that DTX denotes a transmission signal of zero power on a linear scale. This, however, causes the problem that the power level for a NACK-signal, which according to original figures 1 and 2 is lower than the DTX level, would have to be negative, which is not technically possible since power is always greater than or equal to zero. There is no indication in the application documents as filed that the power levels for ACK signals and for NACK signals shown in figures 1 and 2 are mirrored at 0(DTX) forming a lower and an upper graph with a common xaxis as argued by the appellant. The skilled reader would at least expect a hint in the description or in the drawings for such an unusual interpretation which, however, is not found. The board agrees with the argument presented in […] the appealed decision that the decision regions for ACK and NACK signals, indicated on the right hand side of the graph, suggest that there is only one graph and only one decision region threshold applying to all (logarithmic) power levels from minus infinity to plus infinity. […] [6] The appellant pointed to the corresponding granted US patent. As the appellant conceded the grant of a patent in the USA is not binding for the EPO granting procedure. In addition, the parallel US patent specification is not identical to the European application, in particular figures 1 and 2 are different with regard to the logarithmic scale, so that the US patent is based on a different disclosure.
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T 512/07 – Deadly Decibels
K’s Law – The ebook
Fig. 1 of the U.S. application The requirements of A 83 are not fulfilled if the invention disclosed in the European Patent application can only be carried out with the knowledge of a family member. Thus, the appellant’s argument […] does not convince. […] [10] In the light of the above identified problems with the disclosure of the invention the board concludes that the requirements of A 83 and of R 27(1)(e) are not fulfilled for the main request. To read the whole decision, click here.
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T 1423/07 – Double Patenting And Internal Priority
K’s Law – The ebook
T 1423/07 – Double Patenting And Internal Priority 1 Mai 2010
The present decision deals with the refusal of an application on the ground of unallowable double patenting. I owe the knowledge of this decision – which is not yet available on the DG3 site – to the EPLaw Patent Blog. [2] In the present case, the double patenting arises from a European application (= contested application) which claims priority from an earlier European application which was granted (= document D1). The claims of the two documents are identical and all the Designated Contracting States of D1 are also designated in the contested application. [2.1] The examining division (ED) refused the application on the basis of the Guidelines. The relevant passage C-IV, 6.4 (June 2005) reads as follows: “The EPC does not deal explicitly with the case of co-pending European applications of the same effective date. However, it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention [emphasis added by the board]. It is permissible to allow an applicant to proceed with two applications having the same description where the claims are quite distinct in scope and directed to different inventions. However, in the rare case in which there are two or more European applications from the same applicant definitively designating the same State or States (by confirming the designation through payment of the relevant designation fees) and the claims of those applications have the same filing or priority date and relate to the same invention (the claims conflicting in the manner explained in VI, 9.1.6), the applicant should be told that he must either amend one or more of the applications in such a manner that they no longer claim the same invention, or choose which one of those applications he wishes to proceed to grant. Should two applications of the same effective date be received from two different applicants, each must be allowed to proceed as though the other did not exist.” The EPC does indeed not contain any explicit provision which would prohibit double patenting. By invoking an “accepted principle in most patent systems that two - patents cannot be granted to the same applicant for one invention”, the above passage of the Guidelines makes reference to A 125 as a basis for not allowing double patenting. Therefore what has to be evaluated is whether a European application can be refused for double patenting on the basis of A 125. [2.2] A 125 stipulates that “in the absence of procedural provisions in this Convention, the EPO shall take into account the principles of procedural law generally recognised in the Contracting States”. This means that in order to base the refusal of a European application on A 125, each of the following criteria must be met: (a) it must be a matter of procedural law; (b) the principles of general law invoked must be generally recognised in the Contracting States; (c) there must be an absence of procedural provisions in the EPC. Re (a): [2.2.1] In decision T 587/98, which concerns double patenting arising from a divisional application, the board concluded that A 125 was not applicable, as prohibition of conflicting claims would be a’ matter of substantive law rather than a matter of procedure (see [3.6] of the reasons). However, double patenting also comprises procedural aspects. Reference is made to the minutes of the Munich Diplomatic Conference of 1973, M/PR/I, point 665, page 62, which confirm the procedural aspects of double patenting. The relevant passage reads as follows:
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T 1423/07 – Double Patenting And Internal Priority
K’s Law – The ebook
“In connection with A 125, it was established at the request of the United Kingdom delegation that there was majority agreement in the Main Committee on the following: that it was a generally recognised principle of procedural law in the Contracting States that a person can be granted only one European patent for the same invention in respect of which there are several applications with the same date of filing.” The board concludes that refusal of a European application for double patenting comprises both procedural aspects as well as matters of substantial law so that A 125 is applicable. Re (b): [2.2.2] The evaluation of the principles of general law generally recognised in the Contracting States reveals that the majority of the Contracting States do not allow double patenting in a situation where there is both a national patent and a European patent designating the same Contracting State. Thus, section 73(2) of the UK Patents Act 1977 reads: “If it appears to the comptroller that a patent under this Act and a European patent (UK) have been granted for the same invention having the same priority date, and that the applications for the patents were filed by the same applicant or his successor in title, he shall give the proprietor of the patent under this Act an opportunity of making observations and of amending the specification of the patent, and if the proprietor fails to satisfy the comptroller that there are not two patents in respect of the same invention, or to amend the specification so as to prevent there being two patents in respect of the same invention, the comptroller shall revoke the patent.” In France, this situation is governed by Article L 614-13 of the Code de la Propriété intellectuelle: “Where a French patent covers an invention for which a European patent has been granted to the same inventor or to his successor in title with the same filing date or the same priority, the French patent shall cease to have effect at either the date on which the period during which opposition may be filed against the European patent expires without opposition having been filed or the date on which the opposition proceedings are closed and the European patent is maintained. However, where a French patent has been granted at a date later than either of the dates, as appropriate, laid down in the foregoing paragraph, such patent shall not take effect. The subsequent lapse or annulment of the European patent shall have no effect on the provisions of this Article.” Most Contracting States have provisions similar to the French law, i.e. the national patent ceases to have effect in case of double patenting with a European patent. These Contracting States include Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Estonia, Germany, Greece, Italy, Latvia, Liechtenstein, Luxembourg, Malta, Monaco, the Netherlands, Portugal, Romania, Slovakia, Slovenia, Spain, Switzerland and Turkey. Double patenting in this situation is also not allowed in Ireland where, as in the United Kingdom, the national patent is revoked in such a case, and in Macedonia as well as in Lithuania. In Austria, Denmark, Finland, Hungary, Iceland, Norway, Poland and Sweden, simultaneous protection by a national patent and a European patent is not excluded (see National law relating to the EPC, 14th ed., table X). In view of the fact that double patenting involving a national patent and a European patent is not possible in the great majority of the Contracting States (27 out of 35), it has to be concluded that this principle of law is generally recognised in the Contracting States. However, this exclusion of double patenting concerns a very specific situation in the post-grant procedure, i.e. a situation where, as mentioned above, a granted national patent and a granted European patent claim the same invention. It does not relate to double patenting in the pre-grant stage involving a patent already granted and a patent application going through the grant process. A European patent application can be refused under A 97(2) or, as in the present case, under A 97(1) EPC 1973 if it or the invention to which it relates does not meet the requirements of the EPC. If therefore the application is refused for double patenting, the absence of subject-matter already claimed in a granted European patent by the same applicant must be a requirement that the European application must meet in order to be granted. The refusal of a European patent application based on A 125 therefore requires the existence of principles of law generally recognised in the Contracting States which refer to the pre-grant procedure and which allow the refusal of a national patent application for double-patenting. Such provisions exist in Ireland and in the United Kingdom: 3028 | 3398
T 1423/07 – Double Patenting And Internal Priority
K’s Law – The ebook
Section 31(5) of the Irish Patents Act 1992 reads: “Where two or more patent applications for the same invention having the sane date of filing or the same date of priority are filed by the same applicant or his successor in title, the Controller may on that ground refuse to grant a patent in respect of more than one of the applications.” Section 18(5) of the UK Patents Act 1977 reads: “Where two or more applications for a patent for the same invention having the same priority date are filed by the same applicant or his successor in title, the comptroller may on that ground refuse to grant a patent in pursuance of more than one of the applications.” However, no further patent convention in the Contracting States could be found in which the refusal of a patent application for double patenting is provided for. The German patent law does not contain such a provision either. However, case law does exist in Germany for not granting patent applications in case of double patenting on the ground that there is no legitimate interest (see BPatGE 21, 223). Thus, the headnote in case BPatGE 21, 223 reads: “There is no legitimate interest in granting several patents arising from applications from one and the same applicant with identical contents and priority dates.” [translation by the board] [2.2.3] To summarise: There is a general principle of law generally recognised in the Contracting States for not allowing double patenting arising from a granted national patent and a granted European patent, but this does not provide a basis for refusing a European application under A 97(2) or Article 97(1) EPC 1973 at the pre-grant stage. In view of the fact that only two national patent conventions of the Contracting States and the case law of a third Contracting State provide a basis for refusing a patent application for double patenting, there is no principle of law generally recognised in the Contracting States for refusing a European patent application on the ground of double patenting. [2.2.4] In the present case, where double patenting is caused by internal priority, the number of Contracting States providing a basis for refusing an application for double patenting is further reduced to two, as the German case law, which denies a legitimate interest, does not apply for the following reasons: [2.2.4.1] A 63(1) stipulates that “the term of the European patent shall be 20 years from the date of filing of the application”. The relevant date for calculating the 20-year term is not the priority date but the filing date (see in this context also Article 4bis(5) of the Paris Convention). This means that the refusal of the contested application deprives the appellant of almost one year of protection, since the starting date for calculating the 20-year term is shifted from 21 July 2003 (filing date of the contested application) to 25 July 2002 (priority date of the contested application = filing date of D1). Therefore, the appellant has a legitimate interest in the grant of the contested application. In this context it is noted that the presence of two identical sets of claims in a granted patent and in a patent application of the same applicant is not a sufficient reason for denying a legitimate interest. All the rights arising from these documents, including the period of patent protection, have to be taken into consideration. As a consequence, the German case law is not relevant in the present case. [2.2.4.2] According to the German patent law, an earlier application from which a subsequent application claims priority is deemed withdrawn with the declaration of priority according to § 40(5) . This means that double patenting arising from an internal priority cannot occur according to German law, as the earlier application cannot proceed to grant. It is important to note that it is the earlier and not the subsequent application claiming priority from the earlier application that cannot proceed to grant. In this way, the legitimate interest of the applicant in terms of the period of protection is guaranteed. [2.2.5] As a consequence, irrespective of whether or not the EPC lacks procedural provisions in connection with double patenting […], A 125 does not provide a basis for refusing a European application on the ground of double patenting. A 60 [2.3.1] In decision T 307/03 […], it was decided that A 60 provided a basis for refusing a European application for double patenting. A 60 stated that “The right to a European patent shall belong to the inventor or his successor in title”, from which it could be deduced that under the EPC the principle of double patenting applied, as the inventor or his successor in title had a right to the grant of one and only one patent from the EPO for a particular invention as defined in a particular claim. Once a patent had been granted, this right to a patent had been exhausted and the EPO was entitled to refuse to grant a further patent to the inventor or his successor in 3029 | 3398
T 1423/07 – Double Patenting And Internal Priority
K’s Law – The ebook
title for the subject-matter for which he had already been granted a patent (see [2.1] of the reasons). The fact that the EPC did not contain any specific provisions relating to double patenting was not decisive, as the legislator could not be expected to have made provisions to regulate what would on grounds of economics alone be a very rare occurrence. The board could recognise no legitimate interest in anyone having two or more identical patents with the same claims and the same priority dates (see [2.3] of the reasons). A 60 is integrated into Chapter II of Part II of the EPC, which concerns “Persons entitled to apply for and obtain a European patent - Mention of the inventor”, and it is the purpose of A 60 to define to whom the right to a European patent belongs. This board cannot see how A 60 could serve as a basis for refusing a European application under A 97(2) for double patenting, it cannot agree that A 60 can be interpreted such that the inventor or his successor in title has a right to the grant of one and only one patent from the EPO for a particular invention, with the consequence that claims comprising subject-matter included in the claims of an already granted patent of the same applicant are refused no matter whether or not the applicant has a legitimate interest in the grant of the subsequent application. Contrary to the reasoning applied in decision T 307/03, this board is convinced that the fact that the EPC does not contain any specific provisions relating to double patenting is decisive: in the absence of such provisions, a refusal of a European patent application for double patenting is not possible irrespective of whether or not double patenting is a rare occurrence. [2.3.3] It could be argued that in such a case the rights to the patent granted on the basis of the earlier application could be given up. However, this argument is futile, as the EPC does not provide a basis therefor: the priority right of the EPC does not include a provision corresponding to § 40(5) of the German law, which would prohibit the grant of the earlier application and thus prevent double patenting in a case of internal priority in the first place (see [2.2.4.2] above). Furthermore, there are no means of forcing an applicant to abandon an already granted patent as a prerequisite for granting the subsequent application either. [2.3.4] As a consequence, the contested application cannot be refused under A 60 for double patenting. [2.4] Double patenting as understood in this decision requires that the parties of the conflicting patents or patent applications are identical. In the present case, the patentee of D1 is Boehringer Ingelheim Pharma GmbH (BIP). BIP also filed the contested application as international application WO 2004/011006 on 21 July 2003, which entered the European phase as EP 03 771 064.7 on 12 January 2005. In the Declaration of Assignment dated 27 April 2007, BIP assigned, transferred and set over the entire right, title and interest in and to the abovementioned protective rights, including priority rights of EP 03 771 064.7 to Boehringer Ingelheim Vetmedica GmbH. The transfer was registered by the EPO on 4 May 2007. No transfer was effected in connection with D1. In view of the above transfer, the patentee of D1 and the applicant of the contested application are no longer identical. As a consequence, the present case resembles the situation described in the last sentence of the paragraph of the Guidelines mentioned above, which explains that where two applications of the same effective date are received from two different applicants, each must be allowed to proceed as though the other did not exist. Formally, therefore, double patenting as defined above no longer exists. The board is aware that such a unilateral transfer of rights might in certain Contracting States not be allowable under all circumstances. Thus, Article L 614-14 of the French Code de la Propriété intellectuelle reads: “Where a French patent application or a French patent and a European patent application or a European patent have the same filing or priority date, cover the same invention and belong to the same inventor or to his successor in title, those parts which are common may not be transferred, pledged, mortgaged or their exploitation rights assigned independently of each other on pain of nullity.” However, this is a question of the subsequent national phases, for which the board is not competent. As a consequence, the application cannot be refused for double patenting, as the parties of the conflicting patent documents are not identical. Decisions G 1/05 and G 1/06 [3] According to Article 21 RPBA a referral to the Enlarged Board of Appeal (EBA) shall be made if a board considers it necessary to deviate from an interpretation or explanation of the convention contained in an earlier opinion or decision of the Enlarged Board of Appeal. In point [13.4] of decisions G 1/05 and G 1/06, the EBA accepts that the principle of prohibition of double patenting exists on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter if he already possesses one granted patent therefor. However, point [13.4] of said decisions concerns double patenting in connection with divisional applications. With divisional applications the filing date and, as a consequence, the 20-year term according to A 63(1) are the same as with the earlier application(s) on which the divisional application(s) is/are based. Therefore, the present case differs from this situation in that it concerns double patenting arising from 3030 | 3398
T 1423/07 – Double Patenting And Internal Priority
K’s Law – The ebook
internal priority where the conflicting documents have different filing dates. As a consequence, the board concludes that the present decision is not in contradiction with decisions G 1/05 and G 1/06, so that a referral to the EBA according to Article 112(1) (a) is not necessary. Reimbursement [4] The ED, being bound by the instructions given by the Guidelines, acted correctly in refusing the present application. Nevertheless, the application was refused under A 97(1) EPC 1973 for non-compliance with a nonexistent requirement of the EPC. The refusal therefore infringed the applicant’s fundamental right that there should be a legal basis for any requirement relied on to invoke A 97(1) EPC 1973. Since the appellant was obliged to file the present appeal to overcome this refusal, the board judges it to be equitable that the appeal fee should be reimbursed. This is a major decision; it would definitely deserve a publication in the OJ. I am particularly happy to see that the A 60 argument is refuted. Basing the prohibition of double patenting on the wording of A 60 is seriously questionable from the exegetical point of view. To read the whole decision, click here.
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T 2017/07 – Extending Limitation
K’s Law – The ebook
T 2017/07 – Extending Limitation 30 Apr 2010
This decision presents an intriguing case: the Board found that what may appear to be a limitation of the claim under consideration in reality lead to an extension of the scope or protection conferred by the claim. The granted patent had the following claim 1: 1. A hair dye composition which comprises (A) an acid dye and (B) an alkylene carbonate having 3-5 carbon atoms in total, said composition exhibiting a pH of 2-6, and having a buffer capacity of 0.007-0.5 gram equivalent/L, wherein the content of the alkylene carbonate having 3-5 carbon atoms in total is 0.5-50 % by weight and wherein the composition contains neither benzyloxyethanol nor benzyl alcohol. The Opposition Division maintained the patent in amended form. New Claim 1 read: 1. A hair dye composition which comprises (A) an acid dye and (B) alkylene carbonate having 3-5 carbon atoms, said composition exhibiting a pH of 2-6, and having a buffer capacity of 0.007-0.5 gram equivalent/L, wherein the content of the alkylene carbonate is 0.5-50 % by weight, the alkylene carbonate being propylene carbonate, and wherein the composition contains neither benzyloxyethanol nor benzyl alcohol. Here is what the Board had to say: [2.2.1] A composition which is specified in a claim to comprise a component in an amount which is defined by a numerical range of values is characterized by the feature which requires the presence of the component within that range, as well as by the implicit proviso which excludes the presence of that component in an amount outside of that range. Consequently, the amount of that component present in the composition must not exceed the upper limit of the numerical range indicated. Ignoring that proviso defining the composition would deprive the indication of an upper limit of sense. The above proviso does not have an impact on the scope of the subject-matter claimed as long as the amount required by the numerical range is present in the composition. [2.2.2] An amendment restricting the breadth of that component, for instance by narrowing down a generic class or a list of chemical compounds defining that component, has the consequence of no longer requiring the presence within that numerical range of those chemical compounds no longer encompassed by the restricted definition of that component and, thus, of limiting the scope of this implicit proviso. [2.2.3] A composition which is defined as comprising the components indicated in the claim is open to the presence of any further components, unless otherwise specified. Thus, in a claim directed to an openly defined composition, the restriction of the breadth of a component present therein may have the effect of broadening the scope of protection of that claim, with the consequence that in opposition/appeal proceedings such amended claim may extend the protection conferred by the granted patent (A 123(3)). [2.3.1] Claim 1 as granted is directed to a hair dye composition requiring inter alia a content of from 0.5 to 50 % by weight of alkylene carbonate having 3-5 carbon atoms. Thus, the content of the alkylene carbonate having 3-5 carbon atoms in the composition according to the claim as granted must not exceed 50% by weight, which finding has never been contested by the [patent proprietor]. Hence, a composition according to claim 1 as granted is subject to the implicit proviso that it contains at most 50% by weight of ethylene, propylene and/or butylene carbonate, i.e. an alkylene carbonate having form 3 to 5 carbon atoms. [2.4] Claim 1 as amended is directed to a hair dye composition “wherein the content of the alkylene carbonate is 0.5-50% by weight, the alkylene carbonate being propylene carbonate”. The fresh feature in that claim now requires that the content of propylene carbonate to be present in the composition should be in the range of 0.5 to 50% by weight, and no longer defines the content of alkylene carbonate having 3 to 5 carbon atoms in the claimed composition. Thus, claim 1 as amended no longer requires that the composition contains at most 50% by 3032 | 3398
T 2017/07 – Extending Limitation
K’s Law – The ebook
weight of alkylene carbonate having 3 to 5 carbon atoms, since the definition of the composition in claim 1 is “open” due to the characterization by the term “comprising”. Therefore, the composition of claim 1 as amended may comprise in addition to an acid dye and propylene carbonate components including other alkylene carbonates having 3 to 5 carbon atoms, i.e. ethylene carbonate and/or butylene carbonate, in any amount with the consequence that the granted upper limit of 50% by weight of alkylene carbonate having 3 to 5 carbon atoms may be exceeded. [2.5] Thus, claim 1 as amended encompasses compositions having a content of more than 50% by weight of alkylene carbonate having 3 to 5 carbon atoms, which embodiment was excluded from the compositions according to granted claim 1. [2.6] The [patent proprietor] argued that the composition of claim 1 excluded the presence of any other alkylene carbonate having 3 to 5 carbon atoms, i.e. ethylene and butylene carbonate, on account of two independent definitions, which required on the one hand that the content of alkylene carbonate be in the range of 0.5 to 50% by weight and on the other that the alkylene carbonate be, at the same time, propylene carbonate. However, by arguing so, the [patent proprietor] gives two different meanings to the same term, which is the alkylene carbonate having 3 to 5 carbon atoms. When this feature defines its chemical structure, the alkylene carbonate, in the view of the [patent proprietor] takes the exclusive meaning of propylene carbonate, but in the definition of its content in the composition, the same term covers any alkylene carbonate having 3 to 5 carbon atoms, not exclusively propylene carbonate. Giving two different readings for the same term in claim 1, just as they match the [patent proprietor’s] needs, is arbitrary. Such an interpretation of the claim goes against any sensible reading, since the meaning of a term in a claim may not be changed depending on the reader’s whim, and thus cannot be accepted by the Board. [2.7] Nor can the finding that claim 1 as amended encompasses compositions having a content of more than 50% by weight of alkylene carbonate having 3 to 5 carbon atoms be rebutted on the basis of the description adapted to the claims filed on 19 October 2007, which would allegedly prohibit any alkylene carbonate having 3 to 5 carbon atoms other than propylene carbonate be present in the claimed composition. The [patent proprietor’s] interpretation of claim 1 in the light of the description adapted to the claims is inconsistent with the fact that the very same adapted description still comprise the compositions of examples 2 and 5 as falling within the invention, which compositions comprise, in addition to propylene carbonate, also ethylene carbonate, thus disclosing that the compositions claimed may comprise alkylene carbonates other than propylene carbonate. Moreover, paragraph [0006] of the description, which addresses the hair dye composition comprising a component (B) being an alkylene carbonate having 3 to 5 carbon atoms in total, wherein the content of the alkylene carbonate having 3 to 5 carbon atoms in total is 0.5 to 50% by weight, has been modified to further stipulate that “the alkylene carbonate is propylene carbonate” in order to be in line with claim 1 of the main request; and particularly paragraph [0010] has been amended to read “the component (B) used in the present invention is propylene carbonate.” These two adapted paragraphs make plain that the composition as amended comprises 0.5 to 50% by weight of propylene carbonate as component (B). Contrary to the [patent proprietor’s] allegation, they do not stipulate that the composition does not contain alkylene carbonates other than propylene carbonate. Irrespective of the fact that the adapted description does not support the [patent proprietor’s] allegation, the Board observes furthermore that an interpretation of claim 1 in the light of the description would amount to a reference to A 69(1), the first sentence thereof, however, stipulating that the extent of protection conferred by a European patent shall be determined by the terms of the claims. While it is true that A 69(1) second sentence states that the description and drawings shall be used to interpret the claims, this does not make it legitimate to read into the claim features appearing only in the description and then relying on such features to provide additional requirements. This would not be to interpret claims but to rewrite them, thereby depriving the claims of their intended function (see T 881/01 [2.1]; T 1208/97 [4]). [2.8] Furthermore the [patent proprietor’s] interpretation that propylene carbonate is the sole alkylene carbonate having three to five carbon atoms to be present in the composition has no basis in the application as filed. Hence, the [patent proprietor’s] argument that no alkylene carbonate other than propylene carbonate is present in the claimed composition is not based on a sensible interpretation of claim 1 and, thus, fails for that reason as well. […]
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T 2017/07 – Extending Limitation
K’s Law – The ebook
[2.9] Hence, the Board comes to the conclusion that the presence of ethylene and/or butylene carbonate is not excluded from the composition of claim 1 of the main request. [2.10] Accordingly, the amendment carried out in claim 1 which results in including compositions having a content of more than 50% of alkylene carbonate having 3 to 5 carbon atoms has the effect to broaden the scope of protection of that claim vis-à-vis to that of claim 1 as granted with the consequence that claim 1 of the main request has been amended in such a way as to extend the protection conferred by the granted patent (A 123(3)). Hence, this request must be rejected. In an earlier post I have discussed the remedies against an extension of the scope of the patent in limitation proceedings. An anonymous reader wondered how a limitation could possibly extend the scope of protection. If the Board has it right, the present case provides an example of such a limitation. If I had been an Examiner dealing with a request for limitation based on the amendment discussed here, I guess I would not have realized that the amendment violates A 123(3). NB: To my best knowledge, EQETools has been the first to report this decision. To read the whole decision, click here.
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T 1042/06 – Common Denominator of 54, 87, and 123
K’s Law – The ebook
T 1042/06 – Common Denominator of 54, 87, and 123 29 Apr 2010
The present decision is also interesting because it shows the analogies and dissimilarities between the concepts of novelty, priority and inadmissible extension. The EPO case law uses the same criterion (“clearly and unambiguously”) for these concepts, but there are subtle differences. [3.2.3] The board agrees with the respondent that the criterion which has to be applied for the assessment of novelty is in principle the same which has to be applied when deciding on the allowability of amendments within the meaning of A 123(2), namely as to whether or not the claimed subject-matter is clearly and unambiguously derivable from the prior art and the application as filed, respectively. In the present case, however, the application of this criterion leads to different results regarding the assessment of the amendments of the claims and novelty. As regards the amendments in Claim 1 of the main request, the board has come to the conclusion that the combination of features in amended Claim 1 of the main request is clearly and unambiguously derivable from the application as filed, because that combination is hinted at by the general presentation of the individual features in the application as filed and by Example 6 in the application as filed. By contrast, neither G2 nor G19 provide such pointers to the claimed subject-matter. Thus, the respondent’s allegation that in the present case a positive finding on the allowability of the amendments to Claim 1 of the main request would entail a finding of lack of novelty over G2 and G19 cannot be accepted. [3.2.4] The respondent alleged that the subject-matter of Claim 1 of the main request also lacked novelty over G22 (filed on 10 June 1993 and claiming priority from two Japanese applications of 10 June 1992 and 12 October 1992), since the subject-matter of Claim 1 of the main request was not entitled to the claimed priority date of 5 March 1992. The priority of the initial Japanese application was incorrectly claimed for the reason that the combination of features as set out in Claim 1 of the main request could not be directly and unambiguously found in the priority document. However, the features of Claim 1 of the main request are presented in the priority document in a similar way as in the application as filed and can be found in Claim 1 of the first priority document (basically identical to Claim 1 as filed), paragraph [0020] (upper limit for the molecular weight of the cross-linking agent), Claim 4 (0.03 to 0.2 mol% of cross-linking agent), Claim 9 (heat treatment in the presence of a second cross-linking agent), paragraph [0013] (definition of the water-soluble monoethylenically unsaturated monomer), paragraph [0029] (polymerization in aqueous solution), and paragraph [0039] (mixing of the second cross-linking agent with the polymer and reaction). As regards the basis for the combination of these features, the same argumentation given in connection with A 123(2) in point [3.1.2], above, equally applies to priority except that in the priority document Example 5 ((which corresponds to Example 6 of the application as filed) supports the claimed combination of features. It follows from the above that the subject-matter of Claim 1 of the main request can be clearly and unambiguously derived from the priority document, i.e. there is a full disclosure of “the same invention” in the priority document. Therefore, the priority claim is correct. Since the claim to priority is valid, there can be no lack of novelty in view of the later document G22 whose earliest priority date (10 June 1992) is later than the priority date of the patent in suit (5 March 1992). To sum up, one may say that A 87 and A 123 (and A 76, for that matter) function in the very same way. A priority is valid if the subject-matter of the claim claiming priority can be derived directly and unambiguously from the priority document. If we consider, for the sake of the argument, that the first application (the priority of which is claimed) is an EP application, for the priority claim to be valid for a claim of the second application (claiming the priority), it must in principle be possible to obtain this claim by amending the claims of the first application
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T 1042/06 – Common Denominator of 54, 87, and 123
K’s Law – The ebook
without infringing A 123(2). Things are a little bit different for novelty. A claim lacks novelty if its subject-matter can be derived directly and unambiguously from a document of the prior art. To read the whole decision, click here.
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T 1042/06 – He Who Won The War May Still Claim Lost Battles
K’s Law – The e
T 1042/06 – He Who Won The War May Still Claim Lost Battles 28 Apr 2010
[2.1] The [patent proprietor] has argued in its written submissions, that objections under A 123, A 84 and A 54 could no longer be raised against the claims of the main request, since the opposition division (OD) had already acknowledged that these claims met the requirements of these articles and the opponent had not appealed against this decision. Although this argument was no longer pursued at the oral proceedings before the board, it appears appropriate to point out at this juncture that the OD has revoked the patent in suit, and that the [opponent] was not adversely affected by this decision within the meaning of A 107, first sentence, because that decision was in conformity with the respondent’s request for revocation of the patent in its entirety. Furthermore, as pointed out in G 9/92 [8 and 11, second §]: “A non-appealing party as a respondent has the opportunity to make what it considers to be appropriate and necessary submissions in the appeal proceedings to defend the result obtained before the first instance.” Thus, when a decision revoking a patent pursuant to A 101(2) has been taken, it is open to a respondent to reargue matters which had already been on issue before the OD. If a respondent wishes to contend in the appeal proceedings that a particular issue in the decision under appeal was wrongly assessed, even though the overall result of said decision was in its favour, there is nothing in the EPC which could prevent the respondent from doing so (in this context see e.g. T 169/93 [2] and T 542/96 [2]). Hence, the scope of the present appeal proceedings embraces the objections, in particular with regard to A 123 and A 54, raised by the [opponent] against the claims of the main request. To read the whole decision, click here.
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T 877/06 – Differences Avert Double Patenting Issue
K’s Law – The ebook
T 877/06 – Differences Avert Double Patenting Issue 27 Apr 2010
[5.1] The objection of possible double patenting was raised by the respondent with respect to the auxiliary requests submitted by the appellant with letter of 30 October 2009. In this regard, the respondent drew in particular attention to divisional application EP 1 795 246, in the name of the appellant. [5.2] Granted claim 1 of said European patent EP-B-1 795 246, which stems from a divisional application of the application underlying the patent in suit, is directed to an air cleaner including a housing having a housing compartment and a removable cover and further comprising a removable and replaceable filter element arrangement positioned in the air cleaner housing comprising a coiled media construction, a seal member and a frame arranged around one of the first and second ends of the coiled media construction; the frame having a depending lip, further including a projection having a tip portion projecting axially from one of the first and second flow faces, and including a step providing a transition area between the cross-sectional width of the depending lip and the smaller cross-sectional width of the tip portion; the tip portion of the frame having an outer circumferential surface; the tip portion of the frame being an annular sealing support for the seal member; the seal member being positioned on, and being supported by, the tip portion of the frame (highlighting by the board). The subject matter claimed in claim 1 of said European patent EP-B-1 795 246 thus differs from the subject matter in accordance with claim 1 of the main request of the patent under appeal firstly in that it relates to an air cleaner, and not to a filter element arrangement; and secondly, as regards the filter arrangement which forms part of the said air cleaner, at least by the claim features highlighted above. [5.3] In decision T 1391/07 [2.6-7], the board saw no basis for extending the practice of prohibition of “double patenting” to cover claims not defining the same subject-matter but conferring a scope of protection overlapping with each other only partially in the sense that some, but not all of the embodiments notionally encompassed by one of the claims would also be encompassed by the other one of the claims. The lack of legitimate interest of an applicant in obtaining two patents for the same subject-matter - as invoked by the Enlarged Board of Appeal in decisions G 1/05 and G 1/06 - could not be invoked when the scopes of protection conferred by the respective subject-matters overlap only partially with each other as there was no manifest objective reason to deny the legitimate interest of the applicant in obtaining a protection different from - although partially overlapping with that of the parent patent already granted. Accordingly, the board concluded that the mere fact that the scope of protection notionally conferred by the claim in suit would partially overlap with that of the granted parent patent did not prejudice the grant of a patent. [5.4] In view of the substantial differences identified under point [5.2] above resulting in, if at all, only a partial overlap in the respective scopes of protection conferred by EP-B-1 795 246 and the opposed patent, the board concludes that no issue of double patenting arises with respect to the claims of the main request. I for one am happy to see that T 307/03 (where the Board held that a double patenting objection can be raised also where there is only an overlap of the subject matter claimed in distinct applications) appears to be more and more isolated. Some more decisions of the present kind, and we will be able to say that T 307/03 was a “one off” decision. To read the whole decision, click here.
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T 877/06 – The Limits Of Reformulation
K’s Law – The ebook
T 877/06 – The Limits Of Reformulation 26 Apr 2010
[4] Inventive step The patent in suit relates to a filter arrangement for use in an air cleaner housing, comprising a coiled media construction and a sealing system. [4.1] Closest prior art The closest prior art is normally a prior art document disclosing subject-matter conceived for the same purpose or aiming at the same objective as the claimed invention and having the most relevant technical features in common. Document E1 reveals all the features of claim 1 in accordance with the main request except for claim item (b)(i). The parties have identified E1 as the document representing the closest prior art. The board concurs in choosing document E1 as the starting point for assessing inventive step. [4.2] Technical problem [4.2.1] The objective of the patent in suit is the removal of particulate material from an air flow upstream of e.g. an engine, a turbine or a furnace. [4.2.2] The appellant defined the problem underlying the opposed patent as proposing means and methods of filtering air which allowed for an optimal volume of fluted media per available housing volume, protected said media from external forces and allowed the designer of air cleaners more freedom of design […]. The respondent agreed with this formulation of the technical problem. [4.2.3] Document E1 is concerned with the technical problem of avoiding the bulging of the filter media which is caused by the pressure applied to its periphery by the housing and the seal upon fastening of the cover […]. Compared with this closest prior art, the technical problem of protecting the filter media from external forces, although not explicitly stated in the opposed patent, becomes immediately apparent. Said part of the technical problem is deducible from the application as filed taking into account the features described in the figures and the effects and advantages clearly associated with them. The reformulation of the technical problem is therefore allowed, in line with the principle laid down in decision T 818/93 [5.2, 4th §]. The optimization of the volume of fluted media per available housing volume is, in the board’s view, a technical problem which the skilled person always takes into consideration because of the space restrictions prevailing in the places where such filter arrangements are used (generally engines of vehicles, buses, trucks, boats etc […]). Therefore, said part of the technical problem is taken into account, even if it is not explicitly mentioned as such in the application as filed. [4.2.4] However, the board observes that the part of the above defined technical problem relating to the “freedom of design” is not addressed in the application documents as filed. In this respect, it was stated in T 13/84 [11] that a reformulation of the technical problem was not precluded by A 123(2) if the problem could be deduced by the skilled person from the application documents as filed when considered in the light of the closest prior art. It follows that reformulation of a problem is prohibited if the problem so modified is neither disclosed in the originally filed application itself nor deducible when the application is considered in the light of the closest prior art. Hence, having regard to the fact that E1 (or, for that matter E3) does not address such a design problem either, the board concludes that the part of the technical problem relating to the “freedom of design” aspect cannot be deduced from a comparison of the opposed patent with the closest prior art. Said part of the technical problem is, therefore, not taken into consideration for the assessment of inventive step. [4.2.5] Therefore, the board concludes that the problem underlying the patent in suit in the light of document E1 is to protect the filter media from external forces and to optimize the volume of fluted media per available housing volume. To read the whole decision, click here. 3039 | 3398
T 229/07 – Bits’n Pieces
K’s Law – The ebook
T 229/07 – Bits’n Pieces 24 Apr 2010
From time to time I dedicate a post to a decision which as such is not major in any way but which contains several interesting bits and pieces. The present decision has something to teach us on an unexpected effect of how documents are cited in an application: [3.1] Document D6 was first cited during the oral proceedings (OPs) before the opposition division (OD) and was not admitted into the proceedings. [3.2] The Appellant was of the opinion that this document already formed part of the proceedings as it is cited in the patent in suit (see T 541/98). In T 541/98 [2.1], a document - a reference to which was inserted into the description on request of the examining division and which was considered to represent the closest prior art was deemed to form part of the opposition proceedings. In contrast to this, document D6 is cited as one of seven documents in the application as filed in a way that it is not clear whether it might be the closest prior art. The present situation being different from that of [T 541/98], the Board sees no reason to assume that document D6 already formed part of the proceedings. [3.3] Hence, it was within the discretion of the Board to decide whether or not to admit document D6 to the proceedings (see Article 12(4) RPBA). One of the possible criteria which might be taken into account when exercising this discretion is the relevance of the document. The patent in suit relates “to compositions useful as surgical hand preparations and antimicrobial hand lotions.” […] Whereas neither of the documents D1 to D5 share this objective with the patent in suit, document D6 does […]. Hence, document D6 is more relevant than the documents previously cited. Therefore, the Board admitted it into the proceedings. There is also an interesting statement on clarity: The requirement of clarity of the claims cannot be subsumed under any ground for opposition (see Article 100 EPC). In opposition appeal proceedings a lack of clarity thus may only prejudice the maintenance of the patent if it is caused by amendments with respect to the claims as granted, namely if such amendments render the claims less clear. [5.1] The claims as granted specify the method for measuring the viscosity only by a temperature of 23°C. The present claims give further details as to the type of viscometer to be used and to the method of measurement. The Appellant criticised that these details were not clear [because the viscosity could not be measured in a reliable and unambiguous way according to the method now incorporated into the claims]. Whether this is true or not is not relevant since they further specify the method of measurement, thus rendering the claims clearer than the ones as granted. […] [5.3] Hence, the amendments made in the claims after grant do not render the claims unclear. Unsurprisingly, the viscosity issue also surfaced in the discussion of sufficiency of disclosure (A 100 (b)): [6.2] The method for measuring the viscosity is specified in paragraphs [0099] and [0100] of the patent in suit […]. It determines the temperature (23°C), the viscometer (Brookfield LVDV-I+ equipped with a certain heliopath), the spindles to be used […] and the moment at which the viscosity is to be determined (“as the highest relatively stable reading achieved on the first path the spindle traversed using the heliopath adapter”). The Appellant has shown in the test report (D9) that the viscosities of thickened hydroalcoholic compositions can be determined by this method […]. Although the individual viscometer readings vary to some extent (see the first table on page 6) the decrease of the average values with time is small (see table 1 on page 5; 0.5% decrease 3040 | 3398
T 229/07 – Bits’n Pieces
K’s Law – The ebook
for sample V and 2.9% decrease for sample W from 5 to 360 seconds). Hence, the viscosity was determined according to the method disclosed in the patent in suit with acceptable accuracy by Mr Gehm, the author of document D9 who is an expert in the field of rheology. This fact does not exclude that the person skilled in the art may have less expertise in measuring viscosity than Mr Gehm and may not be able to determine the viscosity of the claimed composition with an acceptable accuracy. This, however, was not shown by the Appellant. [6.3] Hence, no grounds under A 100(b) prejudice the maintenance of the patent. To read the whole decision, click here.
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T 1814/06 – Non Obvious Choice Among Three
K’s Law – The ebook
T 1814/06 – Non Obvious Choice Among Three 23 Apr 2010
[3.1] The document D19 represents the closest prior art for the present claim 1, and describes a vacuum valve including all of the technical features of the preamble of this claim, so that the claimed vacuum valve is distinguished from the known device solely in that a recess portion [8a] is formed in a central portion of the contact surface of the fixed electrode [8] only, whereas that of D19 does not have a recess on either electrode. This conclusion is not disputed by either party.
[3.2] In order to identify the objective technical problem, it is necessary firstly to establish the technical effect arising from this difference. From the description of the patent it is apparent that the difference comprises two aspects, associated with two different effects. Firstly, provision of a recess on one of the electrodes results in displacement from the central axis of the initial arc and thus of any welding imprint. Secondly, the selection that this one electrode should be the fixed electrode results in suppression of arcing from the edge of the recess to the shield, which would be more likely to occur if the recess were on the movable electrode, because of the combined effects of the distortion of the electric field by the edge of the recess and the inevitable sideways movement of the movable electrode. Thus the first aspect of the difference can be seen as addressing the technical problem of reducing welding effects, whereas the second addresses the technical problem of preventing damage to the shield. [3.3] The document D3 is at least partially concerned with both of these problems, so the skilled person would consider its teaching to be relevant. The description of D3 addresses the technical problem of reducing welding effects due to arcing on the central axis, and does so by providing a recess in the central portion of one of the electrodes, which causes the arc generated on electrode separation to form away from the central axis, so that magnetic effects then cause it to move, as a result of which welding would be less likely to occur. From this description it is not clear whether the electrode illustrated is the fixed or the movable one, or whether a similar recess should also be provided on the other electrode, and the corresponding claim of D3 merely states that a recess is formed on at least one of the electrodes. Thus the document suggests three alternative implementations, namely a recess provided on the fixed electrode, or on the movable electrode, or on both. [3.4] The document D3 also discusses the issue of the sideways movement of the movable electrode and the problem of arcing from an electrode to the shield. However, the solution to this problem described in D3 (the main invention of that document) is to provide the electrodes with a chamfered edge, which keeps the arc away from the electrode periphery, so that it is less likely to transfer to the shield. Moreover, the description of the embodiment with the central recess says nothing about any possible influence of the recess on arcing to the shield. [3.5] Thus D3 provides clear teaching concerning the first aspect of the difference identified in section 3.2 above and the corresponding technical problem, and suggests the solution of providing a central recess on at least one of the electrodes. However, as regards the second aspect of the difference, D3 merely provides various elements of relevant teaching without suggesting the link between them, and in particular it does not suggest any link between the provision of the recess (or recesses) and the problem of arcing to the shield. Moreover it provides no teaching that the provision of a recess results in changes to the electrical field which need to be taken into account when choosing whether to use one or two recesses, and if only one, where to place that recess.
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T 1814/06 – Non Obvious Choice Among Three
K’s Law – The ebook
Thus the board concludes that the skilled person, without hindsight, would not be able to derive from the teaching of D3 that he should select, from the three alternatives available, the one which is defined in the present claim 1. […] [3.7] The above conclusions do not diverge from the case law referred to by the appellant. [3.7.1]The appellant argued that the selection of one of the three options for the recesses would be obvious if decision T 400/98 were followed. The board is of the opinion that this decision is not applicable to the present case, since it was based on the premise that the available alternatives “were equally promising candidates” for solving the technical problem (see Reasons 4.4.6). In the present case, the three alternatives are only equally promising to the extent that the technical problem concerns the prevention of on-axis arcing, which is the problem addressed by providing central recesses as such, whereas the technical problem addressed by the specific selection of which electrode should be provided with the recess is that of preventing arcing to the shield, and as discussed in paragraph 3.2 above, the specific selection defined in claim 1 is superior to the other two options in this respect. [3.7.2] The appellant argued further that, even if the decision T 400/98 could not be applied, the selection as claimed would nonetheless be obvious to the skilled person, because it would result from carrying out obvious tests, in line with the decision T 308/99. The board does not find this argument convincing, since decision T 308/99 [8.3-4] concluded that the selection was obvious because the prior art already directed the skilled person towards the claimed use, and because all that was then necessary was to carry out routine tests to confirm the expected result, whereas in the present case the prior art provides no suggestion to the skilled person that there is a link between the electrode recesses and the problem of arcing to the shield, so does not direct him towards any tests which might lead him to make the claimed selection. […] [3.8] In summary, the board considers the objections of lack of inventive step raised by the appellant with respect to the present claim 1 to be based on an ex post facto analysis. Thus, having regard to the cited state of the art, the device defined by claim 1 of the patent as maintained by the opposition division is not obvious to a person skilled in the art. The board concludes therefore that the subject-matter of this claim involves an inventive step in the sense of A 56. To read the whole decision, click here.
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T 549/08 – Impossible Combination
K’s Law – The ebook
T 549/08 – Impossible Combination 22 Apr 2010
If in a patent as granted one of the dependent claims cannot be combined in a meaningful way with the main claim, is this a matter of clarity ? Or rather of insufficiency ? Claims 1 and 5 as granted read as follows: 1. A multi-layered moulding material [1] forming a preformed prepreg adapted for use in multiple layers, said multi-layered moulding material comprising a layer [2] of resin material, characterised in that the layer of resin material comprises a first fibrous layer [4] conjoined to the upper surface thereof and a second fibrous layer [3] conjoined to the lower surface thereof by contacting the resin layer and the respective fibrous layers, whereby the outer surfaces of the moulding material are free from resin and dry to touch to allow entrapped air to pass out of said multi-layered moulding material during processing of the material.
This claim is not extremely clear, to say the least. The numerical references are absent from the claim as granted. 5. A multi-layer moulding material according to any one of claims 1 to 4, characterised in that a tackifier and/or a binder is applied to one or both outer surfaces of at least one fibrous layer. During the oral proceedings, the Board raised an insufficiency issue that had not been raised by the opponents. According to the Board, claims 1 and 5 cannot be combined in a meaningful manner. [5.1.3] The Board concludes that the invention according to claim 1 […] fulfils the requirements of A 83. [5.2] In the particular realisation of the invention according to claim 5 of the main request and the (first) alternative request, which is dependent on claim 1, a tackifier and/or a binder is applied to one or both outer surfaces of the at least one fibrous layer. [5.2.1] The question which has to be answered in the context of A 83 is therefore the following: how can the skilled person putting into practice the invention as claimed by the subject-matter of claim 5 manufacture a multi-layered moulding material which has simultaneously both outer surfaces of the fibrous layers free from resin and dry to touch and enable the evacuation of entrapped air from the multi-layered moulding material during its processing. The Board remarks that this is technically not possible. Consequently essential features of the claimed invention, structural and functional, cannot be put into practice. [5.2.2] The Board disagrees with the patent proprietor, who argued that the objection of the board boiled down to a clarity objection - which is not a ground of opposition. To the Board’s understanding the dependency of claim 5 on claim 1 does not simply introduce an inconsistency or contradiction in respect of the structural properties on the surface(s) of the fibrous layers – “free from resin” and “dry to touch”. On the contrary this dependency introduces a more severe defect since besides the essential structural features the skilled person is not also able to realize the functional feature of the air evacuation during processing of the multi-layered moulding material.
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T 549/08 – Impossible Combination
K’s Law – The ebook
[5.2.3] Under these circumstances the Board considers that the invention according to claim 5 […] does not meet the requirements of A 83. The Board apparently considers that the presence of a tackifier and/or binder is irreconcilable with air evacuation. It explicitly excludes the understanding (which would also be mine) that the real problem is that it is contradictory to have a surface to which a tackifier is applied and which is “dry to touch”. Be that as it may, the Board concludes that this difficulty induces not a mere lack of clarity but a lack of sufficiency of disclosure which is a valid ground for opposition. The patent proprietor then deleted claim 5 and had the patent granted. To
read
the
whole
decision,
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here.
NB: This decision has also been commented by Laurent Teyssèdre on his blog. He points out that one outcome of this decision is that a dependent claim can be insufficiently disclosed although the main claim is not.
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T 286/09 – Composition vs. Ingredients
K’s Law – The ebook
T 286/09 – Composition vs. Ingredients 21 Apr 2010
The present decision deals with the patentability of a second medical indication. It provides an interesting complement to T 254/93 where the Board had come to the conclusion that the mere explanation of an effect obtained when using a compound in a known composition - even if the effect was not known to be due to this compound in the known composition - could not confer novelty on a known process if the skilled person was already aware of the occurrence of the desired effect. Claim 1 of the main request read: 1. Use of at least one prebiotic in the manufacture of a medicament for decreasing inflammatory process in an elderly human. [2.3.1] Document D7 discloses a composition which comprises a source of protein, a source of carbohydrate, a source of fat, a probiotic lactic acid bacterium and additionally FOS (fructo-oligosaccharides) and/or inulin. This composition is used in the manufacture of a functional food or a medicament for the prevention or treatment of an immune condition, particularly in elderly patients. Such condition is further defined as including inter alia “conditions associated with aging and leading to an increase of inflammatory responses” […]. Thus, document D7 disclosed the administration of a composition including among others a prebiotic (FOS and/or inulin) to persons (by implication elderly persons) with an immune condition associated with aging and leading to an increase of inflammatory responses. It does not however disclose that the prebiotic as such, or any other ingredient of the composition, has any effect per se in alleviating the condition. This is to be contrasted with the subject-matter of claim 1, which concerns the effect of a prebiotic for decreasing the inflammatory process. This effect of the prebiotic is moreover shown in the description of the patent is suit which includes a report of a study where the diet of elderly persons was supplemented by a prebiotic (FOS) and a clear effect was observed in terms of decreasing the inflammatory process that could only be attributed to the FOS. Accordingly, the subject-matter of claim 1 of the main request is novel vis-à-vis document D7. [2.3.2] The Board does not agree with the respondents’ submissions that the skilled person reading document D7 would deduce that FOS and/or inulin were the active ingredients merely because they were specifically mentioned in the composition, whereas the other ingredients were mentioned in more generic terms, or because they would arrive at that conclusion by default since they know that fat and protein are there as bulk food and the prebiotic for preventing diarrhea […], so that the remaining ingredients, namely the probiotic FOS and/or inulin, must be the ones having the effect of decreasing inflammatory process. In fact, document D7 discloses […] that FOS and inuline “may” be added to the composition and that they provide up to 5% of the energy of the composition. Thus, contrary to the respondents’ view, in the light of the above passage in document D7, the skilled person can only conclude that the overall composition disclosed in the description is effective in the prevention or treatment of an immune condition, including conditions associated with aging and leading to an increase of inflammatory responses, since each ingredient taken alone plays a different role in the compositions which has no link with inflammatory process. As to the argument relating to selecting from a single list of ingredients, the Board cannot agree with the respondents either. In fact, as discussed above, document D7 does not disclose a list of several ingredients having each an effect on the inflammatory process, but a composition of several ingredients wherein the effect can only be understood as being the result of the combined effect of all of the ingredients. Finally, the present situation is to be distinguished from the one in T 254/93. Indeed, in T 254/93, contrary to the present case, the prior art formulation comprises two ingredients, namely a corticosteroid, well-known for inducing skin atrophy, and a retinoid. Moreover, it was accepted that skin atrophy induced by corticosteroids was accompanied by such strong symptoms that the fact that skin atrophy did not 3046 | 3398
T 286/09 – Composition vs. Ingredients
K’s Law – The ebook
occur when using this prior art composition containing the second ingredient, namely the retinoid, could not be overlooked by the medical practitioner. Under these circumstances, the Board decided that, although not mentioned expressis verbis in the prior art , the effect of the retinoid on the prevention of skin atrophy caused by corticosteroids could not be regarded as novel because the skilled person was already aware of the occurrence of the desired effect, i.e. he knew from the prior art that the retinoid must have had the effect of preventing skin atrophy (point 4.8). The present situation is different since, as discussed above, the skilled person could not be already aware of the occurrence of the desired effect, i.e. the skilled person could not know from the prior art that the prebiotic had an effect on inflammatory process because the prior art advocated the use of the prebiotic for a specific purpose, namely to “provide up to 5% of the energy of the composition” […]. The request to refer a question of law to the Enlarged Board of Appeal […] does not need to be considered since in the present case no contradiction to decision T 254/93 occurs since the situation underlying the present case can be distinguished from the situation forming the basis for the decision T 254/93. To read the whole decision, click here.
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T 1281/06 – Cack-handed Lexicography
K’s Law – The ebook
T 1281/06 – Cack-handed Lexicography 20 Apr 2010
The present decision is of interest to writers of patent applications who act as their own lexicographers by defining some of the claimed terms in the application. [...] The reference in independent claims 1 and 5 to a current color mapping function having upper and lower knee points is not clear because the term “knee point” does not have any generally recognised meaning in the field of image processing. The Board does not accept, in this respect, the appellant’s argument that a definition of this term in the description suffices to render the definition of the claimed subject-matter clear; as a general principle, the meaning of the terms of a claim should be clear from the wording of the claim alone. As already stated in a previous decision of the present Board (in a different composition), “The Board is aware of the jurisprudence which acknowledges that an exception to this principle may exist in situations in which a patent description would provide unambiguous definitions of certain terms and would also make clear that such definitions apply throughout the complete application, so that, when interpreting the wording of claims, the patent specification would constitute its own dictionary” (cf. T 1271/05 [4.3]). The Board observes, however, that these conditions are not met under the present circumstances since the current description does not contain any statement which would imply that the term “knee point” should be given a specific meaning applying throughout the entire application. The passage on page 9, line 23-33 of the original application, referred to by the appellant in the statement of grounds, merely refers, in association with Figure 3, to one particular illustration of a color mapping function having upper and lower knee points. It fails, however, as such, to give a clear statement which could be identified as a definition. The following passages of the description on page 9, line 33 to page 10, line 34, admittedly, provide additional information as to the parameters which enable a determination of said knee points. Similarly, the passage on page 3, line 30 to page 4, line 32, suggests that the knee points constitute specific points of the color mapping function fulfilling certain conditions. In addition, the indications in dependent claims 2 and 6 regarding the form of the color mapping function could be regarded as an alternative definition of the concept of “knee points” within the meaning of the present application. However, the description does not specify whether any of these various indications should apply to the entire application. Instead, the passage on page 11, lines 12- 18, also cited by the appellant, discloses that the positions of the knee points can, alternatively, be determined by the host computer based on user selected inputs such as, for example, the system color flow gain setting or the dynamic range setting. This non-exhaustive list of parameters suggests in effect that any parameter indirectly relating to the Doppler imaging data could be validly relied on to define knee points. The passage on page 12, lines 4-32, adds to the confusion in that it specifies that the knee points could be moved by the user through the operator interface by moving a graphical symbol to a selected position. In the absence of any limitation as to these selected positions, this embodiment suggests that the knee points can be selected in an essentially arbitrary manner, i.e. even without consideration of the parameters previously referred to. As a consequence, the Board is unable to recognize a unique and unambiguous definition of the term “knee point” in the description which would also apply to the claims. It is hence not possible, in line with decision T 1271/05, to associate to the features of the lower and upper knee points recited in independent claims 1 and 5 any 3048 | 3398
T 1281/06 – Cack-handed Lexicography
K’s Law – The ebook
specific meaning which would distinguish said points from any point defined by the color mapping function. [2.1] The aspect regarding the definition of the knee points is considered essential under the present circumstances in view of the technical problem which the claimed invention intends to solve. As indicated on page 3, lines 17-28, of the original application, the mapping functions known from the prior art "do not allow the user or the system to optimize the image information". The solution of this problem resides in the selection of a color mapping function having the optimal form […], which form presents a segment of increased slope in order to better visualize the actual distribution of power densities for a predetermined range of Doppler flow powers. This finding implies that essential information for the definition of the claimed system and method is lacking from independent claims 1 and 5. More specifically, the information as to the criteria to be used for establishing the optimal form and to determine the analyzing steps to be made are missing from independent claims 1 and 5, respectively. [2.2] […] For the reasons developed above, the Board concludes that the requirements of A 84 EPC 1973 as to clarity are not met. [2.4] So when you define terms in the application, be sure to make clear that the definitions concern the application as a whole. To read the whole decision, click here.
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T 413/08 – Repudiate Quickly
K’s Law – The ebook
T 413/08 – Repudiate Quickly 19 Apr 2010
This decision deals with an appeal against the revocation of a European patent. When filing its appeal, the patent proprietor pointed out that the machine described as prior art in the patent at paragraphs [0002] to [0006] did not belong to the prior art. It later explained that the machine was mentioned in error and should not have been referred to as being conventional. The opponent did not agree and requested the Board to refer the following questions to the Enlarged Board (EBA): 1. Insofar as an applicant or patent proprietor indicates that a state of the art is known in the description of an application and it constitutes the closest prior art on which the technical problem to be solved is based, is it admissible to consider that this state of the art forms part of the state of the art in the sense of A 54(2)? 2. If the answer to this question is no, how should the state of the art acknowledged by the applicant or patent proprietor as well as the technical problem to be solved based on this prior art be regarded? Here is what the Board had to say: [2] In the written grounds of appeal, the appellant resiled from the indication of background art as set out in the patent in suit. The Board is of the opinion that, under these circumstances, and in the absence of any evidence to the contrary, the printing machine described in the patent in suit in paragraphs [0002] to [0006] cannot be regarded as having been made available to the public before the priority date of the patent in suit. Nevertheless, it is not considered necessary or appropriate to refer the questions to the EBA in accordance with A 112(1)(a) as requested by the [opponent]. As stated in decision T 730/05 [3.2, last sentence] and in decision T 1554/05 [2.1, penultimate sentence] “the other relevant cases of which the board is aware, dealing mainly with the question of whether an applicant is allowed to resile from its indication of background art, either implicitly or explicitly take the view that, if not resiled from or clearly not prior art for other reasons, it may be relied upon as prior art (see T 654/92, T 691/94, T 1449/05 and T 211/06).” The [opponent] relied upon two cases in particular. In case T 1554/05 [2.1], the [patent proprietor] did not resile from the indications of background art in the description. In case T 1449/05 [2.8], the patent proprietor attempted to resile from his admission of prior art nearly at the end of oral proceedings (OPs). Admission of this resilement would have required the adjournment of the OPs to allow the appellant opponent to search for adequate evidence that substantiates his allegations. The present case is thus distinguished from these cases in that the appellant resiled from an admission of prior art at an early point in the appeal proceedings. In the present case, the [patent proprietor] stated in his grounds of appeal in reaction to statements contained in the decision under appeal, that “document D0 does not belong to the prior art according to A 54(2)” and stated that there was no objective evidence that the content described in document D0 was made available to the public before the date of filing of the patent in suit. It was suggested on behalf of the respondent that it was only at the OPs before the board that the appellant properly resiled from the indication of background art in the description. This is not accepted. The statements by the appellant under point (2) of the reasons contained in the written grounds of appeal are considered to constitute an unambiguous statement that the information concerning printing machine contained in paragraphs [0002] to [0006] of the patent in suit was not available to the public before the date of filing. There is thus no contradictory case law in respect of the status of an acknowledgement of prior art. In the absence of any indication to the contrary, an acknowledgement of prior art by a patent proprietor may be accepted at face value. If a patent proprietor resiles from an acknowledgement of prior art at a point in time which does not give rise to any procedural problems, the acknowledgement may no longer be relied upon. In the present case, the patent proprietor has resiled from its indication of background art in due time, so that, in the absence of any evidence to the contrary, it cannot be assumed that the acknowledged device was, in fact, made available to the public before the priority date of the patent in suit. Consequently, the printing machine described in the patent in suit in paragraphs [0002] to [0006] does not form part of the prior art. 3050 | 3398
T 413/08 – Repudiate Quickly
K’s Law – The ebook
To read the whole decision, click here. NB: This decision has already been reported on Laurent Teyssèdre’s blog.
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T 66/07 – Extracting Limits From Examples
K’s Law – The ebook
T 66/07 – Extracting Limits From Examples 17 Apr 2010
I have the impression that the question of intermediate generalisation is more and more present in recent decisions of the Boards. The present decision is far from spectacular but it allows to study a nice case involving temperature ranges. [2] In the decision under appeal, two different reasons were given for the revocation of the patent in suit, namely that the amendment of the temperature ranges, i.e. the replacement of the range of “50 -120°C” at all occurrences in the independent claims to the process and to the polymer per se of both former requests under consideration at that time by the new range of “100-120 °C”, did not fulfil the requirements of A 123(2). […] [5.3] As regards the question of whether the lower limit of the range of 100 to 120°C […] has directly and unambiguously a clear basis of the disclosure in the examples must be considered separately and in detail herein below. [5.3.1] The [patent proprietor] referred to T 962/98 [2.5] according to which the use of a feature taken from the examples for restricting the scope of a claim would be allowable, if a skilled person could recognise without any doubt from the application as filed that this feature was not closely related to the other characteristics of the worked examples and could be applied directly and unambiguously to the more general context (T 962/98, which followed T 201/83). The [patent proprietor] saw these prerequisites fulfilled in the present case, so that the value of 100°C disclosed in each of the examples in the context of the boiling point of each reaction mixture would, therefore, form an allowable basis for the amendment of the polymerisation temperature in each of Claims 5 and 8 of the Main Request. [5.3.2] By contrast, the [opponents] took a different view and argued that the extraction of the value of 100°C from the examples did not comply with the above requirements as formulated in T 962/98. [5.3.3] In the case underlying decision T 962/98, each Claim 1 in question had been amended with reference to the argument that the amendment was properly supported by the disclosure of one example. The claims referred to a method comprising the dilution of a concentrate composition “with a diluent”, wherein the composition comprised “a carrier” comprising, besides a conveyor lubricant comprising four specific chemical compounds identified by their chemical names, effective amounts of “a quaternary ammonium cationic compound” and “an amphoteric surfactant” (T 962/98 [V]). The example which, in the [patent proprietor’s] opinion supported its amended method claims, concerned a concentrate composition comprising, besides all of the above four specific chemical compounds as the conveyor lubricant component, distilled water, isopropanol, acetic acid, the monosodium salt of lauryliminodipropionic acid and coco-alkyldimethylbenzylammonium chloride. The Board found that “It is, therefore, not possible to conclude without any doubt whether or not, those four surfactants either (a) can be singled out of the composition of Example 1D and used with other carriers than a mixture of water and isopropyl alcohol, with an antimicrobial agent other than cocoalkyldimethylbenzyl, ammonium chloride or with an amphoteric surfactant other than lauryliminodipropionic acid monosodium salt or, to the contrary, whether they (b) are only adapted to the specific composition disclosed in Example 1D. The skilled reader is given no guidance, either in Example 1D itself, or in the more general description as to which components of Example 1D should be retained unchanged, and which can be varied at will. He will know that it will be possible to vary the example, but there is no clear guidance as to within what limits such variation will be possible. Certainly there is nothing to tell him that just the four surfactants recited in claim 1, but not other components recited in Example 1D, are essential.”
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T 66/07 – Extracting Limits From Examples
K’s Law – The ebook
and that “This situation of doubt is in contradiction with the requirement that an amendment be directly and unambiguously derivable from the application as filed.” Consequently, it did not allow the requested amendment and dismissed the appeal. [5.3.4] The present situation is comparable with the circumstances in that case, in that, as pointed out by the [opponents], the boiling point is clearly linked to the particular composition of a given example. The [patent proprietor] has, however, amended its claims on the basis of a generalisation of the boiling temperatures of the examples, irrespective of their further particulars, by applying this generalised value to the full scope of the claims. [5.3.5] Thus, whilst the examples related to the preparation of polyacrylic homopolymers with the only exception in Example A-6 concerning a copolymer of acrylic and methacrylic acids in a 6/4 molar ratio, the general description of the polymerisation mixtures encompasses the possibility that originally up to 50 weight % of the monomer composition (now restricted to 10 weight % […]) are monomers other than (meth)acrylic acid or their salts (see the long list of different types of comonomers, such as e.g. vinyl acetate and vinylsulfonic acid […]). Furthermore, the (meth)acrylic acids and some acidic comonomers may be used in their neutralised form as salts with mono- or divalent metal ions […]. Moreover, a further particular of all those examples, on which the [patent proprietor] relied in order to justify the suggested amendment, is the fact that, in all the examples in Table 1 […], no monomer had initially been charged, but 100% of the monomers component had gradually been supplied to the reaction mixture. However, neither of Claims 5 and 8 includes such a requirement. Instead, the last paragraph of each of these claims requires 70 weight % or more of the total amount of the monomer component to be gradually supplied to the reaction system. In other words, up to 30 weight % of this component may be initially charged. That the boiling point is not independent from the composition of the reaction system, e.g. from the amount of the monomer component, is illustrated by Comparative Example A-3 wherein part of the monomer component had initially been charged. [5.3.6] Moreover and in particular, it must be noted that all examples relate to the polymerisation in ionexchanged water, whilst in the claims reference is made to “an aqueous medium”, in general […]. It clearly includes “water alone; mixed solutions of water and water-soluble solvents” […]. Moreover, according to a preferred elaboration […], the water content is 40 weight % or more of the mixed solution, which means, that, in this preferred elaboration, the solvent may be present in an amount of up to 60 weight % of the aqueous medium […]. The water-soluble solvent which may thus even be the predominant component of the aqueous medium affects, of course, the boiling point of the “aqueous medium”. [5.3.7] In view of these findings, it is evident to the Board that each of the temperature values in column (6) of Table 1, as further confirmed by the wording in the descriptions of each of the examples, refers to the individual “boiling point (…) of the system” of the respective given example. The accidental identity of the boiling temperatures in different examples does not disprove this finding. In other words, the initially charged reaction systems e.g. of Examples A-2 and A-7, containing only ionexchanged water, or Example A-1 containing only ion-exchanged water and about 2 weight % of sodium hypophosphite monohydrate […] had a boiling point of 100 °C, and the temperature was then “kept” in these examples at the individual boiling point of the respective specific reaction system lying somewhere between 100 and 105°C (in other cases, up to between 103 and 107°C) apparently by controlling the feed of the various reaction components, i.e. of the monomer(s), sodium persulphate and hypophosphite monohydrate in distinct concentrations dissolved in ion-exchanged water, to the reaction system. “After the end of dropping, the temperature was kept at the same temperature for 5 minutes to complete the aging.” The comparison of the identical statements in Examples A-1, A-2, A-7 […] and, moreover, in Comparative example A-3 […] makes it clear for the Board that that the formulation concerning the boiling point expressed in terms of e.g. “(100-105 °C)”, “(100-107 °C)” or “(103-105 °C)” (Comparative Example A-3) in Tables 1 and 2 refers in each case to the respective individual boiling temperature of the individual reaction system. These findings are, for the Board, valid for the polymerisation reactions in all the examples, which were also conducted in a similar way as confirmed by formulations such as e.g. “A polyacrylic acid (…) was obtained by the same polymerization as of Example A-2 (or A-1) except that …” […]. The above values given in the 3053 | 3398
T 66/07 – Extracting Limits From Examples
K’s Law – The ebook
individual examples cannot, therefore, be considered as referring to a temperature range or to a lower or upper limit of a temperature range which would be valid for the generality of all conceivable elaborations encompassed by the operative claims. [5.3.8] Therefore, as held in T 962/98, it is also, in the present case, neither clearly and unambiguously nor directly derivable from the disclosure in the examples that the lowest temperature value provided in Table 1 would also be valid for the other reaction systems comprising other aqueous media and other monomer compositions as encompassed by Claims 5 and 8 under consideration. [5.3.9] Consequently, the Board takes the view that the conditions for an admissible and allowable generalisation of the temperature value of 100°C for amending the lower limit of the two occurrences of a temperature range to “100-120 °C” in the last paragraph of each of Process Claim 5 and Product Claim 8 are not met. Rather, the amendment of these two claims does not fulfil the requirement for the allowability of an amendment taken from an example, as referred to in section 5.3.1, above, but extends beyond the content of the application as filed. To read the whole decision, click here.
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T 1224/06 – Would You Please Hide The Bloodshed
K’s Law – The ebook
T 1224/06 – Would You Please Hide The Bloodshed 16 Apr 2010
Claim 1 of the main request read: A method of extracorporeal blood processing for collection of blood components from blood from a donor, said method comprising: providing a blood processing vessel containing blood; separating platelets from said blood within said blood processing vessel; collecting at least a portion of said platelets in a platelet collection reservoir separate from said blood processing vessel; separating red blood cells from said blood within said blood processing vessel; collecting at least a portion of said separated red blood cells in a red blood cell collection reservoir separate from said blood processing vessel, wherein said platelet separation and collection steps are completed separate from said red blood cell separation and collection steps. [2] Claim 1 as originally filed has been amended by replacing the words “flowing blood into a blood processing vessel” in original claim 1 by the words “providing a blood processing vessel containing blood” in new claim 1. This amendment was effected in order to remove the step of flowing blood into a blood processing vessel which the examining division (ED) considered to be a surgical step. The gist of the invention is in the separate collection of red blood cells and platelets from blood within a blood processing vessel. The entire process is performed outside of the body, as is made clear by the word “extracorporeal” in claim 1, and the manner in which blood is supplied to a blood processing vessel in order to carry out the claimed method is irrelevant to the invention. Therefore, the step of flowing blood into the blood processing vessel is not an essential feature of the invention and the amendment does not require any modification of the other steps. The amendment is not objectionable under A 123(2), accordingly. [3] Since claim 1 now clearly does not contain the step of flowing blood into a blood processing vessel, the ED’s objection, that this step inevitably involves removing blood from a donor via a needle and is therefore a surgical step, no longer applies. The remainder of the claim defines only technical steps applied to the blood within the vessel, in order to solve a technical problem, so that the claim is free from objection under A 52(4). [4] The decision under appeal is based solely on A 52(4), and since the appeal is allowed, it is appropriate pursuant to A 111(1) to remit the case to the ED for further prosecution. This decision was taken some days before the Enlarged Board issued its decision G 1/07. I wonder if the ED would have taken the same decision in the light of G 1/07. I guess flowing blood into a processing vessel would now be considered to be a “safe routine technique, even [though] of invasive nature” and would not be understood as being of surgical nature within the meaning of the EPC. In any case, it seems difficult to argue that this step is “an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise”. To read the whole decision, click here.
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T 364/08 – Cut-off Relativized
K’s Law – The ebook
T 364/08 – Cut-off Relativized 15 Apr 2010
The possibility of re-introducing subject-matter that has been deleted from a European patent or, in other words, the existence of a “cut-off” effect is one of the more delicate questions dealt with in the case law. T 1149/97 has established that there is a “cut-off” for subject-matter that has been deleted in view of A 84 and A 69. T 37/99 has followed this decision. Subsequent decisions appear to have struggled with the findings of T 1149/97. T 241/02 has stated that “the grant of a patent does not necessarily constitute a final and automatic cut-off point excluding any reinsertion of deleted subject-matter” (point 1.4 of the reasons) and that T 1149/97 did not lay down a strict rule (point 2.3.5 of the reasons). T 1481/05 noted that “T 1149/97 itself [did] not consider reintroduction of deleted features - as opposed to deleted subject-matter falling under patent protection - to be inadmissible as a matter of principle” (point 4.7 of the reasons) and re-centred the cut-off effect in A 123(3) by defining a useful test: “Is it possible to identify some subject-matter which did not fall under the scope of protection in the granted version of the patent, but would do so if the amendment in question (the reintroduction of the deleted features) would be allowed?” (point 4.8 of the reasons) If such abandoned subject-matter is identified, the amendment cannot be allowed. I may be wrong, but my impression is that the Boards are somewhat embarrassed by the undifferentiated wording of T 1149/97 but do not wish to state their disagreement. They rather delimit its domain of application. The present decision appears to follow the same approach. It pays lip service to T 1149/97 but – if my understanding of the reasoning is correct – it recalls that what really matters is conformity with A 123(3), which is finally very close to what T 1481/05 (which is not referred to) had found. [1.4] According to A 123(2) the European Patent “may not be amended in such a way that it contains subjectmatter which extends beyond the content of the application as filed” (emphasis added by the Board). Thus there is no basis for the respondent’s argument that subject-matter based on the originally filed claims 2, 3 and 4, said claims no longer being part of the patent as granted and thus their subject-matter, cannot be reintroduced into the patent. In this respect the Board concurs with the findings of T 1149/97 [6.1.9-10] that a “cut-off” effect due to the grant of a patent can be seen in the formal restrictions imposed on further amendments to the patent specification by R 80 and R 138 and, substantively only in the restriction imposed by A 123(3). In the present case, subject-matter of the originally filed claims 2, 3 and 4, can therefore be re-introduced into claim 1, as long as it does not infringe A 123(2) and (3). To read the whole decision, click here.
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K’s Law – The ebook
T 558/08 - Claims Are Generalizations
T 558/08 - Claims Are Generalizations 14 Apr 2010
Claim 1 of the main request read: A heating device (510) for use in an internal combustion engine having an intake (512) defining a passage, the intake including an opening in communication with the passage, the heating device comprising: a access panel (511) removably mounted to the intake and closing the opening; a frame (514, 516) coupled at one end to said access panel and extending into the passage, said frame including a first portion positioned substantially parallel to and spaced apart from a second portion; and a heating element (518) coupled to said frame and positioned between said first and second portions, said heating element being positioned in heat transfer relation with the passage to thereby heat combustion air flowing through the passage.
The crucial question for the assessment of novelty was the interpretation of the term “frame”. The patentee argued that this term had to be read in the light of the description, which only shows frames surrounding the heating element. [2.1] The invention concerns a heating device for heating the intake air of an internal combustion engine. Its central idea is to mount the heating element on an access panel which is removably mounted on the intake to close an opening therein. The element is coupled between first and second portions of a “frame” coupled to the panel. This type of heating device, referred to as “drop-in”, allows “an end user to install the heater after the intake has been assembled to a vehicle increasing serviceability and ease of installation” […]. These benefits contrast it with “sandwich” type heating devices, where the element is mounted on a flange that is inserted between intake and manifold, requiring a more cumbersome installation and servicing and a more complex construction […]. [2.2] The feature of a “frame” with spaced, parallel “portions” was added to claim 1 prior to grant. It replaces features of a “hanger” and “retainer mechanism” that appeared in corresponding independent claim 16 of the application as published, the first of the claims therein directed at the drop-in concept. [2.2.1] The term “frame”, the Board notes, does not appear in the claimed context in the application as filed. The only mention of “frame” is […] a passage used to describe the mounting of prior art heating elements as disadvantageously large and complex vis-à-vis a retainer mechanism 20, see the immediately preceding and following sentence of this paragraph. There its use does not imply any specific shape or mounting of the heating element, other than that it is large and complex. [2.2.2] Nor does the term itself imply any particular shape in relation to the heating element it supports. In normal usage the term “frame” may mean nothing more than “a structure which serves as an underlying support 3057 | 3398
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T 558/08 - Claims Are Generalizations
or skeleton” (Oxford English Dictionary); “the underlying constructional system or structure that gives shape or strength (as to a building)” (Merriam-Webster Online Dictionary), or “the basic structural unit onto or into which other constituents of a whole are fitted, to which they attach, or with which they are integrated” (Webster’s 3rd New International Dictionary). Though it may in some instances also mean, more specifically, “an open case or structure made for admitting, enclosing, or supporting something” (Merriam Webster), it does not necessarily imply encasing of what is supported. The exact meaning will depend on context. [2.2.3] In the present case the Board has no reason to believe it should mean anything more than in its broadest sense, an underlying support structure. That claim 1 also requires the frame to have spaced apart parallel portions may add some further detail of the shape, but not enough to conclude that it encases the heating element. [2.2.4] The fact that all embodiments show structures that support and surround the heating element also does not mean that claim 1, read in the light of the description and figures, must relate to encasing structures. By virtue of the fact that claims are directed at the essence of an invention, they are generalizations. Reading “frame” in a broader sense as a generalization of the specific support structures shown in the description is then not inconsistent with or contradictory to the content of the original disclosure. It rather brings to prominence the features of the “drop-in” design per se, which had hitherto (in the procedure up to grant) been presented as the inventive concept. This may also be the reason why the more specific features of the hanger support and of the retainer mechanism - the latter in particular presented consistently as essential in the application as filed - were dropped from corresponding independent claim 16 of the application as filed and replaced by those of the “frame” in granted claim 1. [2.2.5] The Board concludes that the term “frame” is to be read in its broadest sense, meaning “an underlying support structure”. Unsurprisingly, this broad interpretation led to claim 1 being anticipated by the prior art. To read the whole decision, click here.
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T 25/09 – It’s Party Time
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T 25/09 – It’s Party Time 13 Apr 2010
The present decision also deals with a not so common request: the opponent requested that the patent proprietor not be allowed to withdraw auxiliary requests considered during oral proceedings (OPs) and that the Board express its opinion on these requests. [30] Proceedings before the Boards of Appeal are governed by the principle of party disposition under which a public authority or court normally may not continue proceedings if the procedural act which gave rise to the proceedings (such as the filing of an appeal) has been retracted, unless procedural laws specifically permit continuation (G 8/91 [5]). Such exceptions are set forth, in particular, in R 70(1) (no withdrawal of the request for examination) and in R 84(2) (possible continuation of opposition proceedings after withdrawal of the opposition). There is no similar exception that would allow the continuation of the appeal proceedings with respect to claim requests withdrawn in appeal proceedings. The principle of party disposition is of particular relevance for inter partes proceedings (see, e.g., T 240/01 [6]). It means, for example, that a department of the EPO is not allowed to decide on a non-pending application (T 1409/05 [3.2.26]). The Boards of Appeal do not intervene of their own motion, but only at the request of the appellants (T 60/91 [9.3]). Referring to the principle of party disposition, the Enlarged Board of Appeal confirmed that the appeal proceedings are terminated after the appeal is withdrawn in so far as the substantive issues are concerned (G 8/91 [4,5], see also decision G 2/91 [6.1]). This applies also in cases where a third party who intervened during appeal proceedings is interested in the continuation of the proceedings (G 3/04 [10]). The principle of party disposition (in German “Verfügungsgrundsatz” or “Dispositionsmaxime”) also allows that the patent proprietor changes the order of auxiliary claim requests or introduces new claim requests and thereby avoids that certain requests are examined. Such changes of the order of auxiliary requests were made – and were not contested – during the OPs in the present case. [31] Not only an appeal in its entirety but also part of an appeal can be withdrawn if the appeal could initially have been accordingly limited in conformity with R 99(1)(c) and R 99(2) (see J 19/82 [4]). In the present case, [the patent proprietor] could have refrained from filing the auxiliary requests in question. Consequently, [the patent proprietor] should be allowed to withdraw individual auxiliary requests filed in the course of the appeal proceedings. For the Board, it is not relevant whether the Board has discussed the relevant requests with the parties and/or whether the Board has given its opinion on such requests as long as the debate has not been closed in accordance with Article 15(5) of the Rules of Procedure of the Board of Appeal (RPBA) and no decision has been announced (see below point (35)). Opinions given by the Board in appeal proceedings regularly trigger the filing of new requests, the admissibility of which will then be examined under Article 13 RPBA. Likewise, the withdrawal of requests – which normally does not raise any issues under Article 13 RPBA – must be possible as a reaction to an opinion given by the Board. [32] In the Board’s view, it does not matter whether [the patent proprietor] filed the auxiliary requests in question as appellant or as respondent to the appeal filed by [the opponent]. In inter partes proceedings, the principle of party disposition applies to the procedural acts of both parties (see also T 240/01 [6]). [33] Under A 113(2), the EPO shall examine, and decide upon, the European patent application or the European patent only in the text submitted to it, or agreed, by the applicant or the proprietor of the patent. This provision not only specifies an aspect of the right to be heard; it is also relevant in the context of party disposition. It has been concluded from A 113(2) that a Board of Appeal has no authority to order the grant of a patent containing claims which are different from those submitted by the applicant (T 32/84 [19]). The principle that a patent may not be granted or maintained with claims to which the proprietor has never consented or to which the consent has been withdrawn applies to all procedural situations. If the patent proprietor in appeal proceedings withdraws its approval of the text of the patent as granted and declares that he will not be submitting an amended text, the appeal proceedings have to be terminated and the patent has to be revoked without any substantive examination (T 73/84 [3,5]). Accordingly, the withdrawal of the approval with respect to individual claim sets (filed as auxiliary requests) must result in the termination of the proceedings with respect to such claim sets. [The patent proprietor], by withdrawing his requests, withdrew his consent to the respective claim wording. In this context, any decision of the Board on the allowability of requests withdrawn by the patent proprietor would be completely pointless since a withdrawn request could never form the basis of a maintained patent. 3059 | 3398
T 25/09 – It’s Party Time
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[34] The principle of party disposition (which implies the right to withdraw an appeal in its entirety or in part) and the provision of A 113(2) imply, in the Board’s judgment, that [the patent proprietor], being the patent proprietor, must have the right to withdraw any of its claim requests filed in the course of appeals proceedings. [35] A withdrawal of an appeal cannot have any effect on the decision if the appeal is withdrawn after the decision has been announced by the Board at OPs in accordance with R 111(1) (see T 1033/04 [3]). E contrario, an appeal may be withdrawn at any time before the decision is announced. When [the patent proprietor] withdrew part of its requests during the OPs, no formal decision had been announced yet on these requests. This fact was pointed out by the chair – and was not disputed – when the request was discussed. [The patent proprietor] was therefore allowed to withdraw part of its auxiliary requests in view of the status of the proceedings. The Board has to reject the request of [the opponent] that the withdrawal of claim requests of [the patent proprietor] considered during OPs shall not be allowed. [36] If [the patent proprietor] is allowed to withdraw auxiliary requests before a final decision is taken, there is no room for any opinion or reasoning given by the Board on such withdrawn requests in the written decision. In view of R 111(1), decisions need to be given and reasoned only on admissible requests which are pending after the debate is closed. [37] Any opinion or reasoning given by the Board on claim requests withdrawn during the proceedings would, in effect, constitute declaratory judgments or obiter dicta (i.e., findings which do not support the formula of the decision, see T 473/98). There is no basis in the EPC for any declaratory judgment. [The opponent] may therefore not request any formal decision on any claims which are not part of a pending request. The Board agrees with [the opponent] that the Board may give comments or obiter dicta on points which need not to be decided in order to arrive at the final decision. The Board would not exclude that such obiter dicta may even comment on claims which do not form part of a pending request. However, it lies within the discretion of the Board to include or not to include such obiter dicta in the written decision. Any interest of [the opponent] in such obiter dicta which may arise in the course of pending or future application, opposition, infringement or invalidity proceedings cannot justify that obiter dicta (which may not have any relevance for any proceedings on the present patent before the EPO) are included in the final decision of the present proceedings. Even if a divisional application contains claims identical to claims forming part of withdrawn requests in the present proceedings, such claims in a divisional application could not be accepted or rejected on the basis of res iudicata if they were commented only in obiter dicta in the present proceedings. Likewise, the Board does not accept the position of [the opponent] that the public interest would require the requested opinions on withdrawn claim requests. Third parties may not claim any right to learn about the Board’s opinion on claims that are not part of a pending request. [38] For these reasons, the request that the Board expresses its opinion on withdrawn auxiliary requests has to be rejected. To read the whole decision, click here.
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T 25/09 – IP Rights Do Not Frighten The Skilled Person
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T 25/09 – IP Rights Do Not Frighten The Skilled Person 12 Apr 2010
[13] [The patent proprietor] argued that the skilled person trying to solve the problem […] would not turn to document D1B […] The skilled person had several reasons not to turn to document D1B. Firstly, the use of the method disclosed therein was the intellectual property of the Patent Proprietor of document D1B. A skilled person, knowing that other purification processes were not protected by patent law, would not have chosen the process of document D1B. […] [14] With regard to [the patent proprietor’s] argument that the skilled person would not have considered the teaching of document D1B because patent rights to be observed would have prevented him to do so, the Board firstly remarks that it is not aware of any legal basis, neither in the EPC nor in any other national or international law, which could form a basis for the conclusion that the disclosure in a patent should be disregarded for the assessment of inventive step, and secondly is convinced that this view is not supported by the usual and common approach how to consider the state of the art. To intellectually consider a certain teaching in a piece of prior art for the technical solution of a given technical problem is not hampered by the fact that carrying out commercially this teaching might be forbidden by patent rights, which furthermore might not even be valid. It is also to be noted that the priority date of document D1B is 1981 whereas the priority date of the patent in suit is 2001. We
shall
come
back
on
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this
decision
tomorrow.
T 879/09 – An Allowable Intermediate Restriction
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T 879/09 – An Allowable Intermediate Restriction 10 Apr 2010
The EPO has the reputation of being extremely severe in the application of A 123. In the present case, the application was rejected by the Examining Division (ED) because the Division considered the amendment to be an unallowable “intermediate generalisation”. The decision is of some interest because the Board partially reverses that finding. Therefore, the case allows to see both amendments that are acceptable to the Board and amendments that are not. However, the example will be fully appreciated by mechanically skilled readers only. The application concerned a robotized device for moving an object. Claim 1 as filed read: Robotized device to move an object (12), comprising manipulator means (14) having gripping elements (16) lying on a determinate plane of manipulation (P), first motor means (22) with which a first movement unit (25) is associated, in turn associated with said manipulator means (14), and second motor means (23) with which a second movement unit (26) is associated, in turn associated with said manipulator means (14), said first movement unit (25) and said second movement unit (26) defining with the respective first and second motor means (22, 23) and with said manipulator means (14) a pantograph mechanism, characterized in that at least one of said movement units (25, 26) comprises connection means (31, 34, 35, 37) able to keep said gripping elements (16) substantially parallel to said plane of manipulation (P) during the functioning of said pantograph mechanism.
During examination, the applicant introduced a great number of features concerning the first movement unit 25 from the single embodiment. The amended claim was rejected by the ED as being an intermediate generalisation because two features of the embodiment were missing. [2.1] The ED objected in the decision under appeal that it had not been specified in claim 1 that the tubular element 32 was made of carbon and that the pair of tie-rods 34 was rigid, arguing that these features were inextricably linked to the other features disclosed in the specific embodiment that had been incorporated into claim 1. […] [2.1.2] A patent application describes an invention in general terms together with one or more detailed embodiments. In order to overcome an objection of lack of novelty and/or inventive step the applicant often adds some but not all the features from the detailed embodiments to the general disclosure. This results in an object 3062 | 3398
T 879/09 – An Allowable Intermediate Restriction
K’s Law – The ebook
that lies between the original general disclosure and the detailed embodiments. This is called an “intermediate generalization” in the patent jargon, although a more proper naming would be “intermediate restriction” to make clear that it is in fact a restriction from the more general original disclosure (T 461/05 [2.3]). [2.1.3] Such an intermediate restriction or generalization is permissible under A 123(2) only if the skilled person would recognize without any doubt from the application as filed that characteristics taken from a detailed embodiment were not closely related to the other characteristics of that embodiment and applied directly and unambiguously to the more general context (T 962/98 [2.5]). Material of the tubular element [2.1.4] The ED did not give reasons for the finding in the decision under appeal that the features that the tubular element was made of carbon and that the first movement unit comprised a pair of rigid tie-rods were inextricably linked to the other features of the embodiment of the invention. [2.1.5] On the first point, the board agrees with the appellant applicant that a skilled person would understand that the feature “a tubular element 32 made of carbon” […] is not related to solving the problem addressed by the invention, namely to design a robotized manipulator whose surface stays parallel to the same plane when moved around. In fact, the skilled person would recognize immediately and without any doubt that the material of the tubular element is irrelevant for the present invention. As the test mentioned in point 2.1.3 above is fulfilled, not specifying the material of the tubular element 32 in claim 1 does not offend against A 123(2). Rigidity of the tie-rods [2.1.6] For the second point, namely the rigidity of the tie-rods, the working principle of the robotized device has to be understood. The gripping element 16 is kept substantially parallel to the same plane of manipulation through the combined use of (a) a first parallelogram defined by the pivoting axis on armlet 35, the rotation centre Z1 of the first rotor 22b and pivoting axis A and B on toggle lever 31, and (b) a second parallelogram defined by pivoting axis A and C on toggle lever 31 and the pivoting axis of the tubular element 32 and the first rod 37 on manipulator 14 (see figures 5 and 6 below).
[2.1.7] This combination assures that the angle between a line joining the pivoting axis on armlet 35 and the rotation centre Z1 of the first rotor 22b (imaginary line 1) and a line joining the two pivoting axis on manipulator 14 (imaginary line 2) is fixed, since line AB on toggle lever 31 is always parallel to line 1 and line AC is always parallel to line 2 due to the presence of the first and second parallelograms, while angle BAC defines the angle between the imaginary lines 1 and 2. As the manipulator 14 is still free to move in a circle around the toggle lever 31, the spatial position of the manipulator 14 is determined by the rotor of the second motor means 23 and the second movement unit 26. [2.1.8] A tie-rod, however, is a slender structural unit used as a tie and (in most applications) capable of carrying tensile loads only; it can be articulated or flexible. Rigidity is therefore not an implicit feature of a tie-rod and has to be explicitly stated.
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T 879/09 – An Allowable Intermediate Restriction
K’s Law – The ebook
[2.1.9] The feature that “a variation of an angular position of said rotor 22b is transformed in a movement of said two first arms 30 parallel to said two tie-rods 34” does not implicitly disclose that the tie-rods are rigid nor is it sufficient to specify the existence of the first parallelogram, since a parallel movement between arms 30 and tierods 34 would not result in a parallelogram if the length of the tie-rods, i.e. the distance between the pivoting axis on armlet 35 and pivoting axis B on toggle lever 31, is not fixed (e.g. if a telescopic tie-rod is used). [2.1.10] As the first parallelogram is only realized with “rigid” tie rods 34, the feature “rigid” cannot be dissociated from the other features relating to the construction of the first arms and has therefore to be specified in claim 1, as it is now the case. [2.2] The ED further objected that the feature that “the mounting reciprocal configuration of arms, tie rods, first rod and tubular element were such that a variation of an angular position of the first rotor was transformed in a movement of the two first arms parallel to the two tie-rods, a movement of the tubular element parallel to the first rod, and a movement of said manipulator that always maintained the gripping means lying on a plane substantially parallel to the plane of manipulation” had no explicit basis in the originally filed application. [2.2.1] Although it is usually sufficient for fulfilling A 123(2) that an amendment has an explicit basis in the application as filed, this is in no way necessary. The test for deciding whether an amendment contains subjectmatter extending beyond the content of the application as filed is whether the skilled person would be presented with information which is not directly and unambiguously derivable from what was presented by the application as filed, even when account is taken of matter which is implicit to a person skilled in the art (Guidelines C VI-5.3.1, December 2007). [2.2.2] The objected feature specifies that when the first rotor 22b moves a) the two first arms 30 move parallel to the two tie-rods 34 and b) the tubular element 32 moves parallel to the first rod 37 so that c) the movement of the manipulator always maintains the gripping means lying on a plane substantially parallel to the plane of manipulation. This is thus nothing more than saying that each of the two elements (30/34 on one hand and 32/37 on the other) are the opposed sides of a parallelogram, since their lengths are fixed. Stating that the manipulator always maintains the gripping means lying on a plane substantially parallel to the plane of manipulation is nothing more than the direct consequence of the combined action of both parallelograms, as explained in points 2.1.6 and 2.1.7. [2.2.3] The objected feature is therefore directly and unambiguously derivable from the application as filed. […] [2.4] The board finds, for these reasons, that the requirement of A 123(2) is fulfilled. To read the whole decision, click here.
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T 394/06 – Substantiated Doubts Required
K’s Law – The ebook
T 394/06 – Substantiated Doubts Required 9 Apr 2010
[20] It is established case law of the boards of appeal that if an application is objected to for lack of sufficient disclosure, these objections have to be based on serious doubts which are substantiated by verifiable facts (T 19/90). [21] In its decision, the examining division (ED) has argued that the claimed subject-matter relating to vaccines based on the CASB7439 polypeptide was not sufficiently disclosed in accordance with A 83. There was no evidence derivable from the application or provided by the applicant that the sequences of the application had a therapeutic effect if used to treat a patient suffering from or susceptible to carcinoma, whereby the carcinoma is colon cancer or other colon-associated tumours or diseases. […] [22] The board notes that in its argumentation the ED, rather than applying it, has inverted the principle developed in the case law of the boards of appeal whereby it would be required to raise serious doubts which are substantiated by verifiable facts. Already for this reason the argumentation of the ED must fail to substantiate an objection under A 83. [23] The board notes furthermore that even if the approach taken by the ED were adequate the [applicant’s] arguments […] convincingly show compliance of the application with A 83 in the relevant aspects. [24] In particular, the [applicant] has shown that there is no reason to doubt that CASB7439, considered to be an intranuclear transcription factor, would not be suitable for producing vaccines for treating carcinoma patients. The [applicant] persuasively argued that in fact intranuclear proteins were constantly turned over in the cell and mechanisms existed which allowed such proteins to be processed and presented in MHC Class I complexes on the surface of cells including tumour cells. This was also true for transcription factors. Also other transcription factors could be used as an immunotherapeutic antigen (D10) and could naturally elicited immune responses in humans (D11 and D12). These data therefore showed that the epitopes contained in these transcription factors were presented to the immune system in an accessible way. Furthermore, document D13 presented data showing that CASB7439 was indeed effective as an immunotherapeutic treatment in a mouse tumour cell challenge model. [25] All the submissions of the [applicant] therefore support the conclusion that the disclosure of the application is sufficient. On the basis of the facts of this case, there are no serious doubts substantiated by verifiable facts which could justify an objection that the inventions was not sufficiently disclosed. [26] In view of the above considerations the board is satisfied that the claimed invention complies with the requirements of A 83. To read the whole decision, click here.
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T 516/09 – Assistant Going Crazy
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T 516/09 – Assistant Going Crazy 8 Apr 2010
It is one of the worst nightmares of a patent attorney to have an assistant who does not do what he/she is asked to do and even starts hiding facts and notifications. This appears to have happened in the present case where an application was deemed to be withdrawn because a communication under A 96(2) EPC 1973 was never answered. The decision deals with the request for re-establishment under A 122. [VI] The appellant essentially submitted that the loss of right was due to an isolated mistake in a normally satisfactory monitoring system and that therefore re-establishment of rights should be allowed. He described the monitoring system in his office as follows: Every mail, e-mail or fax from external parties or offices arrives at the central mail receiving department of the office. Here a stamp with a time-limit indication is put on the front page of the printed mail and registered in a central register. The appellant did not explain how the central register actually works. From the mail department, all mail goes to his desk or to another attorney’s desk according to the availability of either one of them for a first checking. After that the letter and the file are sent together to the department responsible for the file concerned. The assistant of the department presents the incoming mail, e-mail or fax together with the file to the responsible attorney. The attorney decides what needs to be done and gives the file back to the assistant with the corresponding instructions. If a request for extension of time-limit has been sent, the client is informed and the new deadline is communicated to him. There is a strict rule in the office that for each and every signature the file must be presented to the signatory. But under some circumstances it can happen that a letter is signed without the file. This can happen if somebody stores the file in the wrong place or if the file is in the annuity or accounting departments which are in another building. Under such circumstances, it is checked whether the letters have been sent to the right addressee and whether an answer has been received by checking the database of the office containing the letter sent and the correspondence received. A cross-check or another supervision system has not been described. The representative in this case submitted that in general after he has given instructions to the assistant he does not check the file any further but waits until a reaction on his action is given by the client or a third party. The system is based on trusting the assistants and the staff, assuming that they will do their job properly. The attorney assumes that the assistant will show him the incoming mail, e-mail, fax or put through the phone calls, execute his instructions properly and present him the file when necessary. On the other hand he claims to have a personal electronic reminder-system that reminds him of the files that have to be checked on a particular day or for specific reasons. Furthermore, so called “hot files” are put on a table in the department and the assistant and the attorney check them from time to time. “Hot files” are files in which a further extension of time-limits is no longer possible. A more detailed description of the monitoring system has not been submitted. In the present case, the assistant presented a request for extension of the time-limit to the representative three times without the paper file, giving restructuring in the office as the reason. She informed the representative that the time-limit extension was necessary because no instructions had been given by the client although the client was reminded that instructions are required. In all cases the representative signed the requests. He declared during oral proceedings that the third time he asked for time-limit extension he was well aware of the fact that he would not get a further extension and was waiting for the notice of loss of rights. The attorney submits that he could not check the paper file because it could not to be found, but he checked the electronic mail on the assistant’s computer on which he could see the e-mail reminding the client about the timelimit. Of course, no acknowledgment of receipt of the e-mail was in the file, but he submits that he had no reasons to assume that the assistant could have lied. On the other hand, he submits that it is very unlikely that he 3066 | 3398
T 516/09 – Assistant Going Crazy
K’s Law – The ebook
signed three requests for extension of time-limit without seeing the file. Although he does not remember when he checked the file, he considers that the central mail receiving department or the department to which the file was assigned would have discovered if requests for extension of time-limits were signed without checking the paper file and would have undertaken counter-measures. Therefore, it has to be assumed that he checked the file. He assumes that the assistant presented to him a “constructed file” in which the instructions from the client and the communications of the office were not present. In fact, the assistant had taken out of the file all the enquiries from the US agent and all communications of the Office including the notice of loss of rights and the notice on the refund of the renewal fee and hidden them between other papers. The assistant also intercepted all calls from the US representative. When the notice of loss of rights was received the assistant did not inform the attorney either and did not put the notice in the file. The time-limit for filing a request for further processing was registered by the central mail receiving department but, upon expiry of the time-limit, the assistant informed that department that the client had not given instructions and that the time-limit was to be deleted from the register. The attorney was not informed of all these actions. The central mail receiving department abandoned the application without requiring a confirmation from the attorney. This is possible in the office because it is not unusual that clients do not give instructions on the file or do not pay and in these cases the applications are abandoned. The representative submits that he had no reasons to think that the file he saw was not the real file, that he also had no reasons to call the client and ask for instructions because it is usual that clients do not give instructions even after having received reminders, that he also had no reasons to check the file in the electronic database of the EPO because often it takes months before the EPO answers requests for extensions of time-limits. After having filed the third request for extension of the time-limit he was aware of the fact that this request was very likely to be refused and the file was put on the table dedicated to “hot files” and this was a sufficient measure to monitor the file because this meant that the file would be checked from time to time. He could not say how often the “hot files” had been checked. In any case, since the assistant had taken out of the file all communications from the EPO, it was impossible for him to recognise what happened. Even if he had seen that the fee was reimbursed, he had considered that this was not unusual because clients often pay fees twice. He did not ask the US representative to get a copy of the lost or misplaced file because this would be embarrassing for himself or his office. The representative was informed of the loss of rights only on 14 November 2005 when the US representative of the applicant called him late in the evening. This call to enquire why the application was deemed to be withdrawn according to the EPO online register was not intercepted by the assistant because she had gone home. At this moment the representative started an intensive search for the paper file, found the hidden papers and discovered what had happened. At that moment he also realised that the assistant was probably having mental problems and dismissed her immediately. The assistant responsible for the file had been working in the representative’s office since 1 June 2002 and was a responsible person, who had never made a mistake before. The attorney had no reason not to trust her. He never recognized any negligence concerning her duties while she was working with him. He cannot explain why she acted as she did. He assumes that she had mental health problems. He considered that he applied all due care required by the circumstances because it is not possible to implement a monitoring system that enables someone to discover such unusual behaviour. An attorney has to trust his assistant and cannot check everything himself. Since one and the same person was acting all the time and in both cases in which the problems arose, it has to be considered that it was an isolated mistake in a normally satisfactory monitoring system. The representative compared the present case with the case decided in J 7/99, in which the representative gave up prosecuting the application due to a mental block and with the case decided in J 2/98, in which the representative had mental health problems. Here is the reaction of the Board: [2] The request for re-establishment of rights into the time-limit to request further processing is not allowable because it was not shown that the time-limit was missed despite all due care required by the circumstances has been applied (A 122). [2.1] Primarily it is up to the applicant to show due care. If third parties act for him by virtue of the delegation implicit in the appointment of the professional representative, the applicant who has delegated the duty to exercise all due care has to accept their actions on his behalf (see J 5/80). 3067 | 3398
T 516/09 – Assistant Going Crazy
K’s Law – The ebook
The representative in his turn can delegate routine tasks to assistants. In this case, it is incumbent upon the representative to choose for the work a suitable person, properly instructed in the tasks to be performed, and to exercise reasonable supervision over the work. If the representative is able to prove that he did so, he can succeed in re-establishment (see J 5/80). The jurisprudence considers that the representative has discharged his burden of proof, when it is proven that the time-limit was missed due to an isolated mistake in a normally satisfactory system for monitoring time-limits. [2.2] It results from the submissions of the representative that the system in his office was principally based on the assumption that staff would follow the rules of the office and the instructions given by the attorney, but it has not been shown to the Board, considering the so implemented system, how possible failures could be detected and remedied in due time. Even considering in favour of the appellant that all delegated tasks were routine tasks and assuming that all submissions were proven, it results from the submissions that, in the present case, it was possible for the assistant to act several times, on her own motion, in an inappropriate and detrimental way, over a period of time of more than one year and even to give instructions to other employees or departments which led to the abandonment of the application without any warning being activated by the system or countermeasures adopted by staff. In particular, it was apparently possible at least in two cases (the present one and the case concerning Euro-PCT application No. 00917730.4) that the assistant ordered, and the central mail receiving department responsible for time-limits deleted, the time-limits for further processing after the issue of a notice of loss of rights - an action which had fatal consequences for the applications - without the responsible representative and the client being informed and their approval being requested. It was not submitted that a cross-check system or other measures have been implemented in order to avoid such critical situations. Even if it was one and the same person acting, it cannot be said that the time-limit was missed due to an isolated mistake. The time-limit was missed due to a series of measures taken by the assistant on her own motion which were not detected over a period of more then one year because, according to the submissions in the present case, neither cross-check nor other supervisory mechanism was present in order to avoid wrong behaviour of employees or failures in the proper execution of their duties, particularly when the employees are acting on their own motion. Even if it is assumed in favour of the appellant that the assistant had mental health problems, the decisions cited are not relevant because in those cases it was the representative himself who could not exercise his functions properly due to mental health problems. In the present case, it is not submitted that any physical or mental health problem would have prevented the appellant’s representative from monitoring a file or supervising an employee’s work. The Board holds therefore, that it was not shown that the supervision of the work of the assisting staff was sufficient to avoid repeated failures. It has therefore not been proven that all due care required by the circumstances was applied. To read the whole decision, click here.
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T 378/08 – Imprecise But Clear
K’s Law – The ebook
T 378/08 – Imprecise But Clear 7 Apr 2010
[5.2] Claim 5 is amended over claim 14 as granted by reciting that the aluminium alloy of the workpieces is a corrosion-resistant precipitation hardened high-strength aluminium alloy. This feature is disclosed, in a general context (thus also applying to the embodiment according to claim 5), [in] the application as filed. The [opponent] objected to this feature under A 84 as introducing no clear limitations. It is accepted that the terms “corrosion-resistant” and “high-strength” are relative terms. However, their lack of precision does not entail a lack of clarity within the meaning of A 84. The skilled person is indeed aware that precipitation hardened aluminium alloys are generally regarded as highstrength aluminium alloys (precipitation hardening in fact is one of the most widely used mechanisms for the strengthening of metal alloys). The skilled person is also aware that some aluminium alloys can be classified as corrosion-resistant due to their corrosion-resistant properties. The skilled person thus understands the meaning of the above-mentioned terms in the given context so that the claim as now worded is susceptible of an interpretation which strikes an appropriate balance between legal certainty and fair protection. To read the whole decision, click here.
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T 378/08 – Oral Proceedings Aren’t Boot Camps
K’s Law – The ebook
T 378/08 – Oral Proceedings Aren’t Boot Camps 6 Apr 2010
[2.1] The presence of the person accompanying the professional representative of the respondent at the oral proceedings (OPs) was announced by letter dated 23 October 2009. The last paragraph of this letter reads as follows: “Please be informed that I will by accompanied by Mr. M. Beck who has a bachelor in law and is preparing for the EQE. I assume that you will allow him to make oral submissions during the hearing, under my continuing responsibility and control”. The letter did not specify the subject-matter of the proposed oral submissions. During the OPs the professional representative specified that the accompanying person would present arguments in respect of inventive step. She submitted that the accompanying person had followed the case in the past and had excellent technical knowledge of the matters at issue. Moreover, since the accompanying person was preparing for the EQE, he should be given a training opportunity. [2.2] The Board, having regard to the requirements set out in G 4/95 for an accompanying person to be allowed to make oral submissions, rejected the respondent’s request for the following reasons. The letter of 23 October 2009 did not include a formal request to allow the accompanying person to make oral submissions and in any case the generally-worded statement of the respondent did not specify the subject-matter of the proposed oral submissions (G 4/95 [headnote points 2(b)(i) and (ii)]). More details were given for the first time at the OPs. At that time the professional representative, however, did not convince the Board of the presence of exceptional circumstances justifying the accompanying person to make oral submissions, and the appellant did not give its agreement to the making of the oral submissions requested (G 4/95 [headnote point 2(b)(iii)]). No reasons were given why the professional representative herself might not be in a position to fully present her case on inventive step. Furthermore, although it is not denied that OPs before the EPO might, under appropriate circumstances, provide a possible training opportunity for prospective professional representatives (e.g. when they are present as members of the public), this must remain subordinate to the conduct of OPs in accordance with its true purpose, which does not include the training of future professional representatives. To
read
the
whole
NB: This decision has also been commented by Laurent Teyssèdre.
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decision,
click
here.
T 775/07 – Is It Essential ?
K’s Law – The ebook
T 775/07 – Is It Essential ? 5 Apr 2010
One of the must-know decisions for EQE candidates is T 331/87 wherein the Board defined the so-called “essentiality test”, which allows to check whether an amendment that comprises the deletion of features from a claim is allowable. The present decision shows how this test may be applied in real life. Once again the EPO confirms its reputation of being extremely strict on “new matter”. [2.1] In the present case, the feature that the hands-free towel dispenser comprises “a solar panel for energising said control circuitry” (feature f)) has been removed from claim 1 as originally filed. An amendment that deletes a feature from an independent claim is only allowable if the skilled person would directly and unambiguously recognise that i) the feature in question was not explained as essential to the invention, ii) the feature is not indispensable for the function of the invention in the light of the technical problem it serves to solve, and iii) replacement or removal requires no real modification of other features to compensate for the change (Guidelines C-VI, 5.3.10 and decision T 331/87). In the present case at least the third criterion is not fulfilled. [2.2] As described in the application as filed […] the solar panel is utilised for energising the control circuitry […]. No other alternative power source for energising the control circuitry is disclosed in the application as filed. The removal of feature f) i.e. the solar panel for energising the control circuitry from claim 1 as originally filed requires modification of the feature d) (an electric power source for powering said dispensing means) since in that case the electric power source should also be used in place of the solar panel for energising the control circuitry. The [patent proprietor] argued that a battery is already provided for powering the dispensing means, i.e. the motor of the dispenser […] and that it would therefore be obvious for a skilled person that this battery could serve as an alternative power supply for the control circuitry. However, only what is directly and unambiguously derivable from the originally filed application, taking into account matter which is implicit (not merely obvious) to a skilled person can serve as a basis for an amendment. In the case of a battery used to power the dispenser, it is not implicitly disclosed that the battery is also used to energise the control circuitry, since no other alternative power than the solar panel is disclosed in the application as originally filed. Nor would such an interpretation be unambiguously derivable for the person skilled in the art. […] [2.4] The [patent proprietor] argued that there was no functional or structural relationship between the control circuitry and the solar panel inasmuch as the jamming problem was concerned. He further referred to decision T 962/98 to illustrate that an intermediate generalisation (from solar panel to power supply) could be admissible under A 123(2). The Board cannot agree with this point of view. In the present case, the subject-matter generated by the amendment from “solar panel” to the more general “power supply” involves added subject-matter, because no other power supply than the solar panel has been originally disclosed for energising the control circuitry. The fact that the control circuitry could be energised by an unspecified power supply is clearly new information which is not directly and unambiguously derivable from the originally filed application. [2.5] Accordingly, the removal of the feature “solar panel” in claim 1 of the main request and of the fourth auxiliary request contravenes the requirements of A 123(2) (A 100(c)). To read the whole decision, click here.
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T 911/07 – Miss M. May Make Mistakes
K’s Law – The ebook
T 911/07 – Miss M. May Make Mistakes 3 Apr 2010
The present decision deals with a request for restitutio in integrum (A 122). The professional representative had filed an appeal against the decision of the Opposition Division to maintain the opposed patent in amended form but his assistant, Mrs. M., although instructed to pay the appeal fee, had omitted to do so. The decision, although not very exciting in itself, gives a nice overview over the actual case law concerning reestablishment in situations where a professional representative has entrusted certain routine tasks to an assistant. [4] A 122 provides for an applicant who, in spite of all the due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the EPO, thereby losing a right or other redress, to have his rights re-established upon application subject to the conditions referred to in paragraph 1, above, being met. It is the established jurisprudence of the Boards of Appeal that A 122 is intended to ensure that, in appropriate cases, the loss of substantive rights does not result from an isolated procedural mistake within a normally satisfactory system (J 2/86 and J 3/86). [5] Whether or not a request for re-establishment of rights may be allowed, depends on whether or not the applicant can show that all the due care required by the circumstances of the particular case was in fact taken to comply with the time limit. With respect to due care, the following principles relevant to the present case were laid down by the Board in J 5/80: [6] (1) When an applicant is represented by a professional representative, a request for re-establishment of rights cannot be acceded to unless the representative himself or herself can show that he or she has taken the due care required of an applicant or proprietor by A 122(1). (2) If the representative has entrusted to an assistant the performance of routine tasks, the same strict standards of care are not expected of the assistant as are expected of the applicant or his representative. [7] As regards the foresaid first condition, the Appellant relied on a computerised time limit monitoring system by which the time limits were checked by himself and his assistant. The Appellant gave proof of these facts by his own sworn statement, the declaration of his assistant and a hard copy of a monitoring list of the computer system. In the Board’s view, this reminder system can be assessed as normally satisfactory to ensure compliance with time limits under the EPC. The double check by the representative and its assistance can be considered a cross check as required by the established case law. There was no need to monitor the time limit for the payment of the appeal fee separately. For the Board it is credible that in the representative’s firm, unless otherwise ordered, the assistant signed and added EPO Form 1010 to the notice of appeal whereby payment of the appeal fee was ensured by reduction from the deposit account. Even if the examples of the EPO Forms submitted by the Appellant do not clearly show whether or not they were signed by an assistant, the statement of the representative and his assistant seems to provide convincing proof that the general rule existed at least in the department where the Appellant’s representative worked. [8] In the present case, the question arises whether or not the representative’s duty of care relating to the filing of the appeal ceased when he handed over the notice of appeal to his assistant. As a rule, the representative is not obliged to monitor that the outgoing mail is made ready for posting and delivered to the postal service. Such a task can be entrusted to an assistant because the issuance of a letter causes no difficulties. Although the payment of the appeal fee is a crucial event in the appeal proceedings which normally needs special care, the Board can accept the Appellant’s submission that in the monitoring system of its firm the task to file EPO Form 1010 together with the notice of appeal can be considered a routine work which can be trusted to an assistant because no legal or factual difficulties are to be expected in performing this. [9] As regards the lower standard of care for assistants as mentioned in point 6(1) above, the jurisprudence of the Boards of Appeal (J 5/80; T 191/82; T 43/96) only excuses under A 122(1) a singular mistake or error of the employee when this person had been suitable selected, properly instructed and reasonably supervised. In this regard the Board sees no reason to question the statements made by the representative and his assistant. According to these statements, the assistant was well trained and long experienced in the tasks of a patent 3072 | 3398
T 911/07 – Miss M. May Make Mistakes
K’s Law – The ebook
assistant and in particular fully acquainted with all deadlines and fees to be paid in proceedings before the EPO. The fact that the notice of appeal was filed in due time allows the conclusion that a clear order was given by the representative and that the assistant’s omission to add EPO Form 1010 to this notice was a singular mistake within an otherwise satisfactory system and which could not be detected by the representative in the circumstances of the present case. As regards the routine work of adding EPO Form 1010, the Board holds that in the present case the representative could rely on the oral confirmation from the assistant that the notice of appeal was filed and no further supervision was required. [10] As all requirements pursuant to A 122(1)-(3) are fulfilled, re-establishment of rights can be granted. Consequently, the appeal is admissible pursuant to A 106 to A 108. Alas, the requests were finally found to lack inventive step and the appeal was dismissed. To read the whole decision, click here.
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T 1533/07 – Don’t Lump Together Novelty And Priority
K’s Law – The e
T 1533/07 – Don’t Lump Together Novelty And Priority 2 Apr 2010
It is a vital thing for a European patent attorney to have a perfect command of the concepts behind novelty and priority (“same invention”). The present decision demonstrates in a very pedagogic manner that these concepts, albeit not unrelated, must not be mixed up with each other. In other words: the novelty test is not to be used in the assessment of the validity of a priority claim. Claim
1
according
to
the
main
request
read:
A lining or shape element for means of transportation, comprising at least one microperforated sheet absorber having a proportion of hole area of from 0.2 to 4%, wherein the holes of said microperforated sheet absorber for the microperforation have one or more diameters within a range of from 0.05 mm to 2 mm and one or more interhole distances within a range of from 1 mm to 20 mm, and at least one foam and/or non-woven absorber at a spatial distance from a reverberant wall. [6] According to decision G 2/98 [9] of the Enlarged Board of appeal the expression “same invention” in A 87(1) EPC 1973 is to be interpreted narrowly and the priority of a previous application in respect of a claim is to be acknowledged only if the person skilled in the art can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole. This means that a particular embodiment cannot validly claim the priority of a generic embodiment disclosed in a previous application if the previous application does not disclose the particular embodiment. It follows that if the subjectmatter of the claim comprises ranges of values or specific values, these ranges or values have to be comprised directly and unambiguously in the previous application on which the priority claim is based (see T 136/01, T 788/01). This requirement is not fulfilled in the present case because the upper limit of 4 % for the proportion of hole area is neither disclosed in [the first priority document] nor deductible from [this document] using common general knowledge. As the priority of [said document] is not validly claimed (A 87(1) EPC 1973) document D1a as a whole is prior art under A 54(3) for claim 1 […] because of its date of publication. The argument of the [patent proprietor], according to which the validity of the priority claim directly results from the alleged ground that the range of values of from 0.3 to 4% and the value of 4% for the proportion of hole area is not novel in view of the ranges 0.3 to 10% and 0.5 to 5% disclosed in [the first priority document], is in contradiction with the principles of decision G 2/98 and misconceives the essence (Wesen) of this decision. These principles, which clearly require the unambiguous disclosure of the presently claimed subject-matter in the previous application, have been developed in order to create a safe legal situation for the assessment of the validity of priority claims. This safety was not provided by the prior case law and its criteria, as has been shown in G 2/98. For instance, in the present case, it is not directly apparent why a proportion of hole area of 4% would not be novel in view of the ranges of values disclosed in the [first priority document]. On the other hand, a proportion of hole area in the range of 0.3% to 4% is clearly not novel in view of the ranges of values disclosed in the [first priority document] because the lower limits of 0.3% are the same, irrespective of the upper limit. It remains unclear why in such a case the priority of the [first priority document] was validly claimed, as submitted by the [patent proprietor], because the ranges of domains are clearly different, due to the different upper limit. [7] The subject-matter of claim 1 is not novel over D1a. […] The proportion of hole area of the sheet absorber according to D1a lies between 3% and 10%. As a consequence, a proportion of hole area of between 0.3 and 4% […] is known from D1a. […] [8] There is one more thing to be said with respect to the submission of the [patent proprietor]. Contrary to the opinion of the [patent proprietor], the use of the criteria which, according to the established case law, are used for the assessment of a selection invention (see T 279/89) were not applied in an inconsistent manner in the assessment of validity of the priority claim (see paragraph [6] above) and in the assessment of novelty of claim 1 with respect to D1a (see paragraph [7]). As a matter of fact, this was not even possible in the present case 3074 | 3398
T 1533/07 – Don’t Lump Together Novelty And Priority
because the subject-matter of claim 1 cannot possibly be a selection invention, since D1a discloses a concrete and explicit embodiment having values which all are comprised in the claimed range of values. As in the assessment of said questions well defined, different and established criteria have been applied, wherein the concept of selection invention is irrelevant, it is not apparent where a contradiction arises. To read the whole decision (in German), click here.
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K’s Law – The e
T 1533/07 – Insolvent Yet Alive
K’s Law – The ebook
T 1533/07 – Insolvent Yet Alive 1 Apr 2010
The present decision deals with another case of bankruptcy during opposition proceedings; it contains some interesting statements on a little known rule: R 84. [2] The [opponent’s] request for a suspension of the proceedings, based on an analogous application of R 84(2), the wording of which is identical to the wording of R 60(2) EPC 1973, cannot be granted, for the following reasons. The opposition proceedings can be continued by the EPO of its own motion if the opponent dies or loses its legal capacity (R 84(2)). This rules allows to continue the opposition proceedings without the participation of the heirs or the legal representative of the opponent, which is in the interest of speedy proceedings. Therefore, it is not necessary to wait for the identification of the heirs and the acceptance of the heritage or the appointment of a legal representative (see Singer/Stauder, Europäisches Patentübereinkommen, 4th edition, Article 101, paragraph 70 et seqq. [NB : paragraph 84 et seqq. in the 3rd English edition]). In the present case, on September 1, 2009 the German district court in Worms decided to open insolvency proceedings against the opponent, who is a legal person, and to appoint a liquidator (Insolvenzverwalter). Together with the opening of the insolvency proceedings the court decided to bar the debitrix from disposing of its present and future assets (Vermögen) during the insolvency proceedings. The administrative powers and the power of disposal were transferred to the appointed liquidator (see also § 80(1) and § 35 of the German Insolvency Regulations (InsO)). Therefore, the [opponent] has lost the administrative powers and the power of disposal concerning its assets, to which the opponent status belongs (see also G 4/88). However, there is no loss of legal capacity of the opponent as mentioned in R 84(2), first sentence (see Schulte, Patentgesetz mit EPÜ, 8th edition, introduction, paragraph 176) so that this rule could at most find an application by analogy. The Board is of the opinion that in the present case even an analogous application of R 84(2) is not to be considered, because a liquidator has been appointed and named in the decision opening the insolvency proceedings. Therefore, the situation corresponds to none of the cases governed by this rule. According to German insolvency law the appointed liquidator is party as of right as a consequence of the decision to open the insolvency proceedings (see decision of the BPG dated Mai 21, 2007 – 27 W (pat) 37/06, BIPMZ 2008, 26). Therefore, the appointed liquidator has become a party to the present proceedings by means of a legal change of party (im Wege gesetzlichen Parteiwechsels) and has replaced the opponent and appellant. Thus the proceedings were to be continued with the liquidator as party as of right (kraft Amtes) (see also T 917/01). The arguments brought forward in favour of a suspension of the proceedings in analogous application of R 84(2) did not persuade the Board. Moreover, the possibility of such an analogous application appears doubtful because it would be in conflict with the purpose of the rule as explained above. The question may be left aside whether in order for the proceedings to be complete, in view of the grounds for opposition and the cited prior art, which allegedly could not be evaluated without extensive investigations of the Board, submissions, and therefore, the presence, of the liquidator or his representative in the oral proceedings were required. The liquidator had been appointed as of September 1, 2009, by decision of the court. Therefore the Board is of the opinion that there was enough time for preparing the oral proceedings summoned for October 6, 2009 and, as the case may be, for a consultation with the previous appointed representative whose power of attorney issued by the opponent had lapsed pursuant § 117(1) InsO by the opening of the insolvency proceedings, and for issuing a power of attorney for a representative. As a matter of fact, the liquidator has issued a power of attorney to the representative who previously acted in the present proceedings, before the oral proceedings, so that the representative was able to argue the case. The open question as to which companies and domains of the conglomerate of companies subsumed under the name of the opponent are to be continued as such may be relevant for the insolvency proceedings. However, this question could not be taken into account in the present proceedings because it would have considerably delayed 3076 | 3398
T 1533/07 – Insolvent Yet Alive
K’s Law – The ebook
the proceedings, which is neither in the interest of speedy proceedings nor acceptable (zuzumuten) to the [patent proprietor]. I shall come back on this decision tomorrow. To read the whole decision (in German), click here.
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T 1333/07 – You Can Disprove Effects Without Experiments
K’s Law – The e
T 1333/07 – You Can Disprove Effects Without Experiments 31 Mrz 2010
[5.1] During the oral proceedings (OPs) before the Board, the [patent proprietors], after having been informed that the main request was not considered allowable, pointed out that if the reason for the rejection of the main request was the lack of evidence for a technical effect, then it regarded this finding of the Board as amounting to a fundamental violation of A 113, because the superior technical effect of the claimed screw extruder had not been challenged by the opponent on the basis of any substantive data and the existence of such an effect was challenged for the first time by the Board during the OPs without acceding to the [patent proprietors’] request to remit the case to the Opposition Division (OD) to afford the [patent proprietors] an opportunity to provide such evidence. [5.2] The [patent proprietors’] assertion that the technical effect had never been challenged by the [opponent] is not in agreement with the facts. [5.2.1] This point, i.e. the absence of a technical effect due to the use of multiple thread starts, was raised by the [opponent] in the Statement of Grounds of Appeal. [5.2.2] Moreover, the Board in its preliminary opinion dated 22 July 2009 observed that it was to be discussed during the OPs, inter alia, what was the problem to be solved and whether the problem was actually solved within the whole claimed area. [5.2.3] The [patent proprietors] even commented on this issue in its letter of 25 March 2008 […] Finally, this issue was discussed in detail during the OPs before the Board. [5.3] In view of these facts, the Board can only come to the conclusion that the [patent proprietors] had sufficient opportunity to defend themselves against the attack of the [opponent] based on the absence of a technical effect of the claimed subject-matter, which it duly did before and during the OPs. [5.4] Insofar as the [patent proprietors] relies on the lack of experimental data in the argument of the [opponent], it is noted that, according to the Boards’ case law, alleged advantages which the patent proprietor asserts, without offering sufficient evidence to support the comparison with the closest prior art, cannot be taken into consideration in determining the problem underlying the invention and therefore in assessing inventive step (see Case Law of the Boards of Appeal of the EPO, 5th edition, 2006, I.D.4.2). Additionally the evidence on file in fact challenges the assertions of the [patent proprietors]. As to the [patent proprietors’] argument that in opposition proceedings the burden is on the Opponent to disprove any effect accepted by the granting authority, this obligation has been met, as set out above. The Board notes in this respect that in order to meet this obligation it is sufficient to establish a reasonable case, which does not necessarily require experimental evidence. In the Board’s judgment, the [opponent] has met this obligation by casting considerable doubt on the unsupported allegations of the patent in suit. [5.5] Article 12(2) of the Rules of Procedure of the Boards of Appeal (RPBA) states that the Statement of Grounds and the reply shall contain a party’s complete case. Amendments to a party’s case are only possible under the conditions of Article 13(1) and (3) RPBA. The request to be allowed to present new evidence in further proceedings before the OD would be contrary to Article 13(3) RPBA. Consequently, the Board refused the [patent proprietors’] request for remittal of the case to the OD for further prosecution. To read the whole decision, please click here.
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T 1333/07 – Credible Cause ?
K’s Law – The ebook
T 1333/07 – Credible Cause ? 30 Mrz 2010
In a recent post we have seen a decision examining the credibility that a given problem had indeed been solved. Once it is established that the problem has been solved, it remains to be demonstrated or at least made credible that the claimed features are at the origin of the effect. [4.2.5] The Board agrees with the Respondents that the extruders used in the examples of the patent in suit show improved efficiency when compared with those of D2. There is however no evidence that this improvement is due to the distinguishing feature of the claim, namely the number of thread starts. On the contrary the comparison between experiments 10 and 11 discussed above undisputedly question that this is the case. [4.2.6] In addition to the results in the patent, the Respondents relied during the oral proceedings on paragraph [0007] of the specification in order to establish that an increase of performance has been achieved. According to this paragraph it was possible to dramatically increase the performance of an extruder when used in the manufacture of ice cream by: (a) operating with a pitch angle which is outside what has been used up until now in the manufacture of ice cream, (b) operating with screws which have more than one thread start, whereas up until now screws with only one thread start have been disclosed, and (c) operating with extruders which are much shorter than what has been used up until now. [4.2.7] The Board notes: that feature (a) is not a distinguishing feature of the claimed extruder; that the results in the Table of the patent question the affirmation of the Respondents that feature (b) is responsible for the increased performance of the extruder; and that feature (c) is not a feature of the subject-matter of Claim 1 of the main request. With respect to feature (b) the Board notes furthermore that, in the absence of supporting evidence, an improved performance of an extruder having a screw with more than one thread start over an extruder with a single threaded screw is not per se credible, because given the complexity of the parameters influencing the rheological properties in an extruder, this feature by itself can in all probability not be assumed to influence the cooling performance in the desired fashion independently of other parameters. The Board thus concludes that an improvement of the efficiency of the extruder relating to the distinguishing feature of the invention is not derivable from the patent in suit. Reformulation of the problem and its solution [4.3.1] In view of the above, an improvement of the energy efficiency of the extruders according to Claim 1 cannot be acknowledged as the objective technical problem underlying the invention as claimed in the main request. As a consequence, the problem has to be reformulated in a less ambitious manner, not involving such improvement. [4.3.2] The objective problem can thus be reformulated as the provision of further screw extruders for the manufacture of ice cream. [4.3.3] It is not disputed that this less ambitious problem is solved by the claimed single screw extruders having between 2 and 6 thread starts according to Claim 1 as it is an alternative design when compared to that of D2. Obviousness [4.4.1] The question which remains to be decided is whether this solution involves an inventive step, that is to say, if in view of the reformulated problem the claimed subject-matter is obvious or not.
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T 1333/07 – Credible Cause ?
K’s Law – The ebook
[4.4.2] In the absence of an improvement of the efficiency of the extruder, the use of a screw extruder with more than one thread start is regarded by the Board as obvious for the skilled person and therefore lacking inventive step. [4.4.3] The reason for this conclusion is that it is undisputed that multiple thread starts are well known in the design of screw extruders (see, for instance, D40). Moreover extruders with multiple thread starts have already been used in the manufacture of ice creams, for instance in Example 1 of D7. [4.4.4] As this finding was not disputed by the Respondents, who even admitted during the oral proceedings that if the improvement of the efficiency of the extruder was not accepted, there was no inventive step in the use of a screw with multiple thread starts, no further comments are needed. [4.5] For the reasons set out above the subject-matter of Claim 1 of the main request lacks inventive step. Normally this less-ambitious-problem situation precedes the revocation of the patent for lack of inventive step. In the present case, however, the third auxiliary request (claiming a screw extruder with a screw having between 2 and 6 thread starts and a screw length/screw diameter ratio of between 2 and 10) was found to involve an inventive step, not because it solved a more ambitious problem, but because use of such screws was not known or suggested in the prior art. To read the whole decision, please click here.
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T 392/07 – On Juxtaposition
K’s Law – The ebook
T 392/07 – On Juxtaposition 29 Mrz 2010
In the present case the examining division rejected the application, since the claimed method of identifying an integrated circuit (IC) was a juxtaposition or aggregation of features known from the prior art and did therefore not involve an inventive step. The Board comes to the same conclusion. [3.2] The method of claim 1 differs from the identifying method disclosed in D5 in that the IC is additionally marked with a machine readable optical identification code which corresponds with the electronic identification information. [3.3] The applicant argued that it was the objective technical problem to create a technique which enabled traceable identification of the individual IC chips through the various manufacturing process steps […]. The board understands this statement of the problem as being directed to the identification of the ICs and not to the identification of the IC chips, as the latter are not a feature of claim 1 and, in particular, since an identification mark on the IC can hardly be seen once the IC is encapsulated in its housing. [3.4] Document D8 discloses a dense bar code, particularly useful in the identification of semiconductor wafers and/or chips in very large scale IC manufacturing processes where space on chips and wafers is at a premium. [3.5] Documents D5 and D8 hence disclose tools for identifying ICs either electronically, as in D5, or optically, as in D8. They are concerned with the tools themselves, i.e. how the coding of the information is done in each case. When to use these tools, whether or not to use more than one tool and how to combine these tools when more than one is used, these questions are left open in these documents to the discretion of the skilled person facing a specific situation. [3.6] The board considers that a skilled person, having the task of providing a further identification on the IC, would use the optical identifier disclosed in D8, as it is an identification method specifically designed for identifying ICs. Both identifiers, the electronic and the optical, correspond forcefully with each other, as they identify the same object. They are two pointers pointing to the same spot. Thus the functional interrelationship between both markers adduced by the appellant applicant is nothing more than the consequence of both markers identifying the same circuit. The board is unable to imagine how two identifying markers of the same object could not correspond to each other. The problem allegedly underlying the present invention, namely traceable identification of the individual IC’s through the various manufacturing process steps, is independently solved by the electronic and the optical identifiers. They differ in that for reading the former electric contact with the IC is required, while for the latter it is not. A more appropriate formulation of the problem would be therefore allowing contactless traceable identification of the individual IC’s. To this problem an optical identification code is a straightforward solution. [3.7] The applicant argued that the use of both identification marks provided a greater security than the prior art approaches and had thus a synergistic effect. Apart from the fact that the application does not disclose any security concerns, the board is unable to recognize how the security would be improved by providing two points of attack. In order to interpret a code the coding has to be known. This applies to the electronic and optical identifiers of the prior art as much as to the double system of the application. The board cannot recognize any added security in the claimed identification scheme, since the information encoded in each identifier is revealed when it is decoded. As in the prior art, each identifier encodes the information independently from the other, since one identifier has not to be decoded for accessing the other identifier. The [applicant’s] argument that by decoding only one of the identifiers only a part of the encoded information is revealed is true, but nothing else could have been expected, since by breaking a code only the part of a message encoded with that code is revealed. [3.8] The appellant applicant further argued that the provision of the optical marking allowed identifying the IC even when the electronic information could no longer be accessed due to failure of the circuit. This, however, only underlines the independence of both identifiers and refutes the presence of a synergistic effect.
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T 392/07 – On Juxtaposition
K’s Law – The ebook
[3.9] In the board’s view, the identifying method of claim 1 is an aggregation of features which are in themselves known from documents D5 and D8. Although most inventions are formed by features which are in themselves known from the prior art, for a finding of non-obviousness these features would have to interact with each other to provide something that is more than the sum of the parts. Absent synergy the whole is not more than the sum of its parts, i.e. an aggregation of features, as correctly objected by the examining division. [3.10] The board judges, for the above reasons, that the method of claim 1 of the main request does not involve an inventive step. This decision is interesting because it involves a concept that is not so often present in EPO decisions: the concept of juxtaposition, i.e. the aggregation of features the effect of which does not go beyond the sum of the effects of the individual features (in other words, there is no synergy between the features). This notion was very common in French case law prior to the alignment of French law with the Munich convention. Maybe this is the reason why it has some “vintage” flavour to me. The notion of juxtaposition is not without danger, because it is of course possible to have a patentable juxtaposition of known elements, in particular if at least one of the known elements was disclosed in an A 54(3) document only (which is not the case here). Therefore, I would say that the reasoning of the Examining Division and the Board using the short cut “juxtaposition” (thereby following the Guidelines C-IV 11.7) is incomplete. Methinks that it would have been preferable to use the traditional problem-solution approach, starting from either D5 or D8 and showing that the combination of features was obvious. The fact that the claimed device appears to be a juxtaposition of features disclosed in D5 and D8 is indeed a strong indication that the combination was obvious, but it is not as such formal proof for lack of inventive step. To read the whole decision, click here.
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K’s Law – The ebook
R 9/09 - For Pros Only
R 9/09 - For Pros Only 27 Mrz 2010
The present petition for review was filed by the patent proprietor after its appeal against the revocation of the patent by the Opposition Division had been dismissed by the Board of appeal. During the appeal proceedings, the patent proprietor was represented by a professional representative, accompanied by Dr Illescas, its Spanish legal practitioner, who later on represented the patent proprietor before the Enlarged Board (EBA). [1.4] Pursuant to R 106, a petition under A 112a(2)(a) to (d) is only admissible where an objection in respect of the alleged procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal, except where such an objection could not be raised during the appeal proceedings. The present petition refers to three procedural violations :
refusal of the request for postponement of the oral proceedings (OPs), admission of Dl0 as a late filed document into the proceedings, refusal of the request to postpone the OPs for carrying out comparative experiments with respect to D10.
It may appear that the first and third alleged violation are based on the same facts as for both violations the refusal of the postponement of the OPs is at issue. Nevertheless the EBA considers both as independent with respect to the fact that the petitioner repeated during the OPs its request for postponement in order to conduct the said tests. Accordingly, all three allegations have to be examined by the EBA in its composition according to R 109(2) (a) with respect to whether the petition is clearly inadmissible or not in view of R 106. [1.5] The first alleged violation under A 112a refers to the petitioner’s request for postponement of the scheduled OPs with respect to its new representative appointed on 15 September 2008. It argued that this new representative needed a longer period than only one month to get familiar with the complex technical impact of the case and to discuss the case with its client in a meeting in Madrid. Refusing this request with a communication dated 24 September 2009, the Board would have violated the respondent’s right to be heard under A 113. However, the Technical Board refused this request because serious substantive reasons for postponement of OPS pursuant to items 2.2 and 2.3 of the Notice of the Vice-President DG3 dated 16 July 2007 concerning OPs before the boards of appeal of the EPO were not given. This lack of substantive reasons results from the fact that all the arguments provided by the appellant are the consequence of the appellant’s own decision to change its representative. And indeed the representative of the petitioner did not raise objections pursuant to R 106 against the Board’s decision not to postpone the OPs. Accordingly, as far as the petition is based on this first objection, it is clearly inadmissible (R 109(2) (a) in combination with R 106 and R 108(1)) [1.6] The second alleged violation concerns the admission of D10 although it was late filed. Also in respect of this second objection the EBA has no indication that the requirements of R 106 are fulfilled. The petitioner submitted only the request to refuse Dl0 as late filed before and during the OPs. But there is no hint neither in its petition nor in the minutes nor in the contested decision that it raised during the OPs an objection under R 106 with respect to a procedural defect in the sense of A 112a(2) (c) and (d) after the Board had taken its decision to admit Dl0 into the proceedings. The EBA has no doubts that during the OPs the petitioner made clear that it does not share the Technical Board’s view on the admission of this document. However this is not an objection in the sense of R 106. This rule requires a separate objection directed to the procedural defect. This is mandatory in order to give the Technical Board an opportunity to revise the alleged procedural defect and to reserve the petitioner’s right according to A 112a. Consequently, also as far as the petition is based on this second objection the petition is clearly inadmissible. [1.7] The third objection relates to the refusal of the appellant’s request to postpone the scheduled OPs for carrying out comparative tests with respect to D10. The petitioner submitted that the Board hindered it from 3083 | 3398
K’s Law – The ebook
R 9/09 - For Pros Only
showing that the requested comparative tests would have been necessary for proving an inventive step in the light of the prior art. But also in respect of the third objection the petition is clearly inadmissible as the petitioner failed to fulfil the requirements of R 106 for the following reasons : [1.7.1] According to the clear wording of R 106 a petition is only admissible if the objection concerning an alleged procedural defect was raised during the appeal proceedings and dismissed by the Board, except where such an objection could not be raised during the appeal proceedings. However, in the present case the petitioner did not submit in the grounds of its petition that it could not raise an objection pursuant to R 106 before the Board closed the debate in order to deliberate the issue of inventive step. Just at that point in time it should have pointed to an alleged procedural defect when the Board intended to discuss inventive step without having regard to the aspect of the requested comparative tests. An example that such an intervention was not impossible was given by the respondent who requested to take account in the protocol of the OPs that it has not been heard with regard to the question of admissibility of auxiliary requests 1 - 3 concerning amendments made therein. [1.7.2] The petitioner claims that its representative accomplished the procedural requirement of R 106 by stating the following: The Board asked the appellant’s representative what the purpose of the comparative experiments should be. Dr Illescas then took the floor and began to explain what the purpose would be, but was interrupted by the Chairman of the Board, who stated that the discussion relating to inventive step of the proposed auxiliary request had already been decided by the Board and that, therefore, the appellant was not allowed to argue back on this particular item […] However, apart from the fact that this can hardly be qualified as an objection pursuant to R 106, according to the minutes of the OPs Dr Illescas was not the representative of the petitioner but an accompanying person. In this capacity, he could not validly make procedural declarations, such as one pursuant to R 106. […] [2] It follows from the foregoing that in the present case the requirements of R 106 have not been met. Therefore, the petition for review has to be rejected as clearly inadmissible. This decision makes it very clear how important it is to make an explicit objection referring to R 106 during OPs if a petition for review is to be envisaged. This requires some quick-wittedness on behalf of the representative. One may also note that the objection has to be made by the representative (or the party itself) – an objection made by an accompanying person, even if the latter is legally qualified and could represent the party, will not be accepted by the EBA. Should you wish to download the whole decision, just click here.
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T 1886/06 – Dealing With Undefined Claim Features
K’s Law – The ebook
T 1886/06 – Dealing With Undefined Claim Features 26 Mrz 2010
In
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Although the Board decided to dismiss the appeal against the revocation of the opposed patent, as it had found the claims to lack inventive step, it chose to comment on the objection of insufficiency of disclosure. The opponent had based its argumentation on the claim feature “non-dusting” (nichtstaubend). What is claimed is a non-dusting, homogeneous pigment preparation comprising at least four ingredients, wherein the ingredients are present in certain ranges of amounts (Mengenbereiche). According to paragraph 42 of the opposed patent, the pigment preparation is produced by mixing and homogenising of the ingredients in a mixer. Moreover, the claims cover dry preparations obtained from these pigment preparations by concrete shaping steps and which, as the case may be, are stripped from the solvent. If the properties “non-dusting” and “homogeneous” are indeed functional features – as pointed out by the [opponent] – i.e. the result if a composition of the four components in certain ranges of amounts, it is not surprising if not all the compositions do lead to these properties, even if it comprises the four components in amounts that fall into the indicated weight ranges. As a matter of fact, claim 1 (of all requests) does not require that all possible compositions which contain the four components in the indicated ranges of amounts result in non-dusting, homogeneous pigment preparations. The example given by the [opponent] comprising 99 % by weight of dry pigment and the compositions chosen for its comparative trials having a low solvent and polyacrylate contents therefore are not covered by the wording of claim 1 if they do not possess the properties “non-dusting” and/or “homogeneous”. [1.4.1] As regards the missing definition of the expression “non-dusting”, the question is whether there is a need for explanation or whether the meaning attached to the expression is not sufficient to convey a sufficient technical teaching to the skilled person whom the patent addresses. Moreover, the competent [opponent] itself has pointed out that it is not coherent with the teaching of the opposed patent if the pigment preparations dust as much as – or even more than – pure pigment powders. The [opponent] has invoked decision T 256/87 according to which the lack of a method for determining a parameter that is unusual in the art is not prejudicial to sufficient disclosure according to A 83 if the skilled person having read the patent can carry out the invention in all its essential parts and knows when he/she is working in the prohibited domain covered by the claims. In the case underlying T 256/87 this was considered achievable via indirect empirical investigations, because of the respective general knowledge (Fachkunde). However, the conclusion reached in T 256/87 cannot mean that – conversely – the use in the claims of an expression that is undefined under A 84 necessarily leads to the invention not being executable within the meaning of A 83 if there are no indications for a possible definition in the description or in the respective general knowledge. As a matter of fact, doubts concerning a lack of sufficiency of disclosure have to be substantiated with verifiable facts. The mere supposition that the extent of protection extends to non disclosed variants is not sufficient. In principle the use of an undefined expression in the claims – for example, the use of a relative expression – is problematic under A 84 according to which the claims shall define the matter for which protection is sought and shall be clear and concise and be supported by the description. In opposition and opposition appeal proceedings the lack of delimitation of the protected domain by such an expression leads to taking into account a more extensive prior art, i.e. the state of the art corresponding to all the technically meaningful possibilities of interpretation of the undefined expression. In the extreme case where no concrete meaning can be ascribed to the expression, it completely loses its limitative effect with respect to the prior art to be taken into account.
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T 1886/06 – Dealing With Undefined Claim Features
K’s Law – The ebook
The patentee cannot object to this that it is not acceptable to take into account a more extensive prior art because it is possible to give a limitative interpretation of the expression based on the description and the drawings. This possibility of interpretation which follows from A 69(1) only concerns, as can be deduced from the wording of this provision, the content of the claims that determines the extent of protection of a patent, so that a patent proprietor has to accept such a limitative interpretation of the extent of protection of its patent by an infringer against whom the patent is invoked. This means that A 69(1) can only be used for answering the question whether a competitor can know if and when it works in the prohibited domain. This, however, is only a question whether the claims have the clarity that is required for satisfying A 84. However, the extent of protection of the claims or of the patent are not even considered in A 83. This provision only requires that the patent discloses the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. [1.4.2] […] The Board has come to the conviction that the objection of insufficient disclosure is unfounded. The requirements of A 83 are fulfilled for all requests. [1.5] To read the whole decision (in German), click here.
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T 458/07 – Claimed Effects Can’t Be Missing
K’s Law – The ebook
T 458/07 – Claimed Effects Can’t Be Missing 25 Mrz 2010
Claim 1 of the patent read: A method for purifying a polypeptide from a composition comprising the polypeptide and a contaminant, which method comprises the following steps performed sequentially: (a) binding the polypeptide to an ion exchange material using a loading buffer, wherein the loading buffer is at a first conductivity and pH; (b) washing the ion exchange material with an intermediate buffer at a second conductivity and/or pH so as to elute the contaminant from the ion exchange material; (c) washing the ion exchange material with a wash buffer which is at a third conductivity and/or pH, wherein the change in conductivity and/or pH from the intermediate buffer to the wash buffer is in an opposite direction to the change in conductivity and/or pH from the loading buffer to the intermediate buffer; and (d) washing the ion exchange material with an elution buffer at a fourth conductivity and/or pH so as to elute the polypeptide from the ion exchange material. […] It has been established by case law such as represented by decision T 939/92 that everything falling within a valid claim has to be inventive, i.e. the technical effect on which acknowledgment of inventive step relies must be produced by essentially all embodiments of the claim. The [opponent] relies on this decision and argues that this was not so with regard to claim 1 since even the patent teaches […] that only some types of contaminants can be removed by the method, whereas others are unaffected. [95] The claim at issue in the case underlying decision T 939/92 was directed to a class of compounds. The effect that they are stated to have and on which the inventive contribution relied, i.e. herbicidal activity, was derivable from the description, but not a feature of the claims. Thus, the compounds were not functionally restricted. In the present case, the claims relate to a method for purification. The board interprets such a claim to mean that any of its embodiments is in fact suited to achieve that stated purpose, i.e. they are suited to achieve purification. Thus, the question of whether certain embodiments of the claim do or do not achieve the expected technical effect does not arise. The board considers therefore, that the considerations of decision T 939/92 in the assessment of inventive step do not apply here in the context of inventive step. Rather in the present case they arise in the context of the evaluation of A 83 when considering the question of whether or not the claimed subject-matter can be carried out over the whole scope without undue burden, they therefore have been dealt with there […]. [96] In conclusion the subject-matter of […] claim 1 […] and claims dependent thereon involves an inventive step. The requirements of A 56 are fulfilled. [97] To read the whole decision, click here.
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T 458/07 – Late Filing By Third Parties
K’s Law – The ebook
T 458/07 – Late Filing By Third Parties 24 Mrz 2010
The present decision also deals with a rather rare situation: the filing of a document by a third party during the appeal proceedings. On admission On 25 February 2008, i.e. during the appeal proceedings a third party filed a submission pursuant to A 115. It contained inter alia document […] D27, disclosing in Example 6 a process for the purification of erythropoietin with anion exchange chromatography. Moreover, the submission contained a table setting out the compositions of the buffers used in the process according to Example 6 as well as conductivity values determined for these buffers. [59] Document D27 is a late-filed document. Hence, its admissibility is at the discretion of the board pursuant to A 114(2) (see also T 390/07 [headnote]). [60] [...] The observations under A 115 were filed more than 1 1/2 years before the oral proceedings so that the parties and the board had sufficient time to consider the document. In fact, appellant I has reacted already in the written proceedings to the submission of the third party by filing amended claims and a declaration, i.e. the declaration by Dr Dowd, document D29. Also the board has studied the submissions in order to get a view of their relevance, in particular of document D27 and has notified the parties that it considers document D27 to be relevant. None of the parties has requested that the submission of the third party, in particular document D27, be disregarded. Thus, the board decides to admit the submission of the third party into the proceedings. [61] On remittal A 111(1) gives the boards of appeal the discretion either to “exercise any power within the competence of the department which was responsible for the decision appealed” or to “remit the case to that department for further prosecution”. It follows from this provision that a board is not obliged to remit a case for consideration to the first instance only because new material has been submitted which has not been considered during the first instance proceedings. [62] This is also not derivable from the Enlarged Board of Appeal’s decision G 9/91. It is stated in point 18 of the reasons: “The purpose of the appeal procedure inter partes is mainly to give the losing party the possibility of challenging the decision of the Opposition Division on its merits.” It is true that in the following passage the judicial and therefore less investigative nature of the appeal proceedings is highlighted in the decision G 9/91, however only to remark a contrast with the opposition proceedings which are of an administrative and therefore more investigative nature. [63] When exercising the discretion given by A 111(1) the boards balance the public interest in procedural economy with the entitlement of the parties to fair proceedings. For the reasons given above in point 61, the board considers it appropriate to deal with document D27 itself, thus avoiding the delay in reaching a final decision which would be entailed if the case was remitted. [64] Thus, [the patent proprietor’s] request for remittal to the first instance for consideration of document D27 is refused. The treatment of the observation by the Board may be contrasted with the findings of T 156/84 [3.7] where it was said that A 114(2) evidently did not apply to observations by third parties under A 115(1) and that there was no provision imposing any limit on the period within which such observations have to be presented or empowering the EPO to disregard facts coming to its notice in this way, whenever they are presented. T 458/07 3088 | 3398
T 458/07 – Late Filing By Third Parties
K’s Law – The ebook
rather follows T 390/07: the document filed under A 115 is treated in the same way as any other late filed document. One might say that this is not unreasonable, because otherwise A 115 would provide the possibility of circumventing the strict rules that govern the treatment of documents filed belatedly by the parties, by asking a straw man to file the document. However, a party might still be tempted to use a straw man if otherwise the late filing as such might be considered abusive. To read the whole decision, click here.
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T 458/07 – No Examples Needed
K’s Law – The ebook
T 458/07 – No Examples Needed 23 Mrz 2010
Claim 1 of the patent read: A method for purifying a polypeptide from a composition comprising the polypeptide and a contaminant, which method comprises the following steps performed sequentially: (a) binding the polypeptide to an ion exchange material using a loading buffer, wherein the loading buffer is at a first conductivity and pH; (b) washing the ion exchange material with an intermediate buffer at a second conductivity and/or pH so as to elute the contaminant from the ion exchange material; (c) washing the ion exchange material with a wash buffer which is at a third conductivity and/or pH, wherein the change in conductivity and/or pH from the intermediate buffer to the wash buffer is in an opposite direction to the change in conductivity and/or pH from the loading buffer to the intermediate buffer; and (d) washing the ion exchange material with an elution buffer at a fourth conductivity and/or pH so as to elute the polypeptide from the ion exchange material. [… The opponent] argues that the one example in the patent is not enough for that the disclosure in the patent could be regarded as sufficient. This was the more so, since the example apparently does not correctly represent the claimed subject-matter because the conductivity of the loading buffer is not stated, an additional wash step is carried out and not all contaminants are removed. [18] R 27(1)(e) EPC 1973 [NB: and R 42(1)(e) EPC 2000] stipulates that the description shall “describe in detail at least one way of carrying out the invention claimed using examples where appropriate and referring to the drawings, if any” (emphasis added). Thus, it follows from this rule that there is no mandatory requirement for an example under the EPC. Hence, even the absence of an appropriate example would not be a reason for denying sufficiency of disclosure. [19] The sufficiency of disclosure with regard to claimed subject-matter is judged on the basis of the whole disclosure in a patent and not only on that given by the examples. Furthermore, the skilled person’s knowledge at the time of priority of the patent must be taken into account. [20] […] At the priority date of the patent ion chromatography was a well-established technique for the purification of proteins. Ion chromatography separates proteins according to their charge. The separation is based on the reversible interaction of the protein to an oppositely charged chromatography material. An anion exchange resin has a positively charged surface. A cation exchange resin has negatively charged groups. Initially, counter ions, i.e. ions of opposite charge present in the equilibration buffer are bound to the charged immobile functional groups of the chromatography resin. When a sample is added to the column, proteins with opposite charge to the resin displace the counter ions and are absorbed onto the column. Thus, negatively charged proteins bind to the anion exchange resin and positively charged proteins bind to the cation exchange resin. Proteins bind to the resin when the conductivity of the buffer is low. The conductivity of the buffer is strongly dependent on the salt concentration in the buffer. Differential elution of the bound proteins can be achieved by altering the conductivity (i.e. the salt concentration) of the buffer or by altering the pH. Elution can be stepwise or in a gradient. When elution is due to a change in the conductivity, the principle is that those proteins that due to their charge are less strongly associated with the resin are displaced from the column at lower conductivities (i.e. salt concentration), while the more strongly associated proteins are eluted at higher conductivities. At the priority date the skilled person was also aware of a wide variety of combinations of constituents to be used for the chromatography buffers and that the type of resin and the buffers used depended on a given protein. Thus, the skilled person knew that fine-tuning of the chromatography process was necessary for each proteincontaminant-situation, but that this could be achieved on the basis of the well-known physicochemical principles on which ion-chromatography relies. [21] 3090 | 3398
T 458/07 – No Examples Needed
K’s Law – The ebook
Some of the above-mentioned knowledge about ion chromatography is summarized in paragraph [0005] of the patent in suit. The skilled person also learns from this paragraph that the claimed ion chromatography method is meant as an improvement of the “standard” way of conducting ion chromatography […], i.e. where separation of contaminant and protein are achieved by progressive increase of the salt concentration in the buffer. Moreover, the skilled person would recognize in view of the claims stating that the contaminant is eluted before the desired protein […], that the claimed method is an improvement of such ion chromatography situations where the contaminant elutes before the protein. [22] Given all this knowledge, in the board’s view, the skilled person would not have any difficulty in performing the claimed method on the basis of the disclosure in the patent and this would even be so if the example would not reflect the claimed method. [23] The board notes however in passing that it considers the example to describe a situation falling under the method of claim 1.
In particular, the conductivity of the loading buffer is indicated in Table 1.
As regards the additional wash step included in the example the board considers that its presence in the example and absence in the claim could only give rise to an objection pursuant to A 83, if this step was an essential feature of the invention. If this was so, the issue would rather have to be dealt with under A 84 than under A 83.
Finally, the failure to demonstrate in the example the removal of all contaminants is in the board’s view also no reason for considering that the example does not reflect the invention as claimed.
Firstly, the claims expressly relate to “purifying a polypeptide from a composition comprising the polypeptide and a contaminant and to the elution of “the contaminant” ([…] emphasis added). Thus, removal of all impurities is not required by the claim. Secondly, in view of the general principles on which ion chromatography is based […] and given the differing charges of the variants it would not even be expected by the skilled person that it would be possible to remove all impurities by a single round of chromatography. [24] I shall come back on this decision tomorrow. To read the whole decision, click here.
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T 759/08 – Known Things Can’t Surprise
K’s Law – The ebook
T 759/08 – Known Things Can’t Surprise 22 Mrz 2010
[…] Documents D4 to D10 cited against the patent have been filed after expiration of the time limit for filing an opposition. According to A 114(2), the EPO may disregard such evidence. It is in its discretion to introduce late filed documents cited against the patent into the opposition or appeal proceedings or to refuse them. However, according to the established case law, such documents are to be taken into account if they are prima facie relevant because they are very likely to be prejudicial to maintaining the European patent. Moreover, it is in the discretion of a Board of appeal to introduce relevant documents into the proceedings of its own motion. However, this does not establish the entitlement [to introduce] documents that have been cited against the patent during the examination proceedings or which have been filed belatedly during the opposition or opposition appeal proceedings. [2.1] In the present case the parties have discussed arguments concerning the common knowledge of the relevant skilled person. In order to provide evidence for this commonly known technical knowledge the manuals D4 and D5 have been filed during the opposition proceedings and manual D10 was referred to in the appeal proceedings. According to the definition of the Boards of appeal the content of encyclopaedias, manuals and dictionaries normally represents the common general knowledge (see Case Law of the BA of the EPO, 5th edition 2006, I.C.1.5, page [48]). Manuals D4, D5 and D10 were cited as evidence for generally known effects of alloy elements in Al-alloys on their properties (D4), the composition of known standard Al-alloys (D10) or their application and product forms according to DIN EN 573-4 (D5). Therefore they represent the general knowledge of the person skilled in the art of Al-alloys. As a rule, the general knowledge cannot be considered as a complicated or surprising fact because it is sufficiently known to the skilled person. The introduction of the cited documents cannot be considered to be abusive, even it they have been filed after the expiration of the time limit for filing an opposition, i.e. belatedly, because they only confirm a fact that is commonly known to the skilled person. Therefore, documents D4, D5 and D10 are taken into account. [2.2] I find this decision useful because it clearly states that the late introduction of evidence for common general knowledge should in principle always be possible. Another minor remark: The Boards tend to refuse late filing of documents and/or amendments when the late filing would come as a surprise to the other parties and/or the Board itself. In the present decision there is an almost imperceptible shift towards the skilled person: the argument appears to be that the skilled person could not be surprised by the documents because they reflect the common knowledge of the skilled person. This may be true but it should not be forgotten that the skilled person is a legal fiction: it is as difficult to surprise the skilled person as it is to shake its hand. Neither the parties nor the members of the Board qualify as skilled persons within the meaning of the provisions of the EPC. Therefore, the introduction of a document could come as a surprise to them even though the skilled person would not be surprised. To read the whole decision (in German), click here.
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T 727/07 – Jurisprudential Potpourri
K’s Law – The ebook
T 727/07 – Jurisprudential Potpourri 20 Mrz 2010
This decision contains several bits and pieces which as such perhaps would not justify a post but which, nevertheless, are not without interest. First, there is an interesting statement on procedural economy. The opponent wished to introduce documents R17 and R18 which it considered very relevant. The opponent also pointed out that they should be admitted for reasons of procedural economy. If the documents were not admitted into the appeal proceedings, it would be necessary to file national invalidation proceedings based on these documents, which would result in long and costly proceedings. The Board does not agree: The Board concedes that documents R17 and R18 do not present any particular difficulty and that the question of their admissibility depends essentially on the benefit in terms of procedural economy resulting from their admission. This is an aspect that has to be assessed in view of the relevance of these documents. Considering this, the Board is of the opinion that the notion of procedural economy is to be assessed in relation to the appeal proceedings pending before the Boards of appeal of the EPO. It cannot take into account the possibility of subsequent proceedings which the parties could instigate before other jurisdictions. If it were pushed to its limits, the argument of the [opponent] would have the consequence of depriving article 13(1) RPBA of many of its effects in respect of appellants-opponents. [2.2] Secondly, the opponent pointed out that the late filing of the documents was due to a change of the professional representative at a late stage of the appeal proceedings. Again, the Board is not willing to accept the argument: The Board notes that a change of the professional representative could not possibly justify late filing of documents. It follows from article 12(2) RPBA that the statement of grounds of appeal has to set out all the legal means relied on by the appellant. Therefore, a change of the professional representative could not possibly allow to depart from the requirements that are to be applied at the time of filing the appeal. [2.5] Third, the decision has an interesting paragraph on claim interpretation. Claim 1 of all requests concerned an “Integrated circuit device incorporated into a smart card (carte à puce)”. The opponent pointed out that the concept of a smart card was very general and that it covered the memory cards disclosed in R17 and R18. Once again, the Board is not persuaded. Paragraph [0012] as amended during the opposition phase explains that “Smart cards are standard portable memory objects operating by contact and which are defined in particular by standards ISO 78-10 and 78-16 the content of which is incorporated by reference into the present disclosure of the invention.” Even if the reference to the standards in paragraph [0012] is not recalled in the independent claim, the Board finds that: (i) the paragraph contains a definition of the concept of ‘smart card’, and (ii) this definition is intended to apply to the document as a whole. Therefore, the Board considers that the skilled person reading the application would have understood the term ‘smart card’ according to this meaning. As the present Board has already pointed out (T 1281/06 [2]; T 1271/05 [4.3]) the claim should be interpreted in the light of this definition. [2.3] […] As the memory cards disclosed in R17 and R18 do not comply with the standards mentioned above, they cannot be considered as smart cards within the meaning of the contested patent. Also, the circuits disclosed in these documents cannot be considered as integrated circuit devices in the sense of a structural unit integrated into a smart card. As a consequence, neither R17 nor R18 are sufficiently relevant to be admitted into the proceedings. [2.4] To read the whole decision (in French), click here. 3093 | 3398
T 911/06 – Numbers In Disorder
K’s Law – The ebook
T 911/06 – Numbers In Disorder 19 Mrz 2010
In the present decision the Board faces a legal dilemma: is it possible to ignore the order of the requests filed by the patentee ? The question arose because the patentee had filed several requests and only the fourth auxiliary request consisted in maintaining the patent as granted. […] The Board is faced with the problem of deciding in which order the various requests should be addressed. [3] The Board is aware of an ex parte appeal case (T 1058/04 [1.1]) in which the Board considered it appropriate to treat the [applicant’s] requests in their numerical order and refused a request to modify their order. [3.1] According to the decision of the Enlarged Board G 9/91 [18], “The purpose of the appeal procedure inter partes is mainly to give the losing party the possibility of challenging the decision of the Opposition Division on its merits”. The purpose of the appeal procedure is thus to give a decision upon the correctness of a decision of a department of first instance. Similar considerations as to the purpose of the appeal procedure are derivable from R 99(2) which specifies “In the statement of grounds of appeal the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based”. According to the principles governing the admissibility of appeals, there is no justification for examining first a main request containing new claims amended during the appeal procedure, before examining the correctness of the decision refusing the patent as granted when, as in the present case, the correctness of that decision is still contested in a lower-ranking auxiliary request. [3.2] The Board is mindful of the fact that the appeal procedure is to be considered as a judicial procedure and that general principles of court procedure, such as the principle of party disposition (see G 8/91 [11.1]), apply to the appeals. This principle was also applied in the decision G 2/91 [8], which held that “Any party to first-instance proceedings who is adversely affected by a decision has the right to file an appeal with his own request and submissions and his own statement of grounds and thus to determine the further course of the proceedings”. In the present case, applying this principle to the order of the requests of the appellant proprietor might be inconsistent with the purpose of the appeal procedure inter partes as expressed in the decision G 9/91. Moreover, examining new requests in appeal, when the appellant proprietor also requests examination of the correctness of the first instance decision as a lower-ranking request, would effectively reduce the appeal procedure to a simple continuation of the first instance proceedings, although it is apparent from the general logic of the EPC, that the appeal proceedings are wholly separate and independent from the proceedings at first instance. [3.3] In accordance with A 113(2), the EPO shall examine, and decide upon, the EP only in the text submitted to it, or agreed, by the proprietor of the patent. It has been established in Legal Advice N° 15/05 (rev.2) [1.4 and 2.3] as well as in several decisions of the Boards that in the case of main and auxiliary requests from the applicant or proprietor in first instance examination and opposition proceedings, the EPO is bound to the order of these requests (see e.g. T 488/94, T 169/96 and T 345/98). However, this principle does not necessarily apply to second instance proceedings before the Boards of Appeal. In view of the foregoing, the Board considers that it is in line with the purpose of the appeal to firstly examine whether the department of first instance correctly assessed the substance of the requests presented to it, and thereafter to examine any other requests filed by the proprietor during the appeal procedure. [3.4] If the Board were to follow the generally established approach of merely considering the requests of the appellant proprietor in sequence, it is foreseeable that this could lead to a situation in which the Board, finding that a higher-ranking request (i.e. one of the main or first to third auxiliary requests) is not unallowable, would decide to grant or remit that higher-order request, without having considered the findings of the opposition division (OD) in respect of the patent as granted, i.e. without having considered the matter underlying the proprietor’s appeal. This does not appear to be consistent with the spirit of the appeal procedure under the EPC. Moreover, it could deprive the opponent and third parties of their right to have firstly a decision on the findings of the OD for reasons of legal security. [3.5] The amendments made by the proprietor to his requests […] result inter alia in a new order of his requests which is neither consistent with the logic of the EPC, nor compatible with the purpose of the appeal procedure in the 3094 | 3398
T 911/06 – Numbers In Disorder
K’s Law – The ebook
EPO. The proprietor did not attend the oral proceedings (OPs), and so could not be informed of the deficiencies in the presented order of his requests. Following Article 15(3) of the rules of procedure of the Boards of Appeal (RPBA), “The Board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party duly summoned who may then be treated as relying only on its written case.” However, Article 13(1) RPBA gives a Board some discretion when considering any amendment to a party’s case after the grounds of appeal or reply have been filed. The discretion shall be exercised in view of inter alia the current state of the proceedings and the need for procedural economy. In view of the foregoing, the Board has decided to consider the requests of the appellant proprietor in the order which is compatible with the general logic of the EPC and the purpose of the appeal procedure. [3.6] When, as in the present case, it is clear from the statement of grounds of appeal that the appellant proprietor contests a decision that the patent cannot be maintained as granted, and when the appellant proprietor finally requests the maintenance of the patent as granted as an auxiliary request which is subordinate to a main or auxiliary request for maintenance of the patent in a new amended form that was filed during the appeal, the correctness of the decision refusing the maintenance of the patent as granted has to be examined first, before examining the new amended claims. [3.7] In the decision G 2/91, the Enlarged Board further held that “A person who is entitled to appeal cannot be deprived of this right because someone else has already filed an appeal before him”. The course of the appeal proceedings should thus not deprive the appellant opponent of the right to have his own request and submissions treated in an equitable manner and to so determine the course of the proceedings. [3.8] In the present case, however, merely following the order of the requests presented by the proprietor could deprive the opponent of the right to have his appeal examined before a possible remittal, because the subject of the opponent’s appeal, namely the amended form of the patent as maintained by the OD, is presented by the proprietor only as a second auxiliary request. This would not be equitable. [3.9] Nevertheless, as long as it has not been decided whether the patent can be maintained as granted, the decision to grant a patent in the amended form appealed by the opponent depends on the outcome of the appeal against the decision to refuse the maintenance of the patent as granted. Moreover, the proprietor is the owner of a legal title that was contested by the opponent, in whose favour the OD decided. This decision was challenged by the proprietor, who can then expect to have his challenge considered with the highest priority. Accordingly, in accordance with the principle of economy of procedure, the Board decides to treat the requests of the appellant opponent, insofar as they concern the maintenance of the patent by the OD, after having decided whether the patent as granted could be maintained unamended. [3.10] Since in the present case it is clear from the statement of grounds of appeal that the appellant opponent contests a decision maintaining the patent in a particular amended form, and since, in the appellant proprietor’s final requests, the maintenance of the patent in that particular amended form is the subject of an auxiliary request that is subordinate to one or more requests for maintenance of the patent in some other amended form, the Board decides, after examining the correctness of the decision refusing the maintenance of the patent as granted, to examine the correctness of the decision maintaining the patent in the particular amended form that was the subject of the appealed decision before examining, and deciding upon, the patent in any other amended form finally requested. [3.11] Whew! To read the whole decision, click here.
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T 662/07 – Incredible Detergents
K’s Law – The ebook
T 662/07 – Incredible Detergents 18 Mrz 2010
When there is no clear-cut evidence that a technical problem has been solved, the credibility that the problem has indeed been solved becomes crucial for the assessment of inventive step. In the present case, the Board comes to the conclusion that the problem has not been credibly solved and reformulates a less ambitious problem. […] During the oral proceedings, both parties have used document D3 as basis for the assessment of inventive step. The Board has no reason not to follow this choice. [2.1.1] Document D3 discloses multiphase detergent tablets made of compacted particulate washing composition for washing laundry in a washing machine […] comprising surfactant(s), builder(s), disintegration auxiliary based on cellulose, and optionally further washing composition constituents, and which can consist of at least two phases, i.e. of different layers […]. It is possible for the different layers to have different solution rates, which may entail properties that are advantageous for the application of the tablets. […] D3 does not disclose the feature according to which the surfactant content of the individual phases varies by no more than 1.5 % by weight, as well as the use of the tablets in domestic washing machines. [2.1.2] According to the explanations of the [patent proprietor], the examples of the contested patent show that the claimed subject-matter solves, with respect to the prior art known from D3, the technical problem mentioned in paragraph 7 of the contested patent, i.e. the problem of providing detergent tablets which have a high hardness and high disintegration and solution rates in all phases. There was no indication in the available prior art that this technical problem can be solved if the surfactant content varies by no more than 1.5 % by weight between the phases. [2.1.3] However, the Board does not find this argument persuasive because there is no indication in the examples that this technical problem is actually solved by the above mentioned distinguishing features, i.e. the use in domestic washing machines and the relatively low admissible variation of the surfactant content. First of all it has to be noted that the feature concerning the use of the detergent tablets in particular in domestic washing machines apparently does not contribute to the solution of the said technical problem. Such a contribution was not invoked by the [patent proprietor] and is not disclosed in the contested patent. Neither do the examples show that they have been carried out in a domestic washing machine, let alone that this would lead to a special effect. Therefore, the use of the detergent tablets in a domestic washing machine is only an option that is independent from the said technical problem and which the skilled person exercises in case of need. Apart from that, there are three sets (examples 1, 2, and 3), each comprising one example according to the invention and a comparative example, from which one can allegedly derive that detergent tablets of particularly high hardness and disintegration rate are obtained as a result of the small variation of the surfactant content of the phases by no more than 1.5 % by weight. Within these exemplary sets, the comparative example differs from the example according to the invention not only, as expected, by the differing surfactant content in the phases but also by different contents of other constituents. In examples 1 to 3 the content of different constituents was varied in order to compensate for the varying surfactant content. However, these examples are not comparable with each other because different surfactant granulates have also been used in the three sets of examples. Therefore, the argument of the [patent proprietor] according to which the examples show that the differing contents of further constituents are not relevant, is not persuasive. [2.1.4] Therefore, it is not credible that the claimed detergent tablets have high hardness and disintegration rates in all phases in comparison to the tablets disclosed in prior art D3. However, it is credible that the detergent tablets defined in claim 1 have practically the same hardness and an identical disintegration profile in all phases, with respect to the tablets disclosed in document D3, which is 3096 | 3398
T 662/07 – Incredible Detergents
K’s Law – The ebook
presented as an essential requirement for multiphase detergent tablets in paragraph 4 of the contested patent. As a matter of fact, according to claim 1, all phases of the detergent tablet can have a practically identical composition and can differ from each other only by say a different coloration. Therefore, the problem that is actually solved with respect to prior art D3 may be seen in providing a detergent tablet that has practically the same hardness and an identical disintegration profile in all phases. [2.1.5] As so often, this the preamble to a revocation for lack of inventive step. To read the whole decision (in German), click here.
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T 354/08 – Enablement Questioned
K’s Law – The ebook
T 354/08 – Enablement Questioned 17 Mrz 2010
Questioning the enablement of a potentially novelty destroying document appears to be relatively common in the field of chemistry, but – to my best knowledge – it is rare in the mechanical domain. The present decision deals with a case where the patent proprietor argued (unsuccessfully) that the prior art device could not work and, therefore, was not novelty destroying.
[…] D4, figures 2 and 3 […] discloses a telescopic lifting column in which telescoping movement is transmitted via a screw and nut drive train. Referring to figure 2, at the top of each stage is a geared nut 27, which is driven (from motor 40) to rotate with respect to its screw 26 secured to the top of the next stage via a rotatably seated screw gear 28. D4 now proposes a second parallel drive train which transmits rotation simultaneously to all stages. This further drive train includes, for each stage, a geared bushing 32 meshing with the nut 27 of that stage, which imparts rotation to a splined shaft 30 with integral shaft gear 31 seated at the top of the next stage. The shaft gear 31 meshes with the screw gear 31 also seated there, which in turn meshes with the bushing and geared nut for the following stage. The lowermost nut and bushing are driven by a motor 40 under the control of appropriate control means with an implicit control panel […].
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T 354/08 – Enablement Questioned
K’s Law – The ebook
In the alternative embodiment figure 3, the screws are realized coaxially and each bear screw gears 27b, 27c that double as nut for the next stage. Likewise, the splined shafts 30a, 30b, have a common axis, each having a shaft gear 32b, 32c which also acts as bushing gear for the next stage […]. [2.1] The [patent proprietor] does not dispute that all features of claim 1 - in particular the central feature of the spindle nut being driven to rotate - are derivable from either embodiment. However, he contends that these embodiments cannot be realized, so that D4 is not enabling and must be disregarded as prior art. [2.2] Initially, […] the contention was that the rotation of the nut 27 by motor 40 and that of the corresponding spindle or screw 26 via bushing 34, shaft 30, shaft gear 31 and screw gear 28 contradict each other. [The contention] concludes: “For axial displacement of the spindle, it should be fixed in a non-rotating manner”. [2.3] It is correctly observed that both spindle (or screw) 26 and its nut are rotated. From the figure it is clear that if, say, nut 27 is rotated clockwise, bushing 39, and with it shaft 30 and shaft gear 31 will be rotated counterclockwise, imparting clockwise rotation to screw gear 28 and shaft 26. This is also expressly stated in D4 itself (“..rotations of the nuts 27 and screws 26 ...”; “... rotations of the motor transmitted both to all the screws and all the nuts ...”). [2.3.1] However, simultaneous movement of nut and screw is by no means contradictory. For translational movement of the screw to take place there must be relative rotation of the nut with respect to the screw. Screw and nut must thus rotate by different amounts or angles to produce any screwing action. This is what is meant when D4 […] states that “this variant [the embodiment of figure 3] functions in roughly the same way as the previous variant [that of figure 2], due to rotations of the motor transmitted both to all the screws and all the nuts and with different angles between the screws and nuts in order to produce a screwing and a translation of the modules” (emphasis added by the Board). The different angles are realized by setting appropriate gear ratios, as again expressly stated […] “As the rotations of the nuts 27 and the screws 26 are all imposed by gear tooth ratios, the translations of the screws and therefore the tubes are also subject to this condition [i.e. the gear tooth ratio]” (emphasis again added). [2.3.2] […] In as far as this would not already be clear to the skilled person from simple mechanics, D4 thus specifically teaches him to rotate both nut and screw, but by different angles, to produce the desired movement. This is achieved by appropriate gear ratios, specifically gear reduction. The particular gear ratio, however, will depend on the particular requirements and can be determined by routine design procedure. The Board does not doubt that this teaching is sound and feasible. [2.3.3]
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T 354/08 – Enablement Questioned
K’s Law – The ebook
[…] The Board concludes that D4 provides the skilled person with sufficient information to successfully reproduce its teaching. It thus constitutes valid prior art for assessing novelty. As the Board has no reason to depart from the appealed decision’s finding of lack of novelty, that finding is upheld. [2.5] To read the whole decision, click here.
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T 897/09 – How Not To Substantiate An Appeal
K’s Law – The ebook
T 897/09 – How Not To Substantiate An Appeal 16 Mrz 2010
The present decision is a sad example of how a notice of appeal should not be written. It was the applicant himself who defended his application (the professional representatives had withdrawn, for reasons unknown). The notice of appeal was handwritten and very short; it read:
The Board sent the appellant a communication stating that the appeal was likely to be rejected as inadmissible and giving him the opportunity to present arguments. The appellant did not reply but sent the following letter of complaint to the “Head of the Patent Office” [unfortunately not available on RegisterPlus]: 3101 | 3398
T 897/09 – How Not To Substantiate An Appeal
K’s Law – The ebook
Dear Sir. I am greatly disappointed with the communication from the board of appeal; which seem biased as I dismissed the poor work of [the former professional representative] on the grounds of discrimination of me as a Danish citizen. I hope that this is not the case for the patent office and must insist on unbiased evaluation of the patents. They did not review the accompany letter from October 2008 that contained the argumentation for allowing the patent and should be reviewed together with the final changes submitted in March 2009. Their evaluation was wrong because non of the methods can be used alone and if they were they would give erroneous results. This is the reason why we have identified several mechanisms of bacterial resistance and why a lot of people have died in vain as antibiotics have been used in combination to induce cancerous growth with metastasis if broad spectrum antibiotics are used and encapsulated cancers if penicillins are used. Furthermore the experts seem very unfamiliar with the terminology used in bacteriology and antibiotic susceptibility in general hence the comment that we did not mention bacterial growth or antibiotic susceptibility. I called it organism growth as it covered viral and fungal growth as well as bacterial growth and bacteriocidal and bacteriostatic actions are standard terms for antibiotic susceptibility testing of compounds alone or in combination and refers to whether they kill the bacteria or just inhibits growth. The people evaluating the patent seem to have no experience in evaluating either instrument specifications or bacteriology which may explain the extraordinary difficulty in their understanding of the subject and their totally irrelevant comments. The board only commented on a handwritten follow note and did not bother to review the altered claims that clearly distinguish the patent 05256971.2 from other methods and specifically to the cited passage in D1; I.e. claim 1,2 and 9 addition: Using a micro calorimeter with a baseline stability of 0.2 uW and a sensitivity of O.2 uW Claim 8 addition; Using a micro calorimeter with a baseline stability of O.2 uW and a sensitivity of 0.2 uW is able to detect heat changes of 25 nanocalories per second I demand a re-evaluation by an expert in instrument development and bacteriology Here is what the Board had to say on this appeal: While the appellant’s letter to the “Head of the Patent Office” makes no attempt to answer the Board’s communication or to deal in any other manner with the question of the admissibility of the appeal, the Board has decided to consider it and to issue this decision rather than just treat the patent application as deemed to be withdrawn as would be possible in the absence of a reply to the communication, as indeed the appellant was warned both in the communication itself […] and in the EPO form 3346 under cover of which it was sent. There are two reasons for doing this. First, although the appellant’s letter [to the Head of the EPO] does not make any substantive response to the Board’s communication, it does at least indicate that the appellant has not lost interest in its patent application. Accordingly, although the salient facts are slightly different, the position is comparable with that described in T 1382/04 [1] and the Board has the power to issue a decision on the appeal. Second, this decision will hopefully ensure that the appellant (which is no longer represented professionally and is apparently unfamiliar with European patent proceedings) understands that, by virtue of this decision dismissing the appeal, the decision of the Examining Division (ED) to refuse the patent application becomes final and therefore no purpose would be served by payment of the unpaid part of the fifth renewal fee. [1] The appellant complied with the time limits for filing the notice of appeal and written statement of grounds of appeal and paying the appeal fee (see A 108). However, the appeal is inadmissible as regards the requirement of substantiation. A 108, third sentence, provides that, within four months of the notification of the decision in question, an appellant must file a statement setting out the grounds of appeal. [2] […] R 99(2) requires an appellant to indicate in its statement of grounds the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based. Additionally, Article 12(2) of the Rules of Procedure of the Boards of Appeal requires that a statement of grounds of appeal shall contain a party’s complete case and set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on. Similarly, the case-law of the Boards of Appeal has consistently considered it to be incumbent on an appellant to file, by the end of the four month time limit, a statement of grounds which (either in itself or together with the notice of appeal) presents the Board with the appellant’s case why it considers the decision under appeal to be wrong. [3] 3102 | 3398
T 897/09 – How Not To Substantiate An Appeal
K’s Law – The ebook
[…] Having compared the contents of the notice of appeal and the statement of grounds of appeal with the content of the decision under appeal, the Board cannot ascertain from the notice or grounds of appeal any substantive arguments or reasons why the appellant disagrees with the reasons for rejecting its patent application or, apart from some unexplained amendments to the claims, how it proposes to overcome those objections. In particular the Board notes the following. (a) The appellant does not say why the Examining Division’s view that the method claim 1 is anticipated by D1 was wrong, let alone take issue with its analysis demonstrating that all the features of claim 1 are to be found in D1. […] (c) The grounds of appeal say “Hereby the amendments to the claims as specified in your letter of 16.1.2009” but give no further information. The words “as specified in your letter of 16.1.2009” (i.e. the decision under appeal) are of no assistance at all - they simply direct the reader to the decision without any indication how the amendments relate to the objections therein. The later statement in the grounds of appeal that the claims have been amended to contain “the issues corrected raised on page 2-3 of your letter” adds nothing since those pages contain all the substantive reasoning of the decision under appeal. It then says the claims have also been amended to contain “specifications for the microcalorimeter used in the application”; that could be a reference to the ED’s observation […] that none of the features assumed by the applicant to differentiate its invention from the methods of D1 could be found in claim 1, but without more that can at best only be surmised. The Board notes that claim 9 has apparently been amended but there is no explanation at all as to how that may overcome the ED’s objections. Indeed, there is no reference to, let alone explanation of, any one amendment at all. (d) As regards the ED’s objection under A 123(2), the notice of appeal and the grounds of appeal say respectively that the relevant material is or has already been withdrawn but no further information is given and no amended text has been filed. (e) After referring to the unexplained amendments to the claims, the grounds of appeal state that the added specifications have not been achieved by anybody else in the world and that this gives the appellant the ability to diagnose and treat diseases faster and more effectively than previously. However, in the absence of any reference to the decision under appeal or to prior art cited therein, these are no more than mere assertions which do not make any case against the decision. (f) There is no other statement whatsoever which can be read as argument against the reasons set out in the decision under appeal. The notice of appeal says “We will include the relevant subject-matter in claim 1 and explain why the microcalorimeter D1 would not be suitable.” However, no indication is given of what that relevant subject-matter in claim 1 is - if it is meant to indicate the amendments, then as already indicated they are not explained at all. The Board can find no explanation as to why the microcalorimeter of D1 would not be suitable. [4] The Board’s communication quite specifically stated that it was confined to the issue of admissibility of the appeal and was intended to give the appellant an opportunity to present arguments on that issue. Unfortunately, the appellant’s letter [to the Head of the EPO] is not only not addressed to the Board but also shows no attempt to explain how the notice of appeal and grounds of appeal contain a sufficiently ascertainable case. The appellant’s complaints that the Board is biased and not expert in its evaluation of the case is irrelevant since no evaluation of the substance has yet taken place in the appeal proceedings and cannot take place unless or until the admissibility of the appeal has been established. [5] […] Taken as a whole, the appellant’s letter [to the Head of the EPO] shows that it expected the Board to piece together its case from a number of documents including earlier correspondence and versions of claims. That however is exactly the exercise the Board is not required to undertake because the appellant is required to substantiate its case adequately in its grounds of appeal. In the circumstances, the only possible conclusion is that the appeal is unsubstantiated and therefore does not comply with A 108, R 99(2) and Article 12(2) RPBA. Accordingly the appeal is inadmissible. [7] I am not sure that it would have been possible to save this particular application by filing an appeal, but one thing is sure: that it is not wise to file an appeal without the help of a trained professional. Things that may work out elsewhere, such as whining, boasting and complaining with the hierarchy, have little chances of constituting an admissible appeal. 3103 | 3398
T 897/09 – How Not To Substantiate An Appeal
K’s Law – The ebook
NB: Parallel case T 950/09 has been discussed by Laurent Teyssèdre on his blog. To read the whole decision, please click here.
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T 90/07 – Unlimiting Signs
K’s Law – The ebook
T 90/07 – Unlimiting Signs 15 Mrz 2010
It is well known that the reference signs in claims are not to be construed as limiting the claims (R 43(7)). The present decision reminds us of the fact that this is to be taken into consideration not only when the extent of the protection is to be assessed under A 69, but also when conformity with the requirements of A 123(2)(3) is to be examined. The set of claims labelled as “third auxiliary request” differs from the set of claims submitted with the request to dismiss the appeal of Opponent I (labelled as “first auxiliary request”) in the passage “characterized in that an isolation means selected from the group consisting of microwell structures on a back cover (903), microwell structures on a substrate (913), and a pattern of non-wetting film on a substrate (933) prevents diffusion of reagents between adjacent reaction sites and spatially isolates individual reaction sites”. [5.1] As confirmed by the Patent Proprietors in the oral proceedings, the three isolation means described in Claim 1 should represent the embodiments of Figures 9A- 9C of the patent-in-suit. [5.2]
The wording of the inserted text of Claim 1 can be found on page 10, last line to page 11, third line of the description as originally filed. However, these lines are only a general reference to Figures 9A-9C and do not contain all the features of these embodiments. A more detailed description can be derived from the figures themselves and from the text on pages 34-36 describing these figures. [5.3] The Board finds that the wording of Claim 1 is for instance more general than the closing mechanism described in embodiment 9A, according to which the reaction wells, bounded by barriers (903), are embossed on the cap (902) […] and the barriers are arranged in such a way as to create a space between adjacent buffer cells (passage bridging pages 34 and 35). Embodiment 9B refers in the description to a similar closing mechanism, which is described to seal the individual reaction wells. [5.4] The insertion of the brief description of the figures according to pages 10/11 thus is not sufficient to describe the entire embodiments represented in the figures. [5.5]
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T 90/07 – Unlimiting Signs
K’s Law – The ebook
Even assuming that the features relating to such a closing/seal mechanism are not closely linked to the other features of the embodiments represented in the figures and that consequently the closing mechanism may be claimed separately, the description does not contain any support for general embodiments as reported in the claims. [5.6] Also the use of reference signs does not change this situation, since their role is merely to make the wording of the claims more understandable, but they are not to be seen as limiting. [5.7] Since the features in question are not reflected by the wording of Claim 1, this claim extends beyond the disclosure as originally filed; the requirement of A 123(2) is not considered to be met. [5.8] To read the whole decision, click here.
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K’s Law – The ebook
Six Months Already
Six Months Already 14 Mrz 2010
Today this blog celebrates its first half anniversary. This gives me the opportunity to thank all my readers for their interest. There are much more readers than I would have expected for such a niche blog. That is great! I would also like to ask you to report any technical problems you encounter. Some readers found the legibility of the posts insufficient - this is why I have increased the font size. Depending on the browser and the screen you use, you might also find some font colours illegible - please let me know. You can leave a comment or send a message to orandl(at)club.fr.
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G 1/07 – Administrators Going Ultra Vires?
K’s Law – The ebook
G 1/07 – Administrators Going Ultra Vires? 13 Mrz 2010
There is one last point of G 1/07 which I wanted to mention. As it is of rather academic interest, I have kept it for the weekend. The Enlarged Board (EBA) offers a look into the cuisine behind the revision of the EPC. As a matter of fact, the EPC 2000 as it entered into force in December 2007 was not a pure product of the Diplomatic Conference held in 2000. The Conference empowered the Administrative Council (AC) to amend the Convention in order to harmonize the three language versions. The AC has abundantly made use of this power. Of course, there are some legal risks associated. The present referral was made before the entry into force of EPC 2000. According to Article 7(1) of the Act revising the EPC of 5 October 1973, last revised on 17 December 1991, the “revised version of the Convention shall apply to al1 European patent applications filed after its entry into force .... It shall not apply to ... European patent applications pending at that time, unless otherwise decided by the AC of the European Patent Organisation”. Since A 112 is not mentioned in Article 1 of the decision of the AC of 28 June 2001 on the transitional provisions under Article 7 as a provision which would thereby apply to European patent applications pending at the time of entry into force of the revised EPC, A 112 EPC 1973 continues to apply to European patent applications pending upon entry into force of the revised Convention. Hence, the admissibility of the present referral is to be determined on the basis of A 112 EPC 1973. This is also justified for reasons of legal certainty, which require that it be possible to determine the admissibility of a procedural act at the point in time when it is performed. This includes that it is the law applicable at that time which should apply (see also J 10/07 [1], T 1366/04 [1.2]) A 112, although not having been amended in the revision process, was amended later by the AC, making use of the power entrusted to it under Article 3(1) of the Act revising the EPC to draw up a new text of the EPC, in which the wording of the provisions of the Convention shall be aligned, if necessary, in the three official languages. Article 3(1) : The AC of the European Patent Organisation is hereby authorised to draw up, at the proposal of the President of the EPO, a new text of the EPC. In the new text, the wording of the provisions of the Convention shall be aligned, where necessary, in the three official languages. The provisions of the Convention may also be renumbered consecutively and the references to other provisions of the Convention may be amended in accordance with the new numbering. As regards A 112, this “alignment” has resulted in the English version of A 112(1) having been amended from reading “if an important point of law arises” to “if a point of law of fundamental importance arises”. It does not appear a priori evident that this “alignment” of the English text is not associated with any change in the overall meaning to be given to A 112(1), even when taking into account the equally authentic French and German texts of that Article, in accordance with A 177(1) EPC 1973. Hence, it cannot be said to be totally irrelevant from the outset whether the old or the new version of A 112 applies. Therefore the Enlarged Board will examine the admissibility of the present referral on the basis of A 112 EPC 1973. [1.1] When first reading this paragraph, I had the impression that the EBA felt uneasy about the amendment of A 112 by the AC. Others have had the same impression, as can be seen from an anonymous comment to an IPKat post on G 1/07. Having had a closer look, I do not find the “alignment” of the text open to criticism. As far as the first sentence of A 112(1) is concerned, both the French and the German text of the EPC have remained unamended:
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G 1/07 – Administrators Going Ultra Vires?
K’s Law – The ebook
Afin d’assurer une application uniforme du droit ou si une question de droit d’importance fondamentale se pose … Zur Sicherung einer einheitlichen Rechtsanwendung oder wenn sich eine Rechtsfrage von grundsätzlicher Bedeutung stellt, … Only the English text has been aligned: In order to ensure uniform application of the law, or if an important point of law arises … has become: In order to ensure uniform application of the law, or if a point of law of fundamental importance arises … It is obvious that the new text is now well aligned with the French and German versions, which was the purpose of the power entrusted to the AC. Therefore I would say that the AC has not gone too far. But perhaps the EBA did not even wish to suggest that it has. Be that as it may, this raises an interesting (but admittedly academic) question: what could be done if the AC had gone ultra vires and changed the meaning of an EPC provision and a user of the EPO felt adversely affected by the amendment? As far as I can see, there is no legal remedy available. Only a Diplomatic Conference could repair the damage done, by amending the provision once more. To download the decision, just click here.
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T 90/07 – Appeal Filed After Bankruptcy
K’s Law – The ebook
T 90/07 – Appeal Filed After Bankruptcy 12 Mrz 2010
On 30 April 2004 the European patent attorneys Weickmann & Weickmann filed an opposition against the patent-in-suit on behalf of febit AG. In the letter of opposition it was announced that the Power of Attorney would follow. [1.1] On 1 July 2004 insolvency proceedings of febit AG were opened, attorney at law Mr. Seagon became insolvency administrator. [1.2] The Power of Attorney including appeal proceedings before the EPO dated 21 December 2004, was signed by Mr. Seagon and carried the stamp “Christopher Seagon Rechtsanwalt als Insolvenzverwalter” (Christopher Seagon Attorney at law [acting] as insolvency administrator). [1.3] On 2 August 2006 a request was made to transfer the status as an opponent from febit AG to febit biotech GmbH. Since EPO did not consider this request to be sufficiently substantiated, the request was withdrawn by [febit AG’s] representative during oral proceedings before the Opposition Division (OD). [1.4] In its decision the OD stated: “Given the request for transfer of the opponent status was withdrawn, there is no doubt as to the identity of the parties in the proceedings and the opposition division is in a position to take a decision.” [1.5] On 15 January 2007 an appeal was filed against the decision of the OD “in the name and on behalf of febit AG”. [1.6] The Board agrees with the Patent Proprietors that, according to German law, a company terminates to exist as soon as insolvency proceedings have started (§ 262(1) lit.3 Aktiengesetz). In these cases the insolvency administrator would have to act under his own name and not in the name of the insolvency debtor. [1.7] However, on the basis of the documents on file there is no doubt that Mr. Seagon acted as insolvency administrator to represent the interests of the insolvent febit AG (see J 25/86). Therefore, neither in opposition nor in appeal proceedings there was any doubt as to the identity of [the opponent]. [1.8] Thus the appeal of [the opponent] is admissible. [1.9] To
read
the
whole
decision,
NB: This decision has also been discussed on the Blog du droit européen des brevets.
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click
here.
T 1743/06 – Trial And Error : To Be Taken In Moderation
K’s Law – The e
T 1743/06 – Trial And Error : To Be Taken In Moderation 11 Mrz 2010
How much trial and error can be expected from the skilled person ? A bit but not too much, says the Board. Well, that is the sort of answer one would have expected. Still, the present decision is helpful as it gives an example of what is acceptable and where “too much” begins. According to A 83 and its counterpart in A 100 b), the requirement of sufficient disclosure means that an invention shall be disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The specific requirement of R 42(1)(e) that the description shall describe in detail at least one way of carrying out the invention claimed is, according to established jurisprudence, sufficiently fulfilled only if: (i) the disclosure allows the invention to be performed in the whole range claimed (T 409/91 [3.5]; T 435/91 [2.2.1]); (ii) the whole subject-matter as defined in the claims can be carried out by the person skilled in the art, at the filing date of the application, without undue burden (see e.g. decision T 14/83 [6]). [1.1] In the case at issue, claims 1 of both requests are directed to an amorphous silica characterised by 10 and 11 different parameters, respectively, and the contested patent describes in detail the preparation of two specific amorphous silicas having parameter values falling within the claimed ranges. The board however observes that the definition “amorphous silica” comprises a host of possible chemical compounds which may or may not satisfy the multiplicity of parameters defined in the claims of the requests at issue and in this context, the question arises whether the patent contains sufficient information about how these parameters are to be reliably achieved so that the person skilled in the art has at his disposal a process which leads him in a direct way to the amorphous silicas claimed. [1.2] Concerning the preparation of the amorphous silicas disclosed in the patent in suit, there is the information at paragraphs [0022] and [0021] that amorphous silicas presenting good cleaning characteristics without damaging teeth and which are particularly good at preventing stain formation can be obtained through a process comprising […] The board however notes that the description of the contested patent does not give any details as to how [these] process conditions “for preparing amorphous silicas presenting good cleaning characteristics without damaging teeth and which are particularly good at preventing stain formation” might be modified in order to achieve reliably the parameters of the specific amorphous silicas defined in the claims 1 at issue. [1.3] Having been questioned on that point at the oral proceedings (OPs), the [patentee] admitted that by carrying out the process according to paragraphs [0022] and [0021] of the contested patent, the skilled practitioner would not necessarily arrive at an amorphous silica falling within the wording of claims 1 of both requests at issue. It however contended that by varying the process conditions described in detail with respect to the two amorphous silicas specifically exemplified in the contested patent, one would arrive at the preparation of amorphous silicas falling within the ambit of the claims 1 of both requests at issue. [1.4] The board does not contest that by carrying out slight variations on the process conditions described in detail in Examples 1 and 2 of the patent in suit, it might well be possible for the skilled practitioner to arrive at the preparation of some amorphous silicas falling within the ambit of the claims at issue. [1.5] However, bearing in mind that the contested patent had been revoked in particular because of the absence of details as regards the stirring speed used during the preparation of the silica claimed, the discussion at the OPs
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T 1743/06 – Trial And Error : To Be Taken In Moderation
focused on this crucial point whereby the [patentee] confirmed that stirring was an important feature and it pointed in this respect to paragraph [0049] of the patent in suit, reading: “Mixing is an important feature in the reaction of silicate and sulphuric acid. Consequently fixed specifications, as listed in Chemineer Inc. Chem. Eng. 26 April 1976 pages 102-110, have been used to design the baffled, heated stirred reaction vessel. Whilst the turbine design is optional to the mixing geometry, a 6— bladed 30° pitched bladed unit has been chosen for the experiments in order to ensure maximum mixing effectiveness with minimum shear.” [1.6] The [patentee] argued that the skilled person reading said paragraph would use the above suggested turbine design and owing to the teaching that “minimum shear” with “maximum mixing effectiveness” was to be ensured, he would find the information necessary to ensure the “minimum shear” in the document cited in the above passage, i.e. D10. It quoted in this respect Table 1 and Figure 2 of D10 […] Relying on the content of document D10, the board does not accept this argument because neither Table 1, nor Figure 2, nor the four excerpts submitted as D10 address the preparation of an amorphous silica, let alone the preparation of a silica having the properties presently claimed. Furthermore, neither Table 1, nor Figure 2, nor the remaining parts of D10 appear to provide the information necessary to ensure the “minimum shear” with “maximum mixing effectiveness” referred in the paragraph [0049] of the patent in suit. The [patentee] was invited to comment on this issue at the OPs but was in particular not able to explain how the skilled person using the information found in document D10 should operate to arrive without undue experimentation at the product claimed. Since the stirring conditions are missing as regards the preparation of the two examples, there are no concrete data on which the skilled person could rely. This means that as regards the preparation of amorphous silicas claimed other than those specifically exemplified in the patent in suit, the stirring conditions have in any case to be discovered by trial and error. [1.7] The [patentee] argued in this respect that the determination of the optimal stirring speed in the preparation of the silica claimed would be arrived at without undue burden simply by varying the stirring speed during the reaction of silicate with sulphuric acid while reworking the two examples of the patent specification. The board can accept that such a trial and error experimentation might in the present case not be considered as undue burden as far as the silicas illustrated in the examples of the contested patent are concerned. However, this reasoning which can be accepted only for the two examples, does not hold good for the other claimed but nonexemplified amorphous silicas and in the absence of any specific recipe concerning the preparation of such silicas, the problems concerning the stirring speed still remain for silicas claimed over the whole range. [1.8] The skilled person is thus confronted with the uncontested fact that he has a lot of process variables affecting the claimed parameters, but once he has encountered failure in one parameter value, there is no clear guidance enabling him to adjust the multitude of process steps in order to arrive with certitude at silicas meeting the parameter requirements defined in claim 1 of both requests at issue. Even though a reasonable amount of trial and error is permissible when it comes to assessing sufficiency of disclosure, there must still be adequate instructions in the specification, or on the basis of common general knowledge, leading the skilled person necessarily and directly towards success, through evaluation of initial failures. This is not the case here, since the preparation of the amorphous silicas claimed is made dependent on the adjustment of different process parameters for which no guidance is given in the patent in suit, so that the broad definition of an amorphous silica as presently claimed is no more than an invitation to perform a research program in order to find a suitable way of preparing the amorphous silicas over the whole area claimed. [1.9] It follows from the above, that the principle underlying A 83 that the skilled person should be given sufficient guidance for performing the invention without undue burden over the whole range claimed is thus not fulfilled and therefore, the subject-matter of claims 1 of both requests at issue is found not to meet the requirements of A 100 (b). [1.10] To read the whole decision, click here.
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K’s Law – The e
T 810/07 – Ways Of Saying No
K’s Law – The ebook
T 810/07 – Ways Of Saying No 10 Mrz 2010
The present decision concerns a textbook example of a ‘wish claim’. The Board appears to have hesitated between rejecting it for lack of novelty and rejecting it for lack of clarity. Finally it formulated a sort of hybrid rejection. Claim 1 read : “A projector comprising: a light source for emitting beams of lights; a rod lens (24) for receiving the beams of lights from the light source for making a distribution of the beams uniform; and, a polarization beam converter (26-30) having a lens part (26, 28) comprising a first illumination lens (26) and a second illumination lens (28) for receiving the beams from the rod lens (24) and focussing onto a plurality of focusing points, and polarization beam split array (30) for receiving the beams inclusive of a P wave and an S wave, and forwarding the P wave as it is, and converting the S wave into the P wave before forwarding, or forwarding the S wave as it is, and converting the P wave into the S wave, characterized in that the rod lens (24) and the polarization beam converter (26-30) are arranged to improve the quantity of the beams concentrated on the center part (38) of the illumination lenses (26, 28), so that the deterioration of the beam uniformity caused by fine movements of the illumination lenses (26, 28) and/or the polarization beam split array (30) is prevented. In a communication accompanying the summons to oral proceedings (OPs), the board informed the appellant of its purely preliminary and unbinding comments on the case as follows. The functional terminology used in the characterising part of claim 1 could not be considered clear within the meaning of A 84 because (a) the general terms used, such as “improve”, “deterioration” and “fine” movements, were not quantified and thus obscure and (b) in the absence of any structure or quantification, it amounted to an obscure result to be achieved. With respect to novelty, it seemed undisputed that the pre-characterising features of claim 1 were known from document D2 as explained by the examining division. In view of its obscurity, the feature “to improve the quantity of the beams concentrated on the centre part” could not be considered to provide novelty. Generally speaking, axial beam concentration is always a desideratum, and even if the board considered the terminology somehow limited to the configuration of Figure 9 of the application, this would not seem novel over, for instance, Figure 4 of document D2. Equally no structure was present explaining non occurrence of “deterioration” of the beam consequent to “fine” movement, and whatever this may mean, the same structure in the prior art documents would appear also to achieve this result. Accordingly, the board was not in a position to consider the subject matter of claim 1 to be novel. [V] […] Since no response was made to the communication of the board ahead of the OPs, the comments therein made have not been disputed by the appellant. The board has, of its own motion, seen no reason to change its position as set out in that communication. In particular, the board remains of the view that the features in the precharacterising part of the claim are known from document D2 as explained by the Examining Division (ED), whereby it can be observed that the division referred to lenses 4 and 5 and the word “sprite” mentioned in the analysis of the ED has been corrected to “split” in the claim presented on appeal. [2] Likewise, the board remains of the view that the characterising features of claim 1 are not clear, and, do not provide novelty. Therefore, so far as the subject matter of claim 1 can be considered clear, it is not novel within the meaning of A 54. [3] Accordingly, the application documents provided with the statement of grounds for appeal, the sole version up for decision, cannot be considered to comply with the requirements of the EPC. [4] Perhaps I am being pernickety, but I do not find the hybrid formula “so far as ... can be considered clear, it is not novel” fortunate. This wording raises the question of how a lack of clarity should be dealt with. I plan to comment on another decision where the Board found that unclear features should be considered as open to anticipation by more extensive prior art, or, in extreme cases, non-limitative. On the other hand, a simple rejection for lack of clarity appears to be possible, too. The present formula tries to strike a balance between these two options, which makes it look undecided (or should I say: unclear?). 3113 | 3398
T 810/07 – Ways Of Saying No
K’s Law – The ebook
To read the whole decision, click here.
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G 1/07 – What Is A “Treatment By Surgery”?
K’s Law – The ebook
G 1/07 – What Is A “Treatment By Surgery”? 9 Mrz 2010
The present decision of the Enlarged Board of appeal (EBA) also deals in detail with the question as to what a “treatment by surgery” - excluded from patentability by A 53(c) - is meant to be. The EBA first answers the question if the exclusion only concerns therapeutic surgery. It comes to the conclusion that this cannot be the case, for the following reasons: First, the wording of A 53(c) does not suggest so. The word ‘surgery’ as such appears to comprise non-curative action: In decision T 182/90 [2.2-4] the Board explored the meaning of the term “surgery” in general and found that in today’s medical and legal linguistic usage, non-curative treatments are, if carried out by surgery, regarded as surgical treatments. This statement has not been put into question as such in the later decisions. [3.3.1, 1st §] Moreover, the arrangement of A 53(c) does suggest that the surgical methods under consideration do not have to be therapeutic: […] In order to be patentable a claimed invention must fulfil all requirements for patentability and must not be excluded from patentability by any of the exclusions foreseen in the EPC. The three alternative exclusions in A 53(c) are thus cumulative requirements. In order to be patentable a claimed method must neither be a therapeutic nor a surgical nor a diagnostic one. [3.3, 3rd §] […] The fact that the exclusion of methods of treatment by surgery from patentability is one of three alternative exclusion conditions prima facie indicates that the situations covered by each of the alternatives were not meant to be identical since the inclusion of the term “by surgery” in A 53(c) would be pointless if the meaning of that alternative was already entirely contained in the exclusion from patentability of the other alternative, i.e. the “treatments by therapy”. [3.3.1, 2nd §] The Board notes that the exclusion of surgical methods was not initially contained in the draft EPC but was introduced later than the exclusions relating to therapeutic and diagnostic methods. It therefore explores the legislative history and the purpose of the insertion. The above mentioned understanding is found “rather to be supported by the course of the preparatory work for the EPC 1973 and by the outcome of later legislative initiatives”. The EBA also studies the jurisprudence of Board 3.2.02 and finds that there have been diverging decisions. The Enlarged Board concludes: […] The foregoing considerations, in particular also the comparison between the cases as decided in T 1172/03 on the one hand and T 383/03 on the other hand, show how inconsistent the decisions to be made may become, if the term “treatment by surgery” is seen as limited to therapeutic surgery only. Admittedly, it is often also difficult to precisely delimit excluded therapeutic from patentable cosmetic treatments. However, in this context the problem cannot be avoided, since it is the express wording of A 53(c) that only therapeutic methods are excluded from patentability (and thus cosmetic methods are not) and the exclusion cannot be extended to treatments which are not therapeutic in character (T 1172/03, [2.2], making reference to T 144/83). [3.3.8.6] The question as to whether A 53(c) only excludes therapeutic surgery therefore receives a very clear answer: Summarising the above, neither the legal history nor the object and purpose (“ratio legis”) of the exclusions from patentability in A 53(c) justify a limitation of the term “treatment by surgery” to curative surgery, contrary to what the ordinary meaning of the word “surgery” implies and contrary to the fact that A 53(c) defines three separate alternative exclusions thereby suggesting that these are not merely identical in scope. Hence, the Enlarged Board concludes that the meaning of the term “treatment by surgery” is not to be interpreted as being confined to surgical methods pursuing a therapeutic purpose. [3.3.10] 3115 | 3398
G 1/07 – What Is A “Treatment By Surgery”?
K’s Law – The ebook
What then is the scope of the exclusion? The EBA first deals with the question as to whether the involvement of medical or veterinary practitioners can be decisive. It relies on the findings of G 1/04 [6.3] and confirms that “whether or not a method is excluded from patentability under A 53(c) cannot depend on the person carrying it out.” So is it the nature of the interventions that determines whether they are surgical or not? The EBA presents the broad construction that has been used by several Boards in the past: […] The broad construction of the kind of interventions being of a surgical nature developed in decision T 182/90 [2.2-3], that it covers any non-insignificant intervention performed on the structure of an organism by conservative (“closed, non-invasive”) procedures such as repositioning or by operative (invasive) procedures using instruments including endoscopy, puncture, injection, excision, opening of the bodily cavities and catheterisation, has not as such been challenged by decision T 383/03 and the later decisions following it having additionally required a therapeutic purpose in order for the exclusion to apply. [3.4.2.1, 1st §] The EBA considers that this broad construction is no more justified. This is where the decision takes a rather pragmatic turn: This broad view of what should be regarded as surgical activities excluded from patentability has in the Enlarged Board’s view rightly been criticised by the appellant as being or having become overly broad when considering today’s technical reality. The advances in safety and the now routine character of certain, albeit invasive techniques, at least when performed on uncritical parts of the body, have entailed that many such techniques are nowadays generally carried out in a non-medical, commercial environment like in cosmetic salons and in beauty parlours and it appears, hence, hardly still justified to exclude such methods from patentability. This applies as a rule to treatments such as tattooing, piercing, hair removal by optical radiation, micro abrasion of the skin. If so, that can also not be ignored when it comes to the application of routine interventions in the medical field. Today, numerous and advanced technologies do exist in the medical field concerning the use of devices which in order to operate must in some way be connected to the patient. Methods for retrieving patient data useful for diagnosis may require administering an agent to the patient, potentially by an invasive step like by injection, in order to yield results or at least they yield better results when using such a step. Considering this technical reality, excluding from patentability also such methods as make use of in principle safe routine techniques, even when of invasive nature, appears to go beyond the purpose of the exclusion of treatments by surgery from patentability in the interest of public health. Insofar the definition given in opinion G 1/04 [6.2.1] that “any physical intervention on the human or animal body” ... is a method of surgery within the meaning of A 52(4) EPC 1973 appears too broad. [3.4.2.2] The EBA then gives some “elements of a narrower understanding”: Hence, a narrower understanding of what constitutes by its nature a “treatment by surgery” within the meaning of A 53(c) is required. It must allow the purpose of the exclusion to be effective but it must also not go beyond it. The exclusion serves the purpose of, in the interests of public health and of patients, specifically freeing the medical profession from constraints which would be imposed on them by patents granted on methods for surgical or therapeutic treatment, thus any definition of the term “treatment by surgery” must cover the kind of interventions which represent the core of the medical profession’s activities, i.e. the kind of interventions for which their members are specifically trained and for which they assume a particular responsibility. These are the physical interventions on the body which require professional medical skills to be carried out and which involve health risks even when carried out with the required medical professional care and expertise. It is in this area that the ratio legis of the provision to free the medical profession from constraints by patents comes into play. Such a narrower understanding rules out from the scope of the application of the exclusion clause uncritical methods involving only a minor intervention and no substantial health risks, when carried out with the required care and skill, while still adequately protecting the medical profession.
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G 1/07 – What Is A “Treatment By Surgery”?
K’s Law – The ebook
One amicus curiae observed that the administration of diagnostic agents often causes negative side effects. It is therefore convenient to clarify that there is an exclusion from patentability as a surgical method only if the health risk is associated with the mode of administration and not solely with the agent as such. It was also remarked that it would be absurd if administering a diagnostic agent by an injection was excluded from patentability but administering by inhalation was not. It is not for the Enlarged Board to decide whether a method involving the injection of a contrast agent is in fact excluded from patentability under the definition of “treatment by surgery” given here. As a matter of patent law, however, this argument does not hold good, since, by contrast to one early draft version of A 52(4) EPC 1973, neither its final version nor A 53(c) stipulate an overall exclusion of medical methods from patentability. Both provisions only exclude the therapeutic, diagnostic and surgical methods listed in the Articles. Hence, where a step is neither a therapeutic nor a diagnostic nor a surgical method the legal situation was and is that it is not excluded from patentability. [3.4.2.3] However, the Board refuses to go much further; it decides to let the first instance bodies and the Boards of appeal do the rest of the work. Clearly, it is not possible for the Enlarged Board in the context of the present referral when trying to redefine the meaning of the term “treatment by surgery” to give a definition which would, once and for all, also delimit the exact boundaries of such a new concept with respect to the whole comprehensive body of technical situations which might be concerned by it. Assuming such a task would go far beyond the scope of present referred question 1. The set of circumstances underlying the referral has been determined in the referring decision as encompassing an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a health risk. Hence, what the Enlarged Board must do in answering question 1 [referred to it by T 992/03], is to define the scope of the term “treatment by surgery” to an extent which allows the referring Board to decide whether or not the step claimed in the application-in-suit falls under that definition. This will also indicate the direction in which further practice and jurisprudence should develop. The required new direction is that the exclusion from patentability should not be applied to methods in respect of which the interests of public health, of protection of patients and as a counterpart to that of the freedom of the medical profession to apply the treatment of choice to their patients does not call for their exclusion from patentability. The first instance bodies and the boards of appeal are much better suited to define the boundaries of a more narrowly construed concept of “treatment by surgery” in situations other than the one underlying the present referral, based on the technical reality of the individual cases under consideration. This includes that the required medical expertise and the health risk involved may not be the only criteria which may be used to determine that a claimed method actually is a "treatment by surgery" within the meaning of A 53(c). The referring decision and the President have mentioned the degree of invasiveness or the complexity of the operation performed but these do not appear to be issues in the case underlying the referring decision. At least, the referring decision contains no statement of fact establishing the presence of such circumstances which the Enlarged Board would have to consider when determining the scope of its answer given. Although it appears likely that interventions involving a high degree of complexity and/or a high degree of invasiveness would normally also be such as to require professional medical expertise and entai1 health risks even when carried out with the required care and expertise, the Enlarged Board does not wish to rule out from the outset that, depending on the circumstances of the individual case under consideration, other criteria could not also determine that a physical intervention on the human or animal body is a "treatment by surgery" within the meaning of A 53(c). [3.4.2.4] The Board terminates its considerations by referring to the fluidity of concepts: Another reason why the Enlarged Board cannot, in the context of the present referral, give an authoritative once and for all definition of what the term “treatment by surgery” may comprise is that in the ever changing technical and medical reality the term “surgery” itself does not appear to have a once and for all fixed meaning, either. There appears to be no general common concept for the acts which are commonly regarded as surgical in the medical sense. Rather, it appears that what is to be understood by “surgery” in the medical sense is to a large extent a matter of convention. Thus, in order to be surgical, it is not necessary that the intervention be invasive or that tissues be penetrated (T 5/04 [2]). Repositioning body limbs or manipulating a body part is traditionally considered surgical. The mere catheterisation or the insertion of components of a device into the body is already regarded as prohibited as being a surgical step even if it does not require the penetration of tissues (T 5/04). All this implies that the scope of what is surgery may change with time and with new technical developments emerging, as was already acknowledged in decision T 182/90 [2.4]. [3.4.2.5]
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G 1/07 – What Is A “Treatment By Surgery”?
K’s Law – The ebook
As to this last point, I am tempted to object that a decision of the EBA is not the law of the Medes and the Persians either … If the wise (wo)men of the EBA only decided on matters they could fix once and for all times, they would have to resign to silence. However, let us not be ungrateful - the Enlarged Board has gone well beyond the original question referred to it and opened new horizons.
Summing up, I would say that this decision constitutes an interesting mix of legal precision (as far as the separation between therapy and surgery is concerned) and pragmatic eagerness not to let legal precision stand in the way of patentability. I have the feeling that the EBA to some extent adds to the EPC when developing its “narrower understanding” of surgery, but the Enlarged Board has almost always chosen to favour patentability and, therefore, this orientation is all but a surprise. To download the decision, just click here.
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G 1/07 – Vienna Is Not Narrow-Minded
K’s Law – The ebook
G 1/07 – Vienna Is Not Narrow-Minded 8 Mrz 2010
In my previous post dedicated to G 1/07 I only reported the answers given by the Enlarged Board (EBA) to the questions referred to it by interlocutory decision T 992/03. I promised to come back on the decision of the EBA should I find it to contain interesting statements. In fact, I found the decision as a whole much more interesting than its answers to the (rather narrow) questions. I will dedicate two further posts to noteworthy points raised by the EBA. The first one deals with an interpretative principle that has often been followed as if it was self-evident : the principle stating that exclusions to a general rule are to be interpreted narrowly. The EBA has something very interesting to say on this subject: [...] The appellant, referring to case law of the boards of appeal and most of the amici curiae submit that on the basis of the Vienna Convention a principle of narrow interpretation of exclusions from patentability should apply, since according to A 4(3) it is the task of the Organisation to grant European patents. It is established in the jurisprudence of the EBA ever since decision G 5/83 [3ss] that the principles of interpretation of Articles 31 and 32 of the Vienna Convention are to be applied to the interpretation of the EPC even though its provisions do not apply to the EPC ex lege. According to Article 31(1) of the Vienna Convention a treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose. Further means of interpretation including in Article 32 the preparatory work of the treaty are then defined but there is no mention in the said provisions of any principle of narrow or broad interpretation, be it only of exclusions, and decision G 5/83 also does not say so. Hence, no general principle of narrow interpretation of exclusions from patentability which would be applicable a priori to the interpretation of any such exclusions can be derived from the Vienna Convention. Rather, the general rule in Article 31, point 1 of the Vienna Convention that a treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose must apply to the exclusion clauses contained in the EPC in the same manner as to any other provision, the latter including those positively defining the requirements for patentability. If the interpretation of the provision concerned according to these principles of interpretation leads to the result that a narrow interpretation is the right approach then and only then such restrictive meaning is to be given to it. Admittedly, when it comes to considering the impact of the context of a provision, the fact that a provision is an exclusion to a general rule is not without any bearing on its interpretation but this aspect is only one of the factors determining what the right interpretation of the provision concerned is. At least equally, if not more important, is, besides the ordinary meaning to be given to the wording of the provision, that the provision is interpreted in such a manner that it takes its effect fully and achieves the purpose for which it was designed. As has been said before, this must apply to an exclusion clause in the same manner as to any other requirement for patentability. In its opinion G 1/04 [6] the Enlarged Board stated – thereby referring to decisions of the boards of appeal having acknowledged the existence of such an a priori principle – that the “frequently cited principle”, according to which exclusion clauses from patentability laid down in the EPC are to be construed in a restrictive manner, does not apply without exception. Interestingly, in that opinion concerning the definition of the term diagnostic methods practised on the human or animal body, the Enlarged Board carne to its conclusion that the said exclusion was indeed to be interpreted narrowly only after a thorough investigation of the wording and the purpose of the exclusion clause concerned. The same approach is also transparent from the Enlarged Board’s more recent decision G 2/06. In that decision the Enlarged Board was concerned with the interpretation of the exclusion from patentability of biotechnological inventions relating to uses of human embryos for industrial or commercial purposes under R 28(c) EPC (and the corresponding Article 6(2) of the EC Directive on the legal protection of biotechnological inventions). In that decision the Enlarged Board does not mention the existence of a principle of narrow construction of exceptions from patentability at all. Instead, as method for interpreting the extent of the prohibition the Enlarged Board goes 3119 | 3398
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K’s Law – The ebook
directly to the rules of interpretation laid down in the Vienna Convention, i.e. it looks at the terms of the provision and its object and purpose (point 16 of the Reasons). No mention is ever made in the further course of the reasons of that decision of any narrow or restrictive view which would have to be taken because the said prohibition was an exception to patentability and in the present case the Enlarged Board will proceed in the same way. [3.1] I am not unhappy to see the Enlarged Board put aside this principle, although by doing so the EBA deprives me of a beloved trait d’esprit. When people pointed out that exceptions to patentability were to be interpreted narrowly, I often answered that European patents created an exception to the principle of free movement of goods in Europe (all Contracting States to the EPC are in one way or another linked to the European free trade area) and, therefore, European patent law was to be interpreted narrowly. As a consequence, so went my argument, exceptions to patentability were exceptions to an exception and, as such, to be interpreted broadly. Needless to say, I have not made many converts. Now the EBA, by setting aside the exceptions-are-to-beinterpreted-narrowly principle, also sets aside my only original contribution to the patent doctrine. Sad, isn’t it? To download the decision, click here.
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T 617/07 - Musings On Sufficiency
T 617/07 - Musings On Sufficiency 6 Mrz 2010
[…] the board concludes that no case of lack of sufficient disclosure of claim 37 has been made. [44] [The opponent] has referred inter alia to decisions T 226/85, T 409/91 and T 694/92 to support his case. The facts underlying these three decisions have in common with the present case that the patent or the patent application disclosed only one or very few ways of carrying out the invention. The boards in decisions T 226/85, T 409/91 and T 694/92 held that the disclosure of the specific examples was not sufficient to enable the invention to be carried out as claimed. [45] However, no principle can be deduced from these decisions that sufficiency of disclosure is always to be denied if there is only example of carrying out an invention. Rather it is emphasised in all three decisions that: (i) the skilled person should be able to realise without undue burden substantially any embodiment falling in the ambit of a claim on the basis of the disclosure and/or common general knowledge (T 226/85 [2-3]; T 409/91 [3.5, 2nd §]; T 694/92 [5, 3rd §], that (ii) the objection of lack of sufficient disclosure presupposes that there are serious doubts, substantiated by verifiable facts (T 409/91 [3.5, 2nd §]; T 694/92 [5, 3rd §]) and finally that (iii) it depends on the evidence available in each case whether or not a claimed invention can be considered as enabled on the basis of the disclosure of one worked example (T 226/85 [5-7]; T 409/91 [3.4-5]; T 694/92 [1416]). [46] The present board has balanced the facts of the present case with these considerations and has arrived at the conclusion that the requirement of sufficiency of disclosure was fulfilled with regard to claims 20 and 37 on the basis of the circumstances of the present case. [47] Finally, [the opponent] has pointed to the legal principle referred to in decisions T 409/91 and T 694/92 that patent protection should correspond to the technical contribution disclosed in a patent. However, this is not a principle applied per se for judging whether or not the requirements of A 83 are fulfilled, as seems to be implied by [the opponent’s] submission. Rather, it is derivable from decisions T 409/91 and T 694/92 that the aim that patent protection be fair is achieved by proper application of the requirements of the EPC. It is stated in decision T 409/91 [3.5]: “[...], the underlying purpose of the requirement of support by the description, insofar as its substantive aspect is concerned, and of the requirement of sufficient disclosure is the same, namely to ensure that the patent monopoly should be justified by the actual technical contribution to the art.” Similarly, it is said in decision T 694/91 (sic) in point 3: “This need for fair and adequate protection has been emphasised in several decisions of the boards of appeal (see, for example, T 292/85 and T 301/87). The board deems it appropriate to consider the interrelation between the requirements of A 84, A 83 and A 56 in order to find a fair balance in the present case.” Finally, this view is also confirmed in the more recent decision T 309/06 [14]: “All through the oral proceedings, the respondent repeatedly emphasized that claim 1 had a very wide scope which was not commensurate with the technical contribution provided. It is undoubtedly true that the breadth of the claim is very large. However, such case law as T 19/90 must be remembered at this point. In this earlier case, transgenic non-human mammals were claimed on the basis of having produced transgenic mice. The then competent board decided (T 19/90 [3.3]) that the mere fact that a claim is broad was not in itself a ground for considering the application as not fulfilling the requirements of sufficient disclosure under A 83. What is of importance is whether or not the skilled person could reproduce the invention without undue burden.” [48]
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K’s Law – The ebook
T 617/07 - Musings On Sufficiency
From the foregoing the present board concludes that its finding that the disclosure is sufficient with regard to the invention in claims 20 and 37 is consistent with the earlier jurisprudence of the boards of appeal of the EPO. [49] To read the whole decision, click here.
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T 428/08 – Transfers Are Effective When Evidence Is Filed
K’s Law – The e
T 428/08 – Transfers Are Effective When Evidence Is Filed 5 Mrz 2010
Another decision on transfer of the opponent status. I like it because the argumentation is solid and sound. The other side of the coin is that it is a bit lengthy. Although the appellant does not designate itself as the appellant in the notice of appeal, it follows from the wording of its statement “The opposition was transferred to VDO Automotive AG” and the fact that the notepaper only contained indications concerning VDO Automotive AG and its postal address that the appeal was filed in the name and with the full powers of this company. The appellant confirmed that this interpretation corresponded to its will and did not invoke an erroneous declaration. Indications in the statement of grounds of appeal cannot be used for interpreting the notice of appeal. The statement made in the subject line of the statement of grounds of appeal, i.e. “VDO Automotive AG and subsidiarily Siemens AG” cannot be used for the interpretation of the notice of appeal, nor can it be considered to be an auxiliary request filed with the appeal because the statement of grounds was filed after expiration of the time limit for filing an appeal. The admissibility of the appeal is determined only on the basis of the legal facts that were presented at the expiration of the time limit for filing an appeal. [1] […] “VDO Automotive AG” was not a formal party to the proceedings before the Opposition Division and thus not entitled to file an appeal. [2] The appellant relies on the fact that, according to G 4/08 [sic], the opponent status had been transferred from Siemens AG to it at the time of filing of the appeal, because the opposition of Siemens AG was attached to its “Siemens VDO Automotive” division and because this division was taken over by the appellant. [3] […] The legal succession (rechtsgeschäftliche Rechtsnachfolge) as a party to opposition proceedings becomes effective only when the transfer of the opponent status has been conclusively demonstrated and proven in the proceedings (see T 870/92 [3.1]). Therefore, the conclusive proof has only “ex nunc” effect for the change in the party status and has no retroactive effect in view of legal acts that have been performed beforehand. The mere allegation to be a legal successor is not sufficient for an effective transfer in the party status to take place (T 670/95 [2]). [4] The notice of appeal did not fulfil the requirements, as it did not conclusively demonstrate the legal transfer, nor provide proof for the claimed legal transfer. It does not conclusively follow from the statement in the notice of appeal according to which the business domain Siemens VDO Automotive has spun off from Siemens AG to become VDO Automotive AG, has been sold to Continental AG and momentarily did business under the name VDO Automotive AG, on the basis of which legal acts (Rechtsvorgänge) VDA Automotive AG could indeed have obtained the quality of opponent as legal successor. In particular, the mention that Continental AG has acquired the division suggests a temporary acquisition (?? Durchgangserwerb) by Continental AG, whatever the legal nature of this acquisition might have been. The decisive legal facts of a legal spin-off of the division Siemens VDO Automotive and its transfer to the legally pre-existing Siemens VDO Automotive AG by means of a post-formation acquisition (Nachgründung) cannot be construed from the notice of appeal but only from the written submission dated August 15, 2008, which also submitted, for the first time, two excerpts from the commercial register (Handelsregisterauszüge) as evidence for the legal succession. Therefore, the claimed legal transfer, if at all, could only have become effective on filing of the written submission dated August 15, 2008. Beforehand, at the expiration of the time limit for filing an appeal (February 27, 2008), the appellant had not effectively obtained opponent status and was not entitled to file an appeal.
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T 428/08 – Transfers Are Effective When Evidence Is Filed
Therefore, the appeal filed on February 27, 2008 was inadmissible for lack of entitlement. [5] However, the appellant relies on the argument that it ought to be admissible to file the evidence concerning the legal succession after expiration of the time limit for filing an appeal because it was also possible to file evidence for proving a prior use after expiration of this time limit, without there being the possibility that this ground for opposition be rejected. First of all, the Board points out that an inconclusive presentation of a ground of opposition based on a prior use would also have the effect of making the opposition inadmissible (T 328/87 [headnote]). Moreover, the requirements for an admissible opposition are determined pursuant to A 99, R 76(2)(c), and R 77(1), whereas the effectiveness of a transfer of the opponent status is governed by the criteria developed in the established case law. Insofar as the facts are different, the legal consequences are different, too. The case law has expressly made the entry into effectiveness of the transfer of the opponent status depend on the point in time at which the evidence for the legal transfer is provided, which excludes any retroactive effect. This case law corresponds to the requirement of legal certainty that at any time it has to be known who is party to the proceedings and to whom the Board has to send notifications. The appellant wrongly maintained that decision T 670/95 does not answer the question whether the evidence may also be filed after expiration of the time limit for filing an appeal, because point 2 of the reasons expressly states that the proceedings have to be conducted with the original party until proof of the legal transfer is supplied. This wording excludes a possible retroactive change of the party status after presentation of the evidence. In decision T 870/92 [2] it is also stated that the legal succession as a party to opposition proceedings is only made effective by presentation of the evidence for a change in the party status. In decision T 19/97, it is pointed out that it is necessary to distinguish between the material requirements for a transfer of the opponent status, cited in G 4/88, and their procedural effectiveness. Point 5 of the reasons makes the following statement concerning the resulting legal consequence: “From the point of view of substantive law, the transfer of the opponent (appellant) status which is a right that is accessory to the rights linked to a business division, has to be distinguished from its procedural effectiveness in the present proceedings. The latter being a formal procedural requirement, it has to be made dependent on the filing of a correspondingly justified request. For reasons of procedural legal safety, a change of parties due to a legal (?? rechtsgeschäftlich) transfer may not take place outside the proceedings without formal knowledge by the Board and may not take place retroactively because otherwise procedural acts or decisions could be carried out or made without a participation of the new opponent as sole entitled party. Therefore, a party change could only occur in the proceedings once the legal succession was requested and proven before the Board, because only then it was established for the Board who was the new opponent (appellant) and, therefore, party. Therefore, this formal requirement for an agreed change of party based on a transfer of a business division follows from general principles of procedure. Decision T 870/92 [3.1] comes to the same conclusion by applying R 20(3) and R 61, which as such only govern the effect of a legal transfer on the side of the applicant patent proprietor.” Therefore, the appellant cannot rely on the fact that the filing of excerpts from the commercial register retroactively caused a change of the opponent status. [6] The appellant also pointed out that the claimed legal transfer could have been determined by anyone and the Board by consulting the publicly available commercial registers event at the date on which the appeal was filed, and that further proof for the effectiveness of the legal succession was not needed in order to cause a transfer of the opponent status to the appellant. The question as to whether certain facts which are disclosed by a public register can be considered to be manifest facts for the Board can be left aside. As a matter of fact, a conclusive demonstration of how the legal transfer to the appellant had taken place is missing in the notice of appeal, because of the assertion that a business division was acquired by Continental AG. There were no concrete legal facts in the notice of appeal concerning the merger by post-formation acquisition which pointed out how the acquisition of the business division by Continental AG took place and that there was no temporary acquisition (?? Durchgangserwerb) of the business division by Continental AG. It is not part of the duties of the Board to complete and correct a missing conclusive statement of facts of a party by inspection of the relevant commercial registers. Having said this, it does not result from [the entries in] the commercial registers which rights were transferred from Siemens AG to VDO Automotive AG because there is only a reference to a particular business division. The legal transfer of a business division from one legal entity (Rechtsträger) to another is quite different from the case of a universal succession wherein one legal entity is completely merged with another from the legal 3124 | 3398
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T 428/08 – Transfers Are Effective When Evidence Is Filed
point of view and wherein the commercial register testifies by the entry of the merger that all the rights existing at the moment of the entry into the register have been transferred to the other legal entity and that the transferring legal entity has ceased to exist from the legal point of view at that moment. When there is a legal transfer of a particular business division from one legal entity to another, both legal entities continue to exist as legally independent entities even after the entry of the transfer into the commercial register. Which rights or which assets are attached to the business division only results from the legal intention of the parties that is stipulated in the transfer agreement. If Siemens AG had claimed its rights as opponent against the will of the appellant in the appeal proceedings, only the transfer agreement – but not the entry into the commercial register – could have been considered as evidence for the real entitlement. Therefore, the appellant would have had to submit at least an extract of the merger agreement in order to prove that the attribution of the opponent status of Siemens AG as inseparable asset of the business division Siemens VDO Automotive and as evidence for the legal transfer of the opponent status to VDO Automotive AG. In this respect there cannot be other rules for proving the transfer of the opponent status according to substantive law than for proving the transfer of a patent attached to a business division. Which IP rights or “opponent status” are attached to a business division can only be determined from the merger agreement, possibly by interpreting it, as the case may be. The appellant has not provided such evidence; the reference to generally known facts [disclosed] in commercial registers is not sufficient as evidence. [7] […] The appeal is rejected as inadmissible. To read the whole decision (in German), click here.
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T 1351/06 – On The Importance Of Rank And Order
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T 1351/06 – On The Importance Of Rank And Order 4 Mrz 2010
In this case the applicant had filed amendments in response to a notification under R 51(4) EPC 1973 and had approved the text agreed upon by the Examining Division (ED) only as a subsidiary request. The ED granted the patent on the basis of this subsidiary request and informed the applicant that its main request was rejected, without any further justification. […] Having received the notification pursuant to R 51(4) EPC 1973, the appellant has filed a main request consisting in amendments, filed the translations of the amended claims and paid the fee for grant and publication in good time, pursuant to R 51(5) EPC 1973. It has approved the text proposed by the ED, but only as an auxiliary request. This means that the appellant has not approved without any reservation the text notified pursuant to R 51(4), but, quite to the contrary, it has introduced a new request of higher rank with respect to the order of preference. It is in conformity with the practice of the EPO that at the stage of the examining proceedings the applicant can file a main request and one or more auxiliary requests in view of amending its application (see T 79/89, T 169/96, T 1105/96 and Legal Advice 15/05). The Board does not see any reason why the applicant could not do so in response to a notification pursuant to R 51(4), in particular in a situation where, as here, the notification was not preceded by a notification pursuant to A 96(2) EPC 1973 and, therefore, is a “first notification” within the meaning of R 86(3) EPC 1973. An auxiliary request is a request that applies only if the main request or the auxiliary request of higher rank is not allowed (see T 153/85, T 79/89, T 169/96 and T 1105/96). In accordance with A 113(2), the EPO has to stick to the requests of the applicant. When one or more auxiliary requests are filed in addition to the main request, the ED has to examine these requests in the order in which they have been presented. Before it can decide on an auxiliary request, the ED has to examine the main request and all the auxiliary requests preceding said auxiliary request and decide on them (see T 484/88, T 169/96, T 1105/96). In the present case, the main request has not been withdrawn and therefore remains pending. It follows from what has been said that the decision to grant the patent on the basis of the auxiliary request is contrary to A 113(2). Therefore, the appellant is adversely affected within the meaning of A 107. […] The appeal is admissible. [2] […] A 113(2) being a fundamental principle governing the proceedings and forms part of the right to be heard. It is of utmost importance, which means that any violation of this provision, even if it results from an erroneous interpretation of the request, has to be considered a substantial procedural violation (see T 647/93). [3.2] […] R 51(6) EPC 1973 requires that if the ED does not consent to an amendment requested under R 51(5) EPC 1973, it shall, before taking a decision, give the applicant an opportunity to submit, within a period to be specified, his observations and any amendments considered necessary by it, and, where the claims are amended, a translation of the claims as amended. This way of proceeding preserves the general right of the applicant to present comments in conformity with A 113(1). There is no reason whatsoever to deviate from this way of proceeding if the amendments are filed as main request and the approval of the text proposed by the ED only as auxiliary request. In decisions T 1181/04 and T 1255/04 it has been said that in the case where the applicant has filed a main request and one or more auxiliary requests and where the ED has the intention of allowing only one of the auxiliary requests, the notification pursuant to R 51(4), which specifies on the basis of which text the ED is willing to grant a patent, has to be accompanied by the grounds of rejection of the requests that precede it by order of preference. This notification also has to mention expressly the possibility of maintaining the rejected auxiliary requests, in order to remind the applicant of the possibility to request a written decision that may be appealed. These principles also have to be applicable when the main request and one or more auxiliary requests are filed for the first time within the period specified under R 51(4) if the right of the applicant to appeal against the rejection of preceding auxiliary requests is to be safeguarded. As the appellant had requested amendments as main request and had fulfilled all the requirements of R 51(5), the ED had to tell it the grounds on which the preceding request was rejected and had to give it the possibility of 3126 | 3398
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K’s Law – The ebook
presenting its comments before taking a decision, in conformity with R 51(6). The ED would have had to mention the admissibility of the auxiliary request and the possibility of maintaining the rejected main request. [3.3.1] To read the whole decision (in French), click here.
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T 1895/06 – Troubled By The Straw Man
K’s Law – The ebook
T 1895/06 – Troubled By The Straw Man 3 Mrz 2010
[…] The appellant (proprietor) requested that the following questions be referred to the Enlarged Board of Appeal: 1. Is an opposition admissible in a case where an “opponent” receives instructions and evidence from a third party and acts as a straw man and/or a professional representative with the effect of delaying the opposition procedure? 2. Are the rules given by G 3/97 compatible with the principles of the Convention for the Protection of Human Rights and Fundamental Freedoms, which form part of the legal system of the EPO? In other words, in a case where the patentee cannot know the real identity of an opponent, whereas the opponent knows the identity of the patentee, which is public information, is the right to a fair hearing given to the patentee? [III] […] Since the admissibility of the opposition has been decided with res judicata effect in decision T 1284/01, the first of the proposed questions is no longer relevant to the present case. [6.3] With regard to the second question, whether or not the appellant (proprietor) is aware of the true identity of the opponent (i.e. the person behind the straw man), the appellant (proprietor) is guaranteed a fair and public hearing by an independent and impartial tribunal in the form of the Board of Appeal: the true identity of the opponent does not influence this fundamental principle. Equally fair treatment is guaranteed to both parties to the proceedings. [6.4] The Board therefore does not consider that in the present circumstances the above questions need to be referred to the Enlarged Board of Appeal. [6.5] To read the whole decision, click here.
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T 1895/06 – It Ain’t Over ’Til It’s Over
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T 1895/06 – It Ain’t Over ’Til It’s Over 2 Mrz 2010
In this case the patent was revoked by the Opposition Division (OD); the claims as granted were said to lack inventive step. There was a first appeal (T 1284/01); the Board decided that the opposition was admissible and remitted the case to the OD without dealing with the substantive issues, because it came to the conclusion that the patentee’s right to be heard had been violated. The patentee did not maintain the request to maintain the patent as granted. The OD revoked the patent again. In its second appeal, the patentee reverted to the claims as granted. The opponent questioned its right to do so. […] The [opponent] questioned the admissibility of reverting to the claims of the patent as granted since during the second round of opposition proceedings, maintenance of the patent was no longer requested on this basis. The [opponent] was of the view that since the contested decision did not address claim 1 as granted, it was not permitted to return to this version. Decision T 528/93 was cited to support this view. [3.1] As pointed out by the [proprietor], claim 1 as granted was already the subject matter of the first decision of the OD, dated 19 October 2001, where the subject matter of claim 1 as granted was found to lack an inventive step. It was therefore clear to the [proprietor] during the second round of opposition proceedings that to revert to the version of claim 1 as granted would only have led to the same result as the first decision. This assumption was confirmed by the fact that, in the second decision of the OD, dated 17 November 2006, claim 1 of the main request had been restricted with respect to the version as granted, but was nevertheless found to lack novelty. [3.2] The proprietor now wishes to have the negative findings on novelty and inventive step of both decisions of the OD reviewed in this current second round of appeal proceedings. For this reason, the proprietor has reverted to the claims as granted as a main request. [3.3] The decision T 1284/01 resulting from the appeal proceedings following the first round of opposition proceedings did not deal with the contested decision of the opposition OD in substance. Since the Board of Appeal has not yet issued a decision on the substantive issues leading to the revocation of the patent as granted, the proprietor is entitled to a review of this - his currently main - request. For this reason the [proprietor’s] main request, i.e. maintenance of the patent on the basis of the set of claims as granted, is admitted into the proceedings. [3.4] In case T 528/93, which the respondent (opponent) cited to support his argument, the proprietor had attempted, during appeal proceedings, to introduce a set of claims which had never been decided upon by the OD. The Board in that case decided that a request based on such claims was inadmissible since no decision had been issued on such claims and the appellant could consequently not be considered to be adversely affected by the decision in respect of such claims. The situation in the present case is distinguished from the situation of T 528/93 in that the OD has issued a decision upon the subject-matter of the claims of the granted patent, the substance of this decision having not yet been decided upon by the Board of Appeal. Thus, the line taken in T 528/93 cannot be applied to the present case. [3.5] Finally, the patent was maintained as granted after having been revoked twice! To read the whole decision, click here.
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T 1895/06 – New Facts Cannot Overturn Res Judicata
K’s Law – The ebook
T 1895/06 – New Facts Cannot Overturn Res Judicata 1 Mrz 2010
In a recent post, I have commented a decision where a Board appeared to suggest that new facts and arguments could overturn res judicata concerning inventive step. The present decision rejects this approach in the case of a final decision concerning the admissibility of an opposition. […] The Board of Appeal, in decision T 1284/01, decided that the opposition in the present case is admissible. This final judgement is res judicata and, from the issuance of the decision, can no longer be challenged. [2.1] The term “res judicata” defines “... a matter finally settled by a Court of competent jurisdiction, rendering that matter conclusive as to the rights of the parties...” Such a final judgment by a court of competent jurisdiction therefore constitutes an absolute bar to a subsequent legal action involving the same claim, demand or cause of action, and the same parties (T 934/91 [3]). [2.2] Despite the conclusion in decision T 1284/01 that the opposition is admissible, the second decision of the Opposition Division (OD), dated 17 November 2006, addressed the “new facts” that the appellant (proprietor) had presented after the issuance of decision T 1284/01 and included a statement to indicate that the opposition is admissible. [2.3] The [proprietor] submitted that new facts had been subsequently presented and that the finality of the previous decision only applied insofar are the facts are the same. Following T 843/91, the current Board is of the opinion that the remittal proceedings should not afford the parties a further opportunity to attack the finally decided and therefore binding parts of the remitting decision by introducing new facts, since this would offend the general principle of legal certainty, i.e. the general interest of the public in the termination of legal disputes. Were it open to the parties to challenge these findings and for the OD to overturn them during subsequent proceedings on remittal, this would destroy the binding nature of the decision insofar as finally decided issues are concerned. [2.4] The [proprietor] furthermore submitted that the OD had, in its decision of 17 November 2006, decided this issue anew, and the appellant (proprietor) had a right to appeal all findings of this latest decision, including the question of admissibility of the opposition. In the present Board’s judgement, the res judicata effect of the previous decision T 1284/01 constituted an absolute bar to any reconsideration of the question of admissibility of the opposition. The conduct of the OD in this respect was erroneous: the admissibility of the opposition should not have been reconsidered, and, in view of the res judicata effect of the decision, could not have been re-decided. In section 1. of the Reasons for the Decision, the OD concluded that “... the opposition is admissible.” In view of the above, this statement can only be seen as a mere communication of the clear and immutable legal position brought about by the earlier decision T 1284/01 of the Board of Appeal and cannot constitute an appealable decision. [2.5] I think this approach is to be approved. There is no legal certainty if issues that have been decided in a decision that has become definitive may be questioned again as soon as new facts appear. There has to be an end to litigation. To read the whole decision, click here.
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T 207/07 – No Opposition Against Overweight Patents
K’s Law – The ebook
T 207/07 – No Opposition Against Overweight Patents 27 Feb 2010
[...] Two of the amendments introduced in the independent claim 1 as granted result in the subject-matter of the claim extending beyond the content of the application as originally filed. [2] […] The board does not agree with the [patent proprietor’s] argument that these two amendments were allowable because they result in a restriction of the scope of the claims so that third parties would not be disadvantaged, for two reasons. Firstly, A 100(c) is not concerned with a possible extension of the scope of protection of the claims, this being addressed only in A 123(3). Secondly, a restriction to an undisclosed intermediate generalisation can affect third parties, since, as was argued by the [opponent], they might then not be able to derive from the application as originally filed which options are open to the applicant or proprietor for subsequent amendment of the claims. [2.3.3] Therefore, in respect of each of the amendments […], the subject-matter of the patent as granted extends beyond the content of the application as originally filed, so that the ground for opposition under A 100(c) prejudices the maintenance of the patent. [2.4] This decision made me realize something I should have known but which I had never really seen (shame on me!) - that A 100(c) corresponds to A 123(2) only and does not cover A 123(3). Now it is true that until recent times, there would not have been any possible reason to oppose a patent on the ground of A 123(3) because there was no way of extending the protection conferred during the opposition period. This has changed when limitation proceedings were introduced into the EPC. If the Examining Division does not do its job correctly, the protection conferred by a patent could be extended by a ‘limitation’. If this happens during the opposition period, it will not be possible to oppose the patent on this ground. The only way to have the patent revoked is to launch national revocation proceedings on the ground of A 138(d). Having said this, if the limited/extended patent is opposed on other grounds and cannot be maintained unamended, and if the patentee does not get rid of the ‘limiting’ features, would the claims as amended be considered as infringing A 123(3)? I guess the same reasoning as for A 84 would be applied: the claims as amended would be considered as infringing A 123(3) only if the extension was caused by the amendment. But I may be wrong. It will be interesting to see decisions dealing with that situation. To read the whole decision, click here.
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T 244/07 – What May Be Taken From Schematic Drawings
K’s Law – The e
T 244/07 – What May Be Taken From Schematic Drawings 26 Feb 2010
It is well known that one cannot extract dimensional parameters from schematic drawings. The present decision adds an interesting consideration.
Claim 1 of the main request read: Stent (1) having an extensible stent body (2) wherein the stent body (2) has at least two different wall thicknesses (4,5) and wherein the stent body (2) has at least one end region (3,4) the wall thickness (W E) of which is smaller than a wall thickness (WH) of a main region (5), characterised in that the main region (5) has a constant wall thickness (WH) and in that the end region (3,4) has a constant wall thickness (WE). [...] The preamble of claim 1 results from claims 1 to 3 as filed ; the additional feature of extensibility, which is known as such, has its origin in paragraphs [0001] and [0002] of the original description as published. The feature of constant wall thickness of the main region and the end region in the characterising part is implicitly disclosed, as the expression “wall thickness” in the description is always used with the definite article in the description. That the wall thicknesses are constant also follows from paragraph [0013] of the original description, and in particular from the ratio of wall thicknesses W E/WH cited in line 47. Such an indication is only meaningful if the wall thicknesses of the respective domains are constant. Moreover the symbols WH and WE, which are provided with arrows in Figures 1 to 3, tell the skilled person unambiguously and without any doubt that each of the wall thicknesses represented in the drawings corresponds to one single and therefore constant wall thickness of the marked regions. The fact that figures are as a rule only schematic and are explicitly identified as such in the description does not alter this fact because what is taken from the figures is not a concrete dimension (such as in the cases underlying decisions T 857/91 and T 272/92) but only a property (Eigenschaft), i.e. the fact that the respective wall thicknesses are constant. The required
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T 244/07 – What May Be Taken From Schematic Drawings
manufacturing steps for obtaining constant wall thicknesses, which may be in the micrometer domain in the case of stents, are known to the person skilled in this field and do not have to be mentioned. Therefore, the requirements of A 123(2) are satisfied. [2] To read the whole decision (in German), click here.
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K’s Law – The e
K’s Law – The ebook
To All The EQE Candidates ...
To All The EQE Candidates ... 26 Feb 2010 ... the best of luck!
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T 1182/05 – ‘On The State of the File’ Does Not Mean ‘Unreasoned’
K’s Law – The e
T 1182/05 – ‘On The State of the File’ Does Not Mean ‘Unreasoned’ 25 Feb 2010
[…] In the present case the Examining Division (ED), in response to the appellant’s request “to render a decision on the record”, refused the application using EPO form 2061 for a so-called “decision on the state of the file”. The Guidelines for Examination in the EPO E-X 4.4, state: “Applicants may request a decision ‘on the file as it stands’ or ‘according to the state of the file’, e.g. when all arguments have been sufficiently put forward in the proceedings and the applicant is interested in a speedy appealable decision. In such a case, the decision will be of a standard form, simply referring to the previous communication(s) for its grounds and to the request of the applicant for such a decision.” This standard form is entirely appropriate in the special case where the ED fully expressed and reasoned its objections to the current application text in the preceding communication(s) taking into account the applicant’s submissions, and the applicant has not presented further counter-arguments in the reply in which it requests a decision according to the state of the file. A number of decisions of the EPO Boards of Appeal have pointed out however that a decision form which refers to several communications, leaving it to the board of appeal and the appellant to speculate as to which of the reasons given by the ED in its communications might be essential to the decision to refuse the application does not meet the ‘reasoned’ requirement of R 68(2) EPC 1973 (see T 861/02, T 897/03, T 276/04 and T 1309/05). [4] In its letter of 14 October 2004, the appellant limited the claimed subject-matter by further adding the feature of the “capacity of the upper bag segment being 20 to 40 liters” and explained why the subject-matter was inventive. [5] In the annex to the summons [to oral proceedings (OPs)] the ED raised for the first time an objection of lack of clarity in respect of the terms “capacity of lower bag segment” and “capacity of upper bag segment”. These terms were considered to be unusual parameters in the sense of Guidelines C-III, [4.11] since no comparison with the prior art could be made. These parameters thus would disguise a lack of novelty as per Guidelines C-IV [9.6]. However no further explanation was given as to why these specific terms would fall under the concept mentioned in the Guidelines. This was probably meant to be discussed at the OPs. [6] With its reply of 31 January 2005 the appellant filed amended pages of the description [and] explained why in its opinion the subject-matter of claim 1 on file was novel and inventive and why the clarity objection raised in the annex to the summons was not justified. In particular the appellant explained that the capacities could be clearly and reliably determined by objective procedures which are usual in the art and that the skilled man would not unavoidably arrive at these values when carrying out the invention of D1. [7] The decision of the ED however does not contain any specific reasons, but merely refers to the communications (including the annex to the summons) which had been issued before the appellant’s reply of 31 January 2005. By not commenting on the amended pages of the description and/or on any of the counterarguments brought forward by the appellant in its last reply it is left to the board and to the appellant to speculate as to which were the decisive reasons for the refusal. As a matter of fact several options could be possible: it could well be that the ED no longer upheld the lack of clarity objection but considered the lack of inventive step detrimental or that clarity and novelty of the subjectmatter of claim 1 was at stake, or even that only the amended description was not considered allowable. [8] This is at odds with the established jurisprudence that for the requirements of R 68(2) EPC 1973 to be fulfilled the decision must include, in logical sequence, the arguments justifying the order. The grounds upon which the decision is based and all decisive considerations in respect of the factual and legal aspects of the case must be discussed in detail in the decision (see T 278/00). The applicant’s request “to render a decision on the record” is not to be construed as a waiver of the right to a fully reasoned first instance decision, even in the light of the 3135 | 3398
T 1182/05 – ‘On The State of the File’ Does Not Mean ‘Unreasoned’
suggested procedure in the Guidelines (see T 1309/05, T 583/04). The applicant even expressly requested that “the subject-matter of the present claims be re-examined taking into account the following explanations”. In view of this and of the fact that amended pages of the description were filed the board is of the opinion that a decision of a standard form, simply referring to the previous communications for its grounds and to the request of the applicant for such a decision was not appropriate in the present case. Instead, in its decision, the ED should have explained the very reason or reasons for its decision and why the counterarguments of the applicant were not considered convincing. By failing to do so the ED did not issue a reasoned decision within the meaning of R 68(2) EPC 1973 and committed, therefore, a substantial procedural violation. [9] To read the whole decision, click here.
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K’s Law – The e
T 426/06 – Insufficient Proof For Opponent Status Transfer
K’s Law – The e
T 426/06 – Insufficient Proof For Opponent Status Transfer 24 Feb 2010
The opposition against the contested patent had been filed by « BP Chemicals Ltd ». On March 2, 2006, a transfer of the opposition to the company named “Innovene Europe Ltd” was requested. The appeal was filed on March 10, 2006 in the name of Innovene Europe Ltd. The question arises as to whether this company was a party to the proceedings when it filed the appeal and was, therefore, entitled to file the appeal. [1] The status as an opponent cannot be freely transferred (G 2/04). It is, however, transferred in case of a complete legal succession (universal succession) to the legal successor, e.g. in the case of an incorporation (Eingliederung) or a merger of legal persons (T 475/88 [1]). It can also be transferred together with the domain of the business or the part of a company to which the opposition belongs (G 4/88, T 659/92, T 563/89 [1.1], T 870/02 [2 and 3.1]). [2] A new appellant can only obtain the status of an opponent and a party to the proceedings if it provides proof for a legal transfer justifying the transfer of the opponent status. The mere filing of an agreement between the company that is presented as legal successor and the original opponent is not sufficient for justifying the transfer of the opponent status and the status as party in the appeal proceedings without a substantiated presentation and proof of facts that could justify a legal succession in the above mentioned sense. [3] In its written submission dated March 2, 2006, Innovene Europe Ltd has filed a general agreement between the opponent “BP Chemicals Ltd” and the appellant “Innovene Europe Ltd” as evidence for the transmission of the opposition.
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T 426/06 – Insufficient Proof For Opponent Status Transfer
According to the information submitted, the filed agreement states that “BP Chemicals Ltd” has transferred the Olefines and Derivatives operation of its petrochemical business and the associated business assets into a new group of companies referred to as Innovene Europe Ltd […] is a member. However, it does not follow clearly and unambiguously from this agreement which domain of the business is encompassed by the term “Olefins and Derivatives operation”. Therefore, it cannot be determined to which extent the process for the preparation of alkanolamines with improved colour quality, which is claimed in the contested patent and which does not a priori concern olefins or their derivatives, is connected with the business domain “Olefins and Derivatives operation” cited in the agreement. As a consequence, there is no proof that the opposition concerns a domain of the business of the opponent “BP Chemicals Ltd” which was transferred to “Innovene Europe Ltd”. [4] For the reasons referred to above, the filed agreement does not satisfy the requirements for a legally effective transfer of the opponent status, which means that the requested transfer of the opponent status cannot be allowed. Under these circumstances it is not necessary to decide the question at issue whether the filed agreement as such, without the submission of other documents, such as a contract of sale, is appropriate proof for the transfer of a domain of the business. [5] Hence “Innovene Europe Ltd” did not have party status when it filed the appeal. However the appeal against the decision to maintain the patent in amended form was filed in the name of “Innovene Europe Ltd”. Pursuant to A 107, first sentence, only parties to the first instance proceedings adversely affected by the decision may appeal. As “Innovene Europe Ltd”, in the absence of sufficient evidence, did not have party status when it filed the appeal it was not entitled to appeal. The appeal is inadmissible under R 101(1) (see also T 229/03 [4]). [6] I find the EPO’s decision tough on the appellant because the agreement also contained the following provisions: “The oppositions filed by BP at the EPO and listed in the attached schedule all relate directly to the business assets that were transferred. […] BP and Innoven warrant that the oppositions constitute an inseparable part of 3138 | 3398
K’s Law – The e
T 426/06 – Insufficient Proof For Opponent Status Transfer the assets. The oppositions are assigned from BP to Innoven.” Unfortunately, the decision remains completely silent on that fact. In such situations, one should definitely follow the advice given in G 2/04: “If, when filing an appeal, there is a justifiable legal uncertainty as to how the law is to be interpreted in respect of the question of who the correct party to the proceedings is, it is legitimate that the appeal is filed in the name of the person whom the person acting considers, according to his interpretation, to be the correct party, and at the same time, as an auxiliary request, in the name of a different person who might, according to another possible interpretation, also be considered the correct party to the proceedings.” To read the whole decision (in German), click here.
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K’s Law – The e
T 550/04 – Recording Refused
K’s Law – The ebook
T 550/04 – Recording Refused 23 Feb 2010
I have to admit that the illustration I have chosen is somewhat misleading. It is true that the EPO does not allow parties to make audio recordings during oral proceedings, but this is not what the present decision is about. It rather deals with recording of statements of a party in the minutes of oral proceedings. During the oral proceedings (OPs) before the Board the [opponent] requested to record in the minutes of the proceedings that the expression “oxygen-free atmosphere” in present claim 1 had the meaning of “completely oxygen-free atmosphere”. [5.1] However, according to the jurisprudence of the Boards of Appeal (see T 928/98 and T 263/05 [8 to 8.11]) it is not the function of the minutes to record statements which a party considers will be of use to it in any subsequent proceedings in national courts, for example in infringement proceedings as to the extent of protection conferred by the patent in suit. This is because such statements are not “relevant” to the decision which the Board has to take, within the meaning of R 124(1). Such matters are within the exclusive jurisdiction of the national courts. [5.2] In the present case, the reasons for applying an oxygen-free atmosphere and a method to achieve it are indicated in the patent in suit. Moreover, the statement in question would not have an impact on the definition of the subject-matter of the patent for the questions the Board had to decide in these proceedings. [5.3] It follows that the desired statement is not a proper subject-matter of the minutes. Consequently, the request is refused. [5.4] As far as I can see, the Boards almost systematically refuse to record such statements in the minutes. This is a nuisance for opponents, because statements of this kind may become crucial in national infringement proceedings. At least in France there is a clear tendency of the Courts to take into account statements made by the patentee during the grant and opposition proceedings. Therefore, I would say that opponents should continue to request recording of such statements as the Board will discuss the question, which means that the statement is at least recorded in the appeal decision, which might be better than nothing. To read the whole decision, click here.
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T 360/08 – Out Of The Frying Pan Into The Fire
K’s Law – The ebook
T 360/08 – Out Of The Frying Pan Into The Fire 22 Feb 2010
Claim 1 of the main request read: A biaxially oriented polyester film characterized in that a ratio R(=IMD/IND) of a peak intensity (IMD) in the longitudinal direction of the film to a peak intensity (IND) in the thickness direction of the film determined at 1615 cm-1 by laser Raman scattering method is not less than 7. Main request and first to third auxiliary requests The polyester film as defined in claim 1 of each of these requests is characterised by the value of a ratio R(=IMD/IND) of a peak intensity (IMD) in the longitudinal direction of the film to a peak intensity (IND) in the thickness direction of the film determined at 1615 cm-1 by laser Raman scattering method being [sic] less than 7. Claim 1 does not, however, specify which polyester is used to form the film. Claim 4 specifies that the polyester is “at least one selected from the group consisting of polyethylene terephthalate [PET], polypropylene terephthalate, polyethylene isophthalate, polyethylene naphthalate [PEN] and a copolymer thereof.” The polyester of claim 1 may thus be polyethylene naphthalate. Whilst polyethylene terephthalate has a peak intensity at 1615 cm-1, attributable to the presence of a benzene ring, polyethylene naphthalate does not produce a peak at this wavelength (see document E30). In the absence of such a peak, it is not possible to obtain a significant value of the ratio R at 1615 cm-1. It was suggested on behalf of the [patent proprietor] that the skilled reader of the patent in suit would, in the case of polyethylene naphthalate, understand the reference in claim 1 to a peak intensity determined at 1615 cm-1 as referring to a corresponding peak at 1636 cm-1. It is not, however, accepted that there is a “corresponding peak” for polyethylene naphthalate, the presence of a naphthalene ring giving rise to more than one peak:
The person skilled in the art is thus not provided with sufficient information to enable a value of the ratio R to be calculated for a film of polyethylene naphthalate. [1] I am always surprised when a single non-working embodiment is said to deprive a claim of its sufficiency of disclosure. Having said this, it might well be that the unfortunate claim wording has caused this outcome: there simply is no ‘peak’ at 1615 cm-1 for the polyethylene naphthalate. Had the claim drafter omitted the word ‘peak’ 3141 | 3398
T 360/08 – Out Of The Frying Pan Into The Fire
K’s Law – The ebook
and defined the ratio R to be a ratio of intensities measured at 1615 cm-1, I think that the problem would have shifted towards inventive step. Be that as it may, the patent proprietor reformulated the claim by inserting the working embodiments only into claim 1: Claim 1 of the main request’ presented during the oral proceedings read: A biaxially oriented polyester film wherein a polyester of said film is at least one selected from the group consisting of polyethylene terephthalate, polypropylene terephthalate, polyethylene isophthalate, and a copolymer thereof, characterized in that a ratio R(=IMD/IND) of a peak intensity (IMD) in the longitudinal direction of the film to a peak intensity (IND) in the thickness direction of the film determined at 1615 cm-1 by laser Raman scattering method is not less than 7. However, the Board then found an even more general lack of sufficiency of disclosure. The decision contains an interesting statement on determining certain measurement parameters by reworking the examples. Main request’ and auxiliary requests 1’ to 3’ In order to determine the value of the ratio R as specified in claim 1 of each of these requests, it is necessary to subject a film to a Raman scattering method. However, the values obtained for this ratio are dependant on the measuring conditions. A number of the measuring conditions used by the patent proprietor are specified in paragraph [0079] of the patent in suit. In particular, it is specified that a Ramanor U-1000 apparatus was used. As indicated in document E33, a range of objectives of differing power are available to the user of the Ramanor U-1000 apparatus. It is not, however, specified in the patent in suit which objective should be used. Document E29 […] demonstrates that significantly different values of the ratio R are obtained according to whether a 100x or a 50x objective is used. The [patent proprietor] submits that a high power 100x objective would be used, document E33 suggesting that this would give better resolution. On the other hand, document E36 sets out four reasons to prefer a 50x objective, including a suggestion that the use of a high power objective has a depolarising effect and may not provide the best signal to noise ratio. The Board thus comes to the conclusion that the skilled person would not know which objective to select. The patent in suit contains 30 examples and 9 comparative examples, for each of which a value of the peak intensity ratio R is given. It is suggested that, by repetition of the examples, a film can be produced for which a value of the ratio R can be measured with different objectives. Only the choice of the correct objective will result in the value of R disclosed in the Tables of the patent in suit. This is not accepted. It would require more knowledge than is available from the patent in suit in combination with the general knowledge of the skilled person to prepare a film for which it can be assumed that the value of R is the same as that given in the patent in suit. Thus, whilst the examples give information as to the temperature and the stretching ratio to be used when preparing the film, the examples do not give any information as to the form of the cross-section of the cast film or the speed of stretching of the film. Variation in these parameters would influence the properties of the resulting film. It is thus not possible to deduce the power of the objective from a reworking of the examples. The present case is distinguished from that decided in T 143/02 firstly in that there is no most likely candidate as to the objective to be used. Secondly, the information given in the examples is not sufficient to enable a sufficiently predictable value of the ratio R to be achieved. [3] The patent in suit thus does not provide sufficient teaching to enable the person skilled in the art to produce a biaxially oriented polyester film which satisfies the criteria specified in claim 1. [3.1] The requirements of A 83 are not satisfied for each of the requests of the [patent proprietor]. [4] It cannot be stressed enough that if a claim involves results obtained with a measurement method that is not standard from A to Z, it is crucial that this method be described in all detail. Conversely, when you have to attack a patent, it is always a good idea to have a close look at the description of the measuring methods involved.
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T 360/08 – Out Of The Frying Pan Into The Fire
K’s Law – The ebook
To read the whole decision, click here.
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G 2/08 – The Way You Take It Matters
K’s Law – The ebook
G 2/08 – The Way You Take It Matters 20 Feb 2010
Good and bad things come in threes, and so do the most recent Enlarged Board decisions. Three questions had been referred to the Enlarged Board by interlocutory decision T 1319/04. The claim that triggered the question read as follows: 1. The use of nicotinic acid or a compound metabolized to nicotinic acid by the body selected from a group consisting of d-glucitol hexanicotinate, aluminium nicotinate, niceritrol, d,1-alpha-tocopheryl nicotinate and nicotinyl alcohol tartrate, for the manufacture of a sustained release medicament for use in the treatment by oral administration once per day prior to sleep, of hyperlipidaemia characterised in that the medicament does not comprise in admixture, 5-30% hydroxypropyl methylcellulose, 2-15% of a water soluble pharmaceutical binder, 2-20% of a hydrophobic component and 30-90% nicotinic acid. Question 1: Where it is already known to use a particular medicament to treat a particular illness, can this known medicament be patented under the provisions of A 53(c) and 54(5) EPC 2000 for use in a different, new and inventive treatment by therapy of the same illness? The EBA considers that the issues of importance are the construction of the provisions of A 53(c) together with those of A 54(4) and (5) and the answer to the question whether there is any need to reconcile them. As always, the Vienna Convention on the Law of Treaties is used to interpret the EPC provisions. As far as A 53(c) is concerned, the EBA considers that its provisions are clear and unambiguous and allow to draw a borderline between (unallowable) method claims directed to a therapeutic treatment and (allowable) claims to products for use in such methods. It refuses to interpret the second sentence of A 53(c) as a lex specialis that has to be interpreted narrowly. A 54(4) deals with the first medical application for which broad generic use-related product claims may be granted. A 54(5) now expressly allows protection of specific further medical applications. The EBA finds that this provision does not define the nature of the further therapeutic use of a substance already known as a medicine further than by saying that it must be specific. There are two ways of construing this requirement: (i) by contrast to the generic broad protection conferred by A 54(4) for the first therapeutic application – in this case the second or further use need not consist in the treatment of a different disease; (ii) understanding it as a lex specialis with respect to the general prohibition expressed in A 53(c), which implies a narrow interpretation – only a disease not yet treated by the known substance would constitute a specific use. The Board adopts the broad interpretation, in particular because the wording of the law does not make a distinction (following the principle of Roman law ubi lex non distinguit, nec nos distinguere debemus). The EBA comes to the conclusion that the respective provisions of A 53(c) in fine, A 54(4), and A 54(5) do not constitute exceptions to the absolute prohibition of patenting therapeutic methods but constitute provisions allowing patent protection for products for use in therapeutic methods and enjoy a ranking identical to that of the prohibition. This approach is also found to correspond to the will of the legislator as expressed in the preparatory documents. The EBA therefore comes to the following conclusion: Answer: Where it is already known to use a medicament to treat an illness, A 54(5) does not exclude that this medicament be patented for use in a different treatment by therapy of the same illness. Question 2: If the answer to question 1 is yes, is such patenting also possible where the only novel feature of the treatment is a new and inventive dosage regime?
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G 2/08 – The Way You Take It Matters
K’s Law – The ebook
In line with its response to the first question, the Board considers that as A 54(5) may be used in cases of the treatment of the same illness, the “specific use” in the sense of this provision may reside in something else than the treatment of a different illness and may cover a specific dosage regime. Therefore, the EBA answers the second question as follows: Answer: Such patenting is also not excluded where a dosage regime is the only feature claimed which is not comprised in the state of the art. The EBA insists on the fact that this approach should not be interpreted as a departure from the established principles for assessing novelty and inventive step. Beyond the legal fiction of A 54(5), for the assessment of novelty and inventive step of a claim in which the only novel feature would be the dosage regime, the whole body of jurisprudence relating to the assessment of novelty and inventive step is to be applied. In order to be patentable, the new dosage regime must provide a technical teaching. that is different from the teachings of the prior art. If the new regime corresponds to a selection within the teaching of the prior art, the criteria developed by the case law for selection inventions apply. Question 3: Are any special considerations applicable when interpreting and applying A 53(c) and 54(5) EPC 2000? The EBA concentrates on the question of whether Swiss-type claims are still allowable. It considers that the loophole existing in the provisions of the EPC 1973 was closed by new A 54(5). Following the principle of Roman law cessante ratione legis, cessat et ipsa lex, it comes to the conclusion that Swiss-type claims should no longer be used: Answer: Where the subject matter of a claim is rendered novel only by a new therapeutic use of a medicament, such claim may no longer have the format of a so called Swiss-type claim as instituted by decision G 5/83. This conclusion makes it necessary to introduce some transitional provisions: The EBA is aware of the fact that patents have been granted and many applications are still pending seeking patent protection for claims of this type. In order to ensure legal certainty and to protect legitimate interests of applicants, the abolition of this possibility by the interpretation of the new law given by the EBA in this decision shall therefore have no retroactive effect, and an appropriate time limit of three months after publication of the present decision in the Official Journal of the EPO is set in order for future applications to comply with this new situation. In this respect the relevant date for future applications is their date of filing or, if priority has been claimed, their priority date. [7.1.4]
The present decision is clear-cut and confirms the liberal tendencies observed so far in the handling of further medical use claims. I just wonder whether claims the novelty of which is based on a dosage regime have any practical use. Given that the dosage regime applied by a physician is covered by medical confidentiality, the only practical use of such a claim appears to consist in the possibility of hindering the competitors from mentioning the new dosage regime in their package inserts. Much ado about very little ? If any of my readers can shed light on this question, please do so. Added on 21/2 : As pointed out in one of the comments, my impression was wrong. The decision is very relevant with respect to generic drugs. Never trust a mechanic! To download this decision, click here. NB: As usual, I am far behind my fellow bloggers. As far as I can see, the race was won by Laurent Teyssèdre (here), followed by IPKat David Pearce (here). The blue riband is theirs. Those interested in the point of view of a French lawyer should have a look here.
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T 150/07 – Forget The Novelty Test
K’s Law – The ebook
T 150/07 – Forget The Novelty Test 19 Feb 2010
The present decision brings us back to the beginnings of European patent case law. Long ago, the EPO sometimes used the “novelty test” for assessing whether A 123(2) was infringed or not. […] The Board thus finds that the combination of features of claim 1 was directly and unambiguously derivable from the teaching of the description. Claim 1 thus complies with the requirements of A 123(2). [1.1.3] As regards the so-called “novelty test”, i.e. a test for establishing if the amendments generate “novel” subjectmatter, invoked by the Appellant, the Board finds that this test is not to be applied in a case like the present one wherein preferred embodiments of an invention are combined with the more general teaching thereof, since the amended subject-matter, though not being disclosed as such, can be a possible embodiment of the invention directly and unambiguously derivable by the skilled person from the explicit teaching of the original documents of the application. Therefore, in such a case, the patent (application) is not amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. In fact, the “novelty test” is fact no longer considered to be a reliable tool for evaluating the admissibility of amendments under A 123(2) (see Case Law of the Boards of Appeal of the EPO, 5th edition, 2006, III.A.2.3). [1.1.4] The “novelty test” could be expressed in the following terms: “Is the claim as amended novel over the disclosure of the application as filed ? If so, then the amendment violates A 123(2).” Now this statement is certainly correct. It also takes into account that the case law applies the same principle (“… directly and unambiguously …”) to both A 54 and A 123 (and we might add A 76 and A 87 to that list). Why then is the novelty test rejected ? I would say that passing the “novelty test” is a necessary but not sufficient criterion for compliance with A 123(2). In other words, if the amendment does not pass the “novelty test”, A 123(2) is infringed, but the contrary does not hold true. An example might help. Suppose that you have described and claimed a device comprising an active substance, wherein the active substance is taken from class {A} = {A1, A2, … An}. Only class members A1 to A5 are explicitly disclosed. You then amend the claim to cover a device wherein the active substance is A27. The amendment does not pass the novelty test, because the disclosure of the device having an active substance taken from class {A} does not anticipate the device having A27 as active substance; therefore, new subject-matter is created. A 123(2) is violated as there is no disclosure of the device having A27 as active substance in the application as filed. The novelty test works well in this case. Suppose now that you have rather described and claimed a device comprising an active substance, wherein the active substance is A27. You then amend the claim to cover a more general device wherein the active substance is taken from class {A} to which A27 belongs. The amendment does pass the novelty test because the device having an active substance taken from class {A} is anticipated by the device having A27 as active substance; no novel subject-matter is generated. However, as the application as filed does not contain a disclosure of a device wherein the active substance is taken from class {A}, A 123(2) is violated. The novelty test does not detect this violation of A 123(2). To read the whole decision, click here.
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G 4/08 – Translation Not Welcome
K’s Law – The ebook
G 4/08 – Translation Not Welcome 18 Feb 2010
The show must go on. The day after publication of decision G 1/07, the Enlarged Board has issued another decision, which is perhaps a little bit closer to the everyday practice of many European patent attorneys. In its interlocutory decision J 8/07, the Legal Board of Appeal had referred some questions related to the possibility of switching from one official language of the EPO to another upon entry into the European phase of PCT applications. Here are the questions and the answers of the Enlarged Board: Question 1: If an international patent application has been filed and published under the Patent Cooperation Treaty (PCT) in an official language of the EPO, can the applicant, on entry into the regional phase before the EPO, file a translation of the application into one of the other EPO official languages with the effect that the language of this translation must then be considered as language of the proceedings to be used in all proceedings before the EPO? The Enlarged Board appears not to have hesitated for a long time. It considers that the reading of A 158(2) EPC 1973 by the requester is distorting because it isolates this provision from its context (A 158) and its interaction with other provisions (in particular R 107(1)(a)) and is not compatible with the principle of equivalence between the international application and the European application in the case where the EPO is a Designated or Elected Office. According to the Enlarged Board, there is no conflict between the EPC and the PCT provisions; in particular, the possibility of choice provided in Rule 49.2 PCT is linked to the requirement of a translation. Legal Advice 10/92 is considered irrelevant. The Enlarged Board then discusses the situation under the revised EPC and comes to the conclusion that no major change has taken place with respect to the question under consideration. There is no reason to apply A 125. The argument of discrimination between applicants put forward by the epi amicus curiae brief is not considered relevant: if the existing provisions were discriminatory, it is the legislator (and not the instances entrusted with the application of the provisions) who would have to deal with this problem. Therefore, the Enlarged Board comes to the following conclusion: Answer: When an international application has been filed and published in an official language of the EPO by virtue of the PCT, it is not possible to file a translation of the application into one of the two other official languages when entering into the European phase. Question 2: If the answer to that question is no, can EPO departments use, in written proceedings on a European patent application (or an international application in the regional phase), an EPO official language other than the language of proceedings used for the application? The Enlarged Board considers that the question only arises because some decisions of the Boards have accepted to use another official language. The only reasoned decision, J 18/90, to which most of these decisions (such as T 1125/00 or T 1443/04) refer, has been issued before the entry into force of the abrogation of former R 3 EPC 1973. For the Enlarged Board, the abrogation of this rule is decisive; it deprives the former practice of its legal basis and hinders the EPO from re-introducing this practice via its case law. Therefore, the Enlarged Board comes to the following conclusion: Answer: In written proceedings concerning a European patent application or an international application having entered the regional phase the departments of the EPO cannot use any of the official languages of the EPO other than the official language used pursuant to A 14(3). Question 3: If the answer to question 2 is yes, what are the criteria to be applied in determining the official language to be used? In particular, must EPO departments accede to such a request from a party or parties? Answer: This question is irrelevant (sans objet). This outcome was to be expected. It is regrettable from the point of view of French- or German-speaking applicants who could have filed PCT applications in English (which allows them to become prior art in the U.S.A. as from their date of filing - or even as from the date of filing of a U.S. provisional application the priority of which is claimed) without losing the advantage of having written proceedings in their native language before the EPO. Now the only way to have all these advantages is to file a PCT application in French or 3147 | 3398
G 4/08 – Translation Not Welcome
K’s Law – The ebook
German and a parallel U.S. application claiming the priority of the U.S. provisional application, if there is one. Needless to say, such parallel filing is expensive and ruins some of the advantages of PCT filing. You can download this decision (in French) here. A translation will be published in the Official Journal of the EPO. NB: Once again my fellow bloggers Laurent Teyssèdre and Mark Schweizer have been faster than lightning in reporting this decision. Their posts are found here and here.
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K’s Law – The e
G 1/07 - Dangerous Invasive Imaging Methods Are Excluded
G 1/07 - Dangerous Invasive Imaging Methods Are Excluded 17 Feb 2010
Enlarged Board decisions are usually reported and commented on IP blogs even before the ink is dry on the signatures. The present decision is no exception; although brand new, it has already been reported here and here. I for one have not yet found the time to delve into this 80-pages decision, but here are the questions referred to the Board in interlocutory decision T 992/03 and the corresponding answers of the Enlarged Board: Question 1: Is a claimed imaging method for a diagnostic purpose (examination phase within the meaning given in G 1/04), which comprises or encompasses a step consisting in a physical intervention practised on the human or animal body (in the present case, an injection of a contrast agent into the heart), to be excluded from patent protection as a “method for treatment of the human or animal body by surgery pursuant to A 52(4) if such step does not per se aim at maintaining life and health? Answer : A claimed imaging method, in which, when carried out, maintaining the life and health of the subject is important and which comprises or encompasses an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise, is excluded from patentability as a method for treatment of the human or animal body by surgery pursuant to A 53 (c). Question 2: If the answer to question 1 is in the affirmative, could the exclusion from patent protection be avoided by amending the wording of the claim so as to omit the step at issue, or disclaim it, or let the claim encompass it without being limited to it? Answer: 2a. A claim which comprises a step encompassing an embodiment which is a “method for treatment of the human or animal body by surgery” within the meaning of A 53(c) cannot be left to encompass that embodiment. 2b. The exclusion from patentability under A 53(c) can be avoided by disclaiming the embodiment, it being understood that in order to be patentable the claim including the disclaimer must fulfil al1 the requirements of the EPC and, where applicable, the requirements for a disclaimer to be allowable as defined in decisions G 1/03 and G 2/03 of the Enlarged Board of Appeal. 2c. Whether or not the wording of the claim can be amended so as to omit the surgical step without offending against the EPC must be assessed on the basis of the overall circumstances of the individual case under consideration. Question 3: Is a claimed imaging method for a diagnostic purpose (examination phase within the meaning given in G 1/04) to be considered as being a constitutive step of a “treatment of the human or animal body by surgery” pursuant to A 52(4) if the data obtained by the method immediately allow a surgeon to decide on the course of action to be taken during a surgical intervention? Answer: A claimed imaging method is not to be considered as being a “treatment of the human or animal body by surgery” within the meaning of A 53(c) merely because during a surgical intervention the data obtained by the use of the method immediately allow a surgeon to decide on the course of action to be taken during a surgical intervention. Should I find something of particular interest in the decision, I will report on it later. NB: To download the decision, click here.
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T 843/06 – A 69 Cannot Repair an A 123(2) Deficiency
K’s Law – The ebook
T 843/06 – A 69 Cannot Repair an A 123(2) Deficiency 16 Feb 2010
The invention concerns electronic modules such as the circuits found on smart cards. […] Claim 1 of the main request defines in its preamble that the electronic module comprises a lead frame consisting in a metallic layer, wherein the contact layout of the metallic layer is divided into two areas: a central area and an outer area. The central area contains an integrated circuit and conducting connections to the contact surfaces of the lead frame, surrounded by a casting compound. The outer area is largely free from casting compound. The first characterising feature now requires that the metallic layer has relieving areas “in the transition between the central area and the outer area.” [4.1] This feature is not comprised in the claims as initially filed. Such an indication is not found expressis verbis in the description as initially filed either. As far as the description as initially filed, according to the published A-document, refers to the location of the relieving areas, it indicates that relieving areas having the shape of punched holes (Stanzungen), perforations or windows in the outer area of the module, preferentially “as close as possible to the central area” or “in the immediate vicinity of the central area”. As regards the division of the contact layout into a central area and an outer area, the description as initially filed contains the indications that the central area comprises the sensitive parts of the electronic module, which are cast within a casting compound, and that the central area is relatively rigid thanks to the casting compound, whereas the outer area consists in the contact layout and the thin metal layer only and has the function of connecting the module with the data carrier. [4.2] According to the [patentee] the indications of the present claim have to be interpreted in the light of the whole disclosure provided by the description and the drawing. Such an interpretation using A 69 is necessary if only because of the ambiguity of the relative term “transition”. This term might indeed refer to a border (Grenze), but it could also be a reference to an area of transition on both sides of the border. [The patentee] pointed out that neither the claim nor the description as initially filed contained a precise definition of the extent of the central area and the outer area. Therefore it would be inadmissible to consider that the outer border (Rand) of the casting compound forms a sharp limitation of the central area. The central area was primarily the area in which the integrated circuit and its conducting connections to the contact surfaces of the lead frame are found. Where the border of the casting compound was located precisely did not matter, as could be seen from the indications of the published application. […] Therefore, it would be clear for the skilled person from the description as initially filed that there was a transition area between the central area and the outer area, which transition area extended in principle to both sides of the border of the casting compound. This being said, according to the invention, the relieving areas were only provided in the portion that was located outside the casting compound. [4.3] The Board cannot endorse this opinion. First, the argument according to which technical information that was incorporated into a claim by an amendment of the application documents could be interpreted onto the initial content of the disclosure of the application so as to avoid a conflict with the requirements of A 123(2), has to fail (cf. also T 1018/02 and T 277/01). A 69(1), which was adduced by the [patentee] in order to justify its opinion, concerns the extent of protection conferred by a patent. When the Boards of appeal refer to this article in their decisions, as a rule they deal with problems related to a modification of the extent of the protection, or, from time to time, with problems related to the clarity of a claim, in cases where the description provides a “lexicon” for the terminology of a claim feature that is to be assessed. This is not the case here, because the expression “transition between the central area and the outer area” is not found in the description and, therefore, is not explained at all. 3150 | 3398
T 843/06 – A 69 Cannot Repair an A 123(2) Deficiency
K’s Law – The ebook
Moreover, the present claim 1 and, in particular, the criticized feature, have a clear technical meaning and do not have to be interpreted via the description (cf. T 1018/02 [3.8]). Present claim 1 unambiguously defines a metal layer that is divided into two areas by the layout. No further area is mentioned. Therefore, the location “in the transition between” these areas can only mean that the relieving areas are disposed on their common border. That this border is identical with the border of the casting compound can be derived from the indication of claim 1 according to which the outer area is “largely free from casting compound”. Incidentally, this fact is the basis and justification for replacing the term “central area” by “casting compound” in the auxiliary requests filed by the [patentee]. However, a structure wherein the relieving areas are provided on the border between the central area and the outer area are not disclosed in the application documents as initially filed. Rather, as mentioned [above], the relieving areas of the description as initially filed, are provided in the outer area of the metallic layer, “as close as possible to the central area” or “in the immediate vicinity” of the central area. Finally, the application documents as originally filed do not disclose any “transition area” whatsoever. The indications relied on by the [patentee] are not clear and unambiguous. [4.4] It follows that the feature of claim 1 of the main request according to which the relieving areas are provided “in the transition” between the central area and the outer area of the metal layer is not disclosed in the initially filed application documents. Therefore, A 123(2) is opposed to the request to maintain the patent on the basis of the main request. [4.5] Besides the useful reminder on the role of A 69, this decision illustrates the imperative need to provide clear and delimiting definitions for features (here: “central area” and “outer area” of the metallic layer) that might become crucial for establishing novelty and inventive step. To read the whole decision (in German), click here.
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T 509/07 – No Partial Admissibility, But …
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T 509/07 – No Partial Admissibility, But … 15 Feb 2010
The present decision shows that despite the fact that there is no “partial admissibility” of appeals under the EPC, this does not rule out the possibility that one or more (but not all) of the requests of the appeal be inadmissible. […] Under established case law, the grounds for appeal should specify the legal or factual reasons on which the case for setting aside the decision is based. If the appellant submits that the decision under appeal is incorrect, the statement setting out the grounds of appeal must enable the board to understand immediately why the decision is alleged to be incorrect and on what facts the appellant bases its arguments, without first having to make investigations of their own (cf. T 220/83 [4], affirmed by numerous decisions and more recently by T 809/06 [2]). In principle, a statement of grounds which merely refers generally to previous submissions is not considered sufficient. An exception to this principle has been acknowledged where the arguments presented at first instance already adequately addressed the grounds underlying the contested decision. Similarly, a brief statement may be considered sufficient where a substantial violation of the first-instance proceedings occurred, or where a reading of the impugned decision itself reveals that it cannot be upheld (see T 809/06 [4], and the cases cited there). [1.3] The board considers that the requirements of established case law set out above are clearly complied with in relation to the first auxiliary request submitted with the statement of grounds. Whether or not sufficient grounds relating to the main request have been submitted is immaterial for the purposes of admissibility of the appeal because an appeal can only be assessed as a whole; see T 382/96 [1]. There is no support in the EPC for a notion of “partial admissibility” of an appeal (see T 774/97 [1.1]). In other words: if the admissibility requirements, in particular those of A 108, third sentence, are fulfilled at least in respect of one request, the appeal as a whole will be admissible. As a consequence, the present appeal is admissible. [1.4] However it is a different question whether a request in relation to which the admissibility requirements are not met, in particular where sufficient grounds within the meaning of A 108, third sentence, have not been furnished in relation to that request, is admitted into appeal proceedings. In decision T 382/96 [5.5] it was held that several requests could not be admitted into the appeal proceedings because no grounds of appeal within the meaning of A 108 had been filed in relation to those requests. In the board’s view this conclusion can be arrived at by assuming that such requests cannot be considered in appeal proceedings. In this context the Rules of Procedure of the Boards of Appeal are also of interest. Pursuant to Article 12(1)(a) RPBA, appeal proceedings shall be based on the notice of appeal and statement of grounds of appeal filed pursuant to A 108. Under Article 12(2) RPBA the statement of grounds of appeal shall contain a party’s complete case, setting out clearly the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on. Article 12(4), in pertinent part, provides that everything presented under Article 12(1) shall be taken into account by the board if and to the extent it meets the requirements of Article 12(2). It could be concluded, a contrario, that one need not take into account matter which does not meet the requirements of Article 12(2) if the appellant has not specified the facts, arguments and evidence on which the appeal proceedings shall be based, but which might be supplemented later on. For, under Article 13(1) RPBA, any amendment to a party’s case after it has filed its grounds of appeal may be admitted and considered at the board’s discretion. [2.1] In the present case the board stated in an annex to the summons to oral proceedings (OPs) that the statement of grounds of appeal comprised only one sentence concerning the claims according to the main request, namely “However, the applicant believes that the current application satisfies A 84, A 54 and A 56 and maintains his respective arguments presented up to now in the examination procedure.” The board added that this sentence appeared to neither set out clearly the reasons why it was requested that the decision under appeal be reversed, nor to specify which of the facts, arguments and evidence presented in the examination proceedings were relied on in appeal proceedings. In the OPs the chairman reiterated that the statement of grounds did not contain sufficient information for the board to discern why the appellant believed the decision under appeal to be wrong, in particular in regard of the assessment of the feature “imperceptibly different”. The appellant’s submissions in reply, for instance that the invention was a cutting edge technology and thus the claims should not be unduly limited, did not address the relevant reasons in the decision under appeal and thus were not apt to change the 3152 | 3398
T 509/07 – No Partial Admissibility, But …
K’s Law – The ebook
board’s view that the statement of grounds was deficient. Nor did the arguments presented at first instance, for instance that the description defined the term “imperceptibly different”, make it possible for the board to immediately understand why the contested decision was alleged to be incorrect in its assessment that parameters specifying this term only in the description were not suitable for limiting the scope of the claims. For in the present case, the appellant’s arguments were already dealt with in the decision under appeal. Thus the board cannot understand immediately why the decision is alleged to be incorrect. Likewise the board is unable to recognise that a substantial procedural violation had occurred or detect from a mere reading of the decision that it could not be upheld. [2.2] It follows that, in relation to the main request, sufficient grounds within the meaning of A 108, third sentence, or Article 12(2) RPBA have not been furnished within the respective four-month time limit nor at a later stage of the proceedings. As a consequence, the board arrived at a conclusion analogous to the one reached by the board in T 382/96 [5.5], that the main request cannot be admitted into the appeal proceedings. This conclusion can also be based on the provisions of the RPBA set out under point 2.1. [2.3] To read the whole decision, click here. NB: This decision has also been commented here (in French).
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T 348/06 – When Insufficiency Changes Sides
K’s Law – The ebook
T 348/06 – When Insufficiency Changes Sides 13 Feb 2010
The present decision deals with the revocation of a patent on the ground of insufficiency of disclosure. The Board comes to the conclusion that it rather is the allegation of insufficiency that is insufficient.
[…] It is established case law that the burden of proof in relation to lack of sufficiency lies with the party making that allegation, in the present case, the [opponent]. The alleged insufficiency is that no clear indication is given how stability of different textures of liquid crystal material is achieved in the absence of a stabilizing polymer component. [2.1] The opposition division (OD) was convinced by the [opponent] that the burden of proof was discharged by virtue of disclosure of reflective devices in documents R8 and R30 with a contra indication that texture is metastable, which devices it considered very similar to examples disclosed in the patent, any differences being such that stability cannot be attributed to them. [2.2] Taking a look at what the patent in dispute discloses, one can refer to section 17 in the description of the patent in dispute to see that no delicate surface conditions are required […]. The description of the patent in dispute also recites that the cell walls can be treated […] and such additional treatments alter the characteristics of the cell response. Additional treatments mentioned in this context are treatments by detergents, chemicals or rubbing. This is thus what the skilled person is taught. [2.3] Buffing polyimide coating for homogenous alignment of the liquid crystal is said to take place according to the teaching of document R8 […] and R30 […].
In view of the disclosure of the patent [in dispute], the board is thus not convinced, that the devices disclosed in documents R8 and R30 are “very similar” to the examples disclosed in the patent, nor is the board persuaded by the submission of the [opponent] that involvement of the [patent proprietor] in documents R8 and R30 renders additional experimental evidence that this is so unnecessary. Moreover, the board has not been given any reason to doubt that any other example taught in the patent meets the claims nor has any evidence been presented in relation to any other examples or materials. [2.4] The OD introduced a dubious link in its chain of reasoning using a vague reference to “rubbed (or “buffed”)”. This reference implies that the OD considered an additional treatment by rubbing in the patent in dispute to 3154 | 3398
T 348/06 – When Insufficiency Changes Sides
K’s Law – The ebook
amount to buffering polyimide coating for homogenous alignment. The OD also observed that buffing polyimide coating for homogenous alignment of the liquid crystal was not excluded. A remark later in the decision went even further by referring to two examples with rubbed polyimide listed in table II of the patent, which, according to the OD, must be assumed to result in homogenous alignment. However, neither how the implication nor how the basis of the “must” is justified, is explained by the OD. Accordingly, the chain of reasoning of the OD did not convince the board. Therefore, the board does not agree with the OD that the burden of proof has been discharged. [2.5]
The [opponent] agreed with the position of the OD in presenting an argument that only ex post facto information excludes “buffing polyimide coating for homogenous alignment” from the patent in dispute, but the board considers it rather more the case that this argument is simply trying to graft a teaching into the patent. Many features are not excluded by any patent description, but for the purpose of assessing sufficiency, it is, with or without expert evidence, what is included in that description which is important. Thus, against this approach can be weighed the position of the [patent proprietor] directed directly to the teaching of the patent and underlining that all the examples in the patent in dispute, including those involving rubbed polyimide, do indeed provide stability of different textures of liquid crystal material. The board thus finds the position of the [patent proprietor] more persuasive as it sees no convincing reason not to follow the teaching present in the patent in assessing sufficiency. [2.6] The [opponent] also referred to decision T 252/02 [2.2.1] in support of its position, which can be cited as follows, “In order to carry out the invention, the skilled person must be in a position to establish whether a product falls within the area covered by the claim and to reliably prepare the claimed product. […] In the present case the non-woven fabric laminate must have […] This presupposes that the skilled person utilises a method […] which is either the same or one which gives essentially the same results as the method which has been used as a basis for arriving at […] the patent in suit.” In the board’s view, [this statement] is not therefore in disagreement with the conclusion reached in the preceding paragraph. [2.7]
The Board then remits the case to the OD; the decision terminates with a polite but pressing invitation to the OD to accelerate the treatment of this case: Generally speaking the board considers that cases should be resolved as soon as possible. In the present case, the board is thus sympathetic to the position of the [opponent] that the long lifetime of the proceedings is a reason for not remitting the case to the OD. On the other hand, the board cannot ignore the fact that the OD did not offer enough information in its decision for the board to be to be sure of its position on substantive patentability. If the board were to take a first decision on substantive patentability, it would thus deprive the [patent proprietor] of an instance. In the absence of a more pressing reason, such as, for example, pending infringement proceedings, the board therefore saw the balance between the parties to be best served, in the present case, by remittal. Nevertheless, from the viewpoints of procedural efficiency and service to the parties, the board regrets the delay in resolving the case and remarks that it would not be unhelpful if the OD were able to expedite its examination of the remitted case, dealing with all the issues still up for decision. [3.1] To read the whole decision, click here.
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T 956/04 – Dangerous Product ... -By-Process
K’s Law – The ebook
T 956/04 – Dangerous Product ... -ByProcess 12 Feb 2010
[…] Product-by-process features (“obtainable by a process comprising heating a mixture of transition alumina and an aqueous solution of cobalt ammine carbonate to a temperature of 60°C to 110°C in order to allow cobalt hydroxycarbonate to precipitate, drying and calcining the resulting product”) have been introduced in claim 1. [2] […] Since the "obtainable-by" features were introduced by an amendment to claim 1 in opposition procedure, the requirement of clarity must be met [3.1] According to the established case law, claims for products defined in terms of processes for their preparation (known as product-by-process claims) are admissible only if the products themselves fulfil the requirements for patentability and that there is no other information available in the application which could have enabled the applicant to define the product satisfactorily by reference to its composition, structure or other testable parameters (cf. T 150/82 [10]). As regards the above second requirement, in the present case, information is available in the application as filed, on how to define the catalyst by composition parameters for example by preferred amounts of cobalt, preferred cobalt metal surface area and the type of alumina. None of these possibilities, however, have been introduced in claim 1 of the main request, since the [patentee] wishes to rely on features such as crystallite size and distribution which are not defined in the application as filed. Since there is no other information available in the application as filed for the desired limitation by reference to crystallite size and distribution, the question arises whether the products themselves as defined by the “obtainable-by” features in claim 1 would fulfil the requirements for patentability. [3.2] The [patentee] argued that the claimed “obtainable-by” features resulted in distinguishable structural properties over the prior art catalysts according to D4 to D6 such as higher cobalt metal surface area for a given cobalt content, as well as a crystallite size of 3 to 5 nm having a narrow distribution. [3.3] […] The prior art catalysts according to D4 to D6 having a cobalt content in the range of 3 to 40% by weight already provide a cobalt metal surface area of above 40 m² per g of cobalt as defined in claim 1. [3.3.4] The [patentee] argued, however, that the evidence on file showed that the “obtainable-by” features provided a higher cobalt metal surface area at a given cobalt content than any prior art catalyst. [3.4] […] From the test results [provided by the patentee], it can be gathered that the measured cobalt metal surface areas at a given cobalt content are not consistent and that for different alumina supports the cobalt metal surface area is dependent on the amount of cobalt deposited and the type of alumina used. Thus, the type of alumina and the specific loading of cobalt thereon is not irrelevant. Consequently, a specific relation between the metal content and the cobalt metal surface area cannot be the inevitable result of the claimed “obtainable-by” features. [3.5.3] […] In summary, the [patentee’s] test reports show that catalysts according to D5 and D6 having a cobalt content in the range of 3 to 40% by weight provide a cobalt metal surface area of above 40 m²/g of cobalt when reduced as defined in claim 1. Thus, all these prior art catalysts fulfil the product parameters of claim 1 of the main request, and are thus not distinguishable from catalysts which are arguedly the inevitable result of the “obtainable-by” features. Furthermore, even if the invoked different relation between cobalt content and cobalt metal surface had been shown, it is not a requirement of claim 1. [3.5.5] The [patentee] furthermore argued that the “obtainable-by” features provided a crystallite size of 3 to 5 nm and a more uniform distribution than that obtainable by the prior art catalysts. [3.6]
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T 956/04 – Dangerous Product ... -By-Process
K’s Law – The ebook
No crystallite particle size or its distribution is ever mentioned in the application as filed, let alone as a possibly distinguishable feature of the claimed catalyst. Thus, from the patent in suit, no causal relation between the “obtainable-by” features and the crystallite size and its distribution can be gathered. In addition, it is not clear how “uniform” that crystallite size distribution would be. Hence, the board considers that the “obtainable-by” features cannot provide a clearly distinguishable product feature with respect to the crystallite size and its distribution. [3.6.1] […] According to the case law (T 552/91 [5.2]) it is necessary to include in the claim the process parameters required for defining unambiguously the claimed substances as inevitable process products. It is generally necessary to indicate not only the starting compounds and the reaction conditions, but also the methods by which the reaction mixture is processed to obtain the claimed compounds. Without clearly indicating the specific starting materials (including the alumina carrier having specific pore volume and surface area) and the specific reaction conditions (drying, calcination and reducing conditions), the “obtainable-by” features as claimed fail to unequivocally define any clear catalyst features. [3.6.7] In summary, the claimed “obtainable-by” feature does not unambiguously define the claimed catalysts as inevitable process products. Furthermore, the exact distinction (a specific relation between cobalt content and cobalt metal surface area or a more uniform Co crystallite size distribution of 3 to 5 nm), which should define the scope of protection, cannot be learnt from the “obtainable-by” features, since the experimental evidence on file does not show that the “obtainable-by” features necessarily provide any clearly distinguishable product feature in that respect. Consequently, the product-by-process features of claim 1 of the main request is not clear and does not permit the conclusion that the inevitable process product thereof is novel over the prior art catalysts. [3.7] Therefore, the product-by-process features in claim 1 of the main request do not clearly define patentable subject-matter and the claim does not meet the requirements of A 84. [3.8] To read the whole decision, click here.
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T 567/08 – Ambiguity Kills The Cat
K’s Law – The ebook
T 567/08 – Ambiguity Kills The Cat 11 Feb 2010
Readers interested in major and “surprising” decisions only should not read on. The present decision is not revolutionary at all, but it contains a very thorough discussion of an ambiguous amendment that led the patentee into the “inescapable trap” between A 123(2) and A 123(3). In particular the question of whether the existence of particular interpretations that would make the amendment allowable can change the fate of the claim is discussed in detail. [...] The subject-matter of claim 1 as granted is defined in part using the term “base footprint”, which is not disclosed in the original disclosure but was introduced during examination and held to add subject-matter in the decision under appeal. [3.1] The decisive issue now is whether the addition of this term represents an amendment of the type addressed in G 1/93 [12] namely an “undisclosed technical feature limiting the scope of protection of the granted patent in comparison with the application as filed”. Such a “limiting extension” adds subject-matter contrary to A 123(2) but at the same limits the scope of protection vis-à-vis what could have been claimed, so that its removal infringes A 123(3). Only if there is a basis in the application as filed for replacing such subject-matter without violating A 123(3) can it be remedied. On the other hand, if the limitation merely excludes part of the potential protection of the application as filed, without providing a technical contribution to the subject-matter of the claimed invention, it does not add subject-matter and the opposition ground under A 100(c) does not prejudice maintenance of the patent. G 1/93 makes its findings in the light of the overall purpose of A 123(2)(3), namely to create a fair balance of interests between patentee (or applicant) and competitors and third parties. [3.2] Original disclosure It is uncontested that the term “base footprint” is not expressly disclosed in the application as filed. In granted claim 1 a rear sidewall extends beyond the “base footprint” to effectively form the shoulder (though not defined as such in the claim). The relevant parts of the original disclosure dealing with the location of the shoulder are to be found on page 12, in the first paragraph, (“the shoulder ... extends to at or near a theoretically plane extending vertically upwards rear the first end (the base) of the container” and in as filed claim 8 (“the shoulder ... extends to at or near a theoretical plane which extends vertically above the circumference of the first end”). [4.1] “The first end” and “base” are used, it would appear, as synonyms on page 12. In a further passage […] the two terms are again used interchangeably: “the container has a first, closed end which … has a planar surface, enabling it to stand upright. The planar surface may be completely flat or comprise a flat rim and an inwardly domed area. The base often has a diameter ...”. This passage also offers a definition, if somewhat grammatically flawed, of what is meant by the first end/base. It focuses on the flat surface on the bottom end of the container including any domed area contained within it and corresponds to what the [patent proprietor] reads as “base” and “base footprint”:
It is noted that this definition excludes the rounded edge of the container bottom lying outward of and connecting to the flat surface. On the side of the shoulder this edge is shown as relatively prominent and not negligible. [4.2] With this definition in mind, page 12, first paragraph, and claim 8, can then be read as teaching to locate the shoulder beyond a plane extending vertically from the circumference of this flat surface. [4.2] Added subject-matter
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T 567/08 – Ambiguity Kills The Cat
K’s Law – The ebook
Claim 1 was amended upon grant to require the support (forming the shoulder) to lie “beyond the base footprint”. The term “footprint” can have various meanings, and its use in conjunction with “base” is open to interpretation, as the debate to date has shown. [5.1] If “footprint” is understood, as does the [patent proprietor], in the sense of a “tyre footprint”, meaning “the area of contact between a tyre and the ground” (Oxford English Dictionary or OED), it corresponds to the contact surface of the container bottom end on the underlying surface. The circumference thereof corresponds to that of the base or first end as defined above, and the requirement in granted claim 1 could then be read as equivalent to that understood from the text (where “the support/shoulder extending beyond the circumference” will be understood as meaning that it extends beyond the plane extending vertically from the circumference). [5.2] On the other hand, the term can be read analogously to “footprint of a personal computer”, denoting the “area of a surface taken up by a microcomputer on a desktop” (OED) and formed by the downward projection onto the surface of the PC. This reading would allow for more complex, non planar base shapes - such as with an outer rounded edge - the downward projection of which then forms the “footprint”. In this interpretation “base footprint” includes for example the rounded edge onto the underlying surface:
The area is larger than that of the contact surface above, and its circumference further outward. Thus interpreted, granted claim 1 requires the support/shoulder to lie further outward than if it is interpreted as in the previous paragraph. [5.3] Both interpretations represent common usage, as illustrated by the citations from the OED. Moreover, they fit within the context of the entire contents, i.e. there is no contradiction between this claim wording and description and figures of the patent specification, the relevant parts of which … are unchanged with respect to the originally filed description. These passages encompass also shoulders that extend further outward , e.g. those beyond the boundary of the base projection rather than of the contact surface. [5.4] The second interpretation however is more specific than the teaching derivable from the original disclosure. It adds new, more precise information on the location of the shoulder, which is not derivable from the original application. Moreover, in the context of the problem of stability this information is technically significant; by defining a more limited range of possible shoulder positions it provides a technical contribution to the invention. In its second interpretation the feature of the “base footprint”, and bearing in mind G 1/93 [headnote II], thus adds subject-matter extending beyond the content of the application as filed, contrary to the requirements of A 123(2). [5.6] This possible interpretation gives the proprietor an unwarranted advantage and is damaging to the legal security of third parties. It does not matter that the claim can also be read in such a way that it does not add subjectmatter. The fact that in one reasonable interpretation of the claim it does do so is decisive. The legal certainty of a claim that, by introduction of an undisclosed ambiguous term, is amended to have multiple reasonable interpretations, is thus compromised when one of those interpretations relates to added subject-matter. The Board thus concurs with the finding of the decision under appeal, that the corresponding opposition ground of A 100(c) is prejudicial to the patent as granted. [5.7] Limitation of scope of protection The first interpretation of “base footprint” as synonymous to contact surface clearly does not per se result in a limitation of the scope of the original disclosure. However, reading the term in its second sense, claim 1 as granted only protects containers with supports/shoulders that extend further outward, beyond the wider area. A shoulder, which lies between the contact surface boundary and that of the whole base projection,
does not fall within granted claim 1’s scope, though by virtue of the original application’s disclosure of the contact surface boundary as lower limit it could have been. According to the second interpretation of “base footprint” this amendment to claim 1 at grant thus limits the scope of the claim in comparison to the application as filed and published. It is again stressed that this second interpretation is consistent with description and 3159 | 3398
T 567/08 – Ambiguity Kills The Cat
K’s Law – The ebook
figures, and it is thus a valid construction of claim scope when the claim is read in light of the description and figures in accordance with A 69(1). [6.1] As demonstrated above, but for the prohibition of A 123(3), subsequent amendment of claim 1 by removing the term “base footprint” would result in embodiments, which before amendment did not infringe the patent, after amendment infringing it. Here again the fact that there is at least one reasonable, contextually consistent reading of the term that results in a limitation of scope, among a number of possible readings that do not, is decisive. The ambiguity of the undisclosed amendment adds to, rather than mitigates the legal uncertainty surrounding the rights deriving from the patent. In this regard, the Board notes that if it were to construe an ambiguous undisclosed term in a manner favourable to the Proprietor (i.e. in a way that does not add subject-matter and limit scope) it would act against the principle of a fair balance of interests underlying A 123(2)(3). In its view the Proprietor should not be able to reap any benefit from the fact that an added undisclosed feature is ambiguous, with regard to an added undisclosed feature that is not. [6.2] Conclusion As follows from the above, the amendment of claim 1 pertaining to “base footprint” adds subject-matter, but limits the scope of protection in comparison to the application as filed and published. The Board concludes that it is a “limiting extension” in the sense of G 1/93. [7] To read the whole decision, click here.
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T 1123/09 – Munich Won’t Have It The American Way
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T 1123/09 – Munich Won’t Have It The American Way 10 Feb 2010
Last year decision T 2321/08 created quite a buzz in the EPO and in informed circles: the Examining Division (ED) had rejected an application because the applicant had not cited certain prior art documents known to it. The Board found the ED’s interpretation of R 42(1)(b) unacceptable and concluded that this rule did not put a stringent obligation on the applicant to acknowledge prior art known to him, and to cite documents known to him reflecting this prior art, already at the time of filing the application. According to the Board, no requirement of the EPC prohibits amending an application in order to meet R 42(1)(b). The present decision confirms this approach. For the time being, the EPC has no equivalent to the duty to disclose prior art before the USPTO. […] Documents [D2 and D3], which originated from the applicant, were not cited in the application as originally filed. The department of first instance considered that R 42(1)(b) EPC (R 27(1)(b) EPC 1973) had to be interpreted such that an applicant has the obligation to cite any documents which, as far as known to the applicant, can be regarded as useful for understanding the invention, for drawing up the European search report and for examination in the application as originally filed and that, if the applicant did not cite documents it is deemed to have known, this obligation can not be met by acknowledging the documents in the description only after they have been cited in the search report. The facts on which case T 2321/08 was based were that several documents cited in the search report were not acknowledged in the application as filed although one of the named inventors of the application was an author of those documents. Consequently, the applicant was deemed to know these documents. As the documents were not cited in the application as filed and this objection could not be overcome at a later stage according to the ED, the application was refused under R 42(1)(b). These facts are substantially identical to those underlying point I of the decision under appeal in the present case except that D2 and D3 do not give the name of the author, so that in this case the connection is only that they emanate from the applicant company. The present board agrees with the reasoning of T 2321/08 and adopts points 2 to 9 of the decision in the present case. Accordingly the board judges that Rule 27(1)(b) EPC 1973 has to be applied instead of Rule 42(1)(b) EPC, these rules being substantially identical, that Rule 27(1)(b) EPC 1973 was incorrectly applied in the decision under appeal and that the appellant has the right to amend the description to acknowledge D2 and D3 following the objection raised by the ED. [3] The Board then concluded that the use of a new and unsupported principle by the ED constituted a substantial procedural violation and ordered the reimbursement of the appeal fee. To
read
the
whole
NB: This decision has also been commented here (in French).
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decision,
click
here.
T 1125/07 – On Implicit Disclosure
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T 1125/07 – On Implicit Disclosure 9 Feb 2010
The present decision is certainly not a must-read but it contains a nice paragraph on what is meant by implicit disclosure. […] In order to determine whether or not the subject-matter of a claim in a patent extends beyond the content of the application as filed it has to be examined whether that claim comprises technical information which a skilled person would not have objectively and unambiguously derived from the application as filed (see decisions T 296/96 [3.1]; T 823/96 [4.5]; T 860/00 [1.1]; T 1206/01 [2.1]; T 3/06 [4.1.4]). The content of an application as filed encompasses what is directly and unambiguously disclosed therein either explicitly or implicitly. In this context “implicit disclosure” means disclosure which any person skilled in the art would objectively consider as necessarily implied in the explicit content, e.g. in view of general scientific laws (T 860/00). Hence, the term “implicit disclosure” should not be construed to mean matter that does not belong to the content of the technical information provided by a document but may be rendered obvious on the basis of that content. Whilst common general knowledge (CGK) must be taken into account in deciding what is clearly and unambiguously implied by the explicit disclosure of a document, the question of what may be rendered obvious by that disclosure in the light of CGK is not relevant to the assessment of what the disclosure of that document necessarily implies. The implicit disclosure means no more than the clear and unambiguous consequence of what is explicitly mentioned (see T 823/96). [3.2] It is matter of fact that the application as filed does not explicitly disclose the step of making an array of spatially segregated organometallic metal ligand compounds (step (a) of the method of claim 1). As the [opponent] argued, the application as filed comprises four passages disclosing a method for preparing an array of metal ligands, two of which being specifically directed to arrays of spatially segregated metal ligand compounds. Thus, on page 4, line 29 to page 5, line 11 and on page 14, lines 1 to 13, the method disclosed of making an array of metal ligand compounds comprises synthesizing a spatially segregated array of ligands and delivering a suitable metal precursor to each element of the array to create an array of metal ligand compounds. The passages of the application as filed on page 13, lines 4 to 10 and lines 18 to 23 and claims 1 and 2 as filed disclose methods of making an array of metal ligand compounds wherein a first metal binding ligand and a second metal binding ligand are first synthesized/delivered on/to a first and second regions on a substrate and then a first and a second metal ion are delivered to the first and second metal binding ligand to form the metal ligand compounds. Thus, in each method of making an array of metal ligand compounds disclosed in the application as filed there are the process steps of first making an array of ligands and then delivering a metal ion or precursor to form the metal ligand compound whereas claim 1 only requires making an array of spatially segregated (organometallic) metal ligand compounds, thereby omitting those two particular process steps. [3.3] A generalisation of the specific disclosures referred to above has thus been made, as argued by the [opponent], since step (a) of claim 1 covers any method of making the array of metal ligand compounds while a method of making an array of metal ligand compounds is disclosed in the application as filed only as the result of two process steps, which are no longer required in present claim 1. The mere disclosure in the application as filed of a particular method of making an array cannot form the basis of a generalisation to any method of making an array of metal ligand compounds since such generalisation provides the skilled person with technical information which is not directly and unambiguously derivable from the application as filed. As a consequence the method claim 1 comprising the step (a) which covers any method of making the array of metal ligand compounds cannot be based on the disclosure of the original application, but is an undue generalisation thereof, which extends beyond its content. [3.4] 3162 | 3398
T 1125/07 – On Implicit Disclosure
K’s Law – The ebook
[…] The [patentee] argued that it was clear that an array of organometallic compounds must comprise spatially segregated compounds in predefined regions on a substrate and therefore the disclosure of the summary of invention on page 4 relating to the synthesis of arrays of organometallic was a clear support for a method for preparing an array of organometallic metal ligand compounds comprising the step (a) of making an array of spatially segregated organometallic metal ligand compounds in predefined regions of a substrate, wherein a first organometallic metal ligand compound was in a first region on said substrate and a second organometallic metal ligand compound was in a second region on said substrate, wherein said first organometallic metal ligand compound and said second organometallic metal ligand compound were different. However, this argument is not relevant because it addresses the structure that an array must comprise based on its intended use. It therefore does not address its method of preparation, while the contested feature specifically relates to process step (a) of this method. Furthermore, at a first glance, it would not appear adequate that the disclosure of one single line in the application as filed could constitute the proper support for some nine lines full of technical features in claim 1. [3.5.1] […] Hence, the Board concludes that the subject matter of claim 1 as amended provides the skilled person with technical information which is not derivable from the application as filed. Consequently, claim 1 extends beyond the content of the application as filed justifying the ground for opposition pursuant to A 100(c), so that the request must be rejected. [3.8] To read the whole decision, click here.
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J 1/08 – European Zombie
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J 1/08 – European Zombie 8 Feb 2010
The present decision deals with a situation where the applicant was allowed to enter the European phase very late (51 months from the priority date) because the EPO could not prove that the applicant had received the notification under R 108(3). However, the bliss was short-lived: it was indeed a dead application that entered the European phase as it was too late to pay the renewal fees that had fallen due. The following timeline summarises the situation. (click to enlarge)
NB: All the articles and rules referred to are provisions in force under the EPC 1973. […] The renewal fees in respect of European patent applications are basically due under A 86 for the first time in respect of the third year calculated from the date of filing of the application. Under A 150(3), an international application (IA) for which the EPO acts as designated Office shall be deemed to be a European patent application. According to A 153(1), first sentence, the EPO shall act as a designated Office for those Contracting States to the EPC which are designated in the IA if the applicant informs the receiving Office in the IA that he wishes to obtain a European patent for these States. Therefore, A 86 also applies in principle to the payment of renewal fees for an IA designating the EPO. [3] R 107(1)(g) relates to the specific situation in which the first renewal fee to be paid has fallen due under R 37(1) before the end of the period of thirty-one months from the filing date or from the priority date of the IA for entry into the European phase. In this case, under R 37(1), the applicant must pay the renewal fee - only - within the thirty-one months period. R 108 relates to the consequences of non-fulfilment of certain specific requirements for entry into the regional phase before the EPO. A communication under R 108(3) is due from the EPO only in case of loss of rights under paragraph 1 or 2 of that Rule, which does not encompass the lack of payment of the renewal fee in respect of the third year due upon entry into the regional phase under R 107(1)(g). It appears from the above that the time limit under R 107(1)(g) for the payment of the renewal fee in respect of the third year is excluded from the communication and noting of loss of rights under combined R 108 and R 69. Hence, there is no applicant’s right to a reminder on that legal basis concerning the time limit for payment of the renewal fee. A fortiori, such a right could not originate or derive indirectly from a specific legal context to be considered under R 108(3). Such an extension would be against the rule of law enshrined in the other provisions setting up the regime which applies to the payment of the renewal fees. [4] Anyway, in the present case, the renewal fee for the third year was not even due under R 107(1)(g) at the time for entry into the European phase but became due only later. Also on that basis, no right can be derived, as to the lack of payment of the renewal fee for the third year, from the absence of a communication under R 108(3). [5] The appellant argued that Rule 108(3) did not only deal with all the acts to be performed under Rule 107(1) but that it would result in a general extension of the period to comply with all requirements for entry into the European phase. As mentioned above, R 108 has a specific scope of application, which cannot be applied generally to all acts to be performed at the time of the entry into the European phase. A fortiori, there is no legal basis, either from the text itself or from any interpretation of the intention of the lawmaker, to support a further generalisation of R 108(3) which would result in a general extension of the period for entry into the European phase until after 3164 | 3398
J 1/08 – European Zombie
K’s Law – The ebook
expiry of the time limit for completing any omitted acts after issue of a communication under R 108(3), first sentence. On the contrary, paragraphs 1, 2 and 3 of R 108 clearly stipulate that the loss of rights takes place if the necessary acts are not performed within the thirty-one months period and completion of the omitted acts mentioning payment of the required surcharge within two months from the notification of the loss of rights communication under R 108(3) - only - has the effect that the loss of rights is then deemed not to have occurred. Hence, the issue of a communication under R 108(3) does not extend the original time limit of thirty-one months for entry into the regional phase but solely provides the applicant with an opportunity to make good the loss of rights having actually occurred upon expiry of the thirty-one months, by performing the outstanding acts mentioning payment of a surcharge within the period under R 108(3). Therefore, in the present case, the renewal fee for the third year had not fallen due before the end of such an “extended” period for entry into the regional phase and R 107(1)g is not applicable. [6] Instead, in the present case, as it concerns the payment of the renewal fee and since the IA is to be treated as a European application from its international filing date, the legal basis for that payment to become due is to be found in A 86. As regards the time limit for the payment of the renewal fees for a European patent application under A 86, the EPO is under no obligation to remind the applicant of its expiration and the applicant can derive no right from the absence of any such reminder (established jurisprudence following J 12/84; J 1/89). [7] The appellant also submitted that if a further prosecution of the application is refused based on non-payment of the renewal fee, it would defeat the purpose of R 108(3). The above analysis demonstrates that there are distinct applicant’s obligations and rights, on the one hand for the payment of the renewal fees and on the other hand for the entry into the European phase, with different time limits, different rights to reminders and different legal consequences. In the present case, the due date for the payment of the renewal fee and the deadline for its payment with surcharge had to be managed by the applicant independently from the requirements for the entry into the European phase. The lack of payment of the renewal fee for the third year is an omission which cannot be associated with the other omissions and which has to be considered on its own, independently. Hence, even if the requirements for entry into the European phase have been fulfilled, the non-payment of the renewal fee in due time remains by itself a sufficient ground for having the application deemed to be withdrawn. That is the context of the present case and does not generally deprive R 108(3) of any application in any situation, e.g. in cases where the applicant had not complied in due time with the requirements for entry into the European phase, had then received a communication under R 108(3) and had consequently complied with all due requirements for entry into the European phase when the time limit for payment of the renewal fee had not elapsed. [8] As to the reference made by the appellant to Article 48(2)(b) and Rule 82bis.1.(iii) PCT, the Board notes that these provisions establish that the EPO “may” excuse any delay in meeting any time limit for reasons not admitted under its own law, not that the EPO must excuse all such delays (distinguished from Art 48(2)(a) PCT). Therefore, not to generally excuse all delays does not constitute a breach of any obligation of the EPO under the PCT nor, contrary to the appellant’s argument, does it raise any conflict between the provisions of the EPC and of the PCT in which PCT’s provisions should prevail under A 150(2). This is in line with decision G 3/91 [1.5; 1.8] where Article 48(2)(b) PCT had been considered and where, however, equal treatment of the time limits which must be observed by Euro-PCT and direct European applicants was recognised as consistent with the law. In the present case, the Board sees no reason to depart from said decision nor any legal basis which could justify a different and more favourable treatment of the application in suit as to the time limit for payment of the renewal fee because of its origin as [an] IA. [9] The decision then deals with arguments concerning an alleged lack of good faith on behalf of the EPO and finally dismisses the appeal. To read the whole decision, click here.
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T 1266/07 – Video Conference Refused, But …
K’s Law – The ebook
T 1266/07 – Video Conference Refused, But … 6 Feb 2010
The request for the oral proceedings (OPs) to be held by video conference was received some two weeks before the appointed date. This was too short a time for the board to deal with the legal and practical issues arising from the request, which was accordingly refused. [1.1] This board accepts that in future it is conceivable that such a request might be allowed. For this to happen however it will be necessary that a general framework exist. Inter alia the following issues will require to be resolved: (a) Firstly, video conferencing before an examining division (ED) is explicitly regulated by the statement in the OJ EPO 2006, 585ff. There is however at present no corresponding provision for the boards of appeal; in particular, it is not mentioned in the Rules of Procedure of the Boards of Appeal (RPBA). (b) Secondly, OPs held before the ED are, in accordance with A 116(3), not public, whereas those before the boards of appeal are public, A 116(4). It will be necessary to ensure that the use of video conferencing is reconciled with the requirement that OPs before the boards be public. [1.2] The legal certainty required of appeal proceedings would not be guaranteed if the present board set a precedent by permitting OPs by video conference before these issues are resolved. [1.3] To read the whole decision, click here.
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T 1557/07 – Limits of the Right To Be Heard
K’s Law – The ebook
T 1557/07 – Limits of the Right To Be Heard 5 Feb 2010
[...] In the present case, the Examining Division (ED) raised an objection under A 83 in a first communication pursuant to A 96(2) EPC 1973. [In their reply], the applicants submitted arguments against the raised objection and filed new application documents, in particular amended claims. The ED then issued the decision under appeal refusing the application on the ground of A 83. [2.1] The representative of the appellants submitted that the ED, without having given any warning that the application might be refused, issued the decision under appeal although [their reply] represented a “bona fide attempt to overcome the objections raised” and the amended claims filed with this letter created a significantly new factual situation. Under these circumstances, following T 734/91, A 113(1) required the issue of a second communication dealing with the substantial comments of the applicants and the amended claims. Indeed, the appellants, two private persons, had a fair expectation to receive a further communication. Moreover, the contested decision was deficient under two aspects. First, the arguments produced by the appellants “were not addressed fully nor accurately” by the ED and, second, a statement was made “for the first time in the proceedings in the reasons for the refusal” in point 1.7 of the Reasons, last paragraph. All this amounted to a substantial procedural violation which justified the remittal of the case to the ED for further prosecution and the reimbursement of the appeal fee. [2.2] It should be noted that, in the present case, the provisions of A 113(1) are met to the extent that the decision is based on the same ground (A 83) and evidence mentioned in the [first] communication. Therefore, the question to be considered only concerns whether the ED had an obligation to issue a second communication giving the appellants an opportunity to present further comments. The fact that the appellants as private persons had a fair expectation of a further communication is not relevant for the question at issue since they were represented by professional representatives before the EPO. Pursuant to A 94(3) EPC 1973, if the examination reveals that the application does not meet the requirements of the EPC, the ED shall invite the applicant, “as often as necessary”, to file his observations. Thus, the ED had a power of discretion to either send a second communication or to issue a decision. A 113(1), however, limits the exercise of this power by requiring that the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. [2.3] With regard to the appellants’ submissions, a first issue relates to the allegation that the contested decision relied on fresh arguments. In principle, the Board has no reason to depart from T 268/00, according to which the use of a fresh argument in a decision still based on grounds and evidence communicated beforehand is not precluded. Notwithstanding this, in the present case the ED came to the conclusion that it was not convinced that a skilled person was actually able to achieve the intended effect […]. This statement is also mentioned in the [first] communication on which the appellants have had an opportunity to present their comments, this opportunity having been taken with [their] reply. Thus, the allegation at issue is not conclusive. [2.4] A further issue concerns the amended claims. […] Claim 1 filed with the reply does not differ from claim 1 of the application as filed in such a way that the reasons for the raised objection under A 83 would substantially change. [Therefore], the circumstances of the present case are not comparable with those underlying T 734/91. In that case the appellant had filed a fresh set of claims in reply to a communication of the ED, the subject-matter of claim 1 being considerably changed in the light of the objection of lack of novelty raised by the ED. [2.5] A further issue concerns the allegation that the ED did not fully and accurately deal with all the relevant arguments submitted by the applicants in their reply. Provided that the reasons given enable the appellant and the Board to understand whether the decision was justified or not, the ED is under no obligation to address each and every argument presented by the party concerned. In the present case, the ED commented on the crucial points of dispute thus giving the applicants a fair idea of why their submissions were not considered convincing. This allegation is therefore also not conclusive. [2.6] In conclusion, the ED did not commit a substantial procedural violation. [2.7] 3167 | 3398
T 1557/07 – Limits of the Right To Be Heard
K’s Law – The ebook
To read the whole decision, click here.
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T 570/05 – A Borderline Case
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T 570/05 – A Borderline Case 4 Feb 2010
The patentee claimed a coated transparent substrate. The application as filed taught a coating thickness of from 100 to 500 nm. The patentee then amended the lower limit to 220 nm. […] The [patentee’s] arguments may be summarized as follows: The newly claimed ranges find support in the application as originally filed. […] There was no need for the new range of 220 to 500 nm to be originally disclosed as such as long there was a clear basis for the claimed upper and lower limit of the coating thickness. The latter value of 220 nm was disclosed in three examples. Only one example fell outside the amended range. The skilled person was initially taught a range of from 100 to 500 nm. However, he would gather from the examples that the lower end of the range, below 220 nm, was exemplified only by one example, whereas by far the most coated substrates in accordance with the invention exhibited higher coating thicknesses. Although there was an influence between coating thickness and reflectance RL, as stated in paragraph [0057] of the opposed patent with respect to a comparison between individual examples, this did not mean that a general teaching could not be derived from the examples. The proposed amendments did not add new information and did not affect the legal position of third parties. [IX] […] The only literal basis in the application as originally filed for the lower value of 220 nm of the claimed coating thickness range is to be found in the examples 18, 21 and 25. [1.1] A 123(2) stipulates that a European patent application or a European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. In the present case, formal disclosure for the value “220” exists; the issue to be decided is whether or not new subject matter is added by forming a new range in a claim using said figure of 220 nm, it being evident that nowhere in the documents as filed said value forms the lower (or indeed any) endpoint of a range of thicknesses. [1.2] In this respect the board considers the following jurisprudence of the Boards of Appeal as particularly relevant: T 201/83 [12] reads: “An amendment of a concentration range in a claim for a mixture, such as an alloy, is allowable on the basis of a particular value described in a specific example, provided the skilled man could have readily recognised this value as not so closely associated with the other features of the example as to determine the effect of that embodiment of the invention as a whole in a unique manner and to a significant degree.” In decision T 1067/97 [2.1.3] the board stated: “According to established jurisprudence of the boards of appeal, if a claim is to be restricted to a preferred embodiment, it is normally not admissible under A 123(2) to extract isolated features from a set of features which have originally been disclosed in combination for that embodiment. […] Such kind of amendment would only be justified in the absence of any clearly recognisable functional or structural relationship among said features”. This jurisprudence is confirmed in decision T 714/00 [3.3]: “Extracting an isolated feature from an originally disclosed combination and using it for delimiting claimed subject-matter can only be allowable under the concept of A 123(2) if that feature is not inextricably linked with further features of that combination. [1.3] The board must therefore examine whether or not there exists a functional or structural relationship between the coating layer thickness, in particular its lower limit, and the remaining features of the claim. Paragraph [0057] of the patent clearly states: “It should be borne in mind that comparisons of the respective reflectance values between different examples can only be made for similar thicknesses and Sb/Sn ratios because these parameters are of great importance for the reflectance value. For example, two coatings of the same composition will show differences in reflectance as a function of their thickness.” [Emphasis added]. [1.4] The appellant itself confirmed during oral proceedings that reflectance RL is dependent on coating thickness. […] This dependency of reflectance on the coating thickness is in fact of the same order of magnitude as the claimed influence of the coating additives. […] The condition of absence of any clearly recognisable functional or structural relationship under which an isolated extraction of a feature of an example would be allowable according to the above discussed jurisprudence is thus not satisfied in the present case. [1.5] 3169 | 3398
T 570/05 – A Borderline Case
K’s Law – The ebook
[The claims] therefore do not meet the requirements of A 123(2); these requests must be rejected. [1.6] To read the whole decision, click here.
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T 593/06 – Smart Use of Use
K’s Law – The ebook
T 593/06 – Smart Use of Use 3 Feb 2010
I find this case interesting because the applicant found a clever way to overcome a novelty objection; unfortunately, this goal was achieved by using an effect that turned out to be an obvious bonus effect. Therefore, the claim finally fell for lack of inventive step. However, the strategy chosen could be salutary when the novelty destroying prior art is an A 54(3) document. Claim 1 of the main request read: A method for preparing a glass composition, said method comprising forming a batch of glass-forming components by admixing a volatile component source containing a volatile selected from the group consisting of boron and heavy metals; a silicate compound of the formula KuNavAlwCaxMgySiOz wherein […] u, v and w, independently range from about 0 to about 0.5; x and y […] from about 0.1 to about 0.6; and z is a value which balances the formula; and other glass-forming components; melting and refining the batch of glass-forming components in a furnace the resultant melt to obtain a glass composition; wherein said glass composition has a reduced variability of oxides distribution measured at the feed end of said furnace or a reduced loss of said volatile component than a glass composition having an equivalent composition produced without using said silicate compound. […] D1 discloses in combination all the features of claim 1 [of] the main request. It is true that diopside is added as a colourant for producing a stained, emerald-green or bluish-green glass and that no reference to refining aids or the volatility of components in the melting process is made. However, on the principle that the same causes must give rise to the same effects, diopside will effectively act in the same way as claimed in the present application, i.e., it reduces melt viscosity, loss of volatiles and variability of oxides distribution, irrespective of whether or not said effects are explicitly taught in D1. [Claim 1 of] the main request therefore lacks novelty (A 54(1)(2)). The main request is not allowable. [1.1] The auxiliary request was designed to overcome the novelty objection via the ‘novelty of use’ doctrine. Claim 1 of this request read: Use of a silicate compound of the formula KuNavAlwCaxMgySiOz wherein […] u, v and w, independently range from about 0 to about 0.5; x and y independently range from about 0.1 to about 0.6; and z is a value which balances the formula; in a method for preparing a glass composition, said method comprising forming a batch of glass-forming components by admixing the said silicate; a volatile component source containing a volatile selected from the group consisting of boron and heavy metals; and other glass-forming components; melting and refining the batch of glass-forming components in a furnace to obtain a glass composition; wherein use of the said silicate provides a reduced loss of said volatile component from the said glass composition than from a glass composition having an equivalent composition produced without using said silicate compound. The subject matter of the claims in accordance with the auxiliary request relates to a second non-medical use. Since none of the available prior art documents discloses the effect of reducing the loss of volatile components from the glass composition, as stated in the claim, it may thus be considered a novelty-imparting technical feature within the meaning of decision G 2/88 [10.3]. The subject matter of claim 1 of the auxiliary request meets the requirements of A 54(1)(2). [1.2] The board considers document D3 to represent the closest prior art because it is concerned with a similar objective as the present application, that is, improving batch uniformity, reducing fining time, shortening melting times, etc. According to D3, these and other advantages are achieved by adding to the glass composition a silicate material comprising one or more compounds selected from calcium silicates, magnesium silicates and calcium magnesium silicates. A preferred silicate material is diopside (CaMg(SiO3)2). As advantageous effects of adding the silicate material to a glass batch, D3 explicitly mentions a better heat transfer, a lower fining time due to 30% to 40% less gas, and shorter melting times. D3 does not, however, teach reduced loss of volatiles. [2.1] 3171 | 3398
T 593/06 – Smart Use of Use
K’s Law – The ebook
In the light of the teaching of document D3, the technical problem underlying the application in suit therefore consists in reducing the loss of volatile components, selected from boron and heavy metals, from a glass composition during the melting operation. [2.2] As a solution to this problem the application in suit proposes the use of a silicate additive according to the formula of claim 1 in a method comprising forming a batch of glass-forming components and refining the batch characterized in that the use of said silicate provides a reduced loss of volatiles. [2.3] The claimed use encompasses the formation of molten glass batches of any kind and composition, using a broad class of volatile component sources (boron and heavy metals). The desired reduction in volatile loss has been made plausible only for one particular glass melt. Moreover, the desired better homogeneity and reduced variability of oxides has been asserted only in a qualitative and indirect manner. It appears implausible to the board that addition of a silicate compound as claimed may effectively reduce melt viscosity and melt temperature in essentially all conceivable glass melts, irrespective of their compositions. Although it is thus questionable whether the above stated technical problem has indeed been solved over the whole ambit of the claim, the board will assume, in favour of the appellant, that this is the case. [2.4] It remains to be decided whether or not the claimed solution is obvious having regard to the prior art. As mentioned above, D3 already teaches the use of additives (e.g. diopside) for better heat transfer, lower fining time and shorter melting times. Evidently, a lower fining time and a shorter melting time both tend to reduce the total loss of volatiles because said loss depends - apart from on the melt temperature - also on the total time required for melting the glass components and fining the glass batch. The person skilled in the art of glass making, confronted with the above defined technical problem, would thus have recognised that the diopside additive proposed in D3 exhibits, as an additional advantage, the effect of reducing the loss of volatiles. Diopside according to document D3 satisfies the formula of the silicate compound in claim 1 of the auxiliary request. The reduction of total loss of volatiles is a collateral effect which has been identified by the applicant. The identification of this effect however does not require any ingenuity. [2.5] Therefore, the use as defined in claim 1 in accordance with the auxiliary request does not involve an inventive step as required by A 56. The auxiliary request is therefore also not allowable. [2.6] I have always thought that the Enlarged Board of Appeal had a bad day when it issued decisions G 2/88 and G 6/88, but now that we have them, why not make use of them? To read the whole decision, click here.
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T 1180/07 – Hasty Generalisation
K’s Law – The ebook
T 1180/07 – Hasty Generalisation 2 Feb 2010
The opposed patent concerns a venting device for a crank case. Claim 1 as granted reads: A venting device for a crankcase of an internal combustion engine with a centrifugal oil separator (1) comprising a mixture inlet (13) for an air-oil mixture and an air outlet (12) for clean air as well as an oil outlet (14) for oil, and said centrifugal oil separator being designed as a plate separator (1) having a stator (2) in the form of a housing (7) into which a rotor (3) comprising several plates (9) is placed which are located along the rotor axis (19) parallel to each other and coaxial to the rotor axis (19) whereby a gap (10) is formed between each two neighbouring plates (9), said gap joining an annular space (11) formed inside the rotor (3) with a space (8) which surrounds the rotor (3) inside the housing (7), whereby the annular space (11) of rotor (3) is joined to a first connection (12), and the space (8) of housing (7) to a second connection (13) as well as a third connection (14) which serves as the oil outlet, characterised in that the first connection (12) serves as the air outlet and the second connection (13) serves as the air inlet.
Claim 1 of the main request differs from Claim 1 as granted by the addition : “wherein each plate (9) essentially has the form of a truncated cone shell that narrows with increasing axial distance with respect to one of the front sides of the centrifugal oil separator (1) which is parallel to the rotor axis (19) or inclined with respect to this axis and which comprises a mixture inlet.” [1.1] This amendment is partially based on claim 6 of the application as filed. According to this claim, “each plate essentially has the form of a truncated cone shell.” However, the arrangement of the plates is not defined in claim 6. [1.2] The orientation (Ausrichtung) of the plates as defined in claim 1 is disclosed only in the venting device according to figure 1 of the application. This is not disputed by any of the parties. [1.3] Figure 1 is the only figure of the application and corresponds to “preferred embodiments” of the invention which “are discussed in more detail in the following description.” The description also mentions other embodiments but there is no disclosure whatsoever of the arrangement (Anordnung) of Figure 1 with a different orientation of the plates. Rather the skilled person sees from Figure 1 that the orientation of the plates is functionally linked to other parts of the venting device shown in the figure. Among other things, the orientation of the plates is adapted to the location of the oil outlet 14, which is situated in a lower part of the front plate opposite to the shaft sealing and the mixture inlet. The orientation and arrangement results in separation of oil from an oil/air-mixture by means of a centrifugal force radially towards the outside. Thanks to the arrangement of the oil outlet and the arrangement of the plates the separated oil does not flow into the mixture inlet nor into shaft sealing because the oil outlet is provided in a lower part of the front plate. Thus a functional link between the orientation and shape of the plates and the location and arrangement of the oil outlet is unambiguously discernable for the skilled person. [1.4] Therefore, there is no direct disclosure of the combination of features defined very generally in claim 1. The definition in Claim 1 of the orientation of the plates without the location and arrangement of the oil outlet shown in Figure 1, therefore constitutes a so-called inadmissible intermediate generalisation (see e.g. T 1408/04) with respect to the original disclosure. Therefore, the subject-matter of claim 1 extends beyond the content of the originally filed version and does not satisfy the requirements of A 123(2). [1.5] The [patent proprietor] argued that only features that are essential over the prior art are to be defined in claim 1 when the claim is amended.
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T 1180/07 – Hasty Generalisation
K’s Law – The ebook
However, the question of whether a feature is essential or not with respect to some prior art is not relevant for the assessment of a amendment with respect to A 123(2) because this provision refers to the disclosure of the application and not to the disclosure of the prior art. According to the established case law of the Boards of appeal, amendments are allowable under A 123(2) only if they are directly and unambiguously disclosed in the application (see e.g. G 11/91). [1.6] The [patent proprietor] further argued that the disclosure of Figure 1 is not to be considered as limitative. Therefore, the definition of other features from Figure 1 is not necessary. It is indeed correct that Figure 1 only shows one embodiment and that the description of the application discloses several possibilities for alternative embodiments. However, the application does not contain any disclosure of an alternative location or arrangement of say the oil outlet with respect to other components of Figure 1 to which the oil outlet is functionally linked (see e.g. T 129/08 [4.2]). [1.7] The [patent proprietor] further cited T 583/93 in support of its arguments. It follows from this decision (point 4.5 of the reasons) that for an amendment to be allowable under A 123(2) it is required that there be an “adequate basis” in the application as originally filed. This is precisely not the case for claim 1 because there is no direct and unambiguous disclosure of the combination that is defined in claim 1 (only). [1.8] The allegation of the [patent proprietor] that the plates are defined in claim 5 as granted (claim 6 of the application) is correct, but the orientation of the plates as claimed in claim 1 is not defined in claim 5 as granted. This feature is only found in Figure 1, where it is, as mentioned above, only disclosed in combination with other features. [1.9] Decisions like this one show that in mechanical applications, it is wise to have more than one embodiment depicted. It may make it easier to distinguish between structural/functional links and “accidental” combinations of features. To read the whole decision (in German), click here.
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T 1997/08 – Hearing is Not Listening
K’s Law – The ebook
T 1997/08 – Hearing is Not Listening 1 Feb 2010
In the present case an application was rejected for lack of novelty and inventive step. There was one single A 96(2) notification. The applicant responded by pointing out the essential differences with respect to the prior art. The Examining Division (ED) then rejected the application. The Board of appeal comes to the conclusion that the claimed subject-matter is both novel and inventive. It then considers the question of the right to be heard: […] The ED has recognised the meaning of the response to the notification and has accurately summarised it in its decision. The ED therefore has taken notice (zur Kenntnis genommen) of the submission of the applicant in its response to the notification. However, this does not establish that the ED has actually considered (in Erwägung gezogen) this submission in the reasons for the impugned decision. The right to be heard in legal matters ensures that the EPO is ready to take notice of and to consider the submissions of a party (T 94/84). Therefore, the right to be heard has not been granted if the deciding instance merely accepts a response to the single notification and summarises it. This principle also comprises the duty to take into consideration the response to the notification – if it manifestly concerns the reasons for the decision and could have an effect on the latter – in the reasons of the decision. Only then the right to be heard has been granted. [4.3] The Board does not find any hints in the remaining parts of the impugned decision that the ED has taken into consideration the submission in the response to the notification. The second part of the decision “Reasons for the decision” almost literally repeats the objections of the single notification. In the first paragraph “The WO document …” has been replaced by “The figure of the WO document …” and the precision “Because the applicant wants to maintain the wording without amendments and does not accept to limit the claim with respect to D1 by adding further features …” has been added. Moreover, a similar sentence has been added to the final paragraph: “Although the applicant has been invited to do so, no amended claims have been filed”. In other words, the reasons for the impugned decision essentially corresponds to a “copy and paste” of the reasons of the single notification of the ED. Such reasons, which essentially consist in repeating the notification of the ED, cannot logically speaking take into consideration the subsequent response to the notification. There is, therefore, no doubt that the submission in the response to the notification was not taken into consideration at all in the impugned decision. [4.4] Whether there have been sufficient opportunities to overcome objections and whether the decision has been reached in the lowest possible number of steps – as stated in the decision - is irrelevant here. What is decisive for granting the right to be heard is whether the ED has actually taken into consideration the submission of the applicant of which it had taken notice. There is no indication in the decision that this is the case. [4.5] Therefore, the procedural principle of the right to be heard has been violated, which is a substantial procedural violation. [4.6] A similar reasoning is found in T 763/04 [4.4] where the Board stated : “It is not sufficient to observe A 113(1) merely formally by granting the Applicant the procedural possibility for presenting comments, as this was the case here. This procedural step falls short of its legislative purpose and remains a pure formality, if there is no trace in the file that such comments were indeed read and discussed on the merits, beyond a mere acknowledgement of their existence. In summary, A 113(1) requires not merely that a party be given an opportunity to voice comments, but more importantly it requires that the deciding instance demonstrably hears and considers these comments.” To read the whole decision (in German), click here.
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T 1684/06 – Res judicata Is Indeed A Narrow Thing
K’s Law – The ebook
T 1684/06 – Res judicata Is Indeed A Narrow Thing 30 Jan 2010
The present decision deals with an appeal following the revocation of the patent by the Opposition Division. The patentee pointed out that inventive step had already been confirmed by decision T 891/98 and therefore had to be considered to be res judicata. […] Although the subject-matter of claim 1 of the contested patent is identical with the one that the board held as involving an inventive step in T 891/98, the documents and arguments on which the parties relied upon in opposition are different from those on which T 891/98 was based. The factual situation in opposition proceedings was thus different from that of the ex parte proceedings, and so the res judicata principle does not apply in the present appeal case. In any case, a former decision of a board on an appeal from an examining division has no binding effect in subsequent opposition proceedings or an appeal therefrom (T 167/93 [2.5-2.7 and 2.11.3]), because the parties are not the same. [1] The second paragraph is not a surprise; it only restates the established case law of the EPO according to which a decision of a Board of appeal following an appeal against a decision of the Examining Division cannot be considered res judicata in subsequent opposition appeal proceedings. What is more intriguing here is the first paragraph cited above. The Board appears to consider that even if there had been a first decision on inventive step (e.g. in a first decision of the Board), it would not be res judicata in favour of inventive step if the documents and arguments used subsequently (e.g. in a second appeal during the same opposition proceedings) in order to establish a lack of inventive step were not the same. If this approach is followed by the Boards, it leaves almost no space for res judicata altogether. To read the whole decision, click here.
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J 10/08 – A Successful Retraction
K’s Law – The ebook
J 10/08 – A Successful Retraction 30 Jan 2010
This case concerns an application that was withdrawn by letter dated 31 July 2007, received by the EPO on 6 August, 2007. The withdrawal was encoded on 10 August 2007. On the same day, the EPO received a fax from the representative stating: “With reference to my letter dated 31st July 2007, if that letter has not been received at the EPO, please ignore the request to withdraw the EP application … as it was sent in error.” Later on, the representative requested a correction under R 88 EPC 1973. The appeal was filed after the refusal of the EPO to revoke the withdrawal under R 139 (former R 88). The appellant admits that the Receiving Section was right to interpret the request for withdrawal of its application as unconditional and reacted correctly by entering this withdrawal in the European Patent Register (EPR) but is of the opinion, that this entry could be deleted, because the declaration was made in error. [1] The matter to be dealt with is the request of the appellant to retract this withdrawal under R 139 because it was, according to the appellant, made erroneously. This Rule allows correction of errors in documents filed with the EPO, these errors being defined as linguistic errors, errors of transcription and mistakes. [2] In the case under consideration the document filed with the EPO did not show any kind of such an error. The error was not of a factual kind but of a mental one. Therefore it has to be examined, whether the correction of such an error can also be subsumed under R 139. [3] The Boards of Appeal have dealt with this question in a great number of decisions. One of those decisions on the question of a possible retraction of a procedural declaration is J 10/87 with reference to earlier decisions. In this decision the Board developed the preconditions under which a correction of a procedural declaration may be allowed, namely that the public had not been officially notified of the withdrawal by the EPO, that the erroneous withdrawal was due to an excusable oversight, that the requested correction would not delay the proceedings substantially and that the interests of third parties who might have taken note of the withdrawal by inspection of the file were adequately protected. Under point 8 of the reasons of that decision the Board already stated that the cited case law was sound, because the public interest must rank higher than the interest of a patent applicant wanting his erroneous statement already notified to the public to be ignored. In these cases, legal certainty had to prevail. [4] These considerations have been confirmed by several other decisions during the following years up to the present (e.g. J 4/97, J 12/03, J 25/03, J 14/04, J 7/06, J 8/06). From all these decisions it is clear that a withdrawal of a European patent application can only be retracted as long as the public has not been officially informed about the withdrawal. [5] The Board can accept that it was not the intention of the appellant in the present case to withdraw the application but that this was due to a misunderstanding between the various representatives of the appellant dealing with the case. There would also be no particular delay of the proceedings if such a correction would be allowed. [6] […] The particularity of the present case might be seen in the fact that the letter, containing the request for “ignoring” (i.e. implicitly retracting) the former letter containing the withdrawal of the European patent application was considered by the Receiving Section as having arrived at the Office on the day of the official publication of the withdrawal. [8] With respect to the importance of the exact dates which are decisive for the allowability or non-allowability of the retraction the Board has requested an investigation concerning the entry of the withdrawal into the EPR and its public availability. The result can be summarised as follows: The letter of withdrawal dated 31 July 2007 was received by the Office on 6 August 2007. On 8 August 2007 this letter was dealt with by an EPO official and encoded on 10 August 2007 as “legal status”. The procedure of encoding is not to be understood as synonymous with the valid public access to the corresponding data in the EPR. There are two further steps necessary (adding the data to different internal databases) which generally takes 1 to 3 days. As in the present case the encoding took place on a Friday (10 August 2007), it cannot be established by the EPO that the information was made available to the public, i.e. that the public was officially notified of the withdrawal before Monday, 13 August 2007. [9] 3177 | 3398
J 10/08 – A Successful Retraction
K’s Law – The ebook
The letter dated 10 August 2007, containing the request for retraction of the withdrawal was received by the EPO by fax on the same day. [10] From the above it follows that the letter containing the request for retraction of the withdrawal was received before the date on which it can be established that the public was officially informed about the withdrawal. [11] In line with decision J 25/03 it has also to be considered if the public, even after file inspection would have had reason to suspect, that the withdrawal could be erroneous and later retracted or not. In the course of the investigations made it turned out that the content of the letter dated 10 August 2007 was also accessible via the Register Plus facilities by inspection of the file documents on 13 August 2007. Consequently the public would have had the information about the withdrawal and the request for its retraction at the same time and would therefore have been sufficiently warned that there possibly was something wrong with it. [12] Under these circumstances the Board is satisfied that the public would not have been misinformed or misled by the information published in the EPR. [13] The Board therefore concludes that the withdrawal of the application may be retracted in the present case by correction under R 139. [14] Just one minor remark: From the point of view of third parties, there is not much to be said against allowing the retraction as it arrived in time and nobody was misled. This being said, it could be argued that R 139 is not an appropriate remedy as the request for withdrawal might not qualify as an error. It was indeed the true intention of the professional representative to withdraw the application. (In the present case the error was made by the U.S. attorney of the applicant who inadvertently mixed up two distinct applications.) However, J 8/80 [4] stated that “for the purposes of R 88 a mistake may be said to exist in a document filed with the EPO if the document does not express the true intention of the person on whose behalf it was filed” (i.e. the applicant). (see also J 6/91 [2.2]) So what counts is not the true intention of the professional representative but the true intention of the applicant. To read the whole decision, click here.
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T 1208/06 – Role Of The Inventor In Oral Proceedings
K’s Law – The ebook
T 1208/06 – Role Of The Inventor In Oral Proceedings 29 Jan 2010
Oral submissions by persons accompanying the patentee or its representative are possible but subjected to the strict requirements laid down by decision G 4/95. In T 621/98 [2], it was held that the patent proprietor is a party to the proceedings and as such is not to be treated as an accompanying person. G 4/95 did not apply because it distinguished the parties from accompanying persons. Therefore, the patent proprietor, even if professionally represented, does not have to announce in advance his intention to make submissions during OPs. The present decision shows that this reasoning is not applicable to inventors who are not proprietors of the patent at issue. […] According to the appellant, the inventor, Mr Irnich, is to be considered both as a party to the proceedings and as an authorised representative before the EPA. Therefore, the Opposition Division (OD) would have had to hear the technical explanations of Mr Irnich and should not have considered him to be an unannounced accompanying person. [2] The Board points out that these two qualities are irreconcilable. Pursuant to A 99(3), opponents are parties to the opposition proceedings as well as the proprietor of the patent. This limitative enumeration does not comprise the inventor. As a consequence, the inventor is not a party to the proceedings. The reason for this fact is that it is incumbent on the proprietor of the patent to defend its patent either itself or via a professional representative. If – as in decision T 621/98 cited by the appellant – the proprietor of the patent is the same person as the inventor (see T 621/98 [1-2]), then he is a party to the proceedings and has the right to give his view on different issues. By contrast, in the present case the inventor, Mr Irnich, is not the same person as the proprietor of the patent, i.e. “Z&J Technologies GmbH”. Therefore the situation underlying T 621/98 does not apply to the present case. [2.1] According to the documents on file, the representative of the patent proprietor had not announced Mr Irnich as accompanying person for the oral proceedings (OPs) before the OD, nor had Mr Irnich been identified as authorised representative, by filing a power of attorney (Prokura), before or during the OPs. Contrary to the opinion of the patent proprietor, the obligation of the EPO to examine of its own motion (Amtsermittlungsgrundsatz) does not include the obligation to find out whether or not an accompanying person, e.g. a proxy of a company, is authorised to represent a party. Rather it is incumbent on the party to take the initiative to inform the OD or the Board on such circumstances before the OPs, by submitting such a power of attorney. This had not been done in the present case for Mr. Irnich. Moreover, it appears from the minutes that the opponent had objected to the proprietor's request to hear technical submissions from the inventor. [2.2] In these circumstances, and applying the criteria of G 4/95, the OD has acted correctly by categorising the inventor as an “accompanying person” and not as a party to the proceedings within the meaning of A 99(3) and by rejecting the proprietor's request. The allegation of the appellant that the right to be heard pursuant A 113(2) had been violated by the OD is not justified. [2.2] To read the whole decision (in German), click here.
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T 570/07 – How to Respond to Overkill
K’s Law – The ebook
T 570/07 – How to Respond to Overkill 29 Jan 2010
In this case the application was refused on several grounds: lack of clarity, inadmissible extension, and lack of inventive step. The applicant filed an appeal. The notice of appeal only dealt with the ‘main objection’ (inventive step) and declared that thereby the clarification problems and the A 123 problem were resolved. […] The appeal complies with A 106 and 107 and also with A 108, first and second sentence, and R 64 EPC 1973. Its admissibility therefore depends solely on whether the appellant’s statement of grounds of appeal is a statement setting out the grounds of appeal within the meaning of A 108, third sentence, EPC 1973. [2.2] It is established case law that the grounds of appeal must specify the legal or factual reasons why the impugned decision should be set aside. The arguments must be clearly and concisely presented to enable the board (and the other party or parties) to understand immediately why the decision is alleged to be incorrect, and on what facts the appellant bases its arguments, without first having to make investigations of their own. [2.3] Moreover it is also established case law that grounds sufficient for the admissibility of an appeal must be analysed in detail vis-à-vis the main reasons given for the contested decision (see T 213/85; T 169/89; T 45/92). It is not a matter of whether the arguments put forward are actually effective, but rather that these arguments may in principle be considered to upset the reasons for the contested decision. [2.4] In the present case, [there are] three points at issue, namely lack of clarity (A 84), added subject-matter (A 123(2)) and lack of inventive step. [2.5] In the statement of grounds of appeal the appellant alleges in substance that the examining division was incorrect because of a mistake in the interpretation of documents D2 and D3. These documents did not relate to an adaptive projection filtering scheme as specified in claim 1. Therefore the argumentation given in the decision under appeal as to why the method of claim 1 did not involve an inventive step was in the appellant’s opinion incorrect. [2.6] Hence, as far as the admissibility of the present appeal is concerned, the only question at issue is whether the statement of grounds of appeal contains a sufficient reasoning as to why the decision under appeal should be set aside with regard to the two other legal reasons for refusal, namely lack of clarity and added subject-matter, to thereby fulfil the requirements of A 108, third sentence. [2.7] With respect to the first of these other legal reasons for refusal, namely lack of clarity, the “clarification of the difference between projection data and image data” given in the statement of grounds of appeal has, in the board’s view, no connection with the clarity problems discussed in the [decision refusing the application]. [2.7.1] With respect to added subject-matter, the clarification submitted by the appellant has, in the board’s view, no connection with the objection raised in [decision refusing the application]. [2.7.2] The appellant’s argument that the main objection related to inventive step has no basis in the facts of the case. In the present case the third reason for refusal (lack of inventive step) is not a single main reason on which the other two depend. Instead any one of the three reasons individually constituted a reason for the refusal of the application. For instance, the reason based on A 123(2) related to an allegedly undisclosed generalisation. Even if the appellant’s assessment that the claimed subject-matter involved an inventive step (in the whole scope of the claim) was correct, an infringement of A 123(2) caused by an undisclosed generalisation nevertheless would result in the application having to be refused. Also in this case the board’s opinion on the issue of inventive step would be without any effect on the other issues. Thus in the present case the main reasons given for the contested decision are not analysed in detail in the statement of grounds of appeal. [2.8] Consequently the appellant effectively leaves it to the board to ascertain any facts substantiating the appellant’s assertion that the decision under appeal was incorrect also in respect of the first and second reasons for refusing the application. This in effect amounts to a request that the patentability of the subject-matter denied by the 3180 | 3398
T 570/07 – How to Respond to Overkill
K’s Law – The ebook
department of first instance be reconsidered without giving any reasons as to why the decision of the first instance should be set aside as far as the first and second reasons for refusing the application are concerned. The appeal is thus not substantiated. [2.9] For these reasons it is decided that the appeal is rejected as inadmissible. Recent decision T 844/05 comes to the same conclusion in a situation where an application was refused on the grounds of lack of novelty and inventive step as well as unallowable amendments and where the appellant’s statement of grounds of appeal only contained arguments in respect of A 123(2). To read the whole decision, click here.
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T 323/08 – No Fallback On Ghost Alternatives
K’s Law – The ebook
T 323/08 – No Fallback On Ghost Alternatives 28 Jan 2010
This is one more case where the EPO found an amendment to be an inadmissible intermediate generalisation. The patentee had convinced the Opposition Division (OD) that the claim as amended corresponded to an implicit alternative. The Board won’t have it that way. Claim 1 of the main request read: Device (Vorrichtung) to convey work pieces, particularly suspended, plate-shaped work pieces like metal sheets or plates with at least a conveyor belt (1) revolving around a retaining device (Haltevorrichtung) (3) for conveyance of work pieces (W) adhering thereto, wherein for retaining the work pieces on the conveyor belt (1) a controllable or regulatable installation (Einrichtung) (6) for generation of negative pressure is provided, in which an opening plane (22) described by suction ports (7) is recessed from the retaining device (3) at a distance (A) vis-à-vis a conveyor plane (F) created by the exterior side of the conveyor belt (1) so that a gap (Z) is formed between a work piece (W) adhering to the conveyor belt (1) and the opening plane (22) and the work piece (W) is held on the conveyor belt (1) by a negative pressure which is created in the gap (Z), characterised In that an installation (Einrichtung) (8, 23, 25, 26, 29, 30, 32) for ventilating the gap (Z) is provided on the side of the device (vorrichtungsseitig) so that the work piece is maintained on the conveyor belt (1) by dynamic negative pressure which is created.
[…] Claim 1 of the main request differs from Claim 1 as granted in that the expression “on the side of the device” has been added. [1.1] […] The OD considered that the amendment of claim 1 was limitative and that it fulfilled the requirement of A 123(2). It has acted on the assumption that the amendment was implicitly contained in the description of the opposed patent which states (column 3, lines 11 to 13): “In some cases the installation for ventilating the gap can also be provided on the side of the work piece (werkstückseitig). [3.1] […] According to a first line of argumentation, the assessment of the amendment in view of A 123(2) has to take into account that claim 1 as granted defines that a installation for ventilating the gap (hereafter : the ventilating installation) is provided. This definition does not contain any limitation whatsoever concerning the disposition of the ventilating installation. Therefore, when interpreting claim 1 as granted it has to be assumed that the general feature according to which a ventilating installation is provided encompasses both possibilities mentioned in the opposed patent, i.e. that the ventilating installation is provided on the side of the device or on the side of the work piece. Thus the amendment only leads to an admissible limitation of claim 1 as granted to one of the two implicit (mitzulesend) possibilities, which is not open to criticism in view of the requirement of A 123(2). [3.2.1] According to a second line of argumentation, the addition of the expression “on the side of the device” limits the device according to claim 1 to one of the two possibilities disclosed in the description of the original application with respect to the ventilating installation. Both possibilities, i.e. a providing the ventilating installation on the side of the work piece and on the side of the device are clearly and unambiguously disclosed in the description of the application. Therefore, a limitation to one of them is admissible. [3.2] According to the [opponent] the amendment of claim 1 corresponds to an inadmissible extension because the description of the original application only contains embodiments wherein the ventilating installation is provided 3182 | 3398
T 323/08 – No Fallback On Ghost Alternatives
K’s Law – The ebook
on the side of the device. In contrast, the amendment, which only refers to providing the ventilating installation on the side of the device but not to forming and providing the ventilating installation according to the embodiments of the description, is an inadmissible intermediate generalisation that is not based on the description. As a matter of fact, the amendment leads to a situation where the teaching of claim 1 also comprises embodiments of ventilating installations which had not been disclosed in the original application. [3.3] The Board agrees with the [patentee] in that, as correctly stated in the impugned decision, the amendment leads to a limitation of the claim as granted. Therefore, the requirement of A 123(3) is fulfilled. [3.4] However, the Board does not consider the explanations of the [patentee] with regard to the requirement of A 123(2) to be correct. […] As far as the amendment of claim 1 is concerned, it is undisputed that the expression “on the side of the device” […] is not explicitly disclosed in the application on which the opposed patent is based. [3.5] In contrast to the first line of argumentation of the [patentee] the Board is of the opinion that it is not correct, in view of the interpretation of claim 1 as granted, that this claim 1 is to be interpreted such that it comprises two general possibilities concerning the provision of a ventilating installation, i.e. on the side of the device and on the side of the work piece. It is true that claim 1 as granted does not define how the ventilating installation is to be provided. If, arguendo, the argumentation of the [patentee] is followed and the description of the opposed patent is adduced for interpreting claim 1, then for evaluating the way in which the ventilating installation is provided the part of the description invoked by the patentee (page 4, lines 18 to 29 of the application […]) has to be taken into account, and not a different, more general version that is only based on this part. [3.5.1] In this part of the description a skilled reader could recognize a separation between providing the ventilating installation on the side of the device and providing it on the side of the work piece. On the one hand the description states: “Preferentially the ventilating installation has ventilation openings that are regularly arranged on the side of the holding device facing the work pieces, so that there is an essentially uniform dynamic negative pressure over the complete length of the gap. However, it is also possible to ventilate the gap e.g. by providing grooves perpendicular to the conveying direction in the conveyor belt.” On the other hand: “In some cases the ventilating installation can also be provided on the side of the work piece, for instance when the work piece has openings (Durchbrüche) of suitable size or a suitably rough surface.” [3.5.2] Based on the first part of the description, one has to take into account, as far as the way of providing the ventilating installation is concerned, that if the ventilating installation is provided on the side of the device, the following arrangements are to be taken into account: either the ventilating installation has ventilation openings that are regularly arranged on the side of the holding device facing the work pieces, or the ventilating installation is very different and grooves have to be provided in the conveyor belt perpendicular to the conveying direction. As these arrangements are merely two very different embodiments of ventilating installations provided on the side of the device, only these embodiments can be considered, to the extent of the factual disclosure, when claim 1 is interpreted. In view of providing the ventilating installation on the side of the device, only the above mentioned concretely disclosed possibilities (regularly arranged ventilation openings or grooves provided in the conveyor belt perpendicular to the conveying direction) can be taken into account. In contrast, the opinion of the [patentee] appears to be based, incorrectly, not on the factual content of the disclosure of the part of the description under consideration but on a generalisation of the content of the disclosure of this part of the description that encompasses also other possibilities than the both concrete embodiments. [3.5.3] Therefore, contrary to the opinion of the [patentee], claim 1 as granted cannot be interpreted in such a way that it comprises, as far as the way of providing the ventilating installation is concerned, both general possibilities “on the side of the device” and “on the side of the work piece”.
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K’s Law – The ebook
Consequently, the admissibility of the amendment of the claim cannot be derived from it being only the deletion of one of two possibilities contained in claim 1 as granted. [3.5.4] […] As the parts of the description and figures invoked by the [patentee] for justifying the admissibility of the amendment of the claim do not allow to generalise beyond the possibilities that have been concretely disclosed through embodiments, as there is no indication whatsoever [for such a generalisation], these parts of the description and figures cannot, as such, lead to the amended claim 1 of the main request being based on an admissible amendment, as suggested by the second line of argumentation of the [patentee]. [3.5.6] […] Thus claim 1 of the main request contravenes the requirements of A 123(2). [3.5.8] To read the whole decision (in German), click here.
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T 611/07 – Lost In Translation ? Not Really.
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T 611/07 – Lost In Translation ? Not Really. 28 Jan 2010
[…] The Respondent argued firstly that document D11a could not be regarded as the closest prior art, since it could not be regarded as a document, as it was merely the English translation of 23 from a total of 167 paragraphs of the Japanese document D11. It was important to consider the whole content of a document when assessing its true disclosure, this not being possible in the present case, as large portions of the original document D11 were missing. The remaining disclosure of this document was thus not available, since document D11 was in Japanese, Japanese not being an official language of the EPO. However, the Board holds that there are no reasons to doubt the validity of what is actually disclosed in D11a, the Respondent not having provided any arguments in this respect. The mere fact that only a part of a document is available does not, in itself, throw doubts on the disclosure of said part of the document. Thus, although document D11 contains additional information to that disclosed in document D11a, this fact does not in any way depreciate the actual disclosure of document D11a, more particularly that of claims 1, 5 and 6 together with the definition of the water-insoluble powder in paragraph [0074]. The Board thus holds that document D11, to the extent of its translation into English in the form of document D11a, is to be considered as forming part of the state of the art for the purposes of A 56. [4.2.1] NB: I owe the knowledge of this decision to a recent post on Le blog du droit européen des brevets. To read the whole decision, just click here.
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T 323/07 – No Tidying Up in Post-Grant Amendments
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T 323/07 – No Tidying Up in Post-Grant Amendments 27 Jan 2010
The present decision reaffirms what the Boards had already made clear under the EPC 1973: amendments in opposition proceedings must be occasioned by a ground for opposition. [...] The sixth auxiliary request consists of six claims, whereby Claim 1 corresponds to Claim 5 as granted. Claims 3 and 4 are new dependent claims. [5.1] Claim 4 refers - inter alia - back to Claim 3 and thus encompasses a manufacturing method specifying the production of a (meth)acrylic acid homopolymer and requiring the method to comply with both conditions (1) and (2) set out in Claim 1 of the sixth auxiliary request. As pointed out by [one of the opponents] at the oral proceedings before the board, there is no basis in the application as filed for this combination of features. It may well be that, as argued by the appellant, each individual feature has a basis in the application as filed, namely in the passages on page 16 of the application as filed […] and in Claim 5 as granted and Claim 5 as originally filed, respectively, […]. However, the content of the application as originally filed must not be treated as something in the nature of a reservoir from which it would be permissible to combine different individual features pertaining to preferred embodiments in order to create artificially a particular new embodiment, unless the application as originally filed itself suggests such a combination of features. In the present case, however, the combination of features as now claimed in Claim 4 is neither explicitly nor implicitly suggested by the application as originally filed. Therefore, Claim 4 of the sixth auxiliary request contravenes A 123(2). Consequently, for this reason alone, the sixth auxiliary request has to be refused. [5.2] Furthermore, it is conspicuous to the board that dependent claims 3 and 4 have no counterpart in the claims as granted. R 80 states that “Without prejudice to R 138, the description, claims and drawings may be amended, provided that the amendments are occasioned by a ground for opposition under A 100, even if that ground has not been invoked by the opponent.” It is in principle not conceivable which ground of opposition could be overcome by filing new dependent claims. The purpose of R 80 is certainly not to tidy up the claims in order to improve the proprietor’s position in contingent national proceedings. Hence, Claims 3 and 4 of the sixth auxiliary request contravene R 80, which constitutes another reason why the sixth auxiliary request has to be refused. [5.3] To read the whole decision, click here.
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A Farewell To Arm...and
A Farewell To Arm...and 27 Jan 2010
You might have noticed that Armand Grinstajn is not blogmaster of this blog any more. This change is due to the fact that I have finally received the clearance to use my real name when blogging. There is no more need for a pseudonym. I have never considered pseudonymity to be problematic, but some readers have raised concerns and did not feel comfortable with a pseudonymous blog, for reasons which I do not find persuasive but which I respect. I hope Armand’s departure will relieve them. So long, Armand !
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J 5/07 – Not All Reactions Are Valid Responses
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J 5/07 – Not All Reactions Are Valid Responses 26 Jan 2010
By communication of the Examining Division (ED) dated 16 March 2005 the appellant was invited to file observations according to A 96(2) EPC 1973 within a period of 4 months. No observations were received by the EPO by 26 July 2005. On 5 August 2005, the appellant requested further processing of the application and paid the prescribed fee, but did not file any observations in response to the ED’s communication. By a letter dated 13 September 2005 the appellant was informed that the application was deemed to be withdrawn under A 96(3). By decision dated 29 December 2005 the request for further processing was rejected for the reason that the omitted act was not completed in due time. The appellant filed an appeal against this decision on 7 March 2006 and paid the appeal fee simultaneously. The appellant argued essentially that he had filed a divisional application based on the present application. The decision under appeal correctly refused the appellants request for further processing under A 121 on the ground that the omitted act was not completed in due time. [2] The omitted act was the failure to submit observations in reply to the communication of the ED dated 16 March 2005 within the time limit of four months as fixed therein according to A 96(2) EPC 1973 being then in force. [2.1] The expiry of this four months time limit on 27 July 2005 without any reply led to the application being deemed to be withdrawn according to A 94(3). Such a deemed withdrawal shall be retracted under A 121 if the applicant requests further processing of the application within two months of the date on which either the decision to refuse the application or the communication that the application is deemed to be withdrawn (in the present case, the communication noting the loss of rights dated 13 September 2005) is notified, the further processing fee is paid, the omitted act is completed within this two months time limit (A 121(2)) and a positive decision of the ED on the request is issued according to A 121(3). [2.2] The Board sees no reason to doubt that the filing of a divisional application was a reaction of the appellant to the ED’s objections to the claims of the present application made in its communication dated 16 March 2005. This does not mean, however, that the filing of a divisional application could be regarded as a response to the said communication within the meaning of A 96(2). [2.3] A divisional application is legally and administratively separate and independent from the grant proceedings concerning the parent application (see G 1/05 [3.1 and 8.1]; T 441/92 [4.1]). The filing of a divisional application leaves the text of the patent application objected to unamended. Therefore, from these considerations no logical or legal basis can be found for treating actions made in a grant procedure for one application (the divisional) as amounting to the procedural step needed to make up for a failure to comply with a time limit to be observed in entirely separate grant proceedings (the parent). [2.4] According to the appellant’s submissions during oral proceedings the divisional application as filed was identical to the parent application, it was, however, intended to narrow the claims during the further divisional proceedings. However, as the divisional application was identical to the present parent application, no one could have had any reason to assume that this divisional application was intended to be a reply to the communication dated 16 March 2005 in the present parent application. [2.5] […] Hence implying that the action of filing a divisional application was sufficient, in the present case, to meet the further processing requirements, as suggested by the appellant, would have been in breach of A 121(2) second sentence, a provision not leaving the requirements to be met in the discretionary power of the department competent to decide on the omitted act (A 121(3)). [2.7] To read the whole decision, click here.
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T 1053/06 – Cheekiness At Its Best
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T 1053/06 – Cheekiness At Its Best 25 Jan 2010
This decision deals with an appeal against the refusal of an application for lack of inventive step. In a reply [to the Board’s provisional opinion] the appellant announced that it would not pay the renewal fee under R 51(2) which would be due in May 2008. It also announced it would not attend the scheduled oral proceedings (OPs). Furthermore it was requested that, in order to avoid unnecessary time and effort in preparing for the OPs these be rescheduled to a date after expiration of the six months surcharge period after which the application would be deemed to be withdrawn. The appellant also requested that this letter should not be included in the part of the file open to public inspection. [VI] […] As regards the appellant’s request to postpone the OPs, a change of date for OPs “may exceptionally be allowed in the Board’s discretion following receipt of a written reasoned request” (see Article 15(1) RPBA). It appears from the use of the word “exceptionally” that the reason or reasons given for a postponement must be out of the ordinary and must outweigh any other considerations the board may take into account. In the present case the reasons given clearly indicated that the appellant had chosen not to pursue this case further and would prefer its patent application to be lost for non-payment of the next renewal fee at a later date rather than by an adverse decision of the board now. Those reasons are directed entirely to the convenience of the appellant which, until it received the board’s negative preliminary opinion, had preferred to pursue the appeal proceedings and had indeed itself requested OPs. [2] Against those reasons the board must consider the interests of the public and of justice. It would clearly not be in the interest of efficient administration of appeals for the board to allow parties to decide whether or not OPs they have requested should in fact be held and if so when. Further, in cases such as the present when it would be too late to give another party or parties the requisite two months notice of OPs for the date appointed in this case, a postponement would unfairly prejudice by delay other appeals pending before the board. Perhaps most importantly, it would be unfair on the public for the board, without receiving any reasons from an appellant applicant, to extend the life of a patent application which it considers likely to fail beyond the date on which the public has, until now, expected a final decision. Accordingly, the board considered the request for postponement had to be refused. [3] The appellant’s further request to exclude its request for postponement from the public part of the file was also not allowable. Under A 128(4) there is a general right to inspection of the file of any published European patent application or patent subject only to restrictions laid down in the Implementing Regulations. Those restrictions are to be found in R 144 and are limited to: (a) the documents relating to the exclusion of or objections to members of the Boards of Appeal or of the Enlarged Board of Appeal; (b) draft decisions and notices, and all other documents, used for the preparation of decisions and notices, which are not communicated to the parties; (c) the designation of the inventor, if he has waived his right to be mentioned under R 20(1); (d) any other document excluded from inspection by the President of the European Patent Office on the ground that such inspection would not serve the purpose of informing the public about the European patent application or the European patent. None of (a),(b) or (c) can apply in the present case and, as regards (d), the appellant has not relied on any exclusion by the President. Since OPs before the boards of appeal are public and the summonses thereto and the dates thereof are public information, it would appear highly unlikely that any documents relating to the appointment or postponement of such proceedings could be the subject of such an exclusion since such documents, for example the appellant’s request for postponement, necessarily serve the purpose of informing the public about the European patent or patent application in question. [4] Some
have
a
lot
To read the whole decision, click here.
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of
nerve.
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T 212/07 - It's Pay Time, Folks
T 212/07 - It's Pay Time, Folks 25 Jan 2010
This decision deals with a classical case of apportionment of costs. It is noteworthy, however, because the Board directly fixed the amounts to be paid by the party whose fault made the other party incur additional costs. […] The Board has power under A 104(1) to make an order for a different apportionment of costs “for reasons of equity”. As to such reasons, the case law of the Boards of Appeal establishes that a party who receives a summons to oral proceedings (OPs) has an equitable obligation either to appear at the OPs at the specified time and place, or to notify the Board as soon as it knows that it is not going to appear at such OPs. See T 930/92 [6.1]. The Board has no direct evidence about when the Appellant decided, and thus knew, that it was not going to attend the OPs. Although the Respondent has asserted that the Appellant never had any intention of attending the OPs there is no evidence for this. All that the Board knows from the Appellant is that the reason it decided not to attend the hearing was the high cost involved. As to this, however, the Board accepts the Respondent’s submission that the costs of attending had not suddenly escalated shortly before the date of the OPs and that the Appellant would have been aware of the costs involved when originally making a request for OPs in the grounds of appeal. More to the point, the Appellant would have been aware of the costs when it received the summons in February 2009. The summons would also have focussed the Appellant’s mind on the forthcoming hearing and caused it to consider its position. As already pointed out, the summons was accompanied by a communication which was generally negative as regards the Appellant’s prospects of success. The Appellant never filed any substantive response to the communication (of course, it was not obliged to), the only response being the letter dated 8 May 2009 saying that it would not be attending the OPs. Given this background, and in the absence of any other evidence or response from the Appellant on this issue, the Board considers that it is a reasonable inference to draw, on the balance of probabilities, that the Appellant had decided by about the end of March at the latest (i.e. giving the Appellant the benefit of a period of about one month to digest the contents of the communication) that it was not worth its while to incur the expense of coming to the OPs. It follows that the Appellant failed in its duty to inform the Office and the Respondent as soon as it knew it was not going to attend. The Board therefore considers it right for reasons of equity to make a different apportionment of costs. [6.2] The Board also has power to make an order which fixes the amount of costs to be paid. See T 934/91 and T 323/89 and R 88, which governs the present case. The Board proposes to exercise such power. [6.3] As to this, the order for apportionment of costs should be such as to compensate the other party for the unnecessary, i.e. wasted costs which it has incurred as the direct result of the Appellant’s failure in its duty. See T 952/00 [5]. In the Board’s view the incurring of such costs should also be a foreseeable result of such failure, and the costs should be reasonable. [6.4] If in the present case the Appellant had informed the Office and the Respondent at the end of March or in early April that it did not intend to be present at the OPs, then on the balance of probabilities the Board would have cancelled the date soon after being told this, just at it did when the Board received the Appellant’s fax on 8 May 2009. This was because nothing had happened to change the Board’s initial negative view of the appeal and the Board was in a position to issue a decision dismissing the appeal without hearing the Respondent further in OPs. The Respondent had only requested OPs against the event that the Board did not intend to dismiss the appeal. Had the Board cancelled the date set for OPs sometime in April, then none of the costs which the Respondent now claims would have been incurred. It follows that all these costs were wasted as the direct result of the Appellant’s failure. [6.5] As regards the Respondent’s costs of air travel and hotel accommodation for its representative, the nature of these expenses and the amounts appear perfectly reasonable. It was also foreseeable that such costs would be incurred when they were in fact incurred. The Board therefore intends to make an order in respect of the sums claimed, i.e. € 306 in respect of air fares (€ 325.79 less € 19.79) and € 100 in respect of hotel accommodation, making € 406 in total. [6.6] As to the costs of preparing for the OPs, the Board accepts that a representative will properly spend time preparing himself for OPs immediately before they take place, the cost of doing so being properly chargeable to 3190 | 3398
K’s Law – The ebook
T 212/07 - It's Pay Time, Folks
his client. Although this preparation will often take place a day or so before the proceedings, in the present case this work was done the previous week. Nevertheless the Board accepts the Respondent’s representative’s explanation for this as being perfectly reasonable in the circumstances. The Board also considers that it was foreseeable that the Respondent’s representative might prepare for the OPs a week or so in advance. Finally, the Board has no grounds for saying that the amount claimed is not reasonable. The Board therefore intends to make an order in the amount claimed also, i.e. GBP 1280. [6.7] To read the whole decision, click here.
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T 1009/05 – Reformatio Paulo In Peius (*)
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T 1009/05 – Reformatio Paulo In Peius (*) 23 Jan 2010
In this case, the patent was maintained in amended form by the Opposition Division (OD). Only the opponent filed an appeal. During the oral proceedings (OPs) before the Board of Appeal, the patentee amended claim 1 as follows (with respect to the claim as maintained by the OD): (click to enlarge)
[According to the opponent, the] amendments changed the meaning of the expression in claim 1 “received electronic mail” from that according to granted claim 1. Claim 1 upon which the interlocutory decision was based did not comply with A 123(3) because it covered cases where no transmission error had occurred. Hence admitting the main and first auxiliary requests would be contrary to the principle of a prohibition of reformatio in peius, this principle requiring the respondent to defend the patent in the form in which it was maintained. If the expression “received electronic mail” were understood as that received internally by the e-mail computer from the LAN controller then every mail would fail before it left the electronic mail apparatus, since every received e-mail would be classed as a transmission failure. If however the expression “received electronic mail” were understood as being an electronic mail received by the e-mail computer from the e-mail network then the question arose as to whether a transmission failure had occurred at all; the expression “received electronic mail” had to have a consistent meaning throughout claim 1. [XVIII] […] As to the question of reformatio in peius, in the present case, in which only the opponent appealed against the interlocutory decision by the OD, the prohibition of reformatio in peius (see G 9/92 and G 4/93) means that the patentee is primarily restricted in appeal proceedings to defending the patent in the form in which it was maintained by the OD. Hence the patentee would be prevented from returning to the granted claims. In the present case the board takes the view that the amendments according to the main and first auxiliary requests take the claims forming the basis of the interlocutory decision as a starting point and are aimed at overcoming objections raised in the appellant’s letter and in the debate at the OPs. Thus the amendments are seen as appropriate and necessary to defend the result obtained before the OD. Consequently the board decided to admit the main and first auxiliary requests into the proceedings. [2] The claims finally fell for lack of clarity; the patent was revoked.
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T 1009/05 – Reformatio Paulo In Peius (*)
K’s Law – The ebook
I find the reasoning of the Board somewhat ‘light’. Perhaps the Board quickly saw the lack of clarity and did not want to spend time on the A 123 issue. If the opponent was right and the amendment constituted an improvement of the patentee’s position with respect to claim 1 as maintained by the OD, then the reasoning of G 1/99 should have been applied. To read the whole decision, click here. (*) “Reformation/change to the - a little bit - worse”
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R 5/08 – On the Role of Requests in Petitions for Review
K’s Law – The e
R 5/08 – On the Role of Requests in Petitions for Review 23 Jan 2010
The petition as filed identified two of the grounds for petition mentioned in A ll2a(2) and R 104, namely a fundamental violation of A 113 EPC and deciding on an appeal without deciding on a request relevant to that decision (A ll2a(2)(c) and (d) respectively). The Enlarged Board’s communication of 26 August 2008 indicated that it considered the latter ground unallowable since it appeared that all relevant requests had in fact been considered. […] The petitioner confirmed in its letter of 5 January 2009 that it did not rely on that ground. However, it remains the fact that on any view the petition identified one of the specified grounds for petition, namely that in A ll2a(2)(c). [5] The respondent argued the petition was inadmissible for another formal reason, namely that the requests in the petition were not pursued but were replaced by other requests presented at the oral proceedings on 1 October 2008 and that, being more than two months after the notification of the decisions complained of, a new and different petition was filed which was invalid because out of time. The Enlarged Board does not accept that argument and agrees with the petitioner that R 107 (which specifies the necessary contents of a petition) does not specifically require requests. The only requirement which can be derived from the wording of R 107(2) is that the petition must make clear that the petitioner wants the decision of the Board of Appeal to be set aside. In the present case that request was expressly made in the petition. [6] The relief which the Enlarged Board can grant if a petition is allowed is in any event specified precisely by the legislation: A 112a(5) and R 108(3) provide that, if a petition is allowable, the Enlarged Board shall set aside the impugned decision and “reopen” (A ll2a(5)) or “order the re-opening” (R 108(3)) of the proceedings before the Board of Appeal. R 108(3) also empowers the Enlarged Board to order replacement of members of the Board of Appeal who participated in the impugned decision. [7] With the exception of that last measure which is discretionary, the outcome of a successful petition is therefore prescribed by legislation. In those circumstances, the role of requests in petition proceedings is necessarily limited and the Enlarged Board cannot agree with the respondent that, by merely bringing requests it had not been obliged to specify into conformity with the legislative provisions, the petitioner has filed a new and invalid petition out of time. To download this decision, click here.
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R 5/08 – Party Involvement in Petition Proceedings
K’s Law – The ebook
R 5/08 – Party Involvement in Petition Proceedings 22 Jan 2010
The present decision concerns a petition for review filed by the opponent in case T 601/05. In fact, it is one of the rare decisions on petitions for review which went beyond the preliminary examination (first stage). In T 601/05, the Board of Appeal had set aside the decision revoking the opposed patent. After being notified of the petition for review, the patentee/respondent filed a purported reply to the petition. The Enlarged Board (EBA) then issued a communication which drew the attention of all the parties to R 109(3) and directed them not to file further written submissions until it had decided whether or not the petition was clearly inadmissible or unallowable. The EBA then repeatedly held oral proceedings (OPs): first with the petitioner alone and then in the presence of all the parties. The patentee complained that its right to be heard had been violated, in particular because it had not been summoned to the first OPs. This prompted the following comments by the EBA: The EBA considers that it should comment on [the respondent’s complaints] in order to clarify the position for potential parties in other possible petition proceedings. In the judgment of the EBA, the respondent wholly misunderstood the two distinct stages provided by A ll2a and R 109 for the treatment of petitions for review. [28] R 109(1), headed “Procedure in dealing with petitions for review”, provides in its first sentence that: “In proceedings under A ll2a, the provisions relating to proceedings before the Boards of Appeal shall apply, unless otherwise provided.” As regards the procedure for the first stage of petition proceedings, there are indeed such measures “otherwise provided”, namely R 109(2) and (3). [29] R 109(2)(a) provides that the EBA composed of three members shall examine all petitions for review and reject those which are clearly inadmissible or unallowable. R 109(3) states that the EBA in that composition shall decide “without the involvement of other parties and on the basis of the petition.” The cumulative effect of those two provisions is that, in the first stage of petition proceedings, parties other than the petitioner are not to be involved in the proceedings. Such other parties are beyond doubt parties and are indeed called such in R 109(3) itself, but they are not to be involved. So long as they are not involved, they have no right to be heard and thus no complaint, such as that made by the respondent, of a denial of the right to be heard can arise. [30] The respondent’s distinction between involvement in proceedings and involvement in a decision is a strained and artificial interpretation of R 109(3). That provision says quite clearly “The EBA composed according to paragraph 2(a) shall decide...”. As would only be expected of any judicial decision, the only persons involved in the decision are the appointed decision-makers who, under A ll2a and R 109(2)(a) and (3), are three members of the EBA. Accordingly, the expression “without involvement of the parties” means without the parties’ involvement in the proceedings. That is the straightforward and common sense interpretation of R 109(3) and the only interpretation it can bear. [31] It follows that all the respondent’s other arguments in this respect are redundant. A 112(2) does not apply, even by analogy, since R 109(3) “otherwise provides”. The provisions about OPs (A 116, R 115(1), first sentence, and R 126) do not apply to parties other than the petitioner because they are not involved - again, R 109(3) has “provided otherwise”. This is not contrary to A 125 EPC as there is no breach of the principle of good faith because no duty of good faith lies towards those not involved. Nor is there a contravention of A 164(2) because R 109(3) is not contrary to A 113(1). [32] There is general support for the EBA’s view in the travaux préparatoires which, at several stages of the legislative process, stressed the need for a quick screening process to be conducted by a three member panel of the EBA in order to reject petitions which clearly cannot succeed. It is clear that, in advocating this fast, summary first stage of proceedings, the legislator was actually intending to benefit parties other than petitioners by not requiring them to take any steps in response to a petition until the EBA should be satisfied that it was not 3195 | 3398
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K’s Law – The ebook
to be rejected as clearly inadmissible or unallowable. Thus, while the respondent argued that the first stage proceedings put it at a procedural disadvantage, the first stage is actually advantageous to parties other than petitioners. [33] For completeness it should also be observed that non-petitioner parties, although not summoned to OPs in the first stage, may of course attend such proceedings which are public. Further if, as a result of the first stage proceedings, a petition is not found by unanimous decision to be clearly inadmissible or unallowable, it will then be considered by the EBA in the larger composition provided for in R 109(2) (b) and, if and when that second stage is reached, the other parties are to be involved. [34] To download this decision, click here.
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T 780/05 – How Not To Present A Witness
K’s Law – The ebook
T 780/05 – How Not To Present A Witness 22 Jan 2010
This decision deals with the requirements for a witness to be heard by a Board. The request filed in writing by Opponent 2 during the oral proceedings (OPs) before the Board, read as follows: “It is requested to provide proof, by hearing the witness Bob Cormia, to be summoned via Opponent 2, that the sheets “XIR-70 2mil”, which had been supplied to the clients listed in Appendix C, had the longitudinal and transversal shrink values corresponding to material data sheet MS-0046. In the event of witness Cormia not being available any more, it is requested to summon witness Dave Jones, also via Opponent 2.” […] During the OPs Opponent 2 filed the request that Mr Cormia be heard as a witness. This hearing was requested in connection with the alleged prior uses. The testimony of Mr Cormia was believed to prove that the shrinking values in both directions of stretching of the XIR-70 2mil sheets, which according to Appendix C had been delivered, could be calculated to fall into the claimed domain. [4.1] This request is to be rejected as late filed (Article 13(1) RPBA). The request was first filed during the OPs before the Board, when the novelty of the claimed subject-matter was discussed. It differs from the earlier requests that Mr Cormia be heard as a witness. Therefore, the request was filed at an extremely late stage of the proceedings. Moreover, the request is insufficiently substantiated because there is no prima facie evidence concerning the circumstances which are expected to qualify Mr Cormia to make reliable statements on the facts of the case, i.e. precise knowledge with respect to the technical facts of the delivery mentioned in Appendix C. This concerns the precise role that Mr Cormia played in [opponent’s company] with respect to the alleged prior use, his technical qualification in so far as it is relevant for the administration of the desired proof, and, finally, his implication in the contested operation. The available information on Mr Cormia does not make it apparent to which extent he has direct and objective knowledge concerning the deliveries according to Appendix C. The lack of substantiation of the offer of testimony is further underlined by the fact that in the course of the OPs a certain Mr Jones was offered as a possible replacement witness without any substantiation of the competence of the latter with respect to the question to be answered. [4.2] The Board cannot accept the argument of the opponent according to which the same request for hearing of Mr Cormia as witness had already been made earlier. It is true that it had been proposed in the written proceedings to hear Mr Cormia as a witness, but only in view of distinct (but related) circumstances which did not refer to the problem of the sheets delivered according to Appendix C. […] [4.3] Under these circumstances a continuation of the proceedings with summons of the witness and fixing of new OPs was not justified from the point of view of procedural economy and because of the lack of substantiation of the offer of testimony. Therefore the corresponding request cannot be allowed. [4.4] The present situation differs from the situation underlying decision T 474/04. In this decision, basic questions concerning the meaning of hearing witnesses were discussed and the fact that the evaluation of the offered evidence was anticipated by a refusal to hear the witness was criticized. The question of sufficient substantiation of the offer of testimony, which is decisive here, was not dwelt upon. [4.5] To read the whole decision (in German), click here.
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T 1511/06 – Disclosure Through Secret Sales
K’s Law – The ebook
T 1511/06 – Disclosure Through Secret Sales 21 Jan 2010
This decision deals with a case of prior use. The opponent (Siemens) pointed out that VDO had supplied throttle valves according to the invention to Mercedes-Benz before the effective date of the opposed patent. The decision is thoroughly reasoned. It gives a detailed analysis of the relationship between a car manufacturer and one of its component suppliers and raises some interesting points. I find the distinction between the secrecy of sales and the secrecy of the object sold quite to the point. […] The state of the art comprises any information which has been made available to the public (A 54(2) EPC 1973). It is sufficient that a single member of the public was in a position to gain access to it, provided that he was not bound by an obligation to maintain secrecy at the time when he gained access (see T 1081/01). In the present case, the crucial point to be assessed is whether or not Mercedes has to be considered as a member of the public not bound by an obligation to maintain secrecy. [4.2.1] The Board has no knowledge of an express secrecy agreement. Therefore, it has to be established whether it results from the circumstances that a tacit secrecy agreement existed between VDO and Mercedes. [4.2.2] It is established case law that if at the time of receipt of an information, the recipient was in some special relationship to the donor of the information, he could not be treated as a member of the public, and the information could not be regarded as published for the purposes of A 54(2) EPC (see T 1081/01 [8]). In this respect the following is observed: (a) The throttle valve shown in document D15 is a typical product of VDO which produces throttle valves of various kinds for use by the automotive industry. In contrast, Mercedes is an example of a typical potential end user of such valves. There is no evidence on file that the throttle valve in question was actually designed by Mercedes and only manufactured by VDO, nor that Mercedes would have any special rights in the technical solutions of the throttle valve, such as a patent or the like. The fact that the underlying technology of throttle valves of the type in suit typically constitute the intellectual property of a part manufacturer is also demonstrated by the parties to the present appeal. Both Appellant and Respondent are part manufacturers and not car manufacturers. (b) The Board has no information that VDO and Mercedes had concluded a development agreement or entered into any other contractual relations that would indicate either of them having had any particular interest in a secrecy agreement. (i) As mentioned above, such valves are developed and designed by VDO. The Board recognises that it might be necessary to adapt its dimensions in response to wishes of the end user, or even to individualise the product by using the logo or trademark of the end user. This, however, does not mean that the valves are the result of a technical co-operation between VDO and the end user, i.e. that the valves are a common development. (ii) Thus, this appeal case is different from those cases of sub-contracting cited by the Respondent. In these cases, a common interest for secrecy was assumed, either because there was a technical co-operation for the common development of a new product (see T 830/90) or for the manufacture of a product developed by the donor of the order (T 799/91). (c) The Board has no reason to doubt that part manufacturers and car manufacturers often impose a secrecy obligation on each other, for example in cases of common development. However, this does not appear plausible in the present case. Since throttle valves are a typical product of VDO, it cannot be assumed that VDO had an interest in accepting any secrecy obligation with respect to its own products, as it would have prevented it from selling its own product to other car manufacturers. The same argument speaks against the assumption that Mercedes would have been in a special or preferential relationship with VDO in the sense that VDO itself would have intended to sell such throttle valves to Mercedes only. On the other hand, Mercedes has regularly purchased the sample throttle valves, i.e. paid for them. It is also not plausible that Mercedes would have accepted any restrictions from its own part supplier on how to exploit these valves, such as an obligation to request a 3198 | 3398
T 1511/06 – Disclosure Through Secret Sales
K’s Law – The ebook
preliminary consent from VDO before any public sale of the cars equipped with the valves in question. Moreover, it appears unlikely that it would be in the interest of Mercedes to be dependent on a single supplier for these throttle valves. Rather, it is more likely for Mercedes to have an interest that these valves are known to the public so that they could be ordered freely from other suppliers, and not only from a single source. It is another matter that Mercedes could possibly have required from VDO to keep the fact of the sale secret, in order to prevent the leaking of any information to its competitors about the technical parameters of its engines. However, this is not equal to the obligation of keeping secret the existence of the throttle valve in suit as such, but merely the fact that such throttle valves have been adapted to the engines of Mercedes. […] (e) The Board thus concludes that considering the relationship between VDO and Mercedes and also considering the overall technical features of the sold part in question it can not be assumed that a tacit secrecy agreement existed for the delivered throttle valves. In this respect, Mercedes has to be considered as a member of the public. [4.2.3] In view of the foregoing, the Board is unable to conclude any restrictions imposed by the delivery of these throttle valves from VDO to Mercedes. The Respondent referred to [case law] according to which a product made available for test purposes is to be treated as confidential. But even if the delivery of these samples was considered for test purposes, the foregoing statement does not apply to the present case. If the possessor of the product is a member of the public, as in case T 221/91 or in the present case, the product has to be considered as being available to the public. The Board thus concludes that the throttle valves delivered on 2 March 1994 were made available to the public. [4.2.4] To read the whole decision, click here.
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J 12/07 – If You Need More Time, Justify In Time
K’s Law – The ebook
J 12/07 – If You Need More Time, Justify In Time 21 Jan 2010
The present appeal was filed after the Examining Division (ED) had rejected a further extension of the time limit for filing observations pursuant to A 96(2) EPC 1973. […] The decision under appeal correctly ruled that the right criteria had been applied in the decision refusing an extension of the time limit. The existence of exceptional circumstances was not sufficiently substantiated within the time limits whose extension was requested. The request, filed within the time limits, contained the mere statement that the client was a start-up company which had only very recently authorised the representative to draft and file a reply to the communication. The applicant’s status as a start-up company is not an exceptional circumstance. In the request filed within the time limits, the applicant did not give any reasons for the fact that it had authorised the representative only a short time before the expiry of the time limit. Thus, in the decision under appeal, it was correctly regarded as no more than a delay in the applicant’s decision-making process and therefore an avoidable circumstance. [2.3] Reasons given after the time limit for the request has expired cannot be considered. The appeal is based essentially on the fact that the department of first instance should have accepted the reasons given in the appellant’s letter filed months after the refusal of the time-limit extension in reply to the ED’s communication noting a loss of rights under R 69(1). Whether an extension of a time limit may be granted or ought to be refused can only be decided on the basis of the reasons put forward by the applicant at the time when the department of first instance makes its decision. If these reasons do not justify a further extension of the time limit, the department of first instance has exercised its discretion properly and taken a correct decision by refusing the request. Reasons given after the extension has been refused cannot be considered, and in subsequent appeal proceedings the board has no power to set aside the decision of the department of first instance and instead to exercise its own discretion in the light of reasons given at a later time. In the present case, the request for extension was based on the late authorisation of the appellant’s representative as a result of the appellant’s being a start-up company. That reasoning does not in any way suggest that the late authorisation was due to financial difficulties rather than a lack of experience on the part of the appellant in patent matters. Furthermore, even though the letter states the reasons referred to above, it still does not explain what specific circumstances prevented the company from dealing with the case. A mere general reference to financial difficulties is not sufficient. The ED was therefore right to refuse reimbursement of the fee for further processing. Hence, the appeal is not allowable. [2.4] To read the whole decision, click here.
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T 354/04 – Beware of Incomplete Standards
K’s Law – The ebook
T 354/04 – Beware of Incomplete Standards 20 Jan 2010
Claim 1 of the [new main] request read: 1. Use of a melt composition to make man-made vitreous fibres which are shown to be biodegradable in the lung wherein the composition has an analysis, measured as weight of oxides, which includes Si02: 32 to below 45% […] Other Elements 0 to 8%, and wherein […] the composition has a melt viscosity at 1400°C of 10 to 70 poise, calculated according to Bottinga and Weill, American Journal of Science volume 272, May 1972, page 455-475 […] […] Claim 1 is silent about the nature of the “other elements”. Only the description of the patent in suit contains a non-exhaustive list of “other elements” that “can be present in the composition in any amount that does not detract from the desired properties and which does not exceed 8%”: P2O5, B2O3, BaO, ZrO2, MnO, ZnO and V2O5 are specifically mentioned. With regard to the amounts of these “other elements”, it is indicated in the description that “each of the other elements is normally present in an amount of not more than 2%, except that P2O5 and/or B2O3 may be present in larger amounts”. Moreover, it is expressly mentioned that that “preferably, there is 1 to 8% ... P2O5 and 0 to 5% B2O3”. [6.2] Claim 1 is restricted to the use of those melt compositions […] which meet the requirement of a melt viscosity value falling within the recited numerical range, the value to be considered being the viscosity value calculated according to the BW model described in [document] C28. [6.3] […] The question that must be answered in the first place is […] whether the person skilled in the art, considering the contents of the patent in suit and of C28, as well as common general knowledge on the filing date of the patent in suit, was actually in a position to calculate the viscosities of melt compositions having analyses throughout the ranges indicated in claim 1. [7.8] […] C28 describes a model for predicting instead of measuring the viscosities of multi-component silicate melts. At first glance C28, which is praised as the authoritative reference in viscosity calculations, appears to describe a simple calculation of the viscosity of multi-component melts requiring not much more than filling in available data in the formula (1):
wherein η is the viscosity, Xi is the mole fraction of the i-th component, Di is a constant associated with component i over a restricted range (in terms of mole percent SiO2) of composition, and each temperature has a particular set of Di constants. When trying to apply the calculation model of C28 to the compositions embraced by the compositional ranges in claim 1, the skilled person is however confronted with difficulties due to a lack of data and to gaps in the information provided in C28. The teaching in C28 is incomplete insofar as the BW model as set out therein is not fully applicable to all the compositions as defined in present claim 1. [8] [The compositional ranges in claim 1 include, inter alia, compositions comprising relatively high amounts of ZrO2 or P2O5.] As far as ZrO2 and P2O5 are concerned, C28 does not report any of the Di values needed for the calculation. The straightforward viscosity calculation according to formula (1) of C28 is thus not possible for the compositions comprising up to 8 weight % ZrO2 or P2O5. [8.1] The authors of C28 indicate that in some cases, estimated or approximated Di values of certain components may be used in the calculation when the required Di values are not tabulated. However, C28 contains no guidance whatsoever having regard to approximations or estimations that could be applied in the case where a 3201 | 3398
T 354/04 – Beware of Incomplete Standards
K’s Law – The ebook
composition contains ZrO2 in more than just a negligible amount, let alone in a higher amount of up to 8% by weight. [8.2] [...] C28 does not contain theoretical considerations which could be considered as a basis for enabling the skilled person to make appropriate, scientifically sound estimations of the Di values for ZrO2 and for P2O5 in amounts of up to 8 % by weight. [9.3] To fill these gaps in C28, the skilled person could only speculate about appropriate estimations based on considerations not addressed in C28, and the viscosity calculated would thus depend on speculative Di values. In other words, depending on the specific underlying assumptions adopted by the skilled person, the estimations would not in any case give the same result. Under these circumstances, for the board, the skilled person would have to grope in the dark because he is not in a position to calculate the viscosity of these compositions as required by claim 1, i.e. based on the information comprised in C28, the patent and common general knowledge alone. [10.2] In order to be able to calculate viscosity values according to the model of C28 for the compositions referred to under point 6.2.5, the skilled person would thus first have to investigate experimentally the quantitative impact of specific components such as ZrO2 and P2O5 on the viscosity of multi-component silicate melts in the SiO2 mole fraction range(s) concerned. The investigations necessary for obtaining the correct Di values or for checking the validity of an approximation not disclosed in C28 involve high temperature melt viscosity measurements, the evaluation of the data and cross-checking how they fit with the BW model. [11.3] Neither the patent in suit nor C28 contain more specific instructions on how viscosity measurements and evaluations required for determining the results to be used in the BW model for P2O5 or ZrO2 in compositions as defined in claim 1 could be carried out. Moreover, a calibration of the measured data against C28 or patent data is not possible since these two documents do not contain examples of compositions comprising ZrO2 or P2O5 in amounts of up to 8 % by weight. The skilled person is thus forced to develop its own research program. For the board, there are however limitations to what can be expected from the skilled person. [11.6] The board thus concludes that the experimental and evaluative work required from the skilled person represents an undue amount of experimentation in the sense of decision T 435/91. The skilled person would actually be forced to generate all necessary data in order to be in a position to calculate the viscosities of melt compositions having analyses throughout the full ranges indicated in claim 1. This undue amount of experimentation requires more than routine means and manipulations and requires more than merely common general knowledge. The skilled person cannot be expected to embark on the scientific research programme required for testing the validity of given approximations and/or for finding the correct Di values for the calculation of the parameter value which is needed for identifying those amongst the compositions falling within the compositional ranges of claim 1 which are actually the ones to be used according to the invention. Or, in other words, it is not up to the skilled person to overcome the limitations of the patent in suit and fill gaps left by the patentee in the information. [11.8] The patent does not disclose the invention as claimed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (A 100(b)). [13] Consequently, the main request cannot be allowed. [14] The moral of this story: When you have to refer to a standard for defining the way in which some claimed parameters are determined, do not forget to check that the standard is applicable in a straightforward manner to all embodiments that are covered by the claim. To read the whole decision, click here.
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T 1689/07 – Colour Can Be Technical
K’s Law – The ebook
T 1689/07 – Colour Can Be Technical 20 Jan 2010
[...] Claim 1 defines an absorbent article for feminine hygiene inter alia by the feature requiring that it is provided with a colour change material selected from a thermochromic material, a piezochromic material, a photochromic material and combination thereof. The Examining Division came to the conclusion that the claimed article was an aesthetic creation since this technical feature distinguishing the claimed article from the closest prior art had solely an aesthetic effect, namely to render the article more pleasant to use. [2.1] The article claimed is as such a technical product. The effect linked to the incorporation in the article of the colour change material is a change of colour induced by an external stimulus on the article, namely a change of temperature, an exertion of pressure and/or an exposure to light. Such a change of colour, which can also be described as a modification of the light absorption by the article, is a technical effect that can be measured by technical means, e.g. a colorimeter. Whether the final aim of the technical effect achieved by the claimed absorbent i.e. the colour change, is only aesthetic, what the Appellant denies, has no impact on the technical nature of the claimed absorbent article itself. It is in fact common practice that inventions such as dyes or hair colouring compositions, although having only an aesthetic goal, are nevertheless patentable inventions in the sense of A 52 since the claimed absorbent for feminine hygiene, as dyes and hair colouring compositions, are not per se aesthetic creations. Therefore, the Board arrives at the conclusion that the absorbent article according to claim 1 is not an aesthetic creation per se in the sense of A 52(2)b) and (3), and thus a patentable invention within the meaning of A 52(1). [2.2] To read the whole decision, click here.
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T 140/07 – You Don’t Crossbreed Sheep With Goats (Even If The Shepherds Are Friends)
K’s Law – The e
T 140/07 – You Don’t Crossbreed Sheep With Goats (Even If The Shepherds Are Friends) 19 Jan 2010
This decision contains an interesting paragraph on combination of documents. Claim 1 of the first auxiliary request concerned a “method of forming a hybrid composite structure of an airplane fuselage section on a layup mandrel …”. The opponent considered the claim obvious over a combination of documents including document D5. This document belongs to another domain than the opposed patent but it was filed by an aeronautic company. This bridge is considered insufficient by the Board: […] In the Board’s judgment, the closest prior art is represented by paragraphs [0002], [0003] and [0005] of the patent specification, from which the claimed process differs in that gore strips are applied parallel to a longitudinal axis of the aircraft fuselage section and the polymeric matrix composite material is applied transversely thereto. [3.4.2] The [patent proprietor] has shown, in particular in paragraphs [0026] to [0041] of the specification in conjunction with figures 3 to 5, that the application of the gore strips along the longitudinal axis of the lay-up mandrel and the lamination of the matrix composite transversely thereto can be automated, for instance by a strip laying machine (62) and a fibre placement machine (70) (cf. paragraphs [0033] and [0041]). Therefore, the problem of reducing manual handling is solved by these claimed measures. D5 inter alia describes the preparation of composite structures having the shape of a prolate spheroid, where metal segments are arranged in the longitudinal direction relative to a given axis and the glass fibres are arranged transversely thereto. D5, however, is concerned with casings for rocket motors, tanks, pipes or pressure vessels which are entirely different in shape and size when compared to aircraft fuselage sections, the latter having length and diameters of several meters. The Board also shares the Appellant’s view that the requirements concerning the mechanical strength and resistance to stress forces are different; according to D5 the focus is on the resistance to hoop stresses, whereas aircraft fuselages sections mainly have to withstand bending forces, hoop-stress resistance being of minor importance. It is therefore considered unrealistic to assume that a skilled person intending to solve problems in connection with the preparation of aircraft fuselage sections would take into account prior art which is unrelated to their specific technical requirements. The fact that the applicant of D5 is an aeronautic company does not alter the situation, because a skilled person intending to solve a technical problem of the prior art would solely rely on the technical information actually given in the document; this information, however, contains no pointer towards the usability of the structures for aircraft fuselage sections. For the above reasons, the person skilled in the art of aircraft fuselage sections would not consider a combination of the prior art mentioned in the patent specification, paragraphs [0002], [0003] and [0005], with D5 in order to solve the problem of the invention claimed according to the first auxiliary request. Consequently, the subjectmatter of the claims according to the first auxiliary request involves an inventive step. [3.4.3] To read the whole decision, click here.
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T 341/07 – In Appeals, Play It Again Sam
K’s Law – The ebook
T 341/07 – In Appeals, Play It Again Sam 19 Jan 2010
The present decision shows that an opponent cannot be sure to be allowed to rely on a ground for opposition that he has not raised again in due time in the appeal proceedings. In the case underlying the present decision, the patent was opposed on the grounds of lack of novelty (with respect to document E3) and inventive step (with respect to documents E1 and E5). The patent was finally revoked on the grounds of lack of novelty (the main request and the first auxiliary request being anticipated by late introduced document E8) and inadmissible extension (second auxiliary request). During the oral proceedings (OPs) before the Board, the opponent admitted that claim 1 of the main request was novel over E8 but argued that the claim lacked novelty over E3. The Board does not admit this objection based on document E3, for the following reasons. [2.2] During the written appeal proceedings, none of the opponents has expressed an opinion on the substance (fond), neither in a response to the grounds of appeal, nor as a reaction to the communication by the Board accompanying the summons to OPs, wherein it had indicated that the subject-matter of Claim 1 appeared to be novel over E8 and that the other documents cited did not appear to be relevant with respect to novelty. In this communication, the Board had fixed a date – one month before the date of the OPs – until which the parties could file observations in response to the communication. [2.2.1] The Board considers that this objection corresponds to an amendment to the party’s case within the meaning of article 13(1) RPBA. The admission and consideration of such an amendment are at the Board’s discretion, in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy. The grounds of appeal have been transmitted to the opponents with a communication dated April 23, 2007. The communication of the preliminary opinion of the Board has been notified to the parties on July 3, 2009, wherein the time limit for filing observations was fixed to August 16, 2009, i.e. one month before the OPs. The Board concludes that the opponent has had enough time to introduce the grounds in response to the grounds of appeal. The refusal of an extension of the time limit is not equivalent to a prohibition of filing such observations. The opponent should have filed them at the latest in reaction to the preliminary opinion of the Board, before the time limit indicated therein, as the last amendments [of the claims] do not change the situation with respect to novelty. [2.2.2] As the Board had indicated, in the communication dated July 3, 2009, that it had the intention to reach a verdict on the case, including the question of inventive step, and had prepared itself to do so on the basis of the impugned decision, the grounds of appeal, its preliminary opinion and the observations of the appellant, the objection of lack of novelty based on E3, which has been raised only during the OPs, arises without justification at an excessively late stage of the proceedings, which comes close to an abuse of proceedings. Therefore, the requirements for admissibility of this amendment of the case are not fulfilled. [2.2.3] The opponent has argued that the objection had already been raised by itself and the other opponent with each of the oppositions and as such was part of the appeal proceedings. The Board observes that this is not the case because the appeal proceedings are distinct proceedings. Apart from the impugned decision, they are based, according to Article 12(1) RPBA, on the notice of appeal and statement of grounds of appeal, any written reply of the respondents to be filed within a time limit fixed b the Board, any communication sent by the Board and any answer thereto filed pursuant to directions of the Board. For the present case the requirements of Article 12(2) RPBA also apply, i.e. the respondent’s reply shall set out clearly and concisely the reasons why it is requested that the decision under appeal be upheld, and should specify expressly and precisely all the facts, arguments and evidence relied on. 3205 | 3398
T 341/07 – In Appeals, Play It Again Sam
K’s Law – The ebook
As during the written proceedings the respondents have not filed any substantive reply, neither to the grounds of appeal, nor to the communication of the Board, these requirements are not met. [2.2.4] The opponent has also argued that the Board, by applying the RPBA so restrictively, deprived it of the last possibility to uphold the revocation of the patent. The Board observes that it was the choice of the opponent not to express a written opinion on the grounds of appeal or to file a timely response to the preliminary opinion of the Board. Therefore it has to accept the consequences. These consequences could be economic for the opponent, but this is not the case for the Board and/or the appellant. [2.2.5] Finally the opponent has pointed out that its objection only became possible due to its understanding of the amendment of claim 1 of the main request when preparing the OPs. As this amendment had been notified by the EPO on August 19, 2009, the time limit indicated by the Board could not be observed and the only way to object to it was during the OPs. The Board cannot accept this justification. On the one hand, if said amendment of the main request had changed the teaching of the patent, as pointed out by the opponent, the claim would not satisfy the requirements of A 123(3) and there would not be any need for discussing its novelty. On the other hand, as the amendment does not violate A 123(2)(3) […] it is clear that the respondent should have filed the objection of lack of novelty with respect to E3 already in its reply to the grounds of appeal, or at the latest in a timely reaction to the preliminary opinion of the Board. [2.2.6] In view of Articles 12(1), 12(2) and 13(1) RPBA the Board exercises its power of discretion and decides not to take into account the late filed objection. Document E3 is not admitted into the appeal proceedings. To read the whole decision (in French), click here.
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T 1607/06 – Second Thoughts Not Welcome (Part II)
K’s Law – The ebook
T 1607/06 – Second Thoughts Not Welcome (Part II) 18 Jan 2010
This decision is another illustration of the more and more severe handling of late amendments of requests by the Boards. Here we come pretty close to a sort of estoppel. During the oral proceedings (OPs), the patentee filed an auxiliary request Claim 1 of which read: Circuit for operating an electric motor (11), having an arrangement which provides a signal which is a measure of the speed of an electric motor (11), and having a monitoring arrangement (24) for determining a heightened state of charge of the electric motor, wherein the monitoring arrangement (24) compares a speed differential (ND) between a desired speed value (NSoll) provided by a setpoint device (12) and the actual speed determined from the signal for the actual speed value (NIst) with a prescribed limiting value, and emits an overload signal (25) in the case of overshooting of the limiting value, characterized in that the overload signal (25) is fed to a desired value reducer (13) which lowers the desired speed value (Nsoll) to a limited desired speed value (N’soll) and transmits it to a summing unit (14) for establishing the speed differential (ND) between the limited desired speed value (N’soll) and the actual speed value (NIst), wherein a first timer (26) is provided in the monitoring arrangement (24), which takes account of an acceleration process of the electric motor (11) after a change in the desired speed value (Nsoll) by suppressing the overload signal (25), and wherein a second timer (27) is provided, which emits the overload signal (25) for the time (Taus) prescribed by the second timer (27), and a third timer (28) is provided which prescribes a time (Tein) during which the overload signal (25) is suppressed. The features in yellow correspond to claim 1 as granted, the features in red to the additional features of dependent claim 3 as granted, the features in magenta to the additional features of dependent claim 5 as granted, and the features in blue to the additional features of dependent claim 6 as granted. The features in green colour are taken from the auxiliary request as filed before the OPs. This former auxiliary request corresponds to the sum of the features in yellow, red and green. […] According to Article 13(2) of the Rules of Proceedings of the Boards of Appeal, amendments of the requests made after the appointment (Anberaumung) of oral proceedings (OPs) shall not be admitted “if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the OPs”. [3.1] The auxiliary request of the [patent proprietor] was filed toward the end of the OPs (NB : held on October 27, 2009), after discussion of the main request and a short discussion of the auxiliary request then on file. Claim 1 of this new request comprises the features of independent claim 1 as granted together with the features of dependent claims 3, 5 and 6 and corresponds to a combination of the independent claim 1 with the dependent claims 3 and 4 of the former auxiliary request (filed together with the main request). As all the dependent claims that have been referred to only depended from claim 1, this combination of features has not been claimed before during the proceedings and, therefore, raises issues which neither the Board nor the [opponent] could reasonably be expected to deal with during the OPs. [3.2] The Board points out that the [main and former auxiliary] requests were filed on October 6, 2009, as a reaction to the new prior art filed by the [opponent] on September 16, 2009, which could possibly justify the late filing. However, as the [patent proprietor] had already filed, on September 25, 2009, a request based on claims 1 and 5 as granted (Claim 1 of the then auxiliary request 2) but had withdrawn it on October 6, 2009, the [opponent] had reasons for assuming that there should be no more debate (dass nicht mehr … verhandelt werden sollte) on the features if claim 5 as granted. Having pondered all circumstances, the Board is of the opinion that the auxiliary request filed during the OPs is not to be admitted into the proceedings [3.3] The moral of the story: be extremely cautious when filing amended requests and do whatever you can not to exasperate the Board by shilly-shallying. To read the whole decision (in German), click here. 3207 | 3398
T 875/06 – Names Are Not Everything
K’s Law – The ebook
T 875/06 – Names Are Not Everything 18 Jan 2010
This decision deals with a situation where both the notice of appeal and the statement of grounds of appeal were erroneously filed in the name of a company different from the company that had opposed the patent. Pursuant to A 107 EPC 1973 only those who were parties to proceedings that led to the impugned decision can appeal. The opposition was filed by “Lisa Dräxlmaier GmbH” (LDG). In the impugned decision this name was given as the name of the opponent. [1] In the notice of appeal that was filed [on June 7, 2006] by the professional representative who had represented the opponent before the Opposition Division, the company “DST Dräxlmaier Systemtechnik GmbH” (DSTG) was given as the name of the appellant. Therefore a legal person different from the opponent was named. However, an indication required pursuant to R 64a) together with R 26(2) EPC 1973 in order to legally identify the DSTG company, i.e. the address of the appellant, was missing. At the same time DSTG was also cited as the name of the opponent in the subject line (Betreff). This indication was obviously wrong because the content of the file (Akteninhalt) showed that the LDG company was the opponent. As the appeal was filed by the same professional representative who had represented the opponent LDG, it was obvious both for the Board of appeal and for the patentee as well as the rest of the public that the writer of the notice of appeal had made an error. This incorrectness necessarily shed doubt on the indication concerning the legal person of the appellant because an error concerning the opposing company can also indicate an error concerning the appealing company. [2] Decisions T 97/98 and T 340/92 act on the assumption that an incorrect or erroneous indication concerning the person of the appellant cannot be treated more strictly on a legal level than the omission of the indication of the identity of the appellant. Pursuant R 65(2) EPC 1973, the latter can lead to the inadmissibility of the appeal only if the deficiency is not remedied within a time limit to be fixed by the Board of appeal. However, there is a prerequisite for such a remedy: it has to be apparent from the notice of appeal and the rest of the file that there was the intention to file the appeal in the name of this person. [3] The Board considers this case law relevant, as an incorrectness which is apparent for all the parties to the proceedings and the public without further ado should not be treated differently than the omission of an indication that is necessary for identifying a party. The real existence and identity of the DSTG company as appellant was not beyond all doubt because of the indications of the notice of appeal. Therefore the Board should have sent an invitation to complete or clarify the indications pursuant to R 65(2) EPC 1973 in order to identify the person of the appellant without any legal doubt. In response to this invitation, there could have been a correction of the name of the appellant in the same manner as if the notice of appeal had not contained any indication concerning the person of the appellant. As the professional representative had filed a correcting statement on October 2, 2006, without having received an invitation by the Board pursuant to R 65(2) EPC 1973, the correction was filed in time. There was no need to file further details concerning the legal person of the LDG company as these details were already known from the opposition proceedings. [4] The Board is also convinced that the professional representative had the intention, when filing the appeal, to do so in the name of LDG because he referred in the notice of appeal to the person of the opponent and used the same internal file reference that had been used in the correspondence with the EPO during the opposition proceedings for the LDG company. The possibility envisaged by the patentee that the LDG company had transferred its opponent status to the DSTG company is, in the opinion of the Board, a purely speculative assumption that is not suggested by any external circumstances and which does not result from the mail [instructing the professional representative to file an appeal] dated June 7, 2006, which was presented by the professional representative. The engagement letter dated 3208 | 3398
T 875/06 – Names Are Not Everything
K’s Law – The ebook
October 28, 2004 shows that it was employees of the DSTG company who negotiated with the professional representative of the opponent but that they expressly named the LDG company as opponent. [5] As the statement of grounds of appeal dated August 2, 2006 refers to “the appeal filed in our letter of June 7, 2006” without naming an appellant, it ensues that the intention was to file the statement of grounds of appeal for the person named in the notice of appeal. This interpretation is mandatory and independent from the fact that in the subject line the opponent was incorrectly named as DSTG. Finally the correction in due time of the name of the opponent in the notice of appeal dated June 7, 2006 also leads to the conclusion that the statement of grounds of appeal dated August 2, 2006, as a consequence of its reference to the notice of appeal, was also legally filed in the name of the LDG company. [6] As both the notice of appeal dated June 7, 2006 and the statement of grounds of appeal were legally filed in the name of LDG, the appellant is the LDG company, which was a party to the opposition proceedings. [7] To read the whole decision (in German), click here.
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T 230/06 – Post Mortem Appeal Proceedings
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T 230/06 – Post Mortem Appeal Proceedings 16 Jan 2010
The present decision deals with what is to be done when a patent lapses during opposition appeal proceedings. In the present case, the opponent had filed an appeal after its opposition had been rejected. None of the parties reacted when the EPO announced that the patent had lapsed. According to R 84(1), if the European patent has lapsed in all designated Contracting States, the opposition proceedings may be continued at the request of the opponent filed within two months of a communication informing of the lapse. Pursuant to R 100(1) this provision is also to be applied to appeal proceedings. As there was no request for continuation of the proceedings within the time limit following the communication on the lapse of the patent in all Contracting States, the proceedings are to be brought to an end. (See also T 714/93, T 749/01, and T 436/02). [1] To read the whole decision, click here.
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R 12/09 – Board Work Does Not Disqualify EBA Members
K’s Law – The e
R 12/09 – Board Work Does Not Disqualify EBA Members 16 Jan 2010
This interlocutory decision deals with an objection under A 24. As always, the outcome is predictable, to say the least. Another one bites the dust, as Freddy Mercury would have said. According to its wording, A 24 is to be applied both to the members of the Boards of appeal and to the members of the Enlarged Board of Appeal (EBA), and, for the latter, both in their function under A 112 and in the function under A 112a, which has later been attributed to them. There have already been objections against members of the EBA because of suspected partiality. As the recent case law of the EBA shows, it has been decided that an objection of suspected partiality cannot be based merely on the fact that a member of the EBA had already been dealing with the matter under consideration as a member of a Board of appeal (see G 1/05 [27]; G 2/08 [4.2]) Although this case law is interesting (but not directly relevant) with regard to the present case, there is a certain difference between the reasons for objections which are invoked by a party under A 24 and the reasons which are actually acknowledged as such. [1] As the petitioner itself has admitted, the admissibility of an objection is a question on which the EBA has to decide in its original composition. The petitioner is of the opinion that as far as the admissibility is concerned, all it had to show is that it had taken no procedural step while being aware of a reason for objection (A 24(3), second sentence). It pointed out that this requirement was fulfilled in the present case. The EBA approves this opinion in so far as there is no corresponding reason (Grund) for objection. However, the question of admissibility is not limited to the examination of this requirement but also includes the question whether the objection is sufficiently substantiated. The petitioner tries to argue in its letter dated November 23, 2009, belatedly (nachträglich), that sufficient reasons (Begründung) are not required for an objection to be admissible, because this would entail that the objected members also decide on the substance of the request. The EBA is of the opinion that this argument is based on a misunderstanding. The decision of whether an objection is sufficiently substantiated is a decision on whether the objection satisfies the minimal requirements for factual (sachlich) reasons and not on whether the reasons are convincing. This point is well summarised in T 1028/96 [2] on which the petitioner relies: “However, even if it is not expressly stated in A 24(3), the EPC requires, as a general rule, that objections be reasoned, i.e. indicates facts and arguments which are alleged to support such objection. From this requirement it follows, firstly, that an objection based on purely subjective unreasonable doubts which exist only in the mind of the objecting party should be rejected as inadmissible. It also follows that if facts and arguments filed cannot support the objection of suspected partiality raised, the objection is likewise inadmissible. Thus the threshold to be crossed over by a party calling the composition of the Board into question also comprises this formal precondition.” (emphasis added) Therefore, as far as the substantiation is concerned, the Board has to verify that the objection is based on “facts and arguments” which at least indicate that the reason for objection is a reason that is acknowledged as such by the law. [2] The objection of the petitioner is based exclusively on the fact that all three members of the EBA who were designated to examine whether the petition for review was clearly inadmissible or unallowable according to R 109(2) were also members of Technical Boards of appeal (TBA) or the Legal Board of appeal (LBA). The petitioner has made clear that it has no objection against the three members based on their personal behaviour or interests and that it would also object to any other member of the EBA who also was member of a TBA or the LBA. However, not without some contradiction, the petitioner has left open whether it would also object to deputy members of the EBA who would have to decide on the objection. Although the objection relies both on possible personal interest and on possible partiality of the members of the EBA, the distinction between personal interest and partiality does not change the fact that the objection is fundamentally based on the fact that the objected members are also members of a TBA or the LBA. [3]
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R 12/09 – Board Work Does Not Disqualify EBA Members
When assessing whether the objection is sufficiently substantiated the EBA has to answer the following question: Is the fact of being a member of a TBA or of the LBA on its own a reason which under A 24 has to be considered as a reason for exclusion or objection of a member of the EBA in proceedings under A 112a ? The Board would have to answer this question along the lines proposed by the petitioner unless it came to the conclusion that it would contradict the intention of the legislator to cover this situation under A 24. When the Board during the oral proceedings pointed out that the present proceedings for deciding on petitions for review have always been foreseeable for the legislator, the petitioner answered that this was outside its responsibility and that it was not its fault if the implementation of A 112a was ill-conceived and had been carried out in a “sloppy” (schlampig) way. However, the EBA is of the opinion that the legislator’s will cannot be disposed of so easily. Quite to the contrary, the EBA owes it to the public and other parties who wish to file petitions for review under A 112a in the future to establish certainty on the legislator’s will, so as to ensure that it is enforced. [4] The legislative history of A 112a shows that it has to be understood as an extraordinary legal remedy for a limited case of very particular and serious procedural violations (see R 1/08 [2.1] and the documents concerning the travaux préparatoires cited therein). Document CA/PL 17/00 makes clear in its paragraphs 13 to 20 that two existing judicial bodies have been considered as possible alternatives for dealing with petitions for request, i.e. the Boards of appeal or the EBA. The explanations contained in the basic proposition for the revision of the EPC (document CA/PL 25/00) concerning the actual A 22, which governs the composition of the EBA both for proceedings under A 122 and for proceedings under A 112a, are also to be taken into account. From this it follows that the legislator has intentionally taken the decision to entrust the handling of petitions for review to the EBA as a body existing at that time and having appointed members, being fully aware of the fact that most of these members are also experienced members of TBA or the LBA. [5] It also follows that the legislator has intentionally taken the decision not to use the EBA in the only composition that existed at that time, i.e. a seven-member composition (see paragraph 17 of document CA/PL 17/00) but in a composition comprising two legally qualified members and one technically qualified member, for the “filtering” assessment whether the petition for review was clearly inadmissible or unallowable, or in a composition comprising four legally qualified members and one technically qualified member, for the full examination of the petition for review (see paragraphs 19 and 20 of document CA/PL 17/00 and paragraph 4 of document CA/PL 25/00). As at the time of the legislative proceedings many legally qualified and all technically qualified members of the EBA also were members of the TBA or of the LBA, the intention of the legislator can only have been to use these members also in proceedings under A 112a. It also becomes clear that the provision that is now found in R 109(2), which the petitioner considers to be in contradiction with the articles of the EPC, has arisen at the same time as A 112a itself. [6] Even if one considers the proceedings for the handling of petitions for review to be insufficient, as does the petitioner, these proceedings correspond to the structure provided by the legislator. It is unambiguous to the Board that the legislator, by entrusting the handling of petitions for review to members of the TBA and the LBA in their quality of members of the EBA, has expressed its intention that this double function on its own is not a reason for the exclusion or objection of such members carrying out this task. It cannot possibly have been the intention of the legislator to create a judicial system for the handling of petitions for review the functioning of which could be undermined or even prevented from the start via A 24. Therefore, the facts and arguments filed by the petitioner cannot support the objection; the objection has to be dismissed as inadmissible. [7] To read the whole decision (in German), click here.
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K’s Law – The e
T 553/08 – The Holistic Look
K’s Law – The ebook
T 553/08 – The Holistic Look 15 Jan 2010
The patentee filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form. At the oral proceedings (OPs), it submitted a new main request comprising claims 1 to 6 (“Use of a fusion protein …”), Claims 7 to 11 (“An isolated polynucleotide molecule …”), Claims 12 to 16 (“An isolated polypeptide …”), Claims 17 to 31 (“Use of a compound …”) and Claim 32 (“Use of an antibody …”). Claims 1 to 6 were identical to the claims allowed by the OD. Claims 1 to 6 of [the main] request [filed during OPs] correspond to the claims of the request accepted by the OD with the omission of the medical condition “renal neoplasms” in claim 1. In accordance with the principle of prohibition of reformatio in peius, a claim request which would consist exclusively of claims 1 to 6 accepted by the OD could not be challenged on appeal as the opponents did not file any appeal. In contrast, the present situation is that claims 1 to 6 (with the deletion of an embodiment in claim 1) are part of a new request comprising 32 claims. Like all new requests, this request is to be considered as a whole, which means that in the framework of the appeal, claims 1 to 6 would also be open to question. [1] In other words: the non reformatio in peius doctrine cannot be applied to parts of a request. Either it protects a request as a whole against attacks, or it is of no use whatsoever. To read the whole decision, click here.
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T 1335/08 – Second Thoughts Not Welcome
K’s Law – The ebook
T 1335/08 – Second Thoughts Not Welcome 15 Jan 2010
In this case the Opposition Division (OD) maintained the patent in amended form. Only the opponent filed an appeal. In its preliminary opinion, the Board expressed the opinion that the claim as maintained by the OD contravened A 123(2). On October 21, 2009, he patentee then filed several amended sets of claims in replacement of the claims on file. On November 19, 2009, two weeks before the oral proceedings (OPs) the patentee changed its mind and announced that the claims as maintained by the OD were to form auxiliary request I. The present requests go back to the previous wording of claim 1 including the contested feature. Even if they were already filed firstly with the reply to the statement of grounds of appeal and then as auxiliary requests by telefax dated 19 November 2009, the present requests were filed in replacement of the requests filed with letter dated 21 October 2009 and thus represent a further amendment to the respondent’s case. As such, pursuant to Article 13(1) RPBA, the present requests may be admitted and considered at the Board’s discretion. [5] Article 13(1) RPBA makes clear that in exercising that discretion, the Board must consider a range of factors including inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. [6] The respondent submitted that the objection under A 123(2) related to a feature already present in claim 1 as granted and that, therefore, it was an objection under A 100(c). Since A 100(c) was not one of the grounds of opposition invoked by the opponent on filing its notice of opposition, and since it had not been properly discussed at the OPs before the OD, this objection had to be excluded from the appeal proceedings. This is a fresh issue that was raised for the first time during the oral proceedings before the Board. It would need to be discussed if the respondent’s requests were admitted. The discussion of this issue would lengthen the proceedings, since the appellant could not be expected to be prepared for it. Moreover, this issue seems prima facie unfounded. In particular, in all requests claim 1 does not merely consist of a combination of granted claims but also includes features taken from the description. The contested feature is thus presented in a combination which is different from the combination in which it was presented in the claims as granted, and which is objectionable under A 123(2). Accordingly, the respondent’s issue being prima facie unfounded, admitting the requests into the proceedings would adversely affect procedural economy. [7] As explained in the communication annexed to the summons to OPs, the contested feature, present in claim 1 of all requests, according to which the linkage system moves the gripping elements and the lock catch draws its actuating force from the drive for moving the doors, contains subject-matter extending beyond the content of the application as filed, contrary to the requirements of A 123(2). The arguments submitted by the respondent during the OPs did not convince the Board of the contrary. The specific wording of the contested feature cannot be found in the description of the application as filed. More importantly, claim 1 includes the possibility, which is not disclosed in the application as filed, that the force for actuating the levers for releasing the lock catch is directly drawn from the drive moving the doors. In fact, this was not contested by the respondent. The respondent essentially submitted that claim 1 should not be read broadly such as to include this possibility. However, in the absence of clear limitations in the claim itself, the wording of the claim cannot be read as being limited by features which are only present in the embodiment disclosed in the description. The respondent further submitted that the contested feature was not essential for the invention. Whether this feature is essential or not is however irrelevant for assessing whether, in the present case, it introduces subjectmatter extending beyond the content of the application as filed. In fact, the contested feature undisputedly provides a technical information. This technical information, at least in the breadth in accordance with the wording of claim 1, cannot be found in the application as filed. Therefore, the respondent’s requests not being clearly allowable, admitting them into the proceedings would seriously adversely affect procedural economy. [8] 3214 | 3398
T 1335/08 – Second Thoughts Not Welcome
K’s Law – The ebook
Thus, having regard for the current state of the proceedings and for reasons of procedural economy, the Board exercised its discretion under Article 13(1) RPBA not to admit the respondent’s requests into the proceedings. [9] In the absence of any admissible request submitted or agreed by the appellant, the patent has to be revoked. [10] To read the whole decision, click here.
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T 1511/07 – Dangerous Liaisons
K’s Law – The ebook
T 1511/07 – Dangerous Liaisons 14 Jan 2010
The case law of the Boards of appeal has been holding for a long time that “the disclosure of a quantitative range of values (e.g. for concentrations or temperatures) together with an included preferred narrower range also directly discloses the two possible part-ranges lying within the overall range on either side of the preferred narrower range. A simple combination of the preferred narrower range and one of the part-ranges is also unequivocally derivable and is supported by the disclosure”. (T 2/81, headnote 2). The present decision adds an intriguing complement to this position. The patent under consideration concerns a calcium complex. The description of the application as filed contains the following disclosure, immediately after the reference to the embodiments claimed in product claims 1 to 6:
There were no corresponding product claims in the application as filed. After several amendments, the application was finally rejected as contrary to A 123(2). Claim 1 according to the main request filed before the Board read: 1. A metastable calcium complex formed by the interaction of calcium hydroxide with a mixture of lactic and citric acids, wherein: − the weight ratio of the citric to lactic acid is from 1:2 to 2:1 and − the weight ratio of the citric and lactic acids to calcium hydroxide is from 1:1 to 5:1. And the auxiliary request read: 1. A metastable calcium complex formed by the interaction of calcium hydroxide with a mixture of lactic and citric acids, wherein: − the weight ratio of the citric to lactic acid is from 1:2 to 2:1 and − the weight ratio of the citric and lactic acids to calcium hydroxide is from 2.5:1 to 5:1. The Board reasons as follows: According to Claim 1 the weight ratio of the citric and lactic acids to calcium hydroxide is from 1:1 to 5:1. This ratio defines a new sub-range which emerges from a combination of the lower value of the broadest range of from 1:1 to 10:1 with the upper value of the especially preferred range of from 2.5:1 to 5:1 as disclosed in the last two lines at page 3 of the application as filed (represented by the WO-publication). This range was combined with the especially preferred range of 1:2 to 2:1 for the weight ratio of citric to lactic acid disclosed at page 3, lines 30/31 of the WO-publication. Although the selection of explicitly disclosed borderline values defining several (sub)ranges, in order to form a new (narrower) sub range, is not contestable under A 123(2) when the ranges belong to the same list, the combination of an individual range from this list with another individual range emerging from a second list of ranges and relating to a different feature is not considered to be disclosed in the application as filed, unless there is a clear pointer to such a combination. There is, however, no indication in the WO-publication which unambiguously points to the combination of the weight ratio of 1:1 to 5:1 for the citric and lactic acids to the alkaline calcium source with the weight ratio of 1:2 to 2:1 for the citric to lactic acid. The amendment to Claim 1 is therefore an inadmissible combination from two lists and contravenes A 123(2). [2.1]
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T 1511/07 – Dangerous Liaisons
K’s Law – The ebook
However the auxiliary request is acceptable to the Board: […] Both ranges are characterised as especially preferred at page 3, lines 30 to 35 of the WO-publication. In the absence of any information in the application which the skilled person would consider - in view of its impact on the claimed invention - to cast doubt on their combination, identifying the ranges in the two lists as “especially preferred” is, in the Board’s judgment, a clear indication for the intended parallel convergence of the ranges of the two lists; the combination of these two especially preferred ranges therefore satisfies the requirements of A 123(2). [2.2] I have to admit that I find the logic of the Board puzzling. If the (disputable) reasoning of T 2/81 is accepted, there appears to be no reason not to allow a combination of the ‘new’ domain with other features. For some time I have been thinking that the finding of the Board had its origin in the fact that the preferred embodiments contained in the description were not said to be combinable, but the acceptance of the auxiliary request by the Board shows that this cannot be the explanation. Given this weird application of A 123(2), applicants should think twice before taking advantage of T 2/81. There are unexpected hidden traps. NB: This decision has already been discussed here (in French). To read the whole decision, click here.
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T 2049/07 – Novelty and The Erotic Article
K’s Law – The ebook
T 2049/07 – Novelty and The Erotic Article 13 Jan 2010
From time to time applicants argue that their invention is novel when taking into account A 69 EPC and its Protocol of interpretation. This attempt invariably fails because this is not what A 69 was made for. […] The patentee has argued that the additional feature of claim 1 (i.e. that the axis is disposed close to the axis of gravity of a pallet mount (2) filled with a complete pallet stack (18)) has to be interpreted with reference to the description, paragraph 12, and the drawings within the meaning of A 69 EPC. Therefore the tilting axis has to be so “close” to the axis of gravity that an operator can tilt the pallet mount filled with a complete pallet stack with “very little effort”. This would unambiguously determine the limits of the domain within which the tilting axis is situated and would not allow an interpretation wherein the tilting axis was positioned at the edge of the pallet mount, such as in the device of D5. [6] The Board cannot follow this argumentation, for the following reasons: [6.1] The Board follows the opinion expressed in several decisions of the Boards of appeal of the EPO according to which only features that are mentioned in the claims or that can be derived from the latter can be invoked (geltend gemacht) to distinguish the invention with respect to the prior art in an assessment of novelty or inventive step. It is not possible to construe the claim to comprise an (implicit) limiting feature, which is only found in the description or in the drawings, by referring to A 69 and its protocol. See, for example, T 1208/97 [4], T 932/99 [4.3.3], T 681/01 [2.1.1]. Therefore, the domain “close to the axis of gravity” that is given in the additional feature of claim 1 cannot be interpreted in the limiting manner proposed by the patentee, i.e. that this would define a certain more narrow domain wherein an operator can tilt the pallet mount filled with a complete pallet stack with “very little effort”. First, the fact that the device can be easily tilted by “an operator” is not found in any of the features of claim 1. Moreover, this expression itself is undetermined as the opposed patent does not give any indication of such efforts. By the way, the operator is only shown in the drawings. It is not found in the description because paragraph 12 leaves open whether the effort is made by an operator or by an operating machine. Moreover, the it is not always true that only “very little effort” is needed because this only holds true when the height of a complete pallet stack corresponds to the width or the length of a pallet (depending on whether the pallets are set up along their long side or broad side). [6.1.2] Therefore the description and the drawings could not have a limiting effect on the subject-matter of claim 1, even if they were used in favour of the patentee. [6.1.3] To read the whole decision (in German), click here.
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T 129/08 – What’s In The Reservoir ?
K’s Law – The ebook
T 129/08 – What’s In The Reservoir ? 13 Jan 2010
In our previous post we have seen a problem related to the lack of novelty of the main request in case T 129/08. The discussion of the auxiliary requests II and III also contains a paragraph explaining the principle of A 123(2). I like it because it introduces a helpful illustration. […] Claim 1 of auxiliary requests II and II contains the additional feature that the socket (14) is connected to the first groove (38) of the ring (12) via a third (28), a fourth (30), a fifth (32), a sixth (34) and a seventh hydraulic pressure duct (36). [3.1]
For the assessment of the question whether an amendment adds an object (Gegenstand) that extends beyond the content of the application as filed (A 123(2)) it is decisive whether the new object was disclosed in the originally filed documents, i.e. in the description, the claims and possibly the drawings. When carrying out this assessment, the original application must not be considered as a “reservoir of features” (Reservoir von Merkmalen) [or as] a construction game (Baukasten); it rather is a “reservoir of objects” (Reservoir von Gegenständen) which, if disclosed in their entirety, may be claimed in their entirety (see T 1535/07 [1.4]). [3.2] The additional feature mentioned above is disclosed in the original documents within the framework of the single embodiment. As discussed by the Board during the oral proceedings, it follows from the application as filed that in this embodiment the third and seventh hydraulic pressure ducts are arranged in a particular way. The description also states that this particular arrangement of the hydraulic pressure ducts contributes to the solution of the problem of providing a system for feeding hydraulic medium that is easily manufactured. This notwithstanding, claim 1 leaves open how the hydraulic pressure ducts are arranged. However, there is no disclosure that for an identical number of hydraulic pressure ducts the arrangement can be different from the one shown, nor is there a disclosure that the problem mentioned above can be solved with a different arrangement. Therefore, the omission of the specific arrangement of the third to seventh hydraulic pressure ducts corresponds to an inadmissible extension within the meaning of A 123(2). For this reason alone, auxiliary requests II and III cannot be granted. [3.3]
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T 129/08 – What’s In The Reservoir ?
K’s Law – The ebook
NB : ‘Reservoir’ is quite difficult to translate. I finally chose ‘reservoir’, but ‘reserve’, ‘stockpile’ or ‘pool’ would also be possible translations. To read the whole decision (in German), click here.
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T 129/08 – Together Yet Apart
K’s Law – The ebook
T 129/08 – Together Yet Apart 12 Jan 2010
This decision contains an interesting paragraph dealing with a problem that might interest drafters of patent applications concerning mechanical devices. Claim 1 of the main request reads : Internal combustion engine having a cylinder head and at least one camshaft (74) which is mounted on the latter and actuates corresponding gas exchange valves on the cylinder head in a manner driven by a crankshaft, a camshaft adjuster (76) being provided on the camshaft (74), which camshaft adjuster (76) rotates the camshaft (74) relative to the crankshaft by means of hydraulic pressure in order to change control times of the gas exchange valves, a feed apparatus for feeding hydraulic pressure to the camshaft adjuster (76) being provided and being configured as a separate component (10) from the cylinder head and having a ring (12,13) for each camshaft (74), […], characterized in that each ring (12,13) surrounds a section of the camshaft (74) and the respectively surrounded section of the camshaft (74) has two annular grooves (82,84) which are each aligned with a groove (38,42 or 62,60) of the corresponding ring (12,13), each groove/annular groove pair (38/82, 42/84) of a ring (12, 13) being connected via respective hydraulic pressure ducts (86,90) in the camshaft (74) to a hydraulic pressure chamber (88, 92) of the camshaft adjuster (76) which is arranged on this camshaft (74).
[…] It is undisputed that E2 discloses a combustion engine according to the preamble of Claim 1. This engine comprises […] a camshaft (2) and […] a camshaft adjuster (3), a feed apparatus for feeding hydraulic pressure to the camshaft adjuster being provided, which […] comprises a ring (23) for each camshaft […] [2.1] NB: Reference 23 of E2 refers to a borehole; the correct reference for the ring is 37.
[…] As far as the characterising portion of claim 1 is concerned, according to which each ring surrounds (umgreift) a portion of the camshaft, E2 undisputedly discloses (Fig. 1) that each ring (23) surrounds a portion of a ring part (27) which is connected with the camshaft so as to rotate therewith (drehfest). The patent proprietors contest that this ring part is to be considered as belonging to the camshaft. As a matter of fact, the patent proprietors are to be approved in that, when the engine of E2 is dismantled, the skilled person would distinguish between the “bare” camshaft (2, i.e. the shaft with its cam without the additional parts shown in Fig. 1) and the ring part (27), because these parts are then separated. However, the skilled person would not necessarily differentiate them when the engine is assembled, because then the ring part (27) is mounted so that it rotates therewith and is and axially undisplaceable (at least because of screw 26) manner on the “bare” camshaft (2) so that the ring part (27) and the “bare” camshaft (2) form a single construction unit. This construction unit consisting in the “bare” camshaft and the ring part can be designated as “camshaft”. In other words, there is no clear borderline between pieces that are fixed to each other and which on one hand belong to the camshaft, and on the other hand do not belong to it (zwischen miteinander fest verbundenen Teilen, die einerseits der Nockenwelle zugehörig sind und andererseits der Nockenwelle nicht zugehörig sind), because such a borderline depends on the circumstances under which the camshaft is considered (dismantled, mounted in the engine, during dismantling, …). Therefore, E2 discloses that each ring (23) surrounds a portion of the camshaft, i.e. the portion 34 of the ring part 27 belonging to the camshaft. [2.2]
3221 | 3398
T 129/08 – Together Yet Apart
K’s Law – The ebook
[…] Claim 1 cannot be considered to be novel over E2. [2.4] I do not find this reasoning persuasive, because the claim is directed to an assembled engine and not to a set of engine parts. Therefore, the considerations concerning the engine when disassembled or when being disassembled do not really seem relevant. Either a piece is part of the camshaft or it is not. E2 rather suggests the ring part is not. The relevant question (which has not been discussed) appears to be whether the feature that the ring ‘surrounds’ (umgreift) the camshaft is still reproduced by a ring that surrounds a ring part that is fixed to the camshaft. Personally, I would say that it is, even though the German verb ‘umgreifen’ might suggest a more direct contact that its translation ‘surround’. Anyway, even if novelty were acknowledged, there might be a good case for arguing that Claim 1 was not inventive over E2. To read the whole decision (in German), click here.
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K’s Law – The ebook
Publish Or Perish (ctd.)
Publish Or Perish (ctd.) 12 Jan 2010
Some time ago, I made a graphic comparison of the publishing activity of DG3 in 2008 and 2009. Now we have the definitive figures for 2009, which are quite impressive, indeed.
In 2009, the EPO published 1751 decisions of Boards of appeal, which is about one third more than in 2008 (1325 decisions). One may expect that case law bloggers will not be redundant in 2010.
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T 422/07 – Overzealous But Not Partial
K’s Law – The ebook
T 422/07 – Overzealous But Not Partial 11 Jan 2010
Is it a good thing to have Examiners who are EQE-proof ? Well, it should do no harm to have legally competent interlocutors in first instance proceedings. Sometimes, however, deeper knowledge of patent law and its hot spots might make Examiners feel that A 54, A 56 or A 123 are boring stuff and that there are more exciting things to be discussed in notifications. Maybe this is what happened in the present case. Be that as it may, the applicant, after having filed a second generation divisional, received an unusual notification from the Examining Division (ED): “Present claim 1 is directed to essentially the same subject-matter as claim 1 of the parent application as granted, as well as claim 1 of the grandparent application as granted, but attempts to define this subject-matter in broader terms than the parent application. However, the examining division is of the opinion that claim 1 of the parent application as granted did not contain any nonessential features, and that each of the features that have now been omitted is in fact indispensable for claim 1 to satisfy the requirements of Articles 76(1), 84 and 52(1) EPC. […] These matters were already discussed at length and in every detail during the examination of the parent and the grandparent application, in particular during the oral proceedings held in respect of each of these applications. In addition, only a single invention was defined in [the application] as originally filed. The present application therefore would not appear to result from an apparent lack of unity within its parent application but rather from the desire to avoid a final decision on the scope of protection derivable from the original application. This is considered an abuse of the instrument of a divisional application since it has the effect that the EPO is prevented from fulfilling one of its essential tasks which is to serve the interest of the public in knowing the scope of protection finally resulting from a European patent application as soon as possible. The examining division is convinced that cascaded divisional applications must not be used for the mere purpose of evading a decision by an instance of the EPO considered unsatisfactory by the applicant since this would render any substantive examination carried out by the EPO meaningless. If such a practice was allowed, applicants could keep the public in a state of uncertainty about the final scope of protection derivable from a patent application until the very end of the term of a European patent fixed in Article 63 EPC. This would clearly be most detrimental to economic development which the patent system is supposed to promote. In the examining division’s opinion, the present second generation divisional application aims at reopening and continuing the discussion on the scope of protection that might be granted by the EPO in respect of the invention already claimed in both the grandparent and the parent application. This is considered incompatible with the true and only purpose of a divisional application which is to allow applicants to divide out a part of an application not linked with the remaining part by a common inventive concept within the meaning of Article 82 and Rule 30 EPC. The above conclusions would appear to be in line with the guiding principle of the decision T 797/02 according to which "the examining procedure at the EPO must be conducted in such a way as to ensure that, within a reasonable period of time after the filing of a patent application, the public should have a fair knowledge of the extent of the exclusive rights sought by the applicant", and according to which it would be unacceptable "to leave the public completely uncertain during most of the life of a patent as to how much of the subject-matter of the original patent application might still be claimed" (see point 2.2 of the reasons). As regards the decision T 587/98, which might also be considered (cf. the Guidelines C-VI, 9.1.6), it is noted that this decision, in contrast to T 797/02, is not concerned with cascaded divisional applications, but rather with the problem of double patenting, and that the A <--> A plus B situation referred to in this decision does not prevail in the present case since none of the claims of the parent application as granted includes al1 the features of present claim 1 plus an additional feature. The decision T 587/98, therefore, is not considered to be particularly relevant to the present case. For the above reasons, the examining division considers the present application an invalid divisional application, and it appears that it may have to be refused, if for this reason alone. […]” 3224 | 3398
T 422/07 – Overzealous But Not Partial
K’s Law – The ebook
After a discussion of why A 76 was violated by the divisional application, the notification went on : “lrrespectively of the objection raised at point 1 above, it would definitely expedite the examination of the present application if the applicant did not insist on discussing issues again, that have already been discussed in the proceedings for the parent and/or the grandparent application, given that it is unlikely that the examining division would change its mind on matters already decided, unless the applicant presented new facts or evidence. However, if the applicant so wished, and supposing that the fundamental deficiency mentioned at point 1 above can somehow be overcome, the examining division would of course reiterate its objections against the omission of features like […] » The applicant raised an objection of partiality, against the primary Examiner, which appears not to have had any tangible effect. The application was finally rejected because the ED considered “the present application as an ‘abuse’ (in a purely technical, rather than a moral sense) of the instrument of a divisional application”. The applicant filed an appeal. The Board decided to comment on the partiality issue: While it is acknowledged that the style of the first communication issued by the ED on 7 October 2005 might have created the impression that the opinion expressed therein would have been definitive and hardly affected by later arguments to be presented by the appellant, the Board does not identify in the file wrapper any evidence that the right to be heard would have actually been denied in the course of the ensuing examination procedure. In particular, the detailed minutes of the oral proceedings (OPs) before the ED on 8 September 2006 reveal that the appellant had well the opportunity to defend his views before the first instance’s department. There is also no evidence that the arguments put forward by the appellant/applicant would not have been considered by the ED before it reached its decision. On the contrary, the decision to refuse the application does address such arguments which were put forward by the applicant during the preceding written and oral proceedings. [2.1] In conclusion, the suspicion of partiality appears to result essentially from the impression produced by the wording of the first communication, for which the primary examiner later apologized, and is not corroborated by any later behaviour which would have fundamentally affected the procedure before the ED so as to bias its decision. For these reasons, the Board does not regard a remittal to the first instance’s department under Article 11 RPBA to be justified. [2.2] The Board then adds some interesting comments concerning the “abuse of the instrument of a divisional application”: In decision G 1/06 [headnote and 13.5] the Enlarged Board of Appeal (EBA) ruled that: “In the case of a sequence of applications consisting of a root (originating) application followed by divisional applications, each divided from its predecessor, it is a necessary and sufficient condition for a divisional application of that sequence to comply with A 76(1), second sentence, that anything disclosed in that divisional application be directly and unambiguously derivable from what is disclosed in each of the preceding applications as filed”. It further held in section 13.3, with regard to the principle according to which the public should have a fair knowledge of the extent of the exclusive rights conferred by a patent, that this principle “is no basis for the boards of appeal or other instances of the EPO themselves to restrict the rights of applicants in a manner not warranted by any specific provision of the EPC, such as R 25(1) EPC”. Applied to the decision in suit, the conclusion arrived at by the EBA implies, contrary to the view expressed by the ED in its refusal, that no abuse can be identified in the mere fact that the claims of the application on which the ED had then to decide had a broader scope than the claims granted in relation with the parent application. The same conclusion applies to current claims 1 to 3 according to the current sole request on file, the subjectmatter of which partly overlaps with the subject-matter of the claims granted in relation with the parent application. It follows that the issues that have to be decided in relation with the current request concern the requirements set out in A 123(2) EPC 1973 and A 76(1) EPC 1973 regarding added subject-matter, A 56 EPC 1973 as to inventive step and clarity in the sense of A 84 EPC 1973. [3] Finally the Board remitted the case to the ED with the order to grant a patent. To read the whole decision, click here.
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T 1928/06 – Close As Close Can Be ?
K’s Law – The ebook
T 1928/06 – Close As Close Can Be ? 9 Jan 2010
This decision deals with the determination of the “closest prior art” for a claim comprising both technical and non technical features. In the statement setting out the grounds of appeal the appellant argued essentially in the following way: The analysis by the examining division (ED) was flawed since it did not include the steps of i) determining what is the closest prior art, then ii) determining the difference between the invention and the prior art, then iii) determining what problem is solved on account of this difference. Instead, the ED had attempted to divide the individual steps of the claim into technical and non-technical aspects before carrying out steps i) to iii). The closest prior art was that disclosed in D1, but the ED had started out from clearly less relevant prior art, viz. a general-purpose computer system. [VI] […] In dividing the claim into technical and non-technical features the ED merely followed the standard examination technique for subject-matter referring to an aim to be achieved in a non-technical field (see T 641/00 ‘Comvik’). [1.3.1] The ED was free to start out from a (notorious) general-purpose computer system. As the appellant itself recognises, an invention must satisfy the requirements of inventive step over any prior art. Thus, the ED was not in any way obliged to choose D1 as the “closest” prior art. In any case, selecting as starting point prior art that comes “closer” to the invention in terms of its non-technical features (here: D1 anticipating aforementioned steps (a) and (b) of the claimed method) would not improve the prospects of patentability since these only depend on the technical aspects of an invention, which remain unchanged by such selection. [1.3.2] To read the whole decision, click here.
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T 51/08 – The EPO Won’t Read Between the Lines
K’s Law – The ebook
T 51/08 – The EPO Won’t Read Between the Lines 8 Jan 2010
As we have seen in my preceding post, the Board has rejected the sole set of claims on the grounds of res judicata. The applicant tried to save his application by pointing out that the dependent claims should be considered as “a kind of auxiliary request”. The Board is not prepared to accept this approach: […] It is well established practice that an applicant can file a main and auxiliary requests. However, if he wishes to do so, this has to be clearly indicated. The applicant has to identify which requests he wants to have examined and in which order. Dependent claims are indeed potential fall-back positions in case the independent claim is not allowable. However, they cannot per se be considered as being submitted as independent claims and forming auxiliary requests, as long as they are not expressly requested and formulated. Assuming that dependent claims are auxiliary requests would be pure speculation and would be in conflict with the principle of party disposition which is enshrined in A 113(2) EPC 1973 and according to which it is the applicant who sets the framework of the examination by his requests. [9] To read the whole decision, click here.
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T 51/08 – Divisionals Can’t Revive Dead Claims
K’s Law – The ebook
T 51/08 – Divisionals Can’t Revive Dead Claims 7 Jan 2010
In the present case, the Examining Division (ED) rejected a divisional application for lack of inventive step. In its appeal, the applicant did not argue against that finding but filed a new set of claims. Claim 1 of this set corresponded to Claim 1 of an auxiliary request that had already been refused in a decision concerning the parent application. The question to be decided is whether the statement setting out the grounds of appeal meets the requirements of A 108, third sentence. According to the established jurisprudence of the boards of appeal the statement of grounds should specify the legal and factual reasons on which the case for setting aside the decision is based. This is now also enshrined in R 99(2) . The arguments must be clearly and precisely presented to enable the board to understand immediately why the decision under appeal is alleged to be incorrect. In the present case, no reasons at all were given as to why the decision of the ED was wrong. [1] Instead the appellant filed an amended set of claims. It is accepted in the jurisprudence that an appeal may be admissible if, despite its not being clear from the statement of grounds why the contested decision is incorrect, claims are put forward which overcome the objections of the department of first instance or remove the factual or legal basis for the rejection (T 729/90). The idea is that an appellant should not be forced to pursue claims which he accepts are not allowable or he is no longer interested in and where he is prepared to amend the application in order to meet the first instance objections. It would be pure formalism which serves neither the appellant nor the board of appeal if he were to be compelled to provide arguments relating to the decision under appeal before being entitled to submit amendments during the course of the appeal procedure. [2] In the present case, the appellant has submitted a set of 18 claims which undisputedly corresponds, at least in its independent claims, to auxiliary request two of decision T 1180/04 concerning the parent application. In decision T 1180/04, the then competent board decided that independent claims 1 and 12 were not inventive and dismissed the appellant’s appeal. In G 1/97 [2(a)] the Enlarged Board of Appeal (EBA) stated that decisions of the boards of appeal become final as soon as they are issued. This means that the board’s ruling becomes binding. This principle of res iudicata is generally accepted in the contracting states and acknowledged by the boards of appeal (see e.g. J 3/95 and T 167/93). The meaning of the legal term res iudicata is old and well-established: it defines “...a matter finally settled by a Court of competent jurisdiction, rendering that subject matter conclusive as to the rights of the parties and their privies”. Such a final judgement by a court of competent jurisdiction therefore constitutes an absolute bar to a subsequent legal action involving the same claim, demand or cause of action, and the same parties or privies (T 934/91 [3]). Once a final judgement has been handed down, subsequent judges who are confronted with a suit that is identical to or substantially the same as the earlier one and between the same parties, are prevented from deciding on it a second time. [3] The appellant was of the opinion that the principle of res iudicata could not be applied in the case of a divisional application when a decision on the same subject matter had been taken by a board of appeal in the case of the parent application. The board cannot share this view since it is inherent in the principle of res iudicata that subsequent proceedings should be avoided. The res iudicata maxim is based on the need for an end to all litigation. It provides legal certainty, while taking account of the general public concern for the settlement of disputes (expedit rei publicae ut finis litium sit). It prohibits parties from challenging what has already been decided (J 3/95 [6]). It must be avoided that the same case is decided twice, possibly with a different outcome. The divisional application gives the applicant, within certain limits, the possibility to pursue the same subject matter as in the parent application. Since the aim of the res iudicata maxim is to avoid re-litigation of the same subject matter by the same parties, it must inevitably apply to a divisional application. [3.1] […] J 27/94 deals with a different situation. In [this decision] the board of appeal decided that the department of first instance is not bound by a decision of a board in which the board had decided on a specific legal problem, when the same legal problem arises in another case. Moreover, while it is true that A 111(2) EPC 1973 provides 3228 | 3398
T 51/08 – Divisionals Can’t Revive Dead Claims
K’s Law – The ebook
for the binding effect of a judgment only for the decided case, the general principle of res iudicata goes beyond this and aims at avoiding any subsequent ruling on the same subject matter in other proceedings between the same parties. [3.3] It follows from the preceding that the set of claims submitted with the statement setting out the grounds of appeal has become res iudicata. Since the board cannot take a decision on this subject matter, it can not be pursued in the present application. [4] The next question which needs to be answered is what consequence this has for the admissibility of the appeal. […] The appellant submitted that the question of whether the amendments overcome or are capable of overcoming the objections of the department of first instance concerns the allowability rather than the admissibility of the appeal. However, a substantive examination presupposes that the board is entitled to perform this examination. In the present case, the board is prevented from doing so for procedural reasons. The board does not even have a discretion it could use in the appellant’s favour. Therefore, the amendments could not from the outset remove the factual or legal basis for the rejection. [5] […] The statement of grounds is not just an intermediate step in the procedure, but sets the framework of the appeal within which the board will perform its substantive examination. Submitting amendments on which the board is prevented from deciding does not leave any room for such an examination. There is no case for the Board to examine. This is clearly in contradiction to the purpose of the requirement of giving grounds of appeal, which would degrade the statement of grounds to a purely formal act. [6] The statement of grounds of appeal does not meet the requirements of A 108, third sentence and R 99(2). Therefore the appeal is to be rejected as inadmissible according to R 101(1). [10] NB: This decision has also been discussed here (in French). To read the whole decision, click here.
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T 18/09 – A Pipeline Ain’t No Motorway
K’s Law – The ebook
T 18/09 – A Pipeline Ain’t No Motorway 7 Jan 2010
We have already studied several passages of this decision. When discussing the inventive step involved in the claims of the request on file, the opponent pointed out that the claimed subject-matter would have been obtained by means of “pipeline screening”. The Board dismisses this approach as being unrealistic. […] The [opponent] proposed also “pipeline screening” as a way which would be envisaged by the skilled person to arrive at the claimed subject-matter, i.e. a method based essentially on an analysis of freely available, unidentified EST (Expressed Sequence Tag) sequences for similarity to sequences available from a publicly available database of annotated protein sequences using publicly available search software. [43] Whereas an automated pipeline screening might avoid the selection of a particular EST clone with the hindsight knowledge of the patent-in-suit, the screening of the complete EST sequences of a public EST database (such as those of the IMAGE Consortium) against the sequences of a public protein database (such as Swiss-Prot) would not have been performed out of idle curiosity, in view of the sheer size of these databases and the effort and resources required, but only with a specific technical purpose or target in mind. Indeed, depending on the intended purpose, the search programs, values and parameters used to carry out the automated pipeline screening would have to be defined and selected accordingly by the skilled person. In fact, there is a difference between looking for members of a protein family which are known to have high sequence identity and looking for members of a protein family having only a low sequence identity. Again, differences might arise when sequence identity is known to be homogeneously spread across the complete sequence of the proteins or when it is only limited to a unique (highly) conserved domain. [44] Evidence for such a selection is found in document D86 which refers to the use of both BLAST and FASTA, the latter used for searching copies of specific (spliced-leader) sequences. Evidence is also on file showing that FASTX and BLASTX were also available to the skilled person at the filing date of the patent-in-suit and that the results obtained might be different depending on the search program used and on the parameters and values selected for running those programs. [45] In the view of the [opponent], document D86 shows that automated pipeline screening of EST clones of a cDNA library was a standard method at the filing date of the patent-in-suit performed by the skilled person with no purpose in mind other than the broad determination of putative encoded proteins. It is noted, however, that the method disclosed in document D86 does not use all the EST clones of the cDNA library described in that document but, as a first step, refers to a random selection of EST clones that significantly reduces the number of distinct clones and EST sequences to analyze (585 clones generating 720 EST sequences). That number is much lower by far than that of the EST sequences present in public EST databases (GenBank, EMBL, IMAGE Consortium) available to the skilled person at the filing date of the patent-in-suit. The sheer number of EST sequences in these public databases (hundreds of thousands) renders any comparison of time, effort and resources completely inappropriate. [46] Indeed, not even the [opponent] appears to rely on such a broad approach. By pointing to the references in document D86 to the searches of daily updates of these public EST databases and to the pre-selection of sequences to remove high copy number cDNAs, as well as to other possible criteria (such as the removal of EST sequences encoding proteins of known and/or highly present protein families), the [opponent] acknowledges that an appropriate starting point for an automated pipeline screening would not be the complete EST sequences of a public EST database but a particular selection of these sequences. [47] In view of the large number and particular nature of possible criteria that may be used to carry out the selection of those EST sequences as well as the programs, parameters and values that should have to be selected accordingly, the board comes to the conclusion that no particular prior art, i.e. no particular group of EST sequences, has been clearly and unambiguously identified as a starting point for an automated pipeline screening nor has a document been clearly identified as representing that closest prior art. Moreover, there is no evidence on file demonstrating with certainty that each and every one of the suggested selections, or at least most of them, would have contained at least one EST sequence encoding (part of) the Neutrokine-α sequence of the patent-insuit, such as those shown in documents D2, D22 or D24, and that with an automated pipeline screening the skilled person would have been in a position to recognize that sequence immediately and successfully retrieve it. 3230 | 3398
T 18/09 – A Pipeline Ain’t No Motorway Thus,
in
the
board’s
judgment,
K’s Law – The ebook the
pipeline
I feel I have said enough on biotech, for the time being. To read the whole decision, click here.
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approach
is
untenable.
[48]
T 18/09 – Skilful Cherry-Picking
K’s Law – The ebook
T 18/09 – Skilful Cherry-Picking 6 Jan 2010
The present decision also dwells on an EPC requirement that is not discussed very often: industrial applicability. Whereas this requirement is almost always fulfilled in the field of mechanics, things are less clear-cut in biotechnology. [...] Both parties agreed, as does the board, that on the basis of its structural properties, Neutrokine-α has been correctly identified in the patent-in-suit as a new member of the TNF ligand superfamily. No reasons have been put forward to dispute this conclusion. A large body of post-published evidence on file supports this finding. The question arises under A 57 whether this in itself suffices to suggest a practical way to exploit the claimed invention which is centred on Neutrokine-α, thereby providing an “immediate concrete benefit” (cf. T 898/05). [21] As pointed out in T 870/04 [5-6], in many cases the allocation of a newly found protein to a known protein family with known activities suffices to assign a specific function to the protein because normally the members of the family share a specific function. This may be a well-characterized and perfectly understood function which provides in a straightforward manner enough support for industrial applicability. In such cases, the “immediate concrete benefit” is manifest. In other cases, where the members of a protein family have different, pleiotropic effects which may even be opposite and neither completely characterized nor understood, no effect can be assigned to a new member without relying on some experimental data. Between these two extreme situations, a variety of other situations may arise for which a detailed examination of all the facts may be required. Indeed, this is the case for the TNF ligand superfamily. [22] As known in the art and acknowledged in the patent-in-suit, all members of the TNF ligand superfamily are known to participate in the regulation of (immune) cell proliferation, activation, and differentiation, and are involved in various medical conditions. […] In view of the assignment of Neutrokine-α to the family, the skilled person expects it to display this common feature, the relevant question here being whether anything in the patent specification contradicts this expectation. [23] The patent specification, besides providing the undisputed structural identification of Neutrokine-α as a member of the TNF ligand superfamily, also provides some further relevant technical data which are fully in line with the expected properties of a member of that superfamily. […] In the light of the common general knowledge of the TNF ligand superfamily and its properties, no serious doubts can be cast on this explicit additional information. Nor can this information be taken as a mere theoretical or purely hypothetical assumption. First of all, it is plausible and, secondly, there is ample post-published evidence on file confirming both the presence of Neutrokine-α on activated T-cells and its ability to co-stimulate T-cell proliferation. [24] The [opponent] has nevertheless argued that, in view of the numerous contradictory statements and of the broad range of conditions and diseases referred to in the patent-in-suit, the skilled person would have disregarded such information as constituting only hypothetical assumptions, or speculations with no actual significant relevance. [25] The board cannot agree with this view. When reading the patent specification, a skilled person would distinguish the positive technical information such as that mentioned above from other allegedly contradictory and broad statements found in the patent-in-suit, such as - in the [opponent’s] view - the wide range of activities and conditions for which Neutrokine-α could be useful. This is because the skilled person realises that the description of the structure of Neutrokine-α, its structural assignment to the family of TNF ligands, and the reports about its tissue distribution and activity on leukocytes, are the first essential steps at the onset of research work on the newly found TNF ligand superfamily member. In view of the known broad range of possible activities of such a molecule, the skilled person is aware of the fact that the full elucidation of all properties requires further investigations which will gradually reveal them. In this context, the skilled person regards the long listing of possible actions of Neutrokine-α and of medical conditions in which it might take part as the enumeration or generalisation of the properties of the members of the TNF ligand superfamily. This is seen as the frame in which the newly found molecule has to be placed as one could prima facie have a reasonable expectation that most of them could in fact be present. At any rate, none of these specific conditions and/or activities is actually claimed and the language used in the specification is in many instances quite prudent. [26] 3232 | 3398
T 18/09 – Skilful Cherry-Picking
K’s Law – The ebook
Filing patents with such long lists of conditions and activities and subsequently relying on the few which have been confirmed or demonstrated is what the [opponent] criticised as a “boiler-plate” and “cherry-picking” practice. It can certainly be argued whether or not such a practice is proper but it is significant that the [opponent] acknowledged, albeit in the form of criticism of the [patentee], that it is a practice used by patentees, and the [patentee] pointed to document D150 (the [opponent’s] own US patent). Thus, the skilled person is acquainted with this practice and able to differentiate mere “boiler-plate” from positive technical information. In the present case, the description of the patent delivers sufficient technical information, namely the effect of Neutrokine-α on T-cells and the tissue distribution of Neutrokine-α mRNA, to satisfy the requirement of disclosing the nature and purpose of the invention and how it can be used in industrial practice. [27] As regards the effect on T-cells, the [opponent] argued that, in view of the technical difficulties involved in measuring the co-stimulation of T-cells by Neutrokine-α and in the absence of any detailed experimental information on the activities of Neutrokine-α listed in the patent-in-suit, the skilled person would not have been able to reproduce them without the undue burden of undertaking a research programme. Moreover, in its view, no industrial application can be directly derived from a mere co-stimulation of T-cells. [28] The board cannot accept this line of argument. Firstly, in the light of the great number of documents concerned with known members of the TNF ligand superfamily which – as explicitly acknowledged in the patent-in-suit – disclose standard assays for measuring their activities and effects on (immune) cells, no particular effort would be required to verify the co-stimulation of T-cells by Neutrokine-α. Even though a few contradictory results are reported in post-published documents on file, there is also a convincing body of post-published evidence showing that, using standard assays, Neutrokine-α activity is indeed present on T-cells, in particular on mature T-cells at all stages of differentiation. Secondly, the reference in the patent-in-suit to the presence of Neutrokine-α activity in lymphocytes would inevitably prompt the skilled person to look for that activity in all types of lymphocytes, not only in Tlymphocytes but also in B-lymphocytes. There is post-published evidence on file showing that Neutrokine-α activity in B-lymphocytes could be easily measured with standard assays. Thirdly, and contrary to the [opponent’s] view, these activities of Neutrokine-α may represent a valid basis for a possible industrial application. In particular, the inhibition of co-stimulation and/or proliferation of lymphocytes might be prima facie of relevance for certain immune diseases. [29] In the board’s judgment, the tissue distribution of Neutrokine-α mRNA disclosed in the patent-in-suit, in particular the expression of Neutrokine-α mRNA in B-cell and T-cell lymphomas, provides in itself in the context of the disclosure a valid basis for an industrial application. The presence of Neutrokine-α in these lymphomas, which is also confirmed by post-published evidence on file, may be used to develop appropriate means and methods for their diagnosis and treatment based on the disclosure of the patent-in-suit. [30] The [opponent], relying on alleged technical problems, argued that no industrial application could be derived from that information. In particular, reference was made to the absence of any quantitative information on the level of Neutrokine-α mRNA expression, the absence of any evidence showing the presence of Neutrokine-α on the surface of lymphoma cells, a lack of specificity arising from high levels of Neutrokine-α expression and presence in other non-cancerous tissues and the associated side-effects, the difficulties in producing therapeutic and neutralizing antibodies as well as the presence of several biologically relevant products derived from Neutrokine-α which are different from the claimed full-length Neutrokine-α and its extracellular domain [31] Most of these allegations are more related to A 83 than to A 57 […]. In respect of A 83, established case law states that a patent may only be objected to for lack of sufficiency of disclosure if there are serious doubts, substantiated by verifiable facts (cf. T 19/90). It would not be justified and unfair to set a different standard of proof in respect of A 57. [32] None of the [opponent’s] allegations has been substantiated by verifiable facts and thus, in the board’s view, they must be seen as unsupported assumptions. All the more so since the claims are commensurate with the level of the disclosure and are not directed to specific optimised (antibodies) products or related to specific optimised (diagnostic or therapeutic) assay conditions. Moreover, post-published evidence on file shows the production of anti-Neutrokine-α antibodies and their possible application for therapy and diagnosis purposes, confirming the plausibility of the disclosure of the patent-in-suit. [33]
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T 18/09 – Skilful Cherry-Picking
K’s Law – The ebook
Thus, in line with the principles developed in the case law of the Boards of Appeal, the board finds the patent-insuit provides a concrete technical basis for the skilled person to recognise a practical exploitation of the claimed invention in industry. Thus, the requirements of A 57 are fulfilled. [34] Whew! I'm almost finished with T 18/09! To read the whole decision, click here.
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T 18/09 – Clones Are Not Books
K’s Law – The ebook
T 18/09 – Clones Are Not Books 5 Jan 2010
Today we will see that T 18/09 contains some intriguing statements on novelty. [...] Documents D22 and D24 have been cited by the respondent as novelty-destroying documents. They disclose the nucleic acid sequences of clones 129696 (GenBank Accession R16882) and 115371 (GenBank Accession T87299) of the IMAGE Consortium at the Lawrence Livermore National Laboratory in Livermore, California. It is undisputed that the IMAGE clones were freely available to researchers anywhere in the world and Invitrogen Corporation was a known distributor of them. The two documents in question report partial EST (Expressed Sequence Tag) sequences of human origin which are completely uncharacterised und not annotated. Evidence on file comparing these partial sequences with the Neutrokine-α sequence of the patent-in-suit (SEQ ID NO:1) as well as the putative amino acid sequences encoded by these clones and that of Neutrokine-α (SEQ ID NO:2) shows that clone 129696 encodes amino acid residues 208 to 285 of SEQ ID NO:2 and that clone 115371 encodes amino acid residues 211 to 285 of SEQ ID NO:2. However, the nucleic acid sequence of these clones have several undetermined nucleotides and nucleotides different from those reported for Neutrokine-α, as well as sequence frameshifts when compared to the nucleic acid sequence of Neutrokine-α. Thus, the sequences of the IMAGE clones actually given in documents D22 or D24 do not anticipate the claimed subject-matter. [10] Nevertheless, the respondent relied on the declaration of Dr Kikly D84 who, thinking that the said clones actually contained more cDNA sequence than is represented in the documents, ordered the two clones from Invitrogen Corporation and sequenced them. She reports that the longest open reading frame (out of six possible ORFs) of clones 129696 and 115371 actually encodes residues 68 to 285 (i.e. over 75% of the full-length Neutrokine-α polypeptide) and 59 to 285 of SEQ ID NO:2 (100% of the extracellular domain of Neutrokine-α) respectively. Based on these findings and with reference to decision G 1/92, the respondent argued that the IMAGE clones themselves anticipated the claimed subject-matter because they were commercially available, they could therefore be analysed and their analysis would have shown that they contained a nucleic acid molecule which comprised a polynucleotide sequence encoding the same residues 73 to 285 of SEQ ID NO:2, i.e. the extracellular domain of the Neutrokine-α polypeptide. [11] The board, however, does not consider the clones of the IMAGE Consortium to have made “available to the public” in the sense of decision G 1/92 the subject-matter in question. Whereas the product referred to in that decision was a commercially accessible and reproducible product that had been “made available to the public” by a particular prior art use (the purpose thereof being thus fully known), the clones of the IMAGE Consortium of documents D22 and D24 were two clones with no assigned role which were physically present in a collection of about 540,000 clones and were available therefrom. The respondent retrieved them by using the knowledge of the Neutrokine-α sequence of the patent-in-suit in its search query. As a matter of fact, documents D22 and D24 contain no information whatsoever that could have drawn the skilled person’s attention to them as clones possibly related to a member of the human TNF superfamily and thus motivate him/her to investigate them among all the available clones of the IMAGE collection. Although, as argued by the respondent, these two IMAGE clones were assigned specific identification numbers which showed that they were physically individualized and could be ordered and analysed by anyone who so wished, there was nothing in the art that could have led the skilled person in a straightforward manner to these identification numbers and thereby to retrieve the corresponding IMAGE clones. The two specific clones were accessible to the public only as an integral part of the complete clone collection of the IMAGE Consortium. Thus, no comparison is possible with the situation underlying the rationale of G 1/92. [12] Whereas the location of an indexed book in a library hints at the contents of that book and thereby allows its retrieval by interrogation of that library through a direct mental procedure (cf. T 301/87), the position of an IMAGE clone in a particular well on a specific plate, i.e. the identification number of an IMAGE clone, does not provide any indexed information on the nature or the properties of that clone so as to render it accessible to the 3235 | 3398
T 18/09 – Clones Are Not Books
K’s Law – The ebook
public by a similar interrogation. Under these circumstances, their mere existence in a large collection of clones can by no means be seen as a form of implicit disclosure of anything falling under the scope of the present claims. [13] In the board’s view, this conclusion is in line with the normal practice of the EPO to consider the deposition of a strain or a plasmid that contains a recombinant sequence as disclosing only the whole strain or plasmid in toto but not the details or component parts within these entities, i.e. the recombinant sequence. The specific recombinant sequence as such, “the elements which are recognised as essential later on”, is not made available and directly disclosed by the mere deposition of a strain or plasmid containing that sequence (cf. T 301/87). [14] Thus, the claimed subject-matter is considered to fulfil the requirements of A 54. [15] Being ignorant in the field of biotechnology, I should perhaps remain silent, but I have to say that I am somewhat surprised by the reasoning of the Board. The clones were available, obtaining the recombinant sequence was straightforward for a specialist, but still the sequence is not deemed to be disclosed. It sounds a little bit like a departure from “absolute novelty”, and certainly from the logic of G 1/92 (even taking into account T 952/92): the motivation of the skilled person appears to have crept into the novelty assessment. If my understanding is correct - I am open to correction - this might open up a gap between novelty in the mechanical (and even chemical) field and novelty in biotech. It may well be that this approach is justified by the very complex nature of the subject-matter under consideration, but even then I think it would have been appropriate for the legislator (or at least the Enlarged Board) to take the necessary steps. What
do
the
specialists
think
To read the whole decision, click here.
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?
Any
comment
?
T 18/09 – Speed Up, The Judge Said
K’s Law – The ebook
T 18/09 – Speed Up, The Judge Said 4 Jan 2010
The present decision is so rich that I cannot possibly treat it in one single post. The first interesting aspect is of a procedural nature and can be summarised in one sentence: national jurisdictions may ask for acceleration of proceedings before a Board of appeal. As such requests are very rare (this is the first case I am aware of), I found it interesting to have a closer look at how things played out. The decision as such deals with an appeal against the decision of the Opposition Division (OD) to revoke the opposed patent. The opponent had also commenced proceedings in England against the appellant seeking a declaration that the patent was invalid. The first instance decision in those proceedings, issued on 31 July 2008, held that the patent was invalid for lack of industrial application, insufficiency and lack of inventive step. The [patentee] also filed an appeal against that national court decision. When the present appeal to the board of appeal was commenced, the national appeal was pending before the Court of Appeal of England and Wales and was scheduled to be heard in July 2009. [V] On 22 January 2009 the board received a request from the national court to accelerate the proceedings in order to dispose of the present appeal before the hearing of the appeal in the parallel English proceedings. The national court informed the board that the parties were in agreement with the acceleration request. [VI] On 6 February 2009 the board issued a communication to the parties informing them that it would only be possible to give effect to the national court’s request if they would agree that the time limits for filing the written statement of grounds of appeal and reply be at least halved and enclosing a schedule proposing a timetable and other directions based on such abridged time limits which would lead to oral proceedings (OPs) on 17 and 18 June 2009. The parties were directed to inform the board, by no later than 16 February 2009, that they agreed to adhere to that timetable and told that, if so agreed, the schedule would take immediate effect and the summons to OPs would be issued immediately thereafter; however, if either party did not so agree, the usual time limits would apply. The board sent a copy of its communication to the national court. [VII] The [patentee] replied by fax on 12 February 2009 that it supported the proposal and agreed to OPs on 17 and 18 June 2009 but “subject to the agreement of an acceptable timeline for written submissions”. The only indications as to what time it would consider “acceptable” were the statements that it could not file its statement of grounds of appeal by the suggested date of 28 February 2009 but would use its best endeavours to submit the statement “as much before the 13 April 2009 deadline as possible” (13 April 2009 being the due date in the absence of acceleration). [VIII] The [opponent] replied by fax also on 12 February 2009 agreeing the timetable proposed by the board and, in a further fax of 13 February 2009, it answered the [patentee’s] submission by observing that, if the statement of grounds of appeal was not filed until or shortly before 13 April 2009, the even shorter time it would have to prepare and file an appropriate reply would be neither adequate nor equitable. [IX] In a further communication to the parties of 18 February 2009 the board informed them that, in view of the situation, the usual time limits would apply. The board also informed the national court (to which a copy of the communication was sent) that its request for acceleration of this appeal could not be met. [X] On 18 February 2009, the national court asked the board for its best estimate of when it could hold OPs on the basis that the previously proposed dates of 17 and 18 June were not possible. The board replied on 19 February 2009 that its best estimate was late October 2009 if the parties did not agree to any reduction in time for their written submissions and early September 2009 if the parties should agree to such reduced time. On 23 February 2009, a hearing took place in the national court at which the national court postponed its own hearing from July 2009 to December 2009. The parties in the present proceedings were invited by the national court to co-operate with the board about fixing a date for OPs as soon as possible. OPs were subsequently appointed for 20 and 21 October 2009. [X]
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T 18/09 – Speed Up, The Judge Said
K’s Law – The ebook
Although less frequent than acceleration requests from parties, such requests from national courts are possible (see the “Notice from the Vice-President DG3 dated 17 March 2008 concerning accelerated processing before the boards of appeal” at OJ EPO 2008, 220 - hereafter “the Notice”). [1] In the present case, the practical and economic reasons behind the national court’s acceleration request were clear. The board’s decision would affect the patent for all its designated states. On the one hand, if that decision should be to dismiss the appeal, with the effect that the decision of the opposition division (OD) to revoke the patent was upheld, the appeal in the national proceedings would become redundant. The saving of court time five days according to the national court’s judgment of 23 February 2009 would be significant. Further, the saving of costs by the parties if one of the two pending appeals should prove to be unnecessary would be substantial. On the other hand if, as has in fact proved to be the case, the board should allow the appeal then, not least because the parties have raised all the relevant issues in both the national and European appeal proceedings, [the board] should assist [the parties] to have a final decision for states unaffected by the national proceedings before the appeal in those proceedings is prosecuted further. [2] The board agrees entirely with the national appeal court that parties to such parallel proceedings should inform both tribunals of the position as early as possible and ask the appropriate tribunal for acceleration in order to avoid duplication of proceedings. Whether acceleration is requested by one party, or both or all parties in agreement, or by a national court, all parties must accept a strict procedural framework including short time limits (see the Notice, final paragraph). It must also be understood that acceleration can have no effect on the equal treatment of all parties and cannot confer any advantage on any one party. [3] In the present case, as a result of the national appeal court’s further inquiries of the board and its postponement of its own hearing until December 2009, the objective of the acceleration request was achieved and the appeal proceedings were concluded considerably more swiftly than is usual, which would not have been possible without the co-operation between the national court and the board. [4] As already mentioned, there is much more to be said on this decision. Stay tuned. NB: This decision has also been reported here (in French). To read the whole decision, click here.
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T 1302/06 – Minutes Cannot Replace Missing Reasons
K’s Law – The ebook
T 1302/06 – Minutes Cannot Replace Missing Reasons 2 Jan 2010
[…] The reasons for the contested decision are limited to novelty (it indicates the distinguishing features of claim 1 with respect to the closest prior art) and inventive step (the device not being obvious over D1 to D3). There is no discussion on if and why the amended documents satisfy the other requirements of the EPC and in particular A 123(2) EPC. [4] Reasons that are limited to such an extent do not form a logical base for the statement made in the decision that “… the European patent and the underlying invention satisfies the (i.e. all) requirements of this Convention.” The fact that the Opposition Division (OD) has, according to the minutes, expressed the opinion that claim 1 as amended satisfies the requirements of A 123(2), does not alter this finding because a corresponding statement is not justified or even made in the contested decision. Thus the decision leaves open whether the feature of an input device integral with the moving unit – which is not explicitly cited in the original documents but which is essential for the assessment of inventive step – was originally disclosed and is part of the invention. However, without determination of the object of an invention it is impossible from the outset to have a conclusive argumentation concerning inventive step. Moreover, the result of the examination of the object of the invention as such is subject to the obligation to give reasons under R 68(2) EPC 1973 (now R 111(2) EPC), not to mention the fact that that an implicit disclosure, which appears to have been considered by the OD, also needs to be justified, for factual reasons. [5] Therefore the reasons for the contested decision are incomplete and inconclusive on several grounds and, thus, objectively incomprehensible. [6] A decision founded on reasons that are deficient to such an extent is not “reasoned” within the meaning of R 68(2). Such deficiency constitutes a substantial procedural violation that necessitates to set aside the decision and to remit it to the first instance. [7] To read the whole decision (in German), click here.
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J 1/09 – ECT Exam Fee Reduction ? Only Once !
K’s Law – The ebook
J 1/09 – ECT Exam Fee Reduction ? Only Once ! 1 Jan 2010
The present decision deals with a case where the applicant had paid two additional search fees to the EPO acting as ISA under the PCT. When entering the European regional phase, he limited the application to the first group of inventions and obtained a 50 % reduction of the examination fee under R 107(2) EPC 1973. Later on, he filed a divisional application and requested the same reduction, which was not granted. Those familiar with J 14/07 might have a déjà vu experience. The decision is very carefully reasoned; this is why I have translated a rather lengthy portion. […] Article 12(2) of the Rules relating to fees (RRF) 2003 only fixes the reduction of the examination fee to 50 %. As far as the requirements for the reduction are concerned, it refers to R 107(2) EPC 1973. The appellant has to be approved in that the wording of R 107(2) EPC 1973 does not refer to a particular procedural situation and only requires the identity of the object to be examined with the object of the international preliminary examination report (IPER) for the reduction to be granted. According to its wording, the provision would establish a general factual standard for fee reduction and would concern all application proceedings available under the EPC, including divisions and proceedings under R 15 EPC 1973. As the Legal Board of appeal has already stated in its decision J 14/07 [3], R 107 EPC 1973 is to be interpreted as a meaningful coherent whole (Sinnzusammenhang) formed by its two paragraphs and has to be read in the context of the other provisions of the chapter in view of the entry of the international application into the European phase. There is coherence of meaning (Sinnzusammenhang) between both paragraphs because paragraph 1 lists the fees to be paid upon entry into the European phase and fixes the time limit for filing a request for examination. The object of the request for examination is the examination report that is to be established. The corresponding fee is reduced according to paragraph 2 if the EPO has established the IPER for this object. Therefore, it would be contrary to the meaning of the provision to interpret paragraph 2 without any reference to the entry of an international application into the European phase, which is presupposed by paragraph 1. […] If R 107(1) EPC 1973 deals with the particular procedural situation at the entry of an international application, then R 107(2) also has to be read within this legal context and cannot be interpreted as a general provision for fee reduction in any procedure. [6] […] If the wording of R 107(2) EPC 1973 were to be interpreted as a general provision, it would not have had to be inserted in R 107(2) EPC 1973 but would have had to be a provision of the RRF, for the sake of the systematics of the law (aus gesetzessystematischen Gründen). From the fact that the legislator has made such a general provision for a reduction of the search fee in Article 10(2) RRF it follows that it is not due to an “oversight” that the differing provision concerning the examination fee in R 107(2) EPC 1973 is found among the provisions governing the entry of the international application into the European phase. [7] […] The applicant claims the direct application of R 107(2) EPC 1973 but also justifies [the application of the provision by pointing out] that he had already paid an additional search fee for the claimed object during the international phase. However, if R 107(2) EPC 1973 were to be applied directly to divisional applications, this would not be a requirement for granting a fee reduction. The Board would not be empowered to “read” this additional requirement “into” the provision. If a broader interpretation were to be adopted, it would also apply to a divisional application such as the one on which J 14/07 was based: The objection of lack of unity had been raised against the corresponding international application, but no second examination fee had to be paid. Therefore, the applicant filing the divisional application would have the benefit of two fee reductions (i.e. for the
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J 1/09 – ECT Exam Fee Reduction ? Only Once !
K’s Law – The ebook
parent and the divisional application) although he has only paid one examination fee during the international phase of the parent application. [8] Finally, the immediate application of R 107(2) to all proceedings where the object to be examined was the object of an international preliminary examination according to the PCT would lead to the result that all divisional applications of first and subsequent generations based on an object that had been examined in an international application could claim a reduction, irrespective of whether they stem from a “voluntary” division or from a division necessitated by an objection of lack of unity, and, therefore, irrespective of whether during the international phase an additional examination fee was paid. Such “voluntary” divisions would be favoured with respect to “voluntary” divisions of direct European applications because no fee reduction is provided for the latter, although even in these proceedings the examination report will, as a rule, be based on an examination report drawn up for the parent application. The applicant admitted during the oral proceedings that there was no right to fee reduction for “voluntary” divisional applications which stem from an international application, because there was no necessity to pay additional fees during the international examination. However, the wording of R 107(2) does not have such an additional limitation and, as mentioned above, the Board is not empowered to read such a limitation into the provision, as there is no legal basis to do so. [9] In order to refute an argument based on the principle of good faith (Treu und Glauben), the Board then cites G 1/05 [8.1] which reaffirmed the statement of G 4/98 [5] according to which “the procedure concerning the divisional application is in principle independent from the procedure concerning the parent application and that the divisional application is treated as a new application”, and pursues: If the divisional application is to be considered with regard to the legal provisions (relating to fees) ((gebühren)rechtlich) as a new application, the amount of the fees to be paid is determined by the fees that are to be paid for a new application. Therefore it is not relevant whether the divisional application is “rooted” in the international application. Therefore, the present divisional application has to be considered with regard to the legal provisions relating to fees as a “European” divisional application. This legal difference justifies that an object that has been examined during the international phase is treated differently, with regard to the legal provisions relating to fees, in a parent application originating in an international application than in a divisional application. Even if there is the possibility in both cases that the (same) Examiner may rely on an earlier report (established by himself) in the international phase, the legislator is not compelled by the principle of good faith to treat the different applications in the same way. [11] The applicant also pointed out that in view of Article 31(1) of the Vienna Convention on the law of treaties Article 34(3)(a) PCT had to be considered in the interpretation of R 107(2). When creating this provision, the fathers of the PCT had considered the possibility of filing of divisional applications during the national or regional phase. If the applicant had to pay a higher examination fee when filing a European divisional application than for a European parent application which stemmed from an international application, he would be punished with regard to the legal provisions relating to fees and would not take advantage of the possibility of choice offered in Article 34(3)(a) PCT. The Board considers that A 150(2) EPC 1973 requires an interpretation that is in line with the PCT because, whenever EPC provisions are in conflict with the PCT, the PCT provisions shall prevail. However, Article 34(3)(a) PCT does not regulate, neither directly nor indirectly, the amount of an examination fee to be paid for a divisional application in comparison with the fee to be paid for an international application during the national or regional phase. The extension of the IPER to the objects of the invention that were objected to as lacking unity, which is subject to fees (gebührenpflichtig), allows the international applicant to decide whether he should file a divisional application during the European phase at all. Thereby he may possibly save all the fees that fall due upon filing of a divisional application, on the basis of the IPER. For this reason alone the rule is meaningful. Therefore, the interpretation of R 107(2) EPC 1973 by the Board does not legally infringe Article 34(3)(a) PCT nor does it “factually” abrogate it. Therefore, this interpretation does not infringe the criterion given in Article 31(1) of the Vienna Convention according to which the aims and purposes of the rule have to be taken into account, either. [12] As in the present case the reduction of the examination fee is requested for a European divisional application, the procedural situation required by R 107(2) EPC 1973, i.e. the entry of an international application into the European phase, does not exist. Therefore, the request of the appellant for reduction of the examination fee cannot be based on R 107(2) EPC 1973. [13]
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J 1/09 – ECT Exam Fee Reduction ? Only Once !
K’s Law – The ebook
The appellant further claims analogous application of R 107(2) EPC 1973. According to the appellant, the divisional application concerns an object for which he had paid a second examination fee during the international phase of the parent application because an objection of lack of unity had been raised during the preliminary examination. The EPO had also been an elected office for the divisional application issuing from international application. Therefore, the divisional application was also rooted in the international application. Thus the interests involved corresponded to the procedural situation governed by R 107(2) EPC 1973. [14] In order for there to be an analogous application, there would have to be a unintended legal loophole (planwidrige Regelungslücke) and moreover the interests to be regulated would have to correspond to the interests which are regulated by the provision that is to be applied analogously. The analogous application of the provision has to lead to a rule that is generally applicable and which the legislator would presumably have ordered had he had knowledge of the legal loophole. [15] The appellant may be approved in that, from the point of view of the applicant, there is an interest in having a fee reduction for a divisional application, in the same way as for a European patent application originating from an international application, when he has paid a second examination fee during the international phase. However, this interest in having a fee reduction does not establish a legal loophole. The amount of the examination fee to be paid results from A 94(2) EPC 1973 together with Article 2.6 RRF 2003. By providing the requirement to pay a full (examination) fee the legislator has stipulated his unambiguous legislative will. A reduction of the fee then requires an explicit legal exception because it is in the discretion of the legislator to grant a reduction or not to do so. Therefore, the request of the appellant finally aims at a correction of the legal situation, which is to be decided exclusively by the legislator and not by the Board of appeal by means of an analogous application of R 107(2) EPC 1973. [16] […] The appeal is dismissed. I find this decision stimulating because the Board puts the finger on a break of symmetry between a Euro-PCT application and a (direct) European application. When a divisional application is filed on the basis of a (direct) European application, it is as if there had been two (direct) European applications right from the start : all the renewal fees have to be paid again etc. When the divisional originates from a Euro-PCT, things are not as if there had been two PCT applications (the PCT fees are not paid again …) but as if there had been a (direct) European application parallel to the PCT application. As a consequence, the divisional cannot benefit from PCT facilities such as the fee reduction under R 107(2). To read the whole decision (in German), click here.
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T 345/07 – Battling For Inventiveness
K’s Law – The ebook
T 345/07 – Battling For Inventiveness 31 Dez 2009
I like this case because the patentee’s attorney really tried all what could possibly be done in order to establish an inventive step. As the Board did its job well, too, he has failed, but it sure was an honourable defeat. [...] The patent in suit is directed to a composition for preventing or retarding the formation of gas hydrates. Such compositions already belong to the state of the art as illustrated by document D15, which uses these compositions in order to prevent the formation of gas hydrates. [4.1] […] Having regard to this prior art document, the [patentee] submitted that the technical problem underlying the patent in suit was to provide further compositions inhibiting the formation of gas hydrates. [4.3] As solution to this problem the patent in suit proposes the compositions according to claim 1, which are characterized by the fact that the ether as second additive is one of the listed six individual glycol ethers. [4.4] […] In D15 the formation of gas hydrates is inhibited by adding a combination of a first and a second additive, wherein the first additive is a water soluble polymer […] and the second additive is an organic compound, such as ethers. Thus, any composition including those, which contain one of the six individual ethers of the patent in suit, is within the ambit envisaged by the general disclosure of D15 and is taught to be suitable for inhibiting the formation of gas hydrates. The choice of a specific combination of a particular water soluble polymer and a particular ether, i.e. a polyvinyl caprolactam homopolymer and one of the individual six glycol ethers as indicated in present claim 1, has not been shown to result in any technical benefit vis-à-vis the closest state of the art. Therefore, this choice can neither be treated as critical nor as purposive for solving the technical problem underlying the patent in suit, but merely as an arbitrary restriction of no particular technical significance. A list of further compounds, which according to D15 are also suitable as second additive for inhibiting the formation of gas hydrates and providing a synergistic inhibition effect, explicitly discloses the compound “2butoxy ethanol”. This name is another expression for the identical ether compound named “ethylene glycol monobutyl ether” in claim 1 of the patent in suit. Thus, the skilled person had a clear and direct teaching in the closest prior art D15 itself on how to solve the technical problem of providing an alternative, namely to use 2butoxy ethanol as second additive, thereby arriving at the solution proposed by the patent in suit. For these reasons the subject-matter of claim 1 of the patent in suit turns out to be merely the result of an arbitrary choice made within the ambit of D15 and thus is obvious from the closest prior art alone. [4.7] The [patentee], however, brought forward that D15 clearly focussed on achieving a synergistic inhibition effect, which could not be obtained with other than the specific combinations of polymers and organic compounds exemplified in Table 1. Therefore, a skilled person would not have dismantled or modified these particular synergistically effective combinations described in that document. However, since the objective technical problem consists merely in providing alternative compositions inhibiting the formation of gas hydrates the presence of a synergistic effect or not is not part of the technical problem to be solved, and therefore is irrelevant for the assessment of inventive step. [4.7.1] […] Further, the [patentee] argued that the passage on page 12 indicated that the authors of D15 only “believe[d]” that the synergistic inhibition effect will be observed when using 2-butoxy ethanol implying that they have not been certain thereon. Therefore, in the absence of any expectation of success the skilled man would not have seriously taken these alternatives into consideration. However, when assessing inventive step it is not necessary to establish that the success of an envisaged solution of a technical problem was certain. In order to render a solution obvious it is sufficient to establish that the skilled person would have followed the teaching of the prior art with a reasonable expectation of success (see T 249/88 [8]; T 1053/93 [5.14]; and T 318/02 [2.7.2]). In the present case the passage referred to rather indicates that the proposed alternatives have simply not yet been realized, but gives a clear and direct pointer to the skilled person, which makes it obvious to try the proposed alternatives in order to provide a solution to the technical problem underlying the patent in suit. Therefore, this argument of the [patentee] cannot succeed. [4.7.2]
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T 345/07 – Battling For Inventiveness
K’s Law – The ebook
Further, the [patentee] brought forward that due to the length of the list of possible alternatives indicated [in] D15, a skilled person would have had no incentive to specifically select 2-butoxy ethanol. However, the simple number of alternatives which a skilled person had at his disposition when looking for alternative compositions has no impact on the assessment of obviousness, since a mere arbitrary choice from a host of possible solutions does not in itself involve inventive ingenuity (T 939/92 [2.5.2-3]) [4.7.3] The [patentee] stated further that D15 did not contain any indication of particularly combining the polyvinyl caprolactam homopolymer disclosed in Table 1 of D15 with 2-butoxy ethanol listed on page 12. However, a disclosure of that particular combination would amount to a disclosure anticipating the subject-matter of claim 1, which is not a prerequisite for successfully attacking inventive step. The [opponent’s] objection that there is no pointer to this specific combination cannot convince the Board because this is asking for a condition to be met which is meaningless in a situation where the claimed solution merely consists in selecting components at random within the ambit of D15, as no improvement is attributable to the use of the claimed ethers of claim 1 over those defined in D15. [4.7.4] For these reasons, the Board concludes that the subject-matter of claim 1 of the main request and, due to its identical wording, also the subject-matter of claim 1 of the auxiliary request do not involve an inventive step as required in A 56. Consequently, the main request and the auxiliary request are not allowable. [5] I like the expression ‘inventive ingenuity’ used by the Board, but I am not sure that it really corresponds to a requirement of the EPC. And I definitely do not encounter it very often in the inventions I try to protect. ;-) NB: This decision has also been commented here (in French). To read the whole decision, click here.
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T 1120/05 – Deriving Negative Features from Drawings
K’s Law – The ebook
T 1120/05 – Deriving Negative Features from Drawings 30 Dez 2009
Claim 1 of the main request concerned an arrangement for managing a herd of freely walking animals, comprising an area (1) for receiving the animals, a milking station (2) located in said area […], and a separation device (3) located in said area for separating an animal from the herd, wherein […]the separation device (3) comprises […] at least one entrance device (13) forming an animal passage (15) leading from the receiving area (1) to the separation zone (11), but not to the milking station (2) […].
The amendment “but not to the milking station (2)” introduces the negative feature that the passage formed by the entrance device of the separation device does not lead from the receiving area to the milking station. This negative feature is not expressly disclosed in the description and in the claims of the patent application as filed. [2.1] According to the well established jurisprudence of the Boards of Appeal, features may be taken from the drawings if their structure and function are clearly, unmistakably and fully derivable from the drawings (see T 3245 | 3398
T 1120/05 – Deriving Negative Features from Drawings
K’s Law – The ebook
169/83). It goes without saying that it is not possible to derive a negative or missing feature on its own, i.e. without the context of the other, existing features of the claim. It remains to be decided if a combination of features including the negative feature can be derived or not. [2.2] This approach accepts, arguendo, that the skilled person is actually capable of finding - and indeed willing to search for - negative features in a drawing, albeit in combination with some other features. In the present case the combined feature “[an animal passage (15)] leading from the receiving area (1) to the separation zone (11), but not to the milking station”, i.e. a feature which describes a property of the animal passage lends itself to closer scrutiny, because the term “..., but not to...” establishes a direct connection of the disputed negative feature to an other, undisputedly disclosed feature. An equally good candidate would be the combined feature “an animal passage (15) ... not [leading] to the milking station”. The search for combined features, such as the examples above may even be considered realistic, because there are also other features of this animal passage present in the claim. Therefore, in the present case the board accepts - for the sake of argument only - that the skilled person would look closely at the features related to the animal passage. [2.2.1] In this case, the question arises whether the skilled person would clearly, unmistakeably and fully derive from the drawings that this animal passage has a further feature beside those explicitly stated in the application, i.e. whether the skilled person would positively realise that this animal passage does have some negative features as well. Were the board to accept that this is the case, then, as a matter of logic, the board would have to establish that the skilled person would, inevitably, realise the presence of further negative features, and potentially a large number thereof. Choosing arbitrarily one of these is not permitted, because the skilled person not only has to realise the possible negative features, but because they were derived from the drawings, he must also establish which one of the features is essential to the invention and which ones are not, see Guidelines, C VI. 3.5.2., see further T 906/97 [5]. The board finds that absent a teaching from the description, the skilled person would be unable establish the essential nature of a single negative feature, seen against a background of a multitude of potentially essential features, even if this selected single negative feature in the drawings could be recognised by the skilled person in the drawings. [2.2.2] It may be mentioned that case law also confirms that negative features cannot be deduced from a schematic drawing only, see T 170/87 [8.3], followed by T 410/91 [2.1], further see T 278/88 [3.2.3]. […] More generally, in the context of A 123(2) the original drawings cannot be considered as a reservoir of features from which the applicant or a patent proprietor can draw when amending the claims, see T 832/04 [2.2]. [2.2.3] Decision T 169/83 requires that “the structure and function” of the negative feature should be clearly, unmistakeably and fully derivable for the skilled person from the drawings. This is not the case here. The represented separation device (3) is provided with an exit device forming an animal passage (15) leading from the separation zone and from here - at least indirectly through the receiving area - to the milking station. In this manner the drawings may also be interpreted as disclosing that the entrance devices of the separation device (3) define a passage leading from the receiving area to the milking station via the separation device (3), the animal passage (15) and the receiving area. It follows that at least the “structure” of the negative feature in question cannot be deduced, let alone be clearly, unmistakably and fully derived from the drawings. [2.2.4] […] The passage of the patent specification referred to by the [patentee] […] defines the result to be achieved by the invention, that is to avoid that the animal associates the separation with the automatic milking. However, this result does not necessarily imply the above mentioned negative feature. [2.2.6] This negative feature therefore adds subject-matter extending beyond the content of the application as filed. Moreover, the board does not consider this undisclosed negative feature as being an allowable disclaimer in the meaning of decision G 1/03, because the anticipation necessitating the amendment (D4) cannot be considered as accidental. [2.3] Therefore, the main request has to be rejected because [it] contravenes the requirements of A 123(2). [2.4] To read the whole decision, click here.
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T 926/07 – Arguments Are Never Late
K’s Law – The ebook
T 926/07 – Arguments Are Never Late 29 Dez 2009
[...] According to R 71a EPC 1973, new facts and evidence presented after [the final] date [fixed in the summons for making written submissions in preparation for the oral proceedings (OPs)] need not be considered, unless admitted on the grounds that the subject of the proceedings has changed. R 71a and A 114(2) EPC 1973, on which it is based, therefore refer to late filed facts and evidence and not to new arguments. The latter may be produced at any stage of the proceedings. [2.1] Facts are assertions (behauptete Sachverhalte) which may need to be supported by evidence (see Singer/Stauder, EPC, 4th ed., Article 114, point 44). Arguments, on the other hand, are statements (Ausführungen) that result from applying the law to the facts and evidence that have been submitted in time (see T 92/92 [2]). So arguments based on facts submitted in time must be admitted at any stage in opposition or subsequent appeal proceedings. [2.1.1] This approach is different from what has been said, for instance, in T 124/87 : “An argument which is presented for the first time at an oral hearing, which combines particular previously filed evidence with a particular previously cited document, may not be admitted for consideration in the exercise of discretion under A 114(2)”. To read the whole decision (in German), click here.
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T 1427/09 – Using The Wrong Card
K’s Law – The ebook
T 1427/09 – Using The Wrong Card 28 Dez 2009
The present interlocutory decision deals with an appeal filed electronically. The notice of appeal and the statement setting out the grounds of appeal carried the name of Mr. Friedrich Kühn, who is a European patent attorney, but the electronic filing was done using certificates belonging to I. Elfving and R. Ahlund [who both appear not to be European patent attorneys], respectively. […] In the present case, the appeal documents were electronically filed using the technical means of communication addressed in R 2(1) and defined in Article 5(1) of the “Decision of the President of the EPO dated 26 February 2009 concerning the electronic filing of documents” (“2009 Decision”). The dates of transmission and receipt (11 May 2009 for the notice of appeal and 17 June 2009 for the statement setting out the grounds of appeal) were verified by the acknowledgements of receipt issued by the EPO. [5] As the electronic signatures used for the electronic filing of the appeal documents were not issued to a person authorised to act in the present proceedings (as required by Article 8(2) of the 2009 Decision) but to other individuals, the applicable requirements concerning the authentication of the documents were not met. The 2009 Decision is silent on the legal consequences of any non-compliance with its Article 8(2). [6] R 2, on which the 2009 Decision is based, authorises the President of the EPO to specify technical means of communication for the filing of documents (R 2(1)) and to permit appropriate means for document authentication where the EPC provides that a document must be signed (R 2(2)). R 2(1) provides for legal consequences in cases where documents are filed through non-approved technical means of communication (T 765/08 [9]). On the other hand, R 2(2) does not specify the legal consequences for any non-compliance with requirements concerning signatures and other means of document authentication. [7] For documents filed after the filing of the application without the required signature, R 50(3) provides that the EPO shall invite the party concerned to sign the document within a time limit to be specified. It is appropriate and not in conflict with R 2 to apply R 50(3) to documents filed electronically in appeal proceedings without the electronic signature required under Article 8(2) of the 2009 Decision. In the board’s judgment, the principle that the signature of an unauthorised person shall be treated like a missing signature (T 665/89 [1.4]) should apply not only to handwritten signatures but also to electronic signatures. Consequently, the electronic filing of a document in appeal proceedings accompanied by the electronic signature of an unauthorised person should be treated under R 50(3) like the filing of an unsigned document per mail or telefax in the same proceedings. [8] Since signed copies of the notice of appeal and the statement setting out the grounds of appeal were filed within the time limit set in the communication of 8 September 2009, said documents retain their original date of receipt (R 50(3), third sentence). [9] NB: This decision has also been reported by Pete Pollard. To read the whole decision, click here.
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T 714/07 – Examples Are Presumed To Be Embodiments
K’s Law – The e
T 714/07 – Examples Are Presumed To Be Embodiments 26 Dez 2009
The examples of [document] D1 as such do not indicate that the polyisobutene dispersants have functionalities of “greater than 1.3” as required in present claim 1. The examples are, however, considered to be preferred embodiments of the disclosure of a patent application. Therefore, the person skilled in the art will expect that they meet the requirements of the preferred embodiments set out in the description. Paragraph [0091] of document D1 mentions that the minimum number of succinic groups for each equivalent weight of polyalkenyl substituent group is 1.3 while all the preferred ranges require it to exceed 1.3. The person skilled in the art thus will conclude that example A-24 discloses that the dispersant of example A-26 has a functionality of 1.56 or less while exceeding 1.3, so that example A-26 anticipates the subject-matter of claim 1. [3.6] Therefore, document D1 discloses all the features of present claim 1 in combination and deprives the subjectmatter of this claim of novelty. [3.7] To read the whole decision, click here.
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T 1160/07 – Skilled People Ask Experts
K’s Law – The ebook
T 1160/07 – Skilled People Ask Experts 25 Dez 2009
One way of “raising the bar” with regard to inventive step is to make the skilled person competent in more than one field of the prior art. There have been several decisions, especially in the biotech sector, where the skilled person was considered to be a skilled team. A similar way of achieving the same effect is to have the skilled person consult one or more experts. The present decision is an example of the latter approach. The Board provides a rather confused (and confusing) discussion of who the skilled person is, taking into account different stages of a manufacturing process. […] It has been disputed who in the present case is to be considered the person skilled in the art. [7.1] It is common ground that in the development or design of plastic parts such as shaving razor handles according to the patent in suit or chisel handles according to D10, the product design aspect is important, determining the shape and the structure of the specific part. In this respect the Board endorses the opinion of the [patent proprietor] insofar as that the product design is primarily the task of product designers, which are familiar with the characteristics of the specific part to be designed and that due to differences in these specific characteristics, e.g. based on the intended use of such a product, the product designer designing shaving razor handles and the product designer designing chisel handles need not necessarily be one and the same person. It is further undisputed that considering the development of parts of the kind concerned on a time scale, the product designer is active from the very beginning of the development or design of such a product. In this respect the Board further considers the opinion of the [patent proprietor] to be correct that already during the design phase of a specific part attention will be paid to the method, at present the molding method, by which this product will eventually be manufactured. However, the Board finds that towards the end of the product design phase the manufacturing of such a part, although a matter of concern already earlier on, comes more and more into focus and then remains the predominant issue. [7.2] Claim 1 concerns solely the manufacture of shaving razor handles as the specific part concerned. This applies correspondingly with respect to D10 which discloses a method for manufacturing chisel handles. Concerning the knowledge required with respect to the manufacturing aspect it can be left open to what extent the product designer is aware of the possibilities, advantages and constraints underlying the molding methods concerned, since in view of the Board, irrespective of his/her own knowledge, the product designer in the end will consult an expert in the technology of molding small plastic parts, a field of technology encompassing not only shaving razor handles according to claim 1, but also chisel handles according to D10 or, as discussed during the oral proceedings, toothbrushes according to D2/D6. [7.3] The person skilled in the art for assessing inventive step of the presently claimed method thus can be considered as being a product designer specialized in the specific part to be manufactured who, if not forming a team with an expert in the technology of molding of small plastic parts, will at least consult such an expert. In either case it is the knowledge of the expert in the technology of molding small parts which is determinative for the choice of the appropriate manufacturing method. [7.4] To read the whole decision, click here.
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T 1160/07 – Convergence, Moderately
K’s Law – The ebook
T 1160/07 – Convergence, Moderately 24 Dez 2009
In a recent post I have presented decision T 565/07 (and T 240/04) where auxiliary requests were refused because they were not converging. The present decision shows that not all the Boards apply so strict a standard. […] With letter dated 15 May 2009 the [patent proprietor] has (re)filed the auxiliary requests as indicated above. The [opponent] objected to the admission of these requests mainly for the reason that the independent claims in subsequent requests were not progressively limiting the subject-matter in a convergent manner but instead defined subject-matters which went in different directions, resulting in a non-converging debate. [3.1] Firstly, the Board notes that the requests numbered 1, 2, 2.1, 3 and 3.1 have already been filed in the opposition proceedings with letter dated 2 April 2007 and have been refiled in reply to the appeal with letter of 3 March 2008, thus are not new to the [opponent]. [3.2] The Board assumes the [opponent’s] reference to the necessity of having a converging debate when auxiliary requests are filed relates to the present Board’s decision T 47/03 applying such a principle, as previously elaborated in T 1126/97. The present case has the above-mentioned auxiliary requests 1, 2, 2.1, 3 and 3.1 relating principally to the further embodiments of the shaving razor handle. Auxiliary request 4 relates to the further embodiment of the shaving razor handle with certain parts of the inner core being thinner than the outer portion, as well as of the first mold cavity having a gate. Auxiliary requests 6 and 7 relate to the further embodiment of the shaving razor handle’s inner core having a through hole and injecting the outer portion via the through hole. Auxiliary request 8 combines the embodiments of auxiliary requests 4 and 6. [3.3] In view of the above, the [opponent] could have a point with respect to auxiliary requests 4, 6, 7 and 8. However, the present case differs from the above cited cases in that these requests were filed with letter of 15 May 2009, i.e. more than two months before the oral proceedings (OPs) (T 49/03 [sic] concerned requests filed just one month before the OPs; in T 1126/97 the requests were filed at the OPs). They further concern features which could easily be understood and dealt with without adjournment of the OPs (Article 13(3) RPBA). [3.4] Therefore, if you intend to rely on auxiliary requests that do not converge, be sure to file them as early as possible, and well before the OPs. To read the whole decision, click here.
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T 1160/07 – Wrongful Exercise Of Discretion
K’s Law – The ebook
T 1160/07 – Wrongful Exercise Of Discretion 23 Dez 2009
The Opposition Division (OD) has exercised its discretion to not admit the pieces of evidence D8 - D11 considering as criteria whether the late filing amounts to an abuse of procedure and whether these documents are of prima facie relevance. [2.4] The Board agrees with the respondent that if the way in which the department of first instance has exercised its discretion is challenged in an appeal, it is not the function of the Board of Appeal to put itself in the place of that department and consider how it would have exercised its discretion itself. A Board should only overrule the way in which the discretion was exercised if it concludes that it was done according to the wrong principles, or without taking into account the right principles, or in an unreasonable way. [2.5] In exercising its discretion to not admit documents filed after expiry of the period for opposition an OD has to take into account the relevant facts and circumstances of the case. The question of abuse of proceedings has been addressed correctly by the OD. Others circumstances and facts which should be considered are e.g. whether the documents in question are relied upon in direct response to the communication annexed to the summons for oral proceedings and whether they are prima facie relevant. [2.6] Concerning the first aspect mentioned above the impugned decision is, however, silent. In the minutes of the oral proceedings (OPs) before the OD it is indicated “regarding the matter of the late filing of documents D8 to D11, the opponent explained essentially that this was in reaction to the provisional opinion set out by the opposition division in its annex to the invitation to the OPs”. Since concerning this circumstantial aspect the impugned decision is totally silent and the minutes only repeat the argument of the [opponent], i.e. no conclusion on this issue is given by the OD, the Board can only conclude that this aspect was not considered in the end. It is not appropriate to express on the one hand a preliminary opinion in the annex to the summons sent by virtue of R 71a EPC 1973, as required by the Guidelines for Examination (E-III, 6), setting a time limit for filing any submissions expiring 19 March 2007 and on the other and not to admit such submissions and their supporting evidence filed 14 March 2007, i.e. before the set date, without reflecting on the question whether they were a reaction to the OD’s opinion (see in this respect also T 281/00 [2.4]). [2.6.1] Concerning the second aspect, namely the prima facie relevance, the Board notes that according to the impugned decision the chisel handle according to D10 has a circular symmetry around its central axis, resulting in the conclusion that D10 cannot be considered as an appropriate starting point with respect to a method relating to the production of a shaving razor handle. In this respect the Board is of the opinion that by relying on this aspect of the known chisel handle emphasis has been placed on a feature which, however, lacks any correspondence with the subject-matters of claims 1 of all requests then on file, which neither comprise a corresponding feature defining any cross-sectional shape of the shaving razor handle nor do they imply lack of symmetry of this handle. Consequently the OD has examined the prima facie relevance of document D10 in a manifestly wrong manner, by considering facts which are irrelevant in this connection. [2.6.2] Thus, for the reasons given above, the OD has exercised its discretion with respect to the non-admittance of document D10 without taking into account the right principles (point 2.6.1) as well as according to wrong principles (point 2.6.2). For the above reasons D10 is to be considered as forming part of the opposition - and thus appeal - proceedings. [2.7] To read the whole decision, click here.
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K’s Law – The e
T 1854/08 - Notifications by E-mail and Other Procedural Shortcomings
T 1854/08 - Notifications by E-mail and Other Procedural Shortcomings 22 Dez 2009
I owe the knowledge of this decision to Laurent Teyssèdre, who has discussed it on his blog (in French). After having been summoned to oral proceedings (OPs), the applicant filed a new main request and first and second auxiliary requests. In his letter, he requested consequently that a patent be granted on the basis of one of those requests. [III] On 27 November 2007, the Examinig Division (ED) sent an e-mail to the applicant with the following content: “Dear Mr. White, the ED has discussed the three new requests filed with letter of Nov.5. (I.) These requests are not admitted into the proceedings, pursuant to R 86(3), because they introduce substantial obscurities (A 84). […] (IV.) If no new request is filed which is admissible under R 86(3), then the OPs will be based on the request on which the summons to OPs was based.” [IV] The applicant did not attend the OPs. At the OPs, the application was refused on the basis of the claims which had been objected to in an annex to the summons to OPs. [V] […] In deciding on the basis of the set of claims filed [before the summons to OPs], the ED decided on the basis of a set of claims which was no longer agreed by the applicant because new requests had been filed with letter of 5 November 2007. From this letter, it could be clearly and unambiguously derived that the new main and auxiliary requests were meant to replace the claims filed before. This follows from the fact that the applicant requested in his letter that a patent be granted on the basis of one of the newly filed requests. Hence, deciding on the basis of the old set of claims contravenes directly A 113(2), where it is stated that the EPO shall examine, and decide upon, the EP application only in the text submitted to it, or agreed, by the applicant. [2.1] By an e-mail of 27 November 2007, the applicant was informed that the three newly filed requests were not admitted into the proceedings, because they introduced substantial obscurities. The applicant was not given any opportunity to present his comments to overcome the negative position expressed in the e-mail. Contrary to that, he had to gather from the e-mail that it was no longer possible to convince the ED. This follows from the fact that the refusal to admit the newly filed request was not presented as a provisional opinion of the division to prepare a discussion in the forthcoming OPs but as a decision which could not be overturned. In the e-mail, it is clearly expressed that “if no new request is filed which is admissible under R 86(3), then the OPs will be based on the request on which the summons to OPs was based”, i.e., that the requests filed on 5 November 2007 were no longer under consideration. This contravenes A 113 (1) where is laid down that the decisions of the EPO may only be based on grounds on which the parties concerned have had an opportunity to present their comments. [2] As contravening A 113(1) and (2) constitutes a substantive procedural violation, the Board remits the case to the department of first instance for further prosecution (Article 11 RPBA). [3] Moreover, it is questionable whether an e-mail can constitute a communication under A 96(2) EPC 1973 to file observations within a period to be fixed by the ED. However, as the case has to be remitted for the above mentioned reasons alone, this point has not to be decided in the present case. [4] I like the understatement: “It is questionable ...” To read the whole decision, click here.
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T 546/07 – You Have To See Things In Context
K’s Law – The ebook
T 546/07 – You Have To See Things In Context 21 Dez 2009
The opposed patent concerns ski bindings for alpine touring, comprising a ski boot support 10 having a front support part 20 on which a front jaw 50 is mounted, and a rear support part 40 on which a heel jaw 80 is mounted, both jaws being shaped to hold a ski boot. The front support part 20 is articulated so that it can pivot about a first axis 1 with respect to a base part 3 fixed to the ski. The rear support part 40 is articulated pivotal about a second pivot axis substantially parallel to the first pivot axis (and identical with the first pivot axis in the embodiment of Fig. 1):
Publication E4 was acknowledged to be the closest prior art.
The opponent filed an appeal after the opposition had been rejected. It argued that document E4 disclosed embodiments covered by claim 1, taking into account the common general knowledge of the skilled person. In particular, the toe clamp (reference 29 in Fig. 1 of E4) could be considered to be the front jaw. The opponent pointed out that E4 disclosed (col. 3, lines 3-9) that the toe clamp could be positioned in the pivot axis of the support. Moreover, E4 explicitly disclosed (col. 2, lines 42-45) that any holding device allowing to shift the boot while holding it could be used, such as for example front jaws of known bindings for cross-country skiing. Therefore the skilled person would have envisaged to use the “Diamir” binding known from document B19. By replacing the toe clamp of E4 with the front jaw of this binding, a binding according to claim 1 was obtained. […] Claim 1 differs from E4 in that the rear support part (reference 12 in E4) is articulated pivotal about a second pivot axis substantially parallel to the first pivot axis (reference 8 in E4). [2.2] 3254 | 3398
T 546/07 – You Have To See Things In Context
K’s Law – The ebook
The statements of the appellant concerning the disclosure of document E4 do not invalidate this finding. [2.3] On the one hand, the toe clamp 29 cannot be considered to be a front support part within the meaning of Claim 1. As a matter of fact, the front support part is part of the ski boot support and has to support the boot. In this it differs from the toe clamp 29, which only has a holding function. It is designed to hinder the boot from detaching upwards and from displacing laterally, respectively. [2.3.1] On the other hand, the document E4 does not teach, neither explicitly nor implicitly, that any holding device, and in particular the front jaw “Diamir” known from B19, can be used as front jaw. The Board considers that the skilled person reading a document does not construe individual parts of the disclosure (einzelne Offenbarungsstellen) in isolation but rather in the context of the document as a whole (T 312/94 [2.1]; T 860/06 [1.1.3]). In the present case, the binding for alpine touring disclosed in E4 aims at a solution to the problem of reducing the lifting effort (Hubarbeit) of the skier. See column 1, lines 37-41. [“It is the object of the invention to improve a binding for alpine touring of the kind presented above such that the lifting effort when practising alpine touring is reduced even more. Moreover, in many applications the use of a return spring is to be avoided.”] However, in column 1, lines 28-32 it is disclosed that when bindings for alpine touring having a front releasing boot sole support (vorderer auslösender Sohlenhalter) are used, it is not possible to reduce the lifting effort. [“Bindings for alpine touring having a front releasing boot sole support necessitated an even greater distance between the boot toes and the pivot axis in order to reach a pivot angle of 90°. Here the lifting effort was still much greater.”] When reading document E4 the skilled person would, therefore, learn that the goal could not be reached with such a binding for alpine touring. Therefore, he/she would not interpret the expression “holding device” (Haltevorrichtung) in column 2, lines 42-53 to encompass a releasing holding device such as the “Diamir” front jaw of B19, but only front jaws without security function. [2.3.2] Therefore, E4 does not disclose all the features of claim 1 and is not novelty-destructive for the claimed subjectmatter. [2.4] To read the whole decision (in German), click here.
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K’s Law – The ebook
T 500/07 - What Makes A Transfer A Transfer
T 500/07 - What Makes A Transfer A Transfer 19 Dez 2009
These days I come across quite a lot of decisions on transfers of opponent status. Here is one of them, where the Board had to get into Delaware state law. The patent was opposed by the Engelhard Corporation. [II] During the oral proceedings before the Opposition Division (OD), the opponent informed that it had been renamed in BASF Catalyst LLC. [V] When assessing the question whether the Engelhard Corporation in whose name the opposition was filed and the BASF Catalysts LLC represented in the proceedings before the OD correspond to the same legal personality, the document entitled “Certificate of Conversion to Limited Liability Company of Engelhard Corporation to BASF Catalysts LLC” has to be considered. Under point 6 it is stipulated: “When the Corporation has been converted to a Delaware limited liability company pursuant to Section 18-214 of the Delaware Limited Liability Company Act and to Section 266 of the General Corporation Law of the State of Delaware, the limited liability company will, for all purposes of the laws of the State of Delaware, be the same entity as the converting Corporation. For all purposes of the laws of the State of Delaware, the rights, privileges, powers and interest in property of the converting Corporation, as well as the debts, liabilities and duties of the Corporation, will not as a consequence of the conversion, be transferred to the Delaware limited liability company; the converting Corporation will not wind up its affairs or pay its liabilities and distribute its assets, the conversion will not constitute a dissolution of the Corporation, and the conversion will constitute a continuation of the existence of the converting Corporation in the form of a Delaware limited liability company.” [There are no doubts on the authenticity of the document,] all the more as the provision of section 18-214 (f) of the Delaware Limited Liability Company Act reads: “When any conversion shall have become effective under this section, for all purposes of the laws of the State of Delaware, all of the rights, privileges and powers of the other entity that has converted, and all property, real, personal and mixed, and all debts due to such other entity, as well as all other things and causes of action belonging to such other entity, shall remain vested in the domestic limited liability company to which such other entity has converted and shall be the property of such domestic limited liability company, and the title to any real property vested by deed or otherwise in such other entity shall not revert or be in any way impaired by reason of this chapter; but all rights of creditors and all liens upon any property of such other entity shall be preserved unimpaired, and all debts, liabilities and duties of the other entity that has converted shall remain attached to the domestic limited liability company to which such other entity has converted, and may be enforced against it to the same extent as if said debts, liabilities and duties had originally been incurred or contracted by it in its capacity as a domestic limited liability company. The rights, privileges, powers and interests in property of the other entity, as well as the debts, liabilities and duties of the other entity, shall not be deemed, as a consequence of the conversion, to have been transferred to the domestic limited liability company to which such other entity has converted for any purpose of the laws of the State of Delaware.” Therefore one has to act on the assumption that the transformation from the corporate structure ‘corporation’ to a ‘limited liability company’ preserves the legal identity precisely because there is no transfer of assets (Vermögenswerte) (“shall not be deemed … to have been transferred”) and all assets and liabilities (Aktiva und Passiva) remain unchanged with the company (“shall remain vested in the domestic limited liability company”). [2.1.1] […] R 20 EPC 1973 is not applicable as there has not been any transfer of rights; the company acting as opponent has always remained the same. It has only changed its name. Therefore, there could not have been any transfer of the opponent status. […]
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K’s Law – The ebook
T 500/07 - What Makes A Transfer A Transfer
G 2/04 deals with the transfer of the opponent status; it cannot contribute to the assessment of the present case precisely because the opponent status has not been transferred. T 413/02 and T 478/99 are not relevant for the same reason. In decision T 870/92 [2.1], the Board explains : “What is relevant for the admissibility of the opposition is that the real identity of the opponent is clear at the time of filing of the opposition. Considering the circumstances of the case, one cannot interpret the additional indication of the business division (Geschäftsbereich) to be an indication of the name of another company than the company of the opponent. The evidence submitted in the appeal proceedings show that even before the foundation of the Schiess Kopp Werkzeugmaschinen GmbH there was a Schiess Aktiengesellschaft (with a division “Schiess Kopp”) and that, therefore, the indication “Schiess Aktiengesellschaft, Bereich Schiess-Kopp” could only designate the Schiess Aktiengesellschaft. The latter was entitled to file an opposition against the contested patent (A 99(1), first sentence, EPC).” This decision cannot support the view of the patentee as in the present case the identity of the opponent at the time of filing of the opposition is undisputed. [2.1.2] To read the whole decision (in German), click here.
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T 725/05 – Res Judicata Is A Narrow Thing
K’s Law – The ebook
T 725/05 – Res Judicata Is A Narrow Thing 18 Dez 2009
Good things come in threes. After having considered what T 725/05 has to say on obiter dicta (see my earlier post) and on undue extension (see my preceding post), let me come back on this decision one last time. The patent proprietor pointed out that the decision the Board was about to take would be contradictory to decision T 500/01, which concerned the parent application of the divisional application which resulted in the patent that is the object of the present decision. […] In consideration of what has been said above, the Board reaches the decision that the application as originally filed refers to CDRs which are defined according to Kabat, or according to the alternate definition of Chotia. Since the Parent Application as originally filed does not refer to CDRs according to Chotia, the divisional application contains subject-matter going beyond the content of the earlier application as filed and does not meet the requirements of A 76(1). [25] The [patentee] has argued that this decision would contradict decision T 500/01, taken by this Board in a different composition and referring to the patent granted on the basis of the parent application. He has put forward that the Board in decision T 500/01 has already performed an extensive analysis of the amendments to the description identical to [those] of the present divisional application as filed. The [patentee] stresses that the Board, in decision T 500/01 came to the conclusion that these passages did not provide support or basis for a definition of CDRs which is both Kabat and Chotia. [26] It has to be emphasised that the patent that was the subject of the Board’s decision in case T 500/01 contained an explicit statement that the term CDRs was as defined by Kabat together with Chotia, both in the description and in claim 1. Whereas the situation underlying the present divisional application differs therefrom in so far as no such explicit definition of CDRs Kabat together with Chotia is present. However it is stated on page 4, starting in line 19, that Chotia provided an alternate definition of CDRs, which [means] according to this decision, that CDRs are either Kabat CDRs or Chotia CDRs. This passage, which was identically contained in the Parent Application as granted was indeed examined by the Board in decision T 500/01 and it was decided, as correctly stated by the [patentee], that it did not provide support or basis for a “combination” definition of CDRs, Kabat together with Chotia. The issue before the Board in case T 500/01 was whether the expression “Kabat together with Chotia” had a basis in the parent application as filed. The issue before the Board in the present case is whether page 4, line 9 to page 5, line 7 of the present divisional application as filed provides support for an alternate definition of CDRs, that is for Kabat or Chotia, and, if the answer is yes, whether this has a basis in the parent application as filed. Deciding in the present case that the definition of CDRs in the divisional application is Kabat or Chotia is not, therefore, contradictory to decision T 500/01. For the same reason the Board’s present decision is not contradictory to T 500/01 [20-23], where it was decided that a claim restricted to a method of producing a humanized immunoglobulin light chain met the requirements of A 123(2). As all three “Chotia CDRs" of the light chain are subsets of the respective Kabat CDRs, for this embodiment the term "Kabat together with Chotia" was identical to Kabat CDR as disclosed in the parent application as originally filed. Therefore the Board did not see a violation of A 123(2) EPC. This is a different situation compared to the present case where the Board has decided that the term CDRs as defined by Kabat or Chotia adds subject-matter in the divisional application compared with the parent application as filed which is contrary to A 76(1). [27] To read the whole decision, click here.
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T 725/05 – A Fateful Alternative
K’s Law – The ebook
T 725/05 – A Fateful Alternative 17 Dez 2009
The present decision, already discussed in my preceding post, also contains a textbook example of how an amendment of the description can lead to an undue extension of the claimed subject-matter. Besides a few minor amendments, which do not have to be considered in the context of A 76(1), the present divisional application as originally filed is distinguished from the parent application as originally filed by the insertion of two paragraphs. Firstly, by referring to the disclosure in document D4, the original definition of complementary determining regions (CDRs) according to Kabat is described. Then it is stated that “more recently Chotia et al have given an alternate definition of the hypervariable regions or CDRs …”. The term “Chotia CDR” is then introduced and it is mentioned that for five of the six CDRs the “Chotia CDRs” are subsets of the Kabat CDRs. The single exception to this is the first CDR on the heavy chain (CDR H1) where the “Chotia CDR” contains amino acids 26 to 30 that are not part of the Kabat CDR. The description goes on to discuss prior art document D3. It is said that therein a humanised antibody was disclosed wherein the Kabat CDRs were transferred from a donor (a mouse) to a predetermined human framework. Additionally, in order to improve the humanised antibody’s binding affinity and its ability to lyse target cells, two mouse amino acids were transferred which were positioned in “Chotia CDR H1”, but no other mouse amino acids. [15] The [patentee] argues, that this part of the description, not contained in the parent application as originally filed, has been introduced in the section headed “Background of the Invention”, which was immediately followed by the section “Summary of the Invention”. It referred therefore merely to the recognition of a disclosure in the state of the art, which according to the case law of the Boards of Appeal, e.g. decision T 11/82, cannot be regarded as added subject-matter. It was evident that the content of the introduced paragraphs had no “dictionary function” in the sense that a patent, being a legal document, may define technical terms and determine how a skilled person has to interpret a specific term when used in the description or in the claims. Rather the skilled reader, knowing from document D5 that Chotia gave no separate CDR definition, would have disregarded their teaching as being misleading and as having no impact on the definition of the term CDR. […] The Appellant argued further, that the skilled reader after having reached the conclusion to disregard the teaching on page 4, line 9 to page 5, line 7 of the divisional application as originally filed, as being confusing and misleading, would have found evidence that the term CDRs had to be understood as referring to Kabat CDR’s at several passages of the application as filed. [16] Opponent 03 considered the introduced paragraphs of the description to disclose an alternate definition of CDRs. Opponent 05 argued that the newly introduced passages of the description, although not explicitly stating it, have to be interpreted as referring to a definition of CDRs as meaning Kabat together with Chotia. [17] […] Decision T 11/82 [22] states that the mere addition to the description of a reference to prior art cannot reasonably be interpreted as the addition of “subject-matter” contrary to A 123(2). Nor is it inevitable that the addition of a discussion of the advantages of the invention with reference to such prior art would constitute a contravention of that Article. Whether it did so would clearly depend on the actual language used and the circumstances of the case. [19] However, the discussion of D5 [in] the divisional application as filed is not “the mere addition to the description of a reference to prior art”. In fact, by stating that it gives an alternate definition of the hypervariable regions or CDRs, it goes far beyond the disclosure in said document which expressly mentions […] that it refers to loops, whose “limits are somewhat different from those of the complementarity determining regions defined by Kabat”. By immediately thereafter introducing the term “Chotia CDR” as being an alternate definition for “Kabat CDR”, this new part of the description provides the public with the instruction that the term “CDR” may be Kabat CDR or “Chotia CDR”. […] As decision T 11/82 does not refer to a situation where the analyses and discussion of a prior art document goes [sic] far beyond the actual disclosure in said document, it is not relevant for the present case. [20] 3259 | 3398
T 725/05 – A Fateful Alternative
K’s Law – The ebook
Although the added parts of the description have been introduced in the section “Background of the Invention” their content is considered by the Board to have an essential impact on the skilled reader’s interpretation of the term CDR in the following parts of the application. The reader is provided with the technical teaching that, besides the generally accepted definition of CDRs according to Kabat, there is another, alternate definition of this term according to Chotia. […] [21] The Board sees no reason why the skilled reader should disregard the clear information conveyed by the disclosure of the divisional application as filed. [22] The Appellant relied on paragraph [0040] of the patent as granted, which he considered to give a definition for CDRs and to be a basis for the assumption that the term CDRs in the application means Kabat CDRs only. This passage reads: “As used herein, the term "framework region" refers to those portions of immunoglobulin light and heavy chain variable regions that are relatively conserved (i.e., other than the CDRs) among different immunoglobulins in a single species, as defined by Kabat, et al., op. cit. As used herein a "human-like framework region" is a framework region that in each existing chain comprises at least about 70 or more amino acid residues, typically 75 or 85 or more residues, identical to those in a human immunoglobulin.” The first sentence of this passage states that, according to Kabat, framework regions, other than CDRs, are relatively conserved. Thus, the information given does not concern the actual extent of framework regions, by disclosing those amino acid residues that are part thereof, but concerns their degree of conservation. The second sentence defines the term “human like framework regions”. Therefore, this passage does not provide a definition of the term CDRs. [23] The second paragraph referred to by the Appellant is paragraph [0046] of the patent as granted. This paragraph refers to document D15 and states that its disclosure is “excluded from coverage”. The Appellant seems to argue that a reference to this document which itself refers to CDRs as being Kabat CDRs has to be considered as a basis for finding that the same term when used in the present application also means Kabat CDRs only. The Board cannot agree. The acknowledgement of the disclosure in a prior art document is no basis for the allegation that a technical term defined in this document in a specific way has to be interpreted in an identical way in the present application, which on pages 3 and 4 contains an explicit statement that the term is defined in a different manner. [24] […] the Board reaches the decision that the application as originally filed refers to CDRs which are defined according to Kabat, or according to the alternate definition of Chotia. Since the parent application as originally filed does not refer to CDRs according to Chotia, the divisional application contains subject-matter going beyond the content of the earlier application as filed and does not meet the requirements of A 76(1). [25] To read the whole decision, click here.
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T 725/05 – Obiter Dicta And The Right To Be Heard
K’s Law – The ebook
T 725/05 – Obiter Dicta And The Right To Be Heard 16 Dez 2009
[…] The [decision of the Opposition Division (OD)] reads on page 15, point (5), […]: "For the reasons discussed in items 2 - 4, none of the requests on file meets the requirements of the EPC, particularly of A 76(1), 123(2) and 123(3). Consequently, the patent is revoked pursuant to A 102(1).” [2] This is followed by pages 16 to 19 of the Annex, wherein the OD expresses its opinion with regard to the requirements of A 83, sufficiency of disclosure. The introductory paragraph on page 16, point 6, reads: “Although not being a reason for the decision, the OD wishes to express an opinion to other topics that had been discussed in extensio [sic] during the procedure in writing.” [3] It is evident from the minutes of the oral proceedings (OPs) before the OD, that the requirements of A 83 were not an issue discussed at the OPs. [4] The Appellant infers from this situation that his right to be heard has been violated (A 113(1)). The addition of such considerations, which were not an issue at the OPs, to a decision might be appropriate for the Boards of Appeal or another last instance court, but not for an OD. The OD’s considerations on A 83 might have negatively influenced their decision with regard to added matter (A 76(1), 123(2) and 123(3)). Finally, the content of pages 16 to 19 of the appealed decision could lead to detrimental effects for the Appellant, for instance in proceedings before national courts. By referring to decision T 900/02, the Appellant emphasised that justice must not only be done but must be seen to be done. Thus, the addition of these considerations to the written decision amounted to a substantial procedural violation. [5] With regard to the nature and the significance of pages 16 to 19 of the appealed decision the Board notes that their content is marked as “not being a reason for the decision”. Thus, the content of these pages forms an obiter dictum, a remark or observation made by a deciding body that, although included in the papers of the decision, does not form part of the actual decision. On the other hand those parts of the appealed decision which are marked as “Reasons for the decision” and which end on the bottom of page 15 with the “Decision”, exclusively refer to issues on which the parties had ample opportunity to comment at the OPs before the OD. Thus, the parties right to be heard, which in A 113(1) is defined as meaning that they had an opportunity to present their comments (in writing and orally) on all grounds or evidence on which a decision of the EPO (here an OD) is based, has not been violated. Decision T 900/02, referred to by the Appellant, is concerned with a suspicion of partiality, inevitably arising if a member of an OD first solicits and then accepts employment with a firm in which a partner or other employee is conducting a case pending before that member. This situation has nothing to do with the situation underlying the present case. The findings in decision T 900/02 are therefore not considered to be relevant for the present case. [6] The Boards of Appeal, although in a procedurally different situation, have already examined whether or not a party to an inter partes proceedings can be adversely affected by an obiter dictum contained in a decision of an OD. The Board in decision T 473/98 decided that this is not the case and that moreover the inclusion of obiter dicta is appropriate for an OD as it may obviate the need for remittal in the event its decision (in this case revocation of the patent) is reversed on appeal (see point 2 of the reasons). [7] A 76(1), 123(2) and 123(3) all are concerned with the issue of “added matter”. A 83 relates to sufficiency of disclosure. The Board is convinced that all requirements that have to be met by a European patent application or a granted patent which are laid down in the different Articles and Rules of the EPC have to be seen and considered as an integral whole. However, in the absence of any specific reference by the Appellant to an aspect or argument in either the reasons for the decision or in the obiter dictum, the Board does not see that the OD’s decision on added matter has been influenced by its opinion on sufficiency of disclosure. Moreover, the Board 3261 | 3398
T 725/05 – Obiter Dicta And The Right To Be Heard
K’s Law – The ebook
cannot duplicate Appellant’s suspicion that this could be seen differently by another deciding body, for instance a national court. [8] For all these reasons the Board comes to the decision that the OD by adding an obiter dictum at the end of the appealed decision had not made a substantial procedural mistake which would require remittal of the case to the department of first instance for further prosecution according to A 111(1). [9] This
decision
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even
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offer.
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To read the whole decision, click here.
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see
that
tomorrow,
if
you
like.
T 1100/07 – A Crucial Witness Must Be Heard
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T 1100/07 – A Crucial Witness Must Be Heard 15 Dez 2009
This decision deals with the refusal of the Opposition Division (OD) to hear two witnesses on the subject of a prior public use. […] In relation to the hearing of witnesses, the Board takes the relevant principles to be: A party is entitled to adduce evidence by any of the methods set out in A 117. The deciding body cannot choose the evidence which it considers sufficient for establishing the truth: T 474/04 [8]. [2.1] Nevertheless, it is the function of a witness to confirm what has been alleged (T 543/95) and not to fill in the gaps in facts brought forward to support the case (T 374/02 [1.3, 2nd §]). For this reason, it is necessary that a party who wishes to adduce evidence by means of a witness should indicate what factual details it wishes to prove by this means (T 374/02, [1.3; 1st §]). [2.2] The credibility (and this includes the reliability) of a witness can only be evaluated by hearing his oral evidence (J 10/04 [3]). If the maker of a statement is also offered as a witness, it is thus wrong to evaluate his written evidence without hearing him. [2.3] […] The sole question on which the OD concentrated in considering the issue of public prior use was whether or not the vehicle which was sold by Eichhoff to Hannover City had a storage reel for a hose. The OD concluded that since documents E8 were insufficient to prove that the hose reel and thus all features of the claim were present, no reason had been seen to hear witnesses. [3.2] […] Turning to the OD’s decision not to hear the witnesses, first, as to the offer of Mr Lonke, the Board concludes that the OD was justified in deciding not to hear him. In the notice of opposition he was offered as a witness to prove that the device for the hose-guide depicted in the drawing E8/4 was configured in accordance with the patent, and was delivered on a vehicle to Hannover City. As was pointed out by the OD in its communication of 21 December 2006, however, the drawing E8/4 does not show a reel for winding up a hose and so the evidence offered did not relate to the issue of the hose reel. Although the offer of Mr Lonke as a witness was repeated in the appellant’s letter of 6 February 2007, he was here only offered as witness to confirm what was stated in the letter, which itself only consisted of assertions about what various documents showed, in particular E8/5 and E8/6. The documents, however, spoke for themselves and Mr Lonke’s confirmation of what the documents showed could add nothing relevant to the case. [5] As to Mr Fichte, however, the position is different. It is true that the content of his statutory declaration was unsatisfactory. For example, he did not tie the brochure he mentioned to E8/1 or E8/5, he did not state precisely when the lorries he refers to were sold or to whom, nor did he give any details of what was mounted on the vehicles. However, he was also offered as a witness and this was not just to confirm the truth of his declaration. When the letter of 6 February 2007 is read as a whole, including the statement about what the statutory declaration was said to contain, and taken with the other evidence and what was asserted in the notice of opposition, it appears to the Board that he was being offered as a witness to give evidence about the technical details of the lorry which had been sold to Hannover City. One of these technical details concerned the hose reel which was said to be mounted on the vehicle, which was the single point on which the OD expressed itself as not being satisfied about the prior use. [6] While the OD was correct in saying that Mr Fichte’s statutory declaration as to facts taking place 20 years previously needed to be considered with care, the OD appears to have overlooked that he was not being offered merely to confirm the contents of the statement. In any event, given that he was being offered as a witness, it was incorrect to evaluate his written evidence without hearing him. [7] As to the patentee’s other arguments, it is true that Mr Fichte’s statement was not specific about the details of the vehicle but, again, he was also being offered as a witness to deal with the technical details of the vehicle and 3263 | 3398
T 1100/07 – A Crucial Witness Must Be Heard
K’s Law – The ebook
there cannot be any real doubt about what it was being said he could deal with in his evidence as a witness, particularly in view of the annotations on E8/6 filed with his statement. The respondent was in a position to know that Mr Fichte might corroborate the fact of the existence of the hose reel if the OD remained in doubt on the basis of the other evidence. The respondent was thus in a position to prepare auxiliary requests to meet this eventuality if the OD had decided to summon Mr Fichte. [8] The decision not to hear Mr Fichte was thus wrong and may have affected the outcome of the case, at least as regards the proprietor’s auxiliary request. In the circumstances, the decision as a whole should be set aside and the case remitted to the OD so that the evidence of Mr Fichte can be heard. [9] Since the appellant was entitled under the EPC to adduce evidence by any of the methods set out in A 117, the failure to allow it to do so constituted a substantial procedural violation. Since the decision not to hear Mr Fichte may have affected the outcome of the case, it would also be equitable to reimburse the appeal fee. [10] To read the whole decision, click here.
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T 1774/07 – Unallowable But Not Inadmissible
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T 1774/07 – Unallowable But Not Inadmissible 14 Dez 2009
The Board agrees with the [patentee] that the statement of the grounds of appeal contests the inventiveness of the claimed subject-matter by basing itself on a combination of documents which cannot manifestly legally succeed. In fact, one of these documents, i.e. D1, having been published after the filing date of the patent in suit, can only be state of the art in virtue of A 54(3) and is not a state of the art which can be used in discussing inventive step. However, the fact that the appellant’s arguments are erroneous and cannot succeed has no bearing on the admissibility of the appeal as the statement of the grounds of appeal contests with facts and arguments the reasoning of the decision under appeal and it thus specifies the legal and factual reasons on which the case for setting aside the decision is based. Therefore, the appeal complies formally with the requirements of A 108, third sentence, and R 99(2). Moreover, it is undisputed that the appeal complies with all the other requirements of A 106 to 108. [1] To read the whole decision, click here.
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T 508/08 – We Have No Ways To Make ’Em Talk !
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T 508/08 – We Have No Ways To Make ’Em Talk ! 12 Dez 2009
The present decision shows that the Boards are not all-powerful with respect to the first instance divisions. Two appeals were lodged against the decision of the opposition division (OD) whereby the European patent was maintained on the basis of a request filed during oral proceedings (OPs). [I] This request was headed “Second amended main request - as amended during OPs” [II] [The patentee] requested that the written decision as well as several paragraphs of the accompanying minutes of the OPs be corrected. It submitted that the minutes were inaccurate by stating in paragraph 20 that, after discussion of the main request filed on 6 November 2006, “all requests on file” were withdrawn. This should have referred only to withdrawal of “all the auxiliary requests on file” since the main request was not withdrawn but rather the subject of a decision rejecting it for failure to comply with A 123(2) EPC. The errors in the decision were the omission of that rejection of the main request. [III] The OD has at no time reacted in any way to the requests for correction. [V] […] It is common ground between the parties that the opposition division should have responded to [the patentee’s] requests for corrections of the minutes of the OPs. The board also agrees. As was stated in the decision T 1198/97 [7]: “Even when an appeal has been filed, only the department of first instance before which the OPs took place is competent and at the same time also obliged to decide in first instance on a request concerning the contents of the minutes of OPs held before it, firstly because it is their competence and duty under R 76 EPC 1973 to draw up the minutes correctly and completely and secondly because, if anybody, only the members of this department know what has happened and has been said or not during the OPs before it.” [1] Unfortunately, if the first instance (in this case, the OD) sees fit to ignore its obligation, there is nothing the board can do in this respect. The board has no power to compel the OD to discharge its obligations. Appellant I requested that the board defer consideration of its appeal until after the OD dealt with the request for corrections but it would appear that, if the board had adopted that course, the appeals could have been paralysed by the OD’s permanent inactivity. Moreover, simply deferring all action in appeal proceedings would be contrary to the public interest in resolving disputes over the existence or extent of patent protection. Accordingly, while it is a matter of great regret that the OD did not react to the request for correction, the board must deal with the case as best it can in the absence of such reaction. In this connection, it goes without saying that, while the OD may be open to criticism for ignoring that request, such criticism must not prevent a wholly objective assessment of the evidence provided by the OD’s decision and its minutes of the OPs before it. [2] As the parties’ accounts of the OPs are contradictory, the Board goes on to decide which version is, in the light of the available evidence, more likely to be correct. It comes to the conclusion that it is more likely that the patentee’s account is not correct. As a consequence, the patentee is not adversely affected by the decision and its appeal is rejected as inadmissible. This decision has already been commented (in French) by Laurent Teyssèdre on his blog. He draws the conclusion that patentees should be very careful when formulating their amendments and/or any withdrawal of requests. To read the whole decision, click here.
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T 1502/08 – Citing Drawbacks Is Not Teaching Away
K’s Law – The ebook
T 1502/08 – Citing Drawbacks Is Not Teaching Away 11 Dez 2009
Be warned - the present decision might definitely change your perception of Tex-Mex food. If you read on, never again will you be able to eat tacos without checking the precise shape of their shells. The subject-matter of the present invention concerns stable, self-standing taco shells.
Document D1, which constitutes the closest prior art, is also concerned with stable self-standing taco shells, which, like the taco shells of the present application, consist of a first and a second sidewall, the taco shells being configured such that the ratio height of the shell to width of the base is within the range of 1.50 to 4.0. The two sidewalls are connected by a W-shaped bottom.
Accordingly, the technical problem to be solved is the provision of structurally simpler, stable and self-standing taco shells. This problem was solved by replacing the W-shaped base according to D1 by a flat base. In the light of the overall teaching of the present application, the board is convinced that the problem has been plausibly solved. The provision of structurally simpler products may provide a valuable contribution to the state of the art and therefore give rise to an inventive step provided that the state of the art does not hint at the proposed solution and/or the simpler structure is not the result of concessions made in connection with other properties of the product. In the present case, it is noted that taco shells having a flat bottom are discussed in D1. However, providing a plurality of support points at different elevations, which causes the taco shell to be unstable when it is supported by its base, instead of providing coplanar support points, such a taco shell is in the eyes of the author of D1 not considered to be sufficiently stable. This passage does not teach away from using taco shells with a flat base. It rather tells the skilled person that there is a trade-off between simplicity of structure on the one hand and maximum stability on the other hand: if one is prepared to sacrifice maximum stability and accept that the taco shell does not stand perfectly when put onto an even surface but might wobble slightly, then a structurally simpler flat base is feasible. Sacrificing stability in favour of a simpler structure does therefore not involve an inventive step in the present case, so the requirements of A 56 are not met. [3.2] To read the whole decision, click here.
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K’s Law – The ebook
T 1014/05 - No Blind Remittal
T 1014/05 - No Blind Remittal 10 Dez 2009
[…] The [patent proprietor] filed amended claims according to eight auxiliary requests. [X] The [patent proprietor’s] final requests were as follows. Main request: to maintain the patent on the basis of the last main request submitted in the oral proceedings; alternatively, as first to third auxiliary requests: to maintain the patent on the basis of the latest-filed auxiliary requests I, II and III and alternatively, as a fourth auxiliary request: to remit the case to the first instance. [XIV] Having rejected the main request (as contrary to A 76(1) EPC) and the first, second, and third auxiliary requests (as late filed and contrary to the principle of procedural economy), the Board has to deal with the request for remittal. Since the board first has to decide on the [patent proprietor’s] higher ranking requests, the question arises as to the basis upon which the case should be remitted to the first instance, as the first instance would be bound by the ratio decidendi of the board, A 111(2) EPC 1973. As the [patent proprietor] cannot reasonably have meant remittal after a decision on the higher ranking requests, the board interprets the fourth auxiliary request as actually meaning that the case should be remitted to the first instance in order to decide on the higher ranking requests. [5.1] According to A 111(1) EPC 1973, second sentence, the board of appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. The board consequently has a discretion as to whether to remit the case to the first instance or not. The relevant jurisprudence of the boards of appeal reflects this discretion, which is exercised according to the circumstances of the individual case. [5.2] In the present case the board had to decide on an appeal filed against the decision by the opposition division finding, inter alia, that the ground for opposition under A 100(c) EPC 1973 (in conjunction with A 76(1) EPC 1973) did not prejudice the maintenance of the patent unamended. The amendments made in accordance with the main request, which were admitted by the board, had no substantial influence on the meaning, in the given context, of the feature which was found to be contrary to A 76(1) EPC 1973. The relevant issue of the main request thus clearly relates to the case under appeal which was discussed with the parties and which had to be decided by the board. As the board had already come to a conclusion on whether the claims according to the [patent proprietor’s] main request satisfied A 76(1) EPC 1973, and had decided not to admit the [patent proprietor’s] first, second and third auxiliary requests, the board found that remitting the case to the first instance was neither necessary nor appropriate under the circumstances. Hence the board did not allow the [patent proprietor’s] fourth auxiliary request for remittal. [5.3] Since the [patent proprietor’s] main request is not allowable, the [patent proprietor’s] first, second and third auxiliary requests are not admitted into the proceedings and the [patent proprietor’s] fourth auxiliary request for remittal is not allowed, the patent must be revoked, A 101(3)(b) EPC. [6] The present decision shows that a Board of appeal will only consider a remittal if it has identified at least one set of claims which appears to have overcome or bypassed the grounds for rejection of the set of claims on file before the first instance. A “blind” remittal based on auxiliary requests the Board has not considered so far is not accepted. In other words, if N requests have been found inadmissible or unallowable, the N+1st (auxiliary) request cannot consist in a request for remittal, or it will be rejected. What I find surprising, though, is that the Board acknowledges that there are higher ranking requests but nevertheless revokes the patent (apparently) without considering them at all. To read the whole decision, click here.
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T 1785/06 – Einstein Dethroned ? Not Quite
K’s Law – The ebook
T 1785/06 – Einstein Dethroned ? Not Quite 9 Dez 2009
How to deal with a method that contradicts our present best knowledge of the laws of nature ? That is the problem faced by the Board of appeal in the present decision. […] The embodiments of the present claims aim at a solution to the problem of determining the absolute value and the direction of the velocity of an object independently of other reference objects, i.e. as an absolute property. According to the application the problem is solved by measuring the recoil exerted by an emitter (Sender) on the transmitter itself. The application postulates that the frequency f of an electromagnetic wave emitted by the emitter and, as a consequence, the recoil R exerted by the wave on the emitter, is independent of the absolute velocity v. Thus an absolute measurement of the velocity, independent of the reference system of an observer, is made possible. The emitter which, when at rest, emits at a frequency f0, produces, when fixed to an object moving with the speed v, in the direction of movement, a frequency f1 increased by v/c. The frequency f2 of the emitter when situated in a position of the object opposed to the direction of movement, is reduced by the Doppler shift. Because of the different frequencies of the waves in forward and backward direction the waves exert different recoil forces on the object, which are measurable in terms of pressure differences or shifts and which represent a measure of the absolute velocity of the object. [3.1] The Examining Division (ED) justified the refusal of the application inter alia with the statement that it concerned a method that could not be successfully carried out because it was in contradiction with physical laws that were not disproved so far. In particular the claimed emission of different frequencies in forward and backward direction of uniformly moving emitters resulting in different recoil in different emission directions was physically impossible. In particular, the Doppler effect to which the applicant referred to explain its invention did not modify the eigenfrequency f0 of a moving emitter. In order for there to be an observable Doppler effect it was necessary to have a relative movement between an emitter and an observer. Moreover the present application was in contradiction to the so far undisproved principle of relativity according to which there is no means of measuring the absolute velocity of an inertial system. [3.2] The appellant argued against the refusal of its application by explanations concerning the “absolute” and “relative” “principle of relativity”, the nature of vector quantities, electromagnetic waves as orientation means, and, by referring to the “quantum matrix structure of the vacuum”, the orientation and relative and proper orientations of electromagnetic waves, respectively. Moreover it substantiated its appeal by discussing alleged errors in the “hypothesis of relativity” and explanations concerning the nature of mass and the “quantum organic principle of operation of the matrix”. The presentation was completed by filing various appendices and extracts from textbooks and other publications, among which explanations of the Doppler effect, for example, in radar and radio measuring technology. In particular, the appellant argued that the principle of relativity was a simple hypothesis based merely on the fact that no possibility of determining the absolute orientation had been found so far. The appellant opposed its “reality theory” to Einstein’s hypothesis of relativity. According to the “reality theory” electromagnetic waves allow to determine a universal basic orientation of location, distance and movement of an object. This could be determined via the velocity dependent recoil of electromagnetic waves on the emitter. […] [3.4] The Board considers the justification given by the ED persuasive and has not much to add. [3.4] There is no physical observation or theory known to the Board that would support the assumption on which the application is based, i.e. that the frequency of the wave emitted by an emitter moving with constant velocity is dependent on the velocity of the emitter. Quite to the contrary, the subject-matter of the application contradicts physical principles such as those that manifest themselves in spectroscopic studies, in a reproductive manner and without any exception. […] The hypothesis made by the appellant, i.e. the existence of an absolute Doppler effect with respect to a quantum matrix in rest, cannot be reconciled with generally accepted physical knowledge that is supported by observations. The real observable Doppler effect necessarily presupposes a relative movement between an emitter and an observer and can only provide information on their relative movement. [3.4.1] 3269 | 3398
T 1785/06 – Einstein Dethroned ? Not Quite
K’s Law – The ebook
[…] The requirement of feasibility (Ausführbarkeit) of A 83 EPC 1973 is based on the consideration that the grant of the exclusive right (Monopolrecht) is only justified if the indications disclosed in an application allow the skilled person working in the respective field to practically carry out the subject-matter of the invention by following these indications and possibly by using its general technical knowledge. It is not the goal of the patent system to grant exclusive rights for technical speculations which cannot be realized at the date of the application, for whatever reasons. Of course, the Board does not categorically exclude the possibility that new scientific discoveries invalidate existing knowledge and theories and can lead to fundamentally new inventions. However, the more a new invention breaks with previously valid technical knowledge, the greater the requirements concerning the amount of technical information and explanation in the application to enable the invention to be carried out by the average skilled person to whom only that conventional knowledge is available. In the present case the “Doppler recoil method” according to the application for determining the absolute speed claims effects which are, for those skilled in the art, in contradiction with the hitherto known physical effects. The application does not satisfy the required higher standard concerning intelligibility (Nachvollziehbarkeit) of the technical indications, as neither the application itself nor the explanations of the applicant are suitable for proving the existence of a “Doppler recoil effect” which is so far unknown in physics and for which there is no evidence. [3.4.3] Personally, I would have refused an application such as the present one under A 56 as no technical problem is solved by a method that does not work. However, this is not what the Guidelines suggest. A claim to a perpetual motion machine is to be rejected for insufficient disclosure (A 83) if the claims are merely structural (2010 Draft Guidelines C-II 4.11) and also for lack of industrial application (A 57) if the claims are directed to its function (C-IV 5.1). Concrete examples are found in T 85/82 [2], T 541/96 [8-9], and T 1538/05 [5]. To read the whole decision (in German), click here.
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K’s Law – The ebook
R 8/09 - Distrust Labels
R 8/09 - Distrust Labels 8 Dez 2009
The petition for review was filed by the (second) opponent after the Board in decision T 919/07 had maintained the opposed patent in amended form. The discussion focused on the use the Board had made of document D28 in the oral proceedings (OPs). […] The petitioner contends that during OPs he was not aware, and could not foresee, that D28 would be regarded as experimental evidence in relation to the claims rather than the strenuously argued possible prejudice. The only experimental evidence on file was that contained in two other documents filed by the patentee. [1.3] It is a matter of fact that the distinction on which the petition is based between D28 as evidence of “prejudice” and as “experimental evidence”, appeared for the first time in the decision. At least there is nothing leading the Enlarged Board to think that at some earlier point such a distinction was made. Thus, the exception mentioned in R 106 seems to apply and this Board considers that the petition is at least not clearly inadmissible. The question whether the fact that the Board stated that D28 was taken as experimental evidence and not as evidence of a prejudice deprived the opponent of an appropriate defence and violated its right to be heard is an issue regarding the substance and thus the allowability of the present petition. [1.4] The petitioner contends that its right to be heard was violated and that the decision took it by surprise. In this respect, it relies on the assumption that its argumentation would have been different had the Board, prior to or during the OPs, drawn its attention to the fact that D28 would be regarded as experimental evidence and not as evidence of a prejudice. To dispute the merits of experimental evidence requires detailed arguments about the material facts which is not the case when the dispute is only about the existence or not of prejudice as a concept. The only arguments presented by both respondents in respect of D28 were related to its use as evidence of prejudice. In other words the petitioner alleges that the Board used D28 in an improper way and drew wrong information from it; this could have been avoided if the petitioner had known that D28 would be regarded as experimental evidence and been allowed to make the appropriate more detailed arguments. [2.1] However, the fact that the patentee considered D28 to be a crucial document was already clear from its grounds of appeal, where it was discussed at length [… and the other opponent] replied at length. [2.2] The question was also debated during the opposition proceedings. As the petitioner quoted in its petition, the other opponent stated in its submissions that the examples cited by the patentee did not represent a prejudice […]. It is also to be noted that in its submissions, the patentee […] explained in some detail why D28 suggests that the reaction would not proceed at all and why it was thus most surprising that the successful reaction occurs. [2.3] It is true that as a matter of vocabulary, the patentee used the word “prejudice”. But it is equally true that it also submitted that what D28 was intended to prove was that the skilled person had no reasonable expectation of obtaining the McMurry reaction using the formula of the patent at issue. That D28 was discussed in detail under that angle is also evidenced by the fact that the patentee speaks of “the experimental results described in D28” [in its] grounds of appeal. [2.4] Assuming for the sake of argument that D28 had been filed as evidence of technical prejudice in the meaning acknowledged by the case law (namely an opinion or a general preconceived idea widely and universally held by experts in that field), and that it was implicitly obvious for the respondents that this could not be the case, it would none the less remain a fact that the document formed part of the debate, and was presented by the appellant as crucial. Whatever the legal label allocated to this document, its contents were not a general concept but a description of a reaction which called for precise arguments- as was done in [the other opponent’s] written submissions. Whatever D28 was called, challenging the correctness of its technical disclosure was a necessary step in order to dispute that its specific results could amount to an opinion generally shared by experts in this field. This approach was not inconceivable for the petitioner who objected to the fact that “the Patentee extends the specific results obtained” to a prejudice against heterocoupling in general. The fact that it might be obvious that the reaction in question did not amount to a technical prejudice did not mean that the evidence of the reaction as disclosed in D28 should not or could not have been challenged. [2.5] 3271 | 3398
K’s Law – The ebook
R 8/09 - Distrust Labels
Because the change of the label put on D28 did not change the discussion to be held on it, the petitioner also cannot rely on T 18/81. [2.6] Insofar as the submissions of the petitioner may be understood as challenging the correctness of the decision of the Board of Appeal in its interpretation of D28 and in maintaining the patent in amended form as a consequence of that interpretation, such a review would concern the question of the correct application of substantive law and is thus outside the scope of proceedings under A 112a. [2.7] It follows from the foregoing that it is evident that no fundamental violation of the right to be heard occurred during appeal proceedings. Since that was the only violation alleged, the petition has to be rejected as clearly unallowable. [3] To download the whole decision, go here.
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T 815/04 - Give A Problem – Or You'll Have One
K’s Law – The ebook
T 815/04 - Give A Problem – Or You'll Have One 7 Dez 2009
[…] The board notes that the application as filed contains no express indication of a particular technical problem underlying the invention. [3] The appellant argued that the method of D2 carried the risk that some of the hydrogen trapped by the adsorbing material would be catalytically oxidised to water rather than simply be adsorbed and trapped upon contact with such a material. The so-formed water would then be adsorbed by the adsorbent material, and would remain adsorbed even upon regeneration of the adsorbent. Hence, at some stage, some of this water would [lead] to problems in a subsequent cryogenic distillation. [3.1] The appellant thus considered that starting from a process as disclosed in D2, the technical problem consisted in providing an effective and safer process, and that this problem was effectively solved by a process according to present claim 1, which entailed removing any residual hydrogen not by adsorption, but by contacting the stream with a catalyst for oxidising hydrogen to water. [3.2] The board however notes that it is expressly stated in D2 that using the regeneration methods described therein the removal of hydrogen to the degree required e.g. for cryogenic distillation over repeated hydrogen adsorption and adsorbent regeneration cycles, and that water and carbon dioxide are also removed to the required extent. The appellant did not provide any evidence to the contrary in order to corroborate its assertion concerning the alleged disadvantage of the process according to D2. Moreover, although D2 is mentioned as prior art in the present application as originally filed, a technical problem to be solved with respect to D2 is not expressly formulated therein. The risk allegedly associated with the hydrogen adsorption taught by D2 is not at all addressed in the application as filed. [3.4] The technical problem as formulated by the appellant is thus based on a disadvantage of the closest prior art which was only alleged after the filing date of the present application. Further, said technical problem cannot be deduced either from the application as filed, not even when considering the content of document D2 cited therein. In accordance with established case law the appellant’s formulation of the technical problem is thus not accepted. [3.4] In the light of document D2, the technical problem underlying the application as amended can however be seen in providing a further process for removing the four mentioned impurities from an air stream. [3.5] As always in such cases, the claim was finally found to lack inventive step. It is risky not to explicitly state a problem solved with respect to each of the prior art documents cited in an application. If one cannot do so, one has to provide evidence to the EPO that such a problem is indeed solved. Mere allegations will not do. To read the whole decision, click here.
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T 211/05 – Never Sign For the Missing Guy
K’s Law – The ebook
T 211/05 – Never Sign For the Missing Guy 5 Dez 2009
When filing an appeal after its application had been rejected, the applicant did not know that the Board of appeal would find a formal reason for invalidating the rejection, based on the fact that the decision was not signed by all three examiners. As a matter of fact, one of the examiners was on sick leave, which prompted his director to sign on his behalf. A 18 EPC provides that the Examining Divisions (ED) shall be responsible for the examination of EP applications and that an ED shall consist of three technically qualified examiners (with the exception of the case where the nature of the decision requires the ED to be enlarged by the addition of a legally qualified examiner). Moreover, the voting procedure referred to in the last sentence of A 18(2) clearly implies that the decision on the application rests on the individual vote of the examiners designated to form the ED in charge of the application. It follows from these provisions and from the principle “delegatus non potest delegare” that the power to examine a patent application and to decide on it according to A 96 and A 97 EPC 1973 has to be exercised personally by the examiners in charge of the application (cf. T 999/93 [3] and, for an Opposition Division, T 390/86 [7]). Not only has this power to be exercised personally but it also has to be exercised in this way with the full knowledge of the applicant and the public. As a consequence, in a written decision of rejection at the end of purely written proceedings, i.e. a decision that has not been announced in oral proceedings (OPs) in the presence of all the members of the ED, the applicant and the public have to be capable of verifying that the decision has been made by the examiners designated to form the ED in charge of the application. Accordingly, R 70(1) EPC 1973 provides that any decision, communication and notice from the EPO is to be signed by and to state the name of the employee responsible. R 70(2), however, allows for one exception to the requirement of a signature by providing that where the documents mentioned in paragraph 1 are produced by the employee responsible using a computer, a seal may replace the signature. [2] To the knowledge of the Board, according to the practice of the EPO at the date of the impugned decision, all the members of the ED had to sign form 2048 in case of a rejection of a patent application. […] This form was not sent to the applicant but it could be freely consulted by file inspection on the EPO web site. The grounds of the decision are exposed on form 2916 bearing the seal of the EPO in accordance with R 70(2), which was sent to the applicant. [3] […] At no point of time the director of the administrative unit to which the examiners belonged has been part of the composition of the ED as it appeared in the data bases of the EPO, was communicated to the applicant and had been disclosed to the public. Nor is there any conclusive evidence that the director had decided to designate himself as second examiner of the division and that this change had not been registered in the date bases of the EPO, for an unknown reason. As a matter of fact, the director had the power to modify the composition of the ED formed by examiners of his unit and to designate himself second member of the DE, as he was also qualified to act as an examiner. But the circumstances indicate that he has not chosen to exercise this power in the present case. The inscription “i.V.” (meaning “in Vertretung”, i.e. “p.p.”) on form 2048, the absence of the director’s name on the other forms and the explanations of the director all indicate that he has signed form 2048 in place of the missing member of the ED. […] Therefore the Board concludes that the director was not part of the ED and could not exercise the powers conferred to the members of the ED. [4] The question remains whether the director nevertheless had the power to sign the decision in replacement of the second examiner who was not capable of signing himself. In case T 1170/05 [2.3-5] the Board has considered that in the exceptional situation where a member of an ED is unable (here owing to death) to sign the decision after it has been announced at the end of OPs, it should be accepted that the written decision be signed by the president of the ED in the name of the missing member, provided that the reasons for the decision reflect the point of view adopted by the ED as a whole when deliberating at the end of the OPs. Two different Boards have expressed similar opinions in cases T 390/86 [7] and T 243/87 [4]. 3274 | 3398
T 211/05 – Never Sign For the Missing Guy
K’s Law – The ebook
In each of these cases, the decision had been taken in OPs in the presence of all the members of the ED. Therefore the critical question was not whether the decision of rejection had been taken by the ED as a whole but only if the reasons for the decision could be considered to reflect the point of view of all the members of the ED. In the present case the situation is quite different because there were no OPs and, therefore, no decision announced at OPs in the presence of all members of the ED. According to form 2048, the impugned decision was taken in the absence of the second examiner. In contrast to the above cited decisions, it cannot be established that the decision of rejection was taken by the three members forming the ED. The signature of the director in place of the second examiner has no legal value in this respect because there is no provision in the EPC allowing a director to sign in the name of a member of an ED of which he is not a member. Such an authorisation is not implicit in the function of a director as superior of the examiner. As already stated above, the last sentence of A 18(2) implies that the decision on the application rests on the individual vote of the examiners designated to form a given ED. Moreover, the signature of the director could not be considered as a guarantee that the second examiner has fully participated in the decision process and that the reasons for the decision reflect the result of the deliberations of the duly composed ED. [5] The Board concludes that the impugned decision, having been taken by an ED that was incomplete with respect to its official composition, is not valid and has to be cancelled. [6] The Board observers that it would have been sufficient to wait for the recovery of the second examiner, or to replace him officially as member of the ED and then to take the decision in the modified composition, taking care that the names of the members having taken in the decision appear in the internal data bases of the EPO and on form 2007 bearing the official seal of the EPO. [7] NB : This decision has also been discussed here (in French). To read the whole decision (in French), click here.
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R 13/09 – No Right To Be Heard On Irrelevant Issues
K’s Law – The ebook
R 13/09 – No Right To Be Heard On Irrelevant Issues 4 Dez 2009
The petition for review was filed by the patentee after the Board in decision T 15/07 had revoked the opposed patent. The petitioner complained that one of its main arguments regarding inventive step was rebutted using a ground which the petitioner could not comment on. […] The petition for review is based on an alleged fundamental violation of A 113 EPC. In R 1/08 [3], the Enlarged Board of Appeal (EBA) found that a petitioner, to succeed with this objection, had to establish (a) that the contested decision was based on an assessment or on reasoning relating to grounds or evidence which the petitioner was not aware of and had no opportunity to comment upon and (b) that a causal link existed between this procedural defect and the final decision, otherwise the alleged defect could not be considered decisive and hence not fundamental. [2.1] The petition for review is clearly not a means to review the application of substantive law. A review of the application of substantive law would mean adding a third instance to the procedure before the EPO. The petitioner’s submissions are therefore to be considered strictly and exclusively under the aspect of the right to be heard. For this purpose, in the present case, it is nonetheless necessary to consider the discussion of inventive step during the proceedings in some detail. [2.2] [… The] main dispute between the parties concerned the assessment of inventive step using the problem-solution approach based on the prior art documents D3 and D18. It was common ground that document D3, proposing ciprofloxacin as active agent for antibacterial ophthalmic compositions, represented the closest prior art. Document D18 is a scientific paper comparing the in vitro activity of ciprofloxacin and moxifloxacin against a number of bacteria strains […]. According to D18, ciprofloxacin was much more active in vitro against Pseudomonas aeruginosa, which was an important ophthalmic pathogen, whereas moxifloxacin was more active against other bacteria such as e.g. MSSA and MRSA which, according to the patent, were also important ophthalmic pathogens. [2.3] In point 3.4.1 of the decision under review, the Board assessed the inventive step of the claimed subject-matter using the problem-solution approach based on the facts referred to above. It identified the technical problem as follows: “provision of a topical composition for treating or preventing ophthalmic infections which is more effective against key ophthalmic pathogens”. It then came to the conclusion that for solving this problem the skilled person would select moxifloxacin to replace ciprofloxacin as the active agent since from D18 it appeared to be more potent than ciprofloxacin against some of the key ophthalmic pathogens. [2.4] As the petitioner has not objected to the statements and findings in point 3.4.1, the EBA is satisfied that this part of the decision, in particular the definition of the problem to be solved, is based on grounds and evidence both parties were aware of and had opportunity to comment upon before the decision was taken. Thus, for this part of the decision, [the above mentioned] requirement (a) for a successful petition for review is clearly not met. [2.5] Turning now to point 3.4.2 entitled “Additional arguments of the respondent”, the question arises whether the findings objected to by the petitioner in this part of the decision fundamentally violated A 113 and, if so, had any influence on the Board’s assessment of inventive step. [2.6] Point 3.4.2 of the decision concerns the petitioner’s additional argument that an ophthalmologist “did not in general identify the pathogens but treated them empirically” and that, therefore, “a topical ophthalmological composition had to be effective against all the relevant ocular pathogens and certainly against Pseudomonas aeruginosa”. Consequently, the skilled person would not have considered to substitute moxifloxacin for ciprofloxacin as the active agent in antibiotic ophthalmic compositions [2.6.1]
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R 13/09 – No Right To Be Heard On Irrelevant Issues
K’s Law – The ebook
The reason for which the Board rejected this argument was that “it is not in line with the problem as defined in the original application” since the formulation of the problem leaves it open against which “key ophthalmic pathogens” the improved composition should be more effective than existing antibiotics. [2.6.2] As stated in decision R 1/08 [3.1], the EPC does not require that a Board must provide a party with all foreseeable arguments in favour of or against a request in advance. [2.6.3] Even if the parties had not been informed in advance of the Board’s view referred to above, it was nonetheless foreseeable that the additional argument of the petitioner could be used to support the presence of an inventive step only if it served to rebut some aspect of the specific chain of reasoning based on the problem-solution approach discussed at the oral proceedings. The petitioner could therefore not be surprised by the fact that the Board examined whether the additional argument was really relevant to the reasoning already presented. Nor could the petitioner be surprised by the conclusion of the Board that the additional argument was not in line with the stated problem and, as a consequence, could not succeed. As follows from uncontested point 3.4.1 of the decision under review and the patent itself the problem refers neither to improved efficacy against “all the relevant” ophthalmic pathogens nor to improved efficacy against specific ones, such as, in particular, Pseudomonas aeruginosa: the stated problem clearly remains unspecific in this respect. Thus, the conclusion reached by the Board in the objected part of the decision under review was based on a fact - the formulation of the problem - which the parties must have been aware of. [2.6.4] The petition for review is rejected as clearly unallowable. To read the whole decision, click here.
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T 1286/05 - Disclosed ? Undisclosed ? Hard To Say !
K’s Law – The ebook
T 1286/05 - Disclosed ? Undisclosed ? Hard To Say ! 3 Dez 2009
This decision, which I discussed in my previous post, also contains a noteworthy paragraph on the rare situation where subject-matter is both disclaimed in the application, and described as being within the scope of the claim. The patentee had filed an auxiliary request containing a disclaimer (“said drug not being cyclosporin”). It argued that this disclaimer was disclosed in the application. […] The paragraph bridging pages 29 and 30 of the original application cites example 2a of D1 and concludes with the statement: “Nonetheless, no claim is made herein to a pharmaceutical composition which comprises cyclosporine”. On the other hand, the passage on pages 21-25 contains a list of hydrophobic drugs which may be formulated in accordance with the present invention. This list cites cyclosporin among the anti-neoplastic agents and immunosuppressants. In the opinion of the board, there is only one way of logically reconciling these two seemingly contradictory passages: the original application intends to disclaim compositions comprising cyclosporin as such, but does not intend to disclaim any use related to cyclosporin or to compositions comprising cyclosporin. As the disclaimer in present claim 1 is not directed to the exclusion of a composition as such, it is not based on the application as originally filed. The only alternative way of interpreting these two passages would be to simply state that they are contradictory, in which case the original application would not provide a clear and unambiguous disclosure for the disclaimer either. [3.1] I first thought that the applicant had introduced the contradiction by filing an amended text in the PCT application, after having become aware of a document that destroyed the novelty of the subject-matter claimed in the priority application. However, this is not what had happened: the sentence disclaiming cyclosporine is already there in the GB priority document. So the true explanation for the contradiction might be somewhat less sophisticated: Shit happens. To read the whole decision, click here.
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T 1286/05 – Another Swiss Fatality
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T 1286/05 – Another Swiss Fatality 2 Dez 2009
In a recent post I have discussed a case where a Swiss-type claim was used outside the medical realm. I have recently come across the present decision, which also deals with such a situation. It is neither brand new nor completely unknown (e.g. it has been cited in Mrs Brimelow’s statement concerning G 2/08), but I think it is worth recalling. Independent claim 1 is drawn up in the form of a “second (further) medical use claim” as defined in G 5/83. However, in spite of the chosen format, this claim does not in fact reflect a second (further) medical use, as the feature “for substantially reducing the inhibitory effect of the hydrophilic surfactant component on the in vivo lipolysis of the digestible oil” clearly defines a non-therapeutic use. Although the reduction of the inhibitory effect of the hydrophilic surfactant on the in vivo lipolysis of the digestible oil has a significant influence on the bioavailability of the hydrophobic drug, which in its turn is an important factor for the administration of the drug, it does not per se involve the treatment or alleviation of an illness or of any pathological condition and is therefore non-therapeutic. As a consequence, it has to be established how a claim drawn up in the second medical use format but relating to a non-therapeutic activity has to be read for the assessment of novelty. [2.1] Example 2a of D1 discloses the preparation of a pharmaceutical composition comprising a lipophilic surfactant, a hydrophobic drug, a digestible oil and a hydrophilic surfactant. These compositions are characterised by enhanced resorption/bioavailability levels and/or a reduced variability in resorption/bioavailability levels. D1 does not mention the effect of the lipophilic surfactant in terms of a reduction of the inhibitory effect of the hydrophilic surfactant component on the in vivo lipolysis of the digestible oil. As a consequence, with all other features already being disclosed in D1, the non-therapeutic use (“for substantially reducing the inhibitory effect of the hydrophilic surfactant component on the in vivo lipolysis of the digestible oil”) is the only potentially distinguishing feature of present claim 1. [2.2] In G 5/83, the novelty derived from a new therapeutic use of a medicament in a “Swiss-type” claim, which relates to the use of a compound for the preparation of a medicament, was acknowledged by making reference to A 54(5) EPC 1973, according to which known substances or compositions used for the first time in a method as defined in A 52(4) EPC 1973 are novel. However, it was made clear that this special approach to the derivation of novelty can only be applied to claims to the use of substances or compositions intended for use in a method referred to in A 52(4) EPC 1973 (see G 5/83 [21]). [2.3] As a consequence, this special approach to the derivation of novelty cannot be applied to present claim 1, which has to be interpreted as a claim defining a conventional process of preparation. In this context, it is emphasised that the claim format “the use of a lipophilic surfactant component for the manufacture of a pharmaceutical composition (for a non-therapeutic use)…” is equivalent to a claim directed to a “process of preparing a pharmaceutical composition comprising a lipophilic surfactant component …”. In the present claim 1, the indication of an additional non-therapeutic effect (“for substantially reducing the inhibitory effect of the hydrophilic surfactant component on the in vivo lipolysis of the digestible oil”) of one of the components in the finished composition has a merely illustrative character and thus no influence whatsoever on the process of preparing the composition. Therefore, it is not suitable for establishing novelty over example 2a of D1. It is additionally noted that the present claim 1 - as is frequently the case with “Swiss-type” claims - does not specifically mention any process steps. Therefore, any non-naturally occurring product comprising all the features of the composition resulting from the process of preparation as claimed, such as e.g. the composition according to example 2a of D1, is detrimental for the novelty of the subject-matter claimed therein. As a consequence, the subject-matter of claim 1 of the main request does not meet the requirements of A 54. [2.4] The board is aware of the fact that according to G 2/88 novelty over D1 could in principle be established by reformulating claim 1 into a conventional non-medical use claim, as in such a claim the feature “for substantially reducing the inhibitory effect of the hydrophilic surfactant component on the in vivo lipolysis of the digestible oil” would refer to a technical effect which is not disclosed in D1. However, the board sees no possibility for 3279 | 3398
T 1286/05 – Another Swiss Fatality
K’s Law – The ebook
such a reformulation without offending against the provisions of A 123(3), as the change from the only independent claim of the patent as granted relating to a process of preparation (“Use of a lipophilic surfactant component for the manufacture of a pharmaceutical composition …”) to a claim referring to a use for achieving a particular effect (“Use of a lipophilic surfactant component for reducing the inhibitory effect of the hydrophilic surfactant …”) would extend the protection conferred. [2.5] In other words, the patentee, when climbing in the Swiss alps, has fallen into an inescapable crevasse which opens between G 5/83 and A 123(3). To read the whole decision, click here.
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K’s Law – The e
T 1464/05 - Sales of Test Samples Do Not Necessarily Imply Confidentiality
T 1464/05 - Sales of Test Samples Do Not Necessarily Imply Confidentiality 1 Dez 2009
In T 782/92 [2.2], it was held that “a product made available for test purposes is generally to be treated as confidential. Sale of the product in a limited quantity may indicate sale for test purposes, if the product is normally sold in large quantities.” The present decision shows that this reasoning is not always followed. The public prior use alleged by the appellant relates to the offer of sale, sale and delivery of the product Sepigel H400 before the priority date of the patent in suit […] During the appeal proceedings the parties did not dispute the alleged delivery 200 kg of the product Sepigel H400 before the priority date of the patent in suit [… T]he opposition division (OD) held that an amount of 200 kg of Sepigel H400 was suitable for test purposes only and that consequently the alleged sale and delivery of the product were bound by an implicit confidentiality agreement. […] [4.1] While document E1-a refers to the delivery in 1991 of a small sample (“échantillon”) of the product for testing purposes, the subsequent delivery of the product evidenced by documents E1-b to E1-f involved 200 kg of the product. In view of the amounts of composition required for the production of optical fibre cables, especially of submarine cables, the Board concurs with the OD that an amount of 200 kg of the product, although clearly a bigger amount than the small sample initially delivered, would not have been sufficient for the production of optical cables on a commercial scale, but at the most for possibly carrying out tests in the production of optical cables and with the cables so obtained. However, as held in decision T 681/01 [2.8], “there must be something in the circumstances that suggests that a confidential relation existed before a delivery which appears to be the result of an ordinary commercial transaction can be disregarded as not making the delivered goods available to a member of the public”, and […] the mere fact that a product has been delivered possibly for carrying out tests in what appears to be the result of an ordinary commercial transaction does not constitute by itself, in the absence of any other special circumstance or supporting evidence, a sufficient condition for concluding that the product was necessarily delivered under an implicit confidentiality agreement (see in this respect decisions T 602/91 [2.1-2], T 264/99 [4], T 913/01 [1.3], T 407/03 [2.3], and T 1510/06 [4.2]). In the particular circumstances of the present case, and with reference to the delivery involving 200 kg of the product, not only is there no indication that any express secrecy agreement existed between Seppic and Teleco, but also no indication that any particular or special relationship existed between the two companies other than the ordinary relationship between a seller and a buyer company. In particular, there is no indication in the evidence on file that the delivery of the product occurred at some stage of the development of the product before its unrestricted introduction into the market as contended by the respondent, or that the product Sepigel H400 was manufactured by Seppic within a technical cooperation agreement or within a research or development program with Teleco, or restrictively sold by Seppic to Teleco under predetermined conditions or within a contractual relationship from which any particular interest in a secrecy agreement could be derived. On the contrary, the confluence of the following circumstances would rather indicate that the delivery of the product to Teleco took place as an ordinary commercial transaction: - The delivery 200 kg of the product took place about one and a half years after a small sample had been sent for testing predetermined characteristics and, while the small sample had apparently been sent free of charge, Teleco was charged for the delivery of the amount of 200 kg of the product. These facts constitute an indication that Teleco first obtained information on the characteristics of the product before acquiring the product as a typical potential end user of this kind of products. - One and a half years before the delivery of 200 kg of the product, the product already had a trade name "Sepigel H400" consistently used in the documents on file, and the details of its composition and manufacturing process had been deposited at a notary’s office. These facts would indicate that the development stage of the product had already been completed before the delivery of the product. 3281 | 3398
T 1464/05 - Sales of Test Samples Do Not Necessarily Imply Confidentiality
- The product Sepigel H400 was offered to at least three further companies. This fact indicates the interest of Seppic to disclose the product to further potential customers during what appears to have also constituted routine commercial contacts, and therefore also the intention of Seppic to produce and sell the product commercially. […] There is no evidence that further negotiations took place between Seppic and Teleco or that subsequent deliveries of the product were made or that Teleco actually produced optical cables with the delivered product. Nonetheless, although such evidence would have further supported the above assessment, the mere absence of such evidence does not affect, and is not at variance with the above assessment. In view of the above, and in the absence of any indication or evidence to the contrary, the Board sees no reason for not considering the offer and delivery of the product Sepigel H400 by Seppic to Teleco as a regular and unrestricted commercial transaction without implicit obligation of confidentiality on the part of the recipient Teleco as a member of the public who is therefore free to disclose any information that could have been gained from the circumstances under which the delivery took place. [4.2] NB: This decision is also discussed here (in French). To read the whole decision, click here.
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K’s Law – The e
T 565/07 – Converge !
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T 565/07 – Converge ! 30 Nov 2009
The opposed patent concerns a domestic throughflow heater.
The patentee filed several sets of claims ten days before the oral proceedings. Claim 1 of the main request reads: 1. Domestic technical electrical throughflow heater (1) fixedly installed in a wall, with technical subassemblies which are arranged in a housing, which is formed by a back wall (2) and a cover hood, and with a base support which is fastened to a wall and on which the cover hood is placed, characterised in that the base support is formed by the back wall (2) and the technical subassemblies of the domestic technical electrical throughflow heater fixedly installed in a wall are combined into a lain component (3) and this is connectible with and detachable from, in one piece, the base support fastened to the wall. Claim 1 of the second auxiliary request adds the feature of dependent claim 8 as granted: “wherein a cable entry bush (5) is integrally formed with the base supply.” Claim 1 of the third auxiliary further specifies the nature of this cable entry bush. Claim 1 of the fourth auxiliary request supplements the main request by adding the feature of dependent claim 2 as granted: “wherein the main component (3) is connected with the base support in that it is placed in shapelocking manner on at least a projection (8) and detented with the base support by two snap hooks (9). The Board admits the main request and the second auxiliary request but decides not to admit the third auxiliary request because it adds features taken from the description, which is considers surprising. The Board then deals with the fourth auxiliary request: […] Claim 1 of the fourth auxiliary request comprises, in addition to the features of claim 1 of the main request the feature of dependent claim 2 concerning the connection of the main component and the base support. As this connection has nothing to do with the cable entry bush, this auxiliary request heads into a completely different direction than the second and third auxiliary request. Even if in principle a patent proprietor has to be authorised within the framework of R 80 to limit the subject-matter of a patent by introducing features of a dependent claim in order to meet objections against the patentability of the independent claim that has been granted, the repeated application of this right in different directions, e.g. in the form of parallel our subsequently filed requests would lead to the result that the patent proprietor leaves it to the Board to decide in which of the different versions the patent should be maintained. This result is not reconcilable with A 113(2) according to which the Board has to stick to the “text submitted … by the proprietor”, which means that it is incumbent on the patent proprietor to decide on the version in which the patent is to be prosecuted, and to file one or several sets of claims that have to correspond to this decision and, as a consequence, to the chosen direction of limitation (see also T 382/96 [5.2] and T 446/00 [4.3]). This is all the more true if, as here, the new additional direction becomes known with the filing of the corresponding auxiliary request only ten days before the oral proceedings. [2.5] This is a tough decision. I understand that the Board is reluctant to deal with sets of claims heading into different directions, but the justification based on A 113(2) is somewhat artificial. The reference to T 382/96 and T 446/00 (which merely cites – and translates – T 382/96) is not very helpful. I much prefer the reasoning of T 240/04 [16], which comes to a similar conclusion, but on different grounds: “The operation of the sensor arrangement claimed in the third auxiliary request is a separate theme which diverges from the technical object of the impugned decision both according to the problem and its solution. The fact that the operation was already claimed in dependent claim 9 does not alter the fact that such a divergence 3283 | 3398
T 565/07 – Converge !
K’s Law – The ebook
exists. The abstract common feature that all the requests are alternative solutions does not constitute a sufficient factual link (sachliche Klammer). Moreover, the third auxiliary request differs not only from the matter discussed before the first instance but also from the object of the second auxiliary request. As a consequence, the requests of the appellant do not aim at a (converging) specification (Präzisierung) of the solutions examined in first instance. One rather hops from invention to invention. As far as the appeal proceedings are concerned, the EBA has developed the principle according to which these proceedings above all serve the right of the parties to an examination of the decision of first instance in court-like (gerichtsförmig) proceedings. The likeness of inter partes appeal proceedings to proceedings before an administrative court has been underlined by G 9/91, G 8/91, G 7/91 and G 1/99. In particular, G 1/99 has found that the main aim of the inter partes appeal proceedings is to give the losing party the opportunity to contest a decision which is adversely affecting it and to provoke a court decision on the merits of the fist instance decision. Thus the factual and legal framework of the opposition proceedings, as defined in G 9/91, is in principle decisive for the ensuing appeal proceedings. It directly follows that the disputed matter (Streitstoff) on appeal can only be modified to a certain extent. This principle is expressed in Article 12(4) RPBA which mentions the discretion of the Board not to admit requests that could have been presented in first-instance proceedings. In this instance, the appellant could have presented the auxiliary request 3 before the first instance. This was even mandatory because the amended independent claim concerns a problem that is only remotely related to the original problem and adds a fact (Sachverhalt) that has not been discussed before. The appellant had to expect that the board would be unable to decide on the matter. To admit the new request in such a situation would be tantamount to giving the patentee the possibility to force the board to remit the case to the first instance. This would disadvantage the opponent and would be contrary to procedural economy. For these reasons, the board does not admit the auxiliary request.” To read the whole decision (in German), click here.
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T 339/05 – Thou Shalt Not Overburden The Skilled Man
K’s Law – The e
T 339/05 – Thou Shalt Not Overburden The Skilled Man 28 Nov 2009
The decision [to refuse the application] was based on the claims as originally filed. Claim 1 reads as follows: “An ink composition […] containing an amorphously solidifying monomer compound, characterised in that the said compound shows a crystallinity of less than 1% when a melt of the compound is cooled at a rate of 5°C/min to past its solidification path and is then heated at a rate of 20°C/min to above its melting temperature.” [III] […] In claim 1, the amorphous solidifying monomer compound is characterised in that it shows a crystallinity of less than 1% when a melt of the compound is cooled at a rate of 5°C/min to past its solidification path and is then heated at a rate of 20°C/min to above its melting temperature. [3.1] The only amorphous solidifying monomer compounds satisfying this parameter which are disclosed in the application as filed are 2,2’-biphenol esters of carboxylic acids having an aromatic character. [3.2] The Appellant argued that other binders than the exemplified esters of 2,2’-biphenol [could] be identified by simple routine experimentation, following the procedure as described on page 3. [3.3] However, this procedure only describes how to determine whether or not a compound meets the parameter defined in claim 1. It gives no indication how to select the “amorphous solidifying monomer compounds” to be tested according to that procedure. Moreover, the examples of the present application show that many aromatic or non aromatic esters other than that of 2,2’-biphenol do not satisfy the parameter indicated in claim 1. So, the present examples actually give the impression that - apart from the monomers defined by their chemical structures in the description […] - few, if any, further suitable monomers could be found. [3.4] The Appellant confirmed this impression by pointing out that “it may be a lot of work to find compounds other than the exemplified ones, possibly because there are not too many compounds that show this behaviour, ...” [3.5] Hence it has to be determined whether or not this “lot of work” means that the subject-matter of claim 1 does not meet the requirements of A 83, i.e. whether or not it imposes an undue burden on the person skilled in the art trying to perform the claimed invention in the whole area claimed (see T 409/91 [3.5]). The person skilled in the art trying to trace monomers meeting the required parameter does not have at his disposal, neither by his common general knowledge nor by means of the disclosure in the application as filed, any information leading with a reasonable probability towards other monomers having the defined parameter other than those specifically disclosed. Consequently, the person skilled in the art has to find out merely by trial and error as to which, if any, compound meets the parameter set out in claim 1, i.e. by proceeding on a lottery basis or by making own investigations without the shadow of any useful guidance, namely by performing a research program. This constitutes an undue burden (see T 516/99 [3.1]). [3.6] That means that the fact that this can be done by routine experimentation is not sufficient for the subject-matter claimed to meet the requirements of A 83. [3.7] To read the whole decision, click here.
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T 1606/07 – Don’t Waste Your Ink on Device Claims
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T 1606/07 – Don’t Waste Your Ink on Device Claims 27 Nov 2009
[…] Claims 1 to 6 of the present application concern a method for determining the virtual address of a terminal. […] Independent apparatus claim 7 [“Product comprising means for carrying out completely a method according to one of the method claims”] only mentions means that are not specified in detail but are defined by a reference to the method claims. [1] The patentee refers to decision T 410/96 to justify the shortcut formulation of apparatus claim 7 as “means plus function” with referral to the characteristics of the method claims without mentioning them explicitly. In principle, the Board considers such a claim formulation to be admissible, provided that means for carrying out each step of the method claim to which the apparatus claim refers are foreseen (cf. T 410/96 [5]). This is the case for claim 7 because it ensures that the whole process and, thus, “all steps” are carried out. [2.1] The decision also contains a paragraph on the meaning of the term ‘product’ (Produkt). Apparently the patentee was not sure whether the Board would accept that a complex device could be referred to as ‘product’ and it offered auxiliary requests wherein the term ‘product’ was replaced by the term ‘system’. The Board does not really see a difficulty and states: The Board is of the opinion that the meaning of the term ‘product’ does not necessarily exclude a set (Ansammlung) of components that interact in view of a system. [2.2] To read the whole decision (in German), click here.
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T 1382/04 - Effect of a Request for Oral Proceedings
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T 1382/04 - Effect of a Request for Oral Proceedings 26 Nov 2009
The present decision deals with an appeal against the decision of the Examining Division to refuse the patent. On 18 December 2008, the Board issued a communication pursuant to Rule 5(3) RPBA expressing doubts about the original basis of amended claim 1. Construing claim 1 broadly, the Board also came to a negative preliminary conclusion regarding the novelty of the claimed system with respect to D1. Pursuant R 100(2), the Board invited the appellant to file observations within a period of four months (expiring on 28 April 2009). By a facsimile letter of 22 April 2009, the appellant requested an extension of time for filing the appellant’s comments on the Board’s communication. At the same time, the appellant requested oral proceedings (OPs) in the event that the prosecution of the application could not be resolved satisfactorily in writing. No comments were filed within the time limit. The request for an extension of the time limit was refused. Therefore, the question arises whether the mechanism of R 100(3) operates, in which case the application is deemed withdrawn. According to R 100(2), the appellant has been invited to file observations on the Board’s communication dated 18 December 2008. Failure to reply to such an invitation in due time would result in the application being deemed withdrawn (R 100(3)). Hence, before deciding on the present case, the Board has to ascertain that a reply meeting the requirements of R 100(2) has been received in due time. If no response qualifying as a reply has been received, the case is not pending any more. The question arises because the appellant has not made any substantive observation on the Board’s communication. [1] Historically, the legal instrument of a deemed withdrawal was introduced for administrative reasons as a means to save resources of patent offices and courts in cases where the applicant or appellant has clearly lost its interest in prosecuting an application. [1.1] In the present case, the Board considers the request for OPs which was received within the time limit for filing observations as a reply avoiding a deemed withdrawal under R 100(3) since it cannot be assumed that the appellant has lost his interest in the application while requesting OPs at the same time, apparently with a view to present his comments on the Board’s arguments orally. Thus, the Board concurs with a corresponding finding in decision T 861/03 [6.2]. [1.2] Hence, the present case is pending and, consequently, the Board has the power and obligation to issue a decision on the appeal. [1.3] NB: This decision has already been commented here (in French). To read the whole decision, just click here.
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T 597/07 – Which Must Not Cannot Be
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T 597/07 – Which Must Not Cannot Be 25 Nov 2009
I owe the knowledge of this decision, which had escaped my scrutiny, to Laurent Teyssèdre, who has discussed the various admissibility issues addressed by the Board in a recent post on his blog. There is still another interesting paragraph in this decision: the discussion of whether D1, a manufacturer’s information sheet for his clients, concerning a new generation of detergent compositions, was prior art under A 54(2). Based on the date given on its cover sheet, the opponent submitted that the publication year of D1 was 1992. The opponent also pointed out that this was further supported by the postal code “W-4000 Düsseldorf” given in the foot line of the cover sheet. Such postal codes had been used only between the unification of Germany in 1989 and the introduction of the present 5 digits postal code system in 1993. In its decision, the Opposition Division (OD) [did not consider] Document D1 […] as state of the art according to A 54 since the opponent’s argument that document D1 was of a type which was usually sent to clients was speculative and since in spite of the date and specific postal code printed on the document, it had not been shown where the document actually had turned up and that it had been made available to the public at a certain date. [III] […] The OD rejected the appellant’s arguments that papers of the type of document D1 are usually sent to clients and that it was against experience and economic sense to keep such a document unpublished until after the priority date of the patent in suit. In the present case however, even if the issue of the availability of document D1 is assessed on the balance of probabilities, the standard of proof chosen by the Appellant, the outcome is not in the Appellant’s favour. The reason is that the subject-matter disclosed in document D1 which is relevant here has been filed on 20 September 1993 in document D7 as an International Application published under the PCT on 14 April 1994. This fact alone casts reasonable doubts on a publication of document D1 more than one year earlier, namely in August 1992, the date mentioned on the cover sheet of document D1, since document D1 would have been citable against novelty and inventive step of the subject-matter claimed in document D7. Therefore the Board holds that even on the balance of probabilities the content of document D1 does not constitute prior art within the meaning of A 54(2). [3] The balance of probabilities is often difficult to strike. I find it pointless to blame the Board for whatever conclusion it reaches. The argument given by the Board, however, is unpersuasive. It might hold true in an ideal patent world, but whoever has worked in the patent department of a big company knows that (a) the patent department does not always know what the marketers do, and (b) even if it knew that there had been a very limited disclosure, it might still be tempted to file a patent application, hoping that nobody would discover the prior disclosure. Sounds familiar ? Of course not. To read the whole decision, click here.
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T 1855/06 – Wanna Be Swiss ? You Better Be Medic !
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T 1855/06 – Wanna Be Swiss ? You Better Be Medic ! 24 Nov 2009
This decision deals with Swiss-type claims outside the medical realm. Claim 1 of the opposed patent is directed to the “Use of finely dispersed hydrotalcite […] for manufacturing elastane fibres having improved resistance against […] hydrocarbons.” D1 and D2 disclose the use of hydrotalcite in the manufacture of elastane fibres but do not mention that the resulting fibres have an improved resistance. The Board comes to the conclusion that the claim is not novel as the allegedly distinguishing feature does not allow to establish a novel use according to the principles laid out in G 2/88 or G 6/88. The Board then adds some interesting considerations concerning the claim wording. […] For the sake of completeness, in order not to give the impression that the claim wording is acceptable to the Board, the following is noted. [5] The decisions G 2/88 and G 6/88 refer to the novelty of second non-medical applications and concern claims that are directed to the use of a known substance for a particular purpose. In the present case, this purpose is formulated as the production of elastane fibres having a particular property (improved resistance against hydrocarbons), so that the wording of claim 1 rather corresponds to the “Swiss claim” wording as proposed by decision G 1/83, which is considered appropriate for a novel second medical application. [5.1] In G 1/83 such use claims worded according to the “Swiss claim” formulation have only been considered novel in the particular case that the intended purpose of the manufacturing of the product consists in its subsequent use for a surgical or therapeutic treatment of the human or animal body or in a diagnostic method. This exception was provided in order to compensate for the limitation of patent protection resulting from A 52(4) EPC 1973 (cf. A 53 c) EPC 2000). Such compensation is not needed in other domains. [5.2] If, as in the present case, the alleged novel use concerns without doubt a non-medical use, the novelty of the use of a known composition for the known manufacturing of a known product cannot be derived from a novel property of the manufactured product. In such a case the use of a composition for manufacturing a product is to be interpreted as a method of manufacturing the product using the composition. It can be considered to be novel only if the method of manufacturing has not been made accessible to the public before, which is not true for granted claim 1, taking into consideration the disclosure of documents D1 and D2. In order to correspond to G 2/88 and G 6/88, the claimed use would then have to refer to a novel way of exploiting the novel property, and not merely to the manufacturing of a product which has this property. [5.3] Therefore the Board follows the opinion expressed in decision T 292/04 [1-8, in particular 3 and 7] that a use claim worded in the “Swiss claim” wording, which encompasses both uses in methods referred to in A 52(4) EPC 1973 and uses that are not concerned by this provision, cannot be novel in view of the principles of decision G 1/83, in so far as the claim refers to a use of a known composition for the known manufacturing of a known product for a non-medical purpose. This is all the more true in the present case where medical uses are not even mentioned. [5.4] Moreover, it should be noted that the Board is of the opinion that the subject-matter of claim 1 could not be considered to be novel also because, differently from the cases under consideration in G 2/88 and G 6/88, the purpose as formulated (“for improving the resistance against hydrocarbons”) does not refer to a novel technical activity that can be distinguished from the known purpose. Rather this purpose only aims at the improvement of a property of the elastane fibres that can be obtained by adding hydrotalcite. The claim does not require that this improvement be used in any way whatsoever. This is nothing but the realization that a known product has a certain property. Such a realization represents a mere discovery (cf. T 279/93 [5.4]). In order to transform it into a patentable invention and to derive the features of a novel technical effect under G 2/88 and G 6/88, the claimed use would have to be a novel use of the product which makes use of the discovery that the resistance against hydrocarbons is improved. In the present case no such novel use is expressed in the claim. As a consequence, the mere discovery of the improvement of a product property cannot justify the novelty of the use claim. [6] 3289 | 3398
T 1855/06 – Wanna Be Swiss ? You Better Be Medic !
K’s Law – The ebook
Last, but not least, the Board wishes to point out that in such a case, where the alleged new effect is at best the realization of an improvement of an already known property of a product, and not the first realization of a hitherto unknown property of this product, a use claim for any use of this improvement, formulated according to G 2/88 and G 6/88, is not appropriate at all to distinguish the claimed subject-matter from the prior art. In such a case it cannot be sufficient to vaguely direct the claim to an undetermined use of the improved property, but the use should be specified on the claim, so that it is clear what the use contains and that it is novel. [7] To read the whole decision (in German), click here.
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T 1763/06 – Abuse, Abandon and Adverse Affection
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T 1763/06 – Abuse, Abandon and Adverse Affection 23 Nov 2009
This decision does not open new grounds but it is a useful reminder of things easily forgotten. A 107 provides that only parties that are adversely affected by a decision may appeal the decision. In the present decision the opponent pointed out that the appeal of the patentee was inadmissible because he was not adversely affected: according to the opponent, during the first-instance proceedings the patent proprietor made no request for maintenance of the patent as granted or as amended according to the main or the auxiliary request No. 1 submitted with its statement of grounds of appeal; consequently, as far as the mentioned main and auxiliary request No. 1 were concerned, the patent proprietor was not adversely affected by the decision under appeal within the meaning of A 107. […] As regards the appeal of the patent proprietor, the opponent submitted that the subject-matter of the claims amended according to the main and auxiliary request No. 1 filed by the patent proprietor with its statement setting out the grounds of appeal was broader than that of the claims of the requests defended by the patent proprietor during the first-instance proceedings, and that consequently, as far as the mentioned main and auxiliary request No. 1 were concerned, the appeal was not admissible because the patent proprietor was not adversely affected by the decision under appeal within the meaning of A 107. However, the opponent did not contest the admissibility of the appeal of the patent proprietor with respect to the claims amended according to the remaining auxiliary requests No. 2 to 13 also filed with the statement of grounds of appeal, and during the oral proceedings the opponent did not dispute this finding of the Board. In addition, no other issue appears to call into question the admissibility of the appeal of the patent proprietor. Accordingly, irrespective of the admissibility into the proceedings of the main and auxiliary request No. 1 filed with the grounds of appeal, the admissibility requirements concerning the appeal filed by the patent proprietor were met at the time of filing the statement of grounds of appeal at least as far as the auxiliary requests No. 2 to 13 were concerned. As a consequence, the appeal of the patent proprietor is admissible. It is noted in this respect that an appeal can only be assessed as a whole (T 382/96 [1]) and that there is no support in the EPC for a notion of “partial admissibility” of an appeal (T 774/97 [1.1]); thus, if the admissibility requirements, and in particular those of A 107, are fulfilled at least in respect of one request, let alone of several request as is the case of auxiliary requests No. 2 to 13, the appeal as a whole is admissible. [1.2] […] During the first-instance proceedings the patent proprietor repeatedly amended the claims as granted in an attempt to overcome the different grounds for opposition and also the different objections raised by the opponent and the opposition division with regard to specific technical features of the claims, and the interlocutory decision under appeal was then based on a main and three auxiliary requests containing different amended versions of the independent claims as granted. In addition, as noted in decision T 168/99 [1] cited by the patent proprietor, withdrawal of subject-matter does not necessarily mean that it has formally been abandoned. The basis for determining the presence of an adverse effect within the meaning of A 107 are therefore the claims as granted. In the circumstances of the present case, the Board does not see any reason for not allowing during the present appeal proceedings a claim request containing independent claims consisting of the independent claims as granted amended as to clarify the meaning of a claimed technical feature; in particular, the fact that the subjectmatter of these amended independent claims is broader than that of the claims of the amended requests considered during the first-instance proceedings does not constitute, in the absence of any special circumstance such as a possible abuse of procedure, a sufficient reason for not admitting the present main and sole request into the appeal proceedings. The patent proprietor is adversely affected because it has not abandoned any subjectmatter of the claims as granted. [2] To read the whole decision, click here.
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T 1207/05 - Obvious Combination of Internet Drafts
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T 1207/05 - Obvious Combination of Internet Drafts 21 Nov 2009
The treatment of Internet sources as state of the art is certainly one of the big challenges for patent offices in the near future. Landmark decision T 1134/06 has provided some fundamental principles, but much remains to be done. The present decision is interesting in so far as it deals with a field in which the skilled person is said to be expected to review certain drafts available on the Internet. BTW, I think this is the first decision to introduce the notion of 'community of skilled people', which comes dangerously close to the false idea that the skilled person is a real person. [...] Starting from D2, the problem underlying claim 1 is to provide an alternative multiplexing scheme in which quality-of-service (QoS) is addressed, data packets of different class-of-service types may be multiplexed and data packets exceeding a given length may be transmitted. The problem includes three independent objectives. D2 mentions several IETF (Internet Engineering Task Force)drafts and IETF Requests for Comments, among which are documents D1 and D5 and Request for Comment 1890, of which D4 is a revision. D5 specifies an Internet standards track protocol for the internet community describing the real-time protocol RTP. D1, D2 and D4 are working documents of the IETF Audio-Video Transport Working Group. These documents are InternetDrafts published on the Internet. The community of skilled people in the field is expected to review these documents and to comment on them. The documents are work in progress and are valid for a maximum of six months. They may be replaced by revisions. They are a basis for technical discussions necessary in the working groups for the creation process of standardized technical solutions. A skilled person would consider them and combine parts of them, if appropriate. D2 explicitly quotes D1 and compares the proposals of D1 and D2. The skilled person looking for a solution of the partial problem that data packets of different class-of-service types may be multiplexed would consider D1 which discloses a user header including a payload type field, and would include the payload type field in the header portion. Moreover, D1 discloses with reference to figure 4 that the user header comprises a marker bit, which has the same definition as in document D4. D4 discloses that, if a video image occupies more than one packet, the marker bit is set to one for the last frame and otherwise set to zero. This implies that the marker bit is used to indicate whether an additional formatted packet for transporting the incoming packets is used. The skilled person would understand, that the use of the marker bit solves the partial problem of transmitting data packets exceeding a given length. The marker bit thus has the same function as the claimed more packets field. Thus, the use of a more packets field in the header portion is disclosed in D1 when taking into account its reference to D4. The skilled person would further consider D5, which specifies an Internet standards track protocol describing the real-time protocol RTP. D5 is a basic reference document providing general information and details of RTP. It is mentioned as a reference document in D1 and D2. D5 states that RTP is intended to be tailored through modifications and/or additions to the headers as needed. Moreover, D5 discloses an extension mechanism to allow individual implementations to experiment with new payload-format-independent functions that require additional information to be carried in the RTP data header. The skilled person would understand that, if a QoS field was needed, it would be possible to add it to the header. The skilled person would further understand from the discussion in D2, which concerns using a sequence number field in the MINI-header instead of in the RTP header, that fields of the RTP header may be transferred to the MINI-header and vice versa depending on the particular circumstances. Thus, it is considered to be obvious to place a QoS field in the header portion of the formatted packet. Thus, the method of claim 1 does not involve an inventive step. [3.3]
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T 1207/05 - Obvious Combination of Internet Drafts
To read the whole decision, click here.
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T 783/08 – Tessellation Denied
K’s Law – The ebook
T 783/08 – Tessellation Denied 20 Nov 2009
The Opposition Division (OD) came to the conclusion that Claim 1 of the auxiliary request was novel over the A 54(3) document D8 because the skilled person had to make several selections in order to arrive at the claimed subject-matter. First the specified monomers had to be selected in a list; then the polymerisation had to be carried out in the presence of an emulsifier whereas the polymerisation in D8 is said to be preferably done without any surface-active compositions; thirdly one had to use the polymers as a dispersion mixture. The Board of appeal does not follow this approach. It points out that D8 cites several relevant monomers and that it is stated that the process may be carried out in the presence of usual surface-active substances such as emulsifiers and/or protective colloids. The Board then continues: As far as the use is concerned, D8 states: “Moreover, the polymers according to the invention are suitable for modifying the surface and interface properties. As a consequence of the surface-modifying effect the means according to the invention can be used for coatings, e.g. for polyolefins, for glass and glass fibres. Thanks to their surface-active effect they can also be used as protective colloids, e.g. for the stabilisation of metal colloids or in aqueous radical emulsion polimerisation.” [3.3.1] In the present case the latter use as protective colloid in the aqueous radical emulsion polimerisation is relevant. It was undisputed in the oral proceedings before the Board that the word ‘they’ in this sentence refers to the “means according to the invention”. There was, however, no agreement as to what had to be understood by “means according to the invention”. The opponent held the view that this expression included polymer dispersions and the solid powders that can be obtained from them, whereas the patentee held the view that this expression was a synonym for the polymers mentioned at the beginning of the section and therefore referred to solid powders only. [3.3.2] First of all it has to be noticed that the word ‘means’ is a relatively broad term in normal language usage and therefore should prima facie cover all the embodiments disclosed in D8. This impression is confirmed by the disclosure of D8 as a whole. The first paragraph of the description of D8 makes clear that D8 concerns a process for the production of aqueous copolymer dispersions by aqueous radical emulsion polimerisation. This process is particularly suitable for the production of aqueous polymer dispersions. Moreover the polymer dispersions that can be obtained with this process can be transformed into solid powders by a drying process according to the prior art. Thus it follows from the context (Zusammenhang) of D8 that the expression “means according to the invention” comprises both product forms, i.e. aqueous polymer dispersions and the solid powders obtainable from them. Therefore the use as protective colloid in aqueous radical emulsion polimerisation is disclosed both for the aqueous polymer dispersions and the solid powders. Of course this general disclosed use also concerns the specific embodiments of D8, and inter alia the polymer dispersions contained in examples 12 to 15. The Board considers that the total amount of information of D8 is novelty-destroying prior art. [3.3.3] Here the novelty-destroying character does not result from a tessellated (mosaikartig) reading of the prior art. As soon as one comes to the conclusion that polymer dispersions fall under the expression “means according to the invention”, there is no need for a multiple selection in D8 in order to arrive at the subject-matter of claim 1. The use as protective colloid in aqueous radical emulsion polimerisation which is disclosed in D8 concerns all the polymer dispersions in D8. Therefore the argument of a novel “selection within D8” is unpersuasive. To read the whole decision (in German), click here.
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T 783/08 – Sign Once And You’re In
K’s Law – The ebook
T 783/08 – Sign Once And You’re In 19 Nov 2009
The patentee and the opponent both filed appeals against the decision to maintain the patent in amended form. The patentee omitted to file a statement of grounds. He later requested that the appeal fee be reimbursed, should his appeal be rejected as inadmissible, because the notice of appeal had not been signed. […] The notice of appeal filed by fax on April 24, 2008 consists of two documents, i.e. a letter to the EPO with the header of the representative of the second appellant, and a debit note (form 1010 of the EPO). The letter contains the name and the address of the appellant, the reference of the impugned decision and the request to set aside the impugned decision and to maintain the patent as granted. This letter is not signed but the debit note, which is also dated April 24, 2008, is signed by the representative mentioned in the header of the letter. [2.1.1] A 108 EPC and R 99 EPC do not contain any provisions concerning signature of the notice of appeal. However, R 99(3) contains the following indication : “Part III of the Implementing Regulations shall apply mutatis mutandis to the notice of appeal, the statement of grounds and the documents filed in appeal proceedings”. R 41(2) h) EPC provides that the request for grant has to contain the signature of the applicant or his representative. It follows from R 99(3) in combination with R 41(2) h) EPC that the notice of appeal has to be signed by the appellant or his representative. However, it cannot be derived from these provisions that each single document of a notice of appeal has to be signed or that the signature has to be in a particular place or on a particular page. As in the present case the debit note is part of the notice of appeal, the Board considers that the signature on the debit note is sufficient to satisfy the requirements of the EPC and to legally validate the notice of appeal. Therefore, the appeal of the second appellant has been validly filed. [2.1.2] […] As the appeal is validly filed but has to be rejected as inadmissible, because no statement of grounds has been filed, the reimbursement of the appeal fee is not justified. [2.3] This decision is interesting for people who continue to file appeals by fax or letter. Even though they might become more and more rare, these ‘old school’ techniques allow some very nice tricks. For example, a patentee who is happy with a patent maintained in amended form but does not want to find himself in the situation where the opponent is the sole appellant (a non reformatio in peius situation) can file a notice of appeal without signature and provide the signature later on if (and only if) the opponent has filed an appeal. If the opponent does not file an appeal in due time, the patentee simply does not supply the missing signature, which entails the consequence that the appeal is deemed not to have been filed - and the appeal fee is reimbursed ! One thing we learn here is that if one wishes to use this trick, one must not file a debit note at the same time. I guess that it is not possible to file an unsigned appeal via epoline, but I have to admit that I have not tried yet. To read the whole decision (in German), click here.
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T 1276/07 – Rough Ride On A One-Way Street
K’s Law – The ebook
T 1276/07 – Rough Ride On A One-Way Street 18 Nov 2009
[…] The patent is concerned with a […] particle filter for the purification of diesel exhaust gases. […] The ceramic members [of the filter are] assembled by interposing a sealing member consisting of inorganic fibers, an inorganic binder, an organic binder and inorganic particles. [2.1] The document A2 is representative of the closest prior art. […] Claim 1 of the granted patent differs [from A2] in that the sealing member contains an organic binder. [2.2] […] Since during regeneration the filter assembly is subjected to high temperatures necessary to remove the particulate material trapped therein a relatively high and uniform thermal conductivity of the sealing member is mandatory in order to afford a high regeneration efficiency and mechanical durability. […] it is uncontested that the sealing member fulfils the requirements of adhesiveness and joining durability of the single ceramic members. Furthermore, the [patent proprietor] has demonstrated […] that the presence of an organic binder in the sealing member as defined in Claim 1 leads to a heat transfer between opposite sides of a filter element of a honeycomb filter assembly which is enhanced as compared with a sealing member according to A2 without organic binder. […] Therefore, the objective technical problem to be solved vis-à-vis A2 is to be seen in the provision of a sealing member joining the ceramic members of a ceramic structural body which provides a high joining durability and adhesiveness as well as an enhanced thermal conductivity of the entire structural body. [2.3] It could be argued: (i) that it was obvious that the use of an organic binder together with an inorganic binder would provide enhanced adhesiveness, having regard to [documents] A6 and E9 […] relating to similar cement materials for similar purposes, and (ii) that some cellulose polymers were known to prevent migration phenomena which lead to inhomogeneities in a ceramic mass, having regard to [document] A28 […]. However, none of the citations comprises any information whatsoever with regard to the influence of organic binders on the thermal conductivity of a composition as specified in present Claim 1. Nor do these citations contain any hint about the influence an organic binder would have on the three-dimensional structure of the organic fibres and the ensuing distribution of the inorganic particles favourable to thermal conductivity. In the Board’s judgment therefore it is non-obvious to arrive at the claimed solution, irrespective of the fact that the prior art might suggest a partial solution of the underlying technical problem. This conclusion results from the fact that the prior art does not suggest the claimed solution in relation to one essential part of the underlying problem, namely the enhancement of the thermal conductivity. Since the skilled person cannot deduce from the information referred to above with regard to A6/E9 and A28, or any other citation, any link between the properties adhesiveness and/or migration prevention on the one hand, and thermal conductivity on the other hand, any speculation concerning the possible obviousness of the improvement of the last mentioned property by the addition of an organic binder to the cement composition of A2 is based on hindsight. The reference to decision T 936/96, with the argument that a skilled person intending to improve adhesiveness by adding an organic binder in accordance with E9 would automatically improve the thermal conductivity of the assembled structure of A2, is besides the point. This argument is essentially based on the idea that the improved thermal conductivity is to be regarded as a bonus effect, not able to contribute an inventive step. However, such a conclusion is only justified in the case of a one-way situation, where the distinguishing feature (here: the addition of an organic binder) is the only way to attain the “main” objective (here: improved adhesiveness, migration prevention), a situation that does not apply here. The subject-matter of Claim 1 as granted therefore involves an inventive step. [2.4]
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T 1276/07 – Rough Ride On A One-Way Street
K’s Law – The ebook
The Board here construes a technical problem having two aspects (improving durability and enhancing conductivity) and admits that the prior art suggests to solve the first aspect by means of the claimed features. This appears to be a classical “bonus effect” situation. As stated in T 21/81 already, an additional, possibly unforeseen effect (“bonus effect”; here : enhanced thermal conductivity) does not point towards an invention if the skilled person would already have arrived at the invention because another advantageous effect (here: improved joining durability and adhesiveness) could be achieved by combining prior art documents (here: A6/E9 and A28). This is what the opponent pointed out, referring to T 936/96, the headnote of which reads: “Once a realistic technical problem is defined and once it is established that a particular solution to such a problem would have been envisaged by a person skilled in the art in the light of the relevant state of the art, then this solution lacks an inventive step, and this assessment cannot be altered by the fact that the claimed invention inherently also solves further technical problems.” Quite unexpectedly, the present Board refuses to go along this path. It states that “such a conclusion is only justified in the case of a one-way situation, where the distinguishing feature is the only way to attain the “main” objective, a situation that does not apply here”. I have the impression that this statement is based on a misunderstanding of what is meant by “one-way situation”. This expression does not mean that there is only one single way to attain the objective but that the skilled person, when faced with the objective technical problem, is naturally led to the solution by the prior art. Leaving aside the “bonus effect”, the Board then establishes that the prior art is silent with respect to the second aspect of the technical problem and concludes that the solution therefore involves an inventive step. In other words, the solution was obvious, but as it solves another unexpected problem, it has to be inventive. Oh dear. To read the whole decision, click here.
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T 1671/06 – A Non-Technical Prejudice is Not Relevant
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T 1671/06 – A Non-Technical Prejudice is Not Relevant 17 Nov 2009
According to the case law of the Boards of appeal, inventiveness can sometimes be established by demonstrating that a prejudice had to be overcome. But what if this prejudice is not technical ? The present decision, which concerns a first-instance decision to refuse an EP application, provides the (expected) answer. [...] Starting from the prior art of the so-called “high-end” portable phone with reminders implemented using a calendar, such as that disclosed in D1, the invention differs simply by the idea of not using the calendar […]. According to the appellant’s interpretation of calendar, this difference must therefore imply the absence of the capability to store and display an overview of days, months and years. [5] The appellant appears to be proposing that this feature solves the problem of “reducing the costs of a high-end mobile phone with minimal sacrifice of functionality and an improved ease of use”. However, the Board considers that this problem is too general because it does not take into account that the concept of reminders (and thus entering them) is already known. The Board thus prefers a more specific problem acknowledging this feature, namely an alternative way of providing the reminder function. The solution being to do away with going via the calendar function. [6] However, D2, which deals with the general concept of “schedule setting”, solves the converse problem of providing an alternative to entering manually schedule information, which is described as conventional, but complicated, by using a calendar. In the Board’s view, the skilled person would realise on reading D2 that entering the data for a reminder manually, or with the aid of a calendar are two possibilities having a trade-off between ease of operation and device complexity, e.g. memory utilization. In this respect, the Board disagrees with the appellant’s view that the skilled person would follow the “general trend”, or would not “move in the opposite direction” since in a trade-off situation he would appreciate the advantages and disadvantages of the various discrete possibilities (or in the continuous case, trade-off points). [7] The appellant argues that the skilled person would only consider solutions at the modularity of complete applications. Thus the skilled person would not consider a reminder application without a calendar function. However, the Board does not agree with this because the decision at the application level is largely governed by non-technical considerations that may lead to the grouping of features into specific applications to suit user’s requirements or marketing strategies, for example. This argument therefore amounts to saying that there is a nontechnical prejudice against removing parts of an application. However, in the Board’s view, the only prejudice that is relevant is a technical one that would prevent such a modification. The skilled person is aware of and operates at a technical level where “modules” have a finer granularity. Such modules would be individual software techniques such as the means for entering time information, or comparing the time with a clock in the claim. There is no evidence of any prejudice against combining such known features in the known way to implement the required manual entry system on the phone of D1. [8] To read the whole decision, click here.
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T 493/08 – Ignorance of the (Case) Law is No Excuse
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T 493/08 – Ignorance of the (Case) Law is No Excuse 16 Nov 2009
I find this decision very pedagogical because it explains in detail the nature and scope of different legal remedies available under the EPC. In this case the Examining Division (ED) granted (on 21 June 2007) the patent indicating FR, GB and NL as the designated Contracting States (CS). The patentee had given the instruction to designate DE as well, but the representative had not indicated DE on Form 1200. For some unknown reason, the EPO did not send a R 108(3) notification. The representative only detected the error when his German colleague told him (in a letter dated 18 July) that he was unable to validate the patent in Germany. His reaction (on 18 September) was to request the EPO: (i) to “now afford the applicant the opportunity to respond to the R 69 communication which should have flowed from R 108(3)” and to re-publish the mention of grant indicating DE, FR, GB and NL as designated CS; (ii) to correct an error under R 88 EPC 1973 in the Form 1200; (iii) in parallel with or if necessary after refusal of the second request, restitution of the designation of the German state under A 122 EPC 1973. Finally, a telephone conversation with a formalities officer (on October 15 2007) convinced him of the need to file an appeal against the decision to grant the patent (on October 22) together with a request for re-establishment into the time-limit for filing an appeal. The Board first examines the facts and finds that there have been two errors : an error of fact (the representative being unaware that DE should have been among the designated CS in the decision to grant) and an error of law (believing that the decision could be rectified under R 88, R 89 or A 122, without filing an appeal). The Board states that there is a consistent body of case law according to which ignorance or misinterpretation of EPC provisions cannot be excused. Taking into account J 28/92, there may however be exceptions under certain conditions. The Board then discusses the question of due care on the part of the representative. It first establishes that the correct remedy would have been to file an appeal. It is established case law that an ED is bound by its final decision on an application, which can be set aside only following an admissible, allowable appeal; see T 1093/05 [6] and the cases cited there, in particular G 12/91 [2]: “Once ... [the decision] has been pronounced and, in the case of written proceedings, notified, the decision enters into force and cannot be amended, even by the department that issued it. A decision may only be revoked by the department that issued it by way of an interlocutory revision under A 109 EPC if one of the parties has filed an admissible and well-founded appeal.” […] The present decision to grant is final and became binding on the ED that issued it on the date it was handed over to the EPO postal service by the division’s formalities section. From that date onwards it could be “rectified” by an appeal. “Rectified” by an appeal would mean that the board would set the impugned decision to grant aside and remit the case to the first instance with the order to grant a patent with the designated CS including DE. [6.2.1] Then the Board considers the remedies initially envisaged by the representative, beginning with R 89 : Correction pursuant to Rule 89 EPC 1973 would be an alternative means to rectify the decision if a request had been filed meeting the conditions of that Rule. The Rule reads: “In decisions of the EPO, only linguistic errors, errors of transcription and obvious mistakes may be corrected.” […] A decision to grant contains an obvious mistake if the text given for grant is not and obviously cannot be what the ED actually intended, and the erroneously indicated text can be replaced by that on which the examining division actually wanted to base its decision. For reasons of legal certainty and to prevent adverse effects for third parties, only obvious errors can be corrected. That means it must be clear not only that the ED did not intend to grant the patent in the form actually granted, but also in what form it did intend to grant it. […] [These] conditions are clearly not met. There is no indication of a divergence between the text given for grant and the actual intention of the ED. The representative 3299 | 3398
T 493/08 – Ignorance of the (Case) Law is No Excuse
K’s Law – The ebook
approved the communication under R 51(4) by paying the fees and filing the translation in compliance with that provision. As the communication indicated FR, GB and NL as designated CS, it must be assumed that the ED wanted to grant a patent for those three states. […] The addition of DE in the decision to grant would amount to an amendment in the sense of a substantive correction, which is not covered by R 89 and not possible under G 12/91. [6.2.2] And as far as a correction under R 88 EPC 1973 is concerned: Pursuant to R 88, first sentence, EPC 1973 […], “linguistic errors, errors of transcription and mistakes in any document filed with the EPO may be corrected on request.” […] There is no legitimate interest for the present request under R 88, because the requested correction would have no legal effect. The desired correction would only lead to a correction of Form 1200, by adding DE to the designated CS. It would not have the effect that the designation fee paid on 18 September 2007 would be deemed to have been made within the time limit of 10 November 2003. Independent thereof, the correction of Form 1200 would not also bring about a correction of the decision to grant, which is not a document filed with the EPO. This decision would then simply diverge from Form 1200 insofar as DE is not included. In this regard, reference is made to the extensive explanations given in J 23/03 [2.2] that apply mutatis mutandis to the present case. [6.2.3] Finally the Board deals with the request for re-establishment: The appellant lost its right to a European patent for Germany through its failure to pay the designation fee in due time. Re-instatement of periods for payment of designation fees, however, is not allowable pursuant to A 122(5) EPC 1973, which applies in Euro-PCT proceedings to the time limits under R 107(1)(d) in conjunction with A 158(2) EPC 1973. This follows from G 3/91. [6.2.4] The Board then comes to the conclusion that the lack of awareness of the appropriate legal remedy cannot be excused. Professional representatives are supposed to know the EPC and the case law, in particular the decisions of the Enlarged Board. This is true even though remedies against decisions to grant may be sought infrequently. It was not reasonable for the representative to believe that an appeal would not be necessary because at least one of the three substantive requests filed with the letter of 18 September 2007 would be granted. […] It is clear that this is not a case in which the law was doubtful and the procedure that the representative chose to follow cannot be considered to have been a “not unreasonable” one, such as in case J 28/92. [6.2.6] Consequently, the request for re-establishment is refused, the appeal is deemed not to have been filed and the appeal fee is reimbursed. NB
:
This
decision
has
also
been
To read the whole decision, click here.
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discussed
here
(in
French).
W 28/07 – Eugene, Unity And All That Jazz
K’s Law – The ebook
W 28/07 – Eugene, Unity And All That Jazz 14 Nov 2009
I understand that under the EPC 2000, protests against invitations (made by the EPO acting as ISA) to pay additional search fees for PCT applications are not dealt with by the Boards of appeal anymore. Therefore, I would expect 'W' decisions to disappear. It may well be that the present decision is one of the last of a dying species.
The present decision deals with an objection of lack of unity against a Markush claim (named after the inventor of such claims, Eugene A. Markush, a manufacturing chemist and dyestuff industry pioneer). […] The EPO, acting as ISA, invited the applicant pursuant to Article 17(3)(a) and Rule 40.1 PCT to pay 13 additional search fees. [II] The applicant paid two additional search fees under protest pursuant to Rule 40.2(c) PCT and requested that an additional search be carried out for the group of inventions 3 and 4. [V] The review panel of the ISA came to the conclusion that the invitation to pay additional fees was justified. [VI] […] The ISA’s invitation to pay additional fees is based on the finding that there is lack of unity a posteriori. It was held that there was no single general inventive concept in the light of the disclosure of several documents, including D4 and D6. [6] […] By arguing that there is no new technical effect linking the different groups of inventions and that the compounds neither share a significant structural element nor belong to a same recognised class of chemical compounds, the ISA referred to the “Markush Practice” as described in paragraph (f) of Annex B of the Administrative Instructions under the PCT, which are binding as regards the assessment of unity for the ISA as well as for the board. Annex B, paragraph (f) specifies certain criteria for assessing unity of Markush claims, and in particular that for alternatives contained in such claims the requirement of a technical interrelationship and the same or corresponding special technical features as defined in Rule 13.2 of the regulations under the PCT is considered to be met when the alternatives are of a similar nature. Alternatives are to be regarded as “of a similar nature” where the following criteria are fulfilled: (A) all alternatives have a common property or activity, and (B)(1) a common structure is present, i.e. a significant structural element is shared by all of the alternatives, or (B)(2) in cases where the common structure cannot be the unifying criteria, all alternatives belong to a recognised class of chemical compounds in the art to which the invention pertains. A “recognised class of chemical compounds” under (B)(2) above means that there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention. In other words, each member could be substituted one for the other, with the expectation that the same intended result would be achieved (Annex B, paragraph (f)(iii)). [7] As regards the groups of inventions 3 and 4, there exists a common property or activity in the form of the antimicrobial and antitumor activities of the compounds comprised therein, so that the requirements of point (A) above are met. Moreover, there are common structural elements as required in point (B)(1) above, which can be defined as follows: n = 0, R5 = C8-C30-alkyl and p = 1-6. In addition, the compounds comprise a quaternary nitrogen. [7.1]
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W 28/07 – Eugene, Unity And All That Jazz
K’s Law – The ebook
However, the fact that all claimed alternatives of the groups of inventions 3 and 4 belong to a group or a class of compounds which has a common structure and a common property or activity, can be regarded as a contribution over the prior art (see Rule 13.2 PCT) only if members of the group have not previously been used in the manner disclosed in the application under appeal. This is not the case in view of for instance documents D4 and D6. As a consequence, these common structural and functional elements do not make a contribution over the prior art and can therefore not be considered as “special technical features”. Therefore, there is lack of unity between the groups of inventions 3 and 4. [7.2] To read the whole decision, click here.
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T 1590/06 – Ghost Bustering Prohibited at the EPO
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T 1590/06 – Ghost Bustering Prohibited at the EPO 13 Nov 2009
In this decision the Examining Division (ED) is criticized for having exterminated claim ectoplasms in its written decision. […] According to the minutes of the oral proceedings (OPs) the ED announced orally on March 21, 2006 that the patent application was rejected because the subject-matter of claim 1 did not satisfy the requirements of A 52(1) EPC and A 56 EPC with respect to D3, in combination with common general knowledge. [4] The corresponding written decision dated May 8, 2006 is also based on an objection under A 56 against independent claim 1 with respect to D3, in combination with common general knowledge. Moreover the reasons for the decision also mention original dependent claims 2 to 6 and the original independent claim 7, for lack of inventive step and lack of novelty with respect to D4, respectively. [5] However, according to the minutes of the OPs of March 21 the claims 2 to 7 were not part of the request on which the ED had to decide, any more. As a consequence, in the OPs the rejection was justified by lack of inventive step of claim 1 only. [6] Only claim 1 is enclosed in the minutes of the OPs. The written decision, however, contains this claim as well as claims 2 to 7. [7] In view of the evidence it is clear that the ED has taken a final decision on the basis of a text which cannot be considered to have been filed or accepted by the applicant. This is a violation of A 113(2) and therefore a substantial procedural violation. [8] The Board remits the case to the ED. If I understand the case correctly, the decision pronounced at the end of the OPs was correct. The problem appears to have arisen because the dependent claims somehow crept back into the written decision. The situation being ambiguous, the Board decides to remit the case. This remittal may be correct from a formal point of view but is perfectly counter-productive because it only delays the final decision. Upon remittal, the ED will proceed to reject claim 1 only, and the applicant will file an appeal. So why not deal with the substantive issues right away ? To read the whole decision (in German), click here.
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T 898/07 – Intervention Made Possible By Summons to Take a Licence
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T 898/07 – Intervention Made Possible By Summons to Take a Licence 12 Nov 2009
[...] According to A 105(1)(b) EPC, any third party may intervene in opposition proceedings if the third party proves that following a request of the proprietor of the patent to cease alleged infringement, the third party has instituted proceedings for a ruling that he is not infringing the patent. The documents filed by the [intervening party] establish that the patentee has repeatedly expressed the opinion that the activities [of the intervening party] did violate a plurality of patents, including the opposed patent, and has summoned it to enter into licence negotiations, invoking pending infringements proceedings against third parties. [2.1] Therefore the intervening party has been summoned by the patentee to refrain from the alleged patent infringement by contractual licensing and thereby to commute unlawful action (patent infringement) into lawful action (licensed use). This fulfils the first condition of A 105(1)(b), which provision, according to its wording, not only covers the summons to cease using the invention but also in general the summons to stop the alleged patent infringement. He who takes a licence also henceforth stops infringing the patent. [2.2] The [intervening party] has also provided evidence that it has taken action, before the Tribunale di Roma, for a declaratory judgment that it is not infringing the patent and that the notification (Zustellung) of this action, which is not contested by the patentee, cannot have taken place before May 21, 2008. Thus the three months time limit under R 89 has been complied with. In this context it is irrelevant that the evidence for the fact that the action also concerns the opposed patent has only been provided after expiry of the three month time limit. [2.3] To read the whole decision (in German), click here.
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T 1514/05 - Explore All Roads that Lead to Rome
T 1514/05 - Explore All Roads that Lead to Rome 11 Nov 2009 […] The Board considers D12 to be the closest prior art. [3.1.1] […] Contrary to the argument of the patentee, the Board does not consider that D12 must not be considered to be the closest prior art on the grounds that this document persuaded the skilled person not to use veneering (placage) for covering the alloy sheet. [3.1.3] […] Be that as it may, the Board has to examine of inventive step with respect to the disclosure of D12 because, according to the case law of the Boards of appeal, when the skilled person is faced with several possible (praticable) problem-solution approaches that could render the invention obvious, the nature of the problemsolution approach in itself requires that all the avenues (pistes) be examined before inventive step can be asserted (T 967/97 [I]). [3.1.6] I find this statement very sound. If this principle was applied more often, the problem-solution approach would be less criticized. I understand that the German jurisdictions reject the problem-solution approach because it limits the evaluation of inventive step to one single starting point, i.e. the document considered to be the “closest prior art”. In reality, claimed subject-matter can be non obvious when starting from the “closest prior art” and obvious when starting from another prior art. This is neglected in the actual EPO practice, where often the decisive battle is concerned with which document is considered to be the closest prior art. Once this choice has been made, the case is lost or won. I should add that the translation of the headline of T 967/97 provided in T 1514/05 is poor. I would rather translate : “If several paths to the solution (Lösungswege) along which the invention could be obvious offer themselves to the skilled person, then the reasoning (Ratio) underlying the problem-solution approach requires to examine the invention with respect to all of these paths to the solution before a decision confirming the presence of an inventive step can be taken.” The decision then proceeds with the assessment of inventive step and comes to the conclusion: If follows from these considerations that the skilled person would arrive at the subject-matter of claim 1 without exercising any inventive skill, by proceeding along three successive steps, each of which is obvious, both in itself and in sequence: (i) selecting of a type of veneering for the protection of the core sheet against corrosion; (ii) choosing a veneering alloy that is compatible with the core sheet and which offers sufficient protection in terms of potential difference; and finally (iii) optimising the anodic protection by reducing the said potential difference by means of a reduction of the Zn content in the veneering alloy. This conclusion is in conformity with the case law of the Boards of appeal according to which a solution is obvious, even though it may necessitate two or more stages, if the technical problem faced by the skilled person leads him to the solution by stages and if he finds each stage obvious, as far as the result obtained and the residual problem to be resolved are concerned (T 623/97 [4.4]). This conclusion is coherent with the logic underlying the established case law (cf. T 400/98 [4.4.6]) according to which, when the skilled person has at his disposal several equivalent existing solutions for solving the technical problem, the choice of one of the possible solutions does not require any particular skills and for this reason does not involve an inventive step. Thus the choice of reducing the Zn content so that it varies within the domain of the claimed values is an obvious alternative for the skilled person. [3.3.7] As far as the stages of a process are concerned, I would have preferred a reasoning based on the concept of “partial problems”. The reasoning of T 623/97 does not explicitly take into account a possible synergy between successive stages, in which case the stages could not be treated separately. To read the whole decision (in French), click here.
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T 1618/06 - Description of Prior Art vs. Disclosure of the Invention
T 1618/06 - Description of Prior Art vs. Disclosure of the Invention 10 Nov 2009 In this decision the Board goes to great lengths to reconstruct the invention from bits and pieces contained in the priority document (D12), both in its description of the prior art and in the summary of the invention. In order to better understand the subtleties of the reasoning, one has to know that the summary of the invention starts on page 2, paragraph 4 of D12. The preceding parts of the description deal with prior art and its disadvantages. The [opponents] argued that claim 1 did not enjoy the priority of document D12 because the impurities mentioned in this claim were only disclosed in document D12 with respect to the prior art cited therein. [IX] […] It was under dispute whether or not the following feature of present claim 1 enjoyed the priority of D12: The removal of the impurity of formula II. Hence it has to be assessed whether or not D12 teaches the person skilled in the art (i) to remove impurities from a crude mixture or a crude salt of citalopram, and, in the affirmative, (ii) whether or not these impurities comprise those of formula II as defined in present claim 1. [3.1] The part of D12 disclosing the invention claimed therein starts with the fourth paragraph on page 2 (“It has now been found that …”). The second sentence of this paragraph states that the invention provides “ … a very good and efficient purification of citalopram …”. The starting material used in this purification process is crude salt or crude mixture of citalopram. Hence, D12 discloses a process removing impurities from a crude mixture or a crude salt of citalopram. [3.1.1] It remains to be determined whether or not D12 discloses directly and unambiguously that the impurities to be removed comprise those of formula II as defined in present claim 1. The process disclosed in D12 is to purify citalopram or its salt. This means that the impurities are present in the crude starting material. This starting material “ … may be obtained directly from the synthesis of the compound according to any of the above mentioned processes …”. The “above mentioned processes” are those summarised in the first and second paragraphs on page 2, including the “Exchange of 5-halogen with cyano …” (p. 2, l. 1-2). The impurities present in the reaction mixtures obtained in these processes comprise “… the intermediates mentioned above …” (third paragraph of page 2), namely the 5-halogen compound as far as the process comprising the exchange of 5-halogen by a cyano group is concerned. Consequently, the chemical formula of this impurity differs from the formula of citalopram as depicted on page 1 of D12 only in that the cyano group in the 5-position is replaced by a halogen atom; that means that it is identical with formula II depicted in present claim 1. Hence, D12 discloses a process by which impurities of formula II as defined in present claim 1 are removed from a crude mixture or a crude salt of citalopram. It is not relevant that part of this disclosure is based on the description of the prior art, as D12 directly refers to said prior art in the paragraphs setting out the invention claimed therein. [3.1.2] Admittedly, this decision is not very exciting in itself but it shows that the Boards sometimes accept the argument that some features of the invention are disclosed in the part of description dedicated to prior art. As the established case law applies the same criterion (… directly and unambiguously …) to A 87 and A 123, this could sometimes be helpful to rescue an application, in particular if the drafter had foreseen references to the prior art section in the summary of the invention. To
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decision,
click
here.
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T 1416/06 - Mathematicians Do Not Invent (Nor Are They Skilled Persons)
T 1416/06 - Mathematicians Do Not Invent (Nor Are They Skilled Persons) 9 Nov 2009 Claim 1 of all requests is directed to a method of representing a document collection. In a communication accompanying the summons to oral proceedings requested by the appellant as an auxiliary measure, the Board stated that it had doubts whether the characterising features solved a technical problem. Providing “verbal semantics”, i.e. “words or terms” for describing the meaning of a dimension seemed basically to be a presentation of information. The verbal semantics was directed to the mind of a user. It was therefore not clear that there was a technical effect indicating the presence of technical means for solving a technical problem. As to the auxiliary requests the Board stated that it was not apparent that any part of the invention according to the independent claims of these requests contributed to the solution of a technical problem. The steps were of a mathematical nature, serving to process information with the purpose of improving its presentation or visualisation to the user. Whether or not this was new and original could not play any role as long as no technical effect was achieved. As to the skilled person it was clear that mathematical skills were crucial. A mathematician was however not a technically skilled person but could at most be part of a technical team. [V] […] The method is to a large extent defined in terms of equations. The purpose of the method is to present the information in a way that can be more easily understood or evaluated by a user. A fundamental question in this context is whether the invention - apart from its being implemented on a computer - is within a field of technology. At the bottom of the method is a mathematical technique known as orthogonal decomposition. This technique is generally applied to large matrices and, like many mathematical functions, can be represented graphically. It is typical for mathematical representations that they involve pure numbers, i.e. abstract data, having no physical connotation. In the present invention the representations are of documents and the terms used in the documents. Thus, although the data have a certain “meaning”, they remain abstract. They can hardly be regarded as forming a physical entity, nor does the method result in a change in the data but merely in their representation (cf. T 208/84 [5]). It could therefore be argued that the invention - again apart from its implementation - is essentially a mathematical method pursuant to A 52(2)(a) EPC, resulting in a presentation of information pursuant to Article 52(2)(d) EPC. [3.1] For some reason, the Board was reluctant to reject the appeal on this basis. It continues : In the following these general concerns will however not be pursued since there are more specific reasons for not allowing the appeal. [3.2] To read the whole decision, click here.
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G 3/08 – Novel Use of ... Amicus Curiae Briefs
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G 3/08 – Novel Use of ... Amicus Curiae Briefs 7 Nov 2009
Some courts allow the filing of so-called amicus curiae (“friend of the court”) briefs, i.e. written submissions by persons that are not parties to the case but who offer information on a point of law or some other aspect of the case to assist the court in deciding a matter before it. The Enlarged Board of Appeals (EBA) of the EPO also accepts such briefs. There have been quite some amicus curiae briefs in case G 3/08 concerning several tough questions raised by the President of the EPO on computer implemented inventions. One of them contested the impartiality of Board members. The EBA has recently taken an interlocutory decision in order to deal with this objection. […] As provided by A 24(3) EPC, members of a Board of Appeal (BA) or of the EBA may be objected to by any party for one of the reasons mentioned in A 24(1) EPC, or if suspected of partiality. Whereas objections based on A 24(1) (iudex inhabilis) may be raised by anyone, whether he is a party or not, the right to object to a member of the Board because of alleged partiality (iudex suspectus) is reserved to parties in the proceedings (see interlocutory decision in case G 2/08 [1.4]). In referral cases under A 112 EPC, however, members of the public who file amicus curiae briefs do not have the status of a party. They are not entitled to file requests but only to submit their personal view of the case or that of their organisations, in order to support the Board with arguments that should be considered in its findings. Since an amicus curiae is not a party to the referral proceedings his request for exclusion of a member of the EBA or of the EBA as a whole is inadmissible under Article 24(3). [1.2] However, pursuant to Rule 4(1) of the Rules of Procedure of the EBA (RPEBA), the procedure of A 24(4) is also to be applied, if the EBA has knowledge of a possible reason for exclusion or objection which does not originate from a member himself or from any party to the proceedings. Under this provision the submissions of a third party with respect to a member of the EBA to be objected to according to A 24(1) or suspected of partiality under A 24(3) are taken as information on the basis of which the Board can ex officio look at the alleged grounds of objection or suspicion of partiality. [1.2] […] Turning to the present case, the EBA notes that the submissions in the amicus curiae brief are vague and largely unsubstantiated. The brief does not say who made which concrete remarks in which function under which circumstances and in which connection with respect to the referred questions such as to justify his exclusion as a member of the EBA for reasons of suspicion of partiality. Nevertheless the EBA is in the position to identify Mr D. Rees on the basis of these submissions as the member suspected in the amicus curiae brief and is also aware of his earlier duties as a director in DG 2 of the EPO between 2000 and 2003 and as an expert for the EUCommission in the field of CII at that time. But these facts submitted to establish the suspicion of partiality are not suitable to do so. The mere general and unsubstantiated assertion that the member in question explained as an expert in earlier times, when he was still a director in DG 2, that the jurisprudence of the BA in the field of computer implemented inventions would not be against the EPC and the law of the member states of the EPO cannot support an argument that this member or even the whole EBA in this case should be excluded from dealing with the referral. Nor can such a conclusion be supported by the – actually incorrect - submission that the members of the present EBA are all members of the BA. This is not an argument justifying the assumption that - deciding on the present referral - they are not solely bound by the provisions of the EPC. [2.3] According to established case law of the BA, of the EBA and also of national courts of member states, the mere fact that a board member has expressed a view on the legal issue to be decided on a previous occasion, be it in a prior decision or in literature, be it in a prior position in the EPO or as an expert for external political institutions, 3308 | 3398
G 3/08 – Novel Use of ... Amicus Curiae Briefs
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cannot lead to the conclusion of doubts as to impartiality. Nor does a purely subjective impression that the opinions of a board member might be disadvantageous to a particular interest justify an exclusion [2.4] Once lawfully appointed, a judge is deemed to act in good faith and is therefore presumed impartial until proven otherwise. […] Moreover the parties to judicial proceedings have a right to have their case considered and decided by lawfully appointed judges. Such judges not only have the right to be member of a Board but also have the duty to decide in the cases allocated to them. They can neither withdraw at will from the proceedings, nor be objected to, at will, by a party to the proceedings, or by any other person. On the other hand they have to withdraw from a case in which their impartiality could be reasonably doubted […]. E.g. there might indeed exist an issue of partiality if a judge let it be known that he would never change his mind on certain questions on which he has given his opinion before. However, in the present case there is no indication whatsoever that this might be so. [2.5] Therefore, this Board sees no reason to exclude Mr Rees or to replace further members. [3] I always wonder why people still try to obtain exclusion of Board members – has such an objection ever been successful ? If the objection does not succeed – which, statistically speaking, is highly probable – it could have a boomerang effect: I for one would expect paritality objections to make at least one Board member ill-disposed to the cause of the person requesting his or her exclusion. Be that as it may, what we learn from this case is that amicus curiae briefs may be used to have the EBA examine the partiality of one of its members. NB: Although brand new, this interlocutory decision has already been abundantly commented on patent blogs, e.g. here (in English) and here (in French). To read the whole decision, click here.
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T 1107/06 – The Relaxing Effect of Botox on G 1/03
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T 1107/06 – The Relaxing Effect of Botox on G 1/03 6 Nov 2009 I shall put a – provisional - end to my series of posts on disclaimers with this decision, which I consider to be of major interest. The opposed patent claimed the use of a Botox for the manufacture of a medicament for the reduction of a cholinergic controlled secretion. […] Claim 1 of the first auxiliary request contains the disclaimer “wherein the secretion is not lacrimation”. The appellant maintains that this disclaimer does not comply with the requirements of A 123(2) EPC. [29] [… T]here is a specific disclosure of the use of botulinum toxin in the treatment of lacrimation in the application as filed. However, this use is described in positive terms as part of the invention, not in negative terms as something to be excluded from it. Therefore the appellant argued that the disclaimer as such is not originally disclosed and could only be justified if it fell under any of the exceptions accepted in decisions G 1/03 and G 2/03. [30] Prior to the above-cited decisions, it was widely accepted that a disclaimer could in principle be allowed when the subject-matter to be excluded was disclosed in the EP application as filed as an embodiment of the invention. This principle emerged from [T 4/80,]the very first decision allowing the introduction of a disclaimer into a claim. […] According to the understanding of the present board, this decision justified the allowability of the disclaimer not by its purpose, but by the fact that the subject-matter to be excluded was originally disclosed by the applicant as a possible embodiment of the invention. [31] The principles developed in decision T 4/80 were applied or cited with approval in several other decisions (see e.g. T 80/85 [3]; T 98/94 [2.3]; T 673/94 of [3]; T 448/93 [2.2]). [32] It is well-known that the European practice and case law concerning disclaimers in general was put into question by the decision T 323/97 which considered that all disclaimers have to strictly comply with the prohibition of adding subject-matter contained in A 123(2) EPC. However, even in this decision the principle that an embodiment “positively” disclosed in the application as filed can be disclaimed appears not to have been questioned as it follows from point 2.4.1 of the reasons. [33] The strict approach adopted in decision T 323/97 with respect to disclaimers in general caused two other boards to refer questions of law to the Enlarged Board (EBA). T 507/99 submitted three questions to the EBA. Question 1 was worded as follows: “Is an amendment to a claim by the introduction of a disclaimer unallowable under Article 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of claim have a basis in the application as filed?” [emphasis added] It already follows from the wording of this question that the decision T 507/99 started from the premise that a disclaimer may only arguably infringe A 123(2) if the application as filed contains no basis for it, neither in negative terms (i.e. if it was disclosed as not being part of the invention) or in positive terms (i.e. if it was disclosed as an embodiment of the invention). The referral decision was therefore only made after ascertaining whether a basis, be it “negative” or “positive”, could be found in the case at hand. [34] T 451/99 referred the following question to the EBA: “Is the introduction into a claim of a disclaimer not supported by the application as filed admissible, and therefore the claim allowable under A 123(2), when the purpose of the disclaimer is to meet a lack-of-novelty objection pursuant to 54(3)?” The term “not supported” appears to have been used in that decision in order to encompass both a negative and a positive disclosure of the subject-matter to be excluded. [35] It follows from the above analysis that both referral decisions relied on the assumption that disclaiming subjectmatter which was positively described as an embodiment of the invention in the application as filed may comply with the requirements of A 123(2). [36]
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T 1107/06 – The Relaxing Effect of Botox on G 1/03
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In the decisions G 1/03 and G 2/03 the EBA addressed the issue of disclaimers in the framework of the questions referred to it. This limitation clearly transpires from a passage contained in point 2 of the reasons of both decisions: “More specifically, the EBA has to deal with the allowability of disclaimers which have not been disclosed in the application as filed. […] The expression ‘unsupported’ is avoided in the following reasons, since the term ‘support’ in A 84 has a different meaning. Instead, the expression undisclosed is used.” [37] It is thus apparent that the legal analysis of the EBA was not concerned with situations where the application as filed provides sufficient basis for the disclaimer nor did it need to elaborate on the precise conditions under which such basis would have to be accepted. The present board is unable to identify any passage in the EBA’s opinion which would indicate or imply that the premise on which the referring boards had framed their questions […] was put into question. In particular it is noted that, as the above-cited passage shows, the term “undisclosed” was substituted for the term “unsupported” used in decision T 451/99 only for the reason of avoiding any confusion with the requirements of A 84. The language chosen does therefore not imply that the term “undisclosed disclaimer” was meant to encompass situations where the subject-matter to be excluded was not disclosed negatively but only in positive terms, i.e. as an embodiment of the invention. [38] This understanding of the EBA's opinion finds further support in the wording and the structure of the answers given to the questions referred: “1. An amendment to a claim by the introduction of a disclaimer may not be refused under A 123(2) for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed. 2. The following criteria are to be applied for assessing the allowability of a disclaimer which is not disclosed in the application as filed: […]” (emphasis added) It is apparent that the answer no. 1 closely follows the wording of question no. 1 referred by decision T 507/99 and is therefore not concerned with a situation where the subject-matter to be excluded has a positive basis in the application. Furthermore, the necessary logical link between answer no. 1 and answer no. 2 implies that the term “disclaimer which is not disclosed” refers to the situation described in answer no. 1, i.e. to a situation where neither the disclaimer nor the subject-matter excluded by it has a basis in the application as filed. [39] The above understanding of the EBA’s opinion is also reflected in the decision T 1139/00. [40] The view that a disclaimer may be acceptable if the excluded subject-matter has been originally disclosed in positive terms as an embodiment is also embraced by the Guidelines for Examination in the EPO (C-III 4.20). [41] The board is aware, however, that a more restrictive approach has recently emerged in the case law of the boards of appeal (see decisions T 1050/99 [2-7]; T 1102/00 [4]; T 236/01 [6]; T 868/04 [3.4]; T 795/05 [7.1]; T 1559/05 [2.1]). According to this approach disclaimers which exclude subject-matter disclosed as an embodiment of the invention are regarded as non-disclosed disclaimers and held unallowable unless they fall under one of the exceptions laid down in decisions G 1/03 and G 2/03. [42] In T 1050/99 considerable weight is placed on a passage in G 1/03 [2.5] concerning disclaimers which exclude non-working embodiments. Nothing in this passage suggests that, as assumed in T 1050/99, it concerns the exclusion of non-working embodiments that were specifically disclosed in the application as filed. As already set out above, the EBA restricted its analysis to so-called undisclosed disclaimers which, in the light of the questions referred, were not meant to include disclaimers excluding subject-matter originally disclosed as embodiments in positive terms. [43] A further argument made in order to support the restrictive approach is that in cases where a positively disclosed embodiment is later disclaimed it could not be inferred from the original disclosure that the applicant intended to exclude the subject-matter of the disclaimer from the scope of protection (see T 1102/00). Although this observation is correct in itself, it does not lead to the conclusion that the disclaimer necessarily fails for this reason to comply with A 123(2). The fact that the technical teaching of an application as filed discloses subjectmatter as part of the invention which is not comprised in the amended claim does as such not justify an objection under A 123(2). To hold otherwise would be in sharp contrast to the established case law which e.g. accepts that an applicant or proprietor may under certain conditions amend Markush formulae by “shrinking” the definitions of substituent groups (see T 615/95; T 948/02 [2.4.1]). […] Thus, the mere fact that an amended claim encompasses less than what was originally disclosed as the subject-matter of the invention is per se not bad under A 123(2). [44] The board therefore considers that the decisive question to ask in the present circumstances under A 123(2) is not whether the skilled person could infer from the original disclosure that the applicant intended to exclude the subject-matter of the disclaimer from the scope of protection. Rather it has to be ascertained whether there is a 3311 | 3398
T 1107/06 – The Relaxing Effect of Botox on G 1/03
K’s Law – The ebook
clear and unambiguous disclosure of the subject-matter remaining in the claim. Applying the established yardstick to be used in the framework of A 123(2), such disclosure may be explicit or implicit. Implicit disclosure includes what any person skilled in the art would consider necessarily implied by the patent application as a whole (see T 860/00 [1.1]) [45] When there is a generic disclosure of the invention together with a specific disclosure of an illustrative or preferred embodiment falling under the generic disclosure, the skilled person will normally imply that all the other embodiments comprised in the generic disclosure without being mentioned specifically also form part of the invention. The non-exemplified or non-preferred embodiments are thus implicitly disclosed as the logical complement of the exemplified or preferred embodiments. [46] […] The view expressed in the present decision finds further support in a number of decisions dealing with amendments of applications where both a general and a preferred range were originally disclosed. In such a situation, a combination of the preferred disclosed narrower range and one of the part-ranges lying within the disclosed overall range on either side of the narrower range is considered to be unequivocally derivable from the original disclosure of the patent in suit and thus supported by it (see T 2/81). [48] The board therefore comes to the conclusion that it should not embrace the restrictive approach adopted in the decisions cited above but should continue to follow the prior established case law. Claim 1 of the respondent’s first auxiliary request is thus considered to comply with the requirements of A 123(2). [49] I find this decision (taken by a Board chaired by Mrs. Kinkeldey) highly interesting as it could open a way around G 1/03 for disclaiming elements that are disclosed in the application. We will now have to wait and see if this position is adopted by other Boards. I for one would welcome this evolution of the case law because I find it more in line with the traditional approach that authorises an applicant having claimed different alternatives to abandon some of them while limiting the claimed subject-matter to the remaining alternatives. NB : This decision has already been discussed here. To read the whole decision, click here.
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T 329/06 – Disclaiming All the Disclosed Embodiments
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T 329/06 – Disclaiming All the Disclosed Embodiments 5 Nov 2009 […] Claim 1, in addition to claim 1 as granted, contains a disclaimer in its section b) wherein it is “provided that the cells are not human embryonic stem cells”. In a similar way the subject-matter of claim 25 has been restricted to a method wherein the propagated stem cells are “other than human embryonic stem cells”. [2] The EBA in its decision G 2/06 has decided that R 28(c) EPC forbids the patenting of claims directed to products which - as described in the respective application - at the filing date could be prepared exclusively by a method which necessarily involved the destruction of human embryos. In the view of the present Board it can be deduced from this decision that methods involving such destruction are also to be regarded as not patentable. [3] Claim 1 as granted was directed to an apparatus comprising cells within the channels of a matrix. Claim 25 as granted was directed to a method for propagating stem cells. This clearly included embryonic stem cells of human origin. In the passage bridging pages 31 and 32 of the application as published it is stated that embryonic stem cells (ES cells) are obtained from embryos at a very early stage. Since in the application as published the only teaching of how to prepare embryonic stem cells, including human embryonic stem cells, is the use (involving their destruction) of embryos at a very early stage, it is concluded that at the filing date of the application underlying the patent in suit human embryonic stem cells could be prepared exclusively by a method which necessarily involved the destruction of human embryos. This has the result that the invention of claims 1 and 25 as granted falls under the prohibition of A 53(a) EPC taken in combination with R 28(c) EPC (cf. also G 2/06 [29]). [4] In agreement with decision G 1/03 the amended claims 1 and 25, both containing a disclaimer not removing more than what is necessary to disclaim subject-matter falling under the prohibition of A 53(a) EPC in combination with R 28(c) EPC, meet the requirements of A 123(2) EPC. [7] The present disclaimers excise unpatentable embodiments involving the destruction of human embryos. This in itself is not problematic under the rules provided by G 1/03 in combination with G 2/06. But what is strange here is that the disclaimers excise, as far as human stem cells are concerned, all the disclosed embodiments (because all the disclosed embodiments involve the destruction of embryos). Claim 1 as amended therefore covers – among other things – an apparatus comprising human stem cells other than human embryonic stem cells. However, this part of the claimed subject-matter appears to lack sufficiency of disclosure, because “the only teaching of how to prepare […] human embryonic stem cells, is the use (involving their destruction) of embryos at a very early stage.” Unfortunately, the Board does not address this question. The Opposition Division – to which the case has been remitted - could introduce this new ground, but I doubt it will do so. The situation is inextricable, since a disclaimer “provided that the cells are not human stem cells” would have been unallowable under G 1/03 because it excises more than the subject-matter that is unpatentable under A 53 (a) EPC. To read the whole decision, click here.
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T 8/07 - ‘Should’ Means ‘Must’
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T 8/07 - ‘Should’ Means ‘Must’ 4 Nov 2009 The present decision deals with the attempt to get around G 1/03 by taking advantage of the ambiguous wording of one of its conclusions. Well, the attempt was unsuccessful, but it was well worth a try. [...] In part 3 of the reasons of G 1/03, entitled “The drafting of disclaimers”, it is held, with reference to the purpose of disclaimers in particular with respect to the exclusion of a novelty destroying disclosure that: “The necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily. Therefore the disclaimer should not remove more than is necessary to restore novelty or to disclaim subject matter excluded from patentability for non-technical reasons”. The second sentence of this passage is reproduced in headnote 2.2, to which reference was made by the appellant in the statement of grounds of appeal. [2.3] These findings of G 1/03, when read in their correct context, therefore express a requirement and not merely a desideratum. In particular it cannot be derived from this part of the reasoning of G 1/03 - as the appellant argued in writing and orally - that a patent proprietor is permitted a degree of discretion or latitude concerning the “border” within which the disclaimer should be drafted with respect to the subject matter to be excised. On the contrary, the existence of any discretion regarding the extent of the disclaimer as compared to the subject-matter to be excluded would inevitably introduce a degree of arbitrariness in the drafting of the disclaimer. This would however conflict with the express findings of G 1/03 as explained above. [2.4] It is therefore concluded that in order to comply with the requirements following from G 1/03 with respect to the drafting of disclaimers it is necessary that these be formulated to excise only that subject- matter which cannot be claimed, e.g. in the present case the disclosure of an example of the prior art. [2.5] This decision had already been discussed here (in French). To read the whole decision, click here.
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T 891/05 - One For All and All But One
T 891/05 - One For All and All But One 3 Nov 2009 The present decision shows that a “precautionary disclaimer” is not acceptable before the EPO. One cannot excise features on the basis of the conviction that there is prior art. Quite to the contrary, the disclaimed portion must correspond to a well identified piece of prior art. […] The expression in claim 19 [as granted] “more than one and fewer than all” of a variable number of word line segments introduces the concepts of two as a minimum and all-but-one as a maximum, which are not directly and unambiguously derivable from the application as originally filed. The patentee has argued that activating all word line segments or sets of sense amplifiers was prior art, and that removing a feature from a claim did not contravene A 123(2) if its substitute could be prior art. The board is not convinced by this argument. Whilst, under certain conditions, an undisclosed disclaimer may be allowable without contravening A 123(2), the present case does not fulfil these conditions, since, for instance, the patentee has not identified a specific piece of prior art that this amendment disclaims. [4.5] To read the whole decision, click here.
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T 1212/07 - Disclaimers Disenchanted
T 1212/07 - Disclaimers Disenchanted 2 Nov 2009 When the Enlarged Board decided, in G 1/03, that disclaimers did not violate A 123(2), many practitioners were greatly relieved. Now is the time of disenchantment, as we discover that the rules provided by the Enlarged Board very often transform disclaimers into time bombs. I shall dedicate most of this week's posts to decisions on disclaimers. The present decision contains an example for a disclaimer that is unallowable under G 1/03 because it excises too much. The patentee had disclaimed the scope of the most relevant claim of the novelty destroying patent document. Alas, this was too much, as only one composition encompassed by this claim was novelty destroying. […] The amendments made to the claims of the requests comprise a disclaimer which excludes certain nonfluorinated layers. [2.1] This disclaimer has no basis in the application as filed and was introduced into these claims during the opposition proceedings in order to delimit the claims against the disclosure of D1, a document undisputedly forming part of the state of the art only according to A 54(3) and (4) EPC 1973. [2.2] According to decision G 1/03, an originally undisclosed disclaimer may be allowable and is considered as not extending the subject-matter of the application as filed within the meaning of A 123(2) if it restores novelty by delimiting a claim against state of the art under A 54(3). However, the disclaimer should not remove more than is necessary to restore novelty [2.3] In the present case, the disclaimer is based essentially on the disclosure of Claim 29 of D1. However, the fluoropolymer layer (B) of this claim does not anticipate the much narrower fluoropolymer definition of the patent, which is limited to polymers comprising units derived from “one or more of hexafluoropropylene and tetrafluoroethylene monomers” and “one or more non-fluorinated olefinically unsaturated monomer(s)” without units of “vinylidene fluoride”. The only fluoropolymer composition of document D1 falling under the definition of the patent is the “copolymer of tetrafluoroethylene and ethylene”. The disclaimer thus removes subject-matter which does not anticipate the subject-matter of the present claims in the absence of the disclaimer. It thus inevitably removes more than is necessary to restore novelty vis-à-vis D1 and hence, does not amount to an allowable disclaimer. [2.4] The Board cannot accept the argument of the Respondent that the disclaimer should be allowed in view of the fact that according to the disclosure of D1 the copolymers of tetrafluoroethylene and ethylene are only preferred fluoropolymers because this issue has no bearing on the relevance of the respective disclosures, which is a matter to be judged independently. Just as unconvincing is the further argument of the Respondent that the disclaimer should not be attacked in appeal because it was not objected to during the opposition proceedings. The fact that the Appellant did not object to the allowability of the disclaimer before the Opposition Division neither amounts to a surrender of the right to object nor has any legal effect as to the allowability of the disclaimer. Whether the disclaimer is allowable or not is a legal requirement and the very purpose of appeal proceedings is to check the correctness of conclusions drawn by the department of first instance in the decision which is now challenged by the Appellant. [2.5] For these reasons the introduction of the disclaimer extends the subject-matter claimed beyond the content of the application as filed, contrary to the requirements of A 123(2), with the consequence that the requests are not allowable. [2.6] To read the whole decision, click here.
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T 601/06 - Too Late for Liberation
T 601/06 - Too Late for Liberation 31 Okt 2009
The appellant requested in its letter dated 3 April 2009 that the oral proceedings (OPs) be postponed for the reasons that 5 May 2009 was a public holiday in the Netherlands [Liberation Day], the appellant’s representative had firmly booked a holiday for that date and there was no other representative available to replace him due to the holiday season. The representative indicated that the other party had orally agreed to the request. According to Article 15(2) of the Rules of Procedure of the Boards of Appeal (RPBA), a change of date for OPs “may exceptionally be allowed in the Board’s discretion”. Examples of circumstances that can be taken into account by exercising this discretion are given in the Notice of the Vice-President of DG3 dated 16 July 2007. According to this notice serious substantive reasons to request the change of the date may be, for instance, a previously notified summons to OPs of the same party in other proceedings before the EPO or a national court, serious illness, a case of death within the family, the marriage of a person whose attendance in OPs is relevant, military service or other obligatory performance of civic duties, or holidays which have already been firmly booked before the notification of the summons to OPs. Any request to fix another date shall be filed as soon as possible after the grounds preventing the party concerned from attending the OPs have arisen. Although the board accepts on the basis of the representative’s statement with respect to the major importance of this holiday to him and his family that he had a firmly booked holiday on the date set for OPs before the notification of the summons, the board considers the request to be late filed. The representative should have been aware when receiving the summons, i.e. at the end of February, that he would be prevented from attending the OPs and should have filed his request immediately. Filing the request more than one month later is not considered to fulfil the requirement of “as far in advance of the appointed date as possible” as required under Article 15(2) RPBA or “as soon as possible” as required in the Notice of the Vice-President of DG3. Therefore, the request does not satisfy the conditions given in the Vice-President’s Notice and in the Rules of Procedure. […] In view of the presented importance of the holiday for the representative, as a courtesy the board therefore made an attempt to fix a date within a period of about two months from the date of the request. As no alternative date suitable for the five-member board could be agreed with the parties, the date of 5 May 2009 for the hearing was maintained. The representative of the appellant argued that, considering the need for consulting the client and the opponent, his request for postponement was not late filed and that the request had to be granted. This argument does not convince the board. The reason for the request was a firmly booked holiday of the representative, i.e. a personal reason. It would not be usual for the representative to need the consent of his client before filing such a request based on a personal reason. […] Even assuming that all the consultations mentioned by the appellant’s representative were necessary, the use of modern communication means and according the appropriate urgency to the matter should not result in a delay of more than a few days. […] Taking into account the specific circumstances (a case of death within the family), the request for postponement in [T 514/06] was not late filed. Thus, the decision to refuse the present request maintains a uniform application of the law. [2.1] To read the whole decision, click here.
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T 1562/06 - Exhaustion ? Who Has Said Exhaustion ?
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T 1562/06 - Exhaustion ? Who Has Said Exhaustion ? 30 Okt 2009 The appellant’s sole objection of lack of novelty relies on the application of the principle indicated in the decision T 998/99 that priority can only be claimed once from a particular priority document for a particular invention. The board however agrees with the conclusions in the subsequent decisions T 15/01 and T 5/05, according to which the conclusion reached in T 998/99 is not valid. Therefore the document D1 does not form part of the prior art according to A 54(3). [2.1] Even though I tend to agree, I find it regrettable that the Boards, after the very controversial decision T 998/99 (L’Oréal), only treated this decision with contempt and did not refer the question to the Enlarged Board of Appeal, which would be a better forum for discussing such a fundamental point of law than the various technical Boards. To read the whole decision, click here.
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T 95/07 - Stuck Right From the Start ?
T 95/07 - Stuck Right From the Start ? 29 Okt 2009 […] According to the principles developed in T 644/97, the technical problem arising from a “closest state of the art” disclosure which is irrelevant to the claimed subject-matter in the sense that it does not mention a problem that is at least related to that derivable from the patent specification has a form such that its solution can practically never be obvious, because any attempt by the skilled person to establish a chain of considerations leading in an obvious way to the claimed subject-matter gets stuck at the start. It follows that the respective claimed subject-matter is non-obvious in the light of such art (T 644/97 [2.6.3]). [4.3.9(c)] This reasoning appears from time to time in the case law (see, for example, T 835/00). I have to admit that I do not find it straightforward. I therefore had a look at T 644/97 where one reads: […] E1 is concerned not so much with preparing a particular thermoplastic polycarbonate, as with isolating polycarbonates from their solutions, in particular in chlorine containing solvents. Furthermore, whilst E1 is concerned in general terms with obtaining high quality polycarbonates, having low colouration and a low residual chlorine content, the fact that all the products according to E1 have been prepared by a process which involves the use of phosgene, implies that the resulting products will necessarily contain some chlorine. This is in contrast to the products according to the patent in suit, which have been prepared without the use of phosgene. [2.4.2.2] Whilst the polycarbonates referred to in E1 have certain features in common with those according to the patent in suit, the teachings of the two disclosures are at cross-purposes, in that the problem addressed is not closely oriented to that solved by the patent in suit. [2.4.2.9] Following T 686/91, E1 is not an appropriate choice for the “closest state of the art” for the assessment of inventive step. [2.4.2.14] [But even if one considered s]tarting from such a disclosure as E1, in which the problem is not closely oriented to the claimed subject-matter, an appropriate technical problem would need to reflect such lack of orientation, and consequently to be formulated along the lines of: “The provision of a further polycarbonate with a different spectrum of utility.” [2.6.2] Quite evidently, the solution of such a problem can practically never be obvious, because the absence, from the statement of problem, of an identifiable convergent aim or goal means that there is no basis for proposing any relevant measure or combination of measures of modification of this “closest state of the art” to achieve such an aim. In other words, any attempt by the skilled person to establish a chain of considerations leading in an obvious way to the claimed subject-matter gets stuck at the start. Nor would the skilled person be led to combine with E1 a prior art disclosure more directly relating to the relevant problem than that of E1, say E6, since the relevance of such a disclosure would not be apparent (T 325/93). [2.6.3] In summary, the technical problem arising from a “closest state of the art” disclosure which is irrelevant to the claimed subject-matter in the sense that it does not mention a problem that is at least related to that derivable from the patent specification has a form such that its solution can practically never be obvious, because any attempt by the skilled person to establish a chain of considerations leading in an obvious way to the claimed subject-matter gets stuck at the start. It follows that the respective claimed subject-matter is non-obvious in the light of such art. [2.6.4] I remain unpersuaded. I believe that this reasoning is too much concerned with the problem stated in the potential closest prior art. The problem-solution approach as I understand it does not really depend on this problem. Otherwise prior art other than patent literature (such as, for example, a product on sale or an object disclosed in a prior use, which do not disclose any problem whatsoever) would never be able to qualify as closest prior art, which is nonsense. In order to know the objective technical problem (which is the only decisive problem within the framework of the problem-solution approach) one has to have determined the closest prior art already. Therefore, I much prefer what is stated in T 606/89 [2] : “Establishing the closest prior art requires that the claimed invention should be compared with the art concerned with a similar use which requires the minimum of structural and functional modifications.” I think that it is legitimate to consider the problem disclosed in the potential prior art – if there is any ! –, but this criterion alone cannot be decisive. T 989/93 [12] 3319 | 3398
K’s Law – The ebook
T 95/07 - Stuck Right From the Start ?
is quite balanced : “A document serving as the starting point for evaluating the inventive merits of an invention should relate to the same or a similar technical problem or, at least, to the same or a closely related technical field as the patent considered. A document belonging to a different technical field is much less likely to provide any sound reason why a person skilled in the art would (and not only could or might) have arrived at the subject-matter claimed.” Irrespective of whether I am right or wrong, it is good to know that this argument has been made repeatedly in the case law. It might be of use in the defence of otherwise doomed patents or applications. To read the whole decision, click here.
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T 95/07 – There is No Withdrawal of Evidence
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T 95/07 – There is No Withdrawal of Evidence 28 Okt 2009 [The second opponent] submitted in its statement of grounds of appeal with respect to A 54 and the disclosure of comparative example 4 of D1 that the data of D6, i.e. the experimental data of [the first opponent] were more reliable than D11, i.e. the theoretical calculation provided by [the second opponent] and stated that it withdrew D11. [V(c)] […] The fact of the matter is that D11 formed part of the proceedings from the outset and forms part of the public file. Whilst a party may choose not to rely on a particular piece of evidence in the file the Board is not aware of any legal mechanism for removing arbitrarily or by simple preference of that party elements of evidence already cited and forming part of the proceedings. On the contrary by analogy with the finding of T 270/94 [2.1], D11 formed part of the legal and factual framework within which the examination of the opposition was to be conducted. Pursuant to A 113(1) each party must be allowed to comment on any evidence legitimately submitted in the proceedings. Allowing one party, even the party having originally submitted that evidence unilaterally and arbitrarily to require such evidence to be excluded from consideration would infringe this right. In the present case, moreover, for the reasons given the remaining piece of evidence relied upon (D6) leads to the conclusion that the subject-matter of comparative example 4 of D1 does not anticipate the subject-matter of operative claim 1. D11 contains no information which would result in a modification of this conclusion. Hence insofar as the consideration of novelty is concerned, neglecting the evidence provided by D11 would not change the conclusion reached. [4.2.12] To read the whole decision, click here.
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T 95/07 - Always Duly Introduce Guest Artists
T 95/07 - Always Duly Introduce Guest Artists 27 Okt 2009 […] A request was made that an accompanying person be allowed to speak at the oral proceedings (OPs). According to G 4/95, it is required that the request for permission for oral submissions to be made by an accompanying person should state the name and qualifications of the accompanying person and should specify the subject-matter of the proposed oral submissions ([Order 3.(b).(i)]). It is also required that the request be made sufficiently in advance of the OPs so that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions ([Order 3.(b).(ii)]). In the present case the attendance of the accompanying person, Ms Saeki was announced more than a month before the OPs. In this letter it was stated that Ms Saeki was “Manager of the IP Department of Asahi Kasei Corporation”. No further details of the qualifications of Ms. Saeki were provided. As regards the subject-matter of the proposed submissions, it was requested that the accompanying persons be permitted “to speak with regard to technical matter in support of submissions made by the undersigned representative”. Whilst in some cases, for example where the accompanying person is identified as being the inventor, this information might be considered sufficient to establish both the qualifications and - at least in general terms - the subject-matter of the proposed submissions (cf. T 910/06 [5.9.5]), this does not apply when the accompanying person is, as in this case, identified solely as an employee of an opponent or an affiliated company of the opponent which employee further is not identified as performing a technical function associated with the subjectmatter of the patent in suit, nor as having had any involvement, even peripherally, in the preparation of the disputed experimental data. As a consequence of this, it would not have been possible in advance of the OPs to understand - even in general terms - with respect to which technical aspects the requested submissions were to be made. Under these circumstances the Board could only come to the conclusion that the preconditions set out in G 4/95 were not met and as a consequence refuse to authorise Ms Saeki to make oral submissions. [4.2.8] To read the whole decision, click here.
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T 95/07 - Standard of Proof for Implicit Disclosure
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T 95/07 - Standard of Proof for Implicit Disclosure 26 Okt 2009 As this decision is interesting on several accounts, I will devote more than one post to it. […] In the case of arguing a lack of novelty based on a replication of an example of a prior art citation, the case being made is that the subject-matter claimed, even if not anticipated by the explicit literal disclosure of the citation is nevertheless implicitly anticipated to the extent that in carrying out the express literal disclosure and instructions of a prior art document (e.g. an example) subject-matter falling within the terms of the claims of the patent in suit is the inevitable outcome. In deciding what is or is not the inevitable outcome of an express literal disclosure, there can be no space for doubt and hence a much stricter standard of proof than the “balance of probability”, namely “beyond all reasonable doubt” needs to be applied. This means that if there is any reasonable doubt as to what may or may not be the result of carrying out the literal disclosure and instructions of a prior art document, i.e. if there remains a “grey area” then the case of anticipation based on that document must fail (see T 793/93 [2.1]). [4.2.5] To read the whole decision, click here.
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T 972/05 - Unlike Stalin, the EPO Can’t Correct Facts
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T 972/05 - Unlike Stalin, the EPO Can’t Correct Facts 23 Okt 2009 The contested decision was signed by the opposition division (OD) on 1 March 2005 and was posted on 18 May 2005. However, the decision was sent without being accompanied by the Minutes of taking of evidence. Said Minutes were dispatched with a subsequent letter of the OD dated 24 June 2005, under the cover letter of the first sheet of the interlocutory decision (EPO Form 2327). In a further brief communication to the parties dated 2 August 2005, the OD stated: “The interlocutory decision is dated 24.6.2005.” [1.1] However, the OD had no power to re-date its decision under R 89 EPC 1973 (R 140 EPC) (see T 124/93 [1.1]). Nor could the OD change the mailing date of the decision once it was correctly notified to the parties, in order to re-start the time limit for filing an appeal according to A 108, first sentence, EPC. The mailing date is a fact which cannot be corrected for example under R 89 EPC 1973. The circumstance that the Minutes of taking of evidence were missing is not of relevance, as both parties were in possession of the decision itself which alone forms the basis for the appeal. [1.2] According to A 108 EPC, the time limit for filing an appeal is two months after notification of the decision on 18 May 2005. Allowing 10 days for post services, the non-extendable time limit for filing the appeal expired on 28 July 2005. [1.3] It results from the above considerations that the notice of appeal of appellant I, filed on 25 July 2005, was filed in good time; whereas its statement of grounds of appeal was filed late on 2 November 2005. However, the board accepts that appellant I was misled by the letter of the OD which stated a later date for the decision. Applying the principle of protection of legitimate expectations according to which communications of the EPO can be relied upon, the appeal of appellant I is thus considered admissible (see T 124/93 [1.1]). [1.4] The opponent’s notice of appeal was filed on 29 August 2005 and the grounds for appeal were filed on 24 October 2005, both dates being after the expiry of the time limit for the appeal on 28 July 2005, triggered by the notification of the decision posted 18 May 2005. Hence both letters were filed too late. Appellant II cannot, in the board’s view, rely on having been confused by the OD’s letter dated 2 August 2005, as this letter was received by them only after expiry of the said time limit for filing the appeal. The appeal of the opponent is therefore not admissible (A 108 EPC). The opponent is thus party to this appeal proceedings as of right, pursuant to A 107 EPC, second sentence, and will in the following be referred to as the respondent. [1.5] To read the whole decision, click here.
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T 314/07 - It Ain’t Necessarily So …
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T 314/07 - It Ain’t Necessarily So … 22 Okt 2009 This decision shows that one has to be careful when extrapolating from intermediate products of a process to the final products. Certain features may indeed undergo some change during the execution of the process. […] Claim 1 as maintained by the Opposition Division (OD) comprises the substantial amendment requiring that in the claimed absorbent article the surfactant is disposed in at least one of the layers of the polymeric film “other than a top layer of the polymeric film”. This amendment is intended to specify that there is no surfactant in a top layer of the polymeric film in the claimed absorbent material. According to the Respondent this amendment finds a support in the second full paragraph on page 7 of the application as filed. [2.1] It is established jurisprudence of the Boards of Appeal that an amendment to a claim offends against A 123(2) EPC, if the amended subject-matter is not directly and unambiguously derivable from the application as filed. In the present case, it is not disputed that the passage cited by the Respondent as support for the amendment to claim 1 does not describe the absorbent material per se but the method for preparing the film used in the preparation of the claimed absorbent material. In these circumstances, the question arises whether the amendment of the claim directed to the absorbent material is nevertheless directly and unambiguously derivable from a passage of the application as filed not describing the final absorbent material as such but the preparation of the intermediate film used there for. The particular characteristics of the intermediate film described in the application as filed could be automatically transferred to the final absorbent material only if these characteristics would remain unchanged throughout the process of preparing the absorbent material, in other terms, if the location of the surfactant in the intermediate film is not altered by the process steps leading to the final absorbent material, such as aperturing and bonding the film to the other parts of the article. However, it is known in the art, for example from D1, that the surfactant initially disposed in an internal core layer of a multilayer film migrates into the outer layer, the rate of migration increasing with increasing temperature. In order to avoid the migration of the surfactant to the outer layer the film has to be stored at room temperature or below. Thus, the location of the surfactant in the intermediate film does not remain unchanged, the surfactant migrating from the core layer into the outer layer already at a temperature around room temperature. Since the film described in the application as filed, is not only handled at room temperature during the preparation of the final absorbent but is even heated for aperturing and bonding it to the other elements of the absorbent article, the surfactant located initially in the internal layer migrates to the outer layer. Therefore, the location of the surfactant in the intermediate film is altered by the process steps leading to the final absorbent material with the consequence that the passage describing in the application as filed that the surfactant is internally compounded is not automatically applicable to the final absorbent material. [2.2] Therefore, the amendment to claim 1 intended to specify that in the final absorbent article the surfactant is not disposed in a top layer of the polymeric film cannot directly and unambiguously be derived from the passage of the application as filed. The amended claim 1 of the main request does, thus, not fulfil the requirements of A 123(2) EPC. [2.3] To read the whole decision, click here.
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T 217/07 - Boards May Still Apportion Costs
T 217/07 - Boards May Still Apportion Costs 21 Okt 2009 A 104 EPC, an article dealing with costs, has undergone some changes when the EPC was revised. Not all of these changes were purely cosmetic. In particular, A 104(1) does not refer to the Boards of appeal any more : (click to enlarge)
Does this mean that the Boards will not be able to order apportionment of costs under the EPC 2000 ? No, says the Board in decision T 217/07 : A 104(1) of the revised EPC states “Each party to the opposition proceedings shall bear the costs it has incurred, unless the Opposition Division, for reasons of equity, orders, in accordance with the Implementing Regulations, a different apportionment of costs.” Although A 104(1) EPC does not refer to the boards of appeal any more (in contrast to A 104(1) EPC 1973), the boards of appeal still have the power to apportion costs according to A 104(1) EPC. This power stems from A 111(1) EPC. [7.2] To read the whole decision, click here.
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T 1143/06 - A Case for Mentalists ?
T 1143/06 - A Case for Mentalists ? 20 Okt 2009 The invention relates to a system and method for accessing data files in a computer-based database. […] A problem associated with large computer databases is that it can be extremely difficult to identify hidden patterns in the data. The invention allows each of the data files to be represented visually as an element moving on the display. […] Thus, hidden patterns in the data are easily identified by observing groups of elements moving in a similar way. [1] […] The examining division (ED) refused the claim as not involving an inventive step. [3.1] The invention differs from D1 only in that the speed of movement of respective elements is determined, causing the elements to move relative to one another. The main question is whether the ED’s finding that this feature did not have a technical effect was justified. [3.2] A non-technical claim feature is a feature which does not interact with the technical features to produce a technical effect. According to the jurisprudence of the Boards of Appeal such a feature cannot establish novelty and inventive step (T 154/04 [15]). Since the present invention is concerned with the visualisation of data files A 52(2)(d) EPC, excluding presentations of information from patentability, is obviously relevant. [3.3] If the new features of a claim concern the presentation of information itself (rather than its concrete implementation) a patent can only be granted if they also produce a technical effect. If they do not they cannot contribute to an inventive step. [3.4] The movement of the elements symbolising the data files over the screen is intended to convey information. […] Regarded in isolation this feature must be held to be a “presentation of information” in the sense of A 52(2)(d) EPC. In its claim context the feature can therefore only contribute to an inventive step if it additionally produces a technical effect. [3.5] […] The appellant argues that the invention provides a greater amount of information and therefore provides a superior solution to the “objective technical problem to be solved”, namely to permit an “efficient search, retrieval and evaluation of data records stored in a database”. The Board’s view is that the invention does not solve a problem that is directly concerned with the search for and retrieval of information, since the only new feature relates to the movement of displayed elements. The direct effect of the visualisation is the impression it makes on the user. The stated problem is therefore too broad. A more precise formulation would be that the invention solves the problem of presenting information about data files to a person in such a manner that he can easily evaluate it, this person being the user of a system for search and retrieval of data files in a database. This wording demonstrates more clearly that the problem is not a purely technical one. In fact, the same information could theoretically be displayed as natural-text descriptions or tables. A direct technical effect therefore seems to be absent. The user of the system responds to the displayed information by activating selecting means to select a data file and cause the system to display it. […] The user’s evaluation of the information is a mental act. Like any cognitive process it is at least in part subjective, as the ED has pointed out. Truly technical is thus only the system’s response to the user’s activation of the selection means. However, not only is the system response indirect since it is entirely dependent on the outcome of the mental act on the part of the user, but it is not even new: the system reacts on the selecting means in the same way as in the prior art. It may fetch a different data file than in the prior art, but if it does it is a mere reflection of the insight the user has gained from the mental act. Although this mental act will be influenced by the invention, such influence is not in itself a criterion of technicality. A technical problem could therefore only be related to the implementation details of the method, as the ED correctly concluded. In claim 1 however the implementation is only implicit. [3.8] The request must be refused under A 56 EPC 1973. [4] To read the whole decision, click here. 3327 | 3398
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T 382/07 - True Disclosure Found in the Priority Document
T 382/07 - True Disclosure Found in the Priority Document 19 Okt 2009
This (Kinkeldey) decision is very interesting on more than one account. First, the decision deals with a provision of the Paris Convention (PC) that is hardly known at all : the possibility of claiming an exhibition priority (Article 11 PC). Such priorities are not recognized by the EPC, as explained in points 8 to 8.4 of the Reasons. Laurent Teyssèdre has discussed this aspect of the decision on his blog (in French). But there is even more. Once the exposition priority is lost, document D5 becomes prior art under A 54(3) EPC, due to the date of filing of its priority document, D49. The Board therefore has to consider the formal entitlement to priority (D49 having been filed by four natural persons, whereas D5 has been filed by only one of them; see point 9 of the Reasons). Finally, the Board examines substantive entitlement to priority and finds a difference between the disclosures of D49 and D5 : […] In addition to the general description, document [D49] comprises eight examples. Example I of document [D49] literally recites, albeit in a different order, the five compositions for veterinary use of examples 1 and 2 of document D5, with the exception that in the composition corresponding to the first composition of Example 2 of document D5 the content of glycerine monostearate 5% according to document [D49], whereas it is 1% according to document D5. With respect to this difference, in the board’s view the skilled person studying document D5 would recognise that, in contrast to the summed percentages for all the other relevant compositions, the sum of percentages for this one does not amount to 100 and that therefore the composition cannot be meant to read as such. The board considers that for establishing the intended percentages of ingredients and in the absence of indications in the patent document itself, the skilled person would compare the disclosure of the erroneous composition to the disclosure of the corresponding composition in the priority document, because the disclosure of a specific example, if there is a corresponding one, is highly unlikely to change between the priority and the later application. He/she would therefore conclude that the value of 1% should in fact read 5%. The present board is aware of decision G 11/91 regarding the correction of errors in the disclosure of a patent application pursuant to R 88 EPC 1973. The Enlarged Board held in point 7 of the reasons that priority documents may not be used to establish what a skilled person would actually derive, on the date of filing, from the parts of a European patent application relating to the disclosure. However, in the present board’s view, this decision is not applicable to the present case which is not related to the question of whether or not the correction of an error complies with the requirements of A 123(2) EPC but rather is concerned with establishing the true disclosure content of a patent application in the case of an obvious error for the purposes of A 54(3) EPC and for determining the validity of the claimed priority. As far as the determination of the disclosure content of a prior art document is concerned it has been held by the boards of appeal in several decisions that for the correction of an obvious error in such a document the skilled person may resort to readily accessible relevant external documents, for example to a corresponding US patent application in the case of an obvious error in a British patent application (T 412/91 [3.5]) or to the original document in the case of an obvious error in an abstract of that document (T 77/87 [4.1.4] and T 1080/99 [4.5-6]). Therefore, the board concludes that, in effect, the relevant examples in document D5 and document D49a are identical. [10.2] This decision is really worth reading. To do so, just click here.
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T 1898/06 - Claims Are to be Clear in Themselves
T 1898/06 - Claims Are to be Clear in Themselves 17 Okt 2009 Claim 19 of the Main Request read as follows: “A pharmaceutical composition comprising a compound according to claim 1 or the pharmaceutically acceptable derivatives thereof.” [IV(b)] According to A 84 EPC, the claims shall define the matter for which protection is sought (first sentence) and for this purpose they shall, inter alia, be clear and supported by the description (second sentence). This implies that the claims be clear in themselves when being read with the normal skills, but not including knowledge derived from the description of the patent application. (T 988/02 [3.3.1]). Therefore, the Appellant’s argument that it was clear from the description of the application what was to be understood as pharmaceutically acceptable derivatives, cannot support clarity of the claims. [2.2] The expression “or the pharmaceutically acceptable derivatives thereof” adds to the compounds as defined in claim 1 those which are “derived” from said compounds. There is, however, no clear definition to which extent the compounds according to claim 1 may be modified while still being regarded as derivatives. This has the effect that the person skilled in the art cannot decide clearly which compounds are to be covered by the claims and which are not. [2.3] For this reason, the subject-matter of claim 19 of the Main Request is not clear, contrary to the requirements of A 84 EPC. [2.4] To read the whole decision, click here.
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T 1496/06 - Conditional Withdrawal ? Nope.
T 1496/06 - Conditional Withdrawal ? Nope. 16 Okt 2009 The title of this post is misleading insofar as the EPO (and the WIPO, for that matter) does accept withdrawals (of applications) that are conditioned upon non publication. See for example the Guidelines A-VI 1.2 where it is stated that the applicant “may make [the withdrawal] subject to the provisio that the content of the application is not made known to the public.” The present decision deals with another (admittedly rather exotic) situation : the conditional withdrawal of a published application during appeal proceedings following a rejection. In a fax dated 26 June 2009 the appellant withdrew the application on the condition that any fee was refunded, explicitly setting out that, if no refund was possible, the application was not withdrawn. [IX] […] The appellant’s initial request was that the decision be set aside in appeal proceedings and a patent be granted. According to the principle of party disposition this request determines the extent of the appeal proceedings (see G 9/92, [1,3,9]). [2.1] On the other hand, the appellant’s conditional withdrawal of the application, if legally effective, means that the appellant now requests that “any fee is refunded” with the immediate termination of the appeal proceedings without examination of the appeal, which is the consequence of a withdrawal of the application in appeal proceedings in accordance with established case law. The conditional withdrawal in effect thus aims at an alternative to the examination of the appeal provided for in A 110 EPC and A 111(1) EPC 1973 so that it remains open whether the appellant requests that the board decide on the appeal or not. [2.2] Consequently the conditional withdrawal of the application aims at extending the appeal to subject-matter which has no basis in the EPC and is contrary to the principle of party disposition. Thus it is inadmissible in the appeal proceedings and does not have any legal effect (see T 9/04). [2.3] To read the whole decision, click here.
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T 1140/06 - A Good Example is the Best Sermon
T 1140/06 - A Good Example is the Best Sermon 15 Okt 2009 Although examples according to the claimed invention are not mandatory parts of a patent/patent application disclosing an invention, they are however, in general, construed to illustrate, within the framework of the description, the core section of the claimed invention and to relate to preferred embodiments thereof. In general, they serve the purpose of demonstrating the benefits of the claimed invention, and their results should, apart from few accidental failures, therefore fulfil the requirements of the claims. Hence, examples should, in the Board’s view, provide the person skilled in the art with all the essential details necessary for the verification of their reported results (e.g. by repetition, if necessary), such as starting materials, process features and process conditions. In other words, the examples should confirm that the description of the patent or patent application in suit provides a coherent, convergent teaching enabling the skilled person to arrive at the goals of the claimed invention, and should thus make an extensive research programme superfluous. [5] So be it. To read the whole decision, click here.
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T 1157/06 - Southern German Skills
T 1157/06 - Southern German Skills 14 Okt 2009 Several Board of appeal decisions have retained very precise definitions of the skilled person. For instance, T 412/93 [4] has found that in a particular case “the skilled person should be treated as a team of three composed of one PhD researcher with several years experience in the aspect of gene technology or biochemistry under consideration, assisted by two laboratory technicians fully acquainted with the known techniques relevant to that aspect.” In the present decision, the opponent pushed things even farther. Enjoy. The Opposition Division had rejected the opposition and concluded that the subject-matter of claim 1 of the patent as granted was inventive. […] The appellant argued that […] the skilled person, a mechanical engineer from the south-west of Germany, having graduated from a technical college and having several years of professional experience working for a major manufacturer of gears, and whose command of English corresponded to the average knowledge of English of a person having passed final secondary-school examinations (Abitur) twenty years ago, would – due to his limited knowledge of English – have understood the cited passages [of D1] to disclose that the couple of bearings of the planetary gear compensate the forces directed towards the inside. […] The following questions should be referred to the Enlarged Board of Appeals (EBA) : (1) Does the skilled person have a mother tongue ? If so, what is his mother tongue ? (2) What is the level of knowledge of foreign languages of the skilled person ? […] [VI] […] According to A 112(1) EPC a referral to the EBA is admissible only if a referral is required in order to ensure uniform application of the law, or if an important point of law arises. In both cases the Board before which the procedure is pending and for the decision of which the answer to the question to be referred is relevant, has to consider that a decision is required. [4.1] In the present case, the Board does not consider that a decision of the EBA on the questions submitted by the appellant is required, because the answer to these questions follows unambiguously and directly from the EPC and because the case law uniformly applies the law. According to A 54(2) EPC 1973, the state of the art comprises everything made available to the public by any means whatsoever before the date of filing. The language of the publication does not matter. The questions raised by the appellant concern the interpretation of a prior art document and the determination of its content, respectively. The point is what a skilled person can extract from a disclosure. There is comprehensive and constant case law concerning this point. The criteria of interpretation have been defined unambiguously. The language skills of the skilled person do not form part of the decisive criteria playing a part in the interpretation of documents. This is because, according to the uniform case law, the skilled person is not a real existing person but a fiction representing the entire technical knowledge (Fachkenntnisse) that has to be considered in the assessment of inventive step and, as a consequence, in the interpretation of the prior art. Therefore, the subjective language knowledge of the person reading a document cannot play any role. [4.2] To read the whole decision (in German), click here.
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T 756/06 - How to Deal with Hybrids
T 756/06 - How to Deal with Hybrids 13 Okt 2009 The claims relate to a display apparatus having a mixture of technical aspects, e.g. automatically calculating a second time scale, and non-technical aspects, e.g. presenting schedule information. It is established jurisprudence that such claims are inventions in the sense of A 52(1)(2), but that the non-technical features cannot support the presence of inventive step (A 56). Technical features are generally considered to be those that produce a technical effect. [4] In practice in such cases, one of two approaches is generally followed. In the first approach, e.g. apparent from T 931/95, there is an initial analysis of the technical character of the features of the claim and then a consideration of the inventive step of only those features. This approach is typically used for inventions that are essentially business methods running on more or less notoriously known computer hardware. The second approach, e.g. used in T 641/00 (Comvik), is a more conventional application of the problem and solution approach where the differences with respect to the closest prior art are determined and only those that contribute to the technical character are considered for inventive step. This approach may be more appropriate where the technical part is more substantial and/or relevant prior art exists. It has the advantage that any nontechnical feature known from this prior art will not appear as a difference and does not need to be considered in the subsequent steps, thus sparing the step of judging whether it makes a technical contribution. Furthermore, this approach is less abstract since the claimed features can be analysed against concrete prior art. [5] To read the whole decision, click here.
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J 16/08 - Swedish Gymnastics
J 16/08 - Swedish Gymnastics 12 Okt 2009 This decision deals with a legal situation that is more or less obsolete, as it concerns an error of designation. Due to an error in the instructions given to a Japanese attorney, France was designated instead of Sweden. However, the decision is not without interest as it considers the effect of an erroneous publication in the European Patent Register (EPR). [… There is] no need to go beyond the principles considered in the well-established jurisprudence summarized in J 7/90 and also endorsed in J 6/02. That summary corresponds to the three conditions to be met by a request for correction of a designation posited by the appellant in its statement of grounds of appeal: [the correction of an erroneous designation which requires no payment of a designation fee is allowable if: (a) it complies with the applicant’s initial intention, (b) the request is made without undue delay after the error is discovered, and (c) the request is received in sufficient time to enable publication of a warning together with the EP application. ]. The Board must next consider whether the appellant’s evidence is sufficient to prove the facts relied on. [10] First, there is the question of how the mistake arose and whether that could be treated as an “excusable oversight”. [… T]he statement clearly describes both the appellant’s original intention (to designate Germany and Sweden) and how, by a simple human error, that original intention was mistakenly implemented (by designation of Germany and France). The mistake appears to be one capable of classifying as an “excusable oversight”. [11] Second, as regards how and when the mistake was discovered, Mr. Kasuya’s statement is equally straightforward. The mistake was not noticed until, on receiving notification that the fifth annual renewal fee had been paid, Mr. Kasuya happened to check his files and discovered his own earlier error. [12] 13. Thus, of the three conditions which according to the case-law must be satisfied by a request for a change of designation, two appear to be satisfied by the appellant’s account of how the mistake came about and how it was discovered. First, it appears that a mistake was made, that this was an excusable oversight, and that the correction would give effect to the appellant’s original intention. Second, the request was made without undue delay after the error was discovered. This requirement is clearly designed to ensure that, so far as possible, requests for corrections are made before publication […]. Thus whether or not there has been delay must reflect the facts of the particular case. In the present case there is the highly unusual fact that, due apparently to an oversight on the part of the EPO, all publications of the application or of its data showed and still show today all contracting states (CS) as designated. The consequence of this is that a change in the published information will not, as regards the correction sought, show the published information to have been misleading (see point 14 below). Thus, while the request for correction could probably have been filed more speedily than in fact it was, it cannot be said it was done with undue delay. [13] The question which then arises is whether the remaining condition - the “time limitation” condition - has been met or, as the appellant submits, whether it need not be met in this case. The requirement that a request for correction must in the public interest be made early enough to enable publication of a warning together with the EP application is both reasonable and necessary. It balances the protection of, on the one hand, applicants who wish to correct genuine mistakes and, on the other hand, third parties who rely on published information. In the present case it appears that, regardless of the applicant’s wishes as expressed in section 10 of Form 1200 to confine the designations to two CS, the application when published showed all possible CS as designated and the EPR still shows that today. Thus, third parties will not be prejudiced by the correction since up to the date of this decision no publication has ever indicated that the territorial scope of the claimed invention was limited to two CS. The fact that after the correction one of those states will be different from one originally but erroneously indicated by the appellant in box 10.2 of Form 1200 will therefore make no difference. Accordingly, in the unusual circumstances of this case, the third condition of the case law need not - indeed cannot - apply. [14] The appeal is therefore to be allowed with the result that the designation of France will be replaced with the designation of Sweden. [15] I think the decision has to be approved. The Board could have mentioned the fact that the original (“erroneous”) form was also in the EPR file. To this extent it appears incorrect to say that “no publication has ever indicated that the territorial scope of the claimed invention was limited to two CS.” However, the conclusion would have 3334 | 3398
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J 16/08 - Swedish Gymnastics
had to be the same, as the reference to all the CS being designated would have created at least some doubt in third parties consulting the whole EPR file. This decision is also discussed in detail here (in French). To read the whole decision, click here.
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T 254/06 - Forget About Best Mode
T 254/06 - Forget About Best Mode 10 Okt 2009 The examining division (ED) refused the application on the grounds that claim 1 was not supported by the description, A 84. [II] Present claim 1 specifies that “the device is adapted to generate L addresses, which are smaller in number than N = Ng x 2^m virtual addresses for reading data from said interleaver memory in which L data bits are stored". The board notes that in the contested decision the ED reasoned that the definition “L addresses, which are smaller in number than N = Ng × 2^m virtual addresses” was meaningless because for any value of L, infinitely many combinations of m and Ng could be found, for which L is smaller than Ng × 2^m. According to the ED, claim 1 did not imply anything about optimal choices of m and Ng. […] The device as set out in the description is able to generate L addresses, which are smaller in number than N = Ng x 2^m virtual addresses. It may indeed be true that claim 1 does not imply anything about optimal choices of m and Ng, but it is not a requirement of the EPC, and in particular not a requirement of A 84, that the claims should specify the optimum way of carrying out the invention. Hence, the board sees no reason to object to the claimed feature that “the device is adapted to generate L addresses, which are smaller in number than N = Ng x 2^m virtual addresses for reading data from said interleaver memory in which L data bits are stored”. [3.1] Notwithstanding this criticism of the impugned decision, the Board finally rejected the appeal because it found the claims to be insufficiently disclosed. To read the whole decision, click here.
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T 1068/06 - Opposition Filed by a Company Without Legal Personality
T 1068/06 - Opposition Filed by a Company Without Legal Personality 9 Okt 2009 The proprietor of the patent considered the appeal of Schott AG inadmissible because the opposition filed at that time by Schott Glas was inadmissible. According to the proprietor, Schott Glas was not a legal person but a legally dependent company of the Carl-Zeiss-Foundation ; as a consequence, it could not file an opposition in its own name. [VII] Until its transformation into a joint-stock company, which has taken place in the meantime, Schott Glas, having its office in Mainz, was a foundation company of the Carl-Zeiss-Foundation without legal personality. It was registered as “Schott Glaswerke” in the Commercial Registry. The registered business proprietor was the CarlZeiss-Foundation in Heidenheim. According to article 17, first paragraph, of the German Commercial Code (HGB), the company (here : Schott Glaswerke or Schott Glas) of a merchant (here : Carl-Zeiss-Foundation) is the name under which the merchant conducts his business and signs documents. According to paragraph 2 of the same provision, the merchant can sue and be sued under the name of his company. According to German law, the proprietor of the company thus participates under his business name, i.e. the company, in legal and business relations. Therefore the Board has no doubt that the company Schott Glas which belongs to the Carl-ZeissFoundation was able to file an opposition against a European patent under this name. [1.1] I find this reasoning noteworthy in so far as national law is used to establish that Carl Zeiss, who could (should ?) have filed the opposition under its own name was allowed to file an opposition under the name of one its daughter companies without legal personality. A second aspect concerns the transfer of the opposition to Schott Glas AG. I would have expected the Board to have a closer look at the transfer of business assets from Schott Glas to Schott AG, but it is likely that this change of legal status of Schott was in line with the requirements of EPC case law concerning transfer of opponent status. To read the whole decision (in German), click here.
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T 1439/05 - Boards Kill by Numbers
T 1439/05 - Boards Kill by Numbers 8 Okt 2009 In its communication under R 51(4) EPC 1973, the Examining Division (ED) stated that it had the intention to grant a patent on the basis of the amended auxiliary request VI. The ED also stated its reasons for not being able to grant the main request and the auxiliary requests I, II, III, and V. Moreover, the ED stated for the first time that the auxiliary request IV, which it had declared allowable after clarification, was not pursued by the representative of the applicant but was submitted in revised form as auxiliary request VI. Following the communication under R 51(4), the representative denied approval of the text intended for grant and requested to grant a patent on the basis of the amended main request. [6.2] According to A 113(2) EPC 1973, the EPO has to stick to the text submitted to it, or agreed, by the applicant (“principle of request” ; Antragsprinzip). If there are several requests in the form of a main request and auxiliary requests ordered according to their rank, then the ED is bound by the order of the requests in its decision (T 169/96; T 540/02). In the present case the additional statement of the ED in its communication under R 51(4) and the corresponding statement in its decision violate the principle that the request is binding (Prinzip der Antragsbindung). In order to avoid misunderstandings, the ED would have had to clarify the situation of the requests (Antragslage) before announcing its decision at the end of the oral proceedings (OPs). However, the minutes of the OPs do not indicate that such a clarification took place. A clarification was needed all the more as the situation of the requests had become confusing because of the great quantity of filed and amended requests. As the minutes of the OPs do not contain a list of all requests on which the decision was based, the statement of the applicant that it had not withdrawn request IV is credible in view of the numbering of the requests. If it had had the intention to replace auxiliary request IV it would hardly have filed the request as additional auxiliary request VI. [6.5] The principle that the EPO is bound by the text submitted or agreed by the applicant is a procedural principle of so fundamental importance that each violation of the principle, even if it is due to an erroneous interpretation of a request, must be considered to be a substantial procedural violation (T 647/93 ; J 19/84). [6.7] To read the whole decision (in German), click here.
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J 4/09 - How to Handle Reproductive Difficulties
J 4/09 - How to Handle Reproductive Difficulties 7 Okt 2009 This decision deals with the rejection of an application by the Receiving Section (RS). The RS had sent a communication concerning a deficiency of the drawings (R 57 (i) EPC) because it considered that the drawings (Figs. 1 and 2) were not suitable for reproduction. As the applicant did not respond within the time limit, the application was rejected. […] The RS considered as a deficiency that the application did not fulfil the requirements of the EPC because the document, as far as Figs. 1 and 2 were concerned, was not suitable for electronic reproduction. Apparently this refers to R 49(2) EPC. This provision stipulates that the documents making up the application shall be presented so as to allow electronic and direct reproduction. The form used for the communication and the formal decision that is based on it leave open why the RS is of the opinion that Figs. 1 and 2 have been presented in a manner that does not allow electronic and direct reproduction. To begin with, the fact that the figures have been incorporated into the electronic file of the EPO and that an obvious difference with respect to the filed version cannot be ascertained militates against this view. Deficiencies which could, for instance, prevent an unambiguous scanning result have not been concretely identified by the RS. It is of course commendable and important that the RS strive towards eliminating ambiguities of the disclosure in the version that is to be published by insisting upon the filing of drawings in suitable form, within the framework that R 46 and R 49, paragraphs 1 to 9 and 12, EPC assign to it (moreover taking into account administrative rules such as the Guidelines A-X). A possible course of action is to repeat the scan procedure in order to exclude technical errors of the EPO and, if this is unsuccessful, to request drawings in a form which improves the recognisability of the original details, the objective being to improve the technical procedure and not the content of the application. The question as to what information can be gathered from the drawings is not part of the formal examination. Rather, the applicant, by selecting and drafting (Fassung) of the application documents, determines the extent of the disclosure. The informative value (Aussagekraft) of the filed drawings therefore is part of the field of responsibility of the applicant. There cannot be an examination beyond the questions foreseen for the RS in R 46 and R 49, paragraphs 1 to 9 and 12, EPC. In particular, improved drawings may not lead to disclosures that are not comprised in the original version and the applicant may not be obliged to renounce a disclosure that he believes to be possible only in this way, by imposing an amendment of the drawings. As far as amendments in the examination proceedings are concerned, the general rules also apply to drawings. [2] The Board then comes to the conclusion that the RS has committed a substantial procedural violation (insufficient reasoning). Nevertheless, reimbursement of the appeal fee is not ordered because the applicant had not filed a response to the RS but had pointed out the apparent contradiction between the allegation of the RS (that the figures were unsuitable for reproduction) and the fact that the figures were reproduced only in its statement of grounds for appeal. To read the whole decision (in German), click here.
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T 869/06 - Business Trips May Justify Postponement of Oral Proceedings
T 869/06 - Business Trips May Justify Postponement of Oral Proceedings 6 Okt 2009
According to A 15(2) of the Rules of Procedure of the Boards of Appeal, a change of date for oral proceedings (OPs) “may exceptionally be allowed in the Board’s discretion”. Examples of circumstances that may be taken into account when exercising this discretion are given in the Notice of the Vice-President of DG3 dated 16 July 2007 concerning OPs before the Boards of Appeal. The board accepts on the basis of the representative’s statement and the filed supporting evidence that he had arranged and booked the business trip on the date set for OPs before the notification of the summons and that a business trip arranged in advance of the notification of the summons is a serious substantive reason to request the change of the date for OPs. However, the request does not in fact correspond to any of the circumstances given in the Vice-President’s Notice as the present representative could have been substituted by another representative of the same firm. The board notes that, in accordance with established case law (see e.g. T 1102/03 and T 1053/06), when deciding on a request for postponement of OPs, the discretion should be exercised considering the procedural economy, an optimised use of resources and capacities and the interest of the public. In the board’s view, in such a case as this only an alternative date within a period of about two months from the date of the request is justifiable in view of the balance of interests of the parties and the public. The period of about two months arises from the fact that, except for when the parties consent, new summons have to be issued at least two months in advance of a hearing, so that dates within the two-month period from the date of the request could not be used for other cases. [2] Strange enough, the Board notes that the requirements of a postponement are not fulfilled (in particular because the attorney could have been replaced by a colleague from his firm) but then agrees to postpone. It is interesting to compare this with the findings of T 1080/99 [2.4] : “Valid grounds for a postponement concern an inability to attend OPs due to personal circumstances, such as serious illness, marriage or a death in the family, as well as holidays which have already been firmly booked, as well as an inability to take part in OPs because of a summons to other legal hearings notified to the party before the summons by the Board and also the performance of obligatory civic duties. All these reasons arise due to circumstances beyond the control of the party. A series of business engagements is not a valid ground, nor is excessive work pressure.” One could have argued that a business trip is a series of business engagements, but in the end it would be unfair to accept to postpone OPs because of firmly booked holidays but to refuse to postpone in case of a firmly booked business trip. I should add that this decision also has an interesting statement on inventive step and the benefit of doubt : The appellant argued that, although it admitted that D2 implicitly disclosed the use of advertising selection data, none of the documents on file disclosed that advertising selection data may be downloaded. In the benefit of doubt it should be assumed that it was not obvious to download advertising selection data. The board is not convinced by this argument since the established case law of the boards of appeal does not refer to the benefit of doubt with respect to the assessment of inventive step. The present board notes that when assessing inventive step it has to be evaluated whether the skilled person would arrive to the claimed solution starting from the explicit and implicit disclosure of the prior art documents making use of the general common knowledge. [3.2] To read the whole decision, click here.
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J 6/08 - Amazing Grace
J 6/08 - Amazing Grace 5 Okt 2009 One of the best French experts on EPC matters smilingly told us students: “When you’re lost, file an appeal. If you do not know what could possibly save you, the Boards might know !” The present decision illustrates this sentence of wisdom. What is interesting here is not so much the particularities of the legal situation concerning missing drawings – as it has changed under the EPC 2000 – but the way the Board handles things. The applicant had filed its application without the drawings. It filed the missing drawings one week later. When receiving an invitation by the EPO to request a new filing date, the applicant did not react – as it should have under the EPC 1973. Here is a timeline resuming the essential moments of the proceedings (click to enlarge).
[…] The forms used for the notifications of loss of rights (as here the notification dated 13/6/05) contain both a reference to a request for a decision under R 69(2) EPC 1973 and a reference to re-establishment. However, these remedies have very different and to some extent, contradictory requirements. A request under R 69(2) can only succeed if the notification of loss of rights has been wrongfully sent, e.g. when the applicant has carried out the allegedly omitted action. If the applicant has not done so, only a request for re-establishment can be successful. It follows that an interpretation of the meaning of the response of the applicant to a notification of loss of rights may be needed in order to establish whether the request is to be understood as a request for a decision under R 69(2) or as a request for re-establishment. [6.2] In the present case, a request for a decision under R 69(2) would have been reasonable and appropriate if the applicant had in fact made a request for a new date of filing and if the EPO for whatever reason had found this request not to have been made. No such request has been made before the notification dated 13/6/05. However, a request for re-establishment, to which there is also a reference under the heading “information on legal remedies” (Rechtsmittelbelehrung), would be an appropriate legal remedy if the applicant – as here – had not made a request for a new date of filing but completed this omitted act within the time limit under A 122(2), first sentence. This is what the applicant has done in its letter dated 20/6/05. […] The applicant has confirmed in the oral proceedings that its letter dated 20/6/05 also intended to request re-establishment. [6.3] The appellant has also given reasons which determined the erroneous missing of the time limit. […] The appellant refers to the proceedings concerning another EP application where it proceeded in the very same way. The EPO had fixed the date of filing to the later date of its own motion although it had also sent a communication concerning late filed drawings. [6.4] When looking for an interpretation of this request oriented towards the objective intention and taking into account the procedural situation, the Office could also have interpreted the letter dated 20/6/05, which not only completed the omitted act but also gave reasons for missing the time limit, as a request for re-establishment into the time limit under R 43(1) EPC 1973 instead of a request for a decision under R 69(2) EPC 1973. And not only could it have done so, but it would have had to do so. The request should at least have triggered the Office to inquire what the real intention of the appellant was. [6.5] […] According to A 122(3), second sentence, EPC 1973, a request for re-establishment shall not be deemed to be filed until after the fee for re-establishment of rights has been paid. As the request for re-establishment is only admissible within the year immediately following the expiry of the unobserved time limit, the payment of the fee also has to be done within this time limit. [9] 3341 | 3398
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J 6/08 - Amazing Grace
The appellant has paid the fee for re-establishment by handing over a debit order during the oral proceedings on 10/2/09 after having been informed that the Board was inclined to interpret its letter to be a request for reestablishment. […] Therefore, the payment of the fee for re-establishment has taken place more than three and a half years after the expiration of the time limit under A 122(2), third sentence, EPC 1973. A 122(3), second sentence, EPC 1973, this would entail the fiction of the request being deemed not to have been made. [9.1] According to the case law of the Boards of appeal, the legal fiction of A 122(3), second sentence, is an automatic and necessary consequence of the non payment of the fee for late payment of the fee for re-establishment, without there being any discretion for the Board or any possibility to take into account reasons for the belated payment. [9.2] However, the Board, taking into account the particular circumstances of the case and considering the sense and purpose of the one-year time limit under A 122(2), third sentence, considers that the fact that only the fee for reestablishment has not been paid within this time limit is not legally sufficient to refuse re-establishment. The Office would have had to made inquiries concerning the real intention of the appellant behind its letter dated 20/6/05. By not doing so, it has violated its duty of clarification (Aufklärungspflicht). [10] The Board then discusses decisions J 15/92 (where re-establishment was granted on the basis of the principle of good faith), J 34/92, J 6/90, and J 6/98 (where re-establishment was refused on the basis of legal security). As to the latter decisions, the Board adds : The said decisions concern cases where the applicant did not manifest any intention whatsoever to overcome the loss of rights or to pursue the application, within the one-year time limit. In such situations the Boards have given priority to the legal security of third parties. However, the present situation is not comparable, so that reestablishment is not excluded. [11] Considering the particular circumstances, i.e. the close temporal connection of the application under consideration and the proceedings concerning [a parallel] application [by the same applicant], the facts of the procedural situation being oriented in the same way (gleichgelagert), and taking into consideration the procedural errors which the EPO made in this parallel application [NB : the EPO had rectified the date of filing of its own motion, in violation of R 43 EPC 1973], one may consider that the appellant has made an excusable legal error concerning the necessity to make a separate request for re-dating the application. [17] The Board thus grants re-establishment and remits the case to the Examining Division. To sum up, the Board has interpreted a letter of the applicant in which it required the Receiving Section to set aside a finding under R 69(1) as an implicit request for re-establishment. Moreover, it has accepted a payment of the corresponding fee more than three years after the expiration of the time limit, the payment having been made after the Board informed the appellant of its interpretation of the request. I
cannot
help
but
find
such
overwhelming
judicial
benevolence
...
amazing.
Seriously, one sometimes wonders whether the Boards remember that third parties and the public in general also have legitimate expectations. To read the whole decision (in German), click here.
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Seasons in the Life of DG3
Seasons in the Life of DG3 3 Okt 2009 A week ago, I have mentioned the findings of a colleague who had a look at the dates of 2200+ decisions of the Boards of Appeal. Today’s weekend special concerns another aspect of these dates : what is the seasonality of the decisions ? Here is the answer:
I have to say that I was quite surprised to see how evenly the decisions are distributed over the year. There is a significant reduction of the Board activity in August, but there is still quite some activity left. A member of the Boards explained that in several Nordic countries, people avoid working at the end of June and in July (when days are long) but are willing to come to Munich in August to attend oral proceedings. I am not sure whether the comparison is meaningful, but here is what is found for the fourth chamber of the Paris Court of appeals, which is most renowned French court dealing with IP litigation. The statistics are based on a lower number of decisions (about 320 patent cases, taken over the same period of time as for the Boards of appeal: 1979-2009) and, therefore, less precise.
It appears that the distribution is much less smooth than for the Boards of appeal of the EPO. One may also note that there is very little activity in July and August. This is above all due to the fact that there are six weeks of judicial holidays in France whereas the Boards of appeal do not have such holidays.
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T 857/06 - Assistants May Deliberate With the Boards
K’s Law – The ebook
T 857/06 - Assistants May Deliberate With the Boards 2 Okt 2009 According to A 19(1), 2nd sentence, of the Rules of Procedure of the Boards of Appeal (RPBA), only members of the board may participate in the deliberations; the chairman may, however, authorise other officers to attend. [3] The chairman’s discretion to authorise persons other than the members of the board to attend the deliberations is thus limited in an important manner: only officers of the EPO qualify as possible beneficiaries of the discretion. One of the reasons for this limitation appears to be that Article 20(1) of the Service Regulations for permanent employees of the EPO and Article 6(1) of the Conditions of employment for contract staff at the EPO impose a duty of confidentiality on officers of the EPO. They have to exercise the greatest discretion with regard to all facts and information coming to their knowledge in the course of or in connection with the performance of their duties, and they may not in any manner whatsoever use or disclose to any unauthorised person any document or information not already made public. In view of this general duty of officers of the EPO, the limitation of the chairman’s discretion to allow persons other than the members of the board to attend the deliberations guarantees compliance with the principle that deliberations are to be secret (A 19(1), 3rd sentence, RPBA). [3.1] Since the assistant to the board is an officer of the EPO, the wording of A 19(1), 2nd sentence, RPBA ostensibly provides an adequate legal basis for allowing him or her to attend the deliberations. Nevertheless, it may be argued that, in view of the different terms used in A 19(1), second sentence, RBPA (“participate” and “attend”), a difference should be made between passive attendance of and active participation in the deliberations, and that the active participation of an assistant or of any person other than the members of the board should not be allowed. However, such an interpretation of A 19(1), 2nd sentence, RPBA is not compelling since the legislator may have used the term “attend” not in contradistinction to the term “participate”, but simply as a broader term encompassing it, thus giving the chairman the power to authorise the attending of EPO officers in different forms, i.e. not only as silent observers, but also as actively assisting the board during deliberations by asking questions and expressing thoughts. Since the secrecy of the deliberations prevents the parties or the public from knowing the course of the deliberations, a distinction between allowable passive attendance and unallowable active participation would appear to be rather questionable since it is not only necessary that justice is done but also that it is seen to be done (“doctrine of appearances”). Thus, if, for the sake of argument, it were procedurally improper to allow the active participation of any person other than the members of the board of appeal in the deliberations, this would also be a strong argument against allowing their passive attendance. [3.2] […] It emerges from the review [of positions taken in the jurisdiction of the Contracting States] that, notwithstanding a certain bandwidth of positions not uncommon in comparative legal analysis, the active involvement of assistants in preparing the ground for judicial decisions appears to be widely accepted. Furthermore, the rule that only the competent judges should be present during the deliberations is not generally adhered to without exceptions. In some jurisdictions (e.g. Germany), statutory provisions even explicitly allow the attendance of judicial assistants. [4.6] The primary objective of a court should be to produce the best and most informed decisions. If, in order to reach this objective, the court considers it helpful to allow the attendance of an assistant in the court deliberations, it is appropriate to do so, within the limits of the relevant statutory provisions applicable in its jurisdiction. Notwithstanding the close collaboration of a board’s assistant with the members of the board, there is no delegation of responsibility in respect of genuine judicial activity. With or without the attendance of an assistant, the board members always retain the decision-making prerogative expressed in the act of voting, and there can be no reasonable doubt about who is in charge. [5] The board concludes that discretion under A 19(1), 2nd sentence, RPBA is properly exercised if the board’s assistant is allowed to attend and to take part in the deliberations.[6] Certainly not a must-know decision but thoroughly reasoned (bearing Mrs. Kinkeldey’s signature). I find the outcome surprising as I would have come to the opposite conclusion by taking Article 19(1) RPBA at what I
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T 857/06 - Assistants May Deliberate With the Boards
K’s Law – The ebook
believe to be its face value. Anyway, it is interesting to know that there may be more people deliberating on your case than you would have expected. To read the whole decision, click here.
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T 463/06 - A Board May Oblige the OD to Consider a Late-filed Ground It Had Not Admitted
T 463/06 - A Board May Oblige the OD to Consider a Late-filed Ground It Had Not Admitted 1 Okt 2009 […] It was within the discretionary power of the opposition division (OD) to decide whether or not to admit A 83 into the opposition procedure. The OD did not admit insufficiency of disclosure as a late-filed ground for opposition because it considered that it was not prima facie relevant. The board has the power to examine the correctness of the conclusion not to admit said ground for opposition. G 10/91 states in point 2 of the opinion: “In principle, the OD shall examine only such grounds for opposition which have been properly submitted and substantiated in accordance with A 99(1) in conjunction with R 55(c). Exceptionally, the OD may in application of A 114(1) consider other grounds for opposition which, prima facie, in whole or in part would seem to prejudice the maintenance of the European patent." In the present case the opponent first raised the objection re lack of sufficiency of disclosure as a response to the patentee’s observations. This late-filing was justified as a direct response to the patentee’s observations and additional technical data [concerning] a contraceptive patch for which the arguments relating to the functions linked to a high and continuous drug flux through the skin played suddenly an essential role for the maintenance of the patent. The OD considered at the oral proceedings (OPs) that the arguments of lack of sufficiency were not “prima facie” relevant for the proceedings. However, in view of the independent claims’ wording (i.e. owing to the presence of functional features in those claims), and in consideration of the arguments developed by the parties in writing during the opposition proceedings, it was essential to investigate whether the conditions set out in A 83 were met, before A 56 could properly be assessed. Therefore, the OD should have considered the discussion re sufficiency of disclosure to be “prima facie” relevant. Since the review of the first-instance decision as to its merits is one of the main duties of the board, the discussion about A 83 forms part of the framework of the present appeal. Moreover, for the reasons expressed above, A 83 is not a fresh ground for opposition introduced for the first time in the appeal procedure. In fact, A 83 was in the opposition proceedings and was an essential part thereof. Moreover, the opponent did not withdraw its objections re A 83 at any time during the opposition written proceedings or at the OPs before the OD. Furthermore, in the appeal proceedings the respondent developed its arguments in full in its reply to the grounds of appeal. Correspondingly, there is a fundamentally different situation from that depicted in T 520/01, where the ground for opposition (insufficiency) was not maintained in the opposition OPs by the only party which had relied on the ground and the OD did not deal with the ground in its decision. As regards the appellant’s request for referral, the question addresses whether or not a board of appeal has the discretionary power to remit a case to the first instance for discussion of a late-filed ground of opposition. The board is convinced that it has the power to remit a case ex officio for further prosecution (A 111(1)) if it considers it appropriate for well-founded reasons. Apart from that, the board is not aware of any contradictory case law in this respect and hence does not consider that a referral is required in order to ensure uniform application of the law. [1.4] This is similar to T 986/93 where the Board found that it was not barred from considering a belatedly submitted ground of opposition which had been disregarded by the OD pursuant to A 114(2) if the Board was of the opinion that the OD exercised its discretion in this respect wrongly. Here the Board goes even farther by remitting the case so as to oblige the OD to consider the ground. To read the whole decision, click here.
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R 7/08 - The Enlarged Board Won’t Soliloquize
K’s Law – The ebook
R 7/08 - The Enlarged Board Won’t Soliloquize 30 Sep 2009 NB : As you might know, "R" decisions are decisions on petitions for review by the Enlarged Board of Appeal (EBA) under A 112a EPC. The contested decision (T 1375/06) was based on aspects of insufficiency of disclosure which were discussed for the first time during the oral proceedings. The Board refused the request to admit into the proceedings two documents allegedly establishing the general knowledge of the skilled person. According to the petitioner (proprietor), by doing so, the Board did not decide on a request relevant for the decision under R 104(b) and furthermore its decision was based on a fundamental procedural violation under A 113, as these documents were disregarded. The petitioner argued that if the Board had taken these documents into consideration it would have immediately realised the scope of the general knowledge of the skilled person and that the description disclosed the invention sufficiently within the meaning of A 83. […] Since the impact of R 106 was a question of fundamental importance within the meaning of A 112(1), the petitioner requests the Board to refer the following question to the EBA “For the application of the provisions concerning the admissibility under R 109(2)a, is it necessary to raise the procedural violation during the oral proceedings or to raise an objection against a ground for revocation which could constitute a substantial procedural violation if it was accepted ?” [VI] The request to refer a question to the EBA can only mean a referral pursuant to A 112(1)(a). However, the present Board is not a “Board of Appeal” within the meaning of this provision (see A 21 EPC) and thus the request fails. [4] In other words, the EBA, when deciding on a petition for review under A 112a, does not accept referrals to the EBA under A 112. The EBA won't refer a question to itself. To read the whole decision, click here.
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T 534/07 - Gladiators May Change Sides
T 534/07 - Gladiators May Change Sides 29 Sep 2009 Appellant III alleged the existence of a conflict of interest in the person of the representative having formerly represented appellant III (opponent 06) and formally still representing opponent 03 and now representing appellant I, the patent proprietor. The board notes first of all that even though the representative has not formally withdrawn from representation as regards opponent 03, he has not acted for opponent 03 in the present appeal proceedings. Opponent 03 is only a party as of right and has not taken position in the appeal proceedings, i.e. after having acquired the patent proprietor, which appears perfectly normal in the circumstances. [6] Appellant III did not indicate on which legal basis the board could be entitled to accede to its request and exclude the representatives of the office of C&R from further representing any of the parties, in particular appellant I, the patent proprietor, and the board also sees none. [7] The existence of a conflict of interest, if any, concerns the relation between the representative and his client and may, depending on the circumstances of the case, entail disciplinary measures being taken against the representative under the Regulation on discipline. This would not be a matter for the board. [8] By contrast, the validity of procedural acts undertaken by the representative for his client is not affected by the existence of a conflict of interest. Nor is there any legal basis for excluding a professional representative whose name appears on the list of professional representatives from representing a party in proceedings before the EPO (see also T 1009/97 [2 ff.]). On the contrary, A 134(5) EPC stipulates that persons whose names appear on the list of professional representatives shall be entitled to act in all proceedings established by the EPC. So are the representatives of the office of C&R. [9] To read the whole decision, click here.
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T 1870/07 - (H)IPER-Activity and the Risk of Slapdashiness
T 1870/07 - (H)IPER-Activity and the Risk of Slapdashiness 28 Sep 2009 In the present case, an International Preliminary Examination Report (IPER) was sent, a communication of the examining division (ED) followed, and then the decision was taken. The single communication from the ED pursuant to A 96(2) EPC 1973 merely signalled agreement with the IPER, indicating lack of novelty with respect to D1, and further cited D2 and D3, merely referring to passages thereof cited in the European Search Report (ESR) without further explanation or amplification. No further objections were raised in that communication. [3.3] The Board sees no objection to citing an IPER from an International Preliminary Examining Authority (IPEA) other than the EPO (in the present case the USPTO), provided that it constitutes a reasoned statement [i.e. a statement setting out which facts are considered to be established, on which basis, which legal provisions are applied, and the logical process according to which the facts are considered to fulfil the requirement of the applied provision]. The requirement that a communication should be sent as often as necessary does not mean that once a communication fulfils the criteria cited above it is necessary to give the applicant another opportunity to comment on the same reason. However, in the present case the IPER fails to meet the above cited requirements of a reasoned statement. In the case of a novelty objection this will require the analysis of the claims in order to establish their meaning, the analysis of one or more prior art documents and the explanation of the logical process according to which the content of the prior art is considered to disclose the claimed subjectmatter in a way that leads to the application of the consequences of the provisions on novelty. The IPER does little more than identify a document and cite four passages from it, which are said to render all the subject-matter of the claims lacking in novelty without explaining the logical chain leading to this conclusion. Even by careful analysis on the part of the reader an argument to be answered cannot be constructed because, from the brief passages of D1 cited, it is apparent that D1 does not, in fact, disclose the claimed subject-matter. [3.4] Since the IPER does not fulfil the requirements of a reasoned communication, it behoves the EPO to perform its own analysis of the prior art and present the legal and factual reasons as defined above, and give reasons why there are objections to the grant of a patent, instead of relying on the IPER. In the communication of the ED, there is no logical chain of reasoning which would have permitted the appellant to understand and deal with the novelty objection, either by amendment or counterargument. A 113(1) EPC 1973 is, therefore, not satisfied. Thus, a substantial procedural violation has occurred. [3.5] To read the whole decision, click here. This decision has also been discussed here (in French).
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Behold the Day of Judgement
Behold the Day of Judgement 26 Sep 2009 A colleague recently analysed a bunch of 2200+ decisions of the Boards of Appeal (including the Enlarged Board of Appeal) as to their dates. Here is what he found with respect to the days of the week on which the Boards take their decisions. In almost all cases these dates correspond to the dates of oral proceedings (OPs) before the respective Boards.
Normally the OPs of each Board are held twice a week, i.e. on Tuesday and on Thursday, which explains the two ‘peaks’. On the day before, the members of the Boards often finish their preparation for the OPs. If the OPs were held on Mondays, the final preparation would have to take place on Sunday. Fridays have the drawback that the OPs have to come to an end in the evening. As a consequence, there have been OPs on Fridays ending at 8 p.m. (which is an almost unbearable thought for EPO staff). As far as Saturdays and Sundays are concerned, no decisions are taken on these days. A Board member explained that he knew only one exception to weekend rest : the Enlarged Board sometimes deliberates on Saturdays. You will have noted that nevertheless 0.3 and 0.2 per cent of the decisions, respectively, were found to have been taken on Saturdays and Sundays. In fact, these are cases where there must be an error in the date.
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T 990/06 - The Enigma of the Missing Lawyer
T 990/06 - The Enigma of the Missing Lawyer 25 Sep 2009 A 19(2) EPC contains clear instructions as to how an Opposition Division (OD) has to be composed. As a consequence, the parties know who deals with and decides on their case in oral proceedings (OPs) so that the fulfilment of the requirements of A 19(2) as well as the impartiality of the members of the panel according to G 5/91 can be checked. For this reason, it is mandatory that the composition of the OD be clear and verifiable at each essential moment during the opposition divisions. Moreover, it is mandatory that the procedure of enlarging the OD by adding a legally qualified member under A 19(2) be verifiable. The same holds true for the withdrawal of such a legally qualified member when there is no more reason for his/her presence. [2.1] In the present case, there are contradictions between the documents that have been sent to the parties and internal form 2040, which is available by file inspection. The internal form 2040 for the preparation of OPs was signed by three technically qualified members. The summons to OPs under R 71(1) was issued in the name of the three examiners, completed by the name of a legally qualified member. The OPs took place before an OD consisting of three members. The interlocutory decision was in the name of three technically qualified members and the legally qualified member. Therefore, the Board cannot check whether the decision announced in the OPs was taken by a lawfully composed OD and whether the written decision was issued by the same panel. [2.3] Moreover, the file does not contain any formal indication that the OD has been enlarged according to A 19(2), nor any hint whether and how the OD was reduced back to three legally qualified members. If the OD was indeed enlarged by addition of a legally qualified member, the file would have to contain a decision to this effect, signed by the three members of the OD. If it was afterwards reduced, the file would also have to contain a decision to this effect, signed by the four members of the OD. [2.4] The lawful composition of the OD is of foremost importance for the opposition proceedings. If there is any doubt concerning its lawful composition, then the lawfulness of the decision is also doubtful. The Board therefore comes to the conclusion that a serious procedural error concerning the composition of the OD cannot be excluded. [2.5] The case is remitted to the first instance so that the proceedings, including the decision, can be carried out by a lawfully composed OD. [4] To read the whole decision (in German), click here.
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T 223/07 - How LSD Can Boost Inventiveness
T 223/07 - How LSD Can Boost Inventiveness 24 Sep 2009 […] The evaluation of the softening performance in the presence and absence of anionic carry over has been tested in the patent in suit by an expert panel of 4 people which followed a specific test protocol. Softness was assessed on an 8-point scale, the lowest numbers indicating better softening results, the softening scores having been calculated using an “Analysis of Variance” technique. The numerical differences between the softness scores of compositions according to claim 1 and the comparisons amount to at most 1.5 in table 2 and are less than 1 in tables 6 and 7. Moreover, the Board remarks that the specific technique of analysis used has not been described in detail in the patent in suit and the softness scores reported in the tables do not contain an indication of the least significant difference (LSD) for each reported value. Even though the indication of the LSD is certainly not required by the EPC and such an indication would be indeed superfluous under certain circumstances, for example in the case of a large numerical difference between two scores, the Board finds that in the case of comparative tests reporting technical values which are calculated by means of an analysis of variance, the indication of the LSD for each reported value is essential for the evaluation of the reported values in a case, like the present one, wherein the numerical differences between the values to be compared cannot be considered to be large. The Board remarks, in fact, that the experimental report submitted with the statement of the grounds of appeal, wherein the softness scores had been calculated also by an analysis of variance as in the patent in suit, reports LSD values varying considerably from 1.18 to 1.46. […] Therefore, in the Board’s judgement, in the absence of the indication of the LSD for each reported value it is not possible to draw from the tests reported in tables 2, 6 and 7 any reasonable conclusion as to the superiority or not of any tested composition. […] The alleged technical effect has to be disregarded in the evaluation of inventive step. [3.3] Unsurprisingly, the Board then formulates a less ambitious problem (here, the provision of an alternative softening composition) and concludes on lack of inventive step. To read the whole decision, click here.
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T 355/07 - Dura Lex Sed Lex
T 355/07 - Dura Lex Sed Lex 23 Sep 2009
[...] The patent validly claims the priority date of 27 November 1998. Document D2 is a German utility model having 26 November 1998 as its date of entry in the register of utility models of the German Patent and Trademark Office (DPMA), i.e. the day before the date of filing of the EP application. The date of entry corresponds to the date on which a list (typically containing several hundred entries and indicating the IPC class and the DPMA file number of German utility models for each entry) is laid open for inspection at the premises of the DPMA. A member of the public is allowed to inspect any file from that list as of said date. [NB : The patentee argued that it was practically impossible for a member of the public to get knowledge of the content of document D2 on said day, because (i) the list contained several hundred entries, (ii) the list merely indicated the IPC class and the DPMA file number of German utility models, and (iii) the files itself could only be inspected upon request at another branch office of the DPMA at Cincinattistr. 64 in Munich. Moreover, it was not proved that a member of the public actually inspected the file corresponding to document D2 on that very day. According to the patentee, D2 was not therefore state of the art for the patent in suit.] The theoretical possibility of having access on 26 November 1998 to the information contained in document D2 renders it available to the public as of said date, it is not relevant whether on that date a member of the public actually inspected the file. Consequently, document D2 is prior art within the meaning of A 54(2). [2] To
read
the
whole
decision,
click
here.
This is one of those cases where the application of the legal fiction (if one may properly so say) underlying A 54(2) may appear harsh. Although very unlikely, there was a theoretical possibility that a member of the public might have had access to the document. And that is all that is needed to make the document “available” to the public. Please note the dates involved. I am always amazed when reality looks very much like paper D. 8-) NB : I just discovered that this decision has also been discussed here.
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T 5/06 - Inventive step - Insufficiency : 0-1
T 5/06 - Inventive step - Insufficiency : 0-1 22 Sep 2009 The Examining Division (ED) refused the application on the grounds of lack of inventive step based on the fact that “the underlying problem is not solved over the whole scope of the claimed subject matter” because it encompassed non-working embodiments. [3] In that respect, the board observes that A 56 requires that “an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art”. Thus, when it comes to inventive step, the ED remains obliged by A 56 to issue a decision presenting all the legal and factual reasons for refusing the application having regard to the prior art and to the assessment of obviousness vis-à-vis the said prior art. In the present case, the ED’s decision is totally silent on these issues, so that the rejection under A 56 is not reasoned, contrary to the requirements of R 111(2). [4] For the further prosecution of the application attention should be paid to G 1/03 [2.5] which stipulates that “if a claim comprises non-working embodiments, this may have different consequences, depending on the circumstances. [...] If an effect is expressed in a claim, there is lack of sufficient disclosure. Otherwise, i.e. if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step.” In the present case, as the effect is part of the claim, it appears from the above that only an objection for insufficiency can be raised under certain circumstances; these circumstances being that the application as filed would not contain sufficient information on the relevant criteria for finding appropriate alternatives over the claimed range with reasonable effort. [7] This decision is also discussed here. To read the whole decision, click here.
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T 69/07 - On the Courteousness of epi-Members
T 69/07 - On the Courteousness of epiMembers 21 Sep 2009 A summons to oral proceedings (OPs) was issued by the Board on 7 November 2008, not long after the request for OPs by the respondent. [1.1] The respondent did not appear at the OPs at the appointed time. After waiting some time to allow for a small delay in the arrival of the representative of the respondent the registrar of the Board telephoned this representative. The representative indicated in the telephone conversation that it had been decided the day before the OPs that the respondent should not be represented at the OPs. [1.2] The Board notes that in accordance with Article 6 of the code of conduct of members of the EPI, of which the representative is obligatorily a member, the members are required to act courteously in their dealings with the EPO. [1.3] The representative of the respondent had sufficient time to inform the Board of its intended non-appearance at the OPs, i.e. by informing the Board by telephone immediately after the decision not to attend was taken. This would have avoided that the other party and the Board first of all courteously waited for the representative of the respondent in case he had unintentionally been delayed, and then that the registrar of the Board had to carry out enquiries to establish if it was intended that the representative would attend the OPs. [1.4] The facts of the case dealt with in decision T 954/93 were similar to those of the present case in that a party did not appear at the OPs without informing the Board beforehand, causing telephone calls and a delay in the start of the OPs. In that case the deciding board considered that the actions of the representative were “reprehensible”. The present Board agrees with that decision and considers that the views of that Board also apply in the present case. [1.5] To read the whole decision, click here. As in the well-known decision T 930/92, the Board could have ordered apportionment of costs under A 104, but apparently it did not do so, perhaps simply because the patentee/appellant did not request it.
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J 15/08 - Some Like It Hot
J 15/08 - Some Like It Hot 20 Sep 2009 This decision on a request for reestablishment is interesting above all because of the unusual auxiliary requests: The appellant requests: (1) Reestablishment and immediate examination of the application; (2) Replacement of claim 1 by claim 1C (3) Reimbursement of all costs that have arisen to the appellant (Appeal fee, annuities as from the third year and compensation amounts as well as training lessons in technical mechanics and EP patent rules) by the first examiner; (4) Replacement of the first examiner by another examiner; [XII] (5) Summary dismissal of the first examiner and compensation for neglect of due care and supervision; (6) Verification of all examination reports established by the first examiner during his 19 years of activity, with respect to abuse and mistakes; (7) Verification whether a new application with similar features has been filed in any patent office in Europe after the filing date of the application of the appellant. [XV] The request for reestablishment was not successful, nor were the other requests. To our best knowledge, the first examiner was not fired. ;-) Sometimes inventors might be better off if they chose to be represented by a professional representative. To read the whole decision (in German), click here.
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T 700/05 - Post-grant Correction of an Erroneous Translation of a Japanese PCT
T 700/05 - Post-grant Correction of an Erroneous Translation of a Japanese PCT 19 Sep 2009 Taking into account that Euro-PCT applications are deemed by A 153(2) to be European applications and the principle that they thus must be treated as favourably as applications made in a Contracting State, a PCT application originally filed in Japanese must be treated in the same way as an application filed in the language of a Contracting State which language is not an official language of the EPC. A 14(2) EPC 1973 must thus be applied by analogy to allow also the translation into English of an original PCT application in Japanese to be brought into conformity with the original Japanese text of the application throughout the proceedings before the EPO, i.e. also including opposition and appeal proceedings. [4.1.1] In the present case, the original text of the application did not disclose “a light transmittance of at least 50%”, but in view of the certified English translation provided by the patent proprietors only “a linear light transmittance of at least 50%”. The opponents did not dispute that the original application had been mistranslated and that the expression “a light transmittance of at least 50%” in claim 1 and elsewhere should be replaced by “a linear light transmittance of at least 50%”, in line with the provisions of A 14(2) EPC 1973. The Board has no reason to take a different view. [4.2] A 70(1) EPC 2000 provides that the text of a European patent in the language of the proceedings shall be the authentic text in any proceedings before the EPO. A 70(2) EPC 2000 provides that if the European application has been filed in a language which is not an official language of the EPO that text shall be the application as filed within the meaning of the Convention. This means that a post-grant change to the granted text of a European patent amounts to an amendment of text of the patent as granted, even where, as in the present case, the change is justified as a correction necessary to bring the text into conformity with the originally filed Japanese language PCT application. [5] Specifically for this case, the correction in the claims and description of the granted text of the patent to read "linear light transmittance" is an amendment which under A 101(3) EPC 2000 needs to be checked for conformity with the requirements of the convention, and in particular for conformity with A 84 EPC 1973 (whose wording is unchanged in the EPC 2000) and A 123(2) and (3) EPC 2000. [5.1] To read the whole decision, click here. A 70(1)(2) EPC 2000 has a very unfortunate wording. In particular, the reference to “that text” in A 70(2) is somewhat unclear. Is “the text” of A 70(1) referred to ? The present decision takes this for granted. Things are less clear in the German version of A 70 where A 70(1) mentions no text but a “Wortlaut” (wording) whereas A 70(2) also refers to “that text” (dieser Text). This might be understood to indicate that the text referred to in A 70(2) is the text in the original language. For the sake of completeness, I should add that the French version is analogous to the English version (A 70(1) : Le texte … ; A 70(2) : … ce texte …) When the EPC 2000 was published, I contacted a member of the Legal Division in order to have this point clarified. Unfortunately, my question has remained without an answer. I expect the interpretation used in the present decision to become mainstream because both the English and the French version appear to favour it. The German version might be due to careless translation.
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T 387/05 - An ‘Exotic’ Feature is Considered Non Distinguishing
K’s Law – The e
T 387/05 - An ‘Exotic’ Feature is Considered Non Distinguishing 18 Sep 2009 The question arises whether the resistance that the blank mould opposes to high energy DUV radiation – which is expressed in claim 1 by the condition that the reduction of transmission under the specified test conditions is at most 0.1 % per cm of thickness – can be used to distinguish the claimed subject-matter from the prior art. The appellant has answered this question in the negative and submitted that this feature only states the technical problem. The patentee has asserted that this criterion corresponds to a quantitative statement on an essential material property that is suitable to distinguish the claimed blank mould from the prior art. He admitted that the test conditions specified in claim 1 differ from usual methods by a higher number of laser shots together with a lower energy density, but according to him, this difference is necessary in order to have reliable indications with respect to the long term behaviour of the blank mould. [4.7] The Board considers the explanations of the patentee to be plausible. However the question remains whether they are sufficient to distinguish the claimed blank mould from the prior art. Indeed the test conditions according to claim 1 (i.e. a number of laser shots of 1.1·10^9 and an energy density of 10 mJ/cm² at a wavelength of 248 nm and a laser shot frequency of 300 Hz …) differ so strongly from the usual conditions used in the prior art (D2 has a number of laser shots of 1.1·10^6 and an energy density of 400 mJ/cm² at a wavelength of 248 nm …) that no reasonable and meaningful comparison of the test results is possible. Therefore, it is not possible to establish whether the blank mould according to claim 1 has higher resistance to high energy DUV radiation – or a lower reduction of transmission, respectively – than the blank moulds of the prior art, and in particular the blank moulds of D2. The patentee, who in this case carries the burden of proof, has not produced any appropriate evidence. Therefore, the Board comes to the conclusion that in the present case the reduction of transmission cannot be considered as a distinguishing feature. [4.7.1] To read the whole decision (in German), click here.
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J 5/08 - Pending or Not Pending - That is the Question
K’s Law – The ebook
J 5/08 - Pending or Not Pending - That is the Question 17 Sep 2009 The decision deals with an appeal filed against the decision of the Receiving Section that a divisional would not be treated as such because the parent application was not pending any more. Here is a simplified (!) timeline summarizing the major events:
The Examining Division (ED) simultaneously issued (a) a decision pursuant to R 89 EPC 1973 and (b) an interlocutory revision decision pursuant to A 109(1) EPC 1973, both decisions relating to the decision to grant. [10] The question is then, what was the effect of these actions with respect to the issue of whether the (parent) application remained pending within the meaning of R 25(1) EPC 1973 ? As regards the meaning of “pending application” in R 25(1) EPC 1973, one interpretation is given in the Information from the EPO (OJ EPO 2002, 112). There it is stated as follows: “An application is pending up to (but not including) the date that the European Patent Bulletin mentions the grant of the European patent, or until the date that the application is refused, withdrawn or deemed withdrawn; if notice of appeal is filed against the decision to refuse, a divisional application may still be filed while appeal proceedings are under way (see Guidelines A-IV, 1.1.4)” However, this official information contains only the statement that the cited procedural situations determine the end of the pendency of a EP application but the statement does not state specific criteria which can be used to define the pendency/nonpendency of an application in other procedural situations, for example as in the present case where an appeal was filed against the decision to grant. [11] […] The Receiving Section stated that a decision to correct the decision to grant does not “re-open” the grant procedure and does not “re-open” the possibility to file a divisional application. However, in the present case this conclusion is only correct with regard to a decision to correct the grant decision pursuant to R 89, since such a decision does not involve a substantive amendment to the decision. It was not correct with regard to a revision decision under A 109, which has the effect that the appealed decision is set aside. [21] […] As such, a revision decision pursuant to A 109 opens up the possibility that the patentability of the claimed subject matter will be completely re-assessed, independently of whether or not the cancellation of the appealed decision is expressly ordered or the written reasons are restricted to a specific legal question. Such a decision cannot be limited to a single legal question or issue as e.g. the question whether or not a decision to grant can be corrected. This is the decisive difference from a decision under R 89, which does not affect the date and legal existence of the decision to be corrected. [23] In the present case, the revision decision under A 109 was restricted to the correction of the decision to grant. However, the lack of any exhaustive statement in respect of the patentability of the subject matter did not limit the appeal proceedings to the allowed correction, because the decision to grant was replaced by the revision decision on 12 June 2006 and the grant proceedings were not terminated before this date. The grant proceedings having been terminated by the revision decision on 12 June 2006 were still pending up to this date of the revision decision. [24] As the present divisional application was filed […] before the revision decision was taken by the ED in the parent application, the parent application was pending at the filing date of the divisional application. [25] This decision is well worth reading because it deals with an incredibly complicated situation resulting from an accumulation of errors.
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J 5/08 - Pending or Not Pending - That is the Question
K’s Law – The ebook
The decision also deals with what can be considered as a decision under R 89 EPC 1973 (R 140 EPC 2000) [in point 5 of the Reasons] and contains interesting obiter dicta on the "controversial opinions on the effect of a timely filed but inadmissible appeal" [points 13 to 18 of the Reasons]. To read the whole decision, click here.
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K’s Law – The e
T 1179/07 - A New purpose Cannot Impart Novelty to a Known Process
T 1179/07 - A New purpose Cannot Impart Novelty to a Known Process 16 Sep 2009 D1 discloses all the process features of claim 1. The only difference with respect to D1 is that the process of D1 has a different purpose. In D1 the urea is not added in order to reduce the aldehyde content but it serves to reduce a viscosity increase through ageing. Therefore, it remains to be examined whether the indication of the purpose in the claimed process can impart novelty with respect to D1. [2.1.1] The patentee considered this indication of purpose to be a functional technical feature within the meaning of G 2/88 and G 6/88, which had to be taken into consideration for the determination of novelty. [2.1.2] The headnote of G 6/88 is as follows : “ A claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under A 54(1) provided that such technical feature has not previously been made available to the public.” It follows that the relevant considerations of G 2/88 and G 6/88 aim at a claim that is directed to the use of a known compound for a hitherto unknown purpose. These decisions do not elaborate on claims for processes having a particular purpose (zweckgebundene Verfahrensansprüche). Although the ‘use of a given substance’ can be considered to be a process containing the step of using the substance, a use claim should not be in general equated to a process claim as A 64(2) is not as a rule applicable to a use claim. According to G 2/88 [5.1], A 64(2) is not as a rule directed to a patent whose claimed subject-matter is the use of a process to achieve an effect (this being the normal subject of a use claim), but rather to a European patent whose claimed technical subject-matter is a process of manufacture of a product. In the present case the claimed process is – notwithstanding the indication of the purpose – clearly directed towards the manufacture of a product. In this process a given nitrogenous compound is added to certain compounds, which reduces the C1-C2-aldehyde content. In other words, the process produces the end product by means of a process step applied to the initial product, which is different from the end product. If the Board applied the conclusions of G 2/88 and G 6/88 to the granted process claim, this would entail that the product of claim 1 were protected via A 64(2) although the product is known from D1 and is produced by the very process of D1. However, it cannot be the deeper purpose of A 64(2) to extend the protection provided under this article to a product obtained by a known process. In particular, the fact that process and use claims relate differently to A 64(2) does not leave any margin for extending the principles developed by the Enlarged Board of Appeal (EBA) in G 2/88 and G 6/88, concerning the use of a known compound for a hitherto unknown purpose, to process claims. The opinion that the criteria set up by the EBA in the cited decisions are valid only in the context of the use of a known compound for a hitherto unknown purpose and cannot be extended to process claims is also found in decisions T 682/04 [5.3.4-5], T 910/98 [2.2.2], and T 1049/99 [8.4.4-8.5]. [2.1.3] To read the whole decision (in German), click here.
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K’s Law – The ebook
Publish or Perish
Publish or Perish 15 Sep 2009 Those who want to stay up-to-date on EPC caselaw know that the EPO publishes more and more decisions. I wanted to quantify this impression and made a graphic comparison of the 2008 and 2009 publication figures. Here is the result :
On September 14, 2009, the EPO has already published 1354 decisions, which is more than during the whole year 2008 (1325 decisions). If this trend continues (and there is no obvious reasons why it should not), one may expect quite impressive figures for the whole year 2009.
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K’s Law – The e
T1029/06 - On the Patentability of Environmental Impact Estimations
T1029/06 - On the Patentability of Environmental Impact Estimations 15 Sep 2009 The application concerns aiding planning, development, design and estimation of an environmentally conscious product. In particular, a method of estimating the impact on the environment and the cost of developing multigeneration products that reuse and recycle objects from products of previous generations. [1] The majority of the steps (life cycle modelling, predicting, evaluating) are typical tools of operational research that normally have not been considered technical in the established jurisprudence, in particular if only information is processed for the purpose of management decisions with no clear technical application. In decision T 1147/05 [3.3] it was held that “the Board accepts that a reduction of the environmental impact may in certain circumstances constitute a technical effect. One example might be an invention concerning a less energyintensive process for the manufacture of a product. On the other hand, as a further example, if an invention is a proposal to abandon - rather than to improve - an energy-intensive process, there is no technical effect but, at most, a physical consequence. A technical effect should not depend solely on the intervention of the human mind. In the present case the invention is not a proposal for a technically superior process but a way of selecting, from a given set of improved processes, the most cost-effective ones. Whether or not the processes are actually implemented, i.e. whether there is any effect at all, even physical, is not part of the claim. This will be a later decision to be taken by a manager. Thus, the potential reductions in environmental impact that the invention serves to determine cannot be regarded as a technical effect.” [7] The Board considers that these statements apply equally to the environmental impact estimation method in the present case. The Board does not consider that the remaining feature of the “memory unit” implies any computer implementation that would limit the claim to involve necessarily technical means (see e.g. T 388/04 [3]). [8] The appellant relies on T 208/84 (VICOM) and T 953/94. In VICOM, the distinction was drawn at point 5 between a mathematical method and a technical process. The former is carried out on numbers and the latter is carried out on a physical entity (which may be a material object but equally an image stored as an electric signal) by some technical means implementing the method and provides as its result a certain change in that entity. In T 953/94 [6], the Board found allowable a method of controlling a “physical” process using a mathematical model, although a reference to an unspecified “physical process” might, according to more recent jurisprudence, be rejected as a “meta-specification” (see e.g. T 1227/05 [3.1.1]). However, the present case differs from these cases in that there is apparently no resultant change to or control over any physical entity or process, but merely a processing of information. The Board in T 1147/05 [3.4] reached the same conclusion in respect of VICOM for the environmental impact information system. [9] Summarising, the Board judges that claim 1 of the main request has no overall technical character, but is merely a mixture of subject-matter excluded as such under A 52(2) and (3) EPC, specifically mathematical methods, methods for performing mental acts or doing business and presentations of information. Accordingly, the subject-matter of the claim is not an invention in the sense of A 52(1) EPC. [11] To read the whole decision : T 1029/06
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K’s Law – The ebook
T 1030/06 - The Potential of the Skilled Person
T 1030/06 - The Potential of the Skilled Person 15 Sep 2009 [...] The appellant argued generally that although the skilled person would be able to understand the invention, he would not be able to develop further or create ideas. The Board can only agree with this statement up to a point. The skilled person is a person of ordinary skill in the art which means not only having access to the state of the art and common general knowledge in the field, but also the capability to perform routine work and experimentation. Thus, the skilled person can be expected to seek out solutions and make choices to try to solve design problems that crop up. This is particularly so where the problem is to come up with an implementation of an apparatus having certain required functions as in the present case. The implementation of the first part of the solution (here the provision of several processors) often leads to further design decisions that must be made (here the choice of encryption scheme and the identification of the source of data) in order to produce a working system. The skilled person cannot be expected to abandon the implementation half-way through in the form of a “black box” with undefined means for carrying out the required functions, but must attempt if possible to put such means into practice using knowledge available to him (see also T 623/97 [4.4]). These would literally be “further ideas” in the sense that they could be new in the given context, but they should be routine and thus not inventive. [20] To read the whole decision : T 1030/06
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K’s Law – The ebook
For Starters
For Starters 14 Sep 2009 This blog is intended to report on interesting recent EPC caselaw. There is an excellent blog in French dedicated to such caselaw, but also to news concerning the EPC as such and French patent law. If your command of French is sufficient, you should definitely have a look : just click here. My blog is somewhat less ambitious. It is strictly limited to EPC caselaw. My aim is to detect interesting passages in recent decisions. While I sometimes contribute to Laurent Teyssèdre's blog, most decisions that are cited here would not make it through Laurent's filter.
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K’s Law – The ebook
Index
Index Farewell................................................................................................................................................................... 3 T 434/12 – New Lines Of Attack ............................................................................................................................ 4 T 2165/10 – In The Archives .................................................................................................................................. 6 T 59/08 – More On Sufficiency .............................................................................................................................. 8 T 163/13 – Let’s Be Reasonable ........................................................................................................................... 11 T 1937/10 – Just A Question Of Strength ............................................................................................................. 12 T 2041/09 – Grain Sizes ........................................................................................................................................ 15 J 14/12 – Debit (Dis)order..................................................................................................................................... 17 T 816/09 – Untechnical Measurements ................................................................................................................. 19 T 1674/12 – Christmas With Nespresso ................................................................................................................ 21 J 17/12 – Entry Denied .......................................................................................................................................... 27 T 158/12 – No Switching ...................................................................................................................................... 34 T 2235/12 – Taken By Surprise ............................................................................................................................ 37 T 1939/11 – Liquidation........................................................................................................................................ 39 T 2532/11 – An Insufficient Link ......................................................................................................................... 40 T 1510/09 – Possible Origin ................................................................................................................................. 44 Changes Ahead ..................................................................................................................................................... 45 T 2091/11 – Considering The Context .................................................................................................................. 46 T 1451/10 – Combinations .................................................................................................................................... 48 Interpretational Spotlight: “Half Dried” ................................................................................................................ 50 T 1487/09 – Disruptive Forces .............................................................................................................................. 52 T 2134/12 – Just Keep It ....................................................................................................................................... 55 R 15/13 – An Angry Man...................................................................................................................................... 56 T 215/11 – Propagation Of Error .......................................................................................................................... 57 T 1404/10 - Equilibrium........................................................................................................................................ 59 T 1440/09 – Unaware ............................................................................................................................................ 60 T 239/11 – How To Deal With The Absence ... .................................................................................................... 61 R 6/12 – Make Yourself Heard ............................................................................................................................. 65 T 2075/11 – It’s The Economy, Stupid ................................................................................................................. 67 J 2/12 – When Wrong Means Missing .................................................................................................................. 68 J 6/13 – Favourable Prospects ............................................................................................................................... 72 T 677/11 – Filling In The Blanks .......................................................................................................................... 75 T 521/10 – A Problematic Incorporation .............................................................................................................. 79 T 1020/13 – One For All ....................................................................................................................................... 80 T 109/11 – Speed-Dating Is Dangerous ................................................................................................................ 81 T 109/11 – Just Words .......................................................................................................................................... 86 T 1915/09 – Not Too Fresh ................................................................................................................................... 88 T 1422/12 – Change Of Character ........................................................................................................................ 89 3366 | 3398
K’s Law – The ebook
Index
Take Five .............................................................................................................................................................. 91 T 1735/09 – Well-Rounded ................................................................................................................................... 92 T 2473/12 – Straitjacket Confirmed ...................................................................................................................... 93 T 2003/08 – Fading Memories .............................................................................................................................. 98 T 2003/08 – It’s A Substance .............................................................................................................................. 103 T 2063/12 – Clear In Itself .................................................................................................................................. 108 T 2557/12 – Not Quite Perverse.......................................................................................................................... 110 T 972/10 – Oops! I Paid It Again ........................................................................................................................ 112 T 2319/11 – Spirit Of 69 ..................................................................................................................................... 113 T 996/12 – Procedural Meltdown........................................................................................................................ 115 T 1297/11 – Mind Your Words ........................................................................................................................... 119 A Polleriori.......................................................................................................................................................... 120 T 754/09 – Another Brick In The Wall ............................................................................................................... 122 T 15/10 – Fishy ................................................................................................................................................... 123 T 2051/10 – No Mistake ..................................................................................................................................... 125 T 584/09 - A Waste Of Time? ............................................................................................................................. 126 T 2509/11 – It’s Up To The Director .................................................................................................................. 127 T 1735/08 – In Its Own Time .............................................................................................................................. 129 T 1518/11 – Too Late.......................................................................................................................................... 131 T 500/11 – You May Pick It ............................................................................................................................... 132 T 518/10 – Three In A Row ................................................................................................................................ 134 T 184/11 – Advertising It Is ................................................................................................................................ 137 T 184/11 – A Sleeping Beauty ............................................................................................................................ 140 T 2289/09 – Unclear Yet Relevant ...................................................................................................................... 142 T 1212/11 – How To Treat Unsolved Problems ................................................................................................. 144 T 704/11 – Issues Of Complexity ....................................................................................................................... 147 T 389/11 – Blessed Are The Pure ....................................................................................................................... 148 Publish Or Perish (ctd.) ....................................................................................................................................... 151 R 11/12 – What A Week! .................................................................................................................................... 152 T 2177/12 – You Got What You Wanted............................................................................................................ 153 T 1961/09 – A Silent Intervention....................................................................................................................... 157 T 852/09 – Mene Mene Tekel ............................................................................................................................. 163 T 116/12 – Dangerous Copy & Paste .................................................................................................................. 165 T 560/12 – Just A Drawing ................................................................................................................................. 167 T 1469/10 – A Matter Of Trust ........................................................................................................................... 170 T 480/11 – Not Just An Expert ........................................................................................................................... 171 T 1192/09 – What He Would Not Do ................................................................................................................. 172 R 1/13 – The Premise .......................................................................................................................................... 175 T 1981/12 – Possibly Unfair ............................................................................................................................... 181 T 726/10 – For Information Only ........................................................................................................................ 192 T 2303/10 – Only One Choice ............................................................................................................................ 195 R 4/13 – Afterthoughts ........................................................................................................................................ 197 T 1539/09 – Going Mental .................................................................................................................................. 200 3367 | 3398
K’s Law – The ebook
Index
T 1248/11 – Mixed-Up........................................................................................................................................ 202 R 17/13 – La Fleur Au Fusil ............................................................................................................................... 207 T 1012/09 – Daily Life ........................................................................................................................................ 209 T 50/12 – Please Mister Postman ........................................................................................................................ 212 R 2/13 – Terra Incognita ..................................................................................................................................... 215 T 1836/10 – You Can’t Exclude The Absent ...................................................................................................... 219 T 926/09 – Confusion ......................................................................................................................................... 221 T 926/12 – The Point Of No Return .................................................................................................................... 222 T 1427/10 – No Video ........................................................................................................................................ 223 T 1039/09 – Origen Disavowed .......................................................................................................................... 224 T 493/09 – No Change Intended ......................................................................................................................... 227 T 309/10 – Inside The Librarian’s Mind ............................................................................................................. 229 T 2018/08 – Keeping Off The Grass ................................................................................................................... 231 T 1351/10 – No Excuse ....................................................................................................................................... 233 T 1795/10 – Over-Formalistic ............................................................................................................................. 234 T 1340/10 – Last Minute ..................................................................................................................................... 236 T 1599/09 – Pump It Up...................................................................................................................................... 238 T 270/11 – Trademark Trouble Et Al .................................................................................................................. 240 T 734/12 – Speeding Up ..................................................................................................................................... 244 T 1670/07 – We Don’t Buy It ............................................................................................................................. 245 T 1395/09 – Clean/r Shaven ................................................................................................................................ 248 T 1119/09 – Mere Instructions ............................................................................................................................ 250 J 13/12 – It’s Time To Get Ahead ....................................................................................................................... 252 T 1979/11 – Exceptionally Broad ....................................................................................................................... 257 J 18/12 – Penniless .............................................................................................................................................. 258 T 208/11 – Just Pondering................................................................................................................................... 261 T 1331/12 – Another Slot Machine ..................................................................................................................... 263 T 1069/11 – A New Use...................................................................................................................................... 266 T 738/10 – A Missing Verb ................................................................................................................................ 269 T 1526/09 – Crystal Clear? ................................................................................................................................. 271 T 1026/10 – Decay .............................................................................................................................................. 274 T 428/09 – On Purpose ....................................................................................................................................... 277 T 2430/09 – Error Of Judgement ........................................................................................................................ 280 T 964/12 – Technical It Is ................................................................................................................................... 282 T 1955/09 – Indirectly......................................................................................................................................... 285 Interpretative Spotlight: “Certified” .................................................................................................................... 287 T 1932/09 – Speculation?.................................................................................................................................... 290 T 578/10 – Customary......................................................................................................................................... 292 T 862/10 – Look At Me ...................................................................................................................................... 294 T 2284/09 – Not A Repository ............................................................................................................................ 297 Summer Time ...................................................................................................................................................... 300 T 2165/08 – Risky Business ................................................................................................................................ 302 T 1814/11 – More On Synergy ........................................................................................................................... 305 3368 | 3398
K’s Law – The ebook
Index
J 20/12 – Withdrawn And Not Pending .............................................................................................................. 308 J 9/12 – When We Stay You Freeze ................................................................................................................... 314 T 1883/11 – Sentenced To Death ........................................................................................................................ 317 T 1343/09 – No Refund....................................................................................................................................... 319 T 2305/11 – Mind The Gap ................................................................................................................................. 320 T 1919/11 – Taxus Chinensis .............................................................................................................................. 324 T 414/12 – ¡No pasarán! ..................................................................................................................................... 328 T 2259/09 – Iconoclasm ...................................................................................................................................... 329 T 2573/11 – Limits Of The Three-Day-Rule ...................................................................................................... 331 T 83/05 – Broccoli Forever! ................................................................................................................................ 335 T 2102/12 – Unorthodox ..................................................................................................................................... 340 T 408/12 – Yes We Can ...................................................................................................................................... 342 T 612/09 – Range Roving ................................................................................................................................... 347 T 1142/09 – Fresh Indeed ................................................................................................................................... 350 T 22/09 – Resurrection ........................................................................................................................................ 352 T 2382/10 – The Substitute ................................................................................................................................. 356 T 1077/10 – Seamless ......................................................................................................................................... 358 T 977/09 – Excessive Speed ............................................................................................................................... 361 Looking Back On 2012 – Final Remarks ............................................................................................................ 363 T 433/11 – Cistus Et Al ....................................................................................................................................... 367 T 2149/11 – No Need To Repeat ........................................................................................................................ 370 J 4/13 – Late Payment Due To Premature Delivery ............................................................................................ 371 T 149/11 – Slavery .............................................................................................................................................. 374 T 744/11 – Three Minutes ................................................................................................................................... 377 T 613/10 – Gimme More..................................................................................................................................... 379 T 1439/09 – Disregarded Statements .................................................................................................................. 384 D 2/10 – Saved By The Bell ............................................................................................................................... 385 T 108/09 – De Novo............................................................................................................................................ 391 T 637/09 – No Reason To Doubt ........................................................................................................................ 393 T 1703/12 – Nothing Left ................................................................................................................................... 394 T 555/08 – Things Assistants Can’t Do .............................................................................................................. 396 T 1033/10 – Plenty Of Lost Occasions ............................................................................................................... 399 R 18/11 – Loss Of Control .................................................................................................................................. 401 J 16/11 – Indian Wrestling .................................................................................................................................. 403 J 28/10 – The Doorman ....................................................................................................................................... 406 J 10/11 – File In A Cupboard .............................................................................................................................. 409 R 15/12 – Error Of Logic .................................................................................................................................... 413 T 783/10 – Excellent ........................................................................................................................................... 414 T 1682/09 – A Prior Public Lease ....................................................................................................................... 418 T 2336/10 – Don’t Agonize, Organize ................................................................................................................ 421 R 15/11 – E Silentio Decreti ............................................................................................................................... 425 T 1407/08 – Only A Product ............................................................................................................................... 429 T 766/11 – Covered By The Clause 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Index
T 553/11 – Absurd .............................................................................................................................................. 433 Looking Back On 2012 (Part 2) .......................................................................................................................... 438 T 2126/08 – Less Likely ..................................................................................................................................... 444 T 1659/09 – Not Selected .................................................................................................................................... 446 T 535/10 – Do Not Cross Tracks ........................................................................................................................ 450 T 724/08 – Hard To Find – So What? ................................................................................................................. 453 T 2373/11 – All Too Literal ................................................................................................................................ 455 T 1125/10 – Passivity Breeds Doom ................................................................................................................... 457 T 42/10 – Not Amused ........................................................................................................................................ 460 T 99/09 – Not Quite Invisible ............................................................................................................................. 463 T 2245/10 – Contradiction .................................................................................................................................. 465 T 1273/09 – No Mere Disbelief .......................................................................................................................... 468 Looking Back On 2012 (Part 1) .......................................................................................................................... 472 T 2422/10 – No Translation Needed ................................................................................................................... 475 T 642/12 – 20% Off ............................................................................................................................................ 477 D 9/09 – More Trouble With Marks ................................................................................................................... 482 T 245/10 – Be Active .......................................................................................................................................... 488 T 432/10 – You Can’t Ignore It ........................................................................................................................... 490 T 248/12 – In Gold We Trust .............................................................................................................................. 492 T 1713/11 – Back To Basics ............................................................................................................................... 496 T 2559/11 – Double Standard ............................................................................................................................. 501 T 2060/09 – Single Entity ................................................................................................................................... 502 T 1954/08 – Mere Maths ..................................................................................................................................... 504 The Memorandum ............................................................................................................................................... 507 T 1507/06 – Adding Zero? .................................................................................................................................. 508 T 1949/09 – Unwelcome Guests ......................................................................................................................... 510 T 1131/12 – Late & Too Late ............................................................................................................................. 512 T 2526/11 – Seriously? ....................................................................................................................................... 514 R 12/12 – When In Doubt, Ask The Board ......................................................................................................... 517 T 454/08 – A Fake Swiss .................................................................................................................................... 520 R 9/11 – Don’t Wait Too Long ........................................................................................................................... 524 T 808/09 – Sweet Death ...................................................................................................................................... 528 T 902/07 – The Narrow Path ............................................................................................................................... 531 T 1032/10 – With And Without Paper ................................................................................................................ 534 T 1676/08 – Too Big Not To Fail ....................................................................................................................... 537 T 1222/11 – Getting Your Priorities Right .......................................................................................................... 543 T 2086/11 – More Mean Misery ......................................................................................................................... 551 T 71/09 – Colours Of The Vine .......................................................................................................................... 553 T 1843/11 – Whatever Order You Like .............................................................................................................. 557 Publish Or Perish (ctd.) ....................................................................................................................................... 560 T 1698/08 – On Self-Depreciation ...................................................................................................................... 562 T 790/10 – Dead End .......................................................................................................................................... 563 T 228/09 – Abroad .............................................................................................................................................. 565 3370 | 3398
K’s Law – The ebook
Index
T 2619/11 - The Logician And The Engineer ..................................................................................................... 566 J 43/11 – When In Rome, Do As The Romans Did ............................................................................................ 569 T 712/10 – Diapers, Dots, And Dreadful Draps .................................................................................................. 573 T 196/10 – From Paris With Love ...................................................................................................................... 577 T 395/12 – Simply Wrong................................................................................................................................... 580 T 2254/11 – Insufficient Funds ........................................................................................................................... 583 T 1483/10 – Back To China ................................................................................................................................ 586 T 1677/11 – Bad Timing ..................................................................................................................................... 587 T 487/12 – Likely? So what? .............................................................................................................................. 589 J 7/12 – Last Minute Risks .................................................................................................................................. 591 T 584/09 – Merry Swapping ............................................................................................................................... 593 J 15/12 – To Miss, Or Not To Miss, … ............................................................................................................... 596 T 1906/11 – What Really Counts ........................................................................................................................ 598 T 1849/12 – Bad News For Early Birds .............................................................................................................. 601 T 1413/08 – There Are Alternatives ................................................................................................................... 605 T 1785/10 – Worthy Of Trust ............................................................................................................................. 606 T 366/11 – Wrong Order ..................................................................................................................................... 609 T 947/09 – Late Objections ................................................................................................................................. 612 T 1018/10 – Partially Rounded ........................................................................................................................... 613 T 1486/11 – You Should Have Noticed .............................................................................................................. 616 T 2359/09 – Baring The Teeth ............................................................................................................................ 618 T 134/11 – Intermediate Is Alright ...................................................................................................................... 622 T 1157/09 – Before, During, After ...................................................................................................................... 625 T 1985/11 – Acknowledgement .......................................................................................................................... 627 T 1009/12 – No Effect At All ............................................................................................................................. 629 T 2050/07 – Just Ignore It ................................................................................................................................... 634 T 316/10 – Simply Suppressing .......................................................................................................................... 636 T 154/10 – Totus Pro Parte ................................................................................................................................. 639 T 567/10 – Half A Loaf Is Better Than None ..................................................................................................... 643 T 1544/08 – A Colourful Decision ...................................................................................................................... 646 J 3/12 – Carte Blanche ........................................................................................................................................ 651 T 459/09 – Freeze! Or I’ll Shoot ......................................................................................................................... 654 T 713/08 – Too Select ......................................................................................................................................... 657 To All The EQE Candidates ... ........................................................................................................................... 659 T 1138/11 – What Silence Does Not Mean ......................................................................................................... 660 R 1/12 – There Are Limits .................................................................................................................................. 663 T 1663/12 – A Drop-Dead Appeal ...................................................................................................................... 666 T 1760/08 – An Obvious Regime ....................................................................................................................... 671 T 107/09 – Truth On This Side Of The Ocean … ............................................................................................... 674 T 340/10 – Add, Don’t Replace .......................................................................................................................... 678 J 8/11 – An Artful Sequence ............................................................................................................................... 680 T 1500/10 – Not Just A Right ............................................................................................................................. 684 J 6/12 – What Goes Up Must Come Down ......................................................................................................... 687 3371 | 3398
K’s Law – The ebook
Index
T 1306/08 – Let Us Distinguish .......................................................................................................................... 691 R 2/12 - A Case For An R ................................................................................................................................... 692 T 1382/09 – At The Printers................................................................................................................................ 694 T 748/09 – Gold Governs The Globe .................................................................................................................. 695 T 1843/09 – More Exceptions ............................................................................................................................. 697 T 378/11 – Such As ............................................................................................................................................. 701 T 162/09 – A Troublesome Screen ..................................................................................................................... 703 T 1969/07 – Contact Problems ............................................................................................................................ 705 T 679/09 – Unintended Consequences ................................................................................................................ 706 T 1705/11 – Not Neutral ..................................................................................................................................... 707 T 7/12 – Defend Yourself ................................................................................................................................... 710 T 1888/09 – Unity ............................................................................................................................................... 713 T 209/10 – Singling Out ...................................................................................................................................... 715 R 13/12 – For The Trained Only ......................................................................................................................... 719 T 2128/09 – Only The Brave .............................................................................................................................. 721 T 1866/08 – Doubts et al ..................................................................................................................................... 723 T 1228/08 – A Step Back .................................................................................................................................... 727 T 124/09 – Let Him Speak .................................................................................................................................. 729 T 1798/08 – No Disguise .................................................................................................................................... 730 T 2411/10 – A Bad Handover ............................................................................................................................. 732 T 1388/09 – Consult The Lexicon....................................................................................................................... 735 T 227/10 – Sharp Change? .................................................................................................................................. 738 T 849/10 – Natural Selection .............................................................................................................................. 741 T 671/08 – Bits & Pieces .................................................................................................................................... 743 T 494/09 – “Interpret” Interpreted ...................................................................................................................... 747 T 2120/08 – Too Long ........................................................................................................................................ 749 T 1577/07 – Democracy: An Obvious Choice .................................................................................................... 750 Publish Or Perish (ctd.) ....................................................................................................................................... 752 T 1650/08 – Oh Yes We Can .............................................................................................................................. 753 T 2052/09 – Cutting The Bone ............................................................................................................................ 756 T 569/08 – Predestined Yet Doomed .................................................................................................................. 760 T 455/09 – From The Department Of Corrections .............................................................................................. 763 T 2273/10 – The Crux With Preferences............................................................................................................. 766 T 1034/11 – Some Critical Remarks ................................................................................................................... 768 T 2399/10 – Don’t Be Mean ............................................................................................................................... 770 R 4/12 .................................................................................................................................................................. 772 T 1911/09 – A Private Affair? ............................................................................................................................ 775 T 1407/09 – Multiple Choice .............................................................................................................................. 777 T 2334/08 – The End Is Near .............................................................................................................................. 779 T 1431/10 – Resisting The Lego Approach ........................................................................................................ 781 T 2122/08 – Beelzebub Won’t Drive Out Demons ............................................................................................. 782 T 253/10 – Admission Problems ......................................................................................................................... 783 R 19/11 – Forget Wednesbury ............................................................................................................................ 791 3372 | 3398
K’s Law – The ebook
Index
T 2354/09 – A Tree In The Woods ..................................................................................................................... 793 T 1206/12 – Case Law Slugfest .......................................................................................................................... 795 T 1545/08 – Try And See .................................................................................................................................... 798 T 1545/08 – Bound ............................................................................................................................................. 799 T 442/11 – Re-Search ......................................................................................................................................... 801 T 135/12 – Notorious Nineteen ........................................................................................................................... 805 T 573/09 – Bad Manoeuvre................................................................................................................................. 807 T 1011/09 – The Art Of Substitution .................................................................................................................. 810 Interpretative Spotlight: “Vicinity” ..................................................................................................................... 813 T 1700/11 – Zero Discretion ............................................................................................................................... 814 T 1607/08 – Stick To The Guidelines ................................................................................................................. 820 J 7/10 – It’s Time To Resume ............................................................................................................................. 823 T 476/09 – La Saga Continua.............................................................................................................................. 827 T 563/11 – The Silence Of The Caterpillar ......................................................................................................... 829 T 1232/09 – Only By Reference ......................................................................................................................... 832 T 2347/11 – Oops-A-Daisy!................................................................................................................................ 833 T 162/12 – Card Games ...................................................................................................................................... 839 T 1176/09 – Humans Excluded ........................................................................................................................... 842 T 2233/09 – Objects In A Drawer ....................................................................................................................... 843 T 1680/11 – Welcome To No Man’s Land ......................................................................................................... 845 T 2274/11 – Careless Tiger ................................................................................................................................. 849 T 182/09 – It’s Independence Day ...................................................................................................................... 851 T 2311/10 – Shaking Pillars ................................................................................................................................ 854 T 1994/11 – A Quick Shot .................................................................................................................................. 858 T 905/09 – Barbie Is Lonely, Buy Me A Ken ..................................................................................................... 859 T 2402/10 – Seeing Double................................................................................................................................. 862 T 1829/10 – Just Wanna Be Heard...................................................................................................................... 863 T 2133/10 – Law And Order ............................................................................................................................... 865 T 1265/10 – What They Really Want ................................................................................................................. 867 T 592/11 – Ten Days ........................................................................................................................................... 870 T 1592/09 – Because It’s There .......................................................................................................................... 876 T 1784/06 – Comvik Reaffirmed ........................................................................................................................ 878 T 197/09 – Waltz Of The Polypeptides ............................................................................................................... 882 On Translations ................................................................................................................................................... 884 T 1227/10 – Dustbin Horrors .............................................................................................................................. 885 T 1496/11 – Bending & Folding ......................................................................................................................... 888 T 1771/08 – He Should Have Said “No” ............................................................................................................ 890 T 1149/11 – Trust Is Good, But Control Is Better ............................................................................................... 891 R 21/11 – Unheard .............................................................................................................................................. 895 T 1033/08 – Quite Exceptional ........................................................................................................................... 901 T 547/08 – Si Nihil Aliud.................................................................................................................................... 903 T 1898/11 – Deal With It .................................................................................................................................... 905 T 1920/09 – Unusual ........................................................................................................................................... 907 3373 | 3398
K’s Law – The ebook
Index
T 415/11 – No Evidence ..................................................................................................................................... 909 T 236/08 – Two Much ........................................................................................................................................ 912 T 611/08 – Killing The Pain (And The Patent) ................................................................................................... 914 T 2344/08 – Simplification ................................................................................................................................. 916 T 478/09 – Words ............................................................................................................................................... 919 T 2433/09 – Boomerang...................................................................................................................................... 921 T 1807/07 – Don’t Get It Twisted ....................................................................................................................... 923 T 1514/06 – Dead Man Filing ............................................................................................................................. 925 T 636/09 – Lack Of Reference ............................................................................................................................ 927 T 59/10 - General Practice .................................................................................................................................. 929 T 433/08 .............................................................................................................................................................. 930 T 2097/10 – React! .............................................................................................................................................. 932 T 132/09 – Not The Same ................................................................................................................................... 934 T 234/09 – More Round Figures ......................................................................................................................... 937 Interpretational Spotlight: Completely Encasing ................................................................................................ 940 T 519/06 – Round Figures................................................................................................................................... 945 T 1856/11 – Enough Said .................................................................................................................................... 947 T 999/10 – A Case For A Cascade ...................................................................................................................... 949 T 1741/08 – A Broken Chain .............................................................................................................................. 952 T 495/10 - Back In Switzerland .......................................................................................................................... 956 T 306/09 – You Have To Cite Something ........................................................................................................... 960 Publish Or Perish (ctd.) ....................................................................................................................................... 962 T 2454/11 – Postal Duties ................................................................................................................................... 963 T 1467/11 – Shortcut........................................................................................................................................... 967 T 937/09 – Salami Vice....................................................................................................................................... 968 T 990/09 – In The Archives ................................................................................................................................ 972 T 1084/10 – Sound Questions ............................................................................................................................. 974 T 1959/09 – Not Fresh ........................................................................................................................................ 976 R 2/12 – Nodding Not Required ......................................................................................................................... 977 T 2346/10 – Class Struggle ................................................................................................................................. 979 T 358/10 – Waiting For Too Long ...................................................................................................................... 985 T 916/09 – Sixty-Nein! ....................................................................................................................................... 988 T 387/11 – Grieving ............................................................................................................................................ 989 T 184/10 – Speculation ....................................................................................................................................... 991 T 678/09 – The Trap Is In The Detail ................................................................................................................. 992 T 28/10 – You Have To Concentrate .................................................................................................................. 998 T 28/10 – Abuse? Of Discretion? ...................................................................................................................... 1002 R 14/11 – A Statement, Please? ........................................................................................................................ 1005 T 2177/09 – Doping Problems .......................................................................................................................... 1009 T 56/09 – So Close ............................................................................................................................................ 1011 J 5/11 – Be Vigilant .......................................................................................................................................... 1014 T 1408/10 – In Vitro Veritas ............................................................................................................................. 1017 T 1518/12 – Serves You Right .......................................................................................................................... 1018 3374 | 3398
K’s Law – The ebook
Index
T 435/07 – Where Exactly? ............................................................................................................................... 1020 T 1021/08 – No Ping Pong Please ..................................................................................................................... 1023 T 1251/08 – On The Phone Again .................................................................................................................... 1024 T 506/08 – Not My Business ............................................................................................................................ 1026 Birthday Musings .............................................................................................................................................. 1029 T 226/09 – Anticipation .................................................................................................................................... 1032 R 3/12 – Education Matters............................................................................................................................... 1034 T 933/09 – Tell Us Why.................................................................................................................................... 1036 T 1410/07 – Nothing Special ............................................................................................................................ 1038 T 1034/08 – Abbreviations................................................................................................................................ 1041 T 1817/08 – No Public Access? ........................................................................................................................ 1042 T 853/10 – A Limited Statement ....................................................................................................................... 1045 T 302/09 – Take ‘Em All? ................................................................................................................................ 1047 T 1262/04 – Of Mice And Men......................................................................................................................... 1048 T 1957/10 – In-House Problems ....................................................................................................................... 1051 Interpretational Spotlight: “Epitope” ................................................................................................................ 1053 T 1082/08 – Be Prepared................................................................................................................................... 1055 T 1070/10 – Technical Indeed ........................................................................................................................... 1057 T 908/09 – No Priority ...................................................................................................................................... 1059 T 294/11 – Tell Me Why................................................................................................................................... 1061 T 2068/10 – Lack of support ............................................................................................................................. 1063 T 588/09 – That’s All Folks .............................................................................................................................. 1065 T 313/10 – Double Mistake............................................................................................................................... 1066 T 160/09 – Transparency .................................................................................................................................. 1070 J 13/11 – Forgotten ........................................................................................................................................... 1074 R 13/11 – False Hopes ...................................................................................................................................... 1078 J 9/10 – Partial Reimbursement ........................................................................................................................ 1082 T 192/09 – Some Kind Of Restriction .............................................................................................................. 1086 T 1743/09 – Open Literature ............................................................................................................................. 1088 T 1859/08 – Currently Being Explored ............................................................................................................. 1089 T 1115/09 – Epsilonics...................................................................................................................................... 1092 T 1014/07 – Motivation Matters ....................................................................................................................... 1095 T 1688/08 – Language Skills ............................................................................................................................ 1096 Interpretative Spotlight: “Plurality” .................................................................................................................. 1098 T 1990/08 – Double Trigger ............................................................................................................................. 1100 T 2294/08 – A Lack Of Adaptation .................................................................................................................. 1101 T 71/10 – Just An Option .................................................................................................................................. 1103 T 2215/08 – Useful? .......................................................................................................................................... 1105 T 1199/08 – Quod Licet Bovi Non Licet Homini ............................................................................................. 1107 Weaning ............................................................................................................................................................ 1110 T 1170/07 – Let’s Be Reasonable ..................................................................................................................... 1111 T 1839/11 – Limited Visibility ......................................................................................................................... 1112 T 2534/10 – The Day After ............................................................................................................................... 1115 3375 | 3398
K’s Law – The ebook
Index
T 869/10 – Too Big ........................................................................................................................................... 1118 T 1068/07 – It’s All In There ............................................................................................................................ 1120 G 1/10 – Unavailable ........................................................................................................................................ 1124 Interpretative Spotlight: “Gradually” ................................................................................................................ 1128 T 936/09 – A Deliberate Choice ....................................................................................................................... 1132 T 1870/08 – Disclaimer Subtleties .................................................................................................................... 1136 T 667/08 – Looking Everywhere ...................................................................................................................... 1144 T 742/11 – Too Many Cooks Spoil The Broth .................................................................................................. 1148 T 1924/07 – Searchless ..................................................................................................................................... 1154 T 2003/08 – A Call For Witnesses .................................................................................................................... 1157 T 1178/08 – Not Obliged .................................................................................................................................. 1159 T 1707/08 – Troublesome Notoriety ................................................................................................................. 1161 T 570/08 – Abnormality .................................................................................................................................... 1163 T 853/11 – Constantly Craving ......................................................................................................................... 1165 T 1212/08 – The Third Option .......................................................................................................................... 1166 Interpretational Spotlight: “Produced By” ........................................................................................................ 1168 T 523/10 – Be Consistent .................................................................................................................................. 1170 T 2438/09 – A Case For Prior Art ..................................................................................................................... 1172 T 531/09 – Trouble At The Checkpoint ............................................................................................................ 1173 T 2001/09 – Difficult Questions........................................................................................................................ 1175 T 1415/07 – Unexpected Help .......................................................................................................................... 1176 T 287/10 – Just Irrelevant ................................................................................................................................. 1180 Publish Or Perish (ctd.) ..................................................................................................................................... 1181 T 346/11 – Don’t Change Your Mind ............................................................................................................... 1182 T 1982/09 – Once Upon A Party....................................................................................................................... 1183 T 1100/09 – For The Worse .............................................................................................................................. 1185 T 353/11 – Intentions Are Not Enough ............................................................................................................. 1189 T 89/10 – Copy & Paste .................................................................................................................................... 1191 Interpretative Spotlight: “Active” ..................................................................................................................... 1192 T 1721/07 – No Self-Service............................................................................................................................. 1194 T 412/09 – A Consistent Picture ....................................................................................................................... 1196 T 768/08 – Lethal Process ................................................................................................................................. 1197 T 970/10 – Errare Inquisitorium Est ................................................................................................................. 1201 T 383/11 – No Free Hand.................................................................................................................................. 1202 T 1644/07 – A Problematic Extraction ............................................................................................................. 1205 T 134/10 – Small Change, Big Effect ............................................................................................................... 1207 T 1140/09 – Let’s Not Be Too Strict................................................................................................................. 1210 T 1751/07 – Not Clear-Cut Enough .................................................................................................................. 1212 T 2334/11 – Expect The Unexpected ................................................................................................................ 1213 T 1993/07 – Divergence .................................................................................................................................... 1216 T 1205/07 – Confirmation ................................................................................................................................. 1219 T 2256/08 – Inconsistency ................................................................................................................................ 1221 T 1326/11 – No Consent ................................................................................................................................... 1223 3376 | 3398
K’s Law – The ebook
Index
T 2464/10 – Accumulation................................................................................................................................ 1226 J 9/11 – Lost Cause ........................................................................................................................................... 1229 T 611/09 – Non-Therapeutic ............................................................................................................................. 1232 T 1848/09 – Can’t Complain............................................................................................................................. 1234 T 463/07 – Non-Communicating Vessels ......................................................................................................... 1235 T 620/08 - The Relic ......................................................................................................................................... 1237 T 1242/06 – Tomatoes Again ............................................................................................................................ 1240 T 2076/11 – The Missing Chairman ................................................................................................................. 1250 T 1416/10 – Korean Washing ........................................................................................................................... 1252 T 1239/08 – Guidance Required ....................................................................................................................... 1255 T 1188/08 – A Statement Of Unhappiness ........................................................................................................ 1258 T 1911/08 – Not Accidental .............................................................................................................................. 1260 T 759/10 – Normal Development...................................................................................................................... 1262 T 834/09 – Don’t Trust The Librarian .............................................................................................................. 1266 R 17/11 – Speak Out ......................................................................................................................................... 1269 T 510/10 – Distinct ........................................................................................................................................... 1271 T 593/09 – Sufficiently Clear ............................................................................................................................ 1273 T 2434/09 – Post Mortem ................................................................................................................................. 1278 T 1668/07 - What’s In A Name ......................................................................................................................... 1282 J 27/10 – Missing .............................................................................................................................................. 1285 Some Statistics .................................................................................................................................................. 1290 Interpretative Spotlight: “Boundary portion” .................................................................................................... 1298 T 1229/09 – Don’t Jump To Conclusions ......................................................................................................... 1303 T 1051/09 – Too Particular ............................................................................................................................... 1305 T 371/10 – Allow For Shrinking ....................................................................................................................... 1309 T 1835/08 – Is Everything Clear? ..................................................................................................................... 1311 T 153/11 – Not Quite The Same ....................................................................................................................... 1313 T 913/09 – The CW Problem ............................................................................................................................ 1316 T 540/09 – Wrong Name................................................................................................................................... 1317 T 443/11 – Irrelevant matter ............................................................................................................................. 1318 T 670/09 – Bad Timing ..................................................................................................................................... 1322 T 303/09 – Looking For Problems .................................................................................................................... 1324 T 1797/09 – Obliquity ....................................................................................................................................... 1326 T 663/10 – The Absent Guest ........................................................................................................................... 1329 T 363/11 – Not More ........................................................................................................................................ 1330 T 1472/08 – It’s Too Late Now ......................................................................................................................... 1332 T 1099/09 – What A Strip!................................................................................................................................ 1334 T 1849/08 - Drawn To Scale ............................................................................................................................. 1338 J 4/11 – Not Pending Any More ....................................................................................................................... 1341 T 1185/09 – Reduction To Practice................................................................................................................... 1349 T 1289/09 – Only One? Not Necessarily .......................................................................................................... 1351 J 4/10 – Back And Forth ................................................................................................................................... 1352 J 21/10 – A Closed File ..................................................................................................................................... 1356 3377 | 3398
K’s Law – The ebook
Index
T 541/09 – More On Weight Problems ............................................................................................................. 1360 T 2/09 – Big Brother Is Reading You ............................................................................................................... 1363 Some Stats ......................................................................................................................................................... 1377 T 1553/06 – Direct And Unambiguous Access ................................................................................................. 1380 T 1553/06 – Friendly Fire ................................................................................................................................. 1393 T 1265/09 – Final Call ...................................................................................................................................... 1395 T 1685/08 - Inexistent ....................................................................................................................................... 1399 T 117/09 – Ashtray Revisited ........................................................................................................................... 1401 T 67/09 – Unseen So Far ................................................................................................................................... 1405 T 1056/09 – Side By Side Yet Independent ...................................................................................................... 1407 T 1519/08 – Not Necessarily............................................................................................................................. 1409 T 840/07 – No Free Ride ................................................................................................................................... 1411 R 8/11 – Off Limits ........................................................................................................................................... 1413 T 599/07 – Fatal Dependence ........................................................................................................................... 1415 T 630/09 – Combination Locked ...................................................................................................................... 1416 Publish Or Perish (ctd.) ..................................................................................................................................... 1417 T 2451/09 – The Dangers Of Welding .............................................................................................................. 1418 T 309/09 – Excessive? ...................................................................................................................................... 1421 T 1476/08 – Seriously Contemplating .............................................................................................................. 1423 T 122/10 – Don’t Bite The Dog ........................................................................................................................ 1425 T 2296/09 – Sketchy ......................................................................................................................................... 1427 T 660/08 – It’s Always Been Tight ................................................................................................................... 1430 T 1872/08 – Abuse Of Discretion ..................................................................................................................... 1432 T 181/08 – Coverage ......................................................................................................................................... 1434 T 1880/11 – Untimely ....................................................................................................................................... 1436 T 690/10 – What If ............................................................................................................................................ 1439 T 1679/09 – When One Becomes Two ............................................................................................................. 1443 T 188/09 - No Good Reason ............................................................................................................................. 1446 T 1248/08 – What’s Your Number? .................................................................................................................. 1448 T 1575/07 – When Things Get Narrow ............................................................................................................. 1451 T 1057/09 - Public Or Not Public ..................................................................................................................... 1453 T 377/11 – Not By Money Alone...................................................................................................................... 1457 T 260/10 – In Particular .................................................................................................................................... 1460 R 6/11 – False Premise ...................................................................................................................................... 1462 T 448/09 – Devoid Of Object............................................................................................................................ 1467 T 605/09 – Paraphrase....................................................................................................................................... 1469 J 29/10 – No Country For Old Men .................................................................................................................. 1471 T 1260/08 – Prima Facie Is Enough .................................................................................................................. 1475 T 532/08 – Admittedly ...................................................................................................................................... 1477 T 191/08 – Don’t Trust Titles ........................................................................................................................... 1480 T 273/10 – All About The Money ..................................................................................................................... 1483 T 317/11 – Inquisitor Me Impune Lacessit ....................................................................................................... 1485 R 10/11 and R 2/11 – Busy Guillotine .............................................................................................................. 1487 3378 | 3398
K’s Law – The ebook
Index
T 1953/07 – Words Count ................................................................................................................................. 1489 T 1049/08 – No Liquids .................................................................................................................................... 1491 T 1836/09 – Whenever, Wherever .................................................................................................................... 1494 To All The EQE Candidates ... ......................................................................................................................... 1495 T 535/08 – No Contribution .............................................................................................................................. 1496 T 19/05 – A Special Relationship ..................................................................................................................... 1498 T 418/07 – Nonchalance ................................................................................................................................... 1500 T 960/08 – A Certain Uncertainty ..................................................................................................................... 1502 T 600/08 – Cured .............................................................................................................................................. 1507 T 1033/07 – Should I Stay Or Should I Go? ..................................................................................................... 1510 T 9/10 – Hidden Danger .................................................................................................................................... 1512 T 1984/07 – The Phone That Never Rang ......................................................................................................... 1514 T 98/09 – Singled Out ....................................................................................................................................... 1516 T 109/08 – (Dis)Sancta Simplicitas .................................................................................................................. 1520 T 443/09 – Your Mess, Your Problem .............................................................................................................. 1523 T 1885/08 – The Broad Way ............................................................................................................................. 1525 T 445/08 – The Wrong Person .......................................................................................................................... 1528 T 871/08 – Round 3 .......................................................................................................................................... 1538 T 36/11 – An All Too Sudden End ................................................................................................................... 1540 T 1285/11 – Something Special ........................................................................................................................ 1542 J 1/11 and J 18/10 – Second Thoughts (Again And Again) .............................................................................. 1546 T 2048/07 – Nothing Further ............................................................................................................................ 1551 T 1525/10 – They Never Come Back................................................................................................................ 1553 T 1744/09 – Retroactive Identification ............................................................................................................. 1556 T 1695/07 – More Bloody Stuff ........................................................................................................................ 1561 T 2020/07 – Cutting Out Trade Marks .............................................................................................................. 1567 T 1621/09 – The Case ....................................................................................................................................... 1570 T 197/10 – Self-Explaining ............................................................................................................................... 1579 J 7/11 - Just Write It!......................................................................................................................................... 1581 J 8/10 – No Lawyers ......................................................................................................................................... 1586 T 382/10 – The Last Word ................................................................................................................................ 1590 T 1491/06 – Just Overlapping ........................................................................................................................... 1592 T 2415/09 – Forty-five Days ............................................................................................................................. 1594 T 2196/09 – Not In Line.................................................................................................................................... 1596 T 1336/09 – Anonymous Is Alright ... .............................................................................................................. 1597 T 2020/07 – Official Selection .......................................................................................................................... 1599 T 110/07 – One Way Only ................................................................................................................................ 1603 T 1488/08 – Salami Cut-Off ............................................................................................................................. 1604 T 689/11 – Overstretched .................................................................................................................................. 1606 T 1827/07 – A Late Swiss ................................................................................................................................. 1608 T 1610/08 – Honeymoon Killers ....................................................................................................................... 1609 T 1421/08 – Technicality .................................................................................................................................. 1611 T 1864/09 – One Or The Other ......................................................................................................................... 1613 3379 | 3398
K’s Law – The ebook
Index
T 1864/09 – Irrelevant Alternatives .................................................................................................................. 1614 T 606/08 – Crystal Clear ................................................................................................................................... 1620 T 1803/09 – Wrong Approach .......................................................................................................................... 1623 T 692/09 – No Experiments Needed ................................................................................................................. 1625 T 520/06 – Walk The Line ................................................................................................................................ 1628 T 1914/08 – Total Recall................................................................................................................................... 1631 T 2210/10 – Swedish Post ................................................................................................................................. 1635 T 848/09 – Not Frozen ...................................................................................................................................... 1638 T 1086/07 – Presenting Information ................................................................................................................. 1640 Publish Or Perish (ctd.) ..................................................................................................................................... 1643 T 456/10 – See The Big Picture ........................................................................................................................ 1644 T 1022/09 – What’s In Is In .............................................................................................................................. 1647 T 2339/09 – Balance Act................................................................................................................................... 1648 T 1841/09 – A Dubious Combination ............................................................................................................... 1649 T 1644/10 – You’re Late ................................................................................................................................... 1651 T 1007/09 – Talking With Asterisks ................................................................................................................. 1660 T 193/07 – Purely Hypothetical ........................................................................................................................ 1661 T 305/07 – Time Does Not Heal All Wounds ................................................................................................... 1662 T 468/09 – Don’t Focus On The Negative ........................................................................................................ 1664 T 2166/10 – Missing Pages ............................................................................................................................... 1667 J 22/10 – Foreign Affairs .................................................................................................................................. 1669 T 491/09 – Clairvoyance ................................................................................................................................... 1672 T 146/07 – Unsigned ......................................................................................................................................... 1675 T 2375/10 – Empty Hands And Heavy Hearts .................................................................................................. 1677 T 866/08 – Of Mice And Dogs.......................................................................................................................... 1679 T 1789/09 – Margin Of Error ............................................................................................................................ 1681 T 1530/09 – The Whole Truth .......................................................................................................................... 1684 T 1730/09 – Essentially ..................................................................................................................................... 1688 T 2106/08 – Don’t Infer Too Much .................................................................................................................. 1690 R 7/11 – Closed ................................................................................................................................................. 1691 T 1687/08 – The Gagged Lawyer ..................................................................................................................... 1693 T 1188/10 – Range Picking ............................................................................................................................... 1695 T 1235/07 – A Wider View ............................................................................................................................... 1697 T 1037/09 – He Loves Redundancy .................................................................................................................. 1702 T 1172/08 – Empty Shell .................................................................................................................................. 1703 T 1282/08 – You’re Too Greedy ....................................................................................................................... 1706 T 624/08 – Artificiality ..................................................................................................................................... 1708 T 95/10 – Too Concise ...................................................................................................................................... 1712 T 571/08 - Plausible .......................................................................................................................................... 1714 T 467/08 – No Way ........................................................................................................................................... 1719 T 2377/09 – Alternative Grounds...................................................................................................................... 1721 T 2118/08 – It’s Factual .................................................................................................................................... 1725 T 1642/07 – Prophets Welcome ........................................................................................................................ 1729 3380 | 3398
K’s Law – The ebook
Index
T 945/09 – The Patient Who Knew ................................................................................................................... 1731 T 1605/07 – No Selection ................................................................................................................................. 1735 T 1245/09 – Ten Years After ............................................................................................................................ 1737 T 1523/08 – Not Fresh ...................................................................................................................................... 1738 T 1069/08 – Late Argument .............................................................................................................................. 1739 T 1508/08 – Correctional Facilities ................................................................................................................... 1742 T 7/07 – Fatal Yasmin ....................................................................................................................................... 1746 T 781/08 – No Clues Needed ............................................................................................................................ 1749 T 715/09 – Classy ............................................................................................................................................. 1751 R 3/10 – A Misunderstanding ........................................................................................................................... 1754 T 45/10 – Gotta Be Right .................................................................................................................................. 1757 T 1456/06 – All Things Considered .................................................................................................................. 1760 T 2198/08 – One Too Many .............................................................................................................................. 1763 T 386/08 – Eighty-three Issues.......................................................................................................................... 1764 T 971/10 – Substantially Circular ..................................................................................................................... 1768 T 75/09 – Don’t Look Away ............................................................................................................................. 1770 T 334/08 – No Surprise ..................................................................................................................................... 1773 T 189/09 – Sweet ’N’ Risky.............................................................................................................................. 1776 T 345/09 – Not Enough ..................................................................................................................................... 1777 T 923/08 – Close To The Bone ......................................................................................................................... 1781 T 132/90 – Schizo Prio...................................................................................................................................... 1785 T 2115/08 – White & Deadly ............................................................................................................................ 1789 T 974/10 – Quite Exceptional ........................................................................................................................... 1791 T 1973/09 – Ultra Vires .................................................................................................................................... 1792 T 711/07 – Nothing New Under The Sun ......................................................................................................... 1795 T 226/07 – Exploring Strange Places ................................................................................................................ 1797 T 312/11 – On Remedies................................................................................................................................... 1799 T 584/09 – Never Mind The Translation .......................................................................................................... 1803 T 1652/08 – Changes In Composition............................................................................................................... 1805 T 1194/08 – Stick To What You Said ............................................................................................................... 1807 T 603/08 – Very Meaningful............................................................................................................................. 1809 T 824/10 - Don’t Take It For Granted ............................................................................................................... 1814 T 888/07 – Revival ............................................................................................................................................ 1817 T 888/07 – Don’t Be So Negative ..................................................................................................................... 1818 T 1389/10 – Suitable For................................................................................................................................... 1819 R 23/10 – Just Disagreeing ............................................................................................................................... 1825 T 2006/09 – Point Of Reference ....................................................................................................................... 1827 T 1244/08 – Having Second Thoughts .............................................................................................................. 1829 T 1126/09 – What Would My Robot Do? ......................................................................................................... 1831 T 1810/08 – High And Low .............................................................................................................................. 1836 J 19/10 – On Time Limits ................................................................................................................................. 1839 T 840/09 – Can’t Complain............................................................................................................................... 1843 J 23/10 – Sound Of Silence ............................................................................................................................... 1844 3381 | 3398
K’s Law – The ebook
Index
T 1168/08 – Unjustified .................................................................................................................................... 1847 Interpretative Spotlight: Directly ...................................................................................................................... 1850 T 299/09 – Just Can’t Do This .......................................................................................................................... 1853 T 179/07 – Unfulfilled Duty ............................................................................................................................. 1855 T 458/08 – Everyday Experience ...................................................................................................................... 1857 T 2230/08 – Trapped ......................................................................................................................................... 1859 T 157/08 – Gobbledygook? ............................................................................................................................... 1862 T 1200/08 – Long Live The Patent ................................................................................................................... 1865 Publish Or Perish (ctd.) ..................................................................................................................................... 1866 T 1912/08 – Ouch, Those Teeth! ...................................................................................................................... 1867 T 1584/08 – Presumed Faithful ......................................................................................................................... 1869 T 1930/07 – A Call For Courtesy ...................................................................................................................... 1871 T 578/08 – Not Automatic ................................................................................................................................ 1872 T 578/08 – Because It’s There .......................................................................................................................... 1874 T 1479/08 – Wrong Lane .................................................................................................................................. 1877 T 1969/08 – Obscure Matter ............................................................................................................................. 1880 T 206/10 – Hearing Disorders ........................................................................................................................... 1883 T 753/09 – Late Expertise ................................................................................................................................. 1886 T 2254/08 – Not Proven .................................................................................................................................... 1888 T 2254/08 – No Hiding ..................................................................................................................................... 1890 T 959/08 – (Dys)Functional .............................................................................................................................. 1892 T 1855/07 – Clear Words On Clarity ................................................................................................................ 1896 T 1900/07 – No More........................................................................................................................................ 1900 T 475/07 – All ‘Bout The Money...................................................................................................................... 1902 R 5/11 – Boilerplates Etc. ................................................................................................................................. 1904 T 1685/07 – Converge! ..................................................................................................................................... 1907 T 2019/09 – Not Suitable .................................................................................................................................. 1910 T 1136/10 – One, Two, Three ........................................................................................................................... 1912 T 390/08 – Not For Laymen.............................................................................................................................. 1916 T 648/10 – Let ‘Em In ....................................................................................................................................... 1920 R 20/10 – Exhausted ......................................................................................................................................... 1923 J 21/09 – Passing The Buck .............................................................................................................................. 1926 T 477/09 – Another One Bites The Dust ........................................................................................................... 1930 G 2/10 – Test The Rest...................................................................................................................................... 1934 T 2299/08 – Right Method, Wrong Problem .................................................................................................... 1945 T 1710/09 – Taking A Can For A Must ............................................................................................................ 1948 T 1312/09 – Let’s Be Objective ........................................................................................................................ 1953 T 177/08 – Fake Dependency ........................................................................................................................... 1957 T 1614/08 – Still Dependent ............................................................................................................................. 1960 T 1188/09 – You May Come Back ................................................................................................................... 1963 T 1782/09 and T 2127/09 – What About Some Tetris? .................................................................................... 1965 T 1535/10 – K.O. Because Of c/o? ................................................................................................................... 1971 T 1686/07 – On Things You Would Not Do ..................................................................................................... 1976 3382 | 3398
K’s Law – The ebook
Index
T 786/08 – Only Words..................................................................................................................................... 1978 T 1700/10 – Bad Company ............................................................................................................................... 1982 T 967/08 – D-ISO-lation ................................................................................................................................... 1983 T 1680/08 – Iron Lung ...................................................................................................................................... 1985 T 1411/08 – Not Notorious ............................................................................................................................... 1989 T 1698/09 – Prior Rights Ain’t Prior Art .......................................................................................................... 1992 J 25/10 – Mere Assertions Won’t Do ................................................................................................................ 1993 Oldies But Goldies – Arbitrary Selection ......................................................................................................... 1996 T 1202/07 – Where Not To Look ...................................................................................................................... 2002 T 1657/09 – Putting One’s Finger On The Difficulty ....................................................................................... 2005 T 1761/07 – Three Out Of Four Ain’t Bad ....................................................................................................... 2007 T 673/09 – Forget The Figures.......................................................................................................................... 2010 T 1274/07 – A Letter Can Matter ...................................................................................................................... 2015 T 644/09 – Over The Top.................................................................................................................................. 2018 T 1824/08 – Do It Yourself ............................................................................................................................... 2020 T 53/08 – The Closer ........................................................................................................................................ 2024 T 1926/08 – Looking Back ............................................................................................................................... 2027 T 172/07 – Table Dancing................................................................................................................................. 2030 T 1075/06 – Bloody Monday ............................................................................................................................ 2036 Oldies But Goldies – Failure To Forward ......................................................................................................... 2041 T 963/08 – Substantially Unclear ...................................................................................................................... 2043 T 1769/10 – Non-technical Constraints............................................................................................................. 2045 T 411/10 – Octopus Defence Rejected .............................................................................................................. 2048 T 1363/08 – Trouble With The Two-Part Form ................................................................................................ 2050 T 1882/08 – A Smouldering Wick .................................................................................................................... 2053 Oldies But Goldies – Bonus Effect ................................................................................................................... 2054 T 1196/08 – Romanian Rhapsody ..................................................................................................................... 2057 T 1130/09 – Two Will Do ................................................................................................................................. 2062 T 578/06 – You Bear The Burden First ............................................................................................................. 2064 T 324/09 – First Or Not? ................................................................................................................................... 2068 T 1129/09 – Be Exhaustive ............................................................................................................................... 2071 Oldies But Goldies – Deleting Claimed Features.............................................................................................. 2074 T 641/11 – Don’t Know You ............................................................................................................................ 2077 T 777/08 – Crystals Are A Girl’s Best Friends ................................................................................................. 2078 T 747/10 – Let’s Be Subjective ......................................................................................................................... 2081 J 24/10 – The Day Before ................................................................................................................................. 2084 T 1387/08 – On The Edge ................................................................................................................................. 2086 T 1497/08 – No Kitting ..................................................................................................................................... 2088 T 1497/08 – Tell Me All ................................................................................................................................... 2090 R 1/11 – Off Topic ............................................................................................................................................ 2092 T 258/09 – It’s Contagious ................................................................................................................................ 2094 T 152/09 – On Problems And Difficulties ........................................................................................................ 2096 J 12/10 – Too Many Cooks Spoil The Broth..................................................................................................... 2098 3383 | 3398
K’s Law – The ebook
Index
T 1244/07 – One Click Clipped ........................................................................................................................ 2101 Publish or perish (ctd.) ...................................................................................................................................... 2104 T 1289/10 – Quarantine Horrors ....................................................................................................................... 2105 T 1067/08 – No Forum Shopping ..................................................................................................................... 2107 T 1634/06 – Improve Your Figure .................................................................................................................... 2112 T 2003/07 – Two In One, Clarity Gone ............................................................................................................ 2115 T 282/09 – The Hidden One.............................................................................................................................. 2117 T 646/07 – A Sense Of Purpose ........................................................................................................................ 2119 T 1044/08 – Together We Fall .......................................................................................................................... 2122 T 494/07 – A 64 Billiards.................................................................................................................................. 2124 T 1644/08 – Hindsight Anticipation.................................................................................................................. 2127 T 1421/05 – No, But Yes .................................................................................................................................. 2129 T 1421/05 – From The Grave............................................................................................................................ 2133 Oldies But Goldies – On Neighbours ................................................................................................................ 2145 R 13/10 – The End Of An Error ........................................................................................................................ 2150 T 1050/09 – You Can’t Rely ............................................................................................................................. 2152 T 238/08 – Defining Moments .......................................................................................................................... 2154 T 2112/09 – Like Mother, Like Daughter ......................................................................................................... 2158 T 23/10 – They Come In Threes ....................................................................................................................... 2160 T 1854/07 – It’s Broad, Says The Board ........................................................................................................... 2164 T 1837/07 – Wiping The Slate Clean ................................................................................................................ 2168 T 1878/08 – Significant? ................................................................................................................................... 2171 T 1001/07 – Anointed Yet Doomed .................................................................................................................. 2174 T 144/09 – When No Means Never .................................................................................................................. 2176 T 1801/07 – When Witnesses Disagree ............................................................................................................ 2180 Oldies But Goldies – Incorporation By Reference ............................................................................................ 2182 T 1414/08 – It’s 84 (Not 83) ............................................................................................................................. 2186 T 1858/07 – Late Arrival................................................................................................................................... 2189 T 606/10 – Rest Not In Peace ........................................................................................................................... 2191 T 663/02 – G 1/07 Injection .............................................................................................................................. 2193 T 823/07 – Logorrhoea...................................................................................................................................... 2199 Oldies But Goldies - Proof For Prior Use ......................................................................................................... 2201 T 278/09 – On Sheets And Other Paperwork .................................................................................................... 2204 T 126/09 – Selected With Care ......................................................................................................................... 2210 T 394/10 – No Shortcuts Please ........................................................................................................................ 2212 T 1122/09 – The Deadly Four ........................................................................................................................... 2214 T 1546/08 – Unexplored?.................................................................................................................................. 2216 T 1819/07 – Average Danger ............................................................................................................................ 2218 T 2193/10 – The Other Side .............................................................................................................................. 2220 T 854/09 – Ultimate Responsibility .................................................................................................................. 2222 T 980/09 – Light But Serious ............................................................................................................................ 2223 T 1809/07 – On Drafting And Drawings........................................................................................................... 2225 T 789/07 – Searching Deep ............................................................................................................................... 2228 3384 | 3398
K’s Law – The ebook
Index
T 725/08 – 123 Strikes Again ........................................................................................................................... 2232 T 1610/07 – Choosing Between Two Ends ....................................................................................................... 2234 T 105/09 – Useful Reminders ........................................................................................................................... 2236 T 1857/09 – Not Exclusive ............................................................................................................................... 2239 T 1587/07 – Withdrawn Shall Not Come Back ................................................................................................ 2241 T 1388/10 – Fourty-Three Pleasures ................................................................................................................. 2244 T 1693/07 – No Problemo ................................................................................................................................. 2248 T 1171/08 – On Purpose ................................................................................................................................... 2250 T 1691/08 – Don’t Speculate ............................................................................................................................ 2252 T 2232/08 – An Error With Consequences ....................................................................................................... 2254 T 423/09 – Agitation Recommended ................................................................................................................ 2256 T 826/06 – No Causal Link ............................................................................................................................... 2258 T 1389/08 – Boundaries .................................................................................................................................... 2261 R 18/10 – Last Day Action................................................................................................................................ 2263 T 1834/09 – Missing? Not Quite ....................................................................................................................... 2265 R 19/10 – Be Explicit ........................................................................................................................................ 2268 T 933/10 – You Have To Tell Why .................................................................................................................. 2271 T 189/06 – Nine Not One .................................................................................................................................. 2274 T 1744/08 – Wrong Base .................................................................................................................................. 2275 T 1162/07 – Carrying One’s Burden ................................................................................................................. 2276 T 1027/08 – Measuring Well-being .................................................................................................................. 2279 T 1547/08 – With A Little Help From My Friends ........................................................................................... 2281 T 2225/09 – Classy Stuff................................................................................................................................... 2283 T 2213/08 – Unlimited? .................................................................................................................................... 2286 T 2348/08 – Copyright and Secrecy .................................................................................................................. 2288 T 385/09 – Cool Cows ...................................................................................................................................... 2289 T 783/09 – Deletion vs. Selection ..................................................................................................................... 2292 T 689/05 – Muskets For Butterflies .................................................................................................................. 2295 T 1495/09 – No Panacea ................................................................................................................................... 2301 T 528/08 – On Devolution ................................................................................................................................ 2304 T 658/06 – Innovative Is Not Enough ............................................................................................................... 2306 T 830/08 – Stuttering ........................................................................................................................................ 2309 T 1981/07 – How?............................................................................................................................................. 2311 R 1/10 – Independence ...................................................................................................................................... 2315 T 2292/08 – When Theory Meets Reality ......................................................................................................... 2318 T 571/09 – That Was Quick! ............................................................................................................................. 2320 T 2052/10 – You Got It ..................................................................................................................................... 2323 Publish Or Perish (ctd.) ..................................................................................................................................... 2325 T 128/10 - No Money No Transfer ................................................................................................................... 2327 T 120/08 – A Vacuous Expression .................................................................................................................... 2333 T 1635/09 – Claims Pregnant With Meaning .................................................................................................... 2336 T 822/07 – Bulb Fiction .................................................................................................................................... 2344 T 1549/07 – What’s In Is In (*) ........................................................................................................................ 2347 3385 | 3398
K’s Law – The ebook
Index
T 143/06 – Clear & Close ................................................................................................................................. 2351 T 1349/10 - Back To Square One...................................................................................................................... 2354 T 1259/09 – No Party ........................................................................................................................................ 2355 T 263/07 – Rapporteurs Don’t Chat .................................................................................................................. 2360 J 7/08 – Paid ...................................................................................................................................................... 2362 J 7/08 – Let’s Be Formal ................................................................................................................................... 2366 T 1202/04 – Too General To Point ................................................................................................................... 2369 T 609/07 – Not So Trivial ................................................................................................................................. 2371 R 14/10 - Speak! ............................................................................................................................................... 2374 J 15/10 - Tell Me More ..................................................................................................................................... 2377 T 267/08 - An Original Sin ............................................................................................................................... 2379 J 18/09 - Not Yet Pending ................................................................................................................................. 2386 T 695/08 – Just Too Vague ............................................................................................................................... 2393 J 20/10 – No Fallback On Inventors.................................................................................................................. 2395 T 1905/07 - Too Cool........................................................................................................................................ 2397 T 1936/06 - No Blank Cheques, Please............................................................................................................. 2399 T 2285/09 - Not Beyond Doubt ........................................................................................................................ 2402 T 2285/09 - Three Times No ............................................................................................................................. 2404 T 1446/06 – That’s What It’s All About ........................................................................................................... 2406 T 592/08 – Trials, Trials, Trials ........................................................................................................................ 2407 T 984/07 – For An An ....................................................................................................................................... 2411 T 1705/07 – Face Your Failure ......................................................................................................................... 2413 T 1553/07 – One Train May Hide Another ....................................................................................................... 2416 T 1553/07 – Enough Is Enough ........................................................................................................................ 2419 To All The EQE Candidates …......................................................................................................................... 2422 Interpretational Spotlight: « Uploading » .......................................................................................................... 2423 T 264/09 – Back To Search ............................................................................................................................... 2424 T 891/07 – On The Sufficiency Of Humanoids ................................................................................................ 2425 T 2149/08 – Come In ........................................................................................................................................ 2429 T 156/08 – Open Frame .................................................................................................................................... 2432 T 1171/06 – More On Models ........................................................................................................................... 2434 T 1225/08 – Drawing The Line ......................................................................................................................... 2437 T 1364/08 – Old And Young Together ............................................................................................................. 2440 T 625/09 – A Question Of Tonality .................................................................................................................. 2443 T 1962/08 – Cross With The Cross-Check ....................................................................................................... 2445 T 5/08 – Locked Out ......................................................................................................................................... 2455 T 1073/06 – Purely Mental ............................................................................................................................... 2457 T 47/07 – Arbitrary ........................................................................................................................................... 2461 T 1326/06 – Tales From The ‘Crypt ................................................................................................................. 2463 T 1544/07 – Between Consenting Adults ......................................................................................................... 2466 T 485/09 – Be Quick ......................................................................................................................................... 2468 T 689/09 – Not Subject To Change ................................................................................................................... 2469 T 761/08 – Beware Of Disclaimers ................................................................................................................... 2472 3386 | 3398
K’s Law – The ebook
Index
R 16/10 – He Once Was One of Us .................................................................................................................. 2475 T 2291/08 – Prima Facie ................................................................................................................................... 2477 T 79/08 – When Rods Spoil ... The Patent ........................................................................................................ 2480 T 1077/06 – The Right To Be Heard, Again ..................................................................................................... 2485 T 1309/07 – No Common Interest..................................................................................................................... 2489 T 206/08 - Unexplored Fields ........................................................................................................................... 2492 T 206/08 - Active, Passive, All The Same ? ..................................................................................................... 2494 T 917/07 – Ticking Is Not Enough.................................................................................................................... 2496 T 1795/07 – Acting As If .................................................................................................................................. 2497 T 1329/07 – Beyond Established Science ......................................................................................................... 2499 T 491/08 - Insufficient ...................................................................................................................................... 2503 T 195/09 – Dangers Of Mono & Poly ............................................................................................................... 2506 T 892/08 – Arbitrary Selection, Again .............................................................................................................. 2509 T 314/06 – Let Not Man Put Asunder … .......................................................................................................... 2511 T 1926/09 – No Spanking Here ........................................................................................................................ 2515 T 137/09 – Waking Up Late .............................................................................................................................. 2517 T 555/07 – Do It Differently ............................................................................................................................. 2520 T 1088/08 – Dangerous Percentages ................................................................................................................. 2522 T 1931/07 – Vae absentibus .............................................................................................................................. 2524 T 520/07 – Appeal = New Deal ........................................................................................................................ 2525 T 2274/08 – Milky Ways .................................................................................................................................. 2526 T 9/08 – Documentum Ex Machina .................................................................................................................. 2528 T 4/05 – Doubts Are Not Enough ..................................................................................................................... 2529 T 1049/07 – Licence To Delete ......................................................................................................................... 2531 Interpretative Spotlight: « Angle Sensor » ........................................................................................................ 2533 T 1284/09 – Payback Revisited......................................................................................................................... 2534 T 1829/06 – New Jobs For Straw Men ............................................................................................................. 2536 T 1435/06 – Down To The Roots...................................................................................................................... 2538 R 15/10 – No Foretelling................................................................................................................................... 2540 T 743/07 – Acceptable Danger ......................................................................................................................... 2542 T 1741/07 – He Knows It All ............................................................................................................................ 2543 Publish Or Perish (ctd.) ..................................................................................................................................... 2544 T 1051/07 – It’s All About Money.................................................................................................................... 2545 T 1612/07 – Insufficient Reasons (Remix) ....................................................................................................... 2547 T 70/08 – Too Late............................................................................................................................................ 2549 T 1450/07 – Plausible Function ........................................................................................................................ 2550 T 814/08 – Don’t Look Behind The Fence ....................................................................................................... 2552 R 17/09 – Man In The Street ............................................................................................................................. 2555 T 1624/08 – Still Credible ................................................................................................................................. 2556 T 1079/07 – A Matter Of Courtesy ................................................................................................................... 2558 T 716/08 – Does It Work? ................................................................................................................................. 2560 T 1098/07 – A Pardonable Error ....................................................................................................................... 2562 T 296/08 – Essential Yet Unclaimed? ............................................................................................................... 2564 3387 | 3398
K’s Law – The ebook
Index
Interpretative Spotlight: “a” .............................................................................................................................. 2566 T 837/07 – One Last Chance? ........................................................................................................................... 2568 T 1728/07 – On Chemical Nonsense ................................................................................................................. 2570 T 1442/09 - Mere Allegations ........................................................................................................................... 2575 T 70/08 – Good News For The Log Lady ......................................................................................................... 2580 T 1986/08 – Side By Side ................................................................................................................................. 2583 T 1293/06 – What’s Hidden Won’t Help .......................................................................................................... 2585 G 1/08 – Leave Mendel Alone .......................................................................................................................... 2587 T 1903/06 – We Are Not Always Nice ............................................................................................................. 2591 T 193/06 – Let’s Be Nice .................................................................................................................................. 2593 T 2058/08 – The Wrong Person ........................................................................................................................ 2595 T 294/07 – A Nice Hat-Trick ............................................................................................................................ 2597 Interpretative Spotlight: “Resulting” ................................................................................................................. 2600 T 608/08 – No Sliding ....................................................................................................................................... 2602 T 1138/09 – No Transformation........................................................................................................................ 2605 T 530/08 – It’s For Real .................................................................................................................................... 2607 T 1985/09 – He Who Rows Wind Reaps A Refusal ......................................................................................... 2609 T 1440/08 – In Through The Back Door ........................................................................................................... 2612 T 479/09 – Skilled, Not Stupid ......................................................................................................................... 2614 T 754/08 – Yes But ........................................................................................................................................... 2615 J 11/09 – Call Of Duty ...................................................................................................................................... 2616 T 1397/07 – Silence Won’t Deter ..................................................................................................................... 2620 T 12/07 – Where Could/Would Ends ................................................................................................................ 2623 T 1989/08 – A Firm Belief ................................................................................................................................ 2625 T 1989/08 – Not Automatic .............................................................................................................................. 2627 T 365/09 – Nothing New Under The Sun ......................................................................................................... 2628 T 2249/08 – Lost Without A Guide .................................................................................................................. 2630 T 754/08 – Trouble With An Ex ....................................................................................................................... 2632 T 1536/08 – Don’t Ignore The Offer ................................................................................................................. 2633 T 1316/06 – Limited Transfer ........................................................................................................................... 2635 T 1625/06 – Gimme More................................................................................................................................. 2636 T 41/09 – Dangerous Savings ........................................................................................................................... 2639 R 2/10 – Too Late Or Too Early ....................................................................................................................... 2643 T 230/07 – Two Is Enough................................................................................................................................ 2645 R 15/09 – Blame Yourself................................................................................................................................. 2648 J 8/09 – Out Of Proportion ................................................................................................................................ 2651 T 1857/07 – The Importance Of Being Dependent ........................................................................................... 2653 T 511/07 – No Harm Done ................................................................................................................................ 2654 T 301/10 – Once May Be Enough ..................................................................................................................... 2657 T 979/06 – Back To Business As Usual ............................................................................................................ 2660 T 485/05 – The Skilled Person Fiddles Around ................................................................................................ 2661 T 2193/09 – Fatal Silence ................................................................................................................................. 2664 T 985/07 – Claims Under Fire .......................................................................................................................... 2667 3388 | 3398
K’s Law – The ebook
Index
T 672/07 – Trouble With A Date ...................................................................................................................... 2670 T 1478/07 – Three Words That Matter ............................................................................................................. 2672 T 1478/07 – No Need To Hear .......................................................................................................................... 2674 T 138/08 – Two Will Do ................................................................................................................................... 2675 T 699/06 – A Bilocation Problem ..................................................................................................................... 2676 T 331/08 – No More Lacuna ............................................................................................................................. 2681 T 945/09 – Doctors Are Talkative..................................................................................................................... 2684 W 4/09 – Nothing Special ................................................................................................................................. 2687 T 1491/07 – Not Quite Fresh ............................................................................................................................ 2689 T 641/07 – Surviving In The Jungle Of Standards ............................................................................................ 2691 T 784/06 – Mental Interaction? ......................................................................................................................... 2695 T 266/07 – A Questionable Springboard ........................................................................................................... 2697 T 266/07 – Using The New Blinkers ................................................................................................................ 2699 T 1088/07 – Risky Multitasking........................................................................................................................ 2701 T 1088/07 – Dilute To Taste ............................................................................................................................. 2703 R 18/09 – Joint Action ...................................................................................................................................... 2704 T 1411/07 – Looking For The Train Of Thought .............................................................................................. 2706 T 1547/09 – Game Over .................................................................................................................................... 2708 T 566/07 – Well Hidden In Switzerland ........................................................................................................... 2711 T 1758/07 – Can’t Have ‘Em Both ................................................................................................................... 2714 T 628/07 – Return To Sender ............................................................................................................................ 2716 T 224/08 – A Lightened Burden ....................................................................................................................... 2717 T 2253/08 – Shaky Foundation ......................................................................................................................... 2718 T 114/09 – Still Pending ................................................................................................................................... 2719 T 305/08 – Special Reasons (Not To Remit) .................................................................................................... 2721 T 305/08 – When Third Parties Intervene ......................................................................................................... 2723 Publish Or Perish (ctd.) ..................................................................................................................................... 2727 T 1579/08 – Trouble With The Greek ............................................................................................................... 2728 G 1/09 – Pending Matters ................................................................................................................................. 2731 T 1392/08 – Desperately Seeking S … ynergy ................................................................................................. 2735 T 299/08 – Bad Tactics ..................................................................................................................................... 2739 T 1370/08 – Weighed And Found Too Light .................................................................................................... 2740 R 9/10 – The Right Not To Remit ..................................................................................................................... 2742 T 1002/09 – Improving Gut Feelings ................................................................................................................ 2744 T 996/09 – Silence With Consequences ............................................................................................................ 2746 R 20/09 – The R 104 Guillotine Again ............................................................................................................. 2749 T 737/08 – Can’t Have It Both Ways ................................................................................................................ 2752 T 313/07 – Wrong Approach ............................................................................................................................ 2754 R 16/09 – Woe To Him That Addeth … ........................................................................................................... 2756 R 16/09 – Substance Does Not Always Come First .......................................................................................... 2758 T 1052/07 – Unfair Criticism ............................................................................................................................ 2761 T 1052/07 – Hidden Depths .............................................................................................................................. 2762 Birthday Musings .............................................................................................................................................. 2763 3389 | 3398
K’s Law – The ebook
Index
T 2043/07 – Not Quite Up To The Hilt ............................................................................................................. 2765 R 7/10 – Just Say It ........................................................................................................................................... 2768 T 1252/07 – Seeing Things Differently............................................................................................................. 2770 T 690/09 – Don’t Wake The Dead (Without Consent) ..................................................................................... 2772 R 10/09 – Discretion Means Just That .............................................................................................................. 2773 T 820/08 – Conservative And Fearful ............................................................................................................... 2776 T 1630/07 – Single Or Double? ........................................................................................................................ 2778 T 1667/07 – On File? ........................................................................................................................................ 2780 T 27/07 – How To Shoot Oneself In The Foot.................................................................................................. 2782 T 993/07 – Stay Focused ................................................................................................................................... 2784 J 1/10 - Desynchronize ...................................................................................................................................... 2787 T 716/07 – The Long And Winding Road To Inventive Step ........................................................................... 2790 T 811/06 – A Matter Of Judgment .................................................................................................................... 2793 T 1918/07 – Bad Example(s) ............................................................................................................................ 2795 Interpretative spotlight: “maintain” ................................................................................................................... 2796 T 926/06 – Stuck In-Between ........................................................................................................................... 2797 T 369/08 – Let’s Talk Money … Later ............................................................................................................. 2799 T 233/06 – Unfounded Presumption ................................................................................................................. 2801 T 1548/08 – Ex Machina Claim Of No Avail ................................................................................................... 2802 T 1218/06 – Best Before ................................................................................................................................... 2804 T 529/09 – Counter-Evidence Needed .............................................................................................................. 2807 Interpretative spotlight : “highly soluble” ......................................................................................................... 2808 T 1327/07 – Doing Things In The Right Order ................................................................................................. 2810 T 704/08 – Potential Matters ............................................................................................................................. 2811 T 704/08 – Mind Your Own Business .............................................................................................................. 2812 T 1877/08 – Continua Are Special .................................................................................................................... 2813 T 1252/07 – Closer Than Closest ...................................................................................................................... 2816 T 759/09 – Looking Under The Carpet ............................................................................................................. 2817 T 1257/08 – No Self-Administered Justice ....................................................................................................... 2818 T 1252/07 - (Un)sworn Enemy ......................................................................................................................... 2819 T 1287/07 – You May Have Second Thoughts ................................................................................................. 2820 Interpretative Spotlight: “surface protection” ................................................................................................... 2821 T 356/08 – Desperate Measures ........................................................................................................................ 2823 T 699/07 – Let The Colour In ........................................................................................................................... 2824 T 1943/09 – Money Can’t Do It All .................................................................................................................. 2825 T 1898/07 – Pick And Choose .......................................................................................................................... 2826 T 1898/07 – Packaging Issues ........................................................................................................................... 2828 T 1898/07 – Things That Judges Won’t Do ...................................................................................................... 2831 T 421/09 – Don’t Be So Quick To Replace ...................................................................................................... 2834 Interpretative spotlight: “compatible” ............................................................................................................... 2835 T 1736/06 – This Way Won’t Lead To Novelty ............................................................................................... 2836 T 585/08 – Formalities Agents Aren’t Detectives ............................................................................................. 2838 T 585/08 – Don’t Announce It, Do It ................................................................................................................ 2840 3390 | 3398
K’s Law – The ebook
Index
T 339/08 – Thus Speaketh The White Book ..................................................................................................... 2842 T 991/07 – Too Bad You Weren't There ........................................................................................................... 2844 T 832/08 – Trials And Tribulations ................................................................................................................... 2846 Interpretative Spotlight: “may” ......................................................................................................................... 2847 T 972/04 – Over The Top? ................................................................................................................................ 2848 T 788/06 – Double Agents Are Troublesome ................................................................................................... 2850 T 765/07 – What Is Essential? .......................................................................................................................... 2852 T 1764/06 – Is It There? .................................................................................................................................... 2854 T 1482/09 – Shootin’ From The Hip ................................................................................................................. 2857 T 1791/08 – Complete Search Presumed .......................................................................................................... 2858 T 1349/08 – No Partying Here .......................................................................................................................... 2859 T 232/08 – Too Late.......................................................................................................................................... 2862 T 1560/05 – The Skilled Person Reads Magazines ........................................................................................... 2863 T 714/08 – Harsh As Harsh Can Be .................................................................................................................. 2864 T 847/07 – Try And See? .................................................................................................................................. 2866 T 800/08 – Follow The Guide ........................................................................................................................... 2867 T 893/07 – Remittal? No Way .......................................................................................................................... 2868 T 683/06 – No Second Date .............................................................................................................................. 2870 T 1960/08 – No Remittal Of A Pig In A Poke .................................................................................................. 2873 T 316/08 – Complexities ................................................................................................................................... 2874 T 1226/07 – Too Late For Not Being Premature .............................................................................................. 2875 R 4/09 – Ignorance Is Not Bliss ........................................................................................................................ 2876 T 1703/06 – Don’t Push Too Hard On Clarity .................................................................................................. 2878 Questions For The Wise .................................................................................................................................... 2879 T 1150/08 – The Untaught Link ........................................................................................................................ 2880 T 1066/08 – Persuasion Is Not For Free ........................................................................................................... 2881 T 680/08 – To The Bitter End ........................................................................................................................... 2882 T 680/08 – Still The Same? ............................................................................................................................... 2884 T 528/07 – Com, Vick, And TRIPS It As Ye Go .............................................................................................. 2888 J 3/09 – A Modern Hans-in-luck ....................................................................................................................... 2891 Publish Or Perish (ctd.) ..................................................................................................................................... 2895 T 520/08 – Quick Inspection ............................................................................................................................. 2896 T 2013/08 – Singling Out Prohibited ................................................................................................................ 2897 T 2013/08 – Wishful Thinking? ........................................................................................................................ 2899 T 8/06 – Sunscreen Fatality............................................................................................................................... 2901 T 809/07 – Trouble Between Examples ............................................................................................................ 2903 T 426/07 – Interpreting Silence ......................................................................................................................... 2905 Interpretative Spotlight: “consists” ................................................................................................................... 2907 T 1749/06 – Brain Inspection Refused .............................................................................................................. 2908 T 1349/07 – Not Just Good-Lookin’ ................................................................................................................. 2910 T 506/07 – Embryologists Are Farsighted ........................................................................................................ 2911 T 452/08 – Description Leading Into The Trap ................................................................................................ 2912 T 279/07 – Deadly Prodrugs ............................................................................................................................. 2915 3391 | 3398
K’s Law – The ebook
Index
T 87/08 – Mere Repeating Won’t Do ................................................................................................................ 2916 Interpretative spotlight: “complete” .................................................................................................................. 2917 T 1711/08 – Prettier Ain’t Always Healthier .................................................................................................... 2918 T 1079/08 – A Medical Error ............................................................................................................................ 2919 T 997/06 – To Know The Mother, Know Her Kids .......................................................................................... 2921 T 7/08 – Late Change Of Category ................................................................................................................... 2922 T 1659/07 – Back To The Roots ....................................................................................................................... 2924 T 1312/08 – The Extension Trap Again ............................................................................................................ 2926 Interpretative spotlight : “volatile” .................................................................................................................... 2928 T 1312/08 – The Devil’s In The Detail ............................................................................................................. 2929 T 659/07 – There’s Nothing We Can Do .......................................................................................................... 2931 T 2271/08 – No Referral For Review................................................................................................................ 2934 T 2271/08 – Time Factor Denied ...................................................................................................................... 2935 T 795/06 – Extent Of Protection Of A Use Claim ............................................................................................ 2936 R 14/09 – On The Right To Be Heard .............................................................................................................. 2939 Interpretative spotlight : “comprising” .............................................................................................................. 2940 T 360/07 – Striving For Purity .......................................................................................................................... 2941 T 349/09 – Wrong Target .................................................................................................................................. 2943 T 938/09 – Mind Your Guide............................................................................................................................ 2945 T 760/08 – Too Short On Substance ................................................................................................................. 2947 T 354/07 – Bad News For Meta-Methodists ..................................................................................................... 2950 T 862/08 – Let Lexicographers Be Warned ...................................................................................................... 2953 Interpretative Spotlight : “desired” ................................................................................................................... 2954 T 1365/09 – Dealing With Contradiction .......................................................................................................... 2955 T 867/05 – Reinstatement Questioned .............................................................................................................. 2957 T 867/05 – You Must Be Kidneying ................................................................................................................. 2959 T 1726/08 – What Does Cross-Check Mean? ................................................................................................... 2960 A Word On Translations ................................................................................................................................... 2963 T 1726/08 – Good Faith And Appeal Fees........................................................................................................ 2964 R 19/09 – You Need A Causal Link ................................................................................................................. 2966 Interpretative Spotlight : “about” ...................................................................................................................... 2968 T 281/07 – Revival Is Possible.......................................................................................................................... 2969 R 21/09 – Autonomous But Not Autistic .......................................................................................................... 2970 T 3/07 – Sufficiency Despite Obvious Errors ................................................................................................... 2973 T 1468/08 – How To Recover ‘Lost’ Claims .................................................................................................... 2974 T 149/07 – Sophisticated Obviousness ............................................................................................................. 2976 T 358/08 – Let’s Not Change ............................................................................................................................ 2979 Interpretative Spotlight: “added” ...................................................................................................................... 2984 T 2016/07 – Two Is Not A Magic Number ....................................................................................................... 2985 T 31/08 – An Exception To An Exception ........................................................................................................ 2987 T 600/07 – Working In The Forbidden Area .................................................................................................... 2989 T 600/07 – Dangerous Markush ........................................................................................................................ 2990 T 143/07 – The Draughtsman’s Freedom ......................................................................................................... 2992 3392 | 3398
K’s Law – The ebook
Index
T 1673/07 – No Retraction From Removal ....................................................................................................... 2995 T 1261/06 – Important But Not Essential ......................................................................................................... 2997 T 170/07 – Fatal Step ........................................................................................................................................ 2998 G 3/08 – The Right To Differ ........................................................................................................................... 3002 T 384/08 – A Frozen Business .......................................................................................................................... 3006 T 384/08 – There Is An End To The Prohibition .............................................................................................. 3009 T 836/09 – The Lady And The Box .................................................................................................................. 3012 T 990/07 – Enough Said .................................................................................................................................... 3014 T 448/07 – Much Talk About A Mute Witness ................................................................................................. 3016 T 564/07 – Extrinsic Illumination ..................................................................................................................... 3019 T 1437/07 – Amendments Based On Disclosed Speculation ............................................................................ 3021 T 1437/07 – When A Title Entitles ................................................................................................................... 3022 T 512/07 – Deadly Decibels .............................................................................................................................. 3024 T 1423/07 – Double Patenting And Internal Priority ........................................................................................ 3027 T 2017/07 – Extending Limitation .................................................................................................................... 3032 T 1042/06 – Common Denominator of 54, 87, and 123 ................................................................................... 3035 T 1042/06 – He Who Won The War May Still Claim Lost Battles .................................................................. 3037 T 877/06 – Differences Avert Double Patenting Issue ...................................................................................... 3038 T 877/06 – The Limits Of Reformulation ......................................................................................................... 3039 T 229/07 – Bits’n Pieces ................................................................................................................................... 3040 T 1814/06 – Non Obvious Choice Among Three ............................................................................................. 3042 T 549/08 – Impossible Combination ................................................................................................................. 3044 T 286/09 – Composition vs. Ingredients ........................................................................................................... 3046 T 1281/06 – Cack-handed Lexicography .......................................................................................................... 3048 T 413/08 – Repudiate Quickly .......................................................................................................................... 3050 T 66/07 – Extracting Limits From Examples .................................................................................................... 3052 T 1224/06 – Would You Please Hide The Bloodshed ...................................................................................... 3055 T 364/08 – Cut-off Relativized ......................................................................................................................... 3056 T 558/08 - Claims Are Generalizations ............................................................................................................. 3057 T 25/09 – It’s Party Time .................................................................................................................................. 3059 T 25/09 – IP Rights Do Not Frighten The Skilled Person ................................................................................. 3061 T 879/09 – An Allowable Intermediate Restriction .......................................................................................... 3062 T 394/06 – Substantiated Doubts Required ....................................................................................................... 3065 T 516/09 – Assistant Going Crazy .................................................................................................................... 3066 T 378/08 – Imprecise But Clear ........................................................................................................................ 3069 T 378/08 – Oral Proceedings Aren’t Boot Camps ............................................................................................ 3070 T 775/07 – Is It Essential ? ................................................................................................................................ 3071 T 911/07 – Miss M. May Make Mistakes ......................................................................................................... 3072 T 1533/07 – Don’t Lump Together Novelty And Priority ................................................................................ 3074 T 1533/07 – Insolvent Yet Alive ....................................................................................................................... 3076 T 1333/07 – You Can Disprove Effects Without Experiments ......................................................................... 3078 T 1333/07 – Credible Cause ? ........................................................................................................................... 3079 T 392/07 – On Juxtaposition ............................................................................................................................. 3081 3393 | 3398
K’s Law – The ebook
Index
R 9/09 - For Pros Only ...................................................................................................................................... 3083 T 1886/06 – Dealing With Undefined Claim Features ...................................................................................... 3085 T 458/07 – Claimed Effects Can’t Be Missing ................................................................................................. 3087 T 458/07 – Late Filing By Third Parties ........................................................................................................... 3088 T 458/07 – No Examples Needed ..................................................................................................................... 3090 T 759/08 – Known Things Can’t Surprise ........................................................................................................ 3092 T 727/07 – Jurisprudential Potpourri ................................................................................................................ 3093 T 911/06 – Numbers In Disorder ...................................................................................................................... 3094 T 662/07 – Incredible Detergents ...................................................................................................................... 3096 T 354/08 – Enablement Questioned .................................................................................................................. 3098 T 897/09 – How Not To Substantiate An Appeal ............................................................................................. 3101 T 90/07 – Unlimiting Signs ............................................................................................................................... 3105 Six Months Already .......................................................................................................................................... 3107 G 1/07 – Administrators Going Ultra Vires? .................................................................................................... 3108 T 90/07 – Appeal Filed After Bankruptcy......................................................................................................... 3110 T 1743/06 – Trial And Error : To Be Taken In Moderation.............................................................................. 3111 T 810/07 – Ways Of Saying No ........................................................................................................................ 3113 G 1/07 – What Is A “Treatment By Surgery”? ................................................................................................. 3115 G 1/07 – Vienna Is Not Narrow-Minded........................................................................................................... 3119 T 617/07 - Musings On Sufficiency .................................................................................................................. 3121 T 428/08 – Transfers Are Effective When Evidence Is Filed ........................................................................... 3123 T 1351/06 – On The Importance Of Rank And Order ...................................................................................... 3126 T 1895/06 – Troubled By The Straw Man ........................................................................................................ 3128 T 1895/06 – It Ain’t Over ’Til It’s Over ........................................................................................................... 3129 T 1895/06 – New Facts Cannot Overturn Res Judicata .................................................................................... 3130 T 207/07 – No Opposition Against Overweight Patents ................................................................................... 3131 T 244/07 – What May Be Taken From Schematic Drawings ........................................................................... 3132 To All The EQE Candidates ... ......................................................................................................................... 3134 T 1182/05 – ‘On The State of the File’ Does Not Mean ‘Unreasoned’ ............................................................ 3135 T 426/06 – Insufficient Proof For Opponent Status Transfer ............................................................................ 3137 T 550/04 – Recording Refused ......................................................................................................................... 3140 T 360/08 – Out Of The Frying Pan Into The Fire ............................................................................................. 3141 G 2/08 – The Way You Take It Matters ............................................................................................................ 3144 T 150/07 – Forget The Novelty Test ................................................................................................................. 3146 G 4/08 – Translation Not Welcome .................................................................................................................. 3147 G 1/07 - Dangerous Invasive Imaging Methods Are Excluded ......................................................................... 3149 T 843/06 – A 69 Cannot Repair an A 123(2) Deficiency .................................................................................. 3150 T 509/07 – No Partial Admissibility, But … ..................................................................................................... 3152 T 348/06 – When Insufficiency Changes Sides ................................................................................................ 3154 T 956/04 – Dangerous Product ... -By-Process ................................................................................................. 3156 T 567/08 – Ambiguity Kills The Cat ................................................................................................................ 3158 T 1123/09 – Munich Won’t Have It The American Way.................................................................................. 3161 T 1125/07 – On Implicit Disclosure .................................................................................................................. 3162 3394 | 3398
K’s Law – The ebook
Index
J 1/08 – European Zombie ................................................................................................................................ 3164 T 1266/07 – Video Conference Refused, But … .............................................................................................. 3166 T 1557/07 – Limits of the Right To Be Heard .................................................................................................. 3167 T 570/05 – A Borderline Case .......................................................................................................................... 3169 T 593/06 – Smart Use of Use ............................................................................................................................ 3171 T 1180/07 – Hasty Generalisation ..................................................................................................................... 3173 T 1997/08 – Hearing is Not Listening ............................................................................................................... 3175 T 1684/06 – Res judicata Is Indeed A Narrow Thing ....................................................................................... 3176 J 10/08 – A Successful Retraction..................................................................................................................... 3177 T 1208/06 – Role Of The Inventor In Oral Proceedings ................................................................................... 3179 T 570/07 – How to Respond to Overkill ........................................................................................................... 3180 T 323/08 – No Fallback On Ghost Alternatives ................................................................................................ 3182 T 611/07 – Lost In Translation ? Not Really..................................................................................................... 3185 T 323/07 – No Tidying Up in Post-Grant Amendments ................................................................................... 3186 A Farewell To Arm...and .................................................................................................................................. 3187 J 5/07 – Not All Reactions Are Valid Responses .............................................................................................. 3188 T 1053/06 – Cheekiness At Its Best .................................................................................................................. 3189 T 212/07 - It's Pay Time, Folks ......................................................................................................................... 3190 T 1009/05 – Reformatio Paulo In Peius (*) ...................................................................................................... 3192 R 5/08 – On the Role of Requests in Petitions for Review ............................................................................... 3194 R 5/08 – Party Involvement in Petition Proceedings......................................................................................... 3195 T 780/05 – How Not To Present A Witness ...................................................................................................... 3197 T 1511/06 – Disclosure Through Secret Sales .................................................................................................. 3198 J 12/07 – If You Need More Time, Justify In Time .......................................................................................... 3200 T 354/04 – Beware of Incomplete Standards .................................................................................................... 3201 T 1689/07 – Colour Can Be Technical .............................................................................................................. 3203 T 140/07 – You Don’t Crossbreed Sheep With Goats (Even If The Shepherds Are Friends) .......................... 3204 T 341/07 – In Appeals, Play It Again Sam ....................................................................................................... 3205 T 1607/06 – Second Thoughts Not Welcome (Part II)...................................................................................... 3207 T 875/06 – Names Are Not Everything ............................................................................................................ 3208 T 230/06 – Post Mortem Appeal Proceedings ................................................................................................... 3210 R 12/09 – Board Work Does Not Disqualify EBA Members ........................................................................... 3211 T 553/08 – The Holistic Look ........................................................................................................................... 3213 T 1335/08 – Second Thoughts Not Welcome ................................................................................................... 3214 T 1511/07 – Dangerous Liaisons ...................................................................................................................... 3216 T 2049/07 – Novelty and The Erotic Article ..................................................................................................... 3218 T 129/08 – What’s In The Reservoir ? .............................................................................................................. 3219 T 129/08 – Together Yet Apart ......................................................................................................................... 3221 Publish Or Perish (ctd.) ..................................................................................................................................... 3223 T 422/07 – Overzealous But Not Partial ........................................................................................................... 3224 T 1928/06 – Close As Close Can Be ? .............................................................................................................. 3226 T 51/08 – The EPO Won’t Read Between the Lines......................................................................................... 3227 T 51/08 – Divisionals Can’t Revive Dead Claims ............................................................................................ 3228 3395 | 3398
K’s Law – The ebook
Index
T 18/09 – A Pipeline Ain’t No Motorway ........................................................................................................ 3230 T 18/09 – Skilful Cherry-Picking ...................................................................................................................... 3232 T 18/09 – Clones Are Not Books ...................................................................................................................... 3235 T 18/09 – Speed Up, The Judge Said ................................................................................................................ 3237 T 1302/06 – Minutes Cannot Replace Missing Reasons ................................................................................... 3239 J 1/09 – ECT Exam Fee Reduction ? Only Once ! ............................................................................................ 3240 T 345/07 – Battling For Inventiveness .............................................................................................................. 3243 T 1120/05 – Deriving Negative Features from Drawings ................................................................................. 3245 T 926/07 – Arguments Are Never Late ............................................................................................................. 3247 T 1427/09 – Using The Wrong Card ................................................................................................................. 3248 T 714/07 – Examples Are Presumed To Be Embodiments ............................................................................... 3249 T 1160/07 – Skilled People Ask Experts .......................................................................................................... 3250 T 1160/07 – Convergence, Moderately ............................................................................................................. 3251 T 1160/07 – Wrongful Exercise Of Discretion ................................................................................................. 3252 T 1854/08 - Notifications by E-mail and Other Procedural Shortcomings ....................................................... 3253 T 546/07 – You Have To See Things In Context .............................................................................................. 3254 T 500/07 - What Makes A Transfer A Transfer ................................................................................................ 3256 T 725/05 – Res Judicata Is A Narrow Thing ..................................................................................................... 3258 T 725/05 – A Fateful Alternative ...................................................................................................................... 3259 T 725/05 – Obiter Dicta And The Right To Be Heard ...................................................................................... 3261 T 1100/07 – A Crucial Witness Must Be Heard................................................................................................ 3263 T 1774/07 – Unallowable But Not Inadmissible ............................................................................................... 3265 T 508/08 – We Have No Ways To Make ’Em Talk ! ....................................................................................... 3266 T 1502/08 – Citing Drawbacks Is Not Teaching Away .................................................................................... 3267 T 1014/05 - No Blind Remittal ......................................................................................................................... 3268 T 1785/06 – Einstein Dethroned ? Not Quite .................................................................................................... 3269 R 8/09 - Distrust Labels .................................................................................................................................... 3271 T 815/04 - Give A Problem – Or You'll Have One ........................................................................................... 3273 T 211/05 – Never Sign For the Missing Guy .................................................................................................... 3274 R 13/09 – No Right To Be Heard On Irrelevant Issues ..................................................................................... 3276 T 1286/05 - Disclosed ? Undisclosed ? Hard To Say ! ..................................................................................... 3278 T 1286/05 – Another Swiss Fatality .................................................................................................................. 3279 T 1464/05 - Sales of Test Samples Do Not Necessarily Imply Confidentiality ................................................ 3281 T 565/07 – Converge ! ...................................................................................................................................... 3283 T 339/05 – Thou Shalt Not Overburden The Skilled Man ................................................................................ 3285 T 1606/07 – Don’t Waste Your Ink on Device Claims ..................................................................................... 3286 T 1382/04 - Effect of a Request for Oral Proceedings ...................................................................................... 3287 T 597/07 – Which Must Not Cannot Be ........................................................................................................... 3288 T 1855/06 – Wanna Be Swiss ? You Better Be Medic ! ................................................................................... 3289 T 1763/06 – Abuse, Abandon and Adverse Affection ...................................................................................... 3291 T 1207/05 - Obvious Combination of Internet Drafts ....................................................................................... 3292 T 783/08 – Tessellation Denied ........................................................................................................................ 3294 T 783/08 – Sign Once And You’re In ............................................................................................................... 3295 3396 | 3398
K’s Law – The ebook
Index
T 1276/07 – Rough Ride On A One-Way Street ............................................................................................... 3296 T 1671/06 – A Non-Technical Prejudice is Not Relevant ................................................................................. 3298 T 493/08 – Ignorance of the (Case) Law is No Excuse ..................................................................................... 3299 W 28/07 – Eugene, Unity And All That Jazz .................................................................................................... 3301 T 1590/06 – Ghost Bustering Prohibited at the EPO ........................................................................................ 3303 T 898/07 – Intervention Made Possible By Summons to Take a Licence ......................................................... 3304 T 1514/05 - Explore All Roads that Lead to Rome ........................................................................................... 3305 T 1618/06 - Description of Prior Art vs. Disclosure of the Invention ............................................................... 3306 T 1416/06 - Mathematicians Do Not Invent (Nor Are They Skilled Persons) .................................................. 3307 G 3/08 – Novel Use of ... Amicus Curiae Briefs ............................................................................................... 3308 T 1107/06 – The Relaxing Effect of Botox on G 1/03 ...................................................................................... 3310 T 329/06 – Disclaiming All the Disclosed Embodiments ................................................................................. 3313 T 8/07 - ‘Should’ Means ‘Must’ ....................................................................................................................... 3314 T 891/05 - One For All and All But One .......................................................................................................... 3315 T 1212/07 - Disclaimers Disenchanted ............................................................................................................. 3316 T 601/06 - Too Late for Liberation ................................................................................................................... 3317 T 1562/06 - Exhaustion ? Who Has Said Exhaustion ? ..................................................................................... 3318 T 95/07 - Stuck Right From the Start ? ............................................................................................................. 3319 T 95/07 – There is No Withdrawal of Evidence................................................................................................ 3321 T 95/07 - Always Duly Introduce Guest Artists ................................................................................................ 3322 T 95/07 - Standard of Proof for Implicit Disclosure ......................................................................................... 3323 T 972/05 - Unlike Stalin, the EPO Can’t Correct Facts .................................................................................... 3324 T 314/07 - It Ain’t Necessarily So … ............................................................................................................... 3325 T 217/07 - Boards May Still Apportion Costs .................................................................................................. 3326 T 1143/06 - A Case for Mentalists ? ................................................................................................................. 3327 T 382/07 - True Disclosure Found in the Priority Document............................................................................ 3328 T 1898/06 - Claims Are to be Clear in Themselves .......................................................................................... 3329 T 1496/06 - Conditional Withdrawal ? Nope. ................................................................................................... 3330 T 1140/06 - A Good Example is the Best Sermon ............................................................................................ 3331 T 1157/06 - Southern German Skills................................................................................................................. 3332 T 756/06 - How to Deal with Hybrids ............................................................................................................... 3333 J 16/08 - Swedish Gymnastics .......................................................................................................................... 3334 T 254/06 - Forget About Best Mode ................................................................................................................. 3336 T 1068/06 - Opposition Filed by a Company Without Legal Personality ......................................................... 3337 T 1439/05 - Boards Kill by Numbers ................................................................................................................ 3338 J 4/09 - How to Handle Reproductive Difficulties ............................................................................................ 3339 T 869/06 - Business Trips May Justify Postponement of Oral Proceedings ..................................................... 3340 J 6/08 - Amazing Grace..................................................................................................................................... 3341 Seasons in the Life of DG3 ............................................................................................................................... 3343 T 857/06 - Assistants May Deliberate With the Boards .................................................................................... 3344 T 463/06 - A Board May Oblige the OD to Consider a Late-filed Ground It Had Not Admitted ..................... 3346 R 7/08 - The Enlarged Board Won’t Soliloquize .............................................................................................. 3347 T 534/07 - Gladiators May Change Sides ......................................................................................................... 3348 3397 | 3398
K’s Law – The ebook
Index
T 1870/07 - (H)IPER-Activity and the Risk of Slapdashiness .......................................................................... 3349 Behold the Day of Judgement ........................................................................................................................... 3350 T 990/06 - The Enigma of the Missing Lawyer ................................................................................................ 3351 T 223/07 - How LSD Can Boost Inventiveness ................................................................................................ 3352 T 355/07 - Dura Lex Sed Lex ........................................................................................................................... 3353 T 5/06 - Inventive step - Insufficiency : 0-1 ...................................................................................................... 3354 T 69/07 - On the Courteousness of epi-Members ............................................................................................. 3355 J 15/08 - Some Like It Hot ................................................................................................................................ 3356 T 700/05 - Post-grant Correction of an Erroneous Translation of a Japanese PCT ........................................... 3357 T 387/05 - An ‘Exotic’ Feature is Considered Non Distinguishing .................................................................. 3358 J 5/08 - Pending or Not Pending - That is the Question .................................................................................... 3359 T 1179/07 - A New purpose Cannot Impart Novelty to a Known Process ....................................................... 3361 Publish or Perish ............................................................................................................................................... 3362 T1029/06 - On the Patentability of Environmental Impact Estimations ........................................................... 3363 T 1030/06 - The Potential of the Skilled Person ............................................................................................... 3364 For Starters ........................................................................................................................................................ 3365 Index ................................................................................................................................................................. 3366
3398 | 3398